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FTC Investigates Submarine Patents
Schnake writes: "An article on USAToday talks about how the FTC is investigating Sun Microsystems, Unocal, and Rambus to determine whether they illegally kept patents secret while helping set industry standards! And a quote from the ZDNet article: "It noted that all three companies had filed patent infringement lawsuits against firms they say owed them royalties. But the litigation backfired when those firms countersued, charging them with concealing their patents, and complained to the FTC.""
What about all the patents related to jpeg2000 and mpeg4 ?
It seems most (or at least some) of them were requested and granted just when the relevant technology/algorithms got accepted into the standard. (See also this article)
As the article on advogato mentions : why can't ISO/ANSI/whatever enforce policy stating that no patented work should be included in standards released by it ?
Will they also investigate Microsoft's submarine software patent on procedure invocation which make it impossible for anyone else to legally make a ECMA standard .NET runtime.
we could get the patents *revoked* on the human genome.
/.'s datab...(mysql error processing this directive)
complete BS, If you ask me, consider one case reported by 20/20 (IIRC) where a guy's blood (hence genes) were resistant to the AIDS virus.
Essentially this comes down to theft and fraud. His Blood, His Genes and a Corp. says they own it? MYHAPPYASS they do.
By that logic, I could let Kingston/Rambus/(whoever) make memory, figure out the tech for it (do all the work)...and go buy a stick of memory (or steal it/whatever) and say "this is my memory company now".
And the courts are *believing* this piffle?
Riiiiigggghhhttt.
Moose.
Losing Karma not to my own stupidity, but bugs in
Have you read the moderator guidelines? Well, have you, PUNK? (and I want a Karma: Gnarly option)
A quick patent primer:
The 20 year monopoly does NOT reward publication. It only confers upon the patent owner the right to EXCLUDE others from making, using, or selling the invention covered by the patent.
Secondly, in the United States publication of the patent applications has only recenly begun. Prior to the change in the laws this past November, information regarding any pending patent application in the Patent Office was unavailable to any parties other than the Examiner at the PTO or the individual or corporation which filed the application. The patents were "submarined" by extending the pendency of the applications by filing continuation and divisional applications which kept the information out of the public domain by preventing the patent from being granted and finally publishing in the US.
The patenting process in Europe and under the PCT system provides for publication 18 months after the first priority date, so there is a tremendous amount of information about what US companies are doing (or have done) that is available by searching the EPO and PCT websites at http://www.european-patent-office.org/ and http://www.wipo.org, respectively.
Your example is totally different. Unisys never hid their patent. Patents, unlike trademarks, do not have to be continually defended.
Unisys had up until the day before the patent expired before they had to do anything. It's up to the people creating potentially infringing technology to do patent searches and make sure they are not stepping on any toes. The excuse of, "people forgot about it" doesn't work.
What is being alleged here is a type of fraud/unfair competition. The crux of the claim is that it is unfair for a company to propose its technology be adopted as an industry standard without discloising that it has patents or patent applications on file. If adopted as the standard, the others in the industry will automatically infringe. Options at that point: concede the market to the patent holder, redesign the product so it deviates from the standard set by the industry, or pay a royalty to the patent holder.
To the extent that patents have already issued they are public record, as noted in another post. But currently the law is in flux. The general rule is that until a patent issues, the application and all materials submitted to the PTO is confidential. (The confidentiality allows companies who cannot get patents to still protect the way they do business under trade secret law.) There is a group of applications that fall into this category. However, since the passage of the AIPA (American Inventors Protection Act) and some other tweaks to the law, there is now a publication requirement - applications are published 18 months after filing.
So - in my humble legal opinion, it is unfair for a company participating in standards-setting not to disclose that it has patent applications pending, but as for issued patents, companies should be aware of what their competitors are doing. Especially if it is a public record.
Laws affecting technology will always be bad until enough techies become lawyers.
[stock rant on the subject]
Patents are not about who is right, or who is first; patents are about who will sue.
The US PTO is a money-making service for the government, and this fact is why it operates as it does.
There is a misconception that it is the central duty of the PTO to form a blockade against granting patents. The PTO can and will block applications where there's heavy similarity with prior art or existing patents, but that's really just a guideline to using the service, not the core function.
The PTO's purpose is to grant patents for a fee, and it's wholly suited to do so.
The application vetting process of the PTO is a cost center for the operation of the PTO. This is akin to saying that customer service is a cost center for the operation of AT&T. It is required, but they'll cut costs as much as they can get away with.
To fix the patent application vetting process, two things must happen:
As of 15 March 2001, the USPTO has changed their policies to solve that second problem. They can now publish patent applications before the patent itself is awarded to the applicant. Previously, the patent was hidden while pending, and patent seekers were not required to disclose this unless they had already signed contracts, say, as part of a standards-body. Third parties may now submit "helpful" arguments against controversial applications. The USPTO can then weigh obviousness against challenges without incurring the costs of doing all the searching themselves.
Breaking patents by finding simple prior art is not enough for most cases. Patents already granted are almost never cracked, certainly not by someone using an independent third party's prior art. In the famous Heinlein/Waterbed case, the patent was denied before it was ever granted by the Patent Office. Once a patent has been granted, the Patent Office rarely will get involved in disputes; that is a matter for the courts. (And in this case, the FTC aids the investigation for a countersuit.)
[end of stock rant]
[
Reality is that a patent takes two or three years to issue. Most of the time, these companies would file a patent application at the same time, or slightly before, joining the standards committee. While the standards were being set, the patent was in the PTO, being kept secret.
In fact, since the DEC case most standards committees have a specific disclosure requirement, for example the IEEE standard requires such disclosure. In order to participate, each company must provide the list of patents they hold in this area, as well as guarantee a "reasonable licensing arragement."
Do note that if you want to find patents, because you're writing a standard or for any other reason, go to the USPTO's database search, and go for it. It's easy, it's cheap, and you can get PDF's for $3.
Thalia
While the standards were being set, the patent [application] was in the PTO, being kept secret.
Patents aren't secret. Patent applications are secret (for a limited time in Europe, or until a patent was granted under the old American system), because it's unreasonable to ask a company to expose it's new technology a year or two before the patent office grants it legal protection. But it's certainly abusive to join a standards committee without disclosing any pending patents covering items under discussion. Usually it's also a breach of contract.
According to news reports about the Rambus lawsuits, the abuse went far further than that. They would come back from a standards committee meeting and call their patent attorney to amend the claims in applications at the patent office to cover the technology that had just been discussed.
How is it possible to keep a patent "secret?" The secrets here weren't patents, but patent applications. It's reasonable to keep applications secret for a limited time, since it takes two or three years for the USPTO to grant a patent, and meanwhile there is little legal protection for the technology.
However, if you want to sit on a standards committee, you probably have to sign a contract stating that you will disclose any pending applications concerning the area under discussion.
Aren't all patents part of the public record? Pretty much, although there must be an exception for military secrets. The problem is finding the patents actually related to what you are doing among tens of thousands of badly written patents with over-inflated claims.
The USA Today article keeps saying "patent" where it means "patent application." Patents are on public record. Patent applications are not, for the first 18 months (formerly forever in the US), because it would be idiotic to let the gov't publish your hot new technology, and then take a year or two to process the application and give you some protection against imitators.
"Submarine patent" refers to patent applications that were kept in limbo at the USPTO for a very long time by a stream of amendments and other maneuvers, then finally emerged with apparent claims to whole broad areas of technology. For instance, someone filed a patent application about 1960 for several transistors grown on one block of silicon, interconnected by wires soldered between transistors, instead of the then-usual procedure of sawing up the silicon into individual transistors. After 20-some years of amendments, this finally became a patent which claimed to cover _all_ integrated circuits, never mind that there is as much resemblance between the original invention and a modern IC as between a high-wheel bicycle and a modern automobile. But the "inventor" hoped to collect royalties from companies that felt it was cheaper to pay than to fight.
The things talked about in this article aren't submarine patents, but rather are patent applications that became patents in the normal time, but belonged to companies sitting on the committees writing standards concerning the technology in the applications. That's clearly a conflict of interest, and so standards committees usually require members to sign contracts to disclose related patents and patent applications, and to license them at set rates. The three companies are accused of breaching those contracts. Rambus (at least) is also accused of using the standards committee discussions to target technology to add to their patent claims.
The feds seem to be claiming that this breach of contract voids the patents. That might be too far of a stretch under the laws as written by Congress, but it's certainly justice, and the Constitutional clause authorizing Congress to pass patent laws ("To encourage the progress of science and the useful arts...", or something like that) would seem to require voiding a patent like Rambus's that was deliberately written to _impede_ the adoption of new technology.