Improve the notice function

Problem

Patent owners often do not keep their records up-to-date at the Patent Office, making it nearly impossible for potential defendants to know what patents they infringe and appropriately make risk analyses before they move forward with a product. Patents are supposed and their related documents should be public to put parties on notice of what they can and cannot do; when those records aren’t public, inventors bear the cost.

Solution

All patent owners should be required to keep their disclosures up to date throughout the life of the patent, or else the patent will be unenforceable. For example, patent owners should be required to update ownership and litigation records in a timely fashion. And, with the exception of relevant trade secrets, licenses to a patent should be reported within six months of their effective date.

Daniel Dobkin
R2 Semiconductor
Sunnyvale
CA
United States
Posted Jun 20, 2012 1:06 pm
  • Internet user
Folks: You're missing the much bigger picture. Because so much software is proprietary and also protected by copyright, no one knows if a patented software feature is actually novel: it is illegal in many cases to decompile to source code. That is, the prior art that ought to be readily searchable is legally invisible. If software is to be covered by patents it must be visible. If it is to be protected by copyright it cannot be patented.
up
480 thumbs up.
Mike Boucher
Dakota Legal Software, Inc.
Lafayette
CO
United States
Posted Sep 5, 2012 1:05 pm
  • Patent owner
  • Software developer / engineer
  • Internet user
  • Victim of patent troll
See my previous comment about another part of your proposals about getting a patent attorney involved in drafting your proposal. Some of the other stuff is a bit off, but this one is embarrassing.

The proposal says that "patent owners should be required to keep their disclosures up to date." A disclosure is part of the patent filing. It discloses the invention. The invention doesn't change, so the disclosure doesn't change. It doesn't get updated. It can't be updated. The invention is what the invention is.

Perhaps you're thinking that the list of related art should be updated. Why? Subsequent art does not affect the prosecution of a patent and, sort of by the definition of time, no new prior art appears. That's how time works.

The proposal states that "licenses to a patent should be reported within six months of their effective date." Again, why? License agreements do not expand the scope of a patent. If you infringe an unlicensed patent, you infringe a licensed patent, and vice versa. This has exactly zero to do with the stated problem of "put[ting] parties on notice of what they can and cannot do."

"Patent owners often do not keep their records up-to-date at the Patent Office, making it nearly impossible for potential defendants to know what patents they infringe and appropriately make risk analyses before they move forward with a product." Before a patent issues, there is nothing to infringe and so it is not possible to infringe. After a patent issues, it does not change. You read the patent as it appears on the day it was issued, which is as it appears on the PTO web site, and that's the invention. It doesn't change. There is no "up-to-date" involved. If the description on the PTO web site is wrong, that's a PTO problem, not an inventor problem.
up
458 thumbs up.
Glen Peterson
United States
Posted Jun 21, 2012 8:47 am
Maybe I'm misunderstanding the wording here. Patents are public when granted. If your idea became public immediately upon filing, but it got rejected for some other reason, you could not try again because you would have already disclosed your invention. True? This seems that it would amplify any mistakes or unfair decisions the USPTO might make.
up
456 thumbs up.
Brian Love
Santa Clara University School of Law
Santa Clara
CA
United States
Posted Sep 25, 2012 2:02 pm
  • Lawyer
  • Academic
The fact that patent licenses are virtually always kept confidential contributes quite a bit to the unpredictability of patent damages. Reasonable royalty damages are (essentially) defined as the market rate license for the invention, but publicly available information about the market for patents is very hard to come by. This information deficit opens the door for the introduction of speculative, results-oriented testimony from damages experts.

I spoke on this topic last month. My presentation slides are available for download here: http://www.stanford.edu/dept/law/ipsc/Paper%20PDF/Love,%20Brian%20-%20Presentation.pdf
up
410 thumbs up.
Brian Love
Santa Clara University School of Law
Santa Clara
CA
United States
Posted Sep 25, 2012 2:02 pm
  • Lawyer
  • Academic
The fact that patent licenses are virtually always kept confidential contributes quite a bit to the unpredictability of patent damages. Reasonable royalty damages are (essentially) defined as the market rate license for the invention, but publicly available information about the market for patents is very hard to come by. This information deficit opens the door for the introduction of speculative, results-oriented testimony from damages experts.

I spoke on this topic last month. My presentation slides are available for download here: http://www.stanford.edu/dept/law/ipsc/Paper%20PDF/Love,%20Brian%20-%20Presentation.pdf
up
410 thumbs up.
Mike Boucher
Dakota Legal Software, Inc.
Lafayette
CO
United States
Posted Sep 5, 2012 1:05 pm
  • Patent owner
  • Software developer / engineer
  • Internet user
  • Victim of patent troll
See my previous comment about another part of your proposals about getting a patent attorney involved in drafting your proposal. Some of the other stuff is a bit off, but this one is embarrassing.

The proposal says that "patent owners should be required to keep their disclosures up to date." A disclosure is part of the patent filing. It discloses the invention. The invention doesn't change, so the disclosure doesn't change. It doesn't get updated. It can't be updated. The invention is what the invention is.

Perhaps you're thinking that the list of related art should be updated. Why? Subsequent art does not affect the prosecution of a patent and, sort of by the definition of time, no new prior art appears. That's how time works.

The proposal states that "licenses to a patent should be reported within six months of their effective date." Again, why? License agreements do not expand the scope of a patent. If you infringe an unlicensed patent, you infringe a licensed patent, and vice versa. This has exactly zero to do with the stated problem of "put[ting] parties on notice of what they can and cannot do."

"Patent owners often do not keep their records up-to-date at the Patent Office, making it nearly impossible for potential defendants to know what patents they infringe and appropriately make risk analyses before they move forward with a product." Before a patent issues, there is nothing to infringe and so it is not possible to infringe. After a patent issues, it does not change. You read the patent as it appears on the day it was issued, which is as it appears on the PTO web site, and that's the invention. It doesn't change. There is no "up-to-date" involved. If the description on the PTO web site is wrong, that's a PTO problem, not an inventor problem.
up
458 thumbs up.
Glen Peterson
United States
Posted Jun 21, 2012 8:47 am
Maybe I'm misunderstanding the wording here. Patents are public when granted. If your idea became public immediately upon filing, but it got rejected for some other reason, you could not try again because you would have already disclosed your invention. True? This seems that it would amplify any mistakes or unfair decisions the USPTO might make.
up
456 thumbs up.
Daniel Dobkin
R2 Semiconductor
Sunnyvale
CA
United States
Posted Jun 20, 2012 1:06 pm
  • Internet user
Folks: You're missing the much bigger picture. Because so much software is proprietary and also protected by copyright, no one knows if a patented software feature is actually novel: it is illegal in many cases to decompile to source code. That is, the prior art that ought to be readily searchable is legally invisible. If software is to be covered by patents it must be visible. If it is to be protected by copyright it cannot be patented.
up
480 thumbs up.
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