I often hear from extremely intelligent engineers that they have read all sorts of patents in the last decade that should not have been issued. Despite their brilliance, I am usually pretty sure that they have no idea what they are talking about. Immediately, I want to know did they read the claims? Do they understand that the claims are not prose? If they read the claims, did they read the specification? These are just a few of the questions I want to ask them. Patent law is perhaps one of the most complex area’s of law to understand. The US Supreme Court does not understand the difference between a 101 issue (patent subject matter) and a 102/103 matter (Novelty and Non-Obviousness). It is quite common for patent attorneys who have practice 2-4 years to confuse patentability issues with infringement issues. It is not that these brilliant engineers and scientists are incapable of understanding these issues, it is just that they need proper training in these issues just as they needed training in physics, calculus, and their engineering courses.
Usually, when an engineer makes the comment that they know of all sorts of patents that should have not been allowed I relate a story from my time at Motorola. While I was at Motorola we received a letter from a company in the telecommunications world suggesting that we might want to take a license to about a dozen of their patents. For some reason the task of analyzing this request fell in my lap. I was given access to the PhD’s in our research division to help me with my analysis. Motorola had a very aggressive patent strategy at the time and most of these PhD’s were inventors on half a dozen or more patents. As a result, they were both very intelligent and fairly well versed in the patent process. I asked that this group of engineers versed in the technology associated with these patents review them and then we would get together and discuss the claims to determine if Motorola should consider taking a license to any of them. We met a week later and I started discussing each of these patents one by one. When I mentioned the first patent, I got a chorus explaining to me that there was no way that this company should have received this patent. I told them to calm down and work through the independent claims with me element by element. As I queried them about whether Motorola would use each element in the patented technology I got a lot of bored responses that everyone did that element or step. However, after a number of these responses I would ask if the next element was used by Motorola and the group would respond “Why would they do that?” My answer would be, “I don’t know why, but that is probably why they obtained the patent?” Then we would move on to the next claim. I went through this same indignation with each patent we analyzed. However, when I forced them to read the claims carefully it turned out that Motorola was not using or planning to use any of the technology in any of the patents this company sent us. In fairness to this group of PhD’s and the brilliant engineers I run into, many patent attorneys make the same mistake when confronted with the question of whether their client infringes a patent or whether a patent should have issued. Our Supreme Court also makes these same mistakes.
So forgive me when I see open source people, venture capitalists, journalists, etc. not nearly as brilliant as the engineers mentioned above saying a patent should not have issued that I am highly skeptical they have the skill or have put in the hard effort to correctly analyze the issues. Analyzing whether an invention is patentable or whether a product or service infringes another patent is hard work. Even those of us skilled in this area and concerned about a public debate over a particular patent issue are reluctant to spend the tremendous amount of time and effort to correctly analyze the issues involved. In order to help people understand some of the possible mistakes they are making when analyzing patent issues, I have put together a list of logical errors below.
Error in Analyzing Patent Issues
1) Confusing infringement issues with patentability issues.
2) Confusing what the specification says versus what the claims cover.
3) Confusing whether an invention is patentable with whether it is marketable.
4) Confusing whether an invention is patentable with whether it is of interest to the academic community.
5) Confusing the purpose of the specification with the purpose of the claims.
6) Reading the claims as if they are prose and not giving each word meaning, which is like ignoring terms in an equation.
7) Reading the abstract instead of the claims.
8) Reading the claims instead of the specification.
9) Reading the specification instead of the claims.
10) Not understanding the difference between the independent claims and the dependent claims.
11) Confusing what is obvious with what is simple.
12) Using hindsight in analyzing a patent.
13) Not understanding that every invention in the history of the world is a combination of known elements. See Understanding Patent Novelty (A common error by the Supreme Court)
14) Ignoring the context of a word in the claims.
15) Selectively emphasizing certain parts of the claims or specification while ignoring other parts.
16) Confusing whether your understand the invention with the patentability of the invention.
17) Confusing the meaning of plural and singular terms in the claims.
18) Assuming that all patents have the same scope.
Any patent attorney who has been in practice for over 10 years has seen every one of these errors from their clients and probably plenty more.
I think that engineers and scientists should be involved in shaping patent policy. Unfortunately, few engineers or scientists have the taken the time to truly understand how patents work before criticizing them or making broad statements that they have seen numerous patents that should not have issued. Uninformed comments are unlikely to advance patent policy in a way that is good for the country or good for these engineers’ and scientists’ economic future.