The US Patent Office just (in 2017!) awarded IBM a patent over out-of-office email

On January 17, 2017 -- yes, 2017 -- the USPTO granted Patent 9,547,842 to IBM: "Out-of-office electronic mail messaging system."

It was originally filed in 2010, after decades during which companies -- including IBM! -- had created and fielded out-of-office email systems that constitute invalidating prior art.

The patent was granted despite the groundbreaking 2014 ruling in Alice v. CLS Bank, which was supposed to end the practice of allowing companies to patent obvious things merely because they could be "implemented on a generic computer." The patent examiner tried to apply this standard to one small element of IBM's application, but IBM's lawyers talked their way out of even this concession.

If and when IBM's patent is re-examined, the Alice standard will be the deciding factor -- which may be why IBM is lobbying so ferociously for Congress to pass legislation undoing Alice.

IBM's '842 patent is the recipient of this month's Electronic Frontier Foundation Stupid Patent of the Month award.

At one point, the examiner did reject some of the application’s claims under Section 101 of the Patent Act (which is the statute the Alice decision applies). But IBM overcame the rejection simply by arguing that the patent’s method was implemented in computer hardware. In January 2013, IBM noted that “it was agreed [between IBM and the patent examiner] that the rejection ... under 35 U.S.C. § 101 could be overcome by reciting that a hardware storage device stores computer readable instructions or program code.” Even if that was a reasonable response in 2013, it certainly was not after Alice. Yet the Patent Office never revisited the issue. We have submitted multiple rounds of comments (1, 2, 3, and 4) to the Patent Office urging it to be more diligent in applying Alice.

Even if the claims of the ’842 Patent were non-abstract, they still should have been rejected as obvious. We’ve written before about how the Patent Office does a terrible job of finding and considering real-world evidence when reviewing patents. In fact, it seems to operate in an alternative universe where patents themselves provide the only evidence of the state of the art in software. The prosecution that led to the ’842 Patent is a stark illustration of this.

Stupid Patent of the Month: IBM Patents Out-of-Office Email [Daniel Nazer/EFF]

Notable Replies

  1. If the USPTO fails to give IBM a patent, and IBM sues them, they are a party and have to defend their action in court. They have to have their lawyers go to court and defend their not granting a patent. If they give IBM an poopy patent and somebody sues because there is prior art, USPTO is NOT a defendent in the action, it is between whomever and IBM. So there is a tendency to be very liberal in granting patents to well funded applicants.

  2. The US Patent Office just (in 2017!) awarded IBM a patent over out-of-office email

    No, it didn't.

    (Disclaimer: I am a patent attorney - but I am not IBM's patent attorney, I've had no role in this patent, and the first time I encountered any of this was 10 minutes ago in this BB post.)

    Here's the part of the independent claim that you missed:

    in response to said determining that the current date is PRIOR TO the start date ... attaching the extracted availability indicator metadata to the e-mail...

    In other words:

    • I tell my computer I'm going to be gone from, let's say, March 15th through March 22nd.

    • Someone emails me on March 3rd.

    • In an outgoing reply to that message, my email client automatically attaches a notification like: "Please be advised that I will be out of the office from March 15th to March 22nd."

    This is a future-looking out-of-office notification. Do computers typically do that in 2017? No, they don't. They notify you of the CURRENT out-of-office period, but not a future out-of-office period.

    You may think that's a trivial improvement, and that the patent system should not be awarding patents for very small incremental improvements like that. We can certainly have that discussion - but that's a different assertion than "the patent office (in 2017!) issued a patent over out-of-office email notifications." Because that's not what the patent office did in this case.

    Now, it's true that the misunderstanding over the scope of this patent is partly because it's poorly written: the specification provides very little help in determining the important part of the claim, what's actually novel and significant. Many applicants, including IBM, have a terrible habit of writing their patents with no context and minimal explanation. They absolutely shouldn't write them that way, I agree. These obfuscated and lazy patent-drafting practices harm the patent system and the public, I agree.

    (And I don't write my patents that way. My patents read: "Here is a conventional technique for solving a problem. Here are some disadvantages to that technique. Here is an alternative way of solving that problem, and here are the advantages of solving it that way." That's how practically every patent should present practically every invention.)

    But it's ALSO true that critics of the patent system, including the EFF, have a terrible habit of either failing to understand patents or intentionally mischaracterizing them, and therefore lying about the patent system with "look at this travesty" types of posts.

    Stop doing that.

  3. And another thing:

    On January 17, 2017 -- yes, 2017 -- the USPTO granted Patent 9,547,842 to IBM: "Out-of-office electronic mail messaging system."

    Stop summarizing patents according to the title. That's not what the patent covers.

    Look - on February 2nd, 2017, the patent office issued a patent with the title:

    ENGINE

    That's the title, in all its glory. Is that what the patent covers? The concept of an engine? Any possible configuration of any engine that's ever invented or ever will be? No, it simply covers one type of engine, which the broadest claim recites as:

    1. An engine comprising: an oil control valve which is built in a cylinder head, and which is configured to control a pressure of oil to be supplied to a variable valve mechanism via a camshaft; and a cam cap which is fixed to an upper face of the cylinder head, and which is configured to rotatably support the camshaft between the cam cap and the cylinder head, as a flow passage for the oil to be force-fed from an oil pump to the oil control valve, the cam cap including: a lateral passage which is formed inside the cam cap, and which is extended in a direction along the upper face of the cylinder head; and a downward passage which is extended downward from the lateral passage so as to serve as a downstream side flow passage of the lateral passage, and which is configured to guide the oil toward the oil control valve.

    The claims define the scope of the patent. The title merely describes its general field of technology - much like this patent relates to the field of out-of-office messages, which of course it does.

    This type of mischaracterization occurs over and over again. Are critics of the patent system intentionally lying when they post these breathless "look what just got patented!!" posts, or are they so badly misinformed that they don't understand that the title does not define the scope of the patent? I mean, it's one of the two, and they're both bad.

    Of course, the EFF did not issue any breathless proclamation over the travesty of the patent system issuing a patent for an "ENGINE." Why? Because the EFF doesn't care about patents in mechanical engineering - nor chemical engineering, nor electrical engineering. It only cares about patents in software, because it's on this crusade to push back against software patents. Hence its frequent mischaracterizations about software patents.

    Again: stop doing that.

  4. Daniel Nazer addresses this in the EFF post:

    "Patent awarded for a minor improvement to out-of-office email" is a very different headline than "patent awarded for out-of-office email (in 2017!)".

    The first is a point that we can argue.

    The latter is sensationalized and absolutely not true.

    Corey: this is fake news.

    As I wrote above, we can definitely argue over whether this specific improvement should have been patented. And I can certainly raise a case for why it should be:

    (1) It's not trivial if it is a useful improvement (I certainly wish computers had been configured to do this all along);

    (2) Computers don't do that specific thing today (and no one has argued that they do); and

    (3) Minor, incremental advances get patented all the time in every other field, and they are not only routine but totally uncontroversial.

    But that is a topic for another post - one that isn't fatally mischaracterized as you and the EFF have done here.

  5. Something most certainly can be both useful and trivial (in the sense of trivial to do, which is how it is used here). For example, it would be trivial for me to stop leaving the toilet seat up, but my girlfriend would definitely find it useful.

    Computers have been able to do this at least since the Mutt e-mail client allowed you to populate your signature with the output of a dynamically-run script rather than the contents of a static file (2002 at latest).

    Were these genuine, albeit minor, advances in their respective fields? Were they non-obvious to those familiar with the state of the art? Because as a possibly naïve layman, I thought that's what patents were for: to reward those whose inventions expand the boundaries of knowledge, even if only in small, incremental ways.

    This is not such an invention. This is not an invention at all. This is a feature request. It does nothing to advance the state of the art. At best it gives some (badly worded and largely untestable) requirements. There is nothing in here a half-way competent developer (or systems analyst, or even business analyst) couldn't work out for themselves.

    This is where the hostility to software patents comes from. So many define problems, rather than solutions, and are then used to claim ownership of all possible solutions to those problems.

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