Let’s suppose you come across a patent and you know that the should not have been issued (either you know some prior art or you have some inside info in the area). What can you do?
You can file an ex-parte re-examination with the USPTO. In this case, a new examiner will be appointed and he will consider the reasons on which you filed re-examination. I will expand on this subject in a later post.
While doing some prior art search, I came up with the following two IBM patents: 7137062 (System and method for hierarchical segmentation with latent semantic indexing in scale space) and 7382933 (System and method for semantic video segmentation based on joint audiovisual and text analysis).
These patents are at the opposite ends of the “good patents rainbow”. Aside from the fact that audiovisual and text analysis was already studied and patents on similar subject matter were issued (see 6714909 from AT&T which deals with identifying segments based on several audiovisual parameters), the second patent also looks like a “give me something for my money” issue (there are “This invention was made with Government support […] awarded by the U.S. Army” and “The Government has certain rights in this invention” clauses).
The ‘062 patent is done by the book: a neat disclosure, references to major prior art documents, possible implementations, lot of mathematics behind every decision in the algorithm. Now this is what I call a good patent.
On the other hand, the ‘933 patent has a description of a computer for most of its disclosure and picture descriptions for the rest of it. This is what I call a not so good patent.
If only there was a way to stop the filing of the not so good patents and shrink the USPTO backlog…
I wasn’t going to write about the Hatch-Waxman experimental use exception, but I changed my mind after I read an article about the possibility it could get to the Supreme Court.
The case in question is Bayer v Barr, decided by the Court of Appeals for the Second Circuit, considering a pay-for-delay deal. This kind of deal is very normal in the US pharmaceutical industry, where a patent holder pays an infringer not to infringe and not challenge the patent. Excuse me, has the world gone upside down?
Here is what the Hatch-Waxman experimental use exception basically says. A generic drug manufacturer does not infringe a patented drug if it uses that drug to get information it can file with the FDA for its generic drug approval. However, if it does file for the approval with the FDA, then the generic drug manufacturer does infringe. But there are some incentives for generic manufacturers to challenge a patent’s validity: the first one to prove a patent invalid, gets 180 days of market exclusivity. Isn’t this the opposite of what is really happening these days because of pay-for-delay deals?
I do recognize the importance of other institution in this matter – FDA, FTC. Maybe even the Congress might be interested (well, I don’t think so, given the “rush” with which they did not get the Patent Reform bill through). But until happier times, yes, a Supreme Court grant of certiorari in this case (that covers both patent law and antitrust law) would be more than welcomed.
In Part 1 I wrote that there are actually two doctrines with the same name: the one that handles patentability and the one that handles infringement. And queue the surprise: there are actually two experimental use exemptions to patent infringement – common law experimental use exemption (developed by a long line of judicial decisions) and Hatch-Waxman exemption (enacted by Congress in 1985 and applies only to drugs and medical devices). There are many papers that study the history of this doctrine (one of them being http://www.nystar.state.ny.us/nl/nlassets/pdf/stlc1.pdf), but this post is only about what a researcher has to know regarding this doctrine.
Today I will write about the common law experimental use exemption, as the other one concerns rather narrow domains.
To really understand why experimental use exemptions exist, we have to get into the core of the patenting system. A researcher gets a 20 year (from application filing) US-backed protection for his invention iff he clearly discloses his implementation. This way, the public can understand the invention and build on the knowledge just gained to innovate further. The question comes “If I know the invention described in the patent, but I can’t use it because I will infringe the claims, then how can I use it?” The answer is kind of “No” and here is kind of the answer.
Well, there have been many interpretations to how one can be exempted from patent infringement by the common law experimental use. From Justice Story’s opinion in Whittemore v. Cutter (in 1813 he wrote that “it could never have been the intention of the legislature to punish a man, who constructed a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects.”) to the CAFC Appeal on Madey v. Duke , the doctrine evolved to its current status.
In this last decision, the CAFC hold that not only “commercial intent” can prevent using the common law experimental use exemption, but all “legitimate business objective”. In Duke’s case, a legitimate business objective would be luring lucrative research grants. In a common researcher’s case, a legitimate business objective could just as well be “ascertaining the sufficiency” of a patented machine. Is it just me or is this the opposite direction from Justice Story’s opinion?
There are actually two doctrines with this name – one that handles patentability and one that handles infringement cases. Today I will post about the former.
First of all, this doctrine does not exist per se anywhere in Title 35 of the U.S.C. Rather, it was developed by the courts to make sure innovation is not suffocated by scientists playing with proofs of concepts.
Regarding experimental use in patentability, the MPEP reads: “Experimentation must be the primary purpose and any commercial exploitation must be incidental”. Basically, a scientist can develop some technology, while not letting the public use it (unless it helps the proof of concept) and still file an application more than 12 months after it came with the idea for said technology.
One important fact that must be taken into consideration when you decide if you developed your invention more than 12 months prior to application filing is this: “The experimental use exception does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
The conclusion: you cannot file a patent application if you developed the technology more than 12 months prior to the filing date, unless what you did before that 12 months was only experimental use as defined above.
While, these days, most web-articles referring to Google talk about Android or open source video codecs, an interesting case was settled at the Court of Appeals for the Federal Circuit (CAFC): iLOR v. Google.
The background: iLOR is the assignee of the 7206839 “Method for adding a user selectable function to a hyperlink” and sued Google, in the District Court for the Eastern District of Kentucky, for infringement on claim 26, with Google Notebook. The District Court granted summary judgment on non-infringement because Google’s method required a right-click action by the user, which was not taught in claim 26. It also dismissed the case with prejudice. Then the case went on appeal to the CAFC, which affirmed the District Court’s finding. As a result, Google moved to recover its attorney’s fees and expenses under 35 U.S.C. 285. The District Court granted this motion and in so ruling, it found that iLOR acted in subjective bad faith and the case was “not close” on the merits. Then iLOR appealed this decision to the CAFC and on January 11 2011 the decision came out.
Basically, the three judge panel (Rader, Linn, Dyk) concluded that the District Court committed clear error in holding the case exceptional under 35 U.S.C. 285 and no attorney’s fees will be paid to Google.
Now there’s your cat and mouse game in the US patent system. First iLOR sued and got knocked down, then iLOR appealed and again were proved wrong, then Google asked for their attorneys’ fees and the motion was granted, then iLOR appealed this last decision and the CAFC decided no attorney’s fees for Google.
I began the year with an article about USPTO’s website survey and finished the post with this:
Given that, in my opinion, the user experience on USPTO’s website is pretty good, I can only hope that they get to other pressing matters in the patent system as soon as possible.
Well, my wish came true as USPTO revealed a website for discussing the MPEP (Manual of Patent Examining Procedure). Every examiner (and actually, every patent attorney or agent) has to practically know this manual by heart. The fact that anyone can partake in its improvement with good ideas, I believe it is a step forward, specially in the transparency department. There are some common sense rules:
- To ensure a productive discussion, those who elect to participate agree to post only ideas or comments directly related to the MPEP and its contents.
- Those who elect to participate agree to conduct themselves in a civil manner. This includes refraining from submitting obscene or threatening language; discriminatory language (including hate speech) based on race, national origin, age, gender, sexual orientation, religion, or disability; sexually explicit material; and other material that would violate the law if published here.
- Those who elect to participate agree to refrain from submitting ideas or comments that promote services or products (not including non-commercial links that are relevant to this Web site); and to refrain from including private phone numbers, email addresses, or postal addresses or embedding other media (not including hyperlinks to other media).
USPTO encourages everyone to spread the word (tweet, email, blog post), so here is my contribution.
BPAI – Board of Patent Appeals and Interferences. This is the first Board you appeal to when there’s no reasoning with the application’s examiner.
Here is the standard procedure: you file a Notice of Appeal (NOA) with the BPAI, then you have two months (extended to seven months if you pay the fees) to file the Appeal Brief, then the examiner has to file an answer (it usually takes him about two months) and then you have another two months to file a Reply and a Request for Oral Hearing (RFOH). Up to the moment the examiner files his answer, he can still withdraw the rejection and issue another rejection on new grounds or issue a Notice of Allowance. So from the moment you decide to appeal an examiner’s rejection to the BPAI you have anywhere from six months to one year until you get before the Board members.
But let’s get back to the BPAI. They basically have to decide if you can get the patent or not. No new matter can be introduced from the moment of the rejection. That means you can present your case on the evidence you presented the examiner and the examiner can only use as evidence the references in the last rejection. However, the burden of proof should be on the examiner: they have to prove (by preponderance of the evidence – the lowest burden of proof standard) that the invention is not patentable. Does this happen?
Here’s a short story to better understand the system. If you are not in the business of patenting, then you should know that there has been a drought of issued patents during the last 4 years of the Bush administration (from a 65% allowance rate to 35% allowance rate). This had an impact on the application backlog (as more and more applications were bitterly fought over for years, more new applications were filed each day). It also had an impact on appeals: the applicants would choose to rather present the before the BPAI than file RCEs over RCEs. As more and more appeals were filed, some examiners started to withdraw their last rejections. This in turn increased even more the application backlog. It quite resembles an infinite loop…
But let’s see what happened to appeals that did get before the BPAI. The majority were solved by taking the examiner’s side. Like the applicant had the burden of proof (by preponderance of the evidence, of course) of showing why the examiner is wrong. I thought the standard was the other way round. So, can anyone tell me what is the standard at the BPAI?
A complete answer to this question could cover a book chapter, but I will try to resume the essential here.
Of course it’s a troll and it has a patent portfolio. Well, it could do with just one patent, but the important thing here is that it’s a non-practicing entity (NPE). Which means it doesn’t implement the invention, but rather licenses or it just chooses to sue other companies for infringement. You might say “Isn’t that the purpose of the whole patent system – to protect your invention?” Yes, that’s the purpose of the patent system. But they choose to monetize their patents by letting others do their work for them. Sure, it’s one way of doing things. But it can become annoying to know that there are companies out there who watch every move you make. And once you step (unwillingly I might add) over their protected area, a citation will come your way. This is one point-of-view.
By this broad definition, even Thomas Edison was a patent troll. He made a fortune from patents he never intended to practice. One fun fact is that he invented the electric chair to emphasize the dangers of alternating current electricity.
Furthermore, the Bayh-Dole Act of 1980 (which lets government funded university research to be commercialized) enlarged the circle of patent trolls so as to include universities. This is the rather opposite point-of-view.
The truth, as always, probably resides somewhere in the middle. But usually, one can only side with one party or the other. And just as often, the truth depends on the context. I will expand on this subject (when it’s trolling and it’s not) in a later post.
Latest and greatest patent trolls: Intellectual Ventures and Interval Licensing.
You have a technology and you want to see if you can get patent protection for it. Let’s suppose that your prior art search is very thorough and there are no 101 and 102 issues, but you found some other technologies that, when combined in a “common sense” way, do the same thing as your technology. At this step, you decide not to pursue a patent application.
But does this finding mean that you, by using your technology, cannot be accused of direct infringement? Well, not really.
First of all, you can do direct infringement iff you, by yourself, infringe all the items in any given claim of a patent. And given the fact that your very thorough search returned no 102 issues, it must be that no patent contains claims upon which you infringe. However, the obviousness finding means that there might be at least one patent that contains a claim upon which you infringe with some part of your technology. So the answer is “Yes, you can be accused of direct infringement, even though no other single invention describes your whole invention”.
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