Toward a Streamlined Patent Statute: Part 1 — Incontestable but no Longer Exclusive

Guest Post by Professor Paul M. Janicke, University of Houston Law Center.   In 2017, Prof. Janicke was awarded the Tom Arnold Lifetime Achievement Award by the State Bar of Texas. – DC

I have now been a registered patent attorney for 50 years, spending 21 of them in private patent litigation practice before joining the law faculty at the University of Houston. Looking back on it all, and on the posture of patent litigation in the past few years, I feel it is time to consider some major surgery on the patent statute, re-envisioning what we are trying to accomplish. Lawyers presently active in the field have told me enforcing a United States patent is nigh unto impossible today. You usually have to fight off multiple IPRs in the Patent & Trademark Office, during which time any infringement suits you have filed are likely stayed. If your client’s patents survive the PTO proceedings, you then have to battle against the much wider field of prior art established by the America Invents Act. For example, foreign patents used to be effective as prior art as of their grant or publication dates; now they are secret prior art as of their foreign filing dates. Time bars of public use and on sale, formerly limited to U.S. activities, are now expanded to world-wide events. And some kinds of prior art were removable by showing an earlier invention date, but that option is now gone. Meanwhile the remedies section, §271, has not changed in any meaningful way. No wonder patent infringement suits filings have dropped 30% as of June 30 of this year, compared to two years earlier.

I do not contend that fewer patent suit filings are necessarily a bad thing. A plausible argument can be made that any well-functioning law system should generate a smaller number of court fights. In the patent law world, that could signify better quality patents with everyone respecting them, resolving any minor disagreements by ADR, and filing zero infringement cases. However, the present situation suggests something else is afoot. A new look at what we are trying to accomplish by way of promoting progress in the useful arts may be in order. Many of the provisions in the current law are borrowed from the patent statutes of more than a century ago. Some may have been well-intentioned in their time and may even have some measure of residual benefit today, but experience shows that many of them are causing more trouble than they are worth. Maybe it is time to jettison these provisions. In these pages over the coming weeks I will present my proposals for streamlining the patent system in that way. I will try to balance them between those favoring accused infringers and those helping patent owners. To readers steeped in patent property philosophy, all of them will likely be labeled heretical.

The proposals are intended to be compromises, some favoring patent owners and some favoring infringers, whom we will no longer consider criminals. The two most central items are these:

(1) Continue to allow prosecution of as many claims as desired, but after allowance require the applicant to choose no more than three for issuance. During the first three years from grant, attacks on these claims can be made in the PTO or the courts, to the same extent as now. After three years from the issue date, validity of the claims becomes incontestable.

(2)  In exchange for (1), the remedy of permanent injunction disappears, except in ANDA cases. It will be replaced by a revised financial remedy: equitable sharing in the infringer’s revenues from the infringing activity, as set by the judge.

Proposal (1) is admittedly borrowed from the trademark law of incontestability, and may strike some as unfair to late entrants into a market. Those companies will find the validity questions foreclosed. However, my sense is that we need to cut down on the seemingly endless attacks on patent validity, and a fair sharing system seems to me a sensible way of going about it. (I do not expect hurrahs! from the patent litigation bar.)

I recognize that prong (2) can be said to make a patent no longer intellectual “property,” since there will usually be no explicit power to exclude others. This may be a heresy, but for progress of the useful arts maybe this is better. To start with, in real life patent cases we seldom see permanent injunctions going into effect any more. Government contractors are immune from them, and after the Supreme Court’s eBay decision, when they are granted by a court they are usually bought out by a financial payment arrangement instead. So maybe an equitable sharing remedy will work better for practically promoting the progress of the useful arts. The originator gets rewarded, and the benefits of the invention flow more widely and sooner. (I do not expect hurrahs! from the patent licensing bar.)

I have several other heresies in mind, which I intend to present a few at a time in the coming weeks.

118 thoughts on “Toward a Streamlined Patent Statute: Part 1 — Incontestable but no Longer Exclusive

  1. 23

    Not workable. It would require review of many many patents in unrelated technology. And what about derivation?

    I represent signicant clients providing goods or services receiving threats on hoary old patents relating to such fields as e-commerce from trolls. The patents should never have issued. Some threats are on expired patents.

    Even so called incontestable trademarks are challengable on multiple grounds and cannot limit the rights of prior users. Not an acceptable analogy.

    “Clear and convincing” to invalidate and the “but for” standard for inequitable conduct stack it enough for the patent owner.

    To suggest that the patents are incontestable is just wrong.

      1. 23.1.1

        Now why don’t you ever thank me?

        1. 23.1.1.1

          Easy – yours is not the desired narrative.

        2. 23.1.1.2

          N.B., Dennis thanks two people on this page (Bryan Wheelock at 6.2 and Jeff Sheldon at 23.1). What do both have in common? Neither is anonymous. More specifically, both are known practitioners in the field whose professional accomplishments are well known.

          When someone posts under his or her real name, the contribution is intrinsically more valuable, because it is possible to judge whether the speaker knows something about the subject being addressed. If you want a “thanks” for saying something, you should post that something under your real name.

          1. 23.1.1.2.1

            When someone posts under his or her real name, the contribution is intrinsically more valuable

            Absolute rubbish.

            The contents of the post itself is — and should be — the sole source of attribution of worth.

            This type of denigration of anonymous and pseudonymous dialogue is simply not appropriate.

          2. 23.1.1.2.2

            I think anon is right. But what do I know. I am anonymous.

            1. 23.1.1.2.2.1

              Think of the recent kerfuffle surrounding the anonymous NY Times Op-Ed supposedly written by a senior administration official. Writers on both the right and left have rightly condemned the NYT for publishing the work anonymously, because the truth or falsehood of the assertions advanced in that piece rest entirely on the credibility of the author. Given that we know nothing about the author, it is impossible to assess that credibility, which is the axis around which the whole of the op-ed moves.

              Where an anonymous post confines itself to nothing more than independently verifiable facts, then of course the merit of the post stands or falls on the facts within the four-corners of the post. Where, however, the post veers into opinions, the reality is entirely the other way. Opinions of experts count for a great deal more than opinions of cranks. With an anonymous or pseudonymous poster, it is impossible to assess whether the speaker is experienced or inexperienced, successful or unsuccessful, or any of the other points by which we distinguish an expert from a crank. Therefore, the post made under the author’s real name is always going to be worth more than the anonymous or pseudonymous post, except in the (very rare) circumstance in which the post is confined 100% to facts, without any trace of opinionating.

              1. 23.1.1.2.2.1.1

                Anyone worth their salt can tell I am a patent attorney with a lot of experience.

              2. 23.1.1.2.2.1.2

                Nonsense Greg.

                What you are doing is relying solely on borrowed authority and this DIMINISHES paying attention to the actual content of what is being expressed.

                I say no thank you to such laziness. I out right reject the enshrinement of laziness in thinking that is associated with the “Oh he used his own name, therefore that must be of higher value.”

  2. 22

    “The USPTO is unable to handle different levels of ‘understanding’ in the art other than ‘present’/’not present'”
    t. Anon

    “The ‘conventional’/’non-conventional’ inquiry of Berkheimer imposes meaningful constraints on examiners that they are very capable of understanding is ‘even more severe than 102/103′”
    also t. Anon, elsewhere

    ?????

    1. 22.1

      What the H are you rambling about, C O?

  3. 21

    There also doesn’t seem to be any reason why §101 would be a unique source of consternation, since SCOTUS could easily read the same extra-statutory requirements into some other part of the patent statute to achieve essentially the same outcome.

    “No §101? Oh, well, then, ‘abstract ideas’ are now per se obvious, since they are just thoughts and somebody must have had those thoughts in the past. Alice is now a §103 test!”

    (I mean, the USPTO has already adopted that logic on its own for recipes…)

    1. 21.1

      (This first reply was intended as a reply to 11.3, and the other as a reply to 8.1.2.1.1.1.1 — must have been something with the filter?

      Let me see if this one does the same thing. Hopefully not.)

    2. 21.2

      Bingo / the problem is the “extra-statutory” portion of what SCOTUS is doing.

      Which is precisely why Congress needs to exercise its Constitutional authority for jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court.

      As for the USPTO “adopting” judicial tactics, that’s an entirely different issue (and one I am quite sure that you rally don’t know what you are talking about).

    3. 21.3

      C O SCOTUS could easily read the same extra-statutory requirements into some other part of the patent statute to achieve essentially the same outcome.

      The CAFC has been doing that for years.

  4. 20

    If inventors will no longer have the right to exclude others from making, using, or selling their work without their permission you will have to remove that part of the Constitution.

    Do you think you will be able to get the Constitution amended?

    Actually, it already has been amended by Judicial decree in eBay v. Merc. only no one seems to have noticed it.

    Maybe the solution is to have a Court declare that everyone is an NPE.

    1. 20.1

      Not to put too fine a point on it, but the Constitution does not actually provide that inventors have the right to exclude others from making, using, or selling their work without the inventor’s permission. You can, as they say, look it up.

      Rather, the Constitution gives Congress the authority to pass a law empowering inventors to exclude others from making, using, or selling their work without the inventor’s permission. Congress can pass that law or not as Congress sees fit, and can attach all manner of conditions or limitations to that grant of public franchise. In other words, no Constitutional amendment is really necessary. Mere legislation will suffice.

      1. 20.1.1

        The option is to pass laws respecting what the Constitution provides or to pass other legislation NOT drawing authority from the patent clause.

        Your statement amounts to be a bit misleading there.

    2. 20.2

      NOiP,

      It is not that THAT part of the Constitution has to be removed. As Greg gets (half) right, that part is the assignment of authority to which branch of the government to create and control patent law. The government could decline to have patents at all.

      But if there be patents, then those must abide by the constraints of the allocation of power. THAT is where Greg is simply not correct in suggesting that any legislation and any limitation written by Congress would fly.

      Of course, as I indicate below, something other than patents could be created, and this something-other-than-patents could be entirely crafted outside of the parameters of the patent clause.

      The patent clause would still be there, but this something-other-than-patent would not be tracing its legal foundation to that clause. Most likely, the legal foundation would rest in the commerce clause instead.

  5. 19

    The more I reflect upon it, it is beyond bizarre for anybody — much less an allegedly experienced “expert” — to propose yet more radical and sweeping revisions to the patent statutes without addressing the underlying cause of all the (alleged) “weakening” of patents which is the gigantic bolus of ineligible/invalid junk that has been plaguing the system for the past couple decades. That’s how we got patent tr0lling. That’s how we got the AIA. That’s how we got the Supreme Court stepping in to try to slap some sense into the greediest l0 w l ifes who ever got near the patent system (many of them from Janicke’s state of residence, “ironically”).

    Wake the e f f up, already.

    At the very least, show some recognition and understanding of the predictable and corrosive problems that result when you allow b 0 tt0m feeders and speculators to tie up patent-worthy technology with “innovations” that are nothing more than descriptions of the prior art with ineligible recitations of information content, logical operations, and/or correlations salted into them.

    1. 19.1

      Hear, hear!

  6. 18

    Friendly reminder this is the last mo of the FY, so nows the time to file all RCEs in bulk! lol

  7. 17

    Prof. Janicke,

    Regarding proposal (1), would you consider this in any way similar to the European practice of opposition proceedings? In what way would your proposal be the same and in what way different?

    Frankly, I don’t give it much chance of ever being adopted in the U.S., but I’d still like to understand more clearly what you are actually proposing, before deciding whether it is truly “heresy”.

  8. 16

    > (1) Continue to allow prosecution of as many claims as desired, but after allowance require the applicant to choose no more than three for issuance. During the first three years from grant, attacks on these claims can be made in the PTO or the courts, to the same extent as now. After three years from the issue date, validity of the claims becomes incontestable.

    But wouldn’t this create a de facto obligation to monitor patent filings? That seems like a bad idea, particularly when its unclear who/what/how the infringement read would ultimately be. This portion of the proposal seems very unworkable.

  9. 15

    “Let’s face it: if we put infringers to death, the rate of technological progress in this country would soar to unbelievable heights overnight. We’d be living in a technological wonderland. Flying cars would be the least interesting technology! Who would complain about that? The infringers, probably, but they are the worst people in the world. Lemley is like S@tan, Hxtler and Saddam Hussein all rolled into one. Computers don’t belong in the hands of free-thinking people. They belong in the hands of capitalists who truly understand their value and power. Patents are the keys to the handcuffs which will keep the infringing class from usurping the privilege that rightfully belongs to those who know both how to program and how to manage the billions that naturally flow into the pockets of deserving innovators.”

    Meet the Patent Maximalists. They’re very serious people!

  10. 14

    Glad to hear from Prof. Janicke, who’s Houston patent suits database had been very helpful over the years.

    Re “after allowance require the applicant to choose no more than three [claims] for issuance.” There ought to be some claim number limit so that folks like Hyatt cannot get hundreds of claims issued in the same patent with prosecution claim changes and unlimited claim additions. However, only 3 claims is too few, as with unknown prior art that shows up in litigation or IPRs, and uncertain abstraction-101-exception scope, fallback claims are needed. Nor would limiting claim numbers only at issuance help examiners properly deal with pending applications with hundreds of claims.

    1. 14.1

      Re: “After three years from the issue date, validity of the claims becomes incontestable.”
      We now live in a world with millions of unexpired patents, each with plural claims. Only a small and unknown fraction of which will ever be asserted. The vast majority of patent sued on are patents considerably older than only 3 years from their issue date. The amount of prior art to search more than doubles every ten years. A substantial % of patent suits have unpredictable final decisions [not even to mention IPR decisions] of invalidity. and unpredictable decisions of claim interpretation.
      Incontestable invalidity of hundreds of millions of patent claims would impose an impossible and unreliable RTU burden on new products and new ventures, especially by small start-ups.

      1. 14.1.1

        I assume that incontestability would not be retroactive given that the 3 claim limit cannot be retroactive.

    2. 14.2

      I think the rationale behind 3 claims is that Applicants are much less likely to seek issuance of dubiously valid claims given the uncertainty. Of course, if invalidity is incontestable after 3 years, this won’t really matter in most cases.

  11. 13

    People are going to program computers and they are going to use programmable computers to process data according to whatever logical procedures the computer has been been instructed to follow.

    The idea that anyone should be able to “own” the “right” to use a public domain machine for its intended purpose — for twenty years! — is absurd.

    Expunge logic and information patents from the patent system and the system will return to something resembling normal. If you keep that g@r b@ge in the system then you’ll just have to get used to the system melting down in farce. All of this was predictable, and it was predicted. Also predictable was the endless whining about it from the most most entitled and least competent attorneys that ever walked the earth.

    1. 13.1

      The idea that anyone should be able to “own” the “right” to use a public domain machine for its intended purpose — for twenty years! — is absurd.

      Your “intended purposes” is beyond dissembling.

      Hey, I bought a massive chemistry set, completely stocked with every chemical known to man and all chemical equipment (hint: note the parallel to the Big Box of Protons, Neutrons and Electrons).

      The intended use of my chemistry set is to (gasp) engage in chemical processing and making chemicals.

      The idea that anyone should be able to “own” the “right” to use a public domain chemistry set for its intended purpose — for twenty years! — is absurd.

      1. 13.1.1

        …and wait until you see my bio-chem chemistry set.

        ALL compositon patents are an affront! They violate “my” public domain sets.

  12. 12

    Let’s focus on the difference between chem/bio and “tech”. In the latter, we already see extensive and dense “revenue sharing” in the market response to the patent law. Patent pools, patents on technical standards and so on. But not in chem/bio (as far as I know) because the market dictates other solutions.

    I see no sign that industry needs your help, in either of these spaces.

  13. 11

    Meh.

    So many words … so many twists and turns … so many interpretations … so many future CAFC and SCOTUS cases to sort out any and all such proposed changes …

    These two changes are all that is needed:

    1. Abolish 101.

    2. Abolish the PTAB.

    Massaging these cancers won’t work.

    These two tumors must be removed.

    1. 11.1

      101 will never be “abolished”.

      It’s amazing how blind and deaf the super greedy and entitled class can be when it comes to their fantasies. Exhibit A is Mango H@irb@ll of course. Exhibit B is the patent maximalists.

      They are incapable of learning. All we can do is point and laugh.

      1. 11.1.1

        The “Accuse Others” meme is especially thick here.

        Breathtakingly stultifying.

        1. 11.1.1.1

          I’ll just say it again so it’s crystal clear what fundamental truth “anon” and his cohorts keep beating their ne@nderthal foreheads against:

          101 will never be abolished

          Give it up already.

          1. 11.1.1.1.1

            You do realize that my post has nothing to do with “abolish 101,” right?

            1. 11.1.1.1.1.1

              You do realize that my post has nothing to do with “abolish 101,” right?

              Yes, I realize that you are off-topic.

              1. 11.1.1.1.1.1.1

                No Malcolm, your reply to me was off topic.

                But hey, what would be a post without you and your Accuse Others meme?

    2. 11.2

      You skipped the step where you explain why the PTAB and 101 should be abolished. It is clear that you don’t like them, but that does not make either objectively bad.

    3. 11.3

      What does it even mean to “abolish 101”? I remember asking this when Director Kappos proposed such an idea.

      Are you suggesting that there should be no utility requirement?

      Are you suggesting that any new and nonobvious thing should be patent eligible (e.g., a new song, a new poem, a new drawing)?

      I am entirely on board with a legislative fix to the hash that the Court has made of §101, but it seems intuitively obvious to me that §101 serves some valuable purpose. One cannot simply get rid of it entirely and still have something that can be plausibly termed a patent system.

  14. 10

    “Meanwhile the remedies section, §271, has not changed in any meaningful way.”

    Did Prof. Janicke mean to refer to 281/283/284? Those are the remedies sections, and I think it’s true that they haven’t changed in any meaningful way. Or maybe to 271 as the infringement section? That section has had some things added, but I suppose subsections (a)-(c) haven’t changed in any meaningful way. Or maybe I’ve just missed something.

    I look forward to reading other heresies. This is an interesting post.

  15. 8

    Prof. Janicke, can I request a clarification? You preface item (2) as “In exchange for (1)…” Are you saying the patentee can elect if he wants his/her/its patent to be governed under the status quo law or your proposal? If so, I gather his election choice would have to be made public at least as early as the patent issuance date.

    Frankly, I like the proposal, particularly if the patentee can make the election.

    No offense to the patent litigation bar, but the cost of litigation is obscene. Our economy could better have you use your talents in a constructive fashion.

    Most valuable property is not the subject of litigation, but valuable patent property seems to be the exception.
    Property should be dealt with in business deals, not courtrooms.

    And there would still be litigation: item (2) still requires a finding of infringement and then there will be massive squabbling over “equitable sharing in the infringer’s revenues from the infringing activity.”

    1. 8.1

      One other point I meant to make:
      Looking at the big picture as Prof. Janicke is doing, why should the patent be held invalid on the basis of some obscure item of prior art that those of ordinary skill in the art are not familiar with?

      The notion that you are taking away from the public domain by erroneously issuing a patent is only correct if the public domain really knows about the prior art. You are not taking away from the public domain by patenting even if there is anticipating but obscure prior art or hard-to-believe and likely hindsight-biased obviousness conclusions.

      I am not contending that the outcome I am suggesting is based on stare decisis, but rather a de novo thinking about what the law should be, just as Prof. Janicke is doing.

      1. 8.1.1

        that those of ordinary skill in the art are not familiar with?

        (sigh)

        PHOSITA is NOT a real person based item.

        1. 8.1.1.1

          If phosita is not a real person, why do we care whether phosita has public domain info taken from phosita?

          1. 8.1.1.1.1

            PHOSITA is not a real person.

            If you do not understand this, you need to be in a different profession.

            1. 8.1.1.1.1.1

              Nonny, I fully understand that phosita is a legal fiction.

              Do you understand my point that if nobody in the art, phosita or not, knows about an item of prior art that perhaps we should cut the inventor some slack with respect to that prior art?

              The inventor invented it (as in independently developed it) and now, once the inventor’s inventive efforts and commercialization efforts makes the invention popular, those of ordinary skill in the art appreciate it and … steal it.

              1. 8.1.1.1.1.1.1

                Your point is nonsensical as you are still attempting to have “real world” person as PHOSITA.

                You “say” that you understand that such is a legal fiction and then turn around and try to treat it NOT as a legal fiction.

                I suggest that you do not attempt to use a term of art in a manner that is improper.

                Here, instead, you would be better off by simply stating: do away with the legal fiction. Change the “right” (whatever it is, as it certainly will not be a patent right and will have no tie to the patent clause of the Constitution) to be some type of “in active use” “keep-out” zone. That way, ANY thing not in use, no matter how obscure or even “common” (but so “obviously”neglected as to merit the “not in use” label) would be “fair game” to be awarded FOR being put into use.

                This (other than patent) thing would also eliminate “squatting” or mere “protection of possibilities” since only those things in active use would be able to be protected.

                But don’t pander to the confusion and attempt to label these things as patents or related to patent law concepts.

      2. 8.1.2

        You mean, return to the days (1874) when the UK PTO would grant you a patent on the basis of a “communication” of an invention to you from outside the jurisdiction (here NYC). Those were the days, when nobody knew anything about the state of the art in any other country, and there needed to be incentives to import innovation from other countries.

        link to thegazette.co.uk

        1. 8.1.2.1

          Max, not that exactly, but analogous.

          Let’s say the anticipating disclosure is found in column 33, lines 19-22 of a patent with 87 columns and 14 drawing pages that issued 33 years before the filing date, issued to an assigned that went bankrupt 25 years before the filing date and the technology was never commercialized and no other source of that info can be found. It took the searcher 137 hours of digging to find it.

          Is it fair to say that a new patent on that disclosure takes away from the public domain?

          Or another kind of prior art, where the inventor made some the item he wants to patent and generously shared them with his friends for a couple of years before deciding he may want to make and sell them commercially, so he goes to a patent attorney and tells the history. Is the invention really in the public domain? Even the searcher who committed 137 hours would not have found it.

          1. 8.1.2.1.1

            SVG,

            Your version of “public domain” appears to include a “must be in use” clause.

            As long as you realize that this is not in line with patent law concepts, and you want to run with this in attempts to create “some new law” (and that you realize that such is not patent law), then by all means, run with those thought experiments.

            See above at post 8.1.1.1.1.1.1.

            One idea may be to create a government access data base (please do not let the USPTO run it), and THAT database would be the deciding factor as to this new right.

            One quick stop for both right-granting and for policing.

            One may then merge all types of trademark aspects (as it sounds more in the power of the Constitution that generates the source of law for trademarks). One may invoke a “must use,” as well as a “must share” (or mandatory licensing). Such may even extend “beyond limited times” (not being constrained by the patent clause). Easy to find? yup – there you are with your (different) bundle of rights. Not easily found? No problem, you have it in work and you have now made it easy to find, therefore, here is your (different) bundle of rights. You stopped using/making? That’s OK – we will remove it from the database and then the next person wanting to put it into use has that same shot as you did previously. And the “best thing,” is that the bundle of (different) rights is only available for the thing being put into play. No more “waste” sitting there unused. Use it or lose it.

            What could go wrong with that?

            1. 8.1.2.1.1.1

              nope, I don’t mean “must be in use.” There are lots of things that the art knows about that they do not currently use. Television manufacturers and their engineers do not use vacuum tubes to make televisions, but the fact that vacuum tubes can be used to make televisions is well known and I am not advocating allowing the current patenting of vacuum tube televisions.

              Please don’t try to make my offering into nonsense.

              1. 8.1.2.1.1.1.1

                Hmm, not sure that I am following your “must be known,” as even the obscure thing that you want to exclude was known.

                Unless you are trying to make a PHOSITA into a real person (which you also say that you are not), how is this “known but not really known thing supposed to work?

                1. Anon asks “how is this “known but not really known thing supposed to work?”

                  I don’t have a specific test. Bear in mind that we are still arguing about what is “on sale” and what is “obvious” after well over a hundred years, so I assume it will take some time to figure this one out, too.

                2. I don’t have a specific test.

                  Right, and that is the most obvious down-side of this idea. As I said above, it begets line drawing problems. It is possible that these problems would outweigh the benefit of such an approach (viz, placing ideas that are only theoretically in the public domain back actually into the public domain). It is not intuitively clear that your idea would be necessarily worse than the status quo, but neither is it intuitively clear that the proposed change would be better.

      3. 8.1.3

        Conversely, does the mere act of obtaining a patent benefit the public if no one reads it? If ignorance of the patent does not avoid liability for patent infringement, it follows that ignorance of the prior art does should not justify granting a patent on the prior art.

        1. 8.1.3.1

          I get what you are saying. But part of the “heresy” here is changing that liability for infringement.

        2. 8.1.3.2

          “Prior art” is not a category immutably set in physical laws, or carved in stone tablets carried down the mountain by Moses. Something is “prior art” if we say that it is “prior art.” It is an arbitrary category, whose boundaries we set to achieve optimal policy outcomes.

          No one is talking about “granting a patent on the prior art.” SVG is simply talking about setting the definition of “prior art” such that obscure references do not count as “prior art.”

          My initial reaction to her proposal is broadly favorable, although I would like to think about it more carefully before I would say for certain that I am in favor. The obvious pitfall of this proposal is that it would open up a vista of line-drawing problems (how many hours of searching is too many?, do we have to assess the objective reasonableness of the search queries that the searcher used?).

          1. 8.1.3.2.1

            Right. Because we are suffering from an incredible shortage of patentable subject matter, we need to come up with a complicated system for determining when something that was previously dedicated to the public by publication can be patented.

            What could possibly go wrong?

            Also sounds like a great way for people who are already very skilled at locating obscure prior art to make a bunch of money. Society needs to recognize the contributions of these searchers and surely this is the fairest and most direct way of doing so.

            [huge eye roll]

          2. 8.1.3.2.2

            How “obscure” is obscure?

            SVG gave as one example specific columns and lines – seemingly of a granted patent tha WOULD BE in the public domain. So no, Greg, you are not correct in stating that “no one is talking about giving a patent on the prior art.”

            Quite in fact , your expressed concern on line drawing is not limited to “not the prior art,” but instead is a direct function of the (also not Moses-like) line drawing for “how obscure is obscure.”

            One of the aspects that you implicitly embrace (since you are piggybacking on SVG) is the changing of the legal fiction to be some “real person” effect. Naturally, this does impact the line-drawing.

            1. 8.1.3.2.2.1

              Anon keeps making the point that phosita is not the real world. Point taken.

              But, shouldn’t the law deal with the real world? Why be beholden to a fiction?

              As to the teachings of the obscure prior art (let’s call it X), if nobody in the industry can testify “yes, I knew about X” then how is anyone hurt by granting a patent on X?

              To go back to my example of a discussion buried deep in an old, obscure patent, one of the posters here mentioned that people in industry do not really research in patents. So why would we expect people in industry to know about that obscure discussion? What we have instead is a bunch of overpaid lawyers playing gotcha to the patentee with their searches.

              1. 8.1.3.2.2.1.1

                Congrats SVG, you have taken a first step.

                That second step is one that you need to take as well: understanding exactly why PHOSITA is a legal fiction.

                Until you take THAT step, you may be too mired in your desire to have some “real person” effect where the choice has been to have the legal fiction.

                I am not your mother, nor your teacher, but I will share a hint: PHOSITA has to do with state of the art in an objective sense. Look at the dialogue between you and Greg – realize that “line drawing” all of sudden has to be introduced and then realize that without the legal fiction, at best you will have one massively fuzzy line.

                But continuing here (outside of that next step you need to take), I did mistake your view above with a notion of “must use.” But even though I mis-stated your position, your reply here aligns with that misstatement. To be specific, you advance a notion of “how is anyone hurt?”

                That notion applies equally to the “not being used” scenario. Vacuum tubes in televisions – how is anyone hurt?

                Separately, you also advance a view that runs counter to the reason why we have patents, embraces and seeks to fortify a weakness rather than going in the opposite direction (as would be more proper). This view is tied to the notion of “one of the posters here mentioned that people in industry do not really research in patents.

                It is a severe mistake to use that condition to fortify a “don’t bother looking” type of view and that fortification runs to the very opposite of the mandate (the reason for its existence) of the patent office. The better path would be to force – or otherwise inculcate – the desire TOO pay attention to patent grants. Anyone advocating in the opposite direction merely provide evidence that they do not understand why we have a patent office.

                This is NOT a matter of “gotcha.” Do not attempt to p-lay the “blame the lawyer” game.

              2. 8.1.3.2.2.1.2

                One more try…

                Congrats SVG, you have taken a first step.

                That second step is one that you need to take as well: understanding exactly why PHOSITA is a legal fiction.

                Until you take THAT step, you may be too mired in your desire to have some “real person” effect where the choice has been to have the legal fiction.

                I am not your mother, nor your teacher, but I will share a hint: PHOSITA has to do with state of the art in an objective sense. Look at the dialogue between you and Greg – realize that “line drawing” all of sudden has to be introduced and then realize that without the legal fiction, at best you will have one massively fuzzy line.

                But continuing here (outside of that next step you need to take), I did mistake your view above with a notion of “must use.” But even though I mis-stated your position, your reply here aligns with that misstatement. To be specific, you advance a notion of “how is anyone hurt?”

                That notion applies equally to the “not being used” scenario. Vacuum tubes in televisions – how is anyone hurt?

                Separately, you also advance a view that runs counter to the reason why we have patents, embraces and seeks to fortify a weakness rather than going in the opposite direction (as would be more proper). This view is tied to the notion of “one of the posters here mentioned that people in industry do not really research in patents.

                It is a severe mistake to use that condition to fortify a “don’t bother looking” type of view and that fortification runs to the very opposite of the mandate (the reason for its existence) of the patent office. The better path would be to force – or otherwise inculcate – the desire TOO pay attention to patent grants. Anyone advocating in the opposite direction merely provide evidence that they do not understand why we have a patent office.

                This is NOT a matter of “gotcha.” Do not attempt to p-lay the “blame the lawyer” game.

              3. 8.1.3.2.2.1.3

                A reply is caught in the filters. I thought it was the count filters, but it appears to be the mysterious George Carlin filters instead….

                Maybe one of the three attempts will be liberated.

                1. But, if the public does not know about…

                  You are slipping back into applying a “real person” aspect to the legal notion.

                  You are slipping into whether a real person “of the public” does not know. So what if no real person is currently using? SAME “no harm” argument follows.

                  It comes down to NOT wanting PHOSITA to be what PHOSITA is.

                  Same comments as before: use a different legal term for what you want.

              4. 8.1.3.2.2.1.4

                But, shouldn’t the law deal with the real world? Why be beholden to a fiction?

                Hm, I would phrase this quite differently. The PHOSITA is a legal fiction who is a stand in for the public domain. The PHOSITA knows everything that is in the public domain, and nothing that is not in the public domain.

                The PHOSITA, while fictional, is supposed to represent the sum total of existing human knowledge among actual people. At the margin, the question of whether a given fact is “public” knowledge or not is actually quite subjective. We in the U.S. say that the contents of filed-but-unpublished applications are in the public domain, while the EP says that such contents are only in the public domain for novelty purposes, but not for obviousness purposes. Neither approach to the “public domain” is “right” or “wrong,” because the “public domain” is a social construct, and each sovereign is free to construct this social construct as seems best to achieve desired policy ends.

                Our sovereign already recognizes a “lost art” exception to the prior art. Gayler v. Wilder, 51 U.S. 477, 498 (1850). SVG is—in essence—merely proposing to extend the “lost art” doctrine to reach to ideas that are quite recently disclosed, but which appear not quite to have penetrate into the consciousness of the “public domain.” This idea does not make the PHOSITA any less fictional. It merely changes slightly the characteristics that we ascribe to the PHOSITA (just as the PHOSITA acquires slightly different characteristics when she jets across the Atlantic from the U.S. to the E.U.).

                1. Greg,

                  Eloquently stated, but I am not buying it.

                  One error is that you attempt a “pseudo-real person” connection with your statement of “among actual people – which evaporates the legal fiction character.

                  No amount of “among actual people” has the legal fiction’s capacity and capability. It is thus plain legal error to attempt to insert a “real person” characteristic back into the understanding. “Public Domain” then should not be confused with any real people that may make up “the public domain.” Any attempt to transition to such brings about the very same legal error of trying to make the legal fiction BE a real person.

                  Not sure where you dredged up the “lost art” exception, but I do not think that your premise here as “Exception to Prior Art” is proper.

                  Where a person had made and used an article similar to the one which was afterwards patented, but had not made his discovery public, using it simply for his own private purpose, and without having tested it so as to discover its usefulness, and it had then been finally forgotten or abandoned; such prior invention and use did not preclude a subsequent inventor from taking out a patent.

                  Moving this to the modern day, this would not be art that even could EVER be considered Prior Art, as it is secret and for patent purposes would be taken as never existing. Thus, this is NOT an exception as you state. The End result is the same, but the Means to that End are very different.

                  As to the differences that a Sovereign may choose, I fully concur. Any sovereign may choose to be consistent or inconsistent in its application of PHOSITA to different sections of law (vis a vis, 102 and 103 or equivalences).

                2. We in the U.S. say that the contents of filed-but-unpublished applications are in the public domain…

                  Whoops. That is not right. What I should have said is that the contents of filed-and-published applications are in the public domain as of their filing date in the U.S, but only as of their publication date for obviousness purposes in the EPO.

                3. Taking from the public domain is the giant bugaboo that keeps getting cited by Scotus many posters here. Patents must be strip-searched to be sure that this evil does not happen!

                  But, if the public does not know about an item that is in the public domain, precluding them from practicing that item for 20 years does not take anything away from them.

                4. Apologies for the repeat, somehow this attached to a wrong string elsewhere and belongs here:

                  But, if the public does not know about…

                  You are slipping back into applying a “real person” aspect to the legal notion.

                  You are slipping into whether a real person “of the public” does not know. So what if no real person is currently using? SAME “no harm” argument follows.

                  It comes down to NOT wanting PHOSITA to be what PHOSITA is.

                  Same comments as before: use a different legal term for what you want.

              5. 8.1.3.2.2.1.5

                A patent system limiting effective prior art to what the “public” ? knows and/or is “easily found” would be even more ambiguous [and completely undefined by any case law] than our long-standing 102/103 tests.
                Also, have you considered what other countries such as China could allow their citizens to patent if they applied such a test in retaliation? Presumably thus excluding any prior art not written in Chinese?

                1. and completely undefined

                  Surprising then that this has not been scrivined into law by the Supreme Court…

  16. 7

    It’s an interesting idea in that it would incentivize third parties to bring their collective knowledge to bear since apparently no one fully trusts the PTO’s examination. Presumably it would also incentivize applicants to do their own pre-examination due diligence to make sure whatever patent claims they submit and get through the PTO would survive attack. However, that would certainly put more cost burdens on third parties and applicants to do such evaluations. Whether that is good or bad is debatable.

    Another big concern I have with incontestability after three years is that if you are a competitor to an applicant, you have to make a risk assessment as to whether or not a certain patent poses a risk down the road in order for it to be worthwhile to invalidate during the contestable time period. You may initially say that such patent does not pose a risk because there are no products in the pipeline that would even come close to the claims. However, the problem is 10-15 years later when you do want to develop a product that is now captured by what would be invalid but incontestable claims.

    1. 7.1

      No, the competitor does not have a terrible decision to make. If he wants to infringe after the patent becomes incontestable, he is entitled to a compulsory license under the Professor’s proposal. Just a cost of doing business and likely cheaper than hiring a bunch of lawyers.

      1. 7.1.1

        …that is after being charged and “convicted” of actually infringing. The established interests that can fight that fight are even more licensed for innovation theft. The very worst outcome is paying a “fair share,” while the fight disadvantages the non-established.

        1. 7.1.1.1

          innovation theft

          “Hey, you programmed a computer to display real estate availability using three colors, an email alert, and a beeping noise! I’m going to f—-ing make your life a he11 unless you pay me, @h0le!” <— welcome to "anon's" super awesome world

          Patent maximalists s – c k donkey.

          1. 7.1.1.1.1

            Your view here is simply anti-patent.

            Exchange ANY innovation for the type of innovation that you want to disparage with your words here.

            “super awesome” indeed.

  17. 6

    The patent system needs improvement, but securing benefits for those who have not meaningfully added to the stock of public knowledge for the sake of convenience, loses sight of the purpose of the system. Simplifying, but not eliminating, challenges to validity should be the goal.

    1. 6.1

      A carrot to incentivize early challenges and a stick to penalize late challenges (for example when an invalidity opinion is obtained but is not followed by a citation of prior art on the record) are not a bad idea. But I agree with you that a bar to challenges after a period of time may not be most suitable carrot/stick to obtain an early determination of the scope of the invention.

    2. 6.2

      Thanks Bryan – I always appreciate your remarks. In TM law, I think of “Incontestable” as meaning something like “quite difficult to contest.” Presumably, it would have a similar meaning in patent law.

      1. 6.2.1

        …sort of what the level of “clear and convincing” is supposed be for the validity of a granted patent…?

        The answer is to restore the power, not enshrine the weakness.

  18. 5

    Based on my 50 years of experience, also, there is a lot wrong with the patent system but this is not the way to fix it.

  19. 4

    “whom we will no longer consider criminals.”

    I already don’t consider them criminals.

    Indeed I have probably violated many a patent myself and I don’t consider myself a criminal on account of that.

    1. 4.1

      already don’t consider them criminals

      This is a major part of the problem.

      Not intended as an indictment against 6 (per se), but it shows that the weaker minds have bought into the Efficient Infringers mantra.

      Restoring power and respect to patents entails regaining respect for the Private personal property that is the exclusive right.

      1. 4.1.1

        Efficient Infringers

        Otherwise known as “weighing the pros and cons and proceeding accordingly” which is how all reasonable people live their lives.

        1. 4.1.1.1

          Emphasis on “Con,” (even if you did not mean that pun)

    2. 4.2

      I have probably violated many a patent myself

      I violate “do it on a computer” patents all the time because they’re all ineligible or invalid g@ rb@ge.

      That’s never going to change. Come get me.

      1. 4.2.1

        Come get me

        As a personal plea, lacking the provision of the personal information….

        Regular Internet tough guy you.

        1. 4.2.1.1

          Hey, I just required someone to use a password in a new context! Well, it wasn’t really a “new” context. It was an old context described in a patent specification and dressed (bloated) up by a scrivener to make it look like it was “technology.” Lo and behold it sailed through the PTO.

          Sue me.

          1. 4.2.1.1.1

            Again with the Internet tough guy routine.

  20. 3

    (1) will never happen.

    (2) doesn’t sound that bad to me if the incentives were set correctly. For example, if the profit percentage was trebled if the infringer knowingly continued to infringe and would not engage in a licensing arrangement.

    From my experience in patent litigation, this is the problem. You get sued (or your client) and there you are. You have to spend all this money upfront on the invalidity and non-infringement contentions and in some jurisdictions it is almost impossible to amend the contentions. So right up front–sometimes within 90 days–you have to spend 1/2 a million. IPR have changed this.

    One way to help this would be to grant as a matter of right a bifurcation of the trial for either infringement or invalidity. So let the D pick one side to litigate first.

    Anyway, I can tell you have litigated by your post and that is refreshing. Most of the professors that post on here have their h so far up their a that they don’t know if it day or night.

  21. 2

    The reason why these ideas are treated as “heresy” is that they are bad ideas. Incontestability is just another word for “be patient, and your ill-begotten assault on the public domain can bear great fruit.” No permanent injunction is indeed the situation that largely prevails today, and more’s the pity. The reason, after all, why major changes are being herein proposed is that the system is palpably not functioning rightly at present. If—as seems to have been acknowledged as the starting premise of this proposal—one can agree that the presnt structure functions poorly, it seems strange to suppose that this can be corrected by making permanent one of the most dysfunctional aspects of the present system.

    1. 2.1

      Point (2) recognizes that there is little political support for a broad eligibility of inventions if the mechanism for compensating the patentee is based on property rights and market economy. If you want to make injunctions the norm, there will be a push for limiting patentable inventions to easily replaceable widgets and recipes. The current situation where few injunctions are granted is the result of the eligibility of inventions that, if not made available, can result in deaths, or inventions that are perceived that way (see the epi-pen recent outcry for example). So maybe it is time to have different kinds of patents, some for “petty inventions,” the value of which can be determined by a market economy, and some for “building block inventions,” the value of which is determined some other way.

      1. 2.1.1

        The current situation where few injunctions are granted is the result of the eligibility of inventions

        Not so.

        eBay was not an eligibility case.

        You too have bought into the mountain of rhetoric and propaganda from the Efficient Infringers.

        1. 2.1.1.1

          I think that in eBay, the Supreme Court held that a judge needs to consider whether “the public interest would not be disserved by a permanent injunction” because the Court thought that the mechanism for compensating the patentee cannot systematically be based on market economy. Do you have another interpretation?

          1. 2.1.1.1.1

            Are you going to ignore what I actually wrote?

            I was addressing your mis-tie to eligibility.

            Once you recognize that then we can move on to discussing the ham-fisted treatment of the shared authority from Congress.

      2. 2.1.2

        Point (2) recognizes that there is little political support for a broad eligibility of inventions if the mechanism for compensating the patentee is based on property rights and market economy.

        I would be interested to see evidence for this assertion (polling or after-the-fact electoral analysis). My Bayesian prior assumption is that the electorate simply does not care about patent issues one way or the other. In other words, I am willing to believe that “there is little political support” for permanent injunctions, but only in the same way that there is little political opposition to such injunctions. Any policy you strike on this question is essentially a “free” vote for the politicians involved, because almost no one will face well funded attack ads or dedicated and organized opposition for voting either way on a patent reform bill.

        1. 2.1.2.1

          I don’t think voters are indifferent to all patents. They are not indifferent to patents granted on medicines for example, because accessing these medicines can make a difference in their life. Indeed, the Doha Declaration on TRIPS, which allows for compulsory licenses of some essential medicines, was well received by the public in general. In addition, patent rights to medicines are regularly attacked. See link to politico.eu. Recently, we also saw a lot of anti-patent discourse in the press when the price of epipen increased, even if patents are not to blame.

          Only a minority of voters support granting monopolies on life saving medicines, and accept that their life has a price which should be determined by a market. I think this lack of support has contributed to the Court (1) limiting the type of inventions eligible, and when not enough, (2) requiring weighing the public interest before granting an injunction.

          But I get your point that voters don’t care about how Diehr, Flook, or Benson would come out. Voters are probably indifferent to patents granted on stuff that does not concern them directly.

          1. 2.1.2.1.1

            You also had an anti-patent discourse in the press when Blackberry was found to infringe patents on sending text messages to mobile devices. See link to theglobeandmail.com. This is another example showing that the public will not support strong patent rights on technologies that are deemed “indispensable,” even if in the case of Blackberry, nobody would have died if Blackberry had to shut down.

            1. 2.1.2.1.1.1

              Don’t confuse “the press” and anti-patent rhetoric with the actual public

              1. 2.1.2.1.1.1.1

                I wish I was guilty of confusion, but my experience is that the public opinion is easily steered by “the press.” I meet more people who think like MM than people who think like you Anon (even if MM positions are quite rare in the small circle of patent attorneys).

                1. The lemmings must be right, eh PiKa?

                  THAT view is very much part of the problem – call it capture if you want, call it proof that propaganda works if you want, just do not call it a critically reasoned understanding because it is NOT that.

                2. Let’s deconstruct and reconstruct the following phrase:

                  I meet more people who think like MM than people who think like you Anon

                  Let’s not use “think” where thinking is absent.

                  This yields:

                  I meet more people who feel without thinking like MM than people who apply critical thinking like you Anon

                  You are welcome

            2. 2.1.2.1.1.2

              I am not sure what editorials tell us about voter opinions. The editorial pages are regularly graced with good ideas that have little to no popular support.

          2. 2.1.2.1.2

            I don’t think voters are indifferent to all patents.

            I wonder if we are talking past each other in an equivocation. Allow me, please, to propose a distinction.

            (1) “Voters care about Patent [X]” in the sense that voters are humans, and the same human who is a voter is also a parent, or a drug researcher, or an amateur astronomer, etc. That is to say, humans are complex beings, and they can have many ideas on many subjects. It is even possible that any given human can have ideas on subject [A], the which are mutually incompatible with ideas that the same human has on subject [B].

            (2) “Voters care about Patent [X]” in the sense that a set of human individuals, qua voters, decide how to vote based on the what views candidates express about Patent [X].

            My remark was directed more toward #2 than #1. Even if any given voter “cares” (in the vague abstract) about Patent [X], very few voters decide for whom to vote based on their feelings about Patent [X].

            That is as much as to say, if you asked voters to rank “patent policy” in their list of issues about which they care, I doubt that this particular issue would make it into even the top 25 for any more than ~5% of the electorate. No politician is going to gain or lose a meaningful number of votes based on how s/he votes on patent bills.

            I would be very interested, however, to see evidence that I am wrong in that supposition.

            1. 2.1.2.1.2.1

              But politicians will be (and are) affected by the “vote$” of the juristic persons that are corporations.

              Think capture.
              Thank you Citizens United

            2. 2.1.2.1.2.2

              Politicians know better than take a position against the public opinion, and only patents bills that do not include proposals that appear controversial to the public will reach the floor. You can point to a lack of evidence that politicians are not re-elected after taking this or that position on a patent bill, but that will not make it likely that you will see a bill that overturns EBay and maintains a broad scope of subject matter elligibility reaching a vote. Voters will take the phone, call their representatives, complain about what they perceive to be a negative effect of strong patents, and the draft of the bill will die out.

              1. 2.1.2.1.2.2.1

                You misapply where the power and influence comes from PiKa.

                Think Citizens United.

              2. 2.1.2.1.2.2.2

                Like I said, I would be interested to see evidence for that assertion.

  22. 1

    Perhaps the number one heresy:

    I will try to balance them between those favoring accused infringers and those helping patent owners.

    Any such “balance” means weaker patents.

    No thank you. The Quid Pro Quo is NOT between Infringers and innovators. The Quid Pro Quo is between the government and innovators. You’ve invited the wolf in at the back door.

    1. 1.1

      …how about this for “heresy:”

      Fix the broken scoreboard, restore the strength to patents and get the F out of the way (and yes, treat the “Efficient Infringers” as the criminals that they are insteading of solidifying their illicit gains into the “new law”).

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