"OnLive has filled the global patent pipeline with a portfolio of hundreds of applications with thousands of claims"
Perhaps this is part of the problem. I don't think that the patent system was designed for people to flood it with applications. I don't know enough about OnLive to make a personal judgment on the validity of their claims, but I can't imagine that hundreds of patents are necessary to protect an investment.
It really doesn't matter how may examiners the PTO hires if us in Industry actively and aggressively overload the system.
I would agree that the USPTO needs additional funding though I think there is a widespread misconception about how Congress is funding the USPTO.
Congress is not lately in the habit of actually giving the USPTO money. Instead Congress allows the USPTO to keep a portion of what they earn. In fact, this year Congress will be conducting a "fee diversion" to the tune of $200 million.
But don't worry, I'm sure they will do something really useful with your fees.
You raise a good point Duane. It seems like most patents in recent years have a huge number of claims compared to what was common a couple decades ago.
I too wonder if sometimes the applicant and his or her attorney are pursuing a strategy to, as you so nicely put it, "actively and aggressively overload the system," in the hopes that an overwhelmed examiner will just say "let them fight it out in court" and just grant most of the claims.
As VP of IP and Innovation, my job entails identification of "invention," application and prosecution. Some of our patents issue in less than two years; others can take four or five. If you are in new area with little prior art, it can go pretty quickly. I would imagine something related to online gaming would take a lot of search time and reading. Anyone who has been intimately involved with patent prosecution knows that your initial application is going to result in Office Action rejections. This is a result of examiners who are not that knowledgeable seeing evidence of anticipation or obviousness because of similar terms in related claims; or applicants shooting for the broadest claims expecting to have to narrow them in subsequent responses and amendments. If OnLive filed for its patent eight years ago, then it could have been applying it to products almost nine years ago without jeopardizing its patentability. And, once the patent issues, OnLive could prosecute infringement from the time the application was published, approximately 18 months after filing. So, the time it takes for issue need not be a show stopper, if you know what you're doing.
"OnLive has filled the global patent pipeline with a portfolio of hundreds of applications with thousands of claims" You really can't blame them. They surely have invested a lot of money in their technology. In these days of rampant theft of intellectual property, coupled with the increased difficulty of catching and punishing infringers, they may believe they need all of these applications. I believe the problem has been caused in large part by the patent appeals court's lack of consistency and failure to understand the underlying nature of the patent process. That appeals court reverses around 50% of the Markman decisions it reviews and keeps getting whacked by the Supreme Court for making wrong decisions. No wonder the District Courts don't know how to apply the law any more. That certainly wasn't the result that was envisioned when the patent appeals court was created.
the patent in question, US7,849,491, is 15 pages long, has 5 independent claims, and 20 dependent ones. its published patent application had 3 independent claims and 17 dependent. These are pretty average sizes for a US patent, but if you read the two documents you see significant differences between the two. there was perhaps significant comment from other companies to the patent office about the application, which could be the source of the long time.
Normal patent prosecution involves only the government and the patentee/assignee. Third parties cannot participate. Currently, reexamination is the only outlet that allows third parties to participate in the patent-granting process.
Looking at the file wrapper for the underlying application, it's not clear why the prosecution of this application took so long. It was filed in 2002. The file was completed in 2003. Examination didn't begin until 2008 (this is exceptionally slow--even for the PTO). The file was assigned or reassigned multiple times to different examiners. If my math is right, it looks like the Patent Office is giving back almost 5 years of validity.
For more than 15 years a major part of my career has been involved with managing IP both as an inventor and as VP of IP for several companies.
It's really no surprise that patent 7,849,491 took a long time to issue - independent of the number of examiners who were serially assigned. With more than 100 patent citations it's a lot of work for anyone to get through all of the patents and their file histories, much less an examiner who may not have much experience with the field.
Its easy to have "hundreds" of patent applications on a world wide basis - each country may require a separate applications, although their are cooperation agreements between some of the historically most important countries. The problem for start up company is that there is no intrinsic value that investors will pay for in just a patent. A lack of sales combined with hundreds or millions of dollars in patent maintenance fees can spell the end of an early stage company.
I'm always troubled by calls to "reform" the USPTO because they often really give the advantage to the bigger companies, eliminating part of the monopoly that patents have embodied for more than 500 years.
In my career advising companies about patent acquisitions, I've found that the most economically valuable patents tend to be those that are in the twilight of their lifespan. Finding ways to assert these patents only becomes harder as time goes on - the simple patents tend to be expiring.
As a final note, the last portfolio that I was responsible for prosecuting and managing took less than 2 years from initial filing until patents issued. So, I can't complain either about my personal patents or corporate patent prosecution time.
It certainly appears that this patent was in a growing field in which the patent office was understaffed. That may be the root cause of the 1,874 days of USPTO delays (less 125 days of applicant delays) resulting in a patent term adjustment (extension) of 1,749 days. If OnLive has a history of massive filings, this patent wasn't one of them, it issued with modest 15 pages including 25 claims. By way of comparison, over the past 12 years, my 32 patents have taken an average of 3.7 years to issue (range was 1.2 to 7.6 years). These emerging technologies (more applications, less examiners) seem to take the longest.
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