Government to Re-Examine Patent Award to Compton’s : About-Face Follows Complaints by Software Inventors

In an unusual about-face, the U.S. Patent and Trademark Office has ordered a re-examination of a broad and controversial patent on multimedia technology that it issued to a Carlsbad, Calif.-based software company.

The review was undertaken after the patent office was besieged by complaints from computer software inventors. The inventors contended that the government’s patent award to Compton’s New Media Inc. and Encyclopaedia Britannica Inc. in August gave the companies near-total credit for a technology that critics claimed was already widely used in the multibillion-dollar computer software field.

“The Bush people said that there was no problem, but there clearly is a problem” with the Compton’s multimedia patent, Patent Commissioner Bruce Lehman said of the patent, which was issued before he took office in September.

Lehman, who said the agency’s prior review of the patent was hampered by a lack of extensive data on earlier computer software invention, said the Compton’s patent re-examination could lead to a modification of the scope of the patent, a reissue of the patent with no change or an outright revocation.

Ordinarily, aggrieved inventors contest patents in court, where legal costs can exceed $500,000. Each year, about 400 of the 180,000 applications received by the patent office undergo such judicial scrutiny. By contrast, re-examinations initiated by the patent office itself are almost unheard of, patent officials say.

Because Compton’s claims its patent applies to any product that links databases of text and graphics, much is at stake in the government review. The controversial multimedia application was filed in October, 1989, and 41 Compton’s techniques for manipulating multimedia data were determined to be patentable.

If the Compton’s patent is upheld, it could generate hundreds of millions of dollars in licensing fees from the technology’s use in such products as interactive TV and CD-ROM computer discs.

Compton’s publishes a popular encyclopedia on CD-ROM discs, which hold text, graphics and sound. Its patent is so broad that it seems to cover the entire practice of accessing such “multimedia” information.

A spokesman for Compton’s, a unit of Chicago-based Tribune Co., said the company welcomes the re-examination.

“It could mean that the claims in the patent are strengthened or modified or struck down, but we are optimistic about the outcome because it will help clear the air,” spokesman Robert D. Carr said.

Computer software experts cheered the re-examination but were concerned that the agency’s review might not be as aggressive as a direct challenge of the patent in open court.

“It’s heartening that there will be a review ,but it’s still worrisome because the process is private, and we are not privy to the discussions between the examiner and Compton’s,” said Philip Dodds, executive director of the Annapolis, Md.-based Interactive Multimedia Assn.

“We respect Commissioner Lehman, but he won’t be in the room making the examination,” Dodds said. That’s unfortunate because “there’s a great deal at stake here,” he said. “This could form the basis of a precedent that could have a sweeping impact.”