Answering the Call — Pro Se Assistance at the USPTO

Guest post by Kathy Matecki, Director of USPTO’s Technical Center 3600

Independent inventors and small business owners have a long tradition of creating innovative products and opening up new sectors of the American marketplace. Some of today’s most well-known companies and innovators started small in someone’s garage or basement. Many patent applicants enlist the help of a registered patent attorney or agent. Some inventors, however, choose to file an application for a patent on their own, a process known as “pro se” filing.

The United States Patent and Trademark Office’s (USPTO) Pro Se Assistance Program provides dedicated educational and practical resources to pro se applicants, including walk-in assistance at USPTO’s headquarters in Alexandria, Virginia, pro se-specific educational resources on patents and electronic filing, dedicated customer service and assistance, and increased examiner-applicant interaction.

Established in October 2014, the USPTO’s Pro Se Art Unit is a group of experienced patent examiners from all engineering disciplines. The examiners in the art unit communicate frequently with their inventors, get to know them, and are dedicated to simplifying the patenting process and providing the best possible experience for each one, even when the inventor is unsuccessful in obtaining a patent. The program has helped identify the most common problems encountered by these applicants, so that the USPTO can simplify the process if possible, or establish best practices to assist pro se applicants.

The Pro Se Assistance Program has received positive reviews since its inception. One pro se applicant stated, “Had my examiner not been so understanding and helpful in every regard, I would have given up.  She was patient, and I feel incredibly lucky to have worked with her…  I would not be able to afford the legal fees associated with a patent, so that would have been the end for me.”  The examiners have also felt the impact of the program; one stating:  “We provide an important service (with a smile) to a not previously addressed cross section of applicants at the office, while still producing a quality examination. The impact of this service may or may not be captured by data crunching, but it is without a doubt felt by the community of pro se applicants that we have encountered in our year and a half of operation.”

The USPTO’s Pro Se Assistance Program is just one of many programs the USPTO offers that benefit independent and under resourced inventors. Another popular program is the Patent Pro Bono program, which provides legal assistance to under-resourced inventors. For more information on the Pro Se Assistance Program, visit the website, call 1-866-767-3848, or email

About Dennis Crouch

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

150 thoughts on “Answering the Call — Pro Se Assistance at the USPTO

  1. [Whilst awaiting moderation, continuing posting with regard to how patents for inventions were granted and invalidated in 18th century England, based on references which, if approved by the moderator, might eventually appear here.]

    Where relevant, I may refer to the previously listed early 19th century as Henry Maddock (2nd Edn, 1820), John Dyer Collier (1803), William Hands (1808) and John Davies (1816). They are freely available on the Google website and (at least in some cases) on

    [I will now post, and hopefully this, and some preceding comments awaiting moderation, will again become visible to me, if not to others.]

    1. Let us consider the legislation in England and Wales. This should be short enough that the relevant provisions can be quoted here. These should be interpreted on the basis that Statute of Monopolies (21 JA. 1. c. 3) declared (as pre-existing common law) that monopolies granted by letters patent, with limited exceptions defined in statutes and other acts of Parliament, are null and void under common law. Paragraph II of the Statute of Monopolies concerns invalidation, and Paragraph VI concerns the exception applicable to patents for new inventions.

      “II. And be it further declared and enacted by the authority aforesaid, that all monopolies, and all such commissions, grants, licences, charters, letters patents, proclamations, inhibitions, restraints, warrants of assistance, and all other matters and things tending as aforesaid, and the force and validity of them and of every of them, ought to be and shall be for ever hereafter examined, heard, tried and determined, by and according to the common laws of this realm, and not otherwise.


      “VI. Provided also, and be it declared and enacted, that any declaration before-mentioned shall not extend to any letters patents and grants of privilege for the term of fourteen years, or under, hereafter to be made, of the sole working or making of any manner of new manufacture within this realm, to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patents and grants shall not use, so as also they be not contrary to the law, nor mischievous to the state, by raising prices of commodities at home or hurt of trade, or generally inconvenient. The said fourteen years to be accomplished from the date of the first letters patents or grant of such privilege hereafter to be made, but that the same shall be of such force as they should be, if this act had never been made, and of none other.”

      1. Jumping forward within Arkwright v. Nightingale quite a bit to material that seems to bear upon enablement and best mode in particular. What follows is taken from Mr. Bearcroft’s opening statement for the defence in Arkwright v. Nightingale (1785) (John Davies, 1816, pp. 48, 49):

        “Notwithstanding this evidence, I undertake to prove, that in the specification, Mr. Arkwright has not only not communicated his secret in the way that he ought by law to have done, but that he has purposely withheld it from the public. It has been said, that in this matter it is of little importance that the secret is not communicated, as it will be used by a great number of hands, and, therefore, cannot fail to be handed down to posterity. The observation is true in point of fact, but will not operate in point of law, and, therefore, is nothing to the purpose; for, if the precedent condition of the patent be a disclosing bona fide the secret, it is essential to the privilege granted, and, without it, he derives no peculiar privilege whatever from his invention. Now, Mr. Arkwright has not by his specification communicated to the public at large this invention honestly, and fairly, but the mala fides appears upon the whole of the specification. It is not calculated to communicate, but to secrete: not to open and explain, but to hide.[…] Oh, but, say they, they are original inventions for some other purpose, perhaps, and, therefore, he has a right to have advantage of them in his patent. I doubt the propriety and the legality of jumbling four or five different inventions in one patent.

        “LORD LOUGHBOROUGH.—I dare say you will see the reason why they jumble them into one patent, it is to save fees. It is a practice common enough; but when the Attorney or Solicitor General’s clerks are attentive, it is not suffered to pass.

        “Mr. Bearcroft.—Here is a jumble of different instruments for different operations. […] When a patent is obtained, the inventor is bound to communicate the best way he has of performing the work by his invention; if any alteration should be made afterwards, which is only an improvement of the machine, it would be absurd to find fault with withholding that which is not known. […] If Mr. Arkwright had improved his principle at the time of obtaining his patent, he ought to have communicated that improvement; and if fluted rollers are used, and are best, it ought to have been so stated in the specification: and not having been done, ought to raise a suspicion that there is a studied design to conceal.”

        Jumping forward to the trial judge’s summing up for the jury (ibid., pp. 54–60):

        “LORD LOUGHBOROUGH, before he stated the evidence, took notice of some things that had occurred in the course of the trial, merely for the purpose of laying them aside as foreign to the purpose of the enquiry. There is no matter of favor can enter into consideration in a question of this nature. The law has established the right of patents for new inventions: that law is extremely wise and just. One of the requirements is that a specification shall be enrolled, stating the nature of the invention; the object of which is, that after the term is expired the public shall have the benefit of the invention, but without that condition is complied with, the patentee forfeits all the benefit he derives from the great seal.


        “It is said, it is highly expedient for the public that this patent, having been so long in public use after Mr. Arkwright had failed in that trial, should continue to be open; but nothing could be more essentially mischievous than that questions of property between A. and B. should ever be permitted to be decided upon considerations of public convenience or expediency. The only question that can be agitated in Westminster hall is, which of the two parties in law or justice ought to recover.

        [I am certain of having seen the latter part quoted in modern discussions.]

        “There are many objections that may be taken to patents, but the only objection in this case is, that the specification is not so intelligible, that those who are conversant in the subject are capable of understanding it, and of perpetuating the invention when the term of the patent is expired. The clearness of the specification must be according to the subject matter of it; it is addressed to persons in the profession having skill in the subject, not to men of ignorance; and if it is understood by those business leads them to be conversant in such subjects, it is intelligible.”


        “A good deal was said in the opening of the defendant’s case, that Mr. Arkwright meant to understate his description, so as to keep the world in ignorance of his invention; and that, though he might do it to keep it from the French, yet that he had overshot himself, and had kept it from the subjects of this country; that he had not complied with the grant, and must stand to the consequence. Now unless a great degree of folly indeed is ascribed to Mr. Arkwright, you cannot apply that idea to his mind. He must necessarily put people in possession of it; and it is plain, by the conversation he held with the attorney’s clerk, that he thought the specification was sufficient according to the terms of his patent, that he should make his invention sufficiently known.”

        1. N.B., the above was posted out of order, but nevertheless is self-contained, as it appears to be the only comment in the sequence based on Arkwright v. Nightingale (1785).

      2. Distant, good research.

        Undoubtedly, Justice Story was quite familiar with English law on point when he wrote for a unanimous Supreme Court in ex parte Wood & Brundage, 22 U.S. (9 Wheat.) 603 (1824), that actions to declare a patent invalid were in the nature of a “scire facias” and therefor had a right to a trial by jury. link to

        1. I wonder if it is quite accurate to say that Judge Story held that scire facias actions had a right to a jury trial. He certainly ordered a remand for a jury trial, but is that a matter of right, or of the statute? I do not see him invoke the VII amendment in the opinion.

          1. but is that a matter of right, or of the statute?

            Not sure that I understand the phrasing of the question.

            1. Ah, yes, my apologies. What I should have asked—to be more clear—is whether the remand for a jury trial is a matter of VII amendment right, or of statute?

          2. “[W]hether the process was in the nature of a scire facias at common law, to repeal the patent, if, upon a future trial, the same should be found invalid.

            “The inventor has, during this period, a property in his inventions; a property which is often of very great value, and of which the law intended to give him the absolute enjoyment and possession. In suits at common law, where the value in controversy exceeds 20 dollars, the constitution has secured to the citizens a trial by jury.

            “With these considerations in view, let the 10th section of the act be examined….

            “Upon the whole, it is the opinion of the Court, … that he award a process, in the nature of a scire facias, to the patentees … and that, if the issue so joined be an issue of fact, then the trial thereof to be by a jury….”

            ex parte Wood & Brundage, 22 US 603 (1824)
            link to

      3. Distant, given the times you are writing, I suspect that you are from England.

        1. At least, let me say that, many decades ago, I read with interest the book showing on the top left, following this link:

          link to

          Namely, The Queen’s Courts, by Peter Archer (Pelican Books). Ever since, I have retained some sort of impression of the history and jurisdiction of the English courts there mentioned, and also of the origins of and distinctions between common law, equity and probate, divorce and admiralty, replenished from time to time though reading works such as Bleak House by Charles Dickens.

    2. When patents were challenged in common law courts, the determination of infringement or invalidity was made on the basis of the text of the relevant letters patent and specification. Here (John Davis, 1816, p.34) is the boilerplate passage, included in the provisions of a standard letters patent, that dealt with the requirement of specification and enablement:

      “Provided also, that if the said A.B. shall not particularly describe and ascertain the nature of his said invention, and in what manner the same is to be performed, by an instrument in writing under his hand and seal, and cause the same to be inrolled in our High Court of Chancery, within two calendar months next and immediately after the date of these our letters patent, that then these our letters patent, and all liberties and advantages whatsoever hereby granted, shall utterly cease, determine, and become void, any thing herein contained to the contrary thereof in any wise notwithstanding”.

      When a writ of scire facias was brought, the common law court would enquire whether conditions such as the above had been fulfilled by the patentee, and matters of fact were decided by the jury. For a particular example of this, see The King against Arkwright, reported at considerable length in (John Davis, 1816, pp. 61–144).

      Where the inventor was also seeking patents in Scotland and Ireland, the time for supplying the specification was extended, so as to allow time for patents to be granted in those other jurisdiction before the specification, in the patent rolls of the Court of Chancery, became available for public inspection.

      The consequences of not submitting a specification for enrollment within the specified period were severe! A Chancery case on point is Ex Parte Koops, 6 Ves. 599, 22nd Jan 1802 (see John Davies, 1816, pp. 11, 12):

      “It was then desired that the time, which would expire on the 17th of the next month, might be enlarged, in order that the petitioner might apply to parliament.

      “Lord Eldon, C., ‘I cannot do that if the patent has passed: for the patent is void, if the proviso is not complied with. You should have applied to the Attorney General before the patent passed, for a longer time upon the special circumstances. I cannot take the Great Seal from a patent, and repeal it in the most essential point: it is a legal grant, with a proviso for the benefit of all the King’s subjects. You can do nothing, except by an act of parliament to enlarge the time mentioned in the proviso.

      “The petition was dismissed.”

    3. [Continuing to comment, in the hope that the comment may eventually become visible.]

      Skimming again the Introduction, I note in particular the following (John Davies, 1816, 3) regarding the Statute of Monopolies:

      “The act was made a declaratory, rather than an enacting statute, as monopolies had at all times been considered contrary to the ancient and fundamental laws of the realm, as well as to Magna Charta; and many had, at different times previous to the passing of this act, been set aside in the courts upon those grounds. They were also found by experience to be very prejudicial to an extension of commerce.”

      Later (ibid., pp.4,5):

      “The principle of the kind of monopolies under consideration, namely Patents for Inventions, is now pretty well understood; and it is generally allowed, that though it would be infinitely mischievous to the public, if useful discoveries were to be for ever locked up and made the property of private individuals, yet it is equally useful to the public, that the first inventor of such useful discoveries should have the benefit of them for a limited time; for it is plain, that the public would have no benefit, that there could be no improvement in the manufactures of the country, unless the labour, the time, and the expense of ingenious men were applied to the purpose of new discoveries and improvements.

      “It is well known that the most useful discoveries that have been made in the arts and manufactures of the country have not been made by speculative and recluse philosophers in their closets; but be ingenious mechanics, practically acquainted with the subject matter of these discoveries. It therefore follows, that those persons whose only means of getting their subsistence is by the exercise of their own labour, skill, and ingenuity, must necessarily be prompted by an expectation of advantage to themselves, to spend much time and labour, and incur the expense of experiments in stepping out of the beaten track, and endeavouring to bring forward any great or essential improvement in the branch in which they are concerned. Such improvements frequently require not only ingenuity, but much thought, long attention, great labour, and repeated experiments; not only requiring labour, but attended with considerable expense. It could not therefore be expected, that the most ingenious man of this description should sacrifice their time and labour in seeking improvements which, although of great benefit to their country, would be ruinous to themselves, unless some mode was devised to secure to them an advantage from their invention.”

      Regarding the patent system (John Davies, pp.6, 7):

      “It is fair and equitable for this plain reason, because if the invention is of no use, or has no ingenuity, and produces no beneficial effect, the exclusive enjoyment of it will produce no profit to the inventor. On the contrary, it it is of great ingenuity, and a considerable improvement to manufactures, and benefit to the public, the exclusive profit for the time limited will be of consequence to the inventor; and therefore this mode of encouraging ingenuity seems calculated to produce its effect, without violating any principle of commerce or of justice; because the reward is exactly proportioned to the merit and utility of the invention: the more meritorious and beneficial to the public any discovery will be when laid open, the more beneficial it is likely to be to the inventor while he has the exclusive enjoyment of it. It takes nothing from the public of which they are in possession; while it tends greatly to promote the general interest of the community. The justice and equity of such monopolies cannot therefore surely be disputed, and still less their utility.

      “Many instances might be adduced to prove that, without the hope of such reward, ingenious persons would not sacrifice their time and property in bringing their ideas into practical use; but it will be sufficient to mention the very important improvements of Mr. Watt upon the steam-engine, […] But it is unnecessary to say any thing more in defence of the restricted monopoly now in use under this statute; as, however odious in former times such monopolies were looked upon, and which, indeed, when carried to the extent they were previous to the statute, were extremely pernicious to the public weal; they are now become very advantageous to the commercial prosperity of the country, and manufacturers and others are not only not ashamed, but even proud of having their manufactures and inventions called ‘Patent,’ and themselves styled `Patentees.'”

    4. Continuing with the Introduction (John Davies, 1816, pp.7, 8), in particular given the reference to the Statute of Monopolies and Sir Edward Coke and his role in its passage:

      “it has been thought proper to give, at the end of this introductory chapter, the declaratory statute by which the law of patents of invention is now determined, and upon which alone they rest; and there might also have been added, the explication of the more material parts of it, by that great luminary of the law, Sir Edward Coke; in whose time, and with whose assistance (he having been chairman of the committee to whom the bill was referred), this act was framed and passed (and who of course must have been fully competent to explain the meaning and intent of it), as given in 3 Inst. 182; but as his comment relates mostly to the parts of the act with which we have at present nothing to do, it is omitted.

      “There is also added, the form of letters patent for inventions, as now in use; although, it may be observed, that the powers and provisoes contained in these patents have varied from time to time, agreeably to the suggestions of the Attorney or Solicitor General for the time being, whose duty it is to draw these instruments, and who, by the King’s warrant, is directed “to insert therein all such clauses, prohibitions, and provisoes, as are usual and necessary in grants of the like nature, and as he shall judge requisite.”

    5. We come now to the “specification”, and the circumstances of how, when and why it arose (John Davies, 1816, pp. 8, 9):

      “The most material alteration that has taken place in these grants, is the addition of the proviso for enrolling a specification within a given time; which was not introduced into these letters patent until near the end of Queen Anne’s reign; although we find that proviso spoken of in the arguments in some of the following cases, as a legislative measure; but no provision whatever is made in the act, for enrolling any description which should enable the public to practise the invention at the end of the monopoly granted to the patentee.

      “There was, indeed, a sort of specification generally contained in the patent, which must have been given in the petition praying for the exclusive privilege; but it was not such a specification as is now requisite, and which would enable the public to manufacture the article when the patent-right had expired; and there was no clause or proviso inserted in the patents that if the description given therein should be insufficient for that purpose, the patent should be void; consequently the world was entirely dependent upon the fidelity, and it may be said in many cases, the generosity of the patentee, whether the invention should become public at the end of his term or not, as it is evident that many very important inventions, without a proper and sufficient specification for the benefit of the public, might still be withheld from the world as to their public use and exercise.

      “Hence, no doubt, and either from the conviction and experience that fraud and concealment had been made use of by patentees, in order to keep their inventions from being brought into public use upon the expiration of their patents, or perhaps from its having been discovered that it was unsafe for the inventors to give a full description of their inventions before the patents had passed the Great Seal (as their privilege only commences at that period, and if by any means, however fraudulent, the invention should previously have been made public, the patent would be void), the law officers of the Crown found it expedient, and even necessary, both for the advantage of the public and the patentee, to introduce this proviso.

      “The time allowed for enrolling the specification was varied at different periods, having at first usually been four months from the day of the date of the letters patent; but when the late Lord Alvanley was Attorney General, he reduced the time to one month, under the idea, it is presumed, that the invention should be perfected without further experiments before the patent was obtained, and that one month was amply sufficient to put the specification in due form; but the time given for this purpose has lately been extended to two months, probably on account of the difficulty of drawing such a specification in matters of great importance as shall enable a patentee to support his patent if brought into a court of law, as most of the actions upon patents have turned on the insufficiency of the specification.

      “The time however is sometimes enlarged to such longer period as may be thought proper by the Attorney or Solicitor General, according to the circumstances of the case, upon a requiest to him at the time he is applied to for his report upon the petition for a patent, particularly if the inventor in his affidavit of his invention makes oath that it is his intent to apply for patents for Scotland and Ireland, in which case it is usual to allow six months, as patents take longer time to be completed in those countries than in England; and if the specification was enrolled here within the usual time, the invention might perhaps be brought into public use in those countries before such patents had passed the respective seals, whereby the inventor would lose the benefit of them. But it should be observed, that if the application is not made at the time beforementioned, and an order procured accordingly, the King’s warrant will be made out with the proviso for enrolling a specification in the usual time, and it will then be too late to have the time enlarged without incurring the expense and loss of time (which is often a greater object with inventors than the expense) of beginning the process of soliciting the patent de novo, as the Lord Chancellor himself has not the power of dispensing with the proviso, or enlarging the time limited for enrolling the specification, if the patent has passed the great seal.”

      [This brings John Davies to the discussion of Ex parte Koops, mentioned in earlier comments. It should be added that Koops was seeking to prevent the specification from being made public, “suggesting the danger that foreigners might obtain copies of the specification in consequence of such enrolment”]

    6. John Davies concludes his Introduction (ibid., p.16) with a remark on the importance of the accuracy and sufficiency of the specification:

      “and it has also been considered not only inexpedient, but as tending rather to decieve than to afford information, to give the form of a specification, as hath been done by the gentlemen who have before treated upon this subject, that instrument being of too much importance to be considered as a mere matter of form, the validity of the patent depending in a very great degree upon its accuracy and sufficiency.”

    7. John Davies includes just one case prior to Arkwright v. Nightingale (1785). In his introduction he explains that, despite extensive search (and remember that he had been employed for three decades in the Rolls Chapel that maintained the records of the Court of Chancery and, in particular, the patent rolls), apart from this one case, he had not found any that exhibited (to him) significant material relating to the principles of the law of patents.

      The case is Edgeberry v. Stephens, from the time of James I and VI, and explains vividly the reason why inventions already in public use overseas were patentable in England. The report is as follows (John Davies, 1816, p.35):


      Edgeberry v. Stephens.

      “A GRANT of a monopoly may be to the first inventor, by the 21 Jac. 1. and if the invention be new in England, a patent may be granted, though the thing was practised beyond the sea before; for the statute speaks of new manufactures within this realm, so that, if they be new here, it is within the statute: for the act intended to encourage new devices useful to the kingdom, and whether learned by travel or by study, it is the same thing. Agreed by Holt and Pollexfen in this case.”

      1. The aspect of “new here” reverberates in The Soliloquy of the AIA and highlights the misapprehension of the term “new” that Ned had a penchant for.

        To wit: with the AIA, the “new” is not some forbidding absolutism, and even “new to you” items such as things long in a trade secret mode – be they “new to you” are considered to satisfy the patent sense of “new.”

        1. Anon, new to England. Thus the discovery in England of a trade secret of another in England is not new to England.

          1. Ned,

            You are (mistakingly) trying to be TOO direct.

            We both know that the pertinent US law is – and must be – read on its own.

            Try again (without the attempted dust-kicking).

            1. We both know that the pertinent US law is – and must be – read on its own.

              Er, o.k., but then why did you say in 10.7.1 that Distant Perspective’s exposition in 10.7 on an English case is relevant to U.S. law? It really needs to be one or the other. Either English antecedents are relevant to interpreting U.S. law (in which case your reply to Ned is unfair), or English antecedents are irrelevant to interpreting U.S. law (in which case your 10.7.1 swipe at Ned’s and my gloss on “new” is unfounded). You cannot have it both ways.

              1. It is not a matter of opinion that English cases are relevant where the issues are similar. That is what the court held in Pennock v. Dialogue. Thus, if the point is the same, the English case is relevant and deemed to have been incorporated into our statutes.

              2. Salvaged from the abyss…”


                Sure I can. 😉

                Actually, I am not even trying to “have it both ways.” You have to read my comments a little more closely to see the context in which they are made.

                Hint; “reverberates” indicates that my comment is not as you are attempting to apply in some “identity” fashion.


                Your treatment of Pennock appears to get worse all the time.

                That’s a pretty (but still wrong) spin on dicta there Ned.

                Last I checked, foreign law especially in statutory law areas, does not recognize foreign law importation by the judicial branch.

                So while our patent system did indeed borrow much from the English system, your comment here is breathtakingly incorrect.

              3. This is something that may not be noticed from a US perspective.

                But it is normal practice that, when one state achieves independence from another state, the law in force prior to independence carries over into the new state. One obviously cannot create an entire legal system de novo. Therefore, to the extent that English law (in particular, common law, equity, statute, probate, divorce, maritime) was in force in colonial America at the time of the Declaration of Independence, that law, obviously modified by the constitutional changes resulting from adoption of the U.S. Constitution by the states, would have continued in force in the newly-created U.S.A., and would have constituted the starting point for subsequent development of US law.

                In one direction, consider Canada, Australia, India, Nigeria, etc.

                In the other direction, I understand that state law in the State of Louisiana, is based on civil law, not common law. Another instance, I seem to recall that the law of Germany has developed from the Napoleonic Code, not the old law of the Holy Roman Empire.

                1. to the comment of “This is something that may not be noticed from a US perspective.

                  a proper reply:

                  “This is something that is not necessary to be noticed FOR a US perspective.”

                  Are you forgetting that we rebelled and fought our way to be separate from the English law and rulers?

    8. Onward to The King against Arkwright, the case arising from a writ of scire facias seeking to have Arkwright’s carding patent of 1775 invalidated. The proceedings originated in the petty bag in the Court of Chancery.

      Regarding any possibly special features of a scire facias action, I note the use of “prosecution”, not “plaintiff”, in the following sentence (John Davies, 1816, pp. 61, 62):

      “Mr. Bearcroft, on the part of the prosecution, stated that a case of greater importance, of greater value to the individuals disputing it, and to the public in general, was never yet tried in any court.”

      It is clear that the writ scire facias alleged reasons why the patent was invalid (ibid., p.65):

      “That patent machine which was excessively ingenious should be thoroughly understood, for upon that a great deal turns, and that alone, when truly understood, is sufficient to overturn this patent, and make out one of the propositions alleged upon the scire facias, namely that this patent of 16th 16th Dec. [1775], was not for a machine that at that time was a new invention.”


      “The learned counsel then described the machines for preparing cotton for spinning, for which the patent in question was obtained, and had the operation performed in court, by first carding, and then roving the cotton; after which he observed, it was for him to shew upon what ground of law, and of fact he contended upon behalf of the crown and the public, that these two machines ought to be nullified and held of no validity.”

      [Note that the prosecutor stated that he was contending upon behalf of the crown and the public.

      To be continued. An earlier comment on another post has already noted that judgment was given in the Court of King’s Bench that the patent was invalid, thereby cancelling the patent.]


      As I have said repeatedly before now, I am not a lawyer, and, in this comment at least, I am getting way, way out of my depth here. I wondered if one could find independent support, beyond the fact that the writ in this case issued from the petty bag in the Court of Chancery, to prove that scire facias is a form of action in common law, not in equity. Here is a discussion of scire facias outside patent law:

      link to

      This is from a book entitled A Treatise on the Law of Bail in an action at Common Law (1824). The discussion of scire facias is almost entirely concerned with actions in Common Pleas and King’s Bench (and thus in common law), notwithstanding, and presumably consistent with, the occurrence of the following sentence on p.168:

      “And if a recognizance of bail be taken in an action by original, there is no incongruity in stating that the recognizance was taken in an action then lately commenced, and depending in the King’s Bench, for the action may be said to commence in that court, when its jurisdiction attaches upon the original writ, sued out of Chancery.”

      [Footnote: 14 East, 539]

      1. The real question, Distant, is whether the judgment of the court was based on equity or law. Equitable jurisdiction always required that first there be a showing that there was an inadequate remedy at law. Since patents could be invalidated at law — in the common law courts pursuant to common law (the writ could be filed there) — there was no basis for equitable jurisdiction in the first place. Thus any filing in Chancery was at the Petty Bag, a common law court.

        1. And here is a catalogue entry, on the website of the National Library of Australia, of what would seem to be a transcript of the scire facias proceedings in The King against Arkwright.

          link to

          It is a digitized electronic edition of an original in the British Library, but it is not freely available.

      2. Logging here, for the sake of documenting and augmenting the record, the URL of a book relevant to The King against Arkwright that is freely available on Google Books:

        Richard Guest, The British Cotton Manufacturers (1828).

        link to

        There had been an article in the Edinburgh Review seeking to vindicate Sir Richard Arkwright, posthumously, as the inventor.

        The author of this book sets out to show, at very great length, that Arkwright was not the first and true inventor of his machine. (When I say “at very great length”, I mean that practically anybody setting out to actually read, as opposed to skim the text, as I have just done, would find the exercise excessively tedious.) There is not that much on the legal and procedural issues. But there extensive quotations from witness testimony from those who claimed to have actually invented parts of the patented machine. And at page 122 is reproduced the “process” notifying Arkwright of the case against him that he was required to defend in the Court of King’s Bench.

    9. Continuing with The King against Arkwright, the next passage (John Davies, 1816, p.67) gives me wry amusement. We resume in the middle of Mr. Bearcroft’s opening statement for the prosecution, where he is discussing the Statute of Monopolies:

      “But adopting that idea, the framers of the act of parliament were clearly of opinion, that power ought to be guarded for the sake of the public; and the way in which they guarded it was this: in the first place, says the act of parliament, it shall ever be an express condition with the inventor, to whom a patent is granted for a monopoly of his invention for fourteen years, that he should pay for it in this coin: he should disclose the manner in which he performs his invention, in an honest, fair and plain way, so that the world at large shall be in complete possession of all he knows of the subject at the end of the fourteen years. That is the express bargain and stipulation required by the act, and of consequence inserted in this and every other patent that is granted.”

      John Davies adds this footnote:

      “It may perhaps excite some degree of astonishment, that so able and learned a man as the late Mr. Bearcroft, and in such a very important cause as the present, should argue upon an act of parliament, without having read it, or even the short provision reserving power to the Crown, to grant the sole use of new inventions, to the true and first inventors thereof; but such evidently is the fact, as the statute does not in any part of it, require a description of the invention to be enrolled, nor was the proviso for that purpose introduced into patents, for near a century after the passing of the act. This idea, however, has been entertained and argued upon by many eminent counsel, and even adopted by the Bench in some of the cases reported in this work, althrough it may not always appear in these reports, the word ‘Grant,’ having sometimes been substituted for the word ‘Act;’ a liberty for which it is hoped the motive will be a sufficient cause.”

      [Hopefully to be continued.]

    10. For the next installment of The King against Arkwright (1785), we are in the summing up to the jury by trial judge, Mr. Justice Buller, where, having first stated the issues (novelty, inventorship and enablement) that the jury must decide, he states the legal requirements:

      “Upon this point it is clearly settled as law, that a man, to entitle himself to the benefit of a patent for a monopoly, must disclose his secret, and specify his invention in such a way, that others may be tuaght by it to do the thing for which the patent is granted; for the end and meaning of the specification is, to teach the public, after the term for which the patent is granted, what the art is, and it must put the public in possession of the secret, in as ample and beneficial a way as the patentee himself sees it. This I take to be clear law, as far as it respects the specification; for the patent is the reward, which, under an act of parliament, is held out for a discovery, and therefore, unless the discovery be true and fair, the patent is void. If the specification in any part of it be materially false or defective, the patent is against law, and cannot be supported.

      “It has been truly said by the counsel, that if the specification be such, that mechanical men of common understanding can comprehend it, to make a machine by it, it is sufficient; but then it must be such, that mechanics may be able to make the machine by following the directions of the specification, without any new inventions or additions of their own. The question is whether, upon the evidence, this specification comes within what I have stated to you to be necessary by law, in order to support it?”

      Mr. Justice Buller then summed up, in considerable detail, the merits and the testimony of each witness. This resulted in

      “Verdict for the crown”.

      Proceedings resumed on 10th November, 1785, still in the Court of King’s Bench.

      “Mr Sergeant Adair moved the Court of King’s Bench on behalf of Mr. Arkwright, for a rule to shew cause why a new trial should not be granted.”

      It seems Arkwright had prepared for his patent to be attacked on enablement, but had not expected novelty to be an issue, and as a result had not come prepared, according to him, with sufficient evidence and witnesses. “Rule refused”.

      Then 14th November, 1785 (four days later):

      “The Court of King’s Bench gave judgment to cancel the letters patent.”

      I would suggest that both the Court of King’s Bench, and also the Lord Chancellor in the Office of Petty Bag had the authority, in common law to cancel the patent. Thus the question of whether cancellation was effected in the Court of King’s Bench or in the Office of Petty Bag in Chancery would have been a question of administrative convenience, not of legal standing, and certainly not an issue of whether this was effected in common law or in equity.

      Paging through John Davies, the rest of the cases included seem to suits for infringement. (They are thus not scire facias actions to invalidate patents.)

      This is followed by a substantial section on “Practical Observations“.

      Continuing paging through, I note that John Davis reaches eligible subject matter on p.424. Indeed the final paragraph on p.423 reads as follows:

      “Having shewn what is the subject of a patent, it now becomes necessary to cite some authorities shewing what is not the subject of a patent.”

      Given that I have only just reached this part of the book, I will conclude this sequence of comments with the first three paragraphs on page 424:

      “A principle cannot be a ground for a patent, because it is the first ground and rule for arts and sciences, or, in other words, the elements and rudiments of them: a patent must be for some new production from those elements, and not for the elements themselves.

      “If a principle alone be the foundation of a patent, it cannot possibly stand, though the invention may be a great improvement, yet the patent must be void ab initio.

      “A patent must be for a vendible matter, and not for a principle. The organization of a machine may be the subject of a patent, but principles cannot. A patent for the application of a principle, must be as bad as a patent for the principle itself. It seems impossible to specify a principle and its application to all cases; which furnishes an argument that it cannot be the subject of a patent.”

      The case that John Davies, in 1816, cited for these propositions was Boulton v. Bull.


      1. A Google search does not reveal loads of citations of John Davies (1816). One exception is a Ph.D. Thesis by Helen Mary Gubby (Erasmus Universiteit Rotterdam) entitled Developing a Legal Paradigm for Patents: the attitude of judges to patents during the early phase of the Industrial Revolution in England (1750s – 1830s), available at the following URL:

        link to

        Otherwise links to digitized stuff from the nineteenth century, a handful of academic papers, and links to rare book collections and booksellers.

      2. Boulton v. Bull, (2 Hen. 31, 463,) is discussed by Nelson in dissent in LE ROY ET AL. v. TATHAM ET AL., 55 U.S. (14 How.) 156 (1852) link to Le Roy is the very case that introduced into US law that one could not patent abstract idea, principles in the abstract.

    11. Posting again, to demonstrate, from a second independent and authoritative source that the issuance of writs of scire facias fell within the common law jurisdiction of the Court of Chancery.

      My source here is none other than Sir Edward Coke. He was Speaker of the House of Commons from 1592 t o 1593, Chief Justice of the Court of Common Pleas from 1606 to 1613, and Chief Justice of the Court of Kings Bench from 1613 to 1616 and subsequently an active opposition member of parliament.

      I quote from the Fourth Part of the Institute of the Laws of England (1817 edition). Chapter 7 discusses the Court of King’s Bench. On page 72 we find the following:

      “A scire fac’ to repeal a patent of the king may be brought in this court.”

      Chapter 8 discusses the Court of Chancery. On page 79 we find the following:

      “In the Court of Chancery are two courts, coram domino rege in cancellaria, wherin the lord chancelour or lord keeper of the great seale proceeds according to the right line of the law and statutes of the realm, secundum legem et consuet dinem Angliae. Another extraordinary according to the rule of equity, secundem aequum et bonum. And first of the former court.

      “He hath power to hold plea of scire fac’ for repeal of the kings letters patents, of petitions, monstrans de droits, traverses of offices, partitions in chancery, of scire fac’ upon recognisances in this court, writs of audita querela and scire fac’ in the nature of an audita querela to avoid executions in this court; […] In these if the parties descend to issue, this court cannot try it by jury, but the lord chancelour or lord keeper delivereth the record by his proper hands into the kings bench to be tried there; because for that purpose both courts are accounted but one, and after triall had to be remanded into the chancery, and there judgement to be given. […] Nota, the legal proceedings of this court be not inrolled in rolls, but remaine in filaciis beign filed up in the office of the pety-bag. Upon a judgement given in this court a writ of error doth lie retornabel into the king’s bench: the stile of the court of the kings bench is coram rege (as hath been said) and the stile of this court of chancery is coram domino rege in cancellaria, et additio probat minoritatem. And in this court the lord chancelour or the lord keeper is the sole judge: and in the kings bench there are four judges at the least.

      “This court is officina justitiae, out of which all originall write and all commissions which passe under the great seal go forth, which great seals is clavis regni, and for those ends this court is ever open.”

      [There follows a long quotation in Latin from Fleta. Coke continues.]

      “And this court is the rather alwayes open, for that if a man be wrongfully imprisoned in the vacation, the lord chancelour may grant a habeas corpus and do him justice according to law, where neither the kings bench nor common please can grant that writ but in the term time; but this court may grant it either in term time or vacation. So likewise this court may grant prohibitions at any time either in terme or vacation; which writs of prohibition are not retornabl: but if they be not obeyed, then may this court grant an attachment upon the prohibition retornable either in the Kings bench or common place.”


      “The officers and ministers of this court of common law doe principalyl attend and doe their service to the great seal, as the twelve masters of the chancery, whereof the master of the rols is the chief, who by their originall institution, as it is proved before, should be expert in the common law, to see the forming and framing of originall writs according to law, which are not of course; whereupon such are called in our ancient authors brevia magistralia. The clerk of the crown, the clerk of the hamper, the sealer, the chafe wax, the controller of the chancery, twenty four cursitor for making writs of course or formed writs according to the register of the chancery, the clerk of the presentations, the clerk of the faculties, the clerk examiner of letters patents, the clerks of the pettibag, and the fix atturnies. The processe in this court is under the great seal according to the course of the common law.

      “Having spoken of the court of ordinary jurisdiction, it followeth according to our former division, that we speak of the extraordinary proceeding according to the rule of equity, secundum aequum e bonum, wherein we will pursue our former order.”

      [We pass over here the discussion of equity jurisdiction, resuming on pages 87 and 88, where there is a discussion of scire facias.]

      “It is said before, that the chancelour by his ordinary power may hold plea of scire fac’ to repeale the kings letters patents under the great seal being always inrolled in this court, which we (to make a true derivation of his name) shall now particularly touch. This writ of scire fac’ to repeal letters patents doth lye in this ordinary course of justice in three cases. The first, when the king by his letters patents doth grant by severall letters patents one and the self same thing to several persons, the former patentee shall have a scire fac’ to repeal the second patent. Secondly, when the king granteth any thing that is grantable upon a false suggestion, the king by his prerogative jure regio may have a scire fac’ to repeal his own grant. Thirdly, when the king doth grant any thing, which by law he cannot grant, he jure regio (for the advancement of justice and right) may have a scire fac’ to repeal his own letters patents. Now the judgement in all these cases is, Quod praedictae litterae patentes dicti domini regis revocentur, cancellentur, evauentur, adnullentur, et vacuae, et involidae, pro nullo penitus habeantur et teneantur; ac etiam quod irrotulamentum corundem cancelletur, cassetur, et adnihiletur, etc. Hereof our lord chancelour of England (for forein chancelours, it may be, have not like authority) is called cancellarius, a cancellando, i a digniori parte, being the highest point of his jurisdiction to cancell the kings letters patents under the great seale, and damming the inrolment thereof, by drawing strikes through it like a lettice.”

      1. I see I made a few typos in the quote. There are also some variant spellings from 17th century english.

        Chapter 8 on the Court of Chancery in the Fourth Part of Coke’s Institutes is available on Google books here:

        link to

    1. That’s not the first rule.

      The first rule is that if you are going to question someone, know what you are talking about. Otherwise, the person that you are questioning may tear you apart (and rightully so).

      1. But anon, it seems that you think that first rule is to question everyone about everything, even if you know nothing about the topic, to make the readers think that you do know something the topic because it human nature to assume that people who question others know what they are talking about.

        1. Ned,

          My questioning is applied fully within the rule as I have stated.

          Your assertion that I “know nothing about the topic” is in plain error.

  2. OT, again. Please humor me.

    Continuing discussion of invalidation of letters patent under 18th century English law, trying the explore the implications for arguments directed towards the Seventh Amendment.

    Given that I have one short comment “awaiting moderation”, on an earlier posting, I am attempting the continue the thread here.

    First, for the record, I would like to place links to my three early 19th century digitized books relating to English patent law and the Court of Chancery, together with another law report, so that there are all available together in one place.


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

    (The link below should open at 2. Proceedings in the Petty-Bag Office, which, as the running head indicates, administered the common law jurisdiction of the Lord Chancellor.)

    link to


    John Dyer Collier, An Essay on the Law of Patents for New Inventions (1803)

    link to


    John Davies, A Collection of the most important cases respecting Patents of Invention and the Rights of Patentees (1820).

    (The author, John Davies, worked for three decades in the Rolls Chapel Office, presumably as one of the Clerks of the Records. This is the office that recorded, on parchment rolls, the records of the Court of Chancery, and, in particular, the issued Letters Patent and the specifications of inventions that patentees were obliged to supply for enrollment in the records.)

    link to


    Report on Bynner v. The Queen (Court of Queen’s Bench, Trinity Term, 1846.

    link to

    [I will now attempt to post.]

    1. [Continuing whilst awaiting moderation.]

      The above historical texts should be more than sufficient to prove that the procedure to repeal a patent through issuance of a writ of scire facias was a suit at common law. At least where the King was involved, the action commenced in the Petty Bag Office of Chancery, which handled the common law jurisdiction of the Lord Chancellor, then transferred to the Court of King’s Bench, where questions of fact were tried to a jury. If the verdict of the jury went against the patentee, then judgment was given in the Court of King’s Bench to cancel the patent. The Business then transferred back to the Petty Bag Office, so that the records held in the Rolls Chapel could be updated. Details of proceedings in King’s Bench are presented in some detail for The King v. Arkwright (1785) in John Davies’s Collection. In particular, judgment in the Court of King’s Bench cancelling the patent is explicitly recorded. The later case of Bynner v. The Queen made manifest that judgment in King’s Bench was final: there was no possibility of the patentee rescuing the patent before proceedings concluded in Chancery with the updating of the Patent Roll.

      Particular details are given in the earlier comments a few postings back at 11, with some relevant quotations:

      link to

    2. Next I want to raise a question, which I am in no position to answer.

      What consequences follow, under the US Constitution, with regard to invalidating a utility patent, from the fact that this is a grant of letters patent? In other words, what ls the status of letters patent under US law? And are proceedings at common law required to evacuate them?

      Question under US Law: the College of William and Mary in Virginia has a royal charter that takes the form of grant of letters patent issued by King William III and Queen Mary II. If the College were to seek to have the terms of the charter amended, or if amendment has already taken place, what procedures would they need to follow?

      I can show you what the situation is in one parliamentary democracy, formerly part of the United Kingdom of Great Britain and Ireland, that today is a republic, the Republic of Ireland.

      A number of universities, learned societies etc. have royal charters, granted by letters patent at a time when Ireland was a kingdom. From time to time, it is necessary and appropriate to vary the terms of the letters patent. Apparently this cannot be achieved by statute. Accordingly private acts of the Oireachtas (the Irish Parliament) are needed for such amendments. Some examples here:

      Royal College of Surgeons in Ireland (1965)

      link to

      Trinity College, Dublin (2000):

      link to

      Royal College of Surgeons in Ireland (2003):

      link to

      For good measure, here are the letters patent that constitute the royal charter of the Royal Irish Academy:

      link to

      If memory serves me correctly, shortly after establishment of the Irish Free State, the RIA discussed the possibility of a change of name to the National Irish Academy, or something similar, but found that they would need a private act of the Oireachtas, and the cost of this could not be justified.

      Wikipedia tells me that land patents in the USA give title to land granted. So my question is again, what follows under US law, from the fact that utility patents take the form of grant of letters patent?

      1. More “unraveling that shall be necessary if patents are deemed to not be personal property, but rather some type of “public right”…

      2. What consequences follow, under the US Constitution, with regard to invalidating a utility patent, from the fact that this is a grant of letters patent?

        A worthy question. I am scarcely any sort of expert here, so I do not have an answer for you. I do, however, have another question.

        I see a lot of citations here to show that issues of validity were tried to a jury. On the other had, I have seen many citations elsewhere to show that validity was not tried to a jury. This raises two possibilities:

        (1) One of these sets of citations is specious. For the most part, the cases cited by each side are so old that I am not able to find them in a published format without traveling to some specialty library. In other words, I have not read most of them, and therefore have no good way of knowing whether the scholar citing them is presenting them accurately. It is always possible, then, that one side of this argument has no data.

        (2) Both sets of citations are accurate, because practices on this point were not uniform. That is to say, actions to invalidate patents were brought so infrequently in the pre-1791 time frame, that there was not a lot of familiarity with how such processes were to proceed, either among the judges or among the lawyers. As a respect, each new trial largely invented its own processes anew, such that no two trials were governed by exactly the same procedural law.

        I cannot prove which option is correct, but I strongly suspect #2. If #2 is the case, what are the VII amendment implications. The VII amendment requires that we preserve the right to jury trial, which means that you only get such a right if there were such a right in the pre-1791. But what does that mean in situations in which pre-1971 one sometimes had such a right, and sometimes did not, with no discernible rule to separate the one situation from the other? Do we simply go with the last English case before 1791? Or do we try to figure out a “majority” trend to follow by counting up cases in each column to see which column is the longer?

        1. [I assume that, now I can see my own previous posts, and others can reply to them, that this one also will become visible without moderation.]

          Greg DeLassus, it may be premature to reply fully to your question.

          First of all, where am I coming from.

          I have no skin in this particular game. But I was intrigued by a comment from Ned Heller mentioning the “Court of Petty-Bag” some weeks ago, and thought that I would check it out. Once I found that it substantiated by old texts that seemed authoritative, I got hooked. I often get hooked on odd things of no interest to anyone, and spend hours researching them. Any concern I have here is on establishing what the facts are, and speculating as to how one would develop those facts into a Seventh Amendment argument. Whatever SCOTUS and/or CAFC decides, in any case, should be decided on the basis of true facts, so getting the history right seems important, whatever one’s views on IPRs. And, as Ned Heller has deduced, I am geographically and culturally closer to 18th century England than he is.

          So checking out Oil States briefs, I find this on p.6 of the opposition to certiorari brief:

          “Claims for annulment or cancellation of a patent–as distinct from claims of patent infringement–were traditionally brought before courts of equity, not resolved by juries. See Mowry v. Whitney, 81 U.S. (14 Wall.) 434, 440 (1872) (explaining, prior to the existence of administrative avenues for patent reconsideration, that ‘the appropriate tribunal for the annulling of a grant or patent from the government’ is ‘the chancery jurisdiction and its mode of proceeding’); Mark A. Lemley,
          Why Do Juries Decide If Patents Are Valid?, 99 Va. L. Rev. 1673, 1684 (2013) (‘[I]n England in the eighteenth century, only chancery courts had the power to revoke a patent upon request of a private citizen.’). Accordingly, common law history reinforces that the Seventh Amendment does not require such claims to be tried before juries.”

          So first task, is to try to establish, beyond reasonable doubt, that scire facias proceedings to cancel a patent were not “traditionally brought before courts of equity”.

          One could then go into the question of juries. But if it is established that proceedings were legal proceedings (in common law), and that the most cursory consultation of basic references would show this, then it seems to me that the credibility of the brief on related points is weakened, and either its supporting references are not reliable or else the conclusions of the academic research have been misinterpreted by the lawyers writing the brief.

          Moreover, for me, the historical details are in themselves fascinating, and that is in itself sufficient motivation to worry away at this matter in my leisure time.


          As always, IANAL, but there is a convenient law library not too far away. It did not take long to locate the shelves devoted to Equity. Loads of books with titles like Equity and Trusts. I picked a well-used textbook off the shelf, and looked up scire facias in the index to see where it brought me. The book I pulled down was the following:


          Its three authors are the following:

          The hon. Mr. Justice A. P. Meaher BA. LL.B. (Syd), a Judge of Appeal, Supreme Court of new South Wales, Lecturer (part-time) in Principles of Equity, University of Sydney.

          The hon. Mr Justice W.M.C. Gummow B.A. LL.M. (Syd) A Judge of the Federal Court of Australia. Lecturer (part-time) in Principles of Equity. University of Sydney.

          J.R.F. Lehane B.A. LL.M (Syd). Solicitory of the Supreme Court of New South Wales. Lecturer (part-time) in Principles of Equity. University of Sydney.

          So much for the authors. Looking up scire facias in the index directed me to a single numbered paragraph in the text. This is it, on page 4, concerning the history of the Court of Chancery:

          “[106.] Turning from the machinery of the court to its jurisdiction, one finds that the Chancellor had both a common law jurisdiction and an equitible jurisdiction. The common law jurisdiction, only of secondary importance, comprised (a) jurisdiction over certain writs, for example, pleas on the writ of scire facias to repeal letters patent or recognizances, and this eventually extended to issuing writs of habeas corpus; (b) cases concerning the King or a grantee of the King; for example petitions of right to recover property from the Crown; and (c) personal actions brought by or against officers of the Court of Chancery, each Court having jurisdiction over its own officials.”


          The improper deduction made in the opposition brief in Oil States is that cases brought in the English Court of Chancery are necessarily cases brought before “courts of equity”.

          To deal with the question of whether a court of common law in 18th century England could find facts without empanelling a jury will have to be a question for another day. (I did find a download of Webster’s Patent Cases, which is more extensive than John Davies’s collection.)

        2. Greg, I will assume for the sake of argument that the “other side” simply assumes that validity was not tried to a jury in scire facias actions filed in Chancery because generally that was a court of equity. If such is the case, then they say these things only because they are not actually familiar with the Petty Bag, or the proceedings with writs scire facias filed in Chancery.

          Give mean any examples of those who claim that validity was not tried at law and let’s see what really happened.

          1. Hm, given that English patents in 1791 did not have claims, and that therefore a discussion of invalidity is almost impossible to analogize to modern invalidity practice, I am not even sure what it might mean to say that validity was tried to a jury in 1791. It just seems to me impossible in principle to establish that, because the word “validity” means something so very different now than it did then.

            But, of course, if it is impossible to speaking meaningfully of validity being tried to a jury in 1791, then it also makes no sense to speak of “preserving” the right to a jury trial for matters of validity. There is nothing to “preserve,” because the cause of action that we are discussing simply did not exist in England in 1791. The more I look into this question, the more the VII amendment issue seems like a red herring.

              1. Dear Ned,

                I tend to trust your judgment on these matters, so if you think that my point is absurd, that gives me pause. However, I would appreciate, then, if you could flesh out the analogy for me more clearly. In a world without claims, a novelty contest amounts essentially to a determination that Inventor X did not invent the device that Putative Infringer Y is selling. It does not (cannot) amount to a determination that Inventor X did not invent the thing that Inventor X invented, because we really do not know what that is (because it is not claimed with any particularity).

                In other words, a ‘novelty’ contest in a world before claims is much more like a non-infringement determination than it is like the modern novelty invalidation inquiry. How, then, is that analogous to what goes on in an IPR (where infringement is never at issue)?

                1. Greg, the linked article, Dent, Chris. “Generally inconvenient: the 1624 statute of monopolies as political compromise.” Melb. UL Rev. 33 (2009): 415. link to, discusses the Statute of Monopolies in great detail. The article concludes that all the Statute did at the time was enact what the current common law regarding monopolies and patents for invention – that monopolies were generally against the common law but that patents for inventions comprising “new manufactures” were legal.

                  The Statute requires the validity of patents to be adjudged according to the common law, without actually saying what that law was. Thus implicitly, that law existed at the time of enactment.

                  As the Statute requires, patents could be granted for “new manufactures.” As the article describes at page 443-4, prior patents were invalidated because the inventions the patent specifications described were already known in England. Thus at least to the time of the Statute of Monopolies, the common law required that inventions to be unknown in England.

                  Our own statutes included requirement that the subject matter of patentable inventions generally referred to “new and useful” manufactures, also, machines, Arts, and compositions which are forms of manufactures, but with the further caveat that they not be “known or used” (by others) before the application. This is very much the same as the common law of England at the time of the Statute of Monopolies.

                  Thus, even though English patents were not subject to examination, they did include a brief claim to what was patented together with the specification. That was the basis for examination in a court of law regarding whether the claimed invention was in fact “new.”

                2. This is a comment relating to Ned Heller’s comment above with the link to the article by Chris Dent, which I read with interest. I note that, on page 451, the final paragraph before the conclusion, there is a discussion of monopolies on printing. I am taking this as a pretext for making a comment that I did not get round to making a few weeks ago.

                  A few weeks ago, around the time of oral argument in Impression Products v. Lexmark there was a guest post on Patently-0 by an academic who had investigated cases concerning infringement of patents(?) on printing bibles, and raising the question of the relevance of this for questions of international copyright exhaustion.

                  In assessing this, there is context that might well be considered.

                  In 17th century Britain, religious issues were matters of particular public concern, with questions regarding religion contributing significantly to a civil war fiercely fought in England, Scotland and Ireland, a revolution (the “Glorious Revolution” of 1688) and several other rebellions.

                  The King / Queen Regnant of England was, from the time of Elizabeth I, ex officio, “Supreme Governor of the Church of England”. Stuart Kings and Queens, and no doubt also Lords Protector (i.e. Oliver Cromwell) would surely have seen it a matter of vital national interest to ensure that the Word of God was correctly rendered and disseminated throughout the realm. No doubt the King of Scotland (who in this period, for dynastic reasons, just happened to be also King of England) had a like concern for the proper conduct of religion in his realm. And moreover the Church of Scotland was presbyterian in its ethos, whilst the Stuart kings from James I to James II were active in seeking to impose episcopalian order on that church. I suggest that, in such a context, questions of protecting the king’s “intellectual property” would have been seen of little importance, if such questions had indeed occurred to anybody at that time.

                  Also, regarding printing, “freedom of the press” had to be fought for. Obviously the printing of books and pamphlets would need to be regulated, and that would obviously imply regulating who could print.

                  Similarly regarding munitions.

                  And regarding the intersection of religion and gunpowder, have you ever heard of Guy Fawkes?

            1. t therefore a discussion of invalidity is almost impossible to analogize to modern invalidity practice

              Being contrarian again, I see, Gregg.

              However, you presume an identity requirement too much (hint: you are being pedantic again).

            2. What did ‘validity’ mean in those 18th century patent cases?

              I quote from The Law Dictionary website (featuring Black’s Law Dictionary (2nd edition).

              VALID: Of binding force. A deed, will, or other instrument, which has received all the formalities required by law, is said to be valid.

              INSTRUMENT: A written document; a formal or legal document in writing, such as a contract, deed, will, bond, or lease.

              So the issue tried at a scire facias action for annulment of letters patent is the validity of those letters patent.

              I emphasize that this concerns annulment of letters patent n general, not merely annulment of letters patent for inventions (even though the Statute of Monopolies had been in force for over 160 years by the time of The King against Arkwright). Letters patent have been issued in the United Kingdom for centuries, and are issued to this day for a multitude of purposes. It is beyond question, though, that, in the late 18th century and early 19th century, patents for inventions in England, Scotland and Ireland were letters patent, and thus were legal instruments conveying a grant of rights by the crown to a subject, where those rights implicated the liberty of other subjects of the crown. Because all subjects of the crown were entitled to inform themselves of any restriction of their liberties resulting from the grant of this instrument, the great seal had to be attached to the document in such a way that it remained open for inspection, hence the term letters patent.

              One can confidently presume that situations arose from medieval time onwards in which letters patent granted by the crown were discovered to be wrongly granted (because the king had allegedly been ‘misled’ by the petitioner seeking the patent), or the terms of such grants not been complied with by the patentee in circumstances where the provisions written into the patent voided the patent. Therefore medieval courts applied their ingenuity to develop a writ of scire facias, or more likely a new entitlement for seeking writs of scire facias, with an associated rather cumbersome but effective legal process under common law, that could be used to effect the cancellation of letters patent when the conditions required for their continued validity had not been fulfilled.

              I would suggest from this the consequence that the appropriate question, in the context of the relevance of the Seventh Amendment in modern US patent law is not how closely the laws governing ‘novelty’, ‘nonobviousness’ etc. match their precursors in 18th century English, Scottish and Irish law, but rather, to what extent do the rights, and limitations on those rights, granted by the issuance of a ‘utility patent’ by the USPTO, with the USPTO seal attached, match those that would be conveyed by the grant, by the crown, of letters patent (of any type) to a subject within the jurisdiction of England.

        3. Following up, with more detailed history, from F.W. Maitland, Equity, also The Forms of Action at Common Law (1st edn, 2010), available on here:

          link to

          First to check that this edition of the book is in the (copyright) public domain under the “death plus seventy years” rule. The author and editors are the following:

          Frederick William Maitland (1850–1906)

          Alfred Henry Chaytor (1869–1931)

          William Joseph Whittaker (1868–1931).

          Thus this text, freely available on the Internet, should indeed be in the public domain. The quote is from pages 2–4.

          [What follows below the tramlines is taken from Maitland’s Equity.]


          In Edward I’s day, at the end of the thirteenth century, three great courts have come into existence, the King’s Bench, the Common Bench or Court of Common Please and the Exchequer. Each of these has its own proper sphere, but as time goes on each of them attempts to extend its sphere and before the middle ages are over a plaintiff has often a choice between these three courts and each of them will deal with his case in the same way and by the same rules. The law which these courts administer is in part traditional law, in part statute law. Already in Edward I’s day the phrase ‘common law’ is current. It is a phrase that has been borrowed form the canonists—who used ‘jus commune‘ to denote the general law of the Catholic Church; it describes that part of the law that is unenacted, non-statutory, that is common to the whole land and to all Englishmen. It is contrasted with statute, with local custom, with royal prerogative. It is not yet contrasted with equity, for as yet there is no body of rules which bears this name.

          One of the three courts, namely the Exchequer, is more than a court of law. From our modern point of view it is not only a court of law but a ‘government office,’ an administrative or executive bureau; our modern Treasury is an offshoot from the old Exchequer. What we should call the ‘civil service’ of the country is transacted by two great offices or ‘departments’: there is the Exchequer which is the fiscal department, there is the Chancery which is the secretarial department, while above these rises the king’s permanent Council. At the head of the Chancery stands the Chancellor, usually a bishop, he is we may say the king’s secretary of state for all departments, he keeps the king’s great seal and all the already great mass of writing that has to be done in the king’s name has to be done under his supervision.

          He is not yet a judge, but already he by himself or his subordinates has a great deal of work to do which brings him into a close connexion with the administration of justice. One of the duties of that great staff of clerks over which he presides is to draw up and issue those writs whereby actions are begun in the courts of law—such writs are sealed with the king’s seal. A man who wishes to begin an action must go to the Chancery and obtain a writ. Many writs there are which have been formulated long ago; such writs are writs of course (brevia de cursu), one obtains them by asking for them of the clerks—called Cursitors—and paying the proper fees. But the Chancery has a certain limited power of inventing new writs to meet new cases as they arise. That power is consecrated by a famous clause of the Second Statute of Westminster authorising writs in consimili casu. Thus the Chancellor may often have to consider whether the case is one in which some new and some specially worded writ should be framed. This however is not judicial business. The Chancellor does not hear both sides fo the story, he only hears the plaintiff’s application, and if he grants a writ the courts of law may afterwards quash that writ as being contrary to the law of the land.

          But by another route the Chancellor is brought into still closer contact with the administration of justice. Though these great courts of law have been established there is still a reserve of justice in the king. Those who can not get relief elsewhere present their petitions to the king and his council praying for some remedy. Already by the end of the thirteenth century the number of such petitions presented in every year is very large, and the work of reading them and considering them is very laborious. In practice a great share of this labour falls on the Chancellor. He is the king’s prime minister, he is a member of the council, and the specially learned member of the council. It is in dealing with these petitions that the Chancellor begins to develop his judicial powers.

          In course of time his judicial powers are classified as being of two kinds. it begins to be said that the Court of Chancery, ‘Curia Cancellariae’—for the phrase is used in the fourteenth century—has two sides, a common law side and an equity side, or a Latin side and an English side. Let us look for a moment at the origin of these two kinds of powers, and first at that which concerns us least.

          (1) Many of these petitions of which I have spoken seek justice not merely from the king but against the king. If anybody is to be called the wrong doer, it is the king himself. For example, he is in possession of land which has been seized by his officers as an escheat while really the late tenant has left an heir. Now the king can not be sued by action—no writ will go against him; the heir if he wants justice must petition for it humbly. Such matters as these are referred to the Chancellor. Proceedings are taken before him; the heir, it may be, proves his case and gets his land. The number of such cases, cases in which the king is concerned, is very large—kings are always seizing land on very slight pretexts and forcing other people to prove their titles. Gradually a quite regular and ordinary procedure is established for such cases—a procedure very like that of the three courts of Law. The proceedings are enrolled in Latin—just as proceedings of the three courts of law are enrolled in Latin (hence the name ‘Latin side’ of the Court of Chancery)—and if a question of fact be raised, it is tried by jury. The Chancellor himself does not summon the jury or preside at the trial, he sends the question for trial to the King’s Bench. All this is by no means unimportant, but it does not concern us very much at the present time.

          (2) Very often the petitioner requires some relief at the expense of some other person. He complains that for some reason or another he can not get a remedy in the ordinary course of justice and yet he is entitled to a remedy. He is poor, he is old, he is sick, his adversary is rich and powerful, will bribe, or will intimidate jurors, or has by some trick or some accident acquired an advantage of which the ordinary courts with their formal procedure will not deprive him. The petition is often couched in piteous terms, the king is asked to find a remedy for the love of God and in the way of charity. Such petitions are referred by the king to the Chancellor. Gradually in the course of the fourteenth century petitioners, instead of going to the king, will go straight to the Chancellor. will address their complaints to him and adjure him to do what is right for the love of God and in the way of charity. Now one thing that the Chancellor may do in such a case is to invent a new writ and so provide the complainant with a means of bringing an action in a court of law. But in the fourteenth century the courts of law have become very conservative and are given to quashing writs which differ in material points from those already in use. But another thing that the Chancellor can do is to send for the complainant’s adversary and examine him concerning the charge that has been made against him. Gradually a procedure is established. The Chancellor having considered the petition, or ‘bill’ as it is called, orders the adversary to come before him and answer the complaint. The writ whereby he does this is called a subpoena—because it orders the man to appear upon pain of forfeiting a sum of money, e.g., subpoena centum librarum. It is very different from the old writs whereby actions are begun in the courts of law. They tell the defendant what is the cause of action against him—he is to answer why he assaulted and beat the plaintiff, why he trespassed on the plaintiff’s land, why he detains a chattel which belongs to the plaintiff. The subpoena, on the other hand, will tell him merely that he has got to come before the Chancellor and answer complaints made against him by A. B. Then when he comes before the Chancellor he will have to answer on oath, and sentence by sentence, the bill of the plaintiff. This procedure is rather like that of the ecclesiastical courts and the canon law than like that of our old English courts of law. It was in fact borrowed from the ecclesiastical courts, not from their ordinary procedure but from the summary procedure of those courts introduced for the suppression of heresy. The defendant will be examined upon oath and the Chancellor will decide questions of fact as well as questions of law.

          [Maitland is embarked on the story of the origins of Equity, as a distinct body of jurisprudence with procedures and remedies distinct from those of the common law. The story continues, but I will break off here.]

        4. Next find: A Treatise on the Law and Practice Relating to Letters Patent for Inventions, by John Paxton Norman (1853).

          link to

          Chapter XXI (page 194), sets out in considerable detail all the steps and requirements of prosecuting a writ of scire facias to repeal letters patent. Of course scire facias had been around since medieval times. Therefore if someone were to suggest that this reference is too late to establish practice in 1791, I suggest that the burden of proof should lie on that purpose to show any meaningful change in the common law procedure. Some administrative details of procedure in the Petty-Bag office did nevertheless change.

          Quoting material relevant to jury trial (p.203 onwards):

          “28. The Chancellor, though a common law judge, has no power to summon a jury. Therefore, if there are issues in fact, the Court of Chancery cannot try the issues, but the Lord Chancellor delivers the record by his proper hands into the common law court, the name of which is indorsed on the writ to be tried there.

          “If there be issues in law and fact, the whole record must be sent into the court of common law; for there cannot be a judgment of the Chancellor upon one part of the record, and a judgment of the court of common law upon another part of the same record.

          “Where there are several defendants, and some of them plead to issue, and the others demur, the whole record must come to the court of common law, which shall give judgment both on the verdict and demurrer.

          “When there is a demurrer only, it has sometimes been the practice to determine it in the Court of Chancery, without transmitting it into the Court of Queen’s Bench. But although it is the practice to adjudge demurrers in law joined in Chancery before the Lord Chancellor, yet the Court of Chancery may, if it will, adjourn any cause either before or after demurrer or issue joined.


          “32. Upon the transcript of the record being brought into the court of common law, the Court may proceed to try the issue, either at Bar or at Nisi Prius, as such court shall think fit.


          “34. The superior courts of common law, and the judges thereof respectively, are to have the same powers in respect of the transcript of any record, and the pleadings, issues, and matters therein contained, as they would have with respect to the record in any action commenced and pending in such court.


          “37. On the trial of any proceedings in scire facias, the defendant is entitled to begin and give evidence in support of the letters patent; and in case evidence shall be adduced on the part of the prosecutor impeaching the validity of the letters, the defendant shall be entitled to the reply. The burden of proof is apparently not affected by this enactment. The onus of proving the truth of the suggestions in the scire facias will still lie upon the prosecutor. If the jury find that the case is left in doubt, they must find a verdict for the defendant.

          “38. It has been doubted whether a defendant is entitled to tender a bill of exceptions, the king not being named in the statute of Westminster. There are several instances in which it has been allowed.


          “40. Where the judgment of the court of common law is in favour of the patentee, it is the practice to enter up final judgment for the patentee in the court of common law, because nothing remains to be done in the Court of Chancery. Judgment was so entered in The Queen v. Mill.

          “41. When judgment is given for the Crown, final judgment may be given in the Court of Queen’s Bench to cancel the patent, though the letters patent remain in the Court of Chancery. The Court has authority to award the judgment, and afterwards to transmit either the record or the terms thereof to the Court of Chancery, to be fully carried into execution. The cancellation of the letters patent has been said to be a mere ministerial act. But it seems to be doubted, whether the Lord Chancellor would consider it as such.


          “45. The judgment of the Court of Queen’s Bench may be, that the letters patent be revoked, cancelled, vacated, disallowed, annulled, and held void, and that the enrolment be cancelled and annulled, and that the letters patent be restored into the Court of Chancery, there to be cancelled.

          1. I quoted Norman to the Federal Circuit, fyi, Distant.

    3. Just found and skimmed another historical patent text.

      William Hands, The Law and Practice of Patents for Inventions (1808)

      link to

      Most of this reproduces in detail the paper trail generated by applying for a patent, being granted a patent, submitting a bill to Parliament to extend the term, etc.

  3. I recall, early in my career, a senior attorney saying he wouldn’t rely on the PTO for legal advice. Over the years my own experience has led me to the same conclusion. I pity the poor pro se inventor who postulates the PTO will provide proficient prescriptions for his problems and help him procure practical patents.

  4. Now, this is interesting. Forests decrease albedo and cause global warming. I thought the whole point of the global warming treaty was to plant trees.

    “Abstract. Increased carbon storage with afforestation leads to a decrease in atmospheric carbon dioxide concentration and thus decreases radiative forcing and cools the Earth. However, afforestation also changes the reflective properties of the surface vegetation from more reflective pasture to relatively less reflective forest cover. This increase in radiation absorption by the forest constitutes an increase in radiative forcing, with a warming effect. The net effect of decreased albedo and carbon storage on radiative forcing depends on the relative magnitude of these two opposing processes.”

    link to

    1. “I thought the whole point of the global warming treaty was to plant trees.”

      Are you sure you have a science background?

      1. Maybe your question is better put to: M. U. F. Kirschbaum, D. Whitehead, S. M. Dean, P. N. Beets, J. D. Shepherd, and A.-G. E. Ausseil.

        Or did you merely reply without bothering with the link at all, patentcat?

        Maybe this link will help:

        link to

        1. Clearly the problem is his understanding of the climate treaty, tweedledumber.

          1. My reply was focusing on the other aspect of your comment: the snide comment of “Are you sure you have a science background?

            un-X your eyes please.

      2. patentcat, I only half follow the topic. I recall that countries could swap carbon sinks with pollution, and that trees were considered to be carbon sinks.

        But, it appears that trees are a mixed blessing.

        1. Point is not to plant trees, but lower CO2 emissions; tree provision is pretty insignificant.

        2. For what it’s worth, I was also taken aback by your summary of the article. The abstract states: “Averaged
          over the whole length of the rotation, the changes in
          albedo negated the benefits from increased carbon storage by
          17–24%.” It’s crystal clear that trees are a net negative forcing.

          1. Oh no I guess we shouldn’t do anything, let’s just throw up our hands, shrug, and give up.

            1. That’s a completely incoherent response. I didn’t say that trees are ineffective. And even if trees were entirely ineffective there are other potential solutions. Save the empty outrage for the i.(____) crowd.

              1. Wrong person replied to. Was trying to be sarcastic.

          2. Ben,

            I think you have arrived at exactly the wrong conclusion.

            1. My conclusion was that trees are a net negative forcing.

              Of course, anyone with even the most passing familiarity of the subject understands that ‘forcing’ refers to the effect on the energy balance. A negative forcing reduces the atmospheric energy balance, i.e., decreases the temperature, i.e., is GOOD.

              Reviewing the paper in more depth, it looks like there is a transitory net positive forcing before year 5 or so. But that isn’t relevant since no one is suggesting razing and replanting forests every 5 years.

              So free to explain how trees are a net positive forcing.

              1. Ben,

                It is a bit more nuanced than that.

                From the conclusion(emphasis added):

                Our calculations showed that under New Zealand conditions, plantation establishment had a significant overall net cooling effect. While albedo changes reduced the overall tree-planting benefit, carbon storage was of greater quantitative importance. This finding CONTRASTS with the findings for boreal regions where albedo changes can be quantitatively more important than carbon storage, giving a net warming effect of tree plantations(Betts, 2000).

  5. Pro o Se can you see
    That these claims ain’t quite right…

  6. Have there been any studies of how pro se patents fair in litigation? My assumption is not well.

  7. I reviewed two cases the other day where potential client needed assistance filing overseas. Pro se applicant with two or three issued patents/allowed application and pending applications and PCT they filed on their own. Examiner “helped” all over the place. What a load of CRAP! Limitations in the base claim from two different disclosed embodiments, all sorts of unnecessary crap (e.g., nylon screws, leather strap, brackets) wholly unnecessary to describe the inventive concept.

    Inventor had originally filed a list of benefits as the claims, not understanding how claims work. Examiner “worked” with the applicant going back and forth, allowing the applicant to “build” a set of claims with give and take. Finally, Examiner says, “That’s good there!”

    Examiner had NO BUSINESS doing what he did, and I seriously considered sending in a grievance against him. They are NOT looking out for the applicant’s best interests; they are simply trying to get them a patent. At the end of the day, the patentee has a load of worthless crap. (I had advised filing an RCE in re the allowed case to straighten things out and filing continuations of the others to take care of the mess before going foreign, but never heard back……… horse, water, do what you want…….)

    1. It is not easy for a fee-based attorney to convince a pro se inventor that a patent examiner is not there to help him write the broadest possible claim, or solve all other problems pro se prosecution may have created.
      I guess you could at least suggest to the pro se inventor that after the patent issues and they fail to get any licensing interest, hopefully avoiding being ripped off by one of those invention promotion companies, that they might be able to file a broadening reissue application for two years after the patent issues?

      1. I gave him a thorough explanation of what was wrong. Like I said, horse, water……

  8. Examiners should be “understanding and helpful in every regard”… Unfortunately they are not.

    Really? I have little experience dealing with examiners outside of the 1600s, but at least within the 1600s, almost all of the examiners I deal with are professional in demeanor and reasonably competent. Interactions with the rude or useless ones tend to stick more prominently in one’s memory, but that does not change the fact that the overwhelming majority with whom I have had to deal were understanding enough and helpful enough. Worse luck if that has not been your experience.

    1. I deal mainly with examiners in TC 1700 and TC 3700 and they are awful. Just awful.

      1. Do you mind sharing how they are “awful” in say 2 or so scenarios?

        If you’re talking about softies and biz methods then I can perhaps understand a bit, as they probably have people making unreasonable in the extreme “arguments” day in and day out. But other than that I can scarce believe that examiners are all that “awful” on the regular.

        1. Have an application in AU 3744. The examiner is interpreting two pipes that are clearly coaxial as “parallel.” I’ve explained 3 or 4 times that no, they are coaxial, not parallel. Had to appeal. Filed my brief. Got a ridiculous examiner’s answer where the examiner provided a “summary of the issue” for the Board that was a complete mischaracterization of our claims, our arguments, the prior art, etc. I noted all the nonsense in the answer and paid the brief forwarding fee.

          About 5 months after the case was given its appeal docketing number, the TC Director had it remanded to the examiner for “further consideration.” In other words, the examiner’s being told, “Your rejection is garb#ge. Do the case over.”

          Can’t wait to see what comes next.

          Have a case in TC 1700. In response to the first action, I deleted one word from each of the first and third independent claim to respond to a 112. No amendments to the second independent claim. Second action non-final. Request for reconsideration. Third action non-final. Request for reconsideration. Fourth action final rejection. Appeal brief. Re-opened prosecution and fifth action non-final. Second appeal brief. The examiner calls me about 5 months after the second appeal brief and asks if I’d be willing to roll up the first dependent claim in each claim set into the independent claim. I say no. The claims are allowable as they are. Two weeks later I get a notice of allowance.

          Why do I have to go through all that to get what I was entitled to about 3 years ago?

          I have an SPE in TC 1780 who has his juniors cite all the usual boilerplate case law, e.g. In re Best, Titanium Metals, Wertheim, etc. When I conduct an interview he never lets the junior say a word and when I explain why none of the cases apply to the application, he tells me, “Well, I don’t want to consider a bunch of legal arguments. You need to show criticality or unexpected results.” I explain that no, I don’t. And why. And when I appeal he has the junior re-open.

          He’s a legal ign0ramus. He has no understanding of the law whatsoever. His juniors never respond to my traversals and instead just repeat, verbatim, the rejection language in their “response to arguments” section of their OA’s.

          He told me in my last interview that he really wants to give me a patent, but that I have to help him (!) by submitting evidence of unexepected results. When I explain that I don’t have to, and why, he just mumbles, “It’s inherent” (a concept which he clearly has zero understanding of).

          I have quite a few cases in his AU. And he’s a f#ck!ng m0r0n.

        2. Have an application in AU 3744. The examiner is interpreting two pipes that are clearly coaxial as “parallel.” I’ve explained 3 or 4 times that no, they are coaxial, not parallel. Had to appeal. Filed my brief. Got a ridiculous examiner’s answer where the examiner provided a “summary of the issue” for the Board that was a complete mischaracterization of our claims, our arguments, the prior art, etc. I noted all the nonsense in the answer and paid the brief forwarding fee.

          About 5 months after the case was given its appeal docketing number, the TC Director had it remanded to the examiner for “further consideration.” In other words, the examiner’s being told, “Your rejection is garb#ge. Do the case over.”
          Can’t wait to see what comes next.

          Have a case in TC 1700. In response to the first action, I deleted one word from each of the first and third independent claim to respond to a 112. No amendments to the second independent claim. Second action non-final. Request for reconsideration. Third action non-final. Request for reconsideration. Fourth action final rejection. Appeal brief. Re-opened prosecution and fifth action non-final. Second appeal brief. The examiner calls me about 5 months after the second appeal brief and asks if I’d be willing to roll up the first dependent claim in each claim set into the independent claim. I say no. The claims are allowable as they are. Two weeks later I get a notice of allowance.

          Why do I have to go through all that to get what I was entitled to about 3 years ago?

          I have an SPE in TC 1780 who has his juniors cite all the usual boilerplate case law, e.g. In re Best, Titanium Metals, Wertheim, etc. When I conduct an interview he never lets the junior say a word and when I explain why none of the cases apply to the application, he tells me, “Well, I don’t want to consider a bunch of legal arguments. You need to show criticality or unexpected results.” I explain that no, I don’t. And why. And when I appeal he has the junior re-open.

          He’s a legal ign0ramus. He has no understanding of the law whatsoever. His juniors never respond to my traversals and instead just repeat, verbatim, the rejection language in their “response to arguments” section of their OA’s.

          He told me in my last interview that he really wants to give me a patent, but that I have to help him (!) by submitting evidence of unexepected results. When I explain that I don’t have to, and why, he just mumbles, “It’s inherent” (a concept which he clearly has zero understanding of).

          1. 1780s are a cluster-f. The SPEs seem to believe you have to prove Patent worthy claims not the other way around.
            Spending 4 years as a that work group was aweful, so hard to explain to attorneys why I was rejecting their red pen with a blue one without flat out saying BC my SPE takes pride in not allowing any claims less than a page. Being told your allowing too many cases but without​ any official reviews showing missed art. being told the amendment is new matter BC they never contemplated that narrower range it was only done to avoid the art. And so much more.

          2. How does all the substantive ignorance/legal ignorance etc. that you just got through telling us about somehow bear at all on how helpful/understanding the staff is in a customer service sort of fashion? You’re complaining about the work product, not the customer service.

            1. The “customer service” as you put it 6, IS the work product (that is, the NON-delivered work product of an actual full and proper examination in accordance with the actual law).

              Your “service” is that very substantive and legal aspects as applied to each application.

              If you don’t know what you are supposed to be doing, no amount of “politeness” covers for the lack of service.

              You really should know what your job is (and most definitely that is something in contrast to ANY internal measurement of how you are doing that job).

              1. “IS the work product ”

                Um no, it literally, as a factual matter, is not. There is no disputing this for it is a factual matter/definitional matter that is beyond your control. If you don’t yet understand it that’s your problem brosefulous. I’m not going to sit around and try to spell it out for you all that much because I think you’re being willfully obtuse because you already know the difference between a pair of pants at Target and how cheery and helpful the cash register girl is.

                “Your “service” is that very substantive and legal aspects as applied to each application.”

                You’re confusing the “work product” and the “customer service” (distinct from what you’re calling a “service”).

                “If you don’t know what you are supposed to be doing, no amount of “politeness” covers for the lack of service.”

                I tend to agree with you, but that isn’t the subject of this thread or the original post wayyyyyy up top. I would also note however that examiners as a whole are never going to completely “know what they’re supposed to be doing” because they aren’t lawlyers, and neither are they supposed to be. The trouble AAA is running into is specifically most of why he has a job, to overcome the bad substantive things the PTO does.

            2. That doesn’t seem entirely right 6.

              Your hostesses’ attitude is customer service. The steak is work product. But the hostesses’ inability to remember your order is a bit of both when its detrimental to your steak.

              (That said, I’ve never seen behavior like that described by AAAJJ)

              1. Your analogy is a bit off, Ben.

                Examiners are neither hosts nor chefs – they neither “take your order” or “cook your order.”

                Examiners examine.

                That is what they do.

                That is ALL that they do.

                Examining must take into account – exactly as I have stated – the actual full and proper examination in accordance with the actual law.

                6’s attempt to play some type of “control” factual basis in his reply to me is pure poppyc0 ck.

                It is not a “seem entirely right” situation.
                It is a “6 is entirely wrong” situation.

                1. “That is ALL that they do.”

                  Not true at all. We talk to attorneys on the phone quite often. Some examiners talk to many pro se’s on the phone quite often, or talk to them in person (as is the subject of this thread). None of those things are usually the examination proper so to speak. And they are generally where the office is to be “understanding” “helpful” etc. although those can happen on occasion in the examination proper. There’s a whole pap element for this anon. Sorry that you don’t like that is how things are broken down, but them’s the apples brosefulous.

                2. None of those things are usually the examination proper so to speak.

                  Are you talking about the weather?

                  Or are you talking about something that you are being paid to do? That is – and YES, proper to speak – a facet of examining?

              2. “But the hostesses’ inability to remember your order is a bit of both when its detrimental to your steak.”

                Might be somewhat true, but nobody at the PTO has to “remember” your “order”, you have to submit it in writing (all business in writing blah blah blah rules). And for that matter, everyone “orders” the same thing at the PTO, they want an examination. Still, as to your analogy, I do believe in the industry that is considered to be more of a “the product was wrong” sort of a thing regardless of how that came about.

                But I do understand what AAA and anon are constantly btching about and how they confuzzle it into a thousand different things because they don’t know much about what they’re talking about from an administration point of view.

                1. And for that matter, everyone “orders” the same thing at the PTO, they want an examination.

                  Lol – sounds just like what I said!

                2. and how they confuzzle it into a thousand different things because they don’t know much about what they’re talking about from an administration point of view.

                  You really could not be more wrong on this point, 6.

                3. I know all of the details of your PAP and your production system. And I don’t care. Do the job correctly. If you don’t “know the lawl” then learn it. From me or from somebody else who does know what it is. It’s not acceptable to say, “I’m not a lawyer, so I can’t respond to ‘legal’ arguments. All I care about are my counts.”

                4. “If you don’t “know the lawl” then learn it”

                  I know it pretty well thanks. Doesn’t matter. It isn’t a hard req for everyone else. This discussion isn’t about me or any other individual. It is about the topic in the original post by D. I know, I know, you want to make it about a different topic SOOOOO badly, as you near always do. But try to stay on topic.

                  “It’s not acceptable to say, “I’m not a lawyer, so I can’t respond to ‘legal’ arguments.”

                  Sure it is, you yourself testify that you’ve witnessed these sorts of things about a thousand times. They, or the spe/primary, will never get hit with a clear error for it (nor should they), so how on earth would it “not be acceptable”? Other than in your subjective mind brain I mean. Rather I’m referring from an administrative stand point.

                  Indeed, as you testify, they don’t even have to explicitly say “I’m not a lawlyer, so I ‘can’t’ respond to ‘legal’ arguments”. Most of them wouldn’t even know that they’re “not responding” or are “ignoring” xyz legal argument because they don’t even recognize what is being argued, or the nature thereof, or necessarily that there is something of note being argued. If they don’t even know what a fact is, or how to find a fact, which is often the case, how would they possibly know what on earth you’re talking about when you ask them to compare facts from a caselaw case to the instant case? Etc. etc. for the different situations.

                  Bottom line, they’re not lawlyers. Don’t expect legal “helpfulness” from them. It is wholly unreasonable to.

                  “All I care about are my counts”

                  I think you’d be surprised, conscientiousness is actually rather high in the PTO compared to the general population. The issue of course is that they don’t even know the underpinnings of how to do things right, according to lawlyers as opposed to according to their boss, much less how to do things exactly “right”.

                  But you just set that aside conveniently like “wwwweeeeeeee”.

                5. “I know it pretty well thanks.”

                  No. You don’t.

                  “Doesn’t matter. It isn’t a hard req for everyone else.”

                  You’re telling me that the examiners are not required to know the legal requirements for a proper rejection? That’s ridiculous.

                  “This discussion isn’t about me or any other individual. It is about the topic in the original post by D. I know, I know, you want to make it about a different topic SOOOOO badly, as you near always do. But try to stay on topic.”

                  I am on topic.

                  “Most of them wouldn’t even know that they’re ‘not responding’ or are ‘ignoring’ xyz legal argument because they don’t even recognize what is being argued, or the nature thereof, or necessarily that there is something of note being argued.”

                  So examiners aren’t taught what MPEP 707.07(f) means?

                  “If they don’t even know what a fact is, or how to find a fact, which is often the case, how would they possibly know what on earth you’re talking about when you ask them to compare facts from a caselaw case to the instant case?”

                  So examiners are taught anything about MPEP 2144.04.

                  It seems to me that about a month or so ago I watch a PTO webinar with SPE Gary Welch and he assured the audience that examiners are taught “how to apply case law” AND “how to respond to applicants arguments” about the cited case law.

                  Are you telling me that the PTO doesn’t provide that training?

                  “Bottom line, they’re not lawlyers. Don’t expect legal ‘helpfulness’ from them. It is wholly unreasonable to.”

                  But the PTO, via Ms. Matecki, wants to give itself a big old pat on the back that these people, who you say no absolutely nothing about the law, and aren’t even required to know anything, write claims for pro se applicants.

                  Who’s being unreasonable?

                6. Brosefulous I need you to stay on target. You’re out in the weeds. If you let your fear take over you’re going to get shot down. The target for today is the being of helpful and understanding of the PTO’s staff. The target today is not their legal acumen which we both already know as a fact is low.

                  link to

              3. “(That said, I’ve never seen behavior like that described by AAAJJ)”

                Lulz. 50+% of cases that get pre-appealed or appealed get re-opened. But no examiner posting on the interwebz has ever done it. Or even seen it.

                Too funny.

                1. Almost as funny as all the examiner views “on the law,” when half those same examiners turn around and whine that “we are not lawyers.”

                2. Anon brosef it isn’t their fault that the internal staff that taught them taught them somewhat different than you were indoctrinated by a court system and a lawlschool. And yes, they have to take at least some legal position just to carry out any legal conclusion making, like 103 etc.

                3. brosef it isn’t their fault

                  Wrong again 6 – the law simply is NOT the subjective, make it be whatever you want it to be thing that you like to pretend it to be.

          3. The claims are allowable as they are. Two weeks later I get a notice of allowance.

            Why do I have to go through all that to get what I was entitled to about 3 years ago?

            Anyone care to bet on the validity of these claims after a ten minute analysis by a competent attorney?

            1. You quite miss the point here, Malcolm.

              The claims should be valid (or not) as determined by the examiner – the first time through and REGARDLESS of what AAA JJ has done or said.

              If not, why are we even bothering with a multi-Billion (yes, BILLION) dollar “tax” from innovators for examination at all?

              1. “If not, why are we even bothering with a multi-Billion (yes, BILLION) dollar “tax” from innovators for examination at all?”

                To be clear anon, most of it is for show. Specifically show that our society, and political branch, at least tries to be responsible in hand out the entitlements it is handing out.

                That’s what a lot, if not outright most, of actual gubmit administrative tasks are for btw.

                1. Somewhat anon. But he certainly isn’t making any gestures towards get ting ri d of like 99% of the administ rative s how going on in gub m it.

            2. No competent attorney would give an opinion in ten minutes.

              But you would.


        3. An examiner in TC 2600 misquoted my claim in order to make his rejection appear reasonable. I brought it to his attention politely and respectfully. Now he is sitting on it. I doubt he will ever issue another office action in the case.

    2. Greg,

      Apologies for the delay, but I have now provide a capsule reply to several points of yours on a now older thread:

      link to

  9. Examiners should be “understanding and helpful in every regard” whether the applicant is representing themself pro se or represented by a registered practitioner.

    Unfortunately they are not.

    I wonder why that is?

    1. You wonder why a large organization doesn’t have perfect customer service 100% of the time? I think that reflects more on you than the PTO.

      1. Nice strawman, Ben.

        Pretty darn sure that no one is expecting that “100% all the time” thing that you added in there.

        1. AAAJJ didn’t bother to qualify his complaint whatsoever. I feel fine about treating his weasel words like they were written by a donkey.

          1. Your feelings are noted.

            As is your very own Donkey actions.

      2. “I think that reflects more on you than the PTO.”

        Why is that?

        1. I think he’s just saying you’re du mb AAA. But overall I do tend to agree with you in so far as examiners should be helpful etc. Still I do question whether or not you might be having unrealistic expectations, just simply because I know how you personally are.

          1. Still I do question whether or not you might be having unrealistic expectations, just simply because I know how you personally are.

            Now that is funny.

            1. My expectation is that the examiner is going to do what the examiner is supposed to do: examine the application. And not simply dig in their heels on their initial rejections because that’s what they’ve been taught to do to get first class passage on the RCE gravy train.

          2. “Still I do question whether or not you might be having unrealistic expectations…”

            My “expectations” are pretty simple: the examiner will provide what the law requires for a proper rejection and when I point out the errors in the rejection they will either withdraw the rejection or answer the substance of my argument(s).

            When examiners cite case law to support their rejection, and I explain why the case law doesn’t apply to the application, I expect to get what should have been provided in the first place (an explanation of how the facts of the case are sufficiently similar to the application) and in the absence of an explanation I expect the rejection to be withdrawn.

            But that’s not what happens. The rejection gets repeated and no explanation and answer is provided.

            In 18 years of practice I have never once had an examiner either provide the explanation of sufficient similarity in the first instance of citing the case law, and never once had an explanation provided in response to my arguments.

            Not once. Not once. In eighteen years.

            Same goes with rejections relying on inherency, Official Notice, drawings not disclosed as being to scale, etc. The rejections get made, I point out the error, and the rejections just get repeated with no answer to the arguments.

            Are my expectations to high? I don’t think so.

            1. First I’d like to legit thank you for putting pen to page to explain some of your expectations in detail.

              “Are my expectations to high?”

              Actually reading through them I’m afraid I do have to say yes. And I can explain why if you’d like. In excruciating detail.

              1. Please do so 6 – it may provide this weekend’s entertainment.

              2. I’m sure your excuses would be quite amusing. Feel free to elucidate.

                1. It has nothing to do with excuses, it has to do with facts. Facts with which you’re mostly familiar already but forever decline to acknowledge.

                  1. examiners are not lawlyers and in many cases are not even familiar with “hur what da lawl requires”.

                  2. When you “point out errors in the rejection” you have to be persuasive in addition to merely pointing out errors (or what you believe to be an error in your mind brain).

                  3. It is a fact that examiners do not, as an administrative matter, go around “making comparisons of the facts to hur caselawl”, nor are they strictly required to under 35 U.S.C 103. Though I know, I know, you think they are, in your mind brain, even though as a factual, legal and administrative matter, they aren’t.

                  But in any event brosef, regardless of the specifics of each of those little situations: Yes, as compared to what these pro se’s comments are about, your expectations are otherworldly high.

                  You’re literally trying to get legal/lawlyer help out of non-lawlyers. It’s hilarious.

                2. “1. examiners are not lawlyers and in many cases are not even familiar with ‘hur what da lawl requires’.”

                  So if they’re “not even familiar with” what the law requires for a proper rejection, how are they doing the job correctly?

                  “2. When you ‘point out errors in the rejection’ you have to be persuasive in addition to merely pointing out errors (or what you believe to be an error in your mind brain).”

                  I am.

                  “3. It is a fact that examiners do not, as an administrative matter, go around ‘making comparisons of the facts to hur caselawl’, nor are they strictly required to under 35 U.S.C 103. Though I know, I know, you think they are, in your mind brain, even though as a factual, legal and administrative matter, they aren’t.”

                  Yes. They are. See MPEP 2144.04. See the APA. If you’re gonna cite case law to support a rejection, then you’d better be able to respond to arguments that it doesn’t support the rejection. Otherwise, don’t cite it. Pretty simple.

                  That “examiners aren’t lawyers” excuse is beyond path#t!c. The fact that you’re still throwing it out there is even more path#t!c.

                3. “You’re literally trying to get legal/lawlyer help out of non-lawlyers. ”

                  I’m not asking for their help. I’m educating them. All I’m asking is that they learn. Learn something other than, “can I haz RCE now?”

                4. “I’m not asking for their help. ”

                  Sure you are. You want them to understand and consider whatever argument you put forth to be valid and persuasive under the law, legally, and for them to issue you a patent. aka literally provide you some help legal style.

                  “I’m educating them. ”

                  You mean you’re attempting to, and failing to, educate them. The number of them you’ve actually successfully educated is likely 0, which your own stories show.

                  “All I’m asking is that they learn.”

                  I hear you bro, but for that you have to convince them that you are an authority on the subject to be trusted. And when you come in as applicant’s advocate, they’re not going to treat you as such. It’s one of the reasons I’ve suggested many times for lawlyers to either a. start an official program where they can withdraw themselves from advocating for the client for a brief edumacational period (to be made of record btw) for office personnel as an official officer of a court somewhere (officially part of the gubmit to be recognized as an authority on the lawl), and then reinstate themselves as the applicant’s advocate after they’re satisfied that the personnel has been educated successfully or b. do the same thing unofficially. But nobody seems to do it all that much, and your “problem” continues unabated.

                5. 6,

                  Your spin on “help” is just not helpful.

                  (thought I would just help you out by letting you know that 😉 )

            2. We can ad to the list. The newby in 18 years has never once seen a valid rejection.

              1. I have never seen a valid rejection that cites case law to support the determination of unpatentability. Never. Not once. In 18 years of practice. That’s because I know the case law, and the claims I write are distinguishable over all of the boilerplate case law examiners cite.

                But according to the examiners they are allowed to cite case law, without bothering to read it and determining whether it is applicable to the claims, and free to ignore arguments that it is not applicable. Because “they’re not lawlyers.”

                If you don’t want to respond to my arguments why In re Boilerplate doesn’t support your conclusion, don’t cite it to me.

                And when I educate you as to why your rejection is improper, it is not good “service” or “work product” or whatever you want to call it to respond by saying, “Well, I’m not a lawyer, but my SPE told me to reject and cite that case.”

                1. I have been affirmed at the board on a rejection where case law was the foundation of my obviousness rationale, so valid rejections that cite case law do happen. Just because YOU haven’t seen one doesn’t mean they don’t exist.

                2. Based on the evidence, it is manifest that aaa has seen a great many valid rejections. Recognizing them as such is another matter.

                3. “I have been affirmed at the board on a rejection where case law was the foundation of my obviousness rationale, so valid rejections that cite case law do happen. Just because YOU haven’t seen one doesn’t mean they don’t exist.”

                  Sure you have.


                  In the unlikely event that’s actually true, my guess would be the applicant’s representative didn’t bother to even try to distinguish the case you cited. That’s on him/her/them/whomever.

                4. “Based on the evidence, it is manifest that aaa has seen a great many valid rejections. Recognizing them as such is another matter.”

                  One claim from some random, anonymous examiner is your “evidence” that I’ve “seen a great many valid rejections”?

                  Yeah, you’re an examiner.

                5. “One claim from some random, anonymous examiner is your “evidence””

                  Not at all. The evidence that you would not know a valid rejection if it bit you consists of the extensive written record that establishes your unawareness and/or misapprehension of the most basic tenets of patent law. Remember being schooled (for example) in the actual meaning of the legal term “traverse?”

                6. AAA JJ:

                  Oh, he tried to distinguish the case I cited by arguing a different part of the case. I was still affirmed. The board found his arguments unpersuasive because my use of the case law was “correct” (the board’s word choice, not mine).

                  Sometimes examiners do know how to properly integrate parts.

          3. As has been noted previously, 6, expectations run to what the applicants have paid for (a full and complete examination under the law), and NOT to whatever mode of internal metrics that the examiners may be “working to.”

            1. That is the truth. It’s not my job, nor my clients’, to be concerned about the examiner’s counts. We don’t care about your counts anymore than you care about an applicant’s prep and pros budget or an attorney’s billing. Do your job.

          4. The following should be tattooed on the forehead of every examiner (backwards) so examiners can read it every morning while brushing their teeth:

            “The examiner cannot sit mum, leaving the applicant to shoot arrows into the dark hoping to somehow hit a secret objection harbored by the examiner.”

            That’s from your favorite case, 6. Oetiker, 977 F.2d at 1449 (J. Plager, concurring)

            1. Yeah I remember ol newman saying that, but as you suggest, examiners do it all the time and “get away with it” so technically Newman was wrong. Though she is correct that such is how it is supposed to work.

              1. Newman is not wrong because of others doing something wrong – getting away with it or not.

                1. (I really have to wonder sometimes about you and your rather relativistic “moral compass” in which right and wrong seem to flexible as to encompass “getting away with” something turns that something into a “getting it right”).

    2. I’m with you, AAA JJ. There’s no reason for the PTO to distinguish between applicants that are represented by counsel and applicants that aren’t. They should only make their best arguments after 7 OAs and two appeals for ALL applicants, not just yours and mine – especially since our clients end up paying way more for examiners’ failure to make their best arguments the first time around, and for examiners’ intransigence, than pro se inventors do.

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting