The following is simply the text of the Supreme Court’s 1895 decision:
Consol. Electric Light Co v. McKeesport Light Co, 159 U.S. 465 (1895) [16_S.Ct._75]
Consol. Electric Light Co v. McKeesport Light Co, 159 U.S. 465 (1895)
This was a bill in equity, filed by the Consolidated Electric Light Company against the McKeesport Light Company, to recover damages for the infringement of letters patent No. 317,[6]76, issued May 12, 1885, to the Electro-Dynamic Light Company, assignee of Sawyer and Man, for an electric light. The defendants justified under certain patents to Thomas A. Edison, particularly No. 223,898, issued January 27, 1880; denied the novelty and utility of the complainant’s patent; and averred that the same had been fraudulently and illegally procured. The real defendant was the Edison Electric Light Company, and the case involved a contest between what are known as the Sawyer and Man and the Edison systems of electric lighting.
In their application, Sawyer and Man stated that their invention related to ‘that class of electric lamps employing an incandescent conductor [e]nclosed in a transparent, hermetically sealed vessel or chamber, from which oxygen is excluded, and … more especially to the incandescing conductor, its substance, its form, and its combination with the other elements composing the lamp. Its object is to secure a cheap and effective apparatus; and our improvement consists, first, of the combination, in a lamp chamber, composed wholly of glass, as described in patent No. 205,144,’ upon which this patent was declared to be an improvement, ‘of an incandescing conductor of carbon made from a vegetable fibrous material, in contradistinction to a similar conductor made from mineral or gas carbon, and also in the form of such conductor so made from such vegetable carbon, and combined in the lighting circuit with the exhausted chamber of the lamp.’
The following drawings exhibit the substance of the invention:
The specification further stated that:
‘In the practice of our invention, we have made use of carbonized paper, and also wood carbon. We have also used such conductors or burners of various shapes, such as pieces with their lower ends secured to their respective supports, and having their upper ends united so as to form an inverted V-shaped burner. We have also used conductors of varying contours,—that is, with rectangular bends instead of curvilinear ones; but we prefer the arch shape.’
‘No especial description of making the illuminating carbon conductors, described in this specification, and making the subject-matter of this improvement, is thought necessary, as any of the ordinary methods of forming the material to be carbonized to the desired shape and size, and carbonizing it while confined in retorts in powdered carbon, substantially according to the methods in practice before the date of this improvement, may be adopted in the practice thereof by any one skilled in the arts appertaining to the making of carbons for electric lighting or for other use in the arts.’
‘An important practical advantage which is secured by the arch form of incandescing carbon is that it permits the carbon to expand and contract under the varying temperatures to which it is subjected when the electric current is turned on or off without altering the position of its fixed terminals. Thus, the necessity for a special mechanical device to compensate for the expansion and contraction which has heretofore been necessary is entirely dispensed with, and thus the lamp is materially simplified in its construction. Another advantage of the arch form is that the shadow cast by such burners is less than that produced by other forms of burners when fitted with the necessary devices to support them.’
‘Another important advantage resulting from our construction of the lamp results from the fact that the wall forming the chamber of the lamp through which the electrodes pass to the interior of the lamp is made wholly of glass, by which all danger of oxidation, leakage, or short-circuiting is avoided.’
‘The advantages resulting from the manufacture of the carbon from vegetable fibrous or textile material instead of mineral or gas carbon are many. Among them may be mentioned the convenience afforded for cutting and making the conductor in the desired form and size, the purity and equality of the carbon obtained, its susceptibility to tempering, both as to hardness and resistance, and its toughness and durability. We have used such burners in closed or hermetically sealed transparent chambers, in a vacuum, in nitrogen gas, and in hydrogen gas; but we have obtained the best results in a vacuum, or an attenuated atmosphere of nitrogen gas, the great desideratum being to exclude oxygen or other gases capable of combining with carbon at high temperatures from the incandescing chamber, as is well understood.’
The claims were as follows:
‘(1) An incandescing conductor for an electric lamp, of carbonized fibrous or textile material, and of an arch or horseshoe shape, substantially as hereinbefore set forth.’
‘(2) The combination, substantially as hereinbefore set forth, of an electric circuit and an incandescing conductor of carbonized fibrous material, included in and forming part of said circuit, and a transparent, hermetically sealed chamber, in which the conductor is inclosed.’
‘(3) The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described.’
‘(4) An incandescing electric lamp consists of the following elements in combination: First, an illuminating chamber made wholly of glass hermetically sealed, and out of which all carbon-consuming gas has been exhausted or driven; second, an electric-circuit conductor passing through the glass wall of said chamber, and hermetically sealed therein, as described; third, an illuminating conductor in said circuit, and forming part thereof within said chamber, consisting of carbon made from a fibrous or textile material, having the form of an arch or loop, substantially as described, for the purpose specified.’
The commercial Edison lamp used by the appellee, and which is illustrated below, is composed of a burner, A, made of carbonized bamboo of a peculiar quality, discovered by Mr. Edison to be highly useful for the purpose, and having a length of about 6 inches, a diameter of about 5/1000 of an inch, and an electrical resistance of upward of 100 ohms. This filament of carbon is bent into the form of a loop, and its ends are secured by good electrical and mechanical connections to two fine platinum wires, B, B. These wires pass through a glass stem, C, the glass being melted and fused upon the platinum wires. A glass globe, D, is fused to the glass stem, C. This glass globe has originally attached to it, at the point d, a glass tube, by means of which a connection is made with highly organized and refined exhausting apparatus, which produces in the globe a high vacuum, whereupon the glass tube is melted off by a flame, and the globe is closed by the fusion of the glass at the point d.
Upon a hearing in the circuit court before Mr. Justice Bradley, upon pleadings and proofs, the court held the patent to be invalid, and dismissed the bill. 40 Fed. 21. Thereupon complainant appealed to this court.
Attorneys: Leonard E. Curtis and Edmund Wetmore, for appellant; F. P. Fish, for appellee.
Opinion: Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.
In order to obtain a complete understanding of the scope of the Sawyer and Man patent, it is desirable to consider briefly the state of the art at the time the application was originally made, which was in January, 1880.
Two general forms of electric illumination had for many years been the subject of experiments more or less successful, one of which was known as the ‘arc light,’ produced by the passage of a current of electricity between the points of two carbon pencils placed end to end, and slightly separated from each other. In its passage from one point to the other through the air, the electric current took the form of an arc, and gave the name to the light. This form of light had been produced by Sir Humphry Davy as early as 1810, and, by successive improvements in the carbon pencils and in their relative adjustment to each other, had come into general use as a means of lighting streets, halls, and other large spaces; but by reason of its intensity, the uncertain and flickering character of the light, and the rapid consumption of the carbon pencils, it was wholly unfitted for domestic use. The second form of illumination is what is known as the ‘incandescent system,’ and consists generally in the passage of a current of electricity through a continuous strip or piece of refractory material, which is a conductor of electricity, but a poor conductor; in other words, a conductor offering a considerable resistance to the flow of the current through it. It was discovered early in this century that various substances might be heated to a white heat by passing a sufficiently strong current of electricity through them. The production of a light in this way does not in any manner depend upon the consumption or wearing away of the conductor, as it does in the arc light. The third system was a combination of the two others, but it never seems to have come into general use, and is unimportant in giving a history of the art.
For many years prior to 1880, experiments had been made by a large number of persons, in various countries, with a view to the production of an incandescent light which could be made available for domestic purposes, and could compete with gas in the matter of expense. Owing party to a failure to find a proper material, which should burn but not consume, partly to the difficulty of obtaining a perfect vacuum in the globe in which the light was suspended, and partly to a misapprehension of the true principle of incandescent lighting, these experiments had not been attended with success; although it had been demonstrated as early as 1845 that, whatever material was used, the conductor must be inclosed in an art-tight bulb, to prevent it from being consumed by the oxygen in the atmosphere. The chief difficulty was that the carbon burners were subject to a rapid disintegration or evaporation, which electricians assumed was due to the disrupting action of the electric current, and hence the conclusion was reached that carbon contained in itself the elements of its own destruction, and was not a suitable material for the burner of an incandescent lamp.
It is admitted that the lamp described in the Sawyer and Man patent is no longer in use, and was never a commercial success; that it does not embody the principle of high resistance with a small illuminating surface; that it does not have the filament burner of the modern incandescent lamp; that the lamp chamber is defective; and that the lamp manufactured by the complainant, and put upon the market, is substantially the Edison lamp; but it is said that, in the conductor used by Edison (a particular part of the stem of the bamboo, lying directly beneaty the siliceous cuticle, the peculiar fitness for which purpose was undoubtedly discovered by him), he made use of a fibrous or textile material covered by the patent to Sawyer and Man, and is therefore an infringer. It was admitted, however, that the third claim—for a conductor of carbonized paper—was not infringed.
The two main defenses to this patent are (1) that it is defective upon its face, in attempting to monopolize the use of all fibrous and textile materials for the purpose of electric illuminations; and (2) that Sawyer and Man were not in fact the first to discover that these were better adapted than mineral carbons to such purposes.
Is the complainant entitled to a monopoly of all fibrous and textile materials for incandescent conductors? If the patentees had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials, such as minerals, etc., and such quality or characteristic adapted them peculiarly to incandescent conductors, such claim might not be too broad. If, for instance, minerals or porcelains had always been used for a particular purpose, and a person should take out a patent for a similar article of wood, and woods generally were adapted to that purpose, the claim might not be too broad, though defendant used wood of a different kind from that of the patentee. But if woods generally were not adapted to the purpose, and yet the patentee had discovered a wood possessing certain qualities, which gave it a peculiar fitness for such purpose, it would not constitute an infringement for another to discover and use a different kind of wood, which was found to contain similar or superior qualities. The present case is an apt illustration of this principle. Sawyer and Man supposed they had discovered in carbonized paper the best material for an incandescent conductor. Instead of confining themselves to carbonized paper, as they might properly have done, and in fact did in their third claim, they made a broad claim for every fibrous or textile material, when in fact an examination of over 6,000 vegetable growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. Was everybody, then, precluded by this broad claim from making further investigation? We think not.
The injustice of so holding is manifest in view of the experiments made, and continued for several months, by Mr. Edison and his assistants, among the different species of vegetable growth, for the purpose of ascertaining the one best adapted to an incandescent conductor. Of these he found suitable for his purpose only about three species of bamboo, one species of cane from the valley of the Amazon (impossible to be procured in quantities on account of the climate), and one or two species of fibers from the agave family. Of the special bamboo, the walls of which have a thickness of about 3/8 of an inch, he used only about 20/1000 of an inch in thickness. In this portion of the bamboo the fibers are more nearly parallel, the cell walls are apparently smallest, and the pithy matter between the fibers is at its minimum. It seems that carbon filaments cannot be made of wood,—that is, exogenous vegetable growth,—because the fibers are not parallel, and the longitudinal fibers are intercepted by radial fibers. The cells composing the fibers are all so large that the resulting carbon is very porous and friable. Lamps made of this material proved of no commercial value. After trying as many as 30 or 40 different woods of exogenous growth, he gave them up as hopeless. But finally, while experimenting with a bamboo strip which formed the edge of a palm-leaf fan, cut into filaments, he obtained surprising results. After microscopic examination of the material, he dispatched a man to Japan to make arrangements for securing the bamboo in quantities. It seems that the characteristic of the bamboo which makes it particularly suitable is that the fibers run more nearly parallel than in other species of wood. Owing to this, it can be cut up into filaments having parallel fibers, running throughout their length, and producing a homogeneous carbon. There is no generic quality, however, in vegetable fibers, because they are fibrous, which adapts them to the purpose. Indeed, the fibers are rather a disadvantage. If the bamboo grew solid, without fibers, but had its peculiar cellular formation, it would be a perfect material, and incandescent lamps would last at least six times as long as at present. All vegetable fibrous growths do not have a suitable cellular structure. In some the cells are so large that they are valueless for that purpose. No exogenous, and very few endogenous, growths are suitable. The messenger whom he dispatched to different parts of Japan and China sent him about 40 different kinds of bamboo, in such quantities as to enable him to make a number of lamps, and from a test of these different species he ascertained which was best for the purpose. From this it appears very clearly that there is no such quality common to fibrous and textile substances generally as makes them suitable for an incandescent conductor, and that the bamboo which was finally pitched upon, and is now generally used, was not selected because it was of vegetable growth, but because it contained certain peculiarities in its fibrous structure which distinguished it from every other fibrous substance. The question really is whether the imperfectly successful experiments of Sawyer and Man, with carbonized paper and wood carbon, conceding all that is claimed for them, authorize them to put under tribute the results of the brilliant discoveries made by others.
It is required by Rev. St. § 4888, that the application shall contain ‘a written description of the device, and of the manner and process of making constructing, compounding, and using it in such full, clear, concise, and exact terms as to enable any person, skilled in the art or science to which it appertains or with which it is most nearly connected, to make, construct, compound, and use the same.’ The object of this is to apprise the public of what the patentee claims as his own, the courts of what they are called upon to construe, and competing manufacturers and dealers of exactly what they are bound to avoid. Grant v. Raymond, 6 Pet. 218, 247. If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.
It was said by Mr. Chief Justice Taney in Wood v. Underhill, 5 How. 1, 5, with respect to a patented compound for the purpose of making brick or tile, which did not give the relative proportions of the different ingredients: ‘But when the specification of a new composition of matter gives only the names of the substances which are to be mixed together, without stating any relative proportion, undoubtedly it would be the duty of the court to declare the patent void. And the same rule would prevail where it was apparent that the proportions were stated ambiguously and vaguely; for in such cases it would be evident, on the face of the specification, that no one could use the invention without first ascertaining, by experiment, the exact proportion of the different ingredients required to produce the result intended to be obtained. . . . And if, from the nature and character of the ingredients to be used, they are not susceptible of such exact description, the inventor is not entitled to a patent.’
So in Tyler v. Boston, 7 Wall. 327, wherein the plaintiff professed to have discovered a combination of fusel oil with the mineral and earthy oils, constituting a burning fluid, the patentee stated that the exact quantity of fusel oil which is necessary to produce the most desirable compound must be determined by experiment. And the court observed: ‘Where a patent is claimed for such a discovery, it should state the component parts of the new manufacture claimed with clearness and precision, and not leave a person attempting to use the discovery to find it out ‘by experiment.” See, also, Béné v. Jeantet, 129 U. S. 683, 9 Sup. Ct. 428; Howard v. Stove Works, 150 U. S. 164, 167, 14 Sup. Ct. 68; Schneider v. Lovell, 10 Fed. 666; Welling v. Crane, 14 Fed. 571.
Applying this principle to the patent under consideration, how would it be possible for a person to know what fibrous or textile material was adapted to the purpose of an incandescent conductor, except by the most careful and painstaking experimentation? If, as before observed, there were some general quality, running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave it a peculiar fitness for the particular purpose, the man who discovered such quality might justly be entitled to a patent; but that is not the case here. An examination of materials of this class carried on for months revealed nothing that seemed to be adapted to the purpose; and even the carbonized paper and wood carbons specified in the patent, experiments with which first suggested their incorporation therein, were found to be so inferior to the bamboo, afterwards discovered by Edison, that the complainant was forced to abandon its patent in that particular, and take up with the material discovered by its rival. Under these circumstances, to hold that one who had discovered that a certain fibrous or textile material answered the required purpose should obtain the right to exclude everybody from the whole domain of fibrous and textile materials, and thereby shut out any further efforts to discover a better specimen of that class than the patentee had employed, would be an unwarranted extension of his monopoly, and operate rather to discourage than to promote invention. If Sawyer and Man had discovered that a certain carbonized paper would answer the purpose, their claim to all carbonized paper would, perhaps, not be extravagant; but the fact that paper happens to belong to the fibrous kingdom did not invest them with sovereignty over this entire kingdom, and thereby practically limit other experimenters to the domain of minerals.
In fact, such a construction of this patent as would exclude competitors from making use of any fibrous or textile material would probably defeat itself, since, if the patent were infringed by the use of any such material, it would be anticipated by proof of the prior use of any such material. In this connection it would appear, not only that wood charcoal had been constantly used since the days of Sir Humphry Davy for arc lighting, but that in the English patent to Greener and Staite, of 1846, for an incandescent light, ‘charcoal, reduced to a state of powder,’ was one of the materials employed. So also, in the English patent of 1841 to De Moleyns, ‘a finely pulverized boxwood charcoal or plumbago’ was used for an incandescent electric lamp. Indeed, in the experiments of Sir Humphry Davy, early in the century, pieces of well-burned charcoal were heated to a vivid whiteness by the electric current, and other experiments were made which evidently contemplated the use of charcoal heated to the point of incandescence. Mr. Broadnax, the attorney who prepared the application, it seems, was also of opinion that a broad claim for vegetable carbons could not be sustained, because charcoal had been used before in incandescent lighting. There is undoubtedly a good deal of testimony tending to show that, for the past 50 or 60 years, the word ‘charcoal’ has been used in the art, not only to designate carbonized wood, but mineral or hard carbons, such as were commonly employed for the carbon pencils of arc lamps. But we think it quite evident that, in the patents and experiments above referred to, it was used in its ordinary sense of charcoal obtained from wood. The very fact of the use of such word to designate mineral carbons indicates that such carbons were believed to possess peculiar properties required for illumination, that before that had been supposed to belong to wood charcoal.
We have not found it necessary in this connection to consider the amendments that were made to the original specification, upon which so much stress was laid in the opinion of the court below, since we are all agreed that the claims of this patent, with the exception of the third, are too indefinite to be the subject of a valid monopoly.
As these suggestions are of themselves sufficient to dispose of the case adversely to the complainant, a consideration of the question of priority of invention, or rather of the extent and results of the Sawyer and Man experiments, which was so fully argued upon both sides, and passed upon by the court below, becomes unnecessary.
For the reasons above stated, the decree of the circuit court is affirmed.
The video above comes from QUIMBEE.
My pal Shifty should recognize the loops of the hyperlinks expose his antics:
link to patentlyo.com
link to patentlyo.com
He has never gotten the better of me.
And never will.
Edison certainly made significant contributions to the field of electric lighting. The bamboo filament was apparently far better than its predecessors, which made is far more suited for widespread commercial use. So, it seems to me that crediting him with inventing the light bulb (although no longer popular), is not such a big error (if at all an error).
We similarly credit the Wright Brothers with the invention of the airplane. Personally, I am quite comfortable with that. However, to be more nuanced about it, manned flying machine existed before the Wright Brothers, and their real contribution was their manner of steering the airplane using flexible wings. Our airplanes no longer use wings that flex, the way the wings of their airplane did, but instead include flats at the end of the wing. So you could say that the Wright Brothers did not invent the airplane, but someone else did. In fact at least according to some accounts (more accurately a children’s book I read as a kid about the Wright Brothers, whose veracity I have not checked into), the inspiration for the Wright Brothers was a toy flying machine that their farther bought for them as a gift when they were children. So perhaps the inventor of the first flying machine should be credited with the invention of the airplane? Perhaps. However, for may part, perhaps I just like holding on to my childhood myths, but I am quite happy with crediting the Wright Brothers with the invention of the airplane, and I am more or less comfortable with crediting Edison with the invnetion of the light bulb even if crediting him with that invention is a bit of an exaggeration.
Hmmm… It looks like today I am an angry lobster. Although that does not quite fit the intended tone of what I wrote, the goofy characters are amusing.
In case you do not know: The icon is generated based on your provided email address. If you continue to use the same email as you used today, expect to remain a lobster.
Ben,
Maybe share how one can personalize their icon.
Strangely enough, I don’t know as I haven’t gone through that process. But I suspect that you either register your email with Gravatar or WordPress.
…maybe from the DISQUS days…?
I’m not sure what you mean.
If you’re asking why I have a personalized icon despite not having registered it, it is because I’m using a rather too common fake email address that someone else must’ve registered. Gravatar’s system makes it far too easy for a third party to determine one’s genuine email address.
Not what I was asking, but your admission here of falsity is interesting.
Not sure why you think that using a fake email address is somehow necessary. Not sure why you think that this “Gravatar” thing is in play (plus, you’ve been around these parts long enough to remember the DISQUS days, so no need to be coy about that).
If you are using Gravater, just ho wmany websites are you blogging on?
“Not sure why you think that using a fake email address is somehow necessary.”
I’m not going to spell out how the emails addresses are vulernerable. Consider this a friendly public service announcement: if you value your anonymity, you’re better off not providing an email that can be associated with you on this or any gravatar utilizing website.
“Not sure why you think that this “Gravatar” thing is in play”
“If you are using Gravater”
Check out the domain that hosts your icon. Every post here involves gravatar.
Ben,
Do you really think that your online activity is ANY ‘safer’ because you use a fake email address?
You want me to spell that out for you?
You sound a lot like Malcolm in the DISQUS days when he whined about going maximum on the security setting ONLY AFTER it was shown how his (STILL identity protected) level allowed a compiled view of his posts on this blog.
IF someone wanted to determine your identity, a fake email address is NOT going to stop them.
In addition to that, you are aware that you have admitted to violating the posting rules here, right?
What other rules do you so casually disregard for your own convenience?
“Do you really think that your online activity is ANY ‘safer’ because you use a fake email address?”
Yeah, I do. Perfect is the enemy of good.
You apparently didn’t understand how gravatar works a few minutes ago, so excuse me if I’m not impressed by your incredulity. Feel free to ignore the friendly advice.
You say “perfect is the enemy of the good” as if that covers your use of falsity (in violation of the site’s posting rules) when what you fear is baseless based on what IS possible at a relative degree. NO ONE cares enough for who you are unless that person could find out, so basically your excuse for violating the rules is meaningless.
And I really don’t care how you feel about my feelings.
Anti-Patent Radical judges selected by Google, no doubt.
Good sarcasm Martin – you mentioned blaming Google but missed the other usual assertion, that the patent lost because of Obama judicial appointments. [The Justices in 1895 would have presumably been almost entirely Republican appointees.]
Meh,
The sarcasm is minor, at best. One should understand that the antipathy towards patents is NOT a new thing, historically. And that antipathy has historically ben generated by both the Courts and the entrenched business interests of the day.
It is actually more illuminating that you WANT this sarcasm to be more biting than it is.
As to the Justices, one need not presume anything. A few quick keystrokes (less then the number in your post) yields: link to supremecourt.gov
As the saying goes, “pigs get fat, but hogs get slaughtered.” Words to live by…
This Consol. Electric Light Co v. McKeesport Light Co, 159 U.S. 465 (1895) case does a great job of laying out the prior art background.
The decision took a pass on priority of invention issues and perhaps what would now we called “new matter” or possession issues re specification amendments. Instead they hold that claims 1 and 2 are “too indefinite” [overbroad under fact circumstances of insufficient common properties for such broadly generically claimed different materials] and claim 3 was not infringed.
In short, it looks to me like what courts these days could be similarly deciding under 35 USC 112 rather than 101, albeit some hint of what we would now call “preemption”?
Dennis. was not this same case touted in an easier blog by another professor as an important and insufficiently taught Sup. Ct. case, [in contrast to the oft-cited Morse telegraph reissue patent case?]
BTW, all of this became moot after the later invention of making lamp filaments from tungsten.
In short, it looks to me like what courts these days could be similarly deciding under 35 USC 112 rather than 101…
Exactly. The discussion at 159 U.S. 465, 472 demonstrates that what the Court was concerned about was what we would now call a “scope of enablement” problem.
P,S. is the “F. P. Fish, for appellee” a founder of the famous patent firm of Fish & Richardson?
I wondered the same thing, Paul. After all how many Supreme Court Advocate Fishes were there, in the small pool of patent attorneys, back in those days?
Meanwhile, in other news on the subject of “prior art background” the EPO just issued an Office Action in the parallel American Axle case. Link below.
The Examiner laments (para 4.1.4) that despite Applicant’s protestations that “the way to tune a shaft with a liner” is “common knowledge”, the claim remains so indefinite that examination of patentability still cannot get started. The Office Action nevertheless ends (para 6.1) with a standard paragraph that advises that nothing patentable can be discerned in the application as filed. Eligibility isn’t an issue though.
link to register.epo.org
Applicant has 4 months to respond. Interesting (at least for me) to see what Applicant argues next.
Thanks Max — interesting. Being unfamiliar with EPO practice, is the applicant able at this stage to amend existing and / or submit new claim/s?
Or; given the Examiner’s “nothing patentable here” ; only (additional argument / for the existing claim/s) is possible?
Thanks.
Glad you found it interesting, ProSay. In answer to your question, at the EPO it goes like this:
On the one hand, the EPO will give Applicant unlimited chances to put the case in order for allowance, provided Applicant is making strenuous good faith efforts to achieve compliance with all the patentability provisions of the EPC.
Conversely, the Rules provide that any round of amendment after the first is admissible only with the “consent” of the Examining Division. That’s a serious problem. Solution: file a divisional. That’s alarmingly expensive.
You might squeal that there is here little sign of “due process”. I might reply that the use of carrots and sticks is a strategy as old as the hills, to improve the efficiencies of negotiations.
The thing is, competent EPO counsel knows exactly what response will satisfy the hurdle “good faith”. A routine problem for we EPO representatives is that our colleagues in US law firms suppose that their concept of “good faith” trumps the one that is local to Europe., and, because of that, insist that we reply to EPO Examiners with US-style amendments and arguments that carry no weight in Europe and are seen by EPO Examining Divisions as wilfully unhelpful.
You will find even more “interesting” the further dialogue between Applicant and Examiner in this very case, now you know the ground rules. You can register with the EPO to get automatic alerts whenever a new line appears in the list of documents on the EPO file. That indeed is how I was alerted to this new Office Action.
[O]ur colleagues in US law firms suppose that their concept of “good faith” trumps the one that is local to Europe., and, because of that, insist that we reply to EPO Examiners with US-style amendments and arguments that carry no weight in Europe…
I suppose that it is possible that there exists daylight between what counts as “good faith” in Europe and in the U.S., but I am skeptical. If your U.S. colleagues urge you to use irrelevant U.S.-styled arguments in Europe, I submit that (more often than not) this reflects a fear that the U.S. patent can be tarnished for inequitable conduct if the arguments advanced in Europe diverge too significantly from those advanced in the corresponding U.S. file wrapper, rather than a misunderstanding about what qualifies as “good faith.” In other words, they are rationally choosing to advance a strategy in Europe that is objectively unlikely to succeed because the risks to the (more economically significant) U.S. asset that follow from the more EPO-appropriate strategy lack a proper risk/reward ratio.
Interesting point Greg – and one well made to emphasize that — to this day — there is no “One World Order” patent regime.
Greg, I accept your point and am sure that the fear you identify plays a significant role. The problem I had in mind occurs when a US client insists on my writing stuff to the EPO Examiner which I know that Examiner in the EPO will see as being wilfully non-responsive, stuff that no European patent attorney, qualified to practise through (tough to pass) written examination would write of their own volition. Where does the boundary come, between i) deliberately non-responsive and ii) not in good faith?
M-Webster defines “in good faith” as “in an honest and proper way”. That definition doesn’t bring us much further forward, does it?
Mind you, in recent times, the US law firms I have in mind seem to be a bit more tolerant of discrepancies between the USPRO and EPO file histories in the same patent family. There are of course many plausible reasons for that easing. Doubtless they vary, from case to case.
Many plausible reasons for this (supposed) easing?
Maybe share a few? Your unsupported supposition — no matter how polite — is basically calling Greg a
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Plausible reasons? Here are three:
1. Whether I get to issue in CN, JP, KR depends more on what I get issued by the EPO than what the USPTO issues.
2. The value of the market in Europe is rising relative to the value of the market in the USA. The reality of getting the claim to issue in Europe outweighs hypothetical and undefined adverse legal consequences if ever there were to be litigation in the USA.
3. Increasing appreciation within patent litigation circles in the USA that you cannot read the EPO file wrapper 1:1 onto the legal landscape within the USA.
How any of that amounts to a slur on Greg is quite beyond me.
How any of that amounts to a slur on Greg is quite beyond me.
Huh? Sorry, I do not understand. I do not see anything in your responses that look anything like a “slur.”
Whether I get to issue in CN, JP, KR depends more on what I get issued by the EPO than what the USPTO issues.
This is an excellent point. I find that the claim scope that I can bring to allowance in Europe is a much better starting point for CN/JP/KR prosecution than are the allowed US claims. I sometimes think that only half the value of what I am buying from my EP counsel relates to market exclusivity in Europe, and the other half is the way that my EP counsel simplify my work in east Asian prosecution.
MaxDrei,
Thank you for following up with some reasoning, but note that you finish the provision of reasoning with faulty logic as to
“How any of that amounts to a slur on Greg is quite beyond me.”
You have misapplied my comment in your “that” being actual reasoning of yours — entirely absent earlier — is not what was indicated as basically calling Greg a
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Also, this is not a ‘slur’ per se. It is a reflection that you hid behind ‘courtesy’ at the same time taking the opposite view of what Greg had said. That you did this initially with NO reasoning was the point of my comment.
Not everyone that is ‘nice’ to you is your friend.
Not everyone that is ‘mean’ to you is your enemy.
As to the reasoning that you now provide, let’s chat.
You have a logic problem with your reasoning one, confusing correlation and cause. Given the differences and the alignments between Sovereign choices (more than anything else), one would expect the outcome that you mention. This is not a true reason to support your assertion.
Your assertion of number two is interesting (if true). But merely ‘rising’ is not an actual counter to what Greg posited, as Greg’s point was on a current state (which even if we spot you the ‘rising’ portion), still dictates that your US counsel would objectively (and rationally) weigh ‘good faith’ with a thumb on the scale of the US outcome.
Your third assertion also has a logic problem, as that assertion does not support your conclusion. It has always been true that there is not a full 1:1 reading. Quite in fact, MANY of my posts to you are based on YOUR fallacies of trying to equate Euro-style Sovereign choices with US Sovereign choices. Your third assertion actually supports the points that I make against you time and again. And regardless of any such lack of 1:1 reading, the plain matter that what is in the wrappers of outside-US prosecution CAN BE taken as damaging in US cases remains unchanged.
On their face, your assertions do have plausibility. That plausibility does evaporate upon closer inspection.
In recent times, the US law firms I have in mind seem to be a bit more tolerant of discrepancies between the USPRO and EPO file histories in the same patent family.
Once again, I suppose that this is possible, but allow me to suggest an alternative explanation for the phenomena that you observe. Back when I first started practicing, the EPO was operating on such a backlog that EP examination routinely did not start until a year after the corresponding U.S. case had gone to allowance. This meant that there was no way to coordinate US and EP prosecution. The US file wrapper was already closed by the time that the EP file wrapper was first being opened.
As you are—no doubt—aware, Benoît Battistelli rather famously cleared the backlog. Now, it routinely arrives that EPO examination starts ~6 months before the US examiner picks up the corresponding case in the USPTO. Now instead of being forced to recite the same arguments in Europe that were inscribed in the US file wrapper, it is more often than not the EP counsel who are writing on a blank slate. I find myself now instructing my US outside counsel to copy a strategy forged by my EP counsel nearly as often as the other way around.
In other words, it is not really a growing tolerance for discrepancy between the two. It is just that Battistelli’s acceleration of the timing of EPO examination has made it easier to coordinate between the two, and thus avoid discrepancies and divergences.
Fits! Greg, to me that makes perfect sense and fits the facts on the ground. In many areas of prosecution at the EPO, the pace is still very leisurely, but one EPO initiative did have a big effect, namely its “Early Certainty” project, under which the search gets done soon after filing and attached to the search report is an opinion on patentability of all the claims.
That EPO Communication is called the EESR (I think of it as “easer”). And indeed, it’s a roadmap for easing prosecution world-wide (including the USA, it seems from your comment).
“As you are—no doubt—aware, Benoît Battistelli rather famously cleared the backlog. ”
Back when the IP Kat actually run an objective (and not entirely controlled by the editors) comment section, MaxDrei showed that not only was he aware of Mr. Battistelli’s actions, he would moan and criticize very loudly those actions (with comments like ‘rush to allow,’ and ‘as bad as the US’).
I will further note that it is NOT new in any sense that the Euro search report has always been a better search report than the one done for US prosecution. That MaxDrei fawns and acquiesces now to Greg while above PRIOR TO his providing any reasoning to his disagreement, he DID (no matter how ‘politely’) disagree, only proves my point about the false civility that he employs.
I much prefer a direct and honest approach, without the cloying ‘civility.’
Say what you mean – mean what you say.
In short, it looks to me like what courts these days could be similarly deciding under 35 USC 112 rather than 101, albeit some hint of what we would now call “preemption”?
As I’ve said before, you should consider that a claim to functionality absent a claim to definite structure for achieving the functionality is any/all of:
1) an indefinite scope (Nautilus v. Biosig or Gen Elec v Wabash)
2) overbroad and lacking WD over its scope (Lizardtech or Perkin’s Glue)
or 3) an abstract idea
What have you ‘said before’ in relation to the term coined by Prof. Crouch: the Vast Midle Ground?
You still seem to want to play the confused and conflated ‘whatever’ game with your comment here of “any/all.”
112 is NOT 101
101 is NOT 112
Your ‘style’ hides behind full appreciation of BOTH 101 and 112, and exemplifies the dreaded Ends justifies the Means, because at heart you simply do not properly grasp the Means.
That you are an examiner only makes the matter far worse.
As I’ve said before,… a claim to functionality absent a claim to definite structure for achieving the functionality is any/all of: 1) an indefinite scope… 2) overbroad and lacking WD over its scope… or 3) an abstract idea
Fine, but what does any of that have to do with this case? Whatever the faults of the claim that failed here, it was not a problem of functional language. “Carbonized fibrous or textile material,” and “an arch or horseshoe shape” are admirably structural designations of the invention’s essential elements. The problem here was simply that there was no plausible basis to suppose that any carbonized fibrous or textile material would work. Rather, only certain carbonized fibrous or textile materials would serve. Therefore, the claim embraced more than the inventors had ostensibly enabled.
“Functional” is merely Random’s bug-a-boo.
Do you really think that he needs a ‘tie’ to this case?
And now, Ladies and Gentleman, Snowflake will show how he’s totally not obsessed with me by not responding to this post.
Nice try at co-opting my (original) meme.
But you have the “obsess10n” factor wrong.
It is NOT that I respond to yiu – it would be the RATE of my responses that are SOLELY to you.
Fact of the matter is that I engage on all types of issues with all types of posters with cogent, meaningful, and yes, often biting — and on point — sar casm.
This is to be contrasted with your habits: in the past five or so weeks, upwards of seventy of your posts have been about or to ME at a 100% RATE with a ZERO rate of any meaningful content from you.
That you attempt to spin even this plain fact is a massive tell.
And it is not telling anything positive about you.
Most people ignore you — because they realize you have the better position?
Ahh, yes, the Queen of Denial. Is that the sort of logic you use in all those imaginary briefs you write?
I have no idea what this “imaginary briefs I write” thing is.
Sounds like you making things up out of thin air again.
And if you want to see someone steeped in denial – all that you have to do is look in the mirror. You have built your memes (tells) on denial.
No idea? When we see a post by anon we know it means “20 bucks a pop.”
Yet again, your ‘new’ tell/meme displays only that you purposefully omit context.
It is NOT merely “20 bucks a pop.”
The money that YOUR posts earn me varies on HOW your posts fit into your telling games.
Every question that I pose to you that YOU run away from and do not provide a meaningful, cogent answer to gets me 5 bucks a pop.
When you devolve into entirely tangential posts, merely to have an attempt at a ‘last answer,’ YOUR posts earn me 10 bucks a pop.
It is when YOUR posts hit an obvious desperation level of retreading worn-out memes (or, as you would put such things: tells), that YOUR posts earn me 20 bucks a pop.
These things are ENTIRELY controllable BY YOU.
It is YOUR obsess10n with me that is at point here.
I am merely enterprising on that obsess10n.
You missed one, Snowflake (aka Paid Shill). There goes your 20 bucks.
No idea how you are drawing a conclusion from any “missed one” to there goes a 20.
You are — yet again — not getting how these things have been laid out for you.
This is a YOU issue.
“You missed one, Snowflake (aka Paid Shill). There goes your 20 bucks.”
This one: link to patentlyo.com …?
How desperate are you?
FOUR misses in one post, even as you attempt to bury your odd obsess10n of me on a tangent conversation that has been idle for a month and eleven days. You (again) misuse the terms “snowflake” and “paid shill,” and your are incongruent with the whole enterprise of my earning bucks of off YOUR specific types of posts to or about me.
You do bring the chuckles.
Not sure if we should call you the Queen of Denial or “20 bucks a pop.”
QoD has zero connection with reality, while the 20 bucks a pop is directly related to your shenanigans.
Who is this “we”…?
Ok. It’s 20 bucks a pop.
And that is merely me enterprising on your obsess10n over me.
The gift that keeps on giving.
OK. It’s the Queen of Denial.
Your phrase “QoD” has zero connection with reality
(Still)
Ok. It’s 20 bucks a pop,
It is NOT merely “20 bucks a pop.”
The money that YOUR posts earn me varies on HOW your posts fit into your telling games.
Every question that I pose to you that YOU run away from and do not provide a meaningful, cogent answer to gets me 5 bucks a pop.
When you devolve into entirely tangential posts, merely to have an attempt at a ‘last answer,’ YOUR posts earn me 10 bucks a pop.
It is when YOUR posts hit an obvious desperation level of retreading worn-out memes (or, as you would put such things: tells), that YOUR posts earn me 20 bucks a pop.
These things are ENTIRELY controllable BY YOU.
It is YOUR obsess10n with me that is at point here.
I am merely enterprising on that obsess10n.
Ok. It’s Queen of Denial.
Your phrase “QoD” has zero connection with reality
(very much still)
Ok, it’s 20 bucks a pop.
link to patentlyo.com
Deliciously ironic in this particular thread, as the comment directly after the last time that you repeated this very tell of yours provides the why.
Yummy.
We think you need to find an English translator to explain what “ironic” means in the English language, 50 cents a pop. Not a machine translation. An actual native speaker.
“We think you need to”
1) who is this “We?”
2) the pluralistic you (actually singular) is in plain error as to ANY type of ‘need’ for me.
My use is spot on. Too bad for you.
If applicants can’t broadly claim classes of solutions, we’ll never have any innovation in incandescent lighting.
Ok. It’s 20 bucks a pop.
Ok. It’s 50 cents a pop.
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That ‘50 cents’ is your creation, and obtained gratis.
The ‘20 bucks’ is but one level of my enterprising on your choices of inanities.
So, thank$ and gra€ias.