Two-Minute Survey: The Impact of Patent Reform

Please take a couple of minutes to complete this survey on the impact of the proposed patent reform measures:

Background: Patent reform measures have been passed in both the House and Senate that would, inter alia:

  • eliminate a patent applicant’s ability to swear-behind prior art based upon prior invention;
  • grant rights to the first-inventor-to-file a patent application;
  • create an additional post-grant opposition program;
  • eliminate the one-year grace period for third-party disclosures;
  • provide the PTO with some additional ability to set its own fees and to spend the fees collected;
  • make it easier for corporate patent owners to file applications associated with non-cooperative inventors;
  • eliminate best mode failure as a litigation defense; and
  • eliminate the incentive to sue for false patent marking.

Supporters of the reforms have made various announcements regarding the impact of the patent reform measure as proposed. These statements include: “Through patent reform, we can cut the red tape that stops too many inventors and entrepreneurs from quickly turning new ideas into thriving businesses.” And that the reforms “are expected to create 200,000 new jobs;” “will simplify patent law;” “will streamline the patent system;” and “represent the first major overhaul of the U.S. patent system in 60 years.”

Link to the Survey: http://www.surveymonkey.com/s/YGP3JR9

101 thoughts on “Two-Minute Survey: The Impact of Patent Reform

  1. Keep in mind that Kappos was pushing this legislation long before he got to the USPTO, while still in a senior position at IBM.

  2. I most emphatically do NOT have to agree.

    The current legislation is a hodge-podge at best concerning BMPs driven by bank and tax concerns and fine tuned cut-out exceptions.

    There is decidely NO condemnation of BMPs overall (and BMPs continue to defy any explicit definition).

    There is decidely NO condemnation of the State Street Bank decision, either in the bills themselves or the Congressional Record.

    You will note that the current sections of the Patent Act – and those explicitly cited in the Bilski decision – are left intact and maintain the force of law. You are no doubt aware that such action does in fact validate the Supreme Court view on this matter, and that view is not to your point at all.

    If you are privy to some actual and explicit record of substance stating otherwise, please provide it – otherwise, I view your post as mere posturing.

  3. Justin, but you do have to agree that Congress is anything but happy with State Street Bank, and wants all BMPs reexamined under the new Bilski standard.  That is the upshot of pending legislation that has all but passed Congress.  There is no way that you can believe that Congress is anything but perturbed by State Street Bank.

    Thus my point.  Rich lead the charge on expanding the scope of 101 subject matter, but he went too far and his work has now been "recalled."

  4. How, exactly, are you turning a largely bi-partisan bill into a political statement against Obama? Please note that on March 8, the Senate passed the “America Invents Act” (S. 23) by a vote of 95-5. You think it’s a miserable failure of a reform? Fine. It’s the most wonderful thing since sliced bread? Also fine. I don’t really care where you stand on politics. Pick your favorite political forum and let the barbs fly. This is about patent law.

  5. Max, but it does raise the issue that if a claim is broad enough to encompass all means for achieving a result, it should be analysed as a process claim. If the steps together provide a new result not known before (novel and unobvious), then it could be patent either as a process or as a machine, article or composition — as well.

    Interesting.

  6. Hardly, Congress chose to limit the damage

    For all the posturing, Congress could have easily, and decisively, stated that business method patents were outside the scope of Patent Law.

    Such would have been in accord with your view and with the view of Stevens.

    They did not.

    As it is, that view simply is not in accord with the law.

    You are confused because you are searching for some affirmative endorsement that will not be forthcoming. Does Congress habitually affirmatively endorse any sector or specific art field to the level that you search for in business methods? The answer is no. It is a mistake on your part to then apply the logic that you attempt to apply.

  7. Chose instead to sanction them? Congress?

    Hardly, Congress chose to limit the damage, just as they did when patents began to cover medical procedures. Now they have flatly outlawed tax method patents, a category of business methods; and thrown business methods into the “grinder” with a host of new review procedures. This is not “endorsement.”

    Next both the Feds and the Supreme Court, the latter unanimously, “held” (dicta from the Supremes) that “useful, concrete and tangible” test of Alappat and State Street Bank was not a good test. But that is Rich’s test.

    Congress may have gone further than it did had the Supreme Court not endorsed the Fed. Cir. reversal of those two “Rich” cases.

    To even suggest that Congress has endorsed the Rich line of cases on 101 is a laugh. No one does, except, perhaps Rader and Newman. But they are in a definite minority at this juncture.

  8. I take it the “barrier” could be any barrier that could work, not just an equivalent of the disclosed barrier.

    But, this is an equivalent to a process claim, because in a process claim it is the act of separation which is important, not the means.

  9. But unfortunately, with stare decisis, that’s exactly possible

    Fixed. Brush up on what stare decisis means.

  10. Move on? I’m sure that’s what we would all like to do. But unfortunately, with stare decisis, that’s just not possible, is it. Until SCOTUS tells us more, we are all stuck with such pearls of its wisdom as we can discern from its Bilski opinions. All of them.

    Is that not so?

  11. “in Bilski, one of the chief arguments for business methods being patentable was that Congress had the chance to expressly outlaw them and chose instead to sanction them”

    In that case, no wonder then, that the court was split 5:4 on the issue. With 9 votes, you cannot get closer to “no opinion at all” than a 5:4 split.

  12. And, it was not with approval.

    This is clearly debatable. In fact, in Bilski, one of the chief arguments for business methods being patentable was that Congress had the chance to expressly outlaw them and chose instead to sanction them.

    While State Street has its issues moving forward, I believe this is infact more due to the fact that the Supreme Court is in a p_1ssing match with the CAFC and has taken an almost perverse anti-brightline stance to whatever the CAFC tries to do in bringing order and clarity to patent law. The Supremes, it seems, want to make each case depend on the unique circumstances of that particular case, thereby demanding an exhaustive and time-consuming deliberation and thus inexoribly leads to a backlog situation. Or do you disagree that the Supremes have taken an Anti-Brightline stance?

  13. Diligenxce is precisely what will matter more than ever under the new statute.

    I can understand opposing a lot of things in the new legislation, but opposing FTF is silly.

  14. $100 cheapo provisionals are not effective. A number of CAFC decisions requiring them to meet all the standards of nonprovisionals have seen to that.

  15. “Second, what other system has produced the level of innovation we take for granted in the U.S.? No one. And the reason is that our grace period (particularly the § 102(a) prong) lets an inventor go out and talk to people, to find investors, to get a business going, before draining funds to the patent lawyers. It lets an inventor get through the trial-and-error-error-error of R&D before draining funds into patents on inventions that turn out to be duds.”

    FTF does not change this in the least. Why do you believe it does? 102(f) already precludes theft and if someone else independently reduces your invention to practice or an obvious variation thereof, you don’t get to back date it. You will have constructively abandoned your invention if you sit on it (looking for investors or whatever) for more than a year under the current system. I AM NOT TALKING INTEREFERENCES. You will lose in court if you try to claim you invented first regardless of when your RTP date is.

  16. Ned for the classic “problem invention” case at the EPO go to the EPO website and download Decision T_0002/83 Simethicone tablet. One of the very earliest Board of Appeal Decisions. You will also see that the list of forward cites, to later EPO Decisions that cite T2/83, is longer than the list of prior art references in a hot issued US patent that were not cited by the USPTO.

    As you will see, we are still not on the same page. What I understand as a “problem invention” has nothing to do with categorising that invention as a series of apparatus means or as a series of process steps.

  17. Max, Risdon has a pretty good discussion of when one has invented just a machine and when his discovery is far broader than a machine.  That actually was the point of the case.  The Supremes noted the very long debate over the Neilson patent of Great Britain.  Was it a machine or was it a process?
     
    Because the principle involved was broad, the Supreme Court determined that it was a process, independent of the machinery.  Had the process been known, the patent would have been only for the
    machinery disclosed and their equivalents.

  18. Risdon Ned? Was that the claim to a pulley, perfectly balanced? All ways to achieve a desirable result?

    In that case, we are not on the same page. Sorry if I did not make myself clear.

    Are you telling me that, before Risdon, nobody had appreciated that the centre of gravity and the axis of rotation, in a pulley, should be co-incident. Even Fed Flintstone’s wheelwright knew that much, didn’t he?

    When I write about an EPC “problem invention” I mean what I say, an invention that lies in pereceiving the problem. Even Fred Flintstone’s wheelwright would have found obvious the “invention” claimed by Risdon.

  19. “As an “academic”, it immediately occurs to me that if fewer people are using such a resource, it might be an indication that fewer wrongs need to be made right.”

    Classic “post hoc ergo procter hoc”

    The plain fact is that getting to the bottom of a patent dispute is HARD but IMPORTANT. Its a task that few in the ROW are prepared to take on – believe me, I’ve seen it. In most of the ROW form takes precedence over substance. No one wants to be bothered, particularly in “loser pays” regimes.

    Here in the U.S. there is still the, albeit often times seemingly remote, prospect of getting to the truth. Even notwithstanding the arcana of, say, claim construction, U.S. patent law, as it presently stands, is capable of discerning subtle differences in invention and priority and providing the best chance that game changing inventions brought about by agile business entities and individuals can give rise to new industries. Otherwise, be prepared to live with the iPad 2 and things that look exactly like it for the rest of your lives.

  20. Just, but you mistake on which side Rich is. He is on the side of the “error” that has to be corrected.

    When In re Donaldson, another Rich atrocity, was announced, both the AIPLA and the ABA patent law committees called for its reversal, by legislation.

  21. If the Supreme Court has passed a verdict, providing an interpretation of the law that Congress itself has passed, and then Congress takes up the matter again and corrects the Court as to what it really wants, how then is this track not to be the track?

    We have heard in every Supreme Court case the mantra of Congress choosing BROADLY with the words “any” and such. We have seen over and over again the Court attempting to limit that BREADTH. We feel, again and again, the tension between the two. But let’s not forget just who has the authority to write the law and who has the responsibility of interpretating the law.

    There is no need to label one side “villainy” – breadth and indefiniteness are not the same, and perhaps the “machine doctrine” is what is “villainy” as that word merely expresses a subjective value statement.

  22. Ned, Europe recognises patentability in subject matter which can be labelled a “problem invention”. These are cases in which the inventive insight lies in conceiving and then clearly, directly and unambiguously communicating in the specification what is “the objective problem”; cases where also the following implementation of a solution to that problem is nothing more than routine work for the PHOSITA who has been appraised of the problem.

    For such a ground-breaking insight, and contribution to the art, it might be commensurate to permit the inventor the exclusive right to ALL solutions to the said problem.

    Such cases are awfully rare, in Europe. But they do exist, and patent law should allow for them, in order to promote the progress by awarding scope commensurate with the range of the contribution to the art. When implementation is routine, any specific implementation is obvious. The more insightful and non-obvious the contribution, the more it should be encouraged and rewarded, no?

    How does that thinking fit with inventors like, say, Samuel Morse?

  23. The Supreme Court does not believe so. He was reversed in Benson, and now Alappat and State Street. His view of Section 103 was not adopted. And the beat goes on.

    Have you read Tarzny-Hornock? He really did not get the function of a machine doctrine, for if he had, he would have understood that is views of Halliburton were way off base. The function of a machine doctrine was just this: having invented one machine to perform a new function, one could not claim all machines for performing that new function. That doctrine goes back Wyeth v. Stone, a Storey case. From Risdon Iron & Locomotiev: “…a valid patent cannot be obtained for a process which involves nothing more than the operation of a piece of mechanism, or, in other words, for the function of a machine. The distinction between the two classes of cases nowhere better appears than in the earliest reported case upon that subject, viz., Wyeth v. Stone, 1 Story 273, in which the patentee claimed as his invention the cutting of ice of a uniform size by means of an apparatus worked by any other power than human. This was said to be a claim for an art or principle in the abstract, and not for any particular method or machinery by which ice was to be cut, and to be unmaintainable, in point of law, although the patent was held to be good for the machinery described in the specification.”

    Among the loudest of the complaints about American patents is that they are indefinite. If they are, the greatest villain in that story is none other than Judge Rich.

  24. Would it not be a fair thing to say that what Rich believed is not off track, but rather the track?

  25. Max, you make me cry for my country, and jealous of the wisdom of Europe — at least on this issue. Time and again, you Euros have gotten it right.

    That said, I think what I wrote is consistent with Supreme Court case law on this topic. See, e.g., Holland Furniture Co. v. Perkins Glue Co., 277 U. S. 245, 277 U. S. 256-257 (1928); General Electric Co. v. Wabash Appliance Corporation, 304 U. S. 364 (1938); Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).

    It however is inconsistent with Federal Circuit case law that holds that if a claim can be construed, it is definite. But whether a narrowing construction should save the claim was the precise issue before the Supreme Court in Halliburton, and the Supreme Court rejected the idea that a narrowing construction would save the claim.

    Surprisingly, in a recent petition to the Supreme Court involving definiteness, the US Government sided with the Federal Circuit! and suggested that cert be denied. I think they were wrong to take that position and I think the Federal Circuit jurisprudence in this area of law is flatly wrong.

    I believe the Feds got way off track on this issue because of Rich, the co-author of the ’52 Patent Act, who believed that Section 112, p. 6, overruled Halliburton.

    I don’t think that it did, as there is nothing in that statute that addresses the precise issue before the court in Halliburton, nor did anyone think that 116, p. 6 overturned Perkins Glue or Wabash Appliance.

    But Rich was on the Federal Circuit, so his views have become the law. But, he is no longer on the court and it is high time that the Federal Circuit took a careful review of its jurisprudence in this area, just as it did with Section 101 in Bilski, where it effectively reversed two other Rich-inspired cases, Alappat and State Street Bank.

  26. Gene you are finally going to make the big time. Your name up in lights. With the likes of……Slander that’s your Job. But inferences on who you mirror will be an easy take for the readers.

  27. Ned your first para describes the substantive provisions of patentability/validity under the European Patent Convention. See, inter alia, Articles 83, 84 and 69.

    Was that intended? Because the EPO’s MPEP has a lengthy section about when functional claims can be allowed.

    Perhaps EPO clarity on these issues comes from making its own jurisprudence, and not having to swallow that laid down by any supervisory, well-meaning but inexperienced, alien national court of appeal energetically scribbling the law as it sees it, on tablets of stone.

  28. One who does not use a mask does not lie.

    That is either the biggest lie or Ned does not understand human behavior.

    Seriously Ned, You have never met a person that would lie to your face?

  29. Hypothetical:

    Assume the law required claims to be clear and distinct, to clearly set forth the boundaries of a claim so that one did not have to guess as to their scope to determine what was included or what was excluded. Assume further that for the purposes of definiteness, the claim terms would be given their ordinary meaning and they would not be limited to the corresponding structure, steps or materials recited in the specification, and particularly not to any equivalents of these.

    Given this assumption, I would like to make the following proposition: cannot claim a machine, an article of manufacture, or composition in terms of what it does or in terms of the results it achieves because such claims would be indefinite in every case. Such claims would literally cover subject matter not described in the specification, i.e., they would literally cover other subject matter that could achieve those same functions or results without using of the structure, steps, or composition of matter described in the specification.

  30. There is no valor in lieing with impunity, smearing and libeling others without a mask.

    Stop being so self-rightous – you do not deserve to be so.

  31. Hiding behind a mask, dear Sir, allows one not only to lie with impunity, but to smear and libel others with impunity.

    I think we all know why you hide behind your mask.

  32. Indeed.  For this reason he may not be capable of understanding why the patent system needs a strong grace period for startups.  IBM was anything but a startup.

  33. Hiding behind a mask is a form of a lie, no matter how you try to paint it.

    Call BS on this. The history of pseudonyms includes many of the brilliant minds of the founding fathers, especially the development of the Federalist papers.

    This is just another example of Ned’s lies, because, after all, this is only a blog and blatant misrepresentations are OK here per Ned: “We can be blatantly dishonest all we want

    Ned = BS

  34. David Boundy,

    I was trying to show a simple example of how the gutted grace period will kill a start-up.
    We may agree on 112. Let’s see.

    For fully enabled: prior art search/analysis with multiple iterations on claims/spec/drawings.
    Roughly $10-20k per PPA that’s fully enabled like a NPA.

    Plus creative time-hits.
    The “creative flow” will be killed.
    The creatives will revolt/leave due to the waste PPA’s.
    Interaction with outside parties will be delayed (continually waiting on the latest PPA’s).
    Time to market, greatly increased.

    Funds drained before a winning solution is found.

    Innovation killed … by cost and delay of waste PPA paperwork.

  35. And I never said lying was ever “excusable.” I just said that there is no “legal” obligation to tell the truth in a forum dedicated to opinion. For example, just who the heck are you? Hiding behind a mask is a form of a lie, no matter how you try to paint it.

    As for credibility, now there you have it. If a person lies, he will be found out and will lose credibility among his peers. That is a social penalty, and a good one. But it is personal.

    But with a public official, lying has consequences to good public order.

    I find it remarkable, he who hides his identity and who is a fraud for that reason, that still you have not uttered one word of condemnation of Kappos to the extent he has lied in order to advance his personal agenda and the agenda of his former client. You continue to attack me instead. This tells me that you have your priorities backwards. You really can’t tell right from wrong can you?

  36. Ned,

    Seriously, if you do not know the difference between “people who only expressing their opinions” and “We can be blatantly dishonest,” then it is you that has the screw loose and your priorities completely out of whack.

    There is a world of difference between opinion and dishonesty, and there is no excuse EVER for dishonesty.

    EVER.

    You have flushed whatever credibility you thought you might have right down the crrpper. There is no way that anyone can trust anything you say if yo believe that it is OK to be dishonest because we are merely “expressing opinions and discussing issues of patent law.”

  37. Huh?  You frown on people who only expressing their opinions and have no obligation to tell the truth but have nothing at all to say about deliberate lying by government officials whose lies have major public policy ramifications?  

    Mein Gott! you do have a screw loose and your priorities completely out of whack.

  38. Set it alight in the waste basket quickley before the demented that created it find even more invention retartive provisions. Get a comittee of inventors not block heads to draft human advancing progressive legislation like you can find on my website and in these blogs

  39. it is far easier to file a truckload,

    But you might miss one! A truckload is hardly sufficient to hold every piece of prior art in the world, which is what many commenters said needed to be done to avoid an IC charge.

    In fact, if you are only filing a mere truckload of references, you might as well just admit to committing IC. I guess that was before Therasense. Maybe now a truckload would be okay.

  40. We do not have a duty to speak honestly. We can be blatantly dishonest all we want because all we are doing is expressing opinions and discussing issues of patent law.

    That about says it all (and no, that is not a good thing).

  41. I am not talking so much about Quinn or anyone else has a blog or who posts here or anywhere.  We do not have a duty to speak honestly.  We can be blatantly dishonest all we want because all we are doing is expressing opinions and discussing issues of patent law.

    Kappos is a whole different kettle of fish.  I did not accuse him of anything, BTW.  I am simply reacting to the statement by others that Kappos deliberately misrepresented the facts in his public statements in advocating patent reform.  

    Regarding Malcolm and New Light, I have no idea what you are talking about.  

  42. and if he develops a reputation for dishonesty, his audience will vanish.

    That’s why his blog was ranked higher than Patently-O this year.

    That’s why he has high quality interviews with the main players in the patent world.

    That’s why he curbs the falsehoods, the manipulators and those who post in obfuscation and deliberate misinterpretation.

    Ned, are you speaking from direct experience on the vanishing audience trick?

    Before you so rudely go accusing (can you say slander?) of anyone in a public office (or otherwise) of being dishonest, of deliverately misrepresenting facts you had better look in the mirror and change your ways.

    A New Light posts about ethics and “duty” and is slammed by your pal Malcolm. I have no illusion that Malcolm cares at all about such ethics – but he also does not wear his royal indignation on his sleave as you do.

    You sir, are a hypocrite.

  43. What’s especially weird about seeing such statements HERE is that this is the same place where people are (were?) adamant that it’s malpractice to file an IDS reciting less references than are housed in the Library of Congress. I mean, I thought people were really careful.

    Dolt. Do you not realize that the reason for the massive IDS filing advice was that you did not have to be so careful, that it is far easier to file a truckload, than to worry about what some future broadest (UN)reasonable interpretation of a cavalcade string of references under a key word 103 rejection may entail?

    THINK a little before you hit the “Post” key.

  44. Quinn can say anything he wants. He is a member of the public and if he develops a reputation for dishonesty, his audience will vanish.

    Kappos on the other hand has a duty, as a member of the government, to speak the truth, especially when he is advising Congress, whether he is under oath or not. I frankly find it shocking, if what I hear here is true, that Kappos would deliberately lie, or misrepresent, facts to Congress in order to further the interest of the patent reform bill, under circumstances where his former employer stands to benefit from the passage of the bill at the expense of those who the are harmed, or at least believe they are harmed, by the patent reform bill.

    Kappos is supposed to represent us, the American people, equally. He has the duty to speak honestly. Period.

  45. You favor “the ends justify the means?” You favor “Might make right?” You favor dishonesty?

    Seriously, Ned?

  46. willing to allow the claims I want

    from this perspective, this looks like some serious goal post moving.

  47. Boundy many provisionals are filed today with much less than that, and they have legal value–they establish a date of invention, if not a § 112 ¶ 1 filing date.

    They are *evidence* of a date of invention, depending on how the invention at issue actually defined.

    “Legal value” is a pretty meaningless term. Lots of things have “legal value” but have zero monetary value. Very few players in the patent game are interested in inventions that have only “legal value.”

    The arguments about “being more careful” about disclosures under the future regime still sound very strange to my ears. My clients are advised continually to be very careful about disclosures now. After all, there is no grace period in the rest of the world and there are plenty of people in the United States happy to take your “disclosure” and file on it so they can fight about the real inventor later.

    What’s especially weird about seeing such statements HERE is that this is the same place where people are (were?) adamant that it’s malpractice to file an IDS reciting less references than are housed in the Library of Congress. I mean, I thought people were really careful.

  48. Again – perspective.

    Yes, perspective is very important. If the examiner is willing to allow the claims I want, I’m perfectly happy to admit that he’s right.

  49. Ned, that depends on how you define “we.”

    If by “we”, you mean anyone that wants to weaken the US Patent (for example, foreign patent system advocates; large international corps that really don’t like patents anyway and would rather rip off the inventions of small innovators; or academics who have a natural bias against personal property in general, are on certain payrolls, or both), then there are plenty of reasons why “we” want HARMonization.

    It’s quite obvious.

  50. OK.  Then they can lie with impunity and that is OK?  You favor "the ends justify the means?"  You favor "Might make right?"  You favor dishonesty?

    Who are you?  

  51. Alun, how does harmonization benefit the US? Take any issue, any. It seems that in every case, the US inventor is disadvantaged by the move to FITF vis-a-vis the foreign inventor.

    I don’t get it, really. Why in the world should we want harmonization?

  52. I don’t think the things that David Kappos and Gene Quinn have been saying require an oath in the first place.

  53. A huge number of appeals is a clear sign of a broken system.

    Yes – but not in the manner that you post (Mr. I Am Not An Examiner But The Examiner Is Always Right).

    Again – perspective.

  54. As a professional, I was viewing this as an issue because litigation is a resource to help make right that which is wrong.

    As an “academic”, it immediately occurs to me that if fewer people are using such a resource, it might be an indication that fewer wrongs need to be made right.

    Also, when I do whatever academics do that they think is actual patent prosecution, I’d much rather come to an agreement with the examiner than appeal, even though appeal is a “resource to help make right that which is wrong”. Because it’s better for everybody if things don’t go wrong in the first place. Ounce of prevention, and all that. A huge number of appeals is a clear sign of a broken system.

    But if you want to see more people fighting just so you know they’re settling their differences, go right ahead.

  55. Perspective is everything.

    As a professional, I was viewing this as an issue because litigation is a resource to help make right that which is wrong.

    As an academic, you see this as a chance to make a snide anti-attorney joke.

    Back to the tower with you.

  56. Considering that in the ROW, patent litigation is non existent

    You say that like it’s such an awful thing.

    I suppose it would be, if you happen to litigate patents for a living.

  57. And I quote
    On Oct. 19th I was told to sign and send it back. Do not date it He said! Now I find out the reason he said that is because it needed to be Notarized! He never told me to Notarize it! So now the Signature was probably used somewhere else and the Document was invalid on purpose! More Fodder now I have numbers, being told to sign and not date the Document, then told to tear it up, then we have Sept. 25, 1996….. on and on.The torn Check. And the Bank cashing it.
    So did he lose his License because of the Fake Patent or was it the Oath.. Why was he the only one? 10 Years for a fake Patent… What about an Oath that was Bogus by design?
    Does anyone have an answer to what that Crime entails? Could someone tell me that?
    And imagine I Notarized the proof that my Application was out there being infringed by Him … Is that why finally someone picked up on what THEY did to me.

  58. I have a real question for Alun regarding “harmonization”

    Why is it “long overdue” and why harmonize at all? Considering that in the ROW, patent litigation is non existent and prosecution is a joke.

    I expect a real response.

  59. I agree with you, Malcolm, to the extent that a full § 112 ¶ 1 application is clearly better, even under today’s law. But many provisionals are filed today with much less than that, and they have legal value–they establish a date of invention, if not a § 112 ¶ 1 filing date.

    The ignorant parties here are David Kappos and Gene Quinn, who have been telling Congress at every turn that inventors won’t be harmed, because they can file provisionals for $100. You know that isn’t true, I know that isn’t true, but that’s the misinformation that’s been used to sell this baloney.

  60. Here, wear my glasses.

    What do you mean, you cannot see? They work for me. There must be something wrong with you.

  61. Boundy Under the new statute, conception and diligence are irrelevant. The only thing that matters is a specification that’s in full compliance with § 112 ¶ 1.

    Many of us have been practicing this way for years as we believe it is malpractice to file applications that do not provide adequate written description support for the invention. This is especially true for applicants who intend to seek IP protection overseas.

    Apparently David Boundy has a different view.

    Your mileage may vary.

  62. Inventor0875 — you fell for the misinformation of the proponents. A “many provisional” strategy won’t work.

    Under current law, $100 cheapo provisionals are effective, because they tend to show conception and diligence. Under the new statute, conception and diligence are irrelevant. The only thing that matters is a specification that’s in full compliance with § 112 ¶ 1. That’s going to be expensive.

    Another stake in the heart of American innovation.

  63. Alun, please explain. Why is a partial harmonization any good?

    As you know, a partial harmonization benefits nothing. For example, have you ever asked your U.K. counsel to opine post-issue on all family members of a European patent? They can’t do it. Because European infringment and validity determinations are made under national law, and there are differences, even those small differences in law mean that a lawyer in one jurisdiction can’t opine on a patent in another. “Harmonization” only buys something when the law is unified, as we have among the fifty states, or during prosecution phase in Europe. Believing that a partial harmonization buys you more than a miniscule benefit requires a good deal of counter-factual thinking.

    Second, what other system has produced the level of innovation we take for granted in the U.S.? No one. And the reason is that our grace period (particularly the § 102(a) prong) lets an inventor go out and talk to people, to find investors, to get a business going, before draining funds to the patent lawyers. It lets an inventor get through the trial-and-error-error-error of R&D before draining funds into patents on inventions that turn out to be duds. My European colleagues all tell their clients that they’re locked down, they can’t talk to ANYONE outside the company until they have patents filed. Fine if you ARE a big company with all the resources in house, totally unworkable if you need to partner with an investor or strategic partner. The bill puts the loss of patent rights totally at the mercy of events you can’t control, so you have to assume that there is no grace period, so inventors have to file prematurely, or just give up if they can’t raise the money to file before seeking an investor. The new bill takes away the options that innovators use and need, and replaces it with protections for market incumbents.

    The new bill takes out all of the requirements that inventors and attorneys act “without deceptive intention.” Why is that good for the system?

    The new bill gives the PTO the power to set fees to penalize complex inventions. Remember the continuations and claims and IDS and Markush and Appeal rules of 2006-08? Remember the exponential fee structure of 2003? They’re coming back. I was talking to a PTO senior staff person, someone who knows my role in killing the 2006-09 rules — he frankly acknowledged that the PTO is planning to use fee-setting to throttle back its workload. He knew he could be pretty snarky with me on this issue, because he can see he’s going to get the last laugh.

    Patent bar, in case you haven’t gotten the message, this bill is going to cost a lot of jobs — not just technology jobs, YOUR JOBS.

    Call your senators, get your clients to call their senators. We don’t need this bill.

  64. As an inventor and start-ups, I am most concerned about the gutting of the grace period, especially loss of the 1 year “grace insurance” on any accidental/unintended disclosure to unknown or non-cooperating third parties. Secondarily, I am also concerned about the possibility of stolen inventions under First-to-File.

    Even the smallest public disclosure may now become fatal. We will become more cautious and formal.

    Start-ups because of their limited resources require more collaboration and interaction with outside parties. To be fully protected we will now need to file PPA’s on our constantly evolving solutions, prior to each interaction with outside parties.

    Consequently, we will need to file earlier and more often. We expect to file perhaps 10 to 100 times more PPA’s [hopefully fully 112 enabled] … on each continually evolving solution.

    Most of these additional PPA’s will be wasted effort, as many of these “seemingly great” solutions will later be found to be useless tangents/deadends or were only an intermediate step/piece of the final winning solution.

    Creativity [free/loose/chaotic] may be impacted, by imposing PPA “formal framing” so earlier in the process.

    Innovation (moving to market) may slow due to the delay and effort/dollars spent on continually filing “wasted” PPA’s.

  65. Has anyone paid attention to the manager’s amendments to the House version? You should.

    link to judiciary.house.gov

    There is a lot in there to pay very close attention to, particularly because everyone seems to be expecting the House version to be adopted.

  66. “patent reform”

    Just because they call it “reform” doesn’t mean it is.

    The patent bill is nothing less than another monumental federal giveaway for banks, huge multinationals, and China and an off shoring job killing nightmare for America. Even the leading patent expert in China has stated the bill will help them steal our inventions. Who are the supporters of this bill working for??

    Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. The bill will make it harder and more expensive for small firms to get and enforce their patents. Without patents we cant get funded. Yet small entities create the lion’s share of new jobs. 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. Those wishing to help in the fight to defeat this bill should contact us as below.

    Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors.

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

  67. It is about harmonisation

    Except this does not harmonize. This has been pointed out only like a bajillion times.

  68. I disagreed on most questions, but put that I strongly support the change. Why? It is about harmonisation, which is long overdue, and not about any of those other issues.

  69. I don’t get it. Why do people keep saying this would change the system to first-inventor-to-file? That is patently false. Please read the exceptions that completely change the rule:

    ‘(b) Exceptions-
    ‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–
    . . .
    ‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    ‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
    . . .
    ‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; . . . .

  70. The last one is excellent. The only people that should be worried about false marking should be those involved in that Patent.
    And come to think of it this is a good thing. The American Inventors Association is totally for this I am sure. A few more good books out there in Patenting it yourself is a good thing. Hopefully the Inventor that files his own application is going to be way better off if he does it himself. And then after that if he feels the need for a Lawyer, they hope for the best.

  71. I wrote my congressman. Enjoy the BS response:

    “Thank you for contacting me with regard to H.R. 1249, the proposed America Invents Act. I appreciate the opportunity to respond.

    As you may know, the House of Representatives passed H.R. 1249 on June 23, 2011 by a bipartisan vote of 304 – 117. This bill would make several changes to the U.S. patent system. Among the reforms included in this bill would be moving to a first-inventor-to-file system whereby the first person who independently invents something and files with the Patent Office is awarded the patent.

    Furthermore, the bill would ensure that the Patent Office has the necessary resources to accomplish its mission. The goal of the legislation is to ensure the patenting process is efficient and that inventors have greater certainty of being awarded a patent for novel inventions. Both of these goals are crucial to encouraging innovation and ultimately job growth, particularly in fields such as the life sciences which rely on the development of new products. As such, I was happy to support this bill and I am hopeful that the reforms contained in it will help promote much-needed economic growth.

    Again, thank you for sharing your thoughts on this issue. If I can be of any assistance to you or your family in the future, please do not hesitate to contact me.

    With kind regards, I am

    Sincerely,

    Jim Gerlach
    Member of Congress

  72. 1914 Ned. That’s ages ago. I do not know what the obligations were, exactly, so I don’t have any view. Sorry.

    As to GW, thanks for the nudge. Context is all. It makes sense, that GW, as a statesman, would have wished at that time to influence public opinion away from a unwise or ill-judged decision to entangle the people unnecessarily, immorally, injudiciously (or even unlawfully) in any war across the seas.

    For “politics” read “war”. Is that it? Do I see it right?

  73. Perhaps George Washington was happy to stay out of the Napoleonic wars.

    By the way, what are your views of England’s obligations to Belgium and France in August 1914?

  74. I have made an appointment to see my psychiatrist this week. Thanks for reminding me about my deluded state.

    P.S. I am having treatment for irony too.

  75. For the record: all my comments were strongly NEGATIVE on this oxymoronic so-called “patent law reform” legislation. Anyone who believes the AIA is “reform” is delusional.

  76. GW (reminds me of Margaret Thatcher’s views on whether the UK should have any connections with “Europe”) does not say whether “commercial relations” is a good thing or a bad. Am I to understand though, that “relations” are a good thing but “connections” and “engagements” are bad?

    Is it OK to have “political relations” with other countries? Is the Paris Convention on patent law acceptable to the USA. Membership is not compulsory (but I do not know of any case of a Member State rescinding its membership).

  77. “it’s an absolute piece of $hit…”

    I second the motion. And it should be no surprise that one of Leahy’s largest contributors is Time Warner – who has dreams of expansion in China.

    The America Invents Act is great for China but terrible for the U.S.

    “The great rule of conduct for us in regard to foreign nations is, in extending our commercial relations to have with them as little political connection as possible. So far as we have already formed engagements let them be fulfilled with perfect good faith. Here let us stop.” — George Washington, farewell address, 1796.

  78. What do you mean in question 1 about “major overhaul”? If by “overhaul” you mean “change”, then yes, it’s pretty major. If by “overhaul” you mean “improvement”, then no, it’s not – it’s an absolute piece of $hit. Change for change’s sake, no matter how bad – a very Obamian kind of thing.

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