- IP Czar: George Mason visiting professor Victoria Espinel has been selected as the IP Enforcement Coordinator for the Administration – known as the IP Czar. The role will likely be more focused on international trademark and copyright issues rather than patent law issues. Her nomination must be confirmed by the senate. [LINK]
- DC in DC: Next Thursday (1:30 p.m., October 1), I’ll be the opening speaker in GWU’s IP Speaker Series. My presentation considers the proposed first-to-file legislation and includes a new set of data the (low) frequency that applicant’s attempt to rely on their invention date during prosecution. The talk is open to GWU students, alumni as well as “friends.” Other speakers include Edward Walterscheid (Oct. 27); Zahr Stauffer (Oct. 29); Joseph Miller (Nov. 5); and Chris Cotropia (Nov. 19). [LINK]
6: it’s the internet, isn’t it, and the freedom an infringer has, to locate any convenient element of the system of the claim anywhere in the world. You know, the infringer puts in Vanuatu that one component of his system that takes him out of infringement of the claim in the USA. Can readers confirm that the USA does not yet have jurisprudence analogous to the English case (Menashe, I think) in which Judge Robin Jacob had no difficulty finding infringement of an internet “system” claim in England, despite the infringer locating the claim’s essential server on a little island in the Pacific Ocean.
Or else it’s gaming the (unique to the USA) restriction requirement.
Or else it’s gaming the (unique to the USA) “claim differentiation” doctrine.
I don’t know, I’m not a US patent attorney.
But, irregardless (as one says in the USA), such claim structures don’t fly very well in Europe either. They offend the local statutory requirement for clarity. Prof, Polk Wagner has written of the mischief of “deferring clarity”. 6, you may have identified here another manifestation of that mischief.
6, you ask how to put the objection. Examiners at the EPO used to assert that the claims were unclear. But that enrages the US patent attorney proud of his dissembling work. So now EPO Exrs have a different way to do it. “All right” they argue. “I see very well how extremely broadly the claim can be read. But, in that case, it includes within its ambit D1, and so it lacks novelty.”
But you surely know all this already. I’m writing as well for other readers.
Maybe this explains the current hue and cry against PTO use (abuse?) of “broadest reasonable interpretation”.
…John Duffy
You’ve cracked the code!
“this leads to a situation where you could literally have a 102b on the second claim, and not on the first claim”
I don’t follow 6’s logic either.
By the way, tomorrow is John Doll’s retirement party, I think at 3 or 3:30 in the Madison building. I’m sure all of you will want to be there, so that you can thank him in person for his contributions to the examination process.
Hey, did anyone else notice that all of the top names in IP have the initials JD? Jon Dudas, John Doll, John Darling…
“Does not compute. If you’ve got 2, then you’ve got 1”
But what do the two comprise? Do the two comprise a, b, and c? Go ahead and tell me I’ll wait.
In the claim above you have no clue whether or not they both are supposed to comprise a, b and c or if they perhaps can both comprise d, e, and f. Or perhaps one of them comprises a, b and c and the other can comprise d, e and f or f, a, i and l.
In other words, what happened to the first device that comprised some things? Now we have two sub devices that we don’t know what they comprise in place of the one device that supposedly comprised a, b and c.
Even worse is the situation where the applicant even goes so far as to say in claim 2 that the two devices do in fact comprise d, e and f. It’s just plain embarrassing for all parties involved. Especially when the spec makes it clear that there is no embodiment where there is one device that has abc and, within that big device, there are two smaller devices comprising def. The spec instead makes it clear that they want to cover by the claim is in fact one big device comprising two sub devices comprising def, with the abc being read out of the claim somehow. That is, there is no embodiment where abc and def exist simultaneously.
As such, claim 2 can be anticipated by a device comprising two sub devices comprising def in both of them. But claim 1 cannot be anticipated by that same reference because abc never happens.
So, let’s take the case where we have claim 1 as above, and then have claim 2 read:
2. The communications device of claim one where the communications device comprises a first comunications device comprising:
d,
e,
f, and
a second communications device comprising:
g,
h,
i.
(You can replace ghi with another def if you want it doesn’t matter)
Do I need a device that has abc, and two sub devices inside that comprise def and ghi respectively? Or do I need a device wherein the device comprises two seperate devices that comprise def and ghi respectively and the abc can go to hel?
What they effectively do is redefine what the device comprises rather than “further limiting” what it originally comprised. I have half a mind to reject them under 112 3rd or 4th as unimaginable as that may be. 4th says “and then specify a further limitation of the subject matter claimed.” not “and then specify an alternative limitation of the subject matter
claimed.”
And don’t even get me started on how I should just “follow the spec”. That’s part of the problem.
The claims are per se indefinite as curious notes. That is not in question for me. The question is why o why are people starting this practice all of a sudden? As a drafting method it seems to have really kicked into high gear right around the turn of 2007. The only thing I can think of is that they’re trying to avoid a restriction or save on ind claim fees.
Or they’re rtarded with a capital R.
Oh, and what else would be nice to know is how the rejection should formally be put forth.
What’s even harder to wrap your mind around is how in the sam he ck this could happen if they wrote the claims first as is standard practice.
“you could literally have a 102b on the second claim, and not on the first claim”
Does not compute. If you’ve got 2, then you’ve got 1. Can you hold my hand and walk me through this please, 6?
Claim 2 is indefinite; easy rejection, 6.
patentlyo I turn to you once again to get your perspective on an issue I keep running up against of late.
Claim language goes something like this:
1. A bicycle comprising:
a pedal
a wheel
a frame.
2. The bicycle of claim 1 wherein the bicycle comprises a first bicycle and a second bicycle.
WTF am I supposed to do with this sht?
Round 2.
1. A communications device comprising:
a
b
c.
2. The communications device of claim one where the communications device comprises a first comunications device and a second communications device.
Again, WTF is this sht?
It’s like a plague of this nonsense just now sprung up. App define what sub parts of a device are in the exact same terms that they referred to the overall device in. Sure, we all get what the claim means, obviously it means that there are two communications devices instead of the one, and perhaps that they are making up the one (depends on the specific app in question). However, this leads to a situation where you could literally have a 102b on the second claim, and not on the first claim depending on what goes on in the ind.
The thing I can’t understand is why this is all of a sudden on the rise. It’s as if you guys got together at a big conference on how to write terrible claims that I will have to reject and decided this was the best way to draft claims.
DID THIS IN FACT OCCUR?
Totally agree Mark. The devil is in the details Why would we consider legislation based on the frequency of matter and not the importance.
Let’s try this again.
I’m always concerned when data on a given patent procedure’s frequency is used as a proxy for that procedure’s importance. By the same logic, we can get rid of those troublesome patent infringement lawsuits. After all, only 1% of patents are ever litigated.
“My presentation considers the proposed first-to-file legislation and includes a new set of data the (low) frequency that applicant’s attempt to rely on their invention date during prosecution.”
I’m always concerned when data on the frequency that certain patent procedures is used as a proxy for that procedure’s overall importance is. By the same logic, we can get rid of those troublesome patent infringement lawsuits. After all, only 1% of patents are ever litigated.
Indeed, Mr Parker. I was myself rather wondering about that point. And within the 18 month period between filing and A publication it is very common to have rival filings from several corporations, all on much the same invention at much the same time. Usually they are somewhat different from each other because they are all indepentely worked out. In Europe there is a good prospect to protect your specific realisation of the concept, even if you were 3rd or 4th to file. And your realisation might turn out to be best.
As we know, when you change one component within a complex machine, all one knows is that there will be unintended knock-on effects. So, either stay with the legal machine you have (if it isn’t broken), or drive somebody else’s proven patent law vehicle, and don’t tinker with it.
Sometimes a compromise is the worst outcome.
Agreed, MaxDrei. This is what really concerns me. I haven’t seen much reference to the problem that under the proposed US first-to-file system, earlier-filed but unpublished applications will be available for obviousness purposes, even if filed the day before. This is unlike the system used all over the world, where the unpublished earlier application is only available for novelty purposes. This means that in the US, the first-filed application will be absolute king of the hill, unlike the rest of the world where both the first and second, and so on, applications have some chance of getting claims allowed.
Thanks 6. The title “Is Novelty Obsolete” is very interesting. I wonder how much it is inspired by the provisions of the EPC, in which obviousness is the tool of choice, for refusing claims that include within their ambit any matter that, for the PHOSITA aware of all published knowledge, is not distinct from the state of the art.
In Europe, the novelty test is needed for the entirely different task of adjudicating between rival filers who all meet the non-obviousess requirement. The entire content of the earliest filer is citable against the novelty of all of the claims of the later filers.
Thus, in Europe, BOTH tools are indispensible. They perform quite different functions, so need to be rigorously distinguished from each other. No muddling allowed (as the Germans are just finding out).
But, under US law, also an earlier unpublished USPTO filing can be the basis of an obviousness objection. So, in the USA, who needs novelty?
“IP Speaker Series: Missouri Law Professor Dennis Crouch presents “Is Novelty Obsolete?: Chronicling the Irrelevance of the Invention Date in US Patent Law.” (FCC, 1:30pm)”
Any chics from GWU lookin for a date?
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