US Patent Office Does Initial Rejection On All Claims For Patent On Creating Subdomains
from the so-why-was-it-approved-in-the-first-place? dept
You may recall, a few years back, some news around a patent holding company getting a patent on virtual subdomains. As part of its Patent Busting project, the EFF submitted a ton of prior art to the Patent Office, who has now done an initial rejection of all of the patent’s claims. The patent holder (and, it’s worth pointing out that it’s changed hands since this started) can now respond or just give up on the patent. Either way though, it highlights the silliness of considering any granted patent as automatically “valid.” Considering how many patents that are reviews end up having claims (sometimes all of them) rejected, it seems pretty clear that the initial patent review is simply not even close to effective as a judge of patent-worthiness.
Filed Under: patent office, patents, re-exam, subdomains
Comments on “US Patent Office Does Initial Rejection On All Claims For Patent On Creating Subdomains”
I know this may sound overly simplistic… but why don’t we “open source” the research on patents… If it gets past the examiners, post it and let the mass public look it over and see what prior art exists and give people a way to submit it.
A final review of it would be required before the patent is issued.
You can readily see the art submitted by going to this web site:
You do need either the publication number, the patent number, the application number, or other comparable number. You can then look in the file history for the IDS and the examiner’s search.
Another fun place to go is http://www.patentfizz.com. If you know of a patent that is bogus because of published references, go enter the patent number or publication number and detail the art, explaining its relevance. It may not stop the patent from issuing, but other seeking to do a re-examination or reissue might use that information.
How did this patent get approval in the first place ?
Lessee, I need to virtually create a subdomain name… Too bad that Apache web server doesn’t allow you to do that…oh wait…
ServerAlias domain.com *.domain.com
I guess it does. Subdomains can be created on the fly.
That’s a cool idea, but it flies in the face of the First Principle of American Law…which is, that whenever any action is taken that might generate a monetary flow, a lawyer must be paid.
So the system or regulatory schema is always favored that requires the employment of the greatest number of lawyers. In the case of patents, the principle favors the system wherein someone hires a lawyer (or, as is more and more often the case, the someone IS a lawyer) to present some obvious-but-unpatented idea to the PO, which then blindly approves it, which then requires that other interested parties hire legal representation to fight the bad patent. And, as the system currently works, if no one has sufficient financial interest (i.e.: the harm done by the bad patent is sufficiently widespread and seemingly minor, like if no major corporation is harmed and no puppies/harp seals/winsome children die), bad patents survive, like so many remora without the added benefit of eating other parasites off the body politic.
So God bless the EFF. Hopefully, they’ll continue to identify where their good work is best directed.
Reexamination and Reissue practice is a common everyday occurrence before the USPTO. In virtually every case it is not because the patentee has deliberately overclaimed what he/she was entitled to in view of the prior art considered during prosecution, but because of unknown, later discovered, pertinent prior art. Had it been known at the time prosecution of an application was taking place the claims would certainly have been amended to account for it.
Perhaps there as some who wish to view relevant prior art in a manner aking to an ostrich with its head in the sand, but by far the majority of attorneys welcome the discovery of as much relevant prior art as is possible during the prosecution process. It saves a lot of downstream work, it allows the claims to be limited appropriately, and it results in an end product, the patent, that is far more likely to reflect the true contribution of the inventor(s).
I happen to openly welcome as best a set of prior art references as is possible. Why spend time and money to do an imperfect job? It is so much easier to do the job correctly the first time.
That said, I also happen to subscribe to the notion that patent efforts should not be directed to every nickel-dime improvement. I see no good reason to spend copious amounts of money that in the scheme of things do virtually nothing to preserve/enhance the business interests of a client. Of course, this is a more difficult system to implement because it requires an intimate relationship between the attorney, the technical community, the manufacturing community, the product support community, the financial community, the business development community, the strategic development planners, etc. Unfortunately, in far too many cases the only significant relationship that exists is limited to the attorney and the purported inventor(s). In my view this is plainly wrong and contributes in large degree to the submission of applications that represent little more than the expenditure of client money that does not even come close to withstanding scrutiny under any cost/benefit analysis.
Patents do have a proper role, but it is important to bear in mind that they are merely one of many tools available, and in many instances are inferior to some of the other tools. Understanding this, however, takes time and experience developed over years of practice, and in most law firms and companies the task of preparing patent applications falls upon relative neophytes not very far removed from having graduated from law school.
If the goal is to try and help a client realize its business plan for new products in his/her current and reasonalby forseeable future markets, it makes little sense to pursue protection that is inconsistent with this goal.
“it highlights the silliness of considering any granted patent as automatically “valid.”…
so you propose an inventor spend thousands or hundreds of thousands and years of his life in patenting their invention to only have nothing to show for it??
thinking without learning is dangerous.
Seems a bit distorted...
Only about 600 reexaminations are requested per year, out of about 3 million patents in force. So using the word “silliness” seems an unjustified exaggeration.
You also stated that EFF submitted a “ton” of prior art in order to make their case. Ergo, it took a lot of work to find invalidating art. Is it any wonder that the USPTO was unable to reject the claims initially? It is unlikely that they had any of the “ton” of prior art submitted by EFF.
FYI: Only about 12% of patents reexamined have all claims completely invalidated. About 26% have all claims affirmed. The others lose one or more claims.
I continue to hope that the USPTO will improve their pre and post-opposition process. In the meantime, I recommend everyone use PatentFizz to record their factual information. I assume EFF uses PatentFizz as a resource.