Comment: Who benefits from IBM and the USPTO's 'open' bid to up patent quality?

By Matt Whipp

Posted on 12 Jan 2006 at 12:14

'The Software Patent Institute has always focussed on making pre-Internet materials (other than patents themselves) available for search in electronic form. Most of our materials are from prior to 1990 and did not exist in electronic form until we processed them,' he told us.

'It is our impression that the bulk of the open source material will in fact be material created after about 1990 and material that we have not and are not planning to process ourselves. We welcome increased attention to the material we are not processing by anyone willing to make it available to the general public worldwide, as we have done with our material.'

Indexing Quality

The final piece of the IBM and USPTO jigsaw is the Patent Quality Index.

The index determines the quality of a patent or application based on how well it adheres to patent law but makes no mention of prior art. However the USPTO responded: 'Any internal measure we adopt related to assessing the quality of our actions is b ased on adherence to patent laws, obviously. Some of these laws, 35 USC 102 and 35 USC 103, for example, directly relate to the patentability of claims relative to prior art. Thus, "adherence to patent laws" and "use of prior art" are not mutually exclusive. The latter is included as a part of the former.'

This sounds like something that should have been done years ago, and one has wonder why it wasn't. After all, a successful tool of this nature would weed out many of the dubious patents already issued.

The Course for the Source?

These initiatives are nice, but right now only in the way a biscuit is nice with a cup of tea. It seems that the real reforms have to come from within the USPTO before these new mouthpieces for the open-source community grow any teeth.

The open source community will probably jump on this opportunity as a way to do something about the patent problem. After all, look what a powerful tool the Groklaw site has become. When Unix company SCO threatened the future of Linux with its suit against IBM, Groklaw harnessed the community to scour, analyse and make public all the evidence it could find. It successfully undermined many of the SCO's claims and was equally invaluable a resource to IBM's lawyers.

But that didn't make the community legal experts. The community needed the site's indefatiguable Pamela Jones with her paralegal background for guidance and then it was IBM's lawyers which assessed exactly what they would use in the court room.

Similarly, these new initiatives won't make patent examiners of the open source community either. But then the USPTO says it isn't asking that. 'We are not partnering with them to help us assess prior art per se, but rather to share with us their experience in using prior art,' we were told.

But it still needs the USPTO to put in place the resources so that it can act on the information the community subsequently supplies. SPI's Cole told us, 'the last time we ran the numbers (number of examiners, number of applications, average time between filing and grant), the average patent application could receive no more than about seven hours of search time... So simply making more material available, even in a single, electronically searchable database is not enough.'

The USPTO already has access to databases of millions of prior art abstracts. Soon it will have many millions more. But it doesn't mean that it will effectively use any.