The European technical standard as a guide for drafting software patents

By Gene Quinn
March 13, 2015

Micky Minhas

Micky Minhas

Micky Minhas is Chief Patent Counsel for Microsoft Corporation. He is also someone that I have know for over 20 years, which is almost hard to believe. Like me, Minhas is a graduate of the school formerly known as Franklin Pierce Law Center, which back in the mid-1990s was widely regarded as the top patent law school in the country. I met Minhas in 1994 when he was a 1L and I was a 3L and Teaching Assistant. We have periodically stayed in touch over the years, but have reconnected more often recently given his new high-profile position and the fact that as a part of his job duties he travels with some frequency to Washington, DC for various events and functions.

I floated the idea of an interview, which he accepted. To the best of my knowledge this is the first interview I’ve done with someone that I’ve known since law school, which made it special for a variety of reasons. The interview took place on Friday, February 20, 2015. What follows is part 1 of our 2 part interview. As you might imagine, the dominate theme of our interview was patent eligibility in the wake of Alice.

Without further ado, here is my interview with Micky Minhas.

QUINN: Thanks, Micky, for taking the time to chat with me. This is going to be an interesting interview for a few reasons. First, you are the first person that I’ve interviewed that I actually went to law school with, so I’ve been looking forward to chatting with you and catching up on what you’ve been doing professional. But you are also now at Microsoft, so I thought maybe we could start with a little bit about what you’re doing, what daily life is like in the Office. Then maybe we could talk a little bit about patent eligibility.

MINHAS: Sounds good.

QUINN: So what is it like at Microsoft? How long have you been there? What is your daily job?

MINHAS: I’ve been here about two and a half years in my role as Chief Patent Counsel. The Patent Strategy team is roughly 110 people and we are responsible for all of our new patent filings and preparation. We also have a large analysis group that analyzes a lot of our issued patents and our pending patents and supports our licensing programs. As to the daily life, the job ranges anywhere from issues with the PTO, or any other patent office around the world, to issues supporting our licensing programs. Sometimes it’s acquisition related activities; sometimes it’s risk mitigation projects. I’m having a lot of fun. It’s interesting particularly because Microsoft is in so many different businesses, so the legal issues and the intellectual property issues are often pretty unique. Sometimes what is in the best interest of one division may not be in the best interest of another division. Intellectually, it leads to some pretty interesting strategy assessments and discussions.

QUINN: So do you have time in your daily existence to take that step back occasionally and make sure that all the units are operating in a way that is good for the company as a whole?

MINHAS: Of course, but I always wish there was more time. If issues were black and white, we’d be rather straightforward and we could move our merry way. But most of the time those kinds of assessments are gray, so we spend a lot of time debating the issues and what’s in the best interest of the corporation as a whole, and how our patent strategy can help achieve that business goal. So yes, that’s a frequent discussion.

QUINN: Interesting. Now I also know that at least part of your job is flying back East and going to events at the PTO and explaining the Microsoft viewpoint, which you did not all that long ago regarding patent eligibility when the Patent Office hosted the patent eligibility forum.

MINHAS: Right.

QUINN: Is this something that you do quite a bit or are you just getting involved with patent eligibility because it’s an issue of such importance?

MINHAS: I’d say probably the latter. We’ve always been involved, and the Chief Patent Counsel for Microsoft has always been involved at the PTO in some way. Usually, it’s been by supporting examiner training and participating in some of the tech fairs and things like that. But you know, I think with the 101 issues, certainly since Alice but even in the last couple years, there’s just a lot more activity. It’s a lot more dramatic in terms of potential impact and so we’ve certainly gotten more active in the last year or so.

QUINN: So what do you think about where we’re at currently? I know that’s a very open-ended question and it’s intended to be so you can go in whichever direction you want to go. And maybe what I’ll also say before I let you respond is there are some people that are saying that the Alice decision was not a bad decision. Some are saying it was actually a good decision and then there’s a lot of people that have real concerns. Where do you fall out on that spectrum?

MINHAS: I think we’re in a period of uncertainty where many participants in the field are wondering where that line on subject-matter eligibility is. I view this debate as a pendulum that had State Street on one end and now it is swinging or has already swung back to the other side with Alice. That depends on how you interpret and if you see any cohesion among all the cases that we’ve seen. So I think the patent practitioner community is in a somewhat uncertain place with respect to U.S. law. In terms of our patent cases – they have been written to satisfy various standards of patentability. A few years ago we ramped up our foreign filings and recognized that we’re writing this one document, this one patent application for so many different audiences. We started settling in on the European technical standard as a guide for how to draft, how to cover the innovation from that vantage point, in order to try to write this document that would satisfy the USPTO as well as the EPO, Chinese Patent Office, the Japanese Patent Office, and so on. So for me, what this environment means as a practitioner has more to do with how the patent is drafted and how we capture the innovation, and not really a huge difference about what the underlying innovation is or how it’s implemented.

QUINN: It’s interesting when you say that because one of the things that bothers me the most about software patent law isn’t that certain things are invalid, it’s that if you really knew what the standard was going to apply to your application whenever it gets reviewed, whether it be at the Office or outside the Office you could write the patent to satisfy that standard. The problem we have is this has been a moving standard. If you don’t like the software patent laws stick around for a while and they’ll change. It’s sort of like the old joke about the weather in New England, if you don’t like the weather just hang out for 15 minutes and it’ll be different.

MINHAS: Exactly.

QUINN: And this is a real problem.

MINHAS: I generally agree with you on the issue of variability. If you are someone writing to the lowest bar of the patentability standard at any time then you’re susceptible to the changes in law. I think when you’re writing patents to last 20 years, it’s really dangerous to write towards that lowest patentability standard. That is why Microsoft, who writes with multiple Patent Offices in mind, steers away from that mindset and tries to makes our patent applications less susceptible to each individual legal case that gets decided.

QUINN: I guess the only question I would ask you about that is how do you do that? Because we know even with a company as big as Microsoft, you’ve got a bottom line and there’s only so much money that can go around. Microsoft isn’t unique with that problem, everyone has that same problem, there is more innovation than can be protected within your budget. So that means you are picking and choosing what to pursue already. So is it going to eat up more of your patent budget? Are you going to need to put more money into your patent budget? Because we all know what we need to do, but sometimes when you have so much innovation you need to protect some of them are just going to wind up being the B and C patents, which means they get less attention, less time and won’t be as robust.

MINHAS: We apply a lot of thoughtfulness into what patents are worth pursuing. We could pursue every innovation that Microsoft comes up with a patent but that would be cost prohibitive. And we also have to assess which innovations are most conducive to patent protection. So there’s a number of factors that come into play, things like detectability and just general likelihood of use and factors, that can help inform decisions as to which innovations are worth the investment of a patent protection.

QUINN: Yes.

MINHAS: In terms of budget, I do think it takes more thoughtfulness in how we draft and respond. You know, the point I was making in terms of multiple audiences applies here as well. I really think patent drafters have a very, very difficult job. They’re drafting for the inventor in front of them. If they’re outside counsel, they’re also drafting for their partner and they’re drafting for the in-house counsel. They’re also drafting for the patent examiner or perhaps the PTAB, the judge, the jury, the European patent examiners and so on and so forth. And it’s really hard to write this one-size-fits-all document. And oh, by the way, do it really cheap in a fixed amount of time. And then you get the scrutiny of litigators later on. It’s a really difficult task.

QUINN: Yeah, yeah, you know and the other thing that came to mind as you’re talking about that is you mentioned a couple of times patent last for 20 years. And they do, but one of the things that I’ve been wondering about lately is whether some of the bad press that patents get is due to the fact that because people really believe that all patents last 20 years. The ones that last 20 years are the most commercially relevant, the ones that embody the most important innovations. I wonder how much of the bad press and ill feeling towards patents is coming from a place where people just don’t understand the industry. They think they know but they don’t really know because there’s a lot that goes into deciding what to keep, right?

MINHAS: Yes, there is. I mean there are broad patents, there are narrow patents; there are ones that have short shelf life and ones that stand the test of time. The thing is that at the beginning when you’re filing these it’s difficult to figure out which ones are which. And so like most companies, we err on the side of caution when we file and then pare back. As you have better information later on, it’s easier to decide what to keep, whether that’s during the prosecution process or later when you’re deciding whether it’s worth paying the annuity.

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Don March 14, 2015 9:54 pm

    What about the idea that a software patent held by a small company can protect the company against large corporate adversaries as in this debate: http://makeyourcase.org/topic/patents-should-not-be-issued-for-software . Doesn’t that indicate that there is some kind of role for patents to fill? There seem to be good points for and against, but I still haven’t made up my mind.

  2. Benny March 15, 2015 3:25 am

    Here is a question I would like to ask: Given 110 bright sparks on the payroll, add maintenance fees on Microsofts’ not insignificant patent portfolio, take into account the speed with which a cutting edge technology companys’ IP can be rendered obsolete – is there a return on investment? More to the point, is there a viable method of calculating return on investment?

  3. Anon March 15, 2015 8:55 am

    Benny,

    That’s a good question. All future-dependent cash flows contain elements of risk.

    But let me take your point in a slightly different direction. A better question for our Courts is whether their actions are engendering more or less risk for property grants already made. Injecting more risk and uncertainty into the patent system with a penchant of erasing clear lines and invoking more reliance on the whims of any particular judge to “make the call” is undermining the purpose of the patent system.

  4. Gene, but not Gene Quinn, and an FPLC grad March 15, 2015 9:55 am

    “if you really knew what the standard was going to apply to your application whenever it gets reviewed, whether it be at the Office or outside the Office you could write the patent to satisfy that standard.”

    this sounds like something the courts are averse towards—“the patent draftsman’s art”. it seems to me that the courts look at a patent issue, and try to articulate a jurisprudence about similar invention issues in the hope of achieving some clarity forever after. but a crafty lawyer will take that jurisprudence, apply “the draftsman’s art” and, in the next iteration, courts see that the previous jurisprudence did not have the stamina that was hoped for. newer jurisprudence is then created, aiming at the new “draftsman’s art”. the crafty patent bar generates the movement (moving target) for this oscillation dynamic.

    it seems to me that the courts often believe that an invention is (should be) an objective thing. just describe the object (the invention) and the jurisprudence should hold forever. it turns out that, apparently, no invention is objective, but that all inventions are subjective, and so the patent law will oscillate forever, as every human is an independent subject.

  5. Anon March 15, 2015 10:29 am

    Gene, but not Gene Quinn, and an FPLC grad,

    I would put to you that it is indeed a poor answer that to the question of how to address any notion of applicants’ representatives being artful scriviners, that the Court itself attempt to be scriviners in their own stead and constantly attempt to move the “interpretation” of the law to being in line with their own philosophical viewpoint of what the law should be.

    This type of judicial activisim is simply not in accord with the authority that they possess. Patent law is statutory law – not common law. It cannot be stressed enough that what we see before us is an improper abrogation of the role of the Court – by the Court. If a statue is “wrong,” it is not up to the Court to rewrite it in the image of that which they desire.

  6. Dave March 30, 2015 12:20 pm

    I may be missing something, but can someone explain what a “European technical standard” is exactly? If Microsoft thinks it’s a good model to follow, it might be worth looking into. However, a general search hasn’t led to anything helpful.

    Ideally, I’d like to see one of these technical standards if anyone has a link. Thanks!