Microsoft reinvents the electronic annotation

[Alexander Turcic]

For as long as I can recall, e-book readers have provided tools for bookmarking, highlighting, and annotation. But that didn't stop Microsoft from applying for (in 1999) and the US Patent and Trademark Office from granting (just recently) a patent for a "Method and apparatus for capturing and rendering text annotations for non-modifiable electronic content". Non-modifiable content refers to content whose consistency is for various reasons not allowed to change. DRM-protected and copyrighted works come to mind.

The invention works like this:

• A user selects some kind of anchor object (which can be text or a graphic) in the document to locate where he wants an annotation to be placed.
• The software determines the file position in the document associated with the selected object.
• The user adds his annotation (which may include highlighting, textual notes, drawings, etc.) and, eventually, returns to reading the document.
• Meanwhile, the annotation is being stored along with the file position in a separate, linked file. Alternatively, the non-modifiable document may include a write-enabled portion with the annotations being added to it. The underlying document remains in an unmodified state.

If this doesn't blow your socks off, I cannot blame you. There is nothing new about this invention, nor does it require a particular technical understanding. Mobipocket uses external "information storage" files (.mbp) to keep track of annotations (including bookmarks, notes, custom links, drawings, modifications, highlights). Vade Mecum stores annotations and highlighting in separate files in the program's metadata folder. To name just two, and I am pretty sure other readers work similarly. Whoever granted this patent in the USPTO administration must have been smoking some bad granola at the time.

[Dick Tracy]

Hmm, when was Peanut Reader (that later became PalmReader then eReader) first out; think it was before then? Not sure if they were smoking granola, more like Red Dye No. 2.

[DaNDeE]

Let's see what Adobe with Acrobat and all the other companies out there will have to pay for using similair technologies on their products. I wonder who is sitting in that patent office - perhaps I should go an grab a patent on my smelling socks.

[Snappy!]

Usually, I quite like MS ... but some of these patents is really ridiculous. On the other hand, the culprit is really USPTO. Why does it issue such patents at all?? I thought the Patent office will engage some agents or staffs to make sure there is no prior art and stuffs like that?

For MS, the only saving grace I can think of is that in today's market, companies just file patents for anything they design to safe themselves from future lawsuits. In that sense, MS is just doing what is in its best interest.

So, the million dollar question is really still ... why oh why did USPTO issue such a patent??

[TadW]

I guess what the USPTO lacks is qualified staff.

Anyways, I cannot believe Microsoft is going to be using this patent to sue others perhaps. Often companies file a patent to avoid being sued by others. OK, call me naive or just blind, but that's what I want to believe! ;=)

[DaNDeE]

Like your attitude - pretty optimistic. In the past microsoft showed it just the other way around... let's hope and see.

[Bob Russell]

I was going to say that I don't think they make any effort to determine how worthy a patent is or to check prior art because that would be so judgemental we probably don't want them to do that anyway.

But a quick check of Wikipedia tells us that <my emphasis added>

The United States Patent and Trademark Office, at least in theory, will not allow a claim in a patent application unless that claim is supported by the disclosure of the specification. In addition, the patent office will not, also in theory, allow a patent claim unless it is distinguishable over the subject matter that existed in the art before the invention, or in the "prior art." If a claim in a patent application is not supported by the disclosure of the patent specification, or if such a claim would cover the prior art, it is the obligation of the patent examiner to reject it.

and

Generally, patents are enforced only through civil lawsuits. An owner of a United States patent who believes that another has infringed his or her patent may bring an action for patent infringement in a United States federal court. Typically, the patent owner will seek monetary compensation for past infringement, and will seek an injunction prohibiting the defendant from engaging in future acts of infringement. In order to prove infringement, the patent owner must establish that the accused infringer practices all of the requirements of at least one of the claims of the patent.

An important limitation on the ability of a patent owner to successfully assert his or her patent in civil litigation is the accused infringer's right to challenge the validity of that patent. Civil courts hearing patent cases can and often do declare patents invalid. A patent claim may be held invalid because, among other things, the claim is not supported by the specification, or because the claim 'reads' upon the prior art. If a defendant succeeds in demonstrating that a patent is invalid, he or she will not be held to infringe that patent. In the United States, proving patent invalidity can be difficult. United States Courts typically presume that the patent office conducts the review of patent applications competently. Patents are consequently presumed valid unless proved to be invalid by clear and convincing evidence.

The vast majority of patent rights, however, are not determined through litigation, but are resolved privately through patent licensing. Patent licensing agreements are effectively contracts in which the patent owner (the licensor) agrees not to sue the licensee for infringement of the licensor's patent rights. It is not uncommon for companies engaged in complex technical fields to enter into dozens of license agreements associated with the production of a single product. Moreover, it is equally common for competitors in such fields to license patents to each other under cross-licensing agreements in order to gain access to each other's patents. A cross license agreement could be highly desirable to the mouse trap developers discussed above, for example, because it would permit both parties to profit off each other's inventions.

But I can't imagine how the patent office could even pretend to examine everything carefully. And I wonder what criteria they use to determine if something is too basic to claim rights... like when MS tried to patent (maybe successfully?) something simple like, I think, the double click or something equally silly. Even if that wasn't prior art, doesn't it seem like something that just hampers competitive markets if you allow patents on something so simple? But then again, that's a judgemental thing so I don't know how you legislate it unless you just go back to prior art. I'm glad I'm not a lawyer!

[Snappy!]

I think the one company that benefited from patents alot in the past was RCA. They sure sued and profitted from tons of royalty.

[doctorow]

Let's not forget about SCO (*shudder*) who has already laid claim to copyrights on UNIX and, therefore, Linux.

[erwin]

M$ "created" this idea in 1999? Yeah, sure whatever. Unfortunately the NewtonBooks implemented it from 1993...
I'm everyday more disgusted about all this patents bulldrops and how easily people on the Net forget the past. *All* the main functions of *all* today ebook reading software was already implemented in the Apple NewtonOS in 1993.
History, this unknown item... :-(((
Cheers
Erwin