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.

Read Full Post »

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.

 

Read Full Post »

Why It’s a Good Idea to Submit Prior Art as a Third Party Under the New America Invents Act Provisions

by Manny Schecter, IBM Chief Patent Counsel

As the patent community attempts to navigate the complex set of rules associated with new proceedings under the America Invents Act that enable challenges to issued USPTO patents, there is a simpler and potentially more effective way to improve patent quality — submitting prior art references as a third party under the pre-issuance submissions provisions. The provisions are designed to improve the third party submissions process to enable higher quality, more efficient patent examination. Yet, key features of these new provisions are often overlooked and, upon closer evaluation, it’s evident that taking advantage of these provisions is a good idea.

Under prior law, a third party could submit a prior art reference to the USPTO, but could not include an explanation of its relevance to a pending patent application without the consent of the applicant. A third party was thus discouraged from making a submission out of fear that a patent examiner would not recognize the significance of a submitted reference to a patent application and issue a patent anyway. The America Invents Act now requires a third party to submit an explanation of the relevance of a prior art reference, thereby improving the likelihood that a patent examiner will recognize how it relates to a patent application to the fullest extent possible. A prior art reference already identified to the USPTO by an applicant may even be a candidate for a submission: for example, it may have been incompletely or inaccurately characterized and submitting it with a statement better characterizing its relevance may help a patent examiner apply it correctly.

In considering whether to make a third party submission of prior art, one must still weigh the opportunity to eliminate or narrow claims of a patent against the risk that a patent will be strengthened because a submitted reference will be “of record.” That is, if the reference is considered by an examiner and recorded in the patent file, but the claims are unaffected, it may be more difficult to bring a successful challenge to those claims based on the same reference after a patent issues, as compared to a reference the examiner never considered. Some organizations opt to withhold references to save them for later use upon assertion of a patent against them. Although a reference may have more value after patent issuance if it had not been previously considered by a patent examiner, submission of a reference during patent application examination allows it to be considered by the patent examiner without having to overcome the “clear and convincing” standard for proving patent invalidity that will apply in court once a patent issues.

Other benefits of a pre-issuance submission are also worth considering. As members of the public and patentees, we all have an interest in improving the efficiency of patent examination. Once applicable prior art references are made available to patent examiners they are apt to perform a better examination not only on the patent application then under examination but with respect to later patent applications relating to the same technical area because the examiners will add the references to their arsenal of applicable prior art. In this way the benefits of active public participation promise to enhance the quality of patent examination generally and not just for a specific patent application for which a reference was submitted. We should also favor getting examination correct at the outset rather than trying to fix a problem later (after patent issuance) when the expense of doing so increases significantly and the burden of proof may be higher. Even if a post-issuance challenge is successful, during the interim the public is needlessly forced to concern itself with a meritless patent.

Read Full Post »