Amid the waves of high-tech progress, an ominous new phenomenon has emerged: the “submarine patent.” As the name implies, critics say, such patent claims sneak in undetected and could effectively torpedo technological innovation.
The pattern is ominous: A technology such as streaming video or voice over the internet becomes popular and is widely adopted by schools, colleges, businesses, and consumers. Shortly after this technology becomes widespread and firmly entrenched, an obscure company fires off a letter from its attorneys claiming to own the rights to the underlying technology. Usually, the ownership claims are challenged. Lawsuits are filed and lead to lengthy litigation. As the legal machinations drag on, the company claiming ownership makes a seductive demand: Pay now, before the lawsuits are settled, or face a much steeper fee if the legitimacy of the patent is upheld.
Critics of the U.S. patent system–including the Electronic Frontier Foundation (EFF), a nonprofit group of volunteers and legal experts working to defend consumers’ digital rights–say the system is ill equipped to deal with today’s rapid pace of technology innovation.
The problem is particularly acute in the software and internet fields, EFF says, where the history of prior inventions is so widely scattered and often is poorly documented. As a result, the group says, the U.S. Patent and Trademark Office has issued many excessively broad patents that threaten innovation and ultimately hurt consumers.
In March, Research in Motion–maker of the Blackberry wireless eMail device–agreed to pay NTP $450 million to resolve an ongoing patent dispute, according to the New York Times. NTP claims to own a patent covering the wireless transmission of eMail, and the firm’s only business is extracting licensing fees for this concept from other companies, the Times reported.
Acacia, C2, and Firepond are among 10 companies or individuals targeted by EFF in a campaign called Patent Busting, which aims to challenge overly broad technology patents by petitioning the U.S. Patent Office to reexamine them. And the group isn’t alone in its criticism of the patent process.
“There’s a very broad consensus that something needs to be done about patents, especially when it comes to software,” said Will Rodger, director of public policy for the Open Source and Industry Alliance, a group committed to the use, development, and sustainability of open-source software. “Large corporations feel that patents, instead of helping them, are harming them.”
Between 50 and 100 major patent lawsuits are launched each year, Rodger said, and this figure doesn’t include cross licensing, out-of-court settlements, or companies whose software development might be held up by a looming patent.
“Patents, like copyrights, are supposed to give incentives to invent,” Rodger said. Instead, the system has created a “patent thicket” and a “disincentive to invent.”
He added, “Now we have a situation where patents are being sought for mutual assured destruction.” Time and again, he said, companies–armed with large patent portfolios and the threat of fining each other millions of dollars for patent infringement–forcefully negotiate agreements with each other.
The result? The cost of litigation is passed on to the consumer–including schools. Plus, this flawed patent system harms innovation, creates fewer choices for consumers, and shuts down collaborative invention, especially among smaller companies, Rodger said.
Much of the problem stems from the quality of patents issued by the federal patent office–some of which preclude users and developers from freely using basic computer and internet functionality.
Companies are reaping huge profits from their patent claims. For example, Intergraph Corp. CEO and President Halsey Wise said on Jan. 21, after announcing a $141 million settlement with Hewlett-Packard Co., that his company has made $860 million in pre-tax income since 2002 by enforcing its intellectual property rights. Because of its patents, the company has received $10 million from Gateway, $225 million from Intel, and $18 million from Texas Instruments.
“Every single day, I see a new technology that is having trouble getting to market because of patent claims,” said Gary L. Reback, an attorney with the Carr and Ferrell LLP Litigation Practice Group in California. It costs at least $1 million to try a patent case, not to mention the additional costs incurred by settling out of court, Reback said.
Reback wrote an article called “Patently Absurd” for Forbes magazine in 2002, in which he described a situation where IBM lawyers reportedly approached Sun Microsystems and demanded that it pay IBM $20 million for infringing on seven patents. When Sun’s lawyers said they would fight these demands in court, IBM’s lawyers reportedly said, “Maybe you don’t infringe these seven patents. But we have 10,000 U.S. patents. Do you really want us to go back to Armonk [IBM headquarters in New York] and find seven patents you do infringe? Or do you want to make this easy and just pay us $20 million?” Sun decided to pay up.
But now, “it’s gotten so bad that IBM–a company that may be seen as a bad guy in this, because they keep stoking the U.S. Patent Office for patents–now IBM’s Linux implementation is being impeded by SCO Group,” Reback said in a telephone interview. Essentially, the monster is being eaten by its own spawn, he explained. (See “Suit threatens open-source movement.”)
SCO’s lawsuit appears to have prompted a change of heart for Big Blue. Earlier this year, IBM promised access to 500 of its software patents to open-source software developers. Opening up its patents, IBM said, will help foster innovation and encourage broader software interoperability.
Less than a week later, Sun Microsystems said it would give open-source software developers free access to 1,600 OpenSolaris-related patents from its own intellectual property portfolio.
“Addressing the patent system that is under siege, Sun’s pledge of open access reduces the quagmire for developers who previously had to walk through a minefield to avoid infringement and enables them to confidently produce derivative works without fear of reprisal or patent claims,” Sun said in a press release.
The Open Source and Industry Alliance says the goodwill of companies alone won’t fix the “quagmire” created by the U.S. patent system. Policy changes are needed.
Two reports have been published calling for patent reform–one by the U.S. Federal Trade Commission in October 2003, called “To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,” and another by the U.S. National Academy of Sciences in April 2004, called “A Patent System for the 21st Century.”
In June, U.S. Rep. Lamar Smith, R-Texas, introduced a bill called the Patent Reform Act of 2005 (H.R. 2795), which would implement many of the changes suggested in these reports. Though subcommittee hearings were held to discuss the bill’s merits, no further action had been taken as of press time.
Despite proposals to fix the patent system, some experts are doubtful that the necessary changes will be made.
“They may come out with tweaks and critiques of the patent system, but there won’t be any true reform,” said Dan Ravicher, executive director and founder of the Public Patent Foundation, which represents the public’s interest in patents.
He says patent office’s incentive to process applications needs to change. The office currently grants patents valid for 20 years to companies that apply for them and pass a three-pronged test: the idea has to be original and never done before (in the patent world, this is called having “no prior art”); the idea has to be non-obvious; and the applicant has to have done it and perfected it.
The office, Ravicher said, is paid through yearly appropriations based on the number of patents it issues–and therefore it has an incentive to process as many applications as possible. Also, there are no repercussions for errors made by patent examiners.
As result, the office has a reputation for issuing patents for whatever companies want, and the demand from companies is growing every year, Ravicher said. “Of course they are going to have people beating down their door to get patents,” he said. “It’s a huge business.”
Reback echoed this thought, saying: “The whole notion of the more patents, the better, is what got us into this mess in the first place.” He added, “The whole purpose of the patent is to promote invention. The purpose of patents is not to reward the inventor and shareholders.”
Others say the quality of patents is low owing to insufficient staff to accommodate the number of applications, as well as high turnover and a lack of training and knowledge of business practices.
The U.S. Patent Office “has been deluged with patent-filing applications,” said Mike Kirk, executive director of the American Intellectual Property Law Association, which organized a series of patent-reform town hall meetings last spring.
“It’s taking longer and longer to get patents through the office. It can take 100 months to get a patent,” Kirk said. That’s long time, he said, especially when you consider that the shelf life of most software is 18 months.
Experts say there are a number of changes to patent laws that would make it easier to challenge and overturn a overly broad patent.
Lowering the burden of proof required to challenge a patent from “clear and convincing evidence” to “a preponderance of the evidence” would be a big help, because clear and convincing evidence is much harder to prove. “There’s a presumption in patent law that once a patent has been issued, it is valid,” Ravicher said.
Software vendors are reluctant to research for existing patents because of the threat of willful infringement, Rodger said. “Lawyers are encouraging people not to do searches for patents, because you are triply liable if you knew about a patent but released the invention anyway,” he said. “The whole thing has just gone topsy-turvy.”
He concluded: “None of this was supposed to happen. Patents originally were only supposed to be awarded to really original thinkers.”
Cara Branigan, former associate editor for eSchool News, and Managing Editor Dennis Pierce contributed to this report.
United States Patent and Trademark Office
“To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy”
“A Patent System for the 21st Century”
Electronic Frontier Foundation
Open Source and Industry Alliance
Public Patent Foundation
American Intellectual Property Law Association