[Patents] Re: [Patents] Importance of Publishing

[Gregory Aharonian srctran@world.std.com]

Sabine writes:
>I would like to stress that a very efficient way to prohibit anyone to
>get a european patent, is to publish the subject-matter of the desired
>patent before someone applies for it. Then the invention is known from
>the prior art, and nobody can get a patent for it.

The problem with this suggestion is that the European Patent Office,
much like the US Patent Office, does a poor job providing examiners
with the time and resources to actually find published subject-matter.
Thus too many bad software patents issue, especially in the US.

Greg Aharonian

P.S. Here is a brief study I did many years ago.  I suspect the results
wouldn't be too different today.



                     RELATIVE COMPARISON OF THE  EPO/PTO/JPO
                         SOFTWARE SEARCHING CAPABILITIES


     To compare the three Patent offices, I put together a sample of 250
PCT applications dealing with software patents.  These were PCT applications
published in 1994, based on patents filed in America, Europe and Japan in late
1992. PCT applications allow you to preserve your US filing date when applying
for patents in other countries (and similarly for those of you filing patents
in your home country).

     If you file in the US, and have the US PTO conduct the PCT search, it
costs $420, but if you have the EPO conduct the search, it costs $1537.  So
where your PCT application search done is important.  The EPO has a better
reputation for doing searches, but at least for software, this is not very
warranted.

     For the 250 PCT software applications that I examined, PCT searchers on
the average found 1.2 non-patent software prior art references and 4.0 patent
software prior art references (comparable to US frontpage prior art citations,
all of which will be reviewed in the second part below).  110 of the searches
were done by the EPO, 88 by the PTO, and the rest by the Japanese, Swedish and
Australian patent offices (whose averages were similar to the EPO and PTO).

     For the EPO, EPO searchers found an average of 2.0 non-patent software
prior art references and 3.0 patent software prior art references, while the
PTO searchers found an average of .66 non-patent software prior art references
and 5.4 patent software prior art references.  Compared to the many dozens of
prior art references that should have been found, there is no appreciable
differences between the EPO and the PTO when it comes to software prior art
searching capabilities.

     The Patent offices tend to do best finding patents in their sphere of the
world - EPO tends to cite EPO/WO patents, PTO tends to cite US patents, and
JPO tends to cite Japanese patents, and do find decent numbers beyond those
cited in the application.  They all do worse when it comes to finding patents
from other countries.  This, and the fact the US finds more patents, is easily
explainable: the examiners have free unlimited online searching use of their
own patent databases and have the luxury to search and find patents (and that
PTO searchers find more patents than EPO searchers is due in part to the
larger US patent database (APS) and easier access to APS for PTO searchers).

    Some of the PCT searches done by both the EPO and the PTO exhibit a rather
cavalier attitude towards the applicants fees.  For example, one company sent
in three applications for software technology that dealt with GUI editors and
object manipulators (WO94/27227, 27228, 27229).  Three applications, three
$1537 search fees, applications for which there are tons of non-patent prior
art (for example, one application dealt with a GUI for manipulating objects
between a desktop and a document).  The EPO did all three searches, and
returned the same results for all three searches - 5 patents, 5 technical
papers.  Given that there are dozens and dozens of papers on the subject, a
careful search should have been able to find different references for each
application.  Other suite filings searched by both the EPO and the PTO exhibit
similar patterns - the same search results for related applications. Unless
there was a discount somewhere, this is unfair to the applicant.

     The US PTO is just as bad with software.  For example, consider PCT
application WO 94/14127 titled "Asynchronous system and method for electronic
data management, storage and communication", a typical distributed processing
software patent application.  Myself, I would have used a variety of keyword
search strategies on APS to find relevant prior art, and the same strategy on
something else, such as Dialog.  Here is the entire search session done for
this PCT application (which surprisingly was listed in the International
Search Report verbatim, as the erroneous L7 query shows):

        APS
        => d his
            (FILE 'USPAT' ENTERED AT 15:06:59 ON 29 JAN 94)
        L1       414 S SHARED (3A) STORAGE
        L2      2888 S ARCHIV?
        L3        15 S L1 AND L2
        L4      5918 S (ENCRYPT? OR COMPRESS?) (3A) (DATA OR FILE#)
        L5     17042 S (SHARED OR COMMON) (3A) (STORAGE OR DISK# OR DRIVE#)
        L6       115 S L4 AND L5
        => s l2 and 6
             1576869 6
        L7      2786 L2 AND 6
        => s l2 and l6
        L8        10 L2 AND L6

Yes, that was the entire $420 PCT International Search done by the PTO - a
minimal prior patent search and a non-existent prior non-patent search. There
are entire conferences and books devoted to just this subject - none cited.
All that was done was a quicky one-pass keyword search on APS, when APS use
is free to the examiner.

     Thus, for software there are no appreciable differences in searching
skills by the various Patent offices around the world, and I suspect much the
same for other areas of technology.  The national governments are not insuring
that their Patent Offices have the resources to handle software prior art.


                  ABSOLUTE CAPABILITIES OF THE PATENT OFFICES
                       WITH NON-PATENT SOFTWARE PRIOR ART


    Average issued US software patents cite 8 US patent prior art references,
which with additional prior patent refernences from PCT searches is near the
dozen or so prior patent references that I find for the application prior art
searches that I do.  This is not unexpected, given that examiners have free
unlimited searching access to their own patent databases.

    For non-patent prior art, six numbers to keep in mind: .66, 1.2, 2.0, 2.1
and 24 and 48.  The first three numbers are the above cited averages for PCT
non-patent prior art searches done by the EPO and PTO separately and together.
The fourth number, 2.1, is the average number of non-patent software prior art
references in over 2000 software patents from 1994, which as the latest sample
of US software patents, most likely holds true for all 15,000 US software
patents since 1970.

    24 and 48?  24 is the number that a good prior art search for a patent
application should find on the average, while 48 is the minimum number that a
killer prior art search for an infringement defense should find.  I base these
numbers on many things, but two reasons in particular. The first is that these
are numbers typical of the number of non-patent prior art items that I find
when I do searches.  Admittedly I have better tools, skills and resources
(being in Boston) than most patent examiners, but I am trying to establish a
limit.  The second reason is that these numbers are those typically found in
studies of citation references (check out the journal Scientometrics).  For
example, one software-related IEEE journal did a study of bibliographic
references in over 2000 papers published in their journal.  Here are the
yearly averages over the same time period that software was being patented
in the US:
                        YEAR    Average No. of References
                        1971            10.7
                        1972            12.0
                        1973            12.1
                        1974            14.8
                        1975            15.9
                        1976            14.2
                        1977            17.6
                        1978            14.1
                        1979            16.2
                        1980            18.4
                        1981            19.7
                        1982            18.7
                        1983            25.9
                        1984            19.1
                        1985            25.4
                        1986            21.0
                        1987            25.2
                        1988            29.3
                        1989            26.8
                        1990            26.0

Much like the number and relevance (say the 'Y' PCT category) of my searches,
as of the 1990's, references in this journal (and I suspect similar figures
for other IEEE and ACM journals) averaged over two dozen references. Further
the averages over the last twenty years reflect the general growth in what
has been published about software.  Keep in mind that as of the 1990's, there
are probably over 500,000 software prior art items (articles, theses, books,
product literature) which for about 50 software categories means that there is
lots of potential non-patent prior art.  That the IEEE, myself and other
professional searchers find many dozens of non-patent prior art items is both
mutually-consistent and statistically likely (if one could determine the ideal
distributions of non-patent prior art for various software applications). So
that's the 24 number.  The 48 number is when you are being methodical (an
infringement defense search or a retrospective journal article), and is closer
to the average size of the total prior art that should be considered by an
examiner when doing the patent novelty analysis under ideal conditions.

     Yet during this time period, the average number of non-patent prior art
references found by PTO examiners and searchers ranged from less than one to
the 2.1 figure for 1994.  Worse is that half of all issued 1994 US software
patents cited no non-patent prior art on the front page, and some patents
cited no prior art of any form.  For example, IBM got a patent in March of
1994, 5,299,123, appropriately titled "Method for allowing retrieval of
documents with user defined search descriptors" that cited no prior art of
any form on the front page.  We are supposed to believe that there is no prior
art for this database searching concept????

     That many broad and/or trivial software patents have been issued should
be no surprise - the examiners just didn't have access to relevant prior art
to make decisions.  Combined with access to prior patents, I estimate that on
the average software patent, the average examiner has 20% of the relevant
prior art. This is inadequate and unfair to applicants and the industry alike.
For example, consider the PCT search results for Compton's multimedia patent
that has been rejected after reexamination by the PTO (where the examiner
cited dozens and dozens of references - a number in the range of the IEEE
and my figures), done in 1991:

        "Visual Information Retrieval: Browsing Strategies in Pictorial
        Databases", 12th International Online Information Meeting, 1988

        "Video Disc Dictionary System"
        IBMTDB, 25 8, 1983

        "Integrating Optical Videodisc and CD/ROM Technology to Teach
        Art History", J. Educational Technology Systems, 1988

        "The New Electronic Encyclopedia", Reference Books Bulletin, 1989

        "Toward the Development of Interfaces for Untrained Users"
        Proc. of the 48th ASIS Annual Meeting, 1985

        "Where the Heck Am I", Incider, October 1989

That's it.  Entire IEEE and ACM conferences missed, a variety of academic
research efforts missed, and a scattering of journal articles and books.
And this search is actually one of the better ones, in that it found 6
non-patent prior art items, 6 being greater than .66, 1.2, and 2.0.

    One could even argue that it is impossible for examiners to do decent
software non-patent prior art searches.  First, the PTO pays for commercial
access to databases such as Dialog (where plenty of software prior art can be
found).  However, as many studies show, searchers react differently when they
do searches on free access databases and for-fee access databases, no matter
what permissions they are given.  Why do PTO examiners do a great job finding
prior US patents?  Their access to APS is for free, so they can sit at the APS
workstations and search at their leisure, no clocks ticking in their minds.

    But even if access to Dialog and other databases was free, there is a
second problem.  A decent PCT search category 'A' level reference (at least
somewhat related) done on Dialog (for example the INSPEC database) would on
the average return about 100 hits.  For myself, I would then goto a local
university library (such as MIT or Stanford, which admittedly are two of the
best in the country) and look at the 100 hits to find the 24 to 48 I would
then cite to my client.  But I have to look at the entire article to make 
such a decision - an abstract is useless.

    But given the small numbers of books, journals and CDROMs available in
Crystal City to the PTO software examiners and searchers, they have to order
copies of these papers from one of the document delivery services.  At an
average cost of $10, this means that an examiner would have to spend $1000 to
obtain the materials in which to find the relevant prior art to cite to the
applicant.  Given that $1000 is greater than the US patent application fee,
and the PCT search fee, I doubt highly this happens very often, and that this
is one more psychological block affecting an examiner's searching style. Why
waste time doing a search if you can't examine the search results?

    Given that a larger scale statistical analysis of issued US software
patents, file wrappers, PCT applications and IEEE/ACM journal histories will
not return numbers too different from .66, 1.2, 2.0, 2.1, 24 and 48, there
is a good chance that for over 75% of all issued software patents around the
world, that an insufficient novelty analysis was performed, and that the
value of such patents acquired at a cost of many thousands of dollars is 
questionable, if not marginal.  At an average cost of over $5,000 dollars to
acquire a US software patent, the 10,000 software patents issued in 1994 and
1995 represent an economic activity between $50,000,000 and $100,000,000.
Can we not demand that non-patent prior art capabilities be more reflective
of these large amounts of money?  Given the importance of software to the
economy, should not Congress first stop dipping into the PTO's till, and
second should not Congress provide extra money for special problems like
software prior art?

                              ====================



Greg Aharonian
Internet Patent News Service