Patently-O Bits and Bytes by Juvan Bonni

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19 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 1

    The Karshtedt Paper looks interesting: re-booting Graham v Deere to fit in the new world of FtF. From its Abstract:

    This Article argues that, instead, the filing date of the patent application as the default dividing line between the pre- and post-invention state of the relevant field provides a more logical fulcrum around which to organize the § 103 analysis

    For those who have never practised in a FtI jurisdiction, never had to concern themselves with the fixing of any date of conception, that statement has all the attributes of Acte Claire, indeed, a No-Brainer.

    1. 1.1

      meh, read the abstract, and it was not all that interesting.

    2. 1.2

      Thanks, Max, and anon – ouch! If if you have suggestions for making the paper more interesting I’m all ears.

      1. 1.2.1

        Dmitry, your Paper, it’s all a bit too academic for me. I will surely struggle to give you anything amounting to a suggestion.

        But being European, with US clients, I do find it interesting to observe how the USA will come to terms with FtF. Patents last for 20 years but patent law development takes even longer. The UK has been in the EPC since 1977 but even now is still transitioning from its pre-EPC national law of patents to the pan-European patent law dating from 1973.

        And now, suddenly, the UK has committed BREXIT, which will set it back years. Hey Ho.

        1. 1.2.1.1

          Interesting! My comment was more to the anon, not to you.

      2. 1.2.2

        I read the abstract, found it confusing, and thought that I had best read the rest of the article so that I could understand the argument being advances. No I am about 60% of the way through, and I am still confused about the fundamental distinction that the paper appears to be trying to draw. As long as you are taking questions, perhaps you can help me on this one.

        The paper attempts to draw a distinction between Graham‘s approach, and a second approach that you believe will be more useful.
        The Graham approach is characterized thus:

        Graham’s lasting contribution was to suggest that the § 103 inquiry is to be divided into two stages…[: (1)] as an initial matter, the PTO or a court should look to pre-patent publications and other materials in the public domain…[; (2)] should the parties introduce additional evidence… such as commercial success of the patented product or failure of others to come up with the claimed invention, decision-makers would need to continue the analysis to determine the relevance and weight of this evidence before making a final judgment on validity.

        The putatively new approach is characterized thus:

        This Article argues that, instead, the filing date of the patent application as the default dividing line between the pre- and post-invention state of the relevant field provides a more logical fulcrum around which to organize the § 103 analysis. Accordingly, obviousness evidence should be classified based on whether it came into existence independently of the patent and generally prior to filing (ex ante) or, instead, whether it appeared in response to the invention or during its further, post-filing, development (ex post).

        How are these two approaches different? The first approach says that one should classify evidence according to whether it arose before the invention, or after the invention. The second approach says that one should classify evidence according to whether it arose before the invention, or after the invention. These look for all the world as just two different ways to describe the same thing. Where should I be noticing the difference?

        1. 1.2.2.1

          Bother. It looks like I failed to close a blockquote there. That should have read:

          The Graham approach is characterized thus:

          Graham’s lasting contribution was to suggest that the § 103 inquiry is to be divided into two stages…[: (1)] as an initial matter, the PTO or a court should look to pre-patent publications and other materials in the public domain…[; (2)] should the parties introduce additional evidence… such as commercial success of the patented product or failure of others to come up with the claimed invention, decision-makers would need to continue the analysis to determine the relevance and weight of this evidence before making a final judgment on validity.

          The putatively new approach is characterized thus:

          This Article argues that, instead, the filing date of the patent application as the default dividing line between the pre- and post-invention state of the relevant field provides a more logical fulcrum around which to organize the § 103 analysis. Accordingly, obviousness evidence should be classified based on whether it came into existence independently of the patent and generally prior to filing (ex ante) or, instead, whether it appeared in response to the invention or during its further, post-filing, development (ex post).

          How are these two approaches different? The first approach says that one should classify evidence according to whether it arose before the invention, or after the invention. The second approach says that one should classify evidence according to whether it arose before the invention, or after the invention. These look for all the world as just two different ways to describe the same thing. Where should I be noticing the difference?

          1. 1.2.2.1.1

            As to the “date of invention”, the before and the after, I see an important distinction between FtI and FtF. In both FtI and FtF, one drafts the patent application in full knowledge of what the inventor supposes is the invention. Nevertheless, under FtF, but NOT under FtI, one is doing that drafting on a date anterior to what counts legally as the date of invention.

            Accordingly, under FtF, there is no excuse for inadequate drafting, inadequate description, inaccurate definition of the contribution to the art. With full knowledge of the invention and the prior art, one first drafts and only then decides (by choosing a PTO filing date) what shall be the “date of invention” that will be decisive for the resolution of the obviousness issue.

            Is that difference significant, Prof. Karshtedt?

            1. 1.2.2.1.1.1

              I’ll need to give this question some thought but it seems to be that FtF would in general lead to more rushed applications.

              1. 1.2.2.1.1.1.1

                I agree with you here Dmitry, the pressure of FTF is in the opposite direction that MaxDrei indicates.

                This though is not surprising, given MaxDrei’s long running position as EP Uber Alles shill.

              2. 1.2.2.1.1.1.2

                You might well think so, Dmitry. And yes, dilatoriness in filing under FtF will likely have disastrous consequences. But that is also true of FtI, is it not?

                The thing about FtF is that premature filing, before the invention is adequately defined or enabled, can also have seriously adverse consequences for the inventor and patent applicant.

                Generally speaking, it is indeed when things are done in a rush that mistakes happen. But when the over-riding objective of any patent system is to promote the progress, the aim of the legislator ought to be to get those PTO A-publications published at the earliest achievable date, don’t you agree?

                1. But that is also true of FtI, is it not?

                  That’s an awfully silly question, given the well-understood notion that the critical date (if documented) provides an ample cushion to write the application well.

                  So silly in fact, that I cannot take your reply here as anything but facetious.

                  hen the over-riding objective of any patent system is to promote the progress, the aim of the legislator ought to be to get those PTO A-publications published at the earliest achievable date,

                  NO.

                  Not at all.

                  The over-riding objective is BEST met when the exchange is viewed as an even exchange, and not one merely for the State’s benefit.

                  This is NOT a new concept that you are ‘just now’ being exposed to MaxDrei, as I am more than positive that I have lectured you previously many times now on the US Quid Pro Quo.

          2. 1.2.2.1.2

            Graham’s approach is to characterize evidence based on where it’s prior art (primary) or not (secondary). My approach is to characterize it based on time.

            1. 1.2.2.1.2.1

              That may be, Professor, but it seems to me a distinction without a difference (I shall have to read your Paper). After all, it is “time” nothing more, nothing less, is it not, that settles whether any piece of Graham evidence is primary or secondary.

              1. 1.2.2.1.2.1.1

                No because failure of others precedes filing but is characterized as secondary.

            2. 1.2.2.1.2.2

              But is it all that different? As long as the presentation of evidence is properly handled (I do provide that such is not always the case, with a tendency to view the secondary factors has having to ‘move the needle’ or otherwise only ‘valid’ in close calls), but if ALL evidence is adjudged on accord with a full evaluation, is there a driver to set out a different way of categorizing the items?

              One problem that I do see (and would likely had been screamed at out load by Malcom Mooney, were he still with us), is that a notion of “time after” would be looked at as entirely improper, notwithstanding that any such ‘time after’ is in essence still AIMED AT the time of filing in view of any potential prior art item timing (or even, a lack of such prior art items). In no sense then, is any ‘real” AFTER thing (as in, a material item only forthcoming after the subject matter was filed) being a dispositive item in and of itself. All of the ‘later items’ reflect back to a proper critical time, even if only realized later.

              1. 1.2.2.1.2.2.1

                I do not follow. I explain in the paper that evidence responding to the invention (like commercial success) is qualitatively different from evidence prior to it (like failure of others). Therefore, these two types of evidence belong in different categories. As the paper shows, placing evidence like failure of others into the secondary category often leads to its devaluation.

                1. By focusing on time, you provide an implicit justification to those that are upset WITH time aspects — even though at the end of the day, the “truth for which the item is brought to bear upon” IS of the item AT the single time of filing.

                  A problem (by the courts and perhaps to a limited extent, the Office) of not properly following a procedural context of fully reweighing a totality of the evidence at the procedural point of introducing secondary indicators is not “better addressed” by changing the structure of the indicators, but instead is by simply and more directly enforcing what the existing structure is meant to enforce.

                  You have an academic solution looking for a problem, but that does not actually address the source of that problem and is merely a bandaid, and thus, is likely to be corrupted by those driving the current problem.

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