Patent Law

Commissioner Cack

By Gary Odom and Jordan Kuhn

In an interview with C/Net News, USPTO Commissioner Jon Dudas:

What's, in lots of ways, more disturbing is in over half the cases where we say this isn't patentable, people just file again and get back in line. We want to make certain that people can't apply with a very broad patent application, which they know will get rejected. And then they get back in line, and meanwhile, they're looking out and seeing what's happening in the market. Sometimes they see that if they focused that broad claim, it could cover an existing technology... Then, (going by) the date of first filing, they can then say, 'I own that technology'... That's a very real concern. That gets more in line with concerns of troll behavior--someone who is literally watching the technology...so they can rise up out of the bridge and sue people.

The statutory role of the patent office is examination on the merits. Dudas instead views the mission of the patent office in political terms.

No, Jon, we wouldn't want trolls, or anyone, to be "literally watching the technology." We wouldn't want inventors to be able to claim what they invented by narrowing claims on a continuation. That would be wrong.

Dudas sees no end to pendancy. "Even hiring 1,200 examiners, even increasing a lot of different flexibility initiatives that increase productivity...we still get more applications in the door than we're able to examine." Dudas neglected to mention attrition because of bad management practices as the root problem. As Hal Wegner recently wrote: "To simply pour billions of dollars into the hiring of thousands of examiners - with thousands of resignations - is a disaster not waiting to happen, but one happening under our eyes today. The morale decline which has created this massive turnover speaks for itself."

On post-grant review: "It has to be a true alternative to litigation. We don't think the idea is to have another way to question a patent, and then you can go to court and you can go to post-grant." Dudas had no comment on reexamination being used now by infringers as a last-ditch invalidation Hail Mary, or that post-grant review would be practically unnecessary with better examination. Dudas enjoys a rich fantasy life to think that post-grant review could ever be "a true alternative to litigation," in whatever form.

CNet being geek central, Dudas was asked about software patents.

Software, biotechnology, business methods--In the United States, the Supreme Court has consistently held that those are areas where there should be patents, and those industries have flourished.

Justice Breyer during oral arguments in AT&T v. Microsoft: "I take it that we are operating under the assumption that software is patentable? We have never held that in this Court, have we?"

Specifically with open source, I think the two should coexist very well. If someone gets a patent, then that intellectual property has to be respected, but so long as that patent isn't used, open source can be as open as it needs to be.

"Open source can be as open as it needs to be." The article mentioned an editor's note: "Responses have been edited for length and clarity." The published interview would have been pared to nothing if the clarity editor had been rigorous.

Full post as published by The Patent Prospector on March 31, 2008 (boomark / email).