Posted in Innovation, Patent Reform, Patents, Peer to Patent, tagged America Invents Act, Innovation, invention, inventor, patent, patent reform, Peer to Patent, prior art, USPTO on February 4, 2013 |
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by Manny Schecter, IBM Chief Patent Counsel
As the leading recipient of U.S. Patents for 20 consecutive years, we take pride in knowing that over the last 20 years the innovative talents of IBM inventors have generated thousands of original ideas and inventions that will enable fundamental advancements in technology and society. We are also proud because we believe patent leadership comes with a responsibility to continuously strive to improve the patent system, and we have taken many steps with a goal of fulfilling that obligation.
Patent leadership is an important reflection of IBM’s commitment to R&D and innovation. We believe our role as a leader places us in a unique position to help shape the patent system in the U.S. to promote innovation. Of course, this is a task that is never truly finished.
Among the steps we’ve taken were to unilaterally commit to raise the bar on the technical content of business method patent applications; organize the Peer to Patent project to validate the ability of the public to assist patent examiners in identifying prior art (a capability now codified in the America Invents Act); promote open innovation by pledging not to assert our patent rights in select areas of societal importance such as open source software, health care, and the environment; and demonstrate how metrics can be used to improve patent system transparency. We have also submitted numerous amicus briefs urging courts to interpret the law so as to best encourage innovation.
These were not actions that promoted our self interest or favored our short term business prospects. We believed, however, that they were in the long-term interest of the health of the patent system and that what is good for innovation is ultimately also good for IBM. That is why we continue to strive to optimize the patent system for all constituents.
Today, with many pundits arguing for the elimination of patents relating to software, we are advocating for the need to continue to protect this pervasive platform for innovation, and pointing out the inconsistency of protecting processes implemented mechanically or electrically (but not protecting the same processes implemented using software).
While some may question our motives, we will continue to take actions that we believe aid the patent system in fulfilling its objective of promoting innovation. We view that as one of the responsibilities of patent leadership.
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This spring, in Microsoft v. i4i, the United States Supreme Court will review an issue fundamental to the enforceability of patents – the proper evidentiary burden for proving that a patent is invalid. Microsoft is urging the Court to lower the challenger’s burden from a showing by “clear and convincing” evidence to a showing by a “preponderance” of the evidence.
The higher clear and convincing evidentiary burden for proving invalidity gives deference to the substantive analysis performed by the US Patent and Trademark Office (USPTO) during patent examination. Under this standard, patents provide a degree of certainty for rights holders, which is very important for innovative businesses whose assets are increasingly held in the form of intellectual property rights. The preponderance standard, on the other hand, would pit the challenger’s evidence equally against the patentee’s, as if the expert examiners at the USPTO had never seen the patent.
In our amicus brief in this case, we argue for targeted jury instructions to ensure all relevant information about patent validity – such as whether the challenger’s prior art had been considered by the USPTO during patent examination – is properly weighed by the jury and placed in the proper context, so invalid patents do not remain in force. A full and fair opportunity to invalidate patents is as important to promoting innovation as a patent system that provides incentives to inventors through valuable and stable patent rights.
Another approach originally presented by Microsoft is a “dual standard,” which applies a preponderance burden to invalidity challenges based on prior art not considered by the USPTO, while adhering to the clear and convincing burden for prior art that was already considered. As we explain in our amicus brief, we believe a dual standard is unworkable, in part because it would confuse jurors.
Some amici have argued that the lower preponderance burden is appropriate because the USPTO is struggling and issues “bad” or low-quality patents. But lowering the burden does not help the USPTO or improve the patent system. Improving patent quality should begin at the beginning, with high quality patent applications and patent examination. As regular readers of this blog know, IBM strongly supports initiatives such as Peer to Patent which are designed to improve the examination process and help the USPTO do what it is designed to do – issue valid patents.
For Supreme Court term that has taken on numerous patent cases, this case may be the one of the most important, and thus the most compelling reason to keep our attention on the Court this spring.
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“Everybody talks about the weather but nobody does anything about it.” Rumor has it this old saw came from Mark Twain
and he could just as easily have been talking about patents. The commonly heard gripe is that there are too many bad patents being granted on stuff that is old or plainly obvious to anyone who knows about the field of the invention. The big difference with patents is that, unlike the weather, we do have a chance to do something about it. The peer to patent projec
t (P2P) is all about providing PHOSITAs
(that is people having ordinary skill in the art – aka those people who know about the field of an invention) with the means to share their knowledge with patent examiners to help them make better decisions in granting patents. In its third year now, the Peer to Patent project has sponsored pilot programs at the U.S., Japanese, and Australian patent offices and has encouraged other patent offices to consider pilot programs.
In these pilots, published patent applications are placed on special websites that enable members of the public who have signed up as peers to review these applications and submit prior art to the site. The community of registered peers then ranks submitted prior art in terms of its relevance to the patent application, and the top prior art items are passed on to the examiner to consider as part of the examination process. This is a simple and powerful example of the application of crowdsourcing principles that have been at the heart of other successful projects such as the open source software movement, to the patent examination process. The results of the U.S. pilot, which was completed in June 2009 and is rumored to be restarting with expanded subject matter areas this month, have been promising and show that communities of experts are motivated to provide prior art (after all they are the people who will have to deal most directly with the consequences of a wrongly granted patent in their field) and that their input can improve decision making in the patent examination process.
A conference was held in Geneva last week at the offices of WIPO for members of patent offices from countries and international filing agencies that have previously or are currently running P2P pilots as well as those considering pilots in the near future. Joining them was a group of interested patent professionals from industry and academia including Manny Schecter, IBM’s Chief Patent Counsel. At this conference, the attendees shared experiences and exchanged their visions for the future of this exciting work with an eye toward making peer review a regular part of the patent examination process on a national and global scale. One item of great interest in this regard is the notion of sharing the prior art uncovered by peers among different patent offices examining counterpart applications for a given invention.
This is good news for fans of P2P. Peer to Patent gives patent quality advocates a means to move from “everyone talks about it” to “everyone acts on it,” and if we do this right we will most certainly clear some clouds of doubt from the patent system.
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