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September 2, 2007

In the Know

If there is any single interest group sincerely interested in a quality patent regime for its own sake, as point of professional pride, it is patent examiners. POPA, the examiners' professional organization, is firmly against the Patent Deform Act of 2007.

What is most significant is that no one in Congress thought to ask POPA, as the statutory sausage had been stuffed by bribes from geek boys in the computer biz who just want to get on with da bidness of intellectual property theft, and paying no mind, or tab, for doing so.

In an open letter, doubtlessly for those in Congress willing to see somewhat beyond their wallet, POPA pops off:

The proposed Patent Reform Act of 2007 (S. 1145 and H.R. 1908) would make many significant changes to the U.S. Patent System. The Patent Office Professional Association (POPA) believes, however, that a number of these changes would actually hurt rather than help the patent system.

On requiring a prior art search from patent applicants (an "Applicant Quality Submission (AQS)") -

A good idea on its surface, but the devil is in the details.

There is no reason to believe that the Applicant Quality Submission will put better information in front of the examiner during prosecution than is already provided for by 37 C.F.R. § 1.56. Nor is there any reason to believe that the USPTO will provide any more time to examiners to consider this additional information.

The only real potential benefit to the Agency of the AQS is to increase efficiency by taking time away from examiners to search and have them rely upon the AQS as the search of the case. This is tantamount to outsourcing the search to the patent applicant and would contravene the protections on outsourcing set forth in 35 U.S.C. 41(d) as amended by Title VIII of H.R. 4818, the Consolidated Appropriations Act of 2005. POPA believes this would negatively impact the quality and integrity of the patent system.

On gutting inequitable conduct -

[T]he legislation would make it more difficult to invalidate a patent on the basis of inequitable conduct of patent applicants or their agents.

[W]hile the USPTO would now require Applicant Quality Submissions to be submitted by all applicants, making inequitable conduct less of a threat removes the very enforcement mechanism the agency would use to insure the quality of the AQSs.

On granting the patent agency greater leeway in fee setting -

POPA is very concerned of giving the agency broad rule-making authority to set fees.

Taking the authority to set or create new fees away from Congress and giving it to the agency, would hinder the ability of the American public to have a strong voice, through Congress, in determining agency direction and actions. Further, this level of fee setting authority could allow the agency to change fees in such a way as to eliminate the outsourcing protections of 35 U.S.C. 41(d).

On eliminating the best mode requirement -

The best mode requirement of 35 U.S.C. § 112 represents the very quid pro quo of the patent system. The U.S. Patent System is based on disclosure of inventions to the American people. In exchange, the American people grant an inventor the exclusive rights to his/her invention for a limited time. To eliminate the best mode requirement from the patent law would permit applicants to gain a limited monopoly on their invention and yet not put the full disclosure of the invention into the public domain. Eliminating the best mode requirement would significantly diminish the very worth of the patent system, i.e., to disclose information to the American public.

Hat tip to David Vandagriff of Helius.

Posted by Patent Hawk at September 2, 2007 12:12 AM | The Patent System


You cannot be serious. Finally the oracle speaks, you infer. That would be the eagle-eyed view, right, yet from the self-obsessed bowels of the ivory tower, right? Do me a favour. Debate about reform of the US Patent Statute reminds me ever more of Gulliver's Travels, in which each little island world thought it knew all the answers, and that the visiting Gulliver had nothing to tell them. Best mode (unknown except in USA) the "very quid pro quo"!! What an embarrassment. How about Liebel-Flarsheim instead, ie what ROW requires, namely, an enabling disclosure, of a scope commensurate with the monopoly being granted. At least that's an objective requirement which, with no fuss, delivers a scope of monopoly fitting to the magnitude of the inventor's contribution.

Posted by: MaxDrei at September 3, 2007 2:03 PM

The proposed addition of 35 USC 123 to the patent statute would essentially require applicants to do the examiners' jobs. And POPA's reaction is: this is a trick to get more work out of the examiners. Is it any wonder nobody asked their opinion about patent reform? Does POPA have any position other than "management is out to get us"?

Posted by: JohnDarling at September 4, 2007 5:32 AM

Excuse me, since when is a union decrying the "outsourcing" (POPA's word, not mine) of their members' jobs a matter of "professional pride" instead of blatant economic self-interest?

Posted by: anon at September 4, 2007 2:08 PM

I'm not sure if you meant to call it the Patent Deform Act, but it was an appropriate mistake.

Posted by: Donna Fabian at September 6, 2007 3:43 PM

Patent Deform Act was intentional.

POPA is so anti-management for deserving reasons. The Patent Office section of the blog has a few entries on the subject of USPTO management quality; notable example: http://www.patenthawk.com/blog/2006/07/uspto_management_lambasted.html

POPA is right to quiver at the prospect of the AQS supplanting examiner search. My experience is that examiners have good tools, and are generally decent searchers, given their production constraints. I also agree that "there is no reason to believe that the Applicant Quality Submission will put better information in front of the examiner during prosecution than is already provided;" unless, of course, the applicant used Patent Hawk for the search, but even then, the budgets I'm given for patentability searches, along with the oftentimes sketchiness of claim definition, seriously circumscribe application patentability search quality.

Posted by: Patent Hawk at September 6, 2007 4:16 PM

I'm not here to praise PTO management. Or bury it. But POPA is largely ineffectual in winning the sympathy of the PTO's "customers" primarily because it has no grasp of reality. The majority of examiners are getting paid a bonus for exceeding their production requirements by at least 10%. So what is their argument that PTO management should give the examiners more time? "Well, everybody knows that examiners are taking shortcuts, issuing slipshod actions, and gaming the production system in order to meet production requirements and get bonuses. So management should give examiners more time so they can do a quality job."

So they're getting paid bonuses to do poor quality work? And PTO management should give them more time so they can do it right? Puh-leeze. Do you honestly think that the quality of examiners' OA's is going to improve if they're given more time? You're still going to get the typical, "Jones doesn't show [insert claim feature], but the examiner takes Official notice that [insert boilerplate case law the examiner's never read] is universally regarding as standing for the proposition that it's inherently obvious to make the prior art better, faster and cheaper. Therefore, it would have been obvious to provide Jones with what applicant invented and claims."

Examiners are still going to write that garbage in their OA's. If they are given more time they'll just send out less OA's. But they'll still be garbage.

Posted by: JD at September 6, 2007 6:54 PM

Are the comments of POPA self-serving? Yes. Is there a problem at the PTO with Examination? Yes. Does POPA and the examiner's have something to do with it - of course. The system they work within is not managed by them, but by the mangers and policy wonks at the USPTO and Dept. of Commerce.

Without a fundamental change in the way that they account for production, without some meaningful checks on that accounting, without improving the training and competence of SPE's as managers versus examiners, without realizing that patent prosecution - specifically claims and their content - are driven by the case law built around them and not in some kind of weird examination vacuum, and finally, without them realizing that you can't just throw more money at examiners and expect better results NONE of the goals of the stated 21st century plan will be achievable.

The patent reform act, the revision of the continuation practices and limitation on claims, and the markush claims changes are indicative of this blind groping for action driven by this across the board failure.

Unless industry, government, and practitioners can sit down and realistically address these issues, there will be flat out and wholesale loss of our innovation advantages.

Posted by: PeevedPractitioner at September 11, 2007 3:23 PM