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Topic: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY (Read 25508 times) |
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JimIvey
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #5 on: Jan 17th, 2006, 12:54pm » |
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on Jan 17th, 2006, 11:53am, Cibola wrote:| ... it was once alleged that the USPTO grants patents on 97% of all applications. |
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Of course, I'm not telling practitioners anything they don't already know, but this number is misleading. My very unscientific estimate would be that more than half of those applications as issued have undergone significant modification and probably substantial narrowing during prosecution before issuing as any patent at all. I've seen applications (prosecuted by others) with no less than 6 amendments before anything issues. To suggest that the Patent Office is laying down and allowing anything with such a statistic is so misleading as to be intellectually dishonest (and, I understand Cibola was just quoting another).
My unscientific guesstimate is that fewer than 25% of application are allowed without substantial narrowing during prosecution -- perhaps fewer than 15% or even 10%.
The reality is that it's extremely rare that an applicant's specific implementation is so exactly duplicative of prior implementations that the applicant can't get some level of patent protection, albeit fairly narrow at times. That "extremely rare" circumstance is probably at or below the 3% suggested by the statistic. More often, I find applicants determine that, although they could get very narrow protection in view of circumstances revealed during prosecution, the narrowness of the available protection does not justify the expense and effort of continuing the application. I would guess that such determinations make up the difference between the "extremely rare" case I mentioned and the quoted 3%. The remainder accept the substantially narrowed protection to allow the case to issue.
In short, anyone who thinks that they can get any application issued should be in this business and doing it. There would be much demand for someone with such talents. And, the fact that talents are required belies the quoted statistic.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #6 on: Jan 17th, 2006, 7:21pm » |
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Of Quillen and Webster's "97%" patent grant rate number, the important point to note is that it is not accurate, even though Professor Wagner may have cited it in 2005. Some interesting discussion may be found at http://talkaboutbusinesses.com/group/misc.int-property/messages/65029.ht ml.
Of Wagner's approach, which incorporates information from re-exams and litigations, one notes that the Eolas patent, which has survived litigation and re-exam, would probably ring out as a high quality patent, perhaps not the result expected by the open source folks. Separately, the search for claim terms not defined in the specification as an indicator of "low" quality might be a bit deceptive; as one example, the term "melting point" might not be defined in the spec but would not be harmful to the validity of the patent.
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #7 on: Jan 17th, 2006, 9:17pm » |
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Further discussion of the deficiencies of the method underlying the "97%" [and "85%"] patent grant rate allegations may be found in jip.kentlaw.edu/art/volume%204/ 4%20Chi-Kent%20J%20Intell%20Prop%20186.doc.
One notes that many academics, including not only Wagner but also Lemley and Moore bought into the Quillen/Webster approach without reviewing the compelling evidence against it. In the present situation, with the patent quality index, one hopes that there will be a more serious analysis of a proposal to identify high and low quality patents. Although there may be a lot of traction on the patent "quality" issue, one has to avoid being drawn into research that amounts to telling people what they want to hear, as happened vividly in the publication by the journal Science of two fraudulent papers on human embryonic stem cells by Hwang Woo Suk.
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JimIvey
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #8 on: Jan 18th, 2006, 9:30am » |
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Thanks for the link. While I have the utmost respect for at least one of the pundits named in the article (the others I don't know), I have two major problems with the theory that a large percentage of applications allowed/issued equates to too many patents covering known things.
First, as I mentioned above, none of this takes into account that claims are allowed, not applications -- and that claims are often amended in significant ways (or broadest ones canceled while narrower ones issue). I think a much more interesting statistic would be the percentage of claims are issued as filed (without modification). And, to be a valid statistic, all claims depending from any modified claims are to be considered modified (even if the actual text of the dependent claim was not modified). Of course, cancelation counts as modification unless an identical claim was later filed in a child application (continuation, divisional, CIP) or even added back to the same application (that happens).
My very rough guess would be 10% or less of all filed claims are allowed without modification of any kind. Perhaps 15% are allowed without any substantive modification (I know, a subjective criteria that's hard to evaluate -- but that's the nature of the patent business).
So, the presumption that allowance of many applications means the Patent Office isn't a meaningful filter is just not valid from the quoted statistics.
My second problem is the logical leap from many applications issued to many applications improperly issued. It's simply not a valid assumption.
The closest thing to any kind of comprehensive study on this is a rumored quality assurance program within the USPTO in which they privately re-examine cases selected somewhat randomly to evaluate the performance of examiners. I don't know the results (don't even know the program really exists), but I seem to remember hearing rumors of a confirming conclusion (positive evaluation) in at least two-thirds or three-quarters of all evaluated cases.
I don't think one can reasonably believe (without substantial doubt) that the quoted statistic is anything approaching conclusive proof of a patent system run amok. I think significant corraboration is required before such a belief (as opposed to unfounded opinion) is reasonable.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #9 on: Jan 18th, 2006, 11:06am » |
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In this discussion, we have at least two themes:
-->first, what Quillen and Webster put forward in two papers (Q1 and Q2), with Wagner having adopted the 97% grant rate of Q1 and Lemley and Moore (and others) having adopted the 85% number of Q2.
-->second, what Wagner is proposing to do with a quality index in the context of the cooperative venture among open source people, IBM (and others), and the USPTO.
Of the first issue, I agree with your points that the claims define the invention (which is missed in both Q1 and Q2) and that the number of unchanged claims in the prosecution of applications is less than 50%. Discussion of this number came out in the Festo case, wherein the parties discussed the scope of the impact of the absolute bar. Additionally, the presumption that the patent grant rate is an indicator of patent quality can be questioned. Looking only at grant rate does not address the scope of the allowed claims, which can be distinct from the scope of the submitted claims. In the final report by the National Academy of Sciences, the panel did not rely on the numbers of Quillen and Webster, but did rely on a perceived higher grant rate in the US relative to Japan and Europe to infer the presence of a patent quality issue in the United States. The NAS panel did not contemplate the impact of different rules among the US, Japan and Europe.
The patent quality issue served as common ground to involve many players dissatisfied with the patent system to get traction for patent reform, in the body of HR 2795. However, disagreement over the injunction issue among major players killed off 2795. Of course, 2795 was disconnected from the fee diversion issue, which also went nowhere. In the end, the USPTO pretty much ended up where it started.
Enter the open source initiative. Here, the PTO gets access to "free" resources to aid in the evaluation of a problematic area. Not a problem. But tacked on is a lingering vestige of the quality discussion, spearheaded by someone who thinks the PTO grants patents on 97% of all applications. In one irony, using the proposed metrics (including re-exam and litigation success), the Eolas patent, a poster child of evil to many in open source, will look like a high quality patent. [As an aside, note that the re-exam of the Eolas patent which has now concluded was initiated by the USPTO director (with a strong push by W3C), and not by Microsoft; we now apparently have a different re-exam.] In another irony, the quality examination initiative proposed by Wagner appears to fall within the scope of an issued, in-force US patent. If the open source folks use a patented approach to evaluate patents, doesn't that undercut their underlying claim to fame a bit?
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