Shouldn't The Patent Office Be Able To Reject A Bad Patent Application For Real?

from the just-a-thought dept

A few people have been submitting various versions of the story about how online gaming company OnLive is claiming a patent on its system for cloud-based video games. You can see the actual patent (7,849,491), if you'd like to dig into the details.

However, rather than dig into the specifics on this particular patent, I did want to dig into one somewhat offhand comment that Dean Takahashi made in his writeup of this patent over at VentureBeat, where he gets in a little dig at the Patent Office:

it was originally filed in December, 2002... The patent was granted last week, showing just how far behind the patent office is in acknowledging inventions.

Similarly, in the WSJ article where OnLive's Steve Perlman claims this is a "pivotal patent," he also complains about how slow the patent office is, and how annoying it was that he had to wait so long to get this patent.

Now, I'm not known for standing up for the Patent Office on much, and everyone seems to agree that the USPTO has a huge backlog that it takes them a while to get through, but the implication here is that if you just submit an application, you'll have to wait 8 years to get that patent approved. That's not really fair or accurate. I went and looked at the history of this particular patent and it's a lot more complicated than that. First of all, while it was initially filed in 2002, the application wasn't actually complete until April of 2003. Then, it appears that a whole bunch of additional information was filed over the years -- which is perfectly fine (as new things come out, you're supposed to file such information disclosure statements), but each of those need to be reviewed as well.

But what's a lot more telling is that the patent was "rejected" by the patent examiner not once, not twice, not three times, not four times, but five times before it was finally approved. However, the way the patent system works is that there's no such thing as a real rejection of a patent application. Even if there is something called a "final rejection" (the second rejection here was officially a "final rejection"), that's clearly misnamed, as the applicant is able to keep requesting new examinations, perhaps with adjustments to the patent, or after the applicant (or, more likely, a patent attorney they hired) argues that the patent should be approved.

So, perhaps it's not just that the patent office is "behind" on "acknowledging inventions," it's that patent applicants can just keep trying and trying and trying over and over and over again until they finally convince the examiner to approve the patent. Of course, all of this does contribute to the actual backlog -- because each time the examiner has to deal with a "rejected" application request for another examination, and hear them out on why it should be approved, or review the changes, that's time that could be spent reviewing a different patent application.

What I still don't understand is why we still let the system work this way. I can understand being able to make your case as to why a patent should be approved after an examiner initially rejects it -- and perhaps potentially an opportunity for an appeal -- but why do we let the system be so open ended? And, to be clear, I'm not saying if this particular patent is a "bad patent." I really don't know (though, I assume some of you may have some opinions on that). I'm just pointing out that, contrary to the claim in that article, the delay here might not have just been about a slow patent office, but about the fact that the patent was "rejected" so many times, and each time OnLive was able to come back and get another crack at the apple...

Filed Under: cloud gaming, patents, rejections, steve perlman, video games
Companies: onlive, uspto

US Patent Office Makes It Harder To Reject Patents For Obviousness

from the that's-not-good dept

The David Kappos-run USPTO seems to just get worse and worse. Already this year, we had noted that the patent office, under his charge, had started approving patents at an unprecedented rate, after a few years of corrections. It's become quite obvious that Kappos is pushing to get more patents approved, rather than fixing the patent system or making sure that it works to actually help innovation. I don't know why he's doing so, but it's quite troubling. The latest indicator of this is the fact that the USPTO has issued new guidelines on obviousness that effectively make it much harder for examiners to reject patent claims as obvious (found via Slashdot).

For years, one of the biggest problems with the patent office was that it approved all kinds of obvious inventions as patentable. Patents are only supposed to be given for things that are both new and non-obvious to those skilled in the art. However, for the most part, examiners focused solely on the "new" part (as determined by prior art) and effectively ignored whether or not it was obvious to those skilled in the art. Finally, in 2006, the Supreme Court agreed to look at the standards for "obviousness," leading to the Teleflex v. KSR ruling that basically said the USPTO (and the courts) had to really start looking at obviousness as separate from newness. In response, the USPTO put out a set of guidelines, including seven "tests" for obviousness -- and many examiners seemed to make use of these tests, as more patents got rejected, with obviousness often being the reason.

Yet, these new guidelines simply delete four of the tests. So, we're back down to just three tests for obviousness, which significantly limits the likelihood that examiners will reject patents as obvious. The end result? A lot more obvious ideas getting patented, followed by a lot more gridlock and needless lawsuits and transfer payments in the market -- and a huge tax on innovation. What a shame.

Filed Under: obviousness, patents, uspto
Companies: uspto

USPTO Not At All Happy About Justice Department Saying Genes Shouldn't Be Patentable

from the internal-rift dept

Last week, the Justice Department surprised a ton of people by filing an amicus brief saying that isolated genes should not be patentable. The NY Times has an article quoting a bunch of outraged patent attorneys, who are worried about their own jobs more than anything else, but also has some tidbits suggesting that the Patent and Trademark Office is not at all happy either, despite the fact that they're both part of the same administration. We noted in our original post that there must have been quite the political battle, and as will often happen, the losers appear to be griping. The USPTO has said that, even though the very same administration it's a part of says isolated genes shouldn't be patentable, it will continue to grant such patents until a court tells them not to (which, er, is what the district court did). The article also quotes a lawyer who spoke with USPTO director David Kappos, and noted that Kappos "seemed chagrined" at the situation. That seems like a polite way of saying that the USPTO is pissed off.

Filed Under: gene patents, patents, politics
Companies: justice department, uspto

Peer-To-Patent About To Come Back?

from the will-it-actually-work-this-time? dept

We've been a bit critical of the Peer-to-Patent program that was tested in the US a couple years ago. The idea -- which I appreciate -- was that certain patent applications would be opened up in a "crowdsourcing"-style, for the wider community to provide evidence of prior art. My problem with it wasn't the concept of involving others, but the idea that prior review during the application process would really be all that meaningful or useful in the long run. That's because it's often tough to get the necessary people to care about a bad patent or bad patent application until it's being used against them. So the incentives to keep swatting down bad patents just isn't that exciting. Second, the worst of the bad patents are ones that are asserted later, for something that seems completely different or unexpected, but which the patent holder claims violates their patent. It's tough to predict that ahead of time. Finally, the program only focused on prior art, not obviousness, which is an even bigger issue.

Yes, you could argue that such a peer review system wouldn't hurt, but it often felt like the program's backers thought it would solve most of the problems of the patent system, where I can only see it maybe helping out at the margins. That's why we weren't surprised at all to find out that the program had quitely shut down last year and almost no one had noticed.

However, it appears they're attempting a comeback. Eric Goldman forwarded us the following email (I'd link to the web version, which was included, but whatever crappy email software the company uses gives me control over Eric's account at the link -- so I could unsubscribe him if I wanted to -- and I figure it's best not to share that with the world). So, instead, I'll just pass along the text:

We are happy to announce that Peer To Patent will be relaunching this October with a new platform and many new features that will immensely improve the efficacy of the program. The Peer To Patent Team has been hard at work readying the new platform for its third run and we are excited to share the new developments with all of you.
 
First, you all will immediately notice that we have updated the Peer To Patent website with a new interface. The new version is designed to handle applications from multiple patent offices, in order to simplify the process of contributing to all three Peer To Patent pilot programs.
 
Second, we are very excited to announce that we will be expanding the list of classifications that are eligible for review through the program. Some of these new classifications are organic compounds, telecommunications and life sciences. Many of the new classifications are quite different than those in previous renditions of Peer To Patent. We ask that you spread the word to fellow professionals that may be skilled in these arts so that we can continue to provide the outstanding level of peer review that previous classifications have enjoyed on the website.
 
In that spirit, we want to thank you all for the work you have put in during the past two iterations of Peer To Patent and express our anticipation that this will be our best year yet. David Kappos, Under Secretary of Commerce and Director of the United States Patent & Trademark Office, recently stated that, "the reviewers found significant prior art, especially in non-patent literature... Our mission as an agency is to get the best prior art in front of examiners. There clearly is value in the project." It seems clear that we will improve, not only the quality of patents, but also the patent system as a whole. Let's make sure that we all take the initiative to participate in the new installment of the Peer To Patent program.

I'm happy to support anything that will actually improve the overall patent system so that it enables innovation rather than hinders it, but I'm still not sure that this program will actually do very much, other than on the margins.

Filed Under: patents, peer review, peer to patent
Companies: uspto

We've Already Surpassed Last Year's Patent Totals

from the a-mockery dept

We've already noted early on this year that the USPTO suddenly seemed to be ramping up its patent approval rate this year at an amazingly rapid clip. And now comes the news that we've already passed the number of patents granted last year and are rapidly approaching the highest number of patents approved in a year (we should hit it within a couple weeks)... and then we'll still have two and a half months left. As Patently-O notes:

This dramatic increase in the rate of granting patents is impressive -- especially in light of the fact that during this time, the USPTO eliminated examiner overtime hours for an extended period of time and hired only a handful of new examiners.

In other words, it's exactly what we feared. Under the Kappos' regime at the USPTO, they've decided that the number one problem isn't bad patents, but the time it takes to get a patent. So in order to fix that, it looks like they're basically approving a lot more patents, with a lot less examining. That means, a hell of a lot more bad patents are hitting the market this year. Even if you support the patent system, I can't understand how anyone can not be horrified by this result. Rushing through more patents doesn't help anyone -- except the holders of bad patents. This is dangerous to American innovation -- the one thing that the USPTO is supposed to be helping.

Filed Under: patents, uspto
Companies: uspto

Companies Not Rushing To The Patent Office For Accelerated Review Of Green Patents

from the perhaps-they're-not-in-such-a-rush? dept

We were a bit worried late last year when the USPTO announced plans to speed up the review process for so-called "green tech patents." Speeding up the review process of a system notorious for granting bad, innovation-hindering patents doesn't seem wise for an emerging market. The USPTO said it would cap the trial period to just 3,000 patents to keep it from getting overwhelmed. However, it turns out that the USPTO needn't have worried. They haven't even gotten halfway to the cap yet. To date, only 1,477 requests have been made for the accelerated review program. Apparently this has lots of lawyers scratching their heads, wondering if the program is too expensive or what. Of course, there is another possibility as well: the really innovative folks working on greentech breakthroughs are focused on actually innovating, rather than worrying about the patent office. But, perhaps that's just wishful thinking...

Filed Under: accelerated review, green tech, greentech, patents
Companies: uspto

Patent Office Back To Approving Pretty Much Anything

from the you-get-a-patent!-you-get-a-patent!-you-get-a-patent! dept

In the late '90s and early '00s, the US Patent Office saw a massive jump in patent grants -- including tons of really, really bad patents, that have been tied up in huge, expensive lawsuits for years, wasting tons of judicial time and (more importantly) wasting a ridiculous amount of resources that could have (and should have) been going to actual innovation. Some of the research into what was going on showed that the incentive structure at the patent office was totally screwed up. Basically, the incentive was "when in doubt, approve." Why? Because patent examiners were judged on how efficient they were -- meaning how many patents they were able to complete their analysis of in the short amount of time they had. So here's the problem: if you approve a patent, you're done. If you reject a patent, the inventor (well, the lawyers) get an unlimited number of times to change the examiners mind, resubmitting modified applications. In other words, they can bury patent examiners in paperwork, dragging down their efficiency numbers. This isn't to imply that any patent examiner purposely decides to approve junk patents, but that it's impossible to ignore the incentive problem here.

Combine that with some ridiculously bad court rulings, that made things (software, business methods) that people previously considered unpatentable "fair game," along with some insanely large rewards in patent infringement lawsuits, and you had a recipe for disaster. Multiple studies showed that the cost of legal fights over patents greatly outweighed the actual value of those patents. And it was becoming a dangerous snowball: the more bad patents approved, the more bad patent lawsuits, the more bad patents filed, etc. What was interesting was that around 2004, as the debate on this started getting so much attention, the USPTO realized it had a problem and started adjusting things so that incentives were a bit more aligned. And, lo and behold, a lot more patents started getting rejected, and the approval rate went down. Many patent system supporters chided those of us who complained about the incentive structure by saying "see? everything's fine now, since the patent office knows to reject bad patents."

Not so fast.

Last year, the new bosses at the patent office decided that the number one problem was "backlog." No doubt about it, there is a huge backlog and the time it takes to get a patent is very, very long. But rather than realize that the way to decrease the backlog is to reject all bad patents (thus making it less lucrative to file bad patent applications), it appears to have gone back to the old system: implicitly setting up the system so that "when in doubt, approve," is the norm -- just to get through the backlog.

The numbers don't lie, and the always excellent PatentlyO blog has the numbers and the graphs to show that we haven't just increased the rate of patent approvals, we've shot way up, beyond anything seen previously -- making it look like the "correction" from the past few years was just an anomaly. Not only that, but the rate of patent approvals on a monthly basis seems to be increasing, which doesn't bode well for the future either:

Of course, the unfortunate reality is that this won't actually solve the backlog problem at all. You would think, with all the engineering/operations brains at the Patent Office, that they would understand that this will only make the backlog worse. Approving junk patents only makes it more lucrative to file ever more ridiculous patent applications, which only increases the backlog. In rushing through more patents, it only encourages a bigger and bigger backlog. In treating the symptoms, rather than the actual disease, we're making the disease much, much worse.

Filed Under: approvals, backlog, patents
Companies: uspto

USPTO Rejects Submission Because It Was Faxed 'Upside Down'

from the these-people-guard-our-innovation? dept

It's no secret that the US Patent and Trademark Office (USPTO) has outdated technology. But did you know it was so bad they can't even figure out how to rotate a fax? Erik Sherman alerts us to a story he's written about the USPTO rejecting a faxed submission, because it was "received upside down." Seriously.

Your request to record a document in the United States Patent and Trademark Office was received via electronic fax on [date and time in 2010 omitted].

The faxed submission was received upside down. We are unable to continue processing these images.

Please resubmit your document.

My guess? Perhaps the "technology" to rotate a document was patented, and the USPTO didn't want to pay the licensing fee.

Filed Under: fax, patents, technology, uspto
Companies: uspto

Obama Calls The Patent Office Embarrassing For Its Outdated Workflow

from the if-only-they'd-patented-a-smarter-workflow-system dept

Ezra Gildesgame wrote in to let us know that President Obama called the Patent Office "embarrassing" for its archaic workflow process:

"Believe it or not, in our patent office -- now, this is embarrassing -- this is an institution responsible for protecting and promoting innovation -- our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system."

Indeed. It is embarrassing (perhaps the fear of patent infringement holds the patent office back from modernizing?), but not quite as embarrassing as the fact that the patent office has not done its job of "protecting and promoting innovation" at all for a very long time. Given the number of questionable and obvious patents that it has approved, and its willingness to create massive patent thickets, it has become clear that the patent office has been much more focused on processing patents, not in promoting innovation.

Filed Under: obama, patents
Companies: uspto

Patent Office Releases New Temporary Post-Bilski Test For Software Patents

from the it's-something dept

While we're still waiting for the Supreme Court to rule on the Bilski case, which may or may not directly impact the question of software patents, JJ points out that the Patent Office has released some new rules on patentability, based on the appeals court ruling in Bilski (technically, the Patent Office issued a ruling, back in August, but just recently declared that ruling "precedential"). The full ruling can be found here (pdf). The key bit:

For a claimed machine (or article of manufacture) involving a mathematical algorithm,

1. Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., "not a mere field-of-use label having no significance")?
2. Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either "in all fields" of use of the algorithm or even in "only one field?"

If the machine (or article of manufacture) claim fails either prong of the two-part inquiry, then the claim is not directed to patent eligible subject matter.

As many are noting, this remains incredibly vague, though the Patent Office is limited by what the courts have said. One would hope that the Supreme Court's ruling in Bilski might lend some clarity, but the oral arguments suggested that the court might try to steer the decision away from anything having to do with software patents entirely. So, we may still have something of a mess for quite some time.

Filed Under: patents, software patents, test, uspto
Companies: uspto