Guest post by Prof. Chien: Comparative Patent Quality and the Prior Art Gap

Guest post by Colleen V. Chien, Professor, Santa Clara University Law School. This post is the third in a series about insights developed based on USPTO data.

“If we could further narrow this gap in prior art between examination and litigation, then the accuracy of the patent grant – and therefore, its reliability – would increase.”

Director Andrei Iancu

As Congress charts its path for the rest of the year, many in the patent community are eagerly awaiting new legislation on patentable subject matter. But to the extent that the Supreme Court’s jurisprudence can be understood as a clumsy response to the proliferation of weak patents, reversing these decisions will not address the underlying root causes of poor patent quality. It is therefore crucial to address the question raised at a recent Hearing before the Senate Subcommittee on Intellectual Property: how can the quality of US patents be ensured?

This post focuses on an aspect of patent quality that, though receiving scant focused attention by scholars (with some exception, such as the excellent work of Professor Steve Yelderman, now clerking at the Supreme Court), comes up in the examination of over 90 percent of all patent applications.[1] No other issue comes close: the USPTO reports that only about a third of office actions include a rejection based on 35 U.S.C. § 112 and just 11% percent receive a rejection based on § 101. The aspect is the robustness of prior art vetting under §§ 102 (novelty) and 103 (nonobviousness). Below I argue that policymakers should pay more attention to the patent system’s most important tool for ensuring a patent’s quality: not § 101 or inter partes review, but prior art.

The task of vetting inventions in view of the prior art is old, but there are a number of new challenges. As Director Iancu has repeatedly acknowledged, the “ever-accelerating publication and accessibility explosions” strain the ability of examiners to find the best prior art during examination. Foreign patenting, which creates harder-to-evaluate foreign language prior art, is on the rise. In areas of rapid development like artificial intelligence, not unlike the early days of software in which a President’s Commission recommended prohibiting software patents because of the inability to vet them, prior art is being generated at an extraordinary rate – but in repositories like arxiv.org or Google scholar, not necessarily in filings at the Patent Office. As part of its continued focus on prior art, the Office has multiple initiatives to improve access to prior art, including the Collaborative Search and Search Feedback Pilots. It’s asked about prior art in its recent call for comments about patenting artificial intelligence (deadline extended to 11/8). But how can we know if current or piloted approaches are enough?

In a recent paper, Comparative Patent Quality, I argue that the age-old tool of benchmarking can yield valuable insights for tracking quality in patent examination, and in particular the robustness of considered prior art. In it, I describe and apply an approach for benchmarking examiner citation patterns exploiting the natural experiment that occurs when the same application is filed in the USPTO and a foreign patent office (such as the European Patent Office (EPO)). The paper specifically considers the extent to which examiners are considering the full range of prior art—not just patents but also non-patent literature (NPL)—when vetting applications.

A second project, Rigorous Policy Pilots, considers two other prior art benchmarks. The first is the patent applicant’s Information Disclosure Statement (IDS), in which an applicant must disclose to the USPTO all of the prior art or other information of which she is aware material to her application. Another is the Patent Trial and Appeals Board’s inter partes review decisions, in which administrative law judges cite what they believe to be the most relevant prior art.

These papers validate and quantify what Director Iancu has called, the “gap between the prior art found during initial examination and the prior art found,” in this case, in inter partes review. Non-patent literature (NPL) is not being cited by US examiners in the majority of cases, and US examiners are citing it less than European examiners. Within a random sample, 3.2% of the prior art relied upon by a U.S. Examiner (as provided in an 892 Form) was non-patent literature while the comparable rate in European Patent Office cases (as an X or Y reference in the search report) was 20%.[2]

Figure 1 shows the gap in NPL citation rates among Examiners, PTAB judges, and applicants vetting the same invention (906 patents whose claims have been invalidated in inter partes review). While US Examiners cited non-patent literature on average 13% of the time, the PTAB was more than three times more likely to do so (41%). (Figure 1) Applicants were more than five times (66%) more likely to include NPL in an IDS than Examiners (13%) were to cite it. Though the sample size does not permit fine-grained comparisons, the basic finding – that US examiners are citing NPL far less frequently than PTAB judges or applicants – held across all technical centers.[3]

These comparisons have their limits: in inter partes review, the challenger, not Examiner supplies the prior art, and the patents of IPR are not representative of patents in general. An applicant’s inclusion of a reference in an IDS is very different than an Examiner’s consideration, then application of a reference. European examination is closer to US examination, however, and there’s also a gap, though it’s smaller: among the patents analyzed above that had a European counterpart, EPO examiners cited NPL at a 34% rate, more than double the US examiner rate on the same applications of 14% of the time.[4] But applicants do not necessarily treat European and US “twin” applications identically, and European patent law is not identical to US patent law. Perhaps most importantly, correlation does not imply causation, and it can’t be assumed from these contrasts that a lack of robust vetting is responsible for the issuance of patents later proved to be invalid.[5]

Still, because inter partes review only revisits the patent’s validity in light of the prior art under §§ 102 (novelty) and 103 (obviousness), it squarely presents the question, were there references that the examiner missed? This analysis suggests that the robustness of examiner-cited prior art in general, and the consideration of NPL in particular, deserves attention. Work is ongoing to tease out the differences and their relationship to quality not only according to this metric, but also other aspects of robustness pertaining for example to foreign patents and the classes from which patent citations are drawn.

What can the USPTO do now to pay more attention to the robustness of prior art and narrow the gap? I recommend a few steps. First, the Office should make the “robustness of the prior art considered,” whether measured by NPL citation, foreign patent citation, diversity of references, or other measure, an explicit quality metric within existing and future prior art initiatives, consistent with the Office’s commitment to continuous improvement. Studying the link between the robustness of cited prior art and quality and tracking this explicitly as a quality metric would signal the importance of this aspect of prosecution.

Second, the USPTO, as it seeks to leverage artificial-intelligence to improve examination, should take into account the “bias” against non-patent literature currently embedded in examiner citations. If a tool is trained primarily on examiner citations it will reinforce this bias, growing, not narrowing, the gap. As to artificial intelligence applications in particular, the USPTO should also work to ensure that US examiners have access to the same references and resources (including time and information) that those in industry[6] and their international counterparts do. With many AI patent applications coming from non-US sources, high patent quality now can protect freedom to operate later, for US innovators.

Second, as the USPTO continues to evolve its approach towards prior art, including through pilots, it should do so with an eye towards rigorous evaluation. This means explicitly identifying the goal of the piloted policy (the “treatment,” like enhanced search capabilities or examiner collaboration), the theory of change behind it, and a way to measure whether or not the approach being tested has succeeded in increasing the robustness of prior art cited, using experimental or quasi-experimental approaches. To see if a new approach is working, the Office would compare the robustness of art in applications receiving and not receiving the treatment.

While treating otherwise identical applications differently can present non-trivial challenges, existing caselaw and the experiences of agencies including the USPTO, in its own randomized trademark audits, suggest that they are surmountable and the resulting knowledge, well-worth pursuing. The “hard evidence” generated by a rigorous policy pilot, implemented with sufficient power and controls, could be particularly important for justifying changes, perhaps costly, to examination and prior art processes. More importantly, applying rigorous approaches to prior art pilots would do more to support the discovery of what works to advance patent quality, using the patent system’s most important tool for doing so: prior art vetting.

Thanks to research assistant Nick Halkowski, 3L at SCU Law, for providing excellent data support.

[1] Author’s analysis, using the USPTO Office Action Dataset.

[2] Comparative Patent Quality, n 239.

[3] Across all TCs except TC2800, where the gap was 17%, the gap between Examiner and PTAB NPL citation among the 906 invalidated patents was of 20% or more . (N=74-186).

[4] Rigorous Policy Pilots, appendix Figure 2.

[5] While several excellent studies of patent quality have considered the role of prior art including Wasserman and Frakes’ studies of the time devoted to patent examination, and work by my colleagues Professors Brian Love and Christian Helmers uncovering the determinants of quality, none of that I am aware has explicitly considered the “gap”, or “relative” citation of non-patent literature citation by US examiners, as compared to PTAB judges, judges, applicants, and EPO examiners as is contemplated by this analysis. Some evidence suggests that the robustness of US examiner vetting, relative to EP examiner vetting, may have implications for outcomes. Among the US patents granted by the USPTO but fully invalidated in IPR, 202 had an EPO counterpart application. Of these, approximately 1/3 of the EPO applications never matured into patents, primarily because they were withdrawn or revoked. But while applications that did not proceed in the EPO but were granted in the US were 30% more likely to have NPL cited in the search report than their US counterpart, the difference in non-patent literature citation among cases where both offices granted the patent was much smaller, a third of that or 10%.

[6] These sources include, based on my conversations with researchers:  DeepMind ResearchPapers with Code,  and conference proceedings from NIPSKDDISLVRC, and many others.

148 thoughts on “Guest post by Prof. Chien: Comparative Patent Quality and the Prior Art Gap

  1. 19

    Inevitably, there will be a “gap” between the prior art document collection addressed by the PTO Examiner of the patent application, ex parte, and the prior art evidence put before the court in any effort to demonstrate that the subject matter of the issued claim is old or obvious.

    Instead of futile attempts to close that gap, one should (I think) strive to build a PTO file wrapper that contains core reasoning on the patentability of what the patent application discloses as the useful contribution to the art, free from any distracting bells and whistles artfully included in the claim precisely to divert attention from the core question.

    That reasoning will serve as a prism for analysis when, post-issue the validity of the issued claim is examined. That analysis will help businesses to resolve their patent disputes without having to take them through the courts.

    This is not rocket surgery. None of this is new. In fact, it is very old. See the mandatory provisions of Rule 5 of the PCT, from the year 1973.
    link to wipo.int

    1. 19.1

      I “get” what you are saying, but what you are saying is arse-backwards, and is no doubt far too colored by the 40 plus years of your experience circling a same city block. Certainly, your desired viewpoint would make your job easier, but your job is a fringe job when the totality of innovation and innovation protection are taken into view.

      Your suggestion simply does not make sense as being a key driver. So while their are elements that certainly make sense (for serving their limited purpose), trying to make everyone wear the spectacles that work for your eyesight only makes the overall “vision” frightfully inefficient.

    2. 19.2

      “Instead of futile attempts to close that gap, one should (I think) strive to build a PTO file wrapper that contains core reasoning on the patentability of what the patent application discloses as the useful contribution to the art, free from any distracting bells and whistles artfully included in the claim precisely to divert attention from the core question.”

      Well I mean Max that’s a good idea except for the voluminous amount of cases where the bells and whistles are why the case eventually gets allowed.

    3. 19.3

      Max … um … well … golly-gee … while your goal is a worthy one, you’re gonna need to define, “bells” and “whistles.”

      Terms suitable for the same sewer of nonsense from which, “abstract,” “something more,” and “directed to” were fished.

      Please; no “gisting” of claims under the guise of “core reasoning” … ignoring the legally required claims-as-a-whole analysis.

      The widely overused Section 103 readily takes care of your concerns in this regard.

      1. 19.3.1

        Don’t be alarmed, ProSay. All I’m saying is that one needs a rigorous approach to the assessment of patentability of a claim (to, say, a vehicle) that has been amended in prosecution, to achieve novelty, by the addition to the claim of an extra feature (what I disparagingly refer to as a bell or a whistle) not found in combination with the other claim features in the prior art).

        As you point out, the enquiry is under the auspices of 35 USC 103. Is the new combination of features an obvious combination. The enquiry into such a claim is very different, as between the USPTO and the EPO. US patent attorneys who instruct me fondly suppose that the introduction of any such bell or whistle will succeed but at the EPO often it does not.

        The acid test, of course, is not what a patent attorney thinks is or is not obvious but what a PHOSITA would have found obvious. I happen to think that the obviousness enquiry at the EPO is more in line with how a PHOSITA thinks about obviousness.

        As 6 points out, it is the bells and whistles that, in the USPTO, carry the claim through to issue, often (in my opinion) when the claim is still obvious and over the misgivings of the Examiner who is left by the governing case law without any line of reasoning that expresses correctly the lack of patentability of the bicycle + bell claimed combination.

        1. 19.3.1.1

          AH, shall we rekindle the fact that the EPO has purposefully chosen to NOT be consistent with the use of the legal fiction of PHOSITA…?

          Your lovely “show” to Pro Say rather crumbles under closer scrutiny.

        2. 19.3.1.2

          …and let’s remember that your feelings (again) appear to NOT give proper weight (or respect) to the FACT that patent law is Sovereign law and the Sovereigns have chosen differently than your feelings.

  2. 18

    This is just to agree with comments of others here that this article seems to be based on a dubious unproven premise that non-patent-publications are better prior art than patent prior art [at least outside of prior art for patent applications for designs, pharma and some software algorithms]. As noted, 35 U.S.C. 112 and other legal requirements for patents often provides more specific details and alternative embodiment than other publications.

  3. 17

    It’s clear from her writing and the comments that Prof. Chien has no idea what goes on in examination and prosecution. She couldn’t examine a case and she couldn’t write and prosecute one. Her thoughts on how to improve the process are worthless.

    1. 17.1

      I confess, I honestly do not understand what it would mean to “make the ‘robustness of the prior art considered’… an explicit quality metric within existing and future prior art initiatives… .” I halfway expect that this is just buzzword waffle, although I would be delighted to be proven wrong about that.

      Still and all, I can just sort of make out a point in Prof. Chien’s essay to the effect that the EPO is finding good art that the USPTO routinely misses. This is certainly my own impression when I prosecute chem/pharma patents. In the more computer/informatics portfolios that I manage, I find that the EPO is not all that great, but that the KIPO does a really good job.

      This suggests an easy route to improvement of US patent quality. Applicants whose applications are slotted to the 1600s and 1700s should be obliged to pay for a search to be done by the EPO. Applicants in the 2000s should be obliged to pay for a KIPO search.

      If the applicant is already filing in the EPO/KIPO, this will add no additional cost to the process. If not, it will represent an increased expense, but not an insupportable price increase. I will be very much surprised if the added cost deters any more than ~5% of applicants, and that 5% will be disproportionately enriched in low-quality filings that would have been culled by the examination process anyway.

      1. 17.1.1

        “I confess, I honestly do not understand what it would mean to “make the ‘robustness of the prior art considered’… an explicit quality metric within existing and future prior art initiatives…”

        She means write in the pap for examiners (in the US) that the spe/director/someone will check their work every year for whether or not the examiner cited (not just searched I would presume) through NPL, foreign, and US refs. And that this would be a factor in the pap quality rating given to the examiner. Keep in mind that currently examiners are only technically required by the pap to search US patent databases (and are informally instructed to use their search time the best they can in digging into NPL/google/foreign stuff).

      2. 17.1.2

        Dozens, getting an EPO prior art search on subjects they do well can be a good idea for PCT filing programs, but of course not for the many U.S. applications for which there are no filings of foreign equivalents.

        1. 17.1.2.1

          What do you mean “of course”? Why would it not be a good idea for all such applications?

          I realize that by the time one gets to the point where a US app has been assigned to an art unit, it is too late to file in Europe or Korea and get the benefit of the original filing date. Still and all, the EPO & KIPO are only too happy to do searches for hire (I have seen many Singapore office actions where the EPO or KIPO did the search). I expect that if the USPTO were to approach the EPO/KIPO about running searches as contract work, that those offices would be glad to oblige.

    2. 17.2

      she has a lot of company from academics who opine daily about the “problems at the PTO” yet most have never prosecuted a patent, or, in many cases, even read a prosecution history….and yet they’re getting plenty of airtime funded by sponsorship from deep pocketed companies to attack and devalue the work of the PTO and inventors to destroy inventors’ rights – then they massively cross cite each other to give the illusion of legitimacy to their work

    3. 17.3

      when both me and AAAJJ agree on a topic there’s a pretty good chance that it is correct. This is such an occasion. If she is already a patent attorney she should go do a stint in prosecuting patents for awhile.

  4. 16

    This is misleading. The majority of IPRs challenge the same or cumulative prior art as was before the examiner.

    The majority of IPRs are subjective hindsight “it would have been obvious to combine X, Y, and Z” where X, Y, and Z do not teach anything surprising to the inventor or the examiner.

    1. 16.1

      What is “misleading” is continuing to argue that the majority of IPRs are based on the same art already considered by the application examiner, in the face of an actual study and PTO statistics to the contrary. It may be your own experience but it is not typical and is actually foolish for an IPR petitioner, highly risking the already substantial odds of the PTAB refusing to initiate the IPR.

      1. 16.1.1

        Paul,

        Is there a distinction to be made between “same” and “cumulative?”

        I can easily see your point about same (with a small caveat in that even the same art may be used differently for different teachings within that same art), but the matter of art “being cumulative” may be considered a MUCH LARGER “blanket” that captures tons of art — and especially tons of art NOT on the record.

      2. 16.1.2

        Paul, it is child’s play. You just click on a few references on the face of a patent and then pick one of their references as X, another as Y. Grab any product spec or draft industry standard and call it Z. Then you pay a someone with a PhD and an 8 page CV to say it would have been obvious for a POSITA to combine X and Y, or in the alternative to combine X, Y, and Z. Construe the claims and the prior art to overlap. This is THE MAJORITY of petitions. I have read enough to know.

  5. 15

    There is another problem here:

    to the extent that the Supreme Court’s jurisprudence can be understood as a clumsy response to the proliferation of weak patents

    This appears to “justify” that which cannot be justified.

    It simply is not up to the Court to seek to make its feelings BE the law.

    Of course, those who can honestly remember history KNOW that this is not the first time the Supreme Court has been anti-patent.

    1. 15.1

      I don’t know if I would say that the Supreme Court is anti-patent. I think it’s more likely they are just ignorant with respect to almost everything to do with patents. Thomas is the only one with any semblance of patent experience, and he has the intellectual depth of a mud puddle. The Supreme Court is acting like a bull in a china shop and not considering the ramifications of what patent law is supposed to accomplish or what it means to the economic and technological development in this country. I think they’ve been too haphazard about damaging the patent system for it to be anything other than a lack of understanding. If it was intentional, they could do much worse very easily (unfortunately).

      1. 15.1.1

        Fair points — except, they could be BOTH inept and anti-patent.

        There is a general animus of “patents are bad” that pervades their ineptitude.

        Plus, historically speaking, the animus really is not anything new.

  6. 14

    There will always be a quality gap between prior art considered in an ex party patent prosecution vs. inter partes review and litigation. The Examiner has neither the time nor the financial incentives to do a complete review of the art.

    1. 14.1

      A few thoughts in response:

      (1) I agree that there will always be a gap. I would go further and say that there should always be a gap. If we as a society were investing the same amount of effort into policing the bounds of every patent claim that we invest into the most commercially important patent claims, that would mostly represent a waste of resources.

      (2) That said, I do not read Prof. Chien as suggesting that there should be no gap. I read her essay simply as saying that the gap could (within the bounds of what resource constraints permit) be smaller than it is presently. If it could be smaller (without investing additional resources), then it should be smaller.

      1. 14.1.1

        (1) above sounds in there being SOME pragmatic tradeoff between a sense of diminishing returns for perfection and the fact of the matter that the presence (and level) of presumption of validity is already NOT absolute at the time of grant.

        As to (2), the professor makes some unsubstantiated assumptions and seeks to implement changes based on those assumptions being de facto presumed to be correct. THIS is where the “I Use My Real Name” aspect MAY very well kick in and the corpus of her work may be used to inform any presence of bias (implicit or explicit) and — with Chien — there is a very real “why is she wanting this” aspect that is (and should be) brought to the table.

        1. 14.1.1.1

          Right, it’s a complete mystery why anyone would want to see the PTO citing better art during examination, especially during examination of logic patents.

          There must be some explanation for this mystery! Probably the Deep State is involved closely.

          1. 14.1.1.1.1

            You use the phrase “logic patent” but you do not understand what that phrase means.

            You then miss the point of my post and want to obfuscate (again) with implications that “bad” searching is somehow “desired,” but desired by particular segments of innovation. You do such with nothing more than the feelings that you pound.

            If you have anything substantive and cognitive, by all means add that instead.

  7. 13

    Colleen I expect better from you for serial. I just now checked who the author of this thing was, and Colleen I’ve seen better from you. You seriously need to go back to the drawing board before making such outlandish “recommendationslol”. You’re seem entirely unaware of the realities facing each party in overall patent environment, and you could have educated yourself before coming up with these “recommendations” and having published this absolute nonsense.

    1. 13.1

      One of the anti-patent themes is to try and remove the expert nature of examination. They want to shift the burden to the applicant and then put a presumption on a reference as being relevant if the applicant did not cite it.

      Of course, anyone that actually works in technology understands why this is impractical and not reflective of how experts work in fields with a vast number of publications.

      But this Chien is motivated by money from large corporations.

      1. 13.1.1

        The “expert nature” IS suspect.

        All one has to do is look on these boards for the typical views of known examiner postings (such as Random and Ben).

        That being said (and very much against Malcolm’s “one-bucket” portrayals), plenty of Pro-Patent folks like you and I have LONG been trying to get the focus to be on improved examination quality.

  8. 12

    “were there references that the examiner missed?”

    The answer is of course 90%+ of the time “Yes derp”.

    The actual pertinent question is: were there BETTER references that the examiner missed? And the answer there is a much lower percent of the time “yes”.

    “First, the Office should make the “robustness of the prior art considered,” whether measured by NPL citation, foreign patent citation, diversity of references, or other measure, an explicit quality metric within existing and future prior art initiatives, consistent with the Office’s commitment to continuous improvement.”

    Pants on head idea there general, unless they want to hand out more time to just cite useless refs.

    “should take into account the “bias” against non-patent literature currently embedded in examiner citations”

    First you need to establish that such a discrepancy is a “bias” literal re re leftist cultist. Then you need to address that often the NPL just ain’t as technically detailed as patents are written. That’s a fact, and ez to verify. Or at least they are “differently technically detailed”. Some sorts of things are more often set forth in NPL, some sorts of things are more often set forth in patents.

    1. 12.1

      “the NPL just ain’t as technically detailed as patents are written. That’s a fact, and ez to verify. Or at least they are “differently technically detailed”. Some sorts of things are more often set forth in NPL, some sorts of things are more often set forth in patents.”

      This is a really good point. In my art, NPL is either extremely superficial or it has not especially useful detail on the algorithm of a functionality.

      This is not great for rejecting claims that broadly claim algorithm results while going into detail on periphreal elements. In other words, a NPL paper providing minute detail into a mustache recognition algorithm may be a poor reference for rejecting a claim to a mobile device which spends half a page on obliquely describing a user interface and how the mobile device connects to a server a
      before offhandedly reciting that the mobile device is configured to recognize a mustache.

      1. 12.1.1

        Methods for recognizing mustaches.

        Sure, that’s why we have patents.

        1. 12.1.1.1

          Notwithstanding that the “mustache” was merely a colorful example, your personal feelings have ZERO to do with subject matter that is “proper” matter for innovation protection.

          No one died and left you King.

      2. 12.1.2

        that’s my experience too Ben

        patents tend to be a mile wide and an inch deep, while most NPL is an inch wide and a mile deep on some very specific topic

        they both serve different purposes, but, in general, patents are a better place to start in most cases, unless you read the claim and it is indeed directed to some particular algorithm where its easy to find a science paper on something very close to it

  9. 11

    “Applicants were more than five times (66%) more likely to include NPL in an IDS than Examiners (13%) were to cite it. Though the sample size does not permit fine-grained comparisons, the basic finding – that US examiners are citing NPL far less frequently than PTAB judges or applicants – held across all technical centers.[3]”

    True but that’s because the applicant’s dum p ga rbage loads of worthless NPL (as well as patents many times as well). No examiner has time to even fill out the 892’s and attach copies of individual NPL at the rates applicants do. It would literally eat up all examination time to do so.

    1. 11.1

      Of course applicants dump garbage, b/c the case law compels them to do so. Not IDSing something that you know about, even if you think it’s irrelevant, means hundreds of thousands of dollars later in litigation proving that the reference was irrelevant or didn’t anything that wasn’t already in the record. IDSing it takes that out of the equation.

      But Colleen Chien apparently doesn’t know that. I’m guessing she’s never drafted, prosecuted or examined a patent application.

  10. 10

    “3.2% of the prior art relied upon by a U.S. Examiner (as provided in an 892 Form) was non-patent literature while the comparable rate in European Patent Office cases (as an X or Y reference in the search report) was 20%.[2]”

    Interesting numbers, but the EPO’s idea of an X or Y ref is tarded. I see them using bad art all the time. And their idea of “law” surrounding the application of “Y” art is similarly tarded. Indeed, sometimes I see them doing crazy stuff with supposed “X” refs as well.

    1. 10.1

      Actually it’s the EPO’s PSA approach that is sane, and it’s the USPTO’s approach of combining 3, 4, 5, 6, etc. references with nothing but hindsight that is insane. EPO examiners consistently find the closest prior art (i.e. reference D1) and stick with it throughout prosecution. That’s because EPO examiners truly understand that “obviousness” or “lack of inventive step” truly is an inquiry into what one of ordinary skill in the art WOULD do, not what one of ordinary skill in the art COULD do if given 4, 5, 6 references and applicants’ disclosure as a road map.

      1. 10.1.1

        I agree AAA JJ. I also find that prosecution at the EPO is more sane. And that I often get applications with a 101 at the PTO where the EPO finds it is technical. I also get application allowed at the EPO and have trouble at the PTO.

        1. 10.1.1.1

          +1 to NW

          +1 to AAA JJ

          Quite right, both of you.

      2. 10.1.2

        AAA , I agree that EPO-PSA drives EPO Examiners to select D1 and stick with it. That is because the heart of PSA is the step of defining something called the “objective technical problem” (the “OTP”). Other factors, not to be underestimated, are 1) at the EPO, they search once, and once only, prior to exam on the merits, so the search has to be all-embracing and 2) you can’t amend to an invention not searched. If you want to do that, you will have to file a divisional.

        It is an interesting question, whether it is open to the USPTO, under the FItF AIA, to borrow from the EPO and also require its Examiners to formulate obviousness objections using the OTP. But even if they were to do so, there will be little improvement in prosecution efficiency, for as long as Applicants can defer defining their invention until after the USPTO has searched.

        1. 10.1.2.1

          [T]here will be little improvement in prosecution efficiency, for as long as Applicants can defer defining their invention until after the USPTO has searched.

          Interesting point, Max. Thanks for noting that distinction. I am not sure that it would have occurred to me had you not mentioned it.

        2. 10.1.2.2

          for as long as Applicants can defer defining their invention until after the USPTO has searched.

          Again with this canard…

          It’s not like in the US new matter is being added, nor is it that the examiners are somehow not charged with examining the application (which means, the entire application).

          The way that MaxDrei and Paul spin this is more than a bit disingenuous.

          1. 10.1.2.2.1

            The sort of amendment that the EPO declines to admit for failure to pass its “no new matter” filter is filterable at the USPTO under the WD examination. But whether Examiners at the USPTO are minded, motivated and permitted to use it, whether they are (if you will) “up for it”, is another question. EPO quality management is ferocious, on the rigour of the “no new matter” enquiry. At the USPTO, does management care at all, whether the WD requirement is examined rigorously, or at all?

            It’s a “First to File” thing. The USA has yet to go through the half century learning process, how absolutely crucial it is to “quality” to confine rival Applicants to what they said their respective inventions were, on their respective priority dates.

            1. 10.1.2.2.1.1

              You “intimate” that examiners are not allowed to follow the law vis a vis new matter control in the US….? (permitted)

              Where do you get this stuff?

        3. 10.1.2.3

          What I’ve found from years of working with colleagues in Europe is that EPO examiners do search the disclosure, and don’t do what US examiners do, which is, “Here’s a combination of references that ‘reads on’ the claims when I apply my BUI to them. And when you amend the claims in an attempt to ‘work with’ me, I will cite some new reference(s), ignore your arguments, claim my new grounds were necessitated by your amendments, make it final, dig in my heels, and wait for RCE gravy train tickets.”

          Your suggestion that US applicants are “deferring defining their invention until after the USPTO has searched” is silly. BUI game playing is a very common strategy employed by US examiners. They do it because they know it works to generate RCE’s and there are zero consequences to them.

          1. 10.1.2.3.1

            Sorry. What is BUI?

          2. 10.1.2.3.2

            “Your suggestion that US applicants are “deferring defining their invention until after the USPTO has searched” is silly. BUI game playing is a very common strategy employed by US examiners. They do it because they know it works to generate RCE’s and there are zero consequences to them.”

            I have to be honest with you, the more I look into this topic the more I think it is actually a mixture of what you’re thinking about as “muh gravy train riding” and also very much so informal policy decisions inside the office and/or by the office coming into play. I say this because I have had several applications now in three veins of technology each with several apps down each vein and all of them want these certain interpretations of certain words. However I am practically speaking bound by internal policy to not give the terms that meaning. The best part about those specific terms is that the applicants could very easily just supply a definition of the term, hopefully from some technical reference somewhere as evidence, and either amend their claim down that definition or prosecution history estoppel themselves into an allowance. But strangely I have no takers on that route. The definitions they could give could still be way broad enough to cover practically anything within a very broad scope for those terms and they would still get the claims.

            I do wonder how much of those types of internal policy decisions impact yours and others claim construction disputes.

      3. 10.1.3

        “and it’s the USPTO’s approach of combining 3, 4, 5, 6, etc. references with nothing but hindsight that is insane. ”

        I will grant that the obviousness analysis does on occasion get out of hand. But that is somewhat a function of retardation in the examination process and partly an artefact from the obviousness standard as a whole in 103.

        “EPO examiners consistently find the closest prior art (i.e. reference D1) and stick with it throughout prosecution”

        I agree with you that they pick a ref and stick with it, I disagree with you that their D1 is more than half the time the actual closest art. At least in the cases I see.

        1. 10.1.3.1

          D1 is the closest prior art because EPO examiners are not using BUI.

          1. 10.1.3.1.1

            Please, AAA JJ, what is “BUI”?

            1. 10.1.3.1.1.1

              Broadest Unreasonable Interpretation

              Most U.S. examiners use that as their standard.

          2. 10.1.3.1.2

            You wish. A lot of the D1’s I see are “D1” literally because they don’t understand what is even being claimed and it is just some rando ref from the same generic field. That is beyond a “muh unreasonable interpretation”.

            1. 10.1.3.1.2.1

              OK 6. At least you acknowledge that D1 is being pulled from the “same generic field”. That’s something.

              Bear in mind that the obviousness enquiry in the English courts starts from the “cgk” (common general knowledge) of the skilled person. Any patent publication is used as a secondary reference. It is not a million miles from that approach for the European Patent Office to use D1 instead of what the English court has found to be the cgk (if only because the court needs about two full days of intensive cross-examination to arrive at its finding). This time-intensive, 2-day, inter partes adversarial enquiry is not appropriate or practicable for every new patent application entering exam on the merits at the PTO. Hence, D1 instead.

              The choice of D1 might seem “rando” to you but trust me, it certainly isn’t, in the context of the obviousness enquiry under the EPC.

              1. 10.1.3.1.2.1.1

                “OK 6. At least you acknowledge that D1 is being pulled from the “same generic field”. That’s something.”

                I agree, it is something. And indeed, they may even be correctly finding a D1 under you guy’s definition and in view of a half ar se search. My issue comes in when crazy sht starts happening in the “analysislol”. If they put it down as D1 and then proclaim the invention patentable all is well, and I am in agreement with them. What I see is them putting it down as D1 and then being like whoop this limitation is literally hand waved (literally they write that in fancy language) or a key provision of the claim is ignored and this is often where the limitation can’t even somewhat fit into the D1 as a physical device/method, even if it was found in a great 2ndary. These situations lead me to believe that they literally don’t understand what is being claimed. And I especially say this because these sorts of instances are usually something somewhat technically complex and are hard to understand.

                But what you’re talking about, that there is method to the madness, I’m sure is quite correct.

        2. 10.1.3.2

          6, what is for you the “closest” might not be for an examiner at the EPO. At the EPO, D1 is that single prior art reference that represents the most realistic starting point for a PHOSITA charged with solving the “objective technical problem” (the “OTP”). The OTP is an artefact of EPO-PSA, the EPO’s “problem-solution approach” to the obviousness enquiry. True, sometimes an EPO Examiner fails to cite as D1 the most realistic “starting point”. But, mostly, they do.

          1. 10.1.3.2.1

            And what if the “inventive step” IS the realization that AN objective technical problem exists in the first place, uncontemplated up to that point? (Not knowing what one does not know)….?

            1. 10.1.3.2.1.1

              What if? Right from the get go, EPO case law acknowledged that invention can lie in the perception of a problem and the claim can be patentable even when implementation of the solution is trite. Such cases are rare, but still crop up, from time to time. EPO-PSA handles them without difficulty.

              Next?

              1. 10.1.3.2.1.1.1

                The “next” is how — as in how is the system played out when the D1 (or whatever) cannot by its nature aim at the “inventive step?”

                This type of thing is simply a different animal than a mere improvement patent, and what I see from you is a general hand waving that what works for one animal will “simply” work for the other.

        3. 10.1.3.3

          Re: “Your suggestion that US applicants are “deferring defining their invention until after the USPTO has searched” is silly.”
          Not entirely, since an amazing number of U.S. applications are filed with no pre-filing prior art search and a limited number of extremely broad claims, and then not surprisingly not greatly narrowed until after the first office action.

          1. 10.1.3.3.1

            Paul,

            I think you confuse and conflate the practice of pin-pointing allowable material (actual and pragmatic practice) with a false notion of “not-defining.”

            The bottom line is that the ALL of the necessary defining IS (and must be) present on the filing date.

            You seem to have a different issue with “clever practitioners” that merely know how to be flexible as to any (unknowable at the time of filing) TAKE that the Office will have as to not only possible prior art, but possible combinations of prior art.

            As you may recall, Prof Crouch at one point had published a study showing just how little examiners use prior art supplied by applicants (even applicants that HAD been diligent, searched, and supplied large lists of prior art).

            I would also be remiss if I did not remind you that it is the Client’s choice of engaging in a search (and at what level), AND that the law as set up by the US Sovereign simply does not require ANY searching whatsoever.

            Mind you, as I have often stated, best practices is that A best level (and that depends on a number of factors) search be undertaken.

      4. 10.1.4

        “That’s because EPO examiners truly understand that “obviousness” or “lack of inventive step” truly is an inquiry into what one of ordinary skill in the art WOULD do, not what one of ordinary skill in the art COULD do if given 4, 5, 6 references and applicants’ disclosure as a road map.”

        I would whole heartedly agree with that part of your analysis. But let me ask you, as you may know already, and may know authority in caselaw for it, is the obviousness standard as currently in 103 what they WOULD do (as opposed to COULD do and may have a slight motivation to do), and if that is the case why is that not made excplicit to the entire corps and the entire world much more explicitly. Even so far as not writing it explicitly into 103? And yes I already know that “would” is in 103 in a slightly different context but that doesn’t seem to resolve this particular hair being split.

        Anon MM et al. are welcome to put in any 2 cents on this.

        1. 10.1.4.1

          It is not a “hair” being split as much as it is a craven misapplication of law — due in no small part from the anti-patent animus of the Supreme Court.

          Motivation to combine is a phrase that requires all three words.

          FAR too often, examiners (and the courts are guilty of this as well) treat “motivation” as if it were a singular word, and turn to apply that singular word with NO CONTEXT of the phrase of which it is a part of.

          Most any singular item has a value to that item. It is plain error to confuse the value of the single items AS the motivation to combine.

          Motivation TO combine has a different nuance than gee, let’s combine individually good things.

          Combining individually good things IS (generally) the type of combination that merely could happen and does not speak at all to the (nuanced) different happenstance of WOULD that combination be made.

          If one want to “play” on the synergy role, then “Would” requires a synergy, while “could” is mere happenstance.

          Anytime that I see an obviousness rejection of A and B and the motivation to combine is a flippant the value of B is of course good to add to anything, I know that I am dealing with an examiner that is c1ue1ess about the full phrase and especially the last two words of “to combine.”

        2. 10.1.4.2

          Asking what a PHOSITA “could” do is easy but unhelpful to resolve the obviousness question.

          Asking what a PHOSITA “would” do is pointless, until you define a context, a scenario.

          But that is exactly what the OTP does in the EPO PSA approach. You pose the PHOSITA the OTP and then ask what that person “would” have done, in the light of any hint or motivation, found upon searching the prior art, on possible ways to solve that problem.

          In other words, it is impossible to switch the standard to “would” until you first switch to EPO-PSA.

          1. 10.1.4.2.1

            This.

            Without defining PHOSITA, which U.S. court decisions don’t really do (e.g. see J. Kennedy’s (or his patently ignorant, pun intended, law clerk’s) claptrap in KSR about “ordinary creativity” and “ordinary innovation”) there is no hope of confining the obviousness inquiry.

            What does PHOSITA know? What can PHOSITA do with what PHOSITA knows? That is what the obviousness inquiry has to resolve.

            As MaxDrie notes, in the PSA approach PHOSITA can apply objective technical solutions to objective technical problems. In other words, PHOSITA can apply known solutions to known problems.

            The problem with U.S. obviousness case law, most especially KSR, is that it has devolved into completely circular reasoning with its emphasis on “predictability.” See the musings of the random examiner on this site. “It’s obvious to do it because the result is predictable!!!!!! Voila!!!!!!”

            Under that “reasoning” everything is obvious. But the inquiry has to answer why PHOSITA wants that result. The blather in KSR about “market needs” and “design trends” is completely useless in answering that question. Of course we all, including PHOSITA, want better, faster, cheaper, lighter, stronger, stuff. If that’s all the “reasoning” we need to modify and combine “disclosures” and “teachings” of the prior art then we end up with everything being obvious because we can just use hindsight to say, “Of course that’s obvious!!! All they did was make it cheaper!!!! And stronger!!!! Anybody could’ve done that!!!!”

            Without evidence of the problems being known and the solutions applied to those problems being known, the obviousness inquiry can’t provide any meaningful answers. But whenever people like me ask the loudest voices on this site for evidence of anything they decry as “obvious junk” all they can do is offer silly responses like, “You need evidence that water is wet?!?!” No. I don’t really need evidence that water is wet. But if that’s so obvious why is it so hard to provide evidence of it?

        3. 10.1.4.3

          I wrote a response but it appears that Dennis’s nanny state filter ate it.

          Too long to retype. But briefly, Max hits the nail on the head. You have to define what PHOSITA wants to and can do with all the knowledge PHOSITA has.

          1. 10.1.4.3.1

            I appreciate it bro, but do you have some authority for that? Hopefully a whole line of cases that all cite to themselves stretching to time immemorial? Also hopefully these guys put it more explicitly in terms of would/could.

            Hopefully D will look through the filter sometime this week as this is actually a fairly good topic.

          2. 10.1.4.3.2

            You have to define what PHOSITA wants to and can do

            …which drives right into my post at 10.1.5.

            Thanks for the segue, AAA JJ.

      5. 10.1.5

        There is an even more pernicious trap in the Would/Could application to the legal fiction of a Person Having Ordinary Skill In The Art:

        Level of creativity.

        The “Would” path is meant to emulate the “automaton” path of the legal fiction being one merely that applies the world of the known (that entire world of the known) ONLY in a manner as would be expected.

        This automaton is meant to be “wooden,” with NO spark of creativity and unable to make even the simplest of “crossover “a-ha’s.”

        However, this “simple” legal fiction has not been the fiction that the Court wants.

        Instead, the Court wants a legal fiction that possesses this (undefined) level of “normal creativity.”

        The attempt to imbue this into the Legal Fiction sometimes falls under the guise of “having common sense.” However, anyone who has actually managed other people in a professional context can tell you that “common sense” is not all that common and certainly sometimes does not make sense.

        The slippery slope that comes into play with imbuing the Legal Fiction with “Ordinary Creativity” is actually nothing more than the Court wanting to ignore the Act of 1952 and the express rebuke of Flash of Genius.

        That (undefined) ‘something’ that sets apart “invention” from the mere “ordinary creativity IS that same Flash of Genius.

        Once you “sneak” that back into the rubric for evaluating obviousness, you have turned the “Would” into “Could,” and have started sliding down that slippery slope.

  11. 9

    . . . except that this author’s prior art “gap” rests in large part on the false premise that NPL art is as good as or better than issued patents and patent app art.

    Yet, without rigorously comparing and contrasting the NPL to the patent / patent app based prior art in the above Fig. 1’s 906 patents invalidated in IPR, it’s impossible to arrive at the conclusion that Patent Office examination would be better were more NPL prior art considered.

    Some gaps matter. Some don’t.

    Sorry; but this one has not been — and indeed may not be able to be — shown to matter.

    JNG’s comments at #4 below are right on the mark.

    You want the absolute best prior art search; including NPL?

    Then be prepared to cut a six-figure check to get it.

    Because they are time-restricted, the hard-working examiners should not be blamed for the prior art work that they do.

    In the large majority of cases, they’re doing the best that they can.

    1. 9.1

      Also saying that 66% of applicants’ IDS is NPL isn’t helpful because a huge chunk of that is ISR’s or to a smaller extent, regurgitated office actions for other applications in the patent’s family. I’d guess that exactly 0% of examiner 892’s include those items.

  12. 8

    The applicant pays a fee that the PTO calls a “search fee”; but as everyone knows, that doesn’t begin to cover the cost of the Examiner’s actual search time or cost – also, whether he/she wanted to or not, they can’t ask for or pay for “more” search; and, again, none of this changes the easier solution that 90+% of all applications are laid open and available to anyone to object to if they think the PTO is not doing a good job with search/examination

    1. 8.1

      Or just expunge the abstract “do it on a computer” and “correlate this” cr @p from the utility patent system because it’s not meaningfully “examinable” under the existing regime and it never belonged in the system in the first place.

      1. 8.1.1

        Translation: “Wah, Malcolm’s feelings don’t “like” certain forms of innovation.”

  13. 7

    Thank goodness the PTO has spent so much of the last two decades creating a massive database of prior art logic, inference and deduction, in addition to a coherent set of rules for claiming these sorts of abstractions so that searching the prior art and examining claims directed to such subject matter is a practical possibility.

    Oh wait …. different universe. That never happened on this planet. On this planet, the worst attorneys who ever lived just bought themselves a few more years of total chaos so they could continue to abuse the patent system and r@ pe the country for their personal benefit.

  14. 6

    She forgot to add, “from the Google PR Department.” *statistics may be adjusted to further our agenda.

  15. 5

    I would agree that this is where the focus should be. Better search and examination at the initial examination phase would benefit everyone. Maybe more time should be allotted to Examiners per application? In my experience, there have been several instances where it was clear that the Examiner had not, for whatever reason, even read the specification. This of course inevitably leads to a bad search and mostly irrelevant results. Any ideas to increase the quality of the search and examination would be welcome by me.

    1. 5.1

      Or you could write better claims instead of burying the “actual invention” behind a bunch of b.s.

      Nah, what I am saying? That would require work and skill.

      1. 5.1.1

        Obviously you have nothing intelligent to add. By posting, you merely demonstrate this to everyone.

    2. 5.2

      “Maybe more time should be allotted to Examiners per application?”

      I think this must be part of the solution, but it won’t happen anytime soon. The patent bar as a whole is the most important “stakeholder” at the USPTO. Any significant increase in search fees will just come out of their pockets, so they will just continue to demand that the statute entitles their clients to all three of “fast, good, and cheap”.

      1. 5.2.1

        Interestingly enough Ben, you only have yourself to blame for accepting a requirement that (apparently) you know that you cannot live up to.

        “You” here obviously being the Royal you of the examiners as represented by your duly elected union representatives who have signed off on the internal job timing requirements.

        To be perfectly pragmatic and cold-hearted about this — once again — you have no business making the problem of your internal metrics BE the problem of people who have paid the requested price for the specified service.

        I say “cold-hearted” not because I do not feel for you in your situation. I do. Examination under such constraints is not easy.

        But the collective “You” have accepted these constraints and it is more than a bit disingenuous to accept them and then turn around and Be Otch about them.

  16. 4

    For many fields, you’ll never be able to come close to filling this gap, because Examiners don’t have the tools or time to do a 200 hour search, which is the norm for litigators trying to break a patent. I’ve been on cases where they easily spent $250k on prior art searches, scouring the planet to find THE reference that would carry the day. BTW PTAB judges don’t “cite” prior art, its handed on a silver platter to them by well-funded defense counsel. As it stands now, the burden on getting rid of “bad” patents (which is really a pejorative term used for any patent that is enforced nowadays) is on the industry, as it should be. The serial infringers of the world have a mechanism available to them (including 3P submissions) to kill patent applications in vitro as almost everything is laid open to public inspection, but they willingly ignore this route. I have no sympathy for the cost they bear in trying to beat a patent years after they could have preemptively addressed the problem. In short, industry has no business complaining about PTO examination when they don’t do anything to support it.

    1. 4.1

      “Serial infringers” = the successful corporations and universities that b0 ttom feeding embarrassment J Nicholas Gross tries to shake down with his junk patents

      1. 4.1.1

        I see you picked a more appropriate color for your avatar: GREEN

        Still trolling people more successful than you? Meaning everyone posting on this board lol? Remind us again of your most recent… anything worth noting in the IP world for one of your clients?

      2. 4.1.2

        ““Serial infringers” = the successful corporations and universities that b0 ttom feeding embarrassment J Nicholas Gross tries to shake down with his junk patents”

        MM you know good and well that good users of the patent system likely outnumber the “bad” 10 to 1. If not more. Be honest bruh.

        1. 4.1.2.1

          Right. I do know that. And I also know that “serial infringers” is a ridiculous nonsensical term used by tr 0lls because … they be tr 0lls and that’s all they do.

          1. 4.1.2.1.1

            Nonsensical?

            Unclench your eyes son.

    2. 4.2

      Re: “PTAB judges [in IPRs] don’t ‘cite’ prior art, it’s handed on a silver platter to them by well-funded defense counsel.” [Likewise in patent litigation.]
      Furthermore, that prior art [from orders of magnitude more search time] is not just cited, it is presented in claim charts that are better than any first action, where every claim element is matched to the specific part of the prior art, and accompanied by explanations and declaration support.
      So, it is absurd to compare that to normal patent application examination. Which is also why it is absurd for patent owners to go charging off filing lawsuits on their patents without doing any quality checking first.

      1. 4.2.1

        “Which is also why it is absurd for patent owners to go charging off filing lawsuits on their patents without doing any quality checking first”

        Absolutely, you’d be insane not to double check EVERYTHING before firing any salvo. You’re putting your reputation and financial health in deep peril if you don’t.

        1. 4.2.1.1

          If BOTH sides are doing sixty checking, why not reduce the patent office to a fraction of its current multi-Billion dollar budget (paid entirely by innovators) and just move to a registration system?

          From the sounds of you two (and the typical whining examiners) the BILLIONS currently spent for Office examination is simply a direct waste.

          1. 4.2.1.1.1

            “If BOTH sides are doing sixty checking, why not reduce the patent office to a fraction of its current multi-Billion dollar budget (paid entirely by innovators) and just move to a registration system?”

            We should.

            We have a defacto registration system whose products are treated as if they came from an examination system. If applicants are not willing to pay for an examination system they should not receive the benefits of one.

            1. 4.2.1.1.1.1

              You kind of missed the point that innovators ARE paying for the 3 plus BILLION dollar budget.

              1. 4.2.1.1.1.1.1

                You point is a fact known by all and disputed by none? Alright…

                It doesn’t matter how much they’re paying if it’s not enough. Innovators are not paying enough to run an examination system at an acceptable level of quality. Therefore they should not be granted the fruits of an examination system.

                1. What do you think are the “fruits” of an examination system? Near as I can tell, the patentee does not “enjoy” any “fruits” of an examination system. The upside of the examination system redounds entirely to the public.

                  Meanwhile, I think that you are not giving the examination system proper credit for its accomplishments. There are a non-trivial number of applications that go abandoned each year after an office action points out a fatal flaw in the claims. Meanwhile, it is a rare application that goes to grant without any of the claims being improved (i.e., brought into better compliance with legal requirements) between filing and grant.

                  In other words, the examination system really does spare the public from the troubles that would otherwise be engendered by unclear, unsupported, or too-broad-in-view-of-the-art claims. The public is getting something out of the present arrangement, and would regret it if the examination apparatus were dismantled.

                2. What do you imagine to be the “fruits” of the examination system that flow to the patentee? Near as I can tell, all of the “fruits” of examination redound to the public, and none to the patentee.

                  Meanwhile, you are too critical of the value of examination. Some non-trivial number of applications go abandoned each year after an office action exposes a fatal flaw in the application. Similarly, very few applications move from filing to grant without some amendments to resolve problems that the examination turns up.

                  In other words, the examination system spares the public from the hassle of literally thousands of vague, unsupported, or too-broad-in-view-of-the-art claims that would otherwise issue each year. Just because the system is not perfect does not mean that it is not providing the public a substantial benefit.

                3. “What do you think are the “fruits” of an examination system?”

                  The presumption of validity. Am I incorrect in thinking this is tied to examination? Surely the prior registration system didn’t presume that unexamined claims were valid?

                4. Patents were presumed valid (with a requirement for clear & convincing evidence to invalidate) even back when the patent act did not allow for pre-grant examination. See Ron Katznelson’s i4i brief for details. It is just a myth and misconception that the presumption of validity stems from examination.

                5. The existence — and level (TWO distinct and important elements) comes about in part due to the nature of challenges (many may challenge, and it takes only one to destroy the property right).

                  Of course, this mode of thinking came from the days that protecting the property right was the desired mindset.

                6. The Katznelson brief doesn’t do a great job selling the pre-existance of the heightened standard, but I’m shocked that there’s so little evidence either way. That’s really interesting! Thanks for the reference.

                  He does note that that “Congress’ enactment of PTO examination procedures in 1836 was aimed not at establishing the presumption of validity but rather at further justifying it’s existance”, so I’m not sure it’s incorrect to consider the presumption a fruit of the examination system at this point.

                7. Grant v. Raymond, 31 U.S. 218, 246 (1832) evidences that stricter evidentiary standards were needed for a defendant to invalidate a patent, than were required merely for the defendant to avoid liability for infringement. At the time that Grant was decided, there was no patent office, and no pre-grant examination.

                8. The Katznelson brief doesn’t do a great job selling

                  Ben,

                  You confuse your own lack of ability to employ critical thinking with what the brief “sells.”

                  This is most definitely a YOU problem.

  17. 3

    What do you guys think is the biggest difference between a litigation search and a patent examiner search? The degrees held by the searchers? The software used by the searcher? The quality of the searchers’ overseers?

    Or could it be that examiners in the fields which the Office considers most complex are limited to about 2 days of time to both search and write their non-final office actions? Hmm.

    Analyzing the “prior art gap” without addressing this is like analyzing the rate at which the Titanic sank without addressing the hull damage. Yes, the weight of the china onboard was a factor. No, it is not reasonable to focus on that factor to the exclusion of the hull damage.

    1. 3.1

      “If we could further narrow this gap in prior art between examination and litigation, then the accuracy of the patent grant – and therefore, its reliability – would increase.” – Director Andrei Iancu
      Most of the gap is inevitable from the difference between a $500. USPTO search plus art review and a $100,000. and up IPR or patent suit defense, given the rapid increases in potential prior art. Some more of the gap is due to the USPTO Quality Review system not doing a true prior art quality review. That is, never conducting a more thorough independent prior art search in sampled allowed applications* to see if better prior art IS being missed that should have been found, and why. A further gap contributor is that we all know that when applicants cite from several to hundreds of references in an IDS that the examiner cannot possibly have time to read them all, ESPECIALLY non-patent publications, and which part of each is relevant is not pointed out. A further gap contributor is significant changes in what is being claimed after the examiners prior art search.
      *especially in applications where 101 rejections were being made and then withdrawn for a high % of allowances.

      1. 3.1.1

        “Most of the gap is inevitable from the difference between a $500. USPTO search plus art review and a $100,000.”

        The PTO probably spends around $3500k for first action searches in the most complex fields (Midcareer primary making $70ish per hours, 16 hours of search at best, 3x for overhead/benefits).

        There is a LOT of room between $3500 and $100,000! If you doubled search time, the USPTO search would be one thirteenth that low end IPR search!

      2. 3.1.2

        Items of utter balderdash from Paul:

        A further gap contributor is that we all know that when applicants cite from several to hundreds of references in an IDS that the examiner cannot possibly have time to read them all, ESPECIALLY non-patent publications, and which part of each is relevant is not pointed out. A further gap contributor is significant changes in what is being claimed after the examiners prior art search.

        You’ve been away from the prosecution side for FAR too long Paul.

        Size of IDS is rather de minimus given how searching is actually done, and it is the ENTIRE application (and not just key words of original claims) that are to be searched, so the notion of amendments after search being some “driver” is a fallacy — especially if searching is done correctly from the beginning.

    2. 3.2

      Correct – you have two different entities with two different budgets, one being “you have X hours, no more, the taxpayers can’t afford it” and the other being “leave no stone unturned, the client is paying and can’t afford to lose”

      1. 3.2.1

        Except that it is not “X hours, no more, the taxpayers can’t afford it,” it is “X hours, no more, most patent applicants cannot or will not agree to pay such a huge search fee increase.” [They pay, not the taxpayers.]

        1. 3.2.1.1

          Except that you know the search fee isn’t enough to pay for the Examiner’s actual time, and you don’t have the option of paying more for a further search even if you wanted. And that is all beside the point, which, again, the more reasonable and practical solution is for the industry, which has the time and $, to police itself and help the PTO.

          1. 3.2.1.1.1

            JNG, I assume you are asking why companies do not file prior art in pending applications of others. There are several good reasons why that is a bad idea for them. First, no one can afford to search for and study unasserted pending claims of others thousands of times a year. Even if the company does happen to know of an application with claims of possible concern to any of their present or [unpredictable] future products, attacking that application with prior art tips off the applicant to do much better application prosecution and add more and better claims – it clearly suggests that there is a potential future infringer. Furthermore, frankly, the company is unlikely to trust an examiner in an ex parte proceeding with no rebuttal or cross-examination not to possibly be horns-waggled by the applicant into allowing the claims, or slightly modified even better claims, over that cited art.
            I.e., save good ammunition for where it does by far the more good, in an IPR or patent license negotiations, instead of taking a high risk of rendering it damp squib useless.

            1. 3.2.1.1.1.1

              Because somehow “much better prosecution” on behalf of a patentee CLEARLY is a “bad thing” to be avoided….

              And THIS is why the mantra of “patent quality” is simply NOT believable when it comes from those that actually seek out Efficient Infringement.

              Heaven forbid that an actually Strong Patent come out of the field helping to make examination quality BE a “thing.”

              1. 3.2.1.1.1.1.1

                So you regularly advise clients to file prior art in pending applications of others?

                1. absolutely – particularly when its the client’s art against competitor; it serves multiple purposes:
                  1) limits opponents claim reach/value by inducing rejections and amendments;
                  2) exposes opponent to later wilfullness finding;
                  3) increases citation count and awareness of client filings in Examiner corps, and GUARANTEES forward citations by opponent legal team (most inhouse teams just propagate everything that they find out about to other cases)

                  I’ve cited single references in IBM/MSFT, etc. prosecutions involving multiple related filings and observed giant knock-on effects as their inhouse teams and outside counsel propagate my disclosure…. everywhere, FREE OF CHARGE

                2. Your reply makes no sense Paul.

                  We are talking about the actions of the community at large when those actions are avoided because they may make the target application into a stronger patent at grant.

                  This is YOUR supposition, so I have no idea why you would attempt to spin this around and ask if I were taking any such actions.

          2. 3.2.1.1.2

            “you don’t have the option of paying more for a further search even if you wanted”

            Not formally, though if you really cared I don’t see why you couldn’t respond to an NoA with an RCE requesting the examiner conduct further search.

            1. 3.2.1.1.2.1

              don’t see why you couldn’t respond to an NoA with an RCE requesting the examiner conduct further search.

              Of course you can’t.

              Which is part of the problem. You operate in a bubble of “me me me,” without regard to the larger picture, nor the FACT that your internal issues are not to be made the problem of my client.

              1. 3.2.1.1.2.1.1

                Why not? What specific case suggests that a patentee would be penalized for such a request?

                1. Why not? Seriously?

                  Because they are YOUR internal problems.

                  That’s why not.

                  IF you all (the royal you) had the gumption to resolve your INTERNAL measures such that you had the wherewithal to do the job that you claim that you want to do, then I would not be making this comment.

                  As it is, you do not (again, the Royal you), and thus my comment is not only made, but is pertinent and accurate.

                2. I can see two problems:

                  (1) The first RCE that you file would probably not trigger a prosecution laches bar all by itself, but such a move would be a piece of evidence in a larger case for prosecution laches.

                  (2) Assume that the applicant made the RCE that you propose. What is the likelihood that the examiner would run another search? After all, ex hypothesi the claims are already in a state in which the examiner feels confident that it would not be a problem if this case were pulled in an audit. Also, ex hypothesi, the case has already gone into at least one RCE, which means that there are diminishing counts if the examiner were to issue more rejections. I expect that 9 times out of 10, if one filed this RCE-for-more-searching, the examiner would just reissue the notice of allowance without any additional work being done. The incentive structure would discourage any prudent examiner from running another search.

                3. Mind you, there is nothing stopping an applicant who wants a more thorough search from engaging a professional searcher, which will likely yield better results anyway.

                4. Greg,

                  I know I would do additional search and I think that most examiners would do it too. Perhaps I’m niave.

                  And re: laches, that’s a good point and made me think of another reason: PTA. Obviously it would be unreasonable for an applicant to sacrifice PTA for additional search.

                  Still, JNG said there’s no option. I think that’s probably better said as: no acceptable option.

                5. To Greg’s/Dozens’ point, the standing best practices advice to clients is to obtain a best possible prior art search at the innovation ideation stage.

                  Mind you, clients for a variety of reasons may opt for this or may opt NOT to do so.

                6. Obviously it would be unreasonable for an applicant to sacrifice PTA for additional search.

                  Good catch. I am surprised that I did not think of that, given how much of my day is given to thinking about PTA.

            2. 3.2.1.1.2.2

              “I don’t see why you couldn’t respond to an NoA with an RCE”

              If I *thought* there was anything potentially suspect about a case that got an NoA I’d most certainly file an RCE; in fact, I’ve done this in cases when new art appeared out of the blue

              With that said, if there was some procedural or legal benefit inuring to me by asking for a second review, I’d readily take that as well. As it is, and as you said, we do have a quasi-registration system, because the Courts don’t seem to be giving the PTO any kind of deference anymore in the latter’s patentability determinations. It took the CAFC 5 years to remind D Cts that patents are also presumed to comply with § 101; yet you still see, day after day, Judges trashing an Examiner’s allowance of a case and tossing out cases summarily because: a) they don’t like patent cases and want a case off their docket; b) they have no clue what they are talking about; c) they have no respect for examination. IMO the PTO should simply stop examining for § 101 anyway, because it makes no difference what the agency says at this point, its effectively de novo review.

              1. 3.2.1.1.2.2.1

                To your last point, even before the 2019 protocol for eligibility examination, Cleveland Clinic has a claim tossed under 101 that was directly modeled on a patent office exemplary “a claim like this is patent eligible based on case law” example.

                This though reflects a bigger problem than your immediate point.

                This reflects that fact that NO MATTER what the Office does, the rampant “make up the law” Common Law writing (as opposed to mere interpretation) in the judicial branch (and one MUST blame the Supreme Court for this) has rendered the statutory law of 35 USC 101 into a Gordian Knot of contradictions.

  18. 2

    prior art is being generated at an extraordinary rate – but in repositories like arxiv.org or Google scholar

    Don’t forget Github. Open source code is almost never cited, owing to its immense complexity, difficult searchability, and general lack of documentation. But there’s definitely prior art in there, and it generally comes with evidence of its publication date. Examiners occasionally cite Stackexchange discussions for some of the implementation details that show up in claims, and many of the gems discussed in those kinds of forums are likely buried in open source software repositories as well.

    1. 2.1

      “immense complexity, difficult search-ability, and general lack of documentation”

      Thank goodness proprietary AI software doesn’t have these issues.

      1. 2.1.1

        Why in the world would ANY innovation that happens to have the attributes of “immense complexity, difficult search-ability, and general lack of documentation” dictate that innovation protection should be denied or in any way made to be the problem of the innovator?

  19. 1

    Come on. Let’s see some financial disclosures from this big corporate advocate.

    1. 1.1

      Please stop representing people like this as academics. Please represent them as people paid to advocate for the destruction of the patent system.

      Just absurd. Please add from the PR department of Google.

      1. 1.1.1

        Given Google’s tentacles and hidden subsidies its hard to know who works for who

        With that said, it is kinda telling that Ms. Chien writes a lot of consistently anti-patent slanted articles, sometimes co-authors with lawyers working with Google, and, by some weird COINCIDENCE, those papers get cited a LOT by Google in their official filings to the government, complaining, for example, about bad patent guys:

        link to justice.gov

        1. 1.1.1.1

          Thanks for supporting info JNG. I’ve watched Chien for years. There is no doubt that she is a shill pulling in money to burn down the patent system.

          I guess that would be OK if she put, “Chien, P.R. Department Google.”

          I also strongly suspect what is going on is that SV is giving money to the universities as part of the deal to buy the professors (really they should be called large corporate advocates pretending to be academics.)

          Note that I said this for years about Lemley and then an article was published supporting my assertions.

          1. 1.1.1.1.1

            And yet, there are plenty only too eager to adorn you with tinfoil hats….

    2. 1.2

      Be the change you want to see in the world, NW! Maybe if you include a disclaimer in all your posts that you have a history of accusing others of serious impairments and crimes with no evidence, Dennis will be inspired and start requiring a disclaimer in guest posts!

      1. 1.2.1

        … and what is to be YOUR disclaimer, Ben?

        1. 1.2.1.1

          Perhaps that I have a history of failing to avoid engaging with sub-bridge dwellers.

          Why are you defending NW here? Do you really stand by him when he asserts that a federal judge has a “severe personality disorder” without providing any basis for that assertion?

          1. 1.2.1.1.1

            How is pointing out that YOU don’t bother to live up to the advice that you are so eager for other to follow in any way defending Night Writer?

            Come man, think!

            Further, there is a huge difference between FEATURED writers and the open forum of commentators (especially here — in contrast for example with other blogs that employ tighter restrictions on feelings and known fallacy postings (hint: Malcolm)).

            Now, as to the infirmities or other denigrations of PUBLIC officials, I DO happen to have anecdotal confirmation from associates that have been intimately involved in the DC scene. Many of the assertions are not off base even if the comments on the public figures lack any type of court-level provision of evidentiary support.

            And mind you, even this last statement is LESS a statement of support for Night Writer as it is MORE a reflection that even though in the comment section of a loose blog, his comments while indeed not presented with evidentiary support, are nonetheless FAR more accurate than most all of the comments that YOU have been known to support.

            You want to remove a sty from someone else’s eye while the log in your own remains.

          2. 1.2.1.1.2

            Perhaps that I have a history of failing to avoid engaging with sub-bridge dwellers.

            What was that about being the change that one wants to see? Never too late to remedy this failing.

            1. 1.2.1.1.2.1

              Very well played.

              1. 1.2.1.1.2.1.1

                By the way anon, 1.2.1.1.2 is what it looks like to hold someone to their own standards.

                1. No, Ben, that is most decidedly not.

                  Have you not seen all the whining of late from Greg?

                  His “ploy” of not engaging ONLY is there because he repeatedly was embarrassed on the points of engagement. He is an inte11ectual coward.

                  That you may want to emulate such a coward should not — cannot — be viewed as any type of virtuous move.

      2. 1.2.2

        Ben, I said this about Lemley. Turned out to be true. Said this about law journal articles appearing to be directed by Google. Turned out to be true. Etc.

        The fact is the evidence is in the substance of their articles. The misrepresentations to make points are probably cause to suspect they are being paid off. And certainly indicate this is not scholarship.

        Additionally, I posted before about Chien where I have listed her outrageous misrepresentations and have posted about how it is impossible to hold an academic accountable to any ethical standard. She should be disciplined and removed from her university for all the intentional li es in her “papers.”

        And I make the same challenge to her that I have to Lemley. I will debate her with an objective moderator in public and regarding a complaint I will make to the law school that employs her regarding all her unethical conduct.

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