When Software Patents Go Bad
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When New York-based ActiveBuddy made it clear it reserved the right to enforce the controversial patent covering instant messaging bots, the move trained a harsh spotlight on the inner workings of the United States Patent and Trademark Office (USPTO).
ActiveBuddy was granted Patent No. 6,430,602, which covers the method and system for interactively responding to instant messaging requests, but the availability of several examples of prior art has not only poured cold water on the company's patent claims, it has turned the USPTO into the laughing stock of the software developer community.
The USPTO, the Commerce Department-run agency tasked with handling all trademark and patent filings, has long been ridiculed for issuing patents that are either "too broad" or "just horribly bad," in the words on one intellectual property expert.
"Software patents -- any patents for that matter -- are a critical part of our innovative society. People who are spending a lot of time and money innovating need to know they are not going to be copied as soon as they get into the marketplace. The problem we have, and it's a big problem, is that the right patents are not being issued," said Thomas Colson, CEO and president of IP.com, a company offering a novel approach to protecting inventors.
Colson is quick to defend the process of applying for and securing patents. In his mind, innovators and inventors who make big investments to develop new things should have some form of protection. But he is equally harsh in his criticisms of the USPTO, an agency he claims is "overworked and overburdened" by the increased rate of patent claims.
In the software/technology field especially, patent claims are a dime a dozen. In 1993, for instance, about 180,000 patent applications were filed with the USPTO. This year, Colson estimates that more than 350,000 claims will be filed, a "mind boggling" increase for an office that has not upgraded facilities to handle the upsurge in claims.
"Bad patents are what's wrong and what needs to be fixed. Bad patents are things that never should have been issued in the first place. The issue is, how do you work within the laws to make sure that overly broad patents aren't being issued," he argued.
At BustPatents, a site dedicated to exposing what it calls the "patenting frenzy of the Internet, bioinformatics, and electronic commerce," the list of software patents that have been invalidated either by the USPTO during a patent re-examination or by the courts (in litigation) reads like a page out of Mad Magazine.
The San Francisco-based BustPatents, which acts as a legal resource for software/technology patents, echoed Colson's claim that the USPTO is undermanned and overworked. "One of the reasons so many bad software patents (are issued) is that patent examiners do not have enough time and library resources to do their jobs," BustPatents said, adding that "strained conditions under which patent examiners do their jobs (lead to many patents of questionable quality being issued)."
The ActiveBuddy patent is just one example. ActiveBuddy founder Tim Kay, who is listed as an inventor in the patent win, had earlier claimed the company invented interactive agents (IM bots). "Anybody using his or her own tools (to make bots) is obviously using our technology without paying us to license the server, for example. We are a startup company and we have to protect out future. That's basically why we secured this patent," Kay said.
But botmakers laughed off Kay's invention claim, arguing that if USPTO examiners had simply done a Google query, the availability of prior art would have been striking. In an e-mail exchange with internetnews.com Jeff Bone said his former company, Activerse, developed and released an IM bot development toolkit called DingBot SDK in 1997-1998, more than two years before ActiveBuddy's initial patent filing.
"I was the CTO of Activerse during most of this period, and there's something particularly and personally galling about the egregious lack of due diligence exercised by the PTO in granting ActiveBuddy's patent," Bone argued.
IP.com's Colson agreed that the availability of prior art should be the first thing that patent examiners use to strike down applications. In order for something to be patentable, three things have to exist, Colson explained. "It has to be novel, it has to be useful and it has to be non-obvious," he said, noting that the majority of patent disputes surround the contentious 'non-obvious' requirement.