Sunday, October 28, 2007

IBM's "apparent schizophrenia" on patent policy revisited

Several patent blogs have noted IBM's curious new position on patent reform as embodied in the new rules on patent continuations. IBM's Kappos had once discussed IBM's apparent schizophrenia on patent policy, and IBM's declararation in support of the AIPLA brief is another manifestation of IBM's staking out both sides of a single issue.

PatentBaristas mentioned that AIPLA has now filed an amicus brief in support of the pending motions to enjoin implementation of the USPTO rules on continuing applications and further noted:

Included with the AIPLA filing are declarations from IBM and from patent practitioners who detail the effects of the rules on pending applications for which they are responsible. David Kappos, Chief of IP at IBM, filed a declaration in support of the AIPLA brief. Most noteworthy is that Kappos indicated that in order for IBM to comply with the retroactive requirements of Rule 78(f) and to review 30,000 related pairs of cases, IBM would incur over $10 million in legal fees and internal expenses — not including any loss of intellectual property rights.

PatentHawk stated:

So how did IBM step up to the plate? David J. Kappos, the Vice President and Assistant General Counsel for Intellectual Property Law at IBM filed a declaration in support of the AIPLA amicus brief and "on behalf of IBM." As already seen in part, the Kappos declaration focuses on the enormous burden IBM will be under if the new rules are enacted because of the need to identify related cases. Specifically, Kappos says:

Due to the retroactivity requirements imposed by the new USPTO continuation and claims rules published August 21, 2007, IBM will be required to review its entire portfolio of over 25, 000 pending U.S. patent applications filed before November 1, 2007 (the effective date of the new USPTO rules) to identify each of its pending patnet applications which, even by chance, has a common inventor and the same filing date (or claims the same benefit or priority date) as another pending IBM U.S. patent application or issued patent, since IBM must identify all such "related cases to the USPTO under new USPTO Rule 78(f)(1).

IBM's earlier position on the changes to rules governing continuing application practice had been an endorsement. See
IBM stated in comments to the USPTO: IBM strongly supports the proposed rules. [IPBiz notes that IBM also stated: IBM thanks the USPTO for it's [sic] commitment to patent quality...]

Will the "real IBM position" on patent reform stand up and be known?

Other inconsistencies in IBM's patent policy position have been noted as to its activities in the business method area. For example, AP noted:

IBM Corp. says it has dreamed up a new method for profiting from its vast storehouse of patents. And by the way, the company wants to patent the idea.

Beyond the circularity of the concept, IBM's application is notable because the company — the world's top patent holder — has been campaigning to improve the quality of patent filings and reduce so-called "business method" patents.


The new patent application was initially filed in April 2006, updated last April and published by the U.S. Patent and Trademark Office last Thursday. It covers what IBM calls "a system and methods for extracting value from a portfolio of assets, for example a patent portfolio."

Specifically, IBM — which collects more than $1 billion in patent royalties every year — describes a new process for licensing patents. Instead of smaller companies licensing technologies from patent holders like IBM in a plodding, one-by-one manner, IBM envisions a more dynamic system with "floating privileges," in which patents could be licensed quickly, as needed.


This time, however, IBM wants to see the patent-portfolio application through. IBM spokesman Steven Malkiewicz said that while the application does describe a business method, "this is all only possible with technology."

Again, IBM is staking out both sides of a patent reform position, this time in the "business method" patent debate.

Of the comment below, IPBiz reminds readers of IBM's changed position on its outsourcing patent application. Was that silly application any less profound than the patent-portfolio application? And don't forget the IBM patent on lining up for a toilet on an airplane. As in its shifting position on the rules on continuing applications, IBM is not walking like it is talking, and manifests "real schizophrenia" in addition to the apparent kind.

LBE had previously noted the seeming inconsistency of Intel's position complaining about continuing application abuse but simultaneously filing many continuing applications.

IBM's comments to the USPTO in May 2006

***With respect to one commenter to this post (on 30 Dec 09), please note that it was David Kappos who initiated the schizophrenia description:

"We've referred to our patent policy as apparent schizophrenia," David Kappos says. from IBM patent policy: apparent schizophrenia?

On IBM's inconsistency on business method patents, see
IBM to withdraw second patent application on outsourcing ["Malkiewicz said the filing [of IBM] would be withdrawn because it "is contrary to our patent policy on business methods." " ]

For a remarkable patent prosecution:

IBM's US 7,571,105: issues of patent quality and exam quality

For 'sensitivity' in outsourcing, review the story of Rick Clark, including
Who is Rick Clark?


Blogger David Woycechowsky said...

This is being touted in the media as an inconsistency. I don't think it is.

"Improving the quality of patents" should mean ensuring that the patents reveal original and creative subject matter.

It does not mean making sure patents cannot extend to this-category-of-subject-matter or that-category-of subject-matter.

To try to impose quality control by enforcement of strict categories would be like saying, "We are going to make sure that only quality novels are written by making sure nobody publishes a Western or a romance novel." Of course, that wouldn't make any sense. It is IBM's critics who are being inconsistent here.

2:33 AM  

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