Giant Slaying and Patent Reform

Last week, I attended a local seminar on the America Invents Act. Much of the discussion at the seminar was centered on arguments supporting the nature of the changes made. There were recitals of “what was wrong” with the old U.S. patent code, and so forth; then arguments were advanced justifying the principal changes (although the presenters almost implied these might be “principle” changes!).Without getting into a detailed discussion on the virtues or failings of the AIA (such as “first to file” and whether this will hurt, or help, any particular party) the gist of the seminar was that the U.S. patent system was unbalanced and no longer served the original purpose of protecting “inventions” in a coherent fashion.

Following the AIA seminar, I was doing some online research, to support drafting of some funding proposals. Since I like to slip in the occasional “true confession” here, I confess that in the course of such research I often follow a wild goose “link” and wind up reading interesting bits of history or trivia. Thus, I came across a discussion of AIA on another blog, from the Hoover Institution at Stanford University–Patently Bad Policy by F. Scott Kieff. Toward the end of the post, Kieff writes: “To paraphrase Judge Jerome Frank writing in the 1942 case of Picard v. United Aircraft: predictable enforcement of patents helps give the Davids the vital slingshots they need to take on the Goliaths.”

I felt compelled to search out this reference and read exactly what Judge Frank had written. So, I wound up reading some case law –OK, I don’t get out much. I was amused to find a somewhat familiar discussion of the problems inherent in the patent system (and enforcement of patents). The opinion in this case (Picard v. United Aircraft Corporation, 128 F. 2d 632 – Circuit Court of Appeals, 2nd Circuit 1942) was written by Judge Learned Hand, with Judge Frank writing to concur. As I understood the ruling, two key claims of the patent were held to be invalid, but otherwise a prior opinion was upheld.

Judge Frank does agree with the opinion of Judge Hand in this case, but is not entirely comfortable. He took the time to discuss how some of the patent claims might “seem” valid until you looked closely. But in the end, the subject matter was a mere “improvement” not rising to the level of “patent worthiness.” He summarizes, quoting an earlier ruling from Judge Hand:

Nothing is an invention which is the product of “the slow but inevitable progress…through trial and error” and of “the exercise of persistent and intelligent search for improvement.”

Nevertheless, he seems to feel that the patent disclosed something of value and that the patent system wasn’t able to capture or protect this properly. He is concerned that all “modern” research (back in 1942) is conducted such that “trial and error” is the name of the game, and that the “exercise of persistent and intelligent search for improvement” will result in many ideas being “unpatentable.”

If that means that every kind of patent system is outworn, the idea is disturbing. For, as I see it, there seems still to be room for some kind of patent monopoly which, through hope of rewards to be gained through such a monopoly, will induce venturesome investors to risk large sums needed to bring to the commercially useful stage those new ideas which require immense expenditures for that purpose.

Obviously, since patent law is expressly intended to offer incentive and rewards to inventors, not investors, Judge Frank goes on to suggest that we “may not need patents as rewards to inventors” since:

Modern industrialism owes much to the ideas of Faraday, who cared nothing for money. Kaempffert writes: “To be sure, inventors long for wealth. So do poets. But the patent laws are no more responsible for great inventions than are copyright laws for great poems. Watt was no more impelled by the desire to make money when he invented the separate condenser than Milton was impelled to earn the equivalent of twenty-five dollars by writing Paradise Lost.”

He also suggests that what might be needed is something “patent like” to protect investment in research and development:

And so patent monopolies may still be socially useful; they may, indeed, as I have said, foster competition. The David Co. v. Goliath, Inc. kind of competition is dependent on investment in David Co. — the small new competitor. And few men will invest in such a competitor unless they think it has a potential patent monopoly as a slingshot.

It seems to me that this is at the heart of all the hand wringing about patents today—and even about similar difficulties facing copyright law. Thus, there are those who honestly believe that certain advancements in technology are not proper candidates for patent protection(such as software) or that there are too many examples of “incremental improvements” being passed off as inventions (as for many biotech patents). Likewise, there are those who see no reason to limit patentable subject unduly, since their primary goal is to offer incentive for investment in the development of products.

Many times in a meeting with faculty I’ve observed that while we certainly can file a patent application to protect software they have developed, it might not be the best way to protect it. Then again, I can’t say that copyright law is a very satisfying alternative, and I’ve always wondered why someone can’t come up with an innovative mechanism that allows for proper protection of this sort of work. Obviously there are many people who agree that these were NOT intended to be included in the realm of patentable inventions. Further, modern business practices essentially defeat the intended purpose of a patent. If software is going to obsolete in 3-5 years, of what possible use is a 20 year “limited monopoly”?

In the end I agree with Judge Frank when he states that “[the] problem is not whether there should be monopolies, but, rather, what monopolies there should be, and whether and how much they should be regulated.” How many “slingshots” should be put into the hands of how many “Davids”? Which “Davids” should get a particular slingshot?  And don’t giants get to have slingshots too? Remember, Goliath can’t have been too happy about the outcome of that mythical encounter with his David. But then, if the slingshot was used effectively, maybe it would deter a modern Goliath from interfering in the business of the David holding it, and there would be no cause to actually slay any giants, just back them off a bit!

For now it seems, the only answer to the problem is offered by the current AIA legislation, about sixty years after Judge Frank’s comments. Only experience will prove whether AIA achieves some of the desired goals, but hopefully, it is a move in the right direction.


Patenting the Doodle…

 To invent, you need a good imagination and a pile of junk.

Thomas Edison

In the course of a normal work day, most of us find ourselves online and we often use the website. The entry page of the website is famous for being almost entirely clear of the usual webpage clutter.  The page is a simple white background dominated by a banner header Google, with just a handful of links to specific sections of the information services also offered by the company (such as, Maps, to search Google maps).  The banner heading, also famously, is sometimes used for a bit of fun–to commemorate holidays or historical events, the word/logo Google is enhanced–with artwork and sometimes interactive effects. This is called a “doodle” by the company–my all-time favorite being the Pac Man Doodle game that was actually a mini-version of the arcade game.

For those who might have missed it, filed a patent application for the “method” of their “doodle” and that application has been reviewed by the U.S. Patent & Trademark Office, resulting in the issuance of U.S. Patent No.7,912,915 entitled “Systems and methods for enticing users to use a website.” The abstract for the patent is included below:

A system provides a periodically changing story line and/or a special event company logo to entice users to access a web page. For the story line, the system may receive objects that tell a story according to the story line and successively provide the objects on the web page for predetermined or random amounts of time. For the special event company logo, the system may modify a standard company logo for a special event to create a special event logo, associate one or more search terms with the special event logo, and upload the special event logo to the web page. The system may then receive a user selection of the special event logo and provide search results relating to the special event.

I call attention to this particular patent as an interesting example of a patent filed to protect an “invention” that is embodied as a software/information product.

First, I predict there will be many commentaries on the folly of the USPTO in allowing the patent to issue (similar to the older “1-click” patent issued to back in 1999, U.S. Patent No. 5,960,411). I will leave that sort of commentary to others, since I as a rule do not comment on the patent strategy elected by others unless that is of immediate concern to my patent strategy.  However, I do want to use it as an example of the kind of intellectual property strategy decision that can be extremely confusing.

What, exactly, does the patent allow Google to do now?  The answer, directly from the USPTO website, is that the patent owner is enabled legally “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”  That is, so long as the USPTO recognizes the issued patent as still valid.

Without going into a lot of detail on the patent approval process, this key element of the patent system is at the heart of every decision to file a patent application.  You must ask yourself “what” is it about the invention that you would be able to control?  How important is it that this be something you can control? In order to evaluate this, the invention elements that are described in the Claims section of the patent document must be consulted—the claims describe the essential elements that must be present in any “product” that would infringe the patent.

This patent includes only four claims (less than 250 words) describing the “essence” of the Google doodle. By virtue of the patent, Google wishes to “preclude” others from constructing their version of the doodle, and the associated fun or “enticement” value that the doodle provides to the webpage.  The pundits will have a great deal to say about whether this is “patentable” subject matter.  In my case, I think the overarching concern would be is it “patent worthy” subject matter?

For most companies, I predict the answer would be “no” in the sense that they would only be “copycats” of Google if they attempted the same dedicated program of a modified banner logo as part of their own website development.  In that, the doodle patent is likely an attempt by Google to warn off such “counterfeiting” more akin to the use of a trademark.  Trademark law, however, cannot be used effectively because the logo is “changing” and trademark protection assumes that the marks protected be very specific words or images.  Note that this highights perhaps the limitations of current intellectual property law in general–companies are looking for ways to protect their assets, and modern technology has outpaced the ability of the legal system to “protect” certain elements of competitive advantage .

While no other reputable company would be well served by “copying” Google in this fashion, these companies also would not care to be unreasonably “precluded” from going about their own business by Google. I saw a passing reference (can’t recall where!)  from someone who felt this patent could be used to prevent other companies from making simple changes to their own banner logos (e.g., near the 4th of July holiday, adding a picture of a fireworks display next to the company logo/name).  However, if you read the claims carefully, there is a further element required—that the modified logo be linked to information related to the special event or holiday, so that this information can be delivered to the user when they click on the modified image. Note, this is very specific functionality, directly tied to Google’s core business—allowing users to find information on topics of interest to them.

So I think that for their purposes, the “invention” described is perhaps patent worthy to the company, so long as that worth is taken in proper context.  But, like any patent, it might lend an element of “power” to the company, and issuance of this sort of patent triggers a good deal of fear-fear of misuse of patent infringement claims against others.  Most companies would find that limited budgets for intellectual property litigation render “use” of the patent impractical. Google, with fewer limitations on budget, will likely be limited only by requirements of the legal system itself, and by common sense as it were.  Thus, many will bemoan the poor judgment of the patent examiner in “allowing” the patent, since there is always a chance that a well-heeled company with a “patent stick” can use it to torment smaller competitors.

Google, however, might see the question in a different light—without this patent, someone else might have attempted to file a very similar patent, and “come after” the assets of the company for infringement. Like many large companies with a lot to lose, they will bear the financial burden of the patent prosecution to build an IP “fence” around their product. The patent itself can also be useful for promotional purposes, even if it is not directly useful for enforcement against competitors.  Unlike Google, smaller companies have little incentive to pursue such indulgent intellectual property strategies. Truly key innovative concepts and elements must be prioritized in the decision-making process. Thus, whether or not this “doodle patent” represents an example of how the patent system is broken, it is at the very least illustrative of how the patent filing strategy must be evaluated in making the decision to file. No two organizations will face the same set of considerations, and so will pursue different strategies. Only later will the results show whether the strategic direction was successful.