Repeal 35 USC 122(c) …..at least for Business Methods

By Mark Nowotarski and Tom Bakos

35 USC 122(c) needs to be repealed and replaced with a law that will allow a more efficient and effective examination process. The current legal requirement to prevent third parties from participating in the patent examination process is no longer in the best public interest. Peer to Patent has shown us that public participation works, but the next step is impossible until 122(c) is at least amended. An examination process that utilizes the expertise of the industries in which applications lie has now become essential in the very difficult to examine fields of software, pharmaceuticals, and business methods.

35 USC 122(c) was added to the American Inventors Protection Act of 1999 to protect the interests of applicants, particularly small entities, once their patent applications were published. The concern at the time was preventing major corporations from harassing independent inventors by inundating the patent office with submissions and commentary intended merely to delay and ultimately prevent otherwise well deserved patents from issuing.

Times, however, have changed.

The USPTO can’t keep up with demand in part because it lacks technical expertise in many fields. A growing public perception is that patents inhibit innovation. The Supreme Court is openly questioning the presumptive validity of business method patents and political forces are aligning themselves to legislatively restrict the scope of patent protection in some of the most promising areas of growth in our economy, such as the financial services sector.

Recent trials of the Peer to Patent program have shown that well regulated systems for third party submissions and commentary can be set up to effectively assist examiners and dramatically improve the efficiency and thoroughness of patent examination. The system demonstrated its ability to harness the efforts of third party reviewers, including those in the employ of large corporations, to not only uncover important prior art, but to provide useful commentary as well. And, it did this without the feared negative consequences of large corporations unfairly dominating the examination process. But Peer to Patent is of limited use as long as 35 USC 122(c) restricts it to applicants who volunteer to have their applications reviewed and stops the review once the application is in the hands of an examiner.

Our experience in working together on several business method cases is that the combined efforts of a practitioner (like Mark) and third party technical expert (like Tom) yields dramatically higher quality applications and faster prosecution. We see no reason why the same principles can’t be applied by the USPTO so that examiners, with the proper safeguards, can work with third party technical experts to get higher quality patents to issue in substantially less time.

Recent advances in the art of public participation in patent examination can be applied to assure that large corporations do not unfairly monopolize third party submissions thus rendering 35 USC 122(c) in its current form no longer necessary. Rather than requiring the Director to block third party submissions, the law should allow the Director to harness the efforts of outside experts in order that inventors can receive the timely and thorough patent examination they deserve.

  • 122(c) reads as follows: “PROTEST AND PRE-ISSUANCE OPPOSITION.- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.”

[NOTE: Mark Nowotarski is the president of Markets, Patents & Alliances and is a registered patent agent specializing in business methods. His background is in mechanical engineering and he has 17 patents in this field. Tom Bakos FSA MAAA is an independent actuary specializing in helping clients patent their insurance innovations. He is an inventor on one issued and several pending business method patents. Mark and Tom are also coeditors of the Insurance IP Bulletin. The Insurance IP Bulletin is a bimonthly publication dedicated to helping the insurance industry use patents to promote innovation.]

61 thoughts on “Repeal 35 USC 122(c) …..at least for Business Methods

  1. “For those cases where hundreds of references are submitted, how long does reviewing the hundreds of references take?”

    The numbers from above were from last month and the portion your question is related to is spread around the actual search (i.e. priority is usually checked before the search unless I overlook it until afterwards). During the last month I didn’t have any 100′s of references IDS, the largest was probably around 80, mostly patents iirc and they aren’t too hard to sift through. From the times I’ve had 100+, 200+ and the one case with 500+, it really depends on the ratio of patents/NPL/search report, but it would take anywhere from 30 minutes (100 useless patents) to 10+ hrs (review of the IDS with 500+ was split up over many days, contained many, many search reports and long NPL, it just so happened that I found the most relevant reference in the IDS near the end, go figure)

  2. A question for the educated…lets say a third party files prior art info indicating they were the first to invent, etc, and the patent never goes to issuance. If someone chose to be disengenuous (yes, a fricken lier in laymens terms)it would simply be a matter of back-dating some documents, would it not?? Should the PTO or a more (or maybe less) thorough court be the proper place to review and determine the validity of such info.
    On one hand, an inventor withholding known prior art may be found to of committed inequitable conduct, thus invalidating his patent altogether. Question, what consequences are in place for a third party (or adversary) who files fraudulent and/or fabricated info of prior development in an attempt at blocking an issuance altogether??
    I filed an application in 1995, (prior to the 1999 rule 122 some want removed). A third party submitted such info, resulting in a rejection of the application. We then investigated and found the info to be fabricated, and submitted evidence proving so to the PTO. The protest was overcome, and the patent went to issuance in 1998 (its been in litigation now for 10 additional years). What consequences should be dealt such fabricators?? And if the fabricators are later found to be infringers as well….should that not be automatic grounds for wlilfulness, attorneys fee’s…etc???
    Its simply too easy for certain dishonest parties to submit nonsense to the examination process….but nothings perfect. There just needs to be some rules in place to deal with such dishonesty once it arrises.
    Anyone interested in assisting in this still pending case of documented fraud feel free to contact me in Denver at 303-995-9533 (D.L.Hildebrand)
    The patents validity was upheld after trial by the Federal Circuit. Currently there are rule 60B motions pending and on appeal addressing yet further frauds of Defendants withholding of sales records we uncovered after trial.
    If remanded by the Federal Circuit for recalculation of damages, wilfulness, etc, I’m looking for someone to finish the details (new trial on just the damages, wilfulness). I was forced to represent myself pro-se through a successful trial on validity etc, do to financial restrains (ran out of money after 7-years). (Hildebrand v. Steck et al. Colorado)
    Anyone have any ideas, feedback or interest, feel free to contact me in Colorado at (303)-995-9533. E-mail at PRO41WILLYS @ aol.com
    (NOTE: One of the 6 defendants sold in excess of 2.5 million in infringing sales, according to the records they turned over, and we uncovered a great deal more not disclosed by them). Defendants are;

    1. Steck Manufacturing
    2. Mac Tools
    3. Matco Tools
    4. Snap-On Tools
    5. Cornwell Tools
    6. Tools USA & Equipment, AKA Eagle Equipment Tools

    There has already been a finding that they are jointly liable for lost profits (rather than a simple royalty). I just need some help if the CAFC returns for recalculation…etc. Any help would be greatly appreciated.

  3. e6k wrote:
    >In those 10 hours the following goes on.
    >5. Read art, check IDS/priority. 3 hrs-5 hrs.

    For those cases where hundreds of references are submitted, how long does reviewing the hundreds of references take?

  4. “Then why does the 3600 group have such an abysmal allowance rate?”

    JohnDarling wrote: “Review the transaction histories/IFW’s of 09/193,787 and 09/077,337 and you will find the answer.”

    Great transaction histories, particularly the first one. Everything that is right and wrong about 3600 in a single transaction history.

  5. All seeing Eye doesn’t see everything. The EPO was forced to separate search and examination, from the outset in 1978, and has laboured ever since under its inefficiencies. Until recently, that it, when it Brought Examination and Search back Together (BEST program). Now the EPO runs better, with an EESR issuing a few months after filing. The EESR as you know is a search report with a FAOM annexed to it. Applicant makes its decision whether to request examination AFTER having read the FAOM. I suspect reading EESR’s online will gradually become one of the first acts of a USPTO Examiner when opening a file (except in the business method classes, of course).

  6. Actually Lionel, a friend (foreign attorney) and I came up with a very interesting proposal that there could be different tiers of protection for different subject matters – or at least a special tier for a short fuse low development cost/short life cycle inventions (like the so-called “software” inventions). One could opt for a shortened period of protection, for example, and a more rapid examination for a fast fuse invention like a software oriented invention that has a short shelf life. There could also be statutory damage provisions that spell out exact royalty rates and caps based on the special tier. The short term application could be converted prior to issue, or at least extensions could be provided in limited circumstances or conditioned on a mandatory “re-exam.”

    Applicants with more substantial inventions could continue with the standard Examination routes/pendencies.

    The only problem is that you could forsee an increase in these type of filings because of their cost.

    I know its a stretch, but if Dudas was smart, he would have implemented the new rules last November as a voluntary filing route. If the PTO could design a set of streamlined application procedures for such new subject matter dependent applications, and make them voluntary, there would be no issue of substantive rulemaking. The new procedures could include an initial screening to segregate applications that look like they really have something from those that are probably going to have a lot of relevant art.

    Then next thing the PTO should do is establish a separate search division. Hire and train professional searchers at a fraction of the cost of Examiners. Receiving offices and search offices could be set up all over the country. Cases could then be delivered to the Examiners with a preliminary search already done. The preliminary search could also be delivered to the applicant, much like the EPO, before substantive examination has begun to give the applicant a chance to make any adjustments to the claims or abandon the case. If the Examiner was unsatisfied with the search another one could be ordered, or the Examiner could perform his own search.

    One concern might be security, but the searchers would be prohibited from bringing materials out of the office.

  7. PDS,

    First, I agree with you in regard to 122(c) and have previously stated in these comments that I do not believe that business method applications should be treated differently than other subject matter applications. I just believe you were spinning E6k’s initial comment to mean something much more than it did.

    Second, certainly, familiarizing myself with the prior art is a primary reason I do searches, especially if I find something I can steal for a general background or some such.

    Third, why the low allowance rate? I don’t know. I suspect the Examiners go to the wall more on questioningly adequate art. Is the abandonment rate higher or the Examination period longer in 3600 or both?

  8. pds, you hit it on the head. Anyone thought about the sheer quantity of BS that arrives in the PTO mailroom each day as a contributing factor to the backlog? These business types are trying to pull a fast one (that is their trade afterall) but we can’t just say “this is BS” and get on with it. Examiners have the task of wading through the mountains of BS to figure out what’s actually being claimed and taking it seriously. I don’t examine in this area, but I imagine an examiner could spend all morning scratching their head over some three-page claim, rife with fancy lingo and gobs of bad/awkward grammar, only to conclude after lunch that they are merely claiming “auto insurance.” Is that what you’re paying your filing fees for? Does that really require any special expertise?
    And the classification system does need a lot of maintenance. It’s a shame too, since it’s still a billion times more efficient than text searching alone, especially in the mechanical arts, where there are dozens of terms to describe the same feature, similar to business methods, I assume. But there is a porblem when all the business method subs have 5000+ references in them (the ones I’ve looked in anyways).

  9. Legislative proposals such as published here again today, to allow more and better third party prior art submissions at a later date than 35 USC 122(c) [and its unnecessarily-much-narrower PTO implementation in Rule 1.99] now allow, are very popular with academics, Congress, and others who have never personally engaged in this practice or adequately examined the available facts. As you know, it has already been in pending legislation. The suggestion is well-intentioned (with the exception of certain patent owners intending to cynically argue that the mere unused presence of such a system should enhance the presumption of their patents validity). However, it would be effective for only a minute number of patent applications. Opposition to it is unnecessary, and potentially politically dangerous since it is so superficially appealing. However it is dangerously misleading to continue to suggest to Congress that it will be effective for patent reform, in that it may detract from far more important patent reforms.
    The reality is that third party prior art submissions will be made against only a minute percentage of patent applications, and thus cannot possibly be an effective panacea for patent quality improvement in general. The PTO patent application “protest” system for third party art submissions [which 35 USC 122(c) largely eliminated only in 1999] was used against less than approximately 100 U.S. applications a year, even with the ready availability of certified copies and publications from the foreign equivalents of hundreds of thousands of other pending U.S. applications. Presumably current Rule 1.99 prior art submissions have been used even less. PTO Rule 292 “public use proceedings” [also prior art attacks] against pending applications have been available for many years, yet are apparently used less than 10 times a year.*
    Most companies do not even conduct regular [expensive] “watches” for pending claims of others that might possibly be of concern to them among the hundreds of thousands of pending applications. Spotting applications that would thereby justify the costs of prior art searches and art citations is normally impossible to do effectively anyway. That is because the vast majority of patent suits or threats are against products that did not even exist until several years after the patents of concern had issued (as shown, for example, by statistics on the ages of litigated patents). Note also the pathetically small number of inter partes reexaminations filed against newly issued patents.
    Furthermore, there are very practical reasons for NOT citing prior art in applications of others even in the relatively rare cases where they might be identified while still pending. Even if one were aware of a client-dangerous patent application, and had found good prior art, why would one normally want to risk disclosing it to the PTO (and thus the applicant) in advance of issuance? To do so is telling the applicant that it has a potentially valuable patent application that it should diligently prosecute to strengthen the validity and coverage of resultant patents. That would also encourage that applicant to file divisionals and/or continuations until the potentially infringing products of the art citer can be identified and clearly covered with further claims. Even in the rare cases where a client might want to take that risk, sending material prior art by certified mail to the applicant’s prosecuting attorney for the identified application seems better than sending it to a busy examiner, who is too likely to make it of record but not apply it. The former provides the valuable possibility of rendering any resultant patent entirely unenforceable for inequitable conduct if the prosecuting attorney does not cite that art to the PTO.

    [The opposition of PTO examiners to being burdened with more work is an additional issue beyond the scope of this note.]

    *Since the PTO does not normally provide such statistics, they have been informally obtained over the years from former PTO officials and attorneys who handled such matters for many years. I have yet to have anyone challenge them.

  10. “Then why does the 3600 group have such an abysmal allowance rate? I’ve asked this question several times on this thread, yet nobody seems to have an answer.”

    Review the transaction histories/IFW’s of 09/193,787 and 09/077,337 and you will find the answer.

  11. “The analogy to electrical/mechanical devices does not hold up, because even mechanical/electrical ideas that people thought unpatentable often show up collaterally in other publications/applications.”
    Of course they do, but there is a whole bunch of electrical/mechanical devices that don’t see the light of day … then again, they wouldn’t be prior art would they??

    “Also, you must work in-house or have clients who aren’t that budget conscious.”
    Wrong on both accounts. If I do a search, it is do get familarized with the art, its terminology, some of the basic concepts, which is not the same as looking for prior art.

    “Are you kidding? Sure some do, but many are likely official or unofficial trade secrets (a much higher proportion than with other technologies).”
    Then are we talking about prior art?

    Leo …. nice points.

    “Also, business methods are much more likely to be unpublished than other technologies. So yes, the law treats all the inventions the same. However, business methods are much more likely to be nonpublished.”
    Then why does the 3600 group have such an abysmal allowance rate? I’ve asked this question several times on this thread, yet nobody seems to have an answer. IF (and I repeat “IF”) there is such a great difficult from the USPTO in finding prior art, why then is the USPTO able to (presumably properly) fail to allow so many applications?

    This, to me, is the elephant in the room, which all the supporters for making business methods a special class of subject matter that make it harder on applicant appear to be ignoring.

    If the allowance rate was 80-90%, then you would have something to complain about. However, since FY 2003, the rate has been between 10-20%.

    As a side note, many of the applications I see classified in 3600 should probably be better classified in 2100.

  12. Leo,

    By unofficial trade secrets I just meant company that practices that are not discussed outside the company. That alone will not generally convince a court that information is a trade secret.

    Also, business methods are much more likely to be unpublished than other technologies. So yes, the law treats all the inventions the same. However, business methods are much more likely to be nonpublished.

    The difficulty with showing sometjhing was readily known is that it is hard to prove behavior as many business methods are practiced without being recorded.

  13. “… many are likely official or unofficial trade secrets (a much higher proportion than with other technologies).”

    Right – e6k can’t find this stuff because it’s not prior art! And if nothing on point has been published, the claims should be allowed. What’s special about business methods here?

    In every other art, if you keep something secret, you run the risk that a later inventor gets a patent on your technology. With business methods, however, you get a free pass. (Section 273.)

    “In fact, one just issued recently with claims that I am fairly confident are invalid, because we and a hundred other companies were doing it well prior to their filing date.”

    If you’re actually aware that “a hundred other companies” are doing it, then I find it difficult to understand why this can’t be proved with actual documentation. If it can’t, then the claims are valid, regardless of any secret prior use. In any case, if true, then you and the hundred other companies each have a defense based on section 273. So what’s the problem?

    By the way, what’s the difference between “official” and “unofficial” trade secrets?

  14. A real concern to patent practioners (attorneys and agents) representing their inventor/assignee clients is that they will have to spend a lot of time and their client’s money answering every point raised by the potentially myriad third-party submissions. Additionally, another concern is that courts will later treat the third-party submissions, and particularly any points raised by the submitters, that are not fully and sucessfully answered by the patent applicant, as admissions or estoppels against the applicant.

    One possible solution, if third party submissions were to be allowed, is to put a provision into any law repealing 35 USC 122(c) that the third-party submissions are for the sole use by the patent examiner who is the sole arbiter of the relevance of any submissions and the use to which the information presented may be put in subsequent office actions, that applicants are only required to reply to official communications from the patent office, which shall not incorporate any third-party submissions by reference, and that courts shall not treat any such third-party submissions as part of the official record or any failure by applicant to answer such submissions as an admission of any point raised or as an estoppel. Thus, the examiner will have the use of such additional information presented by one or more third parties, without the submissions being a burden to or a harassment of the applicant. The applicant will still have to reply to the examiner’s action only, which will presumably include the relevant information as digested by the examiner.

  15. Posted by: in-house | Jul 07, 2008 at 09:55 AM

    Interesting hypo. I am not well-versed in Paragraph IV actions, though I certainly would like to see some of that work. So all of my comments below have that disclaimer.

    In your hypo, I would first point out the availability of continuation applications. It is my understanding that you can list more than one patent in the Orange Book for any given product. I believe it’s disfavored, since a drug patent is as valuable on the last day of its term as the first day (unlike other technologies), but it’s an option.

    “Now during litigation, Generic has manufactured facts for inequitable conduct!”

    Perhaps they’ve manufactured facts for an allegation of inequitable conduct. But, if the applicant’s evaluation of the art was correct, Generic won’t win on inequitable conduct, which is the fear. If the evaluation of the art was incorrect, that’s a different problem, which I can’t address here.

    “Alternative for applicant…”

    Again, the continuation application is available. This allows the first patent to issue and be listed in the Orange Book, then your continuation (with the third-party provided art cited during prosecution) can be added when it issues. Alternatively, I believe the FDA can grant patent term extensions too, or something similar, right? I don’t know when/how, but that’s another option.

    Again, I am unfamiliar with Paragraph IV actions. I am not aware that you can file the Paragraph IV certification before the patent is listed in the Orange Book, and I thought the applicant got 30 days after the patent was issued to list it in the Orange Book. I thought you always got the 30-month stay.

    As for price erosion, I think that when the patentee wins the litigation, you can claim damages on this aspect as well.

    “Generic floods the market with product forcing Applicant to sue when patent issues… See Sanofi v. Apotex – Plavix.”

    Are these two sentences connected? As I understand, Apotex was able to release their generic version early due to poor language in their efforts to settle the case.

    “So what is one to do?”

    Alas, the answer to that question will always depend on the facts, won’t it? There will almost never be upfront certainty on your patent position, simply because you can never know what prior art will be found with the unlimited time and money available in litigation.

    One thing’s for sure though: don’t rely on my answers for any actions you take.

  16. PDS wrote “The art likely resides in other places (i.e., business magazines, text books, case notes, trade magazines, newspaper articles, etc.)”

    Are you kidding? Sure some do, but many are likely official or unofficial trade secrets (a much higher proportion than with other technologies).

    And of the ones that are not the exact methodology is unlikely to be the subject of a publication.

  17. MaxDrei, You assume perfect justice in the ultimate patentability decision at the US PTO. Publication places the applicant at the mercy of the system. No system lacks unjust biases. Acceptance of the outcome of an examination should be voluntary, not mandatory. Publication destroys the ability to change course say if business conditions are altered or you run out of money or can not wait 3-5 years. And submarine problems are really limited by the 20 year term from earliest filing, not publication.

  18. PDS,

    The analogy to electrical/mechanical devices does not hold up, because even mechanical/electrical ideas that people thought unpatentable often show up collaterally in other publications/applications.

    Also, you must work in-house or have clients who aren’t that budget conscious. While I have had few professional patent searches conducted, I almost always spend 45 minutes to an hour searching myself prior to creating an application, no matter how original the idea. When I was in private practice this could ultimately save the client a lot of money, especially on simple mechanical or electromechanical ideas.

    Clients who are unsophisticated with respect to patents tend to believe that if they have not seen their idea in the market or in industry then it must be novel. I had a couple clients who were grateful when I had them in to discuss a couple patents I found. In some cases, the patents I found were used to refine the claims to some subject matter that was patentable.

    There have also been many cases where my instinct was “that has to be out there.” However, when I searched I could not find anything. Sometimes, I ended up filing some very broad claims.

  19. Same old song and dance. New technologies have always presented a challenge for examiners. The solution is to fix the Patent Office by hiring educated examiners, not illiterate recent graduates who likely would have trouble being hired by cutting-edge companies in their chosen engineering or science fields so they turned to the USPTO as employer. Hire examiners with expertise. Hire more examiners. Educate the existing examiners. If the PTO needs to charge higher fees, let it (and let it keep the revenue!). But let the at least theoretically unbiased PTO do its job before turning to radical solutions like letting biased third parties get involved.

  20. “AQS baby, they do the wild goose chasing for me. They know that 99% of deps are directed to old subject matter they just chucked in, and they can likely find a reference for it during their search. That’s really my only hope for the AQS being of value. I believe I went over this before.”

    The problem isn’t finding a reference with the dependent claim. It’s finding a reference that covers the independent AND the dependents, as you state. If it’s so difficult for you, a master USPTO trained searcher, to do, why do you think the applicants are going to find it for their AQS?

    AQS is an attempt by the pto to shift the burden of examination on the applicant.

    You know, I would actually be ok with the AQS if we codified some protection for practitioners. I actually like the applications I get to draft where the client has paid for a real search. I read all the art my searcher finds and draft carefully around it. I feel much less likely to get blindsided by a 102 reference in prosecution of those apps.

    Back to protection for practitioners, if I employ a qualified, reputable searcher who fails to find a reference that later invalidates the patent in litigation, I don’t want to be able to be sued for malpractice over that. Likewise, I don’t want to be able to be accused of inequitable conduct because my searcher didn’t find a certain reference and thus I didn’t submit it in an IDS.

  21. One last point … just because an examiner cannot find good prior art for business methods doesn’t mean that the prior art isn’t out there. It means that the examiner doesn’t have the resources or the ability to search for the art. The art likely resides in other places (i.e., business magazines, text books, case notes, trade magazines, newspaper articles, etc.), which is not the classic place for examiners to search.

    However, this problem does not reside with business methods alone. The searches in many other arts would be more comprehensive if the examiner had better access to non-patent literature. A better reponse to the problem of searches not finding prior art is to make ALL FORMS of the prior art more accessible to the examiners, not just for business methods, but for all arts.

  22. “He was just lamenting a inability to find sufficient art.”
    No … he was lamenting on not being able to find sufficient art to support his already predetermined conclusion of unpatentability.

    BTW, unlike 6K, when a client gives me a disclosure I almost never prejudge the patentability of an idea. Only when I know, with a very firm conviction (which is far, far more than just a gut feel) that something is not patentable will I actually go out and scour the prior art. I’ve only had to do this a couple of times, and in each instance I was able to find 102 art. Otherwise, I will assume that the concept is patentable until the facts show otherwise.

    The problem with 6K (and most examiners) is that by predetermining the decision before the facts are in they tend to fudge the facts (and other things like claim construction) when the facts don’t work out the way the way they wanted. Instead of gathering all the evidence, evaluating it, and then asking “is the invention patentable over the evidence I have gathered?” they’ve already made that determination. If it was done properly, I would be seeing far more 1st action indications of allowable subject matter (even if it is just the dependent claims) than what I’ve seen over the last 5 years.

    As for MM, he deserves anything he gets. He is a blight on this board.

    “If it is a business method, other companies may practice it and may not have a printed publication or other evidence to support the idea that it’s old.”
    You can say that about just about any other art, with perhaps the exception of biotech (in which anything of even remotely useful value is source for some published article). Not every mechanical/electrical device of chemical/material composition gets patented. Also, many companies just don’t even bother to patent things. Given that the rate of allowance is already so low for business methods, I don’t see the need to institute special measures for business methods.

  23. It’d do as much to reduce backlog and examination difficulties, to repeal continuations for business methods. Then, set up a special panel for the Board of Patent Appeals & Interferences to handle this special brand of patentable subject matter; give them funds to appoint masters; and, allow amicus submissions.
    That’s cut to the chase a lot quicker than a series of continuations and ex parte amendments and interviews.

  24. Having said all that, I agree with those who say if you are going to repeal 122(c) for business methods, it should be repealed for all subject matter categories.

  25. I mixed up my thoughts while editing y previous post on the fly. I meant blew E6k’s statement out of proportion. Two different ideas converged there accidentally.

  26. PDS and All Seeing Eye,

    MM actually provides a somehwt reasoned response and you jump all over him. I do believe PDS blew E6k’s statement out of the water. There are so many legitimate reasons to criticize E6k, why choose a glib response?

    E6k did not say (here) that he would issue a rejection without the proper art. He was just lamenting a inability to find sufficient art. And the fact is just because he cannot find art DOES NOT MEAN IT IS NOT OLD. If it is a business method, other companies may practice it and may not have a printed publication or other evidence to support the idea that it’s old.

    I am sure many business method patents that issue are apparently anticipated or obvious until a search is done, and then the broadest claims are likely still anticipated or obvious.

    I have seen many business method patents issue that claim methods I am sure are old, because I have seen them. In fact, one just issued recently with claims that I am fairly confident are invalid, because we and a hundred other companies were doing it well prior to their filing date.

  27. if third party technical expert doing more than IDing obscure prior art for PTO, could be problematic. technical expert not necessarily phosita or speaks well for that mythical creature. more ksr and after effects on examination.

  28. Posted by: blind double | Jul 07, 2008 at 08:36 AM
    blind double – 37 CFR 1.99 is for third party submissions to the Examiner.

    The real dilemma is when a third party holds art that is not cited during prosecution. The third party tracks PAIR and waits until the notice of allowance is posted (but the patent has not yet issued). Then, they send a friendly (but anonymous letter) to the Applicant/applicant’s attorney stating “Hey, you might find this piece of non-cited art interesting to your invention.”

    Now, applicant is in a dilemma. Applicant may read the art and say: “This is merely duplicative to the other references that were already cited in the prosecution history,” or “This reference is clearly distinguishable to the extent a reasonable Examiner would not even have considered it.” Assuming either of these responses, Applicant does nothing. Patent issues.

    Now let’s assume that we are in the Biotech arena – issued patent is listed in the Orange Book. Generic files Paragraph IV, litigation (and 30 month stay) ensues. For fun, lets say Generic was the third party who sent the friendly letter RE: un-cited art to applicant. Now during litigation, Generic has manufactured facts for inequitable conduct!

    Alternative for applicant – upon receiving friendly letter, applicant could have filed RCE with IDS to have reference considered. This would, however, delay issuance of patent and delay when the patent could be listed in Orange Book. Therefore, if Generic files its Paragraph IV before the patent is listed, then no 30-month stay. Generic floods the market with product forcing Applicant to sue when patent issues. If Applicant is successful in his suit and an injunction granted, generic product must be pulled from market, but price erosion of branded (and patent protected) product has already occurred. See Sanofi v. Apotex – Plavix.

    So what is one to do?

  29. “The hallmark of a good judge (and jury) is the ability to suspend judgment until all the facts are in.”

    Nobody gives one tiny sht. Not one.

    “This is why the rejection needs to be based upon evidence and not some gut feeling.”

    No kidding? We still judged it at the outset.

    “Poor judges do it. ”

    Feel free to label anyone anyway you like to, again, nobody gives one tiny sht and everyone who feels like it (and moreso everyone) will still judge the claims the minute they read them.

    Also, I would have to say that I believe that a good jury is able to Say, “maybe they are guilty, maybe they aren’t” until all the facts are in, not that they haven’t judged them already. They’re already evaluated a lot of evidence, that in their minds, after they first read the case. If you believe for one minute that the best jury in the world asked if an invention claiming mere copper wire is invalid if filed in 2008 hasn’t judged the case already before any facts are even presented to them. They might be willing to suspend pronouncing judgment, but it’s already been made.

  30. “An overly-broad claim has got to be the easiest to examine, so why are you complaining?”

    You never will understand the difference in finding the ind in 10 minutes and having to search for deps for god knows how long will you? I should hold a “be an examiner for a day” for those who think like you. I’d love to see how many deps are indicated as allowable when they’re not, and you have to go back on your word when they send in the response. I suppose the time it takes to have to write an entire new action down the line doesn’t mean much to you either. As you so readily point out, if I find the overclaim and don’t find the invention in the spec then all I’m doing is shifting the search to another day, and making the applicant waste his first “go”.

    “you’ll be retired before the USPTO ever gets to a point where the number of claims getting examined gets substantiall reduced below 20/3.”

    AQS baby, they do the wild goose chasing for me. They know that 99% of deps are directed to old subject matter they just chucked in, and they can likely find a reference for it during their search. That’s really my only hope for the AQS being of value. I believe I went over this before.

    “of about the well over a thousand patents I’ve prosecuted in my days, my guess is less than 5 of those patents would have been anticipated by over 300 references”

    You obviously don’t know how many references there are out there and you also don’t practice in my area.

    “Complaining about such things as the application of 112 2nd paragraph and overly broad claims only gets you labeled as a wacko.”

    I’m not even complaining in that post above, what I said just happens to be how it is, no complaints necessary.

    “The authors’ proposal does away with this important trade off. ”

    Um, in case you didn’t notice, the pgpub already does away with this in the majority of cases anyway. Maybe you’ve been hiding out under a rock for the last few years?

  31. “Uh … so what? Judges do this all the time. Nothing wrong with it. “Hey law clerk, I seem to remember a case like this one. Look it up.”"

    Stop setting up your strawman MM. We are wise to your ways. My comments were about assuming the existence of facts … and not the existence of law.

    “Second, the lack of readily searchable prior art relating to business method claims is one of the reason that wannabe patent trolls love to file them.”
    Really … talking out of your a$$ again? Actually, not talking out of your a$$ is the exception. Are you that ignorant that you don’t know that the allowance rate in the 3600 group (i.e., business methods) is the lowest around? If the “lack of readily searchable prior art” is such a problem, why is it they are allowing so few applications?

    Actually, MM just proved my point … goes off on a rant (while assuming a certain set of facts) while at the same time the actual facts point to an entirely different conclusion.

    Classic MM, really, classic.

    “What are you talking about? Everyone in their right mind knows that anyone “judges” an application/patent when they first read it.”
    The hallmark of a good judge (and jury) is the ability to suspend judgment until all the facts are in. We went over this several months ago, but there is ample evidence that what many people believe are “facts” are actually not facts. Memory is fickle, and what one thinks he or she remembers to be true may not be true.

    Also, examiners may have it in the back of their head that “I’ve seen this before.” That may be true. However, you may have seen it before by reading a piece of art that may not be PRIOR art. This is why the rejection needs to be based upon evidence and not some gut feeling.

    “Coming to a conclusion before the fact is lazy and poor practice. One of the most annoying practice habits I know of. Poor judges do it. No wonder Mooney likes it. Glib and thoughtless snap judgements are the kind of thing that appeals to Mooney’s lazy, overly opinionated, snarky, cynical poverty oriented mindset.”
    Very well said.

  32. “E6k, how much time do you usually spend in this kind of search? ”

    Classification search? Depends on the app. Could be 30 minutes reading through the whole class, could be 2 hours reading through 4 classes I’ve never looked through before that are full of terms I don’t understand trying to figure out where the f the thing goes. Could be 1 minute if I’ve done 2 other cases of its kind. Could be .05 minutes if I’ve done 10 cases like it and already know the subs. How do you think primaries make their searches so much faster than juniors? They already know where to look. Anyway, after doing the classification designation then you do the search, and that depends on how many subs/ref’s in the subs. Could take 30 min could take 12-inf hours. If the search only takes 30 mins though that just leaves you time to spend actually reading refs better and doing some NPL to find out exactly what is going on in the art without lawyer bs getting in the way. Every once in a blue moon you’ll find an app that has a nice neat classification, has 3 or 4 pieces of 102 art on the whole invention as disclosed in the spec, and you can call that app done a bit early.

    Of course, that’s just my experience. I should also add, if we didn’t “judge” the claims up front, then we’d never search more than 1 subclass, and we’d never do a text search. We sure as hck never do “one last search to ensure the last 10 weren’t quite what was needed” that just happens to find that 102b. And finally I’ll add that the situation where the initial judgment of the claims is “meh, might be, might not be” isn’t that rare.

    Now’s as good a time as any to let everyone know the results of my latest observations. To give you an idea of hours per FOAM, I officially have around 10 hours per app to do a non-final all told. I actually have closer to 11, but factoring in all the bs emails mini meetings blah blah, hours are wasted on administrative bs that aren’t accounted for by othertime. In those 10 hours the following goes on.

    1. Read the spec/claims. 45 minutes – 3 hours.
    2. Find classification. 30 minutes avg.
    3. Search classification. 3-5 hours avg.
    4. Search google (alternatly comes before 2 if I’m feeling lucky, and is repeated after 3 after I know better what to google) 10 minutes-5 hours.
    5. Read art, check IDS/priority. 3 hrs-5 hrs.
    6. When the process has gone on for at least 10 hours, spend at least an hour (usually in 30 minute chunks) telling pds why he’s bad at his job.
    7. Read caselaw if needed. 0-5 hours.
    8. Search IP.com?/Expresso etc. 1-2 hours.
    9. Write OA. 1-3 hrs.
    10. Misc. 0-5 hrs.

    Interestingly you can see that the lowest amount of time that was even possible was around 8ish hours. All told, I’m lucky to get out with around 15 hours avg per FOAM based on the numbers I took the last month. Of course, I could leave out the hour of telling pds how bad he is, but come on, an hour of entertainment in the middle of the 15 is totally worth it amirite? In any case, fyi, this method results in around 95% of all claims that pass over my desk being validly rejected at least once. I would venture to say that 80%+ are rejected such that the validity of the rejection is not even remotely questionable (I don’t base this statement on their failure to traverse). All of this said, if I were to cut out the last 4 hours or so of the process I would say that the percentage of claims rejected would go down to at least 80% and the unquestionable rejections would go down to at least 60%. It is very easy for me to see why you recieve faulty actions quite often.

  33. Dan, Either the inventor has disclosed something new and not obvious, or he hasn’t. If he hasn’t, then the A publication deprives him of nothing. If he has, then A publication helps him, because it intimidates the competitors, all the time the app is going through examn on the merits, because the uncertainty as to what Applicant will get issued extends wider than the scope of any claims he might actually take to issue. So, on balance, 18 month A publication is a plum for the Applicant. And it does destroy the mischief of the submarine patent. The concepts of 1) presumption of validity of the issuing claims and 2) no chance for the public to expose the invalidity of those claims till after issue, are incompatible, aren’t they? Do you see a role in the USA for a German-style Gebrauchsmuster system, to run in parallel with the twenty year “full” patent right, with a ten year term exclusive right, scope determined by claims (just like a real patent) but no pre-issue examination on the merits and no pre-issue publication. Some US corporations seem to like the DE GBM a great deal, judging by the numbers they file in Munich.

  34. “Guess what is popular practice right now? Overclaiming to the point of encompassing enough references to fill a proper sub (read 1-300 patents in it) or two at the outset.”

    What are you complaining about? On average, you’ve got about 20 claims to examine. Considering that many sets of claims include duplicate limitations, you’ve just knocked off one claim (and a substantial portion of others) in about 2 minutes. An overly-broad claim has got to be the easiest to examine, so why are you complaining?

    Oh, I forget, you really only want to examine one claim. Sorry charlie, applicants pay to get ALL their claims examined, so suck it up because you’ll be retired before the USPTO ever gets to a point where the number of claims getting examined gets substantiall reduced below 20/3.

    FYI … of about the well over a thousand patents I’ve prosecuted in my days, my guess is less than 5 of those patents would have been anticipated by over 300 references (and of those, I didn’t write any of them). From my experience, the reason why claims are broader than intended to be is that some attorneys (who aren’t very good at drafting) assume certain limitations are in the claims when they are not. I very much doubt that anybody claims an invention in such an overly broad manner becaue there is no realistically useful purpose for it. Nobody is going to take a license on a patent that hasn’t issued with really broad claims. Moreover, given the USPTO’s policy of rejecting everthing (no mater how bad the art), it isn’t likely that such an overly broad patent will slip through the cracks … and if, for whatever crazy reason, such a patent slips through the cracks, any competant attorney will invalidate the broad claims through an ex-parte reexam.

    6K … you would be more persuasive if you stuck to actual controversial topics. Complaining about such things as the application of 112 2nd paragraph and overly broad claims only gets you labeled as a wacko.

  35. “This sounds pretty serious. Why doesn’t the PTO bring in professors or industry experts to conduct seminars to provide this expertise to the examiners?”

    Because it would make those insecure government people look bad.

  36. Currently, third-party submission can only be done within 20 months of filing (i.e. 2 months after publication) or before a notice of allowance, whichever is earlier; see 37 CFR 1.99. I suspect it is “whichever is earlier” to prevent pds’s suggestion of extending prosecution at July 6, 11:17pm. Would extending the first deadline of 2 months after publication be helpful here?

    Alternatively, why not allow third parties to submit explanations? If third parties think the application is important enough to spend money against it in litigation, why not let them spend money against it in prosecution?

  37. This proposal fails to address one important underpinning of the patent system – the underpinning that a patent is a trade between an inventor and the public. If the government grants an inventor for a limited term of years the right to exclude, then the inventor will lay open for all to see how to make the invention. But if the inventor can not obtain such right, then inventor can reserve the ability to not lay open the invention and instead resort to secrecy for protection.

    The authors’ proposal does away with this important trade off. Efficiency should not be traded for contractual fairness. Furthermore, this trade off is one of the important underpinnings of the farness in the US patent system that does not exist on other foreign patent systems. Foreign patent systems including the PCT typically mandate publication at 18 months. Perhaps we should instead ask the PCT to keep secret all applications with US priority claims until grant in one country.

    Third party submissions are still possible for the majority of those US patent applications already published by the US PTO. Perhaps the rule changes should focus on making the process for the few third party submission actually work well, such as via peer-to-peer, rather then taking away the rights of those who can not trust they will get a decent patent.

    The US PTO has big problems with its long pendency. Most inventors are astounded when they learn that their application will literally sit in a stack for literally years before being even first read by an examiner. Taking away an inventor’s option to go secret upon inadequate protection, however, is not the solution.

  38. The “patent bar” also needs to improve the quality of the applications that they are filing at the patent office, and hold its own accountable for the crap that is being filed. Often times if the attorney prosecuting the case would draft claims around the prior art that they are aware of rather than turning a blind eye to it the rate of prosecution of the backlog with in the office would increase dramatically.

  39. third party pre-issuance opposition: assuming you don’t want a litigation boondoggle if you can avoid it, just send a stack of references to the applicant’s counsel with some notes describing why the Examiner would consider them material.

    rule 56 will work just fine, whether or not rule 122 ever arrives.

  40. “We make a determination of what it is we need to find, where we think it’s likely found (i.e. we think there is a reasonable chance of finding it already) then we go and search there.”

    OK, I guess I am a lot more naive than I thought, because I was kind of shocked to read this. E6k, how much time do you usually spend in this kind of search?

  41. “Bitter party of one, your table near the kitchen is ready, bitter party of one…”

    Either Mooney is a girl, or “he” has a gf/wife. “His” dog just ate a tampon the other day.

    “There a big difference between making a judgement about where to do a search and judging whether something is patentable or not just by sniffing the file jacket like Mooney does.”

    Is there? That depends on how narrow the classification is and how broad the claim is. The better (read more narrow) the classification system the easier it is to judge patentability based on mere subs. Guess what is popular practice right now? Overclaiming to the point of encompassing enough references to fill a proper sub (read 1-300 patents in it) or two at the outset. In the end, the only reason you feel this way is because our classification fails so horrendously right now. My entire class could use splitting down the middle and an overhaul of subs and everyone knows it.

  42. There a big difference between making a judgement about where to do a search and judging whether something is patentable or not just by sniffing the file jacket like Mooney does.

    Incidentally, Mooney especially likes those well handled file jackets that circulate on hot Friday afternoons in August after the all you can eat chicken wing barbeque at Crystal City Restaurant. Those always smell “obvious.”

  43. Mooney is bitter because he can’t seem to make any money with his “protein folding” one trick pony show.

  44. Mooney just hates the idea of anyone making money. Too bad that he is so bitter. The classic poverty mentality… “Bitter party of one, your table near the kitchen is ready, bitter party of one…”

    Mooney probably sits around his dingy room grumbling about those “fat cats” while he eats his plankton.

    Coming to a conclusion before the fact is lazy and poor practice. One of the most annoying practice habits I know of. Poor judges do it. No wonder Mooney likes it. Glib and thoughtless snap judgements are the kind of thing that appeals to Mooney’s lazy, overly opinionated, snarky, cynical poverty oriented mindset.

    Hope that works out for you Mooney.

    Personally, I prefer to gather as much information as possible and suspend the base instinct to come to a judgment before the fact.

  45. “You just ADMITTED that examiners make a determination as to patentability, WITHOUT THE FACTS, and then later go searching for the facts to support their position.”

    What are you talking about? Everyone in their right mind knows that anyone “judges” an application/patent when they first read it. That’s unavoidable, just like judging a new girl you meet is unavoidable right when you first see she’s 300 lbs overweight. You can avoid trying to noticably be biased against her if you like, but it doesn’t change the fact that you judged her. Nobody has ever pretended that examiners read the claims then just wander aimlessly out to see what’s out into the subs and then search them. We make a determination of what it is we need to find, where we think it’s likely found (i.e. we think there is a reasonable chance of finding it already) then we go and search there. End of story. If you don’t like it cry more, nobody gives a rat’s arse.

    Seriously, if you need any more admissions of the obvious feel free to write me at examiner6k@yahoo.com anytime and I’ll be sure to get to them … never.

    I wonder about you sometimes pds, maybe the boozing is still wearing off from the weekend?

    Staying on topic though, I agree with you, reality somewhat dictates that there be substantial safegaurds against the 3rd party screwing with prosecution too much. If these guys’ idea were to be implemented then the statute would have to be replaced with numerous rules/minor statutes.

    Although, as to them withholding the best art and dragging out prosecution … meh, idk about that one, they’d want to kill the thing with fire up front it seems to me. How can they tell when an examiner might disagree with their characterization of a “weak” reference and then the application goes to issue? Also, what if examiners are already doing this withholding of references to poor ol’ you? What then? We’ve already been over that. (Note here that no admission was made by proposing that question. I used parenthesis, now you as a lawyer cannot miss it OK?)

  46. pds froths at the mouth: “You just ADMITTED that examiners make a determination as to patentability, WITHOUT THE FACTS, and then later go searching for the facts to support their position.”

    Uh … so what? Judges do this all the time. Nothing wrong with it. “Hey law clerk, I seem to remember a case like this one. Look it up.”

    BFD. Nobody cares. Except pds and a few other members of the sad patent luvvah’s circular firing squad who spend way too much time fisking e6k’s posts, most of which are little more than somewhat windy recitations of mundane facts that serious prosecutors digested long before they took the patent bar. That’s not to say that those facts should not be mentioned again. Evidently there are a few hysterical souls out there who haven’t received the message.

    Then pds laughs his behind off at e6k’s comment re “we have the expertise, what we lack in biz methods etc. is the ability to find art to support our positions”

    Not funny. First, pds “carelessly” ripped the quote from e6k’s comment thereby omitting the modifying clause “so much that the applicant can’t steam roll the rejection at the board.” Second, the lack of readily searchable prior art relating to business method claims is one of the reason that wannabe patent trolls love to file them. You don’t have to actually DO any research or experiments to file a business method application. You just have to find something that nobody ever imagined was worth patenting before and voila!!!!! you are halfway there!!! Then you puff up the claims with a bunch of vague but fancy sounding terms (“dynamic analysis protocols” “pairwise identification of latent market potentials”) and you are 70% there. Mix it all together with some dependent claims reciting a “processor” and OF COURSE throw in a paragraph and something about “wherein said method leads to reduced energy consumption by said business unit” and you’ve got yourself at least one mentally challenged trust fund manager.

    Now that you’ve got the appeal before the Board bankrolled, you can call up some bigshot litigator in Aspen and figure out who you are going to name as the defendant in the suit that you will eventually file in a Texas district court.

    It’s really too bad that KSR made it more difficult to make money this way. A real pity.

  47. Exactly how has “Peer to Patent” shown us anything? It has been more or less of a no impact program. Particularly given that the ability for third parties to submit art has been around for years. Why do we need goofy “programs”?

    I’ll tell you why, so that people that have don’t have a patent law background and have no idea what they are doing, but really, really, really WANT to be involved because they heard it was somehow cool, can feel like they are involved somehow in the process.

    The biggest danger to the patent system? – M0R0NS.

  48. “A growing public perception is that patents inhibit innovation.”

    I am not sure if this precise question was polled, but I wouldn’t pay much attention to it either way.

    I think a more accurate description of “the public’s perception” is that patents inhibit the public’s ability to use or acquire the fruits of technological developments that would otherwise be accessible more cheaply and/or more readily.

    Even in the biotech area, patents don’t inhibit innovation so much as they limit the availabity of products (e.g., by making them more expensive). I think the public understands this, in spite of the efforts of pro-patent kool-aid drinkers trying to scare people into believing that we’ll all die of disease at age 40 if researchers aren’t allowed to claim 100 quazillion sequences each time they isolate a new protein.

  49. pds — I think that some examiners (or their supervisors) have a “gut feeling” that certain inventions are not patentable, irrespective of the prior art.

  50. “we have the expertise, what we lack in biz methods etc. is the ability to find art to support our positions”

    hahahahahahahahahahahahahahaha … no wait …. hahahahahahahahahahahaha

    Classic statement, 6k, classic.

    You probably didn’t realize it when you wrote that statement, but you just admitted to the very thing patent prosecutors have been complaining about examiners for years and years. Specifically, instead of first considering the evidence and THEN making a conclusion as to patentability, as it SHOULD be. You just ADMITTED that examiners make a determination as to patentability, WITHOUT THE FACTS, and then later go searching for the facts to support their position.

    This is exactly why we see so many poorly reasoned rejections. An examiner, after concluding that the invention isn’t patentable (actually, I take that back … after receiving not-so-subtle hints from the powers that be to “reject, reject, reject”), finds all the limitations except for maybe one, two, or a few key limitations. This is where the fun begins.

    First, start using the “broadest, reasonable interpretation” standard to unreasonably read limitations out of the claim. Why find a limitation when you can construe a limitation in such an unreasonable manner that the limitation no longer exists?

    Cannot find a limitation? Then just cite to 2 columns in a reference and assert that the limitation (and four or five others) are found in that cite and let the applicant tell you why it isn’t there. Hey, you know it isn’t there, but it is fun to see what the applicant will do.

    Of course, you can always find the limitation somewhere else … it may be in a completely non-analogous piece of art and would never be combined with the primary reference … but what is the expression … if you aren’t cheating, you aren’t trying, but in this case its if you cannot throw together an obviousness rejection (no matter how silly), you aren’t trying.

    Again, thanks for the admission 6k!!!!! Actually, is this something that you are taking “Official Notice” of? If so, I promise I won’t challenge it because your statement regards common knowledge that is capable of instant and unquestionable demonstration as being well-known.

  51. I love it when reality exits stage right.

    What’s good for one should be good for all. If you are going to repeal 35 USC 122(c) for business methods, why don’t you repeal it for everything?

    Getting back to reality … peer to patent may have worked for what, a couple hundred patents, maybe??? Actually, I just went on the website, there is maybe 20 active and 30 archived patents. Wow!!!! a total of about 50 whole patents. What happens when that number is 500, or 5,000, or 50,000 or something close to 250,000 patent applications per year. How much peer input are we going to be seeing?? My guess is not much. The novelty (pun intended) is going to wear off real quick.

    Notwithstanding that most applications won’t ever receive even a single reference, what happens to those patents in which competitors are going to want to play “games” with the process. Submit a piece of art, say … once every couple of months … hold the really good stuff until last …. heck they could delay prosecution for years longer than it already takes.

    Also, if the PTO gets its way and, either by regulation or law, forces applicants to characterize prior art to the nth degree, will such requirements be placed on third-party submitters? or do they get a pass?

    “We see no reason why the same principles can’t be applied by the USPTO so that examiners, with the proper safeguards, can work with third party technical experts to get higher quality patents to issue in substantially less time.”
    Not only has reality left the stage, reality has left the building and is driving all night into the middle of the wilderness.

  52. “This sounds pretty serious. Why doesn’t the PTO bring in professors or industry experts to conduct seminars to provide this expertise to the examiners?”

    No. 1 because everyone feels like the best way to learn the art is to trudge through it examining applications. (I have to admit as an aside that I at least partially agree) No. 2 because if we do that more than we currently are then we’d quickly find ourselves spending more time in the classroom than examining. While that isn’t such a bad thing overall, it’s horrible for the backlog.

    Imo though you’re right, we have the expertise, what we lack in biz methods etc. is the ability to find art to support our positions so much that the applicant can’t steam roll the rejection at the board.

    Overall, I’m kind of surprised that if someone finds a PGpub that hasn’t been issued yet that they’re concerned about being sued over later that they don’t just email the art straight to the examiner as anon.

  53. If the “third party technical experts” are currently aware of a good set of prior art which is not accessible to the examiners, the Patent Office should make arrangements to add it to the data bases which the examiners use.

  54. The claims are never “set in stone” since reexamination is possible (especially broadening reissue within the first two years)?

  55. The Fifth Amendment dilemma: not taking the stand allows the jury to infer guilt even when the prosecution cannot comment on not taking the stand. Opposing the submission of prior art allows later for others to infer that the art is invalidating. Then accused infringer’s counsel will spend a few hundred K of your money in discovery expense investigating why you opposed the submission of prior art. Then you will be accused of inequitable conduct. Then the judge and jury will consider the prior art. All of this after the claims can no longer be amended.

    GOT PRIOR ART? Send it to me and I will submit it. And I’ll tell the Examiner who sent it to me so he can call you if he wishes. Let’s do everything before the claims are set in stone.

  56. Mark and Tom, you want to delay the examination process even longer? Why not file a reexam the day the patent issues?

  57. “The USPTO can’t keep up with demand in part because it lacks technical expertise in many fields.” The PTO lacks “technical expertise”? This sounds pretty serious. Why doesn’t the PTO bring in professors or industry experts to conduct seminars to provide this expertise to the examiners?

    (I have heard that the PTO has difficulty retaining junior examiners, but not that the PTO lacks technical expertise.)

  58. here’s a question. The statute says that pre-issuance opposition can’t occur without consent. Are there procedures in place if consent is given? Has this ever happened?

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