BC Law IPTF Blog

Recently on Bill Heinze’s I/P Updates, I read about a note published by George Mason authors entitled “Improving Patent Examination Efficiency and Quality, An Operations Research Analysis of the USPTO, Using Queuing Theory“. 17 Fed. Cir. B. J. 133, 163 (2007).    The authors were attempting to validate validate the PTO’s concern with excessive continuation filings and proposed new rules regarding continuations.  The model, which incorporated feedback and branching of applications, was based on two assumptions:

1. A priority queue processes higher priority items first, giving them a shorter queuing delay – but at only at the expense of longer queuing delays for lower-priority arrivals. Since the USPTO gives higher priority to RCEs and continuing applications than to regular new applications, large numbers of RCEs and continuing applications should result in disproportionate waiting times for regular new applications.
2. At the very least, a limit on the number of continuing applications would be desirable because continuing applications can produce multiple generations of unlimited numbers of high priority offspring. RCEs and multiple non-final office actions both contribute to the risk of starvation, but pose less potential risk than continuing applications because they do not produce parallel offspring (branching feedback).

Surprisingly, the study found that continuing applications were not the primary cause of congestion of patent applications at the PTO.  According to the model, the excessive number of non-final rejections per application was the main culprit. The non-final rejections in each round of prosecution exceeded by far the number of second and later RCEs and continuation applications.   Thus, limiting or prohibiting successive generations of RCEs and continuation applications as the only change will not be effective in reducing the backlog.  Instead, reducing non-final rejections per application would be more effective because it would relieve the PTO of its primary burden on the system. 

The note went on to say that hiring additional examiners is not an effective solution because the PTO would need to exponentially increase its personnel in order to keep up with its load of patent applications.  Instead, a policy change addressing the source of the problems is required.

 Thus, it looks like it is time for the PTO to revise its rules, which have already been brought into question by Tafas v. Dudas, described in my blog from Nov. 2.  Using research data and mathematical models may prove to be a valuable aid as the PTO leadership considers its next move. 

It seems like a lot of law school students come to the IPTF thinking that they want to be “intellectual property lawyers.” But the concepts of IP bleed over into a lot of areas. For example, I’m helping a partner write a presentation on trade secrets; but neither of us are IP lawyers. And then what I’ve learned about trade secrets has helped me in writing up a non-competition agreement within a corporate acquisition.

So I think that when folks come in with an interest in IP they shouldn’t limit themselves to pure patent practice, but just leverage those interests into making an informed impact in broader areas that overlap with IP. It opens a lot more options for jobs, too.

Today SCOTUS finally handed down its decision in KSR v. Teleflex and weighed in on the nonobviousness standard. Writing for a unanimous Court, Justice Kennedy, as expected, rejected the Federal Circuit’s current test for nonobviousness - whether there was a teaching, suggestion, or motivation (TSM) to combine prior art references. The TSM test does provide helpful insights into the nonobvious inquiry, however, that does not demand the application of a narrow and rigid standard. Under the new standard the court must determine whether the is more than a predictable use of the prior art elements according to their established functions. Just a preliminary post. More to come.

The New York Times is running an article on the man and the company behind sudoku. Interestingly, the brain power behind sudoku, Mr. Kaji, wasn’t able to make much money because he didn’t trademark the name “sudoku,” but because the IP wasn’t protected he feels that popularity of the game exploded:

While no one knows how much revenue is generated by the global sudoku business, most agree it has easily topped $250 million over the last two years from an estimated 80 million devotees. The New York Times syndicate provides a variety of logic puzzles, including sudoku, kakuro and others, for newspapers and Web sites around the world.

Nikoli received only a sliver of that money. Mr. Kaji says his private company, with just 20 employees, had annual sales of about $4 million.

Sudoku’s popularity in the United States caught Mr. Kaji by such surprise that he did not try to get the trademark there until it was too late. As a result, Nikoli receives no royalties from sudoku-related sales overseas by other publishers.

In hindsight, though, he now thinks that oversight was a brilliant mistake. The fact that no one controlled sudoku’s intellectual property rights let the game’s popularity grow unfettered, Mr. Kaji says. Nikoli does not plan to trademark other new games, either, in hopes this will also help them take off.

“This openness is more in keeping with Nikoli’s open culture,” said Mr. Kaji, who sat on a sofa in his Tokyo office among pillows adorned with printed faces of racehorses. “We’re prolific because we do it for the love of games, not for the money.”

While this might just be a good marketing face to show, it’s core aligns with the philosophy of open source, copyleft, GNU, etc. If you don’t control the IP, a product has a chance to explode. If you do it for the love of the product, then maybe your reward will be greater in the end.

Here’s the relevant purpose regarding copyright from our publication agreement:

1. I, ___________________, hereby represent and affirm that I am, or am authorized to act on behalf of, the copyright holder[s] of the Article, that I submit the Article for publication to the Forum, and grant the Forum a perpetual, world-wide, sublicensable, irrevocable, non-exclusive license to publish the Article electronically on the Forum, to reprint the Article or portions thereof in any medium now in existence or later invented, to cause the Article to be republished on electronic legal research services, including but not limited to LEXIS and Westlaw, to excerpt from the Article, to distribute, reproduce, transmit, and display the Article, to add hypertext links, graphics, images, and formatting to the Article, and to use the author’s name and likeness in promoting the Forum.

2. The Licensor retains the right to register, in the Licensor’s name, the Licensor’s copyright in the Article with the appropriate governmental office.

3. The Forum agrees to include in its publication of the Article, a notice of the Licensor’s copyright ownership. Notice will be in the form, “© YYYY [Licensor’s name]. Published with permission of the copyright holder.” Upon the Licensor’s request said notice will also include a restriction on use by guests to the Forum.

4. This agreement does not require that the Forum be the first publisher of the Article.

5. If, after the Forum’s publication of the Article, the Licensor subsequently causes the Article to be published, the Licensor agrees where reasonable to include or have included in such publication an acknowledgment in the following format: “Reprinted from the Intellectual Property and Technology Forum at Boston College Law School, YYYY B.C. Intell. Prop. & Tech. F. MMDDXX.” and, if published in electronic format, a hypertext link to the Forum. (YYYY B.C. Intell. Prop. & Tech. F. MMDDXX. is the chronological citation assigned the article during publication on the Forum.)

I wonder if we should just instead consider incorporating a Creative Commons license–or option for other licensing if appropriate–within our license? Here’s Lawrence Lessig’s quick take on the whole copyright licensing of law journal articles.

Larry Sanger, one of the founders of Wikipedia, has launched a pilot site to rival Wikipedia: Citizendium:

The Citizendium (sit-ih-ZEN-dee-um), a “citizens’ compendium of everything,” is an experimental new wiki project. The project, started by a founder of Wikipedia, aims to improve on that model by adding “gentle expert oversight” and requiring contributors to use their real names.

Sounds look a good idea–but they’re late in the game, late on the meme. It just reminds me of so many examples in technology where “better” just doesn’t win. Mac lost to PC. Friendster lost to MySpace. Et cetera.

The beauty of Wikipedia is ease of participation–anyone can do it. But to use Citizendium, I *have* to register with my name and seek the approval of a “gentle” guide? I just don’t think they can achieve the growth that will drive it off the ground the same was as PCs and MySpace. Wikipedia wins because of its growth–I have a better chance of finding at least *something* there that I can’t find in an encyclopedia.

Maybe Citizendium should just grab all the Wikipedia content and use that as their base. It’s like using a public domain dictionary and adding all your new words to it or fixing the old definitions. That way, they have the size and content, and they can work at their slow growth rate to complete their content in quality.

I remember that Nupedia (the Wikipedia predecessor) had an editorial process involved–but they were just trying to streamline articles for releases. And they ditched this for the anti-editor process involved with Wikipedia.

I’m not a total nay-sayer. I think that CZ could become a valid rival. But it serves a different purpose than Wikipedia. Wikipedia is like having access to the “crowd”–like being able to talk to friends, friends of friends, etc.–whereas CZ will be more like being able to e-mail a professor who may have a response. With the former, I will probably get an answer, but I don’t know how correct, but if I ask enough I’ll probably get something close enough to correct. For the latter, I might not get a response, but I know the response will be right. This makes a great opportunity for a meta engine that searches CZ first and fills the gaps with Wikipedia.

See CZ’s thoughts on this Big Question on their blog.

Somewhat related to my last post (just minutes ago) on developing rule of law in post-conflict situations, I reflect upon a conversation I had after a rugby match between BC Law and Yale:

I was talking with a Yale graduate student in archeology about his work in the Mediterranean and Eastern Europe. From my own experiences in East Africa, I always wondered about how people go about and research ancient history in places so unexplored such as East Africa.

He basically confirmed my suspicions and said, “You just go into towns and talk to people and ask about their grandparents.”

And so I believe that in developing reforms such as rule of law (and especially IP-related law in terms of corporate investment) you really need to go in and figure out what’s been going on per a cultural basis–and that needs to happen not by asking theorists or by positing your own assumptions as to how things should be, but rather talking to the people and seeing what their thoughts are first.

In my experience, the thickest barrier between this type of anthropological and humanistic work and the work desired of the “development set” is that you have to get “down and dirty” with the culture. Unfortunately, many of the “development set” find it difficult to sit in a mud hut sitting on seasons of cow shit and work through the culture into understanding what has happened before their Nikes have touched the ground.

But to develop legal systems it takes time to figure out what has happened before–socially, culturally, and psychologically–for modern patterns and practices to take hold.

From Boing Boing, with a link to the actual patent application.

Here’s the abstract of the patent application:

Interestingness ranking of media objects
Media objects, such as images or soundtracks, may be ranked according to a new class of metrics known as “interestingness.” These rankings may be based at least in part on the quantity of user-entered metadata concerning the media object, the number of users who have assigned metadata to the media object, access patterns related to the media object, and/or a lapse of time related to the media object.

Boing Boing mentions that there may exist prior art in this area. The comment says: “There’s a very large number of papers in the image processing and collaborative filtering areas that all define various notions of relevance, interestingness, salience, or novelty. A specific innovative technique might be patentable, but not the general idea of computing how interesting an image or media object is to a person or set of people.”

In Ethan Zuckerman’s blog: …My heart’s in Accra » A bitter fight brewing: Ethiopia and Starbucks clash over coffee:

Last year, the Ethiopian government filed trademark applications to protect the names “Sidaro”, “Harar” and “Yirgacheffe” - the hope was to prevent unscrupulous coffee dealers from buying inexpensive beans from other countries and selling them as “Sidaro”, whether or not they emerged from the region.

Unfortunately, the USPTO (US Patent and Trademark Office) rejected Ethiopia’s claims to these three names.

* * *

The absurdity of the situation, as I read it, is the need for a very poor nation to protect “intellectual property” they’ve owned for centuries in an expensive foreign market. The coffee situation makes me think of the notorious “turmeric patent“, where Indian scientists and attorneys had to present ancient Sanskrit manuscripts to overturn a US patent that introduced the “novel” use of turmeric for wound healing, a process used for thousands of years in India. The patent was overturned, but it’s a huge barrier for poor countries to have to litigate bogus patents in US court.

More controversy regarding indigenous property rights clashing with Western legal systems.

It’s Starbucks’ right to secure the patent in the U.S.–they applied for it first. Ethan is right that the problem is more with the USPTO than with Starbucks. There should, rather, be a certification system for marking beans from regions as being from those regions–this is being proposed now. This type of system is used already for apples and wines, among other products.

But can you trademark a name of a place? Could I trademark the name “France?” Have, for example, Native American tribes been able to protect use of their tribal names from being owned by products? The Crazy Horse malt liquor suit was settled. The case of some Native Americans suing the Washington Redskins for their trademark of their disparaging name is still alive. Pro-Football, Inc. v. Harjo, 415 F.3d 44, 46 (C.A.D.C. 2005).

Are we forced to extra-judicial resorts in resolving these types of issues? Everyone seems to be pushing for settlement and policy issues. Should the courts step in and take a stand?

One of the most potent areas for innovation has always been interoperability with existing inventions. As a small example, in the ‘80s some enterprising entrepreneur came up with a cup holder which could fit next to the driver’s seat in most cars.

Theoretically, such an invention benefits everyone. Consumers get an improved product: a car with a cupholder. The entrepreneur exploits a previously unoccupied market niche – creating new value. And, the owners of the existing technology, in this case, the car manufacturers, sell more cars because their product has been enhanced.

The owner of the already existing technology, however, is not always welcoming of interoperable products. Sometimes a manufacturer bundles a proprietary technology with a previously existing technology in order to control not one but two markets. In such a case, the manufacturer is not very happy when an enterprising inventor creates an interoperable technology – and jumps in on his or her game.

Let me give a famous example. In Lexmark Intern. v. Static Control Components, Lexmark, a computer printer manufacturer, designed its printers so that only Lexmark’s printer cartridges could be used with its printers. 387 F.3d 522 (6th Cir. 2004). Then, Lexmark sold the printer cartridges for high prices. In order to use a Lexmark printer, the consumer had to pay for one of Lexmark’s high-priced printer cartridges. In this way, Lexmark leveraged control of the printer market into control of the printer cartridge market.

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