Perhaps not the best source for law, but a wikipedia article sugests that this is a fairly recent (last twenty years) development in Federal Circuit appeals, called the "suggestion test", which isn't really supported in section 103.
That's true. The documented motivation requirement is, as I understand it, primarily a procedural requirement that safeguards the USPTO against the appearance of favoritism or bias. If CorpA submits a patent and the USPTO seemingly arbitrarily rules that anybody could have come up with that, while competition CorpB gets a (similar, slightly different, completely different) patent issued, time after time, it becomes highly suspect whether the USPTO - a Department of Commerce entity - is interfering in free trade.
The documented motivation requirement avoids this. Inventions aren't obvious because the USPTO doesn't feel like granting the patent; they're obvious because there is documented evidence that someone has suggested this solution to the problem. And on the other hand - if there isn't any documented motivation to modify the references, doesn't that pretty much define an act of invention (no matter how small)? (Answer: In the eyes of 35 USC, yes, that is "invention".)
Of course that's the correct statute, but it's only a few paragraphs long. The case law and MPEP surrounding what 35 USC 103 actually means could be succinctly summarized in about 1000 pages. MPEP 2143-2144 is probably about 50 pages in print and barely scratches the surface of what is meant by "obvious".
The world would be a much simpler place if every citizen could read the statutes and understand what they mean. Unfortunately, it's just not so. The definition of "obvious" as created by 35 USC 103 has been argued back and forth for over 50 years.
You claim that "There must be a documented motivation to combine the technologies, or the practice of combining them must be known to a person of ordinary skill in the relevant art." But the "person skilled in the art" clause in patent law, does not refer to an actual person who has done it before. It asks that if an imaginary "person skilled in the art" was given the same task, would they have been able to come up with the idea?
The original poster is 100% correct. No offense, but I have no clue where "would they have been able to come up with the idea" question has any base in 35 USC, 37 CFR, or the MPEP. If you have any citations, I'd love to see them. I assure you that this is not the operative question when patent examiners are rejecting your application.
I advise that you become familiar with the Manual of Patent Examining Procedure because the original poster is clearly familiar with it.
Here are two relevant portions of the MPEP regarding how to prove something is "obvious", MPEP 2143 and 2143.01.
You will find the original poster's comments are completely in line with the Manual of Patent Examining Procedure. With all due respect, comments and opinions that diverge from what the MPEP states are either a) suggestions to improve the patent system or b) simply irrelevant, depending on the context. In both cases, these comments would have no relation to the current US patent system as it exists.
It is my intention to be informative - I hope you won't take offense. If you have other questions about the MPEP or how the patent system works, I'd be happy to cite what I can.
Thank you. I have posted myself how the McDonald's coffee lawsuit is horrendously misunderstood. It's almost embarrassing that someone agreed with my comments by erroneously referring to it.
The disanalogy between all your other examples and video games is that none of the industries behind them design their products specifically to be addictive, none market them as addiction-causing, and none explicitly support groups of addicts to encourage and to further their addiction.
Without surrendering the other points, I would argue that the body-building industry is specifically focused on the addictive nature of lifting. "Feeling the burn" is a key aspect of a successful workout and the same feeling triggers all sorts of chemical changes in your body. It is addictive. They sell products targeted specifically at getting you and your workout to that reward point faster and longer.
Yes, the analogy to the church was very fast and loose, but if these industries are liable for the success of their products, there are indeed similarities.
Nowhere in that article does it prove that he was re-enacting a scene from the game.
For all we know, he could have been re-enacting Wile E. Coyote.
(Clearly this reference might not apply in China, but in the broader context of blaming video games, there are precious few things left to be outraged about. What was so different in the 1960s that kids weren't offing themselves like lemmings whenever they saw the Roadrunner cartoons?)
Yeah, you're absolutely right, but how the hell does selling an addictive product make you liable? Is the porn industry liable for destroying (or saving) marriages? What about the makers of Battletech or Dungeons & Dragons? What about Gold's Gym or Weider, both of whom sell weight lifting equipment which leads to addictive chemical reactions in your body?
Perhaps my 2nd grade orchestra teacher is liable for my addiction to playing musical instruments? I can't even get the damn thoughts out of my head - whether I'm at work, at home watching TV, or suddenly awake in the middle of the night, I am constantly thinking (usually way in the back of my mind) about music and playing music. Oh the mental anguish!
I'm not disagreeing with your premise about these games. They are addictive. One in particular had a hold of me for several years, but I finally shook it. However, I can't fathom how people can hold the makers of these things liable for a person's irresponsible addictive behavior. What are they supposed to do? Produce a successful product, but not too successful? It reminds me of the medieval Catholic church decree that it was sinful to make too much profit. (Was it 10%?) Any profits you make over that must be turned over to the church, else you're going straight to hell. Is that what we're suggesting with video games and cigarettes? Why not oil companies, tv shows, and professional athletes/sports teams?
These lawsuits might be successful on an individual scale where specific facts can be considered, but in the broader scheme of things, they're preposterous. If I were a game developer, I would specifically design my online games that require a monthly subscription fee to be as addictive as possible.
Sure there is. It's called a distinct lack of class.
I happen to agree with Stallman's dislike of RFID. His behavior, however, seems strikingly similar to middle school students getting sent to the principal's office for attention.
That quote doesn't address what the GP post was about, I'm afraid. It basically states that a patent applicant can provide definitions in his application for words that he uses there. GP was talking about the use of the phrase "vacuum pressure" without any definition provided.
I believe it very succinctly addresses the issue. If he doesn't provide definitions as required by 2111.01, the patent will likely have extremely significant flaws. Any competent attorney would know that and would resolve these issues before the application is allowed.
I'm not saying you're remotely his level, I'm just saying that being a patent lawyer isn't a magical trigger for correctness.
Quite tactful; I wouldn't say I'm at his level either. I would say that being a patent lawyer is an incredible credential towards correctness on Slashdot. I'm being strictly objective when I say a large majority of people interested in the patent system don't have a clue how it works or how it is supposed to work.
Law aside, we probably all have some concept of what's going to fail such a test.
That's all very true, but the patent system was originally designed with the specific goal of granting the broadest patent claims that an inventor can demonstrate. Add to that the burden of rejecting a patent claim must be shown in documented, publicly available prior art (after the requirements of 35 USC 101 and 112 have been met).
Someone recently mention the "Method of exercising a cat with a laser pointer" patent to me. I have no doubt that there was no prior art for that. Granted, anyone whose cat chased their laser pointer immediately began "exercising a cat with a laser pointer", but that doesn't make it prior art. As you've defined the "smell test", we can probably agree that there isn't much "invention" there, but that's entirely irrelevant in the eyes of the law. The guy submitted a patent application and there was no prior art to refute his claim that he was the first person who invented the technique.
It didn't come close to exceeding the standard for obviousness I'd want, because all it was doing was applying well known techniques to a device small enough to fit in a human pocket instead of a ships radio room, telegraph office or desktop email server.
Understood. I don't recall how old that patent is, but newly issued patents have their prosecution published in PAIR (Patent Application Information.. uh.. Retrieval.... System?) accessible from www.uspto.gov. You can read what the lawyers and the examiner argued about during the prosecution. I'm not familiar with the prosecution of that patent (and not sure if it's publicly available at this time) but there is a section of the manual of patent examining procedure that specifically addresses "Making Portable"
The mere existence of that section suggests to me that the lawyers were probably arguing some other feature of the RIM/Blackberry application(s), however I don't know for certain.
Ask me or others to design a system architecture for the same task and it's nearly certain that the same principles would have been used in essentially the same way.
I don't debate that, however this avoids a couple of pertinent questions. Did you build it? Did you even attempt to solve the same problem they did? Do you have any evidence that you conceived of the idea before they made their product? The question of "invention" is not "could you have come up with this?", but rather, "Who first had the idea to do it and solved the problems of implementation?" You might not like it, but that's basically the concept that forms the foundation of the patent system.
I am referring to rather extensive fees that must be paid to the government in order to keep the patent active for 20 years. I don't mean to sound harsh, but I think there's probably a lot of stuff regarding patents you haven't heard before.
Sure, sure. But if you really want to produce a product which is based on the original invention, even if it is modified, you still owe the original inventor. And he may not even want to share his invention, or will ask a ridiculous fee (see, for instance, Eolas).
Absolutely not. You have to pay fees or you can be barred from producing an infringing product. If you have a patented modification of the product, it is not infringing, else your patent would be invalid. Exceptions exist where your attorney is a complete tool and fails to point out how the original patent never considers or describes your modification.
The only thing is that al the time you work on it, you know you are doing R&D for someone else for free.
Only if your attorney is your cousin Vinny. See above.
And, as a "patent law professional", aren't you bothered by the fact that nowadays the issuing of patents stiffles rather than stimulates innovation?
Sir, I don't have a clue to what you're referring. Over the last 225 years, the patent system has stifled American industry to a position of global economic dominance in a wide variety of technologies. In light of reality, facts, and an understanding of this topic, I am forced to answer that I'm not the least bothered.
And as for people spouting half-truths about my profession: happens all the time, but I laugh it away. You should do that too, instead of getting all worked up about it. It saves you a lot of anger over time.
Sage advice indeed. The part I have more trouble laughing off is the incessant doomsday prophecies on Slashdot about the patent system coupled with the belligerant ignorance held by basically everyone here. Like a bad romantic relationship, they're all in love with the suffering but refuse to do anything to alleviate it. That song gets old after awhile and sometimes I do cave in, but you're right - I should save the anger.
Sounds nice, but it doesn't work that way. For 20 years, the "invention" is protected, so no-one can work on it. Then, after 19 years, they apply for a new patent on a completely new invention, which is a slight modification on the old invention. Blammo, they are in it for another 20 years.
1. The patent will require significant maintenance fees in order to keep it active for 20 years.
2. Anybody is free to patent a "slight modification" of the original invention.
3. A patent does not prevent you from "working on" the technology it discloses. The concept of public disclosure in a patent ensures the exact opposite.
4. You don't seem to have very much experience in the patent industry. I am a patent law professional.
5. How would you react if I didn't know much about your profession but masqueraded as an expert?
The problem for the cases which are mentioned on Slashdot is that they don't pass the smell test and are generally not considered new or innovative by those here who are professionals in the field the patent involves. When the patent system is granting such patents, then it's obvious that those same professionals are going to lose respect for the system.
I've implied on countless occasions that a "smell test" that's based on misunderstanding is a ridiculously useless test.
Patent applications are examined by professionals in the field the patent involves.
I reiterate that there is a fundamental lack of knowledge regarding the patent system in general, and particularly on Slashdot. Making references to a "smell test" is simply an indicator that this is correct. There are precious few tests to pass before a patent is granted. They are all clearly defined in legislation and case law. None of them involve popularity on an internet website.
The chances of me considering filing a patent application for a ten minute or two day job are close to zero, yet those time thresholds are those often involved in innovation in the field - and are routinely done by the first person to be asked to solve the particular problem presented.
This much is true, and an elegant and appropriate restatement of your criticism is that current case law and legislation does not adequately provide the USPTO with a definition of obviousness that distinguishes this type of every day problem solving from "invention". While there is an argument that such a distinction is neither required nor desired by the language of the Constitution, it is apparent that a great many people in the industry want that distinction to be made. This situation, however, is entirely outside the scope of the USPTO's responsibility and/or jurisdiction. It is up to Congress or the courts to address this issue and correct it, if they deem necessary.
If some guy in Indiana wants to pay hundreds of dollars to patent stuff that (regardless of being real physics or not) can't possibly be implemented before the patent expires, I'm all for it. That means that if/when technology finally catches up it'll be public domain. He should go ahead and slip in a broad patent on near-light travel, and something about wormholes. To tell the truth, I feel the same way about gene patents. If they want to patent them all, let them. As many incredible advances as have been made in genetics, I somehow feel they'll be much more useful in twenty years. The goverment is too dumb to figure out what's obvious and what's not, so if we just patent [i]everything[/i] now and check back in twenty years, the problem will be solved.
Bears repeating. It's almost as though you understand more about the patent system than the average Slashdotter.
This is bad, because inventor was supposed to disclose the invention to obtain a patent and this implies using established terminology to describe it.
From MPEP 2111.01(III)
III. APPLICANT MAY BE OWN LEXICOGRAPHER
An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992))
That's not strictly true. All the constitution says about that is in the enumerated powers clause, which contains
Regarding the constitutional right, its read into the term "Inventors". The analysis is that something can only be "invented" once. After that, whoever comes up with it (on their own, as the case may be) is not technically "inventing" the concept.
Regarding the Libertarian topic.. yeah. I'm not asking you to agree, but the fact is that it is read into the term "Inventors" by every lawyer and judge who desires to continue a successful career in patent law. Let it suffice to say that I've yet to be persuaded by a Libertarian to change my voter registration.
Aaargh. Well, if that patent office accepts logic of that sort, then we have bigger problems.
Whether or not "the patent office accepts logic of that sort" is irrelevant. It's only popular myth that the patent office decides these types of things. The patent office must comply with court decisions that set precedent, which is where "logic of that sort" originates.
They cause more harm than good, and they violate the rights of an inventor who discovers (independently) something which someone else has already patented.
Under the constitution, the guy who discovers (independently) at a later date has no right to the invention.
I'll be honest in saying that I believe that there are about 3-5 inventions per year, max, that actually deserve patent protection (this is assuming that one accepts that patents are a good idea in general).
As a person who works 50 hours per week in patents, this is simply not true - but first let's both acknowledge that the legal definition of "invention" is vastly different than the dictionary. This is one in a long line of misunderstandings the public holds about the patent system.
Interesting, I believe I'd heard otherwise. [about examiners being paid for allowing/rejecting]
Whoever told you that is at least extremely suspect. That type of system would immediately make every issued patent subject to the perception that fraud or bribery was involved. Examiners usually have at least some personal contact with the inventor's attorney during the course of examination. If the examiners had any financial interest in the application, the entire system would reek of corruption. I strongly suspect someone was speaking in hyperbole or was entirely clueless.
I speak with all the authority that the anonymous internet grants when I say that examiners have absolutely no financial reward/penalty tied to whether an application is or is not rejected. They do have a system that counts accepted/rejected patents equally to determine how much work they've accomplished in a given timeframe.
But I'm almost sure I'd read that they don't specialize patent examiners... that is, you're just an "examiner" not a "computer science examiner" or a "steam fittings examiner" etc.
I assure you that this is completely untrue. There is a senior level master's certification they can achieve as a master "generalist", but it's quite unpopular with the management and there are rumors that it's being phased out, even in certain areas where it could be justified (such as class 717, which loosely correlates to "software engineering" and obviously covers a wide range of disciplines).
PS - I don't know how fast this thread will be archived but it's been a pleasure talking with someone who is both interested and inquisitive about the patent system. If you happen upon a rant from me at a later date, it won't be you I'm flaming.;)
"Computer software, algorithms, methods and techniques; numerical / mathematical algorithms, manipulations and techniques; and any other "inventions" with no physical manifestation - are NOT eligible for patent protection."
That's basically the current rule and it's impossible to clearly enforce. The current way around this is to claim, for example, a mathematical algorithm that produces a result which is displayed on a screen, transmitted to another computer, or some equivalent "physical manifestation". And as in In re Sarkar, this practice "exalts form over substance" and allows basically every reasonable implementation of the algorithm to be patented. Personally, I think more weight should be given to the analysis in Sarkar, but for some reason that I don't fully understand (perhaps the age of the case?) its analysis is often dismissed in more recent case law.
Requiring a physical prototype of the invention would help as well.
It would help corporations with lots of capital. It would basically eliminate the concept of the individual inventor except in the Pasta Pot technology. Also, a prototype really has nothing to do with the patent examination process. An inventor is entitled to broader patent protection than his prototype, so the scale model is really little more than an extremely expensive toy.
. There should also be a method of publishing patent applications for public review, and a simple, direct method for the public to submit comments and references to prior art, before a new patent is approved.
It's called Pre-Grant Publication, it's part of the Patent Cooperation Treaty, and it's been in place for basically every patent application filed since 2000. 37 CFR 1.99 allows for a 3rd party to submit prior art and has been in place for years and years, but I've never heard of anyone using it. There is a proposed bill in Congress that will expand this facility. Soliciting comments from the public is a very touchy subject. You could quickly get into situations where competitors in the marketplace get into inequitable conduct at the patent office and nobody at the USPTO is equipped or prepared to straighten that out. They have patent examiners; they don't have fraud examiners. You submit a patent and I (your competitor) miraculously submits all sorts of technical analysis, expert opinions, etc., that give the examiner so many things to doubt that your patent will never issue, regardless of the prior art.
Patent examiners also should not get paid based on the number of patents reviewed, rejected, approved, etc. Make 'em salaried, exempt employees, with no motivation to reject or approve patents that relates to their compensation.
As far as I know, examiners have never been paid based on allowing or rejecting patents. They are currently salaried, exempt employees who have no interests in whether an application issues except for filling out the paperwork.
And get patent examiners who are actually skilled in the fields where they will be examining patents: eg, require a degree in mechanical engineering for examiners who will examine patents for boilers, a degree in electrical engineering for examiners who will examine patents on new transformers, etc.
As far as I know, that's been the requirement as far back as colleges produced enough graduates. (It might not have been the case in 1820.. but for all of the modern technical era it has been true.) I know plenty of people who have gone to work at the USPTO. In almost every circumstance, having an undergrad degree with a great GPA and experience in the field is enough to make you an average new hire.
I don't claim to have a "legal definition of invention." However, the current "legal" definition does include, I believe, some verbiage regarding "obviousness." This particular invention IS "obvious to a skilled practitioner" or however it's worded.
No "legal definition of invention" and we're talking about an aspect of the legal system. Brilliant. You have the knife in this gunfight.
The legislation that mentions the term "obvious" is 35 USC 103 and is one of the four extremely basic tenets of the patent system. It is literally the material you learn on the first day as a patent examiner, when studying for a registration number, when studying patents in law school, or basically having anything to do with the patent system period. And as I'm sure you are well aware, the language of a statue is never interpreted as it seems - as anyone with any experience in the patent system knows, there are hundreds of examples of case law that explain what the term "obvious" in 35 USC 103 means. The dictionary is insufficient.
I've had this conversation with at least 20 different people on Slashdot and they all exhibit roughly the same level of knowledge about the patent system - essentially none. That isn't meant as an insult and I clearly don't expect you to be an expert in a field in which you do not work. By the same token, I don't know much about plumbing. However, as a mature adult, I readily acknowledge that I don't know anything about plumbing and hence you won't find me engaging in a public tirade about how plumbers are lazy idiots who are screwing up the world. See, before I did that, I'd make sure that I had at least a very basic understanding, based on fact, of plumbing.
So maybe you aren't the expert on how the patent system works? Just a thought. Some people are, and when they read what you've shared with the Slashdot community, you pretty much look like an ass.
Our patent system didn't used to work the way it does today. You had to submit a scale model of the thing you were patenting.
That was so long ago that it's hardly worth mentioning. The USPTO receives something like 350,000 applications per year and there is a 2 year backlog. They don't want the job of handling ~1,000,000 scale models. Sure, fewer people might apply if they had to provide a model, but it already costs ~$2500 to apply yourself (never recommended) and ~$7500 to hire an attorney for the most simple applications. Shouldn't that be deterrent enough to the garage inventor? Wouldn't scale models (expensive, difficult to develop, perhaps an invention by themselves) simply give large corporations an advantage at the patent office?
So what sort of problems do they see?
There's a huge discrepancy between the legislation and judicial decisions that define statutory inventions ("statutory inventions" meet the requirements of 35 USC 101 and are subject to patent protection - this is the issue we're talking about) and what people are actually writing in their applications. The existing case law is very wishy-washy about where the line is. A software algorithm is not statutory, computer instructions for the algorithm is not statutory, but those same instructions on a "computer readable medium" are statutory because it implies that a computer system (a tangible, usable apparatus) will be "configured" by those instructions to perform the algorithm.
I kid you not, that is literally the line of reasoning established by the courts. Software is still not a patentable invention in the US, but a computer system that includes the software IS patentable (and is distinguishable from other computer systems ONLY by its software).
See what I mean by wishy-washy? The USPTO has no jurisdiction to say, "I don't care if you put it on a computer. You put software on a computer; this is software; this is not patentable." If you choose to define your invention as a computer + software, it is a statutory invention.
That's just one example of the disparity between the tools available to the USPTO and the reality in the industry. Search the net for "Lundgren". I believe it was decided on July 15th of this year. You'll be pretty upset with what the court decided in that one.
And are you sure that they just don't see the same problems as the slashdot crowd because they don't know as much about computers?
Yes, quite, with the caveat that whenever you hire 6,000 people, there will be a few outliers among the bunch.
C'mon - the patent examiner for that must be retarded. Gimme that one at least.
I agree with your skepticism, but there are a lot of reasons why that could have been issued. First, I would wonder what the harm is in granting that patent? How in the world are you going to sue for damages when someone plays with their cat? Patents are only useful if you patent something that's profitable. You can't stop a person from infringing your patent privately - you can only stop them from profiting from your invention. Playing with your cat? Maybe the examiner was snoozing. Maybe he just understood the law, saw the patent would be harmless, and got a chuckle out of it. I dunno, just offering an alternative explanation.
To be a little less snippy than my other post, let me just point out that the chapter of the Manual of Patent Examining Procedure which deals with the concepts of patentability is something like 500 pages long. The section which specifically deals with whether or not abstract ideas, computer software, etc. get patent protection is roughly 50 pages long, 2 columns per page. It is a LOT of material, and even still it fails to provide any clear guidance on whether or not your application will be considered patentable (ignoring prior art for the moment).
If you or anyone has a single sentence test that clears up this extremely complicated issue, everyone in the patent industry is listening.
For me, such decisions tend to cause me to favor the view that patents of non-physical items are a significant barrier to innovation and we should consider ending them as a means of encouraging innovation.
So the discovery of the method to make steel should not be a patentable invention? A new process that can manufacture amazing new hard drives should not be patentable? A new process that produces an existing product for 10% of the cost isn't an innovation that promotes science?
Just asking, because it seems to me that rewarding people for inventing each of the above should be key part of any justifiable patent system.
Slashdot Mirror
That's true. The documented motivation requirement is, as I understand it, primarily a procedural requirement that safeguards the USPTO against the appearance of favoritism or bias. If CorpA submits a patent and the USPTO seemingly arbitrarily rules that anybody could have come up with that, while competition CorpB gets a (similar, slightly different, completely different) patent issued, time after time, it becomes highly suspect whether the USPTO - a Department of Commerce entity - is interfering in free trade.
The documented motivation requirement avoids this. Inventions aren't obvious because the USPTO doesn't feel like granting the patent; they're obvious because there is documented evidence that someone has suggested this solution to the problem. And on the other hand - if there isn't any documented motivation to modify the references, doesn't that pretty much define an act of invention (no matter how small)? (Answer: In the eyes of 35 USC, yes, that is "invention".)
Of course that's the correct statute, but it's only a few paragraphs long. The case law and MPEP surrounding what 35 USC 103 actually means could be succinctly summarized in about 1000 pages. MPEP 2143-2144 is probably about 50 pages in print and barely scratches the surface of what is meant by "obvious".
The world would be a much simpler place if every citizen could read the statutes and understand what they mean. Unfortunately, it's just not so. The definition of "obvious" as created by 35 USC 103 has been argued back and forth for over 50 years.
The original poster is 100% correct. No offense, but I have no clue where "would they have been able to come up with the idea" question has any base in 35 USC, 37 CFR, or the MPEP. If you have any citations, I'd love to see them. I assure you that this is not the operative question when patent examiners are rejecting your application.
I advise that you become familiar with the Manual of Patent Examining Procedure because the original poster is clearly familiar with it.
Here are two relevant portions of the MPEP regarding how to prove something is "obvious", MPEP 2143 and 2143.01.
MPEP 2143
MPEP 2143.01
You will find the original poster's comments are completely in line with the Manual of Patent Examining Procedure. With all due respect, comments and opinions that diverge from what the MPEP states are either a) suggestions to improve the patent system or b) simply irrelevant, depending on the context. In both cases, these comments would have no relation to the current US patent system as it exists.
It is my intention to be informative - I hope you won't take offense. If you have other questions about the MPEP or how the patent system works, I'd be happy to cite what I can.
Thank you. I have posted myself how the McDonald's coffee lawsuit is horrendously misunderstood. It's almost embarrassing that someone agreed with my comments by erroneously referring to it.
Without surrendering the other points, I would argue that the body-building industry is specifically focused on the addictive nature of lifting. "Feeling the burn" is a key aspect of a successful workout and the same feeling triggers all sorts of chemical changes in your body. It is addictive. They sell products targeted specifically at getting you and your workout to that reward point faster and longer.
Yes, the analogy to the church was very fast and loose, but if these industries are liable for the success of their products, there are indeed similarities.
For all we know, he could have been re-enacting Wile E. Coyote.
(Clearly this reference might not apply in China, but in the broader context of blaming video games, there are precious few things left to be outraged about. What was so different in the 1960s that kids weren't offing themselves like lemmings whenever they saw the Roadrunner cartoons?)
Perhaps my 2nd grade orchestra teacher is liable for my addiction to playing musical instruments? I can't even get the damn thoughts out of my head - whether I'm at work, at home watching TV, or suddenly awake in the middle of the night, I am constantly thinking (usually way in the back of my mind) about music and playing music. Oh the mental anguish!
I'm not disagreeing with your premise about these games. They are addictive. One in particular had a hold of me for several years, but I finally shook it. However, I can't fathom how people can hold the makers of these things liable for a person's irresponsible addictive behavior. What are they supposed to do? Produce a successful product, but not too successful? It reminds me of the medieval Catholic church decree that it was sinful to make too much profit. (Was it 10%?) Any profits you make over that must be turned over to the church, else you're going straight to hell. Is that what we're suggesting with video games and cigarettes? Why not oil companies, tv shows, and professional athletes/sports teams?
These lawsuits might be successful on an individual scale where specific facts can be considered, but in the broader scheme of things, they're preposterous. If I were a game developer, I would specifically design my online games that require a monthly subscription fee to be as addictive as possible.
They're pretty much my favorite animal.
Sure there is. It's called a distinct lack of class.
I happen to agree with Stallman's dislike of RFID. His behavior, however, seems strikingly similar to middle school students getting sent to the principal's office for attention.
Ah, no trouble. Glad I didn't flip out ;)
I believe it very succinctly addresses the issue. If he doesn't provide definitions as required by 2111.01, the patent will likely have extremely significant flaws. Any competent attorney would know that and would resolve these issues before the application is allowed.
Quite tactful; I wouldn't say I'm at his level either. I would say that being a patent lawyer is an incredible credential towards correctness on Slashdot. I'm being strictly objective when I say a large majority of people interested in the patent system don't have a clue how it works or how it is supposed to work.
That's all very true, but the patent system was originally designed with the specific goal of granting the broadest patent claims that an inventor can demonstrate. Add to that the burden of rejecting a patent claim must be shown in documented, publicly available prior art (after the requirements of 35 USC 101 and 112 have been met).
Someone recently mention the "Method of exercising a cat with a laser pointer" patent to me. I have no doubt that there was no prior art for that. Granted, anyone whose cat chased their laser pointer immediately began "exercising a cat with a laser pointer", but that doesn't make it prior art. As you've defined the "smell test", we can probably agree that there isn't much "invention" there, but that's entirely irrelevant in the eyes of the law. The guy submitted a patent application and there was no prior art to refute his claim that he was the first person who invented the technique.
It didn't come close to exceeding the standard for obviousness I'd want, because all it was doing was applying well known techniques to a device small enough to fit in a human pocket instead of a ships radio room, telegraph office or desktop email server.
Understood. I don't recall how old that patent is, but newly issued patents have their prosecution published in PAIR (Patent Application Information.. uh.. Retrieval.... System?) accessible from www.uspto.gov. You can read what the lawyers and the examiner argued about during the prosecution. I'm not familiar with the prosecution of that patent (and not sure if it's publicly available at this time) but there is a section of the manual of patent examining procedure that specifically addresses "Making Portable"
MPEP 2144.04
The mere existence of that section suggests to me that the lawyers were probably arguing some other feature of the RIM/Blackberry application(s), however I don't know for certain.
Ask me or others to design a system architecture for the same task and it's nearly certain that the same principles would have been used in essentially the same way.
I don't debate that, however this avoids a couple of pertinent questions. Did you build it? Did you even attempt to solve the same problem they did? Do you have any evidence that you conceived of the idea before they made their product? The question of "invention" is not "could you have come up with this?", but rather, "Who first had the idea to do it and solved the problems of implementation?" You might not like it, but that's basically the concept that forms the foundation of the patent system.
Maintenance fees from the Manual of Patent Examining Procedure
Fee amounts
I am referring to rather extensive fees that must be paid to the government in order to keep the patent active for 20 years. I don't mean to sound harsh, but I think there's probably a lot of stuff regarding patents you haven't heard before.
Sure, sure. But if you really want to produce a product which is based on the original invention, even if it is modified, you still owe the original inventor. And he may not even want to share his invention, or will ask a ridiculous fee (see, for instance, Eolas).
Absolutely not. You have to pay fees or you can be barred from producing an infringing product. If you have a patented modification of the product, it is not infringing, else your patent would be invalid. Exceptions exist where your attorney is a complete tool and fails to point out how the original patent never considers or describes your modification.
The only thing is that al the time you work on it, you know you are doing R&D for someone else for free.
Only if your attorney is your cousin Vinny. See above.
And, as a "patent law professional", aren't you bothered by the fact that nowadays the issuing of patents stiffles rather than stimulates innovation?
Sir, I don't have a clue to what you're referring. Over the last 225 years, the patent system has stifled American industry to a position of global economic dominance in a wide variety of technologies. In light of reality, facts, and an understanding of this topic, I am forced to answer that I'm not the least bothered.
And as for people spouting half-truths about my profession: happens all the time, but I laugh it away. You should do that too, instead of getting all worked up about it. It saves you a lot of anger over time.
Sage advice indeed. The part I have more trouble laughing off is the incessant doomsday prophecies on Slashdot about the patent system coupled with the belligerant ignorance held by basically everyone here. Like a bad romantic relationship, they're all in love with the suffering but refuse to do anything to alleviate it. That song gets old after awhile and sometimes I do cave in, but you're right - I should save the anger.
1. The patent will require significant maintenance fees in order to keep it active for 20 years.
2. Anybody is free to patent a "slight modification" of the original invention.
3. A patent does not prevent you from "working on" the technology it discloses. The concept of public disclosure in a patent ensures the exact opposite.
4. You don't seem to have very much experience in the patent industry. I am a patent law professional.
5. How would you react if I didn't know much about your profession but masqueraded as an expert?
I've implied on countless occasions that a "smell test" that's based on misunderstanding is a ridiculously useless test.
Patent applications are examined by professionals in the field the patent involves.
I reiterate that there is a fundamental lack of knowledge regarding the patent system in general, and particularly on Slashdot. Making references to a "smell test" is simply an indicator that this is correct. There are precious few tests to pass before a patent is granted. They are all clearly defined in legislation and case law. None of them involve popularity on an internet website.
The chances of me considering filing a patent application for a ten minute or two day job are close to zero, yet those time thresholds are those often involved in innovation in the field - and are routinely done by the first person to be asked to solve the particular problem presented.
This much is true, and an elegant and appropriate restatement of your criticism is that current case law and legislation does not adequately provide the USPTO with a definition of obviousness that distinguishes this type of every day problem solving from "invention". While there is an argument that such a distinction is neither required nor desired by the language of the Constitution, it is apparent that a great many people in the industry want that distinction to be made. This situation, however, is entirely outside the scope of the USPTO's responsibility and/or jurisdiction. It is up to Congress or the courts to address this issue and correct it, if they deem necessary.
Bears repeating. It's almost as though you understand more about the patent system than the average Slashdotter.
~works full time in patent law
From MPEP 2111.01(III)
III. APPLICANT MAY BE OWN LEXICOGRAPHER
An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992))
Regarding the constitutional right, its read into the term "Inventors". The analysis is that something can only be "invented" once. After that, whoever comes up with it (on their own, as the case may be) is not technically "inventing" the concept.
Regarding the Libertarian topic.. yeah. I'm not asking you to agree, but the fact is that it is read into the term "Inventors" by every lawyer and judge who desires to continue a successful career in patent law. Let it suffice to say that I've yet to be persuaded by a Libertarian to change my voter registration.
Whether or not "the patent office accepts logic of that sort" is irrelevant. It's only popular myth that the patent office decides these types of things. The patent office must comply with court decisions that set precedent, which is where "logic of that sort" originates.
They cause more harm than good, and they violate the rights of an inventor who discovers (independently) something which someone else has already patented.
Under the constitution, the guy who discovers (independently) at a later date has no right to the invention.
I'll be honest in saying that I believe that there are about 3-5 inventions per year, max, that actually deserve patent protection (this is assuming that one accepts that patents are a good idea in general).
As a person who works 50 hours per week in patents, this is simply not true - but first let's both acknowledge that the legal definition of "invention" is vastly different than the dictionary. This is one in a long line of misunderstandings the public holds about the patent system.
Interesting, I believe I'd heard otherwise. [about examiners being paid for allowing/rejecting]
Whoever told you that is at least extremely suspect. That type of system would immediately make every issued patent subject to the perception that fraud or bribery was involved. Examiners usually have at least some personal contact with the inventor's attorney during the course of examination. If the examiners had any financial interest in the application, the entire system would reek of corruption. I strongly suspect someone was speaking in hyperbole or was entirely clueless.
I speak with all the authority that the anonymous internet grants when I say that examiners have absolutely no financial reward/penalty tied to whether an application is or is not rejected. They do have a system that counts accepted/rejected patents equally to determine how much work they've accomplished in a given timeframe.
But I'm almost sure I'd read that they don't specialize patent examiners... that is, you're just an "examiner" not a "computer science examiner" or a "steam fittings examiner" etc.
I assure you that this is completely untrue. There is a senior level master's certification they can achieve as a master "generalist", but it's quite unpopular with the management and there are rumors that it's being phased out, even in certain areas where it could be justified (such as class 717, which loosely correlates to "software engineering" and obviously covers a wide range of disciplines).
PS - I don't know how fast this thread will be archived but it's been a pleasure talking with someone who is both interested and inquisitive about the patent system. If you happen upon a rant from me at a later date, it won't be you I'm flaming. ;)
That's basically the current rule and it's impossible to clearly enforce. The current way around this is to claim, for example, a mathematical algorithm that produces a result which is displayed on a screen, transmitted to another computer, or some equivalent "physical manifestation". And as in In re Sarkar, this practice "exalts form over substance" and allows basically every reasonable implementation of the algorithm to be patented. Personally, I think more weight should be given to the analysis in Sarkar, but for some reason that I don't fully understand (perhaps the age of the case?) its analysis is often dismissed in more recent case law.
Requiring a physical prototype of the invention would help as well.
It would help corporations with lots of capital. It would basically eliminate the concept of the individual inventor except in the Pasta Pot technology. Also, a prototype really has nothing to do with the patent examination process. An inventor is entitled to broader patent protection than his prototype, so the scale model is really little more than an extremely expensive toy.
. There should also be a method of publishing patent applications for public review, and a simple, direct method for the public to submit comments and references to prior art, before a new patent is approved.
It's called Pre-Grant Publication, it's part of the Patent Cooperation Treaty, and it's been in place for basically every patent application filed since 2000. 37 CFR 1.99 allows for a 3rd party to submit prior art and has been in place for years and years, but I've never heard of anyone using it. There is a proposed bill in Congress that will expand this facility. Soliciting comments from the public is a very touchy subject. You could quickly get into situations where competitors in the marketplace get into inequitable conduct at the patent office and nobody at the USPTO is equipped or prepared to straighten that out. They have patent examiners; they don't have fraud examiners. You submit a patent and I (your competitor) miraculously submits all sorts of technical analysis, expert opinions, etc., that give the examiner so many things to doubt that your patent will never issue, regardless of the prior art.
Patent examiners also should not get paid based on the number of patents reviewed, rejected, approved, etc. Make 'em salaried, exempt employees, with no motivation to reject or approve patents that relates to their compensation.
As far as I know, examiners have never been paid based on allowing or rejecting patents. They are currently salaried, exempt employees who have no interests in whether an application issues except for filling out the paperwork.
And get patent examiners who are actually skilled in the fields where they will be examining patents: eg, require a degree in mechanical engineering for examiners who will examine patents for boilers, a degree in electrical engineering for examiners who will examine patents on new transformers, etc.
As far as I know, that's been the requirement as far back as colleges produced enough graduates. (It might not have been the case in 1820.. but for all of the modern technical era it has been true.) I know plenty of people who have gone to work at the USPTO. In almost every circumstance, having an undergrad degree with a great GPA and experience in the field is enough to make you an average new hire.
No "legal definition of invention" and we're talking about an aspect of the legal system. Brilliant. You have the knife in this gunfight.
The legislation that mentions the term "obvious" is 35 USC 103 and is one of the four extremely basic tenets of the patent system. It is literally the material you learn on the first day as a patent examiner, when studying for a registration number, when studying patents in law school, or basically having anything to do with the patent system period. And as I'm sure you are well aware, the language of a statue is never interpreted as it seems - as anyone with any experience in the patent system knows, there are hundreds of examples of case law that explain what the term "obvious" in 35 USC 103 means. The dictionary is insufficient.
I've had this conversation with at least 20 different people on Slashdot and they all exhibit roughly the same level of knowledge about the patent system - essentially none. That isn't meant as an insult and I clearly don't expect you to be an expert in a field in which you do not work. By the same token, I don't know much about plumbing. However, as a mature adult, I readily acknowledge that I don't know anything about plumbing and hence you won't find me engaging in a public tirade about how plumbers are lazy idiots who are screwing up the world. See, before I did that, I'd make sure that I had at least a very basic understanding, based on fact, of plumbing.
So maybe you aren't the expert on how the patent system works? Just a thought. Some people are, and when they read what you've shared with the Slashdot community, you pretty much look like an ass.
That was so long ago that it's hardly worth mentioning. The USPTO receives something like 350,000 applications per year and there is a 2 year backlog. They don't want the job of handling ~1,000,000 scale models. Sure, fewer people might apply if they had to provide a model, but it already costs ~$2500 to apply yourself (never recommended) and ~$7500 to hire an attorney for the most simple applications. Shouldn't that be deterrent enough to the garage inventor? Wouldn't scale models (expensive, difficult to develop, perhaps an invention by themselves) simply give large corporations an advantage at the patent office?
So what sort of problems do they see?
There's a huge discrepancy between the legislation and judicial decisions that define statutory inventions ("statutory inventions" meet the requirements of 35 USC 101 and are subject to patent protection - this is the issue we're talking about) and what people are actually writing in their applications. The existing case law is very wishy-washy about where the line is. A software algorithm is not statutory, computer instructions for the algorithm is not statutory, but those same instructions on a "computer readable medium" are statutory because it implies that a computer system (a tangible, usable apparatus) will be "configured" by those instructions to perform the algorithm.
I kid you not, that is literally the line of reasoning established by the courts. Software is still not a patentable invention in the US, but a computer system that includes the software IS patentable (and is distinguishable from other computer systems ONLY by its software).
See what I mean by wishy-washy? The USPTO has no jurisdiction to say, "I don't care if you put it on a computer. You put software on a computer; this is software; this is not patentable." If you choose to define your invention as a computer + software, it is a statutory invention.
That's just one example of the disparity between the tools available to the USPTO and the reality in the industry. Search the net for "Lundgren". I believe it was decided on July 15th of this year. You'll be pretty upset with what the court decided in that one.
And are you sure that they just don't see the same problems as the slashdot crowd because they don't know as much about computers?
Yes, quite, with the caveat that whenever you hire 6,000 people, there will be a few outliers among the bunch.
C'mon - the patent examiner for that must be retarded. Gimme that one at least.
I agree with your skepticism, but there are a lot of reasons why that could have been issued. First, I would wonder what the harm is in granting that patent? How in the world are you going to sue for damages when someone plays with their cat? Patents are only useful if you patent something that's profitable. You can't stop a person from infringing your patent privately - you can only stop them from profiting from your invention. Playing with your cat? Maybe the examiner was snoozing. Maybe he just understood the law, saw the patent would be harmless, and got a chuckle out of it. I dunno, just offering an alternative explanation.
If you or anyone has a single sentence test that clears up this extremely complicated issue, everyone in the patent industry is listening.
So the discovery of the method to make steel should not be a patentable invention? A new process that can manufacture amazing new hard drives should not be patentable? A new process that produces an existing product for 10% of the cost isn't an innovation that promotes science?
Just asking, because it seems to me that rewarding people for inventing each of the above should be key part of any justifiable patent system.