Is the path clear?

One question survey:

161 thoughts on “Is the path clear?

  1. 19

    Set aside extra page fees, extra claim fees, attorney fees (etc). These are real costs that real patent applicants must pay, but let us just pretend for the moment that they do not exist, and just do the math to compare the fees necessary to get a patent in the EP and in the U.S. The links to the respective fee schedules are below. Imagine that a small entity enters both the US national phase and the EP regional phase at the 30 month mark off a PCT that came out of the U.S. search office.

    In the U.S., just to file that §371 you pay $80 (electronic filing fee) + $350 (search fee, small entity) + $400 (examination fee) = $830. This will get you a search and examination. Maintenance annuities are not due in the U.S. before grant.

    In the EP there is no small entity discount. You pay €125 (electronic filing fee) + €1350 (search fee) + €600 (designation fee) + €1900 (examination fee) + €490 (first maintenance annuity, which in Europe comes due even before grant) = €4465 ≈ $5180. Of course, your second maintenance annuity may come due before you get your search report, so the cost of the EP search comes in somewhere between $5180 and $5888.

    In other words, just to get its first office action, a small entity will have paid somewhere between 6 and 7 times in the EPO what it will have spent in the U.S. Is it any wonder that the EP end product is generally regarded as better than the U.S. end product? You get what you pay for.

    Meanwhile, it does not stop there. Imagine your responses to the first office actions puts the cases in condition for allowance within two years of national stage entry in both US and EP. In that case you get to pay $600 (small entity issue fee) and €960 (~$1114). By the time your 4th year U.S. annuities ($1000 for small entity) roll around, you will have had to spend many thousands of Euros in your various national annuities. Do the math, and you can see why I say that patent protection in Europe costs about 5x what corresponding protection costs in the U.S.

    link to uspto.gov
    link to my.epoline.org

    1. 19.1

      That’s a real eye-opener, Greg. But the EPO search fee (as such) is not really that much more than the USPTO search fee. So why don’t more PCT Applicants resident in the USA choose the EPO as ISA? Is it perhaps that they don’t relish the EPO’s opinion on patentability (pace Night Writer).

      May I ask, what does your employer do? I mean, if already during the International Phase, you have the benefit of an EPO report on patentability, you then have a straight run through to issue, don’t you, everywhere except perhaps within the USA.

      1. 19.1.1

        Fallacy alert: “Is it perhaps that they don’t relish the EPO’s opinion on patentability (pace Night Writer).

        check your assumptions there MaxDrei – you are sounding in the Malcolm-like “applicants really do not want valid patents” mindset.

      2. 19.1.2

        If I had to guess it’s probably because nobody much bothers paying the search fee if they don’t intend to get a patent there maybe. Not sure Max. Maybe a lot of people just don’t care about the EU, never even think about it.

        link to imgur.com

        1. 19.1.2.1

          OK then 6. But if so, why do they file PCT? Even if they have no intention to enter the national phase at the EPO, but only in China, would not they want the benefit of the EPO search report before committing to the major expense of national phase entry anywhere outside the USA? See Greg’s briefing on that very point.

          And even if Applicant only wants to sell out their PCT rights before the cost of national entry arrives, would not a positive EPO IPRP provide a substantial uplift to the value of the pending international phase PCT application, more than compensating for the USD 1000 extra cost of the EPO search?

          1. 19.1.2.1.1

            “Even if they have no intention to enter the national phase at the EPO, but only in China, would not they want the benefit of the EPO search report before committing to the major expense of national phase entry anywhere outside the USA? See Greg’s briefing on that very point.”

            Maybe, maybe not. Again, a lot of people may not even think about euros (esp evil ones) at all other than as a filing office.

            “And even if Applicant only wants to sell out their PCT rights before the cost of national entry arrives, would not a positive EPO IPRP provide a substantial uplift to the value of the pending international phase PCT application, more than compensating for the USD 1000 extra cost of the EPO search?”

            Honestly couldn’t say bro. Perhaps, but perhaps nobody even hardly thinks about it. Again, even considerations such as evil might come into play.

      3. 19.1.3

        On 2 Oct at 11:47 pm I wrote that “EP prosecution costs much more than U.S. prosecution.” On 4 Oct at 10:04 am WT responded that “while the upfront filing fees are lower in the US, the US makes up for it for very high maintenance fees. As such, how much actual difference is there between total costs paid by applicants to the respective patent offices?”

        Curiously, although it would have been a rather simple matter to answer his own question (as shown above) by simply doing the math, WT did not bother with these fairly elementary calculations. I offered the above to illustrate that taking annuities into account actually strengthens my point that it costs a lot more for WT’s hypothetical “mom & pop” applicant to get an office action in Europe than in the U.S.

        All of this, Max, is a preliminary to answering your questions because I want to put my #19 into context as a reply to WT’s 15.1.1.2.4 below.

        [T]he EPO search fee (as such) is not really that much more than the USPTO search fee. So why don’t more PCT Applicants resident in the USA choose the EPO as ISA?

        Two responses: First, I do not think that it is helpful to compare search fees to search fees. It is not as if either the EPO or the USPTO put the “search” fees into a special “search” account, and then “search” expenses are paid exclusively out of this account. “Searching” costs are just one cost among many that both offices incur, and both pay these costs out of the same general fund that they use to pay any of their other expenses. The right comparison is not EP “search” fees to US “search” fees, but rather the right comparison is “total fees necessary to get an office action in EPO” to “total fees necessary to get an office action in USPTO.”

        Second, WT has specifically in mind a “mom & pop” applicant—i.e., someone who is cash constrained at the time of filling. This applicant needs to get a PCT on file to show investors, so that they can raise the capital necessary to run future operations for their start-up. They usually use the U.S. search office because it costs less at that precise moment in time than the EP search office (even if it yields a poorer quality search and leads to higher total costs down the line).

        [W]hat does your employer do?

        I work for an early stage (i.e., no FDA approved products yet) innovator pharmaceutical company.

        I mean, if already during the International Phase, you have the benefit of an EPO report on patentability, you then have a straight run through to issue, don’t you, everywhere except perhaps within the USA.

        Yes, when large-entity pharma companies file PCTs, they usually use the EP search office. As you suggest, this lowers their total prosecution costs down the line because when they find allowable subject matter in the international stage in front of the EPO, that search report clears the way for greatly abbreviated process in most of the rest of the world.

        1. 19.1.3.1

          Thank you, Greg, for all those honest, open and frank remarks.

          1. 19.1.3.1.1

            Oh stop already and grab a room.

      4. 19.1.4

        To Max Drei, at 19.1.
        A couple of reasons.
        At the PCT level, the EPO will make an overly strict restriction requirement, and/or will most likely state that it is not apparent which dependent claim is patentable without analysis.
        Also, for small entities, the search fee at the EPO is about double the one of the USPTO.

        1. 19.1.4.1

          PiKa, indeed! The EPO search fee is indeed larger than the USPTO’s and, to add insult to injury, the EPO is indeed quick to find that more than one invention is being claimed, and to invite payment of a further search fee for each of the other different inventive concepts claimed.

          Nevertheless, as Greg explains, corporate PCT filers will choose the EPO as ISA anyway, for the reasons he gives.

          As others have pointed out here, for an Applicant who is a sole inventor, filing PCT at the USPTO is a cheap way to establish world-wide rights in an invention. But national phase entry is bankruptingly expensive so best find a buyer during the 30 month International Phase. Opinions differ, as to whether the offer for sale, world-wide, that includes a report on patentability from the EPO acting as ISA is sufficiently more attractive to the corporate buyer as to defray the extra cost of using the EPO as ISA.

      5. 19.1.5

        >>(pace Night Writer).

        Eh, because the client doesn’t want to pay the extra fee. And generally clients want to pay for searches before the application is written.

    2. 19.2

      The handwaving about “you get what you pay for” comes across as a Sport of Kings, get out of my well-monied and established entity SHUTDOWN of disruptive innovation.

      And much against what Greg may have convinced himself, the US System was built upon a foundation of NOT being a Sport of Kings and the already established.

    3. 19.3

      Wow greg thanks for the estimates there. Truly eye opening. Literally 5x the cost and these jokers still applyin clown art n not finding art even in the subs they searched. Hilarious.

      Euros, get your act together.

      1. 19.3.1

        Hilarious for you, perhaps, 6. But perhaps you should read Greg at 19.1.3 to find out how “hilarious” it is to professional international patent prosecutors.

  2. 18

    So 52.5% of the people have never heard of 101 at the CAFC/DC level.

    1. 18.1

      One thing about all these prior art discussions, from what I’ve seen in IPRs and DC litigation, the prior art found in an EPO search is often used for invalidity arguments.

      I think the PTO needs to improve their searching to be at least as good as EPO searches.

      And, I think we have empirical evidence that the EPO searches are better because the art they find is used —almost always–in litigation in invalidity contentions.

  3. 17

    In addition to the impracticality for the Examiners to find, read, and understand all the published patent literature, I will add that Congress has set up the USPTO for failure by defining as prior art information that is not publicly available at the time the prosecution happens (it normally starts about 14 months after filing, but it could start the day after filing). If Congress wanted that the USPTO issues valid patents, it would have included in the definition of prior art only information that an Examiner can reasonably access. At least, Examiners cannot access unpublished applications and patents, secret sales or offer for sales.

    1. 17.1

      Meh, some of what you seem to point to does not count for state of the art for the Legal fiction known as Person Having Ordinary Skill In The Art (and hence, is not a part of any calculation).

  4. 16

    Ugg, outside counsel loves to hide behind this trope. Drafting and claiming an invention naked get caught with their pants down, then point fingers. With a null of failing to identify the closest prior art, even a probability of a type one error of .05, a common statistic use in social science, there is an inherent survival risk for any patent. Until drafters get paid and take a more active roll with becoming experts themselves, the most killer outcome is the mean.

  5. 15

    [T]he US patent system has been further gamed to advantage the larger, established players over the newcomers. The mom & pop inventor goes to their local, small-time, low-cost patent attorney and presumes that the patent that ultimately issues will actually be valid… However, as those of us in the business know all to well, the assumption that this patent will be valid is very likely to be unfounded… I believe that the US patent system should be set up to allow even a little guy to get an enforceable patent — despite his/her experience (and lack thereof) with the system.

    [Wandering Through, 30 Sept 2021 at 2:46 pm]

    [L]essen[ing] post-Grant legal challenges is… the primary job of the USPTO… The primary job of an examiner is to become an expert in a narrow area of innovation… I will also say that this continued effort by the anti-patent judicial activists to shift the burden of the prior art search to the applicant is just another attempt at weakening patents… [T]he only real way forward is experts at the PTO in A[rt ]U[nit]s.

    [Night Writer, 1 Oct 2021 at 10:46 am, 1:00 pm, and 9:55 am]

    Reading the comments on this post, I realize that my interlocutors and I are coming at the question in dispute from completely opposite points of view. As can be seen from the quotes above, Wt & NW begin from a concern—admirable in itself—for “mom & pop” inventors. They rightly calculate that the patent system can never work for these “mom & pop” inventors unless and until we can achieve a state in which the fees required for a USPTO examination are enough to yield a legally enforceable patent. Therefore, having intuited the necessity of such state for the good of the “mom & pop” inventor, they insist that such a PTO examination system must be reconstructed to achieve such an outcome for “mom & pop” inventors.

    As can be seen from the above paragraph, I agree that the patent system can only work for the “mom & pop” inventor if a mere USPTO examination will suffice (in most instances) to yield a legally enforceable patent. However, I assess the situation from the opposite perspective as theirs.

    1. 15.1

      [A] centrally directed industrial system is administratively impossible—impossible in the same sense in which it is impossible for a cat to swim the Atlantic.

      [Michael Polanyi, The Logic of Liberty]

      I look at the actual, lived experience of the U.S. patent system over the last few centuries, and I notice that there have never been more than ~20 years in the aggregate in which a mere USPTO examination was reliably like to yield a legally enforceable patent. There is no law-of-physics reason why the USPTO could not function at that level, but neither is a law-of-physics reason why a cat could not swim the Atlantic. When you notice, however, that over the broad sweep of history a certain event occurs only rarely or never, you have to conclude that there is a reason why it does not occur.

      I take it as essentially a given that the USPTO is not—in the main—going to conduct examinations in a manner that is altogether sufficient to ensure the product that emerges from such an examination will likely prove legally enforceable, in much the same way that I take it as a given that cats are not going to swim the Atlantic. I think that heroic efforts to teach and encourage cats to swim the Atlantic will mostly just result in a lot of drowned cats. Even among the ones who do not drown, few will succeed and none will enjoy it.

      I think that the same is true of efforts—no matter how well intentioned—to encourage “mom & pop” inventors to participate in the U.S. patent system. Wt & NW have no more idea than any of the many previous proponents of their views as to how—in the lived reality of real humans working from real human motivations—to make the USPTO function at the level necessary to achieve their goals for “mom & pop” inventors. Wt rather less than helpfully suggests that the problem could be solved with “better training and better management”—if only previous PTO directors could have had such an insight!

      Their inveighing on this point will not succeed. If, however, they succeed in enticing “mom & pop” inventors to participate in the U.S. patent system on this basis, the results that they achieve will be only slightly more felicitous than the trans-Atlantic feline swimming project.

      1. 15.1.1

        I take it as essentially a given that the USPTO is not—in the main—going to conduct examinations in a manner that is altogether sufficient to ensure the product that emerges from such an examination will likely prove legally enforceable.
        The TL;DR version being that the current patent system is set up to punish the mom & pop inventors and reward the (moneyed & experienced) large corporations. I think most can agree on that. So what is the solution?

        Wt rather less than helpfully suggests that the problem could be solved with “better training and better management”—if only previous PTO directors could have had such an insight!
        It doesn’t require insight — it requires willpower.
        The EPO generally provides better searches, why cannot the USPTO?
        When nearly all Examiner are above average, then the standards are too low (a management problem).
        When the USPTO doesn’t use the extra money for claims charged in applications to compensate examiners for doing more work, then that is a management problem.

        Since my suggestions are “less than helpful[],” what are your suggestions for helping mom & pop inventors get enforceable patents?

        One of the biggest problems with unenforceability is lack of predictability in the application of the law. It is one thing to have a patent invalidated based upon prior art not reviewed by the Examiner. It is another thing altogether to have a patent invalidated based upon provisions (e.g., 101 and 112) that should have been overcome during the initial examination. I would wager that at the District Court level, a great percentage of patents are being invalidated for non-prior art issues.

        1. 15.1.1.1

          “I think most can agree on that. So what is the solution?”

          The petty patent and a less punishing side system for mom and pop. But they don’t like that.

          “The EPO generally provides better searches”

          Citation needed.

          “When nearly all Examiner are above average, then the standards are too low (a management problem).”

          That’s merely your opinion. In real life, all the examiners are “above avg” because as soon as mgmt says do this or that, then it gets done, and then everyone gets good ratings (even at the cost of VOT). That’s the sign of a great patent examining corps btw.

          “When the USPTO doesn’t use the extra money for claims charged in applications to compensate examiners for doing more work, then that is a management problem.”

          That I can agree with, but on the other hand the fee structure is currently such that they are obliged to raise fees in the aggregate instead of on a case by case basis. Iirc.

          “Since my suggestions are “less than helpful[],” what are your suggestions for helping mom & pop inventors get enforceable patents?”

          There’s only 2 bro, either the petty patent, or mom and pop go raise money like everyone else. The patent system is not inventorship money making magiiiiiiiiic. In general. Even for big corp.

          “It is another thing altogether to have a patent invalidated based upon provisions (e.g., 101 and 112) that should have been overcome during the initial examination.”

          Bro just fyi, most, like 99%+ of 101’s and 112’s never should have been drafted into the claims in the first place. Hate to bring up the GIGO, but if you submit garbage, then you stand a chance at receiving garbage. It’s kinda up to everyone to ensure that you don’t get garbage after submitting garbage.

          1. 15.1.1.1.1

            6,

            Maybe you need to refresh your understanding of what “average” means.

            You’ve quite slipped back into being an Office apologetic.

            1. 15.1.1.1.1.1

              “Maybe you need to refresh your understanding of what “average” means.”

              Not at all. I’m well aware of it. And I”m aware that you think that this should magically swing upwards if everyone can manage to do the various indicia. That is incorrect. For a variety of reasons. First and foremost you don’t understand how the federal gov measures performance nowadays. There have to be objective indicia, measurable, in order to make the performance determination. Those indicia have to be set forth prior to the performance. This is somewhat new btw, when I first got here it was just a crp shoot determined based on mgmt feelinggggsssss mostly, though I suppose they probably did half decent at judging things. This is supposed to be happening all across the federal gov and is why there were several other depts that had everyone suddenly “outstanding” with some congresscritters mistaken like you are here, and them having to have such and such explained to them. Whenever gov agencies have to actually set forth the measuring criteria then if the workforce in the dept is all dedicated employees, then they all can very well do an “outstanding job”, according to the objective indicia set forth by mgmt. and can all be above avg. Mgmt doesn’t necessarily want to make all of the indicia mandatory because of various reasons (accommodation of good enough work, accommodation of people just doing what actually needs to be done in order to go home and not be overworked/burned out, accommodation of new people, the need to go ahead and pay for it being done if it’s actually being required instead of having the corps pick up the extra work gratis in VOT etc. etc.).

          2. 15.1.1.1.2

            The petty patent and a less punishing side system for mom and pop. But they don’t like that.
            What does that mean?
            Citation needed.
            When I have cases that involve searches from both sides, it isn’t even close. Moreover, it is an observation I have seen expressed far and wide by many others over a very long time. Sorry.
            That’s merely your opinion. In real life, all the examiners are “above avg” because as soon as mgmt says do this or that, then it gets done
            Then you don’t understand what “average” means. Moreover, it appears that examiners are not working up to their potential if all management has to do is say “do this or that, then it gets done.”

            or mom and pop go raise money like everyone else
            Raising money is not going to happen prior to an application getting filed. Actually, it is a catch-22. Mom & pops are too small to raise money to file better applications and/or get better representation. However, once they get their patent applications, these applications are likely to get invalidated so it is difficult for them to raise money (on what most investors would see as a losing proposition). They are screwed no matter what, which is exactly what big corporations want.

            Bro just fyi, most, like 99%+ of 101’s and 112’s never should have been drafted into the claims in the first place.
            They shouldn’t be. However, any issued patent should have had an examination that addressed the 101s and 112s prior to issuance. The problem is, as we all know, is that the Courts keep changing what is required to comply with 101 and 112 despite the statutory language essentially being unchanged for 70 years. As such, the perfect claim that gets issued tomorrow (being a Tuesday) could be invalidated based upon “interpretations” of the law that won’t be known until some panel of Federal Circuit judges decides that such-and-such patent shouldn’t be enforced so they concoct some new requirement that this patent doesn’t meet.

            Hate to bring up the GIGO, but if you submit garbage, then you stand a chance at receiving garbage.
            You do realize that cleaning up whatever garbage is in a patent application is part of the USPTO’s job? The job of the USPTO is to issue valid, ENFORCEABLE patents.

            1. 15.1.1.1.2.1

              “What does that mean?”

              There’s a whole line of discussion going back probably before I was born on that topic, you can explore it as you see fit on your own.

              “When I have cases that involve searches from both sides, it isn’t even close. Moreover, it is an observation I have seen expressed far and wide by many others over a very long time. Sorry.”

              Yeah and I see the opposite. Sorry. So, you’re going to need a citation.

              “Then you don’t understand what “average” means. ”

              No, I do. You, and anon, and others, don’t understand how gubmit ratings systems work nowadays. It is entirely doable to have a whole agency performing above avg with a good corps.

              “Then you don’t understand what “average” means. Moreover, it appears that examiners are not working up to their potential if all management has to do is say “do this or that, then it gets done.””

              Only if they weren’t putting in VOT. Which they are. So your statement is meaningless. Again, as I’ve told people online many times, the PTO mgmt is getting way more than they’re paying for at present. Although at the same time, yes, to a small extent extent, any workplace like a bureaucracy is never working up to 100%, a well known fact for all such workplaces. And solid direction from mgmt usually helps boost it a bit. This is true for everything needing to be done in any workplace like a bureaucracy.

              1. 15.1.1.1.2.1.1

                Yeah and I see the opposite. Sorry. So, you’re going to need a citation.
                I’ve been wandering these blogs for well over a decade and I cannot recall a single instance in which an attorney stated that they received a better search from the USPTO than the EPO. I would have remembered given how unusual an opinion that would have been.

                It is entirely doable to have a whole agency performing above avg with a good corps.
                Again, you don’t understand what “average” means.

                Again, as I’ve told people online many times, the PTO mgmt is getting way more than they’re paying for at present.
                Don’t confuse how much work you want to do (maybe 15 hours a week) versus how much work you think you should be paid for (maybe 45 hours a week).

                The problem is that while there are some examiners who point in a honest day’s work, there are a great many that cut corners and provide sub-par (i.e., below average) work. It is painfully obvious to identify this kind of work. You strip away the claim language and boilerplate and what is left is maybe 50-100 words of “analysis.”

                You may think your do a good job and maybe you do. However, I have a lot more visibility on your compadre’s work than you do.

                1. Wt

                  You are wrecking 6 on every point.

                  He just does not get the thrust of bringing up that “record breaking quality” at the front end.

                  He’s been a bureaucrat for too long.

                2. “I’ve been wandering these blogs for well over a decade and I cannot recall a single instance in which an attorney stated that they received a better search from the USPTO than the EPO. I would have remembered given how unusual an opinion that would have been.”

                  Doesn’t change even one small thing. Obviously we both know that there have been instances of the PTO finding a 102 not found by the foreign office. It happens literally routinely in file wrappers I look over all the time. If attorneys aren’t crowing about it then I would guess that it’s probably just because they’re ra cist.

                  “Again, you don’t understand what “average” means.”

                  No, again, yes, I do. I’ve been through third grade. I also know what federal measurements mean, and you don’t.

                  “The problem is that while there are some examiners who point in a honest day’s work, there are a great many that cut corners and provide sub-par (i.e., below average) work.”

                  I mean you can keep saying that, but I see no actual indication of it going on in the numbers. And you can keep saying it all you like, but there just isn’t great evidence. Even NWPA, renowned hard ass on examiners just now the other day said the percent was pretty low on the number of examiners he didn’t respect (save in the not actually useful arts of business methods which aren’t even supposed to be in the office in the first place, so you know). Is it your position that the pto mgmt is, en masse, covering for them?

                  “However, I have a lot more visibility on your compadre’s work than you do.”

                  Oh bs, I can see all actions that go out that I want to observe. Why not make yourself a big ol list of apps that you think are such a great number of apps with all this that is so horrible with a tiny sentence explaining why its complete bs for us to review? Take you like 2 minutes a day to record the serial and make a 10 word sentence describing each. Then we can review your list. And you can also tell us what the PERCENT of the total actions you looked over are getting this, and whether or not you’re in an art unit that deals with things that aren’t even the useful arts to begin with (software/biz methods). Then we can have something to base our discussion of this supposed epidemic on.

            2. 15.1.1.1.2.2

              “Raising money is not going to happen prior to an application getting filed. Actually, it is a catch-22. Mom & pops are too small to raise money to file better applications and/or get better representation. ”

              Bruh we’ve all seen shark tank a hundred times. And we all know people trying to raise money irl by the time we’re 40 if we have any money ourselves because people will hit us up to invest. Your statement is obvious bs. It’s like 500 dollars to file provs, and you can do a decent app up front at like 4k. If the idea isn’t make more than 4k dollars a year in extra sales/profits etc., sorry not sorry it’s small taters.

              ” However, once they get their patent applications, these applications are likely to get invalidated so it is difficult for them to raise money (on what most investors would see as a losing proposition)”

              Yes, I know. Again I repeat the petty patent discussion above, and also note just for you a repetition of a long reminder that the patent system is not some sort of magic that makes mom and pop magically equal to major multinationals with billions.

              “They are screwed no matter what, which is exactly what big corporations want.”

              Yeah we know, the patent system is not magic that makes mom and pop magically as powerful as bezos and friends.

              “However, any issued patent should have had an examination that addressed the 101s and 112s prior to issuance. ”

              Somewhat irrelevant. The office catches most of em and does the best it can. Gotta take responsibility for your own bad drafting if your patent goes down on 112/101 in non-aliceish sitations. And even the alice situation was correctly explained as far back as Benson. That simpletons did not understand it is not the court’s problem, although I will agree with you that the gov overall needed to do a better job in explaining it to people. A bit of a gubmit failure there.

              “The problem is, as we all know, is that the Courts keep changing what is required to comply with 101 and 112 despite the statutory language essentially being unchanged for 70 years.”

              That is a way overblown “problem”. The changes made to the application of 101/112 are miniscule in the big picture.

              “could be invalidated”

              At like a .1% chance (actually less) if you’re not tar ded. If you’re tar ded, then don’t expect miracles in the first place, you’re ta rded. You want the gov to solve that large issue outside issue for you?

              “You do realize that cleaning up whatever garbage is in a patent application is part of the USPTO’s job?”

              Somewhat, and we do a good job of it ta rd. It’s the 1% that gets out that has your bu t-blasted. Them’s excellent nums. The actual job of the PTO is set forth in the statute in 35 U.S.C 151. See below.

              “If it APPEARS that an applicant is entitled to a patent under the law, a written notice of allowance of the application”

            3. 15.1.1.1.2.3

              “Raising money is not going to happen prior to an application getting filed. Actually, it is a catch-22. Mom & pops are too small to raise money to file better applications and/or get better representation. ”

              Bruh we’ve all seen shark tank a hundred times. And we all know people trying to raise money irl by the time we’re 40 if we have any money ourselves because people will hit us up to invest. Your statement is obvious bs. It’s like 500 dollars to file provs, and you can do a decent app up front at like 4k. If the idea isn’t make more than 4k dollars a year in extra sales/profits etc., sorry not sorry it’s small taters.

              ” However, once they get their patent applications, these applications are likely to get invalidated so it is difficult for them to raise money (on what most investors would see as a losing proposition)”

              Yes, I know. Again I repeat the petty patent discussion above, and also note just for you a repetition of a long reminder that the patent system is not some sort of magic that makes mom and pop magically equal to major multinationals with billions.

              “They are screwed no matter what, which is exactly what big corporations want.”

              Yeah we know, the patent system is not magic that makes mom and pop magically as powerful as bezos and friends.

              “However, any issued patent should have had an examination that addressed the 101s and 112s prior to issuance. ”

              Somewhat irrelevant. The office catches most of em and does the best it can. Gotta take responsibility for your own bad drafting if your patent goes down on 112/101 in non-aliceish sitations. And even the alice situation was correctly explained as far back as Benson. That simpletons did not understand it is not the court’s problem, although I will agree with you that the gov overall needed to do a better job in explaining it to people. A bit of a gubmit failure there.

              “The problem is, as we all know, is that the Courts keep changing what is required to comply with 101 and 112 despite the statutory language essentially being unchanged for 70 years.”

              That is a way overblown “problem”. The changes made to the application of 101/112 are miniscule in the big picture.

              1. 15.1.1.1.2.3.1

                Bruh we’ve all seen shark tank a hundred times
                I’ve watched maybe 10-15 minutes of it … ever. Gimmicky devices that you might find on QVC don’t interest me.

                And we all know people trying to raise money irl by the time we’re 40 if we have any money ourselves because people will hit us up to invest.
                They do? This must be the handout generation.

                Yeah we know, the patent system is not magic that makes mom and pop magically as powerful as bezos and friends.
                There was a time when a patent meant something. You may not remember it, but that time existed.

                The office catches most of em and does the best it can. Gotta take responsibility for your own bad drafting if your patent goes down on 112/101 in non-aliceish sitations.
                LOL. The USPTO is chockfull of above-average examiners yet if they don’t catch a 112/101 problem, then it is the applicants’ fault. Way to take responsibility for your work product. If your attitude doesn’t epitomize why many people dislike the attitude of government workers, I don’t what would.

                And even the alice situation was correctly explained as far back as Benson.
                The Benson claims would probably pass 101 today. It was a terrible decision made by jurists who knew NOTHING about the technology.

                That is a way overblown “problem”. The changes made to the application of 101/112 are miniscule in the big picture.
                When I go from <5% of applications receiving a 101 rejection to 70+% receiving a 101 rejection, then the changes are not miniscule. Don't confuse what is going on in your insular art unit with what is going on throughout the USPTO.

                1. “They do? This must be the handout generation.”

                  Lelz, it’s always been this way. If you don’t have people hitting you personally up its because either people don’t know you have money or don’t consider you a person interested in business. I know plenty in my immediate circle, and it’s a constant thing year over year, as it should be btw, good ideas should be getting funded. Also just fyi, tis not a “handout” to have raised money, businesslet.

                  “There was a time when a patent meant something. You may not remember it, but that time existed.”

                  Yeah way back when the guy that fought ford got his as s handed to him and near sui ci ded over it iirc. Some nice rose colored glasses stuff there. It was like totally meaningful n shi t n like totally leveled the playing field between david n goliath in this one story I remember n stuff.

                  “a 112/101 problem, then it is the applicants’ fault.”

                  We’re literally inundated with them. A statistically small amount do get out obviously as they will through any org dmbf ck. Literally all bad drafting is ultimately the applicant’s “fault” as well dmb fck. They literally need to make a public service announcement clarifying this for ta rds like yourself. The gubmit is not responsible for your bad drafting. Ever. The congress was so generous as to allow you to do your own drafting, the gov, as a whole, takes literally 0 responsibility for your fck ups. If the gov was to take responsibility for it, then it would do the drafting, not you.

                  “Way to take responsibility for your work product. ”

                  Patent drafting is not my work product dmbfck. The congress explicitly made that the applicant’s work product. Literally.

                  “If your attitude doesn’t epitomize why many people dislike the attitude of government workers, I don’t what would.”

                  Yeah, we know, people outside the gubmit think that the gubmit is their crutch. The gubmit is not your crutch.

                  “The Benson claims would probably pass 101 today”

                  Um no they would not. You must not have read them. They are 100% not allowable.

                  “When I go from <5% of applications receiving a 101 rejection to 70+% receiving a 101 rejection, then the changes are not miniscule"

                  Thanks for confirming that there is no problem with the patent system, all of your btching and whining is about a problem with you. Can't stop drafting bad claims can ya? Working in an art that probably isn't even a useful art art ya?

                  Now we know where the problem lies. It's you submitting huge reams of garbage to the PTO. Then telling us about how its like totally the gubmit causing issues.

                  LOL!!! !! ! I'm not going to discuss this sht with you further, you're literally the problem in all of this. For the rest of us, over in the useful arts, there is no problem.

            4. 15.1.1.1.2.4

              “could be invalidated”

              At like a .1% chance (actually less) if you’re not ta r ded. If you’re ta r ded, then don’t expect mir acles in the first place, you’re ta rd ed. You want the gov to solve that large issue outside issue for you?

              “You do realize that cleaning up whatever gar bage is in a patent application is part of the USPTO’s job?”

              Somewhat, and we do a good job of it ta rd. It’s the 1% that gets out that has your bu t-bla sted. Them’s excellent nums. The actual job of the PTO is set forth in the statute in 35 U.S.C 151. See below.

              “If it APPEARS that an applicant is entitled to a patent under the law, a written notice of allowance of the application”

              1. 15.1.1.1.2.4.1

                we do a good job of it ta rd.
                Which is why the efficient infringers of the world were begging for IPRs because the USPTO is so bad at examination. Which is why the vast majority of the patents that get taken to the Federal Circuit get invalidated. I’m sorry, the reputation of the USPTO is that of a hot mess, inside of dumpster fire, inside a train wreck. When the USPTO’s issued patents stand up in court more frequently then you’ll have a reason to crow about 95% of examiners being ‘above average.’

                Also, the relevant percentage is not the percentage of patents that get invalidated versus the total number of patents issued. Rather, the more relevant number is how many patents get invalidated versus the number of patents that get challenged. Accused infringers are going to challenge a block of 100 or 1000 patents. However, any small number of patents being asserted WILL be challenged.

        2. 15.1.1.2

          So what is the solution?

          There is no “solution,” no more than there is a “solution” to the “problem” of how to coach the trans-Atlantic feline swim team.

          The patent system is meant to be an engine of innovation, not of wealth redistribution. If you want the government to do things for “mom & pop,” I am with you all the way, but the patent system is a woefully inappropriate tool for that purpose. Give up on trying to remake the USPTO into something it will never be, and channel those good intentions into more productive venues.

          The EPO generally provides better searches, why cannot the USPTO?

          You get what you pay for. EP prosecution costs much more than U.S. prosecution. Going down that road is not going to get you where you are aiming to end up—a low cost, robustly enforceable patent. The EP model is admitting that patents are the “sport of kings,” and resigning oneself to be content in that truth.

          1. 15.1.1.2.1

            Good stuff, Greg.

            Naturally, I’m interested in your assertion that “prosecution” at the EPO costs “much more” than the prosecution at the USPTO. Given that the EPO examines on behalf of 38 sovereign EPC Member States, each of which runs its own Register of Patents in its own language, it’s not surprising that “prosecution” all the way to the Register in 38 countries costs “much more” than to get on the USPTO register of duly issued patents.

            But most applicants at trhe EPO register their grants in 5 or fewer EPC Member States so, for them, the costs are not so high. Given reasonable quality drafting, a high quality EPO search, an intelligent response to the EPO’s EESR (extended search report and patentability opinion) issued a few months after filing at the EPO ought to lead directly to an EPO Notice of Allowance.

            So, which bits of the EPO “prosecution” if any, do you see as not being “much more expensive” than prosecution at the USPTO?

            1. 15.1.1.2.1.1

              [W]hich bits of the EPO “prosecution” if any, do you see as not being “much more expensive” than prosecution at the USPTO?

              EP has higher search and examination fees, higher extra page fees, higher extra claims fees, and higher maintenance annuities. All told, I find that EP prosecution (just prosecution, setting aside multi-nation validation costs) is about 5-times as expensive as the corresponding US prosecution on a per matter basis. If you doubt this, go pull some invoices you have sent out in cases in which the client asked you to file in both US & EP, and tote up the whole costs in each from filing to grant (including the maintenance annuities that one must pay even before grant in EP).

              EP prosecution is more expensive, but you get what you pay for. The EP examination reliably produces a higher quality of examination, in my experience.

              1. 15.1.1.2.1.1.1

                Gosh, Greg, I had no idea that filers perceive it to cost five times as much as at the USPTO to get to issue at the EPO. It would be interesting to hear from the Japanese and Korean bulk filers whether that is also their experience because what I suspect is that it seems always to be relatively expensive to file and prosecute in a foreign jurisdiction, relatively cheaper to file and prosecute at one’s “home” Patent Office.

                As to annuities, some might see it as cheaper to pay one a year to the EPO until late in the patent term, and only then switch to paying one in each of the Patent Offices of the 38 EPC Member States.

                I’m not filing and prosecuting in chem/bio. The cases I handle don’t have huge numbers of specification pages nor huge numbers of claims. But I do see your point, that the official fees on such cases are relatively heavy at the EPO. Perhaps their function is to defray the higher costs of examination of such jumbo cases? Perhaps at the USPTO you should be paying for search and exam a fee that is higher, more proportionate to the cost of drafting a jumbo case?

          2. 15.1.1.2.2

            Greg, I don’t accept your “sport of kings” idea. Rather, the idea I prefer is “horses for courses” by which I mean that there should be a balance between the potency of the exclusive rights granted and the strictness with which a petition to be granted such rights is examined.

            With distinctive trademarks and designs, you get a Grant Certificate more or less on request, which will fully protect your valuable property from erosion. But conversely, if you want the PTO to issue you a broad claim with which you can enjoin an entire industry sector, you can’t really grumble if the PTO scrutinises it carefully before issuing you with such potent rights.

            At the EPO, everything hangs on i) the “quality” of its search and ii) the extremely high level of predictability of its “problem/solution” thoroughly prescriptive and EPO-specific approach to obviousness. There is no duty of disclosure or notion of fraud on the Patent Office. Therefore, once you get the EPO search report, you can amend the claims accordingly and reasonably and fully expect the next EPO Communication to be a Notice of Allowance. The way I see it, there is nothing sporting at all, in the EPO prosecution process.

          3. 15.1.1.2.3

            Greg’s innate (Big Pharma) Sport of Kings bias comes screaming through with his “just throw up his hands in complete disregard for a fundamental aspect of the US patent system with:

            There is no “solution,” no more than there is a “solution” to the “problem” of how to coach the trans-Atlantic feline swim team.

          4. 15.1.1.2.4

            EP prosecution costs much more than U.S. prosecution.
            I’m not talking about prosecution — I’m talking about searching. What one pays a patent attorney in the EU for prosecuting a patent has nothing to do with getting a good search. Also, as pointed out elsewhere, while the upfront filing fees are lower in the US, the US makes up for it for very high maintenance fees. As such, how much actual difference is there between total costs paid by applicants to the respective patent offices?

            If you want the government to do things for “mom & pop,” I am with you all the way, but the patent system is a woefully inappropriate tool for that purpose.
            It is an inappropriate tool TODAY. It hasn’t always been that way. If you want to sacrifice mom & pop inventors to the big tech overlords, then that is your prerogative. However, there are those of us who believe that the engine of innovation lies with small businesses run by hungry entrepreneurs — not with massive tech companies trying to protect their outsized profits.

            Hey, I get it. You would prefer to have the mega tech companies steal the technology of the little guy. It works for you. You are content with that system. It is just that some of us think the system should be better/fairer — you’ll just have to excuse us in that regard.

          5. 15.1.1.2.5

            “The patent system is meant to be an engine of innovation, not of wealth redistribution. If you want the government to do things for “mom & pop,” I am with you all the way, but the patent system is a woefully inappropriate tool for that purpose. Give up on trying to remake the USPTO into something it will never be, and channel those good intentions into more productive venues.”

            Greg actually saying something wise here.

        3. 15.1.1.3

          WT, your point about the reasons why an issued patent fails to survive court scrutiny interest me. They are different here in Europe. In particular, patents in Europe do not often crash on 101 or 112 issues. Much more likely is that the infringement action fails on squeeze arguments: if the claim is wide enough to cover the infringing act, it goes down as old or obvious. But if it is construed narrowly enough to survive prior art attacks, it fails to cover the infringement. See the very recent pemetrexed case for the apex of the jurisprudence, because it went to supreme courts all over Europe. The narrowed claim that went to issue was explicitly limited to disodium pemetrexed and the competitor used dipotassium pemetrexed.

          Those who wrote the European Patent Convention had more than an inkling of what happens when you permit 112 attacks on validity, post-issue. Under the EPC, indefiniteness is not on the exclusive list of grounds of revocation of a duly issued claim.

          As to 101 issues, the EPC was drafted with consciousness of the field of computer-implemented inventions. Its Art 52 is therefore more specific than 35 USC 101 on what subject matter is ineligible. That helps too, to streamline post-issue enforceability.

          But the biggest contribution to stramlining post-issue litigation on patent claim validity would be a reform of obviousness, to render it more predictable, specifically by adopting, lock, stock and barrel the tried and tested EPO problem/solution (TSM) approach which has so far seen off all attempts to undermine it. When the courts and the PTO use exactly the same TSM rubric to settle the obviousnerss issue, the parties in dispute can work the answer out for themselves, without any need to get up to the Court of Appeal to find out the answer.

          1. 15.1.1.3.1

            [P]atents in Europe do not often crash on 101 or 112 issues. Much more likely is that the infringement action fails on squeeze arguments…

            This certainly jibes with my own experience. I think that this reflects that EP courts mostly apply their own legislation as written. The SCotUS, on the other hand, has decided to tackle obviousness in the guise of assessing subject matter eligibility to facilitate dismissal before Markman. A multitude of errors follow on from this insistence on twisting 35 U.S.C. §101 to be—as it were—the one ring to rule them all.

            This would have been an easy mistake for the U.S. to avoid. Now that we have stepped in it, however, it is proving devilishly tricky to extricate ourselves.

      2. 15.1.2

        “but neither is [there] a law-of-physics reason why a cat could not swim the Atlantic.”

        I’m pressing X to doubt that. Wave force, moon rotation wave effects, the amount of calories in a cat’s body, distance etc. Similarly for the PTO btw.

        “Even among the ones who do not drown, few will succeed and none will enjoy it.”

        But think of the glory sir! They’d get to be on Tiger King for sure.

        “Wt rather less than helpfully suggests that the problem could be solved with “better training and better management”—if only previous PTO directors could have had such an insight!”

        def not happening

        “I think that the same is true of efforts—no matter how well intentioned—to encourage “mom & pop” inventors to participate in the U.S. patent system. ”

        Yeah these days if mom and pop get invovled they can just raise money and become medium corp if their ideas are so good to be making a bunch of killer ideas to patent. For the most part anyway.

      3. 15.1.3

        Greg, you quote:

        “[A] centrally directed industrial system is administratively impossible—impossible in the same sense in which it is impossible for a cat to swim the Atlantic.”

        but when I think what is going on currently in China, I find it hard to agree with Polanyi. How long ago did he write that, I wonder.

        1. 15.1.3.1

          I think that it is way too early to cite China as a counter-example to Polanyi. China’s GDP/capita started rocketing up more or less precisely when Deng Xiaoping and his successors stopped trying to direct the industrial system entirely from Beijing. Now that Xi Jinping is trying to reassert control of the industrial system from Beijing, the rate of GDP growth/capita is dropping like a hot rock. It seems to me that the Chinese example is more evidence than counter evidence to Polanyi’s thesis.

          1. 15.1.3.1.1

            Well, well, Greg. Here we have a nice example of the human brain seeing what it wants to see. Or that we differ on what is cause and what is effect. Or that we differ over what constitutes “control”. I’m not convinced that i) GDP in China is dropping like a hot rock and even less convinced that, if it is, it is all down to Xi’s efforts to reassert “control”. There would be other reasons, i would think.

            Me, I think that China’s CP never lost “control” over the business system in China nor should its current efforts be seen as efforts to “reassert” any “lost” control.

            1. 15.1.3.1.1.1

              I’m not convinced that i) GDP in China is dropping like a hot rock…

              I did not say that CN GDP/capita is dropping. I said that the rate of GDP growth/capita is dropping. This is an empirical fact, whose accuracy you can verify with very little effort (e.g., see link below).

              link to fred.stlouisfed.org

              1. 15.1.3.1.1.1.1

                Yep, that’s what you said, Greg. Indeed. But what difference does it make? When things start from a low base, yearly rises are often mind-bogglingly high, but it doesn’t go on for ever, does it. Does anybody expect Chinese GDP to increase by 10% year on year indefinitely? It’s inevitable (rather than a result of Xi’s failings) that growth rates in China will ease off, isn’t it?

                1. Fair enough. If what we were seeing was just “the law of diminishing returns,” I would have expected a more gradual slowdown. Instead we see a very abrupt change in slope quite recently. I think that the data are more consistent with my thesis than yours.

                  Econometrics, however, is an inexact science. If you think that these data are just as consistent with your thesis, I cannot say that you are incontrovertibly wrong.

    2. 15.2

      Fair enough Greg.

    3. 15.3

      “they insist that such a PTO examination system must be reconstructed to achieve such an outcome for “mom & pop” inventors.”

      This is too generous. Once again in this thread we see comparisons between the USPTO and the EPO that just somehow fail to wrestle with the fee differential between those organizations. If you’re lucky enough to get a direct response, something else–anything else–will be identified as the factor causing the search disparity.

      It should be clear by now that these calls for improvement at the USPTO, carefully constrained by requirements for no changes to fees or application rules or effort on the part of the patent bar, are only empty posturing.

      1. 15.3.1

        Actually, I wrote that I think we should increase the search fee.

        If you want to improve quality, improve the searches and revise 101 to something workable. 101 sucks away the examiner’s time.

        1. 15.3.1.1

          Fair enough. Sorry I missed that.

          Has any lobbying group ever tried to get legislation that specifically stops the PTO from considering judicial exceptions? Removing them from the PTO rather than the system at large would seem like a much smaller lift.

  6. 14

    So the idea that examiners are experts in their fields is dead. You guys can thank Iancu for killing it.
    The embracing of ‘logical fallacy’ is strong in this one. So some examiners get applications that they aren’t initially qualified to handle and the “idea that examiners are experts in their fields is dead”?

    1. 14.1

      +1

      (I feel like I don’t have to comment anymore with Wandering here.)

      1. 14.1.1

        His posts have been delightful (even when he posts counters to my own posts).

    2. 14.2

      With the secret illegal SAWS program (or whatever they call it now) the knowledge of the examiners is irrelevant.

      1. 14.2.1

        It is LESS “what they call it now” and merely (as admitted to directly by the Patent Office) that SAWS was always but one of such programs.

        It clearly can be taken by this admission that other such programs have continued to operate in the shadows and in violation of 37 CFR 1.2.

    3. 14.3

      “The embracing of ‘logical fallacy’ is strong in this one. ”

      So says the guy who in response to an assertion regarding cumulative numbers, cites to a single day’s data.

      link to patentlyo.com

      ‘IBM has more patents than anyone else!’
      ‘That comment didn’t age well. They didn’t get a single patent today!’

      Simpleminded or bridge-dwelling? I think the latter.

  7. 13

    [T]he US patent system has been further gamed to advantage the larger, established players over the newcomers. The mom & pop inventor goes to their local, small-time, low-cost patent attorney and presumes that the patent that ultimately issues will actually be valid… However, as those of us in the business know all to well, the assumption that this patent will be valid is very likely to be unfounded… I believe that the US patent system should be set up to allow even a little guy to get an enforceable patent — despite his/her experience (and lack thereof) with the system.

    [Wandering Through, 30 Sept 2021 at 2:46 pm]

    [L]essen[ing] post-Grant legal challenges is… the primary job of the USPTO… The primary job of an examiner is to become an expert in a narrow area of innovation… I will also say that this continued effort by the anti-patent judicial activists to shift the burden of the prior art search to the applicant is just another attempt at weakening patents… [T]he only real way forward is experts at the PTO in A[rt ]U[nit]s.

    [Night Writer, 1 Oct 2021 at 10:46 am, 1:00 pm, and 9:55 am]

    [A] centrally directed industrial system is administratively impossible—impossible in the same sense in which it is impossible for a cat to swim the Atlantic.

    [Michael Polanyi, The Logic of Liberty]

    Reading the comments on this post, I realize that my interlocutors and I are coming at the question in dispute from completely opposite points of view. As can be seen from the quotes above, Wt & NW begin from a concern—admirable in itself—for “mom & pop” inventors. They rightly calculate that the patent system can never work for these “mom & pop” inventors unless and until we can achieve a state in which the fees required for a USPTO examination are enough to yield a legally enforceable patent. Therefore, having intuited the necessity of such state for the good of the “mom & pop” inventor, they insist that such a PTO examination system must be reconstructed to achieve such an outcome for “mom & pop” inventors.

    As can be seen from the above paragraph, I agree that the patent system can only work for the “mom & pop” inventor if a mere USPTO examination will suffice (in most instances) to yield a legally enforceable patent. However, I assess the situation from the opposite perspective as theirs.

    I look at the actual, lived experience of the U.S. patent system over the last few centuries, and I notice that there have never been more than ~20 years in the aggregate in which a mere USPTO examination was reliably like to yield a legally enforceable patent. There is no law-of-physics reason why the USPTO could not function at that level, but neither is a law-of-physics reason why a cat could not swim the Atlantic. When you notice, however, that over the broad sweep of history a certain event occurs only rarely or never, you have to conclude that there is a reason why it does not occur.

    I take it as essentially a given that the USPTO is not—in the main—going to conduct examinations in a manner that is altogether sufficient to ensure the product that emerges from such an examination will likely prove legally enforceable, in much the same way that I take it as a given that cats are not going to swim the Atlantic. I think that heroic efforts to teach and encourage cats to swim the Atlantic will mostly just result in a lot of drowned cats. Even among the ones who do not drown, few will succeed and none will enjoy it.

    I think that the same is true of efforts—no matter how well intentioned—to encourage “mom & pop” inventors to participate in the U.S. patent system. Wt & NW have no more idea than any of the many previous proponents of their views as to how—in the lived reality of real humans working from real human motivations—to make the USPTO function at the level necessary to achieve their goals for “mom & pop” inventors. Wt rather fatuously (30 Sept 2021 at 2:59 pm) suggests that the problem could be solved with “better training and better management”—if only previous PTO directors could have had such a clear sighted understanding of the problem!

    Their inveighing on this point will not succeed. If, however, they succeed in enticing “mom & pop” inventors to participate in the U.S. patent system on this basis, the results that they achieve will be only slightly more felicitous than the trans-Atlantic feline swimming project.

  8. 12

    Regarding the “expertise” of examiners…

    Under Iancu, the PTO implemented “reforms” which considers an examiner qualified in a technical area after completing just five office actions in that area.

    Basically the Office now automatically dockets applications to examiners according to the fields in which they are “qualified”. If there is no examiner who is qualified, the system will give the application to an examiner who is unqualified with a pittance of training time (1-6 hours for the first office action).

    So say that a mechanical examiner is given two GUI based invention because there’s a glut of GUI applications at the moment.

    Say for both of these inventions, they issue a non-final, a final, get an RCE, and send out allowances. They got a few extra hours for both the first non-finals, but no extra time beyond that.

    At this point, the office considers this examiner qualified to receive GUI applications. Not only will the automated docketinf system freely give the examiner GUI applications, but the examiner will not receive any additional time to learn the field.

    5 actions, and you’re qualified. That’s the rules now.

    So the idea that examiners are experts in their fields is dead. You guys can thank Iancu for killing it.

    1. 12.1

      It was NOT (only) Iancu – so your bias is out of place.

      Further, you (again) appear to be whining about internal-metric items.

      Your problems should NOT be made to be my clients’ problems.

      1. 12.1.1

        “Further, you (again) appear to be whining about internal-metric items.”

        This is an incredibly dishonest comment.

        We have commenters here making arguments relying on the internal functioning of the office:

        “Do outside patent search firms have easy access to examiners who have been examining in the relevant art unit for 10, 20 years?”

        “The primary job of an examiner is to become an expert in a narrow area of innovation.”

        That fact that the internal practices of the office has been changed in a way that contradicts these assumptions is extremely relevant.

        I can’t think of a better post to show what a bad faith interlocuter you are.

        1. 12.1.1.1

          That fact that the internal practices of the office has been changed in a way that contradicts these assumptions is extremely relevant.
          You need some cheese with that whine? Are you saying that the examiners who have been in the same art unit for 10-20 years are getting assigned random applications that they don’t have experience handling? Are they also constantly switching art units when this happens? This is not what I’m seeing, and my guess (after prosecuting probably a couple of thousand applications before the USPTO over the past couple decades) is that I have a far greater visibility as to how often examiners switch art units than you do.

          1. 12.1.1.1.1

            “Are you saying that the examiners who have been in the same art unit for 10-20 years are getting assigned random applications that they don’t have experience handling?”

            The office has instituted policies that allow them to do this. They can assign any examiner any technology application that has nothing to do with their 10-20 years of experience, and after just five office actions the office formally considers them fully qualified in the technology. It isn’t happening much yet because the mismatch between examiner skillsets and incoming applications is not terrible and because they’ve implemented temporary exceptions to the official policy, but it will happen more on an ongoing basis.

            “Are they also constantly switching art units when this happens?”

            No.

            “This is not what I’m seeing, and my guess (after prosecuting probably a couple of thousand applications before the USPTO over the past couple decades) is that I have a far greater visibility as to how often examiners switch art units than you do.

            Unsurprising, since no one said they were switching examiners between AUs.

            1. 12.1.1.1.1.1

              They can assign any examiner any technology application that has nothing to do with their 10-20 years of experience
              But do they? What percentage of applications that go to 10+ year examiners are in technologies for which they have very little experience? Regardless, how does this negate any of my comments that examiners in a particular art unit both gain experience in the art contained within that art unit and have access to highly-experienced examiners in the same art unit?

              It isn’t happening much yet because the mismatch between examiner skillsets and incoming applications is not terrible and because they’ve implemented temporary exceptions to the official policy, but it will happen more on an ongoing basis.
              So you are saying that this is not an actual problem but a perceived potential problem for the future? Meaning that your observation is not relevant to my point about the USPTO’s past and current ability to perform better searches. Next time, try to present a relevant point/rebuttal.

              1. 12.1.1.1.1.1.1

                But let’s not forget Wt, Ben feels that YOU are the “bridge dweller”….

        2. 12.1.1.2

          Ben,

          With your comment bookends of

          This is an incredibly dishonest comment.

          and

          I can’t think of a better post to show what a bad faith interlocuter you are

          The only thing you show is your lack of ability to think or understand what “bad faith” or “dishonest” mean.

          Certainly there are points being discussed of making examination the critical focal point (mine included). But pointing out YOUR whining is neither dishonest nor bad.

          Do you even recognize your own whining?

          Serious question.

          1. 12.1.1.2.1

            No answer from Ben…

            Is that not ‘bad faith?’

    2. 12.2

      So the idea that examiners are experts in their fields is dead. You guys can thank Iancu for killing it.
      The embracing of ‘logical fallacy’ is strong in this one. So some examiners get applications that they aren’t initially qualified to handle and the “idea that examiners are experts in their fields is dead”?

      1. 12.2.1

        “So some examiners get applications that they aren’t initially qualified to handle and the “idea that examiners are experts in their fields is dead”?”

        I’m becoming more and more convinced that you’re a bridge-dweller. This is such an absurdly weak response I’m pretty sure you’re just trying to rustle jimmies. You can get your entertainment elsewhere. But to spell it out for casual observers:

        Wandering posits a system that relies on examiners being experts in their field.

        I point out that the Office has instituted policies which allow them to give any examiner any action from any technology.

        Wandering has no response but to act indignant. At best he could be interpreted as skeptical as to how often cross-technology docketing is happening.

        But even if this only happens 1% of the time, it shows that one cannot rely on USPTO examiners being experts in the field. That assumption is no longer valid.

        1. 12.2.1.1

          1% is fantastic. That’s way better than the PTAB expertise, where almost every case is assigned to a panel with zero experience in the subject matter.

        2. 12.2.1.2

          But even if this only happens 1% of the time, it shows that one cannot rely on USPTO examiners being experts in the field. That assumption is no longer valid.
          LOL. Try to think beyond the singular point you are trying to rebut and understand how that point (and your rebuttal) fits within the entirety of what is being discussed.

          The issue raised was about “getting a competent prior art search before filing.” My point was (and still is) that an examiner has more experience in whatever art is being searched than a paid professional searcher. Your chosen line of attack is that examiner’s aren’t really experts because some could actually be asked to examine patents for which they aren’t experienced.

          You bemoan the fact that an examiner could be considered an expert after only issuing “just five office actions.” Let’s just assume, for sake of argument, that everything you’ve said is true and that 50% of examiners out there are performing searches and issuing office actions regarding art that they’ve only had a very small experience with. Even in that situation, the USPTO is still better positioned, by far and away, to provide a better search that a private searcher.

          How big do you think these search firms are? It is quite common for them to be a handful of people. Some of the big ones might have a dozen (a couple dozen?) searchers. This means that a single searcher might be covering ALL of biotech, or ALL mechanical devices, or ALL computer devices. At best, what might be considered the art in a Tech Center at the USPTO gets divided amongst a handful of searchers. Only if you are lucky or you’ve worked with the same searcher on a similar technology before will you find somebody that knows anything of substance about your technology.

          The person at the USPTO who issued “just five office actions” probably has a better feel for the art than the vast majority of searchers in the same particular field. Also consider that the “just five office actions” becomes “just twenty office actions” and “just one hundred office actions” in fairly short order.

          Aside from this, an examiner at the USPTO always has the ability to reach out to a colleague, a primary, a SPE and ask for guidance if they come across something they haven’t seen before (BTW, if that culture doesn’t exist at the USPTO, then that is a major of the USPTO). A searcher at a private search firm has nothing comparable.

          I’m becoming more and more convinced that you’re a bridge-dweller.
          And I’m more and more convinced that you are a junior examiner with little real-world experience.

  9. 11

    I find the argument that the patent system should be accessible to the little guy, made by patent attorneys, intensely amusing.

    A system truly amenable to the little guys would be a system where inventors could easily and effectively represent themselves.

    1. 11.1

      The SYSTEM should be robust enough TO handle that.

      There is nothing at all odd about patent attorneys taking this position.

    2. 11.2

      I find the argument that the patent system should be accessible to the little guy, made by patent attorneys, intensely amusing.
      You wouldn’t be amused if you had to talk to people that spent decades attempting to protect their business’s intellectual property only to have all the time, money, and effort spent doing so go down the drain big nearly always beats small in today’s patent system. Its “intensely amusing” to you because you don’t see dreams wrecked and businesses destroyed by a system that is almost entirely ineffective in protecting the little guy.

      A system truly amenable to the little guys would be a system where inventors could easily and effectively represent themselves.
      It once was. I know a inventor who prosecuted his own patents and made millions off of them. Honestly, I thought his claims were lousy, but he made his money in a different era.

      It was a time when the Federal Circuit looked out for the inventor and didn’t lay traps for the wary (like the current CAFC does). Back then, the presumption of validity meant something, and the CAFC would give inventors leeway. However, this isn’t today’s CAFC, in which something like 90% of the patents that cross their threshold end up being invalidated.

      Regardless, the patent system is created via patent law — that is the only way to do it. And when you have law you have lawyers — people whose expertise is to understand the law. While I appreciate that a number of examiners and patent agents have taken upon themselves to try to understand the “law” and have done a decent job considering their lack of training. However, the vast majority don’t understand the “law.” They don’t understand the difference between dicta and a holding or why it makes a difference. They don’t understand how statutes should be construed or how case law should be interpreted or the various nuances of the “law.”

      Again, the Federal Circuit once crafted law that allowed far more leeway than it does now. This is great for moneyed interests who can afford to hire expensive patent attorneys to get their own patents (and to invalidate the patents of those who attempted to obtain patent protection on a shoestring budget).

  10. 10

    That process has little to do with USPTO examination? You can shoot yourself in the foot during the examination.

  11. 9

    Seriously Dennis. Patents are a fraud. It doesn’t matter how thoroughly they are examined, how rigorously the law is followed, or groundbreaking the invention.

    It is not enforceable today, absent a massive financial and political campaign over a period of a decade or more.

    I have plenty of examples. Are there any to the contrary?

    1. 9.1

      Josh,

      You are aware that your despondent attitude is EXACTLY what the Efficient Infringers want, right?

      Why are you doing their messaging for them?

      1. 9.1.1

        I am dedicated to the cause of democratizing invention. I urge everyone to join me at usinventor.org/resolution

        The sas fact is less than 5% of the readers of this blog share our basic principles: the USPTO should not take back patents from inventors; inventors should get to decide who can use their inventions and how they can be used; and wilfully infringers should not be permitted to keep their profits.

      2. 9.1.2

        You are aware that your despondent attitude is EXACTLY what the Efficient Infringers want, right?
        I agree that his attitude is what they want. However, while it is a bit of a hackneyed expression, the squeaky wheel gets the grease. The people who are in a position to make the changes need to understand what the current system is doing to inventors. However, they won’t know that unless people like Josh share their stories and their frustration.

        If small inventors soldier on and continue to file patent applications, will the powers that be believe that the patent system is broken?
        Alternatively, if small inventors (noisily) flee the patent system altogether, will the powers that be take notice that there is something wrong?

        Don’t get me wrong, I understand your point is that Josh is giving the efficient infringers of the world what they want. However, we may have to show that the system is entirely broken before someone gets around to fixing it.

        1. 9.1.2.1

          Your counterpoint is understood (and valid).

          Josh certainly has reason to be upset — but nonetheless should be a touch more aware of the “just walk away” message is not — nor should be — the ONLY message his anger takes.

        2. 9.1.2.2

          Reply stuck in Count Filter…

    2. 9.2

      “Are there any to the contrary?”

      You do know there are thousands of people successfully sued for patent infringement like every day right? And that’s setting aside the backroom enforcement that goes on where people agree to stop infringing, or pay license.

      1. 9.2.1

        I am aware of nuisance lawsuits and settlements. I’m not aware of any patents that wee successfully enforced other than VirnetX v Apple.

        My own case was settled after 4 and half years and $20M in expense, and a lot of publicity to overcome the PTAB bias/injustice. And that was a very thoroughly examined family of patents.

        1. 9.2.1.1

          Trading Technologies first two MD trader patents.

          1. 9.2.1.1.1

            Is this the CQG case?? That case was filed in 2005, way before the AIA. Even then it took 11 years and bad lawyering by the Defendant (did not even appeal infringement or validity or damages).

            It think it counts as an example though, thank you.

        2. 9.2.1.2

          “I’m not aware of any patents that wee successfully enforced other than VirnetX v Apple.”

          You need to check court records and consult with lawlyers. It’s happening all the time.

          1. 9.2.1.2.1

            That’s what I do. Most days.

            1. 9.2.1.2.1.1

              Then you’ve seen more than 1 re re.

  12. 8

    Not necessary nor sufficient. What you need is about 50 million dollars, 15 years, and a close relationship with the USPTO management and federal circuit judges.

  13. 7

    The mis-information about patent searching is grossly regrettable.

    Searching is done to identify a body of art that supports an invention. That’s the logic behind the “cited references” field on a patent. A quality search will cite a limited amount of art because the more you cite the further away you move technically from the invention. The purpose of a search is to identify prior art and make it of record so that the art does not surface after Grant. A search done correctly will completely remove the threat of ‘102 surfacing post-Grant.

    Regarding the comment: “A patent searcher is unlikely to have the kind of resources that the USPTO has” is absolutely FALSE!!

    There are three types of source material for searching: US patents; Foreign patents; and NPL (Non Patent Literature). The PTO EAST system is the examiners system (at least before COVID) and is available to everyone at the Public Search Room in Alexandria. This is the reason most search firms for decades were located in the DC area. EAST includes US and Foreign patents. There are several commercial databases that provide universal coverage of US and Foreign patents. In fact the way the commercial databases provide results in terms of patent families particularly foreign patents, the commercial databases are superior. About NPLs, public facilities such as the Library of Congress, Public Universities and Libraries, the PTO itself, provide access to the proprietary databases to which they subscribe since the databases are paid for with taxpayer money. Professional patent searchers are aware of this and for competitive reasons use the resources. That’s why search firms offer NPL searches. And if the search firm is a vendor, the PTO provides access to the NPL databases,

    So the comments about resources is a flawed assumption. Private sector search firms have equivalent resources if they are using EAST and superior if they are using a commercial database.

    A second flawed assumption is examiners obtain knowledge of the prior art by 1-2 decades of examining experience. That idea is an outdated artifact from the paper days when examiners and private sector search firms all used paper. By searching paper using classification day-in and day-out, examiners learned their art and knowing the art really meant knowing the classification system. That is not how examiners search today. It is keywords and text searching almost exclusively. And examiners do not search to identify a body of art but instead to find a reference to apply to the immediate claims and move on. There is plenty of literature on how the PTO is deficient in searching and how the PTO incentivizes quantity of quality which I will not go into here but this should be sufficient to say that examiner don’t know their art anymore as they did in the 1980s.

    Finally searchers don’t concoct ‘103 combinations. A searcher identifies technical teachings. A searcher knows what the invention is and selects art if the art contains a teaching that is relevant to the invention. Combining and characterizing the art is the lawyers job. You hire searchers to identify information. A lawyer and an examiner may disagree of the meaning of that information ( I’ve seen examiners reject application based on the art provided by the applicant) but a searchers job is only to find it.

    In June Senator Tillis expressed interest in the Gold Plated Patent. A Gold Plated Patent would be based on a comprehensive search. However since searching is not mentioned anywhere in patent law or in the regulations, it is not part of the patent system and can not be expected to provide a function that will confer Gold Plated status.

    An applicant who has done their own searching lessens the threat of post-Grant legal challenges. Expecting the PTO to lessen post-Grant legal challenges is short-sighted.

    1. 7.1

      PA Crier: Please stop talking down to us. Many of us have been doing this for 20+ years and have advanced technical degrees and law degrees.

      “Expecting the PTO to lessen post-Grant legal challenges is short-sighted.”

      No. It is the primary job of the USPTO. And everything else you said is essentially. The primary job of an examiner is to become an expert in a narrow area of innovation. There are some examiners that understand that and are experts. They are a joy to work with.

      The “gold plated-patent” is just another attempt to devalue all patents as there will be a class system. The “gold” ones will be the only ones that get any respect to litigate and the others will be devalued. It is an idea Mark Lemley fabricated as another way to end the patent right.

      Etc. Pretty much everything you wrote is nonsense. Where do people like you come from?

      1. 7.1.1

        NW I totally agree with your comments about “gold plated patents” and had said so to their proponents. But you have not factually rebutted anything PACrier said about NON-PTO prior art searches. Nor responded to the facts in 6.1 below re PTO search fees and thus [as another commentator noted] still unrealistically expecting to get Delmonico Angus steaks delivered from hamburger price search fees. Furthermore, these days many PTO examiners get moved around to examine different technologies as applications in different technologies decrease or increase.

        1. 7.1.1.1

          Paul, I think I stated pretty clearly and Wandering does as well why examiners need to be the experts in the innovation area.

          That needs to be the goal. I would be fine with a higher searching fee as I think it would save my clients money on Office Actions.

          I can tell you there is nothing better than dealing with an examiner that really understand their AU. They quickly get to what is the new material and quickly find the best prior art. They also are quick to allow claims based on the new material of the invention.

          I will also say that this continued effort by the anti-patent judicial activists to shift the burden of the prior art search to the applicant is just another attempt at weakening patents.

    2. 7.2

      Such disinformation this b o z o is putting out.

      Look—the primary job of an examiner is to become an expert in a narrow area of innovation so that they can efficiently evaluate new inventions and so that they know the prior art in that area.

      The f’ing paid intellectual w h o r e. (kind of reminds me of Ben.)

    3. 7.3

      A second flawed assumption is examiners obtain knowledge of the prior art by 1-2 decades of examining experience.
      How many different applications does a typical examiner see in a year? Let’s guesstimate it to be 100 different applications. Odds are that the examiner is probably going to be reviewing 300-400 different references in the art as part of making the rejections. Do that over 10 or 15 years, and one is going to have an innate knowledge of the relevant art that no patent searchers is ever going to have.

      Also, don’t underestimate the value of an examiner knowing the ‘language’ of the art. Every technology has its own set of terminology that has very specific meanings. Moreover, the more one deals with a particular technology, the more one gets a handle on the different ways the same thing can be expressed. This is critical when doing keyword searches (which everybody does). An experienced examiner should be able to read the specification and identify key terminology (and its synonyms). Also, when they run across a non-standard term, they should be able to determine, from the specification, the more commonly-used term that is a synonym of the non-standard term. As such, instead of doing a keyword search using just the non-standard term, an experienced examiner will be able to perform a search using both the non-standard term and commonly-used term(s).

      Knowing the right terms to search for is half the battle in generating a good search. Some random searcher is very unlikely to provide that — however, an experienced examiner should.

      Finally searchers don’t concoct ‘103 combinations.
      Correct on this point. However, it is the 103 rejections that patent owners really worry about.

      An applicant who has done their own searching lessens the threat of post-Grant legal challenges.
      By a small amount. The USPTO should at least be finding 102 art. Again, it is the 103 rejections that create the most worries is post-grant proceedings.

    4. 7.4

      Since you reference EAST, I need to ask: have you heard anything about if/when the public search room will have the new search software? The PTO has yet to fully roll it out internally, so it seems like it could be awhile.

      The new search software is an improvement upon EAST, so this seems like the sole flaw in your argument regarding search resources.

  14. 6

    This is going back to trying to shift the burden to the applicant for being the expert in the area of the invention and not the USPTO. My question is then why not have a registration system? What are we paying for?

    Also, many commentators including former CAFC judges have said that the PTAB is a roll the dice game. That post KSR any claim can be invalidated as obvious so whether your claims are invalidated depends on the panel of patent judges you get.

    **The PTO should be the prior art experts and know whether something is patentable or not over the prior art. That is their primary job.**

    1. 6.1

      You ask “what are we paying for”. This is what you are paying the USPTO for, for Search Fees: only $660 -> $700 for large entities, and a mere $330 -> $350 for small entities.
      What kind of prior art search should one logically think one would get from such a cheap search even from an expert private searcher? Should anyone rationally think that is comparable to the kind of extensive prior art searches done by a company being sued for more than a million dollars?

      1. 6.1.1

        Paul, the whole point is that the examiners are supposed to getting applications in the same areas so that they become domain experts and know what the prior art is in the area. That is the whole point.

        And–frankly–I’ve used lots of prior art searching companies and I don’t think shy of spending $50K that any of them are worth a darn. What you need is a person that is an expert on the subject matter.

        Plus–let me be clear on this point. I do a lot of prosecution and there are examiners at the PTO that are experts in their areas and know exactly which part of a patent application is patentable on the first action. Some of the best are in computer architecture.

        The EPO tends to do an excellent job on the search and better than 99% of the prior art searches from commercial companies.

        I don’t know what the solution to all of this is but I do know that the only real way forward is experts at the PTO in AUs.

        1. 6.1.1.1

          The EPO tends to do an excellent job on the search and better than 99% of the prior art searches from commercial companies.

          I don’t know what the solution to all of this is but I do know that the only real way forward is experts at the PTO in AUs.
          Agree on both points.

          1. 6.1.1.1.1

            Why does the EPO seem to do a better job? It’s rare for me to see a US Examiner that does a better job, though it does happen.

            Often, I think to myself, “That Examiner should really look at the search report by the EPO”. But this does not happen as much as it should.

            1. 6.1.1.1.1.1

              See 6.1 and compare to EPO search fees.

              1. 6.1.1.1.1.1.1

                per link to wipo.int

                EPO Search Fees: page 4 with EP as the ISA: USD 2,091

                Does that even COME CLOSE to the level that you would want, Paul?

                Your whining is just that: whining. The comparative cost levels are just not all that compelling.

                1. That is a 350% higher EPO search fee, and this particular query was U.S. PTO searches versus EPO searches, not U.S. PTO searches versus the far more extensive prior art searches usually conducted by defendants being sued for patent infringement.

                2. Use of percentage here is more than a bit of obfuscation (given the total costs involved), and if you are ONLY going to focus on the comparison of US to EPO than it is your choice to close your eyes to the larger point at hand.

                  Not surprising, but still not a good look for you.

        2. 6.1.1.2

          “And–frankly–I’ve used lots of prior art searching companies and I don’t think shy of spending $50K that any of them are worth a darn.”

          That’s usually what I see in cases where I’ve heard via some means that a search was done outside of a foreign patent office. Truly garbage, though they will occasionally hit pretty well on the subject matter.

          Which is what makes the search results of the office look all the better, esp at the bargain basement prices charged. Even in comparison to the EU offices, 2nd best in the world.

      2. 6.1.2

        Anecdotally, I had one client whose very important patent application to them I wrote for a large fee. They paid a huge some for a prior art search and I was to write the application with the prior art search in mind.

        The first office action had a patent application from a competitor of theirs that was a 102 on the claims. Terrible search. Of course, I pulled out some magic and got made sure everything worked out. But search firms s u c k.

        1. 6.1.2.1

          Night Rider,

          I agree with you “I do know that the only real way forward is experts at the PTO in AUs.”

          Every Art Unit should have embedded dedicated searchers, people whose job is only finding prior art. Examiners have two separate jobs each with different skill sets. Examining on the merits and learning patent law law is the examiners primary responsibility, searching is secondary. Therefore, examiners are part time searchers. Embedded searchers will become art experts and share that knowledge with examiners as they become experienced. Examining/prosecuting vs searching are two different functions You will get a better search product from a full time searcher vs a part time one with additional responsibilities.

          About your experience with a search firm and a 102 reference, that’s a different problem and one directly related to what I said about the silence of patent law and PTO regulations on the subject. Anyone anywhere can call themselves a searcher. If prior art and searching is so important to validity shouldn’t the patent bar and the PTO recognize the activity as a core patent system function? A system that penalized low quality searchers would eliminate the experience you had.

          Before, the PCT contracts were awarded, there were no big search firms. Zero. All were still “mom and pop” vestiges of the WWII era. It takes two years to train a commercial private sector searcher. So when the contracts were awarded the companies had to gear up quickly and hired multiple dozens of recent graduates who hadn’t trained for two years. The PCT profits allowed them to repeat the process on the commercial side. I knew people who worked for those companies back then and there was a lot of bad work. I tend to think that the turmoil from that time has subsided and it is less likely that a professional searcher would miss a 102 reference today.

          1. 6.1.2.1.1

            Well, we can agree that better search is a necessary condition for better prosecution.

            I gave an anecdote about searching. I’ve had my clients pay for a bunch of professional searches from the best firms. Quality: much lower than an EPO search.

      3. 6.1.3

        Paul,

        As you appear to want to denigrate that “what you are paying for” aspect, is your answer then to NOT bother with such a pittance? Are you (slyly) advocating for a registration system?

    2. 6.2

      “My question is then why not have a registration system? What are we paying for?”

      As pointed out by others, you’re not paying what a good search would cost.

      But as I’ve said before, I think going to a very cheap registration system makes a lot of sense. If registered inventions did not receive the presumption of validity, I’d even support it.

      Others have criticized this, and here I raise a different suggestion: why not both? A system which both allows you to get a registration patent for <$50, and which allows you to apply for a examined patent for a few tens of thousands of dollars.

      What's the downside relative to a registration system?

      1. 6.2.1

        A usually expressed opposition to mere patent registration systems is the great difficulty to determine non-infringements and do product clearance or right to use studies. But with the huge increase in active patents these days, and willful infringement concerns, I wonder how many such product clearance or right to use studies are now being done?
        Another issue is who gets to write actual claims, and when, when a patent with no claims or only extremely broad unexamined claims is sued on?

      2. 6.2.2

        why not both?

        A litany of responses against such a thing (in the form of “Gold Plating”) has been put forth across the blogosphere.

        In essence though, the biggest drawback is that it is an EXTREMELY bad idea to make the domain into a Sport of Kings in which ‘real value’ is only available at the high price end.

        I have in the past linked to an Award winning historical article (first appearing on the PatentDocs site) that explained a lot of the efforts that the US Sovereign set forth to distinguish their “Noble Experiment,” and one of the primary aspects was to deliberately avoid Sport Of King proclivities.

      3. 6.2.3

        Please Pardon Potential rePeat Post…

        why not both?

        A litany of responses against such a thing (in the form of “Gold Plating”) has been put forth across the blogosphere.

        In essence though, the biggest drawback is that it is an EXTREMELY bad idea to make the domain into a Sport of Kings in which ‘real value’ is only available at the high price end.

        I have in the past linked to an Award winning historical article (first appearing on the PatentDocs site) that explained a lot of the efforts that the US Sovereign set forth to distinguish their “Noble Experiment,” and one of the primary aspects was to deliberately avoid Sport Of King proclivities.

  15. 5

    I read that Groucho Marx once said: “The secret of success in life is SINCERITY. If you can fake that, you’ve got it made.”

    Most of us are not as clever as he was, and we can only hope to identify the secret in our own field. The secret of success in patents is AN UNEXPECTED NEW FUNCTION or AN UNEXPECTED NEW RESULT. If you can fake one of them, you’ve got it made.

    More seriously, it is important to identify the unexpected new function or result and the essential combination of features that gives rise to that result. These need to be set out clearly and prominently in the patent specification as filed, so that they can be referred to in examination and relied on in subsequent litigation.

    The same is true for dependent claims. I see so many specifications with the recurrent language: “In an embodiment of the invention X applies.” supporting a dependent claim. However, in the absence of any explanation in the specification as filed what is achieved by feature X there is no reason WHATSOEVER why an examiner or court should give any weight to that feature. Irrational preference is NO preference. In my opinion this deficiency, often in combination with unduly broad and functional claim language, explains many of the adverse decisions of the Federal Circuit under Section 101.

    On Section 101, the basic rule that flows from Alice and other Supreme Court case law is very simple: the allegedly novel features of the claimed combination must themselves fall clearly into one of the four eligible categories: process, machine, manufacture, or composition of matter, in relation to which there is case law set out in the MPEP. In a doubtful case such as Diamond v Diehr, the novel feature must be incorporated into a technical process to produce a new technical result, in that case molded rubber products produced with improved reliability and consistency.

    Unfortunately, these basic principles are not taught nowadays to those who draft specifications, and we tend to see arguments before the USPTO based on whether it was obvious to combine specific features of the prior art without reference to the new result achieved. When we come to prosecute European patent applications such arguments are often insufficient to achieve allowance. The key principle is set out in the EPO Guidelines at Part G, Chapter VII at 5.2:

    – – In the context of the problem-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the “objective technical problem”. – –

    The important thing for an attorney is to understand these principles, explain them to the applicant in relation to the particular invention under consideration, and to look for the important new functions, results or technical effects and ensure that these are mentioned in the specification.

    1. 5.1

      Paul, that’s all well and good but what if the Master of the Universe litigators have a line in to top management at a higher level than the lowly drafters, the prep & pros foot soldiers, and decree that their interests are prejudiced, every time a drafter sets out the invention as the solution to a technical problem. Apparently, I gather, drafting in that way only encourages the courts to be seduced by, and hold fast to, obviousness attacks.

      It is my assessment that obviousness in the USA still lives in the old world of First to Invent, where the issue whether the claimed subject matter was obvious is all muddled up with the notion of the “conception” or “discovery” of the invention. Under First to File, obviousness is something assessed on the day the patent application is filed, an application in which the drafter is deemed to have taken account of everything published prior to filing the application, which of course includes a load of stuff first published long after the moment of “conception” of the claimed subject matter. In the First to File world, everybody knows that the drafter presents the invention in the light most advantageous in the context of the whole content of the prior art universe one day before the claim’s filing date. Hence your Groucho quote.

      I look forward to the day when TSM (preferably EPO-style TSM) makes a return to the courts of the USA.

      1. 5.1.1

        The trick of it is to find functions or results which are genuinely new and unexpected and set them out so that a technically skilled reader is obliged to support these facts. In that case even the Masters of the Universe will have to acknowledge inventive step, and that may well emerge before litigation at the due diligence stage.

        In the Athena case, as I recall 135-I labelled MUSK was a compound that had been created for the first time and was new to science. Would it not have been a good idea to describe the preparation in detail and point this out? It could then have been argued that the generation of new chemical compounds should not be treated as a mere routine activity.

    2. 5.2

      PCole: “ On Section 101, the basic rule that flows from Alice and other Supreme Court case law is very simple: the allegedly novel features of the claimed combination must themselves fall clearly into one of the four eligible categories: process, machine, manufacture, or composition of matter, in relation to which there is case law set out in the MPEP.”

      I see there has been some learning taking place. That’s good.

      1. 5.2.1

        Malcolm — you remain without a doubt near the very bottom of those who can note when others have been doing ‘some learning.’

        1. 5.2.1.1

          @ Anon

          Your last remark provides amusing personal abuse, but contributes no useful information whatsoever to the debate. I am aware that you can do substantially better than this.

          1. 5.2.1.1.1

            Meh, Malcolm gets what I feel like giving him.

            Had he any proclivity for actually engaging, you might then see some more of my ‘better stuff.’

  16. 4

    Patent law is changing way too fast to have any confidence that something you draft today will ‘stand up’ in 15 years.

    And bizarrely, much of said change arises of the Judicial Branch, not the Legislative Branch.

    1. 4.1

      It’s not that bizarre. Many of the basic principles of patent law were pioneered by the courts and then codified by Congress.

      1. 4.1.1

        I entirely agree – you can find relevant 35 USC 103 decisions of the Supreme Court going back to 1850.

      2. 4.1.2

        Yes, but the premise of common law is that radical change shouldn’t happen often or quickly.

        1. 4.1.2.1

          Re-legislating from the Bench should be distinguished from the notion of common law application.

          1. 4.1.2.1.1

            Please expand on how you distinguish Re-legislating from the Bench from the notion of common law application.

            1. 4.1.2.1.1.1

              AC,

              Common Law law writing comes in several versions.

              You have the version for which law writing has NOT been constrained to any particular branch of the government.

              You have the version for which law writing HAS BEEN constrained to a particular branch of the government.

              Can we agree on that for starters?

              1. 4.1.2.1.1.1.1

                Well, yeah. I think we all accept the fact that the common law is also called “judge-made law” which distinguishes it from legislature’s statute, an executive order or an administrative rulemaking. And we likely agree that courts from time to time rule any of the other three unconstitutional or otherwise not authorized by an allegedly-authorizing source of power (for example, adminstrative rules are often challenged as not adopted in accordance with the APA or otherwise authorized by statute)

                But the point I thought you were making is that courts may “re-legislate” or apply (or create) the common law. I was wondering how you differentiate between those two actions by a court.

                1. not authorized by an allegedly-authorizing source of power

                  There is nothing ‘allegedly’ about the source of authority when it comes to patent law.

                  Can we agree about that?

      3. 4.1.3

        Proper separation of powers views were notably lax in the pre-1952 era.

        Which was exactly what brought about the Act of 1952.

        Sadly, rather than learn from history, we are stuck repeating it (and yes, the self-proclaimed Supreme Court moniker of “The only valid patent is one that has not yet appeared before us.” is at point.

    2. 4.2

      OC, you say “patent law” but do you mean to include 102, 103 and 112 or are you mainly thinking of eligibility at the margin, ie 101?

  17. 3

    Applicants who really want a patent that will stand up in court know how to get one. That process has little to do with USPTO examination, and is instead require focusing on the actual invention, hiring good lawyers, & getting a competent prior art search before filing.
    Having a patent that will stand up in court is a crap-shoot these days. Anything biotech/computer-related has a (more than) decent chance of being invalidated under 35 USC 101. You can also throw some mechanical inventions in there as well based upon the latest decisions coming out of the Federal Circuit. If you think it is bad now, image what the case law will be 5 years from now (absent any change)? There is little that cannot be invalidated under 35 USC 101 with the right panel at the Federal Circuit.

    Getting a competent prior art search before filing only helps a little. A patent searcher is unlikely to have the kind of resources that the USPTO has. Also, a patent searcher is definitely unlikely to concoct the kind of 103 combination that an infringer will throw at a patent in a post-grant proceeding. Moreover, who really knows how the USPTO or the Courts will interpret any claim language? And claim interpretation makes a HUGE difference in any evaluation.

    Focusing on the actual invention is totally random. You invent what you invent. It may be new to you but whether it is new to the world (i.e., novel and non-obvious) is not something you can work on.

    Hiring good attorneys is also kind of random. You can hire the one of the best law firms in the world and still get stuck with an associate (because partners at the best law firms rarely muddy their hands in day-to-day patent prosecution) who may or may not be competent. A good patent attorney takes experience and knowledge of the system to recognize.

    If you want to know how hard it is to get a enforceable patent these days, look at how many patent cases at the Federal Circuit involve issues associated with the calculation of damages. It is rare for me to read about a case involving damages — this is because most patents up at the Federal Circuit are being invalidated, not enforced.

    If getting patents that will stand up in court was easy, you would see a lot of cases fighting over damages at the Federal Circuit. You don’t.

    “the applicant should not rely on the examination process, and should instead expect to have to do their own work to identify the enforceable claims.”
    Ah, yes. Greg’s recognition that the current patent system is rigged against the little guy who does not have the experience and.or money to at least ameliorate some of the issues I discussed above. I wonder what people would think of the US tax system if people said that if you had your tax return prepared by a CPA there would still be a great chance that you will be audited (and lose). That would certainly engender a lot of faith in the system. For those that don’t recognize sarcasm, that is it.

    Destroying the faith in the US patent system is the goal of the efficient infringers. When an inventor cannot relying upon the examination process to get a patent that will stand up in court, small-time inventors will be less likely to file their applications. The whole post-grant procedures is an explicit admission that the current examination system is flawed and is a warning to current (and potential) inventors that any patents that they may have (or hope to have) are likely to be invalidated in the future.

    If you want to make money in today’s environment. Don’t invent a product in the US. Rather, let someone else invent the product, and then you take that product to China and have it copied for pennies on the dollar and then ship it back to the US. If they sue you, then just invalidate the patent with a post-grant procedure. That’s the implicit message being given to entrepreneurs as a result of the current state of the US patent system. I wish it were different, but that is the reality.

    1. 3.1

      “A patent searcher is unlikely to have the kind of resources that the USPTO has. ”

      Outside patent search firms are USPTO resources as they are vendors for conducting prior art searches when the US is named as the Searching Office for PCT applications.

      1. 3.1.1

        Do outside patent search firms have all the tools available to examiners?
        Do outside patent search firms have easy access to examiners who have been examining in the relevant art unit for 10, 20 years?

        My point that a patent searcher is unlikely to have the kind of resources that the USPTO has still stands.

        1. 3.1.1.1

          My experience is that outside patent search firms have all the tools available to examiners, and more. Several outside patent search firms that I have used are staffed by former and retired examiners.

          1. 3.1.1.1.1

            Several outside patent search firms that I have used are staffed by former and retired examiners.
            That’s nice. However, what are the chances that you’ll get an examiner who examined in the art unit in which your patent application will likely be classified? How many art units are there in the USPTO? How many searchers does a search firm employ?

    2. 3.2

      Destroying the faith in the US patent system is the goal of the efficient infringers. When an inventor cannot relying upon the examination process to get a patent that will stand up in court, small-time inventors will be less likely to file their applications. The whole post-grant procedures is an explicit admission that the current examination system is flawed and is a warning to current (and potential) inventors that any patents that they may have (or hope to have) are likely to be invalidated in the future.

      Good point. The entire notion of the PTAB has the ancillary effect of reinforcing the astro-turf messaging about “bad patents,” “broken system,” etc.

      1. 3.2.1

        As I have noted, it’s like trying to fix a warranty problem (in the manufacturing world) with ZERO actual fixing of anything in the manufacturing process, but only a “band-aid” once the “horse has left the barn.”

        Which is also why I posited the question about that “world setting best quality” on the front end (drawing particular contrast to our Examiner-commentators, who are apparently ‘fine’ with being “above average (just like most everyone)…

    3. 3.3

      Another great post by Wandering.

      I cede my role as best poster to Wandering.

      anon would be up there if he stopped being so weak minded.

      1. 3.3.1

        lol – thanks for the sideways compliment.

        We both do agree though that Wt has some powerful views.

    4. 3.4

      Wandering, are you a member of US Inventor? We could use your help writing copy and and analysis.

      1. 3.4.1

        LOL. I may have a client who is — I’ll have to double check. As it stands now, however, I’ll do my commenting anonymously.

      2. 3.4.2

        Wt would indeed be a worthy add to your cause, Josh.

  18. 2

    I agree-in-part and disagree-in-part. The path to obtaining a patent is money as well as realistic expectations with regard to the time, money, and nature of the process involved. The money a client wants to spend determines the quality of the attorney/agent they hire, whether or not they will spend on a pre-filing prior art search, how much prosecution they will shell out for, whether or not they will appeal a rejection to the PTAB or file an RCE, etc.
    As for standing up in court, it is my view that anyone who gives a blanket opinion on whether a patent will stand up in court is asking for a malpractice claim. There is always, always, always the caveat that there may be unknown prior art out there (or developments in subject matter eligibility law) that could eventually render the patent invalid. The question is not limited to whether it will stand up in court but also whether it will stand up in a post-grant proceeding.

    1. 2.1

      As for standing up in court, it is my view that anyone who gives a blanket opinion on whether a patent will stand up in court is asking for a malpractice claim. There is always, always, always the caveat that there may be unknown prior art out there (or developments in subject matter eligibility law) that could eventually render the patent invalid.

      Agreed. The quote in the initial post (my quote) stands up there divorced from its initial context, and it looks pretty foolish sans context. I certainly did not mean that a sufficiently skilled lawyer can always write a bullet-proof claim. The point that I was trying to make is that applicants who want a valid claim need to see to that on their own, and not merely expect that valid claims will typically emerge from the back-&-forth of a USPTO examination.

      1. 2.1.1

        and not merely expect that valid claims will typically emerge from the back-&-forth of a USPTO examination.

        Maybe for your own ‘mere’ prosecution skills.

        Others — like me — prosecute more robustly.

        Hint: prior to your inside counsel position, you were most likely doing it wrong.

        This is not altogether unsurprising — given your biases and rather ‘tender’ feelings vis a vis anyone taking a sharp edge in words with you.

    2. 2.2

      I don’t think it is just a question of money. It is a question of knowledge, skill and detailed analysis of the invention, which is by no means exclusive to the largest firms with attorneys having the highest billing rates.

      It should also be remembered that patent drafting is a TEAM effort. If an inventor cannot be bothered e.g in the chemical field to write up significant examples properly including important detail as to starting materials and procedures and as to the benefits achieved, then the examples are likely to be ignored by the Federal Circuit with predictable results.

      1. 2.2.1

        Meh, chem’s not my area, and I think that the ‘team’ is a tiny bit overplayed (yes, teams can be valuable, but are just not always necessary), but other than those minor quibbles I agree with you.

        1. 2.2.1.1

          In the example I was thinking of, which went to the Federal Circuit, the inventors could not be bothered to write up the critical example properly but simply said that the procedure of references C and D was followed. This ought to have been picked up by the responsible attorneys, but they did not do so. Hence validity was not upheld.

          That is why I said drafting is a team. It is for the inventor to produce a full and competent draft from the standpoint of a practicing scientist and for the attorney, acting in this respect as a journal referee, to review the draft, identify deficiencies and seek corrections.

      2. 2.2.2

        “It is a question of knowledge, skill and detailed analysis of the invention,”

        Money buys the knowledge and skills. How much an applicant is willing to spend can have a major impact on who is being hired and the knowledge and skills they bring with them. Quality does not depend on being at a large firm with the highest billing rates but, in my experience, how much a client is willing to spend impacts the quality of the application because money “buys” the skill and knowledge. There are practitioners who can put out a high quality product for a relatively low price for various reasons (e.g., semi-retired) but low quality applications are generally tied to low investment in practitioner skill. To give an analogy, some people will use a coupon from the weekly mailer to get discount laser eye surgery at the strip mall, but keep in mind that you’re going to get laser eye surgery from someone who had to advertise in mailer with the enticement of pay for one eye, get the other eye done for free. Just don’t complain afterwards when yourself now legally blind. Overall, you get what you pay for in this world.

  19. 1

    I am not sure whether “is the path clear?” is the right way to characterize the quoted assertion. The point of dispute is not “patents are easy” vs. “patents are hard.” Rather, the point in dispute is “the applicant should rely on the examination process to identify enforceable claims” vs. “the applicant should not rely on the examination process, and should instead expect to have to do their own work to identify the enforceable claims.”

    1. 1.1

      Pray tell me about both the presence and level of the presumption of validity — and why such is as it is.

      Hint: your ‘phone a friend’ option is Ron Katznelson.

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