What a Difference a Format Makes. 24 Little Bytes
May 5, 2023
Note: This essay is the work of a real and still-alive dinobaby. No smart software involved, just a dumb humanoid.
Lawyer Carl Oppedahl has strong feelings about the Patent Office’s push to shift applications from PDF format to the DOCX format. In his most recent blog post on the subject he considers, “How Successful Have USPTO;s DOCX Training Webinars Been?” His answer, in short, is not very.
Oppendahl recently conducted two webinars for law offices that regularly file clients’ patent applications. He polled his attendees and reports the vast majority of them felt the Patent Office has not done a good job of communicating the pros and cons of DOCX filing. More significant, though, may be the majority of attendees who say they will not or might not submit filings in DOCX in the future, despite the $200 – $400 fee for stubbornly sticking with PDFs. In our experience PDFs are a PITA, so why is there such a strong resistance to change?
I sat through a recording of Oppendahl’s first webinar on the subject, and if you believe his account there are actually some very good reasons. It is all about protecting one’s client. Oh, and protecting oneself from a malpractice claim. That could be worth a few hundred bucks (which one might pass on to the client anyway.) His executive-summary slide specifies:
“DOCX filing puts you more at risk than PDF filing
PDF filing:
*You can protect yourself tomorrow or next month or TYFNIL [ten years from now in litigation].
*The Ack Receipt Message Digest allows you to prove the PDF file you preserved is the same PDF file that was uploaded to the PTO.
*You get an audit trail.
DOCX filing:
*You cannot prove what DOCX file you actually uploaded.
*The PTO throws away the DOCX file you uploaded (D1) and only keeps their manipulated version (D2).
*There is no Ack Receipt Message Digest available to prove the DOCX file you preserved is the same DOCX file that you uploaded to the USPTO.
*The USPTO destroys the audit trail.
*There is an Ack Receipt Message Digest relating to DOCX. It does not match the file you uploaded (D1) so you cannot use it to prove what you filed. It does match the file D2 that became authoritative the instant that you clicked ‘submit,’ so TYFNIL it permits the infringer to prove that you must have clicked ‘submit’ and you agreed that your uploaded DOCX file D1 was not controlling.
*In other words TYFNIL if you try to point to what you say you uploaded, and you try to say that this is what should have issued in the patent the Message Digest will serve to say that you agreed that what you uploaded was irrelevant to what should have issued in the patent. The Message Digest serves to say that you agreed that the patent should issue based on what was in that manipulated version D2.
*In the DOCX filing system, the Message Digest has been repurposed to protect the USPTO and to protect infringers, and no longer protects you, the applicant or practitioner.”
Like I said, strong feelings. For details on each of these points, one really just needs to listen to the first 45 minutes of the webinar, not all one-and-a-half hours. A key point lies in that D1 versus D2 issue. The D2, which submitters are required to verify, is what emerges from the other side of the PTO’s proprietary docx validator software. According to Oppendahl, that software has been proven to introduce errors, like changing a mu to a u or a square root sign to a smiley face for example. For patents that involve formulas or the like, that can be a huge issue. To avoid such errors being set in stone, filers (or their paralegals) must check the submitted document against the new one character by character while the midnight EST deadline looms. Not ideal.
Another important issue is the value of the Ack Receipt Message Digest facilitated by PDFs but not DOCX documents. The technology involves hash functions and is an interesting math tangent if you’re into that kind of thing.
So why is the Patent Office pushing so hard? Apparently it is so they can automate their approval process. Automation is often a good thing, and we understand why they are eager to speed up the process and reduce their backlog. But the Patent Office may be jumping the gun if applicants’ legitimate legal standing is falling through the cracks.
Cynthia Murrell, May 5, 2023
RightHub: Will It Supercharge IP Protection and Violation Trolls?
March 16, 2023
Yahoo believe it or not displayed an article I found interesting. The title was “Copy That: RightHub Wants To Be the Command Center for Intellectual Property Management.” The story originated on a Silicon Valley “real news” site called TechCrunch.
The write up explains that managing patent, trademark, and copyright information is a hassle. RightHub is, according to the story:
…something akin to what GoDaddy promises in the world of website creation, insofar as GoDaddy allows anyone to search, register, and renew domain names, with additional tools for building and hosting websites.
I am not sure that a domain-name type of model is going to have the professional, high-brow machinery that rights-sensitive outfits expect. I am not sure that many people understand that the domain-name model is fraught with manipulated expiry dates, wheeling and dealing, and possibly good old-fashioned fraud.
The idea of using a database and scripts to keep track of intellectual property is interesting. Tools are available to automate many of the discrete steps required to file, follow up, renew, and remember who did what and when.
But domain name processes as a touchstone.
Sorry. I think that the service will embrace a number of sub functions which may be of interest to some people; for example, enforcement trolls. Many are using manual or outmoded tools like decades old image recognition technology and partial Web content scanning methods. If RightHub offers a robust system, IP protection may become easier. Some trolls will be among the first to seek inspiration and possibly opportunities to be more troll-like.
Stephen E Arnold, March 16, 2023
Patent Success 2021
February 23, 2022
Everyone should know that a patent does not mean a product or service will emerge. Some patents are designed to create a platform from which to launch litigation. Some patents — notably those of policeware vendor SafeXai (once upon a time Banjo) — are designed to show off. The league table showing who is numero uno in patents is located on the IFI Claims Web site. Here’s a test question? What country’s organizations dominates the Top 10 in the Patent Derby? Choose one from this list:
[ ] Peru
[ ] Monaco
[ ] Iran
[ ] China
[ ] USA?
Give up? China.
Stephen E Arnold, February 23, 2022
Is Patent Law Transparency Is an Oxymoron?
November 18, 2021
Here’s a quote for you:
patent examiners were being guided to flout the Supreme Court.
Who is writing this? A crazed and unappreciated patent attorney? A mechanical engineer who thought working on patents would be fun? A zonked out MBA who thought that cutting and pasting from random patents would result in an award?
Nope.
The statement comes from the Public Interest Patent Law Institute. You can read the article with that statement on the Piplius Web site or just click this link: “Patent Office Secrets Revealed!”
I have looked at a handful of patents, and I thank my lucky stars for blunting my interest in becoming a legal eagle. But even a clueless person like myself marvels at some of the patents granted. Let me cite one example. Banjo (now SafeX) went on a patent filing spree. Some of those patents explain the fancy math used in the Banjo / SafeX system. Does the patent cover the information in those novel inventions? My reaction is, “What the heck?”
The Piplius (I love that made up word) write up says:
The secret guidance concerns the application of the part of the Patent Act that prohibits patents on abstract ideas, laws of nature, and natural phenomena. The Supreme Court has repeatedly upheld this prohibition. Each time, it has emphasized that patents combining these categories of subject matter with generic or conventional components are invalid.
So what? The write up says:
The Patent Office cannot retract unlawfully granted patents, but it can and must prevent such patents from being granted in the future. It can do so easily by re-instating the guidance the last Director unilaterally rescinded. That guidance is consistent with Supreme Court precedent and fully open to the public. The next Patent Office Director can and must restore it.
How many patents may have been processed so that laws were allegedly violated? My thought is that an eager first year at one of the estimable law schools might look into this question. On second thought, nah, who cares unless it is billable. But I chuckle at the notion of secret procedures.
Stephen E Arnold, November 18, 2021
Patents March On Despite Pandemic
January 27, 2021
Even during a pandemic, inventors shall invent. What is uncertain is how many of those ideas will eventually make it to fruition. GeekWire reports, “U.S. Patent Rankings: Amazon Moved Up List as Effects from Pandemic on Innovation Still Unknown.” The article points to IFI Claims Patent Services’ annual list of the top 50 patent recipients in the U.S. IFI pulls its data from the U.S. Patent and Trademark Office. Writer Taylor Soper summarizes:
“Despite a global pandemic, U.S. patent grants were down less than 1% year-over-year, and patent applications were up nearly 5%. But the effects of the health crisis on innovation progress may not be known for another 18 months due to the long patenting process, according to Mike Baycroft, CEO of IFI CLAIMS Patent Services.”
The article also cites Microsoft’s Peter Lee, who notes the lack of in-person collaboration during 2020 could affect the pace of innovation. IFI reports a few of the fastest-growing technologies appear to be computer systems based on biological models, machine learning, quantum computing, autonomous navigation, and 3D printing. Soper continues,
“IBM continues to dominate U.S. patent rankings; Microsoft is holding steady in the top 10; and Amazon is making a move up the list. IBM had the most patent grants in 2020 with 9,130, followed by Samsung Electronics, Canon, Microsoft, and Intel. Apple ranked No. 8, while Amazon moved up four spots to No. 11, even though its 2020 grants dropped 8% from the previous year. Google came in at No. 17 and Facebook was No. 38. Some of Amazon’s eye-catching patent grants last year included a launch system for snapping payloads into the air; drones that pull skiers and surfers; and robots that drop off bunches of items on delivery routes.”
Eye-catching indeed. Amazon famously searches in every direction for its next big buck. We wonder: Is there a direct correlation between number of patents and financial return, or is an increase in patent activity during a time of social stress an indicator of commitment to staking out knowledge claims? And what about that USPTO patent search system? A gem I tell you.
Cynthia Murrell, January 27, 2021
Tick Tock Becomes Tit for Tat: The Apple and Xiao-i Issue
August 5, 2020
Okay, let’s get the company names out of the way:
- Shanghai Zhizhen Network Technology Company is known as Zhizhen
- Zhizhen is also known as Xiao-i
- Apple is the outfit with the virtual assistant Siri.
Zhizhen owns a patent for a virtual assistant. In 2013, Apple was sued for violating a Chinese patent. Apple let loose a flock of legal eagles to demonstrate that its patents were in force and that a Chinese voice recognition patent was invalid. The Chinese court denied Apple’s argument.
Tick tock tick tock went the clock. Then the alarm sounded. Xiao-i owns the Chinese patent, and that entity is suing Apple.
“Apple Faces $1.4B Suit from Chinese AI Company” reports:
Shanghai Zhizhen Network Technology Co. said in a statement on Monday it was suing Apple for an estimated 10 billion yuan ($1.43 billion) in damages in a Shanghai court, alleging the iPhone and iPad maker’s products violated a patent the Chinese company owns for a virtual assistant whose technical architecture is similar to Siri. Siri, a voice-activated function in Apple’s smartphones and laptops, allows users to dictate text messages or set alarms on their devices.
But more than the money, the Xiao-i outfit “asked Apple to stop sales, production, and the use of products fluting such a patent.”
Coincidence? Maybe. The US wants to curtail TikTok, and now Xiao-i wants to put a crimp in Apple’s China revenues.
Several observations:
- More trade related issues are likely
- Intellectual property disputes will become more frequent. China will use its patents to inhibit American business. This is a glimpse of a future in which the loss of American knowledge value will add friction to the US activities
- Downstream consequences are likely to ripple through non-Chinese suppliers of components and services to Apple. China is using Apple to make a point about the value of Chinese intellectual property and the influence of today’s China.
Just as China has asserted is cyber capabilities, the Apple patent dispute — regardless of its outcome — is another example of China’s understanding of American tactics, modifying them, and using them to try to gain increased economic, technical, and financial advantage.
Stephen E Arnold, August 3, 2020
IBM Lawyers-Up and Other Tech Giants Shiver
March 6, 2018
IBM has not exactly been on the bleeding edge of tomorrow for some years. Still massively important in the tech world, its products just aren’t as sexy as they used to be. Or are they? Turns out some big names have been stealing from Big Blue and that’s about to end, according to a recent GeekWire piece, “IBM Sues Expedia, Alleging Online Travel Giant Built Its Business on Big Blue’s Patents.”
While the title is pretty self-explanatory, here are some important takeaways:
IBM alleges Expedia’s infringements all fall under the umbrella of how online content is delivered, including aspects like ad technology, sign on processes, tracking previous communications with users and more. The lawsuit includes Expedia’s website and mobile apps, as well as its subsidiaries HomeAway, Hotels.com, Hotwire and Orbitz.
IBM is seeking an injunction against Expedia and its subsidiaries from using the patented technology, as well as up to triple the amount of damages awarded in a jury trial. IBM also “seeks royalties on the billions of dollars in revenue that defendants have received based on their infringement of IBM’s patented technology,” according to the lawsuit.
This is not the only iron IBM has in the patent fire. They also recently settled with Priceline for using the patented material. Looks like IBM might be a little more relevant than we gave them credit. It’ll be interesting to see if they can turn this momentum into new activity in 2018. We doubt it.
Patrick Roland, March 6, 2018
You Cannot Patent Public Domain Property
October 24, 2017
Oh, Google! Is there no end to the amount of mischief you will cause to make a dollar? Bleeping Computer reports that, “Google Is Accused Of Trying To Patent Public Domain Technology” and that is not right. A Polish assistant professor named Jaroslaw Duda invented a technology called Asymmetric Numeral Systems. He said he released it to the public domain so it would not be trapped in restrictive licenses.
Duda’s Asymmetric Numeral Systems (ANS) is a powerful family of entropy coding methods that is used in data compression systems. These include Apple’s LZFSE compressor, Facebook’s standard compressor, and Google’s Draco 3D compressor. Technology companies love ANS, because it has faster compression and decompression speeds with minimal data loss and computational costs.
Duda has a sarcastic response to Google trying to patent his technology, saying it was a nice “thank you” from a “don’t be evil” company. He is also bringing a very strong case against Google and also strong supporters:
The International Search Authority [ISA], a WIPO department tasked with searching prior patents, has already sided with Duda on the topic and published a scathing review, calling Google’s patent as not comprising ‘an inventive contribution over the prior art, because it is no more than a straightforward application of known coding algorithms.
Writing on online forums, Duda said he had high hopes when he first reached out to Google.
There was a moment they gave me hope for a formal collaboration with my University so I could build a team, but then silence … probably due to this patent application,” the researcher wrote. ‘[Right now,] Google is not responding, probably currently rewriting the patent – showing its determination to reach this monopoly..’
Google might have deep pockets and powerful lawyers, but Duda released ANS as public domain technology in 2014. Good luck trying to overcome that, Google! Not really.
Whitney Grace, October 24, 2017
Ambercite: A Patent Similarity Service
July 20, 2017
We learned about an Australian start up called Ambercite. The company’s service allows those wanting to know the answer to a question like this:
What patents are similar to US7593939?
Most of the online patent search systems do not deliver quick, comprehensive similarity results. When I have to think about patent similarity, I have found that several services have to be consulted and then some old-fashioned, billable time must be generously applied. Ambercite wants to change this approach to one powered by a more practical system. The company says:
Ambercite can help you quickly find patents and commercial opportunities, in many cases, missed by others, with its tools and services.
For more information about the firm, point your browser to this link. Worth watching.
Stephen E Arnold, July 20, 2017
US Patent Search Has a Ways to Go
January 3, 2017
A recent report was released by the U.S. Government Accountability Office entitled Patent Office Should Strengthen Search Capabilities and Better Monitor Examiners’ Work. Published on June 30, 2016, the report totals 91 pages in the form of a PDF. Included in the report is an examination by the U.S. Patent and Trademark Office (USPTO) of the challenges in identifying relevant information to an existing claimed invention that effect patent search. The website says the following in regards to the reason for this study,
GAO was asked to identify ways to improve patent quality through use of the best available prior art. This report (1) describes the challenges examiners face in identifying relevant prior art, (2) describes how selected foreign patent offices have addressed challenges in identifying relevant prior art, and (3) assesses the extent to which USPTO has taken steps to address challenges in identifying relevant prior art. GAO surveyed a generalizable stratified random sample of USPTO examiners with an 80 percent response rate; interviewed experts active in the field, including patent holders, attorneys, and academics; interviewed officials from USPTO and similarly sized foreign patent offices, and other knowledgeable stakeholders; and reviewed USPTO documents and relevant laws.
In short, the state of patent search is currently not very good. Timeliness and accuracy continue to be concerned when it comes to providing effective search in any capacity. Based on the study’s findings, it appears bolstering the effectiveness of these areas can be especially troublesome due to clarity of patent applications and USPTO’s policies and search tools.
Megan Feil, January 3, 2017
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