Challenging the Strong Presumption of Patent Validity

One of the next major legal challenges to patent rights will be against the strong presumption of validity associated with the patent grant. Section 282 of the patent act says only that a patent and its claims "shall be presumed valid." Under longstanding doctrine, this presumption can only be overcome with clear and convincing evidence of invalidity. The challenge to this presumption is most likely on two fronts: (1) expanded post-grant review and (2) court challenges to the weight of the presumption.

Expanded Post Grant Review: The PTO uses the lower preponderance (more likely than not) standard when refusing to grant patent rights, and expanded post-grant oppositions will likely allow would-be defendants to challenge patents at the lower standard.

Challenging the Weight of the Presumption: The greater change would come, however, if the Supreme Court takes a case on point. Since the 1952 Supreme Court has not definitively weighed-in on the the level of proof necessary to overcome the statutory presumption of validity, and the Court's Radio Corp (1934) opinion arguably sums up the pre-unification state of the law: "The force of that presumption has found varying expression in this and other courts." Of course, the unified Federal Circuit cleared the air by firmly establishing the clear and convincing standard as the standard. In a 2004 article, Mark Janis reviews the history of the presumption – finding that the clear and convincing standard was already the majority rule prior to unification, but that the Federal Circuit made the standard "meaningful once again." His message: "there is no strict, inevitable correlation between the words of the evidentiary standard and the overlying message delivered by the presumption of validity."

More recently, in KSR the Supreme Court all but suggested one potential petition question: "whether the failure to disclose [relevant prior art] during prosecution … voids the presumption of validity given to issued patents." A more likely focus may be on reducing strength of the presumption over prior art that was not considered during prosecution.

Question: How would patent practice change if the strong presumption of validity was only applicable over prior art actually considered during prosecution?

Notes:

  • I do not believe that the presumption of validity should be reduced. However, I wrote this post to let folks know that it is on the horizon and that a change is somewhat likely during the life of any currently pending patent application.
  • Mark Janis, Reforming Patent Validity Litigation: The "Dubious Preponderance", 19 Berkeley Tech. L.J. 923 (2004).
  • This post was prompted by an e-mail amongst IP law professors with special input from Mark Lemley, Arti Rai, David Hricik, Howard Skaist, Josh Sarnoff and Tom Field. See also Mark A. Lemley and Douglas Lichtman, Rethinking Patent Law's Presumption of Validity, 60 Stanford Law Review 45 (2007)(suggesting gold-plated patents).

78 thoughts on “Challenging the Strong Presumption of Patent Validity

  1. 78

    If memory serves from 20-plus years ago (when I briefly looked into this), the policy justification for the clear-and-convincing-evidence standard was more along the lines of res judicata, arising when the accused infringer claimed to have been the first inventor, but had previously lost what we would now call an interference proceeding on that point.

    I seem to remember there being one or two 19th century Supreme Court cases involving competing claims to being the first inventor. The Patent Office had previously ruled, in inter partes proceedings, that Party A, not Party B, had been the first to invent.

    IIRC, the Supreme Court said that in the subsequent infringement proceedings, Party B (now the accused infringer) would have to show prior inventorship practically beyond a reasonable doubt, given the Patent Office’s previous inter partes ruling.

    But as I say, it’s been many years since I looked at this, and I could be remembering incorrectly.

  2. 77

    Looks like we may indeed get this patent system under control in my lifetime. Personally I’m for the gold plated system myself. Maybe limit IDS’s to for example, 50 references as well as MAYBE an additional 50 with an explanation of those references for standard cases, and then let the applicant buy the upgraded package if he wants to, at any time during prosecution, to be able to file all the refs he wants to. At the same time, tie the presumption to the ref’s of record and in the search.

  3. 76

    Anyone who has worked for 5 minutes on clearing products has run up against the problem patent with the horribly flawed prosecution history that resulted in art cited on the face of the issued patent that clearly anticipates or renders obvious one or more allowed claims. Tpypically, however, I have found that the particular art in question was never used by the Examiner in a rejection of the claims. How fortunate, then, that the law for raising a substantial new question of patentability in requesting reexam was changed not long ago to permit reexam in just this circumstance.

    But then there is the case of the law of obviousness changing significantly after patents have issued. Does a patent really deserve a presumption of validity over cited art actually used in a rejection by the Examiner that was overcome by a pre-KSR lack of TSM argument? Is there really a lack of a significant new question of patentability, and thus no grounds for reexam?

    On the otehr hand, don’t those circumstances make it more likely that the defendant would succeed in meeting the burden required to challenge the patent at trial. And aren’t attorneys well equipped to take these and similar issues into consideration when negotiating cross-licensing agreements, advising clients whether to go to trial, and deciding whether to take cases on contingency?

    I tend to err on the side of avoiding unduly burdening the USPTO or the Courts with the problem of having to essentially reexamine these patents. As others have pointed out, even though number of suits filed have increased over the years, only about 100 cases actually go to trial each year, and that number has remained steady for decades. While it might be true that removing the presumption of validity would likely result in less suits filed, I expect that the courts would not welcome the increased number of cases that would likely go to trial. Similarly, further lifting the restrictions on reexam shifts the expanse of figuring out these issues from patentees/industry to the tax payers.

    So I say the system is not as broken as people make it out to be, and the proposed changes are designed primarily to shift expense from patentees/industry to government. I don’t think that doing so is a good idea, because it is likely to result in less patents filed. The number of patents filed and the numebr of suits filed SHOULD go up as the population explodes. More good ideas should result as more people are around to have those ideas, and we should continue to encourage disclosure of those ideas through a strong patent system that includes things like presumption of validity.

  4. 75

    Cowboy,

    I totally agree with the statement that PTO patentability decisions should receive deference from the courts. Patentability is expressly set forth in the enabling statute as an area of PTO expertise. Agency fact-finding in an area of agency expertise, if clearly supported by substantial evidence (even less than a preponderance of evidence ?), should not be disturbed by the courts … ?

    I was just arguing over what sort of property a patent is, and – more important – whether a change in the presumption of validity would significantly impact the business decisions of people who invest in patents.

    The Germans and many other foreign jurisdictions have utility model registrations, which are not examined, and grant no presumption of anything. Investors in those other jurisdictions get to choose patent or utility model protections, or both. Sadly, we don’t have utility model protection in the U.S. (although we have consistently tried to warp design patents in that direction).

    I submit that a reduced burden for overcoming the presumption of validity probably would discourage patent filings and transactions related to innovations better suited to utility model registration.

    I further submit that such discouragement would:
    * enhance competition among practicing entities;
    * redirect investment from litigation or incremental improvements to more substantive innovations; and
    * permit more effective administrative review of those innovations for which patent protection was sought.
    Overall, as a matter of policy, I favor some slight reduction in the threshold for overcoming the validity presumption.

    Personally, however, I’d like to see that standard jacked up as high as possible so that more clients have a business justification to seek my services (or yours).

  5. 74

    I agree generally. If the PTO system is issuing invalid patents, change the PTO system.

    For some reason PTO management seems to be very reluctant to change the count system. My guess is that doing so would require renegotiating with the union, and they don’t want to have to do that for fear that the outcome might be even worse. So, in this land where laws come from the governed, who delegate that power to Congress, who delegates to the Director of the PTO, ther law is really made by the union!

    Unions of government employees, in my view, are a lousy idea, because they can interfere with the will of the people, who are the sovereign.

  6. 73

    Lowregnumber,

    Don’t buy into the foregone conclusion that presumption of validity will change. The two avenues presented by Professor Crouch each have their logical constraints that may foreclose the issue.

    I will admit that the post does invigorate discussion of the (proposed?) change, but this is another case where tweaking the Law will have dire (unforeseen? Ignored?) consequences. On the IP Watchdog site,
    link to ipwatchdog.com
    in conjunction with a discussion on Inequitable Conduct, the thread migrated to discussing the presumption of validity. A proponent of abolishing the presumption rested his eagerness that actual examination processes yielded patents that did not meet the requirements of the Law. I posited that he was conflating two issues, and that the discussion should be based on the assumption that a granted patent had or should have the legally mandated presumption of validity. Whether or not the Office seemingly cannot fully apply the Law at their current hands (Lord above we give the Office more power to create their own Law…) in the application process is quite a separate problem and should NOT be the basis for changes in Law for either Inequitable Conduct or Presumption of Validity. It seems that the presidential mandate of presidential executive orders has been lost in the rush to change patent law (for, I dare say , the purpose of undisclosed agendas). I have even read postings where supposed examiners say it is physically impossible to even read the entire application. Yet, this admission does not get picked up or investigated by the Patent Professorial community, who would rather dabble directly in law changes – I guess the administrative workings are just too mundane to be concerned with.

    So much noise is created to obfuscate what clearly needs to be the primary focus. If the count system and allocation of hours to process a patent does not yield a patent that meets the requirements of the Law, the supporting system MUST be changed. Why is everyone so eager to burn down the house for a piece of toast?

  7. 72

    Max, my experience in the USA indicates that foreign patent owners rarely enforce their US patents — perhaps in part because they settle for such narrow claims just to say they have a patent.

    But, as you say, we need to take globalization into account. We in the USA are not competitive on labor costs, our environmental laws make us uncompetitive in raw materials, so we have little left to be competitive in but our brainpower. If we make it too easy to copy the product of our brainpower, we have nothing left. That probably holds true for Europe, but then as we agree, the folks there are happy to supplant true competitiveness with state subisdies. Oh, and I don’t like our farm subsidies, either, to respond to you point about them.

  8. 71

    Cowboy, I don’t need to “take action” on agricultural subsidies because, others are doing it perfectly well without me. Negotiators from the EU and the US both say (and have been doing so now for donkeys years) “You cut your subsidies, and we’ll cut ours” while the 3rd world looks on. In the USA you hear about the subsidies in Europe while we over here read about those in your country. My point about the EPC/EPO is that 50% of its applications originate outside the EU, and 50% within. Its getting to be the same in your country. So, do you subsidise patent owners? Or maybe best not? Which was the number one PCT filer in 2008? Answer: Huawei. I’ll give you one guess what its nationality is.

  9. 70

    A modest proposal:Presumption applies only to cited art. Citation requires at least brief explanation of relevant features of the art, so no mass citations. No obligation to search. Abolish “inequitable conduct” doctrine. If discovery shows that the applicant deliberately withheld known art, (a) the applicant sacrificed the presumption and (b) the act of withholding can be asseted as evidence that the art is unfavorable to patentability. Cuts litigation costs and prosecution costs, while encouraging submission of the really pertinent art. Why not link any change in the presumption to abolition of the inequitable conduct doctrine?

  10. 69

    “anomalies no longer deliver competitive advantage, state subsidies get exposed for what they are, and only the fittest survive.”

    Max, I hope you are taking effective action to have the EC rescind its agricultural subsidies, since I agree with you that they are an abomination. But the French farmers sure do seem to prosper and therefore sure do like the subsidies.

    Back to your analogy, though, to say that features of one country’s law that differ from the EU standard do not deliver a competitive advantage is simply whacky. The Chinese have a great competitive advantage arising from their neat total disrespect of patents.

  11. 68

    Delighted to hear at least one law review note would be dedicated to preserving the presumption of validity …

    I was beginning to think that law review authors decided to wink, wink ;) ;) ;) ignore any argument in favor of upholding the validity of a patent.

    There seems to be a surprising dearth of these arguments, or is it just me?

  12. 67

    Max: “In a globalised world, anomalies no longer deliver competitive advantage, state subsidies get exposed for what they are, and only the fittest survive.”

    Rubbish!

    Mere rhetoric.

    More sweeping generalizations that lack content.

  13. 66

    Hey Luke, thanks for that. You raise a good point, that an opposition process is needed, for the cases which to a competitor of the Applicant are “manifestly unpatentable”. But these are cases that a technically specialised, expert and conscientious PTO Examiner has allowed, right? How can that be? Does the Opponent need to find unconsidered art, in order to get its “manifestly unpatentable” case up and running? I suspect not.

    This all goes to show that a PTO Examiner, no matter how good, is no substitute for objections to validity that are assembled by a competitor, that is to say, a party “skilled in the art”.

  14. 65

    Max described:

    “But it’s a bit troubling that there is no difference between CC and Preponderance. I had always thought the difference to be crystal clear. In pre-1978 UK, an Opponent at the Patent Office had the burden of showing a claim to be “clearly” obvious while a party later petitioning the High Court to revoke a claim had only to make out, on the preponderance, that something within the metes and bounds of that claim was simply “obvious”. The logic was that the Patent Office should revoke only in clear cases while the court had the burden of revoking whenever the preponderance was achieved”.

    That’s still the case New Zealand which pretty well much retains the old UK act. Oppositions are to clear out only cases that are manifestly unpatentable; cases that could go either way must go to court.

    Cheers, Luke

  15. 64

    Simpleton Max here again. In a globalised world, anomalies no longer deliver competitive advantage, state subsidies get exposed for what they are, and only the fittest survive. What we are seeing is stress testing of some of the anomalies (DoE, C&C) in the US patent system. As somebody upthread observes, the CAFC has consigned c&c to the waste bin, along with the DoE. They were both state subsidies to patent owners. What will attract investment to start-ups is a tough but fair patent system that commands respect. That means a system in which validity can be tested rigorously, but in which valid claims get enforced swiftly, the infringer gets enjoined on the spot, and is required to pay the patent owner all her legal fees. A law that leaves patently invalid claims still enforceable is counter-productive. Courts will be more likely to baulk at enforcing patent claims, despite an instinct to enforce a grant of exclusive rights with a Government ribbon on it, because they have legitimate niggling doubts on validity. The result: owners of claims that really are valid and infringed end up frustrated, respect for the patent system dwindles, and investment in start-ups is dampened.

  16. 59

    As a guy who has had first hand experience doing high-tech start-ups, I’d argue that from a social policy standpoint, the presumption of patent validity is essential for funding.

    Most of the value of a high-tech start-up resides in the patent portfolio, and most of the time, the only way the start-up gets funded is to essentially sell rights to the portfolio in the form of stock.

    If the portfolio gets depreciated due to lack of presumed validity, then it is going to be much more difficult to fund start-ups. In the long run, innovation and the economy will suffer.

  17. 58

    Noonan: “I’m not claiming any great virtue, only that Banned From Patently-O (I guess, not very effectively) is wrong in accusing MBHB of being part of any cabal.”

    Coming to Dennis’ defense? That sounds like something I would do. Or that Dennis would do. Unless … perhaps …

    Moo-hoo-ah-ha-ha-haa!!!!

  18. 57

    As a guy who has done high-tech start-up companies in the past, I’d like to say that the presumption of validity is really very critical.

    At an early stage, most of the value of a start-up is in its patent portfolio. Without a portfolio of presumably valid patents, it will be very difficult for a new start-up or high-tech entrepreneur to raise funding.

    Thus from a social policy perspective, I would argue that if we want to promote innovation, we should keep the presumption of validity.

  19. 56

    I did not accuse anyone of anything…

    I merely cited the results of my foray into Muckety…

  20. 55

    Judging from recent Federal Circuit jurisprudence, the “strong presumption of validity” long ago went the way of that quaint “Doctrine of Equivalents”.

  21. 54

    In point of fact, MBHB is not “linked” in any way with any point of view (except mine, of course). And what I say (here or on Patent Docs) is not to be attributed to my partners or the firm.

    I’m not claiming any great virtue, only that Banned From Patently-O (I guess, not very effectively) is wrong in accusing MBHB of being part of any cabal.

    And looking at Muckety.com, it can also be said that MBHB is “linked” to the Washington Association of Sheriffs and Police Chiefs and the International Boxing Federation.
    link to muckety.com

    Six degrees of separation, indeed.

  22. 53

    Cowboy–

    I understand you’re talking about issued patents. They can be ruled invalid on many grounds including 103 and 112, even after an examiner has found that they passed muster under those sections.

    Two potential outcomes of any post-grant validity inquiry are 1) substantial disclosure but obvious and therefore invalid; and 2) insubstantial disclosure due to inadequate disclosure and therefore invalid.

    1) affects rights but not the substance to which those rights pertain,

    2) affects the existence of the substance to which the rights pertain.

    Just trying to understand your and Drafter’s positions, although I’m not sure how this informs “how much we should respect” issued patents.

    As for whores papering a file, I have been asked, and have refused, to do the very same. Probably very common in a world where one group puts together a package for quick sale to another group.

  23. 52

    Dear Body Punches.
    This discussion is about issued patents — ones the examiner has already looked at and been content to find that they pass muster under sections 112, 102 and 103. Once the examiner has found it to be allowable and the Director has put his gold seal and red ribbon on it, we all should respect it.

    The discussion here is about how much to respect it.

    Drafter, if you think due diligence is just paper excercise, so be it. I prefer to think that the people who are putting their money into a patent don’t just hire whores to paper the file.

  24. 51

    Drafter & Cowboy–

    I think you are both right to some extent.

    The substance to which the property rights pertain is incorporeal, and is defined by the claims.

    Say a patent attempts to claim an article that is patentable in every way except for being obvious. The disclosure is grammatically correct, concise, and unambiguous, and describes an article that could be realized. The incorporeal construct is substantial and COULD be capable of having rights attached to it. Invalidity pertains merely to the lack of any such rights.

    On the other hand, say a patent attempts to claim an article that is not patentable for failure to meet 112 written description. The examiner is not convinced that the applicant is in possession of the invention–in other words, say the disclosure is ambiguous and does not admit of a concise and specific definition. The incorporeal construct in this case is insubstantial and COULD NOT be capable of having any rights attached to it. Invalidity pertains in such case to the potential subject of property rights.

    So, it could be either way, depending on the specific facts.

  25. 50

    There are three things in play. There’s the requirement of clear and convincing evidence. Then, Section 284 says that a “patent shall be presumed valid,” and too, that the “burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.”
    Thus, being “presumed valid” is separate from the statutory allocation of the “burden of” proving invalidity. On top of that, courts demand clear & convincing evidence.
    Each of these is poorly-defined, and taken-as-given-but-variously-applied. No reason for that.

  26. 49

    Agreed that we all generally expect some property right to exist in any given object. I’m not sure – do we also agree that the question of patent validity is whether a particular type of property right exists in a given class of objects (or behaviors, or substances) that are described by the patent claims?

    Re “due” diligence: between us, that term seems to have a common meaning of making sure an investment actually would be profitable and reasonable. That’s b/c we are in the habit of meeting professional duties to our clients. To a highly leveraged investor, wallowing in the business judgment rule, “due” diligence means just enough paper to make the transaction look reasonable so that a commission can be collected. You know there’s a world of difference.

  27. 48

    Alan–

    Interesting. Would his testimony have pertained to prosecution in general, or to the particular prosecution in your case?

    I have long been advocating the deposition of examiners and other PTO employees/officers, to especially examine examiner qualifications.

  28. 47

    Patent drafter says:
    “The patent grants the inventor a legal right to exclude others from making or using the claimed object, with about the same predictability as my deed grants me a legal right to exclude others from trespass on my land.

    In each case, the “property” comprises the legal rights related to the object – not the object itself. Absent a legal system that will enforce those rights, there is no property in the milling machine improvement or in “my” land. Given that existence of either right can be proven only through a human-operated legal system, both rights equally lack certainty.”

    In our society, nobody expects the land or the milling machine to be in the public domain, free for whoever chooses to occupy the land or use the milling machine. The universal assumption by lawyers, judges, and especially laypeople, is that the res (to use the latin) belongs to somebody. The deed and security agrement issues are issues as to WHO the owner is, not whether the res is capable of being owned.

    The question of patent validity is the question of whether the invention is capable of being owned.

  29. 46

    “To reinforce my existing bias I want to believe you, but can you provide a reference to a case where it is recorded that a judge denied a litigant’s motion to introduce “expert testimony as to how a patent is actually prosecuted in the PTO”?

    It happened to me in Chicago in the 90’s (my only litigation, as I’m an in-house counsel).
    We had an ex-PTO commissioner as our patent law expert, but he was barred by the judge from describing the patent prosection process between the examiner and the applicant.

  30. 45

    I am completing a Note defending the status quo of the presumption of validity’s application. The Note will appear in Volume 31 of the Cardozo Law Review. The working paper is available at: link to papers.ssrn.com

  31. 44

    Property is not an object. The existence of a given object never is in doubt, at least once we stub our toes upon it. The existence of any given party’s property in that object, always is disputable.

    Merely in extension of your argument – let’s take a patent granted on a mechanical improvement to your milling machine. Let’s presume that none of us argue the existence of the mechanical improvement, and that the improvement actually is sold and used. Thus, an object exists as described by the patent claims.

    The patent then is precisely analogous to a deed to property.

    The patent grants the inventor a legal right to exclude others from making or using the claimed object, with about the same predictability as my deed grants me a legal right to exclude others from trespass on my land.

    In each case, the “property” comprises the legal rights related to the object – not the object itself. Absent a legal system that will enforce those rights, there is no property in the milling machine improvement or in “my” land. Given that existence of either right can be proven only through a human-operated legal system, both rights equally lack certainty.

  32. 43

    How much bad really happens in the grand scheme of things if a questionable patent is not found invalid because the C&C standard is not met where a preponderance standard would be?

    Yes, some individual defendant feels shafted, but balance that with the bad that would happen if investors could not rely on the validity of patents.

    A few defendants who feel shafted is not the basis for making public policy.

  33. 42

    Hey big buddy, back off – that’s like asking,
    when did you stop kicking your dog?

    You shouldn’t be tricky with Professor Crouch; he’s on our side.

  34. 41

    Dear Professor Crouch,

    BRAVO – in your footnotes you said:

    “I do not believe that the presumption of validity should be reduced. However, I wrote this post to let folks know that it is on the horizon and that a change is somewhat likely during the life of any currently pending patent application.”

    What percentage would you accord “somewhat likely” – fifty-fifty?

    You also listed:
    Mark Janis,
    Mark Lemley,
    Arti Rai,
    David Hricik,
    Howard Skaist,
    Josh Sarnoff,
    Tom Field, and
    Douglas Lichtman.

    Are they all for weakening the American patent system?, or just most of them?

  35. 40

    Even though Max is not an attorney, he nevertheless adheres to one of the golden rules of cross-examination: never ask a question unless you already know the answer.

    Re-formulate the proposition to suit your question and then ask it, and those uninitiated to this game will think that you’ve really got something.

    The rest of us see it for the insubstantial bourgeois merde that it is. Max can’t even conduct a policy argument effectively, notwithstanding the likelihood that he is a master debater.

    He discourses like a sycophantic academic disciple, his taunts parroting the orthodoxy in search of a degree to fill the emotional void left when his family name was stripped of its attendent titulature imperiale.

  36. 39

    In the interest of fairness, I just noticed a small note at the end of the article where Dennis indicates that he “does not believe the presumption should be reduced.”

    That gives me some hope. But if he really believes the presumption should not be reduced, then why reduce it to a footnote?

  37. 38

    Bollocks Esq. I see you’re definitely an attorney. You know, I do realise that English common law spread to the British Empire. But take the 5 Patent Offices of the “IP5”. You know them? USPTO, EPO, JPO, KPO and Chinese Patent Office. Which four of them are not common law but are civil law? You mention the Vatican. Of course. Silly me, I had overlooked that jurisdiction. But tell me, how much innovation goes on in there, these days?

  38. 37

    “One of the next major legal challenges to patent rights will be against the strong presumption of validity associated with the patent grant.”

    What Dennis really means is that the presumption is the next target of his anti-patent attack through the use of various sock puppet commentators like Mooney.

    I reposted this since my last post on this topic was deleted.

  39. 36

    I’m not convinced that different standards between court and PTO aren’t warranted. The Patent Examiner is, ostensibly, a PHOSITA; the judge will readily admit that he is not. The technical reasoning/conclusions reached by a preponderance of evidence to the PHOSITA-Examiner might in fact require C&C evidence to be reached by the layman-judge.

    In practice, though, would there be much change? In my litigation experience, I’m not so sure I could tell a difference between preponderance and C&C in the courts’ decisions on invalidity challenges.

  40. 34

    Since Max has admitted that he is not in fact a patent attorney, I think it is safe to assume from his posts that he is a product of a rhetoric programme at the ecole normale. If that.

    As to his assertion that “the rest of the world is on civil law”, bollocks! Commonwealth common law, US common law, UK common law, Canada common law (Quebec civil), some places civil code, Vatican ecclesiastical law, ROW various religious doctrines dictating “civil code” which is really a “religious code”, common law basis for many things (e.g. India).

    Max, Max, Max…

  41. 33

    Why have rigorous pre-grant prosecution, if patents will be re-prosecuted under the same standard during infringement actions?

    Ideally, pre-grant prosecution before the PTO would involve the most relevant references, so post-grant re-prosecution (in the form of invalidity defenses) would be limited to less relevant references and would be unlikely to reach a different result. In reality, however, defense attorneys have a lot more time and resources than examiners to spend on finding prior art.

    One solution may be to allow some level of public participation in the original prosecution so that stronger patents result. Another solution may be to have only cursory pre-grant examination, and make rigorous prosecution a preliminary stage of infringement actions; at least that would avoid redundant effort.

  42. 32

    Lafleur, now you’re being silly. Even the “unexamined rights” of a patent system in a 3rd rate country without its own Patent Office has a “presumption of validity” in that the burden of proof of invalidity lies with the petitioner for revocation.

    Cowboy, I suspect you are better off as citizens when you have “fair” protection for the inventor together with “reasonable” legal certainty for everybody else. Meeting those two constraints is the best way to attract investment, no? At least, that’s what the Founding Fathers and Mothers of the European Patent Convention, wrote, on their plain white unsullied piece of paper, in the days of the creation back in 1973.

  43. 31

    Dennis doesn’t have time for spell or grammar checking, he and his trusty sidekick “Malcolm Mooney” are furiously busy trying to deconstruct the patent system as quickly as their corporate sponsors desire.

    “One of the next major legal challenges to patent rights will be against the strong presumption of validity associated with the patent grant.”

    What Dennis really means is: “one of the next fronts for my and my sponsors attack on the patent system and all those who prosper from it is to try to dismantle the presumption of validity by daily attacks.”

    In the Peace Corps, they didn’t have shoes or a presumption of validity and we liked it that way.

  44. 30

    In the case of the patent that is found invalid only because some obscure reference is found after a highly motivated infringer spends beaucoups of money to find it, is the patentee a bad guy? Is public policy really served by invalidating that patent?

    If those of ordinary skill in the art were unaware of the obscure reference, didn’t the patentee do the world a service by “reviving” the technology? If the reference is never found or is not close enough to the claimed invention to overcome the presumption of validity by clear and convincing evidence and the patent that “should have been found invalid” escapes being found invalid, aren’t we still better off as citizens?

  45. 29

    “Today, judges use this presumption to refuse the defendant any right to show how screwed up the PTO prosecution system is.”

    Alan,

    For policy reasons relating to a general presumption that the administrative agency acted correctly (until clearly proven otherwise), no judge is going to agree with you about undermining the presumption of patent validity under 35 USC 282 based on any general proof that the PTO examination process isn’t working like it should. I’m not saying I like for governmental agencies to necessarily have that presumption of correctness (the IRS, for example, is notoriously bad in abusing their authority with impunity), but to hold otherwise would create chaos, including issuance of supoenas to have agency employees (e.g., patent examiners) be deposed or asked to testify. Courts are simply not going to let that happen.

  46. 28

    Cowboy, your logic is the wishful thinking of a patent attorney too close to the patent system. The USA has a unique record of bringing great inventions to market. The USA has a patent system with some unique features. That the unique success springs from the unique features is evident only to somebody who has made their mind up already. There are many other unique features of the USA. They, not the ones in the patent system, explain the success. Putting it another way, the US would still have succeeded, even with a patent law that was a copy of the EPC. Or are you going to contradict me, and tell me that mere loss of the special features in its patent law, a hundred years ago, would have left the USA a 20th century failure. I think not.

  47. 27

    Can I just ask everyone this…

    Is there anyway way to SOLIDLY, ABSOLUTELY protect A GREAT NOVEL, NONOBVIOUS,etc. IDEA (Dean Kamen’s artificial arm comes to mind – link to spectrum.ieee.org )? I think the answer is a RESOUNDING NO.

    If great ideas cannot cannot be said to be protected by a patent, then why does patent jurisprudence exist.

    Patent’s MUST be presumed to be valid for one to respect a patent and its bounds. Whats next, I wonder… creating a BURDEN of VALIDITY on a patent owner?

  48. 26

    James–

    To the extent that validity is given any deference, it is that the burden is placed onto the movant alleging invalidity.

    Such deference to agency action, the presumption of regularity of official acts, is a bedrock principle of administrative law as I remember.

  49. 25

    so a patentee would need to prove that his patent is valid as part of his infringement case?

  50. 24

    “How would patent practice change if the strong presumption of validity was only applicable over prior art actually considered during prosecution?” Maybe some attorneys would be tempted to dump even more prior art on examiners for consideration.

  51. 23

    I think the statutory presumption of validity is most properly understood as a procedural presumption. That is, it merely means that the alleged infringer has the burden of proving invalidity. The plain language of the statute says nothing about the strength of the presumption.

    As patent validity is originally determined by the PTO, we can fall back on basic administrative law, and I don’t think there’s any reason under admin law to accord patent validity any particular deference. Certainly history has shown that the clear and convincing evidence makes little sense, given the large numbers of patents that are found invalid even with that strong presumption of validity.

    That said, I think the ‘gold-plated patent’ idea is silly. Basically it amounts to some extra level of review in order to get an extra strong patent. But the best prior art is often unknown to the PTO, whether because it’s obscure (e.g., some thesis at a foreign university) or because it’s private (e.g., known only to a competitor).

    Furthermore, if two levels of patent are good, then why not more? Why not a whole range, from bronze to platinum-plated? No, the best solution is to have one straightforward kind of patent, and let the market value them accordingly, instead of trying to impose greater or lesser value ex ante.

  52. 22

    And to reply to Max’s remark: “To flourish as it always did, the US needs to uphold the validity of patents everywhere else found invalid. And there was me, thinking that it was free competition that always created the most jobs.”

    I see Max’s Eurocentricism is now extending to the point of saying that if the EPO or a European courts says the application for a patent on invention X is no good, then the USA should waive its sovereignty and agree. Nice. But, I’m not using the name “American Cowboy” because I agree with foolishness like that.

    Max, has the thought ever occured to you that United States’s leading role in developing new technology (for example: telephone, airplane, transistor, microprocessor, etc.) might have some remote connection to the way the US patent system works?

  53. 21

    Alan–

    To reinforce my existing bias I want to believe you, but can you provide a reference to a case where it is recorded that a judge denied a litigant’s motion to introduce “expert testimony as to how a patent is actually prosecuted in the PTO”?

    Thanks

  54. 20

    Patent drafter errs repeatedly in his post:
    “Most property does not have a “predictable” existence or value. If it did, we wouldn’t have “property” attorneys.

    Examples of security interests and deeds are not germane — they are analogous to the assignment of a patent — not to the patent itself. A deed or security interest in a milling machine or the Blackacre may be in doubt, but the existences of the milling machine and Blackacre are not.

    “Most investors don’t really care whether the patent has reliable validity.” What are you smokin? Ever hear of due diligence?

    If we do away with the presumption of validity we can call ourselves “intellectual hopes” attorneys.

  55. 19

    Didn’t we just have a post about a significant decrease in patent filings? And now Congress or the courts are going to take away the presumption of validity. Pure genius. Let’s require a patentee to re-prosecute their patent to sue for infringement. I guess one way to reduce the backlog is to remove any incentive to file a patent application in the first place…

  56. 18

    I don’t see this as as big a deal as many do – I really don’t think most District Court judges have a clue of how to apply prior art against a patent no mater what standard they use.

  57. 17

    Florian, you’re right. I’m indeed so much of a simpleton that I can’t divine (good word, that) what you are banging on about. As Shakespeare once said: Methinks the Lady doth protest too much.

    Mad: Of course a duly issued patent is valid till somebody proves the contrary, just as every act is not an infringement, till the patent owner proves it is. These burdens are axiomatic of any patent system, no? But it’s a bit troubling that there is no difference between CC and Preponderance. I had always thought the difference to be crystal clear. In pre-1978 UK, an Opponent at the Patent Office had the burden of showing a claim to be “clearly” obvious while a party later petitioning the High Court to revoke a claim had only to make out, on the preponderance, that something within the metes and bounds of that claim was simply “obvious”. The logic was that the Patent Office should revoke only in clear cases while the court had the burden of revoking whenever the preponderance was achieved.

  58. 16

    Max–

    No need to be so cynical toward Cowboy.

    What if the C&C standard was upheld for granted patents, and the preponderance standard was applied to newly granted patents going forward?

    That would preserve perceived value of granted patents for those already invested. Just a thought.

  59. 15

    I agree in essence with Patent Drafter, except that I think that “predictability” is not an absolute concept, but rather one that can be measured in degrees.

    His “reliable validity” factors into the determination of his “perceived value”, and hence is important to at least some investors. It has always formed part of the discussion in IP valuations in which I have been involved, under the broad construct of “cost of ownership” of a patent asset.

  60. 13

    Well come on then Virginia. Don’t yourself be so boring. Say something of your own, that’s not as “boring” as my stuff.

    Cowboy makes an interesting point about investors though. To flourish as it always did, the US needs to uphold the validity of patents everywhere else found invalid. And there was me, thinking that it was free competition that always created the most jobs.

  61. 12

    I agree with Virginia Woolf.

    First Max homogenizes all european patent attorneys, then arrogates to speak on their collective behalf.

    More than just a simpleton, he seems to be a hack for a civil system that lacks any courage or individual responsibility or character by pathetically attempting to systematize and codify all possible outcomes.

    In the great French tradition of systematization, and the equally great Germanic tradition of rationality–both of which were discredited by thinking minds in the 19th century and earlier.

    More embarrassing is that a bunch of inbred monarchists hailing from the land where the Diving Right of Kings rules had to bail one out, and kick the a$$ of the other.

    Most embarrassing for them all is that the US paid for it all.

    Who cares what EU patent attorneys think of the US system? Give it up Max–I am half euro, half amer, & live and practice in both. Right now, neither has proven superior to the other in any meaningful way. Far from being a utopia, “europe” and the UK aren’t even worthy models.

  62. 11

    Doesn’t a patent need to be presumed valid – otherwise, to sue on an issued patent, wouldn’t the patentee first need to prove validity? And how would that be done – by undertaking a search of the prior art, and showing the claims are patentable over the closest prior art at the beginning of the trial?

    Whether the presumption needs to be overcome by clear and convincing evidence or a preponderance of the evidence is another question entirely, although it does not seem likely that in practical terms the standard makes any difference whatsoever.

    Comments?

  63. 10

    Most property does not have a “predictable” existence or value. If it did, we wouldn’t have “property” attorneys.

    For example, a security interest is a form of property. Its value and existence are highly litigable during bankruptcy.

    A deed to real property is the exemplary property instrument. A mortgage instrument to that deed is perhaps the most commonly securitized form of property. Yet the underlying deed is always open to unpredictable modification by easement, adverse possession, civil asset forfeiture, and so on.

    Most investors don’t really care whether the patent has reliable validity. Most investors just want to see a piece of paper to which perceived value can be assigned, and they want to see some way of manipulating the perceived value so that the piece of paper can be sold for profit.

  64. 7

    European patent attorneys are as likely to be acting for an Opponent in the EPO as for a patent owner. For them, the idea that such inter Partes proceedings, to decide the validity of an issued claim, could be on any other standard but the preponderance is an affront to justice. I’m left wondering just whose interests are being furthered, in the USA, by the retention of a “Clear and Convincing” standard, especially now that the USPTO is issuing more patents to foreigners than to US citizens.

  65. 6

    The presumption has an important public policy value that should not be sacrificed. If a patent is property (and we would not be calling ourselves intellectual PROPERTY lawyers if it were not, now would we?) then it must have a predictable existence. If we are going to ask investors to pony up money to back commercialization of a patented invention, they want to have some confidence that the patent has some reliable validity. If any Tom, Dick or Harry can throw that validity into doubt, the investor will put his money elsewhere.

  66. 5

    There’s a child’s game called “Pass the Parcel”. Nobody wants to be caught holding the parcel when the music stops. Sometimes I think that the issue of “patent validity” is like that toxic parcel, in that nobody wants to be left holding it when a high tech patent is asserted.

    “Validity Y/N” is the other side of the coin to “Infringement Y/N”. The coin is called “Claim Construction”. Somebody competent has to hear the parties, then make an informed Decision on Claim Construction, which in turn informs their Decision on “Validity Y/N” and “Infringement Y/N” so that the aggregate decision is coherent and internally consistent and satisfies the technical experts and the lawyers, and so defies the best efforts of the loser to get an Appeal up on its feet.

    Every candidate UK patent attorney sits exam papers that reproduce the process of coming to such a decision, in order to qualify as a UK patent attorney. Every FTO attorney in Europe rehearses such decisions, every day of the week. It is not rocket science.

    Yet shoehorning it into the civil law litigation landscape of a country is intractably difficult, for all but the English. In their little backwater, they have always had patents judges who are former patent litigators who, before they were litigators, were getting a science or engineering degree, often but not always at Oxford or Cambridge. The days are long gone, when English law was reproduced in other jurisdictions. Pity.

  67. 4

    My prediction is that if the standard of proof were changed, more parties would bring challenges, and more rulings of “harmless error” would result.

    I know the presumption of regularity applies to agency actions, but does anybody know the standard(s) for other agencies? C&C or preponderance?

  68. 3

    Getting rid of the presumption is highest on my list of patent reforms.

    If this does not happen, judges should be barred from refusing expert testimony as to how a patent is actually prosecuted in the PTO as part of the “clear and convincing evidence” that the patent is invalid.

    Today, judges use this presumption to refuse the defendant any right to show how screwed up the PTO prosecution system is.

  69. 2

    this “presumed valid only over the prior art considered” idea… would be an invitation for the applicant to carpet bomb the examiner with references.. every single prior art reference ever.

    what a mess. especially with the uspto trying to limit ids submissions.

  70. 1

    Assuming a strong presumption of validity is like covering your eyes, and telling yourself something doesn’t exist because you can’t see it. I think the most realistic line in this article was “A more likely focus may be on reducing strength of the presumption over prior art that was not considered during prosecution.” Good “Question” too. I think it would be great to have the strong presumption of validity only applicable over prior art actually considered during prosecution. That provides examiners with more dignity because then there would be reasonable expectations are placed upon themm.

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