In a letter last week to Secretary Pritzker (DOC), a group of five Democratic Senators have urged for administrative patent reforms to “prevent[] low-quality, vague patents from entering the market.” The group include Senators Jeff Merkley, Tom Udall, Martin Heinrich, Mark Begich and Mark Warner.
Although the letter does not provide direct policy plans, it does provide a set of guidance that should be well taken by the Patent Office:
(1) Take steps to incentivize examination quality over quantity.
(2) Direct Examiners to ensure that the patent file history is complete and resolves any ambiguities with clarified patent terms prior to issuance.
(3) Assess whether the PTO’s steps to “address functional claiming concerns . . . are sufficient to address concerns that functional claiming provides a loophole from definite, precise claims.”
(4) Expand crowdsourcing and public data analysis as a mechanism to identify problematic patents and categories of patents — then target those areas for more thorough examination.
(5) Ensure public access to information about patents and the file histories.
The suggestions by the Senators are all helpful and are directed to an area of patent law ripe for reform. Lets hope that the USPTO can take these suggestions and create sensible policy.
[…] Patent System Needs More Clarity and Transparency […]
Random, re: Halliburton and its holding, you need to read Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 S. Ct. 707, 42 L. Ed. 1136 (1898). The PON of the improved brake (Claim2) was claimed functionally and means plus function was not used. The SC held that the claim would be invalid unless construed to covert the corresponding structure and equivalents.
From that time, it was thought permissible to claim all elements functionally in a combination claim due to the court construction imposed by Westinghouse.
Halliburton in fact implicitly overturned Westinghouse because the court held that the apparent breadth of the claim was as much of a problem as its real scope after construction.
should read “construed to cover”
Random, I don’t like 112(b) because while there may be a notice issue about whether a given item falls into the scope, the scope is usually definite. That’s a substantially weaker argument than saying that the applicant has disclosed X, claimed Y, and hasn’t shown that X=Y.
There is also the issue with whether the functional element is at the exact point of novelty as required by Supreme Court case law. But when it is, by definition, the patentee is not “particularly” claiming his invention even though the scope of this claim might be clear.
Given Nautilus, it might be difficult now to state that a claim functional at the point of novelty is invalid under §112(b) regardless of Perkins Glue, Wabash Appliance and Halliburton if the only question the courts allow to be determined is whether the scope is clear. This essentially reads out of the statute the requirements that the claim be particular.
“s at the exact point of novelty as required by Supreme Court case law”
Cite please. (and try to make it a pertinent, post-1952 citation, thanks)
“The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”
Faulkner v. Gibbs, 338 U.S. 267, 70 S. Ct. 25, 94 L. Ed. 62 (1949).
As previously pointed out Gibbs is not an acceptable cite as it is pre-1952.
Try again.
The “point” anon is that “we” are talking about claims functional at the PON. We do not have any objection to functionally claiming elements that are old.
That you do not limit your remonstrations to the arguments we make is the problem.
It is not a problem, because your PON use is ultra vires, whereas my arguments are soundly based on the law as written and understood – see Frederico.
Again, anon, I really like how you get from here to there by pretending the CCPA and the Federal Circuit can overrule the Supreme Court.
I am here because of Congress Ned – not any court.
Tell me again which branch of the government has the authority to write patent law?
anon, and congress did not change the text of 111(a) or (b), but still you ignore cases prior to ’52? Where do you get off?
Ditto 101 who text has not changed materially since 1793.
You live in some sort of fantasy land, anon.
(What did change was 282 that seemingly carved out 101 from validity.)
Ditto 101…
You are fond of not seeing the big picture and what was carved out of what became 101, are you not?
How is something unclear and yet particular?
Anon, How is something unclear and yet particular?
Are you trying to be cute?
Not at all.
If you are unclear, you are necessarily not particular.
Why do you take that as “being cute?”
The point I am making is that the SC required the claims to be clear in scope, understood by one or ordinary skill at the time of grant.
Particularity is entirely different concept not addressed in Nautilus. But it is at the heart of the functionally claimed problem.
So the real question you should as is how can claims be clear but not particular.
“So the real question you should as[k]”
LOL – no – mine is better – and I asked first.
Clarity and particularity are different but related concepts, Ned.
The interesting aspect of 3) is the very meaning of “loophole.”
For this to be true, functional claiming MUST be permissible under the law.
If, as several of the anti-patent or examiner (or both) types continue to insist – notwithstanding the actual law of the Act of 1952, the Congressional record related to such or Frederico’s commentaries – that such functional claiming is NOT permissible under the law, then no such “loophole” can be said to exist.
This is very much like the point offered to Ned (that Ned has yet to even attempt to respond to) in regards to the action of Congress to offer a limited defense to business method patents, if on its face the law had already made such business method patents not patent eligible. One does not NEED a defense to something that is not statutorily eligible in the first place.
Why is simple logic so hard for some to grasp?
An interesting aspect of 4) is that it appears that a less thorough examination is allowed for any patents outside of the zone of “problematic patents and categories of patents.”
Are these senators really implying different levels of examination based on enforcement/whining levels?
An interesting aspect of 2) is that this appears to be already part of the job that examiners are supposed to do. To the extent then that the senators are saying: “Do your Fn job” I agree.
As to 5), it might be nice if the good senators were more particular about what data they think is not accessible to the public and how that data is related to the Quid Pro Quo that has long been established under the law.
“For this to be true, functional claiming MUST be permissible under the law.”
Just under one interpretation of the lawl.
6, be careful about anon and strawmen.
Identify what you think is a strawman, please.
Anon, the strawman is talking about claiming elements functionally while we are talking about claiming inventions functionally.
Where are you getting this, Ned?
Anon, while for one thing, the only thing I complain about our claims functional at the point of novelty and it every time I say that you say that “point of novelty” is a canard.
However, outside the context of “point of novelty,” I tend to agree with you that functional claiming is quite permissible because one necessarily is claiming old elements. One might also be claiming a method.
It is how you attempt to use “point of novelty” that is the canard, Ned.
Again – your version is what I question.
“because one necessarily is claiming old elements.”
LOL – you mean like in Nazomi?
(oh wait, you still think have not personally come to understand that case…)
Maybe like electrons, protons and neutrons, then. Those are some pretty old elements, and yet, configurations of such are no problemo.
Wise words.
/face palm
Anon, stop it with your strawman arguments. Of course functional claiming is entirely permissible except in one circumstance. This is the very circumstance you say is a canard.
Ned – there is no strawman in my post. Have you read the thread here? Several advance the notion that functional claiming is NOT permissible.
Anon, while functional claiming is permissible functional claiming of the invention is not, and there is a distinction to be made.
In combination claims, some elements might be old and they might permissibly be functionally claimed. As well, all elements of a new combination might be functionally claimed. (This is where Random and I might have a point of disagreement.)
But when the invention is functionally claimed in a combination claim, the combination itself typically is old and the one element improved, but that element is claimed functionally.
You seem to think that you have uncovered a “new wrinkle” in your “attack” on functional claiming.
You have not.
Please establish properly – with pertinent citations to post-1952 law if available your seeming new distinction between “functional claiming of the invention” and “functional claiming is permissible.”
You seem to want to somehow avoid our earlier conversation about Frederico and single means claiming wherein I corrected your version of what Frederico had to say on the subject, and you also seem to want to conflate 112(a), 112(b) and 112(f) – yet again.
Faulkner v. Gibbs, 338 U.S. 267, 70 S. Ct. 25, 94 L. Ed. 62 (1949).
“The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”
See above re Gibbs
..and try to incorporate from Diehr that the invention is the claim as a whole.
Ned – still waiting for you to do this too.
My advice to the Senators is to educate yourself regarding patents. Your list illustrates that you are ignorant and not qualified to be commenting. Recognize that patents have become politicized and that the best thing to do is get everyone out of patents that does not have a background in science and patent law.
And, recognize that Lemley’s paper on functional claiming was published in a vanity press and holds NO water. (And, for anyone who understands patents at all, his paper hurts prosecution by encouraging the application to include more than what is new, but to include everything so as to be able to claim what they invented.)
As for Number 1: figure out senators that the SCOTUS does not understand patent law for 600,000 applications. The Fed. Cir. had 103 right. TSM is the way to go. It provides an objective measure of 103 and can be used to rate examination.
Alice is another nightmare as it just provides more jibberish to be argued about rather than actual issues.
Re: quantity v quality. Id like to point out that the baseline hours for examination were established in 1976
In that year, patent no. 4000000 was issued. Sometime in the last 5 years, I forget when exactly, the first change in hours since 76 was made by adding 2.5 hours across the board. Mind you, the baseline hours varies by art from 15 to 30 some. In 2011, patent no. 8000000 was issued. Which means (in an oversimplified way) that while the knowledge available to PHOSITAS can be said to have doubled, the time for an examiner to consider this knowledge for what it teaches, has increased by less than 25%. Furthermore. I believe that mr. Crouch has shown some charts on this blog that demonstrate that the length of applications and the resulting publications have increased dramatically during the same time period.
edstirling,
The point to consider is not the sum total of knowledge in any one art field per se, but rather the edge of knowledge of the particular art field.
Think of a three dimensional bubble** as opposed to a two dimensional (filled in) circle.
Also, the tools and efficiency of examination is not something that is to be expected to remain static. Yes, the best innovation in this age of information is information processing. To ignore this is to see (and allow) inefficiency where we should EXPECT higher efficiency. Of course, what we should be looking at is whether the examination process itself – as a process – has been keeping up with the best innovations in that field.
This is where the focus should be at.
Instead, we continue to entertain the politics of the Left and the Right trying to shape policy of what should be even allowed into the system.
.
**and yes, the bubble popping is a humorous take-away. Humorous, but off point and unhelpful for this discussion.
It’s very unfortunate that more hasn’t been done in this area. For someone who has legal training and works with examination daily the problem is very clear. You could take an attorney and stick him with the examiners for a week and he’d get the right answer.
The problem is that the office views the sole means of policing the substantive scope of a claim to be 103, as if searching and finding prior art is all that matters. At some point (and the line is crossed daily) you have to tell the Applicants they are not allowed to have the scope they are claiming because they simply didn’t invent that much.
The applicant cannot posit one way of doing something, describe the effect of the act (i.e. claim functionally) and then argue that the art would fill in every other way of doing it. This is pretty simple logic since Morse, but the office has done such a poor job of using it that applicants use this overbroad language all the time, to the point of not even disclosing the one way to begin with.
Someone get me in front of these Senators, I’ll bring charts and everything.
Yeah, we tried that once:
link to en.wikipedia.org
And it was a disaster, for the simple reason that a system of law can’t be based on a totally subjective “smell test” – which, as we learned, completely destabilized the patent system.
Abandoning “merit” as a condition of patentability was one of the central purposes for the Patent Act of 1952. A direct quote from the legislative history:
And here are some comments from P.J. Federico, the most respected historian of U.S. patent law, that accompanied the passage of the 1952 Patent Act (on which our current act is based):
…much like the current “departures” from our currently growing set of subjective tests (e.g., combining references, and “abstract” inventions) is destabilizing our current patent system and should also be minimized.
History…
…repeats
(lol, one only has to be on the watch for the Royal Nine’s own slippery scrivining, as they remain addicted to their finger in the wax nose of 101)
Was he talking about that or the written description and enablement requirements?
^ this guy gets it
^ this guy does not.
Can you explain the difference between:
and:
and:
They are all the same conclusion: a determination of whether the disclosed and claimed invention has enough “worth” or “value” to enable patent protection. And all of them are completely subjective judgments, based on the eye of the beholder.
They are all the same conclusion: a determination of whether the disclosed and claimed invention has enough “worth” or “value” to enable patent protection. And all of them are completely subjective judgments, based on the eye of the beholder.
Hardly. Lets say that I develop a new information processing program. My program opens a Microsoft Word file, calls the “search” function, searches for the word “fact”, and if found, adds “Report” to the top of the page in size 24 bold font and saves the file to a new folder entitled “Reports”. Not only does it do completely obvious acts which the base program already does, but it has virtually no value to anyone.
But when I write my patent, rather than explaining my algorithm, I choose to explain it using functional language similar to this:
A device comprising: a processor; code which, when executed by the processor, causes the processor to: accept an input, wherein the input is text, analyze the input to determine whether the input contains objective fact or not; if the text constitutes objective fact, modifying the text to generate a report, wherein the report comprises the fact described in the input; and outputting the report to a database of information, wherein the database comprises a hierarchical ordered system of storage and wherein the fact is stored in a position within the hierarchy determined to be contextually accurate.
This claim reads on a program which actually does something useful and has commercial value, because one can think of any number of institutions which would enjoy a program that automatically determines fact from opinion, and which catalogs fact. For example, one could imagine such a program being used for automatically cataloging new books into the dewey decimal system of a library.
What the applicant is attempting to capitalize on is the misunderstanding that many attorneys and examiners have that the claim language constitutes a valid description of the invention. If the applicant were forced to describe his invention with particularity (which he is) then it would become clear that his invention represents the worst possible means of expression of an exceptionally large scope. That’s why he doesn’t do it – he knows what he actually created is worthless. If what he invented was actually good he wouldn’t need to intentionally be vague to expand the scope.
I’ll go one step further: Some applicants, realizing that if they disclosed that all they were doing was running the standard Word functions, would hide that fact by never describing even the means of achievement at all. Instead, in their spec they simply describe functional results of unexplained actions, and they say that describing the actions are irrelevant because “the art knows of ways to achieve this” which is technically true, but not descriptive in the least.
The Applicant won’t remove that functional language, instead he will try adding other meaningless limitations until he can convince an examiner to give up on 103. The solution to this that is contemplated by the law is that the examiner would make a 112, 1st or 112, 2nd rejection and tell the applicant that regardless of what the prior art is, what you are claiming simply does not describe what you invented. Because the office never makes that rejection, the 103 eventually falls and the broad functional language remains.
This is not only common but intended in virtually all software processing applications. The applicant thinks up one way of doing something, but knows that a patent on that one way is commercially meaningless, so rather than describe WHAT HE DOES he describes THE EFFECT OF HIS ACTIONS, as the effect encompasses not only the way he thinks of but every other way as well. This causes the result that applicant is not claiming his solution to a problem, but claiming solving the problem itself (which is why the supreme court finds a 101 issue, another thing the office does poorly).
If you have cancer in your arm I can kill that cancer with 100% certainty: I can cut your arm off. That does not support a claim to “curing cancer” because curing cancer encompasses methods that I don’t know, can’t enable, and haven’t invented, many of which I assume would let you get to keep your arm (a not unimportant fact from your point of view). The fact that I can describe actions in a way that gets around 103 is not the sole reason a patent should issue. The fact that I posit one means of achievement does not give rise to a claim on a vague scope that covers any untold number of means I probably didn’t consider.
This test is neither improper, nor subjective. If your spec contemplates doing X, but your claim is directed toward scope Y, you have to show that X fills the scope of Y. By necessity, this requires you to make a statement that we currently know all about Y we will ever know, which as a practical matter never happens. That’s why I can tell you right now that functional claims are almost always overbroad.
Morse claimed any machine that prints at a distance because he had a telegraph. The only way that claim would issue, given the benefit of our hindsight, is if we could say that Morse had possessed and enabled the tv, the cell phone text, the fax machine and the internet capable computer. We know now that it was smart to deny that claim, because there’s no way Morse had those things (and that’s even with the telegraph being a great machine in its own right). But the same is true for any other functional effect: Prove to me that your claim won’t read on something completely different in terms of structure and method of working and you can have your scope. Till then I’m going to tell you that you are not entitled to a patent because you simply didn’t invent that much.
Random, you are just ridiculously lost.
Night, do you agree or disagree that having invented one way of curing cancer one can claim “the” cure for cancer thereby making all subsequent cures by different means or methods infringements?
Sort of like thinking that ‘oldbox’ precludes all improvements to ‘oldbox’ through the creation and use of the machine component of software, eh Ned?
How is your personal understanding of the Nazomi case coming along?
“By necessity, this requires you to make a statement that we currently know all about Y we will ever know, which as a practical matter never happens”
How very Duell of you.
Well, clearly it has value to the applicant, who chose to file a patent application for it at predictably high costs.
And this is exactly what you’re missing, RandomGuy. The Patent Act of 1952 – specifically, 103 – dispensed with the examiner’s subjective judgment about the value of the invention as a requirement of patentability. Rather, the threshold for deciding whether an invention was worth patenting was relegated to the applicant, in the form of a cost threshold. The theory is that with patents currently costing at least $20k to file and prosecute through issuance (scaling up to ridiculous fees for work from white-shoe firms), applicants have to choose their patents carefully. The costs should weed out “worthless” patents.
Of course, in reality, there are huge inequalities in this system. Thanks to ridiculous market concentration in our business landscape, megacorporations can use their war chests to crush smaller competitors in a dozen different ways, and patents are only one of them. And the ever-rising bar of patent enforcement is squeezing small businesses and startups out of the enforcement game, while not stopping NPEs from taking advantage of potentially enormous infringement damage awards (NTP vs. RIM is the gift that keeps on giving for these firms).
So, yes, I agree that the system needs work. But scrapping it for the hopelessly unworkable pre-1952 system would be a failure to learn from history.
Do you have any idea how fast that type of claim will be rejected under 103? An examiner will divide it into three or four pieces, find a very simple reference that plainly teaches each piece, and issue a 103.
Done. Easy. No need to invoke any subjective standard of how “much” the applicant invented.
While KSR is often used by examiners in really lame and unfair ways, this isn’t one of them.
And if the allowed patent claim recites only rudimentary steps but is six pages long, and so limited that no one infringes it, then exactly what harm does that patent cause to the public?
You do realize that every field of engineering is constantly evolving field, right? We don’t know “all that we will ever know” about anything.
Let’s apply your concept to an example in mechanical mechanical engineering.
Engineer A identifies an aspect of steam engines that provides some groundbreaking advantage, like tremendously better efficiency. The patent claims this new advantage, but the invention has to start with boiling water to form steam. How the steam is formed is irrelevant, so long as it is formed.
By your rationale, if Engineer B manages to make steam in some way that Engineer A didn’t imagine, or that even didn’t exist before – then Engineer A’s patent is now invalid, because the part of Engineer A’s claim reciting “make steam” didn’t satisfy the written description requirement for every possible way to make steam.
Do you see this as a fair result?
Dave,
You present far too many reasonable and cogent points for our examiner friend.
David, do you agree or disagree that having invented one way of curing cancer one can claim “the” cure for cancer thereby making all subsequent cures by different means or methods infringements?
LOL – Ned, talk about your strawman…
..and funy it is when you lose the ability to comment on ‘oldbox’ and changes to ‘oldbox’ that provide new capabilities that were not there prior to the changes.
anon, Random and I do not agree on software having a per se problem under Perkins Glue, Wabash Appliance, etc.
But we do agree that on the principles involved: that one cannot claim the cure for cancer having invented one cure.
That is what we are talking about when we are talking about functionally claiming THE invention. We have to talk about cure for cancer example just to focus the attention on our position.
And it was a disaster, for the simple reason that a system of law can’t be based on a totally subjective “smell test” – which, as we learned, completely destabilized the patent system.
I was referring to the times that the Supreme Court has told an applicant that one not even need consider prior art, as the document fails on its face for lack of description. One cannot invent a single way of achieving a result and claim the result. Or is 112, 1st just a subjective means of rejection too?
I can’t imagine how you would view “combining references” as subjective by the way.
What “times” are you referring to?
The only recent Supreme Court case that even tangentially involved 35 USC 112p1 or 112p2 is Nauilus v. Biosig, which did not involve a lack of description, but rather ambiguity, i.e., PHOSITA could reasonably interpret a claim limitation in two completely different ways.
Or do you mean Bilski, Alice, etc., where the Court characterized the applicant’s invention as “abstract” under 101? But those issues have nothing to do with written description, or “how much the applicant invented,” as you put it.
For example, if Svante Arrhenius were alive today and had filed an application for the Arrhenius equation to inform rubber-curing processes, the Court would not tell him that “he had not invented very much,” or that his application exhibited a “lack of description.” Rather, the Court would state that his claimed invention is a law of nature, i.e. abstract, and therefore does not satisfy the statutory requirements of 35 USC 101.
(You forgot to ask him about the scoreboard)
What “times” are you referring to?
Morse, General Electric v. Wabash, Perkins Glue, Halliburton v. Walker. Didn’t I post this exact list in this thread? I know I’ve done it recently.
You seem to be drawing this connection to the flash of brilliance test. That is incorrect. It is rooted in enablement, written description and indefiniteness, with a small sojourn into 101 if it gets truly out of hand. I care not a lick about brilliance/obviousness, as that is something the office does decently well. The question is what rejections should be made when we’re past 103.
I’ll make it simpler for you, look at the engine example at the end of Lizardtech, or the Lizardtech decision in general, and you will see why you cannot simply strip limitations that describe an invention out of the invention and expect it to be upheld, because with greater scope comes greater descriptive responsibility. Inventing one thing that happens to fall within a broad group does not give one a right to claim the whole group.
Random, you are ridiculous. Please read more cases and learn patent law.
“ with a small sojourn into 101 if it gets truly out of hand”
LOL – too funny