Patent Reform is in the Air

On February 15, the House IP Subcommittee held a hearing on “The Case for Patent Reform.” All four seats at the table called for change:

  • Adam B. Jaffe, Professor and Dean, Brandeis University
  • Suzanne Michel, Chief Intellectual Property Counsel, FTC
  • Mark Myers, National Academy of Science (Former Xerox Exec)
  • Daniel B. Ravicher, Activist, PubPat


The key to more efficient patent examination is to go beyond thinking about what patent examiners do, to consider how the nature of the examination process affects the behavior of inventors and firms. To put it crudely, if the patent office allows bad patents to issue, this encourages people with bad applications to show up. While the increase in the rate of patent applications over the last two decades is driven by many factors, one important factor is the simple fact that it has gotten so much easier to get a patent, so applications that never would have been submitted before now look like they are worth a try. Conversely, if the PTO pretty consistently rejected applications for bad patents, people would understand that bad applications are a waste of time and money.


Unlike tangible forms of property, such as real estate, patent boundaries are almost always poorly defined. Many patents are written in vague or obscure language, claim construction procedures are uncertain and vary from judge to judge, existing claims are hidden in the pipeline at the Patent Office, and the use of abstract terms allows patents to cover far more technology than what was actually invented. One sign of how difficult it is for people to determine exactly what a patent does and does not cover is the fact that more than a third of all district court judges, after performing a thorough analysis of a patent’s claims, have their construction of those claims reversed by the CAFC.

If Federal Judges can’t agree on what claim terms mean, how can we expect the average American business person or individual inventor to do so. . . . .

[I]n order to address the problem of fuzzy patent boundaries, a patent’s validity should always be analyzed according to the broadest reasonable interpretation of its claims, because that is the construction of the patent that the public will generally abide by until the patent is reviewed by a court, and the currently dormant statutory prohibition against indefinite claim language should be awakened and strengthened.

Mark MyersMyers:

High rates of technological innovation, especially in the 1990s but continuing to this day, suggest that the patent system is not broken and does not require fundamental changes. Nevertheless [we should address] . . . consistent patent quality . . . harmonization . . . publication [of all filed applications] . . . [reducing] litigation costs . . . [and] patent thickets.

Michel [1][2]:

The [FTC] Report recommended creation of a new administrative procedure for post-grant review and opposition that allows for meaningful challenges to patent validity short of federal court litigation. Existing means for challenging questionable patents are inadequate. Patent prosecution is ex parte, involving only the PTO and the patent applicant, even though third parties in the same field as a patent applicant may have the best information and expertise with which to assist in the evaluation of a patent application.


  • I’m ignoring the HR977 that would end gene patenting because it is going nowhere. It would add the following language: `Notwithstanding any other provision of law, no patent may be obtained for a nucleotide sequence, or its functions or correlations, or the naturally occurring products it specifies.’.
  • S. 316, on the other hand, may get some legs. That bill would eliminate generic reverse payments. Leahy

52 thoughts on “Patent Reform is in the Air

  1. 52

    OK, small guy, I think we might be getting somewhere.

    I’m not saying ALL corporate counsels are “spineless” – far from it. Its also probably not the big guys who I’m talking about. I AM saying the people who pay out on patents and then turn around and complain that the same patents are “bad” are not being very bold or genuine, and, but for thier payment on it, the “bad” patent would have otherwise just sat there in the PTO being “bad” all by itself and not hurting anyone except for the occasional ping by an academic research project on patent reform.

    There used to be a little thing called licensee estoppel that I have heard about anecdotally from icons like my former professor – Irving Kayton. However, it is not presently a favorite in the law; you certainly can challenge the validity of a patent you are licensing in. Perhaps such a doctrine should be revisited to make parties think twice before licensing a patent they believe to be “bad.”

    As for your experience with the big corporations, its like I said in an earlier post, if I was a corporate counsel for a large corporation, I would NOT necessarily advocate paying out on a claim from a mall guy or a “troll,” if I thought the underlying patent was “bad” since I would not want to be perceived as weak thus inviting a flood of similar demands.

    That being said, if your experience is that you, as a small patent holder, have had difficulties asserting your patent against a big guy, then I’m truly sorry. I can’t really opine without more facts.

    But I will say that while they may ignore a letter, they sure can’t ignore a suit in federal district court. Channel some of your frustration into action if you can afford it. Be careful with your letters however, as someone already pointed out, a sniff of the threat of litigation may be sufficient to invoke some changes in your legal landscape and lead to a DJ action on the validity of your patent before you can even get your gun out of the holster.

    DISCLAIMER: The above commentary is not to be construed as legal advice nor is the above commentary sufficient to give rise to an attorney-client relationship – I’m just a cave man.

    But I do know one thing, actions speak louder than words, even when those words are written in a C&D letter.

  2. 51


    Just where did you see those “spineless” corporate attorneys ???
    Just one example, please ? IBM, Intel, MS, HP, TI, Apple, Motorola, Nokia … ???

    As far as guys like me are concerned they are all sharks in expensive suits…
    These big corporations NEVER pay when they recieve a letter from a small patent holder – the validity of a patent claim is not even an issue here…

    Like I said, all patents asserted against them by small patent holders are “BAD patents” by definition, without a single exception.

  3. 50

    All I want to say to you, small guy, with all due respect is: “start making sense.”

    What you’re saying then is that 1) you agree with me that “spineless” corporate attorneys should NOT simply pay because someone sends them a letter.

    On the other hand, you’re saying that 2) no one will pay unless they fear a court-ordered injunction or a costly legal battle. So you also agree with me that some WILL pay if they, for example, fear “a costly legal battle.”

    So I’m not sure with whom you are arguing. Sounds like you might just be frustrated because you don’t think that small guys even have a chance to assert thier portfolios. If what you are saying is right, then what’s all the fuss about with patent reform? A large component of the motiviation for patent reform is the small guy (perhaps read “troll” here) waving a “bad” patent at a big guy and trying to make them pay.

    To summarize what I have been trying to say, is that it is up to the parties who are faced with the threat of enforcement to make a determination whether one, some or all of the patent(s)-at-issue include these so-called “bad” patents. If so, the parties should make the quality of the patent an issue during attempts at enforcement.

    BTW, I fairly certain you don’t have to sell anyone around here on whether Don Stout knows what he’s doing or saying.

  4. 49


    All I want to say is that no company (at least in tech field) will voluntarily pay patent royalty unless they fear a cort-ordered injunction or at least some very costly legal battle.
    Nobody will pay a dime to a small patent holder until that small patent holder gets finally pissed off and somehow morphes into a big and ugly troll creature.
    This is called “capitalism”.
    As Donald Stout recently said (and the guy knows what he’s talking about…)
    “In the world of patents, you’re not going to get any traction unless you’re willing to enforce them”.

    The recent Ebay decision is an open invitation for large corporations to infringe on all patents owned by small entities.

  5. 48

    small guy, again, I’m not sure what your point is. Do you disagree or agree with the notion that some might pay up to the cost of determining the solidity of a patent (assuming of course they have a gut feel that the patent is valid or that the small guy might sue). Remember, I’m also the guy who said “spineless” corporate attorneys shouldn’t just settle without understanding whether they are dealing with a good patent. You had a problem with that too. Where exactly do you stand here my little friend?

    To be clear on my point, I said “I have heard” about companies that will pay a small settlement that is smaller than the cost of shaking out a patent. And, if true, it would seem like rational behavior, I’m not saying I would do it.

  6. 47

    Can we all agree that “Quality” is meaningless till you’ve collected meaningful numerical data and that quality means consistency. Camel back curves of allowance ratio strikes me as prima facie evidence in itself that “the system” needs a fix. Whether an Examiner allows seems to have more to do with management expediency than with the patentability of the subject matter. Or not?

  7. 45

    I have to register my agreement with Step_Back and others who are saying: show us the numbers.

    The PTO’s most recent statistics show that the allowance rate and error rate are at their lowest ever (just 54% allowance) — going back 30 years.

    With all due respect, it simply confounds me that an economist like Dr. Jaffe can continue to make assertions that more “bad patents” are being granted at a higher rate.

    First, this sort of assertion is made both in the Innovation book and now, apparently to Congress, without providing supporting empirical, quantitative data. To me, economists operate in the realm of science in that empirical-quantitative data, not anecdotal-bullet-point data, supports their analysis unless stated otherwise.

    Second, this unsupported assertion about allowance rate is flatly contradicted by empirical data that shows the PTO’s allowance rate on the steep decline.

  8. 44

    CaveMan wrote:
    “I have heard of companies that will assess the cost of determining whether the patent has merit and pay out up to that amount as a settlement without doing more. That is rational business.”

    What a rosy picture you have in your mind…
    I have to dissapoint you – the reality is harsh and it almost looks irrational, from short-term monetary perspective at least…
    From where I stand I can clearly see that those big tech corps will spend millions and millions on legal defense and political lobbying just NOT to allow a few inventors to make a very small profit (not even seven figures) from royalties on their VALID patents.
    “Draw the blood out of those little suckers before they can get to you – that will teach them…”
    And God forbid you from sending cease and desist letter without being able (financially) to sue them for patent infringement -they will immediately bring a DJ lawsuit againts you in a foreign jurisdiction, essentially trying to bankrupt you..
    It’s rough out there, man…

  9. 43

    Small guy, not sure what you are saying, or whether you agree or disagree. You claim that payment of royalties is based on the percieved threat of litigation, but NEVER on the quality of the patent??? You are essentially making my point for me.

    If corporate officers would stop for a minute and analyze the quality of the patent in question (which I’m sure many do), then they would be in a better position to determine whether the “perceived threat of litigation” is genuine. If the patent looks weak, then they can demure from a royalty payment or cessation demand.

    I have heard of companies that will assess the cost of determining whether the patent has merit and pay out up to that amount as a settlement without doing more. That is rational business. However, I submit that such a practice can brand a company as weak and encourage others to do the same.

    Do you answer all calls from telemarketers?

  10. 41

    Hey, softwarevisualization,

    Your posts show some astounding ignorance (is it really “ignorance”, or you are one of those “patent fairness” guys ? 🙂

    Take a good look at your cell phone – it has a DSP chip inside running all those patented “algorithms” you apparently have a problem with…
    Now, answer a question: is your cell phone a pure abstract software ?
    It certainly looks like something very tangible and useful, right ?

    So-called “software” patents are for here to stay, simply because there is no such animal as “software patent” per se. Get a life, man…

  11. 40

    CaveMan said:
    “If spineless corporate attorneys and officers want to pay out on bad patents, they are the problem; not the patent system. If the patent is legitimate, they should pay. If Jaffe simply believes that all patents are bad, then he should say so. Ignorance and fear are the biggest problems, not bad patents”

    The reality, of course, is much much worse than you paint it here: for those big serial corporate infringers ALL patent asserted by small patent holders are BAD, without a single exception.
    The decision by a big corporation to pay royalty for patented technology is based solely on the percieved threat of litigation and NEVER on the quality of a patent in question.
    And NO, ignorance is NOT a problem here – those fellas (including some renowned university “scholars”) know what they are doing all too well.

  12. 38

    I posted the following on another thread (peer to patent) that I thought might be useful here…

    What might be useful in the U.S. would be a short, pre-grant opposition period where parties have a time limited opportunity to submit art vis-a-vis 37 C.F.R. 1.99 prior to grant. They can still submit art at any time after publication, but have a last opportunity during this period, such as for 1 month or up to 3 months after a Notice of Allowance is mailed.

    Also, during this period or at a prior time such as after publication, any parties that are potentially infringing and may become subject to litigation once the patent issues, could be identified by the patentee at the patentee’s discretion with some advantage or disadvantage accruing. One disadvantage to the patentee of not identifying potential infringers might include the waiver of a willfullness allegation. On the other hand, parties are identified who subsequently fail to submit art during this period, thier defenses could become limited and reasonable presumptions could arise in the area of, for exampe, willfullness if it is shown that they knew of the patent, which in this context they surely would.

  13. 37

    No reply necessary Max, I just wanted to brag about my EPO opposition response. It was against Siemens, who, as I understand it, routinely opposes any and all grants that have anything remotely to do with thier technology. I’m not saying that opposition is a bad practice if its available, but it kind of interferes with and can delay enforcement.

    What might be useful in the U.S. would be a short, pre-grant opposition period where parties have a time limimted opportunity to submit art vis-a-vis 37 C.F.R. 1.99 prior to grant. They can still submit art at any time after publication, but have a last opportunity during this period, such as for 1 month or up to 3 months after a Notice of Allowance is mailed.

    Also, during this period or at a prior time such as after publication, any parties that are potentially infringing and may become subject to litigation once the patent issues, could be identified by the patentee at the patentee’s discretion with some advantage accruing. Such as the waiver of a willfullness allegation by the patentee. Then, if the identified parties fail to submit art during this period thier rights could become limited and reasonable presumptions could arise in the area of, for exampe, willfullness.

  14. 36

    To CaveMan, I read you but am not sure what you want from me in reply. Opposition at the EPO is your last chance of a “central attack” before the grant certificate fragments into national patents, of independent validity, all over Europe. That might be one reason people oppose. But opposition proceedings at the EPO represent a great opportunity for the patentee to arm his defenceless baby Europat with a presumption of validity, to make it into something people will respect, despite our “preponderance” standard to get to a finding of invalidity. Opposition at the (civil law) EPO might be a nice example of “What doesn’t kill you makes you stronger”. And, in its examination of oppositions, the EPO is indeed speeding up.

  15. 34

    Well I’m glad a few more people here are starting to open their eyes and are starting to critically analyze Mr. Jaffe’s testimony.

    Remember to support your assertions with “evidence” when posting to this site.

    This is what lawyers are supposed to do. They are supposed to “discover” the evidence and then to apply logical arguments regarding what the evidence shows to be the more probable version of the truth.

    Discovery has been made that much easier now that we have Google and other search engines. When you see the name of some prestige-puffing pundit, you should immediately google his or her name in a side window. It puts a whole other light on things when you “discover” some enlightening information about that person and their allegedly informed position and their past “alliances” with varaious “coallitions”.

    Keep stepping back to examine the bigger picture.


    See for example:
    link to

    Search for “patent fairness” in this Senate Lobbying list:
    link to

    Look up Berman on this page:
    link to

    Look up Lamar smith on this page:
    link to

    Are you starting to see the pieces of puzzle falling into place?

  16. 33

    While I applaud Mr. Myers’ conclusion that the patent system is not broken, I do have a couple of issues with some of his recommendations to the committee.

    Mr. Myers considers the legal doctrine of willful infringement a “U.S. idiosyncrasy.” Does he also consider ouright piracy a mere idiosyncracy of Asia? I disagree with the characterization of willfullness or inequitable conduct as idiosyncracies although I agree that thier factual determination can be problematic.

    I would only say that the factual basis for establishing willful infringement or inequitable conduct should be more clearly defined so that, for example, a mere pro forma review will not impute knowledge of the kind sufficient to establish the requisite basis for either of these enhanced damages elements. I will say however, that such enhanced damages do encourage parties and thier counsel to take more care – which is not such a bad thing. Willfullness or inequitable conduct should stand if there evidence of active suppression or concealment.

    Mr. Myers also is a harmonization proponent which I totally disagree with, outside of perhaps facilitating cross-national examination, which I already practice. In other words, I try to keep the JPO or EPO examiner apprised of the status of the U.S. case in my JP and EP national stage responses. I don’t see why the USPTO (upon which many of these foriegn systems were modelled) should conform its well established system to that of systems that are in thier relative infancy or at least do not serve the inventing public, but only large corporations. If we do harmonize however, then lets make sure we include inventor provisions, vis-a-vis Nakamura. I’m sure there are more than a few American inventors who would like a large check from thier corporate assignees (something like that would surely silence the harmonization crowd).

  17. 30

    OK, I couldn’t help myself on this one. I found an interesting article with much more useful suggestions co-written by a University of Chicago professor. The other authors are from institutions that, like Brandeis, could be considered hotbeds of leftism. There is some talk of “bad” patents, which I must always take issue with, but the suggestions for change are much more interesting, including paying for a higher level of examination that would result in the current presumption of validity enjoyed by patents. Applicants not paying would receive a patent that would not enjoy the presumption and that could be invalidated, possibly under denovo review, under a preponderance standard.

    link to

    The article mentions post-grant opposition, which I think is a bad idea for many reasons including the one noted above.

  18. 29

    One more thing. When a book on patents “Innovation and Its Discontents:How Our Broken Patent System…” is labeled “provocative” you know something is wrong.

    Even the title has the kind of unsupported presumptions found throughout the book. Jaffe does not title his book “Innovation and Its Disconents:Is Our Patent System Broken?” He has already made that conclusion and wants you to buy into his premise.

    I don’t think the patent system needs a Dr. Phil or an Oprah. Again, any book on patents that purports to be “provocative” should immediately be suspect as originating from a deconstructionist.

    I can see the headlines five years from now “China posts record manufacturing gains, while U.S. trade deficits mount. Many believe patent harmonization led by patent system deconstructors is largely to blame. U.S. Trade Rep Jaffe cannot be reached for comment”

  19. 28

    Mr. Jaffe appears to be attempting to become the Al Gore of the patent system and the “patent system is broken” his global-warming like mantra. Let’s hope we can infuse some common sense into this debate before we all stop practicing patent law and become patent registration automatons and clerks.

  20. 27

    To MaxDrei,

    I resolved an opposition in the EPO in weeks with a well-considered written response on the technical merits. Of course it was because the opposer dropped the opposition on the strenght of the response. All of which is to say that things are capable of moving fast in the EPO.

    What I learned about post-grant opposition, however is that once its available everyone will use it. Especially, the big bullies. Since it is designed to be a lower cost alternative to litigation, the big companies love it since they can get more bang for thier buck and shake out the suckers prior to litigation, while learning much about the case prior to brining it to court.

  21. 26

    P.S. Here is a little research project for doubting Thomas Jefferson’s out there:

    link to

    link to

    excerpt from Abstract of Tale of Two (whatevers):

    “Both theory and empirical evidence suggest that the rate and direction of technological advance is influenced by market and regulatory incentives, and can be cost-effectively harnessed through the use of economic-incentive based policy. In the presence of weak or nonexistent environmental policies, investments in the development and diffusion of new environmentally beneficial technologies are very likely to be less than would be socially desirable. Positive knowledge and adoption spillovers and information problems can further weaken innovation incentives. While environmental technology policy is fraught with difficulties, a long-term view suggests a strategy of experimenting with policy approaches and systematically evaluating their success.”

    If you can’t spot horse manure from this close up, your “cost-effective harness” is on too tight.

  22. 25

    P.S. Here is a little research project for doubting Thomas Jefferson’s out there:

    link to

    link to

    excerpt from Abstract of Tale of Two (whatevers):

    “Both theory and empirical evidence suggest that the rate and direction of technological advance is influenced by market and regulatory incentives, and can be cost-effectively harnessed through the use of economic-incentive based policy. In the presence of weak or nonexistent environmental policies, investments in the development and diffusion of new environmentally beneficial technologies are very likely to be less than would be socially desirable. Positive knowledge and adoption spillovers and information problems can further weaken innovation incentives. While environmental technology policy is fraught with difficulties, a long-term view suggests a strategy of experimenting with policy approaches and systematically evaluating their success.”

    If you can’t spot horse manure from this close up, your “cost-effective harness” is on too tight.

  23. 24

    People with Jaffe’s mindset don’t understand that patent enforcement is not costless. They believe that the mere issuance of a patent is a license to print money, which it is not. If the patent is truly “bad,” it would not survive its first cease and desist letter. And would generate little “cost” to the putative “infringer.”

    Also, people with Jaffe’s mindset are only looking at the situation from an ex post perspective. They see a result they think is “bad” (e.g., infringers like RIM have to pay royalties) and assume something is wrong that needs to be fixed without considering the fundamental constitutional rights of patent seekers (see, Article 1, Section 8) to apply for and obtain a patent, subject only to statutory bars (see 35 U.S.C. 102 – a patent shall issue *unless*) and to enforce that patent once obtained.

    If spineless corporate attorneys and officers want to pay out on bad patents, they are the problem; not the patent system. If the patent is legitimate, they should pay. If Jaffe simply believes that all patents are bad, then he should say so. Ignorance and fear are the biggest problems, not bad patents.

  24. 23

    It is unimportant that Jaffe, an economics professor, has all his numbers wrong.

    He has already succeeded in planting his Thought Terminating Termites in the Temporal Lobes of his listners’ brains.

    Don’t believe me? What’s that grinding sound we hear in the background? Yup. It’s the sand in the gearbox.

    The only way to flush the sand out of everyone’s mental gearboxes and to safely transport them out of the image implant zone, is to do a full dissection on Jaffe and to demonstrate that he has sand and sawdust in his skull. He is a scare crow puppet working on behalf of the dark forces, the hidden ones who have ‘coallitioned’ themselves against independent innovation. Fair is foul as Shakespeare has oft warned us. So beware of the “Coallition for Patent *Fairness*”. (It would be foul Dennis not to allow me to demonstrate where the real battle is ongoing –for the hearts and minds of the voting public. It is no accident that Congressman Berman had such a one-sided “hearing”.)

    OK with that done, show us the numbers again John. Show us every point where sawdust Jaffe fabricates falsities on behalf of the dark coallition instead of sticking to the truth. The truth is that the USPTO is working hard to destroy the American innovator. The truth is that the Protection [Racket] Act of 1999 did not go far enough in so far as the Dark Forces of the Coallition are concerned. That is why they bring us the Quality Choir of 2007 this year. If you are “truly” about quality, you would have your numbers right. Does Jaffe have all his numbers right? If you are “truly” about quality, you would have examiners who know technology and law. Does the USPTO? Ask yourself these hard hard questions. A glimmer of truth may appear from out of the void.

    Thank you for listening. /end of rant

  25. 22

    I’m in the process of reading JAffe’s book “Innovation and its Discontents” right now, and the ill-defined theme of “bad” patents appears througout the book as a fundamental assumption. The poorly supported thesis would not be of much concern were it not for the fact that people seem to be taking the faulty premise seriously.

    Jaffe boldy states several unsupported presumptions:

    “one important factor is the simple fact that it has gotten so much easier to get a patent,…”

    Right here would be a good place to insert some empirical data. Please explain Mr. Jaffe exactly how much easier it is to get a patent as compared to when and based on what measure (101/102/103 rejections were stronger then than now?). One premise in Jaffe’s book states that the establishment of the CAFC and the order to make the PTO self funding are responsible for “bad” patents, and the fact that the number of patents that have issued and the concomitant rise in litigation support, ipso facto, his premise that something must be wrong.

    “so applications that never would have been submitted before now look like they are worth a try.”

    How in the world can a statement like this be supported? In his book Jaffe uses anomalous patents that have always managed over the years to work thier way through the system as a gaffe, like a patent to an ice cream sandwich or something, as evidence that something is wrong.

    “Conversely, if the PTO pretty consistently rejected applications for bad patents, people would understand that bad applications are a waste of time and money.”

    But the current basis for rejecting applications is statutory and objective, so what would Jaffe propose? (I haven’t read that far in the book yet, but I’m not holding my breath) An arbitrary and capricious basis for determining which patents are “bad” or “trivial” – good luck.

    Again, Jaffe’s entire thesis is based on some fairly weak and reed thin presumptions. I have yet to find a good definition of a “bad” patent or a “trivial” patent except one that an infringer didn’t want to pay royalties on.

  26. 21

    Professor Jaffe’s own statistics, as well as those presented by PTO officials at various meetings (e.g. IPO, AIPLA, ABA), refute his claim that a patent is, or is becoming, to easy to get. He points to the 1% yearly increase in patent grants from 1930 to 1982 and cites with alarm the 6% increase in yearly patent grants since 1982 (and the creation of the Federal Circuit). However, if he bothered to check the statistics, he would find that application filings have increased about 10% each year for the past several years. If application filings increase 10% and patent grants increase 6%, it would seem it is harder, not easier to get a patent. Anecdotal evidence from people who actually prosecute patents for a living would also confirm that.

    His disdain for the jury system is also unnerving. Unfortunately, it’s a favorite of the crowd that is hostile to patents. “Juries aren’t smart enough to understand the technology and the intricacies of the patent laws.” We ask juries to decide complex banking, securities, tax, white collar crime, and complex “blue collar” crime cases every day, and nobody seems to think that there’s a problem with that. (Well, maybe they do, but I can’t recall Congress holding hearings on those matters.) It seems to me that for every huge infringement award I read about, I read about another jury verdict of non-infringement and/or invalidity. There’s nothing wrong with the jury system. The fact that Professor Jaffe attacks it demonstrates the weakness of his own arguments and the desparation those of his mindset feel to fix something that is not broken.

    Mr. Ravicher’s statistics that 85% of all original applications end up getting patented (whether through one round of prosecution, or through two or more via RCE’s and continuations) are just plain wrong. The PTO’s own statistics clearly refute his claim. The studies he cites are also flawed in their analysis.

  27. 20


    Let me try it “civilly” as you suggest.
    I respectfully submit that we are talking past each other.
    You appear to have some definition in your head of what constitutes an “algorithm” and that is why perhaps you announce that “Algorithms are supposed to be prohibited”.

    The courts have gone over this tired territory many a time. Pretty much everything is an “algorithm”. A recipe for making a new and useful chemical compound is an “algorithm”. A method of operating a machine that has tunable knobs/controls of some sort is an “algorithm”. There is no court pronouncement that “algorithms” are unpatentable.

    The United States Supreme court has identified only 3 things which are excluded from “everything made by man under the sun”. They are: 1) Laws of Nature, 2) Natural phenomenon and 3) Abstract “ideas”.

    Different philosophies underlie the prohibition for each. I don’t recall if the Chakabarty court went into that level of detail. But briefly, with regard to item #1 (Laws of Nature), the understanding is that these truths (i.e. E=mc^2) have been in operation in the Universe for a long time and the Universe was in public use for a long time and thus it would be unfair to take away from the public that which they had been using even if they didn’t know it. And besides, the patent system is supposed reward activities by men (and women) whereby through their ingenuity they create new and useful things rather than uncovering stuff that has always been there, i.e. stumbling across “fire” per se.

    With regard to item #2 (Natural phenomenon –for example bacteria that mutates on its own into a new form without intervention of man) once again it is pretty much the same concept. These things came or come into being by the operation of something other than deliberate human activity and therefore it would be unfair to give a “discoverer” of such stuff, one who did nothing but to stumble across it, an exclusive right.

    The last category #3 (abstract “ideas”) is different and cannot be intermixed with the first two. “Ideas” can neither be protected under copyright law or under patent law. In copyright law there is something called the “idea/expression dichotomy”. (Google it.) Although no such term is used in patent law, one can coin a similar concept for the “idea/embodiment” dichotomy. The broad idea behind the electric light bulb for example, is to convert electrical energy into light energy. One embodiment that implements that idea is the incadescent light bulb. The broad idea behind the telegraph is to deliberately fashion a force of nature (the electromotive force) into unique bursts of dots and dashes that can then be used to represent an alphabet of intelligent symbols and to transmit this so-modified phenomenon of nature.

    You are free to write all the articles you want about software and how it should be fashioned and used (except to induce others to infringe a validly patented process). No one is stopping the free flow of “ideas” among practitioners of the art. All these arguments about how patents might hamper “innovation” are pure hysterics. You can “innovate” to your heart’s content. You just can’t make, use or offer for sale the non-abstract subject matter that is the fruit of the deliberate efforts of another person who did it before you. The purpose of the patent law is to get you so angry that you start innovating your own stuff instead of whining.

    We have great faith in you.
    You are bright. You are articulate.
    So show us your innovations.
    Show us your innovations.

  28. 19

    There are pleny of start-up companies in the software industry
    that became very succesfull and employ a significant number
    of people. This success is very much attributable to patents.
    Otherwise, every small business that comes up with a good idea
    gets put out of business by larger firms that steal their ideas.

    YEs but an even stronger form of your evidential argument – sw companies with patents exist and are profitable- looks like

    Before patents, sw companies existed and were profitable- including all the big names.
    So your observation – the existance of successful sw companies- works against when taken in the larger scheme. (This also works against business method patents).

    The other part, about companies stealing ideas, just means you don’t understand the software business, because that’s NOT how it went at all. First ideas can’t be patented, so what you mean is some combo of algo, written code and business methods. Second, that’s called competition where literally everyone shared knowledge at some level. IT caused tremendous growth- case in point Microsoft, whose DOS was a direct and unpaid-for rip off of CPM except they changed the prompt to a c: .

    CPM lost that race b/c they didn’t understand what Gates understood- the value lay in the sw. That’s a competitive advantage- being smarter and seeing further.

    Competition is good for consumers, good for the market and good for the progress of society.

  29. 18


    Thanks for the at least semi-rational, could-be-reasonable argument for sw patents.

    To answer your post directly:

    We all know about the utility (if you can call it that) of patent thickets. So how can we know if Oracle has sw patents as a defense and would prefer a nonpatent atmosphere?

    Well, we could ask them.

    link to

    Yeah, that worked.

    Your mistake was affirming the consequent, you know, like:

    If Oracle approved of software patents then they would have software patents.
    Oracle has software patents.
    Therefore Oracle approves of software patents.

    I just don’t get if this is the kind of thing that actually flies with judges and legislators.

    Let me be the first to say, in my last post I could be said to be guilty of a weak analogy- the neocons are analogous to patent-pushers. I am not saying that anyone on this board fits my description of a freaked-out patent junkie, either. I only let it go because it points up the fact that a small group with a distorted perception of reality can do a lot of damage. It’s not an argument against patenting of software per se.

    The main argument to be made against sw patents is that they do not serve the public good, which is a pre-req for patentability. Some people think patents are an entitlement or a right. Those people appear to feel that strongly, but no one on any circuit has any sympathy for that point of view whatsoever, and it’s not supported by the Constitution, so it’s really moot.

    I mean, I didn’t go to THE best university in the world, I went to ONE of the best universities, but the rest of you must have gone to really really good schools, so why all the crappy crap arguments of previous posts? Why all the flames and ad-hominem? I especially love it when I post an argument and what I get back is I am wrong because my views do not comport with their views; that’s the best. No rebuttal necessary! Just tell me I am wrong, and, oh, you want to come live at my house. Well, you’re not invited AND I am being consistent.

    All I am saying is, look, why not argue as though you might either change someone’s mind or realize through exploration that you were wrong. That’s the essence of not only a good education, but civil society.

    I understand some people are just (chemically) imbalanced and live to combat perceived “enemies” and can only tap into their life’s energy through hate. We all recognize that type as soon as they start a post. I don’t even read those posts. But for the rest of you, what’s up with the low quality thought in a public forum?

    So I have a question to anyone who’s been silently reading this blog- what process that leads to a useful result is not statutory subject matter? Almost any mental step, (or algorithm) can result in a change in matter when the human who thought it acts upon the world (in a way that is a result of using that algorithm). Could humans replace computers in State Street? Algorithms are supposed to be prohibited , but what do you think a BM is? What do you think RSA is? It’s just an algo. So what is NOT statutory that also has a useful result (in the physical world)? I am NOT asking for a bright line or definition. I am just asking for an example.

    Anyone (civil)?


    (3) A

  30. 17

    soft.viz> Oracle does very well for itself with copyright and trade secret

    And patents too. Searching the PTO I find: 878 patents. And some may be for gasp! software methods.

    Results of Search in US Patent Collection db for:
    AN/oracle AND AC/redwood: 878 patents.

  31. 16

    At any rate, no one is saying copyright should not apply. Oracle does very well for itself with copyright and trade secret. As far as employment goes, the vast majority of software companies have no stronger IP protection than copyright. It’s not an issue.

    Patents only make it harder for people to make money, and concentrate that money into the hands of large patent-buying corporations.

    This reminds me of nothing so much as the case that was made for the Iraq was by the neocons. Somehow, they had a vision that really really really believed ! And they forced it down everyone’s throats, to the everlasting detriment of our country and our children.

    Exactly the same type of *vision* is now being rammed the throats of society – a vision of how the software industry will go if patents on business methods and code are permitted. Seems like software brought you some pretty nice things prior to patenting. Seems like people have been doing business for a few thousand years without BM patents. But a small group of fanatics have a *vision* of how the world should work. Oh how inspriring they find their *vision* ! And now that software developers have kindly brought them a vigorous and robust economy, this small group of people want to take it over and run it ! They want to be in control! They’re slobbering all over themselves because “new” spheres of activity are going to be patentable. THey’re on their phones to their real-estate agents right now and looking to better deal their first wives as I write!!! See, they have a new *vision* . It’s so exciting to be them, and if you drink this Kool-Aid, you can be one of them too! They know better than Knuth and all the other people who created everything they now covet. They want to take all that and administer it under a weirdo regime that 99.999% of developers absolutely do not want anything to do with. BUt ehy know better!

    This is a kind of egocentric infantilism and stupid, low-IQ fanaticism that is really what we see in the neocons and their great “Project for a New American Century”.

    The saddest thing is, like the neocons, the more they succeed, the less respect anyone will have for their point of view, which in this case is IP laws. File sharers and other thieves can’t pretend they have a moral or intellectual leg to stand on. The vast majority of people who think and write software aren’t going to just comply because some group of wigged-out trickle-down free-market corporo-fascist Bush appointees and lawyers decide this or that. They can only dream of controlling populations by fiat, (but see the Iraq meltdown for what happens to the tender-footed, draft-dodging, chickenhawk’s *vision* when the rubber hits the road. )

    Extending patenting (NOT COPYRIGHTING) to “new” spheres of human activity (as if business wasn’t conducted before business method patents) will result to widespread and total contempt for the law and for IP specifically. Like the neocons, the freaked-out patent-junkies and their *vision*, will get exactly the opposite of what they seek to whatever extent anyone grants them their lunatic wishes.

    There is not longterm winning hand for people who want to force their weird vision of things down everyone else’s throat. There’s Kool-Aid of course, but no winning hand.

  32. 15

    Why take a point- that patenting software is bad for society, which is really a technical issue having to do with the nature of software, and distort that point to somehow be synonymous with all property rights? That’s a very elementary mistake in thinking. Society and law are all about the details and differences between situations. Distorting what I and others say into some kind of gross oversimplifications- what’s the point of that? You’re setting up a straw man- something I and no one else ever said and is not implied by anything that was said, then having a thoroughly good time attacking your own creation.

    It just seems like a waste of your time. Reasoning people can discern what you’re doing and unreasoning people aren’t going to have their opinions changed one way or the other.

  33. 14

    If we had a clear line, between what new and non-obvious things are patentable, and which are not, a line which accords with common sense, it would dissipate all this heat and emotion. I suggest that most everybody would agree that random numbers and tax-saving schemes are not subject matter fit for patenting. Despite the ridicule with which Americans view the line drawn by Art 52 of the European Patent Convention, and despite the ridiculous way the Boards of Appeal of the EPO now interpret it, I cling to the view that the recent Decision of the English Court of Appeal in Aerotel, which digests all EPO jurisprudence up to now, and sets it on a rationalised clear track, is a solution that would satisfy common sense. Meanwhile, without a line that is defensible, the war between the absurd “No patents for Software” and the equally absurd “Patents for Everything under the Sun Made by Man” will just intensify.

  34. 13

    To Software Visualization,

    I agree with step_back, but in the name of ‘freedom’ and ‘public benefit.’


    you guys believe in ‘freedom’ to code. one of your organiations is the “Foundation for a Free Information Infrastructure.”

    so i should have ‘freedom’ to walk on what you call ‘your property.’ i should be able to walk wherever I want – including the land you call your backyard.
    this land was there from time immemorial (ask the Indians) – before you were born. you did not manufacture the land – you just fenced it off and took it for yourself. maybe even you were a ‘troll’ and bought the house from a productive house-builder. why should you restrict my ‘freedom’ to walk there and even live there???
    why should I have to waste time looking at landmarks and property deeds when doing so natural as walking?
    where is your sense of ‘freedom’??

    if this is too extreme, let’s say you are home only 14 hours a day. what about the other 10 hours when NOBODY is home – we should be able to come over then, right??? work the invention, eh?


    your backyard is a beautiful place – grass, nice breezes. It should be for the public benefit and not just for you.

    What’s the address – we’re coming over !!!


  35. 12

    Two comments:
    First, I fail to understand peoples opposition to software patents.
    There are pleny of start-up companies in the software industry
    that became very succesfull and employ a significant number
    of people. This success is very much attributable to patents.
    Otherwise, every small business that comes up with a good idea
    gets put out of business by larger firms that steal their ideas.
    The problem with software patents, like other patents, might
    be attributable to “bad quality” where “bad quality” is defined as a patent that issues where there is clear prior art. In that case, however, the
    patent should be able to be defeated. I know some will cite RIM as
    a counter example but this is not the norm.

    Secondly, if congress enacts a better way to improve patent review
    where prior art can be submitted by third parties, I think it would
    help if the PTO makes
    newly published applications more “searchable”. Newly granted
    patents get posted on tuesday and newly published applications
    get published on thursday. However, as far as I can tell, the
    newly published applications are just thrown in with all the
    other published applications. I think it would help everyone if
    newly published applications can be conveniently searched on a weekly basis.

  36. 11

    Dear sw-visi,

    When can I move into your house or apartment? Is yesterday too soon?

    I ask with all earnest because it seems to me that you don’t want to honor the property rights of others.

    If a man works and doesn’t get paid for it, how long do you think he is going to sustain that pattern of behavior (working & not getting compensated)? If a solo inventor tinkers in his garage, working with oscilloscope and soldering iron to fashion a “new” contraption that would be “useful” for society and then he presents it to society and society “takes” it without so much as a thank you or any compensation to the tinkerer, how many times more will that tinkerer return to his little shop to perform more of the same?

    This little experiment of working and not getting compensated for it has been tried many times throughout history. It was called “slavery” in early USA history as well as in the history of Rome before that enterprise collapsed. It was called commradership in the FSU (Former Soviet Union) before its collapse.

    I’m disappointed sw-visi that you have not posted ALL of your software work product on the Internet for all others to take as freeware. After all, if programming is nothing more than “thinking” and thinking is not valued then why should you or anyone else be paid for doing something that has no value? Why should I pay Bill Gates for his Vista operating system? Why shouldn’t I just copy it for free? After all, it’s nothing more than thoughtware and no one should have property rights in thoughtware according to your way of thinking. (P.S. I am noticing how many billions of lines of innovative software code are being produced by the 1 Billion-plus people in Red China thanks to their attitudes about freeware. Thank goodness at least someone understands that SW is free for the taking and that IP rights are there for violating whenever you feel like it.)

    As for that tinkerer with his soldering gun and oscilliscope, I did not pose that hypothetical arbitrarily. You see dear friend, when I was of a younger age, there was a time when I debugged “microcode” using an oscilliscope. Microcode is software. It’s the place where software and hardware meet. It is very hard for me, based on my personal expereinces with debugging microcode to accept your proposition that “software” is different than “hardware” and that one can draw a bright line in the sand to divide between the two. If you can’t patent software, then you can’t patent “firmware” and you can’t patent much of digital hardware either. After all, what is a digital register but nothing more than memory with some “software” stored in it?

  37. 10

    TO Pedram,
    Ask yourself why it’s universally crystal clear to software developers that it would be disaster to progress if code were widely patented (see Knuth’s testimony about this before the USPTO) and yet only Ravincher’s organization is telling it like it is.

    I won’t say it’s about money, because more money has flown into more pocket around the economic eco-system that’s developed in the patent-free environment( that is, everything having to do with the internet prior to, say 2000) called the internet than will flow when code is patented. It’s not about money, or the general good of society or progress. It’s about a small number of highly motivated people who are willing to distort and twist the the raison d’etre of patent protection- to promote the useful arts and sciences.

    Patents have been turned into some sort of entitlement by the energetic but myopic amongst us who stand to benefit from activity around patents- patent attorney and a small number of inventors and the some corporations. IF you think you’re going to be put out of business, or rather, have your business made impossible by software patents, you’re right.

    Look into helping Ravincher’s organization and other organizations who oppose this.

    In the last analysis, it is simply a fact that no one can escape that countries which do not offer patent protection for code will advance past those that do. IF the US persists down this road, then the EU and other parts of the world that take a more enlightened view will simply leave the US in the technological dust, at least as far as software is concerned. When that starts to happen, then all the smart, innovative developers will leave the US for friendlier climates, and once that starts, there will be no stopping it.

    People immigrate towards greater freedom and prosperity. These are constants that aren’t going to suddenly drop dead at America’s door if she becomes unfriendly towards the majority of her programmer-citizens.

    On this sites other subject’s blog for today, I asked the posters, attorneys and patent examiners for the most part, what would characterize a method which produces a useful result yet could NOT be patented. They are upset that a thinking process, essentially, that is un-embodied has been found not to be patentable subject matter.

    THey patented business methods. Then they patented code. Now they want to patent thought itself.

    This is a train wreck and America is going to pay the price.

  38. 9

    Legal matters are the only matters that a man who has no experience whatsoever in the matter in question can stand up, give an opinion, and be taken as an expert.

    Truly unbelievable.

    If we applied this to, say, football, then every slob who diligently watched 30 hours of football on the weekend and then discussed the games for 30 hours or more during the week would be qualified to stand before the NFL rules committee to explain why rule changes are needed.

    I remember this one professor in law school who taught legal theory. We found out after the first few weeks that the guy lost 8 cases in a row before deciding to leave private practice.

    Oh, but change is needed.

    Sometimes armchair quarterbacks are right.

  39. 8

    Of Steve’s comment about the role of the AIPLA in patent reform, recall the article by Joe Hosteny in the October 2004 issue of Intellectual Property Today (available at
    link to

    The scope of the subcommittee hearing was about the need for patent reform, so that is why the speakers, in some sense, talked about why we need patent reform. Ravicher, at the hearing, called for an end to continuations.

    I presented some issues with what Professor Jaffe said in his prepared remarks of Feb. 15 on IPFrontline. See
    link to Condensing what he said: allow competitors greater facility to present prior art.

  40. 7

    What is to be the outcome of software innovations that are new/not obvious,
    It seems I spent a significant amount of my life learning to program only
    to get stuck in sticky vines of, you can code like this but not like this,
    and this way of doing this is patented and so is this revolving interface…

    Who decides what wording is vague, stuff like “IN ORDER TO MAKE A COMPUTER DO BLAH”

    is cryptic, vague and worded that way to apply to all programming languages…

    There is an underlying complexity to code and its patterns, so where’s the Quality-Assurance?

  41. 6

    Thomason: yes. The EPO is civil law country, where the judges are deemed to be PHOSITA’s, so don’t need something fancy like “evidence”, of what the PHOSITA would have thought, back on the date of the opposed claim. The reality is that EPO tribunals go out of their way to shut out consideration of any witness evidence and STILL take years and years to decide an opposition. Then again, look at the history of opposition in common law UK, in the period between 1949 enactment of the Patents Act and going civil law EPO in 1978. 1960’s oppositions could consume whole of the remaining (16 years from filing the application) term of the patent. As for USA, I keep reading the words “due process” which (I am ever told) USA has and ROW does not. What effect will that have, on opposition “pendency” at the USPTO? The legislator can say “It must be all over in X months” and that might get enacted, but then again the PCT says that the IPER (now IPRP) has to issue within 28 months, and what happened in the USPTO to that little provision?

    The need is to get the filing and prosecution primaries right, and the secondaries will look after themselves. Example: the EPO offers a “Petition to Make Special”. It is called PACE. It works. Applicant pays no fee and gives no reason. Nevertheless, such a request is tendered in fewer than 5% of cases. Why? Because Applicants get what they want without PACE namely “rights following A publication”. Back burner examination is right for 95% of cases because 1) heavy grant fees are deferred 2) competitors don’t know what claims you will take to issue 3) you can watch the market and tailor your claims to what the competitors are launching 4) you can press the PACE button any time you need, and it will work 5) you can do a German Gebrauchsmuster Abzweigung to get an issued patent in DE within 3 to 4 months of Red Alert, with claims tailored to your specific infringement problem, and the infringers know it.

  42. 5

    If there’s any consensus, it appears to be around a post-grant opposition. Isn’t that more like treating the ill, than a prescription or preventative for the causes.

  43. 4

    I read Jaffe’s book. It is terrible and clearly indicates his lack of knowledge of patents and claims, etc.

    While it is true patent reform is needed, it is not to be led by this guy.

    However, how often do you really see AIPLA, etc., doing anything pro-active as opposed to just testifying in response to bill proposals.

    I still do not think the AIPLA ever even acknowledged the alleged ex parte communications that occured in the RIM reexams between the patentee and the Commissioner’s Office.

  44. 3

    None of these people know a patent from a pair of shiny shoes.

    Ours is a very practical profession. For a long time academics disdained our area of the law for that very reason.

    It’s startling what happens when the nattering nabobs of academia weigh in on an area where they previously were conspicuously absent.

    Apologies to Dennis as an academic, but a practically trained academic at least 🙂

  45. 2


    You need to understand that these Quailbirds of Quality are anything but faithful adherents to the principles of Quality Control.

    If they actually were concerned with “Quality” then surely they would have developed quantifiable metrics for measuring “quality” and they would have presented “quality” testimonials to Congress, replete with studious submissions of numbers to back up their on-stage histrionics.

    Instead they repeat words like “bad” and “quality” and “truly” over and over again until they numb your mind out of its critical thinking zone.

    Click your mind back into the think zone.
    Repeat after me:
    “Show me the numbers.”
    “Show me the numbers.”

  46. 1

    Regarding Mr. Jaffe’s quote: Has he ever prosecuted an application or interacted with a company?

    No matter whether “bad” patents get through, there will always be individuals or corporations that file “bad” applications. The individuals will be unlikely to be convinced that their idea is not new/non-obvious, and the IP department of the corporation is likely to have a minimum target number of filings determined by a VP or higher (the inventors in the corporation may also not be able to be convinced that their ideas are not new/non-obvious).

    He fails to acknowledge at least that 1) the pace of technology has increased dramatically in the last several decades, 2) IP has become a much higher percentage of corporate assets in the last several decades (i.e. much more important), and 3) new avenues of previously unpatentable material (e.g. business methods) now exist, all of which have lead to higher application rates.

    And yes, there are applications out there (once again, e.g. business method applications) that should not have been filed. Too bad.

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