Patentlyo Bits and Bytes by Anthony McCain

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About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering. anthony.mccain@patentlyo.com

23 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. All, as we know the framers provided for patents in the U.S. Constitution in order to incentivize invention in the United States (as opposed to in England or anyplace else in the world). However, since GATT-TRIPS, and in particular going from first-to-invent to first-to-file, we seem to forget this simple fact. We took out of the system any advantage for U. S. invention. Without such an advantage, managers of large corporations can locate R&D anywhere in the world with impunity.

    I think the incoming Trump administration might be open to restoring a portion of the first to invent system by providing a robust grace period for U. S. inventors. I was working on the language of this this morning, and I would like to put forth for comment here. It was should be taken as an addition to the current grace period that is somewhat limited to disclosures and on sale bar’s of the applicant.

    There are two major problems that leap out: First, in the interest of transparency, how much should we ask applicants to disclose in their applications about the dates of prior invention considering that we are not going to allow interferences. Second, when we remove patents and patent applications having an earlier filing date as prior art, what happens if they too disclose and claim the same invention? I think the best thing is to simply declare that the first-to-file a claim to that subject matter has a right to the claimed subject matter which then becomes prior art against the second-to-file. (Priority is different from prior art.).

    One-Year Grace Period for Prior Invention in the United States

    (a) Prior art having a date less than 1 year prior to the effective filing date of claimed subject matter shall not be effective prior art against such claimed subject matter that is

    1) conceived or reduced to practice in the United States prior to the date of said prior art; and which is

    2) not reduced to practice more than 2 years prior to the effective filing date of the claimed subject matter.

    (b) In the event that 2 different United States patents disclose and claim the same subject matter, the subject matter of the first to claim the subject matter shall be prior art with respect to the second to claim that subject matter.

    The exclusion of subject matter reduced to practice more than two years prior to the effective filing date reflects current law that subject matter that is not filed within two years of reduction to practice is deemed abandoned. Note that location of the reduction to practice is irrelevant to the issue of abandonment.

    I think we might require that applicants at least claim that the subject matter of the claims was invented in the United States so that the examiner would know that there is a potential exclusion of prior art less than one-year-old.

    Finally note, in order to prove entitlement to “prior invention,” all one have to do would be to show either prior reduction to practice or conception, and not conception plus due diligence etc.

    1. Finally note, in order to prove entitlement to “prior invention,” all one have to do would be to show either prior reduction to practice or conception, and not conception plus due diligence etc.” (emphasis added)

      What is the basis for this change to the well known understanding that invention requires more than merely conception?

      It seems that you are revisiting (in cloaked terms) the lesson that you have refused to learn from me vis a vis “inchoate rights

        1. Paul, except, there are no priority contests. There is no beating reduction to practice with conception. The first to file still gets the patent.

        1. It is not a “quasi-reduction,” Ned.

          It is a constructive reduction.

          And you need to do that, else, conception alone remains NOT invention.

            1. No Ned – you do not get to redefine the term and call it “quasi” and then turn around and omit the term that you are attempting to redefine and have your “definition” of invent to be only conception.

    2. [A]s we know the framers provided for patents in the U.S. Constitution in order to incentivize invention in the United States (as opposed to in England or anyplace else in the world).

      Hm, a couple of responses here:

      (1) Do we know this? How do we know this? Federalist #43 just says that patents are a good thing. I do not see anything in there about invention in the U.S. being preferable to inventions from abroad. What should I read to convince myself that the framers had a preference for domestic invention over foreign invention?

      (2) Assuming that the framers really did have a preference for domestic invention over foreign invention, is there a particular reason why we should still care about the distinction. The framers lived at a time when Mercantilism was still a consensus view among the educated classes, but then so also was the Humorist theory of medicine. Even if the framers did embed their Mercantilist presuppositions into the IP clause, should we pay them heed in view of what we now know—but they did not—about economics?

      From where I am standing, it seems to me that we should be somewhat indifferent about where an invention occurs. If an Italian genius working in Milan can contrive a cure for HIV, we should want to incentivize that genius properly. It would be working against our own self interest to say “we do not want that HIV cure unless it is invented in a lab in Passaic NJ.”

      1. Greg, what we know what the framers intended it because the first statutes allowed only Americans to own patents.

        Regarding promoting invention outside United States, the problem is I see it in the modern world is that we need to promote invention in the United States. From the big corporation point of view, big companies today can locate engineering jobs anywhere. There are no disadvantages at all from a patent law point of view in doing so. With a level playing field, the engineer coming out of school has to compete against the whole world to find a job. If we really wanted to incentivize R&D in United States, we would not do such foolish things.

        Furthermore, why in the world would be spend billions in tax deductions to incentivize R&D in United States unless we believe doing so benefited America? If we are willing to do this for R&D in United States using tax dollars, why would we not assist this project by tilting patent laws and favor American invention? It makes no sense not to do so.

        I wonder if those in Congress who care about American R&D understood what they were doing when they passed the AIA?

        1. [T]he first statutes allowed only Americans to own patents.

          Hm, I confess that this rather threw me. That was not my understanding. I was under the impression that we have always granted patents to foreign citizens of nations whose laws permitted U.S. citizens to obtain patents.

          I am not saying that you are wrong, only my understanding is different than what you are presenting. Could you point me to an authority for your assertion? I do not see any provision that really speaks to the point in the text of the 1790 Patent Act, which says merely that “any person or persons [may petition] to the Secretary of State… that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used…” (emphasis added). That “any person” does not, on its face, appear limited to U.S. persons.

          1. Greg, 1793:

            SECTION 1. Be it enacted by the House of Representatives of the United States of America in Congress assembled, That when any
            person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application …

            Greg, this is also where both “new” and “composition” were added, “not known or used” being retained. The prohibition on not known or used was deemed insufficient to prevent the patenting of compositions that were not “new.” This illustrates just how bizarre In re Bergstrom really was.

            1. A couple responses:

              (1) I am not sure how probative the 1793 Act is of the point you are advancing: viz. that the framers wanted to incentivize invention in this country. It seems to me that this argument turns inside out like a sock. One way you could read it is that an early Congress wanted to limit patents to citizens. Another way to read it is that the earliest Congress did not want to so limit it, and then a later Congress (not the framers), swayed by the ascendent spirit of Mercantilism, added a limitation that was unattested by the framers themselves. I am not sure that this really lays the sort of foundation you need for the earlier assertion that “we know the framers provided… to incentivize invention in the United States (as opposed to… anyplace else in the world).”

              (2) I do not really disagree to your point about Bergstrom, but I will respond to that point on the other thread.

  2. Here is a small fix to the Patent Office.

    No Patent Examiner shall have signatory authority until he/she takes and passes the Registration Examination.

    The current practice of giving an Examiner credit for having passed it by virtue of having worked as an Examiner is nuts.

    As an option an Examiner who fails to pass the Registration Examination after three tries will be terminated. (Not just fired, but terminated.)

    Note that getting registered also requires “good moral character and reputation” That will be a deal breaker for some current Examiners.

    1. Not just fired, but terminated.

      Set up a gibbet on that quadrangle in front of Director Lee’s office? That seems overly harsh… 😉

    2. Every examiner has to pass the Certification Exam, which is basically the same as the registration exam but with fewer questions (50, with 70% required to pass), in order to be promoted to GS-13.

      1. Why do the Examiners get their own test?

        Is it because they cannot pass the same test that everyone else has to take?

        How many questions on the Examiner’s Test are about Performance Counts, vacation policy, and where are the bathrooms?

  3. link to nytimes.com

    link to nytimes.com

    the movement to fact-check the internet is a left-wing conspiracy whose real goal is to censor the right, and therefore must be resisted at all costs.

    And until I started reading the comments at patent blogs, I never would have believed that patent attorneys were so ign0 rant that they would believe stuff like this.

    Boy was I ever wrong! LOL

    But it explains why so many patent attorneys are so “confused” about the basics of subject matter eligibility jurisprudence. And it explains why a certain subset of those get really worked about it.

    1. MM, I have direct quotes from the Russia foreign ministry about Obama and his sanctions that cannot even pass the filter. Let us just say, that the comments regarding Obama are not flattering, calling his administration one of illiterates and losers.

      Here are some remarks from Britain on Kerry:

      “While Britain voted for the UN resolution that so angered Netanyahu and says that settlements in the occupied territories are illegal, a spokesman for May said that it was clear that the settlements were far from the only problem in the conflict.

      In an unusually sharp public rebuke of Obama’s top diplomat, May’s spokesman said that Israel had coped for too long with the threat of terrorism and that focusing only on the settlements was not the best way to achieve peace between Jew and Arab.

      London also took particular issue with Kerry’s description of Netanyahu’s coalition as “the most right-wing in Israeli history, with an agenda driven by its most extreme elements.”

      “We do not believe that it is appropriate to attack the composition of the democratically-elected government of an ally,” May’s spokesman said when asked about Kerry 70-minute speech in the State Department’s auditorium.”

      1. the Russia foreign ministry about Obama and his sanctions that cannot even pass the filter. Let us just say, that the comments regarding Obama are not flattering

        Why on earth do you think that I or anyone else would care that the “Russian foreign ministry” said something “unflattering” about Obama after Russia was sanctioned for hacking US elections?

        London also took particular issue with Kerry’s description of Netanyahu’s coalition as “the most right-wing in Israeli history

        LOL. That’s nice.

        We do not believe that it is appropriate to attack the composition of the democratically-elected government of an ally

        ROTFLMAO

  4. This method of presentation involves storing and processing applications or parts of applications at a user’s local personal computer rather than at a remote server. This helps avoid possible server bandwidth issues that can be caused by the server being required to serve too much data to multiple users simultaneously

    Oh lookie! It’s that marvelously totally not junky “distributed computing” concept again! So trendy! So hot!

    Wowee zowee! Whatever will these scriveners think up next? Truly the best and the brightest. The world just revolves around their awesome cleverness! Sooper dooper techno stuff.

  5. Setting aside the laughs about who this cr@p is actually being marketed to ….

    The Verge reports that Faraday Future does not own its intellectual property, and that it is instead owned by a separate entity called FF Cayman Global.

    Who owns FF Cayman Global? And what difference does it make if this “IP” is (as expected) a pile of junk?

    Chinese internet company LeEco, which is also building its own car. LeEco CEO Jia Yueting is a personal investor in Faraday Future.

    LOL

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