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.
What's our experience with the USPTO? Er, how about slow as molasses in in January.
We filed a patent application in Oct. 2007 and did not get a review of it until Sept. of this year!
As is typical for 1st round through the system, several claims were objected to by the Examiner. For the 2 valid concerns the USPTO Examiner expressed we have clarified the (very substantial) differences and pretty much rebutted the rest of their objections cited as not even having anything to do with our application or methods described in it.
Now to see how long it takes for the re-examination....
"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.
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.
"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.
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.
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.
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.
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.
8 years to issue a patent and 750,000 application backlog, its high time patent office hire more employees and finish the work. Information looses its charm if not given at the right time. And patent industry makes huge money these days so whats the problem?
The bottom line is that the value of a patent is decreasing along with its usefulness. Most patents are really re-engineering to get around someone else's patent. The attempt to "re-engineer-proof" a patent is thus probably the reason for the marked increase in the number of claims.
The net effect is that the PTO gets bogged down. This does give large players an advantage, since when there are hundreds of patents for essentially the same idea with a slight twist, any one of those patents is only meaningful if it has been tested in court. As was pointed out elsewhere, a really new or novel patent gets through quicker. If your patent takes 8 years to issue, then it is far less likely that it could stand up in court anyway.
What's the cause of the backlog? Is it the efficiency or is it because of the # of attempted patents? For patent process, I would rather the office do a thorough study before granting it. There are just a bit too many patents that are not fallen into the category but that are attempted.
I found that a patent has most value in decreasing perceived risk for prospective investors, but needs to be supported by other risk-reduction factors like successful trial data, reference market feedback, and believeable ROI costings. However, all that supporting evidence is not of much interest to investors without obvious IP protection activity to provide the comfort factor, even if the patent itself is destined to be vapour.
Privatizing works best when there is an established market in which it's clear who is the customer, what they want, and what are the costs.
Issuing patents isn't one of those. Who is the customer of the patent system? The Constitution establishes the patent system specifically "To promote the Progress of Science and useful Arts". How would you set up incentives to guarantee that the privatized patent system would fulfill this goal. I have no doubt that privatized patent office would be very efficient in issuing a prodigious number of patents and clearing the backlog, but how would you guarantee their quality or positive effect on the industry and science?
It's true that the PTO should wake up and adopt some industry best practices, like providing readable patent documents rather than individual TIFF pages---but I don't see how they could delegate the policy without compromising the constitutional mandate for promoting progress.
przen you can download patent publications in PDF format from USPTO and many other providers, free of charge.
The only inconvenience is that you usually will need to enter one of those scrambled codes.
Hope that makes your life easier!
This is something frustrating why people are after patents, let all use their expertises and come up with something new. It requires too many things for one venture to get succeed. The nature is doing all this things but the "nature" have never asked for patent.
Kinnar - Patents were invented to encourage & reward humans to do all the things that nature doesn't do by herself.
If our ancestors had left it to nature, your photo wouldn't show us your nice shirt; you wouldn't have spectacles or a clean shave (or a photo). Of the people and companies who developed those things for you over the last 500 or so years, 99.9% did so with the protection of patents, and now you get the benefit.
You are right it requires many things for a venture to succeed, but this is why patent protection in the early stages is so important: the inventor/employer needs some comfort to balance the risk that all those things won't come together. Somebody needs to buy the computers and pay the engineers, or the great ideas will simply go to waste.
Great discussion anyway. It is unusual to see such a sane discussion on patents on the web!
The main problem is that such simple stuff can be patented at all.
They are just describing a simple method to use a centralised server instead of a gaming box at home. Actually the only reason it has not been done before is that neither the servers nor the communication lines were powerful enough to do this eight years ago.
Given the technology of today this is a nobrainer.
However as everybody else can patent their stuff at a similar level it is mandatory to get a patent for whatever people do just to make sure they're not blocked from their own idea.
Axel do you not realise that "given the technology of today" is a rather bogus starting point for knocking something invented and disclosed in a patent application eight years ago?
I didn't intend to make any assessment of the patent's quality: You're dead right that proper standards of inventiveness need to be established and upheld by the examiners. USPTO examination has been rather poor in past decades, IMHO, and this patent may be an example to illustate that. however, USPTO is nowadays likely to be too strict, which is just as bad, if not worse (Google 'post KSR', if you want further reading.)
Your last comment is misleading, however: patents are absolutely not mandatory to prevent other people patenting your own ideas: all you need to do is publish your idea to protect it from being patented by others. Companies that file patents also regularly use this 'defensive publiation' technique, for innovations that they don't want to patent, or that they deem are not inventive enough.
so many comments and not much time to read all of them. I surly know the importance of protecting the IP for tech industry. But if a single patent takes 8 or so years to get passed then i think we need some reforms to get things done faster.
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