PTO Director Lee

Politico reports today that PTO Director Michelle Lee is “in the running to head up the White House Office of Science and Technology Policy” known as OSTP. [LINK]  Lee’s Obama-Holdover status suggests to me that OSTP’s policy-making role will be substantially downgraded under President Trump as compared to that of the Obama Administration when the office was headed by John Holdren. However, the move would also confirm a comparative business forward position.  The OSTP Director also now holds an official seat of the new Office of American Innovation headed by Jared Kushner.

According to reports, Commerce Secretary Wilbur Ross has interviewed several replacement candidates for PTO Director.

 

About Dennis Crouch

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

43 thoughts on “PTO Director Lee

  1. In another thread, Greg observed that drug companies spend upwards of $100million to obtain FDA approval, and that generics only have to spend $100thousand to piggy-back. This points heavily to the real issue why patents should not easily be invalidated, and that reasonable doubts should be resolved in their favor.

    1. I am not sure why this observation is made on this thread, and what it has to do with the real topic of this thread. However, so long as the point is made here, I suppose I have two responses to offer here:

      (1) I cannot agree that the amount of money invested in a certain few patents is reason why all patents deserve a “benefit of the doubt.” In the main, there is a common-law presumption against monopolies, so our laws have traditionally gone the other way, resolving doubtful cases in favor of the public domain. We should be reluctant to disturb settled expectations, and the “tie goes to the public domain” is just such a settled expectation.

      (2) I agree that patents should not be “easily… invalidated,” but that hardly seems likely. Even IPRs, which make it easier do not make it easy to invalidate a patent. It is difficult and costly to invalidate an issued patent. It always has been, and likely always will be, and that is all to the good.

      1. Greg, the whole point of patents is to incentivize investment in the development of useful products and processes. How in the world is this supposed to work if the patent can so easily be invalidated?

        Your focus on monopolies is misplaced. Patents for inventions are not patents on existing trade by definition. We are not talking here about the inventor patenting existing products of other, or by literal anticipation. The issue is almost always obviousness, and hindsight is almost always involved under 103 the way it is written and in particular with the way the PTO finds invention obvious. Its all hindsight all the time. No proof that the prior art suggested the combination is needed for the members of the PTAB to do their dirty work.

        Patents desperately need a heightened burden where reasonable doubts must be resolved in favor of validity. If they do not get this, the patent system itself is undone.

        1. Fair enough. If all you are saying is that it should be harder than it is to prove obviousness, I am decidedly in agreement. Unfortunately, our Supreme Court does not agree.

          1. How hard do you think it is currently and how hard do you think it should be?

            1. Right now, we assess obviousness from the point of view of a “person of ordinary skill” who is “also a person of ordinary creativity, not an automaton.” KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). Prior to Justice Kennedy inventing (pardon the pun) this standard out of whole cloth, this was never the law—neither in the U.S. nor anywhere else in the common-law world.

              Rather, as Justice Rothstein of the Supreme Court of Canada admirably summarized the matter,

              The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.

              Apotex Inc. v. Sanofi-Synthelabo Canada Inc. [2008] 3 SCR 265.

              In other words, not only is the PHOSITA not supposed to be a person of ordinary creativity, the PHOSITA is not even supposed to be person of sub-ordinary creativity. The classical understanding (from Hotchkiss forward) is that the PHOSITA has no creativity. He knows how to do absolutely everything that is already known in his field, but cannot move the needle even an inch forward of that.

              That is the standard that is supposed to prevail in assessing obviousness. Now, however, our PHOSITA is ever making recourse to “common sense,” and “market incentives,” and suchlike. This is a dramatic relaxation of the standard required to establish obviousness, but Congress did not fix it when then instituted the AIA, so now statutory stare decisis attaches and I suppose that we are stuck with it.

              1. The slippery slope back to what the Court wants: the Flash of Genius…

                1. I think that this is exactly correct. If you read cases over the long history, you see a recurring pattern of a battle between how the SCotUS wants the patent law to be and how the Congress wants the patent law to be. No matter how the Congress resets the statutory text, the SCotUS will always manage to massage its exegesis and gradually drag the law back to its preferred equilibrium. As you say, KSR is just one more act in that tediously familiar play.

                  That is why it would be all to the good if Congress should simply take patent law out of the hands of the SCotUS. The creation of the CAFC was a good step, but it stopped too short. The next move should be to abolish all CAFC and SCotUS precedents after 2000 as legislatively repealed (that way we keep Pfaff but lose Festo), and exercise Congress’ Art. III, §2, cl.2 powers to remove the CAFC from the SCotUS’s certiorari jurisdiction, except (perhaps) with regard to questions of the FRE, the FRCP, or the inherent powers of Art. III courts.

                2. It is not that rare that we agree. There is just not much occasion to dwell on our many points of agreement. The disagreements are the more interesting matters for discussion.

                  Still and all, you and I have been in agreement on the jurisdiction stripping idea for well over a year by now. Naturally, I am glad to have you as an ally on this particular point of controversy.

                3. Seems like there is a massive gulf between “conmon sense” and “understanding market forces” (on one hand) and “flash of genius” on the other.

                  But I suppose it depends on where you’re standing. Most objects look incredibly tall to an ant.

              2. Not just the common law world, Greg. Also at the EPO the distinction between lack of novelty and lack of an inventive step is crystal clear, implacably and unrelentingly policed by Article 54(3) of the EPC.

                The patent law of Germany used to set degrees of obviousness (as between their 20 year and 10 year patents) but, helped by the ever more clearly established TSM obviousness caselaw of the EPO, it recently gave that distinction up as unsustainable.

                Likewise, degrees (“ordinary”) of inventive creativity are impossible to define. For the notional PHOSITA, subject matter assessed under TSM, is only ever binary obvious Y/N. It is a disgrace that SCOTUS has saddled you with an obviousness standard that is impossible to adjudicate predictably and fairly. After all, most every patent dispute will depend ultimately on the answer to the obvious Y/N question.

          2. Greg, it is decidedly not the Supreme Court that is undermining our patent system. It is the USPTO itself, and its efficient infringer allies, that pushed IPRs. Of course, at the time of the AIA, the USPTO was headed by none other than a former IBM patent counsel, a mover and shaker among the DC patent lobbying organizations.

            Yeah, the movers and shakers took the bull that was the bold and vigorous US Patent system by the horns, made it bend low, so that it could be …. and be turned into a tame cow, if not a newborn and sickly calf with little or no life expectancy.

            1. Maybe the PTO is partly responsible for IPRs, maybe not. To my mind, it is ill done to blame the employee (administrative agency) for the master’s (Congress) doing. Respondeat superior, as they say.

              In any event, the PTO did not hand down KSR. That was the SCotUS. The Court owns that stinker of a controlling precedent.

              1. R u kidding? PTO was the greatest champion for the IPR. That’s a fact. Indeed, public choice theory commands no other result.

                1. If my son asks me for a flamethrower, and I buy it for him, who is the party we rightly blame when he burns my house down?

                  Not, mind you, that I consider IPRs to be especially analogous to flamethrowers in the hands of grade schoolers.

                  My point is simply that the mere fact that the PTO lobbied for IPRs does not actually mean that they deserve much credit and/or blame if Congress passes a bill to create IPRs. Congress is composed of adults, and they are answerable for their own choices. “The PTO asked for it,” is no excuse if it turns out (as I am not at all convinced) that IPRs work to the ill of the patent system.

                2. If my son asks me for a flamethrower, and I buy it for him, who is the party we rightly blame when he burns my house down?

                  “I can’t be responsible, officer. I’m an ordinary father. I only know what a flame thrower was used for in the past. Nobody ever described using a flame thrower to torch MY house. Therefore, I could not have predicted this would happen. Only a genius could have predicted that and there’s nothing in between.”

                  Sure that makes sense.

            2. It definitely IS the Supreme Court, Ned.

              You really have to stop worshiping at that alter.

    2. And, it is interesting that Lee’s call to save IPR by making them fairer rather than repealing them is something we need to fear. Fixing IPR can never make it fair given the lower standard of proof let alone BRI and all the other completely unfair procedures.

  2. I am given to understand that St. Thomas More once quipped that “it profits a man nothing to give his soul for the whole world… but for Wales?”. It seems that the same logic applies if you remove “Wales” and insert “an office on Pennsylvania Avenue.”

  3. >>Jared Kushner.

    And I suppose Jack Benny is in charge of the Treasury.

    1. Well, Night, given that the Democratic Party is currently being run by unmasked anarchists, Republicans seem a lot more normal by comparison.

    2. Yes, very disappointing. Indeed, the entire perception that we need an ‘office of innovation’ is disappointing and showing a poor grasp of the situation.

      1. Indeed, the only one worse that comes to mind is McCain’s campaign proposal to create ‘invention cash awards’ for you know, great innovation.

        1. I do not think that there is any problem with innovation prizes, as long as we do not regard them as an alternative to patents.

          The problem with prizes-as-innovation-incentives is a knowledge problem. The prize giver (usually the government) cannot know everything that the public really wants/needs. Indeed, even the public itself does not know, and could not tell you if you asked it. This is where the genius of a free market really works best, and patents function well precisely because they leave it to the free market to decide where to deploy innovation capital. We let a “thousand flowers bloom,” so to speak, and then the market mows down 990 of those thousand, and rewards the ten worthy ones handsomely.

          But just because the prize giver cannot know everything that we want/need, it surely knows some things that we want/need. If we were to lay out $10 billion for the first person who can come up with a cure (not a chronic treatment, mind, but an honest to goodness cure) for HIV, and if this prize actually incentivized some team enough to find that cure, we would be getting off cheap in the bargain compared to what the government spends over the long-haul fighting the disease.

          In other words, where a prize is directed against a known problem, of whose significance we are all or substantially all in agreement, prizes can still be worthy innovation incentives. It is simply important to realize that they are not substitutes for patents.

  4. [T]he Discovery Institute [disgraced creationist propaganda outlet] is teaming up with the Heritage Foundation for a provocative event in which they will characterize the March for Science as a march for conformity or a march for scientism. In other words, they will describe the overarching scientific consensus on, say, evolution or anthropogenic climate change as mere expressions of scientific conformity or, when all else fails, accuse the real experts of “scientism.”

    Your Republican Party, folks. Promote the regress!

    1. MM, Trump is helping the working class by cutting their health care and raising their taxes.

    2. I just don’t understand anymore what is happening in this country. Just too strange. I talked to some people that don’t believe in evolution. It is like they have this belief that overrides the rest of their brain.

      1. A lot of it is just social conformity to their in group Night. Instead of asking them about their “beliebs” regarding evolution. Share with them the facts of the observed in real life evolution, say in lizards at the losos lab. In 2017 there is no reason to walk around talking about “belief” in evolution. It is now an observed and well documented fact. Here’s the losos publican page but you can find mainstream articles on their work with lizards where large scale evolution was observed (whole organs evolved) ez.

        link to lososlab.oeb.harvard.edu

        1. Of course I used evidence-based arguments, 6.

    3. MM, OK, genius, prove there is no creator.

      1. “MM, OK, genius, prove there is no creator.”

        ^Misallocation of the burden of proof. First you have to prove that there is one, then MM has the burden to prove there isn’t one.

        1. 6, actually, there is no “proof” one way or the other, which is why people who declare that there is or there is not a God suffer from the same disease.

    4. 1. The heritage foundation isn’t the republican party. Neither is the institute.

      2. They literally are “expressions of scientific conformity” (though I’m not sure about why “mere” need be attached). Though that’s not necessarily a bad thing at all times. And “scientism” appears to be accurate, in so far as a term goes, though I’m not sure why it would necessarily be deemed all that derogatory.

      What’s the matter MM, did the far religious righties adopt an “ism” and you’re upset because you think all isms are for lefties?

      link to google.com..69i57&sourceid=chrome&ie=UTF-8

  5. Office of American Innovation headed by Jared Kushner

    Who?

    1. Perhaps a better question:

      Why?

      1. He is 34 and worked for his father (the felon and money thieve).

        1. Those are good “why boys”…

          😉

          1. Odd autocorrect…

            “boys” => “nots”

    2. “Who?”

      You don’t know Ivanka’s hubby?

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