>>A fee obviously set to discourage patent reexaminations...
Ummm, apparently, you haven't heard about the costs involved in litigating patents. Last survey I read, the average costs associated with bringing an infringement suit to trial was between 1-5 million dollars.
Compared to that, the thousands of dollars involved in reexamining a patent is a bargain.
First of all, only the CLAIMS define what the scope of patent protection is (see thread below: "did anyone even -read- the patent?" - it's right on point). Whatever you read in the specification, abstract, background, or drawings is only there to support the claims - it doesn't define the scope of protection.
Second, it is very well possible that other products were doing this prior to the filing of the Microsoft patent. The Examiners do not have the practical background to find out which products did what during what time. All they have to work with are the patents and publications that they have available on their search terminals (e.g., EAST, WEST/Derwent, etc.). If they can't find a document that discloses the claimed "invention", they have no choice but to allow the application.
Third, if you or your company are threatened by this application, the USPTO now has mechanisms (Inter-Partes Re-Examination) by which you can directly challenge the validity of the patent. If you have published documents, articles, or any other prior art that was not cited in the patent, you can submit the prior art before the Examiner and order, and actively participate in, a re-examination of the entire patent. You would be surprised to learn of the frequency in which issued patents get invalidated (or at least reduced significantly in scope). This is a relatively new process which (unfortunately) isn't used as often as it should, but it is a cheap and effective way to eliminate problematic patents without resorting to expensive litigation.
BTW, if you are unsuccessful in convincing the Examiner, you can also take your case to the Patent Board of Appeals to make your argument.
The patent laws make sense - you just have to pay attention to how they are applied. It is no different than laws that pertain to taxes, corporations, contracts or even admiralty; people will always try to extend the law to give themselves the greatest benefit. Likewise, if you are being victimized by such a person, the law gives you plenty of avenues to put them in their place (assuming they are wrong).
Um, if you're referring to the Benson case, that's old law that has since been changed. The last time the Supreme Court addressed software, they indicated that computer algorithms MAY be patentable. Subsequent rulings from the Federal Circuit (the court that effectively rules on all patent appeals) expressly indicated in State Street Bank that most algorithmic processes (i.e. software) were statutory patentable matter.
Well, being a former Examiner myself (and a currently-practicing patent attorney), I have to partially dissent from your post. There is no doubt that the USPTO has had problems adjusting to algorithmic patents since State Street Bank (the Fed. Cir. decision that effectively legitimized software patents and business methods). Those of you that follow the posts of Greg Aharonian know that some abominations have been (unfortunately) allowed over the last few years from the USPTO.
The question is: how else would you have it?
Patent Examiners can only work with the patent-searching tools they are given (i.e. EAST, WEST/Derwent, etc.). Since software patents were being allowed only at a minimal rate prior to 1999, there was little prior art for the Examiners to search through. As a result, a large number of bad patents were being allowed during that time. To be fair, most of the prior art that was published at the time only existed in particular trade journals and publications that typically sat at the bottom of a programmer's desk drawer. Without personal knowledge of these publications, Examiners had no way of knowing that they exist. Accordingly, the Examiner had no choice but to allow the application.
Also, by increasing the time for Examination, you will effectively be ballooning the pendency period for USPTO action. Currently, the pendency is in the neighborhood of 2.5 years, which many believe is too long. With increasing the hours, you will backlog cases and push back response times in which applicants cannot use or exploit technologies. In some cases, technology can go obsolete during that time.
There also are quality checks that go into the Examination process. While imperfect, the Office randomly reviews applications being examined, and properly dings the supervisory examiner if his/her subordinates are issuing bad patents. While my experience may be limited, I have NEVER heard of a supervisory examiner pressuring some to allow patents because they were "too hard".
This is not to say that I am happy with the situation at the USPTO - they still have a lot of work to do. But practitioners constantly submit recommendations to the PTO on how to improve the Examination process. For the most part, the PTO does what it can to address the concerns. People have the right to be disgruntled over the examination process at the PTO - but so far, there hasn't been a solution that can be practically implemented.
>>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.
Eh? This is simply not true. Patents get withdrawn or severly scaled back in scope all the time. And through the use of Inter-Partes Re-Examination, third parties can now actively participate in invalidating issued patents before the Examiner, and participate in any appeal before the Board of Patent Appeals should the third party disagree with the result. For smaller companies, this can be a cheap and effective alternative to litigation.
Keep in mind that patents don't realize their true value until someone gets sued on it in a district court. If the Examiner let something slip during the examination, you can be damn sure that a defendant will be dropping every bomb he/she can to invalidate the patent, and will have access to prior art and experts that the Examiner could never have. In the end, evey patent has its day - sometimes it takes a court proceeding to determine how good your patent is.
Slashdot Mirror
>>A fee obviously set to discourage patent reexaminations...
Ummm, apparently, you haven't heard about the costs involved in litigating patents. Last survey I read, the average costs associated with bringing an infringement suit to trial was between 1-5 million dollars.
Compared to that, the thousands of dollars involved in reexamining a patent is a bargain.
First of all, only the CLAIMS define what the scope of patent protection is (see thread below: "did anyone even -read- the patent?" - it's right on point). Whatever you read in the specification, abstract, background, or drawings is only there to support the claims - it doesn't define the scope of protection.
Second, it is very well possible that other products were doing this prior to the filing of the Microsoft patent. The Examiners do not have the practical background to find out which products did what during what time. All they have to work with are the patents and publications that they have available on their search terminals (e.g., EAST, WEST/Derwent, etc.). If they can't find a document that discloses the claimed "invention", they have no choice but to allow the application.
Third, if you or your company are threatened by this application, the USPTO now has mechanisms (Inter-Partes Re-Examination) by which you can directly challenge the validity of the patent. If you have published documents, articles, or any other prior art that was not cited in the patent, you can submit the prior art before the Examiner and order, and actively participate in, a re-examination of the entire patent. You would be surprised to learn of the frequency in which issued patents get invalidated (or at least reduced significantly in scope). This is a relatively new process which (unfortunately) isn't used as often as it should, but it is a cheap and effective way to eliminate problematic patents without resorting to expensive litigation.
BTW, if you are unsuccessful in convincing the Examiner, you can also take your case to the Patent Board of Appeals to make your argument.
The patent laws make sense - you just have to pay attention to how they are applied. It is no different than laws that pertain to taxes, corporations, contracts or even admiralty; people will always try to extend the law to give themselves the greatest benefit. Likewise, if you are being victimized by such a person, the law gives you plenty of avenues to put them in their place (assuming they are wrong).
Um, if you're referring to the Benson case, that's old law that has since been changed. The last time the Supreme Court addressed software, they indicated that computer algorithms MAY be patentable. Subsequent rulings from the Federal Circuit (the court that effectively rules on all patent appeals) expressly indicated in State Street Bank that most algorithmic processes (i.e. software) were statutory patentable matter.
Well, being a former Examiner myself (and a currently-practicing patent attorney), I have to partially dissent from your post. There is no doubt that the USPTO has had problems adjusting to algorithmic patents since State Street Bank (the Fed. Cir. decision that effectively legitimized software patents and business methods). Those of you that follow the posts of Greg Aharonian know that some abominations have been (unfortunately) allowed over the last few years from the USPTO. The question is: how else would you have it? Patent Examiners can only work with the patent-searching tools they are given (i.e. EAST, WEST/Derwent, etc.). Since software patents were being allowed only at a minimal rate prior to 1999, there was little prior art for the Examiners to search through. As a result, a large number of bad patents were being allowed during that time. To be fair, most of the prior art that was published at the time only existed in particular trade journals and publications that typically sat at the bottom of a programmer's desk drawer. Without personal knowledge of these publications, Examiners had no way of knowing that they exist. Accordingly, the Examiner had no choice but to allow the application. Also, by increasing the time for Examination, you will effectively be ballooning the pendency period for USPTO action. Currently, the pendency is in the neighborhood of 2.5 years, which many believe is too long. With increasing the hours, you will backlog cases and push back response times in which applicants cannot use or exploit technologies. In some cases, technology can go obsolete during that time. There also are quality checks that go into the Examination process. While imperfect, the Office randomly reviews applications being examined, and properly dings the supervisory examiner if his/her subordinates are issuing bad patents. While my experience may be limited, I have NEVER heard of a supervisory examiner pressuring some to allow patents because they were "too hard". This is not to say that I am happy with the situation at the USPTO - they still have a lot of work to do. But practitioners constantly submit recommendations to the PTO on how to improve the Examination process. For the most part, the PTO does what it can to address the concerns. People have the right to be disgruntled over the examination process at the PTO - but so far, there hasn't been a solution that can be practically implemented. >>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. Eh? This is simply not true. Patents get withdrawn or severly scaled back in scope all the time. And through the use of Inter-Partes Re-Examination, third parties can now actively participate in invalidating issued patents before the Examiner, and participate in any appeal before the Board of Patent Appeals should the third party disagree with the result. For smaller companies, this can be a cheap and effective alternative to litigation. Keep in mind that patents don't realize their true value until someone gets sued on it in a district court. If the Examiner let something slip during the examination, you can be damn sure that a defendant will be dropping every bomb he/she can to invalidate the patent, and will have access to prior art and experts that the Examiner could never have. In the end, evey patent has its day - sometimes it takes a court proceeding to determine how good your patent is.