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.”
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 Research, Papers with Code, and conference proceedings from NIPS, KDD, ISLVRC, and many others.
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
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.
“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.
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.
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.
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.
…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.
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.
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.
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.
“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).
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.
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.
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
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.
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.
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.
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.
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.
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.
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).
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.
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.
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) 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.
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.
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.
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.
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.
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.
“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.
“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.
Methods for recognizing mustaches.
Sure, that’s why we have patents.
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.
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
“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.
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.
“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.
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.
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 to NW
+1 to AAA JJ
Quite right, both of you.
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.
[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.
“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.
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.
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?
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.
Sorry. What is BUI?
“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.
“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.
D1 is the closest prior art because EPO examiners are not using BUI.
Please, AAA JJ, what is “BUI”?
Broadest Unreasonable Interpretation
Most U.S. examiners use that as their standard.
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”.
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.
“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.
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.
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)….?
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?
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.
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.
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.
“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.
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.”
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.
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?
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.
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.