Patently-O TidBits on Patent Reform

  • John Sullivan, GC of the Commerce Department, has written a letter to support [UPDATED] Patent Reform [but not H.R. 1908].  The Commerce Department suggests reforms that would require applicants to submit higher-quality patent applications.  In reality, this can be translated as adding the submission requirements of accelerated examination to every case.  That approach is likely quite costly for applicants. However, it is undeniable that patent quality is a two-way street.  Low quality patent applications regularly lead to low quality patents.  A head-in-the-sand approach will not work here. The patent community should come-together with a set of best-practices for patent application drafting that can be implemented as rules. These practices should include definitions for claim terms; a more helpful discussion of prior art; a date of invention.  Done correctly, a few simple changes in the patent document could eliminate many of the current validity and claim construction issues that are so alive today. To be practicable for prosecuting attorneys, these reforms should be coupled with reform of the ‘rules’ of inequitable conduct, which are currently in a state of disarray. [Commerce Dept Letter].
  • The Commerce Dep’t letter opposed a number of particulars of currently proposed legislation, including first-to-file.
  • The House IP subcommittee has approved the language of H.R. 1908. It now goes to the full judiciary committee for a vote.
  • PTO Solicitor John Whealan has been seconded to the US Senate to iron-out the patent reform details. Stephen Walsh, a career PTO official, will reportedly Whealan’s shoes as Solicitor. Congratulations to both men!
  • A large number of biotech companies have also provided their statement regarding reform. The group opposes "apportionment of monetary damages for patent infringement, expansive PTO rule making authority, an open-ended post grant opposition system, and a narrow grace period." [Coalition letter]

Other TidBits:

  • Patently-O has taken-on its first advertising contract — Patent Supply Co. (See the left toolbar). 
  • Etherton Law Group in Phoenix needs you (so long as you are a quick-witted patent attorney with a couple-years experience). [LINK]
  • At BIO2007, biotech business executives were asked to rate on a scale of 1-10, the most helpful actions that that the federal gov’t could take.
    • Price controls: 71% rated 8-10;
    • International harmonization of patent laws: 59% rated 8-10;
    • Increase funding for biomedical research: 59% rated 8-10;
    • Increase funding for biofeuls: 41% rated 8-10. (Survey by Peter D. Hart Research Associates).
Dennis Crouch

About Dennis Crouch

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

63 thoughts on “Patently-O TidBits on Patent Reform

  1. One more point: there is a “gearing” effect with c-i-t claims. Get it right and you make your Euro patent stronger against post-issue validity but, if you get it wrong, your issued claim will be a sitting duck. Be careful who you use for your EPO prosecution, and take note of what he/she tells you.

  2. Which other country pressures an Applicant to use a Jepson claim, pray? EPO “characterized by” claims and Jepson claims are completely different beasts, and anybody who confuses the two should stay away from non-US prosecution. You can’t write an EPO two part form of claim till 1) you fully understand Problem Solution Approach and 2) you have found a realistic (under PSA) prior art starting point reference. And that’s normally not till you get the EPO search report.

  3. TemporalBeing wrote “How about real patent reform along the following lines:

    1) Get rid of USPTO and Copyright.”

    This sounds like outlandish ramblings and his difficulty with idea/expression separation.

    The man does fine when commenting on patent matters, but has difficulty when it comes to copyrights.

  4. One very simple but radical answer to most of the problems, which the PTO professes to seek to correct, would be to require applicants to use only Jepson claims. That would greatly simplify examination and largely obviate the need for limiting the number of claims. Obviously, nobody today is going to use Jepson claims unless required by statute or the PTO, but many other countries strongly pressure applicants to use them.

  5. D.W.A.P. | May 18, 2007 at 01:08 PM wrties

    > I always said if you can’t claim it in 20, you don’t know what the invention is.

    True enough.

    Before the examiner does any search, and before an adversary does the REAL search, you CAN’T POSSIBLY know for sure what “the invention” is. You’re lying to yourself and to your client if you think you can predict what art will turn up and how an infringer will try to design around, and don’t need any fallback options.

  6. Alan Harrison wrote:

    “If you were a PHOSITA of searching, then you would be aware that high quality machine translations of any recent Japanese art can be obtained through the IPDL website … of course to find the relevant art you’d need to master searching by the FI / F codes, which while both accurate and well-focused are also incredibly tedious to get the hang of”.

    Since I don’t see a smiley there, I must, alas, assume this comment was not posted in jest.

    I recently spent 3 and a half-years as an in-house proof-reader of J to E translations. I can assure you that “high quality machine translations of any recent Japanese art” is a complete oxymoron. Machine translations are worth what you pay for them: which is of course essentially zip.

    Yes, people, such as examiners, may be forced to use them for lack of any alternative, but make no mistake – passable machine translation between such unrelated languages as English and Japanese won’t be happening anytime soon for normal everyday language, let alone patentese.

    You don’t see any patent translators worrying about losing their jobs to machines; quite the opposite.

    If your search is relying on machine translations, it will be less than perfect. Of course, it will also be less than expensive; cost-benefit analysis plays a big role here. But as soon as you get beyond the most basic of IDSs you’ll need a human.

    Regards, Luke Ueda-Sarson

  7. How about real patent reform along the following lines:

    1) Get rid of USPTO and Copyright.
    2) Replace the two with a single organization tied to IRS and SEC that can understand business principles.
    3) Require applications to provide (a) the patent/copyright application, and (b) a business plan for recouping costs. The business plan will be allowed to have a percentage <50% profit. The plan should also take into account time to patent/copyright.
    4) If the costs have been recouped by the time the application is ready for approval, then it is automatically revoked.
    5) If the costs have not been recouped by the time the application is ready for approval, and it is valid, then it is granted. Additionally, the business plan will be required to be updated periodically (example: every other year).
    5a) If the planners were overzealous (e.g thought it would not take as long as it really was) to get to the costs+profit, then it is extended until it does reach that cost+profit.
    5b) If the planners thought it would take longer than it really was taking to reach to the cost+profit, then the time would be shortened.

    The paperwork required to verify this is already required by the IRS and SEC filings. Additionally, this would work for any industry. High change over industries (e.g. software/computer industry) would not get as many patents as it would recoup costs and the profit too fast. Slow change over industries (e.g. cars, drugs, etc.) would be granted a longer time period. So the time period and number of patents issued would match the industry, instead of being some arbitrary length.

    Additionally, this could work for high cost copyrighted works too - e.g. music performances, movies. etc.

  8. “To this day, the British still see no reason to change over, and to drive on the right side of the road. That’s OK.”

    This sort of short-sightedness is what led to the failure of British colonialism. 😉

    I wish I wasn’t so tired right now so I could come up with a good Vince Lombardi quote.

  9. Gideon:
    A first US Office Action generally will include 5 pages of commentary cobbling together 1 slightly relevant and 2 irrelevant references together to get a silly 103 rejection.

    A first EP Office Action will generally include no commentary on 3-5 references that destroy novelty of some of the claims. You amend the claims in light of these references without needing to be spoon-fed.

    The reasons the EP Examiners are “better” and work faster than American Examiners is at least in part that they do better searches. I do not know why, I imagine some combination of better tools, training, management, pay and more vacations.

    Harmonisation:
    I assume the anti-harmonisation comments are intended to be funny. Why would canceling IDSs and teaching US examiners to search cause the US to lose its sovereignty?

  10. It is a myth that there is a “myriad” of different patent systems out there. There’s the normal one, which operates all over the world, and there’s the exceptional US one. But let it stay that way. I grew up in UK, where we drive on the left (like Japan). I didn’t know that the rest of the world (including USA) was driving on the right. Something called a “Left Hand Drive” car was a rare visitor to our shores, and really exotic. To this day, the British still see no reason to change over, and to drive on the right side of the road. That’s OK. The British and Japanese don’t bore the rest of the world with urgings to adopt a “fair” compromise, in which we each give up as much as we get, and thereafter all drive up and down the middle of the road, all in perfect harmony.

  11. “We charge a bit more than 2k, but far less than the ridiculous figure of 50k. Arguably our results are worth 50k to a client in litigation – when we find something – but as a speculative price point, 50k just looks too high.”

    Sure, for litigation searches are vital.

    Not my point.

    My point is that the laughable sum of 600$ gets you a joke of a search that, in my experience, would not even result in my changing any claims in the prepared draft.

    A 600$ search?

    You get what you pay for! Crap!

    As for the EPO Examiner wizzes – well done. How do the French do it with the 35 hour work week. They must by really smart.

    As for PTO horror stories, don’t get me started!~!

    I have so many . . .

    Best one yet . . .

    File through EFS, using my account as a registered user. Drop down menu select my Customer Number during the process.

    3 weeks later, not in Pair.

    Call and ask why not.

    Told, “you gave a different address”.

    Reply, “the only place that any address was given was the Letterhead header of my transmittal document. Everything in it said “use my customer number” as did the Dec, as did your own EFS screen, as does my electronic receipt.”

    He says, “oh yes, you’re right.”

    Reply, “so you’ll change it for me?”

    “No sir, you need to file a Change of Corr form.”

    Is that the PTO/SB-F–kMe form?

    Yes sir, that’s the correct form.

    Everything except for the last two sentences are true.

    Unbelievable.

  12. Oh, who really cares about a little lost ‘cultural identity’ in the big scheme of things.

    Aparrently the Israelis. Isn’t that why they are bombing the mess out of the Palestinians? The Isralies don’t want to live in predominantly Arab secular country? But I digress.

  13. “I provide the slavery analogy, because slavery was, afterall, an institution for the agricultural industry to maximize profits at the expense of the cultural identity of those forced into servitude.”

    Oh, who really cares about a little lost ‘cultural identity’ in the big scheme of things. GOD BLESS AMERICA — the greatest country on Earth evah!!!!! Long may she wave. Or something like that.

    /weirdly misplaced patriotism off

  14. I have a great idea for patent reform. Fire all the buttheads at the PTO. My secretary was told today that they are 4 years behind on petitions.

    I had a preliminary amendment rejected because “your signature is incorrect”. I had an RCE rejected for basically the same reason. I was able to resend it out of time because EFS-Web apparently blanked the RCE form, so there was no signature.

    My secretary got a live person at 4:55 EDT and was told she was being connected with the help line since it was so close to 5:00.

    Sweet fancy Moses!

  15. Mr. Mooney:
    What say you about the surrender of national sovreignty through patent harmonization? Any comments upon that? For that is the real problem with patent harmonization. In fact it is only fitting that there are a myriad of different levels of protection for industrial property throughout the world. These reflect the insterests of the various cultures in which protection is sought. If ANYTHING the whole thing is turned on its head. The international players should be FORCED to YIELD to the superior rights of those seeking to protect their cultural identity when compared to the desires (often tauted as corporate rights) of profits.

    I provide the slavery analogy, because slavery was, afterall, an institution for the agricultural industry to maximize profits at the expense of the cultural identity of those forced into servitude. The slaves were removed from the cultural protection of their homelands and thrust into the American economic system as tools for business profit.

    There are ideals much greater than efficiency and profit. That is merely my point. Patent harmonization is wrong, unAmerican and will only erode national sovreignty.

  16. “Well we gave up control of our money as a nation to european interests.”

    The United States has given up control of its currency by running enormous production / consumption deficits which need to be financed with foreign borrowings. The rest doesn’t matter.

  17. To Lionel Hutz, you know, I can’t remember now how I came to 6.75. I think I worked out one scheme in my head (maybe it was x3 then add 50% (4.5) then add another 50% (2.25) to make 6.75), but then had 2nd thoughts and wrote another one on the blog. But, who cares, it’s all tongue in cheek anyway. Who knows which Office has the greater productivity. EPO Examiners do their first class searches, then master their workload, then knock off at 4pm. Anyway, it’s academic. Civil law continental Europe and common law DC are two incompatible worlds. Post grant opposition works in civil law Munich but I cannot for the life of me see how to make it work, in the land of depositions and equity.

  18. “Just as the institution of slavery benefitted only the wealthiest of the American elite in this country, so too will patent harmonization benefit only the wealthiest of the elite.”

    ROTFLMAO!!!!!

    Keep ’em coming, folks.

  19. I used to do searching, and then gradually switched over to prosecution after getting registered to practice. Typically, novelty searches from a reputable firm will cost you $500-600, and validity searches $2,000 and up. For $5,000 you can get a very extensive search, so I don’t know where the extra zero came from. In fact, I have never heard of anyone ever paying more than $20,000 for a search, and that was a clearance search for a whole family of standards. Of course, if you are talking about a search plus a full opinion then that’s different, but it’s not what the above numbers are based on.

    Some search firms charge top rates and aren’t very good, whilst others may charge less and still do a good job. Naming names could stir up a hornet’s nest. I’d say that there is not as much uniformity of standards as one might hope, though, and that leads some attorneys to have negative experiences if they choose the wrong firm.

    It is uneconomical to spend a validity search level of budget on a new application, and that’s just a fact of life. This does mean that you will never know all the art when you file, but for $5,000 you could have 99% of it, it’s just that you can find someone to write the app for that much or not much more, so it wouldn’t pass a cost-benefit analysis.

    A typical search fee of $500-600 balances the up front cost versus the saving if you don’t file, whereas if the search were to cost as much as filing, or even half as much, most would not want to pay that much, as they would reason that it would be cheaper to file and just see what happens. It’s hard enough to get most clients to pay $600 anyway, as they are nearly always convinced that their invention is novel and don’t beleive that a search is necessary.

  20. I would like to drive home my point about national sovreignty one notch further. Remember what Rothchild said about our nation’s laws when establishing the Federal Reserve “I care not for a nation’s laws, if you give me control of the money”. Well we gave up control of our money as a nation to european interests. For God’s sake people let us not surrender our sovreignty over the products we can purchase to foreign interests, at least not without us have a say. We must end this move toward harmonization to provide time for the American people to truly comprehend its consequences. Otherwise, we might as well be in the same predicaments with industiral system that we are with the money system.

  21. MaxDrei wrote “With my tongue firmly in my cheek, I compare the EPO productivity mentioned above (59 cases per year) with that of the USPTO (133). I submit we should multiply the EPO figure by 6.75 in order to compare apples with apples, not pears. here’s why:
    1. Every EPO case is a fresh examination task. No continuations (x2).
    2. Every EPO case gets examined by a team of 3 Exrs (add 50%).
    3. Every EPO Exr has to examine oppositions too. 10% of EP grants get opposed. Say each oppn is 5 times as much work as examining an app (conservative because each oppn is adversarial contested inter partes proceedings) Add 50%.”

    I don’t follow your math x2 + 0.5 + 0.5 = x3, correct? If you did the x2 first and then took the 50% from those, that would simply be x4.

    Further, I do not believe half the applications at the PTO are not continuations or divisionals. Therefore, the doubling there appears inaccurate.

  22. With respect to harmonization I can only advance the idea that we are at the proximal point of nascent of the demise of national sovreignty. It is not long before harmonization gives way to the one world patent. Can one imagine what the consequences of such an instrument would do the degrade national sovreignty. Look at the language of Marbury v. Madison concerning commerce being all forms of intercourse. A one world patent would result in a foreign entity, over which we have no control of answers not to us, to control our commerce by way of a monopoly power. If anything, people, we should be advancing our own system of first to invent and shun any attempt at harmonization.

    I submit that patent harmonization has already gone too far. We must return to the 17 years from issuance system for determining patent term. Just as the institution of slavery benefitted only the wealthiest of the American elite in this country, so too will patent harmonization benefit only the wealthiest of the elite. The others, including wealthy patent attorneys and businessmen, will pay for the benefits conferred on the wealthiest of the elites. Our national sovreignty is of far more importance than patent efficiency. If we can stop this nonsense here, it will surely set back the globalists for one generation.

  23. The epo no-duty-to-disclose system works very well. The EPO searches virtually always identify more pertinent prior art than the uspto search, and examination proceeds on the basis of that. I have had countless US applications interrupted by late filed IDSs or go to a second or third RCE to get another reference considered (including searches from related foreign apps), or even a co-pending app that has now turned into a patent (and thus needs to be considered by the “reasonable examiner” for dp purposes etc). I think we underestimate the problems caused by the applicant-based duty of disclosure and the prosecutor’s mortal fear of inequitable conduct. Lets go the EPO/JPO way.

  24. I agree both with Gideon AND Alan Harrison.
    i.e.

    a) most searches do suck.
    b) Nerac is the excpetion which proves the rule – the old firm where I used to work had a subscription to Nerac (Alan Harrison’s firm, apparently). Nerac is probably the only search service that I’ve ever seen that is decent (I never used Greg Aaronian but I assume that he’s also good – his newsletters are DEAD on). I’ve had them knock out a few applications.
    And NO – I have no vested interested in Nerac. Really. In fact, I got mad at them when they knocked out the applications.

  25. I realize that I’m kinda kicking a downed horse here. But really:

    ” Even at 50 bucks an hour for a “professional” searcher, you’re looking at only 20 hours for your search. You’re out of your mind if you think that the scope of th relevant prior art for a typical invention can be searched in 20 hours. ”

    Given a granted patent, and 20 hours, our firm has had significant, repeatable success in finding prior art that anticipates or renders obvious the claimed invention. This is art that sometimes significantly predates the filing of the patent, and perhaps for that reason was not found by the Examiner. Or perhaps it was not found by the examiner because, let’s face it, examiners typically are new grads with minimal actual experience in their assigned tech specialty. Whereas professional searchers typically are old hands who have left tech jobs for more lucrative (and less stressful) employment in business / legal services.

    We charge a bit more than 2k, but far less than the ridiculous figure of 50k. Arguably our results are worth 50k to a client in litigation – when we find something – but as a speculative price point, 50k just looks too high.

    Not sure whether the above is to our credit, or to the blame of the patent bar …

    ” Maybe I missed something. Is the EPO database boolean searchable yet? For all sections of the App? How about PCT? Are there translations available now for all of the Japanese art in Japanese? ”

    The EPO database is boolean and proximity searchable full text or by fields … in-house at our firm, because we pay for weekly updates to our copy of the EPO database, and we maintain our own highly sophisticated search engine. Same for PCT – though oddly, PCT filings tend to show an even higher percentage of !@#$ “inventions” than do national office filings.

    If you were a PHOSITA of searching, then you would be aware that high quality machine translations of any recent Japanese art can be obtained through the IPDL website … of course to find the relevant art you’d need to master searching by the FI / F codes, which while both accurate and well-focused are also incredibly tedious to get the hang of.

  26. With my tongue firmly in my cheek, I compare the EPO productivity mentioned above (59 cases per year) with that of the USPTO (133). I submit we should multiply the EPO figure by 6.75 in order to compare apples with apples, not pears. here’s why:
    1. Every EPO case is a fresh examination task. No continuations (x2).
    2. Every EPO case gets examined by a team of 3 Exrs (add 50%).
    3. Every EPO Exr has to examine oppositions too. 10% of EP grants get opposed. Say each oppn is 5 times as much work as examining an app (conservative because each oppn is adversarial contested inter partes proceedings) Add 50%.

    59 x 6.75 = 400. Compared with the US 133 I make that EPO more productive by a factor of exactly 3. Not bad when the Examiners come from 31 member States and do their work in three foreign languages.

    And Erez Gur, I’m really not sure that any EPO Examiner is into harmonisation. My reading is that they want nothing whatsoever to do with English common law mentality and are running away from it as fast as they can. And consider UK. Can’t get any of them off their island and over to Munich for love nor money.

    To others: PACE works. Some old applications are still horribly delayed, it is true. But, so what. If you want early grant, ask for it. But be careful what you ask for. The A (or WO) publication has already given you provisional monopoly rights, you freeze your opportunity to sculpt your claim to the emerging infringement in Europe, and you pay the awful grant stage translation costs that much sooner.

  27. MaxDrei said: Did anybody ask the EPO? Do you think it wants them? And do you think any USPTO Exr who finds himself “sent” would be in a frame of mind to absorb anything useful from the EPO?

    I am surprised by your response, I thought you would second the idea.

    No one asked the EPO, but I am certain it would agree. As you know the Europeans are into “harmonization”. What better way to “harmonize” then to let the Americans come for a fruitful cooperation in the Hague?

    and yes, I think most US examiners want to do their job well so will appreciate a paid vacation in Europe. Spending a year in a foreign culture will invigorate them and expose them to new ways of thinking. Everyone will gain.

    Best of all for the Examiner, when they get back they will be able to email their mates from the EPO to find a novelty-destroying French-language reference :-)

  28. Max,

    I’m sorry – I am starting to forget things

    PCT app requested USPTO international search as a cheaper alternative.
    But when EPO regionaal phase was entered i paid for the second search – the EPO search which was *a lot* better than USPTO search…
    Still, they could only find a few category “A” non-patent references…
    (The USPTO search produced some absolute garbage combination of unrelated UP patent references from *different* fields mentioning separate claim words)

  29. To me the whole “broken patent system” and “poor quality patents” cry in the popular press seems to have started about the same time that the first Markman orders were being overturned. Is this just my imagination?

  30. I wouldn’t say that the EPO has ‘mastered’ its workload. Whilst most applications progress through examination at an acceptable rate, many do not. Delays as mentioned by ‘small inventor’ are not unusual.

    ‘small inventor’ – tell your EP attorneys that you want them to request accelerated examination under the EPO ‘PACE’ mechanism. There is no official fee for this. The EPO will try to issue a first substantive examination report within 3 months of receiving the request (although in reality it can be slightly longer than this).

  31. Sorry small inventor, I overlooked the period a few years ago when the EPO was drowning in work, caused by examining thousands of PCT applications in the tight timetable of the PCT international phase, filed at the USPTO as Receiving Office but specifying the EPO as ISA and IPEA. EPO Examiners had to engage direct with US patent attorneys during this international phase, and mutual incomprehension was the result. Prompted by those distressing days, EPO management has put in place measures to “Master the Workload”. No longer do EPO Examiners spend all their time engaged in unrewarding dialogue with US patent attorneys. As you will know, the PCT was changed, so the EPO was spared the burden of doing Chapter II international preliminary examination work on behalf of the USPTO. Instead, EPO Examiners now spend their time issuing so-called “extended EPO search report” that have annexed to them an opinion on patentability (that is a first office action in all but name). Such extended search reports are issuing currently within a month or two of the end of the Paris Convention year. I do concede that EPO is still working through the backlog left over from those days. Your app would seem to be one of those suffering, and I’m sorry about that. BTW, how did you get both a USPTO and and EPO International search, on a single PCT application?

  32. MaxDrei wrote:

    “The EPO has mastered its workload, and routinely issues first actions less than a year after the filing date of the app.”

    Max, with all due respect, you don’t know what you are talking about…

    Let me give you one example (from my own experience):

    US provisional filed in late 2001
    US regular filed in 2002
    PCT filed in late 2002
    European from PCT in early 2004 (expensive !!!)
    First office action from USPTO in early 2006 (partial allowance)
    US patent grant in late 2006

    No responce from EPO so far, they just keep charging me annual maintenance fees.
    The last fee was paid in late 2006 for patent year 05

    I am seriously considering dropping this whole EPO thing…

    In defense of EPO I can just say that their search report was spot on, unlike the lousy international search done by USPTO ( I paid for both USPTO and EPO international search for PCT)
    Looking forward to reading the first communication from EPO on the merits of my invention, but they’d better hurry up cause I’m loosing my patience…

  33. MaxDrei,

    Given your length of practice, then you too have seen the reforms that lead to reexam, maintenance fees, large and small entities, tremendous fee increases to cover what was originally promoted as a pay-as-you-go patent office, etc.

    Each and every one of these reforms have had, in my view, two very important impacts. They have greatly increased the complexity of patent practice and the costs of securing a patent for inventors.

    What strikes me as particularly galling is that over the same period of time Congress has gone out of its way to amend copyright law to the point one has to almost be brain dead to lose rights under copyright.

    How two bodies of law birthed from the same constitutional way that receive such different treatment strikes me as fundamentally unfair.

  34. “The EPO has mastered its workload, and routinely issues first actions less than a year after the filing date of the app.”

    Mastered its workload you say? My immediate thought after reading that was to question what exactly is the EPO’s workload. A quick little search on Google and I came up with the following link:

    link to epo.org

    From this link:

    The European Patent Office (EPO):
    Established in 1977 by the European Patent Convention (EPC) with the aim of creating a centralised patent application and grant system on behalf of all contracting states, the EPO’s mission is to support innovation, competitiveness and economic growth for the benefit of the citizens of Europe. As of March 2007, the EPC has effect in 32 European countries, including all European Union member states – a market of nearly 600 million people.

    The EPO examines and grants “European patents” which, subject to formal requirements, then acquire the same status and influence as national patents under the national laws of such EPC contracting states as the applicant designates.

    At the end of 2006, the EPO had a total of 6 500 staff members, with roughly 3 500 examiners. Patent applications to the EPO have increased steadily in recent years; the number of total filings rising from 181 000 in 2004 to roughly 208 000 in 2006.

    The United States Patent and Trademark Office (USPTO):
    Rooted in the 200-year-old writings of the U.S. Constitution, the USPTO was established “to promote the progress of science and useful Arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

    The largest patent office in the world, the USPTO has around 7 300 employees, nearly all of whom are based in Alexandria, Virginia. Of those, about 3 000 are patent examiners and 400 are trademark examining attorneys, with the rest made up of support staff. The total number of applications per year to the USPTO has grown from roughly 250 000 in 2000 to over 400 000 in 2006.

    These numbers are a little dated, but not by much.

    Not counting the respectively backlogs of the EPO and USPTO, an average EPO examiner has to dispose of (208,000/3,500) 59.4 applications per year to keep up.

    On the other hand, an average USPTO examiner has to dispose of (400,000/3,000) 133.3 application per year to keep up. Actually, the USPTO’s official statistics for 2005 has numbers of 417,508 patent applications (390,733 utility, 25,553 design, and 1,222 plant). The grant numbers, as of 2006, are 196,404 patents issued (173,771 utility, 20,965, and 1,149 plant).

    After looking at these numbers it appears that: the USPTO is way understaffed; the USPTO is generating a huge backlog; the EPO examiners get far more time to examine an application than a USPTO examiner; or some combination of the above.

    FYI: a really good website can be found here:

    link to trilateral.net

    This is a website for the USPTO, EPO, and JPO. It also has statistical information comparing all three agencies. The most recent comparative statistical information can be found here:

    link to trilateral.net

  35. My practice goes back 34 years. I agree with Mr Slonecker, that only in the last 10 years has FTF vs FTI occupied attention at the coalface. That’s because patent disputes used to be national but are now global. Management sees the same issue arising all over the world but is advised that the question “Who is going to win?” gets one answer for USA and a different one for other jurisdictions. That strikes management and financial analysts as unsatisfactory. But, hey, so what. Let them be dissatisfied. They are paid to cope with complexity. The patent pro’s understand, and can competently brief management. That’s all that’s necessary. We patent pro’s should concentrate on preserving the integrity of our respective FTF and FTI systems, no?

    And Erez Gur, you say “Send USPTO Exrs to the EPO”. Did anybody ask the EPO? Do you think it wants them? And do you think any USPTO Exr who finds himself “sent” would be in a frame of mind to absorb anything useful from the EPO. Actually, there has for some considerable time now been any amount of EPO education available to the USPTO. For some time now, I have been seeing echoes of EPO practice in Office Actions coming out of the USPTO. The EPO has mastered its workload, and routinely issues first actions less than a year after the filing date of the app. All the USPTO Exr has to do is read the EPO file online, then borrow from it the content of the first EPO Action. BTW, isn’t this what SCOTUS did, in the KSR case? The Teleflex app was filed at the EPO, but applicant filed no response to the (blistering) first Office Action. The Teleflex app died, there and then.

  36. “I am not certain how old you are, but it has been discussed seriously since at least as far back as the 1930s.”

    As one who has regularly studied for the past 30 years the JPOS journal, BAN’s PTCJ, LES pubs, ACPC journal, the AIPLA journal, ABA articles, etc., the only consistent reference I have observed concerning US practice and that of most other nations are very general references to FTF and absolute novelty. Perhaps some academics have weighed in with articles in Law Reviews and the like, but they have rarely, if ever, been mentioned in the mainstream news.

    Walker on Patents, Deller’s Walker on Patents, and Chisum have not given it any particular emphasis, nor has harmonization on FTF been a major topic of discussion.

    It is only as of late, say about the last 10-15 years or so, has the subject begun to creep into professionl articles, with harmonization being the catalyst.

    FTI has been in large measure a bedrock principle of current law going back to before the days when Revise and Ceasar published their multi-volume treatise concerning interference practice.

    Any discussion of FTI versus FTP must certainly consider what will certainly be the extensive impact such a change will have on our current patent system. Its impact is much more subtle than the constant rationalizations that FTF will speed things up for prompt disclosure of inventions. That itself, however, should not be the main consideration.

  37. Too many people axiomatically accept that the problem is “low patent quality” meaning too many patents have claims that are obvious or too broad. They believe this religiously, despite lacking even a shred of evidence. Rather, they find a questionable patent (e.g., Intel’s nail clipper patent) and condemn the whole system.

    Does anyone ask what percentage of issued patents is questionable? Does anyone ask how many questionable patents have any economic significance (no one will ever be sued for infringing US 7090268). My guess is that the answers to these questions are “few” and “even fewer” respectively.

    In contrast, I have seen many cases of improper rejections that caused an Inventor give up his rights, because the Examiner drained him of money or time.

    I have seen many cases where an Examiners agrees to issue undeservedly narrow claims. In such a way the Examiner kills the DOE, leaving the inventor with narrow claims that are easily worked around.

    The real problem is that the USPTO does not give inventors a fair monopoly.

    If the US really wants to improve its patent system, I have a few practical suggestions:

    1. Teach examiners that their job is to work together with the Applicants to give a fair scope of claims in light of the prior art and not to punish Applicants for daring to get a reward for their invention;

    2. Give Examiners significantly more time for each office action so that they can give well reasoned arguments based on relevant art. Apparently under the current system they simply don’t have time;

    3. After some time (e.g., 2 years) send Examiners to the European Patent Office to work for year. They’ll have a great time in the Netherlands (or Munich) and maybe they’ll learn something different;

    4. Get rid of RCEs. Instead, adopt something similar to the European approach of unlimited OAs/Responses as long as there is some progress in prosecution. If there is no progress go to an enlarged board of three examiners.

    5. Do better searches. For example, let Greg Aharonian put his money where his mouth is. Give him one year and lots of cash to do some searches. With good prior art, Examiners won’t have to resort to shaky/unfair obviousness arguments because they’ll have novelty destroying art. If there is no improvement in patent quality, have him give back the cash (please note: I never met him and never worked with him so there is no conflict of interest).

    6. eliminate IDSs, they are a waste of money and time for the Applicant, the Examiner and the system.

    7. Mandatory loser-pays inter partes reexamination at the USPTO prior to any lawsuit. Much cheaper than litigation and will stop infringers from whining about overly broad or obvious patents ruining innovation.

    By the way, “First to Invent” vs. “First to File” is a purely American issue which no one outside the US cares about. All it does is add an additional level of uncertainty as to the validity of a patent.

  38. The main reason to sling out FTI is that it’s barmy. Why give a 20 year monopoly to a person for inventing something? The act of invention has done the public no good. The debate about “compromises” between FTI and FTF reveals that in USA nobody gets anything without giving something in return. Follow that logic through and you would yourselves, in your own interests, immediately switch unilaterally to FTF (as the Founding Fathers surely intended, if they had expressed their thoughts at greater length). At least it’s logical to give a 20 year monopoly to the party first in the queue to publish that invention, for the benefit of the public, in the form of a Patent Office 18 month A publication. As the DOC letter urges “It’s all about disclosure”.

    The hard compromise is between US common law and the all-pervasive civil law that runs, more or less everywhere else in the world. These two systems of law are incompatible. Could it be that the US national interest lies in keeping patent law as complicated as possible, if we suppose that US corporations are more sophisticated at the game of litigation than non-US corporations.

  39. Can we continue the debate on the basis that patent attorneys are rational, and do what in the best interests of their clients? Is that asking a lot? I don’t know. In that case, tweak the system so that there is an incentive to bring to issue patents that set the claimed subject matter in the context of the closest art, that define the invention with clarity and which are devoid of unsustainable claims. Use self-interest to rid the system of its perversities. Looking in on the USA from the outside, it always seems to me that it is the courts that are mostly to blame for any “perverse” aspects of the law today and they can do a lot to remove the perversities. If inequitable conduct has lead to perverse “all or nothing” consequences, as the DOC letter asserts, well, let the courts remove the perversity. Seems to me that SCOTUS could do a lot. In obviousness, KSR removed a load of perversity. Let’s have more of such stuff. I used to think that common law binding precedent brought legal certainty. Now I think that the civil law (no binding precedent) “survival of the fittest” progressive legal development works better. I cite the corpus of law created over 25 years by the Final Instance that is the multitudinous autonomous equal-ranking (today 22) Technical Boards of Appeal of the EPO. The commentator above, who wrote of a foul compromise between US FTI and ROW FTF was quite right. It would be worse than to continue with one law for USA and another one entirely, for the whole of ROW.

  40. Michael Slonecker wrote “When I first began my practice the concept of FTF was not even a subject of discussion. For that matter, neither was re-examination, maintenance fees, small and large entities, the need for the PTO to be self-supporting, and the numerous other “peaks and tweaks” that have since crept into the system. In my view all that such “peaks and tweaks” have served to do is make the system more complex and burdensome, and more (much more) expensive.”

    I am not certain how old you are, but it has been discussed seriously since at least as far back as the 1930s.

  41. “The latest buzz is some NY firms raising first year associate salaries to $190K.”

    I wonder what their billing rates and billable hour requirements are.

  42. MM…

    Yes, it is relevant. Interferences are not as byzantine as many have been led to believe. They are just another aspect of practice before the PTO.

    Now, back to the question I asked. Besides interferences, what are some reasons why you believe FTF should be instituted in place of FTI? This time please answer the question with something other than a totally unrelated quote.

  43. Gideon–

    As seems usual on this board, this discussion has proceeded by commentators staking out territory on the far ends of the spectrum. According to conventional wisdom (common sense?!), the truth lies somewhere in-between.

    Everybody knows that a search can never be guaranteed as being exhaustive. However, there are situations where it can help–for instance many of my clients invent clever mechanical devices and fabrications, that are relatively low-tech. It turns out that there were a great many such inventions made and disclosed around the turn of the century and in the early 20th century, and it also turns out that many times really good art will turn up–so good that in fact my advice leads a client to choose not to file a patent app. In many cases, my clients have saved a bundle of money by having me do a very targeted search. By the way, I take a bath on searches, but my clients love me for it. Costs are kept low, and I keep their expectations realistic. I can think of other situations where searches can help, too.

    And I don’t think that the ethical duty of competent representation should be dismissed too quickly. As I see it, the canons of ethics are in place partly to make attorneys think about how to deliver to their clients the BEST service that they can deliver, not merely adequate service. Sometimes this can include advising the client that a search with a particular scope would be likely to provide good value to the client.

  44. Some guy wrote:
    “1. Affirmative duty to conduct search and identify most pertinent prior art — especially non-patent prior art. I do this constantly, because my ethical duties require that I am competent when representing a client. Although I have no legal duty to do this, my ethical duty mandates it. I submit that any patent attorney who fails to perform a modicum of a search may be acting incompetently.”

    What total and utter garbage.

    I counter with this:

    1) Most attornies who do “searches” or have them done are simply paying to cover their asses. Everybody knows that a complete and competent search would cost about 50,000.

    Maybe I missed something. Is the EPO database boolean searchable yet? For all sections of the App? How about PCT? Are there translations available now for all of the Japanese art in Japanese?

    Has the non-patent literature suddenly become organized and searchable?

    2) If you pay some Schmolee 1,200 to do a “search” and you get the letter back that says, “we have found the following documents that you may find interesting” or some other BS line, all you’ve usually done is waste the client’s money.

    If searches worked, then you’d expect that the Examiner would use art exclusively from your search. If you measure the % of rejections in cases where a paid search was done where the rejection uses only the art submitted in the first IDS, then you have a quantitative measure of how good that search was, at least from the perspective of the Examiner.

    My experience has been that 1,000 bucks pays for a “professional searcher” to spend a few hours searching “key words” or “classes”. Back in the old day they would search by sitting in the Search Room flipping though shoe boxes. You’d see them. They’d be sitting there chatting with the Schmolee next to them. Flip flip flip flip. About 1 a second. They’d pause every so often to read an abstract. Every so often one gets pulled for copying.

    Nowadays? Key word search.

    So what can you expect to get back for your 1k (or 2 or 3k if you are using a “high end” service [wink wink])?

    You’ll get a list of 30-100 US Patent Documents, maybe a few dozen PCT/EPO type stuff, and perhaps a few Japanese abstracts.

    Yep. Sure. Now you’re all set. You can report to the client that a search has been done, and, whoop de frickin do, there’s a couple of close ones, but we’ll draft the claims around those.

    And that helps you convince yourself that you are “behaving ethically” and acting as a “competent” professional.

    What a giant, stinking crock of crap.

    Even at 50 bucks an hour for a “professional” searcher, you’re looking at only 20 hours for your search. You’re out of your mind if you think that the scope of th relevant prior art for a typical invention can be searched in 20 hours.

    So what is the use of a paid search?

    As noted above, it’s the great false salve and ass covering for attorneys to shunt the blame when killer art gets produced during the examination stage.

    Here’s the deal.

    You either have a well defined invention or you don’t.

    If you have a clear, well defined invention, then you write it up in gory detail. You make sure that the thing that is the essense of the invention is extremely well defined, with detail on the the difference from the prior art. For example, if it’s the concentration of dopamine that makes you special, then be sure to spell out and claim the dopamine details.

    Then you draft your claims from broadest to narrowest.

    This whole process costs about 5 grand to 10 grand depending on who you use.

    A “thourough professional” search would have been 2 grand, at least, so that’s 20-40% cost savings right there.

    Save your 2 grand and use it to file your PCT – a much better use for the money.

    Then, by the time you’re going national, if you haven’t been boned by the PTO with a 3 year wait for examination, you’ll have the best 6-10 pieces of art the Office can find. If you use the EPO as the search office, then you’ve done even better.

    If, in view of the art, you have nothing left worth claiming, then you get on with business. If you have something worth claiming, then amend, if needed, and proceed.

    It’s really that simple.

    After a few years I found that art searches were only useful in the following scenario:

    Client – Yeah, we want to invent something having to do with this thing here, because we can see that that’s where the market’s going beacause our competitors are doing it, and, um, we were hoping you could do a search so we can figure out what’s patentable.

    Attorney – Sure, yes, great, I love the “find the invention” game. OK, let me get a search done, and we’ll get right on that.

    Get the list of references, attorney bills 10 hours reviewing the 70 refs from Schmolee, come up with “the invention”, and hope it slips through the clueless at the PTO.

    Yep.

    So the point is, if you HAVE a real invention, and you KNOW what it is, then it’s a simple matter to draft the claims to the invention and let the Offices figure out the relevant art.

    In terms of “it’s my ethical duty” and “competence” and all that crap, I think you have it backwards.

    I think it makes no sense to dig up art that may never have been found.

    I think it makes no sense to spend money for searches that usually don’t produce the art that ends up serving as the basis for rejection of the original claim concept.

    I think you save money by not doing searches because I can write and file an app for every 3 searches you pay for.

    I think searches are usually shabby and a placebo.

    But most importantly, I think it’s incompetent and unethical to allow clients to believe that “searches” are anything more than a piss weak scanning of the monstrous amount of art that’s out there.

    But that’s the pocket-protector, narrow view of most pencil headed patent folk – they’ll feel exposed and naked without a search, and that is THE main reason for doing it.

    Figure it out folks . . .

    Every year the “art” gets bigger by a few million documents.

    Do you seriously think that paying some Schmolee 1 or 2 grand is REALLY going to find the art that will serve as the basis for the rejection and/or the litigation?

    Seriously, wake up, remove the pocket protector, and start advising your clients that searches are like forcing your doctor to give your kid antibiotics for a viral infection – it might may you feel better, but it is not helpful. If you really have an invention.

  45. 1. Getting rid of interferences.
    2. Getting rid of interferences.
    3. Getting rid of interferences.
    4. Getting rid of interferences.
    5. Getting rid of interferences.

    Just out of curiosity, have you ever done one? My “mentor” when I got into this business told me they were a rarity, with hardly anyone ever actually doing one.

    Wouldn’t you know it? The very first application I ever drafted produced an interference where my client was the junior party with a filing date more than 6 months after the interfering patent had issued. Personally, I did not find it all that difficult, though I must admit that the counts were fairly straightforward and my client’s date of conception easily proven prior in time to that of the other party. My challenge was to get the office to initiate an interference (that took a direct appeal to the Commissioner), as well as a whole host of other procedural issues under 37 CFR that had nothing to do with the interference itself. Once it was declared, however, it was not any big deal…just another aspect of practice before the PTO.

    Now, do you have any other reasons besides interferences and “etc.”?

  46. “There are many ramifications to such a rule, which I am sure will be commented upon, but some of the practical upshots may be 1) metropolitan practices no longer being able to take up such applications except as a loss-leader, 2) lower written quality applications due to the time squeeze, and/or 3) a move to hire more in-house attorneys.”

    All this is happening anyway.

    The latest buzz is some NY firms raising first year associate salaries to $190K. We’ll see what hands are played during fall recruiting. Granted, those salaries appear driven by the desire to recruit the allegedly “superior” brains of baby litigators that stumble out of the top law schools and have little or nothing to do with they typical patent prosecutor. Nevertheless, law firms strive to be “one big happy family.”

    [reaches for alka-seltzer]

  47. From a purely practical economic standpoint, I find it difficult to believe that attorneys in private firms charging several hundred dollars/hour will be able to write applications for set fees (which are becoming more and more popular) if they have to do their own searches and analyzation before filing. It will be a large strain on corporate budgets to pay an extra couple of thousand (at the least) for this on applications whose fees are not set rather than taking the inventor’s word for what is new and novel.

    There are many ramifications to such a rule, which I am sure will be commented upon, but some of the practical upshots may be 1) metropolitan practices no longer being able to take up such applications except as a loss-leader, 2) lower written quality applications due to the time squeeze, and/or 3) a move to hire more in-house attorneys.

    People can make comments about the present salaries of patent attorneys, but with the ever-increasing importance of patents (not to mention the amounts of money at stake), it seems like the economic value of good patents, and by extension good patent attorneys, has increased dramatically over the last several decades.

    Just my $0.02.

  48. One thing I think hasn’t been considered in the first-to-invent/file debate is the effect of unilateral change on harmoniaation negotiations. My observation (and admittedly not novel at that) is that the “rub” in international IP negotiations is USA gives up first-to-invent, and in exchange the rest of the world recognizes pharma and software patents.

    If Congress gives away first-to-invent for nothing in return, doesn’t this decimate our negotiating position?

  49. “Very well, Mr. Mooney. Perhaps then you can elaborate on the pros and hopefully cons) of moving from FTI to FTF.”

    1. Getting rid of interferences.
    2. Getting rid of interferences.
    3. Getting rid of interferences.
    4. Getting rid of interferences.
    5. Getting rid of interferences.

    etc.

  50. “1. Affirmative duty to conduct search and identify most pertinent prior art — especially non-patent prior art.

    I do this constantly, because my ethical duties require that I am competent when representing a client.”

    I’m sure I don’t speak for every attorney but none of the dozens of attorneys I interact with on a daily or weekly basis *regularly* conduct searches to identify the most relevant art before filing an application on behalf of a client.

    I advise clients to do such searches on their own IF they have doubts about the patentability of particular inventions before they file, but I certainly do not recommend that we (the law firm) do such searches for them as a matter of course. I think this is typical.

    This practice has less to do with “competency” than expediency. The question is: what are all the benefits a client seeking when it files a patent application?

  51. Very well, Mr. Mooney. Perhaps then you can elaborate on the pros and hopefully cons) of moving from FTI to FTF.

    By the way, do choose your words with some care. The word “forever” is a bit over the top.

    When I first began my practice the concept of FTF was not even a subject of discussion. For that matter, neither was re-examination, maintenance fees, small and large entities, the need for the PTO to be self-supporting, and the numerous other “peaks and tweaks” that have since crept into the system. In my view all that such “peaks and tweaks” have served to do is make the system more complex and burdensome, and more (much more) expensive.

    Apparently the promises made when prior reforms were enacted have not been realized. After all, they were intended to help improve and expedite examination, enhance quality, eliminate what some people call “bad” patents, etc. What is it about these reforms that will yield significantly different results?

    I do have an open mind to anything that will help improve the system, so I am quite interested in what you and others have to say in response. I am certainly not an “old-timer” set in my ways.

  52. My immediate take away from this is why does everyone think that somehow “low quality” patents exist purely becuase of the actions of the drafter not supplying a high quality patent document? (and what is a low quality patent anyway?)

    Many so called “low quality” patents exist because of JUDICIAL uncertainty in patent interpretation LITIGATION pushing for questionable claim interpretations and becuase of uncertainties in FUTURE interetation of language when discussing technology which is necessarily new and not commonly understood. None of these relate to drafting.

    I constantly hear people say that patents are “low quality” becuase a reader does not know what the patent covers. Is that becuase the rules for writing the patent document are unclear (what everybody seems to try and fix) or becuase the rules for interpreting/reading them are unclear (becuase interpretation is unclear).

    Please read the following sentance:

    I hope u will come to my party?

    I would assert that the meaning of this sentance is clear to the vast majority of readers becuase we all have a common interpretation of what was meant by the sentance even though the sentance includes two flagrant grammatical errors.

    The sentance is not unclear becuase the grammatical rules were broken.

    Compare to this sentance.

    I have nijue and istaky.

    I assert this sentance is 100% grammatically correct, and nobody has any idea what I’m talking about becuase there is no common interpretation becuase there is no common INTERPRETATION for my made up words.

    “A head-in-the-sand approach will not work here. The patent community should come-together with a set of best-practices for patent application drafting that can be implemented as rules. These practices should include definitions for claim terms; a more helpful discussion of prior art; a date of invention.”

    The head in the sand is trying to think that a rigid law of drafting will somehow create clarity in interpretation.

  53. Mr. Roethel:
    I am not sure what type of practice you have had for 40 years, but it is very different from mine, because of the following observations I make with your statements.

    1. Affirmative duty to conduct search and identify most pertinent prior art — especially non-patent prior art.

    I do this constantly, because my ethical duties require that I am competent when representing a client. Although I have no legal duty to do this, my ethical duty mandates it. I submit that any patent attorney who fails to perform a modicum of a search may be acting incompetently.

    2. Affirmative statement of what the applicant regards as his invention.

    I beleive we call these claims. I am not sure if your patent applications have claims; however, I think that the rules require these.

    3. Define claim terms with binding estoppel to prevent broadening of scope after issuance.

    So you want to get rid of Graver Tank and its progeny? You seek to overturn established caselaw that was recently reaffirmed. Most of us know it as the Doctrine of Equivalents.

    4. Specification must contain a section that identifies the differences between the invention and the prior art.

    Again this is embodied in the claims. Moreover, how can one know what the prior art is until an examiner does his search. Perhaps you require us all to be the Great Karnak. You are old enough to remember him, I am sure.

    5. Limit on the number of claims.

    I always said if you can’t claim it in 20, you don’t know what the invention is.

    6. Perhaps a concession by the applicant of what is not covered by his claims. WTF.

    If it ain’t covered by the claim . . . it ain’t covered by the claim. Christ almighty, each patent application would be so voluminous as to require buildings to contain all the documentation.

    7. Applications are open for public inspection as of filing date — publication as soon as practicable — patent rights relate back to filing date if patent issued.

    Little Fifth Amendment Due Process Notice problem here. If I don’t know what the claims will eventually be how can I be liable for infringing the same.

    The prosecution part of the patent bar should not surrender control of patent quality to the patent litigators to be hashed out on a case-by-case basis.

    Now this is just plain silly. Here you want to vitiate the Seventh Amendment.

    I have a great suggestion for you . . . RETIREMENT! At least you will get some of the benefits that the rest of us know will be non-existent in a few years.

  54. “What “headlong rush”? The idea of moving to the rest of the world’s first-to-file system has been discussed more or less forever. There is no “headlong rush.”

    Moreover, the standard complaints against “first to file” — e.g., that “small” inventors won’t be able to compete with the ability of big inventors to file quickly — are vapid. Likewise, the idea that a “first to file” system will lead to “sloppier” applications is equally bogus. People will learn to do what needs to be done.”

    FTF has been discussed and discarded for many years. The ABA stance was only changed about 3 years ago after a poorly announced meeting at which it would be voted upon. The National Acadamy of Sciences was the only organization calling for it. The FTC report did not.

    The main argument against FTI was the discriminatory effect of 35 USC 104 before it was revised in 1995 or so.

    There are prior posts on this topic on this site so I won’t repeat too much of what was said, however, I believe in the equity and flexibility provided by FTI, not the harsh results provided by the brightline FTF.

    The main argument against FTI is the cost of interferences. But to that I cry foul. Just becuase the USPTO implemented a Byzantine, harsh and costly system does not make FTI inherently a costly system. We should reform the implementation, not the law.

    Finally, the rush to harmonize is disingeniuos. If we want to harmonize so much, why not just adopt the EPO system or the JP system, including, by the way, inventor compensation rights.

    No one is harmed by FTI. Indeed, it is easier to get a patent in the USA and this is the biggest marketplace. Sometimes it is sufficent to get a patent just here. Why make it harder to get a patent for our US inventors?

  55. First-to-invent, first-to-file…

    What’s a big deal ?

    Why everybody keeps talking about some minor issue like this and skips the rest of some really shitty proposals included in this “patent deform”

    For us, small inventors, there is no difference between first-to-invent or first-to-file if they keep cheap provisionals available and a grace period of one year

    I can also say: to hell with small entity status !
    I coudn’t care less… When you put your money where your mouth is – that is, spend 15 grand on patent attorney, what is the freaking difference between say 500 $ nd 1000$ you pay to PTO as a filing fee ?

    Concentrate on real issues, people..
    The only real issue with patents I see is getting rid of junk patents and making patent enforcement cheaper and quicker than it is today, partucularly for small entities which cannot afford decade-long patent battles.

  56. I believe that it is time to mandate a definition of the term “search” for which each applicant pays. In my opinion a reasonable search would be that which is undertaken by the USPTO using publically available databases in furtherance of determining the patentability of any claim. This would give rise to a presumption that all information publicly available to an examiner has been searched by the examiner. Therefore, pursuant to 36 CFR 1.56 any information that an applicant would bring to the attention of the examiner would be redundant, were the information available from a publically available search engine, e.g., Google. The duty of disclosure should only apply to information not freely available by a search of a publaically available search engine. In this manner, we could fully implement the 21st century strategy of the USPTO: increased efficiency of the Office. The only information that an applicant should be required to provide to an Examiner is that which is not available by a search of the Interent.

    To drive home the reasonableness of this position I point out that we have been moving progressively toward the USPTO using Rule 1.56 as a means of requiring an applicant to assert prejudicial remarks against their own statutory right. I have not done the research on this; however, it seems to me that there is a marked difference between disclosing information to the USPTO that might be material from requiring an applicant to take actions prejudicial to their own position, i.e., tell what is old in their claimed invention. To show you how ludicrous this can become it is not unreasonable to think that the day may come when an applicant for a patent will be required to swear that they are not in arrears in any child support payments before they are entitled to an examination. I will stop at this point, because I don’t want them to get any other idea.

    How I will end is with the assertion that we should require the USPTO to vitiate any need by any applicant to provide information freely available to an examiner by performing a Google search.

  57. I’ve been involved in this patent stuff for almost 40 years. I think Dennis is right that it is time for the prosecutors to take up the cudgel and lead the assault to make issued patents valid.

    1. Affirmative duty to conduct search and identify most pertinent prior art — especially non-patent prior art.
    2. Affirmative statement of what the applicant regards as his invention.
    3. Define claim terms with binding estoppel to prevent broadening of scope after issuance.
    4. Specification must contain a section that identifies the differences between the invention and the prior art.
    5. Limit on the number of claims.
    6. Perhaps a concession by the applicant of what is not covered by his claims.
    7. Applications are open for public inspection as of filing date — publication as soon as practicable — patent rights relate back to filing date if patent issued.

    The prosecution part of the patent bar should not surrender control of patent quality to the patent litigators to be hashed out on a case-by-case basis.

    I appreciate that these are quite radical suggestions. Hopefully this will stimulate debate. The opinions expressed herein are not necessarily those of my clients :-)

  58. “It is not a “nit” as some seem to think. and a headlong rush to change over to a FTF system in the interest of harmonization is perplexing.”

    What “headlong rush”? The idea of moving to the rest of the world’s first-to-file system has been discussed more or less forever. There is no “headlong rush.”

    Moreover, the standard complaints against “first to file” — e.g., that “small” inventors won’t be able to compete with the ability of big inventors to file quickly — are vapid. Likewise, the idea that a “first to file” system will lead to “sloppier” applications is equally bogus. People will learn to do what needs to be done.

  59. Mr. Metzger,

    I wonder as well. Of all the proposed “reforms”, our FTI system is as deeply ingrained in our system as 101, 102, 103, etc. It is not a “nit” as some seem to think. and a headlong rush to change over to a FTF system in the interest of harmonization is perplexing. It has important ramifications far transcending merely just “absolute novelty”.

  60. Do you have a copy of the letter?

    I liked your earlier post when it mentioned that they were opposed to a first to file system. Why did you drop that part of your post?

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