Prosecution Disclaimer: Should patent law have a Parole Evidence Rule for Claim Construction?

by Dennis Crouch

Technology Properties Limited LLC, v.  Huawei Technologies Co., Ltd. (Supreme Court. 2019)

Back in February, the Federal Circuit issued a R.36 affirmance — affirming the lower court’s claim construction and non-infringement finding.  Tech. Properties has now filed a statement of intent to petition for writ of certiorari, now with Ken Starr at the helm and focusing on prosecution disclaimer precedent from the 1880’s along with a constitutional argument.  The patentee writes:

This case presents important questions of constitutional and patent law. The law of prosecution disclaimer, as applied in this case and in other cases, has morphed in a manner inconsistent with the Patent Act. The Federal Circuit’s increasingly anti-textualist methodology also conflicts with this Court’s long-established precedent. The improper expansion of this judicially-created doctrine upsets the balance between the role of the Patent Office and the role of the judiciary, as established by Congress, and injects great uncertainty into the publicnotice function of patents. Congress delegated the examination and issuance of patents to the Patent Office and requires deference to the agency’s decision-making.

The expanded disclaimer doctrine calls into question the Patent Office’s authority to examine and issue patents, and the limited role of the judiciary in reviewing the Patent Office’s determinations. Encouraging litigants and courts to wade through the back-and-forth between the Patent Office and a patent applicant to rewrite the issued claims through imposition of additional limitations under the guise of “claim construction” runs afoul of Congress’s delegation.

The basic argument that the patentee is making here is that patent claims should be adjudged by their terms and buried statements within the prosecution history should not be allowed to enlarge or reduce the patent scope.  You might call this the patent law parole evidence rule:

A patent is a public franchise.  The public and the patentee are entitled to clarity on the boundaries of a patentee’s rights; the claims, which define the metes and bounds of the inventor’s rights, provide that clarity. Gratuitous statements in the file history do not; they are inherently less predictable—illustrated by this case and other recent cases.

That 1880’s case: Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222 (1880).

61 thoughts on “Prosecution Disclaimer: Should patent law have a Parole Evidence Rule for Claim Construction?

  1. 8

    Quite apart from most all other comments on this thread, I have to wonder if Oil States will be used to emphasize a supposedly “higher authority” of the administrative agency in view of the professed claim of:

    The improper expansion of this judicially-created doctrine upsets the balance between the role of the Patent Office and the role of the judiciary

    As Oil States makes the point that the administrative agency has “reach” even to full legal property rights that have left the dominion of the administrative agency (obtaining their full power only at the point of Grant), one can legitimately wonder exactly what IS the proper balance between the Patent Office and the judiciary, and are questions such as claim construction something that necessarily should be returned TO the patent office for any “official” meaning?

    This of course would be a radical departure from patent jurisprudence, but, if one is inte11ectaully honest about the Oil States decision itself, THAT decision entails a radical departure from traditional patent jurisprudence.

    (There is a whole herd of elephants hiding in the mouse hole of Oil States – if one were to be logically consistent with the full impact of that decision)

    1. 8.1

      Could not agree more Anon. Oil States is a sea change in patent law that changes everything.

  2. 7

    Greg DeL: [“Everything which can be invented has been.”] is a real quote, but also not a quote of Justice Stevens.

    Who uttered the “real quote”, Greg? Tell everyone.

    You are better than this[, Pro Say]

    LOL Not really, Greg, but it’s funny to see you pretending to be a judge of anybody’s character.

    1. 7.1

      but it’s funny to see you pretending to be a judge of anybody’s character.

      NOT as funny as seeing you type that statement.

      1. 7.1.1

        Who uttered the “real” quote, Bildo?

        1. 7.1.1.1

          We both know the nature of the quote and to whom it is often attributed to.

          The fact that a direct source is not ascertained does NOT diminish the impact of the quote. The quote is NOT at the level of apocryphal.

          1. 7.1.1.1.1

            Shorter Bildo: “The quote is fake and I’m a pile of d0gs–t, and so is Greg for not knowing this in 2019.”

            Meanwhile ….

            Machines do NOT think

            Depends on how you define “think”. They definitely do follow instructions written by people who certainly did think about what instructions to provide to the machines. Which is totally different! Especially in the context of a patent claim in which the only new subject matter is the recited logic that is carried out by the instructed machine.

            It’s a bit odd that the method of instructing the computer (i.e., typing in the instructions) has never been deemed eligible. Golly, I wonder why that is.

            LOL

            Keeping up, Dennis? Bildo is one of your finest sons, preaching only the best and most compelling arguments in favor of patenting logic. Aren’t they impressive?

            1. 7.1.1.1.1.1

              Lol – you want to play with the definition of “think” and have machines “think?”

              You can “feel” anyway that you want, but you do not get to have those feelings replace reality.

              The plain reality is that machines do not think.

              That’s just a plain fact that you are not free to ig n0re.

              1. 7.1.1.1.1.1.1

                you want to play with the definition of “think” and have machines “think?”

                I’m not “playing” with anything, Bildo. “Playing” with yourself is what you do.

                Anyway, please direct your criticism of the concept of “thinking machines” at your peers who toss around terms like “artificial intelligence” and “machine learning” as if those things are super dooper different from “computing”. And the zillion software companies who named their products in a manner that invokes some sort of “intelligence”. Mkay? Otherwise just shut your inane hypocritical trap because you really are just a massive steaming pile of intellectually dishonest horse s—t.

                1. I’m not “playing” with anything, Bildo. “Playing” with yourself is what you do.

                  There’s that Accuse Others meme in bloom.

                  You do realize that the use of terms like “thinking” is NOT an acquiescence that machines are actually human, right?

                  ALL of that discussion of thinking, learning, intelligence and the like MUST be understood from the vantage point of a Person Having Ordinary Skill In The Art – and that is why I use that awesome term:

                  Anthropomorphism

                  And how mice of you to bookend your own steam pile of inte11ectually dishonest C R P with more of your infamous Accuse Others meme.

              2. 7.1.1.1.1.1.2

                The plain reality is that machines do not think

                Right. They are instructable machines that follow the instructions for data processing that are given to them by people …. who think about the logic before instructing the machine about what to do with the data.

                But it’s not thinking! Oh no. Applying logic to data is totally different from thinking. Sure it is, Bildo.

                And lo and behold: writing instructions is ineligible, too, regardless of the language that the instructions are “coded” in. Or do you have some claims you want to assert that depend on a different notion? If so, go ahead and assert them, Bildo. The keyboard is a “machine” after all. And writing is a process. And you are soooo deep and serious.

                1. Tell me again what are the claims actually to…

                  (hint: they are NOT to your rhetorical gamesmanship)

                  As for “writing” alone – need I invite you (yet again) to the Hricik side and the exposition on the Simple Set Theory that explains the exceptions to the judicial doctrine of printed matter?

                  You always seem to disappear rather than actually engage on the merits of that discussion.

  3. 6

    So, I can get a patent on a translucent thing, and tell the PTO that translucent is well-defined and is quite different from transparent things in the prior art, and then litigate against a transparent accused device because the OED says that “translucent” means “transparent” because the disclaimer rule requires wading through the back-and-forth between the Patent Office and a patent applicant and that is such a terrible burden after spending a few millions in fees to tip-toe lightly through the back and forth of expert reports, depo transcripts, trial briefs and testimony.

    1. 6.1

      Yes, Ken Starr is a dishonest, despicable, deplorable human being who deserves to be disbarred and imprisoned until he is dead.

  4. 5

    There is not a single term in the asserted claims that can be understood without reference to outside references and expert testimony, which Technology Properties certainly used in the district court. Technology Properties is arguing that the parties can define terms using evidence from any source except for the file history and the inventor’s own definitions. Seems dumb.

    1. 5.1

      Well put. These people are disgusting pigs, top to bottom.

  5. 4

    I assume you mean parol evidence rule

  6. 3

    Heres an idea: if you don’t like “gratuitous” statements to be used against you, don’t make the statements in the first place.

    1. 3.1

      I agree with you.

      (no snark)

  7. 2

    Is it an “important question”? As far as I am concerned, very much so.

    The EPO, in prosecution, is very demanding about clarity of definition in the claim as such, but my impression of prosecution in the USA is that nobody worries about any deficiency of clarity in the claim going to issue precisely because everybody knows that, in litigation, the entire wrapper will be relied upon, when ascribing a meaning on the claim.

    Europe considers that the “public notice” requirement must be met by the issued patent alone, rather than by the invariably voluminous, and likely obfuscatory even contradictory file history.

    Of course, if the European way places higher demands on Examiners, drafters and prosecutors, one wonders what chance this petition for certiorari has of progressing.

    1. 2.1

      I do not think that European practice is especially analogous to U.S. practice on this point. To my mind, the reasoning for prosecution disclaimer runs as follows: (1) the common law disfavors grants of monopoly; (2) patents are an exception to that common law rule; (3) exceptions to rules should be construed narrowly, so the law should generally favor doctrines to narrow and limit patent scope; (4) the doctrine of prosecution disclaimer narrows and limits patent scope; (5) ergo, the doctrine of prosecution disclaimer should be legally favored.

      Right off the bat, the first premise of this argument (concerning, as it does, the common law) is not applicable to the EPC, which does not exist in a common law milieu. Secondly, there is an important counter-argument to the doctrine of prosecution disclaimer in Europe that does not really apply to the U.S.—viz. language barrier.

      In the U.S., prosecution is conducted in English, and the regulated public all speak English. It is, therefore, not too much of a burden to say that the regulated public should inform themselves of the content of the prosecution history when determining whether the claim covers the public’s actions.

      By contrast, in Europe prosecution can occur in any one of three languages. Meanwhile, the regulate public in Europe speaks literally dozens of different languages. It can, as such, be really quite a challenge for the regulated public to inform itself of what is said in the prosecution history.

      In short, the relevance of the doctrine of prosecution disclaimer is materially very different in the U.S. context compared to the EP context. It is really an apples vs. oranges comparison to note that the doctrine would not work well in Europe, and then conclude that it should be discontinued in the U.S.

      1. 2.1.1

        Agree with 1.1 and the comment that the applicant is in complete control of whether those statements are made. A couple of other observations, which may or may not be applicable:

        — I would guess that system has changed significantly from 1880 when the Goodyear case was penned. There are now more patents filed at the office per examiner, quota systems for patent examiners, and the style and structure of claims in patents are much different than they were in 1880.

        — EU claims often have “characterised in that …” qualifier, where everything after that phrase is “the invention” and thus there is more a clear delineation between what is and is not the inventive concept.

        — Peripheral claim scope is the expectation in the US, and as a result, claims tend to be interpreted more broadly than in the EU. There is a need to rein that in through disclaimer.

        — I think most practitioners believe that US examination is not as rigorous as foreign jurisdictions. E.g., look at rationale why folks choose different jurisdictions as the searching authority for PCT –the US is usually not at the top of the list for thoroughness.

        — “Patent attorneys” in EU are not required to have legal training. Some do, but that is the minority. They are more like the US patent agents in training. In my opinion, those with US legal training tend to rely on argumentation during prosecution to distinguish prior art rather than just amend the claims around a reference because it will leave an argument later in court to say it was not disclaimer.

        1. 2.1.1.1

          Whether prosecutors amend or argue is determined not so much by whether the prosecutor is an attorney or an agent; more by the ways in which the courts construe patents after issue. Litigating in Europe (whether common law England or civil law mainland Europe) is half a world away from litigating in the courts of the USA. The balance between proving infringement and defending validity is different.

          As to “rigorous”, choosing a PCT search authority, it is “horses for courses”. You get one set of references from the USPTO and a different set out of the EPO. Which set is “better”? Who is to say?

      2. 2.1.2

        Well yes, Greg, I accept that there is force in what you write. But nevertheless, what I am on about goes back to the days in the UK (common law) before the EPC was even a gleam in the eye. Under the UK Patent Act of 1949, the UK Patent Office examined for novelty but not for obviousness. Clarity of claim was considered very important to examine. Any want of clarity was a ground of revocation. Any attempt to rescue the validity of the claim, by resort to the file wrapper, was futile.

        You aver that it is “not too much of a burden” for the public to be obliged to refrain from ascribing any meaning to the claim till they have had the benefit of expert legal advice on the possibility that the meaning is set by some statement or other buried in the wrapper. I disagree with that and so do the courts of Europe. It is a huge burden.

        1. 2.1.2.1

          MaxDrei,

          Your trip into the weeds of “UK prior to EPC” is a non sequitur to Greg’s statement – and has no bearing to your own statement and “what you were on about.”

          You then merely repeat your conclusory assertion without regard to any of the differences that Greg supplies. Your “counter” is non-responsive.

        2. 2.1.2.2

          Any attempt to rescue the validity of the claim, by resort to the file wrapper, was futile.

          I would not want to swear that no patentee in the history of the U.S. patent system has ever used the doctrine prosecution disclaimer to rescue a claim from invalidation by unclarity, but that is not really what the doctrine does in our law. I really cannot think of a case where that outcome has obtained.

          Prosecution disclaimer is not a shield for the patentee, but rather a sword for the defendant. The way the doctrine usually presents in a case is that there is a claim term that is susceptible of two plausible readings, and under one the claim reads on the defendant’s product, while under the other the claim does not read on the defendant’s product. Prosecution disclaimer is then advanced as a reason why the court should apply the narrower construction of the term, such that the defendant is held not to infringe.

          1. 2.1.2.2.1

            Thanks for that. What informs my writings here is my experience prosecuting in Europe on instructions from attorneys in the USA. When an EPO Examiner formulates a novelty attack on a claim that recites (say) a “cutting means” I am told (to my amazement) that the novelty attack fails because the prior publication fails to disclose any cutting means within the sense of the patent application. From this I conclude that such a rebuttal of the novelty attack has some prospect of success in the USA. I had supposed that the M+F argument “not in the sense of” would be seen as an admission/disclaimer in the file wrapper.

            1. 2.1.2.2.1.1

              Max, M+F is a special case – I think you needlessly confuse things by bringing it in to this discussion. In any case, such a rebuttal might well succeed in the U.S., if the prior art did not disclose a cutting means with the same or equivalent structure to the structure expressly disclosed in the specification. (It wouldn’t be enough to simply say, “that’s not the sense we meant.”) By the same token, however, the claim would not be infringed by devices that included cutting structures different from what is disclosed in the specification. And yes, if you argued during prosecution that cutting structure A is different from the cutting means described in the difference, that can (and should) be used later to limit the reach of your claim.

              1. 2.1.2.2.1.1.1

                Thanks for that reply, dan. My comment was in reply to Dozens, who suggested that prosecution disclaimer is never a shield for the inventor. Your reply suggests to me though that it can be. When in the prosecution history I deny the equivalency between the claimed cutter and the prior published cutter I am shielding the claim from a validity attack, am I not?

                1. Well, yes, whenever you argue against the prior art you are “shielding” the claim. That’s true regardless of whether you’re dealing with a M+F claim construction issue or not. But the doctrine of prosecution disclaimer kicks in AFTER you’ve done that. Once you’ve made that argument and put it in the record, you’ve permanently disclaimed a scope of coverage that includes whatever you were arguing around. It’s just a form of estoppel, and seems intuitively fair. That’s what Dozens is talking about: the issued patent carries with it the prosecution history – that prosecution history in general is rarely going to help the patentee, and prosecution disclaimer only works to limit the claim. From an infringement point of view, then, it’s only useful as a sword, for the accused.

                  Now, if you’re suggesting that prosecution disclaimer might be used as a shield in a later invalidity challenge against art having the same or similar thing you (successfully) argued over, it doesn’t really work that way. It won’t work against you of course, but just because you convinced the examiner doesn’t mean you’re going to convince the judge.

                2. My intuition (which is informed by anecdote, not reliable data) is that 8 judges in 10 judges would think that a patentee is too cute by half if she writes a facially unclear claim and then tries to argue that the patent ambiguity is not actually an ambiguity if read in view of the file history. In other words, 80% of the time, that would be a losing argument. I am sure that every now and then, some patentee “draws lucky” (so to speak) and gets a judge who will buy that line of argument.

                  For the most part, however, “Claim term [X] clearly means [Y] because of the prosecution history” is the kind of argument that sounds much better in the defendant’s mouth than in the patentee’s. Few judges are willing to cut the patentee much slack for writing the claim ambiguously, even if the patentee is truly unambiguous in favoring one particular side of the ambiguity during the back-and-forth of prosecution.

      3. 2.1.3

        Greg, your statement of the reasoning for prosecution disclaimer is probably accurate. The inaccuracy of the syllogism, though, is the many-times-discredited assertion that patents are monopolies.

        1. 2.1.3.1

          Absolutely correct, SVG.

          Note as well that this type of “oversight” is a subtle “permission” or “allowance” for a “patents are bad” mindset.

          There is an additional – but no less important – over-simplification by Greg that is a pernicious trap: the intimation that US patent law is openly or fully driven by common law.

          While the US may be considered a “common law country,” it is NOT correct to think that common law Law writing is unfettered in regards to the statutory law of patent law (which law writing has been expressly delegated to one single branch of our government, and violations of the Separation of Powers and the scrivening of statutory law by the Supreme Court has created a muckery in patent eligibility).

          While these items may not have been intended by Greg, the lack of precision tends to be repeated enough to impair critical thinking when those items are (or should be) in focus.

        2. 2.1.3.2

          The inaccuracy of the syllogism, though, is the many-times-discredited assertion that patents are monopolies.

          If you want to indulge a fallacy of equivocation, I cannot stop you. I cannot imagine, however, what useful purpose it is meant to serve to quibble so pointlessly over vocabulary.

          The word “monopoly” has a colloquial meaning, and then it has also a more precise and technical sense in economics, and a separate, equally precise and technical meaning in law. It is a trivial business to prove that patents are not “monopolies” under the technical, economic definition. It is an equally trivial task to prove that patents are “monopolies” under the technical, legal definition.*

          The present discussion is a legal discussion—not a discussion among professional economists. It is more than clear, therefore, that my argument at 2.1 is accurate as to the “monopoly” characterization.

          If it pleases you to obfuscate this point with an pointless digression into a definition of “monopoly” that is irrelevant to the matter at hand, chacun à son goût, as they say.

          * Black’s Law Dictionary, “Monopoly”: A privilege or peculiar advantage vested in one or more persons or companies, consisting in the exclusive right (or power) to… manufacture a particular article… .

          “A patent by its very nature is affected with a public interest. It is an exception to the general rule against monopolies… The far-reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct…” (emphases added). Blonder-Tongue Labs. v. Univ. of Ill., 402 U.S. 313, 343 (1971) (internal quotations and ellipses omitted).

          1. 2.1.3.2.1

            the many-times-discredited assertion that patents are monopolies

            The meme that “patents are definitely NOT monopolies waah waah waah!” is part of the patent maximalist script. It serves two purposes: (1) it’s pedantic silliness engaged in because maximalists love pedanticism (because their arguments stink); (2) it’s a transparent effort to distance “patents” (which are the greatest thing ever, unless you are a communist!) from the “taint” that is associated (in the public’s mind, anyway)with the term “monopoly”.

          2. 2.1.3.2.2

            Reply caught in filter, but basically, Greg here is being inte11ectually DIShonest by neglecting to recognize the fundamental difference in that patents are a negative right and NOT a right at all to actually engage in the positive actions that SET the legal meaning of the word “monopoly.”

            He “banks” [sic] on the prior loose use of the term by the judicial branch (which does NOT mean that such use is correct, or that such use calls forth the legal notion of monopoly (as reflected in the understood economic sense).

          3. 2.1.3.2.3

            If you want to indulge a fallacy of equivocation, I cannot stop you.

            You cannot stop the courts from doing that either.

            But you CAN stop yourself from doing that – and from relying on court cases that do that.

            Look again at your own Black Law’s recitation here and REALIZE that a patent right is ONLY a negative right and simply NOT a right to actually engage in the positive aspect of manufacture.

            Playing the moral high ground — as you violate that very ground — does not speak well of you, Greg.

    2. 2.2

      Max,

      Out of curiosity, what is the average amount of time given an EPO examiner for initial examination and a first action?

      1. 2.2.1

        You know, I have no idea: “what is the average amount of time given an EPO examiner for initial examination and a first action?”

        My first reaction is that the question makes no sense because of the presence in it of the word “given”.

        My next reaction was to formulate the somewhat frivolous and unhelpful answer: “As long as it takes! At the EPO Examiners use their own judgement, how much time to spend on each file, within the constraints of the pressure on them to deliver acceptable productivity.”

        Perhaps somebody reading this who can say more would like to write in.

        1. 2.2.1.1

          What are “the constraints of the pressure on them to deliver acceptable productivity.”

          (Which I think is the answer being sought)

          1. 2.2.1.1.1

            Answer: their very survival. The EPO, as a supra-national organisation, is above the Rule of Law and decries any degree of transparency. In the independent State of Eponia, the President and his coterie hire and fire as they please, with impunity, answerable only to the Administrative Council, which the President buys off with ease by delivering ever larger sweeteners and dividends, funded by ever higher “productivity” from the Examiners.

            1. 2.2.1.1.1.1

              Was not looking for such a subjective and feelings based response…

              More inline would have been hours per action or throughput per selected time period.

              1. 2.2.1.1.1.1.1

                You might just as well ask “On average, how many hours does it take a patent attorney to write a patent application.”

                As to throughput per unit of time, ask how many EESR’s per quarter, how many Examiners, then divide the one number by the other. Is the number you so derive at all helpful? No. Apples and oranges come to mind. Or chalk and cheese.

                1. You might just as well ask

                  You might, but it would NOT be pertinent to the discussion at hand.

                  As to your second paragraph, I just do not see the point that you are attempting. If by EESR you mean Extended European Search Report, then dividing such by a unit of time MAY be helpful – not sure why you don’t see that.

                2. Sounds like they practically have no hard and set time limit but instead just do it to their own subjective judgement but with minimal encouragement/talking to from “above” about getting things done.

                3. practically have no hard and set time limit

                  You might think so from the lack of answer forthcoming from MaxDrei.

                  but with minimal encouragement/talking to from “above” about getting things done

                  Except this view runs counter to his emotional subjective feelings based rant at 2.2.1.1.1. From that post, you might imagine that the examiners are worked to the bone, resorting to some sort of Allow Allow Allow in order to avoid the brutal task master’s whip.

                  But then, MaxDrei oddly appears to think that any type of objective metric (anything on a per selected time period metric) only invites “chalk and cheese.”

                  He wants to whine and then balks at any view that would provide support for his whining (or the opposite).

                4. On the contrary, anon. Some sort of “allow, allow, allow” is most definitively not the atmosphere that the EPO taskmasters impose. Why not just ask any Applicant for a patent from the EPO? As to “metrics”, everybody knows the importance of comparing like with like, and not apples with pears. Again, just ask an experienced bulk filer to expound on their different experience of prosecution at the EPO vis a vis prosecution at the USPTO.

                5. As to “metrics”, everybody knows the importance of comparing like with like, and not apples with pears.

                  An inapposite comment, as clearly the information being sought was being sought so as to compare the apples of the EPO with the apples of the USA.

                  If you had (to use one of your own phrases) a “mind willing to understand,” you would have seen this from the start.

                  It is a bit puzzling to see so much energy from you in waffling on this topic and NOT wanting to provide a straight answer (even as you were ultra-quick to give an emotive subjective answer).

                  Maybe you can explore the animus to your answer at 2.2.1.1.1…

                6. “resorting to some sort of Allow Allow Allow in order to avoid the brutal task master’s whip.”

                  From the asinine rejections I see routinely from those goofs I would think it is the opposite.

                7. Great comment from 6, that he judges positions taken by EPO Examiners to be “asinine”. I suppose he is just trying to provoke me but OK, in that he succeeds.

                  My four decades of experience in private practice has taught me that the propensity of a patent trainee, agent or attorney to dismiss an objection as “asinine” is in inverse proportion to the number of years of their experience that they have under their belt. The louder they cry “asinine” the less I trust their judgement and the less confidence I have that they will pass the UK patent attorney qualifying examination.

                  Presumably 6 would agree with me, at least when it comes to the assessment made by Applicant’s attorney, of his own work product.

                8. MaxDrei,

                  Based on what you post, your four decades have been a waste, and it is your judgement that I just do not trust.

                  You have “experience” of four decades going around a same small little block, and you fail to grasp many aspects of patent law that make most of your comments to be of rather minimal value. It appears that you became tracked into providing one type of service, and never really did understand what innovation and innovation protection is all about.

                9. “My four decades of experience in private practice has taught me that the propensity of a patent trainee, agent or attorney to dismiss an objection as “asinine” is in inverse proportion to the number of years of their experience that they have under their belt. ”

                  Max I would actually breach muh anonymity to 1 on 1 show you these fucking ta rd tier rejections in many of my cases, esp 371 cases where the search was done in EU places, and explain to you why they are, in fact, pants on head tier. I love the ones where they apparently cannot even understand the subject matter being claimed (by which I mean they’re pretty fcking far off base, not a hair off base) and the ones where they just hand wave limitations away that literally could not be met by the primary reference in any conceivable change to the device in the primary reference. Those are my two fav flavors of f ups coming from EU people.

                10. This is in reply to 6 at 1:36 hr today.

                  You might be willing to relinquish your anonymity, 6, but sorry, I’m not.

                  First, what please does “371” mean? I assume it is a reference to the search done in the EPO during the PCT international phase, while acting as PCT-ISA. Bear in mind that the idea at the EPO is that the search is done once, and once only, and should address not only claim 1 but also what Applicant is likely to amend down to, to get something allowed over the art. Bear also in mind that the EPO often sets up a proposition for Applicant to refute (if indeed Applicant can). On the ruling “more likely than not” standard, if Applicant fails to come up with a persuasive rebuttal, the proposition put forward by the Examining Division would be enough to deny Applicant allowance. Not sure what claim elements get waved away but perhaps they fail to establish what is needed for patentability, namely a technolgical solution to a problem in technology. Of course, the WO-ISA is prepared looking forward to subsequent prosecution within the EPO. Indeed, it serves as the FAOM.

                  Generally, a key difference is that civil law Europe takes Examiner to be a PHOSITA so needs no witness evidence of what the skilled person would think. US attorneys are affronted by (as they see it) such presumption routinely arrogated by EPO Examiners. You too, I guess.

                  What a pity that you cannot point to a single real PCT case that illustrates your point. If you could, we could then discuss further.

                11. [W]hat please does “371” mean?

                  35 U.S.C. §371 is the portion of the U.S. code that permits national stage entry from a PCT. Therefore, national stage applications in the USPTO are referred to as “371s.”

                12. This in reply to Greg at 3:26 today.

                  I see now what 371 means. Thanks Greg. If it is any comfort to 6, for cases entering the EPO national phase, a WO-ISR written within the USPTO is not a lot of use, when it comes to assessing patentability under the EPC. Each set of Examiners is bound by the case law of the courts that adjudicate patentability in the respective jurisdictions. Patent judges in the 38 EPC Member States regularly meet to debate. Such Fed Ct judges as Randall Rader (in his day) and Pauline Newman, engage with judges in Europe. But their efforts can only go so far. The Congress had the opportunity to harmonise with the rest of the world (for example on what constitutes the prior art) but for whatever reason blew the once in a lifetime chance they had.

              2. 2.2.1.1.1.1.2

                Great comment from 6…

                Is this comment “great” in the same sense as “make America great again” (i.e., where “great” means 180° the opposite of what most people mean by “great”)?

                1. Good catch, Greg. Hardly a sentence goes by, these days, without its writer including hyperbolic words like fantastic, amazing or awesome. I deplore this.

                  Perhaps “grate” would have suited you better. I wrote “great” simply because the comment by 6 made me laugh.

  8. 1

    The improper expansion of this judicially-created doctrine upsets the balance between the role of the Patent Office and the role of the judiciary, as established by Congress…

    The irony of making this remark in a paper directed to the SCotUS…

    1. 1.1

      Close – but the larger irony is one of those “silly” Constitutional arguments along the lines of Separation of Powers.

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