Wednesday 25 February 2015

Why software patents are not fixable

In my efforts to educate myself on the patent system, I’ve learned about the requirements for getting a patent, and what sorts of ideas are patentable. One of these requirements is novelty:

 An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application. A patent must also not be obvious to a person of ordinary skill in the field that the patent pertains:

 A patent may not be obtained though the invention … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. But as we’ve seen, time and time again, the U.S. Patent and Trademark Office enforces these (and other) rules extremely poorly, resulting in thousands of patents being issued that most people knowledgeable in their field would immediately recognize as invalid.

 And that’s not new. Bogus patents have been issued for decades. The USPTO has repeatedly shown that they cannot and will not do their job to prevent most invalid patents from being granted. In the field of software, their negligence seems especially egregious. With the rise of patent litigation due in no small part to the “we don’t sue people” Intellectual Ventures and their shell companies (that only sue people), the number of patent applications is likely to increase dramatically over time.

If the USPTO is granting bogus patents because they’re just slipping past overworked patent examiners, it’s only going to get worse. Invalid patents aren’t just funny government slip-ups. (“Oh look, someone patented toast and linked lists! Stupid patent office!”) Since the economics of civil lawsuits, especially patent lawsuits, prevent most cases against small defendants from ever getting near a court, the potential cost to society of issuing an invalid patent is massive.

 If someone threatens your small business with a patent lawsuit, it doesn’t matter whether the patent is valid. Because for you to prove that it’s invalid would take far more time and money than you probably have. The only sensible course of action, the path taken by almost everyone threatened by patent litigation, is to settle with the patent-holder as quickly as possible for whatever amount of money they demand.

Friday 20 February 2015

Benefits of obtaining a patentability search prior to filing

Although not required by law, a patentability search is extremely helpful.  For about 25%-50% of the cost, this type of search can assist the client and practitioner in assessing the likelihood of obtaining a patent on their idea, and thus is a valuable and necessary step in the patent process.
When the USPTO Examiner receives a non-provisional patent application, the examiner will perform a patent search on the invention as described in the claims, to determine its novelty.  If the practitioner drafts the application without performing an initial search, there is no way to anticipate what is already in the public domain, or what the examiner will discover.
There are two main benefits to obtaining a patentability search prior to filing.  First, it allows the client to research information that is currently in the public domain prior to preparing, filing, and prosecuting a patent application on an invention.  If the information in the public domain completely anticipates the invention, then the patentability search will save the client thousands of dollars spent on drafting, filing, and prosecuting an application for which a patent would not likely be granted. The second benefit to obtaining a search is that it allows the practitioner to draft a stronger application for the client, thus increasing the chances of success in obtaining a patent.
Usually patentability searches are done by a reputable third party or possibly in house at larger firms.  A description of the novel (new) aspects of the invention are clearly described, and depending on the scope and depth of the search, patents, publications, and all other types of prior art are searched via the USPTO, web and many other databases.  Patentability searches can range from a basic knockout search to a comprehensive patentability search.   The basic knockout search is the least expensive and covers the federal databases for patents and printed publications.  The comprehensive search is more in depth (and expensive) and covers prior art references that either alone or in combination are material to the patentability of an invention. The comprehensive search results may include published applications and issued patents, both US and foreign, as well as non-patent literature such as scientific journals and papers.
Once the search results are received, the practitioner can review the information to determine whether the invention created by the client is actually new.  A patent will only be granted for a new invention.  Therefore, if an existing piece of prior art anticipates each and every aspect of the invention, patent protection will not be granted. A search will identify existing prior art in the field and help to determine if the invention is new.  If the patentability search results show that another piece of prior art completely anticipates the invention, then the client will avoid spending money for preparing, filing, and prosecuting the application.
If the search results reveal that not all of the aspects of the invention are known in the prior art references, then the results can assist the practitioner and client in determining the next step moving forward.  The results of the search can be analyzed to determine the scope of protection afforded to the idea and whether it would make financial sense to move forward with the drafting and filing of the patent.  If it is determined that it makes sense to file the patent, then the practitioner can use the results of the search to draft an even stronger application, in essence, reducing the chance of several expensive office actions and possible denial of the patent.