by Dennis Crouch
The current outlook for legislative patent reform in 2015 is not so much whether reforms will be enacted but instead how far they will go. In a Chamber of Commerce IP event on November 18, Representative Goodlatte and Senator Coons will discuss their outlook on IP legislation in the new term. Goodlatte has championed strong legislative patent reforms that include a presumption of attorney fee shifting, broadening of post-issuance review proceedings, heightened pleading requirements, and patent ownership transparency. Senator Coons has also favored patent reform as well as sponsoring bills to nationalize trade secret law.
Emerging as a leading Senate Republican on patent reform is Senator Cornyn of Texas. Julian Hattem (The Hill) quotes Sen. Cornyn as saying that the 2015 Senate will “absolutely” pass legislative patent reforms to address the problem of “patent trolls.” In 2014, Senators Cornyn and Schumer drafted a compromise bill that was less extreme than the Goodlatte version (that passed the House). However, that compromise was never strongly supported by members of either party. For his part, President Obama appears to be willing and ready to sign the Goodlatte bill if approved by Congress.
In the longer game, members of both parties see these patent reforms as potentially offering experimental results for major tort reform initiatives. The test of success is whether the reforms limit the enforcement of “bad” patents while upholding both the value of “good” patents and the research-incentives offered by the patent system.
With Democrats out of the majority in the Senate, it is unclear whether patent reformers will now push for reforms that go beyond the recent legislative proposals. A major open issue is that of the short nine-month window for filing of post-grant review proceedings. A simple proposal would extend that window to 18-months post issuance and additionally open a second window to challenge very old patents. In the past, I have proposed a USPTO claim-construction proceeding that could be a simple and cost-effective tool for formally establishing claim scope.
My post is still in the filter.
Why do my posts get stuck in the mod filter?
Dennis — You mention a simple PTO claim construction proceeding. Can you provide a link to that?
I also wonder if his proposal was made prior to Nautilus, where the Supremes announced,
<blockquote?Cognizant of the competing concerns, we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.
If a claim is clear as mandated, there should be no need for claim construction. That would only create confusion because if the claims are clear to one of ordinary skill, but at variance with the examiner’s construction, what then?
“require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”
That is such a good idea, the PTO should consider implementing it. Even the CAFC should start treating it as if it were the law.
Owen, I assume this was a joke. You are not seriously thinking that the PTO and the Federal Circuit would ignore the Supreme Court?
But if you listen to the Don Quixote types around here, it is the duty of every Jacobin to carry on the revolution even in face of an overwhelming defeat.
Name calling only highlights the fact that you have avoided talking about the very real issues involved here Ned.
Stop the dust-kicking.
Stop the name calling.
Somehow you want to spin protecting the constitution and being critical of the Royal Nine as a revolutionary act, ignoring full well that one branch of the government is exceeding its constitutional authority by writing statutory law.
Have you checked your California oath yet? What deserves your highest fidelity?
Patent Reform Should Strengthen Property Rights Not Weaken Them
link to forbes.com
PTO doing claim construction? The whole point of examination is to confine claims to their proper scope — making them clear and definite in the process.
If the claims do not clearly define the scope of the claims they should not be issued in the first place.
“PTO doing claim construction? The whole point of examination is to confine claims to their proper scope — making them clear and definite in the process.”
I’m going to disagree there partner. Clarity and definiteness do not magically appear as the result of the bulk of examination.
6, assuming that you are right that clarity and definiteness do not appear as a result of examination, I speculate that Ned will say that that means examination is flawed.
Do you have any suggestions for increasing the likelihood that examination results in clarity and definiteness?…. besides paying examiners more money.
6, what was the point of the recent Nautilus case then?
From Nautilus:
“Cognizant of the competing concerns, we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.”
Ned, what of you think it means, this “recognizing that absolute precision is unattainable“…?
You might also remember the other thing that I previously out on the table for discussion related to this topic, how claims are read by a person having ordinary skill in the art – seeing as the current oft-wielded sword of “Gist/Abstract” violates this “of the art” in its Gisting mode…
ends and means, Ned – you cannot celebrate the ends and close your eyes to the means. That is not a luxury that attorneys have.
Anon, recall my challenge to you to demonstrate what you mean by ladders of abstraction. Now let me ask you about that in relationship to the new Nautilus test. Recall the bobby pin example, where the prior art was a comb and a ribbon. Which of the following, if any, would fail Nautilus:
1. A hair clamp.
2. Apparatus comprising two, elongated, members each comprising a flat surface, biased together by a spring.
3. Apparatus according to claim 2 where the spring is integral with the two members.
4. A flattened wire having a defined length, the wire bent in the center such that the respective surfaces of the wire are biased together.
5. Apparatus comprising two members and means for biasing the two members together to clamp hair.
6. Means for clamping hair.
7. A wire configured to clamp hair.
8. Apparatus for holding hair other than a comb or a ribbon.
9. A bobby pin.
Got anything better?
I have already told you Ned – first do my challenge before I even consider yours.
Where is a claim that you yourself actually drafted?
I don’t know anything about your challenge.
As to claims I drafted, we’d have to find something that expired a while back. I’ll see if I can dredge one up if necessary.
If you want clear claims there is a simple solution, that wont cost the US taxpayer a dime:
1) institute loser pays and
2) in the event that one or more claims are found invalid under 35 USC 102, 103 or 112, and the infringement action gets tanked as a result, the law firm(s) and patent attorneys that prosecuted the patent application before the office will be jointly and severally liable for the prevailing parties expenses with other the non-prevailing party(ies).
You would *immediately* see a change in applicant behavior before the office.
One of the current problems is that prosecuting attorneys/firms have almost zero skin in the game. Fix that and the problem goes away.
Problem solved. All it takes is putting some people’s skin in the game.
Any staffers reading this blog? Here you go, just throw in this puppy. It will fix 90% of the nonsense. The public gets the best of both worlds – examination AND a motivated other side… Both working really really hard to ensure that claim scope is both definite and correct.
+1
I understand the policy reason for not including inequitable conduct as a trigger for prosecutor liability. After all, the prosecuting firm can’t control what the patentee does after issuance or what it does with nominally unrelated applications.
What is the policy reason for excluding §101, though? A simple §101 ineligibility determination is at least cheap to pay for.
Historically, 101 moves around a lot in its interpretation. The other sections… Less so. That’s why I didn’t mention it.
Key indicator there: Congress has not moved 101 around a lot – that would be the Royal Nine playing with their nose of wax.
When Congress made 101 in 1952, they expressly wanted a welcoming wide open gate – removed the Court’s authority to use common law development of “inventive concept” (and a dozen or so other like terms) and created 103 to take over that portion of what became the codified 101.
That movement you see (by the Court), is not a good thing.
#2 has to be one of the worst ideas I’ve ever heard. For instance, 35 USC 101 has gone from “useful, concrete, and tangible” to “machine or transformation” and now to “abstract idea + more”. And that’s just in the last 7 or so years. Before that, there was the Freeman, Walter, Abele test, etc. The 35 USC 103 standard has gone from “teaching, suggestion, and motivation” and “the problems with prior art and the invention are useful in arguing against obviousness” to “Graham factors” and “arguing problems is useless”. That has happened only in a few years.
MPF claims have gone from being in favor to completely avoided. Somehow, we went from “one skilled in the art can determine how to apply this on a computer” to “you need, for MPF claims performed by a general purpose processor, to state an algorithm for each function/structure and also that algorithm must describe the actual techniques for performing the function/structure and not the output of the function/structure”. I guarantee no one saw that coming.
Should I go on?
It is literally not possible to draft a claim now that will be meet the requirements of the future, since those requirements keep changing. For instance, I had an Examiner call me to tell me that claims he thought were patentable under the “machine or transformation” test were no longer patentable under Alice (“abstract idea” + more). Who could predict this?
Respectfully PatentBib, the issue is not “foreseeability” at all.
Rather, the issue is that the law has indeed changed and there is a simple prohibition in this country against penalizing people for post facto law changes (gen er ally speaking).
Beware the weeds of “I could see it coming and told you all so.”
A word to the wise, make sure the PTO/Obama admin is on board with any new legislation as Obama seems eager to fight the GOP for fighting sakes.
Well, at least the GOP has never been known for being wise or savvy. Maybe that’s the hope for stopping further butchering of the system.
The way the USA handles claim construction perplexes me. But that’s because I’m English.
In England, the court construes the claim “as if the infringer had never been born” but only after it has heard all the evidence of BOTH infringement and validity.
Doing it only then, the judge knows which words in the claim are the pivot on which hang the crux issues of infringement and validity.
Usually there are just one or two such words.
The rest of the claim can go hang, for all the importance it holds for the outcome.
Now that’s what I call efficient adjudication of patent disputes. Why? Because cases rarely go to England’s CAFC. In most cases, there’s no point, because the appeal court is not going to reverse the trial court, either on the law or the facts.
Industry needs certainty. In the English system the likely outcome is clear, long before trial. Indeed, 95% of cases settle, even before the trial. A system in which nobody knows what the claim means till the Federal Circuit has opined on it is Cloud 9 for litigators but a disaster for litigants. A good system of litigation puts the interests of litigants above those of litigators.
That a jury decides infringement and validity in the U.S. might explain some of the differences.
I dare say.
Oh well then. Nothing the Congress can do about that then, eh?
Max, the English system is well thought out. Claim construction should be conducted at the close of evidence, but before the instructions to the jury.
I like it Ned. Where’s the catch?
Max, frankly I don’t know if there is any catch. I believe the courts United States did it the English way until just recently when the practice of Markman hearing’s began.
I recall discussing the new type of hearing with an old-time litigator at the time. He was complaining that without knowing what the issues were in terms of infringement and or validity the court was adrift.
Conducting claim construction in isolation of a real dispute is an academic exercise that should be avoided. The courts should allow claim construction only if the result of the construction is dispositive on an issue of validity or of infringement. In making the ruling, the court should know in detail how the decision it is making will affect infringement or validity.
Ned,
What would you say though that claim construction should not be a matter of such ‘last resort’ (seeing as how very very very few patents ever really do go to that litigation point), but instead, claim construction should be done for all patents as a requirement for the Office to make sure that it meets the “notice” function?
Should not the examination record include claim construction right from the beginning and on the record?
Let’s just say anon that it is the obligation of the patent office to issue claims that are clear to one of ordinary skill in the art. Claim construction should not be necessary.
Ned, your reply is non-responsive and depends on circular logic.
The point of my post is that claim construction should be done at the onset to provide that clarity to one of ordinary skill in the art, because that is what the “notice” function is all about. Even at the late stage of litigation, the act of claim construction is STILL based on what is “clear to one of ordinary skill in the art.”
Merely saying “should not be necessary” is quite meaningless and equivalent to a Pollyanna “claim construction should never be necessary “
Anon, the claims themselves have to be clear to one of ordinary skill in the art. There should be no ambiguity, and no disagreement among experts.
Today, as throughout history, patent attorneys draft for the purposes of ambiguity. That practice should not be permitted by the patent office who should insist that the claims that issue be clear and definite.
Anon, when you speak of ladders of abstraction, I take you to mean claiming the invention as ambiguously as possible so as to allow wiggle room both for validity and for infringement. This is the practice that the Supreme Court has condemned. Haven’t you got the message yet?
Ned,
Stop.
Take a deep breath. Relax. Take another.
Now read my post. You have missed the point yet again. When you say “should be no ambiguity, and no disagreement among experts” at claim allowance, you are saying the same thing as having a FULL and complete claim construction during examination so that there will be no ambiguity or disagreement among experts.
They are the same thing, and yet somehow, with a magic wand, you do not want ANY claim construction anywhere, any when.
Secondly, you are jumping headlong into the weeds trying to provoke an argument about the ladders of abstraction.
Sorry Ned – you will lose that argument every time. Since 99.9% of all claims in all art fields of any value use the ladders of abstraction, I just don’t understand what type of your own Quixote crusade you are trying to embark on. Put some of your own claims up, and I will show you that you too do not have that perfectly explicit picture claim that you intimate as desired.
There simply is no reason for you to visit the sewer and attempt to denigrate the ladders of abstraction.
None.
anon, you and I both know that the way the patent office does office action today involves claim construction by the examiner. The examiner reads each limitation in a claim on the prior art thereby giving his construction of the claim. If there is a dispute between the applicant and the examiner over whether the examiner is correct or not, it will resolve itself in the subsequent discussion.
The bottom line, since the examiners already give their construction of the claim during prosecution, and further because any disagreement between the examiner’s construction and the proper construction will be fleshed out on the record, there is absolutely no need for separate claim construction ruling by the patent office in ex parte prosecution.
I don’t know what fantasy land you live in, but I have never had an examiner perform an actual claim construction.
More likely than not, a keyword search based on words in a claim with references strung together under the Broadest Unreasonable Doctrine approach is nowhere near what can even remotely reasonably be called a claim construction.
As I said, your view amounts to a rather Pollyanna no claim construction at all.
(But hey, thanks for dropping the insipid attack on ladders of abstraction – I figure that you could not find that perfect picture claim of yours that did not use that concept)
BRI is your reason for doing a PTO claim construction to find the true construction?
The PTO does not DO anything but BRI. If the applicant disagrees with the construction because it reads on prior art, the applicant can overcome the construction by argument or by amendment. As discussed in In re Morris, the argument succeeds only if there is a definition in the specification of the claim term or it is used in the description in and unambiguous manner so that it’s meaning is clear.
As an aside, let’s test your ladders of the distraction. Give us a claim to a bobby pin with prior art is a comb or a ribbon.
Ned,
You’ve got this all crabbed. I am NOT saying that “BRI is my reason for doing a PTO claim construction.
I am not saying that at all.
You are the one saying that examiners do claim constructions.
They do not.
BRI is NOT claim construction.
For at least as I mentioned, key word searching is routinely done with references strung together like no PHOSITA ever would – and additionally, BRI is meant to be ‘a larger circle’ than the actual claim, thus is designed to be different than an actual construction.
Lastly, as an aside I already suggested a better test related to the ladders of abstraction – let’s see one of your own real claims and let’s see how much it varies from a “perfect picture claim”
Last time Republicans were in charge, we got Dudas second-look examination.
Now this.
Almost makes me like Harry Reid.
Almost, but not.
I disagree with Democrats pretty much across the board, but what we’re seeing here is the big money, progressive Republicans, and it’s even more disgusting.
I just hope there is enough new blood and outsiders around to shoot down these ill conceived “reforms”.
And I’m not talking about longer PGR windows or unified claim construction at the Office. The danger is that we get “patent troll” reforms mixed in with actual streamlining.
Actually, we are back to second-look examination already.
The PTO, presumably under Director Michelle Lee’s guidance, has set up specialized, second-look panels that are dedicated to particular issues, such as 101 panels, 112 p 6 panels, recapture panels, etc.
Any notice of allowance submitted by an examiner has to get thru the panels before being issued.
PP – can you email me with info on the second look panels?
Dennis
Dennis – This information is straight from some examiners in a few cases that we have interviewed extensively.
These are the same panels that pulled allowed cases from issue after Alice.
For prosecutors, you can get a hint of what is happening by examining the transaction history of a case. We currently have Not. of Allowance papers that have been docketed for quite some time in a particular case, but not the issuance of the Notice itself. According to our prosecutors, it will likely be a month between when the Examiner submits it for allowance and when it runs the gauntlet of review panels and either survives of gets kicked back.
That’s all I know. I don’t think I have seen any official statements or notices from the PTO.
…are both Type I and Type II errors looked at by these panels?
(rejections as well as allowances)
Sounds like “second eyes” has been dug up, re-animated, and let loose on the patent world again. Friggin’ zombies are harder to kill than ever.
Those were fun times to be sure. Went something like this:
Applicant’s Representative: I submitted a response 6 months ago. Are you going to issue an Office Action?
Examiner: I want to allow it, but they won’t let me.
AR: Who’s “they”?
Ex: I can’t tell you that.
AR: Well, can I talk to “them”?
Ex: No
AR: Why not?
Ex: I can’t tell you that.
What’s old is new again I guess.
LOL, I can’t even begin to tell you how many of those conversations I had back in the 06-08 time frame.
And they’ll pretty much tell you that’s the situation as soon as you try to begin an interview. At least, to their credit, they don’t want to waste your time by fronting like there’s an actual issue of disagreement.
The PTO, presumably under Director Michelle Lee’s guidance, has set up specialized, second-look panels that are dedicated to particular issues, such as 101 panels, 112 p 6 panels, recapture panels, etc.
I don’t believe this is accurate.
Silicone, Dudas may have been Republican, but Chuck Schumer, who is leading the charge against business method patents, just happens to be a Democrat.
The Democrats seem divided on the issue of patentable subject matter, with guys like the former director being in favor of software and DNA patents, while others, like the Justice and Schumer, against.
All I ever see from leadership Republicans on the Hill is support for big infringers. Grass root Republican are against what their leadership has done or is doing to weaken the patent system at the behest of the big infringers.
There’s a definitive split in both parties between those looking for big infringer money and those that haven’t gotten hooked on it yet. At least that’s my current view on the situation.
Bj Ahead, I think you have about nailed it.
In the past, I have proposed a USPTO claim-construction proceeding that could be a simple and cost-effective tool for formally establishing claim scope.
Indeed. Claim construction should occur at the conclusion of prosecution, not at the start of litigation, and it should be an ex parte procedure before the PTO. This would help to ensure that the construction of a claim matches the disclosed invention rather than trying to force it to match either a targeted alleged infringer’s product or a particular piece of prior art dug up by an alleged infringer.
So the PTO is going to issue a patent and then turn around and tell us what it means? Why not let the claim be more self-explanatory in the first place?
For starters, why must a claim be limited to one sentence?
Why not let the claim be more self-explanatory in the first place?
That’s a question better asked of patent attorneys rather than examiners.
Plurality, I beg to differ. An attorney puts a multi-sentence claim in an application is CERTAIN to get a rejection by an examiner.
MPEP section 608.01(m) Form of Claims includes:
“Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v.Manbeck, 36 USPQ2d 1211 (D.D.C. 1995).”
This sentence no verb.
Patent claims are not sentences. Sentences have predicates with verbs in them. Patent claims are noun phrases. There is no reason an honest applicant trying to be specific cannot use subclauses running on to arbitrary length and depth to specify exactly what the claim is intended to cover.
Of course, it is in the interest of the less honest applicant to keep the claim vague. A strict application of Nautilus should wipe out much litigation over patents that require more than trivial Markman.
I believe traditionally, a claim set began, “I claim:”
“The test of success is whether the reforms limit the enforcement of “bad” patents while upholding both the value of “good” patents.” Now if only patents came with a label indicating “good” and “bad.”
They do. It’s under the “Assignee” section.
Absolutely right. If the Goodlatte bill passes, patents will only be valuable in the hands of large operating companies.
Sadly, that’s a result of a preoccupation with the “who” instead of the “what.”
Now might be a good time to post a reminder that our founding fathers desired full alienability of the property that is the patent right.
(and if people have a problem with shell games and corporations, then Corporations Law is the proper avenue for change, as patent assets are not the only thing that is played under those shells)
But only if they practiced their monopoly.
J,
I believe that I have informed you previously that there is no such requirement (and that there has never been such a requirement) in US patent law.
You seem to have a misunderstanding of the very basics of what a patent is (have you ever heard of the term ‘a negative right’?)
As I have also posted, the US system also promotes innovations that build upon others’ patented inventions, for which these improvement inventions (which make up the vast bulk of innovation), may not even be possible to practice when another owns the patent right to that which has been improved.
So please beware the ‘must make’ canard.
Unfortunately I tried to make another post that never made it past moderation that more fully explained my reasoning.
First, the founding fathers did not allow full property rights. For example, patentees could not get equity in Federal Courts until 1819. That fact defeats your statement right there.
As far as my, “make use of the patent” comment, what I am trying to say is that patentees could not get remedies at law in the 19th century unless they practiced their patent. Without practicing their patent, they could not prove what actual damage they sustained from infringement, and therefore received only nominal damages.