19 thoughts on “Patent Reform 2007

  1. “weakening patent protection in the semiconductor industry”?
    can someone comment on that statement?

    Yes, I can…
    It must be coming from one of those “patent fairness” guys, you know: link to patentfairness.org (Intel, HP, Cisco, Micron etc.)

    Remember the movie “Pirates of Silicon Valley” ?
    The key word here is “pirates”

    All they want to do is to appropriate work of some smaller but much more creative companies like Qualcomm, Rambus, Transmeta etc.

    I am not even talking about some small startups and poor independent inventors.
    Hell with them, they are gone already…

  2. “EPO works pretty well”

    So, would U.S. practitioners support the de-emphasis of dependent claims searching, as in EPO practice? That would also certainly cut back the page count in PTO office actions as well.

    The lack of prosecution history estoppel in the EPO model is another interesting concept that might be imported in order to reduce page count. Of course, this would mean much more than the attorney windfall that first comes to mind: not having to live by one’s words when securing property rights before the PTO. No, this might actually work to the advantage of the PTO as well. For example, the PTO would not have to spend as much time considering attorney arguments understood by all as ephemeral and un-substantive, that is, arguments capable of being dropped or even contradicted (e.g., during subsequent litigation) without consequence by the very same attorney who argued before the PTO. Thus, the PTO could simply state its prima facie position. If there is a disagreement, the applicant could immediately appeal the case to a more expensive, burdensome, and now very busy tribunal that would nonetheless be better equipped to actually RELY upon attorney arguments, namely a tribunal where the applicant would have to stand behind their words. On the other hand, the PTO could more quickly and cheaply work with applicants who are willing to take the only remaining position that could still be reasonably recognized as substantive by the PTO, that is, offers to explicitly amend the claim language to overcome the prior art. Basically, the PTO would focus on amendments, and the courts could have the arguments all to themselves.

    There you go, one to two page office actions EPO style!

  3. “weakening patent protection in the semiconductor industry”?
    can someone comment on that statement?

  4. So “EPO works pretty well” does it? And how about litigation in Europe, post issue? Doesn’t the world need common law fact-finding (discovery and x-exam) to resolve an intractable patent dispute, that is to say, one where both sides think they ought to win; one where only rigorous fact-finding will get you to a just result? The European solution is to get the issuing done outside the common law system, by a brusque, no nonsense civil law EPO (accountable to no court whatsoever, no concept of equity or duty of candor, or due process), and to manage the subsequent litigation proportionately, either by German or Dutch injunction boosted ADR or, as a last resort, by English adversarial common law. How does one achieve that elegant proportionality, in adversarially challenged USA? Beats me.

  5. dear Dennis,
    why do you focus on the semiconductor industry only?could you explain “weakening patent protection in the semiconductor industry”?how could you do that?

  6. EPO works pretty well: no duty of disclosure, quite high skilled examiners, possibility to have a constructive discussion with them (unlike USPTO Examiners who often seem not to take comments into consideration, nor properly applying MPEP), an objective view of inventive step (based on an objective problem together with a technical solution), collegiality of decision making (three examiners in an examination division).
    If USPTO quality could get closer to the EPO, I would like it. I am a bit afraid that, for the moment, EPO is getting more like USPTO.
    Patent Offices earn a lot of money (more and more patents, and they can increase fees as they like + EPO gets 1/2 of the national renewal fees paid for a validated EP patent). They have to make sure that it is well spent and that the society that they represent when granting patents, enters a mutual and balanced agreement (contrat social of JJ Rousseau) with the inventors that we represent.

  7. “other” suggestions:

    judicial reform
    post-grant review
    Making the patent office do its job
    Educating Journalist (and Judges) About Patents
    improving the enforcibility of good patents
    Reversing the KSR decision
    improving the management of the patent process, i.e., establishing good objectiv
    predictability and consistency
    Post grant opposition!
    sticking it to the man
    Funding the office. Period
    Hiring and retaining competent examiners
    first-to-file system
    To avoiding it altogether….
    Weakening patent protection in the semiconductor industry
    refrom inequitable conduct
    reverse eBay
    Legal competence of the PTO workforce
    Quality, Quickly, Cheaply – Pick ANY TWO !
    Improving patent attoney’s competence
    Clarifying rules to help the courts and the PTO to understand basic concepts suc
    Overruling KSR to return sanity to the examination process
    tightening requirements to find inequitable conduct
    Improving patent attoney’s competence
    Reducing cost and complexity of patenting internationally.
    Establishing objective standards in the Federal Circuit’s law.
    reduce unfounded PTO rejections
    Educating Journalist (and Judges) About Patents
    less unfounded PTO rejections
    Hiring and retaining skilled examiners

  8. I’ve started doing EPO-like responses (2-4 pages) to those 15 (more like 25) page OAs — this is not unlike how we do pre appeal briefs — if you can’t make your argument in 2-3 paragraphs, you don’t have a very good argument…this approach seems to work pretty well and keeps the costs down to clients.

  9. Could “reform” in any way result in something like the following hex “stream” being considered patentable subject matter?

    09 F9 11 02 9D 74 E3 5B D8 41 56 C5 63 56 88 C0

    Actually, this is a “hijack” of sorts in that under current law mere “data” standing by itself is not to my knowledge protected under either patent or copyright law. Nor am I aware of any laws passed under the authority of the Commerce Clause that foreclose something like the above appearing on a website.

    I mention this because on of the most interesting aspects of law practice is constantly being presented with a “weird” set of facts that gives pause to reconsider conventional wisdom.

    By the way, the above is taken from the lead article in the current ABA online journal. What the article discusses is quite thought provoking.

  10. I would certainly be happy with a system more like the EPO, including unity of invention. Especially (!!!) if it meant a 1-2 page Office Action vs. the 15 page thesis received now!

  11. Here’s my list (in no particular order):

    1. First to file (as long as earlier, non-published US apps only available based on priority date for novelty purposes, not 103)

    2. Get rid of interferences

    3. Get rid of duty of disclosure

    4. Opposition period

    In short, more like EPO…

  12. dear small inventor;
    would you consider this reform as a “conspiration at the top”to eliminate serial whinning guys!uh!

  13. Anon E. Moose wrote: “Isn’t “reducing the number of bad patents” an inevitable result of “improving the quality of examination”? I think that combining those two as one issue makes better examination a runaway winner.”

    My dear Anon E. Moose,

    No, you are thinking in the wrong direction…
    Just remember that the current push for so-called “patent reform” comes from serial infringers – big technology companies.
    They already have their own definition of a “bad” patent:
    “bad patent” = any patent owned by an independent inventor or a small outfit threatening their profitable existence.

    So it’s all in the wording, pay attention to wording…
    “patent trolls”, “patent fairness” etc .etc. etc.

  14. “What is the most important issue for patent reform?”

    To resist the urge to reform…

  15. Isn’t “reducing the number of bad patents” an inevitable result of “improving the quality of examination”? I think that combining those two as one issue makes better examination a runaway winner.

    Any of us who prosecute patentes have felt the effect of ‘quality’ initiatives at the USPTO in the form of plumeting allowances. A natural side effect of the process, since Examiners can be negatively impacted in their performance evaluations if their allowances are overturned by the QA dept.

    So what are the repercussions to the Exmainer for making baseless rejections? Anybody? Wouldn’t a rational Examiner allow nothing under those circumstances? QED.

  16. “other” so far:

    -Improving patent attoney’s competence
    -Reducing cost and complexity of patenting internationally.
    -Establishing objective standards in the Federal Circuit’s law.
    -reduce unfounded PTO rejections
    -Educating Journalist (and Judges) About Patents
    -less unfounded PTO rejections
    -Hiring and retaining skilled examiners

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