Even the most ardent supporters of the current US patent system will readily admit that the patent examiners do not see or consider all of the relevant prior art. This is a growing problem for patentees with important or valuable patent rights as (1) courts increasingly see invalidity as the most likely non-settlement outcome of patent litigation and (2) the Supreme Court questions whether the clear-and-convincing standard for invalidating a patent applies when the USPTO failed to consider relevant patentability questions.
One project directed toward assisting the USPTO in improving its examination is the Peer-to-Patent project operated through New York Law School (NYLS). The USPTO and NYLS have just announced a new expanded Peer-to-Patent project that will open-up 1,000 patent applications to "peer-review" through a novel prior-art submission and commenting system created as part of the project. To be clear, Peer-to-Patent is not intended to replace the patent examiner's role or the USPTO's examining authority. Rather, the system is designed to support examination by providing prior art deemed important by the peer community and by generating a discussion of how that prior art is related to the invention as claimed. According to the USPTO press release: "Volunteer scientific and technical experts [will] discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination." Although the written comments & discussions are not sent to the patent examiner, examiners will be free to read those comments as part of the examination process.
Gold Plating: For applicants, Peer-to-Patent offers a potential mechanism to bolster the credibility of their patent rights. I can imagine the patentee's top litigator explaining to the jury that — in addition to the ordinary rigorous examination process — the applicant volunteered its patent for the gold-standard of academic review — public peer-review. Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection. They would rather have a likely invalid patent than no patent at all. I do not believe that pessimistic view is representative of most of patent applicants. Instead, most applicants have reasons to believe that their inventions are patentable and prefer strong, predictable rights over facially questionable ones. The pessimistic view also presents a false patentable/unpatentable dichotomy. Rather, in the prior pilot, adding Peer-to-Patent to support examination most typically lead to narrowing amendments in the claim scope. The final claim issued set is hopefully one that is more likely valid while still being valuable to its owner.
It is unclear to me whether a negative inference will also be created — with judges inferring that a patentee who failed to participate in the peer-review system did so because of a lack of confidence in the patentability of its invention.
Accelerating Examination: In addition to the "gold plating" perception discussed above, it appears that the USPTO is offering a queue-jumping incentive to participating patent applicants. Applications that are part of the program will be "advanced out of turn" for initial examination on the merits. Following this approach, application submissions for the first pilot ended in June 2009 and all of those applications have received at least a first action on the merits.
Objections: Over the past week, I spoke with a number of participants in the earlier US Peer-to-Patent pilot. I was initially concerned that the reviewer-comments might look like ad hominem attacks with little factual support (as often seen on certain blogs). Others were concerned that they would see a tremendous flood of prior art that would greatly increase the workload of prosecuting attorneys. Neither of those concerns were realized. Rather, the reviewers and review communities appeared at with a high level of professionalism, and only a few of the applications under review received more than six prior art submissions.
Patent Attorney's Duty: At this point in the project, I suspect that patent attorneys and agents are almost under an ethical duty to inform their clients of two-aspects of the project: (1) that applicants can volunteer their own applications for peer-review in the project (under a fairly tight time-schedule discussed below) with the benefits and objections discussed above and (2) that the patent applications of competitors may be available for peer-review. In the US there is almost no history of third-party participation in the initial patent examination process. That approach is almost unique in the world. As an example, applications at the Japanese Patent Office (JPO) are open for third-party submissions. Over the past year, the JPO has received third-party submissions of prior art in over 8,000 pending cases. Most of the time (~75% of cases), the submitted prior art is used by the JPO examiner in making a rejection.
Details of Participation in the New Pilot: The new pilot, which begins next week, relies upon patent applicants to volunteer their cases for review. The real timing trick is that applicants must file a consent-to-participate with the USPTO 30–days of publication. (Consent can be filed before publication; there is no fee). Eligible applications must be published between September 23, 2010 and September 30, 2011. Once the peer-review begins, it will continue for a three-month period. The pilot has expanded to include software, business methods, biotechnology, bio-informatics, telecommunications, and speech recognition technologies. To participate, the application must have been classified in one of the following technology classes: 260, 370, 380, 424, 435, 455, 504, 514, 518, 532, 534, 536, 540, 544, 546, 549, 554, 556, 560, 562, 568, 570, 702–705, 709, 713, 726, or 987. The program will have a limit of 1000 participating applications with no more than 25–applications per company.
Links:
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OG Notice explaining rules [Not yet available]
Ping I will be testing my e f and g theory shortly. I have already identified two patents that are most interesting.
Bob,
I ha_te to say that you be part of the problem, caving in like that, but I understands money don’t grow on trees for everyone out there.
Just a cryin shame that “my supervisor says” kinda crrp still flies.
If the Peer-to-Patent program worked like it was intended, it would be a great resource for finding prior art and making the patent office more efficient. Unfortunately my experience is that the program creates more problems than it fixes. Two people posted “invalidating prior art” for my patent application. This art was related to the invention, but definitely was not invalidating. The posters did not understand patents, and it appears they did not even read the patent claims. However, the patent examiner told me that her supervisor did not want to issue a patent that had been publicly noted to be invalid and so after months of arguments I had to arbitrarily narrow the claims to get allowance.
Kenny,
Do you know what Q.E.D. means?
You give new meaning to the phrase “grandfathered in,” cause aint no way you’d pass a bar now.
I will even go one further. According to historians the Ex Post Facto clause was intended to apply in both criminal and civil contexts. Here is another for ya, the 13th Amendment. There are many activities that the government requires which clearly violate this law. In fact the memorandum from Mr. Moatz about having to read every page of every reference before submitting the same pretty much violated the 13th Amendment. In addition, health insurance companies that discriminate against people because due to being genetically disposed to a disease also violates the 13th Amendment. The 13 Amendment is the 19th Century’s mind’s way of say thought shall not discriminate based upon genetic makeup.
Let us go to the e f and g exclusions for obviousness pursuant to 103(a). Those execeptions without a doubt violate both the Fifth Amendment Due process clause for lack of any rationale basis for discriminating against people exercising thier First Amendment Fundamental Rights to free association, as well as the First Amendments Free Associational Rights. You might find this suit interesting on this point. link to newswithviews.com
This lawsuits tests by analogy the free associational rights impeded by Obamacare. The Federal Government does not and must not coerce, induce or otherwise be allowed to affect person free associational rights. Obamacare is the second time in United States history where the government discrminates against people who exercise their free associational rights that choose not to associate with another private person. The e, f and g exceptions for purposes of obviousness under 103(a) is the first.
Q.E.D.
Malcolm:
I am an American. I have always been an American. All governments must adhere to the Constitution. It is not libertarianism it is constitutionality. I question your understanding and/or adherence to the constitutional principles upon which this government must adhere.
Kenny,
You forcing me to agree with Malcolm in thinking that you don’t have all your marbles.
Then again, I think you been this way way before Malcolm chimed in, so actually Malcolm is thinking like me, which is OK.
Ken, do you not have a driver’s license and refuse to pay taxes or are you one of those people that recites libertarian crxp but doesn’t walk the walk?
Ping, ping, ping you miss the point. If the government induces one to reliquish propery in furtherance of a right and that right is obtained through sacrifice of property and, more importantly time, and the risk that said right is valueless in increased by the actions of the government then that is definitely a taking were the right to become worthless and but for the change in risk the right would still have value.
This is the problem with controlled inflation. The more control asserted by the government over the rate of inflation the greater the likelihood that a taking occurs when the inflation devalues property.
Thanks, Malcolm.
I was so stunned by the videos I forget to check out the FAQ pages.
I read the decision and it speaks of copying claims. I will continue to try to find it.
Ya need to apologize more often and for far more things Sunshine. Your aptitude for “Fail” be quite legendary.
Dontcha know that most everyone also feels that your posts are “pollution and nothing more”?
I’m not talking about “feelings.”
I’m talking about incessant and objectively pointless nonsense. I should have predicted you would be the first to jump in to defend it, ping. I apologize for failing to do that.
Hey Sunshine,
Dontcha know that most everyone also feels that your posts are “pollution and nothing more“?
Dontcha know that sarah needs her forum every bit as much as you do, if not more?
You would be wise to pay more attention to sarah. At least she has real integrity.
now sarah, you were saying…
Hey Moonie,
I know there was a Design Patent involved. Even though I haven’t had the pleasure. I also know that I am still in Chains to try to expire YET ANOTHER STATUTE.
And if the second is worthless then why won’t he let go?
Dennis, can you please block Sarah McPherson from commenting?
It was never funny and lately its turned into pollution and nothing more.
BUT if it was all a Ruse. And Blue Eyes was made to appease. And it came out of Texas. Then the short guy is as guilty as them. And also why he was protected. And that is why he won’t let go. And if someone filed a design instead and ruined my rights then I still know it came out of Texas. And it was done for the Designer.
And sticky fingers only tried to stop the second Fraud.
I have no questions for you.
And kenny,
You misunderstand the nature of the change – “However, it cannot do so without just compensation if it devalues a person’s property interest.” the change is not in the concept of devaluing a recognized entity, it is in the actual recognition of the entity itself.
Ya don’t get the value difference between a good patent and nothing if “nothing” is what ya shoulda had in the first place.
sarah,
You are not (and have never been) my client, although you do deserve my services.
I’m sorry. My responses are limited. You must ask the right questions.
Next time you promise a Client(?) you don’t bend or break. get the “Whole Story.” You should get that before you make such erroenus statements and /or promises to someone as you claim to help, and that you have no hands in their Pocket. I know there are no pockets to pick here. Mine were already picked.
Ping you just don’t understand the Constitutional Republic. Of course the government can make fixes. However, it cannot do so without just compensation if it devalues a person’s property interest. To do otherwise would be socialist.
Does anyone know how many Rule 1.99 submissions the PTO receives in a given time period? (Not many I’d guess). Does anyone know where to find such information, short of filing a FOI request?
We can deal with this argument in Court. I am not going to go round and round with you.
two for Tuesday:
for sarah
Then it’s easy to believe
Somebody’s been lying to me
But when the wrong word goes in the right ear
I know you’ve been lying to me
It’s getting rough, off the cuff
I’ve got to say enough’s enough
Bigger the harder he falls
But when the wrong antidote
Is like a bulge on the throat
You run for cover in the heat
Why don’t they
Like I said even if I tried to decipher that i’d get
scattered
memory
catching or not depending on the speed
nightmares
Maybe, someday
I’ll be more together
Stretched by fewer
Thoughts that leave me
Chasing after
My dreams disown me
for sarah
broken tags, mighty careless of me.
Malcolm,
Sunshine, howza bouts a return of Reject-Reject-Reject and Dufass? Would that make ya happy?
Ya just don’t get it do ya? The reason for the RCE component of the backlog is cause applicants recognize that they haven’t gotten the quality product they originally paid for. In essence, there already,/i> be a fee increase, when applicants pay again with the RCE fee. Neither hiring more examiners nor raising fees addresses the fundamental issue of quality examination.
Your Beauregard windmill is a complete non sequitur. Ya still got 6 in your head there, and it’s starting to smell.
Kenny,
Even to a pro-patent person like me, your “taking” argument sounds more like gibberish from The World’s Greatest Inventor (who must be off inventing since we haven’t heard from him in quite awhile) and less like any type of position based in any type of real world law. You be advocating an absolute no-error correctin type of system is just whack.
Anon and Anon As Well,
It be even worse when ya factor in that those numbers are backlog numbers only and that only roughly 10% of the supplied art was even used by examiners – On the grand scheme O things, the program’s actual effect approaches zero. Even still, that program be a step up from Malcolm’s happy windmill chasin efforts of noting bad patents on a blog comment section.
Maxie,
Oh how them masters must love seein stats like those here that show all teh smoke and mirrors. What be the next rabbit to be pulled from the hat?
one would shudder to think how big the backlog would be if we were not in the greatest recession of the modern era.
Indeed. Of course, the recession is going to be with us for quite a while because the worst is still yet to come out of the housing crisis.
For many reasons, hiring more examiners and raising fees is surely the best of all the proposed alternatives to reducing the backlog, except for an immediate reversal of the PTO’s position on Beauregard claims.
Courtenay Can an applicant sign up for p-t-p and review his own application?
This is addressed in the FAQ on the PTO’s P-t-P webpage:
“Yes, any member of the public that is not a USPTO employee may participate in the pilot including the submission of commentary.”
When a government agency undertakes a process that devalues the actions already taken by it and paid for by the public this constitutes a taking. This is why I believe intentional inflation sanctioned by the Federal Government vis-a-vis the action of the Federal Reserve constitutes a taking pursuant the Fifth Amendment. In a similar manner a patent currently in force and subsequently seemed to be of less value becasue of a new procedure that is advertised to remedy past wrongs by the USPTO is, in my opinion, a taking pursuant to Fifth Amendment Due Process Clause.
Just a thought.
I took a closer look at the program process this weekend, and summarized some points here.
link to pharmapatentsblog.com
Can an applicant sign up for p-t-p and review his own application?
It could be quite beneficial for patent examiners to receive prior art from this peer review program. My question, however, is whether they will actually review it. At least one recent study has indicated that patent examiners often disregard prior art submitted to them by applicants. If examiners similarly tend to ignore third-party prior art, I’m not certain how influential this program will ultimately be.
From a February 2008 news article:
“Even with its increased hiring estimates of 1,200 patent examiners each year for the next 5 years, the US Patent and Trademark Office patent application backlog is expected to increase to over 1.3 million at the end of fiscal year 2011 the Government Accounting Office reported today.
The USPTO has also estimated that if it were able to hire 2,000 patent examiners per year in fiscal year 2007 and each of the next 5 years, the backlog would continue to increase by about 260,000 applications, to 953,643 at the end of fiscal year 2011, the GAO said.
Despite its recent increases in hiring, the agency has acknowledged that it cannot hire its way out of the backlog and is now focused on slowing the growth of the backlog instead of reducing it.This too is but one of the goals of the Patent Reform Act currently making the rounds in the US Senate and generating tons of concerned comments about the current trends and directions of the USPTO.”
Given that the Senate action died, was reborn, died, was reborn (repeat annually), and that the Office is nowhere near its 1,200 new examiners per year, let alone the 2,000 per year figure (we are still at a negative net growth rate, aren’t we?), one would shudder to think how big the backlog would be if we were not in the greatest recession of the modern era.
For a rough comparison of this less than one per month number, it was reported in the fall of 2009 that the backlog of unfinished applications at the Office reached 1.2 Million, climbing roughly 800,000 in the last decade, which if you take a purely linear estimate, that would be 6,700 applications per month constantly over that ten year period.
There are bigger holes in the dike to be concerned about than the finger of Peer-to-Patent can even begin to think about approaching. The orders of magnitude difference here is mind-blowing.
Anon,
It’s worse than that – if you also figure in the duration that each application was open to the public to receive the discussions and prior art, you can easily see that the rate of interaction for each was less than one interaction per month per application.
Less than one per month per application.
This went on for 26 months before the plug was mercifully pulled.
I am not sure why the Office thinks the results will be different this time around.
I’ll tell you why. It is like this:
Every top rank Patent Office in a democratic country has its political masters. These masters regularly demand to know of their civil servants “What are we doing to stay ahead of the Chinese? Patent Office in country X is doing something. Why are you not doing at least as much as it is?”
Hence the absurd PPH and the absurd P-t-P programme. Both useless, except to placate the masters. But placating the masters is vital, because the masters hold the purse strings.
An associate of mine, light and somewhat idle, decided to crunch the numbers available on the Peer-to-Patent website.
As if the pronouncements at link to ipwatchdog.com were not indicative of just what a “boondoggle” this program is, consider these numbers from Version One, running just over two years (26 months) and failing to obtain even a “D” grade on the rather minuscule goal of 400 applications (57%):
Average number of discussions per case: 3.3
Average number of pieces of “prior art”: 2.5
Not “thousands of”, not “hundreds of”, not even “tens of” discussions and “prior art” were generated for each application on average. You don’t even need the thumb on your left hand to show the results.
For all of the clamoring on the anti-software patent websites about the loads of prior art available, its downright amazing that somehow no one could take the time to stop complaining and actually do something about it.
The term “vocal minority” appears to not even be applicable, when the deafening whisper of participation makes libraries seem like rock concerts.
For “certain websites” remaining unidentified, but beginning with Patently and ending with O, the sum total of conversations for the entire program of version one is about half of the unfinished current month.
Someone please tell me why we are resurrecting this program?
“only qualifications to be a peer reviewer appear to be the ability to make up a pseudonym and create an email account”
Ohhh Malcolm, you be all set.
Ya got the pseudonyms.
Ya got the email accounts.
Ya don’t know the science.
Ya base your opinion on reading claims.
Your annotations are not funny or even clever.
Ya always have an opinion that the claims don’t merit a grant of United States patent.
This be like a career wind(mill)fall for you. Just think abouts all those fields of rye for you and your donk ey.
Oh jeez! Now that this is opening up to biotech applications I will have to figure it out. Until I have time to read and digest all the materials, here are my favorite quotes from the Peer-To-Patent training video:
“you don’t have to know the science to be a useful reviewer”
“Now that you’ve read the claims, you might think that they sound familiar.”
“Eureka! You’ve found that journal article that describes exactly the same idea referenced in the claims.”
“Your annotations don’t need to be funny, or even clever, but it does need to tell the examiner whether the claims are new and a sufficient enough advance over what came before to merit a grant of United States patent.”
Oh, and its really cool that the only qualifications to be a peer reviewer appear to be the ability to make up a pseudonym and create an email account.
I have a surprise for you.
sarah,
You should know better – It be me laughing away at the quartet. Of course, I watch where I walk, soza I don’t step in the steaming piles – some learn by steppin and scrapin, others by watchin those who have to scrape.
And is that you following with the Shovel.
Thanks for the link above Malcolm, but the real gem on that thread was a bit below. Here let me make it easy for ya:
“The gathering of idiots is complete.”
I can envision the gathering as the four horsemen – in a Monty Pythonesque way:
Led by IANAE, the only one capable of actually riding a horse.
Maxie – riding his horse backwards, always looking in the wrong direction.
6 – typically falling off his horse, catching his foot in the stirrups and being trampled by his own horse.
And far off in the distance, there is Malcolm on another frolic, his horse actually being a donk ey.
Posted by: ping | Oct 11, 2010 at 07:31 AM ”
Me quoting me – oh how scholarly.
if you were an accused infringer, your goal would be to try and invalidate the patent by using the patent as the blueprint/reference for determining obviousness.
I believe the law requires all references/prior art be considered as potential options for solving the problem which the inventor tries to solve through his/her invention.
have i understood the law correctly?
“And btw, determining the scope of the prior art has quite a bit to do with invalidating a patent according to the USSC.”
There is a relationship but its implied. A search is not meant to be conducted for the purpose of invalidating the patent, though.
“does nobody think that the real objective (as required by the law) is to determine the scope of the prior art which has nothing to do with invalidating a patent?”
lulz, a search does not even come close to determining the scope of the prior art. It determines a small scope of some of the prior art during the best of times.
The “purpose” of the office’s search is to give AN APPLICATION (not an issued patent) a once over with respect to 102/103.
And btw, determining the scope of the prior art has quite a bit to do with invalidating a patent according to the USSC.
why do some of you think/believe that the purpose of conducting a search is to invalidate a patent?
does nobody think that the real objective (as required by the law) is to determine the scope of the prior art which has nothing to do with invalidating a patent?
Posted by: 6 | Oct 20, 2010 at 05:42 PM
Never underestimate the ability of certain examiners to read your mind. 😉
you’ve never seen me analuze claims
Uh, yeah, ping-a-ling. That fact and your incessant whining when anyone else discusses a specific pretty much tells us all we need to know.
I think you got it now. But I also know you won’t admit it.
This is can’t be good for Actual Inventors.
6: I have for you another tip. When in a hole, stop digging. And what illusions are PTO management feeding you (or allowing you to run away with), to keep you motivated? I worry, because I detect your developing an inflated idea of your own importance and omniscience and infallibility.
df
To IANAE, I like your thought about offering my clients “gold plating” also at the EPO. Always interested in ways to “add value”.
The puzzle for many attorneys looking at the EPO from the USA is this: In Europe, there is no Duty of Candor. So, many are disinclined to show the EPO any art at all. “If we don’t have to, why should we?” they cry.
Up to you, I can flippantly reply, but before you decide, consider these factors, at least:
1. EPO Examiners now routinely have a look at the USPTO file history
2. Amendment at the EPO, pre-issue, is a cake walk compared with attempting a curative amendment in post-issue disputed proceedings. Best go to issue with all the best art already behind you.
3. Those fancying a post-issue attack on validity will be dismayed and deterred, if they find that their art is no better than what was already assessed by the Examining Division (3 members, recall) prior to issuance of the Notice of Allowance. Post-issue tribunals give no deference to EPO Examining Divisions but, nevertheless, they ain’t going to contradict them just for the fun of it.
You see, I think naked self-interest is the best tool. Not just sticks, because carrots work better.
“But, in a field in which you know little or nothing, hesitate to label others as such, in case you reveal yourself as the biggest one around.”
When you learn what “gold plating” is all about then I’ll stop referring to you a mor on.
“So, what solution do you offer? Do you really think that the other arts are any better? What if an art unit slip down to the level you contend the computer arts are at, does that mean we should get rid of all patents for that art unit?”
I’I can’t speak for MM but I believe he would contend that it is likely impossible for other AU’s to “slip down to the level” he contends software and business methods “are at”. This likely being because of several things including, but not limited to, subject matter eligibility, and type of claim limitations permitted.
I would also suggest that yes, he probably feels that getting rid of patents in those AU’s would likely be called for.
“…but are not capable to also look at an extra half-dozen references submitted by biased, anti-patent competitors, and take the accompanying comments for what they’re worth?”
I fear the “half-dozen references” will only confuse them. Did you ever come across decisions that pay a lip service to the law but blatantly used hindsight to reach the conclusion?
Here’s a stat worth thinkin about:
The initial Peer-to-Patent program was to be capped at the first 400 applications.
In the great rush of the extended program, they coaxed, er, um, achieved a volunteer level of 189 applications.
189 / 400 = 47.3%
189 / 1,000,000 = 0.019%
Didn’t the Bard say, “Much ado about nothing” ?
“Your ability to analyze claims is worse than anyone commenting here”
…especially since you’ve never seen me analuze claims, that’s a pretty nifty trick.
More like ya just be spoutin off again Sunshine.
Nice to see you actually do some work and provide a concrete example MM. So, what solution do you offer? Do you really think that the other arts are any better? What if an art unit slip down to the level you contend the computer arts are at, does that mean we should get rid of all patents for that art unit?
Get a life, ping-a-ling. Your ability to analyze claims is worse than anyone commenting here, with the possible exception of your on/off buddy AI.
it appears that the rule that patent invalidity must be proven by “clear and convincing evidence” is rooted in US patent case law since at least 1871
Considering the ultimate fate of eBay and State Street, I wouldn’t trust Circuit-level precedent without first checking with the Supremes. Particularly since the 1871 case was decided by a court that has not actually invalidated any issued patent before or since.
Ohh lookie, another windmill!
incredulous I think I’m up for responding to your typical analysis (e.g. “It’s facially invalid crxp!”)
That’s not my “typical analysis.” That’s a conclusion based on an analysis of the facts before me. A typical analysis of a claim is right here:
link to patentlyo.com
Targeted video advertising
1. A computer-implemented method of providing targeted video promotional material, the method comprising:
transmitting a promotional item for display on a video terminal;
determining whether the promotional item was skipped; and
updating, with a computer, a profile corresponding to the promotional item based on whether the promotional item was skipped.
Let me know if you disagree with the facts, the analysis, or the conclusion, and please state your reasons why. I’m looking forward to your insights, “incredulous.” Which is to say I predict you will have precisely none.
And by the way: there are worse claims issuing than this one. This is one is interesting because it would seem to have some value if it were in fact a valid claim.
Oops. Dennis, please move my last post from this thread to link to patentlyo.com and then delete this comment. Thanks.
From the above, it appears that the rule that patent invalidity must be proven by “clear and convincing evidence” is rooted in US patent case law since at least 1871 (thanks James Aerty).
Microsoft is seeking to split that 139 year old rule into:
1. Patent invalidity must be proven by clear and convincing evidence if the patent is being challenged by prior art that was before the PTO.
2. Patent invalidity must be proven by preponderence (or less than clear and convincing) evidence if the patent is being challenged by prior art that was not before the PTO.
Professor Lefstin’s point was that the Federal Circuit’s rule that patent invalidity must be proven by clear and convincing evidence, even if the patent is being challenged by prior art that was not before the PTO, originated from the CCPA in 1980 and not the Federal Circuit itself, contrary to nearly all of the briefs filed in the case, and nearly all academic commentary as well.
Without looking further into the matter, I would wager that the rule that patent invalidity must be proven by “clear and convincing evidence,” even when the defense rests on prior art not considered by the patent granting authority originated in England and was brought into the U.S. from England’s patent laws just after the founding of the U.S. The patent infringer’s defense that the patent granting authority missed something/didn’t do a good enough job and that the patent infringer should be cut some slack because of it likely is as old as the very first patent infringer.
In 500 BC, in the Greek city of Sybaris (located in what is now southern Italy), “encouragement was held out to all who should discover any new refinement in luxury, the profits arising from which were secured to the inventor by patent for the space of a year.”
If I were trying to upstage lax brief filers and academics (and had the free time given to law professors to indulge in research), I would start with the 499 BC legal records looking for that very first patent infringer claiming that the patent was not worth the paper (stone?) it was printed on. (Or at least start at 1624, the year after the Statute of Monopolies were enacted).
n the last three or four years, I don’t recall ever receiving a low-quality examination that then lead to a notice of allowance.
LOL. What planet are you from?
“Malcolm Mooney would like a word. As would every judge who has ever invalidated an issued patent based on examiner-searchable art.”
Shouldn’t that word be with the person actually responsible for doin the job?
Let’s put accountability where it should be, no?
And let’s not hear sob stories about how hard it is and how little time ya have – If ya aint got enough time – have that union of yours fight for enough time and stop already with the whiny little girl crrp.
But reality is that no applicant prefers a low-quality examination because the application won’t get through the NOA allowance hoops within the USPTO.
Malcolm Mooney would like a word. As would every judge who has ever invalidated an issued patent based on examiner-searchable art.
Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection. They would rather have a likely invalid patent than no patent at all.
Similarly, I’d rather have a bottle in front of me than a frontal lobotomy. But reality is that no applicant prefers a low-quality examination because the application won’t get through the NOA allowance hoops within the USPTO. A low-quality examination merely means (1) the SPE is letting the nubie examiner cut his/her teeth through a real world slam down from an applicant and (2)that the applicant will get a second non-final office action (meaning more work and more expense for the applicant).
In the last three or four years, I don’t recall ever receiving a low-quality examination that then lead to a notice of allowance. It always leads to either a second non final office action or a final office action (which should be non final, but who’s got the time and money to petition such nonsense).
consider taking away non-publication option
I keep saying — better and updated classification system will lead to better and quicker searching
Max: Even if somebody is paying, where is the incentive on the commentator, to do a “quality” job with the comments?
Maybe that is why third party comments on patentability under Art 115 EPC are as rare as hens’ teeth, even though that provision has been available to the public since the get go in 1978.
Just a thought, and this may or may not be as effective in Europe as in the US, but have you considered explaining to these people that it’s a great opportunity to gold-plate their competitors’ patents?
“I’ve got a lot to do today…”
Tough day of trolling the patent blogosphere?
“…but I’m pretty sure I’m up to the task and you’re not.”
I think I’m up for responding to your typical analysis (e.g. “It’s facially invalid crxp!”) with some analysis of my own (e.g. “No it’s not.”)
“Go ahead. Make my day.”
Mom finally got you that Clint Eastwood DVD box set you been pestering her for, huh? Glad to see you’re enjoying it.
“Still curious about the answer to this question.”
Still curious why you can’t find out the answer on your own.
6: a suggestion. In your own field, designate others as mor ons as much as you like. But, in a field in which you know little or nothing, hesitate to label others as such, in case you reveal yourself as the biggest one around. Mark Twain, I think it was, who had something to say about the consequences of opening your mouth and revealing the level of ignorance lying behind it.
Another problem is that the rules relating to third party art require that any accompanying arguments regarding the art be expunged prior to the Examiner’s review (does Japan have a similar requirement?).
Still curious about the answer to this question.
incredulous: But I think it’s a sad commentary on the state of examination when nobody wants to submit the best art to the examiners.
To a much greater extent, it’s a sad commentary on the procedure of examination which, completely independently of the examiner’s level of competence, lets the patentee obtain claims from an overworked and economically disinterested government employee in an ex parte proceeding that enjoy a frighteningly high level of deference when later inflicted on a non-party to that proceeding. It’s really no wonder the non-party isn’t willing to volunteer his help.
incredulous,
Not sure which of the regular dweebs is hiding inside your sock, but how about I pick some claims issued yesterday and we can talk about their likely invalidity in light of the patent law which you seem to believe I don’t understand.
You up for that, sockie? Just let me know. I’ve got a lot to do today but I’m pretty sure I’m up to the task and you’re not.
Go ahead. Make my day.
Incred thanks but no apology necessary. But I do not think it is sad at all. My hundreds of opposition cases at the EPO, and following patent disputes litigated in Europe, have taught me that inter partes proceedings are the only way to explore claim validity properly. Pre-issue examination on the merits is indispensible but, nevertheless, is only a coarse filter (even in “predictable” engineering arts).
“”Thank You Very Much” and work with the PTO Examiner to get to issue with claims deemed patentable over all that additional art, but no less potent than they were before.”
That’s what “gold plating” is about mor ons.