Guest Post: Patent Abstracts Are Not The Answer To Repatriating Jobs

by Jeremy Kriegel of Marshall, Gerstein & Borun

In an effort to promote repatriation of jobs, H.R. 5980 was introduced on July 29, 2010. The Bill proposes replacing the 18-month publication of U.S. patent applications in their entirety with a requirement that the U.S. Patent & Trademark Office (USPTO) publish only the abstract of an application until it issues as a patent. This change would detrimentally impact the ability to monitor competitors’ pending applications (provided the full text of the applications were not otherwise still available via Public PAIR, an on-line resource provided by the USPTO that supplies free access to all patent documents exchanged between patent applicants and patent examiners upon publication of an application).

The proposed shift would potentially impact companies that have come to depend on access to published patent applications as a source of lawful competitive intelligence and freedom-to-practice planning.

With knowledge that only an application’s abstract will be made available to the public, it would likely just be a matter of time before applicants become more evasive in the drafting of patent abstracts. Even today, patent abstracts rarely provide meaningful detail as to the scope of the claims of a patent application, and are limited by USPTO regulations to 150 words or less. 37 CFR 1.72(b).

While a change to the statutory term of U.S. patents and a judicially-created “prosecution laches” defense eliminated most concerns over “submarine” patents (where an applicant would keep at least one of a chain of patent applications pending before springing an issued patent on an unsuspecting party or industry), limiting public access to only the abstract of a pending application would invite a return to such undersea tactics in patent prosecution.

To the extent publishing only the abstracts of patent applications has any potential to reduce the loss of American jobs, this protection is illusory in most situations. Many patent applications on products having significant commercial potential are filed not only in the United States, but also in foreign countries (and/or internationally under the Patent Cooperation Treaty). Most foreign countries already require publication of the entire patent application 18 months from the earliest priority filing date, so publishing only the abstract in the U.S. would merely invite interested third parties to search for foreign counterpart applications published in their entirety.

For applicants concerned about foreign competitors learning of the details of their inventions prior to issuance of their patents, U.S. patent law already provides an avenue even more secure than limiting publications of applications to abstracts as proposed in H.R. 5980. So long as an applicant agrees at the time of filing a U.S. application to forego foreign patent filings in countries that publish applications 18 months after filing, the application may include a request for non-publication. The USPTO will then maintain the entire application in secrecy until the application issues as a patent. The option of foregoing foreign filings in exchange for non-publication of a U.S. patent application was proposed to assuage concerns over the disparate impact pre-grant U.S. publication might have on small businesses. This was known as the Kaptur Amendment and was initially limited to “small entities” (i.e., entities with fewer than 500 employees, universities and independent inventors), but the small entity requirement was ultimately removed.

Alternatively, 35 U.S.C. Section 154(d) provides provisional rights to obtain a reasonable royalty for infringement occurring prior to the issuance of a patent, beginning as early as the date of publication of the application. Recovery of pre-issuance royalties requires the infringed claims ultimately issuing in a patent to be substantially identical to claims of the published application and requires actual notice to the infringer of the published patent application. If claims are substantially amended during prosecution, an applicant may, for a fee, electronically request republication of the application with the amended claims. H.R. 5980 would limit provisional rights to claims of published PCT applications that later mature into U.S. patents. Ironically, this disparity would favor foreign applicants of US patents (who typically file PCT applications prior to filing a US national phase application) over US inventors who opt not to file a PCT application. Foreign patentees in some situations would effectively have a longer term to collect patent damages than their US counterparts.

Another problem with the “Patent Protection” proposal of H.R. 5980 is that it runs contrary to commitments the United States made to Japan under the U.S.-Japan Letters of Agreement signed August 16, 1994 by then-Commerce Secretary Richard H. Brown and Japanese Ambassador Takakazu Kurizama. In exchange for U.S. commitments to publish applications 18 months after filing, expand the grounds for requesting patent reexamination, and permit increased third party participation in reexaminations, Japan agreed to eliminate dependent patent compulsory licenses, end third party pre-grant oppositions, and offer an accelerated examination procedure. It took five years for mandatory publication of applications to become law with passage of the American Inventors Protection Act of 1999.

Though mandatory publication of U.S. patent applications is barely a decade old, H.R. 5980’s bid to substitute abstracts for full publication of U.S. applications would return a cloak of secrecy to some U.S. patent applications. However, for patent applications also filed abroad, the reality is that corresponding applications filed in other countries would still be published in their entirety. Given the ubiquitous access to published foreign patent applications made possible by the Internet, publishing only patent abstracts in the U.S. would not provide a meaningful obstacle to foreign companies seeking to capitalize on U.S. ingenuity.

Jeremy R. Kriegel is a partner at Marshall, Gerstein & Borun LLP in Chicago. This article expresses the views of the author, and does not necessarily reflect the views of Marshall, Gerstein & Borun or its clients.

112 thoughts on “Guest Post: Patent Abstracts Are Not The Answer To Repatriating Jobs

  1. 112

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  2. 111

    I agree that this legislation introduced by Congress doesn’t appear to make much sense. Rather, it looks like someone with a specific agenda lobbied the House for this “patent reform” legislation, because it really does not seem to have much connection to bringing jobs back to the U.S.

  3. 110

    Well then, quit complaining about disclosing trade secrets.

    ” I am not. The discussion is about publishing patent applications that contain trade secrets before a patent is issued. Its foolish to do. You took the opposing view and lost as usual. Case closed on that.”

    Posted by: IANAE | Aug 30, 2010 at 04:28 PM: “I’m sorry. I’ll leave all that sophisticated stuff to people like you who claim to be rich on the internet.”

    Where did I claim to get rich on the internet? Although I had a good run at one point in the early 90’s I never got rich on the internet, thanks to NOT having patents. Of course that makes anti patent, pro socialists, communist sympathizers like you very happy. Time for me to go to the beach now. Which I can do because I did eventually learn the value and true purpose of patents.

  4. 109

    In some cases your claims may not be broad enough to cover everything mentioned and not yet enable in your application.

    1. If it’s not enabled, don’t put it in the spec.

    2. If it’s in the spec, and you want to claim it, claim it.

    Including information that can be used for marketing can help a licensee, patent examiner, judge or jury fully understand an invention and its importance and value in the marketplace.

    I’m sure they’ll understand just fine once you prove that the infringer sold ten million copies of it. Maybe you should stick to what patents are really for and describe why the invention is so useful. There’s really nothing to be gained by putting your ad copy into the spec.

    If an inventor has an invention that can’t be kept trade secret once it is actually reduced to practice then is is vital to have a patent.

    Well then, quit complaining about disclosing trade secrets. You weren’t going to have any left anyway, once you got your patent or started selling your product. Patents are for the sort of thing you can’t keep secret. You have to pick one or the other, which incidentally is the same reason there’s an on-sale bar.

    one thing is certain, you are no Actual Inventor. So please stop giving advice on inventing and running a business.

    I’m sorry. I’ll leave all that sophisticated stuff to people like you who claim to be rich on the internet.

  5. 108

    INANE: Yup, that would be pretty foolish. Imagine that, publishing a patent application filed 18 months ago that includes stuff not yet filed.

    AI: To help meet 112 and make sure an application is fully enabled it is important to disclose as many variations as possible on an invention in your application. In some cases your claims may not be broad enough to cover everything mentioned and not yet enable in your application. So an Actual Inventor naturally wants the option to file additional applications before his/or her competitors get wind of the ideas.

    INANE: Incidentally, if we’re operating under the tenuous assumption that you’re not foolish, maybe you shouldn’t be putting your market strategy in your patent application.

    AI: Including information that can be used for marketing can help a licensee, patent examiner, judge or jury fully understand an invention and its importance and value in the marketplace. And since the marketing strategy will be known to all once the invention is licensed and brought to the marketplace there is no need to keep it secret after a patent is issued and commercialized. But before hand it must be kept secret by all means available and that includes not publishing the application until the patent issues.

    INANE: And if your application is heavy on the trade secrets you might not want to file an application in the first place, since patents really weren’t designed to protect trade secrets.

    AI:If an inventor has an invention that can’t be kept trade secret once it is actually reduced to practice then is is vital to have a patent. To practice the invention before hand without any protect would be like playing pro football without a helmet and pads

    Finally, you may not be a very good patent attorney, if that is what you claim to be, and I shudder at the idea you are an examiner, but one thing is certain, you are no Actual Inventor. So please stop giving advice on inventing and running a business.

  6. 107

    From an Actual Inventors perspective publishing a patent application for all competitors to see that may contain marketing strategy, trade secret practices, and inventions not yet filed for patents is foolish indeed.

    Yup, that would be pretty foolish. Imagine that, publishing a patent application filed 18 months ago that includes stuff not yet filed.

    Incidentally, if we’re operating under the tenuous assumption that you’re not foolish, maybe you shouldn’t be putting your market strategy in your patent application.

    And if your application is heavy on the trade secrets you might not want to file an application in the first place, since patents really weren’t designed to protect trade secrets. Even if it gets issued it will still be published and you’ll lose your trade secret protection in exchange for claims to technology that your competitors can keep secret from you.

  7. 106

    Posted by: ping | Aug 30, 2010 at 07:28 AM :Compare:

    “Agreed. There is no advantage to the applicant/inventor or the public in publishing before the patent issues.

    Posted by: Actual Inventor | Aug 27, 2010 at 03:45 AM ”

    with

    “Maxwell: “No advantage at all to the public, AI, in publishing the full text of applications for United States patents?

    _______

    As any 4 grader taking the FCAT would know, the difference being, addressing the issue of publishing patents “before” the patent issues and publishing applications at all.

    From an Actual Inventors perspective publishing a patent application for all competitors to see that may contain marketing strategy, trade secret practices, and inventions not yet filed for patents is foolish indeed.

    Of course once the patent issues and you have some protection, then publishing is fine.

  8. 105

    Compare:

    Agreed. There is no advantage to the applicant/inventor or the public in publishing before the patent issues.

    Posted by: Actual Inventor | Aug 27, 2010 at 03:45 AM

    with

    Maxwell: “No advantage at all to the public, AI, in publishing the full text of applications for United States patents?”

    AI : Maxwell, why are you asking me that question ? I did not state this or imply it.

    AI, you need to put down the little silver hammer and stop hitting yourself in the head with it.

  9. 104

    Maxwell: “No advantage at all to the public, AI, in publishing the full text of applications for United States patents?”

    AI : Maxwell, why are you asking me that question ? I did not state this or imply it. If you want to discuss the issue honestly then go back and read my original statement and agree or disagree. Otherwise don’t waste my time trying to be the Pong to Dear Pings boring troll tactics.

  10. 103

    Queue merry go round of then the Office should get it’s act together and actually get teh work done – the applicant benefits from longer examination periods – the applicant doesn’t control the longer periods must answer within prescribed periods – oh yeah, forgot about that and forgot that the Lemelson matter was taken care of in the switch to when the Patent Rights start.

    whew – I just saved about a day in processing time.

    IANAE – this be another of those topics you should stay away from. Unless ya wanna throw in another extremely bad Middle Earth joke…

  11. 102

    Or worse, how about seeing your invention in products for sale, in the US, while you wait to get your US patent?

    A gentleman by the name of Lemelson made a whole lot of money that way.

    You know, in case you were wondering how publication maintains the balance between the patentee and the public, particularly for applications with long pendency.

  12. 101

    MJR,

    You realize of course that the non-pub option, currently available, shoots logic all to h_ll?

  13. 100

    Another thought related to due diligence assessments. If you’re a solo inventor or small co., you may wish to sell or license your invention. Having a patent application filed is certainly helpful, but the potential buyer will not know if there’s a potentially similar pending application by another until one of them issues. I don’t know how much this actually would impact a potential buyer’s/licensee’s assessment, but when I look at an application and see that 18 mos. after its filing date nothing else similar has published, I’m more confident that there won’t be surprises making the applicant the junior party in an interference.

  14. 99

    As I see it, one advantage of 18 mo. publication to an applicant is the creation of prior art against foreign applicants. As someone commented earlier, it’s hard to come up with good new ideas — so if the law is changed and if you want to avoid publication by not filing anywhere but the US, another who comes up with the same idea somewhere else can get patents all over the world. You’ll be stuck with just the US.

    How much would it suck to see what you thought to be your invention be published in Europe, say, having been filed 20 months after your US filing date? Or worse, how about seeing your invention in products for sale, in the US, while you wait to get your US patent?

    Keeping your invention secret until issued may not serve you well at all.

  15. 98

    There is no advantage to the applicant/inventor or the public in publishing before the patent issues.

    Now you gone and done it AI. Saying something so incredibly dumm that I be forced to agree with Maxie. Publication definitely is a benefit to the public. There is absolutely no doubt to that.

    But that’s not the issue, that’s the Quo. What is the issue is the trade of Quid for that Quo. It’s the milk for free syndrome baby. The Gov got it set up that the public gets free glasses of milk and the inventor is left without any leverage in attempting to get the Gov to actually holding up their end of the bargain. Lip service to an actual examination baby. Reject-reject-reject dude (thankfully Kappos is trying to change that). Do people really wonder why the RCE is pursued, even given the repeated crrp examinations to follow? – It’s the only option. The Quo be done taken. If the applicant walk away, he be done stripped of his ideas. At least with non-pub, he still have those ideas and can try to go the trade-secret route.

  16. 97

    No advantage at all to the public, AI, in publishing the full text of applications for United States patents?

    Do you include in that assessment the particular application that delivers to readers an enabling disclosure of one of your own brilliant inventions? Don’t be so modest. I have already gathered from this blog that you are worth more than that.

  17. 96

    Posted by: Paul Morinville | Aug 25, 2010 at 11:58 AM: I also believe that most inventors don’t want to end up in litigation – they’d rather just start a company and they file patent applications with that in mind.

    I think the odds of lowering pendency are much lower than the odds of secreting applications. So, let’s just keep them secret and fix the problem.

    __________

    Agreed. There is no advantage to the applicant/inventor or the public in publishing before the patent issues.

  18. 95

    This is an excellent proposal. To sum up, if a US applicant wants to have his patent application published, he simply files PCT (and later enters the national stage). Such an application, and only such an application, would have a 102E affect as of its filing date. The fees should be adjusted such that the total cost for this procedure should be essentially the same as filing directly in United States Patent and Trademark Office with the sole exception that the fees associated with PCT publication should be not be charged to the US direct filer. For example, the direct filing fees might include a search fee which would be partially waived if the PCT search employed the USPTO as the searching authority. (The US search would have to include 102E materials which are not included in the PCT search.)

    For non-US filers, the prior art affect correctly applies only to those applications published in English.

    We would have to somehow fix 102G to say something like US patents (or published applications) shall have no prior art effect under 102G.

    In order to clarify the situation somewhat, we would have to make it clear that a patent issuing from a continuation from a PCT, whether or not it entered the national stage, will also have the same prior art affect as a patent granted on a national stage application.

    We would also have to make it clear that the patent referred to here as United States patent.

    Another thing I would change the proposal to publish an abstract. The secrecy of US patent applications should be restored completely, and the prosecution history should only become publicly available when a patent issues.

  19. 94

    If you really wanted to go all out, you’d submit a detailed analysis of every claim, feature by feature. You’d show where each of them is supported in your spec, and identify which are present or absent in the prior art.

    Cause, like that’s the service we get now, right?

    IANAE, did you steal Ned’s reds, greens, and blues? Iza just dont understand your anti-patent views, or more precisely – your anti-patent applicant views. Are you nursing a wound from AI? Trying to bait him to join the conversation?

  20. 93

    Malcoom Mooney wrote, “BOO HOO HOO HOOHOOHOOO!!! I wonder how much this whining crybaby earns each year.”

    Just multiply your annual earnings by 539.2379 to find out.

  21. 91

    And then it would be challenged on the basis of inequitable conduct because somehow in desigining your search parameters, selecting the “most relevant” prior art, or applying that art to your claims you did something that a competitor will make out to be a material misrepresentation or ommission and they will find some modicum of evidence of intent to decieve (or not, if the materiality was so great), so you patent will be unenforceable.

  22. 90

    So what would the system look like?

    If you really wanted to go all out, you’d submit a detailed analysis of every claim, feature by feature. You’d show where each of them is supported in your spec, and identify which are present or absent in the prior art.

    And of course you’d have to do a search to be sure you’ve found the best art.

    Why wait for the first action, when that could take years by itself? For best results, you’d want to do all this before even filing the application, so you could file it with an explanatory letter and a request that the PTO take up your application in priority because you’ve already done all the work.

    You could even sweeten the deal by streamlining certain little procedural snags, like agreeing to elect between species without traverse. And you could limit your claims to a reasonable number.

    I bet if you did all that, you could probably get your application issued in less than a year from filing.

  23. 89

    Examine your own… that has merit … most of us do that to some degree… So what would the system look like?
    To get the speedy response, let’s work with first OA, you would have to provide your own:

    Newness
    1. Closest prior art – physically
    2. Closest prior art – functionally
    3. A few other prior art categories?

    (To pass on 1 and 2 … examiner would have to agree or give a closer one?)

    Usefulness …

    Non-obviousness …

    Well written …

    In a category that is rewarded with patents …

    All these things you write an opinion, give a score, like on non-obvious I say it is a “90”, if examiner says it is a “10” I don’t get the speedy response?

    Interesting concept that could speed things up dramatically.

  24. 88

    But I was looking for something that would affect PTO behavior, or more specifically the timing of their behavior.

    Hire more examiners.

    It is the same amount of work to write an Office Action today or tomorrow. But if today pays $500 more than tomorrow it is logical to do it today.

    Unless they’re already busy today. For example, because they have seven hundred thousand other applications that also need Office Actions written.

    Also, the fee refunds don’t come out of the examiner’s pocket. And he already gets paid more if he meets or exceeds his production requirements, so I guess you’ll just have to wait your turn.

  25. 87

    Hmm, budget problems. Good point. OK, how about the PTO raises our fees by $500, then that part we get back if the service is slow. (And this part of the fee should go directly to and from the PTO, obviously.)

    Or patent term. That is an excellent high value reward for us. (And might affect the total “deal” discussed earlier, like if pub came before issue the patent term goes up.) But I was looking for something that would affect PTO behavior, or more specifically the timing of their behavior. It is the same amount of work to write an Office Action today or tomorrow. But if today pays $500 more than tomorrow it is logical to do it today.

  26. 86

    How about the same sort of system for the PTO? If they don’t respond to your filing within 6 months, for every month longer it takes you get a credit / refund on your patent fees.

    How about if they take really long they have to give you more patent term? Your patent is worth more to you than the PTO fees you pay to obtain it, right?

    Or, if you want, you can examine the application yourself and then get an issued patent in five weeks to a year.

  27. 84

    What is the best way to goose the gander? If the main problem is the long time it takes to issue a patent, why not look for a way to reduce that time? Is there any advantage to taking 5 years to do something that could be done in 5 months?

    Have you ever scrambled to get a response to an Office Action done in time? If you finish your response in time it saves you those extension fees. How about the same sort of system for the PTO? If they don’t respond to your filing within 6 months, for every month longer it takes you get a credit / refund on your patent fees.

  28. 83

    Pharma Patents–maybe allowing foreign applicants to ride the PPH and get ahead of U.S. applicants is supposed to encourage foreign investment in the U.S., i.e., to reap the benefits of their U.S. patent rights. Perhaps the rationale is that the U.S. applicants are already here and so will of course invest in the U.S., but foreigners might be more likely to invest in factories etc. in the U.S. if they can get patent rights sooner than their U.S. counterparts who don’t have access to the PPH–voila, a big boost to the economy from foreign investment. Problem solved!

  29. 82

    And, seriously, if we want to promote U.S. innovation, why do we keep entering PPH agreements with other countries? Now if you have a Russian priority claim (or a PCT with no priorty claim) and get a Russian allowance, you can expedite examination of a corresponding U.S. application – cutting the line ahead of U.S.-originated applications.

    Not that I’m really opposed to the PPH (I do have foreign clients who may benefit), but it seems to be at odds with the goals of promoting U.S. job growth, etc.

  30. 81

    Ah, its times like these when I am so proud to be a native of the fine Commonwealth of Virginia! At least I don’t live in the 10th Congressional District, which is the area that Rep. Wolf (R) represents. The USPTO isn’t in the 10th District either, so I doubt that Kappos had anything to do with this.

    Wolf’s website says that this legislation

    •Protects American intellectual property by restricting unnecessary foreign access to pending patent applications.

    The proposed law also includes an amendment to 102(e) that I can’t quite follow:

    (4) CONDITIONS FOR PATENTABILITY- Section 102(e) of title 35, United States Code, is amended to read as follows:

    `(e) the invention was described in–

    `(1) a patent granted on an application for patent by another in an international application filed under the treaty defined in section 351(a); and

    `(2) such application designated the United States and was published under article 21(2) of such treaty in the English language; or’.

    Is he doing away with the prior art effect of U.S. applications altogether? Aren’t the timing terms missing from his proposed paragraph (1)?

    Another part of this legislation would let universities and affiliated patent holding companies jump to the front of the examination line:

    The Director shall give priority to the examination of an application made by an applicant that is–

    `(1) an institution of higher education, as such term is defined under section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or

    `(2) a patent holding company affiliated with such an institution.’.

    According to Wolf’s website, this:

    •Prioritizes patent applications from American universities to ensure that cutting-edge new technologies may be protected and rapidly-deployed for U.S. firms.

    Because univeristies are the hot-beds of job-creating innovation? I’m not saying their contributions aren’t important, but why chose universities over small entites? Or, heck, why not just give priority to all U.S. applicants and let those foreign applications rot?

    I see this as an example of a legislator jumping into an area that he doesn’t understand and making a proposal that may sound good to constituents who aren’t patent savvy, but wouldn’t work in reality. But, since Congress never will pass any meaningful patent reform, I don’t think we really need to worry about this.

  31. 80

    Oh come on MM, it is quite clear that if you can spend a billion less to make a factory elsewhere then that makes it rather attractive to do so.

    Right. And then go live next to your factory, in the same town with the people who work at the factory for peanuts, and stop whining about the nicer places where it costs more to build your factory.

  32. 79

    Well IBP, if you consider major manufacturers just “wanting a patent” as mere vanity items you and I will have to disagree. Plenty of applicants want more than a vanity patent but they just want “a patent” and aren’t that particular about the claims. I’ve had plenty of these apps myself. I rather enjoy them.

    Btw, I just cried a small river over those undisclosed inventions. Actually not really. we’ve got “inventions” to spare.

    But anyway, what, precisely, do these people want for a deal? The current deal already gives you a secret path. If you want to file elsewhere, then you play by the “world rules”. If you don’t like it, I don’t really care.

    Btw, I’m in your patent office discounting people in Morinville’s position. Big companies are going to “steal” on his inventions whether or not he makes his own company if they so please. The only thing that will stop them is something he doesn’t want to do in any event, litigation, or the threat thereof.

    People in Morinville’s “position” are nothing more than whiners with respect to this topic so far as I can see. Either start your company or don’t. Stop btching about the line at the patent office unless you’re willing to go down to your congressman and sit in his lobby every day that he will let you until someone will introduce something to lower the backlog. Do that, and maybe bring some friends. Then I’ll listen to your btching. If you don’t have the money to start your business and nobody will give you free money then fine, you don’t have the money. I don’t have the money to start up a seed making company when monsantos patents run out, but you don’t see me btching and whining about it.

  33. 78

    6–

    Yes, some people want simply “a patent”. With the escalating fees, I would bet that such vanity patents are on the wane.

    Everybody else needs the patent to have various attributes, to greater or lesser degrees depending on their position and intentions.

    People in Morinville’s position should not be discounted.

    Patents ARE optional, after all. I personally know people who are sitting on things because they think that the current “deal” is unacceptable, as does Morinville.

  34. 77

    “”The deal”, from the perspective of someone like Morinville, is not for “a patent”, but for a useful, wieldy, timely, and well-defined patent that is economical to enforce.

    We all have seen patents tend toward being the opposite–useless, unwieldy, untimely, ill-defined, and uneconomical to enforce.

    “The deal” isn’t just for a mere patent. The patent is a tool and a symbol, and must have favorable attributes as such. Those attributes are what “the deal” is for, from the perspective of Morinville and others.

    Well to a lot of people it is simply for “a patent”. If your people who want a “shiny patent” have influence then they’ll make a legistlatively created way for them to get one.

  35. 76

    In response to Morinville’s suggestion that “Early publication breaks the deal.”,

    IANAE states:

    “No it doesn’t. The applicant can still get a patent on anything he can identify in his application that is patentable. Publication does not diminish his entitlement to a patent in any way.”

    “The deal”, from the perspective of someone like Morinville, is not for “a patent”, but for a useful, wieldy, timely, and well-defined patent that is economical to enforce.

    We all have seen patents tend toward being the opposite–useless, unwieldy, untimely, ill-defined, and uneconomical to enforce.

    “The deal” isn’t just for a mere patent. The patent is a tool and a symbol, and must have favorable attributes as such. Those attributes are what “the deal” is for, from the perspective of Morinville and others.

  36. 75

    Read what Otellini asserts:

    “If our tax rate approached that of the rest of the world, corporations would have an incentive to invest here,” Otellini said. But instead, it’s the second highest in the industrialized world, making the United States a less attractive place to invest–and create jobs–than places in Europe….”

    and contemplate what his brother and sister CEO’s of European companies say to their respective Governments and voters in their European countries, namely that the tax rate at home is the 2nd highest in all the world and must be reduced immediately, or else all the investment will flee abroad.

    What else do you expect a CEO to say. He’s only doing his job. You don’t have to accept unthinkingly everything he says though, do you? How much tax do employers and employees pay in Germany? Why does the Munich area have Germany’s highest living costs and, simultaneously, its greatest affluence, its lowest rate of unemployment, its fastest ongoing rate of creating “new jobs” and the most fantastic and ever-improving infrastructure? (Clue: not the EPO cash cow, because it is in The Netherlands where the EPO is expanding its operations).

  37. 74

    Good point, Malcolm. How many jobs are created by pointing out that those who choose to build manufacturing outside the USA are overpaid, whining crybabies? My guess is thousands, maybe millions.

    As to the OP, this is another senseless law to throw on the heap of senseless laws. It’s difficult to imagine a connection to repatriation of jobs.

  38. 73

    Oh come on MM, it is quite clear that if you can spend a billion less to make a factory elsewhere then that makes it rather attractive to do so.

  39. 72

    “Do we really want the US to compete with the third world on laxity of regulation? Is that how desperate we are to cling to the dream that those blue-collar jobs are coming back someday?”

    Idk, but I do see the business perspective. And I have to say, that tax rate is a mite high. I note that we need $ to spend on gov. activities. Iit would of course be sacrelige to cut the US gov’s spending by like a quarter or so, which is what should have been done a long time ago. Almost a decade of “war”. So pathetic.

  40. 71

    MaxDrei,

    I’m not saying that pending patent applications aren’t going to be prior art (as of filing/invention dates), provided those applications aren’t abandoned.

    “EG, are you saying that publication of the abstract alone would place the unpublished remainder of the application in the prior art?”

    Klopfenstein,

    No, only if the file wrapper for the pending application for which the abstract was published is also open to inspection. That would be consistent with both Bruckelmyer and Wyer. It would be hard to see just publishing the abstract (the abstract itself would certainly be a “printed publication” as of its publication date) would make the entire contents of an otherwise unavailable file wrapper prior art until at least that application was issued. Does that make sense?

  41. 70

    I wonder how much this whining crybaby earns each year.

    However much it is, I’m sure it pales in comparison to how much he is paid.

  42. 69

    Cypress Semiconductor CEO T.J. Rodgers elaborated on this in an interview with CNET, saying the problem is not higher U.S. wages but anti-business laws: “The killer factor in California for a manufacturer to create, say, a thousand blue-collar jobs is a hostile government that doesn’t want you there and demonstrates it in thousands of ways.”)

    BOO HOO HOO HOOHOOHOOO!!! I wonder how much this whining crybaby earns each year.

  43. 68

    Here’s what Director Kappos has been quoted as saying on the subject of application publication:
    “Based on recently updated statistics for 2009, only 6.5 % of applications received at the USPTO requested non-publication.*… [L]et’s get over it and move on…. We should not let harmonization discussions be held up by an issue that has clearly become insubstantial.”

    *[and BTW, that low number is in spite of the fee savings for non-publication. Obviously most applicants feel the advantages of preventing most interfences and preventing most Rule 131 “swearing behind” outweigh the disadvantages of publication even if they are not already doing publications by foreign filings.]

  44. 65

    a hostile government that doesn’t want you there

    Or, put another way, “a government that has standards”. It’s really a matter of perspective.

    I’m sure ConAgra isn’t thrilled about all the regulation out there, and they’re probably even more upset that there’s no practical way to move their factories overseas, but is it really such a good idea to completely deregulate them?

    Or take the banks, for example. They carry on perfectly fine without regulation. Why must we be so hostile to mom-and-pop multinational conglomerates that are just trying to make an honest buck without all that pesky accountability?

    Do we really want the US to compete with the third world on laxity of regulation? Is that how desperate we are to cling to the dream that those blue-collar jobs are coming back someday?

  45. 63

    In other news, Intel and other business leaders condemned the Obama administration for its anti-business legislation and proposed tax increases.

    “Take factories. “I can tell you definitively that it costs $1 billion more per factory for me to build, equip, and operate a semiconductor manufacturing facility in the United States,” Otellini said.
    The rub: Ninety percent of that additional cost of a $4 billion factory is not labor but the cost to comply with taxes and regulations that other nations don’t impose. (Cypress Semiconductor CEO T.J. Rodgers elaborated on this in an interview with CNET, saying the problem is not higher U.S. wages but anti-business laws: “The killer factor in California for a manufacturer to create, say, a thousand blue-collar jobs is a hostile government that doesn’t want you there and demonstrates it in thousands of ways.”)
    “If our tax rate approached that of the rest of the world, corporations would have an incentive to invest here,” Otellini said. But instead, it’s the second highest in the industrialized world, making the United States a less attractive place to invest–and create jobs–than places in Europe and Asia that are “clamoring” for Intel’s business.”

    link to news.cnet.com

  46. 62

    Let’s make the default rule that US patent applications are not published and are not accessible through PAIR.

    Pretty radical proposal there. Has anything like that ever been attempted?

  47. 61

    Well, Paul F., et al., why don’t we run a test? Let’s make the default rule that US patent applications are not published and are not accessible through PAIR. We instead provide the option on filing to request publication (for a small fee).

    What do you think would happen?

  48. 60

    Re “what % of applications are filed with non-publication requests?”
    Only about 5% of applicants availed themselves of this already exisitng option as I recall hearing last.
    [Thanks for that reminder of how clueless people who propose legislation like this can be. Not even to mention how rarely trade secrecy protection can be a valid alternative for any protection at all. Or the existing statute for collecting royalities for infringement of pending claims, if they issue, and were noticed. Furthermore, the main beneficaries of returning to U.S. non-publication would be the more than half of all U.S. applications filed by foriegn companies.

  49. 59

    “No, because (1) the amount of the publication fee is not specified in the statute, and (2) issued patents still need to get published.”

    Agree on (1), thanks, but on (2)? No, the pubs fee was specifically supposed to pay for the 18 month pub. Despite the inconsistency of the fact that a never-granted-but-published app would never have such fee paid…

  50. 58

    “I wonder what % of applications are filed with non-publication requests?”

    All of `em what don’t publish.

  51. 57

    “I wonder what % of applications are filed with non-publication requests?”

    All of `em what don’t publish.

  52. 56

    does the proposed bill rescind or reduce the publication fee to be paid by the applicant at time of issue fee payment?

    No, because (1) the amount of the publication fee is not specified in the statute, and (2) issued patents still need to get published.

  53. 55

    IANAE, “Unless he’s [Kappos] truly desperate to save a few bucks on publications.”

    Speaking of which, does the proposed bill rescind or reduce the publication fee to be paid by the applicant at time of issue fee payment?

  54. 54

    Malcolm: In addition, each filed application would be ranked as “promising”, “average” or “pure crxp.”

    Where do you think the PTO will manage to find 19 other people qualified to do that?

  55. 53

    Paul Morinville wrote, “I don’t want to litigate. I want to start a company based on my innovations.”

    So start your company.

    Skip the patent filing. You don’t need a patent to sell your innovation (in fact, a patent does not permit you to sell your innovation).

    A patent only gives you the right to stop others (via access to the courts) from make-use-sell-etc. your innovation.

    But you don’t want to litigate.

  56. 52

    Maybe a better law would be one which creates a Commission of Pre-Patent Summarization consisting of twenty commission members who review each filed patent and prepare a 50-500 word summary of the disclosure. In addition, each filed application would be ranked as “promising”, “average” or “pure crxp.”

  57. 51

    Paul,
    If you don’t want to publish your patent application, you already have that ability.

    A few comments for your consideration:
    As stated in the above article:
    “So long as an applicant agrees at the time of filing a U.S. application to forego foreign patent filings in countries that publish applications 18 months after filing, the application may include a request for non-publication.”
    This is NOT A CHANGE. You have this ability RIGHT NOW. Talk with your patent attorney about it.

    Effectively, what would this nonsense bill accomplish (in terms of providing secrecy of US patent applications) that can’t be accomplished already? Nothing.

    Would this nonsense bill actually provide secrecy of all patent applications? NO…any patent application filed outside of US would still be published.

    My guess is that the signers of this bill just wanted their names attached to a bill that had “job repatriation” in the title. The bill itself is just nonsense, and it angers me for our government to waste time on this nonsense bill.

  58. 49

    The rest of the application, even if not printed, should still be laid-open for public inspection, as in Public PAIR, after the 18 month date.

    Hey Ned, maybe that’s what the big companies are after. The spec would still be available for viewing and shamelessly copying, but it wouldn’t technically be published so they would owe no reasonable royalty during the very long pendency period.

    Gosh, it sounds so sinister when I say it that way.

  59. 48

    This provision of the bill is a dumb idea! It won’t create one job.

    However, if something like it were to become law, it would be better if the PTO could publish an independent claim of the application and a representive drawing figure, as in the Official Gazettes. A patent application claim gives far more info and is harder to evade than abstracts.

    The rest of the application, even if not printed, should still be laid-open for public inspection, as in Public PAIR, after the 18 month date.

    Let’s hope that the politicians (who know very little if anything about patents) figure out how dumb the proposal is and drop it from the bill.

  60. 47

    IANAE,

    What you described is the Quo.

    The patent system’s original design and intent was not Quo for free.

    Really, you be making this much too complicated.

  61. 46

    Because you support the quid without the quo (i.e. the jacking of patent owners).

    Of course, doesn’t every good socialist?

  62. 44

    Ned, my point is that my entrepreneur prospered despite A publication. All yours did too, I’ll warrant.

    Or are you contending that they all would have failed, had their been an A publication system back in those days?

  63. 43

    you would truly understand why it is important to keep your technology secret until you get protection that is sufficient.

    Ah, but what protection is sufficient? For Paul Morinville, the right to sue infringers is not sufficient. He wants to start a business and have nobody copy him at all, so the entire patent system (not just the pre-grant publication) is at odds with his objective.

    In a well-functioning patent system, patents would issue at around the time they are currently published. And then people would be able to copy your idea. Sure, you could sue them, but you probably couldn’t keep your technology secret for long enough to get to market first, and possibly not even long enough to get the funding for it.

    I understand why secrecy is important, but people who want secrecy should not be filing patent applications. The patent system is designed for making enabling disclosures available to the public. It’s designed to explain to your competitors exactly what they are not permitted to do, and how wonderful that forbidden technology would have been for them.

  64. 42

    So who are the players behind this attempt to effectively repeal the pre-grant publication that big business likes, and where did they get all their political clout?

    Why AI, ‘natch.

    I chuckle at me – a topic Ned and I agree on.

    IANAE – try applying that noggin of yours and see the subtleties of unintended consequences of Quo taken before Quid given – (think of the adage Why but the cow whenthe milk is free). Weza done gone over other aspects like why should the Office hurry, or get things right, since the applicant has lost all options with publication – whats’he gonna do? what are his options – abandon? like h_ll – might as well keep those RCE’s pluggin. Now, if the flack gets to be too much, he can tell the Office to get stuffed and he hasn’t lost his Quo.

    Further, your statement carries one heck of an assumption that he will receive a patent (justly) – and while that might be changing, that statement carries ZERO actual weight given the unexplainable abnormal Dufas drop to 40% allowance.

    Welcome to the world of the real.

  65. 41

    IANAE, obviously you have no understanding of business, otherwise you would truly understand why it is important to keep your technology secret until you get protection that is sufficient.

  66. 40

    Max, you cite anti-patent British maverick Dyson. I cite back Eli Harari, the inventor of a certain flash technology that has come to dominate the market. His company: Sandisk. link to people.forbes.com

    Next, I give you Viterbi who founded Qualcom. He invented critical cell phone technology and his company is now a major player in the field due to patents.

    Intel was founded by mavericks who filed patents.

    We can go on and on. History is repleat with examples of men whose ideas have transformed the world, and who prospered through patents.

  67. 39

    EG, are you saying that publication of the abstract alone would place the unpublished remainder of the application in the prior art?

    If so, I disagree and think that a court would never so hold. Instead, only the abstract itself would be prior art for whatever it teaches within its four corners. The subject matter in the cases you cite was actually publicly available (just not easily findable)

  68. 38

    “Are you shxtting me? That’s the stoopitest idea I’ve heard in a long time.”

    Because you support the quid without the quo (i.e. the jacking of patent owners).

  69. 37

    Early publication breaks the deal.

    No it doesn’t. The applicant can still get a patent on anything he can identify in his application that is patentable. Publication does not diminish his entitlement to a patent in any way.

    The deal is not broken merely because performance isn’t simultaneous by both parties. Though if it were, I can see why a patent office would want to employ Albert Einstein.

  70. 36

    Ned: “So anyone truly interested in expanding American jobs would be interested and favoring American startups in any way possible.

    Malcolm: “Uh, no.”

    Malcolm do you disagree that helping US startups is important to expanding US jobs, or do you actually believe that favoring Japanese imports helps American jobs?

  71. 35

    Rodrigo: “Anyway, disclosure is the purpose of the patent system. Patent protection isn’t merely an incentive to invent, but to invent and disclose.”

    Your two sentences are somewhat inconsistent. Compare “is” to “merely.”

    Fundamentally, disclosure in exchange for a patent is the bargain.

    Early publication breaks the deal.

  72. 34

    EG. Why shouldn’t unpublished pending US patent applications be the basis of perfectly good obviousness attacks. Has it not always been the case that publications of the USPTO that occur years after the filing date of the claim under examination can serve as the basis of a perfectly good obviousness attack on that claim?

  73. 33

    Instead of fixing their backlog, why on earth are they continuously screwing up their system and making more of a mess for everyone?

    It’s a bill in Congress, and I don’t think it was Kappos’ idea. Unless he’s truly desperate to save a few bucks on publications.

  74. 32

    My point Paul, if you look again at what I wrote, is that Dyson was a one man band, innovated, sold product and is now very big and very rich, and he did it in the homeland of A publication, and the A publication system was no impediment to him. Judging by the way you write, you can do it too.

  75. 31

    Its ridiculous and would complicate things for a lot more souls than Kappos would care to know. Instead of fixing their backlog, why on earth are they continuously screwing up their system and making more of a mess for everyone? It has to be opposed.

  76. 30

    “If this dumb idea comes into play, is a patent application considered to be published prior art if only the abstract is published?”

    Very possibly based on either Bruckelmyer v. Ground Heaters, Inc. or In re Wyer, if the application is otherwise accessible. A majority of the Federal Circuit panel in Bruckelmyer held (over a strong dissent by Judge Linn) that two drawing figures which were cancelled during prosecution of a Canadian application (and thus were not published with the issued patent), but which remained in the file wrapper of the issued patent were a “printed publication” bar under 35 USC 102(b) even without a printed abstract. Wyer held that a published abstract of an Australian application was sufficient to make the Australian application a “printed publication” bar. Admittedly, Bruckelmeyer and Wyer involve laid-open published foreign applications, but the basis for holding would seem to apply as well to U.S. applications for which only an abstract is published. Not guaranteed but possible.

  77. 29

    Max finally articulated something worthwhile, at least in a limited context, in his 11:35 post.

    Of course, the applicability of any such scenario is dependent upon the original intentions of the patent applicant regarding management of the resulting IP.

    Although the scenario that Max articulated does play out at times, I’m not at all convinced that it comports with Paul’s original intent in filing a patent application.

    Paul, secrecy is one solution, but reducing pendency is the far better solution, as long as it doesn’t come at the cost of examination quality–and since examination quality sucks now, pendency could be substantially decreased at little to no quality cost.

    The logical extension of this is to convert to a registration system, or to a “French-style ‘lightweight’ examination”.

  78. 28

    Paul Morinville: I don’t want to litigate. I want to start a company based on my innovations.

    Paul, suppose the patent examination system were nearly perfectly efficient. You’d hypothetically get your patent within a year or so, at which point it would of course be published for all to see.

    What then? You’d have no benefit of secrecy, and big companies would be just as capable of copying your disclosed invention. Sure, you could sue them, but then you’d have to litigate, which you said you don’t want to do. And your contingency fee arrangement apparently requires a million bucks up front for some reason.

    I think you have a problem with the patent system in general, and not the relative timing of publication and grant. That’s your prerogative, of course. Filing patent applications is optional. I just wish you wouldn’t call for a “fix” that doesn’t fix what you think the problem is.

  79. 26

    MaxDrei “Look at European entrepreneur James Dyson. To begin with, he was a savage critic of the patent system. Now, some years later, he is a global titan with a big patents department of his own, and a stream of A publications.”

    Maybe you hit on the issue… if you’re big – publish… if your small hide until you’re big and then publish.

    There’s protection if you’re big. There’s none if you’re small.

    If the argument then becomes that only the big can innovate, then the discussion is over. But if you believe that the little can contribute too, then we need to fix something so they do.

  80. 25

    Rodrigo, some think that the purpose of a patent system is to promote the progress of gainful employment, that only start-ups create “new jobs” and that A publication is bad for start-ups. Ergo, get rid of A publication.

    But I am struck by the conjunction of utterances from two people who know what they are talking about. There is Paul M who is still an entrepreneur but has not filed a patent application since 2004, and my physics professor turned venture capital whizz, who asserts that a patent portfolio (other than in bio) is nothing more than a comfort blanket under which the VC can huddle.

    Start-ups don’t want to spend their days in court. Rather, they want to run faster than the global titans. Look at European entrepreneur James Dyson. To begin with, he was a savage critic of the patent system. Now, some years later, he is a global titan with a big patents department of his own, and a stream of A publications. He doesn’t criticise the patent system any more, since he saw off Hoover and the copyists.

    American entrepreneurs should stop whingeing about A publication and instead copy Sir James Dyson.

  81. 24

    Under this system, I wonder how many people choose not to file because of the “disclose” portion of the agreement happens is 4-6 years before the protection portion of the agreement.

    Can’t the same be said about the “invent” part? In any case, if that delay is such a problem, there are definitely better (or at least less bad) alternative solutions: provisional protection, deferred examination, streamlined grant without presumption of validity, etc. Withholding publication after grant, with the inherent threat of submarine patents.

  82. 23

    So anyone truly interested in expanding American jobs would be interested and favoring American startups in any way possible.

    Uh, no.

  83. 22

    Rodrigo: “Anyway, disclosure is the purpose of the patent system. Patent protection isn’t merely an incentive to invent, but to invent and disclose.”

    Under this system, I wonder how many people choose not to file because of the “disclose” portion of the agreement happens is 4-6 years before the protection portion of the agreement.

    I’m happy to disclose if I get the protection portion sooner. Otherwise, I choose not to take the deal.

  84. 21

    In an effort to promote repatriation of jobs, H.R. 5980 was introduced on July 29, 2010. The Bill proposes replacing the 18-month publication of U.S. patent applications in their entirety with a requirement that the U.S. Patent & Trademark Office (USPTO) publish only the abstract of an application until it issues as a patent.

    Are you shxtting me? That’s the stoopitest idea I’ve heard in a long time.

  85. 20

    Correction: I must add that it is quite incredible that over one century after the Selden patent, there’s still, in the US, anybody ready to argue against fixed-term patent application publication.

  86. 19

    I must add that it is quite incredible that, there’s still, in the US, anybody still ready to argue against fixed-term patent application publication.

  87. 18

    It seems silly that any independent inventor would apply for a patent knowing that it will be published to everyone 4-6 years before it is protected.

    I wonder why all those Germans bother, then. Anyway, your “independent inventor” will normally have to disclose to somebody what his invention is, or he’s hardly going to get any funding to bring the invention to market. In the current post-bubble mood, investors are hardly going to be swayed to put a penny on “an undertaking of great advantage but no-one to know what it is”, as during the South Sea Bubble.

    Indeed, the biggest problem for American inventors abroad isn’t that they are obliged to disclose their invention to those dirty furriners, but that they’ve usually already done so themselves of their own volition before the priority date, thus shooting their own foot in all first-to-file jurisdictions without an inventor grace period (that is, nearly all of them).

    Anyway, disclosure is the purpose of the patent system. Patent protection isn’t merely an incentive to invent, but to invent and disclose. Giving the inventors the opportunity to withhold publication of the invention by delaying tactics during prosecution isn’t just unfair towards third parties, it actively defeats the main purpose of the patent system. If your concern is that the length of the patent prosecution discourages independent inventors, then you should consider alternatives such as deferred examination, French-style “lightweight” examination, or the German-style utility model.

  88. 17

    IANAE, we should also pay careful attention to whom it was that demanded that United States began publishing patent application and whether the people who demanded that we began publishing patent applications in United States have American jobs in in mind and whether it was to protect them or to eliminate them.

  89. 16

    IANAE, Today, if you’re not a big company, only a foolish entrepreneur or a hopefully litigious patent holder will file a patent.

    I also believe that most inventors don’t want to end up in litigation – they’d rather just start a company and they file patent applications with that in mind.

    I think the odds of lowering pendency are much lower than the odds of secreting applications. So, let’s just keep them secret and fix the problem.

    I know this is contrary the purpose of the patent system, but it’s easier to fix. Inventors can feel secure until they’re protected and patent applications will continue to be filed, so the process will again promote innovation.

    Today it does not promote innovation. I have not filed any new patent applications since 2004 when I finally realized that the system is seriously broken. This despite inventing several more new technologies, which I now keep secret. It makes no sense for me to file them. They just get taken and leveraged by some big company, leaving me with little or no recourse other than litigation.

    I don’t want to litigate. I want to start a company based on my innovations.

  90. 15

    IANAE, I really do not know. But there have been a number of reports and papers published recently that indicate just how important startups are to creating new jobs. As I mentioned in another thread (by reference to a recent study), almost all new jobs are created by startups, not by big business, who tend to grow by acquisition of startups.

    So anyone truly interested in expanding American jobs would be interested and favoring American startups in any way possible.

  91. 14

    Ned: Once one analyzes the players, one understands the plot.

    Okay, American big business likes publication because they’re stuck with it internationally anyway and they’d rather impose a level playing field on their smaller competitors. That makes sense to me.

    So who are the players behind this attempt to effectively repeal the pre-grant publication that big business likes, and where did they get all their political clout?

  92. 13

    We have publication because of the deal with the Japanese. Now who was behind the deal with the Japanese? American big business? And what does American big business think about publication? They think it’s a good thing – as their own patent applications are filed abroad and published anyway. So competitive intelligence among big business is hardly the issue.

    So what are they really interested in finding out about is what’s going on with those applicants who are not filing abroad. And who are they? Small inventors? Startups? People who are entering their space?

    Once one analyzes the players, one understands the plot.

  93. 12

    If I were interested in Paul’s invention, I would want to get my hands on his app before the end of the Paris priority year. It is worth more to me then, for I can re-write it with my inside industry knowledge so it covers properly what it is supposed to cover.

    Next best thing would be to get hold of it soon after A publication. There is still time to get decent claims to issue.

    But after issue. Forget it. By then, it is worth hardly anything. At least, that’s my experience in Europe, when doctor inventors sell their stuff to acquisitive US medical device companies. Bad luck Paul.

  94. 11

    It seems silly that any independent inventor would apply for a patent knowing that it will be published to everyone 4-6 years before it is protected.

    It doesn’t seem that silly. Some inventions aren’t nearly ready for market when the patent application is filed, publication or not. Besides which, at least if the application is published you can get a reasonable royalty once the patent issues. A royalty on enough product to saturate the market is bound to be a princely sum.

    And how are you to obtain funding based on a pending application when the application itself is not published? Should the investor take you at your word that your unpublished spec supports a commercially valuable claim? Or will the spec and claims still be viewable in PAIR, public but unpublished, thereby defeating the benefit of secrecy but still denying the inventor his reasonable royalty?

    I submit that the real problem here is not the publication but the long pendency. If patents could be issued in a more reasonable timeframe, inventors would have their rights and we could all have our publications.

  95. 10

    It seems silly that any independent inventor would apply for a patent knowing that it will be published to everyone 4-6 years before it is protected.

    It’s hard (impossible?) to fund unprotected ideas, so by the time the inventor can get funding to put a product on the market, others have had plenty of time to read the published application, build products based on it, and then saturate the market with the invention.

    It’s hard (impossible?) to fund a product in a saturated market, so the inventor’s next reasonable step is find find a good law firm willing to provide services on a contingency basis and a million or so bucks to pay out-of-pocket. That’s hard too, but not impossible. You guys know if that’s impossible.

    As one of the guys inventing new things and hoping for at least a little protection from a seriously screwed up system, I vote for no publication until patent is granted, and therefore protected.

  96. 9

    If this dumb idea comes into play, is a patent application considered to be published prior art if only the abstract is published?

  97. 8

    IANAE, thanks for the laugh. On “unintended” sorry I was so opaque. I was thinking that the A publication of the full text is the “Wake Up Call” that your competitor has got good stuff coming, which is going to sweep the board unless you can very quickly come up with a design around. That work of designing around creates jobs.

    So, if you abolish A publishing, the frenetic activity provoked by A publication doesn’t happen either. Fewer jobs, not more.

    Of course, the frenetic activity happens in those countries which do have A publication: pretty much everywhere in the world except the USA. These days, Germany and China ask each other who gets the title “Export Weltmeister”. How can that be?

  98. 7

    Max: Why do the words “Law of Unintended Consequences” come to mind so rapidly though.

    I have no idea why. This sounds perfectly intended, it’s just hidden behind a catchy title. After all, could you afford to vote against the “Awesome Fun Lucky More Jobs For Americans Happy 888 Act Of 2010” in an election year, even if the bill itself was all about funding the clubbing of baby seals?

  99. 6

    But Night, fixing the PTO won’t see it off. There are folks out there like AI and ping who obsess about the “quo” and, as we now see, are finding an echo in Congress. Who’s going to bring home to the voters the cold reality about “repatriating” jobs?

  100. 3

    Who is going to write the abstract? In Europe, the EPO does it. It can do this because the abstract is expressly declared in the statute to be not part of the basis for the grant of exclusive rights.

    Why does the EPO reserve this power to itself? Because left to themselves, Applicants have an interest in writing deliberately uninformative abstracts, totally unfit for purpose.

    But knowing that the EPO is liable to re-write their disgraceful offerings, Applicants do write meaningful stuff. They would rather see their words next to their name on the front of the patent for the next 20 years, than those of the Examiner.

    It’s the same in EPO prosecution. If Applicant does not conform his specification to the allowable claims, Examiner will do it for him. Who wants that, when the claims are going to be construed, for the next one or two decades, by reference to the conformed specification that goes to issue.

    Let me guess. No Patent Bill has a snowball’s chance unless it is hitched from the outset to “job creation”. Why do the words “Law of Unintended Consequences” come to mind so rapidly though.

  101. 1

    I don’t get it–how is this bill supposed to “repatriate” jobs? What jobs? Typesetting??

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