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August 23, 2007

No Problemo

Mark Lemley, professor at Stanford Law School, "widely recognized as a preeminent scholar of intellectual property law," toots of the new rules for examination limits: "The idea that this would be any sort of significant restriction on patent owners is ludicrous to me. It will affect 10 applications a year, maybe 50, out of 450,000."

New 37 CFR §1.75(b)(1), known as the 5/25 rule, limits applications to five independent and 25 total claims without an odious examination support document (ESD). An ESD, covered under 37 CFR §1.265, comprises claim charts mapping claims, limitation by limitation, to the most relevant prior art references found; based upon a compulsive prior art search for which inequitable conduct liability is attached. An ESD also includes patentability claims charts: for each independent claim, citing specification support, limitation by limitation. 37 CFR §1.75(b)(4), soon to be known as the 5/25-totality rule, puts all applications in the same family, combined, under the 5/25 rule; where a family is for a set of claims that are "patentably indistinct," which is normal continuation practice. For all patents in a family, you only get five independent and 25 total claims without submitting detailed claim charts. This is a severe stricture.

One may reasonably observe as understatement that Mr. Lemley's long suit is not likely to be statistical prediction, probabilistically speaking, of course.


Quotation of Mark Lemley from an article by Stuart Weinberg of Dow Jones, provided by Hal Wegner.

Posted by Patent Hawk at August 23, 2007 12:57 PM | Prosecution


Mr. Lemley is living in that dream world known as academia. I alone have 50 problems with this this year and I am not by myself.

Posted by: rrrrrr at August 23, 2007 1:23 PM

Is there anyway anyone can get a petition going so that this guy will no longer be able to use the cache of his employer while he's running amok. If 5000 patent practitioners, inventors, and Stanford graduates signed a letter saying that this guy is absolutely talking out of his ass and discrediting a great institution, I wonder if the administration would listen...

Posted by: Petition Stanford at August 23, 2007 3:16 PM

The paper by Lemley and Moore ("Ending Abuse...") was cited by the USPTO in its arguments for rules change way back in January 06. A certain footnote within "Ending Abuse..." bushwhacked Robert Clarke of the USPTO, who was named "George" Clarke by Jaffe and Lerner (Laffe and Jerner?)

Lemley elsewhere proclaimed Gary Boone to be the inventor of the integrated circuit.

Go figure.

Posted by: Lawrence B. Ebert at August 23, 2007 4:56 PM

Yep...I think I've got at least 10 of his 50 patents in one circuit configuration I'm prosecuting - which was restricted 4 ways across in each of the 3 CIPs that were ALREADY filed. There is a question with respect to how the office will interpret "patentably indistinct", apparently its using the same double patenting obviousness standard, so at least its arguable, but such a decision is only petitionable - which is basically saying it is useless to argue as that route of appeal goes back to the examiner. Restrictions and obviousness double patenting goes back to the SPE who basically talks to the examiner, but never really does anything - at least not when I was an examiner. I just cannot see this as a workable solution to the pendancy problem - not that it is directed to this. Moreover, it doesn't ensure any better quality in the review or examination. So I don't know where this guy is coming from - hell the frequent CIPs I've filed typically arise from improvements made by the original inventors in the process of brining something to market - oh, yeah..that's where we may differ, I'm in the real world.

Posted by: PeevedPractitioner at August 23, 2007 9:42 PM

I personally have at least ten applications.

Posted by: Left Coast at August 23, 2007 10:17 PM

Mr. Ebert,

Prof. Lemley never claimed that Gary Boone invented the integrated circuit. Rather Lemley claimed that the technology that in Boone's patent, titled "Single Chip Integrated Circuit Computer Architecture" was not caught up in a patent thicket in part because the Hyatt v. Boone interference proceeding went on for so long.

I'm sure it would have been more precise to call what Boone and Hyatt were fighting over something else, but it was really a research assistant's mistake rather than a substantive error by Lemley.

Posted by: Michael Martin at August 23, 2007 11:59 PM

Michael Martin states that Prof. Lemley never claimed that Gary Boone invented the integrated circuit. For reference:

Mark A. Lemley, Patenting Nanotechnology, 58 Stan. L. Rev. 601, 611-612 (2005):

The integrated circuit was itself an improvement in the field of computing, a way of building transistors (an invention discussed above) [p. 612] directly into a computer chip by using charged silicon, a semiconductor. The invention opened up not just computing but also calculators, cell phones, and a host of other portable electronic devices. But because two different inventors working independently developed the integrated circuit at about the same time (1971), the patents were put into interference. Gary Boone was ultimately declared the winner, but not until 1999, twenty-eight years after the first patent application was filed.

Posted by: Lawrence B. Ebert at August 24, 2007 6:49 AM

Those law professors should be explicitly excluded from any meaningful discussion about patents.
All I can see is some unsubstantiated nonsense coming out of guys like Lemley
Perhaps Prof. Lemley should try to invent something new and unobvious, then try to get a patent on his invention from the USPTO and, most importantly, make a buck on his invention

Until he does it all his writings are a pure academic garbage, an insult to all of us - real inventors with valid patents

Posted by: small inventor at August 24, 2007 7:02 AM

As one further remark about Michael Martin's (incorrect) assertion about the "Gary Boone" matter, note the following:

Mark A. Lemley, Patenting Nanotechnology, 58 Stan. L. Rev. 601 (2005) -->

Thanks to John Allison, Chris Cotropia, Rochelle Dreyfuss, Nathan Durrance, Hank Greely, Rose Hagan, David Jaffer, Joseph Mallen, Greg Mandel, Michael Martin, Judge Margaret McKeown, John Miller, Craig Nard, Matt Powers, Bhaven Sampat, Madhavi Sunder, Hal Wegner, and participants at programs at Stanford Law School, the University of San Diego School of Law, the U.C. Davis School of Law, and the Foresight Nanotech Institute conference for their helpful comments, and to Michael Martin for research assistance.

Footnote 15: He does include "nanometer," which covers both clear nanotechnology inventions involving nanoscale gate size and nanofiltration and unrelated inventions dealing with optics (because the wavelength of visible light is measured in nanometers, regardless of the scale of the application). Altering Sampat's search to exclude "nanometer" reduces the number of patents substantially: only 56% of Sampat's issued patents, and 67% of the published applications, do not include any reference to "nanometer" in the claims. Communication from Michael F. Martin to Mark A. Lemley (Feb. 4, 2005) (on file with author). But while some of those patents are likely to be unrelated to nanotechnology as I have defined it, many will be true nanotech patents, especially in the semiconductor field.

Posted by: Lawrence B. Ebert at August 24, 2007 7:22 AM

Separate from the lack of knowledge of patent law manifested by many of the intellectual property academics, there is an odd daisy-chaining behavior in many of the publications.

For example, Lemley in his rational ignorance paper (95 Nw. U.L. Rev. 1495), cites to the (then) unpublished work of Quillen and Webster:

The Quillen-Webster study suggests, moreover, that they ultimately issue an astonishing ninety-seven percent of the unique applications filed. n126

[with the reference amounting to Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent Office (2000) (working paper, on file with author).]

In turn, Quillen and Webster in their second paper (12 Fed. Cir. B.J. 35) cite to Lemley:

Numerous authors have addressed the problem of USPTO quality. See Mark A. Lemley, Rational Ignorance at the Patent Office, 95 NW. U. L. REV. 1495 (2001);

Quillen and Webster also cite an unpublished manuscript, which to date I have been unable to obtain from Professor Wegner:

Harold C. Wegner, Enronesque Patent Bookkeeping: Two-For-One Continuation Double Counting and American Patent Flooding (June 14, 2002) (unpublished manuscript, on file with author at Foley & Lardner).

Turning full circle, in his July 2007 paper on SSRN, Lemley effectively says (of the 97% business): just kidding guys; the number isn’t so high after all.

Posted by: Lawrence B. Ebert at August 24, 2007 8:52 AM

To further confirm that Lemley was talking about the integrated circuit in Patenting Nanotechnology, one can listen to an audio of Lemley's talk at the Foresight Nanotech Institute conference, where he describes the events with (his version of the) integrated circuit story in terms of the Boone/Hyatt history, rather than the Noyce/Kilby history. There is also erroneous discussion of the impact on aviation of the patent of the Wright Brothers. As an added bonus, there is an egregious error at the end of the talk.

Yet, Weinberg of Dow Jones quotes Lemley on the "50 patent impact." Go figure.

Posted by: Lawrence B. Ebert at August 31, 2007 5:23 PM

According to the PTO's online roster of registered patent attorneys and patent agents, Prof. Mark Lemley, "widely recognized as a preeminent scholar of intellectual property law," is neither a patent attorney or agent.

Lemley simply "shoots from the mouth" and is too ignorant to know what it is he knows nothing about. Having been a patent attorney for 23 years, I can safely say that I undoubtedly have, at least, a dozen of those 10 or 50 patent applications that "know nothing" Lemley talks about on my docket at any given time. It's only a question of time before PTO denials resulting from the proposed Rules, if they, in fact, take effect, start triggering a slew of federal court challenges on the ground that the PTO's actions are ultra vires.

Posted by: Edwin D. Schindler at September 11, 2007 7:48 PM