Patently-O Bits and Bytes

91 thoughts on “Patently-O Bits and Bytes

  1. 91

    Don’t be messin with my main man Anon – ya see how easy he redefines what ya say?

    IANAE is the only one of the four horsemen that can actually ride. Course, sometimes he rides into middle earth territory and gets damm lost, but hey, nobody’s perfect.

  2. 90

    But to conclude that PTO efficiency is acceptable because the PTO wastes less than the military is unacceptable.

    I don’t recall ever concluding that. Though I don’t think an additional billion dollars would be wasted. There are plenty of worthwhile ways to spend a billion dollars at the PTO, which would largely go right back into the US economy, and it’s fortuitous that they would essentially be refunding to a PTO under good management in a lump sum the money that was diverted from a PTO under bad management.

    All I said was that it’s disingenuous to insist that someone who doesn’t even work for the PTO come up with a detailed plan before asking for a relatively small sum of money, when we don’t require it of much larger organizations that directly request much larger sums, and especially when it’s obvious that the PTO needs the money.

  3. 89

    IANAE–

    There is one point with which I agree with you–waste in the public sector is ubiquitous.

    But to conclude that PTO efficiency is acceptable because the PTO wastes less than the military is unacceptable.

    I agree that when trying to effect change you should look for the greatest bang for your buck, and that even the total actual cost of the PTO is tiny compared to those of social programs, bailouts, and the military.

    My efforts are not focused on the PTO, or on any other specific agency, but rather on structural problems that apply to all agencies.

    A second huge issue that has recently arisen has been congressional-level projects and programs that are not military in nature, like TARP and corporate bailouts. These require similar consideration.

    Finally, under a registration system the bar for disclosure would not be lowered. Again, in order for a patent to be asserted it must at some point be examined. The scope of that which is asserted could easily be limited to the scope of initial disclosure, even in a registration system.

  4. 88

    Why should that be a factor at all?

    You don’t understand why that consideration would motivate a potential opponent?

    Unless you think that the applicant should not be entitled to what they should be entitled to

    Of course the applicant isn’t entitled to “what he should be entitled to”. He’s entitled to what he chooses to claim, provided that his claim is valid. If he was entitled to “what he should be entitled to”, we’d still be using omnibus claims.

    Again why the lean towards opposition to a patent, if not for your obvious and not-so-latent anti-patent disposition?
    You may not be an examiner, but you are no friend of those with patents.

    I’m anti-invalid-patents. I’m pro-valid-patents. I can’t imagine why anybody would be otherwise.

  5. 87

    the applicant is no longer free to amend his claims in response.

    Why should that be a factor at all? Unless you think that the applicant should not be entitled to what they should be entitled to (given the provisio that any amendment would be proper) – this line of thought only evinces an anti-patent sentiment.

    but then the opposition would have to be structured so it was still worthwhile to oppose a patent.

    Again why the lean towards opposition to a patent, if not for your obvious and not-so-latent anti-patent disposition?

    You may not be an examiner, but you are no friend of those with patents.

  6. 86

    So, in principle then, I take it that you are opposed to oppositions?

    No, I’m not opposed to them in principle. I just don’t think it’s fair to hold the entire public responsible for the activity (or inactivity) of a single opponent.

    I’m thinking you’d want at least a high presumption of validity as between the parties to the opposition, but then the opposition would have to be structured so it was still worthwhile to oppose a patent.

    Max, maybe you can help out with this. What’s the big advantage to opposing an EP patent rather than waiting to be (probably never) sued for infringement?

    That would be other than laches IANAE, right?

    Yes, it would. Laches requires that you threaten to sue before not suing.

    Readers (no point in asking ping a question) why is it then, these watchers in Germany regard tipping off the Examiner, pre-issue, about the relevant art as a foolish thing to do, something that does more harm than good?

    Presumably, it’s because you’d rather have the art applied when you’re a party to the proceedings and the applicant is no longer free to amend his claims in response.

  7. 85

    Maxie,

    You are right that I am right.

    Those who only want to be otch are no help at all to anybody. They are a pollution, but without the benefit of any industry as a cause. They should be banned.

  8. 84

    Ping for once I agree with you. Your “observation” is indeed not a serious answer. It is no help at all, is it, to those who have to navigate through difficult waters, balancing opposing legitimate interests, the promote the progress of the US economy.

  9. 82

    Maxie,

    Oh so right not to wait for answers from me, but I will give this observation from eskimo land:

    I’ve discussed the Peer to Patent programs with some open source leaders who are opposed to software patents (including Bruce Perens, most notably)… The problem is that they do not consider software to be patentable subject matter in the first place, so for them to participate at all in a program like Peer to Patent could be viewed as a tacit admission that software may in fact be patentable

    I kid you not – I aint making this up. See link to ipwatchdog.com – The very people who have a vested interest and like to be otch won’t get involved cause it might indicate that software is patentable.

    NEWSFLASH – “software” is patentable.

    The actual translation here is that the people (including those that pride themselves on windmill tilting here) don’t actually take substantive action in the courts (or in the offered official vehicles like peer-to-patent) be ’cause they would rather be able to keep be otchin. If they pursued the actual avenues, they would lose and they’d have to be otch about something else. This way, the lazy way, they get to keep yappin about how unfair it all is.

  10. 81

    ping, this is the Gold Standard we are looking at, right.

    Did you know that, in Germany the presumption that all patents are known has been the de facto standard for at least half a century. Perhaps that explains why 70% of all post-issue oppositions filed at the EPO are from the German language area?

    Of course, to be able to file an opposition timely, you have to monitor the progress through the PTO of all those claims that read on to your product line.

    Readers (no point in asking ping a question) why is it then, these watchers in Germany regard tipping off the Examiner, pre-issue, about the relevant art as a foolish thing to do, something that does more harm than good? This is NOT a difficult question, if you just give it a moment’s thought.

    More difficult question: what on earth is it going to take, to kick-start Peer to Patent activity?

  11. 80

    As to whether the art was known

    I would like to see a rebuttable presumption that all patents are known.

    Such a presumption would go nicely with the very policy of patents – dissemination of information, and would help balance the current inanity in business calculations that actually looking at patents exposes you to the three fold penalty for willfulness. Yeah, I’m also for making that penalty the norm too and allowing that norm to be rebuttable.

    You would actually make it worthwhile (in a business sense) for people to keep current with what is patented. Of course, with the increased scrutiny, you can expect even more spotlight on crrppy patent examination, but that would be a good thing as long as the urge to rubber stamp be quashed. An added benefit would be that people would more likely actually track publications as well and use the Rule 1.99 (and thus hopefully reduce the excessive windmill tilting on mere blog comment pages). They also should align the submission time period of 1.99 with the Peer-to-Patent allowed submission time.

  12. 79

    There may not be any party at all with an interest in opposing the patent when it issues, but there may be lots of parties with a very strong interest in defending a lawsuit later on.

    Tautology, fantasy or both?

    What’s the number one way of defending against such lawsuit? Oh Yeah – the patent shouldn’t have issued.

    When’s the time of interest naturally in play? Oh Yeah – when you have actually been called on the carpet for infringing the oops-now-all-of-a-sudden-its-important-to-challenge-if-the-patent-should-have-been-issued-in-the-first-place patent.

  13. 77

    “Why not? There’s no similar rule about sitting idly by with an infringed patent.”

    That would be other than laches IANAE, right?

  14. 76

    IANAE, true.

    We had this very same discussion when we first considered oppositions in the mid-90s. The proponents argued for an enhanced presumption of validity along the lines discussed here as the benefit to the patenteed. The contrary view was the lack of really interest by the public at the time.

    So, in principle then, I take it that you are opposed to oppositions?

  15. 75

    But the whole idea here is to allow the applicant the opportunity to get a patent that could not be easilty challenged on validity.

    That would be wonderful for the patentee, but that patent has to come with a commensurately high confidence level that the validity determination was correct. Otherwise, it’s a very bad idea for the public.

    I don’t want to get into a long discussion about class actions, but I don’t think they’re appropriate in patent matters. They’re best suited to liability for past actions, and not ideal when many parties’ interest only arises when the patentee sues them on the issued patent, or when they begin a potentially infringing activity after the patent issues. There may not be any party at all with an interest in opposing the patent when it issues, but there may be lots of parties with a very strong interest in defending a lawsuit later on.

  16. 74

    Think class action. Due process might require notice to the interested member of the public in order that they be bound. (Foreign entities beginning business in the US post-grant could be required to consent to the validity of US patents subject to such oppositions as a price of doing business in the US.)

    As to whether the art was known, this could be handled by a declaration under penalty of perjury. I presume most patent attorneys would really be looking at keeping their licenses and would be very careful about signing such a declaration. Ruining one’s career on behalf of a lying client is not something most of use would do.

    But the whole idea here is to allow the applicant the opportunity to get a patent that could not be easilty challenged on validity. Now, that would be worth bucket loads of cash down the road.

  17. 73

    2) Any art known to any infringer at the time of the opposition cannot be raised in a reexam or invalidity challenge.

    The way I read your proposal, no infringers were parties to the proceedings.

    Also, it sounds complicated to assess after the fact whether art was known to an infringer on a particular date, or if the infringer actually was an infringer (or knew/believed he was an infringer) on that date. And of course it would mean that some art could be relied upon by some infringers but not others to invalidate the patent, so what if they’re sued in the “wrong” order?

    one cannot sit idly by with invalidating art and hope to rely on it later.

    Why not? There’s no similar rule about sitting idly by with an infringed patent.

  18. 72

    Ned: The result of such an examination would be binding on the public with respect to all issues actually litigated or which could have been litigated.
    And how, exactly, does the public make sure that all the issues actually litigated are adequately pleaded and argued, or that all of the issues which could have been litigated get raised?
    Posted by: IANAE | Oct 25, 2010 at 08:46 PM

    I view the estoppel like this:

    1) All art before the PTO cannot be the basis for any reexam or invalidity challenge;

    2) Any art known to any infringer at the time of the opposition cannot be raised in a reexam or invalidity challenge.

    3) The above would not apply to art not of record or art not known to a party at the time.

    But otherwise, one cannot sit idly by with invalidating art and hope to rely on it later.

  19. 71

    Granting patents “fast enough” is a red herring.

    criminy, weza already got complaints that the time they do take is not enough to give a quality examination.

  20. 70

    In order for a patent to be asserted, it must at some point be examined, somewhere–be it in a PTO, in a court, or some other forum.

    Right, but that would require very few examiners, since most people still wouldn’t sue on their patents, and if courts do it in the first instance you wouldn’t need any examiners at all. And I’m still confused about how the lack of examination would encourage disclosure. Most of the disclosure in a patent spec is there so it can survive the examination process. Why would anybody put more effort into clearing a lower bar?

    And no matter how much money the military physically misplaces, in the absence of any rational accounting and economic analysis, Paul Michel’s $1B proposal is STILL a joke.

    Even if it is, it’s no more a joke than the much larger military budget. If you asked Kappos what the PTO would spend a billion dollars on, he’d be pleased to tell you exactly what he has planned. He probably has way more than a billion worth of projects on the back burner, including hiring more examiners and major upgrades to IT and other infrastructure, and maybe even opening some new offices. It’s not Michel’s job to tell the PTO how to spend the money. He knows they need it, we all know they need it, and they’re perfectly capable of finding worthwhile ways to spend it.

    A billion dollars is a pittance compared to what the government throws around for much less worthy causes. If you took a single billion dollars out of the defense budget and gave it to the PTO, nobody in the whole country would even notice the difference in the effectiveness of the military or the state of national security.

    A billion dollars could make the PTO actually succeed in what it’s supposed to be doing, unlike the many billion dollars given to car companies that failed anyway, and to banks that are continuing to do what made them fail. Besides which, there are plenty of other places to buy cars and borrow money, but only the government can grant patents, and it’s obvious to everybody that they can’t grant patents fast enough at the moment.

  21. 69

    IANAE–

    Once again, you have misrepresented my position regarding the PTO. In order for a patent to be asserted, it must at some point be examined, somewhere–be it in a PTO, in a court, or some other forum.

    And no matter how much money the military physically misplaces, in the absence of any rational accounting and economic analysis, Paul Michel’s $1B proposal is STILL a joke.

    Michel’s mentality is exactly the same as that which has been directed toward many military projects–just throw more money at it. At least insofar as the military is concerned, that mentality has come under intense fire. It’s not good for the military, it’s not good for the PTO, it’s not good for the country.

    Get with it, Paul.

  22. 68

    And, since you have made the comparison, why aren’t other federal government employees treated like military employees, insofar as availability for duty is concerned? Why don’t we apply militaristic principles such as defined leave and dereliction of duty to other government employees, all of whom argue that they perform a function critical to the very existence and functioning of the union? Why do we permit them to cease to perform work by way of a strike? Because of some Kennedy-era presidential orders?

    Why don’t we give the PTO a $500-billion budget for which they are completely unaccountable? I’m sure they’d gladly accept all those other proposals at that price.

    I am FOR an excellent military system, just as I am FOR an excellent patent system.

    You’re for an excellent patent system, but you want to take the PTO’s money away and fire all the examiners. I wonder how excellent the military would be if we charged them $50 billion a year and fired all the soldiers.

    In the absence of any rational accounting and economic analysis, Paul Michel’s $1B proposal is a joke.

    The military probably physically misplaces (as opposed to merely wasting) more cash than that every year. Why should they get any money at all without explaining exactly how they plan to spend it? They’re always fighting in countries with lots of oil and stuff, so shouldn’t they be self-funding?

  23. 67

    James–

    “The level success of success does not have to be equal in order for the program to be worthwhile.”

    This is correct, however you have necessitated a workable definition of “worthwhile”.

    Current applicants who prosecute an application to a final disposition see even the current system as worthwhile, insofar as the apparent prosecution-related costs are concerned.

    Whether they would feel the same way if the negative externalities were included in the calculus is anybody’s guess. Nobody here has yet provided a comprehensive analysis of the total annual cost of the PTO including said now-excluded externalities.

    All of what I’ve said is obvious, yet terribly inconvenient to the current institutional analysis orthodoxy.

    Face it–we don’t know either the actual costs or the actual benefits of having the current PTO.

    On the benefits side, the results are achieved by disclosure–the greater the disclosure, the greater the benefits. The argument that a registration system, with low entry barriers, promotes greater disclosure than a higher-entry-barrier examination system, is compelling.

    So, when discussing an operational mechanism like telecommuting, asking whether the mechanism is “worthwhile” sort of misses the mark. The real question, since society has determined that the patent system is worthwhile as a whole, is whether telecommuting is more worthwhile, both in isolation and in synergy with other changes, than not.

    With regard to your assertion that there is “substantial empirical evidence” that it would work, the AEI discusses potential “benefits” at length, dividing them into 4 categories. The benefits that accrue to the institution include potentially enhanced security resulting from a dispersed model, and decreased overhead in the form of office space. The other benefits accrue to either general society (less pollutants), or the worker (fuel savings).

    There is no discussion of the costs of telecommuting. Does the potential security benefit outweigh the detriment of not being able to concentrate defensive and repair measures? Is there the same productivity/quality of work/responsiveness among the workers? Are any beneficial aspects of a corporate culture affected adversely, such as morale and information-sharing? What are the costs of the infrastructure required, and of the decreased tax revenues resulting from tax breaks for using part of your home as office space?

    Instead of there being “substantial empirical evidence”, the suggestions offered by the AEI are very thin indeed, and totally one-sided.

    And in response to your other question, “…can you show that the support staff at the PTO are overcompensated compared to private sector equivalents?”, since you feel comfortable using AEI materials as reference, you can read the AEI article at link to aei.org for evidence that their compensation levels are higher. The article uses information provided by the Bureau of Labor Statistics, which DOES NOT EVEN INCLUDE THE GOLD-PLATED GOVERNMENT BENEFITS THAT GOVERNMENT EMPLOYEES AND RETIREES RECEIVE.

    If, however much they are compensated, public-sector employees were commensurately more productive than their private-sector counterparts, then fine. But of course there is no evidence of this, no reason to suspect that it is the case, and every reason to suspect that they are in fact far less productive, given the paucity of penalties for non-production in the public sector.

    Mooney–

    While the military exercises a critical function that aims to preserve the physical boundaries of the union, its perceived utility has far exceeded that mandate. Whether or not other uses are “worthwhile” depends upon how military actions are characterized. Like anything, a military needs practice and exercise to remain anywhere near effective.

    Having served myself, I can tell you unequivocally that there are politically-motivated intrusions into military operations that result in significant waste and that compromise operational ineffectiveness. This is also obvious.

    And as a matter of fact, I do have an active role in advocating for measures that preserve and strengthen military effectiveness and efficiency, but it’s nothing so clumsy as protesting a general strategy and resulting deployment.

    I am FOR an excellent military system, just as I am FOR an excellent patent system.

    Insofar as the patent system is concerned, the current system doesn’t measure up to my standard of excellence.

    And, since you have made the comparison, why aren’t other federal government employees treated like military employees, insofar as availability for duty is concerned? Why don’t we apply militaristic principles such as defined leave and dereliction of duty to other government employees, all of whom argue that they perform a function critical to the very existence and functioning of the union? Why do we permit them to cease to perform work by way of a strike? Because of some Kennedy-era presidential orders?

    The same rules should be applied, for the same reasons. Striking employees should be prosecuted for dereliction of duty, and possibly even seditious and treasonous activity, depending on what active measures they take to impede or impair the functioning of the government.

    In the absence of any rational accounting and economic analysis, Paul Michel’s $1B proposal is a joke.

  24. 65

    I also dislike the pharma habit of claiming massive genuses of compounds, the vast majority of which haven’t even been shown to be synthesized, much less non-toxic, much less therapeutic.

    I don’t mind if they do it, but it has to have a limit. If they identify the therapeutic function of one part of the molecule, I don’t mind if the rest of the molecule is “R”, based on a reasonable expectation that the same functional bit will have the same therapeutic effect in the entire genus.

    I don’t expect them to know the toxicity of each species, but I also don’t think that’s material to patentability. Toxicity is a sliding scale, and it depends on the therapeutic dosage and is balanced against what you’re trying to treat. Chemotherapy is highly toxic, for example. Vitamin A is toxic in the wrong dosage. Consuming a large tube of fluoride toothpaste or a bottle of OTC pain relievers can do serious damage to a child. I’m perfectly happy for them to identify utility before they patent it and toxicity afterward.

  25. 64

    Pain is clearly not subjective, as is readily apparent from the fact that methods of both causing and treating pain are highly standardized.

    Visual analogue scales (i.e., a subjective, self-reported measure of pain) are a very common way by which pain and therapies for treating it are measured. Doctors routinely rely on a patient’s subjective report of pain intensity when determining how to treat pain.

    To be clear, there is a subjective element to “pain” which is why patents on methods of treating pain are ideally accompanied by controlled experiments in addition to statistically robust surveys, but certainly the utility and/or unexpectedly effective feature of a therapy can not simply be accepted based on the applicants’ say so.

    Would patents on new algorithms or new uses for existing algorithms be more palatable to you if they were accompanied by experimental data and, where a user’s subjective impressions were involved, robust surveys demonstrating the algorithm’s (perhaps unexpectedly) superior performance to existing algorithms?

    I support a tightened written description and enablement requirement that would force applicants to provide hard data, better descriptions, and narrower claims. I think that’s something that would improve patents in all areas but be especially effective for software and business methods, where vague language and bald assertion are all too common.

    Of course, I also dislike the pharma habit of claiming massive genuses of compounds, the vast majority of which haven’t even been shown to be synthesized, much less non-toxic, much less therapeutic. To me, that’s essentially the same as when software patent applicants claim every pie-in-the-sky variation of a given invention without any testing or evidence of functionality.

  26. 63

    IANAE Pain is clearly not subjective, as is readily apparent from the fact that methods of both causing and treating pain are highly standardized.

    To be clear, there is a subjective element to “pain” which is why patents on methods of treating pain are ideally accompanied by controlled experiments in addition to statistically robust surveys, but certainly the utility and/or unexpectedly effective feature of a therapy can not simply be accepted based on the applicants’ say so. And I’m not aware of any claims issuing regularly along the lines of “A method of treating pain, comprising administering a non-poisonous chemical, wherein 1 mg of the chemical is administered twice daily, wherein the administration is [insert made up term which sounds new but really isn’t], and wherein the compound reduces pain.”

    Maybe one will issue in a few hours. Somehow I doubt it. But I don’t have the same doubts about a crxppy computer-implemented claim being issued in a few hours.

  27. 62

    Cy Nical: You can’t turn advanced payments into sales revenue by simply adopting a no-refund policy.

    Sure you can. Once you don’t have to give the money back in the ordinary course of business, it’s unquestionably revenue by any accounting system. Normally the only time you definitely don’t have to give the money back is after you’ve delivered your consideration, but that’s obviously not the case here. Anyway, this isn’t exactly a no-refund policy, it’s a no-refund law.

    James Daily: Pain is intensely subjective, yet we can use testing data to show that a drug is effective for the treatment of pain.

    Pain is clearly not subjective, as is readily apparent from the fact that methods of both causing and treating pain are highly standardized.

    Ned: I would simply end compact prosecution as we know it and provide any number of office actions/responses until the issues are resolved.

    One of the issues that needs to be resolved is “your claims aren’t patentable, quit tying up PTO resources”.

    Ned: The result of such an examination would be binding on the public with respect to all issues actually litigated or which could have been litigated.

    And how, exactly, does the public make sure that all the issues actually litigated are adequately pleaded and argued, or that all of the issues which could have been litigated get raised?

  28. 61

    Fifteen years in a Rabbit hole. Is that all ther is, is that all there is. Is that all there is Dear Ned, then lets keep Dancing. Lets bring out the Booze and have a ball. IS THAT ALL THERE IS?

  29. 60

    Brandes U., Ehrelebach, T., eds. “Network Analysis: Methodological Foundations” Springer 2005

    A nice treatise on graph analysis algorithms. I suppose the alleged invention is buried in here somewhere. At least, it’s almost certain that if there is anything patentable in the application it must be some sort of improvement over at what was known by the authors in that book.

    Background of the application says “Current technology provides such a query recommendation service that is based upon analyzing each current query, but this technology does not always provide query recommendations that are relevant.”

    Assuming for the sake of argument that the first clause is true (somewhat of a leap), I also find it difficult to believe that any of the inventions *as claimed* improve on the “current technology” by providing 100% “relevant” results.

    Perhaps a claim that is limited to the specific algorithms set forth in detail in the application might represent a novel, non-obvious improvement (no evidence of this however). Of course, such a narrow claim would be deemed “worthless”, no?

  30. 59

    I’m glad to see that some here see the merit of an optional registration system that would require a re-examination before patent could be enforced. But for those who need immediate examination, I would simply end compact prosecution as we know it and provide any number of office actions/responses until the issues are resolved. However to protect the patent owner, I was still allow them to appeal after two rejections. But I would further add this:

    If the patent application has been pending in the patent office for three years and if the patent office has three times rejected the claims, I would offer the patent applicant the option of having his patent application go immediately into a pre-grant opposition conducted by a panel of three experienced examiners. The result of such an examination would be binding on the public with respect to all issues actually litigated or which could have been litigated.

    Binding.

    All issues and all known prior art.

    Food for thought.

  31. 58

    Fifteen years ago, I sat in a computing environment each day to work on patent prosecution matter. Here is what a typical day was like (from my diary).

    “Dear Diary, Today, I’m feeling OK. My patent matters are assigned via email and I save all such email so that I know what I have worked on and what I need to work on. I typically port some of my email search query strings and results to their own folder (“maintaining context information regarding prior search actions.”) Toady, I was assigned a new office action matter to work on (“receiving a current action.”) So, I checked some of the context information regarding prior seach actions I maintain to determine whether at least some of the context information is relevant to the current office action. Tonight, I plan to go to bed early.”

  32. 57

    Then you may have a serious indefiniteness problem, as I noted above.

    Subjectivity alone shouldn’t be cause for an indefiniteness problem. Pain is intensely subjective, yet we can use testing data to show that a drug is effective for the treatment of pain. Similarly, it should be sufficient to show that a study found that users preferred the results of image enhancement algorithm A to algorithm B.

    Again, there are an infinite number of algorithms for solving any problem. Are you proposing that all new algorithms non-obvious?

    No, I’m proposing that the obviousness of an algorithm is unrelated to its performance. For example, there are many sorting algorithms that take a certain amount of time to run. Knowing one does not make the others obvious any more than knowing about one macrolide antibiotic makes the others obvious. Even less so, since macrolides are all structurally similar, but many of these algorithms go about their business in very different ways.

    It would also eliminate a lot of patents that should never be granted, thereby eliminating the need for “design arounds”, which just wastes everybody’s time and money.

    Are you suggesting that all design arounds are a waste of time and money or that they lack a net benefit overall? The first is pretty indefensible, and the second is an empirical claim that I’d prefer to see hard evidence for.

    It’s certainly true if there was any motivation to use that known drug (or even a previously unknown drug with an obvious modification), it had better outperform in some manner what already exists to qualify for patent protection.

    And if there were no such motivation to use it? If it were unsuspected in the art that it could be useful in the treatment of the new condition?

  33. 56

    JD What if the problem to be solved is extremely subjective, like producing an aesthetically pleasing enhancement of a digital image? Or producing relevant search results?

    Then you may have a serious indefiniteness problem, as I noted above.

    So there is frequently a question as to whether algorithm X will work for its new purpose at all.

    Depends on what the new purpose is. Most the time the ‘new purpose’ that is stated in the specification is actually an old purpose. In most cases, it’s more accurate to say that algorithms do what algorithms do and those who know algorithms know what they do, regardless of the “purpose” to which the algorithm is applied. If there really is a “new purpose”, that question should be addressed in the specification and the data proving the problem is solved should be presented. And if it’s not there, the Examiner should be asking about it. This is how it works in the other art units …

    The best ones are all more or less equally fast, but the discovery of the first fast sorting algorithm did not render the later ones obvious.

    Again, there are an infinite number of algorithms for solving any problem. Are you proposing that all new algorithms non-obvious?

    that definition would eliminate the incentive for a lot of design-around effort.

    It would also eliminate a lot of patents that should never be granted, thereby eliminating the need for “design arounds”, which just wastes everybody’s time and money.

    Would you say that applying a known drug to a new condition is obvious unless the drug outperforms drugs already used to treat that condition?

    It’s certainly true if there was any motivation to use that known drug (or even a previously unknown drug with an obvious modification), it had better outperform in some manner what already exists to qualify for patent protection.

  34. 55

    Because when you understand algorithm X (which a skilled artisan does) and you understand the problem to be solved (which a skilled artisan does) there is never any question that algorithm X will “work” for its new purpose.

    What if the problem to be solved is extremely subjective, like producing an aesthetically pleasing enhancement of a digital image? Or producing relevant search results? Determining that a given algorithm works in such contexts requires testing and experimentation.

    Even purely deterministic, computational fields like weather simulation still require experimentation to determine whether a given algorithm works because there are too many variables and the results too sensitive to initial conditions for a skilled artisan to say a priori which inputs or algorithm will yield accurate results.

    So there is frequently a question as to whether algorithm X will work for its new purpose at all.

    The only question is: how fast and how effective. And if it’s not any faster or more effective than what’s out there, how can it be non-obvious

    That’s an odd definition of non-obvious. Non-obviousness is not contingent upon improved performance. New, non-obvious algorithms that only match existing ones are discovered all the time. For example, look at sorting algorithms. The best ones are all more or less equally fast, but the discovery of the first fast sorting algorithm did not render the later ones obvious.

    Also, that definition would eliminate the incentive for a lot of design-around effort.

    Would you say that applying a known drug to a new condition is obvious unless the drug outperforms drugs already used to treat that condition?

  35. 54

    A billon dollars wouldn’t necessarily address all of the ills of the U.S. patent examination process, but it would certainly help the USPTO address the systemic problems that have accrued by being deprived of funds “skimmed” by Congress collectively for 20 years now. I was in practice when Congress started this “skimming” nonsense back in 1990 as a measure to deal with “Budget Reconciliation” (like depriving the USPTO of say $100 million was going to help balance the federal budget). But the continuous “skimming” of funds by Congress has taken it’s toll as, for example, the USPTO has computerized systems which are, in large measure, antiquated, and which it can’t replace easily because there’s no funds for it.

    What you really have here is the “Perfect Patent Examination Storm” where deprivation of funding has been combined with other factors. One that’s not mentioned on this thread is the long term and continual mismanagement of the USPTO Other than David Kappos and Todd Dickinson, the Directorship of the USPTO has been a political patronage dumping ground, starting with Lehman. For example, Lehman squeezed off funding for keeping patent classification updated which is coming back to haunt the searching by patent examiners. But the true culprits here are Rogan and especially Dudas. Instead of managing the patent examination process competently, Dudas squandered most of the USPTO’s energy (and credibility with the patent bar) on those nonsensical rules packages which went nowhere (thank goodness). It would have been much better to have expended that “wasted” energy on some other aspects of the patent examination process (for example, permitting deferred examination which might have helped to get the some of the “shorter product cycle” applications up to the front of the examination line), as well as addressing the current “Final Action” practice which basically disfavors addressing the key examination issues early and essentially encourages the filing of RCEs which simply “clog up” the examination process.

    In fact, from what I can tell, Dudas was against the concept of satellite offices. Other than trying to keep the USPTO centralized (which isn’t necessary in our Internet world), I see no reason why not to have satellite offices, especially in that the USPTO is located in what is an extremely expensive (and congested) area of the U.S. to live in (having grown up in the the DC area, I know how expensive and congested it is). Satellite offices would provide a significant way to encourage those currently in (and those thinking about being part of) the examining corps making being a patent examiner a career (not simply a temporary stepping stone to what is viewed as another, more lucrative career) by offering locating in parts of the country which are less expensive and may be viewed as more desirable than the DC area. Simply reducing the high turnover rate of new additions to the examining corps would help make training productive (not a waste of resources) and build up the experience base of the corps.

    I realize what I’ve presented here is a simplification of what I view as the systemic issues in the U.S. patent examination process. But the combination of long term fund “starvation” (by Congressional skimming), continual mismanagement at the top (by Dudas in particular), the wasting of resources (e.g., the nonsensical rules packages), and the resistance to alternative approaches (e.g., satellite offices, deferred examination) has definitely created the “Perfect Patent Examination Storm.”

  36. 53

    JD Do evidence of commercial success, long-felt but unsolved needs, and the failure of others not apply in the software context?

    They certainly don’t apply in this context and, generally speaking, the factual scenarios where they would apply to software should be exceedingly rare. They are rare enough in fields where there are, in fact, many easily articulated and undeniable old problems (e.g., a reliable cure for disease X).

    If not, why is applying existing algorithms to solve a new problem different from applying existing drugs to treat a new condition?

    Because when you understand algorithm X (which a skilled artisan does) and you understand the problem to be solved (which a skilled artisan does) there is never any question that algorithm X will “work” for its new purpose. The only question is: how fast and how effective. And if it’s not any faster or more effective than what’s out there, how can it be non-obvious? Please remember that software is typically claimed like the space inside a shoe is claimed to fit into a shoe.

    Here’s a more interesting question: if someone from Microsoft is reading this thread and/or the Peer-to-Patent comment thread, do they have a duty to disclose the thread (or at least the comments germane to the application) to the USPTO? Seems to me that they certainly do, as the information in these comments is non-cumulative and could inform an Examiner’s decision regarding the patentability of the claims. This is certainly particularly true of the Peer-to-Patent comments. How could they not be disclosed in an IDS, unless they are cumulative? And if they are disclosed, then the Examiner (in theory) *must* read them, thereby nullifying the PTO’s assertion that the comments *may* be read by the Examiner.

    What are the chances that someone at Microsoft is aware of the Peer-to-Patent comments and/or the comments here? I’m guessing, oh, around 100%.

  37. 52

    The point is that it’s silly to talk about the PTO being “profitable” if we’re going to ignore the generally understood definition of “profit.”

    Never underestimate the power of the four horsemen to be silly. Ignoring that which is generally understood is a fine art. IANAE has no equal in the artistry of such.

  38. 51

    Malcolm, do you oppose method of treatment patents that claim using a known drug to treat a new condition?

    If not, why is applying existing algorithms to solve a new problem different from applying existing drugs to treat a new condition? The invention in both cases is the realization that a known tool (e.g. drug or algorithm) can be used to solve a known problem (e.g. disease or computation).

    So it seems that the only possibly patentable “invention” in that application would be [if] the specific algorithm used to generate the information…is unexpectedly effective in this regard relative to the algorithms in the prior art.

    In a well-defined problem, the effectiveness of an algorithm should rarely if ever be unexpected, although in a case like this where there are human factors involved it makes more sense to say, for example, that an algorithm produced output that was unexpectedly useful for human users.

    But I agree that it’s unlikely that Microsoft has data to support the assertion that their novel algorithm (if it is novel) produces significantly better results from the point of view of the end user. Maybe software patent applicants should start doing more user testing.

    But unexpected results is not the only secondary consideration, Malcolm. Do evidence of commercial success, long-felt but unsolved needs, and the failure of others not apply in the software context?

  39. 50

    Is that a new Graham factor?

    No, it’s the idea that unexpected results are required to rebut a prima facie case of obviousness.

    Computers detect user input (ancient). Computers store user input (ancient). Computers process user input (ancient). Computers output information in response to detected input (ancient).

    Computer outputting previously entered text was obvious when it was “invented” absent unexpected results. Computer outputting ads based on prior clicks (e.g., web purchases) was obvious when it was “invented” absent unexpected results.

    Unexpected results might be suprising speed or surprising accuracy of the output. This is how it would work if the software art unit examined applications like the other art units. But oh how the children will cry and scream when their dessert doesn’t come pre-chewed.

  40. 49

    They could book the revenue as soon as the applicant was no longer eligible for a refund.

    They could, but that wouldn’t be GAAP-compliant. You can’t turn advanced payments into sales revenue by simply adopting a no-refund policy.

    The point is that it’s silly to talk about the PTO being “profitable” if we’re going to ignore the generally understood definition of “profit.”

    But feel free to be silly.

  41. 48

    So it seems that the only possibly patentable “invention” in that application would be the specific algorithm used to generate the information (e.g., an advertisement) that is provided to a user in response to the user “action.”

    There are an infinite number of old algorithms that will achieve the function (providing a result deemed “relevant” to a user — a not-so-lurking indefiniteness issue there) so the prima facie case is met. The only way to rebut would be to show that the particular algorithm described in the application is unexpectedly effective in this regard relative to the algorithms in the prior art. Any guesses as to whether there is data on this point?

    LOL.

  42. 46

    From the spec: this search engine query log information, which includes the queries and clicks that the engine’s users have submitted over a long period of time, (e.g., one year), determines user actions that are likely related

    No confusion whatsoever that query log may include (but need *not* include) anyone’s prior queries or clicks, including the current user’s.

    The term “context information” is not defined and appears only in the summary of the invention (two paragraphs of hand-waving).

    Daily: The current action is described as “a query or click (or possibly a hover).”

    Like I said, any action that a user might take on a computer. The specification does not limit prior “actions” to “search queries” and distinguishes “queries” from “clicks” but importantly includes both “queries” AND
    “clicks” as “actions”. See, e.g., Summary referring to “a current user action such as a query or click” in the Summary section.

    Also just for laughs, there’s this from the spec:

    Moreover, while the examples herein are directed towards query recommendations, however it is understood that query recommendations encompasses the concept of advertisements. Thus, for example, the technology described herein may be used to return context-aware advertisements, instead of or in addition to what is understood to be traditional query suggestions.

    LOL. Been through this before but the concept of targeting a person with ads based on the persons prior behavior (which is all this is, by admission) is quite ancient. Corporate greed in the patent context knows no bounds. Oh, but I’m sure this is “just defensive” … because corporate greed in the patent context knows no bounds.

    James Daily the examiner (or judge issuing a Markman ruling) isn’t going to give a patentee something they didn’t actually invent, either. Well, they do sometimes

    Yes, they do sometimes. To be accurate, they do so every week, by the dozens, at least. Next batch to be dropped on us at midnight tonight.

    I notice that a certain “Stephen Weiner” has already posted some highly relevant and old prio art to the Peer to Patent website. Our trolls heads must be exploding.

    I like this.

  43. 45

    There’s a big difference between “described as” and “defined as”. If it’s “described as”, those are mere non-limiting examples. We all know the claims aren’t limited to the embodiment described in the spec.

    True, but the examiner (or judge issuing a Markman ruling) isn’t going to give a patentee something they didn’t actually invent, either. Well, they do sometimes, but they shouldn’t. I expect the claims will be narrowed to be closer to the examples in the spec, assuming killer prior art isn’t found.

  44. 44

    There are limiting definitions in the spec. Context information is described as

    There’s a big difference between “described as” and “defined as”. If it’s “described as”, those are mere non-limiting examples. We all know the claims aren’t limited to the embodiment described in the spec.

  45. 43

    Unless there’s a limiting definition to the contrary, *any* “context information” about a prior search that is accessed in response to *any* action infringes the claim and would thus also anticipate (or render obvious).

    There are limiting definitions in the spec. Context information is described as “queries and/or clicks from a user’s search history.” The current action is described as “a query or click (or possibly a hover).” And of course one also needs the use of the global query log.

    I don’t think I’m bending over backwards, just reading the claims in light of the specification to give a more accurate picture of the claimed invention, which is important if one is trying to find prior art. As I said before, I’m not claiming the invention is novel or nonobvious.

  46. 42

    To Cy’s point, but not to be cynical,

    I can think of 1.2 million reasons why booking advanced fees as actual revenue would be damaging to the current books.

    IANAE – please stop, your absence of business knowledge is making your typical witty remarks more like the witless remarks of the other three horsemen.

    Malcolm is looking for people to bend over, how typical. Moved right past the rye fields to a nice bed at the professor’s, eh Holden Mooney?

  47. 41

    But if the PTO were required to use Generally Accepted Accounting Principles, they wouldn’t be booking those search and examination fees as revenue when received, but when those services are actually performed.

    They could book the revenue as soon as the applicant was no longer eligible for a refund. So they’d have had one less profitable year at the start of the accounting, and then about the same result as from their cash accounting.

  48. 40

    So the detailed description suggests that it takes into account both the global userbase and the activity of the current user.

    Unless there’s a limiting definition to the contrary, *any* “context information” about a prior search that is accessed in response to *any* action infringes the claim and would thus also anticipate (or render obvious). Note that claim 1 does not require any output (oops).

    Claim 1, at least, seems dead in the water, as written, unless the last ten years of most of our lives are/were an undocumented dream.

    Anyone else want to bend over backwards to defend this p.o.s.?

  49. 39

    IANAE: Perhaps you could expand on your reasoning that an organization that collects money, pays all its expenses, and gives the positive balance to someone else year after year is not turning a profit.

    That sounds good. But if the PTO were required to use Generally Accepted Accounting Principles, they wouldn’t be booking those search and examination fees as revenue when received, but when those services are actually performed. I bet the PTO wouldn’t appear so profitable in that case.

  50. 38

    the functionality described in the claim is even more rudimentary than Google’s suggestions because it’s only looking at a single user’s history. As claimed, the method seems no different than any other “auto suggest” functions based on prior field entries, which have also been around for years and which were also never very exciting.

    Well, no, that’s not exactly right. There are three inputs: the query log of all user activity, the context of prior searches by the current user, and the current action of the current user. So if other users tend to go from searches for Paris->”Paris France”->”Hotels near Versailles” then if a user puts in Paris then “Paris France”, then the system will recognize the pattern in the graph and suggest “Hotels near Versailles.”

    So the detailed description suggests that it takes into account both the global userbase and the activity of the current user.

    It’s also different from prior field entries because those are only based on the one user and also tend to be pretty dumb. Usually the suggestions are just prior inputs listed in most recently used order. No context, only the most simplistic prediction.

    I note also there is nothing in the claims that plainly limits the context to the prior user’s search (as opposed to searches by others).

    It uses both. Read in light of the specification, “context information regarding prior search actions” is about the current user’s search history, the “query log” is about the search history of the entire userbase, and the “current action” is the current user’s current search.

  51. 36

    Not to suggest that the claimed invention is novel or nonobvious, but Google suggest does not seem to take into account an individual user’s history or the context of recent searches by that user.

    I note also there is nothing in the claims that plainly limits the context to the prior user’s search (as opposed to searches by others).

    Somehow I doubt that’s an accident.

  52. 35

    By contrast, Google does not do this. If I, logged in to Google, make a series of searches like “Paris France,” then Google will give “Paris Las Vegas” as the first suggestion.

    I guess I don’t use the function that much. But if anything, the functionality described in the claim is even more rudimentary than Google’s suggestions because it’s only looking at a single user’s history. As claimed, the method seems no different than any other “auto suggest” functions based on prior field entries, which have also been around for years and which were also never very exciting.

  53. 34

    Seems like Google and others have been doing that for several years, at least,

    Not to suggest that the claimed invention is novel or nonobvious, but Google suggest does not seem to take into account an individual user’s history or the context of recent searches by that user.

    The application gives the example of searching for ‘Paris.’ If the user has made other searches related to the city in France, then the search engine will suggest searches such as ‘Versailles.’

    By contrast, Google does not do this. If I, logged in to Google, make a series of searches like “Paris France,” then Google will give “Paris Las Vegas” as the first suggestion.

  54. 33

    That’s about what what we spend every *two days* on our combined wars in Iraq and Afghanistan.

    Sounds expensive. I bet there are more than 6000 overpaid, privileged public sector employees involved in that, and I’m sure they’re providing more than enough value to justify the cost.

    Actually, I’m not really convinced the government can handle such a big project any better than the private sector. I had some difficulty calculating the exact value added by the army, and discarding the military function would be one way to make that determination less difficult.

  55. 32

    In a computing environment, a method comprising:

    maintaining context information regarding prior search actions;

    receiving a current action; and

    accessing data obtained from a query log to determine whether at least some of the context information is relevant to the current action.

    Priority date is 2008. Seems like this claim would the method where a user is typing in a search and a POWERFUL COMPUTER BRAIN suggests some likely terms based on some prior searches.

    Seems like Google and others have been doing that for several years, at least, and it didn’t seem very exciting the first time.

  56. 31

    His $1B solution is not only unsupported, but its basic approach is wrong, and sadly seems to be the sole approach in today’s public policy toolkit.

    That’s about what what we spend every *two days* on our combined wars in Iraq and Afghanistan.

    But I’m sure you were out there with me protesting, right?

  57. 30

    I agree on the potential benefits of telecommuting in the private sector, but I see no reason to believe that the public sector could implement it, or anything for that matter, with equal success.

    The level success of success does not have to be equal in order for the program to be worthwhile. Anyway, there’s substantial empirical evidence that it would work, as it has been implemented on various scales at various government offices (including the PTO).

    link to aei.org

    I don’t think it’s helpful to compare PTO employees to other federal employees, the vast majority of which are over-compensated themselves.

    Alright, can you show that the support staff at the PTO are overcompensated compared to private sector equivalents? I need something more solid than hand-waving about overcompensated federal employees.

  58. 29

    James-

    I don’t think it’s helpful to compare PTO employees to other federal employees, the vast majority of which are over-compensated themselves.

    I agree on the potential benefits of telecommuting in the private sector, but I see no reason to believe that the public sector could implement it, or anything for that matter, with equal success.

    I’ll leave this thread to die–unlike the privileged, those of us in the private sector actually have to do some work.

  59. 28

    I think if retention were improved we’d see a lot more value for the money.

    I believe IBP’s proposal to fire them all would also solve the retention problem.

  60. 27

    Michel’s $1B proposal was directed at funding the PTO, which is why I’m discussing things from a PTO-centric perspective.

    Here’s the strange thing about how public agencies and the public sector in general operate:

    If there were no further applicants as of today, attorneys and agents would cease to exist, but the PTO would continue to exist for quite some time, as did the lamplighter corps.

    Even if the PTO were miraculously shut down, the “employees” thereof would not be dismissed, they would either be offered buy-outs, or would be re-assigned to perform other public sector activities. The costs of maintaining the public sector would remain the same, or even grow, owing to the transaction costs that would result from the transition.

    The other “costs” you mentioned are red herrings, too remote to be efficiently included. They are in no way analogous to total employee compensation.

    “Every possible inconvenience”? Almost. The only “inconvenience” that would be exempt would be that resulting from a genuine dispute between an applicant and the PTO on a material issue.

  61. 26

    I look at it this way. If Superman is real. Those Claims should have been denied. And if it was real, then it was on purpose. And only one Application was neccessary. And the Art in the Patent should have been corrected. North South East West. It’s all the same it was the best.
    Is that why the Art was changed? Or Superman fell from the sky? I was represented. it wasn’t my JOB!

  62. 25

    Again, I don’t care what examiner pay is, specifically–the question is one of value, to which total examiner compensation should be rationally related, as should the total compensation of all public-sector employees.

    I think if retention were improved we’d see a lot more value for the money. (True, examiner pay would go up with experience, but that’s in fairly small increments compared to base pay). With upwards of 80% of examiners having less than 3 years of experience, it’s not surprising that value for the money is low.

    The (in)experience level of the great majority of examiners is at historically high levels, which suggests it may be related to the present perception that examination quality and value for the money are suffering.

    link to patentlyo.com

    I believe that retention could be improved in ways that may actually save money. Companies that have expanded telecommuting programs have found that they’ve saved non-trivial amounts of money. Last year Cisco estimated that it saved $277 million through its telecommuting strategy, mostly through increased productivity (i.e., value for the money).

    link to newsroom.cisco.com

    Admittedly, as a networking company Cisco has an interest in promoting the value of telecommuting, but other companies have also had substantial success with it. To save space: citations available on request.

    It’s not just examiner pay, it’s also all the support staff required to support the PTO operations.

    I was not aware that PTO HR staff, administrative assistants, maintenance workers, IT workers, etc were paid significantly more than people in similar positions at other federal agencies. Is this the case?

  63. 24

    Applicants/litigants have a range of options when it comes to agents or attorneys–not only can they choose the level of service, they can choose the level of expertise, and the level of involvement.

    Oh, so the $20k is the applicant’s fault. Hardly seems fair to require the PTO to deliver value for it, then.

    It is hard, but applicants perform the calculus every time they decide to engage someone, and every time they manage that engagement.

    Do you think so? Do most applicants truly do the math and believe they’re getting that value every time they retain an agent? And if so, what’s the problem? How can the PTO be to blame for not providing value if applicants believe their patents are worth the cost?

  64. 23

    Applicants/litigants have a range of options when it comes to agents or attorneys–not only can they choose the level of service, they can choose the level of expertise, and the level of involvement.

    It is in this way that they can begin to align their costs with the perceived value contributed by agent and attorney services.

    It is hard, but applicants perform the calculus every time they decide to engage someone, and every time they manage that engagement.

    The only option to a potential applicant insofar as the PTO is concerned is whether to apply or not. PTO incompetence can impose many costs upon an applicant, that appear as “attorney fees”–but the applicant’s resulting range of actions lies outside the PTO, at the level of representation they want to pay for, and NOT AT ALL WITHIN THE PTO.

    So, again, the necessity for agents and attorneys is occasioned by the PTO examination paradigm. Agent and attorney costs ARE PTO-imposed costs, over which the applicant has only some control at the representation level.

  65. 22

    What about the costs associated with the time required to actually perform the tasks, and the time required to gain the background knowledge to even begin to navigate the regulatory maze, dovetailed with the legal background to understand and make a decent shot at predicting the effects of your action and inaction?

    Agents charge for doing that, right? Do you think they give good value for their $20k? I should hope so, since pretty much all the regulatory and legal complexity is an attempt to rein in the agents and litigators who constantly try to game the system.

    Or is this still the part of the discussion where every possible inconvenience associated with patent prosecution is the PTO’s fault? What’s the cost of the slightly elevated risk of a heart attack that I get from every rejection? What about the stress of dealing with my client who doesn’t know very much about patents? Does the PTO provide enough value to make up for that?

  66. 21

    “THAT is why the solution lies with changing the current public sector.”

    Wait wut? How’re you going to do that?

  67. 19

    “The PTO is only the vehicle for collection”
    You’ve got to be kidding. Now we know what the problem is as far as your concerned. They are looking at the Application. They are just collecting money.

  68. 18

    IANAE–

    Do you think that there are no costs to prosecuting pro se?

    What about the costs associated with the time required to actually perform the tasks, and the time required to gain the background knowledge to even begin to navigate the regulatory maze, dovetailed with the legal background to understand and make a decent shot at predicting the effects of your action and inaction?

    You make the mistake of focusing on prices and expenses rather than costs.

    As to the rest, the PTO does not directly bear all of its costs, and there is no evidence that there would be any “positive balance” remaining once the excluded negative externalities were included.

  69. 17

    The thorny question is how to assess that value. Discarding the examination role is but one mechanism of many that make such a determination less difficult.

    Surely, one could make the same statement about the patent agency role, or the patent litigation role. Assessing its value is hard. Let’s go shopping.

  70. 16

    James–

    It’s not just examiner pay, it’s also all the support staff required to support the PTO operations.

    Your qualification for the expense as being for “a [current] public sector job” is exactly right. THAT is why the solution lies with changing the current public sector.

    Please don’t just throw up your hands and concede that “as long as we have an examination system, examiner pay is going to have to be pretty high.”

    Again, I don’t care what examiner pay is, specifically–the question is one of value, to which total examiner compensation should be rationally related, as should the total compensation of all public-sector employees.

    The thorny question is how to assess that value. Discarding the examination role is but one mechanism of many that make such a determination less difficult.

  71. 15

    Ascribing attorney-related prosecution costs to the PTO is fair. Those costs are necessitated by the patent examination paradigm represented, and in some cases promulgated, by the PTO.

    That’s ridiculous. The PTO has to justify its own fees. It’s entirely possible to prosecute a patent pro se. Of course, you might get a better patent if you get an agent, but it’s then up to that agent to demonstrate that he adds $20k-ish of value to the patent you could have gotten much more cheaply on your own.

    I’d like to respond to the rest of your post, but I can’t make much sense of it. Perhaps you could expand on your reasoning that an organization that collects money, pays all its expenses, and gives the positive balance to someone else year after year is not turning a profit.

  72. 14

    IANAE–

    Your last post become increasingly incoherent.

    Ascribing attorney-related prosecution costs to the PTO is fair. Those costs are necessitated by the patent examination paradigm represented, and in some cases promulgated, by the PTO.

    When the real costs of the PTO are all included, the PTO charges WAY MORE than $20k. Remember, it is the government that imposes the costs, the PTO is only the vehicle for collection. The applicant incurs some of the costs through his or her own action–but even if all applications were to end today, the bulk of “PTO-related” costs would remain.

    As for the rest of your post, it is bizarre. Whether an examination or registration system, the “value to society” is not only the disclosure (which would be the same in both cases), but the value to the patentee, who is a part of society. That is why I said value to the patentee, not to society–it was more concise.

    Again, no money is taken “from the PTO”.

    Turning a profit? HILARIOUS!!!!!

    I think you miss some of the larger contextual ideas of the PTO as a public agency.

    THINK, IANAE. Can you tell me the actual net present cost of the PTO to “society”, and itemize and explain the costs?

    Remember, as it is now, all the intangible “benefits” conferred by the current examination-based PTO would remain the same in a registration-based PTO.

  73. 13

    What I DO know is that PTO employees, on the whole, are insanely overpaid for the work they do, and that by far the main expense of the PTO is represented by its personnel costs.

    I think the main reason the pay is so high is that it has to be in order to attract and retain technically skilled workers with decent reading & writing skills to a public sector job in an inconvenient location.

    Of course, retention rates are terrible despite the pay, so the Office is going to have to experiment with something else. Telecommuting, satellite offices, a fundamentally different examination structure, something.

    I would agree with you that there is probably a lot of merit to a registration system, but as long as we have an examination system, examiner pay is going to have to be pretty high.

  74. 12

    Say arguendo that an average prosecution cost is $20k,

    The PTO doesn’t have to deliver $20k worth of value. The PTO doesn’t charge anywhere near $20k. Besides, people are lined up out the door to get US patents, so clearly they see $20k worth of value in them. The problem is the PTO’s capacity to deliver them as quickly as they are requested, which is one of the major factors in the “value” of the patent. Though actually the delay itself is the value in some fields, so they would presumably be dead set against funding the PTO.

    I think that many court-related costs are occasioned by ineffective PTO action.

    I think that many court-related costs are occasioned by litigators having a big budget and being willing to grasp at any straw that might win the case for their side. But also, to the extent the PTO is ineffective, that can be solved by paying a competitive wage that attracts and retains competent people, paying for adequate training for said competent people, and giving said competent people enough time to do a proper job examining a case. All of which costs money the PTO doesn’t have. Of course, they’ll still inevitably miss something here and there, because they’re humans who don’t have five million dollars to spend per patent, and that oversight will inevitably come up in court, and it will just as inevitably become the poster boy for how the PTO should make do with no resources because it’s generally incompetent and useless anyway.

    All you really get for your $20k is the presumption of validity–i.e. you can fire the first shot and someone else has to respond.

    And even that is under attack.

    That’s not actually under attack.

    I’m almost in the camp that argues that a simple disclosure and registration system would best the current “examination” system.

    I’m almost sure it would represent greater value to patentees.

    I’m sure it would represent much greater value to patentees. They’d get broader patents quicker and with flimsier specs, and they’d be able to sue a lot more people. It just wouldn’t represent much value to society, which is actually the main purpose of the patent system.

    Why isn’t a proportionate share of the nation’s total debt attributed to the PTO’s current balance sheet,

    It is. Look under “money arbitrarily taken from the PTO for the government to spend as it pleases”.

    Self-supporting, yeah, right.

    Prove it.

    It continues to exist, despite having large sums of money taken from it every year. That’s not only self-supporting, it’s self-supporting and turning a profit. But actually, the PTO’s position is that it could support itself much better if it kept all the money it collected, since subsisting on the money it collects is kind of the definition of being self-supporting.

  75. 11

    Also, are all employee-related costs included directly within the PTO budget?

    For instance, are 30 years of pension and health benefit payments included?

    Nobody ever even mentions the convenient externalization of certain costs.

    Why isn’t a proportionate share of the nation’s total debt attributed to the PTO’s current balance sheet, and why isn’t a proportionate share of debt repayment and servicing costs taken off the PTO’s “bottom line”?

    What is the real net present cost of the PTO???????

    Self-supporting, yeah, right.

    Prove it.

  76. 10

    The “solution” to PTO problems does not lie within the PTO itself.

    Public-sector-wide reforms are required.

    $2.322B are the projected PTO FY 2011 fee collections, including the effects of an interim fee increase. This number, in isolation, is meaningless, as is the net remaining after transfers.

    The question is one of VALUE. The best way to assess value is by looking at precisely what an applicant gets for their money, how much they pay therefor, and what it takes the PTO to deliver said value.

    Say arguendo that an average prosecution cost is $20k, not including any court actions.

    What do you get? Some claims, a presumption of validity thereof, and the right to invoke the jurisdiction of the federal courts to resolve disputes relating thereto.

    Of course, exercising said rights costs a bundle of money. I think that many court-related costs are occasioned by ineffective PTO action.

    So, you get some claims that have to be essentially re-examined through Markman, and oftentimes actually re-examined through PTO re-exam proceedings.

    All you really get for your $20k is the presumption of validity–i.e. you can fire the first shot and someone else has to respond.

    And even that is under attack.

    And the actual total cost can include other costs like the time required for prosecution, and the costs related to disclosure preceding grant.

    I’m almost in the camp that argues that a simple disclosure and registration system would best the current “examination” system.

    I’m almost sure it would represent greater value to patentees.

  77. 8

    The funds are not “theirs” in the first place.

    So they can’t keep what they collect, they shouldn’t ask for more, and they should quit complaining because they’re overpaid as it is?

    Their biggest expense by far is personnel costs, and their biggest problem is that they don’t have enough personnel or enough budget to pay more personnel. How is more money not the answer? If they’re expected to work with what they have, wouldn’t they work better if we gave them a bigger envelope?

    Maybe they should just stop “insanely overpaying” their current personnel. I’m sure a lot of economies can be realized that way. What’s an experienced examiner make these days? About half what a first year associate makes in a big firm?

  78. 7

    IANAE–

    Nobody is “taking $1B from the PTO”.

    The funds transferred are taken from applicants, and the PTO is simply the intake mechanism.

    You make it sound like the practice is somehow “unfair” and “inequitable” to the PTO.

    The funds are not “theirs” in the first place.

    The PTO gets what it gets, and is expected to work within that financial envelope. In effect, transfer payments were never inside that envelope, and cannot be said to be “taken from the PTO.

  79. 6

    By the way, Cy, I didn’t say “patent-related issues”, as you have misrepresented.

    I said “PTO problems and potential solutions”.

    There is a big difference.

  80. 5

    Cy–

    Michel’s comments potentially have value where the functioning of the CAFC and federal judiciary in general are concerned. Maybe.

    The particular suggestions he makes must be examined and analyzed.

    His $1B solution is not only unsupported, but its basic approach is wrong, and sadly seems to be the sole approach in today’s public policy toolkit.

    I don’t know if the PTO is underfunded or not, but the case Michel makes is totally unconvincing. What I DO know is that PTO employees, on the whole, are insanely overpaid for the work they do, and that by far the main expense of the PTO is represented by its personnel costs.

    It’s not JUST the PTO, but the entire public sector as a whole, including the CAFC.

    It is Michel’s type of mentality that has landed us in the current situation. To follow his lead would be to commit the same type of error, only on a larger scale.

    Michel himself has declared that he is “on the warpath”.

    He’s not the only one.

  81. 4

    Paul Michel is an insider. He comes from a civil service background. He was so deeply enmeshed in public-sector prerogative that he has no worthwhile perspective to offer on PTO problems and potential solutions

    I think I’m beginning to get it now. Academics are unqualified to discuss patent-related issues because they don’t prosecute patents. Civil servants actually involved in running the patent system are unqualified, apparently because they don’t prosecute patents. Federal Circuit judges are unqualified to discuss patent-related issues because they don’t prosecute patents.

    It appears that the only person actually qualified to have an opinion on patent-related issues is IBP.

  82. 3

    Once again we have Paul Michel, advocate for the “throw money at the problem” solution to PTO inadequacy.

    To be fair, taking nearly a billion dollars from the PTO hasn’t helped any, and predictably so. Why is it unreasonable to try the opposite for a change?

    It’s not like Congress holds on to its billions so tightly. Maybe the PTO should have asked for $130 billion and called it a bailout. It’s too big to fail, after all.

  83. 2

    Once again we have Paul Michel, advocate for the “throw money at the problem” solution to PTO inadequacy.

    He still cherishes that nice, round, $1B figure.

    Paul Michel is an insider. He comes from a civil service background. He was so deeply enmeshed in public-sector prerogative that he has no worthwhile perspective to offer on PTO problems and potential solutions.

    The mentality that he has demonstrated IS the problem.

    Take that first valuable step to a real solution Paul, and disappear from PTO policy-level discourse.

  84. 1

    link to springerlink.com

    Frontiers of WWW Research and Development – APWeb 2006
    Lecture Notes in Computer Science, 2006, Volume 3841/2006, 437-448, DOI: 10.1007/11610113_39
    Mining Query Log to Assist Ontology Learning from Relational Database

    Jie Zhang, Miao Xiong and Yong Yu

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