Is the Patent Office Really Muzzling Dissent?
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Written by Gene Quinn President & Founder of IPWatchdog, Inc. Patent Attorney, Reg. No. 44,294 Zies, Widerman & Malek E-mail | Blog | Twitter | LinkedIn Posted: May 21, 2009 @ 1:03 pm 
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Today I read on Patently O that the Board of Patent Appeals and Interfences is shutting down dissent in favor of efficiency. The source of the anonymous tip contacted me about two weeks ago with the same tip and I followed up and talked to many in the patent community and no one seemed to think that was what the Patent Office was doing at all. I then heard back from the anonymous source on May 16, 2009, inquiring why I had not run with the story and whether he should take this “smoking gun” elsewhere. I expressed my concerns that the literal meaning of the memo does not suggest that the BPAI is putting a muzzle on dissents or concurrences, or even mandating that the Board simply affirm patent examiners. I did point out that if this is the perception on the Board that perception would be important because as we all know, perception becomes reality. It would seem that the decision was made by this anonymous source to go elsewhere in hopes of outing the Patent Office.
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I do not consider myself to be a journalist, but rather someone knowledgeable about patent law and intellectual property who is armed with an opinion on most things. That being the case, given that the Internet is fast becoming a meaningful tool to disseminate information and this information can and is used by many to form the basis of opinions, I think it is prudent not to simply run with every tip I get as if it is the gospel truth. I have been a critic of the Patent Office for years, so I am not afraid to point out when the emperor is not wearing any clothes, but I do feel that before I rush forward with a story I need to check with certain sources and confidants I have developed over the years. Perhaps this is what journalist ethics is all about, or perhaps I just do not want my name associated with unsubstantiated rumors.
So why did I decide not to run with this story? Well, at first I must admit that I was very intrigued by the memo. What would happen if Judge Newman and Judge Rader were not allowed to dissent, or discouraged from dissenting? That would not be a good thing. We all know that in some cases in the past the Supreme Court, when they have gotten patent issues correct, adopted the dissent offered by Judge Newman, either in whole or in part. So dissents are a very effective tool for highlighting a contrary point of view. So I was indeed troubled by the thought that dissents could be disfavored. The trouble is that the memo doesn’t say that dissents are disfavored or that they should not occur. The memo says that in order for a dissent to count toward production credit it needs to be approved. Why would that be the case?
In talking with a number of sources it became evident that there are a number of situations where a dissent, or perhaps a concurrence, is extremely long; perhaps upwards of 75 pages. The one particular person who pointed this out to me said “I think dissents are best when they are short and sweet.” I thought about that statement, and the more I thought about it the more profound it seemed to be. There is really no need for a dissent to be long-winded. Dissents are intended to provide an alternative view and point out where in the opinion of the dissent author the majority went wrong. Do you really need a dissent that is upwards of 75 pages? How about a dissent over 50 pages? Where is the cut-off point? The recent dissent of Judge Newman in Autogenomics v. Oxford Gene Technology was less than 10 pages. The dissent of Judge Rader in In re Bilski was also less than 10 pages. The dissent of Judge Moore when the CAFC refused to rehear In re Comisky en banc was 16 pages. The dissent of Judge Gajarsa in Abott Laboratories v. Sandoz was just over 19 pages.
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In re Bilski: What Now? |
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Does the Patent Office have the right to say that dissents that are too long cannot count toward production credit? I suspect they do, at least in certain circumstances. This is not saying that you cannot dissent if you like, just that it won’t always and necessarily count toward meeting production. Exactly what is wrong with that? It seems to me when you are in a salaried position you do what the job requires you to do. In some situations that will require more work, in some situations that will require less work. I do not want to see the judges on the BPAI over worked and have unreasonable expectations placed on them, but it is undeniable that writing a dissent takes time. If you write a dissenting opinion that is 100 pages should you have that count toward production? Perhaps, and perhaps not.
In all walks of life everyone knows people who take on a project and then overkill the project, forcing others to pick up slack and handle more to entitled that other person to spend exorbitant amounts of time on a task that should not take that long. I am not saying that is what is going on at the Board, but I do think that the administration at the Patent Office probably should have the right to set the expectations in terms of how much work should be done. That to me seems like the efficient administration of justice, and we all know that the Patent Office could use more efficient administration of justice, so I am hesitant to place blame on the Office for taking responsible steps to improve work flow. Isn’t that what we have all been complaining about for years? I know I have been complaining about it, so it seems unfair for me to then turn around and complain that the Patent Office is doing things to streamline work-flow. You simply cannot have it both ways and remain intellectually honest.
The one thing that did worry me was whether this memo would have the effect of forcing or encouraging members of the BPAI to simply ratify the rejections of the examiner. The Board needs to remain an independent voice and review the cases provided to them. Leadership in the USPTO cannot and should not tell judges they cannot dissent or that they have to or should ratify the rejections of examiners. The urging to avoid remanding applications to examiners seems justified to me. I agree with the memo, a remand is “not normally efficient mechanisms for securing the “just, speedy, and inexpensive resolution of an appeal…” The Board has the authority to issue their own grounds of rejection, and it serves no purpose if you ask me to have any appellate court remand cases. This is something that has always annoyed me about the Supreme Court. Have you ever noticed how the Supreme Court rarely, if ever, actually decides a case? They make a vague ruling and remand for others to figure out the details and apply their ruling. That is absurd. It was absurd for the Supreme Court to announce in KSR v. Teleflex that the lower courts and patent examiners can figure out the particulars of their assinie “common sense” obviousness test. Talk about passing the buck!
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It is ridiculous for appellate courts to remand in most cases, and I think it is ridiculous for the BPAI to do it in many, if not most, cases. All remand does most times is prolong the agony, force more proceedings below and then ensure another appeal. How is that in any respect efficient? It simply is not, so if the Board can wrap up a case I see nothing wrong with the USPTO encouraging that. Applicants already wait far too long to get examiner action and receive a patent when one is deserving. Stretching out that process is pure nonsense and I applaud the Patent Office for trying to streamline appeals and streamline examinations.
Of course, I will be continuing to watch things unfold and if there is an uneven hand on the scale that will become problematic. I, however, am not prepared to throw the USPTO under the bus for attempting initiatives that will speed the process. Those who know me know I am a Republican, but I am not blind. The Patent Office under President Bush was horribly mismanaged and created a crisis of epic proportions. We should never have gotten into this mess in the first place, but I am not going to vilify those who are seeking a solution.
About the Author
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Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) Zies, Widerman & Malek B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center Send me an e-mail  |
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.
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You drank the kool-aid Gene!
Guest-
Not really. Just trying to keep it real and remain objective.
Like I told the anonymous source who provided Patently-O with this memo:
“It would be a big deal if the Office were saying that the Board would not receive production credit unless they affirm the examiner, but that isn’t what was said in the memo. I am not sure this is the smoking gun that you think it is. Having said that, perception is reality and if there is a perception at the BPAI that there is pressure to affirm then that is another matter.”
If short, sweet and effective dissents do not receive production credit that would also be a big deal. So, if this is going to be a story at all it will be in how the Office applies the policy, not in that there is a policy.
-Gene
I have a different take on how the board could be more efficient.
Let the board members write whatever opinions and dissents they feel add to the body of law. But also permit the board to do what the CAFC does all the time.
If the board votes 3-0 to affirm the examiner for the same reasoning as in the examiner’s answer, a one page AFFIRMED with no opinion would do the trick. All reversals of the examiner would require an opinion.
Alan-
I like that idea. I would, however, like to hear your thoughts on the requiring of approval for a dissent, concurring opinion and remand counting toward production credit. What do you think about that?
-Gene
I dislike any implication from the PTO that dissent is in any way not appropriate.
Imagine if the CAFC told Judge Newman that she would not be paid for time writing dissents (even those I don’t agree with).
I think the issue turns on a failure to appreciate the true role of the Board or, indeed, any court. It functions merely as a forum to resolves disputes in accord with a set of rules. Those who engage in long dissents, etc, believe that a “correct” result is the over-riding goal. It isn’t. In my judgment we lack the collective ability, or a sufficient record, to get it right very often. We always, however, have the capacity to resolve the matter. It may seem trite, but reviewing recent S.Ct. patents can only reinforce the “resolution” role of a court. They obviously do have any chance (knowledge, background, thoughtfulness on issues) at getting it right. Thus, if you cannot be right, at least be quick and efficient.
John,
How can resolving disputes be separated from “correct results”? Is that the same as saying that it is more acceptable to get things wrong, as long as we get things wrong quicker?
Heck, if that’s the case, why bother with any evidence, or even hearing the facts – have a judge make a snap judgement based on the proponents standing up before the Honor. Justice on the fly would always have a fifty-fifty shot of being “correct” and would be the fastest and most expedient disposal.
A line should be drawn between published and unpublished decisions. Unpublished decisions should be decided per curiam, with a notation of the vote and a one page decision. Some production credit should be given to each panel member for sitting on a panel that resolved a pending appeal. Published decisions should include thorough opinions and thorough dissents, and full credit should be given for both the majority and dissenting opinions, because both contribute to the state of the law and in crystallizing the issues for future guidance to practitioners. There should be a policy favoring publication of opinions which reverse the examiner.
I considered posting this tidbit under the Top Patent Blogs Phase I thread, but thought the direct subject line was a better fit here.
Over at Patently-O, which is humorously referred to as Puppetly-O, The sensationalist tag line as you noted is “BPAI Shuts Down Dissent in Favor of Efficiency”.
A subdued reading of the actual email would indicate a slight twist that robs some of the sensation, but also places the story down a distinctively different path. In the email from James T. Moore, it should be noted that not just dissents are being dissuaded, as the email starts: “Please note that, effective immediately, if you would like a dissent, concurrence, or remand to be considered towards your productivity totals, you must submit a request.”
The headline could just as correctly read “BPAI Shuts Down Concurrences In Favor of Efficiency”.
In fact, it appears that information in general is being discouraged. Less is more
As far as Top Blogs, a caveat is needed for why the blog is reviewed. Serious discussions of law are quite different than visits to see what the usual cast of characters have to say in a train-wreck spectacle fashion (not that train wrecks lack entertainment).
Noise-
Thanks for the comment. I had not heard Patently-O referred to as Puppetly-O. I have increasingly heard from practitioners that it seems obvious many of the posts are written by students who are not very informed. I don’t know that is true, just what I have heard. I also know that so many of the comments over there are, shall we say “interesting.” I would never allow that here. I agree, sometimes a train wreck of this sort can be very entertaining. I wonder how much traffic to various blogs is associated with the train wreck phenomena.
-Gene