We are now in the tail end of the season where millions of America brave wintry weather, TSA pat downs, and slow airplane wifi to spend quality time with loved ones. If gingerbread cookies and holiday shopping get old, you simply need a short break from a Top Gear marathon, or you are sick in bed with a mall-induced flu, we’ve put together a little holiday patent reform round up. This post will focus on three recent developments aimed at reforming our patent system: (1) the USPTO’s efforts ad crowd-sourcing the search for prior art, (2) heavyweight technology industry players’ newfound interest in lobbying Congress to take action on software patent reform, and (3) a recent conference at a Silicon Valley law school seeking solutions to problems surrounding software patents.
After much hand wringing regarding the state of the patent system in America, the cogs of political, academic, and legal reform are slowly turning. Just last year, Congress passed the America Invents Act (“AIA”), the first major patent reform legislation in decades. Despite certain landmark changes, such as moving from a first to invent to a first to file system for patent grants, some wonder whether the AIA alone will have a substantial effect on the recent proliferation of patent troll lawsuits.
Tagged askpatents.com, btlj, htli, non practicing entities, npe, patent, patent litigation, patent reform, patent trolls, santa clara law, SHIELD Act, software patents, stackexchange
This post was co-authored by Marion Bergeret, Berkeley Law LL.M. Candidate 2013, and Babak Siavoshy, Teaching Fellow, Samuelson Law, Technology & Public Policy Clinic.
Last month the California Supreme Court heard oral argument in Apple v. Superior Court (Krescent), a consumer class action filed against Apple to contest the company’s collection of consumer personal information. The plaintiffs’ immediate target is online services like iTunes and the App Store, which they would like to see subjected to the same privacy laws as brick-and-mortar retailers. But the case may also have an impact on the privacy rights of customers using mobile payments apps like Square and Google Wallet.
At issue is the Song-Beverly Credit Card Act, a California law that prohibits retailers from asking for any “personal identification information” that is “unnecessary to the credit card transaction” as a condition for accepting a customer’s credit card payment. The Supreme Court must decide whether the 1971 Act, which was last updated in 2011, precludes “online” retailers from collecting customers’ personal information—including address and telephone number—when processing credit card transactions.
Amidst current discussions on the “problem” posed by software patents, David Kappos, Director of the United States Patent and Trademark Office (USPTO), recently delivered a speech defending the existence of such patents. Kappos argued that innovations in the software industry are no less worthy of patent protection compared to other inventions, and that the America Invents Act (AIA) has introduced administrative proceedings in the USPTO that will increase the quality of patents by weeding out overly broad ones that give monopolies to unworthy inventions.
The AIA introduced five administrative proceedings, giving authority to the newly established Patent Trial and Appeal Board (PTAB) in the USPTO to determine the validity of patents. These proceedings are: (1) post-grant review; (2) inter partes review; (3) transitional post-grant review for business method patents; (4) supplemental examination; and (5) derivation proceedings. Inter partes reviews replace the procedure of inter partes reexamination, while ex parte reexaminations are still in place and run parallel to these new proceedings. Among these, the first three types are of particular importance because they allow third parties to submit prior art. Accordingly to Director Kappos, for software patents, much of the prior art is “in the form of previously written software, which is difficult to find and more difficult to understand,” and “shifting terminology results in near-endless synonyms that frustrate even the most diligent searcher.” Thus, having such administrative proceedings allows those who have the incentive and resources––often competitors to the patent holder––to find and submit prior art. This blog post provides a basic overview of these three types of proceedings, examining whether they will contribute to solving the software patent problem.