Guest Post – To Promote Progress in Science and Job Creation

By Shubha Ghosh, Vilas Research Fellow and Professor of Law at the University of Wisconsin Law School

Whether the "Leahy-Smith America Invents Act' will help to create jobs is a complicated empirical question. The logic supporting those who think it will goes something like this. The recently enacted patent reforms streamlines the prosecution process resulting in better quality patents that will allow patent owners to commercialize them more effectively to create companies that will employ people. There are several leaps in this logic. But whether the argument is true or not, the underlying emphasis on improving patent quality is the right one, whether or not another recession is avoided.

But will patent quality improve? There are some features which support that improvement. The creation of post-grant review proceedings has the potential of providing a more effective mechanism for the introduction and review of prior art to invalidate a poor quality patent than the process of litigation. Such administrative review might limit the ability of non-practicing entities to use patents of dubious value to hinder effective use of technology and innovations. Over all the new process might provide better assurance about issued patents and confidence in their durability. The expansion of the prior user right defense might also soften the effects litigation, threatened or actual, on business development. Although there is some empirical evidence from the Canadian experience that the shift to a first to file system may reduce the volume of patenting, there is some possibility that the quality of patents will improve.

The Act however could have gone further. The limitation on tax avoidance patents, implemented through a broader definition of the prior art, is a good move in reducing the number of applications for inventions that arguably provide little boon to the type of manufacturing and service industries that produce jobs. But Congress could have gone further in clarifying the Bilski v Kappos decision, which seemed to place some limits on the types of processes that could be patented. Congress could have gone one of two ways in helping to clarify Bilski. One is by clarifying the meaning of process so as to avoid the amorphous standard the Court created. The 2010 opinion speaks to "machine or transformation" as one test to determine when a process is patentable and as an important clue to what the right approach might be. Congress could have added more certainty by removing abstract processes (e.g., a method of arbitration, hedging strategies) from patentable subject matter. The goal would be to reduce the number of applications a patent examiner has to shift through and provide tools for per se rejections that do not require extensive examinations of the prior art.

Congress also missed the opportunity to clarify the standard of review for decisions of the US Patent and Trademark Office. The big question is how the Federal Circuit (and eventually the Supreme Court) will interpret the Act. Arguably, the United States Patent Office has been given new tasks and, even with the open questions about fee diversion, greater authority. But as long as decisions from the Office are subject to a de novo review by the courts, it is not clear that this greater power of the agency will actually streamline the process. Congress could have made clear some of the issues raised explicitly and implicitly in the 2011 Microsoft v i4i decision, upholding the clear and convincing evidence standard for claims of patent invalidity. The controversy at the heart of that case has to do with the deference owed to agency decisions. When patent prosecution is ex parte and the main challenge to patent validity is through the courts, the presumption of validity is troubling for the goal of assuring patent quality. Now that we have a process for post grant opposition, some of the concerns with ex parte proceedings are alleviated. But I would make the case that greater deference to decisions of the agency may be a way to lessen the impact of the courts and to assure even more certainty in the process. One possible response is to change the standard of review for claim construction by the Federal Circuit from the current de novo standard. Another would be to set a high bar for challenging agency decisions, thereby limiting the power of the judiciary to overturn agency decisions. Thirty years ago Congress established the Federal Circuit. The passage of the America Invents Act could have been a vehicle to place some limits on its power and shift authority regarding patents to the USPTO, where it belongs.

The goal of promoting progress should not be taken lightly and should not be reduced to the mantra of "jobs, jobs, jobs." Using the patent system to create jobs is in some ways a misguided one. Improving patent quality can strengthen the process of innovation which can aid the economy at a fairly high level. But a better patent system is no substitute for jobs training and an industry targeted jobs bill that creates incentives for hiring and for investment. The America Invents Act brings in many changes, but it is no giant leap for improving confidence that the patent system helps to generate quality inventions.

109 thoughts on “Guest Post – To Promote Progress in Science and Job Creation

  1. The main way that the government could use the patent system for job creation would be to enable the USPTO to move more rapidly through its backlog and reduce the amount of time for patent prosecution. Unfortunately, it’s unlikely that the patent legislation just signed by President Obama will contribute much in these areas. What would have been most helpful would have been a bill ending fee diversion, so that the USPTO could have the resources needed to accelerate its patent examination process. Congress, however, eliminated the anti-fee-diversion provision … which indicates that our legislature is not too serious about job creation.

  2. This article has an incorrect title. The patent law portion of the IP Clause of the Constitution is: “To promote the progress . . . of the useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their respective . . . Discoveries.” The title cites the portion of the IP Clause that matches up with copyright, which is “To promote the progress of Science.”

  3. but by an angry Congress

    The same angry Congress who wrote Section 273? The same angry Congress who left Section 273 intact in a bill that otherwise overhauls patent law (the very section discussed in the most recent Supreme Court case dealing with this)? You do understand the legal significance of these actions, right?

    I think that your obsession has blinded you.

    Your calls for revisiting and revising history have been noted and have been placed next to your understanding of medical methods.

  4. “But as ‘problems’ go, the current size of our national debt is really not of immediate concern.”

    Oh, I guess what’s happening in Greece now is simply a “figment of my immagination” then. And potentially what could happen soon in Spain, Ireland and Italy is also illusory? You can dream all you want about me buying into the alleged “lies,” but you’re the one who has bought into Keyesnesian economics “hook,line & sinker” (as has our government for too long now). It doesn’t work, not in the long run. Not even the U.S. can survive its current debt indefinitely. If you believe that bilge, I would suggest you better start learning Chinese pretty soon.

  5. “Funny, funny stuff.”

    I tell you what is not funny. Watching Ned adopt your inane belief that Diehr created a strict machine or transformation test, and Bilski somehow banned business methods, only to see poor Nedo get Intellectually B slapped from every direction and everyone on this blog. Poor Nedo ….he cant even reply anymore from suffering from PTSD caused by being the blog beach. Shame on you for leading young Ned down this road.

  6. No they could not have done that because a patent is something you must earn. However once earned by a new entrepreneur at least one new job is created. That remains a rock solid in your face FACT.

    What they could have done, when I first recommended this ACT on this Blog and asked Obama to steal it, is streamed line the process for business methods and software patents. And maybe fire Mooney and 6 as examiners.

  7. Paul, “What do you think the judges of the Supreme Court really thought when confronted with Bilski? That somebody, somewhere, had taken leave of their senses?”

    The more I have studied the matter, the more I have identified the culprit who did leave his senses:

    Giles Sutherland Rich.

    Giles Sutherland Rich. He was the judge who in Musgrave shocked Baldwin when he stated that a series of steps that were technological were patentable as a process. When he was overruled by the Supreme Court in Benson, he filed a concurring opinion in Christensen where he pissed and moaned about the fact that “he” was overruled. He was the one that wrote Alappat, which many today still believe held that programmed computers constitute patentable subject matter. But this was the very holding of the overruled In re Benson, which he also wrote. Rich’s crowning achievement was “State Street Bank” where “price” was deemed to be “useful, concrete and tangible.” Bilski was a logical extension of State Street Bank: A series of steps resulting in a “useful, concrete and tangible” result such as price or risk.

    But, when the Supreme Court first heard of the State Street Bank test, they questioned it. It is not surprising that all nine Justices stated that State Street Bank’s test is not proper. This test was also specifically overruled by the en banc Federal Circuit in In re Bilski. The court went out of its way to list the host of Rich inspired cases that were overruled.

    In every case involving 101 and software, Rich has been overruled. His theories and teachings are thrown into the trashcan of history, not only by an incredulous Supreme Court, but by an angry Congress.

    Rich has done more to damage the patent system via his rulings on section 101 involving “software” than any other single person in United States history. As Malcolm has demonstrated time and again, the patents issuing on software inventions are incredible. And yet, he remains idolized by the American patent bar because he was the first patent attorney to be appointed to a federal appeals court and because he wrote, along with Paul Rose, the 1952 Patent Act.

    Historians need to revisit his legacy and determine whether the damage he caused the patent system on 101 was outweighed by any good he did on the court on other issues.

  8. EG So that “debt” of $15 trillion that our federal government has run up for us is our problem too, isn’t it?

    Sure, but as “problems” go, the current size of our national debt is really not of immediate concern. And this isn’t just my opinion. It’s a fact. If it were such a huge problem, then surely we wouldn’t have started a massive incredibly expensive war against a country who was not a threat to us and simultaneously lowered taxes, right, knowing exactly where that would lead us? Right?

    And surely other countries would stop loaning us money, right? And investors wouldn’t scamper to put their money into US Treasury bonds every time the stock market seemed soft, right?

    You can talk about “political ideology” all you want, EG. I’m talking about l i e s told to benefit the already wealthy at the expense of everybody else. You seem to have bought into one of those l i e s — hook, line and sinker. Either that, or you’re just another propagandist for your own interests.

    The Supreme Court’s decision in Bilski is utterly irrelevant to the US economy *except* to the extent it limits the ability of middle-men to skim money out of our economy while contributing absolutely nothing to “progress in the useful arts.”

  9. Business method and software patents are particularly beneficial as they affect the most needed and economically beneficial areas for innovation in the new quantum age of wealth creation.

    The era of Schroedinger’s Bank Account. How awesome.

  10. A light sprinkling thereof would be fine, but as a dominant paradigm it is, ultimately, boring

    Perhaps when the monotonous parade of head-in-the-sand sockpuppets and borderline parody commenters (AI, NWPA) finally comes to end, I’ll consider lightening up on the “sprinkling”, IBP.

    Besides, if you’re bored you know what to do: find another blog and start helping out with the grammar. The blogosphere really needs people like you, man. Ooops, I meant: “More needy for you than even this blog is another blog.”

  11. sockie Maybe if you focused less on snark and more on content I could help you.

    There is no snark in my request. Here it is again:

    What is the mean household income of the owners of “small businesses” whose businesses use the patent system?

    Thanks.

  12. AI: “there’s one thing for certain, ‘every patent earned by a new entrepreneur creates at least one new job ‘ ”

    Funny, funny stuff. They could have saved a lot of time and effort by simply passing a law saying “the next 200,000 filings by small entities will be allowed upon receipt by the PTO”.

    And really, who could vote against a law that would so obviously and immediately create at least 200,000 new jobs?

  13. “Malcolm Mooney said…

    I have a question for the “small business” patent shills.”

    Essentially everything that “Malcolm” posts, especially recently, is simply belligerent invective.

    A light sprinkling thereof would be fine, but as a dominant paradigm it is, ultimately, boring.

    Those of us with an emotional maturity greater than that of the average 13-year-old should make a concerted attempt to totally ignore “Malcolm” and “Mal” in the foreseeable future, until such time as he has demonstrated a shift from invective to dialectic.

    Join me, won’t you?

  14. Use the patent system for what exactly? The most important point to remember is that, “every patent earned by a new entrepreneur creates at least one new job “.

    Business method and software patents are particularly beneficial as they affect the most needed and economically beneficial areas for innovation in the new quantum age of wealth creation.

    Just imagine, Joe Blow six pack laid off from GM and his wife downsized from the Postal service. Maybe they use to make over 100,000 a year and had all the benefits. Now those jobs are not coming back. Then the husband thinks of a better way to make , market, and sell hamburgers. And the wife thinks of a new way to use the web to keep track of food and calories that helps her loose 50 pounds.

    Now Joe can’t take his idea to McDonald’s and She can’t take hers to Jenny Craig because they will surely just steal it.

    But if they could reduce those ideas to a series of steps that are applied to a specific market they could earn patents on their new, novel , and non obvious ideas!

    With Patent protection they could raise VC, or simply just start their own businesses and give the big corps some real competition!

    Competition that will create more jobs! Starting with the two Jobs Joe and his wife created for themselves as CEO of their own businesses!

  15. Sorry, misunderstood your post “sockie?”

    The government definition still applies, because even the subset of the group that you are interested in must comply with that definition in order to be classified as “small business.”

    Now if you are asking a different question, that isn’t clear. I mention this because in your retort you mention that the vast majority of small businesses have no need for and/or are uninterested in patents. Of course, there are plenty of businesses, large and small that fit into that category. But if you are talking about small businesses whose business relate to innovation, I would say that you couldn’t be more incorrect.

    Maybe if you focused less on snark and more on content I could help you.

  16. “every patent earned by a new entrepreneur creates at least one new job ”

    Unfortunately, AI, I don’t get paid to wipe my axx with crxp patents. Not really a “job.”

  17. I think a better number (definite and legally binding) can be derived from the definition of “small business,” which is governed by the Federal Government.

    Better for what purpose, sockie? The vast majority of small businesses have no need for and/or are uninterested in patents.

    I’m interested in the mean household income of a certain group of people. You know the group I’m talking about right? It’s the group whose shills (and/or their attorneys/agents) are constantly here and elsewhere griping about the PTO and Patent Reform and everything else that stands in the way of their patents. I’d like to know the mean household income of that group of people.

  18. I think a better number (definite and legally binding) can be derived from the definition of “small business,” which is governed by the Federal Government.

  19. Whether the “Leahy-Smith America Invents Act’ will help to create jobs is a complicated empirical question. Not really professor.

    While am not yet familiar with all the ends and outs of the new act, there’s one thing for certain, “every patent earned by a new entrepreneur creates at least one new job ”

    That’s a fact that has been vigorously debated on this blogged and no one could successfully refute!

  20. I have a question for the “small business” patent shills.

    What is the mean household income of the owners of “small businesses” whose businesses use the patent system?

    This data should be available through the organizations that represent the interests of such poeple.

    Please let me know, will you?

    Thanks.

    Thanks.

  21. “Let’s say the number of currently employed US patent agents doubles in the next month. How does that affect the overall unemployment rate? Put another way: pretty much nobody except patent attorneys gives a shxt about out-of-work patent attorneys, or out-of-work attorneys generally.”

    REALLY? You don’t say!

  22. “That’s a strange definition of ‘broke.’ I guess I’m “broke”, too. You are a deeply confused person. That’s [a] generous interpretation.”

    Not confused at all, Malcolm. Nor is my “interpretation” in anyway “generous.” I realize we’re on different ends of the political/ideological spectrum, but this country belongs, after all, to “We the People,” doesn’t it (or at least that’s what our Consitution says), not the federal government. (We did fight a revolution with our former Mother Country over that issue, didn’t we?) So that “debt” of $15 trillion that our federal government has run up for us is our problem too, isn’t it?

    As far as the other issues (impact of SCOTUS’ Bilski decision on the economy and whether “money grows on trees”), we can “agree to disagree” and that’s fine. Us “ranting and raving” about it any further won’t change either of our minds, and we’ve made our views clear, so there’s nothing else that needs to be said. Peace, Live Long and Prosper, Malcolm.

  23. Once the dust settles, these days of chaos will soon be forgotten.

    …Unless (heaven forbid) new types of innovation occur…

  24. Do you really believe that the “chaos” caused by SCOTUS’ “wishy washy” “absttract idea” standard is a good thing for our economy?

    I think I’ve made it quite clear that the problem with our economy right now has little or nothing to do with uncertainty about subject matter eligibility. In part, that’s because patents on the margins of eligibility generally irrelevant to “progress” in the fields to which they belong. In part, it’s because tweaks to the patent system generally are irrelevant to the overall economy. The reasons for this are rather obvious, of course, but may be difficult to see if you spend too much in an echo chamber filled with screaming skimmers.

    the feds are broke because we’re almost $15 trillion in debt?

    LOL, EG. That’s a strange definition of “broke.” I guess I’m “broke”, too. You are a deeply confused person. That’s the generous interpretation.

    do you think money grows on trees, Malcolm. Where do you think small innovative American businesses/entrepreneurs are going to get the funds for their research/innovation?.

    They will get the funds from rich people or the government, as ever. My point is that if Bilski frightens VC investors from gambling on “rights to sue” practicing entities, where those rights flow from crxp patents granted by an agency that is apparently incapable of examining them properly, then I’m all for it. The money can be invested in other “businesses” whose sole purpose for existing is to pump out reams of abstract tech-speculative paper for “investors” to gamble with.

  25. Mine was an anonymous comment that was unplanned, unedited, and to which attached no institutional or legal weight.

    You are cut from the same sad mold, IBP, as the dxxchebags who are complaining this week that Obama used a paper clip to bind some papers together.

    Get a life, lxser.

  26. EG, well, we all know the problem is and has been computers and the effort to determine just how they could be patented.  Now we know, to a degree.

    The other big test out there are medical tests and DNA.  

    I think we do need to determine just when and how these new types of techonology can be patented.  Once the dust settles, these days of chaos will soon be forgotten.

  27. Unfortunately, that may be the best solution to what has been a growing problem.

    You know what I mean.

  28. Mine was an anonymous comment that was unplanned, unedited, and to which attached no institutional or legal weight.

    His was a planned, considered writing made under not only his own name, but under that of an institution of law and the title it conferred, and to which therefore attached institutional and legal weight.

    The duty to employ correct grammar is quite obviously attendant his writing–a duty that he brought upon himself.

    This whole act has worn very thin, MM.

  29. Careful EG,

    By asking Malcolm to “keep it real,” you sound too much like that “big fat dxckhxxd crybaby. [Whose] blog sxcks and so does everyone who links to his blog.

    You are likely to be asked to go to a different blog where “keeping it real” is actually valued.

  30. Ned is oblivious to the devastation of his credibility engendered with his fanatical pursuit of “categorical Business Method MUST equal Abstract.”

    He will not read 35 USC 273, will not read Bilski 11, will not recognize patent class 705.

    A man who will not read is no better than a man who cannot read.

  31. I have no problem with “respectful disagreement” from you, Ned, and it is “respectful.” I’ll be shocked (pleasantly) if we ever get agreement on a usable standard for determing patent-eligibility area from the Federal Circuit, and (heaven forbid), SCOTUS. Unfortunately, we’ve got way too much “hubris” in the case law on patent-eligibility under 35 USC 101. The equivalent of a good case law “bon fire” in this area of the patent law wouldn’t hurt, and might actually help.

  32. MM: venture capitalist do get hurt by the 101 uncertainty. Small business find it harder to get money. Uncertainty is a killer. Again, MM, you illustrate that you know nothing about the real world.

    The great source of our innovation in this country is small businesses and venture capital together with universities to train the inventors. Uncertainty in the patent system hurts those that would go ahead with a product without a patent (gee do I want to spend all my time doing something when I may be used), and those that want the certainty of a patent (gee, do I want to go ahead when I am not sure I will get a patent for this since the “judges” on the Fed. Cir. believe that they may legislate.) Uncertainty, freezes everyone. It would be better to have no patents than uncertainty.

  33. Please get a grip on reality, Malcolm, about what I said about the AIA, and what it means (in context too). Do you really believe that the “chaos” caused by SCOTUS’ “wishy washy” “absttract idea” standard is a good thing for our economy? Did you notice in my first post above that I condemned the AIA for slanting the playing field in favor of the Goliaths like the Bank of America?

    As far as your comment on the VCs, do you think money grows on trees, Malcolm. Where do you think small innovative American businesses/entrepreneurs are going to get the funds for their research/innovatiion? That Bank of America you just noted? From the feds perhaps? Oh, didn’t you know that the feds are broke because we’re almost $15 trillion in debt?

    I don’t mind debating with you Malcolm, but keep it real, and don’t quote/refer to what I say out of context.

  34. The “professors” that post articles often have fatal flaws that they refuse to acknowledge or respond to fair criticism. It is part of the bigger problem with the entire country. For example, the software article regarding patents that lumps all software companies together and then draws causal results based on percentages. This is a fundamentally flawed method. The paper never should have been published and the “professor” should be disciplined. In my time as a researcher, such work would have meant the death knell for a researcher. Public flogging and hanging would have been too good. Now we see this all the time all the while the “professor” claiming to be independent and fair. Lemley and Moore jump to mind, but there are many more.

    Is it any wonder that there is no civil dialogue? Academic dishonesty and agenda driven research is violence. There can be no civil diagogue until “professors” are willing to respond to criticism of their papers and to disclose their economic interests. How many law “professors”, aka wh@res, publish papers to please an industry so they can get consulting or representation dollars?

    I could go on, but I have to work for a living–not wh@re it up. If you professors want a civil dialogue, then start by recognizing that we aren’t going to swollow your nonsense.

  35. Ned: “You simply will not acknowledge the simple fact that the Bilski claims were Business Method claims ……”

    The Supreme Court: “The invention at issue is claimed to be a “process,” which §100(b) defines as a “proc- ess, art or method, and includes a new use of a known process, ma- chine, manufacture, composition of matter, or material.” Bilski Vs Kappos.

    Ned: “All your BS about Bilski holding that BMs were patent eligible is just that. ”

    The Supreme Court: The categorical exclusion argument is further undermined by the fact that “federal law” explic- itly contemplates the existence of at least some business method pat- ents: Under §273(b)(1), if a patent-holder claims infringement based on “a method in [a] patent,” the alleged infringer can assert a defense of prior use. By allowing this defense, the “statute” itself acknowledges that there may be business method patents. “Section 273″ thus clari- fies the understanding that a business method is simply one kind of “method” that is, at least in some circumstances, eligible for patent- ing under §101.” Bilski Vs Kappos.

    Ned: “That said, all claims still had to pass the MOT…. ”

    The Supreme Court: “The machine-or-transformation test is not the sole test for pat- ent eligibility under §101. The Court’s precedents establish that al- though that test may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a pat- ent-eligible “process” under §101. The Court is unaware of any ordinary, contemporary, common meaning of “process” that would require it to be tied to a machine or the transformation of an article. Finally, the Federal Circuit incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test. Recent authorities show that the test was never intended to be ex- haustive or exclusive. See, e.g., Parker v. Flook, 437 U. S. 584, 588, n. 9. Pp. 5–8.” Bilski Vs Kappos.

    Ned: “What do you think Business Methods do? They manipulate abstract concepts such as risk, price, timeliness, quality, efficiency and the like. What they manipulate is not physical. True Business Methods will always be directed to abstract ideas.

    The Supreme Court: Never said the above.

    Ned: “………But the Supreme Court made it clear that if a claim did not pass the MOT, that it was highly unlikely that it would constitute patent eligible subject matter. But, if it does pass the MOT, is not likely to be a business method, as what is being transformed is something physical, and that is not the stuff of business methods.”

    The Supreme Court: “The Court of Appeals incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test. It is true that Cochrane v. Deener, 94 U. S. 780, 788 (1877), explained that a “process” is “an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. More recent cases, however, have rejected the broad impli- cations of this dictum; and, in all events, later authority shows that it was not intended to be an exhaustive or exclusive test. Gottschalk v. Benson, 409 U. S. 63, 70 (1972), noted that “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patent eligibility. At the same time, it explicitly declined to “hold that no process patent could ever qualify if it did not meet [machine or transformation] requirements.” Id., at 71. Flook took a similar approach, “assum[ing] that a valid “process” patent may issue even if it does not meet [the machine-or-transformation test].” 437 U. S., at 588, n. 9.” Bilski Vs Kappos.

  36. Ned: “I simply asked whether we could at least agree that the claims in Bilski were directed to a business method. Never, not once, did I receive a reply yes or no, with or without an explanation. You simply would not answer the question”

    My answer is no. And I will explain. While the question of whether business methods were statutory subject matter was before the Court in Bilski, at no point in the case did the Court’s majority label or rule that Bilki’s invention was indeed a business method. Therefore, adopting Ned’s definition of what a Business Method is for the purpose of discussing Bilski has no basis in fact or law.

    In fact this the entire problem with everything you are arguing Ned. I think it’s fair to say that most of commenters on the business method threads have read these cases hundreds of times.

    And It’s fairly obvious to everyone that follows this thread that you have read and adopted the viewpoint of the losers in the whole business method debate, particularly Steven’s.

    And that’s fine if you agree with Steven’s dissents and the other concurring judges on the Court as well.

    But what is just plain insulting to everyones intelligence is when you pretend that your view and theory, based solely on the Court’s dissent is the law.

    You can argue that the law should be changed, will be changed, is wrong, etc. But to sit there and type with a bold straight face, that business methods are not statutory subject matter, that Diehr did not cabin Flook and Benson, that somehow MOT , as created by CAFC is still the sole test for statutory processes is just incredulous.

    And please don’t say, or imply, that the ruling majority in Bilski stood for any of these ideas.

    To insult people’s intelligence , to openly lie so deceptively, is what makes people so angry and you so deserving of the scorn and attacks you attract.

    In the old days we called this being a troll. In the modern age maybe it should just be called being a Ned.

  37. “I simply resisted your attempt to divert the topic of conversation away from Business Methods. ”

    No Ned,

    You tried to get away with a fallacious argument and got called on it. That’s all. You can’t say that because Bilski, had faulty claims, and therefore was declared ineligible subject matter, that ALL patents with similar subject matter as Bilski is now ineligible subject matter.

    Using that logic if a composition, manufacture, and machine invention had faulty or problematic claims and was therefore declared non statutory subject matter, then those categories as a whole, would be patent ineligible subject matter.

    Rather than admit the flaw in your argument and move on you simply chose to make an az out of yourself, by denying, playing dumb, ignoring, and regressing into a pseudo passive aggressive puppyhood.

  38. I never had a hard time understanding ‘Medical Methods.'”

    but

    “Reply Sep 08, 2011 at 02:35 PM Ned Heller said in reply to Um, no….

    “I really don’t know what a medical method is.”

    WOW….. Ned busted for being dishonest.

  39. Also worth repeating:

    “Ned: “Actual Inventor, you KNOW that the reason for my post is because YOU made the statement that Diehr had nothing to do with the MOT. ”

    Ned, there is a big difference between an argument acknowledging there is a machine and transformation in Diehr, and that there is a machine and transformation test in Diehr of which his claims were required to pass, in order to be 101 statutory subject matter.

    The latter is what you have argued for either directly, or thru implication for quite some time.

    And rather than admit you lost this argument for a MOT Requirement in Diehr, on the law and facts, you simply chose to be inherently dishonest,

    And now you mutate into further fallacious disease by arguing in circular evasion.

    Congress and the Courts have created the modern legal medicine to wipe out this disease of yours Ned.

    Article 273

    Bilski 11

    Bilksi 14

    Research Corp

    Classen

    But very time a new vaccine is created that can save you with healing legal truth, a new strain of dishonesty emerges.

    Which makes me wonder, is it you Ned Heller that is sick with this disease, or are you the disease itself?”

  40. I never had a hard time understanding ‘Medical Methods.’

    but

    Reply Sep 08, 2011 at 02:35 PM Ned Heller said in reply to Um, no….

    I really don’t know what a medical method is.

    W

    T

    F

  41. While I agree we should go to a first to file, that is about all this act is good for. How many different ways can a patent now be challenged? Too many to count on one hand. If you are a small inventor, you now have no possible way to assert your patent. And, unless you want to pay a hefty fee, your application will get shoved to the back of the pile, and good luck raising any investment money without a patent.

  42. IBP This blog is getting really thin on law, and overly thick on policy

    Consider reading a different blog, then, instead of this one. I’m sure there are blogs more suited to your tastes that would welcome a resident grammar “expert.”

  43. Furthermore, he is paid using public funds, and his competence and performance should be evaluated by every member of the public who is able to offer a worthwhile, or relevant perspective.

    I am quite precisely a member of his intended audience, and it is therefore HE who has determined that my perspective is worthwhile.

    He should welcome the criticism, as a rational adult. It is not made maliciously, but matter-of-factly. The style of the writing was overly burdensome for this member of his intended audience to endure, which is something that any serious author should want to know.

  44. Seriously, “John S. Mill”.

    The duties come from at least PTO Canons 1 (“A practitioner should assist in maintaining the integrity and competence of the legal profession.”) and 8 (“A practitioner should assist in improving the legal system.”)

    Shubha Ghosh has held himself out as having authored the writing in his capacity as a “Professor of Law”. As law professors are reasonably considered a part of the legal system, if not a part of the legal profession (especially Shubha Ghosh), it is his actions that trigger the duty.

    This blog is getting really thin on law, and overly thick on policy, as is the patent legal system in general. As far as legal writing goes, the article is deplorable, so it should more rightly be regarded as policy writing. Even in that light, it is essentially unreadable.

  45. Worth repeating, your post is replete with, ah, stretches….

    I never had a hard time understanding “Medical Methods.” I simply resisted your attempt to divert the topic of conversation away from Business Methods. The conversation was about Bilski. We could not agree on its holding, so I tried an incremental approach. I simply asked whether we could at least agree that the claims in Bilski were directed to a business method. Never, not once, did I receive a reply yes or no, with or without an explanation. You simply would not answer the question.

    Your posts here continues the evasion and misrepresentation and diversion of attention. You simply will not acknowledge the simple fact that the Bilski claims were Business Method claims and that they were held not to be patent eligible. All your BS about Bilski holding that BMs were patent eligible is just that. The Supreme Court did not hold that. They simply held that the BM were not categorically excluded. That said, all claims still had to pass the MOT or some other test; but most of all, they could not claim abstract ideas. The claims in Bilski were directed to abstract ideas. What did you expect when all they do is manipulate and adjust the abstract concept of risk? What do you think Business Methods do? They manipulate abstract concepts such as risk, price, timeliness, quality, efficiency and the like. What they manipulate is not physical. True Business Methods will always be directed to abstract ideas.

    If a claim otherwise passes one of the traditional tests, it is directed to patentable subject matter. But the Supreme Court made it clear that if a claim did not pass the MOT, that it was highly unlikely that it would constitute patent eligible subject matter. But, if it does pass the MOT, is not likely to be a business method, as what is being transformed is something physical, and that is not the stuff of business methods.

    You, Um, no, or whoever you are, are a slippery pig indeed. You never engaging in a direct conversation. Never. Not once that I can recall. You always pull these same stunts of remonstration, evasion, diversion and avoidance of taking any substantive position, as witnessed by your preceding post.

  46. repeated because it is worth repeating:

    Ned,

    I personally don’t see this line of reasoning ridiculous at all. The Supreme Court text in Bilski clearly treats Business Method patents as a type or category of Method patents, rather than the more intensive scope of “categorically” that underlies your arguments.

    Perhaps this is why you had difficulty understnading the “Medical Methods” terminology on a previous thread.

    I advise you to try reading Bilski again without a closed mind on this matter.

  47. Sure if you like vitriol and unwarranted and wild mis-statements of law, I can see where the “Promotion Blitz” would become extremely tiresome. It really is a pain to those to be shut down in there styles of false preaching, outright l i e s and other such games (even to the point of being banned).

    On the other hand, having some of the very top names in Patent Law giving you exclusive interviews tends to give a slightly different message.

    And by the way, H-tler never said what Gene has said. Nobody would dare say that (they would lose more than their job).

  48. The fact that I engender such hatred suggests I am doing a lot of things correct

    Or maybe the insult merely suggests that the IPWatchdog Promotion Blitz had become extremely tiresome.

    I’m just guessing here.

  49. I’m already certain you have no idea what you’re talking about.

    Don’t worry Tsar, that has never stopped Malcolm.

  50. well for one, he has published in a forum with open comments (the excise of these comments is well nigh unprecedented).

  51. Whoa whoa whoa, MM and Ned beat me out for the grossest violator?

    COME ON. GIVE CREDIT WHERE CREDIT IS DUE.

    I have literally made people quit reading the blog. I have never noted anyone to do that in re to Ned or MM.

    Also, I think that if D et al. decided to reign in my comments directed to certain hawt lawl professors then whatever comments he decided to delete in this thread are probably in the same line. He just doesn’t want individual authors of papers presented to be abused in his comments.

    Also, I would just like to say for the record:

    Heeeeeellllllloooooo Professor! in re a previous thread.

  52. If patents were to become especially hard to get but bullet-proof, that would mean far fewer job opportunities for patent lawyers both in prosecution and in litigation, as well as less work for patent agents, paralegals and so forth.

    Try to step out of your bubble for a moment and get a sense of perspective. Let’s say the number of currently employed US patent agents doubles in the next month. How does that affect the overall unemployment rate?

    Put another way: pretty much nobody except patent attorneys gives a shxt about out-of-work patent attorneys, or out-of-work attorneys generally.

    this legislation … won’t have any noticeable impact on patent quality any more than Obamacare is going to increase the average American’s lifespan.

    Is that because the lifespan of a country’s citizens is unrelated to the availability of affordable healthcare? Or because the concessions to the insurance companies ncessary to get Republicans to sign on to the plan effectively neutered the plan’s proposed impact? Or something else?

    You don’t need to answer. I’m already certain you have no idea what you’re talking about.

  53. On the issue of job creation and patents, might there not be an inverse correlation between the two? If patents were to become especially hard to get but bullet-proof, that would mean far fewer job opportunities for patent lawyers both in prosecution and in litigation, as well as less work for patent agents, paralegals and so forth. In the short term at least, substantial improvements to patent quality might well increase unemployment.

  54. Want to improve the quality of patents? Then start by revisiting the number of hours each examiner has to generate one b.d. That these numbers have not been rethought in over thirty years is nuts, and nothing goes more directly to the quality of examiner work product than the number of hours allotted to generate that product. Of course, this legislation has nothing whatsoever to do with this and won’t have any noticeable impact on patent quality any more than Obamacare is going to increase the average American’s lifespan.

  55. But when a law professor puts pen to paper, as opposed to discussing something informally or colloquially, society in general and patent attorneys in particular have duties to both the field and to the profession to evaluate and comment on the work.

    Seriously? Where do these duties come from?

  56. I do not disagree. What do you think the judges of the Supreme Court really thought when confronted with Bilski? That somebody, somewhere, had taken leave of their senses? The proceedings were not calculated to improve the respect accorded to the patent system by senior judges.

  57. Will anyone please tell me what is generally understood by “patent quality”?

    Generally speaking, “patent quality” means that patents aren’t being granted merely because the claims satisfy certain formal requirements (e.g., reciting a machine) but because they are useful, new and non-obvious, in addition to being sufficiently described and enabled by the specification.

    More specifically, when you see a patent issuing on a computerized method of identifying a bird, wherein the claims recites the same steps a human would use to characterize a bird except they are carried out on a computer, then you know that overall patent quality must be low. Likewise with claims directed to computerized methods of, e.g., informing someone that because they did X, they might want to buy Z.

    The granting of such claims indicates that the USPTO is incapable of doing what it’s supposed to do. Until such claims cease being granted or it is made trivially easy (i.e., essentially free) for any member of the public to invalidate/rescind patents on such claims, then we should be satisfied that overall patent quality is “low.”

    Be aware that there is substantial contingent of users of the US patent system who prefer to keep the quality of patents being issued by the USPTO as low as possible and who fight and complain about any and every change that might “raise the bar” on what may be patented. I will leave it as an exercise to the reader to determine why that might be the case (hint: it’s not because these people care about “job creation”).

  58. Will anyone please tell me what is generally understood by “patent quality”?

    As a European practitioner, and armed with the excellent land largely consistent jurisprudence of the EPO Appeal Boards, not to mention the long traditons of UK national law, I have a fairly good idea.

    But how about the US? The concept of unobviousness is distinctly nebulous and a systematic approach is difficult to discern. The doctrine of inequitable conduct, which is the enemy of early identification of the closest prior art, or even the singling out of anything at all, does not help. So there is a fog in which the USPTO and the courts are condemned to do their best.

    A good aim would be not to grant patents which are valid but patents which do not offend the judges overmuch. But until the basic rules are settled, which at the moment they are not, that remain a difficult aim.

  59. Yeah, sure. I’ll bet your the dude who believes Bilski held that BMs are patent-eligible, and explained away the Supreme Court’s holding that the Bilski claims before it were not patent-eligible because, even though business method claims were patent-eligible, these claims were not business method claims.

    Laughable.

    What a joke.

  60. Consistent and equitable…

    Yeah, right.

    When a fellow academic is criticized (correctly) for how the academic presents their arguments and what those arguments contain, a quick redaction is in order.

    But when THE most foulest-mouthed, biggest crybaby continuously runs an in terrorem posting style, well, nobody in charge seems to notice.

    But others have.

    From that very person maligned:

    I have no idea who Malcolm Mooney is, but that it an example of the type of comment that would not be acceptable on IPWatchdog.

    The fact that I engender such hatred suggests I am doing a lot of things correct. The fact that this person feels the need to attack me personally rather than attack my positions speaks far more about him then me. The fact that Patently-O tolerates such a comments is curious. This is the type of mindless nonsense that makes intellectual dialogue on the Internet nearly impossible.

    Seriously Inappropriate indeed.

  61. “Scuttle from our firm’s meeting is that we will be DOUBLING rates charged for patent prosecution due to the increased risks and complexity of the pending law.

    He said just before all his clients dried up.

  62. IBP More fundamental than even writing style is basic grammar

    You don’t say. Let me fix that for you:

    “Even more fundamental than writing style is basic grammar.”

    There we are. Even better:

    “Basic grammar is even more fundamental than writing style.”

    You’re welcome.

  63. I really like your post on “broadest reasonable interpretation.” Examiners do not have to define their claim construction, as you state, except by implication. They will make their constructions definite, if claim construction becomes a declared issue; but I would suggest that most applicant’s attorney are simply willing to amend the claims in order to “clarify” a very broad and unexpected claim construction.

    The reason this issue has become important is in reexaminations, where any limitation added to a claim can cause lose of past damages. Because of this, patentees are willing to go to the mat with the examiners and, if required, the BPAI and Federal Circuit, on claim construction if that is the problem.

    Given the weirdness of many of these constructions, providing any deference to the PTO smacks of …. well, I’ll let you fill in the blanks on that one.

  64. Why don’t you just tell all the patent prosecutors and their staff to get out now? Why wait until you lose all your clients?

  65. Well, you do have a point there. See, Application of Musgrave and Rich’s definition of Useful Arts as “technological” — subsequently overruled in Benson.

    link to scholar.google.com

    ” All that is necessary, in our view, to make a sequence of operational steps a statutory “process” within 35 U.S.C. § 101 is that it be in the technological arts so as to be in consonance with the Constitutional purpose to promote the progress of “useful arts.” Const. Art. 1, sec. 8.”

    Even Baldwin in Musgrave was appalled by Rich’s radical departure from established law.

    “BALDWIN, Judge (concurring).

    I feel compelled to speak out against the majority opinion. It is my position that the doctrine promulgated by that opinion, which constitutes a major and 894*894 radical shift in this area of the law, is a serious breach….”

    Now turned to the overruled In re Benson, which opined,

    “Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines — the computers — are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts.” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?”

    link to scholar.google.com

  66. Scuttle from our firm’s meeting is that we will be DOUBLING rates charged for patent prosecution due to the increased risks and complexity of the pending law.

    That’s to pay for all the extra people you’ll be hiring to help you deal with all the paperwork, right?

    LOL. Everyone knows that the “job creators” don’t think that way. Oops, I just revealed another “secret” business method. I’m so naughty.

  67. It depends, Flippy, on whether piling patents to the moon in order to impose licensing royalties on technology businesses according to the size of the pile makes one a patent “assertion” entity.

    What’s your take?

  68. Thank you AIA.

    Scuttle from our firm’s meeting is that we will be DOUBLING rates charged for patent prosecution due to the increased risks and complexity of the pending law.

  69. Q: if IBM sues on a patent for a next generation computing technology that they are not practicing, are they a non-practicing entity?

  70. “Such administrative review might limit the ability of non-practicing entities to use patents of dubious value to hinder effective use of technology and innovations. ”

    What exactly is: 1) a non-practicing entity; and 2) a patent of “dubious” value.

    Mr. Gosh has clearly had more than a sip of the Kool-Aid.

  71. Attacking the presumption of validity is a key point in the deconstructionist agenda. The two new post grant procedures accomplish much of that by providing the opportunity for endless post grant proceedings designed primarily to tie up critical grants while large companies infringe with impunity during critical first-to-market time windows. After that, who cares?

    It’s really that simple.

  72. I was considering a patent application directed to methods for becoming unemployed. (One embodiment involves posting lots of messages on chat boards while simultaneously logging billable hours.) But it occurs to me that this is the ultimate tax avoidance strategy. Oh well.

  73. Hey, I am all for Dennis reining in “inappropriate comments” as long as that is done in a consistent and equitable manner.

    Let’s start with the grossest violators: Malcolm and Ned. Foul and vacuous posting and clearly misapplied and dishonest treatment of law are most definitely “inappropriate.” Ne vous êtes d’accord?

    Oh wait – there go 60% of the volume of comments (well, actually more like 90%, as another 30% of comments are geared to correcting the abuses perpetrated by the two biggest azz clowns on the site).

    Not. Going. To. Happen.

  74. EG, I’m sorry, but I will have to respectfully disagree, but only to a degree.

    At least since Cochrane v. Deener, as clarified in Benson, we have had a somewhat clear definition from the Supreme Court as to the requirements for patent eligibility of a process, namely, what we now call the “machine or transformation” test.

    But I will agree that some confusion was caused by Douglas’s digression into whether the computer was a “use” of the algorithm. As we all know, processes use machines, articles of manufacture, or compositions of matter to produce a practical result within the Useful Arts. Confusing the computer, which is one of the tools used by a mathematical process, with the practical result required by process, is the source of the confusion that led to Flook and its further confusion of the topic. But Diehr got us a squarely back on course by relying on the machine or transformation test from Benson and ignoring the Douglas digression into whether the computer was a use, or a tool.

    The real problem, as we all recognize today, was not the Supreme Court, but with the CCPA inventing new tests specifically designed to make patent-eligible, computer programs and business methods. We all know what those cases were, and they go back to, for example Application of Musgrave, In re Benson, In re Alappat, and State Street Bank. Thankfully, the Federal Circuit finally realized the damage it was doing the patent system by these aberrant tests, when it announced in In re Bilski the primacy of the “machine or transformation test.”

    As five justices of the Supreme Court basically held (see the Breyer concurrence), even though this machine or transformation test is not the exclusive test, it is highly unlikely that any process that does not meet this test will be patentable subject matter.

    Therefore the confusion that was caused by the CCPA, and in particular by Judge Rich, has largely now been clarified.

  75. Nice but so what? Congress doesn’t have to use that power to its limit.

    Doesn’t have to – perhaps.

    Has done so – affirmative (and this has been confirmed by standing case law to) – re “there is no such thing as a technological arts requirement.” I am sure the OMFG! poster knws EXACTLY the proper case citation to provide.

  76. “The Constitution provides for Congress to have the power to promote the useful arts, not the technological arts.”
    Nice but so what? Congress doesn’t have to use that power to its limit.

  77. Anything that gets 101’d is not a technology.

    Nice but so what? The Constitution provides for Congress to have the power to promote the useful arts, not the technological arts.

  78. “By using 35 USC 101 too often as the initial screen, the Supreme Court has put squarely jeopardy the ability of American innovative businessess (especially small businesses) to realistically evaluate what technologies to pursue”

    Anything that gets 101’d is not a technology. So stop worrying about that.

  79. Dennis–

    I would like to know why you considered my comment critical of Shubha’s writing style “inappropriate”.

    I realize that not everything written on this blog is carefully researched and edited, especially the comments.

    But when a law professor puts pen to paper, as opposed to discussing something informally or colloquially, society in general and patent attorneys in particular have duties to both the field and to the profession to evaluate and comment on the work.

    The work is more than the mere content of the writing–it also has elements of form and style upon which it is not only appropriate to comment, but incumbent.

    More fundamental than even writing style is basic grammar, to which is done significant violence in the writing.

    I would enjoy reading the piece, if only I could. I encourage Shubha to examine the writing and attempt to render it more accessible via changes to the style and to the grammar.

  80. Also, ban against “tax avoidance patents” may affect a couple hundred patent applications … at best???

    Depends on how the statute was written. In the absence of legislative history, a statute banning claims “directed to tax avoidance strategies” could reasonably be construed to ban all patents that implicate, directly or indirectly, any activity that could theoretically be used in an effort to reduce any tax paid for any reason, e.g., travelling, database searching, child-bearing, replacing an energy-inefficient device with a more efficient one, etc.

    Or so I’ve been told. ;)

  81. In short, the Supreme Court’s “we know an abstract idea when we see it” approach ultimately becomes a “jobs killer” in America.

    Do you believe that Bank of America is firing 30,000 employees at its customer branches throughout the country because of uncertainty about 101? If Bank of America had more patents on methods of banking, do you think it could hire more people? Do you believe that if “small businesses” were granted more patents on new methods of accounting that they could use so sue Bank of America, that this would lead to a net creation of jobs?

    those who financially support such innovative American businesses (e.g., VC capital) don’t take too kindly to such “chaos” created by the Supreme Court

    I think it’s safe to say that worrying about what “venture capitalists” want out of any system is a dxmb idea, unless pf course you’re a “venture capitalist” or someone interested in skimming money from such sources. Then again, there are a great many “inventors” and “small businesses” for whom that is the entire game, isn’t it. It’s not
    “inventing”, really. It’s technology speculation. And the more vague you are allowed to be when you speculate, the better your chances of hitting the jackpot. This has nothing to do with “creating jobs” or “promoting progress”, however. It’s just gambling.

  82. “The author writes that, because ‘the presumption of validity is troubling’, we should give the PTO more deference.”

    I caught that one. When it comes to reviewing a rejection by the USPTO, the author is advocating great deference to the USPTO. However, when it comes to reviewing a patent issued by the USPTO, this presumption of validity is “troubling.” Talk about wanting to have your cake and eat it too.

    Also, the author’s statements about post grant proceedings improving patent quality reflects a lack of knowledge as to the current system, which already has post grant proceedings. Also, ban against “tax avoidance patents” may affect a couple hundred patent applications … at best???

    “expansion of the prior user right defense might also soften the effects litigation, threatened or actual, on business development”
    Hardly.

    “provide tools for per se rejections that do not require extensive examinations of the prior art”
    No … it is incredibly easy to overcome a 101 rejection using the MOT test. Your “per se rejections” aren’t going to cut it.

  83. Shubha,

    Let me also add that what you propose Congress should do would simply make 35 USC 101 an even worse “jobs killer” in America.

  84. Professor Ghosh: The goal of promoting progress should not be taken lightly and should not be reduced to the mantra of “jobs, jobs, jobs.” Using the patent system to create jobs is in some ways a misguided one. Improving patent quality can strengthen the process of innovation which can aid the economy at a fairly high level. But a better patent system is no substitute for jobs training and an industry targeted jobs bill that creates incentives for hiring and for investment.

    This point has been made by a great many commentators in the past several months but I haven’t noticed it being made by patent professionals. Thanks for putting it out there. It’s something that can’t be repeated often enough. I’d go further and say now more than ever (tho it was certainly true two years ago) nothing would help the economy (and the country) more than a massive government stimulus geared to infrastructure repair and development. Austerity is going to cause the average American nothing but pain (but, importantly, won’t affect the already wealthy, e.g., those for whom our patent system is simply another casino to hit).

  85. “But Congress could have gone further in clarifying the Bilski v Kappos decision, which seemed to place some limits on the types of processes that could be patented.”

    Shubha,

    What you say is an understatement on the utter “chaos” the Supreme Court has created in Bilski and other earlier decisions on how to determine patent-eligibility under 35 USC 101 in any sort of objective manner (including no meaningful definition of what is an “abstract idea”). But I COMPLETELY DISAGREE with your proposed solution by Congress to modify 35 USC 101 (including excluding so-called “tax avoidance” patents as has occurred in the AIA). The courts, including the Supreme Court, should be focusing on the “patentable merits” sections (35 USC 112, 102, and 103) to screen out the “bad,” not 35 USC 101 as they’ve unfortunately done too often in the past. Chief Judge Rader’s suggestion in this regard in Research Corp. Technologies bears repeating:

    In the context of the statute, this court notes that an invention which is not so manifestly abstract as to over-ride the statutory language of section 101 may nonetheless lack sufficient concrete disclosure to warrant a patent. In section 112, the Patent Act provides powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention. Thus, a patent that presents a process sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite because the invention would “not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.”

    By using 35 USC 101 too often as the initial screen, the Supreme Court has put squarely jeopardy the ability of American innovative businessess (especially small businesses) to realistically evaluate what technologies to pursue and to even potentially inhibit pursuit of advanced technologies that don’t fit neatly into the “pigeon holes” that the Supreme Court creates too often out of thin air. Also, those who financially support such innovative American businesses (e.g., VC capital) don’t take too kindly to such “chaos” created by the Supreme Court which then trickles down to the Federal Circuit, lower courts and the USPTO. In short, the Supreme Court’s “we know an abstract idea when we see it” approach ultimately becomes a “jobs killer” in America.

  86. This is the worst post at Patently-O ever. Problems, in order from biggest to smallest:

    1. The author writes that, because “the presumption of validity is troubling”, we should give the PTO more deference. The backwardness of this logic makes my head hurt. The whole point of the presumption of validity is to give the PTO a huge amount of (ostensible) deference. If the presumption is “troubling”, that is a reason to give the PTO LESS deference, not more. The author appears to be unaware of how backwards the opposite conclusion is.

    Or is the author suggesting that we should give the PTO deference when holding against applicants and patent owners, but not when holding for them? Such an anti-patent asymmetrical bias is nowhere suggested in the post, probably because it sounds ridiculous on its face.
    2. The author argues that we should give the PTO more deference without mentioning that the PTO already gets overwhelming deference on all findings of fact – the substantial evidence standard. See Zurko. What more does the author want? Should we just bend over and let the PTO do whatever the h*** it wants? Why would that be a good thing?
    3. The author suggests that we should give the PTO more deference on claim construction. It is true that claim construction is reviewed de novo. What the author doesn’t mention, though, is that it is a completely different, anti-applicant standard – the “broadest reasonable interpretation” standard – that is reviewed de novo. The standard basically allows the PTO to interpret claims as broadly as it likes, as long as the interpretation is not absurd or overtly inconsistent with the specification. It is a de novo review of a standard that already gives the PTO a huge amount of leeway in over-broadly interpreting claims to the disadvantage of applicants and patent owner.
    4. The above point (2) is symptomatic of a larger, implicit confusion running throughout the whole post – a confusion between court/agency review in proceedings involving the PTO (e.g. examination, reexamination, interferences, and BPAI appeals) and court/court review of infringement litigation. The author complains about outcomes in infringement litigiation – like MS v. i4i – and then argues for giving the PTO more deference. Beyond the absurdity of arguing that the PTO should get more deference because the presumption of validity is “troubling,” the author appears unaware that PTO proceeding and infringement litigations are very different animals, not least because they use very different standards for claim construction.

    For example – the author’s complaint about claim construction echoes concerns about Cyber Corp. and de novo review of district court claim construction – not the PTO’s construction. Complaints about Cybor Corp. are old and legion. They provide a reason to give district courts deference, not the PTO. During the PTO it is rare for the examiner or APJ to ever explicitly construe claim terms, Markman style. See In re Jung.
    5. The author argues that post grant proceedings may improve patent quality. This may be true. But it is based on a narrow definition of “quality” as roughly synonymous with “validity.” What the author doesn’t mention is that, according to former Chief Judge Michel, the AIA provides so many post-grant proceedings that one can keep about any patent in PTO post-grant proceedings for about a decade, while generally staying litigation. These decade long delays will radically lower the value of patents. Any talk of patent “quality” should also consider how valuable patents are. High “quality” patents are worthless if that cannot be enforced in a timely and cost-effective manner.
    6. The author writes that “Congress could have added more certainty by removing abstract processes (e.g., a method of arbitration, hedging strategies) from patentable subject matter.” That proposal would merely codify Bilski, which reaffirmed that abstract ideas can’t be patented, in the U.S. Code, even though it is already judge-made law. Accordingly, it would be a trivial tweak that would do basically nothing to improve the patent system – hardly a fault of the AIA worth mentioning

  87. Thanks for a well-written and thoughtful article, Professor Ghosh. Straight and to the point. I don’t agree with every one of your suggestions, but I liked paragraph 3. Congress (intentionally, no doubt) missed a good opportunity to provide some additional certainty regarding the scope of 101.

  88. To put it politely, Congress jumped the shark when job creation became a primary goal of patent reform. Are they going to count jobs “saved or created”? What about the jobs needed, but not created – in other words, lost – because the PTO doesn’t get the benefit of its own fees? Is there some not-so-shovel-ready construction project that will receive the diverted fees and that will magically reduce the application backlog (say, because inventors put down their laptops and pickup shovels) or put Americans in sustainable, high-skill jobs?

    Here’s my proposal – during examination, encourage (or make) inventors include a description on how the claimed invention will create U.S. jobs. Since everyone is entitled to a government-sponsored job (or house – see the 2008 Crash), a “jobs impact statement” makes perfect sense as the new quid-pro-quo.

    In short, the debate about patent reform has been framed to include the ludicrous.

  89. “Whether the ‘Leahy-Smith America Invents Act’ will help to create jobs is a complicated empirical question”

    Shubha,

    It’s not “complicated” or “empirical.” The fact is, the AIA won’t create jobs, at least not in America, but is far more likely to encourage the continued fleeing of those jobs overseas. The AIA continues to tilt the playing field in favor of the Goliaths (aka large multinational corporations) who use power and size, not patents, to compete, against the Davids (aka small innovative American businesses) who can only compete (and survive) against these Goliaths if the David’s are able to prevent their innovation from being taken by the Goliaths. There’s nothing in the AIA that’s “American,” “reform” or “job creation” as far as America is concerned. The only ones who believe this malarkey that AIA is “American,” “reform” or will foster “job creation” are either delusional in their thinking or are those who supported this awful piece legislation for lucre (aka took the special interest money hook, line, and sinker). The AIA remains in my view an utter sham, tainted and corrupt, as reflected by the special interest provision appended to the AIA to potentially save the financial “skin” of a very large law firm from an impending malpractice suit. Need I say more?

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