Slashdot Mirror
Microsoft, Others, File "Stealth" Patents
bobwyman writes "Microsoft and others seem to be filing large numbers of "stealth patent applications" that hide the identify of the "assignee", or owner, of a patent application even though the legal principle of 'Duty of Candor' may legally require them to disclose their interest in the patent. Concealment of patent assignees permits a number of opportunities for fraud in the patent process while also making it more difficult to study patterns of application activity and 'inventiveness.' If not already illegal to conceal assignments, there should be laws written to make it illegal in the future."
As a patent attorney, I read this post with interest. However, the opinion expressed about Microsoft "fraudulently" hiding its ownership of a number of patents is simply not correct. There is no requirement to provide assignee information. When you pay the issue fee, there is a box where you can enter information about the assignee. If you leave the box blank, the assignee name is not printed on the patent. Even if a patent is printed with an assignee, the patent can be re-assigned. However, the Patent Office does not re-print the patent. While the Patent Office has a system for recording assignments on microfilm, recordation is not a requirement. The fact that government agencies are required to promptly forward assignments for recordation does not mean that private entities must do so. Although it may be in the "public interest", it is not a legal requirement. The fact that foreign patents list the name of the assignee is because, in most other countries, the assignee is the applicant. In the U.S., the inventors are always the applicant, regardless of whether the application has been assigned. The duty of candor relates to actions during prosecution of the patent. For example, if you become aware of relevant "prior art," you have a duty to disclose it to the patent office. I could see one scenario where someone filed a continuation application and falsely claimed that it was commonly assigned. That could be a duty of candor problem. However, that is not the situation here. The bottom line is that there is no "fraud" if Microsoft chooses not to identify its ownership of a patent.
thogard wrote:
>FSF or EFF [should]Provide a database of 'prior art
There is already a tool for collecting prior art! This is one purpose for the pubsub.org site. The idea is that if you find a patent or patent application for which you have or seek prior art, you can get it listed on the site and record your prior art. This makes a permanent record that others will be able to use as a source when filing "third party" prior art with the PTO as well as when defending against infringement cases in the future.
Today, there are many discussions of specific patents or applications scattered all over the web. This makes it difficult for those with a real interest in defending against some patent or application to find the prior art they need. However, on PubSub.org, you can write a comment directly linked to a specific patent or application and identify the prior art or other argument you might have for why the patent should not be (or have been) granted. Try it. If you don't find a patent or application that you're interested in, just use the "request new thread" option to get the patent listed.
The system on pubsub.org is different from what you'll find on other sites like BountyQuest where they are only collect prior art on "major" patents. At PubSub.org, you can provide prior art on *any* patent or application and what you provide will be publicly available and reviewable.
If there is demand to do so, I'll expand the scope of what we do at PubSub.org to include providing a place to record "defensive" or "Open Prior Art." This would allow anyone who has a method that they consider patentable to "block" anyone else from getting a patent on the same method. The PTO considers "internet publications" to be valid prior art as long as they are accessible. Should I do this?
bob wyman
However, in the rest of the world, things are somewhat different. For example, for other countries than US, the US assignee is the applicant and is printed on the publication of the patent application. This cannot be hidden (you can only hide the names of the inventors, when they agree).
So, instead of using the USPTO database, you use the search engine of the EPO, Esp@cenet. For Japan, there's the JPO.
You just search for microsoft as the applicant. Europe 288, Japan 293. Then, you search for Horvitz in Europe as applicant: no result. Same for JPO.
Next, I have searched for Horvitz in the EPO database and checked the applications with inventor Horvitz, without a criterion for applicant. All Eric Horvitz are with Microsoft.
My conclusion is therefore, that Microsoft does not file stealth stuff in Europe.
The number of applications in the US might be more, since some European patent applications claim priority of multiple US & PCT applications.
Just as well, I recommend the Esp@cenet search engine anyway; it cover the world instead of just the US.