Patently-O Bits and Bytes

  • The Federal Circuit: Earlier this week, the IPO sent out a flyer demanding more respect for the Court of Appeals for the Federal Circuit. In particular, the organization noted that the court should be referred to as the “Federal Circuit” not the CAFC. IPO pointed out that acronyms are for lower courts such as the BPAI, ITC, CIT, CCPA, etc. I agree with the push for respect. My problem with the “Federal Circuit,” however is that it is a poor trademark. It turns out that all appellate courts are “federal circuit courts.”
  • Hal Wegner at the Federal Circuit: Wegner is returning to the Federal Circuit on October 9 to argue against the PTO’s product-by-process double patenting rejection of a Takeda patent in reexamination. The identical claims were argued in the 1995 case In re Ochiai (PTO reversed). The patent (No. 5,583,216) claims priority back to an original 1975 application. The issue is the timing of judging product-by-processing double patenting. [Calendar]
  • Distance Collaboration: Patent No 7,343,719 is interesting to me because it list 30 different US inventors coming from nine different US states: Illinois, California, Tennessee, Connecticut, Texas, Massachusetts, New Hampshire, Wisconsin, and Florida. Have the tools of modern communication changed the nature of invention? The patent covers a machine that cooks and packages French fries.
  • The Internet: The chart below shows the percent of issued patents that refer to the “internet.”


33 thoughts on “Patently-O Bits and Bytes

  1. 33

    Euro, I rush to agree with you, that commission of a minor informality ought not to be punished with a disproportionate and unfair response. I’ll have to watch out for that. Hadn’t noticed the trend. But, forewarned is forearmed. Thanks.

    Much increased fees? Do you mean for all those 500 claim mechanical cases that designate only Germany, France and the UK?

    Cheer up. It’s not all bad. Claims 11 to 15 used to cost. Now they’re free.

    Care to expand on detail, for the benefit of readers of these august pages, on where to find that stream of disproportionate unfairness now issuing from the EPO?

  2. 32

    I don’t have a problem with stricter standards on substantive issues (although I’m also happy for “scintilla” of invention to warrant a patent, so long as it is rewarded with a concommitant scintilla of protection). I do have a problem with procedural discretion being exercised against applicants in relation to minor informalities, simply in order to dispose of cases, and with the use of much increased fees as a disincentive to file or prosecute applications. That is some kind of pendulum swing compared with the user-friendly EPO of old.

  3. 31

    Thanks Disnae. As you suspect, I don’t see this as a pendulum, more a sign of sharper appreciation inside the EPO that the Office must balance interests between those holding the guns and those looking down the barrel. The sloppy lack of diligence and concentration of a few years ago,leading to issue of patents that can’t stand up to attack in court, wasn’t ideal. But it’s not all one way. See for example TBA 3.4.02 at work in T_1269/06, reminding everybody that the “new subject matter” standard is the common sense Statute itself, not “verbatim text, in the thing as filed”. Taken together with “synthetical propensity” T_0190/99, we have the EPO ever more part of the (unchanging) real world. But perhaps you disagree?

  4. 30

    Max, the runes clearly indicate that the EPO is making it progressively tougher to get an EP patent, not only by raising the bar for susbtantive grounds, but also by increasing the expense and reducing the user-friendliness of the process. Not sure if that counts as the kind of pendulum swing you were talking about, but the winds of change are blowing for sure.

  5. 29

    How about this as a possible reason for the 2005 datapoint:

    It takes about 3-4 years for a “business method” patent to get through the system.
    It “Internet Bubble” was around 2001-2002, if I’m not mistaken.

    Never claimed to be a history major, either.

  6. 28

    Answered my own question. The tech-bubble burst between 2000 and 2003. The average pendency of a communications technology application in 2005 was ~ 42 monthes. As all the dot-coms went out of business, fewer communications technology applications were filed, and thus the reduced number of “internet” patents in 2005.

  7. 26

    What did happen in 2005? There is a dip in the total US utility patents issued that year as well. In 2004 the US issued 164,291 patents, but in 2005 only 143,806 patents were issued. In 2006, the number is back up to 173,771.

  8. 25

    Internet patents:
    1. What the blue blazes happened in 2005? What an out-lier.
    2. Is that a datum point for 2008???
    3. There is no apparent effect of State St. (1998). The rate of rise on a % basis looks pretty much constant from 1997 to 2008 (?) but for that ugly/interesting point at 2005. State St is not an internet patent per se but I might have thought it would produce a discernible boost a couple years downstream.

  9. 24

    Using the PTO database and the search string “spec/Internet and ISD/1/1/1970->1/31/1989” shows the following:

    4,438,511, Packetized ensemble modem, was issued in 1984.
    4,714,995, Computer integration system, and 4,706,081, Method and apparatus for bridging local area networks, were issued in 1987. I did not find any issued in 1988.

  10. 21

    Anon, are you referring to the EPC’s “101” section, namely Article 52(2)(c) “programs for computers” and Art 52(3) “as such”? From 1978, Europe has a statutory bar on the patenting of computer programs as such. And has indeed steadfastly and consistently and diligently barred the patenting of computer programs as such. There might be a touch of creep in the boundary, because clever Applicants have been pushing the envelope for 30 years by now, but where’s the “pendulum” pray? Can you say more?

  11. 18

    Suggest to replace “reign” with “rein in”, like a runaway horse. Suggest “Bilski”. Suggest pendulum swings, when courts lack patent specialists and instead respond to the current public “anti-patent” or “patent friendly” mood. Don’t beat yourselves up too much about this. Look at Japan, vowing to be the most “patent friendly” jurisdiction. Look where it gets them. The ONLY exception is the EPO. With 34 Member States staffing the Technical Boards of Appeal, and with no court controlling what the Boards decide, and with thousands of Decisions in Oppositions, where Kimberly Clark is Patent Owner on Monday, and Opponent to P&G on Tuesday, (or Medtronic and Boston Scientific and J&J permutations of Owner and Opponent) and where preponderance of evidence decides questions of validity, there you see no swings of the pendulum. At least not so far, in 30 years of EPO Decision-making. Comments?

  12. 17

    As one who practiced in the pre-CAFC days, I have a somewhat different take on the formation of the CAFC.

    It wasn’t that there was lack of uniformity, it was that it was almost impossible to get a patent held valid in the circuit coruts. There was one circuit that claimed “The only valid patent is one we haven’t gotten our hands on yet.”

    The CAFC was formed to increase the power of patent holders. Unfortunately, they did such a good job that the SCOTUS has had to reign them in. Now, they are starting to realize that, just maybe, they went too far. Bielski (sp?) will be the real test of whether they got the message. For those of you who never practiced before the CAFC came into being, welcome to the 1970’s.

  13. 16

    You make a good point random. What with Souter’s takings for private use and whatnot, it does seem as if SCOTUS is a bit out of touch. Learned Hand’s ghost needs to pay a little visit to First Street N.E. If only we had someone of his caliber on the court today.

    Brasky wouldn’t stand for that, I once saw him scissor kick Angela Landsbury.

  14. 15

    SCOTUS doesn’t even respect the voters of this country, what makes you think the CAFC is more special than them?

  15. 13

    Nice call for the IPO to demand more respect for the court…

    …now…if only they’d be as strident about something far more important to everyone everywhere…by demanding that only truly qualified folks be selected for the critically important leadership positions of the PTO…

  16. 12

    Nice call for the IPO to demand more respect for the court…

    …now…if only they’d be as strident about something far more important to everyone everywhere…by demanding that only truly qualified folks be selected for the critically important leadership positions of the PTO…

  17. 11

    I am refreshed to see a call for respect for the CAFC. While they have taken a little bit of a beating lately, gobbledygook notwithstanding, they were instrumental in making some sense of patent law and actually creating some predictability. Unfortunately many (including myself) were too young to experience the woeful state of affairs in patent law amongst the many diverse federal district and appellate courts before the advent of the CAFC (pre 1980). Just ask guys like Kayton or Gholz. Now if we could just get SCOTUS to show a little respect for the CAFC, we might be on to something.

  18. 10

    I practiced in Boston. I don’t ever remember calling it the Federal Circuit Court for the First Circuit. First Circuit, Federal Appeals Court, Federal Appellate Court, etc. Maybe it was the old building rather than the new(er) court.

  19. 9

    Illinois, California, Tennessee, Connecticut, Texas, Massachusetts, New Hampshire, Wisconsin, and Florida

    it is not a red state patent or a blue state patent, but truly a red, white and blue state patent;

    and thus any criticism of this patent is really a criticism of our flag and I will not tolerate it

  20. 8

    The “ordinary observer” testimony of EGI (page 27) was in fact expert testimony. Moreover, her opinion about what an ordinary observer would do was merely “conclusory.” (p. 29).

  21. 7

    The “ordinary observer” testimony of EGI (page 27) was in fact expert testimony. Moreover, her opinion about what an ordinary observer would do was merely “conclusory.” (p. 29).

  22. 6

    I once saw an attorney chewed out by Judge Whitman Knapp in the SDNY for referring to the US Court of Appeals for the Second Circuit as a “circuit court.” Knapp pointed out that there haven’t been “circuit courts” since 1930-something.

    That being said, I see nothing wrong with “CAFC.”

  23. 3

    Further to Mad Prosecutor, especially because the Court adopts the “ordinary observer” test but then ignores the “ordinary observer” testimony of EGI (page 27) in favor of what seems to be a point of novelty argument presented by Swisa (page 28)

  24. 2

    Re “Federal Circuit Court for the First Circuit”–maybe informally, but by statute, the proper name of each court is the “United States Court of Appeals for the [blank] Circuit.” 28 U.S.C. 43.

    Thus “Federal Circuit” is distinctive, though perhaps still confusing.

  25. 1

    No discussion of the Egyptian Goddess opinion? No reaction as to the abandonment of the point of novelty test?

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