Wednesday, November 28, 2012

Software Patent Status

The competition for market share in high value sectors like smartphones and tablets is nothing new according to David Kappos Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent Office. He was speaking an event at the Center for American Progress in Washington D.C. held on November 20th.

 “Devices can have many patented components and features and contain a blend of software, hardware, and design patents. Yet software patents have tended to be the focus of controversy and some critics go so far as to say that software shouldn’t be patentable at all. It is very important that patent protection be properly tailored in scope so that programmers can write code and engineers can design devices without fear of unfounded accusations of infringement.”

In his remarks Kappos said, “This administration understands that low-quality patents aren’t good for anyone. The work to establish patent quality was helped in 2010 when the Patent Office rolled out a complete broad objective patent quality measurement system to include seven metrics reported to the public. These metrics show that the Patent Office’s decisions on both allowances and rejection correctly comply with all laws and regulations over 96 percent of the time.

In 2011, the Patent Office published their first comprehensive guidelines for review of claim clarity which is an issue that comes up regularly with software patents. The 112 Guidelines have measurably improved the clarity of patents in the software area. In fact the Patent Office’s nine month review of the guidelines showed more than a 20 percent increase in rejections even though an increased number of issues have been resolved through 170,000 hours of interviews conducted with patent applicants in the last year.

Kappos also mentioned how the Patent Office has reached out to experts in the software industry to provide technical training to patent examiners, so that they are up to date on the latest developments. More than 17,000 hours of technical training was provided in FY 2012 alone, including 32 software-related courses presented by academic and industry experts. Now outreach will be even easier since the Patent Office has established a Silicon Valley satellite office.

The field has not only made progress through court decisions, but the Patent Office reexamination process is another method for challenging software patents. The reexamination process has proved to be an effective tool in weeding out invalid patents with much less expense and disruption than litigation.

An important step was taken when most of the final rules for America Invents Act (AIA) were implemented. Kappos said, “The AIA is the most significant reform to the U.S. patent system since 1836. Many of the provisions are well suited to software patents.

The Patent Trial and Appeal Board helps manufacturers, service providers, and patentees confirm the validity of issued patents while rejecting overly broad ones. The procedure called post-grant opposition allows third parties to challenge an issued patent on any ground including basic eligibility and clarity. The result is that the cost of pursing a post-grant proceeding with the Patent Board is far cheaper than challenging a patent in court.

Fresh legislation suggestions are currently circulating. Some people believe the Patent Office should have more tools to review existing software patents and many believe that all software patents should be included.

A legislative proposal circulating would try to curb speculative patent suits that extract settlements based on borderline frivolous infringement claims. The SHIELD Act legislation introduced in Congress earlier this year, seeks to deter law suits by requiring the loser of an infringement case to pay court costs and attorney fees for the winner.

Beyond legislation, Kappos explained that there are gaps within the regulatory system that still need to be addressed. One problem for software patents is simply deciphering ownership. Sometimes, it can be a real challenge for those facing a possible infringement suit to determine the owner of the patent that they may be infringing.

This is especially true in the software area where innovation is extremely diverse and broad based among large and small entrants everywhere and where patent applications and patents are frequently bought and sold. The completeness of the patent record including ownership is essential to a functioning innovation market.