Trivial Patents

With the popularisation of the Internet, a lot of discussion came on the so called trivial patents. In most of the cases this concerned software patents or Internet related patents. Even now, the patent offices are accused of being much too liberal in granting patents in these areas.

Probably the most famous trivial patent is the one-click patent of Amazon. This patent application was filed in December 1997 and granted by the USPTO in September 1999. It was also filed at the EPO, in September 1998, and a patent was granted in April 2003.

The European Patent was revoked by the EPO in June 2008 after three parties filed opposition against the patent. Amazon appealed the decision to revoke the patent. The appeal proceedings are still pending.

In the US, a request for re-examination was filed. During the re-examination, the Examiner of the USPTO decided that the patent was originally granted too broad and rejected a substantial number of claims. The re-examination proceedings are still pending.

How, do patents like the one-click patent actually get granted?

At the one hand, a field like computer programs is relatively new. Originally, the patent offices hardly had qualified examiners with a computer technology background. Therefore, these patent applications were dealt with by examiners from other, although related, fields like physics and electrical engineering, who might have an understanding of these applications, but were probably less familiar with the state of the art than people with a computer technology education.

Secondly, the sources consulted by the examiners for the prior art search did not really comprise a lot of information on this technology. Examiners really like to cite patent literature, because the publication date for patent documents is always known and this information is reliable. Therefore, their is hardly any discussion to be expected with regard to the correctness of these dates. With other documents, like for example periodicals, the date of publication is usually only known to some extent. For example monthly magazines are often, but not always, published in the month before the month printed on its cover. Furthermore, a lot of the prior art was not published in print, but only online. Sometimes not even as a description that could be read by a human being, but only in the form of the availability of some computer program. This makes, first, searching for the examiners much more complex, and second, makes it hard to proof when the information found was made public.

The patent offices are well aware of the fact that patents have been granted, that should not have been granted from the start. The EPO initiated the project Raising the bar for the grants of patents. Getting a patent granted in the US has also become more difficult, and a lot of patents that were originally granted, only survive a re-examination procedure in a limited form, if at all.

A further cause of all the debate does not originate at the patent offices though, but is caused by a lack of knowledge of the public on the patent system. A recent example is the Sudo patent. A lot of fuss is going on that Microsoft actually managed to get a patent on the functionality provided by the Unix command sudo. However, what Microsoft managed to get protection for is much more limited than the sudo command.

In its broadest form, this is what is protected:

1. One or more computer-readable media having computer-readable instructions therein that, when executed by a computing device, cause the computing device to present a user interface in response to a task being prohibited based on a user’s current account not having a right to permit the task, the user interface comprising: information indicating the task and an entity that attempted the task; a selectable help graphic wherein responsive to receiving selection of the selectable help graphic, the computer-readable instructions further cause the computing device to present the information; identifiers, each of the identifiers identifying other accounts having a right to permit the task, wherein the identifiers presented are based on criteria comprising: frequency of use; association with the user; and indication of sufficient but not unlimited rights; one of the identifiers identifies a higher-rights account having a right to permit the task, wherein the one of the identifiers comprises: a graphic identifying the higher-rights accounts associated with the user; and a name of the higher-rights account; an authenticator region capable of receiving, from the user, an authenticator usable to authenticate the higher-rights account having the right to permit the task, wherein: the authenticator comprises a password, and the authenticator region comprises a data-entry field configured to receive the password.

In order to infringe on Microsoft’s patent, every bit of this sentence must apply to whatever it is that is alleged to infringe Microsoft’s patent. And sudo does not do everything that is stated in this claim.

It can be concluded that there are some similarities between the Microsoft patent and the command sudo. However, the sudo command does not infringe on Microsoft’s patent, nor does the sudo command affect the novelty of this claim from Microsoft’s patent. Microsoft has protected some tool that incorporates functionality provided by sudo, but they have “enhanced” it with new functionality.

The problem here is that a lot of people read a patent and recognise a major part of it and can’t understand why a patent is granted. However, they often fail to understand it is the claims that define the scope of protection, not the description. Furthermore, they fail to understand that for something to infringe, all features of the claim should be present. And at the other hand, some known item can only invalidate (based on a novelty objection) the claim if all features of the claim were present in the item.