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February 6, 2011

Amok

F. Scott Kieff may be witless in choosing article titles, e.g., "The Patent Process Run Amok", but he stirs some stimulating stew. In the i4i v. Microsoft case, a largely incompetent Supreme Court, grossly in thrall to corporate and government empowerment, feels obliged to again worry a detail of patent law that has no constitutional question behind it. What makes this case ironic is that the target i4i patent got bullet-proofed by reexam instigated by Microsoft, so the burden of proof to invalidate it is moot in this instance: the patent is valid, and Microsoft is res judicata in invalidating it. The safe bet is that the Supreme Court will jigger the validity calculator, but in their reasoning, how far they wander from logical rigor into a supreme wonderland of thought is, as always, the entertainment value.

Posted by Patent Hawk at February 6, 2011 11:02 PM | Prior Art

Comments

Kieff: “Maybe the concern about junk patents is motivated by a fear that for too many patents the examiners just don’t do a good job examining the application and the prior art.”

Junk patents are junk usually not because PA wasn’t cited, but because the subject matter is general knowledge and is likely not set forth in any PA. Cutting crust off of bread, shining a laser beam for a cat to chase, swinging standing up. These are examples in which general knowledge is general but you’d be hard pressed to find PA, which the examiner could not do. There are also examples for each field of technology where a lot that is known is not necessarily written down and the junk patents take advantage of that.

Kief: “The core issue the Supreme Court is addressing in Microsoft v. i4i is whether to keep that standard at the clear and convincing level or to dial it down to the preponderance standard.”

Can’t believe this guy can write a piece this long and miss the major point of contention so completely. The point is not about dialing down the standard over all, it is about what the standard should be with respect to PA that has not been considered by the PTO.

Again, let me set forth the way forward – the way out of this thicket that solves many of the PTO’s problems.

The Patent Act of 2011 should set forth that the PTO will examine applications only on the PA provided by the applicant. With respect to that PA, and that PA only, the patent will have a presumption of validity that can be overcome only with clear and convincing evidence that the examiner screwed it.

With respect to any PA that was not disclosed by the applicant and that is not merely duplicative of what was disclosed by the applicant, there is NO assumption of validity; i.e., there is no presumption of validity at all if the applicant refuses to do his own search and provide his own art.

The law should also require the PTO to stop doing searches because the only relevant art is that supplied by the applicant. This means: 1) no search fees; 2) the backlog will be cleared in about 10 minutes unless all of the 4000 examiners use the extra time they have to bog down the patent blogs.

I know, I know, you’ll start moaning about how rich applicants will flood the examiner with 2000 references. Red herring. This can be dealt with in 50 different ways if you give it a second’s thought. It rarely, if ever, requires citation of more than 50 references to cover one’s *ss, even in the complex arts like luminous cat exercising devices.

Posted by: Babel Boy at February 7, 2011 9:41 AM

And Again, let me rain on your tower of crap:

"Again, let me set forth the way forward – the way out of this thicket that solves many of the PTO’s problems.

The Patent Act of 2011 should set forth that the PTO will examine applications only on the PA provided by the applicant. With respect to that PA, and that PA only"

If this were the case, I would quite literally provide entire prior art sections. As examiners would still be the ones responsible for actually examining (unless you plan on changing that fact too), it will be them that will turn over every stone.

You are quite wrong about the flood clearing. Obviously you have little experience both in prosecution (BRI) and in litigation.

Go back to building your tower of crap.

Posted by: Pedantic Pete at February 7, 2011 9:56 AM

Nah Babel boy, the answer to the flooding problem is simpler. Simply make a cut-off at like 50 references, maybe 100, and make that cut-off extendable by the examiner, at their discretion, upon request of applicant.

The way forward is easy and clear, nobody wants to take it because of the whining.

Posted by: 6000 at February 7, 2011 1:05 PM

"If this were the case, I would quite literally provide entire prior art sections."

Which tells us that not only are you a cretin and a boor, you are dishonest.

Maintain the attitude; you'll get nailed eventually.

Posted by: Babel Boy at February 7, 2011 1:15 PM

Nailed for what? For following the rules of the game and earnestly looking out for my clients? In that case, consider me nailed.

On the other hand, it is you that is being dishonest, or ignorant if you think your answer is practical in the real world.

So which is it? Are you dishonest, or are you ignorant?

6 - does your provided answer likewise cap any challenge to the patent to the same 50 or 100 references? If so, then the patent bar might be interested. If not, then you have some serious Due Process issues.

Posted by: Pedantic Pete at February 7, 2011 2:56 PM

Nailed for what? For following the rules of the game and earnestly looking out for my clients? In that case, consider me nailed.

On the other hand, it is you that is being dishonest, or ignorant if you think your answer is practical in the real world.

So which is it? Are you dishonest, or are you ignorant?

6 - does your provided answer likewise cap any challenge to the patent to the same 50 or 100 references? If so, then the patent bar might be interested. If not, then you have some serious Due Process issues.

Posted by: Pedantic Pete at February 7, 2011 2:57 PM

"There are also examples for each field of technology where a lot that is known is not necessarily written down and the junk patents take advantage of that."

BB, I usually enjoy your posts, and agree with quite a few of them, but on this one I have to disagree. The old line that "It's so old and well known that noboby every bothered to write it down" is not going to fly.

I actually think a system quite the opposite of yours would be better. Forget having the examiners "examine" the application, let's just have them search it. The experiment of trying to teach the examiners the law, and how to apply it, has been a miserable failure. The examiners don't know the law, they don't want to know the law, and they sure as heck can't apply it.

So let's just have the examiners search. Send the results to the applicant and let the applicant amend/add claims in view of whatever art the examiner cites and leave it up to the applicant to draft patentable claims in view of the cited art. The patent issues with whatever claims the applicant files in response to the search results. Drop the presumption of validity to preponderance for everything, art cited or not cited. If the applicant is aware of other art, or feels it's important enough to have an actually competent searcher do a search, let the applicant submit their own art in addition to the examiner's art.

The examiners are allegedly competent at searching. They're miserable failures at applying the law. So let's just have them perform the one function they can do a half way decent job of, take away the function they are hopelessly inept at, and reduce the backlog.

Posted by: We are the Whalers... at February 7, 2011 3:08 PM

"6 - does your provided answer likewise cap any challenge to the patent to the same 50 or 100 references? If so, then the patent bar might be interested. If not, then you have some serious Due Process issues."

Oh really? And those are?

Congress can make examination be whatever they want to so long as everyone gets treated fairly. Them modifying the examination in just the way I put forth is fair to everyone. You get the presumption for those 100 references or so and so does every other applicant. Pick your 100. That is beyond generous. Congress is not required by due process to care whether or not applicant needs to sift through whatever prior art they want to submit generally and find their 100. For that matter, congress is not required by due process to keep the applicant from having to do some initial examination themselves. I deal with very complicated issues and cases and I very very very rarely have more than 20 references that might actually come close to invalidating the claims. That is, excluding the occasional, very rare case where there might be several hundred cumulative references. And maybe the examiner would allow those cumulative references in just to give them a once over.

If you really had to, which you don't, make it so that upon a good showing the examiner's discretion can be overruled, allowing a few more references submitted or whatever to avoid whatever made up issues you're stumbling against.

Like I said, but for the whining (btw, I mean the patent bar et al.'s whining) the path forward is clear and easy.

"So let's just have the examiners search. "

Not a horrible idea, but let's let them have the power to enforce 101, 112 and formal matters. Otherwise you'll have horrendously drafted nonsense everywhere. And perhaps we could let them have the power to issue a 102/103, but not be required to even if there is art that might make a case.

You know what is funny Whalers? We have quite a few attorneys in my AU now fresh out of lawschool. It just so happens that knowledge of the law doesn't seem to make them that much better of an examiner judging from the nonsense I hear on occasion. So don't be getting all high and mighty about just the run of the mill examiner fin up examination. It is a difficult job to do well, and so is attorney side prosecution from what I see.

Posted by: 6000 at February 7, 2011 4:22 PM

"It just so happens that knowledge of the law doesn't seem to make them that much better of an examiner judging from the nonsense I hear on occasion."

That's because they've been "trained" by the PTO to apply the law, and not trained by practitioners.

These fresh-out-of-law-school-never-actually-practiced examiners also have to learn to work within the examiner production system. So if they're told by their SPE or primary to cite some bullshit boilerplate case without even reading it to reject a claim, because an OA that rejects everything will get signed without the SPE or primary even reading it, then that is what they will do.

"Not a horrible idea,..."

Gee, thanks. That's high praise coming from you.

"...but let's let them have the power to enforce 101, 112 and formal matters."

That's a horrible idea. Examiners have no more ability to apply 101 and 112 than they do 102 and 103. The "training" they receive on 101 and 112 is as useless as the "training" they receive on 102 and 103.

"It is a difficult job to do well,..."

I agree. And because so very, very few at the PTO do it even competently, let alone well, let's stop wasting everybody's time by having them do it as badly as they are doing it.

"...and so is attorney side prosecution from what I see."

There's an old court decision that says that a patent is the most difficult legal document to draft. Not sure that's really the case, but it ain't easy. The words you choose for today's application won't be interpreted for at least 3 years, and many times you cringe at the work you did 3, 5, 7, etc. years ago. But you live with the consequences because there's no other alternative.

Posted by: We are the Whalers... at February 8, 2011 7:34 AM

You can tell when Prolix Pete has his panties in a wad -- he hits the "Post" button twice.

Whaler's idea is sort of not far from what the trademark side does, and is, obviously, another option worthy of discussion. I think the main thing is that patent professionals need an on-going, out-of-the-box discussion of ways to sort this mess of a system out.

But back at the ranch, following Whaler's idea, perhaps the examiner and applicant could agree on a body of PA for the record, then the appl is published with that official list of references and there is a 90 day period for inter partes oppositions to be filed. If no opposition -- patent is allowed with no presumptions of anything. Then a 5 year period for all the gun slingers to take a shot at the patent, and after that: incontestable.

But I agree with 6000, there has to be an administrative review of the formalities. Even in the current system it seems to me there should be at least 2 non-final OA's. The first one restricted to 101 and 112 issues, prior to any searching. If the applicant can't overcome the subject matter and indefiniteness issues, he gets booted before the search fee is paid and searching begins.

Of course, not a huge percentage of appls would go into the sh*t can at the first level. But at least the result of the first level would be a written opinion that the claims comply with 101 and the spec complies with 112.

Ever notice how in the US you don't get that? If you have to amend claims to avoid a 101 or 112 rejection you get a statement saying the rejections are w/drawn, if you're lucky, but otherwise there is merely a presumption of 101 and 112 compliance, no written finding.

And if you get a Quayle on the first OA, which I almost always do, you don't get a written statement of being in compliance with anything. Compliance with the statutes is merely presumed from allowance.

Anyway, back at the ranch, Whaler said:

"The old line that 'It's so old and well known that noboby every bothered to write it down' is not going to fly."

What I have in mind is the type of obviousness rejection where the examiner asserts general knowledge in the art because he can't find a reference that sets forth that knowledge, but everybody knows it's there.

Of course, the dork attorneys are saying "show me the reference, show me the reference," because most of them don't know the art well enough to see that their client is bullsh*tting them when he says "it's never been done."

This type of obviousness is not in the combining of references wherein the combined references together disclose all the elements and limitations. Its where the limitation is known to everybody and his freakin' dog, but there's no patent or other written record of the limitation to combine with anything.

All single-reference 103 rejections are of this type, because if they weren't they would either be 102 rejections or there would be a combination.

Posted by: Babel Boy at February 8, 2011 9:45 AM

Whaler's idea is sort of not far from what the trademark side does, and is, obviously, another option worthy of discussion.

Anybody who proposes to make the patent grant process more like the trademark grant process should give strong consideration to requiring proof of "use" along with the issue and maintenance fee payments, failing which the patent lapses.

The entire reason the trademark system works the way it does is that the only valid trademark is a trademark in active use, and pretty much the only invalid trademark is a trademark that someone else has enough economic interest in to oppose at the time of grant. The person with the invalidating "art" is always the same person who would want to invalidate the trademark.

The economics that lead to effective policing of the trademark register and that make a long-lived registration inherently stronger simply don't exist for patents. That's why patent applications need competent substantive examination, and there can't be a time limit on validity challenges.

Posted by: IANAE at February 8, 2011 9:55 AM

IANAE: The person with the invalidating "art" is always the same person who would want to invalidate the trademark.

Distinction without a difference. If there was an opposition phase to patent prosecution in place of substantive review by the examiner, who would pay thousands to challenge the application except those with skin in the game? What difference would it make whether or not that opposer was listed as an inventor on the art asserted?

I could see a process something like this:
1. Applicant files spec w/ claims, any art he wants (up to 100 refs) and a statement as to why the art 1) is relevant and 2) does not disclose the claimed invention.

2. Phase I. Examiner examines application on 101 and 112. Certifies that the application complies with the formalities. If not, inventor amends, appeals, etc.

3. Phase II. Examiner searches for additional art.

3. Applicant files optional statement as to why the additional art does not disclose/is not relevant.

4. Public gets 90 days to file additional art [for free] with or without an inter partes opposition [for heap big $$ thousands]. Opposition handled by PTO lawyers, as in TM oppositions.

5. If no opposition or inventor defeats opposition, patent granted. (If not, appeal, etc.)

6. Public has 5 years to file inter partes cancellation.

7. After 5 years: a) patent becomes incontestable; b) inventor's stock jumps 40%; c) the poor smuck who sat on his hands for 5 years loses (which is what he should do); d) Newman, Thomas, Scalia retire and a new generation of jurists take over and screw things up even more; e) Anita Hill writes another book.

Posted by: Babel Boy at February 8, 2011 12:39 PM

Two characteristics missing:
1) use
2) perpetual rights as long as 1) is met.

We might have to do something about the legal genesis coming from two very different areas of law.

Posted by: Pedantic Pete at February 8, 2011 12:50 PM

"If there was an opposition phase to patent prosecution in place of substantive review by the examiner, who would pay thousands to challenge the application except those with skin in the game? What difference would it make whether or not that opposer was listed as an inventor on the art asserted?"

That's the difference. The person who happened to show a similar device at a trade show ten years ago isn't necessarily someone with "skin in the game". Neither is the person who filed a suspiciously similar patent in a foreign jurisdiction but isn't commercially active in the US. Unless he's selling that article today, he's not going to care about the patent, and probably nobody who does care about the patent will be aware of the art until they can be bothered to devote a litigation budget to finding it.

Look at the i4i case. Microsoft has the interest in challenging the patent, but it's i4i that produced the allegedly invalidating art. Is i4i the party with "skin in the game" who would challenge the validity of its own patent?

It's also possible that nobody will care about the patent at all for five or ten years. Look at drug patents, that it's not even legal to practice or infringe until maybe a decade after they issue. Why should that delay make those patents any stronger?

In trademarks, the fact that invalidates the mark is also the fact that makes you want to oppose the registration - you're currently using the mark on a product you're selling. Either you have a business interest in the mark right now, or you have to let the other guy get his registration, which he will spend five years actually using in commerce, and it's that use that makes his mark harder to contest.

Posted by: IANAE at February 8, 2011 1:05 PM

"That's a horrible idea. Examiners have no more ability to apply 101 and 112 than they do 102 and 103. The "training" they receive on 101 and 112 is as useless as the "training" they receive on 102 and 103. "

I agree, but with all the time and money we're saving then we could afford to spend a few extra days and bring in some expert teachers on 101 and 112. You might be right that the training given is not sufficient currently, indeed you probably are right. But that doesn't mean that it can never be made right. And the 101/112/formalities are too important to simply ignore.

"All single-reference 103 rejections are of this type, because if they weren't they would either be 102 rejections or there would be a combination. "

Single reference 103's can have a combination made between two embodiments in the same reference...

"Anybody who proposes to make the patent grant process more like the trademark grant process should give strong consideration to requiring proof of "use" along with the issue and maintenance fee payments, failing which the patent lapses."

Also a good idea.

That idea you propose there seems fine by me Babel except perhaps the incontestable part. I mean, you've got a 20 year patent span. That's 15 years in which new players of the game might want to enter and may very well be restricted by an invalid patent they cannot contest. Big corps would keep a constant stream of impervious patents blocking their industry. Chaos eventually.

Posted by: 6000 at February 8, 2011 1:07 PM

OK you guys, let's form a committee. Pete can chair it, seein' how he has all the people-skills. We'll tidy this plan up and take it to Kappos.

When you call to make an appointment, Pete, if he gives you a Crystal City address, you'll know we're not being taken seriously.

Posted by: Babel Boy at February 8, 2011 2:25 PM

A clear indicator of insanity is if any of you are taking any of this seriously.

This is a comment section on a web blog (just in case you hadn't noticed).

Posted by: Pedantic Pete at February 8, 2011 3:03 PM

"A clear indicator of insanity is if any of you are taking any of this seriously."

An equally clear indicator is if you expect a committee to accomplish anything productive in the direction of its stated objective.

Heck, let's form that Committee To Turn Patents Into Trademarks just to make absolutely sure the proposal never gets implemented.

Posted by: IANAE at February 9, 2011 7:53 AM

I'll supply the guns.

Posted by: Pedantic Pete at February 9, 2011 9:42 AM

Most of those in the field of patent litigation seem to oppose Microsoft's position in its case against i4i, and express disappointment that the Supreme Court granted cert in the case -- which, if Microsoft prevails, will weaken U.S.-issued patents and introduce unwanted uncertainty. Unfortunately, I wonder whether the Court's decision to review the case derives at all from the fact that Chief Justice Roberts happens to be a Microsoft shareholder. One wonders whether recusal will be forthcoming, but either way the damage is probably done.

Posted by: patent litigation at February 14, 2011 11:28 PM