USPTO News

  • USPTO has a new data viewer with direct data access: PatentsView
  • USPTO earlier created a pilot program for streamlining PTAB ex parte appeals.  However, the nature of those appeals limited the process only to entities with multiple appeals pending.  The Office has now launched a second track focused on small and micro entities that only have one appeal pending. LINK.
  • USPTO has created a new tool for scheduling interviews – “USPTO AIR” available here: http://www.uspto.gov/patent/laws-and-regulations/interview-practice

44 thoughts on “USPTO News

      1. Not at all helpful, Ned.

        I am looking for you to supply the legal backing for a simple, but emphatic statement of yours.

        Throwing this case out there does not support your emphasis and will tend to obscure the simple and direct point that I am asking you to verify.

        As evidence, it would be not admitted.

        1. Well anon, if the two issues do not have common factual issues, then they do not have to be tried together. Back in the day, claim construction factual disputes were given to the jury. Now, to the court. So there may be no overlap between validity and liability anymore.

          But if there were overlapping issues of fact, the issue of fact would have to be tried to the same jury.

          Lemley made a good point about patent scope — it has to be the same for both validity any infringement. But since the court instructs the jury on claim construction, I think we CAN try validity before infringement, to two juries if necessary, or to the court in one an the jury in the other, without a violation of Dairy Queen.

          Thus a possible “reform” congress “could” implement is to require validity trials to be conducted first and made final for appeal purposes before one could move on to infringement.

          1. Still haven’t seen you provide for the S A M E jury aspect….

            And to play the devil’s advocate, why have validity before infringement? By law the presumption is validity, so why not have infringement first?

  1. Sept 21 2015: HemoPet’s junk patent on a method of “deciding what to put in your pet’s food using genetic information and a computer!” righteously buried by CAFC in a Rule 36 affirmance. Good riddance.

    (background here: link to skeptvet.com)

  2. From the PTO web site: “Interview Specialists are subject matter experts in each Technology Center (TC) on interview practice and policy to assist both applicants and examiners in interviews, as needed, including . . . helping to ensure that the interview goes smoothly.” In other words, if your examiner barely speaks English, which is not at all a rare occurrence in certain arts, the Interview Specialist is supposed to help overcome any linguistic barriers. Or at least that’s the theory.

  3. link to nytimes.com

    The Environmental Protection Agency accused the German automaker of using software to detect when the car is undergoing its periodic state emissions testing. Only during such tests are the cars’ full emissions control systems turned on. During normal driving situations, the controls are turned off, allowing the cars to spew as much as 40 times as much pollution as allowed under the Clean Air Act, the E.P.A. said.

    “We expected better from Volkswagen,” said Cynthia Giles, the E.P.A.’s assistant administrator for the Office of Enforcement and Compliance. She called the automaker’s actions “a threat to public health.”

    Promote the progress! Gotta love that “logic for profit” “technology.” We really can’t enough of that.

    1. For all of your (typical) whining, you did not mention whether that “-“technology“-” was patented or not.

      Was that something (that you are deriding) driven underground?

    2. The indicated diesel engine control software cleverly programmed to detect when the U.S. EPA is testing for emissions, versus normal driving, and then change engine parameters from emission control to increased mileage accordingly, sounds to me like the kind of patent to a clever and unobvious technological invention that ought to pass 101, 103 and 112 tests, providing there is sufficient spec disclosure and not preemption by only broadly claiming that end result?
      However, I think this kind of invention is more appropriate to keep a trade secret instead, for several reasons, like good tax avoidance schemes, albiet the latter has its own AIA statute?
      Max, what is the reaction in Germany?

        1. American Cowboy, see post 1.2.1.2.1.2.1 below.

          There is clearly more use than just to defraud, as the use to take advantage of the trade-off is the reason for the apparent deception.

          And clearly, it was “worth it” to VW to seek that path, eh?

      1. Paul, wouldn’t the critical part of this be done in — heaven forbid!! — software? Isn’t all software unpatentable according to some people on this board? Wouldn’t a claim directed to this just be covering function?

        Of course, you could pull the wool over everyone’s eyes by claiming an “electronic control unit” or “an automobile control module” and hide the fact that the ultimate decisions are made by software (executed by an ECU, but software nonetheless).

        It’s a unique idea, that’s for sure. (One that apparently has made my Jetta wagon worthless.)

        1. Hey Ned –

          Seems software DOES make a new machine, now doesn’t it, one that makes NOx and from one that doesn’t (or vice versa, depending on your point of view).

          Hey, everyone tries to put their best foot forward when being evaluated, don’t they? Ya put on a new suit and shoes for a job interview or first date don’t ya? Ya come to a complete stop at a stop sign during a driving test don’t ya?

          I am a bit confused. Here there is not “test period.” They just connect a computer to your OBD II port and the car rats itself out based, I believe on recent past performance.

          1. Les, it sure does, Les, as I have always argued — a programmed computer in a larger machine or process can transform it to produce an improved machine or result.

            1. You do realize Ned, that the computer itself is a machine, made up of many components, eh?

              Or are you still using an outdated concept of computer that has nothing to do with how a Person Having Ordinary Skill In The Art would look at things…?

      1. Only too funny, I noticed that Malcolm re-posted this story (under his current s0ckpuppet) at PatentDocs and didn’t bother to recognize the slam against him this post represents (but two others, including Dr Noonan, did).

        But does anyone think that Malcolm is going to bother to even slightly pause and give this thought? And then integrate that into posting in less of an arse-like manner?

        Or is it eminently likely that he is merely going to go on being Malcolm and posting in his drive-by monologue style…

  4. What the PTO needs is a quality meter related to the number of patents per a sample group having invalid claims.

    How could this be done? Well, for one, the PTO could periodically pick a representative sampling from various technology groups, have them searched for anticipation by a “computer program,” and have PTO experts look for 101/112 problems.

    1. Ned,

      You do realize that the computer program type claims (in all the varying presentations and varying methods of subterfuge), while very possibly invalid in large swathes, are currently the bread and butter of a very substantial segment of the bar?

      Until the bar (read: the pto’s “clients”) publicly (and privately) demand that the PTO only issue valid claims, the PTO will continue to put out invalid claims and leave it to the courts to clean up.

      Since the bar has its interests in perpetuating the current dysfunctional system, there is no hope of it changing.

    2. Ned, suspend for a moment your other obsessions with IPRs: After a couple of thousand IPR’s petitions, almost entirely based on prior art patents or publications that were missed in the original [application] prosecution, don’t you think we already have a good clue that the main application quality problem is in their prior art searches?

      1. Paul, well from the case I am handling, the examiner’s search was just fine as the main reference used in the IPR was already considered by the examiner and the secondary reference was merely cumulative — at least in my view.

        I don’t know if this fits the pattern elsewhere, but it does appear to me that there is a lot of “second-guessing” of the prior examination by the PTAB. They may have a different view than the examiner after they have considered the arguments of high-powered lawyers and expert witnesses arguing against patentability. MaxDrei has often made this point about oppositions in Europe – that the difference between examination and opposition is the quality of the opposition not so much the quality of the prior art.

        So the answer, at least for me, is no. The “problem” is not in the prior art search by the examiner. The problem is in the question of “obviousness” where the decision of the PTAB is being influenced by lawyers and experts arguing against patentability.

        So in some sense, it is true that the patent office is issuing patents that they, on reconsideration, do not agree are patentable over substantially the same art.

        1. Ned,

          What you are effectively describing is a highly inefficient registration/sham-first-examination system, where the party paying for that sham is the applicant who pays what is in effect an extra innovation tax, that in the aggregate is a multi-billion dollar tax.

        2. Ned, my understanding is that it is NOT typical for the IPR cited art to have been of record in the application examination.
          But you have a point about EPO oppositions, where some EPO agents put it something like this: “The POSITA gets a lot smarter in the opposition than they did in the original examination.”
          Also, the fact that the APJs in an IPR get claim charts and declarations re the petitioner’s cited art, distinctly pointing out all the relevant features, can make their materiality a lot clearer than merely listing it as a possible reference. [Just as it does for the Fed. Cir. in their decisions reversing jury verdicts on 103.]
          But all of this is beside the point if IPRs are here to stay and patent attorneys must learn to deal with them. Irrespective of how much you would quite naturally [which I fully appreciate] greatly prefer to only have to defend against patent validity challenges with a lay jury under a clear and convincing evidence test, and only in the case of the the few defendants that do not settle just to avoid litigation costs, and assuming that you only represent patent owners.

          1. Reaction from Germany:
            1. There are always two sides to any story. The decision is more likely to be robust after the decider has heard both sides. Inter partes proceedings are needed, to settle whether an issued claim is bad.
            2. European patent attorneys (whether in house or in private practice) represent not only those applying for a patent but also those troubled by the issue of bad claims. Thus, they often find themselves drafting and prosecuting oppositions.
            3. In Germany, district courts hear infringement cases but a federal court hears petitions for revocation. You can be enjoined by a bad claim long before you can get it revoked. This is why 70% of all oppositions at the EPO are filed by Germans.
            4. To me it is astonishing that anybody would think that a PTO Examiner who has heard only one side of the story can decide with enough confidence to justify the American presumption of validity whether the claim of an Applicant is fit to issue.

            1. Thanks Max, although what we really wanted to hear was the reaction in Germany to the novel VW diesel engine software alleged government and consumer fraud scandal noted above? Of course if you represent VW we will respect your silence.

              1. VW? Sorry to disappoint you Paul. I tried to find a patent law angle, fit for this blog, but failed.

                Do you suppose that the software is unique to VW? You say it is “new” but I’m not sure that’s safe to assume.

                That said, keep an eye on the relative fortunes of two people at VW Board level, Piech and Winterkorn.

                1. Truthfully, MaxDrei, I have no clue whatsoever what you might mean by “fit for this blog.”

                  I am trying to see this from your perspective, and can make no sense of that term.

          2. Paul, being different art does not mean that the art is materially different. (I assume that in most cases the “new” art does not anticipate the claims. People do not enforce patents that are anticipated as that is a fools venture.) If the art before the examiner and the art before the PTAB/court both disclose all limitations of the claims at issue, then the question resolves itself into whether the combination was obvious. As Max correctly observes, here the argument of the expert counsel and expert witnesses is what really is material.

            But, the same art can be produced in court and in the patent office. The same expert attorneys and expert witnesses can argue in both forums. There is no obvious reason to deny a patent owner’s right to a trial in court if the objective is to decide whether his patent is valid — unless that is not the objective.

            1. Re: “People do not enforce patents that are anticipated as that is a fools venture.”
              1. Then how do you account for the substantial number of final judicial 102 decisions over the years?
              2. Before reexaminations, and now IPRs, there was no way to even get an invalidity decision until and after full blown D.C. trial, because sustaining an S.J. based on prior art was, and still is, quite rare, in spite of KSR being a S.J. Note the Fed. Cir. rejection of the cap with a hole in it S.J. of just a few days ago. Hence something like 97% of patent suits were settled, often quite lucratively for the patent owner, before any judicial validity determination. Making suing on such patents quite lucrative, and of course no such patent owner is going to admit to prior art being anticipatory.

              1. Paul,

                I am curious about a couple of things in your comment.

                What is the actual number (total, percent, or both) that make the history of court findings on 102 “substantial?” Is this from memory (likely) or actuality (not so likely)?

                When you say “something like 97% of patent suits were settled” is this too from memory? Are you conflating the high nineties number of suits (established suits in a court of law) settling with the other high nineties number of patents that do not bring suit in the first place?

                If you are not conflating this, then that only highlights even more the pernicious anti-patent bias in that you now want to have the mite on the tail of the flea move the flea on the tail of the dog to wag the dog. Less than 3% moving less less than 2% is less than 0.0006 of final product running the show, as it were.

                Maybe it is time that you got back to your roots, and took to prosecuting and securing for clients some patent rights…

                1. If you were actually interested in truth or substance, rather than your constant need for hostility expressions, you could confirm the first number by a simple search of just Fed. Cir. 102 decisions [which I did several years ago to demonstrate Fed. Cir. ignoring of their own stare decisis rule in prior case citations], and confirm the second relative number by a simple comparison from public data of the mere few hundred patent suits that go through trial each year vis a vis the 5-6 thousand patent suits filed each year.

                2. There is nothing even remotely hostile about my asking for clarification, Paul.

                  Is there a reason why you are so overly defensive?

                  As it is, you still have not clarified your statement. Perhaps a simple and direct answer from you is possible…?

              2. Paul, I am not going to follow that red herring about anticipation. Let us say that if people know their patent is invalid because it is anticipated by art they know of they do not sue people. This is a fools errand because as we know sanctions in the form of attorney’s fees can and probably will be awarded especially after Octane Fitness.

              3. Paul, your basic complaint is that one cannot resolve validity prior to resolving infringement in court, even when the issue of validity is without a dispute of material fact. May I interject here that in MCM Portfolio LLC, we arguably proved § 315(b) privity because HP provided no response and took a default on that issue. Nevertheless, on mandamus, the government argued that we could not appeal a denial of § 315(b), but had to wait an appeal of a final decision. Do you think this is right given that we had to endure the expense of the IPR in order to resolve the § 315(b)preliminary issue for which HP provided no defense?

              4. Paul, finally to address your main argument that IPRs and necessary so that validity can be resolved prior to infringement trial. I think Congress can actually do this through legislation by providing validity trials 1st and infringement trial 2nd so long as the same jury sits for both – and there is the rub not so?

                If Congress decided to try validity to the court and not to a jury, that would be unconstitutional because patent owners have a right to a jury trial when the validity of their patents is challenged. If Congress decided that there could be 2 different juries, one for validity and one for infringement, the Supreme Court is probably would find this unconstitutional as well because the scope of the patent is material to both validity and infringement. One cannot try validity and infringement separately.

                So the bottom line is that you are trying to avoid the entire constitutional issue by moving validity trials into the patent office. But how can you avoid the constitutional issue if there is a right to a jury trial on validity?

                When one cancels claims as result of invalidity a patent owner has a right to a trial by jury. That is a constitutional right that Congress cannot deny.

                1. In other words, you merely state that two different juries is not an option without explanation.

                  Surely, two different juries is possible as long as the issues are made (as necessarily fully) to each.

                  Lastly, Congress could eliminate patents altogether, and then – perhaps under the commerce clause – set up an inferior new “right” that is less than a property right, but is similar to today’s patent right. And yes, this is most definitely not something that exists in law today.

                2. Anon, the reason that to juries cannot be used as that the scope of the patent is important to both for validity and to infringement. We’ve had prior discussions about this in other contexts. That is why is important to try validity and infringement together so that the claim scope be considered both for validity and for infringement at the same time.

                  The Supreme Court has required on retrials of damages that validity be retried as well for the same reason. The same jury must hear both validity and liability.

                3. Ned,

                  I “get” that the scope is important, and I clearly indicated that any such thing could be handled in a “two juries” manner (albeit with perhaps an impact to convenience or cost or both).

                  You still have not made a case for your position that is “must” be the same jury.

                  Why must it be the “same” jury? Is the result of the process somehow so “jury-specific” dependent that necessitates this particular identity? Where do you see such a requirement under the law?

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