Editorial by Arti Rai, Elvin R. Latty Professor of Law, Duke University
From the perspective of a candidate running for President, articulating a position on the subject of patent reform might appear a fool’s errand. For many (perhaps most) voters, the subject will be impossibly arcane. Within the small group that closely follows the highly divisive debate (e.g. patent litigators and prosecutors, stakeholders in the various industries most affected by patents), virtually any position a candidate takes will alienate a significant percentage.
Complicating the situation further is the reality that the patent system has so many moving parts. In particular, for better or for worse, a large chunk of patent policy is currently made through Federal Circuit decisions. For good reasons, the Constitution insulates Article III judges from direct Presidential control. But the result of this lack of control means that reform proposals that a President can readily implement, and that might appear sensible on first examination, can be undermined by judicial action. For example, requiring disclosure of prior art by applicants (who presumably know a lot about their area of invention) might seem sensible. But the reasoning behind the policy is undermined if the Federal Circuit decides to invoke a highly aggressive doctrine of inequitable conduct.
So ignoring the subject – as Senator John McCain has done, at least thus far, may be the politically expedient course. (We will see if the McCain technology plan, about which McCain advisor Michael Powell has been dropping hints and which is supposed to be unveiled formally soon, talks about patents.) But politically expedient behavior on an issue as important to innovation, and our country’s future, as sound patent policy is hardly what we want from our next President.
What is striking about Senator Barack Obama’s approach is that he has not only articulated a position, but that he did so back in November 2007, as the patent reform wars were raging in Congress. (Senator Obama’s position appears in the technology platform that he released at Google last November.)
Senator Obama’s approach reflects a nuanced understanding of the concerns of the various stakeholders. It also reflects an ability to rise above narrow interest group politics and suggest creative solutions not contemplated by the interest groups most active in the latest round of the Congressional reform wars.
For example, the Senator says that when "dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity." Thus he comes out in favor of a "second window" for post-grant administrative review of patent validity at the time the patent is asserted. As IT firms that are faced with constant litigation threats have pointed out (and as other countries’ experience with post-grant review shows), this option could represent a real savings relative to expensive litigation over patent validity. Moreover, at least in the long term, the availability of this option might reduce the incentive to file dubious patent applications in the first instance (and hence might reduce the current backlog of over 700,000 patent applications).
At the same time, Senator Obama’s plan accommodates the interests of those firms (e.g. biotechnology and pharmaceutical firms) that have made reasonable arguments about their need for early certainty about patent validity. It provides for an option not contemplated in the Congressional debate – self-selection ex ante into "rigorous and public peer review that would produce a ‘gold-plated’ patent." Under default principles of administrative law, gold-plated patents would be much less subject to future administrative or judicial challenge.
Of course, much of the devil will be in the details. For example, as the GAO has recently pointed out, management and personnel practices at the PTO need to be improved substantially in order for the PTO to retain the qualified examiners necessary for implementing even existing procedures. New procedures will require even more attention to reform of internal PTO practices.
A Presidential candidate’s policy proposals cannot include all of the details he might contemplate. But Senator Obama’s willingness to stake out some clear reform positions early in his campaign, and at a time of great sensitivity over the issue, performs what economists call a signaling function. The Senator has sent a signal that he would take patents seriously, both in terms of substantive proposals and in terms of the people he would appoint to formulate and implement these proposals.
According to Ms. Rai’s bio it does not appear she has any working knowledge of the patent system. She is not a patent practitioner -attorney or agent. She has never filed or prosecuted a patent application, nor has she ever litigated or licensed a patent. If I am mistaken, please correct me. Otherwise, what then in heavens name makes her competent to comment on the patent system? We might as well have her redesign and build New York’s twin towers!
please see link to piausa.org for a different/opposing view on patent reform
I like keeping roughly half of the money I earn. Effective tax rates in the 60% plus range don’t interest me much. I won’t be voting for Obama.
Maybe he’ll just quit if he falls behind in the polls. He follows them more than a moral code or principle of government anyway.
I’m from Illinois. Politically speaking, well, just look at what your saviour is used to. Our speaker and our governor are going toe to toe with no budget, a deficit even if we could get one, and a multi-billion dollar capital spending and handouts plan aimed only at Chicago. You have no idea what pandering is, yet.
jeez i think i lost several IQ points reading all these comments.
I still don’t understand why more people don’t utilize ex parte reexamination, relatively inexpensive and relatively fast.
“Protect American Intellectual Property Abroad: The Motion Picture Association of America estimates that in 2005, more than nine of every 10 DVDs sold in China were illegal copies. The U.S. Trade Representative said 80 percent of all counterfeit products seized at U.S. borders still come from China. Barack Obama will work to ensure intellectual property is protected in foreign markets, and promote greater cooperation on international standards that allow our technologies to compete everywhere.Mom and apple pie. Every administration I can remember has fought this running battle, and I expect whatever candidate wins will do exactly this. Protect Intellectual Property at Home: Intellectual property is to the digital age what physical goods were to the industrial age. Barack Obama believes we need to update and reform our copyright and patent systems to promote civic discourse, innovation and investment while ensuring that intellectual property owners are fairly treated.Again, boiler plate mom and apple pie. Now if he would seriously try to rein in copyright term extensions, I might reconsider. Reform the Patent System: A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. With better informational resources, the Patent and Trademark Office could offer patent applicants who know they have significant inventions the option of a rigorous and public peer review that would produce a “gold-plated” patent much less vulnerable to court challenge. Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.”The first part of this is really not that debatable. I think most of those involved would agree that putting more resources into the process might just improve the quality of the patents and maybe even reduce some of the variability. But I think that the “Gold Plate” suggestion is prima facie evidence that this was written by people who don’t prosecute patents for a living. As for “dubious” patents, they are invariably in the eye of the beholder. At least until a final verdict on the merits, most plaintiffs probably think their patents are just fine, while the defendants believe them to be dubious.
Part of the problem with the “Gold Plate” proposal is that in many industries, or at least in the electronics and software industries where I work, you often don’t know which are your best patents until years later. In cross licensing, we used to figure that it would take at least five years of aging (after issue) before we knew how important and how strong a patent was. Trying to guess this during prosecution is just plain silly.
The problem with “PTO could conduct low-cost, timely administrative proceedings to determine patent validity” is that this might work fine with killer prior art provided by defendants, but they have yet to figure out how to make inter partes reexamination work, and expanding this would seem to be a major undertaking. Besides, what is really wrong with having a court take a decent amount of time figuring this out in multimillion dollar litigation? It seems a bit shortsighted to use a low cost administrative proceeding to determine tens, if not hundreds, of millions of dollars of damages. Indeed, what is it that they plan to remove from patent litigation for the low cost administrative proceedings? Discovery? Expert witnesses?
I would also ask whether we want the organization that can’t figure out the patent laws, and routinely utilizes bad law (and often enshrines it in the MPEP) to make this sort of determination. Right now, they seem to be straying in both obviousness and software based statutory subject matter. And that doesn’t even address the failings of individual examiners or ALJs.
“At this point in history, voting on such a trivial issue would be like voting for whoever will lower my income tax the most over the next four years, i.e., it would be selfish and short-sighted.
I vote for the candidate who can best protect me from being struck by lightning.
“Perhaps it is useful to note that the Technology Plan contains 54 (assuming I counted correctly) bullets, of which the above three paragraphs comprise bullets 52 – 54. ”
Thanks, Mr. Slonecker. That ratio actually sounds about right. After all, the patent system (at most) promotes technology innovation, it’s not the sine qua non of innovation.
It’s also interesting to see that Obama’s plan doesn’t suggest that a gold-plated patent can be obtained by simply increasing the search time, as implied by some above. Rather, he suggests that the PTO needs better informational resources. Who can argue with that?
Finally, Obama appears to suggest that we need another (or revised) administrative procedure for challenging patent validity. Given the concerns that many have about current re-exam procedures, this seems to be worth discussing.
Of course it would be silly to vote for president based on just his IP agenda. However, it’s nice to see that his (brief) position on IP appears to have at least some connection to reality.
It seems to me that anytime one talks about a “plan” it is useful to have a copy in front of them. The pertinent portions of the plan are as follows:
“Protect American Intellectual Property Abroad: The Motion Picture Association of America estimates that in 2005, more than nine of every 10 DVDs sold in China were illegal copies. The U.S. Trade Representative said 80 percent of all counterfeit products seized at U.S. borders still come from China. Barack Obama will work to ensure intellectual property is protected in foreign markets, and promote greater cooperation on international standards that allow our technologies to compete everywhere.
Protect Intellectual Property at Home: Intellectual property is to the digital age what physical goods were to the industrial age. Barack Obama believes we need to update and reform our copyright and patent systems to promote civic discourse, innovation and investment while ensuring that intellectual property owners are fairly treated.
Reform the Patent System: A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. With better informational resources, the Patent and Trademark Office could offer patent applicants who know they have significant inventions the option of a rigorous and public peer review that would produce a “gold-plated” patent much less vulnerable to court challenge. Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.”
Perhaps it is useful to note that the Technology Plan contains 54 (assuming I counted correctly) bullets, of which the above three paragraphs comprise bullets 52 – 54.
I make my living by helping people navigate the legal ins and outs of our nation’s patent system.
But “improved patent prosecution rules” does not appear on the list of the 20-30 top reasons that I would vote for Obama over McCain.
At this point in history, voting on such a trivial issue would be like voting for whoever will lower my income tax the most over the next four years, i.e., it would be selfish and short-sighted.
Nothing “narrow-minded, elitist, self-centered and misguided” about a self-described “litigator” haranguing about what “the founders” “obviously” did not understand about the patent system they created, how “corporate monopolists” (evildoers) and patent prosecutors (unwitting tools) today just “wrongly game the system to obtain patents that are not worth the paper on which they are printed” and how “we” need to marginalize the influence of such malign influences. No sirree. But maybe just a tad self-righteous and condescending?
Of course, this is probably just the effluent from the swelled head of a litigator, punctured by the outcome of a recent case.
“Patent prosecutors are the last people we want to provide guidance concerning how we fix our patent system. Simply stated, if you get paid to obtain patents, you are hardly in a possession to objectively analyze whether the nation’s patent system truly works to provide incentives to advance the sciences and the useful arts.”
Well, you can’t have it both ways. If prosecutors should have no input because of their bias, then defense litigators should also have no input because of their bias. After all, you get paid to tank patents in court, and that role does not inherently put you in a position to “objectively analyze whether the nation’s patent system truly works to provide incentives to advance the sciences and the useful arts”.
Prosecutors should have input to reforms, as should the plaintiff and defense bar, and the office. However, the real impetus for reform is coming from industry, and their input on policy is (and generally should be) more important than input from the bar or office.
Now you’re catching on.
Prosecution is so much easier than litigation. That’s why we’re able to get so many crap patents issued.
Thank goodness everybody else has groveboy1 to protect them from us.
“My premise was sarcasm.”
Yes, I understood that, but you’re off point. (So that’s how you argue with the PTO!) Neither your stated premise nor its opposite leads to your conclusion. So what’s up with that? Does your argument boil down to “No, I’m not – You are!”?
My premise was sarcasm.
“Where did you read that?”
Actually, I got it from your premise: “… you’ve earned (what is probably) a pretty decent living protecting your clients from the ravenous hordes of patentees with their ill-gotten, marginal patents procured by their narrow-minded, elitist, self-centered patent prosecuting minions.” At least that’s where I got the “corporate meanies” part from.
But fine, reverse it: “Grover defends corporate meanies against corporate good guys.” Your logic, concluding that he is thus self-centered and elitist, still makes no sense. I’m surprised that this kind of logic succeeds with the PTO. But then again, maybe I’m not.
“Unfortunately, too many patent prosecutors are in the business of collaborating with their corporate sponsors to game the system by obtaining patents for minor improvements…”
But then,
“To put it another way, we need to reward and provide incentives to true inventors, not corporate monopolists and the patent prosecutors who unwittingly serve their interests…”
Followed up with,
“I have confidence that Obama has the vision to reform the patent system in a manner that will encourage real progress in science, while at the same time developing checks and balances designed to dramatically decrease the influence of patent prosecutors and their corporate sponsors who wrongly game the system to obtain patents that are not worth the paper on which they are printed.”
So are patent prosecutors mere collaborators, unwitting dupes, or America’s most highly influential lobby? Or are they all three?
“Grover defends corporate good guys against corporate meanies”
Where did you read that? Is it possible that groveboy1 represents rip-off artists and thieves? Is it possible that groveboy1 is nothing more than their low rent servant?
Yes, I do use this logic in responding to office actions. All the time. Very successfully.
Any other questions?
“… you’ve earned (what is probably) a pretty decent living … Who’s self-centered and elitist?”
Another withering rebuttal? Let’s summarize: Grover says that patent prosecutors are narrow-minded, etc. Grover also says that patent system is being abused by corporate meanies. Grover defends corporate good guys against corporate meanies, and earns a nice living doing so. Grover is therefore self-centered and elitist.
Does this make any sense at all? Is this the kind of logic you use in responding to office actions? Should Grover add “illogical” to his list of criticisms to levy against patent prosecutors?
“…the patent prosecutors (both in-house and in private firms) who devote their careers to obtaining such patents are merely the low-rent servants of corporate interests…”
There’s nothing quite like the swelled head of a litigator.
As Mooney would ask, do you have trouble getting your head through the door?
“To restore balance and provide true incentives toward the development of science and the useful arts, we need to move toward a system where only “gold plated” inventions–i.e., first in a class of new anti-cancer drugs, new never before used source of energy, cure for aids–result in issued patents.”
Oh, now I get it. We issue the Wright brothers their patent, and then no more airplane patents because everything since then is only a marginal improvement, not a “gold plated” invention.
BTW, you don’t seem all that concerned that for three decades you’ve earned (what is probably) a pretty decent living protecting your clients from the ravenous hordes of patentees with their ill-gotten, marginal patents procured by their narrow-minded, elitist, self-centered patent prosecuting minions.
Who’s self-centered and elitist?
“I guess you get your’s from MSDNC…”
I’m reasonably certain that “your’s” is not a word.
“I also understand that you cannot properly evaluate someone’s opinion without understanding their credentials and biases.”
“Someone” is a singular noun. Thus, “you cannot evaluate someone’s opinion without understanding his credentials…”
“Have they developed their opinion based on a relatively objective evaluation of the facts, like a judge, or is their opinion the product of their predetermined biases, and was their “review” merely a formality?”
I’m stepping out of my self-appointed role, but this is just plain silly. A judge’s role is to at least attempt an objective evaluation of the facts. Where do you get the idea that an author of an editorial has the same obligation?
Yes, Lionel, I certainly do understand the meaning of “editorial”. I also understand that you cannot properly evaluate someone’s opinion without understanding their credentials and biases. Have they developed their opinion based on a relatively objective evaluation of the facts, like a judge, or is their opinion the product of their predetermined biases, and was their “review” merely a formality? In this case, in my opinion, an Obama partisan was hiding behind her credentials and trying to obtain more credibility for her “editorial” than it actually deserves.
Here’s an ugly thought — in actuality it appears that Obama’s “plan” closely tracks that of Jon Dudas. Maybe Obama will re-appoint Dudas as Commissioner if he is elected.
“Faux News” — very clever. I guess you get your’s from MSDNC, and that paradigm of objectivity, Olbermann?
These guys are not giving up, and now they have their claws in Obama. I told you guys many moons ago we needed to “get to know” Obama (like that Saturday Night Live guy Lovett used to say).
If we don’t negotiate a fair and reasonable deal, we certainly won’t like what eventually will be forced upon us.
Mr. “groveboy1”,
Perhaps your comments are best directed to the members of the CAFC, before which I presume you have appeared. I am certain that Judge Newman, Judge Lourie and Judge Linn would look quite favorably upon the points you make (as would doubtless all other members of the Court).
“Having litigated patent cases for three decades, and having thereby become intimately familiar with how patents are prosecuted and the mindset of patent-prosecutors, I have come to believe that patent prosecutors are among the most narrow-minded, elitist, self-centered and misguided members of the legal profession…”
There’s plenty of evidence for this thesis on this board. Even stepback’s “rebuttal” appears to say nothing more than “You don’t know what you’re talking about, because you’re not one of us.” Do you folks really believe that nobody other than a patent attorney/agent understand how innovation occurs?
“A couple of years in the patent prosecution trenches is what you need to dispel you of your starry eyed appreciation of how innovation takes place”
JEROME LEMELSON, BABY!!!
Wow grooveboy, you truly are a fork tongued litigator with ability to woo gullible jury members:
“we need to reward and provide incentives to true inventors, not corporate monopolists and the patent prosecutors who unwittingly serve their interests by supporting a system that allows far too many patents to issue for inventions that at best represent marginal improvements, the purpose of which is not to advance the sciences and useful arts, but to permit corporate giants to expand their market dominance.”
true inventors?
marginal improvements?
A couple of years in the patent prosecution trenches is what you need to dispel you of your starry eyed appreciation of how innovation takes place.
“I have come to believe that patent prosecutors are among the most narrow-minded, elitist, self-centered and misguided members of the legal profession”
Why thank you, groveboy1.
I would have given that honor to “IP litigators,” but you’ve convinced me otherwise.
Having litigated patent cases for three decades, and having thereby become intimately familiar with how patents are prosecuted and the mindset of patent-prosecutors,I have come to believe that patent prosecutors are among the most narrow-minded, elitist, self-centered and misguided members of the legal profession, with an inevitable pro-patent bias. Patent prosecutors are the last people we want to provide guidance concerning how we fix our patent system. Simply stated, if you get paid to obtain patents, you are hardly in a possession to objectively analyze whether the nation’s patent system truly works to provide incentives to advance the sciences and the useful arts. The founders obviously did not understand that patents would no longer be primarily the property of individuals, but would be major corporate assets–indeed in many industries, the centerpiece of corporate attempts to monopolize markets and stifle competition. Obama seems to be on the right track–the system needs to find a way to more efficiently invalidite and declare unenforceable sham patents that represent only at best marginal improvements of the art, while at the same time truly reward “gold plated” inventions that truly benefit society by providing major advances in science or the arts. Unfortunately, too many patent prosecutors are in the business of collaborating with their corporate sponsors to game the system by obtaining patents for minor improvements (i.e., adding tutti frutti to a drug formulation to make it taste better)that in truth are neither inventive nor non-obvious. To restore balance and provide true incentives toward the development of science and the useful arts, we need to move toward a system where only “gold plated” inventions–i.e., first in a class of new anti-cancer drugs, new never before used source of energy, cure for aids–result in issued patents. The marginal improvements in the run of the mill patents that are allowed to issue today, particularly in the pharmaceutical and computer technology industries–simply serve to facilitate corporate interests in dominating and/or monopolizing markets, and the patent prosecutors (both in-house and in private firms) who devote their careers to obtaining such patents are merely the low-rent servants of corporate interests that, far from advancing the progress of science and the useful arts, serve to inhibit and impede development of truly “gold-plated” inventions. To put it another way, we need to reward and provide incentives to true inventors, not corporate monopolists and the patent prosecutors who unwittingly serve their interests by supporting a system that allows far too many patents to issue for inventions that at best represent marginal improvements, the purpose of which is not to advance the sciences and useful arts, but to permit corporate giants to expand their market dominance. I have confidence that Obama has the vision to reform the patent system in a manner that will encourage real progress in science, while at the same time developing checks and balances designed to dramatically decrease the influence of patent prosecutors and their corporate sponsors who wrongly game the system to obtain patents that are not worth the paper on which they are printed.
CAPat,
Do you understand the meaning of the word “editorial”?
The fact that she believes Obama has the better position and she works with Obama only reinforces her opinion, doesn’t it? Maybe she works with Obama because he he has policy positions that agree with hers? Or do you believe she is an empty-headed shill like any of the primetime hosts on Faux news? I believe the former.
BTW, what is an objective editorial?
Leopold, I suspect Ms. Rai can understand the cost (in terms of economics and justice) of promulgating rules that are not clear, or that are ill-conceived, or that have effects which are divergent from the stated effects in the Federal Register public notice. The battle over these rules would not end, even with their implementation.
(I too do not think the world will end with the implementation of continuation or claim limits, but democracy in America will have been dealt another large blow, such as we have already endured in the last 7+ years, if inJustice succeeds and *these* rules are implemented. Such an end result will not be costless or trivial to America, and it will cause problems for patentees that have taken the Federal Register notices at face value. And obviously, this is *very* important to the powers that be, or our government would not be appealing.)
The USPTO has proven itself to be perfectly capable of generating misleading rhetoric. They don’t need my help.
For the record, I think that the Rules were based on faulty premises about abuse and are flawed. But the world is not going to come to an end if limitations on continuations and RCEs and RCEs are imposed.
Leopold, I wonder what set of questions you could have been devised, if your objective had been to reveal the crying need for a reform and simplification of the Rules. Maybe somebody within the USPTO could play NIPRA at its own game.
“… the chaos that their implementation would cause … to cripple the patent system for years to come …”
Perhaps we’re getting a bit hyperbolic here?
Your links appear to show that the proposed Rules are technically a bit more lenient than the PTO intended. I’m not sure how this supports your thesis that the Rules will “cripple” the patent system.
And by the way, the NIPRA quiz appears to be based on more than a bit of specious reasoning. Pointing out that a decades-old issued patent that is now deemed to be important would have run afoul of the new Rules does not prove, or even strongly suggest, that the inventors would have been unable to get patent protection under the new Rules.
Ms. Rai, please take the quiz onthe NIPRA site too, to show other effects of the ill-conceived rules (it starts out easy, like a professor should appreciate… the meat and heartburn starts with the hypotheticals at question 11):
link to nipra.org
Ms. Rai,
Do you understand the as-promulgated effects of the rules, and the damage that the rules *as-promulgated* would do to the patent system, and patent law? There is an analysis of the apparent *true* (not announced) effects of the rules here – I hope you will (as a scholar) take the time to understand how poorly these rules were promulgated, and the chaos that their implementation would cause:
link to nipra.org
link to nipra.org
It seems to me that for Pubpat to still be pushing for implementation of these rules indicates that Pubpat is *for* anything that will act to cripple or implode our patent system (e.g., to free the country from “bad” patents the PTO should not have issued in the first place), or otherwise impede patenting. This may be good in the short term, but is (unfortunately) near-sighted, and my indicate a lack of understanding of the *true* issues lawyers (should) have with the rules.
I suspect, Ms. Rai, you have never sat down and analyzed the rules, but have only listened to the echoes of the Powerpoint presentations and scholarly papers. Please sit down and study them thoroughly (it will take hours), because to do otherwise is not a correct way for you, or Pubpat, to arrive at a position supporting the new rules. But it would be a way for those so interested to cripple the patent system for years to come, rather than working now to fix its ills. And I suspect nothing would make some members of Pubpat happier (since that would, admittedly, get rid of the bad patents too).
David Testardi
Argghh:
link to patentdocs.net
Obama is sophisticated and subtle. None of his positions are as clear as this article would make seem.
Patent policy is one thing, but energy policy is an entirely different matter.
Personally, I like the “new candidate’s” energy policy much better.
link to funnyordie.com
“the scientific evidence is overwhelming now that the globe is actually cooling” and dinosaurs and man roamed the earth together
“the scientific evidence is overwhelming now that the globe is actually cooling”
Thanks for the info.
[turns up thermostat]
If I wanted to read cheerleading for the Obamessiah, I would have turned on the evening news. I expected better from this website. Considering the sanctimonious tone of some posters, you would think they would be outraged by the lack of disclosure, but apparently disclosure of conflicts is only required of those Malcolm Mooney despises.
BTW, I despise McCain as much as I despise Obama. But I don’t want to hijack this thread, so enough said.
As far as the proposal, I don’t see how the PTO can be expected to succeed in “gold-plating” patent applications when they can’t deal with the present examination procedures. In practice I would expect the proposed two-tiered system to benefit very large, wealthy, corporate interests (aka campaign donors) and to screw small inventors.
Lionel Hutz @ 3:22 PM:
The so-called “editorial” is presented as a piece by an objective academic analyzing the respective policies of both candidates and “opining” that Obama has the better approach so far. You don’t think it is at all relevant that the outcome of the “editorial” was pre-determined for Obama, no matter how marvelous McCain’s plan might be, and that the “editorial” was actually a simple spin piece for Obama by an in-the-tank Obama supporter? How about the fact that Prof. Rai is also a PubPat director? Disclosure, disclosure, disclosure — we in the law industry better than any others recognize that potential conflicts of interest should be disclosed, at least for the sake of fairness.
And, by the way, since the scientific evidence is overwhelming now that the globe is actually cooling, at least for the foreseeable future, “global warming” is now “climate change”. Didn’t you get the memo?
Not even then Jim. It has to be professional background and experience in blogging, and I have none.
“Or maybe Malcolm Mooney and Max Drei?”
Only if § 3 is amended to require possessing “a background and experience in abundant patent blogging.”
George I like your dry humour but, as you see, I can’t even spell correctly.
Here’s a thought-provoking topic for further discussion:
Director Crouch and Deputy Director Rai in the next presidential administration?
<<<<<< Or maybe Malcolm Mooney and Max Drei?
If anybody is interest in reading Professor Rai’s credentials, here’s the link to her profile and CV published on the Duke Law School website:
link to law.duke.edu
link to law.duke.edu
At minimum, she has more experience in the field of patents that either Director Dudas or Deputy Director Peterlin, and if she is interested in being a Director under a President Obama administration, she meets the current § 3 requirement of possessing “a professional background and experience in patent or trademark law” (I assume she is an American citizen).
Here’s a thought-provoking topic for further discussion:
Director Crouch and Deputy Director Rai in the next presidential administration?
“So ignoring the subject – as Senator John McCain has done, at least thus far, may be the politically expedient course. ” Prof. Rai
MMMMmmmmm not very objective commentary….
Is this a case of a swamp needing draining? Shall we ask the frogs that live there? But first, should we not determine how far the swamp extends?
Hi Leo,
Yes, but, as I recall, she is awfully cute (o¿õ).
“Either you agree with her opinion or you don’t.”
But you’re missing at least part of the point, Lionel. Because Professor Rai has never drafted a patent application, she’s not even allowed to HAVE an opinion on patent policy, much less express one.
Are you people complaining about the author’s relationship to Obama kidding?
It’s an editorial, not an objective news article. How can her relationships possibly matter. It’s not like the quacks hired by Exxon-Mobil to discredit global warming science. There they package data and statistics to deliberately mislead the public.
Editorials on the other hand are opinion pieces. Why does there need to be disclosure? Either you agree with her opinion or you don’t.
Ms. Rai writes above: “Sampat’s work also reveals that, more generally, patents that end up being more valuable (using various conventional criteria of value used by economists) have more applicant-provided prior art. This suggests that applicants do know something about the value of their patent applications when they file them.”
Maybe this means, Ms. Rai, that better capitalized applicants are better able to commercialize their inventions (so they end up being more valuable) and also have the resources to provide more prior art?
AnonPatentAtty — you make some good points
“for a guy who makes fun of his own age McCain has a surprisingly forward-looking mind”
I admit he was clearly thinking ahead when he chucked his old first wife for a young and extremely wealthy new one.
“Could you tell us how you really feel about the man ?”
link to nobodyasked.com
PLOSITA – I agree that good ideas on how to change the system may come from outside the rank and file of patent prosecutors. The problem I have is when the views of academics who are speaking outside of their area are given so much weight and importance by politicians, the popular press, and even individuals within management at the PTO who themselves don’t have appropriate experience (i.e., Dudas, Peterlin). Lemley’s writings and views on the evils of continuations helped to form the basis for the PTO’s misguided rule changes, but by the time anyone actually working in the area had time to pay attention to and rebut his conclusions and fight the proposed changes, the snowball had reached a critical mass.
Mr. Rai: If you think the number of references cited in information disclosure statements (IDSs) are a reliable gauge of an application’s importance or probability of becoming a commercial product, you are sorely mistaken. There are alot of factors that affect this aside from importance (for example, the number of relevant articles an inventor happens to have sitting in his file cabinet). Any expert in patent law would be aware of this fact.
Many thanks to the “AnonPatentAtty”, who has hit the target dead center. After January 20, 2009 the PTO needs to be run by competent people who have a deep understanding of prosecution based on decades of knowledge and experience. This is not a business for amateurs, and surely not a business for dilettante academics.
It had seemed as though neither Obama nor McCain could possibly fail to be an improvement over the present bunch. Obama seems well enough plugged in, and, for a guy who makes fun of his own age McCain has a surprisingly forward-looking mind. Also, you can’t become a Navy pilot without some aptitude for, and love of, advanced technology, and not just telecommunications. But Prof. Rai’s comments raise the prospect that we may face yet another disaster in IP if Obama is elected. Wouldn’t that be ironic. Who knew ?
The commentary in this blog often gives the impression that the only groups having an interest in patent law are software companies and pharmaceutical companies. Here is some news: The majority of patents are still granted in the mechanical, electrical (non-software), and chemical (non-pharmaceutical) fields. While the software and pharmaceutical fields are much covered in the press, their partisan desires are harming the great majority of patent applicants and owners who are not part of those industry sectors. Perhaps after January 20, 2009 the PTO might be led by someone who is not allied to either of those sectors.
Another serious problem in the patent field at present is an examining corps that is wildly out of control. KSR merely poured gasoline on an already raging fire. What does Prof. Rai propose to do about that problem ?
Might the term “hot-headed, corporate-shilling warpig” possibly be considered pejorative ? What subtle nuance. Could you tell us how you really feel about the man ?
“So, it isn’t necessarily relevant whether an author has any real world experience before chiming in on a subject?
Much like Mark Lemley, Prof. Rai is a former litigator with no patent prosecution experience or experience within the examining corp at the PTO. Please stick to commenting on litigation matters and patent case law. Leave the specifics of patent examination to someone who has actually been involved with it in some way. Being a litigator at DOJ and seeing generally how agencies work doesn’t really hold much weight with me as a basis for commenting on substantive patent examination policy and procedure.”
Having prepared and prosecuted a few patents, I agree with you that it is hard to understand the process without doing it. Although it is adversarial, it is not at all like litigation–totally different. Nor is it quite like any other administrative process that I’m familiar with. It’s more like negotiating the terms of a deal.
But do you agree that it is equally easy to lose yourself in that world, and begin to assume that “the way it is” is also “the way it should be?” And perhaps someone with more general experience, and someone with the time to think broadly and carefully, might actually be better at envisioning “the way it should be?” Professor Rai’s papers are, in my experience, sharp and creative, and I have to think that most of them are necessarily outside her area of “experience” by your definition. But with apologies for throwing up a straw man, I have to disagree that only specialists can innovate in a given field (whether it be law, policy, science, whatever). Often times the best ideas come from outside the field, or from people with the time, energy, and creativity to “cross-polinate” ideas.
I often wish lawyers, especially patent prosecutors, would be less defensive about their practices and be a little more open minded about what else might be possible.
Ah Lowly. imho, that’s what the English litigators used to say, in the bad old days of multi-week trials, namely, “Be happy patent litigation in England is so slow, complex and expensive. If it wasn’t, we would be seeing unmanageably large numbers of suits”. But, take a look at today’s position in England. More suits indeed, but far more efficiency, leading to unprecedentedly fast dispensation of justice, so that England is the forum of choice, for fast outcome patent litigation in Europe.
“First, not that it is necessarily relevant, but a quick look at my CV would show that . . .”
So, it isn’t necessarily relevant whether an author has any real world experience before chiming in on a subject?
Much like Mark Lemley, Prof. Rai is a former litigator with no patent prosecution experience or experience within the examining corp at the PTO. Please stick to commenting on litigation matters and patent case law. Leave the specifics of patent examination to someone who has actually been involved with it in some way. Being a litigator at DOJ and seeing generally how agencies work doesn’t really hold much weight with me as a basis for commenting on substantive patent examination policy and procedure.
“because the litigators have a vested interest in making it long, difficult and expensive”
That’s like saying prosecutors have a vested interest in applications taking 4 RCE’s and an appeal before finally being allowed … yet you don’t ever see us praising the current system.
If cases could be resolved quickly and without excessive cost, more lawsuits would be filed. That would be more in the litigator’s interest than the way things currently are, imho.
Do I smell a law professor bucking for Dudas’ job in an Obama administration.
Just what we need, another inexperienced political appointment at the PTO.
Getting cases to settle before trial, Coast? So, there’s the American way: Judges acquiesce in allowing it to get so long, difficult and expensive that those with a winning case but without a deep enough pocket don’t get justice, at trial. Then there’s the English way: get quickly to trial, and order the loser to pay the rightful winner what it cost to get the justice that is his/her right, in a country that regards itself as functioning under that thing called the Rule of Law. Imagine briefing a macho CEO: If you lose at trial, sir, no matter how narrowly, you will have to pay his legal fees as well as your own. Isn’t that the most potent incentive that can be imposed on his consciousness, to settle, rather than lose at trial. Isn’t that the way, to get CEO’s signed up in favour of reining in extravagancies such as unrestrained discovery.
Or do I see it wrong?
“senile, hot-headed, corporate-shilling warpig”
brilliant call Mooney
The judge-made Hilmer Doctrine (see Prospector blog) has been putting the USA in breach of the Paris Convention priority rules, since 1952. In its own priority list, does Team Obama have any thoughts about that? If not, is that because the issue is 1) not important enough to warrant attention, or 2) too “hard”,3) something that would reveal S. Obama as unpatriotic, or 4) all three of these?
because the litigators have a vested interest in making it long, difficult and expensive;
and maybe because the judges have an interest in making it so long, difficult and expensive that the parties eventually settle before trial
If the system is malfunctioning then, when Professor Rai says that one particular aspect is too “hard” to change, that might give a clue where the problem lies. The aspect that Prof Rai finds to hard to change lies in patent litigation, namely, the inability of the courts to control the amount of discovery. The PTO can’t fix the system, if it’s still broken in the courts.
I don’t understand the difficulty. The English common law patents court manages ferociously but fairly the short period between issuing proceedings and the day of trial. Each side does its discovery, expert reports, observed experiments, etc, etc, all in less than a year. 95% of cases settle before trial, and only one third of first instance judgements are appealed (cos in the majority there’s no prospect of a reversal). Two thirds of cases at the English patents court are pharma-related, so the litigants are mostly old hands at this game. But some cases are tech (Nokia and so on) and others involve small companies. Obama’s people might like to ask American litigants at the English patents court about their experiences there. Maybe Prof Rai can tell us why such expeditious yet rigorous litigation is too difficult in the USA.
“What is with Hal Wegner being in the tank for Obama?”
Maybe Hal doesn’t think a senile, hot-headed, corporate-shilling warpig is what the country needs right now.
Or maybe he feels uncomfortable voting for someone who doesn’t know how to use the Internet.
Arti K. Rai, as quoted in the Duke Chronicle:
“I think it’s fair to say right now he [Obama] hasn’t fleshed out his platform with any great specificity,” said law professor Arti Rai, who attended Harvard Law School with Obama. “The reason I chose to go with him is because I was friends with him in law school, and he’s a very smart person and a person with a lot of integrity.”
link to media.www.dukechronicle.com
“Implement a policy such that no allowable independent claim can be less than 3/4 of a page in length…”
I’ve already encountered this policy in most cases I prosecute
If Anthony Cauterucci is correct, and Dennis Crouch should investigate, then full disclosure should be made.
P.S. What is with Hal Wegner being in the tank for Obama?
By the way, I believe that Arti Rai is an official advisor to the Obama campaign on intellectual property issues. She heads the IP subgroup of the “Technology, Media and Telecommunications” advisory group to the campaign.
Mr. Oboma has some good basic preciptions of what needs to be done to solve the energy crisis but no tie together with improving inventor incentives to accomplish it. He still hasent adopted my plan to rebuild a productive prosperious america.Through integrity improvements and inventorship determination improvements this can be accomplished.Just see my website under patent reforms for details.He also hasent tied together job creation with it either.
Obama’s position on biotech and pharm patents doesn’t really matter much once health care is nationalized and only the US government is purchasing the drugs.
“Congrats, you got a patent, now you will sell your drug to the government for $X price. Oh, you don’t like that price. Have fun trying to sell it to anyone when none of the Government Doctors will even proscribe it to anyone.”
When did Sen. Obama endorse the “second window” concept? The referenced Obama technology statement from November 2007 says, “Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent quality.” Aside from the question of what constitutes a dubious patent, that statement does not indicate support for the concept of a “second window.” The second window concept comes from a provision in the Leahy-Berman bill that would have subjected a patent to post-grant review for window lasting the entire life of the patent. The second window proposal became incredibly controversial, as did the provision to reduce infringement damages. Less controversial was the “first window” of post grant review lasting only 12 months after grant. There is nothing in Obama’s statement that says he is for a “second window.” It seems to me that Prof. Rai is going beyond the candidate’s position. I think she should clarify exactly where Obama is on this point.
The worst thing about parmacutical patents is there either dangerious new concoctions that harm patients or there minor design change patents that provide many minor variations on existing previously patented drugs.Biotech patents are in the same catagory.What we need is parent patents to reward the actual original inventor of the dirivatives without witch none of the drugs would exist.Thats me of course
“I wonder if one of the factors that IT patents are more likely to be “junky” than biotech and pharma patents is that there is more scientific prior art literature for biotech/pharma inventions.”
That could be. Another factor is that a lot of IT patents are the sort of thing that an attorney and his client could could come up with after three Manhattens while smacking balls around at a firm retreat.
Ill tell you what junky patents Are Design patents for minor changes in the existing expired patents to re claim new patent on the old invention.Another one is no good patents ones that will never become commercially viable because they are impractical.Also included are deceptive patents vague and evasive wording with no identifiable new intellectual materials and no purpose other than to restrict a segment of a field of invention in order to steal the invention from legitimate inventors by claiming invention even though no genuine or viable solution to a problem exists
Ms. Rai:
I wonder if one of the factors that IT patents are more likely to be “junky” than biotech and pharma patents is that there is more scientific prior art literature for biotech/pharma inventions.
Maybe another reason is that the claim terminology used in biotech/pharma patent applications is more consistent from application to application. In other words, there may not be established or consistent terminology for IT inventions and thus it is more difficult to word search those applications.