4 ms·

Except for variable length patent terms (duration), everything you suggest is true already. The applicant has to prove to the examiner that their invention ove

Except for variable length patent terms (duration), everything you suggest is true already. The applicant has to prove to the examiner that their invention overcomes the prior art discovered by the examiner (or anyone). Also, inventors (and their attorneys) have to disclose to the USPTO all relevant public references (potential prior art) they know of. Further, during patent prosecution, US examiners are allowed (required) to broadly interpret claims and prior art. Giving them more latitude than courts to declare something is prior art for a given invention.

abecedarius 9y ago
As coinventor of a now-expired patent, I'm not very impressed by the bar for novelty. There has been some truly new stuff patented, like the RSA cryptosystem. It's not clear to me whether protecting things like that has been a net benefit even before the cost of also protecting ordinary engineering and worse.
- pnw_hazor 9y ago
  The novelty bar is low by design. An invention needs at most one difference from prior art to be novel. It can be a small difference. But if a patent relies on a small difference for novelty it is likely to be a narrow patent or otherwise easy to design around. Note, non-utility differences, like color or artistic design elements do not count in utility patents. Non-obviousness is harder prove because multiple references can be combined and there is more room for subjective interpretation or argument. Overcoming obviousness rejections is where patent attorneys earn their money. If the filed specification is well-done, obviousness rejections can almost always be overcome at the expense of narrowing the patent claims. Further, patents encourage innovation in at least two ways: The classic view is that they reward inventors by granting them a limited term monopoly in their invention in exchange for public disclosure. Though I think more innovation is spurred by people designing around existing patents. For example, Amazon's old one-click patents didn't stop the e-commerce industry from innovating. Neither did Priceline's patents on reverse on-line auctions. Patents protect how someone does something, not what someone does. Two inventions that do the same thing can be patented, as long as how they do it is different. RSA patents only mattered because people wanted to use RSA's crypto. They didn't stop others from making or patenting different kinds of crypto or getting their own patents on novel extensions to RSA's crypto.
  - jjoonathan 9y ago
    > But if a patent relies on a small difference for novelty it is likely to be a narrow patent or otherwise easy to design around. Sure, if you're an omniscient being aware of every patent in existence and well-funded enough to defend against the people who have "patented the internet" (or what have you).
    - abecedarius 9y ago
      Another problem with this: engineers get instructed to for god's sake don't read or discuss patents, for fear of treble damages.
      - pnw_hazor 9y ago
        yeah, that kind of sucks. Though not only does such a policy reduce the likelihood of a bad outcome re willful infringement. It can save $$$ during litigation because it will not be a real issue. Businesses deal with all kinds of inconvenient things. Patents are one of those things. Welcome to the big leagues so-to speak. Having a tight 10-50 patent portfolio around your key tech will go along way towards helping a small company play with the big boys. A quality patent portfolio can be a powerful equalizer if you are doing something innovative and it is protected by patents.
  - abecedarius 9y ago
    This is just one more anecdote, but I once read Sun had a cool new patent, the central idea of which turned out to be three lines of assembly code which had already been published in the well-known superoptimizer paper by Massalin 15 years before -- I only noticed this because I happened to have been reading it and had the paper lying around my bedroom. To Massalin it merited one paragraph in an appendix about interesting snippets discovered by the superoptimizer. Sun gave it pages of legalese broken out into multiple claims, ending with the usual boilerplate claiming any further variations not explicitly listed that would be obvious to one "skilled in the art". I did nothing about this because the fight would be a drag with nothing in it for me. Yes, the classic justification is to encourage invention, but there are publications arguing that patents aren't a net positive. It's not my field, I don't know, but I've started doubting. Added: I don't think Sun did anything especially wrong -- they worked with the patent system as it is and missed the prior art. What I think is that this example shows some of what's wrong with that system.
ScottBurson 9y ago
Ah, but the applicant does not have to prove that the invention is nonobvious. I think that objective evidence of nonobviousness should be required, not at the time of application — the needed evidence might not exist yet at that point — but as the first step in an infringement proceeding. As for what would constitute objective evidence of nonobviousness, I think the Graham factors [0] are a great starting point: * commercial success * long felt but unsolved needs * failure of others [0] https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co.
- pnw_hazor 9y ago
  Graham factors will get looked at closely in litigation because post-grant challengers always allege that the patent claims they are challenging are invalid because they are obvious. Patent owners will defend charges of obviousness by: trying to distinguish their patent claims from the prior art; arguing that combining the prior art references is unreasonable; and by arguing that the Graham factors tilt in their favor. If a claim is obvious, it is easier to prove it by finding written evidence (references) and then argue that it would be reasonable to combine those references. If a challenger has to rely on an absence of Graham factors they are in trouble. That means they could not find any published prior art references in the entire world that would be reasonable to combine to disclose all of the elements of the claims being challanged. Note, litigators will raise every other reason they can think of to invalidate the claims they are challenging. During examination, obviousness is often the sticking point. In crowded arts it can take several rounds of prosecution to overcome obviousness rejections -- as it should.
  - ScottBurson 9y ago
    > If a challenger has to rely on an absence of Graham factors they are in trouble. Right. I think the law should be changed. The Amazon photography patent [0] is a great example of why. Although there were no prior art references specifying the distance ratio given in claim 3, there is also no evidence that nobody had used that ratio before. Nor, in all likelihood, is there any evidence that anyone had tried to achieve the same effect as this patent (eliminating the need for retouching product photographs) and failed. Although this example is not from the software domain, from what I have seen, similar circumstances occur all the time in software: a patent application covers a technique that simply can't be known not to have already been discovered, because the problem it solves is simply not important enough that someone who solved it would necessarily have thought the solution worth patenting. Or, because they did so at a time when software was not generally thought to be patent-eligible, a situation that, as I recall, persisted among software engineers well into the 1990s. In my view, and in the software domain, the inventions that deserve patent protection are primarily those that solve problems whose difficulty has been explicitly noted in the computer science literature. For those, we have very clear evidence that any solution that improves on previous attempts is nonobvious. Absent such evidence I think the public would be better served, on the whole, if software patents were not granted. This is not quite the scorched-earth view that some here on HN take with regard to software patents, referring to those who think they should never be granted at all, but my impression is that it's pretty close to the EU policy. [0] https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a-patent-on-white-background-photography/ https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a...

abecedarius 9y ago

As coinventor of a now-expired patent, I'm not very impressed by the bar for novelty. There has been some truly new stuff patented, like the RSA cryptosystem. It's not clear to me whether protecting things like that has been a net benefit even before the cost of also protecting ordinary engineering and worse.

pnw_hazor 9y ago
The novelty bar is low by design. An invention needs at most one difference from prior art to be novel. It can be a small difference. But if a patent relies on a small difference for novelty it is likely to be a narrow patent or otherwise easy to design around. Note, non-utility differences, like color or artistic design elements do not count in utility patents. Non-obviousness is harder prove because multiple references can be combined and there is more room for subjective interpretation or argument. Overcoming obviousness rejections is where patent attorneys earn their money. If the filed specification is well-done, obviousness rejections can almost always be overcome at the expense of narrowing the patent claims. Further, patents encourage innovation in at least two ways: The classic view is that they reward inventors by granting them a limited term monopoly in their invention in exchange for public disclosure. Though I think more innovation is spurred by people designing around existing patents. For example, Amazon's old one-click patents didn't stop the e-commerce industry from innovating. Neither did Priceline's patents on reverse on-line auctions. Patents protect how someone does something, not what someone does. Two inventions that do the same thing can be patented, as long as how they do it is different. RSA patents only mattered because people wanted to use RSA's crypto. They didn't stop others from making or patenting different kinds of crypto or getting their own patents on novel extensions to RSA's crypto.
- jjoonathan 9y ago
  > But if a patent relies on a small difference for novelty it is likely to be a narrow patent or otherwise easy to design around. Sure, if you're an omniscient being aware of every patent in existence and well-funded enough to defend against the people who have "patented the internet" (or what have you).
  - abecedarius 9y ago
    Another problem with this: engineers get instructed to for god's sake don't read or discuss patents, for fear of treble damages.
    - pnw_hazor 9y ago
      yeah, that kind of sucks. Though not only does such a policy reduce the likelihood of a bad outcome re willful infringement. It can save $$$ during litigation because it will not be a real issue. Businesses deal with all kinds of inconvenient things. Patents are one of those things. Welcome to the big leagues so-to speak. Having a tight 10-50 patent portfolio around your key tech will go along way towards helping a small company play with the big boys. A quality patent portfolio can be a powerful equalizer if you are doing something innovative and it is protected by patents.
- abecedarius 9y ago
  This is just one more anecdote, but I once read Sun had a cool new patent, the central idea of which turned out to be three lines of assembly code which had already been published in the well-known superoptimizer paper by Massalin 15 years before -- I only noticed this because I happened to have been reading it and had the paper lying around my bedroom. To Massalin it merited one paragraph in an appendix about interesting snippets discovered by the superoptimizer. Sun gave it pages of legalese broken out into multiple claims, ending with the usual boilerplate claiming any further variations not explicitly listed that would be obvious to one "skilled in the art". I did nothing about this because the fight would be a drag with nothing in it for me. Yes, the classic justification is to encourage invention, but there are publications arguing that patents aren't a net positive. It's not my field, I don't know, but I've started doubting. Added: I don't think Sun did anything especially wrong -- they worked with the patent system as it is and missed the prior art. What I think is that this example shows some of what's wrong with that system.

ScottBurson 9y ago

Ah, but the applicant does not have to prove that the invention is nonobvious. I think that objective evidence of nonobviousness should be required, not at the time of application — the needed evidence might not exist yet at that point — but as the first step in an infringement proceeding. As for what would constitute objective evidence of nonobviousness, I think the Graham factors [0] are a great starting point: * commercial success * long felt but unsolved needs * failure of others [0] https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co.

pnw_hazor 9y ago
Graham factors will get looked at closely in litigation because post-grant challengers always allege that the patent claims they are challenging are invalid because they are obvious. Patent owners will defend charges of obviousness by: trying to distinguish their patent claims from the prior art; arguing that combining the prior art references is unreasonable; and by arguing that the Graham factors tilt in their favor. If a claim is obvious, it is easier to prove it by finding written evidence (references) and then argue that it would be reasonable to combine those references. If a challenger has to rely on an absence of Graham factors they are in trouble. That means they could not find any published prior art references in the entire world that would be reasonable to combine to disclose all of the elements of the claims being challanged. Note, litigators will raise every other reason they can think of to invalidate the claims they are challenging. During examination, obviousness is often the sticking point. In crowded arts it can take several rounds of prosecution to overcome obviousness rejections -- as it should.
- ScottBurson 9y ago
  > If a challenger has to rely on an absence of Graham factors they are in trouble. Right. I think the law should be changed. The Amazon photography patent [0] is a great example of why. Although there were no prior art references specifying the distance ratio given in claim 3, there is also no evidence that nobody had used that ratio before. Nor, in all likelihood, is there any evidence that anyone had tried to achieve the same effect as this patent (eliminating the need for retouching product photographs) and failed. Although this example is not from the software domain, from what I have seen, similar circumstances occur all the time in software: a patent application covers a technique that simply can't be known not to have already been discovered, because the problem it solves is simply not important enough that someone who solved it would necessarily have thought the solution worth patenting. Or, because they did so at a time when software was not generally thought to be patent-eligible, a situation that, as I recall, persisted among software engineers well into the 1990s. In my view, and in the software domain, the inventions that deserve patent protection are primarily those that solve problems whose difficulty has been explicitly noted in the computer science literature. For those, we have very clear evidence that any solution that improves on previous attempts is nonobvious. Absent such evidence I think the public would be better served, on the whole, if software patents were not granted. This is not quite the scorched-earth view that some here on HN take with regard to software patents, referring to those who think they should never be granted at all, but my impression is that it's pretty close to the EU policy. [0] https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a-patent-on-white-background-photography/ https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a...