Low-tech Problems with High-tech Patents : Technology: Innovations in computer software have created a flood of applications, producing strain and controversy at the U.S. Patent and Trademark Office.
As its technology grows more pervasive and valuable, the computer industry--which once largely spurned patents--is racing to the warrens of the U.S. Patent and Trademark Office, where workers still rummage through wooden boxes to find some documents.
IBM Corp.--which once went so far as to publish a list of several thousand computer discoveries it had not patented--has won 368 patents for computer digital processing systems in the last three years. That compares to 128 from 1980 through 1982. Digital Equipment Corp., which received just three U.S. patents for computer systems as recently as 1986, got 64 in that category in 1992.
But the rush of high-technology invention has sometimes produced controversial results at the 203-year-old patent office, which was established by President George Washington in 1790 at the urging of James Madison and Charles Pinckney.
Patents give inventors legal protection to profit from their ideas. And by systematically recording new inventions--then releasing them to the public after the inventors’ limited rights have expired--the patent office has also helped foster science and industry.
But plowing through the astounding growth in patent applications has strained the government’s bureaucracy.
As evidence of the burden, critics cite a number of recent computer patent controversies, including the office’s recent decision to re-examine a broad patent on multimedia technology it had just issued to Compton’s New Media of Carlsbad, in San Diego County.
“A lot of people feel that the patent office does not have the breadth of information available to them to assess these submissions,” said Alan D. Sugarman, president of Hyperlaw, a computer publisher of federal court opinions.
“A lot of the innovations in the software field are never published in journals, as is the case with other fields,” Sugarman said. “A computer program either works or it doesn’t work. You don’t need the certification of your peers to prove that.”
In its 13 nondescript Arlington, Va., buildings, the patent office is only slowly shedding the horse-and-buggy technology it has used for more than two centuries to maintain what amounts to the world’s biggest filing cabinets.
Direct electronic filing of patent applications, which the agency has been working on for nearly a decade to reduce its mountain of paperwork, is still months--if not years--away. Even in its paper files, the office has little background on computer software inventions, acknowledges the head of the agency, Patent Commissioner Bruce A. Lehman.
“The computer industry does not have a history of publication,” he said. On the contrary, Lehman noted, inventors have “relied on trade secrecy” to maintain their competitive advantage in the computer industry.
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But Pryor A. Garnett, a patent attorney for IBM, said that while the patent office has its work cut out in understanding any new technology, its struggle to master computer software has been particularly arduous.
“Every new technology that has come along--from electricity to chemistry, biotechnology and now software--has created a learning curve in the patent office in its early stages,” said Garnett, who is also a board member of the Ann Arbor, Mich.-based Software Patent Institute. “The issues presented by software-related invention have challenged the patent office to improve its capabilities.”
The agency has been working with Software Patent Institute, a private, university-affiliated educational group, to expand its history of patent software invention. It has also been installing dual-screen computers, which examiners can use to view patent drawings and text simultaneously.
But the office is still saddled with limited computer searching capability and a staff that is short of experienced software examiners. Potential candidates can earn far more in the private sector than the $28,000 to $60,000 annual salary offered by the government.
The turmoil at the patent office comes as the mass merchandising of personal computers has reached a fever pitch amid talk of a worldwide “information highway.” Computer software innovation--which has sprung from the garages of American nerds as well as such outposts as India and Taiwan--has produced a multibillion-dollar industry that is also helping increase worker productivity.
But the industry has moved ahead at such breakneck speed that inventors have had little time or inclination to document their work. Indeed, the patent office used to reject software claims as unpatentable mathematical algorithms--until the U.S. Supreme Court in 1981 declared it legal to patent software.
The legal protection granted by the court has attracted keen interest from companies around the globe. Securing a patent on a widely used technology--such as an essential aspect of a computer program--is the financial equivalent of winning the lottery.
A U.S. patent gives the holder 17 years of exclusive rights to sell an innovation in the world’s largest market. So valuable is the patent right that 400 applications are contested in court each year, even though legal fees for such cases can exceed $500,000.
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Losers can pay dearly.
Two years ago, for example, Eastman Kodak Co. paid Polaroid Corp. $925 million to settle a 15-year-old legal battle over instant photography patents.
“Most patented inventions are never used commercially,” Garnett said. “But for those that are, a patent can be immensely valuable--upward of tens of millions of dollars.”
The patent office launched its unusual patent re-examination last month after the government was besieged by complaints about the multimedia patent it granted in August to Compton’s New Media Inc., a unit of Chicago-based Tribune Co., and Encyclopaedia Britannica Inc. Critics said the office gave the two companies near-total credit for a technology said to be already widely used in the software business.
The decision came only a month after privately owned Online Resources & Communications in McLean, Va., attracted notice for winning what its president called “a very broad patent” that apparently covers any at-home transaction in which consumers debit their bank accounts through an automated teller network.
Similarly, three years ago, inventor Gilbert Hyatt--more than a decade after microprocessors spawned the personal computer revolution--won a patent covering “a computer on a chip.” Although Hyatt’s patent was based on a series of applications dating back to 1970, the award sparked a firestorm of criticism.
Patent expert Paul Heckel is one of many who blames the lack of extensive documentation of previous discoveries in the field.
“Because people didn’t patent software, little of the prior art is disclosed in patents,” and so the background cannot easily be searched, said Heckel, who has testified before Congress, written several books on the issue and is president of his own small Los Altos, Calif., software company, Hyper Racks.
“Without a good library of prior art to refer to, the patent office has issued many patents that will prove to be invalid or of limited scope,” Heckel said.
Patent Commissioner Lehman acknowledges the obstacles his agency faces: “Many of our customers are very unhappy with the present system, and we have an obligation to do something about it.”
Besides re-examining Compton’s controversial multimedia patent, Lehman said, he has launched hearings to determine how the patent office can best meet the challenge of evaluating new technology.
The self-analysis undoubtedly will underscore the fundamental differences between the American patent system and those overseas.
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Under the U.S. system, a patent is awarded to whoever first conceives of an invention. In Japan and Western Europe, a patent is granted to the inventor who files at the patent office first.
What’s more, pending patent applications are kept secret in the United States, while in Japan and Europe, applications are disclosed within 18 months to allow others to challenge them.
In 1992, a 15-member advisory commission set up by President George Bush recommended modifying U.S. patent laws so they would be more in line with those of other countries.
The recommendations grew out of U.S. negotiations with the World Intellectual Property Organization, a global standards-setting body. Patent law reform was also a heated topic of debate in the recently completed General Agreement on Tariffs and Trade negotiations.
So far, none of the talks have produced substantial changes in U.S. patent law. But an aide to Sen. Dennis DeConcini (D-Ariz.) said DeConcini plans to reintroduce a measure that would grant patent rights to the first to file. He unsuccessfully introduced a similar measure in 1992.
For his part, Lehman said he will move cautiously to institute reforms, contending that the government “must listen to our clients--inventors--better.
“We want a system,” he said, “that will help foster creativity, not hinder it.”
The Long and Winding Road
A bright idea may take only moments to conceive; the real work comes in trying to secure patent protection. Here, in outline, are the steps involved:
1. Spend thousands of dollars--or more--to develop an idea.
2. Spend even more to conduct a search of government and scientific files to find out if the invention is really unique.
3. Pay the U.S. Patent and Trademark Office an application fee of $355 ($710 for companies employing more than 500 people) and submit papers that describe the invention and illustrate of the idea.
4. Wait. It takes an average of 20 months for overworked government bureaucrats to review each application. During that time, the Patent Office can ask for more documentation. On rare occasions, the agency requires an applicant to produce a working model.
5. The patent is issued, offering 17 years of exclusive rights to the design, idea or product.
6. After issuance, the inventor periodically pays so-called patent maintenance fees that total about $7,000 over the life of the patent.
