Thursday, August 30, 2007

Mike at TechDirt has it wrong on post-grant opposition

Mike at TechDirt responded to an August 29 IPBiz post:

Oh, I'm *all* for improved patent review at the first stage of the process. This bill doesn't have that in any serious way, though. Therefore, why not add that second layer. If you're going to do crap work in approving patents, then at least allow for a reasonable review system in situations when they're challenged.

IPBiz notes that the review mechanism is the same for the first and second window of post-grant review, so the only issue is "when" the review may occur. The "layer" at issue is one of timing, not of substance. As a distinct point, the House dropped the "second window" from its version of the bill, but the Senate did not.

There are many reasons not to have post-grant opposition at all. See Post-grant opposition: a bad idea.

In his initial statement, Mike at TechDirt had spoken of "the incredibly arcane rules that everyone is required to go through to contest a patent." In fact, re-examinations are rather easy to request. W3C even persuaded the USPTO director to do a director-ordered re-examination of the Eolas/Berkeley patent. Of course, it failed to change a single claim. Mike does not like to talk about that.

Mike's initial statement also included the urban legend: patent examiners are given incentives to approve, rather than reject. LBE (among many others) debunked that one back at the Stevenson, Washington meeting in April 2005. It's available on DVD.

As a separate matter, some people have been able to deal with "patent trolls" pretty directly. See for example an article in the IHT.

To return to the point I initially made on August 29, if bad examination of patent applications is the problem, the remedy is to fix the examination. Adding an inspection step (eg, post-grant opposition) is NOT a quality approach, as Deming would tell you if he were still alive.

As an additional point, bad patents don't just impact later "infringers." They can impact later patentees. Ask James Thomson and WARF about the enablement of certain patents cited against them as prior art.

1 Comments:

Blogger Mike said...

As per usual, you have a way with missing the point.

"the review mechanism is the same for the first and second window of post-grant review"

You leave out the fact that the second window of review is only going to come up when there's a controversy over the patent -- meaning a much higher likelihood of folks being present who can present prior art or evidence of obviousness. That doesn't happen during the first round.

The reason for having that second round is simply because it later becomes clear that someone is abusing a questionable patent -- and it should be reasonable to then present evidence that the patent should never had been granted. It's unlikely that anyone will present that evidence when no one knows about the patent or how it will be used.

"In fact, re-examinations are rather easy to request."

Nice spin, but I'm afraid you're wrong again. "Request" and actually go through are two totally different things. I didn't say that the arcane nature was in requesting, but the full process of review.

Mike's initial statement also included the urban legend: patent examiners are given incentives to approve, rather than reject.

I'd love to see some evidence on this. Btw, I never said they were given *explicit* incentives to approve, but the implicit benefits are in approving rather than rejecting.

To return to the point I initially made on August 29, if bad examination of patent applications is the problem, the remedy is to fix the examination. Adding an inspection step (eg, post-grant opposition) is NOT a quality approach, as Deming would tell you if he were still alive.

Again, I have no problem with improving the process on the first go-round as it would solve a lot of the problems if it were done right.

But in lieu of that, a post-grant review process clearly makes sense. Just look at how many bad patent lawsuit situations could have been cleared up much faster at less expense to both taxpayers and the overall economy.

1:48 AM  

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