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[JimIvey]

Posted here:
http://www.patentlyo.com/lemley.pdf

From here:
http://www.patentlyo.com/patent/2011/02/microsoft-v-i4idocket-no-10290-supreme-court-2011-briefing-has-begun-in-earnest-microsoft-recently-filed-its-opening-br.html

A bit like his "Rational Ignorance" article.

Regards.

[Isaac]

From Lemley's

The PTO is an administrative agency, but unlike most agencies subject to the Administrative Procedure Act, it makes the decision to grant or deny patents ex parte,
providing other parties

I can think of some unique features of the PTO as an agency, but plenty of agencies subject to APA do ex parte determinations or "semi" ex parte determinations in which the "other party" is the government.  (VA, SSA, and INS come to mind).  If that is not, in fact, the usual case, it certainly isn't rare.

[JimIvey]

Yeah, I had some issues with the brief as well.  For example, he points to the lack of an effective opposition proceeding in the PTO to allow patent claims to be more thoroughly vetted.  However, re-examination does exactly that and with just a preponderance of evidence standard to show invalidity of a claim.

His response was that re-exam isn't available for the particular kind of prior art involved in the case. 

I'd support widening re-exam to include prior art other than printed publications.  I'd also support some sort of opposition procedure for published applications.  I think patents are important and it's important to get them right.

Regards.

[horsechute]

I think patents are important and it's important to get them right.

They've worked well in Trademarks and work well in Europe, were as I recall about 20 percent of all EPO patents undergo an opposition. But the attorneys are more cooperative in Europe and view oppositions as a cost of doing business. The problem in the U.S. is that there is a large potential for harassment. This gets kind of complicated, when you consider things like the rule against filing unwarranted papers with the PTO, but if a competitor does not want a patent to issue, they might not hesitate to file an opposition. Of course, you can have a rule like we do in reexams where the examiner can decide at the outset it is not warranted, which would help.

I have not seen the PTO's proposed rules for oppositions in quite a while, but I remember thinking that their timeline for pushing them through, including appeal, was unrealistic. After all, some of the reexams, like those associated with the Ronald Katz litigations, are taking more than 6 years to issue.
And another issue - the PTO does not have the money to implement the procedure, at least for now.

At any rate, I know people like Charles Gholz favor having oppositions, and I agree they would be a good thing, everything considered. And I think i4i is a very, very important case, which I'm going to watch, if I have time.

[ManOfManyBadIdeas]

Granted, I am not familiar with the way court proceedings are conducted, but my expectation is that the matters are decided by people who are not very familiar with many technical issues that are involved. And I think being familiar with technical issues is critical to decisions by preponderance of evidence, otherwise the weights that ought to be given to various pieces of evidence are at risk of being improperly assessed. I think it is more proper to leave the courts to decide legal matters, or those technical issues that are clear cut enough that such risk is minimized.

Another consideration is that the court system is significantly more expensive than examination, and, as I mentioned, has less expertise to decide on technical issues. With all these complaints about bad patents, I think these big companies have enough resources to assign their legal and technical departments tasks to monitor the patent landscape and weed out bad patents at the very beginning. Hire a few more people if need be. Cheaper and more reliable way in my opinion.

[Isaac]

I think it is more proper to leave the courts to decide legal matters, or those technical issues that are clear cut enough that such risk is minimized.

Unfortunately the set of people without technical qualifications includes nearly all judges including many (most?) judges sitting on the federal circuit.

I think these big companies have enough resources to assign their legal and technical departments tasks to monitor the patent landscape and weed out bad patents at the very beginning. Hire a few more people if need be. Cheaper and more reliable way in my opinion.

How do you do the weeding out?   If a bad patent is about to issue, what do you do?

[JimIvey]

I think these big companies have enough resources to assign their legal and technical departments tasks to monitor the patent landscape and weed out bad patents at the very beginning. Hire a few more people if need be. Cheaper and more reliable way in my opinion.

How do you do the weeding out?   If a bad patent is about to issue, what do you do?

This is where I disagree with Mark.  Though, I thought the law already did give a slightly relaxed burden for proving invalidity of a claim when the art hadn't already been considered by the Office. 

I'd much rather have some sort of opposition procedure in the PTO (and re-exam is kinda like that) than have the burden to show invalidity of a claim dropped all the way to preponderance of the evidence. 

Regards.

[horsechute]

They need to raise the standard in the PTO to the point at which their rejections at least pass the laugh test. Come to think of it, maybe the Federal Circuit can institute at least a floor level standard on that basis, and call it that.

[ManOfManyBadIdeas]

How do you do the weeding out?   If a bad patent is about to issue, what do you do?

Ideally I think USPTO needs to have *all* of the information possible at the very beginning, when the patent is being examined. Right now the examiner is the only opposition, I'd rather the examiner be more of a judge (still with ability to introduce his own arguments and evidence), but with the possibility of a third party to submit arguments and evidence with regards to patentability. Start examination when the patent application publishes, then give let's say a 6 months window to submit arguments and evidence in opposition.

EDIT: corrected a silly mistake

[JimIvey]

Start examination when the application publishes, then give let's say a 6 months window to submit arguments and evidence in opposition.

Other patent offices around the world do that.  At one time, Japan had a 3rd party opposition procedure (they probably still do, but the issue came up so long ago that I'm reluctant to say).

The problem here is that it's still possible to avoid publication prior to issuance.  So, to have effective 3rd-party opposition, we'd have to either require publication of all applications or allow post-issuance opposition.  Or, I suppose a compromise would be to allow opposition of published applications and, for patents issuing on unpublished applications, to weaken the presumption of validity in the manner Mark suggests.

Regards.

[khazzah]

>the examiner be more of a judge (still with ability to introduce his own
>arguments and evidence), but with the possibility of a third party to submit
>arguments and evidence with regards to patentability. Start examination when
>the patent application publishes, then give let's say a 6 months window to
>submit arguments and evidence in opposition.

Don't we have something like this already? Third Party submissions under 1.99 are allowed in the two month window after publication.
http://www.uspto.gov/web/offices/pac/mpep/documents/1100_1134_01.htm

Though Jim is right that apps don't have to be published. And if 1.99 was used more often, then maybe Applicants would routinely avoid publication.

[JimIvey]

Don't we have something like this already? Third Party submissions under 1.99 are allowed in the two month window after publication.
http://www.uspto.gov/web/offices/pac/mpep/documents/1100_1134_01.htm

I agree, but I don't think that's enough to justify preservation of the clear and convincing standard under the presumption of validity.  In particular, I think the 2-month window is a bit tiny and easy to miss and this part severely limits the utility of the section for 3rd-party potential opposers:

(d) A submission under this section shall not include any explanation of the patents or publications, or any other information. The Office will not enter such explanation or information if included in a submission under this section. A submission under this section is also limited to ten total patents or publications.

Suppose there's one little phrase in there that explains how an element described in a reference is a direct substitute for another element that makes a slam-dunk 103 rejection?  Wouldn't it be great (for the opposer) to bring that to the examiner's attention?

And, the limit to 10 references wouldn't even begin to address the plethora of references that might be used in court to show invalidity.  It would be great if the Office could take a look at those to help support the presumption of validity so that juries wouldn't be asked to take a guess at what the average gene-splicer would consider obvious.

Regards.

[ManOfManyBadIdeas]

Regarding the publication issue, I agree that 2 months window is way too narrow. Not sure about the number of references limit, I think it's reasonable to have a limit, so that the examination isn't bogged down by malicious over-submission. But perhaps have a limit of 2-3 most relevant references per issue raised. Which means that submission should be allowed to raise issues, present arguments along with references. I see where the non-publication can be a problem, but perhaps the examination of merits can be delayed until the app publishes (technical issues such as drawings would be resolved first). One could also leave an option for examination prior to publication, but then relax the evidence standards on possible court challenge.

The steps would actually increase the meaning of a patent, there would be more scrutiny at the examination stage, and it will lead to a more reliable and respected result. It's an exact opposite approach to the idea of "presumption of validity" when hardly any examination is done. My concern is that in the second case too much emphasis is put on the strength of the litigation budget instead of the patent's merit. It becomes more of an exchange item between the "big" players and the tool to block market entry. Patents are used in this way now, but I think with skimpy examination it will be their prevalent use.

[JustAnotherExaminer]

I accept email submissions prior to issuance.  I will conveniently stumble across art you recommend in my next search.  Though you can't look up the examiner via public pair for non-published applications. 

[Isaac]

I accept email submissions prior to issuance.  I will conveniently stumble across art you recommend in my next search.  Though you can't look up the examiner via public pair for non-published applications. 

Isn't this illegal?