A coming Sikahema on patent oppositions: good news and bad news
In a post titled Tech cos. protest patent reform in letter to Locke in the Microsoft Blog at SeattlePI, one has the text
Lawrence Ebert, of the Center for the Study of Digital Property, explains on the center's blog why post-grant review is controversial.
The post-grant oppositions are not a sure bet. The positive side is that the procedures seem to have worked reasonably well in defeating questionable patents in Europe. But third parties may be less likely to come up with prior art than proponents hope – even if they can become aware of every patent application's implications, they benefit competitors at their own expense by getting involved. And a post-grant opposition is unlikely to work well if the technology that supports the examiner's work in the first place is inadequate, or if measures of what it means for patents to be of sufficient quality or non-obvious are hollow. Often, lawyers benefit more than business by multiplying procedures, and the current legislation is thus viewed very skeptically by innovators who do rely on patents, such as those in biotech.
Microsoft's position is that post-grant reviews would strengthen patents and make the patenting process more efficient.
**IPBiz is authored by Lawrence Ebert, and Lawrence Ebert has strongly criticized the proposed post-grant reviews/oppositions contained within patent reform proposals since 2005. But Lawrence Ebert is NOT of the Center for the Study of Digital Property and didn't write the above-quoted text.
Ebert has criticized the opposition proposals first of all because they are inconsistent with the notions of quality expressed by Deming. If one has a problem in the quality of a patent examination, one fixes the patent examination. One does not add an additional inspection step, which is what an opposition amounts to. Ebert has mentioned that patent attorneys would likely benefit from the implementation of oppositions, which makes the criticism of such opposition proposals by patent attorneys such as Hosteny and Ebert all the more significant. Ebert has also noted that opposition procedures would likely be misused by larger entities against smaller entities. The procedure would be readily gamed to inflict harm on smaller players, and would be much less likely to be used to weed out bad patents.
The good news about the seattlepi post: it's always nice to be mentioned. The bad news: the post wasn't accurate.
To see what happened, one can go to the link used by SeattlePi and show additional text:
(...)
The post-grant oppositions are not a sure bet. The positive side is that the procedures seem to have worked reasonably well in defeating questionable patents in Europe. But third parties may be less likely to come up with prior art than proponents hope--even if they can become aware of every patent application's implications, they benefit competitors at their own expense by getting involved. And a post-grant opposition is unlikely to work well if the technology that supports the examiner's work in the first place is inadequate, or if measures of what it means for patents to be of sufficient quality or non-obvious are hollow. Often, lawyers benefit more than business by multiplying procedures, and the current legislation is thus viewed very skeptically by innovators who do rely on patents, such as those in biotech.
Changes that start further back in the PTO process are therefore well worth considering. For a start, supporting better technology to support the Office's search to discover whether a patent application is really a new idea would help.
Perhaps the area where there is the greatest room for improvement is the traditional weakness of the unelected public sector--accountability. With the patent office, one tends to get what one measures. Patent examiners get one point for the first "office action" and another for the second. This invites a tendency to deny the patent application, merited or not (one point), and then grant it, merited or not (second point). Granting a meritorious application the first time around? One loses the chance at a second point. Denying a weak application the second time around? One loses the chance to move on to another application and rack up more points. This is not the examiner's fault, but the fault of a system that values speed of processing over all else.
Likewise, the measurement of patent quality causes problems. The patent office consistently finds that their patents are measuring up quality-wise. This flatly contradicts the sense of many technologists. This should raise a red flag--what standard is the patent office looking to? How effective is it, for example, at measuring whether the patent office is finding older ideas, “prior art,” that relate to the patented claim but which are not themselves patented? The answer seems to be, not very.
The Patent and Trademark Office is not the only government office that could use some reform. But because of its role in delineating the rights that form and inform trades and investment in tech, its dysfunction matters more than some. Setting the standards for quality and productivity straight will help the courts straighten out even thornier tangles where it matters down the litigation road.
posted by Solveig Singleton @ 3:30 PM | Legislation and Legislators, Patents
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Comments
On post-grant opposition:
http://www.ipfrontline.com/depts/article.asp?id=14695&deptid=4
On elements in the patent quality discussion:
http://www.ipfrontline.com/depts/article.asp?id=14520&deptid=4
Lawrence B. Ebert
April 22, 2007
Posted by: Lawrence B. Ebert at April 22, 2007 10:23 PM
Lawrence Ebert, of the Center for the Study of Digital Property, explains on the center's blog why post-grant review is controversial.
The post-grant oppositions are not a sure bet. The positive side is that the procedures seem to have worked reasonably well in defeating questionable patents in Europe. But third parties may be less likely to come up with prior art than proponents hope – even if they can become aware of every patent application's implications, they benefit competitors at their own expense by getting involved. And a post-grant opposition is unlikely to work well if the technology that supports the examiner's work in the first place is inadequate, or if measures of what it means for patents to be of sufficient quality or non-obvious are hollow. Often, lawyers benefit more than business by multiplying procedures, and the current legislation is thus viewed very skeptically by innovators who do rely on patents, such as those in biotech.
Microsoft's position is that post-grant reviews would strengthen patents and make the patenting process more efficient.
**IPBiz is authored by Lawrence Ebert, and Lawrence Ebert has strongly criticized the proposed post-grant reviews/oppositions contained within patent reform proposals since 2005. But Lawrence Ebert is NOT of the Center for the Study of Digital Property and didn't write the above-quoted text.
Ebert has criticized the opposition proposals first of all because they are inconsistent with the notions of quality expressed by Deming. If one has a problem in the quality of a patent examination, one fixes the patent examination. One does not add an additional inspection step, which is what an opposition amounts to. Ebert has mentioned that patent attorneys would likely benefit from the implementation of oppositions, which makes the criticism of such opposition proposals by patent attorneys such as Hosteny and Ebert all the more significant. Ebert has also noted that opposition procedures would likely be misused by larger entities against smaller entities. The procedure would be readily gamed to inflict harm on smaller players, and would be much less likely to be used to weed out bad patents.
The good news about the seattlepi post: it's always nice to be mentioned. The bad news: the post wasn't accurate.
To see what happened, one can go to the link used by SeattlePi and show additional text:
(...)
The post-grant oppositions are not a sure bet. The positive side is that the procedures seem to have worked reasonably well in defeating questionable patents in Europe. But third parties may be less likely to come up with prior art than proponents hope--even if they can become aware of every patent application's implications, they benefit competitors at their own expense by getting involved. And a post-grant opposition is unlikely to work well if the technology that supports the examiner's work in the first place is inadequate, or if measures of what it means for patents to be of sufficient quality or non-obvious are hollow. Often, lawyers benefit more than business by multiplying procedures, and the current legislation is thus viewed very skeptically by innovators who do rely on patents, such as those in biotech.
Changes that start further back in the PTO process are therefore well worth considering. For a start, supporting better technology to support the Office's search to discover whether a patent application is really a new idea would help.
Perhaps the area where there is the greatest room for improvement is the traditional weakness of the unelected public sector--accountability. With the patent office, one tends to get what one measures. Patent examiners get one point for the first "office action" and another for the second. This invites a tendency to deny the patent application, merited or not (one point), and then grant it, merited or not (second point). Granting a meritorious application the first time around? One loses the chance at a second point. Denying a weak application the second time around? One loses the chance to move on to another application and rack up more points. This is not the examiner's fault, but the fault of a system that values speed of processing over all else.
Likewise, the measurement of patent quality causes problems. The patent office consistently finds that their patents are measuring up quality-wise. This flatly contradicts the sense of many technologists. This should raise a red flag--what standard is the patent office looking to? How effective is it, for example, at measuring whether the patent office is finding older ideas, “prior art,” that relate to the patented claim but which are not themselves patented? The answer seems to be, not very.
The Patent and Trademark Office is not the only government office that could use some reform. But because of its role in delineating the rights that form and inform trades and investment in tech, its dysfunction matters more than some. Setting the standards for quality and productivity straight will help the courts straighten out even thornier tangles where it matters down the litigation road.
posted by Solveig Singleton @ 3:30 PM | Legislation and Legislators, Patents
Link to this Entry | Printer-Friendly | Email a Comment | Post a Comment(3)
Comments
On post-grant opposition:
http://www.ipfrontline.com/depts/article.asp?id=14695&deptid=4
On elements in the patent quality discussion:
http://www.ipfrontline.com/depts/article.asp?id=14520&deptid=4
Lawrence B. Ebert
April 22, 2007
Posted by: Lawrence B. Ebert at April 22, 2007 10:23 PM
posted by Lawrence B. Ebert at 9:25 AM
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