The Big Government Patent Bill: Guest Essay By John Duffy

Posted by Jason Rantanen

There are many sophisticated and nuanced reasons to oppose H.R. 1249, the 140-page patent bill currently pending before the House of Representatives, but the clearest reason for opposition can be stated in quite simple and stark terms: The proposed legislation would undeniably expand the size of the federal bureaucracy and increase the cost and complexity of the American patent system.

Thus begins a new and timely essay about the patent reform bill written by Professor John Duffy of George Washington University Law School, in which he focuses on three fundamental issues raised by H.R. 1249 that should concern any publicly-minded citizen.  The complete essay can be downloaded here: Download The Big Government Patent Bill

162 thoughts on “The Big Government Patent Bill: Guest Essay By John Duffy

  1. 162

    Everyone misses the “big picture” when it comes to patent law… Patent law isn’t intended to protect the brilliant people from inventing things, patent law is an agreement between the government & healthcare, oil, and tech companies saying that if some whiz kid from MIT cures cancer, comes up with alternative energy, or invents a car that runs for 500 miles without needing gas, try stealing the idea first, worst case scenario cut the guy a small check, put a patent on it to prevent the product from destroying our specific vertical market and revenue stream, if this confuses you then are under the false impression that dems or GOP care about you, they care about elections, and big business pays for elections, not the “people” that you think the government is trying to protect….

  2. 161

    So, Hard, according to you, no one is complaining about the new procedure for creating prior art via a public disclosure, they are rather suggesting, and strongly suggesting at that, that to do so in a way that makes it hard for the competition to find it and use it to the disadvantage of the disclosing party is somehow unethical.

    Now, think about this for a moment.

    You are suggesting that it is unethical not to disclose the invention precisely to those who most likely will use the disclosure to do the most harm to the disclosing party.

    This type of ethics is backwards. Most people would consider such a requirement to be just a bit much, not only not required by the statutes, but also contrary to public morality.

  3. 160

    That’s some strawman there Ned.

    No one has asserted that the mere creation of prior art is unethical (making such prior art so difficult to find by anyone but the creator is a different story than just the mere creation). Likewise, no one has accused those who merely want to use such mere creation of prior art to be Nazis (the tie-in to the Nazi’s is to make the point that law and ethics are two very different things and that not every thing legal is ethical).

    Why don’t you take a little time and actually read what has been posted and stop (purposefully??) mixing up the statements? This is a suggestion along the lines of “put the shovel down.”

  4. 159

    Pedantic, just for the record, no one had yet discussed why creating prior art is unethical. It is expressly allowed by the statute so as to prevent later filers who may be derivers from obtaining a valid patent and to provide what amounts to an effective priority date for one’s own application should one later file himself.

    Yet folks here are mighty unhappy about it, indeed. Very unhappy. Accusing people who want to use it to be Nazis.

  5. 158

    you are doing the same thing. So stop it.

    I see why you are so exasperated. It is such tough work evading the issue that people want to discuss.

    I also see why you do not want to discuss the issue. Your position is indefensible and you might actually have to admit that either you don’t know beans about what it means to be ethical or that you might have to admit that you are not ethical.

    Quite the dilemma.

    The last word is yours – regarding the issue of ethics/law difference or anything you want to not talk about. Please feel free to keep deluding yourself.

  6. 157

    Pedantic Pete, you are doing the same thing. So stop it.

    If you have something substantive to add, please do.

    If you have a specific complaint about anything, please say so.

    I cannot respond to you as you have said nothing at all.

  7. 156

    Ned,

    Thanks for the links but your off-target tangents are explicitly not engaging in the conversation. Do you have trouble reading? – this has been stated several times in this thread. I love the fact that you are drawing attention to the very thing that “the folks on our side” keep telling you not to do.

    Your diversions not being a part of the conversation were made abundantly clear (to all the folks on “our” side – which must include everyone not named Ned Heller).

    There is an easy way for you to become un-exasperated. Stop trying to not answer the questions put to you. It’s amazing what actually addresssing the issue can do to the exasperation caused by not addressing the issue.

    It would help you to stop posturing and preening in your efforts to avoid facing the obvious incongruity of your position on the ethical/legal divide – if only you would join the actual discussion rather than trying so hard to make the discussion about something else.

  8. 155

    link to patentlyo.com

    link to patentlyo.com

    PP, just two examples.

    Now, in contrast, I have been literally begging for anyone on the other side to identify anything in particular either wrong or immoral about what I suggested. I have gotten nothing, nada, zilch, but a lot of posts like your suggesting that it is I, not the complainers, who have not been forthcoming.

    After a while of this, one tends to become completely exasperated, as the folks on your side are completely ungenuine, and really do not want to engage in any conversation, but only want to posture and preen in priggish narcissim.

  9. 154

    Another example of rampant 1d1ocy.

    Ned,

    Why are you telling anyone that they do not contribute when you have contributed zilch?

    You are completely missing the fact – pointed out in a variety of ways – that ethics (not morality – slightly different) is different than following the law.

    You have been invited to contribute and comment on this distinction using such choices as the laws of Nazi Germany or the even older biblical reference of the Sadducees. You have been asked to contribute “actual answers” rather than “a string of expletives,” and instead you redirect the discussion to something completely different (which tactic you had already been asked not to do). Watching you try to spin yourself out of your professed indignation at something you have fully endorsed is comical. As is the Janus reference – nice touch.

    It is evident that you do not have an actual answer to the points raised. Saying so at least would be some contribution.

  10. 153

    Thanks. There must have been the same dire warnings of disaster then, just before Canada implemented its absolute novelty provision. How are they getting on up there these days, I wonder.

  11. 152

    “For me the expression “absolute novelty” means that no distinction is made between domestic and foreign. Prior use in Timbuktoo or Ulan Bator is just as prejudicial as prior use in Boston. This is what seems to upset so much the likes of Ned Heller. Is there absolute novelty, today, in Canada?”

    According to that definition, yes (assuming that the prior use made the invention available to the public).

  12. 151

    There is no reason that the new interferance procedures cant take place before patent issue the value of patents will be deminished greatly with the uncertenty of 9 months of waiting.Patent reissuances need to be allowed where the true inventor was cheated of a patent in the first place. retractions and reissuances using invention clusters will compensate for the attrocities of the past and produce revenues for master inventor to launch new projects oinstead of having thieves making squandering investments destroying the working capitol.

  13. 150

    Increasing filing fees shouldent be allowed until the inventors money is returned to the patent office for inventor security use along with uspto determination and enforcement of single startup and protection against intimidations reguarding inventorship disputes and for funding of top invention startups for indegent inventors partner entrapenurs.

  14. 149

    Sure, sure ANL. Just one more contributor who does not contribute.

    If you have some complaint about creating prior art with non English documents or in some obscure location, I would like to hear what it is you find wrong.

    I not only have gone out of my way to explain why anything I discuss is within the law, but I have also discussed in detail why it is moral.

    I have not been the one to avoid a conversation. I have not been the one to accuse one of advocating unethical or Nazi practices. I again ask, if you find anything in particular either illegal or unethical, please let us discuss it in detail and stop calling people names.

    I have also explained that I think it was wrong to authorize this practice. But it was not I who did that. I opposed it. I strongly oppose absolute novelty based on prior use or knowledge anywhere in the world. We fixed that in US law a very long time ago and for good reason.

    But it is interesting just how this all works with the new grace period, particularly with created prior art based on public disclosure. There is no requirement in the new statute of time and place, or language or to whom the public disclosure can be made. It is an open book upon which the Supreme Court will be required to write in an appropriate case 60 or 70 years from now. Until then, we have no idea what the full scope of the law is.

  15. 147

    Ned,

    You have become a boor. By labeling those who are pursuing a discussion on a global theme rather than minute particulars, you are evading the points raised, those points highlighting the differences between ethics and law that should be an interesting and fruitful discussion.

    The points raised are valid – no matter how you wish to denigrate those bringing the points. You say that there are no laws or rules being cited – yet there are plenty of examples and definitions – more than enough for you to actually discuss these points on the merits. The points are presented to you clearly, yet you engage in obfuscation that should be beneath a man of your achievements. You have not been accused of being a Nazi – you have been asked to explain the difference between law and ethics given the laws of Nazi Germany. I find it inconceivable that anyone would hold that acting in accordance to the laws of Nazi Germany (to the evil ends) would mean that those actions are ethical. Yet, that is the logical conclusion you not only refuse to deny, but in what few statements you have made, you fully advocate. This is beyond distasteful. It is appalling.

    I read in disgust your constant attempts to shift the focus of the discussion and your blatent restating of positions to the point that IANAE would be proud (and you should be ashamed). You accuse others of using strawmen while you cannot answer the direct points put in front of you, concocting the very type of strawman that you accuse others of using.

    I had run into your refusal to acknowledge actual holdings of law in our last discussion (wherein you compounded the seeming lack of intellectual integrity with an unwillingness to recognize items of legal procedure) and write here only to scold you and inform you that your input on these threads will no longer even be considered by me in any way, shape, or form.

    You are a legal persona non grata.

  16. 146

    To be clear, the clowns in this thread object not only to publicly disclosing an invention in the remote jungles of India or New Guinea or wherever, they object to filing a provisional application in Welsh or Flemish and having that application laid open for the purposes of creating prior art.

    These priggish sticklers of public morality believe inventors are under some moral duty always to use English or some well known language, and to always publish inventions in a manner that make them known to the competition. But they cite no law or rules to support their views, except they label anyone who opposes their priggish morality as NAZIS.

  17. 144

    Ned, what is it that I am supposed to have written? “Hiding in plain sight” are not my words.

  18. 143

    anon, I looked at the post to which J-boy referred. The portion I quoted was the only point in that post that had anything to do with alleged unethical conduct, but it had to do with something MaxDrei said, not me.

    Now, you too are playing games, never actually addressing any issue, but just acting like a brat.

    If you think anything about creating prior art to protect my client’s business or patent rights is unethical, and/or doing so in a way that is completely within the law but does not help the competition, then let me know. Until then, please stop talking, as you are not trying to engage in any meaningful conversation, but are only acting like an ….

  19. 142

    Ned, clueless man – that was a complete non-answer to anything that Janus actually asked of you. A complete miss.

    Do you really think that such prevarication fools anyone? Do you really think that anyone buys your “I assume you meant this” re-write?

    No wonder that you think that you haven’t had to defend anything – you are too busy ignoring everything that is being asked of you.

  20. 141

    J-boy, I assume you meant this:

    “LD was off-base in questioning the ethics of purposefully “hiding in plain sight”

    Hiding in plain sight was something that MaxDrei said, not me.

    Unethical: I must have a duty to someone before my actions inconsistent with that duty could be considered unethical.

    Now, when I create prior art to protect my client’s business from later-filed patents, or to reserve a filing date by publicly disclosing the invention, I am fulfilling my duty to my client.

    Now, once I do that, any later-filed patents are invalid. Do I have a duty to actively prevent them from issuing in some fashion by monitoring the patent offices of the entire world for patents that may be invalid over this created prior art? I hope not, as that would be impossible. My only real concern is that my client be protected if one of those late filers comes after my client.

    I perceive no duty to anyone else that is violated. I am protecting my client. Where is the problem?

    As you know, IBM and others like Bosch, it appears, have been doing this for years by publicly disclosing their inventions to prevent others from obtaining patents. Thomas Jefferson himself said once he had perfected an invention, he would publish a notice in the local paper so as to prevent others from patenting that invention.

    The practice is as old as the hills and was actually recommended by that well know NAZI, Thomas Jefferson.

    Back to, J-Lo.

  21. 140

    LD, I haven’t had to defend anything

    If that’s the case, Ned, then you won’t mind actually answering my post of Jun 27, 2011 at 10:14 AM – and by answering, I do not mean putting out a string of expletives – that doesn’t count as an answer.

    And after that you can try to explain how you think ethics is a subset of law and must be constrained by the limits of law (feel free to use the law of Nazi Germany as a fine example of behaving ethically).

    Also feel free to comment on the Sadducees in regards to the difference between letter and spirit of the law.

    I guess when you say that you haven’t had to defend anything, you mean that you haven’t felt like defending anything.

    You have actually been asked quite a few things that you have ducked either by throwing out a string of profanity or by asking someone else to explain something.

    It would be nice if you actually spent some time fortifying your position. Of course you don’t have to – that is if you don’t mind looking like you are speaking out of both sides of your face.

  22. 138

    we want a bit of fun here, don’t we?

    I think the term of art was “chuckles.”

    Be careful of what you ask for.

  23. 137

    You’ll have to define “defining” there

    Well that depends on what the definition of “is” is.

  24. 136

    What dictionary are you using Shill? Since when was exaggeration and error the same thing? For example, when was the last time you reported an experience or an opportunity as “fantastic”? That might have been, to tell the truth, an exaggeration (be honest). But would it be fair to you to categorize your enthusiastic report as an error on your part?

    And if my exaggerations are routinely exposed, that’s fine with me. Where’s the harm? We want a conversation here, don’t we? we want a bit of fun here, don’t we?

  25. 135

    Exposed my hyperbole

    It seems that your “hyperbole” (which is a polite way of saying your errors) is exposed quite often.

  26. 134

    Actually, Pickin, it is more radical than I appreciated. Much more radical.

    Without a terminal disclaimer, the patents do not have to kept in common ownership.

    But by excluding 102, two patents on IDENTICAL subject matter may issue to the common owner, and then be sold to different parties.

    THIS IS RADICAL AND REVOLUTIONARY.

    It does reflect a general attitude that the PTO cannot prevent the issuance of two patents on the same invention. This appears to be INTENDED!!!!

    Think about that just for a few moments. Think of the harm that will cause the public.

  27. 133

    LD, I haven’t had to defend anything yet since you haven’t said what about anything I proposed is unethical.

    Cite the proposal and then cite the ethical cannon that it violates.

    I cite one in return, LD. One has the ethical obligation to represent one’s client within the bounds of the law. That does not extend, however, to misrepresentations to the court or to any government official.

    So, to the extent that you, LD, are advocating not representing your client within the above framework, you are advocating an ethical violation.

  28. 132

    Bruce, it is Supreme Court law. There is no chance of reverse except by statute. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).

  29. 131

    You’ll have to define “defining” there I think. Saying what something connotes “For me, fun means going to Disneyland”; is that the same as “defining”? Did you find there any “definition” of that difficult concept “fun”? I mean, honestly, what do you mean?

    And anyway, suppose I did offer a “definition” of that woolly arm-waving term “absolute novelty”. Is that a crime? You can do better. Explain, please.

  30. 130

    For me the expression “absolute novelty” means

    cf

    I’m not “defining” anything

    W

    T

    F

  31. 129

    Well 2, it never occurred to me that I was being “presumptuous”. I’m not “defining” anything. The term “absolute novelty” is something I heard first in the 1970’s, when I was in training to be a patent attorney. It is a rough and ready term, to distinguish those countries that have “local novelty”, those that have “relative novelty” and those that don’t distinguish between domestic and foreign when it comes to the state of the art. Given the increasing ease with which information vaults national boundaries, the absolute novelty jurisdictions are on the rise. The UK, for example, had already switched from local novelty to absolute novelty by 1978.

    As far as I know, no country has ever had a patent statute that includes the term “absolute novelty”, so no country ever needs to define the term. Most people, including you I don’t doubt, are careful to revert to the precise words of the statute, when they want to find out what the law provides.

    Tell me, in these days of inventions being made by an inventorship entity that consists of one inventor sitting at a PC in, say, Shanghai and another, chatting to the first while sitting at a PC in California, what other rule but absolute novelty is workable?

    But pehaps I haven’t quite caught your thought. Tell us more, do.

  32. 128

    For me the expression “absolute novelty” means that no distinction is made between domestic and foreign.

    Isn’t it a bit presumptuous for you to define terms that individual countries get to define for themselves?

  33. 127

    Well said, Nit Picker. Exposed my hyperbole. BUT:

    For me the expression “absolute novelty” means that no distinction is made between domestic and foreign. Prior use in Timbuktoo or Ulan Bator is just as prejudicial as prior use in Boston. This is what seems to upset so much the likes of Ned Heller. Is there absolute novelty, today, in Canada?

    As to “grace period” it depends what you understand by that expression. The EPC recites some circumstances where a disclosure is not prejudicial to novelty, sure, but does anybody rely on them and does anybody designate them a “grace period”?

  34. 126

    Re: “The Bill’s novel combination of First to File, absolute novelty and a grace period pushes the USA over the frontier, beyond today’s boundaries of patent law. ”

    That would be an impossible combination, as “absolute novelty” means no grace period (to me at least). First to file and a grace period is not a novel combination – Canada has such a patent system.

    Also, don’t various EPO states have (limited) grace periods for disclosures as a result of fraud/theft or at world’s fairs?

  35. 125

    “The move of common ownership exception from 103 to 102 —

    is this a legislative overthrow of double patenting. It appears to me that one can get two patents on the same invention if the invention is owned by the same company.”

    One can already often get two patents for substantially the same invention with terminal disclaimers. So-called “same invention” double patenting is based on 101, so it doesn’t seem that moving the exception to another section would overthrow anything.

  36. 124

    Ned,

    Your pronouncement of “no merit” has as much imperative as your grasp of ethics, which is to say, none.

    Since quite unbelievably the race card was played today, I will turn around and play the Nazi card.

    According to Ned, who has his ethics determined by the law, the law of Nazi Germany made it purely ethical to commit any of the atrocities there from eugenics to the holocaust.

    Sorry Ned, your position is quite literally morally bankrupt.

  37. 123

    I am not as sure about an increase in the bureaucracy as some here. Yes, a bureaucracy grows to the extent allowed by its funding. But, how much will their funding increase? No surprise here that the Republican leadership chairing some of the money committees balked at giving the USPTO full authority to set their fees, and then spend as much of that that they could collect. This apparently delayed passage of the bill in the House by a week, until some of that power was removed from the bill.

    And, yes, just like school districts eliminate bands and sports when they get into funding disputes with the voters, instead of cutting back on teachers and administrators salaries and benefits, the USPTO will likely skimp on examination in order to fund these new initiatives and issues.

    But, I just do not see this as being as big of an expense driver as others here do. Rather, I just see pendency extending out a bit more. Which the bill is supposed to alleviate, but no one really expect that to pan out. It is just what politicians do when legislating – they promise whatever their constituents want, and then give them what those who have bought them want.

  38. 122

    Blackacre, regarding the grace period and prior art, if a item is not prior art for 102 purposes, it is not prior art for 103 purposes. The contrary is not however true.

    Currently 35 USC 103(a) recites:
    (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

    Currently, we have the situation where 102(e) prior art can be used to render claims obvious to that mythical person of ordinary skill in the art, even if the cited application were filed one day earlier, and not published until 18 months or so later. It has never made sense, since there is no way that the second filer would know of the contents of the first filed application, since it is, by law, confidential, typically at least for those 18 months. This has never made logical sense – how can you be held to a standard of knowing of an invention that isn’t going to be publicly disclosed for another year and a half (or maybe even longer if not published)?

    The harshness of this has been somewhat ameliorated by the ability to swear behind such references, and, in particular, when the difference in priority dates is fairly short. But this is going to disappear with passage of the new patent law.

    I bring this up because the statutory standard is what “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains“. Applying this to 102(e) publications makes no logical sense here.

    Remember, this is judicial law, not statutory law. The courts could have just as easily excluded 102(e) publications published after the filing of the application with the claims rejected under 103. After all, prior to the inclusion of publications under 102(e), it made eminent sense to include issued patents as what someone of ordinary skill should be assumed to know. But not-as-yet published applications?

    So, I am thinking that if there were any place that the courts might swing back in the other direction, this might be it.

  39. 121

    As I said, unless you guys are willing to discuss what specifically you think is unethical, we have nothing further to discuss. Your case has no merit.

  40. 120

    Not another colloquy. Leahy and Hatch did that in the Senate. After the vote, of course. As if such will have any effect whatsoever on judicial interpretation of those terms in the long run. I would expect that the current Supreme Court would say, well that is what 2 of the 95 voting for the Act in the Senate thought it meant, what about the other 93? Worse for Smith – there were 302 other yes votes in the House besides his and that of the other Rep.

  41. 118

    It would be nice if you an anon or anyone else were to identify precisely what you believe to be an ethical violation. We can talk about that instead of talking in circles or in generalities. Until then, I take it that your complaints are totally without merit.

  42. 117

    Ned,

    Think of it this way – if the letter of the law were the be-all and end-all, then there would be no impetus for legal change. None. Once what was written was written, that would be all she wrote.

    Yet we both know there almost always is.

    Why do you think that is?

  43. 116

    There is no strawman here to be erected and knocked down.

    Do you even have a clue as to what a strawman is?

    The bounds of what is legal and what is ethical do not wrap as you indicate. If they did, then there would be no point to the saying “the spirit of the law” because only the letter of the law would matter at all – clearly someone can follow the letter and violate the spirit – where do you think this saying comes from? And don’t tell me that you have never heard of the Sadducees?

    Being strictly legal is simply not the same as being ethical. If you do not realize this, then there is no hope for you (and lawyers wonder why people ha_te lawyers).

  44. 115

    anon, you guys are very good at erecting strawmen and knocking them down. You accuse me of being unethical for representing my client’s interests within the bounds of the law, and never once, never once, saying just what is unethical about this.

    It is unethical not to represent one’s client within the bounds of the law. You guys have it backwards.

  45. 114

    Mooney–

    Assuming no 12-year-old’s are reading this board, your commentary is its own best indictment.

    May it please the blog, the prosecution rests.

  46. 113

    Those very few people are long on opinion and short on reason.

    I could not agree more.

  47. 112

    I find it “intriguing” that you always seem to want someone else to do the explaning when you are caught in circumstances that show a forked tongue.

    And yet, a call for explanation yields a response with thirteen questions.

    Ned Heller – you are clueless.

  48. 111

    “Spirit of the law.”

    Now just what might that be?

    We can file provisional applications today in any friggin language we want. Does filing them in some difficult language violate the spirit of the law?

    So, when we publicly disclose an invention in one of these obscure languages, are we violating any spirit of the law?

    The new law permits the disclosure to be anywhere on the planet. So if I choose the jungles of India, is that violating the spirit of the law? Why do I have to disclose it before a conference of competitors? Is that the spirit you demand?

    The new law permits the disclosure to be to anyone. So if I disclose it to the wandering guru, document the disclosure, get his signature and fingerprint, or whatever to verify the disclosure, what difference does it make that no one can find him again given his nomadic status?

    Where is this spirit laid down but in the law itself, in what it sets forth as the law. If the knowledge of the guru can be used as prior art, why cannot the disclosure to the guru be treated as prior art?

    What is this spirit of the law? You are imposing on the new law your thinking from the past. We are in a brave new world. There is no case law interpreting these terms and there is no spirit of the law given to us by the legislative history. We are given new terms with no prior interpretation, no scope, no limit. Where are we to find the limits except by stretching them and having the PTO and the courts react?

    Now just where will this new guru prior art be used? If someone files a patent application after our public disclosure and sues us, the prior discloser, and we use this prior art against his patent in defense of our prior invention. What is wrong with that?

    Secondly, if that first filed patent is cited against us, we can “swear behind” it by reference to our prior disclosure. If the PTO accepts it and we get the patent, what spirit is being violated?

    Where is there any harm to the system that is not expressly authorized by the system. If it authorized, it is not unethical to operate within the scope of the law.

    Now, that said, I think all of this is wrong policy and that we need to restore the system just revoked.

  49. 110

    Ned,

    I find it “intriguing” that you always seem to want someone else to do the explaning when you are caught in circumstances that show a forked tongue.

    Frankly, you are the one that needs to explain why Janus lies dead, shot to pieces for merely being the messenger (don’t you think you were more than a bit harsh?). You are the one that needs to explain the dichotomy between the two very different messenges that I read (and still do read) between the gulf of legality and ethics (and I would point out that ethics involves more than just ethics to the client, to the court and to the PTO – you forgot to the law itself – hence to the spirit of the law). You are the one that needs to recognize the evident truth that Black shares above.

    As it is, people will read your current statements and merely see a lawyers’ attempted twist to justify his own behavior and some half-hearted attempt to say that such behavior is ‘bad” – they will not see any of your self-professed umbrage because at the same time you act indignant, you embrace and even advocate the spirit-killer actions.

    And you want me to tell you anything? Why should I bother when you have not even explained yourself adequately here?

  50. 109

    Hard, you might note that I do not agree that representing one’s client within the law is unethical. I think it is a violation of one’s duty to one’s client not to represent them within the law to their best advantage.

    Ethics involves one’s duty to one’s client, to the court an to the PTO. Tell me how preserving the client’s rights to use an invention and to patent it by creating prior art within the grace period so that it is not prior art to one’s own application, in a manner that does not inform the competition, is unethical at all.

  51. 108

    Ned,

    It looks like you miss the point made above by Black. There is (and always has been) a difference between legal and ethical.

    There is a far cry difference between troubled deeply (but still advocating) and actually opposing and campaigning against the unethical behavior.

    Lastly, your firestorm directed at Janus seems like misplaced venting on someone that simply noticed the inconsistencies you have presented. I did read (and still do) that same mixed message.

  52. 107

    Hard, indeed, I will advocate the position of my clients to the best of my ability. But even though I will, the fact that I can troubles me deeply.

    So, let me be clear. I do not express outrage at those representing their clients within the law, I express outrage that the change in the law permits the very abuses we fixed more than 100 years ago when we confined public use, knowledge and prior invention to the US, and defined prior invention prior art to further require a public use or publication. “Make available to the public” seems so loosely defined as to be open to extreme mischieve, especially if we adopt the EPC definition of that term rather than our own definition of public use or publicly known.

    Finally, allowing public disclosure anywhere in the world in any language to anyone for any length of time to give one what amounts to an effective filing date opens a can of worms.

    What can be abused, will be abused.

  53. 106

    Sorry Ned – but I have to agree with Janus because when I read your comments here I get a very different story.

    For example, your comment below; “So, I know of no reason why one couldn’t do what I describe to maximize the legal position of the client.” has absolutely no hint of the moral outrage and infact sounds like you are advocating a certaincourse of action. In fact, the over-the-top outrage now sounding at other posters who have pointed this out only confirms that from this vantage point, your hand is firmly wedged in the cookie jar, and your protests of “protecting the cookies” rings like an incredulous excuse.

  54. 105

    Janus, you are a prig. We plugged the loopholes now reopened by the patent reform act more than a century ago. I am angry at that — very.

    I am trying to illustrate just how these loopholes can be abused. If they can be, they will be. It has something to do with “if something can go wrong, it will go wrong.”

    Janus, you flippant fool, you really do not have a clue, you flaming A-hole.

  55. 104

    This made me smile: “It does not take a physics degree or
    expertise in patent law to recognize legislation that is bloating the federal bureaucracy.” (John Duffy received his B.A. in physics from Harvard.)

  56. 103

    Ned,

    How exactly is “I will do my best to show why it must be repealed” shown by such comments as “LD, you have got to get a grip“, which necessarily implies that you think LD was off-base in questioning the ethics of purposefully “hiding in plain sight” – which you advocated in doing exactly that below in your post of Jun 24, 2011 (in the spirit of “advanc[ing] the client’s interests”)?

    It is “intriguing” how you balance your moral outrage and your quickly absent ethics.

  57. 102

    A long way above, we have lots of posts about publishing, by handing to a wandering Guru in India an enabling disclosure of your invention in the Navajo language, and the difficulties this causes under the provisions of the Bill.

    The idea seems to be to publish effectively enough to wipe out any patent applications of rival inventors, without revealing your invention to the world.

    I asked myself, why hasn’t this been an issue in Europe up to now. I think it is because, in Europe, your own publications are just as much a destroyer of the novelty of your own later-dated patent filings as they are of everybody else’s patentable novelty.

    The Bill’s novel combination of First to File, absolute novelty and a grace period pushes the USA over the frontier, beyond today’s boundaries of patent law.

    But perhaps wisdom will prevail, and the Bill’s reforms, built by standing on the shoulders of others, will be seen, in times to come, as having created the Gold Standard in world patent law, that reconciles the needs of start-ups with those of established industry leaders and mass employers?

  58. 101

    LD, fyi, I stronly opposed the new law. One of the things I most opposed was the whole concept of public use/knowledge prior art being world wide. We had a very good law for nearly 200 years that provided some certainty to this kind of prior art. But now, in the interests of “certainty,” we have enormously destabalized US patent law and made patent rights anything but certain. The new law is so destabalizing as to be criminal.

    I opposed it as best I could. But now that it is passed, I will do my best to show why it must be repealed. The law is a travesty.

  59. 100

    I have a firm grip on my ethics. Do you?

    Do you really think that all members of AIPLA actually voted for what there is?

    More importantly, do you really not understand that there is a difference between legal behavior and ethical behavior?

    Are you oblivious to what I actually said in my post? Do you understand the difference between the letter of the law and the spirit of the law? I am quite sure that such “tricks” as purposefully obfuscating material and hiding in plain sight violate the spirit of the law.

    Think man – I did not say that this was per se illegal, that was never the question. The question to ask yourself is – What are your ethics?

  60. 99

    LD, you have got to get a grip. If the law says that anything available to the public, orally, for 6 minutes or more, in any language, anywhere in the world, is prior art, then it cannot be IC to actually take advantage of the law. Hand the wandering guru in the jungles of India a copy of your abstract written in Navajo. Photograph it. Document it.

    If this is not prior art, why is it not prior art?

    Then, if you need it, use it.

    If you really do not like this at all, then why in the fricken hades did you vote for it. You are a member of the AIPLA, right?

  61. 98

    The phrase “hide in plain sight” comes to mind.

    So does the phrase “inequitable conduct,” purposefully seeking to play by the letter and obfuscate the spirit by such tricks.

  62. 97

    Max, some enterprising patent office might make a buck by publishing (lay open) provisional applications, in any language, on the date they are filed.

    In WW2, we used Navajo in the Pacific War. Perhaps we could reinvent that wheel?

  63. 96

    When I started in the profession, before the EPO opened its doors in 1978, I learned a neat trick for publishing authoritatively while still denying the knowledge to the public: file in Flemish at the Belgian Patent Office, which one month later lays it all open to public inspection. No argument then, about the precise date of publication.

    Much better for Bosch, I suspect, than a dispiriting argument with a court or an EPO Board of Appeal about whether the prior use behind the company wall did or did not make the claimed subject matter “available” to “the public”.

    Today, one can instead have the UK Patent Office publish in Welsh. Is that a plan?

  64. 95

    The oral tradition here in Germany has it that Bosch (one of the biggest applicant in Europe)had (still has in the Internet era?) a wall on the side of a public road but inside one of its biggest plant, where he “published” his not patented inventions as prior art against future patenting by the concurrence.

    I personally does not know if it wihstood the test of real life cases, but I would guess it did.

  65. 94

    Yes. The NPEs / litigation bar / patent bar / USPTO / = Fannie Mae / WAMU / BOFA/ FOMC of this decade.

    TOO BIG TO FAIL.

  66. 93

    Anon, I like the way you think.

    What I have in mind is a patent professional wiki where participation is restricted to examiners and registered agents/attorneys. Their names and numbers would be required to register and made public. This would be for a number of reasons: to avoid (or at least recognize) unbalanced participation by interest groups, to guarantee civility, to eliminate drivel, to allow ideas/contributions to be fairly attributed, & etc.

    Perhaps such an endeavor would appeal to enough community-spirited professionals who agree that the patent laws don’t have to be initially written so poorly that it takes decades for the courts to work out the bugs, as Ned observes.

    My guess is that a 25-50 interacting patent professionals could write a better patent act within a year. It would take 5 years to sell it to Congress, but once completed and made public it could attract the support of dozens or hundreds of patent professionals.

    But, as you rightly note, such a patent law wiki would require participation more of the lurker-types to the present blog-sites to avoid domination by the verbal few.

    I wonder how many would be interested.

  67. 92

    YOUR HONOR
    I also….
    have here a Cover letter to something I never got from anyone that was entered into my Evidence. It is dated Jan 9, 1997. It also refers to a Case 80/
    I also have one dated Jan. 21, 1997 referring to a Case done by a PL… 08/. But it now reads way different than it did when first presented to me..
    I believe we will call this the OREO CASE because the middle is missing. And that is the missing cover letter and Patent Application which was dated Jan. 16, 1997. And your Honor we know why it was removed. Firstly because of the Drawings being different from the ones I received from the Draftsman that I hired and he signed them over to me as mine after he was paid. But along the way my Credit Card was maxed. So on top of all that I had to also pay Mike Little Bank charges for a bad Check.. That was such a shock to me. But I paid them because of it !!!!!!!!!!!!

  68. 91

    THE WORM
    Who’d have ever thought
    a Worm would be so sweet.
    And make my soil better,
    and then be their defeat.

    I love my little Worm.
    He covered all my words.
    Their biggest problem now,
    They claim that I’m the Nerd.

    They kept me in this box,
    moving the Goal each day.
    continuing to question my sanity,
    by claiming I was not OK.

    And with each day a Tick,
    and then I’ll surely talk,
    about the constant change,
    And then when right…they Balk.

  69. 90

    What Paul knew Maxie.. But then you all knew.
    If I were taking the Exam, I would reference 5,355,822 and 5,832,857. I would also add the differences now in regards to the wording. I would get a A. And that being because I know the differences.
    And then I would refer to two other GEMS that were used to define 5,832,857 in content and File dating. And now I am collecting EXTRA CREDIT! Do I get to pass go…. HEY!, where did Boardwalk and Park Place GO?
    I wonder if this will get lost in Cyber Bully land?

  70. 89

    “Terrific. What we need is to change the system to favor developed companies, while simultaneously increasing the cost and size of the federal government.”

    The amount of deep thinking and critical analysis that went into this post is astounding. I’m so impressed.

    Lulz

  71. 88

    Blackacre,

    That would be exactly the wrong thing to do.

    As witnessed recently with the posts on the Pareto Principle, the bulk of the posts here are written by a very few people.

    Those very few people are long on opinion and short on reason.

    If you think the current system is cr.appy, the system put together by the vocal few would be infinitely worse.

    The lesson is to not look to blog comment sections to learn your lessons (about actual patent law and practice).

  72. 87

    Janus, I then think you misunderstood in some fashion. I know I cited Precision Instruments in that conversation for the very purpose of discussing IC and fraud and duty to disclose.

    On the flip side, there was a question of whether one could submit art in a third party prosecution outside the “window,” I argued that one could under three circumstances:

    1) Where one knew of fraud or attempted fraud; and
    2) Where the allowed claims interfered because the information was merely a shortcut, as one had a right to file a reissue and request an interference. Why force that if direct action were all that was required.
    3) The information was highly material; the interests of a client were adversely affected; the information was not available during the window; and one acted promptly.

  73. 86

    Black, good idea. I just think it’s a shame that the (civil law) EPC model is out of the question. It is, isn’t it?

    When the EPC Member States held a government conference in 2000, to render the original 1973 Convention compatible with GATT-TRIPS, and to de-bug it, they couldn’t find much wrong with it. And since 1973 it has been adopted round the civil law world, in most jurisdictions with a grace period bolted on to it.

    One snag: it is not designed for use in a common law jurisdiction.

    Mind you, that has not prevented the UK running smoothly with it.

  74. 85

    Ned:
    “The new statute has ambiguity aplenty. It will take a very, very long time to work the bugs out. It took us 100 years to figure out the 1790 statute and its variations. We are still debugging the ’52 Act. But I hardly think listening to “experts” on the statute is going to help very much at all.

    I can only imagine upcoming bar exams if they raise questions under the new statute. Any well-reasoned answer has got to receive credit as there is no right answer.”

    Thank you, Ned. Well put. The cr.appy Act is the elephant in the room that somebody needs to be talking about because the room is filling up with elephant sh..it. Congress’ solution is to bring in another elephant.

    Idea: one of you guys with all this time on your hands ought to set up a patent act wiki for patent professionals and examiners to come together as a group and build a model patent. These are the only people qualified to write such legislation.

  75. 83

    Ned said: “if a item is not prior art for 102 purposes, it is not prior art for 103 purposes.”

    That seems to be the rumor. Can you point me to the statute that says that? No? That’s my point.

    If PA is not PA for 103 b/c and only b/c it is not PA for 102, it is only b/c and only b/c the courts say so.

    What is and is not to be considered PA seems to me to be a very elemental point affecting 80% of all prosecution and litigation. The relevance of 102 prior art to 103 could easily have been stated explicitly in the statutes with de minimis effort.

    Shoddy patent laws make for a shoddy patent system, and that has been the problem since at least 1952.

    Mr. Duffy wants to decrease the size of government — and we all do. One way to do it is through quality statutes that decrease the need for judicial interpretation of elemental concepts such as what can be considered PA. The courts are part of government, too. A very expensive part by all measures.

  76. 82

    Paul, the statute speaks for itself. We can read the cases as they issue. The PTO may issue a few new rules, but its interpretation of the new law is not law until the Fed decides. The new derivation and opposition rules will be of great interest, but will generaly not affect most of us in day-to-day practice.

    Now if we had adopted the EPC, we would need a lot of education concerning case law interpretation. But that is not the case here at all.

    So what are we going to get in these “courses?” Wild guesses at what the statute means? What kind of “education” is that?

    The new statute has ambiguity aplenty. It will take a very, very long time to work the bugs out. It took us 100 years to figure out the 1790 statute and its variations. We are still debugging the ’52 Act. But I hardly think listening to “experts” on the statute is going to help very much at all.

    I can only imagine upcoming bar exams if they raise questions under the new statute. Any well-reasoned answer has got to receive credit as there is no right answer.

  77. 81

    Ned,

    More than close.

    Here we are discussing prior art, that much is true. But we are discussing prior art that is material, are we not? In your prior discussions, it was this fact alone that created the duty.

    Your discussion went beyond the holding in Precision as I recall.

  78. 80

    In spite of the huge number of comments here, I have not yet seen anyone pointing out specific likely language in the new legislation that is going to increase the size of the government, or why, which is the subject of the thread.

    To get to the real rub, everyone practicing, especially all those still uselessly objecting to any changes in current patent law, is going to have to pay to go to CLE courses and will have to pay attention to learn the new law, its differences, its new issues, its drafting errors that will need a technical corrections bill or a Fed. Cir. decision, plus a lot of new PTO Rule and MPEP changes. I.e., it’s back to school or retirement time.

  79. 79

    Max, another point:

    The move of common ownership exception from 103 to 102 —

    is this a legislative overthrow of double patenting. It appears to me that one can get two patents on the same invention if the invention is owned by the same company.

  80. 78

    Blackacre, regarding the grace period and prior art, if a item is not prior art for 102 purposes, it is not prior art for 103 purposes. The contrary is not however true.

    I do not the interesting shift of common ownership exceptions from 103 to 102. I wonder if this is legislative overthrown of the double patenting doctrine. One can view it that way.

  81. 77

    Janus, close. I believe I argued that one had a duty to report fraud or IC. If your own client was the party responsible, you had to withdraw. That actually is somewhat the holding in Precision Instruments.

    Prior art is a different case.

  82. 76

    Ned, Cy, thanks for the interesting string of comments.

    Pennock under the EPC. Suppose the claim recites a list of process steps, to make a product. The method is still a trade secret. The product is then put on sale. Suppose that there is no way humanly possible, even with unlimited funds, to find out the process features by analysing the product as sold. Do sales of the product make the process invention available to the public? No.

    I have to say, Ned, it is a bit hard to reconcile that with “What comes after and infringes, if coming before destroys novelty”.

    Comparing “Publish or Patent” with “Publish or Perish” is also interesting. The idea of publishing something obscurely, to pull out later as a tool to destroy the patents of others, is as old as the hills. Funny though, I can’t recall a case. Ned, is that because, if you take the alternative path to protect yourself, that is, file at the PTO, you get a prior art effect a full 18 months earlier than the date you actually “disclose” any of your technology. Only in the USA is there a Hilmer Doctrine.

    And I agree with what you write about selection of filing jurisdictions. Look at Toyota Motor. It files in Germany. Why bother filing in any of the other 41 EPo States?

    But what about telecom protocols? Best file at least in China, eh?

  83. 75

    Posted earlier, seems to have been dropped:

    Blackacre’s gutter cleaner said…

    Mr. Duffy, boy have I got a Tea Party Candidate for you! Her name is Michele Bachman. Bio here:

    link to something-stinks.com

    Duffy:
    “The later choice—diverting the fees elsewhere—will surely meet with enormous opposition from inventors who, having paid inflated fees supposedly to fund the patent system, will rightly not want to see the money being diverted elsewhere.”

    Oooo. . .K. So what’s new? Inventors have been doubled taxed in the US for decades and I have not seen a whole lot of opposition. Why don’t we just keep it quiet so they won’t realize what suckers they are.

    Personally, as both an inventor and patent lawyer, I would gladly see small entity filing fees go to $1000 if it meant getting rid of the brain ded and the non-Engleesh speaking examiners who cost my clients thousands, and thousands.

    Duffy:
    “The last time that Congress re-codified the entirety of U.S. patent law, the resulting act—the famous and still in force Patent Act of 1952—occupied only 24 pages in the U.S. Statutes at Large.”

    Man, you got a lot of chutzpah to use the Patent Act of 1952 as a paragon of legislative virtue. That piece of cr.ap started gumming up the system before Graham ever plowed his first furrow.

    The substantive prior art-related problem is that HR 1292 will make life a bit easier when it comes to deciphering 102 but it doesn’t do anything to help understand 103 or the USSCt’s contorted interpretations of 103.

    As to the 1 year grace period, while it’s broadened and simplified as to 102, it appears to me that the grace period only applies to 102, and not to 103 because the exception paragraph is a sub-paragraph of 102.

    A major muronic glitch of this act and the 1952 debacle is that there is no linking clause between 102 and 103 that says explicitly that prior art as defined by 102 is the same prior art for 103. How much effort would that clause have required? 30 seconds? Well, I just did it in 15.

    Duffy:
    “. . . the 140-page patent reform legislation looks positively puny when compared to the 904-page “Patient Protection and Affordable Care Act” of 2010”

    Boy, have I got a wacko candidate for you: Herman Cain. He doesn’t like to read either and will limit ALL legislation to 3 pages. See Jon Stewart’s recent commentary as reported by Chris Wallace.

    .
    Reply Jun 24, 2011 at 01:24 PM

  84. 74

    Ned,

    As I recall, you were the lone wolf howling in the night that there was a duty to disclose things that would render a third party’s patent invalid (albeit in the inequitable conduct sense).

  85. 73

    Sure Europe is a viable market — but it is not a separate market. Computer makers cannot realistically have one set of computer equipment for Europe and a separate set for the US. The requirements of software and hardware compatibility tend to force one common market.

    Thus, if a computer maker cannot access a key US patent, he will design around it for the entire world.

    In short, here at least the US is the dog and the rest of the world the tail.

  86. 72

    LD, please expand. We have discussed this here before. I think there is NO DUTY of disclosure of prior art that will render a third party’s patent invalid. You can keep it to yourself, AFAIK.

    Now, with respect to one’s own priority date, even today we do not assert it even if we can. We tend to keep that arrow in the quiver.

    So, I know of no reason why one couldn’t do what I describe to maximize the legal position of the client.

  87. 71

    “public disclosure date” that we could keep in the quiver… that no one else knows about but us

    Sounds a bit unethical…

  88. 70

    But I’m not thinking all that much about how…

    not thinking

    Yeah that was pretty much evident above when you opened your mouth and posted your unthinking, critical, sardonic, ridiculous, incorrect, and vacuous thought.

    Here’s a word of advice: next time you feel like posting something without thinking – especially to tell someone else to think before they post, do all of us a favor and actually think before you post.

  89. 69

    But it is true with computers, computer peripherals and integrated circuits. I actively try to dissuade client management from wasteful spending on marginally valuable non US patents.

    Interesting. I would have thought that the ROW could be a quite viable market for computer peripherals. And the EU has some very handy customs provisions that can be a nice alternative or complement to actual litigation.

  90. 68

    Actually, Cy, for most businesses I represent, the US market is so important that a US patent effectively controls the entire world market. This is not true with other products, such a drugs and chemicals, for example. But it is true with computers, computer peripherals and integrated circuits. I actively try to dissuade client management from wasteful spending on marginally valuable non US patents.

    But I am always interested in what we can do advance the client’s interests. For example, establishing a bona fide, ironclad “public disclosure date” that we could keep in the quiver to be used only if necessary for priority purposes or for prior art purposes, that no one else knows about but us, might have some intriguing possibilities.

  91. 67

    Sorry, Ned. I just assumed that international patent rights might be important to you, since you spend so much time wandering in the jungles of India. Carry on.

  92. 66

    Lulz

    Yeah, I think plenty. But I’m not thinking all that much about how the passage of this bill is going to “increase the cost and complexity of the federal government.” I leave such mental thumb twiddling to the likes of Prof. Duffy, bad joke, and you.

  93. 64

    Overreact much?

    Think much?

    I mean, of course, more than your usual critical, sardonic, ridiculous, incorrect, and vacuous thoughts.

  94. 63

    Ned your Pennock point was of course immediately under the spotlight, the moment the EPC came in to force. The answer was clear straightaway. Ask anybody in Europe. It is probably even in Wikipedia.

    Your corset point is trite law.

    And the language point too. Europe is polyglot.

    And the state of education too. It varies so much all around Europe, you see. We need validity standards that are objective and yield the same result in all 40 EPC Member States.

    Disclosures that are transient, unrecorded and oral are a potential point of difficulty, I admit, even when they take place on Boston Common rather than in the heart of the dark continent. But I cannot recall a case at the EPO in which the petitioner for revocation relied exclusively on such evidence of invalidity. We don’t have much caselaw on such fact matrices, even now. How serious a problem that is might depend on the extent to which talkative inventors rely on a grace period. In Europe they can’t, so don’t.

  95. 62

    Cy, we do have that colloquy between Smith and another congressmen yesterday that whatever the applicant does that may be prior art under will also be within he one year grace period. However, it will be prior art to third parties.

    IBM long had a program of publishing brief descriptions inventions in a Bulletin. They did so for prior art purposes to prevent others from obtaining a patent on ideas it did not want to file on.

    I am just asking of Max or someone who knows just what one has to do to create prior art against others, knowing with some assurance that it will not count against my own later application filed within one year.

    We are also going to have to discuss what the difference is between “publicly disclose” and “make available” for the purposes of reserving a filing date against third parties. Just for example, is publicly disclose and public use as defined in the US case law since Pennock v. Dialogue the same thing?

  96. 61

    Where? Does a disclosure in the jungles of India to a wandering guru count?

    Ned, as your attorney, I recommend that you not disclose your invention to a wandering guru in the jungles of India until after we’ve filed an international patent application.

    Gee, that wasn’t so hard…

  97. 60

    Max, made available to one member of the public…

    OK. What does made available mean?

    Member? Does it make a difference what education he has? What if you make available in Greek and he is Chinese?

    Where? Does a disclosure in the jungles of India to a wandering guru count?

    How long does the make available have to be? Is 5 minutes sufficient?

    Can one go to Central Park, read the description of the inventon aloud, filmed of course, to passers by but leave no copies. If that does not count, why?

    What about the facts in link to supreme.justia.com? The fastener was used by one woman on a corsett. It was never visible to the public. Nevertheless, this was declared a public use.

    What about Pennock v. Dialogue? The fire hose was publicly used for years, but the means for making was not understandable. Is that public disclousre of the invention? Does it make any difference that the product of a process is an infringement — such that granting the patent on the process will withdraw from the public an invention in long use?

    I understand these concepts are well understood in Europe. Do you have some answers?

  98. 59

    why is letting some examiners have local sites elsewhere necessarily creating excessive staff or costs? Personal interviews will be much more convenient for many members of the public.

    ———–
    It’s not that creating a site elsewhere is the problem, it’s that it’s in a “Blue” state…you know, a place where the populace can actually read.

  99. 57

    Ned “publicly disclose” is one of those terms which we do not know under the EPC. In Europe, the test is “made available” to at least one member of “the public”. Both of those EPC concepts were hugely unclear in 1978 but, after 30 years of interpretation, by now we have enough idea what they mean that we can offer our clients advice in reasonable confidence that we will be confirmed by the courts, anywhere in the by now 42 country EPC-land.

    Frankly, I think the USA has such a strong feeling that it is the exceptional nation that for it the established international terminology is the one terminology that is absolutely ruled out. You?

  100. 56

    Ned,

    According to MaxDrei’s post, the answer to that question will be laughably clear and simple to apply in 30 years.

    Further, I think he indicates that there will be a huge level of uncertainty until then.

  101. 55

    “The PTO should be moved from D.C. to a less expensive place … No company would set up an engineering shops right in the middle of one of the most expensive cities in the world.”

    I think this is a really interesting and under-appreciated point. I note that DC is certainly an attractive place to live for younger individuals, but a difficult place to support a family. Does this have something to do with the difficulty in retaining examiners? I have no idea, but it’s not out of the question that it might sometimes be a factor in examiner’s decisions to go elsewhere.

  102. 53

    Your rebuttal of my rebuttal is just ridiculous.

    How is it ridiculous to point out your error about cost? Think before you ask others to think.

    Is it ridiculous to also note that their is no constraint on cost and that the power to set the fee amount makes the patent process a Sport of Kings? Obviously you miss the point of the Duffy article – it is yet another strawman to say “Oh the humanity!!!!!” (wow – five exclamation marks) because the point is not about who is paying for the services, it is about the unrestrained ability to bloat the bureaucracy and force applicants to swallow that unrestrained cost (and more, since overages are still susceptible to being raided, which resolves into an actual tax on inventors for the benefit of other taxpayers).

    Your lack of substance is what is ridiculous. Your sardonic ignorance is what is ridiculous. But feel free to make another incorrect critical comment and rebut that vacuous comment with more vacuous comments.

  103. 52

    “In fact the situation here is worse than taxpayer funding – as the the increasing costs will more easily be passed on to the users of the system through uncontrolled fee increases.”

    Requiring people who use services to pay for those services??!!!! Oh the humanity!!!!!

    “your rebuttal is a strawman”

    Your rebuttal of my rebuttal is just ridiculous. You win I guess.

    lulz

  104. 51

    I’m reminded of the 20 year long 1978-98 hiatus in the UK, when we had to deal simultaneously with “old Act” patents and “new Act” patents. Long forgotten now of course is the huge level of uncertainty there was then, about a whole raft of new EPC concepts which now, after 30 years of cumulative jurisprudence, seem laughably clear and simple to apply.

  105. 49

    isn’t it amazing then to notice that that area is completely absent

    But it is not completely absent.

    We have whole sections that the examiners must learn about and apply, replete with new (undefined) terminology. That is another part of what the esteemed professor was sharing – streamlining and expediting will occur as the examiners will now have to apply multiple sets of rules (especially givne that the changes are not retroactive and that mountain of a backlog is governed by the old rules).

    streamlining and expediting will occur – oh wait – it won’t.

  106. 47

    isn’t patent examination still the vast, vast, vast majority of what the PTO does?

    Funny that – isn’t it amazing then to notice that that area is completely absent from the 140+ pages that will “streamline” and “expedite” the patenting process?

    I am much more concerned with “trusting” what the government says this bill will do than with “trusting” what Prof. Duffy has to say.

  107. 46

    School’s Out – time for you to go back to school.

    The cost is still there and increasing the size still increases the cost. In other words, the costs are not driven by who pays for the costs. The costs are driven by the required strucute to comply with all of the bureaucracy installed with this new pending law (that is a point from the Dufy article that is missed/glossed over).

    Yes, this particular cost is user funded as opposed to taxpayer funded – but Bad joke ahead’s comment still applies as he did not indicate that distinction in his comment (your rebuttal is a strawman).

    In fact the situation here is worse than taxpayer funding – as the the increasing costs will more easily be passed on to the users of the system through uncontrolled fee increases.

  108. 45

    “There are many sophisticated and nuanced reasons to oppose H.R. 1249 . . .”

    I wish Duffy’s article had included some of those reasons, because that would have been interesting to read. Otherwise, not so much. First, I can’t trust his conclusion that expanding the bureaucracy at the PTO is a net negative without considering efficiencies that may be gained in litigation proceedings. Second, even with additional types of proceedings created in the PTO since 1980, isn’t patent examination still the vast, vast, vast majority of what the PTO does?

  109. 44

    “Terrific. What we need is to change the system to favor developed companies, while simultaneously increasing the cost and size of the federal government.”

    The USPTO is fully user fee funded. In fact, over the past 10 years the PTO has “contributed” $800M+ to the general treasury. So how is the passage of this bill going to increase the cost of the federal government?

    Think before you post.

  110. 43

    European Patent Law is good for the small inventor. Europe (as a society) is not so good. That is down to European society’s general attitude to commercial risk. What gave rise to that general attitude to risk was not its patent law. Are we going to patent our way out of the Euro crisis? I think not.

  111. 42

    When my small client gets opposed at the EPO by BigCorp, I tell him it is the best thing that could have happened, for it is the best way i know for enhancing the presumption of validity and doing a deal with Big Corp, at low cost to the patent owner.

    The way I see it, it is the time and cost of inter partes disputed proceedings in the USA that is problematic for Little David. England struggles to hold down the cost of adversarial patent proceedings even though it has a powerful motive to do that for, if it fails, Duesseldorf gets all the work. Quite how the USA can keep down the cost of adversarial proceedings, in the absence of a “loser Pays” rule, and without competition for the business from Duesseldorf and Den Haag, I have no idea.

  112. 40

    Timely? If it had been distributed to congress a coupla weeks ago it would have been timely. I think the adverb you were looking for was toolittletoolately.

  113. 39

    Terrific. What we need is to change the system to favor developed companies, while simultaneously increasing the cost and size of the federal government.

    That ought to make everything better.

  114. 37

    Given that the EPC is singularly well-suited to the small inventor and singularly ill-adapted for squeezing operations performed by Goliath on little David Inventor

    That is some serious spin (as in ending up facing 180 degrees from the real world).

    Europe as a bastion for the small inventor…?

    MaxDrei, at least try to make your posts believable.

  115. 36

    MaxDrei: I wasn’t referring to the first to file. I think by and large that first to file is neutral.

    The problem is that with 3rd parties being able to challenge patents and patent applications it can greatly increase the cost to the small inventor. The way it works in the U.S. is that a company can pay 100’s of thousands of dollars in a intre party reexamination and the small guy can’t compete.

    The big picture is that the more money you need to get and keep the patent that more it favors the big guy. These extra procedures just add expense and require money. Rather than the government doing the work it is in effect saying well if you want it then you pay for it.

    All of this comes down to poor patent examination. And, what you may ask is the biggest problem? Simple. The PTO should be moved from D.C. to a less expensive place so that being a patent examiner is a career and respectable one at that. Examiners are similar to engineers. No company would set up an engineering shops right in the middle of one of the most expensive cities in the world.

    Duffles: the reason you fail is that you just don’t get the big picture.

  116. 35

    I second essentially what you say Paul. But I wasn’t certain I wasn’t going to be speaking out of my arse when I typed up the comment so I just didn’t post it.

    Now that’s funny. In so many ways.

  117. 33

    NWPA, could you perhaps be more specific? Given that the EPC is singularly well-suited to the small inventor and singularly ill-adapted for squeezing operations performed by Goliath on little David Inventor, which particular feature of First Inventor to File is it that will realise that nightmare in the USA?

    You see, I think (based on experience at the EPO) that First Inventor to File really will increase the probability that the first inventor is the only one who gets past the examination process, to be given the exclusive right, a right which, once so got, can’t be got at by Goliath.

  118. 32

    Well, Congress wasn’t listening to the good professor

    The good professor was no match for the well-financed lobbyists with their large bri…, er, um, donations.

  119. 31

    Gee, somehow or another this sounds familiar.

    See Infringer’s Handbook, page 2.

  120. 30

    The problem with Duffles article is that it does not focus on inventors/companies/innovation and the effect the bill will have on them. Rather, the article focuses on the bureauocratic result. This is probably because Duffy doesn’t really understand patent law. The law school climbing to the higest rated school Duffy doesn’t really get it.

    The real message of this new law will be to squeeze out the small guy and make it easier for large corporations to get what they want from the PTO. Gee, somehow or another this sounds familiar.

  121. 29

    a few more citizens are employed by the Federal government

    Hellooooo. The Office could not even hire enough stooges in the “simple” times. Without the actual reform (patent examination process) this monstrosity of a bill will make it even more difficult for the Office to hire. Duffy points out ten concurrent processes that will be needed to be understood and applied.

    If anyone thinks the backlog is out of control now, just wait – it will double by the time Obama leaves office after his second term.

  122. 28

    Congratulations to 6, who has abandoned his futile law school attempts and now is aiming for the pointy-haired management track.

    Wanting an executive summary of a four and a half page story about a 140 page bill.

    How about a two word summary? Try:
    Bloated Bureaucracy

    Of course, there is an executive summary for even this too-long two word summary:
    Bad

  123. 27

    On second thoughts, Duffy is right. If the new FtF provisions create work immediately, yet a 20 or even 30 year generation must pass before the old First to Invent workload is finished (interferences and so on) then for the foreseeable future there will be all the old work to do, and all the new, all at the same time.

    After that though, there will be less work for us (that is, if we are all still here).

  124. 25

    I’ve had meetings, calls and dealings with public and state employees. Although many were professional, dedicated and clearly hard-working, a sizable minority would not last a week in private sector job (of course, unless the job is unionized).

    I’ve got nothing against the concept of unions as they’ve done a lot of great things, but current leadership appears only interested in expanding or maintaining head count at all costs and no longer have the long term interests of the individual employees in mind. Try getting anything done in a unionized building in NYC. Talk to anyone working at Yale University (some union employees punch in and disappear all day).

    Throughout our society we need to eliminate “Cannot fire” rules. On the other hand, we need shareholders to decide CEO pay, etc. It’s all common sense.

  125. 24

    You could replace “public employee” with “employee”. In my experience dealing with both public & private companies, I do not necessarily think that public employees are less productive, less friendly, or otherwise less worth their keep.

    Maybe it was different in the ’70s, but this is now. The private sector does not have the lead it used to.

  126. 22

    You were attacking a strawman, apparently. I never said that hiring government workers would reduce the deficit. I said that people who have jobs pay taxes and buy stuff. Do you disagree with that statement? I was ridiculing the big m0r0ns out there who use the deficit as an excuse to cause as much pain to the working class as possible, and the litle m0r0ns out there who carry water for the big m0r0ns (e.g., by crying about “big government” except when they need a bailout or help fixing their highways or putting out a fire etc).

  127. 21

    FYI – I’m a Democrat, or at least definitely not a Republican. I’m also not anti-Obama or unhappy having a Democratic president. And, I wasn’t referencing the federal deficit, only the deficit in your logic.

  128. 20

    Ha! That’s your best reply M&M? Fine, I’ll go back to watching Murder She Wrote re-runs.

  129. 19

    Why are we doing this to ourselves?

    See Infringer’s Handbook, page 1.

  130. 17

    Okay, Grandpa. Maybe take some time today to wash the cheetoh stains out of your Dittohead T-shirt.

  131. 16

    Net result, less money in federal coffers.

    Oh nooooo!!!!!! The deficit! It’s so scary. But only when the President is a Democrat.

  132. 15

    I get that Duffy is trying to persuade Repubs/Tea Partiers with his piece, but he should have published much sooner. The chamber controlled by that faction just passed the bill.

  133. 14

    They pay taxes and they buy stuff, but what percentage of them are productive? What percentage actually earn their pay and benefits? Not zero percent, but not close to 100%

    Ever try firing a federal employee? Even if commits fraud or engages in unethical behavior?

    Those clowns at the SEC simply resigned after being hand delivered damning evidence of Madoff’s crime.

    How about FEMA and Katrina?

    The gov’t is one giant “DMV” and provides a safe harbor for sloath and under-productive or non-productive individuals.

    NOTE: I’m not saying all public employees are a problem but we clearly need reforms.

  134. 13

    Professor Duffy has too much time on his hands now that school is out.

    He and IANAE should teach summer school. Assuming they are not one and the same.

  135. 11

    I fundamentally agree that the main vice of the new bill is complexity amplified by lack of conciseness and the use of new terms alien either to US patent law, or to the law of any other patent jurisdiction.

    In 1790, we formulated our first patent act on the English patent statute. When we did so, we also incorporated English common law interpreting that statute. We were not cast afield in unknown territory as we will be with the new bill.

    Over time, the vast bulk of statutory amendments largely attempted to codify the rulings of the Supreme Court. When we attempted to overturn Supreme Court case law, we unfortunately managed to do with unforseen consequences. Sections 271(c) and (d) are good examples. So to is Section 112, p. 6.

    But, never in our entire history have we done what we are about to do, enact a new patent law that is totally unprecedented anywhere in the world.

    Why are we doing this to ourselves?

    If we wanted FTF, we could simply have adopted the European system with all its case law.

    If we wanted a grace period, we could have retained the current one.

    The leaders of this revolution are true radicals who think they know better than anyone else how to craft legislation. We can only hope they are right, but I wouldn’t count on it. Not at all.

  136. 10

    It seems that Duffy’s chief complaint is that the bill would favor having more proceedings in the USPTO in lieu of letting those issues reach litigation. In other words, there would be more government bureaucrats… and *fewer lawyers*.

    Insert world’s smallest violin joke here.

  137. 9

    Ok I simply won’t hide it. In my opinion, and it ain’t humble, the United States Congress has not passess legislation that assists natural persons who are citizens of the United States since the 1960s. I have no faith in the Federal Government of the United States. they gave all our money to foreigners, they run guns to foreign paramilitary organizations that use them against our law enforcement. They have abrogated the civil rights of the citizens of the United States by allowing the Department of Homeland Security to exist. I mean does it really matter what we think. The Congress simply doesn’t care.

  138. 8

    Federal tax dollars pay a new federal employee a salary. Some small percentage of that salary goes back to the “fed” in income tax dollars. Net result, less money in federal coffers. And, no Malcolm, you didn’t limit your statement to employees of the self-funded PTO.

    Anyway…not important. But please do go away Malcolm. Get a job, get a girlfriend or a boyfriend or a dog, take up a different hobby…whatever…just please go away and stop annoying me on this board. I know it’s too much to ask, but one can be hopeful, right?

    Thank you.

  139. 7

    Well, Congress wasn’t listening to the good professor. 295 just voted against the Sensenbrenner attempt to keep First to Invent.

    I was not impressed by the Duffy piece but I was impressed by the cogency of the oral arguments from the likes of Smith and Sensenbrenner.

  140. 6

    I second essentially what you say Paul. But I wasn’t certain I wasn’t going to be speaking out of my arse when I typed up the comment so I just didn’t post it.

  141. 5

    Oh nm, apparently this author is just against expanding the office anyway simply on principle, because that is enlarging the bureaucracy.

    This essay gets 0.1 out of 5 stars on 6’s scale of awesome essays. He got the .1 because it was fairly well laid out. He lost 4.9 because substance simply wasn’t there.

  142. 3

    Not that this or most other legislation is perfect, but I do not see any supporting data here for “The proposed legislation would undeniably expand the size of the federal bureaucracy and increase the cost and complexity of the American patent system.”
    The whole point of patent reexaminations [which now take, and will still take, only a miniscule % of the PTO budget} is to reduce the vastly greater Federal court and public costs of patent litigation and “settlements” on invalid patent claims. Furthermore, the legislation would free up all the PTO APJ’s now spending their time on interference litigation. This legislation will also simplify and reduce the time now spent wrangling over defective Rule 116 declarations that frequently improperly “swear behind” earlier inventors applications. It would also eliminate all “best mode” disputes.
    When inter partes reexaminations were introduced in 1999 there were similar unfounded projections as to the extent of its future usage and PTO workloads, in spite of estoppels, other dangers, high fees, and limitations, most of which will still exist, plus adding higher theshold requirements for even starting . particular, Since PTO examiners do all their work electronically now anyway, and many now already work remotely from the Arlington VA, PTO building, which is reportedly already at capacity, why is letting some examiners have local sites elsewhere necessarily creating excessive staff or costs? Personal interviews will be much more convenient for many members of the public.

  143. 2

    “The proposed legislation would undeniably expand the size of the federal bureaucracy and increase the cost and complexity of the American patent system.”

    How about just giving us the executive summary of why that is rather than having us read a whole essay?

  144. 1

    the clearest reason for opposition can be stated in quite simple and stark terms: The proposed legislation would undeniably expand the size of the federal bureaucracy

    OH NO, THE WORST THING EVER!!!!!!

    God forbid a few more citizens are employed by the Federal government for a purpose other than dropping bombs on Muslims. Because you know happens when people have jobs, don’t you? They pay taxes and they buy stuff, which is the worst thing ever for the economy, especially right now.

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