Restoring the America Invents Act

by Dennis Crouch

Sen. Leahy and Sen. Cornyn have introduced the “Restoring the America Invents Act” designed to further address problems caused by the USPTO’s issuance of “poor-quality patents.”

The proposal is basically a wish list of patent-killers seeking to cancel patent rights via inter partes review.

Key elements of the proposal:

  • Removal of Discretional Denials of Institution.  The proposal would substantially limit PTO Director’s discretion to deny institution.  The new provision would state that “a petition that meets the requirements of this chapter shall be instituted …”  The Director would maintain limited discretion to deny or alter institution based upon multiple proceedings involving the same patent or member of the same patent family pending before the Office.  The statute would create a rebuttable presumption of consolidation.
  • Expanding the Scope of Inter Partes Review.  Currently, IPR’s can only focus on patentability grounds “raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”   The proposal would expand this to also include “admissions in the patent specification, drawings, or claims” and also “statutory or obviousness-type double patenting.”
  • More Powerful Stays. The new statute would list factors that a district court should consider when determining whether or not to grant a stay, all the changes would tend to promote stays of the litigation.  The provisional would also permit an immediate right to appeal the district court’s stay decision.
  • Codifying the Rules on Amending Claims: The patent owner will have the burden of proving the patentability of any amended claim, including Sections 101, 102, 103, and 112 before the PTAB who will act as an examiner in that regard.
  • Prior Dismissal of Without Prejudice: A lawsuit involving the patent that was dismissed without prejudice would no longer trigger 1-year deadline for filing an IPR petition.
  • Codify a procedure for Director Review under Arthrex.  Although the procedure requires the director to provide a “written opinion” setting forth any reasoning, it does not appear to require director review or reasons for denial of review.
  • Rejecting Return Mail.  The proposal would add “a governmental entity” to the people who can petition for IPR.  This would overturn the Supreme Court decision in Return Mail which held that the U.S. Gov’t was not a “person” for the purposes of this portion of the statute.
  • Extend timing of ending proceedings before the office until the conclusion of any appeal. 325(e)(1).
  • Expanded Estoppel against the Patent Owner: “The Office may not issue to a patent owner any claim that is not patentably distinct from a claim that was issued and was subsequently—(i) found to be unpatentable; or (ii) canceled in any proceeding before the Office, including under section 135, 251, 253, 301, 311, or 321.’”
  • Attempting to Eliminate Outside Influence on Panels from Within the USPTO: “EX PARTE COMMUNICATION.—An officer who has review authority, supervisory authority, or disciplinary authority with respect to an administrative patent judge of the Patent Trial and Appeal Board (or a delegate of such an officer), and who is not a member of a panel … shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel, except as allowed under the Code of Conduct for United States Judges.”
  • Standing to appeal: The new law would attempt to cobble-together additional injury by presuming injury in fact based upon the estoppel, etc.
  • No Standing then No Estoppel: The new law would open the door further to speculative filing of IPR petitions. In particular, the proposal would modify the law so that a party who lacks standing to appeal its loss before the PTAB would not later be estopped based upon the IPR outcome.

95 thoughts on “Restoring the America Invents Act

  1. 15

    Man-o-man. Big Tech has way too much time and money on their hands. I guess if you need to flood DC with cash to keep your network effect monopoly intact, you might as well ask for more.

  2. 14

    If the statute is also amended to abolish intervening rights (except in the case of broadening), I could go with that bill. If the senators recognize that the USPTO makes errors, then why protect accused infringer and not patent owners?

  3. 13

    Leahy and Cornyn, even H.e.l.l. wouldn’t accept you.

    This swill will not pass.

    For the good of American innovation; it. must. not. pass.

    But if it does, all hail Chinamerica.

  4. 12

    Not sure who first said on the long threads below that: “Applicants who really want a patent that will stand up in court know how to get one. That process has almost nothing to do with examination before the USPTO, and is instead concerned with hiring a good team of lawyers and getting a really competent prior art search before filing.”
    I agree, and have seen it done. But it is often very difficult to tell at the time of application preparation what inventions will be so extensively infringed by others in the future as to make that patent one of the very few to make lawsuits on it worthwhile. The vast majority of patents are not [in hindsight] worth such extra preparation costs.

    1. 12.1

      Fully agree, Paul. How is an in house patent manager to know, when to spend serious money on drafting any given patent application to a high standard? Mostly, these days, patents are a commodity, and drafting, prep & pros is increasingly outsourced to the winning bid of a services provider that runs its business like Uber. Who’s to say that such a business model is not the most intelligent way to acquire that patent portfolio which exhibits those attributes that are most effective to further the business interests of its owner?

      1. 12.1.1

        Like Uber…?

  5. 11

    My post at #3 set off a great long string of comments. In particular, something Greg wrote:

    “Anyone relying on the USPTO to ensure that the end product is enforceable in court is in a position analogous to Ben’s imaginary consumer who imagines that his 50¢ hamburger is pure ground sirloin—willful self deception, that.”

    caught my eye. It goes to the troublesome “presumption of validity”. Is the reliance one can put on the validity of the claims the Patent Office issues to you a reasonable measure of the level of “quality” attached to patents duly issued by a Patent Office?

    Now, it seems to me that, under this measure alone, the “quality” of patents now being issued by the EPO (now that it has fully implemented its “raising the bar” quality initiative) is far higher than for patents duly issued by the USPTO. What the EPO issues these days is going to be real tough to get struck down.

    Night Writer might like to comment, given his report that the claims he takes to issue at the EPO are routinely comparable with those he issues in the USA. Comments Night? Or anybody else?

    1. 11.1

      It goes to the troublesome “presumption of validity”.

      No. Not at all.

      But hey, you go for your windmills there, fella.

    2. 11.2

      [I]t seems to me that, under this measure alone, the “quality” of patents now being issued by the EPO (now that it has fully implemented its “raising the bar” quality initiative) is far higher than for patents duly issued by the USPTO.

      This seems true to me as well, but it is verifiably false (see URL below). The opposition division of the EPO tanks EP grants at about the same rate that the PTAB tanks US grants. Evidently, then, EP examiners let things go wrongfully to grant at essentially the same rate as do US examiners.

      link to patentprogress.org

      1. 11.2.1

        Greg, thanks for that. I fully agree with you and your Link, that historically at the EPO the outcome of disputed opposition cases was a 1/3, 1/3,1/3 split between i) patents maintained unamended ii) patents maintained with a narrower claim and iii) patents knocked out. But my comment was about the patents the EPO is issuing currently, after completing its lengthy program to “raise the bar” of patentability. I consider that the historical stats are of limited usefulness to reveal how things are, going forwards.

        It is embarrassing for the EPO, when it has to revoke claims which it already granted. That happened, very often, under Art 123 EPC (the “added matter” provision). In recent years, management at the EPO has set out to eliminate that embarrassment.

        Of course, revoking a duly issued claim on the basis of prior art emerging only when the Opponent cites it to the EPO is embarrassing only to the extent that the EPO search should have found it back at the beginning of examination of the application. Hence the efforts to maintain and enhance the high “quality” of the EPO search.

        Perhaps Patent Progress can look into the reasons the EPO Boards of Appeal cite, when they revoke a patent these days, and whether those reasons are the same now as what they were 20 years ago.

        1. 11.2.1.1

          MaxDrei and his ‘uber-politeness’ which results in nothing but gobbledygook…

          Contrast: “ I fully agree with you” and yet, Greg’s POINT was: “Evidently, then, EP examiners let things go wrongfully to grant at essentially the same rate as do US examiners.” which is most definitely NOT something that MaxDrei agrees with (in the least).

          Say what you mean, MaxDrei. You simply cannot ‘agree fully’ and not agree with the primary point being advanced. You only lose credibility for your mewling. Do not spend so much time ‘playing nice.’

  6. 10

    The best possible reform would be to remove patent litigators from representing clients in the post-grant proceedings, and allow only those patent practitioners (i.e., those with reg. nos.) and at least 50 draft patent applications under their belt to represent clients.

    1. 10.1

      Re “remove patent litigators from representing clients in post-grant proceedings” and allow only those with application preparation experience. Except that expertise or good teamwork in both is very desirable. As previous blogs on IPR decisions have shown, those with solely PTO ex parte professional experience can have fatal weakness in contested IPR trials in evidentiary law, evidence authentication, declaration preparation, cross-examinations, etc. Especially if never having had comparable contested PTO interference experience. On the other hand, attorneys with only district court litigation experience could have serious problems handling the strict discovery and other limitations that are very different from normal litigation, and the strictly enforced and unusual “trial” rules and deadlines, and dealing with patent attorney judges, not lay judges or juries.
      So one can wonder how many of the sour grapes from IPR losses are due to their having attorneys with such challenges?

  7. 9

    Since we’re talking about quality, I thought it’s a good time to plug this suggestion.

    Reinstate the Second Pair of Eyes review… for both allowances and final rejections.

    Tweak it a bit to make it better. Don’t send it to a TQAS or a SPE for review! Have the cases randomly sent to similar primary examiners in different art units. Compensate reviewing examiners something like 0.25 counts. Also, any errors found in existing quality review dinge both the initial primary and the reviewing primary. Make it part of docket-management so review cases are reviewed in a timely manner.

    What’s the point? Consistency which would beget quality. (Primary) examiner dockets are little fiefdoms, and that allows for examination to vary fantastically across dockets. If all examiners had to have a random (but technologically appropriate) primary examiner review their work, they would be herded towards similar examination.

    0.25 counts is not a lot of time, but that’s appropriate here. We want OAs that are relatively clear and concise, and by constraining review time to 1-3 hours reviewing examiners will in turn force initial examiners to write more clearly and concisely.

    Bad practices would be discouraged internally because good examiners won’t want to put their name on dreck. The practices of good examiners would diffuse through the examiner population.

    I feel like I’m leaving out details here, but I’m running out of steam to describe something that’ll never happen in part because it would require raising fees.

    1. 9.1

      in part because it would require raising fees.

      Why?

      This is just more of YOUR confusion over internal metrics and the outflow of those internal measures.

    2. 9.2

      I care LESS about what internal metrics the Office chooses to employ and MORE about that any such metrics be applied in compliance with 37 CFR 1.2.

    3. 9.3

      Adopt the EPO’s examining division model, and it’s summons to oral proceedings procedure. Simple.

    4. 9.4

      Meanwhile, in another jurisdiction, Ben, the EPO is more or less neutering the system it has had in place since its opening day in 1978, of having two other Examiners review the proposed allowance (or refusal) decision arrived at by the single case-managing Examiner. In house Quality Management sees the review process as no longer necessary for upholding designated levels of consistency and “quality”.

      How about that then? How do they do in Munich what sees impossible in Alexandria? I offer an explanation: no patent-ignorant court sits atop the EPO and tells it how to do its job.

      1. 9.4.1

        [N]o patent-ignorant court sits atop the EPO and tells it how to do its job.

        No court is telling the USPTO how to do its job. The CAFC tells us what a valid patent is, but the CAFC has no authority over actual examination procedures.

        I think that you are correct, however, to suspect that the differences result from difference in leadership. The USPTO is part of the U.S. executive branch (the Commerce Dept.), while the EPO is a creature of many governments. I think that the EPO being answerable to many governments means that it is harder for any one government’s whim to result in changes. There is a certain benign neglect that is possible for the EPO that will never be as possible for the USPTO.

        1. 9.4.1.1

          No court is telling the USPTO how to do its job.

          While ‘technically‘ true, the CAFC has outright dismissed what the USPTO has done vis a vis (at least) the eligibility guidelines dating back BEFORE Iancu’s 2019 published patent eligibility guidelines (think Cleveland Clinic).

        2. 9.4.1.2

          Greg, now in more detail, taking as an example obviousness.

          The EPO examines for obviousness in line with the established case law of…..wait for it..the Boards of Appeal of the EPO. So it does it under the problem-solution TSM approach, giving weight to secondary considerations only in very rare fact situations. Remarkably, this case law is by now the benchmark for all the national patents courts in EPC-land.

          Suppose some national supreme court somewhere in Europe laid down the law which the EPO had to follow, when enquiring into obviousness. Result: obviousness would take an age to ecide, and cost an arm and a leg to do. Nobody would know what is or is not obvious in Europe till the court had judged it.

          Fortunately for patent applicants in Europe though, the EPO case law on obviousness is so simple and transparent that every EPO examiner and every EPO patent attorney can assess obviousness quickly, efficiently and accurately.

          See now what I’m getting at with my “No supervisory court” point?

          1. 9.4.1.2.1

            C: It’s not much of a cheese shop, is it?
            O: Finest in the district!
            C: (annoyed) Explain the logic underlying that conclusion, please.
            O: Well, it’s so clean, sir!
            C: It’s certainly uncontaminated by cheese….

            [Monty Python’s Flying Circus, The Cheese Shop sketch]

            I am not really clear in what you suppose the arete of a patent examination process to consist. To my mind, the goal of examination is to arrive at a claim that the relevant national court will regard as enforceable. You seem to indicate that the EPO’s ability to churn out consistent results is an achievement, quite regardless of whether those claims actually hold up in court. To my mind, that is rather like boasting of the cleanliness of the “cheese” shop. You are, perhaps, setting both yourself and the EPO too easy a task here.

            1. 9.4.1.2.1.1

              Fair enough, Greg, your point that consistency at the EPO is not much use if its consistent standard on obviousness is inconsistent with the standard applied by national courts.

              Can you give examples? It is my sense that courts in Europe reach a conclusion on obviousness different from that already reached at the EPO only when the facts found by the court (for example by cross-examination of rival party technical experts) compel that conclusion. As we both well know, a hard-fought dispute will bring to light facts unknown to the granting authority. Litigation to trial is, or should be, a last resort and governments should aim to make it so.

              1. 9.4.1.2.1.1.1

                There are really only two possibilities here, Max. Either, (1) the EPO is calibrating its obviousness standards to those applied by the national courts, or (2) the EPO is not calibrating its obviousness standard to those of the national courts. If #1, then the national courts are telling the EPO “how to do its job” in exactly the same sense in which you say that the CAFC is telling the USPTO how to do its job. If #2, then you are setting the EPO too easy a task, and the EPO’s consistent application of its own standards is not really all that meaningfully impressive.

                Either way, your assertion that the source of the US problem lies in the relationship between USPTO and CAFC lacks merit. The relationship between court and ecamining office really has to be as it exists between the USPTO and CAFC in order for an examination system to serve any purpose. Whatever the source of the problem, this cannot be it.

                1. Greg it’s #2, but with the established case law of the Boards of Appeal of the EPO being the established case law which is the benchmark for the supreme courts of EPC Member States. See how, for example, on novelty how long it took (30 years or so) for the supreme court in Germany to come round to the EPO’s line, much longer than it took the UK supreme court.

                  Perhaps this is the main reason why the brotherhood of international law firms litigating patents before national courts is in such a hurry (and lobbying so hard) to wipe out the pre-eminent position in Europe of the EPO’s case law by getting the UPCA up and running.

                2. And yet MaxDrie, your own ‘abhorance’ of stare decisis necessarily means that there is NO binding effect of that very same “established case law” and tomorrow’s decisions have no bearing from yesterday’s….

                  (One of your many odd horse carcasses left near the well of wisdom)

  8. 8

    Such a strange proposal. It feels like Leahy is just doing this for his own ego bc he had a vision for the AIA that had been somewhat gutted by reasonable checks that had been put in place over time.

    In his own mind, it seems like he envisions a world where patents can be cancelled by non-profits in the “public interest.” The problem is that our legal system is not set up that way. We have requirements for standing for a reason–because you need to have skin in the game before you try to change the rules for everyone.

    We should not allow people who do not use the system regularly to change the rules because it benefits them for their limited purposes.

    1. 8.1

      There is also the strange mindset that IPRs are this wonderful cost effective alternative to litigation, which was plausible in 2012, but now anyone who says this clearly lives in an ivory tower and has no idea what IPRs cost and entail in 2021.

      1. 8.1.1

        Asking how much IPRs cost is the wrong way to assess the effectiveness of IPRs in reducing costs. The right way is just to see whether total IP litigation costs go down post-advent of IPRs or not.

        link to patentprogress.org

        1. 8.1.1.1

          meh, there are plenty of other confounding factors (for example, Eligibility Muckery) that makes your suggestion null and void.

        2. 8.1.1.2

          Would love to see what those numbers look like with the attorney’s fees for the IPRs added to the total. Data paints a very incomplete picture.

          1. 8.1.1.2.1

            Those numbers include IPR attorney fees. You are already seeing the thing that you “would love to see.”

    2. 8.2

      Fixed:

      In his own mind, it seems like he envisions a world where patents can be cancelled by non-profits Efficient Infringers in the “public established monied interest.

  9. 7

    Since the odds seem so low of this kind of legislation [on a minor-political interest topic like one part of patent law] getting enacted in this kind of a Congress, query if it is worth extensive analysis at this time? A few of these provisions seem to already have been adopted by the Fed. Cir.?
    Patent legislation directly aimed at drug prices [whether particularly effective or not] would seem more likely to get broader Congressional support. The part of this bill adding “statutory or obviousness-type double patenting” to the scope of IPRs [to reduce some alleged “ever-greening” effective patent term extensions] would be one example. A good APJ might be among the few people to be able to unravel its confusing Fed. Cir. case law.
    I’m surprised this omnibus IPR bill does not also include requiring the IPR to interpret claim breadth in light of any “doctrine of equivalents” claim broadening argument asserted by the patent owner?

    1. 7.1

      I don’t know. It is crazy times as the Ds tend to bribe legislators to pass huge new legislation with this type of morsel.

      So, I am not certain that something like this might not get passed as part of the craziness.

  10. 6

    “The Office may not issue to a patent owner any claim that is not patentably distinct from a claim that was…canceled in any proceeding before the Office, including under section 135, 251, 253, 301, 311, or 321.’”

    It’s odd that the comparison point for this section is the other claim, rather than the cited art in those proceedings.

    Semi-related, if we are going to create ‘expanded estoppel,’ we should really do that evenly e.g., anything in an IPR petition should count as an implied rejection of those grounds. Maybe also create an automatic stay of the district court proceeding + clarify “Reasonably Could Have Been Raised” standard basically means “only if exceptional circumstances exist.”

  11. 5

    Actually, I think the only way forward is to take the PTAB and move it out of the USPTO as a separate entity and give it DC powers.

  12. 4

    Just curious — what is the trend of the Patent Office’s own internal metrics on that front end of “Patent Quality”…?

    Are still ‘most all’ patent examiners “above average”…?

    Additionally, until the narrative moves (appropriately) from “patent quality” to “examination quality,” ALL of these ‘initiatives’ smack of Efficient Infringer congressional capture.

    1. 4.1

      Anon, yes PTO examination quality is the major issue with U.S. issued patent quality, but how much more money are patent attorneys and their clients willing to pay for it? Many will not even pay for pre-filing prior art searches to see what might be properly claimable, and file “shotgun” or “blunderbuss” scope claims.

      1. 4.1.1

        I do see the point you offer, and while certainly there are considerations of what clients would pay, I think that your example of prior art searches is particularly OFF precisely because any such searches (while certainly a part of Best Practices), are not required AT ALL.

        In essence, I view your concern of ‘cost’ to be a bit misplaced as to what Congress should be focused on as a First and Foremost aspect of ANY dialogue.

        We really need to get away from the “Oh N0es Tr011s” mindset of applicants ‘being bad guys.’

        The patent EXAMINATION system should be robust against various inputs, including inputs by less-well-heeled inventors who may not have the wherewithal for extensive prior art searching. Yes, I am well aware that many others besides such do not engage in prior art searching (for a variety of reasons), but ANY such considerations simply are besides the point of what a better-focused discussion should entail.

      2. 4.1.2

        [H]ow much more money are patent attorneys and their clients willing to pay for it?

        And how much money should society want to spend on weeding out bad patents that will—for the most part—sit idle for four years before they expire for failure to pay maintenance fees? Counterintuitive as it might seem, the current arrangement (an examination system that misses a lot of defects, but which usually succeeds in weeding out the most egregiously unpatentable claims) is probably as close to a socially optimal allocation of resources as is achievable in a democratic republic.

        I have all sorts of small changes I would make to the examination system, but we should not deceive ourselves as to the size of improvements that can still be achieved. Almost the whole developed world runs basically the same patent examination system because this is the best achievable system on this side of paradise.

        1. 4.1.2.1

          I actually chuckled at Greg’s addition here – partly due to its accuracy and the nuance involved, and partly because ANY improvement MUST STILL BE properly phrased as “examination quality” as opposed to “patent quality” — and this clear focus is STILL shrouded for the benefit of Efficient Infringers (no matter what ‘happy medium’ point that Greg might agree to).

  13. 3

    If the problem is that the USPTO is issuing too many patents of “poor quality” is not the proper (and obvious) response to take measures that will be effective to help the USPTO to examine patent applications more rigorously?

    Is that so difficult to do? I mean, the EPO seems currently to be making a very effective stab at it, despite the task the EPC imposes on it, namely to “grant patents”. If the EPO can do it, why can’t the Congress take whatever steps are needed, to enable the USPTO to do it just as well as the world’s other Leading Patent Offices?

    Is it perhaps because of a “due process” mindset unique to the USA, that a government body is exceeding its remit, when it refuses an application for patent rights for which an applicant has paid serious money, a mindset that only a court is competent to say no to a citizen, a mindset reminiscent of English thinking prior to the 1970’s which was that a patent applicant deserves their “day in court”. In those days, for that reason, the UK patent statute forbade the UK Patent Office from any pre-issue examination of obviuousness whatsoever?

    Only asking.

    1. 3.1

      Finding a way to reduce the issuance of poor quality patents is a great idea but the problem that I see is that there is no agreement on what constitutes a poor quality patent. I can’t imagine any inventor agreeing that their patent is of poor quality nor can I imagine any assignee agreeing that one of their assigned patents is poor quality. That’s a tough metric to determine. Even, for the sake of argument only, that an agreement could be found on the meaning of a poor quality patent, the manner in which to prevent them is likely to be as fraught with disagreement and problems.

      With regard to your idea regarding due process, I don’t think that’s an issue. I have never heard of any clients at any firms where I’ve worked lamenting about due process. They may complain about the length of the process in getting from filing to allowance, but not the fairness of the actual process itself. There are probably some people who complain about it (the most recent case by Hyatt at the Fed. Cir. comes to mind), but I’ve yet to see any evidence that it actually was a due process issue. In the Hyatt case recently, he lost so badly that its hard to give credence to his arguments. If there were no due process violations in that case, it’s hard to envision where there might be some.

      1. 3.1.1

        the problem that I see is that there is no agreement on what constitutes a poor quality patent.
        Accused infringer’s definition: Any patent that is asserted against me.
        Reasonable definition: Any patent that should have been not been allowed to issue by the Examiner at the time of examination.

        101 and 112 issues should not be addressed in an IPR. Compliance with 101 and 112 should be properly evaluated at the USPTO prior to issuance. There are no new “issues” (i.e., prior art) that would justify having the USPTO take a look a second time around. If the USPTO is not evaluating patents under 35 USC 101, 112 properly, the right remedy is to have courts issue clearer directions as to how claims should be evaluated under 101 and 112.

        1. 3.1.1.1

          Pardon potential rePeat post…

          Corrected:

          the right remedy is to have courts issue clearer directions as to how claims should be evaluated understay away from mucking up the simple clear directions from CONGRESS as to 101 and 112.

        2. 3.1.1.2

          +1 billion.

    2. 3.2

      Max, I regularly get claims allowed at the EPO and in the USA.

      Not much difference between the claims that are allowed. Actually, most times they are the exact same claims.

      1. 3.2.1

        I am more than certain that MaxDrie’s ‘ point’ had nothing to do with any sense of parallel claim scope protection across different Sovereigns.

    3. 3.3

      “Is that so difficult to do?”

      Yes. More rigorous examination means fewer patents, which enough people dislike to make more rigorous examination dead-on-arrival.

      1. 3.3.1

        Ben,

        You employ a false view (much like Malcolm used to do).

        It is simply false to assert that those (like me) that want strong patent protection do not want rigorous examination.

        Note as well that “Just Say No” is NOT rigorous examination.

        1. 3.3.1.1

          He’s paid to blog on here anon. Pretty obvious.

          1. 3.3.1.1.1

            The way you can tell anon, if you would take the time to figure it out, is that he consistently pushes the narrative of the anti-patent judicial activists. It is very consistent and always follows the narrative that no doubt he is emailed each day. He probably has a program or word file with prepared remarks and merely customizes them.

            He comments match those made elsewhere and put out by anti-patent judicial activists.

            1. 3.3.1.1.1.1

              I don’t dispute that individual applicants want the best examination that their application can stand up to. But there is no universal degree to which applications can stand up to examining, and enhancing examination would by definition cause some applicants to lose out. So in the aggregate there is no demand for better examination.

              “We want better examination. We do not want prior art applied based upon the broadest unreasonable construction of the claim language. We want to see the best prior art in the first or second office action — not the seventh of eighth office action. We want consistent application of 101 and 112 throughout the USPTO — not having certain art units/tech centers have their own interpretations that differ from the rest of the USPTO. We want clearer office actions that better map individual claim limitations to specific teachings in the applied prior art. We want examiners who will work with us to identify what is allowable.”

              I want a house in Old Town Alexandria, but I’m not willing to pay for it. How much are you guys willing to pay for your wants?

              1. 3.3.1.1.1.1.1

                would by definition cause some applicants to lose out. So in the aggregate there is no demand for better examination.

                This is a gross error in your ‘thinking.’

                While certainly there are occasions where the mere “having” of a patent is what presents ‘worth’ to the patent holder (and what may be counter-intuitive to you – this is more likely to be for LARGE clients who are into padding their patent count, as opposed to the smaller start-ups); it is in having ENFORCEABLE patents that the bulk of value is actually obtained.

                The “wants’ you identify have already been priced into what Examinationshould provide!

                That examination is instead driven by ‘internal metrics’ is only YOU (the Royal You) making your problem to be turned into my client’s problem.

                1. In the mean time, the office is producing what it can based on the funds it receives.
                  LOL. I’ve seen good examination from examiners. However, I have seen a LOT of VERY BAD examination for examiners who get their numbers (and bonuses) because they cut so many corners and their primaries/SPEs turn a blind eye to it all. Actually, the worst examinations I see are usually from primaries who have perfected the whole corner-cutting process.

                  I don’t want to hear any excuses that it cannot be done with the resources made available because I have seen it done at the USPTO. Regardless, there is never a good excuse for providing slipshod work, which is what you are doing.

                  Regardless, as I pointed out (and a point you simply ignored), better examination can be more efficient over the long run. The approach of many at the USPTO to do as little as possible to get an office action out is shortsighted and creates more work in the long run for everyone involved.

                2. The approach of many at the USPTO to do as little as possible to get an office action out is shortsighted and creates more work in the long run for everyone involved.

                  Right, because examiners have no “skin in the game,” so to speak. The results we achieve with the U.S. (and EP, and JP, etc) patent examination system are—more or less—exactly what one should expect to achieve from a system arranged as our is arranged.

                  That is why—to the extent that one cares about weeding “bad” patents out of the field—the post-grant challenge system is the more cost-effective means toward that end. The proponent of invalidity in an IPR/PGR has a tangible motivation, which (as any student of the old U.S.S.R. can tell you) makes all the difference.

                  Applicants who really want a patent that will stand up in court know how to get one. That process has almost nothing to do with examination before the USPTO, and is instead concerned with hiring a good team of lawyers a getting a really competent prior art search before filing. The PTO examination process is not run for the benefit of the applicant, but rather for the benefit of the public (to weed out the most socially noisome claims before they can be used to bring nuisance suits against honest citizens). Anyone relying on the USPTO to ensure that the end product is enforceable in court is in a position analogous to Ben’s imaginary consumer who imagines that his 50¢ hamburger is pure ground sirloin—willful self deception, that.

                3. Just because some people can get the job done in the current time constraints doesn’t mean that everyone can.

                  Increasing work standards at the office without increasing salaries will reduce the number of people willing to do the job. Quality people with engineering degrees willing to to non-engineering work aren’t exactly starving in the streets right now, so I think it’s reasonable to think there would be an examiner shortfall under your policy.

                  So if your willing to accept some massive pendency increases, that could work.

                  But first you’ll need to get the law adjusted because management bonuses are currently tied to PTA and pendency.

                  Then you’ll need to get the rest of the patent bar to buy into adding years to examination.

                4. Applicants who really want a patent that will stand up in court know how to get one. That process has almost nothing to do with examination before the USPTO, and is instead concerned with hiring a good team of lawyers a getting a really competent prior art search before filing.
                  Thanks for explaining how the 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. They don’t know about all of the pitfalls that can face an inventor. They’ve been told that a patent is necessary to protect an invention, and they go about doing so to the best of their knowledge.

                  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. If the invention is to a commercially valuable technology, the mom & pop inventor will be dragged back to the USPTO in a post-grant proceeding, after which the most likely outcome will be the invalidation of the patent. Or if the patent is not invalidated, the mom & pop inventor will be forced to spends hundreds of thousands of dollars in attorney fees to prevent it from being invalidated only to face the prospect of getting dragged back into the USPTO (and again spending hundreds of thousands of dollars).

                  You are advocating for a great system for screwing the little guy to the benefit of the monied oligopolies. Nothing wrong with that if that is your personal philosophy. However, as for me, I have a different philosophy as to how the US patent system should operation. For example, 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.

                  The PTO examination process is not run for the benefit of the applicant, but rather for the benefit of the public
                  The PTO examination process should be run for the benefit of the applicant, and in doing so, this benefits the public via the promotion of the progress of science and the useful arts. Under your approach, the inventor is the bad guy against whom the USPTO is protecting the public. Under my approach, the inventor is the good guy whose inventions ultimately help us all. Again, nothing wrong with a philosophy that advocates for the big guy over the little guy. It just isn’t for me.

                5. Just because some people can get the job done in the current time constraints doesn’t mean that everyone can.
                  That, to me, seems like a USPTO problem. They need better training and better management. It also requires the USPTO to ding examiners where appropriate. What percentage of patent examiners were evaluated as being above average last fiscal year? I found a statement that “over 95 percent of all patent examiners received outstanding or commendable ratings for the quality element of their annual performance evaluations (see Figure 2) even though the Department defines Commendable performance as ‘unusually good’ and Outstanding performance as ‘rare, high quality performance’ that ‘rarely leaves room for improvement.’” A movie quote comes to mind here: “And when everyone’s super … no-one will be.” It seems to me that the USPTO declaration that everyone is “super” puts little onus on the lower performers to actually be better.

                  Then you’ll need to get the rest of the patent bar to buy into adding years to examination.
                  And again, no mention of my point that better examination leads to reduced examination. Reduced examination leads to shorter pendency — not longer.

                6. “The “wants’ you identify have already been priced into what Examinationshould provide!”

                  Well, according to anon anyway. It’s obvious his corporate overmasters do not agree as that is what the top brass report that the corporate overmasters say. They want the cheapo bro, while saying they want the primo. Always have, always will.

                7. “I found a statement that “over 95 percent of all patent examiners received outstanding or commendable ratings for the quality element of their annual performance evaluations (see Figure 2) even though the Department defines Commendable performance as ‘unusually good’ and Outstanding performance as ‘rare, high quality performance’ that ‘rarely leaves room for improvement.’””

                  It shouldn’t. Once the PTO actually has to define what they want for commendable and outstanding then everyone just goes and does it derp derp. This agency isn’t like other agencies and it is very hard to do meaningful reviews en masse (impossible to do on low-no budget).

                8. 6,

                  Your comment of “It’s obvious his corporate overmasters do not agree as that is what the top brass report that the corporate overmasters say. They want the cheapo bro, while saying they want the primo. Always have, always will.” does not make any sense.

                  Try again.

                9. “does not make any sense.”

                  How does it not make any sense ja ck off? The commissioner Drew Herschfield or whatever confirmed now on at least two occasions in town halls that they would like to increase times for examination but that their “stakeholders” outside don’t want to pay more. This makes perfect sense. They don’t want to be charged more. At the same time, the commissioner and all of the directors turn around in training and tell the corps that they want the very best primo examination. This is not something that doesn’t make sense. They would in fact like this. Further, reps for the corps who call themselves lawlyers routinely say they would like primo examination to the 9’s (see you and NWPA, MM, dozens of lawyers I’ve talked to, Gene and the rest of your gaggle). They would like this. Thus, thus we have the situation I described above and my statement of both of these combined makes perfect sense derp herp.

                10. Post still caught in filter, but 6, the short of it is that you are still not making any sense.

                  Examination is to the required “under the law.” Don’t mistake the Office setting of a price AND your own internal metrics for what has been paid for.

                11. What is req’d under law, what internal metrics are, setting of a price don’t have even the smallest thing to do with the subject I’m discussing. What I’m discussing is what all the various parties SAY they want. That is, the vocalizations that come from their mouths.

                12. don’t have even the smallest thing to do with the subject I’m discussing

                  Wrong.

                  You (clearly) do not realize the connection – but your lack of awareness simply does not change the factual relationships.

              2. 3.3.1.1.1.1.2

                enhancing examination would by definition cause some applicants to lose out
                In some instances yes, but not necessarily. Better examination would result in quicker (i.e., cheaper) examination, and in many times prosecution is abandoned for cost reasons — not because the Examiner has produced the good art.

                I want a house in Old Town Alexandria, but I’m not willing to pay for it. How much are you guys willing to pay for your wants?
                I’m sorry — what I asked for should ALREADY be paid for. Finding the best prior art early on should be the MOST IMPORTANT thing an Examiner does. Ignoring claim limitations under the ‘broadest unreasonable interpretation’ mantra is just an excuse to apply bad prior art. Consistent application of 101 and 112 throughout the USPTO should be the standard. Mapping individual claim limitations to specific teachings in the prior art should already be part of examination.

                Better examination results in quicker examination (i.e., less resources the USPTO has to spend on any particular application). Given that the USPTO gets a large percentage of its operating budget from maintenance fees, it is far more efficient for the USPTO to have maintenance fees paid on issued patent that only faced 2 office actions versus one that faced 8 office actions.

                The best prior art, presented early on, results in a quick abandonment or a substantial narrowing of the claims. This advances prosecution to its eventual end much more quickly than poor prior art accompanied by highly-questionable claim constructions and/or poorly-explained analysis. My clients will always fight bad prior art and bad examination. However, we do not fight good prior art — it is a waste of time. Rather, we will amend or abandon.

                1. THIS:

                  My clients will always fight bad prior art and bad examination.

                  cannot be emphasized enough.

                  Wt absolutely nails it here.

                2. Should?

                  You’re a customer whose mad that their 50 cent hamburger isn’t 100% pure beef.

                  You can get in line with the people who think that they should receive health care as a human rignt. I’m sure the government will get to your desires eventually.

                  In the mean time, the office is producing what it can based on the funds it receives. It sounds like you’re uninterested in providing more funds, so you should count yourself among those who support the status quo.

                  I suppose if you think applicants have a right to better, you could also apply for work at the office so that you can provide them with what they should get.

                3. You’re a customer whose mad that their 50 cent hamburger isn’t 100% pure beef.

                  Exactly right. The First Amendment ensures that folks can say “what I asked for should ALREADY be paid for” (and similar such claptrap) until the cows come home, but no one is obliged to take such nonsense seriously. If one wants to be a clown, it would be more profitable to join the circus than to post such flatus vocis around these parts.

                4. The top clown clowns himself…

                  If one wants to be a clown, it would be more profitable to join the circus than to post such flatus vocis around these parts.

                  Greg, you really
                  f
                  o
                  o
                  l
                  no one.

                5. “Better examination would result in quicker (i.e., cheaper) examination, ”

                  That’s just not correct. Common misconception. Doing a splendiferous job leads to much longer prosecutions in my art literally all the time. If I collect the closest 100 art for a given app I assure you it is much more likely to take a long time to prosecute compared to me only collecting 2 pieces of prior art of marginal relevancee. Doing a half as job will do the opposite practically every time, so long as they allow the app appropriately. when the search magically turns up nothing.

                6. “The best prior art, presented early on, results in a quick abandonment or a substantial narrowing of the claims.”

                  Yeah but I already have that “muh best prior art” situation in like 95%+ of the cases I do bruh (with 1% or less going abandoned). The “substantial narrowing” is not the only thing it provokes. It’s provokes SHIFT (either in substance or in phrasing, or both), as opposed to narrowing, at least 1/3 of the time, often up to half or more of the time. That shift then goes in an entirely new direction that will then face entirely different art. That balloons costs. Further, that presumes that my boss is one that wants me to go ahead and cite all the art relevant to the case (my current one prefers less cited, only the very most relevant few), and it presumes applicants that do not outright ignore all cited art other than the art used in a rejection. I’ve got many a case that faces at least 20 anticipation rejections, or at the least ez 103’s, on first action and we only set “the best one” forth in the OA, where the best one is basically arbitrary as they all show all limitations of whatever meme they claimed at filing. Even if my boss wanted me to cite all refs, which he doesn’t, the applicant in a ridiculously large number of applications outright tells me in interviews that they just ignore all the art cited other than the ones in the rejection. Anon thinks I’m joking, or that I’m lying on this, but I’m not. Their client just doesn’t want them to pay, and it would take hours for them to understand even the nearest 20 pieces of art in their full substance. Presuming it was an applicant that a. didn’t ignore art cited but not used in a rejection, b. always substantially amends the claims without shifting to a totally new direction/ features/ species if the claims were properly rejected (or outright removing limitations which is just as common, because they are believed to not be needed, which is actually sometimes the case), and c. the boss wants all art cited, then, perhaps, your hypothesis would be correct. But none of that is currently going on.

                  This same bs will happen in the case I will be doing tomorrow. It comes in with a meme claim on tech from like 2008, with at least 300+ references showing the independent claim (apparently the drafter is a tard, and so is the applicant, or there has been some sort of drafting mistake). And that’s all fine, but which of those refs will be “the best”? They all show the independent, and in this case most of them will show many if not all of the deps as well save one, which is ez or will be shown in at least one of the 300 refs. I can assure you near 100% he will eventually get a patent. But me putting all those refs forth will not help prosecution along any more than me just grabbing any of them, applying it, and getting the meme claims outta here quickly. That quickness would save USPTO resources, not finding all 300 pieces of art that address the meme he’s claiming and carefully looking them over for details. I assure you, I’ve done this at least 50 times and its always the same from the USPTO side. The way to save resources is to just find the meme, write the action, maybe save the 300 refs for later viewing for after he limits the meme in some fashion. The issue becomes the applicant will be “lost” as to which way to go, as per usual (mark my words, it happens all the time). They’ll probably call me for an interview and ask for a suggestion, I will tell them to just put in any of a few specifics, that are immediately apparent from even looking at the front of the drawings, which they happen to be interested in. They will do so, maybe they get lucky, maybe they don’t, prosecution will go 1 maybe 2 more rounds and they’ll get an allowance. Wasting time with the other 300 refs to find the 30 that show this that and the third limitations does nothing but burn huge time. They can obviously tell this on the outside as well which is probably why they’re ignoring the art other than the cited art.

      2. 3.3.2

        Yes. More rigorous examination means fewer patents, which enough people dislike to make more rigorous examination dead-on-arrival.
        Your comment evidences a failure to appreciate what happens in the real world.

        Patent owners do not want easily invalidated patents. They cannot be asserted, and if they are asserted, they subject the patent owner to uncompensated attorney costs (asserting a patent is not cheap) and possible sanctions (if the patent is really bad). Most patent owners want a patent that will stand up in court.

        Patent professionals (e.g., patent attorneys) are nonplussed by higher standards. We want what is best for our clients, but higher standards means more work. For example, the current application of 35 USC 101 has resulted in tremendously more work for patent professionals.

        Regardless, I think the phrase “more rigorous examination” does not accurately describe what we want. We want better examination. We do not want prior art applied based upon the broadest unreasonable construction of the claim language. We want to see the best prior art in the first or second office action — not the seventh of eighth office action. We want consistent application of 101 and 112 throughout the USPTO — not having certain art units/tech centers have their own interpretations that differ from the rest of the USPTO. We want clearer office actions that better map individual claim limitations to specific teachings in the applied prior art. We want examiners who will work with us to identify what is allowable.

        In the end, we want our issued patents to be able to stand the rigors of patent litigation and be capable of protecting our client’s innovations.

        1. 3.3.2.1

          +1

          Well said. And the other myth is that patent attorneys don’t want better examination. The reality is that the better you are at your profession, the more it helps you to have better examination.

          1. 3.3.2.1.1

            +1 to your additional point

            I do note that it does appear to be a “scripted item” to vacuously assert that better examination is not wanted.

            As I noted – this was a common refrain (and tactic) of Malcolm Mooney – who would not listen to what the likes of you and I would tell him. He would refuse to move from his fallacies just because the actual truth was rather inconvenient for him.

            Of course, this Ben is (more than likely) the SAME Ben that consistently upvoted everything that Malcolm posted in the days in which Prof. Crouch tried out a different commenting system with voting capabilities.

        2. 3.3.2.2

          Sorry, I somehow replied to the post above your rather than yours. The reply is at 3.3.1.1.1.1.

        3. 3.3.2.4

          Most patent owners want a patent that will stand up in court.

          Economists make a distinction between “survey preferences” and “revealed preferences.” For example, if you survey American consumers and ask “how much are you willing to pay for the knowledge that your clothes are made in America?” or “made without sweat shop labor?” or some such, they will tell you that they are willing to pay something between 15% and 20% extra for compelling assurances on the point in question.

          But then if you actually go and create an infrastructure necessary to supply those compelling assurances, you find that your product fails in the market if the price is anything more than 3%–5% higher than the competitor who lacks such assurances. In other words, what a customer tells you s/he wants, and that for which s/he demonstrates an actual want—a want that s/he is willing to spend actual resources to achieve—are not the same thing.

          The delta between the number of applications filed and the number of prior art searches done before drafting tells you all you need to know about how much patentees really want their patents to be able to stand up in court. Clearly some patentees want some of their patents to stand up in court, but anyone who works in this field—including you—knows from first hand experience that your quote above is a kernel of truth wrapped in a gallon of puffery and folderol.

          1. 3.3.2.4.1

            The delta between the number of applications filed and the number of prior art searches done before drafting tells you all you need to know about how much patentees really want their patents to be able to stand up in court.
            How do you know how many searches are done prior to drafting? That is a number that cannot be measured (for reasons I won’t get into). This means your entire point is based upon a made up facts — not necessarily a great way to support an argument. This aside, every application I’ve filed over the past decade or so has had a search performed — prior to even drafting the application.

            Regardless, performing a search is not necessary and whether a search is performed or not is not necessarily reflective of whether the applicant wants a valid application. A patent application describes what the inventor believes to be his/her invention. Whether it is actually inventive or not need not be known until during examination.

            Some clients are cost-sensitive, and performing a search (particularly after the application has already been drafted) is not cost-effective. Fortunately, I work with clients who aren’t forced to pinch every penny.

            but anyone who works in this field—including you—knows from first hand experience that your quote above is a kernel of truth wrapped in a gallon of puffery and folderol.
            You sound like you work for the efficient infringers of the world — believing that everybody is out to get them — as they continue to incorporate (license-free) other people’s technology into their businesses.

            My point remains and it applies to regardless of whether the patent owner is an operating company or NPE — easily-invalidated patents are less than worthless. They are an asset with a negative value to the vast majority of those who would be interested in acquiring them.

            1. 3.3.2.4.1.1

              How do you know how many searches are done prior to drafting?

              Every working practitioner on this board knows roughly what percentage of applications they have drafted involved a pre-filing art search. If you want to try to bluff your way past this point, well, your credibility is yours to torch…

              Regardless, performing a search is not necessary…

              Right, the applicants definitely care that the patents be enforceable, but they are unwilling to spend the money to take the necessary precautions to ensure as much? That is just about the most perfect example of “revealed preference” for which one could hope.

              1. 3.3.2.4.1.1.1

                Every working practitioner on this board knows roughly what percentage of applications they have drafted involved a pre-filing art search. If you want to try to bluff your way past this point, well, your credibility is yours to torch…
                And I just wrote that 100% of the applications I filed over the last 10 years have had a pre-filing search. Regardless, you have NO IDEA what that percentage is for the industry as a whole.

                Right, the applicants definitely care that the patents be enforceable, but they are unwilling to spend the money to take the necessary precautions to ensure as much?
                A search does LITTLE to ensure that a patent will be enforceable. The USPTO examiner who gets assigned the application will probably have the most experience of any patent searcher that one could hire in the particular field in which the application is classified. If they don’t, they probably know someone who does — because they are in the same art unit. The USPTO also has the kind of resources that most search firms do not have. As such, the USPTO examiner should be the person best placed to find the best prior art.

                As a practical matter, unless an outside searcher is working with the complete application along with the claims, then this outside searcher isn’t going to be able to perform the best search. However, once the application has gotten that far (i.e., it is ready for filing), why pay to have an outside searcher perform the search when you can just pay the filing fee and have the USPTO do the same (and probably for less)?

                Maybe your work with technology in which outside searches provide better art. I don’t.

                As I said, my clients do perform searches because they have lots of potential inventions and they want to use that the search to make a determination whether or not to have a patent application drafted. However, once the application has been drafted, the USPTO should be the one finding the best prior art. If the USPTO is not finding the best prior art, then that is a USPTO problem that needs to get fixed.

            2. 3.3.2.4.1.2

              Greg (aka Dozens) falls to the same fallacy as advanced by Paul in the gambit of something that while indeed is a part of Best Practices, is ALSO something NOT REQUIRED.

              Wt, your position here IS unassailable (especially in view of Greg’s words of “but anyone who works in this field—including you—“).

        4. 3.3.2.5

          While “most patent owners want a patent that will stand up in court” may be an expressed ideal, the reality is that there are many companies or individuals far more interested just in whether their patents issue or not. Their in-house PCs or GCs may even get rewarded based on the raw total number of issued patents and/or how much they can reduce what they are paying for prep and prosecution, not on whether the best prior art was of record. [Excluding much of the pharma and biotech industry, and venture capital funded startups, where obtaining valid patents is known in advance to be financially important.]

          1. 3.3.2.5.1

            the reality is that there are many companies or individuals far more interested just in whether their patents issue or not
            The reality is that those patents (i.e., patents for show) are not intended to be asserted.

            Their in-house PCs or GCs may even get rewarded based on the raw total number of issued patents and/or how much they can reduce what they are paying for prep and prosecution, not on whether the best prior art was of record.
            You’ve just described individual/companies that don’t care about the value of the product (i.e., an issued patent) for which they are paying. If that is the case, why would they care about how patent applications are examined?

            1. 3.3.2.5.1.1

              Wt,

              There IS a valid counterpoint here: some clients DO want granted patents purely for the ‘number’ effect.

              While that is certainly true, such does NOT (nor should it) drive the conversation about having a higher quality EXAMINATION system.

              As both Greg and Paul have advanced this, it can be seen for what it is: an attempt at obfuscation. The point, while valid FOR SOME SMALL FRACTION, is simply not a point that advances ANY position on improving examination quality.

    4. 3.4

      Max, do not most U.S. applicants file in the EPO rather than in individual European country patent offices like the U.K.?
      As previously noted, what the EPO charges for prior art searches and examinations is so much higher than the USPTO does that a comparison is unfair. Also, the EPO has an opposition system that serves much the same function as an AIA post-grant proceeding yet does not have its broad estoppel danger.

      1. 3.4.1

        >>is so much higher than the USPTO does that a comparison is unfair.

        When I was doing litigation, I so wanted to see a study that would look at the 103 arguments in IPRs and DC cases and compare the prior art cited with the EPO search report. My guess is that a huge percentage of the time the EPO search report is used as the basis of the invalidity argument.

    5. 3.5

      Yes. They should shut down the USPTO and quit flooding the registry with 6,000 potential assets/liabilities every Tuesday. It is insane.

  14. 2

    I know that all the people who complain about the “Patent trolls” terminology about about to roll in here and decry “Patent killers”, but I think it’s a fun and reasonably descriptive term and they’re wrong for complaining!

    1. 2.1

      but I think it’s a fun and reasonably descriptive term and they’re wrong for complaining!

      Of course you do — there is no surprise there given your well-established anti-patent bias.

      It is also not a surprise that you remain blithely (seemingly) unaware of that bias and why that view is harmful to innovation.

  15. 1

    Looks like a grab bag of bad ideas. I think that IPRs are a good and salutary part of the U.S. patent system, but it is hard to look at the way the IPR system presently functions and conclude that the main problem is that it is too easy on patentees.

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