Why IBM Supports USPTO Patent Quality Initiatives

by Manny Schecter
IBM Chief Patent Counsel

IBM congratulates the White House and the US Patent & Trademark Office (USPTO) for recently announced Executive Actions relating to crowdsourcing prior art and more ro-bust technical training and expertise for patent examiners. IBM supports these initiatives to improve patent examination quality.

As members of the public and patentees, we all should have an interest in improving patent examination, and thus patent quality. We should favor correct examination at the outset rather than trying to address a wrongly granted patent after issuance – when both the burden of proving invalidity and the cost of doing so are higher and the public has already expended considerable resources avoiding infringement.

For 21 consecutive years, IBM has been the leading recipient of US patents and, through-out this period, we have consistently supported efforts to advance and enable robust pat-ent examination. We organized the Peer to Patent pilot project, in conjunction with New York Law School and the USPTO that demonstrated the feasibility of crowdsourcing prior art, and was particularly effective at identifying non-patent technical literature. We promoted the third-party submission of prior art provisions of the America Invents Act to enable the benefits of crowdsourcing prior art to become part of the examination process for all patents. In addition, we have for several decades published technical journals and documentation — including the IBM Technical Disclosure Bulletin — that are among the non-patent technical literature most widely cited by patent examiners during patent ex-amination. Finally, we have long cooperated with the USPTO in providing technical education for patent examiners and we will continue to do so.

The patent system benefits us all by promoting innovation. We call on other users of the patent system to join IBM in supporting and assisting the USPTO in enhancing the qual-ity of patent examination.

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Alice Through the Looking Glass – The Supreme Court Considers Software Patents

“In another moment down went Alice after it, never once considering how in the world she was to get out again.” — Lewis Carroll, Alice’s Adventures In Wonderland

This spring in Alice v. CLS Bank, the Supreme Court will once again confront the issue of patent eligibility, this time asking whether computer-implemented inventions are the types of innovations our patent system should protect. It may seem curious–or ‘curiouser and curiouser’–to many that the Court feels the need to address this issue after over a half century of breakthrough software inventions backed by software patents. But the Court seems particularly focused on the question of eligibility. In fact, Alice is the fourth time in as many years the Court has heard appeals asking whether inventions ranging from isolated DNA to business methods can be protected by patents.

We believe the Court is revisiting the issue of patent eligibility because it is struggling to formulate a workable test. The patent statute has no limitations on patent eligibility, as long as an invention is directed to a machine, product, process, or chemical composition it is eligible for patenting. Over the years, the Supreme Court has created exceptions for laws of nature, natural phenomena, and abstract ideas. It is the last exception that is relevant to computer-implemented inventions — i.e. is this invention ineligible because it is an “abstract idea”?

In IBM’s amicus brief in Alice, we argue that the abstract idea test doesn’t work for computer implemented inventions. The Court has not provided guidance on how to identify a patent ineligible abstract idea, and thus lower courts, the PTO and the public can not consistently apply the test. In the present case, this confusion resulted in multiple opinions (with no majority) spanning over one hundred pages at the Federal Circuit, despite that court’s decision to hear the case en banc. A closer look at the types of concerns raised by certain computer implemented inventions reveals that the non-obviousness requirement would be a more appropriate vehicle to address these concerns, because the inventions are in fact old methods implemented on computers using conventional means — embodying nothing truly new. More importantly, when properly understood, computer-implemented inventions are never really abstract because they are implemented on a machine.

Computer implemented inventions, particularly in software, form the basis for innovation not only in the technology products we use every day, such as laptops and smartphones, but in everything from cars to surgical techniques to innovations that increase efficiency and production in factories. Strong and effective patent protection for these innovations in the U.S. has fostered a fertile environment for research and development and, as a result, the US is the undisputed leader in the software industry. We stand at the threshold of a new era of cognitive computing—ushered in by advances such as IBM’s Watson — in which machines will learn, reason and interact with people in more natural ways. Patents have helped fuel the software breakthroughs we rely on today, and will help spur the innovations of tomorrow. We hope the Court — and the patent community — will consider our future as we address the fundamental issue of what our patent system is and should be designed to protect.

Additional perspective about IBM’s stance on software patents and CLS Bank amicus brief can be found at:

— Gene Quinn, IPWatchdog: Supreme Court “Abstract Idea Doctrine” Is Unworkable

— Steven Lundberg, National Law Review: IBM Weighs in on CLS Bank: The Abstract Idea Test is Unworkable for Computer-Implemented Inventions and Should be Abandoned

— Kelly G. Hyndman, Jurinspired 005, January 31, 2014

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With the Honor of Patent Leadership Comes Responsibility

by Manny Schecter, IBM Chief Patent Counsel

As the leading recipient of U.S. Patents for 20 consecutive years, we take pride in knowing that over the last 20 years the innovative talents of IBM inventors have generated thousands of original ideas and inventions that will enable fundamental advancements in technology and society. We are also proud because we believe patent leadership comes with a responsibility to continuously strive to improve the patent system, and we have taken many steps with a goal of fulfilling that obligation.

Patent leadership is an important reflection of IBM’s commitment to R&D and innovation. We believe our role as a leader places us in a unique position to help shape the patent system in the U.S. to promote innovation. Of course, this is a task that is never truly finished.

Among the steps we’ve  taken were to unilaterally commit to raise the bar on the technical content of business method patent applications; organize the Peer to Patent project to validate the ability of the public to assist patent examiners in identifying prior art (a capability now codified in the America Invents Act);  promote open innovation by pledging not to assert our patent rights in select areas of societal importance such as open source software, health care, and the environment; and demonstrate how metrics can be used to improve patent system transparency. We have also submitted numerous amicus briefs urging courts to interpret the law so as to best encourage innovation.

These were not actions that promoted our self interest or favored our short term business prospects.  We believed, however, that they were in the long-term interest of the health of the patent system and that what is good for innovation is ultimately also good for IBM.   That is why we continue to strive to optimize the patent system for all constituents.

Today, with many pundits arguing for the elimination of patents relating to software, we are advocating for the need to continue to protect this pervasive platform for innovation, and pointing out the inconsistency of protecting processes implemented mechanically or electrically (but not protecting the same processes implemented using software).

While some may question our motives, we will continue to take actions that we believe aid the patent system in fulfilling its objective of promoting innovation.  We view that as one of the responsibilities of patent leadership.

 

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IBM’s 20th year of U.S. patent leadership

by Sandy Block, IBM Intellectual Property Law

One message transcends political parties, national borders, and enlightened corporate boardrooms. Innovation is critical to economic growth and economic growth is critical to our future.

IBM, through its 12 research labs on 6 continents and its global development efforts has, for decades, been committed to innovation in a broad range of technologies. This dedication is reflected in IBM’s $6 billion annual investment in fundamental research and development.

And it is also reflected in a recent announcement that, for the 20^th consecutive year, IBM leads in U.S. patent grants. In 1992, IBM edged out the prior year’s leader Toshiba and has led in U.S. patents ever since. In 2012, IBM was granted a record 6,478 patents.

But the real message is how IBM’s innovation, growth, and valuable patents are intertwined. A robust portfolio of patents enables IBM to exchange (or cross license) with others who have patented inventions that IBM may wish to access. This provides IBM with “freedom of action” in developing technologies for its offerings and, in some cases, royalties which can also be re-invested in further innovation. And, by making patented technology available to others, we often see the market expand for all, resulting in greater benefits for IBM, customers, and the industry.

In some instances, innovative patented technology cultivates new industries. Consider the IBM Watson innovation of Jeopardy! fame. The Watson computerized “contestant” understood complex and nuanced clues and derived a desired result in the TV game show Jeopardy!. Years of research and re-work resulted in innovative algorithms and processing methods that leapfrogged existing technology. Well, the Watson computer system has been adapted to innovative health care and other sophisticated applications. With patents, new opportunities have followed.

Patents provide IBM with the assurance that others will not dissect the Watson computer system and cancel the value of time, effort, and investment made, and they are an important part of the incentive to create the next Watson computer system. So, Watson innovation, protected by patents, is driving new markets, new product value, new jobs, and new choices for the public, contributing to IBM’s product, service and IP licensing returns, which can be invested to further fuel R&D. Similar synergies can be told about other recent IBM innovations ranging from semiconductors and nanotechnology to Smarter Planet solutions.

In achieving U.S. patent leadership, IBM recognizes the need for quality as well. Which is why IBM has led in supporting measures allowing questionable patents to be challenged. Improvidently granted patents adversely impact not only makers and users of products, but also the holders of sound patents. Not all patented inventions are game-changing breakthroughs — most inventions are incremental advances on which further inventions are made. But granted patents should satisfy the Constitutional promise of “promoting …progress in…the useful Arts” as reflected in U.S. laws.

The interplay of innovation, growth, and patents has placed the world’s information at our fingertips. IBM is proud of the inventors and innovators who contributed to this landmark of two decades of patent leadership and more importantly the role they have played in making our world a better place.

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The Silver Lining in This Year’s US Patent Rankings

By Manny W. Schecter

Chief Patent Counsel, IBM Corporation

The recently-released tally of US Patents awarded in 2011 gives those who are concerned about America’s global competitiveness plenty to think about. Only two US companies, IBM at No. 1 and Microsoft at No. 6, appear on the top 10 list. Hewlett-Packard and Intel have dropped off. The rest of the companies in the top 10 are headquartered in Asia.

This news reminds us that we live in a highly competitive, global economy and it is vital that we remain vigilant about preserving and fostering an environment for US companies to innovate. That includes strengthening science, technology, engineering, and math curricula at all levels, investing in fundamental scientific research, making it easier for entrepreneurs to launch and grow their companies, and strengthening our patent system.

There is another message hidden in the rankings. The results show that the United States is a magnet for global innovation. Why do foreign companies apply for so many patents here? Simple: The US has balanced intellectual property laws, a fair patent system and a strong rule of law that protects the creative work of inventors.

The recently-enacted America Invents Act (AIA) is the most significant reform to the patent system in 60 years.  The AIA improves the fairness of the system and the quality of patents by giving third parties the opportunity to submit information related to a pending application for consideration by the patent examiner and by expanding the ability to challenge existing patents. These reforms will help ensure that patents are issued  and enforced only for inventions that are truly novel and deserving of a patent. The Act also harmonizes US patent law with those of other major countries by switching to a first-inventor-to-file system from a first-to invent system. This is important for businesses that must operate in an increasingly global economy and will help speed examination by promoting work sharing between patent offices.

On the judicial front, America’s court system provides patent holders ample opportunities to enforce their patent rights while at the same time providing fairness and balance in the remedies applied. The US Supreme Court decision in eBay Inc. v. MercExchange LLC established firm guidance for the lower courts: the balance of hardships between plaintiff and the defendant—and the public interest—must be considered before issuing an injunction preventing the sale of products. In cases where the plaintiff does not use the patented invention in products, lower courts’ application of eBay has resulted in fewer injunctions.  As the Federal Trade Commission indicated in its recent Evolving IP Marketplace report, the eBay decision allows courts a more nuanced analysis that recognizes injunctions may in some situations unnecessarily raise costs and deter innovation.

Reform isn’t a one-time act. It must be continuous in response to changing circumstances. So we applaud US PTO Director David Kappos’s vow to produce what he calls a “National IP Strategy” this year. He aims to outline the Obama administration’s key IP priorities, its plan to improve patent protection for small businesses and efforts to increase engagement with China on issues of IP enforcement.

It’s a remarkable time for innovation globally. Think of IBM’s Watson data management and analytics technology, Samsung’s advances in flat-screen TVs, Apple’s iPad, and Facebook’s social media. The future will be bright, too, and the United States will continue to be a locus for innovation, if American companies and foreign firms alike get world-class protections for their inventions and fairness in resolving competing claims. Government and industries must continue to work together to preserve and strengthen U.S. innovation.

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IBM Recognized as Top 100 Global Innovator

During a lecture at the Computer History Museum in California earlier this year, IBM CEO Sam Palimisano, observed “To innovate successfully for a decade or a generation — much less for a century — you have to be able to turn discovery into profits.”

This steadfast commitment to innovation has long differentiated IBM from its competitors and positioned the company to rapidly respond to challenges and efficiently capitalize on new business opportunities.

IBM’s innovation leadership is evidenced in its 18 consecutive years of patent leadership, five Nobel prize winners, seven U.S. National Medals of Technology, five National Medals of Science and memberships in the National Academy of Sciences.

Another recognition of the company’s role and influence as an innovation leader is its ranking on the Thomson Reuters 2011 Top 100 Global Innovators list. Thomson Reuters has honored companies for their ability to invent on a significant scale; are working on developments which are acknowledged as innovative by patent offices around the world, and by their peers; and whose inventions are so important that they seek global protection for them.

According to Thomson Reuters, the Top 100 Global Innovators exemplify the essence of innovation and drive inventions for economic growth, which having established systems for vetting inventions and determining which ideas are worthy of protection.

Innovation is central to IBM’s business model and has defined the company since its founding over a century ago. Patents are an essential link between innovation and IBM’s ability to serve its clients, and thereby, enable business growth and commercial success.

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