"Don't try this at home"

"Don't try this at home"

Posted May 27, 2006 16:47 UTC (Sat) by stevenj (guest, #421)
Parent article: U.S. PTO smashes JPEG patent (Linux-Watch)

At the recent FSF annual meeting, I asked Eben Moglen to comment a little more on this strategy of asking for ex parte re-exams. The reason I asked is that I've talked to patent attorneys about this sort of thing, and they generally cautioned against it.

The main risk of an ex parte re-exam is that the patent owner holds most of the cards in the process. After your initial request for re-exam, you are cut out of the loop, and the patent holder gets to make arguments back and forth with the patent office that you have no opportunity to rebut. (And we all know how feeble the patent office can be about rejecting specious software-patent arguments.) As a result, you can actually end up strengthening the patent, because any claims that survive the re-exam are presumptively valid in light of all the new prior art you submitted.

Eben agreed that there were definite risks to the process, and explained that PUBPAT is focusing purely on egregious cases where the prior art is extremely clear and the patent impact is large. But he also said, "Don't try this at home," since an incautious request for re-exam can end up worse than no re-exam at all.

Eben also pointed out that, even if at the end of the process the patent holder succeeds in getting the claims allowed, the request for re-exam does obtain a significant period of patent-immunity (as well as imposing a substantial expense on the patent holder). If I remember correctly, while a re-exam is ongoing, the patent holder can't prosecute patent infringement actions.

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