Patently-O Bits and Bytes No. 55: IP Scholars Edition

  • A Debate on Patent Policy: Obama (representatives) vs. McCain (representatives). August 28 in Denver (on the last day of the Democratic convention). See Professors Sprigman and Rai defenda Obama against Reines and Gifford. [LINK]
  • Stanford’s IP Scholars Conference included lots of interesting academic works in progress. Here are a few examples [LINK].
    • Chiang (George Mason): Ex Post Claiming – “Patent law permits moving the fence to enclose the neighbors’ new house, and then evicting the neighbors for trespassing.” Chiang proposes a rule to eliminate any claim amendments made after a patent has issued (i.e., no continuation amendments). Pre-allowance amendments would be given the priority date of the amendment.
    • Chien (Santa Clara): The Cold War is not over. Discussing how the arms-race justification of filing patents is alive and well.
    • Cotropia (Richmond): Proposing a requirement that inventions be reduced to practice before patent filing.
    • Crouch (Missouri): Considering the justification of design patent protection as an alternative rule of evidence for protecting trade dress rights.
    • Greenbaum (Stanford): Explaining why University Tech Transfer offices should be abolished and university inventors should get to keep their rights.
    • Hemphill (Columbia): Empirical work on generic drug settlements in the shadow of Hatch-Waxman.
    • Kapczynski (Berkeley): India’s progress in implementing TRIPS obligations for pharmaceutical inventions.
    • Liivak (Cornell): Examining ways of modifying patent law to encourage competition without relying solely on granting anti-competitive rights.
    • Masur (UChicago): Discussing the positive value of costly patent prosecution. It serves as a screen to block many worthless patents.
    • Pulsinelli (Tennessee): Proposing that new matter restrictions be softened to allow the addition of best mode information. This is important for international applicants who do not face the best mode requirement in their home countries.
    • Sichelman (Berkeley): Proposing a new form of intellectual property based on commercialization of new technology.
    • Vermont (George Mason): Narrowing the doctrine of equivalents over time.
  • Non-patent, but really interesting:
    • Bartow (South Carolina): Counterfeits, Copying, Class, and Confusion.
    • Oliar and Sprigman (Virginia): IP norms in Stand-up Comedy.
    • Rowe (Florida): New Generation Employees and Trade Secrets

69 thoughts on “Patently-O Bits and Bytes No. 55: IP Scholars Edition

  1. Today the patent office represents the larger companies that activly steal designs and hire gangs of attorneys to keep control of what they have stolen. Today many designs that have been in common use in some cases for 100 years within the machine tool industry have been patented in the last few years. I have had a design sold both nationaly and internationaly for a number of years openly copied and patented by a much larger company. There patent attorney said ” let me tell you something micro soft copies people all the time and they get away with it because they have a lot of attorneys , well we have a lot of attorneys too so good luck”

  2. “The top line of your homepage is missing a ‘v’.”

    And a fascinating website it is, too. Patently-O readers might be interested to know, for instance, that Michael R. Thomas’ grandfather Delbert Roberts (1869 to 1953) invented BOTH pasteurization AND the internal combustion engine, based on conversations with Louie Pasteur. Among Delbert’s further inventions are skyscrapers, the I-beam, and the United States Congress.

  3. The main topic of this debate should be placing patents into the correct invention concievers name.Only a relative few patents that genuinley advance human intrests are concieved yearly without proper crediting and compensation the whole system grinds to a productive hault.Failure to advance inventorship determination methods means the few valuable patents will continue to be stolen resulting in continued corruption and frauding.

  4. TJ wrote: “Our difference, I think, lies in a debate about whether such examiner-surrender is “seeing the light” or “giving up due to exhaustion.” I think both happen, though the relative proportion is debatable.”

    The goal of the USPTO is to issue patents. There is no surrender taking place.

    Examiners allow virtually all patent applications (barring the rare cases where the applicant runs out of money or refuses to amend the claims).

  5. TJ,

    Delay in issuing broader continuation claims, coupled with third parties’ close competition with/copying of the patent disclosure or reliance on narrower original claims would create a strong case of prosecution laches, even putting aside the desirability of the prosecution practice from a policy standpoint.

    See Cummins-Allison Corp. v. Glory Ltd., No. 02-C-7008, 2003 WL 355470, at *40 (N.D. Ill. Feb. 12, 2003) (compliance with continuation process does not immunize an applicant from the prosecution laches defense); see also Reiffin v. Microsoft Corp., 270 F. Supp. 2d 1132, 1155 (N.D. Cal. 2003) (factors to consider in determining whether delay is reasonable: (1) the prosecution history of plaintiff’s patents was typical of patents in that field or patents generally; (2) any unexplained gaps exist in the prosecution history; (3) plaintiff took any unusual steps to speed or delay the application process; (4) the PTO or other reviewing body took any unusual steps to speed or delay the application process; (5) plaintiff took any steps to limit public awareness of his pending applications or the inventions he sought to patent over the course of the prosecution; (6) any changes in plaintiff’s prosecution of the application coincide with or directly follow evolutions in the field that relate to the claimed invention; and (7) legitimate grounds can be identified for the abandonment of prior applications).

  6. ” . . . which results in the pressure to collect easy counts–RCEs + cut-and-paste FAOMs . . .”

    Despite the common assumption made by attorneys, the Examiner could usually care less about “pressure to collect” RCE counts. It’s not exactly like I (or most other Examiners) have RCEs coming into our amended docket by the handful and no examiner can sit back and just wait/hope for RCEs to come in – - i.e. RCEs really only account for a small part of any single Examiner’s total production. From what I’ve seen, some (maybe most?) Applicants file RCEs when faced with a fairly strong rejection and not wanting to take their chances at the BPAI – - i.e., Applicants feel that they can “bribe” an Examiner into allowing the case with “easy” RCE counts rather than facing the risk of appealing the case and having the Board affirm the Examiner’s rejections.

  7. I have gotten comparatively broad claims on continuations because there was not any prior art as of the filing date. If we claim only what is disclosed in the specification, why would we have to acknowledge a later date? That would just give up to others who practiced what was in the disclosure – which is our REAL part of the bargain to the public, not the claims. Too much navel gazing by academics.

  8. Also, keep in mind that there is a good possibility that art was missed in the search so draft even more claims and purchase even more malpractice insurance.

  9. I was rather curious on the answers to my above questions. Specifically, what happens one year after an application publishes? Is an applicant effectively barred from any amendments at that point? And won’t this just encourage more applicants to file non-publication requests, thereby defeating your goal of increased public notice?

    Second, are you at all concerned that the incidence of appeals will skyrocket and a huge appeals backlog will be created, where, essentially, a large percentage, if not a majority, of applications are effectively examined through appeal.

    I guess I will follow up on the ongoing discussion as well.

    Are you at all concerned that the cost of a patent application may well quadruple (or more)? Detailed searching will effectively be mandatory, as having to later amend a claim set due to unknown prior art would often bring a malpractice claim. Further, you would not dare trust summaries of references from an outside firm, as doing so could have excessively dire consequences when you later have to amend. Also keep in mind the results of this search will necessarily be submitted as an IDS (at the risk of IC) and available in ligitation later. Further, a practitioner will draft many, many, many more claims than they otherwise would just to ensure that meaningful protection will be obtained without amendment. And submitting massive numbers of claims (especially ind. claims) will require large excess claim fees.

    The result of this is that start ups will have a hard time coming up with the funds necessary to achieve meaningful protection right out of the gate. If they file an applicaition with a small, narrow claim set, it will likely be designed around. But a patent application with a broader claim set would cost way more than most smaller start ups will have available.

    Putting aside that you don’t draft applications, how many hours would you want to review prior art found in a search and draft enough claims based on that prior art to ensure broad protection of the invention without amendment? Keep in mind that the application likely won’t be examined for years, so if you missed anything, under your system, you might as well sue yourself for malpractice.

  10. Regarding Professor Crouch’s Abstract:

    For a given design -

    If it is non-functional AND a source identifier (with secondary meaning) AND meets the commercial use requirements, one may get indefinite trade dress protection.

    If it is functional, then there are two options: 1. copyright protection; and 2. design patent protection. Again the question relates to functionality.

    If the design is conceptually separable from the utility/functionality, then one may get finite (although the late Congressman Bono would have had it another way) protection of life plus 70 years (unless it is a work made for hire).

    If the design is not conceptually separable from the utility/functionality, then you get 14 years of design patent protection.

    Am I missing something?

  11. “But society is getting all thats intended: free use of _the_patentable_subject_matter_in_ the disclosure after 20 years.”

    Well, that’s less gross, in any event. Given doctrines such as disavowal of claim scope, prosecution history estoppel, and the like, it appears that courts have given the benefit of most doubts to the public. Thus, I think it might be more accurate to say that the inventor is entitled to exclude others from his claimed invention for 20 years, while everything else goes to the public. Under this formulation, the courts’ concerns about such things as public notice make a little more sense. While I’m not sure that TJ’s suggestions are feasible, I think it’s more than a bit specious to suggest that the public has clear notice of “off-limits” subject matter, given today’s claim construction and infringment jurisprudence, the apparent inability of the Office to do very helpful examination in some cases, and the increased skill with which prosecutors (myself included) obfuscate what the “essence” of the invention is.

    That said, I believe I’ve stated before that drafting claims to cover a product that shows up between filing and prosecution has a venerable and legitimate history. If there’s any problem with unfair surprise, perhaps they could be addressed, as some have suggested above, with speedier prosecution and/or with existing law and doctrines.

  12. Hundreds of claims filed in all applications — and you think that the Patent Office is crippled now. The patents would probably not issue for ten, fifteen or twenty years.

  13. Curious,

    No, the PTO will not examine that claim under the current rules. But that is because there is a good reason for those rules: the omnibus claim provides no meaningful notice of the scope of the patent. The effect of unlimited continuations, however, is exactly to achieve the same scope as the omnibus claim through the back door.

    And yes, patent applicants will undoubtedly file more original claims if my proposal goes through. I think of that as a good thing. A hundred claims that impose real limits on the patentee is better than one claim that is not worth the paper it is written on because it can be changed later.

  14. “SF, that is a gross mischaracterization of the public’s side of the patent bargain. Society is “intended” to benefit from the moment the disclosure is published, via the stimulation of design-arounds, improvements, etc.”

    Not mischaracterization. Perhaps, imprecise. Let me rephrase: “But society is getting all thats intended: free use of _the_patentable_subject_matter_in_ the disclosure after 20 years. So TJ’s argument is a red herring.”

    Would you suggest that society is intended to get the patentable subject matter before the end of the patent term due to the inherent limitations of patent prosecution practice?

  15. TJ wrote:
    “But broad claims do get issued on the Xth continuation; so we can agree that examiner-surrender happens.”

    No, that doesn’t logically follow. All issued broad claims on the Xth continuation could very well be allowed for reasons other than Examiner surrender.

    As others have pointed out, the incentive is to *not* surrender and continue to collect RCE counts (assuming the rejections are correct). There’s absolutely no pressure to surrender exerted by anyone in the Examiner’s chain of command. And what pressure can I really exert on an Examiner?

    On the contrary, PTO management pressures are the count system (which results in the pressure to collect easy counts–RCEs + cut-and-paste FAOMs) and “quality” goals (which result in pressure to reject at least all bad claims).

    In any event, that’s all tangential to your main thesis and not going to be solved here. Perhaps a good research project, though….

  16. “But society is getting all thats intended: free use of the disclosure after 20 years. So TJ’s argument is a red herring.”

    SF, that is a gross mischaracterization of the public’s side of the patent bargain. Society is “intended” to benefit from the moment the disclosure is published, via the stimulation of design-arounds, improvements, etc.

    “But, if I have to choose between an applicant that actually invented something and a copyist that is slightly disadvantaged, I’ll choose the applicant.”

    Since you’ve chosen the nicely loaded term “copyist” for your premise, I’ll agree with you. But not all accused infringers are “copyists” in the sense that you appear to mean. I daresay that not even most of them are, at least not in industries I’ve worked in.

  17. Referring to the comment above, TJ:

    “Would everyone automatically file provisionals followed later by regular applications when they have a better idea of exactly what they want to claim?

    And then would everyone present hundreds of claims presenting every possible permutation and combination which comes to mind?”

    Let us have your thoughts as to how patent prosecutors would act if your proposed patent law changes are enacted?

  18. “1. Everything that is disclosed and enabled by this specification, and novel and non-obvious.”

    And the Patent Office is going to examine this claim, TJ?

  19. Curious, you make my point for me. Yes, the rest of society has access to the specification and the file wrapper. But with unlimited continuations, you make the rest of society bear the cost of figuring out what the correct claim should be. If you think that is a good way to arrange things, then every patent should have just a single claim:

    “1. Everything that is disclosed and enabled by this specification, and novel and non-obvious.”

    That would make patent prosecution so much cheaper!

  20. Once again, we hash and rehash the tired debate:

    The public benefits fully from the entire disclosure. Therefore, the applicant should have the ability to leverage the entire disclosure for the entire statutory term of 20 years. The best way to do that is to allow continuations for the entire statutory term.

    Of course, copyists would love to leverage the disclosure-dedication rule so that they can use disclosed, but not claimed subject matter. And it’s much easier for copyists to design around claims than a specification because the relatively liberal written description requirement here in the United States makes it difficult to predict the precise bounds of what someone might claim.

    This difficulty in predicting the precise bounds of potential claims may unfairly benefit the applicant. In particular, some competitors may not pursue products because they are very similar to the disclosure and, while they believe the applicant has not enabled or described claims that could read on the products, they aren’t sure that the USPTO will have the same view.

    But, if I have to choose between an applicant that actually invented something and a copyist that is slightly disadvantaged, I’ll choose the applicant.

    TJ, on the other hand, couches the dispute between the applicant and “society.” But society is getting all thats intended: free use of the disclosure after 20 years. So TJ’s argument is a red herring. The real issue is the copyists in society who want to leverage the disclosure-dedication rule before the 20 year term is over. TJ believes the best policy is to err on the side of copyists, since applicants are in a better position to avoid the application drafting problems.

    I disagree, because (assuming you mandate publication), what we’re really talking about is the unfair leveraging of the uncertainty of the margins of claimability and that doesn’t seem like too much of a problem to have to solve with drastic changes to continuation practice.

  21. Also, as stated above by johndarling, The production system is the 800 lb. gorilla in the room. Unless, and until, it is changed, there never be any meaningful “reform” or “progress” at the PTO.

  22. The rest of society, TJ, has easy access to the file wrappers and thus is also aware of much of the so-called bad claim drafting.

    Please cite examples of specific patents where the examiner gave up due to exhaustion. (I have been in private practice nearly 30 years and am not aware of any.)

    Part of the problem is the long delay in receiving a first Office Action and the failure of the examiner in the first Office Action to cite the best art.

  23. Anon E. Mouse — I realize that the “wearing down the examiner” argument really grates prosecutors. I am also aware of the count system. But broad claims do get issued on the Xth continuation; so we can agree that examiner-surrender happens. Our difference, I think, lies in a debate about whether such examiner-surrender is “seeing the light” or “giving up due to exhaustion.” I think both happen, though the relative proportion is debatable.

    pds — I don’t expect perfect claims. I also concede that my proposal will punish imperfect claims. That is because imperfect claims cause loss, and somebody has to pay for it.

    Your position is that, because the applicant is not at fault, he necessarily should not be the party paying. What that ignores is that it means all the rest of society is paying for the loss caused by badly drafted claims. In what sense is the rest of society so at fault that it should pay for the patentee’s bad claim drafting (albeit unavoidably bad claim drafting)?

  24. TJ,

    Under your proposed changes, what happens one year after an application publishes? Does the application become prior art against any later amendments to the claims? If not, what is to prevent a third party from copying some or all of the publication and republishing it so that it is prior art? Ironically, this would seem to encourage applicants to request non-publication.

    Next, what about provisional filings? If a provisional contains no claims, are any claims added in the nonprovisional entitled to the filing date of the provisional? What about foreign applications? Claiming practices differ in different jurisdictions. If newly introduced claims do not gain the priority of a foreign application, is there any point to such priority? If the application is written in a foreign language and the applicant rewrites the application in English, does that constitute an amendment?

    Then of course, there are the practical issues many have touched on. Poorly composed Examiner rejections are commonplace. If all of these poor rejections, rather than being a source of constant annoyance and additional expense, were instead to suddenly have very real and significant consequences, you would see an exponential increase in appeal filings. Unless significant changes were made to current examination practices, I suspect that an enormous percentage of applications would end up being appealed.

    Lastly, as many have pointed out, it is simply not realistic to expect all applicants to be able to claim their invention perfectly on their first attempt. Perhaps in some arts this is possible, but in many it is certainly not. Consider that applicants will be forced to choose between seeking to obtain the broadest protection possible, guaranteeing that they will obtain some protection, or paying for an enormous number of claims to seek protection on various levels in between the two extremes. In some arts it may be easy to craft detailed claims at the outset that will still provide meaningful protection, but in other arts it is often a near impossible task, as competitors will often find a non-infringing work around.

    As an aside, the effect of this rule would actually be even more stringent than the proposed PTO submissions. Applicants would have to perform extensive searches before filing a claim set, or else risk malpractice claims later when they are forced to amend around prior art and lose the priority date.

  25. I agree with the above comments from PDS, JD, etc.

    Also, whenever I hear anyone refer to “wearing down the examiner,” it is a clear indication that the person does not understand really anything the way patent prosecution works, and I should treat anything they say on the topic with extreme skepticism. An examiner can’t be worn down – he gets just as much credit for the first Office Action after the tenth RCE as the first Office Action. Actually, he likes it better, because an updated, rather than a whole new search, is all the needs to be done. It is Examiner’s who can wear down applicants and inventors.

  26. There are some patent families that have ballooned into continuations that are pretty amazing. Dennis – do you still have that chart on the 35S case from Monsanto you can post?

  27. I’m having trouble understanding how the potential infringer can be “surprised” by claims obtained in a continuation (directed to the potential infringer’s product). Proper due diligence mandates that one search issued patents and published applications to make sure the road is clear of actual/potential third party rights. The USPTO’s Public PAIR interface has made it effortless to see continuity information, pull published applications, see the FWE statements made by Applicant (and that will apply to the continuations). It’s not hard to read the spec and make an educated guess as to whether your contemplated product is described therein.

    Unless a potential infringer has its head in the sand, I can’t see how it could reasonably be blindsided by a competitor’s continuation claims directed specifically at the infringer’s product.

  28. TJ’s suggestion seems to require what E6K appears to want… picture claims that narrowly define a specific embodiment of the invention. Amendment resulting in a priority date of the filing of the amendment would maybe, just maybe, work in a patent examination system where the claims must be picture claims and have ALL of the possible features disclosed in the specification.

    Of course, that is not the patent examination system we have, so TJ’s proposal is rather untenable unless it is accompanied by sweeping changes in the patent prosecution rules as a whole.

    It also is untenable in view of the fact that a majority of amendments to non-final office actions are in response to shaky rejections in the non-final office action, often based on strained interpretations of the prior art.

  29. The “wearing down the examiner” argument is flawed, and seriously undercuts the “conclusions” drawn by Lemley and Moore, and Prof. Rai in her 2007 Georgetown University Law Review article.

    The production system is the 800 lb. gorilla in the room. Unless, and until, it is changed, there never be any meaningful “reform” or “progress” at the PTO.

  30. “Or more likely to keep minorities out of patent law firm practice and at the PTO.”

    Umm.. the PTO doesn’t hire minorities? I just spit out my coffee. An examiner who has english as a first language is a rarity. Seems like everybody at the patent office is from china, india, and vietnam.

    “Now as to changes to patent law… no such thing… people are just going to avoid changes just they did with the “new” rules because it did not bode well with BIG LAW… apparently BIG LAW’s lobbying always trumps BIG CO. Congrats again BIG LAW.”

    The new rules were unconstitutional, would hurt many companies, and would harm innovation in this country. A “bad” patent is one that someone sues microsoft or cisco for infringing, right?

    A lot of my clients are smaller and mid-sized companies who NEED patent protection for their products or the big guys will swoop in, copy them, and drive them out of business. Those new rules would have harmed my clients’ businesses.

    Please remove your head from where the sun don’t shine.

  31. “the subjectively in a 103 response, for example, is used by partners to keep associates out of partner ship…
    Or more likely to keep minorities out of patent law firm practice and at the PTO”

    Missing quote from my posting above

  32. “[The Applicant] is paying $3k – $5k per reply to office action in the mechanical and electrical arts.”

    If that’s typical in your practice then your clients are paying almost twice as much as they should be paying.

  33. 102/103 112??? debates about changes to patent law??

    Please… any patent practitioner worth his or her salt knows that all these statues are so subjective and not consistently applied (expect a blog to show up soon taking prosecutors amendments and critiquing it online)… Basically, the subjectively in a 103 response, for example, is used by partners to keep associates out of partner ship…
    Or more likely to keep minorities out of patent law firm practice and at the PTO. Congrats BIG LAW. There should be a minority registry to keep track of all the fake reasons BIG law gives to keep minorities out (whether it be partnership or a job).

    Now as to changes to patent law… no such thing… people are just going to avoid changes just they did with the “new” rules because it did not bode well with BIG LAW… apparently BIG LAW’s lobbying always trumps BIG CO. Congrats again BIG LAW.

  34. TJ:

    I have more substantive comments, but no time right now.

    But on a tangent: please re-evaluate your position on “wearing down the Examiner” in light of the incentives posed by the current count system and costs to the applicant. This phrase has done more harm than good for the ivory tower’s reputation–it is a signal that the author does not prosecute patents and doesn’t understand the PTO or the patent prosecution process as implemented.

    —And it really grates on our nerves because it (a) is wrong, and (b) assumes that we and our clients are unethical.—

    Incentives matter–the most dedicated professionals respond to incentives, as they should. But the count system doesn’t lead to “wearing down the Examiner.” Quite the opposite. Lemley’s work is flawed in this area–as I remember it, he misstated the count system, stating the only counts available after the FOAM were for allowance. Not quite.

    Examiners–you get a count for the FOAM after the RCE, correct?
    You guys/gals also get a count for the RCE itself?
    And abandonment? Another count, I believe (assuming no RCE filed).

    The incentive is to keep prosecution going via at least RCEs. For example, an allowance after final rejection (no matter how correct the Applicant is in its arguments to the final) often happens on “the three point play” (force an RCE, then allow on first action after the RCE = 3 counts). It is cheaper for the Applicant to play along than to argue.

    If the Examiner’s rejection is correct, the count-system’s incentive is for the Examiner to stick to his/her guns, and reject, reject, reject. Cut and paste the rejection and collect the RCE + FOAM (after RCE) counts. No effort, all reward.

    If the Examiner’s rejection is incorrect or not well thought out, there’s still a strong incentive to squeeze an RCE or two out of the applicant. The risk is an appeal (expensive for the Applicant and not usually going to happen the first time around, the risk is really a talk to the SPE when the pre-appeal brief is filed).

    Most Examiners don’t do this, but a sizable minority certainly do. Others simply give out really bad first actions and never give a second non-final. Unfortunately, this is becoming pretty common (sizable minority? majority? unsure–but the Examiners that take to time to read this board probably care more about patent law than the ones that do this).

    The net effect is a first *real* office action is a final office action … and now an RCE is a matter of course no matter how well the claims were initially drafted. This is a little insight into why the practitioners got so angry about the CON/RCE rules.

    Please remember, I’m not dinging Examiners. They respond to incentives as each and every one of us does. In general, they are doing the best they can in the system as it is–they have a small amount of time in which to generate the required counts or get in trouble for not meeting production requirements.

    On the other hand, the typical Applicant’s immediate incentive is for a quick prosecution. He is paying $3k – $5k per reply to office action in the mechanical and electrical arts. Every office action hurts, whether you are an independent inventor paying out of pocket or a corporate IP counsel working with a limited budget.

    I don’t think many Applicants abandon as you suggest might happen, but rather they amend their claims to cover only an extremely narrow embodiment, perhaps covering one of their own products already in the market, and then file a continuation to get what the inventor (I mean the actual inventor that works for the Big Corp or on his own) really considers his invention — that would read on the other products coming out of their own and their competitors’ shops.

    This is a business decision and not a patent law decision. It doesn’t matter what you are entitled to, it matters what you can afford to show you are entitled to (and what is going to be around in how many more years until that patent finally issues)

  35. and what happens if you amend an original claim to correct an indefiniteness problem — what is the date?

    Are patent prosecutors going to have to fight indefiniteness rejections?

    Are they going to have to fight weak rejections instead of making minor changes to the claims? The public might not know for years what claims will issue or what the “date” of those claims will be.

  36. I should have said “The willingness of the inventor/applicant to disclose is presumably based on HIS KNOWLEDGE OF the current law.”

  37. “I think of amending to claim a different feature to avoid prior art as essentially capturing a different invention from what the inventor had in mind when first filing.”

    I found this statement to be very interesting and a fundamental misunderstanding on your part. The specificition describes the invention, whereas the original claims are a first stab at describing the patentable invention.

    There is a big difference between what applicant has invented and what may be patentable. Applicant cannot know what is patentable unless applicant has perfect knowledge as to how an examiner (or federal court) construes the language of the claims and perfect knowledge of the prior art.

    As more informaton is received, applicant has a greater ability to to know what, from his invention, is patentable. Also, a single specification may contain dozens of patentable inventions. However, for many reasons, it may not be praticable to claim all these inventions at once. Without ex post claiming, however, this would not be proper.

    However, fortunately for us in the real world, the law and the courts favor the inventors over the infringers. As such, although responding to your suggestions are an interesting intellectual exercise, these suggestions will never see the light of day.

  38. The “imperfect information” also includes thorough knowledge of all possible prior art including footnote 95 of that Russian article.

  39. “If the inventor is willing to disclose something new and novel and not bother to claim it at the time of filing, then it can’t be all that important to his incentive.”

    TJ, I think you’re correct to try and evaluate this with respect to the public/private quid pro quo of the patent system, but I don’t think that this particular conclusion follows. The willingness of the inventor/applicant to disclose is presumably based on the current law, so you can’t assume very much about his failure to claim particular subject matter at the time of filing. He knows he has plenty of time to claim it, presuming it was properly described. The real question, then, is whether the incentives/disincentives to disclose are materially changed by your proposal. Some of the commenters here have suggested that the costs will change, which certainly affects the balance. A lot? Who knows?

  40. “pds, your rhetoric is really not helping.

    TJ, your ignorance of the process doesn’t help at all. You expect perfect claims at the beginning but don’t understand that applicants are working with imperfect information and an imperfect tool (i.e., the English language). You then propose punishing applicants as a result of working with this imperfect knowledge. A good attorney can draft dozens and dozens of different sets of claims to cover the same invention … however, the USPTO fee structure and the costs of preparing those claims limit applicants ability to present that many claims to cover all possible contingencies.

    Again, if you ever had to take a disclosure, consider all the possible inventions that could be claimed, and then try to narrow those possibilities down to a reasonable number, you wouldn’t be suggesting such nonsense because they would know better.

    “The question is whether he has a right to claim it *later*.”
    There is no question, as that question has been answered in the affirmative many times by the courts.

    “Please read the paper on why this does not make the difference.”
    I spent about 20 minutes skimming it. Unless you’ve gone through the process, talked with clients, understood the limitations of all aspects of the process, I don’t give your insights much credit. I would be willing to wager, that a second year patent attorney would NEVER make the suggestions you have.

    “If they have highly limited information but choose to file nonetheless, then the new information that they receive later is not what motivated their filing.”
    What motivated the filing was the opportunity to protect applicants’ invention. However, applicant does not have the perfect information to properly protect (i.e., properly claim) until later on in the process. However, this is why the system allows for the claims to be easily amended and the specfication (i.e., the description of the invention) not to be amended.

    The specification is simply applicant saying “this is everything that I’ve invented” whereas the original claims are “this is what I think, from what I know, is patentable from what I’ve invention.”

    “As for your hypothetical, it is a non-issue. If the examiner will grant the narrow dependent claim, I have no problem with filing a continuation to prosecute the broader original independent claim–that does not require filing an amendment in the sense of changing claim language. At most, it requires rewriting in independent form, which I have no problem with.”

    The independent claim is still a form of ex post claiming. A potential infringing party still has to go through the same process you’ve described to determine whether or not they can practice some technology.

    You are WAY too hung up on the original claims. Any experienced patent attorney doesn’t worry too much about original claims. We try to get them in the best form we can prior to filing, but there is just way too much we don’t know to get them perfect.

    BTW: The quid pro quo for a patent is applicants’ disclosure, not the claims.

    Personally, you seemed to be more worried about the cost to potential infringers than the cost your proposal will inflict on the people (i.e., the inventors) who actually provide value to society as a whole. What you suggest will significantly raise the costs for obtaining a patent and render obtaining a patent the sole provence of the rich.

  41. Would everyone automatically file provisionals followed later by regular applications when they have a better idea of exactly what they want to claim?

    And then would everyone present hundreds of claims presenting every possible permutation and combination which comes to mind?

  42. It’s not a shocking relevation that TJ admits that he or she has “never been through the process” since his or her standard would make malpractice insurance rates skyrocket. Also, this standard would drastically increase the overall cost of applications because applicants would spend more time drafting more claims, rather than describing their invention. Prosecutors and applicants both want continuation practice to help save their butts down the road.

  43. Dear TJ:

    Naivete is charming, but not with so much at stake. One hypothetical might clear up some confusion.

    Assume I have independent claim 1 with 5 dependent claims. If my amendment incorporates into independent claim 1 a limitation found in dependent claim 2 as originally filed, and thus overcomes a prior art rejection, have I now claimed a “different” invention (and thus should have a later priority date for “new” claim 1)?

    (Keep in mind that if I add a limitation NOT found in any of the dependent claims, I lose the presumption that my specification satisfies the written description requirement of Sec. 112.)

    Thanks in advance for answering.

  44. pds, your rhetoric is really not helping. But you do raise a few points worth addressing:

    1. I understand that you need to enable under 112, and you need to be novel under 102/103. The problem is not whether the thing that is being retroactively claimed is new or enabled. The problem is whether the thing being retroactively claimed is necessary to the inventor’s incentive. If the inventor is willing to disclose something new and novel and not bother to claim it at the time of filing, then it can’t be all that important to his incentive. The ability to file continuations may be very valuable in absolute terms, but it is unlikely to be what motivates the patent filing. If you really regard something in your spec as key to motivating your filing at the time you file, you put it in an original claim.

    2. I’ll grant that I’ve never been through the process, but I do not underestimate the difficulty of drafting claims or the limits of the English language. I expressly concede that mistakes will occur, and they are not always avoidable. Please read the paper on why this does not make the difference.

    3. I’ll also grant that applicants have highly limited information. But that is a feature, not a bug. If they have highly limited information but choose to file nonetheless, then the new information that they receive later is not what motivated their filing.

    4. As for your hypothetical, it is a non-issue. If the examiner will grant the narrow dependent claim, I have no problem with filing a continuation to prosecute the broader original independent claim–that does not require filing an amendment in the sense of changing claim language. At most, it requires rewriting in independent form, which I have no problem with.

  45. “You clearly don’t understand 112 first and second paragraphs. You CANNOT claim what you haven’t enabled. As such, one can claim everything in the specificiation under 35 USC 112. However, 35 USC 102/103 prevents one from claiming what is in the prior art. As such, if the claim is supported by the specification and not unpatentable under 102/103, then applicant invented the subject matter under the eyes of the law.”

    YES! Sorry, sometimes one must shout it out.

  46. “How do you feasibly distinguish between amendments trying to capture someone else’s invention and amendments simply trying to overcome art (or other) grounds of rejection?”

    The simple answer is that I don’t. Please read the paper for a detailed explanation of this, but I think of amending to claim a different feature to avoid prior art as essentially capturing a different invention from what the inventor had in mind when first filing.

    “That aside, if a patent applicant invented someone else’s invention first, shouldn’t the applicant have every right to claim it?”

    Well, yes and no. The applicant certainly has a right to claim what he invented. The question is whether he has a right to claim it *later*.

  47. I may be a bit confused.

    Aren’t applicants prohibited from claiming more than originally disclosed, enabled, etc., in continuation practice? If I understand correctly, the minute they do, it becomes a CIP with a later priority date. (Could be wrong though; not a prosecutor.)

    Also, viewing Chiang’s work in light of Vermont’s, it seems reasonable to conclude that continuation claiming is less an ex post claiming mechanism to ensnare competitors’ products and more a response to the aggressive narrowing of the DOE over time. That is, the state of the law strongly encourages applicants to make explicit what was previously implicit. And it has always been easier to exact royalties (and prove infringement) with claims that are literally infringed.

    That, and there are a number of really good reasons to have a bunch of different patents with different claims when chasing down infringers. For example, inequitable conduct as to one related patent does not taint related patents (even though I am still unclear why that should be the case).

  48. “I agree that capturing stuff the applicant did not invent can occur in original prosecution just as much as it does in continuations. That is why I propose that amendments in original prosecution should receive the date of amendment filing for priority against third party art.”

    You clearly don’t understand 112 first and second paragraphs. You CANNOT claim what you haven’t enabled. As such, one can claim everything in the specificiation under 35 USC 112. However, 35 USC 102/103 prevents one from claiming what is in the prior art. As such, if the claim is supported by the specification and not unpatentable under 102/103, then applicant invented the subject matter under the eyes of the law.

    What you don’t comprehend, since you’ve never been through the process, is (i) the limitations of the English language in describing an invention and (ii) the imperfect information with which the applicant works when preparing an original application/claims.

    Applicant cannot know all the prior art or how the examiner will construe the language of the claims, so why penalize the applicant by proposing that “amendments in original prosecution should receive the date of amendment filing for priority against third party art”?

    “As for wearing down the examiner, it is not a major point of my piece. I do believe it happens.”
    Hahahahahahahahahahahahaha … really, you need to get out more.

    Tell me should an applicant do when faced with somebody infringing their claims in the following situation?
    Suppose that the examiner allows narrow claims, but sufficient to prevent the infringer from practicing the invention?

    Should the applicant take the narrow claim now and file a continuation application later on the broader claims?

    or

    Should the applicant let the infringement continue (while possibly losing market share and profits) to obtain the broader claims?

    Another part of the hypothetical, the infringer (or another infringer) eventually finds away around the narrower claim but would infringe the broader claim.

    Normally, I would suggest the first option. However, under your “ex post” claiming proposal, applicant would likely not be able to obtain the broader claims.

    So, what advice do you give your client?

    “That is not to deny that the opposite may also happen, that is, erroneous rejections that lead to abandonment due to cost concerns.”
    IMHO, the abandonment of applications (with patentable subject matter claimed) occurs far more frequently than an examiner getting bullied to allow a meritless application.

    Also, consider what are the remedies for them.
    Application abandoned … none.
    Meritless application allowed …. ex parte/inter parte reexams, litigation.

    Moreover, if a meritless is particular bad, then it is easier to find prior art to invalidate the patent. BTW: you will find few litigators willing to litigate a patent in the face of really good 102 art.

  49. “Pre-allowance amendments would be given the priority date of the amendment.”

    Thus, the applicant would be punished by PTO delays?

  50. TJ -

    “Pre-allowance amendments would be given the priority date of the amendment.”

    So every time I amend a claim to overcome art rejections, I open up a whole new set of art that may be used to reject the claim based on the date of my amendment? How is this ever workable?

    “If the patent applicant is trying to capture someone else’s invention, then the lack of retroactive priority to original filing will defeat that attempt.”

    How do you feasibly distinguish between amendments trying to capture someone else’s invention and amendments simply trying to overcome art (or other) grounds of rejection? That aside, if a patent applicant invented someone else’s invention first, shouldn’t the applicant have every right to claim it?

  51. I’d prefer not to engage the personal attacks, but for those who have made substantive critiques:

    Anon E. Mouse — On your first point, I agree that capturing stuff the applicant did not invent can occur in original prosecution just as much as it does in continuations. That is why I propose that amendments in original prosecution should receive the date of amendment filing for priority against third party art. If the patent applicant is trying to capture someone else’s invention, then the lack of retroactive priority to original filing will defeat that attempt. As for wearing down the examiner, it is not a major point of my piece. I do believe it happens. That is not to deny that the opposite may also happen, that is, erroneous rejections that lead to abandonment due to cost concerns.

    query — yes I am proposing that the limits apply to reexam and reissue as well. As for limiting newly cited prior art, I don’t see that from a substantive perspective. If the examiner missed invalidating art the first time, why is the proper remedy to permit an invalid patent that will be costly to society to issue? Seems like a “because the Constable erred, the criminal must go free” result. I can see the cost objection, and I might be sympathetic to waiving PTO fees for filing a response to newly cited prior art, but I don’t see the case for a substantive limit.

  52. Further to the above comments, and not that I disagree with all academic patent law suggestions, even if politically impossible, but see the recent article by the well known IP expert Roger Milgrim “..The Academy Talking to Itself: Should Anyone Listen?” 90 JPTOS 295, and a supporting “Letter to the Editor” in the latest JPTOS (90 JPTOS 467).

  53. I am going to this conference and plan on proposing law schools stop incompetents that have no business teaching anyone about anything, aside from self promotion.

  54. How about “wears down the Inventor” with attorney fees and RCE/continuation fees?

    good point, anon e. mouse

  55. Prof. Chiang seems to have two justifications, one valid the other not so much.

    (1) “ex post” claiming allows the patentee to claim what he didn’t invent. I don’t think that’s a valid criticism for several reasons. This issue is just as present during prosecution of the original application as it is during a continuation. Therefore, outlawing “ex post” claiming is the wrong tool for this job–and a band-aid masking covering up the real problem at best. The right tool (could be written description or not) universally applies to claims.

    (2) “ex post” claiming shifts the burden of drafting mistakes from the patentee to the potential infringer. A good point.

    I don’t have time to pick apart his arguements but a quick perusal of his paper doesn’t persuade me at all.

    E.g., he trots out the tired “wearing down the examiner” arguments on the very day that I recieve yet another rejection of claims that were amended as suggested by the Examiner (in writing!) to be allowable.

    How about “wears down the Inventor” with attorney fees and RCE/continuation fees?

  56. I’m a newbie and haven’t thought through all the implications on this issue. But I would like to hear why there should not be at least a strong presumption against post-issue claim-broadening. At least superficially, Professor Chiang’s argument seems to make sense. Would like to see arguments pro and con, maybe without personal attacks.

  57. > the prosecuting attorney “erred by drafting the claims too narrowly”<

    Isn’t this why we carry malpractice insurance?

  58. The very concept of post-issue claim-broadening has always been baffling to the likes of me in the Olde Worlde, especially when the range of “errors” which can support it is so liberal. It’s bad enough that a party with no wish to infringe a US patent has to jump through so many (expensive) hoops to avoid the possibility of willful infringement, but also having to wait two years after a patent is granted in case the claims are broadened because the prosecuting attorney “erred by drafting the claims too narrowly” is, frankly, bizarre.

  59. “Tun-Jen Chiang is another law school professor-author who has no patent prosecution experience and is not registered to practice.”

    Not that I’m disagreeing with the above statement, but Chiang is making a mountain out of a mole hill, doesn’t understanding claiming, doesn’t understand continuations, and doesn’t appear to understand what is permissible/not permissible in amending claims after a patent has issued. List the could go on and on, but why beat a dead horse?

    His article is what you would expect from somebody who looks at the process in the abstract and doesn’t really understand why certain things are permitted.

    I used to be offended when people talked about “intellectuals in their ivory towers” not understanding reality. However, the more articles I read from law school professors about patent law, the more I agree with these criticisms.

  60. Good question from Chiang. Did the neighbour commission an FTO survey, of WO and A publications, before building his house on a plot that stands under threat from the neighbour’s IPR? In real property, such FTO surveys are worthwhile. Are they also, in patent law? Well, they are in Europe, where that Article 123(2)EPC “new subject matter” provision, always so heavily criticised in the USA, is the solution to his posed problem; and it’s been solving the problem since the EPC as introduced in 1978.

  61. Tun-Jen Chiang is another law school professor-author who has no patent prosecution experience and is not registered to practice.

  62. the following is missing from my post above — Chiang proposes a rule to eliminate any claim amendments made after a patent has issued (i.e., no continuation amendments).

  63. >

    Would the quid pro quo be that no additional prior art can be cited in the continuations?

    Is Chiang also proposing that we get rid of all reissues/reexams which amend any claims?

    (I confess that I have not read his paper.)

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