Proud to announce that the 3rd edition of Patent Ethics: Prosecution that I co-authored with Mercedes Meyer is now available here! This edition adds a massive amount of new material to deal with the new PTO ethics rules and the fast-moving, roller coaster world of ethical issues in patent practice!
From the description:
Patent Ethics: Prosecution (2015 Edition), by David Hricik and Mercedes Meyer, is an essential guide to the ethical issues arising in the course of the patent prosecution process. By providing relevant rules and case law, it allows practitioners to identify ethical problems before they arise and to address them most effectively when they do. Patent Ethics: Prosecution is one of two volumes on patent ethics — the second focuses on litigation — and is the first of its kind to combine the United State Patent and Trademark Office (PTO) rules with commentary by the authors, which distills the authors’ own experience and expertise in patent prosecution into effective practice strategies.
The 2015 Edition is particularly relevant considering the significant ramifications with the United States Patent & Trademark Office (USPTO) repealing its existing rules, the USPTO Code of Professional Responsibility, and replacing them with the new USPTO Rules of Professional Conduct. Furthermore, the 2015 Edition also comprehensively discusses ethical issues of major concern for patent law practitioners such as:
• The increase in malpractice claims based upon patent prosecution as well as recent significant verdicts of $30 million and $70 million.
• The USPTO’s Office of Enrollment and Discipline’s vigorous enforcement efforts, continued persistence in asserting a broad view of its jurisdiction, and resulting increase in the volume of case law and other authorities.
• The troublesome issue of best mode and the America Invents Act.
• The various ethical issues surrounding patent agents.
The 2015 Edition features new analysis of current client conflicts in patent practice, including when prosecution and opinion work become “adverse” to a client, the conflicts of interest created by the AIA’s approach to the best mode, and duty of candor post-Therasense. It also includes an updated PTO Code completely annotated with OED decisions on each provision.
Makes a perfect Christmas present, too! Buy one for every lawyer in your firm! Heck, buy two so they have one at home!
Excellent practitioner guides are often described as the “Bible for ___.” Peter Menell’s “Patent Case Management Judicial Guide” might fit into this category as the patent litigator’s Bible. However, I see some disconnect in the bible naming process. Although the Christian Bible does include rules of practice, it turns out that those rules are regularly ignored. Many practicing Christians instead see the Bible as more simply providing a source of faith as well as some general guidance.
It is in this broader context that that I see Professor Rob Merges’ new bookJustifying Intellectual Property as a new Bible for Intellectual Property. In his 2011 Harvard University Press book, Merges explains his faith in intellectual property and how the basis for his faith provides general guidance for the structure of a well designed intellectual property system.
Merges is an excellent writer, but the reading is still dense – largely because Merges bases his arguments on the philosophic writings of John Locke, Immanuel Kant, and John Rawls. In reading the book, I am continually referring to the original sources (via the public domain and an internet search). This takes time, energy, and active reading, but will be rewarding for any patent attorney looking to live a purpose filled life.
Merges also believes that utilitarianism is important to intellectual property. However, that justification has always lacked power because proof that the IP system really works has turned out to be “impossibly complex.” In the end, utilitarianism or consequentialism offer only a hollow purpose. As Merges writes in his introduction “[m]aximizing utility, I have come to see, is not a serviceable first-order principle of the IP system. It is just not what IP is really all about at the deepest level.” It makes sense to me that any true right needs more justification than can be provided by an econometrician. (My conclusion may well be based on the large number of economists that I know with failed moral compasses.) To be clear, Merges argues that the IP system should be designed efficiently and in a way that generally benefits society. His point, however, is that utilitarianism does not fully justify the property rights. Rather, for Merges, concerns of efficiency, along with proportionality, dignity, and non-removal are all “midlevel” principles that, though important, are not fundamental justifications. At the fundamental level, Merges relies upon deontological ethics derived from Locke (justification for appropriation), Kant (individual freedoms), and Rawls (distributive justice). By threading together these historic lines of thought, Merges provides an ethical foundation both for the establishment of property rights for creative contributions to society as well as for substantive limits to those rights.
Justifying Intellectual Property is a fascinating book and I will likely post a second discussion of the book after I finish reading the second half. The book does not have all the answers and, in my view, is not always correct. It does, however offer a new framework for understanding intellectual property with a particular focus on why it makes sense to offer property rights for creative enterprises.
Jeff Schox recently sent me a copy of his new book on patent law: Not So Obvious: An Introduction to Patent Law and Strategy. Schox uses the $39 paperback for the patent class he teaches to Stanford engineering students. The book is written in plain language and is clearly designed to be read by engineers wanting a first-cut understanding of the patent system and its purpose. In addition to patentability and infringement, the book also includes a nice chapter on inventorship and ownership rights.
In the past, I have often recommended the "Patent it Yourself " book by David Pressman to inventors and others wanting to better understand the process. The problem with Pressman's book is that it has become so lengthy (596 pages) that it is no longer an easy resource for those more casually involved in the system. Schox book likely fills that gap. (PIY is still a great resource for those more deeply involved in prosecution.)
Do others have recommendations of patent law resources for inventors who want to better understand the system without actually becoming patent agents?
John Smith starts his book thanking "Examiner Ms. E.P." of the USPTO for giving him inspiration for his book. "Without your three absurd Office Action rejections, this book would not have been possible." Smith's book is titled Don't File a Patent with the headline caption "the book that the Patent Office doesn't want you to read." Smith is not a lawyer, but rather an entrepreneur and inventor. Smith had no trouble obtaining two patents that covered his relatively worthless invention (designer wheel covers). Then, for his invention with real market value (hurricane window protectors), the PTO refused to issue a patent. (Smith apparently gave-up after three rejections.)
The book is directed toward individual inventors and small companies with little or no budget for intellectual property or litigation. Although the book takes an overly-extreme position, Smith suggests the valid argument that the limited resources of a small entity is often better spent on other business development activities. His "Reason #5 not to file a patent" explains this point:
The patent process costs tens of thousands of dollars. This is a waste of your money. A better investment is making your product first in the mind of your customer. . . . Back in 2005 when I filed my original patent application, I didn't have all this knowledge. At the time, some attorneys suggested that inventors "should wait and not market your product until you have a patent." I'm glad I never listened to that advice. Good thing I started marketing Storm Stoppers right away! Had I waited until getting a patent, I'd have nothing now. No awesome name brand, no millions of dollars in past sales, no thousands of customers, no appearances on CNBC & CNN, no Goodwill donation trips to the Bahamas and no learning and improving my product. Marketing your product right away is the only way to demonstrate that you have a good product.
About one-half of the book is dedicated to explaining why patenting is a waste of time and money for folks in his situation. The other half is devoted to providing some guidance on marketing and manufacturing.
At times throughout the book, Mr. Smith appears so burned by his past experience that he is blinded to the potential that patents can add in certain situations. With that major caveat, I think that the book is a good read and could be a useful tool for containing over-exuberance of innovators.
Patent interferences are intellectually stimulating and often a lot of fun–at least for the attorneys involved. However, I've seldom thought of them as "capable of producing a hell of a good story," which is the author's assessment of the story he tells in Taylor, LASER: The Inventor, The Nobel Laureate, and The Thirty-Year Patent War. Of course, the laser was unquestionably one of the great inventions of the Twentieth Century, and the fact that the issue of who invented it (Prof. Charles Townes or his grad student, Gordon Gould) provided gainful employment for patent attorneys for thirty years certainly commends this book to the readership of this publication.
Actually, "gainful employment for patent attorneys" better describes the situation of those who supported Prof. Townes's claims than the situation of those who supported Mr. Gould's claims. (Tellingly, Gordon Gould never did get his doctorate.) However, the fact that those who worked for Mr. Gould "on the cuff" for many years were ultimately amply rewarded makes it a heart-warming story for most of us.
Moreover, the professor/grad student controversy is a familiar one–and one that is usually difficult for even the best intentioned objective observers (including members of the interference bar) to sort out. Just as "mistakes were made" during the Reagan administration, an "invention was made" while Gordon Gould was working for Prof. Townes. But who made it? According to this book (and according to the final judicial determination), Gordon Gould made at least part of the overall invention of the laser—a part which was essential to the commercialization of lasers. However, I've been involved in enough of these disputes to suspect both that the final judicial determination could have gone the other way and that, if that had happened, an equally plausible (and interesting) book could have been written about Prof. Townes.
What made this book particularly entertaining for me was the fact that many of the principal players in the drama (judges, Patent Office officials, and lawyers) are still alive or have been within recent memory. It's always fun to read about folks you know and to realize that they were involved in a truly historic controversy.
In addition, the parts of the story concerning Gordon Gould as a prickly, overly suspicious "basement inventor" rang true for me. Most of us have dealt with some of those in our time at the bar, and it's never easy.
On the negative side, however, I should warn prospective readers that the manuscript was apparently not read by a patent lawyer—let alone by an interference specialist. It is replete with legal howlers! However, if one reads it with the proper attitude, noting those howlers is part of the fun.
Mark Davies recently authored the user manual for Federal Circuit appeals. From its 300 spiral-bound pages, you can tell that the book is designed to serve the appellate attorney during the process of crafting a brief. Davies argued dozens of appeals as a DOJ appellate attorney and is now doing the same at O’Melveny in DC.
The book is very easy to read and understand, and it does an especially good job of providing concrete advice on how to draft an effective and clearly written brief while staying within the rules.
Davies adapts Strunk & White’s Elements of Style into a top five list that would benefit any writing: (1) Omit needless words; (2) Make the paragraph the unit of composition; (3) Use parallel and consistent writing form; (4) Use the active voice; and (5) Use definite, specific, concrete language.
His biggest general piece of advice is in all caps: DO NOT USE A DISTRICT COURT BRIEF AS A SHELL!
If you have an appeal pending, you better use the book.
[This post is the third in a series of posts based on empirical research in a new book, Patent Failure, by James Bessen and Michael Meurer. Read Part I and Part II]
Patents on computer programs, financial processes and business methods have been controversial at least since the 1960s. Surveys regularly find that computer programmers are opposed to patents on software by a wide margin. In what other field is the class of inventors so opposed to patents?
Is there a problem?
Some people contend that there is nothing particularly wrong with patents on software, arguing that "patent thickets" are not preventing innovators from entering software markets. But the latest evidence [LINK] suggests that patent thickets do, in fact, inhibit startups in software. More important, patent thickets might not be the only or even the most important problem with software patents.
Indeed, our evidence suggests an important problem of another sort: software patents are four times more likely to be litigated than are chemical patents; business methods patents are twelve times more likely to be litigated; finance patents are 49 times more likely. Moreover, the evidence also suggests that these patents have lower values than chemical patents, so these patents are not being litigated more because they are more valuable.
Other people admit that there are problems with software patents, but they suggest that this is only temporary: once judges and patent examiners understand this technology better, once they have become familiar with the prior art, etc., then the uncertainty about these patents will abate and litigation rates will go down. But the evidence shows that after a decade of issuing software patents in large numbers (over 200,000), the probability that a newly-issued software patent will be litigated is continuing to rise.
So it does seem that patents on software and related technologies at least have a particular problem with litigiousness. And this problem is central to the poor performance of the patent system generally. In the previous post we highlighted how litigation costs have substantially outgrown the profits that public firms receive from patents outside of the pharmaceutical and chemical industries. In 1999, 38% of the cost of litigation among public firms arose from lawsuits involving software patents; preliminary data suggest that this share has increased since then. Litigation over software patents is clearly a major factor in the poor performance of the patent system. So in a very real way, the overall performance of the patent system cannot be fixed unless the particular problems of software patents are also fixed.
Why are there so many lawsuits over software patents?
A variety of evidence leads us to conclude that software patents are involved in relatively more litigation because they are more likely to have "fuzzy boundaries." Statistical evidence shows, for example, that software and business method patents are much more likely than other patents to have their claim construction appealed to the Federal Circuit. Part of this tendency arises because of the nature of the technology and part arises because of the way the courts have treated this technology.
Our reading of the case law convinces us that patent law tolerates too many software claims untethered to any real invention or structure; in such a world clear boundaries are unattainable. When patent claims relate to actual devices or chemical structures, then their meanings can be interpreted by reference to those physical or chemical entities. However, when the words refer to abstract ideas, they are often subject to multiple interpretations and are therefore more ambiguous. For example, many people thought that "point of sale location" (in the famous E-Data patent) was computer industry jargon for that place in a retail store where transactions take place, formerly occupied by a cash register. When the Federal Circuit interpreted this claim, they decided that it referred to any location where an e-commerce transaction might take place, although it is highly unlikely that this is what the inventor had contemplated 17 years earlier. Thus a broadly worded invention for a kiosk in a retail store was read to cover a broad swath of e-commerce. Not surprisingly, this patent generated quite a few lawsuits.
Patent doctrines that might serve to prevent such fuzzy claims have been undermined. For example, the enablement doctrine has historically been used to keep patents from claiming much more than what was actually invented. Unfortunately, as a result of Federal Circuit decisions on software patents during the 1990s, these patents no longer need to provide computer code, a flowchart, nor any detailed description of specific operation in order to be enabled.
Fixing the problem
A lot of people have very strong opinions about how patent policy should or should not change regarding software patents. We wish we had such clarity, but we do not. We are convinced that the current treatment of software patents creates significant problems and that these are getting worse. But the problem is complex and fixing it will likely involve multiple changes in law and institutions.
Certainly, KSR should help and so would a stronger indefiniteness requirement. Additionally, it might help to restore a substantial enablement requirement for software patents so that these patents are restricted to claiming more or less what was actually invented and disclosed.
Possibly, a subject matter test might help. We confess we do not have a rule that cleanly distinguishes inventions using software that should be patentable from abstract processes that should not be patentable. Some people argue that any attempt to proscribe subject matter will only increase uncertainty and encourage avoidance through clever claim drafting. But the evidence suggests that the subject matter tests used following Benson and Flook did not, in fact, encourage excessive litigation during the 1980s, even though there was some evasive claim drafting. Litigation rates for software patents then were about the same as those for all patents. On the other hand, we doubt that a subject matter test by itself would be sufficient to fix the problems of software patents.
For those who are planning a summer trip, especially those IP-geeks who cannot completely get away from work, make sure to pack a copy of Paul Goldstein’s latest A Patent Lie. Like his first novel, Errors and Omissions, published two years ago, this new legal thriller transforms intellectual property practice into a tale of murder and conspiracy.
I had heard a rumor that Goldstein’s second novel would be about a Markman hearing. Fortunately, the proceeding plays only a small part in the story which involves Buffalo attorney Michael Seeley (referred to as Seeley throughout the book) being called to the Bay Area by his brother to represent a South San Francisco start-up in a patent infringement suit against a Swiss pharmaceutical company. All of this is a routine matter except that previous counsel met an early demise (called a suicide) under a commuter train. Patent litigation often is not a matter of life or death, but adding to the tension is the patent at issue in the case, which covers a treatment for AIDS. But unlike the global corporate conspiracy at the heart of another recent novel dealing with pharmaceuticals, The Constant Gardener, at stake in A Patent Lie are the details of litigation, which rise above the mundane with the personal, political, and professional relationships that Goldstein depicts compellingly.
At one point in the novel, a character notes that "not only are cases mostly about facts, but no facts are more important than the personalities of the participants." And it is the personalities that drive the story here. Michael Seeley, Goldstein’s protagonist who appeared in the first novel, is the world weary East Coaster, retreating to his home town of Buffalo, New York, to deal with professional and personal crises. The West Coast offers temptations represented here by Seeley’s brother whose involvement in the start-up and the law suit becomes more diabolical by degrees. Temptations also beckon in the character of Lily Warren, a brilliant research scientist who may or may not have been the first to invent the invention in dispute. I doubt that priority disputes have ever taken such inscrutable, or romantic, turns. The law suit takes several twists with an important reversal of interests occurring at the end. Finally, the pushes and pulls on Michael Seeley force him to confront many tensions: his rivalry with his brother, the ethical conundrums of suing a competitor, and the role of a patent lawyer within the patent system.
The book is a real treat for those who like intellectual property (despite the anti-patent message of the book) and may offer something for the generalist reader who likes to get lost in a legal thriller while basking in the summer sun. After reading Goldstein’s latest, try his first book, which manages to make copyright clearance somewhat riveting. Let me also recommend Killer Smile‘>Lisa Scottoline’s Killer Smile, another legal thriller involving patent law.
So what will Goldstein’s next thriller be about? Antidilution? Misappropriation? Exhaustion? The Unpredictability of Fair Use? Whatever the topic, I am sure it will add color to the black letter of intellectual property law.
I asked Ron Slusky to share some insight from his new book on patent prosecution and claim drafting. The book is titled Invention Analysis and Claiming: A Patent Lawyer’s Guide (American Bar Association 2007). [Currently $51 on Amazon] Information about the book, including extensive excerpts, can be found at www.claim-drafting.com.
The following are Slusky’s “five prescriptions for effectively analyzing an invention and then claiming it.”
1. Identify the inventive concept by beginning from the problem that the inventor set out to solve and then asking how, broadly and functionally, the inventor solved that problem
The popular alternative approach of drafting a claim of some indeterminate breadth directed to the embodiment(s) and then whittling that claim down will surely result in a broader claim to the embodiment(s) than what one started with. But that approach may still miss the broad invention because if words defining the inventive concept are not present in the original claim—e.g., a new and non-obvious functional interrelationship—such words are unlikely to somehow magically appear during the broadening process.
2. Begin by drafting a problem-solution statement rather than a claim
As just noted, drafting claims should not be the primary vehicle for discovering the invention. The structural formalisms of claim drafting, while perhaps familiar and facilitating, can all too easily mislead us into thinking we have discovered the inventive forest when we have actually only identified some of its trees.
Begin, instead, by drafting a problem-solution statement and use that as the basis for drafting the patent application’s broadest claims A problem-solution statement is a single sentence stating as broadly as possible, but without reading on the prior art, a) the problem the invention solves, and b) the inventor’s solution to that problem. Here, for example, is a problem-solution statement for a seminal invention of rocket pioneer Robert Goddard:
The problem of enabling a rocket to carry a large amount of combustible material while keeping the weight of the rocket as low as possible is solved by successively feeding portions of the material to the combustion chamber from a separate casing containing the supply of combustible material.
This leads directly to the following claim appearing in Goddard’s U.S. patent 1,103,503 issued July 14, 1914:
A rocket apparatus having, in combination, a combustion chamber, a casing containing a supply of combustible material, and means for successively feeding portions of said material to said combustion chamber.
3. Dream Up Alternatives, Including Some Farfetched Ones
A powerful tool for analyzing an inventor’s embodiment to extract the inventive essence is to dream up some alternatives to the inventor’s embodiment(s), including some alternatives that are farfetched. These are embodiments that, while outlandish or “wacky,” would nonetheless solve the problem to at least some extent. The more farfetched the better. The point is not to claim, or even to disclose, these embodiments in the patent application. The point is that even a farfetched embodiment can solve the problem without involving some of the implementational details required by practical embodiments. Thus dreaming up farfetched embodiments is a way of isolating the essence of the invention from its illustrative implementational details. Thus, for example, envisioning that a touch-tone telephone might have miniature trained parrots to whistle the various tones might be the key to realizing that the idea of using tones to signal from a caller’s premises to the telephone network was not limited to the use of oscillators and physical push buttons, neither of which are used in, for example, web-based telephony systems like SkypeTM.
4. Endeavor to discover “What’s Really Going On”
One way of gaining insight into the breadth of an invention is to ask oneself What’s Really Going On? or—more completely—What’s Really Going On to Solve the Problem? The word "really" in this question emphasizes a search for the fundamental problem and the fundamental solution. What is going on really? The exhortation to discover What’s Really Going On? invites us to exercise our technological curiosity; to dig down and discover what the invention is accomplishing at its essence; to understand what is going on at the 50,000-foot level; to see the invention in terms of fundamental causes and ultimate effects, without all the stuff in between. Thus answering What’s Really Going On? means figuring out—and ultimately claiming—what it is that solves the problem in at least a rudimentary way—not what solves the problem in the most elegant, efficient or commercially attractive way. Indeed, competitors may sacrifice a measure of elegance, efficiency or even commercial attractiveness in their products if it means being able to get into the market or avoid paying a patent royalty. Or they may devise their own elegant, efficient or commercially attractive implementations. Try to identify what is common among all of the embodiments, including some “farfetched” embodiments that the inventor and attorney may be able to collaboratively dream up, as described above. Identifying that which is common to all of those embodiments provides a good start to answering the question “What’s Really Going On?”
5. Envision the “Opposing Team”—the potential infringer and his patent attorney
When analyzing an invention and drafting claims based on the analysis, do not focus solely on what the inventor has done. Focus, rather, on what some competitor may do that takes advantage of what the inventor has done while avoiding the claims. The Opposing Team will be poring over the claims after the patent issues, looking for limitations that their product does not meet, or for some way to redesign the product to that end. Thus as each word, phrase and structural element appears on the computer screen, the claim drafter should imagine himself to be the Opposing Team and try to think of a way around that limitation, just like the real-life Opposing Team will do. In short, the patent attorney endeavoring to further his client’s interests is aided in that task by taking on the mindset of a competitor’s attorney endeavoring to further his client’s interests.
A skilled and motivated paralegal or assistant can more than double the effectiveness of a patent prosecution office. A Patently-O reader and new prosecution paralegal recently submitted the following question:
Hi, I’m currently working as a Paralegal in an Intellectual Property in-house legal department. Can you please tell me what will be the best book to learn patent prosecution from start to finish? I want to know dates, categories, subject matter (i.e., issued, published, granted and so forth).
Suggestions for our reader? Are there particular conferences or workshops best suited for paralegals and assistants?
I had low expectations when I began to read my free copy of Undue Diligence. . . . A legal thriller about a patent attorney written by a patent attorney? — Give me a break!
As it turned out . . . I hardly put the book down until it was finished! It is a fun story, well written with plenty of action. The patent prosecutor (Joe Nile) is the hero; patent troll villains allow for a continuous stream of jabs at the patent system; and the office politics are real. If you like Grisham, you’ll enjoy Undue Diligence as well.
From John Steinbeck’s Novel, East of Eden published in 1952:
“Meanwhile Samuel got no richer. He developed a very bad patent habid, a disease many men suffer from. He invented a part of a threshing machine, better, cheaper, and more efficient than any in existence. The patent attorney ate up his little profit for the year. Samuel sent his models to a manufacturer, who promptly rejected the plans and used the method. The next few years were kept lean by the suing, and the drain stopped only when he lost the suit. . . But he had caught the patent fever, and year after year the money made by threshing and by smithing was drained off i npatents. The Hamilton children went barefoot, and their overalls were patched and food was sometimes scarce, to pay or the crisp blueprints with cogs and planes and elevations.”
It is not often that an IP lawyer becomes the reluctant hero. Gruber’s Book of Air and Shadows leads Jake Mishkin, a NYC copyright lawyer through a Shakespearean comedy as he attempts to recover a lost Shakespeare play, get the girl, and reconcile with his wife. . . Mishkin reminds me of Saul Bellow’s hero Eugene Henderson, the Rain King – a large, morose, trustworthy, and lovable fellow. His practice is actually copyright law, but that is probably as close as our profession will get to popular fame.
I picked-up the book in the Chicago Airport on Monday and am about half-way through the book. This means that I’m assuming comedy.
Paul Cole is a European patent attorney as well as a regular Patently-O reader. I have been planning to write a short review for some-time of his book — Fundamentals of Patent Drafting. I was prompted today when another reader recommended the book.
Given Paul’s background, Fundamentals has a focus on European (and UK) patent drafting. However, the author is also quite familiar with US patent laws and blends-in US topics as well — making the book a good resource for US attorneys who are managing foreign prosecution or who are drafting patents that will eventually be filed in Europe. There is also an interesting discussion of windsurfing technology.
Book price: £25.00 (plus postage for outside the UK: £5.60 to Europe or £13.50 to outside Europe) from CIPA
A legal thriller about copyright law? And not even about trial, but about rights clearance in order to get errors and omissions insurance? Not likely. But my colleague Paul Goldstein‘s new novel, "Errors and Omissions," grabs your attention from the first page and never lets it go. He manages to work murder, chases, love, McCarthyism, the Hollywood blacklist, and a trip to Europe into the otherwise mundane life of a down-on-his-luck copyright lawyer. Along the way, he keeps us entertained with a quick and enjoyable read.
I am reliably informed that Paul’s next novel will be a thriller about patent law, featuring a Markman hearing. Talk about raising the bar . . .
I e-mailed back-and-forth with the author Jeremy Blachman back in early 2004 — before I started Patently-O. He was at Harvard Law School and gave me lots of great tips and helped me get my feet wet in the blog world. I finally met Jeremy in person in 2005, several months after the New York Times revealed that the prototypical BigLaw partner embodied by the Anonymous Lawyer Blog is, in fact, Mr. Blachman. Rather than joining Reed Smith as a new associate after graduation, Jeremy got a book deal to transform his blog persona into a full length novel. He has done an excellent job!
The book is a breeze to read (advance copy) and it is always fun to trash corporate attorneys. It’s cheap too — $15. Hopefully most of you will chuckle to yourself as you read the book — happy that your firm is not this bad. . .
The 2004 book, Innovation and Its Discontents, has received too much attention to ignore. There, and more recently in the Wall Street Journal and elsewhere, Professors Jaffee and Lerner maintain that the patent system is broken, endangering innovation and progress. To their credit, they acknowledge that the alarm has been sounded for centuries. But such ground was well covered in Fritz Machlup’s agnostic study, An Economic Review of the Patent System, published by the U.S. Senate in 1958. Also, to their credit, they criticize, at 158, Nobel Laureates for exceeding the scope of their expertise. Yet, their often-rambling book suffers from the same fault.
Ironically, an introductory section beginning at 18 is entitled "patent medicine." As noted by Wikipedia, for example, "One memorable group of patent medicines — liniments that allegedly contained snake oil, supposedly a universal panacea — made snake oil salesman a lasting synonym for a charlatan." The authors aren’t charlatans, but it is difficult for anyone who knows much about patents to take Discontents seriously.
Jaffee and Lerner put a fresh face on prophesies of doom by linking them to two recent process changes in the patent system — a shift from tax to user-fee funding for the PTO and the creation of the U.S. Court of Appeals for the Federal Circuit. Although they argue that patent policy is too important to leave to patent lawyers, both problems and proposed solutions seem more related to process than policy.
The authors could be taken more seriously if they didn’t persist in flagging a few patents as evidence that, according to their subtitle, "our patent system is broken, endangering innovation and progress." Three mentioned in their book and elsewhere are for sideways swinging, exercising cats with laser pointers, and wristwatches for dogs. They might not resort to such examples, however, if they appreciated that the first is unenforceable, the second could not be enforced except possibly under § 271(b), and the third if enforced would seem unlikely to endanger much of anything.
By citing such patents, Jaffee and Lerner are hardly alone in subjecting the PTO to ridicule, but I fail to see how altered funding of the PTO could have increased the frequency of such patents. Nor do I see how their proposals would reduce it. Although they advocate, for example, earlier publication and expanded opposition, who other than the humorless would oppose? And how much time or money might such humorless individuals be willing to spend?
The relationship between the shift in PTO funding, on the one hand, and the issuance of patents for silly or trivial inventions, on the other, is remote. Indeed, I can think of nothing more likely to deter applications to protect inventions of little or no economic value than the substantial fee increases that followed the shift.
It is unlikely that those who got the swinging and cat-exercising patents harbored delusions about their economic value. Jaffee and Lerner, with most other patent system critics, however, seem not to appreciate why applicants often find such assessments difficult. As I’ve argued repeatedly, applicants unaware of the market value of inventions have far less incentive to scour the literature for potentially fatal art than infringers who subsequently become aware of the stakes. Anyone who understands that should not be surprised that patents are sometimes invalidated. Nor should they protest overmuch that infringers intending to do so must meet a heightened burden of proof. Moreover, they should not be sanguine about the prospects for early opposition.
Turning to Jaffee and Lerner’s claim that the Federal Circuit was a bad idea, I’m even more skeptical. Prior to 1982, only two courts had appellate jurisdiction to review PTO decisions directly — the D.C. Circuit and the CCPA. The 1966 report of an expert commission established by President Johnson faulted the latter as too quick to favor applicants. Fearing erosion of a strong presumption of validity, the Johnson Commission recommended that the CCPA be more deferential. It also recommended that the Office be allowed to appeal from the CCPA to the D.C. Circuit. Because that circuit was unlikely to see infringement appeals, I regard the post-1982 situation as an improvement over what was proposed.
If the Federal Circuit, reviewing directly, adopts rules unduly favoring applicants, the consequences must be faced in collateral review. The substantial price paid for that possibility, apparently unappreciated at the time — and perhaps even now, was the dearth of precedents bearing on the many issues that arise only in the latter context.
Beyond that, some things for which Jaffee and Lerner fault the Federal Circuit, e.g., the strength of the validity presumption, preceded its creation. Others, e.g., the role of juries in patent litigation, are best addressed by Congress or by Supreme Court justices who have made a hash of fact-law distinctions in patent law.
If Jaffee and Lerner, with many others, fear that the fox has been set to watch the hen house, they need to re-evaluate their assumptions about the Federal Circuit and the patent bar. Even if the court were inclined to be the handmaiden of that bar, how would it deal with the many internal conflicts manifested by the diversity of amici in the eBay case? How would it deal with the fact that, for many attorneys, patents are both sword and shield?
On balance I am anything but contented with Innovation and its Discontents. Those who share my belief that two relative newcomers have little grasp of key problems, much less meaningful solutions, should not stand silent.
Note: This review was originally published in PatentCafe’s IPFrontLine. Republished with permission.
Professor Thomas has written an excellent treatise that will be very well regarded for years to come. The book includes 600+ pages of text that is surprisingly readable plus a large appendix in CD form.
This is not primarily a textbook for law students. No, the book provides answers and focused analysis that a practitioner will find extremely useful. The focus of the book is clearly the interplay between patents and the FDA. However, the book also details the pharmaceutical patent prosecution process and particular litigation issues that are important in pharmaceutical patent litigation. The review on Amazon (link above) does a good job of describing the contents.
I have found the book useful and would recommend it to you as well.
Envy Staring Ben Stiller, Jack Black and Christopher Walken
$13.99 from Amazon.com
This movie is pretty stupid. Jack Black invents the “Vapoorizer.” Jack offers his best friend Ben Stiller a 50/50 cut, but Ben refuses. Jack gets rich and Ben is green with envy. As usual, I don’t understand Christopher Walken’s role.
I’m a patent attorney, and maybe that’s the reason that I laughed throughout the movie. Of course, on occasion I was the only one in the theater laughing. Still, its much more interesting than the Federal Judicial Center’s Patent Video. And, don’t forget Christopher Walken.