Monday, April 14, 2008

US Government responds to the idea of patenting movies

It is enough of the creative minds out there to create ideas of patenting movies. (Read the post). (adapted from Greg Aharonian) The US Patent Office just sent out a Response to the first of four movie plot patents submitted by patent lawyer Andrew Knight. The Response is a request for more prior art from Mr. Knight, which is mostly a 103-obviousness concern (with the presumption that his specific plot is 102-novel). Since the Detailed Description has to be 112-ish enough to enable an obviousness determination in light of the prior art, with no 112-clarification questions in the Request, the initial concern of the patent examiner seems to be mostly obviousness-related. This may not mean that the PTO accepts the 101 statutory nature of movie plot patents, with a 101 rejection to appear later in the first Office Action. Still, if the PTO was looking for an easy rejection, a simple 101 First Office Actioni rejection, while not justified, would also not have been unreasonable. It may be that in light of other arguments, the PTO is thinking that maybe fighting movie and music patents, in the long run, is a losing battle (and it is) especially if the 101 arguments are based on nonsense, caselaw pathetic, arguments such as those found in last summer's MPAA submission to the PTO on "functionality" (may that submission find a first use when printed on multiple sheets of toilet paper). Another interesting note: the patent is being examiner in Art Unit 3714, which is for Education and Amusement. Somewhat appropriate, but given the general electro-technical nature of modern movies, maybe not the best match. But if the PTO is going to open to more patenting of the arts, it needs new Art Units (with examiners with degrees in the arts) and new Classification Classes (using classifiers with knowledge of the arts). What follows is the bulk of the text to the PTO's first Response. **** Application/Control Number: 10/722,473 Art Unit: 3714 DETAILED ACTION Request for Information Under 37 CFR 1.105 1. This is one of four related applications (applications numbered 10/722,473, 10/846,544, 10/861,849 and 10/869,082). In each of these applications, Applicant seeks to obtain a patent for a fictional plot or storyline. Applicant has acknowledged that in doing so, he seeks to open up an entirely new area for patent applications. It therefore behooves the Office to have all of the facts concerning the case before rendering an opinion regarding patentability. 2. Furthermore, storytelling is of immemorial antiquity. Throughout recorded history, man has told stories. No doubt storytelling antedates recorded history. One can easiy imagine our Neolithic ancestors lounging about the case spinning yarns. 3. The point is that for tens of thousands of years [greg note: except for creationinsts], people have been telling stories. Each of these stories has a plot. None of these plots will appear in the patent literature. Nor is it possible for the Examiner to search more than a miniscule portion of the prior art - certainly no meaningful search can be accomplished without further information. (not necessarily true, since there are some good plot databases on the Internet, such as IMDB - Internet Movie Database. But this statement is more an examiner's plea for the PTO to not make the mistake they did with biotech and software and bizmet patents, which is to seriously worry about prior art problems decades after the first such patents are filed.) 4. Therefore, in order for Examiner to do an adequate examination of Applicant's invention [note: does this imply that movie plots can be invented under 101?], Examiner requests the following information: a. Whether a search of the prior art was made, and if so, what was searched. b. A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to, or has a plot/storyline similar to, the claim invention. c. A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application. d. A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process. e. Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use. f. A copy of any publication of which the Applicant is aware concerning these applications. [note: if Mr. Knight signed an NDA to view one or more publications relevant to his application, is he forced to violate the NDA and submit such information to the PTO?] g. Identification of any court case that Applicant contends provides legal precedent for a grant of patent rights to the application. [note: easy to partially answer this question: EX PARTE LUNDGREN!!!!!!!!!! Mr. Knight has my permission to send a copy of my patenting movie/music article to the PTO. Also, STATE STREET - movie plots are big business!] 5. Examiner realizes that it may prove difficult to provide some of the non-patent literature that might have been used to develop the plots in question. For instance, it might not be practical to submit an entire novel or a motion picture in response hereto. In those cases, Applicant should identify the non-patent literature and provide a synopsis of the plot or other pertinent information. If possible, Applicant should provide copies of any particularly relevant passages. 6. This Requirement for Information under 37 CFR 1.105 is made without an action on the merits and has a shortened statutory period of two months for reply. Applicant may extend the time period for a reply up to six months in accordance with 37 CFR 1.136(a).