Um, doesn’t this patent have prior art?

You know the world has gotten a little nutty when a Microsoft guy complains about a patent, but when Matt May last night at the Podcast Hotel told me a company is trying to patent AJAX, among other things, I was amazed when Matt said this patent looks like it tried to patent AJAX. I haven’t looked at the patent (the patent lawyers ask employees to refrain from looking at patents) Then he passed me a Slashdot article on them today.

We call some of this kind of behavior “patent trolling.” (I haven’t looked at the patent in question, so don’t know if it’s legitimate or not, I’m not a lawyer and all that). What’s a patent troll? A company gets a patent that it itself isn’t willing to commercialize in a product, but goes around to every company threatening that it’ll take everyone to court. Demands a licensing fee. Usually something like $20,000 to $150,000. And repeats, often stopping short of the big guys with the deep pockets (although in this case it looks like they are pitching it to the big guys).

Why does this work? Well, I interviewed one of our lawyers recently and he said that a patent case, if it goes to trial, will cost millions of dollars to defend. So, of course everyone settles out of court if the fees are far less than a potential loss in court.

The commenters over on Slashdot are unusually lucid on this topic. Makes for fun reading.

As usual, my disclaimer particularly applies here. This is my personal opinion and may or may not agree with anyone else’s opinions, in particular my employer’s. I haven’t checked with anyone else at Microsoft before writing this post.

What do you think? What should the responsibility of big companies be here?

Here’s an article in InformationWeek about this patent and the breadth of what it covers.

62 thoughts on “Um, doesn’t this patent have prior art?

  1. This is a good article and comments on software patent issues. I’m convinced that it’s time to eliminate the software patent process, and simply use the existing copyright and trademark protection for software. See my article on blog.startupprofessionals.com titled “Software Patents: Time for a Change” for specifics.

    Marty Zwilling, Founder & CEO, Startup Professionals, Inc.

  2. This is a good article and comments on software patent issues. I’m convinced that it’s time to eliminate the software patent process, and simply use the existing copyright and trademark protection for software. See my article on blog.startupprofessionals.com titled “Software Patents: Time for a Change” for specifics.

    Marty Zwilling, Founder & CEO, Startup Professionals, Inc.

  3. Sorry, wrong again! US Patent D508,011 is a design patent, not a utility patent. It does not aspire to prevent third parties from manufacturing Kayaks and it is not a claim for having invented the Kayak. Design patents are limited protection for specific designs. If they go to court the judge will compare the allegedly infringing article with the design as filed, and the latitude in how close the article has to be is determined by the designs of other articles of the type in question at the time of filing.

    To put it another way, if ships and boats are known and someone comes up with a paddle-steamer for the first time ever, he might be able to get a patent for “A water craft having paddles arranged around a drum mounted on an axle, that is coupled via a driving means to a steam engine such that power from steam enngine is transmitted via driving means to the drum and rotates the drum criving paddles into the water, thereby propelling craft in accordance with Newton’s third law.” In a design patent infringment, the judge will compare the infringing article with the registered design and consider whether the paddles are in the same place, the number of funnels, the shape fo the boat, etc.

    The kayak frame in question may be different from others in proportions, number and position of struts etc. The protection prevents copying and is little more than a short term copyright for manufacturable articles.

    The USPTO suffers from an overload of work, and the combination of low education requirements and low salaries paid results in the level of some examiners to be less than desirable. US Examiners tend not to have the language skills to evaluate patents filed in foreign languages and sometimes have the blinkered perspective not to bother searching stuff filed in other countries. Furthermore, anyone can make a mistake.

    Einstein was a patent examiner in the Swiss Patent Office. It is fair to say that most examiners are not of his intellectual capabilities. Nevertheless, I have clashed swords with US Examiners on numerous occasions. Many times examination is professionally conducted and to the point.

    For more patent news and views, you are cordially invited to my blog at http://ipfactor.wordpress.com

  4. Sorry, wrong again! US Patent D508,011 is a design patent, not a utility patent. It does not aspire to prevent third parties from manufacturing Kayaks and it is not a claim for having invented the Kayak. Design patents are limited protection for specific designs. If they go to court the judge will compare the allegedly infringing article with the design as filed, and the latitude in how close the article has to be is determined by the designs of other articles of the type in question at the time of filing.

    To put it another way, if ships and boats are known and someone comes up with a paddle-steamer for the first time ever, he might be able to get a patent for “A water craft having paddles arranged around a drum mounted on an axle, that is coupled via a driving means to a steam engine such that power from steam enngine is transmitted via driving means to the drum and rotates the drum criving paddles into the water, thereby propelling craft in accordance with Newton’s third law.” In a design patent infringment, the judge will compare the infringing article with the registered design and consider whether the paddles are in the same place, the number of funnels, the shape fo the boat, etc.

    The kayak frame in question may be different from others in proportions, number and position of struts etc. The protection prevents copying and is little more than a short term copyright for manufacturable articles.

    The USPTO suffers from an overload of work, and the combination of low education requirements and low salaries paid results in the level of some examiners to be less than desirable. US Examiners tend not to have the language skills to evaluate patents filed in foreign languages and sometimes have the blinkered perspective not to bother searching stuff filed in other countries. Furthermore, anyone can make a mistake.

    Einstein was a patent examiner in the Swiss Patent Office. It is fair to say that most examiners are not of his intellectual capabilities. Nevertheless, I have clashed swords with US Examiners on numerous occasions. Many times examination is professionally conducted and to the point.

    For more patent news and views, you are cordially invited to my blog at http://ipfactor.wordpress.com

  5. I am beginning to understand US patent law: Every application – no matter how ridiculous – will be granted.

    But the police is not enforcing patents, the patent owner will have to sue. And in the case of patenting 5000 years old kayak technology would certainly lose.

    However: Things would be less scary if the US patent office enforced some quality assurance before granting a patent.

  6. I am beginning to understand US patent law: Every application – no matter how ridiculous – will be granted.

    But the police is not enforcing patents, the patent owner will have to sue. And in the case of patenting 5000 years old kayak technology would certainly lose.

    However: Things would be less scary if the US patent office enforced some quality assurance before granting a patent.

  7. Hello, a client of mine, Itzy Sabo (comment 21)referred me to this chain. From the various remarks, I think there are a number of misconceptions about patents in general and software patents in particular.
    (BTY – I am a practicing patent attorney – for my bio, go to http://www.ipfactor.co.il/english/team.html#michael).
    To try and set the picture a little straighter, I am commenting on the wider issues raised in the order they appear.
    - I am not going to relate to the Ajax application specifically, not least because I have not read it either.

    From Scobleizer’s posting it appears that you are all getting hot under the collar about a pending patent application. In other words, somebody has filed an application for an invention, and, to date, the US Patent Office has not issued any of the claims. It is still under examination.
    Now in the US (and many other jurisdictions), patent applications usually publish automatically 18 months after filing. This Ajax application thus presumably relates to an application filed a year-and-a-half ago. Any discussion as to the novelty or invnetiveness of the monopoly sought must be considered as of August 2004.
    Without reading the claims of the patent application I cannot formulate an opinion of whether they are narrow or broad, well drafted or poorly written. Presumably even the most talented computer geek will have trouble drawing conclusions without reading the specification and claims.
    Prior art is anything published at the time of filing. In the US only, at the time of inventing, which may be up to 12 months prior to filing.
    If you think that something is relevant to a particular invention that is in the process of examination, why not bring it to the attention of the examiner? Third parties can, and that is one of the reasons for publishing applications prior to their issuing.
    A patent confers monopolistic property rights for a limited period of up to 20 years from the filing date(with pharmaceuticals there are various grounds for extension). The property is transferrable. It can be licensed, bought or sold, for example.
    There is no reason why a patentee need commercialize his idea himself. It is legitimate to file a patent application and to approach a third party. Indeed, many big companies, such as GE, will not sign an NDA and require (would be?) entrepeneurs to file an application first and then to talk to them.
    Filing a patent application, waiting for it to issue and then suing alleged infringers is a lousy business plan. Most patent infringment cases result in the plaintiff’s patent getting voided, as the defendant invests the resources neccessary to find relevant prior art missed by the examiner.
    Patent lawyers of a firm might ask employees to refrain from looking at patents. Why? (a) because if the firm is prosecuting a patent application in the US (and Australia and Israel), there is a duty to report all relevant known prior art to the examiner, (b) willful infringement carries x 3 damages.
    In my opinion, neither consideration is a valid reason not to examine patents. Firstly, if a firm gets a patent it doesn’t deserve, it won’t stand up in court. Secondly, previous court rulings require patent searching as part of due diligence, and if not performed, will probably award tripple damages anyway. Thirdly, patents are accessible, comprehensive resources that can teach technologies and prevent you from reinventing someone elses wheel. Even if you have to license a technology, it is typically a hell of a lot cheaper than developing it yourself, and patents can indicate new approaches to solving problems.
    SOME patent examiners are not too bright and may miss the point of a patent claim. In the US, the requirements to become an examiner are not particularly tough, and the salaries are less than those that patent agents and patent attorneys earn. – In the European Patent Office, the examiners have scientific degrees and three languages, and since civil servants working for the EU are employed interantionally, they don’t pay taxes and have great perks. The calibre of the examiners are typically higher.
    There is an objective problem with software patenting, in that technology changes much faster than in other fields.
    Re the great is software patentable debate, I sometimes think that all software is basically input > Processing > output and not particularly inventive. The again, why should a method or device not be patnetable, just because the specific implementation is protected by copyright and the parts are softer than in traditional engineering.
    For more patent news and views, you are cordially invited to my blog at http://ipfactor.wordpress.com

    Regards,

    Michael

  8. Hello, a client of mine, Itzy Sabo (comment 21)referred me to this chain. From the various remarks, I think there are a number of misconceptions about patents in general and software patents in particular.
    (BTY – I am a practicing patent attorney – for my bio, go to http://www.ipfactor.co.il/english/team.html#michael).
    To try and set the picture a little straighter, I am commenting on the wider issues raised in the order they appear.
    - I am not going to relate to the Ajax application specifically, not least because I have not read it either.

    From Scobleizer’s posting it appears that you are all getting hot under the collar about a pending patent application. In other words, somebody has filed an application for an invention, and, to date, the US Patent Office has not issued any of the claims. It is still under examination.
    Now in the US (and many other jurisdictions), patent applications usually publish automatically 18 months after filing. This Ajax application thus presumably relates to an application filed a year-and-a-half ago. Any discussion as to the novelty or invnetiveness of the monopoly sought must be considered as of August 2004.
    Without reading the claims of the patent application I cannot formulate an opinion of whether they are narrow or broad, well drafted or poorly written. Presumably even the most talented computer geek will have trouble drawing conclusions without reading the specification and claims.
    Prior art is anything published at the time of filing. In the US only, at the time of inventing, which may be up to 12 months prior to filing.
    If you think that something is relevant to a particular invention that is in the process of examination, why not bring it to the attention of the examiner? Third parties can, and that is one of the reasons for publishing applications prior to their issuing.
    A patent confers monopolistic property rights for a limited period of up to 20 years from the filing date(with pharmaceuticals there are various grounds for extension). The property is transferrable. It can be licensed, bought or sold, for example.
    There is no reason why a patentee need commercialize his idea himself. It is legitimate to file a patent application and to approach a third party. Indeed, many big companies, such as GE, will not sign an NDA and require (would be?) entrepeneurs to file an application first and then to talk to them.
    Filing a patent application, waiting for it to issue and then suing alleged infringers is a lousy business plan. Most patent infringment cases result in the plaintiff’s patent getting voided, as the defendant invests the resources neccessary to find relevant prior art missed by the examiner.
    Patent lawyers of a firm might ask employees to refrain from looking at patents. Why? (a) because if the firm is prosecuting a patent application in the US (and Australia and Israel), there is a duty to report all relevant known prior art to the examiner, (b) willful infringement carries x 3 damages.
    In my opinion, neither consideration is a valid reason not to examine patents. Firstly, if a firm gets a patent it doesn’t deserve, it won’t stand up in court. Secondly, previous court rulings require patent searching as part of due diligence, and if not performed, will probably award tripple damages anyway. Thirdly, patents are accessible, comprehensive resources that can teach technologies and prevent you from reinventing someone elses wheel. Even if you have to license a technology, it is typically a hell of a lot cheaper than developing it yourself, and patents can indicate new approaches to solving problems.
    SOME patent examiners are not too bright and may miss the point of a patent claim. In the US, the requirements to become an examiner are not particularly tough, and the salaries are less than those that patent agents and patent attorneys earn. – In the European Patent Office, the examiners have scientific degrees and three languages, and since civil servants working for the EU are employed interantionally, they don’t pay taxes and have great perks. The calibre of the examiners are typically higher.
    There is an objective problem with software patenting, in that technology changes much faster than in other fields.
    Re the great is software patentable debate, I sometimes think that all software is basically input > Processing > output and not particularly inventive. The again, why should a method or device not be patnetable, just because the specific implementation is protected by copyright and the parts are softer than in traditional engineering.
    For more patent news and views, you are cordially invited to my blog at http://ipfactor.wordpress.com

    Regards,

    Michael

  9. Hopefully, this is an example of prior art:
    On page 177 of Jason Hunter’s “Java Servlet Programming” book (first edition, published in October 1998), he shows a Java servlet that takes an image as an input from the HttpServletRequest, transforms it using a third-party library (shrinking it, in this specific case), and sends it back to the user in the HttpServletResponse.

  10. Hopefully, this is an example of prior art:
    On page 177 of Jason Hunter’s “Java Servlet Programming” book (first edition, published in October 1998), he shows a Java servlet that takes an image as an input from the HttpServletRequest, transforms it using a third-party library (shrinking it, in this specific case), and sends it back to the user in the HttpServletResponse.

  11. Itzy – that’s true as long as you maintain (sw) patent in force. Look at the situation in Europe, if we have any deficit in (sw) innovation/industry it is certainly not due to the absence of the venal patent process in this area … I cannot see any weakness comparing to our other patentable industries, it is just more wholesome doing sw here. :cool:

  12. Itzy – that’s true as long as you maintain (sw) patent in force. Look at the situation in Europe, if we have any deficit in (sw) innovation/industry it is certainly not due to the absence of the venal patent process in this area … I cannot see any weakness comparing to our other patentable industries, it is just more wholesome doing sw here. :cool:

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