Links for "Patents and Mathematics (.pdf)" letter in Notices of the American Mathematical Society, January 2010, p. 9.
Patents and Mathematics (Text of the letter)
I am writing to encourage a discussion of whether the AMS should lobby the U.S. Patent and Trademark Office to remove their insulting and counterproductive exclusion of mathematics as evidence of the scientific and technical qualifications required for a lawyer to practice law before USPTO.
In recent years I have been involved as an inventor in patents for molecular diagnostics—one for detectingand identifying mutations using high-resolution DNA melting and another for identifying genes that can be useful for cancer diagnostics and therapies.
In the process I have discovered that there are very few patent attorneys with even a minimal mathematical training, not to mention the level required to understand the math involved in so much of modern science and technology. It was only recently when, in a very pleasant change of circumstances, I was referred to and worked with Thomas M. Bonacci, a patent attorney who had studied mathematics as an undergraduate and graduate student, that I learned why.
He told me that an applicant to practice before USPTO must demonstrate, in accordance with the USPTO’s requirements, that he or she possesses scientific and technical proficiency sufficient to address issues that arise in patent law. Notably, however, mathematics is explicitly excluded as a subject for this purpose. I was a bit sceptical until I downloaded the “General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office” to see for myself. It lists 32 subjects in which bachelor’s degrees exhibit adequate proof of the necessary scientific and technical training, as well as 2 1/2 pages of acceptable alternates. Then it states the “Typical Non-Acceptable Course Work: The following typify courses that are not accepted as demonstrating the necessary scientific and technical training:” and in the middle of this paragraph, there appears: “…machine operation (wiring, soldering, etc.), courses taken on a pass/fail basis, correspondence courses, …home or personal independent study courses, high school level courses, mathematics courses, one day conferences, …”
In case you cannot believe where the USPTO places mathematics any more than I could, links to this and related documents are provided at http://www.math.utah.edu/~palais/usptovsmath.html. Ironically, USPTO requires mathematics coursework for prospective examiners in the computer arts (employees) that it doesn’t recognize as qualifying for practitioners. This is not a debate regarding the appropriateness of patenting mathematics. There have been many such conversations elsewhere. But in these times that mathematics is becoming increasingly visible in valuable patents (e.g., Google’s Page Rank, a linear algebra algorithm, was licensed by Stanford for US$336 million) it seems that the USPTO should be encouraging, not discouraging, the mathematical fluency of the lawyers whose work it recognizes.
—Bob Palais, Math Dept., Pathology Dept. University of Utah
Text of followup letter in Notices, April 2010:
Patents cover a wide range of technical and scientific areas of expertise. Neither mathematics nor any of the areas the USPTO accepts are sufficient to demonstrate proficiency in all areas of science and technology. But that was not my point, and I doubt it is the point of USPTO's requirements. It seems that the list of recognized subjects was intended not to certify every qualifying lawyer for general proficiency in science and technology, but rather to cover the range of material being patented, so that an inventor could always find some lawyer with the specialized training required for an understanding of their invention. Advanced mathematics has become the essential ingredient in many patents in bio- and information technologies in recent years. An undergraduate degree in mathematics is far more relevant to their content than Any of the degrees USPTO currently accepts. With this in mind, it would seem that there is a need for SOME, not all, USPTO approved attorneys to have a much higher level of mathematical training in order for them to be able to assist with some the significant number of important recent mathematics-based patents. Including a math major as evidence of scientific and technical proficiency would not diminish the number of lawyers with other capabilities, and could only add to the number with mathematical fluency that IS necessary for writing many modern patents.
Since the publication of the letter, I have been informed by the Director of of Enrollment and Discipline of the USPTO, Harry I. Moatz, that their office has been in the process of contemplating possible changes to the scientific and technical training qualification standards, and is taking input by mail, to be sent to: Mail Stop OED, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office
(cached copy linked above, USPTO link below)
Text from page 9 of grb.pdf:
"xi. Typical Non-Acceptable Course Work: The following typify courses that are not accepted as demonstrating the necessary scientific and technical training: anthropology; astronomy; audited courses; behavioral science courses such as psychology and sociology; continuing legal education courses; courses in public health; courses relating technology to politics or policy; courses offered by corporations to corporate employees; courses in management, business administration and operations research; courses on how to use computer software; courses directed to data management and management information systems; courses to develop manual, processing or fabrication skills (e.g. machine operation, wiring, soldering, etc.); courses taken on a pass/fail basis; correspondence courses; ecology; economics of technology; courses in the history of science, engineering and technology; field identification of plants and/or animals; home or personal independent study courses; high school level courses; mathematics courses; one day conferences; patent law courses; paleontology; political science courses; repair and maintenance courses; radio operator license courses; science courses for non-science majors; vocational training courses; and work study programs. Also not accepted are college research or seminar
courses where the course content and requirements are not set forth in the course descriptions; and courses that do not provide scientific and technical training. Further, not accepted are courses that repeat, or which are substantially the same as, or are lesser-included courses for which credit has already been given."
Regarding some mathematics that might have been patented, but wasn't, there are some great resources about how IBM lawyers consciously prevented the Fast Fourier Transform (FFT) algorithm from being patented.
As an extra observation, the above FFT patents makes the following article seem quite confusing: "The FFT: Making Technology Fly" by Barry Cipra (http://www.siam.org/siamnews/mtc/mtc593.htm), of which an extract follows:
"Cooley takes pains to praise the Gentleman-Sande paper, as well as an earlier paper by Sande (who was a student of Tukey's) that was never published. In fact, Cooley says, the Cooley-Tukey algorithm could well have been known as the Sande-Tukey algorithm were it not for the "accident" that led to the publication of the now-famous 1965 paper. As he recounts it, the paper he co-authored with Tukey came to be written mainly because a mathematically inclined patent attorney happened to attend the seminar in which Cooley described the algorithm. The lawyer, Frank Thomas, "saw that it was a patentable idea," Cooley explains, "and the policy of IBM and their lawyers was to be sure that nobody bottled up software and algorithms by getting patents on them." A decision was quickly reached to put the fast Fourier transform in the public domain, and that meant, in part, publishing a paper. However, if challenged by US Software Patent infringements that looked "trivial" or involved "prior art", you would still require the legal and financial resources to fight the Patent Trolls. "Software patents: an industry at risk" by Gordon Irlam and Ross Williams at this point makes extra and relevant reading.
Perhaps one of the most valuable patents ($336 million) in the world now is the linear algebra algorithm for Google's Page Rank:
The author of the letter has been involved in recent years as an inventor in patents for molecular diagnostics, some for detecting, identifying, and quantifying mutations using high-resolution DNA melting:
and another for identifying genes that can be useful for cancer diagnostics