71 thoughts on “Senate Compromise Bill

  1. 71

    Then that would depend on what is meant by “the description of the forest included a description of leaf 1234567”, now wouldn’t it, my little wind?

    Clearly, the operative word being description – and just as clearly, if the description does not describe in the necessary pecularity (akin to your 10 raised to the power 19, say), it is hardly a proper description, now is it?

    You will need to blow harder to spring a semantic trap to catch this little Leaf Collector!

  2. 70

    So tell me, Collector. Is the unambiguous and crystal clear description/definition given by a generic formula (benzene rings spattered with defined groups R1, R2, R3 etc) good enough to deprive of novelty every single molecule (10 raised to the power 19, say) embraced by the formula?

    I ask because the question has recently been resolved in Germany. There, she is novel. Also in UK. Also at the EPO. Perhaps it’s like that everywhere, except the USA.

  3. 69

    If the description of the forest included a description of leaf 1234567, no matter where (subtely hidden?), a later inventor cannot get a patent on that leaf.

    So to answer your question – She gets a patent, no? – the answer is no.

  4. 68

    Well thanks Just. I will print out and read the Ajinomoto Decision. Off the cuff instant reaction though is that when the Government hands out a 20 year monopoly that gives an inventor exclusivity over an area of territory, the useful quid pro quo is a map of the area, revealing the topography of the area inside the boundary fence. Announcing the height above sea level of the highest peak inside the boundary fence might be interesting but is a trivial piece of information in comparison with a route map that enables others to explore the territory from one end of it to the other.

    I wrote “illusory” because Applicants are usually careful to “disclose” what is the best mode while deliberately burying what is the best mode. Suppose you claim “Sherwood Forest” ie a Markush Group. And suppose you know that one leaf in Sherwood Forest is the “best”, but you don’t say in your app which one it is. You disclose all the leaves in Sherwood Forest, but are careful not to say which one is best.

    But you run a risk then, don’t you? A later inventor files on her invention, that leaf number 1234567 is “best” for reason X. She gets a patent, no? Sigh. If only I had said in my earlier app., that Leaf 1234567 is better than all the rest, then I could have had the patent on it, and not her.

  5. 67

    Whether the marking system is archaic and pointless is clearly debatable. There have been solid arguments on both sides of why marking should be done and policed.

    Shouldn’t the cost and risk of marking be assumed by the entity that enjoys the benefit of marking?

  6. 66

    The manufacturer can then send the PTO a list of patents that it believes are applicable which can be kept in a publicly accessible record.

    Or, since the whole marking system is archaic and pointless, and all the patents are already in a publicly accessible record, we could scrap the whole thing and let the PTO focus its budget on getting through its backlog of pending applications.

    Incidentally, how would you handle the case where someone finds a mistake in the record? I guess PTO employees would have to examine the product to see if it actually “infringes” the patent, and then send the patentee essentially an office action detailing why his patent doesn’t cover that product. Only, the PTO doesn’t actually have the product, and the people at the PTO who compare products to patent claims are overworked enough as it is.

  7. 65

    The PTO needs to establish a marking branch, like the assignment branch, that provides a cross reference to a current list of applicable patents for a given product. The manufacturer can apply for a “product reference number” or similar code and can mark the product with an applicable patent or patents, or, alternatively, the code. The manufacturer can then send the PTO a list of patents that it believes are applicable which can be kept in a publicly accessible record.

    The record can be updated by the patentee periodically as new patents are deemed applicable to the product. If someone finds a mistake in the record, the patentee is notified of the error and has a period to correct it, or face fines.

    This ain’t rocket science…

  8. 64

    Max opines,

    “The protection afforded to the public by the best mode provision is illusory.”

    I don’t think so. Here’s a timely example of what the best mode provides that is not provided by enablement/written description.

    CAFC opinion issued today (march 8) highlighting the effect of the best mode requirement.

    link to cafc.uscourts.gov

  9. 63

    The Best Mode issue, like allowing reissue to fix accidently omitted or micharacterized art during earlier prosecution greatly enhances the focus that a proscutor can place on understanding and describing the technology. If we accidently omit material information or leave out the Best Mode, the quid pro quo is still maintained . . . a limited monopoly for teaching of a requisite advancement in technology. Now if one is going to enforce a patent, the litigator now has to burdent to ensure that the Best Mode was not intentionally omitted (more likely at the behest of an assignee than an individual inventor) and if there are any issues with respect to prior art, the litigator now has to weigh whether reissue should be undertaken before enforcement. This really works nicely, because it will prevent the file-the-complaint-now-and-see-where-the-chips-fall-later manner of patent litigation. Rather, litigators will have to ensure that the prosecution is up to par before litigating a patent. However, unlike before, under this law, the 1.56 issues can be corrected post issuance and pre-litigation. As a result, the responsibility for many 1.56 issues that arise during enforcement will rest with the litigator and not the prosecutor, in the absence of filing a pre0litigation reissue proceeding to correct 1.56 issues.

  10. 62

    First it’s false marking that gets everybody here so very excited, now it’s the issue whether a failure to include best mode shall be a ground of invalidity. As if the Bill has nothing in it that’s more important.

    Foreigners do include the Best Mode, for it would be crazy not to, because you might need it, to salvage an issuable claim when all else is going down in flames on prior art grounds. Just like the foreigners, Americans are judicious (by which I mean sparing) with every aspect of what they disclose in their apps, for exactly the same reasons as the foreigners, namely, to minimise disclosure of valuable secret know-how.

    The protection afforded to the public by the best mode provision is illusory. The only real protection is that any claim is invalid, in toto, whenever the supporting disclosure inthe specification fails to provide an enabling and sufficient disclosure that in its spread is commensurate with the ambit of the claim it purports to support.

    And that’s long been the global gold standard, which in this Bill the USA is at long last catching up with.

    NGTT is your remark no more than pure prejudice or do you have evidence that foreigners who assert their US patents are more likely than Americans to go down on failure to include the best mode, except they don’t because, against them, US discovery is toothless. I’m curious and, for the time being, I think you are fantasising.

  11. 61

    Um, or you could just disclose your best mode? But then I guess you couldn’t whinge that it’s easier for foreign inventors to circumvent the spirit of the law.

    “American inventors want to cheat too! It’s not fair”

  12. 60

    Dennis,

    How can you be so blind as to not see the anti-American-inventor aspect of the best mode invalidity clause?

    It very much hinges on discovery rules as practiced during litigation.

    America has an almost wide open discovery process during litigation while many foreign countries have limited or no discovery. In plain English; over there, the rule is “It’s for me to know and you to try and find out but ain’t nobody talking here so good luck with that one buddy”.

    As is well known, foreign countries do not have best mode requirements. Only US patent law has it. Accordingly, foreign inventors who file overseas first generally do not disclose their best mode in their foreign originated applications. They keep it as a trade secret. And it’s going to be close to impossible during litigation for you to prove that they concealed, intentionally or otherwise, their best mode. That’s because you’re not going to get effective discovery against them.

    But guess what? The poor American inventor, who is subject to US discovery rules; only he/she is going to get hung by the combination of best mode and discovery laws.

    Given that many a multi-national corporation already off-shore their “innovation” activities, the anti-American aspect of the new best mode law is aimed at one last and soon extinct species of inventor. That’s right, the solo American inventor.

    But hey, who cares about that gone-rogue person? He/she never signed the corporate employment agreement. You know. The one that automatically assigns over to the Coalition of Big and Fair Brother all inventions made in this life or the virtual one or in the here after.

    The only thing I can’t figure out is who might have wanted that best mode invalidity provision in there and why and which Senator let them sneak it in there? Gee whiz Beaver, stop asking so many silly and goofy questions. It’s all good.

  13. 59

    “In short, company’s should be diligent in what they recite on their products.”

    But why should we ever ask companies to be diligent or responsible for what they do?

  14. 57

    With respect to False Marking . . . I believe a Prossor approach is warranted. Like allocating liability for negligence based upon the party having the greatest control over the risk, so to should liability for false marking fall to the entity having the greatest control over removing the risk. Even apart from the False Marking statute, I would contend that wreckless marking a product as patented or patent pending when none existing would be actionable under state law unfairm compeition, at least here is California. It is a material misrepresetation of fact that harms competitors in the market. Therefore, the real issue for me with the False Marking statute is the evidentiary standard for proving damages. The False Marking statute makes it easy. However, clearly there should be some liability for the party that makes such as assertion of patented or patent pending when this is false. In short, company’s should be diligent in what they recite on their products.

  15. 56

    [From the formal announcement of the compromise] “The proposed agreement makes changes to first-window post-grant review, inter partes review, willfulness, interlocutory appeals, Patent and Trademark Office funding, and supplemental examinations. The agreement retains several critical improvements in the Committee-reported bill, including the transition to a first-inventor-to-file system, the gatekeeper compromise on damages, the new district court pilot program, and more.”
    P.S. appologies for my above-noted error – yes indeed the current false marking statute 35 USC 292 at(b)says the government is supposed to get half the penalty loot [but it does provide any way for them to participate or have any say in the process]. And yes, the attorneys will presumably have to pay normal income tax out of their half. But, as I said, anyone actually harmed by the false marking gets nothing.

  16. 55

    poster J wrote, “There are two main reasons why companies falsely mark. One is for the “scare” factor, to make competitors think they will at least have to avoid a fight over a close question of infringement. The other is for the “brag” factor. … The false marking statute, as it is presently constituted, is an effective check on those behaviors. …
    If we have a problem with expired patent suits, there is an easy fix: “No cause of action under this section shall proceed based solely upon marking the number of an expired patent…”

    All well said.

    poster J also wrote, “Finally, I know it’s in vogue to refer to patent plaintiffs as “trolls,” but in doing so you do a disservice to those of us who have proceeded conscientiously in these kinds of actions, confining ourselves to meritorious cases …”

    I’m probably one of the ones guilty of throwing around the word “troll” in the last couple of weeks (on the other 3 or 4 articles here concerning false marking).

    I should point out that in doing so, I never implicated someone bringing a legit suit. For example, the producer marking “patent pending” when it knows it has no patent pending, or marking purposefully with its patent, knowing the patent doesn’t cover the product, but doing it to threaten the copyist who has a legal right to copy the unpatented product.

    The problem is, there are so darn few of guys like you (poster j) at the moment. Instead we have about 60 cases filed in the last 2 months, the strong majority of which are no more than stick-ups based on expired patents.

  17. 54

    Banana’s wrote, “If some potential market entrant then wants to get into the business, he has to spend hundreds of thousands (if not millions) of dollars on attorneys to look into these false marks. ”

    Bwahahaha.

    That’s just plain nuts.

    Or, more relevantly, you’re just plain Bananas.

  18. 53

    The point of marking is to put potential competitors or infringers on notice that the article is subject to patent rights for the purpose of enhancing damages.

    If that’s the point of marking, then the patentee should get regular damages in any event and enhanced/treble damages on a properly marked product. Also, the notice or enhancement of damages should only apply to a direct copy of the marked product, because marking a product can only really give notice with respect to that one embodiment and not the entire scope of the claims.

    If you’re putting numbers on things that aren’t covered or are long expired, you’re defrauding the public of the benefit of competition, new businesses with new jobs, and new developments in the art by the new competitors that would promote the useful arts.

    How does it promote the useful arts for people to copy an existing product?

    If you want to really benefit the useful arts you’ll want to modify or improve on the product, in which case you have to go and read the patents anyway to see whether your different product is also covered by the patents. Once you’re reading the patents anyway, it doesn’t matter whether the original product was covered by them. All you want to know is whether you would infringe. It doesn’t matter if they’re expired, because you’ll see that when you read them. And you should still be checking the patent office if you are really concerned with market clearance, because it turns out people will sue you even on patents they don’t practice or mark.

  19. 52

    IANAE, “isn’t that the whole point of patents?”

    No, the point of patents is to promote the useful arts. The point of marking is to put potential competitors or infringers on notice that the article is subject to patent rights for the purpose of enhancing damages. If you’re putting numbers on things that aren’t covered or are long expired, you’re defrauding the public of the benefit of competition, new businesses with new jobs, and new developments in the art by the new competitors that would promote the useful arts.

    Your system is completely contrary to the purpose of patents and the free market.

  20. 51

    For whatever reason, I always found it much more difficult to keep those two paragraphs straight, relative to the other provisions of 35 USC.

    I don’t worry about it too much. In my experience, examiners always accompany a 112, whatever paragraph rejection with a statement of what they think is actually wrong.

  21. 50

    Finally, after all these years of my *iching, they are finally labeling those blinkin’ 112 paragraphs, (a), (b), (c), . . . so we can stop wasting all this ink and paper with “First paragraph” .. “Second paragraph”.

    For whatever reason, I always found it much more difficult to keep those two paragraphs straight, relative to the other provisions of 35 USC.

  22. 49

    Holy Cow!!!!

    Did anybody notice what they’re doing to 112??

    Finally, after all these years of my *iching, they are finally labeling those blinkin’ 112 paragraphs, (a), (b), (c), . . . so we can stop wasting all this ink and paper with “First paragraph” .. “Second paragraph”.

    I deserve a beer for all my hard work and sacrifice getting this major statutory amendment considered.

  23. 47

    Kudos to all who have commented so far (even you MM). What I see here is very healthy debate (from both sides) about the benefits/concerns of these qui tam actions under the false marking statutes. Even my initial views (and concerns) have been altered by this debate. We can only hope the Federal Circuit will approach this subject in a balanced fashion expressed by the comments on this blog.

  24. 46

    I wrote “but failed to describe the concentrations of the listed reactants which led to the highest yield?”

    JV asked: Did the inventor perform that determination before the effective filing date of the application?

    Yes. They even discuss how the concentrations could impact the yield in the specification. But no concentrations are listed.

    Would the PTO know that absent some admission by the applicant?

    I think it is the very unusual case where an applicant presents results of differeing chemical synthesis methods — each using the same reactants — without knowing the concentrations of those reactants.

    The highest yield mix is not necessarily the best mode.

    Yes, we can all play clever legal games with my hypothetical. My point is simply that it is sometimes apparent that there is a best mode problem. And I’ve seen enough crxp applications to know that the sort of situation I’ve described is not “unrealistic.” There are, apparently, inventors and applicants out there who do not understand that when you disclose Examples of your invention, you should describe them in detail rather than “keep something secret so the competitors don’t know how we actually do it” (yes, that’s a quote from a would-be applicant).

  25. 45

    As an aside, I’m surprised the venue, damages, and district court pilot program sections aren’t getting more attention here.

  26. 44

    There are so many more important things in this bill than marking. I really can’t wait for the Fed. Cir. to affirm in Solo Cup. All of these innane comments about marking will vanish. Along with most of the lawsuits. Although, it would not surprise me if people start suing the Fed. Cir. for taking away their right to a free lunch.

  27. 43

    IANAE: Or he could go to the patent office and search all the patents.

    Clearly, every potential paper cup manufacturer should commission a team of attorneys to read 4,000,000 patents for claims that may read on some aspect of the proposed article and write a non-infringement opinion for each one. At some point, one must determine which patents are actually relevant. Marking plays a critical role in that determination.

    IANAE: A new market entrant needs to be concerned with all valid patents, not just the ones that happen to cover the products that happen to be on the market already.

    And those valid patents his potential competitors claim cover the articles he seeks to manufacture are the best place to start. At the very least, any reasonably diligent entrepreneur will get substantial legal advice on marked patents, so marking with more patents drives up the cost of market entry.

    IANAE: If Gillette has a patent that happens to not quite cover its latest twelve-blade razor, and you infringe it, you should expect to be sued and you should expect them to win. So what if they “falsely” marked that patent on their product? That just made it easier for you to find.

    This is a complete non sequitur. If Gillette has a new product it has failed to cover with a patent, and I copy that product, and Gillette sues me for infringement of some irrelevant patent, Gillette will not win. If Gillette has some other patent that does not cover any of its products, why should Gillette impose upon its competitors and potential competitors the cost of that additional research? Why should Gillette enjoy the benefits of marking the patent when marking to a product not covered by the patent? In the dense, competitive fields where Gillette typically operates competitors (in aggregate) likely spend hundreds of thousands of dollars in research on each marked patent. Why allow marking at all if you won’t allow for enforcement against false marking?

  28. 42

    As a qui tam relator myself, I have never been in favor of suits in which the offense consists of marking merely expired numbers. I would not have a problem with limiting qui tams to cases in which the patent does not cover the product at all–which is, in my view, more what Congress originally intended.

    Some have said that this is a “victimless” offense, but it’s really not. There are two main reasons why companies falsely mark. One is for the “scare” factor, to make competitors think they will at least have to avoid a fight over a close question of infringement. The other is for the “brag” factor. The public thinks of “patented” products as better products. Misleading the public about patent status plays into that attitude.

    The false marking statute, as it is presently constituted, is an effective check on those behaviors. The proposed amendment is not an effective check on anything. How do you show a “competitive injury” without it being entirely speculative?

    If we have a problem with expired patent suits, there is an easy fix: “No cause of action under this section shall proceed based solely upon marking the number of an expired patent upon an article that would not be falsely marked, but for the expiration of the patent.”

    Finally, I know it’s in vogue to refer to patent plaintiffs as “trolls,” but in doing so you do a disservice to those of us who have proceeded conscientiously in these kinds of actions, confining ourselves to meritorious cases and proposing damage awards that are reasonable in view of the economics of the product. Yes, we expect to be paid for our work enforcing the statute–but, then again, so will the attorneys who defend the suits.

  29. 41

    “the attorneys plan to keep 100% for themselves, unless perhaps they are somehow forced to give some of it to the Federal Government in spite of no statutory protection even for that”

    Paul, without delving into the sentiment, just to correct the manifest error about the statute. Section 292(b): “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.”

  30. 40

    If you think patent markings falsely placed on goods don’t deter competitors, then why in the world would these companies bother making dies and such having these false patent markings? Because it deters competitors.

    I think all patents should deter competitors, whether they’re marked on goods or not, and whether those goods actually practice the patent or not.

    Isn’t that the whole point of patents?

  31. 39

    “Because it deters competitors.”

    Yes.

    A quote from an internal email from Solo Cup’s in-house counsel (taken from Solo Cup briefing):

    “adding the word ‘patented’ to literature (in addition to any marking on the product) is nice to have as it will give others additional notice of our patent and make them think twice about copying the product.”)”

  32. 38

    The examiner could make an inquiry, but I suspect that most such inquiries would be unproductive.

    The examiner should make the inquiry if there’s any indication that the best mode might be lacking. At least it will put a statement on the record as to what the best mode is and whether it exists, and why the applicant thinks he has complied with the law.

    Yes, my competitors would care

    In your hypothetical, the one we were discussing, they didn’t care.

    This would therefore require my competitors to pay a law firm large amounts of money to investigate all 100 patents, including the irrelevant 98, before they take the risk of copying or attempting to design around the marked product.

    Those 98 might be irrelevant to your exact product but relevant to a design-around. Your competitors should be wary of infringing your patents whether you yourself “infringe” them or not.

    Sure, in the case where a product is marketed as “patented”, there should be some penalty for false statements with intent to deceive. But marking and marketing are not the same thing. There should also be some penalty for marking with clearly irrelevant patents. But frankly, I don’t see the harm if a little booklet that comes with Gillette’s shiny new razor and isn’t even visible on the outside of the box lists every single razor-related patent they’ve ever gotten.

  33. 37

    IANAE, based on your 11:51 comment, we are now assured that you have always lived a coddled life in the govn’t or in academia. If you had any idea what the business world was like, you couldn’t have finished typing that.

  34. 36

    If some potential market entrant then wants to get into the business, he has to spend hundreds of thousands (if not millions) of dollars on attorneys to look into these false marks. That’s a substantial barrier to entry that allows those already in the industry to act collusively, thereby substantially harming the public.

    Or he could go to the patent office and search all the patents. A new market entrant needs to be concerned with all valid patents, not just the ones that happen to cover the products that happen to be on the market already.

    If Gillette has a patent that happens to not quite cover its latest twelve-blade razor, and you infringe it, you should expect to be sued and you should expect them to win. So what if they “falsely” marked that patent on their product? That just made it easier for you to find.

  35. 35

    “Even so, the remedy recently changed, and now it’s a bigger issue for them.”

    I’m sorry – do you really think a multi-billion dollar company alleged a false marking cause of action for a total maximum of $500 (and spent vastly more to do)? The fact is, the law was not settled – some courts had been counting offenses on a per article basis prior to Bon Tool, just not all courts.

    “Your customers aren’t going to check the bottom of the box for a tiny printed patent number when they make their buying decision, and wouldn’t have returned the product anyway if they later found out the patent didn’t cover it.”

    In some cases, these companies are actually advertising patent protection based on false markings. These cases are not limited to instances of the situation you describe. Moreover, false markings affect more than just consumers. I have seen actual instances in my practice where they have deterred prospective inventors and/or competitors.

    “Your competitors actively don’t care.”

    Yes, my competitors would care if I put 98 out 100 irrelevant patents on a product I was selling. Doing so, under 287, serves as constructive notice to the world for the patents which are actually relevant. This would therefore require my competitors to pay a law firm large amounts of money to investigate all 100 patents, including the irrelevant 98, before they take the risk of copying or attempting to design around the marked product.

  36. 34

    Further to my 11:41 comment, as Different Anonymous pointed out, the govn’t gets half up front. So half, plus 60% means that the govn’t gets about 80% in total. Exactly how much more should they get for an individual’s work product?

  37. 33

    “If it’s that apparent that the best mode might not be disclosed, the examiner should be asking the applicant to explain the apparent omission.”

    You example is not all “that apparent”. The highest yield mix is not necessarily the best mode. Variables other than yield might make a different combination of reagents best (e.g. cost/environmental impact/use of toxic chemicals). The examiner could make an inquiry, but I suspect that most such inquiries would be unproductive.

  38. 32

    IANAE, once again, the socialist approach won’t work. You can’t give everything to “the people.” Because once the damages drop below the cost of the suit, there will be no enforcement.

    If you think patent markings falsely placed on goods don’t deter competitors, then why in the world would these companies bother making dies and such having these false patent markings? Because it deters competitors. The guys who put this provision in the statute were pro free markets, and we should just let it work. In the end, the increased competition will benefit us all.

    What’s with everyone being against lawyers making a living anyway? I think Examiners make entirely too much; they should serve the greater good for free, instead of greedily driving up the cost of patents. I think professors make entirely too much; they should serve the greater good for free instead of greedily driving up the cost of college. Why doesn’t anyone say that?

  39. 31

    Paul, I think your little communist rant missed the fact that a lawyer recovering under a false marking claim will necessarily be giving 39% (next year, 35% this year) to the govn’t, plus 15% for social security and medicare, plus payroll taxes from it for his associates and paralegals. So really, the govn’t is probably getting 60% or so in total. The govn’t is doing quite well. More money is the last thing that cesspool needs.

  40. 30

    IANAE: Where’s the harm in that eventuality? Your competitors actively don’t care. Your customers aren’t going to check the bottom of the box for a tiny printed patent number when they make their buying decision, and wouldn’t have returned the product anyway if they later found out the patent didn’t cover it. Anyone who picks up your product and copies it deserves to assume the risk that he’s unlawfully ripping off your IP. Anyone who infringes your patent without seeing your product is unaffected by the marking.

    The problem isn’t one isolated company falsely marking its products, it’s every company falsely marking every product. If a company only has his competitors (who also falsely mark) to fear, it will falsely mark with impunity. If some potential market entrant then wants to get into the business, he has to spend hundreds of thousands (if not millions) of dollars on attorneys to look into these false marks. That’s a substantial barrier to entry that allows those already in the industry to act collusively, thereby substantially harming the public.

  41. 29

    Gillette – part of P&G – has known about the statute for a while. It used to for its own advantage in the past.

    Even so, the remedy recently changed, and now it’s a bigger issue for them.

    Did the inventor perform that determination before the effective filing date of the application? Would the PTO know that absent some admission by the applicant?

    If it’s that apparent that the best mode might not be disclosed, the examiner should be asking the applicant to explain the apparent omission.

    The fact is that patent marks have been quite unreliable for years precisely because no one has enforced this law.

    Great, so either show reliance if you want your money, or get rid of the requirement so people don’t rely on the markings at all. Or make it a class action, so at least you don’t get one marking troll pocketing the damages for everybody’s “harm”.

    If we remove the qui tam right, false marking suits will vanish because competitors will prefer detente to enforcement.

    Where’s the harm in that eventuality? Your competitors actively don’t care. Your customers aren’t going to check the bottom of the box for a tiny printed patent number when they make their buying decision, and wouldn’t have returned the product anyway if they later found out the patent didn’t cover it. Anyone who picks up your product and copies it deserves to assume the risk that he’s unlawfully ripping off your IP. Anyone who infringes your patent without seeing your product is unaffected by the marking.

  42. 28

    “re: “there is a real problem with making any change retroactive” Article 1, section 9 (“No bill of attainder or ex post facto Law shall be passed”) makes this pretty clear.”

    I could be wrong, but I think this Article hasn’t been interpreted to prevent absolution…just to prevent retroactive criminalization of that which was not previously criminal (and similar effects). Again, though, there may be other case law out there I have not seen.

  43. 27

    “…and the attorneys plan to keep 100% for themselves…”

    50% goes to the federal government and then the other 50% gets taxed. In fact then, the majority of any award will go back to the tax payers.

  44. 26

    EG: The main problem I have with qui tam actions under the false marking statute is that there’s really no boundaries (or standards) in it for the “offense” caused other than no more than $500 per “offense.” Now that the Federal Circuit has defined the “offense” as each article falsely marked (which I agree is what the statute intended), you have the potential for a damage award which is more than just “punitive” but instead “crippling” (which I’m sure was not intended by Congress).

    This topic is recently in the news, but there’s no reason to believe that this interpretation of the statute will lead to “crippling” damages awards. The law is temporarily unsettled, but that’s no reason to remove the right. A few cases will go through rewarding “marking trolls” with $.000001 in damages per item and all will be right with the world. Even if some district court goes crazy and awards so much as $.01 per solo cup, the federal circuit will reverse. If we remove the qui tam right, false marking suits will vanish because competitors will prefer detente to enforcement.

  45. 25

    “How unusual that as soon as this ridiculous provision is brought to their attention, they decide to do something about it.”

    Gillette – part of P&G – has known about the statute for a while. It used to for its own advantage in the past.

    “You guys can quit pretending that these false marking suits are based on patents expiring yesterday.”

    The case against P&G/Gillette is not just about expired patents – many patents are alleged as not covering the products. There are other cases out there as well which aren’t alleging false marking based on expired patents but, rather, as it relates to scope.

    “Touche! I was more reacting to the comment about Steve Miller.”

    Steve Miller was only mentioned to illustrate the point – a representative of P&G was president of IPO when this happened.

    “The fact is these qui tam actions are now being used (and abused) like a state lottery ticket.”

    The fact is that patent marks have been quite unreliable for years precisely because no one has enforced this law. Now that it is being enforced, most will comply and the issue of numerous lawsuits will go away. Unless, of course, this amendment is enacted – then, patent owners will be free to do whatever they want with patent numbers again.

  46. 24

    “but failed to describe the concentrations of the listed reactants which led to the highest yield?”

    Did the inventor perform that determination before the effective filing date of the application? Would the PTO know that absent some admission by the applicant?

  47. 23

    The current plague of alleged “false marking” suits (lawyer-get-rich-quick-schemes) makes “ambulance chasing” look really noble in comparison. There the victims usually get about 2/3d’s of the recovery money. In the vast majority of these false marking suits there is no victim at all, nobody was ever mislead, no victim will ever get any of the recovery, and the attorneys plan to keep 100% for themselves, unless perhaps they are somehow forced to give some of it to the Federal Government in spite of no statutory protection even for that. The reason for this big lawyer rush to the courthouse is an unexpected recent CAFC decision that allows collecting up to 500$ each for every manufactured item that is alleged falsely marked, not for just every product line.

  48. 22

    DC Under the current prosecution schema, the PTO almost never rejects on best mode (how could the PTO know the inventor’s best mode if it had been withheld).

    Wouldn’t this be the case where an applicant claimed a method of, say, chemical synthesis with a novel set of reactants, and included a table showing a series of examples of the invention yielding different amounts of product (best to worst) but failed to describe the concentrations of the listed reactants which led to the highest yield?

  49. 21

    Allowing private citizens who aren’t being injured to file such suits is still too much to me like a “get rich quick” venture similar to a state lottery ticket.

    Or, as Judge Rader noted, it inspires “marking trolls”.

  50. 20

    Hindsight,

    Touche! I was more reacting to the comment about Steve Miller.

    The main problem I have with qui tam actions under the false marking statute is that there’s really no boundaries (or standards) in it for the “offense” caused other than no more than $500 per “offense.” Now that the Federal Circuit has defined the “offense” as each article falsely marked (which I agree is what the statute intended), you have the potential for a damage award which is more than just “punitive” but instead “crippling” (which I’m sure was not intended by Congress).

    If you have a false marking situation which isn’t sufficiently goring a competitor, it might be better to leave this to the FTC as another form of “unfair trade practice.” Allowing private citizens who aren’t being injured to file such suits is still too much to me like a “get rich quick” venture similar to a state lottery ticket.

  51. 19

    K. Brooks says,

    “Looks like the e f and g exceptions to 103 are gone.”

    Isn’t the “e” part merged into 102?

  52. 18

    Wait wait wait. I have perfect solution for P&G and others subject to these abusive false marking suits…. Stop falsely marking your products.

    You guys can quit pretending that these false marking suits are based on patents expiring yesterday. In most cases, the patents are YEARS if not decades expired, and they just kept right on marking. So, just stop doing it. Problem solved.

  53. 17

    S.515’s proposed retroactive amendment to the false marking statute is BIG PATENT’S Nixon Pardon / slap in the face to the consumer world–the people who were intended to be protected by the statute (“for the purpose of deceiving the public”). Good for you IPO, how much did it cost?

  54. 16

    re: “there is a real problem with making any change retroactive” Article 1, section 9 (“No bill of attainder or ex post facto Law shall be passed”) makes this pretty clear. Sadly, this is just one section of the constitution ignored when congress feels it’s the “right” thing to do.

  55. 15

    I fully agree with Dennis and Ken above on the [desirable in my view] effect of removing “false marking” as as an infringement defense discovery plague, but potentially still allowing an inequitable conduct defense [in a very few rare such cases] for truly intentionally fraudulently leaving a clearly best “best mode” out of an application filed in the PTO, if sufficiently pleaded.

  56. 14

    “Right without a rememdy…”

    Why couldn’t the court provide an equitable remedy other than find the patent unenforceable. (For that matter is unenforceability statutorily required even under current law?)

    Couldn’t the court dismiss the current infringement action as a remedy. Of course we would expect every other court to apply a similar remedy rendering the patent effectively unenforceable.

  57. 13

    “The fact is these qui tam actions are now being used (and abused) like a state lottery ticket.”

    be careful, likewise, in how you portray other lawyers use of a valid legal concept.

    those in abuse (such as brought without foundation or checking of actual facts) will be dealt with appropriately.

    the liking or disliking of Qui Tam should be separated. reading injury to competitor into the requirements of bring a Qui Tam is not reading the law correctly.

    since when do you get to play that role?

    nothing wrong with the whining about the law, or trying to change it going forward – there is a real problem with making any change retroactive.

  58. 12

    Procter & Gamble gets sued for false marking.

    IPO has a meeting and decides to lobby the legislature to get rid of the relevant parts of the false marking statute.

    All of a sudden a draft of a bill to absolve Procter & Gamble is on the table.

    How unusual that as soon as this ridiculous provision is brought to their attention, they decide to do something about it.

    Isn’t lobbying Congress one of the great constitutional Inventors’ Rights of our time? Shame if they let it lie fallow.

  59. 11

    DA,

    As an ex-P&G patent attorney and one who knows Steve Miller well, be very careful about what you’re implying here. Steve’s reputation is stellar in my eyes and in the eyes of many others in the patent bar. And P&G isn’t the only member of IPO that is being gored by this rash of qui tam actions under the false marking statute.

    The fact is these qui tam actions are now being used (and abused) like a state lottery ticket. They’ve become the new “ambulance chase.” If a competitor has a beef about a false marking that causes injury to it, that’s one thing. But to allow someone who isn’t injured at all to profit from a false marking suit, where that “allegedly” false marking isn’t even hurting or even bothering a competitor is truly a “windfall.”

  60. 8

    Good question, Krispy. But that’s more a matter of judicial interpretation of “useful arts” isn’t it?

  61. 7

    Hmm, I don’t see the part about software and business methods being unpatentable. That’s in here somewhere, right?

  62. 6

    The position on “best mode” reminds me of the position on Article 84 (clarity) deliberately imposed on Europe by the EPC in 1973. It’s a requirement of patentability, but not a ground of invalidity.

    And, despite widespread whingeing these past 30 years, from many patent litigators in Europe, mainly UK, it hasn’t done any harm.

    But it has done an awful lot of good.

    Imagine, if it lack of clarity were available as an attack on validity. What patent ever issued by any of the world’s PTO’s , in the entire history of patent law, was ever 100% clear. So, is every single issued patent vulnerable to such an attack on its validity? I submit, not.

    EPO practitioners know how to bring what is essentially a “lack of clarity” attack on validity under one of the available invalidity attacks (usually Art 54 or 83 EPC). If the patent stinks, it’s going to go down.

    Removing “best mode” as a ground of attack will have a similar beneficial effect, on patent litigation in the USA.

  63. 5

    Steven W. Miller of Procter & Gamble Co. is President of the Intellectual Property Owners’ Association (IPO).

    Procter & Gamble gets sued for false marking.

    IPO has a meeting and decides to lobby the legislature to get rid of the relevant parts of the false marking statute.

    All of a sudden a draft of a bill to absolve Procter & Gamble is on the table.

    Amazing.

  64. 3

    Ken – The way that I interpret the best-mode issue is that (1) the PTO would still be free to reject claims on best mode and (2) intentional withholding of the best mode in an application could still result in inequitable conduct. Under the current prosecution schema, the PTO almost never rejects on best mode (how could the PTO know the inventor’s best mode if it had been withheld). However, I suspect that the inequitable conduct issue could hold some ground, especially when defendants explain that without IC, best mode is a requirement without any enforcement mechanism. (Right without a rememdy…)

  65. 2

    Very interesting. Thank you Dennis. The Best Mode requirement is puzzling. It appears that Best Mode is still required by 112, but failure to satisfy the same is not grounds for invalidating a patent. Are they saying that an accidental omission of Best Mode will not invalidate claims, but an intentional failure to satisfy the Best Mode requirement could be viewed as fraud thereby invalidating the patent? I could really use some help in interpreting this seeming contradition.

  66. 1

    So how much does a company like Procter & Gamble have to pay to get a group of Senators to retroactively absolve it for violations of the false marking statute in the Patent Reform Act?

    Does it cost them more given that they’ve used the statute as a sword themselves?

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