Ron Katznelson’s new paper is available online, titled Private Patent Rights, the Patent Bargain and the Fiction of Administrative ‘Error Correction’ in Inter Partes Reviews. Ron argues:
The exclusive patent right is not a creature of Congress. That right originates with, and is created by, the inventor. It is only secured by statute subject to the Constitution, as part of the patent bargain in exchange for the inventor’s public disclosure of the invention and of the manner and process of making and using it.
No PTO “error correction” in an issued patent is possible because the public disclosure (that might have been otherwise kept as a common-law trade secret) cannot be returned – the exchange of rights upon patent issuance is irreversible and uncorrectable. Extinguishing the inventor’s private patent right must therefore be the exclusive province of Article III courts.
Since we know that the patent maximalists are shameless and will do and say literally anything when cornered or desperate, I wonder what is taking them so long to suggest an amendment to the patent act which would allow them to patent “innovations” that are already in the public domain?
In other words, change the grace period to twenty years and re-define “discovery” to mean “discovery that something deserves to be owned because $”. Forget 102 entirely and make 103 all about the secondary factors and nothing else.
I mean, why not? They’ve got nothing to lose. It’s odd that they don’t think big. Maybe it’s because their brains are in a small place.
One-bucketing, strawmanning, Accuse Others, and profound misunderstanding of patent law all rolled up into one.
You REALLY have to work hard to be that messed up. Congrats.
Securing “the exclusive right” is a power of Congress set forth in clause 8, section 8 of Article I (Legislative Branch) of the U.S. Constitution.
Congress has authorized the Patent and Trademark Office to examine patent applications, 35 U.S.C. 111, and issue patents if “it appears that the applicant is entitled to a patent under the law,” 35 U.S.C. 131.
Issued patents are “presumed valid” under 35 U.S.C. 282, and subject to inter partes review by the PTO under 35 U.S.C. 311 and 316.
If an inter partes review is instituted, not dismissed and not terminated or reversed on appeal, Congress mandates that the PTO “shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.” 35 U.S.C. 318.
JAI Rho, you should be aware that the director does not have the final say in whether to issue a patent or not. The patent owner has a right of appeal for de novo trial in the District Court. The judge may determine whether the claims of the patent or patentable, and may order the director to issue the patent.
Thus the executive department does not have the final say whatsoever in issuing a patent. The right to a patent is a legal issue and it is a matter of right, not discretion.
> and subject to inter partes review by the PTO under 35 U.S.C. 311 and 316.
And the question is whether Congress can subject the patent to IPRs.
… because what we have here is a “tacking on” of additional legislation that affects something already inuring other Constitutional protections due to the item having the aspects of personal property.
Our government fully allows laws to be passed that result in Takings of personal property – but there are stringent safeguards to such laws.
The AIA lacks those safeguard. Hence: there exists a Constitutional infirmity with IPRs.
So even though Congress IS the correct branch of the government***, duly authorized to write the statutory law that is patent law, even Congress cannot write any old law that it may choose to do.
***contrast directly with the law being written from the bench, wherein situations that such is not expressly provided for, is a violation of the separation of powers doctrine.
Question for the maximalists: can the President obstruct justice?
(Hint: this is an easy one.)
Yes. Next question.
Assuming that you mean “federal” justice, the answer is no. By definition, the President is in charge of the process of prosecuting justice. He can make decisions on such, and they are unreviewable, except though the impeachment process, which is obviously broad. But a court cannot charge him with obstruction federal law enforcement. Whether he could obstruct the justice of a state investigation is quiet a novel question.
The PTO recognizes that the inventor and is entitled to his inchoate right because the forms say “inventor” right where the inventor is supposed to put his name. This is just one of many evidence!
/maximalist w@ nkery off
So anyone that identifies themselves as an “inventor” is one, and the PTO is just a printing office. LOL
Beyond silly.
Inventor is a pretty low bar in a community where anyone with a patent is an Inventor. In actual technologist communities you call someone an inventor based on the merit of their contribution, rather than the existance of some quanta of contribution.
What world are you from?
What in the world is your point with this post?
When a patent is deemed likely to contain an error by the PTO after review of evidence presented by a petitioner, its no different than picking a random baby from the maternity ward and throwing it in a dumpster. This was the vision of the Founders, many of whom were inventors themselves.
/maximalist w@ nkery off
I am curious as to the title of this thread, and if any play on words (with nuanced meanings). was intended.
Contrast (emphasis added):
“Secured by Inventors”
with
” securing [_] to [_] Inventors [_] to their respective [_] Discoveries”
(abbreviated from the longer: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”)
Quid Pro Quo and the notion (for the US Sovereign) of the NON-governmental genesis of the item under consideration to which the government’s action of “by securing” is what the provision of authority entails seems to be (perhaps purposefully) being treated under a “fog” of misdirection.
Does the title of this particular thread seek to flop the responsibilities?
Probably should be “Secured to Inventors.”
But that would negate much of the arguments… prob why they chose “by”
The problem with these sorts of theoretical arguments is that they sound good but offer little guidance for practical policy-making.
We saw this during the oral arguments in Oil States where their counsel argued that third party reexamination was OK, while IPRs were not.
In this case, the argument that, “no PTO “error correction” in an issued patent is possible because the public disclosure (that might have been otherwise kept as a common-law trade secret) cannot be returned – the exchange of rights upon patent issuance is irreversible and uncorrectable” creates a massive slippery slope.
Following this argument to its logical conclusion, because the inventor has “given up” the common law right to trade secret protection once a public disclosure has been made via the issuance of a patent, the bargain has been completed and no further action can be taken by any branch other than article III. This seems to suggest that no certificates of correction can be issued by the USPTO. Same with Ex Parte Reexamination, Reissue etc.
Ironically, this argument also seems to admit implicitly that patents are public rights and presents a strong case for why they should be treated as such. When inventors choose to file a patent, they risk their common law trade secret right in exchange for patent protection. In doing so, they consent to public disclosure based on the conditions set forth in title 35.
This includes the possibility that a patent will be published after 18 months and then not granted, which like an IPR, irreversibly puts the invention into the public domain.
If inventors want to keep the invention private, they can keep it a secret. When they file a patent, they are consenting to a public rights scheme set forth by Congress.
“Ironically, this argument also seems to admit implicitly that patents are public rights”
I cannot see how you get there from the genesis of the patent bargain being expressly flowing from an inventor’s inchoate right.
The very opposite point is the take-away.
The genesis is the key – wherefrom does the right originate. The notion that an inchoate right is being transformed into a full legal right is very much distinct from the situation (for public rights) that the right’s genesis is solely a creation of the government.
Quid Pro Quo – and NOT any type of generated largess from the government (only) to which, the “public rights” understanding is ground upon.
This is NOT a “consent to a public rights scheme.” That is NOT what “public rights” means.
Not true at all. The invention will be kept secret by the PTO until the patent publishes. If a patent is not granted, the inventor can keep his secret. He can even improve his invention and refile with new matter without having his prior application used against him. This is how it used to work and the government was faithful to its end of the bargain and stood by its promise. What we have under the AIA is no bargain at all, but a library of technology for incumbents to take for free. Call it public rights if you want, but it sure ain’t the American patent system.
“The invention will be kept secret by the PTO until the patent publishes. If a patent is not granted, the inventor can keep his secret.”
How do these two points not completely contradict each other?
The misfire comes with the earlier “attempted improvement” to the patent bargain that – with plenty of caveats and nuances – sought to denigrate the patent bargain and publish prior to grant.
I have in the past posted detailed views as to how this mechanism created a culture within the Patent Office that directly leads to p00r examination, and it is no accident that many of the problems of “patent quality” mushroomed quickly after this “improvement” was introduced.
Of course, one of the key caveats was that the government lacked the authority to FORCE publication if the applicant was not herself going to put the information into the public by filing the information in a foreign office, said foreign office according to the rules of that foreign sovereign COULD (and did) force publication.
The PTO will not give his secret away to the public/competitors before they grant a patent. It remains a secret only between the inventor and the PTO. It does not become part of the public knowledge.
Only after they issue the patent promise of exclusivity – under the AIA – then they give it away via the PTAB death squad.
IR, the system of publishing U.S. applications 18 months after filing unless the applicant asks for non-publication and does not foreign-file was not created by the AIA.
I know. Part of the attempt to “harmonize” our property rights system with Europe’s public rights system. With IPR there is no possibility to ever secure the exclusive right.
With IPR there is no possibility to ever secure the exclusive right.
Is that what you tell your clients?
LOL
This seems to suggest that no certificates of correction can be issued by the USPTO. Same with Ex Parte Reexamination, Reissue etc.
Can you imagine the patent office issuing a certificate of correction in a patent without a by-your-leave from the patent owner?
And there is nothing wrong with reexaminations or reissues to the extent that they are filed by the patent owner.
In point of fact, reexaminations were proposed to Congress as a form of no-fault reissue that could be requested by the patent owner. But Congress, based upon bait and switch tactics by somebody (probably the PTO), allowed reexaminations to be filed by anybody including the “director.” That is the point in time where legitimate correction of the patent at the request of the patent owner transitioned into an unconstitutional procedure.
Can you imagine the patent office issuing a certificate of correction in a patent without a by-your-leave from the patent owner?
Yes. Why is that hard to imagine? What would be the problem?
90% of all applicants allow their applications to be published as applications before grant, including all those considered important enough for foreign filing, and some percentage of the others have otherwise publicly disclosed their inventions before grant. So how many IPRs would actually be challengeable on the basis of trading trade secrecy for a unchallengablr patent? I.e., even have standing on that basis?
And BTW, many applicants think that pre-issuance publication is desirable, especially under the AIA, for its immediate prior art benefit.
90% of applicants used to allow their applications to be published. Because they believed in the quid pro quo. If they received a patent it meant they would get 20 years of exclusivity. If they didn’t receive a patent, then their secret was not so valuable. The PTAB destroys the quid pro quo. It has become a quid pro nihil.
This won’t mean anything to the likes of Ginsburg. She will merely shrug it off and say that part of the bargain is the disclosure and the applicant does not have to file an application. Moreover, Ginsburg will cite a study about the number of published applications and say that the inventors don’t seem to mind sharing.
“and say that the inventors don’t seem to mind sharing.”
Probably because like 99%+ of applications filed which the applicant really wants to fight for will eventually get a NOA.
“public disclosure (that might have been otherwise kept as a common-law trade secret) cannot be returned – the exchange of rights upon patent issuance is irreversible and uncorrectable. ”
Except that, in the overwhelming majority of applications, the application is published well before any issuance. So to pretend as though there is an “issuance for disclosure” agreement does not hold. In most cases, the disclosure is made based only on a possibility that something contained therein may eventually be protected.
It is the duty of the inventor or the inventor’s agent/attorney to review the prior art in order to determine what that “something that may eventually be protected” is, and if that possibility is worth public disclosure. If the inventor or inventor’s agent does a poor job in a prior art search, then it is their fault for choosing to publish something which cannot be protected by a patent.
Of course, many agents are explicitly taught not to do prior art searches, because the client wants to pay us to file this and if one of us suggests otherwise, it is taking money out of all of our plates.
You may be surprised to find out out but your statement of:
“It is the duty of the inventor or the inventor’s agent/attorney to review the prior art in order to determine what that “something that may eventually be protected” is, and if that possibility is worth public disclosure.”
is just not correct.
Sure, the act of conducting the best possible prior art search may be a “best practices,” but it does not rise to the level of “duty.”
Further, your proclamation of “does not hold,” itself does not hold.
Yes, the original Quid Pro Quo was indeed greatly attacked with the move to publish before grant / but that move does not hold what you may want it to hold.
Sorry – it just does not.
Not only does the disclosure often/usually become public prior to issuance, the disclosure remains public even if there is no issuance. The disclosure by the inventor is made in exchange for the possibility of a valid patent; there are no guarantees. No one is entitled to an invalid patent ever.
Non-publication requests are straightforward and free, and may be rescinded at any time and for free.
I assume that the ‘no foreign filing’ rule is more of a practical requirement because foreign offices will publish the application….
So what am I missing….seems like the inventor can choose to keep his secret between them and the PTO in all cases, such that the bargain of disclosure is for a granted patent, and not a pending application.
Insignificant Dallas site, you do know that an applicant has a right to keep his application secret?
But even if he did not, he has a legal right to have a patent on his invention, not a mere hope.
I do know that, but I did not realize the paper was limited to inventors who file nonpublication requests. Is it?
“But even if he did not, he has a legal right to have a patent on his invention, not a mere hope.”
Of course, as you well know, not everyone who files an application has an “invention”; that’s the point of examination. And not even everyone who gets a patent has an invention; that’s the point of …
“but I did not realize the paper was limited to inventors who file nonpublication requests.”
Obtuse. Is it deliberate?
(the concept underlying the point remains valid across the board).
“And not even everyone who gets a patent has an invention; that’s the point of …”
Please finish that thought – wait – before you finish, please incorporate a full understanding or Takings law and what the significance is at the point of issuance in that an inchoate right has become a full legal right.
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December 4, 2017 at 11:13 am
“inventor is made in exchange for the possibility of a valid patent; there are no guarantees. ”
As with any L I E – especially the great L I Es, there is a kernel of truth present.
This is no exception, as indeed the ability to NOT disclose was hampered if one were to seek foreign patent protection as well, and that foreign actions involved disclosure.
But this “trick” did NOT change the essence of the US Sovereign Quid Pro Quo (which the government did NOT change as witnessed by the fact that they did not FORCE applicants to publish prior to grant, and it was ONLY under the “guise” that an applicant was going to publish elsewhere did publication prior to grant in the US was issued into place.
As the Office appears to have no intent of releasing that 101 case study they promised, I tried to pull some numbers from the USPTO data set discussed in the last post.
I got 17.1% of post-Alice office actions from business methods art units (i.e., 3620s, 3680s, and 3690s) as having a 101 rejection and no prior art rejection. More importantly, I got 1.5% of applications with post-Alice office actions from the business method art units, where the prosecution history shows an office action with a 101 rejection but no prior art was sent at some point prior to an office with a prior art rejection. I may have made an error along the way, anybody get similar numbers?
The 1.5% figure should be a rough upper bound on the proportion applications where 101 rejections were unambiguously used to avoid compact prosecution with respect to prior art rejections/search. If correct, the extent of this problem doesn’t appear to match to the perception of some attorneys around here.
Ron Katznelson is the balls.
Read the Gary Lauder brief.
Link?
link to scotusblog.com
No [] “error correction” in an issued patent is possible because the public disclosure (that might have been otherwise kept as a common-law trade secret) cannot be returned – the exchange of rights upon patent issuance is irreversible and uncorrectable.
Oh so a patent can’t be invalidated, okay.
Extinguishing the inventor’s private patent right must therefore be the exclusive province of Article III courts.
Wait…I thought the exchange of rights was irreversible and uncorrectable?
I mean the public disclosure is just as “unreturnable” in an Article III hearing as it is in a PTO reexam. Why draw the line at the former instead of the latter or not at all?
That right originates with, and is created by, the inventor. It is only secured by statute subject to the Constitution, as part of the patent bargain in exchange for the inventor’s public disclosure of the invention and of the manner and process of making and using it.
If there’s prior art that reads on the invention, 1) the person wasn’t the inventor, 2) there was no bargain as one side had nothing to offer, 3) no rights ever originated so there was nothing to secure. The only “fiction” in the entire situation is that the person is entitled to prevent others from doing something they already knew how to do.
Invalidity is a defense to infringement. Such is a dispute over the integrity of the title to the underlying property. Article III Courts are the proper venue for such a dispute. Nothing in the paper forecloses this fair and impartial adjudication of the dispute between a patentee and an infringer.
Article III Courts are the proper venue for such a dispute.
No, they aren’t.
You are quick to not understand what i4i proved at the Supreme Court.
the public disclosure is just as “unreturnable” in an Article III hearing as it is in a PTO reexam. Why draw the line at the former instead of the latter or not at all?
This was dealt with in Needlebert v. Corktableu, the famous opinion by His Magistrate, the Earl of Cookiemunster.
Random, the PTO revocation procedure is justified on the basis that a patent is no more than a revocable privilege, a benefit flowing one way only, from the public to the citizen. Ron is point out the flaw in that position.
It is based on a bargain that entails mutual benefit. When the patent does not claim anything novel or non-obvious, then one side, namely the public, is robbed of that benefit. It is unjust to allow the other side of the benefit to continue to enjoy a benefit improperly acquired.
“enjoy a benefit improperly acquired.”
You too seem to too easily forget about the lessen learned from the i4i Supreme Court case….
“Robbed of that benefit … Improperly acquired.”
Certainly, the government has standing to sue if the patent applicant fraudulently obtained the patent. (American Bell (1888).) But the ordinary ex parte prosecution typically does not involve fraud. But you suggest that it does. I hope you recognize just how over-the-top their argument really is.
Should I have a right to sue the government for improperly issuing a patent when I am sued?
Improperly acquire does not imply fraud. Improperly acquire only implies obtaining a patent when you should not. If (within the rules) there is art that shows that your invention is not novel or non-obvious, you are not entitled to a patent. Full stop. Under those circumstances, if you are granted a patent, you have improperly acquired one.
I recognize that in a lot of cases, probably the vast majority of cases, the route to improperly acquiring a patent is because the PTO did not properly do its job. However, an improperly granted (maybe that is a better term) patent cannot stand and must be abolished. To allow otherwise would be a perversion of justice.
Ordinary, proper or improper both imply lack of honesty. This is one definition of improper: “Not in accordance with accepted rules or standards, especially of morality or honesty.”
You bandy these words of the lack of honesty as if that were the problem with ex parte prosecution. I have absolutely no doubt, not one doubt, that you do this intentionally, even though you seem to deny that you are doing it intentionally.
Your mode of argument here itself is improper.
What is improper is to give a long-winded lecture on what the word “improper” mean without addressing the substance of the comment.
To make it clear, I do not think that dishonesty is a problem in ex parte prosecution. I am confident that 98% of patent attorneys/agents are doing their best. Perhaps my wording was inartful. I should have said improperly granted. The point still stands no matter whose fault it is.
This from the PDF open in my browser right now:
CAUTION
Do not turn the crankshaft when installing
the camshaft to avoid damage or improper
valve timing.
“Revocable privilege” was not the only argument.
I think that in the oral hearing, there was a discussion about the IPRs not extinguishing rights. If I remember well, the respondent argued that the claims (he said “patents”) canceled are the ones that should not have issued to begin with, because they do not describe a patentable invention (i.e., do not meet the 102 and 103 requirements). I think it was implied that no right applied to these patents, because by statute, a patent may only be granted when the 102 and 103 requirements (among other) are met.
There was also a discussion about whether the right to exclude other from practicing the claimed invention (I think it was called the “patent right”) ever gets vested. At least some Justices thought that this notion no longer exists.
It vests at issue – that is the moment that the inventor’s inchoate right becomes a full legal right.
Without vesting, the action of the Office is without authority, as the Constitutional authority is to vest (secure) the legal right as part of the Quid Pro Quo with the inventor.
What legal right exactly is vested upon the grant?
I am not sure the limits of this right ever get set in stone. Surely, the patentee has a property right to what has been invented. But as surely, a patentee has no right beyond what has been invented, and a defendant has a defense to infringement for any claim found to have a scope that is beyond the scope of the invention.
The extent is the claims.
All future challenges to said claims occur in a fully sanctioned Article III setting with its full protections (including standing).
Not sure why people are making it seem that this part of the process is either some mystery or somehow is incongruent with the full legal property created at grant. These are well understood concepts.
PiKa, I see you fully understand why the English insisted in the Magna Carta that they have a right to a trial in a court of law and to a jury prior to their life or liberty or property being deprived. Why, was it not entirely justified by the King to summarily dispose of a man’s property based upon an accusation? After all, unless one presumes somebody innocent until proven guilty, the disposition is justified by the guilt and the guilt is presumed from the charge.
Thus IPR is fully justified by the fact that the King (read the executive department employees) determines that the patent owner is guilty.
No, the people of England were not satisfied with the King himself making judgments in a matter where the King is also the prosecutor – they demanded trial by jury and by law. It is his basic separation of power established by the Magna Carta that is at issue in Oil States.
But the explicit hierarchy is that you go to the king when law can’t do justice to a matter, and the king’s chancellor will see to equity, which trumps law. What am I missing?
I’m not debating the underlying issue. I’m pointing out this argument is terrible support for his position. If the reasoning is that the patentee can’t have the *PTO* take away his rights because he had already paid his part of the bargain for them, them it makes just as much sense to say a *COURT* can’t take them away because he bargained for them. It’s not like the court stands in a different position vis-a-vis his disclosure than the office does. The line he drew is an arbitrary line.
Of course that’s true Random, that’s why for it to make any sense, they need this theory around executive v. judicial legitimacy to revoke a patent…