In my patent class, I just had my students act like patent-examiners and write rejections for pending patent claims. These are all real-cases that recently published and have not yet been examined. My question what should I do with their results:
- Have the students submit their prior art to the PTO under 37 CFR § 1.290 and 35 U.S.C. § 122(e)?
- Have the students send their prior art to the patent attorney who filed the cases? or
- Just sit on it and see whether the Examiner finds the same or better prior art?
Third party 122(e) Submissions:
My patent law students just did a patent-examination exercise (searching for prior art + writing rejections). These are real cases that have not yet been examined.
My question for the group — What should I do with their results.
— Dennis Crouch (@patentlyo) October 8, 2020
A crawl has been performed over two specific recent threads in which the obsess10n of my pal Shifty has been in high gear – this thread and the USPTO Fees thread (which has now shifted to ‘page 2,’ and only Shifty and I have been posting to for a few weeks now).
60 times starting September 21, 2020 at 10:40 pm, my Pal has posted. Each and every time (striking a 100% obess10n rate), his post is to me or about me.
100% of SIXTY times.
Let that alone sink in for a moment. No other poster EVER has had such adoration. If there were a cyber-stalking poster, my pal Shifty would be on it.
Diving into those sixty posts, there is a clear repetition of certain key words:
Ding: 24 (albeit, typically used in a three-set)
We: 14 plus They: 10 (the odd tactic of my pal Shifty taking on multiple personas)
Snowflake: 16 (which is a co-opted term, and simply does not fit me)
Tell: 12 (the odd tactic of purposefully confusing what a tell is as opposed to a use of a meme)
Shill: 11 (a baseless and empty label, to which my pal Shifty has never explained who would be paying me and what causes I would be ‘shilling’ for).
And the number one result:
Pure nonsense: ALL sixty posts.
As of last night at Shifty’s beddy-bye time, add seven more posts to the crawl results
– STILL at a 100% obsess10n rate.
– STILL at a 0% meaningful content rate.
There is no right answer so you can leave it up to each student, providing additional educational benefits.
There certainly are wrong answers though.
Follow up question. If a party was aware of the prosecution of claims, was aware of material art that a reasonable person under the circumstances would have thought was material to prosecution and could have submitted, should that party or their successor in interest be estopped from challenging the validity of a claim that issues based on such art or from asserting a defense to willfulness that relies on a belief that a claim was invalid based on such art?
There is no affirmative duty for your hypo for the party that merely “could have.”
Without any such duty, you cannot apply the ‘penalty’ of estoppel.
You’re suggesting that since a duty of disclosure on third parties that follow the prosecution of patent applications doesn’t exist in the statute, it should be imposed by the courts – but only on those third parties that are themselves planning to be active in the same sphere of endeavor as what’s claimed in the patent (which is why they’re following the prosecution in the first place). That duty would be imposed in the form a negative incentive, namely an estoppel against such third parties from citing such prior art in their own defense should they be sued for infringement.
I can think of only one policy reason for imposing such a duty, but I can’t think of a *good* policy reason for doing so, and I can think of many reasons not to impose such a duty, not the least of which is that it’s the job of the legislature to set IP policy. But the policy reasons against such a duty would apply even if someone were to suggest that Congress enact such a duty.
The weak reason for imposing such a duty, with the concomitant penalty for non-disclosure, is to get relevant prior art before the examiner. It’s a weak reason on many accounts, first and foremost because examiners already know how to search. Moreover, the creation of such a duty would then result in ancillary litigation during the main infringement trial, including discovery around the question of whether or not the accused infringer followed the prosecution of the patent, whether during prosecution it was aware of the prior art now being proffered in defense, and whether or not at that time the prior art was relevant to any of the claims it is now being accused of infringing, and whether it understood the relevance of that art at that time. Sounds like a big waste of the court’s time, not to mention both the plaintiff’s and defendant’s time and money. And since there’s already a duty of disclosure on the applicant, there’s a much cheaper solution: if the potential future defendant thinks this is killer prior art, it could just send the document to applicant’s counsel.
That, of course, may not be sufficient, and may even work against the potential defendant: even once IDSed by applicant’s counsel, the examiner may ignore the publication (even as she signs off saying that the publication was “considered”), and once the patent has issued, the defendant will now have to argue that the publication is actually invalidating prior art, even though the examiner “considered it”. This would also be true under the present third-party submission system, which allows the submitter to explain what each publication teaches, but not to connect the dots and say “and therefore claim 1 is anticipated” or “and therefore claim 1 is obvious”. So it’s probably best to leave decisions about whether or not to disclose a publication during prosecution in the hands of the third party, rather than impose a duty to do so.
Additionally, the third party may follow the prosecution of the patent so that it can, in good faith, design around the claims, even if it thinks some of the allowed claims are invalid in view of publications known to the third party but not cited during prosecution. Why should a duty of disclosure be imposed on it for trying to ascertain its future freedom to operate?
Moreover, imposing a duty to disclose would force that third party to tip its hand as to its future plans. That’s just dumb, and I can’t think of another area of the law where party B is required to disclose its secrets to its competitor A.
The law doesn’t require patent applicants to do searches, it only requires them to disclose what they become aware of. It’s probably best for the applicant to conduct a good search before drafting, filing and prosecuting its patent application, but that’s the applicant’s choice. This is the flip side of that: if a third party sees that its competitor has allowed claims that are invalid in view of the prior art, it shouldn’t be forced to disclose that prior art unless and until it’s necessary to do so, i.e. when it’s being threatened with litigation. Or, as the adage goes, Never correct your enemy while he’s making a mistake.
I would send the art to the attorney. I know of no attorney who would rather have less art before the examiner than more art, since the presumption of liberty is only as good as the closest art that was before the examiner. But instead of submitting the art directly to the PTO, I would give the attorney the courtesy of allowing him or her to review it first.
Sorry, I meant Presumption of Validity.
Sure you did, Professor Barnett.
Wman that is a ridiculous and patently false statement.
Sure you want your patent to be properly examined and more citations are better, but you don’t want to have to have your attorney sort through a mess of art sent in by students.
Basically it is just an expense. Plus I am trying to remember the latest case law but I seem to remember that merely having art cited as having been examined is not enough from it being used in obviousness arguments in court and I don’t think it buys you much anymore with the continuing weakening of the patent system.
Plus, what usually happens is that Ds just find equivalent art because if something is worth something and in a patent application you can bet that you can find it in other places as well.
Wman,
“I know of no attorney who would rather have less art before the examiner than more art, since the presumption of [validity] is only as good as the closest art that was before the examiner.”
Misses in two critical ways.
First, you confuse a best practice notion of having the best art (which may also include having the most detailed prior art search independent of the Office conducted) with the larger issue of meddlesome third party interference, which inexorably leads to a taint of Game of Kings in the plain fact that the larger and more well-established entities could subject competition to their moneyed efforts, while those lesser entities with disruptive innovation would be put at a disadvantage.
Second, the existence – and level – of the presumption of validity is NOT a function of art actually being physically ‘before the examiner.’
I do not know where you got that idea.
This initiative by Professor Crouch should be encouraged. Below is a Link to an EPO Press Release, explaining how it is encouraging the filing by members of the public of observations on patentability of pending patent applications, as part of its “Raising the Bar” initiative to improve the “quality” of the patents it issues.
Generally, serious competitors of the Applicant do NOT file observations on patentability, because to do so would give Applicant sight of the prior art, resulting in the issue of more robust claims and a more revocation-resistant patent. Instead, they prefer to wait for issue and then oppose because, after issue, patentee won’t be able to file a divisional or amend their way out of an invalid set of claims.
link to tpo.epo.org
Encouraged?
I say thee nay. Our Sovereign has chosen differently, and your “Euro” view on this smacks too heavily towards the benefit of the Sport of Kings established entity advantage.
You almost make we wish mooney was back, so you could waste your electrons on him.
Grow up. “Ooooh, that’s not what OUR sovereign chose…” is not only sanctimonious and whiny but it’s wrong, both descriptively and prescriptively (do you even know the difference, Mr. Paid-Shill-Who-Didn’t-Go-To-Law-School?).
There ARE third party observations in the US. If you’d read the statute, you’d know that. And if you actually practiced patent law, you might even have filed some.
And getting the best art in front of the examiner, with an analysis of its applicability to the claims, would seem to be not only a worthy policy goal, but a non-controversial policy goal, as this would increase the likelihood that the claims granted are neither too broad nor too narrow.
Non-controversial, unless, of course, one’s agenda is to obtain a patent of dubious value in order to shake down others, knowing that once procured, it will cost a defendant lots of money in the US everyone-covers-his-own-costs system.
I thought anon was a patent attorney who practiced?
I am. I am a very experienced patent attorney who has done litigation and a boatload of prosecution with all sorts of side work like claim charts, licensing, opinion work, and so forth.
I am – and HE knows better.
He just has his feelings bruised because I pushed back on his ‘Ends justify the Means” ‘feel good’ baloney down at 11.1.1 (to which, of course, he does not actually engage on the merits).
I thought anon was a patent attorney who practiced?
I cannot imagine what would have given you this impression.
Says Greg “I Use My Real Name” who has been so embarrassed by the number of times that I have had the better legal arguments that he refuses to engage and will only snipe insults from the sidelines.
Translation: “Wah, I don’t like what anon has to say.”
Cry me a river, then dry your tears and try to contribute on point.
Yes he’s a paid shill who wants to be a US lawyer some day. Most just ignore him.
Lol – Shifty, ignoring me is something that you just can’t do.
We know he must learn the definition of “most” in the English language before he can ever get in to a US law school.
Most ignore him.
The issue is not “most,” my shifty friend — clearly, I stated that YOU just cannot do that.
It’s kind of like you are sweet on me.
Always nice to get the perspective from a paid shill.
Ding Ding Ding !!! Vague Smiley Face. !!!
Just cannot avoid the tells !!!!
… and Shifty does HIS tell/meme right on schedule – and as usual, oblivious to what this tells about him
Yet another train wreck from my pal.
By the way, Shifty, this is a REPEAT train wreck that you have already engaged in on this very thread:
link to patentlyo.com
That’s twenty bucks that you just earned for me!
Ding Ding Ding !!!! “train wreck”. !!!!
Try as he might, Snowflake just can’t avoid the tells!!!!
Yet more of the SAME confusion between meme and tell as he employs his own meme…
Y
A
W
N
Duplicate comment detected; it looks as though you’ve already said that!
Lol – you are kidding, right?
You’ve only been duplicating your comments since last year.
They said you weren’t too bright.
Ding Ding Ding !!! Vague Smiley Face. !!! X 3. !!!!
They said Snowflake, try as he might, just cannot let go of the tells!!!
as usual, they were right
…and your tells..?
Hmm
Hmm
Hmm
(But go ahead — again — and tell us that you just don’t understand emoticons and because you don’t understand, then someone else is ‘vague’)
It is hilarious that you are oblivious to this.
Ding Ding Ding !!! Vague Smiley Face. !!!!
Again. !!!
You can’t make this stuff up !!!!
Your tells/memes are trotted out yet again.
Thank you for the 20 bucks.
Shall I point out to you (yet again) that there is absolutely nothing vague about an emoticon?
Your LACK of understanding does not make the emoticon vague.
What is vague is your last line of “you can’t make this stuff up”
Given that your reply is KNOWN to be off, it is unclear what point you think that you might be making with that last line.
Personally, I ignore most of his nonsense.
Now that is an outright
L
I
E
Who do you think that you are trying to f00l?
“Now that that is is an outright lie,” says the wannabe who got so confused he called himself a liar.
Lol – you are so desperately trying to get back to that one instance in which you thought that you had the upper hand with me (but did not)….?
Too funny.
And of course, this desperate attempt of yours only even more makes my point in this instant thread.
You don’t get this blogging thing at all, do you?
Say goodnight Gracie.
If you’re trying to deny you got so confused you called yourself a liar there’s a written record. Don’t make me cite to it. It never works out for you, Snowflake.
Trying (in vain) to coopt my putdowns of you has never worked for you, and your past attempts at recycling this vacuous accusation have been nullified in my past replies pointing out the context of your so-called point.
If you (yawn) want to provide your “citation,” do be sure to make it accurate and provide the context.
… maybe you should think about writing your post at some other time than right before your bedtime. As it is, your brain has shut down by that time, and this whole blogging thing passes you by.
Very good. So you’re not denying you got so confused you called yourself a liar. You only feel the need to “point out” the “context.”
You are playing the same game – referring to your own misbegotten comments without doing as I noted must be done: taking any such comments in context.
Bottom line: you continue to be wrong on your assertions.
They said the wannabe did not understand the meaning of the English word “deny.” Now we know.
Who is “they?”
Who is “we?”
What do these tells/memes of yours tell about you?
(Ka-ching)
They told us the wannabe did not know who is “we.” Did not even know who is “they.”
Your reply is gibberish. As I have suggested, you should not wait until right before your beddy-by time to write your posts. It does not work for you.
Not even they predicted the wannabe does not understand the meaning of “we.” Does not understand the meaning of “they.”
Well, your posting earlier in the day does not clear away the gibberish.
Maybe it’s just you.
Ding ding ding!!!! Vague smiley face !!!!
Even they did not predict that the boy could not let go of the tells !!!!
Ding Ding Ding !!!! Vague Smiley Face !!!
What does the tell/meme of “Ding Ding Ding” tell about you?
By the way, your continued insistence on ‘vague,’ IS a tell as well – it tells the world that you don’t understand emoticons. There is nothing ‘vague’ about the emoticon. Imputing a view that is false based solely on your own lack of understanding is also one of your tells. You do this as well when you start referring to yourself in the plural. I “get” that you might think this affectation is “charming” is some such, but it says more about you than you realize, and what it says is not good.
Yeah, I guess I don’t get this “blogging” thang. I never wanted to be a pro like you. 20 bucks a pop? Doesn’t sound like a good living, compared to practicing law (in the U. S.)
Who said anything about this being my living? All that I have done is be enterprising on YOUR obsess10n and inanity.
Hint: not just anyone and not just any type of post.
Ok, sure. It’s just for me you get paid. You get paid only for me. So who is this entity or employer or person that pays you “20 bucks a pop?” Sounds really credible. Just like all those imaginary briefs you write.
Yes, it is just you.
Do you really find that difficult to grasp?
Of course not. Who gives you “20 bucks a pop?”
Same question here too…?
Hmm, I will talk with my colleagues and see if this type of spamming should be entered into the Shifty Obsess10n Lottery.
Paid shill says what?
More vacuous accusations from my pal Shifty, who never lets facts get in the way of his tells/memes.
What does that tell about Shifty, himself?
I called out the paid shill. Who answered?
You made a false accusation and your own “call out” was itself called out.
You really do not understand how this blogging thing works, do you?
It was just a question, paid shill.
Clearly, not a paid shill, and clearly your “just a” is just
C
R
A
P
Only a paid shill would say “clearly not a paid shill,” paid shill.
Wrong again Shifty.
But let’s explore your fantasy here, who is it that you think is paying me, and what is it that you think that I am shilling?
You being vapid and vacuous is your tell.
Do you realize what this is tellIng about you?
I didn’t say you were an adequate paid shill , paid shill. Did I?
“Adequacy” has no bearing on my questions.
What does the tell of your attempted non sequitur say about you here?
It just never seems to work out for you, paid shill. AKA , Snowflake.
Your tell/meme of trying to co-opt my putdowns tells more about you than you obviously realize.
When was your last substantive post?
When was your last substantive post that was directed at me?
Ever?
(Remember: five bucks a pop here)