Patently-O Bits & Bytes

By Lawrence Higgins

Upcoming Events:

  • Judge Timothy Dyk will give a lecture on the commercial impact of complexity and confusion in patent law at the Lewis and Clark law school on March 1. [Link]
  • Berkeley Center for Law and Technology is hosting an event entitled “Beyond Piracy in the New China” on March 10. [Link]
  • 13th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy will be held in Akron on March 21. Guest Speakers include Donald Chisum, Judge Paul Michel, and Marybeth Peters. [Link]
  • The University of Dayton School of Law will be hosting a symposium entitled “Killing the Golden Goose: How Today’s Innovations in the Patent System are Harming Innovation Itself“. The guest speaker is Professor F. Scott Kief. [Link]

USPTO Unveils Details of Fast-Track Patent Option

  • USPTO plans to offer accelerated patent examinations for an extra $4,000 fee. Under this option, applications would be processed within a year of filing. Currently it takes the USPTO roughly 2 years to initiate its first office action. [Link]

Supreme Court will hear Global-Tech Appliance v. SEB S.A.

  • On February 23rd the Supreme Court will hear oral arguments in Global-Tech Appliances v. SEB S.A. [Link] The question presented is, whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. § 271(b) is “deliberate indifference of a known risk” that an infringement may occur, or “purposeful, culpable expression and conduct” to encourage an infringement. [Link]

AT&T, Sprint, T-Mobile, Verizon, and MetroPCS has been sued by Sourceprose

  • Sourceprose has filed suit in the Western District of Texas alleging that the above companies infringed on patent #’s 7,142,217 and 7,161,604. The complaint contends that the defendant’s infringed on claim 1 of both patents. The technology is a mapping technology used in smartphones.

Google ask USPTO to reexamine 4 patents

  • In August 2010, Oracle sued Google for infringing seven of its Java patents. [Link]Google has asked the USPTO to reexamine 4 of the patents in suit. The patents are 5,966,702, 6,061,520, 6,125,447 & RE 38,104 – related to the Java platform. [Link] The alleged infringing technology is Google’s Android operating system for mobile phones.

Supreme Court will hear Microsoft v. i4i

  • On April 18th the Supreme Court will hear oral arguments in the important case of Microsoft v. i4i. [Link]The issue in the case is, whether Microsoft is required to prove invalidity of i4i’s patent by clear and convincing evidence. [Link]This case could change the way patent law is currently practiced, if the standard is changed from the clear and convincing evidence standard. [Link]

Patent Jobs:

  • HP is seeking an attorney with 1-10 years experience in patent prosecution. [Link]
  • Infinity Pharmaceuticals is searching for a patent agent with 2-5 years experience in the pharmaceutical field to work at their Cambridge location. [Link]
  • Amneal Pharmaceuticals is seeking a Director of Global Intellectual Property to work at their New Jersey location. [Link]
  • Wenderoth, Lind & Ponack is seeking an entry-level patent attorney with a BSEE. [Link]

81 thoughts on “Patently-O Bits & Bytes

  1. 81

    TR – You see nothing of what I want cause ya keep on throwing out the lame and trite plays of the anti-software patent playbook.

    I done tol you – come up with some new chuckles, OK?

  2. 80

    I see ping, you want the government to enforce the laws if it makes you money but NOT enforce the laws to the point where the ridiculousness of them starts to undermine their legitimacy and heads towards not making you money.

    I think this goes by the name of crony capitalism.

  3. 79

    Not to mention that every developer that doesn’t do as above is induced to either retire from their profession or break the law.

    You love the laws are they are ping, the above is just a plain fact stated in plain language.

    What are we to think of a regime which forces upon its practitioners the choice of either ceasing or breaking the law? These laws criminalize software development and make each software developer a criminal.

    Nothing wrong here, folks, just a lot of malcontents who don’t want to obey the law that’s all.

    Can you say “a government captured by special interest”?

  4. 78

    Will that be cash or check, ping.

    That depends on your credit standing Ol chap.

    Seriously though – you make some fatal errors of logic in ASSuming “So in order to write software and not infringe, developers must inspect source code for infringement before they compile and run source code on their own machines, irrespective of the non-commercial or commercial nature of their endeavor.”

    Do you even know what “a matter of law” means? Or have you been fed too many Techdirt articles on the evils of patents?

    And let’s not forget that many of the basics that you claim “as a matter of law” that will infringe, may be such simple things as to have long ago passed into the collections for all to use that your other unspoken premise that software writing cannot be undertaken without breaking the law is pure crrp.

    Likes I said – TR – ya quotin from teh old playbook of anti-software patent propagandatists – Weza want new chuckles here – not the same old retreads.

  5. 77

    Let’s see ping since you are interested in the law, let’s apply it to our situation. Just the law as it is, nothing more and nothing less.

    It’s a matter of law that infringement of a patent occurs even if said infringement is for private use only.

    So in order to write software and not infringe, developers must inspect source code for infringement before they compile and run source code on their own machines, irrespective of the non-commercial or commercial nature of their endeavor.

    That’s a matter of law.

    So let’s see what that entails.

    IP lawyers get between 200 and 1000 an hour.

    The average source code for a non trivial program contains at least 300k lines of code.

    Any two of them constitutes a unit of functionality, (creation / execution/ assignment / invocation) and could infringe any patent.

    For this reason, it’s necessary to have an attorney preview all such code BEFORE compiling, less infringement should occur.

    Such patent searches typically take a weeks worth of time.

    This is just the law as it’s written and intended. Nothing more and nothing less.

    So let’s do the math.

    *300k lines of code. 150k pairs of lines.

    *300.00 an hour, 8 hours a day 5 days a week.

    *1 week of patent research = $12,000

    *1 week of research for every 2 lines of code = 150,000 weeks development time.

    *$12,000 a week for three thousand years == 1,800,000,000.00

    Will that be cash or check, ping.

  6. 75

    Maxi,

    Always happy – what with the wagons O chuckles ya be bringin – even this new guy TR with the same old tired anti-software patent arguments be chuckles in how they simply miss the legal mark. It’s a regular hootananny.

  7. 74

    I LOVE the smell of napalm in the morning, TR, but if as you say, you’ve reads my posts, then yous know Homey don’t do answers. But hey – look on the bright side – my observations be so accurate even King Kappos be quotin them.

    And TR – your homily be nothin but empty, wishful thinking. As I done pointed out, ya want the law (the US law) ta change, well ya gotta do better than the empty preachin ya been doin from the typical anti-software playbook, cause that crrp just dont cut it.

    And Sunshine – If ya call your windmill hunting “proof”, you done been hit by too many blades to realize just how foolish ya be. But keep huntin those Windmills safely from the blog position and let another 15 years go by or so before ya actually try to do somethin more meaningful than be otch on blog message boards.

  8. 73

    ping,
    If you actually read your own posts, they’re full of accusations without substantiations. I’m this, I’m that, my arguments are this, they’re that.. this is just empty name calling.

    Shooting blanks? Empty gun? Why not really school me as you imply you could do since you seem to like the smell of napalm in the morning…..

  9. 71

    The proof is in the pudding, pingaling — you know, the pudding that the USPTO dishes out every Tuesday morning.

    Lord knows I’ve spoonfed you often enough but all you ever do is cry in your highchair, bang your plastic spoon, and gum your oatmeal cookie: link to archwaycookies.com

  10. 70

    Did I write “direct applications” ping? There you go again, lecturing. No (yawns), I surely won’t forget. Happy now?

  11. 69

    have to contend with patent examiners who actually apply the law during examination.

    As Sunshine is so want to say, “Cite please” or it aint real.

    O that’s right – you be still waiting for some white knight to rescue the fair damsel of the law as it “IS” and change it to how you think it should be. Buckets of Chuckles Sunshine.

    Poor poor baby Malcolm – it appears that your “grown-up” reference falls to an opposite day program.

    Maxi,

    Don’t forget that your EPO-PSA applications still must be applied appropriately under the different legal regimes. US Law aint the same, and direct applications of your beloved mantra may liekely run afoul of actual law.

  12. 67

    Terry, the EPO uses its own invention, its “Problem and Solution Approach” to analyse whether something within the ambit of a claim is obvious. It has been doing so now for 30 years. With 1000+ Board of Appeal Decisions per year illustrating it, the PSA is very well understood by European Patent Attorneys, who therefore can tell you whether your claim will be found obvious at the EPO.

    But beware. Outside EPO circles, patent practitioners hear the word “problem” and the word “solution” and suppose that they then know and understand EPO-PSA. They don’t. but that doesn’t stop them rubbishing it. They’ve been at it also for 30 years. No success so far. But they keep trying.

    Meanwhile, watch how the Examiners at the USPTO increasingly borrow argumentation on obviousness from the internet-accessible EPO files of the EPO patent application which is the sister of the one under examination at the USPTO. EPO-PSA: it’s coming to a theatre near you, and soon.

    I imagine you can get a fair summary of EPO-PSA out of Google (but, like driving a car, reading how to do it and actually doing it are two different things). In addition, there’s a 400 comment thread on this very blog, about three years ago, all about EPO-PSA. Happy reading.

  13. 66

    Terry said Maybe readers are already familiar with this entity. There is a company which is constituted thus: a bunch of creative types sit around in a room with legal types and kick around ideas for imaginary software products. The lawyers indicate when someone has said something patentable, and they set about to patent it.

    This is not true only of software, as ping recognized. What ping failed to recognize (of course) is that only software applicants end up with granted patents after this sort of exercise. The grown-up art units, in contrast, typically have to contend with patent examiners who actually apply the law during examination.

  14. 65

    late riser – it seem that you have an unnatural taste for “golden showers”. If the stability you reference is that my observations accord with the law and with reality, well, that is quite the benefit.

  15. 64

    Eerything that you have said about software patents can be applied with only minor variations to any other ares of patenting.

    You also have compeltely disregarded any discussion of law in your lovely homily.

    The patent people, it appears, have no lock on the self-referencing argument, as you use it in quite the mirror fashion.

    The only problem you have with your “policy” is that you lack law. That and your “facts” are misapplied to fit your policy.

    As they say: svks to be you.

  16. 63

    Oh, good, some more “golden showers” from ping. With all the unrest in the world, it’s nice that there’s some stability here on Patently-O.

  17. 62

    Max Drei,
    How does the EPO determine “obviousness” that is different from the US? Besides the obvious, which is, they bother to try.

  18. 61

    MaxDrei,
    If FlightPrep filed with the EPO I am not aware of it.

    If we can have one simple rule, common to both chem/bio and to engineering (which we have, in Europe) why can’t we keep it equally simple, between different branches of engineering?

    Software code is a machine. It’s an algorithm which causes a virtual machine- the executing code – to manifest on a literal machine, the computer.

    If it were a chemical process, it would be reagent A of this specific composition reacts with reagent B of this specific composition to produce reaction C of this specific chemical makeup.

    But with software patents, it’s as if ti doesn’t matter WHAT reagent A B or C was, how they were combined or if they were even present, What is patented is just the end result.

    I cause (somehow, anyhow, over the internet or similar means of transmission) files to be transfered to a database at time A and at a later time B those files are retrieved from the server and used for this useful purpose. Bang! Patented!

    It’s as if you have only to show that a common sequence of events such as programming languages were created to facilitate is useful and you’ll be awarded a patent on it if no one has gotten around to doing this particular useful thing before.

    Never mind there’s no societal value being offered by the patent in terms of “revealing the mystery”. It’s a private value to the patent holder that’s achieved and a public burden on everyone else.

    I am sorry i don’t have the reference. Maybe readers are already familiar with this entity. There is a company which is constituted thus: a bunch of creative types sit around in a room with legal types and kick around ideas for imaginary software products. The lawyers indicate when someone has said something patentable, and they set about to patent it.

    Every waking moment of every developer’s life is spent doing something creative enough to patent. If patents had zero cost to obtain, there would be tens of millions of them. What does it say about a system and definition of IP that the only thing keeping it from imploding under it’s own promiscuity is the expense of procurement? Specifically, what does it say about the nature of what is being patented? That were it not patented, it would flow out of people like water from a stream.

    Did you ever see Terry Gilliam’s movie Brazil? In that movie, the world is over regulated in the extreme. There’s a character who, like Robin Hood, goes to people’s houses disguised in a mask since what he’s doing is illegal, and fixes their casual household problems. The homeowners could do it themselves, but alas, the state has imposed itself and its schedule of fees and thus created a wholly useless form of “economic activity”. How is this different from software patents? Yes, companies will pursue them, (or be forced to be competitors) and this proves what exactly?

    What’s the point of patenting again? To make money for a narrow group of individuals in society at the expense of everyone else- imposing a tax that serves no useful purpose- or to promote technological progress which would otherwise be withheld from society?

    What I see here is to a certain type of ideologue who equates private profit with technological progress through the specious claim that absent not profit itself but profit derived through patents specifically, no progress would obtain. Profiting through patents is synonymous with technological progress, therefore patents are needed everywhere. This is self-referencing argument.

    Apparently the existence of markets in which that has been shown not to be true is not sufficient evidence for such people. One wonders what sufficient evidence might look like.

  19. 59

    Sunshine,

    There you go again with your anti-money schtick.

    You really should consider moving to a country that agrees with you. I hear that North Korea is looking for good comrades like you.

  20. 58

    t tiresome lecture from ping

    Maxi – its only tiresome cause you still don’t get it. Ya might try actually listening to it and Iza wouldn’t have to repeat it every time you make the same (tiresome) mistake that you make.

    And youse knows what I mean by Gold Standard – I have asked you many times why the US is better but you never answer (and you dont even have a no answer policy). It be plainly evident that you want to change any part of US patent law that makes the US patent better than the EP crrp cause the US patent is your competition.

  21. 57

    The Flash of Genius mindset is insidious enough as is.

    No less insidious than the current “flash of dollar signs” test.

  22. 56

    Terry, as to that tiresome lecture from ping, it’s not Europe’s fault that the USA still decides obviousness with a subjective test.

    The EPO does it objectively. The US could too, as soon as it has a mind to.

    But I think it suits the US patent litigation community, to keep it subjective. I think that’s what ping means, with his “Gold Standard”.

  23. 55

    Maxi,

    We can all agree on that.

    If ya didn’t catch the drift the correct response would be a resounding No, we can not all agree on that.

    There are huge differences between triviality and obviousness. If the blimy in you wants to make that mistake, that’s one thing – the law here in the US is quite a different thing. I would observe that back in ’52 Congress was so peeved with the Supreme Court O the day (led by the most virulent anti-patentist Douglas) that they specifically amended the law to eliminate the “Flash of Genius” mode of thinking about patents. Triviality (as opposed by true obviousness) lay in that same vein. Triviality lay in someone’s subjective feeling that the particular invention isn’t “important” enough – notwithstanding that it fully meets any and all other legal requirements.

    Draggin the C&C debate into this clearly (even obviously) only serves to muddy a distinction that should be kept clean and crisp. The Flash of Genius mindset is insidious enough as is. As it is, your respectful suggestions only be code for how the attack on the Gold Standard US patents be orchestrated.

    Ya really should try to keep your legal thoughts correctly labeled. After all, this be US law we be discussing and good Ol TR with no legal legs to stand on merely wants to bite our kneecaps.

  24. 54

    ping prompts me to add another comment Terry. you write:

    “…the technological progress to be awarded a patent has to be of a sort that, had its workings not been made clear through the declarations found in the patent, the world would be deprived of the knowledge of how to achieve its ends and thus technological progress stymied. In other words, the invention is non-trivial.”

    We can all agree on that. That is how the “non-obvious” test came into being, more than a hundred years ago. You say “trivial” and I say “obvious” and we mean much the same thing. If there is a hint or suggestion of the invention in the state of the art the claim is obvious and so, invalid.

    Perhaps your lament is that the courts in the USA don’t know “obvious” when they see it. But folks like you ought to be able to help there.

    Or is your complaint that issued claims stay valid till somebody comes up with evidence of triviality that is so comprehensible to a jury, so clear and convincing, that it will be minded to tell the world that USG and its expert PTO got it wrong? No other country on earth puts esoteric decisions on patent validity in the rustic hands of a jury. No other country on earth requires proof of invalidity at any higher standard than the normal “preponderance” level applicable in any other civil dispute on earth. Concentrate your fire on these issues, I would respectfully suggest.

  25. 53

    Terry, we need to get our premises tuned to each other. By “software patent” I mean a “computer-implemented invention”. I want no sui generis rule for inventions implemented in code. I want them to be judged like any other invention up for examination at the PTO. If we can have one simple rule, common to both chem/bio and to engineering (which we have, in Europe) why can’t we keep it equally simple, between different branches of engineering?

    As to FlightPrep, what does the member of the patent family issued by the EPO claim? I bet you the Euro-patent is alive and well and covers the contribution to the art (but no more). Give the US patent number and let’s see.

  26. 52

    In the actual law, is the “triviality” section next to the “flash of genius” section, or next to the “Nobel Prize” section….?

  27. 51

    Max,
    Sorry I did not see the post directed at me.

    The purpose of the patent system is to encourage technological progress, not financial engineering.

    And not the success of any present day company. A system that becomes an instrument of any particular corporation or corporations is practicing crony capitalism, where corporations capture the government and use it to create laws that favor their continued dominance or business methods.

    So, software that creates a technologically more advanced computer should be recognised as patentable (just like anything else that achieves technological progress), the rest not.

    I disagree with that and here’s the reason why: the technological progress to be awarded a patent has to be of a sort that, had its workings not been made clear through the declarations found in the patent, the world would be deprived of the knowledge of how to achieve its ends and thus technological progress stymied. In other words, the invention is non-trivial.

    The government is under no obligation to issue patents for innovation if there are less market intrusive ways available to promote that same innovation. One way that has to be counted as less intrusive is -do nothing. Doing nothing does not decrease the pace of software development or innovation.

    Note also that Microsoft used to sequester programmers in a room without access to the outside world then have them implement a clone of a competitor’s software. As a legal prophylactic, those programmers were physically prevented from reverse engineering the competitor’s code from its binary representation, and yet they had no trouble producing the said same functionality in new, novel source code.

    Bill Gates has a famous quip that a new software idea has the shelf life of a banana. The fact is, no one needs to see some unimaginable inner workings of a piece of code to find a way to implement similar functionality.

    If you want to argue that companies require patent protection to make a profit, that argument is problematic in the extreme.

    It assumes without proof and in the face of innumerable counterexamples that patents are necessary for progress in software and for the consuming public to purchase software.

    But we can look to times in our history when software was not patented and see both innovation and a robust market.

    We also have examples of verticals within software today where patents lawsuits are no occurring, yet the market is thriving for all players.

    In fact, we have whole parts of the world including the EU, Canada, NZ and India where such protection is not available yet their markets and software don’t differ in quality from that in the US.

    Such arguments for software patents are also self fulfilling, which is another way to say they’re specious. If software companies are permitted to rely on patents and thus realize a profit in so doing, then it will become true that companies depend on patents to turn a profit.

    This is what has happened at IBM and Microsoft, where a some non-trivial amount of their market cap is due to their software patents. But this begs the question- is this a good thing? For this reason, these companies’ predicament vis-a-vis software patents is not an argument for software patents.

    It’s also corporate welfare. The increased cost to the consumer of software which bears a government-enforced monopoly pricing structure is a tax on the consumer by the government-corporate entity just as if the government had taxed the consumer directly. If the same software could be had at market-competitive prices, then software patents are nothing more than an expression of crony capialism, not a free market.

    The only argument for software patents would have to be something along the lines that it takes so much money to develop software, companies need patents to recoup their outlay. This is the argument used in biotech and pharma. I can’t comment on those industries, but in software, it’s clearly untrue.

    First, examples abound of one corporation shutting down another using software patents. If the market could not support the production of software without patents, then how did it come to pass that the company without the patent ever made it to market?

    A recent incidence of the above dynamic is the case of FlightPrep vs Runwayfinder. Both made flight navigation software for pilots. FlightPrep has a patent. Runwayfinder is a free alternative written by one man in his spare time as a hobby. FlightPrep served notice to RunwayFinder and other similarly situated software companies shut them down. The benefit to FlightPrep is clear (or perhaps not considering the resultant backlash), but where is the societal benefit?

    If RunwayFinder can create functional software in the spare time on a single person and threaten the comparative advantage of FlightPrep, then why is FlightPrep’s efforst deserving of a patent in the first place?

    The way to accomplish this public policy result is now, in Europe, well settled. Why not also in the USA?

    Indeed, the continued success of software corporations in the EU and elsewhere patents are not permitted, and the continued marketplace for software developers and software all give the lie to the idea that patents are needed to promote software development. Just as the time before software patents when the software industry was thriving, so the markets and innovation occurring EU and NZ and India and elsewhere is an existence proof that software can and will be innovated and developed without software patents.

  28. 49

    Or, you can just take the bottom line from me.

    Chuckels 6 – cept I don;t think ya quite meant that bottom line.

  29. 48

    You be wrong on the Gold Standard Sunshine. Don;t care where in the world ya from that thinks differently.

    You never know who exactly you’re talking to on the internet

    You forgot to ask me if I care. (Hint: I don’t)

    Perhaps the opposing viewpoint is all blunder

    Well, weza know that your side is all blunder so we just be havin ourselves a down home blunder party. The key thing though – my side has the law. Teh US law. (and if ya be wonderin where this blog resides and whom its main readers be – thatta be US too.

    Stop by again chuckles when ya can be wrong some more.

  30. 47

    Terry you’re obviously new here. Otherwise you’d know that all the old hands around these here parts have been bichin’ and screamin’ about their side of the software debate for awhile now. Lately it has all died down somewhat. You’ve got the USSC which probably would not support it, and you’ve got the CAFC patent protectionists. The later of which nobody ever appeals past since the big software companies want software patents and the small guys usually can’t be bothered to go to court at all, much less appeal to the USSC. Furthermore, examiners who are ready to bust out every gun in the arsenal are shut down by applicants unwilling to appeal and have the rest of their portfolio shot all to sht.

    If you want to read about every different argument for and against so many times through so completely it’ll make your head spin just search the archives for threads that go 100+ comments. They can’t be that hard to find.

    Or, you can just take the bottom line from me. The CAFC’s nonsense will continue to be implemented at the USPTO until an applicant with balls and $$$ as well as a dislike for software patents and a fierce opponent with a lot to lose on the patents in suit come through our court system. If that should happen, then it is anyone’s best guess which way the supremes will go (I personally say they’d go anti-software patent unanimously), but both sides will bust out their best weapons, amici will file, and a line will wrap around the USSC building while a world class ho down ensues.

    And through it all I will be there, lulzing on this glorious day.

    There’s also a small chance that a director with principles will come in and change the policy, but the likelihood of that happening is slim and none.

    If you want to tell your client about the current state of affairs, there you have them.

    If you want to give them a visual to go along with my explanation of what would happen at the USSC it would be like this:

    link to youtube.com

    where the software people are playing the girl about to win.

    If you need the full length visual to really drive the point home:

    link to youtube.com

    yw

  31. 46

    OK, so the PTO sets up a parallel stream of prosecution, using different examiners.

    How does this work in practice?

    The PTO hires, say, 100 new examiners who are restricted to new apps filed with the $4k, one examiner per hypothetical art unit.

    The apps start to come in. The first app will arrive and be taken up by examiner 1, who has nothing else to do and therefore starts in immediately. More apps pour in, say 100 apps, one in each art unit, one for each examiner. They are all taken up immediately.

    100 more apps arrive, one more for each examiner. They take those up, secondary to the first app’s.

    And so on, until each new examiner has so many apps to deal with, that it will take one year for them to get around to generating the first OA for the n-th application.

    At that point, more examiners would be needed to maintain the 1-yr limit, because the 1-yr steady-state number of apps for each of the first 100 new examiners will have been determined, and cannot be exceeded.

    Those additional examiners would either be new hires, examiners taken from the original 4-yr stream, or a combination of the two.

    A whole bunch of factors enter here. Transferring examiners from the original stream to the 1-yr stream involves no incremental cost.

    Etc., etc., etc…

    Will the $4k fee ever be ended, once there are sufficient “new” examiners to examine all the apps in the 1-yr stream? There will no longer be any incremental cost addition, after all.

    There is no mechanism contemplated to sunset the $4k fee.

    The PTO doesn’t know what it is doing, or why. All they know is that they can try to charge more for a different level of service–sounds good, doesn’t it? It is in keeping with varied pricing strategies of entities that the PTO likes to liken itself to–like purveyors of auto parts and consumer electronics.

    It thinks it’s a retail entity operating in a competitive environment. It isn’t–it is only competing against itself.

    I still don’t know if I’m behind this proposal yet. If they call a spade a spade, and come out and say that they are operating on a fee-for-service basis, then fine–let’s see some real options deriving from that basis–like superior search, better validation, superior presumption of validity, consideration of third-party-supplied PA during prosecution, etc..

    Applicants could get what they pay for–including, if they wished, NO EXAMINATION OR SEARCH FROM THE PTO AT ALL, for a minimum fee.

    Fair is fair.

    You could get what you decide to pay for. If you decide that the PTO offering is worth squat, you don’t have to pay for it–and if you think it’s great, you can go the whole way.

    If you don’t have all the money in the world, you can pay for a lesser level of PTO involvement, and perform as much as you can do, or wish to do, yourself. Excellent!

    If the PTO actually DOES have some rational analysis of this, why not make the information public and let the PTO “customers” decide? Heck, if you’re loaded and you want to pay for it, you should be able to get a first OA in a month–just post the “incremental cost fee schedule”, and let people decide on their own level of service.

    I don’t know. I think it could work, if implemented properly–but the same thing could be said for many PTO services.

    It’s the rigor of the analysis and implementation that I don’t trust. They can turn a good idea into a bad outcome very quickly.

    I remain hopeful, and I want the PTO to come forward with more information on the proposal.

  32. 45

    This is not an argument nor is it even true:

    “where the patent law is the Gold Standard of the world, “, it’s just an opinion of no special merit.

    You seem to have been so captivated by the idea that asserting something is true makes it true that you haven’t acquainted yourself with the skepticism that idea is met with in other circles. So also with name calling. You never know who exactly you’re talking to on the internet.

    Moreover, whether software will remain patentable in the US is in question. We all know that. I was looking for intelligent discussion on this topic. What I got was something other than that. Perhaps the opposing viewpoint is all blunder.

  33. 44

    Since ya be new here TR, ya might not know that I dont do answers. But I do observations and them be golden – in fact King Kappos just quoted me on my IDS observation.

    Seein as ya like all these other countries and their patent law, you are free to move to those countries. Here in the US , where the patent law is the Gold Standard of the world, the law states that processes with computers and computers program with with software are patentable. If you want to make an argument why US law should be different, then you are going to have to do better than the tripe you posted above.

    It aint me that wants the change.

  34. 43

    Please tell me you can do better. Please tell me that there’s a better argument than “everything is an abstraction” available to clients who are seeking advice. That’s the kind of remark that ends cases fast and hard.

  35. 42

    Please. IS that supposed to be an argument of some sort? Everything is an abstraction? Using that logic I could also say movie plots and novel characters are patentable. The EU and other legal systems have no trouble distinguishing software patents as a class. Neither do NZ India or Canada. If your mind is really so coarse you can’t imagine what they’re seeing that you’re not, perhaps you should find a profession that rewards your level of acumen, like, say, sales.

  36. 40

    ping, I have heard of plaintiff lawyers but the word you are looking for (although you are free to correct me if I’m wrong) is “plaintive”.

  37. 39

    Please, try to contribute by either conceding or rebutting using substantive arguments addressing the law.

    O so very nice of you to ask with a “please

    Let me return the favor: Please get your head out of your _$$ and realize that software processes and machines implemented with software are covered by the law.

    There is no “need for substantive arguments addressing the law” cause the law speaks for itself.

    Now, on the other hand, if it is your aim to somehow exclude something from the legal coverage, ya gotta do a whole lot better than the “abstraction” argument above. After all, EVERYTHING is but an abstraction and natural building blocks when broken down to an appropriate level. The arguments you advance can be translated to any art, and all that ends up is your plaintiff whine that NOTHING should be patentable.

  38. 38

    ping, this is what passes in your mind for a technical understanding of US patent law

    ping said: “it is because our patent system is a bit more open minded.”

    Please, try to contribute by either conceding or rebutting using substantive arguments addressing the law.

  39. 37

    ping, thanks for that helpful lead in.

    Terry, Europe has no Doctrine of Binding Precedent. What “technical character means is what emerges as a consensus from the various Decisions of the 24 EPO Technical Boards of Appeal (upwards of a thousand a year). No court sits on top.

    As of now, the consensus is strong enough for patent attorneys all over Europe to advise their clients with a very high degree of confidence, what is patent-eligible or not, what is obvious and what is not.

    But, as ping says, we don’t know what inventions will be made tomorrow.

    Whatever they are though, the EPO will cope with them. No sweat.

  40. 36

    Why not also in the USA?

    Well Maxi, if ya really interested in knowing, it is because our patent system (ya know the gold standard one ya keep on trying to lesson cause it be a competitor to you), is a bit more open minded. We have a large front gate exactly because no one knows what type of “useful arts” there will be in the future. I am sure that Deming and Taguchi would have a thing or two to say about the fact that “financial engineering” while seemingly ruled out in your system is expressly not ruled out in ours.

    Yet another reason why ours is the Gold standard and yours lags. Yet another target for you to try to shoot down in your jealousy.

    Hey, you asked – I just be giving you some observations.

  41. 35

    Wonderful – another anti-software patent person who does not understand patent law.

    Welcome to the very crowded circus my friend. I hope you bring some original chuckles.

  42. 34

    Terry, comment please on the European position, as follows:

    The purpose of the patent system is to encourage technological progress, not financial engineering.

    So, software that creates a technologically more advanced computer should be recognised as patentable (just like anything else that achieves technological progress), the rest not.

    The way to accomplish this public policy result is now, in Europe, well settled. Why not also in the USA?

  43. 32

    Re: Google and Oracle’s patent dispute.

    I would like to reflect on the topic underlying this dispute- software patents.

    It helps to be precise about what software patents are patenting; they are patenting an effect, an end. Yes, it’s achieved through certain code, but the code is not the boundary of the patent nor is the machine running the code the boundary of the patent.

    This is why you can’t program around software patents, what they cover is something more abstract than the execution of software on a machine.

    Any defense of software patents based on the assertion that it is 101 because it’s implemented on or in a machine (or could be) is self-contradictory thus: you can’t assert that the machine (abstractly considered) is what’s being patented, if it was, it would be possible to write another machine (again, abstractly considered) to do the same thing differently, i.e. write a software program that does the same thing, but using original code. Yet you do assert it’s 101 worthy because the the algorithm runs on a machine.

    Software patents actually have a broader scope than physical machine patents do. In fact, what is being patented is an abstract end state or sequence of events. But this is the definition of an algorithm.

    So is it a machine that’s being patented or is it an algorithm. Maximalists want to have it both ways, and just seconds apart.

    On the one hand, the claim is being made that it’s equivalent to a machine, but then that same fact is being expressly denied, it’s not just the (abstract, virtual) machine that’s created by software running. That is a contradiction.

    And that is just one point. An equally important point is that the purpose of patents under United States law, which is what this is all about and nothing more or less, is to promote the useful arts and sciences. Failing that, no patent is due under U.S. law.

    So a further legitimate question to ask is: do software patents promote the useful arts and sciences or do they have no effect or do they retard those same things?

    The answer to that question cannot be so glibly asserted. It’s a question of fact, not of rights. Clearly, software professionals are , by the numbers, solidly against software patents . This is significant. We tread on very unfirm ground when we start to suppose we know better than the professionals who constitute that profession what is good for that profession, and when they are virtually united, as in fact they are, against something, it’s more than a little Big Governmentish, shall we say, to tell them we know better.

    The fact that software patents were not a factor when the major advances of computers were being made is also telling.

    I’m sure you’re all familiar with the concept of an existence proof. We can argue all day about unicorns, but if one happens by, we are obliged to stop arguing.

    So also the advancement of software without the incentive of patents.

    We already know what would happen if patents were removed in the US- innovation would continue on at the break neck speed we witnessed last century.

    I like patents and I like the patent system, but at the end of the day it’s a tool used by society to advance technology, not a right and certainly not an independent thing with rights and a life of its own.

    To just a causal observer, it appears to me that software patents are bad law and the maximalist position will prove to be untenable.

    cheers.

  44. 31

    Comin from teh ultra liberal Malcolm, Iza thought for sure that Malcolm would be marchin right along Anon and fightin any caste system where the poor and downtrodden shouldnt be taken advantage of.

    Must be a different definition of “liberal” in play.

  45. 30

    You can be concerned that the examiner will find such unpublished art (because he can search it)

    Dont rightly remember which string had a discussion on this – but some claimed that unpublished art strictly could not be used.

    It be my observations that my main man be right here.

  46. 29

    has anyone investigated the legality

    35 U.S.C. 1 Establishment.
    (a)ESTABLISHMENT.— The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance
    with this title and applicable provisions of law.

    Or do ya mean something else?

  47. 28

    Ya cant be really complaining here Bonnie, that the Office is finally takin soome initiative in creative accounting in order to have some funds on hand, can ya?

  48. 27

    Um, Nazgul feeder,

    Perhaps you have heard a term of art called bottle neck? Ya really don’t have to account for anything beyond the pacing item (more or less) and certainly dont have to account for things for which an additional fee will be paid for anyway when you are calculating “$4k payments and use the money to hire an extra examiner” – your words pal.

    Sides which – this aint the sort of thing that normally gets your pant_ies in a twist – whats up with that my main man?

  49. 26

    The true “recovery fee” is more on the magnitude of $1,300 dollars.

    Show your work, please.

    Remember, you have to account for enough total PTO staff and resources to take on the full burden of examining the application, from filing to disposal. That’s the only way to avoid slowing down Tier 2, which is the whole point of the program.

    I’ll be thrilled if you can show that it only costs $1300. And surprised. Surprised and thrilled. At the ruthless efficiency. And nice red uniforms.

  50. 25

    The official rationale is that you can add up all those $4k payments and use the money to hire an extra examiner to handle all the priority cases

    There is a reason this smells bad.

    Given the cost per item, the number of examiners to be dedicated to the program (300), a rough estimate of what that atual cost would be and a calculated number of items needed to “break even” yields a number of examination hours per item of over 60 hours. Since this examination is to be fair and be to the same 20 hour limit as any other examination, the corrected factor of examiners needed for the $4,000 price tag is reduced to 100 examiners at the break even point.

    The true “recovery fee” is more on the magnitude of $1,300 dollars.

    And let’s not forget that all the other normal fees will still need to be paid (so backout of the equation all of IANAE’s factors).

  51. 24

    A better example would be express mail. People can pay more to get it there faster. Outrageous!

    That is an excellent example of an outrageous government policy that solidifies this caste system that benefits the rich, instead of having the free market capitalist society we all signed up for.

    However, I remain concerned that the one year disposal, if it results in allowance, would not consider prior art patents that were filed earlier, but not yet published by the time of the search.

    You can do better than that. You can be concerned that the examiner will find such unpublished art (because he can search it) and your priority-exam application will be held up until that art publishes so the examiner can issue his rejection (which is provided for in the PTO Notice). Which rejection will of course be completely unfounded, if people’s comments here are any indication.

    But yes, it could result in more invalid patents being issued, which is also a big risk for a patentee who has presumably paid all that extra money so he can immediately enforce his patent.

    So, there you have it. We can be concerned that the art will be found, and we can be concerned that the art will be missed. Just like it might be in Tier 2. A perfectly rational excuse to be paralyzed with fear and not go forward with this proposal, wouldn’t you say?

  52. 23

    What is the rationale behind the imposition of a $4k fee for accelerated exam?

    The official rationale is that you can add up all those $4k payments and use the money to hire an extra examiner to handle all the priority cases, so the existing examiners are still available to process non-prioritized applications at the old rate. So, it’s a recovery of the incremental cost of giving priority examination without disadvantaging other applicants.

    How much time does an examiner spend per disposal? Half a work week? Take one percent of an examiner’s gross annual salary, benefits and bonuses, plus a little for his supervisor’s time, plus someone who is paid for pre-exam and to process the request for Tier 1 status, and pro-rated salaries for all the other support personnel at the PTO who don’t directly examine applications, then increase all that by 2/3 because salaries are about 60% of PTO expenditure. It’s plausible that it might be a few thousand per application.

    They likely chose the 1-year time frame arbitrarily.

    Well, obviously. It’s a goal. Any time frame would have been arbitrary. One year is at least a reasonable number, considering that six months of that will be taken up waiting for the applicant to respond to rejections, the examiner has to act on it twice, and the examiner might not get to your case immediately if he has other priority cases to handle.

    One year is also the stated objective for the ESD-type accelerated examination, so at least they’re being consistent. And it’s quick enough to give applicants some hope that their patent will still be worth something when it issues.

    Why stop at 1-yr and $4k? Why not have also 2-yr for $1k and 6-mo for $16k?

    Usually, if you can wait a year you can wait for your application to be taken up in turn. This program is aimed at the people who are in a real hurry, those who complain that PTO delay is destroying the value of their particular patent.

    They already have 6 months for $16k. You just have to spend the $16k on an Examination Support Document is all.

    And if they are operating on a fee-for-service basis, has anyone investigated the legality thereof, and any limits on the model?

    The PTO seems to believe that it has statutory authority to charge fees sufficient to recover its costs. I haven’t looked into the basis of that authority, but I’m inclined to believe that they’re satisfied it exists.

    To me, the $4k fee smells bad.

    So don’t pay it. It’s optional.

  53. 22

    A better example would be express mail. People can pay more to get it there faster. Outrageous!

    However, I remain concerned that the one year disposal, if it results in allowance, would not consider prior art patents that were filed earlier, but not yet published by the time of the search.

    The result could be more invalid patents being issued, and patentees missing out on the opportunity to have prior art considered on the record during prosecution. Of course, there is always the reexam/reissue route if such art turns up after allowance, but there remains the liklihood of increased litigation, and unjustified settlements that could have been avoided by taking more time to allow art to publish prior to the search.

  54. 21

    I agree with Robert, I think.

    What is the rationale behind the imposition of a $4k fee for accelerated exam?

    Presumably, the PTO is doing the very same exam it would be doing otherwise, only sooner.

    This goes back to a conceptual discussion I had with Boundy, I think, regarding the basis for the PTO’s fee schedule.

    Boundy favored a cost-recovery model, and I favored a fee-for-service model. A fee-for-service model allows for the $4k fee, as quicker service is better service, i.e. more valuable service. A cost-recovery model does not allow for anything like the $4k fee.

    On the other hand, if one were to characterize the standard “new” fee as the $4k above the current fee, and therefore characterize the $4k as a “rebate” given to those applicants accepting slower service, it still doesn’t seem to correspond to cost recovery.

    So is the PTO’s model fee-for-service? If it is, then there is a multitude of fee-based strategies that can be implemented by the PTO relating to not only speed of prosecution, but also to quality of prosecution.

    I think that Boundy commented that a cost-recovery model was most economically efficient. While I think that may be true in an overall sense, what the PTO seems to be doing is to be defining classes of applicants, and reserving for the superior classes the ability to maximize their individual efficiency by choosing a particular prosecution strategy, that is not available as an option for the inferior classes.

    Does anybody know exactly HOW the PTO arrived at the $4k figure? They likely chose the 1-year time frame arbitrarily. Is there any demonstration of a $4k increase in costs to the PTO? If not, what was the basis?

    BTW, without commenting on the legality of the strategy, the PTO isn’t the only federal agency to offer expedited service for an increased fee.

    I once was engaged in a situation with a State wherein I submitted a complex application on behalf of a client, where the application was complete as first filed–as opposed to the initial filing of an incomplete application, with the subsequent completion thereof. The State imposed what it characterized as a “penalty” for the complete filing, which “penalty” took the form of, of course, money.

    The State has a general cost-recovery limit on agency fees, and very particular conditions under which a “penalty” can be levied. The “penalty” was unlawful, in large part because the State actually defined the charge AS a “penalty”, the situation not having met the requirements therefor.

    So, if the PTO performs the same search & exam functions as usual, only sooner, precisely WHAT is the fee for? How do they characterize the fee? Why stop at 1-yr and $4k? Why not have also 2-yr for $1k and 6-mo for $16k?

    And if they are operating on a fee-for-service basis, has anyone investigated the legality thereof, and any limits on the model?

    Too many questions, not enough answers.

    To me, the $4k fee smells bad.

  55. 20

    My main problem with the proposed $4K fasttrack examination system is that it’s too cheap.

    On a per-patent basis, it’s more than expensive enough to deter “big business” except in the most urgent of applications. It’s also cheap enough that it doesn’t dwarf the total cost of obtaining a patent (unlike a good ESD), which presumably the applicant could also afford. Not a bad balance, really.

    Is it cheaper than an ESD? Sure. But you also aren’t paying examiners hundreds of dollars an hour to do the drafting, and they only have to give their best rejection rather than tearing apart the entire contents of the IDS in detail. You’re not getting ESD-level analysis, you’re getting Max Power-level analysis. The old way, but faster.

  56. 19

    My main problem with the proposed $4K fasttrack examination system is that it’s too cheap. It should be double or triple that, such that its cost approximates the costs of preparation of an”old school” accelerated application request (the one with the exam support document).

  57. 18

    Anon, thanks for the hilarious posts and your laughable concerns about how the government is using the PTO to perpetuate a “caste” system in the US. That’s a good one.

    In other news that may interest Ned Heller and others, here is an interesting Colbert interview with Jeff Leonard, wherein Mr. Leonard describes how big businesses (and not the government) are systematically screwing over small businesses in ways that actually matter.

    link to colbertnation.com

  58. 17

    That’s fine, as long as nobody gets better service. If I’m going to be miserable, everybody else should have to be miserable too, at whatever price they can afford to pay.

    It’s a little thing called “equality”. Or have you not read Harrison Bergeron?

  59. 16

    How about the USPTO charging rich bankster speculators half the fees that it charges an innovative manufacturing company struggling against Asian competition to stay in business? Is that not what already happens, with 50% rebate for every “small entity”?

  60. 15

    None of these are government provided processes that directly determine a property right.

    This particular fee doesn’t directly determine the property right, it only determines how soon you get it. The vast majority of people have no immediate use for that property right anyway, and would get no advantage from getting it sooner, so it’s better to focus the extra speed on the people who can show they need it.

    such an unbalanced system that caters to give more rights to those who can buy more rights inherently disadvantages the existing poor.

    It’s only the same inherent disadvantage that the poor already have, namely they have less money to buy things with. And it’s still a smaller disadvantage than we, their agents, inflict on them for the pleasure of reaching a final disposition by the PTO.

    Patents cost money. There’s no way around that, unless you want to make the PTO fully government-funded and free for applicants. Even if we (the country) went to a registration system, we (the agents) would have to charge way more extra than the PTO’s $4k to produce a set of claims that could reasonably withstand litigation without having been examined first. And every client would have to pay it, not just the ones who think they can make the money back from their business or their infringers.

    Whenever anything costs money, people with less money will inherently have a harder time getting it. That’s how money works. RCEs cost money too, and without them your patent application is irretrievably lost. Divisionals cost money, and without them you can lose a whole set of claims. At least this fee is optional, and you can get a patent without it just the same as you could a year ago.

  61. 14

    What would you say if someone wanted to buy better medical care? Better education? Better education at a school paid for by the government? A better table at a restaurant?

    None of these are government provided processes that directly determine a property right.

    Of course we should

    No we should not – such an unbalanced system that caters to give more rights to those who can buy more rights inherently disadvantages the existing poor. Equal protection violations abound. The red herring of “There has to be some reason why people would want to strive to be rich in the first place.” is most definitely not something that the government should be providing to enforce a caste system. Your rah-rah non sequitur has nothing to do with your premise.

    Stay on focus and stop with the straw.

  62. 13

    I would oppose on a philosophical basis anything that would allow a stakeholder to buy better service from the Patent Office.

    What would you say if someone wanted to buy better medical care? Better education? Better education at a school paid for by the government? A better table at a restaurant?

    In this country, we shouldn’t be enabling any system that favors the wealthy for no other reason than that they are wealthy.

    Of course we should. There has to be some reason why people would want to strive to be rich in the first place. This country was built on the backs of generation after generation of people who arrived with nothing but ambition and became wealthy and successful, and thereby made the whole country successful around them. Isn’t that the American Dream? I suppose that has no place in this country either, these days…

  63. 11

    I would oppose on a philosophical basis anything that would allow a stakeholder to buy better service from the Patent Office. There ought to be one line for all applications, except for those that fall under the current exceptions (green technologies, aged inventor, etc.).

    It just doesn’t seem right. In this country, we shouldn’t be enabling any system that favors the wealthy for no other reason than that they are wealthy. Here, larger corporations are likely to make the higher-priced fast-track their SOP, which will automatically put poor applicants at the end of the line, and perpetually so.

    While I feel strongly about this on philosophical grounds, I am having a hard time thinking up a legal reason why it would not be allowable, and welcome assistance on that aspect.

  64. 10

    I guess we can start building the coffin for the old accelerated exam program.

    We started building that years ago. All that’s left is to hammer in the final nail.

  65. 8

    USPTO plans to offer accelerated patent examinations for an extra $4,000 fee. Under this option, applications would be processed within a year of filing.

    I assume an applicant-initiated search report and examination support document is not required.

    I guess we can start building the coffin for the old accelerated exam program. It wasn’t used much anyway, was it?

  66. 7

    It would make sense to just change the deadlines/dates to those of the standard exam schedule.

    So I’m sure they’ll do it some other way.

  67. 6

    That’s a pretty aggressive schedule, then. I see also that applicants can’t file for extensions of time if they want to maintain prioritized examination, which makes sense.

    I wonder: If the applicant does something to lose prioritized examination status, does the application go to the back of the queue or does it go back to roughly where it would have been anyway?

  68. 5

    I assume it means a first office action on the merits within 12 months.

    It means “final disposition” within 12 months, according to the actual Notice. But file an appeal or an RCE and you’re on your own.

  69. 4

    According to the official press release, the fast track option “will give applicants the opportunity for prioritized examination of a patent within 12 months of its filing date.”

    What exactly does that mean? I assume it means a first office action on the merits within 12 months.

    Given the statistics we’ve seen here, the PTO might also consider a fast track for BPAI decisions as well. A 12 month fast track doesn’t do a whole lot of good if it ends in a 36 month wait for a decision from the Board.

  70. 3

    How much will it cost to have an application allowed in the First Office Action?

    Check the PTO’s fee schedule under “Design Patents”.

    I think it’s less than $4k, actually. And you’ll get that allowance within a year of filing, too.

  71. 1

    “* USPTO plans to offer accelerated patent examinations for an extra $4,000 fee. Under this option, applications would be processed within a year of filing.”

    How much will it cost to have an application allowed in the First Office Action?

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