Deputy Director Russ Slifer

As I mentioned in my twitter feed, Russ Slifer has now been sworn-in as Deputy Director of the USPTO after being nominated by Director Michelle Lee and then appointed by Secretary of Commerce Penny Pritzker.  The PTO leadership is again at its full strength with a healthy mix of PTO insiders and outsiders, but all having years of direct intellectual property law experience.  We should expect Lee and Slifer to stay on the job for the next two years. But, as political appointees, the expectation is that they will be out once a new president is sworn-in, although that transition can come in different forms depending upon the new administration.

The team is making a strong push for patent quality initiatives associated primarily with aspects under their control – internal examination processes – rather than changes in substantive law.  However, they are also now renewing their focus on helping guide congressional patent reforms in order to avoid unbalancing the system. Two key questions on that front: (1) what clout with PTO input carry on the Hill when the focus is on litigation reform; and (2) how will PTO actions on that front be curtailed or shaped by the White House.

As Gene Quinn writes, Slifer was hard at work yesterday leading various aspects of the Patent Quality Summit.

The Deputy position is something like a vice president – little actual defined job responsibility. However, when I spoke with Director Michelle Lee who has been in that position for more than a year, she indicated that Slifer’s plate will be extremely full.

66 thoughts on “Deputy Director Russ Slifer

  1. 6

    There are obviously some intelligent and knowledgeable dialogues on this board, but some of it reads more like a comedy than profession, indeed some sounds more like a late night at a hen party

  2. 5

    For what it’s worth, Russ Slifer was on the Board of Directors of the Intellectual Property Owners when it filed its amicus brief in support of Prometheus.

    That brief was easily one of the most shallow and thoughtless briefs filed on behalf of any petitioner in any Supreme Court in the history of the patent system. It was — and remains — a quintessential example of a bunch of self-interested wealthy people sticking their heads in the sand and simultaneously begging the Supreme Court for a chance to grab more power and money at the expense of the public and the health of the patent system.

    It’s not clear whether Russ voted to file the brief.

    Maybe Russ can clear that up for everybody.

    My guess is that he was all for it. And he’ll never bother to defend the position he took because, obviously, he can’t. That’s true of everyone who took the same position that Russ (almost surely) did and who came here to spout their self-serving drivel. They could never defend their position because their position was nonsensical. Always was. Always will be.

    And now he’s the deputy director of the USPTO. Let’s watch the ship sink some more. Right, Russ?

    1. 5.1

      The acid tests have begun. And that shows us that Alice is judicial activism. Acid tests come with judicial activism. What we need is people that are going to apply the law. Thanks Lemley and R. Stern for destroying our patent system. What a legacy.

    2. 5.2

      Instead of addressing any actual merits of the brief, (available here: link to )
      all that we are exposed to is more of the same rancid, urine soaked, musings that this is somehow a plot by the “quintessential example of a bunch of self-interested wealthy people… to grab more power and money at the expense of the public and the health of the patent system

      Prof. Crouch – a direct question to you: How much more of this type of “cultural” screed on such an ongoing relentless basis will we have to put up with? Is not nine years enough?
      Should not some attempt be made at a dialogue?

      There is no attempt whatsoever at a dialogue with this type of post.
      This is nothing but naked propaganda for a particular – and often shouted – monologue.

      America’s leading source of something other than patent law.

      Malcolm calls “drivel” without a basis of actually discussing the valid points of the amicus, instead, he wishes to merely apply ad hominem to anyone who might challenge is insertion of begging the Court to rewrite 101 and mash the nose of wax to his desired ends.

      If he had bothered to read the brief, he would have seen that indeed Mr. Slifer did agree to it, as noted by his name in Appendix and as noted in footnote 2.

      1. 5.2.1

        I think it is pretty clear that he is paid to post. He spends an enormous amount of time on this blog and other blogs. His posts also seem to follow the latest anti-patent/software propaganda.


          He spends an enormous amount of time on this blog and other blogs.

          Enormous amount of time? On average, I’d say I spend two hours a week drafting comments here and that includes responding to your tinfoil nonsense.


            Sure MM. Sure. I did notice “drafting” and not reading. So, you draft new content for only two hours and cut and paste your employers content most of the time.


              Two hours to cut and paste from his short script seems excessive.

              I wonder if he is left-handed and still has a hard time with the scissors…


          For an interesting read about paid tr011s:

          link to

          It’s an article about paid Russians “commenters” that work in groups to make it look like the commenters are having a dialogue, always ending in favor of Russian policies (or against other’s policies, like Ukrain)


            It is absurd to think that this is not going on here.

            One simple fact that illustrates our MM is paid: he is not verified. anon is. I am. MM is completely anonymous on this board. I wonder why—not really.



              Verified or not, I don’t care
              Paid or not, I don’t care.

              What I care about is the unwillingness to actually engage in an intellectually honest – and complete – dialogue, one that respects the points made and is willing to go to the ends of the logic on the table.

              It is the dearth of that ability or willingness that is the plague of persistent propaganda.


                Well, that is a consequence of being paid to present a position. The guy in the article didn’t even agree with the arguments he was making.

      2. 5.2.2

        There is no attempt whatsoever at a dialogue with this type of post.

        I’d love to “dialogue” with Russ Slifer about that brief. I’d love to hear him defend it.

        Do you think that Russ Slifer doesn’t understand even now why Prometheus v. Mayo was a slam dunk that is never, ever going to be overturned and that the brief that he filed with his buddies at the Patent Extremist Association of America is a pile of self-serving ridiculous garbage? If so, please insult Russ Slifer by simply stating your affirmative belief that Russ Slifer doesnt understand Prometheus v. Mayo.

        We all know that you don’t understand the decision (or you pretend not to). And we all know why.


      3. 5.2.3

        “anon” If he had bothered to read the brief, he would have seen that indeed Mr. Slifer did agree to it, as noted by his name in Appendix and as noted in footnote 2.

        Footnote 2: “IPO procedures require approval of positions in briefs by a three-fourths majority of directors present and voting”


        I read the brief and the footnotes and the Appendix (there’s an identical footnote in the Appendix) and that is exactly why I wrote: “It’s not clear whether Russ voted to file the brief.”

        The unbelievably hypocritical nature of your comment in defense of the brief is only underscored by your silly accusation that I failed to read it. The people who “failed” miserably here are Russ (almost certainly) and his cohorts (and that includes you). As demonstrated in real time by myself and others, the “failure to read” was all yours.

        Nobody who read far enough into the briefs to understood the undisputed facts and the positions taken by Prometheus was ever able to defend those positions. But how about pretending that those facts and those positions didn’t exist, even when put right under the nose? That was evidently very easy because that’s exactly what happened, over and over and over again. And it’s still happening.

        begging the Court to rewrite 101

        Because interpreting a patent statute more narrowly than the looney tunes construction a completely naive person might provide is the worst thing ever! …. unless, of course, the statute is interpreted to promote the granting of the lowest forms of patents in the history of the planet. In that case, it’s the best thing ever and only a commie who wants to destroy innovation and private property would ever dare to differ. Yes, we heard your precious “arguments” already.

      4. 5.2.4

        Anon, why do you think you get only the same small coterie of posters on this site? Some of us come here sporadically, re-read the same paid propaganda, and return to more professional sites. Hat is off to you and Night for fighting the good fight, but guys, the echo chamber is getting awfully empty. You are mostly shouting at a paid troll and a couple of nitwits who lost the ability to learn anything new years ago.


          “same paid propaganda”

          Tourbillon, I think you can take a flying leap.

          Dennis, you can delete my post if you would like, but please delete Tour’s post as well.

    3. 5.3

      Malcolm, I assume what you say about the IPO brief is an accurate summary – that it quite a bit worse than having no merit at all. Rather that brief probably was intended to reflect the interests of business which compose the board of directors. More probably, it reflected the interests of the particular businesses that were to be adversely affected by Prometheus. I don’t know if Russell Slifer was representing one of those potentially adversely affected businesses. If he was not, his interest in the subject matter but probably secondary.

      Who was he representing when he was on the board?

      1. 5.3.1

        Just read the IPO brief and it relies heavily on the alleged prohibition on dissection – actually citing Judge Rich’s opinion in Bergey.

        Rich, meet the Supreme Court.

        IPO, haven’t you got it through your thick skull yet that Rich’s views on 101 have been consistently overruled by the Supreme Court? The only thing that I can think of that the Supreme Court agreed with Rich on 101-wise is that it was immaterial whether the subject matter of a patent was living or not. There is a good reason why Rich’s views have been consistently overruled: HE was incapable of understanding how to handle claims involving mixed subject matter, some statutory some nonstatutory. Rich would have it that all these claims pass 101 by the inclusion of statutory subject matter. This might be proper if the Federal Circuit had developed a robust interpretation of 101/103 that would have discounted and given no weight to novel, but unpatentable subject matter, in the novelty/obviousness analysis except when that otherwise unpatentable subject matter modified, as in Diehr, patentable subject matter so as to produce a new physical result. But Rich seem adamantly opposed to that as well as witnessed by his State Street Bank opinion.

      2. 5.3.2

        More probably, it reflected the interests of the particular businesses that were to be adversely affected by Prometheus. I don’t know if Russell Slifer was representing one of those potentially adversely affected businesses.

        I believe he was working for Micron at the time.

        But that”s no excuse for filing a garbage brief like that. It’s the same kindergarten level “analysis” that we heard endlessly hear from the sockpuppets for years. In a nutshell, the argument is:

        “How can a method of treating a person not be eligible? We are going to pretend we are too dumb to answer that question. Therefore, this claim — because somebody said it was a method of treatment — must be eligible for patenting.”

        Of course there’s a lot of other b.s. in there but the bottom line is that it’s a pile of disengenuous junk, indistinguishable rom the junk posted here by numerous pro-Prometheus “experts”, all of whom refused to answer the most basic fundamental questions about where in heck they thought they were going with their childish understanding of the law.

        It was a scandal. And there’s no reason to forget about it because these same entitled people are never going to quit trying to figure out more ways to shove more into their pockets at the expense of the patent system and the 99.99% of the population who can’t afford to play their grifting games.


          I assume what you say about the IPO brief is an accurate summary


          It does not help your cred whatsoever to gush over Malcolm and the absolute lack of critical thinking.

          This is the type of “stunning” Nedism you-agree-with-me-so-you-must-be-Einstein legal analysis from Malcolm:

          Actual legal arguments:
          (none, nil, nada, zero)

          Ad hominem hand waving:
          disengenuous junk,
          shove more into their pockets

          This then passes for Malcolm’s “dialogue”…
          Prof. Crouch, you must be sooooo proud.


            anon, as Malcolm and I agree on 101, I give credence to his views on the IPO brief. Simple as that.


              Sadly, Ned it is as simple and as empty as that.

              You might want to reflect on your choice of words here, as you admit to the fallacy of “6 is an Einstein because he agrees with me.”

              Remember, this is a forum for legal discussion and your pure-Belieb admission here just does not cut it.


                anon you set forth the mission of this blog now? As usual, a little grabby are you….who says legal discussion is the exclusive function of America’s leading patent law source?

                Law is not merely a legal construct; there are policy and ethical dimensions that are just as important; no, more important, than the mere legal machinery that animates it.

                When great injustice is afoot, people need to protest it loudly and persistently. MM may annoy you, but he is dead right that the system has been delegitimized by grifters, absurd pedantry, and general perversion of mission. Even tyro outsiders can see that clearly.

                The proprietors of this here blog obviously recognize different viewpoints, thankfully ignoring your ironic pleadings to narrow the purpose…..

  3. 4

    PTAB’S Quick-Fixes for AIA Rules Are to Be Implemented Immediately
    Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee

    link to

    One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing). Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.

    Further, we understand that the existence of ample discovery to establish the real-party-in-interest (RPI) of the petitioner has been a concern. And we want to be sure that the availability of appropriate RPI evidence does not pose a problem for patent owners. While the Board increasingly has been granting motions for such discovery, we plan to update the Trial Practice Guide to emphasize the importance of RPI discovery as to determinations of standing and as to possible later estoppel consequences.

    Lastly, to the extent that there has been concern that the judges participating in a decision to institute a trial may not be completely objective in the trial phase, we are considering developing a single-judge pilot program for institution. Under this pilot, a single judge would make the decision on whether to institute a trial. Two new judges would be added to the panel only when and if a trial is instituted. In the interest of efficiency, the first judge would remain on the panel; but in the interest of having “fresh eyes,” the two additional judges would not have participated in the matter prior to institution. After running this pilot for a select number of cases, we would study the results to determine the approach to follow in the future.

    Dated March 27, 2015

    1. 3.2

      I don’t think competition in the arena of grants of exclusivity by the government is appropriate, but contractors could work ok.

      I have long felt that examination should be broken into three parts:

      101/112/restriction panel -> searcher -> examiner

      I would have zero problems with the searching being done by contractors.

      1. 3.2.1

        You do realize that outsourcing the searching likely wouldn’t get you the type of searching you expect… It would be the government outsourcing the work with all the RFP’s, silly paperwork, oversight, and heaps of middle men a government contract entails. It would not be the sort of direct access to a commercial searcher you have as an attorney at a law firm with the freedom to retain whomever you want, whenever you want.

        In all likelihood, it would be a relatively faceless operation like the current PCT gig. A bunch of firms get the gig, but you don’t actually know which one gets your case. Plus, it would likely just further push all the underperforming examiners into roles as no benefits, contract searchers which is what the last decade of PCT search and opinion has turned into.


            Could structure it differently with the examiner in control. What if, for example, the outside contractors doing search were paid based on which references the examiner used in rejections based on multiple searches.


          Thanks PS DIP,

          While what you say may dash the hopes of some, it is always a pleasure to read your posts.

          Do you think that a modified set-up would work? Perhaps a set of searchers can apply to the government and test to meet some “approved” status, and then applicants can choose among the approved suppliers, thus injecting some semblance of competition…?


            Do you really feel applicants need another lever to alter the outcome of their prosecution with the office? There is already talk of instituting the “pre-pre-appeal” (flag the case for OPQA or whatever its called now) and yet people want another way to manipulate the outcome?

            That’s what this “competition” nonsense is all about. The reality is that whatever lever applicants can pull that results in a higher chance of allowance with broader claims will be the one pulled.


            Searcher A doesnt typically find good art which results in higher allowance rate with typically broader claims on those allowed.

            Searcher B does find good art which results in a lower allowance rate with typically narrower claims on those allowed.

            I *guarantee* that people will be rushing the gate to pick Searcher A over Searcher B.

            This is not behavior that should be encouraged.


              It is more than sad – an in truth a reflection on you more than anything – that you choose to see competition only as a lever in the applicant’s favor.

              Applicants are best served with enforceable patents; which means the best searches.

              Sadly, you reflect that same malignant mindset of Malcolm, seeing “evi1” everywhere.

              Why do I get the feeling that you liked the ability of having unaccountable star-chamber SAWS type “quality” programs…?


                “Applicants are best served with enforceable patents; which means the best searches.”

                Sure, when they have a patent worthy invention.

                When they don’t, any patent will do (technically enforceable or not). The presumption of validity provides a nice street value regardless (although thankfully declining in light of IPRs).

                And lets not even get into corps that are using valuation games to prop up their book value. They don’t give a hoot with regard to enforceability on the vast majority of their filings except that it meets the requirement of being a granted patent.

                But you knew that already.

                1. I think it should go to the examiner. Let the examiner pick the searcher. The key to improved examination is helping the examiner and providing the right incentives to the examiner.


              I disagree with this analysis. If we file in the US and file a PCT in the US, I always recommend selecting another, non-US searching authority. This way, we get a better search, as two different searches are performed.

              Many clients now also perform their own search, so we’re having three searches done for those clients.

              I’m for more and better searches.


                While a nice anecdote, is it reasonable to conclude that all actors play the game as you do?

                The obvious answer is no.

                1. Why is everyone so nasty on this board? Or is that simply how people are, I wonder?

                  Some people, like you and MM, apparently think everyone is terrible, horrible, and out to undermine or game the system. That simply isn’t true.

                  Certainly, one could have safeguards preventing what you want to prevent. For instance, your search could be randomly assigned to an outside search firm. That way, you would have no ability to game the system.

                  I have my reservations about outsourcing the patent searches (they’re already outsourced somewhat, in that the EPO or another searching authority might make a search, but the US Examiners seem to ignore these searches), but this is an idea that’s intriguing. Theoretically, it allows the Examiner to concentrate on the arguments. That might not be a bad thing.

                2. PatentBob,

                  It’s a cultural thing. It will take more than just rules to effect a change for such.

                3. PatentBob: “Why is everyone so nasty on this board? Or is that simply how people are, I wonder?

                  Some people, like you and MM, apparently think everyone is terrible, horrible, and out to undermine or game the system. That simply isn’t true.”

                  Well, that’s a little over the top. I acknowledge that there are good actors. I also acknowledge that there are bad actors. Its the bad actors I want to stop. The good actors… Well I hope they just keep on being good.

                  I really want a system where rational actors don’t become bad actors by merely acting rationally. Which is more similar to our current system. I cant blame people for acting rationally and taking advantage of a broken system. Its rational to do so. Pulling one lever over another when it gives a better outcome is an entirely rational thing to do. Filing that baseless pre-appeal because you know that the SPE the junior reports to for the case rolls over 85% of the time no matter what and gives a free action (“just make them happy and give them another action”), is very rational… As one example. And the cat has been long out of the bag on people keeping track of those kinds of stats.

                  “Theoretically, it allows the Examiner to concentrate on the arguments. That might not be a bad thing.”

                  As I understand it, POPA stepped on this idea years ago. But yes, I am all about specialization. I think all sorts of efficiencies can be eeked out of the pto operations by removing this “king of all trades” mentality that pervaded when I was there.


            Re: Do you think that a modified set-up would work? Perhaps a set of searchers can apply to the government and test to meet some “approved” status, and then applicants can choose among the approved suppliers, thus injecting some semblance of competition…?

            Interestingly, the idea of certifying searchers is getting a big push from my brethren in Europe. We here in the US are much less excited about it, but we’ve always been a little more free market in our thinking.

            I’d be loathe to see what the USPTO came up with as a test for searchers since they truly struggle in the patent info area. The search community is having a really difficult time coming up with this test as well. The Japanese have spent the past decade coming up with a searching contest in which several hundred people per year participate and the best search teams and individuals win awards. Pretty nifty idea and the model for the European led examinations being considered in our industry.


          Privatization of grant authority would be a travesty…privatization of search, with proper incentives and oversight is likely highly practicable except for one little problem: the mission of the office is more patents, always….so they will never work hard on a scheme that would work against more patents…..


            the mission of the office is more patents, always

            Absolutely nothing wrong with that – as long as you understand the basics of Quid Pro Quo and do not get caught up in the anti-patent kool-aid drinking.

            S i g h, for some this understanding seems a most formidable task.

            The essence of being anti-patent is this refusal to see that more patents all the time is actually a good thing. Yes, this does mean that the Quid Pro Quo must be met. But the “Belieb” system so often in evidence here lacks this most basic understanding.


              more patents all the time is actually a good thing

              Sure it is!

              And don’t worry about what those patents cover. “anon” isn’t worried about it. So why should you be, unless you’re a commie?



                don’t worry about what those patents cover

                That’s up to Congress.


                As to your attempted rhetorical ploy, the philosophical bias very much STILL needs to be accounted for.

                Or do you disagree with my point on that matter?


              The essence of an ideologue is “always”.

              Quality or the intrinsic state of actual innovation at a given moment is meaningless…so long as more patents issue…

              Just like tax cuts-always the answer in good times or bad. The patent system can never fail, it can only be failed…


                What part of “must meet the Quid Pro Quo” did you not understand?

                Must you always be so selective in your views?

                1. Yes, quid pro quo. The old this for that. No specification on the this, or the that. But oft repeated in every patent law course.

                  So, what was the quid pro quo with regard to the apple patent I mentioned in a previous thead. Do these sorts of patents fit in your concept of how the system works? How many non-operable poison pill patents are out there?

                  Heres a reminder:

                  “U.S. Plant Patent 7197 and Report 225-1992 (AD-MR-5877-B) from the Horticultural Research Center indicated that the Honeycrisp was a hybrid of the apple cultivars Macoun and Honeygold.[1] However, genetic fingerprinting conducted by a group of researchers in 2004, which included those who were later attributed on the patent, determined that neither of these cultivars is a parent of the Honeycrisp, but that the Keepsake (another apple developed by the same University of Minnesota crossbreeding program) is one of the parents. The other parent has not been identified, but it might be a numbered selection that could have been discarded since.[5]”

                  link to

                2. I would LOVE to see how much time and money was wasted in trying to replicate the apple with those and similar cultivars. I bet people were scratching their heads for years wondering why humidity and temperature differences were causing such strange gene expression.



              Yes it so incredibly rare for patents to be invalidated… Except every time the haystack is shaken a million needles fall out…what, 40% at fed circuit?


          PS DIP,

          You make some good points.

          When I was working at the PTO there was a “its out there, just keep searching” line thrown out all too often. By separating searching and examining, I would hope that the net effect would be an end to that wasteful unnecessary run around. In fact, I’m fairly certain that it would end that nonsense.

          As for it being “a relatively faceless operation”… What’s the difference to what the end user experiences now? Applicants have no control over who is assigned their case (and its search).

          Middlemen… Sure, there would be some of that going on. However, the real question is whether this cost is offset by savings due to increased efficiency by specialization. Maybe, maybe not. Worth a study tho.

          As for “pushed into roles as no benefits, contract searchers”… I don’t think its appropriate to keep an inefficiency in governmental operation going because employees have mouths to feed.


            Good points right back at you. Definitely huge gains could be made via specialization. Searching these days is extremely complicated compared to twenty years ago. It is a full time job keeping up with the changes. Every year, millions more applications and patents are published around the world and a “google” interface isn’t going to solve everything. There are too many languages, too little standardized nomenclature, too much clever lexicography, too much still useful historical data, and never enough time for staying up to date.


              Maybe if we can get Congress to give back all the fees paid by innovators that have been skimmed from the patent office and put into the gen eral tax ledgers and use those funds to create a truly top notch system…

              Ah, one can dream…


                Now there is an idea. Not actionable of course, but in another universe that would have been nice.

                If those fees were actually being used by the office over the years the office may not have needed to abandon the USPC and turn to the CPC.

                1. Meh, once CPC gets sorted out it looks like it’ll do. Kind of a pain in the ar se but it’s not that bad.

  4. 2

    Exela Pharma v. Lee/Cadence (Fed Cir 2015)
    Panel: Newman and Dyk (Rader retired)

    Held: PTO revival rulings are not subject to third party collateral challenge under the Administrative Procedures Act (APA)

    Each judge filed a concurrence, with Dyk strongly criticizing the CAFC’s earlier decision in Aristocrat Technologies which barred improper revival as a defense to patent infringement.

    1. 2.1

      MM, another big case because of Dyk’s “dissent.” link to

      Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008) held that the APA does not provide statutory grounds to review an improper revival of an abandoned application that issued as a patent.

      Morganroth v. Quigg, 885 F.2d 843, 846 (Fed. Cir. 1989) held that the APA provided statutory grounds to review an improper refusal to revive.

      Aristocrat did not site and did not distinguish Morganroth.

      Let’s not get into distinctions between applicants and third parties for a moment because that’s an issue more of whether one was harmed or not. That is a standing issue. Mixing the standing issue with whether the APA provides authority is going to confuse things.

      Also note, that the legal grounds for judicial review under the APA are errors of law or abuse of discretion. There is some question in the present case as to whether there was an abuse of discretion or whether the PTO simply ignored the controlling statute.

      Heckler v. Cheney held that agency actions to refuse an enforcement are presumptively nonreviewable while actions to exercise jurisdiction to do something are presumptively reviewable at least as to jurisdiction. Thus under Heckler, it would seem that when the PTO exercises is discretion to revive an abandoned application an issue a patent, the presumption in favor of judicial review is triggered.

      It would seem, that as a matter of administrative procedure, that both Federal Circuit decisions are wrong.

      Heckler v. Chaney, 470 U.S. 821, 105 S. Ct. 1649, 84 L. Ed. 2d 714 (1985). link to

      1. 2.1.1


        You should know by now that the “whatever” method of confusing and conflating is a desired tactic of using the judiciary to take the power of the legislature.


          anon, I see clear as day that the Fed. Cir. has historically not done a good job on general areas of the law and tends to get thing confused.

          Or confuses things.

          But EXELA involves straight up APA interpretation – the stuff of the Supreme Court. That is why this is a major case that the Federal Circuit cannot simply hide under the rug under the rubic of expertise. They are going to have to review this en banc to fix it.

          Otherwise, Supreme Court here we come once again.

          I is a wonder that Dennis has kept silent here.

  5. 1

    Gene Quinn’s blog today contains a good summary of the first full day of the Patent Quality Summit meeting re good pointed comments on PTO Bush-era appointee quality initiates that did NOT work, and caused more harm than good. But I did not see many reported positive quality improvement suggestions? One was J. Michel’s comment to: “put in a huge plea to the examining core, the SPE’s and the top management to give much greater emphasis than I have ever seen before on section 112.” I assume he means too many issued patent claims with no specification 112 enablements for claim elements inconsistently argued to be novel and unobvious? But I have been told that the PTO actually discourages examiner rejections on that basis!
    Furthermore, his suggestion should equally apply to the judicial system. How many S.J. decisions on 112 non-enablement have we seen granted and sustained by the Fed. Cir.? For that matter, what percentage of S.J.s are being granted and sustained for 112 claim ambiguity, even after Nautilus, even though constantly argued in the D.C. as another commentator noted? Or held decisive to case outcome even after a costly full blown trial?

    1. 1.1

      J. Michel is usually three steps ahead of the debate on what is the core issue and what could/can be done to address the matter. To be sure, ‘teaching how to make and use’ the invention could use a boost. A requirement for a source code appendix to enable the claimed invention? That would go a long way to reducing the issuance of junk or merely conceptual patents. Obviously, the automatic non-patent publication of the application – makes this a tough pill to swallow. Maybe a rule that would allow the source code appendix to stay non-published until patent issuance – could be an equitable tradeoff and allowed under the pto statutes? Maybe like an examination with informal drawings?

      1. 1.1.1

        …the return of the requirement of having to provide a working model…?

        When exactly was the last time that was an actual legal requirement? (in the open-ended, universal sense)

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