Interesting Times for Patents
Patent reform got a lot of attention in 2008. Depending on your point of view, the United States patent system is either badly flawed or just fine, thank you. Court decisions have forced inventors and their counsel to reconsider the way patent claims are drawn and even whether certain kinds of inventions - such as business methods and computer software - are patentable at all.
What does this have to do with marketing? Well, before you start to market a product or service you had better figure out your unique position in the marketplace. This may have nothing to do with technology; your unique market position may be more related to something like channel presence or pricing. But if you are marketing a first-of-its-kind product, one element of your uniqueness will likely be technical novelty. And one way to protect that unique position is through the patent system.
If you are responsible for marketing strategy, you should pay attention to your company’s patent portfolio. Make sure it protects your unique position. If it doesn’t, either get those patents filed or choose another dimension of market uniqueness. And when patent applications are filed, make sure the claims are well crafted so that any patents that issue won’t be summarily invalidated by attacks from competitors.
The blogosphere is full of articles lamenting the stupidity of patent examiners and judges. For example, the United States Supreme Court decided KSR - dramatically increasing the likelihood that an invention might be considered obvious, and thus unpatentable. Then in in re Bilski, the Federal Circuit set more stringent limits on so-called methods claims, where an invention consists of a series of steps rather than a specific machine or device. This decision, which calls into question many software patents as well, has many observers commenting that the courts have badly misunderstood patent law as it applies to modern technology such as computers. Since these decisions came down, examiners at the the United States Patent Office have allegedly been citing them frequently as they reject patent claims left and right.
But let’s give examiners and the courts the benefit of the doubt. Legislative and case law don’t move as quickly as technology. Nowhere near as fast, in fact. (Most of the time that’s a GOOD thing.)
We’re in one of those periods now. Things are confusing. Decisions by examiners and courts are not always consistent. That’s the penalty we pay for living in interesting times.
But I think we can help. We can draft claims better. We can frame arguments better. We can prosecute in ways that illuminate and define core issues instead of obscure and muddle them.
In the Bilski decision that in turn cites the earlier decision in re Abele, it seems pretty clear that one essential criterion for successful claims is to avoid “pre-emption of fundamental principles”. Claiming “visual X-rays” as a concept is unpatentable; claiming a specific machine that displays nice X-rays in a specific manner is OK even though the X-ray data are not “tangible”. Of course, it gets muddier when you claim a tricky way to manipulate pixels so that you can display the nice X-ray faster than anyone else can.
But I suspect that good claim language could express that tricky manipulation in a patentable way without making the method sound like a “fundamental principle”. We technologists know that efficient pixel manipulation is a “useful art” and not at all obvious to most practitioners. It is our obligation to effectively communicate this to examiners and courts!
In my example, to avoid the “fundamental principle” trap, the prosecutor would have to do more than simply prefix the claim with “A processor-based method in which…” Horror of horrors, the inventor would have to clearly express and the prosecuting counsel would have to clearly document the specificity and novelty of the invention. Boilerplate leads to bad claims.
So what’s the real problem: Unpatentability? Or failure on the part of inventors and prosecutors to frame claims as they know they must? (And always had to, even in the 1800s.)
If you are responsible for defending your product’s market position, and if you are using patents as one tool to accomplish that, you should get smart about the current state of patent law and make sure the patents you depend on will survive KSR, Bilski, and whatever is coming next.
January 26th, 2009 at 6:23 pm
Hey there Carl,
I didn’t want to rant on and on at Patent Hawk’s site. But quite frankly, I think this is a time for patent practitioners to object vociferously –and yes through blogs– about the unsupportable positions that the judges and the Patent Office are taking. When government does wrong, it is the duty of the citizenry to seek redress by way of petition and free speech.
Filing law suits and fighting the USPTO during prosecution is not “free” speech because some poor client is paying for my or some other lawyer’s billable hour rate and most of them simply can’t afford to be the trailblazing pioneer who takes on the powers to be (TPTB) for that price.
We are not in one of those periods where “Things are confusing [and] Decisions by examiners and courts are not always consistent.”
We are in one of those periods where for the last 8 to 16 years, the incumbent administrations (Clinton and Bush Jr.) have installed anti-inventor, pro-big-business bureaucrats into every nook and cranny of the courts and the agencies. The anti-inventor decision making of the courts and the USPTO is very consistent and very unfair. That’s what I’m complaining about. Inventors play by the rules and then TPTB change the rules midstream. Stop blaming the inventors and start pointing the finger of blame at inept judges and corrupt PTO bureaucrats. As for “whatever is coming next”, nobody expects the Spanish Inquisition and yet it comes (unless we do everything in our powers to stop it). Cheers.