Non-obviousness and enablement are the two complementary aspects of the idea that a patent has social value: without the patent a person of ordinary skill cannot practice an invention, but with the patent they can. But how do we know if and when this is true?
The answer is rather disheartening. Non-obviousness is tested by how an examiner feels about claims. We noted in the previous post that this is a strange and short-sighted way to think about an invention, but what's worse is that the when real world provides us a falsification of the examiner's decision, it is treated as a crime. When a patent has been granted, and then another person discovers and practices the claimed invention, they can be sued for infringement, even if they can demonstrate that they had no knowledge of the patent and no other means of deriving their result from its inventors. Upon first glance this is a rather bizarre result, since the fact that another person has discovered the invention unaided means that the first part of the patent compact has been shown to be inapplicable: the patent was not needed to practice the invention. The invention was obvious, the examiner got it wrong, and the patent is invalid. But that's not the way the law works. So not only do we not test the belief in non-obviousness during examination, we willfully ignore subsequent evidence that the examination was incorrect. 
Enablement is worse. It plays no role in examination and usually also in litigation. The America Invents act has even abandoned the requirement that the best mode of practice known to the inventor be disclosed, since lack of such disclosure no longer has any effect on validity. This is a puzzling result for an engineer (like me) who actually makes things, because we know from long and painful experience that there are lots of good ideas but very few that actually work the way you think they will. Attorneys and judges basically assume that everything is ok when enough text has been recorded, even if the text is gibberish. This is because they never have to ship product.
There's no reason for this situation, other than the legal profession's aversion to empirical data. For a brief period in the 19th century, inventors were required to provide a working model with their application. The practice was terminated because the patent office ran out of room for all the stuff, not because it was a bad idea. A patent applicant is asking for a monopoly. We don't have to give it to them. The burden should be on them to PROVE by empirical testing that they have satisfied the two complementary requirements for receiving their right to exclude.
This isn't that hard to envision. The European Patent Office presents the following standard for judging inventiveness:
"Is there any teaching in the prior art, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?"
So all we have to do is validate the "would, not could" standard by getting some folks together, giving them the problem, and seeing what they do in fact come up with -- and then handing them the patent and seeing if it makes a difference. In the next post we'll present some more details about how to do this, why we ought to, and where to use the resulting knowledge.
1: A "prior rights" defense is now allowed in the US when the invention in question has been in use by the accused infringer prior to the filing of the accusing patent. The user retains the right to use the invention, but the patent is still not invalidated, even though it was shown to be so obvious that someone invented it before the person who filed.
Oooops, conceptual typo.
Aaaack, blew it again.
Third time's the charm:
There. Dull but relevant.
Peer review is the process of grabbing people who are familiar with a field to look at a paper or book before it gets published. It has been used in various forms for a long time in the sciences; Wikipedia provides a nifty history of the process. While 19th-century reviewers were often journal editors or staff, in the twentieth century reviewers were generally folks who had themselves published papers related to the one under consideration, the reviewers being recruited by journal editors. In the modern crowd-sourced world, journals are experimenting with open reviews, in which an article is published and then reviewed by whoever is interested, with the reviewers' comments becoming part of the publication.
A limited form of peer review, known as the Peer-to-Patent project, has already been tried by the US Patent Office. A first version ran in 2008, and a revised project ran from October 2010 to September 2011. Both were administered in cooperation with the New York Law School, and were limited to certain areas of art, including software-related patents, and later biotechnology, and speech recognition. Patents submitted to the program got earlier review as a reward. Smaller related projects have also been run in Australia and Japan. Most importantly, the reviewers were limited to submitting prior art they thought was related to the patent, and optionally annotating the art to help an examiner.
NYLS published a couple of anniversary reports (Peer to Patent home page). The program was also evaluated in some detail by students James Loiselle, Michael Lynch, and Michael Sherrerd at Worcester Polytechnic Institute ("Evaluation of the Peer to Patent Pilot Program"). While various administrative problems were encountered, even this limited program clearly contributed to the ability of examiners to access relevant prior art. At the very least, Peer-to-Patent ought to be revived and extended to all areas of art.
However, the process as it has so far been tried treats the public as servants assisting examiners but exercising no judgment. Peer review in the sciences may leave the final decision to an editor, but encourages reviewers to be full participants in the intellectual endeavor of evaluating the submitted work. As we described in the previous post, it is the focus on comparing claims to one or two prior publications, rather than actually reading and comprehending the specification, that gives rise to many of the absurd results we see from the patent system. In order to make peer review contribute fully to the patent process, we need to realize that people skilled in the relevant art are not just a theoretical legal construct but a reality, and ensure that they contribute (hopefully thoughtfully) to the process of examination. We therefore propose the following elaborated peer review process.
Every patent application should be subject to obligatory peer review to supplement the existing examination. The pool of reviewers may be administered by the USPTO, or administered by professional organizations relevant to specific arts (such as the IEEE for electrical and computer engineering) as representatives of the USPTO. To ensure an adequate pool of qualified reviewers, the USPTO should require that a person cannot file a patent application unless they have also registered to act as a reviewer. (This particular provision, at least, is likely to require legislation. I never said reform was easy.) An alternative, more stringent condition, would be that any would-be applicant must have performed at least (for example) three reviews of other people's applications in the previous year. The status of international applicants may be arranged through suitable agreements, such that they can fulfill the same duties as US citizens, while subject to the laws of their country of residence.
The reviewer should be bound to examine the specification and provide their best objective evaluation of:
• NOVELTY: whether a novel invention is described;
• ENABLEMENT: whether the invention is described in sufficient detail to allow them (or anyone else of ordinary skill) to practice the invention without undue experimentation;
• UTILITY: whether the described invention is useful to practitioners of the relevant art.
Reviewers may optionally express an opinion regarding claims submitted in the application. The examination process, as we have noted, already puts way too much emphasis on partitioning ownership; there's no need to add more.
It is an interesting question how reviewers for a specific application should be selected, since a reviewer ought to be conversant in the field of interest for the application. Since would-be applicants would be required to register as reviewers, it is possible to also require that they state the fields in which they are knowledgeable, and then have applications recommended by an examiner. The examiner may also look at past filings, or technical publications, by a reviewer to see what areas they work in. These approaches are analogous to peer reviewers selected by journal editors based on past publications. Self-selection is an alternative in the modern internet-based world, but might be usefully accompanied by a brief statement of why a reviewer is qualified to review a specific application, or perhaps a resumé.
Reviewers may cite prior art that they believe to be relevant, just as in the Peer-to-Patent program. As noted in the program evaluation, it is also important that they annotate the cited art to clarify what the examiner might want to look at.
Each review becomes a part of the file wrapper for the application. (That's the official record of the prosecution of a specific patent, and becomes publicly available after publication.) There is no requirement that an examiner take the reviews into account, except that s/he should look at any additional cited art. However, in the event of litigation related to a granted patent from the application, the unedited reviews must be entered as evidence and made available to the jury. Reviewers may be called but shall not be obligated to testify, except to provide an affadavit ensuring that the cited reviews were in fact produced by them.
Note the fact that an applicant MUST be a reviewer addresses the issue of ensuring that patents are indeed reviewed, a concern in the earlier projects. The requirement of review as a precondition for filing also addresses any reticence an employer might have in allowing an employee to review; if they want to file, they have to allow their employees to review.
Disclosure of a patented invention is the price of monopoly. The strange idea that an application should be secret should never have arisen and should be abandoned in any case; it should not be an obstacle to review. Review by people who know what they are reading will help ensure that the invention is actually comprehensively and comprehensibly disclosed. It will help reduce the tendency of applicants to intentionally file before they know how to enable an invention, thus avoiding effective disclosure while securing monopoly rights.
The question of anonymity of reviewers, and of applicants, is a continual challenge and a subject of experimentation in the sciences; there is no reason we should expect the best answer to be immediately apparent for a patent review system. However, in the case of patents, I suggest that there are strong arguments for disclosure and attendant responsibilities. In order to qualify to hold monopolies, a would-be applicant must review. In order to ensure that he or she does so responsibly, they should NOT be anonymous. Disclosure also makes it possible to review qualifications and expose conflicts of interest that might taint their review.
I have proposed that reviewers are not exposed to testimony in litigation, except to confirm that the review in question was in fact produced by them and has not been tampered with, but a good case could be made that reviewers should provide testimony in litigation (presumably being compensated in doing so just as any hired experts are). I can assure the readers, from personal experience, that testifying in civil litigation sucks, at least for people with ethical standards. If this makes people reluctant to review patents, it will then reduce the number of people who can file, which -- if patents are unhelpful to the overall economy, as we previously showed -- could be a good thing.
BENEFITS AND CHALLENGES:
The great benefit of requiring a record of critical reviews is that, when litigation occurs, a possibly objective examination of the virtues of the patent or patents in use will exist -- something that doesn't happen otherwise. Incomprehensible specifications, specs that don't describe anything useful, or merely contain all the things that any skilled person would try, will be described as such by someone who (we hope) doesn't have a direct interest in the litigation. Ideas that are actually new and important will also get the benefit of such characterization. Peer review, properly conducted, will help create a background understanding of whether something new and useful was usefully disclosed, against which the arguments about what is owned and what is not can take place.
The program as proposed will create a professional obligation for people who wish to be able to file patent applications. There's nothing bad about tying privileges to obligations. If it is administered by professional societies, those societies will benefit, and thus become supporters of the program. If it administered by the USPTO, it will need to be funded, always a challenge.
Naturally, as with any system, people will try to cheat and manipulate the results. Peer review in the sciences has encountered many challenges and has experienced some spectacular failures. We can't expect this to be any easier.
While some of what is outlined above can be accomplished by the USPTO (or equivalent organizations) on their own authority, requirements limiting the ability to file will certainly require legislation, obviously a major challenge in the modern world. International filers will also need to be treated fairly, requiring revisions to existing international agreements, again time-consuming and laborious.
And that's the easy proposal. But if you don't start, you can't finish. More to come.
The other day, the New York Times published instructions for aspiring inventors on how to take their inventions through the patent granting process and on to the retailers' shelves link here
. The examples are a couple of aspiring inventors and describes the pitfalls, the costs, and a rough estimate of the likelihood of success.
In the first example, the invention is a sun shade for a baby's stroller. The problem in this case was the number of thieves waiting to take the aspiring inventor's money without providing any service or charging an arm and a leg for minimal services. First lesson: know your help's history. Second lesson: you have to do a lot of the work yourself; it is hard to write a contract that specifies what is needed and to find a contractor who can provide it.
The second case is an inventor of a screw device to replace the broken one on the ear pieces of eyeglasses. The experience with companies who are selling consulting and other assistance is much the same as in the first case. The upfront costs of patenting and marketing are stiff and the need for added funding, often high.
The article seems to suggest that there is a growing number of successful inventor-developers and leaves the thought that with a bit of effort, you too can succeed. This does not account for the number who failed. Nor does the data cite the proportion that were brought to market by big companies who seem to dominate the marketplace when you shop and who turn out to end up with the patents that make market dominance possible.
The blog, Public Knowledge, argues that the International Trade Commission should consider the public interest in reaching regulatory decisions on patents. The Obama has so decreed when it overruled an ITC case and permitted imports of Apple phones that it had found to violate duly recognized patents of other companies, in this case foreign firms link here
When I look at the mess in the whole patent system, I see a world of oligopolies and monopolies built on patents, supposedly designed to encourage innovation, but instead creating a self-perpetuating means to paralyze innovation.
I would do away with the whole system of patents, but that isn't going to happen. Too many huge companies have a vested interest in the existing highly profitable system. Instead, those of my persuasion must examine whether the legal change making importation illegal under a finding of public interest is a good thing, rather than allowing the competing imports and slowing Apple's ability to go on coining money. To put it differently, isn't allowing the imports in the public interest? In this case, the big American company was the winner. Who lost?
I'm late with this but Public Knowledge announced two weeks ago that it was starting a Patent Reform Project link here
. Given that we are surrounded with an incredibly expensive and inefficient and now corrupt (with the presence of the patent trolls' extortion) system, it is important for the informed and interested to weigh in.
One cannot be terribly optimistic about the outcome, but to leave the system to the big money and personally interested is to give up. We can do better. Given our democratic system, compromise is essential so one almost never gets all his wishes. But the critics have been making a dent in the unthinking belief that intellectual property was property like physical goods or land and that it always encouraged innovation and thus human progress. It is a right with characteristics like real property, created by law and law can be changed. Now is the time to change it.
Weigh in, please.
Bad patents are an old story, but they keep getting worse. This one is granted for "displaying pictures of athletes on the fields on which their sport is played" link here
Timothy, in whose name the story is posted at Slashdot.org, sends you to the patent itself, a master piece of overblown legalism and hucksterism link here. Google, to which the patent is granted, should be deeply ashamed. Timothy comments, "Just about anyone that's familiar with sports has seen position and depth charts, in which athletes are portrayed on the athletic fields their sport is played on."
In a long post, Mike Masnick calls attention to an e-book by Alex Tabarrok which focuses on the decline in total factor productivity as a measure of the drop in innovation link here
. This has occurred despite the huge increase in the number of patents. He concludes that the patent system is broken and suggests some fixes like a mix of patents, some short-term and easy to get and others, long-term and less likely to be granted.
Read and ponder.
And then think about the political and economic power of those who oppose such reforms.
Mike Masnick lets go with a strong blast on patents because they may yet again cripple innovation in 3D printing link here
. As he writes, "One of the reasons 3D printing is suddenly on the cusp of going mainstream is the expiration of some key patents that have held the technology back for decades."
The really hopeful feature of his post is that the Electronic Frontier Foundation (EFF) is opposing some recent patent applications, based on the discovery of prior art. The story gets better as the EFF has successfully appealed to crowd-sourcing to find evidence of such prior art. Unfortunately, the Patent Office still can't seem to find much of this.
Mike's enthusiasm about the changes that 3D printing may make for manufacturing, new product design, and a growth in the competitive strength of small enterprise have yet to be proved. Still, it should be clear to most people that we suffer from a world of business monopoly based on laws which convey privilege to large enterprise with wealth to buy political support for favorable legislation.