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Raising examination standards

Red alert.png What this entry documents is not a solution.
This practice may be ineffective or useless in the long term.
ESP's position is that abolition of software patents is the only solution.

Raising examination standards would reduce the total number of software patents granted, but given that most patent problems involve multiple patents, and given that only one patent is enough to block development, a reduction would not solve many problems. However, stricter examination standards would definitely be helpful in the event that, if software patents were abolished, people attempted to disguise their software patents as something else.

Slight benefit

The result would be to reduce the number of software patents granted. This should reduce the problems caused by patent trolls.

When encouraging the raising of patent examination standards, it's very important that your work is not misunderstood as showing support for "high quality" software patents. Always phrase your support like: "Raising standards may reduce a small part of the problem, so it's not a negative change, but even 'high quality' software patents are harmful to society. The right thing to do is get rid of software patents entirely".

Standards example: MPEG

MPEG LA represents a pool of over 1,000 patents which it claims are essential for an implementation of the H.264 video format.[1] Many of these are duplicates (one for each country), so maybe there are 100 patents (each with around 20 claims).

If the numbers of these patents are reduced by 10%, 50%, or even 95%, it will allow free formats to adopt the features claimed in these patents. But there will still be no change to the fact that implementing the original format requires permission from MPEG LA.

A format like MPEG that is covered by a large number of interlocking patents is a worst case scenario. Some other formats are covered by only one or a few patents, and busting those patents would allow the format to be used freely.

Proposals to raise examination standards

This section aims to document notable ideas that have been proposed to improve the patent examination system. These suggestions hope to shift the entirety of office decisions and case law towards a stricter interpretation of application claims, without the need to change the law.

Focus on the solution, not the problem

Prof. Mark Lemley of Standford University suggested that almost all software patent applications rely on functional claims.[2]:919–20 A functional claim is a claim that focuses on the goal of the invention, rather than the particular tool developed to perform the function. Software patents contain functional claims that are by nature extremely broad because there are many ways to achieve the described function. For example, a patent claiming "program code for causing a server that serves as a gateway to a client to perform the steps of a, b, and c" will be infringed by any code that causes the computer to perform these steps.[2]:923–6 Rejecting functional claims could reduce software patents, especially the harmful ones.

Prof. Arti Tai of Duke Law School reinforced this proposal by suggesting the written description and definiteness tests, as applied in the field of bioinformatics patents. An application would fail the written description requirement if its disclosure provides insufficient physical structure for its claims, and it would fail the definiteness if its claim language doesn’t clearly delineate the inventive territory at issue.[3]

The EFF has also identified the problem of functional claims[4]:7 and urges the USPTO to adopt policies to foster clarity in patent claims and specifications.[4]:25–6

What effects do the USPTO's 2010 KSR guidelines have?

In September 2010, the USPTO published a 2010 KSR Guidelines Update.[5] There is disagreement over what effects these guidelines have.

One disagreement is over whether they have any effect at all. Patently-O's Dennis Crouch comments:[6]

The 18–page guidelines do not have the force of law, but will impact how examiners judge obviousness in practice.

The second disagreement is about what effects they will have. On one hand, there's Intellectual Property Expert Group (ipeg), which published an article about how these guidelines make the obviousness tests easier to pass.[7] On the other hand, there was broad disagreement with this claim when the story was discussed on Slashdot.[8]

Ipeg's article described the change thusly:

According to the 2007 Guidelines, however, in addition to TSM there came into being with KSR six other tests for obviousness. These tests gave the examiners six new ways to reject claims and so help achieve the reduction in the patent allowance rate which was such an important goal for the PTO under its then-Director, Jon Dudas.
In the 2010 Guidelines, however, only two of the new tests for obviousness appear to survive.[9]

The article concludes that these new guidelines are in line with making the tests easier to pass:

This is in line with the general trend of the PTO under Director Kappos to [...] and give applicants greater opportunities to obtain allowance of claims.

Related pages on ESP Wiki

External links


Law Antitrust law · Free software exception · Interoperability exception · Loser-Pays rule · Patent review by the public · Raising examination standards · Independent invention defense · Reducing patent duration
Litigation Invalidating harmful patents · Suing makers of unfounded accusations
Licenses Patent clauses in software licenses
Prior art Defensive publication and prior art databases
Company practice Buying harmful patents · Changing company patent policies · Defensive patent acquisition · Insurance against patent litigation · Non-aggression promise to employees · Patent non-aggression pacts · Blanket patent licences and promises