Patently-O Bits and Bytes No. 24

  • Using Prosecution Histories: I’m going to do a survey next week on how prosecution history is used in practice, but I would like some reader input to help me create the survey. What are some examples of times when you look at the prosecution history of an application?  This survey will span prosecution, litigation, licensing, FTO, patent families and related applications, and will also touch on the cost associated with reviewing a prosecution history. [Comment or e-mail]
  • Call for Papers: Seton Hall Law Review asked that I post a call for papers for their October symposium titled: Preparing for a Pharmaceutical Response to Pandemic Influenza.  If you would like to participate, submit a 200 word abstract by tax day: April 15. [LINK]
  • Patent.Law069A Sad Comment on Comments: Reader comments are very useful in providing additional analysis; anecdotes; pointing out my own biases and typos; etc. However, I want to keep this blog on the topic of patent law — not random constitutional and gun control theory; not clothing choices of other readers; no defamation; and not personal attacks against other posters.
  • Appointing CAFC Judges: For at least the second time in the past two months, a Federal Circuit judge has publicly discussed the fact that eight of the current twelve CAFC judges will be up for “senior status” within the next two years. The Honorable Kimberly Moore discussed this issue at a recent IPO conference in DC. The next President can expect to shape the face of Patent Law through these appointments.

13 thoughts on “Patently-O Bits and Bytes No. 24

  1. 12

    Summarizing, Don’t assume that people are going to see events from the perspective that you have. You have to let them know your perspective and why you believe in a particular position.

    Further, you have to respect the fact that people will have opinions that differ from yours.

  2. 11


    A problem with your position is even assuming you are correct, and full support for your argument has been posted before, you should always explain your reasoning (preferably by citing the case law, statute, or rule that you believe supports your opinion). If it’s any more complex than 2 + 2 = 4 you should at least cursorily explain your reasoning. You may not be able to make a horse drink, but he will never drink if you do not lead him to water in the first place.

    Also, short, declarative sentences tend to be most effective on an audience.

    These are ideas that are reinforced in a first year writing class in law school. I believe one legitimate criticism of your posts, and I am not trying to be insulting, is that your writing skills could use improvement.

  3. 10

    I try to support my statements in all situations where the support hasn’t been posted umpteen times on these very same boards. This is why most real “boards” have a FAQ, or Common Questions and their Common answers, or “newbie to this board” section. This is essential to keep old people on the boards from having to re-explain themselves every post. But you’re right, sometimes I may step over the line, I’ll try to keep myself in line.

  4. 9


    You need to learn the difference between empty flaming and substantive criticism. You have engaged in both, and do not seem to be able to discern the difference. Making a completely unsupported allegation is flaming. If you offered some evidence or reasoning for your posts and practiced civility than others would engage you on civil terms.

    Here’s a hint, do not listen to Rush Limbaugh for debate techniques.

  5. 8

    Mr. Nowotarski,

    Your reference to the full version of Acrobat is well made. It is one of the very few productivity apps that I consider to be a “must have” given its numerous capabilities. Its OCR function is quite good, though I tend to favor ScanSoft’s OmniPage because it is much more robust.

    Now, all I am waiting on is for Avantstar to update its Quick View Plus product for Vista compatibility. I know of no quicker and easier way to wade through a myriad of documents in pdf, txt, doc, jpg, etc. formats without having to start their associated apps.

  6. 7

    “Yes, the cost in terms of time can be great.”

    If you download the entire file wrapper into a pdf, drop it into Adobe Acrobat (full version that costs money, not the free “reader”) and hit the OCR (optical character recognition) button, you will have a much more useful version of the documents. All the images will be converted to searchable text.

    This reduces the time, for example, to trace how a word or phrase has been given meaning in a file wrapper from hours to minutes since you don’t have to read everything, just do a search (subject to the usual caveats on how OCR isn’t perfect etc).

  7. 6

    True true, keepin’ it on topic, I’ll be good. Oh, and for an example of a case when I had to review the family history: every case that has a family history that I lay eyes on. Yes, the cost in terms of time can be great. Some times even looking over an amendment in a child w/ respect to what all was covered in the last app in the history can be a real bother.

    Also, lawyers et al. shoud know that I’m not meaning to be defaming when I post a comment pointing out your failures at interpreting written language and/or blatently perverting what is said for yours/your clients own gains. Certainly we’re all entitled to a little education by another, be they a recent graduate or an old timer. That said, I also concur with the request to open the forum to legal matters in general as they are interrelated in very many intricate ways. For example, the recent comments on burden and nature of/type of evidence apply across the board. Such things as affidavits, meanings of words in statutes, claim construction, jurisdiction, the concept of appeal, etc. etc.

  8. 5

    sometimes even when doing a patentability study to determine exactly what a confusing prior art reference discloses

  9. 3

    Prosecution histories are so readily accessible today that, why not look through them. In any Markman dispute, it must be considered, as well as in most due diligence reviews.

  10. 2

    Dennis – Re Comments

    It is my observation that the quality of comments goes down as the number of comments under a topic goes up. Longer comments generally have a lower signal to noise ratio than shorter comments. I suggest that information content is roughly proportional to the log of the comment length divided by the number of the comment in the responses to the original post. By the time you get to the 100th comment under a posting discussion has usually deteriorated into a flame war between a few posters. If necessary, you could restrict the length of individual comments or the number of comments posted in response to one of your items.

    All that said, open, even raucous, debate is the core principle of the Enlightenment and central to Anglo-American democracy.

  11. 1

    Comment on Comments:

    Your concern is long overdue. Far, far too many posts quickly turn into verbal attacks (though negativity seems to be confined to a few readily identifiable posters), the hijacking of threads into totally unrelated matters, etc.

    While patent law is the central thrust of this blog, I do believe it is appropriate to incorporate within comments legal principles from other areas of law that can be useful to understanding relevant legal principles. By way of but one trivial example, some aspects of District of Columbia v. Heller serve to highlight how the phrase “To promote…” should/could be interpreted. Is it a limitation on congressional authority, one perceived salutory effect (among others), etc.? Graham and Great A & P suggest in dicta that it is a limitation, which, of course, can have a profound effect on the current debate over patent reform.

    A final point, the blog articles examining the patent system from an economic perspective are quite provocative and timely. It is refreshing to read and consider subjects and points of view that transcend patent prosecution. Such articles and others that may challenge cherished notions of the “patent system” serve the very useful purpose of helping counsel to become an even better advocate for his/her clients.

    As a sidenote, perhaps some time in the future you may wish to consider broadening of subject matter to embrace the other areas of related law. There is a symmetry between patents, trademarks, copyrights, trade secrets, unfair competition, some aspects of antitrust, and a few others that serves to inform those immersed in “IP” in a manner helpful for better understanding patent law principles.

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