Patent Agent Privilege in Texas

In an important new decision, the Texas Supreme Court has recognized “patent-agent privilege” as a form of attorney-client privilege.  The court writes:

[B]ecause patent agents are authorized to practice law before the USPTO, they fall within [Texas Rules of Evidence] Rule 503’s definition of “lawyer,” and, as such, their clients may invoke the lawyer-client privilege to protect communications that fall within the privilege’s scope.

In re Silver (Texas 2018) [160682]


In the case, the trial court had concluded that a party’s communications with a patent agent were only privileged to the extent that the patent agent was acting under an attorney’s direction.  The court here reverses that judgment — no supervision is necessary.   The court does offer a major caveat — that communications outside of the patent agent’s authorized practice area might not be protected:

The client’s communications with a registered patent agent regarding matters outside the agent’s authorized practice area might not be protected because these communications are not necessarily made to facilitate the rendition of professional legal services.

In announcing a potential line, the court did not actually draw the line as to when a communication strays too far.Image result for texas memes

99 thoughts on “Patent Agent Privilege in Texas

  1. 6

    OT, but the PTAB rendered its decision against stopping IPRs with tribal immunity allegations on Friday and I just sent a copy to Dennis. The details of the so-called “assignment” and exclusive-license-back with the tribe are particularly revealing.
    This PTAB decision is so thoroughly researched and well written that it could [but probably will not] get a per curium affirmance by the Fed. Cir.

    1. 6.1


      ( you will pardon me if I do not take your word on how “ thoroughly researched and well written” the decision is on its face)

    2. 6.2

      (wants to break free…)
      Your comment is awaiting moderation.
      February 24, 2018 at 5:23 pm

      I will say that the decision does a nice detailed job on the license terms.

      As I have always indicated, the arrangement can (and should) be evaluated as to whether or not a sham has been perpetrated. I am left concerned that THAT word was not used, as it raises some ambiguity as to whether or not that existing (binary) criteria is what was actually used (it IS the analysis that should be used).

      1. 6.2.1

        The route of “sham” could have been followed, and the question of sovereign immunity (one for Congress, one not for an administrative agency of the executive branch’s judicial function) could have been avoided entirely.

        As it is, what starts out strong and clear becomes muddled and questionable.

        Of “Oil States impact here as well is the statement from the administrative agency of the executive branch’s judicial function that they see themselves as unbounded by the FRCP.

        Further, the PTAB reveals much with “The Board also gives little credence to the argument that in an IPR a private third party remains involved, stating that “a private entity’s continued involvement as a party in a federal administrative proceeding does not necessarily entitle a tribal entity to assert its immunity in the proceeding.”

        What this readily translates to is that the State in the PTAB setting si NOT some neutral arbiter. This is saying that in the executive branch proceeding, there is NO neutral arbiter and that it is the patentee against BOTH the petitioner and the “judge.”

        This admission should sound out klaxon alarms.


          The “s” word for this patent “assignment” deal was already raised in a related E.D.TX case re the “necessary party” issue. But in an IPR the questions should be as to the disclosure duty and effect of being a “real party in interest or its privy” and that normally and logically turns largely on who controls the respective attorneys for the parties in the IPR.
          Especially since attorneys cannot represent different parties who do not have identical interests without their full consent, nor can patent owners be fully represented by two different sets of attorneys. Imagine, for example, the absurdity of two different claim cancellation and claim substitution proposals for the same patent presented in the same IPR?


            P.S. An IPR is an in rem proceeding against patent claims which can proceed even if NO notified patent owner responds or participates.


              I am not sure that the “in rem” comment carries as far as you would indicate nor has any bearing on the sovereign immunity issue.


                Yes, but note that was a prior mere PTAB decision that is not even binding on another PTAB panel.

                1. NOTHING a PTAB panel does should be binding.

                  They are not a true Article III court. They do not even get to make common law.

                  AND that is not even pointing out that regular Article III courts should not be making patent law through common law (except as expressly permitted by Congress).


              Paul, what if the patent owner is never notified?


                Ned, isn’t a patent owner supposed to maintain a current mailing correspondence address? E.g., MPEP 2805 Correspondence with Patent Owner; Patent Owner Address [R-07.2015] The correspondence address of record for the patent for which supplemental examination is requested is the correct address for all notices, official letters, and other communications for patent owners in supplemental examination proceedings. This is consistent with reexamination practice. See, e.g.,37 CFR 1.33(c)”

                1. Paul, you are citing rules. The issue is one of due process which is constitutional.

                  I would think that a patent owner who did not actually receive notice could contest whether the default action of the PTO was constitutionally valid on due process grounds.

                2. Paul,

                  Your information is wrong. (for example, just read a little further into 37 CFR 1.33(d) and note the permissive language. 2805 similarly lacks any “force” in its language.

                  Patents – as personal property – are freely and fully alienable and there exists NO legal requirement that current addresses must be tracked.

                  There is a system of benefits for doing so – but that is not a mandatory system.

                3. Ned and Anon, mail to the last correspondence address in the patent file is also the way, for many years, that patent owners are informed that their patent has been put into an interference, and other matters. In my view, if the law firm patent attorneys of record for a patent are no longer the attorneys for the patent owner they are professionally obligated to attempt to forward papers mailed to them impacting the patent.
                  This issue will remain theoretical until a full or partial patent owner tries to claim that they would have participated in an IPR or adverse reexamination if they had known about it.

                  Other lawsuits against other property rights, even confiscatory tax sales of real property for unpaid taxes, can have adequate “notice” by mere newspaper announcements or papers nailed to the front door, if the property owner moved and did not maintain of record a current valid mailing address for the property. [I had personal experiences with sad cases of the latter re inherited property in doing pro bono legal work years ago.]

                4. It is hardly theoretical at all Paul that the notion of the address listed with the Office is NOT a “must have.”

                  Regardless of any “duty” that you may think to exist for an attorney representing a selling party of the personal property known as a patent.

                  That being said, you are absolutely correct as to other methods of advising notice. Would love to see what effort you think that a newspaper add would need to reach, seeing as a buying party may be located anywhere in the world (and I am unaware of any “front door” to which a nailed item can be so affixed).

                5. Paul, I would be happy if the PTAB required some actual effort to contact the owner so that they could state positively that the owner was served.


            I disagree with you to the extent that you appear to want to make the test be something less than a sham deal.

            I think that path leads to confusion and is not helpful. The items you list are important, but certainly are not ALL-important, and it is only in the full sham calculations that a proper determination would be forthcoming (and this would apply whether or not one attaches an “in rem” qualifier to the proceedings).

  2. 5

    One would have to successfully distinguish based on its fact differences the unanimous Supreme Court decision on February 20, 2013 which held that a malpractice claim against a patent attorney does not arise under the patent laws and was properly decided in state court: Gunn v. Minton, U.S., No. 11-118.

    1. 5.1

      Sorry, this was for thread number 1 below.

    2. 5.2

      From Wiki (footnotes removed, emphasis added):

      Gunn v. Minton, 568 U.S. 251 (2013), is a US patent law case. The case dealt with the question of jurisdiction of patent law litigation in regard to attorney malpractice. In a unanimous ruling, the United States Supreme Court decided that federal laws granting exclusive jurisdiction to cases involving patents does not preclude the ability of state courts to hear cases related to but not involving patents. The case was remanded to the Texas state courts for further proceedings.

      The “case within a case” aspect is interesting here (from the case itself):

      Minton, convinced that his attorneys’ failure to raise the experimental-use argument earlier had cost him the lawsuit and led to invalidation of his patent, brought this malpractice action in Texas state court

      He lost.

      Then on appeal Minton tried a different tact:

      On appeal, Minton raised a new argument: Because his legal malpractice claim was based on an alleged error in a patent case, it “aris[es] under” federal patent law for purposes of 28 U. S. C. §1338(a). And because, under §1338(a), “[n]o State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents,” the Texas court—where Minton had originally brought his malpractice claim—lacked subject matter jurisdiction to decide the case.

      In other words, he did not like the result of the case that he himself brought in State court and tried to have the result tossed. He wanted a mulligan in order to then proceed in Federal Court.

      The case within the case was a “posture question,” a “forum question” and the attempt to move to Federal Court was based not on the malpractice angle itself, even though the (lower appeals Texas) Court added:

      It also held that finding exclusive federal jurisdiction over state legal malpractice actions would, contrary to Grable’s commands, disturb the balance of federal and state judicial responsibilities.

      So it appears that dicta does lean towards pushing malpractice back to the state (as malpractice of an attorney is controlled by state law).

      The Supreme Court of Texas considered the case within a case differently: they viewed the posture as in fact affecting substantive FEDERAL patent law.

      The US Supreme Court, using Grable reversed on that point. ( The substantiality inquiry under Grable looks instead to the importance of the issue to the federal system as a whole.“)

      The wrinkle here though comes from the basic question itself:

      IS malpractice of a patent agent a state law item?

      The tenor of the case here (In re Silver) is that the Federal Nature is controlling on the matter presented. But that matter is not malpractice, and it remains a fact that patent agents are not practicing law outside of the federal realm.

      It may very well stand to reason that since patent agents differ in the critical aspect of not being state barred, and ONLY practice in the federal realm, the question arises as to IF any state claim against a patent agent contrasted with a claim against an attorney can even be a proper state claim to begin with.

      Combining the thoughts of the last two paragraphs, one has to wonder IF indeed – against a patent agent – whether there is even a case allowing state claims; seeing as the patent agent LACKS the state intersection (as an attorney, barred in the state does not lack) – the notion the Court presented: “can be vindicated without disrupting Congress’s intended division of labor between state and federal courts” takes on a decidedly different flavor, as here, there is no such thing as a patent agent practicing state law.

      Without that tie to practicing state law, does not any malpractice claim then resolve to the Federal dominion?

      Interestingly (and curious as to whether this has any force vis a vis the prohibition against advisory judgments), the Court projected into the future with:

      As for more novel questions of patent law that may arise for the first time in a state court “case within a case,” they will at some point be decided by a federal court in the context of an actual patent case, with review in the Federal Circuit. If the question arises frequently, it will soon be resolved within the federal system, laying to rest any contrary state court precedent; if it does not arise frequently, it is unlikely to implicate substantial federal interests

      1. 5.2.1

        Thank you for the research Anon.


          Anon, that Wikipedia quote you bolded that this Sup. Ct. decision was “related to but not involving patents” is inaccurate. The malpractice case directly arose from missing a patent law statutory bar in patent litigation.


            I agree – the word missing is “substantially” – which, here in this case, was discussed in detail by the Court.

            That does not change the meaning of my post though. If it helps, feel free to mentally add the word “substantially” to the Wiki quote.

      2. 5.2.2

        I think not. Legal malpractice is not, strictly speaking, a matter of attorney regulation, but a matter of negligence law. The principal difference being that the standard of care is a professional, specialized one instead of that of a “reasonable man.”

        Despite the rules of decision of and licensing of practicing patent prosecution emanating solely from a federal agency, the tort claim arising from negligent practice under those rules remains a local or state matter.

        State bar/USPTO licensing to practice (and associated disciplinary actions) don’t form the basis for action in malpractice cases, an injured plaintiff and local professional do.


          FB, I was not sure what your “I think not”statement referred to. But I think you have provided an excellent post on professional malpractice. A registered patent agent offering specialist, federally licensed, services to clients in Texas should indeed logically be held to a professional standard of care on that basis.


          The principal difference being that the standard of care is a professional, specialized one instead of that of a “reasonable man.”

          Thank you FB – now discuss how a state may not regulate a patent agent.

          Your attempt to push this back to “local or state” does not stand up to what the Supreme Court held in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963) – do you have any other attempted ties?

          As to “should indeed logically be held to a professional standard of care on that basis” – what EXACTLY is “that basis“?

          As I pointed out, this is a Federal Item.
          As I pointed out, state law cannot control a patent agent.
          As I pointed out, malpractice (at a state level) would violate Sperry as a means of control by the state.
          As I pointed out, the “professional standard of care” is very likely – necessarily different for a patent agent then it would be for an attorney (at least in regards to ALL of those things that patent agents do not study, and are not tested for, in relation to passing the patent bar (things like contract, torts, agency, and to a large degree, the level of professional ethics).

          Your statement on its face Paul avoids all the details to which I have been trying to get the dialogue to focus on. So while your reply “sounds nice,” as it is, it is nothing but an empty platitude.


          In other words FB, your statement of “Legal malpractice is not, strictly speaking, a matter of attorney regulation, but a matter of negligence law” does not get you where you want to go.

  3. 4

    Do courts in Texas, or anywhere else in the USA, recognise any legal (attorney client) privilege in communications between a European patent attorney and their client, in connection with drafting, filing and prosecution at the EPO?

    I ask this because (as you already know) patent attorneys outside the USA are members of a legal profession but are not attorneys at law. The courts of Germany see the patent attorney as of equal “rank” with the attorney at law. Together they constitute a litigation team. More or less the same (these days) in England. And the EPO correspondence seems to me to be of increasing interest in litigation in the USA.

    It takes years of study, to pass the exam papers to be a UK, German or European patent attorney. Papers on drafting, prosecution, inter partes oppositions, client advice on all aspects of patent law. But those who get through all these exams still aren’t attorneys at law.

    I think the AIPLA recently changed its view, that EPA’s are nothing more than non-lawyer “agents” and so are not eligible for membership.

    So does client’s use of an EPA for advice enjoy privilege or not? Or is that question still unanswered?

    1. 4.1

      Under agency theory, the privilege present for attorney/client extends to the agent of the attorney.

      Does that help?

      1. 4.1.1

        Not a lot. I appreciate that if an attorney in private practice engages an “agent” for a task such as doing the search for an FTO opinion, then the attorney-agent communications can attract privilege.

        But how about if in-house asks for an FTO opinion from an EPA?

      1. 4.2.1

        Nice link, PiKa,

        from the decision therein linked:

        In Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), the Supreme Court was faced with a challenge to the State of Florida’s attempt to regulate the activities of patent agents on grounds that those activities constitute the practice of law. The Supreme Court addressed the challenge in two stages: first, determining whether the activities of patent agents before the Patent Office constitute the practice of law, and, second, determining whether, if so, the State of Florida had the authority to regulate those activities. The Supreme Court answered the first question in the affirmative and the second in the negative.

        This affirms my points above.

    2. 4.3

      Max, I believe the AIPLA has a “foreign associate” category for membership, and it is inconceivable that that membership category would not account for the fact that most patent practitioners outside the USA are not lawyers. The AIPLA also added a “US patent agent” membership category a few years ago. I doubt the addition of either of these membership categories is due to altruism; I suspect the organization simply wants to increase its membership, and realizes that it has maxed out on members from the US patent attorney crowd.

  4. 3

    Would someone explain that cartoon to me?

    1. 3.1

      if you shrink the US pieces even smaller then you can fit 10 or even 20 Americas into Texas.

      1. 3.1.1

        Not to mention that any such tessalations include within the shrunken US the area that is Texas itself….

  5. 2

    Kind of a slow day.

    Anyone want to take a bite at why our patent system should not limit patent grants to the scope made obvious by a disclosure (and the prior art at the time of filing)?

    I am referring to how a patent’s scope must be enabled, but not necessarily obvious. In granting enabled but non-obvious scope to patentees, we are giving away the rights to scope not actually taught to the public. Why is that the right way to run a patent system?

    1. 2.1


      You want obviousness to be a one-way item? A single edge sword?

      Further, you appear to be conflating enablement and obviousness. I suggest that you return and study both.

      1. 2.1.1

        No, the current system makes obviousness a single edged sword. I think obviousness should be a two edged sword. In order to get a patent, your claims should be non-obvious. But when enforcing a patent, your scope should be limited to what was obvious from your disclosure (and the prior art).

        I don’t see any conflation. Do you disagree that the scope of what may be made and used without undue experimentation in view of a disclosure is distinct from what is made obvious in view of a disclosure?


          the current system makes obviousness a single edged sword

          Not really.

          I invite you to read KSR and note how protection for items already patented is noted. You may have to pay attention and clear away some preconceptions to see it, but it is there plain as day.

          Do you disagree that the scope of what may be made and used without undue experimentation in view of a disclosure is distinct from what is made obvious in view of a disclosure?

          Your question begs the point of what you want to install. I suggest that you contemplate what “obviousness” means (and no, it does not mean ONLY a “keep out” – it IS a double edged sword – and by double edged, I do not mean that cuts twice against the patentee – such would be a double leading edge sword; rather, the double edge sword I speak of is a sword that cuts both ways – both against and for the patentee – the version you seek is something only against)


            Non-answers. I invite you to actually explain your position rather than vaguely alluding to it.


              Just because you do not understand or do not like the answers does NOT make them into non-answers.

              It is – and should be – clear between something that cuts twice in the same direction and something else that cuts twice but in different directions,

              Your entire pre-occupation is with limiting patent rights.

              You fail to see that KSR impacts NOT ONLY any prospective attempt to obtain patent rights, but also serves as to “protect” (embellish, strengthen) those rights already granted.

              I invite you to read KSR and note how protection for items already patented is noted.

              This is a straightforward and simple sentence – whose meaning is quite clear.

              Instead of crabbing back, perhaps if you actually did as I suggest, then the “non-answers” would make sense to you. You would see that “answers” ARE what I provided – and an invitation for you personally to uncover your own “ah ha” moment of learning that answer directly from the source I suggest.

              You might then over the weekend look into some aspects of learning theory, as your view of what is an answer is severely limited.

    2. 2.2

      Do you want to examine 500 page Patent Applications Ben?

      1. 2.2.1

        Do you judge what makes for a good patent system based on how easy it makes your job?


          An interesting question.

          And one that has been answered as far as what is proper for the service industry job of the examiner (hint: no, things made easier strictly for making things easier do not make a good patent system). When was that white paper on “making things easier in regards to software”…? 1968? half a century ago..?

          Einstein’s adage certainly fits: …and not simpler.


          I don’t think I fully understand your question. How can something be enabled, but not made obvious.

          I think the intention of your ideal is to prevent a claim for a device that includes a “temperature sensor” from covering embodiments that include yet to be developed lazer based temperature sensors that measure the speed of individual molecules and take an average of the speed in a given volume, the so called speedtrap sensor.

          However, I think it would be obvious, once those are available, to use one of those as the recited temperature sensor in embodiments where that kind of sensor would be advantageous, even though the specification makes no mention of them.

          If that is an example of want to prevent covering, then how does your rule about obviousness do that. If is not an example of what you want to prevent covering, then what is?


            “How can something be enabled, but not made obvious.”

            Are you suggesting that the enabled is per se obvious?

            The way it typically works is you claim “do X on a computer” and perhaps disclose “do X by steps A,B, and C on a computer”. However “do X on a computer” also includes “do X by steps I, J, and K on a computer”. Nothing suggests doing K, but because of the preexisting skill in the art, one of ordinary skill in the art could make/use a clmputer to do X by I,J, and K without undue experimentation. As the reference and the prior art does not teach that approach, part of the claim scope is enabled but non-obvious.

            “If that is an example of want to prevent covering, then how does your rule about obviousness do that.”

            Assuming the speedtrap sensor was enabled but not actually out there, the inventor didn’t make that scope available to the public with their disclosure. As such, when he goes after the person using his invention + speedtrap_sensor, that person should be able to get off the hook by showing their invention was non-obvious.

            This made-obvious limit to claim scope would necessarily have to be applied post-grant.


              Ben – you are trying too hard and losing the meaning of obviousness.


              I don’t know what speedtrap sensor you are referring to, so I can’t follow/respond to that.

              However I can adapt this to my photography example: “Nothing suggests doing K, but because of the preexisting skill in the art, one of ordinary skill in the art could make/use a clmputer to do X by I,J, and K without undue experimentation.”

              If the spec discloses and the claim recites record an image and K is record an image using changes in temperature measurements then the claim legitimately covers that embodiment and someone is owed a royalty. On the other hand the guy who came up with using K is entitled to his own patent on doing it with K. He is standing on the shoulders of the first guy, so he owes him tribute. On the other hand, he made a contribution to the art, so he gets his own patent. In reality, they probably “do a deal” and cross license to each other….

              I don’t see a need for a change.


                “I don’t know what speedtrap sensor you are referring to, so I can’t follow/respond to that.”

                The one you described in using that exact term “speedtrap sensor”.

                “He is standing on the shoulders of the first guy, so he owes him tribute.”

                The public is giving more than it gets to the first guy, and in doing so retards the progress of the useful arts. That’s a darn good reason to change.

                1. and in doing so retards the progress of the useful arts.

                  This is an entirely UNSUPPORTABLE statement.

                  What the F do you know of any “retards the progress”…?

                  Are you aware that blocking progress causes MORE innovation (the necessity of work around).

                  Ben – stop being so blithe and merely mouthing the claptrap and Kool-Aid that you have been fed.

                  Get out and learn some actual innovation science and history.


          I think and important aspect of a good system is that it is practical.


            I think in practice there would a limited number of years of inflated specifications before the CAFC developed a robust understanding of obviousness so that trivial additional limitations could neither grant patentability nor undermine granted patents.


              Because since 1952 has not been long enough….


              That wouldn’t matter. You want every covered embodiment to be literally enabled and at least obvious.

              That means if my claimed method involves measuring a temperature, I now have to disclose every method of measuring a temperature imaginable.

              If the next step is to record the temperature, I now have to disclose every method of recording the temperature imaginable from pencil and paper to base two, base eight, Hexidecimal, Fahrenheit, Celsius, Rankine, Kelvin etc.

              If the step after that is to stir, I now have to describe every stirring implement imaginable, from glass and plastic rods, to spoons of every composition, wooden, silver, stainless steel, to those magical magnetically driven capsule shaped deals… you get the idea…

              Even if there is only one claim, the spec has to be huge.


                Consider as well, Les, that any words you use in your specification, would need words as well to define those words, and would need words as well to define those words, and would need words as well to define those words, and would need words as well to define those words, and would need words as well to define those words, and would need words as well to define those words, and….

                Turtles all the way down.

                (that’s at least one reason why Ben is deep into the weeds here)


                “That wouldn’t matter. You want every covered embodiment to be literally enabled and at least obvious.”

                The full scope of the claim is also supposed to be supported by the specification. The courts have appropriately made it possible to lean on what the PHOSITA knows in order to satisfy that requirement. The CAFC would soon develop obviousness law in the same way once it was in patentees’/applicants’ interests for SOME things to be obvious.

                1. The full scope of the claim is also supposed to be supported by the specification.

                  All that you are doing Ben is quibbling about what “support” means and wanting something other than what is in the law today.

                  And you are doing a horrible job in stating what that “something” is – in part because you attempt to use terms of art in ways that those terms do not carry – causing confusion on both what you are trying to put forth as well as the notion that you understand what those terms do mean today.

                  I suggest that you start over.

    3. 2.3

      I think Ben is referring to the US system being a “peripheral” claiming system, and he is asking why not using a “central” claiming system. I think the answer is that it is how things have been done here.

      1. 2.3.1

        You may be right, but that is not how I understood Ben. See my 2.4 below.

      2. 2.3.2


        I am not sure that “that it is how things have been done here” is the actual answer.

        There is a real reason why one system exists instead of the other.

        Your version of the answer may be better reflected in a question of “Why have we not switched from one system to the other?”

        To which, a returning question may be validly put: why would you switch?


          Why switch? Why indeed. What exactly do you achieve with central claiming that you haven’t already got with peripheral claiming plus a DoE to extend the reach beyond the literal periphery of the claim?


            I am sure that there ARE reasons to switch.

            For example, there are some philosophies that view patents with such disdain that any and all means to limit patents are to be considered not only “fair,” not only “worthwhile,” but even consider them to be “necessary for any sane patent system.”

            Of course, it does not even need to arise to a level of an actual “philosophy” to reflect this Ends justify the Means mindset. Mere feelings (perhaps stemming from a bruising encounter) are enough.

            As you certainly have been around the block (even if that block is a relatively small one), I am certain that you can see the animus I speak of reflected in many of the posters who “contribute” in this forum.

            If the aim of “what exactly do you achieve” becomes separated from “that you haven’t already got” then ALL kinds of “why switch” floats in.

    4. 2.4

      OK Ben, you’ve had exchanges with anon. Perhaps now you and I can have an exchange of views.

      You want to limit scope to that which the patent’s disclosure renders obvious. Otherwise, you say, the “patent bargain” is overly generous to the patent owner.

      I don’t agree. Instead, I think it should like it is in Europe, that the scope of protection granted by the PTO has to be “commensurate” with the “contribution to the art” made by the disclosure in the patent. The EPO several of its patentability filters, notably Art 83 (clarity) and 84 (sufficiency) of the EPC, to deliver this objective.

      You might think that your theory of legitimate scope and my theory come down to the same thing. They don’t.

      Later inventors who “stand on the shoulders” of the patent disclosure will make non-obvious improvements to it. But they must pay tribute to the shoulders that made it all possible. Anything else is unfair to the shoulders.

      If you disagree, would you care to explain why?

      1. 2.4.1


        Believe it or not, but your answers resonates with mine.

        The problem Ben has is that he wants both edges of a sword to cut against the patentee.

        Here, you actually reflect that tribute to past patentees is important.

        This is exactly what I stated!

        This is also something found in KSR (but one first must recognize that KSR is not all about making it difficult for a prospective patentee).

        Ben’s problem is that his day to day job is one of “just say no” (still). The Office is still infected with that tinge of “Reject Reject Reject” from the past Dudas era, no doubt driven by careerists in the Office and all of the shadows that exist there.

        His problem is also that he seems unable to recognize his own bias. Far easier to say that I have not provided an answer (an answer that is rather surprisingly similar to your answer) than for him to actually see the answer that is there.

        Chances are very high that he will look at your post and come to a similar view of your post as he viewed my post: “Non-answers. I invite you to actually explain your position rather than vaguely alluding to it.” He is not likely to explain why he disagrees.


          Will Ben agree? Well, anon, we shall soon see (I hope).

          Fact is though, like Ben, I did not understand what you were driving at.

          BTW, a link between the PTO examination for obviousness and the allowable scope of protection was made at the EPO very soon after it opened its doors to patent applications in 1978 and the link just gets stronger and stronger with the passage of time.

          link to

          Perhaps that link will give Ben (and you) more food for thinking about how to balance (Art 69, EPC) a scope of protection that is “fair” for the inventor with a definition of the protected invention that gives the public “reasonable certainty” as to the reach of the issued patent.


            Thank you for the link (no snark)**.

            That you profess to not get what I was saying is not surprising for two reasons:

            1) it’s you (yes, there is snark here)
            2) this is a US law question, and from 1), you often appear to not get the US Sovereign nuance of things.

            Suffice to say though, your point DOES align with mine, and Ben’s view is insufficient in either of our positions (and Ben’s shortfall – and reason for the shortfall – applies equally well in either of our positions).

            **The link provided has two interesting tidbits (footnotes removed, emphasis added):

            1) An invention may consist in a mixture of technical and non-technical features. In such cases, the EPO generally applies the so-called “Comvik approach” (cf. T 641/00) to assess whether the invention involves an inventive step. In the “Comvik approach”, any non-technical feature, i.e. a feature from a field excluded from patentability under Article 52(2) and (3) EPC, is ignored for the assessment of inventive step, unless the non-technical features do interact with the technical subject-matter to solve a technical problem. Assessing whether or not a feature contributes to the technical character of a claim has been viewed as difficult.”

            That “do interact” mirrors our exceptions to the judicial doctrine of printed matter, and – for example – ALL software does in fact interact (if it did not interact, it would not be present in the first instance).


            2) “T 2/83 investigated the “could-would” question when determining if the skilled person is prompted to combine two prior art references. The decision also discussed the so-called “problem-inventions”, namely the discovery of an unrecognised problem which may in certain circumstances lead to patentable subject-matter even though the claimed solution “is retrospectively trivial and in itself obvious”. If the identification of a problem is not obvious, “the solution to the problem can not be obvious either, even if it retrospectively appears to be trivial in view of the identified problem.”

            which opens a HUGE door to what otherwise would appear to people to be obvious and trivial “C R A P” somehow getting through the patent door.


              So, anon, next you need to go to the Steinbrener Papers (just out) in the OUP Journal known as “JIPLP”. Stefan Steinbrener is the retired Chair of the EPO Board of Appeal that heard software and business method cases. His two-part learned Paper offers a “White List” of stuff that is eligible. You need to subscribe, but perhaps you can get round that somehow.

              When you’ve digested all that, perhaps 50 pages and 150 cases, you will have a “feel” for what is “technical”. You might then think that the Wikipedia page, heavily dependent on the Ashley Papers (Graham Ashley is another EPO Board Chairman) could do with an update.


                I do not have access to those papers, MaxDrei.


              As to your 1) I commend to you the Steinbrener Papers. As to your 2) the category “problem invention” is often argued, by those trying to get the EPO to issue, or to dismiss a post-issue opposition, but it succeeds only very rarely. So I don’t see it as a door that is “huge”.

              To its credit though, the EPO recognised from the outset that unicorns ie problem inventions, can exist.

              From memory, I think it was liquid nitrogen freeze branding of cattle, that the EPO’s MPEP cited as an example. Nobody but the inventor saw the problem with hot iron branding that was solved if one used N2 instead. Would you like to know the problem, or do you already know it?

      2. 2.4.2

        Your point is fair. Still, the terms of the patent bargain are a choice for the legislative branch. I do not see why the legislative branch (or the judiciary if the legislative is silent) cannot decide to give less right for the disclosure of an invention. For example, in the example of US claims invoking 112(f), the literal scope of the claims is close to what Ben suggests: what is equivalent to the claimed invention at the time of filing. Nobody has successfully contested the power of Congress to enact 112(f) yet.


          Oops. Should read “equivalent to the disclosed invention”


          Good argument. M+F claims are tricky, in whichever jurisdiction you happen to find yourself. The US Congress wrote 112(6) to address the issue. Every other country has its way to deal with M+F claims. AFAIK, no other country has gone down the 112(6) path.


            M+F claims are tricky


            Even trickier (especially for certain someones – or certain sAme ones) is the notion that words sounding in function are fully amenable – fully legitimate – OUTSIDE of our 112(f)/112(6), and that 112(f)/112(6) is an option for FULLY functional claiming.

            Two more wrinkles:

            1) the option does not swallow the rule. In other words, the notion of FULLY functional claiming cannot swallow partial functional claiming.

            This of course leads directly to the Prof. Crouch coined term of Vast Middle Ground, and an abundance of claims with partial functional claiming that are entirely legitimate – and are entirely legitimate outside of the option of 112(f)/112(6),


            2) the “Point of Novelty” aspect is entirely missing from this treatment as the law as written by Congress is understood. In other words, one often sees attempts to insert some “Point of Novelty” requirement into aspects of claim elements that are entirely optional as to form. Such is a clear legal error. Often, the “Point of Novelty” legal error arises FROM the mis-perception of 1) above.


              Is your point that 112(6) raises more problems than it solves? If so, I agree.


                My point is that many here even in our Sovereign do not understand what 112(f)/112(6) controls and what it does not control, and that many use 112(f)/112(6) incorrectly as a crutch in attacking the ability to write claims in partially functional terms which is a fully legitimate option outside of112(f)/112(6).

                So no, the point is very different than your proffered agreement.


          I do not see why the legislative branch (or the judiciary if the legislative is silent) cannot decide to give less right for the disclosure of an invention.

          Two points PiKa:

          1) the judiciary does not have authority to write statutory law if the Constitutionally appointed branch of the government is quiet. This is a direct violation of the Separation of Powers.

          2) No one is really saying that the balance of the Quid Pro Quo cannot be changed.

          Better question may be:
          WHY would you make such a change?
          In whose favor does such a change benefit?

          This is where understanding innovation theory as well as the politics of agency capture and Efficient Infringement come into play. This is also where the understanding of what makes a strong patent system strong (having both a carrot and a stick approach) are important. And most definitely, this is where understanding (that a strong patent system is best for innovation overall) is critical.

      3. 2.4.3

        Thanks for the reply Max.

        The patent system in the U.S. exists to promote the progress in the useful art rather than simply deliver compensation to inventors. A system which limits scope to that made obvious would (1) incentivize more thorough initial disclosures, (2) would increase the incentive to disclose follow on inventions, (3) would continue to compensate inventors for what they brought to the public.

        What is “fair” to inventors should only matters insofar as inventors are no longer sufficiently incentivized to disclose. I think if the system were changed to limit claims to what was made obvious, it would be appropriate and necessary to extend term length to compensate.

        I’m really not sure how you can possibly see including follow on inventions as “commensurate” to the scope of the original contribution. If follow on inventions were not made obvious, they are plainly outside of that contribution, even if they require the contribution. How does the public benefit from the inventor being granted rights to what the inventor did not give to the public?

        I think the change to a system where scope was limited to that made obvious would would make obviousness prosecution much more honest at the PTO. Practitioners would have an incentive not to claim that the ATM reference’s failure to explicitly include a step of ‘approaching the ATM’ made their claim non-obvious, because such statements would help define the scope of their claim during litigation. And the Office would be motivated to constrain examiner statements of A+B+C+D+E+F+G+H being obvious. Further, I think this change would resolve the issue of computer based inventions without resorting to weird eligibility arguments or technology specific rules.



          Several comments that hit the “do not have a dialogue” filter:

          Your comment is awaiting moderation.
          February 24, 2018 at 5:10 pm

          And the Office would be motivated to constrain examiner statements of A+B+C+D+E+F+G+H being obvious.

          Actually, exactly the opposite.

          Your comment is awaiting moderation.
          February 24, 2018 at 6:01 pm

          The patent system in the U.S. exists to promote the progress in the useful art rather than simply deliver compensation to inventors.

          This statement reveals a bit of a skew.

          The patent system in the US does indeed exist to promote the progress.

          That “promote” is certainly not limited to the (current) view of “promote,” as in, a type of technological advance in and of itself. Within the Constitutional notion is included the more “mundane” view of “promote” as in a promotion – think of the advertising sense of the word.

          This of course feeds into the notion of Quid Pro Quo.

          That notion is NOT a statist “the benefit of the State comes first” and especially is NOT a “it matters only that the State advances.”

          That notion is one of an equal exchange.

          Further, the exchange works in more than one manner. This multiple manner of working can be appreciated by recognizing that a strong patent system provides better promotion, and that a strong patent system features BOTH a carrot and stick approach.

          Ben likely only sees the carrot, and likely only sees the carrot as some type of “meh, nuisance” that has to be tolerated in order to grab that “advance.”

          But the Quid Pro Quo is more than that. When one realizes that what is better for the innovator is better for society overall (and stays away from the propaganda that “patents are B A D”), one can also realize that promotion comes both from any carrot effect directly to the patentee, but also comes indirectly from using a stick on those that infringe.

          It is meant to be painful for infringing!

          And note this: even for those infringers who may have actually invented prior, but had chosen not to share.

          At least, that was the original Quid Pro Quo and intent of a strong patent system.

          Sadly, we have seen the patent system get watered down. Bit by bit, but with accelerating detrimental effects, the stick has been taken away – and like the adage of “spare the rod and spoil the child,” the result has been a growing mewling that even weakened patents are somehow “unfair” and that additional reductions are whined for (with the demeanor of a pouty child).

          The nigh constant denigration of those that understand the value of innovation and understand the value of a strong patent system has festered. The lack of critical thinking has resulted in a lemming like (Lemley-like…) passivity to the ongoing degradation.

          Your comment is awaiting moderation.
          February 25, 2018 at 5:49 am

          What is “fair” to inventors should only matters insofar as inventors are no longer sufficiently incentivized to disclose.

          Quid Pro Quo is an equalizing measure.

          Your view shows an anti-patentee animus – you want to minimize one side of the equation.

          Ben – you really need to stop drinking the koolaid that they are serving you.


            Funny how you reference the quid pro quo and “equal” exchange, but never explain why patentees should be given more than they make available to the public. It is not an “equal” exchange to be granted scope that you neither diclosed nor made obvious to the public. It is a disproportionate exchange.


              It is equal.

              Not sure why your brain right now is frying on this notion of “made obvious,” nor is it clear just where you think that your new “pet theory’s” is leading you, but you are deep in the weeds and only getting deeper.


                It is not.

                Say you get a patent to scope X, and later someone gets a patent to a non-obvious subset of your scope, X1.

                You did not provide X1 to the public, but it is included it in your grant. That is not commensurate. That is not an equal exchange.

                1. Ben, even some FTC staff have gotten confused about what a patent grant is. It does NOT grant you a right to make or sell a product, only a right for a patent owner to sue someone who infringes a claim of that patent. It is quite possible to make or sell a product that infringes several claims of several different patents owned by different inventors. Even on the same product feature if their are unexpired basic and improvement patents.

                2. No it is not Ben.

                  You remain in the weeds. Improvement patents happen all the time.

                  Your scope coverage is your scope coverage.

                3. Your “how it should be” is plenty cryptic enough for everyone Ben.

                  Your “non-sense, non-suggestions” doubly so.

                  Plus you apparently have not caught up yet to the various points that I rescued from the “do not have a dialogue” filter. You want more that you haven’t answered yet?

                4. Nothing you wrote responded to why the public should give grants of scope greater than that has been made obvious. Try again.

                5. Nothing you wrote responded to why the public should give grants of scope greater than that has been made obvious. Try again.

                  Your entire premise is gobbledyg00k nonsense.

                  You are not using the terms as they are understood in patent law, and your desire for “something else” remains unhinged and not stated in any form approaching a cogent viewpoint.

                  As to replies to such nonsense, I NEED NOT provide more than noting your own lack of cogent material.

                  Further, YOU STILL HAVE not responded to my many points already put to you.

  6. 1

    Food for thought: Does this also make patent agents potentially liable for legal malpractice suits in Texas courts?

    1. 1.1

      Interesting question.

      First blush would be no, as the right inured in Texas is based solely on the Federal situation, quite apart from any commitment by the patent agent to work under – or submit to – any Texas law or State of Texas related malpractice item – but that is purely off the cuff, and I cannot vouch for its accuracy.

    2. 1.2

      I would say that agents can be liable when illegally practicing law in Texas when they step outside of representing a client before the patent Office. As to malpractice in a patent matter before the patent Office, I don’t see why this would end up in a Texas court.

      1. 1.2.1

        I agree PiKa.

        To the extent of practicing law without a license, anyone doing so in Texas would be so accountable (but that’s a rather uninteresting aspect).

        As to malpractice charges for malpractice on the items of law that a patent agent is empowered to practice on, I think we both see it as a Federal question.

        But I would not be so quick to dismiss the state action. Why? Because an attorney who is operating as an attorney under the control of the malpractice (and ethics**) controls of a particular state may in fact be liable in the state of practice for malpractice on federal matters.

        I recognize this conflicts a bit with my post at 1.1 – and I remain open to the fact that here I am not confident in my answers. I think that Paul raises a fantastic question in that patent agents have not sworn any state oath. They do not operate under other state restrictions as would attorneys operating in the same state. While both attorneys and agents fall under the “control” of the OED (Federal level – for patents), that is where the “coverage” stops.

        **I threw in the ethics part because legal malpractice may arise under violations of an attorney’s ethical restrictions. Note here that attorneys and their restrictions vary from state to state.

    3. 1.3


      Two interesting twists to your question arise

      1) when one considers if there are any effects of the recently evolving view concerning jurisdiction and the location of actors to which jurisdiction is attempted to be established by that location.

      Consider that an actor operating out of a “home office” was considered NOT to have established “a regular place of business” in the location of the home office.

      Even if one arrives at a conclusion that “a” state malpractice law has been violated by the action/inaction of a patent agent for a question of Federal law (presuming here that the malpractice action is not based on practicing law – some other law – without a license), not only does the question of forum come up as to where one might sue, but since malpractice may very well vary by state, the substantive claim itself may vary state to state on the Federal matter (while it appears somewhat universal that the formula of “duty-breach-damage” must be established, what each of those terms may have state to state wrinkles – and the point here related to forum is in determining whose state wrinkles apply).

      2) Of course, this wrinkle affects attorneys as well – but attorneys are knowledgeable (or are held to be) on their responsibilities while no such mirror exists for patent agents. I’m pretty sure that the patent bar exam does not include any “ethics of practicing law,” nor does it include any tort or agency law. As “breach” is often defined in relative terms (i.e., an actor failing to exercise the minimum standard of care required of an actor of like ability), and NO ethics/tort/agency “abilities” exist for patent agents anywhere (outside of the thin ethics of the OED, which for the sake of argument here, I am presuming remain intact), then can there even exist “breach” for a patent agent?

      I wonder if this is a thread that should be mirrored onto the Hricik side of the blog (or at least, have David chime in).

      1. 1.3.1

        last one to be freed (for now):

        Your comment is awaiting moderation.
        February 24, 2018 at 5:16 pm

        This comment should reflect the modification provided by the link by PiKa that generated post 4.2.1.

        States can not control the legal work of non-barred patent agents doing the Federal legal work related to patents.

        A State exercising its state-version of malpractice would in effect be exercising state control, and this violates the holding of the Supreme Court.

        Is there a Federal cause of action for malpractice?

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