The PTO hopes to change the disclosure requirement of Rule 56. The PTO does not want more references – it already has millions stored in its electronic databases. Rather, the PTO wants practitioners to perform a preliminary search and distinctly point out the closest features of the prior art. In tension with the PTO’s desires are the multiple cases finding patents unenforceable due to applicants failure to submit relevant prior art to the PTO. Based on those cases and on the increased potential value of patent rights, patent applicants have dramatically increased the number of references cited in each application. (See first chart on right showing rise of references over time). In my sample of 500,000+ patents issued 1971-2008, the average number of references cited on the face of patents rose five-fold – from fewer than five in 1971 to more than twenty-five in 2008. On the other hand, it seems that the increase of prior art is largely due to patent applicant activity. In particular, on their own, examiners only discover [cite] around six or seven references – even when the applicant submits no prior art at all.
This result is shown in the second chart which compares the number of references cited in issued patents from 2006-2007 where the applicant filed an information disclosure statement (IDS) versus those where no IDS was filed.
I don’t have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line).
Now just relax Malcolm, tell me how all of this makes you feel?
“So it’s not a reasonable inference from the first quote that you think a lot of patent prosecution firms have a broken culture that is typical of a firm heading down the drain?”
No, it’s not a reasonable inference. Rather, it’s close to an exact quote. The reasonable inference was your inference that I think “a lot of patent firms are heading down the drain.” In fact, I am not sure if I agree with that. For instance, I’m not sure what you mean by “a lot” in that context. Certainly I wasn’t “thinking” about “a lot of patent firms going down the drain.” I was thinking about what I perceive (based on my comrade’s experiences) is typical behavior at such firms. So, your inference was wrong (but reasonable).
But your mistaken inference is hardy worth me get “pissed off”, especially to the extent that I would make a point of telling you that you’ve pissed me off. I mean: so what? Likewise, I’ve never understood the oft-invoked “you must never have prosecuted an application before” rejoinder or the “your co-workers must loathe you” rejoinder simple because I might disagree with something that someone has written here or in court. You might as well just be ranting that someone is “worse than Hit-ler.”
I’m sorry, did I hear Mooney talking about an “incredibly obnoxious post”????? Oh, the irony. You go John D!
I’ll bet that when Dennis’ students read the comments on this blog that they can’t wait to go out and be a mature attorney just like the people who post here.
“That sort of broken culture is very typical of a firm heading down the drain. I suppose that applies to a lot of patent prosecution firms out there.”
“And I never said that ‘a lot of prosecution firms are going down the drain.'”
So it’s not a reasonable inference from the first quote that you think a lot of patent prosecution firms have a broken culture that is typical of a firm heading down the drain?
You’re r!diculous.
“Is this how you prosecute? I’m sure the Examiners are impressed by the threats.”
No. All of my replies comply with Rule 3. As you don’t actually prosecute any cases, you can look that one up.
“But only one of us is stamping his feet and getting ‘pissed off’ because somebody drew a reasonable inference.”
Reasonable inference? That’s a stretch. Even for you.
You are the biggest hypocrite here.
“You can stop the lame personal attacks, JD. Boo-hoo-hoo.”
You’re an anonymous jag off. How is anything anybody says about you “personal”?
“At least Max’s co-workers probably like Max. I doubt I could say the same for you.”
It’s been literally years since pds started peddling his weirdo fantasies here about the co-workers of other commenters.
I think it’s pathetic.
JD “Now you’re p!ssing me off. Never claimed to be an “expert” or a “specialist” in any of those technologies.”
And I never said that “a lot of prosecution firms are going down the drain.” But only one of us is stamping his feet and getting “pissed off” because somebody drew a reasonable inference.
Is this how you prosecute? I’m sure the Examiners are impressed by the threats.
pds,
I’ve read the current rules and I don’t see anything that prohibits prosecuting the applications that you did not personally work on or that weren’t on your docket.
Assuming you were not a SPE or Directory, I don’t think “pending under the employee’s official responsibility” includes cases on your buddy’s docket. It just refers to the cases on your own docket. If you were a primary in might include cases assigned to junior examiners you reviewed.
From MPEP 1702
“A patent examiner would have ‘official responsibility’ for the patent applications assigned to him or her.”
The current wording is substantially different from the pre 2005 language below (from Rev 2 of the MPEP)
(1)
Not to prosecute or aid in any manner in the prosecution of any patent application pending in any patent examining group during his or her period of service therein and
(2)
Not to prepare or prosecute or to assist in any manner in the preparation or prosecution of any patent application of another (i) assigned to such group for examination and (ii) filed within two years after the date he or she left such group, without written authorization of the Director.
“These rules were liberalized quite a bit in 2005. I don’t believe anything in the current rules would prevent former examiners from drafting and then prosecuting a brand new application destined for their old art units immediatley after leaving the office.”
Actually, the restrictions are described here:
link to uspto.gov
You may be correct that you could write a brand new application, but it’ll be years (in most instances) before you start prosecution on the applications you write. In most instances, simply writing applications is not going to give you enough hours. You are going to have to prosecute applications to make your hours, which means you’ll be prosecuting stuff which is not in your area of expertise.
However, this isn’t a big problem. Writing the application, by far, is the hardest part when it comes to understanding the technology. Prosecuting needs less in tems of knowledge of the technology. It does, however, help more with claim construction and 103 rejections.
“What an incredibly obnoxious thing to say about … well, anyone.”
Hahahahahahaha … you are the last one to make any comments. At least Max’s co-workers probably like Max. I doubt I could say the same for you.
“First off, as you should already know, one you leave the USPTO, you cannot touch an application in your art unit for 2 (?) years.”
These rules were liberalized quite a bit in 2005. I don’t believe anything in the current rules would prevent former examiners from drafting and then prosecuting a brand new application destined for their old art units immediatley after leaving the office.
It’s a good thing too, because the USPTO classification system is not very unpredictable or deterministic.
I’m not even going to bring up the case about the turbo charger mounted on the other side of the mounting being non-obvious. O wait…
But don’t be mad JD, it’s a sad state of affairs and that’s the bottom line. Maybe you are more than competent, maybe even expert in all those fields. But it won’t change the fact I have no business drafing chemical cases, or mech cases really, MAYBE software cases. Neither do any other recent grads in my field. Sure maybe there is a demand for generalists and we can be made to fit that bill, but it doesn’t make it the way it should be. There’s enough work to go around I hear, why don’t firms refer clients with cases that aren’t in their specialties to firms that do specialize in those areas?
Anyway, I gtg fellas, it’s end o tha year time, I have some things to finish up so I won’t see you guys till it’s done. Or I get really stir crazy late at night.
Sound advice John. And very much appreciated. Just seems a shame that, despite your being a lawyer, you’re not interested in mincing words.
I’m not interested in mincing words with you. You use my name in a post, you better be d#mn careful what you say.
Now calm down John. You’re all upset because you think I took “posting” as “fact”. But look more carefully. I didn’t, did I?
“Well, this stream was kick-started by the listing of what the real John Darling is a specialist in…”
Now you’re p!ssing me off. Never claimed to be an “expert” or a “specialist” in any of those technologies. That was an anonymous examiner’s characterization. You should do your own fact checking instead of just taking some anonymous blog posting as fact. My bio clearly states that I have prepared and prosecuted, and opined on, patents in those technologies. And I have. Quite a few actually. And I am more than competent in every G#d d#mn one of them.
“Now I know something about all of those, but whether I am competent to draft in all of them, and secure for client all of what client deserves, of that I’m sceptical.”
I’m sure you’re incompetent in all of them.
Keep taking instructions. I’m sure you’re competent at that.
General practice firms have trouble keeping patent prosecution departments
Thanks pds. Of course, I would be less patronising if I were writing under my real name. Writing anonymously on this blog has good and bad consequences. Glad you like Europe and Europeans. I also like most of the US patent attorneys who give me my instructions.
Reasonable examples, you say. Well, this stream was kick-started by the listing of what the real John Darling is a specialist in, namely: vehicle transmissions, photolithographic processes, telephone call processing, flash memory and optical disc storage. Now I know something about all of those, but whether I am competent to draft in all of them, and secure for client all of what client deserves, of that I’m sceptical. One becomes proficient in those areas of technology that your client occupies, of course, but the old English civil service idea, that an intelligent, well-educated person can quickly learn anything, is ever more difficult to sustain, I should have thought. Interesting that, in the USA, mech eng is two-a-penny. In Germany, that’s more true of the chemists. Europe has one Patent Office serving 600 million people. All you mech eng 3 language people reading this, who fancy swanning around, billing exorbitantly, under the fancy title “European Patent Attorney”,and enjoy writing about solutions to real objective technical problems, think about coming to Europe, where there are good chances of securing a well-paid job taking instructions from patent attorneys in the USA.
“That’s nice, JD. I stand by every word in my earlier comment.”
Which comment? The one about supposedly unethical practices or the one about a lot of prosecution firms going down the drain?
You really need to get out more.
Max, when I refer to “around here” I mean DC/Virginia. The big shops around here have been around for a very long time, and I don’t see them going away any time soon.
They may see a downturn in business from the economy. But then again, just about everybody probably will.
I don’t see the decision in Bilski, whichever way it goes, having too much impact on the big prosecution shops around here.
“You are going to sink or swim, and it won’t take long for you to figure out if you are drowning.”
I had figured that with the work being based on clients that at least with the bigger clients in my field then they would use certain firms enough for them to specialize. AU thing isn’t a problem because there are many other AU’s that do my tech. To be honest with you there’s a good chance of my scraping by if I’m asked to do a lot of software/chem work. I already have to do that sort of thing on occasion in the office and lord knows it takes forever to familiarize yourself with the stuff that makes up the basics of the app. Late nights is what it usually boils down to for me.
“Max here again. I can’t believe what I’m reading above. Somebody tell me it isn’t true, that US patent attorneys in private practice (in large firms, writing, filing and prosecuting patent applications) don’t specialise in the technical field for which their scientific or engineering degree qualifies them. ”
I know max, no wonder I’m getting the amendments I do. Although to be fair, when I talk to the attorneys they usually seem to know a decent amount about the art. Though, they’re usually older guys. The ones by younger people are generally of poorer quality prosecution.
pds “You are the type of person that your co-workers have to say, behind your back, “oh, just ignore Max, he’s like that to everybody and he doesn’t mean any harm.”
What an incredibly obnoxious thing to say about … well, anyone.
“BTW, my first firm is certainly not heading down the drain. They’re doing quite well. As are most of the big prosecution shops around here.”
That’s nice, JD. I stand by every word in my earlier comment.
“Somebody tell me it isn’t true, that US patent attorneys in private practice (in large firms, writing, filing and prosecuting patent applications) don’t specialise in the technical field for which their scientific or engineering degree qualifies them. Chemists writing gearbox cases, mech engrs doing pharma, EE’s doing medical devices.”
Another person living in a dream world. I worked as an engineer for many years before becoming a patent attorney, and I used about a couple of paragraphs from one text book in my job as an engineer. Going to engineering school rarely trains one to do a specific job. Instead, going to engineering school trains one to think like an engineer. A good engineer and patent attorney should be able to pick up most technologies given sufficient time and training. There just isn’t enough work in one’s “initial” expertise for most attorneys to be an expert on only one thing. Moreover, the word “expert” is probably too strong. One needs to be competent, not an expert, to draft an application.
FYI: You would almost never have a chemist write a gearbox case because mechanical engineers are a dime-a-dozen in most law firms. The “hard” mechanical cases go to the mechanical engineers and the easier mechanical cases can go to the chemist, software engineer, etc. For example, any attorney should be able to write an application about as to a simple golf training aid. Also, no mechanical engineer would ever write a pharma case (i.e., part of my biotech and other esoteric degree exception). As far as the EE doing medical devices, I cannot see why not. Most medical devices I’ve seen are very simple. Whether it is a stent, spinal implant, dental insert, etc., most of these are very basic devices that even non-engineers could understand.
Max … try sticking with reasonable examples, and stopping hitting on Sandy Strawman, MM might get jealous.
BTW: Don’t talk to me about the expertise of the average patent practitioner within the EPO (either examiner or agent/attorney). EPO examinations are less detailed than what one gets from a primary examiner in the US, which is saying a lot (for those that prosecute a lot, they’ll understand why I referred to a primary examiner instead of just an examiner). As far as agents/attorneys, the absolute worse applications I’ve seen have come out of Europe (and I’m not talking about German-language translations, which is a separate issue altogether). For having muddled specifications and overly-narrow claims, it is tough to top what I’ve seen from Europe.
As believe I’ve mentioned before, I like Europe and Europeans. I have both work there and traveled extensively within Europe on many occasions, and I would like to go more often (danm that awful exchange rate). Luckily, in all my travels, I have never found somebody with such a condescending attitude as yours, for if I did, I’m sure it would leave a very bad taste in my mouth. You are the type of person that your co-workers have to say, behind your back, “oh, just ignore Max, he’s like that to everybody and he doesn’t mean any harm.”
John, can’t imagine anybody writing in, to label any specific law firm a “sinking ship”, but I suppose somebody might. Generally, in your surveying of firms “around here” do you detect any sign of a brake being imposed by clients, on the activity of drafting and filing financial engineering cases? Maybe there are some “prosecution shops” heavily dependent on such business, that are watching Bilski with keen interest? Or is it that those that are cute enough to pick up the financial stuff will by the same token be cute enough to survive, even if there is a downturn. Or could it be that a turn down on Wall Street actually helps law firms in general to prosper?
“That sort of broken culture is very typical of a firm heading down the drain. I suppose that applies to a lot of patent prosecution firms out there.”
Yes, as pds correctly surmised, my post was intended to be humorous. But that “there’s fresh meat in the office, gather up your dog cases and unload them” routine does go on at a lot of firms. Happened to me at my first firm. I learned a lot from it. If you’re expecting to walk into a monstrous firm and get spoon fed, you’ll quickly be disabused of that fantasy.
BTW, my first firm is certainly not heading down the drain. They’re doing quite well. As are most of the big prosecution shops around here.
Do you have any of these sinking ships in mind that you can actually name?
Max here again. I can’t believe what I’m reading above. Somebody tell me it isn’t true, that US patent attorneys in private practice (in large firms, writing, filing and prosecuting patent applications) don’t specialise in the technical field for which their scientific or engineering degree qualifies them. Chemists writing gearbox cases, mech engrs doing pharma, EE’s doing medical devices. This would explain quite a lot about the quality of the analysis that we in Europe find, in the instructions we receive from US law firms. We were always wondering, why the instructing associate seems not really to understand the invention, the art, or the point that the EPO Examiner is making. No wonder US corporations are cutting out outside US counsel, and instructing us direct. Very rational behaviour on their part, I would say, probably borne of despair. Now I understand better the disadvantages that flow, when a country uses for the high precision work of patent drafting and prosecution a profession (attorney at law) lacking the education and training of the specialist profession (patent attorney) set up to do that work with a requisite degeree of competence.
Don’t get me wrong. I’m deliberately being provocative, to get outraged reaction, which will teach me yet more about the thinking of those who give me my marching orders.
So according to flat earth Mooney “a lot of patent prosecution firms out there” have “broken cultures” and are “going down the drain.” Sounds a lot like sour grapes to me…
I couldn’t have said it better myself PDS and I was about to try…
Bill Brasky used to eat young associates for lunch, if they could climb out of his belly before 2:00 they were partnership material.
“That sort of broken culture is very typical of a firm heading down the drain. I suppose that applies to a lot of patent prosecution firms out there.”
Dude, you must live in San Diego or someplace where “peace, love, happiness and feng shui” permeates the office.
Getting the sh it work is how people learn the best. There is just way too much work to do to spoon feed young attorneys with easy work. Sucks to be a younger attorney, but if you can survive the first couple of years, you will have the confidence to know that when you have to put in a couple of 90 hour weeks in a row for a few weeks (or few months) in a row, you can.
Law is a SERVICE industry. We, as attorneys, need to be able to react to the demands of our clients, which means there is slow times and REALLY BUSY times. Throwing a younger attorneys to the wolves is a quick way to determine whether or not they have the fortitude to handle the REALLY BUSY times.
This isn’t the culture of patent prosecution, this is the culture of most high-stress, high-demand professions. Look what they do to doctor interns. They do the same thing in engineering school and officer candidate school to name just a couple. These are all just weeding out processes designed to separate the wheat from the chaff. Are you really that naive that you haven’t noticed this?
One doesn’t get paid $$$$$ for having it easy on the job.
“Probably, I didn’t expect any better and still don’t. You lawyers are a bad bunch by all accounts.”
Interesting …. yet you are so interested in joining the ranks.
BTW: just because a client gives instructions doesn’t mean that the client isn’t knowledgable. Most of the “big” clients (found in many of the “big” firms) have attorneys that provide the instructions. Also, if the firm is working with a foreign associate, then they are likely working with some type of patent practitioner.
“You might be right JD, I figured there were firms that more of less had a dedicated wing to this field as it is quite large and has plenty going on in it, but after this debacle I’m not so sure.”
First off, as you should already know, one you leave the USPTO, you cannot touch an application in your art unit for 2 (?) years. I’m not sure of the exact restrictions, but you should. Regardless, although some firms “specialize” in certain areas of practice, it usually doesn’t work that way. The work being done is based upon clients, not specialty.
Unless you are doing biotech or have some esoteric degree, you had better be prepared to work on anything. As an attorney, the opportunities to pick and choose your work is limited, particularly as a younger attorney/patent agent. Whatever comes in the door is what you have to work on, no matter how much (or little) you know about the technology. The succesful patent attorneys are the ones that are able to pick up new technology fast. If you don’t, the partner has to write off your time, and you won’t last long with that happening.
Back to clients, some clients are able to give lots of work, in one specialty, which makes it easy to draft the applications as you are able to gain some technological expertise. However, in many instances, you’ll have a bunch of clients with a handful of patent applications each year in various disciplines.
FYI: As low man on the totem pole, if there is any application dealing with a technology that nobody is familiar with, you are likely going to be the candidate to work on it. With the lowest billing rate, it is better to have you waste your time than the time of the $500/hour partner.
It’ll be fun to see if you actually make it into a law firm. You are going to sink or swim, and it won’t take long for you to figure out if you are drowning.
“Everybody needs to be trained … sounds like a great opportunity for a new attorney.”
Give me a break. ‘Here’s some dog cases that make the rest of us sad. Welcome!’
That sort of broken culture is very typical of a firm heading down the drain. I suppose that applies to a lot of patent prosecution firms out there.
[shrugs]
“Nothing remotely unethical about any of this, of course. Move right along, people.”
Everybody needs to be trained … sounds like a great opportunity for a new attorney.
Let me guess, you keep all the hard cases for your self?
Ooops, I forgot. You aren’t a patent attorney, and you don’t prosecute patent applications. Otherwise, you would have found the humor in JD’s post.
JD, “not hiring”? I thought I saw an ad for a “Staff Attorney” at NV.
“The senior associates will smell fresh meat, walk down to his office, introduce themselves, and hand him a file that’s about 2 fee thick. They’ll have already cut and pasted the client’s instructions verbatim into an amendment template about 5 times, and filed an RCE or two, and now the client is getting restless. Perfect opportunity for the new guy to showcase his skills.”
Nothing remotely unethical about any of this, of course. Move right along, people.
“Of course, if you had done ANY RESEARCH on the firm in question, you should have quickly been able to determine whether or not they did work in your field.”
Um, I said they did some, and my research did indicate they did. But everyone does random cases and 90% is NOT in that field, that means btw, that 10% are in that field.
“They’ll have already cut and pasted the client’s instructions verbatim”
Probably, I didn’t expect any better and still don’t. You lawyers are a bad bunch by all accounts.
Thanks for the search engine though. It shows they do actually do some in my field but like they said, the vast majority are not. I wouldn’t know that they’re just randomly assigning cases though.
You might be right JD, I figured there were firms that more of less had a dedicated wing to this field as it is quite large and has plenty going on in it, but after this debacle I’m not so sure. Looks like I’ll probably be doing mechanical, electrical, and god forbid chemical and software all at once.
I’ve prosecuted many, many cases in all of those areas.
6k can send all the resumes he wants. All firms realize they have to sift through a lot of chaff (sp?) to get some wheat.
The odds that 6k is going to get hired to “work in his field” are mighty slim. In the unlikely event he can con somebody into hiring him, he’ll get assigned whatever dog cases are lying around the firm. The senior associates will smell fresh meat, walk down to his office, introduce themselves, and hand him a file that’s about 2 fee thick. They’ll have already cut and pasted the client’s instructions verbatim into an amendment template about 5 times, and filed an RCE or two, and now the client is getting restless. Perfect opportunity for the new guy to showcase his skills.
LOL
We’re not hiring. Though it would be fun to see 6k in his interview suit.
“Unfortunately the big firm was actually looking for someone in another field.”
Actually, what they told you is code for:
“we were really looking for someone is your field, but once we had a chance to talk to you, we didn’t want to lead you on because we aren’t interested anymore and telling this little white lie is easier on everybody involved.”
Of course, if you had done ANY RESEARCH on the firm in question, you should have quickly been able to determine whether or not they did work in your field.
Really, it is quite simple. First, go to the following link:
link to patft1.uspto.gov
Once there, type in: lrep/”the name of the firm” and you would have seen the types of patents that were being written/prosecuted by the firm in question.
You can thank me later.
What art do you examine, e6k?
Our good friend John Darling specializes in “internal combustion engines, vehicle transmissions, hybrid vehicles, recreational vehicles, laser and ink jet printing, blue and white LED’s, photolithographic processes and tools in the manufacture of semiconductors, medical apparatus including catheters, stents, syringes, and breathing apparatus, telephone call processing, flash memory, and optical media storage.”
If there’s any overlap with your art, maybe you could ask him what firms to send resumes to. Perhaps there might be an opening at his firm.
“Har har, um no, actually the “worst” field that I could imagine going into as a matter of fact. One which 1. I have little interest in being in, 2. I have little experience in and 3. I view as being improper as even existing. I’m sure the regulars here know which that is.”
The field of patent law?
Har har, um no, actually the “worst” field that I could imagine going into as a matter of fact. One which 1. I have little interest in being in, 2. I have little experience in and 3. I view as being improper as even existing. I’m sure the regulars here know which that is.
Big- Actually they told me up front, as soon as I got there, before they knew anything about me other than the stuff they had based the decision to bring me there on. They wanted to have the interviews anyway, since apparently what little background I did have in that field qualified me. That and the fact that apparently the basic requirements they wanted were basic patent concepts (at this point I told them the proper interpretation of 112, hah, jk). So I figured what the hell, why not have the interviews and see what’s up? But working in that field is like working for philip morris. Sure, it’s all fun and games until it comes down to actually deciding to work for the devil.
The only thing that has me miffed is that the first lady that was talking to me (over the phone) told me several times that it was a job specifically for my field when really they do very little work in my field. Why drag me out there just to tell me as soon as I arrive the position involves 90% in another field? Seriously, do they have nothing better to do? I almost left as soon as the first guy told me about that little detail.
Either way, I had drinks with the lady that greeted me later 😉 Mhmm. More interviews to come.
Why are you lawyers so da mn incompetent? Can’t even bring in recruits that practice in your field? It’s like amending into a 102. Wtf are you thinking?
I laughed too. Nice one John.
“Unfortunately the big firm was actually looking for someone in another field.”
Ah, yes, the field of competence.
LOL
“Unfortunately the big firm was actually looking for someone in another field.”
Ah yes, the old “we’re sorry for the misunderstanding – we’re actually looking for someone in another field” gambit. That’s a good one. The other one I used to use is “those beancounters in upper management just instituted a temporary hiring freeze – we’ll let you know when things loosen up.”
Anybody remember back when COCA-COLA used to sing:
I’d like to teach the world to sing…..in perfect harmony.
I’d like to build the world a home….and furnish it with love.
That original ditty is still played with relish, over and over again, here in Europe. I guess, if I want your attention, on harmonisation issues, I will just have to sing more sweetly.
e6k, did you copy and paste your Patently-O postings and use them as one of your writing samples?
“What don’t you understand about that?
The interview at the monstrous firm must have gone splendidly. Explains why you’re still there.
LOL”
Um that’s what I said as well in the very beginning, what don’t you understand about that? Unfortunately the big firm was actually looking for someone in another field. Apparently the people in charge of figuring out who goes to what interview are incompetent. But it was good experience interviewing.
Thanks for the gracious reply John Darling. “Useless” you say of my postings, by which I suppose you mean “having a zero possibility of changing anything”. Call me arrogant if you like, but I go on fondly supposing that the drip drip drip on the stone can sometimes make a difference, and even a camel’s back can be broken by one tiny straw. I put my faith in influencing other readers, maybe even an opinion-forming university professor or two, here and there, to confront the “Not Invented Here” negative mindset that bedevils judicial attitudes to reform. .
So, I’ll keep on banging away too, in my hopeless quest to stimulate creative thought and a “Can Do” or “Why Not” positive attitude, in relation to any impediments that might be blocking optimisation of US (and mainland European) patent law. Sorry, I have forgotten what blocks stand in the way of having first instance judges specialised in science, engineering and patent law. In a common law system, there should be no appeal, unless the first instance gets the law wrong. That shouldn’t happen very often (and in reality doesn’t, in common law England) but, in the USA, it seems that most every patent case has to go to the appeal court, in order to get to the point of issue of an orderly Decision. BTW, mainland Europe (including the EPO) is a disaster area, for the efficacy of first instance Decisions (as I have whiningly written here countless times, you will recall).
MaxDrei “I use this blog to tease out of American patent people how they view the world beyond the Homeland.”
link to huffingtonpost.com
“Asked about Palin’s national security experience, Cindy McCain could not come up with anything beyond the fact that, after all, her state is right next to Russia. ‘You know, the experience that she comes from is, what she has done in government — and remember that Alaska is the closest part of our continent to Russia.'”
And there you have it.
Max,
Personally I enjoy most of your posts. Find them very informative. But your posts to the tune of “We do it perfectly here in Europe/ROW. You people in America have it all wrong” are simply useless.
I’m not that offended by them, as are the others you lump me in with. Supposedly. JAOI and pds have some testy reactions to you, but it doesn’t seem to deter you. Nor should it. I thought my reaction(s) to your post(s) were rather mild. No offense intended, I assure you.
BTW, I also enjoy JAOI and pds’s posts very much. Don’t agree with them all the time, but I enjoy them.
I think it’s been explained to you, and others, many, many times why we don’t have specialized patent trial courts here in the U.S. but you just keep beating that drum.
My ears are tired.
That’s all.
Please do keep posting.
I’ll keep reading.
“Deal with it” John, is what I do, every day, because my clients are in the USA. I use this blog to tease out of American patent people how they view the world beyond the Homeland. Whether I personally am “happy” with anything, or not, is irrelevant. I am therefore deeply indepted to the group comprising John Darling, pds, and JAOI(TM) for their splendid reactions to my posts. G0d willing, I’ll keep on posting. I fondly imagine that other readers, silent, nevertheless sometimes find useful what I write about Europe, which BTW has given everywhere else in the world except the USA the patent system it uses today. Group members, do, please, keep on illuminating me with your reactions.
Any examiner probably would JD, the point 6k is making is that it shouldn’t be that way. It should be easy to request information already known to the applicant. If they don’t know then they don’t know. Perhaps a telephonic request program pre-first action would be most useful. That would be something good for those prefirst action interviews.
“Does the reference say x or does it not? It is a question of fact, not of opinion. Just as the question of whether or not, to the applicant’s best knowledge, the official notice was proper. If the applicant “does not recall” then fine, they do not recall.”
If the answer to that question is a matter of fact, then you can read the reference to find the answer, you don’t need me to read it to you or for you.
If you are asking me for the answer, then by definition you are asking my opinion as to whether the reference says x or not.
“Guess what? We can require any information relating to anything we can get our spe to sign off on.”
LOL
Considering that you’re such good buds with all of the higher-ups over there, and can arrange lunch with all of them, you shouldn’t have any problem getting your SPE to sign off on tons and tons of Rule 105 requests, should you?
Why don’t you give us one example of a case where you issued a Rule 105 request.
Just one.
“My opinion of a document is not “reasonably necessary” for you to read it and apply it as appropriate.”
None of the questions posed above were asking for your opinion. They were asking for a factual analysis. Even the last one, because the only alleged “opinion” being sought is merely asking would one of ordinary skill interpret the reference to mean specifically what it says (as opposed to some outlandish spaceland fantasy like the place where your opinion about 105 apparently came from). Does the reference say x or does it not? It is a question of fact, not of opinion. Just as the question of whether or not, to the applicant’s best knowledge, the official notice was proper. If the applicant “does not recall” then fine, they do not recall.
I pose similar questions to attorneys in interviews literally all the time, and they nearly always answer straight up anyway, so whether the rule would be in effect or not it doesn’t matter. Bottom line is, the concept behind the rule is what should be moving the patent system forward.
“Then, if the finder of fact is also a reasonable-thinking entity, honest patent holders should come out alright in the end (after millins have been spent in vexatious litigation). But is the fact-finder to be counted on? Juries sometimes decide what “no reasonable jury” could decide, don’t they? And for every such case, I would imagine there are 25, in which it is difficult to see how a “reasonable jury” could thus have decided, but not so difficult as to reach the “no reasonable jury” standard needed for over-ruling the doubtful jury decision.”
Do you ever filter what you write? Or does whatever random thoughts that intrude your conscious get typed in a post?
Next time, try to come to a conclusion.
FYI … the same comments apply to your next post.
BTW: Scrap that comment about you coming to a conclusion, your conclusions are always the same … the US system of doing things is terrible and we should copy everything that is being done in Europe. You’ve been whistling that tune for years, and honestly, it is getting really old.
“Patent cases decided by a fact-finder that is not competent to decide high technology facts, not in any way comfortable assessing high technology, and furthermore not reasonable, is ‘no reason to change the system’. You state this as if it were self-evident fact, as if any other view would not be reasonable.”
Judges may not be competent either. But they can get help to understand the technology. And one of the roles of the attorneys litigating the case is to make the technology understandable to the jury, or judge.
“is anybody happy with it, except you, and the patent litigator attorneys?”
Some are unhappy with it. You are unhappy with it, apparently. Others have expressed the view that there should be specialized patent trial courts. They’ve stated their case, and have been unsuccessful in persuading the rest of to agree with them.
Is every judge or jury member an expert in our IRC, or our securities laws, or medicine? No. But we allow judges and juries to decide complex tax evasion, securities fraud, and medical malpractice lawsuits all the time. What makes patents so special? If we set up specialized patent courts, what’s next? Specialized medical malpractice courts where all of the judges and/or jury members are MD’s? Shall I go on?
So what’s your problem exactly? You incessantly whine and complain about our system, and boast about how great your system is. We’ve heard your arguments and we ain’t buying them. Sorry. But that’s the way it is.
“And you’re happy with ‘reasonably well’?”
Well, yes. Like I said, it’s not perfect. But it works for us.
That’s probably what you find so galling. You’re constantly telling us how perfect your system is, and our response is, “So what? We like our system. It’s not set up to make you happy. It’s set up to make us happy. Deal with it.”
Patent cases decided by a fact-finder that is not competent to decide high technology facts, not in any way comfortable assessing high technology, and furthermore not reasonable, is “no reason to change the system”. You state this as if it were self-evident fact, as if any other view would not be reasonable. In Amendment VII, I wonder what “shall be preserved” actually means? The “suits” they were bent on preserving in 1789 were not really today’s high tech patent cases, telecoms and biotech, boggling, even to the mind of a trained patent attorney, were they. I thought the idea of the Constitution was to nurture the interests of the US people. Pursuit of their happiness. Are jury members happy. Are their customers happy? Are their employers happy? Are other observers of the system happy? is anybody happy with it, except you, and the patent litigator attorneys? Served us “reasonably well” you assert. And you’re happy with “reasonably well”?
“Juries sometimes decide what ‘no reasonable jury’ could decide, don’t they?”
Of course. But that’s no reason to get rid of juries in patent cases.
In this country, we permit juries to decide all manner of cases. We don’t scrap the whole system, and our Constitution along with it, because juries occasionally get it wrong.
We pretty much settled this on June 21, 1788. It’s served us reasonably well for 220+ years.
Seems to me, from outside the USA, looking in, that the only thing that saves the system from absurdity is the JD point that you’re not on the hook until “intent” is proven. Thus, the system is still hospitable to reasonable people, who have no intent and by their reasonable actions display an overall pattern of behaviour that is incompatible with conduct that is inequitable. Then, if the finder of fact is also a reasonable-thinking entity, honest patent holders should come out alright in the end (after millins have been spent in vexatious litigation). But is the fact-finder to be counted on? Juries sometimes decide what “no reasonable jury” could decide, don’t they? And for every such case, I would imagine there are 25, in which it is difficult to see how a “reasonable jury” could thus have decided, but not so difficult as to reach the “no reasonable jury” standard needed for over-ruling the doubtful jury decision..
“Others have argued that the duty requires disclosing up front any reference that might “conceivably be combined” with another (unknown) reference to form a 103.”
Since we have cases showing that any breaches in the duty to disclose are curable by either the examiner finding the reference or the applicant submitting it later but in time to have it considered, we know that those arguments concerning disclosing up front don’t work under current law.
However, things might be different if the PTO implements a scheme under which you cannot even start or continue examination prior to submitting material references. The proposed IDS rules do contain such requirements.
In that case a court might find that a failure to submit a reference in advance is not curable by submitting the reference later because the applicant’s delay misled the PTO into opening prosecution.
Failure to disclose easily forseeable 103 combinations of references might be evidence of intent to deceive, and certainly a defendant might have an expansive view of what an applicant should have forseen.
“JD disagrees that a finding of IC requires intent. Please, JD, expound upon this legal theory of yours where IC does not require intent. A theory that is no doubt based upon mountains of common law and indeed, probably even statute.”
That’s not what I said.
Without intent, you’re off the hook.
What don’t you understand about that?
The interview at the monstrous firm must have gone splendidly. Explains why you’re still there.
LOL
AllSeeing –
I have no idea what you and E6K are arguing about. I missed the beginning of the atoms falling out of a wire discussion. However, –never– is a pretty strong word.
I don’t know how “fall out of a wire” was defined. But, it sounds a bit like the process relied upon to achieve electroplating to me.
Tell it to the ref Cave. They’re the people publishing such “nonsense”. btw, it was “move in a” not “fell out of”.
Attorneys, always wanting to argue with the refs.
Atoms will never fall out of the wire 6k, and Mooney will never be able to rationalize away his statement with an army of strawmen (what strawmen have to do with materiality I’m not sure).
concept of “truthiness”?
“‘Anything that actually brings up the concept of ‘the truth’ is fought hand and nail.’
Hand and nail?”
Giggle!
I like cloven hoof and talon. Hand and nail is quite ingenious, but when choosing campy phrases, I typically try for something really catchy. Next time, go for cloven hoof and talon. That creates a much more vivid picture.
“While that may be true, given that your duty to disclose extends up to time of issue, there is never a time when anticipation is required. Under the current rules, the applicant always has the opportunity to look over every reference and all of the PTOs rejections and to determine which references are to be submitted.”
Agreed. The relevance of a particular reference may change over the prosecution period. Others have argued that the duty requires disclosing up front any reference that might “conceivably be combined” with another (unknown) reference to form a 103. That’s what I’ve been arguing against.
“Absent other facts, I can’t be held accountable for intending to deceive for failing to anticipate that a reference might later have turned out to be material.”
While that may be true, given that your duty to disclose extends up to time of issue, there is never a time when anticipation is required. Under the current rules, the applicant always has the opportunity to look over every reference and all of the PTOs rejections and to determine which references are to be submitted.
JD disagrees that a finding of IC requires intent. Please, JD, expound upon this legal theory of yours where IC does not require intent. A theory that is no doubt based upon mountains of common law and indeed, probably even statute.
“That’s funny, that’s what has been being submitted. Though I agree IC requires intent. Still, that doesn’t let you off the hook.”
e6k, I didn’t think it was possible for your misunderstanding of inequitable conduct to get any more muddled, but you’ve topped yourself.
Congratulations.
“Reading it as you suggest would require the disclosure of piles of information that only tangentially relate to the claimed invention, since you could never predict which particular element or word in the claim might be unsupported by whatever art the Examiner finds. ”
That’s funny, that’s what has been being submitted. Though I agree IC requires intent. Still, that doesn’t let you off the hook.
“You’re simply not considering this part of Rule 56. Information is material if (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
In other words, if reference A is not submitted because it is clearly not 102, and later a reference B turns up that supports a 103 rejection in combination with reference A; then, the earlier failure to disclose reference A was inequitable conduct.”
I respectfully disagree, Nonabbreviator. You appear to be forgetting that inequitable conduct requires intent; the Court of Appeals for the Federal Circuit (how’s that for respect, Dennis?) has made it quite clear that inequitable conduct is not a strict liability offense. Absent other facts, I can’t be held accountable for intending to deceive for failing to anticipate that a reference might later have turned out to be material. The only reasonable interpretation of the “other information” in Rule 56 is that materiality is determined with respect to information known to the applicant, patent prosecutor, etc.
Reading it as you suggest would require the disclosure of piles of information that only tangentially relate to the claimed invention, since you could never predict which particular element or word in the claim might be unsupported by whatever art the Examiner finds.
Rule 1.56 and inequitable conduct are intended to punish people who act in bad faith. They’re not supposed to create arbitrary traps for innocent practitioners.
Leopold Bloom,
You’re simply not considering this part of Rule 56. Information is material if (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
In other words, if reference A is not submitted because it is clearly not 102, and later a reference B turns up that supports a 103 rejection in combination with reference A; then, the earlier failure to disclose reference A was inequitable conduct.
E6k,
Exactly what do you think this will accomplish? I don’t get it. Let’s say the USPTO adopts your ridiculous policy and that it doesn’t get slapped down like your beloved continuation rules, what will change? I really don’t get the whole point behind this new ridiculous idea (I’ve seen others spout it) and the AQS.
I also don’t know about other firms, but here, when we file an application, we include an IDS that truly *does* contain the closest references that we know of. I usually include enough for you to cobble together a very poor 103 rejection.
e6k –
The technical information known to the applicant is in the cited document. You are asking for my opinion of the document, which is not factual information pertinent to patentablity.
My opinion of a document is not “reasonably necessary” for you to read it and apply it as appropriate.
Where a rule (e.g. 1.56) directly addresses the duty to disclose and explains what is and is not required, you cannot overly interpret another rule to mean more is required that is explicitly laid out in the rule that directly addresses the issue.
I know your job is tough. That’s why I’m not an examiner. I don’t want to do your job.
“Anything that actually brings up the concept of ‘the truth’ is fought hand and nail.”
Hand and nail?
T:
FYI
“(1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:”
:
“(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.”
Guess what? We can require any information relating to anything we can get our spe to sign off on. This includes, but is not limited to, “technical information known to the applicant”. If I make a 105 asking if you know whether or not official notice I just took was well known at the time the invention was made, and if my technical motivation to combine was also well know, then guess what you get to answer? Also, if I ask you does line x, page 10 of Ref A state: In order to make compound y you are required to have z. You get to say yes or no. And if I also ask: “Would a reasonable artisan interpret line x, page 10 of Ref A to mean: “In order to make compound y you are required to have z”.” Then you get to answer yes, no, or maybe (in which case maybe is taken to be yes because if the reference CAN be interpreted in a way then the office is to take it that way so far as I know).
Rule .105 should be the thing increasing quality around here, not having more rejections per se. But noooo. Anything that actually brings up the concept of “the truth” is fought hand and nail.
“Its like e6k saying that the atoms come out of the wire. ”
Or like caveman trying to say they don’t when presented with evidence that they do…
“Only a nationalized organization the mission of which is to uphold the integrity of the profession by providing an adequate defense of patent prosecutors will ensure this.”
So let me get this straight. Either side will do whatever it takes… including commit IC before the office (in a reexam perhaps, or even in the prosecution that led to the patent), and also accuse the other side of IC. So you feel that upholding the integrity of the profession is best served by an organization backing the party that left themselves exposed to such accusations in the first place.
“I have consulted 2 TQAS on this matter…”
Did you get a tarot card reading too?
“If you read the rule closely in combination with the duty to disclose, the request under 1.105 is proper in such a situation.”
Right. And if you read In re Bogese and Symbol Technologies IV “closely” you’ll find that that PTO has the right to make rules arbitrarily limiting the number of continuations that can be filed.
ROFLMAO
SmallPeeingGuy: “I’ll say it again in case you still don’t understand: Materiality in a reference does not automatically mean that the reference is obviating or anticipatory.”
That’s nice. Keep beating that strawman, Cavey. Your fans will still love you.
Mooney, you do enough beating for everyone on the board. Its easy to tell when your buttons have been pushed – you actually quote your own offensive post. Personally you should be embarrassed to call attention to your own idi0tic statement, much less try to create some kind of smoke screen. Its like e6k saying that the atoms come out of the wire.
I’ll say it again in case you still don’t understand:
Materiality in a reference does not automatically mean that the reference is obviating or anticipatory.
Pretty much every practitioner learned or should have learned that in patent kindergarten.