Re: The Vaults of Innovation

From: David Brown (david_at_no.westcontrol.spam.com)
Date: 06/07/04 

Date: Mon, 7 Jun 2004 14:03:19 +0200

"Eric Bohlman" <ebohlman@omsdev.com> wrote in message
news:Xns95013DDCFECF7ebohlmanomsdevcom@130.133.1.4...
> mojaveg@iwvisp.com (Everett M. Greene) wrote in
> news:20040605.79E1D20.65EC@mojaveg.nodomain:
>
> > The only point with which I would take issue is the part
> > about the USPTO generating profits (unless you're referring
> > to profits for other than the U.S. government). It seems
> > more like the USPTO is no longer bothering to consider the
> > validity of a patent application and is simply checking for
> > conformance to the rules, regulations, and laws regarding
> > the form of the application. If the application has the
> > proper form, issue the patent and let the grantee and any
> > potential "infringer" slug it out in court over validity.
>
> I disagree here. I think the problem isn't that procedures have changed,
> but that they *haven't* changed. The USPTO is "validating" software and
> business-model patents the same way they've always evaluated physical-
> invention patents. The big problem here is that because physical
> inventions have always been patentable, any relevant prior art will almost
> always be found in prior patents. This means that any disqualifying prior
> art in a new patent application for a physical invention will be easily
> turned up by a search of previous relevant patents, so that's what patent
> examiners do.
>
> This doesn't work for software, though, because software's been around for
> decades before it was patentable, so most of the relevant prior art is
> unpatented and therefore can't be discovered by looking at old patents.
> Thus the USPTO can't, by its usual procedures, discover prior art for
> software unless it was invented quite recently. Effectively, the
examiners
> have to trust the applicants. The prior art for software is mostly
> documented in academic literature, old product manuals, textbooks, and
> proprietary internal company documents, and the USPTO isn't currently set
> up to search that kind of documentation.

As far as I understood it, the USPTO does not do any research or checking of
prior art of any sort - they simple ask the applicant if there has been any
prior art. For traditional types of patents, it is easy for the applicant
to check - they can look through the patent archives as you suggest. This
also means that applicants know that any future challengers will also have
easy access to solid proof of prior art, so there is no point in wasting
effort applying - any challenges would be settled immediately by court
rulings. For software patents, the lack of patent histories does not affect
the USPTO's research - they clearly do practically none anyway, as ten
minutes with google would turn up prior art to a hefty proportion of
software patents. However, such sources are not as clear and strong
evidence when the patent is contested, so a big company can get their patent
and rely on challengers being unwilling to spend the time and money in long
court battles showing the proir art.

I have also heard that the USPTO is funded based on the number of patents it
issues, rather than on the work required to do a proper job. If this is the
case, then I think this is the key to solving a lot of its problems. It
would certainly be nice if they actually thought a little bit about what
patents actually are, and why they were introduced in the first place (to
protect small inventors from large, rich companies).

I don't know whether patent offices in Europe are going to be just as bad
once software patenting gets underway here.

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