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Date sent:      	Thu, 17 Feb 2000 04:47:28 -0600
Send reply to:  	patent-l@ftplaw.wuacc.edu
From:           	Gregory Aharonian <srctran@world.std.com>
To:             	Multiple recipients of list <patent-l@ftplaw.wuacc.edu>
Subject:        	PATNEWS: More on PTO's banning URLs in patent specifications

!20000216  More on PTO's banning URLs in patent specifications

    But first, Computerworld reports that politicians in the State of
Virginia passed something even more crappy than the average software
patent, the Uniform Computer Information Transactions Act (UCITA),
which would let vendors disable software if they believe users violate
a license, and other contempts for the customer.  I wonder what the
ratio of purchasing legislation is for the federal and state levels. 
More on the passage of UCITA in Virginia at:

    Next, the current issue of Technology Review has an article on
patents by Seth Shulman, who was been writing about the craziness of
this problem as well: 
http://www.techreview.com/articles/ma00/shulman.htm Seth's article is
online, at the URL above.  Technology Review is having an online forum
on IP at http://www.techreview.com/forums.

    Finally, last week the EE&CS Department at the University of
Berkeley had a two day conference on future information technologies,
the latest goodies from their labs.  Program papers and keynote
presentations in movie form are at

(Note: the use of URLs above in no way is an attempt to encourage
people to do so similarly in their patent applications).


Yesterday I sent out a PATNEWS on a new PTO policy to prohibit URLs
and executable Web code in patent specifications.  I received a lot of
email about this PATNEWS, which surprised me because this naive policy
is about as naive as many other computer-related policies PTO
management dreams up. Anyways, what follows are some of the comments I
received, and my replies.


According to the memo, the policy went into effect February 1, 2000
and won't be official from some time.  Apparently until then, you can
ignore any requests from the examiners to follow the policy, at least
based on one comment from a lawyer:
        To the extent a Patent Office Rule makes a change in stated
        policy but the new policy is not available to the public, the
        change is not enforcable under administrative law.  See 5
        U.S.C. 553.  See also Nabisco v. Mossinghoff, an unreported
        decision from the district of New Jersey of about 1984.
And no, I didn't do a deal with the PTO to publish the policy to make
it public :-).

Some comments reflecting multiple replies, mostly from lawyers. 
First, many agreed with the PTO and argued against me when I argued
that URLs should be allowable in patent specifications (beyond the
irrelevant distinction made in the policy statement to only reject
URLs in <>, with the PTO apparently not knowing that programs like
Word will automatically turn even partial URLs like "www.uspto.gov" in
text files into active hyperlinks that more normally would require the
specific form in the memo such as <A HREF="http://www.uspto.gov">. 
The main objection was the transitory and unverifiable nature of Web
links.  As one programmer commented:
        Part of their problems is their reliance on the notoriously
        security-plagued Microsoft product line, like MSWeird, which
        is a favorite target of virus hackers, that examiners have to
        use for their Office Actions.

Unfortunately, in the non-patent prior art that PTO management
continues to ignore dealing with in a serious way, URLs are becoming
are popular reference mechanism, especially in papers and reports on
the Internet. Look at the footnotes and bibliographics of papers
coming out of the annual World Wide Web Conferences (most of which are
never cited) - lots of URLs used as references.  If such references
are good enough for those skilled in the art, they should be good
enough for the PTO.  As one reader agrees:
        How does the USPTO plan to deal with non-patent prior art
        which happens to be indexed as a URL?  Patent applicants are
        under an obligation to disclose to the USPTO any prior art of
        which they are aware.  What if this prior art is referred to
        only as a URL?  Should the applicant not disclose it?  Or
        should the USPTO not publish it?

Solution?  Require any URLs in patent specifications to be printed out
and submitted in IDSs, and/or have Congress fund the Library of
Congress to set up a facility to archive and hash-timestamped Web
pages for future retreival and verification.  Or as one reader
suggested, a new profit opportunity for the PTO:
        An acceptable alternative would be to submit the electronic
        version of the pertinent information and PTO then can create
        their own repository of such necessary relevent concerned
And working with the Library of Congress could open up channels to get
LoC with the PTO's prior art problems.

One other thing - paper documents can be just as transitory as URLs.
Consider old software user manuals, which few people archive,
including the software company itself.  Many are submitted in as
non-patent prior art, and in some cases are the only publicly
available copy left after many years.  All someone has to do is check
out the filewrapper, remove the manual (or any other obscure art in
the filewrapper), and check the filewrapper back in.  The reference to
the manual on the front page is now just as useless as a URL that has
been deleted.  Don't think this is a problem?  Here is some gossip
from a private searcher who hangs out in the PTO public search
        I was discussing exactly this problem with a professional
        document handler yesterday. It seems that, more and more, all
        the documents are missing from patented files.  He went into
        great detail as to the problems he has had getting the
        non-patent art from files. From my own experience, it may take
        up to three days [or longer] to get a patented file. Plus,
        "Abandoned Files" STILL seems to be a "black-hole". 
        Apparently the document handling professionals are not coming
        up with the documents and others are blaming THEM, perhaps
        completely unfairly.

Sure the transitory nature of the average Web page is much more
probable than for a paper document, but they do share the same problem
whose solution is not transitory PTO policies, but a revamping of how
the PTO handles non-patent information in general.  Never happen, but
it is the solution.

One lawyers took exception to the PTO's URL policy:

 First of all, mere recitation of a URL is not an incorporation
        by reference any more than the mere recitation of an article
        is an incorporation by reference.  The recitation must evince
        some attempt to incorporate in order to be considered an
        incorporation by reference.  If mere recitation is sufficient
        for a URL, then it will be for an article.

 Second, if the constitutional purpose of the patent system is to
        promote the dissemination of technical information, how can
        this URL policy be said to promote the purpose it is supposed
        to be serving?  Maybe the USPTO needs to review it's reason
        for existence.

Dealing with URLs will distract the PTO from its existential mission
of delivering as many patents as possible to its large corporate
customers. A comment from a corporate patent lawyer, including a
criticism of the CAFC:

 This PTO notice does indeed seem strange to me, IF it really does
        requires removal of technical publication web site addresses
        from patent specifications [as opposed to PTO Form 1449
        citation forms]. [E.g., I recently found a publication that
        was only published on a web site, and must therefor cite it by
        its web site address.]

 I cannot see any logical difference between this PTO notice,
        preventing citing an internet publishers address in the spec,
        as compared to a PTO notice that would improperly demand the
        removal from a specification of the cited mailing address of a
        Technical Library in which a thesis is cataloged (which is
        clearly a prior art publication under established case law),
        OR the identification of the publisher of a hardcover book, OR
        the citation in the specification of the address of a supplier
        of a catalogued or trademarked precursor chemical [which is
        REQUIRED by two particularly egregious "best mode" panel
        decisions of the CAFC ]. 

 Nor can the PTO take the position that something published on a
        commonly accessed web site and easily found by a search engine
        is not a "publication" or not publicly "known" under the
        patent laws.  Even if the publication date is indeterminate,
        if it was publicly downloaded before the patent application
        filing date it is a 35 USC 102(a) citable reference.  

 The fact that web site contents may later change is no different
        than the fact that chemical products only identifiable by
        trademarks may also change, or that technical papers handed
        out at technical conferences may not be readily available
        later on either. 

 P.S. I hope the PTO is not planning on relying on the two (note
        the dissent) patent-practice-clueless CAFC panel majority
        members of a very recent CAFC decision on "incorporation by
        reference", who obviously never even read the REST of the very
        MPEP Section 608.01(p) cited as "authority", or they would
        have noted that this Same MPEP Section, at I.A.2., ALLOWS
        cited publications text to be inserted into the specification,
        without a new matter objection, even for essential claim

with a similar comment from another lawyer:

        How does inclusion of a URL in a patent application or an
        issued patent differ from identifying any essential component
        included in the best mode of the invention by a trade name or
        by the manufacturer's name.   Finding the trade name of the
        manufacturer's name in the patent, one could then look them up
        in Thomas Register.  This type of craziness is a result of
        being within the Beltway and having a Beltway, governmental
        bureaucratic mentality.  Note that the Federal Circuit
        recently rejected such a Beltway, governmental bureaucratic
        mentality in Atmel Corp v. Info. Storage Devices, Inc.  Likely
        this latest craziness, recall that the USPTO opposed patenting
        software for 10 to 20 years, will ultimately get straightened
        around, hopefully not in 20 years.

One lawyer made the following observation on why something must be

        I had pointed out in a recent post to misc.int-property that
        the PTO web server for full text patents was passing any HTML
        tags in the specification as raw HTML to the user's browser.
        This feature would enable hit tracking by the use of embedded
        image tags to, for example, a single pixel image stored on
        your server since that image would be requested from your
        server each time the patent was viewed on the PTO server.

        Apparently the gist of that message was passed along, and was
        garbled to "URLs" instead of HTML tags generally.

        There is a prominent note on the PTO web server to the effect
        that they don't collect or retain search or hit information.
        However, if you'd like to know the IP addresses of whoever
        might be looking at your patents in the full text database,
        there appears to be a rather simple method for doing that.

        Interestingly, the full-text patent database serves exactly
        what it says - the full text.

        And if that text happens to include any HTML or Javascript,
        well, the PTO full-text database merrily serves that too...
        and your browser, or anyone else's, will parse and/or execute
        the code that is included in the text of the patent.

        Among the amusing sites to see in the full-text patent server
        HTML zoo, there are lots of image tags, font formatting tags,
        a couple of people who've had their patents cut-off in
        mid-stream by tags indicating the end of the body or the end
        of the file, at least one pull down menu, a submit button, a
        java applet window, and assorted form fields.  One of my
        favorite ones is the guy who managed to get a working "mailto"
        link included in the text of his patent.

        For example, scroll through the full text of U.S. Pat.
        5,978,817, and you'll get a pretty good idea of what I mean.

        Better yet, scroll to the bottom of U.S. Pat. No. 5,930,474

        In general, it appears that putting the code into a table in
        the patent text works better than including it in the main
        text, since it is less likely to have extraneous font format
        tags inserted in inconvenient places.  It appears that most of
        the unintentional working examples of  HTML code in patent
        text use relative addressing for the image tags instead of
        absolute addressing (i.e. including the complete URL).  I
        haven't found any pictures yet, but I've only dug into it for
        about 20 minutes. So, instead of an actual image, what is
        normally displayed is a 10x10 pixel "missing image" icon (in
        an IE browser).  However, if you'd like to get the picture of
        your choice (say, a single pixel) into the full-text database,
        you should include a complete URL to your server in your
        sample HTML.  Then, all you need to do is to keep an eye on
        the HTTP referrer log for that server, and you will collect
        the IP addresses of any companies or law firms that have
        retrieved the text of your patent from the PTO server.

        I'm not sure whether the PTO server permits server-side
        includes, but if it does, then you can use an include to
        insert text from your server into the text delivered to the
        browser simply by having the include tag in the text of your
        patent, along with the URL of your text file.  Imagine sparing
        yourself the headache of re-issue by retaining the ability to
        alter the claims (at least as provided by the full-text
        database) at your leisure.

        And if you think that's amusing, just wait until the corporate
        lawyers start doing that to their SEC documents, which are
        similarly served in full-text format by the SEC's Edgar server
        - real-time financial, um, corrections.

        John Berryhill Ph.D. J.D.

Yes a problem, as another reader points out:

        Well, to be honest, I don't think Mr. Kurnin is as clueless as
        you, Greg.  Did you miss the point of his memo? It's a good
        one. The PTO is making these patents accessible to the public
        through the Internet and a bunch of wise-asses are taking
        advantage of the PTO's efforts by embedding links to their
        sites in the specification. It doesn't strike me as
        mismanagement to shut that nonsense down. Some idiot could
        embed a link to some porn site or, who knows, even your site.

But there are solutions that still permit HTML coding and similar
types of coding to appear in patent specifications without such
problems (such as having the PTO create an archive - and charge a fee
to put references into it).  Occasionally the PTO has to bend to the
technology, and not the other way.  Think of embedded coding in Web
pages as a potential virus.  Well, we have lots patents and products
on virus scanners - why not adopt them to analyze patent
specifications to remap such potential references to a special Web
server at the PTO?  Then again, the PTO has yet to write and use a
computer program to veryify the antecedent basis of all words in a
patent claim (a trivial programming task).  So the policy is clueless.
There are PTO fees for claims over 20 claims - why not a PTO fee for
URLs as well, with the money used to fund an archiving service inside
the PTO?  Any URL reference in a patent specification could be used to
download the Web page to PTO computers, analyzed for potential
liabilities and altered to remove such liabilities without changing
the information disclosure aspect of the URL.  Similar techniques can
be used for embedded coding.

So I stick to my original criticism.  URLs and HTML/Java/etc. have
legitimate uses in patent specifications (just as they do in journal
articles and other publication forms) that should be allowed under the
patent law.  If there are problems, the solution isn't some naive
knee-jerk prohibition by PTO management, but along with other
non-patent prior art problems the PTO is having, an opportunity to
modify existing PTO systems with new features.

Greg Aharonian
Internet Patent News Service
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