From...

September 20, 1999
Web posted at: 12:19 p.m. EDT (1619 GMT)

by Julia King

(IDG) -- Responding to a surge in new applications for Internet-related patents, the U.S. Patent and Trademark Office and U.S. Copyright Office has hired nearly a dozen new patent examiners with both computer science and specialized industry expertise.

Despite criticism about its treatment of e-commerce, the Patent Office is also standing behind the 125 or so patents it granted last year for supposedly new ways of doing business on the Internet.

In the past 18 months, the agency has come under fire by critics who claim it's awarding too many new Internet patents for ways of doing business that are neither new nor novel except that they're executed in cyberspace (see "Net patents stir debate," link below).

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But that, according to Patent Office Deputy Director Brigid Quinn, is often good enough to warrant the monopoly protection of a patent, because patents aren't reserved solely for new inventions, as many people believe.

"Patents are [granted] for improvements, too," Quinn said. Rejecting Internet-related processes such as Priceline-.com Inc.'s patent for reverse auctions would be "like saying Henry Ford shouldn't have gotten a patent for the automobile because we already had a horse and buggy with wheels that moved you forward," she said.

Prior inventions

One of the primary criticisms leveled at the Patent Office is its alleged cursory searches of so-called "prior art," or previous inventions and/or research that might invalidate a patent application. To ensure that applications are scrutinized thoroughly from both business and technical standpoints, the Patent Office is recruiting examiners who hold computer science degrees and a second degree or work experience in business disciplines, such as marketing or finance. This year, the Patent Office has hired 11 new examiners to review applications for Internet-related business methods, which brings the total number of examiners in this area to 39. Another four examiners are due to be hired by year's end.

"The increased filings and the subject matter being addressed is what's driving this," said Joseph Rolla, director of the group.

For example, a patent application for an electronic-billing method might be reviewed by someone with both a computer science degree and a degree or work experience in finance and accounting, Rolla said.

To attract new examiners, who earn from $40,000 to just a little over $100,000 per year at the highest job grade level, the agency is offering to start new examiners at higher job grade levels than before and to advance them more quickly through the government pay schedule.

"The primary weakness is that the [Patent Office] is going through a real big growth spurt, particularly in the examination of computer-related patents," said Mike Smith, who worked as a software patent examiner from 1998 to 1999 and is now a patent attorney in Minneapolis.

Typically, an examiner has four days to read a patent [application], conduct a search and write an initial rejection, Smith said.

In addition to its load of new applications, the Patent Office re-examines about 350 patents per year -- many because of disputes about their validity.

Kevin Spivak, another former patent examiner now working as a patent attorney in Washington, points to the sheer novelty of Internet technology in general.

"The problem with Internet [patents] is not so much that [the Patent Office is] not digging up prior art, but that there's nothing to dig up," Spivak said. "It's a stretch to say they're not doing their job."

SOURCE: U.S. PATENT AND TRADEMARK OFFICE, WASHINGTON

Internet Patents on the Rise
Number of Internet-related patents issued
2	125	200*
1991	1998	1999
*Projected