The chart above shows USPTO application filings for non-provisional patent applications as well as RCE’s. Both have been on the rise for many years. The filing numbers appear to have continued to rise since implementation of the America Invents Act, although at a slower rate (acceleration has slowed). The USPTO expects that applications filed today will receive a first action within 16 months.
So, I notice lots of reckless comments below from the anti-patent crowd. It is difficult to know what this data means without it being broken down more into groups such large international corporation, small company, foreign filings, etc.
Some signs that the canaries are dying:
The data I’ve read say that small companies are hurting and cutting back on filings.
That foreign filings are up.
That large corporations are continuing to increase filings.
That some high-tech companies that deal in 3600 are considering cutting back and increasing trade secrets.
It is no accident that the trend for Trade Secret protection is ramping upwards (both in afforded protections and the use of those protections by “the public**”).
Pardon the detour, but this is also why the AIA and the Soliloquy speak true to the new “New” in patent law: what is “new to you” is still patentably new.
The elevation of this view can be seen in the elevation of the concept of Prior User Rights.
It is not without some rather high degree of irony that I recall that Ned Heller himself had once proudly claimed some part of the introduction of the more limited Prior User Rights legislation by Congress.
The irony comes in multiple layers.
One such layer is the fact that having even such a limited response actually cements in place the fact that business methods – as a category – are to be generally considered patent eligible. The reasoning is easy and crystal clear: had this not be the case, no such PUR would have been needed, as all it would have taken is a simple statement that business methods de facto do not fall within either the category or within the Useful Arts.
Everyone is aware (or should be) of Ned’s Windmill Chase against business methods, so it perhaps fitting that something he prided himself on as having helped birth defeats his own views on the topic of his favorite Windmill.
It is also ironic that Ned continues to fight (without a legal ground) against what plainly happened in the AIA vis a vis the removal of the personal penalty (from title as well as content) of the separate-by-area-of-law protections of Trade Secret and Patent protection; while the vehicle of his “proud” PUR has been used to add further “legitimacy” to the ability to practice Trade Secrets with impunity to those who would otherwise submit to the sharing and publication required for actual patent rights.
One needs to take a step back and contemplate what this means as to the thinking of Congress towards Trade Secrets.
This was NOT a small change.
Prior to the AIA (in large part), the fact of the matter – and part and parcel of the “Metallizing Doctrine” effect was that if one engaged in NOT sharing and instead opted for Trade Secrets, one put oneself at risk to be labeled an infringer for some LATER person obtaining a patent on the very item that was protected by Trade Secret. It did not matter AT ALL whether or not you had arrived at the invention point earlier – the later granted patent REMOVED your ability to practice your Trade Secret protected item.
This was colloquially known as the “Stick” portion of the dual nature of patent protection (the other portion known as the “Carrot” portion).
Congress sent a very clear signal against this doctrine by removing the Stick.
Congress sent a very clear signal that one COULD continue to practice Trade Secrets without the penalty of another coming up with the invention. This is critical because this removes part of the “logic” of Metallizing in that there is NO LONGER the premise used by the Courts – that premise being the fear of another coming along and patenting what was protected by the Trade Secret. No Stick, no fear, no argument – Congress explicitly made this into a “pure race” situation, and that race INCLUDES the ones practicing Trade Secrets. Since the “threat” of “swearing behind” has been removed as well, the idea of pure race ALONE was deemed “good enough.”
NONE of the supporting arguments that I have seen for continuing the Metallizing doctrine take this sea change into account.
Not one.
** Separately, but most definitely related, the notion of “the public” includes the juristic person of the corporation. It is no accident that this particular portion of “the public” has garnered an outsized “voice” with the legislature, up to and including the notion of capturing the legislature, given the effects of Citizens United. I footnote this though, because this is a separate matter deserving its own scrutiny, and stands quite apart from the law that is patent law already written and passed by Congress, no matter which voices were ringing in their collective ears.
Naysayers are welcome – indeed expressly invited – to respond with substantive counter points – if you can find such.
What happened to all those claiming on blogs that they would stop filing patent applications in view of Alice and IPRs?
Good question.
Perhaps some see the raising of the “long shot” Constitutional questions as actually having possible impacts and thus, it might still make sense to file now ( 😉 ).
Question: Which is more likely: (1) “Constitutional”over-ride of two of the most important and necessary fixes to the US patent system or (2) more corrections and the continued shrinkage of protection for logic implemented on a computer?
The answer is (2), by a factor of 10,000.
Oh but wait! 5G changes everything!
LOLOLOLOLOLOLOL
What meaningless drivel from you Malcolm.
As you have been corrected many times, software is not logic any more than any other engineered item is logic.
Further, your “Ends justify the Means” type of thinking simply is not appropriate in the legal situation that this topic belongs to.
Your smarmy “5G” comment has nothing to do with the larger legal topic here.
Your “LOLing” is just not appropriate, and only marks you as an arse.
software is not logic any more than any other engineered item is logic
Because “anon” says so!
Super convincing stuff.
Your tired strawman of “because anon says so f001s no one.
It is NOT true because I say so, but rather I say so because it is true.
This is neither new nor is it exceptional.
That you want to pretend otherwise is just you simply not wanting to accept what any Person Having Ordinary Skill In The Art readily knows and accepts.
(that’s a YOU problem)
It is NOT true because I say so, but rather I say so because it is true.
Wow, now that is even more compelling. Can you carve it into a stone tablet and carry it down from the mountaintop? NWPA will handle the spotlights and PatentBob will crank up the thunder machine. It’ll be awesome!
Yet another mindless reply from you Malcolm.
Your mommy must be so proud.
Your smarmy “5G” comment has nothing to do with the larger legal topic here.
I beg to differ. But I understand why that would totally fly over your head.
You can “beg” all you want, but you would still be wrong (and doubling down with saying that it is “over my head” just shows that you don’t understand the larger legal position).
you don’t understand the larger legal position
That’s because it’s soooooo s00per d00per complicated.
You need, like, five hundred years of experience in patent law plus a degree in advanced computer rocketry to predict how this is going to play out.
Nah – it’s just because actually understanding that legal picture tr@shes your desired end state.
That must really hurt your feelings.
A system comprising: a processor; a non-transitory storage medium for tangibly storing thereon program logic for execution by the processor ….
But that claim totally does not protect any “new” logic. Nope! And who cares if everything else is old? The Supreme Court? Ha ha! They have no power.
And even if that claim does protect the “new” logic, it’s no different than a claim that protects the structure of a newly engineered chemical. It’s all just a big box of protons!
Also, s00per rich people and their expectations!
Yes, folks, the above are the best arguments of the s0ftware patent lovers. That’s why they’ve been on such an impressive winning streak these last five or six years! Nobody can predict how this is going to play out.
…maybe (just maybe) don’t sniff at the word out of context and understand the term as would be understood by a Person Having Ordinary Skill In The Art….
understand the term as would be understood by a Person Having Ordinary Skill In The Art….
Instead of your perpetual obfuscation, just tell everyone what your beloved PHOSITA thinks the term “logic” means in the context of the phrase “programming logic.”. Give us the awesome totally difference-making definition that bears no resemblance to the meaning of the term used by (LOL) all those ign0rant “non-artisans” out there.
You funny. I provide that clarity requires understanding how terms are used In The Art – while you are the one obfuscating by wanting to take terms and apply them in contexts not intended – AND you accuse me of “perpetual obfuscation.”
(That’s “funny” not in a good way).
“the awesome totally difference-making definition that bears no resemblance”
What a great strawman. However, and sadly for you, there is no such limitation on the term as “bear NO resemblance.”
There is NO such requirement. What IS required though is that you do not obfuscate and apply anthropomorphication inappropriately.
A machine is a machine. A machine is just not protected by the mental steps doctrine, because – in direct and clear English: machines do not think.
Paul F. Morgan: looking a single number like this and drawing conclusions about individuals and companies is reckless.
The data I’ve seen says that small companies are pulling back on filings and the foreign companies are increasing filing with the international monopolies like Google going full steam with their new found powers.
Just because filings aren’t dramatically down does not mean the landscape of innovation hasn’t changed that innovation hasn’t been harmed by the AIA. Please stop your reckless comments.
the international monopolies like Google going full steam with their new found powers.
Remember folks: Google is trying to destroy the patent system. That’s why the are spending more money than ever on new filings. Sure, that makes sense.
Yes, these are the best and brightest people on the software patent side of the fence. Go figure. But we have to pay attention to them! Otherwise they’ll take their football and go home and we’ll all be like the Amish. So they’ve told us.
Ever hear of hedging, Malcolm?
Your attempt at “logic” here that a Big Corp somehow cannot both file patents and wreck the power of patents is simply illogical.
Your vapid “best and brightest” is not even an argument – it is mindless dust kicking empty ad hominem.
Great job Prof – this “ecosystem” is “wonderful.”
Most of MM’s posts are at the level of a bab00n hurling their feces.
Happy Decade of Decadence.
Just because filings aren’t dramatically down does not mean the landscape of innovation hasn’t changed that innovation hasn’t been harmed by the AIA.
Right. That’s because the PTO is still granting reams of “do it on a computer” junk every week.
Wow, imagine that: patents are being granted for machines and manufactures.
Oh Noes, the ultra rich 1percenters are at it again.
My, what lovely fields of rye you have Malcolm.
The application data almost appears to be two-tiered, with each tier showing a trend that appears to be on par (or slightly lower) than the RCE trend (on a percentage basis).
The huge spike before the final implementation date of the AIA is also an interesting outlier (which reminds me of the unanswered question as to why, if the AIA was such a great thing for innovators, why did we have such a spike to get in before the AIA went into full effect…?)
Because people fear change, duh. Especially those who have been so successful milking a broken system.
You want to base that much on fear of change alone…?
Nonsense.
That logic would necessarily defeat even the change itself.
You ascribe pure emotion and no reason to an incredibly complicated area of law and human endeavor, which captures some of the most intricate reasoning involved in human actions.
Your “milking a broken system” is far too much baseless ad hominem and smacks of the Malcolm affliction that all users of the patent system are G-g-g-grifters (that high point is essentially doubling a rough median level at the time)
Malcolm affliction that all users of the patent system are G-g-g-grifters
Oh, lookie! The path0 l0gical li@r is up to his usual games.
Hyperbole..?
Sure.
But your very own post above at 5.1.1 with your attempted “software per se” mantra means that your claim here of “path0 l0gical li@r is up to his usual games.” is simply false.
Try something different.
edstirling: what is the basis of your “fear” theory? The basis of my “we know it is worse than it was” theory is that my law firm advised clients that the AIA weakened patents and it was better to file before the AIA became effective. And all the in-house attorneys came to the same conclusion.
By far the most significant in total impact practical disadvantage for applications filed under rather than before their effective date under the AIA is that foreign application based U.S. patents and applications [which is roughly 50% of them all] are effective as prior art up to one year earlier.
There are the post grant procedures as well that can tie up a patent for another couple of years and have a greater scope than the IPRs.
Also, a big reason for the jump was the one year grace period.
And Paul the reality is that if you want to assert a patent the PGRs can essentially just add a couple of years of not being able to assert a patent. Anyway, it isn’t clear how they will shake out yet, but a big concern back then.
Perhaps because the AIA at a stroke expanded the range of prior art citable under 102 and 3. Like earlier-filed PCT applications, world-wide, WO published after your USPTO filing date, and then abandoned before entering the USPTO?
Isn’t it then no more than common sense to file whenever possible, before all these prior art documents become citable? Might it not be malpractice to dilly-dally, and not file at the USPTO till after the AIA comes into force?
A “huge spike” is no more than what I would have expected.
Yes, MaxDrei, what you say on the surface sounds very reasonable – but you miss the forest for the trees (and the larger meaning).
Why would making so much more patent-defeating art available be a “good thing” for innovators seeking patents? After all. The changes made in the AIA were “spun” as being pro-patent, while the observation you make here (as reasonable human nature as it is) is in the opposite direction.
ANY “good” and pro-patent sentiment that you may come up with would speak to the human nature of people wanting such a “good thing” and purposefully pushing items into the post-AIA world (this could be done while still achieving pre-AIA filing dates, by the way).
Max, could you please explain: “Like earlier-filed PCT applications, world-wide, WO published after your USPTO filing date, and then abandoned before entering the USPTO?” ? I must be missing something. U.S. published applications and patents filed with NO earlier foreign filing application priority claim [directly or via PCT] are still going to only have a prior art date as of their U.S. filing date.
Paul, I ought to let those who are US attorneys advise you here. My understanding is that, with the AIA, the USA introduced a supercharged turbo-FtF system, in which i) earlier filings (those which don’t A-publish till after your filing date, serve as prior art attacks not only under 102 but also (unique in all the world) 103, and ii) so long as the earlier filing is in English, one that is a PCT-WO is effective, regardless whether it enters the USPTO in its “national phase”.
But as I say, let yourself be advised by your fellow US attorneys.
Max, the PTO MPEP Section 2152.01 says: “The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) as the earliest of: (1) the actual filing date of the patent or the application for the patent containing the claimed invention; or (2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, or 365. See 35 U.S.C. 100(i)(1).”
Paul, I presume, just as a matter of proper grammar, that “such invention” in clause (2) means “the claimed invention.”
So, a Chinese application discloses X, but it does not disclose best mode, and Y, but claim only claims X, ditto the US Paris Convention application. The US patent issues claiming only X. That patent was held invalid in a court of law for lack of disclosure of best mode, but that judgment was overturned due to the new 282(b)(3)(A).
Is the US Patent prior art in the US for any purposes as of the Chinese filing date for subject matter Y?
Note that Section 100 deals with the effective filing date for claimed inventions. Section 102(a)(2) states
1. “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b);” and
2. “in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”
Now, the statute does not define the effective filing date of a patent or application, only of the effective filing date of claimed invention. So, I would read 102(2) to be consistent with 100’s definition and require that the patent or application claim an invention that is entitled to a right of priority under 120, etc., which requires full 112(a) support (note, best mode is still required.)
So, for failing to disclose best mode, the claim for priority is no good, and the reference is not valid prior art for fully disclosed and enabled Y.
Paul, I have the feeling you don’t yet grasp the point I am trying to make. I will try again, but use Japan instead of China.
Suppose you file at the USPTO. Suppose that, earlier than your filing date (say two weeks earlier), an Applicant in Japan filed PCT at the JPO as Receiving Office, in English, an application for protection of what is, in substance, the same subject matter, the same invention. The JP PCT contains an enabling disclosure and best mode. Ned, please suppose that you cannot fault it on adequacy of disclosure. It’s the same invention with an earlier filing date.
But wait! It wasn’t WO published till after your USPTO filing date.
And more. It never entered the USPTO as a national phase or continuation application.
Now, under the EPC, it is no threat to your patentability.
But under the turbo-charged FtF law of the AIA (as I understand it), it is a wipe-out cite to your patentability. If it doesn’t knock down your claim under 102 it surely will under 103.
Do you agree?
Yes, Max, I agree.
English does not matter. All that matters is that the PCT designate the U.S.
The PCT publication is deemed a publication under 122 because of 35 USC 374.
There is no requirement to enter the national stage.
Thanks Ned. This AIA expansion of “secret” prior art available for 103 attacks is pretty drastic, I would say. And I would say its disharmonisation effect is going to be progressively more potent, as i) inventive activity spreads around the world and ii) valuation of patent portfolios gradually gets more sophisticated.
I had not appreciated that English language does not matter any more. It used to, for 102(e), didn’t it?
And it struck me, Max, that best mode may not be a defense to validity, but it is required for the benefit of an earlier filing date.
Strange how I have not seen that discussed earlier.
Not a problem Ned for those who have never known anything but FtF. They know that if they leave anything out of their priority document they are likely to end up with the worst of all world, published, but with no issued claims of their own.
But folks in the USA already grasp that skimpy provisionals do more harm than good, yes?
No MaxDrei, and this is summed up with two words (which has been discussed with you previously):
Patent profanity.
Your own aforementioned case of KSR has a hand in that “thinning out” (as also previously pointed out) – applications do not need to cover what is already understood by PHOSITA, therefore when you increase the power and knowledge and capabilities of PHOSITA (as done by the Court in KSR), you necessarily diminish what is required in an application.
Hi Dennis,
How does this compare to the rate of population increase?
-Erik
Or normalized for the GDP or the size of the innovation industry.
There are studies coming out by real academics (as in real economist) saying that innovation is starting to hurt from the AIA.
The studies I have seen say exactly what people like me said was going to happen. The big international corporations are not being hurt, but that the smaller the company, the more capital has flowed from the company.
As an examiner, I have noticed a significant reduction in the time to first action. I see a lot of cases with foreign priority, and it used to be (maybe 2-3 years ago) that about half had a foreign search already performed that I could use to prime my search. Now, almost none of my foreign cases are old enough to have a foreign search completed.
Anecdotal, but in line with the above data/chart.
19.2.2.1.1 in the “Law Professors Call for Patent Venue Reform” starts an amusing conversation where Night Writer illustrates both that he doesn’t understand enablement and that he’s a complete cow@ard unable to back up his own assertions.
The long in the short is that Night Writer said that 5G technology enabled “A refrigerator that not only alerts you to a near-empty egg carton, but automatically adds that item to a virtual shopping list, enabling a delivery to your door by week’s end, without any action from you.” He refuses to explain how the refrigerator was unenabled before 5G, dances around the issue, moves the goalpost, and endlessly tosses insults.
Bob – you are the one that continues to show that you do not understand the legal requirement of enablement.
You want to make a distinction that has no real difference, and want to make something of nothing.
You just don’t have the part of the application to which enablement can be discussed present and on the table, and you just want to see “more” from claims and sound bytes that just won’t have what you are asking for.
But I’m not asking NW to make a case FOR enablement. We have a proxy for the claims, which should be enough for NW to make an argument against enablement.
Do you feel that one of ordinary skill in the art could noy make it use the described refrigerator, anon?
Mobile typos.
Do you feel that one of ordinary skill in the art could not make or use the described refrigerator, anon?
Your questions are simply not meaningful – for reasons supplied several times now.
You are acting like you have uncovered some great “gotcha,” when you have nothing meaningful.
No. I think this is a minor gotcha where NW opened his mouth without thinking. He refuses to admit that.
No, it is you that remains off, as it is not a “gotcha” at all, and your pursuit only (continues to) show that you don’t underarm ad enablement (which is actually the point that Night Writer is trying to tell you).
NW opened his mouth without thinking.
What? That never happens.
Bob,
I told you that I wasn’t going to list the current problems so you could jeer at them. I told you that the analogy was with a Model T and a modern car. To anyone that understands patent law that is an answer.
You somehow think you are some super alpha male and that I am bound to play your game of reducing the quote about the eggs and the refrigerator to an absurd question rather than the intent of the quote.
No need to list all the problems. Mentioning ONE problem which would prevent one of ordinary skill in the art from making or using the described refrigerator would be enough.
And the model T thing is not an answer. It’s a generality removed from the specific invention that you said was enabled by 5G.
Try lowering yourself and putting on an examiner’s cap and making an on-point arguement.
“putting on an examiner’s cap”
That pointy thing you have on is just not an examiner’s hat.
You want something “on point” to an off point sound byte (apparently still trying to use enablement as some type of 102/103 proxy, since for ANY actual 112 examination, you just don’t have enough on the table – as has been told to you repeatedly now).
The state of the art defines what is not previously enabled, and the specification defines what the inventor enabled. So why should it be necessary to have a specification to make an arguement against enablement? It certainly wasn’t necessary for NW to come to the conclusion that the refrigerator was unenabled before 5G.
You are still trying to chase a misapplied 102/103 position through enablement.
This is just not Night Writer misspeaking – this is you chasing an imaginary “gotcha” well beyond any sense of reason.
You insisting that it’s a 102/103 issue doesn’t make it true. I haven’t said anything about 102/103. I have simply said that I am sure that one of ordinary skill in the art could have made and used the described refrigerator before 5G. How is that 102/103!?
And I note that you’ve cow@rdly refused to take a position on whether or not one of ordinary skill in the art could have made and used the refrigerator before 5G.
…because cut and paste of what another says gets caught in the filter…
Bob,
The Model T is exactly on point. You are either the most literal person I’ve ever met or the most arrogant. Do you not get that the Model T is like the old technology. Do you not get that I am saying that the refrigerator is enabled, but that it would be like saying the best car you are going to get right now is a Model T?
Are you really thick? You obviously tried to take the quote about the refrigerator in a literal sense to remove all meaning from it. The point wasn’t that it couldn’t be done now, but that it couldn’t be done well know. Just like the difference between a Model T and a modern car.
As I said I have no interest in listing the problems so you and MM can have a jeering session.