Sunday, July 18, 2004

Story by AP on Acacia/EFF

from an AP article by May Wong, Civil liberties group fights to bust patents [published, for example, in the Houston Chronicle, July 17. The "civil liberties" group is EFF.]


A challenger must find written evidence, called "prior art" in patent parlance, showing others developed the technology before the patent application was filed, a formidable task that consumes a cottage industry of patent researchers and lawyers. [For the PTO to initiate a re-examination, there must be written documents which raise a substantial new question of patentability. A prior art patent or publication meets this requirement; a prior use or sale does not.]

One-time startup Bounty-Quest set out in 2000 with such a mission. It wanted to debunk questionable patents by letting interested parties offer rewards of $10,000 or more for hard-to-find prior art. But there were few takers, and the business failed.

The Electronic Frontier Foundation is similarly relying on volunteers — but without offering rewards. That's a surefire recipe for limited success, said Bradley Wright, a patent lawyer with Banner & Witcoff Ltd. Even when prior art is presented, re-examinations are rare. The patent office held only 6,136 between the time the agency was authorized to do so in July 1981 and the end of March 2004, said Brigid Quinn, a patent office spokeswoman. [Re-examinations initiated by third parties cost the third party money, and offer less opportunity to invalidate a patent than does litigation. Until recently, once the third party presented its written documents, the third party's role in the re-examination was finished. The proceeding would devolve to an interaction between the PTO and the patent holder. Litigation allows the patent challenger to mount attacks based on prior use, prior sales, inequitable conduct, and testimony of witnesses, none of which are available in a re-examination. Thus, quoting statistics on re-examination overlooks the principal way in which patents are challenged. Further, in litigation, the court will construe claims in a Markman hearing. In the currently pending litigation involving the Acacia patents, a Markman hearing has been held.]

[It is also true that the Director of the PTO can order a re-examination. This happened with the so-called swing patent and with the Eolas patent.]


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