Wikipedia and U.S. Patent & Trademark Office

wikipedia-logo.png

I love Wikipedia. I use it extensively for quick and dirty research and I often use Wikipedia links to illustrate points in my blogs for convenience. But I just could not believe my eyes when I read that, “Examiners at the U.S. Patent & Trademark Office have used Wikipedia to help determine a patent application’s validity on everything from from car parts to chip designs.”

My initial reaction was that the examiners at the USPTO must be mad. Because of Wikipedia’s constant changing nature (anyone can change an entry at any moment), it should never be used as the final and authoritative source on anything from as simple as an academic paper (definitely not at the University level or even for senior high school level (if they are serious)), definitely not the court system nor the patent system.

Bu then I came across a comment by Scott , a former patent examiner. He was using Wikipedia to show an invention to be anticipated or obvious. Hmmm, OK, thats what they are using Wikipedia for. And then he went on to say that,
I just don’t see why wikipedia was singled out among all sources, especially in view of the fact that an article from *any other website* can be used as prior art without explicit PTO condemnation. At least wikipedia is reviewed by a community, whereas each cult leader who claims to have invented a time-warping spaceship can publish anything he wants without review (I’ve actually used one of these sites in a rejection before).

Wow, so anything that anyone wrote or hinted in any website can be used to reject an invention, that is very steep a test indeed. But before I seem to praise the USPTO for their “hard” work in rejecting bogus patent, I would like to bring up the case where the poor Research In Motion was forced to pay $612.5 million for a patent challenge where the patent was ultimately proved to be invalid. Go figure.

At this point of total confusion, and to distract you from my obvious ignorance, I should point out that Google Scholar is my personal search engine of choice when I want to do some serious research and don’t mind reading tons of jargons.

What is Google Scholar?
“Google Scholar provides a simple way to broadly search for scholarly literature. From one place, you can search across many disciplines and sources: peer-reviewed papers, theses, books, abstracts and articles, from academic publishers, professional societies, preprint repositories, universities and other scholarly organizations. Google Scholar helps you identify the most relevant research across the world of scholarly research.”

For more on Wikipedia and the USPTO, check out this Wall Street Journal Law blog entry and the comments.

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2 Responses to Wikipedia and U.S. Patent & Trademark Office

  1. Scott says:

    The truth in this matter is actually rather confusing. The source of the alleged PTO ban on wikipedia is a BusinessWeek article and it is not clear what Mr. Doll actually means by saying that wikipedia is no longer on the list of accepted sources. It appears that the author is not very well informed in the Patent area and has possibly misunderstood something in the process.

    For one thing, there was no “list of acceptable sources” when I was an examiner (I left about a year ago). And apparently, there is no list now either, as attested to by this current examiner: http://www.infirmation.com/bboard/clubs-fetch-msg.tcl?msg_id=0032iw

    So putting aside for now the issue of whether Wiki is actually a banned source and what its permitted uses are (since it is entirely unclear what Doll said or means to say), the issue for discussion is whether Wiki should be used by examiners at the PTO.

    First off, I didn’t say that I used wikipedia to reject patent applications, as you suggest. In fact, I never did. I merely said that I see no basis for restricting its use in rejections when its substance can be retrieved as of a certain date — this is, essentially, the criteria for establishing a potential teaching as prior art. I usually aimed for more trustworthy sources for my own reasons but see no reason why Wikipedia can’t be used.

    Also, your comment that “anything that anyone wrote or hinted in any website can be used to reject an invention” is a mischaracterization of my statements. Note in my original post that I said that prior art must be enabling. As such, a hint of something is likely not sufficient to qualify as prior art.

    There must be enough of a disclosure to show that “the public was in possession of the claimed invention before the date of invention” (http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2121_01.htm#sect2121.01). This section and following sections of the MPEP describe the level of disclosure in prior art to reject patent claims. Also of note is the first paragraph of MPEP 2121, which states that prior art is presumed to be operable and enabling (the burden is on applicant to show that it is not).

    Sometimes, as in my time-warping spaceship example, I know that the prior art is inoperable or fictitious. What should be realized here, and what the general public tends to have little appreciation of, is that the functionality of prior art is irrelevant when it anticipates or makes obvious the claims in an application. The patent office is not a monitor of marketability, commercial success, efficiency, or quality of a product. Beyond a threshold level of operability (as long as it is not a perpetual motion machine or in blatant contradiction with understood physics, among other equally obvious operability issues), the patent office generally only cares whether something has been done before or if it is obvious in view of things that have been done before.

    In other words, the accuracy and truthfulness of a Wikipedia article is mostly beside the point when considering whether a teaching therein anticipates or renders obvious a claimed invention. As long the substance can be retrieved and its date of publication can be verified, and if the disclosure enables the claimed subject matter, it should be prior art. I understand that the “article history” tab for Wikipedia articles allows people to retrieve old versions of the article, so it would appear to meet these criteria.

    On the other hand, Wikipedia should probably not be used as the ultimate source of information for general teachings in the art upon which an examiner might rely for an assertion of “official notice.” These are obviousness rejections based on something not found in a publication but that an examiner asserts is true. The distinction is that, in the case previously discussed, it is a fact that the public had possession of the teachings (whether it is functional or true or not), whereas in this case the examiner is asserting that it would have been obvious to one of skill in the art to do something based in part on a possibly incorrect Wikipedia article. One of skill in the art may instantly recognize the wiki article to be incorrect and would therefore not be motivated to consider its teachings.

    It’s a subtle distinction and I’m not sure I’ve expressed it clearly; you may have to be involved with the process to get what I’m saying.
    But anyway, that’s what I think.

    As to the patents you mention that have bore themselves to mainstream scrutiny, I can’t say much more than that the examiners in those applications must have felt that the claimed subject matter was novel and non-obvious.

    Examiners are given about a day’s time to search the world of information to determine whether something was done before. Will they find every piece of prior art available and make a determination that accurately reflects the state of the art? Take a guess. Hey, that’s the system we work in and it would not be able to handle the volume of applications that come in every year if it were much different (it can barely, if at all, handle the volume as it is).

    From my understanding, if I recall correctly, the piece of prior art that was used in the rejection of the NTP patent was an obscure document from a Scandinavian country. That fact gives me more confidence in the job done by the original examiner since those types of documents are simply not of the type that examiners are expected to find (if it was a US patent, it would be embarrassing). When millions upon millions of dollars are on the line in litigation, prior art is more likely to be found than a single person spending 8 hours to find it.

    Things are not always as simple as they seem. I haven’t read through the file histories of the NTP or Amazon patents, so I don’t know why they were issued. I can only say that I believe each of the examiners had reason to believe, based on the approximately 8 hours they spend searching, that the particular ideas, as claimed, had not been done before and were not obvious in view of the prior art. Just because a company has been commercially successful were a small garage inventor could not raise the necessary funds for marketing, manufacturing, etc., does not automatically make the product free from infringement of a person’s patent rights.

    You also said, “I read somewhere that the original “inventor” of that NTP “patent” worked at USPTO before, correct?” This WSJ article is very good: http://online.wsj.com/article/SB115629893446042958-search.html?KEYWORDS=blackberry&COLLECTION=wsjie/6month

    The inventor (or as you say, “inventor”), Campana, was actually a engineer and believe it or not developed the idea for actual use in industry and tried to market it to large companies. Don Stout was indeed a former examiner and a lawyer who knew the system well. Also of note is that the widow of the inventor did get $153 million out of the settlement. The issue is that the people left out of the settlement were those who ran the company Campana worked at while developing the idea (there is a question as to whether he developed for the company or on the side).
    **************
    Scott,

    Thanks for your very detailed reply, it will take me some time to read and digest your comments here before I can post my reply. Please check back later.

    Cheers,
    Kempton

    **************
    Scott,

    Thanks again for taking time to share your insights. I have now (Aug 29, 2006) posted a reply to your comment as a new blog entry.

    Cheers,
    Kempton

  2. […] The fact that the USPTO has granted this patent is beyond me. But then when they have only about a day to examine a patent (see my previous discussion with a former US patent examiner here in the notes and here), it doesn’t surprise me. I think the US patent system is really sick and needs to be reformed asap. […]

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