US Patent Office Does Initial Rejection On All Claims For Patent On Creating Subdomains

from the so-why-was-it-approved-in-the-first-place? dept

You may recall, a few years back, some news around a patent holding company getting a patent on virtual subdomains. As part of its Patent Busting project, the EFF submitted a ton of prior art to the Patent Office, who has now done an initial rejection of all of the patent's claims. The patent holder (and, it's worth pointing out that it's changed hands since this started) can now respond or just give up on the patent. Either way though, it highlights the silliness of considering any granted patent as automatically "valid." Considering how many patents that are reviews end up having claims (sometimes all of them) rejected, it seems pretty clear that the initial patent review is simply not even close to effective as a judge of patent-worthiness.
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Filed Under: patent office, patents, re-exam, subdomains
Companies: eff

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  1. identicon
    Anonymous Coward, 22 Jan 2009 @ 9:04am

    Reexamination and Reissue practice is a common everyday occurrence before the USPTO. In virtually every case it is not because the patentee has deliberately overclaimed what he/she was entitled to in view of the prior art considered during prosecution, but because of unknown, later discovered, pertinent prior art. Had it been known at the time prosecution of an application was taking place the claims would certainly have been amended to account for it.

    Perhaps there as some who wish to view relevant prior art in a manner aking to an ostrich with its head in the sand, but by far the majority of attorneys welcome the discovery of as much relevant prior art as is possible during the prosecution process. It saves a lot of downstream work, it allows the claims to be limited appropriately, and it results in an end product, the patent, that is far more likely to reflect the true contribution of the inventor(s).

    I happen to openly welcome as best a set of prior art references as is possible. Why spend time and money to do an imperfect job? It is so much easier to do the job correctly the first time.

    That said, I also happen to subscribe to the notion that patent efforts should not be directed to every nickel-dime improvement. I see no good reason to spend copious amounts of money that in the scheme of things do virtually nothing to preserve/enhance the business interests of a client. Of course, this is a more difficult system to implement because it requires an intimate relationship between the attorney, the technical community, the manufacturing community, the product support community, the financial community, the business development community, the strategic development planners, etc. Unfortunately, in far too many cases the only significant relationship that exists is limited to the attorney and the purported inventor(s). In my view this is plainly wrong and contributes in large degree to the submission of applications that represent little more than the expenditure of client money that does not even come close to withstanding scrutiny under any cost/benefit analysis.

    Patents do have a proper role, but it is important to bear in mind that they are merely one of many tools available, and in many instances are inferior to some of the other tools. Understanding this, however, takes time and experience developed over years of practice, and in most law firms and companies the task of preparing patent applications falls upon relative neophytes not very far removed from having graduated from law school.

    If the goal is to try and help a client realize its business plan for new products in his/her current and reasonalby forseeable future markets, it makes little sense to pursue protection that is inconsistent with this goal.

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