Why Shouldn't Competitors Be Able To Weigh In On Patent Applications?

from the questions,-questions,-questions dept

The patent system is only supposed to grant patents on inventions that are new and non-obvious to those skilled in the art. As we've pointed out in the past, the "non-obvious" part of the requirement has long been (effectively) ignored by the patent office. Instead, it mostly focused on whether the invention was new -- and did so by looking at published examples of prior art. There was very little effort made to examine whether or not the concept was non-obvious, and even less to see if it was non-obvious to skilled practitioners in the field. Luckily, the Supreme Court's decision in the Teleflex v. KSR case brought some attention back to the obviousness question, but only in one particular area (concerning combining two known concepts). However, it did little to actually establish a real test of whether or not a concept is obvious. For example, there's still no thought given to the fact that if multiple people invent the same thing at around the same time, it seems fairly obvious that the concept was, in fact, obvious to those who were skilled in the art, since multiple people all came to the same "next step" conclusion. A recognition that independent invention shows the obviousness of an invention would be a huge step forward.

Another way to test obviousness to those skilled in the art would be to actually let the patent examiner get opinions from others skilled in the space as to the obviousness of the idea. Unfortunately, current law actually forbids letting those skilled in the art from providing their opinions on patent applications -- which is why some are now calling for the law to be changed to allow those who work in the space to provide their opinions (or even to protest) new patent applications before they are granted. Given the purpose of the patent system, and the requirement that patents be non-obvious to those who actually know the area in question, this seems only reasonable.

Of course, the immediate response from those opposed to such a system is that this will merely allow competitors who are jealous of an inventor to file protests against the inventor, claiming that a true breakthrough was "obvious." That should be easy to overcome, however, as merely filing something saying a concept is obvious shouldn't be enough to sway an examiner. Instead, the fact that a claim of obviousness comes from a competitor should make the examiner more skeptical of the claim, and focus on the exact reasoning of why the proposed claims in the patent are obvious. In other words, the examiner would still be the final reviewer of all the evidence, and can note the specific biases of those submitting reasons why a patent shouldn't be granted -- but at the very least, the examiner will now have a lot more relevant info on the actual state of the art, and what's considered obvious than previously.

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  • identicon
    johnny, 8 Jul 2008 @ 10:44am

    Many companies already do peer review of potential patents to determine whether to go through the expense of filing a patent or keeping the invention as a trade secret.

    Another alternative is to "publish" (in)significant inventions as soon as possible so that you can avoid litigation later on.

    "MaBell" and IBM come to mind as practitioners of publish vs patent with regard to inventions.

    reply to this | link to this | view in chronology ]

  • identicon
    eleete, 8 Jul 2008 @ 10:55am

    Can't we all just get along?

    reply to this | link to this | view in chronology ]

    • identicon
      eleete, 8 Jul 2008 @ 10:58am

      Re: Can't we all just get along?

      I think this will just be another backlog situation. Already they are so behind, that to decipher all the objections and proof of prior art would be an even greater problem. I think the only way to go is to reduce what can be patented. Take away software/code (which IS essentially algebra) and you reduce the backlog tremendously. Allowing others to sound off. Overwhelm the system even more so. I believe the length of time should be reduced also.

      reply to this | link to this | view in chronology ]

      • identicon
        Evil Mike, 8 Jul 2008 @ 12:03pm

        Re: Re: Can't we all just get along?

        "Take away software/code (which IS essentially algebra)..."

        Electronics is just algebra too; and so is chemistry, and physics, and genetics...

        Hell, we can describe everything in terms of mathematics! Let's just say that nothing can be patented if it can be described as a (or a series) of mathematical algorithm(s).

        reply to this | link to this | view in chronology ]

      • identicon
        Rich, 9 Jul 2008 @ 10:21am

        Re: Re: Can't we all just get along?

        Software is not algebra; it includes algebra, but adds much, much more. E.g., first order logic, algorithmic complexity, nonlinear systems, control systems, structuring, optimization, and lots of other things that the earlier less powerful technologies couldn't provide. It would make more sense to get rid of some of the older technologies, but why shouldn't the older stuff also be protected?

        reply to this | link to this | view in chronology ]

  • identicon
    Willton, 8 Jul 2008 @ 10:56am

    Talking out of both sides of your mouth

    Wait, let me get this straight: in one breath, you say that patents are bad and hurtful on the economy, so we should just get rid of patent law; but in another breath, you say that the patent examination process is problematic and needs to be fixed, thus implying that patent law is fine and just needs tweaking. Which is it?

    reply to this | link to this | view in chronology ]

    • identicon
      Chronno S. Trigger, 8 Jul 2008 @ 11:02am

      Re: Talking out of both sides of your mouth

      Maybe I missed something both times I read the article, but nowhere did I see him saying that patents are bad for the economy. It has been implied before by posters here, but I don't think Mike has ever said that outright.

      reply to this | link to this | view in chronology ]

      • identicon
        Willton, 8 Jul 2008 @ 11:17am

        Re: Re: Talking out of both sides of your mouth

        Maybe I missed something both times I read the article, but nowhere did I see him saying that patents are bad for the economy. It has been implied before by posters here, but I don't think Mike has ever said that outright.

        Do a search of his postings. You'll find his hatred for patents (and IP in general) many times.

        reply to this | link to this | view in chronology ]

        • identicon
          Matt Bennett, 8 Jul 2008 @ 8:53pm

          Re: Re: Re: Talking out of both sides of your mouth

          I don't know that's really true, at least in practice. Plenty of patents merely sketch out the loose skeleton of an idea, without actually giving all that many practical explanations of how to execute. Also, see the Boeing patent on a Lunar flyby.

          reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 8 Jul 2008 @ 11:04am

      Re: Talking out of both sides of your mouth

      Why can't it be both? Why can't it be the fact that patent law is broken and should be done away with, but that failing that if we're going to keep the system for any length of time we ought to at least fix the application process so that (fewer) dumb patents get issued?

      reply to this | link to this | view in chronology ]

    • icon
      Mike (profile), 8 Jul 2008 @ 11:18am

      Re: Talking out of both sides of your mouth

      Wait, let me get this straight: in one breath, you say that patents are bad and hurtful on the economy, so we should just get rid of patent law; but in another breath, you say that the patent examination process is problematic and needs to be fixed, thus implying that patent law is fine and just needs tweaking. Which is it?

      Is it really that difficult to understand this? This isn't about the patent system itself, but about increasing innovation. While it may make sense long term to remove the patent system entirely, in the short term it absolutely makes sense to do whatever possible to improve the current system so that it is not hindering innovation.

      Do you really think it's inconsistent to argue for a better patent system after showing how much damage the patent system does?

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 8 Jul 2008 @ 11:49am

        Re: Re: Talking out of both sides of your mouth

        You have never really proven that patents hurt innovation. So what you are saying is that without the patent system we would all have roboservants. Seriously though, that is a statement you will be never be able to prove.

        reply to this | link to this | view in chronology ]

        • icon
          Mike (profile), 8 Jul 2008 @ 11:57am

          Re: Re: Re: Talking out of both sides of your mouth

          You have never really proven that patents hurt innovation.

          Well, that depends on your definition of "proof." The evidence strongly suggests that patents harm innovation.

          So what you are saying is that without the patent system we would all have roboservants.

          Um, what?!?

          reply to this | link to this | view in chronology ]

    • identicon
      mobiGeek, 8 Jul 2008 @ 11:28am

      Re: Talking out of both sides of your mouth

      Mike has said in the past that if the patent system is to remain, it should at least be modified to be better than it currently is.

      Mike hasn't said that the patent system is "bad" (or at least if he's used that terminology it would be out of character..."bad" is not substantive). He has stated that there is no evidence that the patent system is meeting its mandate: to promote innovation. In fact, there is plenty of evidence that the patent system is doing the exact opposite.

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 8 Jul 2008 @ 5:44pm

      Re: Talking out of both sides of your mouth

      There are more then one authors, and even the biggest extremists understand the importance of compromise. Except the Fascists. Fascists don't understand compromise at all.


      DIVERSITY IS STRENGTH

      reply to this | link to this | view in chronology ]

  • icon
    Matt Bennett (profile), 8 Jul 2008 @ 11:11am

    Ok, I hate the current patent system and how many obvious things get patented. But this won't work either, unless you just want a back door way to eliminate patents all together. (which, hey, I'm not actually saying that might not be a worthy goal) All that energy that big companies now invest "stockpiling" supposedly defensive patents? Guess where all those resources will go now?

    One could argue that the one shining purpose of patents is that they allow a little guy with a really good idea to actually make something of it, rather than having his idea simply stolen by some big company with the resources to develop it, with out paying the inventor. (Big companies and R&D I think actually work on different model, to which patents are ancillary)

    But now you'll have this situation where, say someone comes up with an idea, a truly good idea, in the mobile space. It's in all the current players interests to squash that patent. And we all know that big companies are excellent at completely burying things in litigation. So they will make sure the patent NEVER goes through, no matter how brilliant it is. The only people who can push through a patent will be the big companies themselves, so Microsoft might still be able to get their "adding .com to text" patent. ALternatively, MAYBE a inventor could "pre-sell" to a big company, and get them to defend the patent, but they'll be in weaker position than if they just owned the patent.

    Don't get me wrong, I think most patents are worthless, very few are actually revolutionary ideas. But unless your idea is to do away with patents entirely, this system won't work, at least not in any area where there big players with lots of money, which obviously is most areas that matter.

    reply to this | link to this | view in chronology ]

    • identicon
      Nasch, 8 Jul 2008 @ 1:27pm

      Re:

      If someone has a great idea that he cannot execute, then granting him a patent for it will make everybody else worse off. We need to encourage actual products and services coming to market, because anything short of that is not beneficial to society. See Techdirt's posts on the topic of "ideas are easy, execution is hard". And keep in mind that the purpose of patents is not to protect people with ideas, it's to promote progress.

      reply to this | link to this | view in chronology ]

      • identicon
        Willton, 8 Jul 2008 @ 2:50pm

        Re: Re:

        If someone has a great idea that he cannot execute, then granting him a patent for it will make everybody else worse off. We need to encourage actual products and services coming to market, because anything short of that is not beneficial to society. See Techdirt's posts on the topic of "ideas are easy, execution is hard". And keep in mind that the purpose of patents is not to protect people with ideas, it's to promote progress.

        We already have that. Patent law demands that a invention be reduced to practice before receiving a patent. Patent law does not protect ideas; patent law only protects the embodiment of an idea.

        reply to this | link to this | view in chronology ]

        • identicon
          Nasch, 11 Jul 2008 @ 10:32pm

          Re: Re: Re:

          We already have that. Patent law demands that a invention be reduced to practice before receiving a patent. Patent law does not protect ideas; patent law only protects the embodiment of an idea.

          Firstly, even if that's what the law says, that isn't necessarily what actually happens. Maybe so and maybe not, but I would guess these days it would be easy to get an idea patented. Secondly, I was responding to "One could argue that the one shining purpose of patents is that they allow a little guy with a really good idea to actually make something of it, rather than having his idea simply stolen by some big company with the resources to develop it, with out paying the inventor." The society as a whole benefits either way whether the product comes to market from the little guy or the big megacorp, so that is not the one shining purpose of patent law at all. The only time it would make a difference is if the little guy wouldn't make his invention at all were it not for patents. And I would guess that situation is very rare. Again (not necessarily for your benefit Willton since you may get this already), patents are not intended to protect inventors, though that can be a side effect. They're intended to promote innovation and progress.

          reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 8 Jul 2008 @ 11:18am

    A flawed examination process implies patent law is fine? Can I buy drugs from you?

    reply to this | link to this | view in chronology ]

  • identicon
    Joel Coehoorn, 8 Jul 2008 @ 11:22am

    Thickets

    I don't know about showing a patent pending product to competitors. I'd rather see litigation law changed such that if the defendant can show a patent thicket around a certain concept, _all_ patents in the thicket are automatically invalidated and instead become prior art. That would make companies much less likely to sue unless they had a lot of confidence in their 'invention'.

    reply to this | link to this | view in chronology ]

  • identicon
    Review quota's, 8 Jul 2008 @ 11:43am

    The biggest problem comes

    This is a great idea, however it assumes that the patent examiner has the time to actually review patent submissions. Currently they have just been granting and then letting lawsuits sort out the ensuing chaos. until we can solve the problem of patent examiners being to busy to put in a sufficient effort, what that effort should focus on is an academic debate.

    reply to this | link to this | view in chronology ]

    • icon
      Mike (profile), 8 Jul 2008 @ 11:56am

      Re: The biggest problem comes

      This is a great idea, however it assumes that the patent examiner has the time to actually review patent submissions. Currently they have just been granting and then letting lawsuits sort out the ensuing chaos. until we can solve the problem of patent examiners being to busy to put in a sufficient effort, what that effort should focus on is an academic debate.

      If the bar to getting a patent is significantly raised, you'll have many fewer patents filed in the first place, giving examiners much more time to examine each one.

      reply to this | link to this | view in chronology ]

      • identicon
        Willton, 8 Jul 2008 @ 2:59pm

        Re: Re: The biggest problem comes

        If the bar to getting a patent is significantly raised, you'll have many fewer patents filed in the first place, giving examiners much more time to examine each one.

        Which would result in fewer inventions being disclosed to the public, which would lead to a slowdown in innovation.

        We don't need a raising of the bar. We just need an enforcing of the current bar. Time is not a problem for examiners. What they need is better legal training and better resources when examining patents.

        reply to this | link to this | view in chronology ]

        • icon
          Mike (profile), 8 Jul 2008 @ 4:24pm

          Re: Re: Re: The biggest problem comes

          Which would result in fewer inventions being disclosed to the public, which would lead to a slowdown in innovation.

          Which makes a huge incorrect assumption: that patent disclosure actually leads to innovation.

          Considering that so many companies now forbid researchers from looking at patents, and the fact that so many patents are written so broadly that it's nearly impossible to learn much from them, this is simply untrue.

          It's quite rare, in fact, that those working on actual innovations actually learn something via patent disclosure.

          reply to this | link to this | view in chronology ]

          • identicon
            Willton, 8 Jul 2008 @ 8:41pm

            Re: Re: Re: Re: The biggest problem comes

            Which makes a huge incorrect assumption: that patent disclosure actually leads to innovation.

            Incorrect: I'm saying that disclosure promotes innovation, not leads to it. Disclosure makes the information availabe and gives others the opportunity to improve upon it. Keeping inventions secret does not give others that opportunity. Sure, innovation will happen without disclosure, but at a much slower pace.

            Considering that so many companies now forbid researchers from looking at patents, and the fact that so many patents are written so broadly that it's nearly impossible to learn much from them, this is simply untrue.

            The broad nature that you elude to refers to the claims, not the specification. Claims aren't supposed to teach anyone anything; they're supposed to define the boarders of the patent holder's legal rights. It is the WRITTEN DESCRIPTION and SPECIFICATION that teach the technology. I suggest you learn the difference before you start commenting on how much patents teach.

            As for companies adivsing their tech staff to not look at patents, that is a problem with the law of infringement (particularly willful infringement), not disclosure. Further, disclosure happens in other ways than just through filing a patent. For example, how comfortable do you think Novelis would have been posting this video without a patent attached to the technology?

            http://www.novelis.com/Internet/en-US/AboutUs/ResearchTech/fusion/FusionVideo/

            It' s quite rare, in fact, that those working on actual innovations actually learn something via patent disclosure.

            As if you had any experience or authority to back such an opinion. How about you step away from the ivory tower and actually ask the people who deal with these patents, instead of making such speculative opinions?

            reply to this | link to this | view in chronology ]

            • icon
              Mike (profile), 8 Jul 2008 @ 11:13pm

              Re: Re: Re: Re: Re: The biggest problem comes

              Incorrect: I'm saying that disclosure promotes innovation, not leads to it.

              What is the difference between promotes and leads to?

              Disclosure makes the information availabe and gives others the opportunity to improve upon it.

              Actually, no, it doesn't. Because disclosure is tied to the patent, it SPECIFICALLY does NOT give others the opportunity to improve upon it, but tells them quite clearly they cannot do so, at risk of huge fines (in triplicate if they looked at the patent).

              Keeping inventions secret does not give others that opportunity.

              Which makes the huge (almost never seen in the history of human innovation) assumption that only one person in the world actually understands a particular invention, and no one else could possibly come up with the same thing (or, more likely, is already working on the same idea separately).

              Sure, innovation will happen without disclosure, but at a much slower pace.


              Yes, if the disclosure wasn't encumbered with 20 year monopolies. But it is.

              The broad nature that you elude to refers to the claims, not the specification. Claims aren't supposed to teach anyone anything; they're supposed to define the boarders of the patent holder's legal rights. It is the WRITTEN DESCRIPTION and SPECIFICATION that teach the technology. I suggest you learn the difference before you start commenting on how much patents teach.

              Please reread what I wrote. You'll make less of a fool of yourself.

              As for companies adivsing their tech staff to not look at patents, that is a problem with the law of infringement (particularly willful infringement), not disclosure. Further, disclosure happens in other ways than just through filing a patent. For example, how comfortable do you think Novelis would have been posting this video without a patent attached to the technology?

              But that disclosure is meaningless, because improvements cannot happen without paying a huge toll.

              As if you had any experience or authority to back such an opinion.

              What makes you think I have not?

              How about you step away from the ivory tower and actually ask the people who deal with these patents, instead of making such speculative opinions?

              What "ivory tower" would that be? You don't think I work with folks who are screwed over by the patent system nearly every day of the week, hearing their stories?

              Don't make assumptions. They only display your own ignorance.

              reply to this | link to this | view in chronology ]

    • identicon
      mobiGeek, 8 Jul 2008 @ 12:18pm

      Re: The biggest problem comes

      Currently they have just been granting and then letting lawsuits sort out

      Then why bother with the patent examiners at all? Simply put a form on the web that give out patent numbers to whomever files for them. Seems like a much more efficient system.

      reply to this | link to this | view in chronology ]

  • identicon
    angry dude, 8 Jul 2008 @ 1:51pm

    Obvious Mike

    According to Mikey telephone invention was freaking obvious...

    And laser invention was obvious too... it was predicted by a well-known theoretical work after all

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 8 Jul 2008 @ 2:51pm

    " That should be easy to overcome, however, as merely filing something saying a concept is obvious shouldn't be enough to sway an examiner. Instead, the fact that a claim of obviousness comes from a competitor should make the examiner more skeptical of the claim, and focus on the exact reasoning of why the proposed claims in the patent are obvious."

    So all a competitor has to do is falsely say "all of the claims are obvious to me", which will trigger the examiner to be "more skeptical" as you put it, which will surely delay the patent application even more then normal, even if if turns out the claims weren't obvious.

    Yeah - that will surely help out with the current backlog of patent apps - which by the way you also claim is a big reason for all the "bad" patents that get through.

    Brilliant idea! idiot.

    reply to this | link to this | view in chronology ]

  • identicon
    wayne helmore, 9 Jul 2008 @ 2:51am

    Audio Visual Systems

    I rather miss seeing a lot of really crazy for this posts … still interesting random stuff tho so thanks. Visit At:Audio Visual Systems

    reply to this | link to this | view in chronology ]

  • identicon
    Mark Blafkin, 9 Jul 2008 @ 7:58am

    Mike's Right, but It's going to Take a Lot of Work to Fix

    We at ACT couldn't agree more! There is nothing more important to ensuring patent quality than improving pre-grant procedures and allowing for more input into this system.

    The problem, however, is a little more complicated than it sounds.

    To begin, let me clarify that you're not exactly right when you say that "current law actually forbids letting those skilled in the art from providing their opinions on patent applications." Rule 99 does allow for submission of this prior art, but it effectively neuters the option for three reasons. First, the submission is made without comment, so the submitter cannot tell the examiner why it is relevant. Second, the window for submission is only 2 months long. And third, and most importantly, is the fear of effectively being stopped from using that prior art in the future.

    Essentially, if you submit prior art during this period it can be used against you in the future. If the patent is approved, then it becomes part of the body of prior art that SUPPORTS the patent. It has effectively been "asked and answered" despite the fact that the submitter wasn't able to effectively argue their case before the examiner. No sane company is willing to entrust their defense completely to a patent examiner with a meager 20 hours of time to devote, so this option is almost never used.

    Where things get really tricky, however, is creating a solution that effectively navigates the Estoppel provision, the dangers of prior art flooding, managing inequitable conduct, and the internal incentive systems for patent examiners.

    It ain't easy, But as my Mom used to say, "Anything worth doing in life takes hard work."

    ACTBlog: We Agree with Mike Masnick on a Patent Issue!!

    reply to this | link to this | view in chronology ]

  • identicon
    stv, 9 Jul 2008 @ 10:08am

    stop the shilling

    Mike:
    You “obviously” are a shill. I have had substantial patent prosecution since 1992 and the PTO has always considered obviousness. No one who actually practices patent law would agree with you...except maybe those for whom MS pulls the strings. Stick to writing about things you are knowledgeable in...like shilling.

    So the phone was obvious, eh? Bell and Gray filed very closely together. Right!

    By the way, competitors already are permitted to weigh in if they choose to do so. It’s called reexamination. Further, it is impermissible for them to weigh in during prosecution because by law applications are to remain confidential. All that would do is encourage theft. Maybe that’s your intent. Learn something about the patent system, then write.

    When corporate America agrees to not use our inventions without consent, American inventors and small entities will agree to stop suing them.

    reply to this | link to this | view in chronology ]

    • icon
      Mike (profile), 9 Jul 2008 @ 12:31pm

      Re: stop the shilling

      You “obviously” are a shill.

      Stv, we've discussed this before and you continue to repeat this nonsense.

      Who are we shilling for? Later in your post you suggest Microsoft, but have you missed all the posts we've done pointing out how MS abuses the patent system as well?

      The only thing "obvious" is that you disagree with what I say, but since you have no facts to back up your argument, you accuse me of being a shill.

      reply to this | link to this | view in chronology ]

  • identicon
    SK, 10 Jul 2008 @ 9:54am

    patent examiners don't get it - practical experience

    Mike,

    All things you say might or might not be true but they are immaterial.

    I'm first author on 5+ patents we've filed - both 'really new' and 'somewhat obvious' types - and I've been regularly dealing with the patent filing company, attorneys and examiners through multiple office actions.

    The practical truth is that examiners are not competent enough. And its not just me. The patent filing company I use (who help 1000s of people file patents) tells me that in most cases, examiners are not good enough, and don't get what the patent is about. They just do some keyword search using an antiquated search system. If you look at the back of the office action, you'll see their stupid (!) searches. In fact they don't even read the description till after the second office action.

    Any more information will only add more confusion.

    Also I disagree that multiple people inventing means it was obvious. Calculus was invented by multiple people and it was not necessarily obvious. And that's not just 1 example.

    -SK

    reply to this | link to this | view in chronology ]

  • identicon
    Matt Bennett, 10 Jul 2008 @ 6:51pm

    I'm voting with this guy. He;s seems to know what he's talking about.

    reply to this | link to this | view in chronology ]


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