Protecting Real Innovations by Improving Patent Quality

Intellectual Property legislation and oversight in the Senate goes through the Intellectual Property Subcommittee of the Judiciary Committee.  On June 22, the Subcommittee heard testimony on the topic of ongoing problems with “low quality patents.”

Written testimony:

Highlighted issues:

  1. It is tough to figure out the status of a patent and identity of the patent owners.
  2. Discussion of the Theranos-Holmes problem (patents issued and asserted even after criminal fraud indictment) — see Contreras Testimony.  But generally, the problem is not seen as fraud but low-quality patents.
  3. Contreras — there should be more focus on reduction to practice at the examination stage.

https://www.judiciary.senate.gov/meetings/protecting-real-innovations-by-improving-patent-quality

 

153 thoughts on “Protecting Real Innovations by Improving Patent Quality

  1. 11

    One of the academic proposals for patent quality that this Senate Committee is apparently actually considering is “gold plated patents” issued with immunity to patent suit defenses. This is an academic proposal with many defects, which I recall being first proposed several years ago by Prof. Lemley.
    Normal PTO patent examiners do not have the search tools, legal training or experience for many patent litigation validity issues, including on-sale and prior use bars, declaration evaluations, document authentications, several 112 issues, etc. Nor is a purely ex parte proceeding by non-attorneys with no or very limited discovery appropriate for deciding in advance these and other patent litigation issues. If its search and examination fees were set high enough even for mere patent and publication searches at litigation levels it would rarely be used. Especially since predicting in advance what patents will be widely infringed by others years later, rather than obsolete or not infringed, is difficult.

    1. 11.1

      Not even to ask if such proposed sweeping administrative proceedings decisions usurping normally Article III judicial decisions, not even conducted by APJs, would be compatible with the recent Supreme Court decision in US v. Arthrex?

      1. 11.1.1

        Did legislative details (of which I have not seen) include aspects that retroactively affect court (Article III) or executive branch adjudicatory functions?

      2. 11.1.2

        BTW, “the Theranos-Holmes problem” was really the huge amount of money lost by the investors in this venture. What evidence is being offered for the implication that their numerous patent applications and patents lead to those bad investments [rather than all the PR and puffery]? Also, there seems to be underlying here the baseless lay myth that the PTO [not just the FDA] has some kind of legal responsibility or capability for examining medical devices for medical efficacy.

        1. 11.1.2.1

          I do not think that it is a question of “efficacy” as much as it is a question of did the asserted patent actually have had possession of that which is being asserted at the time of filing (and thus the patent is being used to cover whatever it is that MAY have a desired efficacy — read that as a real world product on the market.

          It is important that we all keep in mind what a patent is and what a patent is not: it is a negative right; it is not a positive right to actually MAKE any product that itself may have efficacy.

    2. 11.2

      Mark Lemley the man who dismantled the US patent system with Silicon Valley money.

      1. 11.2.1

        It is a little chilling to recognize just how long the “patents are bad” drumbeat of propaganda has been allowed to foster itself (generally AND through academia).

        1. 11.2.1.1

          If you look at what Lemley has done to academia, then I think it is more so. He has helped a whole bunch of practicing attorneys become professors at universities writing papers with them and I’d wager helping the universities get money from SV in return for hiring/promoting anti-patent faculty.

  2. 10

    I can’t believe this nonsense of prophetic examples being attempted to be pushed into the CS/EE/mechanical fields.

    Try actually looking at how people in these fields work and the way they think.

    Textbooks say that functional language is meant to capture known solutions.

    We know all those solutions. We can list literally 10’s of thousands of different ways to solve the same problem and are only interested in what is new.

    Y U C K ! The ignorant mob is at the doors at again (I hear the Tarantula trying to tear down the walls of intellectual integrity.)

    1. 10.1

      The ignorance from these 112 arguments is just stunning. We have people that couldn’t understand a Turing Machine if their life depended on it trying to tell us how a POSIT thinks about CS/EE/mechanical inventions.

      Just absurd. Defund the CAFC.

      1. 10.1.1

        “Defund the CAFC.”

        Now that’s one defunding plenty of stakeholders can get behind.

    2. 10.2

      I do not understand the uproar here, over what is called “prophetic” examples. Comment please.

      Since the dawn of patent time, Applicants and their drafters have been creative in writing “Examples” for inclusion in their patent application specifications. Understood in the courts of England, again since the dawn of patent time, is that Applicant thereby takes a calculated risk in making such a delivery of an apparently enabling disclosure that is commensurate with the full width of the claim.

      What else should an ordinary Applicant do though, when there is not enough time (or money) to perform worked examples all over the scope of the claim, even before generating a filing date at the PTO? Perhaps rely on the (again, as old as the hills) line of case law that decrees that “one way is enough”?

      So, either the Examples turn out in time to “work” or they don’t. If they do, enablement is not in question. If they don’t, you’re going to have a problem with enablement.

      Which is one reason why the PTO, ex Parte, is ill-equipped to assess the “quality” of any given patent application. Full-blown disputed, inter Partes proceedings are needed.

      Tell that to the concerned senators, somebody, please.

      1. 10.2.1

        Its not the concerned senators that need to be told not to include things that they have not yet done.

        You seem to want to make light of a practice of claiming more than invented with this thin reed of “oh well, if it does not actually work, I may have an enablement issue”

        Are your inventors required to take an oath?

        Also – I find your response (here) to be more than a bit disingenuous, given Greg’s responses to you…

        see at least link to patentlyo.com

        … concerning mischaracterization of future items as items that HAVE been completed.

        This is not a small ‘oopsie.’

  3. 9

    This hearing ends up beind held the same week as a Federal Circuit panel in Amgen v. Sanofi encourages the use of prophetic examples to enable claims…

    1. 9.1

      To be fair, it was only Judge Lourie’s concurrence, not a “panel” of the CAFC. Also what is wrong with prophetic examples?

      1. 9.1.1

        It was the same panel that decided Amgen and the opinion was for three judges. Nothing wrong with prophetic examples – just some tension between the opinion and the testimony discussed in this post.

        1. 9.1.1.1

          Here (and elsewhere), the Big Pharma shill Greg is ‘all of a sudden’ NOT concerned with 112 issues of which Pharma routinely partakes…

          No one could see that coming.

      2. 9.1.2

        Greg, as you are in the business of “prophetic” examples, do me a favour, will you. I do understand that Applicant uses them at their own risk: if they turn out to be inoperative, there might be an enablement problem. But how is the USPTO supposed to check out enablement and then issue a patent that in the courts enjoys a high presumption of validity precisely because its content has been rigorously examined for compliance with all the conditions of patentability?

        I mean, what is to stop an unscrupulous non-American Applicant getting the USPTO to issue problematic claims by the skilful use of plenty of “prophetic” examples? Or, in the context of low quality patents, is this just not a problem?

        1. 9.1.2.1

          if they turn out to be inoperative

          MaxDrei, do you mean like so much of the Big Pharma wash-outs during FDA examination that shows a lack of possession of utility (because that utility “turns out” not to be there)?

          Does not this incriminate most all Pharma apps that do such, given that patent law requires possession AT the time of filing?

          Cue the case law quote on “we do not give patents for study plans”…

          1. 9.1.2.1.1

            The “utility” required to secure FDA approval is not the same as any utility needed for patentability.

            I would suggest that the problem of “low quality” patents which is troubling the senators is less pressing in the field of pharmaceuticals than it is in, say, do it on the internet-type claims.

            1. 9.1.2.1.1.1

              The “utility” IS the same as claimed.

              Just because the FDA is testing for something (putatively under strict standards) does NOT change what claims are intended to cover.

              Venture down your path and you end up squarely with any FDA approved Pharma item NOT being what is presented in patents asserted to cover those products.

              You really do NOT want to go there, now do you?

              1. 9.1.2.1.1.1.1

                Anon – no.

                The “utility” of a molecule does not rest solely on its usefulness as a human pharmaceutical.

                Novel, nonobviousness molecules are patentable in the U.S. regardless of future success or failure in a clinical trial. These same molecules may remain useful after a clinical failure for other purposes or even other indications in humans.

                Sure, certain methods of treatment claims should remain unpatentable if the method of treatment doesn’t work – but that’s different than the composition claim.

                1. Nine times out of ten, the following is simply NOT true:

                  These same molecules may remain useful after a clinical failure for other purposes or even other indications in humans.

                  And certainly not true for the applications as filed.

                  Pharma gets a HUGE pass because of “human health.”

                2. Novel non obvious molecules are NOT patentable merely because a molecule is novel and non obvious.

                  If your application as filed is aimed for non-human utility — that is one thing. But clearly we both know that we are not talking about patents aimed at non-human Pharma inventions.

                  As I stated: Venture down your path and you end up squarely with any FDA approved Pharma item NOT being what is presented in patents asserted to cover those products.

        2. 9.1.2.2

          The phrase “prophetic example” covers a lot of territory. The value of any given prophetic example is very context specific.

          Imagine in scenario (1) that I discover a new technique in organic synthesis that makes it possible to synthesize compounds that have never before been made. I make a few such compounds and show that they are effective antidiuretics. I disclose these compounds, the exact synthesis schema I used to make them, and the test data confirming their utility as antidiuretics. I also disclose (in the future tense) synthesis schema for other specific compounds that I have not reduced to actual practice.

          Here, one of skill should presume that the prophetic examples will work in the same manner as the bona fide examples. The prophetic examples constitute written description support that entitle me to claim the prophetic species. An examiner who objects to the prophetic species is being unreasonable, because the schema I am describing prophetically are just variations on a theme that I have shown empirically to work as claimed.

          In scenario (2), my entire disclosure is prophetic. I do not reduce a single species to actual practice. In that case, an examiner the examiner is quite justified to call enablement into question. Under In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977), the examiner would be completely justified in rejecting the claims for lack of enablement unless and until the applicant actually runs the experiments whose procedures are described prophetically, and shows the data in a Rule 132 declaration (i.e., under penalty of perjury). Of course, if the applicant does run the experiment post-filing and it works as the applicant has prophesied, that means that the application is enabled as of its filing date, because the results of the experiment are inherent in the description of the experimental procedure.

          In other words, some prophetic examples are worth more than others in the enablement analysis. An examiner must simply use good sense and scientific judgment in deciding how much credibility to accord to any given prophetic example.

          1. 9.1.2.2.1

            Thanks Greg. As I said, this is not my field. So I read with some surprise about your care to distinguish prophetic examples from worked examples by using for them the future tense. I hadn’t realised that. I had supposed that all examples are presented in the same tense, regardless whether their data comes out of a lab or out of the head of a researcher.

            So what if the drafter includes lots of Examples but eschews the future tense. I had supposed that this was routine, endemic (at least, outside the USA) since more or less the dawn of pharma patent time. In such a case, when there is no need to call for a Rule 132 Declaration, what does the Examiner do, other than issue the patent, with all the consequences that follow?

            But as I just wrote in another blog, the problem of “low quality patents” is certainly more pressing outside the pharma space than inside it, so in a nutshell, who cares about whether the examples are prophetic or not?

            1. 9.1.2.2.1.1

              It is super important (at least in the U.S.) that prophetic examples be in the present or future tense, while actual reductions to practice should be described in the past tense. To use the past tense for a prophetic example is inequitable conduct, because it is considered a representation to the USPTO that one had made an actual reduction to practice. Apotex v. UCB, 763 F.3d 1354, 1359 (Fed. Cir. 2014).

            2. 9.1.2.2.1.2

              If the examiner issues a patent (in other words, concluding that the claims are properly enabled) because the applicant described prophetic examples in the past tense, that granted patent will be unenforceable for inequitable conduct.

            3. 9.1.2.2.1.3

              MaxDrei –
              In my practice, we only include prophetic examples that are actual planned experiments, and we only include them so that the data can easily be brought in at a later date. Often the one year post-provisional is not long enough for clinical trial or long-term animal data to be available after a molecule is invented.

              1. 9.1.2.2.1.3.1

                So a question (which I know the answer to):

                Why don’t you wait until you actually know that you possess the invention?

          2. 9.1.2.2.2

            lol – song and dance when a Pharma ‘trick’ wanders into the spotlight…

            As I said, this is not my field

            funny then how you jump to defend it and want the focus switched to non-Pharma, eh?

  4. 8

    I worked in the private sector for 30 years. I now work at the USPTO. Anyone on this thread who says the Office is run by hacks is wrong. The management team is incredible: hard working, thoughtful, engaged daily in every issue discussed within the patent bar, in the courts, in Congress, and in the IP community. Anyone who criticizes USPTO examiners for being slothful incompetents has likely never met one. The vast majority of these professionals take their jobs seriously. They understand the implications of their decisions on individuals, on organizations, and on nations. They work directly with those who submit applications through e-mail and personal, one-on-one discussions over the phone. The amount of highly technical prior art that exists in the world in dozens of foreign languages is incomprehensible, and they have to find all of it. That doesn’t happen with a Google search. Moreover, the examiners’ names are on the patents they approve. That is a big deal, and says a lot about examiner accountability. For those of you who are intent on trying to degrade or destroy one of our great institutions, please stop. We are incredibly fortunate to have such dedicated civil servants (and political appointees) doing what they think is best for inventors, entrepreneurs, for our country, and for billions of people who benefit from our IP system in every nation.

    1. 8.1

      I’d say 80 percent aren’t too far from your characterization.

      1. 8.1.1

        Want to improve quality? Go back to TSM and dump 101. 101 consumes a lot of wasteful time and TSM is what the standard should be and it is something that can be QR’ed.

        1. 8.1.1.1

          “Want to improve quality? Go back to TSM and dump 101.”

          Because when people think 2006 patents, they think quality!

          1. 8.1.1.1.1

            Mr. Strawman Ben, do you think 2006 patents were of a lower quality than 2021 patents?

            I think there was a lot of ground breaking technology happening from 1995-2005.

            1. 8.1.1.1.1.1

              The quality dropped because of the creation of PTAB. It took the pressure off the PTO to issue high quality patents because the lower bar will be disposed of by the PTAB. Plus the PTAB now needs something to do, so let’s keep full employment at the agency. It’s public choice theory right in front of everyone’s nose. Can’t understand how the smart set has any difficulty see it.

              1. 8.1.1.1.1.1.1

                smh…

                enabled by a captured Congress, who did not bother having any type of feedback or closed-loop mechanism (while still claiming ‘This improves quality’) from the post grant left hand taking away what the examining right hand gives.

                You are absolutely correct in that it is the Office that captures fees from both ends of this arrangement.

                Funny too, how Greg “I Use My Real Name” DeLassus was always so big in the Oil States discussions to emphasize that (the full combined term of) Public Franchise was a form of personal property, but simply refused to venture into any deeper aspects of what such a “Franchise” structure might entail (for example, duties of a FranchisOR to a FranchisEE).

            2. 8.1.1.1.1.2

              “do you think 2006 patents were of a lower quality than 2021 patents?”

              On average, yes.

              I suspect that if TSM had never been invented by the CAFC, and a looser obviousness standard had ruled in the late 90s and early 00s, we never would have had Alice.

        2. 8.1.1.2

          NW, how do you propose to make TSM mandatory without directly violating KSR?

          1. 8.1.1.2.1

            It is a good question Paul.

            I think what the PTO could do is demand the examiners find a TSM for rejection and then if they can’t find a TSM, use as a fallback KSR. The examiner gets docked if there is a TSM and KSR was used. The examiner gets a docked if they allow and there is a TSM.

            What I know is that TSM is something that can be QR’ed whereas KSR is almost impossible to QR.

            Anyway, the key is that TSM is something that can be QR’ed and something that can be outsourced. KSR is mushy nonsense.

            1. 8.1.1.2.1.1

              How is this to be implemented? Will only a small number of actions be reviewed as is the current practice, or will you be increasing fees to more thoroughly review examiner work product? For what it’s worth, I’d applaud a fee increase that meaningfully increased review of work product, but I doubt your colleagues would.

              1. 8.1.1.2.1.1.1

                Will only a small number of actions be reviewed as is the current practice,

                Hmm seems an interesting ‘thread’ to tug on… (a la SAWS)

                Do applicants currently “pay for” such a delightful choice, and how (exactly) is that “small number” chosen?

                Are these deliberations in writing (you know, in order to comply with 37 cfr 1.2)?

    2. 8.2

      There must be two USPTOs.

      1. 8.2.1

        That was my response to InventTheFuture.

      1. 8.3.1

        Seems so. Everyone involved in that case is failing upwards lol. You know, except for the applicant who is paying.

    3. 8.4

      “The management team is incredible: hard working, thoughtful, engaged daily in every issue discussed within the patent bar, in the courts, in Congress, and in the IP community.”

      They can be perfectly charming and dedicated to the tasks that interest them, and still be hacks, if they carefully choose to avoid looking at the broken core of the PTO: the count system.

      To be fair, the most recent management did look at the count system, and they apparently liked what they saw. They worked hard to pile up absurdities to buttress the count system for the next 50 years of examiner and applicant misery.

      1. 8.4.1

        Let look at management’s recent work product.

        One of absurdities they’re duct-taping to the old count system is how to calculate the expectancy time from a mix of technologies. They decided to average technological difficulties to determine expectancy times.

        Hard technology + Easy technology = Medium difficulty Technology.

        That is simply ridiculous. Examining a hard technology does not become easier when you mix a little of an easy technology into it. This is their work product, it is bad, and they should be judged for producing bad policy.

        1. 8.4.1.1

          Each case should be assigned its own expectancy based on, inter alia, 1) the length of the application; 2) the number of claims; 3) the number of references (and the length of those references) that must be searched based on the classification of the application (some of remember that being called “the mandatory search”); and 4) the average IDS(es) submitted in that art. The PTO has the data on all of these factors.

          That wouldn’t be perfect, but it would more accurately reflect the amount of time it takes to read the application, search the application, read the most pertinent references, and write an OA that addresses the claims, better than the current count system (examiner PAP).

          1. 8.4.1.1.1

            That sound likely to be an improvement. It certainly sounds like a good faith effort at improvement.

            But saying “semiconductors + rubber duckies” takes less time to examine than just “semiconductors” is plain-as-day indefensibly wrong. That is what our “incredible: hard working, thoughtful, engaged” management has embraced.

            1. 8.4.1.1.1.1

              The vast majority of the “managers” at the PTO got their jobs by cranking out production. That’s all they know. How to work the count system. I’ve dealt with a few that were hard working, thoughtful, and engaged. But they are a relatively small minority of the useless GS-15 class.

              1. 8.4.1.1.1.1.1

                “The vast majority of the “managers” at the PTO got their jobs by cranking out production. That’s all they know. How to work the count system.”

                This is truth. But it’s also a result of this count system factory style setup that mgmt has in place, so, working as intended I guess.

                1. Pure B$

                  Many types of industries have “widget factory” mentalities and do NOT suffer from the conditions at the USPTO.

                  Oh wait, you don’t have experience out in the real world to know that.

                2. “Many types of industries have “widget factory” mentalities”

                  Uh yeah but many industries are widget factories. In which case that mentality probably wouldn’t plague that industry with the very specialized “peculiar issues” that “plague” patents a bit.

                  “Oh wait, you don’t have experience out in the real world to know that.”

                  You keep saying that but I have 10 yrs exp working outside the office. It’s just factually incorrect.

                3. You missed the point of being widget factories, as even those do not suffer from the (excuse) that you want to offer for the Office.

                  You must have had some seriously sheltered position in that decade of “real world” experience (or have been so mind-F’ed by your Office experience)….

                4. ” even those do not suffer from the (excuse)”

                  Nobody suffers from excuses anon, not those industries and not the office.

          2. 8.4.1.1.2

            “and write an OA that addresses the claims”

            Toss the length of the OA that ultimately results into the mix and you’re getting closer to what needs doin.

            1. 8.4.1.1.2.1

              Unfortunately too many examiners mistake the length (quantity) for the quality of the OA. I frequently receive OA’s with a page and a half of form paragraphs about how terms will invoke 112(f) and then never state that any of the claim terms invoke 112(f). What is the point of that? Just making the OA longer to make it look like it’s better “quality”?

              Get.To.The.Point.

              With all the automation tools out there why isn’t there a better OA writing program? Why can’t the PTO have an OA writing program that inserts claim charts for the claims? So all the examiner has to do is fill in the right side of the claim chart with the cites to the reference(s)? Just looking at the forms on the PTO website that they expect us practitioners to fill out makes me say, “why do all of these suxx so much?” Why do all the tools, for examiners and applicants, that the PTO provides suxx so much?

              Maybe you examiners need to start agitating as well.

              1. 8.4.1.1.2.1.1

                why isn’t there a better OA writing program?

                …because the Office would not allow a patent on it….?
                (too close to Night Writer’s example of what judges do, perhaps)

              2. 8.4.1.1.2.1.2

                “I frequently receive OA’s with a page and a half of form paragraphs about how terms will invoke 112(f) and then never state that any of the claim terms invoke 112(f). What is the point of that?”

                I think the point may be to follow training. Awhile back there was some 112f training about some new form paragraphs, and I believe one long paragraph in particular was basically just a reminder for applicants that 112f existed. I guess the OPLA folks were looking for something to do after they perfected the clarity of MPEP2181.

                1. All of the form paragraphs that just contain cut and paste sections of the MPEP need to be edited to, “See MPEP…”

                  I don’t need the MPEP in the OA.

                  At least 50% of what I see in OA’s could be deleted.

                2. “Follow training” — in a mindless and unheeding manner — should be penalized and not used as an excuse.

              3. 8.4.1.1.2.1.3

                “Unfortunately too many examiners mistake the length (quantity) for the quality of the OA.”

                They make us write it in this long ass fashion. I could write most rejections in like 4 lines for each claim and it would suffice for 95%+ of the people reading my actions. That last 5% of attorneys that aren’t really big in exp in my area tho they would perhaps be left behind a bit.

                “What is the point of that?”

                Never seen it myself.

                “With all the automation tools out there why isn’t there a better OA writing program?”

                Currently the office has what it likes I do believe. There actually are ways to do some overall setup of the OAs just having the sections setup in a template, but that doesn’t much help all that much overall in my experience. The part of writing OAs up that takes so long is usually a. finding all the citations and filling them in one at a time, and b. setting up 103’s perfectly and c. just finding facts from the refs (maybe you could call this separate but whichever). Esp with the refs getting longer and more complex, on occasion more vague, or maybe not vague, hard to tell sometimes (as we saw with your example you posted the other day where you had 2x embs setting forth substrates, implicitly being single crystal and glass respectively, and then another emb just after those embs where they just go ahead and say use any suitable substrate, are they referring to the two previous examples in that context, hmmmm, hard to say, and does the disclosure of Si subs in general necessarily disclose the three major types of amorph/poly/single, or at the least the biggie single, to one of ordinary skill reading such ref, hmmmm, hard to say).

                “Why can’t the PTO have an OA writing program that inserts claim charts for the claims?”

                Would be nice, but that’s not the biggest issue in writing OAs as I noted above.

                “Just looking at the forms on the PTO website that they expect us practitioners to fill out makes me say, “why do all of these suxx so much?” Why do all the tools, for examiners and applicants, that the PTO provides suxx so much?”

                Tbh I would presume that they are trying to do 2 things. A. use the writing of the OA to force the examiner to consider the claim’s language to the maximum extent possible (a sort of quality control that does exist and does sometimes work), B. make it be encouraged for the examiners to explain their position in the rejection.

      2. 8.4.2

        and where was your union protection during this…?

        (rhetorical, eh 6?)

        1. 8.4.2.1

          Not even rhetorical, they were in the little closet that serves as their office lol.

      3. 8.4.3

        “To be fair, the most recent management did look at the count system, and they apparently liked what they saw. They worked hard to pile up absurdities to buttress the count system for the next 50 years of examiner and applicant misery.”

        Hilarious and true.

        1. 8.4.3.1

          … and as noted throughout, ‘your side’ of that Union was right there joining in…..

          1. 8.4.3.1.1

            Not sure what you’re referring to. Pretty sure that the union has been pro more hours for longer than I’ve been around the office.

            1. 8.4.3.1.1.1

              Referring to the fact that your union is pretty much worthless for the most important aspect of making sure examiner’s job metrics match up with reality (and that notion of yours of what that person on the straight may ‘feel’ that a quality job was actually done).

              You just can’t have it both ways, 6. You have made it a point that the union has its hands tied and IS worthless, but then you cannot have it that the union provides value to its members, the examiners (wanting more token hours or not).

  5. 7

    Can anyone actually quantify what they mean by “low quality”?
    From the comments, I’d say that most are viewing it like the SCOTUS’ view on ‘obscenity’ in that ‘I know it when I see it.’

    1. 7.1

      A low-quality patent is a patent with claims that the infringer doesn’t think the patentee is entitled to but can’t prove it beyond an Alice/101 invalidation.

      1. 7.1.1

        @night +1 for that definition.

      2. 7.1.2

        Not bad. Night.

      3. 7.1.3

        Bingo NW.

        With the corollary that: “But all OUR same art / similar patents are high quality!”

        “Very high!”

        “Super high!”

        “None higher!”

  6. 6

    As someone who thinks section 112 is dysfunctional as implemented, I wonder if Contreras could be a double-agent whose working to construct ill-informed strawman for others to rip to shreds. For example:

    “There are two general ways that patents fail to meet the enablement requirement: the invention
    was never successfully reduced to practice, or the specification fails to describe the invention in sufficient detail. The latter of these stems from deficient drafting, often for inventions that do, actually, work, at least under some circumstances. This type of failure is often referred to as a failure under the “written description” requirement of Section 112.”

    1. 6.1

      Having an actual reduction to practice has never been a requirement for patent applications. [It was primarily formerly important for winning a patent interference where the applicant was not the first to file.] Delaying filing for that may lead to better defined examples but can be fatal, especially in the present “first to file” world. I think the author is confusing the legal term “actual reduction to practice” with applications in which the specification contains inoperative embodiments, especially the [mentioned] untested prospective examples in chemical cases? Also, confusing insufficient 112 enablement with the very different 112 written description requirement.
      Also, by far the largest “patent quality” problem is not either of the above. In particular, the huge increase in searchable prior art, which has not been accompanied by any significant increase in the limited U.S. patent examiner prior art searching time. Thus, missing prior art and failing to apply it to claims. Patent litigation statistics on patent claim invalidity grounds [other than 101] speak for themselves.

      1. 6.1.1

        “In particular, the huge increase in searchable prior art, which has not been accompanied by any significant increase in the limited U.S. patent examiner prior art searching time. ”

        Giving examiners more time with the same tools and the same “databases” to search is not going to improve “patent quality” one teeny tiny bit.

      2. 6.1.2

        If we had a magic wand – and only the most meritoriious patents were issued – we would still have ‘bad patents’ and ‘low quality’ patents because we would still have the PR campaign of the serial infringers. Pretty simple.

      3. 6.1.3

        “Having an actual reduction to practice has never been a requirement for patent applications.”

        Back in the day, like the 19th Century, weren’t inventors required to submit a working model of the invention?

        1. 6.1.3.1

          Yes – I think the requirement for the miniature working models stopped in 1870 or so. It’s my understanding that a large portion (may even a majority) of the USPTO’s collection was lost in a fire in the mid-late 1800’s, though there are some pretty impressive collections out there. I think the Smithsonian put at least several out on display the ten-millionth patent issued, and they’re pretty cool if you’re into that kind of fine hand-craftsmanship.

    2. 6.2

      “written description” is judge made law that was made up to deal with so called late claiming. So IMHO he’s wrong about that.

  7. 5

    Enough already. The problem is not the hard-working patent Examiners.

    Instead, the only low quality patent problem we have here in America . . . are the low quality CAFC and SCOTUS judges who have taken it upon themselves to usurp the constitutional authority of Congress to decide what is and what is not eligible for patent protection.

    That is the low quality problem plaguing America.

    THAT.

    1. 5.1

      Pro Say,

      You are simply not correct to exclude examiners when the topic is patent quality.

      Sure, your desire for a different focus is entirely understandable, but — brace yourself — there are more topics under the sun than that one.

    2. 5.2

      “The problem is not the hard-working patent Examiners.”

      What about the other 60% of examiners?

  8. 4

    The reason there are low quality patents is because there are low quality patent examiners.

    The reason there are low quality patent examiners is because the Patent Office is run by low quality managers, bureaucrats, and politicians.

    1. 4.1

      Are you saying that there are no low quality patent attorneys?

      1. 4.1.1

        I don’t think that’s at all a fair extrapolation of what he said. If there was perfect examination, patent quality would be high nomatter the quality of applicants or their representation.

        1. 4.1.1.1

          Correct, Ben.

        2. 4.1.1.2

          “If there was perfect examination, patent quality would be high no matter the quality of applicants or their representation.”

          Yet even if so, infringers would still claim that the patent/s they were accused of infringing . . . were of low quality.

          While at the same time shouting to the world that all of THEIR patents — including those in the same exact field — were of high quality.

          Hypocrisy rules.

          p.s. And has anyone yet provided a non-circular definition of “low quality patent?”

          1. 4.1.1.2.1

            An excellent point:

            Yet even if so, infringers would still claim that the patent/s they were accused of infringing . . . were of low quality.

            One must always “consider the source” and recognize aspects of Efficient Infringer taint.

          2. 4.1.1.2.2

            LOL, just made that same point above.

        3. 4.1.1.3

          My point was that it takes two to tango. There are countless overbroad patents that were rubber stamped by their examiner, but the attorney just took the short-term W and handed their client an almost certainly invalid patent instead of pushing back. I have to believe that in many of those cases, the attorney expected a rejection up front and didn’t get one, yet they said nothing.

          To me, that’s far worse than an attorney who is mediocre at claim/spec drafting or who couldn’t argue their way out of a paper bag.

          1. 4.1.1.3.1

            Your “point” of “it takes two to tango “ is a fallacy.

            Applicants do not grant their own patents.

            For at least reasons noted above, you should drop that fallacy.

            1. 4.1.1.3.1.1

              We don’t issue patents on claims you didn’t file, so you certainly have a say in the process.

              1. 4.1.1.3.1.1.1

                You absolutely miss the point – it just is NOT a matter of “have a say,” as the act of grant is NOT within our domain.

                Read the post at 4.1.2 as suggested, please.

      2. 4.1.2

        Apotu,

        I can guarantee you (judging from first hand experience processing some of the intake when clients switch to our firm) that there are low quality patent attorneys.

        But I cannot stress enough that such is a non sequitur (at best), and a painful distraction in the least.

        Bad patent attorneys and bad applicants do NOT make bad patents UNLESS bad examination is allowed to be present.

        Quite in fact, given the nature of innovation and how breakthrough innovation most often comes from outside well-heeled and well-trained corporations who MAY more likely to provide “good” applicants and use “good” patent attorneys, it would behoove the United States to focus instead on examination quality.

        Examination quality should be able to sift through any and all inputs (good, bad or indifferent).

        The mantra you see here is nothing more than a “blame the applicant” version of the Efficient Infringers. Who benefits most from making the process a Sport of Kings?

        Further still, I am really surprised that no Liberal Left types have spoken against what this joke of a testimony presentation provided in at least that “Equity” is harmed most by these types of efforts to ‘goldplate’ the inputs into the examination process, as opposed to making that process more robust and more interactive so that those with less resources (and thus, tending to have ‘bad inputs’) nonetheless are encouraged through the EXAMINATION process, and good examination yields the most possible output.

        1. 4.1.2.1

          “But I cannot stress enough that such is a non sequitur (at best), and a painful distraction in the least.

          Bad patent attorneys and bad applicants do NOT make bad patents UNLESS bad examination is allowed to be present.”

          That is just not necessarily the case. Especially from the subjective individual member of the public viewpoint at issue in a given patent dispute once the patent leaves the office. Just as a for instance, just last week I just recently saw an app on its way to allowance but for an unrelated issue to this discussion which additionally had ridiculously badly worded claims that just squeeked by on grammatical correctness, but which were near surely not actually claiming what the inventor wanted them/intended them to claim in formal claim drafting. Since I needed to call about another matter anyway, I brought up these claims and their formal drafting as a side issue during an interview. The inventor of course eventually corrected the language to state what it was he intended to draft the claims to cover correctly, but not without much discussion about this basic tier drafting matter and lots of hand holding for him and the attorney (like hours). Had the other issue not been present in the case necessitating a call the poorly drafted claims that literally formally covered something other than what the inventor intended to claim would have sailed through under all 112 sections and grammatical correctness. Had those claims ever come up in litigation they would be asserted by the patent owner as covering x, but they would be drafted wrong to cover x as they formally covered y. The person on the other end of the patent assertion would think that the patent was low quality though the examination functioned perfectly and I spotted the issue from the first read through of the claims. Nothing I can formally do to stop such bad drafting other than suggest different drafting. This is especially an issue when the applicant is a foreign person that doesn’t understand English well and they think their bad grammar that causes claims meant to claim x to actually be claiming y is correct to claim x. I get at least a claim a month, if not every 2 weeks with this exact thing occurring. No way to stop it but make a suggestion and hope they correct it. Every so often they do insist on their bad drafting and we just allow it as there is nothing in the patent statutes to stop them from claiming something incorrectly.

          And that’s just one type of situation that is fairly routine and should be being stopped by attorneys but isn’t always stopped where the office has nothing to do to stop the practice.

          And that doesn’t even get into the other biggie, confusingly drafted claims. Again, nothing the office can do if it doesn’t rise to the level of a 112 or grammar problem. Funny enough that issue was also present in that exact same application I mentioned above. You can tell if the claims are confusingly drafted if you’re having a hard time parsing the claims even as a supposed expert in that art, and where it is clear that the foreign office/intl search authority blatantly read the claims inccorectly already prior to the US app being examined. That is likely the worst of the issues the office, and examination, cannot fix in terms of patent quality these days.

          1. 4.1.2.1.1

            Appreciate the insight 6 — thanks for taking the time.

            1. 4.1.2.1.1.1

              np

          2. 4.1.2.1.2

            6,

            Your anecdotal exception is exactly that: an exception.

            1. 4.1.2.1.2.1

              If only it was an exception. It’s fairly regular bruh, as I noted. In terms of things that regularly leave my office as “low quality” it would be one of the first and foremost things that would show up to the ordinary person outside the office perceiving patent quality of what left me.

              1. 4.1.2.1.2.1.1

                6,

                While I do not support your contention that such is not an exception, you kind of missed the follow-on point that there is an “Equity” consideration that any such labeling of inputs as being “bad” (or reflecting bad patents) inordinately disadvantages certain Woke protected classes.

                1. I do obv agree with you on the equity issue for the woke protected folks. But there still could be a government control on the issue that would help the protected people out. Either a. the government can be empowered to make an objection in such instances as a temporary hold for the applicant to review the language in conjunction with office personnel and attny, or else we could (lol) just go ahead and get the courts to give them their preferred claim meaning even if they wrote it wrong (for “equity” lol).

                2. I tend to doubt that your view of appropriate action for “Equity” and my view have much (if any) overlap.

                3. “I tend to doubt that your view of appropriate action for “Equity” and my view have much (if any) overlap.”

                  Does your view involve small pieces of lead flying at high velocity?

          3. 4.1.2.1.3

            “The inventor of course eventually corrected the language to state what it was he intended to draft the claims to cover correctly, but not without much discussion about this basic tier drafting matter and lots of hand holding for him and the attorney (like hours).”

            Was this a pro say applicant? Then its a non sequitur to the issue of low quality patent attorneys. In fact, it may be evidence that applicants should use patent attorneys.

            1. 4.1.2.1.3.1

              “Was this a pro say applicant? ”

              No, but he was foreign it seems and his attorney was as well.

    2. 4.2

      “ The reason there are low quality patents is because there are low quality PTO Directors like Fraud Iancu who go out of there their way to kiss the behinds of pathological lyin’ stains on humanity like Orange Julius Caesar.”

      Fixed that for you.

    3. 4.3

      Food for thought:

      The reason there are low quality patents is because there are low quality incoming applications.

      The reasons there are low quality incoming applications is because there are low quality patent attorneys.

      1. 4.3.1

        See 4.1.2

        Focus.

    4. 4.4

      …and the reason the PTO is run by low quality managers, is because the patent bar enjoys the examination and fee structure status quo.

      1. 4.4.1

        ….?

        Please explicate.

        You seem to be imbibing in one of Malcolm’s falsehoods that practitioners do not want quality examination.

        I have refuted that
        L
        I
        E
        many many many times throughout the years.

        1. 4.4.1.1

          Quality examination is expensive. Applicants want to pay less, not more, for examination. If examination is more expensive, the amount paid by applicants, especially institutional applicants that drive a lot of firm’s hours, will likely not increase. Rather, pressure will be put on the firms to lower costs. Quality examination also likely means fewer granted patents. This means that the number on the in-house counsel’s spread sheet will be lower and they will not look as good.

          The incentives seem be for mediocre, cheapish patent examination.

          1. 4.4.1.1.1

            OSitA,

            You have not been paying attention.

            As I have stated, my clients want quality patents that are enforceable.

            Certainly, there are clients out there that may choose differently – for example, IBM and its marketing-centric goal of boasting ‘counts.’

            It is far more expensive for my clients to follow your stated path in the long run.

            You seem to want to focus on ‘incentives’ that only reinforce your negative perceptions. This is known as the fallacy of confirmation bias.

            1. 4.4.1.1.1.1

              I totally agree that, in the long run, a quality enforceable patent is more cost effective and better overall strategy, especially if you foresee the need for that enforcement. I think those are the wise clients. I also think they are a minority, in terms of use of the Patent Office.

              1. 4.4.1.1.1.1.1

                Well, that was a reasonable reply.

                And regardless of that reply, see 4.1.2 as to an actual resolution that will also deal with your viewpoint.

              2. 4.4.1.1.1.1.2

                “I also think they are a minority, in terms of use of the Patent Office.”

                It is borderline absurd to suggest the office wouldn’t comply if a majority of applicants were demanding better examination and higher fees. That the office has not taken such steps is evidence that the “wise” applicants are a minority.

                1. Ben,

                  You too are not paying attention.

                  Look no further than the very blog post itself.

                  Are these people doing as I suggest?

                  Clearly not.

                  The absurdity is indeed over the borderline, but just not how you would portray it.

                  Focus on quality examination may mean holding YOUR feet to the fire. You have been a prime example of not wanting that (you and your “my job is the hard” laments, as well as the confusing your internal metrics with what clients have paid for).

                2. “That the office has not taken such steps is evidence that the “wise” applicants are a minority.”

                  Not just that, the higher ups acknowledge such explicitly. They are.

            2. 4.4.1.1.1.2

              “my clients want quality patents that are enforceable.”

              As has been explained to you, nobody in the C-suite or whatever higher ups locale cares what your clients want, or what my apps want, so long as they are outnumbered in terms of percentage by people that want the cheapos and the higher ups are not willing to balkanize the patent fee structure by art.

          2. 4.4.1.1.2

            There are clients who will spend a small fortune on patent litigation, but will nickel-and-dime when it comes to patent prosecution.

            1. 4.4.1.1.2.1

              Right, because that is the economically rational approach to take.

              One rarely knows—at the time that one is prosecuting a patent application—whether the technology will be commercially important or not. Consequently, the economically rational thing to do is to file many applications covering many different technologies.

              One cannot spend a “small fortune” on each—there just are not enough “small fortunes” in your vaults to pay for that level of spending. Rather, one is obliged at the prosecution stage to be relentlessly parsimonious on all but a handful of applications.

              By contrast, by the time that enforcement is in order, one already knows what technology X is worth in the market. Where the technology at issue is valuable enough, it is economically rational to spend accordingly in the litigation defending that patch of the market.

              1. 4.4.1.1.2.1.1

                It is the economically rational decision. The incentives of patent prosecution point to a patent system with a mediocre examination system* where the big money is spent on litigation and invalidation. Unfortunately, these costs are always (usually?) not bore by the people who should bare them.

                *This isn’t a reflection of how examiners do their job, rather it is a reflection of the environment in which examiners do their job.

                1. Examiners doing their job has zero tie to the litigation side of things.

                  Even the attorney sets are typically different.

                  The point you strive for is illusory.

              2. 4.4.1.1.2.1.2

                “One rarely knows—at the time that one is prosecuting a patent application—whether the technology will be commercially important or not”

                True but that is only economically rational in that short term view. On the other hand, for some prosecutors I know, they won’t do any work for “Big Tech” because it’s just not economically rational to do work for these companies because of all the added administrative headache these companies expect from outside counsel prosecutors for what they are willing to pay for drafting and prosecuting an application.

            2. 4.4.1.1.2.2

              Please Pardon Potential rePeat:

              Examiners doing their job has zero tie to the litigation side of things.

              Even the attorney sets are typically different.

              The point you strive for is illusory.

      2. 4.4.2

        I can assure you we don’t “enjoy” it.

        Personally, I would like to see the squadrons and squadrons and legions and legions of useless, brain dead, know nothing, do nothing GS-15’s (e.g. QAS’s, TQAS’s, RQAS’s, SPRE’s, “subject matter experts,” “business process specialists,” “administrative SPE’s,” etc.) sent back to the examining corps. Wouldn’t improve “patent quality” one bit but might reduce pendency a bit. And it would be fun to see those people who get to sit back and tell other examiners that they can’t allow claims, but don’t have to sign their name to anything and don’t have to be accountable to “the patent bar” actually be accountable.

        1. 4.4.2.1

          So, you don’t enjoy current examination quality, but your improvement suggestion is oriented towards reducing pendancy.

          I am reminded of the joke at the opening of Annie Hall…

          “Boy, the food at this place is really terrible.”
          “Yeah, I know; and such small portions!”

          I’ll believe the bar doesn’t want examination the way it is when it starts meaningfully agitating for change.

          1. 4.4.2.1.1

            ….?

            Pay the F attention, son.

          2. 4.4.2.1.2

            The PPAC, which was set up to supposedly get “improvement suggestions” from the “stakeholders,” is staffed with bootlickers and buttkissers. Probably because the PTO picks the members. No meaningful “agitating for change” has come from that group.

            The most meaningful thing the PTO could do about “patent quality” is spend more of its budget on actual patent examining. Yeah, sure, we all love the PPH’s with Uzbekistan and the Seychelle Islands, but the money the PTO is spending flying people all over the world in its quest for “international harmonization” should be spent on actually examining U.S. applications. (All that money spent on “international harmonization” hasn’t improved “patent quality” one bit, BTW.)

            I’d be willing to consider more time for examination if the PTO would send all the currently useless GS-15’s back to examining. According to you more time would definitely improve “patent quality.”

            That’s my suggestion.

            Who should I agitate with it?

            1. 4.4.2.1.2.1

              “Who should I agitate with it?”

              No reason not to go to the top. Big man Drew and the new undersec and deputy. They actually do supposedly read emails. Keep it brief.

            2. 4.4.2.1.2.2

              “The most meaningful thing the PTO could do about “patent quality” is spend more of its budget on actual patent examining

              the money the PTO is spending flying people all over the world in its quest for “international harmonization” should be spent on actually examining U.S. applications. (All that money spent on “international harmonization” hasn’t improved “patent quality” one bit, BTW.)”

              So the best thing the PTO can do is cut the 51 million dollars they spend on international IP protection (of which, 1.2 million is for travel), and add those funds to patent examination’s 2.670 billion dollar budget. A less than 2% increase.

              Do you really expect people to interpret this as anything other than “fix the problem, but expect not a penny more from me”? This is like when Republicans suggest that foreign aid be cut to help balance the budget. That may be a reasonable suggestion, but in the absence of further suggestions it is extremely telling of one’s actual intentions.

              “Who should I agitate with it?”

              Email the director’s office, call the ombudsman office. If ten thousand or so other individuals with registration numbers do the same, something will happen.

              1. 4.4.2.1.2.2.1

                ten thousand…

                how many active practitioners do you think that there are, Ben?

    5. 4.5

      Low quality patent examination is evident in the numbers. There are examiners that have low single digit allowance rates in art units that have aggregate allowance rates above 60%. On the other hand there are examiners that are looser than a bucket of fishing worms. How the PTO can tolerate these extremes is beyond me.

      1. 4.5.1

        BB,

        Thanks for noting (implicitly) that errors may occur in at least two dimensions (grants that should not happen as well as allowances prevented.

        I am sure that you are aware that the Patent Office crowed about its “quality” with a focus purely on only one of these two types of errors (leading to the aberrant near-30% allowance dip as well as the Office attempted power grabs on claims and continuation rules; as well as to such things as shadow processing through SAWS and the like).

        All these negative things get reinforced when the focus is as the joke of the committee meeting entertained instead of focusing on improving examination quality.

      2. 4.5.2

        “How the PTO can tolerate these extremes is beyond me.”

        I agree that it’s absurd, but I don’t think it’s reasonable to think that the absurdity ends at the PTO management.

        Is there any question that Iancu represented the interests of applicants and their representatives? He took a machete to existing 101 guidance, but otherwise left the ship on its prior trajectory quality-wise. That suggests to me that what applicants and their representatives want is 2013 level examination.

      3. 4.5.3

        “Low quality patent examination is evident in the numbers. There are examiners that have low single digit allowance rates in art units that have aggregate allowance rates above 60%. On the other hand there are examiners that are looser than a bucket of fishing worms. ”

        I have some people in my AU and neighbor AUs with these low allowance rates, and I can assure you that it isn’t me and the rest of the AU with the low quality lulz. Just taking a look at any of their prosecutions will show as much pretty quick.

  9. 3

    Having followed this blog for many years, having qualified as a UK patent attorney in the 1970’s, and having acted before the EPO in disputed opposition proceedings for nigh on 40 years, I have come to the conclusion that the RoW civil law system works better than adversarial English law, in the administration of patentability.

    In particular, compare the travails of adjudicating validity in the USA (and in England) with the ease with which the EPO runs the opposition process (including final and unappealable decisions to revoke a patent that are immediately effective in 38 Member States, including the UK).

    Personally, I think English-style fact-finding, with discovery and x-exam, is what keeps parties in dispute honest about the evidence they adduce. But I struggle to see how any English law jurisdiction can come up with a system of adjudicating validity that works as fairly, efficiently and proportionately as the EPC’s civil law system. Perhaps this Committee will find a way. I really do hope so.

    1. 3.1

      I think Max that the EPO rides off of the English and American systems. The EPO basically is fine with lagging behind us and then setting up rules post the USA sorting through a giant mess.

      I don’t think there system at the EPO is good at trail blazing but is excellent at walking behind the leader and snatching up lots of goodies.

      1. 3.1.1

        Night, I agree. The judges at the EPO, drawn from the different legal traditions of 38 different EPC Member States, have 40 years of experience (and obligation) to borrow from the jurisprudence of other jurisdictions.

        But whether they follow where the USA leads is another matter. Am I right that “technical solution to technical problem” is terminology one hears these days in the USA. It has been the bedrock, the foundation, of the established case law of the EPO for 40 years now. I that one of the goodies you were thinking of, snatched by the EPO from the USA?

        Or are you pulling my leg?

        1. 3.1.1.1

          … I tend to like the “as such” and “pe se” as ‘bedrock’ …

        2. 3.1.1.2

          Max, where they follow is with the technology and what counts as a technical solution or a technical problem.

          1. 3.1.1.2.1

            Is that a criticism of the EPO, Night, that it attentively “follows” progress in the “all fields of technology” of GATT-TRIPS, thereby to maintain coincident with the evolving leading edge of technology its boundary between patentability and unpatentability? I suppose not. After all, you did say that the EPO is “excellent” in this aspect.

            You suggest that the EPO is sitting back, waiting for the USA to sort out its “giant mess”. Wrong. There isn’t time for that.

            Mind you, retired English patents judge Robin Jacob did used to begin speeches to mainland European audiences with the advice that one can learn a lot from Americans: observe what they do, and then be careful not to make the same mistake. But that advice applies universally: we can all learn from each other, if there’s time.

            1. 3.1.1.2.1.1

              What we all “can do” and what you personally choose to do are vastly different things, MaxDrie.

              Still.

    2. 3.2

      Thank you EPO Uber Alles shill.

  10. 2

    re Prof. Contreras: has anyone seen 35 usc 114 been used during prosecution?

    35 U.S. Code § 114 – Models, specimens

    The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention.

    When the invention relates to a composition of matter, the Director may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment.

    1. 2.1

      Only in a rare case of an obvious perpetual motion machine has the PTO requested a 35 usc 114 working model or demonstration, in many generations. [I do not know about any specimen demands.]

  11. 1

    Surprised not to see a major rabies outbreak of comments re Prof. Contreras suggestions to the Senate for PTO application processing including increased SAWS programs, various background checks on the character of inventors, enablement or inoperability challenges, etc.

    1. 1.1

      I just figured this entire post was a Tr011ing exercise.

      So this was for real?

    2. 1.2

      Doesn’t seem surprising to me. “112 should take care of that” is a ubiquitous attorney fallback. Addressing the problems with 112 is beyond its rhetorical purpose.

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