[GSDI Legal Econ] Patent re-examinations in US Patent Office having a real impact

[Roger Longhorn]

Over the past few years there has been much discussion of the impact of 
patenting software in numerous fields, including GIS and location- or 
place-based information services. Some of these claims have been 
exceedingly sweeping and many in the GI/GIS community expressed concern 
that the patent offices (in both the US and Europe) were not taking 
sufficient notice of 'prior art' relating to many of these claims - the 
existence of which would either negate the patent claim or narrow its 
applications.

Now, Emily Berger of the EFF (Electronic Frontier Foundation), has 
published a short article on the impact of re-examination at the US PTO.

http://www.eff.org/deeplinks/2008/03/reexamination-improves-patent-quality-look-latest-uspto-filing-data

The conclusion of her analysis of the most recent re-examination 
statistics from the US PTO are:

"In other words, the PTO grants 92% of the reexamination requests it 
receives, and in 3 out of 4 of those cases, the requests are having a 
substantial effect on the claims."

The statistics summary (2 pages) is available at 
http://w2.eff.org/patent/reexam-stats-dec-2007.pdf

Kind regards

Roger Longhorn
co-Chair