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Patent Progress

I've written about the problems of the patent system on and off for most of this decade, but this morning's column is the first time I've had occasion to sound optimistic about things.

The Supreme Court's ruling (PDF) Monday clarified one of the most basic definitions of what's patent-worthy, the "non-obviousness" requirement. (Yes, in intellectual-property law the definition of "obvious" is not always obvious.) That is, the court said that an invention can't just combine existing inventions in a predictable or logical way; in essence, the new thing, whatever it is, needs to have come as some sort of surprise to the market.

Since so many of the "innovations" protected by patents granted over the last couple of decades have lacked that basic quality, the Court's ruling could lead to a massive number of patents getting wiped off the map in reexamination proceedings or patent litigation. That may be a mess--but it should be a constructive, useful mess.

If you're interested in reading more about this topic, have a look at some of the analyses posted on the SCOTUSblog Web site.

The U.S. Patent and Trademark Office also has some useful details available online in its annual performance report; see, in particular, the statistics at the end of that document.

I started out writing this column by taking a look at the specifics of the Verizon-Vonage lawsuit, but most of that detail got squeezed out of the story. In case you've been wondering:

* Verizon says it didn't file its lawsuit until 2006--four years after Vonage began signing up customers--because the details of Vonage's system didn't emerge until an SEC filing by that company in 2006. Said Verizon deputy general counsel John Thorne: "We first saw the detailed information about how its network works only a few weeks before we brought the suit."

* Vonage would not comment on any of the details of its case; my interview with their spokeswoman was exceedingly short.

* Verizon says its patents don't cover voice-over-Internet-Protocol service in general, just "very specific things" (Thorne's words) about the provision of it. But Verizon won't say if it will or won't sue other voice-over-Internet Protocol providers for infringing these patents.

* At one of those other providers, Vienna-based SunRocket, company president Lisa Hook professed confidence in her firm's patent position. She said only a few customers have expressed any anxiety, while others have e-mailed supportive messages along the lines of "you're going to be fine."

Are you a VoIP user? Do you feel better about things as a result of the Supreme Court's decision? Let me know in the comments! (Or stop by my Web chat at 2 this afternoon.)

By Rob Pegoraro  |  May 3, 2007; 11:26 AM ET
Categories:  The business we have chosen  
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I certainly hope that the SCOTUS decision will end the stupidity of the PTO, like in this case:
The US Patent Office issued patent 6,368,227 on 9 April, 2002 to Steven Olson of St Paul, Minnesota for a "method of swinging on a swing". Olson's father Peter is a patent attorney.

The award has generated a mixture of chuckles and frustration at an overworked patent system unable to catch absurd applications. The patent covers moving a swing side to side or in an oval pattern. Children can get bored by swinging back and forth, or by twisting the swing to make it spin, the patent says.

"A new method of swinging on a swing would therefore represent an advance of great significance and value," it reads. Olson's alternative is to pull on one chain at a time, so the swing moves towards the side being pulled.

Peter Olson told New Scientist: "I had told him that if he invented something he could file a patent." His son had not seen sideways swinging because the swings at his school are closely spaced, so he asked his father to file the application.

The patent office initially rejected the application for prior art - citing two earlier patents on swings - but Peter Olson appealed, noting that neither was a method for swinging sideways. The patent was then issued.

Posted by: Unindicted Co-conspirator | May 3, 2007 1:07 PM | Report abuse

Rob, the "Submit Comment" button on your web chat is not working - generates an error screen.

Posted by: Anonymous | May 3, 2007 2:24 PM | Report abuse

According to the training I received when I worked at IBM, patented technology must be "not obvious to a skilled practitioner of the art." To me, it sounds like the Supreme Court is simply requiring the Patent Office to pay attention to the last part of that phrase.

When a group of colleagues and I submitted a patent application back in 1990, our justification of "not obvious to a skilled practitioner of the art" was a citation of one of the standard programming algorithm reference books that claimed what we did was impossible. (The patent was granted in 1993.)

IBM also publishes a journal of inventions that don't rise to the level of novelty or obviousness to justify a patent. It does this to establish prior art and ensure that noone else can patent that idea and restrict IBM's usage of it.

Posted by: rlguenther | May 3, 2007 5:20 PM | Report abuse

One of the key parts of Justice Kennedy's opinion is this line: "A person of ordinary skill is also a person of ordinary creativity, not an automaton." But the old scheme denied that idea--which is probably why the PTO felt obliged to grant a patent for a "new" swinging method.

That patent reads like a bit of a practical joke:

"Lastly, it should be noted that because pulling alternately on one chain and then the other resembles in some measure the movements one would use to swing from vines in a dense jungle forest, the swinging method of the present invention may be referred to by the present inventor and his sister as "Tarzan" swinging. The user may even choose to produce a Tarzan-type yell while swinging in the manner described, which more accurately replicates swinging on vines in a dense jungle forest. Actual jungle forestry is not required."

After the predictable public outcry, the Patent Office ordered a reexamination and cancelled it in 2003.

- RP

Posted by: Rob Pegoraro | May 3, 2007 6:23 PM | Report abuse

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