The case of i4i vs Microsoft has been done to death all over the internet during the last few days but generalizing too much is always dangerous. As others mentioned above, there are certainly two things that this case made apparent need fixing: a court that’s “in” the patent “business”, and some kind of clause that renders invalid patents which are too generic and have been “infringed” by everyone with a good intention.

Part of the problem is that examiners use the Frankenstein’s monster approach of assembling the elements from disparate sources with a motivation to combine. Instead, a more fruitful approach might be to start with a single reference and establish technical equivalence element by element. I think the reason examiners don’t do this is because they don’t understand the technology very well. You have to know a fair amount realize technical equivalence.

Just cause Mooney Masnick speaks doesn’t mean it’s false.

But usually,
it does.

That’s obvious.

To the readers of this article:

I have attempted to engage Mr. Masnick is some form, any form, of a discussion trying to set the stage for a meaningful conversation where we are actually talking to each other and not past each other. In order to do so it seems to me that explaining what is meant by the term “prior art” is quite important in the sense that what the term means to one person means something else entirely to another person. For example, some use it to mean “prior issued patents”. Others use it to mean “prior publications, including prior issued patents”. Still others use it to mean “prior acts, and prior publications, including prior issued patents”. Still others, like me, use it to signify any and all veryfiable information that informs persons on the state of the art in various fields of endeavor, and this includes not only the broadest of the forgoing, but also any reliable evidence that serves to give meaning to the legal standard set forth in the “obviousness provision” stated in Section 103 of our patent law.

Mr. Masnick would have his readership believe, based upon his personal views and those expressed in the article to which he links, that the system employed within the Patent Office has defaulted to “new” and is largely ignoring the central role played by the requirement known as “non-obvious”. For those unfamiliar with the primary standards against which a patent application is measured, there are basically four of them. The first is that an invention must be “useful”, i.e., it must actually be capable of being applied for a useful purpose. The second is “new”. This standard means little more than the invention being claimed by an inventor in his/her application has never before existed (this is rarely the case since even remarkably similar devices invariably have different features, some of which may be quite trivial and some of which may be quite important). The third standard is that the invention as claimed must not be obvious in light of what the prior art collectively teaches to persons of ordinary skill in the art to which the subject matter of an invention relates at the time the invention was made. And, finally, even if an invention is new, useful and not obvious, the applicant must still describe the invention in his/her application in sufficient detail such that persons of ordinary skill in the art presented with enough information that they can replicate the invention without having to resort to undue experimentation.

Importantly, unless each of the four standards are met a patent application will be rejected. Of course, the process does provide for an applicant and a patent examiner to exchange correspondence in order to address each of the arguments presented by one to the other.

In this article and the linked article the assertion is made that the “new” standard basically trumps the “obviousness” standard, with the latter being given short shrift and the former reflecting what is really going on during the process of examining patent applications.

This view is plainly wrong, as is readily demonstrate by a perusal of even a small sample spplications that have been filed and considered by the USPTO. Rejections for not being “new” are easily addressed and only in rare circumstances do they rise to the level of forming a sound and compelling basis for declaring that an invention is not patentable. “Obviousness”, on the other hand, is the standard that applies and is asserted in virtually all cases. In over 30 years of practice I have as yet to see an application being rejected and sutained in the event of an appeal solely on the basis of not being “new”. “Obviousness”, on the other hand, is quite a different matter, as is the requirement that an inventor adequately describe the invention such that it meets what in formally known as an “enabling disclosure”.

If anything, this article and the linked article, make points that are exactly backward from the natural and almost universal progression of applications through the Patent Office’s examination process. To suggest the opposite is to demonstrate an understanding of our laws and the examination process that is, quite simply, wrong.

Of course, there is always the possiblity that I am mistaken in understanding the import of what the articles are saying because perhaps their use of the term “prior art” is not the same as how I use the term “prior art”. Hence, I asked if perhaps we may be using the term to mean different things, and it ill-serves informed discussion to proceed with such a discussion without each party ensuring that when they use the term they mean the same thing to each party. Absent this a discussion devolves into little more than the parties talking past, and not with, each other.

It is disappointing that Mr. Masnick has chosen to withdraw on the basis of reasons having nothing to do with reasoned discussion. Such a discussion would have been helpful to those who read articles such as these in order for them to understand waht this issue is all about.