Patent Refom: Unsettling Rights

Patent.Law056By Dennis Crouch

There have been numerous reports calling the US Patent System broken or at least in need of severe repair. From my view, the greatest problems with US patent law arise because of its common lack of clearly drawn property lines.  In academic lingo, we call this a failure of the public notice function.  

Examples of the fuzzy lines of patent law are well known to Patently-O readers and include the secret rights of unpublished patent applications; shifting rights that may be altered via extended prosecution, future continuing applications, and second look examination; and uncertain rights potentially crumbling under the vagaries of claim construction and obviousness jurisprudence.

These problems are exacerbated in certain technology areas – such as electronics – by massively overlapping claims and speculators asserting patents in a seemingly more aggressive fashion.  At the same time, there is a strong consensus that these issues do not arise in the same fashion in the pharmaceutical and bio-technological areas. Pharmaceutical patent law is often heralded as an incredible success — especially in the post Hatch-Waxman days of strong generic competition.

Now comes the Patent Reform Act of 2007. Unfortunately, the proposed patent reforms now being debated by the Senate do virtually noting to address these serious problems and instead potentially cause harm to the current regime.

CAFC Chief Judge Michel has publicly discussed patent reform and its potential impact on the judicial process. Apart from the Chief’s particular quarrels with damage apportionment and expanded interlocutory appeals, he makes a particular point about the destabilizing effect of major Congressional patent reforms.  In the decades following reforms, each amended word will be litigated and eventually construed. Unfortunately, during the wait for new statutory interpretations, patent holders and accused infringers will be left guessing.  Judge Michel’s ultimate point is that changes in the property regime should only be made when we have a genuine reason to believe that the changes will improve the system as a whole.  For the majority of the proposed patent reforms, that case simply has not yet been made.

 

231 thoughts on “Patent Refom: Unsettling Rights

  1. Gideon’s speakin it how it is yo, he seems to be the only one that really “gets it” amongst you attorney’s posting here.

    “You may
    1. – Play the game at the PTO the way it’s meant to be played, or
    2. – Set up for and file an appeal.
    In Re Vaeck is never going to compel an allowance from a junior Examiner.”

    ” Why? Because there is no “law” of obviousness.
    The SC decisions say, “get the art, skill of artisan, differences, blah blah blah”, but, after you read through that crap, which is supposed to make you feel as though guidance has actually been provided, the conclusion is, “and then determine whether it’s obvious.”
    !!!!
    In other words, it’s obvious because the Examiner/Board/Fed Circuit says it is!”

    PREACH IT BROTHER MAN! GLORY TO JESUS! AMEN!

    I’m not entirely convinced about the DC=MM though, that’s still just a theory, I beat him to the first on the last post today.

  2. “And if you’re interested in optimal coverage, you don’t amend the claims to overcome an improper rejection.”

    Optimal coverage?

    Are you including patent term and immediacy in that?

    You can easily burn 1-4 years going after an Appeal or continued prosecution that may fail. The overturn rate at the Board is what? 50%

    So you’re going to tell your client to hold out years for “optimal coverage” and there’s no guarantee that you get it?

    I don’t know how you define “optimal”, but often in business less than optimal right now is worth a lot more than maybe optimal in maybe 1-4 years.

    And my experience is that RCEs don’t usually result in allowances if all you do in the RCE is argue the same crap again.

    What that results in is an easy count for the Examiner.

  3. The objective of prosecution is not to persuade the examiner. The objective is to get the best coverage that the applicant is entitled to, less whatever coverage applicant choses to forego despite being entitled to it. If an examiner’s rejection is legal rot, and it’s an important application, I feel sorry for the applicant whose attorney can’t overcome. So you get an RCE… so what. You appeal, you file an RCE, have an interview. Maybe you have some basis for a petition. It’s a special form of legal practice, prosecution, but no less deserving of smart and effective ADVOCACY.

    It’s a simple game. Assuming you’re entitled, the broader claim coverage you want, the longer prosecution takes. And if you’re interested in optimal coverage, you don’t amend the claims to overcome an improper rejection.

    99.9% is just wrong.

  4. If the Examiner is “violating some case law”!!!

    Oh that is rich indeed. Like the case law is some Southern Belle virgin, and the Examiner is giving her the old 102 and 103. “You like that? Have some 112 with it!”

    It’s not that tough, but you can make it tougher if you want to.

    Most rejections don’t involve esoteric issues of law. I can quote the 20 golden rules for you verbatim . . .

    Inherency must be established by the Examiner . . . must occur invariably . . . reasonable expectation of success . . . not obvious to try . . .

    So what? Why spend hours running down useless case law and pin point cites when it won’t change what the Examiner is going to do?

    That’s pissing in the wind. I learned that about 3 years into the practice.

    In the end, you really have 2 options at any point in prosecution.

    You may

    1. – Play the game at the PTO the way it’s meant to be played, or
    2. – Set up for and file an appeal.

    But why mix the two?

    In Re Vaeck is never going to compel an allowance from a junior Examiner.

    Oh yeah, I also remind the panel that 80% or more of rejections are typically 103 by the time you whittle down the issues.

    And what does Gideon say the law of obviousness is?

    It’s nothing!! That’s the beauty of it!

    You can take 100 BPAI members, put them in 100 different rooms, have them review 100 103 rejections, and you won’t get 10 members who agree on more than 70 of the rejections.

    Why? Because there is no “law” of obviousness.

    The SC decisions say, “get the art, skill of artisan, differences, blah blah blah”, but, after you read through that crap, which is supposed to make you feel as though guidance has actually been provided, the conclusion is, “and then determine whether it’s obvious.”

    !!!!

    In other words, it’s obvious because the Examiner/Board/Fed Circuit says it is!

    So when it gets down to the 103s, there is no “you’re giving away client rights.”

    Finally, to the numb nuts attorney who suggested such a give away, if you’re doing your dammm job right it’s never you doing anything.

    CLient – so what now?
    Gideon – well, we can do A, B, or C. If we do A, then, if B, then . . .

    Client – do C.

    Get it? I don’t decide anything, I just advise. And it’s ridiculously easy to tell a client -

    “The Examiner is legally wrong, and we’d have a good shot on Appeal. Our other option is to make an amendment and give up claim scope, which might result in allowance – the claim material we give up could be pursued in a continuation (unless the PTO gets its way)”

    What do you do? Narrow the claims and file the Reply without telling the client?

    To 1 year associate:
    you wrote

    “Gideon – that is not Dennis replying to you, it is a poster called “Malcom Mooney” Unless Dennis = Malcom Mooney???? That would send shockwaves through this blog :)”

    Wow, the irony of a guy named “Mr. Obvious” posting this.

    Of course MM is DC. I’ve mentioned this before.

    How many times has MM been the 1st poster on a new topic and that first post is a trolling?

    Duh!

    You don’t think I make hundreds of thousands of dollars a year advising clients because I miss obvious crap like that, do you?

    “My 2 cents – I’ve only been practicing for a year, but unless it’s a really shoddy OA, I can’t respond in less than 6 hours. 8 to 12 is typical if it’s a “good” OA.”

    You’ll figure this out as you get older – the shorter an OA, the better it tends to be.

    “If the Examiner clearly spent a lot of time and effort on the OA, I will do the same on the response, even if it means getting my time written off (which it generally does).”

    You’ll figure this out to. You’re wasting your time.

    No Examiner is going to allow claims because you put in the extra effort on the “quality” of the reply.

    Examiners allow claims because . . .

    The claims are patentable.
    and/or
    He needs a count.

    I guess back when i was 1 year in I was the same way.

    I actually thought that they gave patents out for inventions!!!

    Silly Gideon.

  5. >

    Fine – - then be prepared to file an RCE to get your amendment in AFTER final rejection, because as GP already pointed out “99.9% of the time [the Examiner's response will be]‘applicants arguments have been considered but are unpersuasive’”.

  6. “Ditto what GP said. Unless you have a good reason for citing a case, then leave it out. An attorney arguing case law tells the Examiner that he (the Attorney) has no other argument to overcome the art.”

    This advice is vacuously true and useless. It’s like saying “don’t do wrong, unless you have good reason to”…

    Some similar advice has been floating around for a long time (maybe PRI or some review course teaches this): cite the MPEP rather than equivalent case law, when possible. This seems to make sense.

    But, if by your comment you mean don’t argue case law when you can argue technology, that’s bad advice. If an examiner is violating some case law to an applicant’s detriment, then the prosecutor must consider the option of making case-based legal arguments, and choose to do so when the battle is worth it. Sure, you may go to the BAPI, but if you’ve done your homework, you probably win. It’s all about knowing the applicant’s legal rights, and chosing whether or how to effectively protect them.

    If you narrow a client’s patent (whether by argument or by claim amendment) to overcome a rejection that was legally improper, then you’re giving away patent rights. Sure, sometimes an applicant may want to just take the path of least resistance and amend claims to overcome the rejection, but don’t do so because of some perception that arguing case law is ineffective.

    I’ve seen many legal aruments help get solid patents allowed, sometimes based on MPEP, sometimes on case law… even saw a constitutional Due Process argument win in the PTO (an inter partes re-exam, issue related to consolidating re-exam patents).

  7. GP said: “But if the Examiner knows what doc A teaches and knows what doc B teaches and the Examiner has combined A and B on 103 to reach your claim, you can argue for 100 pages and cite 20 CAFC cases and the response, 99.9% of the time will be – ‘applicants arguments have been considered but are unpersuasive.’”

    VA said: This is where your response is simplified, because it’s a pretty safe bet that the examiner has not read 1) the app, 2) A, or 3) B.

    I say: as an Examiner, I can say that GP knows what he’s talking about and he’s someone who knows how to play the game.

    About OA response times:

    I can say that the shorter your response, the more well-received it will be by the Examiner. I’ve received some responses that literally look like a Supreme Court brief (at least in terms of length), except for the fact that they were replete with misspellings and improper English. Even if your application has 50 claims (2 independent, 48 dependent), most attorneys will focus their time on the rejections of the independent claims – - if you overcome those rejections, you overcome them all. Thus, GP’s estimates for response times do not seem that unreasonable, unless you (the Attorney) is unfamiliar with the art that you’re working with.

    About case citations:

    Ditto what GP said. Unless you have a good reason for citing a case, then leave it out. An attorney arguing case law tells the Examiner that he (the Attorney) has no other argument to overcome the art. What exactly are you expecting – - the Examiner to spit back a law review article? – - the arguments should be about the technology, not the law. Unless the situation clearly calls for it, save your legal arguments for the Board or the FedCir. That goes for all those attorneys out there who continue to cite In re Dembiczak even after KSR – - nice try – - very persuasive – - NOT!! You’d be much better off amending the claims, and then pointing out how the rejections cannot be maintained in view of the amendments.

  8. Gideon – that is not Dennis replying to you, it is a poster called “Malcom Mooney”

    Unless Dennis = Malcom Mooney???? That would send shockwaves through this blog :)

    My 2 cents – I’ve only been practicing for a year, but unless it’s a really shoddy OA, I can’t respond in less than 6 hours. 8 to 12 is typical if it’s a “good” OA. If the Examiner clearly spent a lot of time and effort on the OA, I will do the same on the response, even if it means getting my time written off (which it generally does).

  9. Dennis Wrote:”How much did it cost you to have the doorways in your house modified to accomodate your head?”

    Come on Dennis, you’re better than that!

    Of course I designed my own house, which I built myself, so there was no need to “modify” them at all – I just had them built big in the 1st place!

    Duh!

  10. When will secret patent sales and prices be required to be made public. public notice of intention to file allerts inventors of illegal restricting of their valuable rights.

  11. Pitchford wrote- “I can write a claim to a ballast control circuit that accomplishes a new control function. However, if that ballast control circuit includes a microprocessor executing instructions, what is its status now? Hardware and software are only completely separate in your minds, not in the real world of electronics.”

    Quite to the contrary, my mind is clear- hardware and software are integrally linked. However, a “ballast control circuit” is a piece of hardware- since it includes a combination of elements- comparators, power inputs, diodes, etc. it’s either an article of manufacture or if you like, a machine under section 101 (or 52 EPC if you prefer). Its control function provides for its utility/industrial applicability.

    Software is another story altogether, for without hardware to run it, software is simply a set of written instructions that no one would bother reading, or writing for that matter. That was my point that you seem to have missed- not all electrical hardware needs software to be operable, however, ALL software requires hardware to have any value.

    Same story for stepback (who appears to be the only one ranting and engaging in name-calling in the hardware/software discussion). The cash register circuit and the reprogrammable ROM chip- under the EPC both of these devices (hardware) would constitute patentable subject matter under EPC Article 52. The unpatentable (in the EPC) subject matter would be any software that flashed upgrades, etc. to the hardware

  12. “But seriously, I have worked in dozens of arts. It’s all mostly the same.”

    How much did it cost you to have the doorways in your house modified to accomodate your head?

  13. I wrote: “So figure 1.5 hours to read the art and the action and formulate a response.”

    Dennis wrote: “LOL. What is the technology? Folding chairs?”

    That was clever – made me giggle.

    But seriously, I have worked in dozens of arts. It’s all mostly the same. Biotech and pharma as the easiest, in terms of art, but require the most time to draft a reply.

    Mechanical arts tend to be the hardest art to review, but very easy reply.

    Chem, chem e, somewhere in between.

    90% of the Office Actions I get have 1-3 U.S. patents cited as the core art.

    Rejections are like . . .

    Claims 1-x rejected over A. 102
    Claims 1-x rejected over A or B, 103
    Claims 13, 17, 20 rejected over A or B, further in view of [Q]. 103

    So read A and B closely, review Q, which is cited only to pull in a dependent claims limitation.

    How long does that take you?

    If you’re an old guy who is slow reader and a slow typist then I can understand why drafting replies is so grueling.

    But Dennis, you’re not that old.

    How long does it take you to read?

  14. “But if the Examiner knows what doc A teaches and knows what doc B teaches and the Examiner has combined A and B on 103 to reach your claim, you can argue for 100 pages and cite 20 CAFC cases and the response, 99.9% of the time will be – ‘applicants arguments have been considered but are unpersuasive.’”

    This is where your response is simplified, because it’s a pretty safe bet that the examiner has not read 1) the app, 2) A, or 3) B.

  15. For completeness I add that argument is appropriate when the Examiner has missed something about the art – that does happen.

    But if the Examiner knows what doc A teaches and knows what doc B teaches and the Examiner has combined A and B on 103 to reach your claim, you can argue for 100 pages and cite 20 CAFC cases and the response, 99.9% of the time will be – “applicants arguments have been considered but are unpersuasive.”

  16. “If I have an electrical circuit inside a cash register and the circuit includes a reprogrammable ROM that converts BCD (Binary Coded Decimal) signals into 2′s complement signals, does that automatically make the gizmo “software”? Does it make the function of the gizmo a business method? ”

    I don’t know. But I do know that it doesn’t make your cash register patentable.

  17. MP,

    Obviously we were typing along the same lines of thought at the same time. (Except that my secretary interrupted me with real work issues and I hit the post button after you :-)

  18. Those of you ranting on this page about “software” patents and “business method” patents are only continuing the proof that people are mostly INMM’s (Irrational Noise Making Machines).

    What the #$@!& are you even saying?

    If I have an electrical circuit inside a cash register and the circuit includes a reprogrammable ROM that converts BCD (Binary Coded Decimal) signals into 2′s complement signals, does that automatically make the gizmo “software”? Does it make the function of the gizmo a business method? What the @#$%! are you clowns talking about? Err, I mean you INMM’s. (Yes, I do mean you people.)

    Never mind.

    Let’s keep tossing irrational noises at each other. Your turn.

  19. Tom and bierbelly,

    I can write a claim to a ballast control circuit that accomplishes a new control function.

    However, if that ballast control circuit includes a microprocessor executing instructions, what is its status now?

    Hardware and software are only completely separate in your minds, not in the real world of electronics.

    Now you’re going to say something about servers that do nothing but execute high level code, and I’m going to point out that the high level code has very important components that instruct the server to store a particular piece of data in RAM or HDD or remote from the main server.

    It’s easy for someone who does not understand software and hardware to separate the two. For someone who works with it, you must always consider the hardware setup and how your software is going to interact with it.

  20. ironic, too much to go over all the way, but in my art I don’t get small fries, I get big boys and less big boys, one time I thought I had a small fry, and it turned out he was actually more of an ass kicking fight for every claim they have loner inventor professor than most attorney’s for the big boys are. He does all his own work, its pretty cool actually, if all inventors were like him patent law wouldn’t even be taught in law school because no lawyers would be hired. He is the very definition of an inventor in my field.

    The only issues I have for myself personally is the overclaiming at the outset, not disclosing material information at the outset, apps not claiming what they believe to be an invention rather than just something they made, and finally, playing dumb during prosecution. That’s disregarding issues I have with classification etc. in the office (if I didn’t miss any atm). The issues I have for the patent restricted american people as a whole are legion and I won’t get into them atm.

    Fen- I’ll give you the first thing with the caveat that the applicant’s invention is subject to the limitations imposed upon him by the knowledge he possessed as one of ordinary skill at the outset just as much as any prior art I dig up. Tricky ground that one, but still, it is there. Also material to that topic is whether or not the applicant is entitled to a long drawn out prosecution in these times of lightening fast innovation in order to get those broad claims, and that my friend is far from a certain matter. Every second action I issue can equal up to a whole years time of market uncertainty on a topic the public dooesn’t even know is being prosecuted until it is published with claims drawn to such and such.

    I would say more but I gtg.

  21. “So figure 1.5 hours to read the art and the action and formulate a response.”

    LOL. What is the technology? Folding chairs?

  22. “and give (what I consider to be) a thorough response.”

    Well Mark, that may be what the main difference between us is.

    I remember the first place I worked – the partner would always make me include 5 or 8 pat responses.

    Every reply would look like . . .

    No PF obv established, obvious to try, teaches away, no MTC, . . .

    What a nightmare.

    Much of the problems associated with time, IMO, come from the lawyerly preconception that every argument must be included.

    Here’s my secret, which I share with you all now for free:

    1. Argument almost never convinces the Examiner to change his/her mind.

    2. Amendment sometimes does.

    Why spend an hour trying to verbally cajole your dog to run to your side when a Snausages treat will get the job done quickly?

  23. Gideon,

    I don’t know you, so I won’t judge your practice. I just know that for me, at this point in my career, I do not believe that anyone in the 1-4 year practice range can write and file a sufficient response in under four hours from pick up to put down. I just don’t think that anyone can evaluate the claims and references that quickly and give (what I consider to be) a thorough response.

    I’m glad you enjoy your setup though.

  24. “I think a registration system is a bad idea – you’d have to come up with a completely new regime for enforcement.”

    Why? Sue an alleged infringer if you’re so inclined, and be ready for the invalidity counter-claim. If you’ve done a sufficient search and believe you’re entitled to the scope of the registered claims, you should be OK.

  25. “Address the things that matter; what does the USPTO care if the lay public thinks less of it?”

    Because they’re spineless b@$&@$&%?

  26. Both software and business methods are a sore spot with the tripartite efforts- Japan readily grants patents on both, while Europe is much less inclined to do so- so much for global harmonization in this area.

    ‘Software’ is defined in the EPC simply as “programs for computers”

    ‘Business method’ is a little trickier- the EPC doesn’t define them, but allows so-called ‘business methods’ to be patented only if they solve a technical problem (rather than an administrative problem)- EPC Article 52(2)(c) and 52(3).

    Both software and business methods share a couple of basic common elements- they always contain written expressions, and they almost always derive their economic value from publication/sale- when published they are protectable by copyright laws. The same cannot be said for manufacturing, treatment, and most other processes, which derive their economic benefit from actual performance of the process.

    Given the gulf between the tripartite group, perhaps the US should lead the efforts in advancing an alternative protection for software and BMs (something between copyright and patent, perhaps?).

    And yes, I have practiced in the electrical arts though I see no reason why that experience would (dis)qualify anyone from being able to support a position advocating an alternative protection scheme for patents that are only tangentially related to electrical patents.

  27. “Why not a different patenting system for software, like a registration system, similar to plant patents, with a shortened lifetime, say 5 years?”

    I think a registration system is a bad idea – you’d have to come up with a completely new regime for enforcement. But, the idea of matching term to the technology lifecycle is worth discussing. I’ll take your 5-year term if you can figure out a way to get me an examined patent in 1 or 2. Right now I’m not getting a first office action until late year 4.

  28. Mark, I checked: the overall mean was something like 54% prep/pros, and it trends inversely with income. Supervision and counseling rise slightly with income. The big jump that tracks with rising income is “dispute resolution” (i.e., litigation) — the portion of practice devoted to it quadruples from <$126k to $351k.

    Regardless of incomes, though, what matters is that (a) attorneys sometimes work with a time budget smaller than they prefer to do the good job they want, and more importantly, (b) examiners aren’t being given the time they need to do the good job they want.

    As for embarrassments like the swinging-sideways patent, I can understand how an examiner would be unable to find prior art to make his legally required prima facie showing. But practically speaking, is that patent ever going to be licensed, asserted, enforced, litigated? Everyone whose opinion matters already recognizes that the rare ridiculous patent has no bearing on the many others out there. (Certainly, I will not advise infringing a competitor’s chemical composition or manufacturing method patent because some gentleman has a patent on exercising a cat with a laser pointer.) Address the things that matter; what does the USPTO care if the lay public thinks less of it?

  29. “I have never seen those salaries.”

    Mark, somebody has to be below the median. (Or the average, for that matter.) You’re in a pretty weak position if you’re challenging AIPLA’s data with your own personal survey of one.

  30. I thought this thread was about patent quality.

    Have you seen the claims for the latest infringement claim against Apple?

    There’s a quality allowance!!!

    Claim 1. A mobile entertainment and communication device for communicating with the Internet and remotely located telephones, comprising: a housing of a palm-held size; a cellphone provided in said housing, said cellphone adapted for selectively and wirelessly connecting to the Internet and remotely located telephones and adapted for controlling selection of at least one of (1) downloading data or uploading data from or to the Internet, or (2) downloading data to a computer or other electronic device and said cellphone having at least one of (1) voice controlled dialing, (2) a wireless earphone or (3) a wire connection jack earphone with a microphone for operation of the mobile entertainment and communication device; a memory operatively connected to said cellphone; a microprocessor operatively connected to said memory; said microprocessor adapted for storing data to said memory that is received from the Internet or a remotely located telephone; and a display panel operatively connected to said microprocessor, said display panel adapted for reproducing images or other data from at least one of said memory or the Internet, said other data including at least one of moving images, combined sounds and moving images, or music with or without images.

  31. “Litigators can bill 1900 or 2000 hours because they’re always on the clock. They don’t get hours cut like prosecutors do. It’s just the reality of the situation.”

    I never have my hours cut.

    Perhaps it’s an efficiency issue for you, or perhaps you just have really crappy clients.

    Most office actions are simple. Most rely on 1 or 2 core pieces of art, with 1 or more others thrown in to reach dependent claims.

    So figure 1.5 hours to read the art and the action and formulate a response.

    Figure 0.5 hours to prep a template.

    Figure 2 hours to write the argument.

    In most cases, 4 hours is plenty.

    Of course, you’ve got to have a manageable claims set with an inventive concept.

    Here’s another tip:

    If you look down at the keyboard when you type, then you have continuously made the horrible decision to be less efficient than you could be.

    I write about 70-100 words a minute, and the 1st draft is usually pretty close to final.

    If you’re pecking away at 30 words a minute, then you’re killing yourself.

  32. Leopold, you said

    “Nowadays, virtually every electronic device has software (or at least firmware) in it. That, coupled with unprecedented communications capabilities, permits some pretty cool new features, that just happen to be implemented with software running on a microprocessor.”

    So? Most of which will be outdated by the time an application reaches the examiner’s desk. More pressure on the PTO to do it fast, which they can’t do, even with the shortened statutory periods. And we wonder why they’re complaining. It just doesn’t make any sense.

    Why not a different patenting system for software, like a registration system, similar to plant patents, with a shortened lifetime, say 5 years?

  33. “Associates are not paid what they bill. Even if Mark and Lowly are partners or sole practitioners, there are still the expenses and overhead of running an office/firm.”

    Ah, the beauty of solo practice.

    My overhead? About 3 grand a year.

    How sweet is that?

    I try to bill 3 grand on January 1st, just to get the overhead out of the way for the year.

  34. Mark,

    huh? Big firm salaries are standardized across the board. If you can get into one of the megafirms — not difficult for a patent prosecutor with some experience to do — you start at $160k in the big cities (nyc, la, dallas, houston, etc).

  35. Clive,

    Your numbers look fine on reread, but I’m just saying that they’re a tad high in reality for a prosecutor.

    Litigators can bill 1900 or 2000 hours because they’re always on the clock. They don’t get hours cut like prosecutors do. It’s just the reality of the situation.

    Once you adjust for the 15%-20% billed hours difference, your number start to look more realistic to prosecutors.

    Lowly,

    By the way, congratulations on making partner your first year.

  36. Caveman, you’re right on. Just read through the senate bill, which can be summarised as by-microsoft, for-microsoft, of-microsoft.

    Looks like all those campaign donations aren’t wasted after all.

  37. Mark, the “total income” figures I posted are direct from the 2007 AIPLA Economic Survey (page I-49). The means for billing rates and billable hours also are from that survey (different pages, of course). Means and medians were far apart; numbers represent national averages. Chicago total income was marginally higher, whereas “Other Central” (STL and IND) was perhaps 20% lower.

  38. “It seems the patent system and the US economy survived quite well for the many years that these things were considered to be unpatentable ‘algorithms’, so what has been the benefit of State Street and its ilk?”

    Sorry, bierbelly, I think you’re off track a bit. Your premise is similar to saying that the patent system and the US economy survived quite well until the invention of the transistor and the microprocessor. It’s true, but not very helpful.

    Nowadays, virtually every electronic device has software (or at least firmware) in it. That, coupled with unprecedented communications capabilities, permits some pretty cool new features, that just happen to be implemented with software running on a microprocessor. Some of these features are obvious, others not. I’m perfectly OK (as is most everybody, I suspect) with the baseline proposition that algorithms standing alone are not patentable subject matter. What was happening before State Street were rejections of computer-implemented inventions simply because they were computer-implemented, without regards to whether there was a practical application. State Street (mostly) cleared that up.

    My point is that it’s likely impossible to legislatively tinker with patentable subject matter without sweeping a lot of important stuff into the new exclusions. And, I’m not convinced that anyone has demonstrated that “software patents” are truly a distinctive category of patents that are causing a disproportionate amount of harm.

    Nobody’s suggested a definition of “business method” patent yet.

  39. “I do not know a prosecutor that can bill 1800 hours a year, much less 2000.”

    That’s because those people have no substantial existence beyond their professional life.

  40. Clive and Lowly,

    I have never seen those salaries.

    I was offered jobs at “the big Chicago” firms, Indianapolis, and STL. None of them approached what you have figured there.

    I do not know a prosecutor that can bill 1800 hours a year, much less 2000. We don’t get to bill for most of our work; it gets rolled into flat fees.

    If you include health insurance, parking, 401(k), long term disability, and everything else, you MIGHT be able to get somewhere close to the lowest of numbers you guys posted.

    We really need to become more vocal about the media lying about lawyer salaries and incomes. It’s the very rare trial lawyer who hits a big case and has a ridiculous windfall, yet everyone reports it as the norm. This is wrong, and it is clearly hurting our profession.

  41. “What is really getting old is all the whining about people ‘gaming’ the system. You know what? No matter what sort of ‘reform’ is enacted, there will ALWAYS be those who find a way to manipulate it to their advantage.”

    Mr. Dodd, thank you for your post. Perhaps it is little realized that the Coalition for Patent Fairness is itself gaming the [political] system by its reform lobbying, as there will always be those who find a way to manipulate the political system to their advantage. That’s not to say their lobbying is wrong (it isn’t*), but I would have hoped our government would rather look more to the good of the country than the will of the lobbyists.

    Unfortunately, to discern what would be “good” reform in this respect would seem to require more patent experience and knowledge than may grace the halls of Congress or the USPTO at the moment. It still rests on the citizenry, ultimately, to inform and petition government, and this the lobbyists are perhaps better at doing than the patent community.

    *I think it is the lobbyists who care the most (rightly or wrongly) about the issues, and it would be extremely unwise for any government body not to heed the concerns of those who care the most – but isn’t that exactly what the USPTO is doing with the concerns of patent applicants? (When I was young, I used to hate lobbyists – not understanding their role in government).

  42. The issue of downward pressure by in-house counsel on the cost of patent prosecution becomes interesting when one considers Sarbanes-Oxley liability. In-house counsel face Sarbanes-Oxley liability if they fail to act reasonably with respect to the patent portfolios-they are to establish proper internal procedures so that the intagible assets of the company are protected. Can one say that large companies putting downward pressure on outside proscution counsel is reasonable. I don’t really know. I am waiting for for the next Lerach. I mean, the next time a company has a patent invalidated and sues a patent prosecutor for malpractice I can smell the shareholder derivative suit coming. It will allege something like this: in-house counsel have through design and and coordination with management manipulated the cost structure of preparation and prosecution of patent applications to the extent that they should have known a reasonable job could not have been performed by outside counsel. This, as a result, means that in-house counsel and management have conspired to undermine their Sarbanes-Oxley duty . . . or something along those lines. Just wait, that lawsuit is coming.

    This is the natural occurrence of dropping the standard for inequitable conduct from a showing of traditional common law fraud to one of gross negligence that raises an inference of Fraud. Everything now becomes foreseeable and the sould have could have known analysis appears.

  43. anon: [calculating Mr. Pitchford's income at $500k/year]

    In a firm, your take-home is well under 50% of your billing rate times billable hours. Examples, based on AIPLA 2007 survey data:

    Assoc, <5 yrs. experience — $226/hour, 1837 billables (rate times billables = $415k), $136K TOTAL income (33%).
    Assoc, 5-6 yrs. experience — $303/hour, 1840 billables (rate times billables = $558k), $176K TOTAL income (32%).
    Assoc, 7-9 yrs. experience (fewer in this pool, as most make partner at this stage) –$326/hour, 1820 billables (rate times billables = $593k), $187K TOTAL income (32%).

  44. anon,

    You clearly are not in the legal business.
    Is your office free?
    Does your secretary work for free?
    What about the receptionist?
    The ladies in docketing?
    Your office manager?
    Your IT department?
    Does Dell just give you computers and switches out of the goodness of their hearts?
    Does Microsoft just give you Word, Outlook, etc.?

  45. anon,

    as pointed out already, i am not paid what i bill. i earn in the low six figure range, which i don’t think is an outrageous sum for someone with a master’s degree in engineering and a jd.

  46. anon,

    Associates are not paid what they bill. Even if Mark and Lowly are partners or sole practitioners, there are still the expenses and overhead of running an office/firm.

    I doubt the math is that simple even if they bill 2000 hours a year.

  47. “This puts you in the top 1% of all income brackets even after $100,000 in expenses. I don’t suspect a little downward pressure by clients will hurt too badly”

    But what about my custom painted BMW and the vacation home and private school for the kids? How am I going to keep up with the payments?

    /typical partner off

  48. anon,

    you don’t actually think that Mark and Lowly are pocketing all of that money, do you?

    You ever heard of overhead? Staff salaries and benefits? Rent? Malpractice insurance premiums? Paper? Etc.

    $100k in expenses? Where are you practicing? In an old refrigerator box?

  49. “When your billing rate exceeds 200/hr and you have a client demanding office action responses for 1500, you’ll see the problem. ”

    $200? Try $400 or $500.

    How did it get this way?

    Greed. Seriously, think about it: partners at law firms charge people $500 an hour to write Office Actions that an agent could (and would gladly) write from his/her home for $150 an hour. And the Office Action would almost invariably be better if more time was spent writing it.

  50. Yeah, try billing 2000 hours doing prosecution. Prosecution is mainly piece work, with a cap on how much you can bill for any given type of work. When I was doing it in a private firm (mid 90s), if I tried to bill more than $1200 for a response, the partner would cut my time. So I’d spend 10hrs doing something, and get credit for 7.

  51. Mark & Lowly

    $250 per hour x
    2000 hours per year
    ==================
    $500,000 per year

    This puts you in the top 1% of all income brackets even after $100,000 in expenses. I don’t suspect a little downward pressure by clients will hurt too badly.

  52. Mark,

    My billing rate already exceeds $200/hr, and I am already limited to no more than 6 hours for responses to office actions. If I spend more than 6 hours, I just write off my time. In some cases, it’s either write off the time or do a poor job; I refuse to do a poor job. It’s rather unfortunate, but it is what it is. Most of the time, I can get the job done well in the allotted time, often because (*gasp*) the examiner has rejected the claims based upon poor art.

  53. “I brought up the following challenge on another thread, and never received a satisfactory answer. Can anyone provide a definition for “software patent” that could be meaningfully applied, if we were indeed inclined to “eliminate” them? Likewise, can anyone provide a useful definition for “business method patent”?

    I have a strong suspicion that most (all?) of those that make this kind of suggestion are not practicing in the electrical arts. Not that that necessarily makes them wrong. But, it might mean that they can’t provide any support for their positions…”

    Leopold,

    My suggestions. Answer: the PTO and ultimately the Courts will decide what constitutes either a “software” or “business method” patent, absent a more clear definition in the statute (if it were even under consideration). Same as with other 101 issues. It seems the patent system and the US economy survived quite well for the many years that these things were considered to be unpatentable “algorithms”, so what has been the benefit of State Street and its ilk? Certainly a monetary benefit to those attorneys handling the BSA cases, both in prosecution and litigation. But as we’ve seen, the alleged problems with those patents/applications have been generalized to the patent system as a whole, which isn’t fair or even correct. The rest of us suffer for your misdeeds (no, I’m not an “electrical” attorney…BTW, what makes software “electrical”?).

    As Barney Fife would say, “Nip it. Nip it in the bud.”

  54. “I brought up the following challenge on another thread, and never received a satisfactory answer. Can anyone provide a definition for “software patent” that could be meaningfully applied, if we were indeed inclined to “eliminate” them? Likewise, can anyone provide a useful definition for “business method patent”?

    I have a strong suspicion that most (all?) of those that make this kind of suggestion are not practicing in the electrical arts. Not that that necessarily makes them wrong. But, it might mean that they can’t provide any support for their positions…”

    Leopold,

    My suggestions. Answer: the PTO and ultimately the Courts will decide what constitutes either a “software” or “business method” patent, absent a more clear definition in the statute (if it were even under consideration). Same as with other 101 issues. It seems the patent system and the US economy survived quite well for the many years that these things were considered to be unpatentable “algorithms”, so what has been the benefit of State Street and its ilk? Certainly a monetary benefit to those attorneys handling the BSA cases, both in prosecution and litigation. But as we’ve seen, the alleged problems with those patents/applications have been generalized to the patent system as a whole, which isn’t fair or even correct. The rest of us suffer for your misdeeds (no, I’m not an “electrical” attorney…BTW, what makes software “electrical”?).

    As Barney Fife would say, “Nip it. Nip it in the bud.”

  55. I think one of the reasons many examiners get PO-ed with a lot of attorneys complaints about bad actions and repeated non-finals (which I strongly agree are a big problem and need to be reduced as much as possible) is that there are as many badly written application, claims, responses, etc. We see bad literal translations. We see omnibus claims (why not cancel them at filing???). These are all things that should be cleared up before the examiner ever see the case. But they are not. Why not? Because you all do not have the time, or available money, to do it. Sound familiar??

    Quoting a few things from above:

    From Mark Pitchford:
    “When your billing rate exceeds 200/hr and you have a client demanding office action responses for 1500, you’ll see the problem. That’s less than 6 hours” to do everything you have to do.

    From Clive Fenster:
    “I think poor claims drafting results more from a client-imposed low budget, which in turn shunts the application to a junior associate and pressures the reviewing attorney (senior associate or partner, billing at much higher rates) to skim the draft rather than really aggressively reviewing/critiquing it. While following that string leads us to hourly billing rates, I don’t think profits-per-partner are astonishingly higher now than 10, 20, or 30 years ago. I do know that more and more clients are taking a hard line on costs, imposing ceilings applied to any prep/pros matter, and so on”

    From CaveMan:
    “many of the ones at big firms who are drafting a lot of the claims in new applications haven’t been around long enough to understand how to draft a proper claim and don’t really understand the technology or take the time to understand it – or for that matter what the invention is, or for that matter what a typical commercial embodiment would be.
    Aside from solid technocratic ability, it takes writing literally thousands of claims before you start to get good at it.”

    As evidenced from this, you attorneys have much the same problems that examiners do. Not enough time to do the job right; superiors making you do it their way, no matter if it is right or wrong; not enough experience to get it right the first time; etc.

    Sound familiar????

    This is the same reason that you all get a lot of “bad” actions. Please try to remember this all next time you complain about the actions you receive. We deal with the same types of issues on the other side. We would all benefit if the complainers keep these words of their compatriots in mind.

    MVS

  56. Leopold,

    You’re hitting on the “my patent is better than yours” problem.

    Wasn’t it about 100 years ago that everything that will be invented was already invented? Now we still have mechanical patents being filed? They are clearly obvious. Therefore, we should say that all mechanical inventions are obvious and therefore not patentable. This will reduce patent backlog and allow clearly more important inventions to be examined and issued sooner.

    We had the software fight about 80 or 100 years ago when electrical devices came around. You can’t “see” the electricity, therefore, it’s not tangible. So no device involving electricity or communications should be patentable.

    We could go on like this forever. Infringers will always want a get of jail free card, and innovators will always want patent protection, in all fields of research and development. The real question is not which groups are “worthy” of patent protection, but how to administer patents efficiently and fairly.

    Got another one:
    Medications and surgical procedures are for the good of the public. Therefore, all medications, surgical instruments and procedures should be in the public domain and non-patentable.

    The problem with eliminating any of these subjects from patentable subject matter is that they end the incentive for disclosures of inventions and advancements in the relevant arts; which is EXACTLY why the patent system exists. To exchange patent rights for disclosures of inventions and advancements in the useful arts.

  57. ‘Can anyone provide a definition for “software patent” that could be meaningfully applied, if we were indeed inclined to “eliminate” them? Likewise, can anyone provide a useful definition for “business method patent”?’

    You could use the same standards that prevented certain software patents and all business method patents in the 1980s. They seemed to work quite well (even if they may not have been founded in law).

    Electronics & Computer Patent & Copyright Practice (Ed.), 2nd Ed. (PRI 1990).

  58. “I agree with those who suggested eliminating software and business method patents…”

    I brought up the following challenge on another thread, and never received a satisfactory answer. Can anyone provide a definition for “software patent” that could be meaningfully applied, if we were indeed inclined to “eliminate” them? Likewise, can anyone provide a useful definition for “business method patent”?

    I have a strong suspicion that most (all?) of those that make this kind of suggestion are not practicing in the electrical arts. Not that that necessarily makes them wrong. But, it might mean that they can’t provide any support for their positions…

  59. Lower: “Another thing I would point out is that even though I think a claim may be obvious, it is frankly not my opinion that counts. It is the USPTO’s, as my managing partner likes to remind me. If my opinion of the prior art differs from my client’s opinion, the claims reflect the client’s opinion, not mine.”

    Lower, I think an attorney does his client a disservice by knowingly submitting anticipated/obvious claims which will be heavily amended in prosecution. While some estoppel is acceptable as part of the process, I don’t think it wise to accept a large dose of it, swallowed with no correspondingly large return therefor. The inventor is paying for our legal/technical expertise. We’re not mere scribes, and I feel it short-changes that client when we pretend to be. This is of course a personal matter, not a legal or ethical one; my opinion shouldn’t be taken as a criticism of you or your partner, but as my preferred one out of the many ways to run a legal practice.

    Lowly: I certainly don’t mean to imply that time pressures make hacks of us all. There are times, though, when circumstances make it difficult to do the thorough job we desire. I’ve had an inventor literally dictate to me from his car as he drove to a seminar where he would publicly disclose the invention; I’ve had my present employer’s business unit casually ask about patenting and mention they’re commercializing in a week; etc. Happily, those experiences have been the small minority.

  60. Lowly Prosecutor,

    When your billing rate exceeds 200/hr and you have a client demanding office action responses for 1500, you’ll see the problem. That’s less than 6 hours (leave 1 hour for partner review) for you to read the art, reread your application (or the application drafted by someone else), read the response written by an attorney at another firm (which is why the case was transferred from that firm in the first place), and only then can you amend your claims, draft an actual response, and revise the response in light of partner comments. When the art is off base, the previous amendment had no point (or even worse, made an error), and there are north of six references clearly combined using the claims as a roadmap, things can look a bit dark right from the outset.

    It is what it is, and you just deal with it, but some of the pressures are bit unrealistic in the field today; for the lowly practicioners and the lowly examiners.

  61. Great post Dennis. When you can get this strong a reaction with a couple of paragraphs…

    What amazes me is the outpouring of self-centeredness in most of the posts. Does anyone (other than a few posters) actually give a Tinkers’ Dam about the big picture here? Many seem concerned only how their own little slice of the pie is affected by the so-called ‘reform’ bills.

    Is the patent system truly ‘broken’? Hardly. Grow up people and quit manipulating numbers or deifying those who do (Prof. Lemley comes first to mind).

    The point we should all be trying to make is that the patent system has to be ‘fair’ for everyone it touches. It has to apply equally to the big electronics firms whose products turn over every couple of years; to the drug giants who rely on their patents for a longer period; to the little guys/gals and the small companies struggling to gain access to ever-tightening markets; and to everyone else who uses the system.

    What is really getting old is all the whining about people ‘gaming’ the system. You know what? No matter what sort of ‘reform’ is enacted, there will ALWAYS be those who find a way to manipulate it to their advantage. It sickens me that groups like the inappropriately named “Coalition for Patent Fairness” manipulate the illegal and/or unethical actions of a relative few to advocate change to a system that little resembles fairness for anyone, save themselves.

    Do we need reform? That’s an easy one- we do. But can Congress enact something that draws clear property lines, as Dennis suggests? Doubtful. Many foreign systems have tried to establish brightline tests (inventive step is my ‘favorite’) and only succeed in further muddying of the waters. IMHO, with so many different types of users of the system, with such diverse needs, the only way to truly brightline the law is to create separate patent (or patent equivalent) systems for each class of user- at the very least, I agree with those who suggested eliminating software and business method patents- give them a system of their own that recognizes true innovation and an advancement of their art befitting the contributions.

    Some ‘specific’ thoughts on the dual bills-

    The venue statute needs to be fixed. Forum-shopping to find courts that appear to favor one side or the other needs to be curtailed to the furthest extent possible. Not because of a notion of ‘favoritism’ to plaintiffs- but for simple judicial economy. Both bills are a good start.

    Damages? Why meddle? Georgia-Pacific standard seems to be doing just fine to determine apportionment the so-called ‘reasonable royalty,’ and willful infringement seems to have suffered a serious blow after Seagate. I don’t think you can draw a brightline test, not when you have highly paid experts at every case giving highly different opinions as to the amount of damages.

    First-inventor-to-file? What’s the point? Either go for global harmonization of the system and enact straight first-to-file or leave it alone.

    The most troubling aspect of the amendments to sections 100-102 is the radical shift- from the ‘invention’ to the ‘claimed invention’- effectively denying priority for later-filed claims. This change, presented as a ‘solution’ to the gamers who file broad specs then wait for a product to amend the claims to encompass the product, ignores a plain fact- the vast majority of these amendments are either never allowed or are declared invalid for lack of enablement and/or written description. Multiple checks are already in place to weed out so-called ‘bad’ patents. Yet Congress seems more than willing to punish every inventor whose attorney does not submit every possible scope of claim with the initial filing.

    Post-grant oppositions are a more efficient alternative to cumbersome and often endless reexaminations. HR 1908, with its single 12 month window and retention of IP re-exam after 12 months seems fair to all. The Senate version however would truly weaken all issued patents and subject patentees to multiple challenges through the entire life of the patent with a weakened standard of proof- hardly the ‘right’ way to encourage innovation.

    And what happened to reforming the ubiquitous and often amorphous inequitable conduct defense? Neither bill follows the NAS 2004 report- to disallow inequitable conduct unless one or more claims is first found to be invalid- at least HR1908 requires a prima facie unpatentability test to determine materiality.

    It’s a shame that neither House nor Senate followed the National Academy of Sciences suggestions to best tweak the patent system- even though NAS is non-partisan and its 2004 report provided real statistical evidence on the actual state of affairs at PTO and in litigation (as opposed to the selected distortions provided by special interests on both sides of the reform issue).

    The kicker? If signed into law in its current form, HR 1908 would render Tafas/GSK v. Dudas moot. Now THAT’S what I call true reform.

  62. Clive Fenster,

    While I do constantly feel the time pressure imposed by clients only willing to pay a certain cost for applications, it’s not difficult to complete work within the time allotted. You just have to work efficiently and intelligently.

  63. As a second-year associate (well, as of January), I have drafted several hundred claims as well. However, I have only received Office Actions on probably fewer than one hundred of those claims I drafted. I know what I think is a “good” claim, but the Examiner hasn’t agreed yet.

    Another thing I would point out is that even though I think a claim may be obvious, it is frankly not my opinion that counts. It is the USPTO’s, as my managing partner likes to remind me. If my opinion of the prior art differs from my client’s opinion, the claims reflect the client’s opinion, not mine.

  64. Lowly Prosecutor, my law-firm life parallels yours. I didn’t toil in BIGLAW, though, and perhaps that’s the difference between my experience and Caveman’s assumption?

    I think poor claims drafting results more from a client-imposed low budget, which in turn shunts the application to a junior associate and pressures the reviewing attorney (senior associate or partner, billing at much higher rates) to skim the draft rather than really aggressively reviewing/critiquing it. While following that string leads us to hourly billing rates, I don’t think profits-per-partner are astonishingly higher now than 10, 20, or 30 years ago. I do know that more and more clients are taking a hard line on costs, imposing ceilings applied to any prep/pros matter, and so on. That sort of tension has to manifest itself somewhere in the process.

    It’s also possible that the drafter just develops tunnel vision vis-a-vis a claim term, not seeing that it has a colorable meaning beyond what’s in the drafter’s and inventor’s heads. The examiner points it out, and the term is amended or the record made as to its intended meaning in light of the disclosure. I don’t see that as a problem.

    All this isn’t to say that the bulk of filed claims are great or that they’re terrible. Just hypothesizing as to the why behind some of the “terrible” claims.

  65. Caveman – “I dare say the average third year associate is lucky to have written more than about 300 or so claims – and that’s if they have been luck enough to have spent time at a high production prosecution shop.”

    As a first year associate whose practice is limited 100% to prosecution, I have to wonder where these third year associates with no experience are working and what exactly they are doing. I do a lot of prosecution work (responding to office actions, etc.) but I’ve also drafted hundreds and hundreds of claims, every one of which has been reviewed by a senior partner. I guess I’m lucky.

  66. “And as for “drawing” bright lines of demarcation on the property map, patent claims are written in fuzzy ambiguous words.”

    Well what if the file wrapper was plum full of the inventor/attorneys words explaining exactly what the words of the claim do or do not encompass in light of the best prior art (i.e. a search report with analysis). Wouldn’t that make the claims a bit less fuzzy?

  67. Dennis,

    “Public Notice” is an oxymoron.
    The public doesn’t notice anything until it hits them over the head like a sledge hammer. But by then it’s usually too late.

    And as for “drawing” bright lines of demarcation on the property map, patent claims are written in fuzzy ambiguous words. There is no 2-dimensional map onto which one can draw fine lines with a well sharpened 6H pencil.

    Your post obviously ignited more than one flaming war here. Good job.

  68. The real problem SF is that many patent attorneys don’t have any real world experience, so they don’t really understand what they are writing and can’t make the sort of ballpark judgment about what the boundary of the claims should be. And many of the ones at big firms who are drafting a lot of the claims in new applications haven’t been around long enough to understand how to draft a proper claim and don’t really understand the technology or take the time to understand it – or for that matter what the invention is, or for that matter what a typical commercial embodiment would be.

    Aside from solid technocratic ability, it takes writing literally thousands of claims before you start to get good at it. Many senior patent attorneys move away from claim drafting, which is a shame. I dare say the average third year associate is lucky to have written more than about 300 or so claims – and that’s if they have been luck enough to have spent time at a high production prosecution shop.

    People forget that our profession is not easy, when practiced properly. The people who get into or glom onto patent law because they think its some kind of free ride are the ones who are producing this garbage. But, as has been said, a crappy claim should be easy to reject. And I, like Mr. Fenster appreciate a good rejection. I am wary of first action allowances and have a great first action allowance story if anyone is interested… (is that crickets chirping I hear over the sound of tumbleweeds).

  69. “It’s hard to imagine that the folks who file those things are simply confused.”

    I think the major problem is that, at many too firms, associates and partners have to prosecute what comes there way regardless of their particular speciality. As a result, either the associate drafter, the partner reviewer or both have no clue about the particular technology, and they don’t have either the inclination or the budgets to educate themselves. And if the inventor just trusts the patent attorney to get the claims right, you get the crap you see all too often. A good friend of mine was listed as an inventor on a patent application drafted by another firm. I was shocked at how clearly anticipated the claims were and how useless the spec was.

  70. “you along with MM and Mad Max are classic examples of message board trolls.”

    It rhymes with “grow tree,” pds.

    As for E6K, while he does stray from orbit on occasion, I feel his pain. One need only peek at some of the published applications and their claims to understand what sort of ineptitude and/or gamesmanship is taking place on a daily basis. It’s hard to imagine that the folks who file those things are simply confused. But I’ve no doubt that they pretend to be. After all, something useful might slip through.

  71. Wow … it is posts like this that make me glad I don’t work at the USPTO. I would be hesitant to roam the halls at night alone.

    Regarding applications, in general, applications to agencies such as the FCC, EPA, FDA, etc., are amended all the time. Why you ask? Because there is a difference in opinion between the applicant and the agency as to whether or not the applicant has met all the requirements of the rules/code. After a period of exchanges, which may include discussions of the law and amendments to the application, the application may get granted or rejected. However, I don’t think anybody who files applications with these agencies (or the agencies themselves) expect that both the applicant and the agency will see eye-to-eye the first time around. So why should applications before the USPTO be any different?

    “the fact I’m talking to someone who openly admits he’s not an expert in his field” … at least I’m honest about my expertise (or lack thereof). Besides, I work in dozens and dozens of different fields, yet you only work in one. I cannot afford to be an expert in the technology, but I strive to be an expert in the law. Unfortunately, most examiner I encounter don’t care about the law, only about rejecting the claims and getting their counts.

    Honestly, I would like to respond to much of what else you wrote; however, I don’t speak gibberish, so it is difficult to understand what points you are trying to make. Then again, as I prefaced in my original post, you along with MM and Mad Max are classic examples of message board trolls.

    Regardless, it has been fun.

  72. CaveMan: A good examiner can do that. When I see it, its like a breath of fresh air.

    anonyme: Yeah – - unless the Examiner turns up prior art that anticipates or renders obvious all your claims.

    Actually, while I’m of course annoyed that I won’t get a patent for my employer/client, I am grateful for the examiner who finds lethal art. What I do NOT want is a patent with an aneurysm waiting to burst. While some minority may take them, we have no interest in patents that (a) we cannot assert if need be, and (b) anyone performing due diligence will realize they can infringe with impunity. The examiner who finds art that torpedoes our claims helps us redirect company resources to more fruitful projects.

    (Sorry to be all silver-lining; I’m just feeling the love tonight.)

  73. FWIW, Examiners reject neither inventors nor attorneys — they reject claims. A subtle yet critical difference.

    Examiner6k, will you acknowledge that the Applicant’s (I didn’t say inventor or attorney, but Applicant) half of the federal quid pro quo is grant of a patent that claims his invention to the limits of its permissible scope? (I will risk assuming you understand that how an Applicant may go about reaching for that goal is immaterial to my request.)

    Considering that an Examiner and Applicant can’t agree on the scope of the same claims before them both, and considering that two parties in litigation similarly cannot agree on the meaning of the same claims before them both … why would you think the generic Applicant seeking maximum protection would write claims that, on the very first pass, exactly match the generic Examiner’s vision of that maximum scope of protection? Or even that any two generic examiners would have identical visions of that maximum scope?

    Similarly, an applicant may well be aware of a piece of prior art cited against him in prosecution (I have many times had art cited that I had disclosed in an IDS). A very real possibility is that the examiner and the applicant both have read the reference, but their views on its disclosure differ. The applicant’s job is to persuade the examiner that the applicant’s view is the correct one; the examiner’s job is to engage in an open-minded dialog. It is not the examiner’s job of conclude that the applicant is morally bankrupt for submitting claims that the examiner has rejected based on applicant-admitted art.

  74. 6k – i am fascinated by your interpretation of examination. especially since i have a few cases in my docket filed in 1995-1996 that have yet to go to final without any amendments (except change from omnibus construction which i believe is to epo-syntactical-bs-pretend-language) … dont cry for me alexandria!

    how is it that you can believe that claim scope and claim construction is such a simplistic linear issue? the folks for or against reform clearly have self-interests — that is inherent to the concept … but, conceptually, how do you square the circle of invention as though we do not stand on the shoulders of giants …

    or could it be that there can be more than one interpretation and that the observation ACTUALLY CHANGES the result. call it orthogonal interpretation — the encode to your decode … do you really believe the reason the top 10 patent “winners” every year are more innovative? (then why are there better financial returns for start-ups? – this is about money of course) Or, do they understand that they can react – defensively file – etc. are you an examiner who treats the big boys well but punishes the small fry?

    i am not going to say a single amendment needs to be made to a claim as originally filed and supported by the spec — i wont even claim that the “invention” changed in any way — but do you really believe that inventors and the public are served better by not arguing the limitations instead of expecting your “opponent” to figure out all of your docket – your examination experience — your search experience (even though it sounds like you are one of those term searchers instead of concept searchers) — your JOB?

    think … heisenberg principle of claim construction … in a number of cases everybody benefits by the interpretation of the guy everyone thought was “wrong” … why is that bad for society if the person pays his way? in monetary terms does this person actually cost anyone else an iota of economic output? excepting how efficient the pto may or may not be … recall for a moment : Einstein at 3 “the milk is cold” Einstein’s parents “you’ve never spoke before” Einstein “the milk was never cold”

    there are a whole slew of situations where terms came into being by use within an art … there is lost art that is rarely raised even to simplify seemingly complex issues … language changes … yo became our first genderless pronoun … the patents that are pending in my docket actually make more sense now? what is that exactly? for instance, i do not believe as you assert that technology is any more technical than quantum mechanics was over 100 years ago … however weird … and without a PC …

    too many examiners wont get their hands dirty even if they have no liability and do not have to be pleasant to their “clients”. not sure of your art … but how many folks in 382 or 380 have read a paper by Claude Shannon (the basis for communications as we know it 60 years later) or the big ten pager describing Reed Solomon?

    what is YOUR issue, exactly? i am not a proponent for how lawyers or examiners behave badly — it is a waste of time — i believe the most important person is the INVENTOR whatever his quirks — because he gives 99% and probably doesn’t care about the money — at least until it gets too expensive which is why i find the patent promoter exception similar to perpetual motion machines under the sb forms– but they pay their way …

    you, on the other hand, are a government employee … your instructions come from the pols who get the most votes … special interests, likable leaders, visionaries, or even pure partisans … the people who believe in the system pay your way, even when they are at odds with the pols who make the rules everyone has to follow … your distaste for how practitioners may be re-distributing wealth is clearly ignoring the education and experience you get by examining and interacting with so many people who are disclosing what they believe to be patentable … you think you are endearing enough for the very tough love for-profit environments? go for it!

    the art of search and examination is no different than any “work” the best folks do so well … some electricians are artists some mathematics is art invention is an art …

    as caveman says “a breadth of fresh air” AMEN!!

  75. Searching is an art form. Its not for the crude and ham handed. Heck, Einstein was a searcher. The general “resolution” of the search must be carefully established before zeroing in on whether the claim is obvious or anticipated. Anyone who has ever played with a microscope – and I hope most folks in the patent biz have – knows how hard it can sometimes be to even line up what it is that you want to look at under the proper lens much less get it into proper focus.

    A good examiner can do that. When I see it, its like a breath of fresh air.

  76. 6k,

    Just to be clear, I don’t think the prior art is totally searchable and evaluable by the examiner. Most of the art that I see cited by the examiner is total garbage. Not totally unexpected considering that the examiner’s never read the app. And as for the examiner’s evaluation of it, well, I’m sure you’re familiar with GIGO.

    VA

  77. VA and pds, you are the ones missing my point, I got yours quite well, most of them don’t even warrant a reply because they’re neither here nor there regarding the issue at hand. I know why YOU and the rest like you believe it should be like it is. What I DON’T KNOW is why OTHERS would be led to believe your garbage. Submit what you believe to be an invention, get it or don’t, go home. Throw in arguments, but you can’t change what you claim. If you really think you got a bum deal, resubmit amended and claim priority, but go to the end of the line. Same thing that happens in all the other places like the DMV etc etc. they don’t just say, Oh, well Mr. 6k was just at my line and fubbared his app for a registration because he didn’t know wtf it was he was driving, so I should skip him straight to the front even though he still hasn’t gone outside and looked at what he drives in comparison to what else is out there!

    “There are just too many variables for any attorney to confidently believe they’ve written claims that perfectly covered the claimed invention”

    QQ MOAR K?

    Even disregarding the QQ, and the fact I’m talking to someone who openly admits he’s not an expert in his field, why in the hell is there sooooo many variables for you to get it right on the first time, but there isn’t toooooooo many variables for me as the examiner to find? Insert 5/25 here. And that’s disregarding that the very basis of your QQ is baseless, there are no more “factors” than there is prior art, which according to you, is totally searchable and evaluable by me. But then when it comes to you evaluating such things, Oooo no siree bob, TOO HARD! While we’re at it, why’s just one chance to come back and amend enough (since I finaled you properly) and no chance to come back and amend, but a chance to argue, isn’t? I don’t see why, by your view, I should never even be able to final you and make you RCE, you should just be able to bs on forever and ever and ever until you get tired of amending. I suspect you feel that would be a fair and just system. Well guess what, all the time that’s supposedly built into counts and production don’t necessarily count all the 100′s of variables and crap I’m supposed to know off the top of my head and then go and find because you thought it’d be cute to make 24+ dep. claims for every ind. so hey, you’re the wiseguy that knows all about this stuff, why don’t YOU tell us about it and why your product is so much better and save me the trouble of “poorly rejecting you” or whatever. Go ahead, presearch it, find the closest art and tell me why yours stands out, go over each claim. Oooo, but NOOOOO, QQ again! If you search and then are as incompetent as you accuse me of being about it (reversed), then you’ll get slapped with ineq. conduct. Whatever, that’s your QQ, my QQ is with the “errors” I could get my unit charged with, the underlying overclaiming cause, and the subsequent frustrations (read wasted time, production stress) with not being able to allow every last one of my cases on first action, so maybe you’ll lobby for taking those away while you’re fighting 2/25 etc. in court.

    Oh and btw, no I don’t think you guys talking here are overpayed, why? Because if you were you’d be partying with no less than 3 fine women right now instead. But, if I was as good as mr. pds would like me and the rest of my ex. buddies to be I sure as heck would put the most overpayed amongst you out of work. If you’ll excuse me I need to go and reject someone that my boss is reluctant to allow (overclaim), though, to his credit, I did just find something to read on the ind. somewhat that app’ll 103a exclusion. Wonderful.

  78. pds,

    You obviously haven’t been following 6k’s posts too closely. He knows before he even searches that the claims aren’t patentable. He knows before he’s even finished reading the spec. Heck, he doesn’t even need to read the spec to know that your claims aren’t allowable. He knew in his junior year of undergrad CS class that your claims weren’t allowable. And in the rare instance when his prescience fails him, he finds knock out prior art in 30 seconds with one Google search.

    If you weren’t so busy deliberately witholding everything you, and the so-called inventor, know, and zealously advocating for claims that you know your client isn’t entitled to, you’d be able to write claims that were allowable the first time around.

    Get with the program. :-)

    P.S. “However, it would have been interesting if he had at least attempted to intellectually address some the points I was making instead of going off on some rant.”

    Not really. His rants are more interesting. And funnier in a deliberate sort of way. His attempts to actually address issues of which he has no understanding are funny, but in a sad kind of way.

  79. examiner#6K writes “[blah, blah, blah, blah, blah].”

    Then again, I’ve got to give him credit, he put together more original verbiage in that post than I get in most first office actions. However, it would have been interesting if he had at least attempted to intellectually address some the points I was making instead of going off on some rant.

    “Getting rid of amendments would do the trick, but everyone thinks it’s such a bad thing, because … well, I don’t really know why.”
    The “why” is pretty &%$# simple. The purpose of the exercise (i.e., patent prosecution) is to get it right, not just getting it right the first time. There are just too many variables for any attorney to confidently believe they’ve written claims that perfectly covered the claimed invention.

  80. Dennis – Damages allocation and venue reform are totally consistent with maintaining a strong patent system, and they would substantially decrease the uncertainty that is prevalent in patent litigation. There are too many situations in which patentees attempt to assert the entire market value rule in an effort to obtain a windfall. E.g., someone uses a patent that claims an internet portal to seek a damages base that includes pretty much anything that you can display in the portal. And they sue in the ED Texas. It makes the lawsuit virtually impossible to resolve early, and it raises transaction costs.

  81. Examiner#6k

    I see that you’ve been reading the wall street journal and the ABA magazine quite a bit.

    As you sit there, exactly how much money do you think a patent prosecutor makes annually?

    And to all the attorneys in the audience, I think it’s obvious that the lies perpetuated by some of these rags have taken a toll on our profession.

  82. Dylan was blowin’ in the wind. A little different.

    Mr. Slonecker – I truly meant no disrespect. I enjoy your comments. You did indeed state as a premise that change might be needed. But then (it seemed to me) you imposed an impossible criterion for determining when we’re ready to make a change (comprehensive understanding of what we’ll get). And yes, those folks in 1952 were truly the greatest generation. But they’re not here now.

    Regarding caution – I’m a big fan of prudence. But, when you’re hurtling towards a cliff at 110 miles per hour, you might have to take a risk.

    I personally am not convinced that the suggested reforms are a good idea either. But suggesting that they’re bad because they might have unintended consequences doesn’t advance the ball very far.

  83. pds, now we know the only one insane here is you. You want Havard trained attorney’s (or judges), who are also have their doctorate in each niche you submit apps to, to be the examiners of your patents.

    Guess what? If we all had such a high and mighty grasp of the english language, technical knowledge to rival our professors, and a knowledge of the law that at least matches (if not exceeds) your own, then guess what? We wouldn’t work here. Nobody would. N O B O D Y. Got that?

    Where would we be? I guess we’d be crusing around in our futuristic sports cars picking up gorgeous women on our way to the fattest patent payout lawsuits that we could find because our jobs as the fattest of the cat lawyers on the planets provide for it all. Oh, and then we’d retire for the evening in our private jet to our LA mansion for a month or so to recover from our strenuous expenditure of energies that day. Idk, sounds better than going home to my 1 bd apt, help my new gf with her “hw”, and then wake up early and do it all again, ad infinitum.

    Finally, “really bad” is different from “bad”, maybe you should go back to 2nd grade and get a better, higher, understanding of the english language. Then maybe you can come back and avow that you didn’t actually read, or perhaps did not understand, what LL said, just like you probably don’t actually read, or comprehend, what your OA’s say. Which, to be quite honest, seems a lot like something else that you probably haven’t read, nor comprehend, the law.

    MVS: Yes, to be honest that’s how I thought the system worked before I got here and was informed that it’s a “back and forth”. I was like, ok, fine. I didn’t realize until later that this basically means that in the game of examining every app I pickup has infinite lives via their game genie codes (small amounts of money). Getting rid of amendments would do the trick, but everyone thinks it’s such a bad thing, because … well, I don’t really know why.

    Low Prosecutor: Learn, and benefit from that one. Don’t make em embarrasing and we’ll allow unless we find anticipatory art, or tight obvious art, for the exact thing you made, no if and’s nor buts (something neither you or I can really control).

    Also, FOR THE LOVE OF GOD, post that application and show pds and his ilk how it’s done!

  84. or Jerry Jeff Walker:

    “Pissin in the wind, bettin on a losing friend. Making the same mistakes we swore we’d never make again.”

  85. “Gideon is right, it’s pissing in the wind time. That’s what my wise dearly departed dad used to say when I put on the Dylan albums in my youth.”

    More like Neil Young, no? i.e., Ambulance Blues from ON THE BEACH:

    **To Mom and Dad this just doesn’t matter, But it’s either that or pay off the kidnapper. So all you critics sit alone You’re no better than me for what you’ve shown. With your stomach pump and your hook and ladder dreams We could get together for some scenes. I never knew a man could tell so many lies He had a different story for every set of eyes. How can he remember who he’s talkin’ to? ‘Cause I know it ain’t me, and I hope it isn’t you. Well, I’m up in T.O. keepin’ jive alive, And out on the corner it’s half past five. But the subways are empty And so are the cafes. Except for the Farmer’s Market And I still can hear him say: You’re all just pissin’ in the wind You don’t know it but you are. And there ain’t nothin’ like a friend Who can tell you you’re just pissin’ in the wind. I never knew a man could tell so many lies He had a different story for every set of eyes How can he remember who he’s talking to? Cause I know it ain’t me, and hope it isn’t you.**

  86. Gideon is right, it’s pissing in the wind time. That’s what my wise dearly departed dad used to say when I put on the Dylan albums in my youth. What we really need is a surgical strike force, a delta force if you will.

  87. Mr. Bloom,

    I do have to wonder if in fact you even read the entirety of what I stated. Obviously you passed by the first sentence in my fourth paragraph.

    Moreover, urging caution is a far cry from “a knee-jerk “change is bad” response”. No one, myself included, has ever said that any change to the system is wrong and should be shunned. Even Mr. Crouch expresses concerns about hasty action in the absence of meaningful discourse.

    Your “apology” notwithstanding, you would do well to heed those who advocate caution, and particularly in this instance where the “reform” proposal was prepared by persons clearly following an approach markedly different from that of the authors who crafted the 1952 act.

  88. and finally, amended 103 should include the final statement:

    “And none of this BS about ‘inherency’”.

  89. “Second biggest problem is the test for obviousness.”

    I agree. Congress should amend 35 USC 103 to include the very reasonable test set forth in In re Vaeck:

    “To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on the applicant’s disclosure. MPEP § 2142, citing In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991).”

  90. “The bracketed insertion would solve most of the PTOs current problems and result in a huge reduction in the examining corps. THIS is the kind of patent reform we need, not what’s being proposed.”

    Totally agree with you. About the huge reduction in the examining corps that is. Let’s start at the top.

  91. 35 U.S.C. 101Inventions patentable.

    Whoever invents or discovers any new and useful process, [except for processes directed to computer software or business methods,] machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    The bracketed insertion would solve most of the PTOs current problems and result in a huge reduction in the examining corps. THIS is the kind of patent reform we need, not what’s being proposed.

  92. Biggest problem, assuming that a valid patent has issued, is claim construction. Too many courts construe claim terms outside of the context of the specification and without regard to the written description requirement. TDS and its progeny are still with us, despite having been implicitly overruled by Philips.

    Second biggest problem is the test for obviousness.

  93. Metoo,

    While I can certainly believe that Examiners are told they are not allowed to issue a first action allowance, I have seen it happen. In fact, I recently had an application allowed as filed, something I have never seen happen before. It was in the semiconductor area, not a business method, but it still goes to show that it can happen.

    FWIW, though, the claims were reasonably narrow and truly covered the invention, as opposed to being overly broad.

  94. “There is no policy, official or otherwise, that suggests this.”

    Simply not true. First action allowances are (un)officially frowned upon (and outright forbidden in arts like business methods) by the blockheads in PTO (mis)management who are from the “build a record” school of examination.

    Go read Just a Patent Examiner’s blog where newbie examiners post that they’ve been out of the PTA (Patent Training Academy) for 6-12 months and have been told, in no uncertain terms, that they are not “allowed” to allow anything. Not even a single dependent claim.

    Do applications get allowed on the first action? Yes. In rare instances. Unfortunately the trend in examination is more and more silly rejections to enforce the (un)official “Quality = Reject, reject, reject” policy that is designed to save PTO (mis)management the embarrassment that arises from patents being issued for exercising cats with laser pointers.

  95. Sir or Madam: you are correct. A patent can be both a “monopoly” and “personal property”. Simply saying it’s a monopoly doesn’t really mean much, other than, I suppose, that it’s a creature of government (a “civil right” per Locke) rather than some “natural right”. Now some might quibble in referring to a patent as a “monopoly” if it’s personal property – but I think that argument is largely one of semantics. Of course problems can arise when you start throwing around the word “monopoly” because of the negative connotations associated with it. Which is why we have all those wonderful quotes about how patents are not “mere monopolies….odious in the eyes of the law.”

  96. Michael Smith,

    When I get rebuked by a partner, I generally consider that being ‘dinged’.

    I don’t see how you can honestly say that Examiners are not dinged for first action allowances when you’re also saying that you know they get denied, rebuked, and then given the evil eye by their supervisors(joking) for suggesting a first action allowance.

    The situation just is what it is to us low level peons (examiners/outside counsel), and I don’t hold any ill will for any Examiners. Except of course, when unprovoked they treat me with disrespect (which is becoming increasingly common).

    JustanExExmnr,

    There are good and bad apples in every batch. I like to beleive that people are decent until they prove that they are not. But I readily accept that some people just aren’t decent and they come in all walks of life.

  97. Those of you that are saying that the PTO & not the applicant are in the best position to do the search are correct. Having one person do a search and then passing this on to another person (the examiner) to determine patentability is not a good idea. Something like this was tried back in the 1990′s with “team examining”. One examiner would do the searching, another the write-ups, etc. It didn’t work well. The 2 examiners tended to interpret the claims and references differently. So what one thought was a good ref., the other didn’t. The experiment was dropped.

    The search is an integral part of the examination process. To separate them takes away a lot of the process and would probably lower the quality rather than raise it.

    As to a 2nd issue, many have said above about the filing of excessively broad claims and how much anyone (examiner, attorney, inventor) knows about the prior art. Some claims we get are so broad that it is not conceivable that anyone (and not just one of “ordinary skill in the art”) would not know that it is already known in the prior art. However, these can usually be shot down easy enough with whatever art is used to reject a more detailed claim. So, they are irritating, but not that big a deal in the long run (as long as the examiner does the job close to correctly).
    Now, why those claims are filed, is another question. Does the attorney and inventor really think that they are entitled to a claim that reads on the wheel that Oog invented 50,000 years ago? :)

    Solution would be something suggested in another topic (thought didn’t see any responses). Just set the the claims in stone when the 1st action is issued. Claims can only be cancelled (or rewritten in independent form – no new or amended claims). Let the applicant file as many as they want (with some monetary disincentives for larger (maybe greater than 50 or 75 claims) numbers of claims). Claim everything that you want in whatever combinations and scopes you want. File preliminaries until the time of 1st action, so you can craft the claims while waiting for the examination to start based on what is happening or if you see/find new prior art. If the claims are drafted well (which puts some burden on the attorney & applicant, but it is their concern what the claims are, not the PTOs). Once the 1st action is sent, however, the claims are set and can only be cancelled. This way, the public is on notice as to what the broadest extent of any issued patent would be and examination should proceed a lot smoother and quicker. No dickering and going back & forth tweaking the claim. You can still have reissues and re-exams, if things need to be changed in the claims. Seems like it might be a better system, overall.

    MVS

  98. LL:

    Depending upon how broad you want to look at things, only the inventor is truly necessary, since obtaining a patents can simply be a registration system and the scope of the claims can be battled over during a litigation.

    If one were to exclude the attorney from the process, most claims would end up being “picture claims,” about 500 words long, and extremely easy to design around because inventors (and examiners) are terrible at understanding the difference between the 1st paragraph of 112 (i.e., enablement) and the 2nd paragraph of 112 (i.e., distinctly claiming). Both examiner and inventors appear to be found of trying to enable the invention via the claims when doing so is both unnecessary and undesirable.

    Although keeping the attorneys out of the loop won’t keep patents from being issued, the patents that do get issued will be of such a poor quality that inventors won’t go back a second time once they’ve realized that their first patent is essentially worthless. Besides, who else is going to educate the examiner on patent law? God knows … it won’t be the Examiner’s primary or SPE.

    As for my opinions of Examiners, they remain entirely the same despite your comments. I know very well that there are some awful attorneys (I’ve seen them myself) and great examiners. However, as a whole, most examiners I deal with are incompetent to do the job I would like them to do. Some are incompetent because they don’t care, and some are incompetent, not because they don’t care, but because they are poorly trained. Other examiners would be competent if they had enough time to do the job properly, but they don’t have the time.

    This is why I see examiners as just a gate keeper to the Board. When I prepare responses, I know that some of my arguments are easily comprehensible by someone with a legal degree, an understanding of the relevant case law, and an understanding of the written English language (i.e., what should be the minimum requirements for being on the Board). However, in many instances, I’m dealing with examiners that have a poor understanding of the English language, never read the case that they have cited to me, and understand very little about making a prima facie case, the respective burdens of applicants and the examiner, as well as the required factual determinations an examiner is required to make. As such, many of my arguments go completely over the heads of most examiners despite these being valid and winning arguments.

    I mentioned that most examiner “are incompetent to do the job I would like them to do.” What I mean by that is that the job I would like the examiner to do is to be capable of understanding, to a high level, the English language, the technology, and the law. Most examiner do well with the technology (however, others do not), a good portion do well with the English language (but a large percentage does not), and it is rare for an examiner to have a really good handle on the law. Give me an examiner with those qualities and the ability to do a proper search, and most prosecution would be over by the second action. This is what I think would happen if I could directly prosecute applications with the Board. Unfortunately, their fact-finding/technical skills aren’t as great as an examiner because of the examiner’s forced expertise in a particular field. Still it is a lot easier to get a quick grasp of the technology than it is the law, which is why I see the examiners are being the least value added part of the process.

    “And examiners (at least good one) are an important part of the system. They are more than a filter to remove the really bad claims. They can, and do, help the applicant get a valid and strong patent that can withstand litigation (by doing a good search & finding the best art & making sure that the claims are sufficiently limited to avoid the prior art). And they help the public as a whole by ensuring that improper patents (e.g., claims that are so broad as to read on the prior art or are non-statutory) are not issued which can hurt industries associated with the bad patent”
    Funny … what you just described (although avowing that it isn’t) is just getting rid of bad claims.

    BTW: You citation of Hyatt v. Boone does not appear to be particularly relevant to your points. This case was based upon an interference and decided on some fairly esoteric legal points that most examiners would likely not pick up on. As such, I would not call this case a good poster child for your arguments.

  99. Can’t a patent be both personal property and a monopoly? What’s the problem here?

    Patent reform in 11 words or less: Ditch the count system and enforce production by firing unproductive examiners.

    Simple solutions are the only solutions.

  100. If anything is weakening or desatroying the monopoly it is the vigorous assertion of claims of US patents which strike disinterested observers (judges) as unfit for enforcement. Turns the public against the patent system. Courts then choose not to grant patent owners the injunctive relief which is their right.

    Paradoxically, you can strengthen the monopoly by making it possible for a preponderance of evidence to strike down a bad claim, and striking it into the hearts of Applicants at the PTO that going to issue with even one bad claim present in the patent is enough seriously to delay getting the injunction. Toss in a “Loser Pays” provision, for drive home that one is serious about “quality”.

    Give patent attorneys a professional livelihood reason themselves voluntarily to expunge ALL claims, before going to issue, that are unlikely to survive a preponderance of evidence validity attack after issue. That will solve the pendency and quality problems.

  101. Dennis, I don’t see how anyone can objectively view the huge and increasing number of defendant companies dragged into a completely inappropriate venue in East Texas by patent troll suits, in which an invalidity challenge without very large legal expenses is virtually impossible, and PTO reexamination is so slow as to also be useless even against clearly invalid patents, and say there is no need for SOME patent reform legislation?

    Also, some of the OTHER pending legislative change proposals may have a lot less impact than many of their debaters think. E.g., realistically, changing to “first to file” will affect few actual patents that anyone cares about, because an alleged first to invent inventor rarely beats the first to file NOW, and thus is not a valid excuse for delaying application filings, and loses foreign patent rights, and most litigated Rule 131 affidavits do not survive litigation challenges. [But it WILL reduce some commercialization and multinational marketing uncertainties.] Also, while infringement damage projections and calculations may well be a mess with loose-cannon juries and those judges that won’t reduce them, where is one being pointed to a significant number of actual cases in which “damages apportionment” end outcomes after appeals would be significantly different? [If the CAFC can't deal with and straighten out this and other patent law and inter-panel inconsistency issues we now know that the Sup. Ct. is likely to do it for them.] Furthermore, if by “the secret rights of unpublished patent applications” Dennis meant the alleged trade secret value of patent applications withdrawn before publication, where are the examples of that among the 90% of patent applications now already being published after 18 months? Most inventions are discoverable (back-engineerable) from their commercial products and thus not protectable by trade secret law anyway. Furthermore, the publication prevents others from getting a patent on what is disclosed. Using a trade secret to make a product risks someone else getting a valid patent on it later, because even a commercialized trade secret is not prior art to them [except for some "business methods" under the 1999 "prior user" statute]. Gore v. Garlock.

  102. “I do not believe in markedly changing an existing system without a comprehensive understanding of what would stand in its place.”

    I can just imagine Sam Adams saying something like this at the first Continental Congress. If this were our guiding principle, we would never change ANY system. It would be nice to live in a perfectly predictable world, but then nothing would be novel and non-obvious, would it?

    “Moreover, patent law is not an ‘island’ unto itself. A change to it necessarily impacts the symmetry existing with all of its other counterparts generically labeled as ‘IP’.”

    Yes, and if I kill a butterfly I might cause a tornado. (link to en.wikipedia.org). Again, if the fact that change might result in changes prevents us from acting, then we’re doomed.

    “I daresay that even basic provisions of our antitrust laws will be affected to varying degrees.”

    That’s pretty terrifying stuff.

    I mean no disrespect (some of my best friends are old guys), but a knee-jerk “change is bad” response is the worst possible way to deal with these issues. The fact is that the current system is approaching paralysis. Under current trends, the big multinationals (face it, they’re funding the bulk of this) are going to have to reconsider their investments in US patents. When they do that, the bottom will drop out of this very lucrative niche market that many of us are currently enjoying.

    Even if we do nothing, change is coming.

  103. Posted by: Mark Pitchford | Jan 29, 2008 at 10:30 AM:
    “The current situation is neither the Attorney, nor the Examiner’s fault. It is the PTO management’s fault for not treating each application as unique and giving the Examiner the time and resources to thoroughly evaluate the merits of the application. And it would probably also help if the PTO gave just a little credence to the Examiner’s opinions regarding an application.”

    While I generally agree with you, there are current practicing attorneys I know of that are part of the problem, just as there are Examiner’s that are part of the problem. It has become a downward spiralling out of control where an extremely poorly run agency (USPTO) drives out the best of the best because it promotes managers that a) might not know how to even speak English; b) know little to nothing about U.S. or international patent law; c) are not trained how to manage people… This in turn forces anyone at the USPTO who wants to keep their job to cut quality corners to the extreme (either allowing things that shouldn’t be allowed to make production, or maintaing a consistent policy of carte blanche rejection). This in turn has forced attorneys to be part of this game (i.e., RCE filings; taking Examiners to the BPAI when those issues should have been resolved through interviews had the Examiner been given the time and permission to do what they felt was appropriate.) Ultimately, you are right that it is the management at the USPTO that is at fault, and ultimately the U.S. Congress for not proactively stepping in and changing the amount of time examiners get, in order to permit quality to be done. However, there will still be lazy beaureacrats after the necessary changes are made and done, and there will still be dirty, underhanded attorneys who knowingly file claims that when read with the broadest reasonable interpretation consistent with the specification, read on entire subclasses.

    -JustanExExmr

  104. “Attorneys (litigators) out there, in general, is it better to defend a patent that was a 1st action allowance or one that had a bogus 1st action rejection and was then allowed? I, for one, would like to know opinions on this.”

    MVS, no actions, much less bogus ones (which are ALWAYS bad for everyone!), would be ideal (assuming the search was good). Not so good for billing purposes :)

  105. Mark Pitchford , you said “I never get a favorable first or second action either. I found out that Examiners get dinged for that, so it’s in their best interest not to give a favorable first action.”

    This is NOT accurate. Examiners do not get “dinged” for a 1st act. allowance. Unfortunately, too many people (inside & outside the office) think that 1st action allowances are “bad”. This is one of those things that people keep saying and it eventually becomes taken to be truth, even though it is not. There is no policy, official or otherwise, that suggests this.

    That all said, there are way too many SPEs that are afraid to sign an allowance and will not let their examiners 1st action allow cases. This is wrong! I have told SPEs that I know who do this, just that. And, a lot of examiners think that it is better to make a bad 1st action rejection and allow the case later since this will establish a better file history for the applicant if it ever goes to litigation. Personally, I do not know if this is really better for the applicant or not.

    Attorneys (litigators) out there, in general, is it better to defend a patent that was a 1st action allowance or one that had a bogus 1st action rejection and was then allowed? I, for one, would like to know opinions on this.

    MVS

  106. Which would you rather hang your hat on – a 19th century letter to the editor of the NY Times, or Giles Sutherland Rich – the father of the 1952 Patent Act (which, last time I checked, is still what we are operating under in the U.S.). Judge Rich was one of the staunchest promoter of patent rights ever, yet shortly after passage of the 1952 Patent Act he said: “It is essential to keep in the forefront of our thinking the fact that a patent is a monopoly because its only value as an incentive depends upon securing to its owner monopoly power over the invention. That is the only thing that gives the possibility of profit. The economic power of monopoly is the mainspring of the patent system, a system whose ultimate purpose is the public good. Weaken or destroy the monopoly and you weaken or destroy the system.” Giles Sutherland Rich, Infringement Under Section 271 of the Patent Act of 1952, 21 Geo. Wash. L. Rev. 521 (1953).

  107. Why is it that I am left with the conviction that the Patent Reform Act of 2007 will be followed by the Patent Reform Clarification Act of 2010, which will in turn be followed by the Patent Reform Re-clarification Act of 2015, which in turn will be followed by the Patent Restatement Act of 2020, which in turn will be followed by yet other acts once more tweaking the law as additional disconnects become known?

    The Patent Act of 1952 was an effort to codify 162 years of jurisprudence, and was undertaken by notable luminaries in the field of patent law. In my years of practice I have never heard it said that any of them were working an “angle”. Clearly, the same cannot be said of those behind the current proposal.

    Cardinal changes in law should not be made lightly, and yet this is precisely what I have observed throughout the current “debate”.

    Could the law benefit from some changes to bring better clarity and predictability? Of course; no system is so set in stone that it should never be touched. Before doing so, however, it would certainly help to have reasoned and thoughful debate concerning what each section of the proposal is intended to accomplish, and how each proposed change would impact the imprimitaur contained in Article 1, Section 8, Clause 8. Moreover, patent law is not an “island” unto itself. A change to it necessarily impacts the symmetry existing with all of its other counterparts generically labeled as “IP”. I daresay that even basic provisions of our antitrust laws will be affected to varying degrees. Experience informs me that other as yet unidentified areas of law will likewise be impacted.

    Until real and meaningful debate takes place, and and this is doubtful given the current political landscape, I simply cannot get behind “reform ” representing cardinal changes to our present system of law.

    When I finish this post I will leave to cast a vote pertaining to a proposal affecting a cardinal change in real property tax law throughout Florida. I will be voting against it, not because I believe it is wrong, but because I do not believe in markedly changing an existing system without a comprehensive understanding of what would stand in its place. This pretty well sums up my view about patent “reform”.

    BTW, to Wow, I do hope you read the article to which I have linked. It may give you pause for reflection on several comments you have through this thread.

    To Examiner#6k, I am saddened that in what is obviously a relatively short period of time during which you have come in contact with our patent system, you have developed such a jaundiced view of those inventors and their representatives before the office. Hopefully over time you will come to the realization that in the law shades of gray are far more prevalent that the brightline black and white rules you currently espouse. Perhaps, at some point in the future you might even come to realize that the “old guys” as you are want to call them speak not only from experience, but also from a profound respect for the system and a commitment to the law that embraces what they believe are in the best interests of both inventors and the public alike.

  108. The public notice function is one problem, but not the only one. Even if you solve this problem and draw “property” lines clearly, that does not mean the lines drawn are *just*. And it could be that it is literally impossible to solve the public notice problem, if and to the extent that the subject matter of patents–inventions–is not naturally the type of thing that is property. Property rules arise to allocate a single owner to a scarce resource–a real thing having objective borders–that might otherwise be fought over. But because inventions are simply information or knowledge–ways of arranging or doing things, like recipes, basically–and are not scarce resources, arbitrariness and vagueness and overlapping claims are inevitable. Once you extend property rights to non-property (like ideas), then you ruin the property rights system. Of course, this implies that the patent system is unjust and makes no sense; patent attorneys don’t like this idea, so keep trying to fix the inevitable problems with the system. It’s like trying to get an efficient IRS or fair tax; tax is theft, and the state has no incentive or even means of being “efficient” (see Rothbard’s Utility and Welfare Economics for a reason why, link to mises.org), so it’s impossible to make it just or efficient.

  109. “Once the USPTO is able to push mandotry searches back on the applicants, what past behavior by the USPTO makes you believe that management will bother with trying to retain better examiners?”

    I don’t. I was talking about what the USPTO should do, not what I expect them to do.

  110. PDS,
    I do agree that the inventor is (by far) the most important part of the system. Without him/her none of us would have a job. And they are the one that is contributing something to society.

    However, you evaluate your own position much too highly. We all know that lawyers are parasites :) (OK, kidding there, don’t take it serious).

    Seriously, the lawyers are the one part (from inventor, examiner, lawyer, Board) that is unnecessary for the process to proceed. I am NOT saying that the lawyers do not add anything to the process. Good ones do. I am just saying that the lawyers are the one element that can be taken out and a patent (and even a good valid one) can still be obtained. You take out any of the others (inventor, examiner, Board) and there is no patent (at least the way the system is now).

    And examiners (at least good one) are an important part of the system. They are more than a filter to remove the really bad claims. They can, and do, help the applicant get a valid and strong patent that can withstand litigation (by doing a good search & finding the best art & making sure that the claims are sufficiently limited to avoid the prior art). And they help the public as a whole by ensuring that improper patents (e.g., claims that are so broad as to read on the prior art or are non-statutory) are not issued which can hurt industries associated with the bad patent (e.g., the Hyatt patent directed to a processor, etc. on a single chip – invalidated in Hyatt v Boone, but only after Hyatt had collected 10s (100s?) of millions of dollars from legitimate companies).

    So, please reconsider your (insulting) opinions of examiners as well as the relative value of lawyers in the system.

    thanks,

    LL

  111. “The problem is that current USPTO management is like a person too busy bucketing water out of his boat to take time to plug the hole. If they would just solve the retention problem (primarily by changing production requirements), they would eventually have a workforce that could handle more of the backlog problem. Combine that with the deterrence factor of mandatory searches and increased fees and we would be well on our way to solving the problem.”

    Once the USPTO is able to push mandotry searches back on the applicants, what past behavior by the USPTO makes you believe that management will bother with trying to retain better examiners? As as result of the USPTO’s currently inability to retain better examiners, the USPTO would have been able to push searching back on applicants. So, based on on this “lesson” the logical policy for the USPTO would to be to further lower examiner salaries and increase production so that the USPTO can push even more draconian searching procedures on applicants.

    If you want the USPTO to improve, you have to address the problems at the USPTO, not allow USPTO to shove its problems onto applicants.

  112. Mark Pitchford,

    There is a new claim construction ruling. It’s called “Quality = Reject, reject, reject.” It’s on the PTO website. Disguised as a press release about record breaking quality.

    I’m sad to say that I’ve received many OA’s worse than the one you quote. Many.

  113. “As such, why should private parties try to reproduce the PTO to obtain quality searches when the PTO already exists?”

    And yet further, why does the USPTO need inventors and patent practictioners to do searches when the EPO does not? Once again, this is evidence that the USPTO is incompetently run.

  114. “As such, why should private parties try to reproduce the PTO to obtain quality searches when the PTO already exists?”

    And further, if the USPTO was doing its job, why would a private inventor or patent practictioner be able to do a better for less money than a Patent Examiner?

    The USPTO, not the inventor or private practictioner, decides where patents are classified.

    The USPTO, not the inventor or private practictioner, controls the public search system.

    The patent examiner’s entire job is to search patents in a specified technological area and may have conducted hundreds of searches in that area. In contrast, even prolific inventors and experienced practitioners may only have filed a dozen or less applications in that technological area.

    In general, pushing the search requirement back on the inventor and attorney assumes that the inventor and attorney know the inner workings of the USPTO search system better than the USPTO examiners do, so the fact that the USPTO is advocating this requirement is an admission that the USPTO is incompetently run.

  115. “If searches are so gd expensive, then why do you keep crying for us at the PTO to keep on doing it on the cheap while your disclosures are getting more and more technical, detailed, and specialized?”

    There are some misguided applicants (and their attorneys) who believe that they should be getting more than they are paying for. Most attorneys realize that, to get more thorough searches and examinations, more time is required and that means higher examination fees and search fees to pay the salaries of examiners.

    Our frustration is that the USPTO hasn’t found a way to keep examiners happy enough to retain them. I would imagine that a large chunk of the problem is the production requirements. Too few examiners stick around long enough to become truly efficient and good at what they do.

    I think applicants would much rather pay an extra $2000 per application if they knew the patent office would demand more thorough searches and examinations and allow examiners to dedicate the time necessary to do that. But we have no confidence that current USPTO management has any inclination to do that.

    The problem is that current USPTO management is like a person too busy bucketing water out of his boat to take time to plug the hole. If they would just solve the retention problem (primarily by changing production requirements), they would eventually have a workforce that could handle more of the backlog problem. Combine that with the deterrence factor of mandatory searches and increased fees and we would be well on our way to solving the problem.

  116. Dennis-

    Judge Michel is absolutely correct in his assessment of poorly considered and drafted patent legislation as destabilizing. And he has every right to remonstrate, inasmuch as he runs the court that is charged by Congress with stabilization in patent law doctrine.

    “Irritated Litigator” sounds more disgruntled that irritated. Can it be that he earns his living representing accused serial infringers? Also, he might want to check 35 USC 261, which provides that “patents shall have the attributes of personal property.” For one who is enamored of legislative action, he seems quick to ignore it when he announces that “Patents aren’t ‘property’.”

  117. Wow – I think I know why you are irritated…it’s probably because people are telling you that you don’t know what you are talking about, but they don’t really understand what you are saying. From the standpoint of alienation (i.e., transfer of rights), patents have been considered property for several CENTURIES. For example, as far back as 18th century England (and probably earlier), patents were sold, licensed, bequeathed, divvied up, etc. And the SCOTUS opinion in eBay really did not change the treatment of patents as property. While I disagree with that opinion with respect to its effect on patent law, it is arguably based on sound legal ground. After all, even in the case of a trespass to chattels (personal property), injunctive relief is not automatic (e.g., the party seeking an injunction still must prove irreparable harm).

    As for patents being called “monopolies” until the 1980′s, I don’t think that’s entirely accurate but it’s not as far from the truth as some might think. As far back as 1863, Justice Clifford stated that patents “were not to be treated as mere monopolies, and therefore odious in the eyes of the law.” But, that does not mean that patents are not a form of monopoly or that patents have no characteristics of monopolies. Heck, even JUDGE RICH believed that a patent was indeed a form of monopoly. Still, it can be argued that many (including the Federal Circuit) avoided calling a patent a monopoly simply because of the pejorative nature of that term. Of course even Judge Rich agreed that patents, even though monopolies, had many (all?) of the attributes of personal property.

    And if Judge Rich called a patent a monopoly, then that’s fine by me.

  118. John Darling,

    I recently received an office action rejecting a claim under 112.

    “There is no antecedent basis for [the widget] in line 12 of claim 1. It is not clear that [the widget] is referring to [a widget] in line 4 of claim 1.”

    Really? I thought that if you said a widget, and later referred to the widget, that we were still talking about that widget. This must be a new claim construction ruling with which I am unfamiliar.

  119. pds,

    I never get a favorable first or second action either. I found out that Examiners get dinged for that, so it’s in their best interest not to give a favorable first action. I do, however, find it routine to get allowance of at least some subject matter following an amendment and RCE.

    Therefore, given the current state of PTO administrative practices, you need to write your initial claims broad enough that you have some room to move following an unfavorable first action. I find that prosecution is much smoother when you do this. If you draft precision claims on the first go round, you don’t have much left to amend with, and the Examiner will usually end up in some ridiculous argument with you (i.e., not giving the claims their plain meaning) that he must attempt to justify. You then end up in a situation where you must make some kind of ancillary amendment (just to throw the Examiner a bone), and that puts you right in line with Festo.

    The current situation is neither the Attorney, nor the Examiner’s fault. It is the PTO management’s fault for not treating each application as unique and giving the Examiner the time and resources to thoroughly evaluate the merits of the application. And it would probably also help if the PTO gave just a little credence to the Examiner’s opinions regarding an application.

    The current situation where we run out old examiners and hire brand new college grads is unacceptable. The turnover breeds inconsistency and the loss of institutional knowledge breeds incompetency.

    Until we fix the administrative and hiring/retention problems, we will never address the real problems of our system.

    The current reforms are akin to killing off a thoroughbred being ridden by a 400 pound jockey and entering a mule under the same jockey in his stead. The current reforms do not address the problem, and just really look goofy to interested observers.

  120. “The biggest problem with drafting claims (and have them survive unamended) is that there is no way I can foresee just how broadly a patent examiner will read my claims given the PTO’s standard of broadest UNreasonable interpretation of the claims consistent with applicants’ specification.”

    Typo fixed. :-)

  121. Just to bring up for discussion, but with all of the concern over the U.S. economy lately, I’m somewhat shocked that major patent reform is being sought with what appears to be little thought. And when I say, “major,” I mean that the proposed legislation makes significant changes to every facet of patent law (e.g., litigation, valuation of damages, prosecution). Making significant changes to any one of these could have major effects on the other areas.

    Second, couldn’t most of our problems be solved by (a) more examiners and (b) better management of those examiners? And this is not a knock on the examining corps, but the system they have to deal with. For example, I think the current point system is unfair and arbitrary.

  122. Examiner#6k

    I hope others look to you with the same respect that you look to your collegues in private practice with. No one likes being called a liar, a cheat, or lazy, and you’ll do well to remember that.

    While you may be wrangling for what your supervisors tell you are in the best interest of the Examiners, I and others here are espousing what is best for America. Please try and think about the bigger picture.

  123. “BTW: your comment about the EPO doing the best searching is very true in my experience. In fact, the PTO isn’t even close”

    True dat.

  124. Caveman:

    Although I always have Festo in the back of my head, it is not an overriding factor in my claim drafting and patent prosecution. My goal is always to have the broadest possible claims that will literally infringed, and if I have to amend my claims to get there, then so be it.

    The reason why I don’t worry about Festo too much when drafting my claims is that from experience, no matter how much I try, claims are likely going to be amended during prosecution. Also, if I have to rely upon the doctrine of equivalence during litigation, then I’m probably screwed anyway.

    The biggest problem with drafting claims (and have them survive unamended) is that there is no way I can foresee just how broadly a patent examiner will read my claims given the PTO’s standard of broadest reasonable interpretation of the claims consistent with applicants’ specification. I am still amazed how some examiners will completely read limitations out of the claims based upon claims constructions that are neither reasonable nor consistent with applicants’ specification. Moreover, and more disturbing, is that the Board appears to bend over backward when it comes to upholding claim construction determinations. I always hate going to the Board when my argument relies upon a claim construction argument because winning/losing becomes a flip of the coin at that point.

    As such, although I am loathe to amend claims, particularly when I think the claims already distinctly claim the invention (i.e., distinguish the claims over the prior art), sometimes I am forced to further amend the claims so that when I do go to the Board, I don’t give the Board any easy outs. I’ve used this language similar to this just a couple of times, but I like it … basically, I ask the following rhetorical question “how can applicants distinctly claim the invention when the examiner’s claim construction reads the distinctiveness out of the words that applicants have used to claim the invention?”

    BTW: your comment about the EPO doing the best searching is very true in my experience. In fact, the PTO isn’t even close.

  125. ….and there was me, thinking that an “exclusive right” of patent law is the same thing as a “right to exclude” others from practising the subject matter of the valid claim of an issued patent.

  126. “Real Anonymous isn’t a patent lawyer. He’s conflating an exclusive right to sell an invention, which is defined in a patent claim and is indeed a monopoly, with his own hypothetical concept, namely a right to sell a particular product, which indeed is not granted by a patent.”

    Wow. I wouldn’t even know how to answer that. :-)

    But if you invent and patent a horseless carriage, and five years later, I invent and patent a front-wheel drive horseless carriage, I have no right (given me by the patent) to “make, use or sell” my invention.

    Seeing as you are apparently a patent attorney, I must not have been clear in my hypothetical concept or you may have misunderstood me.

  127. examiner#6k writes “it boils down to more than an annoyance to examiners (which really it has nothing to do with that at all, even if that was the biggest thing, it’s the wasted time of the examiners, not the irritation thereof).”

    Let’s try to be honest with ourselves, the least important person in this process is the examiner. The most important person in the process in the inventor, and the persons in the middle are the Board and the patent attorney. Why include the Board, you ask? Because the Board is the true arbiter as to the scope of the claimed invention. I typically see an examiner as a little more than an imperfect finder of fact and a temporary gate keeper to the Board. Once I hit the second action, and if I think the examiner is doing his or her job properly, I just go straight to the Board.

    Back to the examiner’s relative position as to the inventor, the reason for the inventor’s importance and the examiner’s lack of importance is that the inventor is providing the benefit to society, whereas the examiner is providing little. As to the attorney, our value is that we actually have to make sense of what an inventor is trying to tell us about the invention and usually about the prior art and why the invention is an improvement over the prior art, and based upon this information, try to put it in a form that would enable one having ordinary skill in the art could make/use the invention. For some inventors, this process can be like pulling teeth. Again, as to the Board, they make the final determination (as far as my clients go … who likely won’t take an application to the FC) as to the scope of the claims.

    Given the relative importance of the examiner in the process, wasting the examiner’s time is the least of my concern. On the contrary, wasting my client’s money and discouraging my client from even filing for a patent is a very big concern of mine. The average small business (and I’m not even talking about a sole inventor) has trouble enough dropping 5-10K on the initial application, so I can imagine that when that initial cost likely doubles, a very substantial portion of these inventors are going to be completely priced out.

    “If searches are so gd expensive, then why do you keep crying for us at the PTO to keep on doing it on the cheap while your disclosures are getting more and more technical, detailed, and specialized?”
    Although I don’t post on this board as often as I used to, if you have read some of what I have written before, I have suggested giving both more money and more time to Examiners to do proper searches and proper examinations. If it costs my client more, then so be it. However, you have to realize is that the PTO is, by far, the most cost efficient entity to perform searches. In essence, every examiner is a searcher that has a specialty. Also, the examiners have the benefit of classifiers who get to look an already written application to aid them in their classification. As such, why should private parties try to reproduce the PTO to obtain quality searches when the PTO already exists?

    As for “too many bad apps getting through and wasting time,” prosecuting a patent will never be a perfectly clean, one action affair. The current system allows both sides (i..e, the PTO and applicants) the flexibility to find the right spot to draw the line in the sand. However, it rarely happens the first time around, and to expect (or even hope) that it will is to be unrealistic. As for “bad apps getting through,” then that is what reexams are for. I’m not looking for the PTO to be perfect. Instead, I’m looking for the most cost-efficient (as a whole) and balanced patent system for all my clients (which also include clients that are accused of patent infringement). What is being proposed vastly increases the costs while providing little benefit.

  128. Dennis-

    Great post. Dont let the irritated litgator get you down, he knows exactly what you mean.

    Patent Reform is a terrible idea right now, horrendous even. The new Rules and KSR have created enough confusion for a decade, lets not make it worse.

  129. Max, I think you are correct in your assessment of Dennis’ correct interpretation of the effect of patent reform.

    However, I think the underlying purpose of patent reform is to unsettle property rights, so I think Dennis’ interpretation would be construed as a reason for (not a reason against) patent reform by the patent reform crowd.

  130. read the excerpts from Lee Iaococca’s new book

    How can that “corporate gangster” Iaococca be outraged? This is the man that decided not to fix the Pinto so it didn’t burn people alive in low speed collisions because it cost more to fix than the price he put on a human life.

  131. Dennis, again, my compliments. Don’t be put off by the rude boys writing above. Looking in from outside, I read your Post and thought, he’s put his finger on it, exactly. Tinker with the system and it’s likely to exacerbate the problems, not cure them. But, when are you going to suggest the way forward, to address the fundamental issues you so perceptively identify?

  132. Well, it’s all nice and good to wax eloquently about “public notice functions” and all of that ivory tower crap, but what the practitioner on the street knows is the problem is simple:

    The system is a game because the Office rules have been set up to make it a game.

    So most Examiners with self-respect don’t make a career out of it, and the few who do are outnumbered by the hordes of count whores who are doing their best to game the system and do as little work as possible.

    On the other side of the game, the practitioners play the other hand. Use the game to get low quality patents, because there is no other option in most cases.

    Of course, we can write 100 pages on “public notice” and various other things.

  133. Settle down there pds, yeah I have a rep and all, but lets address the situation at hand. I’d like to say that I told a lady that she could take out her latest amendment because it wasn’t doing anything for her, she did and it was allowed after she put some other limitations in. True story. In any event, like SF said, it doesn’t matter either way guys, the era of gov. cheap ass searches has come to an end. This is in no small part due to the increasingly technical disclosures requiring people that don’t come cheap to do the searching and examining.

    If searches are so gd expensive, then why do you keep crying for us at the PTO to keep on doing it on the cheap while your disclosures are getting more and more technical, detailed, and specialized? Start coughing up some dough, build a little “examination city” (population 12k) in the middle of DC to house the examiners, pay them more than decent, update the production standards, and yes, you can forgo the presearch and keep sending in crappy claims ok? Don’t like that idea? Then how about we just do the presearch?

    “However, I recognize that I am almost never an expert in the prior art.”

    “applicants will basically be forced to provide (implicitly or explicitly) claim construction for all of the claim language as well as make characterizations as to the prior art vis-à-vis the claim language” welcome to the quality initiatives you guys helped to force on the examiners. We could just talk about things like grown ups, but you insisted on baby talk, welcome to hell baby.

    “I see the requirement for search reports … assert inequitable conduct defenses” Yeah, I agree, but it was that, or fee setting authority and making you disclose and discuss EVERYTHING you and your app KNEW to be prior art, so take your pick. I’m down for either.

    Finally, it boils down to more than an annoyance to examiners (which really it has nothing to do with that at all, even if that was the biggest thing, it’s the wasted time of the examiners, not the irritation thereof), it boils down to too many bad apps getting through and wasting time, and this mostly arises because of the bs you were likely taught and just vomited forth for us above about claim construction etc. etc.

    Ryan, I would love to believe you, but unfortunately your associates prove you wrong every day of every week I go to work, hell I even had one admit it the other day. I would o so love to share with you guys some of these cases, maybe I’ll find a few done by others and show you, because all my buds have the same ol crap going on in their dockets.

  134. PDS, your strategy used to be de rigeur before Festo. However, Festo changed the landscape such that an initial attempt to get it right and get a claim allowed with little or no amendment could be the best way to serve your client since claims drafted in such a manner and allowed without amendment could be more likely to be successfully enforced under DOE, for example.

    I personally don’t understand some of the claims I’ve seen from my juniors and those without significant experience that are simply too broad. With the exception of #6K – who may very well be completely insane, I don’t blame examiners and the PTO for having a problem with such claims. In my humble opinion, the “perfect” claim should be as follows:

    A widget comprising:
    a first rather ordinary but important widget-related element that is generally within the prior art but forms a launch pad for the real crux of the invention; and
    a second rather spectacular widget-related element that is the crux of the invention written in the most general terms possible.

    Claims such as the following, in my opinion are just poorly drafted and are the kind of claims I see too often and should be rejected with impunity.

    A widget comprising:
    a first ordinary widget element;
    a second ordinary widget element;
    a third ordinary widget element;
    a fourth ordinary widget element; and
    a fifth ordinary widget element.

    For institutional filers, there is a traditional assumption that the inventor is either at the cutting edge of the state of the art or knows of any relevant art. In most cases, the client/applicants are reluctant to perform searches because, practically speaking, a large corporate entity does not want to have institutional “actual knowledge” of any more references than they have to.

    If an applicant does a search uncovering the Jones patent and the materials are submitted in an IDS, and then another application is filed in a generally related field, by another inventor in another department with a different searcher (who doesn’t find the Jones reference) and, let’s say the new application ends up as a patent that is litigated and, as a defense, the Jones reference is applied. The question will invariably be asked “why didn’t the applicant submit the Jones reference?” Leading to ugly questions of equitable conduct and the like.

    Better to let the PTO or a competent ISA do the searching (in my opinion, which I believe is shared by more than a “narrow” margin of practitioners, the EPO does the best searching around, period).

  135. Ryan said: “Second, no lawyer drafts and files claims that
    are blatantly anticipated.”

    Response: Of course not. That would be blatant malpractice.

    Ryan said: “If we know what the art is, then we draft around it.”

    Response: Why don’t you know the art? Are you scribing blindly in an art area you are unfamiliar with? Are you deliberately or neglegently misleading your client into believing that you have expertise that you do not possess?

    Ryan said: “If the claim is otherwise anticipated, then we didn’t know about the art. If we knew about it, then we would have drafted it differently.”

    Response: Fortunately, the bury-your-head-in-the-sand days are over.

    I’ve grown tired of dealing with irate examiners because of ostriches like you. If you don’t know anything about the art you are prosecuting, then you’ve already committed malpractice by failing to follow through with due diligence. You must have a don’t ask, don’t tell policy with your clients or else you don’t talk directly to the inventors.
    Quit now before you do much more damage. You are part of the problem, not part of the solution.

  136. Wow: Can you provide some support for your position that Ebay v. MercExchange settled the issue that patents are not property (something a little more specific than the entire supreme court opinion, and all of the briefs)? I thought the holding in Ebay v. MercExchange was that there was no “automatic injunction” for patent infringement, but that the the traditional four-factor test must be applied to patents as it is to all injunctions.

    The economics of patents aren’t simple, they’re complicated, e.g. there are 15 Georgia Pacific factors just to determine a reasonable royalty! You also forgot to discuss the quid pro quo of the patent system in your discussion of benefits and costs.

    Did you know that Albert Einstein worked at the Federal Office for Intellectual Property (in Bern, Switzerland, of course).

    Straw man? We also use post hoc ergo propter hoc, and ad hominem arguments here….

    Its taken years to get a patent system as complex as the one we have now. Most people would like to see minor adjustments successively rather than one big reform package all at once. Its hard to know all the unintended consequences of each provision, and how they will all work together.

    no comment to the rest.

  137. True pds,

    First, the new search/opinion rule would put the lawyer and his client in an adverse position–almost a de facto conflict of interest and a violation of the rules of practice. So don’t go expecting any malpractice insurance for prosecutors if the bill passes as anticipated, no insurer or underwriter wants to be on the front lines defending the large number of malpractice suits on the way.

    Second, no lawyer drafts and files claims that are blatantly anticipated. If we know what the art is, then we draft around it. If the claim is otherwise anticipated, then we didn’t know about the art. If we knew about it, then we would have drafted it differently! Seriously, duh. Which means any so-called opinion or characterization of the claims will hinge on obviousness, which should be lots o’ fun. If I elect to use the TSM test in finding non-obviousness (and I know it’s not obvious because I drafted the claim–super duh!) am I going to get a lecture from the examiner on KSR? Which is to say, who between the attorney and the examiner gets to choose the law of obviousness as it is this week in the CAFC? And who, when it is all said and done, is going to choose whether the attorney or the examiner had the correct version of obviousness jurisprudence on the filing date? Ah yes, a court–which means the patent is involved in litigation, which is precisely what the bill portends to reduce. I say again, duh.

    On the other hand, the president is against patenting human-animal hybrids or some such thing–and not a moment to late.

  138. “I can’t say that I personally think they’re all the best changes that could be made, but, requiring the app to pre-search will at the very least stop most attorney’s from filing claims that are blatantly anticipated.”

    The problem is that some attorneys don’t know what their claims mean and thus have no idea that their claims are blatantly anticipated. It’s not deliberate. It’s just that they have a narrower or different meaning in mind. If more attorneys took the broadest-reasonable-interpretation approach to reading their claims (a good idea since that’s what examiners do), that would do wonders for advancing prosecution right from the start.

    That said, the requirement for searching will be eventually upheld, regardless of whether the Congress passes explicit authority for it. (Of course, the current version may not survive.) But I believe the USPTO will eventually pass regulations that sufficiently define what is required for a search. When that happens, it will help deter many applicants, primarily because of cost, but secondarily because of anticipating art being found.

  139. Examiner#6k … your reputation for being inflammatory rivals that of MM and MaxDrei.

    Your reputation notwithstanding, your post is a great example of how narrow your view is and ignorant (willful or not) of the potential consequences to the patent system from these alleged “improvements.”

    You applaud the requirement that applications be pre-searched to “stop most attorney’s from filing claims that are blatantly anticipated.” To the naive, this comment appears to be perfectly reasonable. However, when the likely requirements of applicants (and consequences thereof) are considered against the benefits of these requirements, the cost-benefit analysis weights heaving against this proposal.

    IMHO, applicants over-claiming (i) does not present a problem and (ii) is good practice. Any claim that is “blatantly anticipated” should either be quickly and easily rejected at the PTO and if not, quickly and easily found by a potential infringer. In this regard, I believe the “no harm, no foul” rule should apply. With regard to over-claiming being good practice, as an attorney, I would rather over-claim and be forced to narrow the claim by the PTO than to narrowly claim the invention and lose patent rights for my client. Although the PTO will always tell me (and my client) when my claims are too broad, I have never experienced (or ever been aware of) any situation in which the PTO has stated that the claims are too narrow and that they can be written in a broader fashion.

    When I draft claims, I draft claims that I believe are colorably patentable based upon my knowledge of the prior art. As is good practice, I also draft claims of varying scope that cover more specific implementations of what I think is the broadest concept.

    However, I recognize that I am almost never an expert in the prior art. Also, the inventor may not be an expert (and the majority of the times is not), or even a searcher I could hire is likely not an expert in the prior art. Instead, if the application is properly classified, the person mostly likely to be an expert in the prior art is the examiner to which the application is assigned (or another examiner that the assigned examiner knows should be an expert). As such, I believe the task for searching should always rest with the examiner. I don’t think overclaiming isn’t a problem because it can be easily and quickly corrected at any step in the process (either during prosecution or litigation).

    If the requirement to perform a search evolved into something comparable to me paying $1K to a searcher to do a search and return the best 20 references for which I have to submit an IDS, then I would not have a problem with this requirement. However, if these search requirements are comparable to the rules the PTO have already promulgated as to the new search requirements, applicants will basically be forced to provide (implicitly or explicitly) claim construction for all of the claim language as well as make characterizations as to the prior art vis-à-vis the claim language. Based upon all the land mines associated with these tasks, applicants could spend more time and money on characterizing the prior art than the applications spend upon characterizing their own invention. To me, this is a terrible waste of resources. Applicants should be spending the vast majority of their time/money discussing their invention, not the prior art.

    I see the requirement for search reports as a way of substantially increasing the costs of filing patent applications (thereby reducing the total number of applications) as well as creating much, much more opportunities for defendants in infringement suits to assert inequitable conduct defenses. As such, I believe the REAL PURPOSE for this proposal is to weaken the patent system and not to improve it.

    While I’m thinking about it, consider the potential ramifications and “unintended consequences” of a rule in which each term in the claims is construed and searched. In response, would applicants initially only file one claim (to reduce the cost of the search and analysis associated with the search) and add multitudes of dependent/independent claims after the first action? Would the PTO respond by limiting amendments and/or requiring searches after each amendment or new claims? Would applicants then be required to perform a search after any amendment? I can foresee some radical departures from the current process of prosecuting patent applications depending upon the particular rules that get promulgated.

    Given the vast cost and the unforeseen consequences of such a proposal compared to the minor problem this proposal purports to address, I believe this proposal is not just a bad idea, it is a terrible idea. Blatantly anticipated claims may be an irritant to some examiners; however, this irritant in no way justifies the solution being proposed in Congress.

  140. Re 35 USC 261 First Paragraph — “Subject to the provisions of this title, patents shall have the attributes of personal property.”

    I knew this would come up. Basic statutory construction lesson (see, e.g., eBay v. MercExchange briefs and opinions) – that definition applies only to the specific provision, which deals with conveyances of patent rights. It’s patently absurd to pull that provision out of context and apply it to the entirety of the patent statute. The eBay briefs do a good job of covering the back and forth on this issue, and clearly MercExchange lost.

    The economics of it are simple. Personal property has traditionally been seen as almost “pure” gain, although even then it’s regulated to hell to reduce negative externalities. Back in ye olde days, the government recognized that each patent came with a benefit, B, [rent extraction as an incentive] and a cost, C [rents paid by downstream users]. Increasing patent grants is wonderful as long as B > C, but it just isn’t the case that you can increase them forever – at some point, C > B because it becomes too costly to innovate in a crowded field. If you see a patent as personal property, you’re ignoring the costs, something that the Framers didn’t do, something that the Supreme Court hasn’t and isn’t doing, and something that even the CCPA didn’t do. The CAFC brought its own broken economic vision to the table, and this is what people have bought into without questioning it.

    This whole property metaphor is just a rhetorical shift – even the use of the term of “IP” is relatively new since the 1970s. “Monopoly” as an idea puts you in one frame (patents having costs and benefits); “property” as an idea puts you in another frame (patents as being pure benefit).

    It’s laughable how everyone here erects a straw man about the “big bad” corporation wanting to trample the small inventor – where’s the data for this? For every small inventor you know who has been trampled, I know a small business that has been extorted using a baseless patent suit. Is it a wash?

    The reform opponents just can’t offer up any good counterarguments aside from vague generalizations unsupported by evidence. Why shouldn’t venue be reformed when EDTX refuses to transfer cases out? Why shouldn’t there be apportionment? What’s wrong with PILOTING the ex parte review processes?

    The greater rulemaking authority for the PTO may be problematic, but I’d guess it will help once the new administration is in and they replace the current PTO brass.

    Who really stands to lose here? Biotech will be fine; small inventors don’t lose much except leverage they shouldn’t have had – venue in EDTX and the entire market value rule go beyond the rights the patent grant should afford; patent prosecutors have more work to do, but hey, you’ve all been living large the past decade. :)

    As for the search requirements, prosecutors have been jamming paper into a busted PTO for two decades now. Should we fix the PTO? Absolutely. But should prosecutors and their clients be more wary about trying to push bad patents through? Absolutely.

    No one wants to destroy the patent system, or any of this other sensationalist garbage a lot of the frequent commenters like to spew. The system isn’t working for everyone, and they’re making some small, and much needed, fixes. If you have other ideas, propose them.

    And re fee shifting – Really? Good luck finding a lawyer to take on your infringement case if you’re a small inventor. Contingency practice is tied to the availability of forums and counsel in the U.S., which is in turn tied to our lack of fee shifting. Fee shifting works in Europe because their litigation system is completely different as to availability of counsel – government and insurance are there to help plaintiffs where no help is available here except the lure of contingency fees.

  141. The fact of the matter is patent reform is a patch job for a real problem facing the entire culture . . . excessive litigation. We should adopt the English system where the loser pays. This will end the litigation issue. The problem with lawsuits is not just in patents. It is in torts, SEC, civil rights and the like. The entire Seventh Amendment issues needs to be addressed. We need to reduce litigation. All the patent reform seeks to due is to reduce patent litigation by reducing the number of patents to litigation. The REAL problem is litigation and litigators in general. F)(* if we just forget to omit a reference that we failed to notice might be relevant all H-E-L-L breaks loose. It is beginning to be apparrent that litigators lie as a matter of course. Just check out the recent ruling in California against partners of three major law firms.

  142. Dennis, I’m going to have to go with that the system is not working very well at giving inventors the rights to what they rightfully invented, therefore the burden has been met. I can’t say that I personally think they’re all the best changes that could be made, but, requiring the app to pre-search will at the very least stop most attorney’s from filing claims that are blatantly anticipated. And if they are anticipated, and I see it in the IDS, then I’ll be on to the next case all the faster.

    Sorry man, things just aren’t working out with the other sys.

  143. What Microsoft and the like are afraid of is the overnight changes that can be brought by users of the U.S. patent system. Microsoft knows better than anyone how innovators with fresh ideas can change markets overnight and give Big Blue the big blues.

    Messing with the system, vis a vis, “harmonization” is not a great idea, unless you want your exciting career as a patent attorney to become just another a stoopid job. As I have said, I don’t mind thoughtful change. But deconstruction by people who think they are the only ones on the planet who have ever had a good idea is not something that is good for anyone – even the people who think they will benefit.

    Forget the hobgoblins of predictability and “clear lines.” When important things are at stake, there are NEVER clear lines.

    For an excellent scholarly analysis of the hobgoblins of organizational “predictability” and “consistency” please see the following paper from Fuqua.

    link to faculty.fuqua.duke.edu

    Of course I don’t expect that people who should read this paper will read this paper, but, if not, it further explains their neurosis.

  144. Wow: 35 USC 261 First Paragraph — “Subject to the provisions of this title, patents shall have the attributes of personal property.”

    As to the Framers, they pretty much left it up to congress how to “secure for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” <– (enumerated power)

    Looks to me like Congress chose property.

    And, as to calling them a monopoly…. well its really more of a Supreme Courtism than anything else — just their way of describing the quirky bundle of rights that comes with patent ownership. Patents say right on their face that they provide “the patentee, his heirs or assigns, of the right to exclude others from making using, offering for sale, selling, … or importing the invention” 35 USC 154 (a)(1) [and notice the use of the property-type language again: heirs or assigns].

    Nowhere do the statues ever confer a positive right to actually practice the invention, just to stop others. The right to exclude others doesn’t set up a monopoly per se. A monopoly is a market with one and only one seller. But patents allow for a market with no sellers at all: a patentee, or his heirs or assigns, could be prohibited or choose not to sell their patented invention for a number of reasons (e.g. a broader underlying patent still in force owned by another, and no license; no FDA approval; or lack of market interest). And patents allow for multiple sellers, for instance, if the patent holder decides to license his patent to one or more sellers, there could be 2, or 3, or 4 sellers… i think thats called an oligopoly if they choose to sell. And lest we forget about co-inventors who do not choose to assign all of their respective interest to one entity, or have some other separate agreement… it sets up a Tenants in common type arrangement (each is entitle to 100% “use” of the claimed invention, i use “use” loosely because there’s still no positive right to make use and sell, just no need for accounting to other inventors for doing so). 35 USC 262.

  145. Dear Irritated Litigator

    “Narrow view” !?

    I doubt highly specialized and officially registered and certified professionals could have anything BUT a narrow view and rightly and properly so. I guess the idea of uninformed “generalists” mobbing a fundamentally sound system is, in your opinion, a far better solution. I doubt it.

    If deconstruction of a system that works soundly for fueling an entrepreneurial machine to achieve a socialist/oligarchial agenda is what you are advocating, then why not just say so. Why not just say that huge concentrated wealth interests like Microsoft and their ilk are tired of having to do the work of maintaining a pipeline of fresh ideas and would rather crush out all innovation. Why not just say that its easier to make a baseless call for reform, than to meet the burden of showing how and why a change should be made. Why not just say that you are promoting the agenda of your client rather than the continued health of the U.S. Patent System and the U.S. economy.

    Why? Because you have begun to believe your own hyperbole (to say it kindly).

  146. “Patents were called “monopolies” until the early 1980s”

    How can you have a monopoly when all you have is the right to exclude others? Throughout U.S. history, a patentee has never been given the right to make his invention by a patent grant. (And btw, the reference to “exclusive rights” is in the Constitution, though you are right that there hasn’t been a change in the law, or a Constitutional amendment granting monopolies to inventors.)

    For some American patent history, and some Comments regarding patents as property, see:

    link to patentlyo.com

  147. Dennis,

    Patents aren’t “property,” and none of the things you cite have anything to do with “property” rights, nor is the patent law a “property” regime [the Framers are rolling in their graves]. If you have problems with the clarity of the rights granted in the process of prosecuting and securing a patent, so be it, but you ought to be a little more precise with your language. Patents were called “monopolies” until the early 1980s – I wonder how they turned into “property” with no underlying change to the law?

    Also, it’s self-serving for Judge Michel to come out against patent reform. This area of law has needed much more legislative intervention, and not less – the CAFC has done little if nothing to clarify patent law or make the system work “better” one way or another, and they’ve probably made it worse. Given the mountains of legislative history on these bills, and the fairly clear language, I find the claim that it will take “years” to figure the statute out highly dubious. What may take years is the effort of some members of the CAFC to undermine the clear legislative and constitutional intent of the reform bills.

    Finally, I take issue with your claiming that the burden of proof should be on the reformers. The patent system is simply not working properly for many [most?] innovators in our economy, the narrow view of the commenters here aside. The provisions in the bill, particularly apportionment and venue, are generally well-circumscribed solutions to a problem that has been brewing for 10 years. As such, the burden of proof should be on those who want to retain a regulatory system that isn’t serving its constituents properly; and further, I question the motives of those opposing reform, since they almost uniformly appear to be (a) patent prosecutors, (b) serial NPE trolls, and (c) big biotech [who will probably not be affected very much, in spite of their hollering], the only constituents who have benefited from the system as it is now while everyone else has been cannibalized by baseless patent litigation.

    Signed,
    Irritated litigator

  148. Great photo, Dennis. You look very relaxed, intellectual and professorial. The other one you use looks too much like you’re getting ready for a job interview.

    Sorry, what was the topic?

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