Ex Parte Reexamination of Patents

The USPTO (U.S. Patent and Trademark Organization) offers a method for the ex parte review of a previously issued patent.

This means that a single party (ex parte means from one party) can request the USPTO to review a patent to determine whether it was issued in error. Such a procedure would not involve the entity holding the patent.

The USPTO has specific criteria for determining when an ex parte review can be permitted, hinging on "a substantial new question of patentability".

This process could occasionally be an option for SDOs (standards development organizations) that are not directly involved in a patent infringement lawsuit involving the use of their standard. If the SDO wishes to defend the free use of their standard in cases for which an encumbering patent seems trivial or non-original, this might be something to consider.

This post (and any post on this blog site that touches on a legal subject) is not legal advice. This is just a discussion of a published USPTO document.

-Jules Berman

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My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents.

tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining, patent infringement, sdo, specifications, standards, uspto

Searching patents related to DICOM

In yesterday's blog, I described how standards developers and standards users can search the USPTO (US Patent and trademark organization) for patents that might encumber a data standard.

As an example, let's look at some specific patents (issued or pending) related to DICOM (Digital Imaging and Communications in Medicine).

A search for pending patents (patent applications) on the term ttl/DICOM pulls just those patent applications that have DICOM in their title. A second search (through the issued patent search engine available from the same site) would pull issued patents.

Here is the output for pending patents submitted since 2001 and containing DICOM in the title.

1	20070041647	Method for increasing the flexibility of DICOM tags management in application-specific integration
2	20060282447	Ndma db schema, dicom to relational schema translation, and xml to sql query transformation
3	20060259513	System and method to submit image requests to DICOM server
4	20060259463	System and method for the automatic generation of a query to a DICOM server
5	20060242268	Mobile radiology system with automated DICOM image transfer and PPS queue management
6	20060242148	System and method for integrating ancillary data in DICOM image files
7	20060239589	System and method for definition of DICOM header values
8	20060197968	Dicom print driver
9	20060064328	System and method for utilizing a DICOM structured report for workflow optimization
10	20060056680	3D volume construction from DICOM data
11	20050246629	Framework of validating dicom structured reporting documents using XSLT technology
12	20050237776	System and method for patient controlled communication of DICOM protected health information
13	20050031181	Method and system for analyzing bone conditions using DICOM compliant bone radiographic image
14	20040205563	Specifying DICOM semantic constraints in XML
15	20040025110	Precise UML modeling framework of the DICOM information model
16	20030149680	Methods and apparatus for streaming DICOM images through data element sources and sinks
17	20030101291	Application programming interface for provision of DICOM services
18	20020143824	DICOM to XML generator
19	20020143727	DICOM XML DTD/Schema generator
20	20020133373	Integration of radiology information into an application service provider DICOM image archive and/or web based viewer
21	20020052866	Methods and apparatus for streaming DICOM images through data element sources and sinks

If the word DICOM is in the title, it's a good bet that the patent will involve a method that uses the DICOM standard. The claims of such methods may possibly cover a user's intended uses of the standard. Had we simply done a search on the word "DICOM" without limiting the location of the search term to the title of the patent application, we would have retrieved 1144 patents from the USPTO patent application database. And these would just be those patents that are currently under review!

Notice that several of these methods seem to involve common tasks for informaticians who wish to tease out annotated data from a DICOM image and port the data and metadata into XML.

In the next blog, we'll look at one of the DICOM patents to determine the claims of the patent and the assignee of the patent.

-Jules Berman

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Science is not a collection of facts. Science is what facts teach us; what we can learn about our universe, and ourselves, by deductive thinking. From observations of the night sky, made without the aid of telescopes, we can deduce that the universe is expanding, that the universe is not infinitely old, and why black holes exist. Without resorting to experimentation or mathematical analysis, we can deduce that gravity is a curvature in space-time, that the particles that compose light have no mass, that there is a theoretical limit to the number of different elements in the universe, and that the earth is billions of years old. Likewise, simple observations on animals tell us much about the migration of continents, the evolutionary relationships among classes of animals, why the nuclei of cells contain our genetic material, why certain animals are long-lived, why the gestation period of humans is 9 months, and why some diseases are rare and other diseases are common. In “Armchair Science”, the reader is confronted with 129 scientific mysteries, in cosmology, particle physics, chemistry, biology, and medicine. Beginning with simple observations, step-by-step analyses guide the reader toward solutions that are sometimes startling, and always entertaining. “Armchair Science” is written for general readers who are curious about science, and who want to sharpen their deductive skills.

Data standards should not be monopolistic

In a prior blog, I listed 16 good practice suggestions for SDOs (Standards Development Organizations).

One suggestion was:

"Make optional standards, not required standards, so that the user community is not locked into one implementation."

This suggestion seems to defy common sense. The purpose of a standard is to provide a common process for a user community. Wouldn't a standard lose its significance if it were designed to be one of many?

First off, remember that I'm only addressing data standards (not physical standards). Data standards are special because, in many cases, you can interconvert data from one standard to another quite easily. Data standards are usually developed to facilitate data exchange and interoperability in a defined data domain. It is seldom the case that a given data standard will have universal appeal. We have dozens (if not hundreds) of image format standards. The multiplicity of standards can be useful. There are times when a GIF format is superior to a JPEG and other times when a PNG format is appropriate. Most people who work with images have robust file conversion applications that make it easy to exchange many different image formats.

Yet somehow, when a committee gets together to write a data standard, they often develop a very self-centered culture that tries to eliminate the "competing" standards.

If a data domain has one standard, then patents that encumber the uses of the standard will impact negatively on everyone. If a data domain has multiple standards, then the user community can simply switch between available standards to avoid patent prosecution. They might use one standard to accomplish a task that is exempt from patent infringement (typically the task for which the standard was designed and for which no patents apply). If/when a newly patented use of the one standard emerges, the user can avoid legal headaches by switching to another data standard not covered by the patent. It's really quite simple.

Members of data standards committees should understand that the purpose of any standards effort is to serve the user community with improved methods for exchanging data, for software interoperability and for enhanced opportunities to use data. A data standard is just an arbitrary document. It hardly even rates as a "thing" since it has no physical existence. SDOs should try to make new standards that fill a particular utility "niche" not covered by other standards in the same domain. If users gravitate to the standard in preference to other standards, that's OK. But crushing the "competition" should not be a goal for any SDO.

-Jules Berman

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My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents. If you like the book, please request your librarian to purchase a copy of this book for your library or reading room.

tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining

Protecting the basic uses of a Standard

Yesterday's post took an example from DICOM to describe how the uses of an existing standard can be patented. A standard, even if it is a free and open standard, has little value if the intended uses of the standard are encumbered by patents. This would mean, in effect, that the user community must license the standard for uses that are covered by patents (or risk infringeing on one or more patents).

What can SDOs (Standards Development Organizations) do to prevent this problem? I am not a lawyer, and cannot give legal advice, but I would suggest that the following approach is sensible:

When the standard is being developed, the SDO should think about all the intended uses for the standard and publish a document (as an SDO white paper or as a journal publication) that describes, in detail, the ways that the standard can be used, supplying source code, instructions, sample implementations, user commentary, citations to relevant publications in the field, etc. This would help create prior art for the described uses of the patent. When the SDO provides public documentation for the common, expected uses of the standard, it would make it difficult for someone to come along and claim the those methods in a patent.

Also, SDOs should be prepared to work with their Patent Office to explain how patent applications related to their standard may be preceded by scientific art or may provide no new or non-obvious functionality to the standard. As described in an earlier post, the USPTO recognizes that software patents are a difficult area and has a program to seek guidance from the software community.

Suppose an inventor conceives of a totally new use of an existing standard and develops a patentable process or application for this new use. How would an SDO defend the standard in this case. Well, there might not be any defense. After all, if someone really comes up with a novel use for a standard that has a real-world application, why shouldn't their intellectual property be covered by a patent? The problem for SDOs comes from patents that cover customary, expected uses of a patent. SDOs with nothing in place to protect the basic uses of the standard have not done their job very well.

-Jules Berman

---

My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents. If you like the book, please request your librarian to purchase a copy of this book for your library or reading room.

tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining

Bad ideas to stop patent farmers

Earlier, I posted a blog that described patent farming (inserting patented methods into new standards with the intention of asserting the patent against the users of the standard). Yesterday, I suggested 16 steps that SDOs can take to reduce their vulnerability to patent farmers

SDOs sometimes pick the wrong tactics to protect themselves from patent farmers. Here are some ideas that are likely to be counterproductive.


1. (Bad idea) Try to get the U.S. government to create the standard.

2. (Bad idea) Make the standard a requirement for your user community (usually done by lobbying the government and/or user organizations.

3. (Bad idea) Encumber the standard under a pre-paid user license.

4. (Bad idea) Focus the standard for a single imagined user (e.g., radiology
departments)whose needs may not fall under an existing patent claim.

5. (Bad idea)Make no special accommodations for research/testing activities that arise from or use the standard.

6. (Bad idea) Pretend there is no problem and try to marginalize people who disagree.

In a future blog, I'll explain why these ideas are bad for the SDO or the intended user community.

- Jules Berman

tags: intellectual property, ip, patent farming, patent infringement, risk, sdo, standards development organizations

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Science is not a collection of facts. Science is what facts teach us; what we can learn about our universe, and ourselves, by deductive thinking. From observations of the night sky, made without the aid of telescopes, we can deduce that the universe is expanding, that the universe is not infinitely old, and why black holes exist. Without resorting to experimentation or mathematical analysis, we can deduce that gravity is a curvature in space-time, that the particles that compose light have no mass, that there is a theoretical limit to the number of different elements in the universe, and that the earth is billions of years old. Likewise, simple observations on animals tell us much about the migration of continents, the evolutionary relationships among classes of animals, why the nuclei of cells contain our genetic material, why certain animals are long-lived, why the gestation period of humans is 9 months, and why some diseases are rare and other diseases are common. In “Armchair Science”, the reader is confronted with 129 scientific mysteries, in cosmology, particle physics, chemistry, biology, and medicine. Beginning with simple observations, step-by-step analyses guide the reader toward solutions that are sometimes startling, and always entertaining. “Armchair Science” is written for general readers who are curious about science, and who want to sharpen their deductive skills.