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« Bilski, Kenny Rogers and Supreme Court Rule 46 |
| Pre-Bilski Survey: Software Patents »
Posted on Jun 25, 2010 at 01:30 PM | Permalink
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Jun 25, 2010 at 03:24 PM
How about a poll as to whether Congress should direct the PTO to reopen prosecution on any abandoned application finally rejected on 101 basis wherein the rejection cited to In re Bilski, in the event that a decision in Bilski v. Kappos rewrites statutory subject matter law in a way that is favorable to many types of inventions not previously allowed?
Robert K S |
Jun 25, 2010 at 03:44 PM
Dennis, before I answer the question, please tell me how there can be a substantial new question of patentability based on patentable subject matter without a change in the law?
Ned Heller |
Jun 25, 2010 at 04:17 PM
Robert K S - I'd have to imagine that's a nearly empty set. I've seen plenty of 101 rejections, but hardly any where that's the sole basis for a final rejection and the applicant couldn't have simply postponed abandonment and examination by filing a continuation in the hopes of a more favorable Bilski ruling.
What would be harder is if people got claims allowed that could arguably have been BROADER.
Jun 25, 2010 at 04:20 PM
Oy. It burns.
Malcolm Mooney |
Jun 25, 2010 at 04:21 PM
Um, how about a change in interpretation of the law? Does that help you move forward?
Jun 25, 2010 at 04:29 PM
Ned is correct that allowing 35 USC 101 as a basis for reexam would require legislation (I believe this would be allowed if the post-grant opposition portion of so-called "patent law reform" were enacted). But also remember that if the reexam is declared, all invalidity defenses become fair game, including those under 35 USC 101, for any amended reexamined claims, or if any new claims are added during reexam. I believe it's a fairly common tactic for a 3rd party to get the reexam going, see if the reexam applicant amends/adds new claims, and then bring out other bases for invalidity, usually under 35 USC 112.
Jun 25, 2010 at 04:40 PM
IMHO formalities should be settled during prosecution, and only novelty/obviousness challenged later, for the sake of greater perdictability/certainty.
Alun Palmer |
Jun 25, 2010 at 04:48 PM
Ned is correct that allowing 35 USC 101 as a basis for reexam would require legislation
Jeebus, isn't this implicit in Dennis' question? How else would Congress expand the scope of a law?
Malcolm Mooney |
Jun 25, 2010 at 05:03 PM
I attempted to lodge a "vote", but received a message saying I had already done so (which I had not). Had I had the opportunity to do so, mine would have been a resounding "No".
Quite frankly, I was surprised to see that "Yes" outpaces "No" by a substantial margin.
Harbor under 101 is manifestly a question of law. Reexamination is based upon questions of fact. If the USPTO determines that 101 is satisfied, it does seem a bit silly for a third party to tell the office that it knows the law better than the office.
Michael L. Slonecker |
Jun 25, 2010 at 05:40 PM
"Reexamination is based upon questions of fact"
Try again - patentability is a question of law - sure, you use facts of prior art, but the question is still one of law.
Jun 25, 2010 at 07:33 PM
Yeah, but how does one seriously allege a substantial new question of patentability when the issue is patentable subject matter?
One can disagree with the PTO and say they made a mistake. But disagreeing with the PTO is not grounds for a reexamination.
New art, not before the PTO that raises prior art issues not considered before is the whole point of a reexamination. Simply disagreeing with the PTO is not.
Now, imagine that you have a patent and the Director decides that he made a mistake in examining your patent. Should he have the right to simply reexamine your patent without more? Huh?
What kind of totalitarianism is this? We have the rule of law and a court system for a reason. Even the government should not have the right to interfere with your property rights after grant. The Supreme Court actually held this way once upon a time when the government tried to reexamine a patent without the consent of the patent owner.
Where did the train go off the tracks? Why has our thinking become so accommodating to arbitrary and capricious rule?
Ned Heller |
Jun 25, 2010 at 07:51 PM
No, that is why there is opposition legislation pending.
101 isses are not questions requiring much if any scientific or technical analysis of the type suited for patent examners, either leave things as they are or switch to an APJ based system such as proposed in S.515.
Jun 25, 2010 at 08:49 PM
When you think about it, 101 issues are particularly poorly suited for determination by patent examiners -- whether on initial exam or on re-exam. If patent examiners were required to be attorneys, it might make sense, but plenty of examiners are not attorneys. When the system works right, the examiner assigned to your application is highly knowledgeable about your technology area. It strikes me that 101 issues require the least amount of specific knowledge about the technology in the application, and the most amount of general legal skill. I guess it might make sense to throw thousands of patents back for a 101 re-exam if a special "101 examination" unit is created and staffed with attorneys.
I'd be interested in whether we can identify art areas where expertise in the art is more useful than expertise in the law in determining 101 eligibility.
Jun 25, 2010 at 08:50 PM
"One can disagree with the PTO and say they made a mistake. But disagreeing with the PTO is not grounds for a reexamination."
I think that's the whole point of Dennis's question - i.e. should the statute be changed to allow challenges based on unpatentable subject matter.
Jun 25, 2010 at 09:24 PM
Anon, and what is the criteria? Can anybody at any time who disagrees with what happened before can invoke a reexamination?
Ned Heller |
Jun 25, 2010 at 11:51 PM
I like your idea of changing the interpretation of the law... Pretty sure that would make an impact.
Promotional Products |
Jun 26, 2010 at 10:38 AM
Reexaminations are like the qui tam false marking statute. Now think. What if every member of the public could sue and had a right to sue over the same false marking case? What legal theory prevents one accused of false marking from being sued again and again and again and again and again and again and again with respect to the same set of facts by every member of the public who has a right to sue?
We have the same problem here with respect to what Dennis proposes. There can be no finality as there is no effective barrier to filing. Anyone can file a re-examination regarding patentable subject matter without any barrier at all. The patent owner can be harassed endlessly by arguing the same issue again and again and again and again and again and again.
Either Dennis has no problem with this or he has completely lost touch with reality. But it does illustrate a definite anti-patent attitude by Prof. Crouch.
Ned Heller |
Jun 26, 2010 at 12:45 PM
Guys, tell me what you think of this situation. I received an examiner's answer, in which he created a bunch of self serving data tables in an attempt to bamboozle the board into thinking a reference discloses X... when I could create my own self serving data tables that would show the reference does not disclose X.
I've never seen something like this happen before.
Jun 26, 2010 at 06:32 PM
PTO should prove that they are making good sustainable progress on their backlog before they are handed additional responsibilities.
Jun 26, 2010 at 06:49 PM
An SNQ requires that the issue be "new." Thus, in your hypothetical, assuming the 101 issue was settled in a previous reexamination, or even still pending, there could not be a second reexamination based on the same SNQ.
Scott McKeown |
Jun 26, 2010 at 07:02 PM
"Thus, in your hypothetical, assuming the 101 issue was settled in a previous reexamination, or even still pending, there could not be a second reexamination based on the same SNQ."
Yeah Ned, Think!!!!
Jun 26, 2010 at 10:55 PM
Apparently, 60% of respondents haven't a clue. Let's not reduce patent law to a consensus of the uninformed...
Jun 27, 2010 at 08:51 AM
It took two days for Tennessee to even mention the news. Maybe you don't have a clue?
sarah mcpherson |
Jun 27, 2010 at 09:26 AM
Or better yet, answer the question of why not? rather than handwaiving a "60% don't have a clue" statement without any thought.
Jun 27, 2010 at 09:39 AM
OK, Scott and Anon, explain to me, slowly so that even I can understand, just how a given set of claims present new legal or factual issues. Explain to me, again slowly, exactly what argument you would make to the PTO that would demonstrate that with these set of claims and that statute, unchanged, any new issue is created.
I really really want to understand.
Ned Heller |
Jun 27, 2010 at 03:00 PM
I'm on your side, I don't believe 101 has any place at all in patent reexamination, aside from double patenting.
You are right in that the statute (101) itself has not changed. In a somewhat analogous situation, the PTO does not simply accept citation to KSR as a basis to reexamine claims over again (MPEP 2216). So, if the hypothetical thinking is Bilski could result in an avalanche of reexaminations of its own accord, I don't see it.
Still, presenting an SNQ for 101 issues would not be any more difficult than 102 or 103, you would just point out the issue, and assuming the examiner did not consider it in the original prosecution of the claims, you would be in business.
Scott Mckeown |
Jun 27, 2010 at 04:33 PM
sarah, there may be many things I don't have, but what I do have isn't a medical condition that is hard to pronounce. And, unlike you, I'm not a sucker for obscure poetic rambling and song lyrics.
And if ping wants an answer to "why not" just read Ned Heller. New prior art can create a new issue of patentability. Once subject matter eligibility is established, there is no real new question.
I see where this thread is going. The question is "will it be possible to petition for re-exam in the wake of the Bilski decision for cases that no longer meet the newly established 101 standard (if there are any)."
Jun 27, 2010 at 07:23 PM
RWA, at last, someone who understands the law.
Ned Heller |
Jun 27, 2010 at 11:35 PM
"RWA, at last, someone who understands the law."
I lol ya both. First off, understand the law being equated with agreeing with Ned - that be IMHO-Ned law foundation aspect #1. Second, and to borrow from 6, ya both are tards - try reading the question (here's a hint - Should Congress expand indicates that this would be a change in the law. Ya might actually think before gettin all excited.
Jun 28, 2010 at 05:19 AM
Like Mr. Slonecker, I too got the "You already voted" message when I in fact had not voted. I wonder if the results are invalid because a sinificant portion of the "No" votes are being blocked.
Florida Patent Guy |
Jun 28, 2010 at 07:26 AM
FPG - perhaps a significant portion of the "Yes" votes are being blocked.
Your conspiracy ramblings are unwarranted.
Jun 28, 2010 at 07:30 AM
ping, alright, bright one, the one who always illustrates an extreme depth of understanding of general principles, and now assuming a change the law to authorize reexaminations based on 101, tell me sage:
What is the new issue of patentabiliy if the claims and the statute, meaning 101, have not changed?
Ned Heller |
Jun 28, 2010 at 09:48 AM
Once again (yet again) - try this for legal theory - the court's interpretation of the law changes...
Jun 28, 2010 at 09:54 AM
ping, I see.
You have just proved my point.
Ned Heller |
Jun 28, 2010 at 10:10 AM
I'm with Ned here. Once a patent has been examined, the PTO has implicitly (or explicitly) considered the 101 issue and come to a decision. No new evidence or argument can raise a substantial new question under 101, because the claim itself is either directed to statutory subject matter or not.
Re-exam for 101 simply does not make any sense.
Jun 28, 2010 at 10:34 AM
Guaranteed to be lost in the Bilski blizzard: USPTO announcement on SNQ
Ned - you are too cryptic in saying that a court's interpretation proves your point (I'll chalk up IANAE's miss on his usual excellence as missing my post).
Jun 28, 2010 at 10:50 AM
No new evidence or argument can raise a substantial new question under 101, because the claim itself is either directed to statutory subject matter or not.
As happens all the time, an applicant make a statement to the PTO or to a court regarding a related application that is relevant to construing a term in a claim. The new construction can change the scope of the claim from one that is narrow and avoids an issue of patent eligibility under 101 to a broad construction that implicates 101.
Malcolm Mooney |
Jun 28, 2010 at 11:10 AM
I understand your point to be that an SNQ (assuming the reexamination statutes were amended to embrace 101) could never be found unless 35 USC 101 itself were somehow changed. Your point being that new evidence/arguments would not be available otherwise, thus there could not be a substantial "new" question of patentability.
Keep in mind that a substantial "new" question does NOT require new evidence. In other words, you can request reexamination on the very same art that was initially reviewed by the examiner, assuming you present that art "in a new light" (In re Swanson)
Assuming 101 issues were not addressed at all by the original examiner, I don't see why a request pointing out an issue under 101 to the office would not be a "new light."
Scott Mckeown |
Jun 28, 2010 at 11:13 AM
The new construction can change the scope of the claim from one that is narrow and avoids an issue of patent eligibility under 101 to a broad construction that implicates 101.
Isn't that why the examiner is supposed to take the broadest reasonable interpretation of the claim the first time around?
Jun 28, 2010 at 11:54 AM
"the first time around?"
A change is still a change - and that change may change the interpretation takenthe first time around - no matta how broad it was the first time around.
Jun 28, 2010 at 01:43 PM
"to borrow from 6,..."
Anything borrowed from 6 will no doubt be sticky and covered with drool...
Jun 30, 2010 at 12:19 AM
Your concern is duly noted - please be aware that I was wearing gloves while matching the 6ism to the Ned-RWA contribution.
Jun 30, 2010 at 08:31 AM
"covered with drool..."
That's not drool...
Jun 30, 2010 at 09:31 AM
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