Does the USPTO get the last laugh?
It’s always nice to have chance to go back and update things you were looking at a few months, or in this case, more than a year ago. In February 2007, I blogged about Tim Roberts’ application for patenting jokes. This prompted much discussion in the comments between him and I as well as a further post on my part. I thought it would be nice to take a look to see where the patent application stands now.
It turns out that on June 3rd of this year, the USPTO sent Mr. Roberts a ‘non-final rejection’. Unfortunately, the language of the rejection is much less entertaining than the language of the original application.
In paragraph 6, the patent examiner rejects all the claims in the patent application “because the claimed invention is not supported by a credible asserted utility.” The patent examiner also stated that the claimed invention does not fall within one of the four statutory classes of invention under US patent law, i.e. it is not a process, machine, manufacture or composition of matter. I liked the dryness of the next bit:
In particular, it is unclear as to what statutory class of invention a “joke” falls under. Additionally, it is unclear as to what statutory class of invention a “patent application” and “application” falls under.
The claims were also rejected on the grounds that they did not distinctly claim the subject matter that the applicant considers to be the invention. Paragraph 14(a) of the reasons states that:
Claim 1 recites “protecting a novel joke”. A person of ordinary skill in the art is unable to determine the metes and the bounds of the Applicant’s invention because the word “novel” is subjective.
I love how, with no apparent irony, the patent examiner can refer, on the one hand, to the standard of ‘a person of ordinary skill in the art’ as though it is somehow plain and obvious who this metaphoric person is and what the ordinary skills are that he or she possesses, and then proceed to state that the claim is rejected because the word ‘novel’ is subjective!
I must confess that I haven’t checked on the status of the application in the other countries where it was filed but if the US isn’t broadening its scope of patentability to accommodate your claims, I would say that things aren’t looking too good for you.
I am glad, then, that I did not take up Mr. Roberts on his offer of ‘very reasonable terms’ for a license for the subject matter claimed by his patent application. According to the cover pages that accompany the ‘action’ from the USPTO, though, Mr. Roberts has three months to reply to the non-final rejection from the date of its mailing. All is not necessarily over then and I believe three months brings us to September 3rd, just over a week away. So I turn the floor over to Mr. Roberts and invite him to give Blogging Biodiversity a sneak peak at what his next actions might be.
August 24th, 2008 | Category: Intellectual property | 
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