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June 08, 2005


von -- thanks. Would this act in any way change what (I think are) the odd rules on what can be patented -- the ones that allowed Amazon to patent One-Click? And would it change the rules on whether e.g. genes, living organisms, and other biologicals can be patented?

Who is in Smith's district who will most benefit by these changes? (Assuming that concern didn't up and write the darn thing.)

I don't think so, hilzoy, though I'll defer to von if he says otherwise (I'm a patent paralegal, so I deal more with procedural than substantive patent issues). However, the changes don't seem to directly address the scope of subject matter of what may be patented.

How they might impact patentability is when it comes to "prior art." Even if the bar is now first-to-file rather than first-to-invent, if the first-to-invent publishes rather than patents the invention, and does so before someone else can file a patent application, their invention becomes prior art, and therefore no one else can get a patent on an invention that's too much like theirs.

Deciding to publish something if you're not sure you can patent it is a tactic often used to prevent anyone else from patenting that particular innovation, if your company wants to use that technology but (for various reasons) doesn't want to patent it. Note that a patent application can be written around the prior art, though what's left might not be worth the trouble.

I wonder how the new rules will affect patent predators: people who get patents on a particular technology for the sole purpose of litigating anticipated future infringers. In other words, they have no intention of manufacturing or selling the product, and no interest in licensing it. They figure a litigation, if successful, will be a bigger payoff than selling or licensing the invention.

So, on the one hand, if the USPO ends the "treble damages" penalty for infringement, esp. on something that only infringes a feature rather than the whole invention, that eliminates the big payoff.

On the other hand, the switch to first-to-file is bound to result in more piracy, the kind that MS has been so successful at: entering into development agreements just long enough to get their hands on the technology, then dissolving the agreement and patenting the technology before the erstwhile partner has a chance to.

I would like to see, not an end to continuation practice, but some limits on it. Continuation practice is a revenue enhancing thing for law firms, who like to write very narrow patents so that they can write endless continuations. It's more economical for the client to write a patent application as broadly as possible, even if the USPTO "restricts" the initial application, which means you have to divide it up into multiple applications.

The new USPTO rules, esp. those regarding third-party communications and oppositions, are also meant to bring US patent prosecution more into line with European practice. The Japanese Patent Office is also becoming concerned with there being too much granting of too many weak patents.

Thanks, von.

Hilzoy --

CaseyL's summary is pretty darn good, but I'd add the following:

1. In earlier drafts, there were some proposals to change the rules to make it easier to invalidate patents. It looks like those proposals are dead.

2. The proposed (more) robust opposition* and submission procedure, however, will enable competitors to submit additional art to the Patent Office. Theoretically, this could lead to narrower patents. (I have some strong doubts about how it will work in practice and given the strategic considerations of litigation, FWIW.)

3. On Casey's comments re: continuation practice: prior to the 18 month publication rule (which came in around 2000-2001, IIRC), continuation practice was extremely useful to patent holders, in that it allowed the possibility for submarine patents (defined: http://www.google.com/search?sourceid=navclient&ie=UTF-8&rls=RNWE,RNWE:2005-19,RNWE:en&q=define%3Asubmarine+patent). Since the 18 mo. publication rule, it's been much less useful.

Note that the above applies only to straight "continuation" applications. "Continuation in part" and "divisional" applications (which, technically, are forms of "continuation applications") continue to be very, very important, and are not subject to Casey's criticism.

That's all I have time for at the moment. Hope it helps.


*It's currently possible to file a "protest" with the PTO, but, for a whole host of reasons, it's seldom worth the trouble.

Thanks for the post, von.

FYI, there is a fight going on in Europe over the issue of software patents.

The industry is lobbying the individual governments and the Council in support for making software patentable and the free software people and the SMEs lobby work hard on the EU parliament to keep software patents illegal.

Very messy to watch. Including the quite undemocratic setup of the EU (which the constitution should have fixed).

See swpat.ffii.org for more.

Thanks a lot for this, von.

That's an interesting quote about "submarine" patents, von. I was out of the patent field 1998-ish to 2000 (took a career detour to project management for a while, just long enough to get thoroughly homesick for IP) so missed the fuss over the changeover to pre-grant publication. By the time I was back doing patents again, people had pretty much adjusted to it.

Where I work now, we're more interested in getting the patents as soon as we can, and as much patent term as we can, than we are in stringing out continuations for 10-odd years. Funny how IP strategies can change so radically.

Lemelson? You can probably add Rambus as well. Their creative use of continuations let them take advantage of filing dates several years prior to the context of the claimed invention.

The best part was that they also ended up with a presumed date of invention much earlier than the record would otherwise have supported, so intervening work by others was rendered irrelevant.

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