H.R. 6621: Proposed Modifications to the America Invents Act of 2011

On November 30, Rep. Lamar Smith introduced H.R. 6621, a Bill titled "To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code". Because of its late introduction, the Bill would need to be passed and enacted before the new Congressional session begins in early January. The most likely outcome is that no action will be taken and the Bill will be reintroduced in 2013. A second viable alternative is that the language of the Bill will be included as part of a massive fiscal cliff resolution Bill. The Bill includes a number of interesting elements. In that case, there would be virtually no official debate on the Bill or its contents.

Killing pre-GATT applications: There are currently around 200 applications pending that were filed prior to the 1995 patent term changeover. Once issued, those applications will have a patent term of 17 years from the issuance date. If issued as patents, these applications will likely be disruptive to settled interests in various industries. H.R. 6621 would alter the rules for calculating patent term for any application still pending 1-year from the Bill's implementation date. For those applications, the patent term would be 20 years from filing — meaning that those patents will likely be expired. Because of their pre-URAA filing date, those applications would not be eligible for patent term adjustment. At this point, I am unsure how the change would impact applications whose issuance was delayed due to a US Government secrecy order. On 2012, the USPTO has issued 24 applications with pre-URAA filing dates. Of those, five were delayed due to secrecy orders. One example is Patent No US8,278,099 is interesting in that it claims a monoclonal antibody to human thrombopoietin and is owned by Genentech. Prosecution of that application was delayed for 10 years pending the outcome of an interference in a related case. The application makes clear that the claimed antibody could be either isolated from a human or else prepared by recombinant or synthetic methods. This breadth brings the claimed antibody within the ambit of the Myriad gene patent challenge. If isolated human genes are not patentable what about isolated human antibodies? But I digress.

Post-Grant Dead Zone: Once the AIA is fully implemented, an issued patent will be immediately challengeable through a post-grant review. Then, after a nine-month window, challenges will be available through inter partes review. However, the AIA has bit of an implementation issued because (1) post-grant reviews will only be available for patents issued on applications filed on or after March 16, 2013; (2) inter partes reviews are available for all patents, but only those that have been issued for at least 9-months; and (3) the old inter partes reexaminations are no longer available. This creates something of a dead zone in that for the next couple of years patents will not be challengeable through some inter partes system for the first 9-months. H.R. 6621 would eliminate that 9-month dead zone by allowing inter partes reviews to be filed at any time for applications with an effective filing date before March 16, 2013.

Delaying Inventor's Oath: Section 115(f) of the AIA indicates that an either an oath, substitute statement, or sufficient assignment must be submitted prior to the notice of allowance of a patent application. The amendment would push that deadline back to be "no later than the date on which the issue fee for the patent is paid."

Less Patent Term Adjustment: The current language of Section 154(b) suggests an applicant may begin accumulating PTA as of the filing date of an international PCT application that is later followed by a US national stage application. The proposed amendment would eliminate that option by clarifying that the PTA calculations only begin "commencement of the national stage under section 371 in an international application." The change also provides that the PTO calculate PTA with the issuance rather than at the notice of allowance. The amendment would also clarify that PTA challenges may only be filed in the Eastern District of Virginia.

US as International PCT Office: H.R. 6621 would eliminate 35 U.S.C. 373. That section currently limits who may file international PCT applications at the USPTO. Under current rules, at least one of the inventors or the assignee must be a resident or national of the United States of America.

Sharing Fees Between the Patent and Trademark Side: The AIA requires that, for the most part, fees collected on patents be used to cover "administrative costs of the Office relating to patents" while fees collected on the trademark side be used to cover "administrative costs of the Office relating to trademarks." H.R. 6621 would eliminate that restriction and thus allow patent fees to pay for trademark operations and vice versa.

Derivation Proceedings: The AIA eliminated the ongoing viability of interference proceedings (although some will be pending for years) but created a new beast known as a derivation proceeding. H.R. 6621 would clean up the language for initiated a derivation proceeding under 35 U.S.C. §135(a). I need to think some about the language to understand the substance. I have created a rough mark-up of this language. (/media/docs/2012/12/CompareNewOldDerivation.docx).

Noticeably absent from this bill are changes to clarify the new section 102 or to modify the estoppel provisions of post-grant oppositions. Still pending is the Patent Law Treaties Implementation Act of 2012 and the Saving High-Tech Innovators from Egregious Legal Disputes Act of 2012. In my estimation, the first still has a good chance of passing this term while the second does not.

106 thoughts on “H.R. 6621: Proposed Modifications to the America Invents Act of 2011

  1. Says the guy who feels the need to describe his positions as irrefutable.

    Not just that, but irrefutable on his infamous sniff test.

    No real surprise here.

  2. When a claim is functional, then, what 112, paragraph do you think proper?  The SC has said, multiple times, that 112, p.2, is the proper grounds, although, O'Reilly v. Morse can be read as support for a 112, p.1 rejection — as well?

  3. The value of any property right is entirely speculative

    I assume we’re talking about the supposed property right in the initiated qui tam action, right?

    But how is this different with respect to patent rights that have not yet been granted and that might never have been in any case?

    The Federal Circuit didn’t address the takings issue in this case, but they did reference the District Court’s holding:

    The district court went on to reject Mr.
    Brooks’s argument that he cannot seek compensation under the Tucker Act because “no amount has been set forth by any party in this action.” Id. at *6. That observation, the district court noted, “is the very reason [the] takings claim would likely fail, were it to be adjudicated.” Id. The district court further noted that “[t]he Takings Clause protects only vested property rights.” Id. (citing Landgraf v. USI Film Prods., 511 U.S. 244, 266 (1994)).
    But a “‘property right in any cause of action does not vest until a final unreviewable judgment is obtained.’” Id.(quoting Ileto v. Glock, Inc., 565 F.3d 1126, 1141 (9th Cir. 2009)). Mr. Brooks “never had the guarantee of a property interest in his lawsuit,” the district court explained, “if for no other reason, because he might lose his case against Dunlop.” Id.

    Translating that into the AIA situation here, “The pre-GATT patent applications never had the guarantee of a property interest in their patent applications, if for no other reason than that their claims might be finally rejected and all procedural mechanisms exhausted.”

  4. There have been hearings on this issue and the action is proportionate.

    Most importantly, the qui tam action only gave an upper limit of damages, but no lower limit: a could could (and has) given fractions of a cent per infringing article. The value of any property right is entirely speculative, and so the government will win in a takings action

  5. “I spoke to several colleagues about this. The only times we’ve ever let a petition sit around that long without taking (invariably successful) steps to have the petition acted on was when our SPE instructed us to do nothing.”

    Fixed it for ya.

  6. Thanks for the link, LB.

    “Provided that the retroactive application of a statute is supported by a legitimate legislative purpose furthered by rational means, judgments about the wisdom of such legislation remain within the exclusive province of the legislative and executive branches.” Id. at 729; see also United States v. Carlton, 512 U.S. 26, 30-31 (1994). This “‘burden is met simply by showing that the retroactive application of the legislation is itself justified by a rational legislative purpose.’” Carlton, 512 U.S. at 31(quoting Pension Benefit, 467 U.S. at 729-30 (1984)).

    I don’t think it’s very difficult to articulate a rational purpose for tossing these pre-GATT applications in the trash. One purpose would simply be to remove the unfairness to the public should these (allegedly) “foundational” patents be granted a quarter century into their lifetimes, and also to the end of the uncertainty that will surely arise if they continue to be prosecuted for years (which is surely what many of the owners would prefer, as long as they are eventually assured of a grant). Something like that. Not much is needed, after all.

    the legislative history suggests that Congress was particularly concerned with the perceived abuses and inefficiencies stemming from false marking claims that were initiated before the
    AIA was signed into law. In our view, this alone constitutes a rational legislative purpose.

    Yup. Put a fork in these pre-GATT applications and break out the champagne. They are d.o.a. Buh-bye to them and good riddance.

  7. Hey, here’s a brand new case that’s at least somewhat relevant. This case is interesting for another reason – it features our old friend Kenneth Brooks, who used to frequent these boards. He may still, I suppose. (anon, is that you?)

    /media/docs/2012/12/12-1164.pdf

    Anyway, the Federal Circuit holds the AIA’s abolition of qui tam actions for false marking did not violate due process with respect to folks (like Mr. Brooks) who had already initiated such an action. Note also that Mr. Brooks had earlier argued an unconstitutional taking, but apparently abandoned that argument for appeal.

    This case suggests to me that the courts will be pretty skeptical that the change at issue here effects an unconstitutional takings of the unvested expectation of a patent. But I’m interested in seeing contrary thoughts.

  8. petitions and appeals that sit around at the PTO for years on end with no action. But that’s all Mr. Hyatt’s fault for being “passive” right?

    I spoke to several colleagues about this. The only times we’ve ever let a petition sit around that long without taking (invariably successful) steps to have the petition acted on was when the client instructed us to do nothing.

    So the answer to your question is “yes.”

    Hal Wegner and Greg Aharonian

    The dynamic duo! They are never wrong about anything, ever.

  9. Because the 112, 2nd rejections were bullsh1t. They were the typical examiner attempt to force an applicant to amend claims perceived as “too broad” (i.e. too short).

    Keep pounding that table. It worked so well the first time around.

  10. “Maybe the PTO is simply waiting for Congress to step in and do the right thing.”

    Because the PTO is unwilling/incapable/takeyourpick of doing the right thing themselves. In other words, they are, at best, grossly incompetent.

  11. “Throughout the prosecution, the attorney never seemed to understand the nature of the 112 rejection.”

    Because the 112, 2nd rejections were bullsh1t. They were the typical examiner attempt to force an applicant to amend claims perceived as “too broad” (i.e. too short). There was nothing unclear about what applicant claimed.

  12. It’s quite plainly the exact opposite? Is that your irrefutable conclusion?

    Let me guess, your irrefutable conclusion is not based on your own review of the file history, but on Leo and/or Ned’s posts. Right?

    The claim that was ultimately allowed was basically the original independent claim 1 amended to include original dependent claims 2 and 3, with some particular optional limitations on the composition of the material. So it took the patent office 17 years to basically conclude that claim 1 would be allowable if amended to incorporate dependent claims 2 and 3? Seems to me the MPEP instructs examiners to indicate allowable subject matter as early in the process as they see it. Maybe they should try that once in a while and all of these evil applicants would accept and allow the applications to issue.

    If you bothered to review the file history you’d note that every petition that was filed was granted. But it took the Patent Office years to act on them.

    I would love to see the prosecution history of those 200 pre-GATT applications. Hal Wegner and Greg Aharonian’s e-mails include some descriptions of them that are similar, including petitions and appeals that sit around at the PTO for years on end with no action. But that’s all Mr. Hyatt’s fault for being “passive” right?

  13. I agree, Ned. That claim was a non-starter from the get-go. In this case, someone at the PTO allegedly said that the application would never see the light of day. If that person said (or meant) that the original claim 1 would never see the light of day, then I think he was probably on the right track.

  14. It strikes you as what then, a tactic designed to get the PTO to sit on his petitions for 2-3 years?

    Perhaps it wasn’t a tactic designed to do that, but, coupled with all of the other tactics on display here, it’s not a huge surprise that it got that result.

    Like I said, I’m not excusing the PTO’s performance. But you’re going to have poor individual performers and procedural breakdowns in any large organization. In this situation, zealous advocacy for your client doesn’t mean that you write and submit hyperbolic and insulting demands for justice every couple of years, when you get around to it. Instead, you calmly and rationally seek out someone in the organization who can be reasoned with. If you can’t find anybody that you can reason with, then perhaps the problem is you.

  15. Re the ‘562 prosecution history: I guess there’s a fine line between “passive” and “so clueless that you might as well not even bother responding.”

    I am truly shocked (SHOCKED!) that applicant behavior of that sort could be found in a pre-GATT application that just issued. I would be even more stunned (is that possible?!?!?) if any of the still-pending pre-GATT applications contain examples of applicant shenanigans that are remotely comparable to that. Because it’s sooooooo rare.

  16. It’s easy to see who doesn’t give a rat’s @ss about the rule of law.

    Agreed. See, e.g., the ‘562 prosecution history.

    It’s also not that shocking.

    Indeed. Predictable, even.

  17. Leo, ‘562 file history is simply amazing.

    “1. A non magnetic, bulk, magnetic field replicator.”

    In the end, the claim allowed, written by the examiner, detailed the composition of the “replicator.” Throughout the prosecution, the attorney never seemed to understand the nature of the 112 rejection. His claim was functional. That was explained to him, slowly at times. He never understood it.

    Rather, from the beginning, he chose a tactic of verbal abuse of the office personal, time and again calling for replacement of examiners and of their supervisors for not understanding what was described, of the principles of physics, of the law, etc. He simply never understood why his claims were rejected.

    As you noted, when he was replaced by the inventor, the examiner wrote a simple claim describing the novel composition and allowed the claims. All that time was wasted because the prosecuting attorney did not understand the law and was some sort of …. I do not fill in the word because a man such as he is not rational.

    I have had attorneys working for me who have had similar personality disorders. They never seem to grasp that the problem could reside in themselves. They continue to rant at the PTO and the examiners even after I tried to patiently explain the problem to them.

    But, that was a real educational read. I would recommend it to everyone here. Everyone.

  18. “if his actions, or inaction, are the reason for the long pendency of his applications, [why has] the PTO simply not relied on its ‘inherent authority’ to force dispositions of his applications.”

    Maybe the PTO is simply waiting for Congress to step in and do the right thing.

    [shrugs]

    Also: of course it’s a combination of applicant actions/inactions that has caused the observed delays in prosecution. Anybody can keep an application pending for 10+ years if they wish to. It’s easy and it doesn’t cost much money either.

    Some of the clowns who own these applications will try to keep them pending for another twenty five years if they can.

  19. The patent in question is not one of Hyatt’s. That’s irrefutable.

    What’s irrefutable is that you brought that patent up as an example of an unfortunate victim of government-mediated injustice and it’s quite plainly the exact opposite of that.

    What were you thinking? Is that the best example you could come up with?

    Maybe we should just randomly select one of those 200 applications and see what the prosecution history looks like.

  20. I think the quote “Quality does not equal Reject” has something to do with it.

    Especially as p1$$ poor rejects were simply fought and created the moving deck chairs of RCEs and Appeals.

    It all comes down to one thing: do the job right the first time. If you don’t have time to ddo it right the first time, when will you find time to do it right? Quality examination – allowance or rejection – are much more palatable and explainable to clients.

    The focus should have been all along on examination.

    Period.

  21. BTW, wrt to Hyatt’s pending pre-GATT applications, please feel free to answer the question I asked above: “if his actions, or inaction, are the reason for the long pendency of his applications, [why has] the PTO simply not relied on its ‘inherent authority’ to force dispositions of his applications.”

  22. The patent in question is not one of Hyatt’s. That’s irrefutable.

    BBBWWWWWWAAAAAAAAHHHHHHHHHHAAAAAAAAAHHHHHHHAAAAAA!!!!!!!!!!!!

  23. “And just how much are they statutorily entitled to?”

    20 years from filing or earliest claimed U.S. non-provisional priority, plus any PTO delays and minus any applicant delays.

    Aren’t you supposed to be a practitioner too?

  24. Applicants cannot use the court’s decision to extend patent term beyond what they are statutorily entitled to.

    And just how much are they statutorily entitled to?

    I seem to remember the statute saying a thing or two about patent term adjustment.

  25. November 8, 2012 (5:38 PM) in the Exelixis v. Kappos topic.

    Applicants cannot use the court’s decision to extend patent term beyond what they are statutorily entitled to.

    You’ve been refuted.

    Good day.

  26. “Further, devoting two pages to arguing that a line graph inserted in the detailed description is not a “figure” doesn’t strike me as a tactic calculated to advance prosecution.”

    It strikes you as what then, a tactic designed to get the PTO to sit on his petitions for 2-3 years?

  27. Did you review the prosecution history of U.S. 7,667,562, noted above?

    I did. While not excusing the PTO’s behavior, there was some bewildering conduct by the patent counsel as well, in my humble opinion. Let’s start with the response to the first office action: Just as a general matter, it’s not a great idea to mock the examiner’s grammatical errors at length in your very first reply to the office, nor is it good practice to accuse the examiner of lacking even a high school education. Further, devoting two pages to arguing that a line graph inserted in the detailed description is not a “figure” doesn’t strike me as a tactic calculated to advance prosecution.

    Given the prosecuting attorney’s repeated hyperbolic rants, numerous extensions of time, a general refusal to recite any physical structure at all in the main composition claim, an apparent indifference to very long delays, an inexplicable unwillingness to appeal, and a letter to the PTO from the client complaining that the prosecuting attorney was refusing to file a response (apparently on principle), I’m not convinced that the inventor was very well served by his counsel. It’s telling that once counsel was replaced, claim amendments were promptly agreed to and the case was allowed.

    If this is the best example of horrible miscarriages of justice going on at the PTO then I’m not terribly impressed.

  28. If it covers foundational technology, or permits evergreening on existing products, we are talking $billions.

    Evergreening existing products … with a patent?

    Something seems not quite right.

    In any case, it seems that nobody has a clue as to the actual value of these applications. Of the 200 applications, how many do you estimate are worth “billions”? And is it believed by anyone that the owners of these applications have thus far not made any money off of the “foundational technology” disclosed in the applications?

    Pull the plug. Good riddance. Someone should package the applicants’ crocodile tears in 100 microliter glass vials and sell them on eBay.

  29. Who would keep pending an application to 30 year old technology, through hundreds of thousands of dollars in fees, if they did not think it had a value?

    Hmm. Let’s see. Maybe somebody who was really experienced with gaming the patent system and for whom “hundreds of thousands of dollars in fees” is a drop in the bucket (I have no idea how the costs get so high, by the way, if for nearly all of the time period in question the USPTO is doing nothing, as has been alleged).

    The “value” of a patent application is, in most cases, directly proportional to the wealth of the patent owner. As any prosecutor will tell you, there is a great deal of money to be made filing applications that are objectively complete pieces of cr–. The reason for this is that there are a fair number of extremely privileged people in the world who view life as one big trip to the casino. The USPTO is just another blackjack dealer in that casino. Step up to the table! They aren’t paying attention to the details of the (trying not to laugh here) “technology” disclosed in the applications. They are just counting chips and drinking their wine. Good times. Until they are told they need to leave so the janitor can clean up. Then it’s another ugly scene.

  30. “…if Kappos moves heaven and earth to get these examined, without extra money from Congress…”

    It’s about 200 cases. How much heaven and earth they gotta move?

  31. From those that issued in 2012, I can tell you that some COULD be worth quite a lot. If it covers foundational technology, or permits evergreening on existing products, we are talking $billions.

  32. There may be a public benefit, but without hearings there is nothing on the record to show the public need required to justify even a regulatory taking. Here, there is arguably a facial taking, without any compensation. Applicant’s will fight, and may win.

    If they were not valuable, they would have been abandoned. Who would keep pending an application to 30 year old technology, through hundreds of thousands of dollars in fees, if they did not think it had a value?

  33. HR 6621’s nuking from orbit overides all those, but is constitutionally suspect.

    I think the public benefit of getting rid of these pre-GATT apps vastly outweighs any of these applicants’ precious “patent rights.”

    How much are the apps worth anyway? Throw the biggest whiners some chicken wings and toss the applications in the trash. Mr. Hyatt’s fee-fees are hurt and the US patent system grows six inches taller.

  34. The applicants are going to fight it.

    Every one of them? Or just a few of the more notorious/well-heeled applicants?

    For argument’s sake, let’s say that there is a “taking” here. How much money are these applications worth? That seems to be the first question that needs to be answered. Then we can just pay these poor, oppressed applicants the money they are due and move on.

  35. Where is the evidence that Kappos is behind this?

    Behind the record number of allowances? Who else would be behind that.

  36. Refusing to examine or nuking from orbit are both bad from the POV of applicants. Under current law, refusing to examine would be basis for action under the APA. Killing a patent by refusing to allow is appeallable. HR 6621’s nuking from orbit overides all those, but is constitutionally suspect.

  37. The problems are not limited to pre-GATT applications: arguably it is worse when they issue. It requires Congressional action to fix those problems.

    Also, if Kappos moves heaven and earth to get these examined, without extra money from Congress, there will be more pressure on the PTO to act faster in other cases without any $. This is Congress’s problem.

  38. As I argue on the PharmaPatents blog, it would be much easier to have (1) compulsory publication and (2) expedited examination: deal with these 200 cases in a year. That would not solve all the problems, but would mitigate them.

    The root cause of long pendency in many of these cases is PTO delay (multiple appeals, interferences, etc). Part of the delay is because the Congress has underfunded the PTO/routed fees to other projects. Congress is now trying hide their negligence by killing the pre-GATT applications. The applicants are going to fight it.

  39. Your labelling of your rantings as “irrefutable” on this site

    Please show me an example where I did that. Then please refute what I “ranted.”

    Go ahead. Make my day.

    I am questioning why, if his actions, or inaction, are the reason for the long pendency of his applications

    If?

  40. I am questioning why, if his actions, or inaction, are the reason for the long pendency of his applications, the PTO has simply not relied on its “inherent authority” to force dispositions of his applications.

    Because we all know how terrified the PTO is of getting a negative public image.

  41. We’re all aware that you’re not a practitioner

    Who’s “we” – you, anon and 101E? The Three Patenteers? The blog’s most paranoiac and consistently wrong commenters, who accuse anyone who questions the validity of a patent of being an Examiner? That “we”? I’m not terribly impressed.

  42. I’m not defending Mr. Hyatt. I am questioning why, if his actions, or inaction, are the reason for the long pendency of his applications, the PTO has simply not relied on its “inherent authority” to force dispositions of his applications.

    Your labelling of your rantings as “irrefutable” on this site is as convincing as it must be when done to opposing counsel and/or judges. That’ assuming of course that you’re actually a practitioner.

    Lulz

  43. I would hardly categorize Mr. Hyatt as a “passive” patent applicant.

    Ah yes, Mr. Hyatt. I would love to characterize the World’s Most Sensitive Genius in more detail except that he’s such a sensitive tool he’s liable hire a low-rent bulldog to threaten Dennis.

    I’m sure he appreciates you coming to his defense, though. Keep up the great work! People like Mr. Hyatt truly appreciate errand boys such as yourself.

    your mind “irrefutable” conclusions

    Odd. I don’t recall you ever refuting any fact that I might ever have characterized as “irrefutable”. I wonder why. LOL.

  44. Examiner Mooney

    LOL! Nice try, AAA BJ.

    If you work on your reading comprehension skills, you might be able to avoid making such mistakes in the future. Or maybe you were just trying to be an Xss?

  45. Did you review the prosecution history of U.S. 7,667,562, noted above? I have a sneaking suspicion you didn’t.

    How do you know the applicants are passive? I would hardly categorize Mr. Hyatt as a “passive” patent applicant.

    Your ability to make what are in your mind “irrefutable” conclusions with no evidence or facts never ceases to amuse.

  46. the PTO’s already sh!tty public image

    I’m sure the record number of allowances will quickly bring all the patent t–b-ggers to the USPTO’s side!

    Heckuva job, Kappos.

  47. Submarine patents …. are bad for the public.

    Fixed. The only people who stand to the benefit are the owners. I’m going to go waaaaaaaay out on a limb here and hazard a guess that everyone of the owners of those applications is in a position to absorb this terrible injustice without feeling the slightest bit of pain.

    The benefits that follow from the tanking of these cr-p applications far outweight any “costs” that will arise from lawsuits filed by the ethically pure and heroic owners of the applications.

    What’s “curious” to me is how it is possible that an applicant (or an applicants attorney) would let so much alleged USPTO “malfeasance” and “injustice” occur year after year after year. How/why would anyone behave so passively in the face of such alleged “malfeasance”? Gosh, it’s so hard to imagine the answer to that question. Possibly the most frustrating brainteaser ever.

    Right.

  48. I suspect the answer is: the PTO is guilty of some serious malfeasance in these cases and they think that it will all “go away” if they get this “technical correction” to the AIA passed.

    Or maybe some of those applications disclose what really happened in Roswell, and the applicants refuse to amend it out prior to allowance.

  49. Submarine patents that result from applications submerged by PTO incompetence and/or malfeasance are bad for the public. And the PTO’s already sh!tty public image. That’s my guess.

  50. “I am.”

    Examiner Mooney and Professor IANAE are not.

    “What’s the answer?”

    IDK. What I do know is that if the applicants of these cases were responsible for their rather long pendency, the PTO could issue OA’s in every one of them and, theoretically in reliance on the precedent of In re Bogese (lulz), set a one month non-extendable period for reply. That would speed up the disposition of the cases.

    I suspect the answer is: the PTO is guilty of some serious malfeasance in these cases and they think that it will all “go away” if they get this “technical correction” to the AIA passed. PTO management really is that st#pid and incompetent. Why Mr. Kappos didn’t put disposition of these cases high on his agenda is unknown. Somebody will have to ask him that question.

    If you get Aharonian’s e-mails, he’s discussed this issue quite a bit in the past week or so. Hal Wegner has also. They’re also curious as to the answer.

  51. Are you not the least bit curious as to why the PTO thinks that an act of Congress signed into law by the President with the potential legal challenges to follow is preferable to simply examining such a relatively small number of cases?

    My guess is a combination of (1) an act of Congress costs the PTO nothing at all, just like granting more PTA costs the PTO nothing at all, (2) the potential legal challenges aren’t the PTO’s problem, (3) submarine patents are bad for the public, and don’t get any better the longer they stay pending, and (4) the PTO gets to blame Congress if anybody complains.

  52. Are you not the least bit curious as to why the PTO thinks that an act of Congress signed into law by the President with the potential legal challenges to follow is preferable to simply examining such a relatively small number of cases?

    I am. What’s the answer?

  53. “More like the patient’s abusing his right to free health care by vacationing in a hospital bed, taking up resources that actual sick people could be using.”

    Not sure how many resources these applicants are taking up when the PTO is sitting on their applications and petitions for years on end with no action or decision, or issuing six month suspension after six month suspension. The PTO could get rid of every one of these 200 some odd cases by simply examining them. Are you not the least bit curious as to why the PTO thinks that an act of Congress signed into law by the President with the potential legal challenges to follow is preferable to simply examining such a relatively small number of cases?

  54. Nurse: the patient’s sick.

    More like the patient’s abusing his right to free health care by vacationing in a hospital bed, taking up resources that actual sick people could be using.

    Convene the Death Panel.

  55. But that’s not the kind of benefit we think they should have, so…

    Nurse: the patient’s sick.

    Doctor IANAE: Here, this cyanide should do the trick.

    Nurse: But doctor, this will kill the patient, not cure him.

    Doctor IANAE: Well, at least he won’t be sick anymore.

  56. denying you the right to develop it.

    If that’s the analogy we’re going for, is it really that much worse (or more actionable) to have your application nuked from orbit than to have it sitting at the PTO for as long as its term would have been, with no end in sight?

    I suppose that’s most easily answered by noting that most applicants consider it a benefit to have their older applications sit around for as long as possible. But that’s not the kind of benefit we think they should have, so…

  57. If you accept that a patent application is a property right, taking away a property right without compensation, hearing, or demonstration of a public need violates takings and due process.

    For example you can sue not only for the government taking your land, but denying you the right to develop it.

    THe only difficult question is whether there is a property right in a patent application. I believe that there is enough law to support that there is.

  58. Isn’t there something in the Constitution about how Congress shall make no law that inconveniences anybody in any way?

  59. Pre-GATT applicants will fight this law and have a have a good case that HR6621 is unconstitutional

    What’s the “good case”?

  60. Pre-GATT patents are a problem. The root cause in many cases is delay at the PTO, not the applicants. HR6621 avoids the real causes and rubs salt into the wounds of those applicants who have already suffered at the incompetence of the PTO. Pre-GATT applicants will fight this law and have a have a good case that HR6621 is unconstitutional. If (when) it is overturned, HR6621 will just make the current problem worse.

    link to pharmapatentsblog.com

  61. his superiors instructed him that the application shall “never see the light of day”

    Supervisors aren’t allowed to instruct their employees anymore?

    That’s a new one.

  62. anon, while politically this might be palatable, I think it is heavy-handed in the extreme. This is like Congress imposing a final rejection by law, with no appeal. This smells of lack of due process in the extreme.

    Bill of Attainder also comes to mind.

  63. Great example. I’m sure Examiner Mooney will find some reason why it’s not damning evidence of PTO incompetence and/or malfeasance. But that won’t stop him from demanding serial/patent numbers whenever somebody alleges that the PTO is unlawfully denying an applicant a patent. Or he’ll give the standard answer that examiners like him, and their sh!tty management, always spew forth when cases like this come to light, “So? He got his patent didn’t he? What’s the big deal?”

  64. The PTO could bury those cases until the deadline passes. You would expect this in a third world country. Read the June 2006 petition in 7,667,562. Pre-GATT, 20 year prosecution with an Examiner stating that his superiors instructed him that the application shall “never see the light of day”

  65. This legislation should instead require the USPTO to finish examination of all 200 of those cases within one year.

    And if the PTO doesn’t, what then? Patent term adjustment?

  66. Seems like chucking those pre-GATT applications in the trash would be a suitable exchange for Congress reviving an application that should have remained abandoned, just because some Congressman wanted to give his buddy a li’l gift.

  67. The only inventors who could possibly be incentivized by granting these applications are those capable of going back in time

    You need to try harder to understand the lizard-like brain functions of the “Patents Forevah!” crowd. Merely suggesting that the life of a 30 year old patent application be terminated is worse than Bob Costas coming to your house and confisacting your machine guns. Seriously. It’s the Worst Thing Ever. People will simply lose their desire to invent stuff and the very foundation of the Greatest Country in the History of the Universe will crumble like a lonely Cheetoh in the howling rain.

  68. This legislation should instead require the USPTO to finish examination of all 200 of those cases within one year. Congress has really missed the mark on this one.

  69. Why not just pull the plug on 17+ year old applications? If anybody truly cared about most of these, there has been ample opportunity to make their case through the PTO, legislation, and/or in court. Go through the dusty old files and throw out everything where the applicant has not made a reasonable effort to prod the PTO into action. If you can’t be bothered to complain every, say, four years, you’ve clearly abandoned your application, the PTO’s screwups notwithstanding.

    As far as I’m concerned, they can have their filing fees back if it’s really such an impediment to getting it done and you can actually find the right people to refund them to.

    How is the progress of science and useful arts served by having patents issued with terms that start after they should have naturally expired? The only inventors who could possibly be incentivized by granting these applications are those capable of going back in time, and anyone who can do that is too busy making big bucks in the stock market to care about a silly thing like patents.

  70. taking applicants’ money

    By force! Because nobody could have predicted that eventually someone would just pull the plug on pre-GATT applications pending for more than a quarter-century.

  71. You should too if you had integrity.

    This is basically fraud, taking applicants’ money and simply not doing anything with their applications, including just rejecting them.

  72. This is a scandal that should end careers.

    Run with that! Maybe you should start a big campaign and ask for donations to save the victims of this incredible injustice.

  73. A number of these are due to PTO malfeasance — the PTO sat on applications for six, eight, ten years with no action (except to send a notice that prosecution is suspended for six more months, and six more, and six more, and six more…)

    The Board has been just as bad as the examining corps — some appeals have been sitting for over a decade.

    This is a cover-up, pure and simple. Several PTO employees made some bad choices years ago. Now the PTO is in a bad spot of having to allow applications decades late — instead of simply following the law and taking the hit, it’s now asking Congress to cover up their own sins.

    This is a scandal that should end careers.

  74. 256 actions for the correction of inventorship are, in essence, derivation actions. They are not and never have been subject to statute of limitations. So why is there a statute of limitations to invoke a derivation proceeding?

    Assume an application is rejected over an earlier application outside the one year period. A derivation proceeding is no longer possible. Yet, when the earlier-filed patent issues, the inventor can still sue under 256 to be named on the patent. What have we achieved by not allowing a derivation proceeding in the PTO?

  75. Thanks for the information that there are STILL 200 “submarine” patent applications that have been pending in the USPTO for AT LEAST 17 years that will run for 17 more years after they issue. That will be 34 or more years [more than a third of a century!]from their original filing date before they expire.
    A disgrace. How many of these should have been taken away from non-responsive examiners, priority prosecuted, and/or rejected for “prosecution laches” years ago?

  76. The rule against ex post facto laws is extremely narrow and basically just applies to making something a felony after the fact. It does not apply to civil cases involving changes in patent rights.  The only real question then is whether the reduction in rights or value resulting from the regulation would qualify as a takings and thus demand just compensation under the 5th Amendment. The new IPR provision will certainly not qualify.  The cancellation of patent term is much more likely to qualify, but there would still be some hurdles to overcome.  

  77. Anyone know whether or not — assuming this passes — the 1,000’s of patents issued between 9/16/12 and the (effective) date of 6621′s implementation / the president’s signature would be subject to IPR during the first 9 months post-issuance?

    Wouldn’t any such retroactivity be illegal under the constitution?

  78. Dennis, I’m not clear about what the removal of 373 will achieve. The question of who can use the USPTO as a PCT receiving office is governed by 35 USC 361, not 373.

    Moreover, currently, even you’re not entitled to file your PCT app at the USRO, if you do so the USPTO will transfer your application to the IB – that’s part of the treaty itself itself, which includes safeguards for filings by “non-competent” applicants. See, e.g. 6.035 of the PCT Applicant’s Guide (link to wipo.int), as well as page 5 of this petition decision from the USPTO link to djf.typepad.com. So even if you’re not a US citizen, you’ll still get your PCT filing date. The only difference is that if your home country only allows PCT searches at, say, the EPO, you won’t be able to get a search at KIPO or ROSPAT like you would if you were entitled to file at the USRO.

    Seems to me that the removal of 373 may be meant to make it easier for corporate applicants to file PCT applications at the USRO.

Comments are closed.