Patent Reexamination and the PTO: Compton's Patent Invalidated at the Commissioner's Request, 14 J. Marshall J. Computer & Info. L. 379 (1996)

Authors

Terri Suzette Hughes

Abstract

In 1985, two executives at Encyclopedia Britannica, Inc. introduced the idea of a multimedia search system that interfaxed textual and graphical entry paths in a single database. At that time, Encyclopedia Britannica was not interested in publishing its own volumes of encyclopedias in an electronic format. Instead, they decided to make Compton’s Encyclopedia the basis of the proposed multimedia encyclopedia. On August 31, 1993, the PTO issued U.S. patent 5,241,671 for a multimedia search system to fourteen inventors who had previously assigned all their patent rights of the claimed invention to Encyclopedia Britannica. Questions arose about the validity of the patent, but instead of pursuing the standard route of requesting reexamination of an issued patent, multimedia developers merely complained about the issuance of the patent without taking any further action. Due to the numerous complaints, Commissioner Bruce Lehman requested a reexamination of the patent. This led to the cancellation of all forty-one claims granted in the patent. The procedure employed by the PTO to reexamine the patent was inappropriate. Commissioner Lehman’s request for reexamination placed undue pressure on PTO examiners that would not have existed had a third party requested the reexamination. Commissioner Lehman’s request for reexamination may have biased the PTO examiners into believing there were validity problems with the claims granted in the ‘671 patent. Hindsight is inappropriate when determining patentability. Anything and everything is obvious to someone skilled in the art, once they have been shown or told how to achieve the desired result. Compton’s should be rewarded, not penalized for its innovative efforts to create proprietary software that combined valuable principles in a unique manner.

Recommended Citation

Terri Suzette Hughes, Patent Reexamination and the PTO: Compton's Patent Invalidated at the Commissioner's Request, 14 J. Marshall J. Computer & Info. L. 379 (1996)