|
03.07
The Perspiration of Patenthood
By Robin Peress
Marconi and Tesla’s bitter race to own the patent
for radio seems almost quaint compared with the blatant exploitation
on today’s IP landscape.
Statistics show that infringement cases are at an
all-time high and climbing. They range from matters settled out of
court (over 70 percent of all claims) to the high-stakes hairsplitting that
reaches the U.S. Supreme Court.
So-called patent trolls (trollers, really) are using
predatory tactics and threats of injunction to extract licensing
fees from unwitting companies.
Meanwhile, changeable rules at the U.S. Patent and
Trademark Office (PTO) and redefining of such terms as “nonobvious”
further bedevil the quest for patenthood.
In spite of a risky environment, would-be inventors
still deluge the PTO with a growing number of applications — more than
400,000 received in 2006. And, despite evidence that most patents
yield few if any financial rewards, applicants continue to harbor
naïve hopes of fame and wealth — like an Achilles’ heel.
More than one IEEE member had a reality check to
share.
“That’s not the way the world works,” said Dr.
Gabriel Robins, a Professor in the Department of Computer Science at
the University of Virginia. Robins’s long experience on patent
infringement cases proved useful when it came to floating his own
two patents. “New inventors think the world will beat a path to
their doorstep. Even if you’re issued a patent, you have to argue
it, market it, raise capital, have a business plan, manufacture it.
The idea itself is maybe one percent of it,” he said, paraphrasing
Thomas Alva Edison’s famous quote, “Genius is 1percent inspiration and 99
percent
perspiration.” Inventors would do well to take a lesson from
history, he said. “Edison went through hell. Even with the light
bulb
he tried thousands of combinations. It took years for him to see any
money. The best way to disabuse yourself of any illusions is to read
some case studies of what others had to go through.” Robins consults
as an expert witness in major software and IP litigations, and
serves as Associate Editor of IEEE Transactions on Very Large
Scale Integration (VLSI) Systems.
Lawrence Kamm, IEEE Life Senior Member, is a
consulting electro-mechanical engineer in San Diego, owner of 38
patents, an expert witness, and author of a book called “Adventures
of an Engineering Entrepreneur.” He says: “Independent inventors who
try to market their own patents usually do so without success. The
most probable financial benefit from owning a patent is in starting
a business based on the invention. My most serious recommendation is
to take an MBA and then start a business.” Kamm’s Web site is a
trove of straight talk, friendly reassurance, wry observations and
indispensable resources for novice patent seekers: see
www.ljkamm.com/inventor.htm. In one section encouragingly titled
“Failure,” he writes about unfulfilled promises made by invention
marketing companies. “There certainly have been a few spectacular
successes,” he says, “but I usually suggest going to a racetrack and
betting on horses; the odds are better and you get fresh air.”
Sound deflating? Think of it this way: Stocking up
on experts’ free advice before you forge ahead might help save you
time and mileage. After all, why reinvent the journey when there’s
prior art?
********************************************************************
Waiting periods of three or more years, and the
granting of iffy patents by underfunded, overwhelmed examiners
lacking relevant expertise: these are woes most often attributed to
the U.S. Patent and Trademark Office. To begin offsetting this
backlog and ensure better-quality patents, the PTO has instituted
time-saving policies and a hiring push. Not only will there be more
examiners — 1,200 each year for the next five years — but they will
include 700 more electrical engineers in three key technology
centers — computer architecture, software and information security;
communications; and semiconductors, electrical and optical systems.
A lower allowance rate in 2006 over previous years implied fewer but
better patents issued.
The Accelerated Review Option, announced last June,
allows applicants to obtain a final decision on their applications
in just 12 months in exchange for performing a search for prior art
themselves, which is typically the domain of examiners. The
application must be filed electronically using the USPTO's
electronic filing system (EFS) or EFS-Web, and must contain three or
fewer independent claims and 20 or fewer total claims. For more
information, see
www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm.
Another provision, announced in January 2006,
provoked IEEE-USA’s ire and touched off a barrage of complaints to
the PTO. The Changes to Practice for the Examination of Claims in
Patent Applications set out to limit the number of representative
claims to 10, and to require an examination support document “to
share the burden of examining the application” if the number of
representative claims exceeds 10. The Intellectual Property
Committee responded in a position statement: “Because software-based
inventions require claiming in a variety of ways to get full
protection, such patent applications need to have four or five times
the number of claims as other technologies …IEEE-USA calls on
Congress to…ensure that patent applicants who must use multiple
claim forms to protect their inventions are not penalized."
“We aren’t looking to penalize anyone,” said
Commissioner for Patents John Doll. “Before, the examiner might have
had to look at 20 claims before making a determination. If these 10
representative claims are enough to make a patent allowable, the
examiner doesn’t have to read the rest. The applicant can still
request to have more claims evaluated. The point was to improve
efficiency and quality by helping the examiner do a better job.”
Commissioner Doll acknowledged the resistance. “We received over 600
comments, the vast majority of which were negative. We’re working to
find a compromise.”
The agency also has a prodigious Web site —
www.uspto.gov. A minimum
of clicks connects users via compact drop-down menus to hundreds of
usefully organized sections and documents. It is also vital for
performing patent searches,
“Our Web site is very user-friendly,” said Doll. “It
gives inventors the opportunity to search through our database, see
what has been issued in the past, learn what a typical patent layout
looks like, and come up with ideas on how to fine-tune your own
words and illustrations.” (Google.com is also a prime site for
performing due diligence with your patent search, says Robins; with
the right key words and phrases, it will lead to you to all 7
million patents issued by the U.S.)
Several must-read sections for first-time applicants
include “Proposed Rule Changes to Focus the Patent Process in the
21st Century” and the Manual of Patent Examination Procedure,
www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf. The
site index is your best friend for pinpointing individual topics.
Commissioner Doll also directs applicants to the Inventors
Assistance Center at
www.uspto.gov/web/offices/pac/dapp/pacmain.html, a service that
puts you in touch with a “real human being.” Other good starting
points: an Inventors Resources page with faq’s and downloadable
brochures, and a Help page that offers support by e-mail for certain
questions. For the lighter side of patenting, if there is one, check
out “Mumbo Jumbo Gumbo,” a very humorous kids’ feature accessible
from the Guides page.
Stay tuned for the PTO’s announcement of the Peer to
Patent Project/Community Patent Review, a pilot program in
collaboration with the New York Law School’s Institute for
Information Law & Policy, headed by Professor of Law Beth Noveck.
The lead sponsors — General Electric, Hewlett-Packard, IBM, Microsoft
and Red Hat — will allow some of their patent applications to be
reviewed by experts in the scientific community who, perhaps moreso
than examiners, may be able to identify relevant prior art and
thereby improve issued patents.
“Some of the leading companies recognize the
importance of providing information to the Patent Office to yield
better quality patents,” said Dr. Noveck. “But smaller entities,
especially, stand to benefit from the help provided by the public in
searching for prior art. The better the research, the stronger the
resulting patent will be, leading potentially to higher licensing
revenues and lower litigation costs.” Project Manager Rahan Uddin
said custom-designed Web-based software will allow the public to
research, find and annotate the prior art before submitting it to
the PTO. “It builds off of existing technology that fosters online
collaboration and lets us create communities engaged in the review
of patent applications.”
**********************************************************************************
In patenting, one person’s divine inspiration is
another’s bargaining chip. A prominent trend today, says Robins, is
strategic patenting, in which companies use patents as a business
tool. “In an infringement case, the settlement isn’t always about
money,” he says; rather, the two sides may opt for a reciprocal
cross-licensing agreement. Pre-emptive patenting is also coming into
the mainstream, he said. This is the filing of patents “not because
you feel you’ll use it directly or exchange it with anyone else, but
just to block others, to deny everyone else use of the idea.”
According to Jules J. Jelinek, a consulting engineer in San
Francisco with expertise in intellectual property and patent
analysis, another kind of strategic patenting happens “where a
company buys or licenses exclusive rights to an invention to protect
their own product line, but the company never makes a single one and
the patent holder ends up with no money for his troubles.” Robins
also notes that using intellectual property this way is considered
as much a tool as advertising and branding. Then there’s what he
calls legal blackmail — an infringement lawsuit in which the plaintiff
knows they’re not going to win but they sue “to besmirch their
opponent’s name, to make them concerned, to divert their attention
from running their business.”
Some of the most incisive reporting on trends and
cutting-edge issues in patenting comes from a familiar source:
IEEE Spectrum. For an especially polished overview of recent
debates and suggested remedies, read Patent Prescription (December
2004). Or just type patent in the search field and sit back for one
good read after another.
IEEE-USA keeps members on top of the issues and
represents their concerns with position statements on proposed IP
legislation, rule changes at the PTO and occasional controversies.
To access these statements, go to
www.ieeeusa.org/policy/positions/#ip, where you’ll see such
titles as Reverse Engineering and Invention Rights for Employees (www.ieeeusa.org/policy/issues/inventorrights/).
The Intellectual Property Committee also serves as
the voice of IEEE-USA members by providing testimony to, and
communicating with, the U.S. Congress, and monitoring legislation.
Its Web page —
www.ieeeusa.org/volunteers/committees/ipc/ — has an abundant
list of links to government sites (U.S. Copyright Office; the House
Judiciary Subcommittee on Courts, the Internet and Intellectual
Property; and the Federal Register, among many others.
Just a few more Web sites might be pivotal to your
search for patenting wisdom. They are:
Robin Peress is a freelance writer in Manhattan,
N.Y. Comments may be submitted to
todaysengineer@ieee.org.
|
E-mail
this page