Subject: SPLT comments regarding notice and standards

From: James Love <[email-masked]>
Date: Sun, 24 Nov 2002 02:00:59 -0500

The following is from our 22 November comments to USPTO on the proposed 
Substantive Patent Law Treaty.  Jamie

------
Standards Issues

The Internet Engineering Task Force (IETF) Working Group on
Intellectual Property and other standards bodies are
struggling with vexing problems of standard setting in a
world where it is difficult or impossible to know if post-
standard there will be claims that the implementation of the
standard will infringe a patent.  The rules concerning
disclosures by members of a trade association are not
sufficient, because patent claims may and do arise from non-
members.   The SPLT could perform a public service by
creating a global system whereby a standards body could
provide notice that it was considering a standard, allow
patent owners a fixed period of time to assert rights, and
failing to make such an assertion, require that patent
owners forgo future claims related to the standard.   There
is no public interest rationale for having patent owners
ambush standard organizations and the public by withholding
such disclosures.   This is an extremely important issue in
a world increasingly dependent upon information technologies
and information technology standards.

-------- Original Message --------

To: [email-masked]

22 November 2002

United States Patent and Trademark Office
Office of International Relations
Room 902
2121  Crystal Drive
Arlington, VA 22202,
Attn: Jon Santamauro
Small Business/ Harmonization

[email-masked].

Dear Mr. Santamauro:

I would like to testify at the roundtable on Harmonization
and the Substantive Patent Law Treaty (SPLT), and I also
submit the comments below on the proposed treaty, on item
(3) of the request for comments, the "substantive patent law
issues."

I am the Director of the Consumer Project on Technology, a
small non-profit organization.  We are particularly
concerned with the impact of the SPLT on the required scope
of patents, and on issues relating to disclosures.

Scope of Patents

Article 12(4) of the current draft of the treaty says:

        Article 12

                 (4)    [Industrial
        Applicability/Utility]  A claimed invention shall
        be industrially applicable (useful).  It shall be
        considered industrially applicable (useful) if it

        [Alternative A]
        can be made or used for exploitation in any field
        of [commercial] activity.

        [Alternative B]
        can be made or used in any kind of industry.
        "Industry" shall be understood  in its broadest
        sense, and shall not be limited to industry and
        commerce proper, but include agricultural and
        extractive industries.

        [Alternative C]
        has a specific, substantial and credible utility.

The proposal would require each SLPT member to embrace a
very broad scope for patents.  Indeed, one can hardly
imagine anything broader than "if it can be made or use for
exploitation in any field of activity."   The most recent
draft of the treaty also eliminates all of the mandatory and
discretionary exceptions.   This is designed to extend the
scope of patents everywhere into everything, and there is
much empirical evidence that this is a mistake.

The National Academies of Sciences
(http://ip.nationalacademies.org/) and the joint US
Department of Justice and US Federal Trade Commission
(http://www.ftc.gov/opp/intellect/index.htm) Hearings on
Competition and Intellectual Property Law and Policy have
collected extensive evidence that patents are of lower
social value in some areas than in others.  A one-size-fits-
all patent policy is not justified, in our opinion, and
indeed, nations should be free to exclude some areas of
activity from the scope of patents.  Certainly patents on
business methods and software are highly controversial, and
according to many experts, the costs far outweigh the meager
benefits.  There are also enormous controversies over the
appropriate scope of patents in the life sciences area.

As you know, in recent years, the US Congress has eliminated
enforcement of surgical patents and created a special prior
user right for business method patents.   Here we also note
that on 18 November 2002 Ralph Nader and CPTech wrote to the
Office of Management and Budget (OMB), to ask if patents
should be eliminated for some fields of technology or
commerce on the basis that the costs outweigh the benefits.
(http://www.cptech.org/letters/omb-18nov2002.html)

Standards Issues

The Internet Engineering Task Force (IETF) Working Group on
Intellectual Property and other standards bodies are
struggling with vexing problems of standard setting in a
world where it is difficult or impossible to know if post-
standard there will be claims that the implementation of the
standard will infringe a patent.  The rules concerning
disclosures by members of a trade association are not
sufficient, because patent claims may and do arise from non-
members.   The SPLT could perform a public service by
creating a global system whereby a standards body could
provide notice that it was considering a standard, allow
patent owners a fixed period of time to assert rights, and
failing to make such an assertion, require that patent
owners forgo future claims related to the standard.   There
is no public interest rationale for having patent owners
ambush standard organizations and the public by withholding
such disclosures.   This is an extremely important issue in
a world increasingly dependent upon information technologies
and information technology standards.

In our opinion, these issues are very important to small
businesses and non-profit organizations, as well as the
public at large.  We do not think the USPTO should only
consider the impact of the treaty on US patent owners, but
also on persons who are impacted by patents.  In the area of
Internet, software and business methods patents, as well as
patents in the life sciences area, both US and foreign
patents are relevant to US citizens.   A foreign patent on
an Internet standard is as problematic as a US patent, even
though it is quite difficult for a US small business or non-
profit organization to challenge the foreign patent on the
basis of novelty or utility or relevance.   We note here
also that in recent years the United States has advanced
positions in foreign trade negotiations to force developed
and developing countries to award patents on software and
business methods, including countries that have very little
capacity to effectively judge the novelty of such
inventions.

Thank you for the opportunity to provide these comments.
For purposes of the roundtable, my biographical information
is on the web here:
http://www.cptech.org/jamie/jamie-shortbio-iphealth.html
http://www.cptech.org/jamie/jamie-shortbio-ecom.html

Sincerely,

James Love
Director, Consumer Project on Technology
http://www.cptech.org
[email-masked]

-- 
------
James Love, Consumer Project on Technology
http://www.cptech.org, mailto:[email-masked]
voice: 1.202.387.8030; mobile 1.202.361.3040

-- 
------
James Love, Consumer Project on Technology
http://www.cptech.org, mailto:[email-masked]
voice: 1.202.387.8030; mobile 1.202.361.3040

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http://lists.essential.org/mailman/listinfo/random-bits

-- 
------
James Love, Consumer Project on Technology
http://www.cptech.org, mailto:[email-masked]
voice: 1.202.387.8030; mobile 1.202.361.3040

_______________________________________________
Ipr-wg mailing list
[email-masked]
https://www1.ietf.org/mailman/listinfo/ipr-wg

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Sun, 24 Nov 2002 09:31:50 -0800

I agree completely with your comments.

/Larry Rosen
General Counsel, Open Source Initiative

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]] On 
> Behalf Of James Love
> Sent: Saturday, November 23, 2002 11:01 PM
> To: IETF working group on IPR
> Subject: SPLT comments regarding notice and standards
> 
> 
> (3) of the request for comments, the "substantive patent law issues."
> 
> small non-profit organization.  We are particularly concerned 
> with the impact of the SPLT on the required scope of patents, 
> and on issues relating to disclosures.
> 
> Scope of Patents
> 
> collected extensive evidence that patents are of lower social 
> value in some areas than in others.  A one-size-fits- all 
> patent policy is not justified, in our opinion, and indeed, 
> nations should be free to exclude some areas of activity from 
> the scope of patents.  Certainly patents on business methods 
> and software are highly controversial, and according to many 
> experts, the costs far outweigh the meager benefits.  There 
> are also enormous controversies over the appropriate scope of 
> patents in the life sciences area.
> 
> capacity to effectively judge the novelty of such inventions.
> 
> http://www.cptech.org/jamie/jamie-shortbio-> iphealth.html
> 

Sincerely,

James Love

-- 
------
James Love, Consumer Project on Technology http://www.cptech.org,
mailto:[email-masked]
voice: 1.202.387.8030; mobile 1.202.361.3040

-- 
------
James Love, Consumer Project on Technology http://www.cptech.org,
mailto:[email-masked]
voice: 1.202.387.8030; mobile 1.202.361.3040

-- 
------
James Love, Consumer Project on Technology http://www.cptech.org,
mailto:[email-masked]
voice: 1.202.387.8030; mobile 1.202.361.3040

---

From: Keith Moore <[email-masked]>
Date: Mon, 25 Nov 2002 00:12:33 -0500

> The SPLT could perform a public service by
> owners forgo future claims related to the standard. 

it's an interesting idea.  however I fear it would lead to large
numbers of dubious 'assertions' of patent rights (similar to the 
dubious assertions of trademark or copyright infringement that 
happen  frequently today) - and that attempting to deal with such 
assertions would overwhelm IETF's modest resources.

Keith