Peer-to-Patent Begins Expanded Pilot

Even the most ardent supporters of the current US patent system will readily admit that the patent examiners do not see or consider all of the relevant prior art.  This is a growing problem for patentees with important or valuable patent rights as (1) courts increasingly see invalidity as the most likely non-settlement outcome of patent litigation and (2) the Supreme Court questions whether the clear-and-convincing standard for invalidating a patent applies when the USPTO failed to consider relevant patentability questions.

One project directed toward assisting the USPTO in improving its examination is the Peer-to-Patent project operated through New York Law School (NYLS). The USPTO and NYLS have just announced a new expanded Peer-to-Patent project that will open-up 1,000 patent applications to "peer-review" through a novel prior-art submission and commenting system created as part of the project.  To be clear, Peer-to-Patent is not intended to replace the patent examiner's role or the USPTO's examining authority. Rather, the system is designed to support examination by providing prior art deemed important by the peer community and by generating a discussion of how that prior art is related to the invention as claimed.  According to the USPTO press release: "Volunteer scientific and technical experts [will] discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination."  Although the written comments & discussions are not sent to the patent examiner, examiners will be free to read those comments as part of the examination process.

Gold Plating: For applicants, Peer-to-Patent offers a potential mechanism to bolster the credibility of their patent rights. I can imagine the patentee's top litigator explaining to the jury that — in addition to the ordinary rigorous examination process — the applicant volunteered its patent for the gold-standard of academic review — public peer-review. Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection.  They would rather have a likely invalid patent than no patent at all.  I do not believe that pessimistic view is representative of most of patent applicants.  Instead, most applicants have reasons to believe that their inventions are patentable and prefer strong, predictable rights over facially questionable ones.  The pessimistic view also presents a false patentable/unpatentable dichotomy.  Rather, in the prior pilot, adding Peer-to-Patent to support examination most typically lead to narrowing amendments in the claim scope.  The final claim issued set is hopefully one that is more likely valid while still being valuable to its owner.

It is unclear to me whether a negative inference will also be created — with judges inferring that a patentee who failed to participate in the peer-review system did so because of a lack of confidence in the patentability of its invention.

Accelerating Examination: In addition to the "gold plating" perception discussed above, it appears that the USPTO is offering a queue-jumping incentive to participating patent applicants. Applications that are part of the program will be "advanced out of turn" for initial examination on the merits.  Following this approach, application submissions for the first pilot ended in June 2009 and all of those applications have received at least a first action on the merits.

Objections: Over the past week, I spoke with a number of participants in the earlier US Peer-to-Patent pilot.  I was initially concerned that the reviewer-comments might look like ad hominem attacks with little factual support (as often seen on certain blogs).  Others were concerned that they would see a tremendous flood of prior art that would greatly increase the workload of prosecuting attorneys.  Neither of those concerns were realized. Rather, the reviewers and review communities appeared at with a high level of professionalism, and only a few of the applications under review received more than six prior art submissions.  

Patent Attorney's Duty: At this point in the project, I suspect that patent attorneys and agents are almost under an ethical duty to inform their clients of two-aspects of the project: (1) that applicants can volunteer their own applications for peer-review in the project (under a fairly tight time-schedule discussed below) with the benefits and objections discussed above and (2) that the patent applications of competitors may be available for peer-review.  In the US there is almost no history of third-party participation in the initial patent examination process. That approach is almost unique in the world. As an example, applications at the Japanese Patent Office (JPO) are open for third-party submissions. Over the past year, the JPO has received third-party submissions of prior art in over 8,000 pending cases. Most of the time (~75% of cases), the submitted prior art is used by the JPO examiner in making a rejection. 

Details of Participation in the New Pilot: The new pilot, which begins next week, relies upon patent applicants to volunteer their cases for review. The real timing trick is that applicants must file a consent-to-participate with the USPTO 30–days of publication. (Consent can be filed before publication; there is no fee).  Eligible applications must be published between September 23, 2010 and September 30, 2011. Once the peer-review begins, it will continue for a three-month period. The pilot has expanded to include software, business methods, biotechnology, bio-informatics, telecommunications, and speech recognition technologies.  To participate, the application must have been classified in one of the following technology classes: 260, 370, 380, 424, 435, 455, 504, 514, 518, 532, 534, 536, 540, 544, 546, 549, 554, 556, 560, 562, 568, 570, 702–705, 709, 713, 726, or 987.  The program will have a limit of 1000 participating applications with no more than 25–applications per company.

Links:

  

181 thoughts on “Peer-to-Patent Begins Expanded Pilot

  1. Ping I will be testing my e f and g theory shortly. I have already identified two patents that are most interesting.

    Reply
  2. Bob,

    I ha_te to say that you be part of the problem, caving in like that, but I understands money don’t grow on trees for everyone out there.

    Just a cryin shame that “my supervisor says” kinda crrp still flies.

    Reply
  3. If the Peer-to-Patent program worked like it was intended, it would be a great resource for finding prior art and making the patent office more efficient. Unfortunately my experience is that the program creates more problems than it fixes. Two people posted “invalidating prior art” for my patent application. This art was related to the invention, but definitely was not invalidating. The posters did not understand patents, and it appears they did not even read the patent claims. However, the patent examiner told me that her supervisor did not want to issue a patent that had been publicly noted to be invalid and so after months of arguments I had to arbitrarily narrow the claims to get allowance.

    Reply
  4. Kenny,

    Do you know what Q.E.D. means?

    You give new meaning to the phrase “grandfathered in,” cause aint no way you’d pass a bar now.

    Reply
  5. I will even go one further. According to historians the Ex Post Facto clause was intended to apply in both criminal and civil contexts. Here is another for ya, the 13th Amendment. There are many activities that the government requires which clearly violate this law. In fact the memorandum from Mr. Moatz about having to read every page of every reference before submitting the same pretty much violated the 13th Amendment. In addition, health insurance companies that discriminate against people because due to being genetically disposed to a disease also violates the 13th Amendment. The 13 Amendment is the 19th Century’s mind’s way of say thought shall not discriminate based upon genetic makeup.
    Let us go to the e f and g exclusions for obviousness pursuant to 103(a). Those execeptions without a doubt violate both the Fifth Amendment Due process clause for lack of any rationale basis for discriminating against people exercising thier First Amendment Fundamental Rights to free association, as well as the First Amendments Free Associational Rights. You might find this suit interesting on this point. link to newswithviews.com
    This lawsuits tests by analogy the free associational rights impeded by Obamacare. The Federal Government does not and must not coerce, induce or otherwise be allowed to affect person free associational rights. Obamacare is the second time in United States history where the government discrminates against people who exercise their free associational rights that choose not to associate with another private person. The e, f and g exceptions for purposes of obviousness under 103(a) is the first.
    Q.E.D.

    Reply
  6. Malcolm:
    I am an American. I have always been an American. All governments must adhere to the Constitution. It is not libertarianism it is constitutionality. I question your understanding and/or adherence to the constitutional principles upon which this government must adhere.

    Reply
  7. Kenny,

    You forcing me to agree with Malcolm in thinking that you don’t have all your marbles.

    Then again, I think you been this way way before Malcolm chimed in, so actually Malcolm is thinking like me, which is OK.

    Reply
  8. Ken, do you not have a driver’s license and refuse to pay taxes or are you one of those people that recites libertarian crxp but doesn’t walk the walk?

    Reply
  9. Ping, ping, ping you miss the point. If the government induces one to reliquish propery in furtherance of a right and that right is obtained through sacrifice of property and, more importantly time, and the risk that said right is valueless in increased by the actions of the government then that is definitely a taking were the right to become worthless and but for the change in risk the right would still have value.
    This is the problem with controlled inflation. The more control asserted by the government over the rate of inflation the greater the likelihood that a taking occurs when the inflation devalues property.

    Reply
  10. Ya need to apologize more often and for far more things Sunshine. Your aptitude for “Fail” be quite legendary.

    Reply
  11. Dontcha know that most everyone also feels that your posts are “pollution and nothing more”?

    I’m not talking about “feelings.”

    I’m talking about incessant and objectively pointless nonsense. I should have predicted you would be the first to jump in to defend it, ping. I apologize for failing to do that.

    Reply
  12. Hey Sunshine,

    Dontcha know that most everyone also feels that your posts are “pollution and nothing more“?

    Dontcha know that sarah needs her forum every bit as much as you do, if not more?

    You would be wise to pay more attention to sarah. At least she has real integrity.

    now sarah, you were saying…

    Reply
  13. Hey Moonie,
    I know there was a Design Patent involved. Even though I haven’t had the pleasure. I also know that I am still in Chains to try to expire YET ANOTHER STATUTE.
    And if the second is worthless then why won’t he let go?

    Reply
  14. Dennis, can you please block Sarah McPherson from commenting?

    It was never funny and lately its turned into pollution and nothing more.

    Reply
  15. BUT if it was all a Ruse. And Blue Eyes was made to appease. And it came out of Texas. Then the short guy is as guilty as them. And also why he was protected. And that is why he won’t let go. And if someone filed a design instead and ruined my rights then I still know it came out of Texas. And it was done for the Designer.
    And sticky fingers only tried to stop the second Fraud.

    Reply
  16. And kenny,

    You misunderstand the nature of the change – “However, it cannot do so without just compensation if it devalues a person’s property interest.” the change is not in the concept of devaluing a recognized entity, it is in the actual recognition of the entity itself.

    Ya don’t get the value difference between a good patent and nothing if “nothing” is what ya shoulda had in the first place.

    Reply
  17. sarah,

    You are not (and have never been) my client, although you do deserve my services.

    I’m sorry. My responses are limited. You must ask the right questions.

    Reply
  18. Next time you promise a Client(?) you don’t bend or break. get the “Whole Story.” You should get that before you make such erroenus statements and /or promises to someone as you claim to help, and that you have no hands in their Pocket. I know there are no pockets to pick here. Mine were already picked.

    Reply
  19. Ping you just don’t understand the Constitutional Republic. Of course the government can make fixes. However, it cannot do so without just compensation if it devalues a person’s property interest. To do otherwise would be socialist.

    Reply
  20. Does anyone know how many Rule 1.99 submissions the PTO receives in a given time period? (Not many I’d guess). Does anyone know where to find such information, short of filing a FOI request?

    Reply
  21. two for Tuesday:

    for sarah

    Then it’s easy to believe
    Somebody’s been lying to me
    But when the wrong word goes in the right ear
    I know you’ve been lying to me
    It’s getting rough, off the cuff
    I’ve got to say enough’s enough
    Bigger the harder he falls
    But when the wrong antidote
    Is like a bulge on the throat
    You run for cover in the heat
    Why don’t they

    Reply
  22. Maybe, someday
    I’ll be more together

    Stretched by fewer
    Thoughts that leave me

    Chasing after

    My dreams disown me

    for sarah

    Reply
  23. Malcolm,

    Sunshine, howza bouts a return of Reject-Reject-Reject and Dufass? Would that make ya happy?

    Ya just don’t get it do ya? The reason for the RCE component of the backlog is cause applicants recognize that they haven’t gotten the quality product they originally paid for. In essence, there already,/i> be a fee increase, when applicants pay again with the RCE fee. Neither hiring more examiners nor raising fees addresses the fundamental issue of quality examination.

    Your Beauregard windmill is a complete non sequitur. Ya still got 6 in your head there, and it’s starting to smell.

    Kenny,

    Even to a pro-patent person like me, your “taking” argument sounds more like gibberish from The World’s Greatest Inventor (who must be off inventing since we haven’t heard from him in quite awhile) and less like any type of position based in any type of real world law. You be advocating an absolute no-error correctin type of system is just whack.

    Anon and Anon As Well,

    It be even worse when ya factor in that those numbers are backlog numbers only and that only roughly 10% of the supplied art was even used by examiners – On the grand scheme O things, the program’s actual effect approaches zero. Even still, that program be a step up from Malcolm’s happy windmill chasin efforts of noting bad patents on a blog comment section.

    Maxie,

    Oh how them masters must love seein stats like those here that show all teh smoke and mirrors. What be the next rabbit to be pulled from the hat?

    Reply
  24. one would shudder to think how big the backlog would be if we were not in the greatest recession of the modern era.

    Indeed. Of course, the recession is going to be with us for quite a while because the worst is still yet to come out of the housing crisis.

    For many reasons, hiring more examiners and raising fees is surely the best of all the proposed alternatives to reducing the backlog, except for an immediate reversal of the PTO’s position on Beauregard claims.

    Reply
  25. Courtenay Can an applicant sign up for p-t-p and review his own application?

    This is addressed in the FAQ on the PTO’s P-t-P webpage:

    “Yes, any member of the public that is not a USPTO employee may participate in the pilot including the submission of commentary.”

    Reply
  26. When a government agency undertakes a process that devalues the actions already taken by it and paid for by the public this constitutes a taking. This is why I believe intentional inflation sanctioned by the Federal Government vis-a-vis the action of the Federal Reserve constitutes a taking pursuant the Fifth Amendment. In a similar manner a patent currently in force and subsequently seemed to be of less value becasue of a new procedure that is advertised to remedy past wrongs by the USPTO is, in my opinion, a taking pursuant to Fifth Amendment Due Process Clause.
    Just a thought.

    Reply
  27. It could be quite beneficial for patent examiners to receive prior art from this peer review program. My question, however, is whether they will actually review it. At least one recent study has indicated that patent examiners often disregard prior art submitted to them by applicants. If examiners similarly tend to ignore third-party prior art, I’m not certain how influential this program will ultimately be.

    Reply
  28. From a February 2008 news article:

    Even with its increased hiring estimates of 1,200 patent examiners each year for the next 5 years, the US Patent and Trademark Office patent application backlog is expected to increase to over 1.3 million at the end of fiscal year 2011 the Government Accounting Office reported today.

    The USPTO has also estimated that if it were able to hire 2,000 patent examiners per year in fiscal year 2007 and each of the next 5 years, the backlog would continue to increase by about 260,000 applications, to 953,643 at the end of fiscal year 2011, the GAO said.

    Despite its recent increases in hiring, the agency has acknowledged that it cannot hire its way out of the backlog and is now focused on slowing the growth of the backlog instead of reducing it.This too is but one of the goals of the Patent Reform Act currently making the rounds in the US Senate and generating tons of concerned comments about the current trends and directions of the USPTO.

    Given that the Senate action died, was reborn, died, was reborn (repeat annually), and that the Office is nowhere near its 1,200 new examiners per year, let alone the 2,000 per year figure (we are still at a negative net growth rate, aren’t we?), one would shudder to think how big the backlog would be if we were not in the greatest recession of the modern era.

    Reply
  29. For a rough comparison of this less than one per month number, it was reported in the fall of 2009 that the backlog of unfinished applications at the Office reached 1.2 Million, climbing roughly 800,000 in the last decade, which if you take a purely linear estimate, that would be 6,700 applications per month constantly over that ten year period.

    There are bigger holes in the dike to be concerned about than the finger of Peer-to-Patent can even begin to think about approaching. The orders of magnitude difference here is mind-blowing.

    Reply
  30. Anon,

    It’s worse than that – if you also figure in the duration that each application was open to the public to receive the discussions and prior art, you can easily see that the rate of interaction for each was less than one interaction per month per application.

    Less than one per month per application.

    This went on for 26 months before the plug was mercifully pulled.

    I am not sure why the Office thinks the results will be different this time around.

    Reply
  31. I’ll tell you why. It is like this:

    Every top rank Patent Office in a democratic country has its political masters. These masters regularly demand to know of their civil servants “What are we doing to stay ahead of the Chinese? Patent Office in country X is doing something. Why are you not doing at least as much as it is?”

    Hence the absurd PPH and the absurd P-t-P programme. Both useless, except to placate the masters. But placating the masters is vital, because the masters hold the purse strings.

    Reply
  32. An associate of mine, light and somewhat idle, decided to crunch the numbers available on the Peer-to-Patent website.

    As if the pronouncements at link to ipwatchdog.com were not indicative of just what a “boondoggle” this program is, consider these numbers from Version One, running just over two years (26 months) and failing to obtain even a “D” grade on the rather minuscule goal of 400 applications (57%):

    Average number of discussions per case: 3.3
    Average number of pieces of “prior art”: 2.5

    Not “thousands of”, not “hundreds of”, not even “tens of” discussions and “prior art” were generated for each application on average. You don’t even need the thumb on your left hand to show the results.

    For all of the clamoring on the anti-software patent websites about the loads of prior art available, its downright amazing that somehow no one could take the time to stop complaining and actually do something about it.

    The term “vocal minority” appears to not even be applicable, when the deafening whisper of participation makes libraries seem like rock concerts.

    For “certain websites” remaining unidentified, but beginning with Patently and ending with O, the sum total of conversations for the entire program of version one is about half of the unfinished current month.

    Someone please tell me why we are resurrecting this program?

    Reply
  33. only qualifications to be a peer reviewer appear to be the ability to make up a pseudonym and create an email account

    Ohhh Malcolm, you be all set.

    Ya got the pseudonyms.
    Ya got the email accounts.
    Ya don’t know the science.
    Ya base your opinion on reading claims.
    Your annotations are not funny or even clever.
    Ya always have an opinion that the claims don’t merit a grant of United States patent.

    This be like a career wind(mill)fall for you. Just think abouts all those fields of rye for you and your donk ey.

    Reply
  34. Oh jeez! Now that this is opening up to biotech applications I will have to figure it out. Until I have time to read and digest all the materials, here are my favorite quotes from the Peer-To-Patent training video:

    “you don’t have to know the science to be a useful reviewer”

    “Now that you’ve read the claims, you might think that they sound familiar.”

    “Eureka! You’ve found that journal article that describes exactly the same idea referenced in the claims.”

    “Your annotations don’t need to be funny, or even clever, but it does need to tell the examiner whether the claims are new and a sufficient enough advance over what came before to merit a grant of United States patent.”

    Oh, and its really cool that the only qualifications to be a peer reviewer appear to be the ability to make up a pseudonym and create an email account.

    Reply
  35. sarah,

    You should know better – It be me laughing away at the quartet. Of course, I watch where I walk, soza I don’t step in the steaming piles – some learn by steppin and scrapin, others by watchin those who have to scrape.

    Reply
  36. Thanks for the link above Malcolm, but the real gem on that thread was a bit below. Here let me make it easy for ya:

    The gathering of idiots is complete.”

    I can envision the gathering as the four horsemen – in a Monty Pythonesque way:

    Led by IANAE, the only one capable of actually riding a horse.

    Maxie – riding his horse backwards, always looking in the wrong direction.

    6 – typically falling off his horse, catching his foot in the stirrups and being trampled by his own horse.

    And far off in the distance, there is Malcolm on another frolic, his horse actually being a donk ey.

    Posted by: ping | Oct 11, 2010 at 07:31 AM

    Me quoting me – oh how scholarly.

    Reply
  37. if you were an accused infringer, your goal would be to try and invalidate the patent by using the patent as the blueprint/reference for determining obviousness.

    I believe the law requires all references/prior art be considered as potential options for solving the problem which the inventor tries to solve through his/her invention.

    have i understood the law correctly?

    Reply
  38. “And btw, determining the scope of the prior art has quite a bit to do with invalidating a patent according to the USSC.”

    There is a relationship but its implied. A search is not meant to be conducted for the purpose of invalidating the patent, though.

    Reply
  39. “does nobody think that the real objective (as required by the law) is to determine the scope of the prior art which has nothing to do with invalidating a patent?”

    lulz, a search does not even come close to determining the scope of the prior art. It determines a small scope of some of the prior art during the best of times.

    The “purpose” of the office’s search is to give AN APPLICATION (not an issued patent) a once over with respect to 102/103.

    And btw, determining the scope of the prior art has quite a bit to do with invalidating a patent according to the USSC.

    Reply
  40. why do some of you think/believe that the purpose of conducting a search is to invalidate a patent?

    does nobody think that the real objective (as required by the law) is to determine the scope of the prior art which has nothing to do with invalidating a patent?

    Reply
  41. Posted by: 6 | Oct 20, 2010 at 05:42 PM

    Never underestimate the ability of certain examiners to read your mind. ;)

    Reply
  42. you’ve never seen me analuze claims

    Uh, yeah, ping-a-ling. That fact and your incessant whining when anyone else discusses a specific pretty much tells us all we need to know.

    I think you got it now. But I also know you won’t admit it.

    Reply
  43. 6: I have for you another tip. When in a hole, stop digging. And what illusions are PTO management feeding you (or allowing you to run away with), to keep you motivated? I worry, because I detect your developing an inflated idea of your own importance and omniscience and infallibility.

    Reply
  44. To IANAE, I like your thought about offering my clients “gold plating” also at the EPO. Always interested in ways to “add value”.

    The puzzle for many attorneys looking at the EPO from the USA is this: In Europe, there is no Duty of Candor. So, many are disinclined to show the EPO any art at all. “If we don’t have to, why should we?” they cry.

    Up to you, I can flippantly reply, but before you decide, consider these factors, at least:

    1. EPO Examiners now routinely have a look at the USPTO file history

    2. Amendment at the EPO, pre-issue, is a cake walk compared with attempting a curative amendment in post-issue disputed proceedings. Best go to issue with all the best art already behind you.

    3. Those fancying a post-issue attack on validity will be dismayed and deterred, if they find that their art is no better than what was already assessed by the Examining Division (3 members, recall) prior to issuance of the Notice of Allowance. Post-issue tribunals give no deference to EPO Examining Divisions but, nevertheless, they ain’t going to contradict them just for the fun of it.

    You see, I think naked self-interest is the best tool. Not just sticks, because carrots work better.

    Reply
  45. “But, in a field in which you know little or nothing, hesitate to label others as such, in case you reveal yourself as the biggest one around.”

    When you learn what “gold plating” is all about then I’ll stop referring to you a mor on.

    Reply
  46. “So, what solution do you offer? Do you really think that the other arts are any better? What if an art unit slip down to the level you contend the computer arts are at, does that mean we should get rid of all patents for that art unit?”

    I’I can’t speak for MM but I believe he would contend that it is likely impossible for other AU’s to “slip down to the level” he contends software and business methods “are at”. This likely being because of several things including, but not limited to, subject matter eligibility, and type of claim limitations permitted.

    I would also suggest that yes, he probably feels that getting rid of patents in those AU’s would likely be called for.

    Reply
  47. “…but are not capable to also look at an extra half-dozen references submitted by biased, anti-patent competitors, and take the accompanying comments for what they’re worth?”

    I fear the “half-dozen references” will only confuse them. Did you ever come across decisions that pay a lip service to the law but blatantly used hindsight to reach the conclusion?

    Reply
  48. Here’s a stat worth thinkin about:

    The initial Peer-to-Patent program was to be capped at the first 400 applications.

    In the great rush of the extended program, they coaxed, er, um, achieved a volunteer level of 189 applications.

    189 / 400 = 47.3%
    189 / 1,000,000 = 0.019%

    Didn’t the Bard say, “Much ado about nothing” ?

    Reply
  49. Your ability to analyze claims is worse than anyone commenting here

    …especially since you’ve never seen me analuze claims, that’s a pretty nifty trick.

    More like ya just be spoutin off again Sunshine.

    Reply
  50. Nice to see you actually do some work and provide a concrete example MM. So, what solution do you offer? Do you really think that the other arts are any better? What if an art unit slip down to the level you contend the computer arts are at, does that mean we should get rid of all patents for that art unit?

    Reply
  51. Get a life, ping-a-ling. Your ability to analyze claims is worse than anyone commenting here, with the possible exception of your on/off buddy AI.

    Reply
  52. it appears that the rule that patent invalidity must be proven by “clear and convincing evidence” is rooted in US patent case law since at least 1871

    Considering the ultimate fate of eBay and State Street, I wouldn’t trust Circuit-level precedent without first checking with the Supremes. Particularly since the 1871 case was decided by a court that has not actually invalidated any issued patent before or since.

    Reply
  53. incredulous I think I’m up for responding to your typical analysis (e.g. “It’s facially invalid crxp!”)

    That’s not my “typical analysis.” That’s a conclusion based on an analysis of the facts before me. A typical analysis of a claim is right here:

    link to patentlyo.com

    Targeted video advertising

    1. A computer-implemented method of providing targeted video promotional material, the method comprising:

    transmitting a promotional item for display on a video terminal;

    determining whether the promotional item was skipped; and

    updating, with a computer, a profile corresponding to the promotional item based on whether the promotional item was skipped.

    Let me know if you disagree with the facts, the analysis, or the conclusion, and please state your reasons why. I’m looking forward to your insights, “incredulous.” Which is to say I predict you will have precisely none.

    And by the way: there are worse claims issuing than this one. This is one is interesting because it would seem to have some value if it were in fact a valid claim.

    Reply
  54. From the above, it appears that the rule that patent invalidity must be proven by “clear and convincing evidence” is rooted in US patent case law since at least 1871 (thanks James Aerty).

    Microsoft is seeking to split that 139 year old rule into:
    1. Patent invalidity must be proven by clear and convincing evidence if the patent is being challenged by prior art that was before the PTO.
    2. Patent invalidity must be proven by preponderence (or less than clear and convincing) evidence if the patent is being challenged by prior art that was not before the PTO.

    Professor Lefstin’s point was that the Federal Circuit’s rule that patent invalidity must be proven by clear and convincing evidence, even if the patent is being challenged by prior art that was not before the PTO, originated from the CCPA in 1980 and not the Federal Circuit itself, contrary to nearly all of the briefs filed in the case, and nearly all academic commentary as well.

    Without looking further into the matter, I would wager that the rule that patent invalidity must be proven by “clear and convincing evidence,” even when the defense rests on prior art not considered by the patent granting authority originated in England and was brought into the U.S. from England’s patent laws just after the founding of the U.S. The patent infringer’s defense that the patent granting authority missed something/didn’t do a good enough job and that the patent infringer should be cut some slack because of it likely is as old as the very first patent infringer.

    In 500 BC, in the Greek city of Sybaris (located in what is now southern Italy), “encouragement was held out to all who should discover any new refinement in luxury, the profits arising from which were secured to the inventor by patent for the space of a year.”

    If I were trying to upstage lax brief filers and academics (and had the free time given to law professors to indulge in research), I would start with the 499 BC legal records looking for that very first patent infringer claiming that the patent was not worth the paper (stone?) it was printed on. (Or at least start at 1624, the year after the Statute of Monopolies were enacted).

    Reply
  55. n the last three or four years, I don’t recall ever receiving a low-quality examination that then lead to a notice of allowance.

    LOL. What planet are you from?

    Reply
  56. Malcolm Mooney would like a word. As would every judge who has ever invalidated an issued patent based on examiner-searchable art.

    Shouldn’t that word be with the person actually responsible for doin the job?

    Let’s put accountability where it should be, no?

    And let’s not hear sob stories about how hard it is and how little time ya have – If ya aint got enough time – have that union of yours fight for enough time and stop already with the whiny little girl crrp.

    Reply
  57. But reality is that no applicant prefers a low-quality examination because the application won’t get through the NOA allowance hoops within the USPTO.

    Malcolm Mooney would like a word. As would every judge who has ever invalidated an issued patent based on examiner-searchable art.

    Reply
  58. Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection. They would rather have a likely invalid patent than no patent at all.

    Similarly, I’d rather have a bottle in front of me than a frontal lobotomy. But reality is that no applicant prefers a low-quality examination because the application won’t get through the NOA allowance hoops within the USPTO. A low-quality examination merely means (1) the SPE is letting the nubie examiner cut his/her teeth through a real world slam down from an applicant and (2)that the applicant will get a second non-final office action (meaning more work and more expense for the applicant).

    In the last three or four years, I don’t recall ever receiving a low-quality examination that then lead to a notice of allowance. It always leads to either a second non final office action or a final office action (which should be non final, but who’s got the time and money to petition such nonsense).

    Reply
  59. I keep saying — better and updated classification system will lead to better and quicker searching

    Reply
  60. Max: Even if somebody is paying, where is the incentive on the commentator, to do a “quality” job with the comments?
    Maybe that is why third party comments on patentability under Art 115 EPC are as rare as hens’ teeth, even though that provision has been available to the public since the get go in 1978.

    Just a thought, and this may or may not be as effective in Europe as in the US, but have you considered explaining to these people that it’s a great opportunity to gold-plate their competitors’ patents?

    Reply
  61. “I’ve got a lot to do today…”

    Tough day of trolling the patent blogosphere?

    “…but I’m pretty sure I’m up to the task and you’re not.”

    I think I’m up for responding to your typical analysis (e.g. “It’s facially invalid crxp!”) with some analysis of my own (e.g. “No it’s not.”)

    “Go ahead. Make my day.”

    Mom finally got you that Clint Eastwood DVD box set you been pestering her for, huh? Glad to see you’re enjoying it.

    “Still curious about the answer to this question.”

    Still curious why you can’t find out the answer on your own.

    Reply
  62. 6: a suggestion. In your own field, designate others as mor ons as much as you like. But, in a field in which you know little or nothing, hesitate to label others as such, in case you reveal yourself as the biggest one around. Mark Twain, I think it was, who had something to say about the consequences of opening your mouth and revealing the level of ignorance lying behind it.

    Reply
  63. Another problem is that the rules relating to third party art require that any accompanying arguments regarding the art be expunged prior to the Examiner’s review (does Japan have a similar requirement?).

    Still curious about the answer to this question.

    Reply
  64. incredulous: But I think it’s a sad commentary on the state of examination when nobody wants to submit the best art to the examiners.

    To a much greater extent, it’s a sad commentary on the procedure of examination which, completely independently of the examiner’s level of competence, lets the patentee obtain claims from an overworked and economically disinterested government employee in an ex parte proceeding that enjoy a frighteningly high level of deference when later inflicted on a non-party to that proceeding. It’s really no wonder the non-party isn’t willing to volunteer his help.

    Reply
  65. incredulous,

    Not sure which of the regular dweebs is hiding inside your sock, but how about I pick some claims issued yesterday and we can talk about their likely invalidity in light of the patent law which you seem to believe I don’t understand.

    You up for that, sockie? Just let me know. I’ve got a lot to do today but I’m pretty sure I’m up to the task and you’re not.

    Go ahead. Make my day.

    Reply
  66. Incred thanks but no apology necessary. But I do not think it is sad at all. My hundreds of opposition cases at the EPO, and following patent disputes litigated in Europe, have taught me that inter partes proceedings are the only way to explore claim validity properly. Pre-issue examination on the merits is indispensible but, nevertheless, is only a coarse filter (even in “predictable” engineering arts).

    Reply
  67. “”Thank You Very Much” and work with the PTO Examiner to get to issue with claims deemed patentable over all that additional art, but no less potent than they were before.”

    That’s what “gold plating” is about mor ons.

    Reply
  68. Incred, I owe you a Thank You. You have just shown me why, in the context of competent drafting of an originating patent application, the concept of the “dependent claim as auxiliary request” still goes completely unappreciated in the US jurisdiction (but, everywhere else in the world, is absolutely vital to the interests of one’s client the Applicant).

    Reply
  69. I fear that the negative remarks of some Professor, whom is well qualified in his field, but knows nothing about patent law, will unfairly have negative consequences on what would have been otherwise clearly patentable patents.

    Also, drawing inferences about what the Examiner did and did not consider based soley on what the Examiner cited on the face of the patent is a bit like trying to second guess a juries evaluation of a witness when the witness is no longer present and you can no longer see the witnesses demeanor on the stand. To elaborate, when a patent examiner does a search there are many references that the examiner has discounted in the process of doing the search, but that do not actually get cited. For example, if the examiner does an image search of a subclass or another group of references, only some of the references are cited on the cover of the patent, but the examiner has actually, at least to some degree, considered many other references, possibly with about as much consideration as the examiner gives the references cited in an IDS. Maybe everyone would be happier, if everytime the examiner does an image search, all of the references searched were cited.

    Reply
  70. ” The fact that anyone with a working knowledge of patent law…”

    I guess that excludes you.

    Max,

    Sorry for the misunderstanding. But I think it’s a sad commentary on the state of examination when nobody wants to submit the best art to the examiners.

    Reply
  71. After all, as Dennis pointed out, Applicant will just say “Thank You Very Much” and work with the PTO Examiner to get to issue with claims deemed patentable over all that additional art, but no less potent than they were before.

    In other words, there is no way to stop the fraud on the American public that is the USPTO at its most middling.

    I guess I just refuse to believe it. I know there will always be a certain level of incompetence and unfairness but the situation now is demonstrably ridiculous. The fact that anyone with a working knowledge of patent law can identity in less than an hour a dozen granted patents every week that are pure crxp is proof that the job isn’t being done. No way around it.

    Reply
  72. IANAE, it might be that you mean “allows you to get patent protection with a claim introduced during prosecution that includes within its ambit something described in detail in the app as filed, and is also somewhere within the scope of the broadest claim you filed originally”. I say this to explain to myself why Applicants from the USA habitually file at the EPO main claims that are absurdly, fatuously broad on the end of a specification that goes in to absurd and fatuous detail about one specific embodiment. Like a single diamond inside a huge balloon. They must see some good reason for filing claims that manifestly have no novelty.

    As for you, Incred, you misunderstand. I just said that no peer bothers to tell an EPO Examiner about the art either. It has nothing to do with the “competence” of an individual Examiner, American or otherwise.

    Reply
  73. “The rest of the world asks ‘why can you?'”

    Because we believe that an applicant has a right to any claim that is enabled and supported, clear and definite, novel and non-obvious.

    Why would you not believe that?

    Reply
  74. why wouldn’t you?

    You would, obviously. But that’s a typically American question to ask. The rest of the world asks “why can you?”

    Reply
  75. “Yes. It allows you to get patent protection for anything you’ve described in your spec, even if you didn’t invent it until much later when you saw somebody else selling one.”

    If you can get a claim that is enabled and supported by your original spec, is clear and definite, novel and non-obvious, and covers what somebody else is selling, why wouldn’t you?

    Reply
  76. “If you think about it for just a minute, a competitor is much more likely to keep the powder dry than to put its explosive material in the hands of 6 and friends.”

    So a European patent attorney thinks 6 and the rest of the examining corps is incompetent?

    I’m shocked! Shocked!

    Reply
  77. This business of “keeping something pending” for the 20 year duration. I wonder, is this one specific feature not found in other jurisdictions that makes the American patent system uniquely “strong”?

    Yes. It allows you to get patent protection for anything you’ve described in your spec, even if you didn’t invent it until much later when you saw somebody else selling one.

    Reply
  78. This business of “keeping something pending” for the 20 year duration. I wonder, is this one specific feature not found in other jurisdictions that makes the American patent system uniquely “strong”?

    I ask because American applicants do the exact same thing at the EPO, but the 38 Member States of the EPO have recently taken decisive action to eliminate this possibility from the European patent system.

    Reply
  79. Max: I’m deeply sceptical whether “academic peer review” puts anything resembling a gold plating on claims pending at the USPTO.

    I share your skepticism regarding any gold plating on those claims. In fact, I think you’d be hard pressed even to polish some of them.

    Reply
  80. What I don’t understand is where the motivation comes from, to scrutinise the patent applications of others. All these academic reviewers, why should they bother? They want access to the apps, perhaps, to gather technical info and ideas. But, once they have read the app, why then linger, drafting “comments” for the PTO? Who is paying them to do this work? Even if somebody is paying, where is the incentive on the commentator, to do a “quality” job with the comments?

    Maybe that is why third party comments on patentability under Art 115 EPC are as rare as hens’ teeth, even though that provision has been available to the public since the get go in 1978. If you think about it for just a minute, a competitor is much more likely to keep the powder dry than to put its explosive material in the hands of 6 and friends. After all, as Dennis pointed out, Applicant will just say “Thank You Very Much” and work with the PTO Examiner to get to issue with claims deemed patentable over all that additional art, but no less potent than they were before.

    So, as you see, I’m deeply sceptical whether “academic peer review” puts anything resembling a gold plating on claims pending at the USPTO. A spurious aura of quality, more like.

    Reply
  81. Not free, but not overly costly. Important applications have a way of identifying themselves.

    Reply
  82. It’s already easy to keep something pending for the duration of the term.

    It’s easy enough, but it’s not free, and you have to decide in advance which applications are the “important” ones.

    Reply
  83. “I do share your concern that such a registration track risks making it easy to keep ‘something pending’ for the duration of the term…”

    It’s already easy to keep something pending for the duration of the term. All smart, and civilized, applicants do it for their important applications.

    Reply
  84. fisher ames: An accused infringer who has an even higher burden to show invalidity because the reference was handed to the examiner during examination along with mr. helper’s comments (which were imperfect or incomplete), and an allowance still is obtained.

    As the law currently stands, would you have such recourse against Mr. Helper if he had submitted the same art with the same comments in a re-exam?

    Reply
  85. IANAE, I’m clearly thinking out loud here, but maybe continuation practice would not need to be changed. It could be that you choose your track if and when you file any continuations on a per application basis. I do share your concern that such a registration track risks making it easy to keep “something pending” for the duration of the term…

    Reply
  86. “Can you please describe the circumstances under which you would be taking the deposition of one of the reviewers in the Peer-to-Patent program?”

    An accused infringer who has an even higher burden to show invalidity because the reference was handed to the examiner during examination along with mr. helper’s comments (which were imperfect or incomplete), and an allowance still is obtained. a clean up effort.

    Reply
  87. the applicant could certainly still file future applications with different claim sets.

    That raises another interesting question, actually. How would continuation practice look in a registration system? Can you have co-pendency with a granted but unexamined patent? Would the continuation also sit unexamined (but perhaps granted) until the patentee found an infringer, and would this make it too cheap and easy to keep “something pending” for the duration of the term? Or would you have to file, say, a dozen identical specs with common priority, and then have each one examined and amended individually as you found one infringer after another?

    Or should we take a lesson from the civilized world and put an end to continuation practice altogether? Or some sort of time limit?

    Reply
  88. IANAE: “In the US, that search would be meaningless because the applicant could submit a whole new set of claims at any time.”

    Good point, I agree that the search and committing the applicant to the chosen set of claims for the particular registration would provide certainty only insofar as the registration is concerned – the applicant could certainly still file future applications with different claim sets. So, the certainty only pertains to the registration, for whatever that might be worth.

    Reply
  89. I look forward to deposing our good friends of the community about the “worth” of their “accompanying comments” and many other things about them.

    Sorry, fisher, I don’t follow you. Can you please describe the circumstances under which you would be taking the deposition of one of the reviewers in the Peer-to-Patent program?

    Reply
  90. Ned: IANAE, anybody, at any time may request reexamination.

    That’s true, but as it currently stands there is no mechanism by which “anybody” may request that the initial examination of an application be advanced out of turn. The public is only entitled to request reexamination, which at least notionally involves pointing out something the examiner missed in an application that has already been examined. I think it’s a feature of your proposed system that needs to be made explicit.

    Ned: There are intervening rights against new claims. Realistically, the public only has problems with claims that remain unchanged in scope after reexamination.

    I suppose your unexamined patents will have a similar issue – unless people get really good at drafting dependent claims, by the time you get your patent examined and made litigation-ready you’ll have to deal with intervening rights and lack of compensation for earlier infringement. And of course there’s much more prospect for change, since this is now the initial examination in view of all the art and not a re-examination only raising a single prior art reference.

    Not to mention that you can’t really threaten people with an immediate infringement action because they’ll know you still have to get through the examination process that might well still take a couple years. At least you’ll have the benefit of drafting a claim to very specifically cover the other guy’s product, but is that a fair price for essentially giving the guy a two-year, gratuitous, compulsory license?

    thoughts: Just a thought, but what if the registration route included a search by the Examiner without opinion on merits, and an opportunity for applicant to amend prior to registration in view of the search results, with no subsequent opportunity to amend (even on reexamination)?

    That sounds vaguely European. Well, cargo-cult European anyway. The only reason search without examination is worth anything in Europe is because you essentially can’t broaden the claims after the search. In the US, that search would be meaningless because the applicant could submit a whole new set of claims at any time.

    Reply
  91. the onus would be on the applicant to review the prior art

    Illegal – see Tafas v. Kappos.

    sarah,

    sigh, there’s nothing, and I do mean nothing, like a woman scorned.

    Reply
  92. Ping is not

    You broke my heart,
    and please do stop.
    the terrible poetry,
    you suck at that,
    I’ll surely say.
    you are no Emily.

    Reply
  93. Ned Heller: “…a low cost, rapid, examination for formalities only, with the later requirement for a reexamination if one wanted to actually enforce a “registration” patent, is the ideal system for those who want piles of patents for swagger purposes, but who really do not intend to enforce any of them. …”

    IANAE: “Problem is, for people who need to know what art is out there (e.g. for clearance purposes) the absence of published examined claims and the ever-looming chance of claim amendments prolongs the uncertainty even more than the current examination backlog does.”

    Just a thought, but what if the registration route included a search by the Examiner without opinion on merits, and an opportunity for applicant to amend prior to registration in view of the search results, with no subsequent opportunity to amend (even on reexamination)? In effect the onus would be on the applicant to review the prior art and ensure the claim scope is appropriate.

    Reply
  94. Does anyone know the results/metrics of the original Peer-to-Patent pilot program? Other than that “all of [accelerated] applications have received at least a first action on the merits.” So that would be at least a year’s worth of acceleration? It would be interesting to see a break out by technology area.

    It also seems to me that there was not a lot of participation since “only a few of the applications under review received more than six prior art submissions.”

    Reply
  95. I look forward to deposing our good friends of the community about the “worth” of their “accompanying comments” and many other things about them.

    Reply
  96. are you kidding? This is a great opportunity to influence the examiner’s decision by incorporating sloppy and [erroneous] judgments on the validity of a patent.

    So let me get this straight. The examiners at the PTO are perfectly capable, all by themselves, of determining the entire SCOPE of the prior art, OBJECTIVELY(whatever that means), and of making neat and accurate judgments on the patentability of the the claims, but are not capable to also look at an extra half-dozen references submitted by biased, anti-patent competitors, and take the accompanying comments for what they’re worth?

    Respectfully, that makes no sense.

    Reply
  97. Into the hands of the examiner, I commend thee
    all and any
    the world awaits, the rights abate,
    only the shadow knows,
    what it means to be “considered.”

    And yet boldly the front cover proclaims
    Pass all laws this application has,
    a patent earned,
    all and any
    into the hands of the examiner, I commend thee

    Reply
  98. “Although the written comments & discussions are not sent to the patent examiner, examiners will be free to read those comments as part of the examination process.”

    This seems to be problematic in view of the “person” defined in Section 103(a). Who is saying what about these references? Does FOIA apply to what the Examiner sees in this respect? The citation of references to the Examiner should suffice. The otherwise obscure reference should speak for itself if it’s really that great.

    Reply
  99. Wow. These peer to patent comments are so useful to an Examiner.

    7,

    This is a key point to remember when submitting a patent application to Peer to Patent. The Peer reviewers are largely unfamiliar with the requirements of patentability.

    Reply
  100. So can we assume that Microsoft will be funding buildings full of “experts” as “peers”?

    Sounds like some deep pockets and big mouths don’t like patents at all and want to swamp the office with specious objections and marginal “art”.

    Reply
  101. sarah, don’t be frettin about me being upset.

    It’s my system – I can knock it.

    sorta like what one brother can say to another, yet cannot be said by a caucasian.

    And yes – we have the best patent in the world, despite (not because) of the wonderful job dem examiners be doin.

    Reply
  102. Wow. These peer to patent comments are so useful to an Examiner. Most of the guys commenting are like Mooney, but articulate themselves even worse.

    Check out this gem, from link to peertopatent.org.

    “well not only by prior art should this application fail,it is not inventive at all.”

    Nice conclusory statement. The Examiner will definitely reject this application now based upon this statement.

    Reply
  103. True of probably 50%-80% of issued patents

    Whoa, that’s a lot of windmills to chase. I bet the reexam rolls are just bustin with all those bad patents that so righteously need to be expunged. I bet the tally looks like the pending application and appeal mountains. What? it doesn’t? But, but, but,… why not? Oh I see, because be otchin on blog sites is so much more effective. There be a piece of rye in your hair Malcolm.

    Reply
  104. Is there a reason why the consent form lacks an OMB number?

    Reply
  105. Just now joining the thread after having been away.

    MM writes:

    “the rules relating to third party art require that any accompanying arguments regarding the art be expunged prior to the Examiner’s review”

    and asks how it is in Japan. Cannot answer that, but at the EPO, you have a snowball’s chance of engaging the serious attention of the EPO Examining Division with your observations on patentability under Art 115 EPC unless you explain to the Examiner in a covering letter how it is that your art takes away novelty or reveals something within the scope of the pending claim to be obvious.

    The law in Europe after issue gives not one scintilla of deference to the work of the EPO Examiners prior to issue. This is what allows EPO Examiners the freedom to give to third party observations prior to issue exactly that level of attention which they deserve. So, no sane person wastes their time filing mischief-making or hand-waving observations under Art 115 EPC. The only observations filed are cracking good ones.

    Reply
  106. “True of probably 50%-80% of issued patents. Not sure about all.”

    I’d say ALL – 100% of issued patents. a good and valid patent can be invalidated if the examiner focus all the attention on a small collection of prior art, thus to allow the legitimacy of the patent to be determined SUBJECTIVELY.

    the law requires ALL prior art be considered equally unless there is a compelling reason not to do so.

    Reply
  107. correction: by allowing sloppy and erroneous judgments to be incorporated…

    Reply
  108. billy G if the purpose of conducting the prior art search is to invalidate a patent, ALL patents granted in existence could be invalidated in no time.

    True of probably 50%-80% of issued patents. Not sure about all.

    Reply
  109. “There are valid criticisms to be made of this program, but the possible (or likely) bias of participants is not one of them.”

    are you kidding? This is a great opportunity to influence the examiner’s decision by incorporating sloppy and incorrect judgments on the validity of a patent.

    Reply
  110. if the purpose of conducting the prior art search is to invalidate a patent, ALL patents granted in existence could be invalidated in no time.

    Thats why i think its extremely important for the USPTO to ensure that the correct methodologies are been applied to the examination/assessment process.

    Reply
  111. @AJ

    “3rd party submissions would be different because they would be specific to that application.”

    Your approach to the prior art search is INCORRECT.

    The point of conducting a search is to determine the SCOPE of the prior art OBJECTIVELY. Thus the “relevance” of the prior art is determined by the problem which PHOSITA tries to solve and NOT determined by whether the prior could be used as a weapon to invalidate the patent.

    Do you understand the difference???

    Reply
  112. I’m a little confused – Where does this “conflict of interest” and “fair self selection” stuff come from? The reviewers aren’t making the rejections, the PTO is. Having a self-interested, BIASED, competitor scour the earth for relevant art is in the public interest. And if the patent issues despite the best eforts of that biased competitor then it’s in the applicant’s interest as well. Participation by the applicant is voluntary – if it really doesn’t want the scrutiny then it would be foolish to volunteer.

    The bias of the “peers” is potentially the very best feature of this program. As I noted earlier, it’s much more economically efficient for private parties, with real financial interests in the system, to be making decisions as to how much to invest in searches. (There are good reasons why this should not be the exclusive approach, however.) And earlier is obviously better than later. There are valid criticisms to be made of this program, but the possible (or likely) bias of participants is not one of them.

    Reply
  113. i think they wont have problem in finding enough reviewers,

    Here is a link to the applications from the first trial. It shows relative level of activity for each reviewed application.

    link to peertopatent.org

    You can also click through to see the prior art and comments posted for individual applications. Many reviewers also registered and you can see their bios.

    Reply
  114. I suggest that the USPTO publish the official guidelines and methodologies for assessing the validity of a patent under the clear and convincing standard, all in one booklet. perhaps they have done this already?

    Preferably, the guidelines are supported by up-to-date decisions as well as diagrams and other visual aids to clarify the assessment process. The USPTO simply needs to ensure that the correct methodologies are been applied, nothing more.

    Reply
  115. “Gee, the idea of adding another layer of beau-crazy to a system that is groaning already…
    Here’s a novel idea: Do the F’en job right the first time.” -Ping

    Ping you seem to be oblivious to the realities of examining. You have a very finite time to examine a patent (normally 1-2 days max per action). You don’t have time to search every possible source of NPL so you search the patent database and 1 or 2 NPL sources max. Even with an infinite time frame you can still not find the most relevant prior art. Having a real way for 3rd parties to submit relevant art would be very helpful.

    The reason IDSes aren’t highly scrutinized is because practitioner’s do massive dumps of art from other cases (and even redumping art I supplied them) that the vast majority of the time isn’t even close to relevant to the application. 3rd party submissions would be different because they would be specific to that application.

    Also, the current 3rd party submission mechanism is only available to 3rd parties that know the inventor/company has submitted the application within a very limited timeframe. In other words disgruntled ex-employees of the company, most likely one of the inventors or someone that worked on the project.

    Reply
  116. “I think what you mean is how do you protect against confict of interest when a corporate reviewer posts information related to a competitive patent or one of their own.”

    no, IMO conflict of interest is inevitable. i guarantee that any patent you file will fall within the scope of interest of one or more big companies.

    “A much bigger issue was that most posted applications had little or no interest, despite heavy promotion by the Peer to Patent folks.”

    i dont see this as a problem. i think they wont have problem in finding enough reviewers, although they could have problem finding QUALITY & UNBIASED reviewers.

    Reply
  117. how can we ensure that corporate interests don’t interfere with the ideal of a fair ‘self selection’?

    I think what you mean is how do you protect against confict of interest when a corporate reviewer posts information related to a competitive patent or one of their own.

    In the first round of Peer to Patent that didn’t seem to be a problem. A much bigger issue was that most posted applications had little or no interest, despite heavy promotion by the Peer to Patent folks.

    Reply
  118. “Volunteers are self selected.”

    I know that volunteers are meant to be self selected but how can we ensure that corporate interests don’t interfere with the ideal of a fair ‘self selection’?

    Reply
  119. What exactly is the criteria of selection for these “volunteer scientific and technical experts”??

    Volunteers are self selected.

    Reply
  120. IANAE, anybody, at any time may request reexamination. So there a means to resolve the issue.

    Also recall 35 USC 252. There are intervening rights against new claims. Realistically, the public only has problems with claims that remain unchanged in scope after reexamination.

    So your clearance opinion could read something like this:

    Reference D1 is unexamined, but must be reexamined before it can be enforced. If any claim is changed in scope, the patent owner loses past damages and a court may allow you to continue production under equitable terms. We, however, are of the opinion that xxx art anticipates the broader claims and will therefor prevent the claims of concern from being confirmed during an inter partes reexamination.

    Our firm would be happy to represent you in an inter partes reexamination.

    Reply
  121. I take it that had nothing at all to do with you visiting blogs like this one and asking people to review your patents?

    Promotion of the applications through blog postings (e.g. Patently O, just-n-examiner, Linked In), press releases, personal invitations, and news articles was very important in getting a relatively large number of reviewers.

    We were trying to see if Peer to Patent would be an effective way to promote the inventions themselves.

    Reply
  122. What exactly is the criteria of selection for these “volunteer scientific and technical experts”??

    Reply
  123. “Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection.”

    This is not true. the majority of applicants desire a rigorous and FAIR review where CORRECT METHODOLOGIES are used WITHOUT the benefit of hindsight.

    Reply
  124. “Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection.”

    The vast majority do not.

    Reply
  125. The main problem with the filter is that the PTO is not doing enough of it.

    damm straight – c’mon examiners do the job right the F’en first time.

    Reply
  126. They took the top two spots for most actively reviewed applications that year.

    So the lesson is that if you want active peer review, you have to write for your audience.

    Posted by: Mark Nowotarski | Oct 19, 2010 at 04:13 PM

    I take it that had nothing at all to do with you visiting blogs like this one and asking people to review your patents?

    Reply
  127. Wilton, seconding your motion, we see examiners today ignoring both good IDS art and excellent re-examination art because they choose to take very broad construction of claim terms. When they do that, examination is conducted on different inventions then actually claimed. I suspect nothing would be different with respect to peer review art. It too would be ignored.

    But the consequences of excellent art being of record can be devastating to a submitter. This seems to suggest that only a fool would participate in a peer review program.

    Reply
  128. I think Ned is correct in that such a system would be far faster, far cheaper and obtain far more disclosure. These three advances would overwhelming outweigh any increase in litigation expense to the country as a whole.

    Every once in a while, someone goes and claims that the real public benefit of disclosure during the patent term (particularly when the patentee refuses to license or practice his invention) is that the public is forced to get “creative” in designing around the claims.

    If the claims aren’t examined, there’s nothing to design around, everyone is afraid of practicing anything remotely like the spec because they don’t know what might someday be claimed, and then what’s the point of getting disclosures?

    The main problem with the filter is that the PTO is not doing enough of it. Having the PTO do even less of it doesn’t help.

    Reply
  129. I have seen what reexamination submitter’s consider the best art ignored by the examiner because he is off tangent with BRI.

    You’ve seen examiners ignore pertinent art because they interpreted the claim too broadly? That doesn’t make any sense.

    I mean, I agree that it’s symptomatic of defective examination, but not in the way you seem to think.

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  130. Ned,

    I find this to be another area where we are in agreement. I have not seen any overwhelming rationale for not moving to a registration system. IANAE is the only one to suggest something (a filter), but even he has later indicated that it doesn’t seem to be working. I do realize that examination is the law, but as long as we are throwing change ideas out on the board, can anyone give a good reason why we just don’t move to a registration system? I think Ned is correct in that such a system would be far faster, far cheaper and obtain far more disclosure. These three advances would overwhelming outweigh any increase in litigation expense to the country as a whole.

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  131. a low cost, rapid, examination for formalities only, with the later requirement for a reexamination if one wanted to actually enforce a “registration” patent, is the ideal system for those who want piles of patents …

    Yes, it’s pretty good for people who want patents. Problem is, for people who need to know what art is out there (e.g. for clearance purposes) the absence of published examined claims and the ever-looming chance of claim amendments prolongs the uncertainty even more than the current examination backlog does. I think I prefer the idea that the inventor has to commit at some point to a statement of what he has invented and considers within the scope of his patent.

    I think a registration-plus-examination system would need to have some way for an interested party to request examination of someone else’s application, on the strength of something less than DJ jurisdiction.

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  132. Seconding somewhat Wilton’s point, but I have seen what reexamination submitter’s consider the best art ignored by the examiner because he is off tangent with BRI. I don’t know how this would operate any differently with peer review. The result could be disasterous for a submitter whose killer art is bypassed due to BRI, but who now is all but estopped due to its submission.

    Reply
  133. ping, a low cost, rapid, examination for formalities only, with the later requirement for a reexamination if one wanted to actually enforce a “registration” patent, is the ideal system for those who want piles of patents for swagger purposes, but who really do not intend to enforce any of them.

    Just speculating, but if such a system were available, we might see a significant increase in the number of patent applications as a whole as costs went down. There are a lot of disclosures that today are not filed because the value of the invention is not worth the cost. But, as whole, increased filings of marginal inventions should have a positive impact on the advancement of technology.

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  134. A key to this will be some sort of notification system to issue a notification that a first Office Action has been mailed for a given app.

    James,

    Unless they’ve changed the rules, peer review ends before the examiner looks at the application. Once examination starts, you can’t submit more prior art to Peer to Patent.

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  135. “Hey ping-a-ling, tell me which of your apps is in the peer-review pilot program and I’ll tell you which one of mine is.”

    Wow. You are so brave. Making an offer that you know will never be accepted. And that you would never live up to even if it was accepted. Feeling pretty invincible down there in mommy’s basement, hmm?

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  136. Mooney, the submitter’s comments would not matter if the examiner had some measure of assurance that the art was anticipatory — through some filter. Argument is necessary only if the issue is obviousness, and, as I said before, I think public participation to the degree of making such arguments would be decidedly unhelpful in the extreme. Let them file an interpartes reexamination if they really want to argue their point.

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  137. We submitted two “test” applications to the first Peer to Patent. Both were business methods. One was drafted with expert peer reviewers in mind. The other was drafted with the general public in mind.

    They took the top two spots for most actively reviewed applications that year.

    So the lesson is that if you want active peer review, you have to write for your audience.

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  138. Hey ping-a-ling, tell me which of your apps is in the peer-review pilot program and I’ll tell you which one of mine is. Then we can see who’s “tilting at windmills.”

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  139. They would rather have a likely invalid patent than no patent at all.

    It’s not so much a question of invalidity as of scope. Because the “broadest reasonable interpretation” is often not reasonable, extended prosecution/examination of a patent application results in a voluminous prosecution history to mine for out-of-context tidbits to use during claim construction. Facing the same art during litigation and the accompanying narrower construction should make validity easier to defend, even without the clear and convincing standard. If some undiscovered prior art really is a problem down the road, a patent owner can always put his patent through reexam to amend around it. If the patent office used claim constructions more similar to those used in litigation this would be less of an issue, but as things currently stand patent applicants have legitimate reasons to prefer good but not “perfect” prior art coverage during examination.

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  140. but such patents should be issued with an asterick indicating a lack of full examination.

    I would suggest such patents if actually enforced should not only have no presumption of validity, and they should also require a reexamination as a condition of filing suit.

    Wow, sign me up for that there lower track that Iza get to pay money for, and then hazta pay again in time and money if I want to actually enforce my patent.

    Ned, red, blues and greens, not three helpings of reds.

    Here’s a tip: if ya find yourself starting off a sentence with “Mooney is right, of course,” check your meds right quick.

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  141. We are slowly moving to a Patent Registration system rather than an Examination System. Pay the standard fee and get peer reviewed search, then file claims. Or, pay a huge fee and have an actual Examiner search and prosecute your app.

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  142. “Even the most ardent supporters of the current US patent system will readily admit that the patent examiners do not see or consider all of the relevant prior art.”

    1.99 MPEP does allow third parties to notify without comment examiners of relevant prior art. The problem however is that the window of time in which to do so is ridiculously short!

    link to uspto.gov

    The time frame should be extended right up till prior to notice of grant.

    Reply
  143. DC In the US there is almost no history of third-party participation in the initial patent examination process. That approach is almost unique in the world. As an example, applications at the Japanese Patent Office (JPO) are open for third-party submissions. Over the past year, the JPO has received third-party submissions of prior art in over 8,000 pending cases. Most of the time (~75% of cases), the submitted prior art is used by the JPO examiner in making a rejection.

    I wonder if part of the problem in the US is the well-founded fear that third party art will be submitted and then ignored by the Examiner, making it more difficult to have the art considered during ex parte re-exam.

    Another problem is that the rules relating to third party art require that any accompanying arguments regarding the art be expunged prior to the Examiner’s review (does Japan have a similar requirement?). The only way to get such third party arguments into the record in the US is to send them directly to the applicant. In that case, you have to rely on the applicants’ integrity with respect to the Duty to Disclose in order for the art and arguments to be submitted, and you have no control over the timing of that submission.

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  144. Peer-to-patent,

    Yawn, plattitudes for the uninformed masses, everyone else will recall the third party art submission rules that have been part of the supposedly “broken” system for years.

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  145. Mooney is right, of course. We need a low quality track that is little more than a registration system — but such patents should be issued with an asterick indicating a lack of full examination.

    I would suggest such patents if actually enforced should not only have no presumption of validity, and they should also require a reexamination as a condition of filing suit.

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  146. A better system would be one where all applications and their claims are published when the Notice of Allowance is presented, and third parties are allowed to present reasons for claim validity publicly and anonymously, where the comments are screened to remove duplicative and/or meritless comments. Entry of the comments should be as simply and straighforward as responding to a blog post.

    The comments themselves become part of the public record and are easily accessible via a link at the PTO’s database that remains associated with the patent (assuming it issues) or application (if it doesn’t).

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  147. PTO needs to update/fix the classification system to help the examiners.

    Reply
  148. They would rather have a likely invalid patent than no patent at all. I do not believe that pessimistic view is representative of most of patent applicants.

    It doesn’t matter if you believe it. It’s true. And it’s not pessimistic. It’s just a direct, predictable result of the fact that nearly every patent application is filed for a business-related purpose.

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  149. The bigger problem I see is that it is not available for the bulk of my cases because to part of the program they cannot have been published more than a month ago to be eligible. This cuts out a gigantic batch of applications and greatly limits the appeal.

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  150. Limit the art to anticipations only. Require the submitter to read every limitation onto the art. Otherwise, don’t bother the examiner. It would only waste everyone’s time.

    There should be screening examiner that checks for compliance with the requirement of reading limitations onto the art. They usually do a good job, but it is amazing just how often reexamination requestors use “slight of hand” to fool reexamination reviewers. I often think there ought to be some penalty for this as it really is lying to the PTO, but that is not covered by rule 56, is it?

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  151. The whole scheme sounds a bit like Article 115 EPC, but it’s not clear to me whether the USPTO examiner should actually respond to third party submissions. The EPO examiner can still decide for himself whether the submission is relevant, and will formally use it for an objection under Article 94(3).

    What should an examiner search for anyway? Or the peers? The subject-matter as defined in the claims? The invention as perceived from the application in general? What if the description is a humongous hodge-podge of facultative features (“may further include”) going in all possible directions and the original claims are fuzzy, obfuscated, and/or inanely broad? Will the “peers” be able to raise clarity and enablement objections? An examiner can at least cite a document on which a claim can literally and legitimately be read upon, yet which is not exactly the invention as described in the disclosure.

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  152. Peer to Patent violates confidentiality of applications.

    “The new pilot, which begins next week, relies upon patent applicants to volunteer their cases for review. … Eligible applications must be published …”

    Will patent agents ever stop whining?

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  153. “Even the most ardent supporters of the current US patent system will readily admit that the patent examiners do not see or consider all of the relevant prior art. ”

    That’s why we have reexam. The PTO grants about 95% of requests. Will infringers ever stop whining? Peer to Patent violates confidentiality of applications.

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  154. Even so, didn’t we decide about a month or two ago that bigger IDSes didn’t help because examiners couldn’t be bothered to read them?

    Seems to be the recollection. Just don’t know why you keep on pushing for things that will force us down that path anywhos.

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  155. “Neither of those concerns were realized.” — not yet, but just wait

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  156. Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection. They would rather have a likely invalid patent than no patent at all.

    Why wouldn’t any sane patentee want to save the best art for litigation, where it takes much stronger evidence to invalidate a more narrowly-construed claim, and the infringer might not even be able to afford the trial in the first place?

    Even so, didn’t we decide about a month or two ago that bigger IDSes didn’t help because examiners couldn’t be bothered to read them?

    And on top of it all, we expect examiners to be quicker about “considering” this increased volume of prior art. It sounds like this pilot project is issuing patents the Max Power way.

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  157. Dominic, I think James’ skepticism is to whether it will actually inspire “volunteers.” I share that skepticism.

    If it really inspires Microsoft (and other private actors) to pay for searches, that would unquestionably be a good thing. Having the resource allocations made by those who are most likely to be affected would undoubtedly be more efficient than the one-size-fits-all approach that the government necessarily takes.

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  158. “Some applicants . . . would rather have a likely invalid patent than no patent at all. I do not believe that pessimistic view is representative of most of patent applicants.”

    While I’m inclined to agree that most patent applicants do not hold that pessimistic view, I think there are already too many trolls/NPEs that do hold that view, and consider gaming the PTO to be a profitable business plan. It only takes a few such improper patents to generate a tsunami of nuisance litigation.

    I’m heartened that the Peer-to-Patent program is taking a second step in improving (not raising or lowering) the accuracy of the standards by which patents are granted.

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  159. James, if there’s prior art, we shouldn’t be handing out patents, whether Microsoft paid me to find it, or whether I found it in an old trade magazine in my garage.

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  160. It is unclear to me whether a negative inference will also be created

    Gee, the idea of adding another layer of beau-crazy to a system that is groaning already…

    Here’s a novel idea: Do the F’en job right the first time.”

    Reply
  161. “Volunteer scientific and technical experts [will] discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires.”

    Yea, right. However, I see this as a way to expand the work available for patent practitioners.

    If Microsoft wants to pay me a fixed fee to review and provide review of a competitor’s pending app …
    If Microsoft wants to pay me a finder’s fee for each competitor’s app I can bring down with prior art …

    A key to this will be some sort of notification system to issue a notification that a first Office Action has been mailed for a given app. That first Office Action will make it much easier to zero in on the art area being searched and provide a starting basis to look places US examiners normally don’t have the time to look (google books, epo patents, general internet searches).

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  162. I was initially concerned that the reviewer-comments might look like ad hominem attacks with little factual support (as often seen on certain blogs).

    The so-called Mooney Alert?

    Reply

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