Court Says USPTO Can Change Patent Rules 83
bizwriter writes "Many large companies have been closely monitoring the Tafas v. Doll lawsuit over whether the US Patent and Trademark Office has the power to change the patent application process in significant ways, so as to restrict the scope of patents and the chances of getting one. The US Court of Appeals for the Federal Circuit has finally spoken, with a split court ruling that the USPTO does have the necessary authority. The case stems from a court challenge to four new rules the USPTO put in place in 2007. A number of tech companies including Microsoft, IBM, Oracle, Apple, and Intel have supported the rule changes, which would strengthen their positions and make it more difficult for small companies to create, protect, and bring to market disruptive technology. These companies didn't have it all their way, as the appeals court said that one of the four rules conflicts with existing patent law and sent the other three back to a lower court for further review. If the decision is sustained by a full review of all 12 Federal Circuit appeals judges, it could be a blow to biotech and pharmaceutical companies, which depend on being able to obtain large numbers of patents. Expect further appeals on this one, and for the only beneficiaries in the short run to be the lawyers."
Details on the rules (Score:5, Informative)
A somewhat better description of the rules can be found here. [ip-watch.org]
They include things like limiting the number of claims to 25 (some patents include hundreds of claims, I believe; these are the heart of the patent, as they define what exactly might be infringed); and setting a limit on the number of requests for reexamination (I think that currently, you can just refile indefinitely, and that many applicants do just that, hoping that eventually an examiner will give up and accept their patent application).
Re:Details on the rules (Score:5, Informative)
A somewhat better description of the rules can be found here. [ip-watch.org]
They include things like limiting the number of claims to 25 (some patents include hundreds of claims, I believe; these are the heart of the patent, as they define what exactly might be infringed); and setting a limit on the number of requests for reexamination (I think that currently, you can just refile indefinitely, and that many applicants do just that, hoping that eventually an examiner will give up and accept their patent application).
For the former, it's not as big an issue in high technology, but it's a much bigger issue in pharmaceuticals and biotechnology, where a 100-claim set is actually reasonable, due to the numbers of species or minor changes to a drug that they're claiming as dependent claims.
For the latter, one slight note I'd add is that the requests for continuing examination still have to move prosecution along... You can't just keep saying "my invention is A", have the examiner say "A is not novel", and file a continuation saying "my invention is A", unless you want it rubber stamped. Instead, it's more about narrowing the claims until you get to "Okay, my invention is A and B, when you use it to do C and D".
Re:Bias against big firms? (Score:5, Informative)
Okay, I'm a bona fide registered patent attorney, and I actually litigate against trolls. It is maddening to see them make some of their more credibility-stretching arguments to a court. Bad patents are my great nemesis. But the truth is, these were very, very bad rules, and everybody knew it. I know it's popular to knock the patent office on Slashdot, and yes, some bad patents have issued (I've litigated against some of them), but these rules are not the answer.
The first problem is the limit on continuations, which was flagrantly in violation of statute. That's the one that got struck down, and without it, the others are not so meaningful. Actually, leaving continuations while limiting RCEs actually just creates MORE delay. So this doesn't fix the pendency problem. The second problem is an inventor often doesn't know what the patentable part of his invention is when he first files. I always tell my clients to give me very, very detailed disclosures, because chances are what you think is your invention turns out to not be patentable, or turns out to be only one of several patentable aspects of your disclosure. So most of my applications will have fewer than the 5/25 claim limit, but sometimes you need more flexibility, because you don't know which patents are going to survive examination, and it's much better to just cancel a claim and fall back on an existing alternative than to have to amend a claim.
As for anti-business bias, I write patents for both really big companies you definitely know (and quite possibly hate) and little individual inventors. Guess who loses under these rules? The little guy, every time. This basically shuts down the ability of any little guys to take an idea to market and make money, because the ONLY competitive advantage they have against the big guys is their patents. This means that little guys will never disclose their ideas to big guys, because in most cases, your patent is the only protection you have against them just taking your idea and doing what they want with it.
So yes, there are bad patents. Yes, there are trolls. Yes, I despise them as much as you do. In fact, I wrote a comment for the law review when I was in law school about the problem of patent trolls. My analysis was that the only way to shut down trolls without stifling legitimate inventors was to strengthen the obviousness standard, and specifically, to let go of the rigid adherence to the "Teaching, Suggestion, or Motivation" test. Just when I was ready to submit it for publication, the Supreme Court came out with KSR and adopted my exact reasoning (if only I'd sent them my paper, maybe I could have claimed credit). These rules do nothing to further innovation. They were the product of inept bureaucrats (including a director of the USPTO who was not even statutorily qualified for the position) trying desperately to pin their own failures on the patent bar by making it look like so-called "abuse of continuations" was the real problem. The truth is, only a very small percentage of applicants are doing anything remotely abusive with continuation practice. The real problem was Dudas and his cronies at the USPTO. These guys were appointed as political payoff, and they ran the place like payoff political appointees (i.e., ineptly). They railroaded these rules through, totally ignoring comments and concerns from the patent bar, applied them retroactively to existing applications, ignored statute, and then presented them in a sham unveiling where they solicited questions from participants, then ignored all of the questions submitted and at the end, instead answered a bunch of pre-canned softball questions they had carefully crafted themselves (hint to inept bureaucrats: it looks suspicious when you have power point slides for supposedly answering questions in real time). The whole thing was shady, abusive, and dishonest.
Re:Which? (Score:3, Informative)
There is only one federal circuit. There's also 11 other circuits (numbered 1-11), plus the DC circuit.
Re:OT: Your sig (Score:5, Informative)
Re:Bias against big firms? (Score:4, Informative)
Confirmation bias. We only ever hear about plane crashes, too.
Possibly, but in both large tech companies I have worked for (one of which used to be well known for huge, world changing inventions), I have been in a position to monitor patent submissions.
They're largely crap. My present company is the worst offender (but fortunately patents only in self defense, so far) but both produce a tremendous amount of bullshit patents.
It's very rare that I see an idea novel enough and essential enough to warrant a patent. Usually I see an attempt to mine the area, harming only people for whom a single lawsuit could bankrupt them, but ignoring equal or larger predators because it'd be too expensive to bother. This is to say, they exist for anti-competitive purposes.
Don't get me wrong, I know that the verbage in the summary about "small businesses" is code for "patent trolls", and I'm not trying to make the case that abuse is rampant only amongst big businesses. The entire system is not serving the intended purpose anymore, it's being used to prevent, restrict or channel innovation, to the detriment of the society which created the system.