Patently-O Bits and Bytes No. 6.

  • Patent Reform in February: Hal Wegner notes “widespread predictions” that Senator Leahy now has enough votes to push the Patent Reform Act through the Senate.
  • Patent Reform Writeup: Professor Jay Thomas (Georgetown) is also tasked as the IP guy for the Congressional Research Service (CRS). In that capacity, Thomas has taken to explaining some of the pros and cons of the Patent Reform Acts of 2007. (HR 1908; S 1145).  [CRS REPORT ON PATENT REFORM] According to Thomas: “The provisions of the proposed legislation would arguably work the most sweeping reforms to the U.S. patent system since the nineteenth century.”  Thomas does an excellent job of quickly discussing each proposed reform measure in language as neutral as he can muster.
  • PCT Seminar: April 25–26 Pierce Law will host its 10th annual Comprehensive PCT Seminar in Concord, NH. Cost is under $400 ($100 for students). Two of the leading PCT Experts Carol Bidwell and David Reed will lead the seminar. [LINK]
  • Position: Director of the Office of Technology Management and Industry Relations at the University of Missouri. (Join me in Columbia). “The University of Missouri, Columbia (MU) is seeking an innovative, energetic, and experienced individual to serve as Director of the Office of Technology Management and Industry Relations.” [LINK]

67 thoughts on “Patently-O Bits and Bytes No. 6.

  1. 67

    Somebody pls xplain to the insane PTO official wanting searches , claims, spec all to be roadmapped in an everchanging legalistic design as the prosecution progresses toward disbarment for all hands that inexcapably became a tort feasor by having anything to do with the document destined to eventually become letters patent, maybe…:
    It may alarm some of the PTO Officials to discover that The numerals used to identify elements of the drawings are set forth in sequiential numerical order in the spec of the patent application and also that the claims each and every one have antecedent basis found in the spec ….
    So why must the practitioner be forced to take the Examiner by the hand and lead him through the Claims, spec, drawings, and into the never ending art? All of you realize there is no such thing as a complete search; never will you ever see a complete search.
    There are very capable practitioners who feel that a search misleads as much as it leads, thus they do not do pre-exam searches at all (they are all dead now so use past tense). Especially in view of the double search one must pay to the PTO nowadays. The PTO search ought to be held as an example of the par-excellent search. And the Examiner must illustrate to Applicant where in the reference he found the teachings that he applies to what verbage in the claims as discussed in the spec. Oh but we will have fun; the pto just might have to eat all those beans.

  2. 66

    Anonymous, I suspect I know who you are. It may be dicta, but that part of the injunction was also vacated by the court below on remand. If you are who I think you are, then we’ve been here before.

    In any case, if the outside counsel signs the search report and adds their reg. no., and then you file it in the PTO as required by the examiner, it makes no difference whether it is an opinion or not, it’s just a paper filed as part of regular prosecution, which anyone with a reg. no. can sign even if they aren’t on the declaration, under rule 34. Of course, there are exceptions where you need to be of record, but I can see no reason why the PTO would add applicants’ search reports to them.

    I have no idea why I would want to file a revised opinion of my own. I would expect that the person doing the search would write the bare minimum to satisfy the PTO, so as to limit estoppel as far as possible, and frankly so as to minimise what they had to do for the fixed fee that would get, and adding to it would just seem to be making unnecessary problems.

  3. 65

    “The PTO calls them customers”

    The PTO used to call them customers – now they merely represent “extensive burdens on the Office” (from the new continuation rules, FR 46716).

    Both views, in my mind, are wrong.

  4. 64

    In this day of obnoxious perpetual patent law changes; it is impossible for one practioner to consult, advise, search, prepare patent application, prosecute the Pat App to allowance and not have a nervous breakdown within the year. The Nut Houses no doubt are full of Patent People who delayed retirement just a bit too late.

  5. 62

    Dear european lurker,

    Thank you for reading my comments.
    I do not disagree with what you say with one exception:
    I do care about what you have to say; and I appreciated your comment.

    Perhaps if I can rally support over here for a strong American patent system,
    America can continue to lead in all so many ways including innovation,
    and you can continue to follow over there.

    If your nation were number one, and had a Constitution that began:

    “We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.”

    Would you sit by, do nothing and watch your nation lose that enviable position?

  6. 61

    “and perhaps I’m more paranoid than I should be.”
    just add:
    – a tad xenophobic,
    – a zest chauvinistic
    and we have it.

    Seriously, JAOI, you may be the lonely hero defending the US patent system, but read from abroad you are not the best publicity for your fellow people in the US.

    I do know that me being a foreigner, you couldn´t care less. But after months of reading your comments, I had to say it.

  7. 60

    Dear erez gur,

    Re: “My guess is that ultimately the PCT/EPO system will become the standard and the US will have lost out on a chance of influencing how the harmonized patent system will look.”

    Perhaps you are more informed than I regarding “patent harmonization.” Perhaps you trust the EU while I think they would like to eat our lunch, i.e., move into the number one position of world leadership, perhaps you don’t mind that what Germany couldn’t accomplish with war they’ve accomplished politically, and perhaps I’m more paranoid than I should be.

    One thing I am quite sure about is that I would hate to see our nation become “standard.”


    We the American People are Spectacular. We Lead the way for others to follow.

  8. 59


    In January 2009, President Mike Bloomberg asks Dennis Crouch to join his Cabinet and take a new position — The Department of IP & Innovation.

  9. 58

    why harmonization? why not?

    1) examinaton within the uspto is not harmonized even for applications that pass from examiner to examiner because of pendency issues —

    2) language as well as claim construction itself cannot be harmonized (even within the pto) — and why would any country with an industrial policy favoring its own people, and its own language, whether innovative or not, have any incentive to harmonize?

    a) china (many decades ago, they harmonized//simplified their written language to amplify mao’s messages) — Cheng & Lin, “The Greatest Changes of the US Patent System in the Past 50 Years”, China Intellectual Property News,November 11, 2007 (see Hal Brooks’ piece including translation of the letter referenced)

    b) india (the world’s largest democracy and birthplace of large numbers of entrepreneurs who start a big percentage of america’s silicon valley start-ups) — Gireesh Chandra Prasad, “Local cos can eye patents in US”, The Economic Times, July 23, 2007

    3) copyright, arguably simpler to harmonize, has not been successful — even in light of all of the work that has been done by wto/gatt, the litigation by riaa/mpaa as well as doj/fbi assistance — international coverage of napster & sdmi, et al. — etc. etc.

    4) what is harmony anyway? i say a least common denominator

    a) a patent instrument with any value is certainly not a harmonizing bundle of rights — its value is NOT determined by the pto & its value is certainly not welcomed by the status quo– with or without litigation (which itself is not harmonized) —

    b) the inventor most likey believes the patent is worth more than it is (evidence bears this to be true but so again with any individual pursuit – singers, football players, IB analysts all have markets to estimate value)– but so what? she paid her way for search and examination — whatever the outcome — and there has been no discussion of an alternative way to incentive disclosure e.g., there is NO marketplace for patents — contrary to lemley and myhrvold’s proposal — it is hard to imagine BUT instead a monopsonistic market which gives the ststus quo entities unfair leverage is a likely outcome …

    >>why do foreign co.s litigate in the us instead of either of their home countries? perhaps because we have the best lawyers or the best incentives or the best system or simply the perception of equity

    5) there has been NO evidence whatsoever that the proposed changes address the issue most people seem to dwell on most: software patents (oh, and submarine patents errggg) … clearly a bait and switch … similarly, as argued or ignored here before … there is no “class” of inventors (let alone entrepreneurs) that has a voice representing its interests … it might well be that the only way to message is to beat the odds (whatever standard – money, happiness, vanity) and become an Edison, Bell, Lemelson, et al. — or that Reese’s peanut butter guy (molly bloom’s husband — can i use this as parody?) —

    6) clearly there are more inventors against draconian reform than companies in favor of draconian reform … — all of the folks who neither understand nor care about the benefits of the system are entitled to rant against “bad patents” and “bad movies” — the patent system may change in ways that are likely to force more direct interaction between the inventor and the examiner … a small wager on that … akin to how the content business in general has been forced to change even with all of the legislation and support the government has thrown its way …

    7) america alone has a greater emphasis on individual rights — and arguably, the underdog — until the underdog wins (?) — so it is hard to contemplate cases in foreign countries where the individual inventor prevails over an established (or not) “national champion” – one case in point: TI’s litigation in japan — so where is the reciprocal harmonization?

    8) politicization has clearly infected the system … many of the rules being proposed and supported by the legislation will put pressure on practitioners to redefine their roles … when all of the costs and real numbers come out concerning prosecution — i would bet the insurance // liability estimates for prosecution will be truly astronomical — corporate budgets for prosecution will be reconfigured in ways that diminishes “returns” for all parties in the system …

    9) what does the US and its citizens get in return? Rep. Berman & Sen. Hatch & Sen. Leahy talk about quality of patents improving and assuming this is correct … what does that mean, exactly? can it be the case that the prices of coalition for patent fairness “products” & “services” are lowered? can it be the case that the medicare deal with BigPharma preventing the US govt from negotiating lower drug prices be impacted by this reform? will the legislation if passed be litigated by DataTreasury Corp — singled out by the Sen. Sessions as an amenedment to the act?

    it’s a shame … write your senators … encourage your clients to write their senators …

  10. 57


    I believe that “patent harmonization” as a principle is a good thing for the people who matter: consumers and small inventors/entrepreneurs.

    I also believe that a few years ago the US patent system was excellent, although it may have needed some fine tuning to prevent overly-broad claims from being allowed.

    Yet, something went seriously wrong along the way, and the changes you mention (and some you don’t, like the now deceased USPTO new rules or Pfizer v Apotex) all seem designed to damage American innovation. None of these changes have anything to do with harmonization.

    In contrast, it seems the PCT/EPO are making efforts to make patenting more predictable while reducing the price of a patent.

    My guess is that ultimately the PCT/EPO system will become the standard and the US will have lost out on a chance of influencing how the harmonized patent system will look.

  11. 56

    Dear erez gur,

    I appreciate your views but I see things quite differently. I believe weaker patents will result, for example, in shorter lives not only for myriad Americans but also for people around the world. Here’s how and why this belief relates to you comment:

    If the embodiments/attempted embodiments of “Patent Harmonization” were to strengthen foreign patents, then I would agree with you 100%. But the opposite is true.

    The embodiments/attempted embodiments of “Patent Harmonization” we’ve been seeing, especially since Festo in 2002, have been, for example, to make my US patents harder to get (KSR), less enforceable (eBay) and worth less via reduced damages if enforced.

    Since eBay, for example, we’ve been seeing case after case of compulsory licensing. A patent without a threat of an injunction is like a revolver without bullets – you can’t shoot a criminal pirate thief with an empty gun, but, if you can afford million$ for litigation, and if you prevail against big business’ deep pockets in court, you can maybe, only maybe, come out with a severely reduced profit. Given these ugly factors, patent pirates won’t take licenses voluntarily and will infringe patents, especially self-employed inventors’ patents, more flagrantly than ever, and law firms will be disinclined to take cases on contingency. In my ordinary mind our deteriorating American patent system really really sucks. Am I missing something?

    The US patent system is in jeopardy!, because it is being systemically dummied down by efforts of the PTO itself, Congress and our Courts, essentially at the behest of organized big business and morally corrupt government employees who do not honor their Oaths of Office. We self-employed inventors are getting screwed every which way.

    And please consider this: If US patents were brought down to the level of foreign patents, I doubt Pharmaceutical companies, for example, would be able to afford to develop the medications that, for example, are keeping me alive with my breathing difficulties.

    Thus, one result of weaker patents will be shorter lives, not only for myriad Americans but also for people around the world.

    As you can see, it is not strange at all “that the greatest critics of harmonization come from the US which has the greatest inventors.” Won’t you join us, We the American People?

  12. 55


    Patent Harmonization would primarily help creative small entities and consumers to the detriment of IP thieves and large non-innovative corporations.

    Currently, a small entity cannot afford world-wide patent protection. Thus, a product embodying a patentable idea will be expensive in a few places in the world (where a patent was filed and prosecuted) and cheap in most of the world (because the small entity could not afford to file).

    IP thieves are happy because fewer patents means bigger legal markets for copies.

    Big corporations are happy because these can afford world-wide patent protection or can use their marketing power to dominate a market even without patents.

    If there was patent harmonization, world-wide patenting would be possible even for the private inventor or the entrepeneur, meaning that an inventor could make greater profits at lower prices: imagine a world where medicine prices in the US were cheap and you would not receive spam offering “Cheap Meds from Canada”.

    It is strange that the greatest critics of harmonization come from the US which has the greatest inventors (who would gain from world-wide patenting) and issues the most patents (so that American consumers subsidize invention for the rest of the world).

  13. 54

    Dear Joe Smith,

    PS: I don’t want “harmonization” because I’d like to see the United States continue to lead the rest of the world so our progeny can enjoy the benefits of such leadership as did We the People for many generations.

  14. 53

    Dear angry dude,

    You got that right! I’ll raise a toast to your comment – hear, hear, let’s hear it for angry dude!


  15. 52

    Dear Joe Smith,

    Re: “Do you think the current system is so perfect it cannot be improved?”

    Is the Patent Office run by competent people who understand how to manage our nation’s business of granting patents? Has the Patent Office suggested improvements to the examining process or any improvements that appeal to inventors? Has the Patent Office proposed changes to the patent system that alienated inventors?

    Yes, Joe, I agree with you — the current system desperately needs improvement.

    No, I did not attack “anyone who questions the current patent system as somehow anti-American.” I attacked “harmonization.” What I said was:
    “Moreover, the American patent system is fair to all, in that, American patents are granted essentially equally to inventors of all nationalities, so why would even a foreigner, other than a foreign patent pirate or an anti-American foreigner, want harmonization?”

    And I agree that something has been squandered: Clinton and Gore squandered the opportunities afforded our nation after our nation won the Cold War and the Wall came down; and they in essence did nothing to protect my city, the greatest American icon, after the on first attack on the Twin Towers. Based on these and other personal experiences, my contempt for the previous administration runs deep.

    Re the 2000 election, Gore let his lawyer argue to count the votes over but only in a few predominant Democratic neighborhoods. Just plain nuts if you ask me.

    Nor do I think much of the current administration with its rampant cronyism and extreme disregard for We the People and our Constitution.

    And most of all, I agree with you that “The United States is a great country.” We have survived many horrible administrations, and we have nonetheless survived as the greatest nation, but I fear complacency — our nation has begun losing it big time starting with the previous administration — Bill and Al (and now Hillary) never intended to honor their Oaths of Office, and they showed nothing but disrespect and distain for our nation. Morally bankrupt executives can destroy a nation’s moral fiber in untold insidious ways. And that lead to the worse divide our country has seen since the Civil War.

    We would have faired much better in Iraq if our nation wasn’t so split — a nation divided cannot win wars.

    On the bright side, I have a prediction: New York City’s Mayor Mike Bloomberg will enter the race before the end of March and he will win. Guaranteed!

  16. 51

    “There are three primary types of people who would subvert our strong American patent system or want patent system “harmonization”:

    (1) Patent Pirates, and/or
    (2) Foreigners or non-patriots with an Anti-American Agenda, and/or
    (3) Those ignorant of reality.”

    You forgot one more category:

    (4) LOSERS

    Meaning folks who haven’t contributed anything useful to society…
    (Has nothing to do with money: Never measure a man’s success by the size of his wallet..)

  17. 50

    one step forward two steps back. the new first to file system is better than the present except when you add required prefiling patent searches and financially interested examiner patent disqualifiers to the already financially interested inventor patent board were talking total corruption again.

  18. 49

    JAOI (TM) The United States is a great country. Its biggest problem is that the current administration (which should not have been elected by SCOTUS in 2000) has squandered the opportunity Clinton and Gore created to put the nation’s finances on a sound footing before the baby boomers retire. Irresponsible fiscal and monetary policy since 2000 (and irresponsible monetary policy before that) have created problems that will take decades to sort out. Attacking anyone who questions the current patent system as somehow anti-American is counterproductive. Do you think the current system is so perfect it cannot be improved?

  19. 48

    To Kevin Noonan: Equity is the thing that gives English common law the potential to outperform civil law jurisdictions. I’m not advocating that it be swept away, for that would be a step backwards. What civil law jurisdictions are good at is “proportionality”, something that is often out to lunch, when disputes go to law in USA. Can Congress (and SCOTUS) fuse together the best of civil law and common law, thereby to set a new Benchmark, how to resolve patent disputes? Consider the British Islands, where common law is under the aegis of civil law continental Europe. Equity is alive and well, but subjugated to proportionality. I think that’s good for individual inventors, innovative corporations, and the companies that try to compete with the corporate patent hoarders. I’m boring on this blog because I want to use it, to leverage the hard-won UK experience onto a much bigger stage.

  20. 47

    EG – absolutely correct …

    (kelo in light of the mortgage meltdown … what a synopsis of the past 7 years of government … property & money)

  21. 46

    “As you know, the Supremes are prisoners of their precedent unless some vast societal cataclysm occurs (think Plessy v. Ferguson versus Brown v. Board of Education)(and note, I am not equating patent law with civil rights, just making the parallel about how tough it is to get the Court to change directions).”


    Thanks for the reply (and showing that patent attorneys actually know the law outside the patent area). I would certainly not misconstrue what you say about how important Brown was overturning Plessy (versus how SCOTUS currently interpretes the Patent Clause). Yeah, SCOTUS is held hostage by its own precedent as witnessed by the “Dark Side” case of this century, Kelo v. City of New London which took our Bill of Rights and stood it on its head. But maybe we do have an argument here for changing course in view of new circumstances, namely that patent rights are extremely important now to protect and encourage American innovation, and especially to encourage innovation by small American businesses (which was surely the Founding Fathers original thought behind the Patent Clause, no matter how much SCOTUS in the past wants to say otherwise), which may be the only competitive advantage left to America in this worldwide economy. Again, not exalting this to the level of Brown, but something to consider at the appropriate time (and with the appropriate case) to possibly jar SCOTUS to think outside their box (if they ever do).

    Anyway, we have the benefit (assuming Congress doesn’t screw it up) of the Federal Circuit toning down or ameliorating at least some of the “collateral damage” caused by each SCOTUS pronouncement in the patent area. Witness the recent Cordis Corp v. Medtronic where the Federal Circuit deftly kept the TSM test in play in spite of what the naysayers said about the impact of KSR International. Many IP law professors (most of whom never practiced real law very much) rail against this valiant effort by the Federal Circuit to render order out of complete chaos generated by SCOTUS, but I can only applaud the Federal Circuit when it does. Yes, the Federal Circuit has its “issues” but this isn’t one that bothers me in the least. I only hope the Federal Circuit doesn’t lose its courage to render order out the chaos whenever SCOTUS acts like a “bull in the china shop” in the patent area.

    Anyway, I always enjoy the dialogue between us, and will continue to check your Patent Docs blog which is very beneficial to us in the patent field, and not just in the biotech/pharma area.

  22. 45

    “And they want the applicant to do it without the benefit of the ‘limited government immunity’ that covers Examiners when they make mistakes, and without protection from ‘admissions against interest’ or charges of inequitable conduct.”

    The admissions against interest problem will likely not get any traction. (Few will feel sorry for attorneys who negligently admit that the prior art includes something it doesn’t.) But the inequitable conduct problem needs to be addressed because most people realize that knee-jerk inequitable conduct defenses are “a plague” and need to be reigned in.

  23. 44

    MaxDrei and others who favor patent system “harmonization” discussed above:

    The Constitution, Article I, Section. 8. The Congress shall have Power …
    Clause 8: 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;

    It should be self-evident to any thinking person that strong, more valuable American patents from a strong American patent system do more “To promote the Progress of Science and useful Arts,” FOR AMERICA than weaker patents. What intelligent person could argue differently?

    American inventors securing American patents have materially contributed to the number one status our great nation enjoys (even despite current circumstances). One thing in common all of today’s presidential running mates have is their stated desire to put America back on track to restore the greatest-nation status we have lost/are losing (owing in large part in my ordinary opinion to the extreme bipartisanship created by the division-derision debacle of the 2000 election created namely by Gore and his lawyer Boies and the split decision which further divided our nation).

    Since the American patent system compared to those of other countries does more “To promote the Progress of Science and useful Arts,” FOR AMERICA than weaker patents, why would anyone other than a patent pirate or an anti-American foreigner want “harmonization”?

    Moreover, the American patent system is fair to all, in that, American patents are granted essentially equally to inventors of all nationalities, so why would even a foreigner, other than a foreign patent pirate or an anti-American foreigner, want harmonization?

    There are three primary types of people who would subvert our strong American patent system or want patent system “harmonization”:

    (1) Patent Pirates, and/or
    (2) Foreigners or non-patriots with an Anti-American Agenda, and/or
    (3) Those ignorant of reality.

    MaxDrei, which are you?, or are you both (1) and (2)?

  24. 43

    Budge, the USPTO doesn’t just want search reports – that would be relatively easy and not many people (shall we say, not many large-entities) would complain since this is or should be part of the normal course of business (and small-entities could be easily excepted).

    But the USPTO wants search reports *AND* claim analysis, and such a level of claim analysis (every feature and limitation of every dependent claim) that is almost unheard of today even in the most complex litigations. And they want the applicant to do it without the benefit of the “limited government immunity” that covers Examiners when they make mistakes, and without protection from “admissions against interest” or charges of inequitable conduct.

  25. 42

    Budge — isn’t that sort of the way we do it now — we pay the Patent Office to have its examiners conduct searches which the examiners then use to issue their Office Actions?

  26. 41

    Dear EG:

    As you know, the Supremes are prisoners of their precedent unless some vast societal cataclysm occurs (think Plessy v. Ferguson versus Brown v. Board of Education)(and note, I am not equating patent law with civil rights, just making the parallel about how tough it is to get the Court to change directions).

    In view of the Court’s recent pronouncements in other areas of patent law, sophistry or not we are stuck with this narrow interpretation. The only option is to fashion the rules relating to IC to be as reasonable as possible.

  27. 40

    I am still waiting for traction to my idea on searches, which is by far the best one out there:
    allow patent holder exemption under rule 56 to make blind assignment/delegation of the search to a third party. Let us hire the third party, and file the search report as is, or have them file it, with no influence from us. Make the process optional. Qualify searchers.

  28. 39

    Dear Waiting for January 20, 2009:

    You should have the president (or at least the chief patent counsel) of your small entity biotech company contact every senator and congressman who can help and express your concerns. (They WILL listen to company executives where jobs and profits may be at stake. They are less likely to listen to attorneys in private practice.)

  29. 38

    “is the Court that mandates that “a patent by its very nature is affected with a public interest,” and so long as that is their view, inequitable conduct will be a feature of US patent practice.”


    Thanks for reminding me of this passage from SCOTUS’ Precision Instruments opinion. Here’s the full quote:

    A patent by its very nature is affected with a public interest. As recognized by the Constitution, it is a special privilege designed to serve the public purpose of promoting the ‘Progress of Science and useful Arts.’ At the same time, a patent is an exception to the general rule against monopolies and to the right to access to a free and open market. The far-reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope. The facts of this case must accordingly be measured by both public and private standards of equity. And when such measurements are made, it becomes clear that the District Court’s action in dismissing the complaints and counterclaims ‘for want of equity’ was more than justified.

    This passage was and still is so much rhetorical nonsense by SCOTUS. Precision Instruments came out in 1945, in the “dark ages” of patent law, and gives the standard one-sided view that patents are this “evil monopoly” and are to be tolerated only to the extent SCOTUS feels the Constitution necessitates patent rights. But for SCOTUS to exalt this passage from Precision Instruments to Constitutional heights is sheer sophistry as it never addresses the real reason for the Patent Clause which was to encourage (not discourage as SCOTUS would like you to believe) technological and scientific progress in America by rewarding those who were bright enough, observant enough and diligent enough to invent such important technologies. And now Congress may take us back to those “dark ages” with this monstronsity that is disingenuously called “reform.” I truly hope and pray that S. 1145 and it’s evil twin, H. 1908, die the death they deserve.

  30. 37

    Dear Max:

    I share your pessimism about harmonization. But it isn’t equity per se, but the Supreme Court’s view of the limits on Congressional power to grant patents in the first place. It is the Court that mandates that “a patent by its very nature is affected with a public interest,” and so long as that is their view, inequitable conduct will be a feature of US patent practice.

  31. 36

    Dear real anonymous,
    You calling my Maxy a pig? Maxy, step out of your mud and stand up for your stink. Even a pig is entitled to his home.

  32. 33

    Huh? Say What? Now I now you are from another place altogether and do not comprehend the king’s English!~

  33. 32

    At least the bill doesn’t give the USPTO authority to limit continuations nor does it give the USPTO substantive rulemaking authority. That would have really been a disaster!

  34. 31

    “Sound” like a foreigner? What noises are you hearing in your atavistic head, Student? And why “Maxy”; this compulsive need to use a name other than the pseudonym I have given? I can’t imagine that you have the same sloppy attitudes to tapping out passwords. As to what you “hope”, nobody (and that includes me)is the least bit interested.

  35. 30

    Equity, Mr Noonan: an out of control monster that stalks the small number of countries that run an English common law legal system but isn’t wanted in the civil law majority of countries on our planet earth. Common law England is part of the civil law European Union, which keeps equity from running amok. English trial lawyers watch lustfully, how in USA the equitable tail wags the judicial dog. Harmonisation? Forget it.

  36. 29

    English or not, you still sound like a foreigner to me.
    I hope I haven’t offended your British Speak (not).

  37. 28

    Yep Student, when it comes to the English language, I sure do speak the speech. As to writing in English, I’ve been trying for a long time to get the hang of that too. Actually, I have a hunch that all other readers will follow my drift more than adequately. BTW, what are you a “Student” of? English language perhaps. My point is on the Senate Bill and, when it comes to enacting a provision for post-issue opposition, the Law of Unintended Consequences. What’s yours?

  38. 27


    I think the issue cannot be cost (although important, I agree that no one will care about costs as a driver to make a policy decision). The issue is inequitable conduct, and the “rock and a hard place” that proposed Section 123 imposes on practitioners and their clients. It doesn’t matter whether a patent agent or search company or the client does the search and relevancy report – it is open to second guessing and ex post facto reconstruction into inequitable conduct by trial counsel.

    If proposed Section 298 imposed a higher standard for inequitable conduct (either mens rea or recklessness), then a practitioner in good faith could do all the things the PTO wants us to do, and better quality patents might ensue. (Mostly because knowing the art is better than taking a “head in the sand” position, and pracitioners will do a better job of searching than examiners (if only because they will have more time).

    But if anything a practitioner says is guaranteed to be used to support an inequitable conduct defense, then the system is just not workable.

  39. 26

    Max: “When common law UK, pre-1978, had oppositions, it used to take the 16 year lifetime of the patent to settle them.”

    I’ll ride that crazy train for a while! I’ll be retiring about the time the first ones settle.

  40. 24

    From Europe: Square deal makes a good point. If post-issue opposition is to be worth enacting, it must catch something approaching 5%, like in the EPO. But the difference between EPO and USPTO is the difference between common law and civil law, that is, on the financial/legal time resources needed to settle a dispute, a multiplier of about one hundred. Maybe (if it put its mind to it)civil law Europe could settle oppositions in a year, but in reality it takes the EPO five years. Can common law US settle oppositions in a year? When pigs start flying maybe. When common law UK, pre-1978, had oppositions, it used to take the 16 year lifetime of the patent to settle them.

  41. 23

    “assuming that applicants don’t care if it’s done right.”

    There is certainly a fraction of applicants for whom that is the case. We call them “habitual filers.”

  42. 22

    “…and most applicants would gladly pay an examiner (at their rates) to do the work rather than their attorneys at their rates.”

    Yeah, assuming that applicants don’t care if it’s done right.

  43. 21

    TJ, the PTO has a management problem that caused the manpower problem. And yes, we need to make fair changes to accommodate the current (low quality) examination reality. And we need to perhaps re-train a large portion of the corps using the experienced examiners we have left. But the PTO is merely setting forth changes that kill off the little guy (at the behest of Big Corp., no doubt), and increase the barriers to entry for everyone else, rather than focusing on increasing quality.

    To increase quality, get in managers that have a practical understanding of the patent system.

  44. 20

    “Either applicants are going to do more work, or you are going to pay the PTO to do the work for you.”

    … and most applicants would gladly pay an examiner (at their rates) to do the work rather than their attorneys at their rates.

  45. 19

    To all the people complaining about the cost of search reports, consider your options. Let us stipulate that the PTO currently has a manpower problem that leads to low patent quality through inadequate examination:

    1. Hire more examiners = increase PTO budget = jack up fees.
    2. Get applicants to do more work = search reports.
    3. Reduce workload = continuation limits.
    4. Status quo = low patent quality = political fuel for patent reform bill.

    Pick your poison. But please don’t pretend that the iron law of limited resources doesn’t apply. Either applicants are going to do more work, or you are going to pay the PTO to do the work for you. (Yes, I know that ending PTO fee diversion will help, but it won’t solve the fundamental problem.)

  46. 18

    This not a patentability opinion in the traditional sense (i.e. done after issuance for FTO reasons) but instead is an evaluation of art prior to filing, which I would hope every agent/attorney does before filing. Little reason an agent could not do these, IMO.

  47. 17


    Actually, the Court did not expressly hold that agents can sign a patentability opinion. They merely said in dicta (that is, a non-precedential statement) that “a practitioner authorized to prepare patent applications must of course render opinions as to the patentability of the inventions brought to him.” I wouldn’t trust the Roberts court to feel bound by the Warren Court’s dicta. But, if all you have is dicta, why not run with it, eh?

    The problem with hiring an outside agent or even an outside attorney to write the opinion is that prosecuting attorneys will almost always want to revise the opinion. The original and revised opinions would be exhibits A & B to any future defendant’s motion for summary judgment of inequitable conduct.

  48. 16

    “It is also interesting to note that the Report devotes less than 50 words or so to the search and characterization requirement (proposed Section 123), a provision that may be even more debilitating to U.S. patenting than any other. Professor Thomas appears to have missed the significance of this provision.

    Posted by: Kevin E. Noonan | Jan 25, 2008 at 12:23 PM”

    I was a bit disappointed to read only a brief summary of the bill as written, and no analysis at all of Section 123. Writing from the point of view of an in-house biotech patent attorney (small entity), each of these search reports could cost up to $100,000…. This will prevent use from filing on most of the inventions at the company and make us try to protect our IP through trade secrets. That’s not going to promote progress very much….

  49. 13

    Not that I’m condoning the use of the word “retard” in any context, but I can’t help but wonder whether that word in the phrase “secret retard police” refers to the objects of the policing activity or the members of the squad. 6k, is this is another of your government duties?

  50. 12

    Damn, I was going to say “it’s a good thing you put Anon Moose at the end of that letter or the Honorable might have sent the secret retard police to your house” but then you said you protected the wildlife … I can’t help you man.

  51. 11

    IMHO, this is the only really onerous part left in the reform bill, so I had thought we were not doing too badly.

    My suggestion is to get the searches done by patent agents and have them write the reports. There are a lot of agents who only do searches and not prosecution (not me, I only do prosecution these days). At least that way the patentability opinion (we all know that’s what it would be) would be signed by someone not otherwise involved with prosecuting the application. Yes, a patent agent can sign a patentability opinion (Sperry v Florida, USSC 1963, 373 US 379).

    This may not help that much, but at least you won’t have to explain to your client why you wrote something that led to a problem later in prosecution. If it was written by the firm that did the search you can blame them, LOL!

  52. 10

    I suspect that not one legislator will give a second thought to complaints by attorneys about how much paper will have to be filed with a patent application. Further, I expect many senators and much of the public to think that possibly weaker patents mean patents that cannot be stretched in litigation to mean things the inventor never conceived of.

  53. 7

    I actually sent this to my local representatives because I think the search provision may stink for a patent applicant(if the 5/25 rule provides any sort of indicator for how this will operate)….

    Letter to Senator/Represenative:

    Honorable X:

    I am encouraging you to either strike or amend the provision from current Senate Bill S.1145 concerning the mandating of search reports for the filing of applications in the United States Patent and Trademark Office.

    If the patent office decides what type of patent search reports must be submitted, it is very likely that the requirements for such search reports will be very burdensome for both small inventors and large companies.

    That is, the patent office in regards to a previously proposed patent office rule for patent application exceeding 5 independent claims (known as 5/25), required that a patent application show in the prior art how each element of a claim is not shown. Hence, complete burden of Examination was placed on the Applicant. The cost of such requirements would be in the thousands of dollars per patent application to be filed.

    If a search report is mandated, the bill should state that an acceptable search report would be one that was produced by an International Searching Authority as produced for a patent application that was searched under the Patent Cooperation Treaty.

    The point to the bill that may be missed is that if the Patent Office mandates a specific format (like they previously proposed for their 5/25 claim rule), is the United States patent office would reject their own search report (that they would be produced as an international PCT searching authority).

    That is, the patent office’s search report as an ISA would not meet the burden required for an application when that application is filed in the patent office in the national phase (in the United States).

    Possible solutions to this problem [if a search report is required] is to either mandate that any ISA designated search report would meet the burden required by the law, or that the US Patent Office’s own search report (conducted for as an ISA during the PCT phase) would meet the requirements for the submission of a search report.

    I would highly suggest not allowing the patent office to control this decision as they will make it extremely impossible to prosecute patent applications in an orderly and economically efficient manner.


    Anon Moose (name not used to protect the wildlife)

  54. 6

    “It is also interesting to note that the Report devotes less than 50 words or so to the search and characterization requirement (proposed Section 123), a provision that may be even more debilitating to U.S. patenting than any other.”

    Well said. Close behind that is the provision to allow the USPTO to set fees. You know the USPTO will ramp up fees for continuations and claims to achieve the functional equivalent of the two-continuation and 25-claim limits.

  55. 5

    NIPRA has posted (another) sample letter to Congress regarding 35 USC 123 (USPTO requiring search etc.) at:

    link to

    In part:

    This Section, as written, would be detrimental to the U.S. Patent System and it would hinder rather than promote the progress of science and the useful arts for at least five (5) reasons:

    1) it gives too much discretion to the current U.S.P.T.O. Director;
    2) it is unfair to small business entities;
    3) it could be used to compromise the attorney-client relationship;
    4) it would shift the transactional burden-of-proof in the application process; and
    5) it fails to address the more pressing needs of the U.S.P.T.O.

  56. 3

    It is also interesting to note that the Report devotes less than 50 words or so to the search and characterization requirement (proposed Section 123), a provision that may be even more debilitating to U.S. patenting than any other. Professor Thomas appears to have missed the significance of this provision.

  57. 2

    Isn’t Prof. Thomas on IBM’s payroll?

    Can we please declare a moratorium on citing the thoroughly discredited Lemley and Moore paper (p. 47, footnote 233)?

    Square Deal is correct. It’s even worse than he thinks though. Under the current system, the examiners constantly re-open when challenged by an appeal, thus reducing the number of cases the Board would have to decide by thousands. The Board is not going to be able to rely on examiner shenanigans to avoid deciding post grant oppositions.

    Getting APJ money to punch the 40 hour clock probably wouldn’t be the worst thing for burned out practitioners. Time to click on the jobs tab of the PTO website.

  58. 1

    While I like Professor Thomas, I wish he would have addressed some of the functional constraints of the PTO in his analysis of the pending Senate legislation regarding post grant review and reexamination. Last year, the PTO issued 160,308 utility patents (2007 PTO annual report). There were only 643 Ex parte and 126 Interparte reexamination requests filed (about 0.5% of all patents issued in 2007). According to, in 2005, oppositions in the EPO were filed against 5% of issued patents). If the US rate were the same, then there would be 8000 oppositions. The current BPAI decided about 3600 cases in 2007.
    So if the current number of judges can only do 3600 cases (the vast majority of which are ex parte, not requiring any discovery, motions, or other complications but simply analysis), then it would require at least a three fold increase in the size of the Board to handle the new workload. I have no idea of the current size of the BPAI, but I suspect that even if the Board could hire every primary examiner or SPE with a law degree and lure private practitioners willing to take a pay cut for the change in lifestyle, there still would not be enough applicants to quadruple the size of the board. So Congress, in mandating a one year turnaround, better be hoping that only about 0.5% of patents get subjected to postgrant review, or else the backlog in the business methods area is going to seem short compared to the wait for post grant review.

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