decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


To read comments to this article, go here
Reports from the USPTO Meeting - Updated
Saturday, February 18 2006 @ 12:44 PM EST

Groklaw sent several people to the February 16th meeting at the USPTO on the prior art database and community review patent projects. Here are their reports, which I have not edited at all. I want you to enjoy them the same way I did, as if we were there, experiencing it without editorialization.

Bruce Perens made a statement at the meeting at the end, when they asked for ideas, so I asked him if I could publish his statement, and he has graciously agreed. You will find it at the end.

UPDATE: I have added a fourth report, from Chuck Moss.

*******************************

1. ElvishArtisan's report:

I arrived at the USPTO Open Source Meeting right on the dot of 10 AM. I'd estimate that the room was about 90% full, with one- or two-dozen empty seats out of a seating capacity of around 250. About half of those attending looked to be “suits”, whereas the other half were dressed more casually.

The meeting was opened by Mr. Jack Harvey, Director of the USPTO's Technology Center 2100. One of Mr. Harvey's very first statements after welcoming the attendees was a reminder that the topic of the meeting did not include the issue of software patents per se, but rather on ways in which the USPTO and the FOSS community could work together to improve the quality of software patents issued. This point was reiterated several times by other participants from the USPTO. It's clear that the folks at the Patent Office have gotten the message that the FOSS community is unhappy about software patents! Mr. Harvey's role through the rest of the meeting was primarily that of 'majordomo', introducing the various panel speakers. I got the sense as the meeting went on that Mr. Harvey has been one of the prime advocates within the USPTO for initiating the discussions with the FOSS community.

Next up was Mr. John Doll, the Commissioner of Patents. He spoke only briefly, his two major points being that patent quality was the “number one focus” of the Office and asking the help of the FOSS community to help with this goal.

Next came Mr. Manny Schecter of International Business Machines (IBM). Mr. Schecter started by taking an informal survey of the meeting participants, asking for a show of hands from those who were there “because they are involved with or representing open source” and then from those who were there “in a traditional IP role” I'd say that perhaps 15% of the attendees claimed some affiliation with Open Source, while slightly more (20% ?) claimed a “general IP” role.

Mr. Schecter then reviewed IBM's goals in being involved with the proposed FOSS/USPTO initiatives, those goals being:

Ensure patent quality
Be as inclusive as possible
Help drive patent reform

Mr. Schecter (and many subsequent speakers) referenced an earlier meeting between USPTO and FOSS representatives that took place on December 9, 2005. Apparently, not many people on the FOSS side were aware of this event (although it was open to the public). The purpose of this meeting was to guage the interest of the FOSS community in some sort of cooperative effort with the PTO, and to have a discussion about what could be done. Today's meeting was a “follow-up” to that one, and was called to set a framework for further action.

Next came Mr. Jay Lucas, the Acting Deputy Commissioner of Patent Quality for the USPTO. Mr. Lucas basically put forward a 'vision statement', saying that the overall goal of the two groups (USPTO and FOSS community) were broadly similar, being the sharing and dissemination of ideas, and that it was logical that the two groups should help each other.

Next came Mr. Tariq Hafiz, a patent examiner who gave a fascinating and illuminating account of the day-to-day life of an examiner. The basic steps involved in processing a patent application are:

Review and understand the application
Define and execute a search for prior art
Compose and send an “office action”
Await a response
Repeat the above as necessary
An “office action” can be either an approval of a patent, or an objection to the applicant that a patent cannot be granted for some reason (“overbroad”, “too vague”, etc). If an objection is issued, the applicant then gets a chance to remedy whatever it is that made the examiner object. The process then repeats, until either a patent is granted or the application is finally denied or abandoned.

Mr. Hafiz focused particularly on the “define and execute a search” portion of the process, which itself can be broken down into the following steps:

Build a search strategy
Execute the search
Review and understand the results
Select the best prior art

The most important of these steps is often the first, “build a search strategy”. Mr. Hafiz classified the sources of data used for this search into three categories: “structured”, “semi-structured” and “unstructured”. “Structured” sources refer to databases maintained by the USPTO itself (the EAST/DIALOG system), those maintained by foreign patent organizations (primarily the EU and Japan) and, most surprisingly for me, a database maintained by IBM listing their prior art. Searches of the Internet fell into the “unstructured” category, meaning that the data was hard to get hold of without having to deal with a large amount of “noise” in the process.

One aspect of the life of a patent examiner that came into sharp relief through all of this was the extreme premium placed on time. The USPTO has a huge backlog of pending applications and limited resources, so the amount of time an examiner spends on each application is carefully tracked, and measures (described by one participant as possibly “punitive”) taken against those examiners who don't live up to the norm. What all this means is that any new database of prior art must be organized in such a way that examiners can easily access and navigate it – they just don't have time to conduct searches involving unstructured, “noisy” sources.

Next up was Mr. Kees Cook, Senior Network Administrator for OSDL. Most of Mr. Cook's presentation was a review of the December 6th meeting's conclusions. These were:

Categorization and searching are the primary problems
We need to define what qualifies as “prior art”?
We need to develop some sort of “social tagging” system (as with e.g. flickr.com)
There are three category “layers” in software patents: system, component and algorithmic
We need to better understand the USPTO's requirements
Why not use existing prior art?
Why can't representatives from the USPTO directly participate on public mailing lists?
We need to develop a central “tagging” tool.
More input is needed from other, “traditional” software suppliers (e.g. Oracle, Microsoft).

Mr. Cook also mentioned that it is important to get a commitment from the USPTO that, were a FOSS-based search system developed, it would actually be used by the examiners.

Next up was Mr. Ross Turk from SourceForge. Mr. Turk mentioned that this initiative came at a good time for SF, as they are in the middle of overhauling many of their back-end systems so as to provide a better user interface as well as improved sorting and filtering capabilities, all of which would be aids in supporting a prior art database. An attendee asked if non SourceForge-hosted projects could be included in this initiative too. Mr. Cook's take on that was that some sort of “federated” system would eventually emerge that would embrace all FOSS sites and repositories wishing to participate.

The meeting then turned to the suggestion for a “Community Patent Review” system, whereby patent applications could essentially be “peer reviewed” by the public before being granted. The first speaker on this topic was Mr. Marc Ehrlich, an attorney with the Patent Portfolio Management/Intellectual Property Licensing department at IBM. Mr Ehrlich had a number of slides showing how such an online system might actually look in practice. His proposed system consisted of three basic parts:

Access – Make it easier to access applications. Add a subscription-based alert system to notify potential reviewers when a new application in their area of expertise becomes available.

Review – The basic platform for public review. Components include education, indexing, links, discussion, and some sort of reputation scoring system so that examiners would have some idea of the track record of folks doing the public review (similar to E-Bay's scoring system).

Feedback – Find a simpler way to submit data to examiners.

Mr. Ehrlich determined that the system must also support easy ways to identify the responder (the one submitting the data to the examiner), make structured comments (in addition to just indicating any prior art found) and a way to determine if the examiner in a given case actually used the data that was provided. He then identified some of the potential challenges facing the implementation of this kind of system, the main ones being:

Flooding – the danger of the USPTO being overwhelmed by submissions from the public

Gaming – bad actors using the system to intentionally obstruct otherwise valid applications

Willful infringement dangers – overcoming the reluctance many developers feel about looking at any patent data whatever for fear of becoming liable to later charges of “wilful infringment” against a patent (more on this topic later)

At this point, one of this meeting attendees, an actual patent examiner, made the admission that he sometimes did use Slashdot in trying to locate prior art, but that it was difficult and time-consuming due to “all the anti-patent noise”.

Next up was Professor Beth Noveck of the New York Law School, the organizer of the Peer to Patent Project, an effort to design and deploy a pilot system to test the idea of community patent review. The PPP is actually part of a larger effort known as the Democracy Design Workshop. The basic idea of the Design Workshop is that current government structures utilize “bureaucratic expertise based on outdated technological assumptions”, meaning that they cannot effectively capitalize on the benefits that modern communications technologies offer. Professor Noveck brought up what was perhaps one of the most important reminders of the entire meeting, that being that the constitutional goal of the patent system was ultimately to spread information, not restrict it's dissemination, and that any system must put those priorities first.

Professor Noveck broke down the basic problem elements involved in designing a community patent review system as follows:

Identify those with expertise to do the reviews
Managing the information provided (e.g. don't flood the examiners!)
Providing incentive for people to do reviews
Adapting the information provided to the requirements of the examination process

Professor Noveck is also in the course of organizing a series of meetings geared toward designing and implementing a pilot community patent review system towards the end of 2006, a goal which she described as “ambitious, but doable”. Further information can be found at the Peer to Patent web site.

The final panelist to speak was Mr. Rob Clark, Deputy Director of the Office of Patent Legal Administration for the USPTO. Mr. Clark's job is to actually draft the rules which govern the day-to-day operation of the USPTO, based on the relevant Federal statutes and governmental procedures. He described in some detail a method in place today by which members of the public can submit prior art for consideration in a patent application. This so-called “Rule 99” procedure has several limitations: material submitted can only include actual prior art –i.e. no “commentary” is allowed; and only “published” data is permitted (“published” in this context means any material that was “reasonably available” to the public –e.g. material from a public web site would be acceptable). Additionally, the submission must be within two months of the original publication of the patent application, and a fee of $180 US is required with the submission. Many of these limits are due to statutory requirements, specifically 35USC 122(c).

Mr. Clark mentioned that some of the drawbacks of this process are:

Some patent apps opt-out of the “publishing” requirement, so the public would have no way of knowing that these are upcoming.

Fear of would-be reviewers to look at patent data, lest they become liable to later damages for “willful infringement”.

There was mention that some of the patent reform legislation currently being debated in Congress would address both of these issues.

Next, the floor was thrown open to any who might have suggestions for future initiatives. At this point Mr. Bruce Perens, one of the founders of the Open Source Initiative got up and delivered a short prepared speech detailing what he felt were four critical areas in patent law needing attention with regard to FOSS. Mr. Perens was quite eloquent, so I will try to quote him where possible here:

PERJURY A party who files a patent application swears to the truth of the claims made within it, similarly to how a person testifying in court swears to tell “the truth, the whole truth and nothing but the truth”. Mr. Perens claimed that after speaking to “many people” at the USPTO, he was able to locate only one person who knew of an actual case where an applicant was prosecuted for perjury after having been discovered making willfully false statements in a patent application, and that this case took place in – 1974. As a result of this lack of enforcement, bad actors have “no sense of peril” when making knowingly false claims in an application, knowing that the worst possible outcome is a simple denial of the application. There are those who are “eavesdropping on open source” and filing spurious patent applications accordingly, thus seeking effectively to kill the original FOSS projects. Thus, “perjury creates intellectual poverty”, and Mr. Perens insisted that the “peril should be real” to those committing perjury, demanding that perjurers undergo “active prosecution”.

TRIVIALITY Mr. Perens suggested the formation of 'patent juries' to test an idea for its obviousness prior to its publication, the idea being to present the basic problem to a jury of people competent in the area in question. If this jury comes up with the “invention” described in the application, it is then ipso facto held to be obvious and hence not patentable.

PENALTY FOR LOOKING The danger of incurring damages for “willful infringement” by mere examination of the patent database has led many lawyers to counsel engineers to simply “not look”, thus defeating the primary purpose of having a patent system in the first place. Mr. Perens cited this as an urgent need to “create bright lines for engineers”, defining the circumstances under which they could safely examine the patent databases without potentially getting into the cross-hairs of a lawsuit.

LITIGATION Mr. Perens stated the average cost of defending a patent lawsuit as being between three and five million dollars US, thus meaning that many FOSS projects can be and have been shut down by the mere filing of a lawsuit by a large commercial firm. Some way to allow an individual to fight these actions is urgently required.

Finally, Mr Perens reminded everyone that, the limitations to the agenda for today's meeting notwithstanding, Patent Quality is only a “little piece” of the overall problem. The real problem is the entire idea of software being patentable in the first place, and work needs to be done with Congress to get this particular provision of the patent law changed.

Finally, Ms. Diane Peters from the OSDL closed the meeting with the observation that this was “just the beginning”, and that abolition of software patents should remain the overriding goal for the FOSS community.

Overall, a very educational day. My overall impression was that the folks at the USPTO genuinely want to work to improve patent quality and help FOSS, but are very fearful of doing anything that would increase their already huge workload. I think Mr. Peren's final admonition was a good one – working to improve patent quality is a worthwhile tactical goal, but the strategic plan still needs to be to get software taken out of the patent mix altogether.

*********************************

2. Open Source 2006 Meeting - U.S. Patent & Trademark Office, Alexandria, VA, February 16, 2006 -- Writeup by juliac

Disclaimer: The meeting opened with the announcement that audio recording would not be allowed. My notes are sketchy, I was writing as fast as I could, but it wasn't fast enough. So I'm sorry, but I can't swear to the completeness or correctness of what follows. (OS here stands for Open Source; USPTO and PTO used interchangeably. Stuff in []square brackets is asides to you or otherwise not something that was said in the meeting.)

Participants [I think I missed at least one person; there were no handouts at all]

Diane Peters, General Counsel, OSDL
John Doll, Commissioner, USPTO
Manny Schecter, Intellectual Property Attorney at IBM
Jay Lucas, Deputy Commissioner for Patent Policy, USPTO
Robert Clark, Office of Patent Legal Administration, USPTO
Kees Cook, Senior Network Administrator, OSDL; also with kernel.org
Ross Turk, Sourceforge
Marc Erlich, Intellectual Property Counsel for the Patent Portfolio Management function of International Business Machines Corporation
Beth Noveck, Professor, NYLU
Tariq Hafiz, Supervisory Patent Examiner, USPTO

Open Source as Prior Art

John Doll:

Opening speaker was John Doll, Commissioner of the U.S. Patent & Trademark Office. He opened by saying the day's discussion is focused on trying to improve the quality of software patent examination, not whether software is patentable. The Supreme Court has said it's patentable and that's what USPTO has to work with. He hopes to build a system to make better patent literature available to examiners. Part of the problem is it's not easy to find prior art in the databases of non-patent literature. Doll says he will not be able to be here the whole day but will be here as much as he can. He says that's he's open to email and hopes people will send him their ideas and concerns. All the email at PTO is of the form firstname.lastname@uspto.gov.

Manny Schecter:

Next was Manny Schecter, and Intellectual Property Lawyer with IBM: It's important to us as taxpayers to improve the patent system, and there's a lot of momentum right now for patent reform. We hope to get out ahead as part of the change process. The projects we're going to talk about today aren't the only projects of value for patent improvement. He emphasized that the meeting in December was to determine interest, it was not their intent to exclude anybody. And it has raised awareness already, among members of congress and with patent offices of other countries, as well as people in the open source movement. At the end of the December meeting, the patent office asked what it would take for the OS community to stay engaged. We said, "make a commitment." So we will be asking the PTO today to make that public commitment. Some of you are skeptical. To those I will say, don't just complain, get involved. The PTO is giving us an opportunity; let's take it. He hopes we will leave today with some projects people can get involved in.

[He yields the floor back to "Jack". I don't know if that is John Doll or some other person (can't see that well from the back row, and middle aged men in suits tend to all look the same to me ).]

Jay Lucas:

Jay Lucas is Deputy Commissioner for Patent Policy. He says "I'm another suit up here." [heh.] His job is to reflect USPTO policy on patents. He says there are two communities here today, the patent community which is committed both to making technology available and to the rights of the inventor, and the open source community which believes in sharing and collaboration. In his view, the communities overlap, and as part of both communities, he is an example. He earned his degree in electrical engineering, was a patent examiner for 12 years, then spent 15 years setting up the computer systems at PTO (and at some point in there became an attorney as well). He says he's very proud of the fact that patent files are now available to engineers everywhere through the PTO system. That's where the two groups overlap; both believe in getting the knowledge into the hands of the public. He too encourages email; he's "very open to talking with anyone".

He touched on the issues discussed in December: the development of OS as an example -- community patent review, alerting the public to prior art and getting that info to the examiner, and Professor Polk Wagner's Patent Quality Index. The Patent Quality Index won't be discussed today, but prior art and community patent review will.

Tariq Hafiz:

Mr. Hafiz, a Supervisory Patent Examiner, gave a short presentation of the patent examination process -- what a patent examiner's life is like, what resources they use in searching for prior art. First, their priority is to address the oldest application in their caseload first. They (a) review and understand the claim, which may be as little as 10 pages or may range to hundreds of pages; (b) define and execute a search; (c) compose and send an 'office action; and (d) receive the applicant's response, which puts them back at (a) again. This process goes on until a patent is granted or rejected with 'final' status. [Later one of the other people from PTO, perhaps Mr. Doll, explained this process again in a way that indicated that the PTO will generally keep going through this cycle until a successful patent is achieved ... i.e., saying what the patent applicant wants to hear. Someone from the audience rose to say that from our point of view, the fewer patents, the better which seemed to be at least a surprise, if not a totally novel concept.]

To further break down the search process: (a) first build a search strategy, (b) execute the search, (c) review and understand the results, which may lead to (a) again, or (d) select the best prior art. He addressed examiner's time constraints: a novice examiner (1yr experience) can be expected to spend 45 hours to BD (balanced disposal) which I understood to mean one iteration of the review-search-issue office action cycle. An experienced examiner (5-6 yrs exp.) would spend 24 hours on the same task; in either case, the initial review accounts for about half that time. He also discussed 'classification' and showed an example of what the PTO classification system looks like at various levels (there are a ton of levels). In designing a search, examiners look at Structured, Semi-Structured, and Unstructured databases, in that order. An example of Structured would be DIALOG or other proprietary databases of that type. Semi-Structured would be IEEE, APM, etc. Unstructured: Google, or the wayback machine.

Q&A:

Q: A guy from Yahoo asked how often the PTO classification manual is updated. A: Generally when the number of items in a level exceeds a certain number it will be 'reclassified'.

Q: Are there required places an examiner *must* search? A: Yes, on a case-by-case basis (depends on subject matter). Q: Is that publicly available? A: Yes, it's on the website.

Q: (A patent attorney) Rule 105, that lets the examiner ask the applicant for assistance? A: On a case-by-case basis.

Q: Are there any processes for interacting with the standards community? A: Mr. Hafiz not aware of any; A2: [A2, A3, etc. here indicate further answers from other persons] Yes, not at the examiner level, but at the international level (WIPO office), and records are maintained on standards set by NIST (a legal requirement).

Q: [notes not clear but something about time spent on existing documents e.g. search of patent literature]. A2: Don't think we have data, but yes, the point of this is to see if there is another source for non-patent-literature search.

Q: What happens when examiners take their time examining a patent? A: Examiners get credit for first action and last office action [I wasn't clear on what this meant], and this used for awards and promotion, so no, it isn't strictly punitive. [Sounded like an answer to a FAQ that wasn't actually asked here.]

Q: Is there a benefit to an examiner who rejects a patent? A: you get the same credit if it matures into a patent or is abandoned. [In PTO lingo] Rejection is the first communication with the applicant. However, the applicant has the opportunity to respond/amend. In other words, rejection is not the end, it's the beginning. A2: We're not rejecting your work, we're just rejecting your claim. [This is the incident I referred to earlier, when the OS guy said "We'd like you to reject more."] There was also some discussion (not sure how they got there) that if a patent reaches an impasse, i.e. the examiner is showing you barriers to approval and you're not adequately answering them, there comes a point where there's no point in applying again. And that there's a belief that if you keep applying long enough you'll 'wear down' the examiner, but that's not true (per PTO). Again, I think but not positive that A2 here was Commissioner Doll.

Kees Cook:

OSAPA (Open Source as Prior Art) http://developer.osdl.org/dev/priorart/ Mr. Cook is Senior Network Administrator at OSDL and also kernel maintainer (mirror maintainer? not sure) at kernel.org. "Speaking for the Open Source side." [Since the December meeting it seems he has found that] data and content integrity is not so much a problem; categorization seems to be the major issue. So, the focus is on the search, and what qualifies as prior art. A Social Tagging system like flikr.com would seem to be a useful structure. Categorization at three levels: System, Component, and Algorithmic. Need to understand how USPTO searches. Why doesn't USPTO use its existing non-patent prior art databases? Why can't USPTO be on the OSAPA mailing list? (http://lists.osdl.org/mailman/listinfo/priorart-discuss I presume) A: Legal issues, apparently they're afraid examiners would divulge information that's too specific. So they will need to have a liaison from the OS community. Cook said that people from PTO met yesterday (15 Feb 06) with OSAPA to look at how the patent process works [this meeting was mentioned several times during the day].

Ross Turk, Sourceforge:

Turk talked about what sourceforge.net can contribute. He noted that they have just started to revise their search system -- a better user interface, better sorting, filtering, and searching. The changes should also help patent examiners find prior art.

back to Kees Cook:

Need to have a single interface for PTO. Crawlers using meta tags has been suggested.

Q&A

Q: (someone from Novell) Are search parameters the same for patent examiners as for developers? A: Right now it's just early stages, next step is to meet with patent examiners.

Q: Does "categorization" [sourceforge word] = "classification" [pto word]? A: Yes. Q: Do they use the same terms? A: Thought of creating a 'thesaurus'; the classification system the PTO uses is far too detailed to be used on the website.

Q: Have you given any thought to the system and the application to projects not being hosted at sourceforge? A2 [OSDL]: Yes, perhaps something similar to how Creative Commons adds tags, licensing.

Q: Where do we get the money for this? A: OSTG money comes from advertising, so if it improves the usage of the site that's good for business therefore it fits in the business model. A2: OS community would participate as a way to contribute to their own protection (i.e. to improve patent quality.)

Q: [Actually, an Idea:] Use the technology of the semantic web.

Community Patent Review

Marc Erlich:

Slides. Marc Erlich is Intellectual Property Counsel at IBM. I'm not going to report on his presentation because my notes aren't that good, but his slides are very good. [You owe it to yourself to look at the presentation just for the last slide, best [only?] chuckle of the day.]

Q&A

Bruce Perens Q: (a) the "penalty for looking" (willful infringement) must be addressed in order to address patent quality, and (b) another barrier for the average technologist is the total opaqueness of writing in patent applications. A: Agree, willful infringement has impact beyond the quality patent issue; it affects the original purpose of the patent system, i.e., to get the ideas out into the world. He says there is opinion that you can't be tagged with willful infringement on a patent application that has not been approved, but it's probably not an opinion you should count on as a defense. [or words to that effect].

Beth Noveck, Professor, New York Law School and Director, Democracy Design Workshop:

Slides

Same here as with Erlich wrt my notes vs. her presentation online. I liked this presentation best because she seems to understand a lot of the barriers, but has a fairly short timeline for "proposal to prototype" -- draft posted Jan 06, information-gathering workshops Feb-May, refine proposal Apr-Jun, pilot Fall 06. Project website. Oh, and there's a wiki.

Q: Do you foresee other subject areas that will be improved by your tools (besides software)? A: Yes, just yesterday got a call from someone in biological sciences.

Q: Will it be beneficial to have [?] for patents pending? A: Agree, have all info during [?] waiting period, input very helpful during this time.

Q: [a patent examiner] We'd like to interact with applicant and OS community, ask specific questions, but we're currently not allowed to discuss with the public, confidentiality reasons. That really needs to be addressed. If there's only a limited period for comments ... I need to be able to ask the questions at the time I need the info. Having the ability to ask questions might shorten prosecution [is this the right term? sure looks like what I wrote.]. Barriers need to drop between me and the public for this to work. A: [no answer]

Comments on identified patent quality initiatives and next steps

Robert Clark:

Robert Clark is Deputy Director, Office of Patent Legal Administration, USPTO. His job is to draft new rules, procedures. Like other PTO speakers, he encourages people to send him suggestions by email, robert.clark@uspto.gov. [semi-random fact: the patent examiner's manual is actually two manuals 6"-8" thick.] Mr. Clark discussed some of PTO's current barriers to the OS initiative:

37 CFR 1.99 - See MPEP 1134.01 (I think this is referred to as Rule 99) which allows the public to provide prior art, but there are a lot of limitations. Concerns in drafting Rule 99: they were afraid of being overwhelmed by submissions, so only patents and publications may be submitted; no discussion or highlighting of documents (but you can redact, he said, tongue in cheek); no more than 10 documents per submission; each submission costs $180. There is also a time limitation, must be within two months of publication and no later than mailing of notice of allowance (but there's a big backlog on that apparently, so only the 2 month rule is observed in practice). The rule states that communication with the submitter is not allowed, so the only confirmation a submitter gets is that his check has been cashed. Submissions are reviewed by staff (not examiners) who may reject for submissions of incorrect form. Evidence of prior art can be submitted by the public only for published patents, and applicants currently can opt out of publication. [Chuck's notes said they can opt out if they don't want/need international protection; I missed that. I do recall a figure of 10% opt-outs but that's not in my notes.] USPTO is petitioning Congress to have that option removed.

35 USC 122(c) Protest and pre-issuance opposition. Cannot be initiated unless approved by the applicant. PTO does not recommend removal of this limitation, because of potential for abuse. However he said that based on yesterday's meeting, applicants may be more willing to consent to protest than had been assumed.

OMB Circular A-130, guidance from OMB to executive agencies on technology issues says that agencies may not host databases that would duplicate existing privately provided resources, and currently there are private patent search databases.

[I missed a bit here.]

Q: A patent examiner asked about 'defensive publication' -- something called SIR? -- as I understood it a process whereby an applicant may file but not request a patent. To the examiner, it seemed like a 'spectacular tool' for the OS community. The discussion quickly became jargon-filled and I didn't follow it all. The objection seems to be that such filings are a magnet for 'thickets' of patents built up around them. Bruce Perens said, "solve the thicket problem and we'll do it."

Q: Rule 99 is limited to publications and patents; what constitutes 'publication'? A: A physical copy is not required. Reasonable public access is the governing criteria; it does not have to be continuous. The example was cited that a poster that was everywhere for a period of days but then was gone would constitute publication.

Q: Consents to protest -- is there an area where these are typically filed? A: You see them among companies in cross-licensing agreements, typically small to medium-sized companies. Q: So surviving a protest would prop up the value of a patent? A: Don't know, perhaps.

Bruce Perens:

After a short break for discussion at the podium it was announced that although we had run over the allotted time we would have 15 more minutes. Bruce Perens was given the floor and gave a short prepared talk highlighting four issues of concern to OS: perjury, triviality, the 'penalty for looking' (willful infringement), and the cost of litigation:

Perjury -- penalty is in theory the same as in a courtroom, but in practice, he can find only one such case, from 1974. Yet in a recent patent, a portion of the text was demonstrated to have been copied from another source; (he also mentioned the Microsoft 2-click patent but I didn't catch why). He notes that because open source is developed in the open, there's a very strong financial incentive for people to 'eavesdrop' on the public discussion, but there is no sense of penalty, the worst that can happen is the patent claim would be denied. He suggests that given the fact there is no penalty, there should not be a presumption that the applicant is acting in good faith, and that questionable claims should be referred to a criminal examiner within the PTO and that this would address the issue.

Triviality -- How do we test? See if it's been patented before. He suggests a pre-publication jury of experts, to be given questions that do not reveal the claim in detail. If the experts can come up with the idea claimed, it would be shown to be trivial. This would invalidate the defense that "the question makes the idea obvious."

Looking (willful infringement) -- The lines are not clear. They need to be made clear enough for an engineer -- not a lawyer -- to understand. In the meantime, the engineers ask, and the attorneys say "just don't look."

Litigation -- Disparity in ability to contest a patent claim. OS developers should not be denied justice because they can't afford it -- [Bruce quoted some source I didn't get that] it costs $3-$5M to prosecute or defend a single claim. Currently, patent holders can stop a project in its tracks simply by filing suit. Even if the project has a 'sugar daddy', even sugar daddies have limits.

And finally, he just wants to be clear that the issues discussed today only deal with patent quality, and do not address the many other problems with patents for the OS community.

A guy from Harvard Law, didn't get his name but appeared student age:

His approach is to look 50 years into the future, what we want to see is a software business method that is an object-oriented system -- you'll be able to quickly see what software objects, business methods are already patented [because of the granularity]. In France, today, every object requires a separate patent application.

Q: A guy from EFF:

With regard to inequitable conduct, is there anything in pending legislation to address this? A: A couple of different proposals, but only for lack of disclosure of prior art.

Q: Could an examiner say, "I think there's been inequitable conduct here"? A: We have that now, not to say we seek it, but if it comes to our attention we can't ignore it.

Q: Do you envision inequitable conduct as part of a protest? A: Would require a level of investigation too deep for examiners. We used to have a 'fraud shop' in ancient days; whiffs of fraud would be brought to their attention. [This did trail off without resolution, but I think not quite this abruptly.]

Diane Peters:

Did the wrap-up, thanks to everyone who spoke, by name, and especially Jack [with something about him stepping into someone's shoes].

The only thing I might add is that when the discussion arose (prompted by an examiner in the audience) regarding patent thickets several people jumped in almost at once. As I remember it, the first was one of the speakers from PTO (sorry, don't know which one), clarifying the examiner's question by saying, "You mean like SIRs?" And I think he (or another PTO person near the front) was the one who brought up the 'thicket problem'. It was like the "switch" that happens when technical people suddenly start talking their own language (in this case, patent language). When you're one of the technical people, it feels like a release to be able to talk in more meaningful terms, but everyone else around goes, "What?" Chuck and I just looked at each other going, "What?" . Again as I recall, Perens didn't dominate the conversation, but he brought it to an end with, "solve the thicket problem and we'll do it."

************************

3. Report from Chris Marshall:

Just to give you my general impression quickly, however, the USPTO sent high level people to the meeting who seemed serious about engaging the OSS community. The meeting was very civil and the OSS community conducted itself well.

One thing I didn't expect was that there were a lot of patent examiners in the audience and they asked some of the best questions.

Bruce Perens was the most visible OSS VIP in the audience and was able to make a long comment at the end about the dangers of the current patent system to OSS. One point he made was about perjury in patent applications. He pointed out that when you file a patent application, you do so under oath, yet people who make false claims in applications (for example that they don't know of any prior art when they most certainly do) are almost never prosecuted for that.

I don't know if this was available on the USPTO website, but here was the panel line-up:

From (audience point of view) left to right

1. Tariq Hafiz, USPTO
2. Prof Beth Noveck, NY Law School
3. Marc Ehrlich, IBM, lawyer
4. Ross Turk, Source Forge
5. Kees Cook, OSDL
6. Robert Clark, USPTO
7. Jay Lucas, USPTO
8. Manny Schecter, IBM
9. John Doll, USPTO, deputy comissioner for patent resources and planning
10. Diane Peters, OSDL
11. Jack Harvey, USPTO

I noticed Bruce Perens was sitting in the front row. I didn't recognize anyone else. Bear in mind as you read this that I am always paraphrasing even if it looks like I am directly quoting someone. My memory is not that good nor can I write that fast.

Also please bear in mind that I could very well have misrepresented the remarks of different people at the meeting. Let me apologize up-front to anyone whose remarks I misunderstood or got backwards. My ability to follow what was going on waxed and waned throughout the day quite a bit. What follows is a combination of what my I heard, wrote down in my notes, and my mind filled in from what I thought I understood.

Jack Harvey made the opening remarks.

John Doll spoke next. He pointed out that although he knew many in the OSS crowd would prefer that software not be patentable, the Supreme Court had already ruled that they were and the purpose of this meeting was not to discuss that issue. The purpose was to discuss how best to improve the patent system to deal with software patents.

Manny Schecter (IBM) then got up to speak. He asked for a show of hands of how many people were there representing OSS interests. He noticed that a little less than half the hands went up, and seemed suprised to see that. He noted that a lot of people, after the last meeting in December, has contacted him asking why they hadn't been invited and were upset. He said the purpose of this meeting was to allow more people to be heard and to accomodate the increasing interest in the issue of patents and OSS.

Manny then talked about how at the last meeting, the question was put to the OSS crowd,"What will it take to get the OSS community involved?" and the response from the OSS crowd was,"give us a commitment that you will follow through on our suggestions and contributions." He then noted that while it is very easy to criticize the patent system, by itself that is not very useful. What is really needed are specific ideas for improving it.

Jay Lucas (USPTO) then got up to speak. He noted that close together that we must protect the inventors rights and that the OSS community believes in sharing information. I believe his point in doing so was to say that while both of those are good things to do, they do conflict somewhat. He then talked about how a long time ago at USPTO he was amazed at how much great information was locked up in their files, and what a boon it would be to engineers and soceity if that information could be more accessible to the public. I gather he had a lot to do with getting those files on-line and searchable by the general public. Several times he used the example of libraries of circuit designs to do things like bias and amplify.

Jack Harvey got up again to speak and briefly discussed the need to use OSS repositories as prior art and to better alert the public of when patents are being issued.

Tariq Hafiz took the podium at that point and reviewed how the examination process worked. One of his slides he went through contained the following table showing how long the average examination takes relative to the experience of the examiner:

years of experience
45.14 hrs/BD 1
31.60 hrs/BD 3
23.41 hrs/BD 5-6

He noted that examiners are graded based on how much time they spend on each case. I took this to mean that they get dinged if they take too long, although it was suggested later that this is more of a positive reinforcement method in which examiners that are more effective get better raises or bonuses.

I later learned that BD stands for "balanced disposal." I am still not sure exactly what that means. I gather it refers to some subset of the entire time spent on an application that could be reasonably taken to be entirely within the examiner's control.

Tariq then discussed the problem of classifying inventions. He showed a slide filled with USPTO classifications within networking software and showed the corresponding Sourceforge breakdown which only had three or four terms. He was clearly making the point that a big problem stopping the USPTO from using OSS source code repositories is how do you categorize OSS software?

At this point, the audience was invited to make comments.

One person asked, "How often do you update your classification system?" The main answer was,"that varies quite a bit on a case by case basis." I didn't feel that any of the answers offered gave me any real information as to how often categories are added or deleted or rearranged.

The next question was,"Are patent examiners required to check certain sources beyond the internal patent files of USPTO in any circumstances?" I couldn't follow the answers to this one.

The next question was something about rule 105. Since I couldn't even grasp the question, you will hardly be suprised to learn that I didn't follow the answers.

The next question was,"Is there any interaction between USPTO and standards committes like the IEEE?" The answer was that one area of interaction was in revising the classification system, but that there was no interaction during the examination process. In other words, a USPTO examiner would never contact the IEEE, for example, to ask,"So, what do you think of this application?"

The next question was,"What happens to an examiner who takes too much time?" The answer to this was,"that is not always punative. We are more reward based."

The next question was,"Do you ever reward rejections?" The crowd seemed to get a kick out of it having been asked. I do believe I heard some chuckles. The first answer to this was something about "first office action" and "last office action." Jay Lucas stood up to answer at length and seemed to be saying, "If you are an inventor and you get a rejection, don't feel bad. It is a normal part of the process in which the examiner asks the applicant to answer questions and perhaps rephrase or rethink parts of the application." Jay didn't seem to realize that the OSS crowd present had the opposite worry, that patent examiners were not rejecting enough. The questioner (who I later realized was a patent lawyer, yet who seemed to be on the OSS side of things) quickly picked this up and pointed that out to Jay, at which point another man in the audience, who didn't like that point, said, "That gentleman speaks for himself!" The objector didn't make any more comments for the rest of the day that I noticed.

Kees Cook of OSDL then went to the podium to speak. He mostly talked about the categorization problem Tariq has first brought up. He mentioned flickr.com and social tagging as inspirations that might form a basis for a way to categorize OSS so USPTO could use it more directly. In my notes, I have written that someone talked about how the Patent office didn't want to actively participate in public mailing lists for some reason I didn't follow. I gathered that it would create legal problems for them if they did.

Ross Turk (SourceForge) briefly spoke about new sorting a filtering capabilities they were working on.

At that point, more questions were allowed.

A rep from Novell got up and asked, "Do developers really need the same sort of info that patent examiners do?" Ross Turk answered that it was an intuition of his that consumers and examiners would overlap quite a bit in the sort of information they would want from Sourceforge.

The next question was,"what if a project isn't hosted at Sourceforge?" Kees responded that he wanted to work out a set of xml tags that people could use to allow web crawlers to gather the sort of classification information the patent office needs.

The next question from from a patent examiner in the audience who asked, "How will this work be paid for?" Ross Turk answered that Sourceforge was doing this work to make their site more useful to developers and that Sourceforge makes most of its money from advertising. Kees Cook then pointed out that most developers would view these effort as a necessary self-defense against patent abuse and would be motivated to help the patent office so that they would be free to continue to develop code.

Marc Ehrlich (IBM) then got up to speak. He focused on what a community patent review process might look like. He mentioned that currently, you can submit prior art but you can't submit comments on a patent application (the USPTO refers to such comments as "protest"). The lack of ability to comment is in turn holding people back from submitting prior art.

Marc suggested a notification service the USPTO could host where you would register a search (with an email address and password) and the system would keep you notified of any patent applications that came along hit by that search. In other words, you would give the USPTO a list of the areas of technology you worked in and they would notify you by email about any patent actions related to those areas as they took place.

Marc then showed slides of a (mock-up of a) slashdot-like patent discussion web site in which one person had written a comment that a certain patent application is similar to something they had already done. The applicant had responded in the same forum that no, it was different because of feature X.

Marc noted that commenters could build up reputations through such a site which would make it easier for patent examiners to find high quality commentary.

At this point, Bruce Perens, who was sitting in the front row, approached the panel and borrowed their microphone to make some comments. He pointed out that:

1. most engineers would hesitate to participate in such a system because it would open them to lawsuits for "willful infringement," since they would obviously have read the patent application before commenting on it.

2. patent applications are opaquely written and not inviting to the average technical person to read.

3. it is small wonder that the library of circuits Jay Lucas talked about in the beginning goes largely unused since any attempt to do so would open you up to "willful infringement" charges.

Manny Schecter, in response, said something about how your participation in such a discussion forum could be part of your defense against such charges. I don't understand how.

Now, at this point, a gentleman who identified himself as Don O'Neill of the "Center for National Software Studies" stood up and asked if such a public forum might not change the standard for patent approval from "completeness, consistency, and correctness" to one of "consensus." I don't recall the exact responses given but my sense was that no one thought the discussion forum would have that effect on the process.

The next question went something like, "suppose you have a patent commenter with a high reputation. Might not such a commenter be able to wield undue influence?" I didn't understand the answers to that one.

The next comment was from a patent examiner in the audience (of which there were quite a few). He said that he thought Slashdot was already a very valuable site for examiners to find prior art when reviewing applications. He thought the moderation system of Slashdot should be considered as a useful model to build on.

The next question was about whether USPTO publishes the searches used by the examiner together with the patent itself. The answer was that the citations are published but not any text from the citations themselves because that would, obviously, violate copyright.

At this point we broke for lunch.

After lunch, Professor Beth Noveck of NY Law School took the podium and gave a talk how citizens could use the internet to participate the decision making previously reserved for bureaucrats. She talked about how the old model that assumes that bureaucrats know much more than the public at large is no longer true (if it ever was) and that governments need to figure out how to harvest the "wisom of crowds" if they want their decision making ability to improve. She asked the question,"What if we had 1000 patent examiners instead of just one for every patent application?". She noted that other agencies already practice "citizen consultation" such as NIH, EPA, and NSF. Her main patent related website, BTW, is http://dotank.nyls.edu/communitypatent/.

She kept throwing around the acronym PHOSITA, which I just now looked up and means "Person Having Ordinary Skill in the Art." Apparently that is a term in patent law.

She spoke about citizen juries and that the USPTO should consult the wider technical community as a proxy for PHOSITA.

At this point, the audience got the chance to ask questions again.

Someone asked,"What about non-software patents? Are there any other fields that are ripe for this sort of public involvement?" Someone on the panel thought that there were many such areas and mentioned "life sciences" as one example.

A patent examiner in the audience got up and asked a question I didn't quite catch. He kept using the term "issuance of patent pending."

Another examiner pointed out that configentiality prevents examiners from talking to the public and that that would have to be changed before these ideas could be implemented.

At this point Rob Clarke (USPTO) got up and talked about the rules regarding commentary on patent applications and submissions of prior art. He said that there is a $180 fee you have to pay per document that you submit as prior art. He said that there is one case in which "protest" (where a third party makes an argument as to why the patent should be rejected and submits commentary) is allowed, and that is if the applicant has specifically granted written permission for the protestor to speak his peace. Applicants can limit permission to specific individuals or, if they so choose, allow anyone to submit protest.

Everyone in the room was wondering the same thing at this point,"Big deal. Why would any applicant do that?" The patent lawyer who spoke earlier from the OSS point of view got up and asked,"As a patent lawyer, wouldn't I be nuts to advise a client of mine to allow protest? Suppose I so advise him and his patent is rejected because the protest was convincing to the examiner? Wouldn't he be very put out with me, and rightly so?"

The answer really took me by suprise. Suppose you allowed anyone to protest and your patent is approved in the end. You are in a much stronger position now should you try to sue someone in court for infringement since your patent has been publicly vetted.

Manny Schecter (IBM) said that he knew of parties that would willingly allow public protest to their applications if a vigorus public comment system existed that could vet it.

It may very well be that the USPTO doesn't need to loosen the rules for protest at all to fix the system. I can imagine how courts could, after having experienced the high quality of public

commentary over the web, take a dim view of patent applications that did not allow protest. This is going to be very fun to watch.

Bruce Perens was able to make a long comment at the end about the dangers of the current patent system to OSS. One point he made was about perjury in patent applications. He pointed out that when you file a patent application, you do so under oath, yet people who make false claims in applications (for example that they don't know of any prior art when they most certainly do) are almost never prosecuted for that.

******************************

4. Chuck Moss's Report:

I attended the "Public Meeting of US Patent and Trademark Office and the Open Source Community" held at the USPTO building February 16th 2006. There were representatives on the panel for OSDL, SourceForge(OSTG), IBM, United States Patent and Trademark Office (USPTO) etc.

The effort documented in the meeting covered two different prospective ways the Open Source community could interact with the USPTO.

The agenda opened with Open Source as Prior Art. Currently a patent examiner will research a patent application by checking for prior art in structured resources such as "EAST", their system for managing existing patents, other patent applications and Non Patent Literature(NPL). They may also look for prior art in unstructured resources such as Google searches, archive.org (wayback machine).

Focus for the use of Open Source Software (OSS) as a database of prior art seemed to be on providing the patent examiner a resource to use that would be easily searchable by the criteria useful to the USPTO. The initial implementation of this system would center around SourceForge but the concept will convey to other repositories and individual software maintainers. SourceForge is taking USPTO needs into account with back-end changes to categorization of software and searching functionality. Current categorization of software would be enhanced and metadata defined. This metadata would lend itself to spidering by search engines as well.

The categorization of each project needs to happen on three levels; system, component and algorithm. Search capability will have filters for released files and dates at the system level through the "software map".

The second set of presentations dealt with the "Community Review Process" Current rules allow a third party to submit prior art on a patent but they are not allowed to highlight anything or provide additional comments. The fee for submitting third party prior art is $180. A proposal exists where the community would have access to patents before they were approved. An expert could subscribe to get notifications via email of patent applications in their field of expertise. A platform would be created with a web based interface with forums, chats, wiki and a reputation system for "ranking" experts based on prior contributions. This platform would be used to submit prior art, comments and develop a consensus about a patent applications triviality. One of the presentations by IBM is here: http://cairns.typepad.com/peertopatent/files/community_patent_review_final_216.pps

Professor Beth Noveck of New York Law School spoke about the "Peer to Patent" project which is part of the Democracy Design Workshop. Her presentation tied in to the previous one about the "Community Review Process". The effort is documented on http://dotank.nyls.edu/communitypatent/ The project phases ( not sure if a phase is defined as phase in a patent application or phase of Peer to Patent project implementation)

In phase I. community/experts could assist in Novelty determination and locating/evaluating prior art. In phase II experts would form "citizen juries" for obviousness determination. The presentation was very interesting and detailed. The professor glossed over pieces of it due to time constraints. The entire presentation is online at http://cairns.typepad.com/peertopatent/files/uspto_feb_16_06.ppt. They have a wiki on the website answering a lot of questions. Also the entire Democracy Design Workshop seems very interesting http://dotank.nyls.edu/.

The final presenter was Robert Clark, Deputy Director, Office of Patent Legal Administration, USPTO. This presentation was helpful to understand the current process and the constraints the USPTO is under in the current system. This presentation sparked a lot of discussion about the current state of patents in the US and around the world.

One point made was that while it is true that the USPTO examiners operate under tremendous pressure due to the sheer volume of applications and time constraints the examiners are not subjected to being worn down by repeated submissions of the same patent application. Productivity is measured by number of applications processed but each resubmission counts as a new application and gets the examiner credit for taking the resubmission to final judgement. Also there is no additional credit given for an approval over a rejection.

The floor was opened for more questions from the audience members before final closing comments.

Bruce Perens of OSI was in the audience and he raised several points including:

1. Perjury in patent applications - In theory a patent application is a legal document and misrepresentations on the document can result in perjury charges. In practice that is almost never enforced. In his research the last example he found was from 1974. Given that there is almost no enforcement there is no disincentive for applicants to lie on applications. Under those conditions there should be no presumption the applicant is acting in good faith and the workload of the examiner would have to increase to verify each of the statements made by the applicant. If perjury enforcement were prevalent the examiner could then assume the submitter was acting in good faith and lighten the workload.

2. Triviality - One method proposed to determine triviality is to provide a sample of these experts non leading questions about the problem the invention addressed and see if any came up with the same invention.

3. Penalty for looking - Under current rules/practice providing feedback on a patent would open commenter up to charges of willful infringement. This is a problem with any proposals for community involvement and needs to be addressed. The discussion following this point mentioned that MAYBE you were not exposed by seeing patent applications but not granted patents. Also this issue is being considered in the current patent reform efforts in Congress. Nothing decided yet.

4. Cost of litigation - the current state of litigation of patents precludes small inventors/software distributors from being able to successfully defend themselves against patent infringement claims. Numbers quoted estimate it costs 3-5 million dollars to defend or prosecute a single claim.

He also reinforced the idea the the OSS community involvement discussed only addressed the issue of patent quality, not resolving other issues in the patent system.

For overall impressions of the meeting I was impressed with the panel and attendees. IBM was given credit for spearheading the effort. The USPTO had qualified representation on the panel and the internal interest seemed very high given the number of USPTO examiners in the audience asking questions.

Much of the discussion centered around the problem providing input on patents exposing members of the community to "willful" infringement.

Overall I was very pleased that many of the people in the audience, asking questions and giving input, were patent examiners. The seem to be competent technical people making it a priority to do their job to the best of their abilities. The volume of applications (400,000+ last year), backlog(~600,000) and the constraints/resources they work with make their job difficult.

Hopefully the efforts of all the dedicated people on the panel and the community will improve the quality of of patents overall. At the same time there is patent reform effort underway at the congressional level. I encourage everyone to contact their representatives to assist in improving the whole system.

***************************

Bruce Perens' Prepared Remarks

I'd like to talk about four concerns: Perjury, Triviality, differential capability of Litigation, and finally the effect of this process on Open Source.

Perjury: When one applies for a patent, an oath is sworn under 18 CFR 1001. The penalty for falsehoods under that oath is - in theory - the same penalty one would have for bearing false witness in court: a crime called perjury. That's in theory. Now, let's talk about practice. Robert Clark says that there _was_ a perjury case: in 1974, and that one comes along every 25 years or so. Yet, we are aware of, for example, a much more recent patent in which the claims included verbatim text of a published paper by a researcher not connected with the applicant. And there are examples like Microsoft's two-click patent, in which there does not seem to have been any excuse for the filer to have been unaware of prior art. And there's a strong financial incentive for the unscrupulous to eavesdrop on the open discussion lists of standards organizations or Open Source projects and to make pre-dated filings with that information.

My premise in bringing this up is that there does not seem to be any sense of peril for those who game the system. The worst that can happen to a perjurer is that his claim is denied, and you can get a continuation. Contrast this to the courts, in which impeachment of a witness is often followed by prosecution for perjury.

This creates a quandry for the examiner, because the total lack of enforcement against perjury means that the examiner should not assume that the application has been made in good faith. And I submit that this makes the examiner's job even more unlikely to meet his time constraints.

Perjury is not a victimless crime: it creates intellectual _poverty_ because its victims will be unjustly denied use of a claim that, in general, they can't afford to litigate.

In some cases, the perjurer is hiding behind an attorney or agent who believes in the honesty of the claim. But the applicant should be counseled on the peril of perjury in making an application, and the peril should be real.

Today's policy seems to be denial that a problem exists. I submit that improving software patent quality should improve the active pursuit of perjurers: referral of applications from an examiner to a criminal investigator during examination or re-examination, and we must carry that process through to conviction on a regular basis.

Triviality:

Triviality is a problem for software patenting. How do we test it? Today, the only concrete test for triviality seems to be that the claim has not been made previously. This, obviously, promotes the claiming of obvious art. One possible improvement in testing triviality, would be a pre-publication jury. Functioning like a grand jury, this would be a body of experts who are given a problem that is addressed by the claims, without disclosure of the claim or leading questions. Can they come up with one or more of the claims in a limited time?

Some would object to this process, proposing that the essence of novelty in their claims comes from their simply considering a question that nobody's thought of before. But I submit that an answer's being obvious from the question should itself be considered as a sign of triviality.

The Penalty for Looking:

While we don't create peril for the bad actors, there is peril for the good ones - the penalty for looking - wilful infringement. While one can defend oneself from claims of wilful infringement, the lines aren't bright enough for engineers to apply in their day-to-day operations with confidence, and thus our counsel gives us a simple guideline: don't look. We need to create bright lines that engineers can follow if they are to participate in improving patent quality.

Litigation and Cost of Litigation:

One of the largest problems faced by Open Source is the disparity in the ability to contest a patent claim through litigation. The Open Source participants are, in many cases, individuals who can not sustain a single day in court but who should not be denied the right to practice technical development. According to the American IP Association's Economic Survey, it costs three to five Million to prosecute or defend a single case. And thus, because only the wealthy can afford to litigate, there is only justice for the rich. The effect of that is that patent holders can stop an Open Source project in its tracks just by filing to sue. The only option I see to get the Open Source developer off the hook today is post-grant opposition through the patent office, which is heard or not arbitrarily depending on the pleasure of the director is, so far, very limited in its process, and doesn't seem to have deferred prosecution of high profile cases like RIM Systems. Only by moving the process of contesting of a patent out of the courts does it appear that we can grant justice to the poor as well as the wealthy.

What this does for Open Source

I respect that there are questions we've been asked to avoid, because this isn't the right forum. I'd just like to make sure that this activity is not confused as addressing the problems that software patenting presents for Open Source. It only deals with patent quality, and I hope that anyone reporting on this meeting understands that patent quality is a little piece of the overall problem for Open Source.


  View Printable Version


Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )