Intellectual Property Directions

If the USPTO allowed a patent for a method of swinging on a swing, which they did, then it’s surely time to do something about method patents - or at least methods that I’ve called end-user processes. Patents covering end-user processes are pernicious in several ways:

• firstly, by their nature there is very little documented prior art for a patent examiner to demonstrate obviousness, undermining the doctrine that issued patents have a presumption of validity;
• secondly, they erode the inherent society/inventor balance when their principle use is to secure coverage for an apparatus that has otherwise failed to obtain (or retain) patent protection;
• thirdly, they potentially make every citizen an infringer just for engaging in what is normal or everyday activity; and
• lastly, by raising concerns of induced or contributory infringement in other manufacturers, they contravene the Constitutional underpinnings of our patent law by repressing instead of promoting the “progress of science and the useful arts”.

It is this last issue that concerns me most. One of the characteristics of an end-user process is that it is performed by an individual using no patented/proprietary apparatus. The process is typically not performed by the patent owner or his competitors. And the patent owner never intends to sue the performing individuals. Instead, the patent owner hopes to protect his market for his unpatentable apparatus by scaring off competitors with the threat of an induced or contributory infringement suit.

The recent “KSR ruling”, which makes an obviousness objection harder to overcome (the method of swinging on a swing would not be allowed today), will certainly make it more difficult to obtain these patents but as we know the winds of court opinions can switch over time. It would be better to make explicit changes in the patent laws to eliminate or at least eviscerate these claims.

While some might try to tinker with the definition of a patentable process (e.g., NOT an end-user process), I would rather eliminate the benefit expected from filing these patents. I would make the statutory definition of contributory/induced infringement include, directly or indirectly, a patented apparatus.

With this definition you could teach people the method of swinging on a swing without being lible for inducing infringement. With this definition you could freely sell your non-infringing apparatus without worrying if it also had non-infringing uses.

Importantly, the only possible infringers under this definition are the individuals actually practicing the method. If the goal of the patent owner was to protect a market for an unpatentable apparatus, he will not sue his potential customers. If the goal of the patent owner was to protect the market for the actual method (i.e., a dentist who has developed a new method of implanting teeth wants to be the only dentist able to perform this method), he will sue (or license) the infringers.