One question survey:
"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.
— Dennis Crouch (@patentlyo) September 30, 2021
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
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.
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.
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
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?
“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.
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.
Thank you, Greg, for all those honest, open and frank remarks.
Oh stop already and grab a room.
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.
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.
>>(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.
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.
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.
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.
So 52.5% of the people have never heard of 101 at the CAFC/DC level.
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.
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.
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).
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.
[Wandering Through, 30 Sept 2021 at 2:46 pm]
[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.
[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.
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.
“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.
6,
Maybe you need to refresh your understanding of what “average” means.
You’ve quite slipped back into being an Office apologetic.
“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.).
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.
“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.
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.
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.
“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.
“ would guess that it’s probably just because they’re ra cist.”
Really?
W
T
F
“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”
“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.
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.
“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.
“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”
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.
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.
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?
[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.
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?
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.
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.”
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.
“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.
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.
[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.
“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.
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.
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.
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.
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
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?
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.
Fair enough Greg.
“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.
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.
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.
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
(I feel like I don’t have to comment anymore with Wandering here.)
His posts have been delightful (even when he posts counters to my own posts).
With the secret illegal SAWS program (or whatever they call it now) the knowledge of the examiners is irrelevant.
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.
“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.
[Wandering Through, 30 Sept 2021 at 2:46 pm]
[Night Writer, 1 Oct 2021 at 10:46 am, 1:00 pm, and 9:55 am]
[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.
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.
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.
“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.