Judging Ex Parte Cases

My research inquiry – Have you read any great writing on the difference between the process of judging a contested case vs an uncontested (or ex parte) case?  [email me: dcrouch@patentlyo.com]

In the contested situation, a judge is free to be neutral and rely upon the each party to identify deficiencies in the opposing party’s arguments.  In the ex parte case, such as patent examination, there is no party voicing opposition.  The need for that voice is partially eliminated by the heightened duty of candor in these cases, but only partially.   How does the examiner fill the role of both judge and partial voice-of-opposition in this situation?

99 thoughts on “Judging Ex Parte Cases

    1. 9.1

      Also these two (and no less than 6 other Rule 36 affirmations published today!):

      INTELLECTUAL VENTURES II LLC v. COMPASS BANK [RULE 36 JUDGMENT]

      INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC [RULE 36 JUDGMENT]

    2. 9.2

      Reminder that the Voxathon oral arguments contained this all-time classic quote that should definitely be in the history books when folks get around to documenting this farce:

      “You’re teaching the button what to do.”

      From horse whisperers to button whisperers. It’s just like rocket science, except without the rocket and without the science.

      1. 9.2.1

        It’s a good thing then that you don’t need “rocket science” (aka Flash of Genius) to obtain a patent – leastwise if you pay attention to the rebuke laid down by Congress to the Supreme Court in the Act of 1952.

  1. 8

    “How does the examiner fill the role of both judge and partial voice-of-opposition in this situation?”

    Generally we don’t in so far as I’m aware. Sometimes a junior will take “the side” of an applicant when they think x should be interpreted in y manner or b should not be deemed obvious legally etc. But other than that there isn’t much voice of opposition going on prior to the applicant’s response.

  2. 7

    Dennis, I was thinking about your question re the relative importance of the “duty of candor” in ex parte versus inter partes proceedings?
    I think there has been even more concern about “duty of candor” in prior PTO inter partes proceedings [which were then primarily interference proceedings]. Lack of candor in inter partes proceedings has a much greater risk of exposure, by diligent opposing counsel, and consequent lack of respect by the APJ’s [or other judges] in that or subsequent proceedings. There are vastly less APJs or other judges than there are PTO examiners, so one may well have to appear before them again.
    Furthermore, in most ex parte proceedings examiner interview oral arguments (including any assertions about the state of the art, etc.) made by the applicant’s representatives are not even recorded, and are thus effectively unchallengable.

    1. 7.1

      Oral negotiations are exactly that: negotiations.

      And like negotiations in other legal contexts, carry a certain level of protection.

      On the other hand (and quite in line with the patent rules concerning the fact that business in the Office is carried out in writing), the summary of the interview (an item in writing) is fully a part of the record.

      We really don’t need any dust-kicking from those who don’t understand why oral negotiations are – by their independent nature of being negotiations – better unrecorded.

      1. 7.1.1

        Anon, negotiations with a judge [an examiner serves that function for patent applications] usually ARE recorded. That includes most federal, and many state, administrative proceeding judges. That is not the same as private negotiations between party-advocates.

        As you are well aware, the cursory interview summaries in a patent application record rarely give much detail as to the patent applicants assertions.
        BTW, I did NOT support the proposal by former Solicitor Nancy Link for prosecution interview recordings. This is merely a reality observation relevant to the topic here of candor in ex parte prosecution.

        1. 7.1.1.1

          Paul,

          At one time faxes to examiners with proposed claim amendments for discussion at an upcoming interview were not recorded. Now, in compliance with the Federal Records Act, they are entered into the file. As anon and you somewhat suggest, a verbatim transcript of examiner interviews would inhibit the conversation. A cursory review of the Act indicates that there is no requirement to memorialize oral conversions, just preserve them if made. However, defendants constantly allege that the prosecutor pulled the wool over the eyes of the examiner. In such cases, most of the time, a transcript would be useful.

              1. 7.1.1.1.1.1.1

                What exactly is being “inhibited” when Examiners and applicants engage in secret negotiations about what kind of claims are going to be granted?

                And why should anyone be concerned?

                Serious questions. And you’re a very serious person! Surely you’ll be able to come up with a reasonable answer. So let’s hear it, “anon.”

                1. Maybe you want to pay attention to the answer already given – but please go ahead and ig nore human nature and communication theory about what makes effective negotiations.

                  Do you think we should remove this from all legal aspects? How about attorney privilege? -should we remove that to?

                2. Do you think we should remove this from all legal aspects?

                  Whoa there! Let’s keep your silly strawmen out of this, please.

                  the answer already given

                  There was no answer given to the question I asked you.

                  Here it is again:

                  What exactly is being “inhibited” when Examiners and applicants engage in secret negotiations about what kind of claims are going to be granted? And why should anyone be concerned?

                  Let’s hear your answer, o serious one. Remember: these are public rights that are being granted. The public has a a paramount interest in the validity of those rights, and the process.

                  So let’s hear your answer, “anon.” You’re a very serious person! I’m sure you’ve thought very deeply about this. So just answer the question. Try a paragraph or two. Ask your m0mmy to help you if you find yourself struggling again.

                3. It’s hardly silly – and along the lines of you wanting “everything out there” at the same time that with DISQUS you sought the highest level of NOT having “everything out there.”

                  As to why negotiations are not on the record, maybe pick up a little knowledge on your own vis a vis communication theory.

                  Ad to what you want to call “silly strawmen,” that same communication theory is simply at play in another legal context.

            1. 7.1.1.1.1.2

              MM,

              Replying to your December 9, 2016 at 4:19 pm post:

              “Let’s hear your answer, o serious one. Remember: these are public rights that are being granted. The public has a a paramount interest in the validity of those rights, and the process.”

              To protect the public rights, let see if we can do one better than record the interview. I calculate that with 300,000 applications averaging about one hour of interview time per year and 2,000 hours in a work year, there there are 150 interviews going on at any one time. What better way to protect the public than to webcast the interviews. With advance notice in each patent application’s PAIR, interested parties could listen in. But why stop there? If the examiner had a twitter account, the public could send in tweets. A twitter storm would could alert the examiner against making an unpopular decision. Of course, since most examiners are not lawyers, the PTO would probably want to second attorneys to sit in.

              While we are protecting the public trust, lets not forget that it is vitally important that the Federal Government hire the most qualified people. Job interviews should therefore be recorded. For the same reason, request for help from congressional offices should be as well. Now you will say it is not possible to record every interaction with the Government, oral or written.

              Check my numbers for the PTO. I think a one hour of low-fi audio recording requires 300 MB of storage. 300,000 hours needs 90 TB. Currently, a 10TB drives cost $600, so $5k should cover the PTO’s storage costs. By the time they get set up, it will be half as much. The possibilities are endless.

              So, you see, I am serious, but have a good weekend.

              1. 7.1.1.1.1.2.1

                Troubled,

                After just a little while you will pick up that Malcolm’s “so serious” line is a meaningless throw-away expression (or poker tell) that tells you that he really has nothing inte11igent to say.

        2. 7.1.1.2

          The “reality observation” that I replied with is that the examiner interviews are meant to be a dialogue and negotiation more in line with that which is protected than that which is on the record.

          It is so for the “reality observation” that you might as well not offer them otherwise. The effectiveness of the vehicle simply stems from the fact that the interview – the spoken back and forth – is not on the record.

          Yes, interview summaries are woeful, but that is quite a separate problem.

          1. 7.1.1.2.1

            the examiner interviews are meant to be a dialogue and negotiation more in line with that which is protected than that which is on the record.

            Really? When did Congress say that?

              1. 7.1.1.2.1.1.1

                Comes with the nature of such things.

                A truly fascinating admission. We’ll be returning to this one.

              2. 7.1.1.2.1.1.2

                I missed the part where it was established that when I call an examiner it’s a negotiation. I’m not offering anything the examiner wants; I’ll get you an extra couple of counts if you allow claim 7. It’s not a negotiation at all. Sometimes I am trying to verify that I understand how the examiner is reading a reference because the action was indefinite, or to understand exactly what the examiner thinks the result of “combining” the references will look like, or to suggest a claim amendment in a more efficient manner than writing it all out first. Sometimes it is to get the supervisor on the phone to explain why the final rejection didn’t address any of the arguments raised against the rejections of a few select dependent claims. I’m either fishing for information or trying to persuade but it’s all legit, and I for one have no problem with it all being completely on the record. Why ever would you saying anything to an examiner you wouldn’t want in the record?

                1. Why ever would you saying anything to an examiner you wouldn’t want in the record?

                  I’m sure “anon” has something deep and thoughtful to say about this, too.

                2. No one is saying that anything said is not legit.

                  Limiting in a manner more than might be desired can still and all be every bit as legit – but not wanted on the record.

                  There is a reason why business is conducted in writing.

                  There is a difference between writing something out and speaking on the fly (you yourself allude to such, znutar).

                  But don’t get confused by those that don’t understand that negotiation is very much in play when you call an examiner. If you don’t know that, you are doing something wrong.

  3. 6

    I think the better research inquiry is how administrative judges who lack lifetime tenure and guaranteed salary and who answer directly to the legislative and executive branches of government may review – and potentially invalidate – issued patents for intellectual property with impartiality.

    Thoughts?

    1. 6.1

      Have you ever heard of a PTO APJ getting fired, or having their salary reduced? [I never have.]
      Furthermore, if a PTO Director wants to personally weigh in on any PTAB case, the Director can, by statute, simply join in, in an Expanded Board proceeding. That very rarely occurs, and are on novel questions of law.

      Have you seen a big pro-patent drive from the Sup. Ct., which does have live tenure, salary protection and appointees from both political parties?
      Sure, APJs would probably like to have life tenure, but what difference would that really make in their decisions? Patent owners are not doing very well percentage-wise in final decisions from D.C. trials lately either.

      1. 6.1.1

        Whether it has or has not happened has nothing to do with whether it *can* happen.

        And as long as it *can* happen, true impartiality will always be an illusion.

    2. 6.2

      anony, if one “really” wanted complete and reliable impartiality, one would put IPRs into the courts. We know that some of the trade or claims courts have, over time, been Article III courts. Specialty courts help guarantee impartiality.

      I proposed, in a post over at IPW, post 22, link to ipwatchdog.com, the institution decision be made by a court, and the final decision be subject to de novo review before it becomes a final judgment. The bulk of the proceeding can still be conducted by a panel of experts; but the control of the courts would help eliminate bias. It would also address the standing issue that allows speculators to drop stock prices by filing IPRs.

      1. 6.2.1

        Ned – my thoughts: if patent validity becomes a private right (which is what it is), there are two possible outcomes:

        1. PTAB remains Article I and its orders become advisory requiring de novo Dist Ct review, or

        2. PTAB judges become Article III, and the applicable legal standards are harmonized.

        Option 2 seems preferable. The flagrant and embarrassing separation of powers gaffe is addressed, and the Lemley cabal gets its expert patent court.

        More importantly (or perhaps most importantly), the influence of the corrupt executive and legislative branches is removed from validity determinations.

        1. 6.2.1.1

          Law and/or equity remains the “core” test that controls the public rights determination, making the forthcoming laches opinion intriguing to say to the least.

          1. 6.2.1.1.1

            Mike, connect the dots here. How does the laches case affect the decision in MCM Portfolio LLC?

            1. 6.2.1.1.1.1

              It’s not directly relevant, but the potential forthcoming discussion of law and equity could be interesting from the standpoint of a public rights analysis.

              Any future challenger will still have to deal with the BIG problem identified by Thomas and Alito in FN2 of the Teva v Sandoz dissent – that is, at least some members of the Court view patents for IP not as core private rights but as “franchises” or “privileges.”

              The problem with this analysis is that the “franchise” distinction is pulled from English law – it doesn’t exist in US public rights jurisprudence. In US law, it’s either a public right or a private right – franchise is not a third option – and if it’s a public right, then it isn’t a property right.

              For now, the whole thing is sort of strapped together with constitutional duct tape.

              1. 6.2.1.1.1.1.1

                and if it’s a public right, then it isn’t a property right.

                And that is one possible additional reason why those of us who understand the foundations of patent law remain adamant that patents are personal property rights.

                Such goes along with the journalistic award winning article as featured on PatentDocs earlier this year concerning the US set up of the patent right as a fully alienable property.

                1. Anon – on this point, I think there is now brewing a highly important law review article topic after the Cooper and MCM denials. Specifically, the CAFC has now thrice held that “patents are public rights;” how does this notion comport with some of the Court’s prior statements that patents for IP are property rights, or private property rights? The Court itself held in Stern and other PR cases that wholly private property disputes are not at all implicated by the public rights doctrine. But if patents are public rights, what does all of this mean? Are the concepts reconcilable? Are they mutually exclusive? If a patent for IP is a public right, what exactly is it?

                  I believe that it’d make a great article for the right lawyer, with future Art III challenges inevitably making their way up once the 9th Justice is finally seated.

                  Needless to say, I am not that lawyer. On this issue, I have already paid my debt to society. :)

                  link to scholarship.law.unc.edu

                2. I first “scratched the surface” of the issue here:

                  link to law360.com

                  Interdigital / Tessera also addressed the question in section III of their MCM amicus brief:

                  link to scotusblog.com

                  In my view, both are “starter” pieces. A well-researched and comprehensive law review article running this potential contradiction (paradox?) down to completion would be both fascinating and helpful.

                  Whether or not someone actually wants to spend the time doing something like that is a different matter.

                3. Well, Mike, the grant of exclusive rights for a fixed term is a vested right, the property the grantee. The validity of the grant is a matter for the courts.

                  [I]f he has been appointed, the law continues him in office for five years, and he is entitled to the possession of those evidences of office, which, being completed, became his property.

                  The question whether a right has vested or not, is, in its nature, judicial, and must be tried by the judicial authority. If, for example, Mr. Marbury had taken the oaths of a magistrate, and proceeded to act as one; in consequence of which a suit had been instituted against him, in which his defence had depended on his being a magistrate, the validity of his appointment must have been determined by judicial authority.

                  Marbury v. Madison, 5 U.S. (1 Cranch) 137, 154, 166 (1803).

                  As was noted in a long series of cases, the Supreme Court repeatedly held that a patent issuing authority had no power to revoke a patent for mistake, this being the exclusive province of the courts. But, both Newman and Dyk thought it “strange” that Congress could not authorize Congress to correct mistakes, dismissing this whole like of authority as if it did not exist.

        2. 6.2.1.2

          anony, your 2 is vastly preferable.

          Also, I want a court of law between the petitioner and the IPR. Standing issues can be resolved at this point.

          1. 6.2.1.2.1

            Ned,

            What standing issues? In the AIA, Congress took the deliberate step of removing standing.

            How then can you re-import it?

            Unless of course, you have some (as yet unspoken) argument against the ability of Congress to impact (personal property rights of?) patents with the no-standing-required aspect.

            Can you flesh out your thoughts a little?

            Thanks

  4. 5

    How does the examiner fill the role of both judge and partial voice-of-opposition in this situation?

    They don’t. There have been numerous studies which “confirm” confirmation bias (see what I did there?). If you tell an Examiner that part of their job is to find allowable subject matter, and they pick something out and then go searching for it, they’re not going to find it, because there’s a natural inclination to confirm their original hypothesis.

    An Examiner shouldn’t suggest subject matter in the 103 context. They should be able to see proposed amendments in an interview and decide whether the currently cited prior art reads on it. They should see actual amendments and search them. Beyond that, they shouldn’t be told to compact prosecution by finding allowable subject matter.

    Beyond that, there’s the conflict I’ve stated before – when you premise uncompensated work upon the admission of an error, you won’t get people admitting errors. I don’t think there’s much problem in the initial rejection – the Examiner is doing their best to call balls and strikes to the best of their ability, which is all the quality you can hope for with a non-legal examining core. There are a few Examiners who may intentionally screw the public based on time (i.e. “I know/suspect I could reject this but I have to make production this biweek”) but that is rare. If the Examiner errs or fails to consider something important, however, the advocate/judicial bias kicks in and that Examiner isn’t going to change their mind if it means they have to do work they won’t get paid for.

    I’d caution the people on this board to not assume that an Examiner not agreeing with you means they’re refusing to admit their error, however. Judgment calls are judgment calls and they’re committed to us. A good example of this is Alice nowadays. Theres only a handful of Alice cases. You’re not doing anything new by citing DDR or Enfish the upteenth time. The Examiner has considered those cases and made the rejection anyway. If you’re making an Alice argument that’s substantive instead of procedural don’t expect to persuade, expect to be appealing or changing your scope. It’s possible an Examiner made a clerical mistake in a 103 and doesn’t want to do a second non-final, it’s unlikely an Examiner doesn’t know Aristocrat when they made their 112b in view of f rejection. You shouldn’t expect to sway anyone on the latter. Don’t expect persuasion on 112b in general. Don’t expect any kind of success on motivation to combine at all. It’s way more likely that an examiner actually screwed up mapping every 500th limitation we examine under 103 or doesn’t know some obscure facet of an uncommon rejection than it is we’re intentionally not withdrawing improper 101/112s just to be jerks.

    1. 5.1

      I should say, btw, that when an Examiner screws the public by not making a rejection that one of perfect knowledge and faculties would make, they don’t think of it that way, or may not even know they are screwing the public. There’s a lot of factors that go into deciding when a search is good enough or when non-obviousness has been reached, which makes it easier for improper outside influences to seep in.

      When an Examiner screws the inventor, they know they’re screwing the inventor. They know they’re stretching or maintaining a rejection they probably shouldn’t and they have a particular motivation for doing it. That’s why the latter are far less common, and far less visible, than the former.

    2. 5.2

      “find allowable subject matter, and they pick something out and then go searching for it, they’re not going to find it, because there’s a natural inclination to confirm their original hypothesis.”

      Mmmm, not necessarily true. I think you need to run an actual experiment on that particular instance of “confirmation bias” taking place. I suggest many possible amendments to myself as I’m doing examinations (usually one main one per case because it sticks out like a sore thumb, but sometimes a few per case). What I think about suggesting as an amendment doesn’t determine what I see in my flip flip flip east search. Nor does it usually affect my scope of search that is needed all that much since subgroups don’t magically grow or shrink based on my whims. And neither does it control what art I find that is even remotely relevant to the topic of the application in google etc. And that is true in the vast majority of cases.

      Plus, in some subsets of cases I’m fairly an expert and can tell you right up front what is a bizarre not often seen feature and I can also often tell them how to claim that feature narrowly enough to prevent claim construction shinanigans because a. I’m mazin’ and/or b. I know which ways we’ve suggested or seen other people word similar limitations and get them allowed without having claim construction issues bog them down.

    3. 5.3

      “An Examiner shouldn’t suggest subject matter in the 103 context. They should be able to see proposed amendments in an interview and decide whether the currently cited prior art reads on it. They should see actual amendments and search them. Beyond that, they shouldn’t be told to compact prosecution by finding allowable subject matter.”

      I’m going to disagree there chief. The whole point to patent examinatin’ (supposedly) is to determine what is allowable in the application (if anything) vs what isn’t. The fact that we “fall back” on the “crutch” of using just the claims to go by to try to fit bureaucratic schedules doesn’t really affect that. Further, not making compact pros about specifically that leads to outlandish amounts of waste for the whole office (that is a base fact).

      Further, your hypothesizing about examiner’s “confirmation bias” (which I presume you came up with because of your personal experience of people not finding the limitations they suggest) I will suggest is rather mostly them picking out something bizarre in the application which they are using their experience to have determined. Or something which they know, based on previous searches or the instant search, is unlikely to have anyone saying anything about previously in the art, or at least not having someone say something about it in a context that would be available to make a 103 rejection with that ref in which they said it.

    4. 5.4

      “Beyond that, there’s the conflict I’ve stated before – when you premise uncompensated work upon the admission of an error, you won’t get people admitting errors.”

      I somewhat agree there but I don’t think that’s too much of an issue, I routinely get people to “admit” to “errors”. All you have to do is hold their hand through the decision making process.

      “I don’t think there’s much problem in the initial rejection – the Examiner is doing their best to call balls and strikes to the best of their ability, which is all the quality you can hope for with a non-legal examining core. There are a few Examiners who may intentionally screw the public based on time (i.e. “I know/suspect I could reject this but I have to make production this biweek”) but that is rare. ”

      That I would say is definitely correct, at least in the parts of the office I’m familiar with.

      “If the Examiner errs or fails to consider something important, however, the advocate/judicial bias kicks in ”

      Idk man in my experience it is that you just noted (a cognitive bias) more that than having to do additional work. Which is why you have to go around that by holding their hand through the decision making process. That’s double important because if you show them the decision making process then they can learn from it and the “temporary” extra work they did because of the “error” isn’t that big of a deal. If you make the situation such that they still don’t understand what was done “wrong” (let’s presume it actually was wrong) in the decision making process then they’ll of course fight tooth and nail.

      However, that being said I’m not sure that it is judicial/advocate bias in so far as it is a cognitive bias that they have towards their own personal decision making process that they think in their minds they’ve been taught (either in training or by a spe/primary/fellow in the past) or, much more rarely, came up with on their own by analyzing “the law” themselves. This again leaves open the possibility for you to “go around” their bias by simply teaching them the correct decision making process, and being prepared to tell them specifically why each stage in the decision making process is what it is etc (teaching them). It is also important that you don’t “trigger” their bias by outright telling them that it is an “error” right at the get go. Instead, I suggest going with expressing skepticism, and not being overly harsh, just a general sense of skepticism. That then lets them know that there is perhaps something that is a difference of opinion but at least gets them interested in chasing down what it is, but somewhat leaves them open to learning.

      Jumping in to “its an error” is a very brash maneuver which attorneys try on a daily basis and which predictably fails a gigantic percent of the time. It’s the same internally.

    5. 5.5

      “I’d caution the people on this board to not assume that an Examiner not agreeing with you means they’re refusing to admit their error, however. ”

      That I will certainly agree with.

  5. 4

    ” How does the examiner fill the role of both judge and partial voice-of-opposition in this situation?”

    All too aggressively and hastily.

  6. 3

    There is no question that the average IPR or CBM PTAB APR decision is much more thoroughly written than the average ex parte PTAB decision, much less the average examiner action. Two good reasons are that the odds of appeal to the Fed. Cir. are far higher, and that most ex parte PTAB decisions other that from reexaminations are not really final – continuations or divisionals can be filed.

    1. 3.1

      One reason other than intellect – time.

      Examiner – 15-20 hours from start to finish to read, understand, search, examine, and write rejections/allowance.
      Ex parte – 20 hours to read appeal briefs and determine whether appellant has demonstrated reversible error.
      IPR – 80 hours to determine whether to institute, another 100 hours to final written decision if instituted.

      Can you guess why the PTAB does better?

        1. 3.1.1.1

          Note that my hours listed are not exact, but my rough estimates based on info from mostly reliable examiner friends.

      1. 3.1.2

        Indeed, extra APJ time is a factor, but the huge difference in time and money spent by petitioners digging up better prior art and clearly presenting it is the main reason for the difference in RESULTS between the prosecution of claims in applications and their outcomes in IPRs. [Too many patent attorneys keep looking for some other explanation that they think would make a big difference.]

        1. 3.1.2.1

          Paul,

          Albeit not a fully thought out concept, but do you think that outsourcing and privitizing examination should be put on the table for consideration?

          1. 3.1.2.1.1

            To whom would it be outsourced? Any private company would end up hiring most of the current examiners because they are already trained (and training a new bunch of examiners would be a huge cost). So you would end up with the same people doing the work. Those people do what their bosses want. If you want to change the work product, change the bosses or the bosses’ perspective.

            And if you mean outsourced out of the country, there are national security concerns. Admittedly very few patents invoke any national security concerns, but there are some legitimate concerns.

            1. 3.1.2.1.1.1

              Do you really think that the point offered by Paul (MUCH better third party prior art and arguments) are down by examiners on the side?

              No surrog, Paul is pointing to better and more thorough work by other than examiners in the here and now (and not outside of the states at that).

              1. 3.1.2.1.1.1.1

                Paul also acknowledged the additional resources of that more thorough work. Are you looking forward to your clients having to reach that much deeper in their pockets?

                With regards to privatization, I think temporary contracts for operations management of USPTO resources (in the way many of our national labs are run) could be benefitial if used to experiment with examination management. But more likely than not, it would just add another layer of metric chasing.

              2. 3.1.2.1.1.1.2

                Please focus on the two important words – time and money – mentioned by Paul. Give examiners or the office more time and money, and examination will improve.

                1. You get what you measure.

                  I am not sure that focusing on inputs of time and money would have the desired effect in the Office system.

                2. I’m sure there are few governments that would be very happy to pay you a lot of money for the secret to EPO search results from USPTO examining time.

  7. 2

    In my experience of opposition proceedings at the EPO one finds that if the opponent withdraws and the opposition division decides to continue with the case then the opposition division of the EPO can be a very effective ‘opponent’. So in this situation EPO opposition divisions can sometimes fail to maintain the balance between being the judge and opposition. However this is a rare occurrence.

    1. 2.1

      Perhaps because of its “Germanic” environment, the EPO thinks it has a duty to the public to restrain the issuance of palpably bad claims. In opposition at the EPO, post-patent issue, it is common for the patent owner to “buy off” the irksome opponent, give him a free licence in return for positively withdrawing the opposition. The EPO has realised this and sees no reason, upon the occurrence of such a situation, to uphold the manifestly invalid claim. Positive withdrawal by an Opponent becomes just one more reason to be sceptical of validity.

      These days, patent owners are a bit more cute. Opponent no longer withdraws, just stops arguing with penetration.

    1. 1.1

      I think that examining involves difficult mental gymnastics to be both an objective judge and also an advocate against. There is no direct conflict of interest (assuming that the examiner gets paid either way), but there certainly need to be structures in place to help examiners maintain the proper balance instead of choosing a side.

      1. 1.1.1

        At the EPO, the task of the Office is to grant patents but in pursuance of that task each individual Examiner is tasked with making sure that each application is not allowed until it is found to “comply” with each and every patentability provision laid down in the Statute and, by implication, until that is the position, to object.

        Examiners who are exposed by opposition procedures, and found out to have allowed unpatentable stuff through to issue fall foul of the EPO’s management quality procedures and don’t get promoted.

        How is the Examiner under any “conflict”? Where does is regime place Examiners under any “conflict”. In what way is the system deficient? I don’t get it.

        1. 1.1.1.1

          I would slightly disagree with your assumption that ‘patentablility’ is a yes/no thing. There are often arguments for and against, and the Examiner has to formulate the ‘against’ arguments and then also judge whether the applicant has succeeded in responding to them adequately. If the Examiner becomes unduly combative they lose objectivity and the applicant suffers. So there is a ‘conflict’ of sorts where the Examiner must play two roles at once.

      2. 1.1.2

        Being a former Examiner, it’s not actually that hard to maintain objectivity. While it is true that many Examiners appear to be incapable of keeping dual goals of protecting the public domain from encroachment and granting applicants patent they are entitled by law to have, doing so is simply a matter of learning the prior art, and then calling balls and strikes.

        1. 1.1.2.2

          How does that work if the person you are judging (as the one writing up the opposition) is you?

          As we have seen here in the states, the (self)-judging has been at record “high” levels (including unearned bonuses), while the actual work product has been anything but high quality.

          Further (and unfortunately as reflected in many of the examiner comments on this blog), examiners are applying the law [calling balls and strikes] while having seriously deficient understanding of the law.

          Further still, Mr. Quinn had a serious of articles a few months back that exposed how certain art units simply have a “no grants allowed” frame of mind.

          Conflicts?

          Most definitely.

      3. 1.1.3

        Dennis I don’t think we can evaluate examiner behavior apart from the institutional and small-group norms that are in place. Any bureaucracy tends to adopt, over time and in myriad ways, the outlook of it’s current leadership- formal and informal.

        If the leaders want more patents, the advocacy against will be diminished in a thousand small cuts. If the leaders want fewer patents, it’s likely that better patents come out the other side.

        Beyond those powerful norms, the rules of the patent game are very formalized, so even small ambiguity can result in large variations in outcome.

        So long as knowledge leads to willfulness to enhanced damages, and showing interest in a particular prosecution identifies you as a future litigation target, any industry involvement pre-grant activity is going to be problematic.

        I wonder if the PaaS program is going to be a future source of willfulness findings?

        Maybe what we really need is compulsive, reasonable, disclosed, pre-litigation licensing for accused infringers where willfulness is not in question where the patentee intends non-exclusive licensing rather than injunctions against other infringers.

        Put some teeth into bad faith in pre-filing negotiation and it could change the alignment of incentives. A patent which is economically valuable with many licensees may be a different animal than one valuable intrinsically as an exclusionary right, esp. in a complex multi-component economy, and our laws don’t really reflect that key distinction.

        1. 1.1.3.1

          If the leaders want fewer patents, it’s likely that better patents come out the other side.

          There is zero validation for that “logic.”

          The answer is simply more direct: Examiners, do your Fn job. No rubber stamping of either “Reject Reject Reject” OR “Accept Accept Accept.”

          1. 1.1.3.1.1

            Zero validation if you never worked anywhere. Your mom’s basement staff meetings are probably a little dry.

            If you have, you would know that almost everyone wants to do a good job, and given more time and less stress, will almost always do so.

            1. 1.1.3.1.1.1

              LOL – it looks like you need a dose of real life to wipe off that gloss of Polly Anna when it comes to workforce habits and motivations.

      4. 1.1.4

        Dennis,

        Through the prism of deal making (currently in vogue), before publication, the deal was the applicant would disclose the invention in return for a limited monopoly. The examiner, as agent for the public had to decide if the deal was worth it. E.g., if the invention is already in the public domain or nearly so, it isn’t.

        Now, 90+% of applications are published so the applicant has little to offer except the too nebulous possibility the invention will be commercialized. Another attenuated benefit is that allowance will encourage third parties to innovate. This is a bit much for an examiner to calculate, so they are making decisions based on what is fair, for lack of a better word. My sense is that the EPO does a pretty good job of this, but the PTO less so.

        1. 1.1.4.1

          The examiner, as agent for the public had to decide if the deal was worth it.

          Not sure that that is a great way of looking at it – unless of course “worth it” is properly calibrated to meeting the legal requirements as set forth by Congress.

          1. 1.1.4.1.1

            Anon,

            “Worth it” in the sense of Article I, Section 8, Clause 8, “promote the useful arts.” Presumably, the legal requirements do that.

            1. 1.1.4.1.1.1

              You are looking at the delegation of authority to write patent law (not the patent law itself).

        2. 1.1.4.2

          Expressly, any sense of “will be commercialized” is expressly not a part of the equation or job of the examiner.

          1. 1.1.4.2.1

            Anon,

            Beg to differ. Commercial success is one of the Graham Factors that examiners must consider (if only to reject) when presented to rebut a prima facie case.

            Prospectively, applicants often make a case for long felt need in the Background because it is another Graham Factor.

            You are right about one thing though. The Bayh-Dole Act was designed to promote commercialization of Government sponsored R&D, but the resulting patent applications do not get any special treatment.

            1. 1.1.4.2.1.1

              Beg all that you want – does not impart any sense of “will be commercialized” into the US jurisprudence.

              Ever hear of the concept of a “negative right”…?

              Further – and straight up – if I have a patent I can sit on it and prevent any and all from practicing what I have the patent for.

              That’s part of the basic Quid Pro Quo, by the way.

            2. 1.1.4.2.1.2

              Upon re-reading, I do see your point where “has commercialized” can impact the calculas – but wish to clarify our discussion as one of such “commercialization” being any sense of a universal positive requirement (which it is not). There is an old Supreme Court case (1908 paper bag case, iirc) that discusses this.

      5. 1.1.5

        “I think that examining involves difficult mental gymnastics to be both an objective judge and also an advocate against.”

        Objectivity is a skill. It can be taught. And it can be learned. Unfortunately, it is neither taught nor learned at the PTO. What examiners are taught is, “Here’s how to reject.” That’s it.

        1. 1.1.5.1

          As an Examiner, I agree: or training is heavily tilted toward rejecting applications. When I stayed, training comprised a lengthy classroom-style learning environment centered on how to write a proper 102/103. Of the almost-a-year, we had maybe five lectures about allowance. Prior to staying the sig program, I’d written up maybe 15 allowances, so I had to talk to lots of more experienced folks about how to write a good Reasons for Allowance.

          They always say in training that “we’re the Patent Office, not the Rejection Office,” but they don’t really teach you how too slow things that are adorable.

          1. 1.1.6.1.1

            Well he’s probably talking about the “free work” examiners have to do to “make up the production” lost if prosecution isn’t done just so. Which I actually think should likely be abolished, and replaced with some sort of low-level discipline after your first few years.

      6. 1.1.7

        The idea of “advocate against” is an unnecessary blight.

        The examiner is not “against” the inventor, and should not be “against” granting patents.

        The Examiner is to examine to the words of Congress set before him.

        Yes, that can be a challenging job.

        But putting on false airs of somehow “protecting the people” only leads to the malice that so often accompanies governmental workers who carry the false premise that they have power over people (and this is evident throughout more than just the patent office – far, far more).

          1. 1.1.7.1.1

            No parade of horribles, 6 – just look at all of the typical overblown and false “of paramount concern” and “protect the public” when what the actual job of US examiners is IS to examine to the law – and that’s it.

            Need I remind you that the US law has that “entitled to unless” phrase? ;-)

          2. 1.1.7.1.2

            “just look at all of the typical overblown and false “of paramount concern” and “protect the public” when what the actual job of US examiners is IS to examine to the law – and that’s it.”

            On the one hand I agree with you anon, but on the other hand, the executive branch (aka the people making the proclamations you are stating) actually does have a say in just how the examining to the law is carried out. This is because have a 3 branch gubmit, each branch responsible for their own activities, and having power, yes, irl power, over them. This happens in every area of the lawl. Just as an example, congress made title 9, then the executive branch “widened it” to the new fangled concept of gender, literally completely on their own.

            1. 1.1.7.1.2.1

              The Executive is to execute – not decide what the law IS.

              Sorry 6, but that authority just is not there for examiners.

              1. 1.1.7.1.2.1.1

                (and I will remind you of the Constitutional allocation along with Tafas, (which remains good law).

              2. 1.1.7.1.2.1.2

                Well anon I’m sorry that you don’t yet comprehend that the executive usually gets first crack at “interpretating” upon most lawls they’re tasked with implementing. But I can’t make you comprehend it anymore than I already have. The fact is that throughout history 103 has varied quite wildly. It is only recently it has settled down a bit near what it actually is (after the last settling down on something that wasn’t even the lawl). And most of the advocating “for the public” was come up with way in the past, the social inclinations (culture) in an agency doesn’t change overnight just because some random person wants it to. Even if that random person has a nice title behind their name.

                1. Your putting the word interpreting in quotes rather proves my point, 6.

                  When you stretch the word into what has been done through abuse of that particular branch’s authority, that is when you have legal error.

                  (I am not the one lacking the comprehending – I understand full well how you want to believe that the executive branch has more authority than it actually does)

                2. “When you stretch the word into what has been done through abuse of that particular branch’s authority, that is when you have legal error.”

                  Yes well anon people with power disagree with you.

                  #power

                  “(I am not the one lacking the comprehending – I understand full well how you want to believe that the executive branch has more authority than it actually does)”

                  I’m not saying that they necessarily do have more authority than it “actually does”. I’m saying that it quite often thinks that it does (as a whole not just obama/trump), and that it has POWER, thus those thoughts in their mind brains manifests in them actually irl ending up with that authority regardless of that authority’s legitimacy, and further, in real life, the only thing that stops this from happening is the other 2 branches actively restraining it. Otherwise they “get away with it”. And “getting away with it” is just another facet of “power”.

                  You keep thinking that I think that this “additional” authority that I note that the executive has is “legitimate”. But I’m not necessarily saying that it is legit. I’m saying that it exists, in the real world, over and over, and keeps happening over and over, and you may as well get used to it in our system of gov because the checks and balances that stop it are slow and don’t always end up kicking in. You can sit and scream at your stomach “but but but it’s not legitimate!” ala naval gazing style but that doesn’t change squat irl because you do not have #power.

                3. 6,

                  Your view devolves into a pure “might makes right” view.

                  Such is just not a discussion of law.

                  “Can” or even “has” is not a part of the discussion – and yes, legitimacy very much is a part of the discussion.

                4. “Your view devolves into a pure “might makes right” view.”

                  Not at all, might making right refers to physical might making right. This is literally “thought/ administrative/executive action might” making “reality/right until it is corrected” and it is very much so a feature of the legal system we have in place, or the government as a whole.

                  It’s different brah.

                  ““Can” or even “has” is not a part of the discussion – and yes, legitimacy very much is a part of the discussion.”

                  A. Not sure what “can” or “has” you’re referring to, but here’s a spoiler alert, all of the elected reps have 1000% more legitimacy than you do, with the prez having the most.

                  B. Yes, you keep trying to sneak legitimacy in without discussing it explicitly when it’s the basis for your constant complaints. It would make it easier to discuss your complaints if you’re explicit about legitimacy being your issue.

                  Anyway, in this particular instance it is very much legitimate for the office/executive to determine where they want to draw the line on obviousness in so far as it falls in certain boundaries of legalities, and there is plenty of grey for them to work with.

Comments are closed.