Last week, IBM got called out by the Electronic Frontier Foundation for patenting an “Out-of-Office Electronic Mail Messaging System,” also known as the automatic replies that you can set up while on vacation.
After being rightfully criticized for trying to claim ownership of a ubiquitous concept, the company told Ars Technica that it had “decided to dedicate the patent to the public.” But what does that mean, exactly?
Any company or individual can forfeit intellectual property rights in a patent by filing a disclaimer under Title 35, section 253 of the U.S. Code, which says that “any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.” That’s what IBM did, filing disclaimers on each of the 20 claims in its out-of-office email patent.
Normally, patents expire 20 years after they are filed. The reason for this is so that inventors get to profit from their invention, but the public gets the benefit of seeing the mechanism of the system laid out — and after two decades, anyone can make use of the invention.
Dedicating a patent to the public is effectively the same as having the patent expire early. Although IBM still technically owns the patent, there is nothing to enforce. Anyone can now use this “invention” without fear of being sued by IBM.
That’s good, because almost every email provider has an out-of-office reply function, and it would be ludicrous to ask them to pay a license fee to IBM. Patents are supposed to be for inventions that are novel and non-obvious, and the out-of-office email system definitely failed on the first criterion and arguably on the second. EFF called IBM’s patent “stupefyingly mundane” and “nonsense,” and pointed out several examples of out-of-office email systems that predated the 2010 version IBM patented.
How did we even get to this point? How did the USPTO approve a patent that was so clearly unoriginal?
The problem with software patents is widely acknowledged within the technology industry.
The EFF’s Daniel Nazer, former fellow at Stanford Law School’s Center for Internet and Society, has been tracking frivolous patents for the organization’s “Stupid Patent of the Month” series. Past examples include a patent for what is essentially teamwork (or as The Penn State Research Foundation called it, “Agent-based collaborative recognition-primed decision-making”), one on a particular method of filming yoga class videos, and one for the process of using passwords to verify someone’s digital identity.
Dumb software patents are especially common. The language used in the filings is usually vague and imprecise, which opens up an opportunity for predatory lawsuit filers dubbed “patent trolls” who buy patents solely for the purpose of being able to extort companies for licensing fees or lawsuit settlements. In the 2014 decision known as Alice vs. CLS Bank, the Supreme Court ruled that abstract ideas implemented on computers were not eligible for patent. This marked a major strike against the patent trolls, who would now be unable to patent such things as computerized meal planning and, one would think, out-of-office messages.
However the USPTO is notoriously understaffed, with patent examiners often working under time limits and without clear guidelines for assessing patent applications. The Alice decision should have prevented IBM’s patent from being approved, but here we are, with EFF’s internet shaming having been more effective than the USPTO.
The problem with software patents is widely acknowledged within the technology industry, and some companies have taken steps to make it better. In 2012, Twitter announced its Innovator’s Patent Agreement, in which it pledged to only use patents from employee inventions in defensive litigation. “We will not use the patents from employees’ inventions in offensive litigation without their permission,” Twitter wrote in a blog post. However if it wanted to go on offense, as Geekwire quickly pointed out, all Twitter would have to do is ask for permission, and a current employee would be unlikely to refuse.
Similarly, Tesla’s 2014 Patent Pledge promised not to “initiate patent lawsuits against anyone who, in good faith, wants to use its technology.” However these “good faith” terms included a stipulation that any company using Tesla’s patents for free would not be allowed to sue Tesla for using said company’s own patents, according to the automotive tech blog Electrek.
Another initiative, the Defensive Patent License, was designed by a team of professors, patent policy scholars, and tech entrepreneurs. Its members pledge not to take offensive legal action against any other DPL member.
Google’s patent initiative, The LOT (License on Transfer) Network, provides protection against patent trolls. Companies that join LOT agree that if any of their patents fall into the hands of patent trolls, all LOT members will be immune from litigation.
Agreements like these are “compromises that let the patent owner sue some people for patent infringement but not others,” Charles Duan, director of the Patent Reform Project at Public Knowledge, a public interest nonprofit that focuses on intellectual property law in the digital sphere, said in an email.
Instead of an agreement or a promise, however, these companies could dedicate their patents to the public. This would prevent the frivolous fighting over patents that Twitter and Tesla say they oppose. “As far as companies doing the right things go, filing a disclaimer of a patent is the strongest way to open up the technology to the public,” Duan said.
Unfortunately, it’s very rare for companies to dedicate patents to the public. “The closest situation I can think of is Elon Musk ‘dedicating’ some Tesla patents to the public, but I think he just did that with a public statement, not an actual filing,” Duan said. That’s accurate — Tesla did not file for any disclaimers on those patents.
That’s because there are many benefits to hoarding patents in addition to protecting against litigation. Patents can be used to attack competitors, such as when Apple sued Samsung for ripping off the design of the iPhone. They are also a source of profit because the concepts they protect can then be licensed or sold.
When companies are spending more on patent litigation than research, something is wrong.
IBM, the multinational technology corporation behind the ATM, the ancient programming language FORTRAN, and many other things, has held the most patents in the United States for the past 24 consecutive years. The company makes the case that its high rates of patent acquisition are a measure of its commitment to research and development.
However, there is little evidence of a link between patents and innovation. A more likely incentive may be the profit that comes from selling its patents to Twitter, Facebook, and other software giants so that those companies can defend themselves from future intellectual property suits. When companies are spending more on patent litigation than on in-house research, it’s a clear indicator that our patent system needs serious restructuring.
If companies are truly committed to driving innovation forward, patent hoarding is not the way to go. Neither is the type of self-regulation seen in conditional agreements like those of Twitter, Tesla, and Google. For companies that already own patents — whether for frivolous pseudo-inventions or legitimate new technology — making a dedication to the public is a good way to guard against lawsuits and contribute to human progress.
As for companies that are considering purchasing patents to prevent other companies from laying claim to ideas, Duan pointed to an old IBM practice of publishing papers on its new work. “IBM actually did this for years — they produced the ‘IBM Technical Disclosure Bulletin’ that just revealed new inventions without trying to get a patent on them, and those publications also prevented others from trying to get patents on the same inventions, meaning that IBM had effectively ‘dedicated’ those inventions to the public without ever getting the USPTO involved.”
That solution would discourage dumb patents, cut down on costly litigation, and give the overwhelmed patent examiners at the USPTO a break. Here’s hoping more companies follow IBM’s latest example.
