Patently-O Bits and Bytes by Juvan Bonni

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

  1. 3

    From the Laser article:

    The environment that might have justified the Federal Circuit changed: the Supreme Court is more active in patent law and actively hostile towards the Federal Circuit, the Federal Circuit’s docket shifted to large numbers of administrative patent appeals from the Patent Trial and Appeal Board (PTAB), the strength and competitive position of the U.S. patent system changed, forum and venue practices shifted, patents have become more mainstream, and the Federal Circuit provided nationally uniform decisions on many of the previously-unresolved issues in patent law.

    I would really love to know—with more specificity—what the author means by “strength and competitive position of the U.S. patent system.” In what sense does the U.S. patent system have a “competitive position”? With whom is the U.S. patent system competing?

    Also, “the Federal Circuit [has] provided nationally uniform decisions on many of the previously-unresolved issues in patent law” seems a strange argument for doing away with the CAFC’s exclusive appellate jurisdiction. This seems rather like saying “now that you have lost all this weight, you no longer need to maintain your healthy diet.” To my mind, the now-achieved uniformity is part of the argument in favor of keeping the current arrangement.

    1. 3.1

      >>With whom is the U.S. patent system competing?

      Oh brother. The U.S. patent system competes with all the patent system in the world. Companies want to protect their inventions. They pick countries to protect their inventions in. Etc.

      1. 3.1.1

        Of course companies pick jurisdictions in which they will file each patent, but that does not mean that the jurisdictions are “in competition” with each other.

        My son is a high school junior, so we receive a ton of promotional literature from colleges in our mail each day. The schools are competing with each other for my son’s attention and affection because they know that he is only going to go to one of them. If he goes to UCLA for freshman year, then it necessarily follows that he will not attend UMich for freshman year. That is the nature of competition—someone wins and someone else loses.

        Not so with patent filing. If I file in the U.S., that does not mean that I will not also file in Japan. The one decision has almost nothing at all to do with the other decision.

        Moreover, do patent offices act like they are competing against each other? When you file a PCT, do you start to receive a bunch of advertising material ten months later urging you to file in AU or CN or ZA? I know that I never have.

        1. 3.1.1.1

          Greg — not quite.

          Most all companies have a limited spend and WILL not be exhaustive in choosing all countries to file in.

          There very much is competition as Night Writer asserted

        2. 3.1.1.2

          >>Moreover, do patent offices act like they are competing against each other?

          Yes, they do. As one example the EPO competes with the other offices to be receiving office.

          And saying that the decision to file in Japan is independent of the filing is the USA is not true. It is expensive to protect products with patents. And corporations need to sell products internationally. The corporations often pick countries where they will protect their product based on the strength of the patent system compared to other countries.

          Additionally, patent office compete with one another for innovation and the countries with the best patents are more likely to receive innovation dollars.

          Anyway, it could be the topic of a paper. But anyone that actually works in this area with corporations knows patent offices compete.

          1. 3.1.1.2.1

            Not sure how much competition the EPO has to cope with, in the business of granting patents in Europe. But the various national jurisdictions under the EPC certainly compete with each other for the business of litigating patents under the EPC. How quick are the national courts , how rigorous is their legal analysis, how good are they at fact-finding, how influential will be their written decisions, for courts outside the EPC area, and how often are their decisions at first instance reversed on appeal.

            1. 3.1.1.2.1.1

              Yes, Max, this is big. But that does go to the patent system for the country.

          2. 3.1.1.2.2

            [T]he EPO competes with the other offices to be receiving office.

            Er, no. The EPO actually legally prohibits non-EP residents from using the EP as a receiving office, which is a strange thing to do if they were competing to encourage us to use the EP as a receiving office. If Ford put you on a list of people to whom they would not sell a car, would you say that they are “competing” for your business?

            1. 3.1.1.2.2.1

              Dozens, perhaps Night was thinking not so much of the RO as of the ISA/IPEA, the EPO competing with the USPTO to write the first opinion on patentability of the subject matter claimed in a patent application filed at the USPTO in its capacity as RO under the PCT for a US Applicant? As a US-resident filing at the USPTO under the PCT, which Office do you choose as ISA: US, EP or KR?

              1. 3.1.1.2.2.1.1

                Sure, many patent offices moonlight as prior art searchers. In that capacity, they compete with every other prior art searcher—including other patent offices that also moonlight as prior art searchers. Notably, however, in that capacity they are not competing with each other qua patent office.

                The USPTO has no competition qua patent office. If you want a US patent, the USPTO is the only one who can give it to you. If you want a Japanese patent, the JPO is the only one who can give it to you. If you want a Brazilian patent, the BINPI is the only one who can give it to you. None of these outfits are really in competition with each other, which is why none of them act like they are competing with each other (except—as you note—when they are moonlighting as prior art searchers).

    2. 3.2

      For what it’s worth, Greg, I will add my 6 pennyworth, on the notion of patent jurisdictions “competing” with each other. One sees it in Europe, where there is competition between Germany, The Netherlands and England, for the lead role when patent litigation under the EPC is contemplated. But look instead at the EPO. Does it “compete” with any other Patent Office? At first sight, one would say no. And yet. Perhaps it does. Imagine meetings of the world’s Big Five Patent Offices. Their association has a name but I forget now what it is called. Do you not think the macho managers of the five compete against each other, at least in the area of which of them can put on the table the best metrics for business efficiency and client satisfaction? And certainly in Europe, at least in the CII (computer-implemented invention) space , there is widespread scepticism whether there is any point in pursuing a PCT filing into the national phase at the USPTO. Some filers, already badly burned in the USA, shrug and say “Never again”. Perhaps this is what lies behind the word “competitive”?

      1. 3.2.1

        To be fair, Max, the EPO is the one notable counterexample to my argument that you can tell that patent offices are not in competition because they do not advertise. I used to attend the Biotech Industry Organization (BIO) meeting every year, and the EPO would actually send a representative to BIO whose job it was to visit all of the law firms and start-ups and urge them to nationalize their PCTs in the EPO.

        I never understood why, and neither did any of the other participants with whom I talked. Near as I can tell, it is just some sort of inferiority complex of the EPO management.

        1. 3.2.1.1

          Dozens, I wonder whether here you are being a tad disingenuous, in asserting that you have no idea why the EPO solicits more custom.

          It is pragmatic, these days, to view the EPO as a supra-national organisation above the law, accountable to nothing and nobody, immune from prosecution, acting with impunity, callous, even brutal, in its treatment of its employees. It has been captured by a cabal of managers adept at playing the shareholders off against each other, drawing upon its so-called development fund (which pays out grant money to individual Member States at the discretion of the EPO President) for sweeteners to swing the voting in the Administrative Council (the AC, the EPO’s overseer and owner) to achieve its objectives.

          This power exercised by EPO management can continue only for as long as sufficient cash is being generated by the cow it is milking so assiduously. It helps that Applicants for patent rights in Europe have no real alternative but to ask the EPO for a patent. But going round the world soliciting more filings has already proven, I suspect, to be rather effective to generate more cash, more than enough to defray the overhead costs of its marketing dept. Does that explain to you their presence at BIO each year?

          Inferiority complex? I see no sign of that. But venality? That’s another matter. Shareholder value is what is driving EPO management conduct. You know, these days, for EPO management, it’s only business. Simple as that.

          If the 39 sovereign States who own the EPO don’t like it, they have the power, if they act collectively, through the AC, to rein in EPO management. But that never happens. Surprised, anybody?

          1. 3.2.1.1.1

            Two brief responses:

            (1) Every office needs fees, but only the EPO sends an agent (with a booth even!) to BIO.

            (2) Do not forget that the EPO used to include PCTs (even those that never entered the EP regional phase) in its counts of total EPO filings to make its numbers look bigger.

            I am no psychologist, but from an amateur’s viewpoint, those items—taken together—seem easily consistent with the “inferiority complex” hypothesis.

  2. 2

    Just FYI, today the CAFC rejected Amazon’s mandamus petition seeking to force Judge Albright to transfer a case brought by VoIP-Pal to ND Cal. Meanwhile, in In re Stingray IP, the patentee petitioned for mandamus to block a transfer from ED Tex to CD Cal, and the CAFC granted that mandamus. In other words, two cases on the same day in which the CAFC held for the patentee in a mandamus petition.

    1. 2.1

      Two wins at the CAFC for patentees . . . on the same day?

      Hell has indeed frozen over.

  3. 1

    From the Levine & Sarnoff article:

    Voluntary licensing efforts have proven inadequate to supply pandemic needs.

    Really? How would one hope to establish this assertion? The whole world already contains more vaccine than there are willing vaccinees to consume the supply, and has for a while now. The reality is that it is surprising how well the existing med/tech/regulatory framework did in responding to the COVID19 pandemic. It is not a bad thing to try and find improvements, but in a world run by humans, it would not surprise me if what we witnessed from 2020 to 2022 was the best achievable pharma outcome.

    [T]he Article… demonstrates that, consistent with international law obligations, governments are free to compel trade secret transfers. Further, governments may not be obliged to award compensation for such transfers…

    Good luck with that. The government of (e.g.) India cannot give what it does not have. How are these governments that wish to compel involuntary trade secret transfer going to acquire the confidential information in the first place in order to transfer it?

    1. 1.1

      How?

      By relying on “Equity,” of course.

      It’s kind of funny how your Liberal Left tendencies disappear when your livelihood is in the cross-hairs.

      How Martha Vineyards of you.

    2. 1.2

      Well said Dozens. +1

    3. 1.3

      > How are these governments that wish to compel involuntary trade secret transfer going to acquire the confidential information in the first place in order to transfer it?

      Require it be disclosed as part of some regulatory process, and then republishing the provided info (breaking previous promised of confidentiality) in response to the “current crisis.”

      1. 1.3.1

        Right, but that is a game that one can play exactly once—if at all—and nevermore. If (e.g.) Brazil receives info from Pfizer that is putatively to remain confidential, and then discloses that info, no one will ever again turn that sort of info over to Brazil until it is past the point where it can matter.

        In the pharma industry, the U.S. has far and away the most market power. Europe and JP/KR are a distant second, and then the rest of the world might as well not even exist. If the price of maintaining confidential info so as to compete effectively in the U.S. market is that you just do not even try to enter the BR/IN/ZA (etc) markets, well, that is a small price to pay.

        If BR/IN/ZA (etc) start to debate legal reforms that would permit them to compel disclosures, the result will be that companies pull back from making regulatory filings in those markets. If the info is never filed in those countries, however, then there is no confidential info for their regulatory authorities to disclose. You cannot give what you do not have.

        1. 1.3.1.1

          >the U.S. has far and away the most market power

          Didn’t U.S. agree to waive patent rights during COVID? Or did the Biden Admiration just announced they supported waiver and then sat on the paperwork??

          1. 1.3.1.1.1

            Thanks for asking this, because it affords me an opportunity to clarify a point that I do not believe was covered very clearly while the negotiations were on-going. One certainly saw a lot of talk of the Biden administration backing “patent-waivers,” but that was never accurate.

            The U.S. president not only lacks authority to waive U.S. patents, but does not even have an executive “hook” by which he could pretend to waive them. To waive U.S. patents would require an act of Congress. Did you ever see a headline about the president lobbying Congress to pass such an act? No, because Pres. Biden did not favor a waiver of U.S. patents.

            Rather, what the Biden admin favored was a waiver of the TRIPS agreement. In other words, it should have been styled a “treaty waiver,” rather than a “patent waiver” in the press coverage. Regrettably, that is all water under the bridge.

            The treaty waiver that the Biden administration favored (or at least a watered down version) did eventually pass. All that treaty waiver did was to permit other countries to waive their own patents without risking sanctions under the TRIPS agreement. The sovereign decisions of other nations, however, have no effect on U.S. patents. There was not U.S. “paperwork” to “sit on,” because Pres. Biden never had any desire to see the U.S. Congress waive U.S. patent rights.

            1. 1.3.1.1.1.1

              What????? – you mean that the great Liberal Left bastion of our dear President Biden was engaged in empty virtue signaling?

              Say it ain’t so, Joe.

            2. 1.3.1.1.1.2

              By the by, patent rights were never the real prize being sought – it was the ‘gravy’ of the trade secrets ( and to which Biden could direct the executive branch administrative agency of the FDA to provide upon request.

      2. 1.3.2

        Incidentally, when I say “once,” I mean once in the whole history of the world. That is to say, if (e.g.) India were to pull the stunt that you propose, Pfizer & al. would not just pull out of the IN market. They would quit seeking regulatory approval pretty much everywhere outside US, EP, JP, & KR. They would not care to take their chances on who is next.

        1. 1.3.2.1

          You have more faith in the ability of corporate execs to think long-term than I do. Personally, I’ve seen dozens/hundreds happily offshore mfg to China/India knowing full well that their “partner” will be building unbranded clones during 3rd shift.

          1. 1.3.2.1.1

            The circumstances are not really analogous. The folks on which you are talking are competing in a price-sensitive market, where the benefits of low-cost manufacturing outweigh the cost of ceding your trade secrets. Pharma (at least as the industry is currently configured) does not work that way. Branded, innovator pharma does not compete on cost.

            Moreover, if (e.g.) Pfizer elects not to seek regulatory approval in AU/BR/CA/GB (etc), it does not mean that they will cease to make sales in those countries. What would happen would be that for about a year, Pfizer would continue to sell already-approved drugs in those markets, but no new drugs.

            After about a year, citizens of CA would notice that US patients can get X, but they cannot. GB patients would notice that FR patients can get Y, but they cannot. Etc. and so forth. At that point, the governments of CA, GB, etc. could either (1) stick to their guns and insist that Pfizer cannot sell X & Y without first filing with the local regulatory authority, or (2) they could change their laws so that approval by the USFDA is good enough for Canada, or approval by the EMA is good enough for the U.K., etc. My bet is on #2 in most instances. Citizen clamor will make it too hard to hold the line, especially when—in reality—there is no reason why EMA approval ought not to be good enough for GB (after all, GB had been relying on EMA processes and safeguards for decades with no real problem). Heck, I am not even sure why we do not take EMA sign-off as good enough.

            In other words, the manufacturer who avoids CN outsourcing is really giving up a meaningful market advantage. The pharma giant that refuses to seek regulatory approval in (e.g.) IN, however, is giving up nothing in reality.

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