So, the USPTO flags questionable patent applications, particularly those relating to '"broad" or "pioneering scope," "seemingly frivolous or silly subject matter," or those "dealing with inventions, which, if issued, would potentially generate unwanted media coverage (i.e., news, blogs, forums)."', as well as patents related to specific 'areas of technology' such as 'smartphones' 'Internet-enabled systems,' and 'processes and apparatuses involving Education.'. And those patents get scrutiny from a larger panel rather than getting rubber-stamped.
And a law firm whose job is to get things patented thinks this is a Constitutional issue, because all applications don't get that level of scrutiny.
Sure, it'd be nice if all patent applications got the same level of scrutiny, but in the absence of that, triage makes sense: "hey, this one looks hairy, we're going to need to look at it more closely".
The only thing I'm mildly disappointed by is that one of the categories is effectively "stuff that will make the news"; granted, those are likely to be patents that shouldn't be issued in the first place, but focusing on the PR aspect rather than the sanity-checking aspect seems wrong.
I think the important bit is that none of this process is documented
I agree that in practice it might not be so bad but the very fact it is kept hidden (with examiners saying "I shouldn't tell you this but..."), that is the big issue for me.
Not documenting it makes it harder to escape the scrutiny by rewriting your patent applications. It is far easier to game such a system if you know precisely how it works.
So why don't we keep all laws hidden? One could expand your argument at any and all laws. Why write down the laws for "money laundering" as it would <s> only allow people to skirt the laws </s>. If you don't right down the law and keep its enforcement procedurally, the laws are often misapplied to constrict those that are undesirable by the state (either through political resistance, the politically unconnected, or disrupters)
The thing we're discussing isn't a law, it's an internal agency procedure. It might or might not be a good idea but it's nothing anyone outside the agency has to follow.
Very few governmental systems should operate in secret. Agency procedure _is_ defacto law.
If they have a non-documented system for stalling, sidelining or giving greater scrutiny to patents yet have a 1500 page operations manual doesn't that strike you as odd?
So the IRS should document (for public consumption) the exact algorithm it uses to decide which filings get extra scrutiny? Doesn't that open the door to quite a bit of abuse? (i.e. tax fraudsters being able to match just the precise set of conditions to not be audited).
Yes, the IRS should. The fraudsters (and rich people with expensive accountants) already have this info, for example by hiring former IRS examiners and executives. Making the algorithms public at least puts everyone on equal footing.
I think it's important to distinguish what we are talking about here. We aren't talking about a hidden law, we are talking about internal procedures that attempt to make sure the law is following by identifying patents likely to cause problems and looking at them closer. The same published laws apply, they just look closer to make sure it in line with them.
It's important to remember that the patent system is for the benefit of society. It achieves this benefit by incentivizing the individual. We must be sure to make sure when we apply the rules for the patent system we aren't capricious and discriminatory, but we need to be very aware that the benefits provided to the individual by a patent are not the purpose of the patent system, but simply the method used to a achieve it's true purpose. That purpose is very clear in the constitution as "To promote the progress of science and useful arts."
just because that's it's stated purpose doesn't mean it's magically achieving it. You can't take that the patent system promotes the progress of science and useful arts as axiomatic gospel. How do you judge how successful it is if there isn't at the very least retrospective transparency and a way to hold the system accountable for its procedures?
There have been plenty of misdeeds within the government that were hidden until revealed with a FOIA request. That's hardly a good reason to say their being hidden is OK. It takes resources, time, and especially knowledge of what to ask for to get something useful out of the FOIA request.
You're right, but filing a patent is not the same as getting license plates for your car. Any time you're dealing with government action/inaction and its consequences, and it's worth it to hire a lawyer, it's probably also worth it to fire up the FOIA machine. I just got a CD-R from a state agency that I need to start perusing in my spare time, and I'm not even a lawyer. If patent attorneys really didn't know about this procedure (and let me say that I don't actually believe that), then they were providing their clients with very poor service.
While I agree that certain patents should be scrutinized at a higher level, this must be done 100% transparently. Every time. That doesn't seem to be the case here.
The issue is that the PTO did this secretly, and did it by stalling. If the PTO put a transaction in the history saying "Referred to SAWS for more detailed review per MPEP section X.XX", then it would be legitimate. The applicant could then argue with the SAWS team via the usual procedures.
Now that this has become known, the PTO will probably have to do that.
Triage is fine, but it seems that the extra scrutiny, for those patents selected to receive it, is taking much too long. That program needs more resources.
Strongly agree with your last paragraph. They don't get it yet, do they?
So there is a secretive process by which the patent office can delay possibly to the point of irrelevance patent applications that are disruptive to the established order? Not a surprise.
This is yet another example of the rot that is infecting the legitimacy of our government. There is no excuse for this, the patent office could plausibly suppress some patents on the grounds of national security but on the grounds that they might "draw public attention"; come on. Tell us again how this system betters us all and doesn't just exist to keep todays winners on top tomorrow?
I'm in the process of getting a provisional patent for something fairly trivial, simply to make sure that the Principal Investigator for the project on this project doesn't take credit for it (before I get downvoted: the PI told me "I need a way to do this thing, and I have no idea how to do it" and I did all the R&D, paid for the prototyping, and I am volunteering my contributions in the first place).
I'm noticing that it is extremely unlikely that an actual human being will read my application, and would actually like to have it rejected for being trivial, because it'd mean some checking is going on.
I feel this is a mild abuse of the provisional patent system, but what can I do?
I wonder if anyone tried to patent the old Signetics write-only-memory, if it would go through? Someone patented the wheel in Australia a while ago...
So I'm going to step sideways here and comment on this: "simply to make sure that the Principal Investigator for the project on this project doesn't take credit for it""
Think about that a bit with a longer view. If it is "fairly trivial" as you mention, the PI could have brought in anybody and had them build it, and had they not brought in you, you would not know anything about this thing you're patenting.
I get that you feel like you have "done all the work", and I think that may be true, but at a minimum I would suggest you put both you and the PI on the patent if it is not something you would have done on your own. It sounds like the "combination" was what got the patent done, not just your own work.
The second thing is that when this patent issues or comes back, if it has only your name on it and not that of the PI, it is going to really piss off the PI. And if the PI has any sort of professional network, they are going to complain loudly about how you "ripped them off" and that story will follow you around and dampen your employment prospects for years. (After all, who wants to hire someone who will sneakily take credit for all the work?). And as the system is set up to allow additional inventors to be added later the PI will probably get themselves added anyway.
The bottom line is this, don't let your emotions push you into making a choice that you may later regret.
> I feel this is a mild abuse of the provisional patent system, but what can I do?
Really any traceable, public disclosure should do - filing a patent just to have the record seems like overkill (except in the case where you actually want to file the patent, but it sounds like not). Actually, if it is just for date priority purposes, getting your research records notarized would probably be sufficient (not a lawyer and all that).
There is a service [1] for registered public discloure that is also a "mandatory to search" resource with the WIPO. It costs $120/page, which is steep, but surely cheaper than patent prosecution. There are other "mandatory search" archives [2] under the Patent Cooperation Treaty "Minimum Documentation" rules, many of which are academic journals. These are not the only means of "public disclosure" but my (very limited) understanding is that the patent office is guaranteed to look at the sources on that list.
If you are feeling adventurous, you could even use some block chain-based registration service [3].
First to file is just a conflict resolution rule for patent applications that hit the PTO at the same time. Under first to file, you just look at the dates on the applications to see who gets priority. Under first to invent, you get into this fact-intensive analysis of who really invented first.
First to file is not implicated unless dueling patent applications are involved. It doesn't affect how prior art is treated.
It absolutely is. Once recorded, it becomes prior art. The disclosure would be the "first to file" event in this case.
First to file would actually prevent someone else from later coming along and claiming that despite your publishing of the technology, they were the first to have the idea so should get a patent anyway.
It's not really an abuse, since that's essentially what a provisional patent is: a placeholder for your future claim. It gives you a year to decide if you want to follow up with a non-provisional patent.
But be aware that the provisional will not do what you want... if I understand correctly, unless you follow up with a non-provisional patent, your provisional will not count as prior art. Or proof that you should be credited. In fact, it may as well not exist. That is because it is never published. IANAPatentAttorney/Examiner so some confirmation from one would be good.
Your options now are to either publish it somewhere it counts, or file a non-provisional and then abandon it. (Edit: or see it through; either way it's gonna cost something. Also remember, patent laws are such that if you only implemented it but did not conceptualize it, the PI may be the true inventor. Also, TINLA.)
Also, the "wheel" patent in Australia is something along similar lines. It's a placeholder patent that is never examined, so you can file one for whatever you want. It's only when you want to enforce it that it must be examined and proven valid.
This actually happened to my father, who personally filed a patent for a business he and his wife were starting. The patent got flagged and placed into SAWS and it took nearly 10 years (!) to drive it to resolution (it got issued). He is actually a patent attorney (though not in software) and was only able to find out what happened by back-channeling through some contacts at the patent office. He's been a patent attorney for 35 years and expressed complete shock when he learned about the program.
> Charnes and his colleague Kate Gaudry plan to publish an article for Law360, an online journal, in hopes of informing the public about this program, which they say most companies are wholly unaware of.
Did you consider asking your father to get in touch with these two?
Charnes is identified as "a partner at the firm" and, presumably, Gaudry is as well, but it could only help their article's credibility to have input from a third-party.
A lot of folks miss an important point here.
It does not matter if they delay.
If the PTO delays your app, you get extra time added to your expiration date.
So if they delay examination 10 years,
1. You still get back damages from everyone in the world
2. Your patent will last 10 years longer when it finally does issue.
This is exactly right. I've never even heard of someone getting a patent in under 5 years. The two times I've been issued patents, it took over 7 years and didn't happen until long after I'd left the company that demanded I apply for them.
Patents are not operationally meaningful to startups.
1. Patent pendency times are dropping rapidly these days. The large delays in the early 2000's were allegedly due to an informal internal "reject, reject, reject" policy at the USPTO instituted by the director at the time.
2. Patents may not be important to startups, but having patent applications certainly is. They help a lot in securing VC financing. There are multiple studies and surveys showing this. One less obvious reason why VCs may be interested in patents is studies also show a strong correlation between having patents and making successful exits.
> For instance, three years ago, Franklin submitted an application for a startup that needed to secure crucial patents before it filed for public offering. It was being sued by a large company in the same space, and so it paid the Patent Office an extra fee to fast-track the application.
Reading between the lines a little, it looks like a small company with tech that challenged a big company was being hassled by the big company and needed the patents to put them on a favorable-enough legal footing to not interfere with their IPO.
Sure, but I don't get how this helps. Is it just the bigger company will hold off because you now have "ammunition" to also sue them for infringement in a kind of MAD standoff?
The article (and a sibling comment) also mentions investor reasons ("If it’s a startup trying to get traction against an established player, they may not get funding because they don’t get the patent in place,") but I don't understand why that's the case unless it goes back to some kind of signaling that you won't be an easy legal target. I'd think all a patent would show is that you have an idea, which investors would already know and is true regardless of whether the patent is pending or approved.
Like 95% of engineering R&D is on things that most people would consider pretty mundane. There's armies of people working on degreasers and coagulants and emulsifiers and all sorts of things that aren't per se interesting, but represent the yeoman's work that makes the world go around.
Organic chemistry is very interesting and one of the more patentable stuff because the result and technological processes are not trivially reproducible.
The patent has always been a trade off of disclosure vs exclusivity. You make something innovative tell the public how you do it, you can monetize it for a couple of years - that is your reward for disclosing how stuff works.
But if I can see in a glance what the improvement is and can reproduce it without the need of your disclosure, than it should not be patentable.
Right now we are given the right to patent the outcome, not the road to get there.
Of course with your previous background you could crush me with legal information why the law is the way it is and how everything is legal. And I would not even bother to double check you - you will be right.
But for me the system is broken horribly now.
To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries
We have lost the limited times clause. Copyright is virtually infinite right now. Nothing written by the time we were kids will enter public domain before the time we die. And with clever patent extensions for drugs ... this is going in a bad direction.
I am not constitutional scholar, but for me this clause strongly implies that patent and copyright are for the progress of society and not the authors. So if we are in point where they stifle innovation and progress - the system must be reformed.
The whole point of creating a property right in the fruits of R&D is enabling the market to compensate people for producing R&D. Markets don't work if people can use what you produce without having to pay for it.
That implies that all 570 validly deserve patent protection. Going to go out on a limb here and say that a large chunk of them, if not a majority, should not have been granted.
Look at the BS in the software patents world.. it almost certainly extends to other fields.
The claim is that "novel, non obvious, contain inventive step and useful" implies "interesting". My counter-claim is that the label "interesting" is only going to be true for a very few people. Perhaps even only the inventor.
Even if only 100 of them "deserve" patent protection, how do you conclude that all of them will be interesting? And how many people do you think need to find it interesting?
My underlying point is that patents are nothing to be in awe of. Just because it's patented doesn't mean it's interesting. I get the feeling that you want "interesting" to be a requirement of the patent office. If so, how do you define it?
I'm not sure the document released actually reflects the claims in the articles.
It looks like the intent is not to delay them forever, just to make sure that they don't look silly for allowing any more patents that don't make sense (e.g. perpetual motion machines) through by putting them through more review.
I think they should heavily scrutinise all patents, and so ideally shouldn't need a process like this, but at least putting the patents which are most likely to be bad is better than not scrutinising any patents thoroughly.
The USPTO has pretty much got egg on its face when it comes to some of the patents it has issued in the past. When a performance target is the number of patents approved then this is what happens.
To be able to take a patent in your case load and place it into SAWS just by looking at the area it is in (or appears overly broad) seems be eminently sensible. In effect you are requesting that the patent be reviewed by between 3 and 9 other inspectors.
> Patent applications can be placed in the SAWS program for an extensive number of reasons, which Franklin and his associates call “astonishingly vague.” This includes applications of “broad” or “pioneering scope,” “seemingly frivolous or silly subject matter,” or those “dealing with inventions, which, if issued, would potentially generate unwanted media coverage (i.e., news, blogs, forums).”
They created a secret rule that gives individuals within the USPTO the power to hellban patents at their discretion. There is too much potential for abuse in this system.
Well yes and no, as an inspector you are asking for a peer review of the patent. You start abusing SAWS and it will get noticed. I would assume however that software patents feature quite heavily in this pool of 'bad' patents.
Just to make the matter more concrete, here's an interesting technology which looks like has been stalled[1](not sure if by SAWS or not), which is basically an arithmetic-logic unit that is less precise than current systems, but still useful, for example for vision in UAV's[2], and offers an amazing improvement in of 6400x in speed/power, which could be really disruptive in some computing areas, maybe even AI.
And after the author has done work on the UAV mentioned in [2], there's nothing heard about this tech for civilian uses.
So it's interesting to think what other technologies are hiding out there.
Don't forget there is also a process for secretly declaring any patent that is too novel or related to anything the government doesn't want out as "Top Secret" and frozen forever. At least with the process being described here, the patent still has a chance of approval. The ones declared off-limits get no compensation and are barred from speaking about their inventions, though I have heard of rare instances where they have sued, but they usually lose.
I would imagine the claim is related to the equal protection clause.
EDIT: Thanks for the correction; time for the Google! TIL that some would invoke the Fifth Amendment's Due Process Clause for this situation, while others would expect the court to just throw out the case.
Had not heard of that one. The notion of a shadow organization trying to control the course of humanity is very old. Asimov gave it a shot with "The End of Eternity" which has an amazing final chapter IMHO. But of course the concept is much older than that too.
And a law firm whose job is to get things patented thinks this is a Constitutional issue, because all applications don't get that level of scrutiny.
Sure, it'd be nice if all patent applications got the same level of scrutiny, but in the absence of that, triage makes sense: "hey, this one looks hairy, we're going to need to look at it more closely".
The only thing I'm mildly disappointed by is that one of the categories is effectively "stuff that will make the news"; granted, those are likely to be patents that shouldn't be issued in the first place, but focusing on the PR aspect rather than the sanity-checking aspect seems wrong.