A Former Patent Examiner’s Perspective On The Current “Patent Hubbub”

Editor’s Note: This guest post was written by G. Nagesh Rao, an IP-Law and Technology Commercialization Strategist based out of San Francisco and Washington DC. He most recently worked for The City of Los Angeles’s CleanTech Initiatives and before that as a US Patent Examiner and Senior Policy Advisor for The US Department of Commerce’s Patent & Trademark Office and Office of Innovation and Entrepreneurship.

On the surface patent law might seem like a mundane subject, but it is actually an important type of law that is not properly appreciated. To illustrate this point consider the following example, US Patent No. 7,863,798, entitled as a “Nanocrystal Powered Nanomotor”; where the invention’s broadest claim, states:

1. A nanoscale motor, comprising: an atom reservoir operable to provide atoms; a nanoparticle ram coupled to the atom reservoir and operable to receive the atoms from the atom reservoir; a substrate coupling the atom reservoir to the nanoparticle ram; a nanolever coupled to the nanoparticle ram, the nanolever operable to move in response to the nanoparticle ram receiving the atoms from the atom reservoir; and a voltage source electrically coupled to the substrate and operable to deliver reversible positive and negative voltages to electrical connections of the motor, the reversible positive and negative voltages operable to cause reciprocal movement of the nanolever.

Now a good number of you just scratched your head and went “wtf” is this all about and what is this thing he is referring to as “claim”?

Simply put, claims are the heart of a patent, and serve as the social contract between the inventor and the public as to what limited term monopoly rights the owner of the invention is permitted.

The real invention disclosed here was the claimed functional arrangement of parts in the motor design’s ability to operate, not what the title of the invention states. I emphasize this point, because it is so important for the technology community to not only get the facts straight on a patent dispute but also make sure to comprehend what are the legal issues at hand from a patent infringement perspective, i.e. the violation of an invention’s patented claims.

Which is why it was a bit disappointing to read the overwhelming coverage behind the Apple vs Samsung case, among the many other notorious patent disputes underway (Yahoo vs Facebook, Google vs. Oracle, etc…) all consistently laced with sexy soundbites and a constant misuse of patent terminology, to what I can best guess were various authors decisions to offer diversity in word choices.

It was not until a colleague of mine sent over a blog post by Steve Wildstrom in Tech.Pinions which referenced  Nilay Patel’s separate posting as well, that I was able to get a better of sense of the issues after the verdict was rendered, and I am a frakking former seasoned US Patent Examiner.

Now this leads me to my next point, given how complex patent law is to even explain to the layman, why would these two companies allow for a random judge and jury, none of whom are technically qualified in the art of patent law juxtaposed with the Mobile Computing Arts, oversee such a complicated case in the first place? Furthermore the notion that these types of cases should be handled by trained experts has been emphasized recently by a few well-respected legal and technology thought leaders. I am looking at you Judge Richard Posner and Om Malik.

As a former Patent Examiner, it is my firm belief that the tech-community should adhere to some sort of gentleman’s agreement policy of having these legal cases always handled and mediated by the technically appropriate authorities. You do not need some legal fix to encourage such a behavior, just do it, like Twitter did with its pledge on avoiding frivolous patent litigation.

My educated guess for why many companies choose not to go down that road is because they probably do not want a trained mediating professional to call out “BS” on either side with respect to each other’s complaints of patent infringement.

However I do not feel that is a good reason to avoid having technically competent trained officials review these types of cases, especially when there is a lot at stake. As a side note,Apple, I am a tad surprised by your push to have this case even heard, given your patent infringement woes by Creative Technologies, 6-7 years ago regarding the iPod music player device. What’s with the love for patents all of a sudden?

I do want to give credit and a “gold star” to Judge Lucy Koh for having the foresight to initially ask not once but twice for Apple and Samsung to sit down and talk through the issues of claimed infringement rather than waste the court’s time, and avoid a railroad mess which will undoubtedly have to be cleaned up via appeal at the Court of Appeals for the Federal Circuit aka “The Patent Court”.

In closing I can tell you all from my seven years of government service as a US Patent Examiner, I probably saw between 1-2 inventions per year that really wow’ed me. A vast majority of the patent applications that came my way never saw the light of day as a patent and when they did it was much more often due to a technical matter of patent regulations, as required by the Manual of Patent Examining Procedure (MPEP) aka the “Gospel on Patent Law”, rather than the claimed invention showcasing a truly innovative and groundbreaking step above the known and cited prior art.

The ones that did wow me, well…I’ll craft up a series of posts in the near future discussing them, starting off with the invention pertaining to the 3D printing of body parts.