When is a new idea 'new'?

Critics of the U.S. Patent and Trademark Office are gathering forces for a campaign against what they say is the agency's tendency to issue patents for obvious ideas.

Complaints about how USPTO officials manage patents in new fields such as biotechnology are coming not only from public interest groups. The National Academy of Sciences' recent report "A Patent System for the 21st Century" recommends that the agency return to a more rigorous standard in awarding patents.

Although the report reflects many of the goals in the agency's strategic management plan, it names biotechnology and Internet software as examples of disciplines in which the practice of awarding patents for obvious ideas has become worrisome.

Members of two public interest groups, the Public Patent Foundation and the Electronic Frontier Foundation, agree with that conclusion. Their members say they plan to protest the practice by using USPTO's patent re-examination process.

"We would like to give them a chance to take a fresh look at what we think are some very bad patents," said Jason Schultz, a staff attorney for the Electronic Frontier Foundation, a nonprofit group interested in digital rights. In some cases, he said, patent holders want royalties for inventions such as updating win and loss columns for games played on the Internet.

Patent office officials say this is not the first time they have been criticized for the way they manage awards, especially software patents. Brigid Quinn, a USPTO spokeswoman, said many critics fail to understand the concept of "prior art," the standard by which patent examiners judge whether an idea is novel and not obvious.

"Prior art has to 'teach' the invention, meaning the literature or the evidence has to lay out the invention so that someone could make and use it from looking at the prior art," Quinn said. "It can't just be any piece of paper or code lying around."

But critics say the concept often is not useful for the software and telecommunications fields in which many recent patents have been awarded.

Patenting software is relatively new, and many software inventions from the 1960s to the 1980s were never patented, said Eben Moglen, a law professor at Columbia University. As a result, he said, those early inventions never show up in any database where patent examiners search for prior art.

The Electronic Frontier Foundation, which recently launched a campaign against what its members consider to be obvious software patents, has begun a project to create a prior art database of software inventions. "Reforms of that nature will help the system a lot more than trying to fault the examiners," Schultz said.

Quinn said such a database could be helpful. "There may well be some prior art," she said. "But if it's stuck in someone's drawer someplace, it may not meet the definition of prior art for our examiners."

She cautioned, however, that other groups have tried to create similar databases and failed.

If critics of USPTO want to use the patent re-examination process to challenge the agency's patent management, that avenue is open, Quinn said.

"Any art that raises a substantial new question of patentability that wasn't considered in the initial examination," she said, "we're prepared to re-examine."

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New ideas or recycled ones?

Officials from the Electronic Frontier Foundation said there are simple and obvious technologies for which the U.S. Patent and Trademark Office has awarded patents. The group's members said such patents do more harm than good for society and the economy in the 21st century.

Companies have sought patents for many types of ideas, including:

Online shopping carts.

Internationalizing domain names.

Pop-up windows.

Targeted banner ads.

Paying with a credit card online.

Source: Electronic Frontier Foundation