Welcome Wilbur Ross – Secretary of Commerce

Mr. Wilbur Ross is now Secretary of Commerce and I expect that we will likely begin to receive further information from the PTO as to its current and future management structure.

Meanwhile, Michelle Lee appears to still be leading the PTO and again signed this week’s patents.  A somewhat odd and steady steady drumbeat from several sources has been demanding Michelle Lee’s resignation or removal.  Lee has acted in pro-patent-applicant ways in several respects. Notably, she has issued more patents per year than any other USPTO director in history; acted to limit the much of the impact of the Supreme Court’s Alice/Mayo on patents being prosecuted (except in the business method area); and has substantially reduced patent application pendency.  The calls for her removal, however, appear to be coming from the PTO’s new role as arbiter of patent disputes at the Patent Trial and Appeal Board.  Still, during her tenure, the PTAB has been somewhat tamed as compared to its initial cancellation pace under Director Kappos.  The problem largely seems to be that Lee has not been an outspoken advocate of patents-as-property.

This political setup is interesting and somewhat troubling — because of their high-value, patent trial participants have begun to exert substantial political influence on the USPTO in ways that may not align with the goals and desires of ex parte patent applicants.   More to explore on that front.

 

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

91 thoughts on “Welcome Wilbur Ross – Secretary of Commerce

    1. “That is an important admission as it reflects on both Trump and his so-called “shadow president,” Steve Bannon. As we’ve already noted, in his speech at CPAC, Bannon suggested that one of his main goals was the deconstruction of the administrative state. Leaving important policy positions open is step one in that process.”

      He’s right of course. I never understood why there is a director/undersec at all. We did just fine with a commissioner. Was it just to put a political appointee in place that made congress make the position?

      “Of course, that also leads to the kind of incompetence and chaos that we’ve already witnessed from this White House. But for Bannon, that is more likely a feature than a bug.””

      I haven’t noticed too terribly that much “incompetence”. Maybe a small bit with the roll out of the its-not-a-muslim-ban. But they’re right that the small amount of “chaos” is likely a feature.

  1. Because there is the usual hand-waving and blubbering below about the level of “patent quality” that applicants are “entitled to” based upon their payment of fees, let’s set the record straight:

    (1) If you want to a patent that is resistant to IPRs, you hire a competent patent attorney (i.e., not some sunshine blower armed with vapid nonsense about how filing on a Friday gives you a 2.3% greater chance of allowance), you do a thorough prior art search, you draft realistic claims with the terms plainly defined, and you include in your specification data that can support a finding of non-obviousness. If you do anything other than this, you are very likely to get what you deserve: a worthless piece of paper that will be IPR’d in two seconds.

    (2) Everything I wrote above applies ten times more to “do logic on a computer” patents. There is precisely zero chance of getting a “do logic on a computer” patent out of the PTO that isn’t highly susceptible to being decimated by a competent attorney on the other side if those steps I outlined aren’t taken. That is because the USPTO (in lockstep with the rest of the system) has no coherent mechanism in place to examine “new logic” in view of prior art logic. If the Professional Patent Bar Whiners Club wants to change that, they’re about twenty five years too late but, hey, get started today and maybe in ten years things will have changed. Absent a major and massive systematic upgrade, however, things are just going to get worse for you guys.

    And, yes, this was all explained to you before, years ago. And it’ll be explained to you again, trust me on that.

    1. Near as I can tell this post below (reprinted here for convenience) is what Malcolm is (falsely) referring to as “ usual hand-waving and blubbering below about the level of “patent quality” that applicants are “entitled to” based upon their payment of fees“:

      That last paragraph – to the extent that it is untrue – is also the extent to which the Office is NOT doing its Fn job right the first time through.

      This line of thought that Greg and you engage in is deceptively simple, but runs into the immediate problem that what is paid for IS a patent right that is valid.

      Whether or not this is “enough” is a false supposition. It IS the agreed upon price to achieve the agreed upon result.

      If you want to change that, then speak to Congress or the Director or both, but until then, the status quo ante IS that the price asked for is for the result of a valid and full examination.

      I don’t want to hear excuses or whining otherwise – the role of the examiner may be difficult, but that problem is not to be made my (or my clients’) problem.

      CLEARLY – Malcolm’s attempt to “set the record straight” is merely obfuscation on his part, as my post is already perfectly in line with the record being set straight.

      He really cannot get over the fact that those like me that believe in the work product of patents and want string patents really do want the Office to focus on what the Office is supposed to do in order to have a quality product. He simply cannot admit this fact, and repeats his Big L I E as if people like me have been making opposite statements than the ones we have been making for years.

      Further, he seeks to blame the applicants for any Office “not doing their job” on what he (badly and repeatedly incorrectly) calls ‘logic patents.’ He of course doubles down on this obfuscation and scape goating with mindless ad hominim, as if his own whining actually means anything other than his well worn FEELINGS, and conflates his stated position of “software is PE SE ineligible” in a One Bucket maneuver of somehow ALL software patents are p00rly written.

      And then, as typically way-too-self-absorbed, Malcolm thinks that his blight is somehow a good or necessary thing and proudly boasts: “this was all explained to you before, years ago. And it’ll be explained to you again, trust me on that.” as if his ad hominem expression of feelings is somehow a definitive explication of legal principles (or ANY explanation in an inte11ectually honest meaning of that term) of why the current law as written by Congress supports his particular anti-patent views.

      11 years of this type of nigh constant spin….
      Zero accountability for what this propaganda of Malcolm’s actually is.

      1. . This line of thought that Greg and you engage in is deceptively simple, but runs into the immediate problem that what is paid for IS a patent right that is valid.

        Whether or not this is “enough” is a false supposition. It IS the agreed upon price to achieve the agreed upon result.

        If you want to change that, then speak to Congress or the Director or both, but until then, the status quo ante IS that the price asked for is for the result of a valid and full examination.

        What is the basis for your claim regarding what the agreement IS? The line of thought is only a problem if your premise is correct. However, your premise is clearly in dispute, so can you please explain. 35 U.S.C. 131 is non-specific as to the quality of the examination, and I don’t think that the presumption of validity inevitably leads to this conclusion. Is there some other statute that promises a valid and full examination? Given that Congress has passed laws allowing issued patents to be invalidated, it presumably anticipated that invalid patents would slip through. In any case, even if valid and full examination is part of the bargain, it doesn’t resolve how to handle a breach by the PTO.

        I don’t want to hear excuses or whining otherwise – the role of the examiner may be difficult, but that problem is not to be made my (or my clients’) problem.

        In the real world, there will always be instances of poor examination, which is going to be someone’s problem. Either the public will be burdened by patent rights that shouldn’t exist, or the value of patent rights will be burdened by the risk of revocation. Under current law, patent rights can be invalidated and the likelihood of being invalidated increases as examination quality goes down (as determined after the fact). Therefore, poor examination quality is clearly an applicant’s problem. Even if they shouldn’t have to, applicants can take steps to improve examination quality to ameliorate this problem. This seems more like a recognition of reality-not assignment of blame.

        He really cannot get over the fact that those like me that believe in the work product of patents and want string patents really do want the Office to focus on what the Office is supposed to do in order to have a quality product. He simply cannot admit this fact, and repeats his Big L I E as if people like me have been making opposite statements than the ones we have been making for years.

        I don’t see how disagreeing with people like you is a “Big L I E”. This seems like a political disagreement regarding how to improve patent quality in the face of potentially poor examination quality. Some people such as yourself believe that the Office should improve examination quality, which would improve patent quality. Other people like Malcolm apparently believe that Applicants should change their own behavior to improve patent quality.

        1. Congress did not have to pass any law to invalidate patents. Since Blonder-Tongue, any court judgment finding a claim invalid was binding in further litigation concerning the patent.

          Back in England, though, only a revocation action thru the writ scire facias could invalidate a patent. Our statutes provided for a similar procedure that the Supreme Court identify as an codification of the writ.

          But, since Blonder-Tongue, such a procedure was and is completely unnecessary.

          1. …and you quite misunderstand what I am referring to as the Big L I E – that would be Malcolm’s continual attempts to portray people like me who want strong patents to somehow also want weak examination.

            That just ain’t so.

  2. DC: A somewhat odd and steady steady drumbeat from several sources has been demanding Michelle Lee’s resignation or removal. Lee has acted in pro-patent-applicant ways in several respects.

    Be careful about telling the truth, Dennis!

    Next thing you know you’ll be accused of having an affair with Michelle Lee, with your secret meetings paid for by Google. Or something like that.

    1. Love the implication there on “secret meetings” as if such never happened between Google and the Office.

      Delightful, even if miserably ineffective “hide in plain sight” tactic.

      Who writes your script, Malcolm?

      1. Love the implication there on “secret meetings” as if such never happened

        What else did the tiny voices in your dental fillings tell you was “implied” by my comment? Please share with everyone. It’s Mardi Gras so let’s have some laughs.

        1. Who is this “you” that you are directing your comment towards, Malcolm?

          I’m pretty sure that I have said similar things as far as best practices go, just as I have correctly distinguished what a best practice may be from what is actually required under the law.

          Maybe you should pay more attention before you step up to you podium and give a lecture in your self-anointed role as watcher over the fields of rye…

          1. I have correctly distinguished what a best practice may be from what is actually required under the law

            LOL

            You have also advocated using a mail room employee to screen registered letters so that the attorney can avoid becoming aware of prior art.

            Don’t worry, “anon”: we all know exactly what your idea of “best practices” looks like.

            Just grab the cash and run before the client realizes what happened. That’s lesson number one for Gene’s Kids.

            1. Again, what is your 0bsess10n with Gene?

              As well here, you spew ad hominem without actually making a point on the matter under discussion.

              Why do you do that? Do you really think that you f001 anyone?

    2. MM, I had heard through the grapevine some time ago that Michelle Lee was asked to stay on because she was going to switch sides and argue that patents are property. When I pointed this out at that other site, very few believed me, but most were so hostile to Michelle that the really did not care. They just wanted her gone.

      Perhaps the largest negative in her retention is the fact that Randy Rader has thrown his hat into the ring. Judge Rader is very popular to the “patents are property” crowd because of his denunciation of the PTAB in IPRs’s as “death squads”. I think Judge Rader would lead the fight to repeal IPRs, and partially overturn the AIA to at least restore a meaningful grace period and two and universal prior art.

      I would also hope that the effort to amend 101 stops. The problem with legislation is that it has unforeseen consequences and it has to be carefully considered before anything is done. The efforts to change the patent law in ’52 resulted in unforeseen changes in patent law that no one at the time had considered. The AIA change to first-to-file is going to cause similar damage in my opinion. That is why any effort to address any perceived lack of clarity out of the Supreme Court decisions has got to be stopped in its tracks if for no other reason that the effort is addressing the fundamental patent law of the United States of America that has been with us since 1793 and any mistakes can cause fundamental damage.

      1. The debate as to whether “patents are property” was over before it began. The answer is that patents are specially defined rights, granted by an administrative agency, with certain aspects of property glommed on to them. Congress defines the scope of the rights and the manner in which thay are procured and enforced, sometimes clearly sometimes less clearly.

        This idea that patents will somehow be “totally just property” if only a white knight can make a coherent argument is laughable. It’s an idea that only a fake “libertarian” could delude himself into believing in. Of course, the patent bar is crawling with those types (and, yes, the irony is noted).

        I would also hope that the effort to amend 101 stops.

        I can say with 100% certainty that the Underweiser/Sachs proposal isn’t going anywhere.

        1. Over before it started….

          So “sniffed” Malcolm and his feelings.

          As to the mumbojumbo of white knights and fake libertarians… nothing but mindless attempt at ad hominem that is quite out of place.

          Maybe do more than your usual hand waving, Malcolm…

        2. MM, you and I have had good debates in this issue and you raise strong points. However, given the wording of the Constitution that Congress is authorized to “secure” to inventors “exclusive rights” for “limited times” settles the issue in my opinion. Exclusive rights for limited times are in fact property rights.

          1. I can see where this is headed, so I would like to place a marker:

            35 U.S.C. § 261

            Subject to the provisions of this title, patents shall have the attributes of personal property.

            A couple points to note:

            (1) Congress did not say that patents are personal property. Congress said that patents have some of the attributes of personalty.

            (2) Not all the attributes, however. The nature of patents are “subject to the provisions of this title.” What provisions are those? Well, § 315, for one. In other words, the ability to be canceled in IPR is baked into the definition of patents’ “propertiness.”

            (3) Even before IPRs, the analogy between patents and property was never absurd, but neither was it ever perfect. If I own a chair, I own it. There is no such thing as a lawsuit where someone can prove that my chair is a copy of a pre-existing chair, at which point the chair vanishes in a poof of smoke. In other words, to think of patents in analogy to property is mostly useful, but it is unhelpful if one pushes the analogy too far.

            (4) Incidentally, it is kind of unhelpful that Congress drew the analogy to personalty, because in actual effect patents work more like deeds to real property.

            1. Greg, like recording?

              Seriously, in most newly created federal rights cases, it is the whether the right is vested in the grantee that is important for due process purposes, and if those rights are enforceable in court for damages, they have a right to a trial by jury because all such rights had a right to a trial by jury at common law.

              But, as we have discussed before, the common law had a direct legal action to revoke a patent for invalidity. The action scire facias was in the name of the King on the writ of an aggrieved party. It was filed on the common law side of Chancery, and the trial of disputed facts was before a jury with a common law judge presiding who then issued judgment on the verdict that was registered with the clerk of the petty bag. Jones, Introduction to Petty Bag Proceedings in the Reign of Elizabeth 1, 51 CALIF. L. REV. 882, 887 (1963).link to google.com

              Also, see, n.38 of Hazard, Geoffrey C., and Myron Moskovitz. “An Historical and Critical Analysis of Interpleader.” California Law Review (1964): 706-763.

              “[A]t least until the mid-eighteenth century, Chancery continued the practice of remanding contested issues of fact to the common law courts for trial to a jury, a practice that dated certainly from the time of Elizabeth and most probably back to the late
              medieval times. See Earl of Thanet v. Paterson, 3 Barn. 247, 252-54, 27 Eng. Rep. 632, 634 (1738), discussed at text accompanying note 41, infra. Cf. Jones, Introduction to Petty Bag
              Proceedings in the Reign of Elizabeth 1, 51 CALIF. L. REV. 882, 887 (1963). Nothing in the reports reveals a disturbance of this procedure until East India Co. v. Bazett, Jac. 91, 93, 37 Eng. Rep. 784, 785 (Ch. 1821), when Lord Eldon had occasion to say that the Chancellor was not bound to accept the jury’s verdict on a motion for a new trial: “There is this difference between a motion for a new trial in a court of law and in a court of equity. In a court of law, if the jury find the fact, although the judge may think differently, yet it is permitted to stand, for the finding the fact is the province of the jury; but here the verdict is something more than the verdict of the jury; it must be such as to satisfy the Court, that it can make that its own declaration of the fact, which the jury have made theirs.”

              The relevance of this practice, to say nothing of the interesting nuances of Eldon’s disquisition, seems not to have been appreciated in the determination of the proper scope
              of the right to jury trial under the sixth amendment to the Constitution. Cf. Beacon Theatres, Inc. v. Westover, 359 U.S. 500 (1959); Note, 47 CALF. L. REv. 760 (1959).”

              1. Reading the account of proceedings in the English Court of Chancery posted by Ned Heller above, I decided to do a web search. I had a recollection of reading, ad few years ago that, in equity proceedings, the Lord Chancellor would refer cases to common law courts for fact finding.

                Anyway, my web search brought me fairly directly to the following article:

                link to law.yale.edu

                Bibliographic details as follows:

                John H. Langbein. Fact-finding in the English Court of Chancery: A Rebuttal, HeinOnline — Yale L.J. 1620 1973-1974.

                Langbein sets out to prove that, with the exception of a restricted type of case where the Lord Chancellor did not have subject-matter jurisdiction, the Lord Chancellor in the 18th century could and did make findings of fact. The exceptional cases arose because, following a ruling of the House of Lords, Lord Eldon observed that “it was determined in Kerrich v. Bransby, that this Court could not take cognizance of wills of personal estate, as to matters of fraud”.

                Langbein was rebutting claims that the practice of deciding cases in Equity without fact-finding by a jury arose in the 19th century. Langbein gives several examples of 18th century cases where the Lord Chancellor had made findings of fact himself. He also claimed that cases to the contrary were cases to which Kerrich v. Bransby was applicable.

                Langbein observes that “the language of Chancery judges is insistent that they retained control of verdicts taken in aid of their jurisdiction, and in particular quotes the Master of the Rolls in Coker v. Farwell (1729) to that effect.

                The penultimate paragraph of Langbein’s article sums up the position: “This article has presented numerous authorities showing that Chancery engaged in fact finding and adjudication. In many other cases, disputes were referred to common law trial. Chancery delegated cases not because it lacked the power to decide them, but because it lacked the means.”

                Checking out the article referenced by Ned Heller, the “common law side of Chancery” seems to refer to the Court of Petty Bag, a court apparently with subject-matter jurisdiction in matters concerning solicitors and officers of the court. This court apparently withered away to the extent that it does not even apparently merit a Wikipedia article.

                1. This mode of revoking patents, however, seems to have fallen into disuse; and the same end was attained by the issue of writs of scire facias, in the name of the king, to show cause why the patents should not be repealed or revoked. These were, of course, returnable into some court; and it appears to have been the practice to do this in the Court of King’s Bench, or in the Court of Chancery, where the record of the patent always remained in what was called the petty bag office.”

                  United States v. American Bell Telephone Co., 128 US 315, 360 (1888)

                  Note, Distant, that the reason it was filed in the Petty Bag court was because the record was there; but Petty Bag of Chancery was a common law court and the Chancery court judge was both a common law judge and an equity judge, depending on the form of action and remedy.

                  When the action sounded in law, such as revocation of a patent for being issued contrary to the law, the trial was to a jury and the jury verdict could not be overturned.

                  As the articles above noted, when the remedy involved more than just the law, but the discretion of the court, the jury verdict was treated as merely advisory. But that practice began in 1821.

                2. Many thanks, Ned, for the reply.

                  I would add two things. Google pointed me to an English case, Bynner v. The Queen in the Court of Queen’s Chamber, 1848.

                  The link to Law Reports on Google Books is here:
                  .
                  link to books.google.ie

                  The case turned on whether the proceedings in the Court of Queen’s Bench revoked the patent, or whether subsequent proceedings in the Office of Petty Bag in the Chancery were necessary to revoke the patent. The holding was that the patent was revoked directly in the Court of Queen’s Bench. The case arose because the plaintiff had wished to take further action to save the patent before cancellation in Chancery but was unable to do so.

                  What you say accords with what I ultimately concluded from the results of various web searches: the Lord Chancellor’s authority with regard to writs concerns common law, not equity. This makes sense both because the Lord Chancellor would be acting for the monarch, because the records of issued patents were held in the Office of Petty Bag, and these aspects of the Lord Chancellor’s role would clearly have developed in medieval times before the development of systematic equity jurisprudence. In that respect, ‘equity’ seems to be a red herring. The fact that proceedings were taken for a writ of scire facias were taken in Chancery does not imply that those proceedings were grounded in equity, not common law, contrary to what seems to have been casually assumed by some writers.

                3. Nit-picking footnote, in reply to Ned Heller. In 18th century England, was there still a distinct Court of Petty Bag. Let us stipulate to the existence of such a court in Elizabethan times. In the time of Charles I, there was a notorious “Court of Star Chamber”, which disappeared. I would put forward as a hypothesis that, by the 18th century, there was a Court of Chancery, that sat most of the time in Equity. But the Lord Chancellor could also sit in common law on matters that related directly to his role as the chief legal officer of the Crown. Accordingly, in the 18th century, there was a Petty Bag Office in the Chancery that handled matters relating to the common law jurisdiction of the Lord Chancellor. But I would put forward the hypothesis that, in the 18th century, this was not conceptualized as a separate and distinct `court’. The Court of Chancery would sit in common law on matters relating to the Lord Chancellor’s common law role and jurisdiction, and legal documents would characterize the process as being carried out by the Lord Chancellor in the Petty Bag Office. (Again this hypothesis is respectfully put forward merely as the fruit of a single evening’s reading around.)

                4. Logging another reference:

                  link to books.google.ie

                  Henry Maddock, A Treatise on the Principles and Practice of the High Court of Chancery, 1820.

                  The link, assuming it works, should take you to the page discussing proceedings in the Petty Bag Office.

              2. I came across an old book on English patent law freely available on Google Books. Indeed it was published in 1803.
                A link to its page on Google books is here:

                link to books.google.ie

                Details of the book are as follows:

                John Dyer Collier, An Essay on the Law of Patents for New Inventions, 2nd Edition, London, 1803.

                It has about 350 pages. It begins with a discussion of monopolies from medieval times, and details of how letters patent are issued. The Statute of Monopolies is discussed. The sixth chapter includes the complete text of letters patent for an invention issued by George III, which goes on for many pages, not only granting the patent, but imposing conditions on its exercise.

                Much of the book, maybe the larger part of it consists of lengthy quotations from court cases, with long discussion of the Boulton and Watt steam engine patent. Also Justice Buller’s summing up to the jury in several cases. Relevant legislation is introduced.

                It appears (and is stated in the book) that monopolies were and are illegal under both common and statute law. The Statute of Monopolies carved out an exception for new inventions, with duration not exceeding 14 years. If the King or Queen were to issue letters patent not according with statutory conditions, the grant would be null and void.

                Also the letters patent themselves contained self-destruct provisions ensuring that any attempt to assign the rights to a corporation, or give shares to or set up a trust involving more than five persons would automatically render the patent null and void.

                Proceedings seeking a writ of scire facias to invalidate the patent could be initiated either in Chancery or in common law courts. If proceedings were taken in Chancery then the writ ran throughout England. It seems implied that the reach of common law courts was more local, but this was not clearly explained in the book.

                In any event, this book surely sheds considerable light on how the law of patents was applied in 18th century England.

                1. That’s nice.

                  But please be aware that quite contrary to Ned’s beliefs, the US patent system simply was not set up to be the mirror image of the English system.

                2. Distant, good discussion. And, yes, guys like Lemley really do not understand the English procedure here when they remark that the juries adjudicating patent validity in England were just “advisory.”

                  They were not and his conclusions about the right to a jury trial for patent validity are dead wrong.

                  I would be nice is some professor wrote on this topic to counter Lemley.

              1. Further, since the actual nature of property was not changed with the AIA, there exists – prior to the rest of the AIA – other Constitutional protections of property in place that even Congress, the correct branch to write the statutory law that is patent law must follow. They simply are not writing on a blank slate.

                Your attempted end run on the property aspect is thus thwarted.

              2. Quite in fact, Greg, your insertion of “some” directly allows you to insert the conclusion that you want to assume with “not all.”

                It’s a nice trick – you trying to be “just a little bit pregnant” but alas, it is only a trick.

        3. If McCormick and Am Bell are going to be overruled, only the SCOTUS, and not the CAFC, can do so.

          This issue was settled law for nearly 90 years before the CAFC disrupted it.

      2. So, we’re to live with complete chaos due to Alice (because no one can figure out what’s patentable) and instead just sit on the sidelines because something might go wrong in legislation? I think Congress should step in and finally resolve: 1) What can or should be claimed functionally (should 35 usc 112 be repealed or revised), especially when many items (such as memory controllers) can really only be claimed functionally today)? 2) Should data processing inventions be patentable (where “data processing” means data comes in, gets modified, and goes out), especially since data processing is “new and useful”, such as encryption? 3) Should computer systems/processors implementing inventions be explicitly patentable? I could go on. Someone needs to step in, because if we wait for the appropriate case to filter up to the SC, we’ll be here for decades, and then the SC is so clueless about technology, they’ll mess it up.

        1. PatentBob, you should review the discussions between Distant Perspective and me on “abstract ideas.” In the end, the Supreme Court is simply implementing the MOT without actually saying it is doing so, because “abstract ideas” really means “in the mind” as opposed to being directed to a physically transformative process, or a specific machine.

          As to functional claiming, I would simply repeal 112(f) and require that all claims be definite. As to broad claims, look to 112(a) and (b). Functionally claiming known structure should be permitted because such is definite.

          As to software, improvements to software should be eligible where the outputs of the claim are directed to improvements to computers or computer systems. Claims directed to abstractions, such as balancing risk, are not directed to improving computers, etc.

          1. And once again, Ned, let me remind you that it is not only 112(f) in which claims sounding in function arise. See Federico.

            We have been over this many times and your lost here borders on the unethical, given that the omission is a material one.

            1. anon, you have said what you have said many times but what you have said assumes that the person to who you are talking understands what you have just said and that is hard because you constantly refer to early conversations that may or may not have occurred but which are now lost to memory.

  3. Dennis, your love affair with Michelle Lee is a bit troubling, unless of course you enjoy seeing the demise of our patent system and patent property rights like many in the defense bar that have lobbied for the changes that have occurred and, by default, lobbied themselves out of work. Genius.

    1. lobbied themselves out of work

      More like “lobbied themselves out of a third vacation home”, maybe.

      News flash for Peter and deep-thinkers like him: sometimes doing the right thing takes precedence over the cash grab.

      I know: it’s really hard to believe! But it’s true.

      We’re not all like you, Peter.

  4. desires of ex parte patent applicants.

    You mean applicants that view a patent as a certificate of achievement? Or applicants who have yet to attempt to enforce their patent?

    Do you think there is some sort of pyscho-economic value is sustaining the charade?

    In fact what you are observing are simply patent trial participants whose eyes have been opened warning those ex parte applicants that patents are a sham.

    Michelle Lee is misleading applicants and robbing them of their secrets and savings in exchange for a worthless certificate. And proudly marketing it to the applicant masses.

    1. I am sympathetic to the point you are making, but I am regrettably skeptical that there is much that can be done to solve it. The people who pay fees for an application want to get a patent. The people who pay fees for an IPR want to get a cancellation. The PTO needs fees to keep the lights on, and therefore the economically rational approach for the PTO to take is to be lenient during ex parte examination, but harsh in its review during IPR. That is the way you keep the fees rolling in.

      Please note, nothing about this calculus would change if you were to do away with IPRs, except that one of the two feed streams would dry up. The economically rational strategy for the PTO, however, would still be to be lenient in granting patents, to encourage more fee payers to file more applications.

      I suppose you might be able to impose some discipline on the PTO if you were to amend the statute to say that the PTO must refund the fees of any patent that is later cancelled by the PTAB or in litigation. That would be a worthy incentive, and I would support such a statutory change. Still and all, this would impose less discipline that one might hope. The reality is that each PTO director only serves only ~2 years on average. The patents that a given director issues will overlap only slightly with the patents that are cancelled on that director’s watch. Therefore, any given director’s incentive is still to issue as many as possible (and collect as many fees as possible on those filings), secure in the knowledge that it will be some other director who will pay the refunds when the dross in those grants is eventually mucked out.

      If an applicant really wants a patent that will stand up in court, s/he needs to be willing to pay more than the PTO’s examination fees. U.S. fees simply are not high enough to pay for a really thorough search and a really probing examination.

      1. Thanks Greg, and your last paragraph is vastly more true for surviving IPRs than it ever was for D.C. patent suits, only a very small percentage of which ever get to any jury decision on validity challenges.

        1. That last paragraph – to the extent that it is untrue – is also the extent to which the Office is NOT doing its Fn job right the first time through.

          This line of thought that Greg and you engage in is deceptively simple, but runs into the immediate problem that what is paid for IS a patent right that is valid.

          Whether or not this is “enough” is a false supposition. It IS the agreed upon price to achieve the agreed upon result.

          If you want to change that, then speak to Congress or the Director or both, but until then, the status quo ante IS that the price asked for is for the result of a valid and full examination.

          I don’t want to hear excuses or whining otherwise – the role of the examiner may be difficult, but that problem is not to be made my (or my clients’) problem.

          1. that problem is not to be made my (or my clients’) problem.

            As everybody knows perfectly well, you are your client’s number one problem, “anon.”

            The grown ups around here know how to do a proper prior art search and how to advise their client about what needs to be in their application. Yes, it costs money. You get what you pay for.

      2. The percentage of canceled patents is still relatively low. For a refunding mechanism to have an effect, there would have to be some added penalty.

        1. You skepticism is well placed, until opinion shapers like the author of this blog figure out that patents are a net liability for 99.9% of innovators (ex parte patent applicants).

          1. As long as there are people like you playing the game, Mr. “Invention Rights”, you guys are going to keep getting the horns.

            That’s because of “opinion shapers” like me who see right through your self-dealing h0rse-cr@p.

              1. how dare you try to make money

                Has anyone ever seen a goalpost move so quickly?

                Tune in next time when Obama shows up at your door and makes you register all your property.

      3. Greg,

        While perhaps “economically rational,” the item you point out, specifically: “The PTO needs fees to keep the lights on, and therefore the economically rational approach for the PTO to take is to be lenient during ex parte examination, but harsh in its review during IPR. That is the way you keep the fees rolling in.” violates both the spirit and the letter of the law that provides for a proper examination in the first place.

        The Office simply does not have legal ground to play the “cute” and economically beneficial game that you point out.

      4. Greg: The PTO needs fees to keep the lights on, and therefore the economically rational approach for the PTO to take is to be lenient during ex parte examination, but harsh in its review during IPR.

        Of course, it’s not really the PTO that is “being harsh” in an IPR but the petitioner.

        Also, whether it’s “economically rational” or not, lenient examination is what a large swath of the most vocal critics of the PTO plainly want. If they wanted something else, then they would come up with some bona fide proposals to radically improve examination efficiency* and they would encourage the PTO to apply all the statutes — 101, 102/103, and 112 — with increased stringency. But that’s the exact opposite of what the small-minded “innovators” clamor for 7 days a week.

        *perhaps a database of logical operations and a requirement for logic applicants to submit their algorithms in a formal manner that would facilitate searching and examination <— nah, way too grown-up and probably devastating for the whiners; best to just keep howling at the sky

        1. Except for the fact that your script does not apply and that we have plainly told you so many many many times now.

          But why let such facts get in the way of your scripted rant, eh Malcolm?

  5. “The calls for her removal, however, appear to be coming from the PTO’s new role as arbiter of patent disputes at the Patent Trial and Appeal Board.” I think that would not be entirely undeserved. Lee has shown zero leadership in PTAB matters, and has been behaving as if this vast invalidation mill has nothing to do with her or her office. This is not a minor aspect of the job, and it can’t be discharged through anodyne public speeches. Through inaction, she has allowed a fair amount of distrust against the PTAB to arise and persist. I would now like to see Lee display more independent thought on the matter and take the reins at the PTAB, at least every now and then.
    It takes a special person to work for both Presidents Obama and Trump, without blinking. I don’t know what this tells us about her, but I’m waiting to find out.
    And Dennis — I have no idea what you mean when you say that “patent trial participants have begun to exert substantial political influence on the USPTO in ways that may not align with the goals and desires of ex parte patent applicants.” I hope with “participants” you mean petitioners, because it makes no sense otherwise.

    1. Many of the complaints in blog comments here about changes in patent law and practice in recent are from ex parte application preparation and prosecution attorneys, as Dennis suggests.
      But patent litigation practice firms [and patent practice groups inside large GP firms] appear to have more influence in that regard, as demonstrated by IPL association amicus briefs, etc. Many of these firms have lost substantial income opportunities as a result of patent litigation billings cut short by Alice-Mayo 101 unpatentable subject motions, IPRs, increased sanction risks, more extensive complaint requirements, etc.
      [Note that Michelle Lee did not create any of these legislative and Sup. Ct. changes, nor does any PTO Director have the power to sua sponte change any of them. Also, she did not write the IPR rules.]
      On the other side, of course, are several now very large companies that have had large legal expenses from numerous PAE suits, large enough to warrant lobbying expenditures as well as fighting patent suits all the way to the Fed. Cir. and the Sup. Ct. Their influence has grown relative to the influential pro-patent positions of pharmaceutical companies. That industry’s influence has not been helped by some recent incidences of product price-gouging.

      1. Citizen’s United needs to be overturned and the “Voice$” of juristic persons made to be more in order so as NOT to be based on pure size of a corporation’s wallet.

  6. It will be interesting to see whether the USPTO revises its position on PTAB constitutionality with the new President and AG.

    As an alternative to arguing “it’s a public right, it’s a public right,” the PTO could acknowledge the constitutional issue and seek a clarifying statement from the Court.

    1. seek a clarifying statement from the Court.

      Seems like an advisory opinion to me – two questions follow:
      Would the Court do so?
      Should the Court do so?

      1. Not an advisory opinion. The Court would clarify – and finally decide – the Constitutional issue.

        Acknowledging ambiguity or countervailing authority is what the DOJ typically does when it wants to encourage cert.

          1. I wish our system allowed advisory opinions. At least then we might be able to answer: (1) are program product claims patentable?; (2) if they are patentable, are PP claims written in dependent form off of a method claim patentable? (3) etc.

    2. Goodness. Yes, it would be interesting if the Trump administration were to seek leave to intervene in Oil States. That would be a welcome development for those who believe that IPRs are constitutional.

      1. The SCOTUS requested the USPTO to submit a brief in Oil States. We will see what the new administration has to say about the constitutionality of IPR etc.

        The fact that the Court sat on this until the week of conference should tell you something: it is buying time for the confirmation process.

        Not sure if this development helps or hurts the copending CAFC en banc petition.

        Very interesting times.

    3. Federal agencies obviously do not go around offending Congress [which controls them] by challenging the constitutionality of enacted legislation which Congress enacted for that agency to carry out.

      1. If you are afraid of “offending” by pursuing the correct Constitutional understanding, then you have no right to be in that position of authority.

      2. Paul, let us not forget that we have a new sheriff in town.

        What the government says to the Supreme Court in its brief is going to say a lot. The central question is whether the Trump administration has decided that it is wise to put patent litigation into the patent office. But have not already heard from Bannon, the chief advisor to the president on this issue? He has stated that is a central purpose of the Trump administration to roll back the administrative state.

        There are the voices in the Trump administration signaling a change in direction in patent law.

        Obviously, this issue is above Michelle’s pay grade in should be bubbled all the way to the highest levels of the government before they write one word and that brief.

        But your attitude, Paul, does reflect the desire of the patent bar to maintain control of the situation by keeping the decision-making about what to do about IPRs at the level of the Director.

        1. Ned, to “keep decision-making about what to do about IPRs at the level of the Director” is the opposite of what I actually said above, which is that “Michelle Lee did not create any of these legislative and Sup. Ct. changes, nor does any PTO Director have the power to sua sponte change any of them.”

          1. OK, Paul.

            And I will grant you that Republicans in the House lead the way with bi-partisan support in the Senate.

            But actual experience with IPRs demands a rethink by all IPR supporters regardless of party. Certainly, the people in the Executive Branch do not have to admit to making a mistake if the Executive Branch changes positions on IPRs.

        2. Bannon, the chief advisor to the president[,]… has stated that is a central purpose of the Trump administration to roll back the administrative state.

          Er, o.k. I know that Bannon has said this, and I know that the PTO is an administrative agency, but I think that you are likely over-reading this. What does the term “administrative state” really mean? Consider me skeptical that Mr. Bannon has the PTAB in mind when he talks about the “administrative state.”

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