- Texas Juries: Michael Smith reviews E.D. Texas patent trial verdicts for 2009 (thus far). Depending upon how you count, the score ranges “from 8-3-1 to 6-6-1 (depend[ing] on whether you count a post-jury selection grant of summary judgment or not).” [Link]
- Judge Michel: A transcript of Chief Judge Paul Michel’s recent speech to the FCBA is now available through that organization’s website. [Link] In addition to announcing his retirement, Judge Michel argued strongly against a statutory right to appeal claim construction decisions. His discussion also touched on the fact that eight of the twelve Federal Circuit judging slots could open within the next 12-months. He suggests that the replacements should include (a) a district court judge and (b) a patent litigator who has extensive experience trying commercial cases in front of juries. Judge Michel suggested room for diversity on the court since all members are white and only 25% are women.
- Appointing Judges: Regarding Federal Circuit appointments. The Obama administration is already focused on ensuring that minorities and women receive their share of appointments. In the words of Judge Michel, it is the Bar’s job to help “assure that the appointees to the Court are selected based on merit, on experience, on quality, on intellect, on intelligence, on energy, and not because they’re, you know, somebody’s cousin or whatever the other considerations might be.”
- Concentration of Ownership: Hal Wegner and Justin Gray review the top 150 patent holders and reports on growing ownership concentration. [Link][See also Patent Prospector]
- Written Description: Amicus Briefs in Ariad v. Lilly: Patent Docs Review the Briefs. [Link]
- Presumption of Validity: Lucent v. Gateway: The Federal Circuit has denied Microsoft’s petition for rehearing. Microsoft is expected to file a petition to the Supreme Court focusing on the interpretation of Section 282’s “presumption of validity.” Microsoft questions whether that statute is properly construed to always require clear and convincing evidence of invalidity.
- Presumption of Validity Redux: In a recent article, Scott Kieff and Henry Smith argue for a reduction in the presumption of validity. [Link]
- Reexaminations: Reexamination Statistics: Of the 734 inter partes reexaminations that have been requested in the past decade, 498 (68%) are “known to be in litigation.” [Link]
Tiger is off the hook!, hip hip whoorah…
MaxDrei, I agree with your position on late claiming previously unrecognized inventions. It is not apparently allowed outside the US because the claims themselves cannot introduce “new matter.” In the US, the claims themselves can claim combinations not even suggested by the specification without introducing new matter. Without a vigorous written description of the invention standard ala Evans v. Eaton and Muncie Gear, American patentees can get away with murder.
But, as I said before, the Ariad case does not strictly involve the issues of late claiming. It involves rather issues of sufficiency of disclosure. So the Fed. Cir. does not need to address the issue, even though all the Supreme Court cases they rely on look at the written description requirement quite a bit differently than they do.
Posted by: Paul F. Morgan | Nov 28, 2009 at 10:13 AM: “Ned, your comment about the Supreme Court Muncie Gear decision, in which you indicate “..what the Supreme Court said concerning the claims to the anti-cavitation plate. There they said the problem with these was that they original specification gave no hint that the anti-cavitation plate was an invention, even in combination.”
That would seem much more relevant to the pending en banc CAFC decision on whether or not there is a written description of the invention [separate from enablement] in 112(1)?”
Agreed. It is why I think Muncie Gear is the most recent case on in a long, long line of Supreme Court cases that viewed the written description requirement not just a matter of disclosure, but of delineating what is new from old, aka, problem/solution. Evans v. Eaton so held in 1822. The dissent in Eaton argued that all the patentee had to do was describe the invention so as to enable one to make an use it. But the majority held otherwise.
That case is heavily relied upon by the all briefers who favor of the written description requirement.
Today’s advocates of a simple enablement position, such as Radar, point out that the statute in 1822 was different as at that time there were no claims. He claims the strict standard was deleted in 1870. However, the “written description of the invention” requirement itself was never deleted from the statute. Further, Radar’s position is directly refuted by Muncie Gear.
With respect to the Kappos blog about KSR. That is all well and fine; however, the problem isn’t with nuances. I have the umpteenth Office action that I had to appeal because the Exminer has never identified a feature of the claim in the prior art. It is that basic. You don’t need to interpret cases and write more memorandum. Just show me where the features of the claims are in the prior art and that will be fine with me.
I can’t tell you what a waste of time and money it is for my clients that I have to go all the way to appeal, again, before someone says hey look we didn’t provide a showing that this feature was in the prior art. This is why I am becoming savvy at Section 1983 law. At some point I am gonna have to try to get some of my client’s money back for these activities.
Dennis,
Could you make the Kappos blog one of your listed friends?
“Look, I don’t care…”
Now that does not sound like somebody looking to learn how the US system works in order to be a better advisor to their US clients. That sounds like somebody pitching an agenda.
And yes, as I alluded to with the law of unintended consequences comment, the treble damages provision has the opposite affect of what is intended (the dissemination of knowledge through the publication of applications). Although it still comes down to a business decision relative to cost/risk as I mentioned at my Nov 27 2:33 PM post (caveats and all).
I see the Kappos blog has an interesting post on KSR.
Look, I don’t care whether you call it 112 or Muncie or “late claiming”. It all comes to the same thing, doesn’t it: why should the owner of an in force patent claim have its validity judged with respect to a date that long predates the date when the inventor first alighted upon the claimed subject matter. That’s moving the goal posts, after the game has started, to the detriment of everybody except the inventor.
I know though. Skewing the rules to help the inventor is the US way. I just think that most inventors, these days, are employees of Big (Asian) Corp, and don’t need any such help, relative to the great US public.
And, Noise, no I haven’t forgotten triple damages. Indeed that’s the very reason why the corporate commissioner of an FTO opinion doesn’t acually want at all to know (about the patents it might be infringing). Right?
Ned, your comment about the Supreme Court Muncie Gear decision, in which you indicate “..what the Supreme Court said concerning the claims to the anti-cavitation plate. There they said the problem with these was that they original specification gave no hint that the anti-cavitation plate was an invention, even in combination.”
That would seem much more relevant to the pending en banc CAFC decision on whether or not there is a written description of the invention [separate from enablement] in 112(1)?
I was puzzled by a question above, about how a troll would prosecute a patent applicaion, because it was my impression that most of the patents sued on by trolls are acquired by trolls as already issued patents. Obviously the most attractive patents to acquire for that purpose are those with claims arguably broad enough to cover actual products of others. It would thus be interesting to see how the extent of prior art citations in such patents compares to other patents?
MaxDrei,
“But actually to find the patents, issued and in force, that conceivably just might prejudice freedom to operate? Now that’s really not helpful at all, is it?”
Both sides of the coin are covered in my answer above.
The answer is of course, “It depends.” Finding patents “issued and in force” is slightly different than finding prior art. Don’t forget that here in the states, knowledge of prior art may bring a treble penalty, even if the business minds don’t think that the found prior art is material at the time and some later judge disagrees. Ah, the law of unintended consequences…
Thanks for the comments on researching patentability. I was also envisaging much additional gainful employment, in the field of FTO, for ultra-sophisticated Nelson One-eyed Searching, Inc. Notwithstanding Seagate, clients still want the record to show that they have diligently searched, and competently opined. But actually to find the patents, issued and in force, that conceivably just might prejudice freedom to operate? Now that’s really not helpful at all, is it?
“But we say, it is permitted to file a reissue for previously unclaimed invention which would have been subject to a restriction requirement had it been claimed in the first place? Huh? Please explain this.”
Ned, where do you find so much straw to build your strawmen?
Ned, we always recommend a search for start ups, sole inventors, and companies merging an existing technology with their existing products.
It makes much more sense to forego a search for a large client with established reasearch labs and seats on standardization committees. These inventors are in the business of generating patents, and they are generally aware of all the closest prior art. Like University professors, they are on the cutting edge. The same goes for Univeristy professors. In these cases, it’s usually their own work that is the closest prior art.
MaxDrei et al., on searching: it really depends on the client. If the client wants a strong, enforceable patent, having all the best art before the examiner is almost mandatory. However, if one never intends to enforce the patent, but simply wants to build a large, intimidating portfolio, less searching is advisable for obvious reasons.
Truly, strong patents are important for drug and chemical companies and for virtually any startup. Advise your clients accordingly.
Question: your client is what the big companies label as a troll. What would you advise this client?
“Blaise Mouttet asked:
What are the resultant differences between
1)eliminating the presumption of validity and
2)replacing the patent examination system with a patent registration system?
With a patent registration system more patents will be litigated but the patents will be “examined” by people who actually know something about patent law.
Posted by: No One in Particular | Nov 27, 2009 at 01:48 AM”
Partly true. But we had this debate in the 1830’s when we went back to an examination system from a registration system. When a patent is actually examined, it gives the patent owner and the public greater certainty about what is patented. This leads to greater respect for patents, and suppresses what apparently was the widespread practice of late comers filing on minor improvements to machines and interfering with the original inventor’s ability to enforce his patent as the public did not know who the real inventor actually was.
Noise, representing one’s client in obtaining a patent is quite different from what we do here — debate patent law. These issues are not new to me at all as I started practicing before In Re Rasmussen when the late claim doctrine was under active discussion. The patent laws in that era were far more strict than they are today in a number of ways. For example, every inventor had to contribute something to every claim. Therefore, as a practical matter, it was difficult to actually file an oath to previously unclaimed subject matter and comply with the law.
Now turning to “enlarge the scope of the claims.” What this plainly means is removing limitations and perhaps even claiming a genus from previously claimed species. Clearly, claims to different inventions should be covered by this clause if they are permitted, but my point was that the clause was phrased in a manner to imply that reissue applications to different inventions was not contemplated by the drafters. This dovetails neatly with the assumption that a patent legally is supposed to cover only one invention.
We have the case law that holds that one may not file a reissue for a divisional case. But we say, it is permitted to file a reissue for previously unclaimed invention which would have been subject to a restriction requirement had it been claimed in the first place? Huh? Please explain this.
But, even assuming that one can legally first claim a previously unclaimed invention in reissue, I would hope you would agree that these claims are subject to intervening rights. Now, why in the world would Congress do that if there was no vice at all in the practice.
Please explain, if you can, why at least intervening rights should not apply to late claimed subject matter in continuations? It seems downright bizzare that Congress would provide intervening rights in the one case, but not in the other.
Europe has understood the problem and has now imposed a time limit on filing divisional cases. I think the US may eventually do this in some fashion as well. But the result in Europe ends up being the same result in the Muncie Gear case. Late claims to different inventions are not authorized after two years from the original filing date.
MaxDrei,
Thankfully you have given up on the “parent” analogy.
While I am not providing an answer to your question of what reason lay behind the court’s decision, you do indeed raise a good point regarding being a good advisor to your US clients.
There is an active tradeoff between searching for the best art in order to draft the strongest patent at the onset and NOT searching for the best art in the hopes of obtaining a patent regardless of, or in spite of, potential “best art” that may invalidate the nascent patent application, such art laying dormant and escaping the notice of the Examiner (and the client). From a purely business advice perspective, unfortunately IMHO, there appears to be some minor merit in advising clients NOT to search at all. I MUST interpose a caveat – after the following notes.
Two important notes that must be kept in mind:
1 – any such art that IS known to the applicant or her representative MUST be shared with the Office. This is an ethical and Legal duty.
2 – the applicant and her representative has absolutely NO legal duty to search at all. There is also NO ethical duty to perform such a search. Such effort on the part of the inventor or her representative is simply beyond the quid pro quo bargain of the US patent system. Period. It just isn’t in the Law or the rules to do so. Any change to this model would require a rewriting of the Law. Part of the Cacharis Decision reinforces this, as the Office had attempted to push part of the examination onus onto the applicant and this was ruled illegal.
Now the caveat: My practice is to advise for the most rigorous search possible under the budget conditions of the client. I would prefer to have the strongest starting point, even though I recognize that the actual potential for litigation is far below what the anti-patent crowd preaches. In the end, while I would prefer to err on the side of more-prepared (and more initial cost), this comes down to a business Cost-Risk decision that the Client must make. Art not found by the Office, can still be (and likely will be) found by a motivated adversary IF litigation does develop down the road and IF the pivotal business property has high-dollar implications. And while many patent applications simply do not meet the test for such future worth (if indeed there was such a test), it is quite literally impossible to predict this at the onset or even during patent prosecution.
Regarding your question on what motivated the judges way back when – the answer is immaterial to you being the best adviser to your current US clients. I suspect that, in part, you are searching for that answer to appease your own belief system rather than to affect your professed desire to serve your clients. So indeed, there you have it.
Krugman:
Should we use taxes to deter financial speculation? Yes, say top British officials, who oversee the City of London, one of the world’s two great banking centers. Other European governments agree — and they’re right….
The dispute began back in August, when Adair Turner, Britain’s top financial regulator, called for a tax on financial transactions as a way to discourage “socially useless” activities. Gordon Brown, the British prime minister, picked up on his proposal, which he presented at the Group of 20 meeting of leading economies this month.
Why is this a good idea? The Turner-Brown proposal is a modern version of an idea originally floated in 1972 by the late James Tobin, the Nobel-winning Yale economist. Tobin argued that currency speculation — money moving internationally to bet on fluctuations in exchange rates — was having a disruptive effect on the world economy. To reduce these disruptions, he called for a small tax on every exchange of currencies.
link to nytimes.com
So there you have it, Ladies and Gentlemen. from Noise above Law, that requiring clear and convincing evidence of invalidity accomplishes the public policy objective of “strong” patents, desirable in that they will attract investment disproportionately to the USA.
But my question remains: is that what the court gave as its reason, when it (whether capriciously or in line with Navajo’s “pure judicial policy making”) set up the “clear and convincing” standard?
Or did I advance some other justification for this requirement (as far as I know, unique in all the world).
Noise I don’t think I’m petulant. I’m not personally at risk of being blackmailed by owners of “strong” US patents. I’m just curious. I just want to know more, in order to become a better adviser to my clients.
If I were to set up a patent search firm in the USA I would be tempted to call it “Nelson Searches” or something like that. And I would employ searchers with one blind eye, who would be able convincingly to go through the motions of searching without actually finding the most relevant material (at least till after the patent issues). I imagine that would be something of interest to clients in the USA. But then again, I imagine I am not the first to come up with this business plan.
MaxDrei,
I pray that you are not a parent, or at least that you haven’t really thought through your stereotypical analogy.
ANY chosen level is, by your logic, a cop-out at some level. One man’s “public policy cloth” will always be another’s “poorly reasoned decision”. It’s a relativistic world.
Some would look at your interest in the origin, and your comment “unique to the USA”, as a petulant child’s greedy Christmas morning cry, “but he got that and I want that”. There are many who do not believe that “being the same” as the rest of the world is a “good thing” when it comes to patent law.
I tend to believe that a strong patent system, as exemplified in at least one way through a strong presumption of validity, creates an inherent value in the patents thus produced and attracts the capital of the investment world which helps accomplish the mission of the Patent Office (Durell theorists aside).
As to the burdens, the classic mistake is not knowing what the legal theory is.
The presumption of validity is about who bears the burden of proof: the patentee or the defendant infringer. The presumption of validity shifts the burden to the defendant infringer to carry. That’s it. The presumption of validity is a burden of proof standard. Then and only then, the question arises of what level of proof does the defendant need to show? Simply a preponderance of the evidence, something more like clear evidence, maybe clear and convincing evidence, or maybe beyond a reasonable doubt, or maybe even not even possible that the patent is valid…
The statutory presumption of validity can allow one to shift the burden to the defendant infringer yet allow the defendant infringer to prove invalidity by a simple preponderance. Nothing except pure judicial policy making created the clear and convincing evidence burden of persuasion out of the statutory presumption of validity.
I’m interested in the origin of the requirement (unique to the USA) for clear and convincing evidence of invalidity, as opposed to a mere preponderance. I understand that it was established by the CAFC (or its predecessor).
When children quarrel about who’s right, parents sometimes end the argument with something like “Enough. X is right. That is just the way it is”. Children rightly get very frustrated. They want to know WHY, and they are angry that their parent simply doesn’t know.
When the court says
“The Patent Office has already decided that issue. So, unless you have a total knock-out, we’re not going to discuss it any more here.”
isn’t that the same thing?
It’s a cop-out, isn’t it?
Was the appeal court that established the clear and convincing standard like that hapless ignorant parent, or did it establish c&c for deliberate public policy reasons? Did it perhaps dress its ruling in such public policy cloth, even while it knew itself to be incapable of understanding the science and technology well enough to write a reasoned decision on validity?
Blaise Mouttet asked:
What are the resultant differences between
1)eliminating the presumption of validity and
2)replacing the patent examination system with a patent registration system?
With a patent registration system more patents will be litigated but the patents will be “examined” by people who actually know something about patent law.
Ned,
“As I said, it makes no sense for the reissue statute to make an express time limit for claims enlarged in scope and mention nothing at all about claims to previously unclaimed subject matter”
Claims to previously unclaimed subject matter ARE covered by the express time limit as the claim scope is enlarged from nothing to something. The only thing allowed after the two year time limit is something expressly less in scope (even a change that lessons scope in one area but adds new scope (new claimed matter – NOT new matter), is NOT allowed after the two year mark.
It seems that this is a new area to you. Does your practice typically not include continuations and broadening re-issues? Again, I realize that this may sound snide, and I do NOT mean it that way. It’s just that this is some pretty basic tactical portfolio management techniques that appear to surprise you, and you otherwise appear to be a pretty seasoned practicioner.
In short, I would like to review the essay from Scott Kieff and Henry Smith. However, I refuse to pay for it
Well, good thing it’s on SSRN for free download, then. Just click the ‘Download’ link on the SSRN page and you’ll be given your choice of servers from which to download the complete paper.
Alternatively, a wide selection of Kieff’s work (as well as works from several others) is available for free at http://innovation.hoover.org
Ken, Section 121 for divisionals. They actually require a restriction requirement. One cannot legally file a divisional under 120. It is a continuation or a continuation in part. Further, if you call something a divisional that is not a divisional — meaning you did not have a restriction requirement, you may be committing inequitable conduct, not just making a mistake.
As to what the patent office permits you to do doesn’t make it legal. The patent office at time operates with an incorrect interpretation of the law. They are supposed to take a conservative view and reject so an unresolved issue may be clarified by the courts. But if they take a liberal view and do not reject, it is left for the courts to decide in infringement cases.
As I said, it makes no sense for the reissue statute to make an express time limit for claims enlarged in scope and mention nothing at all about claims to previously unclaimed subject matter. There are cases that actually say that one cannot address a reissue to a claims that were subject to a restriction. But the basis of these cases was lack of error.
The jurisprudence in this area in the CCPA and Fed. Cir. simply does not exist.
The problem with Muncie Gear is that new matter was added to the specification to describe the motor housing walls. Two of the claims were directed to this new matter. Two were not. They were directed to an anti-cavitation plate which was nortoriously old, but allegedly new in the combination. The original patent application and claim were directed to a deflection plate.
An oath supporting the new claims was filed more than two years after the original filing date and more than two years after the motor was sold to the public.
The Supreme Court intermingled its remarks on the anti-cavitation plate and the housing without clearly distinguishing its legal basis for each. Rich believed that the case was simply about new matter. But, while this was certainly true about the claims to the housing, this is not what the Supreme Court said concerning the claims to the anti-cavitation plate. There they said the problem with these was that they original specification gave no hint that the anti-cavitation plate was an invention, even in combination.
Ned:
What about 35 USC 120: domestic priority. That statute makes clear that I can file a application claiming priority to a earlier filed application and provided all the rights thereunder and the new application be directed to a completely different invention. In essence, I can file a divisional patent application and include claims therein that were never in the original filed application with no problem. The Late Claiming Doctrine is pretty much dead. Moreover, if I recall reading Chisum correctly, the Muncie case had a holding that is pretty much specific to the facts of the case and do not rear their head very often. I must admit, however, that I operate in accordance with 35 USC section 120 for the purposes of divisional patent applications.
Ken, also I would direct you the language of the reissue statutes. Claims “enlarging” the “scope” of the claims in the patent have to be filed within two years. But claims to previously unclaimed subject matter do not enlarge the scope of the claims, they claim a different invention. If this is permitted by the reissue statute, then implicitly, there is no two year limit on when the reissue might be filed.
But the argument is wholly illogical, which seems to mean that the practice is unauthorized by the reissue statute.
But more. If the existing claims are enlarged in scope, the statute requires the application must be filed within two years. Why be so strict about enlarged claims if Congress is or was completely unconcerned about late claims to previously unclaimed subject matter?
Congress even went further and provided for intervening rights for enlarged claims. But what about those practicing the unclaimed subject matter? They get intervening rights as well. If late claims are not a problem, why provide intervening rights at all?
The reissue statute is a case in point that Congress at least in 1952 never intended to authorize via continuation practice what it did not authorize through reissue practice. Then we have the strange case of Section 111(a)(3) and (4). But this was only recently enacted.
But I agree with you that the CCPA and the Fed. Cir. seem to see no vice in late claims to disclosed and unclaimed subject matter — and I mean by this an entirely different invention than that originally claimed or described to be invention in the specification. As with most digressions from Supreme Court precedent, the Fed. Cir.’s own day in court will come eventually.
Any Patent agents / lawyers that specialize in consumer products in the USA?
Please email me your contact information if interested. john@proto3000.com
Kind Regards,
John Frangella
Ken, the Supreme Court can only be overruled by an act of Congress. That is why I searched in the statutory framework for something that actually might be construed to overrule it. I think it appears in Section 111(a)(3) and (4).
However, I remain open to being corrected on this point. Please cite the Supreme Court case(s) that overruled Evens v. Eaton and Muncie Gear among other cases Supreme Court cases.
I know that the CCPA deemed in In re Rasmunsen that Muncie Gear pertained only to new matter. Other circuit courts deemed it no so limited. But, from my understanding, the CCPA is not the Supreme Court.
Ned:
You are discussing the late claiming doctrine, which has been overruled decades ago.
In short, I would like to review the essay from Scott Kieff and Henry Smith. However, I refuse to pay for it, because it would be tantamount to supporting a position that I probably do not agree. If these individuals who attack patents really believe in what they say, then all of their ideas should be made freely available to the public for discourse. Otherwise, one who disagrees with them is in a precarious position . . . one must provide compensation to ideologues to which one is opposed in order to attack their ideas.
What is ironic is that I can obtain any description of innovation that has been granted a patent monopoly for free. However, I must pay to view the words of those who seek to take that right away, because they hide behind Copyright protection that actually prevents the testing of their ideas by the public at large. This is the great paradox of our time, and I think that speaks volumes about the true interests at stake here. Why is it that those who seek a limited monopoly in exchange for freely teaching the public about useful and novel ideas are attacked by those who seek an unlimited monopoly, Copyright Protection, on nothing more than opinions not available for public testing because they hide behind the Copyright protection. What does this say about the intestinal fortitude of those who seek patent protection as opposed to those who attack patent protection using Copyright laws to hinder the testing of their ideas by the public?
A special Happy Thanksgiving to Dennis and his family.
6, the written description requirement has at least two aspects in the case law: 1) what is claimed must be described (O’Reilly v. Morse); and 2) what is disclosed, describe and enabled must still be delineated as being the invention of the applicant. Evans v. Eaton, Muncie Gear. At times we talk past each other because we do not make clear what aspect we are talking about.
The Lilly case and indeed most of the CCPA and Fed. Cir. cases are about the first aspect. However, many of the amicus briefs are also concerned about the second aspect.
NAL and Just Visiting have made a good case that the statutory framework, see especially Section 111, which was been amended in recent years to add (a)(3) and (4)), seemingly allows one to claim any invention adequately disclosed in the specification at any time even if the inventor did not realize it at the time he filed the patent application. (A supplemental oath is required.) While I concede this point, it does fly in the face of a large number of Supreme Court cases to the contrary dating back to the earliest days of the patent system.
Perhaps this en banc case will not address aspect 2 because the issue is not squarely presented in Lilly. But it remains an issue that still has to be addressed and resolved because so many of the amici complained that this was a major problem.
JAOI, Happy Thanksgiving to you too.
Dear Everyone,
In keeping with this holiday’s spirit, bringing families together, bringing the north and south together, bringing patent attorneys and inventors together, and bringing our country together,
Happy Thanksgiving.
God bless us everyone.
I understand you are trying to artificially manufacture an issue with what Lilly is arguing. But all you did was yell “pull” and release a red herring.
The reason I know this is because you are misunderstanding Lilly’s argument just as surely as you didn’t understand what Ned was trying to tell you until he further clarified it. You don’t have that luxury with Lilly. You’re on your own, off in the weeds shall we say. Except perhaps for Ned, he seems to be out there playing with you, but I’m not entirely sure. It appears as if he is, but I expect better from Ned.
“eviscerate the position you want to advance,”
The problem is, and what has you and Ned out in the weeds, is that the position Ned is wanting to advance isn’t actually what Lilly was trying to argue. He is understanding something from Lilly’s argument that should not be read into the argument. And it appears as if you have joined him in this faulty interpretation of the argument.
It’s hard to explain, but perhaps I’ll grace your presence with an explanation after tday.
Noise, upon further consideration, I will concede the point about continuations and reissues to this degree: the RULES do provide that one can claim previously disclosed and unclaimed subject matter provided one files a oath as provided by 1.67(b).
“A supplemental oath or declaration meeting the requirements of § 1.63 must be filed when a claim is presented for matter originally shown or described but not substantially embraced in the statement of invention or claims originally presented.”
I will further grant that Section 111(a)(4) can be construed to permit the filing of a continuation before the abandonment of the parent and obtain the benefit of the filing date of the parent in a case where no oath whatsoever has ever been filed.
Ergo, the Rules seem to provide for the filing of an oath in a continuation for previously disclosed and unclaimed subject matter in a parent.
Therefore, you seem to be right that if this is permitted, there should be no objection to late claiming subject matter disclosed, unclaimed and not fairly embraced in the statement of the invention in the specification as filed.
But you should be aware that Section 112, p.1 long predated 111(a)(4), so if there is a separate written description requirement in Section 112, p.1, the Fed. Cir. should harmonize its holding with what appears to be a conflict in the statutory scheme created by Section 111(a)(3) and (4).
Good discussion.
6, stop pretending that you even have a clue about what Ned and I are discussing and serve your customers. chop chop.
Ned – There you go again. – Indeed.
This was MY hypothetical – not yours. Don’t hijack what I asked you to review and change the scenario for a limited version that largely does not apply (and as you admit, doesn’t make sense – so why would you ask me to consider that situation to begin with???). Answer my provisions first, then we will take a look at your provisions, if you still want to.
Your hypothetical hijacking doesn’t even make sense. It’s like you bringing up abandonment. Answer my provisions directly if you can and don’t build such obvious strawmen.
If you cannot answer the general everyday fact that straight continuations and broadening revisions eviscerate the position you want to advance, just be up front about it. Stop evading my given version, or else, I might confuse you for an examiner like 6 or Malcolm.
In the words of Ronald Reagan, “There you go again.”
Quote Noise: “The filing date of the continuation is the filing date of the parent.”
I asked you to assume that the so-called parent has no filing date because, we agreed, one needs an oath to be accorded a filing date. Assume no oath is filed — ever — in the so-called parent. How can one have a valid continuation from a patent application that never was legally pending.
“Remember – the problem with the Lilly logic”
You don’t understand the “Lilly logic” in the first instance. Admittedly, it isn’t worded very well.
There is no issue with the “Lilly logic” and with reissues, cons etc.
Ned,
You are getting lost in the weeds (6 – you don’t even make it to the weeds).
“Oath” is a red herring. They can be delayed, but that is not material to the points I made by bringing up these two Office operations. I am not disagreeing that an oath is needed – I am merely providing that the oath has nothing to do with the dates. For example, a continuation, while the parent is still active, recieves the date of the parent while the oath can literally be YEARS later. Are you trying to be obtuse with the oath/date issue?
“Applications being abandoned” – this has absolutely nothing to do with the two instances I asked you to consider. Why even go here? Please try to stay on track.
“Rules” are also a red herring – neither of the common Office activites abbrogate any statutory requirements. In fact, the Office procedures I ask you to consider are fully amenable under the statutory requirements.
“If such a parent application has no filing date for subject matter now claimed for the first time in the continuation, the question becomes what is the effective date of the newly claimed subject matter?”
Cmon man, the filing date for a continuation is the filing date of the parent. I did not put forth an example of a CIP, Ned – this is really simple stuff. For all intents and purposes, ALL continuations contain claims that are new. The subject matter of the new claims is NOT NEW. Remember – the problem with the Lilly logic is that such things as new claims in a continuation expressly have NOT been claimed previously. Going back to your post of Nov 25, 2009 at 04:04 AM, the subject matter is NOT new – it is provided, enabled and not claimed. Remember – I’m talking about a straight continuation. This happens all the time!
“I don’t think the statutes directly address this issue.” – really Ned? Really? Time to leave the one-trick pony of Muncie Gear and expand your horizons.
The recapture rule is NOT at all what I am talking about – that is a very specific instance and does NOT need to be invoked in either the continuation case or in broadening re-issue case that I asked you to consider.
Take some time if needed to review what is necessary for continuations and broadening re-issues. Please.
Noise, on “let it go,” I am clearly speaking of the “recapture rule.” Do I need to say more?
Noise,
You said, “I am sure you know the rules for both continuations and broadening reissues.”
Noise, the rules cannot abrogate a statutory requirement. While an oath can be delayed, an oath is required for a filing date under section 111. If you disagree with this please tell me why you disagree with this because the statute is clear on this issue.
You said, “The oaths in both ARE, by normal operation of law, made at the later time and have zero effect on the date given.”
Noise, the statute and rules certainly provide for a “delayed” filing of an oath in an application. But no rule can abrogate the statutory requirement for an oath in the first place. If no oath is ever filed before the abandonment of the application, there is no filing date for the unclaimed subject matter. You seem to suggest that it is possible to file an oath in a different application that can somehow remedy the lack of an oath in an abandoned application. This assumption seems to be based upon the assumption that merely filing of an application disclosing subject matter is sufficient to obtain a filing date. It is not. One also has to file an oath stating that that claimed subject matter is the invention of the applicant. That oath must be filed in order for the subject matter to have a filing date. If the application is abandoned, the oath can no longer be a filed. Do you agree with this?
Now, consider a continuation. It has a number of requirements, the most critical of which is that it must claim the benefit of a copending application “previously filed” in the United States. If such a parent application has no filing date for subject matter now claimed for the first time in the continuation, the question becomes what is the effective date of the newly claimed subject matter? Is it the date that the subject matter was first disclosed in the “parent” or is it the filing date of the continuation?
I don’t think the statutes directly address this issue. I’m aware of no particular case that directly addresses this issue. The closest case I am aware of is the Muncie Gear case and it clearly held that a late claim to subject matter previously disclosed had an effective filing date as of the date it was first claimed, not the date was first disclosed.
Happy T-day, everyone! And make sure to take a moment this holiday season to be thankful that Dennis provides you with this space to argue with each other about random junk that only tangentially has anything to do with what he posts or with patent law in general.
AdAbsurdem: Malcolm Forbes is someone who puts bold plans into action and creates wealth, jobs and industries…
Agreed! America needs Malcolm Forbes more than ever now. If only he had Palin’s electricity! He might be President now.
By the way, your moniker sounds like a disease…
Ha! I didn’t notice that. It’s actually short for TeaBagger. I’m a serious organizer for the movement. It’s a rewarding way to use the old programming skills after I get off work. We all need to contribute, however you can. Guys can get the word out by designing websites and working on the contacts database, while the ladies can work the phones and bake food to keep us going. Fyi, some of my best work here:
link to georgehutchins.com
It’s fun to watch two people argue (like noise and ned above) when they have different fundamental understandings of the words and principles which they are using in the argument. At least as a third disinterested party. They’ll go round and round chasing each other’s tails about issues that really don’t even exist except as a consequence of underlying issues, which aren’t even being discussed, that are more fundamental than what they are discussing.
“There is the problem of a lack of oath, which is legally required for a filing date. Can that be supplied late?”
The oath/declaration can be provided late. It is not one of the very few items (spec, claim, drawing if necessary) required to obtain a filing date. Further, I belive the scope of the oath to be determined by the disclosure and not vice versa. If there were no written description requirement beyond enablement, then the oath would not indicate that the filed application met such a written description requirement.
I think the “late oath” point is not your best argument. I’m not saying that your conclusions are wrong, just that the argument seems to be circular.
“Next we have subject matter disclosed and enabled, but for which there is no hint that such is part of the invention.”
Yes this is problematic. I understand completely the concerns of the amici. Nobody should doubt that too weak a written description requirement invites abuse.
Perhaps I’m the only person who hasn’t made up their mind regarding the proper scope of the written description requirement.
One question might be whether extrninsic evidence can be relied on for the “hint”. One of the weaknesses in relying heavily on Muncie Gear is that the Court did consider a lot of extrinsic evidence in reaching the holding that the claims sought were not drawn to invention as filed.
But even if extrinsic evidence is not allowed, it doesn’t follow that a strict description requirement as currently applied is needed to prevent late claiming. I find the current doctrine particularly problematic when applied to claims filed with the original application, because the claims do provide at least a “hint” as to the invention.
With regard to abandonment theory, given the current state of the law, I question whether subject matter originally described (by whatever the appropriate standard is) and timely claimed as allowed by either the reissue statute, or 35 USC 120 can be considered abandoned by the inventor. I undertand the preference for getting the claims drafted early, but that simply isn’t what the law requires.
Further, I am very dubious that infringers actually rely on abandoned material they find disclosed in patents as being in the public domain in any significant numbers.
Ned,
Your response is insubstantial at best.
I am sure you know the rules for both continuations and broadening reissues. The oaths in both ARE, by normal operation of law, made at the later time and have zero effect on the date given (your quest for universal application of Muncie Gear notwithstanding), and BOTH, while completely ordinary and in quite common practice, nullify the arguments of Lily and amici. You see, the extension of the Lilly argument reduces to a logical contradiction in another subset of the Law. This is way beyond only your 102(e) stand.
You comments about “let it go” for broadening reissues is confusing. I do not unerstand what point you are trying to make. “right to claim” includes both.
Please feel free to think about this before attempting another reply (not meant in a snide way, although I realize it could come across so).
“Clear and convincing.” The convincing part does seem to implicate the burden of persuasion.
Noise, on the two points.
Reissues: “right to claim.” What does that mean? We know it does not mean subject matter deliberately abandoned. But that is what happens when your patent issues, you have claimed subject matter and have “let it go.” This included unfiled divisionals.
So, “right to claim” must refer, in part, to subject matter that is not abandoned.
Now, if you did claim it but the claims can be made broader, I think that is what “right to claim” means.
But now we get to the hard part. What of subject matter never claimed but which the applicant clearly intended to claim but did not. I think this is may also be included as it can fall under “mistake.” There may be cases on point, I do not know.
Next we have subject matter disclosed and enabled, but for which there is no hint that such is part of the invention. How can there be a right to claim this subject matter? It may not even be the invention of the applicant. There is the problem of a lack of oath, which is legally required for a filing date. Can that be supplied late?
I think that if the applicant can show by evidence that that subject matter was originally contemplated to be claimed but was not for some reason, there may be grounds to allow him to make a late oath and claim it by reissue. But if that evidence does not exist, I think the points the amici make in Arriad are valid. Such subject matter was legally never the invention of the applicant, but is the invention of someone else. There should be no right to claim it in a reissue and a late oath is probably a lie.
There is also the issue of the filing date of such late claimed subject matter. I think, under the principles of Muncie Gear and Sections 111, 115, the filing date of the subject matter is the date of the late oath.
All of the above should also apply to continuations with the caveat that originally claimed subject matter should never be considered abandoned. One should be able to file divisions at any time.
As to patent office practice, at times they really do not have a clue. Their practice under 102(e) over the years is a case in point. But if they do not reject, the issues never get aired on appeal to the Federal Circuit, but must be eventually fleshed out in court. This is the problem with a lot of what goes on in the PTO.
T.B.
Malcolm Forbes is not a “boss” A “boss” is someone with tattoos and an attitude of entitlement who coerces workers under him into joining unions if they want to keep their stinkin’ jobs and forces them to go on strike, even thought they may not want to, at the threat of violence.
Malcolm Forbes is someone who puts bold plans into action and creates wealth, jobs and industries so that “bosses” can later come in, after all the wonderfully creative wealth generating work is done, and ruin everything.
By the way, your moniker sounds like a disease…
Egads says, “He’s not talking about those kind of movies JAOI. TMI, by the way.”
Now that right there’s funny, I don’t care who y’are!
very good points on this thanks
I haven’t read the article, but the presumption of validity means that the evidence must be clear and convincing. It has nothing to do with the burden of persuasion.
In fact, the standard of proof is a key part of the burden of persuasion. From Black’s Law Dictionary, 8th Edition: “burden of persuasion. A party’s duty to convince the fact-finder to view the facts in a way that favors that party. • In civil cases, the plaintiff’s burden is usu. “by a preponderance of the evidence,” while in criminal cases the prosecution’s burden is “beyond a reasonable doubt.””
Similarly, “standard of proof. The degree or level of proof demanded in a specific case, such as “beyond a reasonable doubt” or “by a preponderance of the evidence.” See burden of persuasion.”
I did finally get a copy of the above-noted very useful law review article on the case law of patent invalidity burdens including “clear and convincing evidence” at:
link to cardozolawreview.com
I particularly noted at the end of footnote 52 a modern-day Sup. Ct. citation: ” ‘But see California ex rel Cooper v. Mitchell Bros.’ Santa Ana Theater, 454 U.S. 90, 93 (1981) (‘[T]he Court has never required the ‘beyond a reasonable doubt’ standard to be applied in a civil case.’).”
Ned,
I would like your impression on two related items.
The first is the right of an applicant to request a Reissue within two years of a patent grant in order to capture material that the applicant had a right to claim but had not (broadening re-issue). Do you have any problems with this perfectly legal mechanism in light of the written description discussion?
Second, you seem to point out an issue that the amici have with continuations that capture late claims to subject matter disclosed and enabled. Interestingly, the office often allows such continuations under the legal test in such cases (and remember that such continuations must be initiated while the parent is still active in order to obtain the critical date) that there must not be new matter introduced. Such continuations are routinely deemed NOT to have new matter introduced, yet introduce new claims (new descriptions), and are routinely allowed by the Office (all other requirements being met), under the presumption of Law.
It appears that these are two instances of current routine legal operations where the Lily amici arguments seem to utterly fail.
Mr. Morgan,
Sorry about the link. There was an extra period at the end of the link.
link to papers.ssrn.com
Re: “the presumption of validity means that the evidence must be clear and convincing.”
Actually, the presumption of validity of a patent is statutory, whereas the “clear and convincing evidence” burden is an additional requirement, added by the Federal Circuit. The latter could be challenged en banc or at the Supreme Court on modern Supreme Court case law on the trial of civil cases. However, most most lawyers in patent cases waive the right to do so by failing to object to the jury instructions on the latter.
“when I have the patience to watch movies, I’ve been lubricated”
He’s not talking about those kind of movies JAOI. TMI, by the way.
Paul,
Try copying the URL into the browser window and then deleting the period at the end so that your URL string ends in a number.
Ned,
The legislative Law harkens to Ariad’s case. However, Lilly has made a substantial argument that judicial Law has trumped legislative Law. The intent of the separate written description is admirable, but it is an incorrect reading of the pure word of Law.
The purist in me is torn, as I recognize both that Law is made legislatively as well as made judicially, and this appears to be a battle of ascendency – which Law is more “right”. At this point I lean ever so slightly to Ariad based on the ultra-thin construction of the first question to the court, and I am reminded of a wise man’s view when faced with alleged ambiguity in the letter of the Law – ask yourself, what does the letter of the Law actually say.
The court is faced with the choice of acting in a deterministic fashion or an interpretive fashion. Lilly and its amici artfully conflate the two, asking the court to interpret past judicial determinism (and staying away from the source).
I do suspect that the Federal Circuit will not have the last word on this, and fear that in part, their decision will be put together like the abomination of Bilski, not in a ruling that can stand on its own; but rather, as a tee for the Supremes to take a whack.
Reading many, but not all, of the amicus briefs in Arriad, I find that quite a few complain about late claims, typically filed in continuations, to subject matter disclosed and enabled, but not originally contemplated to be an invention. At least one cited the interrelated problem of Section 115 that requires an oath that the inventor invented what is described.
The Supreme Court cases dating to the early 1800’s are uniform that the patent specification actually describe what the applicant invented so as to distinguish it from what he did not. The government brief is excellent on this point.
All this points to is that this case is another one of those cases that just might make it to the Supreme Court if there is a bad split. But I also predict that a majority will hold that there is a separate written description requirement.
I haven’t read the article, but the presumption of validity means that the evidence must be clear and convincing. It has nothing to do with the burden of persuasion.
In the Microsoft case, the particular piece of information allegedly invalidating the patent in that case was neither clear nor convincing.
What convinces juries IMHO is whether the art has or has not been considered by the patent examiner. While I do not like reexaminations due to BRI, if a patent survives reexamination, juries will be very unlikely to find the patent invalid over the same art. If we could ever clean up BRI and somehow deal with the delay issue, reexaminations could be beneficial in that they could strengthen the patent so that only the rare lab notebook or the like would pose a threat to one’s patent.
Re: “law review Note. Etan S. Chatlynne, The Burden of Establishing Patent Invalidity: Maintaining a Heightened Evidentiary Standard Despite Increasing “Verbal Variances,” 31 Cardozo L. Rev. 297(2009), available at link to papers.ssrn.com.”
I could not get that hotlink to work. could you please check it?
————
Having read a awfull lot of USPQ reported patent decisions since 1963, and having seen or participated in a quite a few of invalidity studies, I strongly agree with the above comment that the Kieff and Henry Smith article’s alleged comment that key invalidating prior art is most often “the laboratory notebook of an individual researcher” or “an obscure student thesis” [instead of prior patents, publications or products] is actually quite rare, not “most often.”
white*
to all of you people that hyphen and jest,
no point your’e all whote or darkie.
Cause those who claim all and none of the rest is a point of sure full milarky
What we need are more collectives
No, we need more bosses! Really smart jet-setting rich bosses, with lots of power, who we can point to and say “He’s rich! He knows what he’s doing. Let’s listen to him!” You know, like Malcolm Forbes. I’d pretty much do whatever he told me to do. Even Glenn Beck doesn’t have that kind of power.
“I recommend inserting an amendment removing the presumption of validity of patents in the next stimulus bill”
And a tax on all businesses for having the nerve to exist. What we need are more collectives and long lines for bread.
“is it good policy to pursue a solution that could lead to more litigation”
Yes, have you not been reading all the ABA Journal articles about laid-off attorneys and new grads who can’t find jobs?
I recommend inserting an amendment removing the presumption of validity of patents in the next stimulus bill.
I think everyone has started vacation early around here. Not that I have anything better to add!
Mr. Six,
You be my new friend, now that Lionel has finally clammed up.
Mr. Six,
Good one!
That’s not what I meant, 6, thanks for catching the lack of clarity. I meant ‘a requirement that the TSM be explicit or implicit in the prior art rather than based on the judge’s common sense.’
“I believe he would prefer a return to an explicit teaching/suggestion/motivation to combine requirement. ”
There never even was an EXPLICIT tsm requirement. The t, s or m could be implicit or well known.
Noise above Law: There are at least two ways to gauge the strength of patents within a patent system. The first is how hard they are to invalidate. The second is the strength of the infringement remedies.
Removing or weakening the presumption of validity only affects the former, not the latter. In fact, the authors are, the last time I checked, generally in favor of moving back towards an automatic injunction. So by at least one measure they’re arguing for stronger patents, not weaker ones.
Regarding ease of invalidation, the authors aren’t talking about broadening the definition of prior art or injecting more KSR-style common sense analysis into the question of validity. In fact, Kieff, for example, is opposed to the way KSR muddied the waters. I believe he would prefer a return to an explicit teaching/suggestion/motivation to combine requirement.
This is just about making proof of invalidity have the same burden of persuasion as almost everything else in a patent case. It’s a simple, across the board change that doesn’t remove the requirement that invalidity be determined based on facts and not whims or personal preferences (aka common sense and flexibility). It also has the advantage of not cluttering up the law with special cases for different fields of technology the way some have suggested for software and business method patents.
I’m not sure what you meant by Kool-aid. Is it because I used the phrase ‘patent troll?’ I was just trying to frame things in a way that people who reflexively oppose anything Microsoft does could get behind, as the same folks tend to be pretty opposed to what they call patent trolls.
Actually I made a semi-deliberate misrepresentation. Remember guys, my name is 6, what was ol’ john’s best friend? His 6 shooter!
But you guys can feel free to pester ol’ Mr. Johnson. I don’t even know what the office of pre-examination is. Is that where they review for formalities?
“The Gore’s intertubes says that the Duke’s bestest friend was Louis Johnson. The Gore’s intertubes also says that there is a Louis Johnson at the USPTO, but he works in the Office of Pre-examination. Prisoner #6, were you reassigned?”
Wrong friend, broje. But 6 did just out himself. What do you bet he gets really quiet?
“Prisoner #6, were you reassigned?”
OT since 6’s moniker probably isn’t a reference to The Prisoner since he used to go by 6k, but that Prisoner miniseries that aired on AMC last week was really dull.