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[JimIvey]

This is my more detailed response to Mr. Stasek in a sub-thread of the Source Code Submission thread -- the subthread pertained to whether patent practitioners have a tendancy to claim way too broadly, to their clients' detriment.

It's really an art to determine how broadly to claim.  Yes, you can sometimes send the Examiner searching in a non-analogous art that might make things tougher for you if you claim too broad an application of the invention.  You can also shoot yourself in the foot by making too many concessions during prosecution -- ala Festo.  On the other hand, you certainly don't want to toss in limitations you don't need just to avoid a first-action rejection.  I have viewed (and largely still view) first-action allowances as a bad thing -- similar to hearing an immedate and enthusiastic "I'll take it!" in response to your first asking price for something, e.g., a car you're trying to sell.  It makes you wonder what you might have got for it if you had asked for more at the beginning.  

I've also seen the consequences of asking too little during prosecution.  A small company with their patent in hand finds themselves in competition with someone making a minor modification to their product/service.  The question comes, "how can they do that with our patent?"  I look over the patent (written by someone else of course) and see all kinds of limitations in the claims that I would have never put there.  If there are no related patent applications still pending, I can't really fix that (except maybe perhaps a reissue application which has it's own risks and expense -- perhaps too much for the small client).  If the patent was issued more than 2 years earlier, even reissue can't help.

That's normally what the doctrine of equivalents (DoE) was supposed to fix.  Festo pretty much killed any hope of that (and the Fed Circuit has been signaling the end of the DoE for a long time now).  So exceptional craftsmanship in wordsmithing and clairvoyance are even more crucial patent practitioner skills now than they were before.

So I have two motivations to grab as much as I can for my clients.  The first is to avoid having to tell my clients that they may face fatal competition despite the patent I was able to get for them -- at least to avoid being the reason for having to say that; I can't make prior art dissappear.  The second is to avoid having other patent attorneys say what I just said -- that I had put limitations in the claims that they would never have put in there.  Of course, some will say that, but it's my goal to make sure that it isn't true.

As for the pre-filing search and submiting results, that's a topic we've gone over here before.  Sometimes it makes sense to do the prefiling search; sometimes it doesn't.  Anything which is material and which is know to anyone involved in the prosecution of a patent application (inventors, patent practitioner, sometimes agents of the assignee) must be submitted to the US PTO.  I know Japan isn't like that; they rely on 3rd party opposition.  Here, we're obligated to submit everything (Rule 56).  I make sure to remind people of this obligation and to come forward with known material art on a regular basis.  I think all practitioners do (or at least should).

Sorry for the long response....

Regards.

[M. Arthur Auslander]

Dear Mr. Ivey,
I try to make a menu of different sets of claims and subclaims to see if all bases can be covered even if some may fall.

The allowance of claims gives pro forma validity to a patent which can also intimidate potential infringers.

Non filing may be a realistic alternative.

[JimIvey]

Dear Mr. Auslander,

I agree with your approach on this topic.  Just as a reminder, this was a continuation of Mr. Stasek's discussion about how to balance one's obligations to one's client against one's obligation to the community at large.

I think it makes sense for many reasons to file a broad range of claims, from very broad to very narrow.

Regards.

[eric stasik]

Dear Mr. Ivey,

Thank you for your thoughtful comments. I have just a final comment for the consideration of the forum before leaving this subthread…

You wrote,

"On the other hand, you certainly don't want to toss in limitations you don't need just to avoid a first-action rejection.  I have viewed (and largely still view) first-action allowances as a bad thing -- similar to hearing an immediate and enthusiastic "I'll take it!" in response to your first asking price for something, e.g., a car you're trying to sell.  It makes you wonder what you might have got for it if you had asked for more at the beginning."  

A more accurate analogy to my argument would be when selling a car, for the owner to hope for some foolish person to come along who does not notice obvious, or subtle, deficiencies in the car and pays more than it is worth.

When asking the government for patent protection it seems to me disingenuous for an applicant to purposefully ask for a greater scope of protection than she reasonably believes she is rightfully entitled. Festo notwithstanding, this is a common practice among applicants and practitioners: file broad claims and let the patent office whittle them down in scope. It is my personal opinion that all claims which are submitted should be “fair and square” and not filed with the hope that the patent office will make a mistake and grant a wider scope of monopoly.

The deleterious effect of overly broad patents is clearly harmful to the public’s interest. Whether or not this is the reason the U.S. Federal Circuit has been trying the squeeze in the judicially created doctrine of equivalents, I for one, would like to see a far greater responsibility placed on applicants and their representatives in crafting valid claims. Similarly, I believe the rule 56 “duty of disclosure” should demand a more substantive role on the part of an applicant to find and present relevant prior art. Currently, the Rule does nothing to encourage an applicant to investigate prior art before applying for a patent monopoly.

An attorney has an obligation to his client to take fullest advantage of the law. I have no dispute with this, but I do not believe this is, or should be, a hindrance to the professional community to work for changes in the laws, rules, and procedures which would improve the quality of patents granted by the patent office.

Kind Regards,

Eric

[JimIvey]

Dear Mr. Stasek,

Your points are well-taken, but you appear to have some underlying premises that I believe are incorrect.

In your car sale analogy, the seller seems to know the fair price and the "foolish" buyer doesn't.  What tends to happen in reality is that the seller, having a truly unique car as each used car is truly unique, really doesn't know what the value is.  The true value is precisely what the highest bidder will pay for it.  And that is generally not known by the seller until the sale is made.

In patents, it's similar.  The applicant often doesn't know precisely how broadly the invention can be reasonably claimed.  So we claim as broadly as we reasonably can and see what happens.

In terms of claiming more broadly than is reasonable, there's another mechanism that prevents that.  The inventors must sign a declaration in which they state under penalty of perjury that they believe they are the original inventors of the subject matter claimed.  I won't let my clients sign that document unless they reasonably believe that statement to be true.  So I don't file claims that are not unreasonably broad for that reason.

Of course, if prior art later comes to light and makes such claims, post facto, to be unreasonable, there's not much I can do about that at the time of filing.

For what it's worth, I do my best to "play fair," but the onus for a fair and just patent system cannot reasonably be placed solely on the applicants.  The original and majority burden rests with the examining body itself.  

Here in the US, adequate funding of the PTO (Patent and Trademark Office) is always an issue.  It must be understood that the best way to ensure a functioning patent system is to ensure that the examining body has adequate resources.  And, if the PTO remains under-funded, I believe you'll see many more problematic patents issue in the near future.

While I try to "play fair," I must respectfully submit that it would be pure folly to rely on every one of the millions of applicants and the thousands of patent practitioners to self-police and to only ask for what they are entitled to under the law.  It's simply not in the applicants' interest to put forth, then overcome, the strongest argument against patentability of their claimed invention.  In fact, that is extremely hard to do.  A healthy patent system cannot rely on applicants doing that effectively.

As for the effectiveness of Rule 56, I assume you're aware that a defense of inequitable conduct based on failure to comply with Rule 56 is asserted in just about every patent case.  Every patent practitioner can expect any testimony in relation to patent litigation to focus almost entirely on Rule 56.  I can't think of a more prominent rule in American patent practice.

Adding a requirement to Rule 56 (or elsewhere) that a search to be made by the applicant really wouldn't do much.  In practice, people would simply hire a patent searching firm (like SCI3 here in Sunnyvale) to do a search.  SCI3 is a branch library of the USPTO, so you would essentially hire a PTO search, which the PTO does anyway.  The same exact effect would be achieved by simply providing sufficient resources to the PTO to perform an adequate search in the first place.  The cost of a SCI3 search is a minimum of $240.  Add that to the filing fee, **and don't divert that money to balance the US national budget!!**, and do a good search.  Problem solved.

In short, I believe the public outrage over "clearly overly broad" patents is basicly a claim that the sky is falling -- naive and foolish.  Most people who make such claims don't know what they're talking about.  I don't do my clients any good by trying to make their patents look good to the public.  Patents are legal documents -- not public relations documents -- and must be crafted with that in mind.  

Yet another 2c....

[eric stasik]

Mr. Ivey,

Thank you for your thoughful comments. I won't try to respond to everything, but my argumentative spirit will not allow me to let a few things go unanswered.

- The applicant often doesn't know precisely how broadly the invention can be reasonably claimed.

With all due respect, this is a cop-out. As an applicant, if my attorney does not know the particulars of my case better than the patent office, then I should find another attorney. Filing patents should not be a guessing game, and my attorney should have a pretty good idea of what will be allowed or I am, as Mr. Auslander says, wasting my time and money.

- In terms of claiming more broadly than is reasonable, there's another mechanism that prevents that.  The inventors must sign a declaration in which they state under penalty of perjury that they believe they are the original inventors of the subject matter claimed.  

An interesting and valid observation. Is there any case law where claims which were substantially amended during prosecution gave rise to a defense of filing a false declaration? The cases I have seen go more the issue of inventorship. I must remember this as a possible future invalidity defense.

- As for the effectiveness of Rule 56, I assume you're aware that a defense of inequitable conduct based on failure to comply with Rule 56 is asserted in just about every patent case.  

Absolutely. I've been subjected to a number of unpleasant depositions on just this subject, but the crux is withholding information from the patent office. Nothing in Rule 56 encourages the applicant to search for prior art, and in fact due to the inequitable conduct defense, many attorneys advise AGAINST searching.

As for the benefits of requiring the applicant to search, I do not think they should be dismissed without further exploration.  

- In short, I believe the public outrage over "clearly overly broad" patents is basicly a claim that the sky is falling -- naive and foolish.  Most people who make such claims don't know what they're talking about.  

Well, having been the person who defended my former employer against a number of “trash patents” and having some familiarity with the issue, I can say unequivocally that it is a problem. It is not the majority of patents, but it absolutely is a problem which too many practitioners would prefer not to admit exists and if so would prefer to place sole blame on the patent office and examiners.

My feeling is that there are definitely problems with the patent system (US and EPO) which can and should be fixed. The AIPLA’s approach of laying all the blame on the patent office and demanding more funding is an inadequate (and self-serving) response. I firmly believe that by working from both sides, substantial improvements can be made to the benefit of all.

Thank you, Mr. Ivey, for your thoughtful and insightful comments. I do not know if this is interesting to anyone in this forum other than you and I, but I do appreciate very much this discussion.

Kind Regards,

Eric Stasik

[JimIvey]

Dear Mr. Stasek,

Thanks for your thoughts on the matter.  I'll just make a few clarifications.

With respect to not knowing how broadly applicable the invention is, I must respectfully disagree with you.  No one knows all applicable prior art throughout the world.  I've known of a patent case (litigation) in which the prime piece of prior art was a thesis paper in a library of a little known university in Australia or New Zealand.  The issue as I recall was whether the library's card catalog was sufficiently searchable that the thesis paper was publicly known.  How could a patent attorney know about that prior art?

More importantly, a patent attorney has to have the foresight to know how others might try to design around the claims 5, 10, 15 or more years into the future.  As far as I can tell, there are two schools of thought on this issue.  One says that, if the inventor/attorney can't predict the alternatives 15 years in the future, too bad -- you can't cover it.  The other says that, if the invention provides substantial value 15 years in the future in ways not foreseen by the inventor/attorney, the inventor should be rewarded for that unforeseen added value.  I subscribe to the latter school of thought.  It appears you subscribe to the former school of thought.

With respect to mandating pre-filing searches by applicants, I didn't mean to be dismissive.  I just don't believe the requirement will have much effect.  Applicants will dispense with the requirement by simply hiring the cheapest search firm available.  And, currently, that's a branch of the PTO's library.  If you really want better searches of record in the PTO (I can't speak for other Patent Offices), provide better search tools to the examiners.  Charge higher filing/search fees if necessary.

I agree that there are problems with the current system -- just not the same problems that you see.  I think problems sometimes arise with the person making the decision as to what innovations to pursue for patent protection is made by someone fairly far removed from the technology.  This frequently happens in bigger corporations with multiple levels of management.  When I get my instructions through 3 layers of corporate structure, my recommendations frequently don't make the return trip.  That's probably the most difficult thing I deal with.

Of course, this isn't the only source of imperfect patent applications.  And, the system can't rely on applicants for perfection in patent applications.  The incentives just aren't there.  It's like protecting the sheep by passing a law that the wolves must be nicer.  I believe the answer to a better patent system relies on a better, more effective examining corps.  Of course, this is just an opinion.

And, this means putting more money into a government agency, which is political suicide here in the U.S.  But I believe it's worth it.  Currently, I believe the revolting taxpayers here are being penny-wise and dollar-foolish -- not just vis-a-vis the PTO, but in many areas.  Look at California's junk-bond status as an example of that.

As for perjury in the declaration as a patent defense, I don't think perjury automatically invalidates a patent claim.  It could lead to invalidation under Section 102(f) in that the named inventor didn't actually invent the subject matter claimed.  But my point was that I use the declaration as a threshold as to what I will file for my clients.

In sum, I just don't think it makes sense to view applicants as a class with any kind of unifying characteristics.  Applicants vary much too widely in their decision making processes to permit any type of generalization.  You can pass whatever rules you like, but each is going to adhere to the rule in varying degrees and in widely varying ways.  The best way to promote uniformly high quality is in the examining corps, in my opinion.

I agree that the system needs to be fixed and that it's worthwhile to do so, but I'm afraid I disagree as to what the fix would look like.

Regards,

Jim

[fuggy]

Hi Jim,

After reading this I am thinking: perhaps in claims I should just claim the nuts and bolts of my apparatus and leave out the part of how to use it. That would be broader.
But why would the patent office patent that? It would look like a useless decoration without the method of using it.

fuggy

[JimIvey]

Suppose you claim a nut or a bolt that didn't really need to be there but was included in your prototype....  Then, a large, international company can make a minor modification to your idea and sell a competing product in the marketplace right next to yours and for much less because (i) they avoided research and development costs and (ii) they have much greater economies of scale.

If someone does what your claim describes, the infringe.  If they do something not described by your claim, they don't infringe.  I don't think it's realistic to expect that just sticking to the "nuts & bolts" will give you proper claim coverage.

Regards.