The following essay was written by Secretary of Commerce Gary Locke and originally published in Politico. Locke is the former Governor of Washington and former partner at Davis Wright Tremaine. As you may know, the US Patent & Trademark Office operates as a branch of the Department of Commerce.
* * * * *
As Congress hurtles toward the midterm elections, there are two things everyone agrees Washington needs to keep working on: spurring job creation and promoting continuing economic recovery.
Fortunately, there’s legislation now before Congress that has bipartisan support, can boost our economy and doesn’t add a cent to our federal debt. This bill aims to fix the outdated patent system, which has left the U.S. Patent and Trademark Office with a backlog of 750,000 applications — a backlog that’s threatening America’s ability to innovate.
And that’s a big problem, because innovation is the lifeblood of the U.S. economy. The introduction of new products and services accounts for three-quarters of America’s annual growth rate since World War II. This innovation is fueled by businesses, inventors and entrepreneurs who depend on patent protection to attract capital investment and to promote and protect their products and services in the global marketplace. Today, America’s patent system – and by extension our entire innovation system – isn’t working. As a result, we are jeopardizing our edge in the global economy.
America may still be a world leader in key metrics of economic success – like levels of entrepreneurship, R&D investment and IT infrastructure – but a report last year from the Information Technology and Innovation Foundation concluded that no advanced economy has done less than the United States to improve its competitive position over the past decade. President Barack Obama sees the urgency of this problem and has announced a formal National Innovation Strategy, which, among other things, calls for doubling the budgets of agencies like the National Science Foundation so they can better support the basic research that spawns new products and services.
But to unleash the full power of America’s innovators, we’ve got to repair an overloaded and inefficient patent system. The unacceptably long backlog at the patent office – in which the average time it takes to grant or deny a patent is more than 34 months – is a striking signal of the system’s dysfunction. Since taking over at the patent office last August, David Kappos has already made significant strides in reforming the workplace, improving productivity and boosting morale. These steps and others have been applauded by all sectors of the innovation community. But additional, desperately needed reforms require action by Congress. The Commerce Department just released a white paper that quantifies the effect America’s patent system has on the economy and job creation and describes the benefits of two key elements of pending patent reform legislation.
First, Congress will grant fee-setting authority to the patent office, which will enable it to adjust the actual costs of the services it provides. This could contribute significantly to the office’s ability to reduce the application backlog by 40 percent. Second, creating an enhanced post-grant review procedure within the office will provide an alternative to costly – and often lengthy – litigation. It could also provide greater marketplace certainty – at lower cost. This review procedure is expected to be 50-100 times less expensive than litigation.
The patent reform legislation being considered by both chambers will also improve patent quality, streamline the patent examination process, promote international harmonization of patent law and limit litigation expenses. All these provisions will foster innovation and contribute to long-term economic growth. As we move forward on reforming our patent laws, we need to remember that the ultimate goal is to create more American jobs that can provide dignity, security and a sense of hope for the future. After a decade fueled by speculation and short-term thinking, the United States needs to refocus on nurturing innovations that generate real value for society and spur sustainable job creation. It’s not the role of the federal government to predict or dictate exactly how this new economy will take shape. Our job is to create the right set of incentives, regulations and laws that allow innovators to experiment with new ideas, build new businesses and follow their dreams. Patent reform legislation is a key part of this strategy. To promote continued economic recovery, it is critical for Congress to create a business environment that fosters innovation and risk taking ‹ accelerating economic growth and job creation and expanding America’s ability to innovate. Now is the time to act. Congress should seize this opportunity and send patent reform legislation to the president’s desk. Gary Locke is the secretary of commerce.
“No client is going to make a malpractice case stick if you were reasonably diligent in getting the application filed”.
Right. Because Americans are generally so incredibly reasonable when they feel they’ve lost something to which they are entitled, and courts never play the “you could have done something different” card.
Thanks for the chuckle.
NWPA
I have been fed so much s_i_, I don’t know who to believe. Fifteen years of my life have been taken from me because I was fighting for Justice.
I know there were no Bars. But that still didn’t change the fact I was in a Prison. The patent ideas I have are not crap.So many I have let go of. And I would have been perfectly happy to do this for the rest of my life, and I couldn’t even do that. So if I throw a few spitballs the wrong way. Just duck.
>>And why has a lot of babel boys Trademarks >>come out of NWPA main office?
What is the meaning of that sentence, Sarah?
NWPA main office? I suppose we have a main office, but it is not mine.
>>The PTO should focus on issuing well examined >>patents – period.
Exactly. The rest would take of itself. The applications without merit and poorly written applications would stop coming in as they would no longer be worth filing, and the new applications would be written better as clients would see value in writing a good application and hiring a good attorney.
OK, who’s impersonating NAL?
That wasn’t even four words, let alone four pages.
RWA,
Well said. Bravo.
RWA, you’re apparently not a govn’t employee. If you were, you’d see that while your solution does successfully solve all of the problems and protect everyone’s rights equally, it just can’t work. It doesn’t involve huge sums of money or new offices and additional govn’t employees, so it’s a nonstarter.
The message decoded:
Reducing backlog:
Get poorly examined applications into the body of issued patents as quickly as possible so that the substance of inventions along with their potential litigation targets is known as soon as possible. This way, large institutional infringers can get to work as soon as possible.
Enhanced post-grant review:
an endless series of challenges to patents that have been identified as meaningful that is designed essentially to force all parties to play their hands outside the courtroom while infringement continues unabated
Result
Since the poorly examined application will most likely be routed to “post-grant” review, effective litigation and the threat thereof will become a thing of the past allowing infringers to ply their trade with impunity and little need to take licenses. Truly innovative parties (which large corporations never are) will lose interest in patents all together since patents will be rendered toothless by hurried and shoddy examination and endless post grant review. The presumption of validity will be completely destroyed due to the double whammy of poor quality /open ended review.
All of this, again, is brought to you courtesy of the new rapid examination agenda (“reduction of backlog”) and the attendant “enhanced post-grant review.” The very existence of these measures admits to a total lack of confidence in the examination system that has made our country such an engine of innovation.
What should happen is people should stop worrying about the backlog. It is a total red herring.
The PTO should focus on issuing well examined patents – period. The aim should be to strengthen the presumption of validity through strong examination and to reduce any hint of post-grant review, with the exception of the existing re-examination provisions.
Anything else is a complete sell out to large corporate interests and a huge leap toward the total death of American innovation and vigorous entrepreneurship.
It’s certainly laudable, and critical, for the USPTO to reduce backlog, provide alternatives to protracted litigation, improve patent quality, accelerate the examination process, encourage harmonization, and curtail the costs of patent law. The question is whether the legislation currently on the table can accomplish these things, or whether there are better means. Somehow I doubt that the patent reform bill’s provisions for post-grant review and fee-setting authority present the requisite magic bullet.
When the day is done, money is the driver.
So, they do not EVER exercise any filtering. They file everything out of shear terror.
As long as we avoid doing something perfectly lawful out of sheer terror, the system will never change. Someday it may even become the de facto standard (if it isn’t already), and then it will be inequitable/negligent to exclude even cumulative references.
It’s too bad it’s almost never economical to act any other way.
And that in itself takes me back…. back to the Chinese Olympics. Where thet opening of the games showed…… Worker ants. all in unison for one goal. To feed the Monster.
Monster ( gigantic, huge, enormus.) Although awesome. Sort of like an Elephant.
The USPTO should recognize that sometimes things get to big. It’s just like on Wall Street. And the USPTO is “SUPPOSED” to be in control of their street,(R)ight?
I have an Idea. you can’t Patent it. but Congress can legislate it.
Elephant Spell Elephant
Elephant:
Enter
Legislation
Ending
Pravell
Hewitt
AKA AKIN GUMP
Now
TODAY.. Elephant
If I am on the wrong road my dear sarah, it is only because I am traveling with you.
Hey Berkie,
You said it all on the first comment..You are Awesome (COUGHS) LOLOLOLOLOLOLOLLLLOLOOOLLLLROFLMAO.Talk about foot in mouth. Lets see you wiggle out of that one. And I sure hope the Prez reads this. And then looks back at the evidence. Now will Kappos be able to run this ship? I doubt it. Berky I believe you are about to get what you deserve.
Told you Ping. you have taken the wrong road. Now you can both sit on the other side of the Boat. GAFFE!!!!!!!!!!!!!!!!
Gary Locke says the Patent Office needs self control…… How about this little tid bit that will read. I fire Berkenstock again for the umpteenth time. Because again I see PHK&K are again back controlling me on April 30, 2002. So again I look again on the USPTO Web site as to who is in control of 5,832,857. And on May 7, 2002, and it’s me. Then I look at the Kent Patent. And it is expired before it’s time. And this is on the very same day (May 7, 2002) as the PHK&K AKA..(Berkenstock )lets go. But then again he illegally takes control back! And the USPTO knows this. And then Moatz snarls to me. you can make it too. Now I ask you? How can the USPTO get control of that? They are that. Now is the USPTO Akin Gump? Elementary my dear Watson.
See link to businessweek.com
America’s Green Innovation Problem
As clean energy technology has globalized, innovation has followed. Government officials need to pay attention
Can I get a cite from the Law [sic – cap intended] of Unintended Consequences?
There is no question of “when in doubt, report”. Given that no reasonable person would ever (and I do mean ever) guarantee how any examiner is going to read any art, this almost soitenly means that IDS’s will be bloated.
It really is just a natural consequence.
Well, Dog and IANAE, I have been there on the witness stand going over every reference I did not cite that was, what I thought, cumulative. We won the case, but the experience was, let us say, not a good one. I never want to repeat it. No attorney in their right mind wants this to happen to them.
So, they do not EVER exercise any filtering. They file everything out of shear terror.
(me)You’ll still spend a nasty 8 hours in deposition and be cast on the witness stand as an embarrassment to your client.
(IANAE) “There’s nothing you can do in an IDS to prevent that.”
Beg to differ (hope it differs). You won’t avoid the depo, but having cited all 70 references located in the patentability report (instead of just the 12 truly relevant refs you’d cite), can get inequitable conduct resolved prior to trial.
You’ll still spend a nasty 8 hours in deposition and be cast on the witness stand as an embarrassment to your client.
There’s nothing you can do in an IDS to prevent that. Maybe they should add a checkbox at the bottom for it.
use of genuine attorney professional judgment for IDS purposes may be rendering them a disservice.
I don’t think you’d be rendering the applicant a disservice at all, provided your judgment doesn’t eat up too much billable time, and you disclose all doubtful cases (whether the doubt is as to pertinence or cumulativeness) and document your reasoning.
Now, if your client wants every patent ever published on the front “page” of his issued patent, that’s a whole other story.
IANAE posted, “No, we don’t have …to disclose the five thousand references that are cumulative to the closet prior art. Just pick out the gems, list them on a one-page IDS, and you’re good.”
IANAE, I’m curious to know whether any of the patents you wrote and prosecuted using the above-quote IDS ideology have been litigated yet.
It doesn’t matter how pure (and correct) your intentions are. You’ll still spend a nasty 8 hours in deposition and be cast on the witness stand as an embarrassment to your client.
All this to say, I agree you’ve written what should be the standard, but until the CAFC sees fit to arrange its own disparate rulings into something more coherent, use of genuine attorney professional judgment for IDS purposes may be rendering them a disservice.
“If you’re searching for close art to anything other than the claims, it seems to me you’re doing a lot of extra work.”
IANAE – ya know that is what is required though. Compact prosecution and all. What good is searching only the claims when you know that any rejection based on such a limited search is relatively easily overcome.
You yourself seem to recognize this when you also say “It’s also good for us to see the best prior art as early as possible so we can make decisions to pursue or abandon the application.” Since no one in their right mind (well, not many at least) will let their app die on a first rejection when the specification gives additional outs (and what good attorney doesn’t plan for such additional outs?), searching only the initial claims seems a sure fire way to spend a sum total of more time per application.
I have to admit thou – setting up a good strawman such as this that you can argue both sides is genius.
The 35 USC 121 controversy will not be taken en banc. link to cafc.uscourts.gov
The feds will not take a panel decision en banc that clearly “overrule” two prior decisions on Section 121. I am persuaded that Gajarsa is right on the conflict.
So where does that leave the law? Another Atlantic Thermoplastic problem that will linger for a time?
The nut: the panel decision says it is OK to file in one divisional all non elected inventions, and then to file a second divisional from the first with even if there is no restriction in the second divisional.
This holding conflicts with two prior precedents to the contrary.
I’m assuming that Dennis is busy with finals which is why we have been looking at Gary Lock’s picture for the past 3 days.
Clearly Dennis hasn’t found the best art.
Let’s hope it can be amended after finals.
My preference is to find the closest Prior Art before writing the first Office Action.
The closest prior art to what? The claims as presented? The entire disclosure of the specification that might be claimed at a later date? What you can discern as the inventive concept of the application?
If you’re searching for close art to anything other than the claims, it seems to me you’re doing a lot of extra work. The applicant is only entitled to a patent unless his claims are invalid. I’m glad your approach saves you time later on, and maybe that’s a lesson you could circulate around the PTO. It’s also good for us to see the best prior art as early as possible so we can make decisions to pursue or abandon the application.
I’m assuming that Dennis is busy with finals which is why we have been looking at Gary Lock’s picture for the past 3 days.
“My preference is to find the closest Prior Art before writing the first Office Action.”
You’re in a distinct minority over there then. In fact, you may be a minority of one.
“I will speak only to my art –computer software…”
What are you planning on doing after the Supreme Court outlaws software patents?
“Kappos is still representing IBM.”
Never has a truer word been spoken.
Nobody could have predicted this.
MaxDrei: “So, at the USPTO, on average, how many Examiner hours go into writing the FAOM, and how much into the haggling downstream of that? Does it make sense to split these two tasks, with a fee required, in between?”
There are many factors that affect the answers to your questions. I will speak only to my art — computer software, where the major players are IBM, Microsoft, etc. who have very deep pockets.
Your first question varies from examiner to examiner.
My preference is to find the closest Prior Art before writing the first Office Action. Therefore, most of my examining time is spent on the FAOM (about 75%).
Based on my experience, I’ve found that citing the best Prior Art in the FAOM makes all subsequent prosecution much easier. Thus, the “haggling downstream” portion of my examination involves about 25% of my time.
To answer your second question, based on my experience with Applicants filing RCEs, IBM and Microsoft wouldn’t hesitate to pay the fee to continue prosecution.
“For his filing fee the applicant may present to the PTO up to 50 references that he wishes the application be be evaluated against. For additional fees he may present more. . . . The examiner’s job is to assess the application against only references provided by the applicant.”
I support that 100%. Based on the IDSes filed in my cases, this policy would make my job exponentially easier.
To Boss 12: I’m interested in your view about smoothing USPTO resources, to get on top of the backlog.
In the EPO, by historical accident, the search phase and the “haggling with the Applicant” phase are separate. If you want to haggle, after you get the search report and FAOM (called in Europe the EESR), you cough up a substantial fee. In a significant proportion of cases, Applicant doesn’t bother.
So, at the USPTO, on average, how many Examiner hours go into writing the FAOM, and how much into the haggling downstream of that? Does it make sense to split these two tasks, with a fee required, in between?
“Kappos is still representing IBM.”
Never has a truer word been spoken.
“FTF makes the inventor and the attorney rush to file before fully developing the invention, the written description and claims particularly pointing out the invention.”
That happens now. Thus, First-to-File won’t change anything.
“Suppose applicants could get a refund of their filing fees if they abandoned their applications before a first office action on the merits. Would that free up 25% of the USPTO resources and cure the backlog?”
No.
NWPA writes:
“our economic laws in this country recognize that a monopoly is not a good thing”
Quite so. That is why (is it not?) the US Constitution takes the trouble, in explicit terms, to permit a specific exception to that recognition, namely, the patents clause.
Everywhere else in the world but the USA has “exclusive right” and “patent monopoly” as synonyms. And the American patent right is more potent than that of any other country.
IANAE: our economic laws in this country recognize that a monopoly is not a good thing for many reasons.
The PTO has been a monopoly since its inception.
Besides, the constitution clearly states that Congress has a monopoly on these monopolies.
IANAE: our economic laws in this country recognize that a monopoly is not a good thing for many reasons.
The problem with this is that what will keep the USPTO from just bilking the inventors?
What will keep them from giving discounts to foreigners?
What will keep them from giving away patents for free?
What will keep them from demanding payment in chickens?
We must stop this legislation!
>>Consumer Reports Lifts ‘Don’t Buy’ Warning >>From Lexus GX460
News flash: MM”s aunt is now controlling the brakes of all Lexus GX460’s. She is telephoned from the Lexus prior to entering a curve and then she commands the Lexus brake system around the curve. She also offers greeting card and movie recommendations to the passengers based on their location and driving habits.
“The problem with this is that what will keep the USPTO from just bilking the inventors”
Why of course, the Office will present data showing that the near level perfect Quality will be achieved in this area as well.
Trust us.
“until someone at the PTO satisfies himself”
Someone remind me again about just how this was supposed to be done?
>First, Congress will grant fee-setting >authority to the patent office, which will >enable it to adjust the actual costs of the >services it provides
The problem with this is that what will keep the USPTO from just bilking the inventors?
LOL…. the spambots are quoting Wikipedia now.
Locke left office on January 12, 2005. If the disputed 2004 election between Christine Gregoire and Dino Rossi had not been resolved by then, Locke would, under Washington’s constitution, have remained in office until a successor qualified.
BJA, how do you figure?
IANAE, you probably have a duty to inform your insurance carrier that you’re not citing every reference ever mentioned to you by a client.
But what we have with the current interpretation of materiality is an obligation to inundate the examiner with a mountain of barely relevant references intermixed indistinguishably a few gems.
No, we don’t have that obligation. We don’t have to disclose the five thousand references that are cumulative to the closet prior art. Just pick out the gems, list them on a one-page IDS, and you’re good. If you’re not sure which of a dozen references is the closest, disclose those twelve and the rest are cumulative.
What we do have is an economic incentive to inundate the examiner with a mountain of barely relevant references, because it’s far cheaper and easier to do than checking which one is the closest. Plus, it can be done by some poor, low-paid, non-billing clerical worker.
None of this has anything to do with changes to Rule 56, which I still believe would tip the balance between disclosure and non-disclosure only in the very rarest of cases.
No, honesty is the best policy at all times.
But what we have with the current interpretation of materiality is an obligation to inundate the examiner with a mountain of barely relevant references intermixed indistinguishably a few gems.
We need to rethink the problem and the solution. The current Rule 56 is much better, IMHO, than the current standard of materiality enunciated by the Federal Circuit.
Only the insane would deliberately commit fraud on the PTO to obtain an invalid patent and then try to enforce it.
You keep trying to find loopholes that allow you not to disclose the closest prior art. Are you one of the insane ones, or are you suggesting that it’s okay to commit fraud on the PTO to obtain a valid patent? Or both?
Also, IANAE, we do have Walker Process where, not only are attorneys fees awarded, but damages tripled.
Enough disincentive yet?
Only the insane would deliberately commit fraud on the PTO to obtain an invalid patent and then try to enforce it.
BTW, I had a meeting with just such a malefactor on the same day the Feds handed down a decision agreeing that he had deliberately and intentionally misrepresented the prior art to the examiner in his prosecution of a related case. I brought this to his attention and kicked him out of my conference room. I never heard from him again.
STOCK MARKET CRASHING AGAIN!
Quick, somebody tell Kappos to issue a bunch of patents to save the economy!!!!!!!
Let’s then add criminal penalties for fraud.
What, more criminal penalties for fraud? Is the current maximum jail term too lenient?
IANAE, OK, you have a point.
Let’s then add criminal penalties for fraud.
Make it really, really bad for the malefactors. Toss them in jail. Throw away the key. AND, take away their fortune.
Enough disincentive yet?
IANAE, the problem of prior invention is independent of an expedited examination where the risk of a bad search and overbroad claim are shift heavily against the patent owner.
Ned, the problem of granting patents that have not been properly examined shifts the risk heavily against the public. Awarding costs against the unsuccessful patentee/plaintiff is not the whole answer to that problem.
Patents are an encumbrance on free commerce, and we tolerate them to the extent necessary to promote innovation in the useful arts, but we shouldn’t be giving them out until someone at the PTO satisfies himself that an innovation has in fact been perpetrated.
6, good to see you guys in the PTO have a subscription to Heinlein. I don’t have one, but wish I did.
I once wrote a little piece for the JPTOS that resulted in a wholesale statutory revision of Section 102(e).
IANAE, the problem of prior invention is independent of an expedited examination where the risk of a bad search and overbroad claim are shift heavily against the patent owner.
take it one step further:
Take it one step further. The US is first-to-invent, so let’s do away with filing altogether. You’re going to get your patent anyway, so who needs the PTO? Fire all the examiners – the purpose of the patent law is not to promote employment, after all.
Sue whenever you want, on whatever claim you can dream up, and the defendant has to show that the claim is invalid over prior art that was in existence at whatever date of invention you can prove for that claim.
Babel, take it one step further: examine such a patent application for formalities only. Provide by law that if any claim is invalid, over any art, the 50 disclosed or not, the whole patent is unenforeceable and that the patent owner must pay the attorney fees and costs of any accused infringer who litigates, either in court or in a interpartes reexamination, and wins. (This pretty much is the English rule.)
“but what do you make of the argument that a new method of swinging on a general purpose swing creates a new special purpose swing? ”
I make of it that you just granted me that the argument you are now presenting is false.
” it is the invention of the machine itself, which is to give a patent right, and not the application of it to any particular purpose, of which it is susceptible.”
I’ll grant you that, but what do you make of the argument that a new method of swinging on a general purpose swing creates a new special purpose swing? Or that a new method of exercising a general purpose cat (if cats can be said to have a purpose at all) creates a new special purpose cat?
You guys should really check this sht out. You’ve got the whole JPTOS avialable to you at that site. Vol 1 has some interesting things. Ol’ Thommy J “enunciates while in a reminiscent mood certain rules established by the board, such as that neither a mere change of material nor change of form should give title to an invention, and that (to use his own language) ” it is the invention of the machine itself, which is to give a patent right, and not the application of it to any particular purpose, of which it is susceptible.” These are now among the precepts of accepted practice and could only be uttered by one not merely learned in the law but vitally concerned in the progress of invention and in establishing a firm and philosophical basis for patent procedure.”
Is that not some sht? It seems even ol’ Thommy J contemplated the question of the reprogrammed general purpose computer. At the very inception of the Board no less!
I have to say Ping, they seemed to have lawls that made a great deal more sense than those which we have today do. I could almost see how progress was strictly promoted by them back in the day.
That was odd, but a female bailliff from 6’s Court of Opinion just handed me a note.
The note reads:
6, Funny
6 reading – That’s even Funnier
6 reading History – Even Funnier yet.
6 reading Historyand having any clue as to how that may relate to real world law? – Aint Goin. To. Happen.
6, yous gotta control your wimin.
An account of what happened just post-Great Depression in the Office and with attorneys is included at pg 751.
Good stuff.
Editor’s Page: Tentative Plan for Publishing Selected Decisions of the Board of Appeals. pg 271.
Rich stuff.
Look at page 167, “Inventions, Progress and Unemployment”
“Current writings of the day frequently claim that inventions are the cause of unemployment. That is unfortunate.”
LOL “That is unfortunate.”
LOLOLOLOLOLOL
Seems like people have been knowing about inventions producing unemployment for quite awhle now.
If the applicant wants to cut his own throat, he can withhold anything he wants and deal with it in litigation. If he feels the reference is not analogous, he can withhold it and deal with it in litigation.
If the applicant wants to threaten people with litigation on a patent that is clearly anticipated by a reference, he can withhold it and deal with it in litigation.
Now, what are we going to do if the courts wind up with a backlog? Any infringement case pending for three years, the plaintiff can pay a fee and automatically win? Or let the defendant submit a list of 50 patents and have his infringement determined only with respect to those patents? It would save a lot of time.
Guys check this sht out I just found. It’s a copy of the Journal of the Patent Office Society from 1934! It’s talking about business method patents!
“Method of Doing Business” by Geo. E. Tew
Here’s some excerpts:
“There is no sufficient or inclusive definition in decided cases of what constitutes a patentable method or “art” under the Statute.”
Look at that sht!
It gets better!
“A definition most often quoted or relied on is that in Cochrane v Deener, 94 U.S. 780 that-
A process is a mode of treatment of certain materials to produce a given result. It is an act or series of acts performed upon the subject mater to be transformed and reduced to a different state or thing.”
link to heinonline.org
I had no idea that this debate could legitimately be said to be going on since my grandfather was a youngen.
Check this gem:
“As to methods of doing business we find such expressions as that in Ex parte Abraham, 1869 C. D. 59 — “it is contrary to the spirit of the patent law as construed by the Office for many years, to grant patents for methods or analogous systems of bookkeeping”
Ned and that other dude who is all the time doing research around here will be very interested to find a list of business methods that were held not patentable and patentable on page 609!
Quite a find for me I have to say. I’m down with me some history.
Babel,
Now that would be the sport of Kings.
Dear Mr Locke:
You want an improved system? I’ll fix it for you.
Re-write the code and CFR to eliminate all searching by the PTO.
For his filing fee the applicant may present to the PTO up to 50 references that he wishes the application be be evaluated against. For additional fees he may present more.
Re-examination remains an option in the event the patentee finds new references.
The examiner’s job is to assess the application against only references provided by the applicant. Any patent that issues has a strong presumption of validity, but only against the references presented by the applicant.
The courts should be severely restricted in challenging the patent as to the examined art. But there would be absolutely no inference of validity as to art that was not examined.
The incentive is on the applicant to search the literature and provide the best references possible. Forget inequitable conduct. Forget non-analogous art arguments. If the applicant wants to cut his own throat, he can withhold anything he wants and deal with it in litigation. If he feels the reference is not analogous, he can withhold it and deal with it in litigation.
Infringers can judge the strength of the patent against what art was not considered, which motivates them to do their own searching. This will keep Greg Aharonian happy and out of everybody’s hair.
My invoice is enclosed.
Respectfully,
Babel Boy
Thank you book publishers. You see what the others are missing.
Once the dolt politicians extend the goals of the patent system to social objectives beyond the promotion of the arts and sciences, the sky’s the limit.
The next thing we’ll get from them is that the primary objective of the patent system is to promote racial equality. Then it will be to promote gender equality. Then, once Israel has completed its hegemony of the US Congress, it will be to promote Zionism.
Sky’s the limit.
Well ping and IANAE, you fail to consider that for the first 40+ years of this country we did not have claims and we did not have examination for novelty.
Right. And they saw fit to change that at some point.
The problem at that time was that such patents were practically unenforeceable and the scope of the patent were the preferred embodiments you described, no more.
Yeah, that must be why they changed it. Does that put a damper on your nostalgia for simpler times at all?
I don’t really want a system where someone can file a patent application for the wheel, get it classified in an art unit where there’s a 4-year backlog, buy a rubber stamp three years later, and go around suing everyone. Examination is a good thing. Could be made a better thing, but it’s a good thing.
Well ping and IANAE, you fail to consider that for the first 40+ years of this country we did not have claims and we did not have examination for novelty. The problem at that time was that such patents were practically unenforeceable and the scope of the patent were the preferred embodiments you described, no more. So, I actually do not think that all that many applicants would simply choose the get out of jail free card.
But, one never knows. There are companies, like IBM for example, who seem to want large numbers of patents and who seem to not intend to enforce most. Such a system would be highly attractive to such a company.
IANAE’s the man.
Okay, if you know the invention was made very recently it’s not an issue
You never know whether someone else independently invented the thing (or some other thing that invalidates it) a year ago and published or filed it where you can’t find it. What’s more, most clients won’t pay you to go looking for it. It’s just as much as risk in FTI as in FTF.
At least you’re safe from the inventor’s own art if the invention is relatively recent, but you’re always safe from that if you ask your client the right questions.
Ned: But, just as the Office gets only two actions before you can appeal, they should get only three years to complete examination. If they don’t do it faster, the applicants should have an option of simply ending it with a fee.
See, I would have addressed the pendency problem with more examination. What you propose is less. Guess we’ll have to agree to disagree.
AI: It is an irrefutable, undeniable FACT that when a small Inventor/ entrepreneur is granted a patent that Inventor instantly creates one job for him/herself and is likely to create many more for his/her family, community and country.
Irrefutable, undeniable fact, eh? Every time a small inventor is granted a patent he creates one job for himself? Poor guy must be exhausted after he gets his fifth patent.
Also, the small inventor who asked Obama about his patent some time ago didn’t appear to be able to turn his patent into a job for himself.
Claiming that every single small-inventor patent always undeniably turns into enough income to support the inventor is pretty creative, granted, but not the sort of thing that entitles you to call yourself an “actual inventor”.
fish sticks: Which situation generates more U.S. jobs:
That depends. If Americans just go about their business, I’d say situation (b) with 16 times as many foreign filings would employ a lot more US agents and examiners.
If you’re talking about the patents themselves creating jobs, that depends on what the patents cover. A hundred patents that cover minor improvements to a single product people were going to buy anyway don’t create very many jobs at all.
Ron Katznelson
Excellent work!
Can you shoot me copies of Tafas v. USPTO, 2007, Admin. Rcrd., A07170 and A04372? I’d like to get a better feel for how they calculate their abandonment rates. I want to make sure we are comparing apples to apples.
“Which situation generates more U.S. jobs:
(a) 80% of U.S. patents are held by foreigners and the rest by U.S. patentees; or
(b) 80% of U.S. patents are held by U.S. patentees and the rest by foreigners?”
Is that a trick question? At least in software, the answer is neither. Either way, they’re just taxes on legitimate business.
Thankfully most of my corporate clients give me a target filing date, and I make sure to file before that date. Would be difficult to claim malpractice because I filed two weeks before their target date.
American Cowboy – with regard to the issue of delay and malpractice, does this also apply in the situation where delay in filing leads to some publication (which, without the delay in filing, could have been avoided by showing prior invention) becoming 102(b) art?
Okay, if you know the invention was made very recently it’s not an issue but if the date of invention could be a year ago how do you know that there isn’t a publication that the inventor doesn’t know about that was published 364 days ago? Does this mean that it must be treated as an emergency filing?