Russel Winder's Website

Software Patents and the USPTO

The United States Patent and Trademark Office (USPTO) has been active again in trying to amend processes. This time it is all about "re-examination", and how to make it more streamlined. See for example and this conference - thanks to Groklaw's "Groklaw Latest News Picks" of 2011-05-29T05:55+01:00. Also of course this Groklaw article about recent events in the case colloquially known to everyone as "Paul Allen vs The World". I am sure there are many other examples.

In a sense it is great news that USPTO are looking to the processes involving patents in the US. Anything that appropriately streamlines useful processes is to be applauded. You are though waiting for the "but . . ."

The point that should be obvious is that this is all about re-examination. They are looking to the processes that involve the courts due to litigation bringing doubts as to the validity of a patent. Of course it is good to make these processes simpler and easier, but why is this the focus of attention? Surely the focus of attention should be on why there are so many patents out there that have so much doubt and uncertainty surrounding them: why are there so many (software) patents approved that then come under challenge from the courts? The obvious conclusion is that the initial examination is inadequate, that (software) patents are being granted without proper "due diligence". One has to doubt whether there is any technical examination at all undertaken by the USPTO, that they only consider the syntactic correctness of the documentation and the following of mandated processes in awarding a patent.

So the USPTO should look to its examination processes as well as its re- examination processes. There should be assessment of potential prior art. There should be assessment of validity of the claims. There should be assessment of the obviousness of the invention. Even cursory examination of the patents involved in all the high profile software patent cases currently before the courts in the US lead to the conclusion that very little notice was taken of the technical content of the application in awarding the patent.

I believe that software and processes should not be patentable since they are not product with a physicality, they are just a way of expressing ideas. However, even if such things were acceptable, the USPTO do not seem to have employed any form of proper quality control over the patents they have issued. One can only infer that they "approve and let the courts decide". Is this really a sane way of implementing monopolies approved by the state? (*) Well if you are a patent lawyer, of course it is. It is a "gravy train", a licence to print money. If you are an inventor or entrepreneur, it is definitely not, it is a massive threat, with potentially huge legal costs. Big businesses may be able to set aside monies as contingency for this, but the lone inventor, and the small and medium enterprises (SMEs) that are supposedly the darlings of the western economies certainly cannot. So the process as it is favours big businesses; it is by and for them.

I think the obvious conclusion is that USPTO should undertake a root and branch re-examination of all of their processes, especially the ones at the beginning of the cycle. The US government clearly needs to step in and ensure that this quango gets put onto a proper technical footing. Unless of course it is culpable in preserving the status quo.

(*) Doesn't it strike you as ironic that states have so much legal infrastructure to stop monopolies from existing - anti-trust laws, competition laws, etc. - and at the same time have a legal infrastructure (patents) for enforcing monopolies?

Copyright © 2017 Russel Winder -