The USPTO has released a draft version of its 2018-2022 Strategic Plan and is seeking comments before finalizing the document later this year. The plan will serve as a key marker of Dir. Iancu’s strategic leadership. Although a bit of a dog-and-pony show, the PTO Strategic Plan can serve as a single of where the agency is headed and can be used to help ensure that all key decisionmakers are on the same trajectory. If there is something that the PTO SHOULD be doing, now is the time to highlight that role. Still, recognize that the value in most strategic plans is the learning process that occurs in developing that plan. It is now your chance to participate — Send comments on the draft to Strategicplanning1@uspto.gov by September 20, 2018.
The Strategic Goals reflect the fact that the PTO is primarily a bureaucratic agency — and the main goal is quality bureaucracy. That means efficient, correct, and timely work. Thus, the PTO’s first strategic goal is “Issuing reliable IP rights.”
The goals:
- Issuing reliable IP rights
- Aligning patent and trademark examination capacity with current and projected workloads
- Modernizing information technology (IT)
- Enhancing the customer experience
- Promoting a mission-oriented and quality-focused culture among our employees
- Protecting IP rights abroad
- Monitoring and helping address dynamic IP issues in Congress and in the Courts
- Maintaining a sustainable funding model
- Developing IP policy
The draft goes into some loose detail on the various issues that is fairly well summarized by the following tables:
I do have to wonder what (if any) level of strategic planning experience the vast majority of those making comments on this thread have.
There are many “Dilbertesque” moments here, many coming from this that appear to not have the foggiest idea on what “strategic planning” is. From “force-fitting” a “blame the applicant” undertone, to grousing about hurt feelings to dust-kicking on “conspiracies,” to attempts to include that which the Office does not control, all of these exhibit fundamental weaknesses on not understanding the basis of the document or its place as a management tool. The “Dilbert” aspect of “that sounds good and who could argue against that” falls flat when an understanding of what “strategic planning” is IS brought to bear.
Improving search would help raise the quality of patents. Good attorneys want their applications allowed over the cited prior art.
Lots of nonsense below–again the same old stuff.
1) It is the job of the patent examiner to find the art not the applicant. The USPTO has the burden of examining the application and finding the best art. (Yes, there is a duty to disclose any art you may know about, but not a duty to know the best art.) The anti-patent movement is constantly trying to shift the burden to the applicant.
2) The patents that are being invalidated with 103 at the PTAB, in general, should not be invalidated. There is the game of the “new” reference. Again, what we have is the anti-patent movement has come up with good propaganda to confuse the ignorant. The way it works is there are enormous numbers of possible references. The examiner may just pick the closest ones and not bother with cumulative references. All art in the field should be assumed to have been considered as the examiner could not go through all the art and is merely picking the closest. This is easy to understand when you know that there are thousands and thousands possible art references for almost all patents and when you understand what experts in fields do.
3) What typical happens is that cumulative references are used with the same arguments that were considered by the examiner. Using KSR, the judges can invalidate any claim by saying it is obvious. Any claim. I could easily put together a 103 argument for any claim. So what you have is perfectly valid patents being invalidated using the same or similar arguments considered by the examiner but with different references that are equivalent. That is the typical case. There is no way the applicant can fight roll after roll of the KSR dice with “new”, i.e., another reference that is equivalent to one already considered.
4) Alice is absurd. I can invalidate any claim (or present arguments to so) with Alice. Total joke.
That is the current state of affairs. The anti-patent movement has all sorts of propaganda stories they run to try to obfuscate this.
As to (1):
If Applicants are sincere, in wanting the PTO to find the closest art, they would draft in line with PCT Rule 5(1), so that the PTO search can be properly focussed.
In my experience, only those drafting inside the USA, and nobody else but them, deliberately choose NOT to draft in line with PCT Rule 5(1). For as long as they continue so to draft, the USPTO will be unable to deliver a “quality” search report and so unable to issue a “reliable” patent.
For that drafting style though, I blame the courts, not the USPTO.
As to (2) and (3):
What is missing is a reliable and fair scheme of enquiry, to explore the obviousness issue. See Paul Cole. In Europe, the EPO is showing the courts how to “do” obviousness, reliably and fairly. The USPTO could follow Graham and then move on from there in EPO-PSA argument style. That would do obviousness reliably. Let the courts have their say on appeal.
As to (4): Best if I don’t comment.
“If Applicants are sincere, in wanting the PTO to find the closest art, they would draft in line with PCT Rule 5(1), so that the PTO search can be properly focussed.”
Unbelievable Horse S H 1 T.
You are aware that PCT Rule 5 claim drafting includes a call for the Jepson claim format, right?
Are you that out of touch with how often (and why) the Jepson claim format is actually used?
“For as long as they continue so to draft, the USPTO will be unable to deliver a “quality” search report and so unable to issue a “reliable” patent.”
That’s the SECOND TIME on this thread that you have peddled that line. You provided NO substantiation the first time, and you do not offer any here as well.
“For that drafting style though, I blame the courts, not the USPTO.”
Ah, a glimmer of hope for some underlying reason from you. For the horse’s sake, let’s pray that this is not merely some mirage.
Stop the proselytizing. At least, stop the feeble proselytizing.
The only place in the world where you will find a Jepson-format claim is the USA. The only place in the world where you will find best practice drafting not in line with PCT Rule 5 is the USA.
Try advancing a Jepson-format claim outside the USA one day, anon. See how far you can get with it, OK.
And another thing, anon. Go re-read PCT Rule 5 with the specification in mind, as well as the claim. Remember Paul Cole’s advice in his book: the specification, and not the claim, is the place for describing the invention, the contribution to the art.
What do you mean, Max? One is required to put the claim in Jepson format in Mexico. Nearly every MX office action ends with an admonition that the examiner expects you to amend the claim to Jepson format in the next response (although they never seem to penalize you when you ignore that admonition, until the claims reach the stage of allowability). I am told that they get this rule from Spain, although I have never prosecuted a Spanish national application, so I am uncertain of that last point.
Mexico and Spain are—last I checked—places outside the U.S.
A little further than Rule 5 (in Rule 6.3(b)):
6.3 Manner of Claiming
(b) Whenever appropriate, claims shall contain:
(i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
(ii) a characterizing portion-preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect-stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
…
But “only in the US,” eh MaxDrei?
I maintain that a PCT 2-part form of claim is not the same thing at all as a “Jepson” (the improvement comprising) format. That is a very common misconception in the USA. As I said, it is the US courts that have poisoned the Jepson format. I wonder how they would react to a patent properly drafted, and a claim correctly divided under the PCT Rules.
Greg, may I ask, in Mexico, does the PTO want the claim in PCT or in Jepson form?
Your “maintain” is meaningless on its face.
Maybe do more than “maintain,” and distinguish them. Maybe provide a third party source that distinguishes them. But hey, maybe “your word” is enough.
I think Greg should go first, and tell me about MX. Is it a PCT Rule 6 claim that MX wants, or is it really a Jepson.
Then I will reply to you both.
I should say that I’m obliged to you both, for prompting the thought: why don’t more PCT Member States ask for compliance with PCT Rule 6. My own guess is that it is because PCT Rule 6 drafting helps the PTO to search effectively and efficiently. After that, it is less important whether the claims that go to issue are in compliance with PCT Rule 6.
Your “own guess” is in the weeds.
This is at least the third time that you have advanced a notion that somehow this format makes searching more effective and efficient, with no substantiation of the premise. No matter how you slice it, the claim – as a whole – still needs to be searched. Are you thinking that not all of the claim is to be searched?
Sorry, Max, but I do not understand your question. What exactly is the difference between PCT 6.3 and Jepson format? They look the same to me.
In any event, I agree with you about the courts “poisoning” the Jepson format. There is nothing intrinsically wrong with the idea of requiring the patentee to draft the claim to specify what the patentee perceives to be the advance over the art, but the U.S. courts have so badly corrupted the standard for obviousness that a Jepson claim is become an invitation to invalidation.
Sort of the same way that the inequitable conduct case law has perversely incentivized the applicant to bury the examiner under a welter of irrelevant art. Bad law leads to bad outcomes.
Greg, you put your finger on the difference. A Jepson form singles out the advance over “the art”. A PCT Rule 6 claim, by contrast, divides the technical features of the claim into two sets, relative to the disclosure of a single enabled embodiment in a single prior publication (D1) which could be as obscure as a PhD thesis in Russian, Chinese or whatever. I think this is why not only Jepson but also PCT Rule 6 claims are anathema in the USA.
But of course the extent of the “admission” by the Applicant is totally different. With a Jepson, one is admitting what is your “advance” over the art. With a Rule 6, one is admitting nothing more than what feature combination is disclosed by D1. Everything else is still in play.
There is no “finger” there as the difference you attempt to distinguish is the SAME THING.
Your contrast is black on black.
Or white on white.
The admissions are the same because the structure of the claims are the same.
Are you still there Greg? If so, what is your reaction, please, to my 36 mins past the hour posting of earlier today? In particular, do you agree with anon, that there is no difference between i) a typical Jepson claim and ii) a PCT Rule 6 (ie correctly divided EPO-style 2-part c-i-t) claim. That they are THE SAME THING. That:
“The admissions are the same because the structure of the claims are the same.”
I’m curious to know.
Hi Max,
I confess that I am not clear on where in Rule 6 you find warrant for the idea that one is only supposed to distinguish over a single D1 document. If, however, we proceed on the assumption that PCT Rule 6 claims are different that Jepson claims because Jepson claims are supposed to distinguish over all the art, while PCT Rule 6 claims are only supposed to distinguish over a single, closest prior art document, then Mexico definitely requires Jepson.
That is to say, nearly every MX office action I have ever read has ended with an admonition that the claims are to be amended to make clear that which is in the prior art (all prior art), and that which the applicant regards as the novel bit. When the claims are eventually amended to conform to this requirement, they have all looked basically like Jepson claims to me.
It makes no sense whatsoever to clear only a single piece of prior art.
MaxDrei is deep into the weeds.
Thanks Greg. See PCT Rule 6 (b) (3) (1).
Do not overlook those magic words “in combination”. They are key. I think MX (like a great many other patent experts) has not appreciated their significance (unless, of course, MX Office Actions also mention the “in combination” concept of PCT Rule 6).
When it comes to novelty, and a D1 reference that includes a plurality of worked Examples, you can’t cherry-pick features from different ones of those Examples to erect a novelty attack. Key is the notion of “in combination”. If you have to”cherry pick” there is no such “combination”. So it is with PCT Rule 6 two-part claims.
No wonder a Jepson claim is despised. It is usually impossible to draft it correctly.
You see, once you remove the “in combination” constraint, you can usually find all features of the claim somewhere or other in the prior art universe. Almost invariably, a patentable invention is a new and inventive combination of technical features, each one in itself not new.
A PCT/EPO 2-part claim is only “appropriate” (to use the word in PCT Rule 6) when there is a realistic starting point reference (D1) within the prior art universe. Often there is not. And when that is the case, a 2-part form of claim is poison, also at the EPO. But when there is a realistic starting point in the art (for example, an earlier publication of Applicant), there is nothing better than a 2-parter to reveal to a an open-minded judge or jury not only that the claimed subject matter is novel but also that the contribution to the art which the claim encapsulates is plainly not obvious either.
No wonder MaxDrei is so confused on this concept: there is an interesection with his confusion on obviousness (vis a vis the inconsistent treatment of PHOSITA.
Beyond just blurring novelty and obviousness, MaxDrei makes the unsupported assertion of:
“PCT/EPO 2-part claim is only “appropriate” (to use the word in PCT Rule 6) when there is a realistic starting point reference (D1) within the prior art universe. Often there is not. ”
There is ALWAYS a starting point reference.
Only God works from scratch.
MaxDrei makes up out of whole cloth: “relative to the disclosure of a single enabled embodiment in a single prior publication (D1)” and “warns” of paying attention to “combination” in the PCT guidance while he misapplies “combination” himself. The “combination” in the PCT is clearly to feature and NOT to single or plural items of art.
Once again I’m indebted to Greg and anon for their constructive questioning of the reliability of what I write. I see now that PCT Rule 6 had Jepson claims in view. But I am still curious about the difference I have experienced in real everyday practice, between a Jepson claim and a PCT Rule 6 claim.
In my experience, many US attorneys are not happy with a transition phrase “c-i-t” (or “the improvement comprising”) that correctly separates the features that are “in combination” within the prior art universe from those that reveal “the improvement” over the art. Instead, they want the transition phrase closer to the beginning of the claim.
Let us take a hypo. Your technical field is high carbon chrome bearing steels, and minor alloying elements in the composition. Your claim 1 is directed to a range of from 0.5 to 1.0% Mg. Claim 2 adds 0.25 to 0.5% Si. Claim 3 requires the molar ration of Mg to Si to be from 1.9 to 2.1. Why, because you have found out (and declare in your specification) that i) particles of Mg2Si in the microstructure improve the bearing function, but ii) a stoichiometric excess of Mg or Si has detrimental effects.
To your surprise and dismay (for you researched the state of the art thoroughly before you drafted claim 1, and you are yourself an out-and-out expert in the field), the USPTO cites D1, a PhD thesis in Japanese, catalogued and indexed 4 years ago in a public library in Tokyo, that discloses a HCC steel with Mg and Si in the alloy composition. Not only that, an Example in D1 destroys the novelty of claims 1 and 2 (but not 3). Fortunately, D1 says nothing about Mg2Si particles.
So, the patentability is relatively clear. How to write the claim under PCT Rule 6 is crystal clear. Nevertheless, my experience of how US attorneys write a Jepson would be: In a HCC bearing steel, the improvement which comprises…..
Plainly, such a division of the claim between its prior art and characterizing portions misrepresents what is the basis of its patentability over the art. At the EPO, for that reason, it would be rejected. We all agree that a Jepson would be foolhardy, but just suppose, for the sake of this discussion, that is what Applicant presents at the USPTO. What would be its fate there? In particular, would the PTO let it through to issue?
If so, that would explain the behaviour of US attorneys when instructing European counsel.
“But I am still curious about the difference I have experienced in real everyday practice,”
Have to stop you right there MaxDrei. Your views on what you have experiences no doubt are steeped in your former mindset.
I suggest that you let the realization of just what the “Manner of Claiming” really is (and what THAT entails, given the differences in Sovereigns, including patent profanity created in the different Sovereigns) sink in for awhile. After you realize the points presented, approach this by remembering that how you have thought of this for awhile (probably decades) was flawed, and that the tendency of any conclusion of your past thinking is most probably in error.
One suggestion to improve IPRs:
make the petitioner submit evidence that the references being used are not cumulative compared with the references that were used to examine the patent.
The Board is considering whether references are cumulative. See link to uspto.gov . However, that cannot be a rule, because there can be a few cases where the examination was wrong.
Re: the PTAB, I watched deliberations at an oral hearing for an IPR, 2 of the judges were asking questions that made it pretty obvious that they were coming from the position of “dear Patentee, the Petitioner has given us these references and says that they render your claim obvious. What are you going to do to save your patent?,” while the one remaining judge was dutifully trying to make the Petitioner ACTUALLY prove his case, instead of taking the Petitioner’s contentions as instantly true and shifting the burden to the Patentee.
For all the supposed experience these APJs have, there is a serious misunderstanding by them of what burdens are and who bears them.
KSR has nothing to do with “new references” versus “already considered references.” The standard in court is proving findings of fact by clear and convincing evidence. The standard at the PTAB is proving findings of fact by preponderance of evidence.
I think you are discussing the “substantial new question of patentability” standard for instituting an Ex-Parte reexamination where it does not belong.
PiKa: ? What?
I am using KSR because KSR makes patentabilithy a roll of the dice. So what is happening is you get new references asserted against your patent claims that are cumulative and then it is just a roll of the dice whether the fact finders will find it obvious.
The point is that KSR like Alice make it easy for any fact finder to invalidate any patent.
The point is that withoutKSR & Alice it is easy for any
fact findercrafty attorney toinvalidategain a grant for any weak application.Lucky people take their non-duty to know the best art so seriously.
Night Writer,
As you can see by the several tangents in the replies to your post, the strategic plan FOR THE Office needs to ask the right questions so that the plan pertains to those things that the Office actually controls.
The number one distinction is to make sure that “quality” is quality of examination as opposed to ANY notion of “quality patent.”
The Office is not in any position to control the substantive nature of the inputs to the patent process and instead should be strategically built to be robust in its processing in order to deliver quality of examination OUTSIDE of the state of whatever inputs it receives.
Anyone who has any appreciable experience in the real world with businesses that have “open inputs” can verify the veracity of my point.
Perhaps you should consider a different perspective. (By the way, I’m not advocating a particular position. I am simply pointing out some thinks you may not have considered).
“It is the job of the patent examiner to find the art not the applicant…. The anti-patent movement is constantly trying to shift the burden to the applicant.”
Yes, but the relevant question is how to handle poor examination which will inevitably occur some of the time. Given the inevitability of examination failures, one must consider who is in the best position to avoid the issuance of invalid patents and who has the most incentive to avoid the issuance of invalid patents. Thus, while an applicant has no obligation to find the best prior art, as between the public and the applicant, the consequences of failure should arguably fall on the applicant. I assume you disagree, but this is a policy dispute–not a legal one.
“The patents that are being invalidated with 103 at the PTAB, in general, should not be invalidated.”
How would we quantify this beyond the assertion “in general”? While I have no doubt that you believe this, I think you presume too much by dismissing those that do not accept this as true. There will always be disagreement about whether any particular claims should have been invalidated. This disagreement may be grounded in different interpretations of 103 or different opinions of the relevant facts in a particular case. Simply dismissing those that disagree with you as being anti-patent is not persuasive.
“The examiner may just pick the closest ones and not bother with cumulative references. All art in the field should be assumed to have been considered as the examiner could not go through all the art and is merely picking the closest.”
Why should we make this assumption? There are other possibilities. The examiner may also have picked the simplest art–not necessarily the closest, may have missed something, or may have simply done a poor job. We don’t know. The issue that you seem to be glossing over is how to deal with this uncertainty. The use of an assumption is one of many possibilities. The consequences of a particular assumption are of profound significance, and are not self-evident.
“This is easy to understand when you know that there are thousands and thousands possible art references for almost all patents and when you understand what experts in fields do.”
Rather than support your assumption, this undercuts it. The greater the volume of potential prior art, the greater the likelihood that something was missed. Absent some indication in the file history, there is no way to know whether a given prior art reference was considered and dismissed as cumulative or not considered at all.
“The anti-patent movement has all sorts of propaganda stories they run to try to obfuscate this.” While your conclusion may be correct, unsupported assumptions are not a rebuttal.
“the consequences of failure should arguably fall on the applicant.”
Pure B S.
This IS a legal (as well as policy) dispute, and one that was settled in the Tafas case.
Your own “frame of reference” is suspect, NSII.
Remember – this is the strategic plan OF THE Office. You appear to want to make this something else entirely.
You are unsurprisingly incorrect.
So are you. That was fun.
But then again, you do want everyone to take a “different perspective” and “blame the applicant”…
Commentors on this blog persist in blaming examiners for the problem when there is abundant evidence that the PTAB is killing good patents that were thoroughly examined. Simply browse through the PTAB appeals at the CAFC and the vast majority were thoroughly examined with the same or cumulative prior art considered. Frequently the claims have been through multiple re-exams and IPRs as well.
The hypothetical case of an examiner missing relevant prior art us simply not happening.
U.S. patents ate not reliable because the AIA and PTAB procedures result in cancelling patents that were properly issued and compliant with the law.
A patent issued with the best art known is not necessarily a proper patent.
“A patent issued with the best art known is not necessarily a proper patent.”
In absolute terms, sure. For the sake of the law, the presence (and level) of it BEING proper have been provided.
Those provisions notable were not changed with the AIA.
Simply browse through the PTAB appeals at the CAFC and the vast majority were thoroughly examined with the same or cumulative prior art considered.
Given how many of these AIA trial appeals are Rule 36’ed, I cannot understand how “browsing” the appeals decisions would give one a reliable insight into what happened at the PTAB. If you have done a systematic study on this point, I would be interested to read it. If you are merely cherry picking cases, however, then your assertion deserves rather little credit.
Incidentally, I would note that the vast majority of IPR petitions end with no claims affected. The AIA trial cases that end with the CAFC pronouncing invalidity are a minority of a minority of a minority, and hardly a representative sample.
U.S. patents ate not reliable because the AIA and PTAB procedures result in cancelling patents that were properly issued and compliant with the law.
How does this conclusion jibe with your premise stated above (that the CAFC is pronouncing claims invalid over art cited during prosecution)? If the CAFC thinks that the claim is invalid, then (almost by definition) the claim is invalid. If that claim falls over art cited during prosecution, that is actually evidence of sub-standard examination, not evidence that examination is just fine.
Yes Greg, the phony alleged statistic that most granted IPRs merely re-hash only prior art previously cited by examiners to reject the patent claims has been now repeated so often it has acquired a false news life of its own. No actual such study result is ever reported. It is not even logical for any competent IPR petitioners to do that.
“has been now repeated so often it has acquired a false news life of its own”
Please feel free to turn that same exact spotlight on the loads of Rah-Rah IPR cheerleading (and other anti-patent) rhetoric.
I have lived it. And read many of the records if other devastated inventors. I am not talking about the decision at the CAFC – they rarely address this issue. It wasn’t even argued for the first 4 years of IPRs. Only in the past year or so did lawyers start advocating for 325(d) at the PTAB so you won’t see that addressed in Fed Circuit decisions, Rule 36 or otherwise.
You have to look up the FWD to identify the prior art then compare it to the references listed on the patent.
Even then, if you are advocating Telelebrands and other infringers you will just say the examiner “did not consider the references in a meaningful way” or your “newly discovered” references are “closer prior art”. If you want to believe in the PTAB there are plenty of ways to clinch your eyes shut and excuse what they have done.
I am not talking about the decision at the CAFC…
Um, begging your pardon, but go re-read your own post #11. You invite us to “browse through the PTAB appeals at the CAFC” as evidence for the thesis you are advancing. If, as you now say, you are not relying on CAFC decisions to support your thesis, then you have literally no evidence behind your assertion, except for your own personal experience (a point which only may or may not be representative). A generalization from such a small sample is—forgive me—rather unconvincing.
I happen to think that your own invention got a raw deal in front of the PTAB. Of course, the CAFC recently sided with you, so it is not clear that your experience stands as evidence that the system as a whole is failing. One way or the other, before one can talk about “excusing” the PTAB, one must first establish that they are broadly in the wrong, and so far this is just an ipse dixit unsubstantiated assertion on this record.
Greg,
Incidentally I would note that your reliance on that 2015 report is highly misplaced. The flawed methodology that equates a settlement which results in the dismissal of the petition without a decision as a “Win” by the patent owner is highly misleading. EVERY settlement after an IPR is filed results in some sort of loss to the patent owner from the previous position of firm property….whether in terms of risk, money, time, or reputation damage to the patent. While the claims might survive…the value of the patent (and its claims) are very visible diminished. Given this combined 32% (pre- and post-institution settlement) is enough to swing the # of negative “outcomes” of the IPRs to patent owners into the majority column…your argument falls apart.
Not surprising that the statistical counting methodology used by Lex Machina misrepresents the negative outcomes to patent owners since the firm was founded by the father of “efficient infringement”, Stanford professor Mark Lemley….whose legal and consulting clients include Google…and whose wife was Google’s Chief Trademark Counsel from 2004-2010.
I see two lines of response there. Taking them each in turn:
(1) One cannot trust anything that LexMachina says because Mark Lemley is involved with it. Fair enough. If you think that those numbers are all just vaporous invention, there is nothing more to be said on the subject. I would note, however, that the conclusion that the overwhelming majority of claims challenged come out totally unscathed is also supported by the PTO’s own data.
(2) Settlement is still a loss for the patentee. This seems to me like a “how many angels can dance on the head of a pin?” question. Each settlement is its own unique snowflake, and it is impossible to know whether the patentee regards any given settlement as a “win” or a “loss.” I only mentioned that the claims come through unaltered, which is true.
Whether this outcome is subjectively desirable to the patentee is a point on which I never opined, mostly because I know little and care less on this point. It is possible that you care more than I do about this point, but I doubt that you know any more than I do about any but a handful of those settlements, so there is not much room for productive discussion here.
? The statistics are readily publicly available that settlement agreements between the parties account for a relatively small percentage of IPR terminations. [Not to be confused with D.C. patent suits where they account for the large majority of terminations.]
abundant evidence that the PTAB is killing good patents
LOL
Where is this “abundant evidence”? Behind Ron Katznelson’s couch cushions?
Nobody’s suggesting that the PTAB is perfect (human beings, after all) but the “de@th p@nel” nonsense was always nonsense. But you bought it hook, line and sinker, didn’t you?
Sad.
Frequently the claims have been through multiple re-exams and IPRs as well.
So. What.
All it takes is the right art and an attorney who is skilled at presenting the arguments relating that art to the claims in the most compelling manner. It may come as a surprise to you but sometimes people taking advantage of re-exams and IPRs don’t hire the best attorneys. Sometimes they hire their friends instead.
the AIA and PTAB procedures result in cancelling patents that were properly issued and compliant with the law.
The whole truth is that most patents that are cancelled by the AIA and the PTAB deserve to be cancelled and should never have issued. This doesn’t address the fact that a lot of cr @p patents don’t even make it through the system because the owner knows that the patent is cr @p and therefore doesn’t behave like a greedy disgusting p i g when trying to “monetize” it.
This is exactly why the AIA was passed by the way. Do you not remember the greedy p i g s? Happy to name names, if you need a refresher. It wasn’t that long ago.
How right you are Josh: link to ipwatchdog.com
How right you are.
MM’s meritless hand-waving and dust-kicking are just that.
Lucy and Pig Pen would be proud.
link to ipwatchdog.com
ROTFLMAO
It’s almost as though you can’t stand the thought that someone (1) disagrees with you, and (2) has a VERY prominent blog with a large following of people that ALSO disagree with you. How’s your special MM blog doing these days? I can see why you’re frustrated. You know what they say, if you can’t figure out who the sucker is (or in your case, if you think that everyone else BUT you is the sucker), you’re it.
You are in a good position to know, Josh.
Expunge logic patents from the system and return the PTO’s focus to innovations with objective structures and structural consequences (as opposed to vaporous data-processing g@r b@ge) and just about all these “reliability” problems will disappear.
Plus it’s the legally correct thing to do.
You don’t fix a broken t0 i let without plunging the shirt out of it first.
You know, return to those iron age inventions back when things were great.
return to those iron age inventions back when things were great
Yes, trains and subways are great.
1. Shut down the Patent Office and go to a Patent Registration system handled by the Copyright Office. Most (maybe all) of the important patents are litigated anyway. It will end the current abominable mess of allowing companies to attack a patent on two fronts with two different standards for interpreting claims. The Patent Registration fee should be about $50.
Another reason for doing this is that the Copyright Office does not seem to have a problem keeping their computers running. And I don’t think the Patent Office is telling us the truth about why their system stopped working. It sounds like a case of ransonware which which is why they had to apparently regenerate the database from scratch using very old backups, which is why people are getting email NOAs several years old.
2. End the discrimination against NPEs. If an Article III court has determined that a company’s product is infringing your patent you should have the right to prevent that company from making, using, or selling that product in the United States. Of course this requires an Act of Congress (and I don’t mean sex).
Either that or change the language on the cover of the ribbon copy because, as it stands, it is fraudulent.
And why aren’t companies that have a patent that is not used in even one of their products considered a NPE for that patent?
3. At the very least, require that patent examiners take and pass the very same Registration Examination that patent attorneys and agents have to take, not the watered-down test which is mostly about being able to find the bathrooms. Patent examiners should also have to be ATTORNEYS since their decisions are given immense authority by Article III courts.
End the discrimination against NPEs. If an Article III court has determined that a company’s product is infringing your patent you should have the right to prevent that company from making, using, or selling that product in the United States.
I do not really disagree with you, but how is this a worthwhile performance goal for the PTO? The PTO does not adjudicate infringement. It only grants (or revokes) patents.
I see no evidence that it treats NPEs differently from PEs. At the time that one is in the application prosecution stage, almost all applicants are NPEs.
Good suggestions.
Shut down the Patent Office and go to a Patent Registration system handled by the Copyright Office. Most (maybe all) of the important patents are litigated anyway. It will end the current abominable mess of allowing companies to attack a patent on two fronts with two different standards for interpreting claims.
ROTFLMAO Oh noes! Two fronts! It’s abominbabblbibble! Waaahh!! Waah!
End the discrimination against NPEs.
“Discrimination”? LOLOLOLOLOLOL Poor widdle NPEs. Life is soooooo unfair if you’re a non-practicing entity trying to “monetize” some g@ rb@ ge patent. Waahh! Waah! Leave those poor widdle NPEs alooooone!!
why aren’t companies that have a patent that is not used in even one of their products considered a NPE for that patent?
Who says they aren’t?
Patent examiners should also have to be ATTORNEYS
Okay. Let’s get rid of patent agents, too. [shrugs] This will change everything! LOL
Malcolm, I am trying to find something (anything) other than ad hominem in your reply and find nothing at all on point or of merit in reply to the suggestions.
Other than such (empty) feelings, can you offer anything as to why (or why not) such suggestions should be considered? Can you offer ANY considerations on the merits?
“1. Shut down the Patent Office and go to a Patent Registration system”
To me this seems like the only realistic solution to the Office’s qualit- er, reliability issues. If the examination process doesn’t produce grants that deserve a presumption of validity, and if the applicant community isn’t willing to pay enough to fund a system that produces grants that deserve a presumption of validity, then just cut out the examination. The downsides of a functional registration system are less than a broken examination system.
The U.S. already tried that with the Patent Act of 1793. The result was low quality patents and endless litigation. At least with patent examination, most of the truly undeserving stuff never gets patented (or are never even applied for), and those that do get patented tend to have more clearly defined scope and content of claims than they might otherwise. Examination was restored with the Patent Act of 1836.
Also, with a pure registration system, patent applicants would need to supply a much larger claim set just to survive litigation with at least some claims intact.
Perhaps a better approach to no examination at all would be deferred examination, like that used in many Asian countries. Of course, that too would take an act of Congress, and so is not the proper subject of the current draft strategic plan.
Mark,
Thanks for the substantive reply.
I frequently find myself thinking something like Ben’s 9.4, but in the end I think that Mark’s 9.4.1 has the better of this dispute.
I am aware that we previously had a registration system. It’s clear that an examination system was superior to registration around 1840. That fact does not mean that it is superior today. Given the political realities of our federal workforce, the vast expansion in amount of prior art, and the problems with examining hughly functional claims, it is not clear to me that examination remains superior.
I don’t see how any problems with registration can overcome the problems of an examination system with broken examination.
There is “broken” and then there is broken. You see only the problems that result when a patent grants that ought not to have granted, but for the failure to spot some pertinent art. You do not see the problems that would have resulted if no examination were performed at all, and anyone could get to grant on any claim at all. If we do away with examination, however, we will get to see such problems, and my expectation is that they will be numerous.
Basically, in a jurisdiction with the “American rule” (and the U.S., as you might expect, has the American rule), the cost of defending against a wrongfully granted patent is born by the one wrongfully accused. This is intuitively undesirable, so we make the one seeking a patent bear at least some of the costs of preventing the wrongfully granted patent by forcing the applicant to pay for some measure of examination as a necessary precondition to receiving a document that can be used as the basis for a lawsuit. This at least weeds out the most egregious cases of wrongful patent grants, and thus prevents the most conscience-shocking occasions of forcing the innocent party to pay legal fees to defend against a meritless suit.
I can see the intuitive sense of a registration system in a world where examination is so palpably imperfect. My Bayesian priors, however, are to expect that if we were to do away with examination, we would find out that—imperfect though it might be—the current examination regime is (literally) better than nothing.
At the very least, if we were to do away with examination and switch to a pure registration system, we should also statutorily suspend the “American rule” for patent suits.
… the cost of defending against a wrongfully granted patent is born by…
Er, “… the cost of defending against a wrongfully granted patent is borne by… .” Mea culpa.
Software is essentially impossible to examine. It’s like reading all the world’s literature before issuing a copyright. Good luck with that.
Software is not literature and the differences in aspect as to what the different IP laws cover is more than enough to toss your statement into the trash can.
That line about “cannot examine” was wrong when it was floated in the 1960’s. It is still wrong today.
If an Article III court has determined that a company’s product is infringing your patent you should have the right to prevent that company from making, using, or selling that product in the United States.
Why? It is not that I am disagreeing with you as a matter of policy, but how things should be doesn’t work as a premise.
Either that or change the language on the cover of the ribbon copy because, as it stands, it is fraudulent.
I wouldn’t say fraudulent, but it is certainly misleading because the “right to exclude” depends on the circumstances in a way that is not readily apparent to the general public.