Originally created 07/18/04

Getting patents revoked is a tough task



SAN JOSE, Calif. - A small company called Acacia Research Corp. went after some of the biggest names in broadcasting last month, suing nine companies for an estimated $100 million for allegedly violating its patent on streaming video.

That earned Acacia a spot on what the Electronic Frontier Foundation considers a top 10 list of intellectual property ignominy: patents the online civil liberties group is seeking to strike down as unwarranted and harmful to innovation.

"Good luck," said Paul Ryan, Acacia's chief executive. "Their chances are pretty remote."

Part fighting words. Part truth.

Only 614 of the nearly 7 million existing patents have been revoked, according to the U.S. Patent and Trademark Office, and 3,927 patents have been narrowed since the agency began conducting re-examinations in 1981.

A challenger must find written evidence, called "prior art" in patent parlance, showing others developed the technology before the patent application was filed - a formidable task that consumes a cottage industry of patent researchers and lawyers.

One-time startup BountyQuest set out in 2000 on such a quest. It wanted to debunk questionable patents by letting interested parties offer rewards of $10,000 or more for hard-to-find prior art. But there were few takers and the business failed.

Even when prior art is presented, re-exams are rare. The patent office held only 6,136 between the time the agency was authorized to do so in July 1981 and the end of March 2004, said Brigid Quinn, a patent office spokeswoman.

The Acacia patent the EFF objects to is on "the transmission of digital content via the Internet, cable, satellite and other means."

Another on its list, owned by Clear Channel Communications Inc., covers the distribution of digital recordings right after concerts.

"These companies are trying to claim a monopoly on the tools of free expression," said Jason Schultz, staff attorney at the foundation.

The group's list, chosen from 200 suggestions solicited through its Web site, focuses on patents it contends are being unfairly used to demand licensing fees from rivals or individuals.

Greg Aharonian, publisher of the Internet Patent News Service and founder of www.bustpatents.com, questions the validity of a patent granted to Microsoft Corp. in June covering the use of the human body to transmit power and data, or as an "intrabody communications" network.

"There are plenty of people trying to bust patents. If patents are really stupid, they will go down, but it'll cost money and take some time. The real question is how do we help the patent office so they don't issue the crap in the first place?"