I occasionally receive requests from independent inventors and very small companies (or their non-patent attorney representatives) looking for patent prosecution representation from someone qualified, inexpensive, and open to a fixed-budget who will honest, quality work. Is there a reputable service that helps match prosepective patent attorneys/agents with prosepctive clients? Here are some initial thoughts:
NAPP: The best national resource that I know of for individuals and very small companies is the National Association of Patent Practitioners (NAPP). In my experience, most NAPP members are associated with small law firms and tend to do a better job of working with individuals. The NAPP website has a directory of members that is divided according to location and areas of technology. Of course, the NAPP site does not include any “ratings.” Many local IP Bar Associations also include a referral service. Again, those do not include any attorney ratings.
Getting a Personal Recommendation: An inventor may not know anyone in the industry or even any other local inventors. One easy way to find this type of information is through patent records that are all available online at the USPTO. Using the USPTO search, an inventor can locate other local inventors and then contact them to ask for a recommendation for a patent attorney or patent agent. This is an easy way to network and find a referral. Of course, anyone trying this should be cautious about pre-filing disclosure of the invention.
Self-Help: Read Patent-It-Yourself
, but still hire a patent law professional. The best patents that I have seen are drafted with substantial participation from both inventors and patent law professionals. I have seen high quality patents that were entirely drafted and prosecuted by the non-attorney, non-agent inventor. However, in those instances, the inventor had been through the patenting process dozens of times already—learning lessons through experience. Hospitals are full of well trained and well-meaning professionals. However, any hospitalized patient still needs an advocate in order to make sure the patient is receiving the best care that is most in-line with the needs of the patient. Patent prosecution is the same way, do not expect that you can simply drop-off the invention with the professional and expect that you will receive the type of patent that fills your needs.
Caveat: Since many non-attorneys are likely to read this, I’ll restate the obvious: this is not legal advice.
Other thoughts?
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I have the utmost respect for the positions of our US colleagues. And Max, they are as concerned as we are to obtain a good outcome. But I do not see that a straightforward objecive acknowledgement of a signgle reference, without more, takes the exainer anywhere.
“To be provocative, I will say that I suspect that the real reason why in house counsel forbids outside drafters from including a roadmap is that she has no confidence in the drafting skills of those outside counsel. Thus, basic risk management dictates that the outside drafter be forbidden from playing with fire.”
Actually, this is fairly close to reality. I would not call it no confidence, but more risk management.
Noise urges that:
“providing a roadmap gains more trouble than it is worth”
and he’s well entitled to his opinion.
Meanwhile, I must say that I’m comforted that my common sense coincides with the views of other posters, to the extent that including in the specification a clear, accurate and trustworthy roadmap will help the inventor’s legal prospects and position, rather than hinder it, not just everywhere in the world outside the USA, but also inside the USA as well.
To be provocative, I will say that I suspect that the real reason why in house counsel forbids outside drafters from including a roadmap is that she has no confidence in the drafting skills of those outside counsel. Thus, basic risk management dictates that the outside drafter be forbidden from playing with fire.
The differences between Europe and the USA can be over-stated. If I’m charged with getting an issued European patent revoked, I look forward keenly to finding a lengthy discussion of the prior art because it sometimes gives me great ammunition. (Conversely, when the discussion of the prior art is an accurate and trusty roadmap, it increases the difficulty I have, to persuade the tribunal to revoke).
In short, I’m signing up with Big and Paul.
BigGuy,
First off, my apologies if the snarkfest is getting too much – I will attempt to curb my end.
“…you ever had ridiculous “broadest reasonable interpretation” rejections over art that you had in front of you when you wrote the application?
Yes.
Are you sure that none of those could have been avoided by a brief and accurate description of the distinctions between your invention and that art?
Yes. As noted by other posters – including MAxDrei, the Office ability to take unforseen stands on art is not limited to the art I know about. The point in part being that the examiner’s position is not knowable for either the art I know or the art I do not. Much opposite Paul’s contention, the examiner will use the art supplied as a roadmap, but may not be limited on such excursions. Absent a compelling reason, providing a roadmap gains more trouble than it is worth. I am not saying (when eliminating my hyperbole) that for those (in my opinion, rare) cases in which there are compelling reasons to not discuss prior art, to not do so. KSR has changed the landscape. To say that it has not, is not a defensible position. Once over that hurdle we can discuss the extent of the change, even disagreeing gentlemanly. But to ignore reality and live in the world of pre-KSR as I read the posts, well, how can I not call it as I see it – irresponsible?
“Finally, I’ve tried to be polite, but I’m getting annoyed at your repeated suggestions that anyone that doesn’t agree with everything you say is being irresponsible, committing malpractice, not using best practices, or the like”
See above. I also am reacting to the subtle hints of yours that my position is somehow off-base. I find it annoying that you do use assumptions and strawmen, but alas, this is merely a legal blog and the tools are somewhat limited.
by the by, jon yoo on jon daily
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I’m not asking you to admit you’re wrong, or to agree with me on anything – but enough with the “if you don’t agree with me then you’re a bad lawyer” crap. Please.
“That sounds like something only an Examiner would say!”(TM)
Noise: the quote from KSR concerns United States v Adams and reads The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.” Adams was the positive example, and Anderson’s Black Rock and Sakraida v Ag Pro were the negative examples.
Notably one of the reasons why the objections to patentability failed in Adams was that the advantages relied on were explained in the specification itself. In the words of the Supreme Court, they were not the afterthought of an astute trial lawyer. So if current practice is as you say, it is not supported by case law in the Supreme Court.
“Try again without jumping to the conclusion that having an application that does not discuss the prior art is some sort of underhanded, obfuscation and attempt to obtain a patent on an obvious thing.”
I never said anything like that. I have said that I haven’t seen the legal basis for your apparent presumption that an examiner is somehow empowered to do more with a careful mention of a prior art reference in the specification than he could with the same reference otherwise. I’m afraid that all I’ve gleaned from your posts is that there are “substantial” (but vague) risks from doing so. If all you’re saying is that mentioning prior art increases the risk of bogus APA rejections, then fine. I haven’t seen it, but I’m willing to accept that it happens. But, as others have pointed out, the PTO appears to have no shortage of bogus rejections.
By the way, how do you know that your approach of never mentioning the prior art saves the client time and money, if you’ve never mentioned the prior art in a case? Have you ever had ridiculous “broadest reasonable interpretation” rejections over art that you had in front of you when you wrote the application? Are you sure that none of those could have been avoided by a brief and accurate description of the distinctions between your invention and that art?
Finally, I’ve tried to be polite, but I’m getting annoyed at your repeated suggestions that anyone that doesn’t agree with everything you say is being irresponsible, committing malpractice, not using best practices, or the like. I don’t believe that there’s a single best strategy in even a single representation – to suggest that there’s a single best approach to ALL cases is absurd. I’m not asking you to admit you’re wrong, or to agree with me on anything – but enough with the “if you don’t agree with me then you’re a bad lawyer” crap. Please.
“It is the law of real life.”
Now she’s stealin’ on mah lawl to try to validate her mistaken beliefs. I hold the trademark and the copyright on that lawl, and a patent or two on it’s application in an algorithm to blog comments. Stealing simply is not kosher Noise. I’ll be sendin’ you a few letters shortly.
Paul – I am only pointing out the obvious (pun intended) of practice NOW in the post KSR-world of the US.
Your statement at 4:52 was the first time that you have said this (at least, the first time I am seeing such a post, please correct me and let me know where else you posted such a message), so I guess to answer your unstated first question/statement of that post – let’s try once.
Whether or not the particular quote is mentioned in KSR itself (it might help if you actually supplied the quote), I cannot tell. I CAN tell you just what is going on. You are free to ignore it. You are free to state “It hasn’t happended to me yet”. You are free to do whatever you want. You can even tell me I’m wrong – doesn’t and won’t make it so. Go ahead and close your eyes, repeating the quote you didn’t provide. That won’t change the types of action items from US examiners who will have no clue to what you say. It won’t change the fact that by doing things the way you want and adding “want-to’s” at substantial risk (of various things, not all of which will kill the app, but nonetheless WILL cost your client time and money) rather than sticking with “need-to’s”, you are indeed not acting in best practice with regards to Law as it is applied today.
You can submit that this is not my law – it isn’t. It is the law of real life. I choose to be pragmatic about it. My choice does NOT harm my client nor lesson his rights. We are not talking about claiming less than (nor more than) what I should. My choice saves my clients time and money, reducing future risk.
You will not be able to say the same thing with your methodology applied in the US (at least you cannot say it and not be wrong).
For those in any doubt, it is worth downloading and reading the early chapters of the George Ticknor Curtis book. The introduction explains much about early case law and is inspirational. And as I recall there is an interesting and relevant quote from a decision of Mr Justice Washington (the favorite nephew of George Washington).
Noise: I do not know how many times this needs to be said. That a new result can give patentability to a combination of known features has been known in the UK and the US at least since 1803. It is discussed at length in the superb ante-bellum (1849) textbook by George Ticknor Curtis which can be down-loaded from the antique books section of IP Mall (Franklin Pierce University), and in subsequent editions of his book. That textbook was cited by the US Supreme Court in the Hotchkiss v Greenwood decision which is alleged to be the fountainhead of the law of obviousness in the US. New function has been approved as an indicator of patentability in an unbroken sequence of Supreme Court cases from the early 19th century onwards, including KSR itself.
So you can do real harm by identifying a relevant item of prior art, identifying differences by appropriately drafting the claims, and explaining in the written description what the claimed differences achieve by way of result? Whose law are you reading? Not yours, I submit.
Noise, you write that you realize my:
“..desire to establish the nearest closest art”.
No such desire. This is something over which Applicant has no control, and which she can’t “establish”. The PTO and the Opponent and the Petitioner for Revocation will likely nominate something else. They are 100% free to do so. Paul Cole and I (and anybody who knows anything at all about arguing obviousness in Europe) are in fact thinking of the PSA toggle, between technical features and technical effects.
But never mind. Drafting for success in ROW is not what this thread is all about, is it? So, let’s talk about something else. Like helping independent inventors get patents (although not in ROW).
Nal,
I’m loling @ u.
Sincerly,
6
“…that was my point. But what I’ve learned on this thread is that the PTO won’t notice that your invention is obvious unless you mention the prior art in the specification.”
You have learned the wrong point BigGuy.
Try again without jumping to the conclusion that having an application that does not discuss the prior art is some sort of underhanded, obfuscation and attempt to obtain a patent on an obvious thing.
And while you are it, give Malcolm his straw back (the line of thought concerning perfectly good grounds is a mere strawman).
MaxDrei,
Regardless of what BigGuy posted, the answer to “…selected item of prior art and the results that flow from those differences. – will that do our clients real harm, in the US jurisdiction?” is a Definite yes (hyperbole intended).
Harm comes in many ways and you are doing a “want to” rather than a “need to” and greatly increasing your risk of examiner hindsight and misinterpretation (among other things), and practically guaranteeing that your client will spend more on prosecution (time and money).
I also realize that your PSA bias comes into play with the desire to establish the nearest closest art. Keep in mind that no such tactic works in the US, that the examiner, when eventually forced to provide a solid office action on the merits, rather than a claim keyword search and cobble together something out of what you provided, will apply some broadest unreasonable interpretation and use additional crappy art.
There is absolutely NO REASON to include anything but the absolute requirement when it comes to prior art. Not in the post-KSR world.
“… or, the PTO will reject, reject, reject your claims as obvious on completely spurious grounds when perfectly good grounds are available to them…?”
Does this happen a lot? Every time they find a new reference, and say, there! We cited all the prior art we can find. They never mentioned them.
… or, the PTO will reject, reject, reject your claims as obvious on completely spurious grounds when perfectly good grounds are available to them…?
Yes, H.C., that was my point. But what I’ve learned on this thread is that the PTO won’t notice that your invention is obvious unless you mention the prior art in the specification.
“It will if the invention is obvious.”
Um, if the invention is obvious… then … um …
“will that do our clients real harm, in the US jurisdiction?”
It will if the invention is obvious.
Thanks for the clarification Paul. Good stuff.
Readers, if we follow Paul’s advice, that:
“What is really required is identification of the differences vis-a-vis the selected item of prior art and the results that flow from those differences.”
will that do our clients real harm, in the US jurisdiction?
“I’ll say that NAL’s position is consistent with the attorneys I practice with and the attorneys that I’ve spoken with at CLEs and networking events.”
Very indicative of the circles you run in 🙁
Thank you for the clarification Paul.
My comments were clearly directed to US practice.
Just to put European practice in perspective, a good European practitioner should select a single reference that (a) is in the field of endeavour in which the invention arises, (b) if there are several such references then that one which is most closely relevant to the technical problem that the inventor believes he has solved, and (c) if there are several references in category (b) then that one which has the most featues in common with that invention. The background section should then state the disclosure of that reference, if possible in its own language, and if appropriate pointing out any relevant properties that the teaching of that reference achieves/fails to achieve.
There is no reason to go beyond the disclosure of that reference in its own words, and introducing argument creates its own problems and is in general dangerous for the reasons well known to Noise and Night Rider which are also well understood by good European practitioners. The background section should not take the position that the art had progressed beyond the position that that had indeed reached at the relevant time, and going beyond that point is one of the most common and serious mistakes in specification drafting.
There is every reason to avoid object clauses or statements of the technical problem (unless there really is one and it is a matter of common genral knowledge in the art). What is really required is identification of the differences vis-a-vis the selected item of prior art and the results that flow from those differences.
There are strong arguments that it is dangerous to discuss more than one reference in the Background section because it is inadvisable to associate in the specification items of prior art that may never have previously been associated by those skilled in the art.
Like all rules there are exceptions and sometimes there are several references within the field of endeavour which can advantageously be discussed. But in general the reader should find the invention on page two of the word-processed specification, not page fifteen. This practice is followed in the mechanical and electrical arts, but less so in the chemical arts where longer prior art discussions are the norm (but objections of lack of inventive step commonly fail). But a good European introduction should use as few words as a good US introduction, and may well say less rather than more about the prior art than its US counterpart, at lest at the date of filing.
The above approach should give the examiner no more ammunition than the IDS because it sticks as closely as possible to the actual disclosure of the selected reference(s), with NOTHING added. There is nothing lost by naming the reference which goes into the background section because it also goes into the IDS and the same words will be read by the examiner. It is better than the general discursive style used by some US colleagues because it is more objective and specific and is tied to the disclosure of a SINGLE reference (as the usual case), and because it gives the reader of the specification itself the impression that the inventor and his/her attorney knew the art, at least to some extent. It avoids incautious admissions based on woolly generalisation e.g. the infamous admission in the Windsurfing patent that it had previously been known to associate a sail with a surfboard. And it is in accordance with International practice. A good many up-sides and few down-sides, and wholly consistent with the understandable and legitimate concerns of our US colleagues.
Well, I’ve lost track of what the argument is. The study on Peter Zura’s blog is interesting, but it doesn’t really tell us much about KSR’s impact on prosecution. You’re clearly correct that KSR has had some effects – one of those that I’ve seen personally (and that is borne out by that study) is that district courts are much more willing to address obviousness on summary judgment, thanks to KSR- that fact alone will get you more obviousness holdings, at both the district court and at the Federal Circuit. (Before, defendants with only an obviousness defense were more likely to settle before the issue was finally adjudicated.) But I’m still not convinced that KSR has had any meaningful impact on the obviousness determinations at the patent office. In any event, the study at Zura’s site doesn’t tell us how many of those obviousness determinations were based on “admitted prior art” – I bet not many…
In any event, I’m not here to convert anyone. I’ll just go back to my irresponsible patent prosecution…
I’ll say that NAL’s position is consistent with the attorneys I practice with and the attorneys that I’ve spoken with at CLEs and networking events.
…In fact, the article bolsters my position of letting the Office do the examination (the IDS gives the material to the Office – they get to examine it and make comments about what level of pertinancy to apply):
“As far as Microsoft’s claim that the i4i patent at issue should be invalidated, Greer says she didn’t buy that argument: “I really felt like with experts in the patent office…they knew what they were doing. I suppose I really have a lot of confidence in the U.S. patent office.” ”
Paul,
The article does nothing to bolster your position on this matter. Let’s put that red herring away.
There is nothing tricky or clandestine about following the law in the post-KSR world. ANY (in intended hyperbole) discussion of prior art that is absolutely not required is simply NOT the equivalent of “hiding the facts” or any such concealment. You are still jumping to the wrong conclusion. Not going above and beyond the legal requirements (such as eliminating the “like-to’s” which have become quite simply “don’t-do’s”) is not dishonest or in any way relatable to the what the Jury disliked. The Texas jury comments simply do not extend to cover the legal position that I am discussing.
As mentioned above, this is a pragmatic application of what the Law has evolved to.
BigGuy,
“Respectfully, it appears to me that your argument is premised on two misconceptions. The first (which I’ll agree is a subject of considerable debate) is that KSR changed anything at all”
– see above.
“Second, your argument appears to be premised on the idea that the PTO can somehow do more with the prior art when it’s discussed in the application than when it’s simply listed in an IDS. I don’t see how that follows from a legal standpoint, and I certainly haven’t seen it in practice. ”
– You are falling to a similar “eyeglasses” fallacy that MaxDrei falls to. It-hasn’t-happend-to-me is a rather shallow legal position to put forth. As to the following from legal standpoint, I’ll simply direct you to the IDS section and ask you to read the part concerning admission as to prior art status, and bank on the possibility that you as a practicioner realize that what you pur into an application is de facto admitted prior art (based on where in the application and/or how so phrased). I am unclear just how you find this to be a debatable issue in my premise, or how you can label it a misconception.
Paul,
I am not wrong. I speak to matters of law, rather than to matters of fact and thus my comments are not impacted by any such jury reaction. Try again to address my points under the proper legal setting without conflating issues.
Mud slinging happens no matter what – a case in point being charges of inequitable conduct – that mud is thrown so often, yet see how well that sticks when the Law is followed.
Noise: If you want to know why you are wrong, just go to the Joe Mullin article concerning the jury reaction in the Microsoft case, for which a link has just been posted today by Dennis. A very revealing document which everyone should read. If the jury gets the impression that the patentees are deceitful or tricky, then the patent has the viability of the famous Mr Praline parrot. And with the IDS in the file wrapper, don’t think that there is not a huge opportunity for a good litigation attorney to make the patentee or its representatives look small. The litigation attorneys for the defendants are not usually friendly: they are professionally skilled in identifying mud and throwing it. In a jury trial such as you have in the US, mud sticks.
…and that is but one study on one effect – not even touching the profound effect of Examiner use (by Examiner use I include the examiners of the BPAI – who are we kidding by titling that group as a pseudo-judiciary? – they are but the strong arm minions of the executive branch Office).
For the benefit of BigGuy (I would add 6, but I doubt that the article would penetrate the shield of persistent ignorance), Peter Zura has a post on the effects of KSR at:
link to 271patent.blogspot.com
Obviously BigGuy – just because you are not being affected does not mean that there is no effect.
Filter is again active –
Sorry Paul, but your argument of
“So you filed this patent application, but made no prior art search? Isn’t that a bit like crossing the street without looking for on-coming vehicles?”
does not wash.
That’s a bit like asking when did you stop beating your mother.
The simple answer to such a question in a litigation setting is to state that there is NO requirement to do a prior art search, or in your strawman – but your honor, I was NOT crossing the road…
“…Oh you did! But you kept the evaluation all to yourself.”
Another strawman position – by and large the readership hear knows that you are required by law to share your pertinent knowledge and best practices indicate that you share ALL knowledge so that the rather automatic charge of inequitable conduct finds no traction in this instance.
You have made the same jump to the conclusion that BigGuy did above – You need to realize that the general premise is that there is no “concealment”. The proper place for sharing prior art is not in one’s application. It is in an IDS. The IDS forces the examiner to do HIS job of examining, removes any inadvertent or mis-analysis from your pen, and insulates the possibility of admissions against your client’s interests (IDS explicitly states that the information supplied is not an admission of prior art).
“How can any practitioner anywhere reasonably be criticised for following this internationally agreed and legally recognised standard?”
– because that’s not the law for US applications. You are making the same “eyeglasses” mistake that MaxDrei consistently does.
The original question was how do you find a good patent attorney or agent. Some of the answer, as I indicated in my earlier posting, is to provide a good write-up and educate the attorney or agent yourself. But somehow the discussion morphed into the merits of KSR and how prosecution attorneys should handle the issues it creates. That demonstrates, if demonstration were needed, the trauma that this decision has created amongst our US colleagues.
As to identifying the prior art in the introduction, the US-Europe arguments have perhaps become a little blinkered. There are worries about how the examiner might interpret the prior art, and worries about inequitable conduct issues. But litigation is painful process, and whatever the inventor and his or her prosecution attorneys do, their actions are liable to give rise to argument in court. Just think of the line of questioning a good litigator could take if there is a bland and valueless prior art discussion. “So you filed this patent application, but made no prior art search? Isn’t that a bit like crossing the street without looking for on-coming vehicles? Oh, you did make a search, but didn’t tell anyone about it! Didn’t you evaluate the results? Oh you did! But you kept the evaluation all to yourself. Didn’t you think that others might be interested – the US public, not to mention the USPTO examiner? Why did you decide to conceal this useful information?” It would be difficult to survive this line of questioning without looking like a fool or a trickster. While care in drafting the background section is obviously essential, and respect must be accorded to the views current amongst many US practitioners, the arguments do not all point in a single direction. And undoubtedly the bland format currently recommended in the US may not be the best for many other countries and is directly contrary to Rule 5 of the Regulations under the PCT. It should be recalled that the US was arguably the moving spirit behind the PCT, and that the US is a signatory to that treaty. But for some reason Rule 5 and its requirements have not yet found their way into the discussion of US legal issues.
To avoid any possible mistake, the provisions of Rule 5.1 are set out below:
5.1 Manner of the Description
(a) The description shall first state the title of the invention as appearing in the request and shall:
(i) specify the technical field to which the invention relates;
(ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
(iv) briefly describe the figures in the drawings, if any;
(v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;
(vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
(b) The manner and order specified in paragraph (a) shall be followed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.
(c) Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions.
How can any practitioner anywhere reasonably be criticised for following this internationally agreed and legally recognised standard?
I should have discussed in my earlier posting the issue of drafting teams. Just before 1900 Marconi came to the UK to develop and patent his wireless telegraphy inventions, and in particular the improved detector (coherer) that he had developed. Eventially he was advised to use, and in fact used, a full drafting team: himself as inventor, an independent technical expert (Preece, an engineer from the Post Office), Carpmael (a patent agent) and John Fletcher Moulton Q.C. (a leading litigator and member of the patent bar). Earlier in my career while I was prosecuting the patent which was subsequently litigated in A.C. Edwards v Acme Signs an identically constituted team was used because to do otherwise and to economise on resources at that stage would have created problems in the subsequent litigation. So if you have a really important invention you need the specification to be considered carefully from the same four standpoints: inventor, independent expert, prosecution attorney and litigation attorney. An expensive team, but how expensive is it to have an unenforceable patent covering a valuable invention? Of course it is often necessary to economise and expenditure must be proportionate, but don’t think that it is easy to obtain the same result with a smaller team.
Not necessarily a Primrose Path, MaxDrei, simply a path in a different forest.
It’s like saying that you should wear my glasses because they work so well for me that they will work for you.
Your tendency to advocate what you love overcomes your tendency to remember the differences in legal systems, causing you to make suggestions that won’t work.
Another thought (and a deliberately provocative one, to refresh the thread): What to do when that PTO Exr makes an unreasonable obviousness objection, when it doesn’t work any more (post-KSR) to write that the law doesn’t permit the objection?
Why, argue the merits, cogently and persuasively, from a PHOSITA (rather than a lawyer) mindset.
And that, for some lawyers, is hard.
But EPO-PSA can help. It is as handy a tool for the inventor’s advocate as for the PTO Exr, as thousdands of disputed opposition proceedings in the EPO can attest.
So, my tip, ladies and gentlemen trying to get your clients patents out of the USPTO, practise EPO-PSA. It can get you a long way.
But is it the Primrose Path? If it is, I’m sure I will now be told.
Big: you wrote:-
“Regarding KSR’s effects on unseasoned examiners, I probably didn’t make myself clear – I’ve absolutely seen rejections that attempt to apply KSR, e.g., with ridiculous “obvious to try” rationales. What I did mean to say is that these post-KSR rejections aren’t any more likely to stick than the old ones.”
Probably? No, wrong. I understood from the outset, and if I did then most everybody else did too. Some exceptions, it seems, but hey, exceptional people are nothing unusual.
“If there is any validation to my position, it is clinched with 6 agreeing with you. My condolences.”
But on second thought, even a broken watch is right twice a day…
“If there is any validation to my position, it is clinched with 6 agreeing with you. My condolences.”
That thought crossed my mind, too. I appreciate your sympathy.
Regarding KSR’s effects on unseasoned examiners, I probably didn’t make myself clear – I’ve absolutely seen rejections that attempt to apply KSR, e.g., with ridiculous “obvious to try” rationales. What I did mean to say is that these post-KSR rejections aren’t any more likely to stick than the old ones.
“it is clinched with 6 agreeing with you”
I wouldn’t say that “I” necessarily agree with him, so you can save your condolences. It just so happens that the reputable firms of your industry agree with him.
“Not. Even. Close. Bub.”
Listen, don’t feel bad. I already apologized for being mean. To make it up to you I’ll even let you make me a sandwich if you want to.
“the irreducible minimum of recitation about the relevant state of the art to…
MaxDrei – in the US, that would be zero.
BigGuy – My post is not meant to impugn you at all. If you haven’t seen KSR effects, I can asure you – they are very real, especially with unseasoned examiners.
If there is any validation to my position, it is clinched with 6 agreeing with you. My condolences.
6 – “Which, as a matter of fact, in Noise’s case I can confirm based upon the firm.”
Not. Even. Close. Bub.
Who can say?
But fine, I didn’t mean to necessarily condescend Noise personally. She was just a handy target and her post, coupled with the fact that I know who she is, made it too easy.
I apologize to Noise for being mean to her personally. And her firm for spreading the word.
6: was that necessary?
“The PTO either finds good art or it doesn’t; I don’t usually worry very much about what nonsense the examiner puts in his “analysis.”
”
As it should be. The “analysis” is mere judicial nonsense anyway. Judicial proclaimations come and go, but the statute says what it says and doesn’t oft change.
“I’ll refrain from suggesting that an approach that differs from mine is irresponsible or comprises either malpractice or inequitable conduct, without access to any other facts. ”
Indeed, all you should suggest is that an approach that differs from the one you wrote down is low quality representation. Which, as a matter of fact, in Noise’s case I can confirm based upon the firm.
I would venture a guess, hazard perhaps, that Big is probably one of the better lawyers that posts here regularly. At least based upon his last post.
There are your tier 1 law firms and your tier 2 law firms. Noise’s and Big’s difference of opinion demonstrates nicely the distinctions between the two.
When Big Guy writes:
“Once I’ve clearly distinguished my invention from a particular prior art technique, it’s more difficult to say that my claim actually reads on that technique.”
he’s on my line.
But I’m coming from Europe, where it’s also more difficult to say that my claim, thus distinguished, is directed to something that is obvious.
I gather from the thread that, when I include in my PCT specification the irreducible minimum of recitation about the relevant state of the art to reveal what contribution to the art the inventor has made, I am balancing a risk of excessively creative or unreasonable and unrealistic objections from the USPTO with a risk (if I omit that recitation) of not getting a patent at all, anywhere else in the world where the app will be examined on its real merits.
Yet another example of the ROW being out of step with everybody else?
Is there no statutory requirement in the USA that the specification shall include a written description of “the invention” (as opposed to an enabling disclosure of one or more embodiments of it)?
“BOO HOO HOO HOO HOO HOO HOOO!!!!”
That was probably unnecessary. Are you worried about your posting percentage on this thread?
But, BigGuy, as you said it may just be different art areas.
KSR has affected my practice.
BOO HOO HOO HOO HOO HOO HOOO!!!!
Get over it already.
BigGuy: My experience is more APA rejections with the examiner saying that the invention is obvious over the APA or the examiner pulling in lame prior art and using the examiner’s common sense to combine. KSR has affected my practice.
I don’t know anyone in real life that takes your position.
“Adding niceties that do not benefit the first objective of obtaining a patent and that also raise the risk (and in a post-KSR world, the risk is substantial) is simply irresponsible advocating. To be stuck in an old way of prosecuting when the law around you evolves is irresponsible.”
Apparently the argument is evolving as well. First we were treated to ominous suggestions that discussing prior art would “destroy your client’s rights” and would constitute malpractice. Then we were told (by another commenter) that discussing prior art could bring charges of inequitable conduct. Now it is suggested that discussing prior art is “simply irresponsible advocating.” (You’ll have to forgive me, NAL, if I’m reading too much into your comments, but unless we assume that you’re talking about discussions of prior art, your statement that “Adding niceties that do not benefit the first objective of obtaining a patent and that also raise the risk … is simply irresponsible advocating” is nothing more than a not very helpful truism. But at least I haven’t accused you of being an irresponsible advocate.)
Respectfully, it appears to me that your argument is premised on two misconceptions. The first (which I’ll agree is a subject of considerable debate) is that KSR changed anything at all. I’m sure your practice is different than mine (or at least more responsible than mine), but I have seen no evidence that KSR has had any real impact on how rejections are generated. It appears that few examiners have any real understanding of how to apply KSR – I assume that’s due to a lack of training. The art is what matters. The PTO either finds good art or it doesn’t; I don’t usually worry very much about what nonsense the examiner puts in his “analysis.”
That said, I also haven’t seen any cases at the BPAI or Federal Circuit that strike me as obvious under KSR but wouldn’t have been obvious under TSM. So in the meantime, I think all this “post-KSR” stuff is overblown.
Second, your argument appears to be premised on the idea that the PTO can somehow do more with the prior art when it’s discussed in the application than when it’s simply listed in an IDS. I don’t see how that follows from a legal standpoint, and I certainly haven’t seen it in practice. Indeed, I very rarely encounter rejections based on “Admitted Prior Art”, and the few that I do are usually dispensed with pretty easily.
As to whether there’s a “need” to discuss prior art or whether it’s a “nicety,” I submit that this is a false dichotomy. There are a lot of things in legal practice that fall somewhere between an absolute “need” and merely a “nicety”. As I mentioned before, a careful discussion of a particularly relevant document can be useful in putting the present invention in context. I also believe (this is hard to prove, admittedly) that a careful discussion of the prior art actually makes it MORE difficult to sweep in that prior art under the PTO’s “broadest [Un]reasonable interpretation” approach to the claims. Once I’ve clearly distinguished my invention from a particular prior art technique, it’s more difficult to say that my claim actually reads on that technique.
I’ll refrain from suggesting that an approach that differs from mine is irresponsible or comprises either malpractice or inequitable conduct, without access to any other facts. Perhaps the types of cases I work on are just different than yours…
I agree with NAL. APA + common sense = rejection almost always.
MaxDrei,
Are you in your fun mode or your learning mode? Should I be charging you?
Jesting aside, you ask if relying on the bare proposition that an applicant entitled to a patent (for the invention disclosed and enabled – my assumption) without noting any relation to prior art is a bit risky or over-optimistic in a post-KSR environment (let me know if this is not an accurate paraphrase).
The answer is quite the reverse of what you intimate– including anything in relation to prior art is actually the risky maneuver. It is simply NOT a requirement to show any type of incremental advance, and it is NOT the applicant’s job to establish the baseline of the prior art – that’s the Office’s job. I am not sure what you think KSR did or did not do, but it appears that you think that KSR somehow made it more difficult for the Office to put together rejections, and that giving the Office more ammunition is somehow a good thing. To be clear, I am not advocating the assumption that BigGuy jumped to as to hiding or obfuscating anything – my premise remains that the application meets the Law as to enablement description.
As to over-optimistic, need I remind you that the law is “A person shall be entitled to a patent unless…”
To your other question of the applicant being required to somehow show the subject matter in some way over the prior art in order to combat skepticism of the reader, the answer is a very easy “No – there is no such requirement.” Skepticism is not a valid reason for rejection under the Law. Never has been. In the Post-KSR world, skepticism is the lesser evil to be faced.
While I was brought up with the mindset that a patent application should be written with the various audiences in mind – including the examiner, the lay public, the judge in any possible litigation mode, you have to realize that you need to actually GET the patent in the first place for any secondary audiences to even matter. Specifically, in a post-KSR world, this means that a lot of the “like-to’s” are quite simply now “don’t-do’s”. This is a purely pragmatic result of the ruling and its subsequent application by the Office (the Law of unforeseen consequences, as it were). Keep in mind that the “rules of the game” may punish you for sharing ANYTHING that is extra to what you need to discuss in the immediate application at hand. There is rarely (I’ll shy away from the hyperbole and not say never) any NEED to address prior art when discussing a client’s invention. Anything you say and put on the record can, and likely will, be twisted (BigGuy, as Lionel aptly put, there are other concens beyond merely inequitable conduct – the Office’s expansive reading beyond what is actually taught is also a concern). Adding niceties that do not benefit the first objective of obtaining a patent and that also raise the risk (and in a post-KSR world, the risk is substantial) is simply irresponsible advocating. To be stuck in an old way of prosecuting when the law around you evolves is irresponsible.
Max,
I meant specifically describing particular patents.
Joe
Lionel, you write that you:
“…like Europe where there most EPO prosecutors do not describe the prior art.”
That set me thinking about what writers mean by “the prior art”. Specifically, it could be what is within the common general knowledge of the skilled person, or it could be the disclosure of one particular published patent document. I grant you, there are risks in including either of these in your specification.
But if sceptical readers of your specification are to be brought to a positive view, that the inventor has made a patentable contribution to the art, then somehow you have to show the reader what it is that the subject matter of claim 1 does, which the “prior art” doesn’t do, no? And, to do that, don’t you have to include some sort of characterization of “the prior art”?
Or does every drafter simply rely on the proposition: “I’m entitled to a patent until you can prove otherwise.” Isn’t that a bit risky, or over-optimistic, post-KSR?
Big Guy,
I like Europe where there most EPO prosecutors do not describe the prior art.
Describing the prior art is not a problem as long as it is done artfully. When I used to describe the prior art, I usually quoted language from the patent itself with minor edits for readability. What has been more of a hindrance to practitioners is that in summarizing what a patent discloses they have used language that has been interpreted more broadly or as an admission of something the patent does not actually show.
I don’t summarize the prior art as it’s a waste of my time and I assume the Examiner can read and understand what I submit in the IDS.
“I understand that obfuscation of the invention is a viable strategy, and one that is taught as a primary (exclusive?) strategy in some high-priced patent-drafting classes.”
This has not been my experience. I have been taught not to emphasize the importance of any particular aspect of the invention. However, I still clearly describe the invention.
I do not think that there is much difference between Big Guy’s approach and the way we view things in Europe.
I would add/state the following:
Read and understand Patent It Yourself. Fully and completely.
Completely read and understand at least 25-50 (as recent as possible) issued and pending patents in the field/s/ class/es/ category/ies your invention falls in.
Read all current and (especially in the last year) past postings (including all comments) to this and other professional-run patent blogs. Continue to do so at least through the prosecution of your inventions through the PTO; if not for the rest of your life.
Even with all this, you STILL hire and work with a good, experienced, patent attorney (or agent) who’s filed and prosecuted to allowance/ issuance at least 10-25 patents; and who has at least several in the pipeline; in the same field as your invention.
“You’re opening up a) inequitable conduct for intentinally misrepresenting the state of the prior art…”
Respectfully – psshaw. Can you point me to one case where inequitable conduct has even been alleged on the basis of a discussion of the prior art in the written description of the patent application?
My best clients provide me with invention disclosures where the inventors are pretty confident of what “the point of novelty” is, and these clients happen to insist on an application that clearly articulates what the actual invention is. These clients also don’t hesitate to kill a case that looks like it really was obvious.
Sometimes (not always) a clear and concise description of previous approaches is helpful in making the inventive step crystal clear. In those cases, I describe the prior art that is useful for putting the invention in context, taking care not to say any more than the reference itself says. If the examiner or the court want to engage in unwarranted hindsight reconstruction, they can do it with or without my help.
I understand that obfuscation of the invention is a viable strategy, and one that is taught as a primary (exclusive?) strategy in some high-priced patent-drafting classes. It strikes me that this is a particularly useful strategy if the patent drafter doesn’t understand the invention – from what I’ve seen, more than a few attorneys make a healthy living not understanding the inventions they attempt to claim. Of course, if neither I nor the inventor has a clear idea of what the exact scope of the invention is, then I’m extremely careful to say very little about what the invention is NOT(which is what a discussion of the prior art is actually doing).
Incidentally, I think an inartfully worded “problem statement” can do more harm than a careful discussion of relevant prior art. By the way, Bad Joke, how can you say “this approach results in X” if you don’t say what “this approach” is?
Lionel, I also leave in a problem statement.
“This approach results in X.” And just leave it at that. No need to say it’s a problem or deficiency in the prior art to be solved by the invention or any other obvious dicta.
Big Guy, the point you’re missing is that while you may think you’re accurately describing the prior art at the time that you’re writing the application, that’s not the prism through which that background section will be read. It will be fully read in hindsight. You’re opening up a) inequitable conduct for intentinally misrepresenting the state of the prior art and b) inadvertantly making statements that destroy the point of novelty of the invention as interpreted in light of the intervening advancements in the art.
If the invention is a light ballast, I usually talk about the bulb being driven in the background. Saying anything other than, “Ballasts provie power to light bulbs,” I think to be an unnecessary risk.
That’s just fine with me, Lionel. You just keep right on doing what you think is best. I’m happy for you. Perhaps I’ve got it all wrong. Who really knows? Plenty of room for us all to make money, all in our individual way, in the best way we know, each of us relying on the experience we have accrued to date. We live and learn, that’s the joy of this profession.
For colleague European patent attorneys: I’m thinking of Art 56/Art 123(2) squeeze attacks. I expect them to intensify, year on year.
Max having overseen the filing and prosecution of many EPO patents I have found no problem with eliminating most of the background and the entire discussion of prior art. The one thing I do keep in is a general problem statement.
MaxDrei,
I would, but I want clients to come to me for that valuable information.
😉
Noise I thought the CAFC handled Bilski with kid gloves because they were dealing with SCOTUS dicta. I had thought that SCOTUS in KSR gives the CAFC more than enough room to smack down over-zealous spinning of KSR by out of control USPTO Examiners.
But correct me, do.
>>the pants in the relationship
Rader will do battle with the SCOTUS.
BigGuy and MaxDrei are correct with my hyperbole.
Let me rephrase my post as, without extreme reason for doing so, it is downright reckless to do as suggested above.
BigGuy, the problem you will run into is NOT that YOUR description of the prior art is accurate or not; but rather, the fact that you do NOT control how an examiner will read that art. Knowingly inviting such (reckless) action, is simply not what a prudent or reasonable advocate would (or should) do. So to the extent that you acted beyond what a reasonable advocate would do, you do open yourself up to an actionable claim. Put even more simply – what possible benefit is there for you to address the prior art?
As I further mentioned – put the references in an IDS and do NOT discuss them in an application (unless absolutely necessary).
MaxDrei, The CAFC will NOT put in a corrective touch on the tiller – their hands are still smarting from the smack of the Supremes – witness the Bilski write-up, specifically NOT making an iron-clad hard decision, but rather, teeing the case up for a Supreme decision. Michel and the rest of the CAFC have abdicated the pants in the relationship.
Night, you answer whichever questions you please and I’ll answer whichever questions I please. Feel free. Hmmmmmmmmmmm.
Noise, I wonder whether Examiners at the PTO are currently leveraging KSR more than is legitimate or would be countenanced by SCOTUS or approved by the CAFC. I wonder whether the tippers are over-reacting to current Examiner behaviour. How long before the CAFC puts in a corrective touch on the tiller? I’m sceptical that KSR makes it mandatory on competent attorneys to jump direct from the Title to the Detailed Description.
Methinks I’m not the only one round here that indulges in a spot of hyperbole.
“UNTIL what goes around does come back around (e.g. KSR is revised/abolished), you would be doing your clients a grave (read that – actionable) disservice to knowingly follow a path that destroys your client’s rights in a US filing.”
Are you suggesting that accurately describing prior art in a patent application can give rise to malpractice? I’m not sure I buy that.
Like most patent-drafting tips that are phrased in the absolute (such as “Never use the word ‘invention'”), I don’t accept the notion that prior art should never be discussed in an application.
MaxDrei,
UNTIL what goes around does come back around (e.g. KSR is revised/abolished), you would be doing your clients a grave (read that – actionable) disservice to knowingly follow a path that destroys your client’s rights in a US filing.
You will have to add more detail to your “serious risk that it will be catastrophic for non-US prosecution”. How so, especially if the application is otherwise well written (enabled, etc)?
Further to NWPA’s point, wanting to learn is admirable, wanting to have fun is OK (as long as you are aware of potential damage to your credibility), and wanting to be selfish is entirely up to you – I find it very disappointing that you want to take but not give, but that is how it is, no?
To Nate and Paul,
Given the position on KSR, any such story telling by the inventor to the attorney will need to be captured on an IDS. Save yourself from pain downthe road, put it there and leave it out of the application.
So, I am to answer your questions and you won’t answer mine?
Hmmm….
Night if you were my client I would be explaining to you. But I want my clients to get from me stuff they can’t get elsewhere, and be happy to pay me for it so, if you don’t mind, I’ll let you find out from others, or from your own experience in due course, what can happen in Europe if you faithfully follow the advice of the tippers.
BTW, these in house tippers, are they in house in American engineering corporations that regard Europe as a key jurisdiction. What do specifications look like, that are paid for by, say, BMW, VW or Mercedes?
By the way, these are tippers as you say, but some of the most experienced in-house patent attorneys in the country that write guidelines for drafting applications for thier companies.
>>There’s a serious risk that it will be >>catastrophic for non-US prosecution but I >>guess that’s not a matter of any importance.
How? At the EPO they seem happy to allow an amendment to the specification. I haven’t seen a problem with this in other countries either, I’d be interested in any potential problem.
Suzy, thanks for that. Do the tippers ever mention any possible downside to diligently refraining from any mention of the relevant art or any summary of the inventive concept and contribution to the art? There’s a serious risk that it will be catastrophic for non-US prosecution but I guess that’s not a matter of any importance. Me, I’m just an old fuddy-duddy, who goes back nearly 40 years and suspects that what goes around comes around. I’m thinking that good drafting is timeless, and the tippers will soon be proved wrong, even for domestic drafting.
I second Paul Cole’s comment. A journal-quality paper about the invention is about the best invention disclosure I can think of. Then the attorney can thoroughly review the paper and debrief the inventor, before going on to draft the application.