USPTO Says Copies Of Academic Articles Submitted As Prior Art Are Covered By Fair Use

With all the heat that publishers are starting to feel from the academic community, you might have thought that they'd avoid upsetting anyone else. But it seems that some publishers have decided to go after lawyers who make patent applications that include copies of academic articles as prior art. As the PatentlyO blog explains: 

On Techdirt.

Botching Bilski

So, the long-awaited US Supreme Court ruling on Bilski vs. Kappos has appeared – and it's a mess. Where many hoped fervently for some clarity to be brought to the ill-defined rules for patenting business methods and software in the US, the court instead was timid in the extreme. It confirmed the lower court's decision that the original Bilski business method was not patentable, but did little to limit business patents in general. And that, by implication, meant that there was no major implication for software patents in the US.

On Open Enterprise blog.

Patents *Are* Monopolies: It's Official

As long-suffering readers of this blog will know, I refer to patents and copyrights as intellectual monopolies because, well, that's what they are. But there are some who refuse to accept this, citing all kinds of specious reasons why it's not correct.

Well, here's someone else who agrees with me:

A further and more significant change may come from the President's nomination of David Kappos of IBM to be the next Director of the Patent Office. While in the past, IBM was a prolific filer of patent applications, many of them covering business methods and software, it has filed an amicus brief in Bilski opposing the patentability of business method patents. However, and perhaps not surprisingly, IBM defends approval of software patents.

Mr. Kappos announced his opposition to business method patents last year by stating that "[y]ou're creating a new 20-year monopoly for no good reason."

Yup: the next Director of the USPTO says patents are monopolies: it's official. (Via @schestowitz.)

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India Fights Patents with Huge Prior Art Database

One of the many problems with the patent offices around the world is that they are often unaware of prior art, granting patents for so-called inventions that are, in fact, common knowledge. In the computer world, there have been a number of efforts to provide prior art to patent offices, either after a patent is granted, in order to have it rescinded, or – even better – as part of the examination process. That's fine for a community with easy access to online source materials, but what about other fields, where prior art exists in other forms like books, or perhaps orally?

This is a particularly thorny problem for the sphere of traditional medicine. Substances derived from plants, for example, may have been in use for literally thousands of years, and yet patents may still be granted – especially in Western countries ignorant of other ancient medical traditions.

Perhaps the best-known example of this is the case of turmeric, commonly used as a spice in curries, for which patents were granted in 1995 on its wound healing properties by the US Patent Office, even though these supposedly novel uses had in fact been known for millennia.

To combat this problem, and to prevent its huge traditional knowledge basis being exploited in this way, India has created the Traditional Knowledge Digital Library (TKDL) database, which was unveiled on 2 February, and is now available to the Patent Examiners at the European Patent Office for establishing prior art in case of patent applications based on Indian systems of medicine.

Here's some background information on how the database came to be created and was set up:

The genesis of this maiden Indian effort dates back to the year 2000, when an interdisciplinary Task Force of experts was set up by AYUSH and CSIR, to devise a mechanism on protection of India’s traditional knowledge. The TKDL expert group estimated that about 2000 number of wrong patents concerning Indian systems of medicine were being granted every year at international level, mainly due to the fact that, India’s traditional medicine knowledge exists in languages such as Sanskrit, Hindi, Arabic, Urdu, Tamil etc. and was neither accessible nor understood by patent examiners at the international patent offices due to language and format barriers.

The TKDL breaks these barriers and has been able to scientifically convert and structure the information available in languages like Hindi, Sanskrit, Arabic, Persian, Urdu and Tamil, in open domain text books into five international languages, namely, English, Japanese, French, German and Spanish, with information contents in 30 million A4 size pages, with the help of Information Technology tools and a novel classification system - Traditional Knowledge Resource Classification (TKRC).

This is a huge, multilingual resource – something that could only be put together with governmental support and resources. It is also fairly specific to the domain of traditional knowledge. Nonetheless, it's a great example of how an extensive prior art database can be created and then made readily available to the patent authorities in order to help prevent patents being granted unjustifiably. It's a pity that we are unlikely to see anything quite like it for other knowledge domains.

The Death of US Software Patents?

That seems to be the conclusion in this amazing posting by John F. Duffy on the Patently O patent law blog:

The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents, including pioneering patent claims to such innovators as Google, Inc.

...

The logic of the PTO’s positions in Nuijten, Comiskey and Bilski has always threatened to destabilize whole fields of patenting, most especially in the field of software patents. If the PTO’s test is followed, the crucial question for the vitality of patents on computer implemented inventions is whether a general purpose computer qualifies as a “particular” machine within the meaning of the agency’s test. In two recent decisions announced after the oral arguments in the Bilski case, Ex parte Langemyr (May 28, 2008) and Ex parte Wasynczuk (June 2, 2008), the PTO Board of Patent Appeals and Interferences has now supplied an answer to that question: A general purpose computer is not a particular machine, and thus innovative software processes are unpatentable if they are tied only to a general purpose computer.

Wow. It's probably a little early to break out the virtual champagne, but here's hoping....

Update: The ever-dependable Mike Masnick picks apart the story here, which is not all it seems, alas....

Amazon One-Click Patent Struck Down

Here's an amazing victory:

In a recent office action, the USPTO has rejected the claims of the Amazon.com one-click patent following the re-examination request that I filed on 16 February 2006.

My review resulted in the broadest claims of the patent being ruled invalid.

In its Office Action released 9 October 2007, the Patent Office found that the prior art I found and submitted completely anticipated the broadest claims of the patent, U.S. Patent No. 5,960,411.

I had only requested the USPTO look at claims 11, 14, 15, 16, 17, 21 and 22 but the Office Action rejects claims 11-26 and claims 1-5 as well!

What's particularly remarkable is that this has happened through the dogged perseverance of one individual: Peter Calveley.

Kudos, sir. (Via Boing Boing.)

US Patent Reform Slouches Towards Bethlehem

But at last it seems to be happening:

This case involved a guy who was trying to patent the concept of "mandatory arbitration involving legal documents." The USPTO denied the patent. After a failed appeal, the guy went to court, and CAFC is also saying that his concept does not deserve patent protection, with this being the key quote: "The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness." In other words, simply taking a common process and automating it on a computer should be considered obvious -- and thus, not patentable. This doesn't rule out business model or software patents by any means -- but it at least suggests that the courts are beginning to recognize that the patent system has gone out of control. The court also specifically addresses its own earlier State Street decision, suggesting that people had been misinterpreting it to mean any business model was patentable -- when the USPTO and the courts should still be applying the same tests to see if the business models are patentable. It then notes that a business model on its own shouldn't be patentable unless it's tied to some sort of product, and then states: "It is thus clear that the present statute does not allow patents to be issued on particular business systems -- such as a particular type of arbitration -- that depend entirely on the use of mental processes."

Glimmer of Hope for US Patent System

A small step towards patent sanity has been taken:

The House approved the most sweeping changes to United States patent law in more than half a century on Friday in a victory for computer companies like Microsoft and finance companies like Goldman Sachs.

Specifically:

The measure passed by the House would change the rules at the Patent and Trademark Office so patents would go to the first person to file an application, not necessarily the first inventor. That would limit years-long disputes over who was the first to invent new technology and would bring the United States in line with other countries’ patent rules. It would also allow third parties to introduce evidence against applications and would create a system, called post-grant opposition, to challenge new patents.

In litigation, it would limit where patent suits could be filed so that cases are not concentrated in court districts deemed favorable to plaintiffs, create a new way to calculate damages to reflect the contribution of the invention to the overall product and allow immediate appeals of court rulings on the interpretation of patent terms while cases are proceeding.

Closing off Microsoft's Patent Options

Patents are boring - but important. They are the chokepoint for much intellectual activity - especially the kind discussed in these pages - so anything that can be done to loosen their grip on the free interchange of ideas is welcome.

Against this background, the announcement by the US Patent and Trademark Office (USPTO) that it has "created a partnership with the open source community to ensure that patent examiners have access to all available prior art relating to software code during the patent examination process" is an encouraging step, since software patents are some of the most problematic of all (see Richard Stallman's brilliant explanation of why). However, this is a statement of intent, rather than a concrete move, and it remains to be seen what practical effect it will have on stemming the flood of trivial or downright bad patents being granted by the USPTO.

Meanwhile, the USPTO has upheld Microsoft's patent on the File Allocation Table (FAT) storage technology. This is bad news: it represents both a direct defeat for the open source world, which sought to overturn it, and a sword of Damocles that henceforth will hang over the entire free software movement. The danger is that Microsoft will demand royalties - maybe even "reasonable and non-discriminatory" ones - that will be impossible for free software projects that use the FAT technology to pay.

Update: On the other hand, maybe it's not over yet...(who said patents were boring?)

Update 2: For a view on the USPTO initiative from inside one of the companies helping to make it happen - IBM - see this excellent post by Irving Wladawsky-Berger. Anyone who's read my Rebel Code will know that he was the man who essentially turned Big Blue onto GNU/Linux. This means that he is someone with his finger on the pulse, and that his blog is well worth following.