Survey and Disclaimer: I thought that I had solved this, but the survey software that I used for last week's survey failed by allowing individuals to post multiple times and without recording their IP addresses. However, based on the diversity of responses, there are reason to believe that the survey results were not overwhelmed by multiple-voting. In addition, the divide between those for and against a first-to-file system mimics prior survey results. The survey was open for about 20 hours and received 500 during that time.
Results: The first chart below shows the almost even-split between those who support a first-to-file regime as compared with those who do not. Interestingly, most respondents had a strong opinion – with 70% expressing either strongly negative (voting "1") or strongly positive (voting "5"). Self identified patent prosecutors tended to show less support to first-to-file than self-identified patent examiners and patent litigators. Regardless of the level of support for the first-to-file regime, the vast majority of responses indicated support for retaining a filing grace period for an inventor's own pre-filing activities.
Most responses also indicated support for allowing third parties to submit prior art and commentary during prosecution and to limit false marking litigation. There was little support for special rules that would govern the litigation business method patents (such as limiting venue and providing for interlocutory appeals).
Perhaps most interesting, very few of the responses supported the use of "secret" prior art in analyzing the question of obviousness. As I have previously discussed, most countries around the world only use publicly available prior art to judge the question of obviousness or inventive step. Rather, around the world, prior art that was not publicly available at the time of filing is used only for novelty and priority issues. In the US, secret prior art is regularly used for obviousness analysis. The primary source of the secret prior art is currently defined under Section 102(e) of the Patent Act and covers patent applications that were pending, but not yet publicly available. Any true effort at international harmonization would deal with this issue as well. Several responses explicitly indicated that, if adopted, the US first-to-file regime to attempt to be uniform with Europe. "The hybrid approach will only complicate and cost more in lawyer fees"; "The SECRET PRIOR ART would be a total disaster !!! and make the US one of the least patent friendly jurisdictions on the planet."
Few responses offered support for giving the USPTO substantive rulemaking authority. However, there was strong support for greater fee setting authority. Examiners were most in-favor of heightened USPTO authority while patent prosecutors were the most wary.
Finally, as many know, the current reexamination system has been criticized because it only allows reexaminations based on patents and published documents. Responses showed a lukewarm support for broad post-grant review system that could reach "any patentability question."
Your welcome RoundAndRound – just another friendly observation from your truly that sets the gold standard.
Gotta love the Boundy master throwin out the Boundy work:
“David Boundy said… Well, it was a little more than one -…
– David Boundy”
That ranks up there with the Big D quoting (and linking to himself and just below the all time favorite of me quoting me.
Nice job HMS (seriously – some of us do appreciate your background work that would have dammed the rules had they progressed. Your work basicly showed Lord Kappos the most prudent path was a full scale retreat.
David Boundy said…
Well, it was a little more than one –
– Dr. Tafas, and his attorneys Steven Moore and Jim Nealon at Kelley Drye
– Sherry Knowles at GSK
– David Boundy and a team of about 20 volunteers putting together arguments that led OMB to direct the PTO to stand down on the continuations, claims, and IDS rules in January 2008 and the appeal rule in December
Which I guess is is a short-enough list of exceptions to prove the rule.
Now, in this legislation, we have a political process that responds to numbers more than logic. Have you called your congressman?
Dennis, you need to ask the grace period quetsion over again. The question was framed ambiguously — does “Yea” mean “in favor of change,” or “in favor of retaining the grace period?” I voted Nay on the former assumption, but you post your results on the latter.
Well, it was a little more than one –
– Dr. Tafas, and his attorneys Steven Moore and Jim Nealon at Kelley Drye
– Sherry Knowles at GSK
– David Boundy and a team of about 20 volunteers putting together arguments that led OMB to direct the PTO to stand down on the continuations, claims, and IDS rules in January 2008 and the appeal rule in December
Which I guess is is a short-enough list of exceptions to prove the rule.
Now, in this legislation, we have a political process that responds to numbers more than logic. Have you called your congressman?
“one of the hottest legal areas around”
Just ask Mooney, he gets pretty hot sitting on that steam grate all day yelling patent-related stuff at the passers-by…
Learn About the Patent Bar Exam
Imagine beginning your new career in Patent Law. If you are an engineer or scientist, chances are good that you may begin your career in Patent Law after you pass the Patent Bar Exam. You will be classified as a Patent Agent upon passing this exam. If, in addition to the degree in engineering or science, you also have completed the requirements to practice law, then you may be eligible to become a Patent Attorney.
As you are probably already aware, a career in Patent Law will position you directly on the cutting edge of technology. It’s quite a prestigious field and one of the hottest legal areas around.
After reading the update, re: allowing multiple posts, my confidence in the results of the poll has gone from precious little to none…
Let’s make sure we understand this as an “unscientific” poll and one that does not exclude non-practitioners. Thus, I find it hardly characterizes the pulse of the “patent bar”. How about we rename this as the “pulse of the Patently-O reading community,” which we know to include hacks like Mooney.
WOW, and I thought watching the Christine O’Donnell debate when she didn’t know anything about the establishment clause was painful. The e, f, and g exceptions are in NO way violations of the 1st amendment’s protection of the freedom of association.
It’s clearly time for a CLE on Con Law if you’re an attorney.
“Not that I am defending Ping”
Lolz there Dim – aint no need to defend me.
“No more backlog?”
Close dem doors – same result knucklehead.
“If you WERE actually “watching” [instead of making wild constitutional allegations that would have been raised by trial attorneys years ago if they were realistic”
An interesting thing I learned the other day. Lawlyers are pretty much huge pussies when it comes to challenging the lawl.
GIGANTIC.
“Giving the PTO rulemaking authority would be an unmitigated disaster. Can you imagine what we would’ve been in for if Dudas had been able to do that?”
No more backlog?
The Man Who Watches,
Not that I am defending Ping, but you have a few errors in your logic.
The most prominent is that the legislation under consideration in Congress now does not in fact make the U.S. the same as the rest of the world regarding First to File. The provisions do not get us any closer to the actual First to File systems anywhere else in the world. It is abundantly clear that serious differences exist in the proposed US First Inventor to File and any existing foreign First to File system.
Secondly, your reference to 35 U.S.C. 371 is as vague as your First Amendment arguments. 371 discusses how an application enters the jurisdiction of the United States in a National Stage application. U.S. law fully applies to any such applications and there is no sign anywhere of “abrogation of state soverignty to foreign powers.” There are no carve outs to substantive U.S. Patent law that these foreign applications enjoy.
I am afraid that the rest of your post tends towards the ranting and hysteria that, unfortunately, make Ping look correct. We do not need more postings encouraging him. Please provide clear and logical arguments if you are going to engage him.
I agree with you the man who watches… Windmills should not be just on Tuesdays.
Ping you know not of what you speak. In fact the Paris Convention treaty was the second abrogation of state soverignty to foreign powers by the Federal Government-the Contracts Clause being the first. Why don’t you take a gander at 35 U.S.C. 371 before you continue further demonstrating your ignorance on this very complex and important topic. In fact the first to file system is being advanced to make the U.S. the same as the rest of the world . . . a task I am not entirely sure is worth undertaking-emulating the rest of the world I mean. I would even go one further in that the very fact that the Executive Branch and the Legislative Branches of the Federal Government allowing the Federal Reserve (a private organization) to use public funds to bailout foreign banks, one of which is the bank of country we are currently bombing, is a act of treason in time of war and should be punishment accordingly. You see the banks loaned the money to that country Libya and they purchased arms with it and now we are bombing the country, because they use those arms against people we don’t want the arms used against. Anyway it is no use to discuss this with you as I am sure you either lack the mental capacity and/or interest to fully understand the fraud that is being perpetrated upon the American people by the organs of the Federal Government.
YAHHH BUDDY you be so right…
“Only this time . . . it is a global fight.”
Um, no. Our laws still only affect the rights in this country. There are no trans-country laws at issue here.
TMWW – ya being a bit looney on the “by teh people” schtick.
“The statute that is currently before Congress is not retroactive”
That very premise kills your argument.
Ya gonna havta do a better job of esplaining just how the (F)irst (A)mendment comes into play here. The current argument fails to make it.
Patents ain’t just about technology boys. Wake up. It is now the big league. Once again Civil Rights will be pitted against the drive for profits and taxable events. We go back and fight again the fight that our forebearers fought in the 18th Century. Civil Rights versus profits. Only this time . . . it is a global fight.
Look a Fukushima. The reason the Chenobyl option was not immediately exercised was that TEPCO actually tried to salvage the reactors, reduce its losses. Even the Japanese government was stymied by the implications of corporate control that prevented quick reaction to the nuclear fallout. This is what happens when profit driven entities control government functions-not unlike the continued leaking of oil in the Gulf . . . another result of profit driven entities preventing government by the people from acting in a manner to protect the people.
The statute that is currently before Congress is not retroactive. Therefore, the thousands of patents that are currently in force and were allowed in view of the e, f and g exceptions are subject to attack on First Amendment grounds. The First Amendment attack is the same as against obamacare: the right to free association. By granting people who are under an obligation to assign patent rights to a common entity the ability to acquire patent rights whereas a person who desired not be have a duty to commonly assign is clearly a violation of an individual’s right to free association.
Only 500 votes?
That be like only a dozen or so voters then.
“clearly violates the First Amendment of the United States Constitution”
Um, how?
It not be so clearly.
And by the by, that would be violates… (C)onstitution.
Paulie – that made absolutely no sense.
If you WERE actually “watching” [instead of making wild constitutional allegations that would have been raised by trial attorneys years ago if they were realistic] you would have noted that the 35 USC e f and g prior art provisions that you challenge and “don’t see being fixed any time soon” are being eliminated in the pending patent reform legislation.
Agreed, but how much of that Toupin-Dudas punitive draconian rulemaking problem [ignoring hundreds of legitimate public objections] was due to the fact that out of the entire patent bar, and all their clients, and all their professional organizations, only one individual and one company had the guts to intitiate a legal fight in court to stop it?
I think all should realize that the intent of this legislation is to return the patent systemt to that clubbish cabal of international manufacturers. This will never happen. As Glaxo Smithkline pointed out there are many constitutional problems with Title 37 CFR as it now exists. This legislation will fix none of those problems. What will happen is an avalanche of litigation over the consitutionality of the various provisions. Take Title 35, for example, the e f and g prohibitions of using certain prior art in support of obviousness rejections clearly violates the First Amendment of the United States Constitution. I don’t see this being fixed any time soon. No this fight is merely gettin interesting. The days of the IP world doing what they desire independent of other social and constitutional restraints on their activities are over.
In anticipation of the denial of some poeple as to the full effect of the present 102(g) secret prior art law, here is some:
The Statute: 35 U.S.C. 102(g)(2)[as amended in 1999] “..before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” [N.B. This is an independent basis for U.S. patent invalidity that does not require public use, sale, publication, or the filing of any patent application.]
Controlling case law examples: New Idea Farm Equip. Corp. v Sperry Corp., 916 F.2d 1561, 16 USPQ2d 1424 (Fed. Cir 1990); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir 1986); Apotex USA Inc. v. Merk & Co., 254 F.3d 1031, 59 USPQ2d 1139, 1143 (Fed. Cir. 2001); Dow Chem. Co. V. Astro-Valcour Inc. , 267 F.3d 1334, 60 USPQ2d 1519 (Fed. Cir. 2001); Eolas Tech. Inc. v. Microsoft Corp., 399 F.3d 1325, 73 USPQ2d 1782, 1789 (Fed. Cir. 2005); etc.
Re: “The primary source of the secret prior art is currently defined under Section 102(e)”
That is because it is the only secret prior art a PTO examiner is capable of finding! [from published prior applications].
But 102(g) is ALSO a source of existing secret prior art [unknown prior reduced to practice inventions by others not abandoned or supppressed]. A 102(g) prior art date is not limited to, and does not require, an earlier filed application [as does 102(e)] and it is not eliminated by a Rule 131 declaration, even a valid one. Nor does it require any interference to use to defeat a patent of another. [Hence, allegedly a risk factor for some business investments.] THAT secret prior art would be eliminated if S.23 and its House equivalent are passed. [Not that I “have any dog in that fight” personally, as the saying goes.]
Giving the PTO rulemaking authority would be an unmitigated disaster. Can you imagine what we would’ve been in for if Dudas had been able to do that? That continuation rules package would’ve looked like a walk in the park in comparison.
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