The Patent Reform Act of 2011 (S. 23) was introduced on January 25, 2011 by Senator Leahy (D-VT) who was joined by eight co-sponsors (all from the Judiciary Committee) that include Senators Coons (D-DE), Franken (D-MN), Grassley (R-IA), Hatch (R-UT), Klobuchar (D-MN), Kyl (R-AZ), Lieberman (I-CT), and Sessions (R-AL). The bill was referred to the Senate Judiciary Committee which unanimously approved the bill. The House of Representatives will likely move more slowly. Although House Judiciary Committee chair Rep. Smith (R-TX) co-sponsored the similar Patent Reform Act of 2009, Rep. Issa (R-CA) is the “patent expert of Congress” and has only tentatively supported the reform bills in the past. [UPDATE – Most Recent Version of S. 23 2/11/11]
First-Inventor-to-File: The reform measure would move the US further toward a first-to-file system. Each patent application would be given an “effective filing date,” and the patentability will be judged on whether any prior art was available prior to the filing date. One-year grace period would remain in effect, but only for the inventor’s own disclosures (and disclosures derived from the inventor). Obviousness will also be judged as of the effective filing date. Inventors will no longer be able to swear behind prior art nor will they be able to establish priority in an interference proceeding. A new creation in the bill is a “derivation proceeding” that would operate only in times where an original inventor alleges that a patent applicant derived the invention from the original inventor’s work.
Damages: Patent defendants have argued that courts often treat damages issues as afterthoughts with little procedural control. The proposed amendment would add specific procedures and checks on how a judge manages the damages portion of a case. The amended statute would require that a court “identify methodologies and factors that are relevant to the determination of damages” and that “only those methodologies and factors” be considered when determining the damage award. In addition, prior to the introduction of damages evidence, the court would be required to consider either party’s contentions that the others damage case lacks a legally sufficient evidentiary base. In addition, the statute would require a judge to bifurcate the damages portion of a trial if requested “absent good cause to reject the request, such as the absence of issues of significant damages or infringement and validity.” Oddly, the proposed statute seemingly bars a judge from amending the discovery schedule or any “other matters” based upon the trial sequencing.
Enhanced Damages: Although we often discuss enhanced damages for willful infringement, the current Patent Act is not explicitly limited to situations involving willful infringement. Rather, Section 284 simply states that “the court may increase the damages up to three times the amount found or assessed.” Over the years, Federal Circuit precedent has limited the statute to only situations where the infringer’s actions were at least objectively reckless. The amended statute would codify that holding with the words “Infringement is not willful unless the claimant proves by clear and convincing evidence that the accused infringer’s conduct with respect to the patent was objectively reckless. [I.e., that] the infringer was acting despite an objectively high likelihood that his actions constituted infringement of a valid patent, and this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.” The statute also makes clear that accusations of willful infringement must be pled with particularity (following FRCP 9(b)); that proof of knowledge of patent is insufficient to establish willful infringement; that a pre-lawsuit notice of infringement cannot itself establish willfulness unless the notification is fact specific in explaining the infringement; that the failure to obtain the advice of counsel (or to present that advice to the jury) “may not be used” to prove willull infringement or inducement of infringement; and that damages subject to trebling are only those accrued after the infringement became willful; and that in a “close case” there will be no willful infringement (here, the statute requires a judge to “explain its decision” and to make a decision prior to the issue being tried by the jury).
Third-Party Challenges to Patent Rights: The bill includes three expanded ways that a third party can use the USPTO to challenge a patent: Pre-Issuance Third-Party Submissions; Third-Party Requested Post-Grant Review; and Inter Partes Post Grant Review.
Pre-Issuance Third-Party Submissions: Under the amendment, third parties would be allowed to submit any printed publication along with a description of the relevance to the USPTO to be considered during the examination of a pending patent application.
Third-Party Requested Post Grant Review: A post grant review proceeding would be created (similar to our current reexamination proceeding) that could be initiated by any party. The review would allow a third party to present essentially any legal challenge to the validity of at least one clam. A major limitation on the post grant review is the request for review must be filed within nine-months of issuance.
Inter Partes Review Proceedings: Once the nine-month window for post grant review is expired, a party may then file for “inter partes review.” This new system would replace inter partes reexamination and would be limited to consideration of novelty & obviousness issues based on prior art patents and printed publications. (It appears that third-party requested ex parte reexamination would remain a viable option as well).
False Marking: A large number of false patent marking cases have been filed in the past year. The bill would eliminate those lawsuits except for ones filed by the US government or filed by a competitor who can prove competitive injury.
Oath: The bill would make it easier for a corporation to file a substitute inventor’s oath when the inventor is non-cooperative.
Best Mode: Although an inventor will still be required to “set forth” the best mode for accomplishing the invention, the statute would be amended to exclude failure of disclose a best mode from being used as a basis for invalidating an issued patent. The PTO will still have a duty to only issue patents where the best mode requirement has been satisfied.
Fee Setting Authority: The PTO would be given authority to adjust its fees, but only in a way that “in the aggregate” recover the estimated costs of PTO activities. Along this line, a new “micro” entity would be created that would have additional fee reductions.
The above brought to you by Mikey’s newly invented concept – the leasing organization.
The U S Patent department in Washington DC are the contemptible short of the Congress. I have filed many patents and recieved some. One which became a big joke, There is no such thing as a variable orface. we still laugh about that. but the one we don’t laugh is when they allowed John Deere to move one of my patents, manufacture it there and import it when I contacted the United States Commerce Department, We will not intervean as that would cause an International Crisis to shud down German Plants and you will not proceed with any lawsuits in this regard, Several lawyers informed me that 3 M $ would be required to persue this case, over out
Wow Sam, tell us how you really feel.
Sunshine Malcolm, does this qualify for answering your question about particulars?
Hiring QUALIFIED examiners would make me happy. Dealing with the examiner Sharon Polk was a total nightmare. With my power cable patent (6559556) she could not understand how a plug and receptacle differed. She kept saying “they’re the same thing”.
I actually took a trip to the patent office and sat at her desk and asked her if she needed a lesson in “The “Birds and the Bees” to help her understand the difference between plugs and receptacles.
I ended up sitting with her supervisor- Brian Sircus who was VERY helpful. He told me that she was incompetent but there was nothing he could do about it. Demographics, it seems, drives hiring at USPTO not Competence.
Happy ending though- my patent was granted, then licensed to a government contractor and ultimately sold to them. I imagine Sharon is still clueless and tormenting people more innovative than herself.
The chuckle wagons are returning. But it be bitter sweet cause my main man is the source O chuckles here.
IANAE, I love the way you normally wield your pen, but man, when you have a brain frrt, you really stink up the place.
Theres not a single comment of yours that isnt in agreement with Times A Changin, or that ya be feedin the Nazguls with. I knows you like to defend examiners and roust practicioners, but for you to ignore the mountain of RCE’s as anything but due to crrp examination ruins your cred. It be like you think that practicioners magically forgot how to write applications and claims at the exact time the Duffas administration went on its Reject-Reject-Reject binge. The mountain of work mirrors the famous Duffas Cliff allowance curve. And just as magically, as the Office imposed Reject-Reject-Reject mentality is lifted, the allowance rate returns to its historical averages.
Just a little bit too coinky dink.
Sunshine Malcolm, obviously Changing Time aint seen your history O political integrity (what with sex with dead presidents and all). It do bring the chuckles how he put you in your place, though. Even when ya try to get back on point, you actually prove his point – lols.
TimeforChange You clearly miss the point that it is simply not a throw-people-at-the-problem problem.
Look at that backlog and then look closer to see how many items are simply there because applicants felt the first examination through was utterly worthless.
Right — because some applicants (how many? please inform us) thought that their “first examination” was “worthless, there must not be a shortage of Examiners.
Great reasoning.
I wonder if it’s possible that the alleged “worthless examinations” are a result of the fact that Examiners can’t spend as much time examining applications as is needed in many instances.
They couldn’t fill those positions – even in the worst economy in 100 years – because of the system.
Is that you, John McCain?
link to youtube.com
Look at that backlog and then look closer to see how many items are simply there because applicants felt the first examination through was utterly worthless.
Look at how many are there because examiners felt the first set of claims was utterly worthless.
Any application that remains pending after one or two rounds of prosecution will almost certainly be characterized by both the applicant and the examiner thinking the other guy should do a better job. That’s not an indication of whose fault the problem really is.
It’s trivial to keep even the most worthless application pending by filing serial RCEs and possibly new claims from time to time, so the fact that the applicant thinks he deserves a patent is not relevant to anything.
More importantly, look at how many applications in the backlog are there because nobody has had time to get around to them yet. That can only be a manpower problem at the PTO.
That money for the highering program was allowed in the previous budget and it was only money over budget that was skimmed back by Congress.
I’m pretty sure there was no budget for any significant “highering” program. In fact, the PTO very nearly didn’t even have enough money to fund its regular operations, even though it collected more than enough.
Anyway, why should any money be skimmed by Congress? Applicants are paying now for examination that won’t occur for years, and Congress isn’t letting the PTO keep that money long enough to pay for that examination.
If Congress wants money for general purposes, that’s what taxation is for. PTO fees are for examining and granting patents. That’s what we all expect the money to be spent on when we pay those fees. Diverting the money to general purposes while the PTO languishes understaffed and with an archaic infrastructure and our clients can’t get patents when they need them doesn’t inspire public confidence in the patent system.
“What’s more, “more of the same” is exactly what we need. A large backlog is a pretty good indication that we don’t have enough of the same going on right now.”
You clearly miss the point that it is simply not a throw-people-at-the-problem problem.
Look at that backlog and then look closer to see how many items are simply there because applicants felt the first examination through was utterly worthless.
“since Congress takes all the money the PTO would have spent on salaries and overhead for those new examiners. That’s why they want to be able to keep their own revenue.”
Sure they want to keep their revenue, but you are just plain wrong on the take all the money away comment. That money for the highering program was allowed in the previous budget and it was only money over budget that was skimmed back by Congress. They couldn’t fill those positions – even in the worst economy in 100 years – because of the system. Again, this speaks to what needs to be focused on.
Let me know how it goes when you actually know what you are talking about.
You must be absolutely insane with anger and disappointment when you consider what our military has accomplished in Afghanistan.
I bet the GOP would vote the PTO all the money it wanted if it were a branch of the military. Two billion and change isn’t even enough money for the military to consider misplacing.
we are treated to a budget request of $2.71 BILLION in order to have more of the same.
It’s not a “budget request”, it’s funded entirely by PTO user fees.
What’s more, “more of the same” is exactly what we need. A large backlog is a pretty good indication that we don’t have enough of the same going on right now.
Portions of the budget increase are slated for hiring 1,500 new examiners. Unfortunately, a full 1/3 of these are merely slated to hold water and replace attrition.
That still means that if the PTO doesn’t hire a lot of examiners they will lose some to attrition, which won’t make the situation any better.
Every organization has attrition, and has to hire more people to compensate when the customer base is growing. Sure, they should work on reducing attrition, but it’s not going away completely and nobody should expect it to.
Another bullet point indicates that there will be a focus on hiring examiiners with previous intelelctual property experience. We already have a program for that. How is that program working?
Not very well, obviously, since Congress takes all the money the PTO would have spent on salaries and overhead for those new examiners. That’s why they want to be able to keep their own revenue.
Tell you what, go start a business. I’ll take all the money you get from your clients, and then you can try to scale up production by hiring more people. Let me know how it goes.
“when you consider what our military”
Let me check.
Yes, this is still a patent law blog.
When it becomes a politico-military-industrial-complex blog, then I will post on that subject.
Try to stay on topic.
$2.71 BILLION
A drop in the proverbial bucket. You must be absolutely insane with anger and disappointment when you consider what our military has accomplished in Afghanistan.
The definition of insanity has not changed.
From the USPTO at: link to uspto.gov
we are treated to a budget request of $2.71 BILLION in order to have more of the same.
The budget mavens have their wires crossed. Consider that the budget request represents a 16 percent increase “from a projected significant increase in patent and trademark applications.” Only later in the article is it shared that the projected increase comes from a 1.4 percent statutory fee increase and a 15 percent surcharge fee increase.
So this projected significant application increase will actually acount for a negative .4 percent fee generation, since the exact same number of applications cover 16.4 percent of the 16.0 percent fee change. I suppose the same people responisble for defining “quality” at the Office during the Dudas administration have now moved to the budget department and have defined “significant application increase”.
Talk about your serious spin.
Further, the bullet points are equally laughable. Portions of the budget increase are slated for hiring 1,500 new examiners. Unfortunately, a full 1/3 of these are merely slated to hold water and replace attrition. Of the remaining 1,000 new examiners, a whopping 300 are slated for the Track 1 program. I wonder how many of the remaining 700 will be in Detroit?
Another bullet point indicates that there will be a focus on hiring examiiners with previous intelelctual property experience. We already have a program for that. How is that program working? Last numbers I saw indicated that the program was actually in the negative – experienced examiners are being lost at a faster pace than being hired.
Without a fundamental paradigm shift, there will be no recovery.
Michel The story is told that thousands of foreign engineers sit, not in labs doing research, but rather at computer screens reading U.S. patent applications that disclose new technology.
Who cares? It’s not illegal and even if the patents were granted the moment they were published the foreign engineers could still do just that.
pat. lit., like what? Is there anything in the bill that moves us in the right direction? Every “reform” seems more in the nature of undermining our patent system.
If we could simply start with a glaring “need,” perhaps we all could agree on some corrective legislation. But, ’til now, the proponents of reform have failed to state any case. They simply state that reform is needed, but do not state why. They do not identify a serious problem that needs a solution.
In the final analysis, what they seek is to rig the system to the benefit of the few, particularly foreign multinationals, and where deep pockets dominate. Given that almost all new jobs and all new industries in America come from start ups, the so-called patent reform legislation is anything but.
Michel If patents were to suffer under a cloud of possible invalidation for years on end, how could their value not diminish?”
How has patent value diminished, Michel? Over what time period? Numbers, please.
Michel Unacceptable delay: “the causes of [the engine of innovation’s] decline. I conclude that in a single word, the primary cause is DELAY”
Horseshxt. Michel’s been spending too much time hanging around the softie wofties and the trolls.
Although this latest effort at patent reform may, like its predecessors, be doomed, the good news is that IP issues appear to be headed on an upswing under the Obama administration. Leahy’s legislation may be too big not to fail, but the recent increased attention to patent reform will likely yield at least one or two bills that are small enough to succeed.
Gene Quinn covers this story in more detail at:
link to ipwatchdog.com
The four top points worth mentioning regarding Judge Michel’s testimony:
Unbiased: “Of course, unlike most witnesses, I represent no coalition, company, industry, technology, trade group, or economic interest. I speak only for myself with a focus on what, in my judgment and from my experience, is in the best interest of the nation, of all companies, industries and technologies”
Unacceptable delay: “the causes of [the engine of innovation’s] decline. I conclude that in a single word, the primary cause is DELAY”
Corruption of the Quid Pro Quo: “Remember too that by law most applications must be published on the internet 18 months after filing. So given current delays, the invention is made public long before it is protected. It can be used without permission — and often without consequences — for all the months and years between 18 months and the eventual issue date. Although once granted, patents are a form of private property, until granted the inventor obtains no rights. Examination delays thus defeat private property rights or at least diminish their value. The story is told that thousands of foreign engineers sit, not in labs doing research, but rather at computer screens reading U.S. patent applications that disclose new technology. Perhaps the story is only apocryphal, but the motivation can be understood.”
Uncertainty – trying too hard to “get it right”: After delays, the next most harmful dynamic is extended uncertainty over the validity of issued patents. If patents were to suffer under a cloud of possible invalidation for years on end, how could their value not diminish?”
Judge Michel testified Friday. Among his points:
1) The biggest problem is delay. He recommends massive increase in PTO funding and deferral of any consideration of new burdens (read oppositions) on the PTO that would add to delay.
2) He opposes any tweaks to court procedures or to damages law.
3) He opposes oppositions and interpartes reexaminations, that is, without addressing the delay issue and to prevent serial reexaminations and other abuses that effectively make patents unenforceable for most of their term. He questioned whether the cloud of invalidity attributable to reexaminations was harming and not helping the patent system.
4) He asked that Congress hear from CEOs of startups about these matters, as this is where the patent system is the most needed to expand jobs and the economy. He noted that Congress has yet to reach out to such, hearing only from major international companies about patent reform.
I was just thinking about it and maybe the reason they did this to the best mode requirement is that they’re under the mistaken belief that examiners don’t need to have evidence of a failure to provide the best mode known at time of filing. Now, if the law were amended how it is and they also modified needing to have evidence like that then it could be decent reform.
“or a registered patent attorney whose responsibility it was”
The client is responsible for asking for any such advise. The attorney doesn’t always receive such permission. Accusing malpractice on such a grand scale is itself irresponsible.
Imitation is the cheapest form of flattery.
This package seems pretty hostile to innovators. Everything in it (insofar as the article describes) favors infringers and disadvantages inventors. I wonder if this signals a desire to move the United States from an innovator nation to an imitator nation?
There are only two reasons why a company gets sued for marking their products with expired patents: either they intentionally falsely marked their product for purposes of deceiving the public or a registered patent attorney whose responsibility it was to advise his client of the approach of the patent’s expiration and the need to proactively plan for the cessation of product marking by the expiration date committed malpractice by failing to so act.
“Hiring and training a lot more Examiners would solve most of this.”
Been there – done that. Doesn’t work.
Adding more cogs to a wheel does not make the wheel spin faster (all else being equal).
There needs to be a fundamental shift in the paradigm of examination and pushing examiners to process “X” number of applications in a given time as if all applications can be treated as a singular “average.”
Hiring more? perhaps a part of the answer. Training a lot more? – only if that training is to a different paradigm. Hiring a lot more and training to the current paradigm will only increase the number of applications to be piled on the RCE and Appeal mountains of unfinished examination.
Homeopathic treatments are like perpetual motion machines. They are all BS. Why should they receive a patent?
Reform? It even did not change anything. The “reform” just a name.
Um, not quite stated correctly.
The quo is not eliminated, the quo is taken fully. It is the quid that is held ransom. It is the quid that the applicant wants and now must fight tooth and nail over inane Office actions, the prior RCE gravy train, the bottomless pit of Appeal-re-open, and the general lack of ability of receiving a timely and quality examination on the merits.
And who can really blame the Office? The Office has maximized its portion of the deal – it has published the quo for all to see. If it can drag more out of the applicant through processing, the better. If it can dissuade the applicant from trying to receive a patent, the better. Why buy the cow when you can get the milk for free?
With submarine patents largely eliminated with the change of term running from the earliest priority date rather than the issue date, the truest patent reform – the best return to the original Quid Pro Quo – would be to eliminate ALL publications until issue. There really is no defensible justification for publication prior to issue. It is a pure taking with only a glimmer of a possibility of the applicant receiving their end of the bargain.
For those who say that for those applications published, but no patent received there is no real harm – I call out Bull. There are plenty of times where patentable material is published and the applicant either runs out of time or money in attempts to get what is due to her. Conversely, ALL harm is eliminated if pre-issue publication is wiped out. There is zero harm in removing pre-issue publication. ZERO.
Let’s stop giving away the applicant’s information (whether eventually patentable or not) for free.
Well, hey, publishing at 18 months eliminates the quo and keeps all the quid.
So examiners will now have subpoena power to investigate best mode? Otherwise this Act makes a mockery of the best mode requirement. “Sure you have to disclose a best mode, but the examiner doesn’t have any way to challenge you on it and the courts can’t enforce the requirement”.
Once again, you are fond of projecting.
The “lowered” comment comes from your insistence on acting like a buffoon. I too know quite a few patent agents and none act like you – declaring what case law may (not) exist and exalting in a prep/pros posture while pontificating on things obviously beyond your ken. Did you even try what I suggested, or are you so sure of yourself that no case law speaks to inventory levels of already marked items? You have spent more time “arguing” about a point and now taking glory in being “right” about something that when (or if) you actually learn about, you just might wonder how you could ever have been so pig-stu_ pid.
Seriously, you should refrain from posting and sparring yourself the humiliation.
It’s called equity. That is, sell through the inventory, and quit making new inventory with false marks = no problem. Make new parts with false marks = you know you did something wrong.
(I know lots of patent agents and while they may be lower paid, none of their lawyer colleagues treat them as “lower status” co-workers.)
“This is not a difficult issue”
C’mon, sunshine. For someone who likes to whinge about ad hominems, y’all sure can sling them grits yerself when you finally realize you’re baldly* losing an argument. Hmm… “patent agents” are lower status humans?
In any event, there is no case law on this point. The case law is in some respects being made in the “right now”. In case you’re still confused, the “this point” to which I refer is the scenario I laid out along with the statement. You know, why should a company like 3M be forced to waste money defending itself, over and over, for merely following the law?
Go read the Government’s amicus brief in BP. They don’t think the case law is settled (but they are urging the CAFC to find one way to settle it).
Later, Sunshine.
*Not a typographical error.
anti-competitive?
“I’m just a prep/pros guy.”
“No, actually there is not [case law on this point]”
What kind of prep/pros guy are you to blanketly deny the existance of case law, just becuase you are unaware of it in your role as a “prep/pros’ guy? And yes – there is such case law – you can even Google this blog to find it.
No lawyer would be so cavalier as to make such a bald and inaccurate statement, so would it be safe to assume that you are not a lawyer, but rather a patent agent (or perhaps an examiner wishing to stir the pot)?
Your lower status would further explain your penchant for inferring (and calling it implying) that you do not know what you are talking about.
If you were really so concerned, you should have kept your mouth shut, rather than open it and remove all doubt.
“There is case law on this point. Find it. It is after all, what you are being paid to do, no?”
No, actually there is not, and no, actually I am not. I’m just a prep/pros guy.
You mentioned something you called a “protective plan” drafted by counsel. I’m interested to hear what that thing may be.
Here’s the scenario as plain as I can make it.
Take a conglomerate like 3M. Say they’ve got 20,000 products with varying shelf lives and the products are patent-marked. Let’s say 3M exactly and correctly follows the law, but in all cases they will necessarily have product still on shelf with expired marks. I say “necessarily” because, remember, it was correctly marked up until the expiration (otherwise the marking is useless), and if there is any shelf life at all, there will be product in the marketplace having expired marks.
So they still must defend themselves each time a plaintiff gets a notion to sue them for false/expired marking.
You laughed off the idea of spending $50K to dispose of such a suit. Maybe that is too high, what do I know? So okay, let’s say it’s just only $10K each time in total cost. I doubt it would be that cheap, but let’s just say.
What’s 20,000 times $10,000?
Why should 3M be liable for up to $200,000,000 in additional costs simply for following the law?
“You are aware that the prima facie compliant (sic) requires a showing of decepetive (sic) intent, correct?”
Ahem, no, it does not. It requires an allegation of deceptive intent.
Haven’t you looked at any of these hundreds of cookie-cutter complaints? Here’s how you make your allegation of deceptive intent:
1. Patent is expired.
2. On information and belief, company is sophisticated in patent matters.
3. Therefore, on information and belief, company must have known its patent expired.
4. Therefore, on information and belief, company must have retained expired marking for purposes of deceiving the public.
The vast majority of district court judges to consider motions to dismiss thus far on rule 9(b) grounds have refused to dismiss complaints with these conclusory allegations of intent to deceive.
Why else do you think the CAFC decided to entertain BP’s mandamus petition, and ordered briefing?
If anyone is interested in the intersection of 9(b) with these cases, briefing is now completed with BP’s and plaintiff’s briefs and briefs-in-reply submitted, and including an amicus brief by the Government in support of BP’s view of 9(b), with one exception. (Also an amicus by some industry group supporting PB, but that’s only to be expected.)
anti-competitive?
You make a logical mistake wherein “You want to imply others are clueless” should actually be “I want to infer others are clueless“.
Stop projecting.
And again, as to your question of “What’s your solution to the lawsuit against a properly made product whose patents expired during the shelf-life?”
There is case law on this point. Find it. It is after all, what you are being paid to do, no?
To “This is not a difficult issue”, it is a nasty surprise.
Unless you live in a world where getting a product to market is free, and shutting down a product line is also a no-loss proposition?
If so, then I suppose that getting notice that you are infringing and must sell no more infringing product is no skin off your nose.
To the rest of us, it would indeed be a nasty surprise.
As for “ad hominem”, c’mon, buck up Sunshine. You want to imply others are clueless from your vantage, they may well explicit that, from their vantage, you don’t know what you’re talking about. In any event, though, with your complaint about ad hominem you are now saying that I said something that I did not say. My comment was in no way linked to the question of interpretation vs. statutory wording. It very clearly followed the discussion of whether a “simply not be lazy and to follow the law” was all that is needed. From your vantage (near as I can tell from your statements), it appears that you believe that wraps it all up in a nice package. From mine vantage, however, it appears that you do not know what you’re talking about in this regard because there are contra real life examples.
Instead of whinging about what may take the record for the mildest ad hominem I’ve seen on these fora (“This has nothing whatsoever to do with being lazy and not following the law. You suggested that I don’t know what I’m talking about, whereas frankly, from my vantage, it is clear that you do not”), why not take a stab at how to fix the problem of having to pay to defend yourself despite doing everything exactly right? What’s your solution to the lawsuit against a properly made product whose patents expired during the shelf-life?
And if by “freely” you mean that you’re disregarding the possibility that someone other than the manufacturer of the copied product (or his licensors) holds a relevant [patent].
Yes, you could still possibly infringe some other patent by some completely unrelated party that isn’t marked on anything. But you’d still be as free to copy the product you found as the original manufacturer was to make it. If he hasn’t attracted the attention of that patentee yet, you’re probably safe too.
But that’s not really the point. The point is that you can be absolutely sure that the manufacturer of the product you copied won’t have any recourse against you. Even if you don’t actually copy his product but merely compete with it and still happen to infringe his patent. Which is even more ridiculous when you think that you would have been liable if only he hadn’t tried to start a business like we all want patentees to do, especially in these tough economic times.
As the law currently stands, the patentee has three options: he can sell a marked product and expose himself to false marking liability, he can sell an unmarked product and essentially waive monetary damages, or he can not sell anything and essentially waive his right to an injunction (while also not earning any money).
That’s why I think we should get rid of this whole marking business entirely. If you’re going to copy someone’s product, you should bloody well look into the possibility that you might be infringing his intellectual property.
a relevant patent, that is.
Yes, if by “freely” you mean without fear of having to pay damages for the infringement.
And if by “freely” you mean that you’re disregarding the possibility that someone other than the manufacturer of the copied product (or his licensors) holds a relevant.
anti-competitive?
Without notice, the copying can be freely undertaken.
The product copyist is NOT in for an unpleasant surprise lacking affirmative notice. If you are relying on expired patent markings for that notice, it is YOU that will have the unpleasant surprise.
As for your ad homimem – If you want to read into my comments that you do not know what you are talking about, I cannot stop you. But please, do not say that I said something when I have not. My comments about which “interpretations” are supported in law and which are not can be objectively verified by reviewing the appropriate case law. Don’t ask me to do your job, unles you are willing to pay me.
You are aware that the prima facie compliant requires a showing of decepetive intent, correct? You are also aware that courts have cleared the ability to sell inventoried goods with the mark after the mark has expired, correct (regardless of any red herrings thrown about)?
No wonder you are so concerned with appearing that you do not know what you are talking about. But please, refrain from projecting that condition as a statement from me – I never made such a statement.
As for getting sued – welcome to America. It really isn’t a matter of getting sued, now is it? If you mark and if you know whenthe expiration of the marks are, I am sure that your counsel can draft a protective plan for far less than $50K. If he cannot, you need to seek out better counsel.
Um, you’re not under the impression that unmarked product may be freely copied without fear of infringement, are you?
Yes, if by “freely” you mean without fear of having to pay damages for the infringement.
So, actually, a lack of patent markings does tell you that you can copy the product itself. At least, until the patentee gets round to giving you notice of an unmarked patent, at which point you can simply stop selling the copies.
Poster “This is not a difficult issue” also wrote, “That’s why an item no longer patented (as in the patent has expired) needs to have the marking removed so that others do not have to expend the effort to check – so that others can freely copy.”
Um, you’re not under the impression that unmarked product may be freely copied without fear of infringement, are you?
I wouldn’t think so, but it sort of sounded like it based on your choice of language.
In any event, I hope you’re aware that a given manufacturer may have a number of patents covering the product and select for whatever reason only a few patents to mark (for example, the “seminal” patents covering original product features), and never mark the newer improvement patents.
In that case, when the expired patent numbers are removed, the product copyist is in for an unpleasant surprise. Thus my point that a remaining old patent number tells you which formerly patented features you can safely copy. It does not tell you that you can copy the product itself.
You’re missing the impact of Tier II of the new expedited exam proposal.
You could file, get the 30 month prosecution coma, then decide whether to proceed when the new data come in. If your initial optimism is not justified, abandon. Abandon before 18 months and there’s no publication. If you develop new matter, file a CIP and then abandon. Do Tier II for the CIP, collect more data, etc. etc.
Sounds like the best of all worlds to me. Better than the provisional.
If you are really clever, which all of us here are by definition, you could file in Tier II, get a certified copy of the appl for $10, and then abandon before publication. You would then have evidence that you were F2F — so you could really scrw with the rest of the world. Talk about submarines.
Replying to some of “This is not a difficult issue” comments far above:
I’ve had a number of discussions relating to the “phantom issue” (corporations are going to stop marking altogether). It’s not a phantom issue.
The benefit is not worth the cost. It’s more expedient in the long run to keep careful watch on competitors and give actual notice (even with the problems inherent in this) vs. depending on notice construed via marking.
The problem as mentioned by IANAE is shelf life. Let’s say you’ve got a 60 month shelf life, and you are drop dead perfect at balancing your packaging inventory such that neither any product is packaged after expiration of patent, nor does any unmarked product leave your facility prior to the date of expiration.
Good Show! Congratulations. You still get sued.
Properly marked product (i.e., made prior to patent expiration) sits on the shelves, and then (as shown by the mega plaintiffs like Main Hastings, Patent Group, Simonian), you get sued for (e.g.) a diaper patent that expired 2 months ago, despite that the patent expired after the diapers were made. Hey, this is properly marked product. But still the plaintiff can make out his prima facie complaint.
Then you have to decide. Do I spend a hundred thousand or so in legal fees (not to mention disrupted business during investigation) proving I’m right?
Or do I offer the plaintiff $50K or so, hoping to just cut my losses?
This has nothing whatsoever to do with being lazy and not following the law. You suggested that I don’t know what I’m talking about, whereas frankly, from my vantage, it is clear that you do not.
You can follow the law as precisely as you like. You can still have to pay off the stick-up artists. Or spend the legal fees proving you have precisely followed the law.
Or, you may decide to simply quit marking products.
Theyve done it again more squandering with no significant improvements to the system no concern or input opertunity for the inventors that create everything. The black hole in human advancement that their disconcern creates continues to grow with no end in sight. Clearly this legislation needs to be drafted by inventors not lobying politicians.
That’s why an item no longer patented (as in the patent has expired) needs to have the marking removed so that others do not have to expend the effort to check – so that others can freely copy.
Of course. Except if they have three years’ worth of marked inventory in a warehouse somewhere that they’re still allowed to sell while you’re also free to copy.
And it would only really apply if the notice function were limited to “freely copying” rather than with respect to any infringement whatever of any claim of the marked patent.
“ Marking is notice of the patent as a whole, so you really do have to go check.”
That’s exactly the wrong takeaway.
That’s why an item no longer patented (as in the patent has expired) needs to have the marking removed so that others do not have to expend the effort to check – so that others can freely copy.
Thank you for proving my point.
If people’s ‘rush-to-initial-filing’ and ‘inferior initial filing’ prognostications turn out to be true, it will be a sad day indeed for any entity that is not sufficiently large and well-heeled to do absolutely everything in-house, under employment agreements rather than under development agreements and NDA’s.
The mark is not an invitation for anyone to investigate whether the item still has the rights of a patent, whether the warning sign is actually valid
It kind of is, because the marking gives notice to any infringer, not just somebody who copies the product identically.
If you want to make any product at all, the existence of a marked article of commerce that you’ve never seen essentially requires you to investigate the entire scope (claim breadth and term) of the patent to make sure you don’t infringe any of the claims and the patent hasn’t expired since that article was marked.
The essential disconnect is that marking is not notice that “selling this exact article is an infringement of somebody else’s right”. Marking is notice of the patent as a whole, so you really do have to go check.
“It wasn’t Congress that said expired marks were false marks – that’s an interpretation”
It is an interpretation in line with the law as written by Congress. Attempting to characterize this as a mere “interpretation” is disingenuous (not to mention dangerous from a legal perspective).
“Marking” was meant by Congress for those chossing to mark to be an explicit state of the item. Notice that “patent pending” likewise must change when the item is no longer in that state – either by letting the application lapse and go abandoned, or by the application attaining the grant of patent.
The mark itself discourages competition because it is meant as a warning sign. The mark is not an invitation for anyone to investigate whether the item still has the rights of a patent, whether the warning sign is actually valid – that would be an interpretation that is unfounded in law.
I am sure that competitors love seeing expired patent markings – let’s ask some stilt manufacturers.
The phantom dilemma you point out of companies simply stop marking their products altogether will not happen because the benefit of marking far outweighs the burden. You do know what the benefit of marking is, do you not?
All that is needed here is for companies to simply not be lazy and to follow the law.
“Congress meant what they said. The point was to do away with false markings to encourage competition in manufacturing in the US.”
Sure, “but”. It wasn’t Congress that said expired marks were false marks – that’s an interpretation.
Given that most of the 1000 or so suits pending relate to expired marks, pray tell how such “false marking” discourages competition?
As a competitor, I LOVE to see expired patents on other’s goods. It tells me exactly what features I can now copy out of the product. This simplifies and shortens my product development cycle and allows me to reduce some of the COGS. Expired markings help competition, rather than harming it.
The other 10 or so cases where a company claims to have a patent pending (when they don’t), or imports goods marked with another’s patents (and treis to claim that the products are licensed by the patentee, when they’re not), these can clearly stifle competition and so harm the consuming public.
Unfortunately, what’s going to happen is that companies will simply stop marking their products altogether, and whatever public benefit the Congress found in patent markings will be lost.
I’m feeling more and more like Don Quixote, but I STILL contend that first-to-file is unconstitutional.
All this is fascinating, but what are the odds of these proposed changes making it into law? It seems we have this discussion every year, yet nothing happens.
“thief”? – I didn’t think you could steal IP.
It doesn’t. Half of the statue is designed to reward large campaign donors (i.e., GE, IBM, Microsoft, Apple, etc.):
FTF, fast track (which I don’t particularly take issue with), fee setting authority, eliminating enhanced damages (clear and convincing instead of perponderance of the evidence), promoting false marking with expired patents, and reducing damages calculations.
This whole thing is a bad joke at the expense of the American spirit and entrepreneurship.
Happy birthday to the World’s greatest ever “troll”
More of a thief than a troll (in addition to being a rather innovative fellow).
Congress meant what they said. The point was to do away with false markings to encourage competition in manufacturing in the US. This is just gutting the statute for the benefit of old established business.
yep, the FTF provision is a pure giveaway to big business (GE/IBM/MICROSOFT) at the expense of independent inventors and small companies or startups.
This is NOT what the Constitution intends.
the accused infringer would claim it was inequitable conduct for the applicant not to submit that information.
The problem with inequitable conduct is that you have to show the requisite level of intent, and probably also materiality. Merely failing to set forth the best mode would be no defense, partly because it’s not per se inequitable, and partly because that’s precisely what the statute would specifically exclude as a defense.
Am I the only one here who has a problem with a defense that is supposed to relate to a fundamental defect in the specification being made dependent on whether the examiner thought to make an unprovoked request for that information during prosecution?
Or maybe I’m just the only one who has a problem with “anything goes, as long as you can slip it past an overworked examiner”.
Under the proposed rule, the accused infringer would have an inequitabele conduct defense instead of an invalidity defense. When the accused infringer obtains information showing that the inventor had a better mode than he disclosed in the application, the accused infringer would claim it was inequitable conduct for the applicant not to submit that information. The proposed law still makes the information of interest to a reasonable examiner in deciding whether to allow the application to issue.
It’s unfair to pin this on Leahy. The False Marking Statute was written with a fairly clear purpose, but the language got abused by (for lack of a better term) False Marking Trolls and the Federal Circuit who let s 292 get interpreted to apply to each item falsely marked.
Could Congress instead tweak the language to change the penalties? Sure, and they’d probably get worked over again by a legal interpretation loophole. The simple, and likely more efficient, thing to do is change the burden of bringing suit. Less “just” perhaps and not as good public policy for some, but then governance is (or should be) about compromise and making do with what you have.
I’m talking about an admission that the claimed composition is structurally indistinguishable from water. You know, like the admission that is in the specification of the patent I showed you.
That patent contains no admission that the composition is indistinguishable from water. On the contrary, the patent is all about a thing the composition can do that water can’t do. That’s the opposite of saying two things are the same.
how much homeopathic arsenic or homeopathic cyanide do you think you need to drink if you want to get sick?
I think a lot, but that’s because I don’t believe in homeopathy. However, my belief is irrelevant to that patent application, just as the Pope’s belief is irrelevant to whether the Earth is round. The applicant has provided evidence that his formulation works. Sure, the examiner may believe the evidence is probably defective in some way because that conforms to his preconception, but that’s not a valid reason to reject a patent application when all the evidence of record suggests that the formulation has measurable utility.
The oddest part of your struggle to excuse the USPTO is that you agree that peddlers of homeopathy are charlatans. You know this, and yet somehow the USPTO is “incapable” of making this determination on its own.
It’s not odd. The PTO can’t simply “know”, it requires some evidence. Same goes for section 103 – they can’t reject a claim because it “seems obvious” unless they can find the art. If someone comes up with an invention, any invention, describes exactly how to make it, and demonstrates that it seems to work, that has to be enough for the PTO unless the demonstration is defective on its face.
It’s even less odd if you consider that homeopaths “know” their practice is valid as confidently as I know they’re charlatans. Yes, science would tend to side with me, but science has been wrong in the past.
What separates science from religion is that science is willing to consider evidence and change its mind when it gets things wrong. It’s the difference between you ranting that it’s nonsense and James Randi putting a bounty on the evidence.
Incidentally, this is a fun example of how the wrong standard of proof can give people patent rights they clearly shouldn’t have.
“patent reform”
It is only reform for large firms who rely on their size to maintain their market share. The changes will only benefit them and further cripple small entities who create the lions share of new jobs.
Patent reform is a fraud on America.
Please see link to truereform.piausa.org for an inventors perspective on patent reform.
Actually, the USPTO needs to hire more management to replace the dead weight (~20% of SPEs) currently working there. Hiring a bunch of new examiners won’t help as long as the USPTO has people better suited for competing in the Special Olympics providing the training.
Senator Leahy, I don’t understand your decision to increase government spending by eliminating qui tam suits for false marking, thereby placing the much Defendant-bemoaned financial burden therefor on Agency resources instead of on the Defendant law breakers where it belongs!
Is false marking suddenly a good thing Senator Leahy?? I thought section 292 was a criminal provision? Do the criminals pay more to lobby than to settle?
Don Quixote
Is there a legislative approach to clarify issues such as software and business method patents?
Thanks Daniel – I’ve changed “identify” to “set forth.” And you are correct that the CAFC has interpreted “set forth” to only require disclosure without particularly pointing out which of the disclosed embodiments is the best mode.
To your second question: My understanding is that inter partes reexams would be eliminated. And ex parte reexams would be kept as an avenue for reexam after the 9-month window.
Happy birthday to the World’s greatest ever “troll”
DC, two things. First, there’s no requirement to *identify* the best mode; there’s a requirement to *disclose* the best mode – the spec “shall set forth the best mode contemplated by the inventor of carrying out his invention”. As the PTO is rarely in a position to determine whether or not an application discloses the best mode or not, it sounds like the draft legislation would de facto take the best mode requirement out the statute, even if de jure it is retained.
Second, why introduce two new types of post-grant review if you’re going to retain the exsiting but woefully inefficient third-party instituted “ex parte” and “inter partes” reexamination proceedings?
This is intentional. Other countries have no best mode requirement, and the aim is to inch ever slower towards harmonised laws.
Even after 25 years I sill snigger at “oral proceedings” – EPO terminology for a hearing.
“The oral proceedings are now closed.”
“Oh, I think you’ll KNOW when the oral proceedings are closed…”
There is a misconception, in FtI America, that FItF results in poor quality filings. I (in Europe) see exactly the opposite. Americans who today file poor quality first filings (such as provisionals) had better soon get used to the burden they face, under FtF, to get their disclosure full and enabling over the full scope sought to be protected, already in the first app they file in a Paris Convention country.
Otherwise, they suffer a double whammy: no patent, on technology laid open to their competitors 18 months after their priority date.
After six years in limbo and significant changes from past years proposed patent reform legislation, the Patent Reform Act of 2011 is going to get hotly debated as it was approved by the Senate Judiciary committee on February 3rd and is currently on it’s way to the Senate. What’s interesting to see is who has lined up on each side of the argument for reform and why. Keep in mind even if the bill survives and stays somewhat intact as it makes it’s way through the Senate, it still must be approved by the House. Let’s take a look at what are some of the key items being proposed.
“A rejection made without basis requires no such assertion that would implicate the applicant in “committing fraud”.”
No, but it does invite applicants to make such an assertion. lol.
This guy knows my tactics pretty well. I’ll give him credit for that. He’s probably been on the receiving end.
However, this is not a situation where evidence can be conjured straight from the spec and prior art (like say, a 112 WD or indefiniteness rejection). And this is also not a situation where I can take official notice of a fact or a similar situation regarding some inherent/implicit information in a reference. You need evidence that the applicant knew about whatever “best mode” embodiment you now think is the best mode that should have been disclosed at filing and you need evidence that he knew about it at filing. You pretty much cannot get that from the spec or prior art. You need access to the inventors notes etc. from the time before filing.
But in any case, yeah that’s a trick that’s too dirty. And come on guys, I don’t make baseless rejections just to trap you 🙂 … >:)
Also, the proposal to eliminate penalties for failing to disclose the BEST MODE eliminates one of the most important reasons for the existance of patent law–the proposed new law eliminates (to some extent) the quid pro quo requirement.
Apparently, the goal of the proposed new laws is to create junk patent applications, and to cause inventors to submit inaccurate and potentially harmful (harmful to the inventor) statements to the USPTO. With the present system, inventors can refine their experiments a little bit, and see if they are reproducible, before submitting their inventions by way of a Provisional. But the proposed new laws do not allow this. The proposed new laws mandate that inventors do rush-filings. The proposed new laws mandate that inventors submit potentially inaccurate data, and potentially irreproducible data, to the USPTO. The proposed new laws might seem acceptable to people (lawmakers) having no understanding of science or engineering. But the proposed new laws will not likely make much sense to research scientists, who like to be at least 95% certain of their data before submitting it to the USPTO.
Tony I think at the time finding foreign references and techs and importing them to the US and then disclosing them was probably a bigger deal than simply looking something up on the WIPO/JPO/KPO/CPO/RPO/EPO websites.