In a recent post on fee sensitivity, many readers commented that (1) applicants pay for their own examination through the examination fees; and (2) the PTO should not change fees in order to influence patent applicant behavior. [FEE SENSITVITY]. Although the PTO is fully funded by the fees it charges, a good percentage of current examination costs are paid through maintenance fees. Those fees are currently $980 at 3.5 years after issuance; $2,480 at 7.5 years; and $4,110 at 11.5 years.
JAOI,
I have reviewed the links and I have nothing new to add, so we can end this thread now.
Why are you pointing me to the concurring opinion in eBay? These justices agree that an injunction does not have to be given. This undermines your argument.
Similarly, if there’s more than one way to achieve the “exclusive right” mandate, then you’re admitting that an injunction is not the only way to achieve it. In other words, it is not necessary to grant an injunction to preserve the inventor’s exclusive right. This also undermines your argument.
Dear nodoghere,
Re: “Your argument appears to rest on the words ‘exclusive right’. Can you tell me how these two words necessarily mean that the patentee should be able to get an injunction against an infringer?”
Thank you again for your comment and further inquiry. You are exactly right about this; my argument rests on the Constitution’s words “the exclusive right” and the extensive body of many decades worth of common law that created binding precedent that stemmed therefrom (please also see the concurring eBay opinion by CHIEF JUSTICE ROBERTS, with whom JUSTICE SCALIA and JUSTICE GINSBURG joined). Bear in mind that there are more ways than one to achieve the Constitution’s “the exclusive Right” mandate.*
The comment e6k made on this link:
link to patentlyo.com
and my reply thereto on this link will shed further light:
link to patentlyo.com
*A well labored dialogue contrasting the Framers’ use of the words, “the exclusive Right,” to your word, “injunction,” starts on this link and throughout the thread titled “Patent Reform 2008: (fixing constitutional errors)”:
link to patentlyo.com
May I again say, thanks for asking.
The Supreme Court’s eBay Opinion is the worst court decision in IP history. I compare the importance of this problematic ruling in patent jurisprudence to what Carl Gauss said about a hobby of mine I refer to as “priming”:
“The problem of distinguishing prime numbers from composite numbers and of resolving the latter into their prime factors is known to be one of the most important and useful in arithmetic… the dignity of science it self seems to require that every possible means be explored for the solution of a problem so elegant and so celebrated.” — Carl Friedrich Gauss, Disquisitiones Arithmeticae, 1801.
JAOI,
With respect, your two links do not explain why the US Supreme Court’s reasoning was incorrect.
Your first link merely states that 25 USC 283 is inconsistent with the Patent Clause. Again, the Patent Clause does not state that injunctions must be available.
Your second link states that Congress should grant the right to exclude if a patent is found valid and infringed. However, the text you refer to is in 35 USC 271, which is not the Constitution.
Please note that the Patent Clause does not define its terms. Thus, we ask the US Supreme Court to define them. Your argument appears to rest on the words “exclusive right”. Can you tell me how these two words necessarily mean that the patentee should be able to get an injunction against an infringer?
Dear nodoghere,
Re: “Can you explain further why the Supreme Court’s [eBay] reasoning was wrong?”
Yes I can – and I thank you very much for asking:
The Supreme Court’s eBay Opinion is not consistent with our Constitution’s Patent Clause.
I have discussed this at length several times, most recently on this link (today):
link to patentlyo.com
Other of your well written comment’s inquires are addressed starting on this link and throughout the thread titled “Patent Reform 2008: (fixing constitutional errors)”:
link to patentlyo.com
Again, thanks for asking. The Supreme Court’s eBay Opinion is the worst decision in the history of patent jurisprudence, and it needs to be corrected asap.
–Without the ability for a patent owner to stop infringement, the owner effectively has little or no “leverage.”–
–litigation is prohibitive–
–if validity is affirmed and infringement is proven, the inventor can stop the infringement if he chooses. If fact, that what a patent is all about!–
Posted by: Just an ordinary inventor(TM) | Oct 13, 2008 at 04:15 PM
JAOI,
I am aware that patent litigation that goes through discovery and through trial costs millions of dollars.
I also realize that leverage is useful in a negotiation. However, I disagree that the patentee has no leverage unless he can stop infringement. The patentee always has leverage in being able to force the infringer to spend more money to defend against the infringement charge than the infringer has made in profit. Indeed, the presumption of validity at the outset of the litigation is intended to give the patentee this kind of leverage. If you’re merely claiming that the patentee doesn’t have enough leverage, then we might as well stop discussing, because that’s not a Constitutional question.
I agree that litigation can be prohibitively expensive. However, this statement is true for many kinds of non-patent litigation as well. Frankly, this is an aspect of our legal system that will always be true -having money will always help a party before a court. However, this aspect doesn’t apply to the eBay decision because there, litigation had occurred and infringement had been found.
I disagree with your statement that a patent is all about stopping infringement. I would say that fundamentally, a patent is about making sure that the patentee is the one who profits from the invention.
JAOI, if your worst enemy was the one making and selling your patented product, but he had to give you all the profits he made, would you honestly say that you would exercise the power to stop him from making and selling? If so, why? He’s basically working for you for free and you’re reaping all of the benefit. I think you’d be crazy to exercise your power.
Let’s go back to your basic argument that eBay is unconstitutional due to the Patent Clause. I agree the Patent Clause says that inventors shall have the exclusive right to their discovery.
However, the Patent Clause of the Constitution does not explicitly say that an injunction must or should be used to enforce the inventor’s exclusive right. Thus, I don’t think your argument is very strong.
35 USC 283 does not conflict with the Patent Clause. Sec 283 says injunctions can be used. The Patent Clause does not say injunctions must be used, as would be needed to support your argument.
283 does not conflict with 271. 271, again, protects the patentee from a claim of patent misuse. This is good for the patentee.
From what I can tell, your argument is that the “exclusive right” is not exclusive unless the patentee can force the court to issue an injunction. The problem with your argument is that an injunction has always been an equitable remedy, not a remedy at law. One has never been able to force a court to issue an injunction.
The US Supreme Court said that this is where the Federal Circuit had gotten it wrong before, because the burden of proof needed to get an injunction was greater than the Federal Circuit said it was.
Now, if there were a statute that said “once infringement is found, an injunction shall issue”, you’d be golden. You can ask your Congressman to write that statute.
Your disagreement with the eBay opinion seems to be result-driven, not based on reasoning. Can you explain further why the Supreme Court’s reasoning was wrong?
Ooops, I am the ordinary white rabbit, but after 5pm Bermuda time, Jaoi spikes my carrots.
My boss is a bit dyslexic; his references to Article IV above should be to VI.
Dear Mr. nodoghere,
Are you aware that typical patent litigation costs millions of dollars?, often running into 10s of million$? Without the ability for a patent owner to stop infringement, the owner effectively has little or no “leverage.” Leverage is what negotiation is all about. At least for many of America’s independent, self-employed inventors, research universities and others, including Edison wannabes, litigation is prohibitive. And try to find a firm to take your patent case on contingency with all the dulling of American patents that’s been going on – good luck on that – much harder after eBay than before.
The most powerful aspect of an inventor’s patent is its ability to exclude others from practicing the invention; if validity is affirmed and infringement is proven, the inventor can stop the infringement if he chooses. If fact, that what a patent is all about! Please read it for yourself:
Article. I, §8, Clause 8 of our Constitution:
“The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”
“As practical matter, why would bold, well heeled patent-pirate infringers (e.g., a successful software company) take a license that is offered if they can instead roll the dice in court without fear of being stopped from infringing even if they lose?”
Here is a good primer on the subject (and there is a follow up comment at the bottom of this comment):
link to patentlyo.com
Elsewhere, you will find more detailed and advanced discussion of the Supreme Court’s Constitutionally unlawful eBay Opinion.
* * * * *
For possible background edification for those who may have forgotten, our Constitution and the Amendments thereto comprise a set of basic laws, laws that describe a clearly-delineated three branch system of government, Executive, Legislative and Judicial. No one branch can operate in the sphere-of-influence of any other; each branch must operate within its Constitutional mandate and not beyond.
According to Article IV, Clause 2, the Constitution is the supreme Law of the Land; it can only be changed by formal Amendment as described in Article V.
If anything in the Constitution and the Laws of the United States made in Pursuance thereof is ambiguous, or if the Constitution grants discretion in a particular matter, such matters can be litigated, and if the Supreme Court weighs in on the matter, its Opinion shall rule.
However, much of the Constitution dictates specifics, and when it does, those specifics can ONLY BE CHANGED BY AMENDMENT. For example, three Clauses of Article I, Section 8 of the Constitution contain SPECIFIC, ENUMERATED LIMITS. The limits in these three Clauses have never been amended:
The limit in Clause 17 is: “100”:
The limit in Clause 12 is: “two”;
The limit in Clause 8 is: “one”;
All three branches of our government are by Oath bound by the Constitution according to Article IV:
“Clause 3: The Senators and Representatives before mentioned, and the Members of the several State Legislatures, and all executive and judicial Officers, both of the United States and of the several States, shall be bound by Oath or Affirmation, to support this Constitution; but no religious Test shall ever be required as a Qualification to any Office or public Trust under the United States.”
In its eBay opinion, the Supreme Court, in essence relied solely on 35 USC 283, and particular classes of inventors were discriminated against – they were denied their Constitutional right to stop commercial infringement of valid patents even after prevailing in court. The problem is that 35 USC 283 is in direct conflict with Article. I, §8, Clause 8 of our Constitution (supra).
“35 USC 283, Injunction: The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”
35 USC 283 is also in direct conflict with other patent statutes, e.g:
35 USC 271 Infringement of patent: “… (d) No patent owner … shall be denied relief … by reason of his having … refused to license or use any rights to the patent;…”.
Without the ability to stop an infringer from infringing, Article I, §8, Clause 8 becomes a compulsory licensing deal; no one in his right mind can argue that that is what the Framers intended when they signed the Patent Clause into the Supreme Law of the Land.
In its eBay Opinion, the Supremes made a serious mistake, the worst ruling in the history of patent jurisprudence.
A patent without the leverage ability to stop infringement is akin to a revolver without bullets, and it leaves far too many patent owners only one tactic in negotiating a license – bluffing.
What about this, which I posted way above, do you not comprehend?:
“As practical matter, why would bold, well heeled patent-pirate infringers (e.g., a successful software company) take a license that is offered if they can instead roll the dice in court without fear of being stopped from infringing even if they lose?”
Posted by: Just an ordinary inventor(TM) | Oct 13, 2008 at 10:01 AM
JAOI, I don’t feel biased and I think I have an open mind. Are you saying that unbiased people would not post a response to you? That’s not a good way to convince an unbiased person that your position is the correct one. I submit that I’ve told you my thinking and am asking you to tell me where I went wrong. Telling me I’m wrong doesn’t educate me.
As a practical matter, the well-heeled infringer will take a license to a patent instead of rolling the dice in court because the infringer wants to make money when all is said and done.
If the infringer wins in court, then the patentee wasn’t entitled to any money to begin with. If the infringer loses in court, the court should then order the infringer to pay monetary damages to the patentee. If the infringer does not make money after all this, then there is no incentive for the infringer to infringe. What is wrong with this analysis?
Dear nodoghere,
Re: “The Patent Clause does not give the patentee a constitutional right to stop commercial infringement of a valid patent. It gives the patentee a right to be compensated for the damage they incur due to the infringement.
…
This is why people ignore your continued posting on this ‘problem’ – you still have not explained why the difference matters.”
————————-
I truly mean no disrespect, but your comments are bassackwards. It is inconceivable to me that you could ask your questions in good faith if you have in fact read my “continued postings” on this subject. Those with an unbiased view who have agree; in fact, some of the most esteemed practitioners heartily endorse my position without reservation. I guaruntee that if you re-read read my many posting with an open mind you will you’d feel differently, or double your money back!
“you still have not explained why the difference matters.”
Again, with all due respect, if you don’t see “why the difference matters,” I fail to understand how you could even care about this subject enough to write a 392 word comment that flies in the face of reason.
What about this, which I posted way above, do you not comprehend?:
“As practical matter, why would bold, well heeled patent-pirate infringers (e.g., a successful software company) take a license that is offered if they can instead roll the dice in court without fear of being stopped from infringing even if they lose?”
“you still have not explained why the difference matters. ”
It’s easier to get a quick settlement if you have an injunction shutting down an infringer’s manufacturing line, as opposed to having to try the case in this post KSR landscape.
For individual inventors and small companies, the Ebay decision was gayer than Richard Simmons watching Brokeback Mountain.
Posted by: Just an ordinary inventor(TM) | Oct 11, 2008 at 09:55 AM
Posted by: Oliver Wendell Holmes, Jr. The Great Dissenter | Oct 11, 2008 at 11:27 AM
Posted by: Just an ordinary inventor(TM) | Oct 11, 2008 at 08:50 PM
JAOI,
I think you’re misinterpreting the phrase “exclusive right” in the Patent Clause of the Constitution. The simplest example I can think of is that when you get a patent, you don’t get the right to practice your invention, you get the right to exclude others from practicing your invention. Those are two distinct concepts, because now someone else’s patent can be used to exclude you from practicing your invention. In other words, a patent doesn’t give you the right to do anything you want with your invention, it only gives you the right to do certain things with your invention.
The Patent Clause does not give the patentee a constitutional right to stop commercial infringement of a valid patent. It gives the patentee a right to be compensated for the damage they incur due to the infringement.
35 USC 271(d) does not support your claim that a patentee should always be able to get an injunction. This section protects the patentee from claims of patent misuse and allows them to continue to receive the relief that they should get from the court.
Relief can be monetary, if money can remedy any damages to the patentee. I still don’t understand why this is a problem for you – as long as the patentee gets his money in the end, why does it matter whether the money is paid directly to the patentee via direct sales to customers or via indirect payment from the infringer?
This is why people ignore your continued posting on this “problem” – you still have not explained why the difference matters. Also, you have not explained where the US Supreme Court’s reasoning was wrong. I understand the Supreme Court’s reasoning to be basically, “injunctions are not used just in patents, and patents do not appear to be especially different from these other fields in which we grant injunctions, thus the test for granting injunctions should not be different.” Tell us (me) why this reasoning is wrong. You’ll have to be darned convincing though. Please remember that where constitutional interpretation is concerned, the Supreme Court’s interpretation wins.
“The m0r0ns who don’t really have anything and are stubborn just for the sake of it (maybe 20%?) are the ones who make my job hard. ”
But aren’t those easy final rejections and RCE’s???
“The m0r0ns who don’t really have anything and are stubborn just for the sake of it (maybe 20%?) are the ones who make my job hard. ”
I hope you understand that attorneys don’t get to make all strategic decisions. Sometimes, the client thinks they have something, and the real search (ie. the one the examiner performs after I file the first RCE) reveals they have nothing. In that situation, some clients will want us to keep fighting and try to get them something. Sometimes it works and I get a narrow claim set allowed. Sometimes it doesn’t.
Max:
Patents were also given for importing goods as it was recognized that without some chance at a big reward, capitalists won’t fund a risky scheme. Patents allowed an investor to fail in many investments, but still to make an overall profit in the few that succeeded.
Nowadays when importing goods is relatively risk-free, patents are given only on technical innovation.
As JAOI explains, and his opponents refuse to admit, a patent is the only way to make investment in novel ideas worthwhile. Fewer and weaker patents necessarily lead to fewer investments and consolidation of power with larger organizations.
anonymous examiner: productive and useful suggestions. Let’s hope there will be more Examiners like you.
A Statement: There was only ever one patent system, invented in Venice in the Middle Ages. It is still the same single simple concept, all over the world. In return for an enabling disclosure up front, the State grants a time-limited right to exclude (as JAOI quite reasonably demands) but only for claims that survive attacks on validity, in a competent and unbiassed jurisdiction (as 6K wants).
Now to some Questions: 1) What does “benchmarking” mean? 2) Does the concept have any merit? 3) Did the disparate countries of Europe use it, back in the 1960’s, when putting together their shared harmonized European Patent Convention? 4) In the 30 years that the EPC has been up and running, where has it failed? 5) When it was revised, in 2000, what were the defects that needed to be corrected (can you find any?) 6) Should the USA, bent on reforming its patent law, first perform a benchmarking exercise? and 7) If USPTO Examiners are not qualified to perform any such exercise, who should?
(like an LCD instead of CRT)”
problem is there are limitations that can be added, especially as to the structural makeup of a device, that may not be in the top 10 and are more mickey mouse than lcd/crt.
“because I always use the best art. ”
Lol. FYI Caturday already ended. ¿Usted tiene CP?
e6k, I appreciate you sentiments. I do think that if the closest references are really the best and the applicant has amended around them, then just allow the case. The applicant would still have to put something in independent form that is not obvious in light of the best references (which we have already found). That would not be a Mickey Mouse limitation (like an LCD instead of CRT). I think that done right it, it could be a win-win situation all around. The longer I stay at the Office, the moar I realize that the applicants who really have something realize it and work with me to get it allowed. Most of those cases reach allowance. The m0r0ns who don’t really have anything and are stubborn just for the sake of it (maybe 20%?) are the ones who make my job hard. The ones in between go abandoned without too much gnashing of teeth. Also, I don’t send too many cases up to the Board. I’m pretty good at getting the allowable ones to narrow down their claims so the SPE will let me allow it because I always use the best art. If I get an appeal brief, I won’t likely open it back up–examiner’s answer or allowance. Anyway, it’s late and I need to get back to trolling the Intertubez. inb4 caturday.
anon, it doesn’t look like you were in before me. Also, I’d love for simplified prosecution in order to just make my job easier. Problem is, once an attorney has seen all 10 refs and knows that no more can be added they’ll just add in a mickey mouse limitation that has to do with some minute part of the structure or something of that sort and the examiner won’t be able to say, no, that’s nothing special either. Boils down to if you limit the number of refs then they’re too easy to get around. Way too easy.
Anonymous Examiner here. If I had my way, the statute would be changed so that the applicants and practicioners could characterize the invention without losing equivalents or getting accused of malpractice or inequitable conduct. The examiner would find the closest references on the first search (5 to 10, at the very most). Prosecution would remain limited to those references. The applicant would have three or four amendments to put something in independent form not obvious in light of the references. This would eliminate legion rejections using any conceivable combination of prior art. If they couldn’t do it in that many amendments, they could send in an appeal brief. Lower pendency, higher allowance rate, higher presumption of validity (as closest refs. have been amended around), ?????, PROFIT!!! inb4 e6k
The writing has been on the wall for a long time.
Ebay and New London just made the writing bold.
The patent system is a complete joke, and everybody knows it.
The U.S.S.A. financial system is now Banana-Republic level, and the Patent System is rapidly following.
It’s a game – play the game and make your money. Play the game as best you can so that you zealously represent your client.
But don’t make the mistake of giving a sh-t; there’s nothing there.
Most Patent Attorneys, however, are too self-important to think that they are simply pawns in a silly game.
e6k,
Re: “Jaoi, I understand your position”
If you actually understood my eBay argument, you’d feel differently, guarunteed!, or double your money back!
Ҥ283. Injunction
The several courts having jurisdiction of cases under this title [35 USC § §1 et seq.] may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”
Jaoi, I understand your position that up until Ebay it was “understood” from the prior case law that injunctions would be mandatory. However, the SC was right in it’s interpretation and ruling. “exclusive rights” does not even imply that the right of injunction is tacked on automatically. That is why 283 had to be written. To ensure that injunction even could be performed by the courts. And as you notice, 283 says quite clearly MAY, and not SHALL. If congress intends for injunctions to be mandatory then it can change MAY to SHALL and eliminate the stuff about in accordance with the principles of equity.
I have no opinion on whether or not this “should” be done.
LOL I take that back, of course it shouldn’t be done. One man who is entitled to a huge windfall from other’s manufacturing work being “entitled” to shut down the entire production line (a production line which presumably goes to the public, as well as private, benefit).
If you get a good patent JAOI, and you assert it properly, you can still fleece MS etc. just fine.
Really, why are your panties in a bunch?
I’ll tell you why I believe they are. Because you have low confidence in your patent for one reason or another. Either you didn’t enable it, there is prior art against it (found or not atm), you committed IC, blah blah reasons reasons reasons. In other words, your patent likely isn’t “good” in the first place.
If it is, and you feel so strongly about having been denied this injunctive relief in a case of yours then be a man and appeal to the SC. Or, if you find yourself convinced that eBay was correct under current law (including the const.) then lobby congress.
Dear Night Writer Patent Attorney — your analogy makes sense. Thanks for writing.
“Since when has anyone ever gotten a search “right”? Much less the “first” time?”
European examiners seem to get it a whole lot more ‘right’ on the first shot than US examiners ever do. Why is it that only the best US examiners can search on par with your average run of the mill EPO examiner?
JAOI is correct!, and if practitioners and other interested parties don’t take the time to confirm his eBay argument for yourself, you are not being responsible to the lawfully mandated Patent Statutes at Large.
This is axiomatic: Absent lawful exceptions found in the Constitution, compulsory patent licensing under any guise is inconsistent with the Patent Clause of our Constitution and 35 USC 271:
Article I, §8, Clause 8: “The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”
35 USC 271 Infringement of patent: “… (d) No patent owner … shall be denied relief … by reason of his having … refused to license or use any rights to the patent;…”.
link to en.wikipedia.org.
link to en.wikipedia.org
In response to various prior suggestions to the PTO to [rationally] simply raise application fees for applications with excessive numbers of claims, in some proportion to their increased examination costs, PTO representatives insisted that they could not do that without legislation, but instead have insisted that they COULD by mere rule-making [still in litigation], impose de facto* ABSOLUTE limits on the number of claims filed!
*Offering only de facto unusable alternatives.
What’s gone wrong in the IP world is a microcosm of what’s gone wrong in America.
When a government agency so blatantly betrays the expectations of those to which it is responsible, what is the public to think? The primary reason for the existence of the PTO is to administer the patent statues enacted by Congress in accord with Article. I, §8, Clause 8 of our Constitution:
“The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”
What has been happening in America undermines faith in our democracy – adding to a feeling that there is nothing we citizens can do to forestall special interests from asserting influence or control over government agencies. But something can be done: Sue the bastards, use judicial means for our democracy to preserve and re-constitute our Constitution.
Government agencies must carry out their duties as the law mandates. Where an executive agency – and not our elected representatives – takes upon itself the role of lawmaker to foist its biased view of what a public policy ought to be, such laws must be opposed, and reversed if there are “blown past” our legislature.
And when our Supreme Court strays from Constitutional mandates (e.g., in its eBay opinion), unless it corrects its own mistake, Congress should legislate corrective statutes as needed. We in the IP community know that, as constituted in recent years, our Supreme Court is out of their element when it comes to patent jurisprudence.
Obviously, the Supremes’ unlawful eBay Opinion was the worst thing that ever happened in U.S. patent history, at least for America’s independent, self-employed inventors, research universities and many others including business men and businesses (e.g., Edison wannabes and IBM). As practical matter, why would bold, well heeled patent-pirate infringers (e.g., a successful software company) take a license that is offered if they can instead roll the dice in court without fear of being stopped from infringing even if they lose?
In its eBay opinion, the Supreme Court, in essence relying solely on 35 USC 283, particular classes of inventors were discriminated against – they were denied their Constitutional right to stop commercial infringement of valid patents even after prevailing in court. That cannot be right – it is outrageous!, because 35 USC 283 is in direct conflict with Article. I, §8, Clause 8 of our Constitution, supra.
“35 USC 283, Injunction: The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”
35 USC 283 is also in direct conflict with other patent statutes, e.g:
“35 USC 271 Infringement of patent: … (d) NO PATENT OWNER otherwise entitled to relief for infringement or contributory infringement of a PATENT SHALL BE DENIED RELIEF or deemed guilty of misuse or illegal extension of the patent right BY REASON OF HIS HAVING done one or more of the following: … (4) REFUSED TO LICENSE OR USE ANY RIGHTS TO THE PATENT;” (emphasis added).
This is off topic, but has anyone else considered the analogy between the SEC deregulating the financial industry and the current complete disaster, and Bush and Dudas and Moore wanting to rid the world of patents?
With the financial industry Bush (Paulson) demononstrated that he doesn’t understand the financial industry.
Why should we think that Bush’s gang is going to get any better results by deregulating innovation by ridding the world of patents?
Raise Examiner Salaries wrote: “by getting the prior art search right the first time. ”
e6k wrote: Since when has anyone ever gotten a search “right”? Much less the “first” time?
People get the search right when they spend considerably more time on the search than the average examiner does. A proper search probably takes 1 – 2 weeks by a skilled engineer or two.
There is no reason for any examiner to work in VA/DC. They can and should all work from home via the hoteling program.
How has everyone in this entire thread missed D’s point in making the OP? He says: Du mb people who are arguing with 6k say that they are paying for their examination through fees. However, as has already been pointed out to them they merely pay a portion of the cost of examination. Therefore, since by their own logic paying the full amount for their examination through examination fees would be proper then the filing fees should be raised until examination costs are taken care of.
So far as I can tell that was D’s only point.
“and by getting the prior art search right the first time. ”
Since when has anyone ever gotten a search “right”? Much less the “first” time?
“What we don’t want is a lot of newbie engineers who don’t speak English (or barely speak English) located in remote parts of the country where they are barely supervised. ”
It’s true, we might take over the world! Watch out if leet speaking engineers go unsupervised in the boon docks! We will emerge with death rays and a unification government overthrow plan!
In addition to having the requisite technical skills/education, the PTO should make sure that their examiners speak English well. Maybe the examiners who are not fluent should be required to attend a remedial class (that is a serious suggestion).
My point with raising salaries is to keep the examiners in the PTO after they are trained. An obvious option for many is to go work at a law firm. Presumably, any law firm can pay a lot more than what the PTO is paying. A good examiner would be easy for a firm to spot. Ditto for the bad ones. Naturally, the law firms pick the good ones, and leave the bad ones behind. By raising salaries, perhaps that flow of talent would slow.
What we don’t want is a lot of newbie engineers who don’t speak English (or barely speak English) located in remote parts of the country where they are barely supervised. As said above, the patent office can’t even manage them in one location.
Does anyone really think that doubling the filing fee is going to prevent anyone from filing patent applications?
Of course, any meaningful change would require new management. (That goes for the presidency too.)
You want the PTO to manage and coordinate the operations and logistics of multiple offices? They can’t manage a single office.
The pay for Dallas and Denver offices would be lower than those for a DC area office because of the lower costs of living.
Dallas, TX and Denver, CO are hardly second tier, but are significantly lower in cost. You don’t have to send people to a corn field in Iowa to have a substantially lower cost of living.
I agree with Left Coast. Most young engineers and scientists would rather work in an mid-size to large urban area, which are unlikely to be low cost areas.
Many examiners have spouses working in the D.C. area, have friends and/or family living in the area and/or enjoy the cultural/educational and other opportunities which D.C. provides. Would they flock to second tier cities? I don’t think so.
“I doubt if the federal government would allow for the same pay for examiners in low cost of living areas.”
I think they mentioned something about satellite offices as part of a long-term plan. But I don’t recall whether they mentioned the pay issue. I wouldn’t be surprised if the federal government decreased pay for the satellite offices because many examiners would flock to the satellite offices if the pay were the same.
I would assume that most young engineers/scientists looking for a job would rather live in D.C. than in a “low cost area”.
I doubt if the federal government would allow for the same pay for examiners in low cost of living areas.
“I am actually a big fan of raising fees and then raising salaries for the examiners and/or hiring more examiners. The quality of the average examiner is horrible — at least in the EE/CS arts. By raising salaries, I would hope that the PTO could attract better examiners — perhaps even native English speakers. Better examiners are likely to decrease pendency by reducing the number of defective office actions (like the ones that simply quote your claim language and only vaguely refer to the cited reference) and by getting the prior art search right the first time. Also, higher fees could enable the PTO to hire more examiners, which would also reduce pendency. If fees were to double, say from roughly $500 to $1000, all of my small clients wouldn’t care as long as it got them a patent faster. Usually it is my fees that scare away people who are not serious.”
The problem isn’t actually the PTO salaries — the problem is the patent office being in DC. Open satellite offices in low cost of living areas, pay the same, and the job would be much more attractive.
The PTO salaries are really not bad at all for starting engineering grads.
Is it the salary level or the “count” system which is to blame for poor examiner retention?
I am actually a big fan of raising fees and then raising salaries for the examiners and/or hiring more examiners. The quality of the average examiner is horrible — at least in the EE/CS arts. By raising salaries, I would hope that the PTO could attract better examiners — perhaps even native English speakers. Better examiners are likely to decrease pendency by reducing the number of defective office actions (like the ones that simply quote your claim language and only vaguely refer to the cited reference) and by getting the prior art search right the first time. Also, higher fees could enable the PTO to hire more examiners, which would also reduce pendency. If fees were to double, say from roughly $500 to $1000, all of my small clients wouldn’t care as long as it got them a patent faster. Usually it is my fees that scare away people who are not serious.
“Lower costs up front and higher costs on the back end serves the USPTO’s purpose very well.”
It serves to increase the number of filings and swell the backlog because it encourages might-as-well filings that, under the current rules, must be examined.
The USPTO should at least have some sort of deferred examination process with higher examination fees that aren’t due until examination is requested. It would let applicants ascertain “the commercial value” of their ideas without clogging the system.
I agree. Lower costs up front and higher costs on the back end serves the USPTO’s purpose very well. They get you in the door. Once you’ve made your disclosure, the public has received its benefit from the quid pro quo. The high maintenance costs are a win/win for the USPTO. They either get to recover their examination costs (and then some), or else the disclosure enters the public domain.
Quite frankly, I think this model serves well for smaller law firms trying to get ambitious – yet cost-conscious – clients in the door. Charge a minimal amount for provisionals with the hope you make it up during prosecution.
Most applicants (though I am not speaking for biotech applicants) do not know the commercial value of their inventions when they file their applications, and probably do not know until their first maintenance fee is due. So the present system of relatively high maintenance fees serves the patent and invention promotion system well IMHO.
No and yes. No – as reflected in the text that you omitted from your quote. Yes – as reflected in Dennis’ statement concerning cost allocation and my statement concerning the subsidy of filing/search/examination fees.
The purpose is not cost recovery. The use is cost recovery (and contribution to general revenues).
“The purpose of the USPTO is not to raise revenue, but to encourage inventors to disclose technology to the public and administer the process of seeking patents….It is entirely logical that the maintenance fee surplus be directed to encouraging the disclosure of more technology, by subsidizing the disclosure stage of obtaining a patent, instead of being directed into the general treasury.”
Are you suggesting that part of the purpose of maintenance fees is cost recovery?
MaxDrei,
No strong thoughts one way or the other. In the U.S, the Applicant has to pay the fee for the search when filing the non-provisional application (or very shortly thereafter), so that aspect would not change. The pessimist in me thinks that USPTO’s first office action is often only slightly more detailed than a search report, so that it’s unlikely that the USPTO could perform the work in 18 months (in most art groups) given its current political direction and staffing problems.
Mr Jaglowski, do you have any thoughts about the value of a system that encourages disclosures of contributions to the art, 18 months after their PTO priority filing date, with a PTO patentability search report appended, so that readers of all those A publications can form a view as to the novelty of that disclosure. There are two serious consequences namely 1) Applicant has to pay at the outset the costs of the PTO search and 2) the PTO is forced to get the filings perfectly classified under its subject matter classification system (as a by-product of doing its search), BEFORE it A publishes the disclosures, such that searches of the A publications (to see what’s in the pipeline) for both clearance and information dissemination, are a reasonable and economical proposition. Would this be useful to Promote the Progress? It is of course what Europe has been doing, since 1978.
“Although the PTO is fully funded by the fees it charges, a good percentage of current examination costs are paid through maintenance fees.”
Which in addition to suggesting that filing/search/examination fees should be raised, also suggests that maintenance fees should be lowered, with current maintenance fees wildly exceeding the cost of administering the files of issued and abandoned applications. A “cost recovery” justification works both ways.
The purpose of the USPTO is not to raise revenue, but to encourage inventors to disclose technology to the public and administer the process of seeking patents. I understand that maintenance fees serve as a ‘controlled burn’ of the patent underbrush, encouraging those holding unproductive patent rights to relinquish them so that others might put them to better use, but the fees sufficient to achieve that goal are inherently greater than the costs of administering issued patents. It is entirely logical that the maintenance fee surplus be directed to encouraging the disclosure of more technology, by subsidizing the disclosure stage of obtaining a patent, instead of being directed into the general treasury.
The discussion about applicant behavior related to filing decisions. Maintenance fees are too far removed to meaningfully affect filing decisions.