Dave Kappos as Next PTO Director?

pic-26.jpgAlthough the Obama administration has not directly asked my opinion, I would certainly support David Kappos as the nominee for the next PTO director. Kappos is a longtime IBM patent guru and currently holds the title of VP and Assistant General Counsel in charge of Intellectual Property.

Bottom line here is that it will be helpful to have a patent office director who understands patents and who has been fully involved with all aspects of the patent system for the past twenty years. I believe that Kappos will be a careful shepherd of the system - leaving it better off in six years than it is today.

Kappos believes in the underlying value of innovation. In his words, "the whole system of innovation is more important now than ... ever." Beyond that, he is dedicated to a strong patent system and a strong patent office as mechanisms for fostering innovation. Kappos has been ready to try innovative approaches to "catch the intellectual property system up to the twenty first century." However, he has always been clear that his ideas for innovation "should in no way be confused with denigration or devaluing intellectual property." In addition, his years at IBM have taught him the value of consistency and tradition.

Much of the job of PTO director involves employee relations, and Kappos continues to successfully lead one of the largest private patent departments in the world. His current and former employees are loyal to him as a leader and praise his creativity and genius. The IBM IP office is known for its spirited and open debates on policy and direction. In my view, this corporate management experience and patent prosecution experience are more relevant to running the PTO than - say - running litigation teams at a law firm, managing a congressional committee, or even teaching a group of law students. Before moving forward, I want to note here that former Director Todd Dickinson is also an excellent choice, and he continues to be strongly supported by both examiners and other patent law professionals. Dickinson would almost certainly do the better job of healing the growing rift between examiners and applicants.

In his recent testimony to the Senate, Kappos put IBM's support behind the compromise form of the Patent Reform Act. For IBM, it was important that the damages portion of the bill be revised: "we must nevertheless be mindful of the fundamental importance of ensuring that patentees are appropriately compensated or the patent system will fail to provide the incentive innovators require." However, the IBM proposal was that royalties should be based on the "essential features" of a patent. (Quoting Quanta). This proposal is problematic because it would create new-rule uncertainty and also greatly favor holders of large patent portfolios (such as IBM). As director, Kappos should be careful to balance the "right" solution with the need for consistency and stability of rights. IBM also supported the post-grant review system (which I favor) and the venue changes (which I do not favor).

More than his alignment on specific provisions, we can hope that Kappos will bring an important amount of subject matter expertise - helping to ensure that any legislation does not inadvertently disrupt parts of the system that are already working well.

I do have other reservations. Patent pundit Greg Aharonian has oft complained about Kappos and his tendency to talk about patent quality and then charge forward with junky IBM patent applications. Those complaints have merit. The ill defined term 'patent quality' raises red flags in my mind. Here, Kappos has his benign and potentially helpful pet projects of dramatically improving examiner's access (and ease of access) to prior art; improving prior art and patent documents through more standard lexicons; and public collaboration in patent examination (IBM funded the peer to patent program). In the past, Kappos has talked about patent quality as a problem because it leads to a situation where "nobody has an earthly idea of what [a patent] is worth . . . creating a murky and unclear market." These are really proposals to make the prosecution system work more efficiently rather any fundamental changes to patent rights. IBM is good at systems, and Kappos may be as well.

If it is a benefit, it is also a fault that Kappos' blood is saturated with IBM knowledge and culture. Kappos joined IBM in 1983 right out of college (EE / UC Davis) and stayed with the company after law school (Berkeley). At IBM he spent time with the software legal division and also in the Asia/Pacific division. Unfortunately, in the past 25 years, Kappos may have forgotten that most of the world does not operate like IBM. Thus, when he says that "people no longer innovate individually" or that "many new innovations require investments of unprecedented size," I worry that his vision is skewed. Beyond the PTO, IBM has been able to use its large portfolio and market power to build a large licensing pool with very little litigation. Of course, there are few companies in a position to accomplish that result in today's market. It will be important for him to spend time understanding that - in fact - IBM is the atypical market player. On these point, I believe that Kappos will relax his views somewhat once he is no longer the AGC of IBM.

I am excited that Kappos will push the PTO toward a more open system - allowing access to data and information that has been hidden or limited and ready to cooperate on collaborative projects to streamline the system. Kappos has considerable experience with both European and Asian patent systems, and will likely expand cross-border examination collaboration.

On the software side, Kappos will continue to support the idea that software should be patentable - although he argues that patents should at least cover something "technological" and that business methods should be out. Kappos has also spent a lot of time thinking and working with overlapping intellectual property schemes and considering how those interplay with open source software. However, I have not seen any specific proposals.

In the Patently-O reader poll, Kappos earned only 5% of the vote, falling behind Todd Dickinson (36%), Prof Lemley (8%), and "other" (8%).

Other Sources:

  • Why Kappos is Unfit
  • IP Watchdog on Kappos
  • From Greg Aharonian:
  • "One rumored candidate to be the next Director of the Patent and Trademark Office is David Kappos, one of the head patent lawyers at IBM. Given IBM's many abuses of the patent system and patent policy over the past few decades, I think it is inappropriate, nay, wrong, for anyone from IBM to be head of the PTO. Might as well as make Bernie Madoff head of the SEC as part of his upcoming jail-time work-release program. IBM patent lawyers for too long have abused the patent system."
  • "Case in point. Last week IBM was issued its usual batch of patents, many of which are crap - crappy patents whose sole value is to clog the PTO's patent examination pipelines to the detriment of everyone else. A patent application policy actively embraced by David Kappos. If I was an IBM investor, I would applaud David for doing his best to help IBM. In fact, sometimes I recommend people to buy IBM stock because the company will do anything to maintain its market value. Kudos to David for his efforts in this regard. But the reward for abusing the patent system for the benefit of IBM should be a gold watch at retirement - and should not be the reward of being appointed head of the PTO."

76 thoughts on “Dave Kappos as Next PTO Director?

  1. 6, maybe you are interpreting the alleged 102 reference differently than the Applicant? maybe you are missing or ignoring claim limitations?

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  2. Setting aside the typical jihad from MaxDrei for a moment, I wanted to reinforce what Night Writer Patent Attorney wrote on May 06, 2009 at 9:41 AM.

    NWPA, you nailed it, both in
    problem 1) overblowing (I would call it noise) by the big corporations and
    problem 2) fixing by improving examination.

    You state that people who do not prosecute patent applications apparently do not understand this. This is evident in the posts of academia and their purported puppets as well as the propaganda spewed by those who desire to weaken the great US patent laws. I commend you – well done.

    It has long been my mantra that the Office has given up on fixing examination and resorts instead to rewriting the law as it sees fit to its agenda. It is also a topic ignored by the academia as it does not fit within the sexy “Let’s make Law” policy objectives and belongs to the mundane “Let’s do the job we are supposed to” realm.

    Noteworthy in his blithe ignorance and immediately following NWPA’s post is the response of the 6 protégé Jules Winnfield. As we witness indoctrination at its finest, Jules jumps to chastising NWPA for missing the point, yet it is Jules that misses the point.

    Jules, stop. Think. Go back and actually read NWPA’s post. The “Crappy patent” cool-aid you are drinking is simply propaganda. There is no doubt that there are both crappy applications and crappy patents. The applications being crappy are part and parcel of the open system – no matter what you do, you will always have a certain percentage of applications that fall into this category. HOWEVER, as NWPA points out, these are EASY to deal with, and hardly clog the system. Crappy patents on the other hand have only one single thing to blame – bad examination. The tools of the law are in place. There is no excuse for not using the tools. Stop blaming the applicant for the crap that examination allows. Apply the law.

    Jules further conflates the Crappy Patent issue with the Tons of Claims issue. Evidently, in Jules mind, any patent with “tons of claims” is by that characteristic a crappy patent and an obnoxious abuse of power. Since it doesn’t fit into the lawlol of the examiner, it MUST be corrupt. Get over your resentment of the law and apply the law. 35 USC 112, 2nd paragraph is not a shelter – it is the law. What you like or don’t like has nothing to do with the law or your job of applying the law. Do your job.

    Jules, you also continue to miss the point that the ESD rules are not your friend as an examiner. As I most recently cross posted over at Malcolm’s favorite haunt, The Patent Prospector ( link to patenthawk.com ) in response to some typical drudge from 6:
    “Let’s indulge 6 for a moment, who boldly proclaims “Our gov. is too big, O needs to sort that sht out n start ending gov. programs/depts.” Let’s start with that recalcitrant examiner department over at the patent office who refuse to live up to the government assembly line needs and continue to embarrass the top honchos by letting the backlog grow so large, even in the free-fall reject-reject-reject mode. Let’s trim the staff down to 20%, put in “non-substantive”, applicant-supplied search and analysis requirements (to the existing MPEP standards) and even have the applicants pay for the work. The remaining 20% can connect the dots, the federal government gets smaller, incoming funds increase and the head honchos get to proclaim victory. This solves sooo many of the Office’s problems. That pesky patent bar may make some noise, but will quiet down when they see that getting their clients to do more work means another revenue stream. Hmmm, how can we get big tech to buy in?”

    Better get wise before the spoon-feeding ends. The next hand holding will be the security guard guiding you out of the building.

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  3. Let’s face it, nobody in the USA, except for a small select group of players, cares one whit about patent law.

    It isn’t nearly as ubiquitous as, say, criminal law, UCC-based commercial law, negligence, real property, etc.. It is WAY down the list. In the small state in which I live, there are probably as many attorneys practicing in real estate as there are reg. pat. attorneys in the entire country.

    Even though we have the CAFC, and even though they can and do review QoL’s de novo, they and the USSC have, in my opinion, done a poor job of building up a coherent body of patent precedent. Remember, the CAFC deals with all sorts of other legal matters in addition to patent law.

    Congress doesn’t care either–there has been no word from them for forever, and they’ve left things to the patent office.

    Nobody really cares about patent law. It is more esoteric than brain surgery. I have all sorts of people asking this question about me, all the time: “So what exactly is it that he does?”

    No wonder the jurisprudence is sub-par. Yes, Max, more certainty (predictability) would be nice, if it doesn’t come at the expense of justice in an individual case.

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  4. I used to think that binding precedent was indispensible for any reasonable degree of legal certainty. Then I saw what a mess of legal certainty is made by cases like KSR and Bilski, and simultaneously what a big contribution to legal certainty the evolving and competing caselaw of the 24 equal rank EPO Technical Boards of Appeal have made to obviousness law in Europe over the last 30 years. I’m still wondering what mix of common and civil could deliver the highest legal certainty. But, meanwhile, competition between the patents courts of civil law mainland and common law island Europe, all working the same Patent Statute, is improving rather than harming legal certainty.

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  5. Zimmer–

    Cases are distinguished from others on a factual basis–but it is not the precedent that is distinguished, it is the factual basis for the applicable precedent.

    Distinguishing a case from a previous one means simply that the precedent established by that previous case will not apply in the instant case–however, all this means is that precedent established by OTHER previous cases will apply instead.

    The concept of binding precedent remains intact, and continues to provide a useful guide for the future.

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  6. “…the issuance of NP decisions by the CAFC is a matter of economy–they are quicker to draft and dispose of.” Gonna make that tee time.

    “It is ONLY BECAUSE they issue precedential decisions that they may be afforded the economy of issuing some NP decisions. Same goes for the BPAI.” I suspect it also has something to do with the problem of conflicting panel decisions. Might as well make the NP’s per curiam too. Anyway, “binding precedent” seems to get factually distinguished whenever the panel is interested in a different outcome.

    “I am also interested in why a per curiam decision “sounds civil” to you.” No Code violation below. no need to chew the fat twice. still gonna make that tee time.

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  7. 6: I would like to continue our dialogue, but first I need to understand what you mean by:

    “Lol, wat? I can make the problem up from thin air, I don’t need to find the problem in the prior art. The “constraint” here is dmn near laudable. All it requires is a creative mind.

    How would my mild question play out in your system?”

    First, I can’t find your mild question. What is it?

    Second, you might be able to make the problem up, while you sit at your desk at the USPTO, but an EPO Examiner can’t. If you are asserting he/she can, can you justify that assertion?

    You tell me that my example is “horribly written”. Sorry about that, 6. What example are you referring to? The “headache” example, perhaps?

    What’s good about this discussion is that you’ve taught me that the word “hindsight” isn’t precise enough for my purposes here. I’m thinking now that “ex post facto” analysis might express better that sub-set of hindsight which you helpfully designate as “impermissible hindsight”. At the EPO, many equate PSA with a “could/would” test. Showing (ex post facto) that the PHOSITA “could” have come up with the claimed feature combination isn’t enough. The claim’s obvious only when the Exr can demonstrate (after the event) that the PHOSITA (before the event) “would” have put the features together. It seems from your post that, down at the USPTO, not a trace can be found, of impermissible ex post facto analysis, of what “was” obvious to the PHOSITA back on the relevant date. Bravo.

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  8. ” Of course. BUT, with PSA, you are cabined and constrained, in your formulation of the problem, by what was actually written BEFORE the filing date. ”

    Lol, wat? I can make the problem up from thin air, I don’t need to find the problem in the prior art. The “constraint” here is dmn near laudable. All it requires is a creative mind.

    How would my mild question play out in your system? It would play out with you getting punched around just as badly. That example is horribly written btw max, I can’t even hardly follow it.

    “I’m still contending that PSA is just as harsh on the Inventor as the Examiner. Objections from the PTO that rely on hindsight are disqualified. Assertions of patentability that rely on insights proferred by Applicant, having been gathered only after the filing date, are also unavailable to rely on for progress through to issue.”

    I have never made an objection which relys on hindsight, in fact I pretty much only ever object to spelling and drawings. But, my rejections which are based on hindsight are routinely upheld. Every day in fact. Ones based on impermissible hindsight are of course disallowed, and why would anyone ever make one? Personally I’ve never even seen such a beast in the wild.

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  9. Zimmer–

    Among other reasons, the issuance of NP decisions by the CAFC is a matter of economy–they are quicker to draft and dispose of.

    It is ONLY BECAUSE they issue precedential decisions that they may be afforded the economy of issuing some NP decisions.

    Same goes for the BPAI.

    To issue NO precedential decisions would be abhorrent.

    A post outlining the reasons why “civilian lawyers” find binding precedent irksome need not be cute, only concise, and would be well within the reach of one well-versed in these matters.

    I’m not going to agree to disagree–the two systems are different, so their relative merits and deficiencies should be vigorously discussed and debated, because the adoption of either one is a matter of choice.

    I am also interested in why a per curiam decision “sounds civil” to you.

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  10. Irksome. I was responding to the post of oliver cromwell, not maxthird. in any event, the CAFC is quite fond of issuing non-precedential decisions, and don’t forget the steady flow of per curiam decisions–sounding civil to me. Civilian lawyers find “binding precedent” irksome for reasons that can not be boiled down into a cute little post, so we should live and let live on that one.

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  11. Zimmer–

    Read Max’s comment closely.

    In fairness, according to Max, the EPO’s website is bursting with publicly available information on ‘how’ EPO uses its mechanical civil law provisions to justify its pre-determination of the outcome of a particular case.

    Or at least they are “a bit too prone” to do this, according to Max.

    “…irksome Binding Precedent…”!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

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  12. “I believe that Kappos will be a careful shepherd of the system – leaving it better off in six years than it is today.”

    I disagree. I believe Kappos will more likely represent the iniquities of the selfish and the tyranny of evil men. Never thought I’d say this, but I agree with Aharonian on this one.

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  13. 6: Explain please. Since when was your:

    “The ability to define the problem to be solved in any manner in which I so choose leaves the question open to my hindsight (re?)construction of a problem”

    anything to do with EPO-PSA?

    In EPO-PSA you belatedly fabricate the problem solved. Since examination takes place AFTER the filing date, that much is unavoidable, and intrinsic in any system. Duh. Of course. BUT, with PSA, you are cabined and constrained, in your formulation of the problem, by what was actually written BEFORE the filing date. Instead, you have to find an announcement of it in the app as filed. Example: Suppose claim 1, to molecule X, is supported by a specification that announces that X cures headaches. Then 6 delivers his killer TSM art and Applicant replies with “Oh, it alleviates baldness too, and there’s no hint of that in the art”. EPO 6 mildly asks “Before we discuss any further, show me where you teach that in the app as filed”. How would it play out at the USPTO?

    I’m still not seeing how a strict comparison between two reservoirs of disclosure (the app and D1) both written prior to the legal date, and distillation of the difference between those two prior documents, can be dismissed in such a cavalier way as “tainted by hindsight”. The comparison would be the same, one day before filing the app, as one day afterwards.

    I’m still contending that PSA is just as harsh on the Inventor as the Examiner. Objections from the PTO that rely on hindsight are disqualified. Assertions of patentability that rely on insights proferred by Applicant, having been gathered only after the filing date, are also unavailable to rely on for progress through to issue.

    Next please.

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  14. “So Bizarro, it seems to me that hindsight inevitably creeps into the TSM regime, and you can’t find an effective way to stop that happening, whereas EPO-PSA rigorously excludes it, by definition, inherently, however much the PTO Exr tries to smuggle it in.”

    Two things max, 1. hindsight is permissible in certain situations as you well know under TSM and 2. PSA doesn’t eliminate hindsight, the chap relies on it, rigorously. The ability to define the problem to be solved in any manner in which I so choose leaves the question open to my hindsight (re?)construction of a problem. In fact, it demands it. Even if you can somehow get around it demanding it, I’m still hindsighting in your PSA. You simply accept that level of hindsight, whereas we accept a different form of hindsight.

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  15. In fairness, the EPO’s website is bursting with publicly available information on “how” EPO decisions are reached. Whether its the EPO board of appeal decisions or the case law handbook, it’s certainly no Star Chamber across the pond. Also, our CAFC issues non-binding decisions all the time.

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  16. Max:

    “…irksome Binding Precedent…”

    !!!!!!!!!!!!!!!!!!!!

    “…tribunals in civil law Europe…are a bit too prone first to make up their mind who should win, and then, after that, force the decision to fit. But that doesn’t disprove the rigour which is inherent to PSA.”

    But that tells you nothing absolutely nothing about how the decision was arrived at, and hence gives you no clues as to how future decisions will be arrived at–not to mention that it forecloses any opportunity to investigate the decision-making process itself and hence affords the perfect veil for corruption.

    The Divine Right of Kings prevails in contemporary Europe!

    What an embarrassment.

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  17. Counterpoint: you make my point. Thank you. One person’s (you or me) “well-argued” is another man’s (me or you) wanton self-delusion. What we should do is each of us present to an intelligent neutral, and see what the neutral thinks.

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  18. Have it your way Bizarro: I’m deluded. Hope it makes you happy. But what I’m on about is how EPO-PSA works when it is operated by a tribunal that sticks to the way it is supposed to be operated. I grant you, that tribunals in civil law Europe, unencumbered with irksome Binding Precedent, are a bit too prone first to make up their mind who should win, and then, after that, force the decision to fit. But that doesn’t disprove the rigour which is inherent to PSA.

    I don’t know enough about TSM to criticise it authoritatively. Tell me, how well do you know the landmark PSA cases over the last 30 years (and I’m not looking here for anecdotes from your individual cases at the EPO).

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  19. MaxDrei said:

    “…hindsight inevitably creeps into the TSM regime…whereas EPO-PSA rigorously excludes it…”

    EPO-PSA is about nothing BUT hindsight, for reasons that have been well-argued on earlier posts.

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  20. “whereas EPO-PSA rigorously excludes it”

    You really think so? If so, you are deluded.

    Whether the problem is found first and the missing features found second or the missing features found first and the problem found second, it doesn’t matter when the actual rejection is presented — done right, no one will be able to tell the difference.

    Let me put it to you this way — an Examiner allegedly performing EPO-PSA can do it the way I laid out and still present the facade that the problem was first identified.

    What I’ve told you is how the average Examiner actually performs the examination. What the Examiner should do is entirely different issue altogether.

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  21. So Bizarro, it seems to me that hindsight inevitably creeps into the TSM regime, and you can’t find an effective way to stop that happening, whereas EPO-PSA rigorously excludes it, by definition, inherently, however much the PTO Exr tries to smuggle it in. But then I would say that, wouldn’t I?

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  22. “However, as a patent examiner, I do want the best prior art. If Applicants would submit the best prior art known to the inventors in an IDS when the patent application is filed, then I could either: 1) use the cited prior art in a 102 rejection; or 2) search for and find whatever is missing from the cited prior art, and combine it with the cited prior art in a 103 rejection.”

    The U.S. is the only country in the world where the applicant’s “job” is to hold the examiner’s hand and spoon feed them the prior art.

    In every other country in the world the examiners are considered professional and competent and capable of finding the prior art themselves. In the U.S., the examiners claim to be professional, but whine like little babies that they can’t do what their counterparts all over the world do.

    It’s sad. Truly sad.

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  23. NWPA… I think you are missing the corrupted policies being hinted at by the “crappy patents” statement. If you have more money than everyone else, you can clog the PTO system to the detriment of everyone else by filing huge applications with tons of claims. Period.

    That’s why I was all about the 5/25 and ESD rules. Stop giving corporations so much power. I also don’t like when people try to claim the entire specification by dividing the thing into more claims than necessary without clearly providing out a point of novelty, and then they fall back on the shelter of 35 USC 112, 2nd paragraph, “one or more claims…” to justify their obnoxious behaivor. These corporations should use this extra money in a more righteous way, and actually give the money to their employees instead of playing games.

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  24. >>crappy patents whose sole value is to clog the >>PTO’s patent examination pipelines to the >>detriment of everyone else.

    I think the answer as to why Greg Aharonian needs to pass the registration examination and actually prosecution patents in order to do his job well is that it is very difficult to understand the PTO without having prosecuted patents.

    More patent applications should not clog the system. More patent applications should make it easier to examine patent applications by premitting more specialization. Further, bad patent applications, where I presume he means ones that disclose little or no novelty should be easier to examiner not harder.

    The problems we are having are 1) over blown by the big corporations and their academic dogs and 2) can only be fixed by improving examination.

    People who prosecute know that a bad patent application that is picked up by an experienced examiner who knows the area is easily disposed of by the examiner. Almost no work. Examiner picks up their points easily and the PTO gets a bargain for the application fee.

    People who don’t prosecute patent applications apparently do not understand this. A lot of bad patent applications should be gravvy to the PTO.

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  25. I asked for a substantive difference.

    In the US this is how applications are examined under 103:

    1) Find reference (closest reference or not) and identify features not taught.
    2) Find one or more secondary references that teach the features not taught by the primary reference.
    3) Identify a “problem” that the “features not taught” solve.
    4) Combine primary reference plus secondary reference in order to solve the identified problem.

    It is an incredibly easy technique to employ — there are plenty of problems with it, but you can teach it to somebody in a day.

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  26. How?….in the identification of the “objective technical problem”.

    In any case where the real prior art is closer than that identified by the inventor in the app, then the OTP is different from the problem that the inventor reports in the app as filed.

    Further, the EPO’s hypothetical PHOSITA, on the filing date but deemed to have no knowledge of the invention and no capacity for inventive thought, is nevertheless “deemed” to have a purpose, namely, to be intent on solving the OTP. The inventor interrogates the universe of prior art with that precisely defined mindset.

    So, if the claim recites, for example “A squash ball, characterized in that it is blue”, is it obvious, under TSM, under EPO-PSA? If there’s a difference there, there’s a difference between TSM and PSA. I say there’s a decisive difference. You?

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  27. “So would Bizarro have a problem with the EPO’s PSA approach to patentability.”

    How is that substantively different than the TSM test employed in the US?

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  28. Bizarro wrote:
    “….this is the way of invention:
    (1) identify problem
    (2) solve problem”

    So would Bizarro have a problem with the EPO’s PSA approach to patentability, namely:
    (1) identify the objective technical problem (OTP)
    (2) check that the claimed combination of technical features (CFC) does actually solve that problem, then
    (3) examine whether the state of the art includes any TSM, to resort to the CFC, to solve the OTP.

    My point is that, along with its power to sort out obviousness in a jiffy, EPO-PSA accords with real life behaviour of real life inventors, and thereby accords with the common sense of citizens who are not professional patent practitioners. In times of deep scepticism, whether the patent system performs any useful purpose, that’s a powerful plus point, with which to fight the ignorance of those who would set about the patent system under the banner of “reform”.

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  29. “Most applicants don’t pay $5-$10K when they’ve got a couple references in hand that supposedly disclose the existance of everything in the claims.”

    I know, the only explanation I can come up with is that they must have drafted the claims first, and then wrote the spec, and then wrote the background, and when it came time to write the background did a quick search. But by that time, even when they found a 102, they decided f it, go ahead and file.

    Or maybe it’s a test to see if examiners really do read the spec :)

    “If you think something is too easy, odds are that you’ve missed something.”

    Actually the odds are that it is too easy. I’ve only been wrong about it being too easy like once, but I’ve been right about many many times. The odds are quite good that it is too easy.

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  30. “On the other hand I have applicants like the one I just picked up yesterday where it is very difficult to see what they think their invention is because they just admitted for me the existance of everything in the claims in the background and cited me two refs to show it. It’s enough to boggle the mind.”

    Odds are you’ve just skimmed over the application and claims, like you normally do, and/or ignored a critical limitation. Re-read the application and claims. Most applicants don’t pay $5-$10K when they’ve got a couple references in hand that supposedly disclose the existance of everything in the claims.

    Of course, neglecting to consider that although these references disclose all of the claimed limitations, a combination of these references so as to arrive at the claimed invention might not be obvious.

    If you think something is too easy, odds are that you’ve missed something.

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  31. “However, as a patent examiner, I do want the best prior art. If Applicants would submit the best prior art known to the inventors in an IDS when the patent application is filed, then I could either: 1) use the cited prior art in a 102 rejection; or 2) search for and find whatever is missing from the cited prior art, and combine it with the cited prior art in a 103 rejection.”

    The “best” prior art is entirely subjective. Also, most inventors don’t sit there combing through the “art” looking to find the best art. Although certainly not always the case, this is the way of invention:
    (1) identify problem
    (2) solve problem

    Whether identifying the problem involves knowing what the best prior art is a toss up. What is the “best” prior art, may not be the software that is being improved but an entirely different piece of software altogether.

    Also, the closest prior art could be the applicants’ own software, which the applicant is trying to improve and isn’t available as prior art under 103(c).

    The best discussion of the prior art is usually found in the Background of the Invention, but I have rarely found that section of an application to be perused by the Examiner.

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  32. to malcolm. Cant blame for your skeptisism although on this one you dont know what end is up.It tales several weeks to months of study to become convinced of the theory of the worlds only inventor of significance. However after a diligent study you realize its true and the ods of it being not so quickly exceed D.N.A.to astrinomical to those with a non predguical mind.Start on our website if the want the true story of invention conceptions.

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  33. Until we have genuine patent reform, our system will continue to place all of the marketable patents in the wrong name. You can’t have a system that you call ethical that allows conception back dating and alleged R&D startup without registering intellectual materials with the patent office.

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  34. “My new patent proposals are an attempt to prove the corruption of the past by improving the inventor determination methods of the future. Although, I can do this from the past using invention clusters to loosely tie the inventions together.”

    Pass the pipe, bro’. You’ve had enough.

    Reply
  35. Since when is it the job of the PTO to “protect” individual inventors, small business or big corporations?

    It is the job of the PTO to examine patent applications and to issue patents on patentable inventions.

    One problem is that everyone is trying to game the system in their favor. IT wants to get rid of software and business method patents. Pharma wants ever-increasing exclusivity terms (follow-on biologics and CIP after CIP). Individual inventors want a patent at almost no cost to them with no chance for validity or scope to be challenged once they try to assert it.

    Let the PTO do its job and work through the politicians to set policy. Dudas’ big mistake was when he tried to set patent policy because Congress failed to act as he felt they should.

    Reply
  36. “I.B.M. has a horendious record of any willingness to deal with individual independant inventors.Any significant patents they won are stolen. The only thing they do well is steal patents through legal actions and claim conception in there own group.They employed 40 thousand engineers for forty years without producing a single invention themselves. Continued corruption and refusal to deal will permiate the patent office now.Inovation will falter as his false doctrine of group creation of invention will continue to steal invention from true inventors.I dont trust him with the records either.”

    They say it takes a thief to catch a thief. Accord appointment of Joe Kennedy as head of SEC.

    Reply
  37. One of the best indicators of a lawyer’s acumen is what attorneys who have sat across the table from him or her think.

    I represented a client in negotiations with IBM on some complex IP issues. I (and my client’s) impression was that he was extremely intelligent and also fair. He had other good people working on the project but whenever he got involved, issues were clarified leading to good progress.

    I don’t really have an opinion on the politics of what his policies at IBM have been or what his future policies might be. However, if having a new director who is intellectually brilliant and open to understanding all sides of an issue is a priority, he is an awfully good choice. Its not surprising that a guy like Obama would pick a guy like Kappos.

    Reply
  38. boss 12 I used to think much as you do, but I think we were merely underestimating 1. their ignorance or 2. the attorneys unethically low standard of “material to patentability” and possibly 3. that the applicant and attorney can’t remember where they would have such knowledge from and are loath to just state it in the background.

    On the other hand I have applicants like the one I just picked up yesterday where it is very difficult to see what they think their invention is because they just admitted for me the existance of everything in the claims in the background and cited me two refs to show it. It’s enough to boggle the mind.

    Reply
  39. In response to the Top Patent Firms,
    As it is with many large corporations, Mr. Kappos’ leadership at IBM is with a firm that refuses to deal with small entities. IBM has not dealt fairly with small entities in the past. While this firm has one of the worst reputations, I don’t feel that any major corporation executives should be in these PTO executive positions because it constitutes a conflict of interest in that corporate mentality has been to squeeze the little guy out of the deal by defeating him at the patent office or in court. In the Global Procurement portion of their website, it clearly states that they will not accept submissions of patent and white papers or any ideas for any reason. In the capacity of PTO leadership he could continue this policy by awarding patents to corporate entities instead of independent inventors or small entities who are entitled to the patent as he would be part of the patent awarding decision making process. IBM like many corporations used many of my intellectual materials without authorization.

    Reply
  40. In response to Chief Patent Counsel, You’re right, this one individual will not cause innovation in the U.S. to collapse, however, anti-inventor new patent reform combined with the 30 or 40 existing methods of inventors being denied or defrauded of patent rights will cause the decline of the U.S. innovation lead, however, this company that Kappos has headed has the worst history of legal maneuverings in order to gain control of inventor intellectual material and is yet another company that refuses to deal with inventors, therefore, he shouldn’t be paid from the proceeds of the inventors that have had their legal rights defeated. My new patent proposals are an attempt to prove the corruption of the past by improving the inventor determination methods of the future. Although, I can do this from the past using invention clusters to loosely tie the inventions together.

    Reply
  41. “the whole system of innovation is more important now than … ever.”

    the problem is that big firms like his only recognize their own patents and thumb their noses at others, or at least those of small entities. will he apply the law equitably or merely make the patent system a sport of kings? based on his testimony to congress regarding patent reform i would expect the latter. say good bye to innovation.

    Reply
  42. Dennis, who should we pick? This is tough.

    Reply
  43. Boss12 sounds like an SPE. An good examiner wouldn’t make such silly statements.

    Reply
  44. Boss121, do you think, under the sun, there might be some kind of link between:

    1. the ever more desperate attempts to make Applicants “come clean” with their knowledge of the prior art

    2. The Presumption of Validity, that a claim duly issued by the USPTPO cannot be got rid of, except by evidence that is clear and convincing, but the a decider of fact is one thatlacks the science or engineering background accurately to weigh such evidence of invalidity, and

    3. The ever more strident complaining, about any attempt to introduce to US law some sort of effective post-issue trial of validity?

    In other words, is it any wonder, that Applicants are not very good at “coming clean” with the art. They lack the incentive, no?

    Reply
  45. In the midst of a paragraph of gibberish, Stan E. Delo states that an examination support document (ESD) “seemed to be an effort by the PTO to make the inventor and their attorney do the job that has traditionally been the USPTO examiners job.”

    37 CFR 1.56(a):
    Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.

    37 CFR 1.56(c):
    Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
    (1) Each inventor named in the application.

    (For the record, I am a patent examiner in TC 2100. Thus, I examine patent applications in the computer software art.)

    According to Rule 56, inventors have a duty to disclose all information known to the inventors to be material to patentability.

    The inventors in the applications that I examine are computer programmers. ALL inventions in the computer software art is either a (very) small improvement of known software or a combination of known programming techniques.

    Thus, the inventors (i.e., the computer programmers) KNOW EXACTLY what the best prior art is, and Rule 56 imposes a duty on them to disclose it. Contrary to what Stan E. Delo says, it is an Applicant’s “job” to disclose all information known to the inventors to be material to patentability . . . and this includes both the computer software upon which the inventors are trying to improve and the known computer programming techniques that the inventors are applying in the environment in which their computer software operates.

    Now, as a patent examiner, I don’t need or want an ESD. I’ve examined enough Accelerated Examinations to know that Applicants (and their attorneys) can’t write quality ESDs.

    However, as a patent examiner, I do want the best prior art. If Applicants would submit the best prior art known to the inventors in an IDS when the patent application is filed, then I could either: 1) use the cited prior art in a 102 rejection; or 2) search for and find whatever is missing from the cited prior art, and combine it with the cited prior art in a 103 rejection.

    Then, I could work on one of the new patent applications in the USPTO backlog . . . that is, if Applicants would stop filing RCEs that continue to claim unpatentable “inventions.”

    Reply
  46. Post grant review is ill-conceived and should never be adopted.

    Reply
  47. “Although the Obama administration has not directly asked my opinion,”

    Thankfully.

    Reply
  48. every morning before he gets his national security briefing, the President checks the articles and comments posted in Patentlyo

    Reply
  49. Barack, my man, I know you read this blog all the time, especially the comments. So as you can see, everyone in the IP industry (except Dennis Crouch) is in favor of Todd Dickinson as the next PTO head honcho. Attorneys, inventors, and examiners have only been known to agree on two things in recent memory:
    1. Jon Dudas was a bit of a dingleberry, and we’re glad he’s gone.
    2. Todd Dickinson should be his replacement.
    So make everyone happy, and name the man already. In return, we promise to stop whining about your stimulus plan.

    Reply
  50. Kappos is probably better than a non-practicing entity (like Professor Lemley).

    Reply
  51. Stan E. Delo, my view is the PTO proposed the to make the filing of applications so onerous, expensive and duty-of-disclosure dangerous that fewer applications would be filed and not that the PTO wanted them because it would make the examiners’ jobs easier. (In fact, the volumes of papers submitted might make the examiners’ jobs more difficult).

    Reply
  52. Dennis said “the post-grant review system (which I favor)”

    Dennis, have you posted your reasons for favoring the system??? If so, where? I would like to read them.

    Reply
  53. Perhaps I should have mentioned the Application Quality Submission instead of the ESD? I seem to recall that the AQS was the sterner of the two documents.

    Over and out,
    Stan E. Delo

    Reply
  54. “Some days I feel like I am reading a conspiracy blog instead of an intelligent discussion of educated people.”

    The comments here are quite sane compared to those over at Patent Hawk. That joint is deeeeeeply invested in the continued growth of the patent bubble.

    Reply
  55. PS… Top Patent… I forgot to mention the Examination Support Document that was being proposed, which could very easily have cost me about 5 or 10 Thousand dollars per application. Even then, I was hearing that many Patent Attorneys were recoiling from submitting a document like that, as it would have been very possible for them to get dis-barred if whomever? decided that they were being less than candid or were trying to hide something that they didn’t happen to find and submit. This seemed to be an effort by the PTO to make the inventor and their attorney do the job that has traditionally been the USPTO examiners job. Dudas and Doll being dumb in my opinion, and thank God they didn’t talk Congress into enacting something like that. The ESD would require my attorney to effectively testify Against my case, which seems to me as if it would be in violation of the attorney/client priveledge.

    Stan E. Delo

    Reply
  56. Excellent question Top Patent, which makes me think of the new Continuation Rules that the last administration tried to get promulgated in an effort to make some of the patent applicants go away, apparently, as near as I could decipher. On the contrary, it sounds like Kappos would be Much more efficient in getting things done, and thereby getting the backlog of applications under some semblance of control.

    It sounds as if the House at least is willing to quit diverting the funds of the PTO, which would be a huge help for the next director, and I seem to be hearing that it might even be possible for Congress to Give Back some of the funds that they have diverted away from the PTO in the past several years.

    As I seem to recall, the PTO is one of only 2 Federal agencies that actually generates a profit, so is of course a natural target when the Congress needs a few extra bucks to make things happen for them. The profit comes from inventors of all ilks that pay their maintenance fees, primarily, and I for one would not object to somewhat higher fees, if I was reasonably certain that it might take less than 4 or 5 years to get a patent application allowed.

    Stan E. Delo

    Reply
  57. Hello Chief,

    I am not suggesting that it will be a disaster if Kappos gets appointed, just that he might not be the best choice for the future of the American economy. Information Technology is very important to our economic future, but so are the Pharma folks who are trying to invent new ways to prevent or mitigate major threats to the health of the people of this good planet Earth. Some might have forgotten that small businesses and the inventions that they develop represent nearly half of the economic value of the US economy, so their presence in the future should not be glossed over, in my opinion. If small businesses are hampered by the lack of predictability of the value of US patents, it will very possibly cause them to not be able to source funding for the development of their innovations, and the current credit crunch has them between a rock and a hard place in only the last year or so.

    I happen to be on the Economic Development committee of the National Small Business Association, so I might have a somewhat clearer perspective of what the folks that create 80% of the new jobs here in the US are going through right now. Not fun or pretty when the banks have turned off the credit spigot to try to save their business models, which is causing small businesses all over the US to mortgage their business places or homes just to survive until things hopefully get better soon. If it doesn’t, and very soon, they will have lost their homes or businesses, and the American economy will suffer very significantly thereby, but it will probably take a few years for the effects to trickle down to the rest of the economy.

    Stan E. Delo

    Reply
  58. I’m curious what policies you all think Kappos might pursue that are anti-small entity? I can only guess increased fees (which aren’t exactly pro-large entity either), and have no clue what other actions the USPTO could legally promulgate that are substantially pro-bigTech and anti-smallguy? I don’t see the USPTO being able to reject a novel, nonobvious invention because it isn’t assigned to a multi-national conglomerate.

    Reply
  59. Some days I feel like I am reading a conspiracy blog instead of an intelligent discussion of educated people. If an employee from a large corporation such as IBM becomes Director the PTO will not crumble and innovation in the US will not collapse. Our economy will not suffer a set back in years to come due to this one person. The sky will not fall. Corporations are not IP thieves out to crush the little guy… It is better to remain silent and appear ignorant than to speak and prove it.

    Reply
  60. I.B.M. has a horendious record of any willingness to deal with individual independant inventors.Any significant patents they won are stolen. The only thing they do well is steal patents through legal actions and claim conception in there own group.They employed 40 thousand engineers for forty years without producing a single invention themselves. Continued corruption and refusal to deal will permiate the patent office now.Inovation will falter as his false doctrine of group creation of invention will continue to steal invention from true inventors.I dont trust him with the records either.

    Reply
  61. You know, 6, I think that in a few years you’ll calm down and be a pretty reasonable examiner to deal with. Once you get over the “I’m always right” thing ;)

    Reply
  62. “From Yahoo Finance Top Stories (“Is the recession suffocating American innovation”) today: “Companies and law firms are saying `We cannot afford to pay for an extension,'” said John Doll, the office’s acting director. “They’re given three months in which to respond and then you have the opportunity to buy an additional three months. A lot of the companies that I’ve talked to say `We simply are not authorizing any extensions of time. If the law firm wants to respond later, they will pay for the extension, not the company.'”
    Good grief. The PTO needed a new director yesterday.”

    If all you need is an extension of time call me up and we’ll work something out. I could just as well have put a 6 in the box instead of a 3, that is relatively meaningless to me. The large number of people abandoning on the other hand is rather astonishing. The name of the game is in the merits imo. Although, firms would do well to respond sooner. And I know they can, because if I do something blatantly wrong I’ll get a response within the month. Though the evidence of this is rare, and anectdotal, it none the less is more than enough to satisfy me. I will warn you though, if the substance of your reply is found to be lacking I will have no mercy thereafter.

    “I vote MM as Director of the PTO, and 6 as second in command.”

    As much as I would love to accept the offer, I’m not cut out just yet to lead this organization. Maybe give me 10 years or so. First off, I would have to go buy more clothes that are “proper” as opposed to “hip” which girls have talked me into even wearing to the office these days. Second, I’d have to deal with reporters and the such. Not for me at the moment. It’s a job for someone over 35.

    As to the instant candidate, I’m neither for or against. He seems just as good or bad as the rest of the candidates have been over the years. With the possible exception of not appearing able to do even one one handed push up which is a notable negative in terms of motivational value.

    Reply
  63. “Although the Obama administration has not directly asked my opinion…”

    Hmmm. Dennis, is there a negative pregant lurking in your statement, i.e. a suggestion that the Obama administration has indirectly asked your opinion?

    Reply
  64. Much like EG and Ron Riley, the prospect of Mr. Kappos becoming the new director of the USPTO makes me a bit nervous. While it may be true that he would be a very able manager of the personnel at the PTO, with his emphasis on keeping an open mind and giving examiners what they need to do their jobs well, his corporate outlook on IP could very well be extremely detrimental to the smaller entities that are trying to get their inventions off the ground. Whatever happens, it will be crucial for the new director of the PTO to be an experienced patent practitioner, so that they clearly understand the inventors’ viewpoint, as opposed to what has transpired during the Dudas/Doll administration of the office. Q. Todd Dickenson seems to be the logical choice, but I fear that Obama and the new Secretary of Commerce Gary Locke might have a bias towards selecting a director from the IT sector, much to my regret. In this whiz-bang era of new IT developments, it might be pretty easy to forget how much independents and Universities contribute to the American economy. If independents are disadvantaged, especially, it could very well lead to a second wave of recession, probably about 4 or 5 years from now, when we have hopefully dug our way out of our current economic disaster.

    Stan E. Delo

    Reply
  65. I vote MM as Director of the PTO, and 6 as second in command.

    Reply
  66. per /media/docs/2009/06/09-03-10Kappostestimony.pdf, Kappos would just be more of the same anti small entity droll. large companies would rather have all innovations in the public domain…except theirs. the only firms that would get their patents are the big cos who can afford slush funds.

    Reply
  67. From Yahoo Finance Top Stories (“Is the recession suffocating American innovation”) today: “Companies and law firms are saying `We cannot afford to pay for an extension,'” said John Doll, the office’s acting director. “They’re given three months in which to respond and then you have the opportunity to buy an additional three months. A lot of the companies that I’ve talked to say `We simply are not authorizing any extensions of time. If the law firm wants to respond later, they will pay for the extension, not the company.'”
    Good grief. The PTO needed a new director yesterday.

    Reply
  68. Oops — I forgot to sign my list.

    Reply
  69. Hi Mr. Riley,

    My first choice is you, Ronald J. Riley,

    My second choice in Professor Crouch.

    My last choice is my boss, Jaoi™, but he’ll have cut down on his partying some.

    Reply
  70. “The ill defined term ‘patent quality’ raises red flags in my mind.”

    Look at the often low-quality of district court patent decisions which are often overturned on appeal.

    If we are striving for perfection in patent quality, there is no such thing. I have been in private practice for nearly three decades and I contend that the quality of patents has actually increased over the years, based on the more detailed description of the invention provided in the specifications. My first secretary had an electric typewriter with no memory — I got one draft and one final. The specs were only a few pages. Now (due to great extent by the easy and flexibility of Word Processing) the specs are often dozens of pages,

    At least the patent system is not suffering from problems on the scale of Madoff or Enron problems.

    And I ran across one of my earlier patents, which has long since expired, and note that there is no way that it would survive today’s KSR analysis.

    Reply
  71. The problem with all the people proposed for the office is their big business mindset. It is rare for large companies to produce significant inventions today. Virtually all of them are quanity over quality.

    I would rank Q Todd Dickinson as the first choice but with serious reservations over his failure to acknowledge the concerns of independent and small business inventors.

    Kappos would be my second choice. With far more reservations, in that I think that IBM has played a huge role in screwing up the patent system.

    As far as I am concerned, the remaining candidates should be given positions at the USPTO of emptying wastebaskets and waxing floors.

    Institutions of higher learning do produce some great thinkers but they also produce far too many people who are idiots with a facade of credibility and little substance.

    Ronald J. Riley,

    Speaking only on my own behalf.
    Affiliations:
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.PatentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (810) 597-0194 / (202) 318-1595 – 9 am to 8 pm EST.

    Reply
  72. “However, the IBM proposal was that royalties should be based on the “essential features” of a patent.”

    More than just introducing new-rule uncertainty, forcing such a subjective basis for damages would reintroduce some of the very uncertainty that the 1952 Act sought to remove.

    One of the primary purposes of the 1952 Act was to move away from central claiming (e.g., claiming the heart or gist of the invention) and towards boundary claiming. This was a conscious decision that greatly reduced the uncertainty surrounding patent scope. Reintroducing much of that uncertainty into the damages phase would be unwise and contrary to over a hundred years of patent law history.

    Reply
  73. I’m still in favor of either Q. Todd Dickinson or Mike Kirk. The folks from the IT/computer give me the “heebie-gebbies.”

    Reply
  74. Since the battleground is the drug makers vs. the techies, I doubt that Kappos has a real shot.

    If he were from another field not so close to the patent reform hot buttons, like auto manufacturing, he is just the kind of person I’d want. But his close ties to IBM and outspoken positions on patent reform would hamper his ability to lead in one of the main IP issues of the day.

    Reply

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