IBM cons patent office about email feature then backs down

13 March 2017 by Steve Blum
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Sounds good to me.

If you’ve ever set your email account to send out an I’m on vacation and you’re not auto-response, you might have just dodged a bullet. The U.S. patent office granted IBM a patent on an “out-of-office electronic mail messaging system” that is indistinguishable from the vacation auto-responder that’s been baked into every email platform on the planet for the past 20 years.

But in a gesture of corporate magnanimity – after being roundly and justifiably ripped by the Electronic Frontier Foundation (EFF) and the trade press – IBM has released the patent into the public domain. According to a story by Joe Mullin in Ars Technica

Asked about EFF’s criticisms of the patent, an IBM spokesperson said that “IBM has decided to dedicate the patent to the public.” The company notified USPTO today that it will forego its rights to the patent.

In an EFF blog post, Daniel Nazer gives a run down of the ways that the patent office screwed up while reviewing the patent application. First, patents are not supposed to be issued for obvious uses of existing technology or, particularly, for so-called innovations that are actually commonplace practices for which no one had bothered to file an application. That’s simply a major fail on the part of the patent office employees responsible for the bogus decision.

Second, granting the patent directly contradicts a U.S. supreme court ruling – the Alice decision – that says that abstract ideas that can be implemented on any generic computer aren’t eligible for patents. The patent examiner on the case was aware of that, but, as Nazer writes

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”.

This fiasco ended well because IBM is a big company with a reputation that’s worth far, far more than a undefendable patent. But if, instead, patent office employees had granted it to a typical patent troll – companies that exist only to extort settlements from small businesses that can’t afford to defend themselves – the effect could have been devastating.