Simple Test for Eolas Patent

The USPTO has a vital opportunity in this case to rediscover the fundamental simplicity of patent protection for inventions.

The United States patent and trademark office needs to be guided not only by the Constitution but also by the wisdom of Albert Einstein—who famously admonished us, "Things should be made as simple as possible, but no simpler." We call upon the USPTO to keep Einsteins dictum in mind as it re-examines the Eolas patent, No. 5,838,906, titled "Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document." If the USPTO process can keep its questions regarding this complex-sounding patent simple, the answers produced could provide a much-needed course correction for U.S. technology law.

What the Constitution says is simple enough: "The Congress shall have the power. ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." This clause is unique in stating a reason for giving a power to Congress, instead of merely describing the power given. The public interest must be the first consideration.

Heres more thats less simple. To be eligible for patent, an invention must be novel—not merely in the copyright sense of independent development but in the absolute sense of not being already in use by others. The Eolas patent is being challenged on these grounds, termed "prior art" in patent vernacular. Specifically, the Viola browser project demonstrated the ability to embed and remotely invoke a program in an HTML document, and it did so in 1993: The application for the Eolas patent was not filed until October 1994, six weeks after an e-mail exchange between Viola developer (Perry) Pei-Yuan Wei and patent claimant Michael Doyle that discussed Violas history and status. The Eolas application mentioned the Cello and Mosaic browsers, with their less integrated program invocation features, but did not disclose Doyles knowledge of the Viola work.

It may well be, as Doyle and his co-inventors claim, their patent describes a more general mechanism than the one Viola provided. This is still insufficient grounds to justify a patent. They must also show their innovation displayed, in the words of court decisions almost 50 years old, "more ingenuity ... than the work of a mechanic skilled in the art." Centuries of patent practice have established that a patentable invention must not merely require effort in its development. It also must not be a clearly predictable improvement that any competent practitioner would have made.

The USPTO has a vital opportunity in this case to rediscover the fundamental simplicity of patent protection for inventions. The IT industry is constantly pressured to keep its works simple enough to be useful. It is only fair for legislators, judges and regulators to be subject to the same imperative.

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