Existing Patent Applications and the New PTO Rules

October 10, 2007

Patently-O has an interesting discussion about various strategies practitioners may want to use to avoid or at least delay the immediate impact of the USPTO rules changes that limit the number of claims and continuations that may be filed. Note! November 1st is the key date for existing patent applications that have had an action on the merits before the rules went into effect, so get cracking!

PTO Posts New Post-KSR Obviousness Guidelines

October 10, 2007

Of interest to patent-heads only: the USPTO has published examination guidelines for determining obviousness in light of the Supreme Court’s KSR v. Teleflex decision. Ever since the KSR decision landed, patent agents and attorneys have been waiting to find out how the PTO will interpret the changes in the case law. In their new approach to obviousness, the PTO will continue to search for references that “teach, suggest, or motivate”, but such a teaching suggestion or motivation will no longer be necessary for a 103 rejection. Instead, the PTO now provides 7 rationales that can be used by an examiner to bridge the gap between prior art references and the claimed invention.

See: Changes to examination procedure in the Federal Register

Looking forward to Web 3.0

September 7, 2007

Web 2.0 companies like Digg and Facebook are all the rage. The New York times looks beyond the current trends and does some musing on the next direction for the Web will take. While Web 2.0 used human intelligence to bring structure and meaning to the mountains of data generated by Web 1.0. Web 3.0, according to the Grey Lady, will use artificial intelligence to answer complex questions in way that resembles a human response. It will be able to do this by integrating large amount of common sense data and formal data in databases.

For example a Web 1.0 search for a sushi restuarant would be for a Yahoo web search “sushi +restaurant +”san jose””. A web 2.0 search would involve going to Yelp, entering your zip code, selecting the category “restaurants” and “sushi”, and then viewing a list of restaurants rated by other Yelp users. A Web 3.0 search would allow you to ask for a “a good sushi restaurant near me that is open now and takes reservations”. The Web 3.0 will know where “here” and when “now” is. It will be able to predict which sushi restaurant you think is “good” by examining your rating data from previous outings. It will be able to integrate many different types of data, so that it could get the restaurants hours and directions from one site, its reviews from another site, and make reservations using yet another. By using intelligence to make sense of the user generated data of Web 2.0, the next incarnation of the Web will be able to answer much more complex questions and in doing so will become a vastly more powerful tool than todays Web.

IP protection for Fashion Designs

September 4, 2007


Patently-O serves up some fresh links on IP protection for Fashion Designs. A bill has been proposed to provide protection for fashion designs. I think this would be inadvisable for a number of reasons.

First, as others have stated, the fundamental motivation behind Intellectual Property rights is to ensure that a public good that is easily copied will not be under produced. I have not heard any arguments that fashion is underproduced because designers are not able to capitalize on their works. In fact, such an argument would be predicated on the misconception that designers sell designs. Designers do not sell designs: they sell status, and status cannot be protected by the newly proposed Intellectual Property law.

Status is already protected by current Intellectual Property law in the form of Trademark law. The blackmarket fashion “pirates” who do attempt to “pirate” status do so by producing an exact replica of the “real thing,” which includes wrongfully using trademarked designer labels and logos, as well as copyrighted fabric designs. Thus, these “pirates” are already breaking existing laws and can be prosecuted under those laws.

This newly proposed legislation is instead targeted at low-status retail outlets from Nordstrom to Walmart who produce fashion similar to the high-status designs of the more exclusive shops. However, these mass-produced “knock-offs” do not carry the same status or cache as their more exclusive counterparts. These “knock-offs” therefore do not compete with the originals and thus do not prevent innovation in fashion design. In fact, these low-status copies encourage innovation: high-end designers are constantly forced to find new ways to distinguish themselves from their mass-market counterparts. In the meantime, more and more Americans are able to participate in the business of being beautiful.

Even if IP protection would increase the number of fashion designs, I would question whether additional fashion designs provide any added social benefit. I am certainly not anti-fashion. I am the only heterosexual male I know who reads InStyle magazine. While fashion itself is valuable in that it gives us a common language of expressing ourselves with our clothing, the actual number and content of designs is fairly arbitrary. If the toga were considered the dress of a dignified and professional man, everyone commenting on this blog would wear one to the office.

Furthermore, I can see this type of legislation being enforced very asymmetrically. It will be used by big name designers to prevent small retailers and chain stores of lesser prestige from copying their styles. However, when that same big name designer goes into a trendy youth hot spot and spies some new fashion innovation and then uses that innovation in their next fashion collection, will the trendy innovators be able to assert their rights against the big designers? Seems unlikely. The upshot is that this law will be used to ensconce big name designers in their position as the arbiters of fashion.

Infintite Copyright Term

May 22, 2007

In this NY Times article Mark Helprin, a rights holder, argues that copyrights, like rights in real and personal property, should last forever. In response, Mike Masnick at Techdirt points out that Intellectual Property isn’t the same as real property, but rather it is an incentive given to authors to produce what would otherwise be an under-produced public good. This is a clear example of a clash between two different IP ideologies: IP maximalists that see IP laws as vehicle to maximize returns to current rights holders and IP pragmatists that seek to maximize social welfare by achieving a balance between author incentives and public use.

A New Networking Paradigm

May 21, 2007

Here is a tech talk that Van Jacobson, a research fellow at PARC, gave to Google entitled “A New Way to Look at Networking.” The main thrust of his idea is that in order to solve the main challenges the internet faces today: security, spam, the slashdot effect, and difficulty in implementing ubiquitous computing, we need to have a different model for thinking about and designing internet applications. Before the days of the Internet, the telephone system was designed around building point to point connections between callers. However, this was relatively unreliable and did not scale up well. Enormous resources were spent designing ever more complicated and robust units for the phone system because if any one piece failed, the entire connection failed. However, the Internet changed this completely. Rather than make point to point connections, TCP/IP abstracted away the individual connections and instead used routing algorithms and a robust protocol to make sure that all the data got from the sender to the receiver without worrying about what happens underneath. Similarly, Jacobson is suggesting that we develop new protocols that stand above the connection layer, because right now we spend a lot of time and effort worrying about where our data comes from and whether connections are secure, and whether the sender is reliable. Instead, by focusing the network on data, rather than on the connections, we can greatly increase the power and flexibility of the Internet.

One example of this new view is the Bittorrent file distribution system. With bittorrent a user requests a specific file. The file itself is actually held in bits and pieces on the machines of hundreds of different users. However, the user does not need to know where all the parts are and how to download them; all of that work is done by the algorithm. Instead the user just needs to know what he wants to download and the network takes care of the rest.

This new paradigm points to a time in the near future where the internet will be very different from how we know it now. In particular it points to light at the end of the tunnel for solving several long standing problems of security, data integrity, and ubiquity.

More information on content centric networking can be found here. Also related are the ideas of ubiquitous computing and mesh networking.

Diggers try to keep the HD-DVD key in the Wild

May 2, 2007

The HD-DVD key, a 32 digit hexadecimal (128bit) number, allows a user to circumvent the copy control mechanism on an HD-DVD, so posting the key is likely in violation of the DMCA. Digg moderators tried to avoid a potential legal conflict by removing all stories that contain the key and banning some users who submitted the story. Digg users have responded to the removal of stories mentioning the HD-DVD key by innundating Digg with the key. On the Digg RSS feed almost half of the stories submitted in the last 24 hours have contained the key. Comments in every post contain the key and there are links everywhere to alternate sources for the key, including t-shirts, pictures, bumper stickers, haikus, and other creative encodings of the number. What will the implications of this revolt be? It will depend largely on how the AACS licensing authority (owners of the HD-DVD encryption method) responds. A heavy handed legal or political response could induce a public backlash. However, by not responding at all, it could result in a de facto change in DMCA enforcement.

For more:

Forbes – Digg’s DRM Revolt

CNet – Unhappy Digg Users bury site in protest

BBC – DVD DRM Row sparks user rebellion

Update: Eariler in the post I stated that posting the HD-DVD key would likely be found a violation of the DMCA. It is actually closer to a certainty rather than a likelyhood. A District Court found this to be the case in Universal v. Reimerdes. 111 F.Supp.2d 294. (S.D. N.Y. 2000). It held that distribution of the DeCSS code that allowed the decoding of DVDs violated the anti-trafficking provisions of the DMCA that prohibit the distribution of any technology that is primarily used to circumvent copy control mechanisms. The Second Circuit court of Appeals upheld the ruling. For background on this case see the wikipedia article.

KSR v. Teleflex

May 1, 2007

The Supreme Court issued a unanimous ruling today in the case of KSR v. Teleflex. This case revolved around whether Teleflex’s patent on self-adjusting gas pedal failed the non-obviousness requirement of Section 103. With this ruling, the Court is making it easier to challenge patents based on obviousness. This is very significant, as the standard for determining obviousness has been
both narrow and ill-defined. Patently-O has the rundown. Expect more on this in the coming weeks.

Software Patents before Diamond v. Diehr?

April 19, 2007

On the wikipedia entry on Software Patents there is a dispute regarding the standard story about software Patents. Most people will tell you that software was not patentable before Diamond v. Diehr (1981). However, some enterprising individuals have found some pre-1981 software patents, including this one for “Computer Data Read-In Control System” Filed in 1964 #3,316,539. The kicker I believe, is that most if not all of these patents include a clear hardware component. On the other hand one could cite Gottschalk v. Benson, 409 U.S. 63 (1972) where the court rejected the patentability of a program that converted a Binary Coded decimal numbers into pure binary numbers. I think rather than being explicitly disallowed, patents for software were simply a non-issue (given the paucity of cases and patent applications on the subject) that was largely unconsidered and therefore unresolved before the Court issued its ruling in Diamond.

Three Ideologies walk into a Bar…

April 19, 2007

Those involved in IP issues generally come from one of three perspectives: IP Maximalism, IP Pragmatism, and IP Abolitionism.

1) IP Maximalism

In the view of IP Maximalists, Intellectual Property is directly analogous to physical property. Rights in creative works should be perpetual and absolute. In this viewpoint, fair use is an inconvenient notion that was a product of a time with higher enforcement costs, but nowadays can be eliminated through digital rights management technology. IP maximalists are the driving force behind the DMCA, the Sonny Bono Copyright Term Extension Act, and the globalization of the US intellectual property regime. In an IP maximalist world view, intellectual property rights will do for the information revolution what the enclosure movement did for the agricultural revolution: clearly defined property rights will allow for an efficient allocation of capital thus creating economic growth. Piracy, then, is theft and must be minimized, if not eliminated. Major proponents of this view are the largest corporate rights holders (media, software, and pharmaceutical companies) and the IP Bar. Being that these companies have the most resources, are small in number, and have concentrated interests, the logic of collective action tells us that they will have the most success in lobbying for IP law reform in their favor.

2) IP Pragmatism

The Pragmatist view of IP comes straight from the Article 1, Section 8, Clause 8 of the US Constitution: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” This embodies the traditional view of IP Laws as solving a public goods problem: because intellectual works can be copied effortlessly and without compensation to the creator, creative works and inventions will be underproduced unless the law requires the public to compensate the artists and inventors in some way. Traditionally, this has been through the grant of a temporary monopoly as in the case of patents and copyrights, but in other circumstances has taken the form of private copying levies or other schemes. Although they are interested in protecting intellectual property rights, IP Pragmatists generally tend to balance enforcement against public interests. In this view, enforcement of IP rights should occur only when piracy has a significant negative effect on the production of new creative works. For example, non-commercial copying of music may be tolerated while piracy of software by small businesses, sale of pirated movies, and importation of infringing pharmaceuticals would be punished harshly. Fair Use then becomes a central issue in the IP Pragmatists view: the Pragmatist wants Fair Use to be broad enough so that otherwise useful applications (such as scholarship and parody) are not suppressed, while at the same time limited enough that a healthy market for protected works is maintained.

This view is the traditional view, and probably the default view of most people who don’t have a horse in this race, though the general public is mostly unaware of how IP laws effect them and thus have no opinion at all. The tech industry has several proponents of this view. Some, like RIM and Hynix (makers of Blackberry) have been burned by patent litigation. Others, like Google and Apple, hope to profit from a broader view of fair use laws. Still others, like Intel and IBM, sell products that are largely unaffected by IP laws and would gain from and increased consumption of technology goods that would result from a more flexible IP regime.

3) IP Abolitionism

Complete opposition to Intellectual Property is a recent product of the Internet Era. This school of thought originated in the early computer research labs of MIT and Berkeley and spread throughout the emerging computer hobbyist culture of the 70’s and 80’s. In these non-commercial utopian environments, unfettered exchange was considered a virtue which allowed the community grow, and people to learn from one another. The explosive growth of the Internet allowed this culture to spread world wide, in the form of Linux and the Open Source Movement. As the Internet started affecting society at large, the powers-that-be started taking an interest in controlling and regulating the Internet. The Communications Decency Act and the Clipper Chip initiative stirred the heretofore unorganized IP Abolition Movement to action. They gained significant credibility among a growing online population by adding the protection of privacy and free speech to their causes. A new generation of internet users raised on Napster and Peer to Peer software has further swelled their ranks. The success of some Open Source Software (particulary Linux, Apache, and Firefox) have won them some friends in the high tech industry. However, despite their numbers they are still a small minority and have been unable to achieve significant changes in public policy.

See: Richard M Stallman, Electronic Frontier Foundation, “Against Intellectual Monopoly” by Boldrin and Levine, Lawrence Lessig


One major player hasn’t been mentioned here: Where does the Patent Office fall on this scale? My impression is that the Patent Office has its own institutional and administrative interests in mind, first and foremost, but otherwise tends to hew to the Pragmatist line as encoded in much of 35 USC and 37 CFR.