January 2009

BPAI Again Rejects System Claims under Bilski

Ex parte Atkins (BPAI 2009)

The BPAI has again raised the issue of Post-Bilski patentable subject matter sua sponte. Like most claims challenged under Section101, Atkins claims also have serious nonobvousness and indefiniteness problems.

Atkins claims a method of “converting a unidirectional domain name to a bidirectional domain name.” In reviewing the claim under Bilski, the BPAI noted that the claims do not “recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web. All of the steps are data manipulation steps.”

Atkins also claims a parallel “system” for converting the domain name. The BPAI rejected the system claims under Bilski since “those claims encompass any and all structures for performing the recited functions. As a result, [the system claims] are at least as broad as method claims … which we have determined recite patent ineligible subject matter under Bilski.”

Sarnoff: The Patent Act’s Mention of Business Method Patents Does Not Mean that Section 101 Should Extend to Cover Business Methods

Section 273 of the Patent Act mentions the possibility of a patent covering “a method of doing or conducting business.” Part of Bilski’s petition for certiorari relies on that section as an argument that Congress intended for Section 101 to cover business methods. That argument is a red herring — The Federal Circuit's Bilski decision did not eliminate business method patents. Rather, the decision only requires that any claimed process meet the machine-or-transformation test.

In his Federal Circuit amicus brief, professor Joshua Sarnoff wholly rejected the implication that Section 273 proves that Congress intended the Patent Act to extend coverage to novel business methods. He argues as follows:

Sarnoff: … [T]he State Street Bank decision did not motivate the enactment of Section 273’s prior user rights provision. Rather, it motivated restriction of that provision to business methods from an earlier and broader proposal.[2] Congress did not approve of this Court’s decision, but focused on business methods because it felt that the strongest fairness arguments for a prior user defense existed in regard to the newly patentable subject matter.[3] As stated by Senator Schumer, Section 273 “should be viewed as just the first step in defining the appropriate limits and boundaries of the State Street decision…. I believe that it is time for Congress to take a closer look at the potentially broad and, perhaps, adverse consequences of the State Street decision.”[4]

Ratification should not be found here, given that Congress did not amend Section 101 or otherwise specifically address patent eligibility.[5] Instead, Congress created only an isolated change to the law that responded to specific concerns raised by this Court’s changed interpretation of Section 101. See, e.g., Alexander v. Sandoval, 532 U.S. 275, 292 (2001) (“when, as here, Congress has not comprehensively revised a statutory scheme but has made only isolated amendments, we have spoken more bluntly: ‘It is “impossible to assert with any degree of assurance that congressional failure to act represents” affirmative congressional approval of the Court's statutory interpretation.’”) (citations omitted). Similarly, ratification should not be found here, given that the State Street Bank holding was a significant change to the law and conflicted with binding Supreme Court precedent. See, e.g., Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 185 (1994) (ratification is implied when Congress “reenact[s] statutory language that has been given a consistent judicial construction”).[6] Had Congress thought that adopting a new defense to liability might affect subsequent interpretation of Section 101, it could have expressed its intent either to alter or to preserve earlier law – as it did with regard to Sections 102 and 103. See 35 U.S.C. § 273(b)(9) (2000).[7]

Moreover, ratification of the “useful, concrete, and tangible result” test as applied in State Street Bank would pose serious constitutional concerns by authorizing patents for claims reflecting only insignificant post-solution activity. The test would thereby encroach on permissible public uses of categorically excluded public domain information, potentially extending protection beyond any inventive concept properly attributable to the applicant and retarding rather than promoting sequential innovation. It would require patents for non-technological inventive concepts, extending protection to activities that may not be within the useful arts (however broadly or narrowly that category is construed).

Given the reasonable alternative interpretation discussed above, this Court should not construe Section 273 to have ratified the “useful, concrete, and tangible result” test as applied in State Street Bank. See, e.g., Gomez v. United States, 490 U.S. 858, 864 (1989) (describing “settled policy to avoid an interpretation of a federal statute that engenders constitutional issues if a reasonable alternative interpretation poses no constitutional question”); Ashwander v. Tennessee Valley Auth., 297 U.S. 288, 346-48 (Brandeis, J., concurring) (establishing the policy). Finding such ratification would force the Court to decide whether Section 101 (at least since 1999) is constitutional. Cf. Richardson v. United States, 526 U.S. 813, 820 (1999) (“We have no reason to believe that Congress intended to come close to, or to test, those constitutional limits when it wrote this statute”). Without ratification, the binding Diehr-Flook precedent remains the law and avoids any such constitutional concerns.

[1] See, e.g., H.R. Rep. 106-464, 121 (1999) (Conf. Rep.) (“business methods and processes, many of which until recently were thought not to be patentable”); id. at 122 (the “1998 opinion … in State Street Bank … which held that methods of doing business are patentable, has added urgency to the issue.… [T]housands of methods and processes used internally are now being patented.”). See also H.R. Rep. 106-287, 45-46 (1999) (“many businesses … thought secrecy was the only protection available,” and such methods “previously had been thought to be unpatentable”); Cong. Rec. E1789 (Aug. 5, 1999) (speech of Rep. Coble) (same); Cong. Rec. S13259 (Oct. 27, 1999) (statement of Sen. Hatch) (same).

[2] See, e.g., Cong. Rec. H6944 (Aug. 3, 1999) (statement of Rep. Rohrbacher). Cf. H.R. Rep. 106-464, 121 (noting importance of the “earlier-invention defense” to “any business that relies on innovative business processes and methods”).

[3] See, e.g., Cong. Rec. S14836 (Nov. 18, 1999) (statement of Sen. Schumer) (the “decision has raised questions about what types of business methods may now be eligible for patent protection…. It has created doubt regarding whether or not particular business methods … might now suddenly become subject to new claims under the patent law.”); Cong. Rec. H6947 (Aug. 3, 1999) (statement of Rep. Manzullo) (Congress “felt that those who kept their business practices secret had an equitable cause not to be stopped by someone who subsequently reinvented the method”). Congress limited the defense to business methods because it believed that the law had been changed only in regard to such methods. See id.

[4] Cong. Rec. S14836 (Nov. 18, 1999) (statement of Sen. Schumer)

[5] Congress expressly acknowledged that State Street Bank altered the law in regard both to “the business method exception” and to “the essential question of whether the invention produced a ‘useful, concrete, and tangible result.’” H.R. Rep. 106-464, 122.   However, Congress did not approve of that result. Rather, it noted only that the new defense applied to systems as well as to processes. See id. at 123.

[6] Cf. Food and Drug Admin. v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 157 (2000) (finding effective ratification from enactment of a specific set of separate regulatory provisions, at a time when the agency’s interpretation had historic “consistency”); Brown v. Gardner, 513 U.S. 115, 121 (1994) (“‘[w]here the law is plain, subsequent reenactment does not constitute an adoption of a previous administrative construction.’”) (citation omitted); Fogerty v. Fantasy, 510 U.S. 517, 532 (1994) (rejecting effective ratification and noting that “this is hardly the sort of uniform construction that Congress might have endorsed.”).

[7] See also H.R. Rep. 106-464, 124-25; H.R. Rep. 106-287, 49.

Aventis Files for Certiorari: Challenging Federal Circuit’s Low Standard for Intent to Deceive in Inequitable Conduct Proceedings

Aventis Pharma v. Amphastar Pharmaceuticals and Teva (on petition for a writ of certiorari)

In a split 2008 decision, the Federal Circuit affirmed a lower court decision holding two Aventis patents unenforceable due to inequitable conduct. The patents cover a low molecular weight form of the blood thinner heparin and is marketed under the Lovenox brand. The alleged offense involved an Aventis failure to report that its tests showing improved drug half-life used a different dosage than the tests on prior-art compound. Inequitable conduct requires proof of both materiality and intent to deceive. Here, the intent was shown only through circumstantial evidence.

In a strongly worded dissent, Judge Rader argued that inequitable conduct law should be restricted to "only the most extreme cases of fraud and deception." Rader also discusses how past inequitable conduct should be correctable.

Now, Aventis has hired Supreme Court powerhouse (and champion of the Federalist Society) Ted Olson and has asked the Supreme Court for its view. Aventis posits as an extension of Judge Rader's dissent - arguing that inequitable conduct should not be a viable cause of action when the mens rea evidence only rises to gross negligence. The question presented:

Under the judge-made doctrine of “inequitable conduct,” a federal court may decline to enforce an otherwise valid patent that was procured through fraud or deceit. Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945). As befits the punitive nature of the doctrine, this Court has invoked it only in extreme circumstances involving “deliberate,” “corrupt,” “sordid” and “highly reprehensible” misconduct. Some panels of the Federal Circuit have similarly limited the inequitable conduct doctrine to deliberately planned and carefully executed schemes to defraud, but other Federal Circuit panels—including the majority in this case— have adopted a “sliding scale” under which “less intent” is required as the materiality of an omission or misrepresentation increases. The question presented is:

Whether a court may refuse to enforce an otherwise valid patent on the basis of an inequitable conduct determination premised on a sliding scale between intent and materiality, effectively permitting a finding of fraudulent intent to be predicated on gross negligence.

Aventis has written a strong petition, amici briefs in support of the Aventis position would be due by February 25.


The Exodus: Following TS Tech, Patent Lawsuit Transferred from E.D. Texas to Oregon

A few days ago I was discussing TS Tech with a patent law guru. I suggested that TS Tech would not have a major impact on the location of patent cases – largely because local judges still retain a large amount of discretion in determining whether another venue is more convenient. . . . What do I know.

Odom v. Microsoft (E.D. Tex, Jan 30 2009)

Famed patent blogger Gary Odom sued Microsoft in the Eastern District of Texas – alleging that the Office 07 toolbar infringes Odom's software patent. Judge Love was assigned the case — but now he has granted Microsoft's motion to transfer the case to Oregon. You see, Odom is located in Oregon, Microsoft in Washington, the Klarquist firm (who once worked with both Odom and Microsoft) is in Oregon.

Judge Love relied on the Federal Circuit's TS Tech (J. Rader) opinion and the 5th Circuit's VW opinion (en banc) in determining that the suit should continue in the Northwest rather than Texas.

Under the circumstances presented here, the convenience of witnesses and localized interests weigh in favor of transfer with the other factors neutral or weighing slightly in favor of transfer. This is a case that is significantly localized in the Northwest. Both parties are residents of the Northwest, and Microsoft’s equitable defenses all arise out of conduct and contracts in the Northwest. No Texas resident is a party to this litigation, nor is any Texas state law cause of action asserted. All identified witnesses—with the possible exception of one—are located in the Northwest. This is not a case where witnesses are expected to be traveling from all over the country or world. In summary, there is little convenience to the parties for this case to remain in Texas, while there are several reasons why it would be more convenient for the parties to litigate this case in Oregon.

Case transferred.


  • Order to transfer order to transfer from texas
  • E.D. Texas Blogger Michael Smith has more details
  • It remains to be seen if Judges Ward and Davis follow suit.
  • In the opinion, Judge Love did distinguish some portions of TS Tech. Importantly, much of the likely evidence is in electronic form. The court found that the physical location of the servers holding that electronic evidence did not impact the inconvenient forum analysis.

Deferred Examination: PTO to Hold Roundtable Discussion

It is clear that acting USPTO director John Doll has ideas for improving the patent system and that he is prepared to move the ball forward while he has the floor. Next on the order of business -- deferred examination. On February 12, 2009, the USPTO will hold a preliminary discussion on the potential for expanding the deferred examination system. Requests to participate should be sent to Robert Bahr (robert.bahr@uspto.gov). You may send comments to AC6comments@uspto.gov. Although attendance is open to the public, you must be pre-approved to 'participate.'

The PTO currently has an "optional deferred examination procedure" that allows deferral of examination for up to three years from the priority date after a petition and payment of a fee. According to the PTO, this procedure has been used "fewer than two hundred" times since it was created in 2000. 37 C.F.R. 1.103(d). In other countries, deferred examination is much more popular. In those countries, the applicant can delay payment of some examination fees during the deferral period. However, seems unlikely that the delay in paying fees (saving a couple hundred dollars) would explain the difference in popularity of the systems. An alternative explanation may be inertia. In Japan, for instance, the applicant must take some action to end the deferral period; while in the US, the applicant must take some action to start the deferral period. These different energy barriers might explain some of the difference in the use of deferral. The best explanation might stem from the backlog of US patent applications which prevents most cases from being examined in the first three years. Under the current system, a deferral in the US does nothing to slow the examination process if the examination backlog is already more than three years.

Deferred prosecution does have some possible negative issues. These negatives include the potential for submarining and shifting claim scope to encompass market changes. These problems could largely be limited through early publication of deferred applications as well as continued enforcement of the written description and enablement requirements. In addition, the patent term should continue to run during the deferral period.

There are two main benefits of deferred examination: (1) delaying spending fees could have a great cost savings if the delay allows companies to figure out that a significant number of applications are no longer worth pursuing; (2) non-deferred cases should move more quickly through the system.

In a 2008 letter to Congress, then PTO director Jon Dudas suggested three possible additions to the US system: (1) a 14-month extendible period for responding to a notice of missing parts; (2) a tiered payment structure that allows the "examination fee" to be paid later; and (3) allow applicants to claim priority to a provisional application for up to five years.


Bilski Petitions the Supreme Court to Decide Issues of Patentable Subject Matter

Bilski v. Doll (on petition for certiorari)

In Bilski, the Court of Appeals for the Federal Circuit applied the “machine-or-transformation test” as the only test to be used in determining whether a claimed process is eligible for patenting under § 101. The decision holds that a claimed process either (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing.

Bilski’s claimed method of hedging the risk of bad weather through commodities trading had been rejected by the USPTO as lacking patentable subject matter. On appeal, the Federal Circuit affirmed – finding that the method failed the machine-or-transformation test.

Now, Bilski has petitioned the Supreme Court for a writ of certiorari — asking the high court to determine whether the new test of patentable subject matter is the correct test.

The petition asks two questions:

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Under Supreme Court rules, any amici brief in support of the petitioner (Bilski) would be due within thirty days (Feb 27). Those in support of the respondent (PTO) would be due the dame day, but the PTO will likely seek an extension.


The BPAI and the Machine or Transformation test of Bilski

In three recent cases, the BPAI has continued its trend of applying the Federal Circuit’s en banc Bilski decision to reject software-style method claims as lacking patentable subject matter. The BPAI is not asserting that software is unpatentable — the Board is simply failing to find ties to a particular machine; transformation of a physical object; or transformation of articles “representative of physical objects.” In two of the cases, the BPAI applied its power to issue new grounds of rejection — raising the Section 101 issue sua sponte.

In ex parte Gutta (BPAI 2009), Gutta (Philips) claimed a “computerized method performed by a data processor.” The claims include elements such as “a history;” “a plurality of clusters;” a “target user;” and “preferences of a third party.” The final step in the method involved “displaying” a score. In Bilski, the Federal Circuit found that the transformation of data into a visual depiction could render a claimed method patentable. Here, however, the generically worded step was merely “post-solution activity [insufficient] to impart patentability to a claim involving the solving of a mathematical algorithm.”

In ex parte Barnes (BPAI 2009), Barnes (Landmark Graphics) claimed a “fault identification method” that obtains seismic data and determines “a planarity value for discontinuities” in each “analysis window” in the seismic data. In this case, the BPAI entered a new ground of rejection under Section 101. The BPAI recognized that the claim called for both gathering and analyzing data, but those steps – without explicit limitations of how they are done – are insufficient to render the claim patentable.

In ex parte Becker (BPAI 2009), Becker and his fourteen co-inventors (Siemens) claimed a “method for maintaining a user profile.” As in Barnes, the BPAI entered a new ground of rejection under Section 101 — finding again that the method claims failed to satisfy the machine or transformation test.

Read the Opinions

Note: This was originally posted on Jan 26, but was inadvertently un-published. I this version is slightly modified to take-into account an insightful comment regarding the transformation of data into a visual depiction.

Bilski at the Supreme Court

Bernard Bilski’s petition for certiorari is due within days (unless an extension is granted). I think that there is a real question of whether (and how) the patent community should react to presentation of the case. Should the patent community support this case for Supreme Court review, wait for a better situated case, or sit content with the machine-or-transformation test outlined by the Federal Circuit in the en banc Bilski decision? Each position has its merits.

The case is well developed, parties and amici have already invested time standing behind the case. Yet, the underlying invention is not compelling (a method of hedging the risk of bad weather by using commodities trading) and issues of obviousness would almost certainly cloud the issues. There are many other potential cases in the pipeline, and the Supreme Court may properly wait to see how the new Bilski rule develops before weighing-in.

Peer-to-Patent Project Begins Post-Issue Review

The Electronic Frontier Foundation (EFF) and Public Patent Foundation (PubPat) started the ball rolling with public interest challenges to patents via reexamination. Now the Center for Patent Innovations at NYLS have set their sights on post grant reviews. By leveraging their peer-to-patent system, the group hopes to help discover prior art that will invalidate issued claims. "Our citizen-experts have already found a number of items of prior art relevant to patents being asserted againt Microsoft, Google, and Facebook." (Post-Issue) The project is looking for law students to help. Not relying on altruism — Article One Partners has offered $50,000 for helping invalidate several Rambus patents. "If one or more references show a patent to be invalid, the first respondent who found the research earns the reward." (Article One) If you do find the Rambus prior art, please post a note here first so that we can all sell short.

* Note — I am an Advisory Board Member of the Center for Patent Innovations (although I did not know about this recent development until it had already been released).

Prometheus v. Mayo:

In Prometheus Labs. v. Mayo, the patentee's claim focuses on a method of "optimizing therapeutic efficacy" by first administering a particular drug to a subject and then using the subject's metabolite level to adjust future drug doses. The district court found the claims invalid as lacking patentable subject matter under 35 U.S.C. 101. On appeal Prometheus has asked the Federal Circuit to restore its patent rights. (U.S. Patent No. 6,680,302).

In an amicus brief, the AIPLA has also asked the appellate court to uphold the patent rights. The bar association argues that (1) the requite Bilski transformation can be found in the subject's transformation of the drug into metabolites in the body and (2) that no weight should be given to the dissent from denial of certiorari in LabCorp. Other briefs are expected, including several arguing that the method should not be considered patentable.


Upcoming Events & New Blogs

Upcoming Events

  • January 30, 2009: Santa Clara Computer & High Tech Law Journal will host its conference on Shifting Strategies in Patent Law. Judge Rader will present the keynote address. I will be part of a panel on inequitable conduct and will specifically talk about the PTO's role in determining inequitable conduct issues. [LINK].
  • February 6, 2009: Texas IP Law Journal is hosting its 10th annual symposium at the University of Texas. The title of my talk is Evidence Based Prosecution: Empirical Results from the Prosecution Files of One Million Recently Issued Patents. [LINK]
  • February 6, 2009: Duke IP Law Symposium. Carl Horton (Chief IP Counsel for GE) will deliver the keynote at this great annual event. [LINK].
  • March 17-19, 2009: The IP Law Summit in Ponte Vedra, Florida at the Sawgrass Marriot will be a nice spot. [LINK].

New Blogs:

  • My law school classmate Jeremy Grushcow (along with Dani Peters) has begun the Cross Border Biotech blog that focuses on biotech law issues as they relate to US & Canadian biotech issues. http://crossborderbiotech.ca.
  • Clifford Hyra is now writing Patents 101: http://patents101.com.

Sasha and Malia Dolls: Legal Remedies for the Obamas

by Mark Goldsteinpic-2.jpg

We’ve seen that Ty is selling Sasha and Malia dolls. Can the Obamas do anything to stop this? They have a couple of options.

The Obamas could sue Ty for under the federal law of false endorsement as well as for infringing their common law and statutory rights of publicity based on state law. However, there is no federal law that protects the right of publicity. A First Amendment defense of artistic expression can likely be brought in response to a state claim of right of publicity.

A federal false endorsement claim may be based on the unauthorized use of a celebrity’s identity when the use of the identity is likely to confuse consumers to believe that the celebrity sponsored or approved the product of another.   Sasha and Malia may be able to bring a claims for false endorsement against Ty as their name and likeness is being used to sell the dolls.

The right of publicity protects the commercial value of an individual in the commercial use of that person’s identity. Many states protect the right of publicity with regard to name, voice, signature, photograph, and likeness. Some states provide more expansive protection that protects the image, distinctive appearance, gestures and mannerisms of a person.

For example, in California, statutory protection is limited to appropriation of the actual photograph or likeness. For a likeness to be appropriated under California statutory right of publicity, the doll would need to clearly show features of a celebrity. Although the dolls do not have the precise features of the Obama girls on which they are based, the girls have a case because elements evocative of the girls are included in the dolls.

In response, Ty could assert a First Amendment defense. The California Supreme Court stated that there is “a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” To prevail with a First Amendment defense, Ty must successfully show that “the value of the work does not derive primarily from the celebrity’s fame.” This seems to be near impossible here.

So, Malia and Sasha could take action in federal or state court to have the sale of the dolls stopped.   This leaves us with two questions – First, what was Ty thinking when they did this? Don’t they have lawyers on retainer? Second, will the Obamas take action against Ty? Or will Ty stop on their own? We’ll have to wait and see.

Patently-O Bits and Bytes No. 90

  • Patent Reform I: In a recent article, DC insider Hal Wegner noted that there is “reason for optimism that patents will not be put on the back burner by the new President.” Wegner pointed to the President’s pro-reform start and to the President’s Technology Agendy that calls for: (1) ensuring that American IP is protected abroad and (2) reforming the patent and copyright systems “while ensuring that intellectual property owners are fairly treated.” The agenda speaks specifically to patent reform: “Reform the Patent System: Ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration. Give the Patent and Trademark Office (PTO) the resources to improve patent quality and open up the patent process to citizen review to help foster an environment that encourages innovation. Reduce uncertainty and wasteful litigation that is currently a significant drag on innovation.” [Read the Technology Agenda]
  • Patent Reform II: Although Wegner noted “optimism,” many patent industry insiders may be pessimistic that there is a high likelihood of patent reform. In particular, the technology agenda statements, coupled with Professors Sprigman and Rai as advisors, further coupled with the rumored appointment of John Thompson as Secretary of Commerce point toward legislative patent reforms being along the same lines as eBay (weakening injunctions), KSR (making it easier to find patents obvious); VW (weakening plaintiff’s choice of forum); Bilski (limiting patentable subject matter); and Seagate (limiting damage awards).
  • Patent Reform III: On the other hand, Professors Rai and Sunstein are both major administrative reformers. There is hope that their style of internal PTO reforms – made through rule changes and standard operating procedures – could dramatically change the PTO for the better.
  • Role of the Secretary of Commerce: 35 USC 1(a) establishes the Patent Office (PTO) within the Department of Commerce. However, the statute is clear that the PTO has some power independent of the larger department: “The [PTO] is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the [PTO] shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law.”

Six Easy Suggestions for Improving Patent Office Transparency

For a government agency, the USPTO (PTO) is fairly transparent to non-parties hoping to learn about the patent system and about specific patent cases. The PTO website receives millions of visits to access patents, published patent applications documents, and prosecution history files. In promoting the new rule changes, the PTO also offered up a number of metrics to prove its case. While that information was useful, its reliability was generally impossible to independently verify because the underlying data was not publicly available. The truth is that the PTO still has a long way to go before we can consider it a transparent operation.

Why this is important: Part of the need for more information involves public accountability so that we can ensure that the PTO is efficiently and accurately carrying out its role in the patent system. Independent verification is especially important now when various factions (including the PTO's own lobbying arms) are calling for various reforms of patent laws and the rules of patent procedure. However, the call for transparency at the PTO is at least equally focused on the business need of understanding how the patent system works and how competitors are using the patent system.

I have created a short list of "easy" suggestions for improving transparency at the Patent Office. I call it an easy list, because these steps really just involve taking information that is already at the fingertips of PTO insiders and making the information accessible to those on the outside. Following these steps may be a quick and easy way for career office officials to quickly win favor with the new Obama administration.

  1. Make petitions decisions available. Challenges to certain decisions by patent examiners and PTO officers go through a petition process to the Commissioner of Patents rather than through the Board of Patent Appeals and Interferences (BPAI). These cases include disputes involving revival, patent term extension, patent term adjustment, patent term restoration, reexamination petitions, petitions involving filing dates, petitions involving disclaimer of scope, refund petitions. Since January 1, 2005, the PTO has not posted any petitions decisions to its website. Thus - unless a party knows the specific case number and obtains it through the Image File Wrapper in the Patent Application Information Retrieval (PAIR) system - the petitions are inaccessible. Conventional wisdom is that petitions practice can be something of a black hole -- unless the PTO decides to act quickly. This is only conventional wisdom, because the actual practice of the office is hidden. It would be an easy change to start publishing all petitions decisions as they are released in once convenient location on the PTO website.
  2. Make public PAIR information available for automated download -- either through the PTO website or through a third party willing to make the information publicly available. The PAIR system is amazing in the information that it provides. However, it is clunky and wastes a tremendous amount of time to access each individual case. File history information is important because claim construction decisions now rely on that information in interpreting the claims. In addition, file histories are an important source of prior art - especially in the way that the documents can provide contextual information on how different elements may fit together. Yet, PAIR is not generally searchable and data cannot be obtained in any bulk way. This must change. I will be more than willing to work with PTO to and others to create a system that works. Although I am not wedded to this approach, I would favor a system that embraces the possibility that individuals and companies will take-hold of the data stream and use it in creative ways.
  3. Publish the standard metrics used by PTO executives to measure the process flow and quality. Of course, this should be done in a way that maintains some semblance of privacy for PTO employees, but I doubt that the executive-level charts include specific names of the 6,000 examiners. Of course, I don't know because these items are not publicly available.
  4. Allow search engines to crawl through the PTO web-servers. Matt Buchanan wrote an interesting post on President Obama's new ROBOT.TXT file for the whitehouse.gov website. [LINK] Obama has apparently opened the site to allow it to be crawled by any search engine. The PTO should follow suit so that documents posted to the website can be found through Google, Yahoo, CURL, Alexa, etc. Remember, the touchstone of publication is whether it is accessible to the public. Many documents on the USPTO.gov website are worthless because they are too difficult to find through the locked-down search procedures available on the current website. This is an extremely easy change. It took the White House a few minutes to make the change, the PTO could be done in the same way. Kudos to the PTO -- After I wrote a first post on this issue, two PTO officials contacted me to indicate that they were working on resolving the issue.
  5. Use PDF format to allow download of patents and patent applications in their "Standard" form. This would be a bonus, but it is not required since there are low coast ways to obtain this result through an outside vendor. One problem with using an outside source, however, is the possibility that search information may be stored and used against the searcher at some point.
  6. Openly respond and post all responses to freedom of information act (FOIA) requests on the PTO website. The PTO has created a FOIA website that is hardly searchable. And, most FOIA documents are not placed on the FOIA website. Any response to a FOIA request should be automatically and immediately uploaded to the FOIA website so that it is accessible to the public at large rather than to only the one person who requested the information. As a teacher, I have learned that if one person asks a question, it is likely that other folks had the same question. In most cases, the PTO could upload the documents and save mailing costs by simply providing a link. President Obama has ordered all executive agencies to "adopt a presumption in favor" of FOIA requests, and this change would fall in line with the spirit of that request.

I have eliminated other potential projects and changes that might be considered "hard" for the PTO to complete. These are easy and should be done. This is a draft of ideas -- add yours below. Also, please let me know if there is already a good way to access the information that I discussed above.

President Obama and Cass Sunstein to take Hard Look at Proposed Rules

In one of his first official actions, President Obama (through Rahm Emanuel) has ordered that new federal rulemaking cease until the White house Office of Information and Regulatory Affairs (OIRA) can review the rules.  At this point, it is unclear how this will impact any of the already-finalized rules (Continuations, Claims, Appeals). It will further delay finalization of the expected forthcoming rules on IDS limitations and Markush claim limitations.

As a side-note, the new director of the OIRA is expected to be University of Chicago Law Professor Cass Sunstein.  Sunstein is one of the most well known law professors in the country.  While the OIRA position is normally quite obscure, I suspect that it will not be obscure for long.  Sunstein written extensively on using regulations to shape behavior


Obama’s Beginning

Listening to Obama’s inauguration speech today, I noted two portions that could relate to patent law and innovation policy. In thinking about governmental offices and programs, Obama is looking to (1) consider whether programs work and (2) change (or eliminate programs that don’t work). Along this same line, government programs should be prepared to act transparently:

The question we ask today is not whether our government is too big or too small, but whether it works. . . . Where the answer is yes, we intend to move forward. Where the answer is no, programs will end. And those of us who manage the public’s dollars will be held to account – to spend wisely, reform bad habits, and do our business in the light of day – because only then can we restore the vital trust between a people and their government.

Of course, the patent office remains in need of both a dramatic increase in transparency and focused reform in a few key areas.

As Lincoln did, Obama also recognized the value of the spirit of invention as one of the key and ongoing strengths of the American people:

Our workers are no less productive than when this crisis began. Our minds are no less inventive, our goods and services no less needed than they were last week or last month or last year. Our capacity remains undiminished. But our time of standing pat, of protecting narrow interests and putting off unpleasant decisions – that time has surely passed. Starting today, we must pick ourselves up, dust ourselves off, and begin again the work of remaking America.

Bits and Bytes No. 89

  • Patent Case Management: Professor Peter Menell (Berkeley) has been working with several top patent litigators to develop a “comprehensive patent case management guide” for federal judges. The almost-final draft is available online. The manuscript will very likely become a desk reference for district court judges and their clerks once it is published by the Federal Judicial Center in the next couple of months. In some ways, the 500+ page manuscript is a patent doctrine encyclopedia as well as a judicial form book.
  • [UPDATE] Secretary of Commerce: In a prior post, I wrote about the potential John Thompson, CEO of Symantec may be appointed as the next Secretary of Commerce. As noted in the comments, I failed to mention the fact that Symantec is a leading member of the “Coalition for Patent Fairness.” The Coalition is a lobbying group pushing for reduced patent damages awards, reduced ability to forum shop, and an invigorated system for post-grant challenges to asserted patents. [LINK] Previously, the Coalition also supported eBay and reduced willfulness findings. Each of these changes reduce the potential power individual patents.
  • Query: Assume you have a popular product covered by a pending patent. Is there a way to mark the patent pending good in a way so that an infringer will be considered on notice of the patent as soon as the patent issues (so that you can collect past damages).

Bits and Bytes No. 89

  • Patent Case Management: Professor Peter Menell (Berkeley) has been working with several top patent litigators to develop a “comprehensive patent case management guide” for federal judges. The almost-final draft is available online. The manuscript will very likely become a desk reference for district court judges and their clerks once it is published by the Federal Judicial Center in the next couple of months. In some ways, the 500+ page manuscript is a patent doctrine encyclopedia as well as a judicial form book.
  • [UPDATE] Secretary of Commerce: In a prior post, I wrote about the potential John Thompson, CEO of Symantec may be appointed as the next Secretary of Commerce. As noted in the comments, I failed to mention the fact that Symantec is a leading member of the “Coalition for Patent Fairness.” The Coalition is a lobbying group pushing for reduced patent damages awards, reduced ability to forum shop, and an invigorated system for post-grant challenges to asserted patents. [LINK] Previously, the Coalition also supported eBay and reduced willfulness findings. Each of these changes reduce the potential power individual patents.
  • Query: Assume you have a popular product covered by a pending patent. Is there a way to mark the patent pending good in a way so that an infringer will be considered on notice of the patent as soon as the patent issues (so that you can collect past damages).

Bits and Bytes NO. 88

  • New PTO Director: The USPTO will be closed on Monday and Tuesday (Jan. 19-20). When it reopens, John Doll will be the Acting Director of the USPTO. Doll is a career PTO official and already fully understands the system and the role of the PTO director. Because Doll has had considerable influence while working under Jon Dudas, we can expect that there will be few immediate or dramatic changes. In part because of the absence of a Commerce Secretary, I expect that Doll's tenure will likely last for several months.
  • Secretary of Commerce: While on the topic, I heard this morning that John Thompson, CEO of Symantec may be named appointed as the next Secretary of Commerce. If appointed, Thompson may play an important role in some patentability disputes. Symantec has been directly involved in a number of patent litigation disputes – both as a plaintiff and as a defendant. Symantec is the assignee of hundreds of patents. I cannot say, however, whether Thompson feels scorned or empowered by the current patent system.
  • Chief Judge Michel & Professor Lichtman: Professor Doug Lichtman has introduced his most recent guest on the "IP Colloquium" – Chief Judge Paul Michel of the Court of Appeals for the Federal Circuit. In an hour-long discussion, the pair discuss common deficiencies in appellate advocacy; the important value of amicus briefs at the rehearing stage; Section 101 post-Bilski; and the lost doctrine of equivalents. Professor Lichtman has configured the system so that you can also easily claim free CLE credit in California, Illinois, NY, Texas, or Washington State. Excellent work!
  • ABA Top Legal Blogs: For two years in a row, the ABA Journal has chosen Patently-O as one of the top 100 legal blogs. (Only 50 blogs made the cut both years). In addition, Patently-O has been honored in 2008 as the top legal blog focusing on a niche area of law. Thank you to everyone who voted during this process! In time for Patently-O's fifth anniversary in April, I expect that the website will record its ten-millionth visit in addition to the 16,000+ readers who receive their updates via the daily e-mail feed.
  • Patent agent Brian Galvin has started a new blog, in a recent post, he discusses the BPAI's Cornea-Hasegan Opinion. His analogy is interesting: "[The current state] of statutory eligibility … reminds me of … Ptolemaic astronomy just before Galileo, Kepler and Copernicus. The more wheels we add, the more untenable the whole structure." [LINK]