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> The patent office doesn't do much background checking. That's not correct. By law, for every patent application, the patent examiner is supposed to conduct a

> The patent office doesn't do much background checking. That's not correct. By law, for every patent application, the patent examiner is supposed to conduct a thorough search of the prior art; some patent examiners have long experience in their "art units." [0] Also by law: Inventors must disclose, to the patent examiner, all information of which they are aware that is "material to patentability." [1] Well-trained patent attorneys take the view that it's far better to tell the patent examiner about everything you can think of that might be significant. Doing so helps to strengthen any resulting patent against infringers' claims that the invention would have been obvious. Think about how an infringement lawsuit will often go down: The accused infringer will generally try to claim that the patent is invalid because of one or more particular prior-art references. When that happens, one of the best possible responses, by the patent owner's trial counsel, is, in effect, Oh yeah? Well, ladies and gentlemen [of the jury], the patent examiner already considered those references, and s/he concluded that the invention was indeed patentable, so whom are you going to believe — the patent examiner, or the infringer who stole my client's invention?) As a more-or-less random example, see a 2017 patent issued to IBM, where the cited prior art included 32 prior patents and 3 non-patent publications — all cited by the inventors. [2] [0] https://www.uspto.gov/web/offices/pac/mpep/s2103.html https://www.uspto.gov/web/offices/pac/mpep/s2103.html [1] https://www.law.cornell.edu/cfr/text/37/1.56 https://www.law.cornell.edu/cfr/text/37/1.56 [2] Dixit et al., "Performing sequence analysis as a relational join," U.S. Patent No. 9,589,018, https://patents.google.com/patent/US9589018B2/en?oq=9%2c589%2c018#patentCitations https://patents.google.com/patent/US9589018B2/en?oq=9%2c589%...

dleslie 6y ago
That's what the law states, in practice, ridiculous patents are granted as a matter of course. And, in practice, most patent infringement lawsuits go down like this: "We own this patent and have a team of well-funded lawyers to defend it, we've assessed that you and your company are not financially capable of defending yourself and so we are willing to offer you a substantial licensing agreement as settlement. We suggest you take it." [0] Sideways Swinging: https://patents.google.com/patent/US6368227B1/en https://patents.google.com/patent/US6368227B1/en [1] Vacation Auto-responding: https://patents.google.com/patent/US9547842 https://patents.google.com/patent/US9547842 [2] A rounded-bezel display: https://patents.google.com/patent/USD670286 https://patents.google.com/patent/USD670286 [3] A tree branch: https://patents.google.com/patent/US6360693 https://patents.google.com/patent/US6360693 [4] Hierarchical folders to organize files on a computer: https://patents.google.com/patent/US8473532 https://patents.google.com/patent/US8473532 [5] A car windshield: https://pdfpiw.uspto.gov/.piw?PageNum=0&docid=D0786157&IDKey=&HomeUrl=http%3A%2F%2Fpdfpiw.uspto.gov%2F https://pdfpiw.uspto.gov/.piw?PageNum=0&docid=D0786157&IDKey... [6] Bilateral and multilateral decision making: https://patents.google.com/patent/US8069073B2/en https://patents.google.com/patent/US8069073B2/en The EFF even has a monthly "stupid patent" post: https://www.eff.org/issues/stupid-patent-month https://www.eff.org/issues/stupid-patent-month
viraptor 6y ago
> Also by law: Inventors must disclose, to the patent examiner, all information of which they are aware that is "material to patentability." This is basically "pretty please". If something is uncomfortable it's not "material to patentability" according to corporate patent people. (Including me sending them "hi, look at this prior art")
- dctoedt 6y ago
  > This is basically "pretty please." If something is uncomfortable it's not "material to patentability" according to corporate patent people. If those "corporate patent people" are lawyers, they're betting their law licenses: Intentional withholding of material information can result in the patent's being held unenforceable for that reason alone [0], and quite possibly temporary- or permanent disbarment for any patent attorney found to have engaged in such misconduct. [1] [0] See, e.g., https://casetext.com/case/deep-fix-llc-v-marine-well-containment-co-4 https://casetext.com/case/deep-fix-llc-v-marine-well-contain..., in which a highly-regarded federal district judge in Houston held that a patent attorney had intentionally withheld material information from the patent examiner; the case is discussed at https://www.ipwatchdog.com/2020/02/26/inequitable-conduct-lives-patent-practitioners-beware/id=119323/ https://www.ipwatchdog.com/2020/02/26/inequitable-conduct-li... As another example in which patent attorneys were likewise held to have engaged in inequitable conduct, see https://scholar.google.com/scholar_case?case=4550519350745193929 https://scholar.google.com/scholar_case?case=455051935074519... [1] See generally the discussion in an amicus brief (search the document for "disbar), at https://www.supremecourt.gov/DocketPDF/17/17-1616/52679/20180709165540481_17-1616%20tsac%20Seven.pdf https://www.supremecourt.gov/DocketPDF/17/17-1616/52679/2018... (the Supreme Court denied the petition for certiorari, as discussed at https://www.patentdocs.org/2018/10/supreme-court-denies-certiorari-in-regeneron-pharmaceuticals-v-merus-.html https://www.patentdocs.org/2018/10/supreme-court-denies-cert...)

dleslie 6y ago

That's what the law states, in practice, ridiculous patents are granted as a matter of course. And, in practice, most patent infringement lawsuits go down like this: "We own this patent and have a team of well-funded lawyers to defend it, we've assessed that you and your company are not financially capable of defending yourself and so we are willing to offer you a substantial licensing agreement as settlement. We suggest you take it." [0] Sideways Swinging: https://patents.google.com/patent/US6368227B1/en https://patents.google.com/patent/US6368227B1/en [1] Vacation Auto-responding: https://patents.google.com/patent/US9547842 https://patents.google.com/patent/US9547842 [2] A rounded-bezel display: https://patents.google.com/patent/USD670286 https://patents.google.com/patent/USD670286 [3] A tree branch: https://patents.google.com/patent/US6360693 https://patents.google.com/patent/US6360693 [4] Hierarchical folders to organize files on a computer: https://patents.google.com/patent/US8473532 https://patents.google.com/patent/US8473532 [5] A car windshield: https://pdfpiw.uspto.gov/.piw?PageNum=0&docid=D0786157&IDKey=&HomeUrl=http%3A%2F%2Fpdfpiw.uspto.gov%2F https://pdfpiw.uspto.gov/.piw?PageNum=0&docid=D0786157&IDKey... [6] Bilateral and multilateral decision making: https://patents.google.com/patent/US8069073B2/en https://patents.google.com/patent/US8069073B2/en The EFF even has a monthly "stupid patent" post: https://www.eff.org/issues/stupid-patent-month https://www.eff.org/issues/stupid-patent-month

viraptor 6y ago

> Also by law: Inventors must disclose, to the patent examiner, all information of which they are aware that is "material to patentability." This is basically "pretty please". If something is uncomfortable it's not "material to patentability" according to corporate patent people. (Including me sending them "hi, look at this prior art")

dctoedt 6y ago
> This is basically "pretty please." If something is uncomfortable it's not "material to patentability" according to corporate patent people. If those "corporate patent people" are lawyers, they're betting their law licenses: Intentional withholding of material information can result in the patent's being held unenforceable for that reason alone [0], and quite possibly temporary- or permanent disbarment for any patent attorney found to have engaged in such misconduct. [1] [0] See, e.g., https://casetext.com/case/deep-fix-llc-v-marine-well-containment-co-4 https://casetext.com/case/deep-fix-llc-v-marine-well-contain..., in which a highly-regarded federal district judge in Houston held that a patent attorney had intentionally withheld material information from the patent examiner; the case is discussed at https://www.ipwatchdog.com/2020/02/26/inequitable-conduct-lives-patent-practitioners-beware/id=119323/ https://www.ipwatchdog.com/2020/02/26/inequitable-conduct-li... As another example in which patent attorneys were likewise held to have engaged in inequitable conduct, see https://scholar.google.com/scholar_case?case=4550519350745193929 https://scholar.google.com/scholar_case?case=455051935074519... [1] See generally the discussion in an amicus brief (search the document for "disbar), at https://www.supremecourt.gov/DocketPDF/17/17-1616/52679/20180709165540481_17-1616%20tsac%20Seven.pdf https://www.supremecourt.gov/DocketPDF/17/17-1616/52679/2018... (the Supreme Court denied the petition for certiorari, as discussed at https://www.patentdocs.org/2018/10/supreme-court-denies-certiorari-in-regeneron-pharmaceuticals-v-merus-.html https://www.patentdocs.org/2018/10/supreme-court-denies-cert...)