The U.S. Patent & Trademark Office, in an extremely rare move, has overturned a new patent. The controversial patent had been awarded to Compton’s New Media and covered most, if not all, ways of storing and retrieving test, audio and images stored on compact disks.
“The way I read this decision is that the Patent & Trademark office was embarrassed by this patent and, upon reviewing it, discovered the reasons for their embarrassment,” noted attorney Mark F. Radcliffe, an attorney who recently authored “Multimedia Law Handbook.”
The decision has generated considerable enthusiasm in the computer industry, Radcliffe said; he added that this decision could trigger a whole re-thinking of the computer patent review system.
“This is the only country that does not publish patents before they are issued,” Radcliffe said. “It’s always been so secretive. That may change as these things become more complex.”
Compton’s, which publishes a popular encyclopedia on CD-ROM disks, had filed 41 claims on the patent, looking to register how information is accessed.
When the patent office approved it last August, computer and software companies cried foul, saying the patent office was beginning to grant patent protection to too many things that were considered commonplace.
“I certainly think the Compton patent pointed up flaws in the patent system,” Radcliffe noted. “Once patent commissioner Bruce Lehman looked at the matter again, I think he found that the claims were neither non-obvious nor novel, both of which are standards for a patent.”
At this point, all 41 claims have been rejected at a first instance, which means that Compton’s, a subsidiary of Tribune Co., can still appeal the decision. The company has two months in which to decide if it will appeal.