Patent Office Releases Rules To Let Third Parties Provide Documents To Help Reject Patent Applications

from the could-be-useful dept

One of the big problems with the patent system is that it's not an adversarial process at all. You only have advocates for why a patent should be granted. No one is on the other side arguing why it shouldn't be. The examiner is supposed to be neutral, but actually has some implicit incentives to find things more patentable than not. For example, patent examiners are often reviewed on their productivity in getting through patent applications. Considering the backlog of patents, this isn't a surprise. But since there's no such thing as a true "final rejection" of a patent, the inventor and their lawyers can keep coming back, asking the patent office to try again. But each time the examiner has to go back and review the same application all over again, that's time away from a new application, and thus hurts his or her "productivity."

Making matters worse, once a patent is granted, it has to be presumed valid under the law. Meaning that even though it has never actually been tested in an adversarial process, the courts simply assume it's a valid patent. The fact that when patents do get re-examined, somewhere around three quarters of them have to be adjusted, with previously approved claims rejected, certainly calls into question just how "valid" those patents are. One of the small changes in the patent reform bill that past last year, the America Invents Act (AIA), was that it will now be slightly easier to file documents with the Patent Office for a patent application under consideration, rather than waiting until after the patent is granted.

This is definitely a step in the right direction, though, I do wonder how widely it will be used. Part of the problem is that it's often not at all possible to tell what a patent actually impacts until after its granted and the holder sues or threatens to sue. And no one can watch every application to see if they might have some useful prior art or evidence of obviousness. Either way, the rules for such third party submissions go into effect September 16th, and the USPTO is releasing its official rules for how the process will work (pdf and embedded below). There is a fee involved -- $180 -- but it's exempted for your first submission on a particular patent application if that submission is less than three documents. That may be a bit limiting, but it does suggest that individuals with clear prior art or proof of obviousness might at least be able to weigh in a bit to convince the examiner that an application is totally bogus.


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  •  
    identicon
    Anonymous Coward, Jul 18th, 2012 @ 8:00pm

    "There is a fee involved -- $180"

    Great, so only big businesses can afford to use this to fight patent trolls and other big businesses with massive patent portfolios.

     

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      Torg (profile), Jul 18th, 2012 @ 8:44pm

      Re:

      Only big businesses are able to dispute the validity of a patent in under three pages? Or is that impossible for everyone, and only big businesses have $180?

       

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        Anonymous Coward, Jul 18th, 2012 @ 9:17pm

        Re: Re:

        "but it's exempted for your first submission on a particular patent application if that submission is less than three documents."

        It's only exempt for the first submission, so what happens when a big business with huge patent portfolios uses multiple patents to attack a small business?

         

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        Anonymous Coward, Jul 19th, 2012 @ 9:28pm

        Re: Re:

        It is not three pages, but the sumittal of three citations to relevant prior art that are not merely a regurgitation of other art that adds nothing substantive to that which is already before the office.

         

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      abc gum, Jul 19th, 2012 @ 5:42am

      Re:

      Before reading the "rules" or even the comments here, I knew there would be a fee (maniacal laugh). So when will the USPTO be moving into their Evil Volcanic Lair?

      Since there is such a large patent application backlog, perhaps robots could be of assistance.

      SEND IN THE PATENTBOTS !!!!!!

      I like to see examiners of that caliber.
      By "caliber," of course, I refer to both the size of their rubber stamps and the high quality of their characters.

      Ooo, Behave

       

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      Anonymous Coward, Jul 19th, 2012 @ 9:24pm

      Re:

      Apparently you missed the provision associated with fee waivers.

       

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    TechnoMage (profile), Jul 18th, 2012 @ 8:31pm

    Lack of foresight

    I think this will be used a LOT by big companies such as Google, Motorola, Samsung, HTC, ASUS.... and anyone else Apple is suing...

    (Maybe even Apple too... I guess...)

    This alone will really help the mobile computing space ;)

     

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    Andrew F (profile), Jul 18th, 2012 @ 9:35pm

    Productivity

    They should measure patent examiner productivity by adding up the number of patents granted OR rejected. Multiple rejections count multiple times.

     

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      Anonymous Coward, Jul 18th, 2012 @ 10:50pm

      Re: Productivity

      Yes. Still, the examiners are likely to just grant the patent if the backlog is huge.

      They don't need to provide reason to grant patent, but needs to provide reason to reject the application. This makes a difference.

       

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        Chris-Mouse (profile), Jul 19th, 2012 @ 6:54am

        Re: Re: Productivity

        The Patent office gets paid for each patent application. anything that discourages new patent applications hurts the bottom line.

         

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      sheenyglass (profile), Jul 19th, 2012 @ 12:15pm

      Re: Productivity

      A friend of mine is a patent examiner and, when describing why he liked the job far more than his life as a patent attorney, he told me that it was because he had a set number of actions he needed to take to meet his productivity requirements, so an office action or a denial counts towards productivity too. Now, given the potential for me misunderstanding his statement, this should be taken a with a grain of salt, but it seems like this is the case.

      Of course, even if this is true there may be ways in which approving patents can be more "productive." For example, if an office action in which you respond to an attorney's arguments gets you the same credit as approving a patent application, but takes more effort, then there could still be an incentive to grant rather than deny.

       

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    ChurchHatesTucker (profile), Jul 18th, 2012 @ 9:37pm

    Fer Pete's Sake!

    Part of the problem is that it's often not at all possible to tell what a patent actually impacts until after its granted and the holder sues or threatens to sue.

    If you can't tell that from a patent, what's the use? It's just a method to gain standing in order to secure a lawsuit-based business model.

     

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      Anonymous Coward, Jul 18th, 2012 @ 10:03pm

      Re: Fer Pete's Sake!

      So why not make a new separate IP law? We can call it the; 'vague-idea-that-I-will-use-to-leech-money-from-working-companies-granted-to-me-by-a-state-backed-mo nopoly' law.

       

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      Anonymous Coward, Jul 18th, 2012 @ 10:52pm

      Re: Fer Pete's Sake!

      The patent examiners are not necessarily expert of the subject, so may under-estimate the scope of patents be granted.

       

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    Pixelation, Jul 18th, 2012 @ 10:14pm

    New business

    "Part of the problem is that it's often not at all possible to tell what a patent actually impacts until after its granted and the holder sues"

    Sounds like there is a business opportunity in here somewhere. Perhaps create a company that monitors patent filings and alerts you to anything that will affect your business. For a fee, research prior art.

    Name it, IP or Intellectual Patenticide.

     

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  • This comment has been flagged by the community. Click here to show it
     
    identicon
    Mika Leonikskawadter, Jul 18th, 2012 @ 10:42pm

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

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    identicon
    staff, Jul 19th, 2012 @ 6:46am

    more dissembling by Masnick

    Sadly, corruption is rampant in Congress. Many members have become paid puppets of large infringers. They have been hoodwinked, or simply sold their votes to the highest bidder. That extends to the PTO's upper management.

    If you're tired of nonsensical dissembling by invention thieves and their paid puppets (some say Masnick is one of many), you can find some levity and sanity from those who have actually invented something and have personal experience in these matters at...

    http://truereform.piausa.org/default.html#menu

     

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    identicon
    staff, Jul 19th, 2012 @ 6:47am

    more dissembling by Masnick

    Sadly, corruption is rampant in Congress. Many members have become paid puppets of large infringers. They have been hoodwinked, or simply sold their votes to the highest bidder. That extends to the PTO's upper management.

    If you're tired of nonsensical dissembling by invention thieves and their paid puppets (some say Masnick is one of many), you can find some levity and sanity from those who have actually invented something and have personal experience in these matters at...

    http://truereform.piausa.org/default.html#menu

     

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

    •  
      identicon
      abc gum, Jul 19th, 2012 @ 7:07am

      Re: more dissembling by Masnick

      Posting it twice did not improve its readability.


      "corruption is rampant in Congress"
      Statement of fact.

      "Many members have become paid puppets of large infringers."
      If all corporations infringe, does this imply the law should be reviewed? Perhaps it is the law which is out of step with reality.

      Invention thieves ... lol, good one.
      Oh wait, your're serious - lol.

       

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      Gwiz (profile), Jul 19th, 2012 @ 8:23am

      Re: more dissembling by Masnick

      Every time Techdirt mentions the word "patent" it gets a "staff" infection from RJR's camp.

       

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  •  
    identicon
    6, Jul 19th, 2012 @ 10:05am

    "One of the big problems with the patent system is that it's not an adversarial process at all."


    Are you joking? Submit an app or two to the office and see how quickly your view of whether or not it is adversarial or not changes.

     

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      Anonymous Coward, Jul 19th, 2012 @ 3:31pm

      Re:

      While an ex parte process as to which the high "Duty of Candor" standard applies, I have never thought of an examiner as being a neutral third party. Yes, file a few cases and this becomes only too clear. Unfortunately, many who seem to believe otherwise have never engaged at any stage in prosecution, nor are they admitted to practice before the office. It is easy to be a critic when you do not have substantive information at hand.

       

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    identicon
    HrilL, Jul 19th, 2012 @ 11:48am

    Apple squirming in its boots

    Apples amount of approved patents is about to go down by 98% since they never actually invent anything.

     

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    identicon
    Lord Binky, Jul 19th, 2012 @ 1:43pm

    I'd subscribe for like $5 month to a service that informed me of craptastic patents for me to shoot down. The first filing is free for each person per patent right(when it's under 3 pages)? I'm sure those patent reviews are going to love 1000 3 page papers coming in... I bet they'll be begging for their productivity to be measured differently real soon.

     

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