Patently-O Bits and Bytes No. 78

  • FTC Hearings on the “evolving IP marketplace” http://www.ftc.gov/opa/2008/11/ipmarketplace.shtm. December 5. How it will play out: In the next year, the FTC will likely publish a new report on the state of patent law in the US. That report will serve as the basis for any patent reform measures in 2010.
  • Interesting article by Jim Klaiber in IP Today. He writes about a recent nonprecedential CAFC that seemingly expanded the limitations on claim amendments during reexamination. His piece is titled: Reexamination Amendments Made for an Improper Purpose – A New Basis For Invalidity Under 35 U.S.C. § 305.
  • I am now on twitter: http://twitter.com/patentlyo. tweet tweet.
  • The Federal District Courts in New Jersey are contemplating new local patent rules. IPO offers its “six principles” for local patent rules:
    • (1) early identification and mutual mandatory disclosure of essential infringement and validity-related discovery and consideration of staying non-essential discovery until after a claim construction decision is issued in a case;
    • (2) early disclosure and appropriate staging of detailed infringement and invalidity contentions;
    • (3) early supplementation of detailed infringement and invalidity contentions supported by identification of specific evidence produced in the early mandatory disclosures;
    • (4) scheduling any claim construction procedure early in the case but after detailed contentions have been exchanged;
    • (5) identification of claim limitations most important to the outcome of the case; and
    • (6) consideration of dispositive motions as early as appropriate to narrow issues or resolve cases without non-essential discovery.
  • TIME: Best Inventions of 2008
  • Wish List 2008: For the past few years, I have assembled a top-ten list of holiday gifts for patent attorneys and agents. I have heard from several spouses that actually used the list. So – let Santa’s helper (me) know if there are any particular machines or articles that should make the list.

18 thoughts on “Patently-O Bits and Bytes No. 78

  1. 18

    Malcolm’s comment still applies whether “good” ones means commercial interest or level of inventiveness (or any other criteria)…

    …IF the name of the game is to reduce the number of patent applications.

    The debate on such a reduction in its own right (regardless of “quality” — examination or application — or “spurring innovation”) has not been settled.

    Of course, any such reduction in numbers will bring its own unintended consequences. We can “Hundt” this and drop application by 90%, triple the USPTO budget and have the USPTO be just like any other governmental body – why should the Office be self-supporting in the first place?

  2. 17

    “That’s interesting.

    /Dudas off”

    When I say the “good” ones, I mean the ones they have the most commercial interest in.

  3. 16

    “Obtaining a patent in europe is quite expensive as opposed to in the US. The same goes for your attorneys — stop charging so darn much. My clients would stop limiting their european applications to the ‘good’ ones if this were to happen.”

    That’s interesting.

    /Dudas off

  4. 15

    Point taken, Lowly. Prices are at the level they are because it’s quite difficult to train engineers and scientists at the cutting edge of technology to examine and prosecute to reasonable levels of quality, in three languages, not their native tongue. But the market takes care of temporary failures of supply and demand. Prices for patent work in Europe will surely come down, as a result of less apps or less quality, or more quadrilingual engineers and scientists coming in to the patents game (perhaps on hearing how lucrative it is). Alternatively, prices will stay high, because the market is willing to pay.

  5. 14

    “Just as I thought. Lowly do please have a go at the EPO too, won’t you? Just at the moment we need something special, to help the gaiety of nations, and to keep our people in work, now that the grant stage translation gravy train in France and Germany has run into the buffers.”

    Max, that was a joke ;)

    I deal with plenty of applications before the EPO either via the PCT or indirectly through EPO attorneys. There are many things I like better about your patent system, the most important of which are your examiners. I feel like they approach their job the way I approach mine — with a sense of professionalism and a sincere desire to do the best work they can. I also like the relative predictability of inventive step over the US’s system of obviousness.

    If the EPO wants more work, my suggestion is to stop charging such outrageous prices. Obtaining a patent in europe is quite expensive as opposed to in the US. The same goes for your attorneys — stop charging so darn much. My clients would stop limiting their european applications to the ‘good’ ones if this were to happen.

  6. 13

    Just as I thought. Lowly do please have a go at the EPO too, won’t you? Just at the moment we need something special, to help the gaiety of nations, and to keep our people in work, now that the grant stage translation gravy train in France and Germany has run into the buffers.

  7. 11

    Lowly, would that be like (hat tip to Robin Jacob) a claim directed to an (absolutely novel) six and a half inch dinner plate (6″ plates and 7″ plates being in the prior art)? Not old, then, no TSM and so definitely not obvious.

  8. 10

    “Dennis, as far as Wish List items, I would like 6000 “Allowance” stamps.

    Then I can send one to each Examiner, since all the Examiners seem to have lost theirs . . .”

    Maybe I’m just lucky, because I practice in a bunch of different technical fields, but I get applications allowed all the time. Sometimes, it’s really easy. Sometimes, I end up filing 2 RCE’s while the examiner and I essentially negotiate claim language, then I get the case allowed. Sometimes, I win an appeal or pre-appeal and the examiner allows the case. Sometimes, I lose an appeal, go back to the examiner with my tail between my legs, narrow the crap out of the claims, then get the case allowed.

    It takes a lot longer than it used to, but you can still get applications allowed all day long as long as you have a point of absolute novelty (e.g. the examiner cannot find anything in any reference to meet that claim feature).

  9. 9

    Buy “C”!, bound to hop up Monday, betcha, betttcha (no, not the carrot futures).

  10. 8

    Back to the subject here, I would be interested in why we need a new judicially-invented attack on reexaminations? [Like the strange In re Portola CAFC panel interpretation of that statute that had to be corrected with legislation]. If a claim is being amended by reexamination so that products found non-infringing by a Markman claim interpretation (or related products) would now be infringed, that is an already prohibited claim broadening. Why do we need a litigation-creating new doctrine for that?

  11. 7

    Holiday Gifts:

    A DVD of “Jay and Silent Bob Strike Back”. Personally, I thought it was worth it for Silent Bob’s monologue on rights of publicity alone. But then, I like Kevin Smith’s movies.

    A Jim Watson bobblehead doll. No, really:
    link to thednastore.com

    Plush microbes:
    link to giantmicrobes.com
    Where else can you get a soft, cuddly, purple, T4 bacteriophage?

    Actually, what I’d like is a really nice Ganesh (The Remover of Obstacles) statue. All the ones I’ve seen in a U.S. are cheap plastic crap. Anyone know where my spouse can get one?

  12. 6

    How about a Mark Chandler doll.
    When you pull the string it cries and says “Poor us – for a $100 billion technology company, we get sued for infringement MUCH too often.”

  13. 5

    Here are my suggestions for the Wish List 2008. I made a little Amazon wish list for handy reference.

    “American Nerd: The Story of My People”
    by Benjamin Nugent

    “How to Get Sued: An Instructional Guide”
    by J. Craig Williams

    “It’s All Too Much: An Easy Plan for Living a Richer Life with Less Stuff” by Peter Walsh

    “Predictably Irrational: The Hidden Forces That Shape Our Decisions”
    by Dan Ariely

    And the DIY Teplephone Bug kit, the manufacturer says “Educational Kit NOT intended for illegal use.” :)

    Links for these on the Amazon Patent Attorney Wish List link to amazon.com

  14. 3

    Since you asked…a PTO leadership (I know; that’s an oxymoron) dartboard…and a handful of matching scarlet letters…for all the harm they’ve inflicted on and caused to the US patent system (though mandatory cowbells would I suppose suffice).

  15. 2

    And I’d like stamps for all software and business method examiners that read “Rejected under 35 U.S.C. 101 as drawn to non-statutory subject matter” once the Supremes get ahold of Bilski.

  16. 1

    Dennis, as far as Wish List items, I would like 6000 “Allowance” stamps.

    Then I can send one to each Examiner, since all the Examiners seem to have lost theirs . . .

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