Beyond 101: An Inventor’s Plea for Comprehensive Reform of the U.S. Patent System

By Emil Malak
July 8, 2019

“Shenzhen is becoming the new world leader and global technology hub, rapidly leaving Silicon Valley behind. China’s Huawei has assigned about 10,000 of its developers to work across three shifts in Shanghai, Shenzhen and Xi’an to eliminate the need for American software and circuitry.”

https://depositphotos.com/69798509/stock-photo-woman-holding-microphone.htmlInventors are seeing the light and are looking increasingly to the East for protection of their patents. Specifically, to China, where patent protection was once non-existent; China has overhauled its patent system and become more attractive to inventors than the once mighty USPTO. In 2016, the State Intellectual Property Office of the People’s Republic of China (SIPO) received 1.3 million patent applications. That’s more than the combined total for the United States Patent and Trademark Office (USPTO; 605,571), the Japan Patent Office (JPO; 318,381), the Korean Intellectual Property Office (KIPO; 208,830) and the European Patent Office (EPO; 159,358).

China Steps Up

My relationship with China began in 2005, when Digifonica International Inc. (now Voip-Pal.com Inc.) had an office in Beijing. It was my honor to be introduced to and become friends with Deng Pufang, the oldest son of former Paramount Leader Deng Xiaoping. This wonderful and caring man is a legend in China. Left crippled by Mao’s Red Guard in 1968 at the age of 24, he has dedicated his life to improving the lives of the almost 80 million people in China with disabilities. Deng Pufang invited me to give a speech to the China Disabled Persons Federation (CDPF), which was an unforgettable honor for me.

Not long ago, I was contacted by some high officials from China’s Ministry of Industry and Information Technology (MIIT) requesting my input for further improvements to China’s patent system. I asked, “Why the sudden interest in protection of intellectual property?” Their answer was simple and quite informative. They want foreign inventors to see China as a safe haven for patent monetization and trust their patents will be protected. They also recognize this as a great opportunity to fill the vacuum created by the unfair treatment of inventors in the United States. They are very aware of the difficulties small inventors/patent holders encounter in their monetization and patent enforcement efforts.

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USPTO: Beware the Newly Proposed Agency “Far East Patent Issue and Enforcement Department” 

According to sources close to the author, China is in the process of forming an alliance with other far east countries with a combined population of about 3.6 billion people, nearly half the total world population. This proposed alliance of far east countries would create and coordinate its own allied patent courts, which would deal with all matters of patent enforcement, infringement and damages. Chinese patent examiners would handle all technical issues equivalent to U.S. Section 101/ abstractness, Sections 102 and 103, prior art, indefiniteness and novelty etc. The new coalition would reportedly be called the Far East Patent Issue and Enforcement Department. When the Department finds in favor of the patent owner, injunctive relief would be granted, and the infringer would be ordered to cease and desist using the patent or patents in question. The infringer would be compelled to enter into a licensing agreement with the patent owner before resuming use of the patent.

This new proposed office would be headquartered in Shenzhen. As I have previously stated, Shenzhen is becoming the new world leader and global technology hub, rapidly leaving Silicon Valley behind. China’s Huawei has assigned about 10,000 of its developers to work across three shifts in Shanghai, Shenzhen and Xi’an to eliminate the need for American software and circuitry.

Soon they will no longer rely on Intel or other western chip makers. Additionally, Huawei is quite far along in the development of their own search engine and smartphone operating system, both of which will deal a major blow to Google’s search engine and their Android operating system. Where will this leave Apple’s iPhone?

Inventors are Losing Patience With the U.S. Patent System

I, along with others, have been quite vocal that change like this has been needed here for some time, but no one has been listening. The U.S. patent system is in dire need of streamlining. The process is far too long and combative. Patent owners have a right to enjoy the benefits of their patents without becoming embroiled in constant and prolonged legal battles just to assert the rights to their intellectual property.

Until recent years, America was the place that welcomed and supported inventors. Today, the anti-patent system and the courts seem to be determined to subjectively invalidate good inventions. America must lead the world once again in encouraging and supporting all inventions, particularly those in the computer science field that control the way the world communicates. Innovators should be encouraged to turn their abstract ideas into real inventions that improve all of our lives. I am also a strong supporter and a big fan of Director Andrei Iancu. His appointment was a very positive move which will hopefully bring about the necessary changes. He has made excellent decisions since taking the helm at the agency, but to a large extent much of his efforts are for naught until current patent laws are changed and the America Invents Act is repealed and replaced with a set of laws that is fair for all.

While China and the far east have taken big steps to embrace patents and innovation, we in the west continue to fight it and keep inventors from ever achieving monetization of their intellectual property. The broken U.S. patent system facilitates the stealing and unauthorized use of patents by the Silicon Valley and other giant corporations. We must wake up now, before it is too late.

The current U.S. patent system is hostile towards inventors and was designed to drive small inventors and companies like mine into bankruptcy. How much longer are we supposed to wait and how much more will we be forced to endure before we reap any rewards for our labors? I am now 67 years old, having dedicated the last 15 years of my life to developing technology covered by certain patents related to Routing, Billing and Rating (RBR). Thus far, we have been 100% successful in defending eight Inter Partes Reviews (IPRs): four from Apple, three from AT&T, and one from Unified Patents. We are presently in litigation against Apple, Verizon, AT&T, Twitter and Amazon.

Are the defendants hoping I die of old age before this is settled? Patents have a life of 20 years, and because of the current process, many patent lawsuits are actually disputes over expired patents. In spite of these huge obstacles thrown at us, we are never dismayed. We will continue to battle until we win this war. The system will not beat us. We will beat the system.

Unless you are prepared to waste 20 years of your life with little or no chance of success, my advice to you is, “DO NOT PATENT WITH THE USPTO!”

Disclaimer: The views and opinions expressed in this article are those of the author and do not necessarily reflect the official policy or position of Voip-Pal.com Inc.

 

Image Source: Deposit Photos
Image ID: 69798509
Copyright: ginasanders 

The Author

Emil Malak

Emil Malak is the largest single shareholder of Voip-Pal.com, Inc., a publicly traded company where he serves as a Director and Chief Executive Officer. He has spent the last 16 years overseeing the development of the company’s intellectual property comprised of more than twenty telecommunications patents in the United States and several international patents in Europe, India, Canada and Indonesia. In addition to his work as Voip-Pal’s CEO, Mr. Malak has spent the last 7 years involved with a medical research team of doctors, serving as the chairman of the board of Thorne BioMed Ltd. They are currently conducting cancer research in Germany where they are committed to pursuing a possible reduction to cancer metastasis.

For more information or to contact Emil, please visit his company profile page.

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 18 Comments comments. Join the discussion.

  1. MaxDrei July 8, 2019 1:44 pm

    In a jurisdiction that upholds the Rule of law and the separation of powers, such as the USA, we can ascribe some sort of meaning to the word “unfair”.

    But in a jurisdiction that has no conception of the Rule of Law or the separation of powers, it is hard to put any sort of meaning at all on the word “unfair”. So does the author really suppose that China is less “unfair” to private individuals than the USA?

    Which is not to say that the present state of implementation in the USA of a system of patents is perfect. Plenty of room for improvement. Life in a democracy is inevitably messy. So much less administrative clutter, so much less “due process” in an autocracy like China, where everybody, from Head of State down, is a servant of The Party.

  2. Paul Morinville July 8, 2019 2:59 pm

    “Unless you are prepared to waste 20 years of your life with little or no chance of success, my advice to you is, “DO NOT PATENT WITH THE USPTO!””

    I’ve now burned 20 years of my life. My advice is to patent in China and forget about the US.

  3. Paul Morinville July 8, 2019 3:04 pm

    MaxDrei, I disagree with your assertion that we are a rule-of-law country. That has not been the case is a couple of decades, especially in patents and other property rights. We should be, we are just not. The courts no longer value the rule of law.

    Also, China is not working to make their patent system fair or unfair. They have learned that a stable and predictable patent system brings in foreign investment and technology. So fairness is not the issue. Investment and technology is. But encouraging investment and technology requires fairness, so it is a result not a premise.

  4. Pro Say July 8, 2019 4:13 pm

    The “America Invents Act” is a misnomer.

    Given the massive, crushing patent and innovation damage the AIA has caused America, the AIA is in fact the CIA:

    The China Invents Act.

  5. American Cowboy July 8, 2019 4:54 pm

    Patenting in China and not patenting in the USA is fine if the USA is not an important market for the patented product or service, but China is. My experience suggests that those circumstances do not happen often.

    Also, you must bear in mind that US companies/inventors need a Foreign filing license to file in China, regardless of whether they file in the US.

  6. Paul Cole July 8, 2019 5:21 pm

    What is significant in the US appeal to the Federal Circuit is that positive user benefits flowing from the claimed operating procedure are relied on. Such benefits are prima facie evidence of inventiveness and should no more be ignored under Section 101 than under Section 103.

    It is notable that there is a similar granted European patetn EP-B-2084868.

  7. Concerned July 8, 2019 7:21 pm

    My experience with a patent application in the United States is horrible.

    The rejection is not truthful, factual or logical on the surface. The examiner will not even address the hard evidence that disputes his assertions.

    How can a process be routine conventional and well understood when it is proven nobody on Earth has ever used the claimed process, individually or in combination.

    The examiner even admits in writing that he went outside my field of technology to find a similar situation, which is also not correct in form or procedure.

  8. Attila the Hun July 8, 2019 8:55 pm

    Good luck enforcing anything in China. By the time you filed your claims with a Chinese city the infringers will have closed up shop and reopened under a different name , keeping their business intact and leaving you not only to fight the corrupt and inacessible Chinese legal system but also their underhanded tactics.

    All I read is a patent troll whining that there’s two sides to every coin.

  9. Benny July 9, 2019 6:45 am

    “Do not patent with the USPTO”
    Our Chinese and South Korean competitors patent with the USPTO. What do they know that you don’t?

  10. Anon July 9, 2019 7:29 am

    Concerned,

    While I have read your many posts and readily admit to you having genuine grievances, your statement of: “The examiner even admits in writing that he went outside my field of technology to find a similar situation, which is also not correct in form or procedure.” is simply not correct.

    Read again the KSR decision as that does explain that at times it is fully proper to look at prior art outside your field of technology (for example, if the type of problem or a manner of solution to a similar problem exists in a different field of technology, and there may be found an expectation of success in applying that prior art in your art field, then the difference in field of technology is not a block to a proper finding of obviousness.

  11. concerned July 9, 2019 9:30 am

    Anon:

    Thank you for your comments.

    Had no 102 or 103 rejections. And my claims are not even in any other fields of technology.

    Can you think of one situation in life, where the parent of an adult is tracked and said parent of that adult is tracked decades before a relevant event could even occur? And said tracking is performed cost efficiently as the disability attorney’s fee is capped at $6,000 by law. Tracking “false” positives over years puts the expense beyond the earned fee, assuming the disability attorney even gets said client at time of the triggering event.

    The Examiner had nothing, offered nothing and just babbled routine, conventional and well understood without any explanation or example of how my claims are applied in “any” other field. The Examiner failed to even make a case of the “so called” similar cases, which were the usual laundry list of cases.

    He did try to make a faint case of tracking the adult person, many examples in life of tracking the adult individual, my claims do not track the person. If it was that easy, tracking the adult person, millions of working professionals at the Social Security Administration and CMS would of had that obvious solution decades ago. Plus disability attorneys would not go on television begging clients to come to them. In fact, if it were not for “daytime” Medicare and disability attorney commercials, television networks could not financially survive prior to 4pm. LOL.

    Anon: Always enjoy your feedback. Thank you again!

  12. MaxDrei July 9, 2019 11:31 am

    At Comment # 6, Paul Cole gives us the serial number of the patent granted by the EPO, EP-B-2084868. When I click on “patent family” in the EPO Register, it is revealed that no less than eleven patents in the family have already been granted by the USPTO. As to China, I see one solitary publication of an application as filed but nothing granted yet. What am I not getting here?

  13. B July 9, 2019 1:33 pm

    ” They want foreign inventors to see China as a safe haven for patent monetization and trust their patents will be protected. They also recognize this as a great opportunity to fill the vacuum created by the unfair treatment of inventors in the United States.”

    China officially becomes more patent-friendly than the U.S.

  14. jacek July 9, 2019 2:28 pm

    USPTO? or Not To much emotions in comments above.I think this question we should approach from practical point of view. Is US patent enforceable? NO. It only make sense to invest my time and money only where I can enjoy natural inventors rights like for example in EU. Export license for US based inventions/inventor. If I have double or triple citizenship and US is not the only place I spend my time what is the test or proof that my invention is US invention. Plus the export license law is present in many countries not only in US. Democracy? What democracy we have in US with the system of electoral votes discounting my vote as invalid because (pardon the expression but there is some of my emotions behind) idiot, member of the Electoral college decide to override. I think most of us is living in make believe world consisting of assumptions and legends we strive to believe because we want to not because there is truth behind. The fact is that with Trump style politics present with or without Trump in every area (even preceding Trump) of life the time of US domination on world stage is behind. Democracy is not a mess. It is democracy without Citizens United. Hitlers Germany was also democracy. Living in 2 countries under communist regime i have heard every day about democracy and rights of the citizens. So decide if you want to suffer or prosper. Reading daily about tragedies of so many US inventors i have made my mind. In essence what USPTO offering us is con job asking for something in exchange for trouble. Of course there is always hope. Food of fools

  15. angry dude July 10, 2019 1:57 pm

    Too late, dude

    The doc said “to the morgue” – to the morgue it is!

  16. Jianqing Wu July 10, 2019 7:43 pm

    The US Supreme Court: “WE DO NOT HELP INVENTORS!”
    The CAFC: “DO NOT APPEAL TO THE CAFC!”
    Federal district courts: “DO NOT LITIGATE PATENT IN OUR COURTS!”
    The CAs for other circuits: “DO NOT APPEAL TO OUR COURTS!”
    The USPTO: “DO NOT APPLY FOR PATENT WITH US!”
    U.S. inventors: “DO NOT INVENT!”

    IS THIS A GREAT PATENT SYSTEM?

  17. angry dude July 11, 2019 8:56 am

    For those of you too fascinated with China just read the book

    “The Hardware Hacker: Adventures in Making and Breaking Hardware”

    Tells you something about Chinese culture so you understand it better and stop believing lies that US inventors can somehow make it in China via patenting route

  18. box7003 July 18, 2019 1:14 pm

    There is offshore legal help to keep costs down at UpWork. Happy to hear of your victories, but how do startups do the same?

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