Parrying patents!

Microsoft’s April 9 deal to spend $1.3 million apiece on 800 patents from AOL was another skirmish in the patent wars that have engaged the technosphere. Just last summer, we watched a blizzard of headlines, lawsuits, and billion-dollar bills:

We wonder: Is this a situation that only a patent lawyer could love, or are these purchases and lawsuits the inevitable price of progress in our high-tech world? Are they the inevitable outgrowth of a venerable system that, for all its flaws, is still better than nothing?

Patents are licenses to exclusively make and market an invention that are inscribed in the U.S. Constitution. The concept is simple — and ridden with inherent conflict. If you invent a small device (a “midget widget”) that is new, useful, and “not obvious” to people skilled in the art of widgetry — your widget can be protected by a U.S. patent.

If I make or sell a widget that uses your invention (that “infringes on your patent”), you can sue me for damages, and a court may order me to close my widget-works.

So far, my invention has benefited me, my employees and customers, but when the patent (which must explain the inner workings of my midget widget) expires after 20 years, it becomes available to anybody.
And so (in theory) patents stimulate innovation and progress by conferring a short-term monopoly in return for short- and long-term social and economic benefits.

But what sounds good on paper can hide complexities that only a patent lawyer could love:

“Greasing the wheels of innovation” or “throwing sand in the gearbox”?

It’s not hard to find claims that the patent system is “broken,” and nobody disputes that “bad patents” have been issued for innovations that are obvious, inane or unworkable.

Patent battles are nearly as old as the U.S. patent system: Eli Whitney spent years in court trying to enforce his patent against infringers who cobbled together homemade cotton gins. His “victory” came just one year before the patent expired.

Lawyer-letters about patent infringement are a dreaded fact of life in technology industries, but no matter who wins, patent battles transfer money from the buyers of phones and computers to patent lawyers.

The pace of U.S. patent awards has picked up to about 200,000 per year, and some with a dog in the fight say the system does protect the rights of inventors.

The sentiment is not universal.

Adam Jaffe, an economist at Brandeis University, co-wrote a book on the patent system² that refers to a “broken patent system” in the subtitle. Jaffe says patents cut both ways. “Patents are important in fostering innovation, because 99.9 percent of the time, inventing something is just the first step. You require a significant investment … to get something from the invention stage to actual production, and unless you are independently wealthy, you need someone who is hoping to make money to take you through the development stage.”

And that “someone” may view a strong patent as your most valuable asset.

Software and high-tech patents?

Innovation “is a very complicated process,” Jaffe adds. “In most cases multiple ideas are interacting. In the extreme case, in software and high technology, people say a product might invoke 100,000 patents. It can get very messy.”

When the United States started issuing large numbers of software patents in the 1990s, the inexperienced patent examiners issued many dubious patents. Although the examinations have gotten more stringent, some still think software should be exempt, or patented under different standards.

Searching for competing inventions in software, for example, is comparatively difficult, and the search is the basis of the patent examination.

In most cases, says Tim Berners-Lee, a commentator on tech issues, software developers don’t bother doing thorough patent searches, which, he maintains, could require more patent lawyers than exist on earth.

Trolling for profits?

Although patent disputes are nothing new, they have been systematized by “patent trolls” — companies that own, defend and license a library of patents. Depending on your point of view, trolls are:

NPR covered a prominent case of trolling, complete with shadowy, unoccupied offices.

But even if trolls can be a barricade to innovation, “in practice it will be very difficult to change the rules in such a way as to prevent that,” says Jaffe. Would you allow infringement suits only from those who are moving a patented idea toward the market? “Say I’ve got an invention and am looking for a company that has the resources to bring it to market… and someone else comes along and steals the idea. Are you saying I can’t sue because I am not on the market?”

As with many parts of the patent system, finding faults is easier than fixing flaws, he indicates. “I don’t disagree that in a sense people are abusing the system by amassing piles of patents, but it’s naïve to think you can tweak the system to shut that down.”

First-to-file, or first to invent?

The America Invents Act, signed into law September, 2011, made what former commissioner of the Patents and Trademark Office Robert Stoll calls “the most revolutionary change in patent law in 60 years.”
The changes start with the basis for obtaining a U.S. patent. Previously, you had to prove that you were the first to invent something; now you must be the first inventor to file.

“First-to-file” will make life simpler, Stoll told an audience at the University of Wisconsin-Madison in April, by deleting disputes about who made the invention first. “First-to-file provides more certainty to the system, and reduces the ugly interference cases that don’t provide much benefit to the United States.” (An interference proceeding now determines whether someone made the invention before the patent applicant.)

“First-to-file really favors large companies that have sufficient resources to get to the patent office first,” argues Carl Gulbrandsen, managing director of the Wisconsin Alumni Research Foundation (WARF), the private, not-for-profit technology transfer arm of the University of Wisconsin-Madison, “and it disadvantages independent inventors and universities. I expect filing costs will go up.”

Got an app for that patent?

Here’s the snag: When you invent a molecule that could make a tire last forever, you may not know right away if it’s worth filing a patent application. Under first-to-invent, you could wait as much as one year to file.

Filing a patent can cost tens of thousands of dollars, which is money you could better spend on research that might show that your invention is solid — or as evanescent as a rainbow.

But under first-to-file, you lose if an inventor in Berlin or Tokyo files an app before you have time to decide. “AIA has weakened the grace period and the ability of independent inventors to test out the invention, and appropriately get financing to help with filing,” says Gulbrandsen.

Gulbrandsen also charges that the new law contains, “So many undefined terms that they will be litigating it for 15 years. They have essentially thrown out 100 years of case law; it’s a full employment act for lawyers.”

Winnowing the chaff — or weakening the patent system?

Although interference proceedings are now history, Gulbrandsen says AIA contains too many new ways to challenge patents. “There used to be two principal ways to attack a U.S. patent, and that made them strong. Now there are literally nine ways, and that weakens them overall. For a university, this will mean increased expense [for defending existing patents], and many of them won’t be able to bear that.”

Since its founding in 1925, WARF has contributed $1.24 billion to UW-Madison as royalties from more than 2,300 patents for inventions by university researchers. It has become a significant source of income to the university’s researchers and a model for other university patent offices.

A strong patent system has benefited the United States, says Gulbrandsen. “It’s necessary for innovation, and the last thing you want to do, if you want to create jobs, is to weaken the patent system, and that is exactly what we have done” with AIA.

But Jaffe, although no fan of the patent system, sees a benefit in these after-the-fact challenges, since “the vast majority” of the 200,000 U.S. patents granted each year are trivial (like that baling-wire-and-chewing-gum flying machine). Because the patent office must judge a flood of applications with limited resources, “It cannot do an exhaustive analysis, and it would be crazy to invest the resources to get it right every time.”

Under the new system, after the initial patent examination culls the obvious chaff, Jaffe says, competing inventors could contest a wobbly patent. Now, he says, “You have the opportunity, at least in theory, to go to the patent office and say, ‘This wasn’t really novel.'”

Although it’s easy to criticize the patent office, Jaffe says it has more expertise than the federal courts, the final resting place for most patent disputes.

Who benefits, who gets hurt?

In the ideal world — where patents are perfectly drawn — innovation wins. “I equate patents and innovation,” says Gulbrandsen. But despite its promising moniker, the America Invents Act “makes it more difficult for the inventor to raise the funds necessary to bring the invention to market. One of the best tools an entrepreneur or a startup has to raise money is a patent. It gives some assurance to investors that if they provide the funding, they will be able to recover it and get a return. The patent gives you the right to exclude others. Weakening the patent system increases the risk for investors, and that’s bad for inventors.”

University technology-transfer offices are going to suffer, says Gulbrandsen, who directs one of the oldest and largest in the nation, since many of them must wait to file a patent until they have found a business that wants to pay for filing and license the patent. “Although WARF is an exception, under first-to-file, you don’t have time to find a licensee, and so most universities tech-transfer offices will drop out.”

Individual inventors, Gulbrandsen notes, seldom have a patent lawyer on retainer.

Still, too much protection stifles innovation, says Jaffe, who says the system requires balance. “I don’t think first-to-file changes a lot. The rest of the world has been on that for a long time. There are going to be impacts in both directions, but in most cases, first-to-invent is just a source of conflict, because it’s harder to establish. This just simplifies things and reduces controversy, which is a very good thing.”