Great post on why the patent system in the US is broken | John V. Petersen

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You can read the post at SFGate. It’s a great interview with a Google attorney who lays out in pretty simple terms why the patent system in the US is broken. The comments are also worth a read. Some of them are quite insightful.

In a nutshell, to be patentable, the given subject matter must cross two thresholds:

  1. The subject matter must be novel
  2. It must be non-obvious to those who are skilled in the art.

Ideas and discoveries are not patentable. Inventions are patentable. i.e. things that do something. Great examples are the microprocessor, the internal combustion engine, the  machine that produces Slurpees, etc. The big question is whether software is patentable. It’s settled that software is copyrightable in that it can be expressed in document form. But as we know as professionals in this business, software, like it’s machine and hardware counterparts, actually does something – whether it is controlling hardware, carrying out a business process, etc. A software process can be described in a patent claim just as the processes for how a microprocessor works can be documented (in reality, multiple patents will cover complex things like a microprocessor, combustion engine, etc.)

A good example of a software patent was FoxPro’s Rushmore Technology which, simply stated, was a data access method that used indexes to optimize data retrieval. A bad example of a software patent was 1-Click Buying. Setting aside the obviousness problem here, let’s consider whether something like 1 Click Buying was novel. By novel, does something build on prior art? I think it is safe to say that 1 Click Buying most certainly built on prior art that Apple didn’t own. When you consider how big Apple has become, don’t just think of the iPod, iPhone, IPad, etc. In 2000, Amazon licensed 1-Click from Apple. How much in licensing and royalty fees do you reckon Apple has cashed in on?

I agree with the Google attorney, the system is broken and has been broken for quite some time.  That’s not to say that software cannot and should not be patentable. I contend that software is just as patentable as anything else that has the potential for being patentable subject matter. The notions of novelty and non-obviousness seem to have been discarded by the USPTO. Some claim that it is very difficult to discern whether something is actually building on prior art. Peraps if claims where drawn up in a more standardized way, it would be easier. But you see, this is where the lawyers come in. The goal is always to draw up claims that are broad and vague. The broder the claims, the more your patent covers – something that patent trolls strive for. The gate keeper to protect the system is supposed to be the USPTO. They have been totally asleep at the wheel. It’s also been the court system that has been asleep at the wheel. Often, the USPTO will actually get it right – only to be reversed by the federal courts.

Now…before you think this is something that is just limited to technology, think again. Do you remember those orange trashbags that you could fill with leaves? They had a picture of a pumpkin stamped on them. Was that novel? I don’t believe so as it most definitely built on prior art. Was it non-obvious?  I thnk it is safe to say that in reality, the bags were obvious. The USPTO rejected the patents. The Circuit Court however, in 1999, reversed the USPTO. The Dembiczak and Zinbarg case is a good one to read because it is instructive on the gap that existed between the law and common sense. The USPTO was reversed on technical grounds based on evidence that was not in the record – but nevertheless could have been. This was a case where there the narrow teaching/suggestion/motivation standard for obviousness under 35 U.S.C. §103 was applied. Fortunately, in 2007, in the KSR v. Teleflex decision, the SCOTUS finally brought in notions of common sense. IMO, had the KSR decision been around when 1 Click was applied for, the patent would have been rejected.

Things should get better, but it would appear they are not because of business reality. The fact is, companies with a lot of money have the threat of litigation on their side – and that causes many more other companies to cave in. The Google attorney interviewed commented, as I have in the past that the only way you get to a definitive word is to litigate and get a court decision as to what is novel and non-obvious. The difficulity is that these are mixed questions of law and fact.

Bottom line, it’s going to be a while before things actually get better in the patent landscape.