Patently-O Bits and Bytes No. 21

  • ScreenShot041Disclose Disclose Disclose: APJ Richard Lebovitz argues (on his own) that scientific researchers should be required to disclose potential patent rights prior to publication of related research as part of the conflict-of-interest review. [6 Nw. J. of Tech. & Intell. Prop. 36].  In his study of Science and Nature articles, Lebovitz found that “almost one-third” of the research articles were associated with one or more patent filings.
  • Compulsory Licenses: Thailand plans to continue its plan of paying low compulsory license rates for patents covering important cancer drugs. In response, Novartis has proposed to offer Gleevec for free, but only to Thai patients that qualify as poor. [Noonan]
  • More Like Property: A major point of the Bessen & Meurer book is that the patent system can be improved by making patents work more like property. Should we work toward a system where patent rights are more predictably valid; where patent scope is more easily discernable; and where fragmented ownership of overlapping patent rights does not block further development?
  • Patent Reform: IPO reports that the “massive” Patent Reform Act of 2007 will likely receive senate floor attention in April or May.  According to the organization: “Patrick Leahy (D-Vermont) appears intent on moving the bill ahead even though it is unclear whether enough Senators will support it to break holds placed on it by some Senators.  Claims made every day by lobbyists that Leahy has or does not have the 60 votes required to cut off debate and pass an amended bill are speculation, because the amendments are not known.  Pronouncements that the bill is dead this year are premature.”

46 thoughts on “Patently-O Bits and Bytes No. 21

  1. I’d love to let it drop Sir or Madam (which?), but just one thing. You can’t have perfect predictability regarding a claim since the universe of potentially relevant art will never be fully comprehended.

    Also, you can say with fair certainty that a particular claim reads on a particular accused infringing structure or on a structure that you are contemplating making using or selling. Therefore you should be able, in a day or two, get a sense from a competent patent counsel that your claim is likely to be found infringed, whether it is a close call, or whether the new product you are about to release is infringing a competitor’s claim. What more do you want?

  2. CaveMan: I’ve got no problem with paying a professional (i.e., a patent attorney) to tell me all I need to know about the claims (I agreed with Clive on this point, above). My problem is this: Allowing claim language to become so unpredictable that the attorney consistently tells me “Dunno, it’s 50/50.” Claims have to be predictable to the attorney or experienced practitioner, so that the cost of deciphering them is a day’s work as opposed to, say, a six-month trial. Also, you may not want to dicount the efforts of non-lawyers who read claims, since many of them are the mythical PHOSITAs that attorneys themselves try to emulate when interpreting claims.

    You seem to be a reasonable Neanderthal, so I think we can agree to bury the hatchet (stone axe?) on this one.

    Clive: If I can make one person chuckle…Cheers.

  3. 6k – “You exist at their sufferance, never forget that. Moreover, if engineers and tradespeople don’t want to pay lawyers (or examiners) and would rather have a technical document to protect Only what they made so that people cannot directly copy their work but can design what they want to according to similar principles then that is the artisans decision, never forget that we’re all here at the behest of the inventors, if they don’t want us, then we have to GT FO. Take a needle to that head there cavedude, nobody but the people supporting the system keep it in place at all, there is no mandate from heaven that this system is good, decent, fair, etc. etc., we have it because it is Believed to be a good system.”

    What? How many shots of tequila did you have before you wrote that?

  4. caveman — any time a government agency decides a dollar amount the risk for distortion is great …

    the fees should have little to do with the value of the patent and everything to do with the least cost/risk associated with a filing … the pto has a surplus QED it is not efficient from a market perspective … if you want to tie refunds as a disincentive to trolls you are applying one value (a tax to applicants) to a very different value (litigation value) … and in lieu of fee refunds you simply provide a floor for the trolls … not much else …

    time on the other hand we can measure and still not know exactly the monetary cost but we can estimate the potential value (>>just stick a different time variable into your valuation equation) …

    >>”One thing to remember, if a company owns the rights to an invention and has made a business decision not to pursue the technology, because it wants to pursue a similar technology and wants to exclude the former technology from development, then that decision should be protected.”

    100% concur …

    caveat … the business decision NOT to pursue may be made because of something as soft as FUD (fear uncertainty and doubt) … vcs used to run from biz plans/targets that msft would announce it was entering … alas vaporware is very common … pr and puff pieces do not constitute innovation … and those patents may in turn serve as assets were before there was none (argued previously) …

    or, because they have a longer term, they may have been filed to secure a place in the art or simply because it is one measure that is familiar to analysts of the worth of a business … they are published and serve notice function … additional notice functions may be a better approach to furthering liquidity … you disagree with the discreteness of my suggestions … which i respect

    the patent pooling issues i illustrated are real market “situations” for valuations of particular patents (some may have no relevance technically — only that a particular company wants IN to the pool) … each company involved is acting on behalf of their own shareholders and time lines … it is the value of time not the cost of that time that is valued … >>

    one reason >> there are several “trolls” and others who buy pending applications … point is you cannot remove trolls and expect a liquid market (or anyone else who has money but no interest in running or operating a business based on the patent — you have plenty of folks who buy options without any intent to commit to actually purchasing the optioned asset)

    that is the essence of the argument … you CAN educate people so they can understand what a patent is … fact is, 95% plus of patents are worth less than the maintenance … on your point, the pto’s operations are funded (mostly?) from maintenance fees … that should be the floor for cost, not value … the more information the more interest that is generated and the more likely patents can be seen for what they are … will we end up with david bowie bonds, who knows.

    why? the VALUE of public notice is what is most misunderstood … napster educated lots of people on copyright, whether you agree or disagree with the merits … rimm // lemelson // etc. defines the patent debate … successful messaging by anti-patent folk? no, no messaging by pro-patent folks and successful lobbying filled the vacuum …

    i also posit one additional case : intellectual ventures and the multi billion dollar fund they have to buy patents for BOTH offensive and defensive purposes … to each side a different valuation model – whether or not the patent will ever be practiced is not even disclosed, so some of the information about their various models for valuation and liquidity are interesting but also suffer from perspective … intellectual ventures was founded and is run by nathan myhrvold … the other related company think fire has a different business model … and inven is *associated* with large it companies … they don’t call themselves trolls … but … the valuation models they have are certainly intriguing …

    value is in the eyes of the purchaser (the seller hopes) … having a public notice function for which the public cannot or does not understand is but one glaring problem

  5. caveman — any time a government agency decides a dollar amount the risk for distortion is great …

    the fees should have little to do with the value of the patent and everything to do with the least cost/risk associated with a filing … the pto has a surplus QED it is not efficient from a market perspective … if you want to tie refunds as a disincentive to trolls you are applying one value (a tax to applicants) to a very different value (litigation value) … and in lieu of fee refunds you simply provide a floor for the trolls … not much else …

    time on the other hand we can measure and still not know exactly the monetary cost but we can estimate the potential value (>>just stick a different time variable into your valuation equation) …

    >>”One thing to remember, if a company owns the rights to an invention and has made a business decision not to pursue the technology, because it wants to pursue a similar technology and wants to exclude the former technology from development, then that decision should be protected.”

    100% concur …

    caveat … the business decision NOT to pursue may be made because of something as soft as FUD (fear uncertainty and doubt) … vcs used to run from biz plans/targets that msft would announce it was entering … alas vaporware is very common … pr and puff pieces do not constitute innovation … and those patents may in turn serve as assets were before there was none (argued previously) …

    or, because they have a longer term, they may have been filed to secure a place in the art or simply because it is one measure that is familiar to analysts of the worth of a business … they are published and serve notice function … additional notice functions may be a better approach to furthering liquidity … you disagree with the discreteness of my suggestions … which i respect

    the patent pooling issues i illustrated are real market “situations” for valuations of particular patents (some may have no relevance technically — only that a particular company wants IN to the pool) … each company involved is acting on behalf of their own shareholders and time lines … it is the value of time not the cost of that time that is valued … >>

    one reason >> there are several “trolls” and others who buy pending applications … point is you cannot remove trolls and expect a liquid market (or anyone else who has money but no interest in running or operating a business based on the patent — you have plenty of folks who buy options without any intent to commit to actually purchasing the optioned asset)

    that is the essence of the argument … you CAN educate people so they can understand what a patent is … fact is, 95% plus of patents are worth less than the maintenance … on your point, the pto’s operations are funded (mostly?) from maintenance fees … that should be the floor for cost, not value … the more information the more interest that is generated and the more likely patents can be seen for what they are … will we end up with david bowie bonds, who knows.

    why? the VALUE of public notice is what is most misunderstood … napster educated lots of people on copyright, whether you agree or disagree with the merits … rimm // lemelson // etc. defines the patent debate … successful messaging by anti-patent folk? no, no messaging by pro-patent folks and successful lobbying filled the vacuum …

    i also posit one additional case : intellectual ventures and the multi billion dollar fund they have to buy patents for BOTH offensive and defensive purposes … to each side a different valuation model – whether or not the patent will ever be practiced is not even disclosed, so some of the information about their various models for valuation and liquidity are interesting but also suffer from perspective … intellectual ventures was founded and is run by nathan myhrvold … the other related company think fire has a different business model … and inven is *associated* with large it companies … they don’t call themselves trolls … but … the valuation models they have are certainly intriguing …

    value is in the eyes of the purchaser (the seller hopes) … having a public notice function for which the public cannot or does not understand is but one glaring problem

  6. “I disagree, giving them the right to do exactly what we’re trying to not get them to do is not something that I find sacrosanct, especially if the tech isn’t something OMFG new, and is instead some ho hum improvement at best.”

    Your consistent use of double, and sometimes triple, negatives is so annoying.

    “I’m not exactly sure when you got the impression I said otherwise but I’ve understood it quite well for much over a year now.”

    Uhm, I got that impression from your tirade on JPE’s site when you “instructed” me that court decisions are not the law. And don’t get ahead of yourself, it’s not exactly evident from your silly posts that you understand it. It is clear that you don’t understand it quite well.

    “I have said that I don’t think that is necessarily a GOOD thing however, and in many cases is a bad thing. This stemming in large part from the “secretiveness” of the law, it being “hidden” from your view if you go to the public library and read the law, you don’t get all of the little caveats that have just been chucked in, imo common law should last 10 years and if the legislature cannot support it with real legislation it should be dropped.”

    There’s the proof that you don’t understand our common law system.

    “Though, at the same time I see why it has a place, and is kept forever, then again, that is irrelevant if the common man cannot find such information when it is relevant.”

    Last time I checked, just about every court decision of any significance to American common law jurisprudence was published for any and all to read. Not exactly “secret.” Didn’t know that the “common man” was incapable of going to the library and doing a little research.

    The other side of the bell curve is fading from sight.

    Grade: D

  7. I see that I butchered your name, Sir or Madman. My apologies for the oversight, especially as I’d read your screen name before and chuckled … then still got it wrong!

  8. “So you now understand that binding court precedent is the law? Congrats. Because just a few weeks ago, you were of the opposite mindset.”

    LOL, o rly? I’m not exactly sure when you got the impression I said otherwise but I’ve understood it quite well for much over a year now. I have said that I don’t think that is necessarily a GOOD thing however, and in many cases is a bad thing. This stemming in large part from the “secretiveness” of the law, it being “hidden” from your view if you go to the public library and read the law, you don’t get all of the little caveats that have just been chucked in, imo common law should last 10 years and if the legislature cannot support it with real legislation it should be dropped. Though, at the same time I see why it has a place, and is kept forever, then again, that is irrelevant if the common man cannot find such information when it is relevant.

  9. “The kind of claim you and elgobix want is a technical specification and design document and that is not what claims are about. You want to never have to pay an attorney and you are free to never have to do that, again, at your own risk.”

    You exist at their sufferance, never forget that. Moreover, if engineers and tradespeople don’t want to pay lawyers (or examiners) and would rather have a technical document to protect Only what they made so that people cannot directly copy their work but can design what they want to according to similar principles then that is the artisans decision, never forget that we’re all here at the behest of the inventors, if they don’t want us, then we have to GT FO.

    Take a needle to that head there cavedude, nobody but the people supporting the system keep it in place at all, there is no mandate from heaven that this system is good, decent, fair, etc. etc., we have it because it is Believed to be a good system.

  10. “One thing to remember, if a company owns the rights to an invention and has made a business decision not to pursue the technology, because it wants to pursue a similar technology and wants to exclude the former technology from development, then that decision should be protected.”

    I disagree, giving them the right to do exactly what we’re trying to not get them to do is not something that I find sacrosanct, especially if the tech isn’t something OMFG new, and is instead some ho hum improvement at best.

  11. Ironicslip,

    Frankly your proposals are not very focussed. And the money that I’m talking about would be PTO fee based. It could be as simple as a refund of filing fees for those smaller inventors who decide to dedicate their technology to the public domain, which would take away the ability for someone to wake up one day and start suing people on a dusty old patent the day before the first maintenance fee is due. Beyond that, for technologies whose time has come, it seems like there could be a way for government to intervene and disincentivize “trolling.”

    One thing to remember, if a company owns the rights to an invention and has made a business decision not to pursue the technology, because it wants to pursue a similar technology and wants to exclude the former technology from development, then that decision should be protected.

  12. Dear Sir or Madam,

    Mine are not platitudes, with the exception of the Macdonaldization post, which was marked as for entertainment, my post was timeless wisdom quoted from great minds and great achievers (who didn’t spend a lot of time whining on a blog) and an article on the paradox of predictability. So not sure where the platitudes were.

    But in any case, with regard to real estate, as Clive Fenester pointed out, an experienced patent attorney can fairly easily tell you where the “property lines” are. And with five or ten years of solid continuous experience, you may start to develop a little skill yourself. However, the rest of your yearnings for predictability are more like yearnings for “predictable” valuation. Anyone who thinks that valuation should be predictable doesn’t really understand markets. And the idea that markets favor certainty, I think is more a secondary result of arbitrage, which is where the real opportunity is. Those that seek out the unpredictability and trade on it (and make a ton of money doing it), trade the risk out of the larger market. The unpredictability is always there (thank God).

    Well, I have a newsflash for you. Valuation and assessment of risk associated with the likelihood of a patent claim prevailing against your technology, or vice versa, is an art. You can pooh pooh it and complain about $500/hr lawyers and judges, and proceed at your own risk, or you can work with experienced patent counsel and do it right.

  13. Dear Sir or Madam,

    Sorry, but your yearnings for “predictability” sound like your own version of the boogeyman. Essentially, you’re asking for costlessness in the patent process. Well, you can opt out of the patent process (at your own risk) or you can hire a patent lawyer to help you understand the claims since, as was carefully pointed out to you, an entrepreneur is not really in a good position to understand the scope of the claims nor is he in the correct frame of mind that must be carefully cultivated after only years of practice (I’m not kidding) for reading claims on things. Many of the problems I see in patent law stem simply from an inability of individuals to understand the basic notion of reading claims on something whether it be prior art or an accused device. Many times, I’ve seen Examiners who talk about the prior art “reading” on your claim. Well this is just plain wrong – and it creates a backwards perspective that explains a lot of the frustrating moments in prosecution that many experience. Instead of reading the claims broadly on the art, the Examiner attempts to create a tortured application of the art to the claims which is generally what happens when you get a crappy rejection.

    The kind of claim you and elgobix want is a technical specification and design document and that is not what claims are about. You want to never have to pay an attorney and you are free to never have to do that, again, at your own risk. And by the way elgobix, you can spare me the “blogosphere” 101 snideliness, this isn’t Salon magazine reader comments page.

  14. caveman in view of elgobix

    i agree with your proposed government “support” (if that is a correct characterization?) but pricing as opposed to time is dangerous (actually providing taxpayer money is suspect & quite time-consuming — look at the SBA/DOD SBIR programs — 25 pages makes you weep) … the original debate over the patent act discusses some of this actually but the focus, imho, should be strictly on clarity and consistency … minimize all known and reliably predictable risk — call that your inventor’s risk premium … and provide transparent rankings similar to ocean tomo and intven and others that “rank” the strength of patents … from a variety of perspectives … you are probably familiar with these … the challenge is which index is best and whether that is used to the disbenefit of the inventor … just a nit

    similarly (?) the original google algorithms took into consideration those pages that were pointed to most as a strong factor in relevance … patents often cited over 100 times (1 in 10,000, if i remember correctly) have more relevance than others in only a limited sense (could simply be a cluster of CONs and CIPS — could be competitiors who are or have been in litigation, etc. but relevant, nonetheless) … but providing this in the gazette (with 1.47 notices?) may have some impact? at least it should be factored in the same way unpaid maintenance can offer a somewhat related stat … not worth the cost of maintenance …

    … imho it is a bit problematic that the inventors are further & further abstracted from the prosecution and that we can observe, anecdotal not empirical, — anti-trust, trade secret, employee ip issues, (whatever) to “shoot the engineer” in many standards forums where a form of patent valuation “process” can be observed … the patent pools themselves offer an interesting parallel with “registration” schemes in general but are clearly difficult for small entities to effecively engage in … but the analysis that is done (unfortunately it is hard to separate out the politics, but that is part of the monopoly game) to establish required patents for a given pool or purpose is quite effective in most cases … before jpeg there was gif … which lead to png … but there was also dvd-a, sacd, hd-dvd …

    this aspect of the “notice” function may be more value-add for the system … and the public good

    the avoidance by some of reading applications and the strange number of applications in say 2100 with few if any references and language constructions that border on disclaiming vague notions not actually claiming anything in particular could be greatly curtailed if there was a way to standardize language — not likely — and, if patent protection is curtailed, a result clear with the final rules and the patent reform act, it is very unclear how or what one’s “writings and discoveries” can be protected in a meaningful way … given the burden that is likely to increase on the prosecution side …

    it is more apparent that many proponents for reform are also engaged in the wiretapping mess (verizon disclosed its lobbying numbers today and what they were lobbying for — would imagine the glee that was expressed today in the wash post is related to the visit by the tech and business giant to discuss innovation was also part meet & greet — cannot be sure) — who remembers that ibm owns the tm for “pc” … it helped when there was a demand for standardization but probably has little value today versus say “windows” … so … more suggestions on top of my make the pto accountable to the prosecution after the patent issues … (i saw someone say a patent holder is like a squatter — even squatters have rights — does that make the inventor a drain on society’s resources?)

    especially the mpep …

    my add-ons that may or may not make sense taken alone ::

    1) the mpep should be subject to interpretation by practitioners and the office … this should be done a fairly regular basis to encourage timely interpretations … we know a lot of non-innovation goes into analyzing cases in and of themselves … so, why not extend that into the mpep to assist with the formation of arguments and concepts … the inventors can still focus on inventing

    2) patent office personnel, not just examiners, should respond to applicant inquiries within a set time frame (they say it will cost the irs several hundred million dollars to answer phone queries concerning refunds … imagine that) … too often the standardization of mail stops, petition offices, little box here big box there, has had the opposite effect of determining everything in terms of “the office is” “right or wrong” “the applicant is” “right or wrong” … it simply makes people less accountable and tolerant and slows down the feeling of ownership proper to all folks who engage in the *business* of invention …

    3) some percentage of office funds should go towards creating a private pair function for pooling particular questions that are ranked by relevance … current searching tools for the pto are quite ancient and ineffective … this might look like the way the office provides examiner response guidance in the mpep generally or training more particularly — this “education” may help broaden the discussion — not legal advice not prosecution — but active information on the “goings on” which may help inventors decide how and what they want to do with their potential ip

    4) a serious effort by practitioners to caucus with educators to explain or create discussions about invention — riaa/mpaa does this to some extent for copyright — it is abundantly clear that a society with little understanding of patents driven by a few press releases or a few cases is not a terribly good way to encourage invention … let alone innovation

    wash post reporting that the amendments for the patent reform act are “90%” …

  15. “Oh, hey, tell us more about taking Zurko out of context now please. There’s using wrong words late at night and then there’s blatantly misinterpreting controlling common law.”

    So you now understand that binding court precedent is the law? Congrats. Because just a few weeks ago, you were of the opposite mindset.

    You clearly don’t understand the holding of Zurko. Not surprising for a GS-9.

    For your marked improvement in at least grasping the concept of the common law, I’m going to raise your grade, but only to a D++ because it’s clear that just because you understand that binding precedent is the law, it doesn’t mean you understand the precedent.

    Keep trying. You’re doing much better. The other side of the bell curve is in sight.

  16. Well JD considering I wrote it at 11:30 last night and just now entered the code I wouldn’t say that it has to be perfectly worded. Oh, hey, tell us more about taking Zurko out of context now please. There’s using wrong words late at night and then there’s blatantly misinterpreting controlling common law. I’m guilty of the former, you sadly are guilty of the later.

  17. “I’d have thought that if your typical entrepreneur could look at a patent and be able
    (a) to assume with a reasonable degree of certainty that the patent is likely to be valid, and
    (b) to have a pretty good idea what the patent excluded him/her from doing
    then that would tend to oil the wheels of profit-motivated industrial innovation and competition rather than the reverse. A patent system that creates a climate where nothing is true and everything is permitted until the Supreme Court decides an issue serves no-one but the lawyers”

    I have to concure on that point as well.

  18. “Until then, the government being forced to issue a patent after x amount of examining hours just will not be sufficient cause to justify their involvment de jure rather than merely de facto.”

    You remind me of that character Damon Wayans used to play on “In Living Color.” You remember? The guy who used all the big words, but didn’t know what the heck he was talking about, and made no sense at all.

    You’re funny.

    Grade for that one was D+. But only because it made me laugh.

  19. “After all, if the government is giving us all these patents with a presumption of validity, they should bear some or even a good part of the burden of sorting out the tangle.”

    I disagree, your ability to push something through the office should not equal the government bearing some or even a small part of the burden of sorting out the tangle you likely forcefully pushed through and created. The individuals ability to perpetrate improper patent enforcement on his fellow citizens is quite enough without having to get the government involved (which you will likely do as a reexam anyway). Otherwise your suggestions seem reasonable, though they fail to address the root cause of many of the current wo es of the system.

    Open the office to “common sense” and/or “technical reasoning” (EPO?) and/or “ease of invention” (Korea) based rejections a little further and your suggestion as to the gov. being accountable is reasonable as well. Until then, the government being forced to issue a patent after x amount of examining hours just will not be sufficient cause to justify their involvment de jure rather than merely de facto. Besides, you guys ha te having the gov involved amirite?

  20. Clive, of course, there’s nothing wrong with asking an attorney for an opinion. It’s beneficial. One does the same when buying real estate.

    Caveman, imagine unpredictability in real estate. Who wants to fight with city hall and their neighbors about property lines and whatnot every time they buy a house? Would would buy real estate if deeds were written in vague language and merely suggested reading at that? Despite your platitudes about predictability, markets do favor certainty. The odd person may get rich in a largely unpredictable market, but as a whole, prosperity needs predictability. Oh, and newsflash: Communism has been dead for 20 years! No need to go McCarthy all over this blog. It’s time to find another bogeyman.

  21. Dear Sir or Madam,

    I would say that, by and large, it *is* reasonably clear what activities infringe and what do not. I look at third-party patents all the time and did so in my former legal lives as well. It was not often that I was utterly confounded by hopelessly ambiguous claims, although admittedly it did happen.

    Perhaps it’s my sense of self-importance showing, but I don’t think an entrepreneur can himself decipher the legal metes and bounds of a patent claim. That said, I don’t think it should take two warring armies of lawyers, a presiding judge, and two appellate panels to do that job, either.

    It’s neither time-consuming nor overly expensive to have a patent attorney assess the claims and opine how they relate to the client’s contemplated (or actual) product. So long as claims are made up of words, there will always be disputes as to meaning and scope. (Cynically, I think you’d have that even if claims were limited to pictures.)

  22. Caveman

    “My position is that if the scope of the claims were entirely subject to predictable determination off the bat then there really isn’t much point in a system since in such a well behaved world, who would need to file a patent anyway?”

    I still don’t get this. Without patents, there’s no rights to infringe and nothing to prevent unfettered imitation of innovative technology. Or do you think that in “such a well behaved world” no-one would do that because it’s unsporting?

    I still don’t see what’s wrong with a patent system that delivers a smidgeon (or preferably a kilo-smidgeon) more certainty than exists at the moment.

    “By the way elgobix, what do you have against capitalists?”

    I don’t see anything in my post to suggest I’ve got anything against capitalists. A capitalist would have to be paranoid to think that!

    I’m with Sir or Madman…

  23. CaveMan, you’re playing with random definitions of predictability.

    If I read a claim, it should be reasonably clear what activities infringe and what do not. This is the very purpose of the claim.

    “The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.”

    I shouldn’t need a roomful of lawyers and judges to tell me at $500 per hour, expect in extreme cases.

  24. Sorry to hog the thread here but I couldn’t resist. Although the above cited article is directed to software development, I see interesting parallels to how the PTO works and some the arguments that always seem to float around in the reform camp regarding predictability.

    Here is another excerpt.

    “[Lean software development] starts earlier, encourages change, freezes decisions later, and delivers faster than traditional practices, but nevertheless lean development produces outcomes that are more predictable.

    The paradox of lean development is that you have give up some of the trappings
    of predictability in order to get true predictability. You have to abandon some
    conventional wisdom to gain the benefits of making decisions with more certainty.

    Fundamentally, you have to develop the capability to respond to events as
    they unfold, rather than hold dear the capability to orchestrate events in advance.”

    Therefore, the idea that some seem to have that you pay your money, make your application, get your patent, then its off to the bank, like predictability, should be put to rest as an unrealistic idea of a capability to orchestrate events in advance. Rather, the perfection of the patent right is something that evolves over time – an idea that I think many if not most or all seasoned practitioners already understand.

  25. They that can give up essential liberty to obtain a little temporary safety deserve neither liberty nor safety. ~Benjamin Franklin,

  26. Point noted elgo, but I doubt the bizarro world system you describe serves lawyers… at least not patent lawyers. My position is that if the scope of the claims were entirely subject to predictable determination off the bat then there really isn’t much point in a system since in such a well behaved world, who would need to file a patent anyway? The scope of protection is not going to be clear cut in advance. But as you correctly note, there should be predictability in how matters will be administered through the courts.

    Douglas MacArthur:

    There is no security on this earth. Only opportunity.

  27. The road of predictability leads to the prison of communism??

    (with apologies to William Blake)

    The irrational fear of creeping communism is the hobgoblin of paranoid capitalists.

    I’d have thought that if your typical entrepreneur could look at a patent and be able
    (a) to assume with a reasonable degree of certainty that the patent is likely to be valid, and
    (b) to have a pretty good idea what the patent excluded him/her from doing
    then that would tend to oil the wheels of profit-motivated industrial innovation and competition rather than the reverse. A patent system that creates a climate where nothing is true and everything is permitted until the Supreme Court decides an issue serves no-one but the lawyers.

  28. Unfortunately Max, the ambit of the claim is the exactly the part that is inherently subject to risk and uncertainty since, in order to be effective, a patent claim regime must allow broad claiming that will necessarily result in some subject matter overlap. In the uncharted territory of development and invention, parties stake their claim as best and as broadly as they can according to what is hopefully a well established and predictable procedure that takes into account exigencies such as the true inventor based on established standards of priority, novelty, obviousness, and subject matter and to a lesser extent written description. Broad claiming is allowed by law and is essential to proper administration of a patent regime. Don’t get me wrong, I only mean claiming that is as broad as the statutory factors allow.

    Then, when a presumably valid patent issues, the patentee and the public can count on a regime that predictably supports rigorous enforcement based on careful analysis of the claim terms and whatever other factors are available. I submit that if the procedure works predictably, such as vigorous enforcement of injunctions once valid patents have been found infringed, then parties can act rationally to license and engage in other reasonable behavior designed to sort out any overlap.

    This is at least how its supposed to work anyway. If there is a breakdown in one of the parts, then you can expect trouble.

    Negotiating a license is another problem all together, but I submit that non-radical mechanisms can be put into place to incentivize licensure such as those I previous mentioned regarding establishing a government paid royalty program to offer non-practicing entities the option of getting a one-time government payout or to go into production. After all, if the government is giving us all these patents with a presumption of validity, they should bear some or even a good part of the burden of sorting out the tangle. Then, I would submit, we would see a drastic increase in quality at the patent office and possibly even a reduction in backlog as the government hurries to try to dispense with the pipeline of potential payouts instead of looking at the backlog as a gravy train in perpetuity.

  29. Thanks Luke – Lebovitz does also discuss disclosure of applications that are planned but not yet filed.

    I agree that the on a limited scale is certainly reasonable. We only hope that it would not cause researchers to delay publication in order to avoid giving notice of their patents.

  30. CaveMan, I like your thesis, that elimination of risk results in communism. But aren’t you worrying unnecessarily? Putting in place a regime that lifts up the level of legal certainty on the ambit of a claim, and whether it’s valid or not, is hardly enough to abolish business risk. Business people will still have to assess whether or not a licence can be negotiated out of the patent owner.

    And are you giving enough weight to the need of business for confidence to invest. Manage the legal uncertainty on scope and validity, and the result will be that fully-briefed business people will be more ready to invest, in innovation, in USA.

    Or do you think otherwise?

  31. Dennis, I think your paraphrase about disclosing “potential patent rights” is inapt – I clicked on the link prepared to be outraged, but found instead an entirely reasonable discussion about disclosing (actual) patent *applications* – a very different thing from potential rights.

    Cheers, Luke

  32. Oh, and the other thing that should be predictable is the operation of the Examination process. I don’t want to be mistaken as advocating firm and sure remedies for infringement on patents that should not have been granted. However, I would like to stick to my belief that a “bad patent” should be easy to dispense with prior to litigation.

    The remaining question is how to handle a true non-practicing entities from holding up the development of important markets. There should be some sort of waiver provision if you are an NPE and have turned down reasonable licensing offers. Also, there could be a new theory of damages for NPEs something along the lines of, if you can’t prove that you are making or will soon make a product using the invention, then your reasonable royalty should be low as compared to a competitor who can show a royalty rate as a percentage of the product’s profit margin based on existing sales or projected sales figures.

    Or maybe a one-time statutory royalty paid by the government to an NPE patentee who is willing to make the patent part of the public domain (hey, the patentee coughed up fees and a disclosure, it should be worth something). The PTO could vet the patent through a compulsory re-examination procedure that would be paid for by the patentee (should be cheaper than litigation costs right?). That should liven things up.

    Such a structure should hasten deals between NPEs and potential licensees who would rather NOT see the technology go to the public domain. It would shake out the small timers who are just interested in a couple of bucks (the true “trolls” if there is such a thing) and shift the nuisance to the government, where it belongs. Then you would surely see some tightening of the statutory standards of patentability.

    With the dollar dropping, the time is right for the U.S. to start cranking up its manufacturing might and make the PTO the proud and professional place it once was. We could even swing an early retirement for #6K and get him the rest he needs.

    But hey, I’m just a cave man.

  33. The only thing that should be predictable is a firm and sure legal remedy for infringement based on a predictable legal process. If the boundaries themselves were so certain and predictable, a patent regime would not be necessary in the first place.

  34. Predictability is the hobgoblin of little minds and franchise shoppers…

    Where there is predictability there is no risk. Where there is no risk there is no reward. Where there is no reward (incentive) there is communism.

  35. Dear Derek:

    Actually, Senator Sessions signed on months ago, when Senator Leahy put Section 13 into the bill, immunizing the banking industry from liability in the Data Treasury case in Texas. The tea leaves are still pretty murky on whether this will come to a vote, as IPO notes on their blog.

  36. As for Patent Reform not being dead, with Senator Leahy pushing it forward the legislation is gaining momentum with Republican Senators like Jeff Sessions signing on and making this a bipartisan force.

  37. “since the patent rights are only potential and the inventor has no control over the outcome of the claims from the patent examiner, either there is no conflict-of-interest or the researcher will be unable to determine any conflict-of-interest until the patent application is allowed.”

    Isn’t the potential conflict-of-interest the fact that a follow-up research paper puporting to demonstrate the “suprising” effect of X on human health could be used for the author’s (or the author’s affiliated research institute’s) financial gain?

    That 1/3 number is surely a lower estimate once the merely descriptive articles about, e.g., the social behavior of praying mantids and the number of active volcanos in the Indian Ocean are removed from the equation.

    By the way, I noticed in the paper that Bruce Alberts is going to be new editor in chief of SCIENCE. Good for him. Maybe he can do something to sever the magazine’s unfortunate association with crypto-zoological baloney.

  38. Only one-third? That sounds more like two-thirds don’t realize they may have something patentable on their hands.

  39. LOL JD

    Also, “Should we work toward a system where patent rights are more predictably valid; where patent scope is more easily discernable; and where fragmented ownership of overlapping patent rights does not block further development?”

    ABSOLUTELY, it would make me proud to have this job.

  40. day by day, this blog creeps from a useful and informative blog edited by a recent practitioner to a speculative and annoying blog edited by a law professor.

  41. If “almost one-third” of the research articles were associated with one or more patent filings, shouldn’t everybody assume that there are potential patent rights for all publication of related research rather than forcing disclosure of federally protected confidential information? Also, since the patent rights are only potential and the inventor has no control over the outcome of the claims from the patent examiner, either there is no conflict-of-interest or the researcher will be unable to determine any conflict-of-interest until the patent application is allowed.

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