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September 15, 2008

Peer-to-Pissant

A Peer-to-Patent email, picked up by several newspapers:

Some of the biggest players in the technology industry complain that the U.S. patent system is broken -- putting too many patents of dubious merit in the hands of people who can use them to drag companies and other inventors to court.

Some of the biggest players in the technology industry are looking to ease infringement cost by gutting patent enforcement. And they can't help but taint their shiny little project aimed at improving examination with propaganda tripe. Not a class act in the least.

And Blaise Mouttet, a small inventor in Alexandria, Va., thinks he knows why. The problem, he said, is that "there are too many lawyers and not enough inventors involved with the patent system.""

Mouttet is an electrical engineer posing as Shakespeare.

So Mouttet is taking part in an experimental program launched in June 2007 with the U.S. Patent and Trademark Office and backed by the technology industry that is intended to give the public - including inventors - more of a voice in the system.

The concept behind the program, called Peer-to-Patent, is straightforward: Publish patent applications on the Web for all to see and let anyone with relevant expertise - academics, colleagues, even potential rivals - offer input to be passed along to the Patent Office.

A lot of straightforward concepts run into problems. Wide-scale orgies to build a sense of community, for example. Some folks having suffered a few too many whacks of the ugly stick really cuts into delightful execution.

By using the power of the Internet to tap the wisdom of the masses, Peer-to-Patent aims to dig up hard-to-find "prior art" - evidence that an invention already exists or is obvious and therefore doesn't deserve a patent.

The goal is to locate prior art that Patent Office examiners might not find on their own - and to produce better patents by reducing ones granted on applications that aren't novel. The hope is that this will drive innovation by improving the patent process and reducing the patent infringement lawsuits clogging the courts.

"The Patent and Trademark Office is the agency of citizen creativity, and it needs more and better information to do its job of awarding patents to those citizens who are truly the most creative," said New York Law School professor Beth Noveck, who came up with the idea for Peer-to-Patent while teaching a patent law class. "A patent is a pretty significant monopoly, so we want to make sure we are giving it to the right people."

Nice sentiment, Beth.

Peer-to-Patent has attracted financial support from a cross-section of the technology sector and foundations and is in its second pilot year. In the first year, the voluntary program focused on software, computer and information security patents - drawing applications from industry heavyweights such as International Business Machines Corp., Hewlett-Packard Co., Microsoft Corp., General Electric Co. and open source software pioneer Red Hat Inc., as well as small inventors like Mouttet.

Mouttet, a former Patent Office examiner and now a graduate student in electrical engineering, submitted an application on electronic uses of nanomaterials. Although the Patent Office has rejected his claim - in part because of prior art unearthed through Peer-to-Patent - he is appealing the decision and optimistic he will eventually get his patent. And he is confident it will be stronger for having gone through the process.

But it is the big technology companies that have the highest hopes for Peer-to-Patent since they are some of the most vocal critics of the existing system.

They warn that the Patent Office has been overwhelmed by a sharp increase in patent applications in recent years, particularly in computing. The agency has more than 5,800 examiners with specialized expertise in a range of areas, but they are sifting through a mountain of applications: 467,243 were submitted in fiscal 2007, up from 237,045 in fiscal 1997 and 137,173 in fiscal 1987.

Rising pendency is the touchstone of bad management, and nothing else. There is no budget shortfall. The PTO is fully funded to perform its duties.

As a result, said Dave Kappos, vice president of intellectual property law for IBM, it is taking big technology companies with huge patent portfolios longer and longer to get applications through the system. The Patent Office had a backlog of nearly 761,000 applications at the end of fiscal 2007, with applicants waiting an average of two years and eight months for a final decision.

So, are we to think to think that Peer-to-Patent is a substitute for examination? Please.

That is tough for an industry built on rapid innovation, short product life cycles and technology that can become quickly outdated, Noveck said. Indeed, a key benefit of participating in the Peer-to-Patent program is the promise of an expedited review, with a preliminary Patent Office decision in as few as seven months.

Backlog is only part of the problem, however. Poor patent quality is just as big a concern.

There are plenty of examples of controversial patents in different industries, such as the one awarded to Amazon.com Inc. for its "1-click" online shopping feature or the one granted to J.M. Smucker Co. for a crustless peanut-butter-and-jelly sandwich.

Unlike the patents themselves, old "junk" patent stories never expire.

But some of the most contentious patents have come out of the tech sector since software and other cutting-edge technologies are relatively new to the Patent Office and evolving quickly, explained Mark Webbink, director of New York Law School's Center for Patent Innovations, home to Peer-to-Patent, and former general counsel for Red Hat. That means that patent examiners don't have long-established databases of existing inventions to consult in reviewing these applications.

Anyone who thinks that examiners don't have good prior art databases knows nothing about the USPTO.

"With technology, the prior art often can't be found in existing patents or academic journal articles," Noveck said. "It could exist in a string of computer code posted online somewhere that isn't indexed."

Beth Noveck, law professor, with scant patent experience, but a savvy grant grabber, spouting nonsense. As Patent Hawk and John Doggett of X-Files say: "the truth is out there."

The result of substandard patents, tech companies say, has been a sharp increase in costly infringement lawsuits that eat up valuable resources and threaten to keep innovative products off the market. According to James Bessen and Michael J. Meurer of Boston University School of Law, 2,830 patent lawsuits were filed in U.S. district courts in 2006, up from 1,840 in 1996 and 1,129 in 1986.

No correlation ever made between number of patent suits and "substandard patents." In other words, fictional extrapolation.

Technology companies are particularly vulnerable to infringement litigation since their products can contain hundreds if not thousands of linked patented components critical to their basic operation. In one closely watched case, a protracted legal battle nearly forced the shutdown of the popular BlackBerry wireless e-mail service.

The BlackBerry has in fact become a rallying cry for technology lobbyists pressing Congress to overhaul the patent system. Among other things, the industry wants to streamline the patent approval process and limit damages and injunctions awarded to patent holders who win infringement cases. But with those proposals stalled in the Senate, Peer-to-Patent offers another way to improve the system, said Curtis Rose, director of patents for Hewlett-Packard.

NTP's asserted patents against the Blackberry were valid, and withstood reexamination. A patent lynch mob formed by "the industry."

Not everyone is sold on the concept of Peer-to-Patent. Stephen Key, an inventor in California who has patented everything from toys to container labels, worries that the program requires applicants to put their ideas out there on the Web for anyone to see - and potentially steal.

News flash to Key: if you can't patent it, its commercialization guarantees it's existence in the public domain. If you do patent it, copiers are infringers, and you get a payday. The mention of Key is a typical propaganda ploy to appear "fair and balanced," by presenting a straw man on the other side.

Boston University's Meurer also questions how effective Peer-to-Patent will be since he believes the real factor driving the increase in patent litigation is not a lack of prior art, but rather the vague, overly broad scope of too many patent claims today.

Meurer knows nothing of patents if he sees no relationship between broad claims and invalidity in light of the prior art.

"Applicants come in and ask for the sun, moon and stars and they say: 'Let the Patent Office tell me what is and isn't patentable,'" said John Doll, U.S. Commissioner for Patents. "It's a burden on the system."

What a disgraceful thing for the Patent Commissioner to say. Whiner.

Indeed, said Stanford Law School professor Mark Lemley, the challenge facing the Patent Office is to find a balance between awarding patents in order to encourage innovation without making it too easy to obtain a patent that can be used to abuse the system.

Lemley states the obvious of the need for rigorous examination.

Noveck believes Peer-to-Patent will help strike that balance. The Patent Office reports that it has issued preliminary decisions on 40 of the 74 applications that have come through the program so far. Of those, six cited prior art submitted only through Peer-to-Patent, while another eight cited art found by both the examiner and peer reviewers.

The question now is whether the program can be scaled to review hundreds or even thousands of applications that extend far beyond the technology arena. So in its second year, Peer-to-Patent is being expanded to include claims covering electronic commerce and so-called "business methods," a controversial category of patents vital to the financial services sector.

Scalability is the big question. One pundit is doubtful.

Goldman Sachs Group Inc., for one, is submitting a number of applications, including one for an equities trading platform used to raise capital without a public offering. John Squires, Goldman's chief intellectual property counsel, has high hopes for the program.

"This is a way to harness the wisdom of the crowds," Squires said. "Why should the Patent Office have to operate without the benefit of all the information on the horizon?"

Peer-to-Patent is an intriguing idea. But it would be more credible without the negative nonsense, and with a sense of it being worthwhile. The only meaningful statement in the whole press release was that Peer-to-Patent was useful in six out of 40 patent applications, 15%. Not very significant. Will we ever find out what percentage of patents were blocked by Peer-to-Patent? Probably not. But you can bet that percent would in the low single digits, if any at all. And so Peer-to-Patents seems more heat than light.

Posted by Patent Hawk at September 15, 2008 3:14 PM | Prior Art

Comments

Peer to patent has been in the EPC from the 1978 outset, as Article 115 of the Convention. As a European patent attorney I use it unhesitatingly, whenever it brings my client something. I would say I use it about once every 5 years. Mostly I don't use Art 115, whenever I come to the conclusion that using it will hurt my client more than it will help him. I expect the USA to come to the same realisation, by the time it has had as much experience of peer to patent as Europe already has.

Posted by: MaxDrei at September 15, 2008 10:26 PM

Hawk,

Great post. A friend of mine e-mailed me this article yesterday.

Mr. Doll continues to evidence his unfitness for the position he occupies.

It is beyond time for him to go.

Posted by: JD at September 16, 2008 6:25 AM

"But it would be more credible without the negative nonsense, and with a sense of it being worthwhile."

Are you kidding? This post would be more credible but for the blatant contradiction it actually is.

Posted by: Student of Beth's at September 17, 2008 7:53 AM

Student of Beth's:

Thanks for taking time off from your studies to make a study of this entry.

Your logic is flawed. You fail to consider point of view, and purpose.

I'm not trying to promote a program which supposedly improves something.

I was criticizing how someone who is promoting a supposedly positive program does so by tearing down the very system she is supposedly seeking to improve, instead of talking up how her program is improving the situation. Of course, in this case, the problem with taking the high road, of touting improvement, is that the program isn’t doing much, is insignificant. And so she takes the hack tack of tearing down.

This Peer to Patent project appears co-opted to serve the political goals of its paymasters, who want use the project to poison the well of public opinion by continuing to slake that most patents are junk, and that the patent office is incapable of doing its job. Thus, Ms. Noveck appears a pawn, and you a mere dupe.

Posted by: Patent Hawk at September 17, 2008 8:24 AM


Mr. Hawk/Prospector,

Please take some time consider what you have spent your legal career doing. And if you can reply honestly that you are not living in weird inverted world well, then, maybe I should take notes from you.

1) When you draft a patent application and you get to the background section, what do you do? You point out the failure of the others in the market in an effort to highlight the novelty of your clients.

2) When you get a rejection from the patent office, what do you do? You point out the shortcomings of the references cited in attempt to gain coverage for your client.

On second thought, who am I kidding? You filed a suit against Microsoft for infringing a patent on Tool Group manipulations. I guess your critique of the peer to patent system is to be expected, especially when there is quick settlement money on the line.

Posted by: Student of Beth's at September 17, 2008 11:40 AM

Dear Student:

Your argument, while unfocused, appears to be that the patent prosecution process is analogous to public relations. It isn't.

I don't live in a "weird inverted world." I also don’t have a legal career. I am an inventor, a technologist, and a patent technical consultant, as well as being versant in other disciplines. I am, professionally, a service provider.

Your statement about Odom v. Microsoft tells me that you know nothing about what you write, just wild-ass guessing in ignorance. Take my word for it, you don't have a clue.

Not incidentally, user interface invention is paramount to technological innovation and marketplace acceptance. Try reading some history on the topic, Student. For example, how has Apple managed to maintain a market presence in computers, make a smash hit out of a fairly pathetic portable music player, and stroll into the densely crowded cell phone market instantly triumphant? User interface. What does Microsoft prominently advertise as the reason to upgrade to Microsoft Office 2007?

Thanks for reading the Patent Prospector.

Posted by: Patent Hawk at September 17, 2008 1:02 PM

Indeed, Phawk I like your blog for what you deliver but your commentary is overly snarky. They are entitled to their opinions of the system just as you are entitled to your opinion. What exactly is your opinion though by the way? Is the system doing just fine hunky dorey or is it just all the PTO's fault that toolbar patents are being asserted against MS, the one-click debacle happened and etc? Is it just the lack of "rigourous examination" that leads to bad patents (and apparently the backlog at the same time, even though the two require opposite things to exist)? What kind of examination do you think you get anyway?


Btw, if MS decided to just take out your functionality on its toolbar I wouldn't miss it.

Posted by: random at September 17, 2008 1:14 PM

The one issue that is ignored in Peer-to-Patent is The Deal. The Deal is that the inventor discloses his invention to the public in return for the limited monopoly. Peer, just like coerced publication, requires that the inventor disclose his invention prior to examination. Then the PTO stiffs him and the public still gets the benefit of The Deal.

If I'm the inventor, which I sometimes am, and I am not going to get the benefit of the patent, because, for instance, SPE's are on a self-serving jihad against allowance, then I am sure as 'ell not going to give the public the benefit of my insight. Let them suck rose thorns for 50 years until somebody else sees the "obvious." This 'tude, of course, obviates off-shore patenting. Or vice versa.

Because of patent globalization, the Europeans, who never had The Deal, and now industry backed academic initiatives, the pressure is being turned up to force disclosure prior to examination. So much for The Deal. Congress or the courts ought to formerly bury it. Or at least quit referring to it as the backbone of the US system

Who is Beth Noveck by they way? I don't see her registered with the PTO. Another academic "IP expert" and CAFC wanna' be? The comments from student are not a very positive reflection on her didactic efficacy.

Posted by: Babel Boy at September 18, 2008 8:18 AM

"Let them suck rose thorns for 50 years until somebody else sees the "obvious."

If by 50 years you mean a month preach it brother!

"Then the PTO stiffs him and the public still gets the benefit of The Deal."

Show us even 1 applicant that was "stiffed". Go ahead. I dare you.

Posted by: random at September 18, 2008 1:29 PM

Don't understand "The Europeans never had The Deal". What about UK Patents Acts, every one, till 1978? Or is UK outside your definition of "Europe"? The US Constitutional Founding Fathers were wise enough to see that a system of patents benefits the public but were also wise enough to recognise the grave impediment to free competition that a patents system would constitute. So, lest there be any doubt that a patent law would be contrary to free competition,they felt it necessary in the Constitution expressly to confer on Congress the right to promulgate a law of patents. How anybody gets from that point to the idea that dud patents should be issued, willy nilly, with a Presumption of Validity, is quite beyond me. You file on something new, useful and inventive. You get a patent. You get deterrence too, from the moment of the WO or A publication. At least, that's how it works in old Europe.

Posted by: MaxDrei at September 19, 2008 7:29 AM

Not sure I follow the transition from The Deal in the UK to the willy nilly patent issue you raise, Max.

The Deal in the US is not a statutory or constitutional right in the US. If it were, mandatory publication rules for some applicants would not be possible. The Deal is just a paradigm that courts have used to justify the monopoly and the USPTO has used to use to keep applications secret until the patent issues.

Dud patents, presumption of valdity issues you raise aren't relevant to this point, which is about inventors having to disclose the invention BEFORE the patent issues, which requirement is a breach of the "contract" (i.e. Deal)between the inventor and the government.

Are you saying that the UK Patent Acts makes The Deal statutory in UK? Please cite the statute, for I would love to see such a law. Do the UK courts rely on the whole quid pro quo lie, too?
Example?

Posted by: Babel Boy at September 19, 2008 8:01 AM

"The Deal" is that, in return for an enabling disclosure of something new useful and non-obvious, you get a 20 year monopoly. If your contribution isn't new, or is obvious, the A publication reveals nothing that the public didn't already have. So, you have nothing to grumble about, when the public starts practising all the stuff in your A, that it already had anyway. If your A publn, however, does actually reveal something patentable, you are going to get your patent. And then you can come after all those who have taken what's revealed in your A publication. Serious A publications deter, at least in Europe. Still don't see how A publication takes anything away from "The Deal". The UK 1949 Act kept secret the prosecution ile, until the appln was allowed, and about to grant. Canny competitors used to file oppositions, to delay issue. Others petitioned for revocation, because the Office hadn't found all the relevant art. Today's European system works better. It took cogniscence of all the world's flawed patent Statutes, when writing the EPC, in 1973. The EPC founding fathers got dead on right the balance of interests between those holding patent rights, and those they were seeking to intimidate. Shame we in Europe couldn't follow through, with a litigation regime to match. But, meanwhile, the national jurisdictions in Europe, for infringement and validity actions, are tons better than they were, by dint of competition for the business.

Posted by: MaxDrei at September 19, 2008 2:10 PM

' "Applicants come in and ask for the sun, moon and stars and they say: 'Let the Patent Office tell me what is and isn't patentable,'" said John Doll, U.S. Commissioner for Patents. "It's a burden on the system." '

Then, Mr. Doll, I would have to ask: what would ya say ya do at the PTO?

Just what is the PTO's job anyway Mr. Doll?

Posted by: AllSeeingEye at September 22, 2008 5:24 PM

Good point, Eye, but help me please. Take the typical case of an appln that sets forth an incredibly detailed description of a "Best Mode" of, say, a stepless auto power transmission, but then claims "Every power transmission under the sun, moon and stars". Applicant sits back and waits for the FAOM before deciding what to claim. The scenario is not so implausible, in these days of US patent law firms writing PCT cases in which we see as line 1, directly under the Title, the words "Brief Description of the Drawings". In Europe, the insemination into the pending appln, after filing, of a definition of "the invention" that is an "intermediate generalisation" not unambiguously derivable, as such, in the case as filed, is forbidden "new matter". So, we don't have Mr Doll's problem, in Europe. But Mr Doll has a problem because his Applicants can wait till after filing before they announce what exactly their invention is, somewhere between the echoing void that is "everything under the sun" and the pin-point within that echoing void that is the one and only "Best Mode". The US courts have made this problem. Maybe they can fix it, but I don't see how the PTO can.

Posted by: MaxDrei at September 23, 2008 3:22 AM