Guest Editorial: Obama Put Forward Sound Priorities on Patents Last Year. McCain May (Finally) Get To It Soon.

Editorial by Arti Rai, Elvin R. Latty Professor of Law, Duke University

From the perspective of a candidate running for President, articulating a position on the subject of patent reform might appear a fool’s errand. For many (perhaps most) voters, the subject will be impossibly arcane. Within the small group that closely follows the highly divisive debate (e.g. patent litigators and prosecutors, stakeholders in the various industries most affected by patents), virtually any position a candidate takes will alienate a significant percentage.

Complicating the situation further is the reality that the patent system has so many moving parts. In particular, for better or for worse, a large chunk of patent policy is currently made through Federal Circuit decisions. For good reasons, the Constitution insulates Article III judges from direct Presidential control. But the result of this lack of control means that reform proposals that a President can readily implement, and that might appear sensible on first examination, can be undermined by judicial action. For example, requiring disclosure of prior art by applicants (who presumably know a lot about their area of invention) might seem sensible. But the reasoning behind the policy is undermined if the Federal Circuit decides to invoke a highly aggressive doctrine of inequitable conduct.

So ignoring the subject – as Senator John McCain has done, at least thus far, may be the politically expedient course. (We will see if the McCain technology plan, about which McCain advisor Michael Powell has been dropping hints and which is supposed to be unveiled formally soon, talks about patents.) But politically expedient behavior on an issue as important to innovation, and our country’s future, as sound patent policy is hardly what we want from our next President.

What is striking about Senator Barack Obama’s approach is that he has not only articulated a position, but that he did so back in November 2007, as the patent reform wars were raging in Congress. (Senator Obama’s position appears in the technology platform that he released at Google last November.)

Senator Obama’s approach reflects a nuanced understanding of the concerns of the various stakeholders. It also reflects an ability to rise above narrow interest group politics and suggest creative solutions not contemplated by the interest groups most active in the latest round of the Congressional reform wars.

For example, the Senator says that when "dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity." Thus he comes out in favor of a "second window" for post-grant administrative review of patent validity at the time the patent is asserted. As IT firms that are faced with constant litigation threats have pointed out (and as other countries’ experience with post-grant review shows), this option could represent a real savings relative to expensive litigation over patent validity. Moreover, at least in the long term, the availability of this option might reduce the incentive to file dubious patent applications in the first instance (and hence might reduce the current backlog of over 700,000 patent applications).

At the same time, Senator Obama’s plan accommodates the interests of those firms (e.g. biotechnology and pharmaceutical firms) that have made reasonable arguments about their need for early certainty about patent validity. It provides for an option not contemplated in the Congressional debate – self-selection ex ante into "rigorous and public peer review that would produce a ‘gold-plated’ patent." Under default principles of administrative law, gold-plated patents would be much less subject to future administrative or judicial challenge.

Of course, much of the devil will be in the details. For example, as the GAO has recently pointed out, management and personnel practices at the PTO need to be improved substantially in order for the PTO to retain the qualified examiners necessary for implementing even existing procedures. New procedures will require even more attention to reform of internal PTO practices.

A Presidential candidate’s policy proposals cannot include all of the details he might contemplate. But Senator Obama’s willingness to stake out some clear reform positions early in his campaign, and at a time of great sensitivity over the issue, performs what economists call a signaling function. The Senator has sent a signal that he would take patents seriously, both in terms of substantive proposals and in terms of the people he would appoint to formulate and implement these proposals.

130 thoughts on “Guest Editorial: Obama Put Forward Sound Priorities on Patents Last Year. McCain May (Finally) Get To It Soon.

  1. According to Ms. Rai’s bio it does not appear she has any working knowledge of the patent system. She is not a patent practitioner -attorney or agent. She has never filed or prosecuted a patent application, nor has she ever litigated or licensed a patent. If I am mistaken, please correct me. Otherwise, what then in heavens name makes her competent to comment on the patent system? We might as well have her redesign and build New York’s twin towers!

  2. I like keeping roughly half of the money I earn. Effective tax rates in the 60% plus range don’t interest me much. I won’t be voting for Obama.

    Maybe he’ll just quit if he falls behind in the polls. He follows them more than a moral code or principle of government anyway.

    I’m from Illinois. Politically speaking, well, just look at what your saviour is used to. Our speaker and our governor are going toe to toe with no budget, a deficit even if we could get one, and a multi-billion dollar capital spending and handouts plan aimed only at Chicago. You have no idea what pandering is, yet.

  3. I still don’t understand why more people don’t utilize ex parte reexamination, relatively inexpensive and relatively fast.

  4. “Protect American Intellectual Property Abroad: The Motion Picture Association of America estimates that in 2005, more than nine of every 10 DVDs sold in China were illegal copies. The U.S. Trade Representative said 80 percent of all counterfeit products seized at U.S. borders still come from China. Barack Obama will work to ensure intellectual property is protected in foreign markets, and promote greater cooperation on international standards that allow our technologies to compete everywhere.Mom and apple pie. Every administration I can remember has fought this running battle, and I expect whatever candidate wins will do exactly this. Protect Intellectual Property at Home: Intellectual property is to the digital age what physical goods were to the industrial age. Barack Obama believes we need to update and reform our copyright and patent systems to promote civic discourse, innovation and investment while ensuring that intellectual property owners are fairly treated.Again, boiler plate mom and apple pie. Now if he would seriously try to rein in copyright term extensions, I might reconsider. Reform the Patent System: A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. With better informational resources, the Patent and Trademark Office could offer patent applicants who know they have significant inventions the option of a rigorous and public peer review that would produce a “gold-plated” patent much less vulnerable to court challenge. Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.”The first part of this is really not that debatable. I think most of those involved would agree that putting more resources into the process might just improve the quality of the patents and maybe even reduce some of the variability. But I think that the “Gold Plate” suggestion is prima facie evidence that this was written by people who don’t prosecute patents for a living. As for “dubious” patents, they are invariably in the eye of the beholder. At least until a final verdict on the merits, most plaintiffs probably think their patents are just fine, while the defendants believe them to be dubious.

    Part of the problem with the “Gold Plate” proposal is that in many industries, or at least in the electronics and software industries where I work, you often don’t know which are your best patents until years later. In cross licensing, we used to figure that it would take at least five years of aging (after issue) before we knew how important and how strong a patent was. Trying to guess this during prosecution is just plain silly.

    The problem with “PTO could conduct low-cost, timely administrative proceedings to determine patent validity” is that this might work fine with killer prior art provided by defendants, but they have yet to figure out how to make inter partes reexamination work, and expanding this would seem to be a major undertaking. Besides, what is really wrong with having a court take a decent amount of time figuring this out in multimillion dollar litigation? It seems a bit shortsighted to use a low cost administrative proceeding to determine tens, if not hundreds, of millions of dollars of damages. Indeed, what is it that they plan to remove from patent litigation for the low cost administrative proceedings? Discovery? Expert witnesses?

    I would also ask whether we want the organization that can’t figure out the patent laws, and routinely utilizes bad law (and often enshrines it in the MPEP) to make this sort of determination. Right now, they seem to be straying in both obviousness and software based statutory subject matter. And that doesn’t even address the failings of individual examiners or ALJs.

  5. “At this point in history, voting on such a trivial issue would be like voting for whoever will lower my income tax the most over the next four years, i.e., it would be selfish and short-sighted.

    I vote for the candidate who can best protect me from being struck by lightning.

  6. “Perhaps it is useful to note that the Technology Plan contains 54 (assuming I counted correctly) bullets, of which the above three paragraphs comprise bullets 52 – 54. ”

    Thanks, Mr. Slonecker. That ratio actually sounds about right. After all, the patent system (at most) promotes technology innovation, it’s not the sine qua non of innovation.

    It’s also interesting to see that Obama’s plan doesn’t suggest that a gold-plated patent can be obtained by simply increasing the search time, as implied by some above. Rather, he suggests that the PTO needs better informational resources. Who can argue with that?

    Finally, Obama appears to suggest that we need another (or revised) administrative procedure for challenging patent validity. Given the concerns that many have about current re-exam procedures, this seems to be worth discussing.

    Of course it would be silly to vote for president based on just his IP agenda. However, it’s nice to see that his (brief) position on IP appears to have at least some connection to reality.

  7. It seems to me that anytime one talks about a “plan” it is useful to have a copy in front of them. The pertinent portions of the plan are as follows:

    “Protect American Intellectual Property Abroad: The Motion Picture Association of America estimates that in 2005, more than nine of every 10 DVDs sold in China were illegal copies. The U.S. Trade Representative said 80 percent of all counterfeit products seized at U.S. borders still come from China. Barack Obama will work to ensure intellectual property is protected in foreign markets, and promote greater cooperation on international standards that allow our technologies to compete everywhere.

    Protect Intellectual Property at Home: Intellectual property is to the digital age what physical goods were to the industrial age. Barack Obama believes we need to update and reform our copyright and patent systems to promote civic discourse, innovation and investment while ensuring that intellectual property owners are fairly treated.

    Reform the Patent System: A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. With better informational resources, the Patent and Trademark Office could offer patent applicants who know they have significant inventions the option of a rigorous and public peer review that would produce a “gold-plated” patent much less vulnerable to court challenge. Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.”

    Perhaps it is useful to note that the Technology Plan contains 54 (assuming I counted correctly) bullets, of which the above three paragraphs comprise bullets 52 – 54.

  8. I make my living by helping people navigate the legal ins and outs of our nation’s patent system.

    But “improved patent prosecution rules” does not appear on the list of the 20-30 top reasons that I would vote for Obama over McCain.

    At this point in history, voting on such a trivial issue would be like voting for whoever will lower my income tax the most over the next four years, i.e., it would be selfish and short-sighted.

  9. Nothing “narrow-minded, elitist, self-centered and misguided” about a self-described “litigator” haranguing about what “the founders” “obviously” did not understand about the patent system they created, how “corporate monopolists” (evildoers) and patent prosecutors (unwitting tools) today just “wrongly game the system to obtain patents that are not worth the paper on which they are printed” and how “we” need to marginalize the influence of such malign influences. No sirree. But maybe just a tad self-righteous and condescending?

    Of course, this is probably just the effluent from the swelled head of a litigator, punctured by the outcome of a recent case.

  10. “Patent prosecutors are the last people we want to provide guidance concerning how we fix our patent system. Simply stated, if you get paid to obtain patents, you are hardly in a possession to objectively analyze whether the nation’s patent system truly works to provide incentives to advance the sciences and the useful arts.”

    Well, you can’t have it both ways. If prosecutors should have no input because of their bias, then defense litigators should also have no input because of their bias. After all, you get paid to tank patents in court, and that role does not inherently put you in a position to “objectively analyze whether the nation’s patent system truly works to provide incentives to advance the sciences and the useful arts”.

    Prosecutors should have input to reforms, as should the plaintiff and defense bar, and the office. However, the real impetus for reform is coming from industry, and their input on policy is (and generally should be) more important than input from the bar or office.

  11. Now you’re catching on.

    Prosecution is so much easier than litigation. That’s why we’re able to get so many crap patents issued.

    Thank goodness everybody else has groveboy1 to protect them from us.

  12. “My premise was sarcasm.”

    Yes, I understood that, but you’re off point. (So that’s how you argue with the PTO!) Neither your stated premise nor its opposite leads to your conclusion. So what’s up with that? Does your argument boil down to “No, I’m not – You are!”?

  13. “Where did you read that?”

    Actually, I got it from your premise: “… you’ve earned (what is probably) a pretty decent living protecting your clients from the ravenous hordes of patentees with their ill-gotten, marginal patents procured by their narrow-minded, elitist, self-centered patent prosecuting minions.” At least that’s where I got the “corporate meanies” part from.

    But fine, reverse it: “Grover defends corporate meanies against corporate good guys.” Your logic, concluding that he is thus self-centered and elitist, still makes no sense. I’m surprised that this kind of logic succeeds with the PTO. But then again, maybe I’m not.

  14. “Unfortunately, too many patent prosecutors are in the business of collaborating with their corporate sponsors to game the system by obtaining patents for minor improvements…”

    But then,

    “To put it another way, we need to reward and provide incentives to true inventors, not corporate monopolists and the patent prosecutors who unwittingly serve their interests…”

    Followed up with,

    “I have confidence that Obama has the vision to reform the patent system in a manner that will encourage real progress in science, while at the same time developing checks and balances designed to dramatically decrease the influence of patent prosecutors and their corporate sponsors who wrongly game the system to obtain patents that are not worth the paper on which they are printed.”

    So are patent prosecutors mere collaborators, unwitting dupes, or America’s most highly influential lobby? Or are they all three?

  15. “Grover defends corporate good guys against corporate meanies”

    Where did you read that? Is it possible that groveboy1 represents rip-off artists and thieves? Is it possible that groveboy1 is nothing more than their low rent servant?

    Yes, I do use this logic in responding to office actions. All the time. Very successfully.

    Any other questions?

  16. “… you’ve earned (what is probably) a pretty decent living … Who’s self-centered and elitist?”

    Another withering rebuttal? Let’s summarize: Grover says that patent prosecutors are narrow-minded, etc. Grover also says that patent system is being abused by corporate meanies. Grover defends corporate good guys against corporate meanies, and earns a nice living doing so. Grover is therefore self-centered and elitist.

    Does this make any sense at all? Is this the kind of logic you use in responding to office actions? Should Grover add “illogical” to his list of criticisms to levy against patent prosecutors?

  17. “…the patent prosecutors (both in-house and in private firms) who devote their careers to obtaining such patents are merely the low-rent servants of corporate interests…”

    There’s nothing quite like the swelled head of a litigator.

    As Mooney would ask, do you have trouble getting your head through the door?

  18. “To restore balance and provide true incentives toward the development of science and the useful arts, we need to move toward a system where only “gold plated” inventions–i.e., first in a class of new anti-cancer drugs, new never before used source of energy, cure for aids–result in issued patents.”

    Oh, now I get it. We issue the Wright brothers their patent, and then no more airplane patents because everything since then is only a marginal improvement, not a “gold plated” invention.

    BTW, you don’t seem all that concerned that for three decades you’ve earned (what is probably) a pretty decent living protecting your clients from the ravenous hordes of patentees with their ill-gotten, marginal patents procured by their narrow-minded, elitist, self-centered patent prosecuting minions.

    Who’s self-centered and elitist?

  19. “I guess you get your’s from MSDNC…”

    I’m reasonably certain that “your’s” is not a word.

    “I also understand that you cannot properly evaluate someone’s opinion without understanding their credentials and biases.”

    “Someone” is a singular noun. Thus, “you cannot evaluate someone’s opinion without understanding his credentials…”

    “Have they developed their opinion based on a relatively objective evaluation of the facts, like a judge, or is their opinion the product of their predetermined biases, and was their “review” merely a formality?”

    I’m stepping out of my self-appointed role, but this is just plain silly. A judge’s role is to at least attempt an objective evaluation of the facts. Where do you get the idea that an author of an editorial has the same obligation?

  20. Yes, Lionel, I certainly do understand the meaning of “editorial”. I also understand that you cannot properly evaluate someone’s opinion without understanding their credentials and biases. Have they developed their opinion based on a relatively objective evaluation of the facts, like a judge, or is their opinion the product of their predetermined biases, and was their “review” merely a formality? In this case, in my opinion, an Obama partisan was hiding behind her credentials and trying to obtain more credibility for her “editorial” than it actually deserves.

    Here’s an ugly thought — in actuality it appears that Obama’s “plan” closely tracks that of Jon Dudas. Maybe Obama will re-appoint Dudas as Commissioner if he is elected.

    “Faux News” — very clever. I guess you get your’s from MSDNC, and that paradigm of objectivity, Olbermann?

  21. These guys are not giving up, and now they have their claws in Obama. I told you guys many moons ago we needed to “get to know” Obama (like that Saturday Night Live guy Lovett used to say).

    If we don’t negotiate a fair and reasonable deal, we certainly won’t like what eventually will be forced upon us.

  22. Mr. “groveboy1″,

    Perhaps your comments are best directed to the members of the CAFC, before which I presume you have appeared. I am certain that Judge Newman, Judge Lourie and Judge Linn would look quite favorably upon the points you make (as would doubtless all other members of the Court).

  23. “Having litigated patent cases for three decades, and having thereby become intimately familiar with how patents are prosecuted and the mindset of patent-prosecutors, I have come to believe that patent prosecutors are among the most narrow-minded, elitist, self-centered and misguided members of the legal profession…”

    There’s plenty of evidence for this thesis on this board. Even stepback’s “rebuttal” appears to say nothing more than “You don’t know what you’re talking about, because you’re not one of us.” Do you folks really believe that nobody other than a patent attorney/agent understand how innovation occurs?

  24. “A couple of years in the patent prosecution trenches is what you need to dispel you of your starry eyed appreciation of how innovation takes place”

    JEROME LEMELSON, BABY!!!

  25. Wow grooveboy, you truly are a fork tongued litigator with ability to woo gullible jury members:

    “we need to reward and provide incentives to true inventors, not corporate monopolists and the patent prosecutors who unwittingly serve their interests by supporting a system that allows far too many patents to issue for inventions that at best represent marginal improvements, the purpose of which is not to advance the sciences and useful arts, but to permit corporate giants to expand their market dominance.”

    true inventors?
    marginal improvements?

    A couple of years in the patent prosecution trenches is what you need to dispel you of your starry eyed appreciation of how innovation takes place.

  26. “I have come to believe that patent prosecutors are among the most narrow-minded, elitist, self-centered and misguided members of the legal profession”

    Why thank you, groveboy1.

    I would have given that honor to “IP litigators,” but you’ve convinced me otherwise.

  27. Having litigated patent cases for three decades, and having thereby become intimately familiar with how patents are prosecuted and the mindset of patent-prosecutors,I have come to believe that patent prosecutors are among the most narrow-minded, elitist, self-centered and misguided members of the legal profession, with an inevitable pro-patent bias. Patent prosecutors are the last people we want to provide guidance concerning how we fix our patent system. Simply stated, if you get paid to obtain patents, you are hardly in a possession to objectively analyze whether the nation’s patent system truly works to provide incentives to advance the sciences and the useful arts. The founders obviously did not understand that patents would no longer be primarily the property of individuals, but would be major corporate assets–indeed in many industries, the centerpiece of corporate attempts to monopolize markets and stifle competition. Obama seems to be on the right track–the system needs to find a way to more efficiently invalidite and declare unenforceable sham patents that represent only at best marginal improvements of the art, while at the same time truly reward “gold plated” inventions that truly benefit society by providing major advances in science or the arts. Unfortunately, too many patent prosecutors are in the business of collaborating with their corporate sponsors to game the system by obtaining patents for minor improvements (i.e., adding tutti frutti to a drug formulation to make it taste better)that in truth are neither inventive nor non-obvious. To restore balance and provide true incentives toward the development of science and the useful arts, we need to move toward a system where only “gold plated” inventions–i.e., first in a class of new anti-cancer drugs, new never before used source of energy, cure for aids–result in issued patents. The marginal improvements in the run of the mill patents that are allowed to issue today, particularly in the pharmaceutical and computer technology industries–simply serve to facilitate corporate interests in dominating and/or monopolizing markets, and the patent prosecutors (both in-house and in private firms) who devote their careers to obtaining such patents are merely the low-rent servants of corporate interests that, far from advancing the progress of science and the useful arts, serve to inhibit and impede development of truly “gold-plated” inventions. To put it another way, we need to reward and provide incentives to true inventors, not corporate monopolists and the patent prosecutors who unwittingly serve their interests by supporting a system that allows far too many patents to issue for inventions that at best represent marginal improvements, the purpose of which is not to advance the sciences and useful arts, but to permit corporate giants to expand their market dominance. I have confidence that Obama has the vision to reform the patent system in a manner that will encourage real progress in science, while at the same time developing checks and balances designed to dramatically decrease the influence of patent prosecutors and their corporate sponsors who wrongly game the system to obtain patents that are not worth the paper on which they are printed.

  28. CAPat,

    Do you understand the meaning of the word “editorial”?

    The fact that she believes Obama has the better position and she works with Obama only reinforces her opinion, doesn’t it? Maybe she works with Obama because he he has policy positions that agree with hers? Or do you believe she is an empty-headed shill like any of the primetime hosts on Faux news? I believe the former.

    BTW, what is an objective editorial?

  29. Leopold, I suspect Ms. Rai can understand the cost (in terms of economics and justice) of promulgating rules that are not clear, or that are ill-conceived, or that have effects which are divergent from the stated effects in the Federal Register public notice. The battle over these rules would not end, even with their implementation.

    (I too do not think the world will end with the implementation of continuation or claim limits, but democracy in America will have been dealt another large blow, such as we have already endured in the last 7+ years, if inJustice succeeds and *these* rules are implemented. Such an end result will not be costless or trivial to America, and it will cause problems for patentees that have taken the Federal Register notices at face value. And obviously, this is *very* important to the powers that be, or our government would not be appealing.)

  30. The USPTO has proven itself to be perfectly capable of generating misleading rhetoric. They don’t need my help.

    For the record, I think that the Rules were based on faulty premises about abuse and are flawed. But the world is not going to come to an end if limitations on continuations and RCEs and RCEs are imposed.

  31. Leopold, I wonder what set of questions you could have been devised, if your objective had been to reveal the crying need for a reform and simplification of the Rules. Maybe somebody within the USPTO could play NIPRA at its own game.

  32. “… the chaos that their implementation would cause … to cripple the patent system for years to come …”

    Perhaps we’re getting a bit hyperbolic here?

    Your links appear to show that the proposed Rules are technically a bit more lenient than the PTO intended. I’m not sure how this supports your thesis that the Rules will “cripple” the patent system.

    And by the way, the NIPRA quiz appears to be based on more than a bit of specious reasoning. Pointing out that a decades-old issued patent that is now deemed to be important would have run afoul of the new Rules does not prove, or even strongly suggest, that the inventors would have been unable to get patent protection under the new Rules.

  33. Ms. Rai, please take the quiz onthe NIPRA site too, to show other effects of the ill-conceived rules (it starts out easy, like a professor should appreciate… the meat and heartburn starts with the hypotheticals at question 11):

    link to nipra.org

  34. Ms. Rai,

    Do you understand the as-promulgated effects of the rules, and the damage that the rules *as-promulgated* would do to the patent system, and patent law? There is an analysis of the apparent *true* (not announced) effects of the rules here – I hope you will (as a scholar) take the time to understand how poorly these rules were promulgated, and the chaos that their implementation would cause:

    link to nipra.org
    link to nipra.org

    It seems to me that for Pubpat to still be pushing for implementation of these rules indicates that Pubpat is *for* anything that will act to cripple or implode our patent system (e.g., to free the country from “bad” patents the PTO should not have issued in the first place), or otherwise impede patenting. This may be good in the short term, but is (unfortunately) near-sighted, and my indicate a lack of understanding of the *true* issues lawyers (should) have with the rules.

    I suspect, Ms. Rai, you have never sat down and analyzed the rules, but have only listened to the echoes of the Powerpoint presentations and scholarly papers. Please sit down and study them thoroughly (it will take hours), because to do otherwise is not a correct way for you, or Pubpat, to arrive at a position supporting the new rules. But it would be a way for those so interested to cripple the patent system for years to come, rather than working now to fix its ills. And I suspect nothing would make some members of Pubpat happier (since that would, admittedly, get rid of the bad patents too).

    David Testardi

  35. Obama is sophisticated and subtle. None of his positions are as clear as this article would make seem.

  36. “the scientific evidence is overwhelming now that the globe is actually cooling” and dinosaurs and man roamed the earth together

  37. “the scientific evidence is overwhelming now that the globe is actually cooling”

    Thanks for the info.

    [turns up thermostat]

  38. If I wanted to read cheerleading for the Obamessiah, I would have turned on the evening news. I expected better from this website. Considering the sanctimonious tone of some posters, you would think they would be outraged by the lack of disclosure, but apparently disclosure of conflicts is only required of those Malcolm Mooney despises.

    BTW, I despise McCain as much as I despise Obama. But I don’t want to hijack this thread, so enough said.

    As far as the proposal, I don’t see how the PTO can be expected to succeed in “gold-plating” patent applications when they can’t deal with the present examination procedures. In practice I would expect the proposed two-tiered system to benefit very large, wealthy, corporate interests (aka campaign donors) and to screw small inventors.

  39. Lionel Hutz @ 3:22 PM:

    The so-called “editorial” is presented as a piece by an objective academic analyzing the respective policies of both candidates and “opining” that Obama has the better approach so far. You don’t think it is at all relevant that the outcome of the “editorial” was pre-determined for Obama, no matter how marvelous McCain’s plan might be, and that the “editorial” was actually a simple spin piece for Obama by an in-the-tank Obama supporter? How about the fact that Prof. Rai is also a PubPat director? Disclosure, disclosure, disclosure — we in the law industry better than any others recognize that potential conflicts of interest should be disclosed, at least for the sake of fairness.

    And, by the way, since the scientific evidence is overwhelming now that the globe is actually cooling, at least for the foreseeable future, “global warming” is now “climate change”. Didn’t you get the memo?

  40. Not even then Jim. It has to be professional background and experience in blogging, and I have none.

  41. “Or maybe Malcolm Mooney and Max Drei?”

    Only if § 3 is amended to require possessing “a background and experience in abundant patent blogging.”

  42. Here’s a thought-provoking topic for further discussion:

    Director Crouch and Deputy Director Rai in the next presidential administration?

    <<<<<<

    Or maybe Malcolm Mooney and Max Drei?

  43. If anybody is interest in reading Professor Rai’s credentials, here’s the link to her profile and CV published on the Duke Law School website:

    link to law.duke.edu

    link to law.duke.edu

    At minimum, she has more experience in the field of patents that either Director Dudas or Deputy Director Peterlin, and if she is interested in being a Director under a President Obama administration, she meets the current § 3 requirement of possessing “a professional background and experience in patent or trademark law” (I assume she is an American citizen).

    Here’s a thought-provoking topic for further discussion:

    Director Crouch and Deputy Director Rai in the next presidential administration?

  44. “So ignoring the subject – as Senator John McCain has done, at least thus far, may be the politically expedient course. ” Prof. Rai

    MMMMmmmmm not very objective commentary….

  45. Is this a case of a swamp needing draining? Shall we ask the frogs that live there? But first, should we not determine how far the swamp extends?

  46. “Either you agree with her opinion or you don’t.”

    But you’re missing at least part of the point, Lionel. Because Professor Rai has never drafted a patent application, she’s not even allowed to HAVE an opinion on patent policy, much less express one.

  47. Are you people complaining about the author’s relationship to Obama kidding?

    It’s an editorial, not an objective news article. How can her relationships possibly matter. It’s not like the quacks hired by Exxon-Mobil to discredit global warming science. There they package data and statistics to deliberately mislead the public.

    Editorials on the other hand are opinion pieces. Why does there need to be disclosure? Either you agree with her opinion or you don’t.

  48. Ms. Rai writes above: “Sampat’s work also reveals that, more generally, patents that end up being more valuable (using various conventional criteria of value used by economists) have more applicant-provided prior art. This suggests that applicants do know something about the value of their patent applications when they file them.”

    Maybe this means, Ms. Rai, that better capitalized applicants are better able to commercialize their inventions (so they end up being more valuable) and also have the resources to provide more prior art?

  49. “for a guy who makes fun of his own age McCain has a surprisingly forward-looking mind”

    I admit he was clearly thinking ahead when he chucked his old first wife for a young and extremely wealthy new one.

    “Could you tell us how you really feel about the man ?”

    link to nobodyasked.com

  50. PLOSITA – I agree that good ideas on how to change the system may come from outside the rank and file of patent prosecutors. The problem I have is when the views of academics who are speaking outside of their area are given so much weight and importance by politicians, the popular press, and even individuals within management at the PTO who themselves don’t have appropriate experience (i.e., Dudas, Peterlin). Lemley’s writings and views on the evils of continuations helped to form the basis for the PTO’s misguided rule changes, but by the time anyone actually working in the area had time to pay attention to and rebut his conclusions and fight the proposed changes, the snowball had reached a critical mass.

  51. Mr. Rai: If you think the number of references cited in information disclosure statements (IDSs) are a reliable gauge of an application’s importance or probability of becoming a commercial product, you are sorely mistaken. There are alot of factors that affect this aside from importance (for example, the number of relevant articles an inventor happens to have sitting in his file cabinet). Any expert in patent law would be aware of this fact.

  52. Many thanks to the “AnonPatentAtty”, who has hit the target dead center. After January 20, 2009 the PTO needs to be run by competent people who have a deep understanding of prosecution based on decades of knowledge and experience. This is not a business for amateurs, and surely not a business for dilettante academics.

    It had seemed as though neither Obama nor McCain could possibly fail to be an improvement over the present bunch. Obama seems well enough plugged in, and, for a guy who makes fun of his own age McCain has a surprisingly forward-looking mind. Also, you can’t become a Navy pilot without some aptitude for, and love of, advanced technology, and not just telecommunications. But Prof. Rai’s comments raise the prospect that we may face yet another disaster in IP if Obama is elected. Wouldn’t that be ironic. Who knew ?

    The commentary in this blog often gives the impression that the only groups having an interest in patent law are software companies and pharmaceutical companies. Here is some news: The majority of patents are still granted in the mechanical, electrical (non-software), and chemical (non-pharmaceutical) fields. While the software and pharmaceutical fields are much covered in the press, their partisan desires are harming the great majority of patent applicants and owners who are not part of those industry sectors. Perhaps after January 20, 2009 the PTO might be led by someone who is not allied to either of those sectors.

    Another serious problem in the patent field at present is an examining corps that is wildly out of control. KSR merely poured gasoline on an already raging fire. What does Prof. Rai propose to do about that problem ?

    Might the term “hot-headed, corporate-shilling warpig” possibly be considered pejorative ? What subtle nuance. Could you tell us how you really feel about the man ?

  53. “So, it isn’t necessarily relevant whether an author has any real world experience before chiming in on a subject?

    Much like Mark Lemley, Prof. Rai is a former litigator with no patent prosecution experience or experience within the examining corp at the PTO. Please stick to commenting on litigation matters and patent case law. Leave the specifics of patent examination to someone who has actually been involved with it in some way. Being a litigator at DOJ and seeing generally how agencies work doesn’t really hold much weight with me as a basis for commenting on substantive patent examination policy and procedure.”

    Having prepared and prosecuted a few patents, I agree with you that it is hard to understand the process without doing it. Although it is adversarial, it is not at all like litigation–totally different. Nor is it quite like any other administrative process that I’m familiar with. It’s more like negotiating the terms of a deal.

    But do you agree that it is equally easy to lose yourself in that world, and begin to assume that “the way it is” is also “the way it should be?” And perhaps someone with more general experience, and someone with the time to think broadly and carefully, might actually be better at envisioning “the way it should be?” Professor Rai’s papers are, in my experience, sharp and creative, and I have to think that most of them are necessarily outside her area of “experience” by your definition. But with apologies for throwing up a straw man, I have to disagree that only specialists can innovate in a given field (whether it be law, policy, science, whatever). Often times the best ideas come from outside the field, or from people with the time, energy, and creativity to “cross-polinate” ideas.

    I often wish lawyers, especially patent prosecutors, would be less defensive about their practices and be a little more open minded about what else might be possible.

  54. Ah Lowly. imho, that’s what the English litigators used to say, in the bad old days of multi-week trials, namely, “Be happy patent litigation in England is so slow, complex and expensive. If it wasn’t, we would be seeing unmanageably large numbers of suits”. But, take a look at today’s position in England. More suits indeed, but far more efficiency, leading to unprecedentedly fast dispensation of justice, so that England is the forum of choice, for fast outcome patent litigation in Europe.

  55. “First, not that it is necessarily relevant, but a quick look at my CV would show that . . .”

    So, it isn’t necessarily relevant whether an author has any real world experience before chiming in on a subject?

    Much like Mark Lemley, Prof. Rai is a former litigator with no patent prosecution experience or experience within the examining corp at the PTO. Please stick to commenting on litigation matters and patent case law. Leave the specifics of patent examination to someone who has actually been involved with it in some way. Being a litigator at DOJ and seeing generally how agencies work doesn’t really hold much weight with me as a basis for commenting on substantive patent examination policy and procedure.

  56. “because the litigators have a vested interest in making it long, difficult and expensive”

    That’s like saying prosecutors have a vested interest in applications taking 4 RCE’s and an appeal before finally being allowed … yet you don’t ever see us praising the current system.

    If cases could be resolved quickly and without excessive cost, more lawsuits would be filed. That would be more in the litigator’s interest than the way things currently are, imho.

  57. Do I smell a law professor bucking for Dudas’ job in an Obama administration.

    Just what we need, another inexperienced political appointment at the PTO.

  58. Getting cases to settle before trial, Coast? So, there’s the American way: Judges acquiesce in allowing it to get so long, difficult and expensive that those with a winning case but without a deep enough pocket don’t get justice, at trial. Then there’s the English way: get quickly to trial, and order the loser to pay the rightful winner what it cost to get the justice that is his/her right, in a country that regards itself as functioning under that thing called the Rule of Law. Imagine briefing a macho CEO: If you lose at trial, sir, no matter how narrowly, you will have to pay his legal fees as well as your own. Isn’t that the most potent incentive that can be imposed on his consciousness, to settle, rather than lose at trial. Isn’t that the way, to get CEO’s signed up in favour of reining in extravagancies such as unrestrained discovery.

    Or do I see it wrong?

  59. The judge-made Hilmer Doctrine (see Prospector blog) has been putting the USA in breach of the Paris Convention priority rules, since 1952. In its own priority list, does Team Obama have any thoughts about that? If not, is that because the issue is 1) not important enough to warrant attention, or 2) too “hard”,3) something that would reveal S. Obama as unpatriotic, or 4) all three of these?

  60. because the litigators have a vested interest in making it long, difficult and expensive;

    and maybe because the judges have an interest in making it so long, difficult and expensive that the parties eventually settle before trial

  61. If the system is malfunctioning then, when Professor Rai says that one particular aspect is too “hard” to change, that might give a clue where the problem lies. The aspect that Prof Rai finds to hard to change lies in patent litigation, namely, the inability of the courts to control the amount of discovery. The PTO can’t fix the system, if it’s still broken in the courts.

    I don’t understand the difficulty. The English common law patents court manages ferociously but fairly the short period between issuing proceedings and the day of trial. Each side does its discovery, expert reports, observed experiments, etc, etc, all in less than a year. 95% of cases settle before trial, and only one third of first instance judgements are appealed (cos in the majority there’s no prospect of a reversal). Two thirds of cases at the English patents court are pharma-related, so the litigants are mostly old hands at this game. But some cases are tech (Nokia and so on) and others involve small companies. Obama’s people might like to ask American litigants at the English patents court about their experiences there. Maybe Prof Rai can tell us why such expeditious yet rigorous litigation is too difficult in the USA.

  62. “What is with Hal Wegner being in the tank for Obama?”

    Maybe Hal doesn’t think a senile, hot-headed, corporate-shilling warpig is what the country needs right now.

    Or maybe he feels uncomfortable voting for someone who doesn’t know how to use the Internet.

  63. Arti K. Rai, as quoted in the Duke Chronicle:

    “I think it’s fair to say right now he [Obama] hasn’t fleshed out his platform with any great specificity,” said law professor Arti Rai, who attended Harvard Law School with Obama. “The reason I chose to go with him is because I was friends with him in law school, and he’s a very smart person and a person with a lot of integrity.”

    link to media.www.dukechronicle.com

  64. “Implement a policy such that no allowable independent claim can be less than 3/4 of a page in length…”

    I’ve already encountered this policy in most cases I prosecute

  65. If Anthony Cauterucci is correct, and Dennis Crouch should investigate, then full disclosure should be made.

    P.S. What is with Hal Wegner being in the tank for Obama?

  66. By the way, I believe that Arti Rai is an official advisor to the Obama campaign on intellectual property issues. She heads the IP subgroup of the “Technology, Media and Telecommunications” advisory group to the campaign.

  67. Mr. Oboma has some good basic preciptions of what needs to be done to solve the energy crisis but no tie together with improving inventor incentives to accomplish it. He still hasent adopted my plan to rebuild a productive prosperious america.Through integrity improvements and inventorship determination improvements this can be accomplished.Just see my website under patent reforms for details.He also hasent tied together job creation with it either.

  68. Obama’s position on biotech and pharm patents doesn’t really matter much once health care is nationalized and only the US government is purchasing the drugs.

    “Congrats, you got a patent, now you will sell your drug to the government for $X price. Oh, you don’t like that price. Have fun trying to sell it to anyone when none of the Government Doctors will even proscribe it to anyone.”

  69. When did Sen. Obama endorse the “second window” concept? The referenced Obama technology statement from November 2007 says, “Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent quality.” Aside from the question of what constitutes a dubious patent, that statement does not indicate support for the concept of a “second window.” The second window concept comes from a provision in the Leahy-Berman bill that would have subjected a patent to post-grant review for window lasting the entire life of the patent. The second window proposal became incredibly controversial, as did the provision to reduce infringement damages. Less controversial was the “first window” of post grant review lasting only 12 months after grant. There is nothing in Obama’s statement that says he is for a “second window.” It seems to me that Prof. Rai is going beyond the candidate’s position. I think she should clarify exactly where Obama is on this point.

  70. The worst thing about parmacutical patents is there either dangerious new concoctions that harm patients or there minor design change patents that provide many minor variations on existing previously patented drugs.Biotech patents are in the same catagory.What we need is parent patents to reward the actual original inventor of the dirivatives without witch none of the drugs would exist.Thats me of course

  71. “I wonder if one of the factors that IT patents are more likely to be “junky” than biotech and pharma patents is that there is more scientific prior art literature for biotech/pharma inventions.”

    That could be. Another factor is that a lot of IT patents are the sort of thing that an attorney and his client could could come up with after three Manhattens while smacking balls around at a firm retreat.

  72. Ill tell you what junky patents Are Design patents for minor changes in the existing expired patents to re claim new patent on the old invention.Another one is no good patents ones that will never become commercially viable because they are impractical.Also included are deceptive patents vague and evasive wording with no identifiable new intellectual materials and no purpose other than to restrict a segment of a field of invention in order to steal the invention from legitimate inventors by claiming invention even though no genuine or viable solution to a problem exists

  73. Ms. Rai:

    I wonder if one of the factors that IT patents are more likely to be “junky” than biotech and pharma patents is that there is more scientific prior art literature for biotech/pharma inventions.

    Maybe another reason is that the claim terminology used in biotech/pharma patent applications is more consistent from application to application. In other words, there may not be established or consistent terminology for IT inventions and thus it is more difficult to word search those applications.

  74. Ms. Rai:

    The less patentee-supplied prior art, the more likely the patent is a “junky” patent?

  75. Left coast: “How do you propose that the issuance of “junky patents” be prevented?”

    <<<
    Implement a policy such that no allowable independent claim can be less than 3/4 of a page in length…

    That would cut down on most junky patents.

  76. “What is a “junky” patent?”

    Why, of course, a patent someone is asserting against Microsoft or Cisco.

  77. “What is a “junky” patent?”

    A patent whose claims read on the prior art or on areas of technology that the inventor has not come close to enabling.

    Yes, they exist. Yes, there are more of them now than ever before. Yes, steps should be taken to make it easier to invalidate such patents or prevent their issuance in the first place.

  78. “The Pubpat board of directors position is a substantially bigger disclosure issue than the political contribution issue.”

    Which is saying nothing at all. I’m glad to know you’ll be on the case, though, should Professor Rai run for President.

    Noonan makes great points upthread, by the way.

  79. RealAnonymous @ 4:03 PM posted “Ms. Rai is also on the Pubpat Board of Directors.” I had forgotten that, and also that she posted an article favoring the PTO’s position on the continuation rules on November 15, 2007, after Judge Cacheris’ initial preliminary injunction opinion, here on this site. The Pubpat board of directors position is a substantially bigger disclosure issue than the political contribution issue. There is no question, given the subject matter of her “editorial”, that these facts should have been disclosed.

  80. I have no problem noting that I have donated money to Obama. For what it’s worth, I am also an Obama supporter and have previously endorsed his technology plan. (Along with many other tech types — a fact you can also find if you do a little Googling.)

    However, the Obama campaign neither authorized nor endorsed what I said in this blog post. So noting that fact would have associated Obama with statements that he may or may not endorse.

    As to searching for prior art, clearly some applicants are already spending a lot more time searching than others. We know from extensive empirical work that Bhaven Sampat of Columbia (among others) has done (based on the fact that the PAIR system now allows for distinguishing between examiner-provided prior art and applicant-provided prior art) that patent applicants in certain areas where patents have been shown to be more valuable(e.g. biotech and pharma) provide more prior art.

    Sampat’s work also reveals that, more generally, patents that end up being more valuable (using various conventional criteria of value used by economists) have more applicant-provided prior art.

    This suggests that applicants do know something about the value of their patent applications when they file them. Not everything by any means but they have some sense. It’s not a complete black box.

    So at least some applicants should be interested in paying more for a rigorous review. In fact, as I have indicated, the evidence indicates that some are already doing that review. (And small inventors, as I have noted, could always be subsidized.)

    Note, by the way, that they are doing that review even in the face of a highly problematic inequitable conduct doctrine that effectively penalizes them for such disclosure.

    More anecdotally, one of the arguments that the biotech and pharma industries have made throughout the patent reform discussions is that the IT industries have brought the problem on themselves by filing “junky” patents. And it is the case, based on the empirical work done by Sampat and others, that IT-type patents have less patentee-supplied prior art.

    Yes, rigorous review would be more expensive. It would mean more than adding a few hours. But litigation costs run into the millions of dollars. And a lot of that cost is not prior art searching but expensive lawyers filing discovery motions. (Which I myself did in private practice.)

  81. Provided there was the right quid pro quo, the peer patent review system might help. For example, if the Office would accept submissions from the public for any published patent application, without the timing limitations currently imposed on protests, additional prior art could be (not likely to be, just could be) submitted during prosecution. Disincentives to non-disclosure could be, for example, if an infringer knew about a potentially invalidating reference but waited until litigation to raise an invalidity defense, there would be no diminution in the quanta of evidence that would fulfill the “clear and convincing” standard for establishing invalidity. While there is potential for harrassment in such a scheme, it would be (as Professor Ria would say) ex ante, and thus early enough in the process that it might do more to help than hinder the patent system. It would also be better than the “second window” approach (which is just another way to say re-examination); however, in any event there would have to be some estoppel provisions to prevent abuse of the system by infringers.

    That seems to be the perspective that academics miss: that many of the groups complaining most loudly about the terrible costs of patent litigation and the “broken” patent system are infringers who want the advantages of new inventions without paying for them. Catering to them might reduce costs in the short term but is bad for innovation, something the next President should recognize.

  82. “Dennis — don’t you think you and Arti Rai had an obligation to disclose the fact that she had made a political contributed to Obama’s campaign?”

    OMFG, somebody let one of the electrical engineers out of his cage again.

  83. It might be relevant to the objectivity of this opinion if Obama or someone connected to him had paid Ms Rai or was going to pay Ms Rai to do something. But I am not that concerned about the objectivity simply because of the fact that she has contributed to Obama or plans on voting for him.

    (Disclaimer — I will be voting for Obama.)

  84. Sorry…you hit the nail on the head. 6 or 10 hours of searching is not significantly better than 3 hours of searching. Moreover, we cannot count on the public, or our competitors, to spend time “peer reviewing” pending cases unless they know the case will cover an eventually commercial product.

    By way of illustration, if Ms. Rai would kindly point out which pending application covers the next great HIV drug or microchip or stent, I’d be glad to review it for her. Good luck.

  85. “… she presented as a neutral “expert” comparing the respective public positions of Obama and McCain simply on the merits …”

    Where exactly did Professor Rai present herself as anything other than a professor with an opinion? You really need to get a grip.

    Oh, and in the interest of full disclosure, I checked the box on my Form 1040 that directs $3 of my taxes into public funding of presidential election campaigns. And my wife collects penguin kitsch.

  86. Dennis — don’t you think you and Arti Rai had an obligation to disclose the fact that she had made a political contributed to Obama’s campaign? I recognize that you labeled it a “Guest Editorial”, but she presented as a neutral “expert” comparing the respective public positions of Obama and McCain simply on the merits, and giving a down-the-middle opinion based on that comparison, when, in fact, she is not at all a neutral expert. The editorial is a fraud.

  87. Let’s see — at the Newsmeat website it says that Professor Arti Rai contributed $2000 to John Kerry in 2004, $250 to the DNC in 2004, and $2300 to (oh, what a coincidence!) Barack Obama in June of this year. I’m sure her political preferences have absolutely nothing to do with her scholarly opinion that the very same Barack Obama just happens to be the Savior of the patent system as well as the rest of the world, however.

  88. Ms. Ria,

    Just curious – Have you ever performed a search for prior art in an attempt to invalidate a patent? The reason I ask is to question the rationale between having multiple tiers of patents (e.g., “regular” and “gold plated”).

    I note that, having performed numerous and varying types of search myself, the difference between searching for say, 3 hours, versus searching for say, 6 hours, is very little. For various reasons, including that most searching is performed electronically, after the first hour or so, the effectiveness of searching drops dramatically. It is not the case that by adding on a few more hours of searching for a “gold plated” patent application, that the result will be significantly better searching. Thus, I believe that charging applicants extra for a “gold plated” search is a waste of money for the applicant, and dwill not result in a significantly better patent, since you are not likely talking about performing “litigation” level of searching for gold-plated patents.

    The searching performed in a litigation (to invalidate a patent) is typically a whole league above the searching performed by the PTO, because the patent is in play, and dollars are at stake. You cannot mimic this at the Patent Office, without expending much more money. Tens and/or hundreds and/or more thousands of dollars may be expended on searching by the party attempting to invalidate the patent in a litigation. This type of searching can be more successful than the searching performed in a few hours by the Examiner because of the expense, many many hours, and resources that are put into it.

    The jist of this is that unless you are going to signicantly increase the PTO fees for a “gold-plated” patent (by tens or more thousands of $$), you are not going to get a significantly better search – enough so that “gold-plated patents would be much less subject to future administrative or judicial challenge,” as you assert above. And I doubt that few would be willing to pay such additional fees. I await your thoughts on this.

  89. “The question of whether the current PTO could implement these procedures properly is an open (and very fair) one.”

    No, it’s not an open question. It’s been answered already. PTO (mis)management is thoroughly incapable of performing even the most basic administrative tasks.

    Let’s see, they’ve spent $1B+ on a “paperless” patent system that is no better than what they had when they were pushing mail carts around Crystal City. I file a response by their much hyped EFS (electronic filing system) and it still takes them 6 weeks to put in on the examiner’s docket for action. (No, that’s not an isolated example, it’s pretty much routine over there.) Are we ever going to see any administrative efficiencies are a result of the $1B+ of applicants’ fees that they’ve spent?

    The “legal experts” over there gave us the claim examination and continuation rules that were smacked down by J. Cacheris. Proposed Rule 78 was FIVE pages long. And so ridiculously complicated that even the “legal experts” who wrote it could not understand it. How many “clarifications” did they issue after publishing proposed Rule 78? Don’t forget they also completely messed up Rule 114.

    Their Markush rules are a farce. They’ve had to go back and accept more comments. Even if they did implement them, they would probably face a successful legal challenge because none of their “legal experts” understand what “invention” means.

    Shall we talk about the (still lurking) IDS rules? Or the back-for-more-comments appeal rules?

    So the question of whether the current PTO could implement these procedures has already been answered. Clearly current PTO (mis)management couldn’t implement or administer its way out of a paper bag.

    How much more evidence do you need?

  90. “But the system is clearly broken — it’s not as if the courts are doing a great job.”

    Arti, what is the litmus here? Seems to me that the courts are doing fairly well, with the glaring exceptions being the messed up preamble, product-by-process, and (to a lesser extent) doctrine of equivalents case law.

  91. Dear Ms. Ria,

    The system is broken because of very very bad PTO management. Examiners are not doing a good job because of bad management. Piling on the sht does not fix the problem.

  92. “He assumes that inventors file patents just for kicks.”

    Good point. It’s easy to forget that law firm partners often team up with their fellow partners’ wives and file patent applications because they understand it’s their patriotic duty to move America forward.

  93. A few points.

    First, not that it is necessarily relevant, but a quick look at my CV would show that I have worked for a private law firm and have done patent litigation. I have also seen how expensive and wasteful such litigation can be in the context of my work as a law clerk in the Northern District of California.

    Relatedly, I have seen how other (often better run) administrative agencies operate as a litigator at the Department of Justice.

    On to substance:

    1) The issue of fees is somewhat orthogonal. The gold-plating has to do with the rigor of the search for prior art, not with who pays for it. We could have discounts for small inventors.

    The motivation behind patent filings is also irrelevant. What is relevant is that applicants should only get patents that receive strong deference from the courts if enough examination has been done to ensure that the applicant has something that is new and nonobvious.

    2) There is no particularly good analogy in current PTO practice for either post-grant opposition or gold-plating.

    A proper post-grant would be what administrative lawyers call a “formal adjudication” (i.e. quite similar to a trial court-type proceeding). Although formal adjudications are similar to trial court proceedings, they tend to be much cheaper. This is because administrative agencies can impose limits on discovery etc. that courts have a hard time imposing. Best place to look for analogies is outside the PTO — for example, at the FTC.

    Ideally, gold-plating would also look like a formal adjudication.

    3) The question of whether the current PTO could implement these procedures properly is an open (and very fair) one. Indeed, that is one of the points of my post. The PTO (and its current management) have a hard enough time with the relatively minimal procedures they currently implement. But the system is clearly broken — it’s not as if the courts are doing a great job.

  94. Lowly, was the reference you cited non-patent prior art? During an interview in an ex parte reexam, I was told by an Examiner that they prefer avoiding non-patent literature where possible to avoid all the enablement (there was a real issue with the cited publication), accessibility and other questions with which Examiners are not particularly well -equipped to handle. So it’s not a pride thing, its a laziness/institutional competence thing. If in fact it was NPL.

    I recently cited a dead bang 102 in an ex parte, this time a patent, and the Examiner adopted my reasoning in the cut and paste fashion you mention.

  95. Malcolm: By the time you’re deciding to gold plate your patent or not, you’re not at the provisional stage. Because it’s about cost of examination, which does not apply to provisional patents. But I’m sure you know that. Right?

    I find Ms. Rai to be aggravating because she seems to make rather unfounded assumption that most people filing patents are doing it just for the entertainment value, and don’t actually consider their patents to be worth anything. If you read Lemley’s article (another career academic who’s never been a patent prosecutor) you’ll see exactly that. He assumes that inventors file patents just for kicks.

  96. Judith “They’re spending $5-15K on getting that patent prepared and filed.”

    Actually a lot of firms charge more like $2,000 for a provisional filing. And a lot of clients do not file on “inventions” that their employee “inventors” think are valuable because the employee “inventors” are often clueless about what is patentable and what isn’t. But of course you knew that, Judith, because you worked in the private sector which makes you super awesome and smart.

  97. She’s not a registered patent agent or attorney. Never worked in the private sector. Academic through-and-through. No wonder she’s full of it.

  98. Why do you think that this post-grant opposition will be any better/different from a reexam? As to the success of reexams, while almost all reexam requests resulted in a rejection (otherwise they’d have to refund most of the fee), in most cases, the reexam resulted in a patent being issued with no better claims than the original. Only 10% of cases ended with all claims rejected. And, of course, inter partes reexams just aren’t concluding.

    As to gold plated patents, why don’t you just increase filing costs, and be done with it. No one is going to say “my patent isn’t worth it.” They’re spending $5-15K on getting that patent prepared and filed. The inventors consider them to be valuable, I assure you.

    I submit that the author of this piece has never worked in a law firm, or with a small inventor.

  99. “Without your good attack, Lowly, those references applied by the PTO would perhaps not have succeeded either.”

    You know, I’m inclined to agree with you. Look at the stats — most patents are upheld by an ex parte re-exam but most are invalidated by an inter parties re-exam.

    of course, using an inter parties re-exam is VERY dangerous in the us and most litigators will kick you swiftly in the nads if you so much as suggest such a thing.

  100. Well, now we are seeing parallels with EPO practice, where the EPO will revoke on prior patent references that ordinarily would stand no chance of securing a revocation, Opponent’s success coming only because the opposition division can see the merit in the prior user attack but has no training in weighing witness evidence and therefore no stomach for writing a revocation decision that is based on prior use. Without the prior user attack, the opposition would have failed. Without your good attack, Lowly, those references applied by the PTO would perhaps not have succeeded either.

  101. How to reconcile Lowly’s (bad) experience in iP re-exam with that (good) of “Somebody” in eP re-exam. Newton’s Rule. To every force there is an equal and opposite reaction. Thus “Judge you must find my client innocent” has exactly the opposite effect. Judge thinks “Oh yes? We’ll see about that”. Same reaction in the PTO, to Lowly’s powerful plea on behalf of his party, that the patent must be revoked?

  102. I never did an inter-parties reexam, but I have done four or five ex parte ones. I think the new reexam team is good relative to the rest of the examination corp. I’ve never had them ignore any good reference.

    Go Senator, and soon to be President, Barack Obama. Please personally go to the USPTO and scare the dickens out of those people. I am at your disposal and will work for peanuts to be part of the cleansing.

  103. “Re-exams are now done by a panel of hand-picked GS-15 primaries whose only job is to prosecute re-exams.”

    And they’re doing such a great job of it too. (sarcasm off)

    What’s the pendency of a re-exam now?

    Leave it to the PTO to take a broken system and break it some more.

    But let me guess, all of the examiners in the Central Reexam Unit(s) are doing “outstanding quality” work and getting bonuses.

    So predictable.

  104. NC: I’m in Europe, and ignorant of such matters. I was just offering an idea, that might explain Lowly’s disappointing experience with re-exam. Now you tell me about the hand-picked PTO re-exam team, I’m even more perplexed, why the PTO didn’t use the high quality prior art material that Lowly presented to them.

  105. What do you mean “senior PTO people put the word around, to discourage” re-exam work?

    Re-exams are now done by a panel of hand-picked GS-15 primaries whose only job is to prosecute re-exams.

  106. In that case, Lowly, can only say, inexplicably poor attitude by the USPTO. The EPO shows no such diffidence, when an Opponent puts up a case that an EPO-issued patent is bad. For the life of me, I can see no reason why the PTO should take the attitude that it was “wrong” to grant, when it didn’t have the benefit of the art you are presenting. On the contrary, like in the EPO, it was right to issue , and then right again to revoke, on the enhanced prior art landscape revealed by the Opponent. Actually, a change of top management at the EPO did wonders, so maybe it can too, at the USPTO.

  107. The only reasons I can think of, to explain such bizarre behaviour, are:

    1) your attack didn’t have the legs you thought it did (but that seems unlikely)

    2) Exr too proud to admit that your art was better than anything the PTO had found (but that seems unlikely).

    3) Re-exam work is extra work for the PTO, so senior PTO people put the word around, to discourage it, at all costs. (Something similar happens at the EPO, with Art 115 EPC). You were discouraged, weren’t you?

    1) This was an important re-exam and I worked with several other attorneys here on it. My attack was flawless.

    2) I really think this was the case.

    3) The PTO hates admitting it was wrong and to invalidate a patent on a re-exam shows that it made a mistake in granting it. That’s my take on why the PTO doesn’t like re-exams..

  108. The only reasons I can think of, to explain such bizarre behaviour, are:

    1) your attack didn’t have the legs you thought it did (but that seems unlikely)

    2) Exr too proud to admit that your art was better than anything the PTO had found (but that seems unlikely).

    3) Re-exam work is extra work for the PTO, so senior PTO people put the word around, to discourage it, at all costs. (Something similar happens at the EPO, with Art 115 EPC). You were discouraged, weren’t you?

  109. “Lowly, as to inter Partes re-exam, I thought that the stats (Bromberg newsletter) show good success for the party attacking the patent. How do those stats square with your observation above. Peer review was always going to be a dead duck, from the get go, but is iP re-exam also not working? That’s more of a surprise to me. I like the idea of gold-plated patents, but am not much enamoured by the idea of all the rest, “duly” issued but without any such plating. Reminds me of Germany’s “unexamined” 10 year patents, co-existing with their 20 year term “examined” rights. Germany can’t persuade the European Union that “unexamined rights” are a good thing.”

    The stats for an inter-parties re-exam are favorable for the party attacking the patent, however, from my limited experience in this area, it seems that the USPTO doesn’t want to use the references and arguments provided by the adverse party. I provided an examiner with a dead on piece of 102 art coupled with a wonderful argument. He could have copied and pasted what I gave him into an action then headed out early in time for happy hour. Instead, he went and found his own references which weren’t nearly as good as mine.

    In any case, inter parties re-exams aren’t popular at all.

  110. Lowly, as to inter Partes re-exam, I thought that the stats (Bromberg newsletter) show good success for the party attacking the patent. How do those stats square with your observation above. Peer review was always going to be a dead duck, from the get go, but is iP re-exam also not working? That’s more of a surprise to me. I like the idea of gold-plated patents, but am not much enamoured by the idea of all the rest, “duly” issued but without any such plating. Reminds me of Germany’s “unexamined” 10 year patents, co-existing with their 20 year term “examined” rights. Germany can’t persuade the European Union that “unexamined rights” are a good thing.

  111. Gold plated patents? Peer review has been proven to be fairly worthless for a couple reasons: nobody is going to review that many patents and the PTO always thinks it knows better. A ‘peer’ could submit perfect, knock-em-dead 102 art and the examiner wouldn’t use it. Anyone who has worked on an inter parties re-exam should know what I’m talking about here.

    Personally, the thought of Obama as our next president makes me sick to my stomach for many reasons, although I do think he’d probably put better people in the PTO than McCain would. McCain would probably appoint people for political reasons. Another Dudas, who has neither examined nor prosecuted an application… wahoo. Obama, a harvard law professor, might actually put someone with some prosecution experience in the PTO.

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