Patent Refom: Unsettling Rights

By Dennis Crouch

There have been numerous reports calling the US Patent System broken or at least in need of severe repair. From my view, the greatest problems with US patent law arise because of its common lack of clearly drawn property lines.  In academic lingo, we call this a failure of the public notice function.  

Examples of the fuzzy lines of patent law are well known to Patently-O readers and include the secret rights of unpublished patent applications; shifting rights that may be altered via extended prosecution, future continuing applications, and second look examination; and uncertain rights potentially crumbling under the vagaries of claim construction and obviousness jurisprudence.

These problems are exacerbated in certain technology areas – such as electronics – by massively overlapping claims and speculators asserting patents in a seemingly more aggressive fashion.  At the same time, there is a strong consensus that these issues do not arise in the same fashion in the pharmaceutical and bio-technological areas. Pharmaceutical patent law is often heralded as an incredible success — especially in the post Hatch-Waxman days of strong generic competition.

Now comes the Patent Reform Act of 2007. Unfortunately, the proposed patent reforms now being debated by the Senate do virtually noting to address these serious problems and instead potentially cause harm to the current regime.

CAFC Chief Judge Michel has publicly discussed patent reform and its potential impact on the judicial process. Apart from the Chief’s particular quarrels with damage apportionment and expanded interlocutory appeals, he makes a particular point about the destabilizing effect of major Congressional patent reforms.  In the decades following reforms, each amended word will be litigated and eventually construed. Unfortunately, during the wait for new statutory interpretations, patent holders and accused infringers will be left guessing.  Judge Michel’s ultimate point is that changes in the property regime should only be made when we have a genuine reason to believe that the changes will improve the system as a whole.  For the majority of the proposed patent reforms, that case simply has not yet been made.

 

Comments

[Lowly Prosecutor]

Clive Fenster,

While I do constantly feel the time pressure imposed by clients only willing to pay a certain cost for applications, it's not difficult to complete work within the time allotted. You just have to work efficiently and intelligently.

[Tom Dodd]

Great post Dennis. When you can get this strong a reaction with a couple of paragraphs...

What amazes me is the outpouring of self-centeredness in most of the posts. Does anyone (other than a few posters) actually give a Tinkers' Dam about the big picture here? Many seem concerned only how their own little slice of the pie is affected by the so-called 'reform' bills.

Is the patent system truly 'broken'? Hardly. Grow up people and quit manipulating numbers or deifying those who do (Prof. Lemley comes first to mind).

The point we should all be trying to make is that the patent system has to be 'fair' for everyone it touches. It has to apply equally to the big electronics firms whose products turn over every couple of years; to the drug giants who rely on their patents for a longer period; to the little guys/gals and the small companies struggling to gain access to ever-tightening markets; and to everyone else who uses the system.

What is really getting old is all the whining about people 'gaming' the system. You know what? No matter what sort of 'reform' is enacted, there will ALWAYS be those who find a way to manipulate it to their advantage. It sickens me that groups like the inappropriately named "Coalition for Patent Fairness" manipulate the illegal and/or unethical actions of a relative few to advocate change to a system that little resembles fairness for anyone, save themselves.

Do we need reform? That's an easy one- we do. But can Congress enact something that draws clear property lines, as Dennis suggests? Doubtful. Many foreign systems have tried to establish brightline tests (inventive step is my 'favorite') and only succeed in further muddying of the waters. IMHO, with so many different types of users of the system, with such diverse needs, the only way to truly brightline the law is to create separate patent (or patent equivalent) systems for each class of user- at the very least, I agree with those who suggested eliminating software and business method patents- give them a system of their own that recognizes true innovation and an advancement of their art befitting the contributions.

Some 'specific' thoughts on the dual bills-

The venue statute needs to be fixed. Forum-shopping to find courts that appear to favor one side or the other needs to be curtailed to the furthest extent possible. Not because of a notion of 'favoritism' to plaintiffs- but for simple judicial economy. Both bills are a good start.

Damages? Why meddle? Georgia-Pacific standard seems to be doing just fine to determine apportionment the so-called 'reasonable royalty,' and willful infringement seems to have suffered a serious blow after Seagate. I don't think you can draw a brightline test, not when you have highly paid experts at every case giving highly different opinions as to the amount of damages.

First-inventor-to-file? What's the point? Either go for global harmonization of the system and enact straight first-to-file or leave it alone.

The most troubling aspect of the amendments to sections 100-102 is the radical shift- from the 'invention' to the 'claimed invention'- effectively denying priority for later-filed claims. This change, presented as a 'solution' to the gamers who file broad specs then wait for a product to amend the claims to encompass the product, ignores a plain fact- the vast majority of these amendments are either never allowed or are declared invalid for lack of enablement and/or written description. Multiple checks are already in place to weed out so-called 'bad' patents. Yet Congress seems more than willing to punish every inventor whose attorney does not submit every possible scope of claim with the initial filing.

Post-grant oppositions are a more efficient alternative to cumbersome and often endless reexaminations. HR 1908, with its single 12 month window and retention of IP re-exam after 12 months seems fair to all. The Senate version however would truly weaken all issued patents and subject patentees to multiple challenges through the entire life of the patent with a weakened standard of proof- hardly the 'right' way to encourage innovation.

And what happened to reforming the ubiquitous and often amorphous inequitable conduct defense? Neither bill follows the NAS 2004 report- to disallow inequitable conduct unless one or more claims is first found to be invalid- at least HR1908 requires a prima facie unpatentability test to determine materiality.

It's a shame that neither House nor Senate followed the National Academy of Sciences suggestions to best tweak the patent system- even though NAS is non-partisan and its 2004 report provided real statistical evidence on the actual state of affairs at PTO and in litigation (as opposed to the selected distortions provided by special interests on both sides of the reform issue).

The kicker? If signed into law in its current form, HR 1908 would render Tafas/GSK v. Dudas moot. Now THAT'S what I call true reform.

[Mark Pitchford]

Lowly Prosecutor,

When your billing rate exceeds 200/hr and you have a client demanding office action responses for 1500, you'll see the problem. That's less than 6 hours (leave 1 hour for partner review) for you to read the art, reread your application (or the application drafted by someone else), read the response written by an attorney at another firm (which is why the case was transferred from that firm in the first place), and only then can you amend your claims, draft an actual response, and revise the response in light of partner comments. When the art is off base, the previous amendment had no point (or even worse, made an error), and there are north of six references clearly combined using the claims as a roadmap, things can look a bit dark right from the outset.

It is what it is, and you just deal with it, but some of the pressures are bit unrealistic in the field today; for the lowly practicioners and the lowly examiners.

[CliveFenster]

Lower: "Another thing I would point out is that even though I think a claim may be obvious, it is frankly not my opinion that counts. It is the USPTO's, as my managing partner likes to remind me. If my opinion of the prior art differs from my client's opinion, the claims reflect the client's opinion, not mine."

Lower, I think an attorney does his client a disservice by knowingly submitting anticipated/obvious claims which will be heavily amended in prosecution. While some estoppel is acceptable as part of the process, I don't think it wise to accept a large dose of it, swallowed with no correspondingly large return therefor. The inventor is paying for our legal/technical expertise. We're not mere scribes, and I feel it short-changes that client when we pretend to be. This is of course a personal matter, not a legal or ethical one; my opinion shouldn't be taken as a criticism of you or your partner, but as my preferred one out of the many ways to run a legal practice.

Lowly: I certainly don't mean to imply that time pressures make hacks of us all. There are times, though, when circumstances make it difficult to do the thorough job we desire. I've had an inventor literally dictate to me from his car as he drove to a seminar where he would publicly disclose the invention; I've had my present employer's business unit casually ask about patenting and mention they're commercializing in a week; etc. Happily, those experiences have been the small minority.

[Leopold Bloom]

"I agree with those who suggested eliminating software and business method patents..."

I brought up the following challenge on another thread, and never received a satisfactory answer. Can anyone provide a definition for "software patent" that could be meaningfully applied, if we were indeed inclined to "eliminate" them? Likewise, can anyone provide a useful definition for "business method patent"?

I have a strong suspicion that most (all?) of those that make this kind of suggestion are not practicing in the electrical arts. Not that that necessarily makes them wrong. But, it might mean that they can't provide any support for their positions...

[real anonymous]

'Can anyone provide a definition for "software patent" that could be meaningfully applied, if we were indeed inclined to "eliminate" them? Likewise, can anyone provide a useful definition for "business method patent"?'

You could use the same standards that prevented certain software patents and all business method patents in the 1980s. They seemed to work quite well (even if they may not have been founded in law).

Electronics & Computer Patent & Copyright Practice (Ed.), 2nd Ed. (PRI 1990).

[Mark Pitchford]

Leopold,

You're hitting on the "my patent is better than yours" problem.

Wasn't it about 100 years ago that everything that will be invented was already invented? Now we still have mechanical patents being filed? They are clearly obvious. Therefore, we should say that all mechanical inventions are obvious and therefore not patentable. This will reduce patent backlog and allow clearly more important inventions to be examined and issued sooner.

We had the software fight about 80 or 100 years ago when electrical devices came around. You can't "see" the electricity, therefore, it's not tangible. So no device involving electricity or communications should be patentable.

We could go on like this forever. Infringers will always want a get of jail free card, and innovators will always want patent protection, in all fields of research and development. The real question is not which groups are "worthy" of patent protection, but how to administer patents efficiently and fairly.

Got another one:
Medications and surgical procedures are for the good of the public. Therefore, all medications, surgical instruments and procedures should be in the public domain and non-patentable.

The problem with eliminating any of these subjects from patentable subject matter is that they end the incentive for disclosures of inventions and advancements in the relevant arts; which is EXACTLY why the patent system exists. To exchange patent rights for disclosures of inventions and advancements in the useful arts.

[Michael Valentine Smith]

I think one of the reasons many examiners get PO-ed with a lot of attorneys complaints about bad actions and repeated non-finals (which I strongly agree are a big problem and need to be reduced as much as possible) is that there are as many badly written application, claims, responses, etc. We see bad literal translations. We see omnibus claims (why not cancel them at filing???). These are all things that should be cleared up before the examiner ever see the case. But they are not. Why not? Because you all do not have the time, or available money, to do it. Sound familiar??

Quoting a few things from above:

From Mark Pitchford:
"When your billing rate exceeds 200/hr and you have a client demanding office action responses for 1500, you'll see the problem. That's less than 6 hours" to do everything you have to do.

From Clive Fenster:
"I think poor claims drafting results more from a client-imposed low budget, which in turn shunts the application to a junior associate and pressures the reviewing attorney (senior associate or partner, billing at much higher rates) to skim the draft rather than really aggressively reviewing/critiquing it. While following that string leads us to hourly billing rates, I don't think profits-per-partner are astonishingly higher now than 10, 20, or 30 years ago. I do know that more and more clients are taking a hard line on costs, imposing ceilings applied to any prep/pros matter, and so on"

From CaveMan:
"many of the ones at big firms who are drafting a lot of the claims in new applications haven't been around long enough to understand how to draft a proper claim and don't really understand the technology or take the time to understand it - or for that matter what the invention is, or for that matter what a typical commercial embodiment would be.
Aside from solid technocratic ability, it takes writing literally thousands of claims before you start to get good at it."

As evidenced from this, you attorneys have much the same problems that examiners do. Not enough time to do the job right; superiors making you do it their way, no matter if it is right or wrong; not enough experience to get it right the first time; etc.

Sound familiar????

This is the same reason that you all get a lot of "bad" actions. Please try to remember this all next time you complain about the actions you receive. We deal with the same types of issues on the other side. We would all benefit if the complainers keep these words of their compatriots in mind.

MVS

[bierbelly]

"I brought up the following challenge on another thread, and never received a satisfactory answer. Can anyone provide a definition for "software patent" that could be meaningfully applied, if we were indeed inclined to "eliminate" them? Likewise, can anyone provide a useful definition for "business method patent"?

I have a strong suspicion that most (all?) of those that make this kind of suggestion are not practicing in the electrical arts. Not that that necessarily makes them wrong. But, it might mean that they can't provide any support for their positions..."

Leopold,

My suggestions. Answer: the PTO and ultimately the Courts will decide what constitutes either a "software" or "business method" patent, absent a more clear definition in the statute (if it were even under consideration). Same as with other 101 issues. It seems the patent system and the US economy survived quite well for the many years that these things were considered to be unpatentable "algorithms", so what has been the benefit of State Street and its ilk? Certainly a monetary benefit to those attorneys handling the BSA cases, both in prosecution and litigation. But as we've seen, the alleged problems with those patents/applications have been generalized to the patent system as a whole, which isn't fair or even correct. The rest of us suffer for your misdeeds (no, I'm not an "electrical" attorney...BTW, what makes software "electrical"?).

As Barney Fife would say, "Nip it. Nip it in the bud."

[bierbelly]

"I brought up the following challenge on another thread, and never received a satisfactory answer. Can anyone provide a definition for "software patent" that could be meaningfully applied, if we were indeed inclined to "eliminate" them? Likewise, can anyone provide a useful definition for "business method patent"?

I have a strong suspicion that most (all?) of those that make this kind of suggestion are not practicing in the electrical arts. Not that that necessarily makes them wrong. But, it might mean that they can't provide any support for their positions..."

Leopold,

My suggestions. Answer: the PTO and ultimately the Courts will decide what constitutes either a "software" or "business method" patent, absent a more clear definition in the statute (if it were even under consideration). Same as with other 101 issues. It seems the patent system and the US economy survived quite well for the many years that these things were considered to be unpatentable "algorithms", so what has been the benefit of State Street and its ilk? Certainly a monetary benefit to those attorneys handling the BSA cases, both in prosecution and litigation. But as we've seen, the alleged problems with those patents/applications have been generalized to the patent system as a whole, which isn't fair or even correct. The rest of us suffer for your misdeeds (no, I'm not an "electrical" attorney...BTW, what makes software "electrical"?).

As Barney Fife would say, "Nip it. Nip it in the bud."

[Lowly]

Mark,

My billing rate already exceeds $200/hr, and I am already limited to no more than 6 hours for responses to office actions. If I spend more than 6 hours, I just write off my time. In some cases, it's either write off the time or do a poor job; I refuse to do a poor job. It's rather unfortunate, but it is what it is. Most of the time, I can get the job done well in the allotted time, often because (*gasp*) the examiner has rejected the claims based upon poor art.

[bierbelly]

Sorry for the double post.

[anon]

Mark & Lowly

$250 per hour x
2000 hours per year
==================
$500,000 per year

This puts you in the top 1% of all income brackets even after $100,000 in expenses. I don't suspect a little downward pressure by clients will hurt too badly.

[bierbelly]

Yeah, try billing 2000 hours doing prosecution. Prosecution is mainly piece work, with a cap on how much you can bill for any given type of work. When I was doing it in a private firm (mid 90s), if I tried to bill more than $1200 for a response, the partner would cut my time. So I'd spend 10hrs doing something, and get credit for 7.

[Malcolm Mooney]

"When your billing rate exceeds 200/hr and you have a client demanding office action responses for 1500, you'll see the problem. "

$200? Try $400 or $500.

How did it get this way?

Greed. Seriously, think about it: partners at law firms charge people $500 an hour to write Office Actions that an agent could (and would gladly) write from his/her home for $150 an hour. And the Office Action would almost invariably be better if more time was spent writing it.

[Veteran Attorney]

anon,

you don't actually think that Mark and Lowly are pocketing all of that money, do you?

You ever heard of overhead? Staff salaries and benefits? Rent? Malpractice insurance premiums? Paper? Etc.

$100k in expenses? Where are you practicing? In an old refrigerator box?

[Malcolm Mooney]

"This puts you in the top 1% of all income brackets even after $100,000 in expenses. I don't suspect a little downward pressure by clients will hurt too badly"

But what about my custom painted BMW and the vacation home and private school for the kids? How am I going to keep up with the payments?

/typical partner off

[Lionel Hutz]

anon,

Associates are not paid what they bill. Even if Mark and Lowly are partners or sole practitioners, there are still the expenses and overhead of running an office/firm.

I doubt the math is that simple even if they bill 2000 hours a year.

[Lowly]

anon,

as pointed out already, i am not paid what i bill. i earn in the low six figure range, which i don't think is an outrageous sum for someone with a master's degree in engineering and a jd.

[Mark Pitchford]

anon,

You clearly are not in the legal business.
Is your office free?
Does your secretary work for free?
What about the receptionist?
The ladies in docketing?
Your office manager?
Your IT department?
Does Dell just give you computers and switches out of the goodness of their hearts?
Does Microsoft just give you Word, Outlook, etc.?

[CliveFenster]

anon: [calculating Mr. Pitchford's income at $500k/year]

In a firm, your take-home is well under 50% of your billing rate times billable hours. Examples, based on AIPLA 2007 survey data:

Assoc, <5 yrs. experience -- $226/hour, 1837 billables (rate times billables = $415k), $136K TOTAL income (33%).
Assoc, 5-6 yrs. experience -- $303/hour, 1840 billables (rate times billables = $558k), $176K TOTAL income (32%).
Assoc, 7-9 yrs. experience (fewer in this pool, as most make partner at this stage) --$326/hour, 1820 billables (rate times billables = $593k), $187K TOTAL income (32%).

[YOURMOMMASAYS]

The issue of downward pressure by in-house counsel on the cost of patent prosecution becomes interesting when one considers Sarbanes-Oxley liability. In-house counsel face Sarbanes-Oxley liability if they fail to act reasonably with respect to the patent portfolios-they are to establish proper internal procedures so that the intagible assets of the company are protected. Can one say that large companies putting downward pressure on outside proscution counsel is reasonable. I don't really know. I am waiting for for the next Lerach. I mean, the next time a company has a patent invalidated and sues a patent prosecutor for malpractice I can smell the shareholder derivative suit coming. It will allege something like this: in-house counsel have through design and and coordination with management manipulated the cost structure of preparation and prosecution of patent applications to the extent that they should have known a reasonable job could not have been performed by outside counsel. This, as a result, means that in-house counsel and management have conspired to undermine their Sarbanes-Oxley duty . . . or something along those lines. Just wait, that lawsuit is coming.

This is the natural occurrence of dropping the standard for inequitable conduct from a showing of traditional common law fraud to one of gross negligence that raises an inference of Fraud. Everything now becomes foreseeable and the sould have could have known analysis appears.

[real anonymous]

"What is really getting old is all the whining about people 'gaming' the system. You know what? No matter what sort of 'reform' is enacted, there will ALWAYS be those who find a way to manipulate it to their advantage."

Mr. Dodd, thank you for your post. Perhaps it is little realized that the Coalition for Patent Fairness is itself gaming the [political] system by its reform lobbying, as there will always be those who find a way to manipulate the political system to their advantage. That's not to say their lobbying is wrong (it isn't*), but I would have hoped our government would rather look more to the good of the country than the will of the lobbyists.

Unfortunately, to discern what would be "good" reform in this respect would seem to require more patent experience and knowledge than may grace the halls of Congress or the USPTO at the moment. It still rests on the citizenry, ultimately, to inform and petition government, and this the lobbyists are perhaps better at doing than the patent community.

*I think it is the lobbyists who care the most (rightly or wrongly) about the issues, and it would be extremely unwise for any government body not to heed the concerns of those who care the most - but isn't that exactly what the USPTO is doing with the concerns of patent applicants? (When I was young, I used to hate lobbyists - not understanding their role in government).

[Mark Pitchford]

Clive and Lowly,

I have never seen those salaries.

I was offered jobs at "the big Chicago" firms, Indianapolis, and STL. None of them approached what you have figured there.

I do not know a prosecutor that can bill 1800 hours a year, much less 2000. We don't get to bill for most of our work; it gets rolled into flat fees.

If you include health insurance, parking, 401(k), long term disability, and everything else, you MIGHT be able to get somewhere close to the lowest of numbers you guys posted.

We really need to become more vocal about the media lying about lawyer salaries and incomes. It's the very rare trial lawyer who hits a big case and has a ridiculous windfall, yet everyone reports it as the norm. This is wrong, and it is clearly hurting our profession.

[Malcolm Mooney]

"I do not know a prosecutor that can bill 1800 hours a year, much less 2000."

That's because those people have no substantial existence beyond their professional life.

[Leopold Bloom]

"It seems the patent system and the US economy survived quite well for the many years that these things were considered to be unpatentable 'algorithms', so what has been the benefit of State Street and its ilk?"

Sorry, bierbelly, I think you're off track a bit. Your premise is similar to saying that the patent system and the US economy survived quite well until the invention of the transistor and the microprocessor. It's true, but not very helpful.

Nowadays, virtually every electronic device has software (or at least firmware) in it. That, coupled with unprecedented communications capabilities, permits some pretty cool new features, that just happen to be implemented with software running on a microprocessor. Some of these features are obvious, others not. I'm perfectly OK (as is most everybody, I suspect) with the baseline proposition that algorithms standing alone are not patentable subject matter. What was happening before State Street were rejections of computer-implemented inventions simply because they were computer-implemented, without regards to whether there was a practical application. State Street (mostly) cleared that up.

My point is that it's likely impossible to legislatively tinker with patentable subject matter without sweeping a lot of important stuff into the new exclusions. And, I'm not convinced that anyone has demonstrated that "software patents" are truly a distinctive category of patents that are causing a disproportionate amount of harm.

Nobody's suggested a definition of "business method" patent yet.

[CliveFenster]

Mark, the "total income" figures I posted are direct from the 2007 AIPLA Economic Survey (page I-49). The means for billing rates and billable hours also are from that survey (different pages, of course). Means and medians were far apart; numbers represent national averages. Chicago total income was marginally higher, whereas "Other Central" (STL and IND) was perhaps 20% lower.

[Another Caveman]

Caveman, you're right on. Just read through the senate bill, which can be summarised as by-microsoft, for-microsoft, of-microsoft.

Looks like all those campaign donations aren't wasted after all.

[Mark Pitchford]

Clive,

Your numbers look fine on reread, but I'm just saying that they're a tad high in reality for a prosecutor.

Litigators can bill 1900 or 2000 hours because they're always on the clock. They don't get hours cut like prosecutors do. It's just the reality of the situation.

Once you adjust for the 15%-20% billed hours difference, your number start to look more realistic to prosecutors.

Lowly,

By the way, congratulations on making partner your first year.

[Lowly]

Mark,

huh? Big firm salaries are standardized across the board. If you can get into one of the megafirms -- not difficult for a patent prosecutor with some experience to do -- you start at $160k in the big cities (nyc, la, dallas, houston, etc).

[GideonPope]

"Associates are not paid what they bill. Even if Mark and Lowly are partners or sole practitioners, there are still the expenses and overhead of running an office/firm."

Ah, the beauty of solo practice.

My overhead? About 3 grand a year.

How sweet is that?

I try to bill 3 grand on January 1st, just to get the overhead out of the way for the year.

[bierbelly]

Leopold, you said

"Nowadays, virtually every electronic device has software (or at least firmware) in it. That, coupled with unprecedented communications capabilities, permits some pretty cool new features, that just happen to be implemented with software running on a microprocessor."

So? Most of which will be outdated by the time an application reaches the examiner's desk. More pressure on the PTO to do it fast, which they can't do, even with the shortened statutory periods. And we wonder why they're complaining. It just doesn't make any sense.

Why not a different patenting system for software, like a registration system, similar to plant patents, with a shortened lifetime, say 5 years?

[GideonPope]

"Litigators can bill 1900 or 2000 hours because they're always on the clock. They don't get hours cut like prosecutors do. It's just the reality of the situation."

I never have my hours cut.

Perhaps it's an efficiency issue for you, or perhaps you just have really crappy clients.

Most office actions are simple. Most rely on 1 or 2 core pieces of art, with 1 or more others thrown in to reach dependent claims.

So figure 1.5 hours to read the art and the action and formulate a response.

Figure 0.5 hours to prep a template.

Figure 2 hours to write the argument.

In most cases, 4 hours is plenty.

Of course, you've got to have a manageable claims set with an inventive concept.

Here's another tip:

If you look down at the keyboard when you type, then you have continuously made the horrible decision to be less efficient than you could be.

I write about 70-100 words a minute, and the 1st draft is usually pretty close to final.

If you're pecking away at 30 words a minute, then you're killing yourself.

[SoCalIPNoobFormerExaminer]

I thought this thread was about patent quality.

Have you seen the claims for the latest infringement claim against Apple?

There's a quality allowance!!!

Claim 1. A mobile entertainment and communication device for communicating with the Internet and remotely located telephones, comprising: a housing of a palm-held size; a cellphone provided in said housing, said cellphone adapted for selectively and wirelessly connecting to the Internet and remotely located telephones and adapted for controlling selection of at least one of (1) downloading data or uploading data from or to the Internet, or (2) downloading data to a computer or other electronic device and said cellphone having at least one of (1) voice controlled dialing, (2) a wireless earphone or (3) a wire connection jack earphone with a microphone for operation of the mobile entertainment and communication device; a memory operatively connected to said cellphone; a microprocessor operatively connected to said memory; said microprocessor adapted for storing data to said memory that is received from the Internet or a remotely located telephone; and a display panel operatively connected to said microprocessor, said display panel adapted for reproducing images or other data from at least one of said memory or the Internet, said other data including at least one of moving images, combined sounds and moving images, or music with or without images.

[BigGuy]

"I have never seen those salaries."

Mark, somebody has to be below the median. (Or the average, for that matter.) You're in a pretty weak position if you're challenging AIPLA's data with your own personal survey of one.

[CliveFenster]

Mark, I checked: the overall mean was something like 54% prep/pros, and it trends inversely with income. Supervision and counseling rise slightly with income. The big jump that tracks with rising income is "dispute resolution" (i.e., litigation) -- the portion of practice devoted to it quadruples from <$126k to $351k.

Regardless of incomes, though, what matters is that (a) attorneys sometimes work with a time budget smaller than they prefer to do the good job they want, and more importantly, (b) examiners aren't being given the time they need to do the good job they want.

As for embarrassments like the swinging-sideways patent, I can understand how an examiner would be unable to find prior art to make his legally required prima facie showing. But practically speaking, is that patent ever going to be licensed, asserted, enforced, litigated? Everyone whose opinion matters already recognizes that the rare ridiculous patent has no bearing on the many others out there. (Certainly, I will not advise infringing a competitor's chemical composition or manufacturing method patent because some gentleman has a patent on exercising a cat with a laser pointer.) Address the things that matter; what does the USPTO care if the lay public thinks less of it?

[Leopold Bloom]

"Why not a different patenting system for software, like a registration system, similar to plant patents, with a shortened lifetime, say 5 years?"

I think a registration system is a bad idea - you'd have to come up with a completely new regime for enforcement. But, the idea of matching term to the technology lifecycle is worth discussing. I'll take your 5-year term if you can figure out a way to get me an examined patent in 1 or 2. Right now I'm not getting a first office action until late year 4.

[Tom Dodd]

Both software and business methods are a sore spot with the tripartite efforts- Japan readily grants patents on both, while Europe is much less inclined to do so- so much for global harmonization in this area.

'Software' is defined in the EPC simply as "programs for computers"

'Business method' is a little trickier- the EPC doesn't define them, but allows so-called 'business methods' to be patented only if they solve a technical problem (rather than an administrative problem)- EPC Article 52(2)(c) and 52(3).

Both software and business methods share a couple of basic common elements- they always contain written expressions, and they almost always derive their economic value from publication/sale- when published they are protectable by copyright laws. The same cannot be said for manufacturing, treatment, and most other processes, which derive their economic benefit from actual performance of the process.

Given the gulf between the tripartite group, perhaps the US should lead the efforts in advancing an alternative protection for software and BMs (something between copyright and patent, perhaps?).

And yes, I have practiced in the electrical arts though I see no reason why that experience would (dis)qualify anyone from being able to support a position advocating an alternative protection scheme for patents that are only tangentially related to electrical patents.

[bierbelly]

"Address the things that matter; what does the USPTO care if the lay public thinks less of it?"

Because they're spineless b@$&@$&%?

[bierbelly]

"I think a registration system is a bad idea - you'd have to come up with a completely new regime for enforcement."

Why? Sue an alleged infringer if you're so inclined, and be ready for the invalidity counter-claim. If you've done a sufficient search and believe you're entitled to the scope of the registered claims, you should be OK.

[Mark Pitchford]

Gideon,

I don't know you, so I won't judge your practice. I just know that for me, at this point in my career, I do not believe that anyone in the 1-4 year practice range can write and file a sufficient response in under four hours from pick up to put down. I just don't think that anyone can evaluate the claims and references that quickly and give (what I consider to be) a thorough response.

I'm glad you enjoy your setup though.

[GideonPope]

"and give (what I consider to be) a thorough response."

Well Mark, that may be what the main difference between us is.

I remember the first place I worked - the partner would always make me include 5 or 8 pat responses.

Every reply would look like . . .

No PF obv established, obvious to try, teaches away, no MTC, . . .

What a nightmare.

Much of the problems associated with time, IMO, come from the lawyerly preconception that every argument must be included.

Here's my secret, which I share with you all now for free:

1. Argument almost never convinces the Examiner to change his/her mind.

2. Amendment sometimes does.

Why spend an hour trying to verbally cajole your dog to run to your side when a Snausages treat will get the job done quickly?

[Malcolm Mooney]

"So figure 1.5 hours to read the art and the action and formulate a response."

LOL. What is the technology? Folding chairs?

[examiner#6k]

ironic, too much to go over all the way, but in my art I don't get small fries, I get big boys and less big boys, one time I thought I had a small fry, and it turned out he was actually more of an ass kicking fight for every claim they have loner inventor professor than most attorney's for the big boys are. He does all his own work, its pretty cool actually, if all inventors were like him patent law wouldn't even be taught in law school because no lawyers would be hired. He is the very definition of an inventor in my field.

The only issues I have for myself personally is the overclaiming at the outset, not disclosing material information at the outset, apps not claiming what they believe to be an invention rather than just something they made, and finally, playing dumb during prosecution. That's disregarding issues I have with classification etc. in the office (if I didn't miss any atm). The issues I have for the patent restricted american people as a whole are legion and I won't get into them atm.

Fen- I'll give you the first thing with the caveat that the applicant's invention is subject to the limitations imposed upon him by the knowledge he possessed as one of ordinary skill at the outset just as much as any prior art I dig up. Tricky ground that one, but still, it is there. Also material to that topic is whether or not the applicant is entitled to a long drawn out prosecution in these times of lightening fast innovation in order to get those broad claims, and that my friend is far from a certain matter. Every second action I issue can equal up to a whole years time of market uncertainty on a topic the public dooesn't even know is being prosecuted until it is published with claims drawn to such and such.

I would say more but I gtg.

[Mark Pitchford]

Tom and bierbelly,

I can write a claim to a ballast control circuit that accomplishes a new control function.

However, if that ballast control circuit includes a microprocessor executing instructions, what is its status now?

Hardware and software are only completely separate in your minds, not in the real world of electronics.

Now you're going to say something about servers that do nothing but execute high level code, and I'm going to point out that the high level code has very important components that instruct the server to store a particular piece of data in RAM or HDD or remote from the main server.

It's easy for someone who does not understand software and hardware to separate the two. For someone who works with it, you must always consider the hardware setup and how your software is going to interact with it.

[stepback]

Those of you ranting on this page about "software" patents and "business method" patents are only continuing the proof that people are mostly INMM's (Irrational Noise Making Machines).

What the #$@!& are you even saying?

If I have an electrical circuit inside a cash register and the circuit includes a reprogrammable ROM that converts BCD (Binary Coded Decimal) signals into 2's complement signals, does that automatically make the gizmo "software"? Does it make the function of the gizmo a business method? What the @#$%! are you clowns talking about? Err, I mean you INMM's. (Yes, I do mean you people.)

Never mind.

Let's keep tossing irrational noises at each other. Your turn.

[stepback]

MP,

Obviously we were typing along the same lines of thought at the same time. (Except that my secretary interrupted me with real work issues and I hit the post button after you :-)

[Malcolm Mooney]

"If I have an electrical circuit inside a cash register and the circuit includes a reprogrammable ROM that converts BCD (Binary Coded Decimal) signals into 2's complement signals, does that automatically make the gizmo "software"? Does it make the function of the gizmo a business method? "

I don't know. But I do know that it doesn't make your cash register patentable.

[GideonPope]

For completeness I add that argument is appropriate when the Examiner has missed something about the art - that does happen.

But if the Examiner knows what doc A teaches and knows what doc B teaches and the Examiner has combined A and B on 103 to reach your claim, you can argue for 100 pages and cite 20 CAFC cases and the response, 99.9% of the time will be - "applicants arguments have been considered but are unpersuasive."

[Veteran Attorney]

"But if the Examiner knows what doc A teaches and knows what doc B teaches and the Examiner has combined A and B on 103 to reach your claim, you can argue for 100 pages and cite 20 CAFC cases and the response, 99.9% of the time will be - 'applicants arguments have been considered but are unpersuasive.'"

This is where your response is simplified, because it's a pretty safe bet that the examiner has not read 1) the app, 2) A, or 3) B.

[GideonPope]

I wrote: "So figure 1.5 hours to read the art and the action and formulate a response."

Dennis wrote: "LOL. What is the technology? Folding chairs?"

That was clever - made me giggle.

But seriously, I have worked in dozens of arts. It's all mostly the same. Biotech and pharma as the easiest, in terms of art, but require the most time to draft a reply.

Mechanical arts tend to be the hardest art to review, but very easy reply.

Chem, chem e, somewhere in between.

90% of the Office Actions I get have 1-3 U.S. patents cited as the core art.

Rejections are like . . .

Claims 1-x rejected over A. 102
Claims 1-x rejected over A or B, 103
Claims 13, 17, 20 rejected over A or B, further in view of [Q]. 103

So read A and B closely, review Q, which is cited only to pull in a dependent claims limitation.

How long does that take you?

If you're an old guy who is slow reader and a slow typist then I can understand why drafting replies is so grueling.

But Dennis, you're not that old.

How long does it take you to read?

[Malcolm Mooney]

"But seriously, I have worked in dozens of arts. It's all mostly the same."

How much did it cost you to have the doorways in your house modified to accomodate your head?

[Tom Dodd]

Pitchford wrote- "I can write a claim to a ballast control circuit that accomplishes a new control function. However, if that ballast control circuit includes a microprocessor executing instructions, what is its status now? Hardware and software are only completely separate in your minds, not in the real world of electronics."

Quite to the contrary, my mind is clear- hardware and software are integrally linked. However, a "ballast control circuit" is a piece of hardware- since it includes a combination of elements- comparators, power inputs, diodes, etc. it's either an article of manufacture or if you like, a machine under section 101 (or 52 EPC if you prefer). Its control function provides for its utility/industrial applicability.

Software is another story altogether, for without hardware to run it, software is simply a set of written instructions that no one would bother reading, or writing for that matter. That was my point that you seem to have missed- not all electrical hardware needs software to be operable, however, ALL software requires hardware to have any value.

Same story for stepback (who appears to be the only one ranting and engaging in name-calling in the hardware/software discussion). The cash register circuit and the reprogrammable ROM chip- under the EPC both of these devices (hardware) would constitute patentable subject matter under EPC Article 52. The unpatentable (in the EPC) subject matter would be any software that flashed upgrades, etc. to the hardware

[Michael R. Thomas]

When will secret patent sales and prices be required to be made public. public notice of intention to file allerts inventors of illegal restricting of their valuable rights.

[GideonPope]

Dennis Wrote:"How much did it cost you to have the doorways in your house modified to accomodate your head?"

Come on Dennis, you're better than that!

Of course I designed my own house, which I built myself, so there was no need to "modify" them at all - I just had them built big in the 1st place!

Duh!

[Captain Obviousness]

Gideon - that is not Dennis replying to you, it is a poster called "Malcom Mooney"

Unless Dennis = Malcom Mooney???? That would send shockwaves through this blog :)

My 2 cents - I've only been practicing for a year, but unless it's a really shoddy OA, I can't respond in less than 6 hours. 8 to 12 is typical if it's a "good" OA. If the Examiner clearly spent a lot of time and effort on the OA, I will do the same on the response, even if it means getting my time written off (which it generally does).

[examiner#6k]

I was not aware Denise went by MM. That would explain a thing or two though.

[anonyme]

GP said: "But if the Examiner knows what doc A teaches and knows what doc B teaches and the Examiner has combined A and B on 103 to reach your claim, you can argue for 100 pages and cite 20 CAFC cases and the response, 99.9% of the time will be - 'applicants arguments have been considered but are unpersuasive.'"

VA said: This is where your response is simplified, because it's a pretty safe bet that the examiner has not read 1) the app, 2) A, or 3) B.

I say: as an Examiner, I can say that GP knows what he's talking about and he's someone who knows how to play the game.

About OA response times:

I can say that the shorter your response, the more well-received it will be by the Examiner. I've received some responses that literally look like a Supreme Court brief (at least in terms of length), except for the fact that they were replete with misspellings and improper English. Even if your application has 50 claims (2 independent, 48 dependent), most attorneys will focus their time on the rejections of the independent claims - - if you overcome those rejections, you overcome them all. Thus, GP's estimates for response times do not seem that unreasonable, unless you (the Attorney) is unfamiliar with the art that you're working with.

About case citations:

Ditto what GP said. Unless you have a good reason for citing a case, then leave it out. An attorney arguing case law tells the Examiner that he (the Attorney) has no other argument to overcome the art. What exactly are you expecting - - the Examiner to spit back a law review article? - - the arguments should be about the technology, not the law. Unless the situation clearly calls for it, save your legal arguments for the Board or the FedCir. That goes for all those attorneys out there who continue to cite In re Dembiczak even after KSR - - nice try - - very persuasive - - NOT!! You'd be much better off amending the claims, and then pointing out how the rejections cannot be maintained in view of the amendments.

[JTS]

"Ditto what GP said. Unless you have a good reason for citing a case, then leave it out. An attorney arguing case law tells the Examiner that he (the Attorney) has no other argument to overcome the art."

This advice is vacuously true and useless. It's like saying "don't do wrong, unless you have good reason to"...

Some similar advice has been floating around for a long time (maybe PRI or some review course teaches this): cite the MPEP rather than equivalent case law, when possible. This seems to make sense.

But, if by your comment you mean don't argue case law when you can argue technology, that's bad advice. If an examiner is violating some case law to an applicant's detriment, then the prosecutor must consider the option of making case-based legal arguments, and choose to do so when the battle is worth it. Sure, you may go to the BAPI, but if you've done your homework, you probably win. It's all about knowing the applicant's legal rights, and chosing whether or how to effectively protect them.

If you narrow a client's patent (whether by argument or by claim amendment) to overcome a rejection that was legally improper, then you're giving away patent rights. Sure, sometimes an applicant may want to just take the path of least resistance and amend claims to overcome the rejection, but don't do so because of some perception that arguing case law is ineffective.

I've seen many legal aruments help get solid patents allowed, sometimes based on MPEP, sometimes on case law... even saw a constitutional Due Process argument win in the PTO (an inter partes re-exam, issue related to consolidating re-exam patents).

[anon]

>

Fine - - then be prepared to file an RCE to get your amendment in AFTER final rejection, because as GP already pointed out "99.9% of the time [the Examiner's response will be]'applicants arguments have been considered but are unpersuasive'".

[GideonPope]

If the Examiner is "violating some case law"!!!

Oh that is rich indeed. Like the case law is some Southern Belle virgin, and the Examiner is giving her the old 102 and 103. "You like that? Have some 112 with it!"

It's not that tough, but you can make it tougher if you want to.

Most rejections don't involve esoteric issues of law. I can quote the 20 golden rules for you verbatim . . .

Inherency must be established by the Examiner . . . must occur invariably . . . reasonable expectation of success . . . not obvious to try . . .

So what? Why spend hours running down useless case law and pin point cites when it won't change what the Examiner is going to do?

That's pissing in the wind. I learned that about 3 years into the practice.

In the end, you really have 2 options at any point in prosecution.

You may

1. - Play the game at the PTO the way it's meant to be played, or
2. - Set up for and file an appeal.

But why mix the two?

In Re Vaeck is never going to compel an allowance from a junior Examiner.

Oh yeah, I also remind the panel that 80% or more of rejections are typically 103 by the time you whittle down the issues.

And what does Gideon say the law of obviousness is?

It's nothing!! That's the beauty of it!

You can take 100 BPAI members, put them in 100 different rooms, have them review 100 103 rejections, and you won't get 10 members who agree on more than 70 of the rejections.

Why? Because there is no "law" of obviousness.

The SC decisions say, "get the art, skill of artisan, differences, blah blah blah", but, after you read through that crap, which is supposed to make you feel as though guidance has actually been provided, the conclusion is, "and then determine whether it's obvious."

!!!!

In other words, it's obvious because the Examiner/Board/Fed Circuit says it is!

So when it gets down to the 103s, there is no "you're giving away client rights."

Finally, to the numb nuts attorney who suggested such a give away, if you're doing your dammm job right it's never you doing anything.

CLient - so what now?
Gideon - well, we can do A, B, or C. If we do A, then, if B, then . . .

Client - do C.

Get it? I don't decide anything, I just advise. And it's ridiculously easy to tell a client -

"The Examiner is legally wrong, and we'd have a good shot on Appeal. Our other option is to make an amendment and give up claim scope, which might result in allowance - the claim material we give up could be pursued in a continuation (unless the PTO gets its way)"

What do you do? Narrow the claims and file the Reply without telling the client?

To 1 year associate:
you wrote

"Gideon - that is not Dennis replying to you, it is a poster called "Malcom Mooney" Unless Dennis = Malcom Mooney???? That would send shockwaves through this blog :)"

Wow, the irony of a guy named "Mr. Obvious" posting this.

Of course MM is DC. I've mentioned this before.

How many times has MM been the 1st poster on a new topic and that first post is a trolling?

Duh!

You don't think I make hundreds of thousands of dollars a year advising clients because I miss obvious crap like that, do you?

"My 2 cents - I've only been practicing for a year, but unless it's a really shoddy OA, I can't respond in less than 6 hours. 8 to 12 is typical if it's a "good" OA."

You'll figure this out as you get older - the shorter an OA, the better it tends to be.

"If the Examiner clearly spent a lot of time and effort on the OA, I will do the same on the response, even if it means getting my time written off (which it generally does)."

You'll figure this out to. You're wasting your time.

No Examiner is going to allow claims because you put in the extra effort on the "quality" of the reply.

Examiners allow claims because . . .

The claims are patentable.
and/or
He needs a count.

I guess back when i was 1 year in I was the same way.

I actually thought that they gave patents out for inventions!!!

Silly Gideon.

[JTS]

The objective of prosecution is not to persuade the examiner. The objective is to get the best coverage that the applicant is entitled to, less whatever coverage applicant choses to forego despite being entitled to it. If an examiner's rejection is legal rot, and it's an important application, I feel sorry for the applicant whose attorney can't overcome. So you get an RCE... so what. You appeal, you file an RCE, have an interview. Maybe you have some basis for a petition. It's a special form of legal practice, prosecution, but no less deserving of smart and effective ADVOCACY.

It's a simple game. Assuming you're entitled, the broader claim coverage you want, the longer prosecution takes. And if you're interested in optimal coverage, you don't amend the claims to overcome an improper rejection.

99.9% is just wrong.

[Just an ordinary inventor(TM)]

Dear GideonPope,

Re "Silly Gideon."

Yup, you got that right.

* * * * *

[GideonPope]

"And if you're interested in optimal coverage, you don't amend the claims to overcome an improper rejection."

Optimal coverage?

Are you including patent term and immediacy in that?

You can easily burn 1-4 years going after an Appeal or continued prosecution that may fail. The overturn rate at the Board is what? 50%

So you're going to tell your client to hold out years for "optimal coverage" and there's no guarantee that you get it?

I don't know how you define "optimal", but often in business less than optimal right now is worth a lot more than maybe optimal in maybe 1-4 years.

And my experience is that RCEs don't usually result in allowances if all you do in the RCE is argue the same crap again.

What that results in is an easy count for the Examiner.

[examiner#6k]

Gideon's speakin it how it is yo, he seems to be the only one that really "gets it" amongst you attorney's posting here.

"You may
1. - Play the game at the PTO the way it's meant to be played, or
2. - Set up for and file an appeal.
In Re Vaeck is never going to compel an allowance from a junior Examiner."

" Why? Because there is no "law" of obviousness.
The SC decisions say, "get the art, skill of artisan, differences, blah blah blah", but, after you read through that crap, which is supposed to make you feel as though guidance has actually been provided, the conclusion is, "and then determine whether it's obvious."
!!!!
In other words, it's obvious because the Examiner/Board/Fed Circuit says it is!"

PREACH IT BROTHER MAN! GLORY TO JESUS! AMEN!

I'm not entirely convinced about the DC=MM though, that's still just a theory, I beat him to the first on the last post today.

[erez gur]

The article "worth reading" mentioned (Jan 30, 2008 at 03:07 AM) is excellent (and short).

The writer (Gernot Pehnelt) notes that the USPTO system is basically sound, but does not discuss the problems which do exist. In my opinion and as many have proposed, the simplest way to solve these problems is give the Examiners more training, tools and time to perform better searches.

I disagree with Mr. Pehnelt about the reasons for fewer filings with the EPO.

In the past, an EP patent was much more expensive than a US patent. In the coming years, EP patents will be cheaper while over the years US patents have become more expensive (silly rejections, endless RCEs, interviews). Additionally, patentability in the EP is much more predictable than in the US.

If the US increasingly makes the patenting process more expensive, less predictable, less likely of success and devaluates the value of issued patents the EPO will ultimately become the preferred office to file at the expense of American jobs.

[CaveMan]

Come to think of it I've never seen Dennis and MM in public at the same time...

[CaveMan]

I find that when practitioners and clients acting together favor expediency over quality then garbage is the result. And garbage practice is a race to the bottom and leads to things like calls for reform. When a good attorney actually spends the proper amount of time carefully analyzing and properly responding to rejections with the full array of options, such as argumentation, amendment, appeal, petition (as mentioned above), then good things CAN happen, examiners CAN be persuaded, dogs and cats CAN live together, and strong patents CAN issue.

In my opinion, as any good coach or other leader would probably agree with, when or if there is a suspicion that things are all FUBAR (to quote #6K), you get back to the basics. Clean house at the PTO and get some new and competent upper management in position. Raise the training bar. Step up the basics in Patent Academy with competency tests and other consequential actions. Make it harder to get a registration number. At least get Whealan a haircut. If the PTO looks deep inside itself and within its orbit, I'm sure there are plenty of good people prepared to step up and teach the true and proper way in which things should be done.

Stop trying to fiddle with the system, especially those political hacks and those "under the influence," e.g. on the dole. Morale and quality become low when good people are put in a position to do a mediocre job as a result of poor leadership. People always need to be driven to do their best and have a high goal to aspire to. High aim is a universal motivator - as the old Scottish proverb goes, "set a stout heart to a steep hillside."

Incidentally, sorry erez gur, your reasoning is flawed. Something easy and predictable isn't better. Actually the reverse is true. I'd say if something was easy and predictable I, personally, wouldn't really think it was worth much...

[Veteran Attorney]

"...and he's someone who knows how to play the game."

That's the problem. Examiners see prosecution as a game of getting counts. It's not.

[Lower]

"Lower, I think an attorney does his client a disservice by knowingly submitting anticipated/obvious claims which will be heavily amended in prosecution... The inventor is paying for our legal/technical expertise. We're not mere scribes, and I feel it short-changes that client when we pretend to be..."

This is what happens when I only read Patently-O once a day. I respectfully disagree that the inventor is paying for my technical expertise. It is clear when I speak to them that they know way more about their field than I do.

I should probably give a little background and acknowledge that I work in a crowded field of art where, for example, some compounds are known for use for solving problem A. I'm thinking of cases where the inventor discovers some compounds that can be used to solve problem B, but some of them overlap with the known ones for solving problem A. Kaboom, I think (and the Examiner usually thinks) the claim is obvious, but the inventor still wants to claim the compounds broadly. That's what I meant.

I agree, I don't think it's the way I would run a practice, but at this point, I'm the associate, not the partner.

As for time estimates, I think it depends heavily on whether you're picking up the file for the first time or whether you wrote the application and are now prosecuting it. I am fortunate in that some clients mainly look at the overall bill per patent. So any additional time learning the case (say, 8 hours for the 1st response) is made up for on the (usually) 3rd or 4th responses that only take 2 hours to complete.

[anonyme]

>

Here's a newsflash for you - - LIFE is a game - - if you can't play, then take your chips and go home.

[Michael R. Thomas]

Has the concept of patent invalidating due to inventorship disputes helped make fighting for intellectual material rights useless? Should we eliminate this option to Help find correct inventorship.Has backdating helped to work in combination to deny our greatest inventors credit and compensation?

[Lazarus Long]

GideonPope is an optimist when he is citing the (un)likelihood that of getting agreement in Board decisions.

True case: we once has 2 related cases go up to the Board a couple months apart. Same inventor, spec, etc. Claims were a little different. But the same basic issues in both cases. Specifically, 112, 1, written description and enablement rejections based on the same claimed limitations. The rejections and applicant responses in the files (including briefs, etc.) were all identical in all substantive ways. Same panel of judges in both cases.

Should get the same decision in both cases, right? WRONG!

In the 1st case we were affirmed on the rejections. In the 2nd case we were reversed! How the same panel of judges can rule in completely opposite directions on the same issues, with the same arguments by the applicant and examiner, is completely beyond understanding.

However, this is a good reason why going to the Board is often a shot in the dark for applicants. It is also part of the reason that some examiners & SPEs don't like to go to appeal. As well as part of the reason for the affirmance rate is what it is.

thanks,

LL

[Michael R. Thomas]

Did anyone notice that the patent reform act 2007 takes away inventor rights to a new patent in the event it is later determined that an inventorship error was made.This act gives big business a blank check for inventor civil rights violation.

[examiner#6k]

"That's the problem. Examiners see prosecution as a game of getting counts. It's not."

Yeah you're right, it's not, until I get some experience, then it is. I took it very seriously the first day I was here, and then I realized what the hell was going on and now I take it a little easier. By the time I'm a primary (if I did that) I'd be sending out those two page OA's that I'm sure you're all so fond of.

[alpha-omega]

LL,

I know what you mean. Today is movie quote day. I will respond with movie quotes:

"What kind of topsie turvy world do we live in where @pes ..."

"You blew it up, ahhhh darn you, darn you all to heII."

"If I was half the man I was five years ago, I'd take a flame thrower to this place."

[JohnDarling]

"...those two page OA's that I'm sure you're all so fond of."

You are correct. Two pages of nonsense is much easier to deal with than 10. Or more.

Keep it short and simply wrong, instead of long and overly wrong.

Pointing out every mistake in the OA is time consuming.

When I get the OA that starts out, "Claims 1-20 are rejected under 35 U.S.C. 102(e) as clearly anticipated by European Patent 1 234 567" I just point out the glaring error and resist the temptation to see just how silly the interpretation of the reference really is. (It's truly surprising how many of those OA's I get.)

[JohnDarling]

"Claims were a little different."

LL, there's your answer.

[Lazarus Long]

JD, actually, the differences had nothing to do with the issues that were under consideration. (Any differences in claims did not effect the enablement or written description and no one ever argued anything differently. SO, same issue). Nice try, though. Didn't think that you would defend the bored Board :)

thanks,

LL

[Lazarus Long]

JD, actually, the differences had nothing to do with the issues that were under consideration. (Any differences in claims did not effect the enablement or written description and no one ever argued anything differently. SO, same issue). Nice try, though. Didn't think that you would defend the bored Board :)

thanks,

LL

[Clive Fenster]

Mr. Long, funny you should mention that. I currently have two cases before the BPAI, submitted about two months apart. Without going into details, the fundamental issue in each is the same -- a question of whether it is permissible to rearrange the combinations disclosed in two references as the examiners have done. It'll be interesting to see how the two decisions compare, I guess.

[ironicslip]

Exam6k# - i had had a long day filing ids's for cases that average 10 years of pendency (over 75% of my docket - real special) ...

"ironic, too much to go over all the way, but in my art I don't get small fries, I get big boys and less big boys, one time I thought I had a small fry, and it turned out he was actually more of an ass kicking fight for every claim they have loner inventor professor than most attorney's for the big boys are. He does all his own work, its pretty cool actually, if all inventors were like him patent law wouldn't even be taught in law school because no lawyers would be hired. He is the very definition of an inventor in my field."

ahh ... a brother in the fight ... it is likely your pro se is very much the type of person i am familiar with ... pouring over the mpep trying to distill the reasoning of case law ... and then crafting a story so that the examiner can hit the real meat of the invention ...

which is why i find a lot of banter here quite enlightening, actually ... i can understand your situation a WHOLE LOTTA MO

no communication = no compromise

again, thanks for your service ...

[JohnDarling]

LL,

Not defending the Board, just taking a guess at the reason for two diametrically opposed decisions on the same issue. :-)

Feel free to post the serial numbers and I'm sure you'll get an explanation to your liking. If not from me, from somebody else.

JD

[examiner#6k]

JD when you get an action from me it'll be correct on the ind. over 60% (if not 90%) of the time. And then we can argue about the meaning of important words, like "on" and "aligned" for a few actions before you pull up a dep and get an allowance after RCE. It might not be a game, but you guys help make it one ;)

Maybe a dictionary would help many of you out, Dictionary.com is my preferred source since it gives amer. heritage along with its defs.

[Mark Pitchford]

You consider 60% correct on JUST the independent claims acceptable?

That explains a lot. Seriously.

[GideonPope]

A guy who calls himself "veteran Attorney" wrote:

"That's the problem. Examiners see prosecution as a game of getting counts. It's not."

Ahahahhh. Ah Hahahahahah! Ah hahahaha!

You want to know why I make hundreds of thousands of dollars a year prosecuting patents? Because I'm competing against "veterans" like this Yahoo who think that, for the Examiners, it's not a game of getting counts!!

Ahhahahahahahahah

ahahahahaha

Please stop, Mr. Vet, please!

Ahahhahahah.

And let me guess, you haven't figured out that law firm practice is about playing the "billable hours" game? Ah

Ah

Ah
ahoeuusntuheeoahaoeuhoaeuheoauheoha. Whoopee!

Wow, I pity your clients.

I tell my clients as often as possible - getting patents is a game, not a legal pursuit. The fact that I have a JD only means that I'm really smart and I play the game well.

But it must sound good to your clients - I'll give you that.

It must sound good when you start rambling about inventions and diligent prosecution and legal precedent and the new KSR precedent.

You do cite a lot of case law, right?

Bhaahahahah.

It's wonderful.

At first, when clients hear me say, "The patent system is a joke and a game, and your two choices are to 1) play the game or 2) to pursue the idealogical spam that is promulgated by most PTO higher ups and most Reg Numbers - the first choice gets you patents at the highest rate of speed possible and to a breadth of claim scope with which you are comfortable, the second gets you bigger bills, the slow track, and marginally stronger patents, although fewer of them" react poorly.

Then, after most of the things I tell them will happen happen, they start to appreciate that I'm more than a cynic.

Like Telly Sevales, I'm a player baby!

That's right - I say it with pride - why sugar coat it?

What it comes down to is simple . . .

You can spout all the legal crap you want, but wise clients will always be more impressed with your ability to tell them what is going to happen (your counsel) than with what has happened (your ability to cite legal precedent).

And remember young mousekateers, even invalid patents that haven't yet been invalidated have value!!

[JohnDarling]

6k,

With respect to your favorite dictionary, you may want to read a case called Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). And see MPEP 2111.01. Section III in particular.

I realize from your postings on other sites that you don't regard court decisions to be the law, but maybe you want to double check that with your mentor Malcolm.

If I got an OA from you I would petition the Director to waive that "twice rejected" requirement so I could file my appeal brief immediately. But you'd probably re-open anyway (50% chance, at least), so I guess the game would require me to just file the usual response to see which lame form paragraph responses you'd punch up. Let me guess, you'd use the one about recognizing that hindsight can't be used blah, blah, blah, and the one about attacking references individually blah, blah, blah. You might feel extra special creative and insert the one about bodily incorporation.

Now that I think about it, I have gotten an OA from you.

[Veteran Attorney]

No I don't recite case law. And if I do it's usually in a discussion of a particular MPEP section.

If your clients are happy playing the game and paying you hundreds of thousands to pay examiner extortion, that's their business. I don't pity them as I'm sure they've made an informed decision. I'm quite sure the examiners are happy playing the game with you too.

I'm well aware that many (most?) examiners regard their job as a game of getting counts. Was one myself for a time. I know all the rules, and tricks, of the game. Doesn't mean I have to play it.

Where I work is about collections and expenses, not "billable hours." So I don't have to play that game either.

[JTS]

This all started as some discussion about citation to case law in responding to rejections. Everyone who's been around this business for a while develops their own little theory on how things work and why. What I suggest is that practicioners shouldnt' have a compact one-size-fits-all approach for prosecuting patents. Different circumstances call for different approaches. I've known some attorneys that do as suggested above, they get an app allowed by repeatedly amending the claims (often aimlessly) until the examiner is comfortable that it won't ever be plastered all over the media after it issues. That might be fine for some cases, but for the ocassional promising application, this screws the applicant. There are rules to make sure that applicant's are treated fairly. They're not all in the MPEP. If you don't know those rules and aren't willing to rely on them when appropriate, then you've got an empty cylinder in your sixshooter. Smart practicioners accumulate nuggets of law (esp. regarding PTO procedure) and sometimes rely on them.

[examiner#6k]

Here's an excerpt from the OA recieved from JD (or his attorney associate, whatever):

Part X is clearly defined as being ON (underlined) the other part.

The reference shows Part X clearly underneath, and touching the other part.

My response will be (as soon as it's moved to my docket):

The term "on" while inclusive of "on top" does not differentiate the claimed invention from the prior art referenced. I might cite the definition of on if I feel like it. No FP for you JD. I rarely use them anyway.

4 months (and 250$ late fee) later I'll get an RCE and he'll probably get an allowance.

Good times.

[examiner#6k]

Oh and btw, he might choose to cite “given their broadest reasonable
interpretation consistent with the specification.” >The Federal Circuit’s en banc decision in Phillips v. AWH Corp., and I might choose to cite these two:

"During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004) (The USPTO uses a different standard for construing claims than that used by district courts; during examination the USPTO must give claims their broadest reasonable interpretation >in light of the specificationthe plain meaning is inconsistent with< the specification. In re Zletz"

and point out how his spec doesn't differentiate that they're not on the bottom of the other parts, nor even specify they're on the top. In fact, his specification is purposely left so wide open as to allow such a thing with only his drawings of "an embodiment of the present invention" to rely on while all his actual words are mirrored almost exactly in the claims with the exact intent to have a "broad" invention while at the same time having a narrow one to fall back on.

Standard operating procedure from your side, same here.

If he gets pushy, there's always the failsafe: Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004) (Ordinary, simple English words whose meaning is clear and unquestionable, absent any indication that their use in a particular context changes their meaning, are construed to mean exactly what they say.

[JohnDarling]

You got a serial number to go along with that excerpt?

[examiner#6k]

Why yes, yes I do, one second.

It's 11Everyothercasefiled, Docket number 000Everycasethisfirmfiles

In all seriousness though, who knows, I might throw it out there in a year after (if) it issues.

Don't get me wrong, I regard the decisions as fairly binding in most circumstances, but I do NOT regard them as the law, which they certainly are not. In the event your freshman law classes were so long ago they're getting fuzzy, last I heard was that in this great nation the congress shall draft legislation and then the president signs it into law. That my good fellow is the only place law comes from so far as I know. Judges can rule all they like and it stand until someone comes along to clean up their mess (graham I'm looking at you), but it'll never be law.

One thing though, if this kind of thing happened to me as a client, what would the chances of me going back to that lawyer again? I mean come on, misinterpreting "on", and at the same time getting schooled by a boy from hicksville, who cited art that I was no doubt already aware of, and who just got his rent paid by me for writing 2 lines of text. (and who apparently rejected me from behind the back after not even having read my specification and typing the first three big words of my ind claim into "I'm feeling lucky" google, according to what I supposedly write here) That's a kind of blackeye I'd hope my attorney would stop me from getting, how's that going to look when this thing goes to trial? There will be chuckles.

You'll excuse me I have a rejection to finish before I get outta here tonight.

[Another Anon Examiner]

> But if the Examiner knows what doc A teaches and knows what doc B teaches and the Examiner has combined A and B on 103 to reach your claim, you can argue for 100 pages and cite 20 CAFC cases and the response, 99.9% of the time will be - "applicants arguments have been considered but are unpersuasive."

Do NOT send me 100 pages of arguments. Give me as short and to the point of an argument as you can. The more crap you throw in there, the more it looks like your argument is all crap, and the more the core of your argument is obscured. If you state clearly what your point is, then I won't miss it, and if I disagree with it, I can spend the time I have addressing it in detail, rather than having to use most of that time responding to 100 pages of mumbo-jumbo.

Short and to the point, PLEASE!

[SF]

Who the #$%&@ argues caselaw to an examiner? What a waste of time! If you can't point to a feature **recited in the claims** that's missing or you can't find a common sense reason why something wouldn't be obvious, citing caselaw is pretty fruitless. Point to the MPEP is there is a blatant failure to follow it, sure. But citing caselaw is a collosal waste of time.

[JohnDarling]

Pretty much what I expected from you.

[Clive Fenster]

"Don't get me wrong, I regard the decisions as fairly binding in most circumstances, but I do NOT regard them as the law, which they certainly are not. In the event your freshman law classes were so long ago they're getting fuzzy, last I heard was that in this great nation the congress shall draft legislation and then the president signs it into law. That my good fellow is the only place law comes from so far as I know. Judges can rule all they like and it stand until someone comes along to clean up their mess (graham I'm looking at you), but it'll never be law."

This (mis)understanding of the import of cases appearing in the MPEP is precisely why I don't bother citing them.

Another Anon, trust me that attorneys have little desire to draft up 100 pages of argument. (Sure, they'd get to bill for it, but the average attorney's docket contains very few cases worthy of such billing.) But I need to (a) present the examiner with every argument that I think might get the claims allowed, and (b) build my record for a possible appeal. That said, I still make every effort to keep things as concise as possible.

It also strikes me that if the attorney sees the potential for dozens of pages in an Amendment, the case likely is a great candidate for a telephone interview.

[pds]

examiner#6k writes "Don't get me wrong, I regard the decisions as fairly binding in most circumstances, but I do NOT regard them as the law, which they certainly are not."

It is clear as day that you never attended law school, or even a "freshman law class" (btw: in law school, it isn't "freshman" but "1Ls").

Notwithstanding your incomplete analysis as to the roles of the Legislative and Executive branches (i.e., the Executive branch is charged with enforcing the law), you completely ignore the role of the Judicial branch. Specifically, "[i]t is emphatically the province and duty of the judicial department to say what the law is … [t]hose who apply the rule to particular cases, must of necessity expound and interpret that rule." Marbury v. Madison 5 U.S. 137 (1803).

Thus, for over two hundred years one of the bedrock principles of U.S. jurisprudence is that the judicial branch (e.g., the Federal Circuit and the Supreme Court) gets the tell you, me, and everybody else what the law is.

You might also want to brush up on a concept called "common law."
http://en.wikipedia.org/wiki/Common_law
In so doing, you may want to look at M.P.E.P. § 804(II)(B), entitled "Nonstatutory Double Patenting."
http://www.uspto.gov/web/offices/pac/mpep/documents/0800_804.htm#sect804

Honestly, just about every patent attorney who reads this message board knows the USPTO routinely ignores the law of the land, but it is refreshing to have one of its members so brazenly admit to it. What's next, the FBI admitting to illegally wiretapping citizens in the US? the EPA admitting to ignoring companies violating anti-pollution laws? Now that would be refreshing as well.

Examiner#6k, in case you haven't realized it, you are acting in a very similar capacity as someone who works for the FBI, EPA, FDA, FCC, etc. Moreover, just like these government agencies, the USPTO is bound by the rulings of the judicial branch unless otherwise Congress enacts and the President signs a law to the contrary.

It is sad that I have to rehash 5th of 6th-grade civics lesson on the US government to a college graduate who is employed by the US government, but as I rhetorically asked LL earlier in this thread, if you take the patent attorneys out of the loop, who will educate the patent examiners on patent law (or law, in general)?

[Yet Another Anon]

examiner#6k wrote:

"JD when you get an action from me it'll be correct on the ind. over 60% (if not 90%) of the time. And then we can argue about the meaning of important words, like "on" and "aligned" for a few actions before you pull up a dep and get an allowance after RCE. It might not be a game, but you guys help make it one ;)"

I would be thrilled if the TC2100 examiners were correct 60% of the time on the independent claim.

[examiner#6k]

pds, once again you characterize my statements incorrectly. Of course judicial enforces and of course the legislative is there to tell us what the law "means". However, even according to the most BINDING precedent of x y or z case, there's almost always at least one more to support the other view, even though you might say it's less binding. In either case, until it says Code of Va, or whatever the federal equiv is (I haven't been to law school so I'll brazenly admit I don't know) it's in no way shape nor form the law, and you can cite common law all you like, that's why I said fairly binding in most situations. If my case differs significantly from the case the binding precedent was issued for (which it usually does, or else I wouldn't have made the rejection "improperly" in the first place) then there is a decent chance that it doesn't apply as straight-forwardly as you seem to think it does.

There may be a few pieces of arcane lore in the monster we call the MPEP I haven't been fully briefed on, nor read the full opinion on (a lot of those) but what I can say is that I do not IGNORE it when it is blatantly applicable, however, it rarely is when I have it cited against me. Usually it's blatantly incorrectly cited against me. I.e. the piecemeal bs when it's a straight forward 2 reference motivation enabled substitution of one piece commonly known to perform the function of another piece. That's what we know around here as "a load of crap". Sometimes I think they arise from a misunderstanding of the rejection, but eh, who knows.

Oh, and fyi, I work in a capacity more akin to a judge than an FBI agent. And I certainly don't go around telling people to take obscene material off of TV, nor to have safe airplanes. Trust me on this one, the only person who's role mine is anywhere near is a blend of searcher-factfinder/round one judge. Maybe that'll help put your views on track.

Oh and yeah, everyone should remember, saying 60% (if not 90%) is different than saying 60%, or saying at most 60% or at least 60%. And frankly, I just left it as low as 60% just for JD, who we all know gets all the best, most inventive concepts from his clients, and drafts spot on claims the first time around, and who never submits a claim he feels would be more than his client actually contributed. As for the everyday rest of you, you're looking at 90%+.