2007.09.09 11:33 PM

Still Patent(ly) Absurd

I've previously written, with some disdain I think, about the absurdity of our patent system, at least as it relates to the proliferation of ridiculous software and business process patents. So it was a nice surprise to learn today that Congress has taken up patent reform and is on the cusp of passing some pretty serious reform legislation. As of this writing, H.R. 1908: Patent Reform Act of 2007 has passed the House and is heading to the Senate. Unfortunately, upon reading the actual legislation, and the comments from various legislators (both for and against; PDF and summary available here), and after some investigation of how the legislation was prepared and (barely) debated, my pleasant surprise whiffled. I'm no lawyer, so don't take my word for anything - read the legislation yourself (and blogs like this or this) - but for what it's worth, my take is that 1) there's nothing in this legislation that deals with the problems of software and business process patents, and 2) there's lots in it that caters to large corporations and potentially hurts small inventors. Here are some highlights:

First-to-invent vs. first-inventor-to-file
There's a lot of blah blah in the Congressional record about this legislation changing our patent system from a first-to-invent to first-inventor-to-file system, apparently aligning our patent system with those of various "other countries". I've read over the legislation's section 3 (Right of the First Inventor to File), which describes the changes to section 100 (Definitions) and section 102 (Conditions for patentability), but I don't see what the hubbub is about, probably because I'm not a lawyer, and because I haven't read the text of the original sections. Based on my reading, the changes center around the "disclosure" of information pertaining to an invention and the degree to which it might be considered prior art. This degree of consideration depends on whether the filer (or a co-inventor or minion) disclosed the information and when. It seems to me that the only thing that's been done here is to grant the filer a retroactive one year window within which their own disclosures cannot be used as prior art against their claim (or, I suppose, in support of another claim). Hard to read. I'm willing to be convinced that this is a bad idea, but I don't see it yet.

Goodbye statutory invention registration
I'm not even sure what this was, but apparently it wasn't working out as planned, because the legislation's section 3(c) amendment (see part (e)) to section 103 (Conditions for Patentability; Non-Obvious Subject Matter) eliminates it. I can only assume it was too costly to maintain, redundant, or being abused contrary to its purpose, which was to "give appropriate notice to the public", but not to bestow upon a published patent the aura of a "patented invention for purposes of section 292".

Patent trolls and willful infringement
Based on my reading, the bulk of the legislation is directed at eliminating patent trolls by tightening up the language around what qualifies as willful infringement, and spelling out more clearly the defenses and penalties for defendants. And, I think, again from my non-lawyer-ie station, that they've done a pretty good job in this regard. This is clearly a tough balancing act, giving consideration to folks wanting to enforce their patents, or question the patents of others, while at the same time protecting patent holders from frivolous challenges, and everyone from patent holder claims of willful infringement. Whether these changes will be effective remains to be seen, but even in this regard they've done the right thing by tossing in a mandatory review of various sections of the new law:

(...) Review Every 7 Years- Not later than the end of the 7-year period beginning on the effective date under subsection (k), and the end of every 7-year period thereafter, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (in this subsection referred to as the `Director') shall--

(1) conduct a study on the effectiveness and efficiency of the amendments made by this section; and (2) submit to the Committees on the Judiciary of the House of Representatives and the Senate a report on the results of the study, including any recommendations the Director has on amendments to the law and other recommendations of the Director with respect to the first-to-file system implemented under the amendments made by this section.

That's a good idea, and one I wish would make it's way into more legislation.

Venue and jurisdiction
The changes described in the legislation's section 11 (Venue and Jurisdiction) are getting some negative attention, because they make it potentially more costly and difficult for a patent holding plaintiff to bring a case against a patent infringer by requiring the case to be brought in a judicial district of the defendant's primary place of business and/or where they're incorporated and/or where they've committed (now) a "substantial portion" of the acts of infringement. Of course, this is intended to stop patent trolls from shopping judicial districts, but the result might be to prevent legitimate claims from being brought, too. Apparently in an effort to address this concern, the legislation carves out a couple of exceptions, one for plaintiffs that have legitimate business in a particular district (in other words, they have a legitimate reason to select the judicial district - offices, employees, etc. - it wasn't just pulled out of a hat), and one for a newly defined class of inventor known as the "micro entity". For inventors qualifying as the latter, they can bring suit in the judicial district where they reside. The catch is that to qualify as a "micro entity", an individual cannot already have 5 patents and cannot have an income 2.5 times the median household income "for the most recent calendar year preceding the calendar year in which the examination fee is being paid" (not sure how they are going to reconcile that time-based language). That may prove to be a drag for any latter-day Edisons making a respectable living. In any case, these softening exceptions may prove moot, because the amendment goes on to grant to the district court (in (d)) the ability to "transfer that action to any other district or division where--(1) the defendant has substantial evidence or witnesses; and (2) venue would be appropriate under section 1391 of this title, if such transfer would be appropriate under section 1404 of this title." Which means you risk having your home-grown case shipped off to Anchorage anyway by the court if the alleged infringer lines up their witnesses there.

One other thing concerning "micro entities". The legislation's section 12 (Additional Information; Inequitable Conduct as Defense to Infringement) amends disclosure requirements for applicants in Chapter 11 with a new section 123 (Additional Information) that instructs the Director to "require that applicants submit a search report and other information and analysis relevant to patentability. An application shall be regarded as abandoned if the applicant fails to submit the required search report, information, and analysis in the manner and within the time period prescribed by the Director." My guess is that this could prove to be a heavy burden for a patent applicant, and the repercussions for failing to meet this burden are pretty stiff (not to mention arbitrary and vague - exactly what "time period" can the Directory prescribe?). Apparently the authors thought so too, at least regarding the former, so they added an exclusion for "micro entities". But, again, God help you if you're filing for your 6th patent and earn more than $115,815 a year.

Whither the click-once patent?
No joy. This legislation doesn't even address the issue of out-of-control software, business process, and biological patents. Well, except for one supercilious exception, which was proudly added to the legislation by Rick Boucher (D-VA) and Bob Goodlatte (R-VA) prohibiting the awarding of patents for tax planning methods. Here's what Mr. Boucher had to say about the amendment:

Approximately 60 such [tax planning method] patents have been issued and at least 85 more are pending at the Patent Office.

These patents limit the ability of taxpayers, and the tax professionals they employ, to read the tax laws and find the most efficient means of lessening or avoiding tax liability (contrary to said public policy).

If someone else has previously read the tax law, found the same means of reducing tax liability and received a patent for it, that person is entitled to a royalty if anyone else tries to reduce his taxes by the same means.

I frankly think that is outrageous. No one should have to pay a royalty to pay their taxes. No one should have sole ownership of how taxes are paid.

Such a barrier to the ability of every American to find creative lawful ways to lessen tax liability is contrary to said public policy.

Hey, I'm all for letting folks figure out how best to avoid paying their taxes. But I am at a complete loss to understand how it is that methods for tax planning warrant more protection from (outrageous!) stifling patents than do ordinary business processes, computer algorithms, biological systems, and educational methods. They seem to be suggesting that because tax laws are public policy, they shouldn't be leveraged and packaged for patenting. Well, uh, how about DNA? It's not public policy, but it is naturally occurring. Yet that doesn't prevent someone from discovering (not inventing, mind you) some portion of it related to some disease or prevention of same and patenting it, or creating new DNA by machine or natural breeding and patenting it. How about computer algorithms? They aren't public policy either, but they are derived from (heavily abstracted and layered) universal laws of mathematics and computer science. Yet that doesn't prevent someone from patenting a data structure.

Oh well. I suppose two steps forward and one step back is still progress.


Looks like the Congressional record is gone from the GPOAccess.gov site:


The text, PDF, and summary links are there, but they don't return anything. I'll keep looking for them to come back.

ewbi.develops | 2007.09.10 08:20 AM

Whoa there a minute, a few misunderstandings here.

Re: First to invent / first to file

This would be a HUGE change if it gets adopted in the US. What it means is that it doesn't matter if you invented something first - if someone else gets a patent application filed first, they can still get the patent.

Now, that sounds like a really bad idea and, indeed, many blogs and industry spokesmen have been claiming that it is a bad idea, saying that it will lead to inventions being stolen and so forth. However, the rest of the world, who already have a first to file system, also have lots of tried and tested measures in place to protect inventors inventors from such espionage or from lawsuits unders patents on inventions that they developed independently, and it really is a change for the better. The dissenters just look at the surface explanation and ignore the undercurrents of protection for the inventors.

The thing you're talking about, this one year period of grace against inventor's disclosures thing, has been in US practice for ages. Again, the US is one of the few countries to do this and, as far as I can tell, it just creates unecessary red tape. The US have insisted that Europe and other major patent office adopt this practice too before they will adopt the first to file system. I can almost guarantee you that this will not happen, so actually, there will be no shift in the US from the current first to invent system and all the hubbub is over nothing.

Geoff | 2007.09.12 07:43 AM

Hmm, the worm turns:


ewbi.develops | 2008.07.24 03:11 PM

Looks like SCOTUS will hear Bilski, an important case regarding the patenting of processes; more from RedHat:


Sure hope this goes the right way.

ewbi.develops | 2009.10.02 09:08 AM


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