White House Fact Sheet on Patent Reform

THE WHITE HOUSE

Office of the Press Secretary

FOR IMMEDIATE RELEASE

February 20, 2014

Executive Actions: Answering the President’s Call to Strengthen Our Patent System and Foster Innovation

 Year of Action: Making Progress Through Executive Action 

In his State of the Union address, President Obama set an ambitious agenda to make 2014 a year of   action. As part of that commitment, and recognizing that innovation is the lifeblood of our economy, the Administration today is announcing major progress on a series of initiatives designed to combat patent trolls and further strengthen our patent system and foster innovation; issuing new executive actions to build on these efforts; and renewing its call on Congress to finish the job by passing common-sense patent reform legislation.

Since last June, when the White House pledged to protect innovators from frivolous litigation, the Administration has been working to implement a series of executive actions to improve the U.S. patent system. Today the White House is announcing delivery on these commitments:

  • Promoting Transparency — The United States Patent and Trademark Office (USPTO) recently published a draft rule to ensure patent owners accurately record and regularly update ownership information when they are involved in proceedings before the USPTO. This effort is aimed at improving the quality of patents issued, enhancing competition, facilitating technology transfer, and making it harder to hide abusive litigation tactics behind shell companies. After receiving input from the public, the USPTO aims to issue a final rule in the coming months.
  • Making Patents Clear — The USPTO has developed and implemented a training program to help its examiners rigorously examine so-called “functional claims” to ensure claims are clear and can be consistently enforced. In the coming weeks, the USPTO will launch a pilot program that uses glossaries in patent specifications to promote patent clarity.
  • Protecting Main Street from Abuse — To help ensure consumers and main-street retailers know their rights before entering into costly litigation or settlements, the USPTO is today launching an online toolkit aimed at empowering consumers with answers to common questions, information about patent suits, and details about specific patents. The toolkit will include information and links to services and websites that can help consumers understand the risks and benefits of litigation or settlement, and pick their best course of action.
  • Expanding Outreach & Focused Study — Today, the USPTO is announcing the expansion of its Edison Scholars Program, which brings distinguished academic experts to the USPTO to develop and make available to the public more robust data and research on issues bearing on abusive litigation. USPTO will also continue to expand its engagement with stakeholders—including patent holders, researchers, advocates, and others—and build on the successful roundtables the agency hosted across the country over the past year on high-tech patent issues.
  • Strengthening Exclusion Order Enforcement — To make the enforcement of exclusion orders issued by the International Trade Commission more transparent, effective, and efficient, the Office of the U.S. Intellectual Property Enforcement Coordinator launched an interagency review and will, in the coming months, deliver its recommendations on refining that process.

         Innovation For Global Development — In addition, today, the Administration is committing to sustain, going forward, the Patents for Humanity Program, which creates business incentives for using patented technology to address global humanitarian needs.

Today, the White House is also announcing three new executive actions to encourage innovation and further strengthen the quality and accessibility of the patent system:

 Crowdsourcing Prior Art — To help ensure that U.S. patents are of the highest quality, the USPTO is announcing a new initiative focused on expanding ways for companies, experts, and the general public to help patent examiners, holders, and applicants find relevant “prior art”—that is, the technical information patent examiners need to make a determination of whether an invention is truly novel.

  • More Robust Technical Training — The USPTO is expanding its Patent Examiner Technical Training Program to help patent examiners keep up with fast-changing technological fields by making it easier for technologists, engineers, and other experts to provide relevant technical training and guidance to patent examiners. To make the most of these changes, the Administration is calling on innovators to volunteer their time and expertise to help ensure that USPTO training is robust and reflects the state of the art.
  • Pro Bono and Pro Se Assistance — To increase the accessibility of the patent system, the USPTO will dedicate educational and practical resources to assist inventors who lack legal representation, appoint a full-time Pro Bono Coordinator, and help expand the existing America Invents Act pro bono program to cover all 50 states. The Administration is calling on members of the patent bar to participate in the program.

Renewing the Call for Meaningful Legislation to Combat Patent Trolls: In his State of the Union address President Obama renewed his call for Congress to pass patent reform legislation, which enjoys strong bipartisan support. The Administration looks forward to continuing to work with Congress to deliver focused and effective patent reform legislation to the American people in the coming months.

   Year of Action: Making Progress Through Executive Action 

 Further Detail on Answering the President’s Call to

Improve our Patent System and Foster Innovation, not Litigation

 A strong intellectual property system supports and enables the innovation that is the lifeblood of our economy. Our patent system is enshrined in our Constitution to encourage invention and to reward Americans for their hard work and risk-taking. But in recent years, that system has also seen the growth  of abusive patent litigation designed not to reward innovation but to threaten inventors and companies based on questionable claims. That’s why President Obama has made it a priority to reform that system to ensure it encourages innovation and invention and provides the right incentives to drive investment, inspire and reward creativity, and spur job creation.

 In 2011, the President signed the Leahy-Smith America Invents Act (AIA), a landmark piece of legislation designed to help make our patent system more efficient and responsive to innovators. The United States Patent and Trademark Office (USPTO) has now successfully implemented that law, enabling many reforms that are leading to higher patent quality, including post-grant patent review proceedings at the USPTO that offer faster and less expensive alternatives to litigation in Federal courts. Yet many innovators have continued to face challenges by patent-assertion entities or patent “trolls”– entities that have, over the past decade, increasingly used patents to extract settlements based on the high cost of defense.

 Building upon the strong foundation of AIA reforms, on February 14, 2013, President Obama stated that “our efforts at patent reform only went about halfway to where we need to go. What we need to do is pull together additional stakeholders and see if we can build some additional consensus on smarter patent laws.”

 On June 4, 2013, the White House set forth a series of executive actions and legislative recommendations designed to protect innovators from frivolous litigation and ensure high-quality patents.

 During his State of the Union address in January 2014, the President renewed his called for passage of a patent reform bill that would allow businesses to stay focused on innovation, not litigation. To complement this legislative effort, today the White House is highlighting progress to date on the previously announced executive actions, and is announcing three new actions to further respond to the President’s call-to-action to level the playing field for all innovators and increase patent quality.

 Progress on the June 2013 Executive Actions

1.                  Transparency in Patent Ownership.  Patent trolls often set up shell companies to hide their activities. This tactic prevents those facing litigation from knowing the full extent of the patents that their adversaries hold when negotiating settlements; keeps innovators from being able to find each other; and undermines companies’ understanding of the competitive landscape.  That’s why the USPTO recently proposed a new rule, informed by extensive stakeholder input, requiring the reporting of people or companies with ownership interests in a patent or application, called the “attributable owners.” Attributable owner information will provide the public with more complete information about the competitive landscape; facilitate more efficient technology transfer by making patent ownership information more readily available; and reduce abusive patent litigation by helping the public better defend itself against meritless assertions. The USPTO is currently soliciting and accepting written comments from the public here, and hosting stakeholder engagement events to solicit additional valuable feedback.

2.      Enhancing Claim Clarity. The AIA reforms made important improvements to the patent examination process and overall patent quality, but stakeholders remained concerned about patents with overly broad claims in certain high-tech fields. In response, the USPTO has developed an extensive, multi-phased training program for all examiners and judges focused on evaluating functional claims and improving examination consistency and the clarity of the examination record.  The agency has also conducted extensive stakeholder outreach and engagement to solicit ideas and collect feedback, experiences, and insights on improving patent quality. In the coming weeks the USPTO will launch a pilot program aimed at encouraging the use of clearer language within patent claims through the use of glossaries in patent specifications.

3. Empowering Consumers and Main Street Retailers. Unsuspecting retailers, consumers, small businesses, and other users of products containing patented technology have increasingly found themselves targeted by letters alleging patent infringement and demanding money—even in instances where a small business is using an off-the-shelf product. To help level the playing field and ensure individuals and businesses know their rights and are aware of available resources before entering into costly litigation or settlements, the USPTO is launching today a robust online toolkit of information, available at www.uspto.gov or www.uspto.gov/patentlitigation. This new portal brings together for the first time in one place a wide-ranging, powerful set of patent-relevant tools and information, including answers to commonly asked questions about patent-demand letters and a catalog of third-party sites that users can access to find out, for example, whether the patent has ever been asserted in litigation.

4. Expanding Outreach and Focused Study. Since last June’s announcement, the USPTO has significantly increased its already extensive public outreach efforts to more actively engage key stakeholders in the high-tech community, trade and bar associations, business and university groups, and advocacy organizations, resulting in a wealth of valuable input on patent clarity, transparency, and high-tech patents. The USPTO has also expanded its Thomas Alva Edison Visiting Scholars Program and has now selected three new scholars who will engage in focused study of various aspects of our patent system, to provide insights on how to further reduce unnecessary litigation and improve the quality of issued patents.  This empirical research will help the Administration better understand our current patent system and better inform the development of new ideas and consensus around improvements to patent policies and laws.

5.      Strengthening Exclusion Order Enforcement. When patent-infringing products are banned from importation to the United States, U.S. Customs and Border Protection and the U.S. International Trade Commission are responsible for the application of exclusion orders and determining whether imported products fall within the scope of an order. Implementing these orders presents unique challenges, particularly when a technologically sophisticated product has been redesigned to avoid the order. To address this growing challenge, the U.S. Intellectual Property Enforcement Coordinator has launched a review of the processes and standards used during exclusion order enforcement activities and, in the coming months, will issue recommendations and guidance to executive agencies to improve the efficacy, transparency, and efficiency of exclusion order enforcement activities.

 
 

In addition, the Administration is today committing to sustain the Patents for Humanity Program, which aims to increase the accessibility of the patent system for innovators who are delivering game-changing technologies to address global humanitarian needs. Past award recipients have used their patent portfolios to decrease the price of HIV and malaria drugs, develop more nutritious food sources, bring solar energy to off-grid villages, combat toxic counterfeit drugs, and purify billions of liters of water using inexpensive chemical packets. 

 
 

New Executive Actions Announced Today

1.      Crowdsourcing Prior Art. To determine whether an invention is novel, examiners in the USPTO must find and apply information about the state-of-the-art in the relevant technology. However, documents reflecting this state of knowledge can sometimes be difficult to find and incorporate into the patent-examination process. Today, the USPTO is announcing that it is exploring a series of measures to make it easier for the public to provide information about relevant prior art in patent applications, including by refining its third-party submission program, exploring other ways for the public to submit prior art to the agency, and updating its guidance and training to empower examiners to more effectively use crowd-sourced prior art. This effort will focus on driving valuable contributions to the patent process and to patent quality, strengthening a process that is vital to innovation and economic growth. The USPTO will seek public input on these efforts, as the Administration calls on the public and expert stakeholders to partner with us to encourage the disclosure and sharing of prior art, particularly hard-to-find references.

2.      More Robust Technical Training and Expertise. Patent examiners must be skilled in determining whether a particular application should be granted based upon the state of the art. Building upon its existing “Patent Examiner Technical Training Program,” the USPTO will take steps to make it easier for technologists and engineers from industry and academia to provide relevant, technical training and expertise to patent examiners regarding the state of the art. The Administration is calling upon volunteers to assist in this training effort and ensure that training is systematic, robust, and covers all disciplines. In addition the USPTO is making permanent each of its four regional satellite offices, which will make it even easier for stakeholders to contribute  in-person or virtually from these locations nationwide.  

3.      Patent Pro Bono and Pro Se Assistance. Due to a lack of resources, independent inventors and small businesses sometimes struggle with how to file and prosecute a patent application to protect their invention. The USPTO will be  providing dedicated educational and practical resources to those who lack legal representation (i.e., pro se applicants) and will work with the AIA Pro Bono Advisory Council—and through a newly appointed full-time Pro Bono Coordinator—to expand the existing pro bono program established under the AIA to cover all 50 states. The Administration is calling on members of the patent bar to participate in the program.

 
 

Renewing the President’s State of the Union Call for Legislation to Combat Patent Trolling


The Administration stands ready to work with Congress on these issues, which are crucial to our economy, American jobs, and the Nation’s engine of innovation. Building upon the President’s State of the Union remarks, the Administration urges Congress to pass a bipartisan law designed to curtail abusive patent litigation and improve transparency in the patent system. We are encouraged by Congress’s strong, bipartisan attention to these issues and look forward to working with the Congress and stakeholders to bring this important bipartisan legislation to the President’s desk this year.

96 thoughts on “White House Fact Sheet on Patent Reform

  1. Gentlemen:
    Some decorum, please! A few thoughts:
    1. To me, this “Executive Action” comprises yet another example of White House propaganda. The meme is especially offensive. Who writes these things?
    2. The scariest part of this initiative is the collusion of the USPTO with the White House and its beta site link to uspto.gov. Have you looked at this site? It gives advice on what to do if one is sued or received a demand letter. Instead of immediately saying “hire a lawyer,” the site makes it sound like the small inventor can fight a patent suit pro se and proceeds to give a step-by-step explanation of defense strategies. Only well down the page does it mention that a lawyer is a good idea.
    How is this not practicing law without a license? Somebody at AIPLA or the ABA with some heft ought to get involved here.
    3. Re the bashing of Prof. Lemley: Do any of you actually know Mark? I practiced with him when he was an associate at a major IP firm and he’s not the devil incarnate. He surely doesn’t want to burn down the patent system, either, as he recently helped found the IP litigation firm Durie Tangri.
    4. Finally, re overly broad means-plus-function claims, you folks in high tech should read a few biotech/pharma cases once in awhile. Our side of the bar has been able to settle much of the controversy in a logical fashion, with a few notable outliers.
    Stanford Grad

    1. I’ve known Mark twenty years, and think the world of the guy. He is not always right, but he is asking the important questions.

      As a general matter, I think he sees abuses in the patent system that need remedies. I am glad he is addressing the issue of functional claiming and indefiniteness in patents. This is long been a bugaboo with me, and I think it is the single most important issue in patent law today as opposed to eligible subject matter, which comes second.

    2. Give me a break. Lemley has been blasting off ridiculous papers that have degraded and shamed all of academia. He does not cite cases and papers that are directly contrary to his positions. His paper on functional claiming is ridiculous.

      So, how nice that you like Mark. But, let’s look at what he is now and the things he has done.

    3. Alex,

      The bashing of Prof. Lemley should be understood, and is to be taken on the public actions of the person – which are totally fair game. Think of the difference between a private person and one who voluntarily injects himself into a public debate.

      Whether or not Mark is a decent chap and a warm human being is neither germane nor at issue. The bashing is at the professional level (or if you prefer, the bashing is suitably addressing a perceived lack of professionalism – and may be in like kind). That it sounds in “personal” is simply a characteristic of the medium.

      I would point out that your own post sounds to this nature. Your points 1) and 2) raise personal questions as to who was the individual that went ahead and performed the offensive items you note.

      Mark may not be the devil incarnate. Prof. Lemley – as a professor of law and an active practitioner – should be held accountable for his seeming violations of ethics and professionalism in the wanton pursuit of an anti-software patent agenda. In that regard, he very well may be the devil incarnate.

      Finally, you need to realize that what is good for one art unit may simply not apply to another. Your offer of “here use my reading glasses, they work for me” is simply off-point in a comparison of biotech/pharma to software. A major part of the problem on these boards is the lack of understanding this difference and a virulent “it-works-for-me” attitude that is not only misplaced, but is simply mistaken.

      1. And, I would point out Lemley is a professor at Stanford that has the ability to publish his papers in any journal he wants without peer review and tours the country pushing his anti-software patent views. He should be held accountable for his behavior.

        You in fact Alex are a pretty offensive person—highly so. You say gee I like this guy and he seemed like a good guy when I work with him 20 years ago so you guys must be “bashing” him and not making rational arguments regarding Lemley. Grow up boy. That type of argument is offensive and doesn’t belong in an adult conversation.

      2. Prof. Lemley – as a professor of law and an active practitioner – should be held accountable for his seeming violations of ethics and professionalism in the wanton pursuit of an anti-software patent agenda. In that regard, he very well may be the devil incarnate.

        LOLOLOLOLOL!

        You clowns never cease to amuse. Please make some effort to get out into the wider world and recite this bizarre script about the “devil incarnate” Mark Lemley and see how ordinary people react.

        Patents aren’t some magical mystical source of greatness. Their entitlements handed out by the government. There is plenty of room for improvement and none of those improvements (whether you agree with them or not) is going to destroy the fabric of American life as we know it. The “devil incarnate”? Good lord, you guys are pathetic.

        How’s the impeachment of those judges going, by the way? Did Eric Guttag call his Congressman yet?

          1. NWPA,

            If you want to see the fingerprints of corruption, you should email Hal Wegner and get on his email blog. The closed door machinations and the fingerprints of certain special interests having inserted specific items into the meta-tags of new Beta government websites is most interesting.

            Rather reminds me of a pre-Disqus era ability of a certain individual (and only that individual) that was able to actually link to a specific post within a thread, something that required access to the website…)

            But then again, what can we expect but corruption from one who hides behind that belief that intellectual honesty is not required because this is not a court and is merely a blog?

        1. You must be a paid blogger MM because your comments are only consistent with an agenda to use policy arguments to change patent law to make all information processing ineligible.

        2. >>LOLOLOLOLOL!

          MM do you really think that peopole can’t see right through you? Your arguments are so bizarre that in a rational world they would not even be addressed. You would be told to sit quietly and listen to the adults speak.

          You consistently do not address the substantive arguments.

        3. Their entitlements handed out by the government

          You forgot one important aspect Malcolm: Quid Pro Quo.

          Seems you selectively forget these types of things often. Then again, you have professed belief that intellectual honesty is not required in your posts because this is merely a blog and not a court.

          And to your spinning strawman of “there’s room for improvement,” no one is saying otherwise. But burning down the house for a piece of toast is not an improvement.

        4. Malcolm, your attempt at spin is transparent with “some effort to get out into the wider world and recite…and see how ordinary people react.

          Any such attempt in the wider world that maintains the understanding of the context of the comments would doubtless also carry the understanding of why Prof. Lemley’s actions are deplorable.

          But you don’t really want that context carried along do you? You want to appeal “to the masses,” “to the peoples (a la Red China),” don’t you? You want the propaganda machine spinning to the lemmings.

          That finger of yours pointing with the ad hominem of “you clowns” has four fingers pointing back at you. You are just too think to see that your petty propaganda here has run its course and is simply not effective. That tends to happen when you make comments like “intellectual honesty is not required on a blog because this is not a court.”

          Oh yes, certain comments are truly pathetic. Just not the ones you think.

      3. what is good for one art unit may simply not apply to another

        What are the general rules that are “good” for chemical and biotech claims that “simply do not apply” to new computing devices, and why is that the case?

        1. Malcolm stumbles with “What are the general rules that are “good” for chemical and biotech claims that “simply do not apply” to new computing devices, and why is that the case?

          Well, for one, possession of the claimed item at the time of filing.

          Can you tell me how many things fail FDA testing – that do not achieve the utility of the claimed item?

          And yet, property rights inure before any such utility is possessed on a routine basis in the pharma art.

  2. What is so astonishing about this is that a president that is completely ignorant of science/technology and patent law would put out an order stating that functional claiming is a problem.

    This is the same pattern we saw with Clinton. The intellectual liberals told him that we didn’t need regulation for the banks and away goes Glass Steagal and wipes out 30 years of economic progress. The intellectual liberals were and are clearly in the pockets of the banks. Almost to a person they have been paid off a minimum of $50 million each.

    Here we have Lemley. A person that clearly would like to burn the patent system down. He is clearly not intellectual honest. And, yet we have him whispering in the ear of the president of the U.S.A. and pulling his strings. Just like they did with Clinton.

    Just bizarre that we are to throw away our economy and government so easily. And, that people with such obviously low moral character could influence and control our entire country.

    Break out the marsh mellows.

    1. Yup – note that the same ‘liberals’ and politik-professors were caught with their hands in the cookie jar of agency capture.

      Those that do not learn from history are bound to repeat it.

      1. What is so eerie about the parallels too is that in both cases the president was completely and totally unable to understand the issues. And, in both cases there were framework systems that forced large corporations to behave. And, in both cases they are frameworks that unless you work within the framework for years, you don’t really understand it. And, the only way you are going to really know how bad it is without the framework is by destroying it.

        I think it is an insult to every patent attorney that Obama just appointed three judges and not one of them had been practicing patent attorney. (one was a junior associate for a couple of years). And, only one has any science training. Two appear to have been largely disinterested in patents their whole lives. And two appear to have been disinterested in science their whole lives. Now, I am a fairly smart fellow. I score in the 99 percentile on standardized tests in all categories. It has taken me years and years to understand science, innovation, and patent law. I still learn new things everyday. And, I have an education in science. I have been an inventor. I have worked with large corporations. I have worked in start-ups.

        Shameful that we are turning the keys over to the people that Obama has turned the keys over to. I guess that is what we get for electing a president without any real work experience.

        1. Now, I am a fairly smart fellow. I score in the 99 percentile on standardized tests in all categories. It has taken me years and years to understand science, innovation, and patent law. I still learn new things everyday. And, I have an education in science. I have been an inventor. I have worked with large corporations. I have worked in start-ups.

          LOL. Are you nominating yourself for the Federal Circuit?

            1. NWPA,

              6 has been repeatedly appraised of this. His continued posts in this manner are a wanton and reckless disregard of the truth.

              I would note that the editorial ‘controls’ that allow for such wanton and reckless disregard (while some other ‘objective’ standard of editing posts is in play) may have some serious ramifications.

              I would note that since I am such a nice guy, and would dislike seeing 6’s boorish posting behavior cause any discomfort if, for example, the person that 6 thinks to be you thought that 6 was libeling him.

            2. anon,

              Well. I am bothered by this repeatedly claiming that I am someone in real life. Whether or not 6 is committing libel or not I don’t know.

              But, as far as this blog goes, Dennis knows I am not that person. I think Dennis should not let 6 repeatedly claim I am that person. What I don’t like is that it puts me in the middle of 6’s dislike for this person. If this person ever did file a libel suit against 6, I would likely become part of it. So, I am risking having to deal with 6’s bizarre dislike for this person.

              I also don’t like that anything this person does is then attributed to my anonymous handle on the blog boards which goes beyond this board.

              At least for that reason Dennis should not permit 6 to repeatedly tell people I am that person. I have asked Dennis repeatedly to stop 6 from doing this. 6 claiming I am this person and telling everyone is really going to far.

        2. I am a fairly smart fellow. I score in the 99 percentile on standardized tests in all categories. It has taken me years and years to understand science, innovation, and patent law.

          Maybe you should learn to lay off the booze before you comment.

          1. Please tell us more about the paper and pencil test MM and why the Church Turing Thesis is nonsense. Or tell us more why all computer programs are capturing natural law.

            You are normally good for a few belly laughs.

    2. Mellows?

      Also, aren’t all the histrionics just a bit much? (Even for someone who scores in the 99 percentile in all categories?)

      1. MellowMarcher: you think I am overreacting? And, yet we had 2008 didn’t we? Read about 2008. Read about what some people were saying prior to 2008. There were many people saying that 2008 would happen and that the deregulation was nothing but a way for bankers to line their pockets at tax payers expense. In fact, I know some of those people that hold high positions in government and banks. I heard them say it many years before 2008.

        Here we have the same thing happening. Big corp doesn’t want patents anymore and we have these giant propaganda machines out to burn it down. Lemley is certainly the leader of that pack. He appears immune from attack. Stanford doesn’t seem to care what he does nor do the state bars. He is burning our system down and making lots of money doing it.

        Sounds a lot like Glass Steagal repeal to me.

        1. LOL – how many liberal professors were caught with their hands in the cookie jar with the whole Glass Steagal agency capture historical debacle…? How many from the ivy league? How many of the same types of people who gave so lopsidedly to Obama?

          History not learned repeats.

      2. Marshmallow (yeah, yeah, I type these blog posts in quickly and they don’t allow me to edit them) you sound like a typical twit to me. You want to pick on the superficial to try and dismiss substantive arguments and then attack me rather than address my arguments.

        1. I haven’t seen much in the way of substantive argument. A lot of opinion expressed in near-hysterical fashion….

          …pretty much sums it up.

          (P.S. sorry for the delay, been workin’, etc.)

  3. An inventor (through an attorney or otherwise) files and receives a patent. He sells the patent to another who records. That another then sues for infringement, proving a chain of title to himself.

    During discovery, it appears the inventor sold the invention and his patent to a third party who did not record.

    The infringer moves to dismiss asserting the failure to record the prior sale resulted in the abandonment of the patent.

    You represent the new owner who is a BFP under the statute.

    Discuss your defense.

  4. This is about the above writing, “Making Patents Clear — The USPTO has developed and implemented a training program to help its examiners rigorously examine so-called “functional claims” to ensure claims are clear and can be consistently enforced. In the coming weeks, the USPTO will launch a pilot program that uses glossaries in patent specifications to promote patent clarity.”

    Does this refer to ordinary functional elements, also called, functional limitations? Or does it refer to means+function claims. If it refers to ordinary functional elements, the main problem is that examiners continue to insist that functional elements, per se, do not have patentable weight. Regarding the suggestion for a “glossary,” this creates another variable, namely, the question whether the glossary provides an “explicit definition,” a “non-limiting definition,” or an “optional definition.” Another problem with glossaries is that in fields such as immunology, which is one of the least predictable of the unpredictable arts, a glossary-type definition might not be available at the time of filing.

    1. Tom, there is massive confusion about functional claims. Miyazaki is a case in point, misconstruing the holding in Halliburton to apply all functional limitations regardless that they are describing old elements, or where a cooperation between two elements is being described.

      Halliburton applied only to claims functional at the point of novelty — these are overbroad.

      Functional elsewhere — OK. In programmed computer claims, the functions really describe method.

      Still the claims tend to be unclear when one described absolutely every structural limitation in terms of what it does as opposed to what it is.

      My suggestion, if what is being claimed is unclear, allow one to overcome the rejection either by amendment or by using either reference numerals or paragraph numbers.

  5. Anything from this administration purported to be fact needs to be prefaced with a disclaimer that it is a “fact” only in the warped reality of Obama.

      1. LOL – the fact that Malcolm attempts to call anybody a hypocrite causes a full galaxy of irony factories to go KA-BLOOEY!

        How big is your sockpuppet collection now, Malcolm (Mr. I don’t use sockpuppets and they are the worst thing EVAH)?

    1. What do you get with propaganda re-treads from the do-nothing-but-label-it-Action! president?

      “FACT-sheet”

      LOL – more like “FACT-sht”

  6. There is a lot of cognitive dissonance in the President’s proposals. Nowadays it’s called “spin.”

    What about the fact that a Patent is the deal that society makes with an inventor? If your invention promotes the progress of science and you disclose your invention in sufficient detail so that a POSITA can build it, society will give you a monopoly for a limited period of time. That’s what the U.S. Constitution says Patents are for. The purpose seems to be so you can make some money from your invention. It’s called incentive. If you have to sue people who refuse to pay you for using your patent then so be it. It shouldn’t matter if you are a manufacturer or not. Authors can enforce their rights under the copyright laws without also being publishers.

    But about combating Patent Trolls.

    Presumably he means, “Loser Pays.”

    I think it should really have some teeth.

    After President Obama relocates the current residents of Gitmo he should use the facility to incarcerate the losers of patent infringement cases. And their attorneys.

    Examiner 6 will be the Warden.

    1. you really do deserve the worst of everything

      …and that meets some standard of discussion, um, somewhere…, um, I think…

    2. Why don’t we legislate against Trolls only, but define a troll as anybody who asserts a patent that is not used in the marking of a product by himself or a licensee.

      1. You might want to content with the (still controlling) law of the Supreme Court in 1908 and the fact that the US system does not have a ‘use’ requirement, Ned.

        Further, the very nature of the US patent system, in allowing for “any improvement thereof” means that an inventor may not have any rights whatsoever to use or make the underlying invention.

        Your idea is a FAIL right from the start.

      2. That seems like an unreasonable definition for a troll. Take the example of the patentee with clearly valid patent who is working hard to gather investment capital to get his product to market. And someone else more established and with production equipment they can immediately repurpose to make the patented product copies his invention and gets it to market 18 months ahead of him.

        Should the patentee have to wait until he gets his product to market, 18 months later, else face being branded a troll and face whatever consequences we eventually decide should be meted out to troll?

    3. “After President Obama relocates the current residents of Gitmo he should use the facility to incarcerate the losers of patent infringement cases. And their attorneys.”

      I will admit you do need to do something with it.

      “Examiner 6 will be the Warden.”

      This is going to be A MA Z I N G! I like your imagination sir!

      “If your invention promotes the progress of science and you disclose your invention in sufficient detail so that a POSITA can build it, society will give you a monopoly for a limited period of time.”

      First we’re looking for progress of the useful arts bro, not scientry. And if all the “inventions” being submitted actually did that then you wouldn’t be seeing the president get all uppity. As it is in addition to the inventions submitted that do promote the progress of the useful arts (rather than scientry) we’re granting patents on all manner of novel unobvious piece of garbage prose about a computer or new unobvious business practice. If any such disclosure of such an “invention” has promoted the progress of of the useful arts (note not of scientry) one iota the phenomena has never been reported. I’ve even looked for it. I’m several years into looking and haven’t found one instance of such having occurred yet.

      I have an application I saw the other day that looked like it had promoted the useful arts and it involved a computer implementation, but the promotion of the useful arts had nothing to do with the computer implementation. All the computer implementation was seemed to be a tag on of: oh, and you could perform that method using a computer to control the apparatus doing the method.

      1. 6 lecturing on Useful Arts – but completely missing on the inclusion of Business Methods…

        More character suicide from the witless one.

  7. No “declaratory judgement standards” reforms? Clueless.

    We simply need both parties in any dispute to be able to communicate any assertions and/or defenses without triggering a lawsuit. Currently, it’s file a complaint first and then talk.

    The White House’s plan won’t help.

    1. We simply need both parties in any dispute to be able to communicate any assertions and/or defenses without triggering a lawsuit.

      There is nothing preventing people from discussing patent licenses. Talking about patent licenses does not automatically trigger a lawsuit. People discuss patent licenses all the time, every day, and the overwhelming majority of them don’t file lawsuits.

      Currently, it’s file a complaint first and then talk.

      “The defendant made me sue them with my junk patent!”

      Right. We’ve heard this story before. It’s a bunch of b.s. Plaintiffs sue people first because they want to get massive amounts of money for their junky patents and they are afraid their chances of doing so will be reduced if they get DJ’d outside of their favorite venues.

      Why not just face the music: you are being downsized because you need to be downsized. You can kick and cry and scream about it all you want. You can come up with “clever” legal strategies to avoid the regulations but the regulations are going to keep coming. Why is that the case? Because you got drunk and egged the wrong house. It’s really not that complicated.

      Whiny, rich self-important crybabies watching some of their toys get taken away. It’s pretty sad.

      1. Malcolm, easily the site’s biggest whiny self-important crybaby (who is allegedly ‘rich’) goes KA-BLOOEY again with “Whiny, rich self-important crybabies…

      2. MM –

        A client comes to you with a patent they want to offer as a license to Big Company. Do you describe the risks associated with sending a communication to a third party about licensing a patent?

        Yes, recipients don’t usually file a DJ action, but its a risk that has expanded as a result of changes in the standards relating to DJ actions.

        We went from one extreme (no DJ jur available despite abusive patent asssertions/threats) to another extreme (limited safe harbor for contacting someone about your patent).

        I think simple reforms would help.

        Looking forward to your feedback.

        1. A client comes to you with a patent they want to offer as a license to Big Company. Do you describe the risks associated with sending a communication to a third party about licensing a patent?

          Of course.

          But it all comes down to the patent. If it’s a strong patent, then the risks are relatively minimal. If it’s some computer-implemented functionally claimed junk, then be prepared to have your junk flushed down the toilet where it belongs.

          Or you can just find some bottom-feeder to help you “monetize” your junk. It’s your life, after all. Some people seem to really get off on doing that sort of thing.

  8. >the use of glossaries in patent specification

    Oh boy, write a glossary that just adds expense and becomes another layer of problems. It seems that people in DC don’t get that adding layers to things doesn’t tend to make them better just more complicated. Better be sure to put in the outreach program a large section on how to read a glossary and how terms shouldn’t be imported in the specification, but now with glossary they might be more imported but we can’t be sure until the SCOTUS rules on it which will certainly be 3 years and may not be for another 10 years.

    Oh boy…

      1. Doesn’t seem like Lemley should be claiming credit for ideas after all according to Lemley an idea has no structure, so what exactly is he claiming credit for?

    1. Yeah, I wonder which words will have to be in the glossary. Do you think they will let us slide on “a” and “the”? Or will we have to do 50 words on each of those.

      Will they extend the page limits (where excess page fees kick in), or will we have to skimp elsewhere in the spec? That should clarify things.

  9. Outrageous B.S. :

    “Promoting Transparency — The United States Patent and Trademark Office (USPTO) recently published a draft rule to ensure patent owners accurately record and regularly update ownership information when they are involved in proceedings before the USPTO. This effort is aimed at improving the quality of patents issued, enhancing competition, facilitating technology transfer, and making it harder to hide abusive litigation tactics behind shell companies. After receiving input from the public, the USPTO aims to issue a final rule in the coming months.”

    How exactly does public disclosure of ownership improve the “quality” of patents issued?

    1. That’s the thing Les. You know, the PTO does have the power to change the fees to according to the PTO promote the overall policy goal of a functioning patent system. So, I think the PTO is going outside their rule making authority for their current rules of ownership they are trying to get through.

      But, do it in fees. If you tell the real owner, then free. If you don’t, $100,000,000 fee. That is probably within their rule making authority.

      1. Let’s not forget one very important caveat to that whole fee-setting authority power: the fees must balance in the aggregate.

        Must.
        Balance.

        Go ahead and set ridiculous fees.

        Then, let’s hire some of the accountants out there (there must be a few from the gold old Enron days…)

  10. Nautilus v. Biosig, on appeal to the Supreme Court, involves an indefinite and functional claim. The president’s initiative on functional claiming will not go unnoticed.

      1. Les, not at all. The problem of indefiniteness and functionality are not mutually exclusive. Functionality typically describes the inventive structure or compositions not in terms of what they are, but in terms of what they do.

        I find it amazing that almost every apparatus claim I see now is written functionally — this or that that does something or is adapted to do something. It is almost as if we have totally abandoned conventional claim structures in favor of functional claims — across the board.

        It is strange, but the decision in Valmont — clamping down on MPF scope, caused this revolution. Rader wrote Valmont.

        1. It should not amaze you. computing hardware is well known. There is very little point in cluttering a claim with a markush groups listing processor, microprocessor, microcontroller, digital signal processor ASIC, and what ever other variations the kids are kicking around these days, coupled to a memory, flash, hard drive RAM, ROM, EPROM, EEPROM or what ever new flavor Intel and Atmel are producing these days. The invention is in the method the device is programmed to perform. The structural difference between one new device and another are mostly in the arrangement of 1’s and zeros. That’s very difficult to describe in the confines of a claim.

          1. Les, indeed, so why are we even claiming computer hardware in our method claims. The hardware is totally conventional and totally irrelevant.

            Let me tell you why: Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969), the pre-Benson case that actually held that a program computer was a new machine. Somehow practitioners continue to believe that claiming a programmed computer that recites a new method are eligible when a claim to the method itself is not. Consider Bilski. A lot of people believe that the Supreme Court would have found those claims eligible had they been limited to being performed on a digital computer.

            I think the Supreme Court in the Alice v. CLS Bank case must address this issue head-on. I would find it remarkable that they would invalidate as ineligible method claims and then hold that the same claims claimed as an apparatus were eligible. Such would be the height of hypocrisy. The Supreme Court is not about elevating form over substance.

            Thus in my view, the Supreme Court should clearly state that the form of the claim is irrelevant just as the Federal Circuit held in the lower court. But they should go further and state that programmed computer claims and article manufactured claims that claim computer programs are method claims so that their claim form is non statutory.

            1. People claim machines for lots of reasons. Not the least of which is that they make and sell machines as do their competitors.

              For the umpteeth time, 35 USC 101 says machines are patentable as are IMPROVEMENTS thereof. Even if you don’t consider old hardware with new software to be a new machine, you cannot (with a straight face anyway) argue that new software is not an improvement to an old machine.

            2. For the umpteeth time, 35 USC 101 says machines are patentable as are IMPROVEMENTS thereof.

              Nobody is suggesting otherwise, provided the improved machines are properly claimed so as to be structurally distinct from the prior art.

              But please let everyone know: if I adjust the adjustable seats in my car to improve the car for my passengers, did I just create a new car?

              What if specifically recite the types of improvements conferred by the adjustments, i.e., “wherein said front seat is configured to fit a person born in a town that ends with Y, who has a first name that begins with M”? That’s not in the prior art. So can I haz my patent now?

              That’s exactly how it works in the softie woftie arts. Non-structural functionally claimed b.s. wins the day, every week at the PTO, by the reams.

              Are you guys just about ready to grow up or do you need more beatings? Cuz more beatings are coming.

            3. so as to be structurally distinct from the prior art.

              LOL – “configured to” is structural language. At least that is what is voluntarily admitted to in the archives by a certain person.

              (and of course we should remind that person that claims need not be ENTIRELY in structural terms, as he tends to strawman a quite a bit and move discussions about elements into being entire claims, because, well, because “intellectual honesty is not required on blogs” or so he says)

            4. Malcolm, please put my big box of elementary particles and copious amounts of all the elements into that “Patent Denied” car of yours with the moving seats and tell all the chem and bio-chem people to not bother.

            5. Malcolm obfuscates again with “Nobody is suggesting otherwise, provided the improved machines are properly claimed so as to be structurally distinct from the prior art.

              LOL – quite the contrary, you are suggesting otherwise, since you refuse to discuss how an ‘oldbox’ with no structural changes can ‘magically’ do something that it simply could not do prior to a change that accompanies a configured to with a new machine component, a manufacture in its own right, called software.

              See Alappat. See also Nazomi**. See also the controlling law pertaining to the exceptions to the printed matter doctrine.

              ** link to patentlyo.com

              Intellectual honesty – try it.

    1. Man that Lemley twit is one trouble maker. He and R. Stern (Benson babble) will go down in history as the most destructive humans every to have touched patents.

    1. I can’t believe you bozos have the President spouting off your nonsense and appointing wretches to the Fed. Cir.

      Tarantula is just like what the U.S.S.R. would do. The USSR would get uneducated outsiders to put oppress cities because educated people or natives would not commit the needed atrocities. Tarantula is a good example of this as he is an outsider that comes into this completely ignorant of patent law and science with –no doubt–a promise to the Pres to clean things up. So, basically a thug–a Harvard liberal arts educated thug.

        1. Obviously today’s Harvard is not your father’s Harvard.

          BTW, did you catch the ivy league hands-in-the-cookie jar with the agency capture in the classic banking meltdown? Did you know that 96% of all ivy league college professor presidential donations went to Obama?

        2. Giles S. Rich practiced patent law for many years and had the respect of the entire patent bar.

          Tarantula never had much of an interest in patents or science.

          Paid off thug.

      1. I have been participating in Ask Patents, a web site attempting to facilitate crowd sourcing of prior art since Dennis mentioned it in this blog about 16 months ago. It is tied in to google patents and was launched at the suggestion of former director Kappos to try to connect the large software developer community at Stack Exchange to the AIA third-party submission process.

        Unfortunately, the participants are often not very knowledgable about the patent system in general.

        1. Unfortunately, the participants are often not very knowledgable about the patent system in general.

          What do you expect when the lemmings herd around the QQ of those like Malcolm, and his WHATEVER (mis)treatment of law in the sake of policy-über-alles table pounding? LOL – just look at the cl0wn Marty, proudly wearing the Ned-provided jester costume.

          When you have the law, pound the law.
          When you have the facts, pound the facts.
          When you have neither, pound the table.

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