On Tuesday 2nd April the Israel Patent Office hosted a seminar about various aspects of patenting. The topics covered included:
- The Patent Prosecution Highway (PPH)
- The patentability of software and business method patents in the United States
- Big Data, the Internet of Thing, Artificial Intelligence & Machine Learning:
What to Patent, Whether to Patent
- Trade-secrets and Patents
The conference started on time at 9 am, but did not run to time and finished rather later than scheduled.
Dr Michael Bart, head of the Israel Receiving Office for the PCT opened the event. All four topics were covered by Paolo M. Trevisan, a Patent Attorney who works at the Office of Policy and International Affairs of the United States Patent and Trademark Office. Different members of the Israel Patent Office staff responded with an Israeli perspective to the first three lectures, and also took practical questions.
For those using the PPH system, there wasn’t much new. It happens sometimes that applicants file separate method and product applications for the same technology in the US, often on the same day. This is because the USPTO can classify these in different classes and will generally issue a restriction order anyway. Furthermore, having two US patents instead of one may be more impressive in certain scenarios. When she took questions, I asked Chief Examiner Simona Aharonovitch if one could file a PPH request explicitly claiming a product-by-process as a dependent claim on a method patent examined abroad, or a method of manufacturing a product claimed in a product application. She decided not to give me an answer then and there, but a few minutes later decided after conferring with herself (her words, not mine) that the answer was no, since the purpose of the PPH is to be straightforward. In my opinion this is wrong, as it is putting form before substance. I submit that the main purpose of the PPH is to cut backlogs and to enable one patent office to have benefit from examinations of another.
Mr. Trevisan seemed generally competent but it was clear that some of the talks were with slides prepared by one of his colleagues for a different event, and he was out of his depth regarding issues of Big Data and the Internet of Things.
Fundamentally the problem with software and business method patents is that issued patents for software per se and for business methods are unenforceable due to the Supreme Court ruling in re Alice. However, one cannot truly know how to draft claims that are allowable since the rules keep changing and it is not inconceivable that the US Supreme Court will visit the subject again.
I prefer drafting in other areas, but do write up software patents and business methods from time to time. My personal way of dealing with §101 issues in the States is to do the best I can to stress argue that there is more than mere software when drafting the application, and to find and stress technological aspects of what could be considered business methods, but I then send such cases to Browdy and Newmark which is an IP Boutique in Washington, so setting up face to face meetings with the Examiner does not incur hotel bills, flights, etc and billing is by the hour and not by the day. One of their attorneys Ms Ronni Jillions worked for a couple of years as a patent examiner in the computer arts, in both hardware and software, and specializes in overcoming §101 objections. We send relevant cases to her, as though the rules keep changing, she keeps up to date with these issues and is tenacious.
A lot of the artificial intelligence lecture was spurious. It did, however, serve to stress the problem with software patents in that most computer algorithms are actually not mere listings of human thought processes since the algorithm is usually linear, but when not playing a game like chess, humans think in a very different manner. With Big Data, one needs a computer. Possibly an infinite amount of monkeys given infinite time could reach the same result, but that is not a practical approach. It seems to me ludicrous to exclude a large and significant area of human technical activity from being patentable due to arbitrarily disqualifying the subject matter and then smugly noting that human progress in software doesn’t seem to be held up by being unpatentable. The thing is that someone did invent the word processor, the Internet, email, etc. Many innovative companies are squashed by larger players that may be better at marketing but may be less innovative. It is not clear that the winners are the innovators, and despite software getting ever more complex and Microsoft programs becoming more feature laden, there may still be issues with inventors of software products not getting the rewards they deserve.
The trade-secret lecture was refreshing in that instead of bringing out the famous Coca Cola example of a valuable trade-secret (which is topical this time of the year, as we all know that a Rabbi in Atlanta was let into the secret so Coca Cola could obtain Kosher for Pesach status), Mr. Trevisan gave the example of Kentucky Fried Chicken’s secret recipe developed by Colonel Sanders.
There have been Kentucky Fried Chicken franchises in Israel in the past, but they were not a great success. This could be because the secret recipe includes milk and for two millennia, Jews have refrained from eating poultry and dairy products together. There have been Kosher Kentucky Fried Chicken outlets in Israel and in the US, but apparently the chicken doesn’t taste right. Incidentally the Kentucky Fried Chicken is seasoned with 13 spices, the most ubiquitous of which is simply white pepper. So instead of a Kosher for Passover trade-secret, Mr. Trevisan chose a non-Kosher, Hametz one. Go figure.
There was plenty of Danish pastries, biscuits and burrekas type pastries, soft drinks and tea and coffee provided by the Israel Patent Office for breakfast, and during the break at lunch time, this was supplemented by fruit salad, vegetable dips and salads, and some type of pastry wrap with various dairy and fish savory fillings. It was somewhere between a taco or tortilla and a burekka. We note that unlike the refreshments at the AIPPI meeting the following day, the refreshments provided by the Israel Patent Office were Kosher.
The coffee was, however, instant, and not really up to the job of keeping people awake. There was also no real tea, just a bunch of herbal infusions. I will try to remember to donate some of our special PCTea bags…
I understand that the 2-3 people from the USPTO who were present do not speak Hebrew, and the audience, being patent attorneys and the occasional lawyer who works in Intellectual Property, had no difficulty with English. Nevertheless, I would respectfully suggest that Israel Patent Examiners lecturing to an audience licensed to practice in Israel should speak Hebrew. Their accents and delivery were, frankly, difficult to listen to in English.
The turnout for this auspicious event was about 60, including the lecturer from the USPTO, an USPTO IP Attaché to the Middle East whose job is apparently to bully Israel and our Arab neighbors into adopting US standards and practices, and various senior Israel Patent Office staff. There were, perhaps 40-50 patent attorneys and lawyers present; mostly the usual crowd that attend IP events, and it was a good time to catch up with former employees and colleagues.
Overall: Being free, with relevant subject matter, plentiful refreshments and free parking, was excellent value for money.