Sunday, January 27, 2013

The Rube Goldberg Patent Term Calculator

- A Rube Goldberg - a comically involved complicated invention, laboriously contrived to perform a simple task. - Webster's New World Dictionary.

The first thing we did after we read the January 25th press release and accompanying information on how to use the new USPTO Patent Term Calculator was to check and make sure that it wasn't Rube Goldberg's birthday.  We thought that the new patent term calculator was the Patent Office's way of honoring the famous inventor, sculptor, author, engineer, known for his cartoons depicting complex gadgets that perform simple tasks.  To our disappointment, it was not Mr. Goldberg's birthday and sadly it isn't April 1st.

For those of you who haven't seen the press release we present it here for your reading pleasure:

"USPTO Releases New Patent Term Calculator
Downloadable Resource Helps Determine Estimated Expiration Date of Patents 
"Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the release of a new calculator that enables members of the public to estimate the expiration date of a utility, plant, or design patent. The calculator can be downloaded at
“This new calculator is another educational tool we’re providing to our nation’s innovators and entrepreneurs,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “In conjunction with the Intellectual Property (IP) Awareness Assessment Tool we released in March, the calculator can help manufacturers, small businesses, entrepreneurs, and independent inventors assess and improve their knowledge of IP. 
The calculator provides a best estimate of a patent’s expiration date, based on a comprehensive list of factors than can be found in USPTO records. Before relying on an expiration date, individuals should always carefully inspect all relevant documents available through the USPTO, court records and elsewhere, and consult with an attorney."

Sharing the objective of making patent information easier to find for regular joes (and joettes), we were excited about the prospect of something that would advance the ball by helping folks figure out what patents were enforceable and which are not.  We were expecting an online tool where you enter a patent number and get back an expiration date and maybe a status, something delightfully simple.

The patent expiration date is an important and largely inscrutable piece of information.  Inventors and entrepreneurs need to know if they need a license to patented technology and for how long.  Likewise inventors and innovators also need to know if the inventions disclosed in a patent are free to use. It's part of that whole advancing knowledge and promoting innovation part of the patent compact.  Being able to find out if a patent is enforceable or not is an essential piece of information on this asset.

Instead what we found is a tool that will help "the public" understand what patent professionals deal with every day.  A tool that in a single download will fuel the patent haters and the patent system is broke crowd.   (And guarantee patent attorney full employment.)

Here's how the Patent Term Calculator Works.  (The Rube Goldberg part starts here…)

First, the Patent Term Calculator is a downloadable Excel spreadsheet. USPTO assumes that the ‘public’ is  spreadsheet-savvy; and has access to a spreadsheet program that is compatible with whatever macros and/or formulae it has built in to this spreadsheet.

For most folks it won't work on their mobile devices unless they already have a spreadsheet app on their smartphone or tablet.  Not very new millennium.

Next, after downloading…

"Please enable macros in order to use all features of the calculator."

So now we have a downloadable piece of software from a public site where we are being instructed to enable the macros.  Macros are a primary source of viruses, spyware, and other  mechanisms for viruses to enter a computer. The NIST Guide to Malware Incident Prevention and Handling specifically instructs government cyber security personnel to restrict macro use.  (Check out NIST 800-83)

The calculator contains prompts to enter specific information related to the patent in order to help in estimating expiration dates. (Doesn't USPTO know a definitive expiration date?)

"This information can be obtained from USPTO’s online systems, links to which are provided below.”

Ok, download the spreadsheet, have a chat with your resident cyber security officer before you enable macros, scan for malware, crank open the USPTO spreadsheet, and get ready to rumble.  Then get your list of links to USPTO systems.

Next the "Factors to Consider for Patent Term Calculations."

“A patent owner or the public must consider the following factors in calculating the expiration date of a patent for utility and plant applications." (Ok now it gets scary, the patent owner is part of the target audience for the Patent Term Calculator.  What?  They don't know the expiration of their patent either?)

"The factors include the following:  (We added the bullet points for clarity.  It's a long list of factors. Commentary in  {} brackets is ours.

  • Type of application (Utility, Design, Plant)  {Doesn't the patent number tell you this?}
  • Filing date of the application  {Isn't this data created by USPTO and associated with the patent number? OK, there are international filing dates and PCT dates but couldn't USPTO at least provide the US basics?}
  • The grant date of the patent {Ditto - see filed date above. }
  • Benefit claims under 35 U.S.C. § 120, 121 or 365(c)m  {Huh?  Where do you find these? Oh, a little light reading on the Uruguay Round.}
  • Patent term adjustments and extensions under 35 U.S.C. § 154  {More legal mumbo jumbo and patentista speak.}
  • Patent term extensions under 35 U.S.C. § 156 {Ditto on the legal mumbo jumbo}
  • Terminal disclaimer(s)  {A term we hate when working with real people.}
  • Timely payment of maintenance fees.  {Doesn't USPTO know about the timely payment of maintenance fees, can't they help the regular joes and joettes with this? Besides the rules on maintenance fees, when they are paid, when things can be reinstated are also hard to understand and even more unknowable than the patent expiration date.  The patent management firms are safe.}

Right around this time intellectual vertigo starts to set in.

Next go on the tour of USPTO public systems to harvest the information needed to use the prompts to enter specific information related to the patent in order to help in estimating expiration dates.  Let us not forget that all of the systems you need to use for this drill  have different user experience and interface interactions and require lots of browser/operating system/Adobe PDF alchemy to get everything to work.

USPTO then suggests that users of the Patent Term Calculator access PTO links to explore the various factors that contribute to the calculation of a patent term using their system resources:

Public PAIR portal
Images of Published Patents
Patent Term Extensions under 35 U.S.C. § 156
Patent Maintenance Fees (can also use Fees tab in PAIR portal)

Isn't this the Patent Office?  Aren't these the people who are supposed to know the definitive answer on when a patent expires?  Aren't these the guys who grant the patents and collect the fees?  Does USPTO really expect that the average person interested in learning when a patent expires to use or be able to make sense of PAIR?

Then there is the problem of having the right browser/operating system voodoo to be able access the nasty TIFF patent images and the other public information resources available through the USPTO website.  Are regular joes going to know to look for the Certificates of Correction at the back of the image file?  Or to know how to search all these different places and what to look for when they get there?

Can the public make sense of 35 U.S.C § 156?  The pharma and biotech patentistas know about this one.  (Here's useful link to USPTO 156 page.)  A note that this type of adjustment to patent expiration dates is related to pharmaceuticals might have been helpful so an inventor trying to patent a new wrench doesn't have to waste any time.

The level of subject matter knowledge USPTO expects for a citizen using their new Patent Term Calculator just to figure out an estimate  of the expiration date of a single patent is breath taking in its expansiveness.

Why  can't USPTO provide the information interactively?  Enter a patent number, get the date?  This is an example of how truly inaccessible the innovation, invention, and patenting system in this country is to the average member of ‘the public’.

The Office says that “This calculator is only an educational tool.” A disclaimer which basically says use this tool at your own risk and then consult a patent attorney.  This is a another affirmation that you can't really be sure of anything in the patentsphere and that even figuring out the expiration date of a patent requires a patent attorney or two.

This tool adds fuel to the "patent system is broken" fire.

(We'll deal with figuring out priority dates in some other posts.  We're too tired to do it now.)