Patent Reform Passed in Senate: House Likely to Introduce Bill this Month

by Dennis Crouch

In strong bipartisan fashion, the Senate today passed the America Invents Act (S. 23). Attention now moves to the Judiciary Committee in the House of Representatives.

The Senate measure includes:

  • The ability for the US Patent & Trademark office to set its own fees and to eliminate the practice of fee-diversion.
  • A transition to a first-to-file system as discussed previously on Patently-O.
  • Broader leeway for third-party submissions with explanations during ex parte patent prosecution.
  • A new “first-window” post-grant patent opposition system with broader jurisdiction (but a shorter timeframe) than reexaminations.
  • A provision that eliminates certain tax strategy patents.
  • Although not entirely clear at this point, it looks like damages limitations were removed from the bill prior to passage.

Republican leadership in the House, including Judiciary Chairman Lamar Smith (Tx) and Majority Leader Eric Cantor (Va) appear ready to move forward with their own version of legislation. Six years ago, Representative Smith introduced the Patent Reform Act of 2005. Under the new Republican leadership, a revived and modified Subcommittee on Intellectual Property, Competition, and the Internet has jurisdiction over patent reform measures. The new Chairman of that Subcommittee is Representative Bob Goodlatte (Va) who co-sponsored prior patent reform measures as did the Vice-Chairman, Representative Howard Coble (NC).

On March 10, 2011, I will testify before the Judiciary Committee as members consider how to draft corresponding legislation. I have specifically been asked to address judicial changes to the patent law landscape since the reform process began in 2005. During that period, the Supreme Court has taken an active role in addressing patent policy concerns in cases such as KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (eliminating technical hurdles for proving an invention obvious and instead applying a “common sense” analysis for assessing patentability); MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (holding that declaratory judgment jurisdiction may exist even if the patent holder could not have sued for infringement and that the apprehension that patentee will sue for infringement is not a necessary element for Article III jurisdiction); Bilski v. Kappos, 130 S. Ct. 3218 (2010) (holding the claimed invention – a method of hedging – unpatentable as an abstract idea); and Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) (holding that Microsoft could not be held liable for exporting software code because source code does not qualify as a “component” of a patented invention as required under 35 U.S.C. § 271(f)). During this time, the Federal Circuit has decided more than two thousand patent appeals (including a dozen en banc decisions), many of which address the exact concerns raised in the original 2005 patent reform bill. Of course, over this period, the PTO administrative nightmare has grown to a backlog of 1.2 million pending patent applications and the Board of Patent Appeals (BPAI) backlog of pending ex parte cases has grown from 742 in March 2005 to over 20,000 today.

186 thoughts on “Patent Reform Passed in Senate: House Likely to Introduce Bill this Month

  1. “Your example tells me what the future will bring. Derivation is fobidden, but prompting is not derivation. If a big company monitors the disclosures of the small fry (in their field), they will be “prompted” to publish themselves. This will kill the small fry’s patent.”

    All the better right? We want the publication. Right? RIIIIGHT? Or are “we” really just advocating the having of patents for the sake of the having of patents?

  2. Indeed it seems as if your hypo leads the scenario you propose small business. That part is not crystal clear, but it seems to be how it would go down. And indeed, he could sue A for infringement. That part is crystal clear. Whether he would prevail or not is anyone’s guess, but assuming the stars align then yes it would seem it could happen.

  3. The case I am referring to, IANAE, is discussed in the MPEP 2133.03(a) as follows:

    “If the details of an inventive process are not ascertainable from the product sold or displayed and the third party has kept the invention as a trade secret then that use is not a public use and will not bar a patent issuing to someone unconnected to the user. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). ”

  4. OK, let's try it this way, for pity's sake.  

    What to you think of those cases where the court decided that a non public commercial use was not prior art?

  5. IANAE, if private commercial uses were prior art (they trigger the on sale bar because they are commercial), the nominal exclusion of private uses from the prior art would be illusory.

    It’s not illusory. One could have a private non-commercial use, which would not be prior art. It’s either the public nature or the commercial nature (whichever applies) of the activity that implicitly puts the invention in the public domain.

    IANAE, find one case, just one, where a private use was deemed not to be prior art because it was NOT PUBLIC, but nevertheless was prior art to a third party because it was ON SALE. Â You will not find it.

    Why would that ever come up in court? Nobody would assert a public use defense if the same facts supported an on-sale defense, especially if the public nature of the use was in question, because on-sale is so much easier to prove. Besides, it’s pretty rare for a first inventor’s claim to be anticipated by someone else’s prior sale. Ask me again after we go FTF.

    The wording of 102(b) could not be clearer. It has none of the personal bar-type language that you see in 102(c) or 102(f), and none of the other 102(b) grounds are personal bars. Why do you keep fighting it?

  6. I actually had a case several years ago where the manufacturing process that was the subject of the patent was in use long prior to the patent’s filing date. Just to clear this point up, products made from the process were sold.

    At the time, we researched the issue very carefully. The secret process is not prior art, even though it is on sale by its commercial use which operated to bar the inventor of the process from obtaining a patent.

    In the golf ball case, a real (CCPA?)decision, because the golf ball was in the public domain, it was a prior use even though it was nigh on impossible to reverse engineer. I personally disagree with this holding. I think reverse-engineerability should be the hallmark of being made available to the public.

    Thinking about this, there is a Supreme Court case involving “lost” prior art. There was testimony that the prior art once existed (a safe, I believe). But it was lost and gone. The Supremes, iirc, held the safe not to be prior art, although I think they did provide an exception if someone could remember how it was constructed. (I don’t know if this is correct though.)

    But it strikes me that this case is very much like the i4i case currently on appeal where the software that is alleged to be prior art no longer exists.

  7. IANAE, if private commercial uses were prior art (they trigger the on sale bar because they are commercial), the nominal exclusion of private uses from the prior art would be illusory.  Surely you can see this?

    IANAE, find one case, just one, where a private use was deemed not to be prior art because it was NOT PUBLIC, but nevertheless was prior art to a third party because it was ON SALE.  You will not find it.

  8. If he cannot prove it he is f$%^ed. That’s why I keep arguing small inventors should be the ones advocating FTF.

  9. Wow Ping,

    You’re usually smarter than this.

    Here’s a legitimate question – How many patents have you seen litigated that relied upon a 131 affidavit to issue? I do not know the answer, but I wouldm not be surprised if the answer is zero. And if a patent is not litigated, what is it’s value? I suppose it could help acquire venture capital or be referenced in a cross-license.

  10. Hmmm,

    So if I offer for sale everything under the sun in all the glorious combinations, even though I have not invented any of it yet (Ima no Mikey), that mere offer for sale offers everything to the public and therefore nothing is ever patentable again…?

    Iza think ya been spending too much time sipping tea with Mikey.

  11. Why do you think we have the distinction in the law that the use has to be “public?”

    By “distinction” I presume you mean in contrast to being on sale, in which case the invention does not have to be public.

    It’s well known that an on-sale event doesn’t have to actually make the invention available to the public. In Pfaff v. Wells, the sale occurred before the invention was even invented. That’s not a Federal Circuit decision, but it’s still pretty convincing.

    Your argument, I think I can safely say, is a load of balls.

  12. O the wailing of the next Cottage Industry being born: all those process patents and then going after those who used those processes privately (but not documented).

    Question: What varient of “Troll” shall we label such nefarious ne’er-do-wells?

  13. look forward to reading a case you cite that doesn’t quite support your point

    As opposed to the current reading that does quite support his point?

    Just wanna know – like in case ya start carpet bombing…

  14. The EP’s personal use right for prior users seems extremely fair. We should adopt that in the US.

  15. Ned, I had a look at your man Gary Lauder, the 25 years in VC man. I saw the reference to economics in Canada. I could not find a cite for the – EU in crisis – statement. Bold claims, scare-mongering, based on nothing of substance.

    I’m lucky, I’ve already read “Merchants of Doubt”.

  16. that long time prior user can be shut down. He has no defense.

    He does, actually, because if it’s “long time prior user” he’ll certainly have offered something for sale at some point.

  17. but not a bar to a subsequent inventor of the process because the process itself is not in public use.

    I look forward to reading a case you cite that doesn’t quite support your point, but until then I’ll simply point out to you that 102(b) provides three other types of prior art that are distinct from “public use”, one of which is “on sale”. Congress was even kind enough to separate them all with multiple instances of the word “or”, so you can see that the other three are something other than public use.

  18. Ned (and IANAE) keep in mind that the EPC “right of continued use” is very thin gruel. It is personal, limited to the jurisdiction eg Luxembourg, or Greece, say, where the prior use occurred, and limited to that very act. So, you can’t rely on it to legitimate sales all over the EU or a Mark II improved product.

    Much better to patent or publish, so the other fellah can’t get a patent or, even if he gets one, it’s invalid on account of your earlier filing or publication.

    See, the EPC promotes the progress of useful arts.

    Which reminds me, I must click on your link.

  19. IANAE, I hope the golf ball situation has made it a bit more clear to you. The private use of the process to make the golf ball today is ON SALE and a bar to the patentee, but not a bar to a subsequent inventor of the process because the process itself is not in public use.

  20. Max, I think I know the answer to my question. In Europe, the prior user has a right to continued use regardless of whether he fully intended to keep his use secret and regardless of whether he actually kept it secret.

    In the US today, as I said before, such private use is not prior art, and we have no prior use defense. Such private use can be shut down by a subsequent patentee. Even after we go to FITF, that long time prior user can be shut down. He has no defense.

  21. You have “made available” in the Senate Bill. Do you have an on sale bar too?

    The novelty section would retain the previous “in public use or on sale” language.

    As to whether the sale of Ned’s golf ball makes the process and composition “available to the public”, I would say that as a matter of fact it does not, but in the US it would as a matter of law because all the 102(b) (102(a) as amended) grounds are characterized by the amendment as examples of making available to the public.

    Anyway, it doesn’t matter whether any aspect of the golf ball is “available to the public”, so long as it’s on sale in the US. Everything that went into that golf ball is prior art.

  22. Ned, I don’t know what you mean by:

    “..whether the prior use is ever publicly disclosed..”

    Do you mean that I disclose 1) that I am using a process, the details of which I continue to assert is my trade secret, or 2) what my “trade secret” is?

    The EPC defines the state of the art as everything that has been made available to the public. Everything is novel that is not within the state of the art. Everything is inventive, that the state of the art does not render obvious.

  23. With a non-reverse engineerable product, sale of it does not “make available” the secret process. Nor does an offer for sale. So, in Europe you could have been selling your product for years, and still get enjoined. But for the European “right of continued use”.

    You have “made available” in the Senate Bill. Do you have an on sale bar too?

  24. IANAE, you read too literally. It does help to actually read some cases and know where all this came from.

    See the golf ball question below to get a gist.

  25. Does it make any difference whether the prior use is ever publicly disclosed? Can there still be prior user rights?

    The reason I ask is that private use in the US is not prior art at all under any theory. The secret prior user can be successfully sued by a subsequent inventor.

  26. Max, does a golf ball made according to a process and having a novel composition, both of which are not reverse-engineerable from the golf ball, place either the process or the composition into the public domain if the golf ball is in the public domain?

  27. Do you want to make patenting of trade secrets compulsory?

    Of course not. I just want people who choose trade secrets over patents to assume the risk that someone else might legitimately figure out their secret.

    Also, you don’t actually have to wait till the first unit comes off the line. A mere offer to sell constitutes an on-sale event, and you can do that before laying the first brick for your plant.

    It’s a big risk, isn’t it, to build such an elaborate facility without any patent protection or even a single customer lined up.

  28. IANAE the trouble with Europe’s “made available” is (as you note) with non-reverse-engineerable products. There might be a significant gap in time between A’s building his multi-million dollar production plant to practise his secret process, and selling the first stuff to come off his new line. If B files in that gap and takes his app to issue then, but for the “serious and effective preparations” personal protection enjoyed by A, B could legitimately shut down A’s plant. Do you want to make patenting of trade secrets compulsory?

  29. ON SALE is a personal bar.

    35 USC 102(b): “A person shall be entitled to a patent unless … the invention was … on sale in this country,”

    Nothing personal about that. If the invention is on sale, that’s the same as any of the other events listed in 102(b).

    It just happens to be the case that the person creating the on-sale bar is usually also the person who forgets about it, or fails to appreciate its significance, and later files a patent application.

  30. Still, I find it bizarre, more than bizarre that the PTO could knowingly issue a second patent on the same invention.

    These days, if you’re too late to provoke an interference, you’re not allowed to copy someone else’s issued claim no matter what you tell the PTO. Presumably they’d have a similar rule under the new system.

    But this is what happens when you mix FTI with FTF. You get public disclosures that aren’t patents and aren’t searchable, but affect who has the right to claim the invention. Maybe that’s why FTF doesn’t play nice with grace periods.

    Only the first filer to disclose the invention in his spec should be able to claim the invention, and his claim should stand or fall depending on worldwide absolute novelty. That has the added bonus that once you’ve disclosed something to the public, you won’t later go filing a patent application and creating these odd fact scenarios.

  31. Max, you ARE saying that a prior user defense will be accorded a secret prior user. What is to distinguish then the prior user who has been using the invention, in secret, for decades but who then is sued for infringement when a later inventor gets a patent and sues the long-time prior user?

  32. I think the main concern is with inventions that inventor A decides to keep as a trade secret and separate inventor B decides to patent. If A has built his pilot plant even before B files, should he have a right to continue to run the process after B gets his patent.

    Max, I completely understand that such a provision is meant for the inventors A of the world.

    I just don’t think it’s that important to give A any rights in a trade secret after B has independently invented and validly filed a patent application, when A never intended to disclose anything to the public at all, and A knew all along that he was taking the chance that someone else might find out about it, at which point he’d have a problem.

    Anyway, A would still have anticipated B’s US patent with his trade secret had he offered to sell a single non-reverse-engineerable unit to any other person. Which is a situation you need prior user rights for in Europe, I think.

  33. IANAE: “And an offer of sale to the public will invalidate someone else’s later patent in the US.

    ON SALE is a personal bar. It has to amount to a public use in the US in order to be prior art. There is no case that I know of that has held to the contrary.

  34. I just re-read the bill. It does appear that it is intended that the first to disclose gets the patent regardless of subsequent events.

    But now we can have it where even though B discloses first by selling a product in Timbuktu, A, who files first, gets patent because B’s disclosure is not searchable.

    B files second. But, when his claims are rejected, he files an affidavit of prior public disclosure in Timbuktu. (He submits a photo(shopped) picture of a widget next to a copy of the Timbuktu Times with its date clearly visible.) B gets his patent.

    Both now have patents, but A’s patent, even though filed first, is somewhat in limbo due to B’s patent.

    So A sues anyway. I assume the infringer has to actually prove B’s prior disclosure in order to kill A’s earlier filing date. This seems reasonable.

    Still, I find it bizarre, more than bizarre that the PTO could knowingly issue a second patent on the same invention. They do not do that today. They force interferences.

    Something stinks in the state of Denmark.

  35. Ned, you write:
    “Europe, due to FTF, is in a crisis.”

    News to me. I’m startled, and amused. Care to expand? Is this something Mr Murdoch is reporting?

  36. I just re-read the bill. It does appear that it is intended that the first to disclose gets the patent regardless of subsequent events.

    But now we can have it where even though B discloses first by selling a product in Timbuktu, A, who files first, gets patent because B’s disclosure is not searchable.

    B files second. But, when his claims are rejected, he files an affidavit of prior public disclosure in Timbuktu. (He submits a photo(shopped) picture of a widget next to a copy of the Timbuktu Times with its date clearly visible.) B gets his patent.

    Both now have patents, but A’s patent, even though filed first, is somewhat in limbo due to B’s patent.

    So A sues anyway. I assume the infringer has to actually prove B’s prior disclosure in order to kill A’s earlier filing date. This seems reasonable.

    Still, I find it bizarre, more than bizarre that the PTO could knowingly issue a second patent on the same invention. They do not do that today. They force interferences.

    Something stinks in the state of Denmark.

  37. IANAE, I think the main concern is with inventions that inventor A decides to keep as a trade secret and separate inventor B decides to patent. If A has built his pilot plant even before B files, should he have a right to continue to run the process after B gets his patent.

    BTW, I see amended 102 in the Senate Bill includes the established European “made available to the public” definition of the state of the art, which Europe thought in 1973 rendered a “right of continued use” provision indispensible. Interesting.

    Is Paul Cole at home tonight. I think we need him.

  38. I’ll try, Ned, in a few words.

    There is a very old English patent case. Dr Dolland was the first to invent (a telescope invention, I think). He kept his prototype “in his closet”. He did not publish, he did not patent, he did not exploit, till after an independent other filed and prosecuted to issue. Dolland tried then to invoke his earlier inventive activity as a defence to infringement. He failed.

    But patents ought not to stop you doing after issue that which you had already legitimately started to do BEFORE the filing date.

    So, 1970′s European patent law includes a personal right to continue, after the patent issues, to do those commercial acts which would otherwise infringe but for which you were already making “serious and effective preparations” before the filing date of the claim asserted.

    Did I say this thinking came from Germany? That was not my intention.

    ping, validity is not touched. The patent is fully effective, against everybody else.

  39. It seems, IANAE, that you do not understand the law on public use.

    I understand that you’re talking about cases that don’t count as public use.

    We’re all clear that public use will invalidate someone else’s later patent in either system, right? And an offer of sale to the public will invalidate someone else’s later patent in the US. So if you have an operating business before someone else establishes patent priority, you get to keep it. Fair enough.

    The only thing up for debate is whether we should give prior user rights to someone who has not shared his invention with the public in any way, or even attempted to sell a single unit, prior to someone else’s filing, on the strength of secret preparations to do so that did not include filing a patent application. I don’t see that as a stronger claim than the guy who filed the first patent application, even as a passive defense.

    I can understand the desire to protect a businessperson’s reliance and let him keep doing what he’s been doing, but it strikes me as odd when the person hasn’t really done that much and didn’t concern himself at all with the possibility that someone else might get a patent. It’s a funny sort of reliance interest when you’ve paid no attention to the risk that ends up costing you.

  40. We all know why.

    Here is a summary: link to huffingtonpost.com

    I find it interesting that a study of the Canadian move to FTF confirmed everything that we have been saying here. FTF favors BIG companies and HARMs innovation. Europe, due to FTF, is in a crisis. Moves, it appears, are underway there to move towards the US system.

    Why follow the leaders off the cliff if those leaders themselves now realize their mistake and are trying to claw their way back?

  41. private use is not public use.

    No, but it’s prior art as soon as you sell one unit to anybody, even if you haven’t made one yet. If you’re not selling to anybody and you just have the one unit for personal use, why would you be sued?

    If you’ve made such significant preparations to sell that the other guy’s patent is a major inconvenience, but haven’t filed a patent application, then either you’ve opted for trade secret protection (or no protection) over anything the patent law has to offer, or you’re not very well organized for promptly getting to the patent office. Either way, I don’t see how the patent system owes you anything it would ordinarily give to the first filer.

    I understand why one might want to protect initial investment on the basis that it was non-infringing when it began, and I don’t mind prior user rights in principle, it’s just that they seem so first-to-invent-ish.

  42. IANAE, private use is not public use. I don’t think the new law changes anything.

    The prior user defense is there for those who have reduced to practice and who are going into production, but haven’t yet disclosed anything publicly. See the note from MaxDrei above who described how the ROW essentially adopted the German approach to prior user rights.

    So we are not talking here about anybody who intentionally keeps their “prior use” secret. We are talking here about those who eventually make a public disclosure by selling products or what ever, but whose public disclosure is not early enough to invalidate a patent. They get a personal right to continue use, while the patent owner has a right against everybody else.

    Perhaps Max, who is more familiar with the exact details of the prior user right in the rest of the world can educate us better on the exact nature of the prior user right, and whether it extends to wholly private use.

  43. ‘m still not clear on why

    Might be an equity thing… Ya know, ther eis no (R)equirement to submit a patent, and if the other party establishes some actions in good faith and all that.

    Iza be more curious as to why this dont nullify the patent, since obviously the patent aint coverin somethin novel.

  44. But the new patent bill strips out the prior invention defense, but does not add a prior user defense.

    But it does have a “public use or on sale” defense, which is just about as good as a prior-user defense for any prior user who is likely to be sued, and doesn’t require the prior user to actually make the invention public (or make the invention at all).

    I’m still not clear on why prior-user is an exception to the general and inherent risk that if you try to keep your technology secret instead of getting a patent, and someone else later discloses it to the public, it’s simply too bad for you because you gambled and lost.

  45. How do these “prior user rights” jibe with that singular aspect of the patent (R)ight: exclusivity?

    And frankly – Iza dont care how the ROW treats this – Iza wanna know the US Law take.

  46. Corrected:

    What about all those folks who want to get rid of all patents entirely?

    One step at a time TINLA.

  47. How many patent applications do you think the typical start-up individual inventor files?

    That’s the punch line isnt it?

    Under the proposed changes in the law, expect a forty fold increase in filings (not my answer – See the big Ron K). I believe the HMS is inline (listing or not) with this concept.

    That be two people who havent been afraid to throw down some serious numbers to back their claims. Kinda sets their arguments apart.

  48. The new patent bill fails the harmonization test in a significant way. The entire rest of the world that uses first-to-file also has what we know as “prior user rights” whereby an entity that has made substantial preparations for entering into production, but has yet to disclose anything that would be prior art to a first-filed patent, can be granted a right to continue production. These are known as “prior user rights.”

    In a first-to-invent world, such an entity, who was also a first inventor, can rely and his prior reduction-to-practice to invalidate a patent if he is sued by a first filer. In practice, this amounts to the same thing as a prior-user defense. There are nuance differences, to be sure. Even so, the United States practice today is not that different from the rest of the world.

    But the new patent bill strips out the prior invention defense, but does not add a prior user defense. This will put us for the very first time way out of step with the rest of world on this very important issue.

  49. Les, we were trying to parse what would happen in the future under the new patent bill should it become law.

    Yes, the US still enjoys a grace period. But that long-cherished feature of American Law, so vital to our economy, is being marched toward the guillotine by the radicals of the revolution, the purists of doctrine that can abide no imperfections or mercy. Soon, way too soon, this noble icon of America will meet its fate.

  50. the bill also allows the theft of inventions through death of the inventor this will cause the murdering of inventors to obtain there intellectual materials this bill denies inventor estates the asset and is blatant fraud approved by the senate.Also the venue needs to change to allow webcamed hearings or to the venue location where the jobs should have been located at.The bill allows public disclosures that cheat the actual inventor of his evidening method when both inventors filing within three days of each other that identifies dispute situations from accidental divulgement or evesdroping.

  51. Ned -

    In the U.S., under some circumstances, there is a 1 year grace period between a public disclosure and a total bar to patentability.

    I don’t have the patience to parse the given scenario, but it is possible that one of the inventors is entitled to a patent if they filed their application within a year of a publication.

  52. Ned,

    What would you think about an escalating fee based in part on the number of applications the corporation submits (or later takes title to)? We can call it a Portfolio Fee, and it would apply to PE and NPE alike, with some possible discount for Universities.

    This would protect the small players who need protection and at the same time stop the argument that larger fees just rig the system for the big players anyway. This also will drive those that can most afford to make the largest number of filings to be most diligent about what they are filing for, and thus dissuade against the thicket building that those who are already established in certain industries engage in.

    Tieing such fee hikes to the total number of patents held and applications in process would force those using the system to be a bit more engaged as to what inputs they are dumping into the system, thus increasing “application quality”.

    I also like the idea that a third-party IDS submission should be allowed – although without comment. Commenting is too close to actually examining, and the Office needs to maintain its stake in that role.

  53. Your example tells me what the future will bring. Derivation is fobidden, but prompting is not derivation. If a big company monitors the disclosures of the small fry (in their field), they will be “prompted” to publish themselves. This will kill the small fry’s patent.

  54. I replied above and will reply again. I don’t see how either party can get a patent here.

    Both disclosed prior to the others filing date. Both patents are barred by prior art.

  55. AIPLA — adopting an extremist view?

    Max, you do have a point here. The reason they want to get rid of FTI is so the first inventor can be successfully sued by the first filer.

    Consistent with this is to prevent any prior user defense.

    Consistent.

    And, extremist.

    The radicals are leading the effort here.

  56. Like I said, how very American.

    Canadian universities have been slower to adopt the American model–that is, going full-on corporate and essentially creating and maintaining a brand identity.

    McGill, Queens, UofT, and RMC lead in terms of Canadian ivy-league-style branding strategy, which is the type of identifier to which Americans are conditioned to respond.

    Canadians, on the other hand, look to specific programs within specific universities, not to some generalized and abstract concept of the brand.

    The only thing possibly different about McGill is that it is full-on bilingual–but it is not the only one, as RMC is also fully bilingual.

    Furthermore, western Canada couldn’t give a crxxp about eastern Canada and its universities. UBC and UofA in particular have programs that blow the doors off anything to be had east of the Alberta/Saskatchewan border, and everybody knows it.

    Politically speaking, McGill has tried to brand itself as the sort of Harvard of Canada, but UofT is always to be contended with–however, the brands mean nothing. Politics in Canada is highly regionalized–those in Quebec, believe it or not, don’t necessarily care about a McGill pedigree. Those in western Canada barely recognize the east. Queens and RMC have the best traditions, being located in the former national capital. Even politically, McGill, although it blows its own horn, has no disproportionate national influence.

    Really, to characterize McGill as one of Canada’s “top 2 premiere universities” is totally meaningless, no matter what some American publication says.

    As far as the Canadian publication goes, it is similarly ridiculous. McGill is lumped into a category, the sole criterion of admission to which is the availability of a medical school. SFU, Guelph, and Waterloo, in particular, couldn’t care less about having a medical school, that is not what they are about at all. Why didn’t they include the Optometry program at Waterloo, where one can obtain a doctor of optometry? And who cares–again, it is beside the point, the exclusion of certain schools from the category is based on a single criterion which has but a trivial effect on the “overall quality” of the institution, but a giant effect on selection bias.

    And the meaninglessness of the rankings cuts both ways–for instance, York “University” is ranked #9 on the comprehensive list. What a joke–it shouldn’t even be allowed to call itself a “university”. As the old adage goes, “If you can’t go to university, go to York!”

    Wilfrid Laurier “ranking” ahead of Ryerson? Laurier is widely known as the UW-Madison of Canada, where you can major in drinking, smoking, drugs, or attempt a double-major in any of the two, if you’re willing to stay there 6-7 years, like most undergraduates do. For heaven’s sake, programs offered by Ryerson aren’t even offered at other places–it is a “polytechnical” place that was only recently given degree-granting status. There is no basis for meaningful comparison.

    The McLean’s rankings are just as ridiculous as the USNews rankings.

    Speaking of the USNews rankings, academic peer-review weighted 40%? Why? What were the questions on the survey? Show the methodology. How were competition and self-interest accounted for?

    link to usnews.com

    Student-to-faculty ratio weighted 20%? Why?

    Even USNews regards the measure as largely meaningless: “Clearly, this ratio is not a comprehensive qualitative classroom evaluation…[it] ought to correlate strongly with the level of teaching quality.”

    It “OUGHT” to? What the heck is that? Boundy, what is your concise and scientific definition of “ought”? I’ll tell you what it is, it is mere speculation without any demonstrated relation or causality, period.

    I could go on and on, but the USNews “rankings” are ridiculous and absurd, and I’m disappointed that you, Boundy, buy into such a simplistic view of a complex system, and that you consider as substantive an article that has purpose other than to satisfy or enlarge the circulation of a grocery-store glossy that is designed to appeal to the critical level of the shopper looking for a temporary distraction, and to the cognitive level of a semi-conscious traveler resigned to taking a red-eye.

    I expected more Boundy.

    Furthermore, you didn’t need to make your comment at all–what point did it serve? To add credibility to the studies? Like I said, the studies should stand on their own. How does their origin affect the substance contained therein? It doesn’t. McGill, in particular its EC&COMM department, has no more credibility than anywhere else at any other comprehensive Canadian, or other, university.

    It added absolutely no credibility to the studies, and served only to diminish your own.

    The HMS Boundy is listing.

  57. Boundy: “Malcolm, read first, type later.”

    With this kind of high-handed admonition of Mooney, I’m surprised that the moderators of this board don’t post my response to Boundy regarding university rankings.

    It demonstrates how Boundy should “read first, type later”.

    I guess some posters are more equal than others.

    Even though I agree with Boundy regarding US patent reform.

  58. Talking about patent reform, why shouldn’t we address a serious problem caused by big companies will file thousands of patent applications just to add to a pile for abusive licensing purposes or for other reasons. These patent applications add little to the progress of useful arts, but seriously clog the system with detritus.

    I suggest we need to shunt these patent applications to the side, or hike the fees to system abusers so that they stop abusing the system. The patent system really needs to be there for the people who need patents for legitimate purposes. Adding to a pile for the abuse of power is not legitimate.

  59. these changes are not about affording a single patent.

    They are, from the perspective of the guy who has to come up with the money for it.

    How many patent applications do you think the typical start-up individual inventor files?

  60. And you miss (ignore) the point that these changes are not about affording a single patent.

    Wake up already.

  61. Reminds me of the adage:

    If you don’t take the time to get it right in the first instance, when will you find the time to get it right later?

    The Later is catching up. Lessoning the benefit of pushing to later (through the RCE count change) still did not address the very heart of the problem as Les indicates.

    Do it right the first time and you eliminate the problem. Do an actual honest-to-goodness examination.

  62. And all my ranting, despite the fact that I agree entirely with your assessment of the likely effects of the coming “patent reform” on small business and start-ups.

  63. Dennis -

    With regard to the Appeal Backlog. Please make it clear that the Appeal Backlog is due to the PTO’s elevation of form or process over substance wherein paper is generated that looks like a office action without a real comparison of the cited documents to the claimed subject matter and the offices rush to finality.

    Please remind them that HASTE MAKES WASTE and that real patent reform would eliminate the point system in favor of an honest evaluation of employee performance that doesn’t treat all applications as equal commodities an understands that an application for a patent to a new chemical cure for cancer might be more difficult and take longer to evaluate than an application for a new can opener.

    Ask them to institute a system that makes it improper to make an action final until an examiner has repeated a rejection (without adding or changing any citations) twice and has previously clearly articulated a response to the applicants traversal of rejections at least once PRIOR to issuing the final rejection (not in the final rejection, PRIOR to the final rejection).

    Also ask them to make it illegal (30 days in jail illegal) for an examiner to paste ones claims into an “Office Action” and then merely add parenthetically a set of paragraph numbers referring to the cited document without also drawing an analogy of particular claim elements to allegedly corresponding elements mentioned in the cited paragraph.

  64. If these small inventors want to bring a product to market, that’ll cost them way more than even an expensive patent application from a top firm with Tier 1 examination.

    If they can’t afford a single patent, it’s best they find out right now that their entire business plan was doomed anyway.

  65. Since when does giving a rats behond about application quality” or “patent quality” have anything to do with the logic of the thread?

  66. There will be no question about exactly when the plaintiff’s rights begin.

    They currently begin at conception.

    Further, independent inventors are more likely to recognize and file applications faster than large corporations.

    I’m glad someone else agrees with me on that.

  67. Even if it were true that some applicants do not use 1.131 Declarations properly, that does not mean it is appropriate to deny all applicants their use. Stop trying to punish the whole class for the actions of a few.

    Even if a talented litigator can argue that a 1.131 declaration isn’t valid because there is no documentation of diligent activity in that one week in May of ’04, that doesn’t mean there was no diligence and it doesn’t mean the rightful patentee isn’t the first to invent.

  68. From Boundy Above:

    Michael, you’re confusing two issues, the tie-breaker rule (100 cases per year, where I think change makes sense) and the grace period (100,000′s per year where the empirical data favors the status quo).

    Nice to see you in the same boat as the illustrious Mikey.

  69. Instead of more of your ad hoc thinking – answer the actual question – How many interferences were there with the million plus patent applications.

    Leave your “thinking” aside until you see just how small that fraction is.

  70. Michael, you’re confusing two issues, the tie-breaker rule (100 cases per year, where I think change makes sense) and the grace period (100,000′s per year where the empirical data favors the status quo).

    You’re also confusing valuable patents with interfering patents — these two populations have almost no correlation.

    Disclosure documents don’t appear out of thin air for free. They take lots of inventor time and attorney time.

  71. One to one correspondence then is there ping, between applications with overlapping disclosures, and interferences declared? I think not.

    Interferences don’t just come into existence automatically, do they ping. Somebody has to be motivated enough to get them up and running. Who has that motivation, pray?

    Commonplace? Yes ping, at the EPO. So, are people just not filing overlapping stuff at the USPTO? I think not. They file the same stuff, don’t they?

    But this might be why the AIPLA want prior filed and not yet published application content to be the basis of obviousness attacks. No overlap to fight about then. Instead, First to File gets a clean sweep and the one who filed a day later gets zilch. I think that AIPLA should be more careful about what it wishes for.

  72. So rival independent filings at the PTO are commonplace

    Let’s stick to reality Maxie – just how many interferences were there with the million plus applications in queue?

    commonplace indeed.

  73. How is charging $10K measly? That’s almost as much as one would expect to spend on a nonprovisional, which was Boundy’s point.

  74. David,

    Nothing in my post was in reference to interferences. It was in reference to litigation. FTF will provide a bright-line date. There will be no question about exactly when the plaintiff’s rights begin. This is not about patent rights, it’s about invalidating the patent using 102(g).

    Further, independent inventors are more likely to recognize and file applications faster than large corporations. Especially where the concept is not strongly related to a company’s core business, it might eventually be sent to a low-cost prosecution farm and only be filed with mediocre claims.

  75. Well Small, your bold might not change the key facts under FItF but it sure makes a key difference under ROW FtF. That’s because FtF in ROW includes a defence against charges of patent infringement, that can be invoked by those who, before the filing date of the asserted claim, can show that they had made “serious and effective preparations” to perform the act now accused of infringement.

    It is called the “right of continued use”.

    I do not know whether the Senate Bill includes such a provision.

    Outside the USA, the world adopted in the 1970′s a more or less standard model of patent law. Setting out their stall, the Patent Offices of Japan, China and Korea received tutelage from experts from the German Patent Office.

    The USA believes that its FtI patent law is superior to that adopted elsewhere. Good. Let competition between these two rival philosophies continue. I expect the Bill will not get through the Congress anyway.

    Incidentally, it is not unusual for different companies to be working on the same problem at the same time, and to find much the same solution to it, at much the same time. So rival independent filings at the PTO are commonplace. Whereas RoW mediates proportionately which party gets what scope of monopoly, AIPLA wants to tweak the Senate Bill into a Winner Takes All model, in which the first filer gets total dominance and the second filer gets stuffed. This is not balanced RoW FtF. It is an unbalanced aggressive variant of the model that the world has been running these past 30 years.

  76. The EPO box of “absolute novelty at filing”: Where an invention is not considered novel … just because a prior activity by the very inventors themselves happened to occur. What is the EPO rationale for needing to strangle such innovator activities?

  77. “and decide not to file patent applications to inventions that turn out to be duds.”

    Meh, most are already Boundy, do you have an issue with us examining duds?

  78. Maybe I can ask this again down here.

    In a previous blog post on the reform bill, the guest author of that post presented this hypothetical, with the addition in bold that doesn’t change the key facts and conclusion of the hypothetical:

    102(b) Example 3 (S.23-prior disclosure by others): A invents a Widget on January 1, 2000. B independently invents the Widget
    on March 1, 2000 and publishes an article describing the Widget on April 1, 2000.
    From January 1, 2000 to April 1, 2000 A is
    working 20 hour days to build a first prototype product release and releases on April 2, 2000. A files for a Widget patent on January
    1, 2001. B files a patent application on the Widget on February 1, 2001. Under the proposed S.23, A is barred from getting the
    patent because the Widget was disclosed by B before A‘s filing date and B did not obtain the information disclosed from
    A (either directly or indirectly). Interestingly, although A‘s application is a disclosure, A‘s application is not prior art against
    B‘s application because B publicly disclosed the Widget before A‘s filing. Therefore, B would be entitled to the Widget
    patent.

    If this is correct and B secures a valid patent, can B sue A for infringement and prevail? If not, why not, if B has a valid patent? Or is the hypothetical incorrect?

  79. Prior to the filing of either application, each independent inventor disclosed the invention.

    Hmmm…

    I don’t see how either could get a valid patent. While the inventor’s own disclosure would not count against his own application, it would count again the other inventor’s application.

    Right?

  80. 3L really?

    I have never had a 102(g) defense in any case I have been associated with. They tend to arise in situations where the defendant has what amounts to a prior user’s defense. However, smart patent owners do not sue anyone with a potential 102(g) defense. No one pokes cobras or kicks sleeping dogs – unless they must.

  81. Yes George, if First to File is included in the law that eventually gets passed, that’s exactly what it would mean.

  82. As a law student seeking to enter the field of patent litigation, I am in favor of FTI and all the billed hours it generates on 102(g) defenses. Hopefully the house will remove that provision.

  83. Dennis – In the previous blog post, the guest author presented this hypothetical, with the addition in bold that doesn’t change the key facts and conclusion of the hypothetical:

    102(b) Example 3 (S.23-prior disclosure by others): A invents a Widget on January 1, 2000. B independently invents the Widget on March 1, 2000 and publishes an article describing the Widget on April 1, 2000. From January 1, 2000 to April 1, 2000 A is working 20 hour days to build a first prototype product release and releases on April 2, 2000. A files for a Widget patent on January 1, 2001. B files a patent application on the Widget on February 1, 2001. Under the proposed S.23, A is barred from getting the patent because the Widget was disclosed by B before A‘s filing date and B did not obtain the information disclosed from A (either directly or indirectly). Interestingly, although A‘s application is a disclosure, A‘s application is not prior art against B‘s application because B publicly disclosed the Widget before A‘s filing. Therefore, B would be entitled to the Widget patent.

    If this is correct and B secures a valid patent, can B sue A for infringement and prevail? If not, why not if B has a valid patent? Or is the hypothetical incorrect?

  84. The point is that the new rules, as clearly explained to you by David Boundy, will prompt more applications of less quality.

    Since when does David Boundy or any of the myriad patent fluffers who hang out here give a rats behind about “application quality” or “patent quality”?

  85. Who is it queueing up to pay $10k for provisionals? Or indeed any ap? I’ve never worked anywhere that had clients who would pay that much.

    Um …. I feel sorry for you. Then again, if your prosecuting incredibly banal software methods and such, it probably shouldn’t cost that much. My clients are typically engaged in more complex activities. They’re professionals with Ph.D.s, not some hobbyist cranking out “apps” or dreaming up “new” kinds of information to compile and share with your “virtual friends.”

  86. I saws somewhere the actual rate of live patents in llitigation – something to the tune of less than 1% and closer to 0.1 %.

    Come again with your Rule 131 declaration scare tactic story of those not surviving litigation testing.

    In other words – cite please or it didn’t happen.

    Ohhh – I feel so fluffy using that phrase.

  87. Malcolm: provisionals are not a reliable substitute for proving prior invention during the grace period. They require FULL section 112, p. 1, support to be effective. Prior invention in contrast, does not. In fact, all one has to show in a 131 affidavit is that one invented the subject matter of the reference. See, In re Stempel. This is a whole different kettle of fish showing support for a claimed invention that just may rely on new matter first disclosed in the non provisional.

    To retain or to not retain the grace period is the question. Rather that suffer the hazards of whole cloth new words written on a fresh canvas to give us a grace period, words that have no judicial explanation and are argued in multiple fora with vigor as to what they mean, we really need to stick with 200 years of caselaw-developed understanding of how to prove prior invention to remove prior art during the grace period.

    First-to-file may get the patent, but we need the grace period nevertheless. Provisionals are not a substitute.

  88. No, I did not miss it. What too many people think is an “easy affidavit submission” method to avoid even trying to distinguish over cited prior art is what I noted as “Rule 131 declarations that do not survive litigation testing.” Many I have seen are invalid on their face, and they are definitely high risk. Representing a client in getting a patent is NOT to just get an application slid past an examiners without a legal education who does not understand affidavits or the 102(g) requirements for a valid Rule 131 declaration. It is to get an enforceable patent.

  89. Atticus,

    Ya be spending way too much time carefully preparing your IDS packages.

    Back up the dump truck and just load up. Not only does this handle the IC angle, but also will handle the soon to be law (just not legislative law) concerning the destruction of the C&C standard.

    Why should we care? The Office be the one that needs to lift all those stones. Let them lift.

  90. HMS Boundy,

    If Sunshine took your advice, you would rob me of a great many chuckles.

    Sunshine, pay no heed to the Boundymaster. Keep the chuckles comin.

  91. That’s what’s so remarkable about this instance — Canada is as close to a perfect “controlled experiment” as you can get in economics.

    The McGill Lo & Sutthiphisthal paper does a great job of identifying a control and backing out the confounders.

    Malcolm, read first, type later.

  92. Incredably cheap provisional patents have been made worthless by kapos and the new technical perfecdtion requirments conception and retention or the inventors intellectual materials have destroyed the integrity of the office and promoted theft of inventors ip.

  93. Who is it queueing up to pay $10k for provisionals? Or indeed any ap? I’ve never worked anywhere that had clients who would pay that much.

    Proof (if any were needed) that Mooney is not a patent prosecutor.

  94. Malcolm, you are jumping to the assumption that the 40 are a current situation.

    They are not. That’s the point that you keep missing (ignoring).

    See the Ron Katznelson slide show. I think that you may have better luck finding it that IANAE (who simply does not want too find it).

    As to wanting someone to explain why 40 for “a new toolbar application” stop wasting everyone’s time trying to be clever. You are failing at that.

    The point is that the new rules, as clearly explained to you by David Boundy, will prompt more applications of less quality. This will be a change that draws the small inventor onto the horns of the dilemma that David speaks of.

  95. What about all those folks who want to get rid of gene patents entirely? I think that would likely be one of top candidates for “more such provisions,” and would certainly be popular with many constituents (not me of course).

  96. Do I submit it before the patent issues, or do I get an invalidity opinion written and hold the art back for litigation?

    It depends. Does the answer surprise you?

  97. the new system where 40 plus provisionals would be required

    Try explaining that. Assume the inventor has invented a new toolbar application. Please explain why 40 plus provisionals are required.

    In all instances I’m aware of where a start-up has filed 40+ provisionals, the provisionals were very similar to each other. It might have cost $5K or more for the first one, but the next 39 were dirt cheap. That won’t change.

  98. The cheapest way would be to submit the prior art before the patent issues… seems like a nice short cut to avoid more costly avenues such as requests for reexamination, opinions and litigations. I guess we will see

  99. If you can’t afford to spend a measly $10K on a decent provisional, then you probably shouldn’t be thinking about getting into the business of patenting

    cf

    “But maybe it’s the cheap ones that I write.”

    W

    T

    F

    That $10k per provisional under the new system where 40 plus provisionals would be required is significant. Your recommendation of “trade secrets” is antithetical to the very reason why this country put the “patent” clause into the Constitution.

    Your logic betrays you and screams “Sport of Kings”. Sorry – but in the US, Congress wanted it to be different.

  100. Dennis,
    Regarding your reply to my post last night concerning the ‘11 Patent Reform Act (Reform Act) change in “103″ language as to the time “obviousness” is to be measured, I thank you for it. However, I would submit respectfully that the difference between what is now proposed and what currently controls is not insignificant. There are a number of problems. For example, and as you are aware, the concept of “invention” has been defined judicially to arise at the time both conception and reduction to practice have occurred – reduction to practice being either: actual; e.g., a prototype; or constructive; i.e., the filing of an competent patent application. Accordingly, as I see it, under the proposed Reform Act, actual reduction to practice has been eliminated – leaving only constructive reduction to practice; i.e., filing. Among the consequences of that is the there is no predicate for the Reform Act term “invention” in the absence of a competent application filing; i.e., the reality of an “actual reduction to practice” is significantly limited as a concept of legal consequence. So what happens to the inventive subject matter where no competent patent application filing occurs? If for any reason an applicant can’t or doesn’t get a filing date, it would appear he doesn’t get an invention date. In my practice that consequence creates substantial uncertainty. What would I tell an inquiring inventor seeking to perfect rights in his invention? Would I tell him he has no invention until he files a competent application – blood, sweet, tears and treasure notwithstanding? How would I write a patenability opinion in the absence of a filing? How am I going to structure the patentability search? Indeed, I would ask the Constitutional scholars if a statute with that much uncertainty passes muster? Is an inventor or small assignee going to sign-up for legal work and be obligated to pay potentially tens of thousands of dollars; e.g., for preparation a software systems invention application, knowing that on the day the application is filed – it my already be dead because of an application somebody else filed the day before? I can’t wait to hear what the repercussions will be in large companies – how are they going to manage their invention disclosure dockets?

    The above is but a time-limited recount of some significant uncertainties I perceive. In view of yet further questions that will certainly arise, one has to ask if it’s worth throwing away the more certain experience developed over at least tens of decades by jurisprudentially accomplished minds – for a “European” experience? By the way, I been there and it isn’t pretty. If people think things will be improved with pre and post issuance application-claim challenges, beware of what you ask for. A wise person once told me “truth and certainty are the first victims in an adversarial proceeding” – which was followed by the further observation that “truth and certainty provide the soundest foundation for successful business.”

  101. There is no such thing as startup bootstraping you either have conception or you dont.If your not sure file a 62.00 initial disclosure document and work on it from there.

  102. Please try to work into your testimony that charges of inequitable conduct, and specifically that intent to deceive can be inferred from the circumstances without direct evidence of fraud, have created a mess in the patenting system. A large amount of resources is now spent preparing IDS just to preempt inequitable conduct allegations when all known relevant art has already been submitted. I’d imagine that the frequency and length of IDS’s frustrate examiners too. This is unduly costly to inventors, innovative companies, and the USPTO, with no real benefit.

  103. where innovator start-up activities are limited to a tiny “box” called “absolute novelty”. What is the EPO balancing rationale for forcing innovators to stay inside such a tiny box?

    I believe their rationale is that if it’s not novel, it’s not really an invention.

  104. Hmmm. Let’s say i4i loses and patents not listed on the front of the app can be used to invalidate on a PotE standard instead of a C&C standard. Then let’s say my competitor’s app gets overbroad claims allowed, and I know of invalidating art not yet of record. Do I submit it before the patent issues, or do I get an invalidity opinion written and hold the art back for litigation?

  105. What, are you wanting a provision that eliminates certain biotech patents?

    There are already are such provisions. You’ll recall that patents on expressed sequence tags — a type of composition of matter — were squashed under 101.

    I’m also in favor of eliminating biotech methods that do not transform matter in a non-tangential way.

    But such patents are small potatoes compared to the reams of accounting and data compiling applications that should be removed from the patent system.

  106. The main disagreement here is why not file first wait 90 days then attempt to sell it to investors or complete it after filing under the reinstated initial document disclosure program. There is no reason except to have the option of creating an inventorship suit and muddy the waters of the true conciever assuming the integtity of the office personal that is. Were only talking about 100 patents per year that will be subject to this provision however those 100 represent the most valuable patents in the office the other 275000 patents dont matter because there worthless. the only tiebreaker rule should massive invention clusters of the master inventor.These people will do anything to not include the inventor as a business partner and pork him.

  107. What, are you wanting a provision that eliminates certain biotech patents? If so, I’m sure you aren’t the only one.

  108. Boundy

    The data are pretty clear on both sides.

    “Economic data” of this sort are rarely “pretty clear,” given the complexity involved and inability to perform controlled experiments.

  109. Section 18(d):

    (d) Definition.–For purposes of this section, the term “covered business method patent” means a patent that claims a method or corresponding apparatus for performing data processing operations utilized in the practice, administration, or management of a financial product or service, except that the term shall not include patents for technological inventions. Solely for the purpose of implementing the transitional proceeding authorized by this subsection, the Director shall prescribe regulations for determining whether a patent is for a technological invention.

    Seems pretty clear to me. But I’m sure many will stick their hands in the sand and wail “I don’t understand it!”

  110. Boundy To be worth something, a provisional requires a lot of time from the inventor, and solid review by a patent attorney.

    I charge nothing for the inventor’s time. The “solid” review does not take very long.

    Again, this is all relative. If you can’t afford to spend a measly $10K on a decent provisional, then you probably shouldn’t be thinking about getting into the business of patenting. Trade secrets, after all, are much cheaper.

  111. Boundy

    Do you work for free?

    Nope.

    Almost all “incredibly cheap” provionals are worthless

    I used to think that, too. I learned otherwise. But maybe it’s the cheap ones that I write. Or maybe it’s the difference between a decent idea and total pile of crxxxp.

    Golly, maybe if people are less willing to file cheap provisionals and invest in them, that will lead to less patent filings. And yes, that’s a good thing.

  112. Ah, now I see. “Comprehensive” universities in Canada appear to be the second tier. McLeans ranks McGill no. 1 in their top tier.

  113. I agree with Dave Boundy.

    The grace period encourages start-up bootstrapping (making innovation happen). The grace period allows freedom/flexibility to take chances; go faster; make foolish disclosures; naively try something; continually make mistakes … so innovators can develop and bring their invention to market sooner, so society benefits.

    Contrast with the European grace period … where innovator start-up activities are limited to a tiny “box” called “absolute novelty”. What is the EPO balancing rationale for forcing innovators to stay inside such a tiny box?

  114. Do you work for free? Almost all “incredibly cheap” provionals are worthless. To be worth something, a provisional requires a lot of time from the inventor, and solid review by a patent attorney.

  115. Paulie, paulie, paulie,

    While”race” never goes away, the risk does.

    Id you are talking within a normal span of time for diligence – the current regime allows an easy affidavit submission to take care of any delta in filing. The new system decidedly does not.

    That”s kinda the whole point of Les’s post – and one you miss by a mile.

    “costly interference” – put that bogeyman to rest, willya?

  116. Broader leeway for third-party submissions with explanations during ex parte patent prosecution.

    More like this please.

  117. Current law gives small companies a way out of this deadlock: they take advantage of the grace period to discuss their ideas with investors and partners while they work to get their company running, and file patent applications once investors come on board.

    Again, provisional applications are incredibly cheap. A landscape plundering application with a few nuggets of potentially mineable gold can be prepared in virtually any technical field for a finite sum well within the monetary grasp of any group of people who are serious about starting a company. The new rules do not affect this calculus.

  118. Boundy The grace period rule is a far larger issue — it affects hundreds of thousands of inventions per year, largely by taking away the time to investigate, think, and make careful efficient economic decisions, and decide not to file patent applications to inventions that turn out to be duds. Those applications are not filed today, but will be filed under Patent Reform, costing small companies about $1 billion per year. And they will bog the PTO under 50,000 to 100,000 more applications, most of which are written in haste, and most of the incremental applications directed to inventions that would have dropped out of the system with more time to think.

    I’m saving this prediction. It’s also incredibly amusing to see Mr. Boundy suddenly worrying about the PTO being “bogged” under crxxppy applications. Too fracking funny.

    Provisionals are cheap. For years, companies who want investors file reams of provisionals with all kinds of worthless jxunkola in them to impress the suits. The rules change nothing that matters.

  119. The other half of your answer — no Canada has not changed back. The Canadian legislature is as hard to get moving as the U.S. Congress. Once a mistake hits the statute books, it will take a long long long time to get it unmade.

  120. What happens with first-to-file if applicants try to make a “land grab” by filing applications that are not enabled and/or that fail to meet written description? Wouldn’t a subsequent filer (filing an application that did satisfy enablement and written description) be at more of a disadvantage than under first-to-invent, where they might be able to prove actual

    *click*

    So-called “land grabs” happen under the present system. It’s called “poisoning the well” and it’s a time-honored strategy. Nothing new here.

  121. IBP –

    U.S. News ranks McGill no 1.

    link to usnews.com

    So at least I’m not making stuff up out of thin air, like — oh — certain people. I accept that others may differ. (The Canadian side of my family would never admit that UToronto is anything other than no. 1.)

    I agree, the answer on 102 is really simple. But for some reason, data bounces off a lot of people, and a lot of people who know it’s simple haven’t picked up the phone to call their senators and representatives. Did you?

  122. Agreed.

    The house really has to think this through. I would support a compromise where the first-to-file gets the patent in an interference, but otherwise first to invent is still the law vis-a-vis non statutory bar prior art.

    We need change nothing in the statute outside of 135 and 292, the two sections that pertain to interferences, and perhaps a small tweak to 102(g).

  123. Wow, it took David a long time to say something very simple.

    One error–McGill University is NOT “one of Canada’s two premier universities”. Ridiculous. How American.

    In point of “ranking” fact, according to McLean’s (the only ranking to which anybody pays any attention), McGill did not even make the top 12 in the “comprehensive” category.

    It is generally accepted that UBC has perhaps the best law school, Waterloo perhaps the best engineering, Guelph perhaps the best ag, Alberta perhaps the best chem, etc.. Only those FROM McGill, or those trying to build credibility by citing to McGill, would characterize it as one of the “top 2″, whatever that means.

    Boundy, you should let the results of the scholarly study speak for themselves.

    So, has Canada reversed course?

  124. Professor Jay Thomas wrote an article a few years back on the JPO’s experience with post grant opposition system. Worth a read if you can find it.

  125. No ping you need to move to china so we can get an integritious patent system in place here maybe you can talk them into a full democracy to. You forget I invented first to file system long ago when other countries asked me how to get me to file in there country. Problem was it was just a spur of the monent effort now I am trying to perfect it in the U.S. but Im running into scarecrows in congress if they only had a brain. If the other countries are smart they will grab onto my blog comment history here and design themselves a top system because america certainly has no concern whatsoever.

  126. The two key papers, analyzing empirical data from Canada and Europe, are

    Lo & Sutthiphisal, “Does it Matter Who Has the Right to Patent: First-to-Invent or First-to-File? Lessons from Canada,” April 2009, NBER Working Paper No. w14926, link to papers.ssrn.com

    Boundy & Marquardt, Patent Reform’s Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators, “Medical Innovation & Business Journal, vol. 2 no. 2 (Summer 2010) link to journals.lww.com

  127. The problem here is that the Big Company proponents of the bill and the small company folks are talking past each other, and both are right on different pieces.

    The section of the bill titled “first to file” has two completely distinct effects — (1) changing the § 102(g) tie-breaker rule, for deciding between two near-simultaneous patent applications directed to the same invention, and (2) weakening the §§ 102(a)-(f) grace period, the deadline for filing a patent application.

    The proponents (including Paul Morgan and Lionel above) are correct that first-to-file vs first-to-invent as a tie-breaker between two near-simultaneous patent applications for the same invention yields no significant difference in the outcome, but first-to-file (if the bill changed only the § 102(g) tie-breaker rule) is almost certain to yield significant cost-savings and efficiencies.

    The answer is — so what. The § 102(g) tie-breaker rule affects just over one hundred patent applications per year.

    The small business folks are concerned about the other part of the same section, the §§ 102(a)-(f) grace period, the deadline for filing a patent application. The grace period is a make-or-break issue for small companies and startups, that need the extra time to seek investors, test their inventions, and the like. The grace period rule is a far larger issue — it affects hundreds of thousands of inventions per year, largely by taking away the time to investigate, think, and make careful efficient economic decisions, and decide not to file patent applications to inventions that turn out to be duds. Those applications are not filed today, but will be filed under Patent Reform, costing small companies about $1 billion per year. And they will bog the PTO under 50,000 to 100,000 more applications, most of which are written in haste, and most of the incremental applications directed to inventions that would have dropped out of the system with more time to think.

    The weak grace period of S.23 creates an impossible catch-22 for small companies. Under patent reform, entrepreneurs won’t be able to discuss their ideas with potential investors or other strategic partners until after a patent application is filed because of the risk of losing all patent rights. On the other hand, many entrepreneurs don’t have the money available to file patent applications until after they have funding in hand. This circular dependency will make it impossible to proceed. Current law gives small companies a way out of this deadlock: they take advantage of the grace period to discuss their ideas with investors and partners while they work to get their company running, and file patent applications once investors come on board. But the changes in S.23 create commercially-unacceptable risks for companies that must seek outside investors and partners unless the inventor can find the many thousands of dollars to file a patent application first. That change in the grace period is just fine for multinationals like Kodak, IBM, GE, the big Pharma’s, etc. but for small companies and startups, it’s simply unworkable.

    (Note well, all patent attorneys not working in-house—-a weak grace period will send your malpractice premiums through the roof.)

    Two economists at McGill University (one of Canada’s two premier universities) studied the economic effects on Canadian inventors and companies when Canada made the same switch in 1989. They found that Canada’s shift to essentially the same weak grace period as in S.23 created no significant benefit, but selectively disadvantaged small companies and domestic-focused companies, and favored large multinational companies. The McGill authors specifically noted that the adverse effects on the U.S. would be larger than they were in Canada, because of the U.S.’s larger fraction of small companies, and larger reliance on our domestic markets.

    The data are pretty clear on both sides. The change in § 102(g) tie-breaker rule makes sense, and change to the § 102(a)-(f) grace period rule will be destructive to the U.S. economy. The latter effect is far larger.

  128. The “race” and this risk, is already there, because delayed filing inhertently means more unavoidable prior art is likely, including all the prior art from the 50% of U.S. applications filed from foreign countries that do not delay their filngs. Where are all the malpractice suits now for applications filed too late to avoid earlier filed prior art? FTI does not protect against that.
    [Even as to mere 102(e) prior art, most Rule 131 declarations do not survive litigation testing. Nor does FTI protect against the very much higher odds of losing a costly interference for filing later than another.]

  129. Indeed. This aspect of ending FTI is disadvantageous to large company defendants in patent litigation. Defendants will no longer be able to raise 102(g) prior invention defenses in patent litigation, which cause costly discovery even though rarely successful. [Most of the time, a prior invention defense becomes subsumed into prior on-sale or public use defenses anyway.] But it is well documented that evidence of defendant’s prior invention plays well to juries for a different reason, to help overcome typical jury assumptions about accused patent infringers being “copiers”. Will this become inadmissable?

  130. This bill will promote fraud against inventors by allowing inventions gained by accidental devulgements and evesdroping or robery to be immediatly publicaly disclosed cheating the actual inventor this bill is the race to the microphone bill.No inventor security provisions for top inventors means the loss of the worlds only 4 master inventors through I. P.related murders will continue clearly there truly attempting to drive inventors out of america to safer more patent system advanced countries.

  131. Also it can be claimed that the law already is “not” the clear and convincing standard, that the CAFC is merely getting it wrong and that the law need not change at all (why address a law that does not need changin?)

  132. Or, it could be argued that Congress did not need to even address this issue since the Sup. Ct. already is?
    Also, this is such a hot-button issue that it has never even been in any of the legislative proposals.

  133. What happens with first-to-file if applicants try to make a “land grab” by filing applications that are not enabled and/or that fail to meet written description? Wouldn’t a subsequent filer (filing an application that did satisfy enablement and written description) be at more of a disadvantage than under first-to-invent, where they might be able to prove actual invention in an interference? In this situation, would the first application fail because that applicant did not properly “invent” (by failing to meet the enablement and written description requirements), clearing the way for the second applicant to obtain a patent, or does the first application become “secret prior art” that knocks out the second application for lack of novelty? I think first-to-file could be a huge problem for arts like biotech where the enablement and written description requirements have become so high–it seems like Examiners almost always want to see actual data now to satisfy enablement, and written description has just become ridiculous. Unless you have the exact text of the claim in the specification, you can expect to have problems with the Examiner–never mind what the law is.

  134. Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large corporations maintain their monopolies and kill their small entity and startup competitors (which is exactly what they intended it to do) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs.

    Please see link to truereform.piausa.org for a different/opposing view on patent reform.
    link to docs.piausa.org

  135. Howza bouts the Duffas Effect and the Presidentiall mandate that any rules promulgated first take a look at the source of the problem bein the Office itself?

    Ignoring such and pouring more money on top of a bad situtation will not makes things better (anyone else remember the thousnads of new examienr hires that yielded the likes of 6?)

  136. Dennis -
    Please, please, please encourage them to leave out a First-to-File provision. It will create an unnecessary race to the patent office that will degrade patent (or application) quality. It will advantage large corporations (that can pay teams of lawyers) over the little guy and it will create a malpractice nightmare, where every attorney that looses the race will be sued for not preparing and filing the application fast enough.

    The proponents argue that no one uses the first to invent provisions anyway and then out of the other side of there mouths argue that its too difficult to administer. Well…if no one used it, it wouldn’t be hard to administer.

  137. I doubt this. Legislative inaction is rarely persuasive. There are a lot of things Congress didn’t do that it could have done. (1) I’m not sure that it was asked to change the clear and convincing standard this time around. (2) Only the Senate has acted.

  138. Denis, my pick for recent-years case law having the most impact on previously proposed and previously contentious parts of prior patent reform legislation [which is what I think the House Judiciary Committee wants to hear about from a neutral party] would be, in order: eBay, Seagate, KSR, the en banc 5th Cir. VW decision on venue transfers [followed in CAFC mandamus decisions], plus the recent decisions requiring damages theory and damages witness testimony “gatekeeping” by D.C. judges that I noted in other blogs here recently.
    MedImmune did not impact any previously proposed legislation and furthermore seems to have had relatively little effect on D.J. numbers, contrary to prior scare stories. Bilski was a waffle that did not provide any general guidance on business method patents, but neither does S. 23 that the House is now considering. Microsoft v. AT&T simply corrected a bizare CAFC panel statutory interpretation, and was not relevant to any previously proposed legislation I am aware of.

  139. It seems to me that i4i has to be ecstatic about this, because now they can say Congress **just last month** made major changes to patent law, biggest changes since 1952, and they chose not to change the clear and convincing standard.

  140. Forget interferences, FTF will save time and money in infringement suits where large corporations accused of infringement can tie up small plaintiffs in litigation over who used the invention first.

    Small inventors should be pro-FTF.

  141. Speaking of speaking of Bilski, perhaps you could note to the Congress the biggest Questions Left Open by the Supreme Court’s Decision therein.

    Oh, and post them here, too, please.

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