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Difference between revisions of "United States Patent and Trademark Office"

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The '''USPTO''' (United States Patent and Trademark Office) is known for granting software patents.
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{{infobox usa}}
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The '''United States Patent and Trademark Office''' ('''USPTO''') is known for granting large numbers of [[software patents]].
  
They are considered as having some of the lowest standards of evaluation.
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According to [[An Empirical Look at Software Patents|a 2004 paper by Bessen and Hunt]], the USPTO approves about 70 software patents per day. ([http://papers.ssrn.com/sol3/papers.cfm?abstract_id=461701 see page 47])  Other sources have said that in 2006 the USTPO granted just over 40,000 software patents,<ref>http://www.cbc.ca/technology/story/2007/01/12/patent-ibm.html</ref> which is 110 per day, seven days per week.
  
According to [[An Empirical Look at Software Patents|a 2004 paper by Bessen and Hunt]], the USPTO approves about 70 software patents per day.([http://papers.ssrn.com/sol3/papers.cfm?abstract_id=461701 see page 47])
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The USPTO is an agency of the [[USA|US]] government's Department of Commerce.
  
==Criteria for patentability==
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==Specifically excluded==
To be patentable, an idea must be:
 
* of patentable subject matter, ie a kind of subject-matter that is eligible for patent protection,
 
* novel (i.e. at least some aspect of it must be new)
 
* non-obvious; and
 
* useful.
 
  
Further explanation of these clauses is below:
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In the [[USA]], according to the [[USPTO]], "''...it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter''."<ref>http://www.uspto.gov/web/offices/pac/doc/general/what.htm</ref>
  
1) The invention must be something that the patent office can legally issue a patent for, this is defined in the regulations, but generally it is taken to be a physical invention. There is considerable argument at the present time about "[[business method]]" patents, which according to the [[in re Bilski]] ruling are disallowed, however it is being argued by [http://www.ipwatchdog.com/2009/05/19/bilski-not-so-bad-for-software-patents-after-all/id=3582/ Gene Quinn] that the only requirement is that a computer be included in the application for the patent to be issued. Patent lawyers make money from filing patent applications, and herding them through the process, and thus have an interest in the range of patentability being as wide as possible. This may not be in the best interests of society as a whole.
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==Examination guidelines==
  
2) The invention must be novel. In industry this is known as the "duh" clause. One example is the [http://en.wikipedia.org/wiki/KSR_v._Teleflex KSR vs Teleflex] case, where the patent in question covered the shape of a lever. In effect the invention must not have been previously invented. This is not simple however, as the rules disallow certain types of evidence, so it is possible to patent something that has been in general use for years prior to the patent being applied for.
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* 1996: [http://www.uspto.gov/web/offices/pac/dapp/pdf/ciig.pdf Examination Guidelines for Computer-Related Inventions] (The date, 1996, is given by Martin Goetz<ref>http://www.patentlyo.com/patent/2010/09/in-defense-of-software-patents-part-2.html</ref> but the document itself does have a date - I don't know how we'd verify if this is still the 1996 version or if this link now points to an updated version)
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* 2007: new guidelines were issued, raising the standard for obviousness, following the ruling in [[KSR v. Teleflex (2007, USA)]]
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* 2009, 2010: Interim guidelines were issued following the [[CAFC]]'s decision on [[in re Bilski]], and further interim guidelines were published following the [[US Supreme Court|Supreme Court]]'s decision in [[Bilski v. Kappos]]. See: [[USPTO 2010 consultation - deadline 27 sept]]. (As of October 2010, final revised guidelines are not yet available) (There's an interesting article about the change in "obviousness" [http://www.ipeg.eu/blog/?p=1742 here])
  
3) Non-obvious means that the idea shouldn't be obvious. Simple modifications of existing devices are not allowed, nor are combinations of existing components. An example would be the motorcycle. If an automobile already exists, taking the engine from an automobile and mounting it on a bicycle frame to make a motorcycle will not be patentable. Lawyers however can write patent applications to obscure the obviousness factor, and sometimes do.
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==Key people==
  
4) Useful. This is known as "You can't fool Mother Nature" clause (from the [http://www.tvacres.com/admascots_mothernature.htm Chifton Margarine] commercials of the 1970's). In simple terms, the invention has to work. If it doesn't work, it's not eligible for patent protection. While this sounds like a no brainer, a lot of patents are issued by the [[USPTO]] for inventions that cannot and do not work, as they break [http://en.wikipedia.org/wiki/Natural_law natural laws].  
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The Director of the USPTO, since August 2009, is David Kappos.<ref>http://www.patentlyo.com/patent/2009/08/kappos-sworn-in-as-director.html</ref>  Kappos previously worked for [[IBM]] as ''vice president for [[intellectual-property]] law''.<ref>http://money.cnn.com/magazines/fortune/fortune_archive/2006/08/21/8383639/index.htm</ref>
  
In addition to the 4 criteria above there are two other rules which are extremely important:
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==Quality declining, allowance rate increasing==
  
* Prior art must be listed. If prior art is not listed, and it is provable that the filer knew about the prior are the patent may be invalidated. Where this is most important is with the obviousness clause, as it may be decided that based on the prior art that the invention was obvious, and therefore not eligible for patent protection.
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Despite the USPTO's public comments about improving examination, it appears the real change is that quality has actually dropped.  A 2013 study found that the "allowance rate" increased by 20% from 2009 to 2012.<ref>http://arstechnica.com/tech-policy/2013/04/study-suggests-patent-office-lowered-standards-to-cope-with-backlog/</ref>  By 2014, 92% of patent applications were being approved.<ref>{{cite web|url=http://www.vox.com/2014/5/5/5682926/getting-patents-is-preposterously-easy-under-obama|title=Getting patents is preposterously easy under Obama|quote=That 92 percent corrected allowance rate is up from 68 percent in 2009.}}</ref> (54% are approved on the first request, the others are approved after being refiled with changes.)
  
* The patent application must contain a description that would allow a person with "knowledge of the art" to build the invention. Deliberate obscuration of the description to block someone from building the device is not allowed (note that this is a also common complaint about software patents, that the description is not clear enough to allow someone to build a device).
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This confirms that legislation such as the [[America Invents Act]] are so watered-down and corrupted that they have no positive effect. Reform doesn't work; we need to exclude software from the patent system.
  
==See also==
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==Examiners stuck for time==
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Examiners in the USPTO have on average 20 hours to examine each application.<ref>http://money.cnn.com/magazines/fortune/fortune_archive/2006/08/21/8383639/index.htm</ref>
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==Procedural notes==
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More info sought: there is an "Office of First Filing" and an "Office of Second Filing".<ref>http://www.uspto.gov/patents/init_events/pph/index.jsp</ref>
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==Related pages on {{SITENAME}}==
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* [[USA patents courts and appeals]]
 
* [[Who decides if software patents exist]]
 
* [[Who decides if software patents exist]]
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* [[Criteria for patentability]]
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* [[1994 USPTO software patent hearings]]
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* [[Legislation in the USA]] - the USPTO interprets the legislation
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* [[USPTO 2010 consultation - deadline 27 sept]]
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* [[Suggestions for the USPTO in 2013]]
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* [[Continuation patent]]
  
 
==External links==
 
==External links==
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* http://uspto.gov - the USPTO's website
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* [http://portal.uspto.gov/external/portal/pair The USPTO's PAIR system for checking the status of applications]
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* [http://www.uspto.gov/web/offices/pac/mpep/index.htm Manual of Patent Examining Procedure (MPEP)]
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===USPTO documents===
 
===USPTO documents===
 
* http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20072130-10-04-2007-1 "There is no authority that we know of which permits software per se to be considered statutory <nowiki>[</nowiki>patentable subject matter<nowiki>]</nowiki>."
 
* http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20072130-10-04-2007-1 "There is no authority that we know of which permits software per se to be considered statutory <nowiki>[</nowiki>patentable subject matter<nowiki>]</nowiki>."
 
* [http://www.uspto.gov/web/patents/accelerated/ The USPTO's accelerated patent procedure]
 
* [http://www.uspto.gov/web/patents/accelerated/ The USPTO's accelerated patent procedure]
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* http://www.patentlyo.com/patent/2009/08/interim-guidelines-on-statutory-subject-matter.html - A third-party article linking to the USPTO's guidelines on interpreting the Bilski [[Particular machine or transformation]] test
  
 
===Third party documents===
 
===Third party documents===
 
* http://www.bitlaw.com/source/soft_pats/final.html
 
* http://www.bitlaw.com/source/soft_pats/final.html
* [http://www.wired.com/thisdayintech/2009/05/dayintech_0526 A 1981 patent claims to be the first USA software patent]
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* http://www.bitlaw.com/software-patent/patentable.html
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* [http://www.wired.com/thisdayintech/2009/05/dayintech_0526 A 1981 patent claims to be the first USA software patent], May 2009, '''Wired'''
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* [http://commons.wikimedia.org/wiki/File:US_granted_software_patents.png Graph of number of software patents granted by the USPTO per year]
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* [http://www.ipeg.eu/blog/?p=1742 KSR, patent obviousness and USPTO practice], 29 Sep 2010, '''ipeg'''
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* [http://www.patentlyo.com/patent/2013/08/uspto-software-composition-inventions-are-unpatentable-under-101-unless-they-clearly-disavow-that-the-storage-mechanism-is.html USPTO: Software Composition Inventions are Unpatentable under §101 unless they Clearly Disavow that the Storage Mechanism is a Transitory Wave or Signal], 27 Aug 2013, '''[[Patently-O]]'''
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==References==
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{{reflist}}
  
  
[[Category:Patent office practice by region|USA]]
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{{footer}}
[[Category:USA]]
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[[Category: Patent office case law]]
[[Category:Country and regional info|USA, patent office practice in the]]
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[[Category: Patent offices]]
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[[Category: USA]]

Revision as of 06:08, 13 May 2014

The United States Patent and Trademark Office (USPTO) is known for granting large numbers of software patents.

According to a 2004 paper by Bessen and Hunt, the USPTO approves about 70 software patents per day. (see page 47) Other sources have said that in 2006 the USTPO granted just over 40,000 software patents,[1] which is 110 per day, seven days per week.

The USPTO is an agency of the US government's Department of Commerce.

Specifically excluded

In the USA, according to the USPTO, "...it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter."[2]

Examination guidelines

Key people

The Director of the USPTO, since August 2009, is David Kappos.[4] Kappos previously worked for IBM as vice president for intellectual-property law.[5]

Quality declining, allowance rate increasing

Despite the USPTO's public comments about improving examination, it appears the real change is that quality has actually dropped. A 2013 study found that the "allowance rate" increased by 20% from 2009 to 2012.[6] By 2014, 92% of patent applications were being approved.[7] (54% are approved on the first request, the others are approved after being refiled with changes.)

This confirms that legislation such as the America Invents Act are so watered-down and corrupted that they have no positive effect. Reform doesn't work; we need to exclude software from the patent system.

Examiners stuck for time

Examiners in the USPTO have on average 20 hours to examine each application.[8]

Procedural notes

More info sought: there is an "Office of First Filing" and an "Office of Second Filing".[9]

Related pages on ESP Wiki

External links

USPTO documents

Third party documents

References