Freesteel Blog » Further Surfware patent disclosure

Further Surfware patent disclosure

Tuesday, November 20th, 2012 at 5:22 pm Written by:

I had reason to consult some early and embarrassing 2005/2006 entries in this blog, specifically Patent Schmatent, Patent part deux, and Nothing happened.

These concerned software patent 7451013 applied for by Surfware which had just been published while I was at Euromold that year. After running around all excited for a few hours about how this theoretical threat had manifested into something real, I got told by one of the red shirted folks on the Esprit stand (to whom we were attempting to hawk our Adaptive Clearing algorithm) that there was a way to submit our evidence of prior art to the US Patent Office before the patent was granted.

We looked into this, but it seemed to involve a submission on just the right grade of paper, plus $150 in the appropriate format for the patent office to accept — no doubt some kind of hard-to-obtain currency bank bond that would have cost us $500 in the way of these things. For details, see CFR 1.99 Third-party submission in published application.

However, there was another way. Under CFR 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings:

Each individual associated with the patent owner in a reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding.

So we mailed a CD with some videos to their lawyers Akin Gump Strauss Hauer & Feld LLP.

…And didn’t hear anything back.

Not being a professional patent wrangler (my job is to write code that does something, not push papers around containing useless gibberish for the purpose of preventing other people from writing code), I didn’t know of portal.uspto.gov where you could see all the documents relating to the patent process.

And in among all these documents I found the following scan:

Hint: Maybe if you read exhibit (B), the Letter accompanying the CD, then the author and dates of publication of the files in exhibit (A) would not have been unknown. Dipsticks!

Just when you thought your opinion of patent attorneys could sink no lower.

Update: Filed under the It’s Worse Than You Thought department, 35 U.S.C. 122(c) states:

(c) Protest and Pre-Issuance Opposition. The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

The regulatory explanation is set forth like so:

The American Inventors Protection Act of 1999 (AIPA) contained
a number of changes to title 35 of the United States Code…

The USPTO interprets the provisions of 35 U.S.C. 122(c) as
requiring, rather than simply empowering, the USPTO to ensure that no
protest or other form of pre-issuance opposition to an application may
be initiated after its publication without the express written consent
of the applicant…

Following enactment of 35 U.S.C. 122(c), the USPTO revised 37 CFR 1.291 and 1.292 to prohibit third parties from submitting any protest or initiating any public use proceedings… To balance the mandate of 35 U.S.C. 122(c) that the USPTO establish “appropriate procedures” to ensure that third parties may not initiate protest or other pre-issuance opposition to an application after its publication… the USPTO promulgated 37 CFR 1.99 to permit third parties to submit patents and publications (i.e., prior art documents that are public information and which the USPTO would discover on its own with an ideal prior art search) during a limited period after publication of an application. However, 37 CFR 1.99 prohibits third parties from submitting any explanation of the patents or publications, or submitting any other information…

The USPTO considers any third-party inquiry or submission that is not provided for in 37 CFR 1.99 in a published application in which the applicant has not provided an express written consent to protest or pre-issuance opposition to be inappropriate…

I always did wonder why the avenue for challenging a patent application was so awesomely crappy.

Two things:

(1) It looks like we did exactly as much as we could, having found a loophole in this deliberate fortress of unaccountability.

(2) Anyone hoping that the legislative branch is going to clamp down on the patent excesses promulgated by an over-active judicial branch should be disappointed.

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