Two new USPTO Notices

  • e-Office Actions:  The PTO is continuing its e-Office Action pilot project with a few modifications. [Link] [Contact ebc@uspto.gov].
  • Public Submission of Peer Reviewed Prior Art begins JUNE 15, 2007: "This project will test whether [a loose public] collaboration can effectively locate prior art that might not otherwise be located by the Office during the typical examination process." Documents will be submitted by the Peer-to-Patent project "under a waiver of certain sections of both 37 CFR 1.99 and 1.291." [USPTO Notice] [Peer-to-Patent Website]

32 thoughts on “Two new USPTO Notices

  1. Why doesn’t every patent applicant merely search the Soviet/Russian “doctoral theses” for everything, even cumulative art of merely slight relevevance to the invention, to elevate the infringer’s burden of proof? If the inventor cites all of this art in an IDS, then the infringer will have to prove obviousness to a clear and convincing standard, rather than merely to a preponderance standard, since all of the art was cited in the IDS, since the art the infringer is using was cited during examination.

  2. I thought there was a “preponderance of the evidence” burden of proof that a reference not considered by the examiner renders the patent obvious, and a “clear and convincing” burden of proof that a reference not considered by the examiner renders the patent obvious. It is thus easier to overcome the presumption of validity when your reference was not before the examiner, since you only have to show by a preponderance of the evidence that the reference renders the patent obvious. (I am new to this blog.)

  3. re:

    “The subtle implication in KSR that there is a constitutional requirement and/or level of nonobviousness should be viewed with alarm by …”

    This is a concept that appears in Graham and John Deere and flows fairly naturally from the Constitution which says that Congress has the power to grant exclusive rights to an an inventor for the inventor’s discoveries. If an idea is obvious or trivial it really does not constitute a “discovery” and so does not fall within the Constitutional power.

    Posted by: Joe Smith | Jun 08, 2007 at 02:11 PM
    ———————————————–

    I respectfully disagree that any purported limitation on Congress’s ability to define patentability flows “naturally” from the Constitution. The Progress clause was adopted to ensure that it was Congress, and not the Executive, who was authorized to carry out the Progress powers by granting patents. (Recall that the clause was intended to address the same concerns as raised in the Statute against Monopolies, crown grants.) Neither the Progress clause nor the Statute against Monopolies recites any specific limitations on patentable subject matter, other than limiting protection to inventions.

    The common law subsequently recognized a variety of requirements for protectable inventions, requirements generally codified by the patent statutes, lastly in 1952. But there is nothing to suggest that Congress was bound to adopt all such requirements, and indeed, over the years plainly has not.

    Moreover, the Supreme Court long ago ruled that Congress has plenary power over patent matters. If Congress has the constitutional authority to extend copyright protection to the fine arts (even when the Progress clause expressly limits such authority to science and the *useful* arts), then Congress surely has the constitutional authority to extend patent protection to inventions on the fringes of obviousness. The rational basis for such an extension is to be certain that those inventions truly worthy of protection are in fact covered.

    Again, the warning I intended to raise was that the activist Reagan-Bush-1206 courts (confirmed in many cases by a Democratic Senate, so blame is shared equally) are concocting limits upon legislatures and juries out of thin air, not out of the express language or original intent of the Constitution.

  4. I think the above comments are forgetting two things for this one-year trial:

    1. This process is voluntary. Only applications requesting that they be treated under this process will be. You can’t force an application in.

    2. This process only applies to the computer art. You can’t go after swings and religious soap unless the trial moves into a regular practice.

  5. Is there a patent lawyer or law firm that we all hate? Let’s form a task forces and mess with everyone of their patent applications by collectively making a massive effort to look for prior art for each application they submit. Oh, never mind. I forgot that I’m not a jerk so I won’t be participating in such a conspiracy. But this open process to increase the legal costs of the clients someone we hate is great for those who are jerks. Imagine having to go back to your client each time and explain that someone is out to get you so they keep submitting prior art in cases you file so the client has to pay more than they otherwise would had you not been their lawyer. How long do you think you will keep that client?

  6. ip-esq,

    I am not sure what the motivation of the submitter has to do with the relevance of the art cited. They may be a competitor or a large corporate entity trying to squash a little guy – why should it matter. If the art anticipates the claims, it anticipates the claims.

  7. To add to the discussion on communuity patent review, I strongly believe that, people who bother to contribute towards search for prior art against patent disclosure being opposed, could be those belonging to the opposition group which may consist of competitor firms or their friends. In case no one is interested commercially,no prior art may be digged or brought out. In general, public does not bother, but may still criticise as usual, as they have no stake in this excercise.

  8. Karl asks why anybody should expose their pat appln to observations on patentability from members of the public, prior to issue. Considering the corresponding provision in the since 1978 European Patent Convention, Article 115, it makes a lot of sense. Applicant gets to see the closest art before issue, so can sculpt the claims to overcome it prior to issue, while the freedom to amend is still relatively good. There’s a presumption of validity in Europe in the sense that, once the patent issues, the burden is on the contester of validity to make out his case. Even without the “clear and convincing” hurdle to jump, but only the lower “preponderance” barrier, if the best art the attacker of the issued claim has got to work with is already on the Patent Office file, he’s got an uphill task. In Europe, since 1978, EVERY pat appln is exposed to Art 115 observations from the public but, note, the public never bothers. Maybe because it helps Applicant.

    Important to stress is that observations from civil law Europe are of little help to the debate about peer to patent in common law USA, because the two legal systems are incompatible. Can’t help watching with interest though.

  9. “The subtle implication in KSR that there is a constitutional requirement and/or level of nonobviousness should be viewed with alarm by …”

    This is a concept that appears in Graham and John Deere and flows fairly naturally from the Constitution which says that Congress has the power to grant exclusive rights to an an inventor for the inventor’s discoveries. If an idea is obvious or trivial it really does not constitute a “discovery” and so does not fall within the Constitutional power.

  10. re: “3. As SCOTUS has been strongly hinting of late, the presumption of validity should not attach with respect to art that the patent examiner has not explicitly considered.”

    It should be no surprise that, as usual, the present version of SCOTUS feels free to ignore both black letter law and establised precedent in uttering such dicta. 35 USC 282 plainly contains no exemption for, nor diminution of, the presumption of validity based upon whether specific art was cited during prosecution. “A patent shall be presumed valid” is about as succinct — and clear — as a statute can get.

    While IMO the Federal Circuit generally has it right with regards to the burden of proof needed to establish invalidity, any discussion of “property rights theory,” whether the PTO has done its jobe properly or other rationale for the presumption misses the point — the patent grant and the rights appertaining to it are based solely in statute, not common law.

    The subtle implication in KSR that there is a constitutional requirement and/or level of nonobviousness should be viewed with alarm by anyone concerned with the neocon (sorry, the proper English word is “reactionary”) “imperial judiciary.”

    (The last, with apologies to Arthur Schlesinger.)

  11. “The Federal Circuit has said that the presumption of validity is based not on the presumption of the USPTO doing its job correctly but based on a property rights theory of patents.”

    Interesting statement, can you provide a citation? Everything I find terms it “deference” to the PTO.

  12. “…as a matter of course anytime this happens during a litigation the matter should immediately be sent back to the original examiner (if he is still around) so that he can provide his opinion on the newly cited art, if only to declare it ‘cummulative.’”

    I do not intend to be, or to sound, snide when I say this:

    You’ve simply reinvented reexamination, and established a mandatory stay of litigation that will make patent suits take even longer to proceed through the courts. How would this procedure improve the system versus a preemptive or even a responsive request for reexamination filed in the USPTO?

  13. “The presumption is needed so that infringement defendants don’t just re-search the same areas searched by the examiner and pull a reference the examiner didn’t cite and say, “Here’s some art the examiner didn’t consider, so there’s no presumption of validity.” And to prevent defendants from searching areas where the examiner didn’t search and producing marginally relevant references to destroy the presumption.
    —————————————
    Good points, which is why as a matter of course anytime this happens during a litigation the matter should immediately be sent back to the original examiner (if he is still around) so that he can provide his opinion on the newly cited art, if only to declare it “cummulative.” Given the small number of patents that are litigated in any given year relative to the number that are issued, this would not entail much extra work on the part of the USPTO, and would put all prior art on an equal footing with respect to presumptions of validity.

  14. “The time frame needs to be exteneded under 1.99 to the point of allowance (currently limited to a few months from publication);”

    I am commenting on my own comment, but…

    This is important as one following a prosecution needs the ability to enter new art based on new claim limitations from the patenteee (just like Examiners need new searches for the same reason).

  15. The Federal Circuit has said that the presumption of validity is based not on the presumption of the USPTO doing its job correctly but based on a property rights theory of patents. Thus no matter what was or was not before the examiner is of no relevance to the presumption of validity. Material, non-cumulative prior art that was not before the examiner is more likely to provide clear and convincing evidence that art that was before the examiner.

  16. The presumption is needed so that infringement defendants don’t just re-search the same areas searched by the examiner and pull a reference the examiner didn’t cite and say, “Here’s some art the examiner didn’t consider, so there’s no presumption of validity.” And to prevent defendants from searching areas where the examiner didn’t search and producing marginally relevant references to destroy the presumption. Given the current availability of information, it’s not too difficult to hire a search firm to dredge the databases of Soviet/Russian “doctoral theses” and get a translation and claim, “This is a knockout reference that was never before the examiner.” If a reference that was not before/not considered by the examiner is truly a knockout, the presumption of validity is not going to stand in the way of a finding of invalidity. But it will stand in the way of reams of cumulative references.

    (BTW, there is a search firm around here in suburban DC composed of Russian “doctors” who will find “knockout” Soviet/Russian art for you. Some friends have used them, and swear by them. Not an endorsement, just a mention.)

  17. 6) It also should help the little guy. My big clients will save the best art for a later litigation (they trust the CAFC more than the average Examiner to get it right) but my small clients will use this route (can’t afford litigation anyway).

  18. Well, since I am likely one of the few who has used 37 CFR 1.99 (and gotten a pissed off call from a major in-house counsel wondering what this IDS was – even implied I couldn’t file it):

    1) The time frame needs to be exteneded under 1.99 to the point of allowance (currently limited to a few months from publication);
    2) You should not have to serve it on the other side – they can find it in the file and in-house patent attorneys get pissed when served (although in my case it was comedic);
    3) There should be no effect on presumption of validity (just a silly litgator idea above);
    4) Anyone can submit, thus if you do so for a client there is no need to tell the assignee who the real party in interest is;
    5) This will lead to better patents, so BRING IT ON!

    Me

  19. On the Peer to Patent Project website there is a link on the right “Get your patent reviewed”. So this program is going to start on a voluntary basis. Who in the name of zombie Vader is going to sign up for this? I don’t happen to have any applications I’m working on that I feel like throwing to the jackals.

    Help me out here. What am I missing?

  20. I don’t think every Tom, Dick and Harry is going to pop out of the woodwork looking to knock out Joe Inventor’s patent just because the courts take SCOTUS’ hint on where the law should be. After all, patent litigation is very expensive stuff, and how much money is there merely in knocking out someone’s patent? But beyong this, why should a patent be presumed valid with respect to prior art that the examiner never even saw?

  21. There used to be a vanishing presumption of validity in the Fifth Circuit in the event of “new prior art.” The problem was, the defendant would come up with any old prior art not cited and poof goes the presumption without regard to whether the new art was relevant, material, or cumulative.

    The basis of the presumption is that the PTO does its job. More than ever, that basis is in question. But we’re really on the verge of throwing the baby out with the bathwater.

  22. “3. As SCOTUS has been strongly hinting of late, the presumption of validity should not attach with respect to art that the patent examiner has not explicitly considered.”

    Absolutely not.

    Those parts of the patent reform lobby that argue that the presumption of validity should be cut back need to address the channeling function of the existing statute. Their proposed reform increases the incentive to argue invalidity in front of a lay jury, which will increase the number of patent disputes initiated and proceeding to trial in the Federal Courts (over an existing or reformed scheme including a presumption of validity). Resources dedicated to educating federal judges and lay juries on the states of various technical arts cannot be dedicated to increasing the quality of patent prosecution or the level of USPTO fees, which the reform lobby also alleges are so inadequate as to routinely yield poor quality patents that encourage “unnecessary” litigation. Such contradictory messages require an explanation, especially when the presumption of validity is an almost illusory barrier to invalidating “bad” patents to begin with.

    If you dislike the presumption of validity, you are welcome to file a request for inter partes reexamination in the USPTO and argue toe-to-toe with the patentee. You’ll even have a technically qualified audience and a cheaper process to boot. If you are particularly cheap, you are welcome to file a request for ex parte reexamination in the USPTO, but then again those filers likely are not among those seeking to adjust the presumption of validity because they can’t afford to engage in patent litigation and encounter the issue.

    Until the reform lobby can show how the reexamination process is both broken and unfixable, I see no reason to make the even blunter tool of civil litigation even easier to apply. In my view, adjusting the presumption of validity is simply way to create the most probable, but expensive, means for invalidating an issued patent.

  23. Here’s what should be tried:
    1. Post every patent application to the PTO website as soon as it is processed, along with every office action and response. Inventors who don’t like this would simply have to accept that full disclosure is the price of trying to get a patent.
    2. Invite the public to chime in with prior art, arguments, whatever, with the understanding that it is solely up to the discretion of the examiner whether or not he/she makes use of said prior art and arguments.
    3. As SCOTUS has been strongly hinting of late, the presumption of validity should not attach with respect to art that the patent examiner has not explicitly considered.

  24. Jesus Christ Almighty God D_mn. Dudas just pissed and moaned to the Senate about too much prior art in some cases but here they invite incalculable quantities of prior art in all cases and they tout this as the cats meow. What is the real agenda here? What are these people after? Can we just start revoking the corporate charters of the companies that are messing with our governmental systems. What I really, really want to know is Ron Paul’s position on intellectual property.

  25. I have been thinking about the public prior art program. As I understand, this will be an avenue for persons (attorneys, agents, scientists, persons of ordinary skill) to try to assert prior art against published patent apps. Then I assume that the PTO will automatically consider these references.

    Two questions come to mind:

    1) If no art gets cited; it is a presumption that non-existed?

    2) Do the persons disclosing have to disclose who they are? This might be helpful to understand the motivation behind submitting the reference.

    Also, if I misspoke about certain points of the program, please clarify.

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