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December 17, 2005

Patent Office Plays Politics

Defying its own regulations, the patent office is only giving NTP 30 days, instead of the customary 60 days, to reply to the non-final rejection of its patents in the re-examination initiated by infringer Research in Motion (RIM). In case you just dropped in from another planet, NTP sucessfully sued RIM for patent infringement, and RIM has been fighting that reality tooth and nail.

Here is the patent office regulation for response time for re-examination replies -

MPEP § 2263 Time for Response
A shortened statutory period of 2 months will be set for response to Office actions in reexaminations, except where the reexamination results from a court order or litigation is stayed for purposes of reexamination, in which case the shortened statutory period will be set at 1 month. See MPEP § 2286. Note, however, that this 1-month policy does NOT apply to the 2-month period for the filing of a statement under 37 CFR 1.530, which 2-month period is set by 35 U.S.C. 304.

As the re-exam results from neither court order nor stayed litigation, to put it gently, the patent office has made an exception, to take political heat off itself, after receiving letters of complaint from Congress. The patent office has indicated that it will expedite re-exam of all eight of NTP's patents.

The re-exam process could take years, considering that NTP must, after reply to the first non-final rejection, face a final rejection, to which it can appeal to the patent board of appeals (PBAI), and finally to the federal circuit appeals court (CAFC). It would be rather incredible if, out of eight patents, no claims were left valid which RIM did not infringe.

Meanwhile, on Friday, infringement litigation presiding district court Judge Spencer, following his word of not waiting for re-exam results, ordered NTP & RIM to submit briefs by January 17 regarding damages and a possible injunction to shut down infringing Blackberry wireless email service. The parties will then have until February 1 to submit final briefs responding to each other's first briefs. "I would guess that the hearing would be about a week after (the final briefs are filed)," NTP lawyer James Wallace mused.

RIM claims it has developed a work-around to infringement that would enable it to continue BlackBerry service without violating an injunction, but there is widespread skepticism about the work-around because RIM has revealed so little about it.

Posted by Patent Hawk at December 17, 2005 12:21 AM | Prosecution

Comments

Perhaps the haste comes from embarrassment at having perhaps made a billion dollar mistake in granting the patents in the first place :)

Posted by: Rob Hyndman at December 17, 2005 5:20 AM

Political heat from unnamed sources? How about pressure from just about every direction to do the right thing?

Whose fault is it that the NTP was granted 5-8 patents that are now considered to be invalid? The USPTO's. And by extension, whose fault is it that RIM is facing multi-billion dollar losses because of these bad patents? The USPTO's.

This case is a huge mess. Judge Spencer is refusing to allow the USPTO to clean up its own mistake, instead deciding to punish RIM for the fact that the USPTO is set up to grant bad patents by the dozen, and that the courts are largely incapable (as is evident in this case) of making sane decisions about these bad patents.

The USPTO is trying to save itself. It knows that we only need a few more cases like this and a few more rulings from judges like Spencer, and the growing minority of those who are calling into question the validity of the entire process will swell to proportions where *something* will have to be done. And that something is likely to include a major overhaul of how the USPTO works.

Everyone knows that real reform is needed (not the craziness of current proposals). RIM v NTP demonstrate just how urgently we need to put meaningful reform into place. And by 'meaningful,' we are necessarily talking about improving patent quality by changing the USPTO grant process.

Posted by: joey5 at December 17, 2005 7:46 AM

The concept that an American institution would suffer embarrassment would be an anachronism. America is a shameless society, and its institutions reflect that even more strongly than individuals, some of whom do react to embarrassment.

The expressed concept of political heat is very likely correct - avoidance of further blame rather than self contrition.

Posted by: Gary Odom at December 17, 2005 2:45 PM

This entry has been updated to reflect new information from the LA Times confirming that the patent office is acting out of regulation from political pressure.

Posted by: Patent Hawk at December 18, 2005 10:10 AM