16 January 2017

The Most Prolific Inventors of the Past 25 Years, and the Connections Between Them

“No man is an Island, entire of itself; every man is a piece of the Continent, a part of the main...” – John Donne, Meditation XVII
Leg up
A simple analysis of inventor data from the US Patent and Trade Marks Office (USPTO) records reveals something interesting but, upon reflection, unsurprising: invention does not happen in a vacuum. Prolific inventors tend to be associated with other prolific inventors, and/or with prolifically inventive organisations.  Of the ten people who have received the most US patents over the past 25 years, there are four ‘pairs’ of inventors who have worked closely together over an extended period, and one who works for IBM – a company that recently topped the list of US patent recipients for the 24th consecutive year.  And, while the final member of the top 10 is not partnered with any other famously prolific inventor or company, he has at least one co-inventor on around half of his granted patents, where the same names of family and associates keep cropping up.

Two Australians make the list.  Indeed, the most prolific recipient of US patents over the last quarter century is Australian Kia Silverbrook.  The other Australian in the top 10, at number five, is Paul Lapstun, who has worked with Silverbrook for many years.  Japan’s top inventor, Shunpei Yamazaki comes in at number two, with his colleague at Yamazaki’s company Semiconductor Energy Laboratory (SEL), Jun Koyama, at number four.  Long time collaborators, and now senior inventors at Intellectual Ventures, Rod Hyde and Lowell Wood sit at numbers three and six respectively. 

Two members of the list, Apple’s Jony Ive (10) and Bartley Andre (seven), make the grade primarily on the basis of their large numbers of design patents, while Kangguo Cheng comes in at number eight on the basis of his work at IBM Research.

The tenth member of the top ten, coming in at number nine, is Donald E Weder, who is inventor or co-inventor on a mix of utility and design patents relating primarily to floristry.  Even though Weder is not paired with any other member of the top 10, or associated with a famous corporation like IBM, he is nonetheless a collaborator like all the other, sharing the inventing credits with up to 11 others on some of his patents.

All of this serves to confirm that the popular image of the lone inventor, toiling away in isolation in a laboratory or garage somewhere, is a complete myth.  Innovation mostly happens where the conditions are right, and that means having a supportive environment, including teams of innovative people who can work together and bounce ideas off one another in the course of creating something new.  Indeed, over 3,600 patents attributed to the top 10 inventors have two members of the list as co-inventors.

15 January 2017

The Importance of Continuing Professional Education (And of Not Lying About It!)

StudyingIf you are the client of a patent attorney, you probably expect that your experienced (and, perhaps, expensive) professional adviser is keeping up-to-date with the latest developments in their chosen field. Indeed, in many professions some form of continuing professional education (CPE) – alternatively known as continuing professional development (CPD) – is not just an expectation, it is a mandatory requirement.

The Australian patent attorney and trade marks attorney professions are among those in which a mandatory CPE requirement exists.  Some outsiders might be surprised, however, to learn that this has only been the case since 1 July 2008, and that regular compliance audits of attorneys only commenced in 2011. It has therefore been just a little over five years that anybody has been monitoring the efforts of Australian attorneys to keep our skills and knowledge current and relevant.

The formal CPE requirements are fairly minimal, being just 10 hours per year in order to remain registered as a patent attorney or trade marks attorney only, or 15 hours for patent attorneys who wish to remain registered as both.  Even so, I am occasionally surprised to encounter attorneys who do not appear to be as familiar with recent developments that I would have expected.

I do not imagine that anyone who reads this blog regularly will be surprised to hear that I believe that CPE is incredibly important.  Since entering the profession as a trainee in 2002, I have been on a constant learning curve.  The Australian law has, of course, evolved over this time through legislative change and through interpretation and development by the courts.  Keeping abreast of developments in other major jurisdictions, including the US, Europe, and China, has also been vital, given that many Australian companies wish to pursue IP rights in key export markets.  And the patent attorney profession itself has changed considerably, with clients having an increasing expectation that their attorneys will have a sound understanding of their business strategies and objectives, and be able to tailor a IP strategy recommendation accordingly.

The reason I have been thinking about the importance of CPE is a story I read recently out of the US, about a Californian IP attorney who falsely claimed that he had completed his mandatory 25 hours of continuing legal education (CLE) – notably quite a bit more than is expected of Australian patent attorneys, but still not hugely onerous – when he had, in fact, completed none!  Which made me wonder, could it happen here?

08 January 2017

How the Fate of Software and Business Method Patents has Turned on USPTO Directors and the Courts

Chart PresentationThe ‘death of software patents’ in the US has been greatly exaggerated.  That is, so long as you exclude patents covering computer-implemented business/financial processes and schemes, which may well be, if not quite yet deceased, for the most part (about 75%, in fact) mortally wounded. 

But for those ideologues who are trying to convince themselves, and others, that software-implemented inventions are simply no longer validly patentable, I am afraid I have bad news.  I have analysed US Patent and Trademark Office (USPTO) data covering millions of patents issued over the past decade, which shows that patents covering computer-implemented inventions, outside the particular fields of ecommerce, business and finance, not only are not in any form of decline, but have never, at any time over the past decade, shown any significant difference in grant rate from the bulk of patents issued by the USPTO across all fields of technology.

Patent claims classified by the USPTO as relating to ecommerce, business methods and finance, are another matter.  The Supreme Court’s Alice decision, issued in June 2014, led to an immediate, dramatic and sustained fall in the number of patents being granted in these fields of endeavour.

Interestingly, the top US Court’s previous pertinent decision, Bilski (issued in June 2010, shortly after I started this blog), had no noticeable impact on the rate of grant of business method patents.  This is, perhaps, unsurprising given that Bilski was the result of an appeal against a rejection of the application at issue by the USPTO, which had already been upheld by the Court of Appeal for the Federal Circuit (CAFC).  Thus it did not represent, or require, any significant change in policy or practice at the Patent Office which the Supreme Court confirmed had been right to reject Bilski’s application.  To the extent that Bilski changed anything with regard to business method patents, it was following the CAFC decision, rather than that of the Supreme Court.

In fact, the last event prior to Alice that had a significant effect on rates of grant of business method patents was the 2009 transition from Jon Dudas to David Kappos as Under Secretary of Commerce for Intellectual Property and Director of the USPTO (via John Doll, who was acting in the role between Dudas’ resignation on 20 January and Kappos’ confirmation on 9 August).  Granting of business method patents had been in decline under Dudas, however this trend was soon reversed under Kappos, with issue of business method patents once again tracking rates across all technology areas by the first quarter of 2010.

My analysis also shows that the CAFC’s Bilski decision and the early months of the Kappos era are associated with an increase in the average word-count of independent claims in granted business method patents, and also in patents directed to other forms of computer-implemented invention, along with a significant jump in the average number of claims in issued business method patents.  These effects are almost certainly a result of changes in examination practice at the USPTO, likely influenced at least in part by Bilski.

31 December 2016

Time to Abandon Concerns About the ‘Scintilla of Invention’ and Focus on What Really Matters

FocusInventive step is hard.  It really is.  I have worked with and around patents for nearly 20 years, the majority as a practising patent attorney.  I have been an inventor, I have studied, practised and taught patent law, and I have thought and written about patents and patent law for many years.  And I still think that inventive step is genuinely hard.  If anyone tells you otherwise they are either a liar or a fool.

Just stop and think for a moment about the job that the law of inventive step (or obviousness, nonobviousness – whatever your preferred formulation, the problem is substantially the same) is required to achieve.  Firstly, it is supposed to be technology-neutral, since inventions can be made using electronics, software, chemicals, biological molecules, natural and man-made materials, mechanical components, and more, individually and in combination, across all industries.  A better mousetrap, an improved mechanical lock, a new cancer medication, a stronger cryptographic security system and an advanced process for genetic manipulation must all be assessable under the one law to determine whether they are ‘inventive’ or ‘obvious’.

Secondly, the law of inventive step is expected to be objective.  Ideally, the answer to the question ‘is it obvious?’ is independent of the decision-maker and free from any subjective or value-based judgment.

Thirdly, inventive step is expected to satisfy policy objectives.  Whether it is the US Constitutional purpose of ‘promot[ing] the progress of ... the useful arts’, or the (generally less-explicitly stated) economic rationale in Australia and other jurisdictions, inventive step is the ultimate gatekeeper of the patent system.  After it has been established that an alleged invention lies in a field of patent-eligible subject matter, and is novel (i.e. not already known in the same form) determining whether it constitutes a sufficient advance to be worthy of a state-sanctioned exclusive property right is wholly the work of the law of inventive step.

This is important work.  If the bar to be cleared by the inventor is set too low, then we may make the mistake of granting patents on trivial developments that are not worthy of protection, thereby preventing others from making use of technology that should be freely available.  Conversely, if the bar is set too high we may fail to provide the necessary incentives for inventors, investors and industries to take risks in bringing new or improved products and services to market, building businesses, creating employment, and generating new economic activity and productivity improvements through technology.

And because it is so hard to satisfy all of these complex and challenging requirements, the law of inventive step has become very complex over the years, through the combined efforts of courts and legislators.  One particular creation of the courts that has received much critical attention over the years is the notion that all that is needed to support the grant of a valid patent is a ‘scintilla of invention’.  This sounds like it sets the bar pretty low.  However, although the Australian courts seem determined to hang on to the ‘scintilla’, my view is that under the current law it actually has no bearing on what is required to establish an inventive step.

In a sense, then, the persistence of the anachronistic ‘scintilla of invention’ in the case law should be (mostly) harmless.  However, so long as it continues to be cited by the courts, and raised by critics of the patent system as a significant issue, it is a distraction that gives rise to the risk that we will fail to recognise and address the real problems plaguing the law of inventive step in Australia. 

20 December 2016

The Productivity Commission on Patents – It’s All About ‘Value’ and ‘Quality’

TomeThe final report of the Australian Productivity Commission (PC) on its Inquiry into Australia’s Intellectual Property Arrangements (‘IP Report’) has now been released.  It is quite a tome, coming in at over 750 pages!  I wrote on previous occasions about the recommendation in Chapter 8 of the earlier draft report that computer software be excluded from patentability, and about appearing before the Commission to make submissions opposing this recommendation.

In view of this, the first point I want to note about the IP Report is that the PC heard what I, and a number of other contributors, had to say on this subject.  The draft Chapter 8 has been completely reworked in the final Chapter 9, and the proposed recommendation has been discarded.  In its place. the Commission proposes the more cautious course of action to allow the full impact of recent court decisions and other changes in the law to be assessed, and additional data gathered, to inform future studies and policy-making with regard to the role of patents in relation to computer-implemented innovations.

Other conclusions and recommendations of the IP Report relating to patents include:
  1. the addition of an ‘objects clause’ to the Patents Act 1990 (Chapter 7);
  2. a further raising of the inventive step standard, to equal or above the highest level in the world today (which, it is suggested, is that of the European patent system) (Chapter 7);
  3. requiring inventiveness to be reflected in ‘technical features’ of an invention and not, for example, in features ‘that seem trivial or aesthetic in nature, and thus are likely to do little to advance human knowledge or create knowledge spillovers’ (Chapter 7);
  4. raising and restructuring selected fees to discourage maintenance of ‘low-value’ patents (Chapter 7);
  5. abolishing the innovation patent (Chapter 8); and
  6. reforming the regime for granting extensions of patent term for pharmaceutical products (Chapter 10).
Chapter 10, dealing specifically with pharmaceuticals, is quite lengthy, and covers a range of issue that are not purely patent-related, such as data protection for biologics (there is no case, the Report concludes, for any extension to existing periods of protection) and ‘pay-for-delay’ arrangements (where it is recommended that the Government introduce a formal system for transparent reporting of settlement agreements between originating and generic manufacturers).

All of these recommendations, it should be noted, will ‘weaken’ the patent system, when viewed from the perspective of patent owners.  That is, they will make patents more difficult and costly to obtain, enforce and maintain.  Conversely, the PC would regard such reforms as ‘strengthening’ the patent system, in terms of its wider social and economic ‘value’.

I expect that some practitioners and users of the patent system (i.e. attorneys, inventors and applicants) will be bemused by many of the IP Report’s conclusions and recommendations, and perhaps attribute them to the rarefied approaches that we have come to expect from economists.  If so, then to some extent, at least, they may be correct.  But that is no reason to avoid trying to understand where the PC is coming from.

And where the PC is coming from is its perspective on ‘value’ and ‘quality’.  But that may not be ‘value’ and ‘quality’ as you know them.  When an economist uses these words, they usually mean something quite different from what a patent owner or patent attorney would probably understand them to mean, as I shall explain.

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