Just Write

by MICHAEL MONTGOMERY

The U.S. patent sys­tem has fos­tered incred­i­ble advances in tech­nol­ogy and sus­tained inno­va­tion. Changes to that sys­tem are invari­ably con­tro­ver­sial, as is the cur­rent Patent Reform Act of 2011, now titled the “Amer­ica Invents Act.” This bill is the fourth suc­ces­sive con­gres­sional pro­posal to make sub­stan­tive changes to the patent sys­tem, and passed in the Sen­ate on March 8, 2011 by an over­whelm­ing 95–5 vote. A cor­re­spond­ing bill with a few changes was intro­duced in the House of Rep­re­sen­ta­tives on March 30, 2011.

Who’s On First? The first major change involves switch­ing from the cur­rent sys­tem, called “first to invent” which awards a patent to the first inven­tor, to a sys­tem called “first to file” which grants a patent to the first inven­tor who files a patent appli­ca­tion. To attain pri­or­ity under the pro­posed law, an inven­tor will need to file their patent appli­ca­tion first, before any­one else files or pub­licly dis­closes the sub­ject mat­ter. A one-​year excep­tion or “grace period” will apply to the inventor’s own pub­li­ca­tions, or pub­li­ca­tions derived from them, within a year prior to the application’s effec­tive fil­ing date. If an inven­tor is not the first to file their patent appli­ca­tion, they may use a new “deriva­tion pro­ceed­ing” at the U.S. Patent & Trade­mark Office (USPTO) to argue the first appli­ca­tion was derived from their orig­i­nal work.

No, I Was First: A sec­ond change allows a per­son accused of patent infringe­ment to argue they used the inven­tion first, though they didn’t apply for a patent and may not have told any­one. The Sen­ate bill lim­its this “prior user” defense to busi­ness method patents, while the House bill allows it against all patents.

Is That Your Final Answer? The pro­posed law includes three mech­a­nisms for chal­leng­ing a patent: either before or after grant of the patent, and with or with­out the par­tic­i­pa­tion of the paten­tee. The “third-​party requested post-​grant review” is sim­i­lar to the cur­rent reex­am­i­na­tion pro­ce­dure, chal­leng­ing the valid­ity of a patent within nine months after it is granted. The House bill changes this time frame to 12 months.

An “inter partes post-​grant review” is a con­test between the paten­tee and a chal­lenger that may begin more than nine months after issuance, eval­u­at­ing nov­elty and obvi­ous­ness com­pared to prior pub­li­ca­tions. The more con­tro­ver­sial mea­sure is called a “pre-​issuance third-​party sub­mis­sion,” in which any­one can review a pub­lished patent appli­ca­tion within six months after pub­li­ca­tion and send the USPTO a prior pub­li­ca­tion with a descrip­tion of its rel­e­vance. Chal­lengers may be pre­vented in later law­suits from request­ing re-​examination of the patent, or object­ing that the patent is invalid.

Read the Label: Prod­ucts often indi­cate patent num­bers, and lawyers have recently pur­sued law­suits alleg­ing that such “patent mark­ing” includes expired or unre­lated patents. The bills will end these suits, except if brought by the U.S. gov­ern­ment or a com­peti­tor who can prove com­pet­i­tive injury.

Do Your Best: Patent appli­ca­tions under the pro­posed law are still required to describe the “best mode” to accom­plish the inven­tion. How­ever, the bills would remove fail­ure to do so from being used to inval­i­date an issued patent.

Com­pany Patents: Many employ­ers already pre­pare and file patent appli­ca­tions on behalf of their employ­ees, who often have assigned (or are oblig­ated to assign) inven­tions to the com­pany. The pro­posed law makes the process of fil­ing these appli­ca­tions easier.

Phone Home: Within a year, the pro­posed law man­dates reports by the USPTO on the dura­tion of the post-​grant reviews, on prior user rights in selected indus­tri­al­ized coun­tries, and by the Small Busi­ness Admin­is­tra­tion on the impact of the first-​to-​file sys­tem on small businesses.

And Many More: Under the bills, tax strate­gies will not be patentable busi­ness meth­ods or inven­tions, though the House bill excepts tax prepa­ra­tion soft­ware. The pro­posed law would also order the USPTO to pri­or­i­tize exam­i­na­tion for “tech­nolo­gies impor­tant to Amer­i­can com­pet­i­tive­ness,” such as “green tech­nolo­gies.” The House bill adds sev­eral pro­vi­sions for auto­matic and dis­cre­tionary pauses to patent infringe­ment law­suits. And the bills estab­lish addi­tional USPTO offices out­side Wash­ing­ton, D.C.

Fol­low the Money: The USPTO is the only fed­eral agency that makes a profit, because the fees they take in from inven­tors and paten­tees exceed their oper­at­ing costs. How­ever, for a long time Con­gress has had a habit of tak­ing some of that money and dis­trib­ut­ing it to var­i­ous pet projects. The pro­posed law would end this prac­tice, cre­at­ing a USPTO Pub­lic Enter­prise Fund and giv­ing the USPTO author­ity to set or adjust its fees to recover the esti­mated costs of its activ­i­ties. Inscrutably, the House bill also grants the USPTO “fee set­ting author­ity” but con­tin­ues to state spe­cific fees.

An Ele­phant Named ‘Back­log’: Arguably the largest prob­lem with the patent sys­tem for at least a decade has been the ever-​growing back­log of patent appli­ca­tions wait­ing in the USPTO, a prob­lem described by one offi­cial as “deficit exam­in­ing.” The big ques­tion of the Amer­ica Invents Act is whether it will aid, or impair, efforts to reduce this backlog.

Michael W. Mont­gomery is a reg­is­tered patent attor­ney at the law firm of Christo­pher & Weis­berg, P.A., an intel­lec­tual prop­erty bou­tique head­quar­tered in Fort Laud­erdale. His prac­tice focuses on build­ing and pro­tect­ing intel­lec­tual prop­erty port­fo­lios, lit­i­ga­tion and client coun­sel­ing in intel­lec­tual prop­erty and tech­nol­ogy matters.

copy­right Mont­gomery 2011

In talk­ing with the guys at The Con­ver­sa­tion, I men­tioned the U.S. Patent & Trade­mark Office‘s project for crowd-​sourcing eval­u­a­tions of soft­ware patent appli­ca­tions, called Peer-​to-​Patent.

Dan and Dave expressed some inter­est in the peer-​to-​patent pro­gram:

“[Never heard of it], but it sounds awe­some.”

–Dave Nan­ian

Peer-​to-​Patent

There is a guide on how it works, and here is their attempt at mar­ket­ing copy:

“Peer-​to-​Patent opens the patent exam­i­na­tion process to pub­lic par­tic­i­pa­tion for the first time. Become part of this his­toric pro­gram. Help the USPTO find the infor­ma­tion rel­e­vant to assess­ing the claims of pend­ing patent appli­ca­tions. Become a com­mu­nity reviewer and improve the qual­ity of patents.”

…hia­tus

The project is not cur­rently run­ning, and no “active patent appli­ca­tions” are being eval­u­ated:

U.S. Peer-​to-​Patent in Evaluation:

“The U.S.Patent and Trade­mark Office and New York Law School are presently prepar­ing an eval­u­a­tion of the two-​year Peer-​to-​Patent U.S. pilot. Results of that eval­u­a­tion should be com­plete by the end of the year.

How­ever, David Kap­pos (the cur­rent leader at the Patent & Trade­mark Office) was involved in design­ing it, and has recently (Fri­day) expressed inter­est in con­tin­u­ing it.

Post-​issue

Also, there is a related grass-​roots effort coor­di­nated by the cen­ter for patent inno­va­tions at the New York Law School, called Post-​issue. Rather than eval­u­at­ing pend­ing patent appli­ca­tions, Post-​issue attempts to gather sim­i­lar com­mu­nity input on cer­tain issued patents:

“Post-​Issue Peer to Patent, or sim­ply Post-​Issue, seeks to improve the qual­ity of patents by pro­vid­ing a frame­work for fer­ret­ing out weak, non-​meritorious patent claims in patents that have issued.

Har­ness­ing the power of a com­mu­nity of peer review­ers cre­ated through Peer to Patent (www​.peer​topatent​.org), Post-​Issue elic­its pre­vi­ously uniden­ti­fied prior art that may inval­i­date or nar­row the claims of issued patents. In so doing Post-​Issue pro­vides greater free­dom to inno­vate, removes uncer­tainty from the patent sys­tem, and pro­vides greater cer­tainty as to the value of issued patents.

Whether for-​profit or non-​profit, whether for respond­ing to demand let­ters or lit­i­ga­tion or for improv­ing a party’s own patents, all par­ties are invited to request post­ing of patents to Post-​Issue for review.”

Cau­tion:

Cal­i­brate your expec­ta­tions, because par­tic­i­pat­ing in this kind of pro­gram takes a lot more effort than your aver­age com­ment on a blog (and prob­a­bly more than your aver­age blog post!)

If the ser­vice is suc­cess­ful, it just might be worth the effort.

Pod­casts are an amaz­ing con­cept — but there are thou­sands of them, and good ones can be hard to find. One guy who con­sis­tently records excel­lent work is “your inter­net pal,” Dan Ben­jamin.

I met Dan out­side FOWA Miami. His first ques­tion was “What do you think of the iPad?” which led to an inter­est­ing con­ver­sa­tion about the future of mobile com­put­ing, pub­lish­ing, con­tent cre­ation con­trasted with con­sump­tion, etc.

He later asked me “How much do you know about patent law and the stuff Apple is up to?”

“Dan Ben­jamin brings together geeks and attor­neys to talk about the inter­sec­tion of patents and soft­ware devel­op­ment, and spec­u­late about Apple’s moti­va­tions and goals regard­ing their recent Android-​inspired law­suit against HTC.“

So I was a guest speaker on The Con­ver­sa­tion, a pod­cast with 30–40 thou­sand lis­ten­ers. The episode title is “Patent Sch­ma­tent,” and we talked about:

• soft­ware patents and copyrights
• tech­no­log­i­cal inno­va­tion dur­ing the Mid­dle Ages
• “why have a patent system?”
• Apple v. HTC
• “what are they think­ing?”

It seemed to go well, and I had a lot of fun talk­ing with Dan, Dave and Wil. Hope to record more pod­casts, one of these days.

Pod­cast: “Patent Sch­ma­tent“

Re-​Shuffle:

Things are shak­ing up around here–this online jour­nal¹ should look quite a bit dif­fer­ent, and the re-​shuffling will continue.

I’m cur­rently start­ing with the Ele­gant Grunge theme, and we’ll see where it goes.

Re-​Commitment:

Project 52 was tech­ni­cally a fail­ure, already. How­ever, “he wins who gets up more times than he is knocked down.”

750​words​.com:

I love the con­cept of 750​words​.com, and am excited to get back into the habit of writ­ing a journal.

A first con­cern is pri­vacy. All entries of all authors are stored (in plain­text) in a cen­tral data­base. I’d pre­fer they were stored locally, and any sta­tis­tics stored in the database.

Sec­ond, in addi­tion to Mark­down, I wish it could use Tex­tile:
//en.wikipedia.org/wiki/Textile_%28markup_language%29
//​tex​tile​.thresh​old​state​.com/ (cur­rent ver­sion)
//​tex​tism​.com/​t​o​o​l​s​/​t​e​x​t​i​le/ (orig­i­nal version)

Big Free­bie from Adobe:

//​www​.adobe​.com/​t​y​p​e​/​b​r​o​w​s​e​r​/​l​a​n​d​i​n​g​/​g​a​r​a​m​o​n​d​/​g​a​r​a​m​o​n​d​.​h​tml

¹ I pre­fer not to use that “b” word. Dread­ful. By the way, if “blog” is a con­trac­tion of “web log,” shouldn’t it have an ini­tial apos­tro­phe, as in ‘blog?