[FYI] (Fwd) PATNEWS: Patent quality: uncertain enough to drop Validity

["Axel H Horns" <horns@ipjur.com>]

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Date sent:      	Fri, 15 Sep 2000 21:37:10 -0500
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From:           	Gregory Aharonian <srctran@world.std.com>
To:             	Multiple recipients of list <patent-l@ftplaw.wuacc.edu>
Subject:        	PATNEWS: Patent quality: uncertain enough to drop Validity

!20000915  Patent quality: uncertain enough to drop Validity
!Presumption?

    Does there become a point in time when the quality of issued
    patents
becomes so uncertain (where they aren't bad) that the Presumption of
Validity should no longer apply?  On one hand, you have PTO management
and large corporations saying patent quality is fine, while on the
other hand you have PTO examiners and increasingly pretty much
everyone else saying patent quality isn't fine and getting worse. 
Whoever is correct, the great uncertainty is certainly grounds to
argue that automatically assuming patents are valid is questionable,
especially in light of the use of way too many questionable patents as
litigation harassment tools.

    What's worse is the lack of professionalism on the part of IP
    groups
such as IPO, AIPLA, PLI, ABA IP section, etc., who steadfastedly
refuse to have any serious discussions/debates on the issue of patent
quality to the point where one of the most revealing "debates" on this
issue appeared in, of all places, a recent issue of the newsdaily USA
TODAY (and for the zillionith time, I will repeat my offer to debate
Commissioner Dickinson in any of the above "professional" forums on
the ethics of his definition of patent quality").

    That said, here is a bunch of items showing how uncertain patent
quality, and the thinking about patent quality, is becoming.

    --  USA TODAY articles on patent quality
    --  Uproar at management/examiners meeting Tuesday - boos and
    chants --  IPO/PLI patent meetings (once again) totally ignore
    patent quality --  horrible IEEE article on software patents by
    patent lawyer

Greg Aharonian
Internet Patent News Service
                              ====================

    --  USA TODAY ARTICLES ON PATENT QUALITY

    Monday's USA TODAY had a very well written cover page story on the
    
controversy of patent quality, with a second article inside on the
flow of experienced examiners out of the PTO.  You have to wonder why
much of the information appearing in such articles is appearing in
such articles instead of the publications and at the meetings of
so-called professional organizations such as the IPO, AIPLA and PLI. 
First, some of the statistics appearing in the articles:

        -  PTO on track to issue 200,000 patents in the year 2000 - 
        Over 5000 Internet patents to issue in 2000 -  20% turnover in
        computing examiners -  >50% of ALL examiners have been there
        less than two years

Do these numbers not suggest a growing quality problem?  For example,
in the 1991 to 1997 time period, the PTO issued about 100,000 patents
a year.  Suddenly six years later, the PTO is issuing 200,000 patents
a year.  Now does anyone really believe that the inventiveness of
mostly American and Japanese inventors really doubled in six years -
was there really that much truly novel and unobvious and undiscovered
to cause this 100% increase in issued patents?    I THINK NOT.  5000
Internet patents in 2000 - when everyone in the Internet world first
stops laughing, and then stops crying - I say -   I THINK NOT.   Half
of the examiners been there last than two years?  Isn't two years
about how long it takes to become an experienced examiner?  So should
patent quality be questioned, especially in light of the conflicting
comments from the Commissioner and the head of the PTO examiners'
union, POPA, that appear in the article:

    Ron Stern: 'Ronald Stern, president of the patent examiners union
    says examiners are working under "sweatshop" conditions to meet
    productivity quotas'.

    Dickinson: "We're not overwhelmed.  We're doing a great job."
    followed later in the story by 'Dickinson says the quality of work
    has yet to suffer and offers an annual survey of patent lawyers
    and companies that shows 67% are happy with the fairness of patent
    decisions, up from 54% in 1996.'

The two views, sweatshop versus not_overwhelmed, are contradictory,
and even assuming the union is exaggerating to some extent, because
that's what unions do for their members, it is offset by the PTO's
exaggeration about how good things when they use a defense that
distorts the spirit of the Constitution - that patent quality is
defined by the needs of the patent applicants the PTO surverys, but
not as well the American public on whose behalf the PTO awards patents
(and the lack of representation of the American public on the PTO
Advisory committee makes the committee illegitimate as well).  It just
shows how dysfuncational and hypocritical the patent system has become
that the Commissioner is forced by the nature of his office to offer
such a lame defense for the quality of patents - come on does anyone
really not believe that privately Commissioner Dickinson knows his
defense is silly?

                              ====================

    --  UPROAR AT MANAGEMENT/EXAMINERS MEETING TUESDAY - BOOS AND
    CHANTS

As I mentioned prior, PTO management is offering examiners a raise in
return for relying solely on electronic searching.  Here is some
gossip from one of my usually reliable sources about a heated meeting
between the examiners and management on Tuesday:

    To Greg Aharonian:

    With regards to the Tuesday meeting that PTO management demanded
    with union membership at Crystal Forum to discuss their offer of a
    pay raise in return for the examiners relying solely on electronic
    searching. According to some in audience the meeting "blew up in
    management's face".

    Meeting had as speakers Ron Stern (head of examiner's union) and
    Nick Godici (head of PTO patent operations) speak. (Godici first,
    then Ron, then Godici).  Godici tried to sell a deal but not the
    one in writing. Ron pointed out that what Godici was saying was
    NOT what the deal actually was, and in fact very much at odds with
    the written deal.

    Examiners attending said that Godici was "nervous as hell" --
    (noted because that is unusual).  Speculation that his job is
    dependent on the examiners taking the deal.  Comments to me
    include "disgust" at Godici's blatant misrepresentation, and
    whatever respect he had has been lost.  

    Boo-ing points he was trying to make.  At one point a question was
    asked, but he didn't answer it and continued, so several audience
    members started yelling "Answer the question, Nick!"  At one
    point, the audience was chanting "Answer the question, Nick!". 
    Nick got all the heckling, Ron got the applause.

    Comments also say that managers are pressuring NON-union members
    to join for the vote (next week) and then they can quit the union.
    (Not sure if one can quit so immediately but that is what is being
    told). Time for subpoenaing the emails!!

    One person has reminded me of the quotes from report of Jan 22,
    1999 roundtable and wondered if management is planning on
    "spreading the wealth" to management as promised in the Jan. 22,
    1999 roundtable by Dickinson and their giving examiners raise is
    to deflect attention from their own huge raises...

                                   ====

    As an aside -- leaks has it that the upcoming GAO report on
    East/West is VERY negative on the PTO. "SEVERE DISCONNECT between
    the persons implementing (it) and the end users"

    Godici was the person that beta testers repeatedly reported to
    regarding EAST/WEST and its fatal flaws in formal presentations
    and reports.  The insistence on deploying it in light of KNOWN
    REPORTED FATAL FLAWS was the basic reason for the petition.  The
    "disconnect" by management was deliberate "the hell with the
    facts" by management. It will be interesting to see if the GAO
    report will be a public document and how much of the testers'
    reports was given to investigators -- who apparently DID NOT
    talked to the testers.

                                   ====

    Here is some feedback regarding the deal management is trying to
    foist on examiners.  Raise in return for lots more work and no
    more time -- with a brief analysis of search time.

    Let us say examiner allocates 100x minutes for searching -- and
    uses 80x to search database A as most likely relevant and 20x for
    others. Happens to find usable art in database A at the 60x time
    mark.

    With 4 or 5 databases to search the 100x time must now be divided
    ... so now allocates 30x to search database A.  Must leave
    database A before finding the usable art....RESULT:  search is now
    WORSE!!!

                                   ====

True? False? Who knows?  And even worse, who is there to investigate
and analyze these issues for the public.  ABSOLUTELY NO ONE.  The
integrity of the system is irrevelant.

                              ====================

    --  IPO/PLI PATENT MEETINGS (ONCE AGAIN) TOTALLY IGNORE PATENT
    QUALITY

The Practising Law Institute is having its annual meeting on IP Law in
September (New York) and November (San Francisco), and the
Intellectual Property Owners annual meeting is somewhere in Texas this
fall.  No where on the agendas of these "professional" gatherings is a
session explicitly about patent quality and the problems at the PTO. 
Since such problems directly affect the quality of examination of
their client's patent applications, you would think patent lawyers
would want to hear as much as possible.  But no.  For example, here is
a list of the titles of the talks of the PLI meeting:

        - Recent developments regarding business method patents
        - Intermediate copying
        - Music, the Internet and the music industry
        - Trade secret developments
        - "Not All Internet Patents are Controversial" - luncheon talk
        - Trademarks, fair use and the First Amendment - Settlement of
        IP litigation as antitrust conspiracy - Doctrice of
        Equivalents - Recent developments in Markman jurisprudence -
        Ethics in technology protection - Right of publicity - Trade
        dress development - Recent developments in trademark law -
        European Union developments - Justice Dept / FTC on IP
        licensing - E-commerce licensing - Online liability -
        Anti-circumvention provision of the DMCA - International
        copyright issues

Quality?  Sweatshop conditions?

                              ====================

    --  HORRIBLE IEEE ARTICLE ON SOFTWARE PATENTS BY PATENT LAWYER

    I have been spending all week rinsing my brain of the mental taste
of one of the worst articles defending the software patent system I
have had the displeasure to read in the last ten years.  I almost
didn't write this PATNEWS because it forced me to have to think about
something I was trying to eradicate from my mind.  The paper is titled
"Debunking Software Patent Myths" and appears in the Jul/Aug issue of
IEEE Software, and is so bad that it is actually worse written and
reasoned than the PTO presentation a few years ago dealing with
software patent myths that criticized the PTO.  Even my fingers are
objecting to having to type in this PATNEWS.  If I have been critical
in past PATNEWS, take all of that criticism, heap it together, and
pile it on this article.  I won't mention the author's name to save
him the embarrasment of writing such nonsense, and hopefully this
PATNEWS will discourage all of you from obtaining a copy of the
article and finding out which "lawyer" actually wrote the article.

    The article attacks five criticisms of the software patent system,
after a short introduction that concludes "The sky is not falling, and
many attacks on software patents are faulty.  I discuss several of
these myths in the following sections."  We shall see.  The myths he
tries to attack are:

            SOFTWARE SHOULD NOT BE PATENTED
            THERE ARE NO VALID SOFTWARE PATENTS
            VALID PATENTS MUST CITE NONPATENT PRIOR ART
            PATENT APPLICANTS MUST SEARCH FOR PRIOR ART
            RECENT LITIGATION PROVES THE SYSTEM HAS RUN AMUCK

Let us look at each of his attacks and see how sound his criticism and
logic are for each one.

            SOFTWARE SHOULD NOT BE PATENTED

He starts out this section with "The first myth is that software
simply should not be patented."  Actually, I agree with him that this
should be a myth, that software should be patentable.  Unfortunately,
he rambles on talking to software engineers about Linux, copyright,
and expression in three paragraphs, when he could of, and should of,
been more professional and said that "In light of Turing/Church/Post,
hardware/software codesign tools and the Doctrine of Equivalents, if
hardware is patentable, then so should be software".  That's all you
have to say to a bunch of software engineers to convince them that
software should be patentable, that is if you know anything about
software engineering and are writing for a professional software
engineering journals.

Turing/Church/Post and others mid last-century definitely showed that
mathematical functions, algorithms, hardware, software are all
logically equivalent concepts (something the Supreme Court and CAFC
have never understood or had explained to them).  So without even
knowing what patent law's Doctrine of Equivalents is, just the title
of it is enough for software engineers familiar with the works of
Turing/Church/Post to agree that if any of mathematical functions,
algorithms, hardware and/or software are patentable, then all of them
are patentable.  And if the theoretical work is not convincing enough,
software engineers in recent years have been developing sophisticated
hardware/software codesign tools where a human inputs a system
design/architecture (written in some specification language like
VHDL/Verilog/SDL/LOTOS, etc.) and the computer program first
partitions the system into hardware and software structures, and then
using libraries, the computer generates circuitry for the hardware and
source code for the software, and can do so in multiple ways depending
on design constraints.  The invention lies in the original system
design, not the underlying hardware and software implementations.  So
if the hardware structures are patentable, so to should be the
software structures (in both cases, of course, where novelty and
unobviousness is present).

So any credible article in any IEEE journal defending software patents
that does not mention hardware/software codesign tools and at least
Turing, is not a credible article.  Such an article pays no respect to
the knowledge of the engineers reading the article.  Such an article
as this one.


            THERE ARE NO VALID SOFTWARE PATENTS

Safely, he starts out this section with "There are probably few people
who hold this extreme view.", which is true.  After a few more
sentences, he concludes:
 "Among the more than 20,000 software patents that the USPTO
        will issue this year, the PTO and the courts will rule only a
        handful invalid one day.  It is unreasonable to attack all
        software patents as equally invalid."

Huh?  Is there a logical argument here, or pretty random sentences
being thrown together?  First, as far back as the late 1980s, software
patent lawyers speaking at IEEE conferences were arguing that the
majority of issued software patents were not satisying the novelty and
unobviousness requirements ("The Patent/Copyright Interface", IEEE
Spring CompCon 1988, page 370), and that was before the PTO was
flooded with software patent applications.  Second, random surveys of
software patent lawyers and software engineers working in the patent
field show a consensus view that 60-80% of the issued software patents
are not satisying the novelty and unobviousness requirements.  A
priori, this is not even surprising, given that "the PTO and courts"
in reexaminations and litigation invalidate 50% of the patents that
come before them (and I repeat my compliment that the PTO does a good
job of reexamining software patents, if you look at the list of
software patents invalidated under reexamination by the PTO at my Web
site, www.bustpatents.com/invalid.htm).  And if there isn't a problem
with software patent quality, why is the PTO forced to repeatedly hold
hearings on software patent quality, like it has in 1994, 1999 and
2000 (and why didn't the author mention these hearings, such as
including the PTO Web address of the transcript of these hearings)?

Sure, it is idiotic to attack all software patents as equally invalid.
But it isn't idiotic to assume that the majority of issued software
patents are not both novel and unobvious, especially when no one in
the patent bar or the government cares to do a study to determine what
the actual percentage is.



            VALID PATENTS MUST CITE NONPATENT PRIOR ART

Two more paragraphs stating the obvious that the PTO has limited
resources in all areas of technology to find prior art (true), so it
is not surprising if they miss from time to time (true).  He concludes
with "As such, we should accept the possibility that software patents,
like all patents, are possibly invalid because the PTO might have
missed some prior art."  Also true, but also wimpy.

Possibility <--> statistics.  And here is a statistic I have repeated
many times in PATNEWS, a statistic that would have a big impact on
IEEE readers when it comes to this issue.  Upto and circa 1998/1999,
80% of the issued electronics patents
(hardware/software/circuits/optics/etc.) effectively cited absolutely
nothing from 30 years of IEEE/ACM/SPIE publications. Tell any software
engineer reading IEEE Software (who is probably a member of the ACM as
well) that software patents are issuing that cite nothing from ACM or
IEEE publications, and he will laugh in the face of these issued
patents.  Add to these statistics (which the author is aware of), that
HALF of all issued patents cite no non-patent prior art, and the more
honest conclusion to such a paragraph is that "we should accept the
possibility that software patents are invalid because the PTO did miss
a lot of relevant prior art".

Again, any IEEE/ACM article talking about prior art that does not
mention that 80% of the issued software/electronics patents
effectively cite nothing from IEEE/ACM publications, such an article
is dishonest.



            PATENT APPLICANTS MUST SEARCH FOR PRIOR ART

He starts out with "Because of the PTO's inability to thoroughly
search the software literature, some commentators have suggested that
paetnt applicants have a duty to perform the search themselves and are
acting in bad faith if they don't."  Hey buddy, my name is spelled
"Aharonian". I, and many others, are sick and tired of multi-billion
dollar companies, some who are hugh braggarts about their database
search technology (like IBM), not doing any prior art searching
themselves in their mad rush to pile up patent quantity while ignoring
patent quality.  He writes "From a legal perspective, that assertion
is wrong."  Hey, at one point slavery was legal.  He writes "... it is
a stretch to suggest that inventors are acting immorally when they
subjectively believe they are the first to invent but fail to search
for all relevant prior art".  Maybe, but inventors aren't even
searching for some of the relevant prior art.

At this point, this section is not too bad, but then the author
deliberately misleads the readers in the next paragraph:
        "The case is even less compelling at a practical level.
        There were 20,765 patents granted to US independent inventors
        during 1998, most of whom have no meaningful ability to search
        the prior art".

This is such a misleading distortion of patent statistics that it
borders on a lie.  First, there is little connection between
independent inventors and software patents.  The majority of
independent inventors are over in the Mechanical arts, while 90% of
the issued electronics patents, including software, go to corporations
(both statistics of which I have published in PATNEWS to be read by
the author, the alternative being the author could actually and
honestly research just who is acquiring software patents). And
multibillion dollar corporations own and acquire over 50% of all of
the issued software patents, all of whom have meaningful ability to
search the prior art, making another sentence of his a lie:
        "Only a handful of the largest companies have the resources to
        perform a comprehensive search."

Multibillion dollar companies getting over 50% of the issued software
patents are not a handful - they are a rich majority abusing the
system. Another dishonesty of the author is that he doesn't give
figures for the resource burden.  The average software patent costs
$10,000 to $20,000 to acquire.  A decent prior art search can be had
for $1000 (either by doing it yourself, paying extra money to the PTO,
or hiring a searcher), an extra 5-10% burden on the resources needed
to acquire a patent.  If the author was serious about discussing
resources, he could have easily mentioned some of the fees and
percentages to give the IEEE readers more perspective.  The author
didn't.  He concludes with:
        "The best system is the present one in which we charge the PTO
        with finding all relevant prior art."

Maybe best for patent applicants abusing the system.  But I suspect a
better system for the American public on whose behalf the PTO issues
patents would be for the PTO to double its patent application fees so
it gets that extra $1000 it needs to give examiners the time and
resources to do more thorough searches.  Much like the PTO, the author
doesn't think much of the American public's interests in the patent
system.



            RECENT LITIGATION PROVES THE SYSTEM HAS RUN AMUCK

He starts out with "Some software patent lawsuits have attracted
attention and are being used by many commentators to demonstrate that
software patents are overly broad and the system is out of control." 
Well, software patents are overly broad and the system is out of
control in issuing them, which has little to do directly with
litigation.  He goes on with:

        "But software and Internet patents are being enforced to the
        same extent as nonsoftware patents".

This is a very deceptive statement, which without qualification, is
very misleading to engineers usually shielded from most of the problem
of crappy patents being asserted.  If by enforcement you mean
litigation, then I agree the statistics for software patent litigation
aren't that much different.  However litigation is not the only
negative cost being caused by software patents.  Lots of companies are
receiving lots of letters in the mail informing them of potential
software patent infringement, lots and lots being due to the overly
broad software patents being issued.  For some, and maybe many of
these patent, companies have to get validity opinions from their
patent lawyers, which are expensive, say $20,000 to $40,000. In most
cases the opinion is that the patent is invalid and the lawyers can
scare away the patent assignee, but it is still a drain of money,
especially if you have to do this a few times a year.  And with
20,000+ software patents issuing a year, every company is a potential
target for hundreds of such letters.  That is what upsets so many
people, the monies being wasted on these skirmishes, and money wasted
on pat-tortion, where a patent owner asks for a $20,000 to $40,000
licensing fee, knowing that doing anything else, even getting a
validity opinion, will cost as much if not more, and for a less
satisfying result.

So while the problems of litigation due to bad software patents is
worth mentioning, it is misleading to introduce this idea to the IEEE
readers without explaining the other ways that victims are forced to
spend money fighting off bad software patents.

The author then defends the litigation system using the Amazon
one-click patent, first introducing claim one, and mentioning how the
PTO searched and found some prior art, and how Barnes and Noble
searched and found some prior art, but that in the end the court
upheld the patent's validity "..... observing that a
Barnesandnoble.com expert and inventor of some of the prior art
admitted that it had never occurred to him to modify his Web-basket
program to enable single-action ordering".  The author might have
wanted to contact the lawyers for Barnes and Noble and get their view
of the court's ability to understand this prior art.  Let me just say
that my money is on Barnes and Nobles' lawyers winning the appeal of
the lower court's decision, and when they do, I assume the author will
write a followup article for IEEE Software retracting this paragraph
that concludes "In short, in the Amazon.com case, the PTO got it right
by issuing a valid patent of the appropriate scope."

                              ====================

The author concludes his debunking article with the following
paragraph:

        "The software patent system is far from perfect but neither is
        it hopelessly in a state of disrepair.  The PTO does a good
        job of evaluating software patents.  Although additional
        training and search capabilities would certainly help, the
        focus should be on making such improvements rather than
        scrapping the system altogether."

Nice pablum that doesn't say much.  First, these problems with
software patents have been complained about since the late 1980s,
fifteen years or so, without much resolution or improvement (the
author demonstrates his own inability to deal with prior art by not
having a bibliography for this article where he could have cited at
least one of the 1980s IEEE articles written by a fellow software
patent lawyer severely criticizing the system).  This lack of progress
does suggest that the system is hopelessly in a state of disrepair. 
Neither the government nor the patent bar (of which the author is a
member) has done much on their own to study and fix the system, and
probably would have done nothing in the last few years, if it were not
for the complaints coming from the public and some members of the
patent bar.

Second, the PTO does NOT do a good job of evaluating software patents
(admittedly for reasons not all their fault, like wealthy applicants
not doing any prior art searching themselves). Repeated hearings on
software patents in 1994, 1999 and 2000, probably with more to come,
where mostly patent lawyers (not writers for supermarket tabloids, a
crack the author got in early in the article) criticized the quality
of software patents is evidence of problems at the PTO.

Third, the author says that more training and searching resources are
needed.  I agree.  Will the author being willing to start a campaign
in the patent bar to encourage the PTO to lift its fees to a level
sufficient to allow the PTO to provide these necessities to examiners?
HaHaHaHaHaHaHaHaHaHaHaHa.  I think not.  The author really isn't
serious about these issues, just trying to fill up the word count for
his column in IEEE Software.

Finally, he concludes with "... the focus should be on making such
improvements rather than scrapping the system altogether."   Funny, I
know of few professionals in the IEEE with software patent experience
that are suggesting that the system be scrapped.  If the author wasn't
so lazy, he might want to attend meetings of the IEEE Intellectual
Property committees, where IEEE members who are lawyers and/or
engineers work together throughout the year trying to improve the
system by providing advice to both Congress and the PTO.  Funny the
author didn't even bother to educate his readers about this committee
by providing their Web address (which is
www.ieeeusa.org/committees/IPC), a committee which as we speak is
currently drafting position papers to help the next Administration in
Washington deal with these problems come next January.

In short, I hope no one reading this article takes it very seriously
because of the information it omits and distorts.  And if you need a
good software patent attorney in the Seattle area, call me, I have
some good names.
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