Razing the Patent Bar

by Dennis Crouch

Many have talked about “raising the bar” in patent cases. In his most recent article, Professor Hubbard (Baltimore) argues for “Razing the Bar.”  In particular, Hubbard argues that the current structure of limiting the patent bar to only those with technical educations “is doing more harm than good.” Hubbard also notes the “paucity of critical debate” in this area.   As a first step, he proposes that any U.S. attorney, regardless of their technical background, should be permitted to sit for the registration examination.

Hubbard holds a degree mathematics from Dartmouth and a J.D. from Yale; has litigated patent cases; teaches patent law courses; has written extensively on the patenting system; … but is apparently not qualified to become a patent attorney himself.

= = = = = =

A benefit of shift brought about by both the Courts (Alice/Mayo/Nautilus/KSR) and Congress/USPTO (administrative post grant challenges) is that there is a greater incentive to focus patents on the detailed technological improvement rather than some abstracted notion of the invention that was more the norm for past generation.* My experience is that a technology-savvy patent attorney will be better able to cost-effectively understand the important technological details.  The technological-education requirement of the patent bar places one hurdle in that framework, but the market continues to operate in this area as well. For instance, many companies only hire patent attorneys with relevant experience in the appropriate technological area and don’t simply rely upon the “patent attorney” status as a total qualifier.

* I see that I’m making a claim here and will look into researching whether there is evidence to back that up. Are patents being drafted today qualitatively different than those written a decade-ago?

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

266 thoughts on “Razing the Patent Bar

  1. On another threa d- but fits here as well:

    The individual psychological effects – as the science of psychology – is just not the same as the Non-Useful Arts of music, theatre, dance, and such.

    MaxDrei is indeed being purposefully obtuse and misleading on this difference, with a mind UNwilling to understand, playing the Malcolm game of AccusingOthersOfThatWhichMalcolmDoes (it is he that dodges by not being inte11ectually honest).

  2. At #40, below, you can follow a chat about what is “technical”.

    I offer a spectrum of terms, that bleed into each other, like the colours of the rainbow, starting at “liberal arts” and ending with “mech eng”, the point being that they exhibit ever-increasing technicity, as you move from one end to the other. Prompted by anon’s invocation of “technical problem” and “technical degree” and assertion that “liberal arts” is definitely not “technical”, I invite readers to cleave the spectrum where “technical” begins. Is it, as it were. with “yellow” or with “green” or with “blue”.

    Les bites. But (no surprise here) he wants to change the order of the colours so he can have it that “logic” is “technical” (and thereby that new and inventive code is of itself patentable).

    anon responds, in his usual way, by copping out. He exhorts me to think, and informs me that my spectrum is “flawed” and so is worthless in his eyes and not to be dignified by any serious answer from him. Well, it might indeed be that my progression is “flawed” but so is the Mona Lisa painting. The painting isn’t worthless though, is it and my progression has already proved its worth by drawing out that reply from Les.

    Anybody else want to bite?

    1. Max, do you think an international treaty defining patentable subject matter as “technical” in nature would or should be sought? And, if so, should we even attempt a definition?

      1. Ned I see no need. Soon there will be no difference between “useful arts” in the USA and “technical character” in Europe.

        The bigger nuisance is the uncertainty what sorts of non-obviousness satisfy 35 USC 103 (because of the bleed of “inventive step” considerations, post-Alice, into 101 eligibility analysis).

        1. Max, The bigger nuisance is the uncertainty what sorts of non-obviousness satisfy 35 USC 103 (because of the bleed of “inventive step” considerations, post-Alice, into 101 eligibility analysis).

          Huh?

          1. Ned what I had in mind is that there are more sorts of non-obviousness than the sort that solves a technical problem. Should These other sorts carry weight, when it comes to patentability?

            For example, it might not be obvious how to sell more product. One thing that might be very inventive is a new product promotion process that reliably and provably sells more product and which every competitor would therefore adopt, if it were not protected by a patent. Or how about a new and non-obvious cataloguing protocol and program for the DVD’s in your collection?

            Should such a new and non-obvious solution to a non-technical problem be protectable by a patent?

            Have the US Courts started to distinguish between the sort of non-obviousness that solves a technical problem, and the sort that (whatever else it contributes) solves no such problem?

            1. Should These other sorts carry weight, when it comes to patentability?

              Here in our sovereign an answer has been provided. (let’s see that “mind willing to understand at work…)

              Think Set C printed matter versus Set B printed matter….

            2. Max, the newness or not of the subject matter is or should be irrelevant to the issue of whether that subject matter is eligible.

              Diehr involved a old equation. But so what? If the ineligible subject matter is applied to something otherwise eligible to produce a new or improved result, then the claim as a whole is eligible.

              About cataloging, you do have a improved result. But whether one has an application requires a determination of whether the abstract is being applied to something otherwise eligible.

            3. “Should such a new and non-obvious solution to a non-technical problem be protectable by a patent?”

              Why not? Patents are to promote progress. Don’t we not progress in solving “non-technical” problems?

              1. Les what I had in mind is that the Constitution contemplates the limited term exclusive right given by a patent only within the ambit of the useful arts. You can get any claim within the Useful Arts by including a requirement for a computer. Hence all the “Do it on a computer” claims. But what if “it” is not within the ambit of the Useful Arts. That’s why the EPO looks in the claim for the solution to a technical problem (as opposed to a problem in, say, not selling enough product).

                The USA invokes “abstract + something more” I find that disappointingly indefinite and vague but I hope for better.

                1. MaxDrei,

                  You are continuing to conflate “Useful Arts” (our sovereign) with “technical” (whatever that means in your sovereign).

                  Please stop this nonsense.

    2. Dodge? I am STILL waiting for your non-circular definition of “technical.”

      As I recall, it is your that dodges and attempts to say “don’t need one”…

    3. Max –

      Maybe we could apply set theory to the problem. I submit that “technical” is the unions of the things to which the answer to any of the following (plus other areas that I may have overlooked) is yes:

      1. Do implementations involve pi (3.14159…)?
      2. Do implementations involve the inconveniencing of sub-atomic particles (e.g. electrons) – (this includes all electronic devices and to my understanding chemistry)
      3. Do implementations involve application of trigonometry? (I believe this includes most things mechanical not already included by pi)
      4. Do implementation involve consideration of stress (e.g. all things metallurgical) ?
      5. Do implementations involve consideration of imaginary numbers?
      6. Do implementations involve use of calculus?

      1. Submit all you like Les. Will SCOTUS follow you? I’m sceptical.

        How about “obvious”? Can you do us a “set” definition for that too? The way I see it both “onbvious” and “technical” are irreducibly fundamental to patent law and thus defy any attempt to replace them with a definition.

        But that’s only my opinion. So, submit away, to your heart’s content. Fine with me.

  3. At “____” below, “______” says “_____”…

    Guys, can we stop the “look at me look at me” posting at the top and put your comments into the flow of the comment string?

    You MaxDrei and Malcolm do this (albeit for perhaps different reasons). When you do this, you are omitting things and getting things wr0ng, which if placed in the comment string you may (just may) not get wr0ng.

    Thanks.

  4. At 35.1 below anon extols the virtues of a technical degree. It helps when addressing technical problems declares anon.

    MM promptly asks him what is a “technical ” degree. I have a related question. In the USA, anon, when does a non-technical problem become a technical problem? Is the distinction a meaningful one? If it is, why do you assert that in Europe it is not? If it is not meaningful though, why did you say it? What exactly is a “technical ” problem?

    1. There are a number of intermediate positions between “liberal arts” (deemed by anon not to be “technical” and “mech engng” (which I presume he allows to be “technical”). I set out below one such progression. Perhaps anon can tell us where in the following sequence “technical” starts. And why.

      liberal arts/language/rhetoric/logic/pure mathematics/philosophy/natural science/engineering/mechanical engineering.

      1. Max –

        How do you justify the order of things in that progression? Why not:

        language/liberal arts/rhetoric/philosophy/pure mathematics/logic/natural science/engineering/mechanical engineering.

        If that is the progression, then I submit technical begins at mathematics.

        1. Why not, Les? Because I don’t see math as anywhere in between “rhetoric” and “logic”. Mind you, I have had no education in philosophy. I suppose for that Input we need to whistle up a SCOTUS justice or two, don’t you?

          1. Well…. I’m pretty sure I was taught mathematics long before logic…. I suppose it would be an error in logic to assert therefore that math is a prerequisite of logic….. but still…

      2. Your “sequence” is flawed, as the term “liberal arts” includes or may include language, logic, rhetoric (which is a combination of the two previous), and philosophy.

        Mathematics also, is not distinct unto itself (unless you mean pure advanced math), since a certain level is required for all of engineering.

        Engineering as a term is also not distinct, as mechanical engineering is but a subset of engineering (hence my post at 40.1.1)>

        You really do need to THINK about this before you post, my friend.

    2. S I G H….

      The training of critical thinking was the point, MaxDrei.

      Just like having a law degree is supposed to train you to think (you know, THINK) about law in a critical manner.

      However, when I see SOOOOOO much effort to arrive at a desired ends – no matter the means – I am saddened to say that our law programs have devolved into an academic morass in that the absence of meritocracy has spread to the students, and “better grades” go not to those that exhibit better critical thinking, but rather, to those that can best “parrot” the belief structure of the academic “party line.”

      And yes, MaxDrei, it SHOULD go without saying that the type of mental training IS very much different between a liberal arts degree and a technical degree. That you have to ask that which should go without saying only shows how little you appreciate the actual differences involved.

      Further, I make no such “assertion in Europe.” Where do you find that spin?

      1. Where? In your incessant assertions that Europe is unable to come up with a definition of “technical”. But you yourself now resort to the term. Is it too much to ask you to Define your Terms?

        1. I have never put it to you that “Europe” is unable to come up with a definition of “technical.”

          Never.

          I have – on the other hand – asked certain sAme ones of posters here to come up with a non-circular definition.

          Do you understand the difference?

          (and yes, this question does necessitate you to THINK)

      2. anon:

        ” it SHOULD go without saying that the type of mental training IS very much different between a liberal arts degree and a technical degree.”

        Why, anon, should it “go without saying”? In what ways is the “type” of mental training different? I’m curious.

    3. why do you assert that in Europe it is not?

      Once again you assert a known fallacy – one that I have already corrected you on, MaxDrei.

      Pay attention please.

  5. At #36 below, there is a discussion about claim drafting. I have maintained for some time that First to File will require a complete re-think about obviousness. But I had not fully grasped how it will also require a quantum leap in claim drafting skills. Les maintains that the proper time to define the invention for which protection is sought is after the PTO gives you its search report. But under First to File, that cannot hold. Instead, to avoid failure of the application and loss of your client’s legitmate legal rights, the Applicant needs to include that definition within the originally filed patent application. This is the backstory to the EPO’s notorious “undisclosed intermediate generalisation” jurisprudence, now copied everywhere else in the world (except the USA).

    So while Prof Hubbard might have a point under First to Invent, his point fails under First to File. Those US law firms who want to stay leading edge might want to step up their efforts to filter trainees according to their talent for divining what the inventive concept is, and then capturing it in apt words, even before filing the priority document at the USPTO. Separate the sheep from the goats, those trainees who can see the wood for the trees from those who can’t. This is a talent. Some have it, others don’t. Ask those in corporate practice.

    Otherwise there are going to be unfortunate losses of rights and client anger.

    1. ” Les maintains that the proper time to define the invention for which protection is sought is after the PTO gives you its search report.”

      Do I really?

      What I maintain is that there is no harm in drawing back the boarders of what one claims after a first Office Action show one that one claimed too much.

      Why is that not legitimate? Why does first to file have any bearing on that?

      1. So Les, thanks for asking. Here goes, with an answer.

        A fact of life is that rivals concurrently conceive and reduce to practice on overlapping subject matter. They can’t all have patents on everything they optimistically claim. There has to be a mechanism for divvy-ing up scope amongst the rivals. Either you do it by “First to Invent” or by “first to File”.

        Now, if your jurisdiction chooses First to File, then what you file is of decisive importance. Nothing else matters. When you conceived, and whether you were diligent, no longer count for anything. The PTO and the Courts henceforth will divide up the pie exclusively on the relative content of the rival patent applications. You have yet to see how this shakes down, under the AIA.

        I’m not saying you cannot narrow during prosecution. Everybody does that. Fully legitimate, even banal.

        What is problematic is when you try to narrow down to a level of generality not foreshadowed in your app as filed. Suppose you invent a balloon catheter for angioplasty. Suppose the next day your competitor files on a balloon catheter of polyamide (PA). Your claim 1 is unrestricted as to balloon material. In your Best Mode though, you use a polycarbonate (PC).

        The PTO searches and finds a prior publication of a polymeric angioplasty balloon. Your Claim 1 is rendered untenable. You need to narrow, and you don’t want to narrow down to PC alone because in the meantime it turns out that PA works better than PC. PA can be “pushed” (as radiologists put it) during angioplasty but PC can’t.

        The problem is when you attempt to narrow to an undisclosed degree of generalisation, narrow enough to be inventive over the art but not so narrow that it fails to cover a balloon of PA.

        In a well-drafted case, there would be such intermediate levels of generalisation, from the get go. Drafters outside the USA strive to include as many as possible, in the application as filed. Those inside the USA see no need for them and, precisely because of that, amendment to a claim that covers the rival inverts the order that he who files first on a particular Invention gets the patent on it.

        Does that help? Hope so.

        1. Max – you said:

          “The problem is when you attempt to narrow to an undisclosed degree of generalisation, narrow enough to be inventive over the art but not so narrow that it fails to cover a balloon of PA.”

          If I can still cover PA, then there is no problem and I don’t have to amend.

          As you laid out the scenario, I can’t have broad coverage or any coverage at all, as I have yet to file.

          Which of course, is the huge injustice of first to file. Your intention, I invented the catheter for angioplasty, yet I cannot get a patent for it as my competitor, but non-inventor filed first.

          THAT is the outrage.

          Also, I take issue with this assertion: “Drafters outside the USA strive to include as many as possible, in the application as filed. Those inside the USA see no need for them.”

          That simply not true. US drafters also strive to include as many intermediate levels as possible.

          1. Sorry Les. Reading your reply I see that in my haste to give a hypo I omitted to write that you filed on your invention, the balloon best made of PC, and, the day after that, the other fellow filed on his invention, the PA balloon. Your disclosure, your description and your definition of your invention, filed one day before his, is of an angioplasty balloon which you say should be made of PC.

            But your claim to the balloon as such cannot hold, because it isn’t new.

            However, your particular mode, PC, is new and inventive.

            And so is the other fellow’s claim to PA, filed one day later.

            The issue is whether you can have a valid claim wide enough to read on to his PA balloon.

            I say again, that the cases drafted in the USA that I receive for filing at the EPO are drafted differently from those written outside the USA. Think of a set of claims drafted outside the USA being like layers of an onion, with each layer representing a higher level of inventiveness than the outwardly adjoining layer, all the way down to the Best Mode at the centre of the onion. Such a set of claims is rare (in my experience) in cases written in the USA. What they lack is any disclosure to support the proposition that each succeeding onion layer is more inventive than the outwardly adjacent layer. As you know, mere novelty isn’t enough to get you a patent.

            As to outrage, I think you will find it is confined to quite a small circle of people.

            1. Well Max, I think you shouldn’t extrapolate too far based on your sample.

              As for the ways others do it. We all have our frustrations. I have seen many applications/patents from the EU and they are full of claims reciting “means for” with little or no explicit disclosure of what the means are….

              Onion or no, the disclosures are pretty thin.

              1. Les, you and I look over the fence at what is on the other side and criticise it, like two farmers assessing each other’s crops.

                Outside the USA, a “means for cutting” means what it says in the absence of 35 USC 112(6). That is to say “anything that has capability to cut”. What does “cut” mean? Construe it in context. Is it butter technology or padlock hasp technology?

                Disclosure thin? No surprise there. No Applicant gives away any more know-how than necessary. It is always a fine balance. Give too much and you get ripped off. Give to little and your claims don’t survive an inter partes test of their validity. In patent drafting, as in everything else, you pays your money and you takes your choice.

                1. Les, you and I look over the fence at what is on the other side and criticise it, like two farmers assessing each other’s crops.

                  maybe time for you to stop the whining then, eh MaxDrei?

                2. Je suis d’accord.

                  I enjoyed your attempt a Brooklynees there at the end Max.

                  …ya pays ya money and ya takes yas chances..

        2. “Written description,” can go back to that quick filing of a provisional. Is one stuck with that description, or can it be massaged when filing and claiming in the utility? What if the provisional was on the best mode PC? Does every equivalent need to be recited in the provisional? Lot of unintended consequences of the AIA.

          The game has certainly changed

          1. Richard are you asking me or are your questions rhetorical? I know the answers for the Rest of the World but how the US courts will handle the First to File provisions of the AIA I know not. But I guess their instinct will be judicial economy.

            So, as in Europe, the process of patent law transition is going to take more like 50 years than 20, I’m sure. And Europe adopting the EPC in 1973 didn’t even involve a flip from First to Invent to First to File.

            1. One is and was stuck with the provisional. Why would this change after AIA? It would not. Of course, the utility can disclose and claim more than was in the provisional. However, one does not get the benefit of the provisional date for that new matter. If the Examiner doesn’t catch it, the accused infringer will.

              1. The reply to MaxDrei, is not rhetorical, if I knew the answer I wouldn’t be concerned. But typically claims are not included in the provisional.

                If no new matter is added, can the later filed utility claims encompass, say, the the generic which includes the undescribed species of the later filed application (or as typically occurs, the species disclosed in a competitor’s product)?

                1. Yeah well I know the answer under the EPC but only because we now have more than 30 years of jurisprudence. For the answer under the AIA, come back in 30 years and somebody can then give you a useful answer.

                  Till then, it’s all up for grabs. early cases will shape the way the law develops. Great scope for brilliant advocacy.

                  1. You keep on harping on this “30 years of jurisprudence” without realizing that your system, lacking stare decisis means that such “30 years” does NOT provide a cumulative effect, and that tomorrow may switch back to the thinking of year 4, or year 8, or year 2, or year….

                    In a most peculiar manner, your system is even MORE “all up for grabs” than ours. And your “notion” of “early cases will shape the way the law develops” even less than ours.

                    As to the AIA, I (personally) do not think that the Act will survive that 30 years. It is far too frail and wrought constitutional difficulties. Yes, you do have a point about the length of time that it might take to iron out all of the new or odd phrasing in the Act, but I just don’t think the ship is sturdy enough to make it through the waters. What did they say about the actual Titanic….? Too big to sink….?

                    As to your comment on “Great scope for brilliant advocacy” – that’s just a landmine of dichotomies, given that law is not meant to be shaped by advocates (the whole “damm scriviners” line of thought, and all).

                  2. You also keep referring to AIA. I really don’t see why that would change the answer to this question regarding provisionals. AIA changes what is considered prior art a bit. It does not change what is considered “support” for a claim.

                  3. Richard,

                    For your convenience, I am reposting my 8:45 am reply to MaxDrei here:

                    PHOSITA is not just about obviousness, MaxDrei….

                    (that’s why the KSR decision and the attempted nose mashing to reach the desired end carries with it a change in PHOSITA that affects more than just obviousness)

                    I realize that I am asking you to think in a legal manner, but think about 112 and what is required to be included in an application in relation to what a PHOSITA is purported to know.

                2. Yes. If a patent discloses a new widget comprising:

                  A,
                  B,
                  C and
                  D.

                  That encompasses the competitors newer A, B, C (made of quartz) and D.

                  One cannot work around a claim by adding detail. If one could all patents without infinitely long specifications would be worthless.

                  1. “[A]ll patents without infinitely long specifications would be worthless,” is the problem.

                    Because “equivalents,” are now deemed to be the equivalents disclosed in an application, specifications are now becoming infinitely long. How many patent applications of tedious length have endless paragraphs beginning with the invention, feature, etc. “may?” Or worse, “gist?”

                  2. See my cite in 37.1 as an example. The Steve Jobs ‘100 patent, (can locate if pertinent) is another example. (I do find this discussion very useful and enlightening)

                  3. (Richard,

                    For your convenience, I am reposting my 8:45 am reply to MaxDrei here too (my oops on the previous placement):

                    PHOSITA is not just about obviousness, MaxDrei….

                    (that’s why the KSR decision and the attempted nose mashing to reach the desired end carries with it a change in PHOSITA that affects more than just obviousness)

                    I realize that I am asking you to think in a legal manner, but think about 112 and what is required to be included in an application in relation to what a PHOSITA is purported to know.

                  1. As a litigator and prosecutor, it was once the best practice when going to litigation to file continuation applications, to insure that a case could be made for literal infringement by amending pending continuation claims to literally cover the products of the competitor. The USPTO was on a mission to discourage continuations. The issue is a bit more complex than ABCD.

    2. Max, I have had several clients come to me in the last months from other firms who have applications filed at a very high level of generality even though they went to their patent attorneys with fully developed inventions that had specific solutions to specific problems — none of which appeared in the applications as filed.

      While this has nothing specific to do with claim drafting, it does show you that US practice has become extreme corrupt in the last decades because of lax practices at the PTO and a lack of concern at the Federal Circuit. The backlash against what has happened by affected industries, their efforts in Congress and in the courts to call a halt, is the real reason the Supreme Court began cracking down in Bilski->Alice. I think the PTO and the Federal Circuit have gotten the message. I am not sure US practitioners have.

      1. Ned,

        You too (especially?) are forgetting the necessary ramification of the Supreme Court (patent profanity, anyone) in the KSR case and the concomitant lowering of what has to be in an application due the super empowering of PHOSITA.

        Then again, you do seem to have an unhealthy view of the judicial branch as statutory law writers….

        1. … you too are also forgetting that many of what you would label as “become extreme corrupt” is ALSO driven by the necessary legal reality of reacting to the patent profanities introduced by the courts.

          There is a reason why things like Jepson claims have diminished to being an option seen as rarely as hen’s teeth.

  6. Part of advising a client is analyzing prior art returned in a search. I don’t know how someone without a technical background BS (math, physics, chemistry, engineering classes, etc) is going to be able to provide the same level of competent evaluation and distinguish the invention from the prior art, which is the trick in getting an app through to issue.

    Standards are there to protect the public. A math clown will not point out to potential clients his limitations sans a BS.

  7. The discussion is interesting, but they stray from what I thought was the original question. Are patents being drafted today qualitatively different than those written a decade-ago? The answer, in my view, is an unequivocal yes.

    Many companies that purport to want solid defensible patents, still press for numbers, exert pricing pressure (we can get it for less off-shore), and “don’t want to pay for training” newer associates. The end result is good technical hires that do not get the required training for preparing the focused applications required to handle the current scrutiny.

    In short, you need the technical background and the mentoring to become a polished patent attorney/agent.

    1. Worse! As an example, the primary and only reference of a final rejection I recently encountered is an Epson application that overuses the term “gist” for every minute feature in a 48 drawing sheet, 52 page specification and 54 claim application that probably has a kernal of protectable subject matter. But apparently that kernal has not yet been found in over 10 years. Akamatsu et al (US 2005/0113025 A1)

  8. I’m interested in whether drafting in engineering requires talents different from those needed in chem/bio drafting. I got a nice answer from Liberty for All to my question at 23.1.2.1.2 below, but I’m hungry for more. Suppose your inventor brings you “Molecule X” that plausibly achieves some useful medical effect. Suppose another inventor brings you a prototype gearbox or stent delivery catheter. How, in each case, do you fix the independent claim and write a nicely-graded set of dependent claim fall-back positions? Don’t you think the talent to find the main claim, the inventive concept, is different in engineering than in chemistry?

    And what about the “Who Goes First” question. Outside the USA, you need to have written into the specification, before you file the application, the claim at the level of generality that you will take to issue. By contrast, in the USA, it seems to me you write a hopelessly broad unsustainable main claim and a narrow dependent claim directed to the illustrated embodiment. In effect, you are saying to the PTO, search first and then I’ll tell you at what level of generality I’ve invented. That doesn’t wash, outside the USA. H83ven help the rest of the world though, now that the USA has gone to FtF and so must up its claim drafting game very substantially.

    1. …another oddity of yours is this prediction of calling things <Ioutside of chem/bio “engineering.”

      You do realize MaxDrei that “engineering” is the proper term for chem/bio too, right?

      Hungry… thirsty… makes no difference, as you have a mind closed to understanding anything that does not fit your desired “world view.”

      Ladders of Abstraction apply in ALL art fields. The odd (and rather weak) attempt to distinguish some art fields from this technique serves no one (no matter how “polite” the attempts to cloud that fact – eppur si muove and all).

    2. …and your penchant for claims being “upped” remains most odd as the US law against added matter remains the same (and it is this law that is the driver).

      You seem most eager to chafe at the differences in law between the sovereigns, and show NO serious critical thinking as to the meanings of those differences.

    3. Message to MaxDrei. At first glance, one would say that drafting claims and specification in biotechnology and biochemistry take more skill than drafting claims and specification in mechanical engineering or in medical devices (I have 15 years of experience in both of these). Ordinarily, one might say this, because the typical scrivener doing biotech patent work has a Ph.D., while the typical scrivener doing mechanical devices does not. Biotech patenting takes more skill, as one might categorically conclude, because biotech patenting requires skills in PROPHETIC claims. The spec needs to be carefully written to ensure enablement of prophetic claims. This is much less an issue with mech device claims. On the other hand, mechanical and medical device patent work has unique traps and requires unique skills. One trap that is especially harsh (that occurs in mechanical devices BUT NEVER IN BIOTECH) is the need to have a structure number on a diagram, for every structure that is in a claim limitation in the claim set.

      1. Good. We agree that different aptitude education and training is needed, for chem as opposed to mech drafting. The thing about mech drafting though is that you only find out that your drafting was less than perfect when your client asks you why the competitors product is not covered by the claim.

        1. The thing about mech drafting though is that you only find out that your drafting was less than perfect when your client asks you why the competitors product is not covered by the claim.

          Because that never happens in chem/bio.

    4. “By contrast, in the USA, it seems to me you write a hopelessly broad unsustainable main claim and a narrow dependent claim directed to the illustrated embodiment. In effect, you are saying to the PTO, search first and then I’ll tell you at what level of generality I’ve invented”

      You say that as if it is odd or somehow unfair. I don’t understand why. Why is it that you expect an inventor to know the entirety of the related art before she applies for a patent. Knowing the art is unrelated to invention. One can invent the electric light, for example, without knowing a thing about candles and gas lamps.

      What is it inappropriate, in your estimation, to say to the Patent Office: I think I’m entitled to claim X and here’s why. What say you? And then modify ones claim in light of a newly identified deed to a neighboring parcel overlapping the one to which one thought one was entitled?

      1. Les it is impracticable because the PTO cannot begin to do a worthwhile search until it knows what to search. Cynically I think this is why drafters do it. Given the C+C Presumption of Validity after the patent issues, they prefer a rubbish search.

        My clients have me watching the patent applications of their competitors as they advance through the EPO. They want an infringement clearance opinion from me. They should be able to have one. But in the USA, at the USPTO, forget it. I say that this is not how best to promote the progress.

        Just wait and see. After ten years of First Inventor to File, you will better understand the importance of having from the outset a decent set of dependent claims.

        1. Max: “Les it is impractica because the PTO cannot begin to do a worthwhile search until it knows what to search .”

          I think your way is impractical. The PTO has thousands of trained searchers and access to systems designed to help them search.

          What is impractical is requiring an inventor to do that searching under the penalty of lost rights if the inventor doesn’t find something and therefore doesn’t disavow it when drafting the application.

          Of course the U.S. way is practical. Its called amendment. The examiner CAN search for what is disclosed in the specification.

          1. We agree, that the PTO can indeed search the disclosed embodiment. But is that all you claim? Where I live, we claim wider than that. We claim the inventive concept. You can’t search that till the inventor gets round to saying what it is. When Claim 1 is so wide that it embraces old stuff, and so lacks novelty, that’s not the inventive concept either. We need a concept that’s inventive Les. Otherwise, we cannot proceed.

            Les, how often do you act for those threatened by pending patent applications? I think you are seeing patent law through one eye only, and not as an optimal balance between patent owners and their competitors, which best promotes the progress.

            1. Well Max. The PTO can and does search the original claims. The “we think we are entitled to claim” claims, wherein the inventors says what she THINKS is hers.Then the PTO presents the allegedly overlapping claim next door. That’s when the applicant draws in the boarder….

              1. Yes Les, I do understand that. The issue is the degree of freedom the Applicant has, under the law, to re-draw the border, upon seeing the results of the PTO search. Too little freedom and that is unfair to the inventor. Too much freedom and, under First to File, it begins to get unfair on everybody else.

                Keep in mind that patentability/validity is assessed through the prism of the PHOSITA, who is deemed to have a knowledge base that no real human can hope to possess. All in the interests of assessing obviousness objectively, rather than through the knowledge base of the named inventor or the attorney chosen to do the drafting of the application.

                1. PHOSITA is not just about obviousness, MaxDrei….

                  (that’s why the KSR decision and the attempted nose mashing to reach the desired end carries with it a change in PHOSITA that affects more than just obviousness)

                  I realize that I am asking you to think in a lgeal manner, but think about 112 and what is required to be included in an application in relation to what a PHOSITA is purported to know.

        1. Your arrogance knows no bounds. Inventors address problems they face based on the knowledge and experience and tools they have.

          They don’t research the prior art before they start inventing.

          1. Les why would anybody, why do you pay lawyers? Why, for that matter are examiners in the USPTO. If I were to watch someone on the same IP address and name research what they were trying to patent, I would probably be able to narrow down what they are working on if it is a simple or medium mechanical idea. But when they robbed me it was literally easier because they were in my computer Les. So all that being said I look plenty but with a non deplume and other ways.

    5. Have you read a lot of the cases that come from Europe? You think the claims are insanely broad in the US, I have some news for you: cases written in Europe have incredibly broad claims. Apparently, not written by you, but written by some of your esteemed colleagues. Not to mention that the rules about claim terms appear to be different: European cases never define their terms, whereas US cases do. Take a look at claim 1 in a European claim and search through the case for a definition for that term. You won’t find it. Do the same for a US case, and you’ll find it (at least if the case was written by someone I know).

      I think it’s time to come to reality about European cases — most of them I’ve seen have the exact same errors you’re ascribing to US cases.

      1. Bob, I’m not saying that I draft a narrow claim 1, just that I have behind claim 1 a slew of fall back positions (intermediate generalizations) of a scope successively narrower than the main claim but much wider than a picture claim to the illustrated embodiment and nevertheless of enhanced patentability, relative to claim 1. These are the claims I do not always see in US-drafted claim sets.

  9. Bogus argument. A yale grad may know how to use say an iPhone but can he design one? Same goes with a patent attorney with EE or Biomed background and a litigator who “wannabe” a patent attorney. Inventors in many most cases tell you just a little bit. It is the technical skills of a good patent attorney that lead to a good draft covering all possible technical aspects, all possible infringing scenarios, etc. of a patent.

    1. Agree to a certain extent, Roger.

      I would also point out that Babble Boy is simply wrong in his post as well.

      Much like law school is supposed to teach you how to think critically about legal concepts in gen eral (but largely has become a “game” mirroring the academic world of being able to “mirror” the views of the ‘teachers’), a technical degree evidences how one is trained to handle technical problems – both in gen eral, and in a particular ‘niche.’

      FAR too much emphasis on this thread has been focused on the “what” of what a degreed person may have, and FAR too little emphasis on the skills that a technical education brings.

      There is a WORLD of difference in the skilled techniques that a liberal arts degree brings and that a technical degree brings – any technical degree.

        1. Aside from your snark, the term as used here really does have an established definition.

          Do you need me to look this up for you?

          If I do so, will you (finally) provide me my long-asked for non-circular definition of what you mean by technical?

          Or will you run away like you so very often do on these boards, avoiding any actual engagement on the discussion points that prove to be just too inconvenient for you?

          (your behavior over the last almost ten years already gives the answer)

  10. What they fail to realise is that it takes specialist training, skill aptitude and experience to abstract the inventive concept from a prototype, and then claim it competently and at the most effective level of generality….

    … what is the underlying inventive concept to which your independent claim should be directed, and what are the intermediate levels of generalisation to which the dependent claims should be directed….

    No peeking – guess who is talking about the Ladders of Abstraction…

    1. anon I give up. It could be any UK patent attorney, at any time in the last hundred years.

      You reveal that your fancy term “The Ladders of Abstraction” alludes to nothing more or less than “How any competently trained patent attorney thinks, when seeking to draft a half-way decent set of claims”. With that, perhaps you and I, in our different ways, but following a common aim, can stimulate a rise in the standard of drafting, at least in those jurisdictions which don’t make claim drafting competence a requirement to get on to the Register of Patent Attorneys.

      1. Albeit, I would agree with you (if such s a view of yours) that having claim drafting be tested in order to become an applicant’s representative (be that agent or attorney, AND I would also push for this to be necessary to represent in litigation as well as in prosecution) would be a great idea.

      2. Max —

        That might be the key difference. In the U.S., claim drafting is far and away the most important skill (followed by drafting a specification and arguments that support, and don’t carve gaping holes in, those claims).

        My sense from my limited exposure to French and German work is that claims are far less central to patents in those jurisdictions. The UK is somewhere between.

        Unfortunately, our exam only tests the basic “grammar” of claim drafting — there’s probably no way to test for the skill of getting a claim substantively correct, narrow enough to exclude the art, supported in all ways relevant to § 112(a), meeting all the twists and turns of our § 101 subject matter law, and framed in sufficiently precise and non-torturable language to take an infringer’s arguments off the table.

        But a semi-relevant exam is better than no exam at all.

        I agree in part with BabbleBoy at 32 that the precise technology has a bit of “stretch” to it — as long as you’ve been reading the Federal Circuit cases more or less religiously and take care to learn from the “10 tricks of dumb patent attorneys” that they try to teach, a precise fit isn’t that crucial.

        Science training teaches a way to think. A patent attorney needs that.

        Law school — and more so, the actual practice of law — teaches a rather different way to think. A patent attorney needs that too.

        David

        1. Thanks for that David. Bear in mind that Europe is polyglot. You draft in English but will be litigating in a court where English is a foreign language. Is it any wonder then, that the court in Europe focuses on the substance (rather than the nuances of the English language).

  11. The relevant aphorism is that the cobbler shouldn’t stray too far from his last, meaning we should stick to what we know. We can re-phrase that: Should patent practitioners be PHOSITAs in the field of the patent applications they are writing?

    We all know that the PTO system makes no sense in this regard: If you have training in just one of the designated fields, you can write patents in all of them. Whatever rationale there may be in preventing an art major from writing patents in DNA tech is surely just as valid for preventing electronic engineers from writing patents in DNA tech. But that’s not the way it works.

    As a rural Virginia patent lawyer whose PhD is in neuropharmacology, there weren’t a lot of customers needing patent services in my field and so I dealt with subject matter far removed from my last – deer scent dispensers, electronic rattlesnake repelling devices, compartmentalized duvets, dishwasher-oven combinations. When you’re working with garage inventors, your own technical training is often completely irrelevant. You don’t need a degree in deer olfactory science to write a patent on deer scent dispensers. There are very few PHOSITAs in deer scent dispensers, and the ones that do exist keep it quite. So who’s a deer hunter with a hot idea gonna’ call?

    When I moved to a high-rise firm in Canada, my clientele changed to a high-tech bunch of people who ended every sentence with “eh?” and who could afford the flash carpets and fresh artwork on the walls. But still the clients weren’t in my field. Having an advanced degree in brain science and writing patents on Li-ion batteries or nuclear reactor wall-scouring devices is indistinguishable from having no advanced degree at all.

    But here’s what my boss told me when I said I wasn’t comfortable being so far from my last: You’re not writing an application for the examiner, or the BPAI, or the PHOSITA. You’re writing it for the jury. The way for you to make sure a jury will understand how the patent has been infringed and what the client claims as its invention is for the client’s technical people to bring the technology down to your level.

    For the most part, my experience has confirmed what the boss said. The client is hiring you for your writing skills and your knowledge of patent law and procedures. If a jury can understand the patent you write, then PHOSITAs, the examiner, the Board, and even Judge Moore will understand it, too. The lack of specialized patent courts in America essentially requires that complex subject matter has to be dummb’d down, and so the patent drafter might as well be the first step in that process.

    So there are lots of situations when not being a PHOSITA in a field is an advantage in writing a strong patent. The techies will have to spend more time with you and will often become exasperated because you are not an expert in their field. But mostly what they are really exasperated about is their own inability to articulate to you what their invention is. And so in my first meeting with a new client I would really lay that on the table. I would tell them about my educational background and my bench-research at Harvard so they would presume that I wasn’t a total bumpkin, and then I would clear my throat and point out that all my formal training was irrelevant to their subject matter and that they would have to spend a lot of time holding my hand as I wrote their patent. I never had a client complain about that or say “no thanks,” although there were a few instances in which I declined to take cases because I could see that the tech was just too deep for me to handle – hockey stick-tape adhesives, for instance.

    So, yes, there are some areas in which a person with an art major would be just as competent in writing an application as a PHOSITA. But there are some areas in which that is not true. The practitioner should make the initial analysis as to whether they can handle the subject matter with the client’s help, then they should make a full disclosure to the client as to their technical shortcomings and what that means in terms of the time the client is going to have to invest in the patent process.

    With respect to the background disclosure, it would be very helpful if the PTO expanded its publicly available DB of practitioners so that it sets forth 1) what degrees a practitioner has, 2) where and when they received the degrees, 3) and all patents in which the practitioner is listed. There should also be a publicly available DB of examiners setting forth the same info.

    And the reason I say it is that what concerns me more than patent practitioners straying too far from their last is the very serious issue of examinations being conducted by people who don’t have a clue.

    1. >>Having an advanced degree in brain science and writing patents on Li-ion batteries or nuclear reactor wall-scouring devices is indistinguishable from having no advanced degree at all.

      >>So, yes, there are some areas in which a person with an art major would be just as competent in writing an application as a PHOSITA.

      These statements are ridiculous. I am seriously. Having a ph.d. in a science isn’t going to help you with another area of science? I don’t think you could get many people to agree to that. And, your second statement is ridiculous. You make it sound as if having a technical degree in the area you are writing the patent application makes it harder for you to explain the material. Ridiculous.

      1. NW: “These statements are ridiculous. I am seriously.”

        Please expand as it looks like you might have dropped an adjective after “seriously” … “querulous?”

        NW: “Having a ph.d. in a science isn’t going to help you with another area of science?”

        I think you have unwittingly raised two good points: First, not all patents are grounded in science. Second, even for those that are, you’re right — having spent 15 years doing research and teaching in the medical sciences did not help me one iota in writing a patent for a novel matrix for batteries. I may have just as well been a frowzy garbage collector with good verbal skills and a knowledge of patent law/procedures.

        NW: ” You make it sound as if having a technical degree in the area you are writing the patent application makes it harder for you to explain the material. Ridiculous.”

        Thank you. Again you sort of rephrased my point, discounting the demeaning “ridiculous,” of course. Being educated in the field of the subject matter would make it easier to explain the material to others educated in the field, certainly. On that we will both agree.

        Once a person becomes immersed in a technical field, they also become immersed in the language of that field, which is good when it comes to communicating complex ideas to one’s colleagues. But that same specialized language complicates comprehension of those complex ideas by laymen. Besides, I have found that by getting an inventor to explain the invention in quotidian terms that I can understand, the inventor often sees both the limitations and advantages of his/her own invention more clearly and we both come up with a better product.

        So, to repeat my position: If the subject matter is complex, it can be easier to write an application that a jury would understand if you haven’t been immersed in the language of that subject matter yourself.

        1. >> having spent 15 years doing research and teaching in the medical sciences did not help me one iota

          No disrespect intended, but you have no idea what you are talking about. What you fail to see is that 15 years trained your brain to deal with complex subject matter and how to think about technical problems. You are right that bio thinking is different than EE thinking, but a good mind can figure that out.

          Plus, look you are so far off base. I am not going to go and get studies that I am sure exist that show that you doing this intellectually challenging work in one field trained your brain so you could do it in another field.

          Sheesh. I have a number of college classes including some very difficult advanced material. I have taught many people how to program and use computers. I have also had lots of cognitive psychology and AI. Do you really think you could take a truck driver of 15 years off the road and ramp them up as quickly as you did?

          >>If the subject matter is complex, it can be easier to write an application that a jury would understand if you haven’t been immersed in the language of that subject matter yourself.

          Again, what I see here is what I see typically from you. A smart guy but doesn’t apply his intelligence. Tell me that someone that had not studied physics could have done the Feynman lectures.

          Plus, you are talking to someone that has a background in CS/EE, but I have done mechanical and bio. It is very easy for someone with a different background than the invention to not understand key points. You know the core of what a good patent attorney does is figure out what the invention is because often the inventor does not consciously know what they did.

          Anyway, I am sure that all that is known in teach and cognitive psychology support my positions. I do think that smart people can learn to do just about anything.

          But, come on—you sound just ridiculous. Some guy with a Ph.D. saying, gee, my Ph.D. didn’t help me at all. Sure. Your brain wasn’t trained at all by all that work. Sure.

      2. I agree with NIGHT RIDER. In my opinion, it is most definitely the case that a person with a Ph.D. In neuroscience will be infinitely more trustworthy and more competant, than a person with a degree in, e.g., sociology or in art, for drafting patents on simple mechanical devices, perfume sprayers, hand lotion, sanding machines, and so on. Remember, to get a Ph.D. In neurophysiology, YOU ARE REQUIRED to work on a daily basis with instruments such as spectrophotometers, voltmeters, pH meters, motorized devices such as mixing machines, and YOU ARE REQUIRED to have had undergrad classes in physics and in chemistry. Also, any person with a PhD in neurosciences will possess the mental tools for doing patent work in a variety of inventive fields, because he or she will have training in things like conductivity, torque, vibration, density, heat capacity, degrees of roughness, assessing lab values that are “out of specification” or that are outliers, assessing patterns of data for reproducibility, and so on. Thus, it is the case that a person with training only in sociology or in art will produce a garbled mess, even when trying to draft a patent application for an improved broom.

        Thus, the person identifying himself as “babbleboy” with the PhD in neurosciences, is not making any sense at all. To reiterate, I agree with NIGHT RIDER.

        1. RobRoy: Thus, it is the case that a person with training only in sociology or in art will produce a garbled mess, even when trying to draft a patent application for an improved broom.

          Right. But what about a patent on sharing social information with virtual friends “over the Internet”? Seems like a sociologist may have more to contribute in that instance than some guy who spent eight years counting fluorescent cells under a microscope.

    2. You limit yourself too much if you think you are writing only for the jury. Actually, you have three audiences. (1) The examiner who will be reading the spec and claims. (2) The inventor who will want to see his/her invention in the spec and claims. (3) The judge and jury who will be deciding an infringement action some years down the road.

      I used to tell people my job was to act as a translator and explain the invention so my Aunt Minnie could understand it.

  12. With all due respect to Prof. Hubbard, I would be amused to see him argue with a recalcitrant patent Examiner who insists on pressing arcane scientific points instead of the relevant law in office actions. Examiners in my art area typically have doctorates in chemistry or a life science and one cannot effectively and zealously represent one’s clients without at least a master’s degree in the relevant science.
    As a quid pro quo, the professor might consider advocating the inclusion of registered patent agents as equity partners in U.S. law firms. Profit sharing is also not currently allowed. These limitations are inherently inequitable to those of us with successful patent practices as registered agents. In Canada, and numerous other foreign jurisdictions, patent agents may become equity partners in firms. This U.S. practice caps the earning and promotion potential of agents in the for reasons that are untenable in Prof. Hubbard’s modern world.

  13. I am MM. I know what junk is when I see it in the hindsight mirror. Why I bought me one of those spanking new processors and fired it up. Guess what? Windows came up! No kidding. It must have been hidden in the processor. No structure either. Well, isn’t life grand. I get paid to process information and sayin’ that machines that process information are worthless. Why I couldda done them when I was in 2nd grade. I don’t like anon much. Well, back to work cuttin’ and a-pastin’ more of them there junk claims.

    1. I’ve been telling people that if you don’t think software does anything, just wipe the memory clean on your computer or smartphone or tablet. You don’t need no stinkin’ software anyway!

      If you have Windows just open a command prompt and type in “format c:”. Say “Yes”. That software performs no functions, so just get rid of it!

      In fact, if software does nothing, just rip the engine control unit (ECU) out of your car. It’s just a bunch of software that does nothing!

      If that doesn’t help prove software does nothing, just smash your digital thermostat; the software in that does nothing for you.

      Is your printer on the fritz? It’s that da ng software, which you don’t need, since it does nothing. Get rid of it! Find a board in the printer and smash it. You don’t need the software that’s on it.

      That backup drive you have connected to your computer? It does need the software in it, since it does nothing. So just take that software out.

      That GPS you have? You don’t need the software in it! Wipe it clean!

  14. If you do not want to obtain technical education in a technical field, then choose another occupation. No one is going to let me perform tonsillectomies just because I read up on it and perhaps practiced it with a physician.

    One problem with not having a technical degree is that you don’t always know what you’re missing. The same goes with out of field patent attorneys. I would never draft a life sciences patent application. However, I have found some very poorly drafted electronics-related patent applications written by mechanical and chemical engineers.

  15. In my opinion, people who do not have a technical degree in science, engineering, or medicine, must be prevented from taking the patent bar. By technical degree, I mean at least an undergraduate degree from an accredited college or university (U.S. or overseas). People with a degree only in mathematics must not be allowed to sit for the patent bar, and must not be allowed to be administrative judges or to be judges on the Federal Circuit. The notion that a person “can learn as they go” is like welcoming a person with a chemistry major, and with straight A grades from Harvard University, to be in the violin section of the Los Angeles Philharmonic. This particular notion is devoid of reason and sense. Similarly, the notion that a person with degrees only in the humanities or in mathematics should be allowed to sit for the patent bar, or should be allowed to be administrative judges, or should be allowed to be on the Federal Circuit, is also devoid of reason and sense.

    1. It is NOT a requirement that one have a DEGREE in science or engineering to sit for the patent bar. That is but one of many ways one can qualify. See link to uspto.gov starting at page 6. Further, it is unclear what an “undergraduate” degree in medicine is. Even if there were such a beast, it would not, on its own, qualify one to take the exam. If coursework in science or engineering taken to that end were sufficient, that coursework would qualify but it would have nothing to do with medicine.

    2. <>

      Those with a degree in mathematics are not allowed to sit for the patent bar unless they qualify in some other way, e.g., 30 hours in chemistry.

      From the bulletin cited above:

      “xi. Typical Non-Acceptable Course Work:
      The following typify courses that are not accepted as demonstrating the necessary scientific and technical training: . . . mathematics courses”

  16. I would respectfully submit (a) that a “technical education” should be broad enough to capture an education outside of recognized institutions, and (b) that an education in *applied maths should be a suitably technical education, as may be required by the patent bar.

  17. In the interest of keeping the supply of registered attorneys as small as possible and the demand and pay as high as possible, I respectfully disagree with Professor Hubbard.

    Joke. Seriously, Professor Hubbard seems to be saying that some people informally develop significant technical knowledge without acquiring a corresponding formal degree. That may be true, but is the Patent Office in the business of evaluating technical credentials? How is the Patent Office to differentiate between those who are technically competent, and those who are not? The degree requirement is just a proxy for technical proficiency, which is an important qualification for the public and the PTO. I’ve seen the disasters when patent attorneys prosecute technologies they don’t understand. Imagine a bunch of trial attorneys trying to discuss technical distinctions with engineer-Examiners.

    1. Tell everyone what “technical proficiency” is needed for the following junk claim, granted by the PTO to Facebook, a company which owns massive amounts of “do it on a computer” junk and continually seeks more of it:

      link to patft.uspto.gov

      1. A computer implemented method comprising:

      identifying, by a computer system, a first image and a second image for display on a client device;

      identifying, by the computer system, one or more contexts of the first image;

      identifying, by the computer system, one or more contexts of the second image;

      predicting a likelihood of a user to interact with the second image;

      predicting a likelihood of the user to interact with content including the second image, wherein the content including the second image is a news item in a news feed;

      determining, by the computer system, a first image quality for the first image based on the one or more contexts of the first image;

      determining, by the computer system, a second image quality for the second image based on the one or more contexts of the second image;

      compressing, by the computer system, the first image at the first image quality and the second image at the second image quality;

      and transmitting, by the computer system, the compressed first image and the compressed second image to the client device.

      What level of “technical proficiency” is required to understand that data can be compressed? That bandwidth can be limiting? Seems to me about the same level of proficiency required to understand that humans can’t drink their own waste without purifying it first.

      But of course we know what happens when some folks at the PTO see the term “computer”. Suddenly everyone was born yesterday.

      Fyi, Facebook bought this junk for $40 million dollars from some junk “start up” called “Friendster.” Yay! What a great system.

      1. 13. The computer implemented method of claim 1, wherein the method is executed by a social networking system.

        14. The computer implemented method of claim 1, wherein the client device is a mobile phone.

        15. The computer implemented method of claim 1, wherein the client application is a website accessible by a web browser on the client device.

        This junk was filed in 2013. Putting limitations like these in your claim set is the equivalent of a chem/bio patent attorney adding a limitation “wherein the chemical synthesis of claim 1 is carried out in a room.”

        1. Putting limitations like these in your claim set is the equivalent of a chem/bio patent attorney adding a limitation “wherein the chemical synthesis of claim 1 is carried out in a room.”

          No its not. Its similar to indicating the reaction is to take place in a particular kind of reaction vessel, such as one designed to withstand particular pressures or temperatures.

          1. Its similar to indicating the reaction is to take place in a particular kind of reaction vessel

            Except that the claims literally cover every kind of reaction vessel.

            Nice try, Les.

      2. What does this have to do with the subject at hand? Really, this is just part of your constant tirade regarding patents you don’t like.

        1. this is just part of your constant tirade regarding patents you don’t like.

          It’s an example of the kind of non-technical verbiage that shows up in reams of “do it on a computer” claims, including claims where that verbiage is the only (allegedly) “innovative” limitation (e.g., “do it on a social network”, “do it on a mobile phone”, “do it in a robot car” etc etc ad nauseum).

          A person trained in basic reasoning with a minimum of “technical” proficiency can punch these claims into pulp. How about we let that happen instead of relying on “technically proficient” people who couldn’t argue their way out of a paper bag?

          1. Your venom is clearly misplaced – if these are the things that a person trained in basic reasoning can “punch through” why is it that the Examiners are not examining to your “standard?”

            And what does having even less technically proficient people from the patent bar side of the equation have ANYTHING to do with your (apparent) desire to tighten the standards? If ANYTHING, your venom here is in the Opposite direction of your professed desires. Of course, what it really happening here is merely you engaging in your typical diatribes.

            Great ec(h)0osytem, Prof.

            1. what does having even less technically proficient people from the patent bar side of the equation have ANYTHING to do with your (apparent) desire to tighten the standards?

              The software crxp you love isn’t “technology” in the patent-relevant sense of the term so “technical proficiency” is beside the point. Software claims are just logic parading around in fancy jargon (at best) or mindless jargon (at worse). It may be super clever logic in some cases. Most of the time it’s not. And none of it should be in the patent system.

              The point is that people who are intelligent and understand logic and who can cut through the scrivening would do a far better job of examining most of the computer-implemented junk out there than some guy who graduated from the University of Wyoming with a degree in “video game engineering” or whatever.

              1. As I mentioned below, software is not the same as logic.

                Of course, any PHOSI T A knows that, quite aside from your nigh constant (and approaching a full decade) of mewling.

                1. “anon” software is not the same as logic.

                  And then we have John Rushby:

                  link to csl.sri.com

                  Page 5: “Software is logic.” (emphasis in original)

                  But, hey, you’re the “expert”! Sure you are. John Rushby must be the “hack” since you can’t both be right.

                  1. The lead in of your article (that supposedly supports whatever your “notion” of software is….):

                    The first of these is a form of epistemology and requires human experience and insight, but the second can, in principle, be reduced to logic and then checked and automated using the technology of formal methods.

                    using the technology,/i>…

                    Whaaaat?

                    /off sardonic bemusement

                  2. using the technology,

                    Right. As in “using existing technology that created for the purpose of automating the application of logic to data”.

                    Instructions for using a calculator to calculate the answer to a particular problem also “use technology.” Those instructions aren’t eligible for patenting.

                  3. Once again Malcolm – the difference is in Set B versus Set C printed matter.

                    Since you are on record as having volunteered an admission against interests in knowing and understanding the exception to the judicial doctrine of printed matter, ANY post of yours to the contrary of this admission against your interests is an unethical attempt by you to advocate on this forum.

                    Yet another example of the C R P that somehow Prof. Crouch does not seem to be able to – or care to – control, and which I must see be controlled in order for the set of rules that he wishes me to ascribe to to be considered evenly and objectively enforced.

      3. OK, why don’t you explain this “logic and data mumbo jumbo that anyone can understand”, from a seminal NVidia patent:

        1. A computer-implemented method for partitioning an application program that comprises a plurality of statements, the method comprising:

        selecting a statement in the plurality of statements to analyze;

        if the statement is not a synchronization barrier instruction, then adding the statement to a current partition, or if the statement is a synchronization barrier instruction or if the statement is a start of a control-flow construct that includes a synchronization barrier instruction, then ending the current partition and storing the current partition in an output list of partitions;

        beginning a new current partition and repeating the steps of selecting, adding, and ending until all statements in the plurality of statements have been analyzed;

        annotating each statement in the application program with a corresponding variance vector that is a representation of a set configured to indicate thread dimensions on which the statement depends;

        and reordering statements in a partition in the output list of partitions to cause statements in the partition that have fewer dimensions in their corresponding variance vectors to precede statements in the partition that have more dimensions in their corresponding variance vectors.

        1. why don’t you explain this

          Ooooh! Super complex stuff! Let’s start from the basics. Here’s what the claim covers:

          A method for partitioning something composed of multiple X’s, comprising:

          select an X to analyze

          if none of the Xs are Y, then add all the X’s to a pre-existing partition;

          annotate each X based on some ineligible/unpatentable aspect of X and sort the X’s according to that annotation.

          Whoo hoo!!! Super techno stuff!!! I bet it gets like rocket science when you try to figure out which X depends on the most “thread dimensions”. Sure it does.

          1. By the way, last time I checked “multiple” includes “two” — something to think about but which is usually just glossed over by the “technical” types who always end up focusing on the furthest extremes when they wave their pom poms around.

          2. Nice nip and tuck. All you have done is remove limitations from the claim, which any lad could do with any patent claim in any field.

            The question was, explain _what the claimed invention does_. You haven’t explained anything. What you’ve done is neatly illustrate the boundaries of your understanding. You repeat English words that you understand, omit everything that you don’t understand, and actually introduce inaccuracies. WHAT DOES THE INVENTION DO?

            What do the last two elements accomplish, and how? What is a control-flow construct, a synchronization barrier, a control-flow construct that includes a sync barrier, a variance vector, dimensions of same, a thread dimension, dependence of a statement on same. Why the reordering?

            You would have been so much better off not responding.

            1. HoP All you have done is remove limitations from the claim

              Because adding layers of jargon on top of ineligible l0gic is irreversible!!! Some kind of magical bonding, I guess.

              1. Still waiting for your explanation. All claims include “jargon”. What is the point? What does the claim mean? You say it is so trivial, you should be able to explain what it does and why.

                And where is your answer to 25.1.1.2, below?

                1. Still waiting for your explanation.

                  No, you’re not. I explained the claim to you. But go ahead and pretend that there’s so much more to it! Because “vector” and “thread dimension.”

                  All claims include “jargon”

                  No, they don’t. But the false equivalence is a favorite evasive tactic of the software patent lover. Keep digging!

                  1. Malcolm,

                    Please put your pedanticism aside – clearly with the apostrophes, HOPB is merely signifying that claims must be read as understood by Persons Having Ordinary Skill In The Art – and it is the language of the Art that is called jargon.

                    Of course, you already knew that, right?

            2. What do the last two elements accomplish, and how

              I already told you: the two X’s in the “partition” are annotated based on some ineligible feature and then the two X’s are sorted according to the annotation.

              You make it sounds as if there’s so much more to it. But there isn’t. Data is old. Sorting data is old. Your sorting data according to some logic.

              Why the reordering?

              Because it’s useful for some purpose. Kinda beside the point given that all rules have some purpose but none of them are eligible for patenting.

              Can I get a patent on automatically sorting books according to how many times the word “jibberjabber” is mentioned? Because, hey, sometimes you just don’t want to do that yourself.

                1. That is not even close to what it does.

                  It’s exactly what it does. You want to believe it’s sooooo much more complicated.

                  But it isn’t. Shall we compare the claim to the prior art for even more laughs?

            3. WHAT DOES THE INVENTION DO?

              I explained that already. You’re looking for a different answer. Maybe you should ask a different question.

              Programs are logic. Logic comprises “statements” (i.e., instructions or rules). The “invention” provides rules for sorting two statements in a program. Those rules can be anything you want them to be because, hey, “rules!” They exist to be followed.

              I took the simplest example and followed the logic trail set forth in the claim, i.e., the a program with two “statements” where neither statement was a “synch barrier instruction.” And I went from there. It’s not complicated. It’s no more complicated than “If you see a binglebangle garblejarble in a sentence, read the subsequent sentence with a flibberflabber.” Now, I know what a binglebangle garblejarble is and you don’t. And my claim is useful to me and other people who “know what the terms mean.” Does that make my claim “techno”? Nope. Does it make my claim eligible? Nope. It’s just a rule applied to data.

              And that’s all that every junky software claim is.

              1. You haven’t explained anything other than your level of understanding. We all know what it means to take something complex and arcane (to many) and describe it in a way that a layperson or juror or judge can understand. You haven’t taken the claim and explained to anyone what an implementation of the invention would actually do.

                And yes, every area of art has its own terminology/jargon. You are intellectually dishonest to say otherwise.

                Here is all that you have done: you have identified verbs that you can understand, and removed everything else that you don’t understand. Any software engineer worth their salt could read that claim and clearly understand what it is all about and why and would also understand the ingenuity and value.

                You aren’t intellectually honest. You just like arguing.

                1. We all know what it means to take something complex and arcane (to many) and describe it in a way that a layperson or juror or judge can understand.

                  Tell everyone what “it means” to do that.

                  You haven’t taken the claim and explained to anyone what an implementation of the invention would actually do.

                  Some instructions in a program are sorted according to some criteria. That’s what it does. I did explain that.

                  understand the ingenuity

                  That would require a comparison with program statement sorting in the prior art, and with the prior art of sorting information generally. But I find it extremely unlikely that the claim — as it’s written — is “ingenious.” Invalid? Almost certainly. And you don’t need to be an “expert” in computer science to figure that out.

                  That’s the point here. See also the CAFC’s opinion in the Wi-Lan v. Apples case that I summarized in 25 and that Jason summarized later in a separate post. Nobody needed to know what “invertible randomized spreading” is in order to construe that claim and resolve the litigation in that case. All you need to know how to do is parse a sentence.

      4. I am MM. I know what junk is when I see it in the hindsight mirror. Why I bought me one of those spanking new processors and fired it up. Guess what? Windows came up! No kidding. It must have been hidden in the processor. No structure either. Well, isn’t life grand. I get paid to process information and then I claim that machines that process information are worthless or all so easy why I could have done them when I was in 2nd grade. I don’t like anon much.

  18. Speaking of technical proficiency, the CAFC just hammered patentee Wi-Lan today in its attempt to reverse a Texas jury’s findings (in favor of defendant Apple) of non-infringement and invalidity. Judge Gilstrap had denied Wi-Lan’s JMOL with respect to non-infringement (this was affirmed) but had granted Wi-Lan’s JMOL with respect to invalidity (this was reversed).

    The functional claims at issue:

    1. A transceiver for transmitting a first stream of data symbols, the transceiver comprising:

    a converter for converting the first stream of data symbols into plural sets of N data symbols each;

    first computing means for operating on the plural sets of N data symbols to produce modulated data symbols corresponding to an invertible randomized spreading of the first stream of data symbols;

    and means to combine the modulated data symbols for transmission.

    Apple didn’t infringe because it combines the data symbols before modulation. There was, however, an ‘interesting” (being charitable here) doctrine-of-equivalents argument made by Wi-Lan:

    Wi-LAN argues that even if claim 1 requires a structure that randomizes before combining, structure that performs these steps in the reverse order nevertheless infringes under the doctrine of equivalents because the resulting output of the two orderings is mathematically identical.

    Well, that might satisfy the “same result” prong of the d-o-e test. But what about the “substantially same way” prong?

    Wi-LAN counters that the structural differences [between circuits designed to carry out the literally claimed steps versus Apple’s circuits] were insubstantial and it points to Dr. Acampora’s testimony that in a configuration such as that found in Apple’s products, changing the order of operations would save as few as twenty transistors out of the millions found on the chip.

    But wait! The CAFC somehow manages to cut through the dust and recognize something fundamental:

    [O]ne should not consider the magnitude of structural differences with respect to the entire chip, but only with respect to the portion of the chip used to perform the relevant functionality.

    Ya think? Now all the court needs to do is take a couple baby steps and recognize that those “structural differences” are the differences that should actually be literally claimed as opposed to “inferred” by experts at extraordinary cost to everyone involved.

      1. this has what-to-do-with the subject of Razing the Patent Bar?

        Basic logic and the ability to parse a sentence was enough to tank this case on summary judgment. Instead it went to jury trial because some “expert” kicked a bunch of dust in the judge’s face.

        Do you need a degree in computing to understand that the data symbols need to be modulated before they are combined for transmission? Nope.

        I know the software patent lovers love to pretend that the logical steps they recite for computers to carry out are totally different from the logical steps that humans carry out but in most cases they’re not. In some cases there’s no distinction whatsoever. The PTO is about forty years behind the curve at this point in trying to sort the mess out and they haven’t even begun trying in earnest.

        Logic isn’t technical. Logic is rules.

        1. Software is no more “logic” than is ANY OTHER form of engineering.

          ALL engineering takes advantage of rules, and your (dust-kicking) “logic.”

          One does NOT have to be a software “lover” in order to see that you are nothing but a h@ter.

          1. “anon”: software is no more “logic” than is ANY OTHER form of engineering.

            And this statement, friends, will be insantly saved to the permanent file.

            Thanks for the laughs, “anon.”

        2. What technical field is this “Malcomized” claim from?

          1. A method of detecting unknown [things] from a [thing] of interest, the method comprising:

          a. collecting an unknown [type of thing] comprising the unknown [thing] on a [collector], wherein the collecting comprises [adding to the collector];

          b. initiating a [step performed on] the unknown [thing] collected [in the collector] … , wherein the [step] is initiated after coupling the [collector] with a [kind of] detection unit, and wherein the coupling of the [collector] with the [kind of] detection unit causes a [something to] flow to establish [a kind of] communication between the at least one [gizmo] and the [collector];

          c. stimulating the [step performed on] the unknown [thing] to generate at least one [kind of] pattern [], wherein the at least one [kind of] pattern of [] corresponds to the unknown [thing]; and

          d. associating the at least one [kind of] pattern [] with [other things] in a [doohicky] to determine the unknown [thing].

          1. HPB: What technical field is this “Malcomized” claim from?

            Maybe just skip the quiz show baloney and tell us what point you’re trying to make.

              1. HPB: You present an argument and conclude that all software claims are junk.

                The argument supporting the conclusion that all software patents are junk patents is a pretty good argument.

                I can tell you this much: it’s not going away but a lot of software patents are going to go away because of the argument.

                Will some remain? Maybe. But the arguments in support of those junk patents will be worse than the arguments for keeping them.

                This has been the case for years now, by the way. There will be no restoration of the ever-dwindling patent protection for software, and there’s great reasons for not turning back.

            1. The point? You present an argument and conclude that all software claims are junk.

              Your assume that there exists a Malcom-Transformation (MT) that lexically/semantically transforms a claim without changing its semantic meaning. If the MT changes the semantic meaning of the claim, then of course you are reaching a conclusion about something other than the claim itself. I.e., the Malcomized version of the claim about a code transformation is what would be unpatentable, not the original claim. Therefore, the MT _must_ preserve the meaning of the claim. The MT must also be applicable to all claims. And, the MT must not transform _any_ unarguably patentable claim (one that you yourself would agree is patentable) in a way that would cause that claim to become unpatentable. For if it did, it would not be a valid differentiator between patentable and unpatentable claims.

              The MT argument is next disproven by example; a basic logic technique. Any premise is proven to be false if it leads to any absurdity or contradiction. I have applied the MT (a premise) to a patentable claim (a claim that if revealed in full you would agree is patentable). The MT has transformed that patentable claim into an unpatentable claim (by your definition). Because the MT leads to a contradiction — a patentable claim is unpatentable — it is proven to be false. In other words, Malcomizing is not a valid proof of unpatentability, and therefore your MT-based proof is invalid.

              As a foot note, the Malcolm Transformation comprises removing a layer of jargon from a claim, among other things. You know, if you would like to patent your algorithm, I will have some professional time available late this year. Just make an appointment.

              Be careful handling your petards — they’re dangerous.

          1. You think that your wanton disregard of reality, pursuit of your propaganda agenda, and unremitting venom is “ok” and should just be “scrolled by”….?

            A L1e told often enough garners the appearance of truth.

            Your actions are beyond a mere expression of opinion – your actions are not “ok.”

    1. That is not accurate. The statement about structural differences was made by a testifying expert. The CAFC was only citing the testimony as evidence in the record that supported a jury finding with respect to DOE. There is no precedence, or even dicta, in that passage of the opinion. It is a case-specific fact about power saving/cost difference between two chips. But creds to you for trying to hammer a square peg into a round hole.

  19. While the technical / non-technical requirements discussion is quite entertaining, I would like to get more views on the last question Dennis asked: “Are patents being drafted today qualitatively different than those written a decade-ago?”

    In my opinion, the requirement has evolved from “an invention must involve physical structure” to “a point of invention must involve physical structure”. My practice revolves around software and telecom. So, personally, the patent applications that I draft today are very similar to the ones I drafted a decade ago. However, I advise clients that they may be throwing money out the window if none of the points of invention can be grounded in a physical structure.

    1. I do not think the big change is from one decade ago. I would think that linguistic analysis of the patents would settle it, and that it would be something like 2-3 decades ago. At some point people gave up learning from Kayton in the name of fast-and-cheap. I suspect this was a reversion to prior form, but am not sure.

    2. “Are patents being drafted today qualitatively different than those written a decade-ago?”

      ANY answer to that question must recognize and include the basic fact of what is a necessary byproduct of the attempt by the Supreme Court to mash the patent nose of wax.

      To wit: in KSR, seeking to deny patent rights, the Court acted to super-empower PHOSITA.

      It is a necessary byproduct of this action that applications – which never had to include that which is known by PHOSITA, afterwards required LESS to meet the existing legal requirements based on this (non?-re)writing of statutory patent law.

      Let’s not make the mistake of comparing apples and oranges….

      PS: you are plainly wrong (since at least 1952) as to your “must involve physical structure” comment. That was the year that Congress (yes, Congress, and not any personal scapegoats) opened up ALL of 112 with the use of terms sounding in function and the Vast Middle Ground.

  20. Can we make a distinction here, between on the one hand prep and pros and, on the other, litigatiing patents?

    When the outcome of patent litigation depends on carrying a Jury, (or a non-specialist Bench) does it not help if you choose deliberately an advocate with none of the technical background, specialist knowledge and expertise of the Inventor, or the product manager, the CEO of the accused manufacturer or any other actual or potential litigant?

    When it comes to prep and pros though, to whom do the bulk filers entrust their patent drafting. Patent practitioners with an engineering background don’t draft in chem/bio, and vice versa, for reasons we all well know. To do otherwise is to invite disaster. This is self-evident, not rocket surgery, or brain science either.

    1. I’ve found that chem/bio practitioners can draft at least simple mechanical applications, but the reverse is not necessarily true. Many people have at least a rudimentary grasp of the macroscopic world but struggle with the microscopic. Has that been your experience?

      So much good science takes place at the interface of disciplines now that it would seem some amount of cross-training would be helpful for patent practitioners. Maybe we should have a certain amount of required CTE (Continuing Technical Education) every year.

      1. I have an EE degree and personally find drafting mechanical cases to be difficult. There’s an entire vocabulary you have to learn. If you do a lot of them, that’s no problem; if you do them infrequently, you have to remember the vocabulary each time, which is inefficient.

        As for CTE, I believe we should take courses in whatever area we happen to be “specializing” in. However, I don’t want this to be required. It seems to me that CLE, for instance, is just a money maker for a certain group of people. And it’s useless for patent people, as none of the courses have anything to do with what we do.

        1. You don’t need courses in whatever area you are “specializing” in; all you need is a solid technical background that permits you to bone up on an area before talking to an inventor. I found that it usually took me about two hours of research and reading to get to the point where I could ask intelligent questions of the inventor regarding the invention. Of course, that is what happens in a small firm where you don’t know from one day to the next what sort of invention you will be working on. While working predominately on apps for one company you quickly gain the expertise you need at the beginning. I cannot do an app in pharma, biotech, or any chemistry above the basic level. Everything else has been within my capabilities (and my technical library’s–the internet only carries you so far).

      2. My experience, Libs? Engineers have no illusions that they can safely draft in chem/bio. However, many chemists fondly suppose that, if they can understand the inventor’s prototype device, they can draft good claims. What they fail to realise is that it takes specialist training, skill aptitude and experience to abstract the inventive concept from a prototype, and then claim it competently and at the most effective level of generality.

        Think of it this way. In engineering, client brings you his Best Mode, his crown jewels. Your job is to identify what the inventive concept is, that is embodied in the prototype, then find the words to create the independent peripheral claim, and the set of dependent claims, the set of concentric walls around the castle keep where the crown jewels are guarded, that define the inventive concept, as a concept, in ever-decreasing levels of generality, till you get to the Best Mode.

        In chem/bio though, the inventor brings you his invention, say, the molecule he calls XYZ. So what do you claim? Why, boilerplate XYZ of course. No significant Ladders of Abstraction there, are there?

        Which is why, when chemists write mech eng cases, as they often do, they often mess it up.

        1. Thanks for your insight. It’s not exactly that easy in chem/bio though. For instance, in small molecule claiming, the inventor may have only developed a hand-full of interesting compounds, but then the patent attorney must identify the broader scaffold that is actually novel. So, there is abstraction in the same sense mechanical cases present the opportunity for abstraction. But I do agree that best practice would be for the chemists to stick to chemistry and the MEs to stick to mechanical inventions.

          1. Indeed. But would it be fair to say that in chemistry cases the sucessive steps you take to generalise out from Molecule X are more or less prescribed steps? Me, I think it harder to perceive from a mechanical embodiment, say, a gearbox, what is the underlying inventive concept to which your independent claim should be directed, and what are the intermediate levels of generalisation to which the dependent claims should be directed.

            In many walks of life the failure to “see the wood for the trees” is costly. No more so than in engineering patent drafting. Trying to train students in claim drafting can be very illuminating. Some (what joy) catch on very quickly. Others (very frustratingly) exhibit no aptitude whatsoever, despite their display of oodles of intelligence and book learning.

            1. “But would it be fair to say that in chemistry cases the sucessive steps you take to generalise out from Molecule X are more or less prescribed steps?”

              Not necessarily. It takes some skill to understand what small portion of the molecule provides the activity in pharma cases, for instance. Of course, there may be some molecular backbone that is novel in and of itself, but that backbone may not be what actually provides the activity (or utility, if you will). So, it’s not as simple as stripping away all the groups attached to the backbone and making that your independent claim.

              But, to be honest, these nuances are exactly why we should be technical specialists to the extent possible.

      3. “I’ve found that chem/bio practitioners can draft at least simple mechanical applications, but the reverse is not necessarily true.”

        What I’ve found is that most chem/bio practitioners when provided with a set of mechanical drawings couldn’t find their a$$holes with a map.

        Just my experience though.

        1. Hey AAA JJ,

          I’m hopefully the exception (even though I’m a chemistry undergrad) as I’ve done many, many mechanical applications. In fact, mechanical applications were what I trained on when I was new patent attorney.

      4. “Maybe we should have a certain amount of required CTE (Continuing Technical Education) every year.”

        Or you could just talk to inventors every day like some of us do.

        Just a suggestion.

        1. I’m not sure that’s good enough. Ask the inventors about encryption, for instance, and you can get an overview of some parts of encryption. But to have any real knowledge in this area, well, it takes knowledge in the area, which you have to get through other means. Obviously, we (patent agents/attorneys) don’t have to know as much as the inventors do (and really can’t know as much as they do). But we have to know enough to not get us in trouble and to be able to ask probing questions.

          For instance, even though some people on this board believe that self-driving cars, post-it notes, and everything else is incredibly easy to invent, my perspective is that any technical area is quite difficult. Research cell phone/smart phone technology sometime, and you’ll be surprised (as I was and am) that cell phones work as well as they do. The area is incredibly complex. And I think that complexity is in everything (except the minds of those who want to diminish aspects of technology to “prove” their points).

          1. I didn’t mean to suggest that it was all that should, or could, be done. But it’s far more educational than sitting in a classroom, or a “CTE” program. Like you, I find most of the CLE programs that are offered are more beneficial to the providers than to the participants. I would not like to see any form of required “CTE” as I think the same dynamic would occur as has occurred with CLE.

  21. I thought there were other options to qualify to sit for the USPTO bar exam that took into account experience or other factors.
    BTW, life is unfair; and the PA exam is a small subset of that (i.e. suck it up dude).
    A person as brilliant as the author should be able to figure out how to maximize his/her potential.
    How about: it’s not fair that the USPTO exam asks such picky questions in such a convoluted manner that a person who knows patent law and practice fairly well still commonly does not pass. I would advocate for an exam that tests more general knowledge rather than picayune minutiae, but meanwhile, a bar examination is still a valid tool.

  22. Even though I have an undergraduate degree in chemistry, I think the requirement that the person sitting for the USPTO patent bar exam must have a science or technical degree, but cannot establish the equivalent by actual experience or study in a technical or science discipline is archaic. Back in the 70’s when I was going to law school, I had a classmate who had a degree in mathematics but had “apprenticed” with a patent law firm to do patent application drafting and prosecution. As I recall, my classmate and the firm she apprenticed with had to jump through hoops so that she could sit for the patent bar exam. In my view, scientific or technical knowledge gained by degree, study and/or actual experience should be treated the same. Also, I know that there are folks who have sat for the patent bar exam who have the requisite technical or science degree, but do so only to pass that exam so they can call themselves “patent agents”; I would much prefer having someone who “apprenticed” like my classmate representing clients then one who simply passed the exam to get the title. You also have firms who will only hire patent attorneys/agents who have advanced degrees in certain technical or science disciplines; wouldn’t it be better to hire someone who actually worked in the area but only had a BS/BA degree in the discipline (I happen to have a BA degree in chemistry and I frankly feels that’s a benefit for what I’m doing now).

    I also think a background in or understanding of patent law (as well as other related areas of law) is highly relevant even if your practice is confined to patent application drafting and prosecution. There’s more to doing that than simply understanding the technology (which is still very important). Patents, after all, are legal documents subject to potential litigation and have to drafted with that possibility in mind. There are certainly patent agents who are savvy about the law aspects of their practice, but there are others who are not, as there are patent attorneys who have a technical or science degree name only. You need both the technology and law savvy do to what we do.

    1. I totally agree that an apprenticeship should be required to receive a PA license. It is actually that way in some countries.

  23. JCD had it right in that the issue is:

    Existence of the patent bar is “doing more harm than good” is based on his premise that “the technical education requirement limits the supply of legal services in the Patent Office, which generates higher prices that some innovators cannot afford”.

    IMO, to say that the fee to write a patent application or prepare an Amendment is so high is not true. Really? Relative to what? Let’s see an analysis of patent fees to prepare a patent application to the fees a patent litigator charges. I bet if you do a comparison – his premise would be gutted. Who is this guy trying to kid.

  24. Remember Maggie Thatcher? She wanted to abolish all requirements for any legal education for professional patent prosecutors. And why not, in a free market economy.

    1. Max,

      I posted a comment yesterday concerning the UK situation, but it appears to be trapped in the purdah of “moderation”.

      Maggie did abolish requirements for acting before the UK Patent Office – cobblers or candlestick makers can do it – and the sky has not yet fallen for the patent profession: because non-idiotic users do not choose cobblers or candlestick makers to make patents.

      If my previous post escapes from purdah, a little more illumination will be cast.

  25. Wow, an article that its author takes so seriously that he repeatedly refers to it not as an “article”, but an “Article”, with a capital “A”, yet still manages to compound multiple mistakes therein. Some of those mistakes have been alluded to by others. I’ll limit myself to this one: the article contains no comparison to how the licensing of patent practitioners is handled outside the USA. There’s a lonely footnote where the author laments the fact that the EPO recognizes a math degree for purposes of meeting the technical degree requirement, whereas the USPTO doesn’t. But that’s the extent of the article’s foray into this area. There’s not a single mention of Japan, or Germany, or England, all countries in which patent practice and general legal practice are separate (likely because law is a first degree rather than a second degree as in the US); there’s no mention that lawyers per se aren’t allowed to practice before the EPO; there isn’t even a mention of Canada, which, IIRC, is the only country besides the US that has the patent attorney/patent agent distinction. Neither the word “foreign” nor “country” appears.

    That’s a shame, because comparison to other places would have been instructive. In Israel, for example, the country with the highest number of lawyers per capita in the world, law is a first degree, but unlike most countries in which that’s the case, Israeli lawyers with only an LLB are allowed to practice in patent cases before the Israel PTO. And yet, to the best of my knowledge, there are few to no reputable lawyers having only legal training who practice before the ILPTO on their own. There are several respected law offices with respected patent litigation practices that also engage in prosecution before the ILPTO (primarily for applications originating outside of Israel), but that function is invariably given over to licensed patent practitioners working within that office. Similarly, few if any legal-training-only lawyers in Israel foray into the patent-drafting sphere; my observation has been that when they do, it’s for low-end clients. And it should be borne in mind that damages awards in Israel in tort suits – like legal malpractice – tend to be far smaller than in the USA, meaning that in absolute dollar terms, the Israel lawyer’s exposure for patent prep+pros work is less than his US counterpart. So given the tight market for legal work in Israel with all those lawyers floating around, we might expect to see a significant chunk of work going to LLB-gilded charlatans. But we don’t.

    All this is a long way of saying that, based on the Israeli experience, I tend to disagree with the conclusion that allowing non-technically proficient lawyers to practice before the USPTO in prep+pros work will necessarily lead to lower practitioner fees. For the most part, such US lawyers will stay away from such work. And technically savvy clients will continue to prefer to engage the services of practitioners well-versed in their technological areas, just as most practitioners (but not all, as mentioned in the article) will tend to limit their practice to areas where they feel competent and less likely to commit malpractice. And as others have already noted in the comments here, the billing rates for US patent agents tend to be lower than the rates for US patent attorneys, so in a sense there isn’t really a legal services supply problem for patent prosecution. (Ironically, my own, unscientific observation has been that often, those agents, particularly if they have a PhD and experience in the industry, do a better job of drafting and prosecuting patent applications than do BSc-straight-to-JD lawyers who are billed at higher rates.)

    Where I think it would be useful for the USPTO to allow non-technically trained lawyers to practice – and in this I am in agreement with the author – is in the area of post-grant proceedings. Here too, the Israeli experience is informative. Although Israeli patent practitioners are allowed to represent clients in inter partes proceedings at the ILPTO (pre-grant oppositions and post-grant revocation actions), the trend over time has been to get LLB-only litigators involved with such proceedings, and often those litigators are the lead counsel. To the extent that technical knowledge is required, there will usually be a team that works on such projects, a team that includes both lawyers and patent practitioners. That, obviously, is similar to how patent litigation is often handled in the US, and it’s similar to how IPRs and PGRs are handled. Given the nature of IPRs and PGRs, and the fact that such proceedings are handled by a team, it would make sense to allow non-patent bar lawyers to be lead counsel in such cases. That could, of course, be done pro hac vice, as is now done for non-lead, non-patent bar counsel, but I don’t see the harm in changing the rules so that any lawyer could be lead counsel in an IPR or PGR.

    I’ll hold my other thoughts on this in abeyance for now. I just wanted to make the point that looking abroad can sometimes be instructive, and it’s disappointing that this author didn’t.

    In that vein, I see that, inexplicably, the author didn’t quote Hal Wegner either. Inexplicably because Hal has long been an advocate of allowing any lawyer to practice in patent cases before the USPTO, on the assumption that exposure to malpractice liability and state bar sanctions would be enough to limit that group to those who really know what they’re doing. (Well before the enactment of the AIA, I discussed Hal’s views, with an eye toward Israel patent practice, here: link to iliplaw.com.)

    1. Hal Wegner’s point, namely, that:

      “…exposure to malpractice liability and state bar sanctions would be enough to limit that group to those who really know what they’re doing.”

      is a good one. Maggie Thatcher would enthusiastically agree. She wanted to break all professional services monopolies. But when it comes to drafting a definition of an invention, and a detailed description of it, who does know what they’re doing” adequately? A general lawyer? Or, more likely, a specialist in the technical field in which the invention was made?

      Outside the USA, patent practitioners are a profession in their own right, different from the attorney at law profession but of equal rigor and standing. These patent attorneys might say that attorneys at law who would fail the patent attorney qualifying examination route do not belong to the group of those who know what they’re doing. Consider Germany. Virtually all who go through the national process of qualifying as an attorney at law (Rechtsanwalt) or patent attorney (Patentanwalt) qualify. But only about 25% of Germans who in any one year sit the European Patent Attorney examination suite get through it. For the EPO, you don’t “know what you’re doing” till you get on its Register of persons qualified by examination to call themselves “European Patent Attorney”.

      And the irony is, virtually none of them on the EPO Patent Attorney Register is an attorney at law. And yet these EPA’s handle, exclusively, without needing their hand held by any qualified general lawyer, the fate of all patents in 600 million inhabitant EPC-land, in all pan-European patent validity disputes since the EPO opened ist doors in 1978.

      The difference is, Europe set up its system in 1973 but the USA set its patent system up a long time before that and the lawyers there have feathered their own nest ever since.

      1. Mr. Wegner made the same argument about 10 years ago that the professor is making now. I think I was one of about 7 people who read Mr. Wegner’s paper/article. But I guess the professor needs to be published to keep his tenure, so recycling a 10 year old idea that gained zero traction is just as good as anything else he could write about.

    2. Of all the countries in the entire known universe, Israel is, quite frankly, the last place I would consult to figure out how to do anything.

      The rolling disaster that large American cities have brought down on themselves by importing IDF/IOF “policing techniques” (i.e., kill first, concoct a reason later) is more than adequate testimony to support this view.

      As for the federal level, Israel already has huge influence over a shekel-drunk US Congress; we don’t need to Israelize the PTO too.

  26. Back in the day, a patent firm could only list registered patent attorneys. Typically litigation on patent matters were conducted by patent firms.

    Then, magically, the rules, formal and not, were changed to allow big firms to have a patent department, but litigation was handled by trial attorneys skilled in “intellectual property” law. Intellectual property lawyers were second class to patent attorneys. Any attorney can now be an “intellectual property lawyer.”

    So, now the intellectual property lawyers want to be patent practitioners? And doctors want to be brain surgeons? There has been a drastic drop in the quality of patent applications. We have fifty page, 100 claim applications spewing nonsense with a microcosmic kernel of questionable patentability that could be stated in ten pages or less.

  27. “Hubbard holds a degree mathematics from Dartmouth and a J.D. from Yale; has litigated patent cases; teaches patent law courses; has written extensively on the patenting system; … but is apparently not qualified to become a patent attorney himself.”

    He can always bother himself to sit through some bio/physics/chem classes if he can’t handle the hardcore stuff.

    Things are bad enough as is on this front. I’ve got bio people prosecuting my cases sometimes and that just makes for a disaster. They don’t know their arse from their elbow so it often falls on me to practically prosecute the case on both sides if I want to see it resolved in the next couple of years. Though that sometimes happens anyway with other attorneys who are qualified, it’s much more pronounced in attorneys who have no actual background in what is being done.

    imo “raising the bar” should mean raising the requirement, not getting rid of it.

    “Are patents being drafted today qualitatively different than those written a decade-ago?”

    Many in my art are, some folks have begun to adapt to the office’s practices (what some might call bs, and be at least half right) in rejecting applications in my field and thus know how to make themselves clear from the get go. Though some do not and are continually caught up in the traps laid by the bureaucratic process.

    1. Egad’s what a bad idea. If I tried to do a bio or chem application, I would make a hash of it. I have done some simple chemistry applications but I would not trust myself to do anything complicated. I do not know how this guy thinks he should be allowed anywhere near complicated technology — and with the thinking that he can get it done faster and better than patent attorneys that know what they are doing because they have been properly educated.

      Learned Hand himself somewhat recognized the folly of allowing non-technically educated people anywhere near chemical applications in his famous Parke-Davis decision.

      Perhaps this guy has been litigating business method applications?

    2. The late Karl Limbach had a degree in math. That was acceptable as a tech qualification to be a patent attorney. He handled HP’s first handheld computer. He was more than qualified. Have the requirements changed?

      1. “He handled HP’s first handheld computer”

        I’m sure that’s somewhere near a few orders of magnitude lower in complexity of the ordinary handheld computers being invented today.

        1. Of course, this was in the 1970’s, my point being that in the the 1960’s, a mathmatics degree qualified one for registration as a patent attorney.

      2. Mathematics no longer counts as an acceptable major. A good change in my opinion, as I once worked with a math major who was a patent attorney. Quite good at math, and put herself through school counting cards at casinos. She never got caught. But she simply couldn’t get the hang of writing patent apps because she had no technical background, so went into trademark law.

        I see that one no longer needs a PE as an alternative qualification, because the FE is now acceptable. BTW, the EIT reference book makes a good general technical reference.

    3. Taking extra classes is exactly what I did. My CS degree wasn’t from one of the institutions deemed worthy, so I signed up for a rather unenjoyable series of bio and chem classes during my 3L year. Contrary to the claims of “Patently Excluded” below, I had no problem finding such classes at night.

      Oddly, those classes have come in handy, since I keep landing far more work related to those subjects than to computers.

      1. “Oddly, those classes have come in handy, since I keep landing far more work related to those subjects than to computers.”

        Lulz, no kidding?

  28. Coming from the UK, where anyone can practice before the UK IPO, but only those with a technical background who pass stiff exams (or general lawyers with either buckets of chutzpah or real experience) can call themselves “patent attorneys”, this discussion is amusing.

    In practice, very few in the UK use unqualified representatives or general lawyers as most users prefer to take advice from persons familiar with both technology and law, and who have had this familiarity tested.

    Those who use the unqualified get the representation they deserve.

    Those who use general lawyers get representation ranging from the excellent to the execrable.

    I at least regard it as an inalienable right for all persons, with or without a bright idea, to act like an idiot. This is a right I exercise constantly.

    Is the US the land of the free, or the land of the licensed?

    [PS – just asking]

  29. I am one such attorney severely hindered by the technical requirement. Despite 3.5 years of working at a patent law firm actually drafting patents pseudonymously via our other patent prosecutors, I am precluded from getting certified because I graduated with degrees in Business and English Literature. My 20+ years with computers and mechanical technology holds no water because my college of choice at 18 didn’t offer certified technical programs.

    Now, my options are to take 2 more years without an income to go back for my third degree (B.S., B.A., B.B.A.), since science labs don’t come in night class form or spend 4 years without pay getting an engineering degree to take the FE exam, ask to take a test I already know to certifiably do what I already know how to do. Either that, or I abandon patents or any idea of a job role past junior associate.

    I can’t say authoritatively whether reducing the barriers of entry world reduce cost (although a basic premise of my business education certainly suggests it), but I do know there is a tremendous perspective bias that affects patent attorneys which is certainly attributable to the homogenous educational background most receive. Bringing in new perspective is absolutely beneficial to clients and industry. Unless we’re to believe innovation can only happen by people who took slightly more science or engineering courses in college, we wouldn’t limit certification based solely on academic qualification. The rules most assuredly preclude subject matter experts and exceptional prosecutors from getting a foot in the door. I’d suggest this contributes to much of the echo chambering that has adversely affected the relationship of this industry to the technology sector.

    1. 1) The rules haven’t changed. Before I took a job writing patents I read the requirements for sitting for the patent bar. 2) The registration exam doesn’t test the science part but the law part. 3) I know a person from Germany who is a doctor in Germany, but she isn’t one here because she said it would take a year or two to study to pass the exams.

      Our whole system is structured to rely on these requirements. I was an adjunct professor at a university, but hadn’t finished my ph.d. Totally unfair I was not eligible to apply to be a professor. We should eliminate the requirement in all state universities that a ph.d. is required to be a professor. Plus, why is that you need to be a lawyer to teach law?

      Why do people need to be a doctor to prescribe medicine? Totally unfair. Why do people need to be a licensed engineer to build a dam? Totally unfair.

      The fact is that some people are good at anything. You may be very good at what you are doing, but the technical requirement raises everyone up and protects the client. The requirements haven’t changed and were there when you started your job.

      Sheeesh. Some professor who has zero experience with science, technology, innovation, and real patent law spits out some nonsense and we have to deal with this.

      1. There are plenty valid reasons for entry barriers in advanced professions. I’d be for including a fundamentals test for the non-technically-degreed. However, unlike pharmacists, surgeons, and structural engineers, no one is at risk of dying when a patent is ruled invalid.

        Although Marksman might be a lot more interesting if someone were.

        1. “no one is at risk of dying when a patent is ruled invalid.”

          A whole sht tonne of money is often at stake whenever a patent is ruled valid or invalid.

    2. “My 20+ years with computers and mechanical technology holds no water because my college of choice at 18 didn’t offer certified technical programs.”

      Sux brah.

      “Now, my options are to take 2 more years without an income to go back for my third degree (B.S., B.A., B.B.A.),”

      Oh come on, surely you can find a firm that would hire you while you take night classes. Horsehockey if not.

      1. It is not necessary to have a technical degree. You can qualify to sit the patent bar exam by accumulating science and technology credits. Most major universities offer credit-by-examination. It may take a little scouring but if you really know a subject, you should be able to find a school to give you credit. You do not have to get all the credits at the same school. I know someone who was an author of one of the well-known computer languages. Sat the exam. Passed. The PTO accepted the credits. There are also programs like CLEP. You can do it if you really want to.

    3. “since science labs don’t come in night class form”

      Ok, so they technically happen during the daytime hours. Surely you can find some firm that can spare you flexibly for a couple of hours during the daytime.

    4. As noted above, the problem is how does a government agency supposed to separate the technically competent from the incompetent? They can’t offer subject-matter exams in all areas of technology. But who can? Why, colleges can. The degree requirement is a rough filter which is better than no filter. No one benefits from technically incompetent attorneys prosecuting patent applications, but how would the PTO identify the competent non-degreed would-be registrants? It’s a difficult problem.

  30. Dennis: “[There is] a greater incentive to focus patents on the detailed technological improvement rather than some abstracted notion of the invention that was more the norm for past generation.”

    A remarkable statement. Truly.

      1. The entire quote is this: “A benefit of shift brought about by both the Courts (Alice/Mayo/Nautilus/KSR) and Congress/USPTO (administrative post grant challenges) is that there is a greater incentive to focus patents on the detailed technological improvement rather than some abstracted notion of the invention that was more the norm for past generation.”

        In KSR, they believed they had the detailed technological improvement in their patent ant their claims. It was not “abstract”. Ditto the others (or at least they thought so at the time). They can’t help that the law keeps moving the goalposts. Most times, like in Alice, where you can’t even determine where the goalposts are.

        1. PB: In KSR, they believed they had the detailed technological improvement in their patent claims. It was not “abstract”.

          I don’t think Dennis was suggesting that “abstraction” was the issue in KSR. Rather, the KSR decision has (or should have had) the general effect of narrowing the scope of patent claims which, in a functioning system, would mean pushing applicants towards drafting claims with more structural limitations than they otherwise might have included.

          But we all know what really happened. Hence the other cases Dennis mentioned (and more to come).

        2. PB: Most times, like in Alice, where you can’t even determine where the goalposts are.

          Speak for yourself. In most of the recent 101 cases that the CAFC has heard the ball was being kicked from the kicker’s one yard line and didn’t make it to midfield. bounced on the 30 yard line. I guess if you’re that far away from scoring the goalposts do look kinda small but they’re still visible.

  31. I think we should remove the requirement for an undergraduate degree to go to law school and the requirement that professors have actually studied the material they are being hired to teach and do research in. As well as wipe out all tenure so that others have a chance to be paid to teach classes.

  32. Remember that many of the attorneys who love software patents insist that the “real problem” with software patents is that the PTO needs to do “better examination.” To the extent that patents relate to the application of logic to data content in particular sub-fields not generally deemed to be technical (e.g., banking, accounting, advertising, being a friend, and other deeply complex scientific endeavors), it’s a no-brainer that hiring people with relevant non-technical backgrounds would greatly improve the examination of those patent claims.

    By the same token, it might be refreshing for some of the applicants in those areas to occasionally hear from a patent agent or patent attorney with such a background that the “innovation” in question is nothing of the sort. I suppose then those applicants would simply revert to using their born-yesterday patent attorney who believes that commerce and advertising and social networks didn’t exist until the invention of the “hand held computer” in 2005.

    1. By the same token, it might be refreshing for some of the applicants in those areas to occasionally hear from a patent agent or patent attorney with such a background that the “innovation” in question is nothing of the sort.
      Shouldn’t someone with a biotech degree be able to tell whether a new drug is innovative or someone with a chemical degree be able to tell whether a new compound is innovative? You presume that someone with a background in banking/accounting/advertising would be able to discern whether something is innovative or not in that art — a misplaced presumption.

      A background in the technology allows an attorney to discuss the invention using the language of the technology. Inventors are very put off by people who don’t know the basics. A technology degree gives a patent attorney many of the basics and/or at least a foundation by which to learn the basics. The problem with a non-technical person is (i) they don’t know what they don’t know, (ii) they don’t know the “language” of technology, and (iii) they cannot help the inventor separate the invention from the chaff because everything looks new to someone who isn’t in the art.

      1. Why112: Shouldn’t someone with a biotech degree be able to tell whether a new drug is innovative or someone with a chemical degree be able to tell whether a new compound is innovative?

        Absolutely.

        You presume that someone with a background in banking/accounting/advertising would be able to discern whether something is innovative or not in that art — a misplaced presumption.

        Let’s be careful with the strawman. I’m not presuming that everyone with “a background” in field X knows the entire historty of field X to every microscopic detail. I am presuming that people “with a backgrouund” are more likely to reliably identify the issues — especially the prior art issues — that are likely to cause problems for a particular claim versus people who lack that background. I don’t think that’s a misplaced presumption at all.

        An example of a presumption which is definitely misplaced is that all patent attorneys will happily do whatever the client asks them, including pretending to be born yesterday or pretending that a claim is eligible because you can drop a computer on your foot. Not everyone behaves like that. For some people, it’s not “all about the money.”

        1. I am presuming that people “with a backgrouund” are more likely to reliably identify the issues — especially the prior art issues.
          More likely? If that means that someone who knows 0.02% of the prior art is “more likely” to find prior art than someone who knows 0.01% of the prior art, then I agree with your presumption. However, it would be wrong to presume that either knows the prior art well enough to reliable identify any “prior art issues.”

          An example of a presumption which is definitely misplaced is that all patent attorneys will happily do whatever the client asks them
          Who makes that presumption? Not one that I’ve seen discussed on these boards or seen in practice.

          including pretending to be born yesterday or pretending that a claim is eligible because you can drop a computer on your foot
          No need to pretend when the USPTO grants those types of patents by the hundreds of thousands and of those that get enforced, the vast majority get enforced successfully. Do confuse your notion of what you want the law to be with what the law is.

          I have my own views as to what is patentable subject matter and what is not. I also have views that are different than that described by the current state of the law. However, I don’t let my views interfere with my representation of the best interests of my client. If I think there is a conflict between the current law and where I think the law is headed, I’ll inform my client of the differences and let them make the call.

          Telling a client definitely “you cannot get a patent on [this]” when another attorney could is quick recipe for a malpractice suit. A good attorney should strive to impart upon his/her clients knowledge about the relevant law: as it currently exists (not how that attorney believes the law should be).

          1. Telling a client definitely “you cannot get a patent on [this]” when another attorney could is quick recipe for a malpractice suit.

            It’s even worse than that as Malcolm as been on record as advocating open infringement of claims that he does not feel should be protected by patents. And not just individual examples, but the entire class of software.

  33. An embodiment is not an invention…. but I suppose the State “could” restrict patents to being directed at and protecting rights in specific embodiments only.

  34. As far as I can tell, his entire rationale for his statement that existence of the patent bar is “doing more harm than good” is based on his premise that “the technical education requirement limits the supply of legal services in the Patent Office, which generates higher prices that some innovators cannot afford”.

    Tenure is creating artificially high prices at colleges that some potential students cannot afford. Should we get rid of that too? (Colleges increasingly seem to think so.)

    Joking aside, the reality is that there already exists a low-cost alternative to hiring a patent attorney: hiring a patent agent. Does he really think that non-technical attorneys are going to charge lower rates to prosecute patent applications than patent agents?

    I am guessing that in an attempt to somewhat address this lurking elephant, he argues that legal expertise is increasingly necessary to prosecute effectively before the patent office (which I don’t disagree with), but he doesn’t really address why technical knowledge isn’t also necessary.

    Moreover, in arguing that technical education requirements are unnecessary, he argues that “the technical education requirement is unlike[ly] to
    provide substantial social benefits [because] efficient occupational licensing
    typically arises when consumers lack the sophistication to effectively
    evaluate the credentials of service providers”. He goes on to argue that consumers of patent services are sophisticated consumers, noting that “inventors as a group are likely more sophisticated than ever before at least
    insofar as the percentage of U.S. patents issuing to independent inventors
    has steadily decreased”, and that “by 2014, the percentage of patents issuing to
    individual inventors dropped to only 6%”. He even goes so far as to say that “[e]ven the small number of patents issuing to independent inventors may be of little innovative value”.

    Notably, though, these independent inventors are the only ones who are cost-constrained. His sophisticated inventors have plenty of funds to pay for patent services for promising innovations. Although his premise is that “the technical education requirement limits the supply of legal services in the Patent Office, which generates higher prices that some innovators cannot afford”, elsewhere he seems to be saying that the innovations of these cost-constrained inventors “may be of little innovative value”. This clearly would undermine his premise for eliminating educational requirements, as there would be little value in reducing costs to provide access for these independent inventors.

    Moreover, though, he is once again ignoring the reality that a low-cost alternative already exists. Is it the best alternative? Maybe not, but it is an alternative that already exists for low budget innovators. Would low budget innovators be better served obtaining patent services from a non-technical attorney than a technical non-attorney? This would likely depend on a case by case basis, but he certainly doesn’t appear to make a clear case that this would be so. Instead, he just argues that “[r]ather than assuring independent inventors that their patent practitioners are more qualified, the technical education requirement may be preventing some independent inventors from obtaining any patent representation at all”, which seems clearly at odds with the reality that patent agents exist.

    Overall, I think that at the margins there are probably some individuals who would do a perfectly fine job preparing and prosecuting patent applications who are excluded by the education requirements. There are plenty of others, however, who would do a terrible job. Would eliminating the requirement do more good than harm? I am doubtful.

    To me, stripping technical education requirements out of a registration requirement because you don’t think there are enough people with a technical education seems like a backwards way of looking at it. Instead, why not look at trying to figure out how to get more people to actually pursue a technical education.

    1. JCD: Would low budget innovators be better served obtaining patent services from a non-technical attorney than a technical non-attorney?

      As you admit, the answer is: absolutely, depending on the subject matter of the “innovation.”

      And likewise the PTO would be better served if it could hire Examiners without technical degrees.

      All this assumes, of course, that we need non-technical subject matter polluting the patent system in the first place. What’s the argument in support of that pollution? Please remind me again.

      Is it because “every patent creates a job”?

      Is it become “some filthy rich people like it that way”?

      What’s the answer?

      And please try to remember that nobody in 2016 is falling for the argument that “do it on a computer” turns non-technical subject matter into technical subject matter. Now if you’ll excuse me I need to get back to studying for my B.S. degree in determining whether venue is proper.

      1. Umm, what? I was more making the point that there are certainly individuals without a formal technical education who still have the technical knowledge necessary to effectively prepare and prosecute a patent application, while some individuals with the technical knowledge may lack the legal expertise to properly navigate tricky issues. I certainly wasn’t trying to argue about whether non-technical inventions should be patent-eligible.

        I see where you are going, but it’s not really something I’m interested in commenting on or discussing at this time, as I don’t think there’s anything interesting to say on that issue that hasn’t been said over and over again in more relevant comment chains.

        1. JCD: I don’t think there’s anything interesting to say on that issue

          In that case, you just wrote ten uninteresting paragraphs which dance around that issue.

          If the innovation that we believe we need patents to promote is limited to technical innovation, then it’s not unreasonable to require patent prosecutors, Examiners or even patent attorneys to have technical degrees. If we believe patents are useful for promoting non-technical innovations, then it’s absurd to require practitioners to have technical degrees.

    2. JCD why not look at trying to figure out how to get more people to actually pursue a technical education.

      Here’s an idea: how about we raise taxes on the extraordinarily wealthy and use the money to improve public acess to high quality science education instead of spending it on training people in the Middle East to kill each other?

      Nah. Too controversial.

  35. Can’t see how this proposal would change anything. If an inventor, a company, or whoever wants to hire a “patent attorney” with a B.A. in Renaissance poetry they should be allowed to.

    Wouldn’t effect me one bit.

    1. Wouldn’t effect me one bit.

      That would depend on the client who might otherwise hire you but chooses instead to hire that attorney.

      For instance, a client seeking to patent a “protocol” for automatically translating Renaissance poetry into a contemporary language might get far more mileage out of that other attorney (“protocols”, of course, being totally different from software and thus immune from challenge under Alice).

      1. Could you please end this one-track record?

        In fact, why don’t you design a system for automatically translating Renaissance poetry into a contemporary language, say Chinese, Russian, or Swedish? Let me know when you’re done and how difficult it was.

        1. “why don’t you design a system for automatically translating Renaissance poetry into a contemporary language, say Chinese, Russian, or Swedish?”

          Don’t have to design it in today’s patent system. Just say ya did and sign the oath for the application.

          1. I am going to respond to this clearly sarcastic remark because I think there is an important point to be made here.

            If an application claiming such a system which is not enabled in the specification could make it through the patent office, that is the fault of the patent office. Such a claim clearly should not survive litigation.

            However, because determining whether or not it is enabled requires actually reading and understanding the specification, it is much more common to see these types of applications simply be rejected/invalidated under 101. This does no one any favors, and actually just encourages even more of these types of junk applications, with the entities filing them feeling like those fighting for reasonable 101 jurisprudence on actual inventions are fighting on their behalf as well.

            1. “If an application claiming such a system which is not enabled in the specification could make it through the patent office, that is the fault of the patent office.”

              No, its the fault of the “believe the signed oath until it hurts” federal circuit standards for enablement.

              Even so, enablement is kinda not the point here. You don’t have to design the thing yourself precisely because it is enabled (as in someone could do it if they’re so inclined to put in all the hard work and money). May as well someone else do the actual implementing hard work :)

              “Such a claim clearly should not survive litigation.”

              Yes well after a million dollars is spent then I’m sure you could bring it right on down. But that doesn’t bother ye olde trolls.

            2. “Determining whether or not it is enabled requires reading and understanding the specification”
              Enablement is a function of both the disclosure and the PHOSITA. In practice, enablement comes down to arguments about the PHOSITA.

              NWPA probably thinks a limited poetry translation system is enabled by the mention of an “expert system” with no further details.

      2. “That would depend on the client who might otherwise hire you but chooses instead to hire that attorney.”

        True. But as I don’t do that type of work, like I said it wouldn’t affect me one bit.

    1. There are locations where you can take the FE exam without proof of any engineering education.

      This practically negates Professor Hubbard’s argument. It also undermines all the graduates of top-ten law schools who could write timed essays appreciated by law professors and now litigate patents without feeling the need to take the patent bar.

      If you can’t pass the FE exam, you don’t have the technical ability.

  36. This would only have the effect of allowing more competition in an already fiercely competitive marketplace. The patent bar has already give away its primary cause of action to the administrators; any measure such as this should be opposed.

  37. >B.A., Dartmouth College

    Looking at his resume he has no real world experience. No understanding of innovation, technology, or science, but somehow feels he is qualified to write paper and suggest big changes in the patent bar.

    Oh wait, he graduated from Yale so he must be smarter than the rest of us.

    1. The combination of Dartmouth and Yale probably does mean he’s smarter than the rest of us. It doesn’t mean he’s right, though.

      1. No, it doesn’t mean he’s smarter than the rest of us. You are mistaken if you think you completely peaked when you took the SAT or the LSAT yet didn’t get into a top ten law school with at least a 3.6 from a top state university.

        He had very high grades in math. It might mean his parents had STEM degrees and as a result he was two years ahead in math with respect to most everyone else.

        He didn’t like doing a math PhD and wasn’t a partner at Alston & Bird.

  38. I used to feel the same as Prof. Hubbard. After law school, I felt like a second class patent litigator because I didn’t have a science degree and couldn’t get admitted to the patent bar. Eventually, I went back to school, got a science degree, and was admitted. Now I know that without that scientific knowledge, I really was a second class patent litigator. Without an understanding of the science behind a patent, there’s really no way to understand how it relates to the prior art and whether there’s novelty, obviousness, or infringement (utility is kind of a gimme). Sure you can learn the science behind a single case, but that’s like looking at one tree and missing the forest.

    1. You were a patent litigator and went back and got a degree? That’s very impressive.

      I was an EE and tried to get part of my master’s while working as an engineer. That was freaking brutal.

  39. Bar membership is not for the benefit of the attorney. It’s for the protection of the attorney’s potential clients.

    1. In theory, perhaps. But in reality, we all know that most licenses are at least partially a barrier to entry set up to protect the established members of the profession. To protect society’s interests, if we are going to require attorneys to demonstrate legal acumen through the patent bar, why not require them to also demonstrate basic scientific acumen through a generalized science-based examination? One could envision two paths to satisfying the technical component of patent proficiency: the current system of checking academic bona fides and the technical exam suggested above. If you can satisfy one or the other, you can register as a patent attorney (or agent).

      1. “why not require them to also demonstrate basic scientific acumen through a generalized science-based examination?”

        We do, that is just outsourced to the university they went to for their technical degree.

        1. Sorry. I was not very clear. I’m talking about two parallel paths to satisfying the technical requirement: a general science/tech exam or the traditional degree and/or coursework component. Certainly, the latter is outsourced to universities, but the former need not be.

  40. What a ‘great’ idea.

    Perhaps his next article will suggest removing science/technical education requirements for those applying to medical school in an effort to reduce costs associated with the practice of medicine.

      1. Here come the bait and switch—EXACTLY.

        I question the premise (the patbar does more harm than good) AND the supposed logical outcome for eliminating the patbar (so doing would allegedly reduce costs associated with the practice of patent law).

      2. he government does regulate (indirectly) what is in the curriculum of medical school. That is a better analogy. The registration examine is not an entrance examination but an examination to actual practice law.

    1. Removing those requirements would have no meaningful affect on costs. The MCAT more than sufficiently differentiates technical background for basic concepts. The requirements appear to be there to prevent kids who can’t get a C in BIO201 from wasting their time.

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