Patently-O Bits and Bytes No. 2

  • Patent Reform: A draft report on S.1145 is available here.  [via PatentDocs]. Although currently supported by more Democrats than Republicans, this is a bipartisan bill that could pass. A summary:
    • Change the system to a “first-inventor-to-file” system;
    • Reduce patent damage awards;
    • Enhance post-grant opposition proceedings;
    • Provide for publication of all applications;
    • Allow for better third-party submissions;
    • Limit patent infringement venues;
    • Allow the PTO to set its own fees;
    • Remove the residency restriction for judges on the United States Court of Appeals for the
      Federal Circuit;
    • Authorize USPTO to require pre-filing patent searches and explanations;
    • Re-vamp the doctrine of inequitable conduct;
    • Clarify the rules on unintentional delays in filing;
    • Limit patent infringement liability for electronic check processing;and
    • End USPTO “fee diversion”.
  • Patent Reform: Remember, the House has already passed the companion bill. Passage could allow President Bush to ride out of office as the innovation president.
  • Patent Baristas discusses PTO’s “Suspicious Behavior” in the Tafas case.

141 thoughts on “Patently-O Bits and Bytes No. 2

  1. Perplexed from Europe looks in and wonders whether common sense drafting of the Background section of a specification for PTO filing is incompatible with your corporate client’s interests, in USA. Suppose your client watches the published art and reveals to his drafter what’s closest. Drafter writes an app that tells a persuasive story, how the claimed subject matter is patentably distinguished over that art. Issue duly follows (in a rational system). What could go wrong? Well, Exr might come up with a novelty killer but, in all probability that will be something that published AFTER the first prio date that the claim enjoys. So, under ROW patent law, no problem. Amend (if necessary)to re-establish novelty. Obviousness ain’t a problem because post-published stuff (even issuance of US patents) is NOT part of the “state of the art” for deciding what would have been “obvious” to a skilled person on the filing date of the claim. Obvious really, isn’t it, that on the filing date of a claim a US patent yet to publish can’t make that claim obvious? Novelty is the statutory provision you need, to sort it out between a plurality of inventors, all of who filed on non-obvious matter, but only one of them can get a patent, namely the first of them to file. The later filers can’t progress till they present claims that are novel over what No. 1 filer filed.

    As another wrote, in another thread, if it is to be any good, reform has to start with the fundamentals. That’s what Europe did in 1978, when it put together the EPC from the wholy contradictory and incompatible former German civil law and English common law patent systems. ROW has since taken over the EPC. So, US readers, how about reforming the fundamentals? Tinkering with the details seems only to upset folks, without getting to the root causes of the present disfunction.

  2. When I write even a two-paragraph Background section, it necessarily requires some discussion of the widget, its current uses, a desirable new use/property, and the shortcomings of conventional widgets vis-a-vis the desired new use/property. I had always thought that this Background section served as the disclosure of the general prior art — that is, the stuff “so god awful simple that nobody in their right mind would bother to write it down.”

    Were I to regurgitate every last god-awful-simple fact regarding widgets, I’d be accused of trying to bury a reference under all that the-earth-is-round disclosure. (Either by the USPTO or, more likely, in litigation.) Moreover, the USPTO’s proposed IDS rules makes clear the USPTO does not want a disclosure of all the basic prior art knowledge in both my inventor’s head and my own.

    VA, I have two dogs and two cats. Double crazy.

  3. Aight well I’m done and ready to drink and womanize the night away, but I figured check up on you guys to make sure you don’t go mistaking the spirit of my comments yet once again. Lo and behold, look what happened.

    VA- you know you and me are on the opposite side of just about every controversy link to en.wikipedia.org . I’m willing to go out on a limb and say that you’re a dog person.

    Yes, the supremes did specifically address that and it is quite a problem in very many, especially complex arts where every reference describes one small piece of the overall puzzle, and combining hundreds of them is commonplace in actual practice and it is beyond obvious to everyone involved that x type of piece fits in the puzzle in y slot which is on z area in every situation interchangably with different benefits each time. However, making a strict linkage of the three can sometimes be very difficult based on the limited disclosures because they endeavor to keep them brief in order to not burden the skilled artisan with every well known detail and concept. Many times the benefits of each piece are buried in time or there is no benefit other than just plain making something “different” (but not non-obvious). Irregardless (without lack of regard, i.e. totally changing the subject and not showing the regardlessness that would otherwise be shown by continuing that subject without regard to that point) of this, I should have stated instead of just “nobody bothered to write it down”, that nobody can recall where it is it was done so long ago, it was taught verbally to them, or it is just a variant using standard design principles not varying in function from the original but only in strict depicted “form” or etc. etc. Sure, you say “use official notice”, well yes, but it just looks bad to Off. notice the ind.

  4. “Actually it’s the first and best argument against the old strict TSM test. The Supremes bought it. So should you. It’s the law.”

    That’s about as creative an interpretation of KSR as I’ve seen.

    Maybe Malcolm is really John Doll.

  5. “Ah, the old “it’s so obvious nobody ever bothered to write it down” defense. Talk about the last refuge of scoundrels.”

    Actually it’s the first and best argument against the old strict TSM test. The Supremes bought it. So should you. It’s the law.

  6. “…because it’s so god awful simple that nobody in their right mind would bother to write it down…”

    Ah, the old “it’s so obvious nobody ever bothered to write it down” defense. Talk about the last refuge of scoundrels.

    And you do realize that “irregardless” is not a word, right?

  7. “If my inventor and all his buddies know something, experience tells me that the Examiner also knows it” Yes, but do any of them know where it is written down? Many times, no, because it’s so god awful simple that nobody in their right mind would bother to write it down for fear of winning the similar award to what JD will get later tonight because they’d be blabbing on as Cptn obvious. Oh and fyi, if edison didn’t have massive 2ndary considerations (so many trials) the evidence I’ve seen thus far on the issue does indicate that in today’s patent world he wouldn’t get a patent. However, you have to take into consideration the massive difference in difficulty in obtaining information about things back then, you’re doing all your own experiments, often the first of their kind by a long shot. Today you just look down a table of peformed actions, pick one, and fit it in your device.

    Oh, and finally, sorry to leave you out VA, yeah, I’ve found 102b’s in 30 secs. Literally, I put in 3 words in google and it was the first one on the list. I could have hit “I’m feeling lucky” and found it. However, the vast majority of the time, attorney’s will at least pick on something that’s well known, that I know is well known, but is over here in x niche hidden by 3 trade names/ways of description. Irregardless, I know it’s there, so even though it takes me a day (more or less) I find it. Sure, there are easy apps, I have one right now that tried to claim literally (unwittingly though) the very basis for my entire art through until RCE. You can say I’m claiming all this stuff all over the map, but that’s just the point, it is all over the map, when it needs to be at the least well confined to his niche, and I need a frank discussion/citation of what he was basing his work upon to make the most basic of 103 judgement to even begin to produce a quality patent. This would in the vast majority of cases of mine also preempt any need for a complete search in the art for the most relevant art and save the app, as well as the office time and money (and most importantly, dent the backlog, unless you like the backlog?). Don’t expect me to believe someone just out of the blue developed a state of the art robot, dram, or drug, he damn well knew that most of what is in it came from somewhere and he combined it together. Then we get into, ok, was there a teaching, suggestion, motivation etc.

  8. Fenster, one last thing from me this evening before I head out after my last bunch of stuff to do.

    “Even one inadvertent word choice can kill a broad claim”

    So. Be. It. Stop over-claiming into what you already knew, state what you already knew, and just take a piece of pie instead of the whole pie.

    Also, your assumption does not hold true one little bit in complex arts, examiners aren’t up on every niche of their tech, there are literally hundreds of niches in my tech all “advancing” faster than I could hope to keep up, not to mention I jumped in the game 40+ years after the art started, and to tell the truth I’m still playing a LOT of catch up as I’m sure I’ll be doing for the rest of my life if I stay in this field. Airplane man /= air brake man. Semiconductor man /= dram man. Toy maker MIGHT = gi joe man.

    “If my inventor and all his buddies know something, experience tells me that the Examiner also knows it” Yes, but do any of them know where it is written down? Many times, no, because it’s so god awful simple that nobody in their right mind would bother to write it down for fear of winning the similar award to what JD will get later tonight because they’d be blabbing on as Cptn obvious. Oh and fyi, if edison didn’t have massive 2ndary considerations (so many trials) the evidence I’ve seen thus far on the issue does indicate that in today’s patent world he wouldn’t get a patent. However, you have to take into consideration the massive difference in difficulty in obtaining information about things back then, you’re doing all your own experiments, often the first of their kind by a long shot. Today you just look down a table of peformed actions, pick one, and fit it in your device.

  9. Cast, hah reported for being a good lawyer, I do not doubt it. Good for you though man, that’s one bad client down, and many to go, fight the good fight!

  10. “I know of no attorney that would risk their career for an unethical client.”

    I don’t know of any attorney whose career was ruined for a Rule 56 violation. One would imagine that such ruination would quickly become the talk of the town. Has there ever been such an attorney? Mind you — I’m expecting that any such attorney cited as an examplea actually had a credible “career” to begin with.

    Let’s hear about these humiliated attorneys.

    I am certainly aware of patent attorneys getting caught stealing others inventions and filing on them (on their own behalf or on others’ behalf). Were the careers those attorneys “ruined”?

    Of course, stealing someone else’s invention is nothing compared to the omission of an arguably material reference.

    [clutches pearls]

    I shudder thinking about such horrible creatures walking the same earth with the rest of us upstanding folks.

  11. Thanks, VA, my bad. I guess I’ve still got the taste of metal in my mouth. And yes, most people who point fingers do so not because they’re better – they do so because they can. But in the end, it comes around to them too, I’m certain of it.

  12. real anonymous,

    you’re forgetting that malcolm has the distinct and rare honor of being the only attorney who’s ever represented an applicant that actually invented something, and is the only attorney who’s never broken any rule.

    the rest of us have to make do representing would-be inventors and breaking every rule in the book to get their crap patented. when you know that your client’s invention is not really patentable, you gotta break a few rules.

  13. And JD can mock all he likes, times are a changin’ and he knows it as well as I do. Though I doubt seriously that he “understands” the rule any better than I, all he “understands” is how hard it is to pin him having known something beforehand on him. Man, grats to you JD, you’re a real winner. I’ll fish out the link to the appropriate award for you when I’m home.

  14. The thing is, I’m actually rather reasonable about what I’d like to see in real life submissions. But that’s another thread, and that does not change what the rule actually says, nor what you are required to do to abide by it. It is a rather large hurdle to pass, which is exactly why I shouldn’t have a docket full of crap right now, because if that hurdle was actually jumped across then half of my apps wouldn’t even be filed. It’s just like the litigator in the thread way above here said, it boils down to atrny’s accepting cases that are of dubious, or have no, quality at all and then prosecuting and litigating them as if they were better than they are by not jumping the hurdles and instead running around them.

  15. “Lionel, how many moons does your planet have?”

    Malcolm, I know of no attorney that would risk their career for an unethical client. All that a client loses in a Rule 56 violation is a patent (usually), while the attorney (often, in such cases) loses or is threatened with losing his entire livelihood.

    ["Logic? What are they teaching at schools these days?"]

  16. I told a client that we had to make a piece of prior art of record, and he reported me to the Bar (which after exchange of paperwork) dismissed my (now former) client’s charges.

  17. “Now some of the clients you have to watch out for, but the attorneys are not going to commit a rule 56 violation for a client.”

    Lionel, how many moons does your planet have?

  18. I love 6k’s posts. They’re hilarious.

    “And a lot of us understand the laws & rules a bit better that he(she?) does”

    I would hope so. But is “a bit better” than no understanding really sufficient?
    :-)

  19. Please keep in mind that not everyone that works at the PTO is as extreme as examiner#6k. Nor is he(she?) representative of the people there. Most of us are a lot more reasonable and realistic with respect to the situations. And a lot of us understand the laws & rules a bit better that he(she?) does, as well (contrary to what johndarling likes to say ;) )

    MVS

  20. “However, we know from the above that the PRIOR ART is not restricted to the REFERENCES… It is very much so inclusive of the knowledge that you AND your client posses in your brains…”

    Prior art is limited to the subsections of 35 USC 102. The duty to disclose is not limited to prior art. “Prior art” does NOT include the “knowledge that you AND your client posses in your brains”, but such knowledge may be indicative of of other prior art which is covered by the duty to disclose.

    It seems to me, Examiner6K, that you are attempting to make Rule 56 an insurmountable hurdle, when no other (major) Patent Office in the world has anything like a Rule 56 duty to disclose.

    It also seems to me that you’re trying to place an insurmountable burden on patent attorneys (which, by the way, contradicts the very wording of Rule 56, as well a what’s left of case law post-McKesson), which would result in no patent attorney filing an application for fear of inequitable conduct. (Though it’s perhaps possible that that would solve the backlog, even with no changes in USPTO management.)

  21. “It is very much so inclusive of the knowledge that you AND your client posses in your brains.”

    So you want us to submit our brains in an IDS? But according to you, we don’t have any.

    Again, which is it?

    I think I was wrong about you. You’re not Ms. Peterlin’s boy toy. You’re Harry Moatz.

    Mr. Moatz, welcome to the real world.

    [/removes hook from mouth]

  22. Patent attorneys … are not going to commit a rule 56 violation for a client.

    Oh, but they do, they just do not fail to submit REFERENCES they know specifically about. However, we know from the above that the PRIOR ART is not restricted to the REFERENCES that you specifically know of. It is very much so inclusive of the knowledge that you AND your client posses in your brains. And any and all of that which is material to the case MUST, to comply with the rule above, be either a. have a reference that teaches it found and cited, or b. discussed. Take your pic, but when an app comes in without either of those two on basic things in the art which are very material to the case, it is in violation, not only violation, but CLEAR violation.

    Do not pretend that Prior Art is only the physical references you have been shown in the course of that particular case as it most certainly is not.

  23. “You all need to get the hooks out of your mouths.”

    Yup, Examiner Y, I trust in your wisdom you’ve judged us all correctly – we’re all wicked.

    “By your standard of measure it shall be measured to you; and more shall be given you besides.”

    But not from me.

    Sincerely,

    David Testardi

    [Slowly, I have been developing the the attitude Mr. Franklin had.]

  24. examiner#6k

    Patent attorneys always disclose reference they are aware of in IDS’s. The less experienced onces discuss them in the application.

    Now some of the clients you have to watch out for, but the attorneys are not going to commit a rule 56 violation for a client.

  25. examiner#6k

    I see – your problem is not understanding the law, it’s understanding basic English.

    As I previously stated, I always cite every reference of which I am aware – IN AN IDS.

    Now, please show me where the laws, rules, or MPEP states I must discuss the references as you previously asserted.

  26. “So which is it?”

    VA, what ill-motives do you have in asking for more specificity on this issue?

    You see, the answer(s) to your seemingly innocuous question are much more complex than you know, and they embrace policy issues that you could never understand. In fact, because you are a lawyer, we have purposefully made the answer and/or answers to those questions and others as well (like harmonization, the value of our Examiners whose pay increases we block, etc.) a moving target, so as to protect the public from you and others like you. Do you see, you cannot win against us – we are smarter than you (yes, we know that is difficult for you to swallow). We serve the non-patenting public and we also serve those inventors who know what they’ve invented (and most of those aren’t deceitful enough to file patent applications on the product of old ideas anyway, as patent lawyers would often counsel them to do), and those others who we think will play fairly with large corporations (that rules out NTP and the like).

  27. 6k,

    You’ll have to excuse us hack practitioners, we’re not all knowing like you, but you gotta admit your posts are all over the map and completely contradictory.

    You’ve posted that you “know” the claims are not patentable before you’ve even searched the case. Heck, you’ve claimed you “know” the claims are not patentable before you’ve even finished reading the spec.

    You claim to have found “knock-out” prior art in 30 seconds. Then you claim you spend all afternoon and can’t find anything. You then conclude that’s because applicant/practitioner is witholding the “knock out” art, and if they’re not witholding it and actually disclosed it, you claim that’s not enough because we don’t “discuss” it.

    So which is it? Do you need our help or not?

    Please do keep posting. And start your own blog when you get to that Ivy league law school. Your transformation from all knowing examiner to woefully uninformed and shady lawyer would be fascinating reading.

    Thanks,

    VA

  28. E6k says: “They put one tiny thing in the ind. to make it “nonobvious” when that thing is known in the art and has MANY motivations to be used like the app used it, but the app has one particular motivation in mind, so he chooses to disregard his entire training in his field and say “THIS IS NOT OBVIOUS! I WANT A PATENT!”.”

    If an attorney arguing a device claim argues against the 103 rejection based on intended use and not structure … that’s not deceitful layering, it’s just bad lawyering (IMO). More than one associate has fallen into that pit. (Or perhaps the argument is use as it applies to requirements of the device’s structure, thus highlighting the patentable structural aspect?)

    One last thing I’d say: I believe that most, but perhaps not all, attorneys do NOT want to be issued a patent with a validity weakness ripe to be attacked. While there’s certainly a motivation to get the “win” for the client, as soon as what was swept under the rug is discovered, everything is coming right back at that attorney. Hopefully just a disgruntled client and not one seeking reimbursement for a lost license revenue source or litigation expenses.

    For me as in-house, my competitors are going to do their homework on our patents, including prior art searches. If they find art that they believe would invalidate our patent, they will not respect the patent and will proceed to infringe it. If they can couple art with statements I was forced to make about references I already put in front of the Examiner, then they become that much likelier to infringe. Neither my company nor I want that, and I have no reason to think my industry is any different from others.

  29. My assumption was that my claim language, my Field of the Invention, and my suggestion of a class/subclass/tech center would together guide my specific invention to an examiner most suited to examine it.

    If my inventor and all his buddies know something, experience tells me that the Examiner also knows it. I expect you wouldn’t deny Edison all of his patents because of what knowledge he had and connection he made in his head? The key is where you draw the line — and that’s always going to be viewed differently by an Applicant v. an Examiner. Shouting “don’t file obvious claims!” accomplishes nothing when applicants already think their claims are non-obvious.

    There is another world that the patent must live in for 15-18 years once it leaves the PTO. Trust me when I say that overwhelmingly, patent attorneys do not want their patents appearing in court. Not because they know the patents are poor. Because ANY patent, applicant, and patent attorney can be made to look unethical/dishonest to some degree in litigation. Because it costs a fortune. Because the attorney will be tied up as a deponent. Because if any one smear used by the defendant wins the day, the patent attorney faces a malpractice claim. (And when you’ve seen judges interpret a term *against* its commonly-held meaning, you begin to fear the caprice of the court/jury when your livelihood hangs in the balance.)

    That’s why patent attorneys want to make as few statements/admissions/explanations about the prior art as possible. Even one inadvertent word choice can kill a broad claim, cost tens or hundreds of thousands of dollars in legal fees, and/or let a real infringer off the hook.

    FWIW, my problem with the required search is partly my fear of anything I write (not “say” or “mean”, but “write”) being used against me; partly the cost and delay; and partly the *lack* of a PTO-defined standard for “sufficient”.

  30. Look Fenster, this is the apps I get, I swear to you, 90%.

    Claim 1. Well known stuff with x tacked on the end or worked into the middle.

    Claim 2. More well known stuff.

    They put one tiny thing in the ind. to make it “nonobvious” when that thing is known in the art and has MANY motivations to be used like the app used it, but the app has one particular motivation in mind, so he chooses to disregard his entire training in his field and say “THIS IS NOT OBVIOUS! I WANT A PATENT!”.

    I then search, and find the well known stuff 90% of the search time. I then find the small less well known, but still very known piece 5-9% of the time spent, and say one of the 10 motiations 1-5% of the time spent.

    If I spend 90% of my time finding the obvious crap, how “focused” of a search am I giving to his supposed “non-obvious” addition? Answer is very little. App loses because he gets a crappy patent if I allowed it.

  31. Fenster- Unfortunately not. If the examiner does not know what your app knows was known IN THE ART at the time of invention, that has NO, I repeat NO, bearing on whether or not you or know of a teaching suggestion and/or motivation for a 103, or something that makes a ref inherently anticipating, somewhere in your your own recollections. It is not as you say “the inventive spark” if he knows all his buddies know about it because he read it in a mag. etc. It’s a spark only if his buddies DO NOT KNOW about it. Remember, it’s your niche, not his, the examiner is probably not a POSHITA in your niche. The thing about this is, you’re wanting to pretent that just because the examiner is in airplanes group then he’s a POSHITA of maintaining air breakes? Not necessarily, the whole point of this rule is for the inventors to tell us about their niche so we can make a proper judgement and save them (and the public) court fees (and bullying) when it’s found out that a POSHITA in air breaks knows right away widgets have whatsits and did ever since widgets were first made. But nobody wants to abide by the rule, they want to find ways around it so they can get a crappy patent, and be able to litigate it with “less” trouble and there’s no excuse for it. If you’re honest the first time around, and get a decent judge, then you’re good to go anyway. The odd case will be a big train wreck that will screw litigators $ so they tell people in prosecution BATTON DOWN THE MOTHER FIN HATCHES! instead of just riding out what their case is, a shitty case, sucks to be them, not for the rest of the population which is still needing quality patents fast. Which is worse for the country, people don’t comply with the rule, the backlog goes through the roof and bad patents abound, and 0 people have to pay 1mil apiece to appeal (but many more have to pay $$$$ for false patent lawsuits) OR people do comply, the backlog goes through the floor, bad patents are lessened significantly, and 2 people have to pay 1 mil apeice for a patent claim that’s worth 50mil+ (and very few have to pay $$$$ for false patent lawsuits)?

  32. examiner#6k, I’m not sure I understand what you mean by “predictable.”

    You obviously like the part of the reform bill that would require us to perform searches and provide you with explanations. Maybe you will get what you are asking for. Good luck to you. The PTO will probably make your job easier. NOT :)

  33. Perhaps we should agree on the hypothetical application as NOT being one containing nothing more than flagrantly obvious claims (based on two references) that the applicant/attorney KNOWS to be obvious from the outset. Very, very few applications are deliberately filed with such claims.

    It’s likely that there’s something about widget+x that the inventor thought was new and non-obvious, hence its appearance as the independent claim.

  34. Johnny- when it’s predictable that they’re going to find x in the art with a motivation, or more likely your app already knows it’s there, then answer me, does it really take a genius to figure out what information will be relevant? Considering I (and certainly any primary) can predict it in every case in 90% of the cases I pick up I doubt it.

  35. E6k: “you find way too many people eager to take a claim indicated by the office as allowable when they know that their knowledge put together with the references on hand render it obvious (and they never disclose that knowledge).”

    If the Examiner has viewed the same references and deemed the invention novel and non-obvious over them, that conclusion necessarily involves putting the references in front of his PHOSITA. What resides in my inventor’s head and not the PHOSITA’s head is the creative, inventive spark … which is exactly why the application should be allowed.

  36. E6k, I’m interested in a discussion. I’m not lecturing you or instructing you to drop the sarcasm, but instead asking that you tone it down and contribute your point of view, which is fairly unique on this site. To your post:

    Eight hours’ increased work per application (and that ignores your “and then spend maybe a few days on the USPTO site etc.”) translates into at least a month’s new work for me. That slows my throughput, which is very bad in a F2F system when there are at least a half-dozen competitors working to develop more or less the same new product/technology. For companies that outsource, the extra eight hours is about $2000 added to the filing tab. The total increase in costs due to searching affects the company’s IP legal budget: for mechanical inventions, that’s about a 25% jump in application preparation fees. The result will certainly be fewer applications filed, but not necessarily better applications filed.

    And using Google? Setting aside whether the PTO would consider a Google search to be “sufficient”, a potential licensee doing its due diligence will run away from a patent having a Google-based IDS. A potential defendant kicking over every stone, looking to find some mud to sling, is going to be thrilled with my use of Google — it would be like my citing Wikipedia for a legal point instead of caselaw.

    I had one case where the inventor filed, then pitched the idea to a company who declined. Turned out they then started ripping him off. We had a search done to make the application special. The Examiner found art more relevant than the professional, that’s-all-they-do search firm had found. Didn’t put us dead in the water, but I’d have different claims had I known about it in advance.

    The point is that my inventors know the art pretty well, they rarely reinvent the wheel, and (as has been said) no searcher is perfect. I trust Examiners to do good searches and find solid, relevant art. When it turns out the art (which my inventors didn’t know of) utterly torpedoes our claims, we abandon the application. If it partially torpedoes, we amend around it (and if the resulting allowable claims aren’t worthwhile to us, we abandon anyway). I can’t understand what about that process is so offensive to you.

  37. More importantly for my point however is “(2) The closest information over which individuals associated with the filing or
    prosecution of a patent application believe any pending claim patentably
    defines, to make sure that any material information contained therein is
    disclosed to the Office.”

    Can you read that? It says, the office recommends to you, that a method of finding this information (that you are required to submit no matter what method you use to find/know it) that is needed is to review what you know to be close to the object. Once you know what information is close to the object, you must disclose, in entirety, the information relevant to if a claim would be anticipated, or in combination with another piece of information establishes a prima facie case.

    Now, when you KNOW that x is well known in the general catagory that your widget is in, and you had a reason (that you didn’t come up with, or you stole from the overall teachings of your art) to apply x to your widget please take one huge guess as to what that means! It’s PRIMA FACIE OBVIOUS so cite/discuss it already.

  38. “when they know that their knowledge put together with the references on hand render it obvious (and they never disclose that knowledge).”

    examiner#6k, are you sure you are not the Amazing Kreskin? Can you tell fortunes too, LOL.

  39. Yeah you’re right, you misunderstand, a full brain dump of everything you know isn’t required obviously. What is required are things that and I quote “(1) It establishes, by itself or in combination with other information, a prima
    facie case of unpatentability of a claim”

    That’s the real important one “in combination with other information”. Now if you write a claim tree that says 1. a widget with x part 2. claim 1 wherein the widget has a whatsit on the side, where you know a widget with a whatsit on the side has already been made in the art then we can surmise that “in combination with other information” means that if the examiner comes back with a reference that shows a widget with x part then you know off the top of your head that claim 2 is obvious and that you need to say it, or in the alternative, you should have already told the office that widgets with whatsits on the side are already known, and that this information in conjunction with any information pertaining to widgets with x would render claim 2 obvious.

    The most important problem here is, that even excluding the second situation I just put forward (which is still valid, although a more rigid interpretation than would even be needed if the first were properly followed), you find way too many people eager to take a claim indicated by the office as allowable when they know that their knowledge put together with the references on hand render it obvious (and they never disclose that knowledge).

  40. Oh yes, so tremendously hard to spend 8 hours on google, and then spend maybe a few days on the USPTO site etc. I think that if I only get paid like 600 per app or less, then you can somehow manage to squeeze that little bit of time into your busy schedule in order to obtain a legally enforcable monopoly. You can get a shoddy one done for 250-500 np. Heck, my mom would do you one for 250. If you’re that bad at doing it maybe she’ll do better. Maybe my grandma? My dad on the other hand is just as lazy as you about his idea he wants to submit. Funny that.

    Push in some words, push “enter”, push in some numbers, push “enter”. Read results. OMG OMG OMG the burden! It’s killing me! Idk, but it’s a good thing you guys don’t have to chop wood for a living.

    And you know what? If you did just a word search voluntarily 3 years ago, we wouldn’t be to this point where they’ll probably establish a standard for your search not sucking.

  41. E6k writes: “Oh, and in the event you want to argue “but that just says I have to disclose it”. Yeah, well how exactly are you going to discuse the mounds of art that you know in your head, or the app knows in his head without discussing it? (When you haven’t already cited some art that shows it).”

    I apologize, as I think I misunderstood you. Are you saying that, in your view, Rule 56/98 applies to every last scrap of art-related knowledge in my inventor’s head? And that anything less than a full brain dump fails to satisfy the rule(s)?

  42. “[copy-and-paste of 1.56(a) and (b) snipped]”

    But where is the requirement that Applicant *discuss* the prior art, rather than disclose it?

    The language of Rule 56(a) states: “The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by Sec. Sec. 1.97(b)-(d) and 1.98.” Look at Rule 98 — the only obligation to *discuss* a reference is in (a)(3)(i), which applies only to references not in English.

    An IDS with only English-language references places no obligation on the Applicant to discuss the content of those references.

  43. Oh, and in the event you want to argue “but that just says I have to disclose it”. Yeah, well how exactly are you going to discuse the mounds of art that you know in your head, or the app knows in his head without discussing it? (When you haven’t already cited some art that shows it).

  44. Insinuating I’m incompetent when you know of this rule is for lulz you crook. Stealing from the american people’s the same as stealing from any american. Not that you didn’t do that as well, but I don’t know if you have or not. Tomorrow when you write a new app, remember to wash your hands before you eat, because they’re certainly not clean.

  45. Oh, and in the event you can’t figure it out, even if I failed to find a 102, or 103, with some ref’s or the knowledge you posses or otherwise divined from god, and you realize it, even for a minute, it is YOUR duty to disclose that information as having been material to the case, and to have made such a submission on the record. You, and the rest of your ilk, CHOOSE on a daily basis to disregard the part about “any information” in this rule and ESPECIALLY the spirit of this rule in order to obtain what you think you feel you want.

    You can deny it all you like, but I can cite case after case after case after case, literally, which I will do shortly if you’re that interested that speak loads of evidence towards my position and take your position over.

  46. Apparently worth more than you, Rule 1.56, start discussin or G your patent app TFO.

    See especially paragraph a, section 2, or b, section 2, in the event you have trouble finding it.

    Here I’ll copy paste:

    A patent by its very nature is affected with a public interest. The public interest is
    best served, and the most effective patent examination occurs when, at the time an
    application is being examined, the Office is aware of and evaluates the teachings of
    all information material to patentability. Each individual associated with the filing
    and prosecution of a patent application has a duty of candor and good faith in
    dealing with the Office, which includes a duty to disclose to the Office all
    information known to that individual to be material to patentability as defined in
    this section. The duty to disclose information exists with respect to each pending
    claim until the claim is cancelled or withdrawn from consideration, or the
    application becomes abandoned. Information material to the patentability of a
    claim that is cancelled or withdrawn from consideration need not be submitted if
    the information is not material to the patentability of any claim remaining under
    consideration in the application. There is no duty to submit information which is
    not material to the patentability of any existing claim. The duty to disclose all
    information known to be material to patentability is deemed to be satisfied if all
    information known to be material to patentability of any claim issued in a patent
    was cited by the Office or submitted to the Office in the manner prescribed by §
    § 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in
    connection with which fraud on the Office was practiced or attempted or the duty
    of disclosure was violated through bad faith or intentional misconduct. The Office
    encourages applicants to carefully examine:
    (1) Prior art cited in search reports of a foreign patent office in a counterpart
    application, and
    (2) The closest information over which individuals associated with the filing or
    prosecution of a patent application believe any pending claim patentably
    defines, to make sure that any material information contained therein is
    disclosed to the Office.
    (b) Under this section, information is material to patentability when it is not
    cumulative to information already of record or being made of record in the
    application, and
    (1) It establishes, by itself or in combination with other information, a prima
    facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the applicant takes in:
    (i) Opposing an argument of unpatentability relied on by the Office, or
    (ii) Asserting an argument of patentability.

  47. Back to the topic: as sole in-house counsel for a small chemical company, the requirement for a search and summary is a tremendous burden. Couple that with a file-to-file system and our larger competitors gain quite an advantage over us.

  48. examiner #6k wrote “”whereas I am not required to discuss the prior art.” Section what was it again? All modesty aside, that statement alone makes you a bold faced liar. Or that you’re inept, however, based on your expert testimony of your intelligence I’d say we can rule that out.”

    Please point to the usc, cfr, or MPEP section you believe supports your position. Wow. I thought you might at least be a competent examiner.

  49. Get better paying jobs that take less hours that we care about less :(. I.e. work at your firm as someone you’ll never know was E6k and tirelessly assaulted your against the spirit of the system practices.

    “whereas I am not required to discuss the prior art.” Section what was it again? All modesty aside, that statement alone makes you a bold faced liar. Or that you’re inept, however, based on your expert testimony of your intelligence I’d say we can rule that out.

    And again, unlike you, at present I’m not completely (though I am largely) ignorant of the legal system and the fees that go along with it etc. This still does not absolve you, nor your clients, of your duties before the office.

    Again, all it appears is that you don’t want to do your job properly (while disregarding your ethical responsibilities as an atrny) and only get the patents that SHOULD be issued and successfully litigated, instead of the ones that you can force through by trickery and non-compliance. I have no doubt lawyers do their jobs very well, but just like I did a very good job getting out of the traffic ticket yesterday (omg big $, over 100!) by calling out that I was charged under the wrong statute is against the spirit of the system. And frankly, I did it yesterday just to see how it felt to do what I see you guys do every day. And yes, it feels really good.

  50. Lionel,

    In 6k’s defense, his complete ignorance of our legal system makes him the perfect examiner in the John Doll “Quality = Reject, Reject, Reject” world.

    If 6k understood the law and could appreciate what a travesty Mr. Doll’s reign of terror has been, he’d run screaming from the building. As would all of the examiners.

    As terrible as the current examination quality is, it’s better than being unemployed (them and us).

    Of course, if all of us (patent attorneys) got thrown out of work (which may happen), at least we can switch over to ambulance chasing.

    What are the examiners going to do?

  51. examiner#6k,

    I would also surmise you are neither as educated or as intelligent as I am, all modesty aside and I do my job very well. However, I am aware of the legal system as it exist in this country today. Your ignorance of the legal system is quite apparent. If you were more familiar with it, you would know that attorneys who did their jobs well have often had their words twisted in litigation, so that even cases where they eventually won had to be pursued to the CAFC. Can you say $1M in legal fees?

  52. examiner#6k,

    I hate to be the one to tell you how to do your job, but you are required to give reasons for rejecting each of the dependent claims, whereas I am not required to discuss the prior art. It appears I try to obtain solid patents for my clients and you appear to want to avoid doing your job.

  53. Also idk john it seems like I have a decent relationship with my attorney’s that I work with, so far at least. Anyway I gtg, lunch is over.

  54. Johng- no, I actually enjoy the search quite often, especially once I get it started. The thing that I do NOT enjoy doing, is wasting time on every little thing the atrny thought it would be cute to throw in a dependent and not just state outright that they’re just tacking on old features or concepts. The only hard thing about my job = time, and that’s it, and that’s exactly what tacking on old features from every corner of the art takes from me where it should not, because once I’ve already found what the “invention” is, then there is no need to say, “well yes, it’s obvious to combine this “invention” you thought you made with all the rest of the inventions out there that me and you have both seen” and show them each invention out there.

    I will tell you up front that if all claims where actual subject matter which the app feels like FURTHER distinguishes himself from the prior art then even that would probably stop the need to have them do a prefile search. There would be like 4 claims in the longest of claim lists that I recieve. But they won’t even contain themselves to that! Need evidence? I can pull just about any patent issued in the last year and I can show you exactly what I mean.

  55. Hutz- As I think I stated above, I am well aware you could make a mistake, or more likely, you’ll tell of some things that can be easily combined. The later is not your fault if used against you. It is the nature of things that are but combinations of the old not being inventions.

    In the end, what you’re telling me is, qq I can’t do my job right and might make a mistake so I won’t even try. Tit for tat, if I get your apps you get no dep’s addressed, ever. Also, the search, meh, what’s typing in a few numbers and loosely flipping through one sub? That’ll make for a great patent.

    I was going to say more, but the bills in congress speak for themselves. The cavalry is late as always, but at least it looks like it’ll be here soon.

  56. J- I was wondering where he’s been for me to be able to rise so quickly. In all honesty the, the type of people I represent would make you go out of your mind in annoyance. Just today I pulled a fast one on an Alexandria Circuit Judge on a traffic ticket. Woot, no fine and no points for me! She was good natured about it though. Brought a little liveliness to her boring morning.

    VA- Actually, I was wanting to take her out, but she’s a bit older than me, like 35+ when you see her in person. And then I came to find out she just got engaged. How bad can a guys luck get? But if she’s in the market for a boy toy to replace her personal assistant gal I just became avail yesterday so post quick!

  57. “The constitutional provision calls for the progress of the useful arts, and “useful arts” is a broad term that embraces virtually every facet of our our daily lives.”

    I find it noteworthy that you chose not to put “progress” in quotes because that is where the bugbear lies.

    By the way, the PTO routinely issues patents on useless subject matter, i.e., stuff that simply doesn’t work as claimed. The reason is that the PTO is not equipped to test every dubious method or concoction that is submitted to them. And by “not equipped” I mean “not even remotely close to being equipped” under the most generous interpretation of that phrase. They don’t even try anymore.

    But meaningful “progress”? The PTO should be able to handle that.

  58. examiner#6k,

    Go to law school and read some more cases – many more cases and come back when you know what you are talking about.

    I discuss the current invention and I include a minimal background that amounts to little more than a problem(s) statement (for overseas purposes). Any accidental misstatement regarding the content or the scope of the prior art could be a big problem in later litigation. I avoid discussing wherever possible. I assume the examiners who prosecute my cases review the patents that I cite on an IDS.

    BTW, another reason I do not like to characterize is I, like almost all or all practitioners, have read almost none of them cover to cover. The abstract, summary, claims, and parts of the detailed description, but almost never all the written description.

  59. To all those who consider me annoying, I apologize.

    The high management of the PTO is driving a wedge between us and the examiners, which has poisoned our professional relationship. It is sad and frustrating to be witness to this. I feel powerless about the eventual outcome, and it will not be good. Sometimes, my blood begins to boil and gets the best of me. I promise, no more from me.

    Bye bye,

    John

    PS: I’m no coward. People at the PTO know who I am (maybe not 6k :) ).

  60. Oh yeah WOW? So we’re hiding things from the examiners because we don’t want discuss the prior art and want to claim it as a fall-back. I find that accusation an extremely annoying.

    To me, it appears he’s upset because he does not like to search. I don’t blame him for those feelings. I hated searching too. It is a pain in the arse searching all the dependent claims. However, that is his job!

  61. Veteran Attorney,

    You raise in an amusing manner an important issue, namely, not every invention is “sexy”, “high tech”, “good”, “important”, “gold plated”, etc., etc.

    Many are decidedly mundane, with some bordering on what perhaps some might consider just plain silly.

    There has been a strong undercurrent of elitism from numerous sources that largely reflect ignorance concerning what an invention is and is not. The constitutional provision calls for the progress of the useful arts, and “useful arts” is a broad term that embraces virtually every facet of our our daily lives. Put another way, the constitutional guidance is “useful” and not “important” as so many seem to advocate.

    Some may smirk at a person who invents a new kind of pinata (sorry, but my keyboard is not set for spanish symbols), but if it meets the tests under Title 35 it deserves the right to participate in the patent system to the same extent as those inventions that at some date in the future may forever enhance our lives. How easy it is to overlook the fact that in my admittedly “un-earth shattering” example there are businesses and people who earn their livelihood from such products, and who face the same economic pressures and market forces as all other businesses…big and small.

    When I first began practicing I asked my mentor, who had 40+ years of experience in all facets of IP, had he ever seen what he thought was a silly invention that “hit it big”. He said he had seen several, but one in particular came to mind. It was a method for imparting varying degreees of color to hot dogs. It seems that at the time regions in the US had identifiable preferences for what a “good dog” should look like, and that the meat packing industry was looking for a way to meet consumer demand. This invention did the trick. The meat packers obtained a solution to a problem, and the inventor retired a very happy and wealthy man.

    Over the years I have seen this repeated, and it has led me to the conclusion that I should not attempt to categorize inventions as “good”, “bad”, or “indifferent” simply because I know virtually nothing about the relevant industry. An invention will ultimately stand or fall in the marketplace based upon its merits (just like music, movies, and everything else that is put up for sale to consumers). Do not get me wrong. I do talk extensively with inventors about matters other than just securing a patent, which in many instances has given them pause for concern if the patent system is even the way to go. But, to begin attaching labels to things right up front disserves why the patent system exists in the first place.

  62. “It’s official folks. examiner 6k has just been awarded the distinction of most annoying in the entire blogoshere. Mr. Mooney will be along shortly to give his concession speech.”

    Come on, just because you don’t agree with them, you stoop to this johng. I know plenty that would rather give you that award. You cowardly post just reaffirms this.

  63. 6k,

    You may be interested to know why your ticket was dismissed. Then again, as you know everything already, maybe you won’t.

    Anyhoo, due process saved you.

    Due process means the government must tell you exactly what you are being charged with. This is so you can adequately prepare your defense.

    It used to be a cherished protection all Americans enjoy. It was even enshrined in our Constitution. The current administration has reclassified it as a footnote.

    It applies to the PTO. 35 USC 132 states that if the PTO refuses to grant a patent, it has to provide applicant with the reasons and information that supports those reasons.

    Rejecting applications because the blockheads running the PTO are embarrassed about patents exercising cats and swinging on swings are not reasons for refusing to grant patents to patentable inventions.

    Of course, you’ll learn all of this at that fancy Ivy league law school you’re going to.

    Good luck.

  64. “…then patent prosecution is dead. Long live patent litigation.”

    Not sure what litigators are gonna litigate when there are no more patents, but I’m sure Malcolm will tell us.

  65. Re:
    “You can tell when the app or atrny is sitting on info when you see every obvious alternate in the dependent claims and you get to scavenger hunt. But ooo no, you don’t see that stuff up in the prior art section whatsoever so they can “fall back” if they think that they need you to pull another ref into the 103 on the ind.”

    It is not clear what you are trying to say here. While it may be true that many patent applications contain a bunch of worthless dependent claims, just because someone is not good at writing claims doesn’t mean that they are “sitting on info”.

  66. It’s official folks. examiner 6k has just been awarded the distinction of most annoying in the entire blogoshere. Mr. Mooney will be along shortly to give his concession speech.

  67. Thomas and Hutz- you miss the point entirely, you act as if it’s not benefiting you at all, but in reality, it can certainly save you (and more importantly your client) money and more certainly, time. Read that article by the guy that wrote claim 4.

    link to dickinsonwright.com

    It’s hard to get the link to work, just go the the homepage of dickinsonwright and find the client alert to the right that has the correct date as in the link above.

    More importantly, if you’re not conforming to the law right now in order to not have to play word games later do you really believe that those in your practice won’t get smacked down sooner or later by law? I’m not saying that you’re actively hiding pieces of art, but you don’t tell what you know to be true at the outset, whether it’s in the form of peices of art, or art you just know in your mind that’s been done that you’ve seen over the years. Everyone in my field has a baseline of knowledge from school, surely that’s not the same in all arts, but in a huge amount of them it is. You can tell when the app or atrny is sitting on info when you see every obvious alternate in the dependent claims and you get to scavenger hunt. But ooo no, you don’t see that stuff up in the prior art section whatsoever so they can “fall back” if they think that they need you to pull another ref into the 103 on the ind. Yeah, real classy. Great patent that’s going to be.

  68. Requiring a patent search before filing is shady as a three dollar bill. Obviously this will devulge the patentable idea then some theftor can steal it by filing first! There is no reason this could not be accomplished within 30to90 days after filing.

  69. First to invent is an improvement in finding the correct inventor however the theftors are likely to simpley change tactics to claim stolen inventions instead of backdating.The best system would require advanced notice of intent to file 30to60days catigories of invention would be established to notify the public that if they feel they are the inventor they must file the original idea before or at the same time as the notifier in order to begin a disputed claim. This eliminates the race to the patent office concept by establishing a match it or scratch it concept. Original ideas are concieved by rare brilliant minds not in some brainstorming session at universities or research and development departments.

  70. examiner#6k,

    Don’t get your panties in a bunch. As I have said before it is the rare practitioner that hides art from the Examiner. All the art of which I am aware is listed on an IDS. There is no requirement to characterize it in the application. Your analogy is flawed because there is no benefit and not an insignificant risk to characterizing the prior art.

    And if I am going to have to defend myself against word games played by my opponent in litigation, you can sure as hell bet that’s going to influence the way I draft my applications.

  71. P.A. Hal Milton might be one ugly mo fo, but I sure love what he has to say. IT’S A LAWYER I LIKE AND AGREE WITH OMG. Also, it looks like he’s the man we have to thank for KSR lolz. He should be famous soon.

  72. P.A. Hal Milton might be one ugly mo fo, but I sure love what he has to say. IT’S A LAWYER I LIKE AND AGREE WITH OMG. Also, it looks like he’s the man we have to thank for KSR lolz. He should be famous soon.

  73. va- looking through my docket I can assure you 100% that Quality = reject, reject, reject. Trust me on this one. Seriously. You’re not seeing things from this perspective, a whole docket full of things that are rightfully rejected or need to be, with a few things going on to allow here and there. I’m not one to reject improperly either, not at all. I’ve done a few I will admit, but that’s from being a noob at using the statute, and even then we’re talking about less than 5% of what I put out, no lie.

    Now I’m not saying it’s so for all, everytime, but I can assure you if I don’t then the patents I would be putting out wouldn’t be worth the gum on your shoe. Here again, this stems in large part from the applicant seemingly purposefully overclaiming on first go around. And he feels especially comfy doing so because he hasn’t fessed up to knowing a damn thing about the art.

  74. “Any and all statements you make regarding or characterizing the prior art can and will be used against you later in court … when characterizing the prior art.”

    O rly? Maybe the Prior art really was against you? Or maybe you need to file an appeal because the judges imported implied limitations that were not present. Or, finally, you should stop doing a crappy job and not conforming to the law because you might have it a little rough down the road because of someone else’s mistake.

    FYI, I already knew that. Doesn’t sway me one picometer in your direction. That’s like saying, well, I built a crappy fence because a storm blew the last one over (or a drunk driver ran it over) and I didn’t want to risk having done a good job again because I was penalized for doing it right the first time.

    I bet your dad would put your arse right back to making the dang fence awesome.

    Oh, and also, since you’re doing that, I guess I shouldn’t address your dep.’s either amirite? Fairs fair you know. “Claims 2-6k are rejected under U.S.C 103(a) as being obvious over the art the applicant purposefully ommited”. Especially when literally 95+% of your dep’s are just you describing the prior art you know exists but you didn’t include because you’re only out for your (and your clients) own gain and not wishing to abide by the law. Common criminal (or assistant or whatever) might better describe you, but it’s so sophisticated you get off. Screw you guys, seriously, you deserve those bad decisions considering your “remedy” for them is to not abide by the law anymore. Make no mistake, this is a country ruled by laws, and if you continue to push them you will be held accountable eventually.

    I had a court date for a traffic ticket today, the officer used the wrong statute to accuse me on the ticket. My defense was that I wasn’t guilty of what that statute said. There was a small hubub and the judge was all impressed n stuff (She was very interested in my case, since it was the only interesting one of the other 40 same ol’) when all I did is what is commonplace here “that’s not a 102 (in your mind: it’s a 103)!”. In my case however, I at least offered to tell them what the correct statute was since I’m aware of the spirit of the laws. She declined, so I guess that’s how it goes sometimes right? I only recount this to rag on lawyers about how bs the stuff they pull is. I have to give it to you though, when it goes in your favor it’s almost as much of a rush as doing something way illegal. I feel like I could wrestle with a train and come out without a scratch!

  75. “I thought the malpractice concerns expressed in this thread were more concerned with having to expressly characterize the art, but I was only guessing. Does anyone else have specific concerns?”

    One concern is having to make characterizations prior to a focusing of issues. Instead of being able to avoid forming an opinion about Y because Z is believed dispositive of patentability you are forced to drone on about Y at the time of filing. That means an extra chance malpractice chance. If the practitioner does not currently understand Y, he has no choice but to sort it out at client expense even if it isn’t currently relevant.

  76. “However, Dickinson seems to get almost universal praise.”

    Perhaps that’s because Q. Todd knew what he was doing and had the respect of the patent bar. Could that be a good reason why the Director and Deputy Director should meet the “real requirements” of 35 USC 3?

  77. “I don’t see how you could be liable for malpractice for failing to meet an undefinable standard.”

    Touché – agreed. So does that mean you’re volunteering to be the test case? :-)

    “Bring back Bruce Lehman, whose mission was to help his customers get patents.”

    Perhaps he’s the very reason we’re in this mess – his mission should have perhaps been to promote the progress. Aren’t we seeing and enduring a backlash resulting from his “customer” oriented policies?

    link to nipra.org

  78. Leopold,

    Who cares if you are sued successfully. Just being sued is time-consuming and costly (doubly so, because there are the costs of defending yourself and then there are the opportunity costs lost because you are spending time on your defense rather than doing new work for clients.

    Joe

  79. Lehman?

    Every patent attorney I know said he was terrible in his position. However, Dickinson seems to get almost universal praise.

  80. “Also, John Doll is a decent fellow and also has a lot of patent examining exp., he is, without a doubt, one of the people who’ve spent their lives doing it and are qualified for mngmt.”

    LOL.

    He’s a maroon. He’s the architect of “Quality = Reject, Reject, Reject.”

    Get rid of him and watch the backlog disappear in a year.

    Bring back Bruce Lehman, whose mission was to help his customers get patents.

  81. “Also, John Doll is a decent fellow and also has a lot of patent examining exp., he is, without a doubt, one of the people who’ve spent their lives doing it and are qualified for mngmt.”

    LOL.

    He’s a maroon. He’s the architect of “Quality = Reject, Reject, Reject.”

    Get rid of him and watch the backlog disappear in a year.

    Bring back Bruce Lehman, whose mission was to help his customers get patents.

  82. real: Thanks again for your comments. You’re right that I haven’t internalized the consequences of the ESD rules, primarily because I never intended to file one. In my practice, while more than 25 claims is sometimes very desirable, it would be hard for me to argue that it was absolutely essential in very many cases, and therefore worth the cost (and estoppel risk) of an ESD.

    If we’re talking about the rules as proposed, then clearly the prudent thing to do if your search is deemed insufficient would be to cut the number of claims to get under the 5/25 rule. But I’m working on the (naive?) assumption that those rules won’t go into force, for precisely the reason you bring up – they’re so vague as to be completely arbitrary.

    I haven’t (yet) studied the patent reform bill that we’re discussing, but the summary suggests that the PTO would obtain some power to require searches. I suppose this authority could extend to a rule requiring search and explanation in any case, not just those exceeding 5/25 claims.

    BUT, I still don’t see the malpractice. Doesn’t malpractice require an error, as compared to professional standards? Search strategy doesn’t seem a lot different than trial strategy, or negotiation strategy, or all of the other judgment-based tasks a lawyer must perform. Are trial lawyers routinely sued (successfully) for having employed a losing trial strategy? (I actually don’t know.) I don’t see how you could be liable for malpractice for failing to meet an undefinable standard.

    I thought the malpractice concerns expressed in this thread were more concerned with having to expressly characterize the art, but I was only guessing. Does anyone else have specific concerns?

  83. TJ,

    Thanks for the clarification about what you meant by the current standard for IE. Actually, even with a “but for” standard, there would still be a place for IE (if you really want it and I frankly would rather be like the rest of the world and not have it), namely focusing on what the “intent” was in not providing the “but for” material information. If the requisite “intent” was there (at the higher level I’ve suggested it should be), IE could still be a basis for making the case “exceptional” under 35 USC 285 for the award of attorneys fees. Again, IE would be much rarer under this heightened standard, which is where IE belongs (if at all): only the rare egregious circumstance.

  84. “accepting the fact that such a rule might, in practice, mean that the PTO can arbitrarily defer examination forever (until your search is sufficient)”

    Leopold, I think perhaps you might not fully understand the new rules (please read 1.75 and 1.265 again). If your first search is insufficient, you will [apparently] have one [and only one] non-extendable two-month time period to correct your search/ESD, cancel your claims, and/or successfully petition under 1.181 (the petition not staying the non-extendable time period), or your application will be abandoned.

    So, if after receiving notice of a search “deemed” to be insufficient, you do anything other than cancel your claims to fall within the 5/25 limit, and the Office deems your corrected or supplemental search to still be insufficient (for whatever reasons, you may not know) or doesn’t get to your petition, then your client’s application is abandoned. [Period] Therein lies your threat of malpractice, based on a search that the attorney often has no personal control over.

    See? :-)

  85. Thanks, real, for your answer. I understand completely the problems you identify in the proposed rules. I meant to be more clear in my original post that I doubt that a standard for a search can be meaningfully defined. That’s why the proposed rules effectively say “we’ll let you know if your search is sufficient.”

    But, accepting the fact that such a rule might, in practice, mean that the PTO can arbitrarily defer examination forever (until your search is sufficient), where is the malpractice? Assuming good faith on the practitioner’s part, what kind of error (that rises to the level of malpractice) is everyone concerned about?

  86. Leopold Bloom,

    Here’s your hypothetical and I’ll go on the record (anonymously at least):

    Write up an invention description (and/or claims) and give it individually to two different good searchers (say, that have the same level of expertise as an average Examiner). Even if they use the same search methodology and/or templates (e.g. with individually selected key words), you’ll always get back two different search results with two different sets of references. In my experience, the overlap will be between 10% and 75%. One of the results may be much better than the other, and if you give the same two searchers ten different individual invention descriptions, one searcher may give you better results five times and the other five times. Such is the nature of the searching beast, even with (very) good searches.

    Next, give the invention description (and the results of the two searchers) to a searcher who’s much better than just good. His result overlap with either of the two searchers (and with the Examiner if it is an issued patent) will almost never be more than 50%. Moreover, more often than not, he’ll find better art than the Examiner has (that being quite an understatement in many cases) – and that finding by itself doesn’t mean the Examiner’s search was necessarily “insufficient”.

    Below (I believe) is all the guidance we’ve been given about whether the search *results* of an ESD search will be held sufficient or not by the Office. Notice the quandary you’re placed in if the search results are not sufficient.
    _____________
    FR 46800

    “If the preexamination search is poor, then applicant runs the risk that the preexamination search or the examination support document will be deemed insufficient.”

    FR 46804

    “Simply because the Office knows of a closer prior art reference (that is not applicant’s own work) than the prior art cited by the applicant is *generally* not enough to hold a preexamination search insufficient.

    An examination support document could be deemed insufficient based on an insufficient search.

    Any applicant who disagrees with a requirement for an examination support document or the holding that an examination support document or preexamination search is insufficient may file a petition under § 1.181. As provided in § 1.181(f), the mere filing of a petition will not stay any period for reply that may be running against the application. The Office will make *every effort* to decide petitions in a timely manner.”
    _____________

    Do you see? The search on which your ESD is based can **ALWAYS** be deemed insufficient if the Examiner (who might be a true expert in the art) knows about better art than your (good) searcher (who may never have searched e.g. radiation detectors before) turned up, or if your searcher has a different idea about what the proper field of search is for a particular claim. Searching is not an exact science,and so you will NEVER be able to know with certainty whether the Office will in fact regard your search as sufficient. (And if they don’t, how on earth could you fight such a holding?)

    P.S. I can no longer count the number of mistakes I have made vis-a-vis mischaracterizing (usually by omission, which I always inform my clients about immediately) relevant prior art – and I’ve worked on many cases worth more than you might imagine – often I’ve had to work on them two, three, or four times, only to uncover my own mistakes, and I’ve never lost a client (though I’ve dropped quite a few). But that doesn’t mean I’ve been negligent or my conduct has been inequitable in any sense – it simply means I cannot amass in my brain the full totality of prior art in any given technology, much as I try. (I also can no longer count the the number of *patents* I’ve evaluated where the Examiner cited *none* of the best two dozen references, and that doesn’t mean that the Examiner was necessarily slacking off … it is possible he just didn’t understand the art or how to dig up the feature, something which is very possible for a human being who is in the process of learning with limited time.) However, if my omissions were “on the record” and at the mercy of patent litigators, I’m quite sure I would have been disciplined many times over and/or disbarred by now.

  87. OK, I’m willing to expose my ignorance on this topic, so please be gentle. I am also very concerned about ESDs or similar requirements, for a couple of reasons. Cost is a big one. But, so is the problem of how to define an adequate search. Searching seems to be a bit of an art, and is probably vulnerable to endless after-the-fact criticism.

    But, a lot of the “sky is falling” discussion on this thread has focused on malpractice concerns. It obviously can’t be malpractice simply to comply with a regulatory requirement. An accurate characterization of a reference that results in a legally correct rejection of claims can’t be malpractice either. So, what exactly is the malpractice concern? Inaccuracte characterizations of the prior art? Can somebody provide a hypothetical situation?

  88. EG, when I say we have the same standard already, I meant (and I think clearly said) the “intent” prong, where it is still the law that “gross negligence” is not sufficient under Kingsdown. I have very different views with you about the policy merits of IE, but I will acknowledge that Kingsdown is still the law.

    What I said about “but for” is that it is not the current test for materiality. If “but for” became the test, then IE becomes meaningless. If the court finds that a reference “but for” deception would invalidate, then the patent is invalid since the deception has been exposed. So what would be the point of piling on and finding IE to boot? Only for the exceptional case finding?

  89. Examiner#6k:

    It is important to see both sides of an issue for someone making up rules for everyone to follow. As you so aptly point out, Doll has never been in private practice, or in the industry. He therefore does not appreciate the outside effects of these rules. I wonder how many currently involved in PTO management have ever truly stood in the shoes of an applicant.

    Being a lifer does not necessarily make you a good policy writer because it prevents you from analyzing an issue from all sides.

  90. An upside to the proposed statutory changes is that if it dies there’s an argument that the Director does not have already authority for things like ESD, etc. After all, why pass legislation to empower the Director to do something he already can do.

    Isn’t this argument already being made by the plaintiffs in the Coninuation Rules litigation? Any thoughts on whether this is legitimate legal reasoning? After all, legislation could be intended to make explicit that which is already implicit, or it could be intended to clarify the nature of the previously-implicit powers.

    Another reason to drop the ESD thing, while examination skills vary from examiner to examiner, one value they usually bring to the table is that they specialize in a narrow area of technology. They usually are more familiar with the relevant art than the attorney, and often they know the art better than the inventors. The examiner’s _opinion_ on patentability, despite poor written support/expression, is often very useful.

  91. “Authorize USPTO to require pre-filing patent searches and explanations;”

    According to at least one commetator, the PTO would already be permitted to do this under existing law. An article written by Hal Milton, originally published in the JPTOS, and available via pdf at link to dickinsonwright.com, makes the argument that Graham and section 112 mandate a prior art search.

  92. EG,

    Re FTF vs. FTI, FTI has been a part of our system of laws since (if I recall correctly) the Patent Act of 1790. I am not one who adheres blindly to tradition, and perhaps such a change might be beneficial. My concern stems from the fact that the only argument I have seen presented for enacting such a fundamental change is “harmonization”, with not a whit of pro/con discussion. There are pros (and, no, I do not subscribe to the notion that the elimination of interferences is one of them), but then there are significant cons. I used the university example only because academic research is typically conducted and documented in a manner generally different from the private sector.

    If such a cardinal change is to be made, then at the very least it should be done following intelligent and informed debate on the issue. To date that debate has been virtually non-existent.

    ESDs, as you so aptly note, are very problematic for any number of legal reasons that transcend merely patent law, and yet this has likewise been proferred without any pro/con debate before Congress. Some cons that immediately come to mind are matters of privilege, ethical duties owed by counsel to clients under rules of professional responsibility, the real possibility of malpractice claims, inequitable conduct claims under current law, etc. These issues likewise deserve intelligent and informed debate, something that to date has been sorely lacking.

    I am all for fixing something that is broken or may benefit from tweaks calculated to address and correct longstanding problems that should long ago have been rectified. However, is something is not broken, then prudence would dictate a much more thorough debate of the issues to try and avoid as the rule of “unintended consequences”.

    While I can wax poetic on many other issues, there is one I consider quite important that has received scant attention, and that is the costs to be heaped on inventors. Up until the early 80s the system was relatively affordable, and since then fees have incrementally rised to the point that many inventors are simply unable to participate. It used to be that the system embodied a quid pro quo. That concept long ago fell by the wayside with the erroneous mindset that it was inventors for whom the office existed, and it is inventors who should foot the bill for its operation. Lost in this mindset was the benefit to the public from early disclosure. To this day I see no meaningful benefit to the public from maintenance fees other than financial. To me it just seems wrong to levy a fee against a patentee when in fact the office long ago ceased to provide any “service” to the inventor.

    My above comments are largely random thoughts, but I think they make clear my view that changes to a system should not be made merely because a select few happen to have the time to bend the ears of our legislators. As in all debates, both sides of the issue should be thoughfully explored before policy decisions are made, and particularly when those decision may have the effect of distorting our economic system in ways never imagined.

  93. “(Of course telling him that to his face is a good way to start you new job search. I know some SPEs that were under him when he was a director. He does not take disagreement well.)”

    did you mean dictator or director?

  94. examiner#6k, unless you really are someone in upper management, I have probably been many more real meetings where this was discussed than you have. And I have probably been at the PTO many more years than you as well. You may have heard the spin; I heard what was actually discussed. The ESD is part of the plan to reduce the backlog. To reduce backlog, means examiners need to do more cases each PP. How do you THINK that will happen??

    Personally, I have nothing against John Doll. And I hae not questioned his experience. He is a very good speaker and believes in what he is pushing. I just happen to disagree with him on this point. (Of course telling him that to his face is a good way to start you new job search. I know some SPEs that were under him when he was a director. He does not take disagreement well.)

    My suggestion would be, if youdid make applicants come inwith an ESD, make it so that whatever is or is not supmitted is not admissable in future litigation (other than maybe not disclosing the inventors own work).

  95. examiner#6k wrote,
    “[I]f you hadn’t been so stingy in your Prior Art sections all these years this wouldn’t be happening, you not-conforming to the spirit and letter of the law pretending to be know-nothing babies about high tech devices bad guys you.”

    Wow. Just one of the many things you apparently misapprehend about prosecution behavior. Due to CAFC case law (prior to or after 1998) there is good reason to only cite prior art on IDS’s. Any and all statements you make regarding or characterizing the prior art can and will be used against you later in court, if that patent is ever litigated. You should read some of the CAFC cases where they have imported implied limitations or otherwise penalized the patentee because of a poor choice of words when characterizing the prior art. When I started out, I use to summarize what I considered to be the relevant prior art and even then, I just plucked sentences from the abstract or summary of the invention usually to avoid such problems. Now, I only discuss prior art in the application itself if I want to incorporate by reference to shore up my defense against enablement issues.

  96. I think you guys misunderstand what is likely to happen if THE DIRECTOR is allowed to require searches. Just like almost everything else that is in his discretion (restrictions, other bs), you’ll have to be made to do it, probably on first action, and even if they were to make it standard to have one before first action, the examiner is still going to have to do his own search. Examination, as we know it, will stay the same, except the applicant will build the bs part of the case for us (most pending cases will boil down to a blatant 103 or turned up 102) and hopefully put subject matter he BELIEVES to be an invention in the ind. the first time around, or abandon (even before first action, though we wouldn’t get it till 6 mo. after FOAM). Oh, and FYI, if you hadn’t been so stingy in your Prior Art sections all these years this wouldn’t be happening, you not-conforming to the spirit and letter of the law pretending to be know-nothing babies about high tech devices bad guys you.

    You can call me Jon if you want, but the E in my name kinda rules out Dudas from what I hear on here so much. And anyway, if I were Dudas I’d be D#1Patentman! amirite?

    Also, John Doll is a decent fellow and also has a lot of patent examining exp., he is, without a doubt, one of the people who’ve spent their lives doing it and are qualified for mngmt.

  97. Yes, ESDs are a VERY bad idea. For both the Office & the attorneys & the public as a whole. For you, all the potential inequitable conduct problems you’ve discussed. For the public, you now would have people that are doing work to grant a monopoly that are not govt. employees and have may have vested interests in the patenting (or not) of different cases. For us examiners, it not only takes away from a very important part of the job, searching allows new examiners to learn the art. Also, often the person searching and the person making the rejections/allowance will read the claims very differently (why do youthink lawyers and examiners never agree?) and what the searcher thinks is great art the “examiner” won’t or vice-versa.

    Unfortunately, the push for ESD in all cases will not go away on its own. John Doll is the guy pushing real hard for it (I’ve heard him say such). As long as he is there, the push won’t change.

  98. Malcom, as you know, I generally disagree with everything you say.

    However, there is no doubt that this would be a ridiculous boon to litigation. You would have a very hard time finding anyone in the US to prosecute an application. The insurance cost and malpractice risks would just be too high combined with the reluctance of the client to pay relatively large (30k plus) fees for prosecution, compared to the willingness of the client to pay you for litigation and the relatively low malpractice risks and insurance costs. Who would want the headache of prosecution?

    On a side note; Examiner#6k, would your last name happen to be Dudas? I think we have a celebrity in our humble presence.

  99. contact you senators !!

    nothing in the act has been fully vetted or substantiated by nonpartisan analysis … and, i, for one, do not believe any “negotiation” will be successful … too many “typos” … the pendulum has swung and outside patent counsel are likely to want to go in-house … (say it isn’t so)

    ESD will not survive as proposed … if it does it will reduce the importance of the patent bar (along the lines of : well, why are you not doing your own searches? if you cant sign it then what are you hiding?) and shift it to the less regulated area “the search cadre” … search + electronic e-file (which includes a basic ESD-lite) needs no explanation …

    IMHO :: the triple-whammy of ESD/ McKesson/ Materiality (156) – IE … the pressure on any given attorney to provide advice &/or disclaimer to inventors regarding these cannot be ignored … especially risks and rewards of each of these elements in a variety of iterations … what wil be the bar to patentability if the whole process must be administered by an attorney who necessarily undermines his client’s case? as aptly pointed out .. the insuance industry will decide how much is enough (you know just like they decide your medical treatment)

    for those who have already moved away from small entities … could you have it any better … with all of the resource shifting a registration system with support for small entities cannot be far behind (if politics does extend this into a greater national discussion which would be preferable) … without small entities the office will suffer from lack of filing fees and maintenance fees … and we will have driedmax’s epo utopia … big companies paying big fees as big innovators …

    First to Invent & First to File IMHO, will come under Constitutional challenge … and Scalia can then continue his rant on “goobledegook” — I mean , what did the Framers truly intend? Close ties to “royalty” and thus those who could reach the patent office quickly — OR those who could invent and reduce to practice in a fully enabling disclosure — more exotic priority date challenges // 102e // multiple reference 102 rejections without express support for claim language // all bets would be off vis-a-vis novelty …

    … point me to an F2F patent that is more valuable than an F2I patent

    ignoring the proponents and their affiliations certainly begs the question: how can you lay down for rules that are clearly being cast without good faith …

  100. P.S. Regarding independent invention, as you know, if a Japanese worker invents a widget and then six months later I independently invent the same widget, I can get a fully valid U.S. patent as long as he didn’t publish or sell etc. in the six month period prior to my invention and I file my U.S. application (for 102(e) purposes) before he files his U.S. application.* Therefore, even the current system is sometimes skewed away from the true “first” inventor.

    *he could beat me in an interference if our claims (can be made to) fully overlap, but if we are claiming different aspects of the same widget (or as is more often the case, if he never files a U.S. application), I’m home free even though he invented our widget first.

  101. Dave, the proposed system is a “first inventor to file” system, where speedy applicants who “derive” their “invention” from another would not be entitled to any patent protection, even if they filed first.

  102. I’ve read all the comments so far, and with one exception saying basically “Ok by me” no one has commented on “first inventor to file”

    First, what the h… does this mean? If this is a first-to-file system, I thought the Constitution forbade this (“…securing … to … Inventors ….” not ‘securing to the first inventor to send some application papers to the Federal government’). This includes independent invention. The second one to come up with the idea is still not the inventor, and the Constitution says nothing about filing.

    I also agree with pre-filing searches turning our system into a defacto registration system with all validity etc. decisions being decided by litigation.

    Finally, it would be nice if the USPTO stopped funding the rest of the government. But I think that, alone, will keep this from passing.

    Dave

  103. Responding to the above:

    On the ESD requirement: TJ, I aware of (and have nightmares about) Star Fruits, which is a really bad decision (as dissenting Judge Newman said). But there is a significant difference with the ESDs. The ESDs constitute a fundamental shifting of the examination obligation from the PTO to the applicants. The current statutues don’t allow that, as several Amicus Briefs have pointed out in the GSK/Tafas case.

    On the IE issue: if were up to me, I would get rid of IE entirely. Put it this way, if patent reform is all about harmonization, then why not harmonize with the rest of the world that has not such requirement? What I was proposing was something that would permit allegations of IE for the really egregious circumstances. But TJ, you’re absolutely wrong that we’ve got a “but for” standard now for IE. The fact that the information is “material” doesn’t mean it’s necessarily fatal to validity. But the Federal Circuit will nonetheless hold the patent unenforceable/invalid for IE, even if the patent might have survived (under IE, there is no “no harm, no foul” principle).

    On first to file: Mike, your point is well taken that first to file will hurt certain institutions such as universities who tend not be as diligent in filing early, but frankly with most of the world already first to file, we’re almost in a de facto first to file world in the U.S. Again, if first to file doesn’t come into play, I won’t be terribly unhappy. I’m just more unhappy about other aspects of this proposed legislation which could greatly damage the patent examination process.

    In summary, the evils of this proposed legislation far outweigh the good, so that’s why I’m perfectly happy to have this legislation sink completely. It is sheer sophistry and completely disingenuous to call this legislation “reform” because it reforms nothing about the current patent examination process (other than in a bad way), and certainly doesn’t address directly any of the real issues currently afflicting this process (which could be addressed mainly, if not entirely, by better PTO management, not by legislation or even rule making).

  104. “Nope, more like giving the Postal Service the authority to set how much it charges to take your mail to someone.”

    Hehh, imagine if the postal service decided too much mail was being sent for the environment and the public good, and that it couldn’t hire enough mail carriers, and so it increased rates and required explanations and assessments to accompany each mailing request, detailing why other spatial distribution methods were inappropriate. And then imagine that an unemployed patent prosecutor was made the head of the postal service by the next president to thank the CPF members (who rely solely on Fed.Ex and UPS for critical shipments) and to gain campaign contributions and votes from the Fed.Ex and UPS executives and employees, all while the problems of national budget deficits, border security, nuclear proliferation, mortgage foreclosures, and the general welfare of worldwide humanity remain unattended to and ignored.

  105. “E#6Ks **SIMPLISTIC** diatribes notwithstanding,…”

    Don’t worry, Malcolm, I got your back, though you’re probably right about prosecution as we know it. (P.S. You’re welcolm!)

  106. [inhales some oxygen]

    E#6Ks diatribes notwithstanding, if the PTO is going to require applicants to search and provide art and explanations of the closest art, then patent prosecution is dead.

    Long live patent litigation.

  107. “The ones with clear subject matter don’t fear art, admissions, 103′s, hell, nor highwater because they already HAVE REASON TO BELIEVE THEY INVENTED SOMETHING. The only question is, do you?”

    If I wasn’t an atheist, I might think that I’ve died and gone to heaven.

  108. * Authorize USPTO to require pre-filing patent searches and explanations

    For this one, why not require the searching firm to provide blurbs about any uncovered art? That would provide the examiner with an explanation as to why the searcher thought the reference was relevant and would take the heat of the applicant and/or the representative.

    Seems easy enough.

  109. This bill doesn’t authorize the USPTO to limit continuations or make substantive rules? Woohoo, I’m all for it!

  110. “It would be like giving the IRS the authority to set tax rates”

    Nope, more like giving the Postal Service the authority to set how much it charges to take your mail to someone. I.e. perform you a service. Gasp, just like the PTO does you now, only you’re spoiled because all apps are subsidized by the “good” patents people pay to renew.

    Oh, and btw, on all the things in that package, yeah, I think “I told you so, stuck in your ways old guys” from me is in order, respectfully as possible of course. Also, I hope it passes. If it doesn’t, don’t worry, we’ll get it done next year, or the next or the next.

    I really don’t see what all the hubbub is about though, you INVENTED something right? No amount of admissions on the record, etc etc will have stopped you from inventing something novel and nonobvious IF that’s what you actually did and that’s what you deserve. It’s amazing the difference between how apps I get that have clear novel and nonobvious subject matter and apps that are just the same ol dime a dozen “I combined two references” or “I don’t keep up with current art from the 1990′s dur” bs. The ones with clear subject matter don’t fear art, admissions, 103′s, hell, nor highwater because they already HAVE REASON TO BELIEVE THEY INVENTED SOMETHING. The only question is, do you?

    Maybe it’s high time some people considered just publishing their works to stop others from stopping them from using it, but at the same time not trying to stop others from using it. Hey, it’s an option, you should try it sometime.

  111. “I bet the ESD requirement will survive too.”

    SF, how can it survive if the applicant can *never* know in advance if the search is sufficient?* (If the PTO examiner knows about two more relevant references than the search turned up, he can deem the search insufficient, and the ESD is history. If you think searching is more of a repeatable “science”, where you just follow “templates” than a non-repeatable “art”, then your understanding of searching is flawed. To understand how difficult searching really is (even using a “template”, you need to understand what percentage of patents, not applications, have claims which are anticipated by prior art.)

    *my question is rhetorical actually, since I too know it can survive to the detriment of the country.

  112. “I’ll go out on a limb and predict the ESD requirement will probably survive Tafas no matter what happens to teh continuation limits”

    Unless the court finds the rule-making process was flawed, I bet the ESD requirement will survive too.

  113. EG,

    Merely my view, but change from FTI to FTF is a cardinal change for groups such as universities that are heavily involved in technology transfer activities. The GC at BYU articulated this issue quite well in a letter sent to Orrin Hatch early last year. A copy is located at link to autm.net. Moreover, this proposal if enacted has “malpractice” written all over it.

    I agree with you re fee setting authority. It seems akin to giving the IRS the authority to set tax rates. I do have to wonder if perhaps such a provision could run afoul of Article I provisions where Congress is the branch holding budgetary authority over the other two branches?

    Good practices generally call for Pre-X searches, but to mandate them, particularly with a FTF system, can be quite problematic. Imagine the poor associate who chooses to use “We Search Thoroughly, Inc.” versus the one who chooses to use “Quick and Dirty, Inc.”. BTW, it will be interesting to see how such a requirement squares up in those situations where a client arrives at your office a day or two before a bar date.

  114. EG, I doubt I will persuade you, but:

    On 11, what makes you think the PTO can’t do almost the same thing already under Star Fruits? I’ll go out on a limb and predict the ESD requirement will probably survive Tafas no matter what happens to teh continuation limits; and there is no meaningful legal distinction that I can see between an ESD for 25 claims and an ESD for 5.

    On IE, the intent standard is already what you propose. If materiality is “but for”, then IE becomes coextensive with invalidity and thus dead-letter. There are plenty of people who advocate getting rid of IE for that reason. But if IE is kept, it necessarily means something other than “but for”.

    On attorney fee shifting, if it is “only fair” that a defendant alleging IE but loses has to pay fees because if it wins there might be exceptional case; would you agree that it is “only fair” to have fee shifting for willfulness allegations that lose?

  115. I am just a humble agent – so I through out a question to all you lawyers (preferably litigators):

    Could the search/analysis report be outsorced with a statement that the report does not represent the Applicant’s point of view, and is provided only to reduce the work burden on the USPTO?
    If this were to happen, would things in the report STILL be considered an admission? – would this still FORCE the applicant to muddy the file-wrapper ?

    It seems to me that the file wrapper (i.e. admission vs. inequitale conduct) issue is what makes the search reports so freakin’ expensive.

  116. I don’t care much for any of the reforms in the bill, but the one that appears most dangerous is the required searches and explanations. I’m a small firm, and getting malpractice insurance for patent law is already a very expensive and tedious process. IF I am required by law to search and examine every application I file, what kind of insurance will I have. What underwriter will even touch patent prosecution if every lawyer is obligated to make admissions against the client’s interest–the effect of which won’t be known until the patent ends up in litigation and is invalidated or severely restricted anyhow. I think you can add another $5k per application to cover increased insurance or the total lack of insurance, plus of course the additional $25k or so that will go into basically writing a validity opinion that is not confidential or privileged on an application that has yet to be examined!!

    I will never turn away another PI case again.

  117. The text of the proposed section 123.

    § 123. Additional information; micro-entity exception
    (a) IN GENERAL.—The Director shall, by regulation, require that an applicant for a patent under this
    title submit to the Director—
    (1) a search report and analysis relevant to patentability; and
    (2) any other information relevant to patentability that the Director, in his discretion, determines necessary.
    (b) FAILURE TO COMPLY.—If an applicant fails to submit the search report, analysis, or information required under subsection (a) in the manner and within the time period prescribed by the Director, such application shall be regarded as abandoned.

    I consider at least paragraph a(2) to be a deal breaker. If the Director wanted to shift the burden of rejecting claims to the applicant (i.e. force the applicant to establishing a prima facie case of obviousness or non-obviousness prior to examination) wouldn’t that just be a request for information relevant to patentability?

  118. My comments from a different patent blog about the draft report on this legislation. My prior thought still stands: let it all sink with no survivors, we would be better off.

    2. change the system to a “first-inventor-to-file” system. Not a big deal to me.

    3. make it simpler for patent applicants to file and prosecute their applications. Sounds nice in theory, but how will this work out in practice? The existing examination process would be fine without such legislation if PTO management had done their job; that’s the problem, so this provision may do nothing unless we have enlightened PTO management in the future.

    5. create a relatively efficient and inexpensive administrative system for resolution of patent validity issues before the USPTO. This sounds like the post-grant opposition procedure. I would be OK (but not enthusiastically so) to have post-grant oppositions limited like in Europe (9 to 12 months after grant date only) which procedures that keep the cost of these within reasonable bounds; I’m completely against unlimited periods for post-grant oppositions as being not only excessive, but shifting the balance completely in favor of the opposer to run into the ground patentees, especially those who don’t have the war chest to fight them off.

    6. establish the Patent Trial and Appeal Board. Don’t know what this means, or why this Board is necessary.

    7. provide for eventual publication of all applications and enhance the utility of third parties’ submissions of relevant information regarding filed applications. I’ve slightly against this provision (but not adamantly so). Letting someone have the option to retain what’s described as a trade secret if no patent is granted and no foreign rights are sought is fine with me, but not a “deal breaker.”

    9. give the USPTO the ability to set its fees. I’m not in favor of this at all. Given the current PTO managements track record on rule making, I’m not in favor of anything that gives the PTO unfettered rule making, including fee setting.

    11. authorize USPTO to require patent searches with explanations when a patent application is filed. I’m thoroughly opposed to this provision which is ill-advised and misguided. You might as well not have examination if the applicants have to do this, as it creates admissions that will undermine patent validity and claim scope and will create yet additional inequitable conduct obligations. I view this as a “deal breaker” and if it remains, I would rather there be no legislation at all.

    12. codify and improve the doctrine of inequitable conduct. Would be an improvement over the current status of the inequitable conduct (IE) doctrine which even the Federal Circuit agrees is a “plague” but which they do little to remove it as a “plague”. I would happy if IE were removed as a basis for invalidity/unenforceability of patents, but if IE is retained I would suggest the following: (1) make the “intent to deceive” standard much higher to either a deliberate intent to deceive or at least “reckless disregard” (not “gross negligence”); (2) make the “materiality” standard “but for”; and (3) if IE is alleged but isn’t proven, have the party that alleges it pay the patentee their attorneys fees for defending against it (only fair since if IE is proven, the patentee may have to pay the other sides attorneys fees). Having provisions (1) through (3) would do much to decrease unsupported and frivolous IE allegations and especially make litigators and their clients think very carefully before making what is, in my view, a very serious charge that shouldn’t be made without the facts to clearly support it.

    13. give the Director of the USPTO discretion to accept late filings in certain instances. Sounds like a good idea, if within reasonable bounds.

    15. end USPTO “fee diversion”. Amen to this, it should have happened years ago and frankly fee diversion shouldn’t have been done in the first place. Fee diversion is a principle reason why the PTO examination process is such a mess now by depriving the PTO of funds needed run the operation, and especially to provide qualified examiners with more competitive salaries, etc.

  119. As in-house patent counsel, I am just wondering how replacing interference proceedings with derivation proceedings elements my company’s need to “maintain extensive recording and document retention systems?” Sure, my company never has to worry about proving the dates of conception and reduction to practice under the new law. However, under the new law my company has to worry about proving derivation. As such, the company will have to keep records of everything it discloses and to whom. Considering that my company may order several custom manufactured parts as it endeavors to conceive of the subject matter of its next patent or reduce it to practice, there are likely to be numerous disclosures. The company may also have to keep records of information and internal documents each employee has accessed should they ever leave the company. It seems like my company will have to “maintain extensive recording and document retention systems” under the new law that tracks disclosures and access, rather than conception and reduction to practice.

    Besides, it is common sense to scientists and engineers that it is just good practice to keep a dated lab notebook.

  120. “The search portion makes no sense, the search and art evaluation is the job of the Office. That is what we are paying for, right?”

    LOL … as if applicants are entitled to the status quo.

    The problem is that you get what you pay for and, given the relatively low fees we pay, we often get shoddy searches and examinations. If this passes, clients will be paying for the USPTO’s supplemental search and evaluation in addition to the initial search and evaluation performed by their patent attorney/agent. Harsh? Certainly. But we all know that applicants are not paying the USPTO for the thorough search and analysis that the USPTO is sure to require of applicants when this passes.

  121. The search portion makes no sense, the search and art evaluation is the job of the Office. That is what we are paying for, right?

  122. Mr. Pitchford,

    You must understand and accept that truly “high quality applications” and “important inventions” can only come about if fees are raised high enough to deter the participation of those of lesser means whose sole contributions are “silly and insignificant inventions”, as determined by those who have never had an innovative thought in their lives.

  123. Re “Suspicious Behavior”, the linked page makes for interesting reading. Follow the links to another post and one can access the Polestar brief. It is perhaps the most informative document of all the documents surrounding the issue of how the USPTO has proceeded in its rulemaking activities.

    On an unrelated matter (but one of significant importance), the Supreme Court hears argument tomorrow in the matter of Quanta v. LG. I look forward to reading the argument transcript and listening to the oral argument itself when they are made available on the Court’s website late tomorrow afternoon.

  124. The innovation president?

    I’m not sure that raising patent filing fees, requiring atty searches and reports, limiting venue to the point where you can’t sue an infringer, and reducing damages to the point where it’s counterproductive to sue an infringer is going to promote much investment in research and innovation of unproven technology.

    But what do I know? I’m sure sole inventors will gleefully pony up 25k or so for each search and application filing and have no problem with 3k filing fees. That’s chump change these days right?

  125. Phew, with the requirement for pre-filing searches, I was a little concerned about this bill. Then I noted “End USPTO ‘fee diversion’” and felt better knowing this bill had no chance of passing in this form. When is the last time Congress passed anything that reduced their appetite for pork and spending?

  126. (from the report) “give the USPTO the ability to set its fees”

    With the ability to require search reports (plus other relevant information) and the ability to set its own fees, the USPTO will have all it needs to deter applicants from filing initial applications and continuations.

  127. As a practitioner who’s grown increasingly partisan for the “status quo,” I honestly have little trouble with these proposed changes. The only things that make me nervous are:

    “Authorize USPTO to require pre-filing patent searches and explanations;
    Re-vamp the doctrine of inequitable conduct;”

    Were the USPTO leadership different, I might have fewer problems with the first proposal. And had I read the exact “revamping” in mind, I might have fewer problems with the second.

  128. I wish they would get away from that “Micro-entity” (and income) language in new Section 123 – have the exception be for “small entities” if Congress is intent on turning over the search to the applicant.

    Better to do away with 123 entirely, because as it stands now, the patent-ignorant USPTO management would clearly want to use the applicant search to cut the Examiners’ hours per BD, making the Examiners even less experts in the art (eventually, they’ll just be highly-paid and glorified clerks in management’s plan).

    If we need a Section 123, the language protecting examination in the passed House version (which POPA lobbied for) should also be added: “Any search report required by the Director may not substitute in any way for a search by an examiner of the prior art during examination.” Otherwise we’ll be at a de facto registration system with none of the possible benefits thereof (and all of the expense of an examination system).

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