Patently-O Tidbits

  • PatentLawPic057Patent Sharks: The recording industry has focused its message — individuals who download share songs without paying will be sued. [$200k verdict against single mother]  In the 19th century, ‘patent sharks’ went after individuals in the same way — leading to major patent reforms. [Link] [Kirkman Blog]
  • PTO Morass: GAO Report on the PTO: “Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog”. In response, the PTO will conduct its own study to “review assumptions the agency uses to establish production goals for patent examiners.” [Link] The Department of Commerce also notes that the new rule changes should help fix the employment mess. (p.36 of the report).
  • Obviousness: Milton & Anderson suggest a new obviousness acronym — the common sense selection (CSS) test. “[M]ere selection of elements from various prior art references and combining them together with no change in their respective functions is a matter of common sense to one skilled in the art, and, therefore, obvious and not patentable. On the other hand, a combination that includes something new or produces a new function or an unpredictable result remains potentially patentable.” [LINK]
  • Patent Reform:
    • Political Economist & Harvard Professor Mike Scherer has an excellent new paper on the Political Economy of Patent Reform in the US. [TIIP]
    • One report I’ve seen announces that the Senate has 41 anti-reform votes — enough to block consideration of the reform measures. A reformed reform bill may still have a chance.
    • Kathi Lutton (Fish & Richardson’s Chief Litigator) & Kelly Hunsaker continue to develop their Patent Reform Updates.

47 thoughts on “Patently-O Tidbits

  1. Alun,

    do you search using the PTO classification system? Without using any keywords to filter the inordinate number of patents in each classification? Perhaps your production requirement is not as stringent as the examiners’, but I can’t fathom how you can look through the potential thousands of patents that may exist in each classified area, including those that should be cross referenced, without the danger of missing some important detail that may require deep reading in one of the patents. I just can’t believe what you’re advocating is feasible without any keyword filtering.

  2. As a former professional patent searcher for 16 years before moving over to prosecution and becoming a registered patent agent, I feel compelled to point out that keyword searching is not superior to classification searching, even in multidisciplinary arts. Both methods usually find art that cannot be found by the other method, but it is the classification search that locates the best art in the vast majority of cases, not the keyword search, despite wishful thinking by many people who would like to save the much greater amount of time that a classification search takes. You can look in recent file wrappers and see only keyword searches in most cases, and draw your own conclusions from that. Of course, examiners with production quotas to meet would like to think the faster method is better, but it’s just not so.

  3. I am curious if the USPTO search system is in any manner tied to the databases maintained by the Defense Technical Information Center (DTIC) and/or the National Technical Information Service (NTIS). Certainly the former is the repository for all technical reports prepared under the auspices of the Department of Defense, and the latter is the repository for such reports from what I believe are all other federal agencies. These reports should embrace work done under contracts, grants, cooperative agreements, CRADAS, etc.

  4. Dr. John,
    You have some interesting ideas about data mining. But as far as I know, no one has ever applied data mining to patent searching.

  5. In the computer age of 2007, to have the backlogs that exist in the patent system as well as the legal system in general, is Dilbertisk… doing the same think over and over expecting different results. Data mining is all the buzz but only poorly applied. I believe I got better checking in the 80′s than today. As far as I know the Library of Congress data base is still not linked to the patent office, leaving out all the old texts. Using new words to describe old concepts is usually a winner and the background and skill of the examiner cannot be relied on to make the comparisons since they are younger and don’t have the knowledge. Give the examiners better tools and the backlog and stress will decrease as will the issue of “bad” patents that gunk up the system. I am not in favor of the “let the courts figure it out later” policy because that always favors big business. Maybe Google should run the patent office?

  6. I tried posting the following before as part of my response. It got blocked by the content filter for use of a word rhyming with Stu Pit.

    The fact of the matter is, the record companies want to blame their woes on illegal downloading instead of their own practices such as, for example, the elimination of singles, charging 18 dollars for new CDs, and not distributing music electronically. Not to mention recognizing that kids today do not care about music quality as shown by the popularity of MP3s. (compact disc quality my ass, and even if they were compact disc quality, compact discs are not even vinyl quality.) For a variety of reasons, (including the fact that most people are basically honest) most people prefer to stay on the right side of the law without such draconian fines being used. If the record companies put their back catalogs on sale for a fair price ( 0.99 a song I see as generally fair unless it’s something like “Thick as a Brick”) most people will pay the price.

  7. Retaining more examiners and giving them more time to examine will be helpful, to be sure, but it will not fix the problems. What is needed is some other system, perhaps a mandatory examiner interview where claim amendments can be made before the first OA…. with more first action allowances based on these interviews.

  8. Just visiting,

    It looks as though the virulent parasites of the present administration were unable to successfully infiltrate the good GAO.

  9. Here’s an excerpt from the conclusion of the GAO report.

    “Although USPTO management does not agree, the root of this high level of attrition appears to be the stress resulting from the agency’s outdated production goals. To meet the agency’s production goals, most patent examiners, regardless of their tenure with the agency, have had to work unpaid overtime or work during paid leave time, and therefore consider this to be a primary reason for leaving USPTO. Because the production goals appear to be undermining USPTO’s efforts to hire and retain a highly qualified workforce, we believe the agency will continue to be limited in its ability to meet the increasing demand for U.S. patents and reduce the growth of the patent application backlog, and ultimately may be unable to fulfill its mission of ensuring U.S. competitiveness.”

  10. The good director seems to be selectively reading the GAO report. A good portion of the report is a critique of the PTOs spectacular retention problems that offset the PTOs hiring efforts, and a complete slam of the PTOs workload calculations as being detrimental to retention.

  11. ” [$200k verdict against single mother] ” How does the modifier “single” carry any significance? (I’m a chemist, not a lawyer, so a certainly could be honestly ignorant of these matters.)

  12. Anon,
    You hit it right on the head. I my area (which is an application of technology rather than the technology per se), I have to be a jack of all trades. I do networking, encryption, random number generation, LCDs, currency acceptors/validators, motors, operating systems, machine vision, you name it. I have to go far afield to get searches from other art units. This is because my area is all applications, not the technology itself. Anonymous in 3700land.

  13. Sorry, I know this is off topic, but I wanted to alert others to yet another issue raised by the rules that we had overlooked in several readings, days of accumulated study, etc.. Namely, see the updated PTO FAQ question C11 and answer–no divisionals for claims that have been the subject of an IPER, apparently regardless of subsequent restriction requirements in the U.S. national phase. This affects many more of our cases, and will require a large number of additional filings before November 1 so that we are not precluded from prosecuting these already pending claims. And no more demands–too bad we have to choose between prosecuting claims in the U.S. and efficient international examination.

  14. The production requirement should definitely be adjusted in certain technologies where classification is hard to determined. The originial production requirement was based on the assumption that examiners should be expected to gain efficiency through experience in a particular technology area through familiarity in examining that classified art. This assumption makes sense in easily classified area such as wheels. However, in the high tech age, a claimed invention can often span across different areas such as processor architecture, network protocols, etc., rendering the classification system irrelevant in searching strategy. Even with better searching technology that primarily utilizes keywords, examiners still require time to digest all the different areas of technology that may span an application. This begs the question of whether classified searching should even be required and whether experienced examiners should even be deemed “experts” in their area.

  15. Babel Boy,

    I doubt the Federal Circuit would attempt to change the PHOSITA standard, but Congress could make the change. This is the language found in 35 USC § 103(a).

  16. “The defendant was found liable for hosting the copyrighted songs on her computer using KaZaA, not downloading the songs.”

    If I understand the facts correctly from the media coverage (which is admittedly spotty), there was circumstantial evidence that she had indeed downloaded the songs. Because of the way the P2P technology works, the record labels didn’t catch her “in the act” of downloading, but the fact that the songs were in here shared folder suggests that she had downloaded them. (Songs are stored there by default after being downloaded.)

    The defense attorney didn’t seem to argue distinctly that Thomas legitimately owned these songs. He did argue that Thomas owned a number of CDs, but there doesn’t seem to be specific testimony that she owned the CDs containing the 24 songs at issue. The jury could reasonably infer that she had downloaded these songs.

    If she did own those CDs, that would presumably be her number-one argument for the jury. Instead, the defense attorney tried to do a song-and-dance about whether Thomas was really the person connected to this particular Kazaa user account (and there was plenty of evidence that she was).

    Some good coverage here:
    link to

  17. Night Writer,

    I read the Scherer paper from a non-legal perspective. Standing back and looking at it as such I have to admit that based on my years of experience many of his observations do ring true, particularly with respect to many large businesses and the dynamics involved for determining how R&D dollars will be expended. There are certain industries where the existence of patent law does serve as a motivator. However, there are many others where it simply does not enter into the picture in any significant way. The aerospace industry, with the exception of Hughes, readily comes to mind. Interestingly, while counsel with the largest aerospace company I was quite suprised to learn at the outset that virtually no one even knew that Title 35 even existed. In fact, the only ones who did were the few patent attorneys in its employ, and even as to them their primary activity was reporting “subject inventions” to the USG. It took me an inordinate amount of time and effort to educate executive management, including those in its Legal Department, that Title 35 could and should be used in a strategic sense to help butress its business goals. The same can be said for copyrights, trademarks, trade secrets, etc. You can well image their surprise when in at least one instance “rights” they never even knew they had were used to secure a significant refund from the IRS. See: Lockheed v. IRS (CAFC, 2000).

    I believe it is time well spent to read it over. It is not a legal treatise, nor does it purport to be. To me its benefit lies in the insight provided into the minds of certain classes of clients.

    By the way, I do not see the paper as being “anti-patent”. I see it much more in the nature of trying to see if a nexus does exist between patent law and innovation. As the author points out, in many large industries, as well as with new ventures trying to get off the ground, a causal relationship does appear to exist based upon empirical evidence. His point, however, is that such a causal relationship is much more difficult to establish across the entirety of our economic spectrum.

    Mr. Noonan,

    Your question is a fair one, but one that does not admit to a sound bite in a forum post. I would be glad to expound with particularity if you wish off-line from the blog. Suffice it to say that with onset of the use “intellectual property” within legal circles I have seen an ever increasing number of learned counsel who have jumped into the field with only a modicum of the substantive legal knowledge necessary to professionally represent clients in such matters. We all have war stories, but it is the horror stories I have witnessed that trouble me the most. As I said, I will be please to expound off-line.

  18. Watch out, the new IDS rules are going to be published around October 20, and will go into effect in mid January. Together with the continuation changes, they are the Patent Attorney Employment Act of 2007. One cannot help but wonder whether any genius at the PTO has thought that by passing examination requirements on to applicants, the PTO creates a demand that will make it even harder to retain qualified people.

  19. Yup, nunyadamnbizness is correct I think. That’s the scary part of 37 CFR 11.7(d)(3). The USPTO hires non-patent attorneys e.g. to work with the Solicitor (who also has little knowledge of patents), and after “two complete rating periods” of being rated “fully successful” by people who can’t quantify employee success in any respect, the attorneys can move on with a registration number.

    As such, Examiners can’t leave with a Reg. number so quickly, but Dudas and Peterlin and perhaps any non-patent attorney hired by the Office could if they met the political requirements. (Yes, you can thank the Bush Administration for that one too.) Sigh.

  20. “You’re right again. But it looks like the PTO still waives the bar exam for examiners, it’s just that the minimum 4 years in service restriction was lifted in 2004. Another nice Bush administration move.”

    I don’t think is totally accurate. I’m a JD examiner who came to the PTO having already taken and passed the patent bar. I’ve been with the Office for about a year and it’s my understanding that (assuming I stay with the Office), I am exempt from having to take a test (which I believe to be the same as the patent bar exam or at least very similar) which is required to become a primary. So for other examiners unlike myself (i.e. those who have not taken the patent bar and do not have a registration number), some type of exam is required at some point before they can be promoted to primary.

  21. Also, Dennis: Is it an excellent paper? Where is the excellence? Certainlly not in the reasoning. Not in its fairness.

    The editing of the paper is excellent, but then Scherer is at the G-school at Harvard, so the problem is that it is like trying to make your own videos. You don’t have the time and money to compete against the large studios. Scherer and his Harvard budget can create something that looks oh so nice, but the content is as bad as the content from the studios.

  22. Mike Scherer’s paper is bad science. The paper bases most of its conclusions on surveys of why people within a corporation say they have made decisions. So, for example, why are you spending $$$ on research? (Note that he didn’t even ask start-ups about the patent system.) But, this is flawed for two reasons: (1) Fundamental to psychology is that people often don’t know why they are doing something and asking them why may not be a good reason to understand their motives, and (2) The environment may radically shift if the patent system was dismantled. So, the person in the corporation may say they are spending dollars on research to advance their product to compete in the marketplace with a patent system. After a patent system, the company that wins may be the company that waits a year and takes the other companies innovation.

    So, methodology of this paper is terrible. It should not be called a paper or printed in a peer review journal. The paper also calls for appointing judges to the CAFC who have a broader understanding of innnovation. What? Mike Scherer obviously does not understand the legal issues. He seems to be proposing that judges are appointed to not apply the law but to circumvent the law. (read Judge Moore’s opinion on design patents to get an idea of the type of judge Scherer would like on the CAFC–those that feel it is fine to misapply the law to destroy the patent system).

    Well, I think the question for patent attorneys is how to contradict these papers? I think we have the facts on our side, but these papers are sickening. There is a paper in this month’s Communications of the ACM that is as low quality as Scherer’s. No facts. Bad methodology. Just conclusions that we should no longer protect software.

    What should we do? Start writing our own papers? These academics just want and need papers to be published to get promoted and to stay relavent looking. We get paid to do real work and it hard to compete with them for the lime light.

  23. Yeah, Real Anonymous. You’re right again. But it looks like the PTO still waives the bar exam for examiners, it’s just that the minimum 4 years in service restriction was lifted in 2004. Another nice Bush administration move.

    The basic idea remains: make the exam onerously hard to keep non-examiners out of the club and thus provide a hiring incentive for drawing new examiners, who stomach the PTO as long as they can and move on.

    Babel Boy

  24. Michael:

    Do you think that the direction of patent law over the past 25 years would have been appreciably different if we called it patent law rather than intellectual property law? Or is your objection that the term “intellectual property” law is either too inclusive (by encompassing copyright and trademark law), or somehow pretentious or grandiloquent? It seems like mere semantics to me.

  25. Professor Scherer’s paper is an excellent historical discussion of the many “reforms” enacted over the years and the impact they appear to have had on promoting innovation. One part, among many, I find interesting is his reference to the term “intellectual property” and how it came into vogue. In the early 80′s I was one of those who voted in favor of changing the name of the APLA to the AIPLA. My then partner, a distinguished and longstanding practitioner, did not share my enthusiasm. Later, when the PCT Section of the ABA decided that perhaps IP was a better title, I once again considered that a welcome change, only with less enthusiasm than was the case with the AIPLA.

    As time has passed and I have had the opportunity to reflect on the direction this field of law has taken, I now understand and have to agree that my law partner’s initial take was spot on.

  26. Examiners should be on the lookout for allowable subject matter their cases, such as limitations found in dependent claims and the specification and make such suggestions to avoid unnecessary appeals. Sometimes this is hard to do if you are not a primary, because you don’t have as much experience with the art and you don’t have signatory authority. Interviews will probably be a good idea. Applicants will only be getting so many shots. On the other hand, applicants should have an idea of what they have before they come in the door; they will now have to do some real searching, not just a few tangential references or IDS spam with thousands of pages of NPL. I have one case with 3,000 pages of NPL; most of it I can’t use. Reminds me of Dilbert. Most of the applicants in my area don’t even try. They just file a whole bunch of cases with tons of claims and hope something sticks. I wouldn’t even call it a spiderweb of related cases–more like a rat’s nest. Anybody can pick up the phone and ask an examiner for some subclasses to search. Something has to be done about pendency, though. I maybe did ten or fifteen new cases all fiscal year. Abandonments, a few allowances, PCTs, express abandonments and first actions on RCEs, etc.

  27. Regarding the PTO report, it seems as if management has decided that the only way the PTO can dig itself out of the patent backlog is to make application filing extraordinarily onerous.

    I was with a group that had the opportunity to ask the dubiously-qualified Ms. Peterlin some questions about what was going on with the PTO. Regarding the rule changes, she didn’t say much but wrote off any opposition. In support for her position, she said people (who?) had come up to her and said they thought the rule changes were necessary, even if burdensome. Also when asked if management knew the effects the rule changes would have, she said that we’d just have to wait and see, leaving people wondering why they were implementing the rules changes if they didn’t know their effects.

    And Babelboy: Registration is no longer automatic. You only get a registration number when you get signatory authority which is GS-14. This requires 4-6 years depending on how fast you’re promoted. And the GS-13 exam is substantially similar to the Patent Bar and most examiner’s pass that pretty fast. The patent bar doesn’t appear to be as difficult as you make it out to be.

  28. Dennis – I guess my satire was too subtle. My point was that just because you can’t see your victim, that doesn’t mean your act is victimless. Downloading music (yes, downloading even without sharing) is not a victimless act, you just don’t see the victim. And since the victim is frequently a rich record company or artist, no one cares.

  29. Babel Boy, I thought the USPTO had already done away with the “4 years and you’re in” program (that’s what an Examiner told me quite a while back). See 37 CFR 11.7(d):

    link to

    Maybe I’m wrong though, but seems they may have canned it 3 years ago (but like them paying for law school, I guess it can change every year)….

  30. The PTO has been building its own hiring quagmire for years with the 4-years-and-a-free-ride rule that if you’ve been an examiner over 4 years you don’t have to take the patent bar to get your ticket.

    The problem is that the PTO knows — and a lot of the examiners know — that passing the patent exam is 100x more difficult than a first office action, and half of them can’t get an OA right to save their lives.

    And so it’s easier to suffer through 4 years at the PTO at $70,000 per annum than spend a year studying for an “exam” with a 30% pass rate. (Nevermind that the exam is a huge hoax on the public.)

    If the PTO dropped the 4-year-and-a-free-ride rule, there would be a drop in new employees, but most of the short-termers would have no alternative but to stay with the PTO indefinitely.

    The downside of this proposal as far as we practitioners go is that all these examiners that don’t know enough patent law and procedure to pass the exam would become PTO lifers. I’m not sure whether I prefer to have them out in the “world” gumming up the works or gumming up the works up from the inside.

    The ultimate solution is to drop the free-ride rule and also require the examiners to pass the bar exam before they can be promoted to primary.

    Babel Boy

  31. “The Department of Commerce also notes that the new rule changes should help fix the employment mess. (p.36 of the report).”

    If one completely guts the patent application process, it will decrease the number of filed applications and thus decrease the backlog. If an Examination Support Document is required (as the passed House bill and pending Senate bill allows the PTO to require), the cost for a filing a single biotech invention could easily exceed $100,000. This will dramatically drop the “backlog”.

    I was at the patent office this last Tuesday, interviewing four groups of cases, all in the biotech area. All the Examiners to whom I spoke are afraid for the future of the patent office. There is only a 4-month backlog for biotech, and there is a hiring freeze for these art units. These new rules look like they will put some of these Examiners out of work, which might just be the purpose of the rules. Fewer applications, fewer Examiners, no backlog – looks great on the books.

    The only real loser is American innovation, but the PTO does not seem to be concerned at all about that issue….

  32. Confused, that would be precisely what the PTO would do. They are completely nutzo, crazy, looney and insane!

  33. I’m not sure why everyone is assuming that production will be raised; the report pointed out that attrition was a major problem, and that examiners were leaving because of production requirements. If the PTO acts to reduce attrition, that would involve adjusting the numbers down, not up.

  34. Dennis:

    Although I confess I have only skimmed Professor Scherer’s screed, I notice that once again an economist decides that the one group whose opinions and participation should be shunned in patent discussions is the patent bar. Is that perhaps because patent lawyers comprise the one group with sufficient knowledge and experience to dispute if not contradict the (mostly) theoretical objections he and his confreres have to patents? In view of the generally poor record the purveyors of the dismal science have in actually accomplishing anything constructive in the real world, and the real world evidence that the strengthening of U.S. patent protection accompanied the transition of the U.S. from aging rustbucket to economic powerhouse (at least until Iraq), I think the credibility of most economists dealing with patenting matters is low.

    All the best.

  35. Sorry sf it has nothing to do with housing costs. The problem is production is insanely high and dudass will use this as an excuse to try and raise production. Expect attrtion rates to go to an all time high and the backlog will follow.

  36. Disregarding whether “making available” is truly an infringement, I have a real problem with the outcome of that case.

    I posted a similar comment at William Patry’s site, but I don’t disagree with the fact that copyright infringement is copyright infringement. However, I do really disagree with the fact that the record labels were able to extract out damages equal to roughly 9,000x the damages ($1/song * 24 songs * 9,000).

    And, frankly, when you compare it to petty theft statutes, it’s bad policy. We’re saying that we’d rather have people steal the physical CDs–where the owner is actually deprived of tangible property–than download a single song. This seems like an almost indefensible policy.

  37. Sharing pirated music is a victimless crime, like punching someone in the dark. Especially if the person you punch in the dark is really rich.

  38. In view of the skyrocketing housing costs in the DC area (which kicked in about 5 years ago), why should they be suprised that retention over the past five years has been so bad?

  39. As I mentioned in an earlier post, these rules appear to be an ill-conceived, short-sighted attempt by USPTO management to demand more production from examiners:

    “The rules aren’t going to reduce the USPTO’s overall workload because applicants will start filing smaller, more focused applications to cover the same number of inventions. However, the USPTO management will be able to demand more production from examiners because there will be fewer claims and smaller applications.

    “In essence, this is all about making each application require a uniform, lower amount of work and forcing examiners to hop off of the RCE-Continuation gravy trains and start performing real work.

    “Of course, taking away these gravy trains will lead to even less retention — thus decreasing the ability of the USPTO to examine cases efficiently and thus *increasing* backlog.”

    link to

  40. You’d think that one of the premier IP blogs would get the facts of a major IP case right. The defendant was found liable for hosting the copyrighted songs on her computer using KaZaA, not downloading the songs.

  41. As regards the CSS acronym, as long as we’re revising the language used in obviousness tests, why doesn’t someone front up with enough sense and courage to dump “skilled.” In the days of Hotchkiss (1850) skill and knowledge in any field were essentially synonymous. The skill and knowledge required to build a wagon wheel were about 100% over-lapping. Those days are gone. Most people of average experience and knowledge in many modern technologies have little or no skills in those technologies. Hey, that’s why we have technicians. But the average skilled technician often doesn’t have the knowledge or insight required to conceive the subject matter being patented.
    More and more you see the courts slowly drifting to this obvious position by referring to “average creativity” or “average experience” in a field. The CAFC needs to make the leap to abandoning PHOSITA so the USSCt can review it.

    Babel Boy

  42. Yeah, I was thinking the same thing… the GAO report (when coupled with the rules) may just be planned “justification” the USPTO managers sought in order to revise the goals the other way….

  43. Don’t they have a big retention problem now? If so, how will increasing the workload help them retain the good Examiners they need?

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