- Searching: The Patent Librarian (Michael White) reports that esp@cenet now has new search functionality.
- Searching: I am enjoying a new blog by the patent searchers at Landon IP: The Intellogist.
- Job: The non-profit PIIPA (Public Interest Intellectual Property Advisors) is looking to hire a new executive director.
- Job: The USPTO appears to be hiring examiners again to fill “many vacancies.” [Link] However, the jobs are not yet listed here.
- Jobs:
Section 292 (False marking): PATracer reports on a district court decision in favor of Target — holding that the retailer is not liable for false marking even if it knowinly sold products that were falsely marked. [LINK]- Divided Infringement: PATracer also reports on an interesting non-infringement decision in favor of DirecTV based on the company’s outsourcing of customer support operations. “DirecTV can not be liable for direct infringement of an asserted claim if the evidence demonstrates that DirecTV neither performs by itself nor directs nor controls a third party’s performance of any one element of the claim.” [LINK]
Section 292 (False marking): PATracer reports on a district court decision in favor of Target — holding that the retailer is not liable for false marking even if it knowinly sold products that were falsely marked. [
Ned
You can get a free, searchable pdf version of the EPO
Case Law of the Boards of Appeal (Fifth edition 2006), with extensive discussion of EPO practice on inventive step, PSA etc, here:
link to epo.org
and a supplement – Special edition 6/2007 – EPO Board of Appeal Case Law (PDF, 1.5 MB) –
here
link to epo.org
Decisions of the Enlarged Board of Appeal are here
link to epo.org
but I’m not aware of any EBA decision specifically dealing with inventive step
All, wrt to patents, direct infringement is require for there to any liability for contributory infringement or inducement. There are statutory exceptions related to sales abroad.
To infringe a claim, one party must do or control all elements of the claim to directly infringe.
In may business method claims, the method will involve interactions among different parties, some of whom may act independently. In such cases, there is no direct infringement and, for this reason, there is no indirect infringement as well.
MaxDrei, can you give us a link to an enlarged board of appeal decision discussing “inventive step?”
IF I knew of a database that covered old Swiss patents and let you search by the examiner’s name, I would be looking for Einstein right now. Unfortunately, I’m pretty sure there is no such database, and even if there were, I don’t think you could look at the filewrappers without a trip to Geneva, and maybe not even then. It’s a fascinating thought, though.
PS: Yes, I know he was German, but he had left Germany by then.
Thanks! Has anyone heard anything about rapidshare search engines( http://www.rapidsharemix.com )?
Thanks for the item about the new Intellogist patent law blog. Looks like it’s off to a good start.
Patents are a necessary evil. Done right, they promote the progress. Done wrong, they are glue in the cogs of industry. Too low a bar for patentability = higher glue factor.
End of
IANAE: You just describe a problem we encounter every day: the scope of a broad claims (accidentally or not) includes a new invention. The only solution is licensing.
Hagbard: I agree that you can rarely if ever prove that success of a product arises from some tiny feature, but I believe that isn’t relevant. If success is just due to clever marketing, then competitors can make the same thing without the feature. In the worst case where the tiny feature is patented but not responsible for the product’s success, who cares? Society gained because the Inventor set up a successful business.
Dert: I don’t think patents give you a guaranteed return. In fact they are so expensive they often drain a company. They provide an entrepreneur with some insurance that if he or she does everything else right, some big company won’t steal all the profits.
I think the non-practicing entity problem is a separate issue that occurs because some inventor patents an idea and doesn’t practice it, and in a few years down the line when the idea becomes important they try to collect on others’ work. This problem potentially exists even when the invention is patentable under the most rigorous requirements.
a patent system with no obviousness standard in this day and age would be Troll Heaven, no?
Wouldn’t it be amusing if you got a patent on some earth-shattering invention, but you couldn’t sell it because someone else got a patent on the same thing painted blue?
Okay, maybe “amusing” is the wrong word.
Max
My intention was to draw a distinction between ex parte pre-grant examination by the PTO and post-grant inter partes proceedings, so I don’t think we disagree – of course EPO-PSA applies in post grant EPO oppositions.
Erez
A PTO process that errs on the side of the applicant can take account of arguments that a seemingly tiny difference is in fact very important for one reason or another. Actually proving that a particular feature of a patent claim is the key to the commercial success of a corresponding product is notoriously difficult though.
Another thought – a patent system with no obviousness standard in this day and age would be Troll Heaven, no?
Erez, I agree that it takes a lot of time and effort to market a product and make it successful. I was taking issue with the statement that the purpose of patents is to provide a guaranteed return on R&D costs. I would not lump marketing costs into R&D costs. And the purpose of patents cannot be to provide a guaranteed return on marketing costs because the patentee is not required to invest any time or effort into marketing the patented invention (i.e. why should there be a guaranteed return on zero cost). If patents were a “use or lose” property right we wouldn’t be seeing many of the problems we see today.
I don’t really see how you can say the market is the best filter for obviousness and advocate for patents either. If the market is the best filter, we should abolish patents and those that produce the best inventions and market them the best would make money and those that don’t wouldn’t. (I’m playing devil’s advocate and I’m not saying that’s the way it would really work out. Microsoft had already dominated the operating system market prior to State Street and had done so largely without patents and with what most would characterize as an inferior product.)
“Even under the vicarious and inducement liability theories for copyright, there has to be some direct infringement by a single user for which the defendant is found responsible”
I think this is correct right now; I can’t think of a case dealing with infringement both vicarious and divided. I suspect though, because the original poster’s name was “271(b)-(c)” that the argument is that vicarious liability theories in 271(b) induced infringement could be imported to 271(c) contributory infringement.
That is, I’m performing all but one claim limitation. I know about and could stop, but don’t because I benefit from, you performing the missing claim limitation. This could be induced contributory infringement under an extension of the current law.
Great conversation all.
Thank you.
School’s out says,
“Because the Supreme Court has imported elements of vicarious liability analysis into IP indirect infringement analysis”
Even under the vicarious and inducement liability theories for copyright, there has to be some direct infringement by a single user for which the defendant is found responsible. The problem in comparing copyright infringement to patent infringement is that copyright infringement requires only simple, discrete actions (e.g copying or distribution) such that it is nearly always possible to find a direct infringers.
Dert,
A patent is only a first, minor and expensive step in setting up a business.
You can think of cool software but will need to invest a lot of time and effort in marketing it. You will need to leave your real job and risk being unemployed trying to sell something no one wants.
A few years back many people filed patent applications for nifty cellphone apps. I don’t think any one of them made money because no cellphone user would pay a premium for these inventions although everyone would be happy to use them for free.
Hagbard,
I think that the market is a much better filter than any arbitrary test.
If a tiny variation is so insignificant, the patent holder won’t be able to charge a premium for the variation and competitors will be able to sell competing products without the tiny variation with no problem.
On the other hand, if the seemingly tiny variation is so critical that no one wants to buy products without it, maybe the tiny variation is pretty amazing and in retrospect worth patent protection.
“The purpose of a patent is to give an Inventor or Investor some insurance that there will be a return in investing in research or product development.”
And it works out in some cases, like in pharmaceuticals that have high research and development costs, but it doesn’t in others like business methods and software that don’t. Some will say: “blah blah blah it takes a lot of work to write and test software blah blah.” True, but that isn’t required to get the patent. I have only trivial programming experience but I’ve seen enough software patents to know that I can reduce a concept to practice for patenting purposes and prepare an application. Anyone commenting on this blog is capable of reducing a business method to practice without leaving their La-Z-Boy. If the whole research and development cost is the cost of preparing, filing, and prosecuting the patent, how much protection do they really deserve? How about for pharma patents, a patent term of 20 years from filing, whereas for software patents, a term of 2 years from grant. For business methods, a term of about 30 minutes from issue would be appropriate.
Good thoughts from Celine but i must take issue with him on one thing.
EPO-PSA lets things through that shouldn’t ought to enjoy 20 years of exclusive rights, sure. But that’s because prior to issue it’s ex Parte and Applicant is good at pulling wool over eyes, putting up comparative data, filing fancy Affidavits etc. That doesn’t work any more when a case is opposed at the EPO. Suddenly the team of Examiners sits in judgement in a dog fight between two equals, and the truth comes out.
Isn’t that the right way to do it. Being overly harsh to an Applicant risks throwing out the gold with the dross, and deprives a worthy inventor of “his day in court”.
7 is right, that EPO-PSA defines the Queensbury Rules for the dogfight. That’s very valuable. Without those Rules, the fight is chaotic, giving the wrong side better chances to come out of the fog as the winner.
Look at Dennis’s Therasense v BD and Bayer case. If the PTO had been running EPO-PSA, the case would never have got to issue and, even if it had, it would have got extinguished by an Opponent.
Imagine a patent system without a requirement for non-obviousness. Anything that’s novel gets a patent. Every tiny variation on anything that has been done before can get its own patent. That’s gonna work… NOT! You know, I think that might just be why we have a non-obviousness requirement to begin with.
No, it’s not easy. But the height of the obviousness hurdle is at the very heart of the patent system. How much do you need to contribute to the state of the art to deserve a patent?
I forget the exact definitions they used, but the Germans and Dutch used to have a requirement for a substantial contribution, and it was notoriously more difficult to get patents there than in other places. That was swept away by the EPC levelling of European patent laws.
In the UK it has been said in the past that a “scintilla of invention” warrants a patent, but the other side of that coin is that a scintilla of invention deserves only a scintilla of protection.
TSM/PSA (slightly different versions of the same thing) are useful filters for refusing things that clearly shouldn’t be patented, but they still pass things that, at least on closer examination than is reasonable for a PTO to do, they shouldn’t.
You need a decent PTO filter that errs on the side of the applicant, and you need a fair process for finally judging validity inter partes post-grant.
Close cases will always be a virtual coin-toss in the end.
“Of course, the best inventions of all are the ones that immediately strike every moderately intelligent person as obvious….already in that moment when he or she reads it in the app.
Of course, the best approach to the examination of obviousness is one that takes that prevents that very perception from having on the ensuing debate any influence whatsoever.”
I couldn’t agree more. However, I don’t think PSA removes one bit of subjectivity from the process. It truly doesn’t. It just provides a defined framework from which the examiner and attorney make subjective arguments about obviousness.
The only true objective obviousness test is TSM, but that results in claims being allowed that probably shouldn’t be. ..
I agree with Ned that it would be a good idea to scrap section 103.
The purpose of a patent is to give an Inventor or Investor some insurance that there will be a return in investing in research or product development.
As Ned says, “obviousness” is a poorly-defined concept that when abused makes it too easy to deny a patent, which then makes developing new businesses that much more difficult.
That said, it would be nice to allow interested parties to help an Examiner with examination and allow cheap and simple claim invalidation based on 102 art.
Lying on the road?
I would go with TSM. If the art itself provides the teaching to make the invention, OK. This is very akin to inherency. TSM essentially means it already exists.
But beyond that, it is all a matter of conjecture and uncertainty. Just one man’s opinion. No proof at all.
How is that fair to anyone?
Ned, ob via means “lying in the road”. Are you sure you want to use patents to obstruct progress down the road of technological development. Mark, Paul Cole loves to cite US jurisprudence (also here in this site) that reveals that “synergy”, or something not so very far away from synergistic, has been the antonym for “obvious” since the beginning of US patent law.
Mark, I did not mean to add something in like synergy to replace “obviousness.” I meant simply to eliminate it entirely.
If the subject matter of the claim is new, why not grant a patent? If one goes beyond this one gets into the realm of pure speculation. Decisions become arbitrary and unpredictable. They operate to undermine patent rights, and for what good reason? Some would say we should reward only the flash of genius. The invention of fire and the wheel and the like would merit patents. Others would say much less is required. But where does one draw the line and why?
Its all arbitrary and uncertain, a matter of degree. Such is not LAW which deals in bright line rules. Equity deals in fairness and degree. Obviousness is like equity and is not the kind of firm foundation something can build his castle upon.
We should consider scrapping Section 103.
Assume, for the sake of argument, that we totally eliminated obviousness from the law…
Fair enough, but instead of simply eliminating a negative inquiry, suppose we substitute a positive one for it, such as “synergy”. Now, in order to be patentable an invention has to be “new, useful and synergistic”. Synergy is defined as a behavior that is exhibited by the interactions of the parts of a system that not evidenced by the properties of the parts themselves. This would be consistent with the “surprising result” argument for non obviousness in the US and “inventive step” argument in EU.
Examiners are then looking for something new, instead of something known. They also don’t have to worry about artificial “persons of ordinary skill in the art”. Patentability is a property of the invention, not the crowd surrounding it.
School: Think flea market operators that permit sellers of contraband to sell at their flea market.
There is a big difference between an act by a third party that is a crime and an act by a third party that is not only legal but doesn’t even infringe a patent. The policy and moral issues are completely different, for starters. Again, I attempted to highlight some of the problems with this “tort-like” approach to indirect infringement with the questions I asked. I’m sure if the Supremes get a chance to hear the issue they will consider similar problems.
Thus far the only “argument” for extension of the laws beyond their present state seems to be that certain applicants believe that their alleged inventions are “hard to claim” in a way that readily captures the ideal deep-pocketed infringer.
The person who did something new could get a patent. Where is the vice in that?
Where’s the value?
Mooney – are you familiar with a field of law called torts? Well, there’s this specific doctrine of “vicarious liability” that lawyers talk about sometimes. Why does this matter? Because the Supreme Court has imported elements of vicarious liability analysis into IP indirect infringement analysis. Under vicarious liability, yes, you can be liable if you know of and could stop the underlying action and benefit from it. Think flea market operators that permit sellers of contraband to sell at their flea market. So yeah, the interesting question is whether contributory and induced infringement could be extended this far like in tort law.
“Imagine an invention that wasn’t obvious to Einstein!”
Apparently, a moustache comb was not obvious
“Hey, guys, please lay off 6 and MM.”
Not on your life.
Keep it up, and you’ll be next “Ned.”
“Merely knowing of a third party’s actions and benefitting from them is enough for indirect infringement of a method claim, even when there is no direct infringer?? I hope that is not ever the case. What does “benefitting from” mean exactly? Do I need to profit every time the third party performs the claim step? Or do I “benefit” (and thereby infringe) just because I’ve provided the third party with the option of performing the step, even if I’ve never suggested that the step be performed by the third party?”
I know I know, all these questions… It’s all so confusing to you.
Just sit back, relax Mooney. You might feel a little pinch…
271: The better question deals with DirecTV’s contributory infringement. Particularly, is DirecTC a contributory/inducing infringer if they knew of the third party’s partial performance of the claim and benefitted from the same?
Merely knowing of a third party’s actions and benefitting from them is enough for indirect infringement of a method claim, even when there is no direct infringer?? I hope that is not ever the case. What does “benefitting from” mean exactly? Do I need to profit every time the third party performs the claim step? Or do I “benefit” (and thereby infringe) just because I’ve provided the third party with the option of performing the step, even if I’ve never suggested that the step be performed by the third party?
I think the best solution to patentees in this area is to write better claims. Or come up with better inventions (you know, actual methods and compositions, as opposed to “systems” or “paradigms”).
Hey, guys, please lay off 6 and MM.
6 and MM, You guys are fun to have here. I almost always read your posts with interest, even if at times I do not agree with you.
Assume, for the sake of argument, that we totally eliminated obviousness from the law, save for inherency. The person who did something new could get a patent. Where is the vice in that?
“Posted by: 271(b)-(c) | Feb 01, 2010 at 05:54 PM”
“Of course no direct infringement. The better question deals with DirecTV’s contributory infringement. Particularly, is DirecTC a contributory/inducing infringer if they knew of the third party’s partial performance of the claim and benefitted from the same?”
Section 271(b)-(c), I haven’t read the case, but I assume the real problem with respect to contributory infringement is that there is no “direct infringement” by anybody, including the third parties.
“Imagine an invention that wasn’t obvious to Einstein!”
How about the breakdown of the general theory of relativity in the vicinity of a black hole?
Of course no direct infringement. The better question deals with DirecTV’s contributory infringement. Particularly, is DirecTC a contributory/inducing infringer if they knew of the third party’s partial performance of the claim and benefitted from the same?
Hey Dennis, just wanted to say that I’m glad you’re enjoying the blog so far. Thanks for stopping by! As new bloggers we’re definitely interested in feedback – if you have any suggestions, feel free to let us know.
“The key to that, as to the Einstein question, is defining to whom the patented invention must be non-obvious.”
Exactly, but rather than define that person, I wonder if we now have the technology to measure that person. Perhaps we can do away with the famous hypothetical person who knows everything but imagines nothing,
or as Buckminster Fuller once said, “Don’t assume false circumstances where the real circumstances can be found”
“DirecTV can not be liable for direct infringement of an asserted claim if the evidence demonstrates that DirecTV neither performs by itself nor directs nor controls a third party’s performance of any one element of the claim.”
The right result.
Of course, the best approach to the examination of obviousness is one that takes that prevents that very perception from having on the ensuing debate any influence whatsoever.
The key to that, as to the Einstein question, is defining to whom the patented invention must be non-obvious. It’s that famous hypothetical person who knows everything but imagines nothing, and stopped learning things the day before you filed your application.
Yes, I’m aware this is an oversimplification. Please don’t lecture me on the obviousness standard.
“Of course, the best approach to the examination of obviousness is one that prevents that very perception from having on the ensuing debate any influence whatsoever.”
Are you saying that the obviousness requirement undermines the teaching function of patents?
“Okay… how’s about a transgenic mouse?”
What I meant was, does anyone know of an issued patent that Einstein examined? What were his office actions like?
“What’s the point of using Google or Wikipedia, if all they let you do is search for things that are already known?”
I use Google and Wikipedia to search for things that are unknown to me.
Of course, the best inventions of all are the ones that immediately strike every moderately intelligent person as obvious….already in that moment when he or she reads it in the app.
Of course, the best approach to the examination of obviousness is one that takes that prevents that very perception from having on the ensuing debate any influence whatsoever.
At that point, to the relief of all, I’ll stop.
Imagine an invention that wasn’t obvious to Einstein!
Okay… how’s about a transgenic mouse?
If it is already known, why do you have to search for it?
What’s the point of using Google or Wikipedia, if all they let you do is search for things that are already known?
BTW,
Isn’t there something contradictory about hiring people (e.g. examiners) to “search” for what is already “known”?
If it is already known, why do you have to search for it?
Einstein was a patent examiner link to bit.ly Imagine an invention that wasn’t obvious to Einstein!
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