Patently-O TidBits

  • Advisory Office Action: A Patently-O reader queries why 35 U.S.C. 133 does not extend to after-final advisory actions. Under Section 133, "any action" by the PTO must allow at least thirty-days for a response.
  • Chief Judge Michel continues to operate behind-the-scenes to block certain elements of patent reform.  In a letter to Howard Berman’s staff, Judge Michel argues again that the proposed economic apportionment provisions damage would be difficult to implement. The letter also highlights the recent damages analysis by former AIPLA president BIll Rooklidge while taking a dig at the credibility of law professors who have been pushing for reform — "Lawyers employed by particular companies, like most law professors, have little or no experience [in patent litigation]. Mr. Rooklidge, by contrast, has several decades of litigation experience in precisely these types of cases." MICHEL LETTER , ROOKLIDGE ARTICLE.
  • Despite a strong brief, the Supreme Court has denied Zoltek’s petition for certiorari that challenges the CAFC’s determination that Governmental patent infringement is not a 5th amendment takings. LINK.
  • Republicans on Patent Reform: Slow down and get it right. LINK.

44 thoughts on “Patently-O TidBits

  1. Ms. Isaacs,

    “So it makes perfect sense that there was no need to extend section 1498′s contractor protection in situations where the contractor cannot be held liable…”

    Is this to suggest that 1498(c) is not even needed?

  2. “The Federal Circuit court had reasoned that since patent rights are created and defined by the federal government, they extend only so far as Congress has said they should extend. Accordingly, the government can’t be “taking” anything away from the patent holder, since all the patent holder ever possessed to begin with was whatever specific rights the government had granted to it.”

    The same reasoning should apply to salaries of federal employees. If Congress determines the pay grade for postal workers, inducing a reasonable expectation in the mind of the postal worker that at the end of the day there will be a paycheck, can Congress confiscate the postal worker’s bank account? If Congress determines the patent term of a patent, inducing a reasonable expectation in the mind of the inventor that at the end of the patent process there will be a right to exclude others, can Congress confiscate a portion of the inventor’s term? It seems to me there is an inducement to disclose, and that is consideration for a contract. (Social security, military pensions, etc., too.) The inventor makes a contract with the public (which is represented by the government, or by the USPTO) to disclose the invention in exchange for the patent rights in the claims. Pulling back on the claims is a breach of the patent contract.

  3. “The Federal Circuit court had reasoned that since patent rights are created and defined by the federal government, they extend only so far as Congress has said they should extend. Accordingly, the government can’t be “taking” anything away from the patent holder, since all the patent holder ever possessed to begin with was whatever specific rights the government had granted to it.”

    The same reasoning should apply to salaries of federal employees. If Congress determines the pay grade for postal workers, inducing a reasonable expectation in the mind of the postal worker that at the end of the day there will be a paycheck, can Congress confiscate the postal worker’s bank account? If Congress determines the patent term of a patent, inducing a reasonable expectation in the mind of the inventor that at the end of the patent process there will be a right to exclude others, can Congress confiscate a portion of the inventor’s term? It seems to me there is an inducement to disclose, and that is consideration for a contract. (Social security, military pensions, etc., too.) The inventor makes a contract with the public (which is represented by the government, or by the USPTO) to disclose the invention in exchange for the patent rights in the claims. Pulling back on the claims is a breach of the patent contract.

  4. Ms. Isaacs,

    How the Executive interprets the statute via rulemaking may be instructive. In this regard you might want to take a look at the implementing regulation FAR 27.201-1, and especially subpara. (a). It supports the all too obvious proposition that 1498, in its totality, is meant to only cover infringements of US patents (and copyrights).

    Merely FYI, the FAR reference I have cited applies to all federal agencies.

    BTW, do take a look at the first decision from the COFC re Zoltek. The distinction Judge Damich draws for the word “claim” as used in 1498(a) and as used in 1498(b) is simply incredible.

  5. “Not so fast. Anyone who owns land owns it by virtue of a chain of title going back to a land patent. The land patent is created and defined by the government too, yet the 5th amendment applies to takings of land.”

    The difference is that the right to sue the Federal government for importing non-patented products made using a patented process was not “taken” after it was granted because it was never granted in the first place.

  6. Actually, while there are certainly aspects of patent law that are ambiguous, the interaction between sections 1498(a) and 1498(c) is perfectly comprehensible.

    Section 1498(c) states that section 1498(a) does not apply if the claim “aris[es] in a foreign country.” U.S. law does not give patentholders the right to sue for unauthorized use unless the claim arises in the United States. So it makes perfect sense that there was no need to extend section 1498′s contractor protection in situations where the contractor cannot be held liable — and indeed it would be at odds with 271 liability to make liability against contractors and the U.S. extra-territorial.

    It is a separate political/policy question whether it is unfair (or, in the long run, detrimental to promoting defense technology) that the U.S. government or its contractors should be able to avoid liability by using the patent in a way such that the liability does not arise in the U.S. But the fact that section 1498 does not give a patentholder like Zoltek recourse doesn’t make the section particularly confusing.

  7. Ms. Isaacs,

    If only it was so simple. Unfortunately, this is an area of the law where three forces have come together virtually assuring total incomprehensibility: (1) The Court of Claims, (2) Various federal agencies; principally the DOD, and (3) drafters of legislation who in large part have depended upon the DOD’s support therefor. Basic, hornbook patent law is, unfortunately, largely unknown to them.

    A few suggestions you might want to take into consideration:

    The 2002 COFC Zoltek decision drew an incredibly “wierd” distinction between the word “claim” in 1498(a) and “claim” in 1498(b).

    1498(c) is most strange in that it clearly states that if its conditions are met, then Section 1498 does not even apply.

    Title 35 speaks of exclusive rights as per Article 1, Section 8, Clause 8. Nowhere does it manifest any exception for the benefit of the USG.

    Title 22 has some very interesting language regarding patent infringement under the Foreign Assistance Act (sorry, but I do not right now recall the specific section).

    FAR 52.227-1 implements 1498, but the two are hardly congruent. BTW, no one has ever explained in any coherent fashion just what “authorization and consent” means.

    Etc., etc.

  8. I realize that the above 2 theories of liability are not necessarily correctly or appropriately framed as alternatives, but I have run out of time.

  9. Although not a litigator, I offer the following for discussion. I apologize for any glaring errors or omissions, I only have 15 mins and have not analyzed the opinion carefully.

    The pivotal issue is the scope of the waiver of sovereign immunity. One approach to formulate an answer to this question could be to ask the question: “What is it that the sovereign would be liable for, absent the concept of sovereign immunity in the first place?”

    To narrow down the answer to this question, one could look to find a source of potential liability that appears to parallel the purported waiver of sovereign immunity found in 1498. In the case of a process claim, it appears that the “use of the invention” under 1498 is similar to the scenario contemplated in 271(a): “…uses…any patented invention, within the United States…”. So, 1498 may be a waiver of the sovereign immunity that would normally apply to liability arising under the 271(a) use of a patented process in the U.S..

    This would be one type of argument for a narrow scope of waiver in the case of liability arising from use in the U.S. of a patented process. By extension, the same logic could be expanded to include liability arising from use in the U.S. of a patented article, an expansion that would seem to be allowed by the language of 1498.

    But has sovereign immunity for liability arising under 271(g) been waived? 271(g) contemplates 4 discrete events: 1) the importation into the U.S., 2) the offering to sell in the U.S., 3) the selling in the U.S., and 4) the use in the U.S. of a product made by a process patented in the U.S..

    If the waiver was construed to only narrowly apply to 271(a) liability, then sovereign immunity could be argued to still apply to any of the 4 scenarios creating liability in 271(g) under the theory that the basis for liability under 271(g) is different than that in 271(a). If immunity applied to the fourth scenario in 271(g), the use in the U.S. of a product made by a process patented in the U.S., then immunity could apply to a process-claim based action in the case where a U.S.-patented process was performed entirely outside the U.S., as happened in this case (1498(c)).

    In the case where the PRODUCT resulting from the patented process is NOT itself patented, the fourth scenario of 271(g) would apply, and the sovereign would be immune.

    In the case where the PRODUCT resulting from the patented process IS itself patented, the question becomes whether the underlying process was also patented. If BOTH the product and the process were PATENTED, then an argument could be made that the fourth scenario of 271(g) would apply, and the sovereign would be immune. At the same time, an argument could be made that 271(a) would apply, and that sovereign immunity would be waived under 1498. This conflict could be resolved by determining whether or not the scenarios in 271(g) and 271(a) are duplicative to some extent. (I offer no insight into any such analysis). If the PRODUCT was PATENTED but the PROCESS was NOT PATENTED, then 271(g) would not apply, 271(a) would apply, and 1498 would waive sovereign immunity from any associated liability.

    For whatever it’s worth, I now fantasize about what could happen if Zoltek proceeds, and names the U.S. as plaintiff. They could argue that 271(a) and (g) are not duplicative, that 271(a) applies and (g) does not apply, and that 1498(a) waived sovereign immunity for the type of liability arising under 271(a)—and in the alternative, that if there was any duplication of 271(a) and (g) in situations where both the product and the process are patented, that THEIR OWN PROCESS PATENT IS INVALID, and that because 271(g) only refers to valid process patents, therefore 271(g) does not apply, 271(a) applies, and 1498 would waive sovereign immunity from any associated liability.

    Questions are: how would the product claims be affected by an invalidation of the process claims…

    I realize that invalidation of one’s own patent is a bizarre suggestion, that I arrived at through a process of reasoning that was not rigorous. But what about it?

  10. “The Federal Circuit court had reasoned that since patent rights are created and defined by the federal government, they extend only so far as Congress has said they should extend. Accordingly, the government can’t be “taking” anything away from the patent holder, since all the patent holder ever possessed to begin with was whatever specific rights the government had granted to it.”

    Not so fast. Anyone who owns land owns it by virtue of a chain of title going back to a land patent. The land patent is created and defined by the government too, yet the 5th amendment applies to takings of land.

  11. TJ:
    Thank you for the clarification. However, I don’t believe your argument is valid, because the infringement occurred in this country-not overseas. Please review 35 U.S.C. section 271(g) “Whoever without authroity imports into the United States . . . a product which is made by a process patent in the Untied States shall be liable as an information . . . .” Therefore, the infringement occurred not oversease, but here in this country. So I don’t believe you argument holds water.

    The fact of the matter is that Congress is an agent of a limited government. The Fifth Amendment stands for the proposition that the Federal Government can take nothing from anyone except as expressly provided by the Consitution and when it does it pays for it. In other words, the defacto status of the Federal Government is that it can take nothing. This is what really gets me about how the stakeholders in the Federal System have distorted the Federal Government. The Federal Government is not a sovreign-even though experts say it is. Ruth Bader Gindburg, during her confirmation hearings, address concern over this by desiring the limit the states ability to call a consitutional convention. In short, if you really understand the Consitution, the Federal Government exists at the whim of the states. It is not a sovreign. Rather, it is a popular elected form of intercourse among the several states. If the states called a consitutional convention all the Federal Government could do is throw a going away party. That is why we have a one party system with two names, the sole purpose of which is to ensure that the states never call that constitutional convention and the money keeps flowing into the Federal Coffers. This is why the Federal Circuit ruled the way it did. Those judges are inside stakeholders of the one party system and very much want to keep the money flowing into Washington, DC. Hence, they totally make up reasons to deny a patent holder his patent rights while ignoring the law.

  12. “It is important to always keep in the back of one’s mind that in instances where sovereign immunity has not been waived, recourse can be pursued against the private party infringer.”

    No support is cited for that statement, and indeed section 1498(a) appears to establish that it is the only remedy available to the patent owner: “[If a contractor makes unauthorized use of a patented technology for the United States]…the owner’s remedy SHALL BE by action against the United States.”

    There is no statement or indication that if the owner’s remedy against the U.S. fails (as in Zoltek), the owner has the option to bring a claim directly against the contractor or subcontractor. That is probably why Zoltek’s very capable attorneys have not filed a claim against Lockheed Martin (likely a deep enough pocket to satisfy any judgment).

  13. TJ:

    You state that “1498(c) specifically provides that there is no remedy against the United States for infringement overseas”

    What is actually states is “(c) The provisions of this section shall not apply to any claim arising in a foreign country.”

    Para. (c) was added, so I believe, at the time that 1498 was amended to cover the “use” of copyrighted matter by or for the US. It was added, almost as an afterthought, when someone noted that para. (a) was written in such a manner that it could be construed to cover the infringement of foreign patents. Parse para. (a) again and you will see what I mean.

    It is important to always keep in the back of one’s mind that in instances where sovereign immunity has not been waived, recourse can be pursued against the private party infringer.

    If Zoltek is so inclined, I would not in the least be surprised to see a complaint filed in federal district court against the government contractor/subcontractor under 35 USC 271(g). Imagine the consternation that would cause. With the benefit of hindsight, such a complaint should probably have been the approach initially pursued. With the benefit of the COFC and CAFC decisions now in place, the USG would find itself in a quite untenable position. It could be free from suit (rightly or wrongly) on principles of sovereign immunity, but its contractor/subcontractor would not. Now, that would be fun to watch, especially once a light bulb goes on that all rights and remedies under Title 35, legal and equitable, would now be in play.

  14. “The Federal Circuit court had reasoned that since patent rights are created and defined by the federal government, they extend only so far as Congress has said they should extend. Accordingly, the government can’t be “taking” anything away from the patent holder, since all the patent holder ever possessed to begin with was whatever specific rights the government had granted to it.”

    Exactly.

    The Constitution does not mandate that Congress provide a cause of action against the importer of goods made using a patented process overseas. Thus, Congress’s failure to create a cause of action against the Federal government for such isn’t a taking.

  15. Peter Papp is asking:
    “As a genuine question, I am wondering specifically what the proponents of damages apportionment via the proposed legislation hope to gain by its passage, if the assertion made by their opponents that courts already engage in damage apportionment under Georgia-Pacific is in fact correct.
    Can anyone fill in the blanks?”

    Easily, Peter..

    Just remember where this patent reform crap has its origin – in the legal departments and boardrooms of MS, Cisco, Intel, HP and other BSA patent thiefs

    Now say you are some small tech startup with a few very valid “software” patents coverinmg some particular technology.
    What MS wants to do is use your technology in their monstrous Windoze OS almost free of charge, by arguing that there are 10,000 other patents (junk patents, of course, but the judge doesn’t know) involved in bilding this miracle of technology
    Godd luck having your attorney argue before the judge about some figure like 0.00001 or 0.00002 (your “fair” royalty under the new damage apportionemnt proposal)).
    I guess his retainer will be a lot bigger than that…
    In other words, they want to apportion your royalties by dissolving your few good and valid patents in a sea of junk patents produced by their R&D folks.

    MS wants to bundle everything with Windoze. Remember how Netscape died ?

  16. “coward, is your argument seriously that patent rights completely fail to promote science and the useful arts if they can be infringed by the government?”

    Not in general, no, that’s not what I am arguing. However, in technologies where the federal government would be the only institution within the United States having an interest (e.g., tactical weaponry and support systems, spy satellites, space station modules, etc.) the government should not be issuing patents if they do not intend to respect the rights of the patent holders since this would lead to a situation where there would be no incentive to invent (i.e., would not “promote the progress).

    “They certainly provide *less* of an incentive to innovate if the right to exclude is subject to the whim of the government, but the same is true of any other limitation on the scope of a patent. . . . In the missiles/spacecraft area, it *could* plausibly be argued that, unlike other areas, the government is the only one doing most of the innovation, and it does more to advance the progress of science if NASA can infringe with impunity than if a guy in a garage can enjoin the United States from building its missile defense system.”

    Even if the government is doing most of the innovation, it stifles innovation by non-government entities hoping to obtain government contracts or licenses if patents can be arbitrarily infringed. However, I believe that in these areas, most of the innovation and patenting is actually being done by aerospace and military contractors.

    BTW, I just said “I would argue” not that “I would seriously argue” ;-)

  17. D.W.A.P.:

    Schillinger v. United States, 155 U.S. 163 (1894) did not address the Patent Act at all except tangentially. It addressed the Tucker Act and the jurisdiction of the court. It held there wasn’t any jurisdiction for patent infringement. The Tucker Act has not been amended by Congress in any substantial way since that time. By your own logic, then, the Federal Circuit got it absolutely right — there was no jurisdiction to hear the Fifth Amendment claim under the Tucker Act.

    Your assertion that “Chapter 18 in Title 35 USC makes clear Congress’ intent that it wants to pay a license fee to use inventions” is odd. If anything, the Bayh-Dole Act indicates very clearly that Congress doesn’t intend to pay any license fee since it requires a fully paid up non-exclusive license to the U.S. Government. It is rather rich to argue that a statute that express says “we will not pay license fees for government funded inventions” is somehow a statement that the government will in fact pay license fees for everything else.

    The only statute that even arguably helps your position is the one that you do not mention, 28 U.S.C. 1498, which does provide a remedy for use of inventions in the United states But the problem there is that, quite apart from whether the court interpreted 1498(a) correctly, 1498(c) specifically provides that there is no remedy against the United States for infringement overseas — which is precisely what occurred in Zoltek. Thus, again, Congress has made it absolutely clear that it does not intend to pay license fees to use inventions overseas.

    Is it bad policy for Congress to not want to pay for use of inventions overseas? Perhaps. But if there is a carve-out in the statute and the U.S. asserts sovereign immunity, it is disingenuous to blame the court for enforcing it. Sovereign immunity is unfair. That is just life.

  18. Small Inventor:
    Ok you failed the logic test. Now take advantage of the highest calling for which you are qualified and flip some burgers.

  19. Anonymous:
    The patent act addressed in Schillinger v. United States, 155 U.S. 163 (1894) no longer exists. The modern patent act with Chapter 18 in Title 35 USC makes clear Congress’ intent that it wants to pay a license fee to use inventions. Q.E.D. Therefore, the rationale for the Federal Circuit Opinion is moot. Schillinger v. United States, 155 U.S. 163 (1894) is no longer applicable.

  20. Mark Lemley wrote:

    “Judge Michel’s letter is remarkable.”

    I personally found the reasoning in the letter difficult to follow. It seemed like a letter that was penned in haste, complete with typos. Little was made clear, save for Judge Michel’s opposition to the passage of the proposed legislation.

    I find the fact that a letter such as this one actually left Judge Michel’s office to be a bit worrisome. I wouldn’t be surprised if there was further communication with or from Judge Michel’s office to respectively ask for or provide clarification–indeed, I would expect it, if there is either serious interest in Judge Michel’s opinion, or if he himself actually feels strongly about the issue.

    Mark, I am not up to speed on the finer points of the damages apportionment debate. As a genuine question, I am wondering specifically what the proponents of damages apportionment via the proposed legislation hope to gain by its passage, if the assertion made by their opponents that courts already engage in damage apportionment under Georgia-Pacific is in fact correct.

    Can anyone fill in the blanks?

  21. Prof. Lemley:

    Come on now – you can’t possibly be serious. At least give Judge Michel the courtesy of a fair and honest interpretation of his letter. I guess I should not be surprised given some of your articles I have read.

  22. anonymous, I was responding to this passage:
    “The Constition gives Congress power to give patent rights, but ONLY for a specific purpose, i.e., “[t]o promote the progress of science and useful arts.”

    It is all too common these days to hear from the anti-patent crowd that majority of the patents granted DO NOT promote “progress of science” (e.g. computer science in the case of “software patents”)
    And you know what ? They are absolutely right !!! 90% of all patents are junk, just some random legal crap big corps use to intimidate smaller competitors or some carefully planted legal mines

    This is not what Founders had in mind when they wrote “discoveries”…

    Something like KSR was bound to happen…

  23. small inventor, preceding the language you quote is “The Congress shall have power. . . ”

    If your argument is that Congress may only grant patent rights in such a way that they “secur[e] for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” and that Zoltek represents a departure from the “exclusive” part, that makes a lot more sense, but that’s not the argument I was responding to.

  24. Given what was held in KELO ET AL. v. CITY OF NEW LONDON ET AL. and the Supreme Court’s pass on Zoltek Corporation v. USA, it will be a free for all under governmental auspices serving any “public purpose.”

  25. Lucky Art Fry, inventor of Post-it® Notes..

    What would he deserve under the current damage apportionment proposal ?

    Any guesses from the audience ?

    -
    MMM free (you do know what the 3rd “M” means ?)

  26. Judge Michel’s letter is remarkable. For the past two years, opponents of damages apportionment reform have been saying that there is no need for this statute because courts already engage in apportionment under the Georgia-Pacific factors. Now here comes the chief judge of the Federal Circuit to say that they don’t do any such thing, and would find it too hard to figure out how much of the value of a product comes from the patent. Far from an argument against damages reform, Judge Michel’s letter is the best evidence yet of the need for it.

  27. “The Constition gives Congress power to give patent rights”

    This is just plain BS

    Read the Constitution, my friend:

    “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

    No patent rights are ever mentioned.

    Got it now ?

    E-X-C-L-U-S-I-V-E D-I-S-C-O-V-E-R-I-E-S

    Looks like you are writing from the SCOTUS bench…

  28. DWAP, the Zoltek opinion is, according to its authors, a straightforward application of Schillinger v. United States, 155 U.S. 163 (1894). The author of that opinion is David Josiah Brewer, who can’t be impeached because he died in 1910. Rather than impeaching Justice Brewer, the better course of action would be to file a cert petition with the Supreme Court to get it to overrule Schillinger. That didn’t work this time, but that course of action remains available the next time the government does what it did in Zoltek.

    coward, is your argument seriously that patent rights completely fail to promote science and the useful arts if they can be infringed by the government? They certainly provide *less* of an incentive to innovate if the right to exclude is subject to the whim of the government, but the same is true of any other limitation on the scope of a patent (including the term of the patent and the extent to which the law allows a patent to be invalidated after it has been issued). In the missiles/spacecraft area, it *could* plausibly be argued that, unlike other areas, the government is the only one doing most of the innovation, and it does more to advance the progress of science if NASA can infringe with impunity than if a guy in a garage can enjoin the United States from building its missile defense system.

  29. anonymous, you’re wrong. The Constition gives Congress power to give patent rights, but ONLY for a specific purpose, i.e., “[t]o promote the progress of science and useful arts.” Therefore, Congress’ power is LIMITED. If the patent granting does not serve this purpose it is unconstitutional. I would argue that a right that can be, at will, infringed by the government (think how many inventions are really only useful for a government purpose, e.g., missiles, spacecraft, etc) fails that test.

  30. Babel, the IP clause of Article I doesn’t follow the pattern of the Bill of Rights.

    The First Amendment starts with “Congress shall make no law”

    The IP clause doesn’t say “Congress shall make no law restricting the right of a patentee to exclude others from making, using, or offering to sell his invention.” Rather, it gives Congress the power to set up a patent system and tells Congress that the system is be set up based on IP rights. The scope of an inventor’s right to exclude is set forth in Title 35 of the U.S. Code.

  31. In all seriousness, it appears that these judges are a clear and present danger to the citizens of the United States of America. We cannot allow judges to remain on the bench that allow the government to steal the property of the citizens without just compensation. In short the Fifth Amendment is a grant of power to the Federal Government. It stands for the proposition that the Government can take NOTHING unless they pay for it. Without the Fifth Amendment the Government can take Nothing of property. It only gets to obtain Fiat Money it allows the private bankers to print paid to it based upon its taxing power.

    How do we start a process to impeach the authors of this opinion.

  32. “How do you condone the non sequitor that because I gave you a right, I can cancel it anytime I want to. Extend that “logic” to right of free speech, assembly, religion, etc. and where does it take you? The Constitution, not Congress, gives us the right to secure our inventions, and in doing so it doesn’t make any exceptions for governmental infringement”

    Babel, you’re wrong.

    The Constitution doesn’t give you patent rights. It gives Congress the power to give you patent rights. Because Congress has the power to do something doesn’t mean it has to. Congress also has the power “to borrow money on the credit of the United States.” Would it be unconstitutional for Congress to pay off the foreign debt?

    Congress also has the power to “establish post offices and post roads.” Is it unconstitutional to put drop boxes on the sidewalk that aren’t part of an “office”?

  33. I do not believe that the proper research was done in this case. The problem with the reasoning in this case is that it pretty much renders moot an entire statuory scheme Congress established concerning Patetn Rights In Inventiosn Made with Federal Assistance. Title 35 United States Code, Chapter 18. One of the clauses in that Chapter is particularly telling in this regard: “It is the policy and objective of the Congress to . . . promote the commercialization and public availablity of invention made in the United States by United States industry and labor; ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions . . . .”

    Now the real question is this . . . if the Congress thought it could simply use patented inventions without having to pay for them, why is it that Chapter 18 exists at all?

    What we have here people, is another example of gross fiscal mismanagement by the individuals in Washington, DC. It seems that they have so destroyed the economic viability of this country that we can no longer afford to be a nation or laws; nay, it appears more and more every day that we have not enough money to operate in any governmental fashion other than autocratic. I have long questioned whether poor countries can afford to be democratic. You see, the Court was simply protecting the public fisc, because it knew the government could not afford to follow the law. It appears my question is being answered in the negative.
    Now call me crazy but I simply do not see how allowing a government agency to send U.S. inventions overseas for production by a foreign company and not pay compensation to the U.S. patent holder is not in complete contravention to the specifically stated policy of Congress. Moreover, it cannot be said that this situation presents an unreasonable use of the patented invention.

  34. The COFC and CAFC’s decisions in Zoltek are the very type over which law review students and law professors salivate. Is a patent property under the Fifth Amendment?
    Is 1498 a waiver of sovereign immunity which must be stricly construed? Are the enunciated rights in Section 271 to Title 35 even applicable to what is contained in Section 1498 to Title 1498? As to the latter question the COFC and the CAFC majority answered “no”, and yet inexplicably used 271(a) as its “guiding light”. The list goes on, every question of which is ripe for yet another “learned” article in a professional journal. Did the 1910 act, the 1918 amendment to the 1910 act, and the subsequent enactment of 1498 in 1968 somehow freeze in time what was waived by the U. S. Government under the collective applications of these three acts? Equally important, just what is one to make of the remarkably casual language in 1498(c)?

    I, as one who is intimately familiar with these and other issues presented in Zoltek, believe that answers to these and other questions will be addressed at some later date when and as a better set of facts are presented.

    Importantly, our jurisprudence has always recognized that patentees are entitled to be compensated when a US Patent is infringed by the US government. The critical issue, however, is just where that relief can be sought. Do courts have jurisdiction to hear such cases, or must the the case be brought by securing a private bill for compensation from Congress?

    Zoltek suffers from the unfortunate ommission of one critical fact, and that is what would happen if the suit had originally been brought against the government contractor under Title 35, and not as was the case here against the US Government under 1498?

    I look forward to what Zoltek (or any other similarly situated patentee) will do next? If a suit is brought in federal district court against a government contractor, who would undoubtedly try to hide behind 1498 as an affirmative defense, that contractor may very well find itself in a position where its defense is denied and the case proceed to trial. This is what will likely be needed to truly measure what 1498 actually means. It will also, to be crude, scare the “be-jesus” out of the US Government when it realizes that equitable relief, denied to the COFC, will come into play. On the one hand it will undoubtely try to play the “limited waiver of sovereign immunity” card, but on the other hand sweat bullets at the possibility that a 271 action against its contractor could screw up its procurement contract, and especially when such a procurement is not a matter of national urgency and necessity.

    My gut tells me that this case may be far from over, and that it may yet wend its way back to the SCOTUS, but on a different set of facts and with a different result on a petition for cert.

  35. Malcom, I agree with MrBellie. How do you condone the non sequitor that because I gave you a right, I can cancel it anytime I want to. Extend that “logic” to right of free speech, assembly, religion, etc. and where does it take you? The Constitution, not Congress, gives us the right to secure our inventions, and in doing so it doesn’t make any exceptions for governmental infringement.

    Of course, what the USSCt is doing is effectively extending its Florida decision that the 11th Amendment allows states to rip off inventors to the feds. The next step is to allow local governments to take their piece by applying the anti-takings “logic” of Kelo v New London to patent law — if it’s in the public’s good for the government to infringe, go for it.

    Babel

  36. 2Me:

    Welcome to the club, buddy..

    In the present reality the best advice I can give you is to get out of this independent inventing-patenting thing ASAP, before you incur too much damage, finacial and emotional, to yourself and to your family…
    My patent attorney advised me to drop invention thing and become as attorney or agent years ago… Too bad I didn’t follow his advice. He is a smart fella – my patent attorney, he even has a patent or two in his name – a carefully planted legal mine having nothing to do with invention…

    And believe me, you don’t want European patent system in US (with the possible exception of their problem-solution approach and the examining division of 3 people, to reduce the chances of getting a really really dumb examiner -there are quite a few of them in the USPTO) unless you want:
    1) to pay some big $$$$ to European patent attorneys (unless you are a European resident you are NOT allowed to file pro se in EPO)
    1) to pay annual fees to EPO ($$$ many times) while your application is collecting dust before being examined,
    2) to have to translate into several languages (big $$$$),
    3) to have to register it (more big $$$$) in all major countries,
    4) and finally to have to separately litigate it in each country

    Why would anybody want a European patent ? (A question for Max Drei)

    And a second question for the SCOTUS and for US Congress:
    Why would anybody want a US Patent after all the mess they have created (or about to create) ?

  37. Thanks step back, but you are wrong on the merits in this case.

    Interesting to me that you slam the Office and then presume they have a strong argument in the instant case.

  38. …and I think the Office gets around 133 after final by calling the Action “Advisory.” Since it is only Advisory that likley argue the 30 days does not apply.

  39. Hello there Me,

    The US Patent Office long ago stopped being an institution for truly examining patents and became a money grabbing bureaucracy. How often is it that you don’t get a real and decent first action search, let alone a chance to expedite matters with your second bite at the apple?

    On the other hand it sounds like you need to go out and hire yourself a patent lawyer. Prosecuting a case pro se is really dangerous. Most amateurs don’t know what they are doing and how they are damaging the value of their patent. Sounds to me like the Examiner was telling you that the physical “structure” of the prior art is the same or an obvious variation on the apparatus/composition you are claiming. The fact that your apparatus (or composition of matter?) is made by another process does not alter its physical structure. After final, you cannot amend a claim as of right.

  40. Lots of stuff is dealt with in very arbitrary ways after final – including the weird two month cutoff. 35 USC 133 is only one…

    I just recieved an action where the Examiner argued that there was product by process language in the claims and he did not examine that lnaguage on the merits. I deleted the product by process language (that he did not examine) in the after final response – it was the only change I made. He claimed a new search was required and refused to look at the argument on the merits because I deleted the language HE PREVIOUSLY DID NOT EXAMINE (or presumably search for). I think he may need a Introductory Logic class – they probably offer one at G’Town.

    I have about ten different things to complain about after final – don’t get me started. Can we please go to a more European system where we argue on the merits and look to forward prosecution instead of this silly second action always final, and the “after final/RCE” game the Examiner’s play. Didn’t Doll actually institute this game broadly when he led 1600 and now hates it since he is in charge?

  41. Accordingly, the government can’t be “taking” anything away from the patent holder, since all the patent holder ever possessed to begin with was whatever specific rights the government had granted to it.”

    I am not an attorney so don’t shoot me. But by this reasoning
    could you not argue that if person A gives something to person B, that person A
    is always entitled to take it back regardless of person B’s opinion on the matter?
    If I grant you permission (in writing of course) to use my land for
    20 years can I withdraw my permission without
    your approval? Isn’t this the power the government effectively gets?

  42. From the Zoltek article:

    “The Federal Circuit court had reasoned that since patent rights are created and defined by the federal government, they extend only so far as Congress has said they should extend. Accordingly, the government can’t be “taking” anything away from the patent holder, since all the patent holder ever possessed to begin with was whatever specific rights the government had granted to it.”

    That sounds reasonable. I wonder, though, if the Supremes denied cert because they wholeheartedly agreed with the Federal Circuit or because they are waiting for a better set of facts.

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