Patently-O Bits and Bytes No. 2

• Patent Reform: A draft report on S.1145 is available here.  [via PatentDocs]. Although currently supported by more Democrats than Republicans, this is a bipartisan bill that could pass. A summary:
• Change the system to a “first-inventor-to-file” system;
• Reduce patent damage awards;
• Enhance post-grant opposition proceedings;
• Provide for publication of all applications;
• Allow for better third-party submissions;
• Limit patent infringement venues;
• Allow the PTO to set its own fees;
• Remove the residency restriction for judges on the United States Court of Appeals for the
  Federal Circuit;
• Authorize USPTO to require pre-filing patent searches and explanations;
• Re-vamp the doctrine of inequitable conduct;
• Clarify the rules on unintentional delays in filing;
• Limit patent infringement liability for electronic check processing;and
• End USPTO “fee diversion”.
• Patent Reform: Remember, the House has already passed the companion bill. Passage could allow President Bush to ride out of office as the innovation president.
• Patent Baristas discusses PTO’s “Suspicious Behavior” in the Tafas case.

Comments

[CliveFenster]

Perhaps we should agree on the hypothetical application as NOT being one containing nothing more than flagrantly obvious claims (based on two references) that the applicant/attorney KNOWS to be obvious from the outset. Very, very few applications are deliberately filed with such claims.

It's likely that there's something about widget+x that the inventor thought was new and non-obvious, hence its appearance as the independent claim.

[Here's Johnny!]

examiner#6k, I'm not sure I understand what you mean by "predictable."

You obviously like the part of the reform bill that would require us to perform searches and provide you with explanations. Maybe you will get what you are asking for. Good luck to you. The PTO will probably make your job easier. NOT :)

[examiner#6k]

Fenster- Unfortunately not. If the examiner does not know what your app knows was known IN THE ART at the time of invention, that has NO, I repeat NO, bearing on whether or not you or know of a teaching suggestion and/or motivation for a 103, or something that makes a ref inherently anticipating, somewhere in your your own recollections. It is not as you say "the inventive spark" if he knows all his buddies know about it because he read it in a mag. etc. It's a spark only if his buddies DO NOT KNOW about it. Remember, it's your niche, not his, the examiner is probably not a POSHITA in your niche. The thing about this is, you're wanting to pretent that just because the examiner is in airplanes group then he's a POSHITA of maintaining air breakes? Not necessarily, the whole point of this rule is for the inventors to tell us about their niche so we can make a proper judgement and save them (and the public) court fees (and bullying) when it's found out that a POSHITA in air breaks knows right away widgets have whatsits and did ever since widgets were first made. But nobody wants to abide by the rule, they want to find ways around it so they can get a crappy patent, and be able to litigate it with "less" trouble and there's no excuse for it. If you're honest the first time around, and get a decent judge, then you're good to go anyway. The odd case will be a big train wreck that will screw litigators $ so they tell people in prosecution BATTON DOWN THE MOTHER FIN HATCHES! instead of just riding out what their case is, a shitty case, sucks to be them, not for the rest of the population which is still needing quality patents fast. Which is worse for the country, people don't comply with the rule, the backlog goes through the roof and bad patents abound, and 0 people have to pay 1mil apiece to appeal (but many more have to pay $$$$ for false patent lawsuits) OR people do comply, the backlog goes through the floor, bad patents are lessened significantly, and 2 people have to pay 1 mil apeice for a patent claim that's worth 50mil+ (and very few have to pay $$$$ for false patent lawsuits)?

[examiner#6k]

Look Fenster, this is the apps I get, I swear to you, 90%.

Claim 1. Well known stuff with x tacked on the end or worked into the middle.

Claim 2. More well known stuff.

They put one tiny thing in the ind. to make it "nonobvious" when that thing is known in the art and has MANY motivations to be used like the app used it, but the app has one particular motivation in mind, so he chooses to disregard his entire training in his field and say "THIS IS NOT OBVIOUS! I WANT A PATENT!".

I then search, and find the well known stuff 90% of the search time. I then find the small less well known, but still very known piece 5-9% of the time spent, and say one of the 10 motiations 1-5% of the time spent.

If I spend 90% of my time finding the obvious crap, how "focused" of a search am I giving to his supposed "non-obvious" addition? Answer is very little. App loses because he gets a crappy patent if I allowed it.

[CliveFenster]

My assumption was that my claim language, my Field of the Invention, and my suggestion of a class/subclass/tech center would together guide my specific invention to an examiner most suited to examine it.

If my inventor and all his buddies know something, experience tells me that the Examiner also knows it. I expect you wouldn't deny Edison all of his patents because of what knowledge he had and connection he made in his head? The key is where you draw the line -- and that's always going to be viewed differently by an Applicant v. an Examiner. Shouting "don't file obvious claims!" accomplishes nothing when applicants already think their claims are non-obvious.

There is another world that the patent must live in for 15-18 years once it leaves the PTO. Trust me when I say that overwhelmingly, patent attorneys do not want their patents appearing in court. Not because they know the patents are poor. Because ANY patent, applicant, and patent attorney can be made to look unethical/dishonest to some degree in litigation. Because it costs a fortune. Because the attorney will be tied up as a deponent. Because if any one smear used by the defendant wins the day, the patent attorney faces a malpractice claim. (And when you've seen judges interpret a term *against* its commonly-held meaning, you begin to fear the caprice of the court/jury when your livelihood hangs in the balance.)

That's why patent attorneys want to make as few statements/admissions/explanations about the prior art as possible. Even one inadvertent word choice can kill a broad claim, cost tens or hundreds of thousands of dollars in legal fees, and/or let a real infringer off the hook.

FWIW, my problem with the required search is partly my fear of anything I write (not "say" or "mean", but "write") being used against me; partly the cost and delay; and partly the *lack* of a PTO-defined standard for "sufficient".

[CliveFenster]

E6k says: "They put one tiny thing in the ind. to make it "nonobvious" when that thing is known in the art and has MANY motivations to be used like the app used it, but the app has one particular motivation in mind, so he chooses to disregard his entire training in his field and say "THIS IS NOT OBVIOUS! I WANT A PATENT!"."

If an attorney arguing a device claim argues against the 103 rejection based on intended use and not structure ... that's not deceitful layering, it's just bad lawyering (IMO). More than one associate has fallen into that pit. (Or perhaps the argument is use as it applies to requirements of the device's structure, thus highlighting the patentable structural aspect?)

One last thing I'd say: I believe that most, but perhaps not all, attorneys do NOT want to be issued a patent with a validity weakness ripe to be attacked. While there's certainly a motivation to get the "win" for the client, as soon as what was swept under the rug is discovered, everything is coming right back at that attorney. Hopefully just a disgruntled client and not one seeking reimbursement for a lost license revenue source or litigation expenses.

For me as in-house, my competitors are going to do their homework on our patents, including prior art searches. If they find art that they believe would invalidate our patent, they will not respect the patent and will proceed to infringe it. If they can couple art with statements I was forced to make about references I already put in front of the Examiner, then they become that much likelier to infringe. Neither my company nor I want that, and I have no reason to think my industry is any different from others.

[Veteran Attorney]

6k,

You'll have to excuse us hack practitioners, we're not all knowing like you, but you gotta admit your posts are all over the map and completely contradictory.

You've posted that you "know" the claims are not patentable before you've even searched the case. Heck, you've claimed you "know" the claims are not patentable before you've even finished reading the spec.

You claim to have found "knock-out" prior art in 30 seconds. Then you claim you spend all afternoon and can't find anything. You then conclude that's because applicant/practitioner is witholding the "knock out" art, and if they're not witholding it and actually disclosed it, you claim that's not enough because we don't "discuss" it.

So which is it? Do you need our help or not?

Please do keep posting. And start your own blog when you get to that Ivy league law school. Your transformation from all knowing examiner to woefully uninformed and shady lawyer would be fascinating reading.

Thanks,

VA

[high atop the atrium?]

"So which is it?"

VA, what ill-motives do you have in asking for more specificity on this issue?

You see, the answer(s) to your seemingly innocuous question are much more complex than you know, and they embrace policy issues that you could never understand. In fact, because you are a lawyer, we have purposefully made the answer and/or answers to those questions and others as well (like harmonization, the value of our Examiners whose pay increases we block, etc.) a moving target, so as to protect the public from you and others like you. Do you see, you cannot win against us - we are smarter than you (yes, we know that is difficult for you to swallow). We serve the non-patenting public and we also serve those inventors who know what they've invented (and most of those aren't deceitful enough to file patent applications on the product of old ideas anyway, as patent lawyers would often counsel them to do), and those others who we think will play fairly with large corporations (that rules out NTP and the like).

[high atop the atrium?]

[/end sarcasm]

[Examiner Y]

You all need to get the hooks out of your mouths.

[Lionel Hutz]

examiner#6k

I see - your problem is not understanding the law, it's understanding basic English.

As I previously stated, I always cite every reference of which I am aware - IN AN IDS.

Now, please show me where the laws, rules, or MPEP states I must discuss the references as you previously asserted.

[Lionel Hutz]

examiner Y,

I am fully aware I am feeding the troll.

Joe

[Lionel Hutz]

examiner#6k

Patent attorneys always disclose reference they are aware of in IDS's. The less experienced onces discuss them in the application.

Now some of the clients you have to watch out for, but the attorneys are not going to commit a rule 56 violation for a client.

[real anonymous]

"You all need to get the hooks out of your mouths."

Yup, Examiner Y, I trust in your wisdom you've judged us all correctly - we're all wicked.

"By your standard of measure it shall be measured to you; and more shall be given you besides."

But not from me.

Sincerely,

David Testardi

[Slowly, I have been developing the the attitude Mr. Franklin had.]

[real anonymous]

See, another mistake - I meant Mr. Hancock, though I suspect Mr. Franklin had the same one.

[examiner#6k]

Patent attorneys ... are not going to commit a rule 56 violation for a client.

Oh, but they do, they just do not fail to submit REFERENCES they know specifically about. However, we know from the above that the PRIOR ART is not restricted to the REFERENCES that you specifically know of. It is very much so inclusive of the knowledge that you AND your client posses in your brains. And any and all of that which is material to the case MUST, to comply with the rule above, be either a. have a reference that teaches it found and cited, or b. discussed. Take your pic, but when an app comes in without either of those two on basic things in the art which are very material to the case, it is in violation, not only violation, but CLEAR violation.

Do not pretend that Prior Art is only the physical references you have been shown in the course of that particular case as it most certainly is not.

[Veteran Attorney]

"It is very much so inclusive of the knowledge that you AND your client posses in your brains."

So you want us to submit our brains in an IDS? But according to you, we don't have any.

Again, which is it?

I think I was wrong about you. You're not Ms. Peterlin's boy toy. You're Harry Moatz.

Mr. Moatz, welcome to the real world.

[/removes hook from mouth]

[real anonymous]

"However, we know from the above that the PRIOR ART is not restricted to the REFERENCES... It is very much so inclusive of the knowledge that you AND your client posses in your brains..."

Prior art is limited to the subsections of 35 USC 102. The duty to disclose is not limited to prior art. "Prior art" does NOT include the "knowledge that you AND your client posses in your brains", but such knowledge may be indicative of of other prior art which is covered by the duty to disclose.

It seems to me, Examiner6K, that you are attempting to make Rule 56 an insurmountable hurdle, when no other (major) Patent Office in the world has anything like a Rule 56 duty to disclose.

It also seems to me that you're trying to place an insurmountable burden on patent attorneys (which, by the way, contradicts the very wording of Rule 56, as well a what's left of case law post-McKesson), which would result in no patent attorney filing an application for fear of inequitable conduct. (Though it's perhaps possible that that would solve the backlog, even with no changes in USPTO management.)

[Michael Valentine Smith]

Please keep in mind that not everyone that works at the PTO is as extreme as examiner#6k. Nor is he(she?) representative of the people there. Most of us are a lot more reasonable and realistic with respect to the situations. And a lot of us understand the laws & rules a bit better that he(she?) does, as well (contrary to what johndarling likes to say ;) )

MVS

[JohnDarling]

I love 6k's posts. They're hilarious.

"And a lot of us understand the laws & rules a bit better that he(she?) does"

I would hope so. But is "a bit better" than no understanding really sufficient?

:-)

[Malcolm Mooney]

"Now some of the clients you have to watch out for, but the attorneys are not going to commit a rule 56 violation for a client."

Lionel, how many moons does your planet have?

[cast]

I told a client that we had to make a piece of prior art of record, and he reported me to the Bar (which after exchange of paperwork) dismissed my (now former) client's charges.

[real anonymous]

"Lionel, how many moons does your planet have?"

Malcolm, I know of no attorney that would risk their career for an unethical client. All that a client loses in a Rule 56 violation is a patent (usually), while the attorney (often, in such cases) loses or is threatened with losing his entire livelihood.

["Logic? What are they teaching at schools these days?"]

[examiner#6k]

The thing is, I'm actually rather reasonable about what I'd like to see in real life submissions. But that's another thread, and that does not change what the rule actually says, nor what you are required to do to abide by it. It is a rather large hurdle to pass, which is exactly why I shouldn't have a docket full of crap right now, because if that hurdle was actually jumped across then half of my apps wouldn't even be filed. It's just like the litigator in the thread way above here said, it boils down to atrny's accepting cases that are of dubious, or have no, quality at all and then prosecuting and litigating them as if they were better than they are by not jumping the hurdles and instead running around them.

[examiner#6k]

And JD can mock all he likes, times are a changin' and he knows it as well as I do. Though I doubt seriously that he "understands" the rule any better than I, all he "understands" is how hard it is to pin him having known something beforehand on him. Man, grats to you JD, you're a real winner. I'll fish out the link to the appropriate award for you when I'm home.

[JohnDarling]

Like I said, your posts are hilarious. Incomprehensible, but hilarious.

[Veteran Attorney]

real anonymous,

you're forgetting that malcolm has the distinct and rare honor of being the only attorney who's ever represented an applicant that actually invented something, and is the only attorney who's never broken any rule.

the rest of us have to make do representing would-be inventors and breaking every rule in the book to get their crap patented. when you know that your client's invention is not really patentable, you gotta break a few rules.

[real anonymous]

Thanks, VA, my bad. I guess I've still got the taste of metal in my mouth. And yes, most people who point fingers do so not because they're better - they do so because they can. But in the end, it comes around to them too, I'm certain of it.

[Malcolm Mooney]

"I know of no attorney that would risk their career for an unethical client."

I don't know of any attorney whose career was ruined for a Rule 56 violation. One would imagine that such ruination would quickly become the talk of the town. Has there ever been such an attorney? Mind you -- I'm expecting that any such attorney cited as an examplea actually had a credible "career" to begin with.

Let's hear about these humiliated attorneys.

I am certainly aware of patent attorneys getting caught stealing others inventions and filing on them (on their own behalf or on others' behalf). Were the careers those attorneys "ruined"?

Of course, stealing someone else's invention is nothing compared to the omission of an arguably material reference.

[clutches pearls]

I shudder thinking about such horrible creatures walking the same earth with the rest of us upstanding folks.

[real anonymous]

[wishes he hadn't thrown pearls toward Malcolm]

Malcolm, are you drinking early on Friday again?

[sigh]

[examiner#6k]

Cast, hah reported for being a good lawyer, I do not doubt it. Good for you though man, that's one bad client down, and many to go, fight the good fight!

[examiner#6k]

Fenster, one last thing from me this evening before I head out after my last bunch of stuff to do.

"Even one inadvertent word choice can kill a broad claim"

So. Be. It. Stop over-claiming into what you already knew, state what you already knew, and just take a piece of pie instead of the whole pie.

Also, your assumption does not hold true one little bit in complex arts, examiners aren't up on every niche of their tech, there are literally hundreds of niches in my tech all "advancing" faster than I could hope to keep up, not to mention I jumped in the game 40+ years after the art started, and to tell the truth I'm still playing a LOT of catch up as I'm sure I'll be doing for the rest of my life if I stay in this field. Airplane man /= air brake man. Semiconductor man /= dram man. Toy maker MIGHT = gi joe man.

"If my inventor and all his buddies know something, experience tells me that the Examiner also knows it" Yes, but do any of them know where it is written down? Many times, no, because it's so god awful simple that nobody in their right mind would bother to write it down for fear of winning the similar award to what JD will get later tonight because they'd be blabbing on as Cptn obvious. Oh and fyi, if edison didn't have massive 2ndary considerations (so many trials) the evidence I've seen thus far on the issue does indicate that in today's patent world he wouldn't get a patent. However, you have to take into consideration the massive difference in difficulty in obtaining information about things back then, you're doing all your own experiments, often the first of their kind by a long shot. Today you just look down a table of peformed actions, pick one, and fit it in your device.

[examiner#6k]

"If my inventor and all his buddies know something, experience tells me that the Examiner also knows it" Yes, but do any of them know where it is written down? Many times, no, because it's so god awful simple that nobody in their right mind would bother to write it down for fear of winning the similar award to what JD will get later tonight because they'd be blabbing on as Cptn obvious. Oh and fyi, if edison didn't have massive 2ndary considerations (so many trials) the evidence I've seen thus far on the issue does indicate that in today's patent world he wouldn't get a patent. However, you have to take into consideration the massive difference in difficulty in obtaining information about things back then, you're doing all your own experiments, often the first of their kind by a long shot. Today you just look down a table of peformed actions, pick one, and fit it in your device.

Oh, and finally, sorry to leave you out VA, yeah, I've found 102b's in 30 secs. Literally, I put in 3 words in google and it was the first one on the list. I could have hit "I'm feeling lucky" and found it. However, the vast majority of the time, attorney's will at least pick on something that's well known, that I know is well known, but is over here in x niche hidden by 3 trade names/ways of description. Irregardless, I know it's there, so even though it takes me a day (more or less) I find it. Sure, there are easy apps, I have one right now that tried to claim literally (unwittingly though) the very basis for my entire art through until RCE. You can say I'm claiming all this stuff all over the map, but that's just the point, it is all over the map, when it needs to be at the least well confined to his niche, and I need a frank discussion/citation of what he was basing his work upon to make the most basic of 103 judgement to even begin to produce a quality patent. This would in the vast majority of cases of mine also preempt any need for a complete search in the art for the most relevant art and save the app, as well as the office time and money (and most importantly, dent the backlog, unless you like the backlog?). Don't expect me to believe someone just out of the blue developed a state of the art robot, dram, or drug, he damn well knew that most of what is in it came from somewhere and he combined it together. Then we get into, ok, was there a teaching, suggestion, motivation etc.

[Veteran Attorney]

"...because it's so god awful simple that nobody in their right mind would bother to write it down..."

Ah, the old "it's so obvious nobody ever bothered to write it down" defense. Talk about the last refuge of scoundrels.

And you do realize that "irregardless" is not a word, right?

[Malcolm Mooney]

"Ah, the old "it's so obvious nobody ever bothered to write it down" defense. Talk about the last refuge of scoundrels."

Actually it's the first and best argument against the old strict TSM test. The Supremes bought it. So should you. It's the law.

[Examiner Y]

Lionel,

That's what they all say.

Y

P.S. May I address future correspondence to "law-talking guy"?

[Veteran Attorney]

"Actually it's the first and best argument against the old strict TSM test. The Supremes bought it. So should you. It's the law."

That's about as creative an interpretation of KSR as I've seen.

Maybe Malcolm is really John Doll.

[examiner#6k]

Aight well I'm done and ready to drink and womanize the night away, but I figured check up on you guys to make sure you don't go mistaking the spirit of my comments yet once again. Lo and behold, look what happened.

VA- you know you and me are on the opposite side of just about every controversy http://en.wikipedia.org/wiki/Irregardless . I'm willing to go out on a limb and say that you're a dog person.

Yes, the supremes did specifically address that and it is quite a problem in very many, especially complex arts where every reference describes one small piece of the overall puzzle, and combining hundreds of them is commonplace in actual practice and it is beyond obvious to everyone involved that x type of piece fits in the puzzle in y slot which is on z area in every situation interchangably with different benefits each time. However, making a strict linkage of the three can sometimes be very difficult based on the limited disclosures because they endeavor to keep them brief in order to not burden the skilled artisan with every well known detail and concept. Many times the benefits of each piece are buried in time or there is no benefit other than just plain making something "different" (but not non-obvious). Irregardless (without lack of regard, i.e. totally changing the subject and not showing the regardlessness that would otherwise be shown by continuing that subject without regard to that point) of this, I should have stated instead of just "nobody bothered to write it down", that nobody can recall where it is it was done so long ago, it was taught verbally to them, or it is just a variant using standard design principles not varying in function from the original but only in strict depicted "form" or etc. etc. Sure, you say "use official notice", well yes, but it just looks bad to Off. notice the ind.

[Veteran Attorney]

I have a dog and a cat. I'm crazy like that.

[CliveFenster]

When I write even a two-paragraph Background section, it necessarily requires some discussion of the widget, its current uses, a desirable new use/property, and the shortcomings of conventional widgets vis-a-vis the desired new use/property. I had always thought that this Background section served as the disclosure of the general prior art -- that is, the stuff "so god awful simple that nobody in their right mind would bother to write it down."

Were I to regurgitate every last god-awful-simple fact regarding widgets, I'd be accused of trying to bury a reference under all that the-earth-is-round disclosure. (Either by the USPTO or, more likely, in litigation.) Moreover, the USPTO's proposed IDS rules makes clear the USPTO does not want a disclosure of all the basic prior art knowledge in both my inventor's head and my own.

VA, I have two dogs and two cats. Double crazy.

[MaxDrei]

Perplexed from Europe looks in and wonders whether common sense drafting of the Background section of a specification for PTO filing is incompatible with your corporate client's interests, in USA. Suppose your client watches the published art and reveals to his drafter what's closest. Drafter writes an app that tells a persuasive story, how the claimed subject matter is patentably distinguished over that art. Issue duly follows (in a rational system). What could go wrong? Well, Exr might come up with a novelty killer but, in all probability that will be something that published AFTER the first prio date that the claim enjoys. So, under ROW patent law, no problem. Amend (if necessary)to re-establish novelty. Obviousness ain't a problem because post-published stuff (even issuance of US patents) is NOT part of the "state of the art" for deciding what would have been "obvious" to a skilled person on the filing date of the claim. Obvious really, isn't it, that on the filing date of a claim a US patent yet to publish can't make that claim obvious? Novelty is the statutory provision you need, to sort it out between a plurality of inventors, all of who filed on non-obvious matter, but only one of them can get a patent, namely the first of them to file. The later filers can't progress till they present claims that are novel over what No. 1 filer filed.

As another wrote, in another thread, if it is to be any good, reform has to start with the fundamentals. That's what Europe did in 1978, when it put together the EPC from the wholy contradictory and incompatible former German civil law and English common law patent systems. ROW has since taken over the EPC. So, US readers, how about reforming the fundamentals? Tinkering with the details seems only to upset folks, without getting to the root causes of the present disfunction.