Some applicants have asked about the current status of their AIA applications. The chart above shows the current status of a sample of about 8,000 published patent applications claiming post-AIA status.* Because of the backlog of PTAB appeals, it will likely be 2017 before we start seeing substantive decisions on the merits of AIA appeals.
About 7% of recently issued patents claim post-AIA status.
* A patent application falls under the America Invents Act (AIA), if it ever included a claim whose earliest effective filing date (counting priority claims) is on or after March 16 2013. This automatically includes all applications filed after the March 2013 deadline that do not claim priority to any earlier applications. Applications filed before the March 2013 date are all pre-AIA because the new-matter restriction would require that all claims be associated with that pre-AIA filing date. In the middle are applications filed after the March 2013 date but that claim priority to a pre-AIA application. For those bridge applications, the patent applicants have been initially asked to self-determine whether their applications are considered pre- or post-AIA.
For those of you who care about these things, O’Malley all but said that Congress had no constitutional power to regulate case management by the courts. O’Malley, “Respective Roles of the Courts and Congress in Shaping Patent Policy,” 42 AIPLA QJ 1, 1-11 (Winter 2014), questioning the rush to congress to amend the laws control discovery, the timing of Markman decisions and the form of complaint for patent infringement actions.
If so, then, what does this mean?
“In all Cases affecting Ambassadors, other public Ministers and Consuls, and those in which a State shall be Party, the supreme Court shall have original Jurisdiction. In all the other Cases before mentioned, the supreme Court shall have appellate Jurisdiction, both as to Law and Fact, with such Exceptions, and under such Regulations as the Congress shall make.” U.S. Const., Art. III.
There has long been debate on what the Exceptions clause meant. But what about “Regulations?”
Are we headed to another Marbury v. Madison?
Ned,
It is entirely unclear what point you are trying to make.
Can you give it another try?
Leave no doubt Ned that I care very much about such things.
Sadly, that level of care is not reflected by those that typically oppose me.
The Respective Roles of the Courts and Congress in Shaping Patent Policy Members Only
Honorable Kathleen M. O’Malley
This is a transcript of a keynote speech delivered at the Fifth Annual Conference on The Role of the Courts in Patent Law and Policy, hosted by Georgetown University Law Center and Berkeley Center for Law and Technology on November 1, 2013 in Washington, D.C. In her keynote speech, Judge O’Malley addresses the grave risks that are created when parties turn to the Courts for substantive policy-making or turn to Congress for rule-making and case management in an attempt to improve the patent system. The speech stresses the need to adhere to the structural limitations on the branches of government established by the Constitution and the importance of focusing not just on the changes that parties think need to occur, but on which branch of government should be asked to effectuate those changes. (emphasis added)
link to aipla.org
Trying to find an “unlocked” version (anyone with a link, please provide) leads to:
The Role of the Courts in Patent Law and Policy
Supreme Court
November 2, 2012
Hosted by Georgetown Law and Stanford Law School
Sponsored by Cisco Systems, Inc, Samsung Electronics, Google Inc., Verizon Communications Inc.
at
link to law.georgetown.edu
Note the players of Stanford (Lemley), Cisco and Google…
Hello, McFly…. Hello!
On top of the players, we have here Ned leading to O’Malley’s article, but (conveniently) omitting what is perhaps the MORE CRITICAL point regarding 101: Patent law is statutory law – not common law to be written by the judicial branch.
Anon, I do not disagree that 101 is statutory, but it stems from 1790/1793, not from 1952. Congress did not intend to change the law in 1952 on so basic a statute as 101. It is foundational.
What Congress intended the words of the statute to mean must be interpreted in their context when Congress enacted them. Congress intended according to the very words of the statute that any new or improved, useful, machine, manufacture, Art, or composition, not known are previously used by others, be patentable subject matter. The dispute over degree of improvement that would be an invention was left undefined. But certainly “new” as in “new composition” was an independent and distinct requirement from being “not known or used by others.”
What Congress did not say in 1790, 1793 or 1952 was that anything other the sun made by man was patentable subject matter. What Frederico was referring to when he made a statement along these lines was to denote the broad construction of “manufacture.” But still manufacture had to be something physically made by man. A thing. Not an idea. Not a product of nature.
We know where the law of nature, phenomena of nature, and principles in the abstract language came from. It came from England, particularly from the cases cited by the Supreme Court in Le Roy v. Tatham. This is not surprising because the basic statute, 101, was patterned after the Statute of Monopolies, limiting patentable subject matter to inventions in manufactures, and the case law that had occurred between the enactment of that statute and the enactment of 101 in the United States. Looking to the law of England for what our statute means was quite inevitable.
You protest too much and say too little Ned.
The paragraph (yes Ned – the single paragraph) that was rewritten and reordered in 1952 was NOT a strict codification as you incorrectly proclaim.
On that you are simply and irrevocably incorrect. I have explained why countless times with the 1952 confessional texts, the notes as listed on the Cornell Law website, and even your beloved Federico – as well as Rich explications.
All that you can depend on is the dicta of a power-wax-addicted Royal Nine, and the improper OVER importation of a foreign law influence that was anti-method to begin with (as I have also countless times explained to you).
You now err on manufacture as even your attempted spin here still (as it must) includes software as a manufacture created by the hands of man (and try not to dissemble and conflate the thought of software with software).
But more to the explicit point here raised by Judge O’Malley (and purposefully ig nored by you): the 1952 Act removed the power of the Court in the 101 sense and it is a “grave risk [ ] (for) Courts (to make) substantive policy-making.
I have shown point blank how your curse-ades against business method and software patents MUST fail given the actual words of Congress, and thus you too violate what Judge O’Malley warns against with your adoration and exultation of the Nine above Congress in writing patent law.
For pity’s sake anon, I have quoted to you chapter and verse from authors in the mid-1800s, both from United States and from England, that have described in detail the origin of the patent law’s definition of patentable subject matter from inventions regarding manufactures in England, to machines, to compositions, and to processes known as Art. In response you provide nothing. Nothing, except to say I’m wrong without explanation.
Regarding Frederico, he explained, and I have explained to you, that the division of prior art from 101 had a purpose. It was to incorporate into 102 the defenses the patent infringement that appeared in a separate statute. Those defenses included prior invention by others and that the alleged inventor was not the true inventor. They went to the statute as 102(f) and 102 (g). Frederico never intended to change the law about 101 at all. You can say something to the contrary as much as you want. But you will find nothing in Frederico’s comments that suggest that 101 was modified.
Absolutely false Ned – I have provided you extensive third party sources including Congressional records and the thoughts of those who know best concerning the 1952 Act. I have also repeatedly debunked your English law bias and showed you that methods are NOT a sub-category of the hard goods categories (they are not limited to methods of making the hard goods). US patents have been providently granted on such throughout our history (as a guest post here on Patently-O amply demonstrated).
Your “version” of 101 is simply NOT a correct version to have. So when you attempt to claim that there was “no change,” you are already standing in the weeds because the “version” in your mind never was the law.
Even besides this dust kickin of yours, you STILL are not getting the point that Congress removed the power of common law evolution from the courts on defining “invention” (from 101) and deliberately split this off with a purposeful different test in 103. You conveniently never get around to addressing this, understanding this, acknowledging this, and integrating this into your Windmill chases that violate the very thing Judge O’Malley warns about in the very article you present for a different reason.
Once again you present a source that defeats your purpose. You did this before with a source that explained the difference between dicta and holding during our Bilski discussions.
Bull, anon.
Federico SAID that 103 was codification how much different the claimed invention had to be from the prior art — which was then what was known or used prior to the invention.
You read Rich’s views somehow changing 101. How? 103, by its V E R Y terms is about prior art. P R I O R A R T — before the date of invention by the applicant. That is what then appeared in 102(a).
Absolutely – and fundamentally – wrong Ned – on several levels as I have previously provided in great detail.
The pre-1952 single paragraph is simply NOT as “only codification” as you attempt to spin – see the words of Congress, see the Congressional notes, see Federcio, see Rich, etc etc etc
Yes, anon, the split in the paragraphs was to allow the incorporation of the defenses to infringement into the new 102. These defenses were “prior invention,” “abandonment” and that the named inventor was not in fact an inventor but rather was a pirate.
101 itself was unchanged in any detail.
It was more than that Ned – clearly.
“Invention” by the judicial power of common law evolution was stripped away, the power taken because Congress was upset with the anti-patent ways of the Court and the mess that that the Court was making.
Sound familiar?
(and you are STILL missing Judge O’Malley’s warning on the judicial branch over reach)
Open your eyes Ned.
You mean when the claim was not exactly what the prior art disclosed, what degree of difference had there to be for the invention to be patentable. That is what the statute, 103, actually says. That is what Federico says 102 it was intended to do.
But that has nothing whatsoever to do with what subject matter may be patented. These are new or improved, useful, machines, etc. Your denial of this is remarkable. You are suggesting that 101 be completely removed from he law because 103 was passed, or that 103 had something to do with patentable subject matter.
How it is possible that you even believe this is remarkable. The topics are unrelated to each other.
Wrong on all accounts Ned – unclench your eyes, open your ears, learn, even if your Belieb system must change.
“Invention” by the judicial power of common law evolution was stripped away, the power taken because Congress was upset with the anti-patent ways of the Court and the mess that that the Court was making.
(your protest is as futile as assuming that 101 cannot be conflated with 103 – plain evidence shows otherwise. your protest is as futile as thinking that the early Court cases do not sound in 112, which plain evidence shows otherwise)
This “front” of yours now is merely dissembling nonsense. It is abundantly clear that the Court has clung to its pre-1952 common law power even after Congress took that power away. THIS is the very thing that O’Malley warns against. Your refusing to see that, even as you are the one that supplies the title of O’Malley’s piece (still waiting for anyone with a non-pay link…) speaks more to your TYPICAL choice of clenching tight your eyes.
A simpler solution would be to treat all new applications as AIA applications and have the applicant prove entitlement to non-AIA status if that were at all important to the outcome.
But the argument is made that that would disrupt “compact prosecution.”
Compact prosecution is simply an ideal and it has more to do with examiner compensation than it has to do with proper examination. The goal should be to examine properly. Compensation to the examiners should follow that necessity.
FYI, I just learned that the PTO has a five (5) month backlog on deciding Petitions to Make SPECIAL under PPH.
(If I had known that I would have filed a Track One 2 1/2 months ago instead.)
A reasonable petition fee should be charged for Petitions to Make Special under PPH. Such fee would be fair because the PTO does have to handle and process these petitions. It would also reduce the number of such petitions, and thereby reduce the processing backlog.
It was remarked during the process of the AIA becoming law, that the mere attempt (even if not successful, as for a subsequent rejection for new matter) would still irrevocably place the application into the post-AIA zone.
As this is truly a binary matter (with the “middle zone” truly being vanishingly nil), perhaps a different focus may be of interest.
If, as might be required if we were to believe that the Congress involved were looking out for the betterment of our society, the changes of the AIA were in fact meant to meet the hype of a better patent system, we should be seeing a wholesale effort to be under the dominion of the changed law. This would naturally occur with (possibly) spurious claim amendments accompanied with cancelations of those amendments, as well as a deep trough of applications back just prior to the law becoming fully in effect.
Serious question for the pundits, or the academia, then (which means that no “Grifters” comments please): why are all accounts pointing in the opposite direction? It is nearly as if it is a fait accompli that the AIA is really worse patent law.
The PTO has taken the position that an improper attempt to add new matter into a claim will not trigger AIA-status. I’m sure that issue will be challenged.
Thanks Prof. Crouch – I am aware of the answer given by the Office (on the AIA FAQ page, question FITF1124.
I would note that the answer includes the phrase “purely an administrative process” and that the Office’s view of what is “purely administrative” has a terrible track record (Tafas anyone?).
Clearly the “bucket” effect is more than merely administrative, as well as the option of either removing the “added matter” or “correcting” a designation (say from CON to CIP) has significant effects beyond mere administration.
Paul,
Nice strawman with the “still arguing,” but whose arguments are you referring to?
Since it is relatively rare for an examiner to formally note the lack of full 112 support for a latter-added claim, and since he PTO would be allowing rather than rejecting these claims [so there would be no PTO appeals thereof], and since this particular issue would seem to be moot unless the claims were invalid under AIA 102 but not pre-AIA 102, I would think it would be a very long time before this issue would ever be raised in the litigation of such a patent. Also, if the examiner did note that the proposed new claim was not properly entitled to a pre-AIA application filing date and refused to enter that claim, would that even trigger the AIA coverage statute? Would not the claim have actually had to be entered into the application to do that?
The issue comes up with a continuation application as the claims are part of the application. So, if you file a continuation with claims that fail 112, then the argument is that it is a continuation-in-part and now an AIA application. You add claims Paul. The examiner doesn’t refuse to enter them he/she merely rejects them.
This is actually not a minor issue. There was guidance on the PTO site about 2 years ago that said if you got the 112 (continuation with claims that got a 112) then all applications going forward were AIA applications including continuations. It was a fairly stern warning that if you didn’t check AIA that you would be committing an ethical violation.
(Note this is easy to avoid. Just file a continuation with the old spec and claims and the next day file a preliminary amendment. )
But, again, this is not a minor deal. If an application is one that is being litigated or a valuable application, and it is pre-AIA, then putting into AIA could be disastrous. For example art for a foreign country may now be prior art when it was not before.
(And for those of you that don’t know, typically if an application is valuable and being litigated then continuation after continuation is filed.)
I am not sure what Dennis is referring to. I haven’t seen presumably new guidance on this issue.
Check out my post Night – go the uspto AIA site and look for the FAQ.
(and yes, this can indeed be a big deal with substantive rights impacted)
Not sure what you are talking about anon.
Just do this: file a continuation with the old spec and claims and the next day file a preliminary amendment.
I don’t understand how else a problem can come up. Any claim added after the first day of filing is either supported or not. If supported no problem, if not, then it should not be allowed.
AIA FAQ page, question FITF1124
Actually, what is written there is nothing more than explaining how it has always worked regarding CIPs. I don’t see an issue. If you follow the procedure I outlined above you will never get in trouble.
You are missing the point by focusing on “staying out of trouble,” and at the same time assuming that “trouble” must be equal to falling under AIA dominion.
Good point NR, yes, quite a few attorneys have filed applications labeled “continuations” that are really CIPs with amended specs and/or new claims lacking full 112 support in the original spec. These were already improper, and already had an invalid priority claim as to such claims, and are already subject to intervening prior art. The AIA just adds to their existing legal and ethical problems by automatically converting them into AIA-subject applications with AIA-increased prior art! Especially, the AIA moving of the effective dates of U.S. patent or published application references back to their foreign priority dates.
One of the subtleties here is that once you submit the “offending claims” you are thence forth locked in to the AIA regime – even if the claims are canceled sua sponte before any subsequent action by the Office (directly in conflict with the Office’s “interpretation”).
However, two points STILL remain:
1) this is NOT an idle “mere administrative” move as substantive rights are effected.
2) IF the AIA was such a “good thing” to begin with, why are we not seeing a rush to place applications into the AIA regime (and instead seeing a incessant albeit sometimes subtle inclination to view the AIA regime as a bad thing)?
Still arguing about whether the AIA should have been enacted [by a huge bi-partisan majority] or not is of course a waste of time. But as to the intent of the 102 aspect of it by its authors, let’s not forget the intent was to eliminate interference litigation [normally lost by the second to file anyway], Rule 131 declarations [none of which have ever held up when judicially challenged in many years], secret alleged prior art from secret alleged invention dates, and other long-term uncertainties as to invention ownership. Presumably that is being accomplished.
8000 applications are more than enough for a valid sample at publication date, but note that the TOTAL number of AIA-subject patent applications [filed since 3/16/13] must be well over one million by now.* [This is assuming that only a relatively small % of these post-3/16/13 applications can claim pre-AIA status by asserting that ALL of their claims have a valid priority claim benefit from an earlier application?]
Does it not seem highly likely that at least one or more of these million+ applications will have some dispute over AIA 102 & 103?
*AIA 102 & 103 also equally applies to design patent applications
OT: link to nytimes.com
Not enough patents, apparently.
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