Patent Office Releases Rules To Let Third Parties Provide Documents To Help Reject Patent Applications

from the could-be-useful dept

Wed, Jul 18th 2012 7:29pm — Mike Masnick

One of the big problems with the patent system is that it's not an adversarial process at all. You only have advocates for why a patent should be granted. No one is on the other side arguing why it shouldn't be. The examiner is supposed to be neutral, but actually has some implicit incentives to find things more patentable than not. For example, patent examiners are often reviewed on their productivity in getting through patent applications. Considering the backlog of patents, this isn't a surprise. But since there's no such thing as a true "final rejection" of a patent, the inventor and their lawyers can keep coming back, asking the patent office to try again. But each time the examiner has to go back and review the same application all over again, that's time away from a new application, and thus hurts his or her "productivity."

Making matters worse, once a patent is granted, it has to be presumed valid under the law. Meaning that even though it has never actually been tested in an adversarial process, the courts simply assume it's a valid patent. The fact that when patents do get re-examined, somewhere around three quarters of them have to be adjusted, with previously approved claims rejected, certainly calls into question just how "valid" those patents are. One of the small changes in the patent reform bill that past last year, the America Invents Act (AIA), was that it will now be slightly easier to file documents with the Patent Office for a patent application under consideration, rather than waiting until after the patent is granted.

This is definitely a step in the right direction, though, I do wonder how widely it will be used. Part of the problem is that it's often not at all possible to tell what a patent actually impacts until after its granted and the holder sues or threatens to sue. And no one can watch every application to see if they might have some useful prior art or evidence of obviousness. Either way, the rules for such third party submissions go into effect September 16th, and the USPTO is releasing its official rules for how the process will work (pdf and embedded below). There is a fee involved -- $180 -- but it's exempted for your first submission on a particular patent application if that submission is less than three documents. That may be a bit limiting, but it does suggest that individuals with clear prior art or proof of obviousness might at least be able to weigh in a bit to convince the examiner that an application is totally bogus.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: obviousness, patents, prior art, third parties, uspto

27 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Anonymous Coward, 18 Jul 2012 @ 8:00pm

"There is a fee involved -- $180"

Great, so only big businesses can afford to use this to fight patent trolls and other big businesses with massive patent portfolios.
[ link to this | view in chronology ]
- Torg (profile), 18 Jul 2012 @ 8:44pm
  
  Re:
  Only big businesses are able to dispute the validity of a patent in under three pages? Or is that impossible for everyone, and only big businesses have $180?
  [ link to this | view in chronology ]
  - Anonymous Coward, 18 Jul 2012 @ 9:17pm
    
    Re: Re:
    "but it's exempted for your first submission on a particular patent application if that submission is less than three documents."
    
    It's only exempt for the first submission, so what happens when a big business with huge patent portfolios uses multiple patents to attack a small business?
    [ link to this | view in chronology ]
    - Anonymous Coward, 18 Jul 2012 @ 9:18pm
      
      Re: Re: Re:
      OK, perhaps I was reading it wrong.
      [ link to this | view in chronology ]
  - Anonymous Coward, 19 Jul 2012 @ 9:28pm
    
    Re: Re:
    It is not three pages, but the sumittal of three citations to relevant prior art that are not merely a regurgitation of other art that adds nothing substantive to that which is already before the office.
    [ link to this | view in chronology ]
- abc gum, 19 Jul 2012 @ 5:42am
  
  Re:
  Before reading the "rules" or even the comments here, I knew there would be a fee (maniacal laugh). So when will the USPTO be moving into their Evil Volcanic Lair?
  
  Since there is such a large patent application backlog, perhaps robots could be of assistance.
  
  SEND IN THE PATENTBOTS !!!!!!
  
  I like to see examiners of that caliber.
  By "caliber," of course, I refer to both the size of their rubber stamps and the high quality of their characters.
  
  Ooo, Behave
  [ link to this | view in chronology ]
- Anonymous Coward, 19 Jul 2012 @ 9:24pm
  
  Re:
  Apparently you missed the provision associated with fee waivers.
  [ link to this | view in chronology ]
TechnoMage (profile), 18 Jul 2012 @ 8:31pm

Lack of foresight
I think this will be used a LOT by big companies such as Google, Motorola, Samsung, HTC, ASUS.... and anyone else Apple is suing...

(Maybe even Apple too... I guess...)

This alone will really help the mobile computing space ;)
[ link to this | view in chronology ]
Andrew F (profile), 18 Jul 2012 @ 9:35pm

Productivity
They should measure patent examiner productivity by adding up the number of patents granted OR rejected. Multiple rejections count multiple times.
[ link to this | view in chronology ]
- Anonymous Coward, 18 Jul 2012 @ 10:50pm
  
  Re: Productivity
  Yes. Still, the examiners are likely to just grant the patent if the backlog is huge.
  
  They don't need to provide reason to grant patent, but needs to provide reason to reject the application. This makes a difference.
  [ link to this | view in chronology ]
  - Chris-Mouse (profile), 19 Jul 2012 @ 6:54am
    
    Re: Re: Productivity
    The Patent office gets paid for each patent application. anything that discourages new patent applications hurts the bottom line.
    [ link to this | view in chronology ]
- sheenyglass (profile), 19 Jul 2012 @ 12:15pm
  
  Re: Productivity
  A friend of mine is a patent examiner and, when describing why he liked the job far more than his life as a patent attorney, he told me that it was because he had a set number of actions he needed to take to meet his productivity requirements, so an office action or a denial counts towards productivity too. Now, given the potential for me misunderstanding his statement, this should be taken a with a grain of salt, but it seems like this is the case.
  
  Of course, even if this is true there may be ways in which approving patents can be more "productive." For example, if an office action in which you respond to an attorney's arguments gets you the same credit as approving a patent application, but takes more effort, then there could still be an incentive to grant rather than deny.
  [ link to this | view in chronology ]
ChurchHatesTucker (profile), 18 Jul 2012 @ 9:37pm

Fer Pete's Sake!
Part of the problem is that it's often not at all possible to tell what a patent actually impacts until after its granted and the holder sues or threatens to sue.

If you can't tell that from a patent, what's the use? It's just a method to gain standing in order to secure a lawsuit-based business model.
[ link to this | view in chronology ]
- Anonymous Coward, 18 Jul 2012 @ 10:03pm
  
  Re: Fer Pete's Sake!
  So why not make a new separate IP law? We can call it the; 'vague-idea-that-I-will-use-to-leech-money-from-working-companies-granted-to-me-by-a-state-backed-mo nopoly' law.
  [ link to this | view in chronology ]
- Anonymous Coward, 18 Jul 2012 @ 10:52pm
  
  Re: Fer Pete's Sake!
  The patent examiners are not necessarily expert of the subject, so may under-estimate the scope of patents be granted.
  [ link to this | view in chronology ]
Pixelation, 18 Jul 2012 @ 10:14pm

New business
"Part of the problem is that it's often not at all possible to tell what a patent actually impacts until after its granted and the holder sues"

Sounds like there is a business opportunity in here somewhere. Perhaps create a company that monitors patent filings and alerts you to anything that will affect your business. For a fee, research prior art.

Name it, IP or Intellectual Patenticide.
[ link to this | view in chronology ]
This comment has been flagged by the community. Click here to show it

Mika Leonikskawadter, 18 Jul 2012 @ 10:42pm

can anyone upload these books?
1.COACHING CHANGE Meta-Coaching Volume,2005 by L. Michael Hall, Ph.D. and Michelle Duval

2.COACHING CONVERSATIONS
Meta-Coaching Volume II, 2004 by L. Michael Hall, Ph.D. and Michelle Duval

3.UNLEASHED:A Guide to Your Ultimate Self-Actualization (2007) by L. Michael Hall, Ph.D.

4. SELF-ACTUALIZATION PSYCHOLOGY
The Psychology of the Bright Side of Human Nature. by L. Michael Hall, Ph.D.

5.ACHIEVING PEAK PERFORMANCE: The Science and Art of Higher Levels of Performance
by L. Michael Hall, Ph.D.

6. UNLEASHING LEADERSHIP: Self-Actualizing Leaders and Companies (2009)
by L. Michael Hall, Ph.D.

7.THE CRUCIBLE: And the Fires of Change (2010) L. Michael Hall, Ph.D.

8.Benchmarking Intangibles :The Art of Measuring Quality By L. Michael Hall, Ph.D.
[ link to this | view in chronology ]
- Chargone (profile), 19 Jul 2012 @ 12:09am
  
  Re: can anyone upload these books?
  what on earth does that have to do with anything?
  
  i also note those are all by the same author...
  [ link to this | view in chronology ]
- Anonymous Coward, 19 Jul 2012 @ 3:21am
  
  Re: can anyone upload these books?
  *Squints*
  
  Oh, I see what you did there
  [ link to this | view in chronology ]
staff, 19 Jul 2012 @ 6:46am

more dissembling by Masnick
Sadly, corruption is rampant in Congress. Many members have become paid puppets of large infringers. They have been hoodwinked, or simply sold their votes to the highest bidder. That extends to the PTO's upper management.

If you're tired of nonsensical dissembling by invention thieves and their paid puppets (some say Masnick is one of many), you can find some levity and sanity from those who have actually invented something and have personal experience in these matters at...

http://truereform.piausa.org/default.html#menu
[ link to this | view in chronology ]
staff, 19 Jul 2012 @ 6:47am

more dissembling by Masnick
Sadly, corruption is rampant in Congress. Many members have become paid puppets of large infringers. They have been hoodwinked, or simply sold their votes to the highest bidder. That extends to the PTO's upper management.

If you're tired of nonsensical dissembling by invention thieves and their paid puppets (some say Masnick is one of many), you can find some levity and sanity from those who have actually invented something and have personal experience in these matters at...

http://truereform.piausa.org/default.html#menu
[ link to this | view in chronology ]
- abc gum, 19 Jul 2012 @ 7:07am
  
  Re: more dissembling by Masnick
  Posting it twice did not improve its readability.
  
  "corruption is rampant in Congress"
  Statement of fact.
  
  "Many members have become paid puppets of large infringers."
  If all corporations infringe, does this imply the law should be reviewed? Perhaps it is the law which is out of step with reality.
  
  Invention thieves ... lol, good one.
  Oh wait, your're serious - lol.
  [ link to this | view in chronology ]
- Gwiz (profile), 19 Jul 2012 @ 8:23am
  
  Re: more dissembling by Masnick
  Every time Techdirt mentions the word "patent" it gets a "staff" infection from RJR's camp.
  [ link to this | view in chronology ]
6, 19 Jul 2012 @ 10:05am

"One of the big problems with the patent system is that it's not an adversarial process at all."

Are you joking? Submit an app or two to the office and see how quickly your view of whether or not it is adversarial or not changes.
[ link to this | view in chronology ]
- Anonymous Coward, 19 Jul 2012 @ 3:31pm
  
  Re:
  While an ex parte process as to which the high "Duty of Candor" standard applies, I have never thought of an examiner as being a neutral third party. Yes, file a few cases and this becomes only too clear. Unfortunately, many who seem to believe otherwise have never engaged at any stage in prosecution, nor are they admitted to practice before the office. It is easy to be a critic when you do not have substantive information at hand.
  [ link to this | view in chronology ]
HrilL, 19 Jul 2012 @ 11:48am

Apple squirming in its boots
Apples amount of approved patents is about to go down by 98% since they never actually invent anything.
[ link to this | view in chronology ]
Lord Binky, 19 Jul 2012 @ 1:43pm

I'd subscribe for like $5 month to a service that informed me of craptastic patents for me to shoot down. The first filing is free for each person per patent right(when it's under 3 pages)? I'm sure those patent reviews are going to love 1000 3 page papers coming in... I bet they'll be begging for their productivity to be measured differently real soon.
[ link to this | view in chronology ]