New Proposed Rules: Maiming Markush Claims

A new set of proposed rules were published in the Federal Register on August 10, 2007. The new anti-Markush rules would close down a potential loophole in the soon-to-be-finalized claim limitation rules. 

Highlights:

  • An intra-claim restriction is proper unless all species share a feature that is substantial and essential for common unity.
  • A claim may not incorporate part of the specification by reference unless absolutely necessary.
  • Markush alternatives must be substitutable; may not encompass other alternatives; may not be a set of further alternatives; and must not make the claim difficult to construe.

Documents:

Other upcoming finalized rules:

  • Rules limiting continuations are expected to be finally implemented within the next few weeks.
  • Rules limiting the number of claims being examined are expected to be finally implemented within the next few weeks.
  • Rules requiring more extensive IDS submissions are being reviewed by White House staff and are expected to be finally implemented in early 2008.

 

82 thoughts on “New Proposed Rules: Maiming Markush Claims

  1. As a mandatory process of compliance, all the patent applications drafted by our teams have to be reviewed by an attorney/agent licensed to practice before the respective patent office in which the patent is to be filed and shall not be deemed to be complete unless reviewed by an attorney agent licensed to practice before the respective patent office.

    Reply
  2. “Could it be that this is a sign of a policy change?”

    Sadly, I don’t think so… just more of the same.

    “Who do most of the Lobbyists work for?”

    Follow the money trail.

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  3. What percentage of government pandering is directed to, We the People?, and to Lobbyists?

    Who do most of the Lobbyists work for?

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  4. Real Anonymous,

    :-( you win, no movement in the right direction

    Could it be that this is a sign of a policy change?

    Perhaps the government / USPTO does not believe in American innovation (e.g., the oft cited mass of non-US citizen PhD students, the outsourcing of work to India) so does not want strong patents to ensure competitiveness and instead wants to rely on superior American managing and financing skills?

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  5. Erez Gur: I agree with you 99.9999% about the problems that a registration system might produce. And note we’re seeing those very same problems today (and you may be right, they can get worse).

    “That means better examination. In my opinion that means give Examiners better search tools, higher salaries and more time per application, but punish them for jerking an applicant around with silly or incorrect rejections.”

    Agreed completely. Now, have you seen *any* movement by the USPTO in that direction? Herein lies the problem: the USPTO would rather abdicate its role (to the applicants) than augment its role. Given this reality, how are we not moving to a registration system. (Accelerated examination is a prime example of the direction the USPTO wants to move. Rhetorically I could ask, is it that far from registration? Bring it on.)

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  6. It is not only four hours to search in most cases. A competent examiner restricted to a rather narrow field can do a very good job within the limited time allotted. By smartly allocating their search time, an examiner can spend in excess of six hours (sometimes an entire day) when correctly considered the importance of first action.

    Except for mechanical arts, most examiners have about 15-16 hours to dispose a case. Unfortunately, many are spending too much time on actions issued after the first action.

    First action (after any preliminary restriction) should involve applying/citing almost all relevant art applied against the invention. Search updates in subsequent actions should involve only minutes of an examiner’s time because only documents published after the date of the first search need be considered (e.g., documents with earlier priority dates). I know this is possible because it is the way I examined for years.

    I believe churning problems at the PTO are simply related to piecemeal examination. However, because the PTO refuses to address this fundamental problem, a registration system only seems fair.

    It is good to see some potential problems identified above regarding registration. I believe part of the solution would be forming a number of quasi-government or government sanctioned/certified search organizations staffed with former examiners (at least at the outset). The search quality would presumably be at least no worse than the PTO is producing today, and probably even better since their job function would be more focused.

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  7. Real Anonymous,

    I can’t agree with you.

    Regarding registration
    Without the cost of examinations, endless RCEs and appeals, clients will give patent attorneys the same amount of money to write lots of patent applications with the expressed purpose of setting up smoke screens. In-house attorneys will need to file more applications to justify their existence in an office-actionless world. You can make penalties, but remember the damage done to industry would be done pre-litigation. How will anyone be able to evaluate freedom to operate? How can an honest business have any idea where to focus R+D if its opponents can file any wild, not enabled or insufficiently described idea? And these are just some bad aspects of registration.

    I think we need better patent quality. That means better examination. In my opinion that means give Examiners better search tools, higher salaries and more time per application, but punish them for jerking an applicant around with silly or incorrect rejections. Patent Attorneys will write better applications when prosecution becomes rational and not a crap-shoot.

    Regarding searching.
    Call me cynical. An Examiner is given one work day (4 hours?) to do a search on a patent application with 25 claims/2 independent in some complex technical field where figures searching is impractical and there is a lot of non-patent prior art. In contrast, Big Corporation is willing to pay $20K (paltry in litigation terms) to Joe’s Searching Service to find killer art within a month. Or maybe pays a $20K bonus to any one of its engineers who find the killer art. I don’t think anyone can blame the Examiner, nor criticize his or her professionalism, in doing less well.

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  8. But to Erez Gur, I might add:

    I do understand your viewpoint. I have always thought that patents undergo a “bifurcated” examination, i.e. in two stages.

    All patents receive a first stage examination at the USPTO. This helps weed out the majority of silly claims. This first stage examination is non-adversarial (i.e. ex parte, though I realize the USPTO represents the public) and it is, economically speaking, relatively inexpensive (and therefore not thorough) so as not to overburden society.

    The second stage examination is much more expensive, but only a small minority of patents ever enter this stage. This examination occurs in an adversarial process (licensing negotiations, litigation, etc.), it is a great deal more thorough, and costs a great deal more than the first stage. However, because it only affects a small n% of the patents, society in not overburdened by the cost of this stage either (yet).

    To do a complete examination on all patents simply doesn’t make economic sense (e.g. because no one except the patentee is interested in the validity of many patents that issue). However, one needs to ask, at what point has the first stage become so ineffective that it should be replaced?

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  9. “In contrast, a private searcher hired by a litigator to invalidate a specific patent has effectively unlimited time and money and will necessarily find killer prior art, if it exists.”

    That is simply not true for 99.9999% of the cases. (O.K., perhaps it was true for the soft-bake cookie dough case how many years ago?)

    Searchers (and search companies and attorneys) have backlogs and workflow to consider just like examiners (the legal clock doesn’t stop just because there’s a big case), and companies have budgets to consider just like the USPTO. To be sure, private industry is much better at redistributing workloads than bureaucracies are. But to say you can’t compare private practice with government operation is exactly what the USPTO with its “We can’t search this!” wants! It just excuses the USPTO’s lack of competence in patent matters, instead of fixing the problems.

    A registration system would need penalties for silly claims: e.g. an accused infringer could strike one additional claim of choice in a patent for each claim adjudicated to be invalid. Think about it – it would be quite an incentive to claim exactly where you know the line of patentability (or the true invention) to be. And there would probably need to be stiffer (civil or criminal) penalties for repeat offenders.

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  10. A registration system would be great for patent attorneys, but would flood the system with irrelevant silliness. It would be impossible for business to function due to extortionist Troll companies which would arise.

    What one forgets is how difficult it is to search. No matter how good an Examiner is, he or she has limited resources in terms of times and money. In contrast, a private searcher hired by a litigator to invalidate a specific patent has effectively unlimited time and money and will necessarily find killer prior art, if it exists.

    Why not just give the Examiner’s decision to grant a patent the respect due, recognizing that it is impossible to find all relevant art. There is no reason to give an excessive “presumpion of validity” to an overworked Examiner’s decision.

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  11. “And patents are so easily invalidated because there are trained professionals who search diligently, who understand the technical arts, and who understand the law to a greater extent than many examiners”

    Indeed, with one caveat: it is relatively easy to show another skilled and educated person why a given patent is invalid, but it is not “easy” to invalidate the patent in the US system.

    Litigation is expensive and time-consuming and given the number of District Court judges who don’t “get it”, you can’t count on a truly “skilled” and “educated” person taking a good look at the patent until you get it up on Appeal.

    Of course, I am discounting reexamination proceedings for all the reasons discussed above.

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  12. Registration is the last thing litigators want. It will do away with the entire inequitable conduct invalidation technique. That is why I say fire all the examiners and let’s go to a registration system.

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  13. “This attitude is precisely why the USPTO tends to grant patents that are easily invalidated by searchers who understand how to search diligently.”

    Au contraire. You’re putting the cart before the horse, I’m afraid. Rather, this attitude stems from the repeated experience that most patents with broad claims *are* so easily invalidated. And patents are so easily invalidated because there are trained professionals who search diligently, who understand the technical arts, and who understand the law to a greater extent than many examiners.

    Your reasoning sounds to me a little like USPTO management (though I realize you are probably not in management): they have created a mess with inexperienced and untrained (and disheartened) examiners, and that mess manifests itself in a poor work product, and then they conclude that the work can’t be done. They then use that conclusion as justification to change the rules to shift more of the burdens of the examination process to the applicants.

    But trained professionals continue to have no problem invalidating most patents with broad patent claims, and you don’t hear them saying, “We can’t search this!”. Because they can.

    [Yes, we applicant’s could make the examination process child’s play for the USPTO, and there is some reasonable basis for doing so (i.e. the presumption of validity assumes at least a semi-complete, though not necessarily complete, examination, and the USPTO has become perhaps incapable of providing this for any but the easiest applications). I do believe that patent quality now lies 90% in the applicant’s hands – pity the pro se inventors who want valid patents! But making the examination process child’s play doesn’t address the problems that have arisen at the USPTO…. And if we make the examination process child’s play, who needs (and what happens to) the expertise of the USPTO? We might as well register our inventions instead.]

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  14. ” The pinpointing can often be accomplished with a single automated query in seconds or minutes. ”

    This attitude is precisely why the USPTO tends to grant patents that are easily invalidated by searchers who understand how to search diligently.

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  15. ” In reality, a trained professional will search for a genus, and then out of the subset of patents related to the genus, pinpoint the species. ”

    True … but … the claimed rationale for the rule change is the lumping of not-well-related species into single Markush listings, and the combination of those listings with other listings, to generate many applications each presenting a combinatoric “genus” of some reasonably related species and many essentially unrelated species. It is suggested in the FedReg that pharma and biochem generally most often present this problem. From my few looks into the chemical field of art, I would concur.

    Starting from that hypothetical horrible, an astronomical search fee calculation could make sense.

    Similarly, someone who wants a comprehensive search of the “patent landscape” for oral analgesics would receive a much higher project estimate (from any firm) than would someone who wants to find prior art against specific claim X of patent ‘YYY on a method for delivering cox-2 inhibitors. (not a project I have ever done, nor one within my electromechanical expertise).

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  16. “Yes, anonandout, I can … at least in theory …”

    But unfortunately the theory has nothing to do with real-world examination (or real world searching). That’s like saying if I claim a widget with a protective coating, it will take e.g. 2*16000 hours to search it because there are 16,000 metals, compounds and alloys that can be used as a protective coating. Not reality. Yet to do an effective search on such a widget, the examiner had better search for carbon coatings even if they aren’t claimed.

    In reality, a trained professional will search for a genus, and then out of the subset of patents related to the genus, pinpoint the species. An examiner never searches two hours from scratch for each species. The pinpointing can often be accomplished with a single automated query in seconds or minutes.

    This isn’t to say that it is always easy to do a comprehensive search on a broad claim. The USPTO’s example is itself unreal. But it is easy (or easier) to knock out such a claim (you have 10^23 chances and you only need to find one). Well, it’s easy if you don’t use the USPTO’s BRS/EAST search engine which can’t effectively search chemical compounds. That’s why there’s ChemAbs. But that’s another story….

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  17. gambler: “whether the PTO’s changes will reduce the number of bad patents–it will”

    Please define “bad patent” for me? Baby, bathwater …

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  18. “embodied in a single claim” … erm … not quite what I meant. “Claimed” seems redundant, though …

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  19. ” Can anyone out there explain how and why the full and complete search of a single patent application, regardless of scope or the extent of the art could justify a sum that exceeds the gross world product? ”

    Yes, anonandout, I can … at least in theory …

    The example cited in the PTO’s FedReg proposed rules publication is a great example, with roughly 2 * 10^23 potential species embodied in a single claim.

    Let’s assume that searching costs the PTO approximately $100 / hr (this may be low, or a little high, I don’t have any idea how the Office amortizes the costs of its databases, benefits, etc.)

    Then let’s assume that a “decent” search would require 2 hours per species, and a “comprehensive” search would require about 8 hours per species. These numbers again are about right on average, though for a particularly well-known or well-employed species it may take longer than 8 hours to sort out a closely relevant reference (the “best” prior art) from a mass of published art …

    Then let’s assume that the PTO would actually dedicate 2 hours per species to accomplish, on average, a “decent” search that would likely miss some of the relevant art.

    Okay – we have arrived at a total of approximately 4 * 10^23 hours to search all species, multiplied by $100/hr cost of searching, or $4 * 10^25 proposed search fee just to permit the PTO to break even.

    Questions?

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  20. “A claim must be limited to a single invention.”

    Thus, the USPTO seems to be hoping to torpedo genus claims, claims that cover two disclosed species, and as KCB correctly pointed out, “means” and equivalents.

    The would-be rule makers at the USPTO fail to see, however, that according to 35 USC 112, “the invention” (singular) is described by the claim, not by the “preferred embodiments” of the whole/invention which are detailed in the specification. (That is why one should almost never refer to “the invention” in the specification, but rather to “the preferred embodiment(s) of the invention.”) As such, a Markush claim describes “the invention” whereas the Markush species describe embodiments thereof.

    Of course, the changes to the requirements for “improvement claims”, together with KSR, most probably mean that the Office will just search for the improvement (in any context). Consequently, this will effectively prevent practicioners from describing inventions as improvements, even though such description might otherwise have made it easier for an examiner to properly understand the (singular) invention. (There is no statutory requirement that the invention be, or be described as, an improvement over the prior art.)

    This is what you get when you have people who don’t understand patents or patent lawyering write the rules. Their interests lie contrary to the promotion of anything but their own ease and future, and we waste time and effort which could otherwise be used improving the patent system to just keep the USPTO leadership from steering even further off course.

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  21. Dear Lionel,

    How about you and I start our own religion.
    I’ve been told I missed my calling – – I’d have made a great TV evangelist.
    You write us a “Religion Constitution” and I’ll preach it up.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a:

    Reply
  22. The Markush limitations make no sense from a legal analysis from the best I can tell. Will someone elucidate on this for me. It seems I can achieve the same result using paragraph 6 of 35 USC section 112. Is not the Office supposed to examine all my alternatives recited in the patent application when using “means for language” in the claims? In fact, cannot these be interpreted as an admission by the USPTO that they will not properly search claims containing “means for” language? I always thought a Markush grouping was easier to search that “means for” language, because the nouns are right in front of the examiner.

    Moreover, I suspect that for literal infringement analysis a Markush group would be more likely to place the public on notice of what is claimed than “mean for” language.

    Moreover, it is quite clear that the Article III tribunals have approved Markush claiming.

    I am left, however, with the question as to why such animosity would be taken with respect to Markush practice by the USPTO management. I submit that the answer is shown by the admitted intent of the Markush rules that is set forth in column 3, page 44995 of the Federal Register/Vol. 52, No. 154.

    “The reason for such a rule is based upon the very real necessity of avoiding multiple searches for a single fee.”

    This statement speaks volumes about why we are being forced to surrender our client’s rights. Firstly, it has nothing to do with promoting the progress of the useful arts. And I ask you, when has the management of the USPTO given one scintilla of care for the work load on the examining Corps? What you have here, my fellow colleagues, is a statement that I translate as the following:

    We are going to hire outside companies to do the searching and many of us here at the USPTO will derive substantial monetary benefit from these companies. To that end, we want to ensure a maximum profit from the activities between Applicants and Congress. We have determined it necessary to ignore the several court rulings on the matters of Markush claims and the propriety of using the same to properly define your client’s invention. This, because, I want to build a big house somewhere and take expensive vacations and not having this rule will frustrate my ability to derive money to fund the same from the private searching firm I intend to operate when I leave as Director of the United States Patent and Trademark Office.

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  23. Mr. Hutz:
    The same arguments can be said about Federal Expenditures. The only response I can make about your comments concerning Mr. Lemulson is that one’s feelings about him are intimately tied with ones affections, or lack thereof, for the class of individuals who paid to Mr. Lemulson. I could only hope that one day the Lemulson Foundation will have patents to assert against the Hedge Fund managers that we are about to bail out in our position as taxpayers.

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  24. JAOI

    I responded to your comments before I realized this was the wrong thread.

    Oops.

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  25. JAOI,

    I’ll give you your wording on the religious comments. I am no Christian (recovering Catholic), but I do wish more people (especially Christians) lived as Christ taught.

    However, generally speaking, Marx was right about religion being the opiate of the masses.

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  26. KCB,

    You would never here me defend Enron.

    However, with regard to Lemuelson, you could argue the same for almost any Robber Baron from the Gilded Age. It’s easy to be magnanimous when you have over a billion dollars. How much did Lemuelson give out when he was only worth a few million?

    Also, subsequent good acts don’t make up for the fact that he played a government system to make a lot of money.

    And corporations are beholden to the stockholders. They have no money to give unless it’s for PR reasons.

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  27. Upon review of Professor Tribe’s Book on Constitutional Law, 3rd ed. I believe many of you will find pages 292-293 of most import upon many of these rules being promulgated. I still focus upon the continuation practice. I lead off with this quote: “Congress’ power to assign claims to non-Article III tribunals is at it nadir in situation where Article III courts do not play a role in reviewing the agency’s decision.” Even the late Paul Bator’s suggestion as to the wide latitude given Congress in assigning judicial powers to legislative agencies, the test he promulgated “would invalidate congressional attempts at wholesale transfer of Article III cases to administrative courts.”

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  28. Lazerus L.

    Can I conclude that you oppose this Markush decision? This decision along with making continuations more difficult are going to discourage attorneys from filing as much as possible in one application.

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  29. How about a comment on how this is going to change the practice? In the electrical and mechanical arts, I seldom use Markush groups in my independent claims but often use them in dependent claims to create claim differentiation issues and to avoid Maxwell v. J. Baker disclosed but unclaimed subject matter. If Markush groups are taken away or limited, I don’t think that any single tool will accomplish both of those functions. A means plus function claim could address the Maxwell v. J. Baker issue, but probably won’t be very useful for claim differentiation. I suppose we could just present a large number of dependent claims. If the Office is no longer going to be examinging all dependent claims, are they still going to be charging $50 a claim for them? (Yes, I probably already know the answer to that one.)

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  30. Hey don’t be disrespecting Lemulson. When was the last time one of the so-called non-troll companies gave roughly a billion dollars to fund various scholarships around the country. I mean let’s take a look an Enron. What did that company do for us?

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  31. Re: Lionel Hutz’s comment that “I find it hard to believe anyone outside of Lemuelson has the money and stamina to engage in such tactics.”, I know for a fact that this is incorrect.

    The office is dealing with a handful of “inventors” that have filed literally hundreds of related applications that are costing the office massive amounts of time and production in prosecuting. And they have each spent well over $1 million in office fees. Who knows in lawyer fees (if they have lawyers). A couple specifically filed hundreds just prior to GATT (June 1995) and most of these are still pending in one form or another. One applicant filed over 400 related applications (just prior to GATT) claiming priority dates that vary from the early 1980’s to the late 1960’s (depending on the set of cases)! These are mostly all pending in various stages of prosecution from 1.29 filed to appeal to the courts. If you take just these applicants out of the system, a good chunk of the backlog would disappear :)

    Unfortunately, the office can not tell the public too much about all these case, or how the various applicant’s are prosecuting them, since they are still not published or allowed.

    thanks,

    LL

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  32. Dear Lionel,
    Dear Max,

    I responded to your comments/questions posted on the

    “Priority to Foreign Application Requires ‘Inventor’s Knowledge or Consent’ at the Time the Foreign Application was Filed”

    thread here, on this thread.

    Therefore, the references here to “above” are found
    on the other thread.

    I get a little confused owing to my dyslexia, but I wouldn’t trade it for a bag of hammers.

    Enjoy.

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  33. Dear Max, I’m back:

    Regarding your admission:
    “I admit it freely. I am not competent to advise clients on matters of US law, never have been and never will be.”

    I don’t know what advice you give your clients; after all, as a professional patent attorney of some sort, I assume you and your clients enjoy “attorney client privilege.”

    However, you have been giving advice to Americans over and over again in various overt and covert devious ways – – you have been advising readers of Patently-O. You have been using this platform to advance your anti-American inventor and patent law sentiments. The worst of it is that you have been giving your endorsement and giving your advice on making dramatic and damning changes to US patent law. I’ll give you a verbatim three-week sampling of your mean-spirited devious style of advice:

    ON THE DEMISE OF THE INDEPENDENT INVENTOR, MaxDrei posted this on May 28, 2007 at 09:38 AM:
    “So, damages apportionment might lead to the demise of the ‘small independent non-manufacturing inventor working in high tech’? Is there any reason why anybody should be concerned about the loss of that particular species? Quite the opposite. If they were all to disappear, I can imagine it having an aggregate positive effect on the US economy. …”

    ON SENDING INDEPENDENT INVENTORS WITH LIMITED MEANS TO PRISON (but not those more wealthy) MaxDrei posted this on Jun 09, 2007 at 07:18 AM:
    “… vexatious litigants (including those asserting claims found to be invalid) get to go to prison for contempt of court, if they don’t pay the court-assessed quantum of legal costs incurred by the winner.”

    ON FABRICATING EVIDENCE AT TRIAL IN ORDER TO BEAT AN 82 YEAR OLD LADY WITH EXTENSIVE THIRD DEGREE BURNED OUT OF HER MEDICAL EXPENSES, MaxDrei posted this on: Jun 16, 2007 at 12:02 PM:
    “… I know that’s what the evidence established, but why didn’t McDonalds come through with evidence establishing the contrary?”

    Max, you are a real piece of work, and I mean that in the most pejorative sense. I find the advice you’ve been giving and changes you’ve been advocating to US law odious, and I also find the messenger odious. I also take umbrage at your cryptic hubris on another Patently-O thread earlier today to complain to the web master about non-manufacturing independent inventors being too vocal so as to make that thread unconnected to reality, so much so that the thread becomes funny, as to declare that that thread is a joke. And yes, I did notice that you never seem to miss a chance to advise Americans against, or take a swipe at, continuing with Continuations.

    You cannot pss in our independent American inventor faces and tell us it is sweet spring rain. If there is anything I resent, it’s being taken for a fool. Independent inventors are not nearly as dumb as a bag of hammers as you think (but, considering that you are the source, I don’t resent you personally for being dumb enough to take American inventors for fools, because stupidity is something you are born with).

    As to your question: “As to my Paris Convention question…”

    This Scimed v Medtronic case did not turn 35 USC 119(a) issues. Please see comment above.

    Therefore, I don’t recommend you reconcile this case with your Paris Convention concerns. If you need to be a trouble maker and spread anti-American sentiment regarding your allegation that America is reneging on signing the Paris Convention Treaty, at least go to 35 USC 119(a) and reconcile the treaty with it.

    Better yet, why don’t you Reconcile This (great name for a movie):
    Perhaps you’d be a better bricklayer. Please see my story above and be sure to learn from it when to let go of the rope (?-) (No, not my gun story above, lest you accuse me of threatening you. Let me take this opportunity to thank you, you are good for me – – my shrink says it is good for me to get out of the trailer and spend time at the library venting at you on the internet. No, I don’t use the Sopranos’ shrink, I prefer Monk’s.)

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  34. Dear Lionel,
    Re: “I won’t touch any religious”

    My comment merely said: “Feeling thankful and projecting prayers of thankfulness into the incredible universe is good for the body and spirit”. I’d bet you do not have a problem with the incredible universe.

    I also endorsed: “strength, honor and principled Biblical behavior”. I don’t fancy that to necessarily be “religious”; do you? I’d bet you do not have a problem with strength, honor and principled Biblical behavior.

    If you don’t feel pride at being an American, that’s your personal choice, and I have no problem with that. After all, this is America. That, however, is not my choice. Insofar as such well-deserved pride is a good positive feeling to have, you would be missing out.

    However, if you don’t care if America wins (whatever “wins” means is subjective) the wars we are waging against terrorists and Iraqi insurgents, then that would be something I’d find odious. I would find that even more odious than if you didn’t care about our nation losing the advantage and prestige of being top dog and being suckered into the crowd of second-rate nations. But your comment didn’t go there or there, and I doubt you feel that way, so, so far, fine by you and me.

    Lionel, you also asked,
    “How would they get away with it? The inventors supported the assignee in its assertion. This appears to be a case of an interpretation of the letter of the law trumping the spirit of the law.”

    Please bear in mind that this case did not turn on issues relating to 119(a), including, e.g., chain of entitlement theories of constructive trust and equitable assignment. Period.
    As mentioned above, this case reminds me of the roasted gopher dialogue in “O Brother, Where Art thou?”; the circumstances here raise one’s interests in 35 USC 119(a) without bedding ’em back down.

    This case turned on the controlling law relating to what was, and mostly WHAT WAS NOT, presented below. Now, you and I don’t know in its entirety or with certainty what was and was not presented below. However, I take it on faith that the CAFC Panel did know, or at least they knew more than you and I now know. And I’ll bet you have at least that much faith as I do.

    Are you suggesting that the CAFC Panel should have fudged regarding allowing issues that were raised afresh on Appeal? That can’t be good. Fudge a little here, fudge a little there, and before you know it, our Constitution will become all fudged up, a lot more so than what the current Supremes have fudged it up already.

    Do you think we should abide the Constitution? I think you do, I sure hope you do, because if you don’t, I’d also find that seriously odious.
    Be that as it is, here is what I wrote to DJF above about the Scimed v Medtronic case at hand:

    Be honest with yourself; if you represented Medtronic, and the CAFC
    “… try[ed] very hard to find a reason to allow the [Scimed] argument to be made on appeal …”
    wouldn’t you feel screwed and scream bloody murder?
    How would your client feel if you, his attorney-advocate, allowed the court to fudge-fuc him.

    So, what will it be, “fudge?,” or “no fudge”? Live by law, or quasi-law?

    It reminds me of the story which I’ll tell with some embellishment-license for increased fudge-effect:
    A blowhard boasting attorney told me this story while he was soliciting my business. By hook and by crook, as his story goes, he beat an opponent attorney in one case so bad that the opponent’s client went out into the parking lot after losing, took his gun out of the glove box and shot himself dead.
    I didn’t have the presence of mind at the time (I wish I had) to tell the braggart that it would have been much, much better if the client would have done the world a favor and shot him, the braggart, dead. Without a doubt, I certainly would have (only kidding).

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  35. Everybody notes that pharma and tech have diametrically opposed shopping lists. What strikes me about this blog is another adversarial pairing. In the one corner, Inventors and trolls (here IT), who don’t fear bogus patent infringement suits brought against them. In the other corner, real, profit-making, tax paying, employment- generating, large middle-sized and small innovative manufacturing industry (here MI), which to survive needs to make massive investment fast, and has to judge on the basis of the A publications of patent applications what is the level of infringement risk associated with that investment. It’s MI that makes USA rich but, here in this blog IT dominates and MI isn’t heard much. Dennis, not much connection with reality, but fun nevertheless. Continuation practice as it is now is not the reason USA is rich.

    Reply
  36. Malcolm,

    I have to agree with Mr. T and the point raised in ironicslip’s statement. FranklY, I find it hard to believe anyone outside of Lemuelson has the money and stamina to engage in such tactics.

    Further, in all the talk about prosecutors wearing down examiners, where is the concern with examiners who wear down prosecutors?

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  37. a few observations without merit

    1) bio & pharam >> anyone who posts here that truly believes that ANY reform could pass without bigpharma signing off is busy watching Entertainment Tonight (not that there is anything wrong with that, but perhaps you were stuck in an old Bill O segment). Drug patent extensions and profit-enhanced no-negotiation over pill pricing perfected by this administration’s medicare bills keep them *silent*. plus no congressional office ever called me about patent extensions for applications my company has pending for 7-11 years (actually there are several in my docket)… even if they called them special they’re only special in a red-headed step child kinda way.

    2) i’ll flame the lemley-moore paper and point to the obvious >> the big patent cases find their way into the US becase of MONEY (litigation capital of the world)– the unfortunate politization of the PTO, large multinationals (who are essentially citizenship-neutral and hold ip wherever taxes are lower and infringement pays out predictably) have had very little if any skin in this game. the IT business arrangements made by this doj (bad word?) conitnue to pactice monopolistic behavior but rant and rave and cry about pay-outs clearly derived from said practices or why have 100s of attorneys on staff and why pay-out anything if juries ruled your way — clearly not the case. bottom line: anyone here arguing about the massive land grab by copyright holders? does anyone seriously believe this is any better than how health insurance was gutted over the past 25 years? how many lawyers does it take to file a patent without the rules? how about how many others must be used to work at more appropriate hourly wages? (IDS anyone?) who is doing the innovating?

    3) “wearing down examiners” — huh? governments work for tax money (fees or whatever you want to call them for prosecution) as do the employees of the government — examiners. wearing down an examiner is no different than wearing down an applicant (who must work for profit — and if he aint a monopolist, it aint like a tax to get paid)– difference is the lawyer will get paid as costed to the applicant, the examiner will get paid regardless of the cost, the government will now possess what the applicant has given, and the inventor may have some scintilla of responsive argumentation as to why he didn’t get his (read: patent, red ribbon, pat on the back, choice to go through it again via bpai, or even more litigation). there are so many arbitrary restriction requirements, bait and switch by supervisors squeezing examiners into the production quota and no attention paid to the amount of time to get to first actions. innovation whatever the measure, even the gold star of kindergartne may be motivation enough, is being trampled by unwarranted and unjustified costs which have no association with the parties that actually flood the system — gee just do an application or assignment search and there wyou will find your problem. the patent that causes the case which causes the huge filings by the opponent and any others in the space which causes additional resources being drawn to a particular litigation blah blah blah … if you kill the goose make sure it isn’t the one who lays the golden eggs. duck duck gooooose.

    egregious and sad that the envy of the world, the USPTO, no matter who posts what here, is being de-fanged and made irrelevant by a 1000 cuts. Then again, what hasn’t been defanged and politicxized over the past decade? litigation is not going away. substituing the word quality does nothing to change this fact.

    in light of all the commntary of many on this board who do not have inventor clients… not surprising. but when the very large companies start to conflict out your own firms as they take the “registration-lite” system and streamline their costs to ge the real juicy lite applications with no summary or abstyract and self-congratulatory comments regarding how nothing limts any claim not even the abstract… many of you will too lament the day patent prosecution seemed to be of such a nuisance to innovation. wiat until the new outsourcing introduces itself as the old outsourcing with a foreign law firm who can simply “do this stuff cheaper”… ask some engineer firends… how about some radiologists who have reads performed by doctors in other countries… how hard is it to store an IDS for a family of patents? electronically?

    the inconsistencies, lack of any objective standards, clearly infringing filers use of language (well weasel words, perhaps), filings failing to cite any prior art, and the ever present luck of the examiner draw would seem to present enough hurdles that the lucky patent holder also faces crumbling rights attached to the letters patent when trying to put together a real case for infringement.

    innovation is difficult to manage or identify ergo change the patent system … rotflol

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  38. MM, I did not say it does not happen. Years ago I saw it as an examiner, but after publication it became relatively rare that the same crap would be re-filed time and again.

    Ha ha, waiting for an examiner to die. With high PTO turnaround, case transfers happen now more than ever. These days, getting a new examiner would more likely make the situation worse. Sometimes is a welcome relief when you have a nutty examiner.

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  39. “I’ve never tried the “wearing down – not appealing” approach, nor would I suggest it to a client”

    It’s not about “wearing” Examiners down. It’s about waiting for an Examiner to retire or die so that a new relatively naive Examiner gets on the case and isn’t aware of the entire file history (which can be voluminous in some instances). If any prosecutors here want to pretend that this strategy does not lead to occasional success, they are free to do so.

    But they are pretending.

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  40. “If I am reading that right, this would require a claim-by-claim analysis to determine which claims have priority back to which date. That sounds expensive and fraught with peril from an inequitable conduct/malpractice perspective.”

    OOOooooo boogah boogah! Inequitable conduct is sooooo scary.

    You know what’s really scary? Getting sued for infringing a patent that is garbage and which claims priority back to a specification that doesn’t support the asserted claim. Have any of your clients ever been in that situation? Do you know how that situation arises?

    Let me tell you how it arises: the applicant pretends not to know what the appropriate priority date and kicks up dust and uses vague language (e.g., referring to the “original specification,” whatever the hell that is).

    This is a good rule and a long overdue rule. The alternative, of course, is to simply ban the CIPs (I would have no problem with that either).

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  41. Anon, I agree we should think first what is best for society not patent seekers. For this reason I think bureaucrats should not even dream they have fact finding and policy analysis capabilities. Limiting continuation practice because of a Lemley-Moore paper is like treating dandruff by decapitation. Make no mistake about it, industries with long product development time lines will be deeply hurt by the continuation rules.

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  42. Anyone else bothered by this part of the proposed rule change? It sounds potentially more troublesome to me than the Markush changes:

    Section 1.75 … Paragraph (d)(2) is also proposed to be amended by adding the proviso that if an application seeks the benefit under title 35, United States Code, of a prior filed application and discloses subject matter that was not disclosed in the prior-filed application, the applicant must identify which claim or claims in the application are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application.

    If I am reading that right, this would require a claim-by-claim analysis to determine which claims have priority back to which date. That sounds expensive and fraught with peril from an inequitable conduct/malpractice perspective.

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  43. Limiting the number of claims limits the number of inventions that can be claimed in one application. At the same time, if I correctly understand the proposed rules (which are still secret!), the PTO will try to force separately filed related applications into one. This is a catch-22.

    Not all continuations are “re-dos.” I’ve never tried the “wearing down – not appealing” approach, nor would I suggest it to a client, but I have filed numerous continuations to obtain varied coverage for multiple inventions. [I suggest appealing as soon as possible.]

    After all, there is no longer a submarine problem, and most all applications are published. Why all the bugs up the PTO’s rear?

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  44. Think about it this way.

    When you commit capital murder, the decision of whether or not you are guilty and whether you get the death penalty is left up to 12 lay people, even though you have a constitutional right to due process of law. You’re only recourse is a highly unlikely appeal (less than 2% of criminal cases get reversed on appeal).

    When you are trying to get a patent, the decision of whether you get a patent is left upto a patent examiner (at least one, maybe more), even though you have a statutory right to get a patent subject certain conditions of patentability being met. You’re recourses include a limited number of “redos” in the form of continuations, as well as a somewhat more likely appeal, as well as multiple level of appeals (BPAI, Fed Cir.).

    Now, can you quit whining about the PTO’s rules?

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  45. How does it feel to be on the “dark side” anon? Why has the PTO become so extremely anti-patent? What gives man! It’s un-American.

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  46. It is draconian to limit a patentee’s options simply because the PTO examiner makes a mistake. :)

    Let’s raise the fees to one million dollars and permit no continuations! That will surely reduce the number of mistakes. You act as thought the PTO is the last exit on the road. It shows how little you know about how these documents are applied, if at all. Mistakes will be discovered and dealt with accordingly. Sometimes a mere letter inviting someone to licence results in relevant prior art sent back in response, art the PTO mistakenly missed. Only a fool would proceed to enforce a claim reading on that art at that point. There are many other mechanisms available to check bad claims, such as reissue, reexamination, and litigation.

    You will never be perfect, but imperfection should not relieve you from acting as a professional (or good parent) and not give in to a whining applicant with unallowable claims. Taking away someone’s property is not the same as pulling a sucker out of a baby’s mouth.

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  47. First, notice that I gave two reasons, one being that if you have hundreds of claims and multiple continuations, the likelihood that an examiner simply missing an overbroad claim increases. Of course, I will immediately hear that it is draconian to limit a patentee’s options simply because the PTO examiner makes a mistake. But, pray tell, why should competitors and consumers always suffer the PTO’s mistakes, and patent owners never? And if a mistake is inevitable when there are lots and lots and lots of claims (and can anybody deny that mistakes are pretty much inevitable in those circumstances), and either the patentee or consumers have to lose out, why is some kind of reasonable limit on the number of claims so unacceptable?

    Second, “wearing down” is different from legitimate persuasion because of the irritation factor. Anybody who has a child who kept whining and whining for the new toy and eventually bought it will understand the difference. If you have a legitimate reason, you should appeal instead of filing five continuations. I can understand one continuation, but multiple continuations as a persuasion tool seems pretty dubious to me.

    Finally, I do not think it is an article of much controversy that Congress can charge as much in fees for granting a patent as it likes. So, yes, I can hear a legitimate complaint that the PTO charges too much and does too little work for it, but to say it is unconstitutional is a joke.

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  48. Why is “wearing down” an Examiner such a bad thing? How exactly is wearing down different than rightfully convincing someone who has no grasp of the fundamental basis for the technology that he is downright wrong? For example, the one who repeatedly argued that because a GenBank sequence entitled ____mRNA sequence did not have any “U”s it could not be RNA (anybody out there found any “U”s in a GenBank sequence lately?), despite submission of excerpts from GenBank’s manual stating that T=U in an RNA sequence. Or the one that fundamentally didn’t understand that a cDNA does not includes introns? Need I go on? This is the kind of crap that causes a backlog of applications and the necessity to file RCEs and continuations.

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  49. There was a PCT application I became aware of where there were indeed a large number of species in several Markush groups sent to the US receiving office and assigned to the same examiner as the co-pending US national application. The invitation to pay additional fees came out to something like 45 trillion USD to have all the inventions searched. Can anyone out there explain how and why the full and complete search of a single patent application, regardless of scope or the extent of the art could justify a sum that exceeds the gross world product? Would it really require the equivalent effort of every man woman and child of working age on earth for more than a year to search and prelimianrily examine any single patent application?

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  50. Anyone who seriously contends that an applicant can “wear down” an examiner has never practiced before the PTO.

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  51. SF:
    My patents do not contend to be quasi-legislative acts required to comport with the provisions of the United States Constitution. I suspect that you are probably associated with the USPTO. Please note that my colloquialisms and curt snippets are intentionally meant to be disarming. However, I am dead serious with respect to exacting pleasure in redressing Constitutional transgressions of this agents of the United States government. I never dreamed that the USPTO would permit provide opportunities to achieve the same. For that I am most greatful. My standard for vagueness was not recited. The standard is as follows:
    A statue will be hold void for vagueness if the conduct forbidden by it is so unclearly defined that persons of common intelligence must necessarily guess at its means and differs as to it application. See Connally v. General Construction Co. 269 U.S. 385 (1926).

    So you must understand SF, I bide my time. Some people dream about sitting on the beach. I, on the other hand, have never been happy about the portion of my working life the agents of this government waste away by exacting unreasonable amounts of tax money from me. I live for the opportunity to get some of that money back.

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  52. Come on anon, is that the best you can do? The IRS? That analogy is lame, but I’d bet those IRS agents examine (in the small sample they actually do examine) many returns in a short period of time. And except for a miniscule portion tax paid, IRS fees mostly involve penalties for not filing something. And with what Constitution basis can you square your conclusion that we should pay you for work we perform?

    I agree requesting reduced fees would not resonate with the extortionists running the PTO (i.e., Congress). Nevertheless, a registration system would be the way to go. Post grant opposition periods would weed out some bad ones, and you could charge a huge fee for regular examinations by the good examiners you retain.

    Lemley’s proposition of “wearing down” an examiner is BS. If an examiner makes a mistake, it is what it is, a mistake. When I was an examiner, receiving a related continuing application never wore me down. They were easier to examine! Geezus!

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  53. “True, the empirical evidence is not strong on either side; but to risk flaming I will cite the Lemley-Moore paper for the proposition that that multiple continuations ‘wear down’ examiners. Thus, limiting continuations certainly has the potential to increase patent quality.”

    Lemley & Moore’s speculation that applicants wear down examiners is not based on solid evidence. Even if it were, an occasional wearing down doesn’t justify striking down continuation practice, which serves the legitimate purpose of allowing an applicant to keep a continuation pending to get the full benefit of his or her 20-year patent term.

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  54. I’m a bit troubled by the rationale and explanation presented for some of the changes.

    For example, on page 44996 in the middle column it says:
    ” However the “means for attaching” limitation would not subject the claim to the provisions … because the claimed invention does not require, and is not limited to, the means specifically disclosed in the specification.”

    Isn’t this statement in direct opposition to how means-plus-function claims are interpreted?

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  55. Malcom Mooney: Perhaps not now, but in the future I see that as a real possibility. Take a typical discovery stage pharma application. They’ve synthesized hundreds of a compounds, done SAR, have preliminary data indicating at least one efficacious property or desirable characteristic. But they don’t yet know which one – if any – will actually make it to clinical trials. Maybe the best compound to cure your Alzheimer’s is the one that has not yet been synthesized but clearly would fall within the scope of a claim including a soon to be prohibited Markush group defining a genus of related compounds. In order to get to the clinic, they need $$ that they will never get unless they can secure some protection against their competitor’s ability to take their disclosure and run with it. So what choices are they left with? File a couple hundred applications each claiming a single compound and hope that DOE will give them a little space around each? I don’t think so. Keep their invention secret 5, 10, 15 or more years from then they have a better idea of which compound is the commercially viable product? If so, how will they secure funding to get there? Dear Mr. VC or Mr. Banker or Mr. Shareholder, we have these great compounds with a lot of potential to save lives or increase quality of life, but we can’t tell you what they are because if we do it would jeopardize the proprietary nature of the invention we want you to cough up millions of dollars and invest in? Are you going to buy into that? No, what will happen – or should I say, is already happening – is that the flow of dollars into research will stop and there won’t be a new antibiotic to cure your resistant virulence or if there is, everyone will have to have it (not something else – because there won’t be a something else), so the guy lucky enough to have hit upon it and personnally financed it through to FDA approval will be able to charge whatever he wants.

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  56. I agree that there is a difference between good examination and “simply making applicants jump through hoops,” but I do not see the continuation limits is a useless exercise when it comes to patent quality. If you have hundreds of claims in a series of five, six, or seven continuations, it is not beyond reason to believe that examiners might miss an overbroad claim in the process. True, the empirical evidence is not strong on either side; but to risk flaming I will cite the Lemley-Moore paper for the proposition that that multiple continuations “wear down” examiners. Thus, limiting continuations certainly has the potential to increase patent quality.

    As for making applicants do more of the work; I really don’t see why it is so controvertial about this. I am “entitled” to a tax refund if I meet certain conditions, but the IRS makes me file a tax return and do the work, and it may use the information in that tax return against me to reduce my tax refund. If the complaint is ultimately that the PTO charges too much in fees for too little in work, that is a legitimate complaint but one that is hardly going to resonate.

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  57. Anon,

    There is a difference between challenging the patentability of applications on substantive grounds like novelty and obviousness and simply making applicants jump through hoops. The rules regarding continuations and number of claims examined will do nothing to increase patent quality and the USPTO has not provided one scintilla of evidence that they will.

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  58. anon: “if you do not acknowledge that the PTO is supposed to serve the public interest which includes weeding out bad patents, not just (not even primarily) the PTO’s own fundraising interest and the interests of patent owners.”

    Of course, the PTO’s responsibilities include ensuring claims filed in an application have proper scope of protection before allowing them (a patent does not exist until an application is allowed, so “weeding out bad patents” would seem to involve reexamination or some litigation). What stinks in this whole mess is that the PTO wants it both ways. That is, it essentially wants applicants to perform most of their duties pertaining to the “unless” part of the US code, while continuing under the ruse of an examination office that charges fees for “examination” and “maintenance.”

    If you consider the accelerated examination program, it is clear the examiner would have little to do but weigh what the applicant submits and decide whether to allow. This is not genuine examination, but rather a form of registration because it is the applicant who examines the application. The PTO is merely performing a ministerial duty.

    If accelerated examination is what the PTO wants, then please gut the current system and require it for all. Please end these Rube Goldberg measures before you drive everyone nuts. And while you are at it, reduce your fees considerably.

    The new IDS rules, while particularly hideous for many applicants in the present examination system, would appear to make sense within a registration system.

    So, it seems all the pieces of the puzzle are there to create a registration system. You only need to implement them as one unified system, the PRO (formerly known as the PTO).

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  59. “If you think drugs are expensive now, wait until we have to claim each species individually as a separate invention.”

    On the other hand, won’t costs down if drug companies are spending less money defending themselves from absurdly broad garbage patents whose prosecution histories are filled with unscientific baloney and dust kicked into the Examiner’s eyes?

    The answer is: yes, they certainly will, at least according to the same “theory” you are relying on for your argument re prosecution costs.

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  60. “If you think drugs are expensive now, wait until we have to claim each species individually as a separate invention.”

    Prosecution costs drive drug prices?

    That’s a new one.

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  61. The primary benefit that the public will lose relates to innovative new inventions, particularly in biotech and pharma. If you think drugs are expensive now, wait until we have to claim each species individually as a separate invention.

    The bottom lines is that it costs a lot of money to develop a new drug and see it through to FDA approval – on the order of $1 billion. Investors will not sink money into anything along that path unless they are sure that they will have a period of exclusivity in which to recoup their investment. VCs have already backed out to large extent on support of pre-clinical research (the so called “valley of death” for most small pharmas and biotechs). The catch is that unlike other industries, patents for pharmaceuticals and biotechnology must be filed long before anyone knows whether a promising invention will ever pan out.

    So what is that going to do to these industries? I hope Doll and Love and Dudas are proud of their accomplishements at the PTO when one of their family members has a disease for which we might have found a cure, BUT FOR the unavailability of funding to promote the useful art and science of pharmaceutical R & D.

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  62. To reply to those who say I should read the code, section 102 says you are “entitled” to a patent only if it satisfies the conditions listed, and section 103 is further a “condition” of getting a patent. My problem with the attitude in by the prosecutors is that for every PTO rule change, they seem to ask only three questions: (1) “how much harder will it be for me to get a patent for my client?” (2) “how does this affect the amount of money the PTO gets?” and (3) “can I persuade the PTO that another method will get them the same amount of money but make it easier for my clients to get the patent?”. Obviously can’t fault lawyers who serve their clients interests, but it is not persuasive commentary if you do not acknowledge that the PTO is supposed to serve the public interest which includes weeding out bad patents, not just (not even primarily) the PTO’s own fundraising interest and the interests of patent owners.

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  63. KCB, Wow, what a crazy standard for void for vagueness. What if your patents were held to such a standard?

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  64. Good grief Malcolm – while the current patent atmosphere has me a bit blue, I would probably turn suicidal is I went and read some of the lender blogs.

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  65. “Does anyone else get the feeling that the three branches of the federal government are playing some sort of macabre game to see which one can gut our patent system the most? ”

    I wonder what the subprime mortage lenders blogs are like these days.

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  66. “What does “not incorporate the specification by reference unless absolutely necessary” mean? ”

    I’ll tell you I think it means: it means that the practice of claiming “A method of determining X by measuring the level of one or more of the chemicals/mRNA/proteins listed in Tables 1-45″ is going to fall by the wayside.

    Is this a “terrible” thing for biotech patent applicants? Hard to say. I think the answer needs to take account that in a typical situation, given the present restriction practice, only a tiny tiny percentage of the individual items in those Tables are ever examined (or worth anything in the first place).

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  67. With respect to IDS rules there is a Void For Vagueness Issue. Look am I gonna have come over to the USPTO and explain the Constitution to you people. Christ if Bush, your boss is any example of the proficiency of Excutive agencies with the Consitution we are in deep trouble. The Constitutional infirmities in these rules is down right embarassing . Did most of your rules drafters study in Miscow?!!! Did someone inhale?
    The “meaningfully different” explanation with respect to explaining differences between the references cited and the claims. That requirement is void for vagueness. I mean what is going one in the USPTO? It seems that the USPTO has issues with the Constitution. Now you can get around the 13th Amendment prohibition against slavery using ethical rules thereby forcing us to perform your job and still charge our clients money for examination (please note the jury is still out on this one, because I am not sure your 10.18(b) rule does not violate an individual’s right to counsel-more on that later), but you cannot really believe that the courts will allow you to provide a vague requirement and leave the USPTO as the sole interpreter of whether the vague requirement has been satisfied? Get a grip.

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  68. “If such were the case, then we’d have a registration system and there wouldn’t be a need for the many high-dollar patent attorneys that love to lament on his board.”

    Are you kidding Beaverhausen? That would be a most welcome change. Lots of work for us in a registration system. The PTO may not need you with a registration system, but we may.

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  69. I believe the evil forces of Skeletor are at work here, and the name Love keeps surfacing.

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  70. Anon said: “The attitude seems to be that the PTO is there to serve patent owners and grant patents. That is simply not the case…“

    Actually, it simply is the case. See 35 USC 2a1

    “The United States Patent and Trademark Office…shall be responsible for the granting and issuing of patents…”

    The quote from Mark Nowotarski does not imply that the PTO rubber-stamps everything that comes through its doors. If such were the case, then we’d have a registration system and there wouldn’t be a need for the many high-dollar patent attorneys that love to lament on his board.

    The fact of the matter is that the PTO “shall be responsible for the granting and issuing of patents . . .” . . . that meet ALL the requirements of patentability.

    The PTO does not exist to serve patent owners, as anon correctly points out above. Rather the PTO exists to serve the public interest, i.e. to ensure that patents are granted only for those “inventions” that are (by law) patentable and not to grant monopolies for things that have become part of the public domain.

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  71. Does anyone else get the feeling that the three branches of the federal government are playing some sort of macabre game to see which one can gut our patent system the most? Seriously – this year has been unprecedented in terms of the major sea changes taking place. I’m no conspiracy theorist, however, the influence and sway of certain large corporations is very evident in some of what is going on (although not entirely). Of course even those corporations clamoring for change are not at all pleased with some of the proposals being implemented by the PTO and some of the patent reform effort in Congress. A few years ago, the chief patent counsel for a major corporation was downright giddy (and gloating) as he explained to me how he and others in a certain industry group were working on revisions to US patent law – and they were absolutely certain the changes would be implemented. I suspect that many in that group are starting to wonder how they may have unleashed a beast. Too bad they forgot that the law of unintended consequences is still alive and well.

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  72. Anon said: “The attitude seems to be that the PTO is there to serve patent owners and grant patents. That is simply not the case…“

    Actually, it simply is the case. See 35 USC 2a1

    “The United States Patent and Trademark Office…shall be responsible for the granting and issuing of patents…”

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  73. “One thing I always notice about these prosecution-dominated threads is the sense of entitlement that is reflected.”

    Why does this surprise you? The law states this plain as day:

    “A person shall be *entitled* to a patent unless -”
    35 U.S.C. 102 (*emphasis* added)

    If there inventors and their representatives exhibit a “sense of entitlement,” it’s just because the law says they are “entitled” to do so.

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  74. One thing I always notice about these prosecution-dominated threads is the sense of entitlement that is reflected. The attitude seems to be that the PTO is there to serve patent owners and grant patents. That is simply not the case–though until recently the PTO was exhibit 1 in the catalogue of regulatory capture. The PTO, above all, is supposed to police patent-seeking inventors and make sure the worthless patents are weeded out. Before there was a PTO, pre-1836 Act, all patents got granted automatically. That didn’t work so well, and examination was introduced to fix that problem.

    Now, of course, the PTO is also supposed to grant worthy patents. But I notice no commentator yet has talked about the cost of bad patents and whether the PTO’s changes will reduce the number of bad patents–it will–and whether on balance this is good or bad for society, and whether it is better for society than the other alternatives being proposed (I, for one, do not know, and doubt anybody else here has good data on this). The fact that the PTO could raise more money by a different fee structure, or that patent-owners get shafted by limits on continuations, are really irrelevant unless *society* on balance also loses.

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  75. “Second, the right answer to this kind of question is to set fees.”

    Considering past history with PTO’s management, they’d raise fees to cover the extra burden but refuse to allocate any extra time to the examiners for the extra burden.

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  76. What does “not incorporate the specification by reference unless absolutely necessary” mean? If I recite that a substituent is “optionally substituted alkyl”, and I define in the spec what “optionally substituted alkyl” means, am I now going to have to repeat that definition in every independent claim?

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  77. Can’t say I’m surprised. The EPO has a roughly similar sort of Rule (R29(2) EPC) that constrains multiple independent claims in the same category … and so you sometimes end up with Markush-type lists (which also saves claims fees if done on filing or shortly after on PCT-based cases) … and these really work on the fee side but can be artificial … and the EPO does sometimes object that lists of alternatives contravene the “spirit” of the legislation even if they conform to its letter.

    I have also seen similar approaches in US claim sets to cut fees down, and some of these editorial techniques probably do cross some kind of line between common sense and fee-dodging. Whether one can trust the USPTO to draw that line with legislation (whether ordinary prohibitive rule-making or fee-based disincentives) is an open question Certainly I think R29(2) EPC is not a good piece of work or well applied by EPO Examiners. The USPTO is after all the PO that can barely get its head around even the simplest concepts of multiple claim dependency, even though well-written multiply dependent claim sets are shorter, more elegant and easier to examine than the more expanded versions that US practice requires.

    This said, the “substitable” criterion looks like quite a sensible one to me, though “difficult to construe” is awfully subjective and the two along the lines of “no further alternatives” seems harsh on chemical formulae.

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  78. If we’re going to screw up the system with onerous continuation limitations, demand the applicant to do the examiner’s job by making the applicant search and comment on the findings (and in so doing open himself to charges of inequitable conduct down the road), and make appeal the only recourse to a lazy, incompetent or evil examiner but make it more difficult to appeal, why *not* jettison Markush practice as well? If we’re going to gut the U.S. patent system, let’s go whole nine yards.

    Of course, it would be a lot cheaper just to close down the Patent Office.

    This kind of reminds me of Ray Bradbury’s Fahrenheit 451: just like in the book, in which firemen didn’t put out fires but started them in order to burn books, we’re moving to where the purpose of the patent office is to make sure there are no patents. I guess that’s par for the course with this administration…

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  79. That new BSA job that Dudas has lined up for himself after retirement from the USPTO must pay REALLY well.

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  80. no new info on continuation rule changes, but as Peter Zura reported this evening, the PTO is also moving forward with the new IDS rules (they were submitted to OMB for approval). Those new IDS rules clearly will increase the costs for inventors dramatically. Something is seriously wrong when the patent bar, corporations and inventors are nearly unanimous in their opposition to all of these coming rule changes.

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  81. By introducing these new Markush rules as well as the new appeal rules, obviously the folks at the USPTO mean business with regards to the dreaded rule changes and don’t care what the patent bar or patent owners have to say. Does anyone have any new info on the continuation changes?

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  82. > The PTO’s justification is right since a markush claim
    > with four alternatives might take as much time to examine
    > as four separate claims.

    Dennis’ statement has two problems.

    First, the statement is factually wrong (as a practical matter – leaving aside Siamese twin claims that are presented simply to keep claim count down – which I have never seen but which could exist in one’s imagination, I suppose). For example, most pharmaceutical Markush claims are directed to an active core of the molecule that is large and distinctive enough to search and examine tractably. The PTO’s oft-heard complaint that “there are millions of combinations of side groups” is usually (not always, but usually) either a red herring or a reflection of the PTO’s less-than-up-to-date search capabilities. This happens with software – the first software to do something (which would likely be the PTO’s) is wonderful when it first comes out, but gradually the old structure becomes a boat anchor to future improvements. The solution is not a rule to make it difficult to claim inventions, the solution is to throw out the old software and buy-in more modern chemical database search technology.

    Second, the right answer to this kind of question is to set fees. Section 41 gives the PTO the authority – even the obligation – to set fees to cover its costs. Unformtnately, the fee adjustment authority doesn’t cover Markush claims. But there is recent history for the PTO to ask for and receive authority to set fees to cover its costs (December 2004). Generally, applicants are pretty willing to pay the PTO’s costs to examine the broadest concept of the invention.

    Why is current PTO management so dead set on ignoring the most rational and cost effective solutions to its problems, and instead looking for the most baroque and costly?

    To answer my own question: I had a short discussion with John Love about this rule earlier this year. I don’t know details of what will emerge tomorrow, but he clearly revealed his overall attitude in just a brief conversation. He is assertively anti-inventor. His view – unvoiced but clearly communicated – is that the PTO should raise costs for inventors at every opportunity, the health of the system be damned.

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