Patent Law Exam: Pioneering Patents

Here is the ‘policy question’ from my 2009 patent law exam:

Essay 3 (15 points) < ?xml:namespace prefix ="" o />

 

Congressman I. N. Venter has proposed an amendment to the Patent Act that would create a special right known as a “pioneering patent.” According to the proposal, pioneering patents would be awarded for inventions that are both the product of genius and that dramatically alter the technology landscape. Examples might include the airplane and the polymerase chain reaction (PCR).  The pioneering patent would require greater evidence of nonobviousness, but the applicant would be allowed to pursue broader claims that might not otherwise satisfy the enablement and written description requirements of Section 112.  What are the pros and cons of this proposal? Would a better approach be to extend the patent term a number of additional years for inventions determined to be pioneering? (I.e., longer patents instead of broader patents).

 

 

115 thoughts on “Patent Law Exam: Pioneering Patents

  1. 48

    I wonder if given the new statute requiring separate lawsuits against infringers whether a class action might be still be possible. Assuming the patent valid, and an adequate representative, that might be the only recourse available to the patentee. The adequate representative part is the problem, of course; it seems to be the problem the State is addressing here.

    1. 48.1

      Also, if a patentee class action were possible, the state might pursue a class action against the patentee on behalf of its citizens.

  2. 47

    The State can certainly file for reexamination. I wonder if they have standing to request a DJ action on behalf of accused citizens to have the patent declared invalid in court.But these are the lawful procedures the State must follow, in my view. The district court is right to restrain unlawful state interference with patent law. I

    1. 47.1

      Ned the only thing they restrained were things the state themselves promised not to do at the outset.

  3. 46

    Doesn’t the following provide an easy work-around to avoid reading on the claim:”a dedicated computer means in proximity to said housing and dedicated only to the operation of said display system”Proximity? Only? God, am I missing something here if your the alleged infringer?

    1. 46.1

      It makes no sense that a device such as this could be deemed patentable over the reams of earlier “non-dedicated” devices that included the recited functionality, among others. That’s an example of per se obviousness if there ever was one.I don’t see any “serious consequences” of infringing this claim. I’ve infringed it myself and will continue to do so, without a second thought. Perhaps there are other claims with meaningful limitations? If so, those claims should be pointed out by Farney in its letters. Otherwise, it would appear that (1) Farney’s lawyers are asserting claims that they know are j*nk or (2) Farney’s lawyers are imcompetent.I’m shocked this is coming out of Texas.

      1. 46.1.2

        A comment like “it would appear that (1) Farney’s lawyers are asserting claims that they know are j*nk or (2) Farney’s lawyers are imcompetent.” remains while a mere post highlighting such a comment is expunged?Really?

  4. 45

    Here’s the phrase that pays:”Farney Daniels had no intention of suing all, most, or many of these targeted businesses…. In the debt collection arena, misrepresentations of legal consequences have been held to violate deceptive trade practices laws.” Very interesting and colorable theory. Also, the issue is against the law firm acting, in part, as a debt collector, not the patentee or the law firm in its representation of the patentee. Is there proof to prove the requisite intent?

    1. 45.1

      West Coast, I think they would sue if a class action were permissible. That is what one does, effectively, if one sues a manufacturer for contributory infringement where his millions of customers are direct infringers.I see nothing wrong in suing a contributory infringer and naming as John Does his million customers. After all, one has to prove direct infringement and the damages are measured by the direct infringers damages.

    2. 45.2

      A number of points:1) Patent enforcement through the courts is not akin to debt collection. Patent rights can be enforced ONLY through the courts.2) Your quote misses the part about the statement being an assertion by the State. An assertion that itself seems to lack evidence. Thus, your assertion of ‘colorable,’ then, seems faulty (don’t try to cash the check on that phrase that pays).3) Patent infringement is a strict liability transgression. Not sure what proof of intent you are looking for. Are you advocating that people need to have proof of intent in enforcing their rights in order to even state that they have rights that can be enforced if need be?

      1. 45.2.1

        anon,The issue does not involve patent law. It involves state collections law by a debt collector. As a former debt collections attorney who is now a patent attorney, I was considered a debt collector working on behalf of my creditor-client and had to work within debt collections statutes.If you read the AG’s letter, it addresses the demand letters made by the firm on behalf of NPEs. Its position is that the firm has no intent to sue. According to the letter, the firm “has exhibited a pattern and practice within Nebraska of deceptively alleging patent infringement and subsequent litigation.” According to the AG, the demand letters are seen by the AG as “baseless harassment” of Nebraska consumers and businesses.Put it this way, the AG would not have (and could not have) taken its own action (i.e, writing its own demand letter) had the firm filed the lawsuit without sending the demand letter.

        1. 45.2.1.1

          “It involves state collections law by a debt collector.’No. It does not. The debt collector argument is merely an analogy.I understand the position stated by the AG – it is a mere assertion. What basis do they have in reality that ‘intent’ is missing? What basis is there that you cannot inform someone of how patent rights are enforced in this country?I understand how the AG views the letters. The problem is that the AG is wrong.You cannot force someone to file a lawsuit first in order to tell someone that they have a right to file a lawsuit in order to enforce patent rights.

          1. 45.2.1.1.1

            One question here is whether the state has any power to control the way that a patent holder goes about collecting royalties. That is a straw-question and the answer is clearly yes. For instance, a patentee may not (without court order) commit unlawful trespass or physical assault even when in pursuit of license fees owed on a valid patent. So, given that the state can interfere with some enforcement activities, the question is whether there is some line that goes too far?

            1. 45.2.1.1.1.1

              I would say the line of “I hereby demand that you immediately cease and desist the initiation of ANY AND ALL new patent infringement enforcement efforts within the State of Nebraska pending the outcome of this office’s investigation. easily goes too far.

              1. 45.2.1.1.1.1.1

                He needs time to conduct a possibly criminal investigation anon, what’s wrong with him making such a demand? He isn’t threatening them with retribution if they do. He’s just demanding.

                1. I agree with 6 that the state generally has legal power to stop patent demand letters that violate state law so long as that law at least allows a notice of infringement be sent. However, Anon is also correct that the attorney general’s order here is difficult to swallow because it is represents a preemptive restriction on speech.

                2. I am sure that there is case law under the state of NE CPA and UDTPA of which debt collection attorneys have raised the very First Amendment defenses which Dennis has mentioned. If not NE, I am confident there is such case law out there which draws the fine line between a debt collector’s right to collect versus a consumer’s and business’ right to be free from harassment.

                3. BTW…the caption of any action by the AG would go along the lines of State of Nebraska (on behalf of its consumers and businesses) v. Farney Daniels.It would not be patentee v. alleged infringer.

                4. We are not talking about the action by the AG – per se.We are talking about the content of what the AG said that impacts the patent arena.

                5. We are not talking about the action by the AG – per se.I disagree. The AG is considering taking a potential action involving claims under the two state Acts.BTW…I meant to say that any action taken by the AG would NOT be captioned:State of Nebraska v. patentee

                6. Then we are not talking about the same point wherein a State AG goes beyond his authority in a letter to a law firm related to patent enforcement matters.Clearly you are in some other case not involving patents but talking about some collections efforts. How you stumbled onto a patent blog is a bit of a mystery to me. Sorry to intrude into your other discussion.

                7. “Then we are not talking about the same point wherein a State AG goes beyond his authority in a letter to a law firm related to patent enforcement matters.”Of course not. Nobody else cares like you do anon.

                8. “We are not talking about the action by the AG – per se.”No see, everyone else is talking about that. You’re not. Which is why you’re always the one left out of the majority position. You always find some little subject to pick up on that nobody else cares one whit about, and then harp on that as if it is what everyone else is talking about.

                9. the attorney general’s order here is difficult to swallow because it is represents a preemptive restriction on speech.Sure, but threatening to sue hundreds (thousands?) of people because they use a computer monitor to display some generically described information … no problem! After all, the USPTO granted the patent. These guys from Texas are just trying to prevent the “waste” of good IP.

                10. Translation: patents are the second worst thing EVER. Actually attempting to enforce a patent (presumed valid by law) is the worst thing EVER.Malcolm, how do you live with yourself when you work in a field, creating work product that you detest so much?

                11. “Actually attempting to enforce a patent (presumed valid by law) is the worst thing EVER.”Mmmmm, by a deceptive letter writing campaign? Sure.

                12. The “any and all” is beyond his authority and operating under color of authority has its implications – the AG is not free to go about making unlawful demands.That’s a rather important point in our society.

                13. Perhaps under some needlessly broad interpretations. He was just talking about the letters and similar actions, not filing cases. Which he subsequently clarified.

                14. The clarification was not in the letter prorper. It was in the follow up reply. “Finally . . . the July 18 letter in no way affects Plaintiff’s rights to bring suit in this or any Court.” And had anyone bothered to ask them, I’m sure the AG would have clarified that they didn’t mean several other things as well. The AG is not being some imminently unreasonable chap here. He’s just trying to carry out a civil or possibly criminal investigation is all. Perhaps he went a little far in a sound byte that seems a bit broader than it should have been in the context of the letter, but that is easily sorted out. The part that might be somewhat less easily sorted out is the possible jail time.

                15. 6,You do realize that the quote your provide here is the court telling the AG that his demand of ‘any and all’ is void, right?Thanks for proving my point (yet again).

                16. “With regard to the Supremacy clause and patent law’s preemption of state-law, the Attorney General argued that its consumer protection action does not impact the patent laws.Federal law does not preempt the state regulation of entrepreneurial letter writing campaigns. The Attorney General’s possible state law deceptive trade practices claims do not involve any legal application to the validity of the patent, to the scope of what is infringing, or to the public domain in any way.Finally . . . the July 18 letter in no way affects Plaintiff’s rights to bring suit in this or any Court.”^That appears to be D telling us what the AG argued. If I’m mistaken, then perhaps you guys should start posting the source material instead of an ambiguous synopsis.

                17. People in state authority are not free to carry out their investigations by removing federal rights.You seem to have a difficult time understanding the abuse of power concept.

                18. And you seem to have a difficult time understanding what the state AG was concerned about here and thus have a distorted view of what the entire issue (you know, the one raised by the AG) even is. But gl, perhaps one day it will dawn upon you. Or you’ll go to jail in a similarly criminal get up. Either way.

            2. 45.2.1.1.1.3

              “One question here is whether the state has any power to control the way that a patent holder goes about collecting royalties. “The states have nearly infinite power. And I don’t see any federal statutes preempting, so I’m going to bet that they do, since they have power over just about everything else that isn’t directly regulated by the feds. States are Over Powered for sure.

            3. 45.2.1.1.1.4

              “That is a straw-question and the answer is clearly yes.”lol a straw-question. I like it D and I’m going to use it.

          2. 45.2.1.1.2

            “You cannot force someone to file a lawsuit first in order to tell someone that they have a right to file a lawsuit in order to enforce patent rights.”Nobody minds you doing that. They mind you threatening to do so when you have not intention of doing so where they know you have no intention of doing so because of your past behavior.

          3. 45.2.1.1.3

            You cannot force someone to file a lawsuit first in order to tell someone that they have a right to file a lawsuitSomeone? Some “one”?A rather extreme distortion of the facts at issue here appears to have taken place.

          4. 45.2.1.1.4

            What basis do they have in reality that ‘intent’ is missing?My understanding is that at least part of the “basis” for “lack of intent” is that “in reality” Farney Daniels is incapable of sueing and taking to trial even a small fraction of the people throughout the country that Farney Daniels threatened.

      2. 45.2.2

        “Patent rights can be enforced ONLY through the courts.”Looked to me like they were attempting to do so through the simple mailing of letters. “Are you advocating that people need to have proof of intent in enforcing their rights in order to even state that they have rights that can be enforced if need be?”I think he, like the AG, were simply saying that you cannot lie to someone in a threat to file a lawsuit and simultaneously have no intention of suing. That’s called deception.

        1. 45.2.2.1

          You misunderstand what ‘enforce’ means then 6.I suggest you come up to speed before continuing the conversation.

              1. 45.2.2.1.1.1.1

                Well you think wrong. The letter writing campaign is no doubt on hold. The exact thing the AG wanted in the first place.

  5. 44

    “The possible violations specified in this letter are serious and require your immediate and unconditional cooperation. Given the significant ramifications posed to Nebraska consumers and businesses by your potentially unlawful conduct, I hereby demand that you immediately cease and desist the initiation of any and all new patent infringement enforcement efforts within the State of Nebraska pending the outcome of this office’s investigation.”That might get their attention.

    1. 44.1

      “Getting attention” by violating the law is not that smart. (Ab)using the power of one’s office to ‘send a message’ is considered a bullying tactic – and you cannot force someone NOT to be able to enforce their federal rights like that.Congrats 6, you picked the very sentence that got the AG in trouble.

      1. 44.1.1

        And what law did he violate upon anon? And what “trouble” is he in? It appears from what D said that the court simply made sure that the state wasn’t going to do exactly what the state confirmed it wasn’t going to do from the outset.

  6. 43

    Perhaps also amusing is that Activision.TV is currently getting their pants sued off by Activision – you know, the video game company that’s been around since 1979. For trademark infringement, because apparently they can invent a digital menu board but can’t think of a name that isn’t already being used by a multi-billion-dollar company.Here’s at least a partial docket (archived elsewhere from PACER, so even us cheapskate laypeople can see it):http://ia601009.us.archive.org

  7. 42

    1. A display system for generating an image on a display member and allowing for enhancing the image which is displayed thereon, said display system comprising:a) an outer housing;b) a display panel on said housing and being observable to a viewer; andc) a dedicated computer means in proximity to said housing and dedicated only to the operation of said display system, said computer means operating on the basis of a series of sequential programmed instructions at a predetermined time or on a real time basis, said computer means controlling the image presented on said display panel, said computer means capable of altering the manner in which a display is generated on the screen and capable of providing computer generated effects on a display on the display panel and thereby modify the image displayed on said display panel.Offered without comment. Very curious to hear John Storella’s or Andrew Duhey’s thoughtful opinion(s) about the validity of this claim. It was filed in 2001. I think they were alive then.

        1. 42.1.1.1

          The etymology of the word monitor (as in, computer monitor) puts the 102 nature of a rejection far earlier.

      1. 42.2.1

        This AG deserves to be put in his place.I think he should be given a medal for highlighting the obxnoxious behavior of these trolls and for zealously trying to protect the citizens of Nebraska from being preyed on by said trolls. Have these tough Texas cowboys already papered over their own state with their silly letters?

        1. 42.2.1.2

          Advocating an awarding of a metal for violating rights available under federal law based on the philosophical belief that the rights are j*nk is appalling. Advocating the wanton infringement of a still-valid patent is reckless – whether or not you take a very Carroll stance of seeing ‘serious consequences’ or not. You close your eyes to the legal presumption of validity that alone color the action of enforcement as legitimate. You neglect that it is the client (and not the advocate) that decides whether to pursue enforcement. So even if the advocate thinks the claims are j*nk, he can but explain this to the client, outlining the likely success or failure, and then he must get out of the way. It makes me wonder whether you practice law, or whether you merely want to QQ.

          1. 42.2.1.2.1

            Advocating an awarding of a metal for violating rights available under federal law based on the philosophical belief that the rights are j*nk is appalling.Exactly what is the “right available under Federal law” that you are referring to? The “right” to threaten hundreds of people for infringing a j*nk patent that should never have been granted?I violate those “rights” all the time. People should feel free to violate those “rights.”Throw those letters in the trash, people.it makes me wonder whether you practice lawI don’t care what you think. Why would anyone what you think about anything?You close your eyes to the legal presumption of validityTranslation: “Be afraid. Be very, very very ….. Zzzzzzzzzzzz”

            1. 42.2.1.2.1.1

              Malcolm, what point are you trying to make with the vacuous post immediately above?You ask questions that I have already provided answers to, to re-engage in what is classic reckless behavior, and you spurn the law and what it means.How is any of that even close to a conversation?

              1. 42.2.1.2.1.1.2

                the vacuous post You wrote in your comment: “It makes me wonder whether you practice law, or whether you merely want to QQ.”Now, there’s a perfectly reasonable response to an asinine insult like that. I think you can imagine one of many such reasonable responses. I went out of my way to give you a chance to inject some thoughtfulness into your earlier comment by asking you to explain exactly what you were talking about. You responded with more insults. Enough said.

      2. 42.2.2

        Indeed, his place appears to be the attorney general’s office. And he’s doing rather better than most other ones turning a blind eye to the extortion racket going on.

  8. 41

    Fish bones is correct. Pioneering patents are already *supposed* to be allowed broader scope as long as 112 is met. However, I think that the written description requirement has heightened the 112 requirement. Further, as other people have indicated, either the specification enables or it doesn’t. So, the question is a trick. 1. Pioneering patents are already supposed to be allowed broader scope because of lack of prior art. 2. The WD requirement has crippled the ability to get appropriate coverage on pioneering inventions, especially in the absence of prior art. 3. There’s no such thing as “more enabled” unless you are also required to fulfill the judicially-created WD requirement (aka “super enablement” requirement), which you are, so any answer is moot.

  9. 40

    All inventions are created equal and have the potential to “alter the landscape.” I’d tell the good Senator to forget the whole thing and focus on something he can ruin with greater ease such as the healthcare system.

  10. 39

    > Big deal. You fly with up and down
    > control and see the wind pushing you side to
    > side. So you add a second control. Try that and
    > see you need a third control.

    But, no one did. As a pilot, I can tell you that it really isn’t that obvious. Sure, everyone knew about rudders – sailboats had them – and the elevator is just a rudder turned sideways.

    What everyone up until the Wrights failed to appreciate is that the rudder in an airplane doesn’t work like the rudder in a boat. Turn the rudder in an airplane right, and you turn left, or fly sideways, or any number of things. Anyone who’s ever flown a Cub or a Champ can tell you stories about that.

    Everyone else before the Wrights tried to accomplish STABILITY in the roll axis by careful design of the airplane and the rudder and elevators. It took the Wrights to realize you needed CONTROL in the third axis in order to have a stable, practical and controllable airplane.

  11. 38

    There is a very famous Dick Feynman paper called There’s Plenty of Room at the Bottom, which is considered to have opened the door to nanotechnology (but see what Isaac Asimov said about miniaturization in his Foundation novel).

    So how about special patents for very small inventions (whoops! they were called utility models).

    For i = 1 – 10,000
    Print “A patent is a patent, isn’t it?
    end

  12. 37

    Aren’t pioneer inventions entitled to a broader scope of equivalency since the prior art is not close?

  13. 36

    True insanity for at least the following:

    – an applicant is already entitled to the broadest claims that are neither anticipated nor obvious. What extra breadth could you possibly reasonably grant a “pioneering” inventor.

    – If, arguendo, we assume that “regular” or “ungifted” inventors were to receive artificially narrowed vlaims to permit remediation by claim breadth increase, evidence of pioneering (e.g., the the alteration of landscape test) is only available after the passage of time, defeating the notice function of a patent, since now other inventors would find themselves seeing claims expanded in breadth (and here, I’m assuming the the alteration of landscape test takes longer than the two-year reissue limit) well after drafting, for example a Judge Rich sanctioned design-around.

    Ugh — don’t like this one bit.

  14. 35

    6: “A major con is that it is evidence that we might have to commit the good congressperson to a medical treatment facility.”

    Are you sure that’s not a pro?

  15. 33

    Pros: None

    Cons: It is insanity. It is also offensive to the trained ears that hear it and eyes that read it. A major con is that it is evidence that we might have to commit the good congressperson to a medical treatment facility.

    “Would a better approach be to extend the patent term a number of additional years for inventions determined to be pioneering? (I.e., longer patents instead of broader patents). ”

    If you had to do one or the other then the extension of years is preferable. If “take no action” is a choice then it is preferable.

    15 points woot.

    I thought these law school tests were supposed to be hard.

  16. 31

    >>Next semester Dennis can have a question

    The baboon returns! It is just not the same without an insult from a baboon.

  17. 30

    Put this in the bucket of $tupid way to try to fix a problem. Wasting time of stuff like this is one reason the real problems haven’t been fixed.

    Next semester Dennis can have a question about how to advise a client who comes to you with an old obvious idea and wants to know to go about filing an application based around the idea for the purpose of obtaining licenses or, ideally, a patent from pharmaceutical companies.

  18. 29

    The most important consideration must be whether the invention was created in the bowels of a giant corporation or in an ordinary inventors wonderfully cluttered garage. The future of America depends on protecting the interests of the latter, as it always has.

  19. 28

    The Wright brothers didn’t invent flying. They realized that you needed not one, not two, but three controls to keep the airplane under control. Big deal. You fly with up and down control and see the wind pushing you side to side. So you add a second control. Try that and see you need a third control. They used mechanical engineering control techniques already known. In hindsight, their invention is really unimpressive – applying already known engineering techniques to obvious problems. Just because the implemention helped a few people doesn’t mean the invention itself is pioneering.

    So basically, if you can market your invention to get enough people excited about it, then you got yourself a pioneering patent.

    In that case, I nominate Ron Popeil’s pocket fisherman or his Showtime rotisserie. Now those inventions were product’s of genius and dramatically alter the technology landscape. (“A fishing pole in your pocket? No way! A rotisserie in your home kitchen? It would never fit, dummy.”)

  20. 27

    “Anything considered groundbreaking would be viewed by the PTO as magical, mystifying or voodoo. They would reject it under 101.”

    On the flip side, magical, mystifying, and voodoo are great indicia of nonobviousness.

  21. 26

    Paul, you seem to contradict yourself. How can the question be seriously miss-educational if a “real-world realit[y]” is that said individuals DO have an influence on proposed patent-law changes? I don’t think it’s unrealistic to think that a member of Congress would offer such a silly proposal.

    P.S. I don’t consider D.C. to be a “pure academic.”

  22. 25

    Re: “law school classes are for thinking about questions such as this.”
    True, but that is seriously miss-educational if there is no input of real world realities.
    It is especially dangerous when pure academics and PTO officials who have never really practiced, and rarely communicate with those who do, have undue political influence on proposed patent law changes.

  23. 24

    Forget all that. WE ARE A MARKET!!!! THAT’S WHY WE’RE SUCCESSFUL.

    Let the value of the patent be determined by the money the inventor can collect from the rights granted by the patent during its 20yr pendency.

    THE POINT of patent are to encourage disclosure and advance the useful arts. What’s the point in a patent if you’re giving a longer to term to a great invention or allowing the inventor to stymie improvements by allowing non-enabled claims?

  24. 23

    It’s an exam question. Lighten up people. The patent bar is for learning the rules, law school classes are for thinking about questions such as this. I think it’s a good question even if the proposed rules in dispute aren’t a realistic option for actual implementation.

  25. 22

    Put this in the bucket of $tupid way to try to fix a problem. Wasting time of stuff like this is one reason the real problems haven’t been fixed.

  26. 21

    Anything considered groundbreaking would be viewed by the PTO as magical, mystifying or voodoo. They would reject it under 101.

  27. 20

    Anything wrong with a system in which a fee is payable to the PTO, each year, to maintain the issued patent in force for another year? The fees would be on an ascending scale, so that the only stuff in force is stuff worth keeping in force for another year. The fee for year 3 might be USD 0.5k, for year 10 might be 5k, the one for year 20 might be USD 50k and the one for year 24 might be USD 50m.

    Internationally, there’s nothing to stop term extensions beyond 20 years, is there? Who wants them, except the owners of patents on blockbuster pharma.

    But isn’t all this what every other country does? So there must be something wrong with it. What’s the better solution?

  28. 19

    Furthermore, what is considered a “pioneer” patent is normally only determined long after it issues, by the extent of its subsequent commercial success and the inability of others to “design around” its claims to provide a similar benefit. Such commercial success also requires success in many areas other than patent drafting, including overcoming public resistance to change, financing, testing, manufacturing, marketing, etc.
    [This is the same misunderstanding of foresight versus hindsight reality present in academic proposals for specially examined “golden” patent applications.]

  29. 18

    “might not otherwise satisfy the enablement and written description requirements of Section 112”

    The above does not mean that no written description/enablement requirement would be applied at all. If instead a relaxed requirement is proposed (maybe along the lines of what Ariad wants) and some research exceptions re infringement, it would be easier to come up with some pro style arguments.

    I’d be uncomfortable writing a one sided answer to a policy quesiton on a law school exam.

  30. 17

    Here’s one possible way of determining what qualifies as a “Pioneer Patent.” This would be something that one could apply for near the end of the 20 year patent term by filing for something like a hybrid reissue/reexam, well publicized to the world, with broader claims. Set the examination fee at say, $50,000,000. If Pioneer status is granted (along with broadened claims), then the patentee would have the right to extend the term of his patent an extra 5 years upon payment of a billion dollar maintenance fee (yes, I realize there are international implications here, but I’ve yet to have breakfast). The money collected would be earmarked for basic R&D at NASA, NIH, and whatever other federal agencies we might then still have that are supporting same. (It would not under any circumstances go to banks or be used to encourage the further growth of “financial engineering”, as per my personal prejudices.)

    Dennis, how about a hypo in which applicants are offered a special expedited course of prosecution to obtain “mini patents” having narrowed scope (e.g. no DOE for any of the claims) that would expire five years after the application date? This might speed things up, minimize the dwell time of junk patents in our legal system, and still give inventors documents suitable for framing and listing on their resumes.

    Clearly Mr. Kappos needs to hire me on (that means “for pay”) as a special consultant.

  31. 15

    PROS–
    – Congressman I.N.Venter feels good, gets his/her name on a bill, steals some of the credit from American inventors, and dubs him/herself an “expert” on entrepreneurship.

    – Requiring greater evidence of non-obviousness might speed up prosecution.

    CONS– are overwhelming.
    – Increased burden on the patent office and courts –could create a bureaucratic nightmare: who decides whether something is “pioneering” and when does that decision need to be made?
    – Less predictability: As claims become broader and more abstract, their coverage becomes harder to predict –for both the patentee and would-be competitors
    – Stifling of R&D: Research and innovation within the art covered by the patent would be stifled; motivation to further improve-upon or design-around the claims would be eliminated.
    – Stifling of competition: Practicing the entire art of the patent could become the sole prerogative of the patentee. As a result, cross-licensing of technologies within this art would seldom occur, and end-consumers could see fewer product-choices and higher costs.

    Most importantly, it contradicts fundamental tenants of our patent system. A patent’s exclusionary power is given in consideration for a disclosure that (at least in theory) promotes the progress of science and useful arts. Enablement is the sole means for promoting this progress –by requiring an inventor to disclose, to one skilled in the art, how to make and use the claimed invention. (The written-description requirement, if it survives, serves mainly an evidentiary purpose.) Allowing patents with broader, non-enabled claims, by passing this proposed bill, would facilitate non-disclosure in the specification and thus contradict fundamental tenants of our patent laws. (See e.g., the famous O’Reilly v. Morse case. Morse tried to claim broadly the use of electro-magnetism “however developed” for communicating at a distance, but the Supreme Court invalidated the claim for lack of enablement.)

    Extending patent terms: Not as bad as allowing broader, non-enabled claims, but not necessary, either. At least 2 issues at play here: (1) extending the term as a means to further reward an inventor for a significant contribution; (2) recognizing that embodiments of nascent art covered by a pioneering patent may not be fully exploitable within the patent’s term. Neither of these is adequate justification for term extension.

    Regarding (1), a patent is structured to be a vehicle of commerce and not granted merely in recognition of noteworthy discovery. In theory, an assignee/inventor should be able to obtain higher value during the term for a more significant invention. (Here, an invention’s significance –i.e. how dramatically it alters the technology landscape –should equal its potential usefulness. Thus an invention which dramatically alters the technology landscape should be highly useful (almost essential) within that technology.)

    (2) concerns the situation where infrastructure may not exist to support a market for the invention. The inventor almost certainly knows the state of the art and existing infrastructure. She could choose to sit on her invention until the world catches up, but she runs the risk that someone else will get the patent first. In reality, the landscape-altering subject matter of the patent will likely spawn many more patentable inventions. (E.g., how many airplane-related patents have followed the Wright Bros patent?) Since she can exclude others from making and using her claimed invention, she’ll have a 20-year head start…

  32. 14

    Nothing new under the sun. Look to patchwork Europe for all these ideas explored, in one European country or another, before the European Patent Convention was drafted. Look for how many of them made it into the Convention. Remember the EPO motto, to award a scope of protection commensurate with the magnitude of the contribution to the technical field. Reflect on the EPO’s willingness to recognise the patentability of the mere(!) statement of a problem to be solved (the solution being obvious, once the problem is recognised). Recall Europe’s system of Supplementary Protection Certificates, to carry the term beyond the basic 20 years, when it is just to do so. Show me your evidence that, over the last 30 years in Europe, the basic 101, -2, -3 and -12 provisions, fundamental to any functional patent system, aren’t already working to deliver Sen. Venter’s paradise, here in Europe.

    But then I would say all that, wouldn’t I?

    As Junior mentioned, upstairs, obviousness is binary, Y/N. See how Germany persisted for half a century, in maintaining that it could sustain one level for 20 year patents and a different lower level for 10 year patents. Absurd.

    And anyway, we only find out which patents were pioneering long after we needed to know whether to give them an easy ride through examination.

    And, meanwhile, as we all know, every garage inventor is utterly convinced that his solitary contribution is the once in a century pioneering step forward of genius, and is greatly put out when people decline to recognise that view. Is it not callous and cruel, and generating even more resentment against the patent system, to deny such people their “rights”?

  33. 13

    O’Reilly v. Morse and Halliburton as a hypothetical?

    I suspect the Supremes would find the law unconstitutional as broad claims unsupported by a broad disclosure are said to retard, not advance, the progress of the “useful Arts.”

    Extending the life of certain patents based on well defined criteria might pass constitutional muster though. A pioneering patent would have to be recognized as such by the world at large — there would have to be a well defined peer review as well.

  34. 12

    Exactly what is a “pioneering patent”? (We really don’t know what a non-obvious claim is.)

    What happens when this so-called pioneering patent issues and a close reference is discovered rendering the pioneering patent non-pioneering but still non-obvious? What happens to it during reexam/reissue? During litigation? What happens to the broader 112 requirements?

    Can you petition/appeal an examiner’s holding that the invention is not a pioneer invention?

  35. 11

    …and when does one file for such a “patent” – AFTER establishing that their invention is a “product of genius” and that it has “dramatically alter the technology landscape” or BEFORE. If such a thing can be done, I will go for longer patent term…ha ..ha ..ha

  36. 10

    Pros: Not many. Incentives to own technology fundamental enough to become standard are substantial even without patent rights.

    Cons: Many. Access to technology of fundamental significance is necessary for follow-on innovation. The term for pioneer patents should be shorter, not longer.

    I wrote a paper arguing for an application of the reverse doctrine of equivalents that would permit compulsory licensing of pioneer patents a while back. Prof. Merges suggests the same in a note in his case book with Duffy.

  37. 9

    We can barely agree amongst ourselves on the basics of 101 and 103 – can you imagine the politicking that would accompany attempts to acquire this undefined new right?

  38. 5

    P.S. My answer I’d like to give would be: “I reject the question. Being obvious is a binary state, either it is or it isn’t. This question implies that obviousness is a scale and there is something on the order of a ‘uber’ non-obvious invention.”

    P.P.S. I’d reject your pioneering application for the airplane as it wasn’t uber non-obvious in view of Davinci’s glider and God’s bird.

  39. 4

    Oh great…can’t wait to examine one of these (rolling eyes). Bring on the perpetual motion machines.

  40. 3

    oxy-moronic – greater evidence of nonobviousness for something that “might” not otherwise satisfy … requirements of Section 112.

    just what one might expect from an academic

  41. 2

    Further evidence of a complete lack of understanding of the innovation process as it really occurs as opposed to the Hollywood version.

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