Drew Hirshfeld has now taken-on the role as Commissioner of Patents at the USPTO after being appointed by Secretary of Commerce Penny Pritzker. Hirshfeld is filling the office left by Peggy Focarino’s recent retirement. Earlier this year I suggested that Hirshfeld was a likely appointee.
Commissioner Hirshfeld has been with the USPTO for more than 20-years. He originally joined as an examiner but moved up through the ranks by proving himself to be smart, reliable, and reasonable. Hirshfeld was David Kappos Chief of Staff and has been the Deputy Commissioner for Patent Examination Policy under Director Lee. Prior to that, he served as a group director for TC2100.
Congratulations on an excellent appointment.
Has this smart reasonable Hirshfeld character ever proposed eliminating the requirement for technical backgrounds for Examiners and/or admission to the patent bar?
As the broken system currently operates, the requirement seems to hamstring the PTO. Philosophers, mathematicians, carnival barkers, baseball players, grocery store stockboys, insurance salesman, realtors, bank tellers, post office workers, game show hosts, and card sharks would seem to be the most desired backgrounds for todays “high tech” “innovations.”
Surely Hirshfeld is on top of this. Right?
For great laughs, let’s employ one-way editing rules and wonder Gee, why do people think that Malcolm has an inside track on this blog?
For great laughs, check out this morning’s oral arguments in Retirement Capital Access v. US Bancorp. link to cafc.uscourts.gov
Retirement Cap owns some of the very worst patents ever granted and, boy, how they love them! They’re going to take their ridiculous grievances all the way to the Supreme Court … and waste everybody’s time in the process.
Write up about the PTAB decision here: link to law360.com
Patentee: “There’s no risk of ‘pre-emption’ whatsoever by our junky claims!”
Judges: “These claims are abstract junk. Choosing a field of use for your abstract idea doesn’t address the pre-emption problem.”
Patentee: “Narrowing the invention to retirement funds might not be the greatest limitation but some of these other limitations are totally awesome!”
Judges: “Like the repayment provision? Seriously?”
Patentee: “And the direct deposit and the unencumbered nature of the funds!”
Judges: [speechless]
Patentee: “Plus the machine or transformation test is totally satisfied according to the Federal Circuit’s precedent.”
Judges: “Unless that ‘precedent’ was completely obliterated by the Supreme Court, which is what happened as we all know.”
Patentee: “You haven’t heard the end of this!”
Judges: “Right. Please stop reminding us because listening to you today was already super depressing.”
The attorney for Bancorp does a great job of highlighting the problem:
“The distinction between ‘future retirement payments’ and ‘social security payments’ … is not the type of distinction that is the basis of patent eligibility. If anything, that type of distinction and that type of subject matter goes to the very heart of what Alice and Bilski and other cases have said are the types of ‘inventions’, if you will, that don’t need patent protection. They got to economic relationships, contractual relationships, exactly what Alice and Bilski dealt with …”
The low point of the oral argument is the silly headscratchin’ around the issue — again — of where to draw the line so that some junky computer-implemented “biz method” claims are eligible for patenting.
It literally takes Judge (Lourie or Bryson?) ten minutes to step up to the plate (around the 30 minute mark) and state the obvious fact that maybe — just maybe — someone needs to define “business method” before spending a lot of time discussing the eligibility of such methods. Gee … ya think? And the PTO attorney acknowledges that assuming a broad definition of “business method”, the eligibility will “depend on the claim.” Koombaya! Time wasted. Nothing achieved.
We know that the PTO’s hands are tied because the career types there are “following orders” … but third parties and defendants take note: be prepared to describe what an eligible business method looks like. One very reasonable answer is that an eligible “business method” includes a new machine described in objective structural terms distinguishing it from prior art machines or the claim includes steps that result in new, unexpected transformations of matter (as opposed to transformations of abstractions like “funds”). There might be some eligible biz methods out there that don’t meet those criteria but those are the methods that don’t need patent protection and which have already done incredibly damage to the credibility of the patent system.
MM, it wasn’t that long ago that the PTO removed its citation to Hotel Securtiy – a move that sparked State Street Bank. Since the latter case is overruled, nay, excoriated, perhaps it is high time to restore Hotel Security. It is very consistent with Alice.
From Hotel Security:
“It is manifest that the subject-matter of the claims is not a machine, manufacture or composition of matter. If within the language of the statute at all, it must be as a “new and useful art.” One of the definitions given by Webster of the word “art” is as follows: “The employment of means to accomplish some desired end; the adaptation of things in the natural world to the uses of life; the application of knowledge or power to practical purposes.” In the sense of the patent law, an art is not a mere abstraction. A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of- the term, an art. Advice is not patentable. As this court said in Fowler v. City of New York, 121 Fed. 747, 58 C. C. A. 113:
“No mere abstraction, no idea, however brilliant, can be the subject of a
patent irrespective of the means designed to give it effect.”
It cannot be maintained that the physical means described by Hicks, -the sheet and the slips,-apart from the manner of their use, present any new and useful feature. A blank sheet of paper ruled vertically and numbered at the top cannot be the subject of a patent, and, if used in carrying out a method, it can impart no more novelty thereto, than the pen and ink which are also used. In other words, if the “art” described in the specification b~ old, the claims cannot be upheld because of novelty in the appliances used in carrying it out,-for the reason that there is no novelty.
The patent seems to us to cover simply a system of bookkeeping made applicable to the conditions existing in hotels and restaurants. The fundamental principle of the system is as old as the art of ·bookkeeping,
i. e., charging the goods of the employer to the agent who takes them. Suppose the case of a firm selling goods by agents direct to the public. Before starting out the agent goes to each department and secures the goods needed by him, let us say, 5 dozen pairs of gloves, 3 dozen shirts, 100 neckties, 2 dozen pairs of shoes, etc. As a matter of course, the bookkeeper charges these items to the agent on the books of the firm and gives him a bill, or list, with the items and prices entered thereon. The agent knows from an examination of the list exactly what price he is to charge to the customer. When he makes remittances to the firm with statements showing the goods sold by him and the names of the buyers, the firm knows by an examination of its books what goods he has sold. how his sales compare with those of other agents and what amount. if any, he still owes. This, in essentials, is the scheme of the patent and it is as old as the laws of trade.
MM, did you have any difficulty downloading the audio file? I tried using both Chrome and IE. The links do not work — at least not to download an audio file.
No difficulty with Firefox. I’ve noticed that it sometimes takes a little while (2o-30 secs?) for the download to complete, other times it’s just a few seconds.
Thanks, MM. This is a new problem for me. None of my browsers works, including Firefox.
I’ll bump it up to IT.
The irony is pretty damm funny.
Make sure you bring IT a pizza.
My guess is that he was doing what all the “career PTO” folks were doing: following orders and hoping to get promoted.
Which is what he did when Kappos was in charge and turning the junk spigot up to 11. Wheee!
Nobody could have predicted how that would turn out. But, hey, Hirshfeld just got a raise. And he’s “smart” and “reasonable”. Or so we’ve just been told.
LOL
What was that excuse the Nazi’s gave at their trials? We were only following orders?
Methinks there were many so-called order followers who tried to curry favor by exceeding in zealousness. Perhaps Mr. H knew what Kappos was doing was wrong, but instead of trying to correct his captain, or to minimize the damage to the public, he too sought to curry favor and is now being rewarded.
Hush Child, one must not point out that the Emperor is flapping in the breeze.
America’s leading source of something….
Commissioner Hirshfeld has been with the USPTO for more than 20-years. He originally joined as an examiner but moved up through the ranks by proving himself to be smart, reliable, and reasonable.
Can anyone point to an example of something intelligent Hirshfeld said about subject matter ineligibity in the run-up to Prometheus v. Mayo?
You know: something that would indicate that he could apply reason to a simple logical problem and was in possession of a bit of forsight?
If some historian or law professor out there can find such a quote, I’d love to see it.
He once said that all this 101 stuff is judicial activism and that it has greatly harmed the US patent system. He wondered where “abstract” was in the Constitution.
Or was that me…
MM, it appears that Mr. H is managing the 101 guidelines — which seem to be an overt attempt to limit the Supreme Court and subsequent Federal Circuit cases to their facts.
For one, I do not understand the “markedly different” characteristics aspects of product of nature. If was is claimed IS a product of nature, doesn’t that answer the question?
Re: Abstract: why not attempt to develop a test? That would be helpful for all.
I think all real patent attorneys know the answer to that question—because the case law is inconsistent, unconstitutional, and — you know the answer Ned–is not a rule of law but an invitation for a judge to do whatever they please based on their private views. Yes I am speaking of Alice.
“…which seem to be an overt attempt to limit the Supreme Court and subsequent Federal Circuit cases to their facts.”
Do you have a problem with that?
“Re: Abstract: why not attempt to develop a test? That would be helpful for all.”
Maybe because the Supreme Court specifically declined to develop a test? Why should the Patent Office develop a test when the Supreme Court won’t? What would happen if the PTO developed a test, and the Supreme Court decided years later, “No, that’s not the test.”?
That was a much better answer than mine Boats R Us.
Boat, I don’t think the Supreme Court felt it could lay down a comprehensive test. That does not mean that the PTO, which has front-line responsibility here, could not make the attempt.
The central complaint by most is that there is no test. Stop complaining please, and propose one, PTO that we might all comment.
Recall, the PTO punted on “technological” in CBM. Who was responsible for that? Hirshfeld? Is the guy a punter?
Beyond funny – Ned wants the Executive Branch to usurp the Legislative.
Kind of wrecks your view that the Executive goes too far when it takes over for the Judicial, Ned.
Or are you still not getting the fact that ALL three branches are below the constitution?
Tell me again about the oath you swore when you first became an attorney.
You need to check yourself friend.
…which seem to be an overt attempt to limit the Supreme Court and subsequent Federal Circuit cases to their facts.”
Do you have a problem with that?
Not if ridiculous self-serving tripe like DDR Holdings is also limited to its facts. But that’s not how the PTO rolls. Cases that tank junk patents are deemed to be “confusing” and “limited to their facts” but cases that make it easier to defend junky information-processing patents are treated like sweeping affirmations of the PTO’s junk-spewing agenda.
Why should the Patent Office develop a test when the Supreme Court won’t?
Maybe because the PTO is responsible for evaluating millions of claims every year and the Supreme Court looks at maybe a dozen.
Just a thought.
Or maybe the FDA should behave like the PTO, pretend that it’s all soooooooo confusing, and wait for the Supreme Court to fill in all the details of what does and does not qualify as tainted meat. In the meantime, the FDA can just sit on its hands, reject only the very worst of the worst and “see how it all shakes out.” Because meat is big business, you know. GOD BLESS AMERICA
You do understand how administrative agencies work, right Malcolm? You do recognize that the charter of an agency dictates the level of authority, right? You do remember Tafas, right?
(That was rhetorical)
You want to make up a test for a made up requirement?
Here’s the only test that should be applied for 101.
Is it a process? Or
Is it a machine? Or
Is it a manufacture? Or
Is it a composition of matter?
If you answered yes to any of these in regard to the alleged invention, then the alleged invention passes the hurdle under 101. Proceed to the test for newness (102) and non-obviousness (103) ….
Les,
Should’ve, Would’ve, Could’ve.
Start Benson, why were those claims “abstract?”
Next, Flook.
Bilski.
Alice.
Rubber-Tip Pencil.
Morse.
Ned decided to list the cases on the Wall of Shame.
Ned, please try to be intellectually honest. Those cases are the worst dredge that judges spew out. Disgusting stuff.
Please re-read the 1952 Patent Act and attempt to learn patent law. Patent law is not generating some new word, XXX, and then saying that thing there is an XXX. It is invalid ’cause ’cause it is an XXX.
Try to be a real patent attorney. Inventions should be judged by the prior art and objective standards. Not junk like this is an “idea,” a “natural law,” “insignificant post-blah activity,” “abstract–without the ladders of abstraction,” “preemption,” etc.
Note all these inconsistent and ever greater number of terms for witch. What a joke.
Define “real patent attorney,” then define “abstract.”
Next, which is information: a machine, manufacture or composition?
Is the meaning of a word statutory?
Is the meaning of a number statutory?
But back to the topic at hand, does “real” have anything to do with the degree one bows to the image of the late Judge Rich?
Being a real patent attorney means basing judgments of claims on prior art, objective standards, and how one skilled in the art would view the invention in view of the disclosure.
>Next, which is information: a machine, manufacture or composition?
The machines PROCESS information. Information is represented by the machines and processed like your brain. Like in how you make a living.
Remember that the conservation of information is the most important law of physics. Remember that processing information takes time, energy, and space.
Those are facts–undisputed by the intellectually honest.
Try to transform yourself into a real patent attorney. I suggest that you stop hanging out with the paid blogger.
Night: “real” patent attorneys based judgment of claims on prior art.
Thus a claim to the idea of putting a rubber eraser on the tip of pencil, not limited to any means or method, is patentable to “real” patent attorneys because all means and methods, regardless of how innovative those new variations might be, are covered by the claims even though one might disclose only one means. To “real” patent attorneys, the Supreme Court is to be ignored because they have no patent attorneys on the court, and therefore are not able to understand that information (comprising the state of the universe) must be conserved (so that state changed may go in both directions), and for THAT reason, the meaning of a number can be a patentable invention. (Of course, anyone who can understand this line of thinking can either be a “real” patent attorney or a paranoid schizophrenic.)
Speaking of “real” patent attorneys, the NYIPLA adopted a position against a specialized patent court. link to nyipla.org
Among the points noted, and this obviously the case,
5. The problem of obtaining competent judges would be a serious one.
The NYIPLA also said this:
“…we need appellate judges who are trained in judicial consideration of problems and who are able to weigh and sift the evidence presented to them. Scientific judges would soon fall behind in their technical knowledge and would undoubtedly develop prejudices and narrow scientific ideas which would result in the case not being decided upon the evidence given in the Court below but upon the technical views of such an Appellate Court, which views litigants could not meet since no evidence is introduced in the appellate court.”
There are problems, Night, with “real” patent attorneys trying to be judges. They are know-it-alls. And this is only one of many good reasons why no patent attorney prior to Rich was ever appointed to a court of appeals.
And, might I suggest, the Rich experiment, the first of its kind, proved well the prognostication of his own local patent bar association that patent attorneys would not make good judges.
Ned,
The Rubber-Tip Pencil case should be analyzed based on obviousness not an “idea.” The problem with “idea” is that it has no clear meaning in innovation, and every invention and combination is just an “idea” at some level.
Seriously, why bring “idea” into the discussion? Why? By idea, I think in this case what they mean is that the combination would be obvious to one skilled in the art. Remember that fiber optic cable is just two cable together with different indexes of light refraction. That’s it. An idea. No novel structure but the combination.
Real patent attorneys don’t resort to saying “idea.” Shameful.
Rubber-Tip Pencil is used by the judicial activist to invoke a witch word.
As to the Royal 9, real patent attorneys know that the Royal 9 do whatever they please and it has little to do with reality. We try to operate in an environment where b0mbs on dropped on us by ignorant, arrogant, powerful scrivers.
Regarding “idea,” Night, “real” patent attorneys and “real” inventors have this in common, treating “ideas” as inventions. The “real” inventor spends all day inventing new ideas, writing them down, flashing them to his “real” patent attorney who promptly files them in the USPTO. These applications include only claims, as any spec is not necessary, completely irrelevant. How to implement an idea is not the stuff of “real” inventors and “real” patent attorneys. The idea, the claim, is all that matters and whether it is obvious over the prior art.
NWPA>>>Being a real patent attorney means basing judgments of claims on prior art, objective standards, and how one skilled in the art would view the invention in view of the disclosure.
So, Ned what you said is not related at all to what I said. You did not address the substance of what I said and then mischaracterized what I said in your little sarcastic remark.
Real patent attorneys don’t have to run away….I am afraid that you do because you don’t have an intellectual base to stand on. Recommendation: stop hanging around the paid troll.
I see the edits are being selective again…
I must have missed the point where someone other than Ned inserted the fallacious argument of a “no need for a spec”
somehow not a “common form of argument and is an informal fallacy based on giving the impression of refuting an opponent’s argument, while actually refuting an argument which was not advanced by that opponent.“…
But the editing is not content specific now, is it….?
“Is the meaning of a word statutory?”
Asked and answered Ned.
Even using simple set theory.
Guess what happens when I point this out to you:
You
Run
Away
“about subject matter ineligibility”
The chuckles of Malcolm’s own signature rhetoric of Accuse Others Of That Which Malcolm Does rings out loudly as once again – without regard to the actual content of the thread – we see the strawman litmus test of “information” trotted out.
The words “In spite of your clinical narcissim,” come to mind.
Way too funny.
I wonder if Hirshfeld ever drew Drew Hirshfled:
https://images.search.yahoo.com/yhs/search;_ylt=A0LEVi87ir9V44UA5n8nnIlQ;_ylu=X3oDMTByMjB0aG5zBGNvbG8DYmYxBHBvcwMxBHZ0aWQDBHNlYwNzYw–?p=Hirschfeld+Drawings&fr=yhs-mozilla-001&hspart=mozilla&hsimp=yhs-001
Fun fact: the number in his signature is the number of times his daughter’s name (Nina) occurs in the drawing.
Looks to me like Lee is not going to try to burn the PTO down from the inside. She appears to be appointing competent people that want to make the PTO better. Her role–in Google bucks–is to go to Congress and say that the latest crushing legislation is just fine and that innovation will be just fine with the latest legislation.
Interesting game.
Very best wishes to Drew in his new and challenging position.
There is a typo in the title; his name is Hirshfeld and not Hirschfeld.
I “C” what you did there.
…or should I say, I SAWs what you did…?
😉
RE-commit to the rules set forth for examination, specifically 37 C.F.R. 1.2: “The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. .”
^^^ you missed one, Mein Herr Editor
Dear Commissioner Hirschfeld,
Congratulations and well wishes for your start of your new position.
In order to start this relationship on a good foot, may I make a suggestion?
Late last year and into the early part of this year, it was discovered and then confirmed that secret star chamber like activities were underway at the Office that directly impacted applicants and for which applicants had neither notice nor ability to ascertain the appropriateness of the treatment of their applications. After some public backlash, including freedom of information requests by the owner of this blog, the Office retreated and publicly scrapped the SAWs program.
However, before that retreat it was revealed that SAWs was but one of an unknown number of similar, behind the scenes, illicit programs. Here is my suggestion: come clean about the entire shadow effort – every program and every (now public) application and patent. RE-commit to the rules set forth for examination, specifically 37 C.F.R. 1.2: “The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. .”
Thank you for your efforts to making our relationships as straight forward as we and the public deserve.
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