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The Story of How Patents Promote Innovation


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: May 12, 2014 @ 12:13 pm

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Those who claim that patents harm innovation and stifle innovation see a patent at an insurmountable hurdle, or perhaps a brick wall. There is no way around the obstacle. The only option is to infringe or simply not offer the product or service, but to them that is not an option because if they can’t sell the product that they want to sell then that has to mean that innovation is being harmed. But innovation is about busting through the brick wall, or going around the brick wall. Because of the existence of that brick wall a paradigm shift is necessary, and that is what leads to true innovation.

Of course, critics don’t understand true innovation because they conflate a particular product or service, which is new to them, to be something that is innovative. I have always found it amazing how true inventors so frequently don’t think what they have come up with is unique enough to pursue a patent, but those who offer little or nothing unique conclude that their product represents innovation. The hubris is high on the part of those who really don’t understand innovation, and the true purpose of a patent system. Those who don’t understand think it is an afront to humanity if they are not able to sell what they want, when they want, without having to pay a licensing fee to the innovator.

Recently this issue came up again when a comment was posted to an article about whether patents harm or promote innovation. The comment proclaimed loudly, confidently, and yet incorrectly that patents harm innovation. The commenter even provided an example about how he has received a cease and desist letter, which means the product that he is selling is in jeopardy of having to be pulled from the market and damages paid. This scenario was intended to be proof that patents harm innovation. In fact, it is proof that the patent system is working exactly as intended, and that patents do not stifle innovation. Patents foster innovation!

Anymore anyone who gets sued for patent infringement or receives a cease and desist letter complains that patents harm innovation because they can’t sell the product that they want to sell. Thus, products are erroneously being conflated with innovation. But to innovation is to do something new. In fact, the definition of “innovation” is “(1) something new or different introduced; or (2) introduction of new things or methods.” Generally speaking, if one is infringing on a patent then they are not innovating. Instead, what is happening is the very antithesis of innovation.

In fact, what was missing from the aforementioned comment was any real discussion of the innovation that was being stifled.  The commenter concluded that his products are innovative, and offered that his products cost less and are preferred in the market. But costing less and being preferred in the marketplace are hardly evidence of innovation. In fact, it is at least as likely in most cases that a copycat can and does sell infringing products for less because all they have done is copy the innovator. Because the innovator has time and money invested in the innovation they have to charge more than the actor who simply copies and has no sunk costs to recoup. A lower cost point for consumers easily can, and usually does, explain market preference.

Even if this, or any other commenter, were to be able to point to something they are being prevented from doing that is objectively superior to what is covered in a patent that still wouldn’t be any kind of proof that patents stifle innovation. In fact, it would be proof that the patent system is working exactly as it was designed to work and has worked for hundreds of years.

The patent system has been intended from its very earliest days to create the very scenario complained about by those who erroneously claim that patents harm innovation. Patent are by specific design intended to give the patent owner an exclusive right to prevent others from making, using, selling and importing products (or services) covered by a U.S. patent. The exclusive rights of a patent, which come with virtually no real fair use rights except in the very limited scenario of pure research, forces industry to come up with other ways to move forward that do not infringe on the patent. That is specifically why patents promote innovation rather than harm innovation, and it the point missed or more often completely ignored by critics.

The short of it is this: When an innovative person is blocked by a patent they design around. This is precisely why the Supreme Court has typically focused patent eligibility considerations on whether an idea would be preempted by a patent. If an idea as a whole is preempted then no patent can issue. If, on the other hand, there remain ways forward then it is incumbent upon the second comers to either find those ways forward that do not infringe, or to simply stand clear of the rights granted the patentee. Instead, what we have today is an awful lot of people complaining that they can’t do what they want to do and, therefore, that has to mean that patents harm innovation. Simply not true. What it means is we have a lot of uncreative people throwing up their hands and giving up rather than innovating around, and forward, as the patent system is designed to encourage.

It is impossible for critics to understand, but it has always been the rigid exclusive nature of patents that has caused innovation to move forward. As one area because saturated in order to provide better functionality or reliability an entire new paradigm must be discovered, refined and perfected. It is those paradigm changing innovations that we all say we want, including the critics, but paradigm changing innovation doesn’t occur in a world where copying goes unchecked. Paradigm shifting innovation happens only when there is a sufficiently high barrier facing the innovator. Then and only then does the innovator create.

The comment concluded that this fellow found himself in a terrible position with no good choices. On that point we can likely all agree. But the interesting question is why is he caught between a rock and a hard place, in a catch-22?

In my experience those who find themselves facing a cease and desist letter, or a patent infringement lawsuit, have failed to do several important things prior to launching a product or service. First, in most cases the party facing the lawsuit did engage in any kind of evaluation before launch to determine whether they would be infringing any patents. While such an investigation prior to launch is not required, by not doing such an evaluation you are really doing nothing more than engaging in an exercise of hope. Hope is not a business strategy, particularly when there is a patentee who believes their rights are being infringed.

Second, those who find themselves in this situation always cite the $2 million figure, which is the industry agreed upon average attorneys fees to litigate a patent infringement matter to conclusion. They rightly point out that they don’t have $2 million to spend. But the next, obvious question is whether they have insurance. So far I’ve never seen a situation where those being sued for patent infringe actually have patent infringement insurance to cover defense costs. Patent infringement insurance is available, but seldom purchased.

Simply stated, if you have not engaged in any kind of research to determine the likelihood that you are infringing, and/or you do not have patent infringement insurance, then the terrible choices you face after you get sued or receive a cease and desist letter are really of your own making. Poor business choices are what has so many claiming foul rather than any defect in the patent system. The patent system is operating exactly as designed.

Now for one big caveat: We all know that there are parties engaging in abusive litigation tactics and taking advantage of large and small companies. They exploit inefficiencies in the judicial system and leverage that to extract small, less-than-nuisance-value settlement payments. Something needs to be done about patent trolls; there is no doubt about that.

But even still, who now doesn’t know that there is a patent troll problem? It is all over the news; even President Obama speaks of patent trolls and abusive patent litigation. Yet, even knowing that hungry sharks are swimming in the shallow water just offshore you decide to get into the water anyway? Fine, but should you be in a boat rather than in a wet suit camouflaged like a seal?

Simply stated: If you know there is a patent troll problem and you are not going to take steps to protect yourself, as through procuring patent infringement insurance, then the problem you face is your own fault. Failure to operate your business in a business responsible way shouldn’t, and doesn’t, mean that the patent system is the problem.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Basics, Patents

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

51 comments
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  1. Good story Gene – I would have added the quote from I believe it was Judge Reyna from a case last fall about the “piracy” from those who think that putting out products gives them the right to violate other’s patents.

  2. Anon-

    Thanks.

    That is a great quote. Do you, or does anyone, happen to know the case name where he said that?

    That is exactly at the center of the issue. The fact that your product is new to you does not mean that it is an innovation.

    Cheers.

    -Gene

  3. Gene,

    Overall I agree with your position.

    However there is an imprecision in the language that is just asking for trouble.

    “Inventing” and being “first” to invent and disclose are not the same thing.

    The folks who put out what they call an “innovative” product could very well have invented theirs independently and without any influence from the patentee’s work.

    That notwithstanding, the USA patent system is a “winner take all” race.
    Whoever crosses the finish line first (the first to file) takes home the full exclusivity prize no matter how hard and how honestly the runner up and those behind him ran.

    The purpose of the patent system is not to cause innovation in the first place.
    The purpose is to “promote” the pace at which innovations in the useful arts come forth.
    That is why it is a race, a winner take all race.
    It is not a share and share alike, feel good competition.

  4. step back,

    Your post serves a nice segue to something that works and that has been sought to have been eliminated: the stick.

    Strong patent systems have both a carrot and a stick impetus.

    The Infringers’ Rights groups are active in attempting to remove the stick aspect. A weaker patent system is not a better patent system.

  5. I second what Step writes, about AIA being a “Winner Takes All” system, much more so than First to File as seen everywhere else in the world.

    That’s because of the provision in the AIA that earlier filed but later published art, like WO documents coming out of China with publication dates later than the filing date accredited by the AIA to the claim in view, are available under the AIA for obviousness attacks.

    File first and you can blow away all later filers. But only in the USA. This is not how FtF is practised elsewhere in the world.

    Now I think of it though, “Winner Takes All” was always the American way, right?

  6. MaxDrei,

    I would offer a slight correction to your post at 5.

    The more virulent obviousness attack capability is NOT geared to a more prevalent “Winner take all” stance.

    Rather, it is geared more to a No One Wins stance. Remember, there is no switching of patent rights to someone else if one application is rejected under the more virulent obviousness attack. Rights are not elsewhere fortified.

    Need I point out that such a more difficult standard benefits the large established corporations more than anyone else? This is far less “the American way” than you would intimate. Far less.

  7. Anon, I don’t understand you.

    The difference between the AIA and the ROW on using unpublished art as obviousness attacks will manifest itself as giving more scope to the first filer and less to those who file any time after that. In ROW a thicket can grow, with various Inventors securing various pieces of the pie. Not under the AIA though. Big Corp doesn’t like thickets though, does it?

    What determines who files first? Speed to filing. What filing entities are slowest to file? Lumbering corporations. What entities are quickest to file? Individual Inventors.

    Ergo, AIA rewards nimble Inventors, who are quicker to file than lumbeing global titans. Winner Takes All.

  8. MaxDrei,

    I am not surprised that you do not understand me. Many times I read your comments and see a lack of understanding of US law that just makes me shake my head in wonder that you want to comment so much on something you appear to understand so little.

    In the immediate case you repeat a mistake that should seem clear on its face. A tougher obviousness standard only prevents new patents from issuing and does not give wider protection to patents already in place. There is NO augmentation of prior patent rights here.

    All that this accomplishes is to provide more power to those already holding power. This serves merely to weaken the ability of a new patent from upsetting the status quo.

    Your question about Big Corp not liking thickets is most odd. Of course, Big Corp likes thickets. Thickets ensnare the new, smaller rivals and serve to lessen the impact of any single new patented advance. But thickets – of their own accord – are not the point of this new impediment to obtaining a patent. It is a misnomer to merely assume that either one side or the other in any thicket game wants to have patents that otherwise would be blocked from issuing. You assume too much.

    Likewise, you assume too much by thinking that speed here is involved. Or rather, that speed alone is involved. Mass of filings is also a factor, and it is the lumbering corporations that can best afford to wall-paper the patent office with come what may. It is the individual inventors that cannot so afford.

    Ergo, your lack of understanding of the big picture, of the many facets of that big picture show your error in thinking that the AIA was created as a benefit to the small nimble inventors. Of course, you should already know this, given that it was the large corporations that supported and pushed the AIA through Congress.

    And lastly, repeating yourself with “Winner Takes All” only shows that you are just repeating a fallacious view. Nothing more.

  9. Anon, I’m talking only about First to File and obviousness attacks based on art ( commonly known round the world as 54(3) art) that was not published when the claim under examination was filed at the PTO. The position with prior-published art is irrelevant.

    Earlier USPTO filed but later published docs always were citable under 35 USC 103. So what do you mean by your mention of a “tougher” obviousness Standard under US law? In what way “tougher”? Relative to what?

    First to File is the system under which I have practised professionally for 40 years. That’s what leads me to suppose I can usefully comment on aspects of FtF patent law.

    Big Corp likes a good thicket whenever it owns all of it. It is not so keen when the trees in the thicket are owned by a multitude of different parties, as often happens under Art 54(3) of the EPC. You do know that’s what happens under Art 54(3) EPC, don’t you?

    Of course, Big Corp knows this very well. How does it begin to negotiate an FTO exit from such a forest of rights. (In Europe, if I want to talk business, who do I phone?)

    This is why Big Corp wanted the AIA to be different from the EPC, by including in it a mechanism to confine thicket ownership to just one or two big winners. But a quick-thinking, quick-filing Inventor can be just such a winner. That’s my point.

  10. Anon, I have seen you and Max have differences of opinion in the IPwatchdog pages for several months. Differences of opinion are not objectionable, and a discussion of them, the underlying assumptions, logic and analysis of the opinion-holders is a beneficial to readers. Acerbic comments such as “see a lack of understanding of US law that just makes me shake my head in wonder that you want to comment so much on something you appear to understand so little” or “you repeat a mistake that should seem clear on its face” are not of the aforementioned beneficial sort. Perhaps Max does not know US law as well as you do; so what? I bet he knows EPO law much better than you do. At least accept his offer of a different point of view for what it seems to be: a good faith effort at a constructive contribution to the dialog.

    Max, your turn: We American Cowboys don’t want to be like the too-much-on-the dole Europeans. Too many lousy ideas from Europe are screwing up the US, and one has to be suspect that European patent ideas are likely of that ilk.

  11. American Cowboy,

    Your point would be taken, except for the fact that MaxDrei has long been appraised of differences in US law and ignores those differences. If MaxDrei would care enough to attempt to learn US law, perhaps I would be more inclined to give a little more slack. Different for the sake of being different should not be confused for thoughtful dialogue.

    Acerbic comments have their place. I would note that your own comments to MaxDrei are every bit as acerbic as my own. Mine are more geared to what I see as a mere repetition of a mantra that ignores any attempt at understanding, a repetition of merely stepping atop a soapbox and speaking. Such is not dialogue.

  12. Thanks for the words of support, AC. You are right to be suspicious of the provisions of the EPC, that one sees the rest of the world adopting. With your experience of the advantages of First to Invent, grace periods and secret prior art for obviousness attacks, you can tell us why (in your opinion) European patent ideas are misconceived and give us the underlying reasoning that brings you to your conclusion that they are “lousy”, because for example, even as we speak, Europe is putting together the Rules of Procedure of is soon to be launched Unitary pan-European Patent Court..

    I didn’t know, until you just told me, that the USA was getting “screwed up” or that it was Europe doing the screwing. Isn’t the recession in the USA now coing to and end, with the US economy bouncing back. How do you account for that then?

  13. No, Max, it isn’t Europe screwing up the USA. We are doing it to ourselves by adopting too many work rules, regulations, anti-carbon initiatives, ad nauseum that seem to have been first adopted in Europe and screwed up the European economy.

  14. Ah now I understand. To you, there “seem to be” too many rules. But here’s a paradox for you.

    First, there is no more rule-bound country in Europe than Germany. Germans love Rules, to promote the General Welfare of the people.

    Second, there is no more successful economy in Europe than Germany. All the world loves a German machine in their factory and a German car to drive. Why might that be? Perhaps because German machines do run as they are supposed to, reliably, according to the rules.

    German economy “screwed up”? I don’t think so. Rather the opposite, in my estimation.

    Other European countries? Ones that are less Rule-bound? Anybody for Greece, Spain, Italy, Portugal, Ireland, UK? Are their economies f+cked? It might just be.

    But enough of that. Let’s talk instead about patent law differences. Germans file far more patent applications than do other UE countries. I put that down to the German Employee Inventor Law, first pushed through in the times of the Fuehrer and subsequently adopted by other successful patenting countries.

    Too many lousy patent rules? In Europe? I don’t think so.

  15. Gene,

    As I read your post, I had a greater appreciation of the fact that inventors invent, but most people aren’t inventors. So when a patent holder says “you can’t do that, you have to invent another way”, most people hear “you can’t do that” and feel stifled. An inventor, however, will hear “you have to invent another way” and feel inspired.

  16. Mark,

    Everyone invents.

    Some invent (fabricate) stories.
    Some invent excuses.
    Some invent useful things in the useful arts.

    It’s not a question of being inventive.

    It’s a question of whether one is extraordinarily skilled in one or more of the useful arts and is given incentive to perform in that area.

  17. Max, Germany slightly unscrewed itself a decade or so ago by dropping some rules. That is why it looks so good in comparison to the rest of Europe. But Europe as a whole has very little dynamism. And as the USA adopts European thinking, we lose it too.

  18. Cowboy, I must say I do wonder, who is feeding you all this one-eyed agenda about Germany, and mainland Europe, that you so trustingly sup up. It is reminiscent of what the self-serving proprieters of the English press roll out, to their one-eyed readers.

    But as my clients are overwhermingly American, it is always useful for me, to gather what America thinks of Europe. So thanks for that.

  19. In theory this argument defending the antiquated and dysfunctional patent system sounds stale and naive at best and more deceptive than reasonable. The argument that the legally authorized and manipulated patent system protects “innovation” is wrong in every possible sense. “Innovation” is advancement from the current technological devises, methods and means to new technological devises, methods and means . Not theoretically, but in the real world, NO new advance in technological devises, methods and means was ever developed in a uniquely distinct vacuum) outside the broader context of a lineage of technological development the new device/method or means was actually derived from. Entirely new thinking can take place (Copernicus/Newton/Einstein), but “development,” by definition, is a “forced -‘progression’- of making” that draws from prior making. Admittedly there are varying degrees to which “novelty” arises, but divine intervention is NOT, nor has it ever been the bar that is met to receive a U.S. Patent.
    So this system has always been false in a purely logical sense.
    However now with the pace of technological change vs. the complete incompetency of the Patent Administration, , the over-reaching tendency of IP attorneys to claim as broad a patent-able reach as they can for their clients (as justification of value?), and a developing troll culture by bad actor lawyers in East Texas as well as corrupt corporate lobbyist lawyers elsewhere, well… let’s just say the argument made in the article rings a bit hollow for me.

  20. Terry-

    You can certainly be of the opinion that the argument rings hollow. You are entitled to your opinion, but you aren’t entitled to your own facts.

    Your comment does nothing at all to call into question anything in this article, which proves that patents do not harm innovation, but instead promote innovation.

    Factually, I am correct. I realize it may be counter-intuitive, but exclusive rights have always prompted innovators to explore and achieve new possibilities. It is also factually true that countries that don’t have a patent system, or that have weak patent rights, don’t have any domestic innovation, and they have no foreign investment. If patents are so stifling then countries that don’t have a patent system would be the center of run away innovation, but that is not true.

    All of the objective factual evidence supports the proposition that patents foster innovation. So you can believe the truth is naive, but what seems naive to me is that you reach a conclusion based on supposition and superstition. The lack of factual support for your viewpoint speaks volumes.

    -Gene

  21. Mark, Step-

    I would agree with Mark’s comment that the average person would feel stifled by the fact that they are prohibited from doing exactly what they want, which is a very libertarian view. I wonder whether the liberals who hold that belief realize just how libertarian such a viewpoint really is? But I digress… isn’t the real problem that the average, uninformed person is driving the patent debate? Spurred on by the media and for a long time companies like Microsoft who spent years creating an anti-patent climate, everyone thinks they are an expert. It reminds me of how so many protest the historic reality that the U.S. government brings in more revenues when income and corporate taxes are lower. How can that be? It is true. How can patents not stifle innovation? The problem is no one looks at facts.

    As for Step’s comment… I love it! Everyone invents indeed, even if it is only excuses.

    -Gene

  22. As for Step’s comment [#16] … I love it! Everyone invents indeed, even if it is only excuses.

    Thanks Gene.

    I “invented” that unique combination of words just now.

  23. “Everyone invents”

    True, but let’s put some numbers on it. There are approximately 300,000 US utility patents filed by US residents in a year. There are approximately 300,000,000 million US residents. So in a given year only about 1 out of a 1000 US residents file a patent. Faced with the need to make a technical invention practical enough and technical enough to get around an existing patent, most residents would consider that an insurmountable barrier. It’s not what they normally do.

    Compare that to the engineers. There are about 1.8 million engineers in the US. If we accept that there is a concentration of engineers in the inventors listed on patents, then perhaps 1 out of 10 engineers file a patent every year. So to engineers (and I count myself among them), faced with the need to make a technical invention practical enough and technical enough to get around an existing patent, it’s not that big a deal. I’m not saying it’s easy, but it’s well within what they normally do, especially those in R&D.

  24. In theory this argument defending the antiquated and dysfunctional patent system sounds stale…

    Terry: I agree that the current patent system is antiquated and dysfunctional. The only hope I see, however, is for a new nation to throw out the old system and develop a new one…just like the new United States of America did in the 1830’s when they introduced the radical concept of having technically trained civil servants examine patents using a well-defined, mechanistic process.

    “Innovation” is advancement

    You are confusing invention with innovation. Invention is advancement. Innovation is invention made practical. That requires investment (expenditure of current resources for a future, but uncertain, gain). If no investment is required to make an invention practical, then you are right, patents aren’t needed. If investment is needed, then you are wrong. I can tell you from the experience of all of the inventors I know, without a patent, there will be no investment.

    However now with the pace of technological change vs. the complete incompetency of the Patent Administration…

    I completely agree that in some areas, software in particular, the pace of patent process is much too slow relative to the pace of technical advancement. As I’ve indicated above, however, the problem is that the patent system (inclusive of the patent bar, USPTO and Courts) is not properly designed (and here I’m channeling my internal Bucky Fuller) for the task it has to perform.

  25. Mark, please leave us a few thoughts on how the system can be improved.
    Or, if you think it necessary throw out the existing system and replace it with something new, please describe the something new you have in mind.

  26. Mark,

    Faced with the need to make a technical invention practical enough and technical enough to get around an existing patent, most residents would consider that an insurmountable barrier. It’s not what they normally do.

    What legal point is attempted to be being made with this statement?

    You seem to miss the point that patents are meant to be an exclusive right – meant to be something – in and of itself – that cannot be gotten around. If you can get around, then you too can get a patent. Clearly, the facts show that art fields can be crowded and that getting around is just not the impossibility that you seem to want to portray.

    I think an important point to add at this point is that lady justice has her blinders on to your choice of a denominator in the calculations that you have put in front of us – those calculations are meaningless for the law.

    As to the invention/innovation and advancement discussion, I would posit that both you and Terry are at least partially mistaken. See Christensen on innovation principles, which reveals that often the historical record shows that actual quantum leaps in innovation actually show retrograde status in comparison to “state of the art.” See too historical records on patent law that dispel the myth that “promote” was only meant to indicate linear advances in the arts – innovation simply does not work that way, and true promotion is not just linear advances over the immediate state of the art.

    An analogy might help with this thought. Often, the patent system is likened to the paving of a road to the future, leading to an ability to have a greater speed on that road. This is not a proper view of the patent system. Instead, the patent system is more like a paving of a parking lot – which provides greater maneuverability and greater options for connections to be made in any and all directions. Since the actual directions of future innovation/invention cannot be known a priori, the parking lot model is the better model for a patent system.

    Interestingly, the visual image of a faster road to the future is more appealing than the image of a great big parking lot. But how innovation actually works means that the less attractive visual image is the better one.

    The problem with singling out software (as can be seen in the 1960’s presidential report that fed into the abomination of dicta in Benson), is that ALL future unforeseen great leaps in invention/innovation will likewise face an immediate dearth of available prior art, nicely aligned with that burgeoning and unforeseeable field. This too should be understood be everyone in this legal field. To choose the path of lowering or eliminating protection based on this notion alone would be a supreme detriment to why we have patents and patent law in the first place.

  27. Mark,

    Given your extensive background in both the technical part and legal part of various industries
    (see about Mark at
    http://www.marketsandpatents.com/about.html )

    I am surprised at your recourse to 1-per-engineer statistics.

    First of all, the filing of a patent is not done simply because someone “invented” something in the useful arts.

    Patents cost a lot of money. So there should be a well thought out business reason for spending the money on a patent.

    Second of all, in most organizations, there is often a 10% minority that contributes 90% of the wealth (the 90/10 rule, or is it 80/20?) including the vast majority of business-wise worthwhile inventions.

    An invention can be truly business-wise worthwhile if everyone is going to want to use it in the next couple of years, infringement is easily detectable and enforcement of the patent will not bring bad will to the patent owner.

    With some inventions, people get into a tizzy because the invention, when viewed in hindsight, seems so simple that we each feel, gee I could have done that! But we didn’t.

  28. American Cowboy:

    Well first let me say that I don’t have an answer. But having said that, I do have a process to get to the answer. Step 1 is to define a set of design criteria. So in my mind, a NewPatent should have:
    • automated examination
    • automated infringement detection

    Now we already have automated examination and infringement detection with copyright (“Google it”). With patents it’s much more challenging since there are no standards for language (an applicant can be his/her own lexicographer). Not should there be standards since one would expect that if you’ve come up with something new, you might need new language to describe it.

    To go beyond this, someone has to put some serious resources into redesigning patents so that they can be fully automated. Google seems to be edging in this direction with Google patents (“click here to find prior art”). Who will ultimately step up to the plate remains to be seen.

  29. What legal point is attempted to be made…

    Anon: No legal point, just a political one on why most people might be intimidated by patents.

    Patents are meant to be an exclusive right..that cannot be gotten around.

    I disagree. I think an important value to society is that patents encourage investment in alternative and better ways to achieve a certain end. The exclusive right that an inventor gets to the road he/she builds encourages others to build their own road. That way society has a greater selection of roads to choose from.

  30. Step back: Hey, thanks for the link to my bio. Yes, of course the 80:20 rule applies. I was just trying to make the point that those of us in the inventing and patenting business are in a very small minority of the general population. We don’t get all that worked up over patents or invention or the legal hazards associated therewith since we deal with them every day. The fact that 80% of the patents come from perhaps 20% of the inventors means that those that are truly comfortable with patents are in an even smaller minority than my rough calculation indicated.

    For example, when Peer to Patent came out, my business associate, Tom Bakos, and I wanted to test the system out. To do that we needed to file patents. To file patents we needed to make inventions. No problem. We are both seasoned inventors so we each just invented something.

  31. Mark @ 28,

    Do you disagree concerning exclusivity from a philosophical or legal standpoint?

    If from a legal one, how then do you get around the Constitutional basis?

  32. Mark, with our current standards for patentability, I cannot envision an automated examination system that would engender anybody’s confidence. Of course, that does not mean that it is impossible, just that — ahem — how to do it does not seem obvious to anyone with skill in the art.

    That is not to say that patents should not be overhauled. When you think of it, they have not changed in 150+ years. You have bunch of text and you have a bunch of line drawings; occasionally the powers that be let you use a photograph. What’s up with that? What is up is that government, which runs the system is not itself innovative.

    If we were start from scratch in 2014 in deciding what a patent ought to look like, wouldn’t we permit videos; animations’ much more use of color; text with embedded drawings so as you are reading about a drawing, the drawing is right there in easy sight.

    Not that any of this helps with your automation idea, but it does help in the function of patents as a way to disseminate information. Except of course to those big companies who tell their engineers to NEVER read a patent… Neanderthals!

  33. Anon: It’s not that I disagree with exclusivity, its that I disagree with “exclusivity that cannot be gotten around”. My disagreement is not from a legal or philosophical standpoint, but from a pragmatic one. Let’s take an example. Thomas Edison’s original light bulb patent gave him a right to exclude others from practicing his invention. See http://www.google.com/patents/US214636. His invention was thin graphite filaments. He had the right to exclude others from doing that. I see not value to the pubic to further give him the right to exclude others from inventing light bulbs that use other types of filaments, like tungsten. This is what “getting around” a patent means.

  34. Mark, with our current standards for patentability, I cannot envision an automated examination system

    I agree. In fact we are going in the opposite direction with the courts insisting that patentability should be based on common sense and professional judgment. That’s fine if you are a Supreme Court justice and have a team of clerks dealing with one or two patents a year, but if you have half a million patents to deal with in a year, you have to automate.

    A NewPatent needs new standards of patentability that are compatible with automation. A good place to start might be with pharmaceuticals. It’s my impression that if a compound is new and “useful” per FDA standards, it is per se not obvious. A NewPatent “claim” for a pharmaceutical might simply be a 3D rendering of the molecule. Automating an examination to see if it was new should be very doable.

  35. Thanks Mark, our discussion definitely diverged by our different meanings to the same terms.

    Your getting around is much more like my oft stated “stick” premise in patent law: necessity being the mother of invention, a patent fully blocking something will invigorate new invention – which accords with the meaning that you use with “getting around.”

    However, I warn against your supposed ease of automation with the example of the pharmaceutical molecule. What you have done is conflate an existing problem in that the pharma-view of “proper” patents does not translate to what goes on in many (if not nearly all) of the other art fields. Your auto-check would only work easily in a pure-picture-claim environment. But that is precisely NOT what 90+% of valuable claims are like. Picture claims are strictly the lowest form of claim drafting. They are a cold comfort in protecting actual inventions.

  36. Mark, in response to your post 33, the courts tend to give broader protection to “pioneering” patents, which most folks would say that Edison’s light bulb was.

    In the weeds of patent analysis, the issue is how broad should Edison have been allowed to claim his invention. If he were allowed to claim only a filament of thin graphite, that would be a narrow claim… unless the doctrine of equivalents allowed him to stretch that. Restricting the claim to only “thin graphite” may make sense if that is all that his disclosure showed him to have had possession of (written description) or that he enabled the art to do.

    On the other hand, if you look at his advance as a filament that does not burn out after carrying a current and glowing incandescently for hours, he may be entitled to a claim to a filament that “does not burn out after carrying a current and glowing incandescently for hours.” This latter type of claim is what many decry as functional, but which is the holy grail for patent applicants.

  37. But that is precisely NOT what 90+% of valuable claims are like.

    True, but hey, you have to start somewhere :-)

  38. This latter type of claim is what many decry as functional, but which is the holy grail for patent applicants.

    True, but I would agree with those that say Edison would NOT be entitled to a claim that reads “does not burn out after carrying a current and glowing incandescently for hours”. First off, those filaments already existed (e.g. platinum filaments). But even if they didn’t I see no advantage to the general welfare of giving an inventor the right to exclude others from inventing entirely new ways to achieve the same benefit of the inventor’s invention.

  39. Mark,

    You hit on the current dilemma in patent law. “entirely new ways” is quite arguably NOT reached by a platinum filament. Think of applying the Hotchkiss case in reverse (to protect a prior invention).

    Unless some real difference presents itself, changing the type of filament may NOT change the invention.

  40. Mark, going back to the Google patent link you included, here is Edison’s claim 1. In combination with an electric light having a continuous incandescent conductor, a thermostatic circuit-regulator, substantially as set forth.

    Even broader than my functional claim, n’est-ce pas?

  41. Great piece. The last line says it all:

    “Failure to operate your business in a business responsible way shouldn’t, and doesn’t, mean that the patent system is the problem.”

    Some companies are so used to playing on an uneven field they are upset when they system actually works.

  42. AC,

    (you do realize that a different claim format was the rule of that day, right?)

  43. Anon, I realize that claims back then were more loosy-goosy, but I am not familiar with a line of demarcation of formats. Can you fill me in (flame-free preferred)?

  44. Anon: My point about the platinum filament was that platinum filament light bulbs already existed when Edison made his invention. As far as applying Hotchkiss in reverse, could you elaborate? I’m not quite sure I follow.

  45. Even broader than my functional claim, n’est-ce pas?

    Oops. I linked to the wrong patent. This is the one I was thinking of: https://www.google.com/patents/US223898

    The way I view “as substantially set forth” is that the claim is limited to the embodiments set forth in the description.

  46. AC,

    The key phrase is “substantially as set forth” – ==> the claim was essentially the entire application.

    It’s a bit more than “loosy-goosy.”

    Mark,

    Are you familiar with Hotchkiss? It is the case of the clay doorknob handle found obvious. When I say apply in reverse, I would apply the doctrine of equivalents to the hilt. If a new patent could not be granted merely because a doorknob was newly made of clay, a patent on the old doorknob (presuming one was in effect) would then be deemed to have within its equivalents the clay doorknob.

    Thus, I would also amend your view of “substantially set forth” to include the embodiments set forth in the description – and their augmented equivalents.

  47. Mark,

    Re-reading the thread, I wanted to comment on your finding that the platinum filament was prior art to Edison, as that would indicate that the reverse-Hotchkiss theory would not be applicable. In essence then, the change in material in the Edison case does contain a patentable advance, and the simple analogy breaks down. But the thinking behind the theory does not – the doctrines of court cases define a binary switching point (even if that switching point is less a fine edge and more a fuzzy band).

    I tend to look at cases like Hotchkiss and KSR less as strictly anti-patent (you cannot have a patent because…) and more as ‘this is where the line is drawn, and you cannot have a new patent means that the old patents are stronger in that their coverage includes the non-patentable obvious change that you are trying to get a new patent on. While this is not strictly true, it is at least partially true. Many reading KSR simply skip over the words used in that decision:

    Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.

    Yes there is a “no patent for you” tone to this statement. There is also a “strengthening of prior invention” tone. I have commented before on unintended consequences of Court decisions. This stated desire of the Court to not deprive prior inventions of their value must mean something. What does it mean to you?

    I do realize that many would call me a patent-maximalist. I do tend to find the maximum amount of protection for my clients. It is what I do. So when I see lemons, I make lemonade, When I see a Court wanting to deny a new patent and the Court says that part of the reason is to better protect previous invention, I will take what the Court gives.

  48. Anon:

    Interesting points. I hadn’t really thought about the phrase deprive prior inventions of their value and utility. I don’t really see how that’s related to granting patents on improvements to said inventions that “would normally occur in the ordinary course without real innovation.” It sounds like the Court is drifting back to the “flash of genius” test. As I’ve indicated above from my own personal experience, “real innovation” occurs in the “ordinary course” of the activities of any R&D lab.

  49. Mark,

    I believe that you raise a valuable and highly pertinent point: the Court appears to be reaching back in time to an understanding of the law that was expressly overruled by Congress.

    The last sentence of 35 USC 103 cannot be made a nullity by the Supreme Court by silent implication. The Court does not have that authority.

    What I find fascinating about this topic is the apparent interplay between 103 and 101. When one take the big picture view of what Congress did in 1952, and why they did what they did – as a direct reaction to the Supreme Court anti-patent rulings – a new critical understanding emerges as to a deep and abiding crises of constitutional dimensions along the separation of powers doctrine and which branch of the government has the authority to write (and shape) US patent law. It is no wonder then, just how careful the Supreme Court has been in every 101 decision to pay lip service to the words of Congress, even as they seek to implicitly – or in the case of the 4 in Bilski, explicitly – change those words.

  50. Mark,

    Perhaps what is needed is to draw a distinction between inventors and what the legal “ordinary person” should be considered to be.

    As you mention, it is ordinary for you to be inventive, because that is what you do. But to draw the legal “ordinary person” standard to include you would mean that NO inventions would be allowed (or as you point out, only those that would take a Flash of Genius – or perversely only those that happen only by accident).

    Perhaps a more common-man level of ordinary person should be the baseline.

    I think that such will not be accepted by the courts that seem ever distrustful of patents. I think that such a “lowering” of the level to recognize what a patent could be granted for goes against the court notion to keep patent grants tightly constrained.

  51. To follow on with your comments Gene, one of the more recent cases where the defendant did have intellectual property insurance was the Octane Fitness case. He invented around and was able to prove it.