By Dennis Crouch
In 1888, the US Supreme Court plainly held that patent rights granted by the US government could only be overcome with clear and convincing evidence:
The presumption attending the patent, even when directly assailed, that it was issued upon sufficient evidence that the law had been complied with by the officers of the government . . . can only be overcome by clear and convincing proof.
U.S. v. Iron Silver Min. Co., 128 U.S. 673 (1888). Of course, Iron Silver does not concern invention rights. Rather, the case is about patents for placer mineral rights that were granted to Iron Silver based on the company's claim that it had discovered valuable minerals on the surface of US public land near Leadville, Colorado. Under the law at the time, discovery of surface minerals on public lands allowed a prospector to stake a legal claim that extended to mineral rights under the surface.
Still, the court's holdings on land-patent rights may have some relevance to Microsoft's current challenge to the clear and convincing standard. As Professor Ed Kitch noted in his seminal 1977 article titled The Nature and Function of the Patent System that introduces the "prospect theory of patents," there are many similarities between the mineral claiming patent system and the utility patent system. The prospect theory suggests that patent rights are useful in channeling and coordinating post-invention development activities. The core idea that Kitch recognized is that a business is more likely to pursue post-invention investment and development of a product that falls within its own sphere of patent exclusivity. "The patent system achieves these ends by awarding exclusive and publicly recorded ownership of a prospect shortly after its discovery. The patent system so viewed is closely analogous to the American mineral claim system for public lands. For expositional convenience, this view of the patent system will be called the prospect theory."
Although Kitch does not expressly discuss the legal standards for invalidation, his theory would suggest strong rights tend to better-serve the prospect-role of patents.
The following are two posts transferred from link to patentlyo.com that pertain substantially to this thread:
Inviting Body Punches,
Unlike others, I have real work to do and cannot sit around and jump to every request for information. Your strident requests not much more than an hour apart smack of petulance, and I am loath to assist your understanding if but for that reason alone.
As for Ping, goodness knows what he is trying to say.
As for my message posted on the other thread, I was referring to the fact that the battle over the presumption that Microsoft brings to the Supreme Court is not a new battle at all. Our Supreme Court, ever the weather vane in trying to react to the perceptions (seemingly moreso than the realities) of the day, took a decidedly negative approach to patents in the late 30’s – driven by the animus of Justice Douglas. This is all historical fact – I will leave the details to you. Suffice to say that prior to that attack, the view held even by the Supreme Court could be summarized by Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 2 (U.S. 1934): “Even for the purpose of a controversy with strangers there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence.”
Of course, with the advent of the most anti-patent Supreme Court in this nation’s history, the attack on patents then (as apparently now) dealt with the facets that made a strong patent – including the presumption of validity. This can be clearly seen in Cleveland Punch & Shear Works Co. v. E. W. Bliss Co., 145 F.2d 991, 999 (6th Cir. Ohio 1944):
“It seems reasonably clear that both master and court were led to their conclusions, though with some reluctance, by the presumption of validity inhering in the patent grant, a presumption not accorded great weight in the more recent decisions of the Supreme Court, notwithstanding its positive assertion in Philippine Sugar Estates Development Co. v. Government of Philippine Islands, 247 U.S. 385, 38 S.Ct. 513, 62 L.Ed. 1177, [**26] and Radio Corporation v. Radio Laboratories, 293 U.S. 1, 54 S.Ct. 752, 78 L.Ed. 1453. The stricter tests of invention applied by the Supreme Court in recent years, have been repeatedly noted by us and by other Courts.”
In other words, the acts of the Supreme Court immediately before the 1952 Act (which is arguably a reaction against such vehemence) were in opposition to an earlier holding – it is that earlier holding that I referred to.
But more to the point of Dennis Crouch’s prospecting thread was the alignment of patent grants with the other patents grants of our nation’s early history – land patents. Even though certain antagonists are quick to deny any such link, those links exist and have merit for the current discussion.
In those types of cases, the presumption goes even further back in time:
“Clear and convincing proof would seem, therefore, to be necessary to overcome the presumption.
Iron Silver Mining Co. v. Mike & Starr Gold & Silver Mining Co., 143 U.S. 394, 417 (U.S. 1892)
“The general doctrine on this subject is, that, when in a court of equity it is proposed to set aside, to annul, or correct a written instrument, for fraud or mistake in the execution of the instrument itself, the testimony on which this is done must be clear, unequivocal and convincing, and it cannot be done upon a bare preponderance of evidence which leaves the issue in doubt.
Where the purpose is to annul a patent, a grant, or other formal evidence of title from the United States, the respect due to such an instrument, the presumption that all the preceding steps required by law had been observed, the importance and necessity of the stability of titles dependent on these official instruments, demand that the effort to set them aside should be successful only when the allegations on which this attempt is made are clearly stated and fully proved.
Maxwell Land-Grant Case, 121 U.S. 325 (U.S. 1887)
Funny how the “court of equity” line works against the antagonist that love to discuss the power that the courts of equity have – but then again, that one has always been susceptible to selective reasoning.
Posted by: Anon | Oct 19, 2010 at 07:19 AM
and
In an 1871 dispute regarding U.S. Pat. No. 52,730 and U.S. Patent No. 63,917, the court in McMillin v. Barclay, 16 F.Cas. 302 C.C.Pa. (1871) noted, “The only remaining question, affecting the validity of the patent, is, …. The burden of disproving this is upon the party who denies it. Evidence of disputable or doubtful import will not meet this requirement, but it must be clear and convincing.”
To cited the above, please use:
PatentlyO Law Blog, at link to patentlyo.com (October 17, 2010).
Posted by: James Aerty | Oct 19, 2010 at 10:14 AM
I guess neither Dim nor Ned have much ta say.
damm I think Ned’s answer to his own last question woulda made everyone happy.
gar b age – bad word. bad bad word.
middle section gettin gcuaght
I za pretty sure ya aint gonna find that word “cur sorily” anywheres near “examination”. Kinda goes against the basics of examination in fact. Side which, “must” consider still means somethin since ya can’t define a word to mean its opposite in law (ya been hangin out with Maxie, have ya?)
“Moving on” – see Ned, that’s your problem, too much ina hurry ta move on when ya left your gar b age all over the place. Aint mighty nice of ya, now is it?
“under your theory” I don’t know Dim’s theory. Isn’t it next to the one that KSR made everything ever patented in a “New Light“? I don’t know if you know my “theory“, as I rightly haven’t given one – all Iza done is provide some keen observations.
Let’s see ya give an answer to your own last question. It might be…
…illuminating.
word filter goin nuts again, let’s try this in bites
“From this he adopts the view that the examiner must read and consider all the cited references.”
Nah, I think ya be reading too much into it. Iza don’t think Dim uses the word “read” at all, and he does comment on “consider” bein an i l l defined term.
Ya just reaching and making up stuff like ya usually do Ned.
Your cite of 2256 may or may not touch upon it, but Ned – wasn’t that cite not related to the initial examination? As for the rejoiner, I don’t know what Dim’s thinkin – we’ll havta see what Dim has to say.
I’ve already added plenty to the conversation. In case ya didn’t know it, the nice guy Dim even gave me props (something ya might consider doin, instead of eatin your words all the time).
Sides, I provided a great link to some monster dump trucks. Didya see the one on page 5? – it even has an automatice IDS level indicator.
Ping, what you fail to consider is that New Light’s whole thesis depends on the theory that the examiner has allowed the claims over all the art of record and therefor he theorizes that this must mean that the claims are patentable over all the cited refereences. From this he adopts the view that the examiner must read and consider all the cited references.
But, ping, I rejoined and pointed out that his assumptions and logic, although sound to a point, results in a conclusion that is not in fact the case: the PTO does not actually consider IDS cited references unless their relevance is explained. I cited MPEP 2256 for that.
Now, ping, if you wish to add something to the conversation, please do. For example, when the PTO says it does not actually have to consider (except cursorily) an IDS reference not explained, do you suggest that they are not telling the truth? For example, just where is there a statute that requires them to do otherwise?
Moving on, if the a reexamination can be invoked over a reference not discussed during examination (unless it is shown by the PO that it was cummulative), just how is that if, under your theory (assuming you agree with New Light), every reference cited was considered by the examiner when allowing the case. If it WAS considered then, by LAW, its cannot form the basis of a reexamination order — unless, that is, it is considered in a new light. But what does THAT mean if the reference was not discussed at all in the prosecution?
Finally, referring back to Max, just what is the whole point of the Duty of Disclosure if the examiner does not actually consider the art cited in IDSs?
Ya call throwing one MPEP section up in the air responding ta Dim Light’s multiple points presented? Ya don’t even come close to addressing his points, now doya? Like I said – you be duckin the tough questions.
Ned, aint be long till even Dim aint nice to ya if ya treat him like that.
LOLz your “must consider” = “ignore”. Not even BUI can come up with that construction (in other words defining things to be the opposite is a big no-no).
I for one am interested in what ya actually gotza say about the floor bit and how the Office chooses specifically to say less and mean more when it comes to allowance.
I’m sorry Ping, but I did respond to New Light. See my post quoting from the recent OA which cites 2256 and the degree of consideration the examiner must give a cited reference. See: link to bitlaw.com
A reference is only reviewed when it is “explained.” Now how do you interpret that? Can it be that the examiner only cursorily reviews reference that is not explained?
“Must consider” and the “degree” of consideration are not the same thing. If the degree of consideration is equivalent to “ignore,” and it is, then why does the office even permit IDSs without expanations?
Ned,
I lolz your wishful thinking: “unless the applicant actually points out the relevance”
Show me where this so called “grey zone” is creted anywhere accept your mind. Dim Light was pretty clear in establishing that the applicant has no power at all to make such “relevance”, and in fact risks estoppel by trying to do so in the specification, as apposed to simply listing the reference on a proper IDS wherein the Office must consider it.
“Please continue with all points under consideration, including those in my previous two posts.”
Ned, I notice ya ducking out on actually “discussing” the many point Dim brings up. Ya see Dim, bein nice gets ya nowhere.
Your “higher power” “discuss” is also but a phantom. The applicant can only “discuss” if the examiner brings it up – any other “discuss” is a non-sequitur and fails your own little “discuss” paradigm. So whatcha gonna tell Dim about all those patents where only two, three or (Gasp) four references are “discussed”? Does this mean the Office only has to examine a small handful of patent prior art and the rest is open game to drag through perpetual reexam?
I don’t think so.
The “of issue” is much more than the mere few patents discussed. If it weren’t, then sham examination would be the official legal byproduct. Ya really want to stake the legal patent rights on a couple of prior art items actually discussed? That would right kill all patents in a hurry.
Maxie,
“to art whose relevance to the claimed subject matter is accurately, concisely and comprehensively explained by the Applicant to the PTO, before the conclusion of pre-issue examination on the merits? That makes sense, no?”
The Office just tried that and failed. It was ruled illegal in this country. Google “Tafas” and bring yourself up to speed.
“Well, Max, we are trending that way.”
Shame Ned, at least Maxie has the excuse of being a blimey – did your memory start failing prior to Tafas, is that your excuse?
“when the PTO does not have time to read the humongous IDSs it fosters”
LOL Ned – you aint seen nothin yet if the presumption be changed to preponderance.
Well, Max, we are trending that way.
Bravo to the Aussies on scrapping the Duty of Disclosure.
Bact to good ol’ US of A, we seem to have a Federal Circuit that has run amok based on a PTO rule 56 that never clearly defined exactly what was required to be disclosed. This resulted in IDSs that were large and undefined. Any statement made in IDSs was intentionally misconstrued by unscrupulous litigation counsel who always seem to magnify every mole hill into the largest mountain one had ever seen.
But the point you make here is a point made by others in the current en banc appeal regarding IC. What is the duty of disclosure getting us when the PTO does not have time to read the humongous IDSs it fosters?
Nothing.
Nada.
Rather, the Duty causes an enourmous waste of time and effort by all for no good purpose. It actually harms patent prosecution and litigation by driving up costs beyond reason. It it time for the courts to call a halt.
Microsoft would upend more than a century of patent litigation rulings, just in order to avoid dealing with the consequences of its infringement. I hope the SCOTUS doesn’t grant cert; no preferential treatment appears warranted by Microsoft’s behavior.
Ned, reading your last 3.24pm para,the thought that comes to my mind is: Whatever is the point of the “Duty of Disclosure” as it is currently understood? To me, it seems to have no point.
No wonder Australia, which once had it, decided it was worse than useless. And so got rid of it.
But a law like we have in Europe, that, post-issue, gives an enhanced Presumption of Validity, relative to art whose relevance to the claimed subject matter is accurately, concisely and comprehensively explained by the Applicant to the PTO, before the conclusion of pre-issue examination on the merits? That makes sense, no?
New Light, thanks. But it seems clear to me that “consider” in a “defined term.” The PTO makes it clear that “consider” is nothing more than a cursory review one gives hits in a search unless the applicant actually points out the relevance.
Now, add to this that in considering the question of “substantial new question,” only those patents actually discussed in the prosecution history are deemed “of issue.”
What do we have?
References cited in an IDS, not discussed at all, are given only a cursory review. Nothing more is required.
It is no wonder the examiner almost never relies on IDS art in forming a rejection. He never reads it unless it shows up in his search.
Now, one may have fulfilled his duty of disclosure by citing the prior art. But any presumptions based on its mere citation in the IDS is unwarranted. The PTO give its citation no deference today. I presume that the courts will soon follow suit.
Thank you Ned,
I will consider the information you provided, as something an examiner has told you, along with the information Ping points out (that the Office cannot make the applicant perform an examination and that duty lies strictly with the Office and that the examiner is the one that must consider all the prior art references (alone and in combination) cited in the application or reexamination, including those cited by the applicant in a properly submitted Information Disclosure Statement to the extent required by law to meet his obligation of examination).
Please continue with all points under consideration, including those in my previous two posts.
New Light, before we move on, consider the following I copied from an OA I just received. It pertains to reexaminations, but one must ask whether there is a different “rule” for original examinations.
“Further, the examiner notes that MPEP 2256, Under the heading “Prior Art Patents, and Printed Publications Reviewed by Examiner in Reexamination” states, in part:
Where patents, publications, and other such items of information are submitted by
a party (patent owner or requester) in compliance with the requirements of the rules, the
requisite degree of consideration to be given to such information will be normally
limited by the degree to which the party filing the information citation has explained the content and relevance of the information. The initials of the examiner placed adjacent to the citations on the form PTO/SB/08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the information has been considered by the examiner any further than to the extent noted above. [Emphasis added.]
“is actually not considered by the examiner.”
Just an observation:
707.05 Citation of References
The examiner must consider all the prior art references (alone and in combination) cited in the application or reexamination, including those cited by the applicant in a properly submitted Information Disclosure Statement.
This just keeps getting better:
“and any such comments are a floor, rather than a ceiling on the considerations of patentability. See MPEP 1302.14 “The statement is not intended to necessarily state all the reasons for allowance or all the details why claims are allowed and should not be written to specifically or impliedly state that all the reasons for allowance are set forth.”
Maybe we should be increasing the deference…!
So then if it’s Japan, then the USPTO knows exactly who did that. And why would they not correct what was done to me… unless? I didn’t file my applications in Japan or China. I’ve already showed exactly what happened on July 19,1995. And then what followed. Excuse me, but is this America. Or are we really in the Rabbit hole?
Is that why I am Red on PS?
“is actually not considered by the examiner.”
Just an observation:
707.05 Citation of References
The examiner must consider all the prior art references (alone and in combination) cited in the application or reexamination, including those cited by the applicant in a properly submitted Information Disclosure Statement.
There they go again, messing with my PC. What I wrote is I said RED FLAG! Is it the color of the Flag that is upsetting them? Instead of the innuendo red flag?
Me, ever being the thoughtful observer, offers the following link to practicioners who may want to order a few of these, just in case.
link to dieselpowermag.com
And then we have the fees I paid for the Utility Application in 1995
I just don’t understsnd. I can’t be the only Applicant. a
Dim Light,
Ya messin with the formula O success of these boards with that polite crrp.
Ned,
Ya need to flame the dim one – he is trouncing your position and making ya look like a piker.
Ned,
Thank you for the continuing dialogue. It seems a rarity on these boards to have an actual legal discussion without sniping, so I appreciate your constructive discussion.
However, I am not sure that I can agree with your comment of “very clear that an examiner’s initials on an IDS form indicate no more than examiner has given the reference a cursory review.”
To be sure, the checked IDS form has no more weight than the starred references that the examiner himself brings to be upon the face of the patent (see MPEP 1302.12 The examiner does not list references which were previously cited by the applicant (and initialed by an examiner) on an Information Disclosure Statement, for example, on a PTO/SB/08“), but all of the references, save those explicitly discussed by the examiner in his rejections and notice of allowance comments have the same weight. All of these references have been “considered.”
I do agree that the Office has used (probably purposefully) vague language of “considered”, since this does not appear to be defined in a meaningful manner.
Keep in mind that the examiner is not even required to make comments in the notice of allowance (MPEP 1302.14), and any such comments are a floor, rather than a ceiling on the considerations of patentability. See MPEP 1302.14 “The statement is not intended to necessarily state all the reasons for allowance or all the details why claims are allowed and should not be written to specifically or impliedly state that all the reasons for allowance are set forth.”
Keep in mind as well, that the Office relies on the record to speak for itself, and that not every reason for allowance will be explicitly stated. See Id. “Thus, where the examiner’s actions clearly point out the reasons for rejection and the applicant’s reply explicitly presents reasons why claims are patentable over the reference, the reasons for allowance are in all probability evident from the record and no statement should be necessary.”
Implicit in this acceptance for allowance is the logic that NO OTHER rejection of the application against all considered items can be made, which means inter alia, that the application passes all legal tests – critically 102/103 – over all considered references. It makes no sense otherwise, as it is illogical to presume that an examiner would knowingly allow an application to issue when the examiner’s best argument is defeated, but other legal hurdles from those references “considered” exist. While this is indeed implicit, it mirrors the expectation under law that the examination has been thorough and complete. I am not sure where a “cursory review” is accepted as part of the examination process.
Another point to consider is that the MPEP is clear that the applicant’s discussion of references does not carry the same weight as the examiner’s. And there is simply no way to force an examiner to discuss a reference that you want discussed.
Given the above position concerning comments on notice of allowance, the point directly above about the limitation of an applicant to even have the examiner discuss a reference and the fact that the notice of allowance comments, even if present are a floor, not a ceiling, I am hard pressed to accept your view. Further, until IC is fixed, The risk/reward of discussing someone else’s invention at all dictates that such discussions be kept to a minimum.
I am not moved from my understanding.
New light, the patent office makes it very clear that an examiner’s initials on an IDS form indicate no more than examiner has given the reference a cursory review. What they mean by that is that the examiner has looked at it to see if on its face it was relevant to the claims. The examiner does not have to read the reference and most often does not read the reference to fully understand his teachings.
In a study posted here on Patently-O, it was found that virtually none of the art cited by the applicant’s IDS was ever used by the examiner to reject the claims. He appears to like to conduct his own search and use his own art to reject the claims. I think one of the reasons for this is that he actually does not read the IDS materials, but prefers to use the patent office search engines to conduct the search.
The primary purpose for dumping prior art on the patent office is to avoid charges of inequitable conduct. The courts will soon catch on that most of the art cited on the face of the patent is actually not considered by the examiner. The courts will soon adopt, I believe, the position of the patent office in analyzing whether a reference was actually read and analyzed by the examiner. The patent office’s position is that the examiner must actually comment on the reference in some fashion, or use the reference in rejection. This is the standard the patent office uses in determining whether a reference of record in a prior examination was made “of issue.”
A gray area is a situation where the applicant actually discusses the reference in some fashion and points out to the examiner and is IDS or other paper the relevance of the reference. Just to make it sure that the examiner reads what you have written, I would think it is highly advisable to discuss the reference in an amendment.
So if the courts were to adopt the position equivalent to the position patent office takes in considering whether a reference was of-issue during a prior examination, it would hold that the clear and convincing standard applies only to such issues “litigated and decided” by the patent office. But with respect to every other reference, the initial position should be that they preponderance of evidence standard should apply. But as I said before, the patent owner should be able to demonstrate that the reference is cumulative of references actually discussed during a prior PTO examination.
If the above were very clear, I was thinking it would incent the average practitioner to get the best prior art before the examiner and have the examiner actually comment on it. The last thing they would want to do would be to bury the reference in a massive IDS.
Ned,
Buried in Ping’s message is a question that I struggle with. As I mentioned previously, the most individual patents that I have seen explicitly discussed in a particular application is no more than ten, with most applications having far fewer. Of course in the fields I work with, the number of references on an IDS is much greater than this. My understanding is that an IDS sheet signed by an examiner is the equivalent of the examiner explicitly discussing that reference, finding that the application is not legally impacted by that reference on all grounds (for example, 102 and 103) based on the claims and specification in front of the examiner at that time. An applicant’s amendment can change that understanding and place a piece of prior art back into a position of impact.
Is this an incorrect understanding?
If this is indeed a correct understanding, then Ping’s “much much greater coverage can be obtained for a far far cheaper cost. I done shown above the search string that will lead to maxiemum coverage. It will always be far cheaper to load up them dump trucks full of IDS forms” will always be the more effective (and until the Inequitable Conduct situation is under control – the much safer) path to take.
I understand the higher level of finesse and professionalism that accompanies a well searched and written application, but it is the client’s call on how much they are willing to spend on preparation, and it is the attorney’s duty to obtain the broadest patent rights at the most efficient cost.
If the “dump truck” method provides greater coverage and lower cost without the IC impact, it seems foolish not to embrace that method.
It seems to me that those who are pushing for the lower preponderance standard are willfully putting blindfolds on to this “unintended“, but very much foreseeable consequence. As Ping points out, this “more exacting because of lower standard” direction will only hamper the Office and the examiners because applicants are not likely to simply surrender the scope of patent protection they now enjoy, and from the reading on the message boards, some of the patent bar will even enjoy making the examiners work harder.
Seeing also that the law requires an actual examination, and that a registration system will need an act of Congress to be established (and we can see how slowly those wheels turn), it seems even more fool hardy to invite the consequence of maintaining patent protection levels by the massive dumping of references. I do not think your comment of “ One would be inclined not to file humongous IDSs where the good was mixed with the bad in a massive undistquish stack.” would apply in the changed circumstances, and quite the contrary, I think it is actually compelling that such dumping necessarily follows the requirement of counsel to be a zealous advocate, given that the patentee’s rights would face a greater downstream threat. This is not to say that more diligent searching and more extensive writing wouldn’t help maintain the rights enjoyed today, but I am saying that that avenue just doesn’t make sense for the cost and IC risks involved. I think my view turns more on real world pragmatism than on some higher philosophy. I don’t think ignoring reality will help the situation.
So if the blue eyed Baby we know is a fact, and real as it gets. Then what should we call this one? The cross eyed Baby. Yah, that’s a good one.
It’s to late for cease and desist. I get the fake(fax) story to the Bar about the mix up on the Boards. And then the real fake fax telling the same story.
That must be the Board that was on the Design Patent. Now tell me why you… and why .. and why?
Ya wanna make it explicit that every single stone be listed and every single stone be looked under?
It’d be nice if the examiners in the worst art units simply started using their brains.
Ping, true. But Cadillac searches are not required. A good search is; but searches of any kind are often not conducted. A penny wise and a pound foolish, as they say.
If the patent could only be invalidated or re-examined on art better than the art of issue in the original examination, getting the best prior art before the examiner and having him comment on it would be the goal of every good patent attorney. One would be inclined not to file humongous IDSs where the good was mixed with the bad in a massive undistquish stack. One would be inclined to focus the IDS on the most relevant art, and perhaps even going so far as to discuss the best art in some detail.
In order to do this, the Feds or the Supremes need to explain clearly that art not actually discussed either by the applicant or by the examiner does not preclude the art from being raised in both a reexamination and in court on a “preponderance” standard — unless the PO demonstrates it is cummulative. The PO should have the burden on the latter issue. At the present, the re-examination requestor has the burden to demonstrate non cummulativeness.
Anywho, I think this makes sense and is practicable.
PS, art of the kind MS has in the i4i case, prior use where the art itself no longer exists, would still be considered unreliable and should require some hightened standard.
dan gurn post eaten.
Ned,
Your thoughts at 11:54 be a painful way forward, for the Office at least.
“…only preponderance with respect to issues not considered, the applicants would try is only the truthful part.
The part about “as hard as possible to get the best art before the examiner.” just won’t happen.
Here are my inciteful (pun intended) observations:
Legally: The Tafas case makes it illegal for the Office to require the applicant to do this work. Ya lookin at a default examination if ya make the applicant evaluate the prior art for any type of “best”. That is the examiner’s job, plain and simple.
Cost: Aint no way clients gonna pay for an in depth search and evaluation (at least those not doin so now) when a much much greater coverage can be obtained for a far far cheaper cost. I done shown above the search string that will lead to maxiemum coverage. It will always be far cheaper to load up them dump trucks full of IDS forms.
The bottom line is that it is the responsibility of the Office to examine applications and that means it is the responsibility of the Office to find every stone (or in the dump truck case – the stones will be dropped on the examiner’s head), and to look under every stone. Ya wanna make it explicit that every single stone be listed and every single stone be looked under? Fine, them examiners are gonna be awful tired.
What sort of a society is it, that denies ordinary justice to all but “the rich”?
A capitalist society.
It’s the rich who force the trials to be that way, of course, and either the judges aren’t vigilant enough to keep them in check or the rules of procedure are themselves too lax.
Dear Ned, you write:
“contested proceedings are better, but only the rich can play that game”
What sort of a society is it, that denies ordinary justice to all but “the rich”?
Stern judging can fix that, you know. It ain’t that way, in other countries. The solution is not to ring fence invalid patents. Two wrongs don’t make a right.
“It’s just a little clogged.”
Musta been that swimming pool of Kool-Aid. Who knew that stuff caused constipation?
Sport O Kings, Ned, Sport O Kings – that be the goal here, dontcha know?
Max, no doubt contested proceedings are better, but only the rich can play that game. We need to allow the impecunious to get patents cheaply and to defer the expenses until he actually can afford them. When he begins to assert his patents, he will be dragged back into the PTO via re-examination, or into court via DJ. Ultimately, there is no free lunch, but the little guy needs a break in the beginning.
A way forward:
If it were clear that a patent could not be invalidated in court over issues already decided by the PTO, and, on the contrary, could be invalidated by a only preponderance with respect to issues not considered, the applicants would try as hard as possible to get the best art before the examiner.
“It’s working pretty well, it’s just a little clogged.”
W
T
F
“The better it works, the more everyone on this board complains about the “reject-reject-reject”-ness of it all.”
contra
“ Quality does not equal rejection.”
W
T
F
Even IANAE’s “prescription” for improving strength of validity is outside of the Office:
I suggested (again) that applicants can do their part to improve the quality of their own patents.
How very astonishing.
Ned: preferrably, the EPO.
Yes, that’s my point. Even when it comes to the things the PTO employs examiners to do, when we have a choice about who to hire we look elsewhere.
Ned: In many cases, the court will hire special master to give the court his opinion on technical issues.
Even better. The judge has his very own technical issues person, and a highly interested party doing a big budget prior art search, so he should be strictly better than the examiner for determining invalidity.
A New Light: Both the courts and the examiner are involved in the same task – setting the legal rights of the applicant.
It’s not quite the same task. The court is also settling (I assume that’s what you meant to type) the legal rights of the defendant. And the court has way more resources of every kind at its disposal, interested parties arguing both sides of the issue, and far more incentive to do an exhaustive job rather than give up simply because no good art has turned up after a few hours.
But I’m glad you noticed how similar the task is. The court is making a determination of invalidity just like the examiner. The court is not reviewing the examiner’s determination, which would be a very different task. Which is what I was trying to explain earlier.
A New Light: Why are we wasting millions upon millions of dollars and suffering a backlog of unbelievable proportions, when we would be perfectly happy in just dismissing the examiner’s very limited filtering anyway?
1. The money isn’t wasted, mostly because it’s the only prior art search applicants ever do prior to issue. Every time an applicant makes a narrowing amendment or abandons an application after a rejection, that patent would have been invalidated in court under a registration system, and also more people would have had to spend money to defend against it because the claims would have been broader.
2. The backlog is because the PTO isn’t “wasting” enough money. The only way out of the backlog is to get more examiners.
3. The courts don’t dismiss the examiner’s filtering. Even without any formal deference (which there is, by the way), it would still be very difficult to invalidate a claim for an issue that was already argued before the examiner, simply because that issue has already been dealt with and the applicant has satisfied both himself and the examiner that it’s not a problem.
A New Light: the filter isn’t working.
It’s working pretty well, it’s just a little clogged. The better it works, the more everyone on this board complains about the “reject-reject-reject”-ness of it all. The only people who want to take out the filter are patentees and their lawyers who want to threaten innocent parties with overly broad claims and extort royalties.
New Light,
Even IANAE’s “prescription” for improving strength of validity is outside of the Office:
“be enhanced by the applicant if he wants to do a search and file a proper IDS.“, thus the elimination of the Office and the examiner role would have no substantial effect on overall quality in the final determination, especially if the courts disregard the examiner’s legal findings.
There is, of course, one major flaw with this thinking: the law – specifically 35 U.S.C. 131 – Examination of application:
“The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.”
It would literally take an act of Congress to change our system.
IANAE,
It is difficult to hold a conversation with you. You dismiss the point I made, and then continue to argue with a logic that confirms that point.
Directly on the point of the examiner versus the judge you say
“(and the administrative branch of the government that applies the law,)
The judiciary applies the law too. The judiciary is pretty much inherently better than the PTO at knowing whether patents are invalid, and the system is set up such that the judiciary gets the final say both in prosecution and in litigation.”
You also say
“A determination of validity involves considering all the prior art before the court, and answering the legal question of whether the patent is invalid under the statute.”
and for an examiner
“A notice of allowance is not a determination of validity, but a determination of the examiner’s inability to find invalidating art in the time he has available.”
This is playing mere word games, because the examiner’s work is in fact just as much a determination of validity as the determination made by the courts. Both the courts and the examiner are involved in the same task – setting the legal rights of the applicant.
You also acknowledge the point that you dismissed by saying
“[Congress’s presumption of validity] does nothing more than relieve the patentee of the burden of proving his patent is valid. Which would be logically impossible anyway.”
Why would a registration system not make better sense? You do not answer this and point out that registration would not be a filter. I never said that registration would be a filter, though, so you are answering a question that wasn’t asked and not answering a question that was asked.
You indicate that the Office is coarse-ish filter and provides the benefits of:
The examination system gives the patentee a chance to fix the problems in his application, so that he gets a stronger patent issued. It also gives the public narrower issued claims, so they can more freely practice the prior art without fear of being sued for infringement”
I don’t think that these benefits are worth the cost, do you? After all, even giving these supposed benefits, these very same points are attacked in litigation regardless and per your arguments, the court should ignore the examiners findings anyway because as you point out:
Litigators have more time per application than examiners. It’s only natural that they would do a better job of finding relevant art.
The possible invalidity of the patent despite PTO approval is always a risk the patentee faces, no matter the standard of proof. If he litigates, he will always have to pay to defend his patent from the challenge. It’s an unavoidable business risk. If this guy can’t handle a business risk, he shouldn’t be in business.
Even the prior art before the judge is more comprehensive than what the examiner had. Any clever rejection ideas the examiner might have had pale in comparison to defense counsel’s arguments. There’s no way the examiner can make up for his lack of qualifications to decide a question of law.
The only real judgment exercised by the examiner is in filtering his search results so he can find something relevant in the short time he has to examine the case, and I’m perfectly happy with overriding that judgment on the basis that someone else has more time.
Why are we wasting millions upon millions of dollars and suffering a backlog of unbelievable proportions, when we would be perfectly happy in just dismissing the examiner’s very limited filtering anyway? You indicate that the Office performs a coarse-ish filter, but then ignore the conclusion that runs from the rest of the arguments here: the filter isn’t working. We have a literal mountain of untouched applications and the applicants are choking on all avenues of redress from examinations that at most are poorly done because of such limited time and evidence constraints.
Why bother with the charade?
This is what you do to lower the IDS’s. It’s easy. Charge a certain amount for each IDS. The lawyer lets the applicant know what’s up, new rules etc., how to best overcome a fine. And if the Examiner comes up with.. say 3 or more that should have been listed.. SLAP.. SLAP. 300.00 for the extra work on the Examiner. That oughta make it a Job for the applicant the lawyer and the Examiner.
The old maxim “Set a thief to catch a thief” has legs in it yet. How else do you catch hackers? How else do you catch tax evaders? How else do you catch innovative pharma, successfully bamboozling (with mountains of data) an over-worked and under-resourced PTO Examiner? Obviousness for them is no lottery, just a very time-consuming comparison of one mountain of data against another, adduced by equally well-resourced adversaries. Any competent court gets to the same answer, in the end.
Oh come on Ned. If ever there was an expert at pulling the wool, it is innovative pharma. Lift your eyes and look around. A mere PTO exr has a snowball’s chance of catching out pharma at that game. To do that, you need to set a generics boy on to the job of exposing the tricks the inno boys play. The judge is intelligent enough to refereee a fight between equals. Pre-issue, the PTO gets eaten for breakfast. Inter partes, obviousness can get done, for the first time, satisfactorily.
It is different in the predictable arts. Of course.
Opinion? Maybe. But prior art — I ask for a validity search from a patent office, preferrably, the EPO.
As for the judge understanding technology, you seem to exist in a wonderland of infinite possibilities. In many cases, the court will hire special master to give the court his opinion on technical issues.
“Incidentally, when you want a reliable opinion on the validity of a patent, do you ask an examiner or an attorney?”
Um, isn’t it illegal for an examiner to give a legal opinion such as that?
The judge is better than the examiner in making the call?
Really?
Yes, really. All of the examiner’s technical competence (such as it is) can be supplied to the judge via testimony, argument, and documentary evidence. Even the prior art before the judge is more comprehensive than what the examiner had. Any clever rejection ideas the examiner might have had pale in comparison to defense counsel’s arguments. There’s no way the examiner can make up for his lack of qualifications to decide a question of law.
Incidentally, when you want a reliable opinion on the validity of a patent, do you ask an examiner or an attorney?
“by the applicant if he wants to do a search and file a proper IDS”
“…a proper IDS”
LOL
No wait,
LOL LOL LOL
LOLOLOLOLOLOLOLOLOLOLOLOLOLOL.
IANAE, you are ki ller today, my man.
“they would argue that the standard of proof would shift depending on the status of the patent owner.”
Iza (za za za) seem to recall a . l o n g discussion on what the law actually says in regards to how patent rights be applied in consideration of just who owns the property, but I don’t think I faved that page.
“Even the examiner’s claim construction is relatively objective.”
LOL
No wait,
LOL LOL LOL
LOLOLOLOLOLOLOLOLOLOLOLOLOLOL.
Seriously, IANAE, you crack me up with your zingers.
IANAE: Obviousness is not a judgment call, unless the judgment is that of a person skilled in the art. It’s a question of law, based on the facts in the prior art and a proper claim construction. Even the examiner’s claim construction is relatively objective. Besides which, why would anyone in the world be more qualified to resolve a question of law than a judge?
The judge is better than the examiner in making the call?
Really?
I beg to differ.
You must be joking Ned? Is that in the Constitution? You can force a person into bankruptcy if that makes it easier to just take it from them? Even after they have been told it will be bought from them by the Law firm that did the application?
Ned: I think the real problem about second-guessing the patent office occurs primarily with the issue of whether the invention is an obvious advance over the prior art. This is always a crapshoot at best, and we really ought to have some certainty and reliability in a patent.
On the other hand, if it’s a crapshoot at best, why would the examiner’s essentially random decision deserve any deference? If the validity of the patent is fundamentally uncertain, why make it certain as a matter of law?
But I don’t think obviousness is really a crapshoot. There’s a methodology for analyzing it, and all the features of the claim need to be found in the art with a reason to put them together. I definitely think it’s a determination a judge can reasonably make, especially when both sides of the issue are being argued before him.
Obviousness is not a judgment call, unless the judgment is that of a person skilled in the art. It’s a question of law, based on the facts in the prior art and a proper claim construction. Even the examiner’s claim construction is relatively objective. Besides which, why would anyone in the world be more qualified to resolve a question of law than a judge?
The only real judgment exercised by the examiner is in filtering his search results so he can find something relevant in the short time he has to examine the case, and I’m perfectly happy with overriding that judgment on the basis that someone else has more time.
If you really want strong patents, they’re available. Do your own search, read the prior art, draft around that art, and let the examiner see that art for good measure. Your patent will withstand invalidity challenges for the best reason of all – because it’s valid.
Ned: the consideration of just how reliable a patent must be to incent investment and risk-taking.
You want certainty to incent risk-taking? That’s ridiculous. Risk-taking isn’t based on certainty, it’s based on taking smart risks. Anybody can do their own analysis of a patent and assess the risk of investing in it, no matter what evidentiary standard applies. People do just that, in fact, and they separate the strong patents from the weak ones. On what basis, do you think? Do the strong ones have a higher standard of proof for invalidity, or are they better investments because they are better quality patents?
I think the real problem about second-guessing the patent office occurs primarily with the issue of whether the invention is an obvious advance over the prior art. This is always a crapshoot at best, and we really ought to have some certainty and reliability in a patent. This argues to me that at least on the issue of obviousness, the courts should not be able to overturn the patent unless they are convinced the examiner made a mistake – the assumption here being that we are considering only the “same” evidence as that considered by the examiner.
The same considerations do not apply if the issue is anticipation. If the prior art is a reliable publication and if the claims read on that prior art, I think that the “clear and convincing standard” is automatically met.
Thus it is only where the judgment of the examiner is at issue should we give deference to his opinion.
Whether we need a heightened standard of proof for more pertinent evidence not considered by the patent office is somewhat of a separate and distinct issue; and it involves the consideration of just how reliable a patent must be to incent investment and risk-taking. Here, the likes of Lemley would argue that when a nonpracticing entity is asserting a patent, the considerations of “reliability” do not exist. I assume they would argue that the standard of proof would shift depending on the status of the patent owner. This would be almost as it is in some countries where one must work a patent or else the state may compulsorily licensed it.
I think we see where Lemley in his crew are headed.
You’ve already been asked to cease and desist. I’m adding my voice to the chorus.”
Aint no chorus like my chorus.
How many times have you Maxie been asked to cease and desist?
And still here you are.
Go figure Sunshine.
That way I get plenty of ongoing innovation together with cheap drugs off patent, paying through the nose only when the pharmaceutical is new and not obvious.
That’s what I always figured we all expected from the patent system generally. Lots of innovation, and patents reward only the novel and non-obvious stuff.
I wasn’t talking about pharma in particular, but it’s relevant to Ned’s point that the patentee needs to be certain of his protection. Generic pharma makes stacks of cash, which suggests to me that drugs are quite profitable even in a competitive free market environment when they’re not protected by a patent. Therefore, even if an innovator loses its patent, it still has a ready source of profit (less profit, but still) as a result of all its investment.
Besides, pharmaceutical research has always been somewhat of a die roll. These companies know in advance that they’re going to spend money on hundreds or thousands of compounds, and only a small number of those will ultimately turn a profit. They won’t be run out of business if one more drug succeeds or fails, and anyway they price their patented drugs accordingly to turn an overall profit. That’s part of the bargain. They only get to profit from the patentable ones, but the patentable ones earn enough to pay for the others. They were never supposed to profit from the unpatentable ones in the first place.
Ned writes:
“after the opposition period has ended, the patent owner needs to be assured that his investment is protected. The more protection, the greater the investments.”
and IANAE refers to innovative pharma.
I’m a consumer of pharma products both on-patent and off. I think I want a patent system where innovative pharma slugs it out with the generics boys, in the courts, and the best man wins, on a preponderance basis. That way I get plenty of ongoing innovation together with cheap drugs off patent, paying through the nose only when the pharmaceutical is new and not obvious.
And as for any other industry sector, your argument is even weaker, because there the “investment” is paltry, compared with that in innovative pharma.
the patent owner needs to be assured that his investment is protected.
That’s a great argument for freedom to operate opinions, but a less great one for patents. The patent is not what gives the patentee the right to sell his product, if he even has that right at all. The patent only gives him the right to charge more for it. Invalidating his patent won’t put him out of business, and whatever money he invested in his business can continue doing what it’s been doing.
The possible invalidity of the patent despite PTO approval is always a risk the patentee faces, no matter the standard of proof. If he litigates, he will always have to pay to defend his patent from the challenge. It’s an unavoidable business risk. If this guy can’t handle a business risk, he shouldn’t be in business.
The reliability of the patent should be backed up by competent examination that uncovers the best art, and can be enhanced by the applicant if he wants to do a search and file a proper IDS. Our focus should be on making the valid patents stronger, not protecting the invalid ones from the fate they deserve.
This affectation of yours, ping, is embarrassing, even in a blog forum for patent attorneys.
Max, might I introduce you to an alternative definition of “patent troll”?
And seriously, if sarah can get access to a computer wherever she’s locked up, I don’t see why Iza can’t post for herself if she’s got something to say to me.
Max and IANAE, there is a good reason why oppositions are conducted with a preponderance of evidence standard and why proceedings to revoke the patent later in court may require a heightened standard. The purpose of the patent is to incent investment in the development of new products. Immediately after grant, there should be no substantial reliance interest by the patent owner, particularly if he knows that there will be in opposition. However, after the opposition period has ended, the patent owner needs to be assured that his investment is protected. The more protection, the greater the investments.
The fundamentals of the above are illustrated in the opening post above where Supreme Court recognized the reliability of the patent is important to incent investment. However, even here in United States we constantly hear from the pharmaceutical industry just how important it is to have a reliable patent to protect and justify the substantial sums it takes to bring a new drug to market.
Who is “Iza” and how can parts of a statute “want” a word with IANAE? This affectation of yours, ping, is embarrassing, even in a blog forum for patent attorneys. You’ve already been asked to cease and desist. I’m adding my voice to the chorus.
“A notice of allowance is not a determination of validity”
IANAE, Iza thinks 35 U.S.C. 151, 154 and 282 might want a word with you. Where do you think the legal effect comes from?
First laugh of the day. Thanks IANAE.
Tea parties in England? Well, the UK now has a Government of a coalition of two political parties. More or less unprecedented in peacetime. But it is a coalition of the same political complexion that governs in Germany at the moment. Quite how you manage where every coalition member sits in the English Lower House, with seating arranged, centuries ago, for full adversarial proceedings between Her Majesty’s Government and Her Majesty’s Loyal Opposition, I don’t know.
Or are you with me, that “commercial success” is a poor way to decide, objectively, what was or was not obvious to the PHOSITA back at the date of conception (or whatever date you use over there).
I’m very much with you there. Haven’t we had that discussion already? Commercial success is only an indication of non-obviousness if the commercial success itself was predictable (i.e., people would have taken any obvious path to the money) but nobody could figure out a technical way to design a product to realize that success. And if that’s the case, you probably have an objectively non-obvious technical feature to claim.
Also, for what it’s worth, the PTO will consider evidence of secondary considerations, and it also gives you plenty of time to accumulate some commercial success prior to mailing the first action.
IANAE writes:
“See, I figure that once the examiner has prior art search results in front of him anyway, he might as well make obviousness rejections alongside the novelty ones. Give the applicant a chance to fix any obviousness issues by amendment rather than during the day in court that would otherwise leave him no less impecunious.”
with which the EPO would concur, but what about all the “secondary indications crowd” who say the subject matter is not obvious because it has enjoyed “commercial success”. They get knocked out before they even get going. Your system is unfair to them, no? Or are you with me, that “commercial success” is a poor way to decide, objectively, what was or was not obvious to the PHOSITA back at the date of conception (or whatever date you use over there).
New: I just think it would be nice if the court jurisprudence on obviousness could be applied in toto to pre-issue examination. Look how the courts of Europe are gradually adopting, in post-issue trials of validity, the same “Problem and Solution Approach” used in hundreds of apps, every day at the EPO. Major problem up till now though, the national patent litigation communities all over Europe have simply not understood EPO-PSA. That’s changing though.
Even though you say that the question is not whether the examiner did his job properly, it is exactly that question that is being asked.
It’s not. It might turn out to have the same answer, but it’s a completely different question.
A review of the examiner’s decision involves considering the examiner’s decision and his reasons, and deciding whether he was right or wrong.
A determination of validity involves considering all the prior art before the court, and answering the legal question of whether the patent is invalid under the statute.
Yes, if it turns out the invalidating prior art was considered by the examiner, the court’s question will incidentally also suggest that the examiner didn’t do his job properly. But it’s entirely possible that the examiner did do his job properly, and the claim is still invalid.
I have to ask of you, just what is the examiner’s job, if but not to determine whether the application should be a patent, and thus whether the patent so granted is valid?
The examiner’s job, as many people here will tell you, is to grant a patent unless he manages to find a valid legal reason to reject the claims. A notice of allowance is not a determination of validity, but a determination of the examiner’s inability to find invalidating art in the time he has available.
Litigators have more time per application than examiners. It’s only natural that they would do a better job of finding relevant art.
It is unsettling to me to be so dismissive of both the legislative branch of the government which wrote the law
It’s funny, but the legislative branch didn’t provide for any deference to the PTO at all when it wrote the law. All it provided was a presumption of validity, which on its face does nothing more than relieve the patentee of the burden of proving his patent is valid. Which would be logically impossible anyway.
It’s not dismissive of the legislative branch to have the law applied as it’s written. The entire power of the legislative branch lies in its ability to change laws that didn’t turn out the way it wanted. If the statute explicitly provided for deference, we wouldn’t even be having this conversation.
and the administrative branch of the government that applies the law,
The judiciary applies the law too. The judiciary is pretty much inherently better than the PTO at knowing whether patents are invalid, and the system is set up such that the judiciary gets the final say both in prosecution and in litigation.
When the administrative branch applies the law, it has to get it right. If it doesn’t, that’s what the judiciary is for.
If you diminish the patent office to a coarse-ish filter, a registration system would make much more sense, wouldn’t it?
Well, no. That wouldn’t be a filter at all. The examination system gives the patentee a chance to fix the problems in his application, so that he gets a stronger patent issued. It also gives the public narrower issued claims, so they can more freely practice the prior art without fear of being sued for infringement.
I guess Max is right. Americans have no concept of middle ground. I’m sure the tea parties are much more relaxing in England.
IANAE,
See, this is exactly what I find troubling.
“The question before the court is not whether the examiner did his job properly or whether the court disagrees with the examiner. It’s a question of whether, all things considered, the patent is invalid or not.”
Even though you say that the question is not whether the examiner did his job properly, it is exactly that question that is being asked.
I have to ask of you, just what is the examiner’s job, if but not to determine whether the application should be a patent, and thus whether the patent so granted is valid?
All the word games aside, I think that your view of the patent office being only a coarse-ish filter belies the actual legal effect of the patent statute. It is unsettling to me to be so dismissive of both the legislative branch of the government which wrote the law and the administrative branch of the government that applies the law, and be so dependent on the single branch of the judiciary that interprets the law. If we are only going to give the administrative body’s determiniation a preponderence effect, why bother? That same level can be mandated with a simple registration system and we thus eliminate the nearly 90% of the cost of the patent system, or whatever large percentage of patents that are never litigated. The Office can be staffed by a handful of librarians that catalouge the public knowledge and offer reseaarch assistance to the interested parties of a matter in actual litigation. If you diminish the patent office to a coarse-ish filter, a registration system would make much more sense, wouldn’t it?
Max: It was thought, back then, that to examine 500 apps for obviousness, for the sake of one litigated patent, was not a sensible way to manage precious resources, and to guarantee to impecunious applicants their “day in court”.
See, I figure that once the examiner has prior art search results in front of him anyway, he might as well make obviousness rejections alongside the novelty ones. Give the applicant a chance to fix any obviousness issues by amendment rather than during the day in court that would otherwise leave him no less impecunious.
Besides, if you grant patents without examining them for obviousness, you wind up granting far more patents of far broader scope, which might lead to more than 1 in 500 getting litigated. What of the impecunious businessman who is thereby guaranteed someone else’s day in court?
People, the choice is not just between “total deference” and “registration only”. Intermediates are entirely feasible. Up until 1978, the UK had a very nice system of strictly examining clarity and novelty before grant, but not obviousness. The pre-issue filter was pretty powerful but everybody knew that, if it came to litigation post-issue, obviousness would usually be decisive to the outcome. It was thought, back then, that to examine 500 apps for obviousness, for the sake of one litigated patent, was not a sensible way to manage precious resources, and to guarantee to impecunious applicants their “day in court”.
Then the EPO came along, with its swift and brutal obviousness examination, pre-issue. As a prosecutor, I’m not complaining. More interesting work for me, every day.
Ned: But, if the identical issue is raised in court, the question is whether the court (or the jury) should be able to simply hold the patent invalid if they disagree with the examiner.
Let’s try looking at this from a different perspective.
The big difference between inter partes litigation and an appeal from a rejection or a re-exam is that litigation is not a review of the examiner’s decision. The question before the court is not whether the examiner did his job properly or whether the court disagrees with the examiner. It’s a question of whether, all things considered, the patent is invalid or not.
When it comes down to it, the defendant doesn’t care what the examiner said. Neither does the patentee, really. The question properly before the court is whether or not the plaintiff has a valid right to assert.
If the patent is challenged on the same basis as a previous PTO rejection, let the patentee stand by whatever he did to overcome that previous rejection. If he fixed the problem years ago, he should have nothing to fear.
A New Light: If we do not trust the examiners to get anything right, why do we have them in the first place?
Same reason we have trial courts. We do trust them to get things right by and large, but when they get it wrong the system gives us a way to have their decision reviewed. Okay, bad example. The Federal Circuit doesn’t actually trust the District Courts to get anything right. But still.
We do still need patents to be examined, as a coarse-ish filter to weed out the ones that are informal or invalidated by a quick (but expert) search. But when you go to court, you really should only win if your patent is actually valid, not merely because an examiner in a hurry couldn’t find good enough art. Validity is a question of law, and the courts owe no deference to anybody on questions of law.
New Light, good question. Yes, the USA cherishes its entrepreneurial spirit more than Europe. Yes, big industry steamrollers in Europe as in the USA. I think that entrepreneurs in the USA succeed despite the local legal landscape. The little guy wins easily and cheaply at the EPO, as little American guys would find out if the USA were to accede to the European Patent Convention (joke). The little guy with a patent that is robust against validity attacks wins easily and cheaply in infringement courts in Europe, but only when he gets off the mark the moment infringement is sniffed. If he doesn’t come running immediately to the courts, why should the courts rush to help him, it is thought.
Now I think I understand why my posts were eaten.
Ned,
Thanks for the answer.
Perhaps it is me, but I still find this matter not fulfilling. If the case law changes, then any reference not explicitly used can serve – with the changed case law – as a point of new light. Of the admittedly small number of cases that I have seen, the most references explicitly cited and discussed on any patent is no more than ten references. By explicit, I mean that the examiner has actually discussed in relation to granting patentability. Listing as checked on an IDS (to me) is not an explicitly mentioned and discussed reference.
Also, references are usually not cited to every different element of the law that has to be met. For example, I have never seen a patent prosecution history that explicitly states that the application is rejected under 103(a) for reference A in view of reference B, but that the application passes all of 112 in view of references A and B. That level of explicit detail just isn’t found. Are we moving to a place in patent law history where the prosecution history will need to detail the explicit affirmative recognition that the application passes every element of law over each and every reference?
Lastly, I am troubled by the arguments being presented here. It appears that even the examiner’s analysis of explicit references are being doubted and should not stand for anything in a later court setting. If we do not trust the examiners to get anything right, why do we have them in the first place? It seems that what people want is a pure registration system with only those patents being contested being subjected to a review during the litigation cycle – the Office serving more as a referee between the two adversarial parties. The problem I see with that is the inherent inability of the small business to bring legal diligence against the massive patent efforts of the well heeled entrenched large businesses while those same large businesses can grind out the small ones. The big will get bigger at the expense of the small. Isn’t this a problem currently in Europe? Isn’t there a lack of the small entrepreneurial spirit because of this philosophy? It seems that this quashing has more to do with the “harmony” there than would be acceptable to the US, which I believe still prides itself on this difference.
So Ned, if I read ping right, examination at the USPTO is already “a joke” (but with the potential to get even more jokey). If the PTO Examiners would only “do their job” though, all would be well, right?
ping, you are right about the chuckles. Keep em coming, please.
“In actuality, Applicants will start submitting massive IDSs of cumulative art found in 5 minute keyword searches” (not sure that the patents are truly cumulative – each has to have something non-cumulative in order for it to achieve patent hood, no?)
Search = “US Class” or “Key Word”
Result = max IDS
Result to Office = Examination will become even more of a joke. If you think ya got whining now about not enough time, wait till it takes 2 outa the 10 hours to just read the IDS sheets thata be coming in.
If ya make it so that the patent is good only for the explicit stones looked under, then it only be obvious that no stone will be left unturned.
It aint gonna be the applicant that has to lift those stones.
If I understand you Ned, there is not much between us then, is there?
I imagine over a beer or two we could have a stimulating evening debating “fact”, “issue” and “better”, and then I’ll tell you about how ordinary EPO Examiners behave i) pre-issue and ii) post issue, when they are adjudicating in full-blown adversarial inter partes EPO opposition proceedings. In the course of those opposition proceedings, for the first time, they can assess the validity of the particular claimed subject matter in relation to its relevant and unexpurgated technical background context. For the first time, they have to take into account everything put forward by a party defending the validity of that claim and, equally seriously, everything put forward by the party who is arguing that the claim embraces something that is obvious. Generally speaking, they do a very good job. Ask them how confident they are, that the claim they issue is valid. As them how confident they are, that the claim that survives the opposition process is valid. Ask them whether preponderance or C+C is the standard that is proper, for opposition proceedings at the EPO where, by the way, the Opponent carries the burden of proof.
If my first patent ppplication was on his desk. And it shows he also worked my second. Then was he on the Design Patent too, that I know nothing about.
And if I am being led to believe the Design Patent didn’t list my first two as prior art, then that is just unbelievable. As I can and will show.
Max, assuredly if the examiner made a mistake the public will find art that is better than the art considered by the patent office, particularly of the public use variety, or raise issues not of issue in the patent office such as those discussed in the recent contact lens case you cited to us in another thread.
But, if the identical issue is raised in court, the question is whether the court (or the jury) should be able to simply hold the patent invalid if they disagree with the examiner. I think the Supreme Court has already held in the variety of cases in United States that one cannot overturn the patent office with respect to an issue it is already determined unless the error is clear and one is convinced of the error beyond a substantial doubt.
Indeed, the prospect theory noted in this thread by Dennis Crouch would argue that patents in general should be respected and not overturned with respect to issues already considered by the granting authority. While mistakes can be made, in the ordinary case, the decision on patentability issues is simply a matter of judgment. If this is the case, no legal error has been committed and the patent office decision should be respected.
New light, it has to present a new issue. To raise a new issue, a reference has to be more pertinent than a reference considered by the patent office before. If the reference is an old reference, it has to raise an issue not considered before, i.e. the reference must teach a limitation not of issue before. If the reference has been previously cited to show a particular limitation, or combination of limitations, or some teaching, using the same reference again for the same purpose would ordinarily not raise a new issue unless it is combined with other references not considered before so that as a whole new issues are raised.
Unless new limitations are involved, or unless new teachings are involved, a reference cannot legally raises a substantial new question of patentability even if the the case law changes.
In his last para:
“I can imagine the Federal Circuit coming to the exact same result the second time around, unless the defendant comes up with some very clever new arguments. Actually, I can imagine the defendant not bothering in the first place for that very reason.”
IANAE encapsulates for me how a patent system ought to function. The PTO does a quality job, on all the prior art known to Applicant. The patent issues, with a presumption of validity. The patent can be asserted, quickly and cheaply, with injunctive relief (of course). Folks fear issued patents.
When validity is challenged, courts are sceptical, and require something special, before interfering with the judgment of that little man at the PTO who allowed the application through.
The DC Decision has a presumption of validity. Reversal rates are low so (as in England) only a minority of decisions in the first instance court go to the appeal court. Thus, justice is swift. Swift justice is good justice.
But mistakes happen. Examiners are only human. Some validity issues can only be resolved in inter partes proceedings (there are two sides to every story). To preserve public respect for the patent system, bad patents must not be allowed to intimidate job-creating industry and the law ought not to encourage venal owners of bad patents to acts of blackmail.
It is difficult for me to grasp this mindset, that the best thing for the public is to assume that every single Examiner at the PTO is always right.
You are contending the courts can second guest the PTO where the evidence is the same or equivalent to that considered by the PTO on a matter committed to the discretionary judgment of the agency.
You say that like it’s an objectively horrible thing. I think the most important thing is to get the validity determination right. If it takes two tries, it takes two tries.
I can understand why you might disagree with that, but to my mind the certainty of valid patent rights (that are going to get challenged anyway, and should still stand up on a balance of probabilities) doesn’t outweigh the increased chance of upholding the invalid ones. We owe it to the public not to grant patents on the prior art. That’s why the PTO exists, and I’d rather use the courts to double-check that they’ve got it right than circle the wagons around their mistakes.
I’m not interested in debating or comparing why the PTO got it wrong in the first place vs. why we currently think they’re invalid. There’s no reason to let the owners of bad patents win in court.
Can you imagine for example the Federal Circuit receiving on appeal a case from the District Court holding invalid a patent on the very same evidence it previously considered in authorizing the patent to be issued in the first place on an appeal from the patent office?
I can imagine the Federal Circuit coming to the exact same result the second time around, unless the defendant comes up with some very clever new arguments. Actually, I can imagine the defendant not bothering in the first place for that very reason.