Google and the smartphone war!
- Google is upset with Microsoft, Oracle, and Apple in respect to the Nortel and Novell patent purchases. Google is claiming that the companies listed above and some other companies are trying to make it more expensive for phone manufactures to license Android phones. Google claims that these companies are seeking a $15 dollar licensing fee for every Android device. With more than 550,000 Android devices activated every day; these companies receive millions of dollars in licensing fees on a daily basis. Google states that these companies do not want to compete, by building new features, but instead fight through patent litigation. [Link]
The USPTO wants your input!
- If the Leahy-Smith Act is enacted, the USPTO will need to undertake a series of rulemakings to implement the Act. Because several provisions of the Act require implementation within a period of one year from enactment, expeditious rulemaking proceedings will be required. Given this tight time frame, preliminary input from our stakeholders and the public on implementation of the key provisions would facilitate this process even before the legislation has been enacted. The USPTO has posted their views of the Act, and would like input on the following topic areas in the Act; Patents, BPAI, Fees and Budgetary Issues, Congressionally-Directed Studies and Reports, and Miscellaneous. [Link]
Is re-examination unfair?
- Former Senator Birch Bayh recently wrote an article (and a letter to Kappos) discussing his concerns with the re-examination process. Senator Bayh co-authored the U.S. Patent and Trademark Laws Act (Bayh-Dole Act) that was enacted by congress in 1990. Senator Bayh is concerned about large companies using the re-examination process as an unfounded tactic to attack smaller companies. Senator Bayh stated that "when Senator Bob Dole and I joined to pass ground-breaking legislation on patents, the U.S. Patent and Trademark Laws Act, we never intended for it to allow malicious attacks on patents or to create an incredibly uneven playing field for small inventors." Senator Bayh concern is particularly directed to the Lockwood case, in which Lockwood sued a law firm because he felt like they requested a sham re-examination. The court ruled that, the federal patent law preempted any action in state courts. [Link] [Kappos Reply] [Case summary]
Patent Jobs:
- Panduit is seeking a patent attorney with 2 years of experience and a background in electrical engineering. [Link]
- Gibson & Dernier is seeking a patent associate to work at their Woodbridge, New Jersey office. [Link]
- Choate, Hall & Stewart is looking for an attorney or patent agent with an engineering background and 2 years of experience. [Link]
- Sandia National Laboratories is searching for a patent & licensing attorney with 3-7 years of experience. [Link]
- Monsanto is seeking an assistant general counsel with 3 years of experience and a background in the life sciences. [Link]
- Verenium is searching for a patent agent with a background in life sciences and at least 5 years of experience. [Link]
- Amin Talati is seeking a patent attorney with 10+ years of experience and a background in the life sciences. [Link]
- The Marbury Law Group is searching for a patent attorney with an electrical background and 2-8 years of experience. [Link]
- Qualcomm is seeking a patent research librarian with a MLS and 3 years of experience. [Link]
Upcoming Events:
- The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
- American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
- C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
- IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.
Senator Bayh is correct to have concerns about patent reexamination; the situation is ripe for abuse, especially for harassment of smaller entities by larger ones. That is one reason why presumption of patent validity is so critical. Fortunately, the Supreme Court’s recent ruling in favor of i4i guaranteed that at least small companies aren’t completely defenseless against “reexamination trolls.”
Way way way TL;DR.
3% effective quality rating at the cost of $2.7 billion dollars?
To me, I can think of only two reasons why the Patent Office has not been held accountable for such an egregious waste:
1) Poor management is actually awarded. By poorly managing the entire budget and outlay process, the Patent Office has become an innovation tax source for other non-innovation programs. For all the moaning about the undeniable innovation tax, it has to be remembered that the only money ever skimmed has been that money over budget. The immediate answer is to budget higher, and then use that money. By consistently poorly budgeting, the Office basically gives free money to the rest of the government. This amounts to a bribe to be left alone. Sure there is lip service to making things better, but as has been pointed out, the area most in need of being made better is not even in the legislation.
2) The innovation tax is “voluntary.” Since no one “forces” anyone to file for a patent (beyond preservation of rights and normal business practices), the effectiveness of anyone crying about the innovation tax can be readily muted. However, the current legislation, with the emphasis on expanded prior user rights will dry up this reason by removing the threat of being sued. If there is no threat, and there is a safety in maintaining a current secret use, the driver for voluntarily being taxed dissipates. It will be only human nature to let someone else pay that tax and to keep as much knowledge secret as possible.
I am of firm belief that if these two factors were not present, the patent office would have long ago been moved to a registration only system at a fraction of the cost and would have garnered just as much public benefit.
Perhaps the outcome of the current legislative “streamlining” will bring us to such a system. In my mind, four years from now, as the effects of the current legislation are begun to be felt, and the promising “streamlining” is seen to be intractably and immensely worse, and especially if fee diversion is ended and immunity for secret use in introduced, someone will look at a cost per dollar evaluation and realize that a registration only system just makes more sense (and makes much much more cents). In a typically sick and twisted way, the politics of fee diversion and threat of someone else having a patent on your secret invention may be seen as actually keeping the existing examination system (all 3% quality of it) on the life support we see.
To me, the patent system changes have only just begun.
link to fosspatents.blogspot.com
Apple just kicked Samsung’s axx in Germany with a design patent.
I must admit that I’ve been stymied by Drummond’s complaints claiming that Microsoft et al are trying to take down Android. OF COURSE THEY ARE. It seems such an obvious, and typical, business tactic that I’m surprised Drummond even mentioned it. The reality is that, if you have a hit, high-quality product, your competitors will try as hard as they can to put you out of commission. The fact that Google’s leadership is publicly complaining about such common business tactics makes me wonder whether the company’s leaders are experienced and savvy enough to adequately weather the storm of cutthroat, high-stakes business and come out on top in the long run. If I were a Google investor, such comments (as well as Google’s recent fumbling of its Nortel patent bid) might make me think twice about the long-term viability of an investment in the company.
It appears that Google has more things to be upset about…
“The employee, Tim Lindholm penned “What we’ve actually been asked to do (by Larry and Sergey) is to investigate what technical alternatives exist to Java for Android and Chrome. We’ve been over a bunch of these, and think they all suck. We conclude that we need to negotiate a license for Java under the terms we need.”
Google claim the email, which never had a recipient appended and was saved in drafts, was to be sent to its attorneys, protecting the document under client-attorney privileges and making it inadmissible in court.”
I think the court of public opinion may deem this highly admissible.
Story from link to smarthouse.com.au by Tony Ibrahim
“Reexams allow opposing parties to do that work and submit it to the patent office. I don’t see how this is anti-patent.”
Neither do I. As long as the abuse is contained, then the corrective aspects of reexam serve a legitimate function.
But the point of this thread is that abuse does happen. And simply saying “oh well” is not good enough.
Especially when it is those that actually wrote the measure that note the abuse.
Some comments indicate that the abuse comes from the “untraceable” side, while other comments indicate that the abuse comes from the “Office” side. In most probability, both are correct and both are not entirely correct.
In a very real sense, the rate at which a SNQ is found is an indictment of the examination quality. While it is true that “perfect” quality is not to be expected, we should not expect that opposite. The last stat I saw was that greater than 97% of reexamination requests resulted in a finding of a SNQ.
That’s equivalent to a quality rating of 3%. This is simply not acceptable.
And let’s not forget that Reexam can only be brought forward with those types of things that the Office should be able to find – published documents.
There is a double edge to this aspect. One edge was brought up in discussing the Clear and Convincing standard. While certain academics sought to minimize this aspect, it should be clear that Congress did consider that removing the earned presumption was something that should not be taken lightly. Thus only that type of evidence that on its face supports an overcoming of the clear and convincing standard was allowed. This provides some credence to 6’s statement that the supplied art can stand alone in raising the SNQ.
The second edge is the obvious fault that if 97% of cases are granted, then the examination process is seriously flawed. Now, I am not suggesting that the process be scrapped altogether and we employ a registration only system, but likewise, I am not suggesting that we close our eyes to the fact that a better job – in the first instance – is critical.
I am even willing to entertain looking to foreign lands to adopt “best practices” if need be. Perhaps examination would be better in the first instnace if we changed a few things in the first instance. To start, let’s deconstruct the “count” system. If a “count” or throughput is what is measured, then a “count” or throughput is what will be achieved. The problem, of course, in only achieving a throughput is that the applicant smells how bad that throughput is and has the legal right to maintain pursuit of his rights. The immediate result is churn. The Office has long recognized this and first attempted to deny the applicant her rights throught the ill-fated Claims debacle, and then tried to limit the appeal of the RCE gravy train.
Neither of these bandaids actually focused on the right thing. The current legislation also fails miserably in addressing this issue. Adding more post-grant bandaids simply does not address the area that needs to be addressed. In the end, the only acceptable alternative is to improve the quality of examination itself – in the first instance. I think that if our great academic minds set their sights on this task, rather than simply accept poor examination as a given (ahem, Lemley et al), Congress may follow that line of thought and actually draft laws that would make the system work – in the first instance.
The second problem, pure unchecked ability to take pot shots, needs to be addressed as well. Just as there was a time that nondisclosure of applications was the rule, so too, can nondisclosure of those requesting reexam can be the rule. However, a simple way to end serial abuse would be to apply some due care to those that would challenge patents through the reexam route. The Office could demand that the party (and the true party in interest) identify themselves, and that severe estoppel be enacted – all issues be brought forward (a party gets only one shot). This information could be held confidentially for a short term, and then, just like the application, be manditorially published at a specified timeframe. If “open-government” style works for the one side, why not make it work for both sides? If an adverse party truelly only gets one shot, then that shot will be more finely tuned and the process will be of a higher quality.
Nice try.
link to uspto.gov
“When an examiner is assigned to act on an application which has received one or more actions by some other examiner, full faith and credit should be given to the search and action of the previous examiner unless there is a clear error in the previous action or knowledge of other prior art.” Note the “should” and “unless”. It is not an absolute requirement, and rightly so.
I might not give full faith and credit to the work of another examiner who:
a) still has illegal non-local plates on his/her car (lack of basic integrity, why would anyone trust his/her work)
b) is obviously an ESL victim (claims are in English, most references are in English, etc.)
c) is a primary getting a bonus for >120% production (probably didn’t find much art during the 10 minute search).
Pretty much the only person we could trust these days would be an MVP who consistently provides bitter and team-killer-ish posts on various blogs.
So then, you can “steal” it but you can’t steal it? Mmmmm, not very convincing.
You did say that google wants to fight by “stealing” features that rightfully belong to someone else. “Features” do not belong to anyone else, rightfully or otherwise, they are not a statutory category.
you can’t steal IP
Sure ya can – read it in context (note the ” ” use).
Also note that “features” are not a statutory category
Did I say they were?
Don’t be so thick.
Careful now, Mr. 6.
I see your name on a fair number of ’em.
“Of course, there will be people gaming / abusing the system. Nothing is going to stop that.”
Well then, why have any laws whatsoever, because, we know that people are still going to kill other people, people are still going to rob other people, and people are still going to violate the intellectual property rights of other people….
Yeah, not a lot of force in that argument.
Lulz, you can’t steal IP. They record the name of the owner of a patent in the USPTO.
Also note that “features” are not a statutory category.
The PTO cannot do a perfect examination — it doesn’t have the resources, nor do we want it to, to scour every piece of prior art on the planet. Reexams allow opposing parties to do that work and submit it to the patent office. I don’t see how this is anti-patent. If the prior art invalidates a patent, then it should be able to be re-examined.
Of course, there will be people gaming / abusing the system. Nothing is going to stop that.
Have you ever met a computer geek?
Well, the SNQ question is pretty simple. Efficiency and not allowing you to appeal every little thing, some things are better left a simple procedural issue.
But as to the not hearing out the patent owner, well idk.
The only guess I can make is that congress is anti-patent. Lulz. I’m saying that sarcastically.
6, I would be quite satisfied if the patent owner had a right to be heard on the issue of SNQ.
One wonders at the intent of those who drafted the statute in the first place. Why in the world would they intentionally silence the patent owner. Why in the world would they allow no appeal of SNQ?
If you think about that for a few moments, you will know the answer.
Ned did I say that we should mirror this nonexistant reverse IC you’ve made up in the actual IC?
No. I did not.
In fact, quite the contrary, I noted that the contexts were different.
Indeed, in the one instance you have someone interested in obtaining some power over his fellow man who is voluntarily involved in the process. On the other, you have somoene being drug into something they did not ask for. And there are other countless differences which make the situations quite different. For instance, IC is an issue over equity. This is a proposed type of suit for a tort. Kind of different aren’t they?
Maybe you should bring suit in equity to stop the person from lying to the PTO… but oh wait, the statute specifically mandates the patentee to be quiet someone upthread said. So, meh, I doubt the court will oblige. Congress decided it didn’t want the PTO to hear what you have to say on the issue of SNQ so I doubt the court would overrule that.
Speaking of hearing what the patentee had to say, wouldn’t it be simplest to just let the patentee have his say to the PTO in response to the alleged SNQ?
Either that or do away with reexam entirely. I couldn’t care less.
Huh?
Flip that to traditional IC. The attorney flagrantly lies. You would have it that before we could impose a penalty on the patentee, we should first see if he had any knowledge of the actions of the attorney?
“I just doubt that there are that many clients out there that want to make a misleading statement to the PTO, get their lawltard to draft and sign off on it, and then manage to fool the USPTO.”
Lulz. According to your brosky Malcolm every client and attorney is routinely misleading the poor dumb examiners. Except him and his clients, of course.
Idk Ned, in the situations you’re describing, pretty much reverse IC, I would think that the bogus argument usually originates with the “bad actor”‘s lawltard, as opposed to the client. I don’t know if we should hold the client responsible for the actions of his lawltard in the context of reexam. Many clients probably wouldn’t even know that they were submitting a bogus reexam request. So are you going to establish standards for your “reverse IC” akin to the standards required to show IC?
I just doubt that there are that many clients out there that want to make a misleading statement to the PTO, get their lawltard to draft and sign off on it, and then manage to fool the USPTO.
Sorry brosky.
Well, in Wyeth v. Levine, the Supreme Court noted that “state law offers an additional, and important, layer of consumer protection that complements FDA regulation” and that “the FDA has limited resources to monitor the 11,000 drugs on the market…state tort suits uncover unknown drug hazards and provide incentives for drug manufacturers to disclose safety risks promptly. They also serve a distinct compensatory function that may motivate injured persons to come forward with information.” Not sure why there isn’t a role for state torts in compensating the patent holder in a sham reexam scenario, or why second-guessing the PTO’s SNQ determination in federal court (though in a state tort suit) is all that wild, or somehow interferes with its mission (rather than complementing it). Practically every PTO determination is already subject to second-guessing by the courts.
1. “The new inter parte reexaminations will have a higher than SNQ, not SNQ, requirement to initiate.”
There is argument that the new “SNQ” requirement is easier to meet, not higher.
2. So close to the problem, and yet so far away – the answer to a p1ss-poor examination is not more of the same p1ss-poor examination (in reexamination) – the answer is to do the job right the first time.
3. Agreed – not all things “pro-patentee” are good. See Critique’s comments above.
4. Nice, so what? There are several other erors in your comments that I am not oging to get into here. We are even.
“6, actually, this issue is serious and the reason why Lockwood lost. State courts cannot sit in judgment of petitions to the Federal government — or can they?”
Why don’t you save us all the trouble and just go ask Mrs. Admin lawl Arti Rai? I doubt if she’ll have to think for more than a minute to tell you no.
“Since this issue is not a new one, I wonder if there are any Supreme Court cases on point?”
I’m sure there are some cases, if not USSC cases. Just go ask your local admin lawl prof.
I wouldn’t say that Ned, human frailties and all that. I’m sure it does happen. But I’m not willing to pull a number out of my arse and allege that it is a huge problem. Like you guys are so fond of saying about the patent system and courts etc. “it is a human endeavor”. One expects some few things to go wrong on the outskirts.
Also note that the examiner isn’t all alone. We have coworkers you know.
Indeed, your reference to IC is telling. Do you know how many instances of IC are actually found? From what I’ve heard it is a very very small number.
Now all of this isn’t to say that I wouldn’t be behind a slightly higher standard or something of that nature. The whole “SNQ” seemed kind of lame to me.
A correct link to the PTO website requesting input on rulemaking for the new patent legislation is:
link to uspto.gov
To Ned Heller’s point, one thing that never made sense to me was: the Lockwood case was not in state court. Sure, it was a state law tort, but it was on federal jurisdiction. And every such case would have remained under federal jurisdiction because the major question to be litigated (“was there a reasonable basis for finding SNQ?” i.e., was there probable cause for initiating reexam?) is obviously a patent law question to be dealt with in the federal courts. What’s the harm then, in federalism terms? The federal courts second-guess the PTO’s determinations all the time, in other contexts.
The PTO itself admitted in 2006 that it was having trouble “weed[ing] out those requests that do not raise a substantial question of patentability, prior to instituting a full-blown proceeding” and proposed letting patent owners respond to requests within the 3-month determination period, so that the PTO could “reduc[e] improper/unnecessary orders.” See 71 Fed. Reg. 16072, 16073 (Mar. 30, 2006). Sure, the proposal was not adopted (and indeed it would be rather cumbersome to accommodate patent owner responses within the statutory period). But it’s pretty obvious that the PTO can order reexam improperly. The SNQ is by no means per se unimpeachable, as the PTO itself admits.
1. The new inter parte reexaminations will have a higher than SNQ, not SNQ, requirement to initiate.
2. Since even the PTO itself values its prior art searches and examinations at only a few hundred dollars, and has admitted that examiners have only about 17.9 hours average for that plus an office action, and given the high percentage of patent claims rejected how can anyone logically argue that a PTO allowed patent has covered so much prior art already that it should never be reexamined?
No doubt some reexaminations are for litigation tactics, w/o adequate prior art, but in that case defeating the reexam request should be very much easier and cheaper in the reexamination than in patent litigation, and the patent comes out much stronger and thus worth more.
The real problem is the excessive length of time the PTO has been taking to conclude contested reexaminations. But that is NOT due to “huge demands on the PTO” as Bayh is baying above. The number of reexaminations and reexamination examiners is a miniscule percentage of the PTO and its budget.
3. The new ex parte “Supplemental Examination” is an extremely pro-patentee provision that will on its face [absent rulemaking] allow a completely ex parte [unchallenged] pre-litigation whitewash for re-allowed claims of any possible inequitable or fraud issue without even disclosing it. Other very pro-patent-owner provisions include elimination of “best mode” defenses.
4. There are several other errors in comments above that I am not going to get into here.
1. The new inter parte reexaminations will have a higher than SNQ, not SNQ, requirement to initiate.
2. Since even the PTO itself values its prior art searches and examinations at only a few hundred dollars, and has admitted that examiners have only about 17.9 hours average for that plus an office action, and given the high percentage of patent claims rejected how can anyone logically argue that a PTO allowed patent has covered so much prior art already that it should never be reexamined?
No doubt some reexaminations are for litigation tactics, w/o adequate prior art, but in that case defeating the reexam request should be very much easier and cheaper in the reexamination than in patent litigation, and the patent comes out much stronger and thus worth more.
The real problem is the excessive length of time the PTO has been taking to conclude contested reexaminations. But that is NOT due to “huge demands on the PTO” as Bayh is baying above. The number of reexaminations and reexamination examiners is a miniscule percentage of the PTO and its budget.
3. The new ex parte “Supplemental Examination” is an extremely pro-patentee provision that will on its face [absent rulemaking] allow a completely ex parte [unchallenged] pre-litigation whitewash for re-allowed claims of any possible inequitable or fraud issue without even disclosing it. Other very pro-patent-owner provisions include elimination of “best mode” defenses.
4. There are several other errors in comments above that I am not going to get into here.
6, actually, this issue is serious and the reason why Lockwood lost. State courts cannot sit in judgment of petitions to the Federal government — or can they?
But it is easy to provide a Federal remedy, perhaps generic to all false affidavits or statements filed with the Feds that cause material harm to a third party.
Since this issue is not a new one, I wonder if there are any Supreme Court cases on point?
6, ugh!, your argument is tantamount to a statement that an examiner cannot be fooled by an argument, or the failure to disclose a material reference, or a mistatement of material fact. He, in 3 months, without the aid of the patent owner who is commanded by statute to remain silent, can figure it all out for himself.
So, if you are correct in your assessment of examiner perfection, why don’t we just do away with IC altogether. At no time can examiner be fooled.
As was stated by others here, 6, the problem is that the requestor’s request is misleading and amounts to IC if the request were filed by an applicant in an ordinary prosecution. The penalty for that, as we all know, substantial and harsh. But, due to the anonimity of the requestor, imposed by statute, there is no effective remedy against the requestor for gross misconduct. So the patent owner is left with a remedy only against the law firm who filed the request. But now, per Lockwood, there is no remedy. None.
Anyone with any sense of justice knows that this is wrong.
What spooked the Feds is the possibility that a state court would sit in judgment over the PTO. I agree that this by itself is a major problem. IIRC, there was a recent case involve a malpractice complaint that involved issues of patent law. I think the Feds ruled that the issue was preempted. Perhaps someone here can recall the case.
What we need, obviously, is some sort of Federal remedy whereby US district courts would have jurisdiction to award damages to a patent owner who is the victim of IC by a requestor.
They probably deemed that question so far beneath them as to not require them to waste their breath answering it.
“That’s why one who “sets the law in motion” has been traditionally liable for malicious prosecution. Similarly, setting the PTO in motion (the prosecutor in the reexam context) by, e.g., sending in prior art that later turns out not to have qualified as a “printed publication” or by making grossly misleading arguments about its contents, can lead to a “sham” reexamination and give rise to liability.”
While all that may or may not be attorney misconduct I don’t see how it would affects the SNQ all that much. The examiner can read the reference for himself and investigate its status as prior art by himself.
“The initial SNQ determination can obviously arise from false/misleading statements.”
Like what? 1/1000 misleading statements? The reference determines if there is a SNQ, not the attorney’s statements.
“We all know that the PTO has rubber-stamped reexam requests for quite some time (see Mark Janis’ article on reexam), and even if it has become slightly more lucid in recent years, that doesn’t mean there have not been “sham” reexaminations that have made it through the SNQ screening — an initial screening which Judge Michel has called “almost no standard at all.””
So then because someone’s paper alleges that the PTO uses a rubber stamp on reexam requests, and because their becoming better in this regard doesn’t mean there haven’t been sham reexam requests we should infer that there are sham reexam requests which are accepted?
Man you guys aren’t convincing anyone with logiclol like that. And I’m here looking to be convinced. If you can’t convince me, who is literally looking to be convinced, how are you going to get your whining persuasively through to congress?
“Now, given the two points immediately above, just how often do you think examiners don’t do their jobs right the first time through?”
Soooo… then you guys are really just upset that the PTO didn’t do a good job? Maybe they should just sue the PTO.
“How about we remove credit from examiners anytime one of their cases is stamped as accepted into reexam? ”
Why would you do that?
“After all, such a finding means that the first examiner did not do his job properly, ”
Not really, the search we do doesn’t have to be world class. It just has to be a search. Indeed, the PTO prefers it to be a sucky one.
“and should at least share a little of the pain.”
How is there pain? There is a substantial new question of patentability on your patent. It’s long past time people started taking some responsibility for their patents instead of shrugging the responsibility off on the office.
In other words, these guys are upset either because the PTO messed up the substantial new question determination or they didn’t take any responsibility for their own patent. I get less and less sympathetic by the minute.
“I imagine that the urge to rubber stamp the finding of a substantial new question would be greatly reduced.”
What on earth makes you think there is such an urge?
I get the feeling, anon, that you’re just a biased attorneytard fond of throwing off all responsibility on the office. The office isn’t here to make sure your patent is absolutely valid, sorry bucko.
And nothing here that you brought up makes me think that any reexams are “shams”. In fact, you merely made me think this guy and others like him are simply crying about their own irresponsibility. Fact is, there is a whole world of art out there, and your failure to make sure your sht is valid enough to suit you is not some failure of the office’s. We give you a baseline determination, if you want a super valid patent then you better search the SHT right out of your patent. Any attorneytard with half a brain will tell you that.
Tip of the hat to Hal Wegner for pointing out additional and excessive non-simplicity that will stem from the “simplifying” legislation of the LEAHY-SMITH AMERICA INVENTS ACT:
The Transition Loophole Game.
Thanks to the downright Byzantine transition loopholes built into the bill, the Patent Office will need to maintain the current set of laws and the new sets for an indefinite time period.
Perhaps our dear President would like to have a frank discussion with his advisors on how this bill will actually meet his statements (in case he does not want to appear to be just another politician).
It won’t take much for a law firm full of only IP Attys. that have the sense to work together as a unit to help and control the clients IP for them in a way where even the large Firms will think twice before infringing. And sadly that would be what the IP firm would consider Marketable. Don’t just try to get a Patent for a bad idea. The IP firm surely will know Engineers, idea orientated marketable people, and those that know a good Idea when they see it to work for the Firm. You may not have a lot of Clients but you will have the winners. And the winners will be all you need.
When I am out of this mess, 1 day left, I will start you off if you are that kind of Firm. I promise you that my Ideas are WINNERS! And together we can help change the corruption by being strong and honest.
I read where a lot of the IP firms folded… to bad wrong time to fold. Time to create anew. Come on now there has to be some out there that would like to restart what has disappeared. The only way to SKIN A CAT is get a bigger CAT.
Ned, I have argued here that what happens in Europe in oppositions is no guide to what might happen in the USA. But, for what it’s worth, I will give you some comments about EPO opposition practice, as it has developed over these last 30 years:
1. mostly its big on big. A period of hitting everything that moves, then CEO’s meet and agree peace terms. Example: disposable diaper industry.
2. 70% of all oppositions are filed by German-speaking entities. That’s because of their parallel track national litigation system. They fear being prematurely enjoined by a District Court so they get their retaliation in first.
3. Big seldom attacks small. That lends small a credibility it otherwise lacks. What if the oppn fails. Then Big really does have a problem with that Small. So, if my client Small gets opposed by Big, I tell it that this is the best thing that could have happened. Now it really can attract the interest of investors.
But, as i say, it is surely all special and different, in the USA.
To repeat, the PTO’s initial SNQ determination is much like a typical prosecutor’s finding of probable cause. It may turn out later that the SNQ was based on false/misleading evidence, and so there was actually no probable cause to initiate reexam. Part of the question in the Lockwood case, which the Federal Circuit completely dodged, was whether it’s OK for courts to second-guess the PTO’s determinations in this area.
Re: the SNQ question above, it’s a little bit like the typical prosecutor who is deceived by false/misleading evidence supplied by a (false) witness. Obviously under such circumstances the prosecutor thinks he has probable cause, and he undertakes what later turns out to be a malicious prosecution. That’s why one who “sets the law in motion” has been traditionally liable for malicious prosecution. Similarly, setting the PTO in motion (the prosecutor in the reexam context) by, e.g., sending in prior art that later turns out not to have qualified as a “printed publication” or by making grossly misleading arguments about its contents, can lead to a “sham” reexamination and give rise to liability. The initial SNQ determination can obviously arise from false/misleading statements. We all know that the PTO has rubber-stamped reexam requests for quite some time (see Mark Janis’ article on reexam), and even if it has become slightly more lucid in recent years, that doesn’t mean there have not been “sham” reexaminations that have made it through the SNQ screening — an initial screening which Judge Michel has called “almost no standard at all.”
As an examiner, 6, what do you define as the proper level of a “substantial new question of patentability?”
Keep in mind that you, as an examiner, are required to give full faith and credit to work done by another examiner. Exactly what new questions could come up between the initial examiner and the reexam greenlight?
Keep also in mind, that you are moving a patent, with a legal presumption of validity back to a status of examination that does not have that legal presumption.
Now, given the two points immediately above, just how often do you think examiners don’t do their jobs right the first time through? How about we remove credit from examiners anytime one of their cases is stamped as accepted into reexam? After all, such a finding means that the first examiner did not do his job properly, and should at least share a little of the pain. I imagine that the urge to rubber stamp the finding of a substantial new question would be greatly reduced.
Now guys, believe me when I say I’m sympathetic to the patent owners with patents being dragged through a reexam if it is a “sham”. But I’m a little curious about something and maybe you can help me out, isn’t it the office which determines if there is a substantial new question o patentability? And if there is such a new question then how is the reexam a sham?
“What possible benefit is this, except to possibly invalidate any past estoppel effects that the USPTO as a party are legally held to (Can you say Taffas end-around)? SHAME.”
You do know that the Tafas case was held in VA right? I think they’re talking about other cases that are currently going on.
Either that orrrrrrr… they’re bogus patents.
Man that is one of the most finely worded blow offs I’ve ever had the displeasure of reading.
Regarding Bayh, from his letter:
“Big companies armed with savvy lawyers can now use the reexamination process as a way of quashing smaller companies; it costs little to file a re-exam petition and a lot to defend a patent. In the past four years, the number of re-exams filed with the U.S. Patent and Trademark Office has increased dramatically, and most of those requests are routinely granted. This trend has placed huge demands on a patent office that is underfunded and under-resourced.
When I raised these concerns with Under Secretary David J. Kappos, director of the patent office, he sent me a letter stating that his agency is “particularly concerned whenever a patent owner is subjected to a fraudulent reexamination or some other form of harassment.” He also confirmed that the patent office has no authority to compensate patent holders for abusive reexamination tactics.
The implications of this case are breathtaking and have gone largely unnoticed. The court rulings bear on the soundness of the patent system and suggest immunity for anyone who wants to abuse federal administrative processes against competitors – essentially gutting states rights in such matters.
It may be too late for Lockwood to get his day in court but we can fix, or at least improve, the situation for future inventors. For example, Congress could support a Supreme Court review of the Lockwood case or could amend the existing patent law to make it clear that it was not intended to preempt state laws.”
In essence, there is no remedy for abuse. None. We need not decide that Lockwood was abused to see the consequence of a court ruling that even if he was, he has no remedy.
None.
So, what does this tell us.
What can be abused, will. (And, btw, has.)
Max, you can confirm this if you want, but big companies in Europe will use oppositions/cancellation procedure threats to get favorable licensing terms. The mere threat of such procedures from a big company to a smaller company is enough. As such, the big companies can all but ignore the patents of the small fry in Europe.
We have come to that in the US as well with the Lockwood case.
Thanks Critique; great analysis.
From past experience, the Office has a history of ignoring vague or hard to implement articles of law or even its own rules (35 USC 122 and rules regarding conduct during prosecution come to mind). My guess is that a lot of the stuff in the law will matter little in the long run, much like interference is such a small niche of prosecution. Particularly such vague directions as protecting from predatory behavior will have absolutely no effect, since the Office has no subpoena power and such little control over what happens with a patent after it is granted (not that that is a bad thing), and there is no description of what predatory means (Is IBM predatory?). Some things will change, no doubt, but the only real bomb at the Office concerns prior art availability being extended to foreign subject matter and modifying swearing behind to swearing behind and showing derivation (good luck proving that one in all but the most egregious cases). The most relevant things in the new law have to do with litigation, and it’s hard to predict what those will end up doing. I think it’s rich that a law maker writes to an agency to let them know that what he started has not ended up the way he wanted. Maybe he should have thought more carefully about what attorneys would do with his law. I bet we will be reading about the unintended consequences of patent reform a few years from now.
Any thoughts on the consequences of losing a derivation proceeding? Doesn’t that also have further consequences with respect to fraud, and should the patent office be in charge of making that kind of determination?
Some initial thoughts to the USPTO positions (spoiler alert – this is a long post):
USPTO thoughts on H.R. 1249 – THE “LEAHY-SMITH AMERICA INVENTS ACT” As Passed by the House on June 23, 2011
Sec. 2 – Definitions.
• Defines some basic terms.
That’s it? No note of how deficient the definitions of terms in the bill are? The Office is comfortable with all the squishy terms used? Terms which will need judicial case law to develop and to determine anything close to a brightline understanding? SHAME
Sec. 3 – First Inventor to File.
• Transitions the U.S. to a first-inventor-to-file patent system from a first-to-invent while maintaining a 1-year grace period for disclosures.
OK, so what does “disclosures” mean?
• Establishes “derivation” proceeding in place of interference proceeding for first-inventor-to-file applications and patents.
Like this is any better?
• Requires SBA Chief Counsel for Advocacy in consultation with USPTO General Counsel to conduct study of impact of first-inventor-to-file provisions on small business and submit report within 1 year to Small Business and Judiciary Committees.
Since this “study of impact” has no binding force, this becomes a great big “SO WHAT?”.
• Requires USPTO Director, in consultation with USTR, State and DOJ, to prepare and submit to Judiciary Committees within 4 months a report on the operation of prior user rights in selected countries in the industrialized world.
Ditto.
Sec. 4 – Inventor’s Oath or Declaration.
• Provides for assignee filing when the inventor is unable or unwilling to do so.
Read this as yet another “Big Business” power grab
• Removes the requirement for statements of lack of deceptive intent.
Anybody have any plausible reason for removing this part of the law?
Sec. 5 – Defense to Infringement Based on Prior Commercial Use.
• Expands defense to all areas of technology (beyond current restriction to business methods).
So now, rather than phase out the business method exception (which was the intent behind the original institution of the provision), Big Business gets another “gimmie” by expanding the exception to EVERYTHING. SHAME
• Requires showing of both reduction to practice and commercial use at least 1 year before effective filing date.
An unwarranted attack on NPE’s. Patent Law has never previously been about the positive right of actual use – this is aimed squarely at the “thicket-busting” nature of the NPEs, another “Big Business” power grab.
• Provides exception for patents owned by universities or their technology transfer organizations.
This needs a closer read as the university exception is extremely narrow.
Sec. 6 – Post-Grant Review Proceedings.
• Replaces “optional inter partes reexamination” with “inter partes review” to be conducted by Patent Trial and Appeal Board within 1 year (with possible 6-month extension for good cause); available for life of patent after later of 9 months from grant or termination of post-grant review; not available if filed more than 1 year after service of infringement complaint or if petitioner previously filed DJ action alleging invalidity; basis limited to patents or printed publications; provides for intervening rights re any new or amended claims. Threshold showing is “reasonable likelihood” that the petitioner will prevail. Estoppel standard is “raised or reasonably could have raised” before the USPTO and the courts. Director may limit number of proceedings in first 4 years.
This is a complete Cluster-F complicating and weasal laden “Big Business” giveaway that does the exact opposite of streamlining the patent process. SHAME.
• Establishes “post-grant review” before the Patent Trial and Appeal Board to review validity of issued patents within 9 months of grant on any patentability issue except best mode; not available if petitioner previously filed DJ action alleging invalidity; review should be completed within 1 year (with a possible extension of 6 months for good cause); provides for intervening rights re any new or amended claims. Threshold showing is “more likely than not” that at least 1 of the claims is unpatentable. Estoppel standard is “raised or reasonably could have raised” before the USPTO and the courts. Director may limit number of proceedings in first 4 years.
Ditto.
• Provides for settlement agreements to be treated as “business confidential information” at the request of a party to the proceeding.
Because less transperancy is somehow better? SHAME.
Sec. 8 – Preissuance Submissions by Third Parties.
• Allows third parties to submit printed publications of potential relevance to examination either before the earlier of a notice of allowance or the later of 1) 6 months after publication of the application or 2) date of first rejection, accompanied by a fee and a concise description of the asserted relevance of the submitted document.
The inclusion of now allowing a “concise description” opens the door to non-Office examination of applications by especially well-financed third parties. Besides the obvious constitutional problem of Due Process violations, this is yet another “Big Business” giveaway. SHAME.
Sec. 9 – Venue.
• Changes venue in certain suits where USPTO is a party from the D. of the District of Columbia to E.D. of Virginia.
What possible benefit is this, except to possibly invalidate any past estoppel effects that the USPTO as a party are legally held to (Can you say Taffas end-around)? SHAME.
Sec. 10 – Fee Setting Authority.
• Provides authority for the Director to set or adjust by rule any fee established, authorized, or charged under title 35 and the Trademark Act, so that the fees, in the aggregate, are set to recover estimated operating and administrative costs.
Fee setting authority constrained by the mere “in the aggregate” is laden for abuse of power. This is another Taffas end-around ploy.
• Defines “micro entity” (to include universities) and provides for 75% fee reduction for those applicants.
A closer look is needed here as well due to the total number limitation that will remove almost every university from this benefit. This is not what it is touted to be. SHAME.
• Provides for input by USPTO’s advisory committees, public comment and a Congressional comment period.
Meaningless – see above about something with no binding effect
Sec. 11 – Fees for Patent Services.
• Establishes prioritized examination fee of $4,800 (above usual fees) with 50% reduction for small entities, effective 10 days after enactment.
The extremely quick 10 days after enactment is a clear indication that something is very fishy with this provision.
Sec. 12 – Supplemental Examination.
• Establishes process for a patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent.
Blatantly contrary to the stated streamlining of the patent process, this ability to yet again tie-up patents fails where “reform” is most needed. Rather than make the initial examination better, as should be the focus, we simply allow for more of the same shoddy examination for those who merely don’t like the result the first time through. This is yet another “Big Business” giveaway, as it is the established “Big Businesses” that can most afford the diligence and cost of scouring the patent landscape and challenging (repeatedly) any new patents deemed to be a threat. SHAME.
• A patent shall not be held unenforceable in litigation on the basis of conduct relating to information considered in a supplemental examination if such is concluded before the date an action is brought.
Cement open the door of hiding references and seeing if you can get away with it – with deceitful intent no less.
• If the Director becomes aware of material fraud during the supplemental examination, the Director may take appropriate action and must refer the matter to the Attorney General.
Sec. 13 – Funding Agreements.
• Provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, is deemed insufficient to differentiate an invention from the prior art.
See other threads for the obvious improper conflation of “deemed prior art” and ineligible subject matter.
Sec. 16 – Marking.
• Provides that only the U.S. may sue for the penalty authorized by the false marking statute.
and
• Civil suits re false marking are limited to persons who suffer a competitive injury; damages adequate to compensate for the injury may be recovered.
End-run destruction of any meaningfulness to the law as the U.S. is not a person who sufers a competitive injury and only the U.S. can bring suit. Why not simply repeal the existing law? There must be a reason for the lack of directness. SHAME.
Sec. 18 – Transitional Program for Covered Business Method Patents.
• Establishes an 8-year transitional post-grant review proceeding for review of the validity of certain business method patents.
The illegality of this measure, as post-hac affecting already legally established rights will be a basis for a Constitutional challenge. Is this a poison pill provision?
• Covered patents include those that claim a method or corresponding apparatus for performing data processing operations utilized in the practice, administration, or management of a financial product or service, but not patents for technological inventions; effective date is 1 year after enactment and applies to patents issued before, on, or after that date.
The lack of definition of “patents for technological inventions is a glaring error, as U.S. law has no understood distinciton of a “technological invention.”
• Provides that an ATM is not a “regular and established place of business” for venue purposes.
This is an obvious and blatant Bank giveaway.
Sec. 22 – Patent and Trademark Office Funding.
• Establishes in the Treasury a “Patent and Trademark Fee Reserve Fund” effective October 1, 2011.
• Fees collected in excess of the appropriated amount in any given fiscal year would be deposited in the Reserve Fund and made available until expended only for USPTO operations “to the extent and in the amounts provided in appropriations Act.”
The ineffectivenss of this provision to stop actual looting and tax on innovaters is well documented.
Sec. 23 – Satellite Offices.
• Director shall, subject to available resources, establish 3 or more satellite offices within 3 years.
Meaningless provision, given the “subject to available resources” clause.
Sec. 25 – Priority Examination for Important Technologies.
• Authorizes Director to provide for prioritization of examination of patent applications for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
This amounts to a selective innovation tax and subjective prioritization with no representation. Bad policy dressed in the sheepskin of “important to the national economy.”
Sec. 28 – Patent Ombudsman Program for Small Business Concerns.
• Using available resources, the Director shall establish and maintain a Patent Ombudsman Program to, in part, provide support and services relating to patent filings to small business concerns and independent inventors.
Why the constraint HERE of using available resources? This is a clear paper tiger.
Sec. 30 – Sense of Congress.
• Patent System should promote economic growth while protecting the rights of small businesses and inventors from predatory behavior.
Lacking a definition of “predatory behavior” and including “invnetors” opens the door for “Big Business” (who owns the rights of inventors – including THIS right, to challenge any existing legal right of a patent as “predatory.”
Sec. 33 – Limitation on Issuance of Patents.
• Codifies “Weldon Amendment” to prohibit issuance of a patent on “a claim directed to or encompassing a human organism.”
What does “directed to” encompass? Are ALL drug patents directed to human organisms? What else can they be directed to? This is a potential BOMB.
Sec. 34 – Study of Patent Litigation.
• Requires GAO study and report to Congress, within 1 year, on patent litigation by non-practicing entities or patent assertion entities.
This is a blatant violation of patent rights, introducing an arbitrary classification of patent rights based solely on who owns a patent right. This amounts to another post-facto regulation made after the legal grant of a patent has been made and the Patent Right is no longer “inchoate.” There are serious selective Due Process Constitutional issues in this provision.
Sec. 37 – Calculation of 60-Day Period for Application of Patent Term Extension
• Requires that the date of marketing approval, to begin the 60-day calculation, is the next business day if the time of transmission of approval is after 4:30 P.M., Eastern Time
and
• Applies to any application for term extension pending on, filed after, or as to which a decision regarding the application is subject to judicial review on, the date of enactment.
Blatant post-facto law change geared to affect a single lawsuit in action.
These are just initial thoughts.
“Google states that these companies do not want to compete, by building new features, but instead fight through patent litigation.”
For arguments sake, let’s say the patents are valid and infringed (it is important to note that Google is not saying that any such patents are not valid and not infringed).
Google’s argument then, on its face, is the same as saying that Google wants to fight by “stealing” features that rightfully belong to someone else without paying for those features.
I am not sure you can square such IP theft with “do no evil.”
Curious.
Google’s David Drummond says the Nortel and Novell patents are “bogus.”
So why then were they willing to pay at least $900 million for them?
Here’s why: Real patents. Bogus argument.
Here it is: /media/docs/2011/08/CREC-2011-07-13-pt1-PgE1311-4.pdf
The kappose reply link is dead I do believe.
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