|
03.07
The Perspiration of
Patenthood
By Robin Peress
Marconi and Tesla’s bitter race to own the
patent for radio seems almost quaint compared with the blatant
exploitation on today’s IP landscape.
Statistics show that infringement cases are at
an all-time high and climbing. They range from matters settled
out of court (over 70 percent of all claims) to the
high-stakes hairsplitting that reaches the U.S. Supreme
Court.
So-called patent trolls (trollers, really) are
using predatory tactics and threats of injunction to extract
licensing fees from unwitting companies.
Meanwhile, changeable rules at the U.S. Patent
and Trademark Office (PTO) and redefining of such terms as
“nonobvious” further bedevil the quest for patenthood.
In spite of a risky environment, would-be
inventors still deluge the PTO with a growing number of
applications — more than 400,000 received in 2006. And,
despite evidence that most patents yield few if any financial
rewards, applicants continue to harbor naïve hopes of fame and
wealth — like an Achilles’ heel.
More than one IEEE member had a reality check to
share.
“That’s not the way the world works,” said Dr.
Gabriel Robins, a Professor in the Department of Computer
Science at the University of Virginia. Robins’s long
experience on patent infringement cases proved useful when it
came to floating his own two patents. “New inventors think the
world will beat a path to their doorstep. Even if you’re
issued a patent, you have to argue it, market it, raise
capital, have a business plan, manufacture it. The idea itself
is maybe one percent of it,” he said, paraphrasing Thomas Alva
Edison’s famous quote, “Genius is 1percent inspiration and 99
percent perspiration.” Inventors would do well to take a
lesson from history, he said. “Edison went through hell. Even
with the light bulb he tried thousands of combinations. It
took years for him to see any money. The best way to disabuse
yourself of any illusions is to read some case studies of what
others had to go through.” Robins consults as an expert
witness in major software and IP litigations, and serves as
Associate Editor of IEEE Transactions on Very Large Scale
Integration (VLSI) Systems.
Lawrence Kamm, IEEE Life Senior Member, is a
consulting electro-mechanical engineer in San Diego, owner of
38 patents, an expert witness, and author of a book called
“Adventures of an Engineering Entrepreneur.” He says:
“Independent inventors who try to market their own patents
usually do so without success. The most probable financial
benefit from owning a patent is in starting a business based
on the invention. My most serious recommendation is to take an
MBA and then start a business.” Kamm’s Web site is a trove of
straight talk, friendly reassurance, wry observations and
indispensable resources for novice patent seekers: see www.ljkamm.com/inventor.htm.
In one section encouragingly titled “Failure,” he writes about
unfulfilled promises made by invention marketing companies.
“There certainly have been a few spectacular successes,” he
says, “but I usually suggest going to a racetrack and betting
on horses; the odds are better and you get fresh air.”
Sound deflating? Think of it this way: Stocking
up on experts’ free advice before you forge ahead might help
save you time and mileage. After all, why reinvent the journey
when there’s prior art?
********************************************************************
Waiting periods of three or more years, and the
granting of iffy patents by underfunded, overwhelmed examiners
lacking relevant expertise: these are woes most often
attributed to the U.S. Patent and Trademark Office. To begin
offsetting this backlog and ensure better-quality patents, the
PTO has instituted time-saving policies and a hiring push. Not
only will there be more examiners — 1,200 each year for the
next five years — but they will include 700 more electrical
engineers in three key technology centers — computer
architecture, software and information security;
communications; and semiconductors, electrical and optical
systems. A lower allowance rate in 2006 over previous years
implied fewer but better patents issued.
The Accelerated Review Option, announced last
June, allows applicants to obtain a final decision on their
applications in just 12 months in exchange for performing a
search for prior art themselves, which is typically the domain
of examiners. The application must be filed electronically
using the USPTO's electronic filing system (EFS) or EFS-Web,
and must contain three or fewer independent claims and 20 or
fewer total claims. For more information, see www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm.
Another provision, announced in January 2006,
provoked IEEE-USA’s ire and touched off a barrage of
complaints to the PTO. The Changes to Practice for the
Examination of Claims in Patent Applications set out to limit
the number of representative claims to 10, and to require an
examination support document “to share the burden of examining
the application” if the number of representative claims
exceeds 10. The Intellectual Property Committee responded in a
position statement: “Because software-based inventions require
claiming in a variety of ways to get full protection, such
patent applications need to have four or five times the number
of claims as other technologies …IEEE-USA calls on Congress
to…ensure that patent applicants who must use multiple claim
forms to protect their inventions are not penalized."
“We aren’t looking to penalize anyone,” said
Commissioner for Patents John Doll. “Before, the examiner
might have had to look at 20 claims before making a
determination. If these 10 representative claims are enough to
make a patent allowable, the examiner doesn’t have to read the
rest. The applicant can still request to have more claims
evaluated. The point was to improve efficiency and quality by
helping the examiner do a better job.” Commissioner Doll
acknowledged the resistance. “We received over 600 comments,
the vast majority of which were negative. We’re working to
find a compromise.”
The agency also has a prodigious Web site — http://www.uspto.gov/. A
minimum of clicks connects users via compact drop-down menus
to hundreds of usefully organized sections and documents. It
is also vital for performing patent searches,
“Our Web site is very user-friendly,” said Doll.
“It gives inventors the opportunity to search through our
database, see what has been issued in the past, learn what a
typical patent layout looks like, and come up with ideas on
how to fine-tune your own words and illustrations.”
(Google.com is also a prime site for performing due diligence
with your patent search, says Robins; with the right key words
and phrases, it will lead to you to all 7 million patents
issued by the U.S.)
Several must-read sections for first-time
applicants include “Proposed Rule Changes to Focus the Patent
Process in the 21st Century” and the Manual of Patent
Examination Procedure, www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf.
The site index is your best friend for pinpointing individual
topics. Commissioner Doll also directs applicants to the
Inventors Assistance Center at www.uspto.gov/web/offices/pac/dapp/pacmain.html,
a service that puts you in touch with a “real human being.”
Other good starting points: an Inventors Resources page with
faq’s and downloadable brochures, and a Help page that offers
support by e-mail for certain questions. For the lighter side
of patenting, if there is one, check out “Mumbo Jumbo Gumbo,”
a very humorous kids’ feature accessible from the Guides
page.
Stay tuned for the PTO’s announcement of the
Peer to Patent Project/Community Patent Review, a pilot
program in collaboration with the New York Law School’s
Institute for Information Law & Policy, headed by
Professor of Law Beth Noveck. The lead sponsors — General
Electric, Hewlett-Packard, IBM, Microsoft and Red Hat — will
allow some of their patent applications to be reviewed by
experts in the scientific community who, perhaps moreso than
examiners, may be able to identify relevant prior art and
thereby improve issued patents.
“Some of the leading companies recognize the
importance of providing information to the Patent Office to
yield better quality patents,” said Dr. Noveck. “But smaller
entities, especially, stand to benefit from the help provided
by the public in searching for prior art. The better the
research, the stronger the resulting patent will be, leading
potentially to higher licensing revenues and lower litigation
costs.” Project Manager Rahan Uddin said custom-designed
Web-based software will allow the public to research, find and
annotate the prior art before submitting it to the PTO. “It
builds off of existing technology that fosters online
collaboration and lets us create communities engaged in the
review of patent applications.”
**********************************************************************************
In patenting, one person’s divine inspiration is
another’s bargaining chip. A prominent trend today, says
Robins, is strategic patenting, in which companies use patents
as a business tool. “In an infringement case, the settlement
isn’t always about money,” he says; rather, the two sides may
opt for a reciprocal cross-licensing agreement. Pre-emptive
patenting is also coming into the mainstream, he said. This is
the filing of patents “not because you feel you’ll use it
directly or exchange it with anyone else, but just to block
others, to deny everyone else use of the idea.” According to
Jules J. Jelinek, a consulting engineer in San Francisco with
expertise in intellectual property and patent analysis,
another kind of strategic patenting happens “where a company
buys or licenses exclusive rights to an invention to protect
their own product line, but the company never makes a single
one and the patent holder ends up with no money for his
troubles.” Robins also notes that using intellectual property
this way is considered as much a tool as advertising and
branding. Then there’s what he calls legal blackmail — an
infringement lawsuit in which the plaintiff knows they’re not
going to win but they sue “to besmirch their opponent’s name,
to make them concerned, to divert their attention from running
their business.”
Some of the most incisive reporting on trends
and cutting-edge issues in patenting comes from a familiar
source: IEEE Spectrum. For an especially polished
overview of recent debates and suggested remedies, read Patent
Prescription (December 2004). Or just type patent in the
search field and sit back for one good read after another.
IEEE-USA keeps members on top of the issues and
represents their concerns with position statements on proposed
IP legislation, rule changes at the PTO and occasional
controversies. To access these statements, go to www.ieeeusa.org/policy/positions/#ip,
where you’ll see such titles as Reverse Engineering and
Invention Rights for Employees (http://www.ieeeusa.org/policy/issues/inventorrights/default.asp).
The Intellectual Property Committee also serves
as the voice of IEEE-USA members by providing testimony to,
and communicating with, the U.S. Congress, and monitoring
legislation. Its Web page — http://www.ieeeusa.org/volunteers/committees/ipc/index.html—
has an abundant list of links to government sites (U.S.
Copyright Office; the House Judiciary Subcommittee on Courts,
the Internet and Intellectual Property; and the Federal
Register, among many others.
Just a few more Web sites might be pivotal to
your search for patenting wisdom. They are:
Robin Peress is a freelance writer in
Manhattan, N.Y. Comments may be submitted to todaysengineer@ieee.org.
| 
E-mail this page
