Patently-O Bits and Bytes No. 10

  • Financial Services Event: The Securities Industry and Finance Markets Association (SIFMA) is hosting a half-day patent law symposium for the financial industry on March 11 in New York City. Speakers includes Chief IP counsel for several major financial institutions and Ocean Tomo. See www.sifma.org/patentlaw2008. The cost is regularly $595, but we’ve secured a $200 discount for Patently-O readers who use this registration document.
  • Standard Setting Event (STARTING NOW): The FTC’s recent decision in N-Data raises a number of dramatically important issues for how patent holders should operate during a standard setting process. The MoFo law firm is hosting a lunchtime event on Feb 6 (Noon PST) to discuss the FTC’s change in course. Via WEB or live (4290 El Camino, Palo Alto). Free.
  • IDS Rules Status: We expected to see the new IDS in January and receive an implementation schedule. We have no word on when or whether those will be forthcoming.
  • CyberLaw: A Legal Arsenal For Online BusinessPatent Blogs: Brett Trout is an Iowa patent attorney with a fun blog: blawgit.com. In a recent post, he provided a nice up-to-date list of patent blogs. LINK.  Brett is becoming well known for his book titled “Cyber Law.” The book is great (Brett sent me a free copy), but the fame comes from another attorney’s attempt to enforce a trademark to the “CyberLaw” phrase. (See also Stephen)

37 thoughts on “Patently-O Bits and Bytes No. 10

  1. 37

    “If disclosure were strengthened (by making it a capital offense to not disclose what you know, or less harsh methods) then my job would become, “find a motivation to combine and be done with the whole thing”. Thus found, the application would be through in over 70% of the cases I do (I can’t speak for the whole corps). Efficiency would go straight up through the roof while the number of applications would go down. There’s patent reform for you, capital offense disclosure rule.”

    What is it about 37 CFR 1.97 that you don’t understand?
    What is it about considerable number of cases that have held patents to be unenforceable/invalid for failure to disclose material, yet known, prior art don’t you understand?

    Quite simply, failure to disclose known, material prior art leads to invalidation of the patent for the patentee (i.e., loss of all rights that the patentee has obtained) and if it is the fault of the attorney, likely a malpractice suit. It doesn’t get much worse than that.

    Let me clue you in on something, in many fields and for most inventions, the inventors don’t have a clue as to what constitutes the best prior art. Inventors are problem solvers, not searchers. They see a problem, solve the problem in a way that they think hasn’t been done before, and us patent attorneys pick it up from there.

    You also have to realize that the “best prior art” is also not based upon what the inventor thinks is the closest art to his/her “invention.” The best prior art is based upon the claims. As I have found time and time again from reading your posts and from reading the comments of other examiners in office actions, many of your ilk don’t seem to understand the difference between enablement under the 1st paragraph of 35 USC 112 and the requirement to distinctly claim under the 2nd paragraph of 35 USC 112. To distinctly claim is to “distinguish,” and in so doing, it is not necessarily required to describe the invention (i.e., enable).

    Your level of angst would be greatly reduced if you could come to the realization that most (good) attorneys are simply playing by the rules of the game in which we are all players. Attorneys are not out to get examiners. I can honestly say that I have never seen an attorney engage in (or want to engage in) “hide the ball” with an examiner. Very little good comes from that, and as I noted before, there are many bad consequences for not disclosing known material art. On the contrary, most attorneys I know want to see the best prior art at the very beginning so that they don’t waste their time (and their client’s money) in responding to second-best art.

    What irks me (and many other patent attorneys) is that the PTO (particularly its management) doesn’t seem to be keen on playing by the rules. Instead, the PTO seems fixated on rigging the rules. I read some of the briefs from the links above, and what the PTO has done disgusts me.

  2. 36

    “find a motivation to combine and be done with the whole thing”

    Don’t you mean list the two references, cite KSR and your general knowledge of the art, and sign it?

    That’s standard procedure for you now anyway, right?

    By the way, which is it? Do you want us to cite everything, or nothing? Or is it that you just want us to do your job for you while you collect a pay check from the fees we pay to do your job for you? Even in the government, your job will be eliminated if the latter is the case.

  3. 35

    How many examiners are there today? I heard the other day that it’s 4k, but I’d heard before that I’d heard 6k. If I’m the 6kth one (or one of), then that makes me a new one.

  4. 34

    Yeah, errors are different than what would relate to efficiency (getting through applications 100% correctly in the least amount of time?). If the disclosure rule was completely taken away the efficiency would go down, if only because the random good AAPA and NPL and VERY occasionally a US pat, would not be found and a good many times they at least make a basis of a case to work from, even though it’s utter crap for a rejection in it’s pure form. If disclosure were strengthened (by making it a capital offense to not disclose what you know, or less harsh methods) then my job would become, “find a motivation to combine and be done with the whole thing”. Thus found, the application would be through in over 70% of the cases I do (I can’t speak for the whole corps). Efficiency would go straight up through the roof while the number of applications would go down. There’s patent reform for you, capital offense disclosure rule.

    I only have a bit over 1.5 yrs in though atm, but I’m getting the general gist of what goes on and what’s submitted and what’s not.

  5. 33

    Leopold:

    A PTO “error” is only made when an erroneous allowance issues not when an erroneous rejection issues. 🙂

  6. 32

    Leopold,

    The patent office measures a “Patent In-Process Examination Compliance Rate “. See link to uspto.gov

    “Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution). “

  7. 31

    That’s a remarkable statistic, Mark. How does the PTO define “error free”?

    Does the PTO’s ultimate withdrawal of a claim rejection, when there were no intervening claim amendments, mean that the initial office action had an error? My colleagues and I are seeing large numbers of Final Office Actions that are withdrawn in response to Notices of Appeal, or to threats of a Notice of Appeal. Not that these cases are getting allowed (yet), but the Examiners we’re working with seem to have no problem walking away from their silly rejections and imposing new ones. How do these get counted in those internal audits?

    Quality is job #1, and quality apparently means no allowances.

  8. 29

    Examiner #6,

    Assuming your are indeed a US patent examiner and if you have at least a few years of experience, I have a question for you.

    If the duty of disclosure were eliminated and no applicant ever submitted prior art again, would that result in more efficient or less efficient examination?

  9. 28

    Of course the PTO is busily at work lobbying Congress for “reforms” that will help undermine a SJ issued against the PTO should that be the result of tomorrow’s hearing. Nevertheless, it would be rather amusing, even if only short lived, to see the Court gives the PTO a “petard-ectomy”.

  10. 26

    “Ummmm, does it strike anyone as odd that the Patent Office tried to strike the brief? All that does it make the Judge look at it more closely…”

    Me

    Not all as the PTO hierarchy is in complete denial that there’s anything wrong with (or that they flouted the procedures that led) to these Rules. The PTO’s argument for why the Polestar and Katznelson Briefs (which rightly allege that the PTO has deliberately distorted the admin record and fudged the certification to OMB) should be striken or ignored is like the forger saying you can’t prove I forged the orginal because: (1) you can’t introduce a copy of the unforged original; and (2) the original no longer exists because I, the forger, destroyed it. And the PTO reply to the GSK/Tafas memorandum in support of SJ still doesn’t address how the PTO has the alleged authority it says it has when Congress keeps trying (and failing) to pass legislation to give the PTO the alleged authority. I hope that GSK/Tafas hoist the PTO on its own petard tomorrow for these 2 reasons alone.

  11. 24

    Ummmm, does it strike anyone as odd that the Patent Office tried to strike the brief? All that does it make the Judge look at it more closely…

  12. 23

    In predictable fashion, apparently the PTO dislikes the unflattering facts recited in the Polestar amicus brief so much that it has filed a motion for the brief to be stricken from the proceedings. The motion is so “limp-wristed”, containing no case citations, that I do have to wonder if it is flinging words against a wall hoping that at least some of them stick.

    The Polestar reply can be found at:

    link to docs.justia.com

  13. 22

    Hello Mr. Jaoi(TM),

    Please notice that I addressed you with a “Mr.” and I applied capitals according to your name, and I noticed your properly addressed properly capitalized name with a proper (TM).

    I like it a lot when you quote me and use my name, but here’s the thing. “My name is (short pause) MR. MONK” (“onk” capitalized for emphasis only; capitalization of “onk” is optional, but I prefer “onk”.). Am I any less than Mr. Tipps?, or Mr. Tibbs? And I’d appreciate it if you use a cap “M” in Monkism.”

    [Characteristically holding hands out, slowly turning to and fro, investigating the blog to figure out who the serial patent killer(s) is (are), thinking, thinking …]

  14. 21

    “you are me and me is you and examiner#6k is us and we are him too.”

    I am the egg man, I am the egg man, I am the walrus, koo koo ka choo.

  15. 20

    Dear Malcolm,

    In another thread, Mr. “anonymous” said:
    “Any bets on whether Malcolm Mooney, examiner#6k and ‘Just an ordinary inventor’ are the same person? There are too many ‘characters’ on this blog, and I suspect that someone with internet access in prison has a bit too much time on his hands.”

    Funny thing – Mr. “anonymous” thinks you are me and me is you and examiner#6k is us and we are him too. Here’s the thing (as Monk would say): I’m surprised that, with over 10,000 readers a day, there are so few characters on Patently-O.com. BTW, are you in prison?, cause I know a lot of good attorneys that practice non-patent law and I’d be happy to give you a referral. I wonder, can you practice patent law, at least writing briefs and patent prosecution documents, from prison?

    Dare I say, CHARACTERS WELCOME ((such as Monk) on the USA channel and Patently-O.com).

    You might have observed that I like to rant on and on about different things, especially when a patentee gets screwed, like in the CIAS case, or when the American patent system gets downgraded in one way or another, or when America gets smeared by some turncoat or anti-American foreigner. I don’t rant when a patentee’s patent works for him/her. I have an agenda — I’m a self-employed inventor, and over the past several years, it seems everyone is trying to screw with us inventors.

    I liked the Oatey ruling a lot because the patentee’s infringement case was upheld (I’m using that term broadly) via a broad claim construction that reversed and remanded the district court’s non-infringement finding.

    So I tend to leave cases like Oatey alone and avoid taxing verbal battle with the likes of you (who I like a lot, as you know. Even thought you are wrong a lot (because you, like most everybody [comprising me], have a personal agenda), you are extremely bright and witty. (I’ll bet many Patently-O readers read your and my comments first for the same reason many Reader Digest readers skim through the magazine to find the humor pages to read first).

    Not to make anyone’s mouth water, at the Chinese Golden Rat New Year’s celebration I attended last night, all kinds of happy high(punny)-octane beverages were served (I’m writing on auto-pilot) along with the best baby calamari (maybe it was baby octopus because I never saw a calamari with its head on, in w/ a sweet sauce) I ever had, lobster, shrimp, crab, oyster, claim, duck (duck, goose, goose), lamb, beef, noodles, rice and all kinds of fish and vegetables, and they also served 8 huge trays of Japanese goodies comprising shushi and sashimi.

    However, I think it fair to say by implication that they did not buy eggs, a pint of milk, a loaf of bread, three apples, some shrimp, a pork chop, lettuce, orange juice, a box of cereal, a bar of chocolate, a bag of sugar, and a stick of butter from your grocery store, but you never know, it is ambiguous at best because maybe they did, and maybe they didn’t, we’ll never know because it was unclear and could be mistaken, but, as Monk would say, I could be wrong now, but I don’t think so.

    Time to get out of bed and go to work — what the hell, maybe I’ll have a bit of the hair of the dog that bit me. No point inventing any more since now a patentee has to make implications when he/she describes prior art, and then go to court and maybe have one judge or another and one panel or another imply the the new disavowal-by-implication standard and random walk all over their invention. Maybe I could write for Reader’s Digest?, but I don’t think so (half a monkism).

  16. 19

    Caveman, I agree, we should hold management to the same standards. Dudas, Peterlin, and Doll should all have their registration numbers revoked.

    Wait, what are their numbers again?

  17. 17

    Mr. Pedersen,

    The Polestar amicus brief linked above does provide information I found quite helpful to understand the issues associated with how the rules were presented for approval to the OMB/OIRA by the USPTO.

  18. 16

    “Note that OMB has not approved a request from the Patent Office since June.”

    My understanding is that OMB did approve the IDS rules on December 10th, which is why based on the experience with the claim/con limit rules there was an expectation that we would see the IDS rules published in the Fed. Reg. in January. While there were two significant objections filed with OMB that may have created potential skeletons, it appears that OMB ultimately did accept the IDS rules as submitted to OMB without change.

    AGENCY: DOC-PTO RIN: 0651-AB95
    STAGE: Final Rule ECONOMICALLY SIGNIFICANT: No
    RECEIVED DATE: 07/27/2007 LEGAL DEADLINE: None
    COMPLETED: 12/10/2007 COMPLETED ACTION: Consistent without Change

    If I were in Vegas, I would bet that the PTO will hold off on the IDS rules until just after the District Court in GSK issues its opinion, but will publish them fairly soon after that. The best guess for animplementation date for the IDS rules appears to be June 1, 2008 – consistent with the effective date of the recently announced clarification on declaration and oaths.

    /media/docs/2008/01/duty_of_disclosure.pdf

  19. 15

    The lawyers are strong in the qq today. Fortunately, it’s not all (patent) attorney’s making the decisions in this country and we’ll soon have a return to decency after our “precious laws” have been turned upside down and all but raped over the years by bad decisions of a few influential judges. It’s very rare in this day to see corporate overminds advocating rights of benefit to the common man in the country. Even less believable to hear all of you throughout these pages defaming Dudas, Peterlin, or any of the others. If any of you have bothered to talk to them, see the issues you see as clear as day from your point of view as being one way from their point of view, and see the damages that they (and I) see to the people of this country based on the actions of the one (or few) then you wouldn’t feel as you do. Maybe when it’s your signature on something that at least 2.5% (number in the thousands) of will be causing someone out there a whole lot of trouble over nothing you’ll be a little more respectful of any attempt to stem the tide.

    Though, you’d probably be right if you said they fubared the paperwork. Though, again, from their point of view, with people submitting only the most relevant information with a brief description accompanying, it would hardly propose an extreme paperwork burden (hardly any at all). Would an “inventor” (or his rep if he’s willing to pay) be required to review what he knew at the time of invention and explain it somewhat? Yes. Is this a horrible thing? No. You can cry all you like about how you’ll get smashed in litigation, that’s your problem, and likely a problem with your “invention” (i.e. not novel, or obvious combination thing your client made, not invented, and failed to tell us all about what he knew beforehand, as is required) not with the system, or anything about the system.

  20. 14

    The Polestar amicus brief (I learned about it from David right after it was filed) linked below sums up quite nicely much of what the USPTO has been up to regarding the rules at issue.

    link to patenthawk.com

  21. 13

    CaveMan,

    Dave (who I’ve gotten to know recently) has pointed out (and rightly so) this very “Dark Side” of the PTO hierarchy’s effort to manipulate the administrative rule-making process, hide the relevant (and damaging) information on these Rules, and generally flout the APA, RFA and OMB procedures. This hearing on Friday in GSK/Tafas suit is very important, not only for our patent system, but also for whether we remain a country of laws where the government is our servant (not the other way around some think it is), or whether the APA, RFA and any other law in this country is meaningless drivel. Sorry to put it this was, but as a second generation patent attorney who was taught and raised to respect the law and the important values of this country (including our Constitution), that’s how important this hearing Friday could be.

  22. 12

    Thank you David,

    Its fascinating to see the audacity with which the PTO is attempting to tamper with and generally obfuscate the written record. When that kind of thing happens, you KNOW something stinky is going on. If a patent attorney attempted to tamper with or withhold important documents the written record, they would be found to have committed inequitable conduct.

    Heck, as recent case law clearly shows, a patent attorney could be dinged for inequitable conduct and face sanctions if a simple reference was withheld from being cited in an IDS.

    So I say let’s hold Dudas and the PTO management accountable to the same degree for their treatment of the written record and failure to follow standard administrative procedure.

  23. 11

    Alun, “QQ” is middle-school chat language for “crying.” He’s calling us babies. See, the ‘Q’s look like eyes with tears coming out of them. Isn’t that cute?

  24. 10

    Examiner#6k,
    Examiner#6k,

    If the rules ever do go into effect (doubtful), the next thing on management’s agenda (after requiring an ESD for all applications) will be to adjust production goals to reflect the abundance of freed-up examiner time, in view of the relief from having to examine “rework” patents, search prior art, examine claims (at least for 5/25 apps), etc.

    The whole approach of PTO management could be interpreted as a loud vote of no-confidence in the examiner corps.. Maybe it wouldn’t be so bad after all if examination were performed by applicants and their efficient friends offshore. Patents without government examiners, hmm.

  25. 9

    Examiner#6k, firstly, what does ‘qq’ mean??

    Secondly, you must be living under a rock if you can’t see that pleas of ‘inequitable conduct’ force us to cite the proverbial kitchen sink. It’s not our doing, it’s the courts. Thirdly, to represent clients zealously we have to write the broadest claims that aren’t anticipated by the art that we know of. If we only submitted the most relevant references and submitted narrow blueprint claims we would be out of compliance with the ethics rules that, BTW, are also set by the PTO.

    Still, other people have told you all this before and yet you won’t listen.

    Please do write to the White House and tell them how legal ethics are ‘bs’ in your opinion. It should give them all a laugh, as most of them are lawyers.

  26. 8

    Stop your qq about the new rules and start letting them do what they’re there for, to provide disincentive for overclaiming and IDS submitting.

    I should write a letter to the white house saying how much bs all that is if the applicant’s only submit relevant information and don’t have to have a huge paperwork cost.

  27. 7

    Stop your qq about the new rules and start letting them do what they’re there for, to provide disincentive for overclaiming and IDS submitting.

    I should write a letter to the white house saying how much bs all that is if the applicant’s only submit relevant information and don’t have to have a huge paperwork cost.

  28. 6

    Speaking of the GSK/Tafas suit, the oral hearing on the SJ and other motions is scheduled for this Friday (February 8). The PLI blog plans to provide periodic reports starting around lunch time. It’s expected that Cacheris (the judge) will provide a ruling from the bench and the court’s opinion soon thereafter. Might be a good time to pop some popcorn (or your other favorite snack), along with your favorite malt beverage (or wine).

  29. 4

    David, thanks also. Could you please confimr the whitehouse.gov letter? The link may be stale/incorrect.

  30. 2

    I have no more information than anyone else on the schedule for implementation of the IDS rule, but I can offer some informed speculation.

    (1) The PTO will not publish them before the end of the Tafas/GSK v Dudas case. The PTO knows there are a lot of procedural bodies buried in the IDS file, that will cause them a world of hurt if the IDS rule is added to the case before Judge Cacheris.

    (2) Look at –

    link to whitehouse.gov,

    See the attachment, particularly the last page of the cover letter

    link to reginfo.gov

    Several comments were filed regarding the cost of the IDS rule under the paperwork reduction Act in October and January. OMB will not approve the paperwork aspects of the IDS rule until the PTO responds to these comments with credible cost estimates of its own, and OMB agrees that the PTO’s cost estimates are approximately correct. PTO’s internal guidelines specify that PTO is to respond to these comments within two months. The PTO will have an increasingly difficult time convincing OMB that it is playing fair as PTO continues to drag its feet, now well beyond three months.

    link to reginfo.gov

    Note that OMB has not approved a request from the Patent Office since June. OMB may be catching on to the PTO’s persistent difficulty in presenting it with fair and accurate information. All I can say is “may,” not “has.”

    Look at one of the breifs filed in the Tafas/GSK case,

    link to docs.justia.com

    at page 18, for an anecdote of an incident that took place in front of the Deputy Administrator of the regulatory oversight office within OMB that may explain why the PTO is now having difficulty getting approvals from OMB.

  31. 1

    Re the IDS rules, no doubt the PTO is waiting to see the lay of the land for their continuation & claims rules.

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