Patently-O Bits and Bytes

  • Congratulations: The Administration (and its supporters) have successfully lobbied the House of Representatives to allow the PTO to keep $129 million of its funds collected over-budget. Because the CBO had already accounted for that money as general income, the return of the money required a debit from some other expenditure. The source ended up being money that had been over-budgeted for the Census.  See H.r. 5874.  To become law, the bill would also need to pass the Senate. However, at this time, no equivalent bill has been introduced into the Senate.
  • Fee shifting: In the pending case of Netflix v. Media Queue, Netflix has asked the Federal Circuit to revisit the law of 35 USC 285 in terms of when the prevailing party should be awarded attorney’s fees. Netflix argues that the current rule makes it too difficult for defendants to collect Attorney’s fees after prevailing against charges of infringement.  Those interested in the case may want to look at data collected by Professors Michael Meurer and James Bessen in preparation for their 2008 book Patent Failure. [Data available here].
  • Interim Guidelines on Patentable Subject Matter: The USPTO has released a new set of interim guidelines for examination of the Section 101 eligibility of process claims.  http://www.uspto.gov/news/pr/2010/10_35.jsp.
  • Revisiting RCE Statistics

25 thoughts on “Patently-O Bits and Bytes

  1. 24

    I knew I shoulda trademarked the “IMaHo-6”.

    And correcting Wanda, the actual translation is:

    6: “I have no clue as to what I am talking about.”

  2. 23

    Sad but true IMaHo-6 logic:

    The best thing…

    and

    …always dies. Even if she was innocent…

    translates into patent-speak as:

    “No patents should be allowed even if they are deserved.”

  3. 22

    Good news about the CBO’s return of funds. Even though $129 million isn’t a ton of money, it makes a difference. And it provides further indication that the Administration (1) takes IP seriously, and (2) is serious about salvaging our economy, since patent law and PTO operations are critical to our economic system.

  4. 21

    The best thing about witch hunts is that the witch always dies. Even if she was innocent of witchcraft.

    Yes, 6, which is exactly why grownups have been using this expression for a couple of centuries now. It’s heartening to see that you’ve figured out that it isn’t usually meant literally.

  5. 20

    “Sounds like a witch hunt to me. ”

    The best thing about witch hunts is that the witch always dies. Even if she was innocent of witch-craft.

  6. 18

    I can’t help but notice that the guidelines present many more categories of “factors” that weight against patent eligibility than they present categories of “factors” that weigh in favor of patent eligibility. In a balancing test, that seems like a particularly rigged game.

  7. 17

    Cy Nical: “That sounds about right, actually.

    Actually, that sounds about wrong. Many problems have multiple answers, from those that don’t seem to do enough to those that seem to go way overboard (gold-plated).

    One of the untaught yet critical engineering skills is getting to an answer that essentially mirror images the problem, and like Goldilock’s preference, is just right.

  8. 16

    Note that if the problem and the claim are essentially mirror images of each other, then the claim is likely a 101 FAIL.

    That sounds about right, actually. Did you make that formulation up, Malcolm?

  9. 15

    IANAE: “If something in your claim weighs the same as a duck, that weighs in favor of eligibility. Unless you claim it in water, in which case it has no weight.”

    This, of course, is why we’ve been throwing all your applications into the pond.

    Also, for 103 rejections, we’ve got two empty halves of references and we’re banging ’em together.

  10. 14

    “The claim is more than a mere statement of concept: The claim describes a particular solution to a problem to be solved.”

    Note that if the problem and the claim are essentially mirror images of each other, then the claim is likely a 101 FAIL.

    This tends to be the case with a lot of crxppy software claims which rely on functional language.

  11. 13

    Sounds like a witch hunt to me.

    If something in your claim weighs the same as a duck, that weighs in favor of eligibility. Unless you claim it in water, in which case it has no weight.

  12. 12

    Yeah, these new guidelines are quite something.

    A fact based inquiry is it? Sounds like a witch hunt to me.

  13. 11

    1) Isn’t this essentially the EPO’s “inventive step” test?

    I think the PTO’s criterion is more about whether the solution is particular (e.g. tangible, specific) than whether it is inventive.

  14. 10

    Regarding the Interim Bilski Guidance – I noticed this new “Factor Weighing Toward Eligibility”:

    “The claim is more than a mere statement of concept: The claim describes a particular solution to a problem to be solved.”

    Two questions:

    1) Isn’t this essentially the EPO’s “inventive step” test?

    2) Has the PTO ever before indicated a move toward the use of this test to determine 101 eligibility? (I don’t recall any previous mention of this factor as a consideration.)

  15. 9

    Speaking of crrppy patents

    I dont think anyone was doing such.

    It seems fewer Republicans

    This thread doesn’t have a chance of staying on topic.

    Re: Revisiting RCE Statistics –

    “So how’re those count system changes working out for ya??” – You tell me mizz palin, that mountain of lower credit work is aheadin for your docket. Weza poor attorney folk still be gettin paid the same for striving vigilantly for the rights of our clients.

    Maybe that great union ‘o yours POPA will help ya out?

    Iza still haven’t heard any news on teh new examining the examiner metrics. How those be working out for ya??

    Posted by: ping | Jul 08, 2010 at 11:35 PM

    Me quoting me – watch me now!

  16. 8

    >>Professors Michael Meurer and James Bessen in >>preparation for their 2008 book Patent Failure.

    What are the qualifications of these “professors”? Probably little to none and little to no understanding of business or law. Oh boy, another pile of junk for tenure’s sake.

  17. 7

    There was a census person on our street this weekend trying to track down a neighbor. Hope she got paid!

  18. 6

    Re: “A very simplistic plaintiff/defendant sorting (all I can handle) of the data provided seems to say prevailing plaintiffs get attorneys’ fees about 44% of the time and prevailing defendants 33%.”
    Thanks, I did not that count from the spreadsheet Dennis helpfully provided, but I did note that in the vast majority of these listed cases that no attorney fees were awarded to either party. Also, my gestalt reaction from reading more cases over the years is that defendants rarely get sustained attorney fees unless their litigation conduct [not just their patents] was outrageous.

  19. 5

    Speaking of crrppy patents, what is the status of the Global Findability v. Summit Entertainment case (“Nicholas Cage’s character infringes our patent”)? Still pending? I almost hope that goes to trial just for the laughs.

  20. 4

    Dennis, an interesting graph would be the number of examiners having three or more years of experience versus the number of non-provisional applications filed.

  21. 3

    Fee shifting: A very simplistic plaintiff/defendant sorting (all I can handle) of the data provided seems to say prevailing plaintiffs get attorneys’ fees about 44% of the time and prevailing defendants 33%.

  22. 2

    Will wonders never cease.

    Indeed.

    “The source ended up being money that had been over-budgeted for the Census.”

    It seems fewer Republicans than expected ended up boycotting the census.

  23. 1

    “successfully lobbied the House of Representatives to allow the PTO to keep $129 million of its funds collected over-budget. ”

    Will wonders never cease.

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