A few weeks ago, I wrote What were they thinking: The world is your lawyer and talked about some issues with the way in which this program was set up. I concluded with So, I give them a high mark for taking an interesting approach, but almost a zero for execution. There is no transparency in the process, and while they say The best submission is guaranteed to receive the prize. There is no indication of how or when this is established and paid.
A couple of days ago I received an email from Patexia, the company running this program. In it James McArdle talks about many of the points that I made and clarified some other issues. I would like to, and have received permission to, replicate most of that email for you here.
You made a very important point: you're right that there are some difficulties with transparency in the judging criterion. We're working on making our judging process as clear as possible, but ultimately each submission and contest is different in some way, and it's impossible to create a perfectly universal judging criteria (in part because of complexities added by 102 [novelty] vs. 103 [non-obviousness] invalidation).
In addition, if you enter the contest, you will see that there is a questionnaire that you must answer as part of your submission. This questionnaire refers to the submission you're making and gives you a basic sense of what the judging criterion for the contest is like (though we don't judge the contest solely based on responses to the questionnaire, as I said, it's impossible to develop a perfect system for this process).
Between the two of these sources, we're hoping to give a sense of how we judge the contests, but given your feedback, I think we will work on making the process more clear. Perhaps something like a link on the contest page that says "How we pick the winners".
I should mention that Freescale is not behind this contest: they own the patent in question and would probably be unhappy to see it invalidated.
To your last point (that there is no indication of when the contest is paid), that was very valuable feedback. I'm sorry that wasn't clear. It should be included in the legal terms and I'll make sure that going forward we make that information more available, again perhaps a link or line of text on the homepage of the contest.
If you have any more concerns don't hesitate to email or call me and let me know. We feel that the patent process is very inefficient and we believe we can improve it by getting experts like yourself involved. We want Patexia to become a platform where experts come to be acknowledged and rewarded for their expertise while also helping to improve the patent system and drive innovation. If something about that platform isn't working, I like to know so we can fix it.
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It seems to me that large firms that are hiring several patent lawyers might do well to add temporary assignments that would cycle through engineering personnel to:
1. search for public disclosures that would invalidate competitors' patents, and
2. become more familiar with the patent system and what patents were present in their field of expertise.
I could not even dream that ALL of the patents in a typical engineer's fields of expertise could be found and documented in such a manner or even just known to a given engineer. However, being familiar with the flaws and weaknesses in the patent system also allows an engineer to better understand what and why he is documenting in his work.
It is my considered opinion that the problem today is that too much has been patented to allow patents to have anywhere near the effect they were intended by the US Constitution. Today, even the examiners are often just lucky if they can find the patent that would invalidate a given application. The use of inventor-specific terms and phrases, in a few cases that I observed while searching patents years ago, can and sometimes is abused to make the searcher's job more difficult by renaming a commonly described and otherwise commonly named item or process. This is in part why Microsoft's Design Patents, when coupled with Utility Patents, can be very helpful. Pictures or drawings that match are fairly easily correlated by examiners and juries. On the other hand, "manually operated ink applicator with spherical application element" is much more difficult to discern as a "ball-point pen". Further, features that are inherent in a prior patented design may be claimed in a different inventor's patent if the examiner cannot discern that he has been so manipulated. In this type of case, either the courts would sort it out or the assignee of the original patent might find it less expensive to pay the extortion of the manipulating inventor's assignee.
Yep, far from perfect!
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