Industry Responds to White House Calls for Prior Art, Examiner Training

Guest Post by Professor Jorge L. Contreras

As previously reported, on February 20 the White House highlighted its progress on five patent-related policy initiatives introduced in June 2013, announced three new patent-related initiatives, and renewed its call for legislation to combat “patent trolling”. In all, ten different initiatives were discussed. Below is a quick guide to making sense of the most significant ones, as well as a summary of private sector responses to date.

Patent Assertion Entities (PAEs) – In this year’s State of the Union address, President Obama came out publicly against unfair litigation tactics deployed by “patent trolls” and has called on Congress to enact legislation to “curtail abusive patent litigation.” Two of the Administration’s June 2013 initiatives relate to PAE litigation: a proposed PTO rule that would require reporting of real party in interest (re-branded as “attributable ownership”) information in patents and patent applications, and an online toolkit providing links and other information for the recipients of patent demand letters. Among the most useful features of the toolkit are links to advanced demand letter and patent litigation analytics provided by Lex Machina and Docket Navigator. Although the toolkit is available to anyone, its intended beneficiaries are small businesses that have been targeted by some of the more notorious PAEs for using off-the-shelf office equipment like scanners and wireless routers. The Administration seems to realize that both of these initiatives are relatively modest, and it has again urged Congress to enact measures that will have a meaningful impact on reducing abusive patent litigation.

PTO Fixes – The Patent and Trademark Office (PTO) has, fairly or unfairly, come under increasing fire for procedural lapses and staffing inadequacies that allow the issuance of too many “bad” patents. Last week’s announcements contain some meaningful proposals that could help to address this situation.

  • Claim Clarity – the PTO has implemented new training programs for examiners and judges relating to “functional claims“, which have been widely criticized as overly broad and unclear. The PTO also highlighted an upcoming pilot program involving the use of glossaries in patent specifications to clarify claim language. The details of this program remain to be seen, but anything that will bring greater consistency and rationality to claim interpretation can only help.
  • Examiner Technology Training – One perceived problem with the patent examination system is the inability of examiners to keep up with rapidly changing technologies. Gaps in technical knowledge can result in examiners’ failure to identify relevant prior art, to appreciate the interaction of different system elements, and to make cogent assumptions and conclusions about inventiveness, anticipation and nonobviousness. To address this issue, the Administration has called for private sector volunteers to provide state-of-the-art technical training to patent examiners through a program coordinated by the PTO. This is clearly an area in which the private sector can help to solve a known weakness in the patent system. Several private sector entities have already committed to participate in this project. For example, The Clearing House, a financial services industry association, has pledged to develop educational materials and offer seminars to examiners in the area of financial infrastructure technology, and Verizon, which has already begun to train PTO examiners in the areas of network architecture and communications, will continue these efforts.

    While commitments such as this are a welcome start, important details will likely need to be worked out as this program grows. Though examiners work in specific art units, they must still cover a wide range of products and technologies. In complex and fast-moving fields, one could easily see some examiners spending virtually all of their working hours being trained. Moreover, one can envision competition among businesses to “educate” examiners regarding their competitors’ product lines without providing a balanced or realistic survey of the field. Accordingly, the PTO will need to exercise some oversight regarding both the scope and content of this program, and to ensure that whatever training is provided is likely to enhance the patent examination system, rather than burden or bias it.

  • Crowdsourcing Non-Patent Prior Art – Perhaps the most interesting and ambitious announcement made last week was the Administration’s call for the private sector to disclose and share prior art. The problem of non-patent prior art is a real but difficult one. It goes without saying that patent examiners examining an application should seek prior art relevant to the claimed invention from whatever sources are available. Traditionally, examiners have focused primarily on prior art contained in other patents and patent applications. While patents and patent applications are admittedly easy to search, this technique is sure to miss relevant art that has not been included in patent applications. In fast-moving industries such as software, it is likely that most of the relevant art is contained in “non-patent literature” (NPL). Yet NPL is notoriously difficult to search, particularly outside of the biosciences in which scientific publications are regularly reviewed and cited by examiners. In the software arts, NPL could include old product brochures, documentation manuals, technical drawings, and obsolete code. Even finding, let alone analyzing, prior art from this diffuse and heterogeneous mass of information presents a daunting challenge.

    The problem of NPL has been understood for some time, and “crowdsourcing” of prior art searching has long been viewed as a potential solution. In 2007, the PTO announced its pilot “Peer to Patent” program, which was intended to recruit members of the public to submit prior art relevant to applications under review, initially in the areas of software and business methods. The program was funded by a number of large companies and received a reasonable amount of press coverage, both favorable and unfavorable. The initial pilot program ran from 2007-09, with a second pilot from 2010-11. Perhaps it was the enactment of the America Invents Act in 2011, with its battery of new pre-grant challenge mechanisms, or the difficulty in finding qualified volunteer peer reviewers in highly specific technology categories, but the Peer-to-Patent project has quietly faded into oblivion.

    The Administration’s current “crowdsourcing” approach is different, in that it calls directly on companies, the repositories of most NPL, to help. It is encouraging that a number of private firms have already answered the Administration’s call and pledged to make large quantities of previously non-public technical material available to the PTO. To date, pledges to this effect have been made by:

    • The Clearing House (to provide the PTO with access to documents describing the national financial infrastructure),
    • Microsoft (to provide PTO with access to more than 10 million archived Microsoft technical documents),
    • SAS (to provide 38 years of user documentation and technical papers to IP.com, working in conjunction with the PTO), and
    • Yahoo (to continue to share prior art relevant to its business).

    The amount of data contained within the private coffers of the world’s technology companies is mind-boggling; and collecting, formatting and presenting this data in a cost-effective manner that is useful to patent examiners could prove to be a monumental task. Nevertheless, the effort must be undertaken if patents will continue to be issued in fast-moving technology fields. Google, the world’s largest search engine, has started down this path with its Prior Art Finder, an outgrowth of the popular Google Patent Search launched in 2006. The Administration’s leadership in this area is to be commended, and one can only hope that many more companies will follow those who have already pledged to assist with this vital project.

  • Patent Pledges? – It is notable that both the Examiner Technology Training and the Crowdsourcing Prior Art programs announced last week rely heavily on voluntary engagement by the private sector. The Administration has called upon industry to take a leading role in addressing some of the problems that have emerged in the patent system. This approach is sensible, as the technological expertise necessary to evaluate patents in complex and rapidly evolving technical areas resides within the companies that create those technologies, not in the PTO. However, such calls to action are also risky. What if they are ignored, or too few companies heed the call? Governmental calls to action have been around since the Crusades and have recently sought to address social issues from healthy eating and blood diamonds to financial reform and climate change. Over the past few years, spurred by the increase in PAE litigation, among other things, companies have begun to make voluntary pledges relating to patents. These have included pledges not to assert patents, or not to seek injunctions, against standardized technologies and common technology platforms, to charge royalties that are fair, reasonable and non-discriminatory (FRAND), to refrain from transferring patents to PAEs, and a variety of other activities. As I have written elsewhere, these pledges are intended to assure the market that the pledgor’s patents will not be used to disrupt valuable social activity. The recent pledges made in response to the Administration’s call are of a slightly different variety. Rather than impose “negative” encumbrances on the pledgor’s patents or its ability to enforce them, they create “positive” obligations on the pledgors to contribute knowledge, technology and (presumably) trade secrets to the PTO and/or the public. These new positive patent pledges are an intriguing and potentially game-changing development, and it will be interesting to see how many additional companies elect to commit themselves in this manner. I oversee a project at American University that catalogs patent-related pledges made outside formal standards-setting organizations, and look forward to adding many new commitments from the private sector in response to the Administration’s latest call.

Patent Pro Bono/Pro Se Assistance – Another of the new initiatives announced last week relates to the allocation of “dedicated educational and practical” PTO resources to help pro se (unrepresented by counsel) patent applicants navigate their way through the patent application process. Presumably this means that better documentation, explanatory screens and improved help resources will be made available on the PTO web site, all of which would be useful additions. The Administration also called for private sector volunteers to offer increased pro bono (free) legal assistance to small inventors. While these initiatives are welcome, the vast majority of U.S. patents are filed by businesses that can comfortably afford patent counsel, and the Edisonian conception of the sole inventor has been show largely to be a myth. Thus, while politically appealing, it is not clear that these initiatives will have a meaningful impact on the market or the patent system overall.

One wonders, in fact, why the PTO’s pro bono program is limited to patent prosecution, a relatively inexpensive legal task in the grand scheme of things. Perhaps this program would be more useful, and more aligned with the Administration’s other initiatives, if the pro bono program made lawyers available to advise retailers, small businesses and non-profit organizations about how to respond to PAE patent demand letters. While the analytics and information provided through the new PTO patent litigation toolkit are a gold mine for academics and patent litigators, it is not clear that members of the lay public will be able to make effective use of them without professional legal assistance. The PTO’s pro bono program could nicely fill this gap and make the most of the electronic tools that have already been developed and deployed by the Administration.

Conclusion – There are problems with the U.S. patent system. Rather than avoiding them, the Administration has taken positive and productive steps toward addressing them. While the long-term benefits of some of these initiatives are uncertain, programs such as the PTO’s solicitation of non-patent prior art and enhanced technical training for patent examiners could yield meaningful benefits for the system. The companies that have already pledged their support of these initiatives deserve to be commended. Let’s hope that both the Administration and the private sector follow-through on these promising first steps.

137 thoughts on “Industry Responds to White House Calls for Prior Art, Examiner Training

  1. Dennis, great blog.

    One idea for your comments, though. Perhaps you could limit comments to one (or some other small number) per post? They tend to get hijacked by a few who quickly take it off topic and start attacking each other’s character. It then takes more effort to sift through then for good comments than it is worth. Just a thought.

    Keep up the good work.

    1. I must condemn Ned for once again engaging in his “the thought expressed agrees with my Crusade and thus it must be genius” mantra.

      Congrats Random, you now share that award with 6 and Malcolm.

      Illustrious company you are in.

      /off sarcasm.

  2. Les: Morse got screwed

    LOLOLOLOLOLOLOL!!!!!!

    St. Morse and St. Tommy Edison: beloved by patent fanboys everywhere.

    In fact, Morse was a dishonest whiner who just happened to be in the right place at the right time and who desperately needed the help of others to achieve anything. He didn’t invent the concept of electrical information transmission. Not even close.

    link to en.wikipedia.org

    One thing we know for sure: Morse’s moral compass was about as broken as it could be so it should come as no surprise to anyone that he was a thief and a liar. Consider this insanity:

    My creed on the subject of slavery is short. Slavery per se is not sin. It is a social condition ordained from the beginning of the world for the wisest purposes, benevolent and disciplinary, by Divine Wisdom. The mere holding of slaves, therefore, is a condition having per se nothing of moral character in it, any more than the being a parent, or employer, or ruler

    There’s a word for people who say stuff like that when they should know better. It begins with an “a” and ends with “hole.” Morse was surely one of those.

  3. A discussion on 101 may have struck too close to the truth as it appears that the Ethics side of the blog has been hacked.

      1. Q: What is funnier than Malcolm’s attempts at levity?

        A: his so-called attempts at substance.

        .
        Malcolm…

        .
        Malcolm…

        .
        Malcolm…

        .
        LOL

  4. The solution to “bad” patents is providing the examiners with better training, better prior art data bases and better classification systems so that they can issue better patents.

    1. Way too, um, obvious Fish sticks.

      If we do that, that how can people try to ploy their philosophic agendas?

  5. “the PTO has implemented new training programs for examiners and judges ” Are the training materials available to the public? If not, why not?

  6. “Moreover, one can envision competition among businesses to “educate” examiners regarding their competitors’ product lines without providing a balanced or realistic survey of the field.”

    Just so you know D, virtually all of the training we receive focuses on the presenter’s own business. Sure they cite to others occasionally in the presentation but generally most of what they talk about is their own stuff.

    1. Yes, I know that. Although I have sometimes seen folks try to subtly slip-in statements about how some competitor approaches are “well known” but without actually referring to the competitor.

      1. ” Although I have sometimes seen folks try to subtly slip-in statements about how some competitor approaches are “well known” but without actually referring to the competitor.”

        You’ve sat in on the PTO technical training sessions?

  7. If companies like Microsoft are going to provide access to their NPL to the Patent Office (for free) then they have to also provide it to the public (for free).

    And they have to prove that it was publicly available at the time the application was filed.

    Otherwise, they will use it to torpedo their competitors.

    Naturally, the torpedos will be fired from a submarine.

  8. In the software arts, NPL could include old product brochures, documentation manuals, technical drawings, and obsolete code.

    Given the level of generality in the typical softie woftie claim, the NPL can and should descriptions of information processing carried out by anyone, regardless of whether a computer was involved. Marketing and business periodicals in any sub-field would be relevant.

  9. “Rather than impose “negative” encumbrances on the pledgor’s patents or its ability to enforce them, they create “positive” obligations on the pledgors to contribute knowledge, technology and (presumably) trade secrets to the PTO and/or the public.”

    Agreed. Great idea. Pledge to disclose trade secrets. You first Professor. Are you a Democrat? Did you vote for Obama? Are you being paid to write articles like this? How much money do you have in your bank account? And remember, this is all “positive” stuff you should be proud to contribute to society.

      1. Confession: although I am somewhat bewildered at the meaning of the news that “Jane wants me to join her on her knees” and the identity of the doubtlessly lovely and demure feminine subject thereof, it has nonetheless inexplicably been accompanied by a few random palpitations and minor perspiration on my brow. Must assume these to be artifacts of the morning’s caffeine.

        1. Really sir, while I share your interest in the identity of the lady in question, I must insist that you yield the field to me, the reported object of her interest.

        2. The reference is in regards to an overly idealistic view that communism is really swell.

          Except for the fact of human nature and that communism has been shown to be an utter failure in the real world, Jane was indeed correct. Communism would be really swell. Malcolm’s rampant anti-capitalism posts mark his alignment with a (much) more socialistic view on how government should be run.

          Those who show an unrealistic tendency of anti-personal property (either having it or enforcing it) draw a natural (albeit mocking) comparison to the over idealistic view.

          In contrast to the maximum privacy that Malcolm sought under Disqus, his calls for maximum sharing of information sound in the over idealism. His rampant appeals “to the people” without regard to a basic understanding of third grade civics and that a specific branch of the government is empowered to write law (in general, and patent law with particularity) also plays to the use of the rhetorical device as critical of Malcolm’s apparent hypocrisy.

          There is also a subtle play on the religious affront that Malcolm uses (which I will not repeat), but aligns with “WWJD,” a well known acronym that has serious theologic tones. “What Would Jane Do” is a satiric take on this and is especially appropriate given Malcolm’s tendencies of AOOTWMD.

          All in all, the Jane reference powerfully aligns with Malcolm, his views and his failure to appreciate currently controlling law and our democratic government system.

          1. the Jane reference powerfully aligns with Malcolm, his views and his failure to appreciate currently controlling law and our democratic government system.

            Right. And last month it was Goebbels.

            And earlier in the week Lemley was the “devil incarnate.”

            The stink of desperation is getting quite strong. As I’ve said before, it’s going to be a rough year for you. Maybe you should consider a long vacation.

            1. The reference to the master of propaganda during WWII was directly on point Malcolm.

              Hey, it’s not my fault your tactics so closely align with these people.

              That’s a “You” problem.

      2. OK, so this is a reference to Jane Fonda who said in the 1970s: “If you understood what communism was, you would hope, you would pray on your knees that we would some day become communist.”

        And so who is promoting communism here?

        1. Dennis –

          I think that was a reference to the zeal with which you embrace the idea of pro bono services, as it has a “from each according to his abilities, to each according to his needs” feel to it.

            1. Apparently, according to Malcolm, anyone with some respect for religion is “dumb.”

              Here’s a news flash: people with “respect for religion” generally don’t go around suggesting that patent law professors are “the devil incarnate.” But go ahead and pretend otherwise, you pathetic, ignorant hypocrite.

              In any event, it’s you who are the True Blasphemator! The ancient scrolls predicted all this.

              Fun game. Will you start the next round, as usual, or shall we wait for the thunderbolts to subside?

  10. Since we now already have a new and much broader system for third party citations of prior art in pending patent applications of others* how much actual usage has it had so far? What % of total applications? [Insignificant?]

    *37 CFR §1.290 implementing AIA 35 U.S.C. §122(e) effective as of September 16, 2012.

    1. The Office has received a total of 1,414 preissuance submissions.
      Of those, 73.8% (~1043) were found to be proper.
      Of those, 12.5% (~130) were actually relied upon by an Examiner to make a rejection.

      link to uspto.gov

  11. The functional claiming problem cannot be solved by the patent office alone. The problem of functional claiming must directly be laid at the hands of the Federal Circuit particularly in cases like In re Donaldson that overruled cases like In re Arbeit.

    The patent office must take a stand on In re Arbeit and functional claiming and ask the Federal Circuit to overrule In re Donaldson, and if they refuse to do so, take it to the Supreme Court.

    1. at the hand of the Federal Circuit

      Wrong again Ned – when all else fails look to the actual words of the law.

      And in this case, use the case that you yourself provided (but clearly so not appreciate) and look to the congressional record, and to those rightful judges most intimately aware of what the law as written means.

      Your crusade is misplaced. You have identified the revolters (Office and the Executive branch, academics, and certain judiciary intent on re writing what Congress has written) and you refuse to acknowledge the full impact of the 1952 Act.

      1. anon, functionality was not a problem in the PTO until it became a problem in the Federal Circuit.

        Because functional patents are issued, we have the problem of the Selden patent multiplied by the hundreds of thousands.

        And yet, it was so predictable. Just read Halliburton. Just read it. They said the problem of functional claims COULD NOT BE CURED by the rule of construction. The breath, the indefinites, the overhanging threat were the real problem.

        But Rich gave us 112(f), a mistake.

        Rich gave us Donaldson.

        Rich was the problem. He LOVED functional claiming. Loved it. Wallowed in it, he did.

        And because of that man, the patent system is on the brink.

        1. Just read Halliburton.

          Just read my question to you: Is peddling abrogated case law as good law an ethical thing to do?

          Clearly, you have not followed my direction s to you to understand the 1952 Act yet.

        2. “the patent system is on the brink”
          On the brink? On the brink? Oh please. How melodramatic can you get?

          What is happening is that big companies with big PR/lobbying budgets are getting sued on patents, and weakening the patent system is just one of their strategies to combat this “problem.” This is a simple case of that have-nots wanting what the haves have and the haves wanting to keep what they already have. This is the way the patent system will always be … late entrants (without IP) are going to want to be able to use the early technology without paying for it. That will NEVER change.

          Your crusade against “functional claiming” is tiresome and fails to appreciate the intertanglement between “structural” terms and “functional” terms. By way of example, give me a definition for the term “light” that (i) encompasses all lights and (ii) does not use functional language.

          Functional language is simply a way (oftentimes a much better way) of more clearly defining the invention. In many instances, function matters more than structure. As such, it is better to use functional language than structural language. Also, in instances in which a corresponding method claim can be drafted, what is banning “functional claiming” going to achieve when nearly identical claim coverage can be obtained with a method claim?

          1. The Critic,

            You just threw a screwdriver into Ned’s machinations.

            For that matter, “screwdriver” is clearly a functional term, n’cest pas?

          2. Your crusade against “functional claiming” is tiresome and fails to appreciate the intertanglement between “structural” terms and “functional” terms. By way of example, give me a definition for the term “light” that (i) encompasses all lights and (ii) does not use functional language.

            Nobody is suggesting that you can’t use the word “light” in your patent claims.

            Try to a bit harder to keep up.

            This is a simple case of that have-nots wanting what the haves have

            What’s the average net worth of these “have nots” you refer to?

          3. Critic, I say, “Bull.” In retrospect, Halliburton was entirely correct.

            You disclose a nail and claim “apparatus configured to fasten” or better simply “fastener.” Nail is the novel structure.

            Now if you get that claim, have you described every fastener? No you have not. Have you enabled every alternative to a nail. No.

            Yet there is hardly a patent attorney here that sees any problem with claims of this scope.

            I see claims the time that simply say do X to achieve result Y, where the attorney is distinguishing the prior art because it doesn’t show Y.

            That should not, repeat, not be possible. It was forbidden in the overruled Arbeit case. Overruled by Donaldson.

            Yeah. We need to repeal 112(f) and overrule Donaldson.

            1. Again Ned,

              The question is: Is it ethical to pretend that abrogated law is controlling law?

              Obviously you have not checked into the actual law of 1952 that I suggested (with breadcrumbs to the congressional record from the very case you supplied).

            2. anon, either 112(f) is construed to be consistent with Halliburton or it must be repealed.

              Period.

              Consistent: 112(f) does NOT override 112(b).

              That was the en banc case law that Donaldson overruled for Chr*st’s sake.

              Donaldson needs to be overruled. Novelty cannot and should not lie in the functional statement. This means that 112(f) can be used only for old elements. It also means that novelty cannot lie in functional statements in apparatus or composition or the like.

              Even methods must cannot be defined in terms of properties or results.

              The people in the PTO need to take on the Federal Circuit and take it to the woodshed one more time.

            3. I see claims the time that simply say do X to achieve result Y, where the attorney is distinguishing the prior art because it doesn’t show Y.
              Obviously, these aren’t your own claims since you wouldn’t stoop so low to use functional language in your claims. As such, no harm in giving us some application numbers so we can see what you are talking about. [I believe this is covered on the 2nd page of MM’s trolling playbook].

              Now if you get that claim, have you described every fastener? No you have not. Have you enabled every alternative to a nail. No.
              You have, however, enabled a fastener. Moreover, you haven’t even enabled every type of nail. Claims are almost always going to cover something broader than that was disclosed. You rarely recite a picture claim. Thus, the claim is going to be broader than what is disclosed. So what is the problem?

              That should not, repeat, not be possible.
              So says you and how many others? Not many.

              We need to repeal 112(f) and overrule Donaldson.
              Keep tilting at those windmills … you’ve seemingly have a wide selection to choose from

          4. Critic, regarding apparatus/method, consider:

            1. Apparatus, comprising:

            old structure; and

            any new structure that effects function X or result Y or has property Z.

            I would hope you see the problem of Morse here.

            But let us assume the novelty is the functional relationship of two apparatus. You could claim this as a method or as a system. I will, for the sake of this argument, agree in principle. But you in turn must agree as well that a method comprises acts that are physical (just as the government contended in Prometheus). As well, method cannot simply claim any act that achieves a result or produces a property.

            Thus,

            2. A method for “old structure,” comprising:

            doing anything to effect result X.

            This effectively would be the same thing as claim 1. It would be indistinguishable from the claim in Morse that was condemned.

            Now, if you do state two or more physical acts, you have a method. If there is a machine that can be described in terms of cooperating structures, then this is recognized as a system claim. I have no problem here, provided again, the physical cooperation is described.

            And, of course, I have no problem describing old elements functionally.

            1. I would hope you see the problem of Morse here.
              Yawn. Morse has a claim, that in retrospect, covers multiple ENTIRE industries and you want me to get worked up over a “computer configured to perform X” claim? Where is that sleeping pill I was looking for?

              By the way, the windmill is still standing. You should go for another tilt.

            2. “Morse has a claim, that in retrospect, covers multiple ENTIRE industries and you want me to get worked up over a “computer configured to perform X” claim? Where is that sleeping pill I was looking for?”

              Maybe you left it in that time machine you use to have the foresight that any given function claimed now won’t, in retrospect, be covering…how about a single entire industry? Some people on this board will talk your ear off about how computers must be patentable because they keep doing that.

              By the way, I’m told the thing to do is buy a Grays Sports Almanac.

            3. “Covering an industry” – single or multiple is a red herring.

              “Covering” is what a patent does. It is what a patent is.

              The fallacy in the argument is that you – of necessity – must take a future hindsight view of what might happen. In other words, this is called ‘conjecture.’ It is one of the weakest links in the chain of the “Cannot allow abstraction because of preemption” argument.

              All claims** have some degree of abstraction.
              All claims have some preemption – that is what a claim is supposed to do.

              **except for the simplest and most base picture claim which is next to worthless as it is absurdly easy to design around.

              Once again, this topic swirls around the concept of the ladders of abstraction.

              As a judicial exception to the explicit words of Congress (how about that word “any?”), the exception should not – cannot – swallow the rule. Inventors must be allowed to use the ladder of abstraction in their claims. Otherwise, the cost/benefit analysis easily dictates that the Billion dollar (yes, billion with a B) patent system should be abandoned and the doors closed. Of course, the fact that NO modern advanced society has successfully taken this path should point out the common sense understanding that THAT path is the path to absurdity.

            4. Some people on this board will talk your ear off about how computers must be patentable because they keep doing that.

              Patentable?

              Random you miss and miss badly.

              Try to pay attention to the difference between patent eligible and patentable.

              It is a critical difference. It is the difference that I emphasized (and seemingly must continue to emphasize) in order to bring clarity when others do not WANT clarity. Obfuscation and dust-kicking are the tools of those that want to spin the law into something that it is not. Obfuscating the difference between patent eligibility and patentability is at the core of the 50-year old battle to try to eliminate software as a patent eligible category (and once you eliminate software, you basically eliminate computers). I have clearly delineated this difference for ages now – including pointing out that even Prof Crouch conflated the question he asked on the thread “Fifty Year Battle.”

              .

              With that difference firmly focused upon, you rather miss the obvious point that computers are machines, that software is a manufacture, a machine component, and that the law explicitly calls out as patent eligible the categories of machines and manufactures (and further calls out any improvement thereof).

              Next focus on NOT conflating the utility aspect of 101 and the patent eligible categories of 101.

              It really is that simple.

            5. “The fallacy in the argument is that you – of necessity – must take a future hindsight view of what might happen. In other words, this is called ‘conjecture.’ It is one of the weakest links in the chain of the “Cannot allow abstraction because of preemption” argument.”

              It’s not my argument, it’s Critic’s. Ned suggested that Morse made a point, Critic’s response was that one need not worry as Morse is an exceptionally far-reaching case, unlike current functional claiming. I suggested that since Critic is capable of divining pre-grant which which functional claims will cover only small areas and which will grow into entire industries (thus requiring him to actually respond to Ned’s point) he should use his foresight to bet on sporting events. Your 101 diatribe is misplaced, as all I was doing was making a joke about how some people want to ignore a 101 analysis because computers have far reaching effects, and here’s someone arguing against a 101 analysis because, wait for it…most computers don’t have far reaching effects.

              “Inventors must be allowed to use the ladder of abstraction in their claims.”

              I have never said they couldn’t.

              “the explicit words of Congress”

              The explicit words of Congress are 112, 1st. Ladders of abstraction are allowable ways of claiming. Virtually all usage of ladders of abstraction beyond the algorithm level in the software context cause a violation of 112, 1st. There’s quite a distinction between “more than picture claiming” and “violating 112, 1st” but in all your wonderfully lucid posts you never seem to want to mention it. Your answer to every suggestion that you can’t claim anything you feel like is “ladders of abstraction” as if the patent scope were a one-tailed test based on 103. Any attempt to define the other bookending boundary is met with a dodge, a poorly written quip or an outright ignorance of the issue.

            6. At 3.1.1.2.4.5, Random has been busy with the shovel and the CRP. Missing badly again with

              It’s not my argument, it’s Critic’s…. (thus requiring him to actually respond to Ned’s point)… Your 101 diatribe is misplaced, as all I was doing was making a joke…

              You are not even close Random. Your joke as well as your criticism is as misplaced as your attempt to shuffle off to Critic the problem that exists with the Supreme Court and their preemption argument

              I have never said they couldn’t [ Inventors must be allowed to use the ladder of abstraction in their claims.]”

              Yes, you have but in different words – it’s but a small step on a small ladder to get from your ‘code’ masquerading as ‘algorithm’ fetish to an anti-ladder position. You keep on missing this as you are fixated FAR too much on a closed tail end.

              The explicit words of Congress are 112, 1st. Ladders of abstraction are allowable ways of claiming….

              It’s too bad you don’t understand what that means – apparently. To wit:
              Virtually all usage of ladders of abstraction beyond the algorithm level in the software context cause a violation of 112, 1st.

              There you go again with your ‘algorithm’ fetish. You realize that this comes across as you demanding actual code, right?

              Your answer to every suggestion… as if the patent scope were a one-tailed test based on 103. Any attempt to define the other bookending boundary is met with a dodge, a poorly written quip or an outright ignorance of the issue.

              LOL – Not. Even. Close. Bud. You try to portray your closed tail – no ladder view as an actual ladder and it is no wonder that when you see a real ladder that you freak out. Not only was ‘an attempt’ provided, but I told you to read the actual case at hand that showed I was right and you were wrong. You rather glossed over how little is actual required to show the ‘algorithm,’ – not surprising as you really want to have actual code.

            7. I suggested that since Critic is capable of divining pre-grant which which functional claims will cover only small areas and which will grow into entire industries (thus requiring him to actually respond to Ned’s point) he should use his foresight to bet on sporting events
              You don’t think structural claims will grow into entire industries?

              Again, working with MM’s playbook, do you have any examples in the last 20 years of patents having claims with “functional language” that have grown into entire industries?

              I was doing was making a joke about how some people want to ignore a 101 analysis because computers have far reaching effects
              I’m all for 101 analysis … using the words of 35 USC 101 — not some judicially-created BS that has nothing to do with the language of the statute.

              Virtually all usage of ladders of abstraction beyond the algorithm level in the software context cause a violation of 112, 1st.
              Explain.

          5. “Your crusade against “functional claiming” is tiresome and fails to appreciate the intertanglement between “structural” terms and “functional” terms. By way of example, give me a definition for the term “light” that (i) encompasses all lights and (ii) does not use functional language.”

            This is an intellectually lazy tail-wags-the-dog scenario. You point to things that already exist, say that they can be described functionally, and use that to say that functional claiming is okay. But that’s precisely backward, because nobody invented the sum “function of lighting.” Someone invented a lamp, someone invented a candle, someone invented a torch, etc. There are a bunch of old structures that provide common results. If you want to expand your embodiments by referring to old structures which are interchangable in their use in your invention that’s fine. There has never been an issue with describing the old by their inherent properties, functional or otherwise.

            The problem occurs at the other end of the spectrum – when functional language is used as a means to capture other structures than what you have. This is done precisely because the applicant knows his particular invention does not exhaust the field and he is seeking to claim more than what the law allows him under 112, 1st.

            It’s an attempt (mostly by people in the computer realm) to actually invent one method of doing something and then, out of fear that the general purpose computer (which is within the public domain) is such a wonderful machine that it can be easily modified to allow for multiple methods of achievement, to foreclose those other methods which are completely unknown to the applicant simply because one often gets away with it.

            “Functional language is simply a way (oftentimes a much better way) of more clearly defining the invention.”

            It’s often just the opposite, it’s an attempt to obfuscate what the applicant actually did in the hopes that because the end result is similar in one particular fashion that he can protect more than what he did. It makes no more sense to write one (possibly terrible, probably ugly, almost certainly inferior-to-other-embodiments) set of computer instructions and attempt to claim anything that has a similar functional end result than it does to shoot a cancer patient and claim you’re entitled to a monopoly on the function of curing cancer cause hey, the cancer cells are dead.

            1. The problem occurs at the other end of the spectrum – when functional language is used as a means to capture other structures than what you have

              You don’t think this doesn’t happen when you used supposed “structural” language? Have you ever drafted patent claims?

            2. The Critic,

              I would amend your comment to ask “Have you ever drafted worthwhile, non-exact, up a rung on the ladder of abstraction, non-picture patent claims?

              There is a critical impact to value in the very real difference.

            3. You don’t think this doesn’t happen when you used supposed “structural” language?

              LOL. So now the teabaggers are telling us that it’s impossible to tell the difference between structural language and functional language. It’s all the same! Why? Because they say so. Now will everyone please stop complaining and just let them claim new functions for computers like Patent Jeebus always intended?

              It never fails to amuse how quickly the patent teabaggers will race to the bottom to defend whatever aspect of the broken patent system is next to be fixed. Structure language, functional language, its all the same! Too funny.

            4. “You don’t think this doesn’t happen when you used supposed “structural” language? Have you ever drafted patent claims?”

              A bow is a bow. You certainly have your bow. You can claim more than your bow. That analysis (in part) is based upon what one of ordinary skill in the art would understand you to have based upon the detail of disclosure of your bow. The analysis begins at your structure and expands outwards.

              A machine that performs a function of firing a projectile is a genus. Your bow is a species of that genus. An analysis that begins at the genus is improper, because you haven’t proved you have the genus, which is the starting point for an analysis as to how much should be given to you.

              This is where ladders of abstraction come in. anon likes to use the phrase ‘ladder of abstraction’ as a shield, as if the permission to use it as a tool for claiming (which is what it is) negates the black letter requirement of 112, 1st. I won’t speak for others on this board I guess, but for me a function is not per se invalid. There are levels of abstraction that are proper. But when analyzing if those abstractions are proper, we look at 103 and 112, 1st, and don’t fool ourselves into thinking that because ladders are available, that each rung is one the applicant is capable of climbing.

              Regardless of how abstractly you want to describe your invention, you’re still stuck with the requirement that you must reasonably possess the full scope of it. It makes no more sense to be in possession of the first [whatever structure you claim to have conceived] and say that fulfills the scope of [your function] than it does to look at the first bow and claim that’s the full scope of firing a projectile. I say this as a general principle. Certainly a function could be worded in such a way that its scope actually is reasonably within your possession, but that is not the way it is being used in most claims today. Similarly, one may refer to old things by inherent functional properties because the old things are certainly within the possession of the inventor.

              The broadest abstraction of the next patentable claim is something like “All statutorily permissible applications of all things.” Clearly we don’t give that patent out, as that would be the last patent. So how do we police how abstract one can get? 103 and 112, 1st. 103 prevents your claim from overlapping with other inventor’s claims and what is dedicated to the public. 112 defines how far you can go. 112, 1st requires enablement and possession. Prove to me you have enabled and are possession of every means of “lighting” or of “firing a projectile” and you can have a claim for it, but keep in mind the inventor of the bow certainly didn’t see the gun coming, so I question how you’d be able to practicably do that.

            5. At 3.1.1.2.5.5 Random provides another display of errant overthinking:

              A machine that performs a function of firing a projectile is a genus. Your bow is a species of that genus.

              Your genus/species smells of a chemist’s attempt at portraying the ladders of abstraction – and it quite immature in its mental comprehension. To wit:
              An analysis that begins at the genus is improper, because you haven’t proved you have the genus, which is the starting point for an analysis as to how much should be given to you.

              That is not how the ladders of abstraction work. And more:

              This is where ladders of abstraction come in. anon likes to use the phrase ‘ladder of abstraction’ as a shield, as if the permission to use it as a tool for claiming (which is what it is) negates the black letter requirement of 112, 1st.

              And you like to be completely wrong on what I like. No surprise really. I have never negated 112 1st, even though you repeatedly make the mistake by merely saying I do. The difference is that you do not understand what the ladders of abstraction are doing – no negation of 112 1st at all.

              I won’t speak for others on this board I guess, but for me a function is not per se invalid.

              Won’t speak for others? .. too late.

              But when analyzing if those abstractions are proper, we look at 103 and 112, 1st, and don’t fool ourselves into thinking that because ladders are available, that each rung is one the applicant is capable of climbing.

              [Capability of climbing a rung… – somehow tied in your mind to 103… you are going to have to explain this a bit more.]

              Regardless of how abstractly you want to describe your invention, you’re still stuck with the requirement that you must reasonably possess the full scope of it.

              Funny here too you keep on arguing something I never argued – of course you need to possess it – you just don’t understand what that means. You keep on thinking that you need to possess EVERY possible species and you do not. You also have a problem at this point confusing what it means to use the DOE. Those as well are not required to be present in every single detail.

              Software does not need to be in code – any code – not C#, not LISP, not PASCAL, not Basic, not any of it.

              See link to en.wikipedia.org for a short list. Do you really think that if a item from this list is missing, then a software claim fails for your genus/species test? Do you know how absurd that is? And yet, you would revel in the absurdity.

              to look at the first bow and claim that’s the full scope of firing a projectile.

              That’s not even a sensible parallel.

              I say this as a general principle.

              You say it as a strawman. A fantastically ridiculous one at that.

              Certainly a function could be worded in such a way that its scope actually is reasonably within your possession, but that is not the way it is being used in most claims today.

              LOL – and you are the universal expert..? From what I have seen the easy answer is no, not at all.

              Similarly, one may refer to old things by inherent functional properties because the old things are certainly within the possession of the inventor.

              And why would you make that assumption? Just for sake of argument, are you assuming that the inventor is a PHOSITA with the PHOSITA’s encyclopedic knowledge? Or – as is more to truth, what is required to be present in an application is not the range that you seem to implicitly want there…? Hint: the answer is the latter of the two.

              The broadest abstraction of the next patentable claim is something like “All statutorily permissible applications of all things.”

              ?? – what are you trying to say? Are you trying to say the top rung on the ladder of abstraction?

              Clearly we don’t give that patent out, as that would be the last patent.

              Clearly that is not why we do not give that patent out and just as clearly, you are flimflamming at this point because you don’t know what the ‘last patent’ item is – you seem to think that invention has a final limit – that’s very Duell of you – and also very wrong.

              So how do we police how abstract one can get? 103 and 112, 1st.

              The Court rejected this argument in Prometheus. You are confusing yourself between the ladders of abstraction and the judicial exception of Abstract. And you said I was misplaying the 101 notion….

              so I question how you’d be able to practicably do that.

              And I question the sanity of your strawman.

            6. are telling us that it’s impossible to tell the difference between structural language and functional language. It’s all the same! Why? Because they say so
              Nice strawman. I never said it was “impossible.” However, I have made the statements I did because I have written (lots of) both types of claims. Structure and function intermix all the time, and I see no reason to eliminate one to address an issue that also exists in the other.

              Too funny.
              What is funny is that what I feel when reading your posts is a sense of sadness — for you.

    2. What functional claiming problem?

      If the claims were too broad, they would have been rejected under 102, 103. Have you ever prosecuted a patent application? Examiner’s pride themselves on rejecting applications. If a claim can be rejected as being too broad, it is. Trust me.

        1. “If a claim can be rejected as being too broad, it is.” I’ll one up you: if a claim cannot legitimately be rejected as being too broad, it still is. Until you get a reversal on appeal.

          This hyperventilating over a very small number of patents is giving way to an hysteria to weaken patents in general and cascade the expense of an already expensive patenting process.

          1. a very small number of patents

            “There’s nothing to see here! Just move along!”

            Page 1 of the patent teabagger script. Page 2 is where they accuse the critics of being communists.

            LOL.

            1. Not sure why you are LOL’ing here Malcolm.

              You play the “nothing to see here” gambit all the time with the way that you ignore and refuse to answer the very simple questions of law and fact that go directly to the heart of the software patent eligiblity discussion.

              As for ‘accusing’ you and anyone else of having communistic tendencies, LOL right back atcha, as the observations I make are completely accurate.

              Are you trying to stifle the free expression of accurate observations just because you are a bit ashamed at how accurate those observations are?

              Criminy, that’s worse than the Crybaby Veto that was foisted awhile back.

              Man up dude and take some responsibility for what you post. If you are going to be embarrassed by how ‘red’ you sound, then don’t post that way.

        2. Sure. Yeah.

          And yet we have the likes of that claim in Cyberfone. Then we have so, so many here who see absolutely noting wrong with using

          “fastener”

          when the novel structure is a

          “nail.”

          1. If it got allowed, the novel structure was fastener, or you are mistaken and the novelty is elsewhere, perhaps in combining the components by what ever mechanism imaginable.

            1. Les, that is the exact problem of functional claiming. Only a nail was disclosed. Now you accuse a device with glue. Both fasten.

              Your claim literally covers an entirely different way of fastening.

              That is THE problem identified by both Morse and Halliburton and any number of prior cases. The claim literally covers the independent inventions of others. The scope of the claim is the problem, and it is NOT cured by a narrowing claim construction.

            2. Ned –
              I gave a nail as an example in the specification. Nail embodiments represent the preferred embodiment at the time of the application. The claim is broader because I recognized that any other fastener can be used with varying degrees of success. The claim is part of the original specification. Accordingly, I invented embodiments that use any fastener and claimed them. I’m sorry if you recognize the advantage of my invention and want to make and sell embodiments thereof without paying me a royalty, but you can’t. I invented it and am entitled to the royalty.

            3. Les, let us not change the facts. The nail is the invention in this hypo, not any means for fastening, new or old.

              If the form of fastening is irrelevant and ANY structure, NEW or OLD fits the bill, then of course one can claim such broadly. I have said that repeatedly. Ad nauseam.

              That is why I try to make distinctions between old elements and new. If the form of element is not important and even known apparatus are included, then the element may be claimed broadly.

              But to claim a genus, you have to have a number of species sufficient to claim the genus. One cannot simply claim a genus based on one species.

              Take Phillips v. AWH. Assume that the only structure disclosed were the angled baffles and the only purpose for the baffles was bullet deflection. A claim to walls with baffles should not read on anything other than the angled baffles. Do you agree or disagree?

              Now what if the claim just said structure adapted to deflect a bullet. Is there a problem with this claim? Obviously it can be construed to cover the disclosed angled baffle. But the sheer breadth of the claim is the problem and is the reason why Halliburton refused to agree that a curative construction was sufficient.

            4. As Prof. Crouch alluded to, an aspect implicated here (but by no means [sic] only here) is the tool of the ladders of abstraction.

              Understand that the use of the ladders of abstraction occurs and why it occurs and the entire Crusade against functional claiming falls apart.

              Screwdriver anyone?

            5. “Now what if the claim just said structure adapted to deflect a bullet. Is there a problem with this claim? Obviously it can be construed to cover the disclosed angled baffle. But the sheer breadth of the claim is the problem”

              Are there structures adapted to deflected bullets in the prior art?

              If so, the claim is rejected under 102.

              If not, the inventor invented armor generally and, IMHO is entitled to a royalty on any embodiment for the next 20 years or so. You are still able to invent Kevlar, but you were likely inspired by my invention and success and if you want to sell it or use it as armor, then you need to acknowledge my contribution and pay me a royalty. You can even patent Kevlar if you like. You done good and you’re entitled.

              Likewise, Morse got screwed. He invented communicating via long distances with electromagnetism. Using di dah to mean A was just an example and he should not have been limited to a particular mapping. His contribution was way beyond that. Morse was poorly decided and we should not worship at that alter.

            6. And by the way Ned. In your hypo, you said the nail was “the point of novelty” yet you said the claim recited a fastener.

              So, the invention was not a nail. According to you it was the use of the nail.

              In either case, if the CLAIM said fastener, then you are mistaken. What passed 102 and 103 scrutiny was FASTENER and that is what the invention was. What gave you the impression the invention was nail? You said nail was the only fastener mentioned in the spec. But you overlooked the claim. Clearly, the claim said fastener and the claim is part of the specification.

            7. Les,

              Let’s keep this simple.

              1. A claim to structure cannot be claimed functionally except where the element is old.

              2. A claim were a new function is the invention must be claimed as a process or method.

              This was hornbook law until Rich took his hatchet to the patent system.

            8. This was hornbook law until Rich took his hatchet to the patent system.

              Wrong Ned – it was the words of Congress in the 1952 Act that took the hatchet.

              I will add another ethical question for you:

              Is it ethical to refuse to understand the law and to thus make knowingly false accusations against a judge who intimately knew the law (because he helped write it)?

              I get that you do not like what the law is.
              I get that you want the law to be different.

              But you really have to stop your false diatribes.

            9. I’m not sure what you are saying with the following Ned:

              “1. A claim to structure cannot be claimed functionally except where the element is old.

              2. A claim were a new function is the invention must be claimed as a process or method.”

              I claim devices functionally all the time.

              The message I do get from your post is that you have no cogent argument with which to respond to my previous two posts. So, I’m taking that as a win…

              Whooo hooo.

            10. Les, I do have a response, but I do see how this issue can get confused. You raise points that only show that it is not all that easy at times to determine whether a claim is broader than the disclosure.

              Back to nail/fastener, if it makes no difference how two things are fastened, the claim can rightly claim a fastener, means for fastening or something equivalent. As well, one could say, part A fastened to part B.

              But the novelty would have to lie elsewhere in the claim, as in the combination of part A and part B.

              In Halliburton, everything was old but the new tuning apparatus. There was no new combination or method. Thus the invention was claimed too broadly.

              In our example, assume part A and part B are shown fastened together in the prior art by glue. I disclose a nail. I claim instead apparatus for fastening part A to part B. Obviously, this reads on the prior art and one needs to limit the claim. So I claim an elongated rigid fastener.

              That is not disclosed in the prior art, and it covers the nail. But it also covers a screw, which is later invented. Is this proper?

              In the Selden case, Selden had invented a variant of the Brayton engine, but received a claim to all cars that had gasoline engines of the compression type. Arguably, this was supported but for its full scope? Did he actually invent all gasoline engines of the compression type for cars?

              In the end, the Second Circuit limited Selden to the novel apparatus he actually invented and equivalents.

  12. Examples of spin, lack of clarity, and general rubbish in yet another academic diatribe:

    1) require reporting of real party in interest (re-branded as “attributable ownership”)

    Rebranded? Um, no, real party in interest was an existing requirement. What is being pushed in the, um, ‘rebranding’ is a far more extensive and illegal law making exercise by the executive branch.

    2) more notorious PAEs for using off-the-shelf office equipment like scanners and wireless routers.

    LOL – we seem to have forgotten that ‘use’ is still patent infringement regardless of where in the chain of commerce that user is and have swallowed the kool-aid that the patent holder must be wrong if they are aiming for a particular violator. Way to simply ASSume the Infringers’ Rights are superior to Patent Rights view and treat it as de facto law.

    3) The Administration seems to realize that both of these initiatives are relatively modest

    What part of illegal law writing falls under “relatively modest?” Or is repeating “pay no attention to the man behind the curtain” supposed to make us believe in the power of that which is desired to be projected?

    4) The Patent and Trademark Office (PTO) has, fairly or unfairly, come under increasing fire for procedural lapses and staffing inadequacies

    What the H is the “or unfairly” supposed to mean?

    5) glossaries et al.

    Some real stick your head in the sand action here, coupled with the dead give-away word: WHATEVER. One thing not in the suggestions was that examiners actually construe the words of claims and put into the record what they understand the claims to mean. Um, you did say you want clarity, and yet this is not even mentioned…? (Oh yeah – the Office has previously said no to this – perhaps that is a point that should be revisited).

    6) but the Peer-to-Patent project has quietly faded into oblivion. The Administration’s current “crowdsourcing” approach is different, in that it calls directly on companies, the repositories of most NPL, to help

    Trust us, this time it will be different…. Um, no. The call directly on companies was fully there in the first two attempts which were open to, well, EVERYONE. The plain fact is that these very much balleyhooed approaches “faded into oblivion” and the plain fact of WHY this happened needs to be understood to stop this plainly ridiculous empty merely-for-show wasteful effort from AGAIN being tried and likewise fading into oblivion. The phrase ‘fool me once’ does not have a third stanza for a reason.

    7) rely heavily on voluntary engagement by the private sector

    Someone needs to revisit Tafas and understand just whose job it really is to perform the examination.

    8) pro se help

    Well I won’t be too harsh, as the help is clearly needed (tropical storm anyone?) – but the danger here is the spin and the look-at-me look-at-me grandstanding of what should be expected anyway being passed off for more than what it is or will accomplish. Further, the “it is only a myth” aspect is both not correct nor called for (and is often a smoke-screen device for more Large-Corp driven changes). See the Lemley-Katznelson debate on the subject.

    9) Conclusion

    A ridiculous cheerleading attempt that the Executive branch “really cares” and is being “really active.” How about one single step – WAY way way overdue that would show some real care and real action: nominate an actual director. Or another: demand that all of the investor funds purloined from the patent office and moved to the general tax coffers be returned to fund actual improvements?

    1. BTW — good post. I wrote something similar under a different heading awhile ago.

      These “reforms” are mostly bandaids and repackaging of stale ideas that haven’t gone anywhere. The USPTO has its hands tied because they don’t substantive rule making authority. While I’m sure they want to do something more meaningful, they cannot — which, IMHO, is a good thing.

      As for the “voluntary” help the USPTO is looking for, good luck with that … relying upon people, who aren’t going to get paid, to help you do your job is rarely a recipe for success.

  13. BUT—-the biggest problem with the examining corp is that they are located in an area where they cannot afford to make a decent living. Move the PTO to Wheeling West Virginia and what the retention rate soar and watch the quality of applicants soar.

    The examiners are equivalent to engineers of a corporation. Name an engineering corporation that has ever built a research/development facility near DC? They don’t do it for a reason. The PTO being in Alexandria is a brain dead decision. Shameful.

    In fact, President O’Bummer, if you had any brains that you use, you would have figured this out and used your power to change it.

    1. Name an engineering corporation that has ever built a research/development facility near DC? They don’t do it for a reason.

      LOL. You really ought to leave Wheeling once in a while and go see the real world, NWPA. There are tens of thousands of engineering R&D jobs near DC.

      link to indeed.com

        1. Yeah, name a couple that are in close like the PTO.

          Something tells me that if do you’ll move the bar so that nothing qualifies unless it’s actually on the White House lawn.

          Raytheon and CACI are two that I remember off the top of my head. In Falls Church, VA, maybe ten miles and a few metro stops from the center of DC.

          1. Hang on. LB: you are picking a couple of places that are stuffed with very well paid workers and which were started some 40 years ago. And, is the scale of 5,000 engineers where junior engineers are trained.

            Fact it, if a study was done on where to put the PTO, it would not be right in the middle of one of the most expensive places to live in the U.S. And, if a study was done on why there is such a large attrition rate, (I know it went down with the 2008 debacle, which your lot is looking to re-create with patents), the primary cause would be pay to the expense of living right next to DC.

            The PTO workers are not analogous to those work sites. So, somehow I feel that you will worm out of this in any way you can and thus have cast the first stone.

            1. Compare:

              Name an engineering corporation that has ever built a research/development facility near DC?

              to:

              Hang on. LB: you are picking a couple of places that are stuffed with very well paid workers and which were started some 40 years ago. And, is the scale of 5,000 engineers where junior engineers are trained.

              You’re a funny man, NWPA. This must be an example of that “intellectual honesty” that your pal is always going on about.

            2. What a strange person you are LB. Are you seriously contending that putting the PTO in Alexandria would stand up to scrutiny?

              Or are you just blowing smoke as usual.

            3. NWPA … you are fighting a losing battle.

              The DC area is a hotbed of technology companies. The Dulles corridor has an untold (very large) number of high-tech companies. Go northwest into Montgomery County in Maryland, and you have a huge biotech presence.

              The Metro system in DC is very efficient, so an examiner doesn’t have to live anywhere near Alexandria, VA — bearing in mind that 1 hour commutes (one way) in the DC area are considered normal.

              If I didn’t have family/friends I wanted to be around, I would go back to the DC area. It is a great place to live. It can be expensive, but it doesn’t have to be.

            4. The Critic:

              I know DC very well. The Dullus corridor? You mean those high tech companies that built their research centers an hour’s drive from the PTO so that their employees could afford to buy a house and afford to live? That place?!!!

              An hour commute? For a junior examiner? What you are missing is that the PTO doesn’t need to be near DC. And, it would be a completely different thing if the PTO were built near Dullus (that would have been a reasonable decision.)

              Most people at the level of examiner are not going to want to commute 2 hours every day. And, I know many, many people that have switched jobs in the DC area to get out of the 2 hour commute.

              DC is a great place to live if you are well paid. It is a miserable place to live if you are not–just like every big city in the world.

              Man, you guys are nuts. Just ask if you were going to build an engineering center with 5-10 thousand engineers and it doesn’t particularly help you to be next to DC, would you build it next to DC? NO.

              If it wasn’t the government, there would be some executives that would lose their job for the decision to put the PTO in Alexandria. You guys absurd.

            5. And, the Critic: the metro system? Yes, it is excellent in DC for going from outside DC into DC. And maybe for going down 66. So, basically, what you are saying is that examiners could go down 66 for an hour each way every day and they could afford to live there.

              Man, you are one absurd person…..

              Why is it that every suggestion, every possible way of improving the patent system is always torpedo’ed by bozos on this board?

              I don’t think you could get a single serious person at a high level of a corporation who would burst out with laughter at the thought of building their 5-10K engineering center smack in the middle of one of the highest cost areas of the world.

            6. OK so after the twits have blown their smoke up their own a$$es what we are left with is the best solution to improve the PTO is move it.

              Moving it out past Dullus would be an enormous improvement for retention and for the quality of people that would apply for a job.

            7. Or are you just blowing smoke as usual.

              It is just the typical Leopold – focusing on the wrong issues and being quiet (with a few exceptions) to the important points.

              For example, any of the nine points I raised above would be excellent discussion starters as opposed to the much more mundane “it would be better to live and work in a lower cost of living area.”

              There can be no doubt that such – on its own – is absolutely true. Of course, actually living anywhere has trade-offs and decisions to be made that in the end rest on personal considerations.

              It does remind me of a joke though (no, not the typical joke of posters posting their vapid rhetoric):

              A man heard that 90% of all auto accidents occurred within 3 miles of one’s home, so he moved ten miles away.

            8. Wow, that’s an impressive hissy fit there, NWPA. All I did was respond to your silly challenge to “name an engineering corporation that has ever built a research/development facility near DC.” That’s it. I said absolutely nothing about the wisdom or not of putting the PTO in Alexandria. And you accuse me of “worming” my way out of something, blowing smoke, and being “nuts,” “absurd,” and “a twit.” And of course the noble defender of “intellectual honesty” feels obligated to chime in with his unsolicited and unprovoked insults.

              I think I’m owed an apology.

            9. You may very well be owed an apology Leopold.

              I suggest you get in line – you owe quite a few to me.

              Among other things, like references that teach against the ladders of abstraction in writing patent claims, or a discussion of the Academics views on the Federal Rules of Civil Procedure that support my post that you heavily criticized, but vanished when I tried to engage you in discussion.

              NWPA may very well be of the piece of Blue Sky in his Lap tendency, but he does not hide behind a wall of smarmy duplicity like certain other cheerleading posters do.

            10. Compare:

              LB: Something tells me that if do you’ll move the bar so that nothing qualifies unless it’s actually on the White House lawn.

              LB: You really ought to leave Wheeling once in a while and go see the real world, NWPA.

              LB: You’re a funny man, NWPA. This must be an example of that “intellectual honesty” that your pal is always going on about.

              TO

              LB: I think I’m owed an apology.

              YOU ARE OUT OF YOUR MIND.

            11. NWPA,

              One only has to look at Leopold’s cheerleading of Malcolm (upvoting a blatant 1ie post by Malcolm that Malcolm does not use innuendo, for a very quick example) to see that what you state at 6:05 pm is absolutely true.

            12. As you observe, NWPA, the defense industry with its need of D.C. connections and effectively unlimited budgets can indeed locate its operations around D.C.

              And enormously profitable Silicon Valley companies can locate in Silicon Valley.

              But the PTO is not allowed to pay like those companies. The PTO hands out valuable monopolies as its business, so it could bring in as much money as it needs to, but fee levels and salaries are both too low to accomplish the PTO’s mission.

              The best approach isn’t to move to a place where salaries are cheap because such places don’t have enough available workers. Obviously, PTO shouldn’t be opening new offices in Silicon Valley either. The best approach is to increase salaries with an increase in fees in proportion. Examiners start at an absurd $41k. That should be adjusted by moving up every position in the examiner corps two spots on the GS scale. New GS-5’s should instead be started at GS-7. Or else, they could stay GS-5 and simply add a $20k adjustment to all salaries. Then a GS-5 junior examiner could start at $61k. That would be competitive in D.C. The PTO could hire enough quality talent and the backlog could be cleared while more of the avalanche of absurd applications could be rejected on more reliable grounds.

            13. Man, you guys are nuts. Just ask if you were going to build an engineering center with 5-10 thousand engineers and it doesn’t particularly help you to be next to DC, would you build it next to DC? NO.
              DC is the obvious place for it. First, its been in DC since its inception. Second, DC is the home of the Federal Government (those first points go hand in hand). Third, there are a ton of qualified engineers in the area. DC is easily accessible by air (3 major airports in the area).

              You cannot plop the USPTO in the middle of bum-fcuk Idaho and expect to find 5000-10000 qualified engineers who want to live there.

              Moving it out past Dullus [sic] would be an enormous improvement for retention and for the quality of people that would apply for a job.
              Hardly, moving it past Dulles pretty much eliminates all public transportation options, and a very good public transportation system is one of DC’s major benefits. There is a reason why people like to live in the big cities despite the expense — it is easy to get anywhere, without a car.

              As far as I can remember (and it hasn’t been too long since I lived in DC) almost all of the Federal Agencies that had large facilities outside of DC proper were still within the beltway and connected to the Metro (the CIA being the only notable exception of not being accessed from the Metro).

            14. You talk like an examiner.

              That would explain a lot.

              The patent teabaggers now on page 3 of their script. What’s next, I wonder? Perhaps Owen will be compared to Caligula.

            15. Critic:

              >You cannot plop the USPTO in the middle of bum-fcuk Idaho >and expect to find 5000-10000 qualified engineers who want >to live there.

              Not in the middle of nowhere, but this is exactly what engineering companies do all the time.

              >Hardly, moving it past Dulles pretty much eliminates all public >transportation options, and a very good public transportation >system is one of DC’s major benefits. There is a reason why >people like to live in the big cities despite the expense — it is >easy to get anywhere, without a car.

              Dude, a metro is not that big of deal to most people. A house is. Good schools are. You appear to be an odd duck that doesn’t realize you are an odd duck.

            16. Not in the middle of nowhere, but this is exactly what engineering companies do all the time.
              None that have anywhere near the number of employees as the USPTO.

              Dude, a metro is not that big of deal to most people. A house is. Good schools are. You appear to be an odd duck that doesn’t realize you are an odd duck.
              Have you every lived somewhere that had something comparable? It is a huge benefit. Moreover, the DC area has some of the best schools in the country. As for housing, it is expensive (if you live in close) but it isn’t outrageous compared to other big cities.

            17. Yes Critic I have lived in big cities with great metro systems. I have commuted by train for years. I have even lived in DC and commuted by the metro system and taken the metro to the PTO.

          2. Something tells me that if do you’ll move the bar so that nothing qualifies unless it’s actually on the White House lawn.

            Reminds me of a guy and a case like Decca Ltd. v. United States, 544 F.2d 1070 (Ct. Cl. 1976).

            1. NWPA,

              I have coined a term of art for the person that so often employees that vapid rhetorical tool:

              Accuse Others Of That Which Malcolm Does

              Or AOOTWMD

              Feel free to use as appropriate.

    2. “The examiners are equivalent to engineers of a corporation. Name an engineering corporation that has ever built a research/development facility near DC? They don’t do it for a reason. The PTO being in Alexandria is a brain dead decision. Shameful.”

      Didn’t I hear somewhere that patent law questions are mixed questions of fact and law? Aren’t examiners the equivalent of lawyers?

      Let me check a map, I wonder if any lawyers are situated in the DC area.

      But yeah, pay Examiner’s even remotely fairly compared to the private sector which does the other side and you’d see retention soar.

      1. Random comes close (while still missing) with “Aren’t examiners the equivalent of lawyers?

        Are they? – most definitely they are not, as easily seen by 6 and his utter lack of appreciation of what law is.

        Should they be? – a much better question. I would happily make it so (take a peek at the Trademark side) – but you then have a pragmatic problem: pay scale.

        I would have ZERO problems with paying examiners more (much more) to obtain true quality (law and fact) in examination. In fact, doing the Fn job right the first time has always been a foundational point in my posts.

        Always.

        1. “Are they? – most definitely they are not, as easily seen by 6 and his utter lack of appreciation of what law is.”

          Don’t fool yourself, the majority of people making a mockery of patent law on this board and in general have a JD after their name. Your average Examiner is more respecting of the rule of law than your average lawyer, if only because they know they’re playing an away game when it comes to legal arguments.

          Most of the times when the office performs poorly with respect to legal issues its because the CAFC doesn’t have internal consistency, the Supreme’s and CAFC are at odds, Congress feels it has a PAE problem but doesn’t know how to solve it or because procedures and tests are not made clear by whatever court has written last.

          “Should they be? – a much better question. I would happily make it so (take a peek at the Trademark side) – but you then have a pragmatic problem: pay scale.

          I would have ZERO problems with paying examiners more (much more) to obtain true quality (law and fact) in examination. In fact, doing the Fn job right the first time has always been a foundational point in my posts.”

          Of course I agree with this statement, but the problem is that you (not your fault, as you’re only responding to the topic) present it as if it’s a choice of quality. You’re given ~30 hrs to do a software case. That’s 30 hours to read the spec, construe the claims, apply the legal tests, search the art, self-compile the action (which is a significant chunk of time), respond to amendment argument, re-search the claims, self-compile a second action, respond to any after finals and write any appeal brief. Whoever decided (I’m assuming Kappos) that he had the authority to trade quality for alacrity was mistaken. The question ought to be: Given that we have a standard of quality that must be met, are we willing to pay to prevent even longer lines of applications?

          Statutorily, that’s the only question you can really ask. The fact that that isn’t question is indeed the PTO’s fault.

          1. Sorry Random, but while there may be a few people here that have JD after their name and screw up the law, they are not a part of the discussion of the office people that screw up the law.

            Your counter is a non-sequitur.

            Also, you fail to realize that a longer first look is much more likely to reduce the overall examination time with an end result of less items in queue for an overall shorter time.

            As I have mentioned, the Reject-Reject-Reject nonsense can be directly linked to the growth in queues in the deck chairs of secondary examination (pre-final), RCEs and Appeals. Solid examination leads to shorter examination.

          2. This has to be the most unintentionally hilarious post this site has ever seen. Let’s break it down chuckle by chuckle, shall we?

            “Don’t fool yourself, the majority of people making a mockery of patent law on this board and in general have a JD after their name. Your average Examiner is more respecting of the rule of law than your average lawyer, if only because they know they’re playing an away game when it comes to legal arguments.”

            The average examiner is more respecting of the law? That’s dosh garn funny that is. So when I get the old, “Well, the examiner acknowledges that not a single piece of prior art shows the claimed feature, but the examiner takes Official Notice that it’s inherently obvious to optimize the prior art through routine experimentation as a matter of design choice. See In re WhateverboilerplatecaselawfromtheMPEPthatishilariouslymisinterpretedthattheexaminerhasneverreadandwillneverread.” and I traverse that and the examiner refuses to withdraw the rejection, that is because they have more respect for the rule of law than I do?

            You funny.

            “Most of the times when the office performs poorly with respect to legal issues its because the CAFC doesn’t have internal consistency, the Supreme’s and CAFC are at odds, Congress feels it has a PAE problem but doesn’t know how to solve it or because procedures and tests are not made clear by whatever court has written last.”

            That’s why the examiners perform poorly most of the time? It’s not because they know that anything they type up will get signed off by their SPE no matter how ridiculous as long as all the claims are rejected?

            Again, you funny.

            “You’re given ~30 hrs to do a software case. That’s 30 hours to read the spec…”

            Lulzapalooza. You know examiners don’t read the spec.

            “…., construe the claims…”

            You know they don’t do this either.

            “…, apply the legal tests…”

            You mean the inconsistent ones from the Fed. Cir. and the Supremes?

            “…, search the art…”

            Now you’re really making me laugh.

            “…, self-compile the action (which is a significant chunk of time)…”

            Self-compile the OA? You mean punching up the OA generating application and filling in the blanks at the prompts? Sounds grueling. And time consuming.

            “…, respond to amendment argument…”

            How hard is it to find that “arguments moot/not persuasive form paragraph(s) in the OA generating application?

            “…, re-search the claims…”

            Now I’m howling.

            “…, self-compile a second action…”

            See above. How much time does it take to punch up the old OA, (hopefully) change the date (at least), insert the form paragraphs with In re Keller, etc. and turn that in?

            “…, respond to any after finals…”

            Filling out an advisory action form takes all of about 30 seconds.

            “… and write any appeal brief.”

            If you’ve done the job correctly, this should not take that long. The fact that you think it does suggests to me that you’re doing it all wrong.

            But thanks for the laughs.

            1. This all might be true, but then it would be interesting to see a comprehensive billable hour breakdown for any attorney….

              If all the examiner does takes 5 minutes, how long does it take to say the examiner’s wrong. I would think a bit less.

            2. John,

              You are not an attorney, are you?

              You might want to realize that an attorney will not – cannot – just say “you are wrong.” Sure, that might work on a blog (and be completely accurate), but for legal matters, a bit more is (and needs to be) done.

            3. “This all might be true,…”

              It is. And Random Guy and every other examiner posting here knows it’s true. As do all the actual practitioners posting here.

              “… but then it would be interesting to see a comprehensive billable hour breakdown for any attorney….”

              Clients see that all the time. It’s called a bill. If the client has no issue with the bill, there’s certainly nothing for an examienr to take issue with.

              “If all the examiner does takes 5 minutes, how long does it take to say the examiner’s wrong. I would think a bit less.”

              No argument here. I’ve received plenty of the rejections I noted above (e.g. “The examiner takes Official Notice that everything’s inherently obviously optimizable as a matter of design choice.”). It doesn’t take me very long to traverse those.

              I’ve responded to plenty of OA’s without bothering to read the spec. Or the prior art. The errors in the OA are so blatant and egregious that the response practically writes itself. In fact I usually just instruct my secretary to “prepare the usual response to this type of bullsh!t” and then do some minor editing before finalizing and filing. The client gets billed for however long that takes. It’s not that long. This is a volume business, yo.

      2. Random, the difference is there is no need for the examiners to be in close to DC. The lawyers need to be close.

        Are you brain dead?

        1. “Random, the difference is there is no need for the examiners to be in close to DC. The lawyers need to be close.”

          Put the examiners wherever you want. If the option for an examiner is work for the PTO and make X, or do pretty much the exact same job from the other side and make X + 50%, they’re still going to leave.

          Moving the office to, e.g. West Virginia may reduce the disparity moneywise, but then they’d have to, you know, live in west virginia, which is it’s own detriment. I’m surprised you didn’t say Detroit, as there is a satelite office out there, but that’s the same issue.

          In fact, after being with the office for a certain amount of time and reaching a certain level, you are allowed to work from anywhere and people still leave, which kind of destroys your theory.

          1. “If the option for an examiner is work for the PTO and make X, or do pretty much the exact same job from the other side and make X + 50%, they’re still going to leave.”

            Lulz, and lulz, and lulz some more. So many lulz I don’t even know where to begin.

            It’s hard to believe that examiners are still trotting out the old, “We do the same job as the attorneys…” line of bull.

            Here’s an idea for you: Get in touch with anybody you know who left the PTO for private practice and ask them if they are “pretty much doing the exact same job” at their firm as they were doing at the PTO. The answer may surprise you. Then again, I doubt it would because you pretty much know you’re full of sh!t for even posting that nonsense here.

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