Kappos Trying to Sell Patent Reform to Independent Inventors

David Kappos speaks to Inventors on Video about Patent Reform Legislation

The United States Patent and Trademark Office is sending the message that it believes patent reform is needed and that it is not something that will harm independent inventors, and the messenger is none other than the Director of the USPTO, David Kappos.  Just this week the USPTO launched a bi-monthly e-publication aimed at the independent inventor community – Inventors Eye.  The first issue of Inventors Eye takes on the issue of Patent Reform, with a letter from Director Kappos.  A video tape of Kappos essentially explaining the same thing as said in the letter, perhaps with a little more information, is available on the USPTO Website.  The clear message is that the current patent reform proposals are a net benefit to the independent inventor community.  I personally agree with Director Kappos and think that independent inventors and small businesses should not be afraid of patent reform but view it as an opportunity for enhanced opportunity.  There are some things in the legislation that will immediately benefit inventors and small businesses, and initiatives the Patent Office is working on outside the patent reform legislation that should be beneficial as well.

First, something that is not mentioned in the Kappos letter or video relates to provisional patent applications.  According to Patrick Raymond, the Executive Director of the United Inventors Association, the UIA has had productive talks with Director Kappos and the Patent Office is considering supporting the extension of a provisional patent application to 24 months, as first reported by the UIA on February 8, 2010, in its Weekly Industry Update.  The UIA also says that the USPTO, with the help of the UIA, is interested in developing a network of patent practitioners who could provide pro-bono services.

I have been on record repeatedly saying that it is simply ridiculous for provisional patent applications to expire after 12 months.  Yes, having the ability to file a provisional patent application 12 months before filing a non-provisional patent application is quite helpful.  It lets you lock in your filing date, thereby cutting off certain prior art problems that may otherwise exist.  It also lets you say you have a “patent pending” and allows you to start selling the invention without fear of losing patent rights.  But the reality is that with patent applications being published at 18 months after the earliest filing date you will still not know for 6 months what the closed universe of prior art will be when the Patent Examiner starts reviewing your patent application.  For that reason alone, provisional patent applications should remain pending for a minimum of 18 months.

Changing the pendency of provisional patent application to up to 24 months, or at least 18 months, would make an enormously positive change.  It would allow all inventors to file a patent application that cuts off potentially harmful events that would destroy the right to obtain a patent in the US or around the world, while at the same time giving valuable additional time to determine whether there is enough merit or interest associated with the invention to warrant the time and expense associated with a non-provisional patent application.  Unfortunately, this change will need to be done legislatively since the patent laws, specifically 35 USC 111(b)(5) says that a provisional patent application goes abandoned after 12 months and cannot be revived.  I do believe Director Kappos when he says he is interested in making a change, but I urge the USPTO and everyone in the industry to get behind this legislative change and get it into the patent reform bill and see it through to being enacted.  This would be an enormously positive and pro-inventor, pro-small business reform.

Director Kappos is making his case for patent reform by making 4 key points.  First, patent reform would lower patent office fees for independent inventors and presumably small businesses by establishing a new class — micro entities.  Second, the fee setting authority in the patent reform legislation will allow for the USPTO to generate more revenue, thereby improving IT systems and hiring more patent examiners, while not costing micro entities more in the way of fees.  Third, post grant review of patents will be condensed into a 12 month period, serial challenges will not be possible and the threshold for initiating a post grant review will be raised, all of which should result in at settling effect not unlike the quieting of title in the real property scenario.  Finally, Kappos tackles the most thorny issue saying that patent reform will not convert the US into a pure first to file system, but rather into a first inventor to file system, which will have little or no effect on independent inventors and small businesses.

Certainly the formation of a micro entity will be of big help, particularly if the fees are reduced from where they are currently, which seems reasonable.  So the fee setting authority that the bill would grant the USPTO, while a concern for those big users of the Patent Office, should not be a concern for the independent inventor or true small business community.  More resources paid for by large corporations, who are the predominant users of the patent system, benefit the entire system.  So the real concern seems to be associated with post-grant review and first to file.

Of course, the devil is always in the details and as the seemingly endless health care debate has taught all of us over the last 9 months, you never really know what the language of a bill will be until it is placed in final form and scheduled for an up or down vote.  If the patent reform bill that gets voted on does actually limit the length of time a post-grant review can be filed at the USPTO then that would be an enormously positive event and would force those with issues to speak quickly or forever hold their peace.  Combined with a heightened threshold for granting post-grant review and it is easy to see that such a condensed window could and should be a great benefit to all patent owners.  For independent inventors and small businesses it would result in a far more certain grant of rights open to greatly reduced possibility of challenge.  Investors and potential licensees would and should love this type of settling effect, which could and should make deals more possible and potentially even more lucrative.  Of course, you have to have a right worthy of a deal, but if you do this could create a very favorable climate for negotiations.

I also agree, as I have written in the past, with Director Kappos on the first to file provisions.  There is simply no rational or logical reason to fear that others who learn of your invention would be able to steal your invention from you.  As long as 35 USC 102(f) remains, or its statutory successor if there is a complete re-write of 102, in order to receive a patent you must be the inventor.  You cannot take what someone else tells you or you learn of and file a patent application.  That is true now, and as long as it remains true there is nothing to worry about.  In order to be an inventor you must contribute to conception, which is the mental work associated with inventing.  Simply stated, this is not a race to the Patent Office.

With respect to the remainder of first to file, what is left is a change to the current law where the first person to invent may obtain a patent even if they are the second to file.  This is the situation where you have two inventors (or more), each who have engaged in the mental work associated with inventing, albeit independently from each other.  The first to engage in the mental activity, legally called conception, is able in some cases to demonstrate they are entitled to the patent even if the second to conceive is the first to file a patent application.  This would change under the proposed first to file modifications.  This change, however, is a difference without a distinction.  In almost no cases does the first to invent prevail over the first to file a patent application, even now.  The evidentiary requirements are very strict and the deck is stacked strongly in favor of the first inventor to file a patent application.  Acting like there is a benefit provided under the first to invent rule also incorrectly lulls inventors into a false sense of security and leads them to make bad decisions associated with when to file a patent application.

I frequently hear that inventors invent and wait for years to file because they know are the first to have invented and will ultimately win, so why waste patent term.  This analysis is flawed for so many reasons.  First, there is no way to “know” and inventors are routinely fooling themselves when they think their invention is so revolutionary only they could have possibly conceived of it.  The truth is in a world where our physics and chemistry knowledge is limited there are a finite number of solutions to any problem, and other smart people can and do exist and come up with the same or similar inventions.  Waiting is a horrible strategy.  Second, in the situation where you wait you cannot legally ever win because without continued diligence and work on the invention you lose the right to even submit evidence to show you invented first.  Simply, the law doesn’t care if you invented first if you delay, so reality is no longer relevant because you will be prevented from submitting evidence to demonstrate reality.

For more information on the dangers of waiting to file a patent application, and why first to file is not something to worry about in reality, see:

In summary, the inventor who claims they are the first to invent prevails in about .01% of cases, which means that in 99.99% of cases it simply doesn’t matter.  So getting worked up about this change is fine, but it is important to realize that you are getting worked up over something that is of such minor concern that it is statistically irrelevant.  Couple this together with the fact that the change would force inventors to do what they should already be doing, which is to file as soon as possible, and it is a change that will modify behavior that will dramatically benefit inventors.  If you couple this together with an extension of provisional patent application to 24 months, and you not only have something that will do no harm, but a bill that will do a lot to benefit independent inventors and small businesses.

One final thought.  We all know that big corporations simply cannot and do not innovate.  Innovation comes from independent inventors, entrepreneurs and small businesses.  Nothing in the patent reform bill will change that reality.  It is true today, it will be true the day any patent reform is passed and it will be true after the law goes into effect.  Collectively what these reforms will do is make it more difficult for big business, although they don’t yet see the Trojan Horse qualities, and likely won’t until it is too late.  They are too busy patting themselves on the back for getting this far, and by the time that they realize that the small players will have the incentive to treat inventing in a more business appropriate way across the board, their ability to file reexamination requests will be substantially limited, patents surviving past the 12 month post grant review will be much stronger and harder to challenge and invention priority dates will get earlier and earlier making it more difficult to find prior art… well… by then the next wave of big companies will be on the assent and the mega-giants of today will start to become a footnote like so many big-tech companies of the past.


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21 comments so far.

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    March 1, 2010 04:59 pm


    I appreciate you input.

    Combination of Known Elements: You state “combining prior art elements according to known methods to yield predictable results”? However, to use this rationale, an Examiner has to establish a. a finding that the prior art included each element claimed, b. a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately.”

    First, all claims are combinations of known elements. Second, to a physicist they always “yield predictable results.” Third, the “prior art included each element claimed” is not a real requirement, because of conservation of matter and energy it is always possible to assemble a group of prior art that includes each element claimed. Fourth, one of ordinary skill in the art always “could have combined the elements” in the same way. As long as the method of combination does not violate the laws of physics then it could have been done. Fifth, the requirement that “each element merely performs the same function as it does separately” is again nonsense. To a physicist each element functions the same function as it does separately – it follows the same laws of physics. KSR is nonsense and it can and should be overturned legislatively.

    I am not suggesting a global patent law – I am suggesting reciprocal rights. We will give your inventors rights under our laws if you give our inventors rights under your laws.

    Regional Offices
    You miss the political point. There is no political value in having 6000 government jobs in Virginia. In addition, the telecommuting does not help new examiners. If there were regional offices the PTO would draw from a larger based of engineers.

    US technology is being stolen by foreign companies because we publish our applications. In addition, it is a complete breach of the social contract. This breach coupled with the unconstitutional change in the standard of patentability by Jon Dudas has resulted was a massive theft of intellectual property from US inventors.

  • [Avatar for An Examiner]
    An Examiner
    March 1, 2010 03:05 pm

    I’m going to have to respectfully disagree with some points:
    1.) Damages: It is my understanding that a compromise has been reached on the damages issues. I personally hope that it’ll be completely removed from the bill. It’s the most contentious aspect and completely unnecessary. Let the courts continue to decide appropriate damages.

    2.) First-to-file: I don’t see how the first-to-file requirement is a “fraud”. You argue that it’s the first step to “eliminating the inventor from the patent process”. How much is the inventor already engaged in the patent process? What is the percentage of unassigned patents out there? Less than 5%? If you think the inventor today has more of a say than the assignee of the application in a majority of the applications out there, I’d say you’re delusional. Finally, I’d note that the EPO and JPO currently use a first-to-file system (and a system that issues patents directly to entities). Their system is not ruined due to it.

    3.) Publication: You can always file non-publication requests. Yes, you can’t file these requests if you’ve filed a foreign application, however, that foreign office is going to publish the foreign application anyway.

    With regard to the suggestions for “real” patent reform –
    1.) Publication – I don’t reason to repeal publication, other than the benefit to applicants (not society) of less 102(e) references.
    2.) KSR – First, you can’t really “repeal” KSR (it’s a Supreme Court decision, not a law), but I understand what you were trying to say. However, KSR never allowed illogical rejections. It merely allowed Examiner’s to use some rationales to combine other than those explicitly disclosed in the references. Is a combination less obvious because of a lack of explicit motivation disclosed? What about other 103 precedent (i.e. changes in shape/size/color, rearrangement of parts, ect.)? Once again, getting rid of KSR may be beneficial to applicants, but not necessarily society.

    3.) Fee diversion: I, and probably 90% of the IP community, agree.
    4.) Regional offices: There’s really no need for regional PTO offices. If they’d simply remove telework restrictions (a provision that’s included in the bill), there’d be no need for regional offices. A regional office would accomplish the same as an expanded telework program, but at much higher costs. Why pay for commercial office space, associated utilities, ect., when you could simply relax telework requirements and allow more Examiners to work from home further away from the office?

    6.) Elimination of “combination of known elements”: I’m not quite sure what you mean here. How is the “conservation of matter and energy” applied to known claimed elements, and how would this scientific law really apply to 103 rejections? I think you’re trying to address the rationale of “combining prior art elements according to known methods to yield predictable results”? However, to use this rationale, an Examiner has to establish a. a finding that the prior art included each element claimed, b. a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately, and c. a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable (scenarios certainly not applicable in every 103 rejection). It sounds like you may have been taken for a ride as some point by an overzealous examiner. If it doesn’t make sense to combine references, or such a combination would render the device/method, inoperable, then a rejection shouldn’t have been made (KSR or no).

    7.) Reciprocity: I don’t think it’s absurd. If something is known and published, whether it be in the US or in Russia, it’s known. Why should someone be granted a patent for not doing something novel and non-obvious? Regarding a “global” patent (i.e. extending US patent rights to foreign countries), the differing patent laws/rules between the US and EPO would hinder such a global patent, no? And as you’re apparently against US adopting the IP laws of the EPO (first-to-file, looser determinations of inventive step, patents provided to entities, every application being published), what would you suggest? How do you reconcile the differences between the US system and other systems when you’re unwilling to budge on those laws/rules already adopted by said other systems? Assuming the systems were the same, you’d also need more than US reform to have such international patent rights (i.e. you’d need ratified treaties).

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 26, 2010 01:04 pm


    Simply not true. If you do not invent and do not engage in mental activity of conception you are not an inventor and are unable to obtain a patent. There is no ability to steal an invention from an inventor. This is a fantasy and there is no reason to perpetuate a myth like this.

    Why do you chose to perpetuate this myth? Why are you ignoring the law and playing on the fear of inventors like this?


  • [Avatar for staff]
    February 26, 2010 11:57 am

    “I also agree, as I have written in the past, with Director Kappos on the first to file provisions. There is simply no rational or logical reason to fear that others who learn of your invention would be able to steal your invention from you.”

    Gene, you are forgetting Farnsworth and Armstrong. They can and they have stolen.

  • [Avatar for staff]
    February 26, 2010 11:18 am

    “…post grant review of patents will be condensed into a 12 month period, serial challenges will not be possible and the threshold for initiating a post grant review will be raised”


    “Of course, the main point about inter partes reexaminations is that the process can be incredibly slow if either party pushes. Only about 50% of the inter partes reexaminations filed 2001-2005 have been completed either through issuance of a reexamination certificate (on the merits) or procedurally terminated. Overall, the reexamination certificates took an average of 37.5 months to issue (median of 34.4 months). When all is said and done, this pendency will be much longer since the slow and/or hotly disputed cases are all still pending. Only one (1) of the completed cases received a BPAI decision (all claims were cancelled after BPAI affirmed) and no completed cases have received a court decision.”

    Based on the above I find it highly improbable the PTO will ever get reexam completed in under 12 months. They can promise anything. They have little to no credibility.

    Further, the threshold is already “substantial new question” which the PTO seems to have totally ignored by granting 95% of requests. So 95% of the requests satisfy the existing threshold? Really???????

    Sorry Gene, but I think you’ve been taken in by these crooks.

    Patent reform is a fraud on America. It is patently un-American.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 26, 2010 10:29 am


    We can certain agree to differ, but I do feel I need to make sure that those who might not have a full understanding understand some important realities, which I know you know.

    First, Provisional patent applications are not published, so fully describing the invention in its full glory in a provisional patent application would not allow anyone in the public to know what the invention is.

    Second, my belief is that if you do not have an adequately large disclosure you are unnecessarily giving up rights down the road. In my opinion limiting the disclosure to what is claimed is not appropriate, particularly in high tech, computer and software because you forfeit the ability to file a continuation later that adds claims that you may not have envisioned but which may (or even likely) would have been possible with a broad disclosure. So if you want to have any hope to add claims to after developed technology that may fit within the grand invention you need a broad disclosure.

    Finally, picking up on what what Step says above, it is not correct to say the “only” benefit of a provisional patent application is a reduced fee. That is potentially a benefit depending upon how you approach the filing. The real benefit of a provisional patent, however, is that it cuts off 102(b) problems. Those who wait to file wait at their own risk. You can file, stop the 102(b) clock from running and have a patent pending.

    In my opinion, a provisional patent application is the only way to proceed when the invention is in development. Since I typically work with entrepreneurs and small businesses at the earliest stages of innovation we protect whatever we can describe as it is developed, protecting whatever new and exciting technology we can at the time and then continually pushing the envelope describing more and more as the innovation is developed and implemented.


  • [Avatar for step back]
    step back
    February 26, 2010 07:06 am

    Not correct to say that “The **only** true value of a provisional application is the reduced filing fee”

    The one year provisional life is not counted against your 20 year term and yet it gives you option of claiming an earlier priority date.

    Agree with you that provisional should include drafted claims even though law makes claims optional.

  • [Avatar for Bill Ralston]
    Bill Ralston
    February 25, 2010 06:24 pm

    And so we shall agree to differ, as my clients would prefer not to dedicate “the broad pronouncement of what the invention is in its full glory” to the public while only obtaining patent protection on “a subset of the invention.”

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 25, 2010 06:18 pm


    Thanks for the offer, but not necessary. I am doing fine, my clients are happy, and everything proceeds quite nicely.

    If you cannot understand how to make this work without drafting claims that sounds like a you issue. I don’t go around saying the way you choose to do things is inappropriate. I find it interesting that you are so willing to say what I am doing is inappropriate without ever knowing what it is that I am doing and without even seeing the resulting provisional patent application in the first place. Truly sad that you feel so confident in yourself that you can opine without knowing any facts.

    As for your analogy about writing a brief without knowing what the case law is, either you know or you should know that is a ridiculous comparison. The need to resort to the absurd, which is not even comparable, to defend yourself speaks volumes. You cannot write a brief without knowing what the case law is. You can, however, write a patent application without starting with the claims. While it might come as a shock to you, the specification is actually supposed to have support for the claims. You see, the specification is supposed to be the broad pronouncement of what the invention is in its full glory, with the claims typically being a subset of the invention. So if you are focusing only on the claims and then writing a specification that supports the claims I think you are leaving a lot of the invention undisclosed. That is not my style.

    If you and your clients are happy with the way you process applications good for you. For those who are interested in what may well be a better way that results in the economical protection of more front line assets… well… you know where to reach me. I also consult with attorneys who are looking to streamline their processes.


  • [Avatar for Bill Ralston]
    Bill Ralston
    February 25, 2010 04:25 pm

    Gene – My measure of quality is not how many pages of disclose your filed – it’s whether the patent has claims that are allowable, defendable, and infringable. The purpose of the disclosure is to support the claims (e.g. meet requirements of 112 and provide support for desired claim interpretation). I have serious doubts in the quality of an “80% solution” if the 20% you left out is the claims. That’s like writing a legal brief before you even look at the case law. The key value a patent attorney provides is the art of drafting claims that draw a line between the inventive concept and the prior art in such a manner that the claims strike a balance between protecting useful embodiments of the invention while minimizing the risk of invalidation over prior art that won’t be known until litigation. If you are spending 80% of your time on a non-provisional application on something other than the claims, perhaps you would like me to consult with you and your clients so you can streamline your non-provisional drafting process.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 25, 2010 04:23 pm


    You say: “Your legal analysis is correct. Your business analysis is not shared by the business folks who have to keep a business out of bankruptcy.”

    First, you act as if every business person shares your view and disagrees with me. That is not true and you know it. Second, those businesses that don’t adapt fail. That is hardly a newsflash.

    You strike me as a “red light lawyer.” I am a “green light lawyer.” Our approaches are very different. I see opportunity where you see road blocks. The job of any attorney is to give competent legal advice and recommend an approach that works with what the clients want to do. If they choose to do things for business reasons that compromise their intellectual property rights that is up to them. But as we all know that is why large corporations in the tech space don’t stay dominant for very long. Cutting R&D when things are bad is stupid, and protecting less means you get less protected.

    You ask: “Take a look at U.S. Pat. No. 6,549,959 and tell me how you would have “protect[ed] [this] invention through a provisional patent application for a reasonable cost.””

    I have offered repeatedly to consult with your clients and tell them how they can do what they want to do. There is no great mystery here, and this, like any other invention, can be protected for a reasonable cost. What did this client pay for this patent application? Who knows. I don’t even care really. What I can say with great authority is that I could have protected it to the same extent for less, and would have charged 20% of the nonprovisional cost for a provisional that would have adequately covered the invention.

    You can pretend that isn’t the case, and that is fine. What I won’t do is tell you how to do this for free. You seem to ridicule everything I say, act like it is impossible, and then want me to consult for free and give a road map. Sorry. Like every other attorney I have time to sell and if you and/or your clients want to figure out how to do this, save money without losing protection and build a portfolio in a economically responsible way that fits within their budget and restrictions let me know. I am always available.


  • [Avatar for Gene Quinn]
    Gene Quinn
    February 25, 2010 04:15 pm


    There is nothing wrong with provisional patent applications. What is wrong is the abuse of the provisional patent application, which is certainly widespread. Given that literally anything can be filed as a provisional patent application it is certainly true that the many discounters out there are filing provisional patent applications that simply will not and could never support anything moving forward. So those who don’t care about 112 and file anything to get a “patent pending” are definitely a problem. Having said that, if you do it properly there is nothing but upside to a provisional patent application. So I choose to focus on getting it right. The fact that the Office of Enrollment and Discipline allows non-attorneys to represent applicants and file crap doesn’t mean provisionals are bad, it means OED is apparently OK with the unauthorized practice of law and are turning a blind eye to the damage that crap provisionals cause.

    I would also caution you to not assume that every application needs to start with claims. You can choose to start with claims if you like, and if you do you will never be able to file economical provisional patent applications that adequately disclose an invention. If you do a competent search and work with the inventor to identify what seems to be available you can easily identify the space you want to target and write up a specification that adequately covers that without ever writing a claim. So to say that you have to write a claim first is not accurate and about 20-30% of us don’t actually start with claims.

    I definitely agree with you that provisionals have morphed into something they were not intended to be, and I think that is largely as a result of the Office not enforcing Rule 11.5, the doing away for the document disclosure program and the fact that provisionals are never reviewed by the Patent Office. Extending the term of provisionals to 24 months makes perfect sense to me and has nothing to do with the abuses. The abuses are a separate issue and do definitely need to be addressed.

    As I have written previously I would like to see provisionals morph into something far more substantial and don’t think the “anything goes” approach is beneficial to inventors. But done appropriately you can file appropriate provisional patent applications that do provide support for a nonprovisional later, at a cost savings and while still cutting off any 102(b) clock that may otherwise expire.


  • [Avatar for Gene Quinn]
    Gene Quinn
    February 25, 2010 04:06 pm


    You are simply wrong when you say that saving money in a provisional is illusory. If you care to learn why that is true I would be happy to consult with you and your clients.

    It may shock you, but even I know that the full description of the invention is necessary. What you ignore, as well as everyone else that takes your position, is that what matters is the disclosure of the invention, not how it is disclosed. I routinely file provisional patent application in the software space for $3,000 plus filing fee and expenses associated with drawings. The applications I typically file regarding software/computerized processes are 25+ pages of disclosure and numerous illustrations. In fact I just filed one recently for that amount that was 45 pages and with 20 drawing sheets. So the invention gets adequately disclosed as is required by the law.

    The reality is if it is done appropriately you can get to the 80% solution spending 20% of the time. The other 20% requires 80% of the time, hence the extra expenditure of money at the nonprovisional stage.

    If you choose not to believe that fine, if you choose to ignore the fact that it can be done, fine. But just because you haven’t figured out how to streamline the application process and file quality provisional patent applications doesn’t mean that cost savings for an appropriate provisional are “illusory.”


  • [Avatar for Dale B. Halling]
    Dale B. Halling
    February 25, 2010 02:07 pm


    I disagree that patent reform is good for independent inventors or the US economy.

    1) Damages – I believe that the patent reform bill still has the provision that reduces damages for infringing. As long as this provision is in the patent reform bill it will damage small inventors and the US economy.
    2) First-to-File: I understand and have made the point that very few cases are won by the second to file. However, a first-to-file system is a first step in eliminating the inventor from the patent process. The next step will be to issue patents to entities, why name the inventors since we are not serious about the true inventors anyway. A first to file system is a fraud. It rewards not inventors but people who are skilled at gaming the system.
    This is similar to the publication rule. Most patent applications were being published at 18 months anyway and if you did not want to foreign file you could avoid publication. But publication is a breach of the social contract between the inventor and society. Society gets the benefit of disclosure but the inventor may never receive his part of the bargain. Note that immediately after this breach pendancy times expanded and the allowance rate fell off a cliff. Ron Katznelson has done a study showing that pendancy times always expand, usually by a factor of two, when a country adopts publication.
    3) Publication: I believe that the present bill requires the publication of all patent applications. As stated above this is a clear breach of the social contract between the inventor and society. Publication discourages people from inventing and filing for patents. If an invention can be kept a trade secret, more people will chose this right to the detriment of everyone. I have been advising more clients to consider trade secret protection. We tried the trade secret route in the middle ages and the level of innovation was pitiful. If an invention cannot be kept a trade secret, investors will be less willing to back a company whose inventions are known to the whole world before the company even gets protection in their own country.
    Real Patent Reform
    Here are my suggestions for real patent reform that would not only help small inventors but the US economy.
    1) Repeal Publication: This would restore the social contract
    2) Repeal KSR: A subject standard of patentability just increases costs and uncertainty associated with the patent process. KSR makes bureaucrats the ultimate arbiter of what is patentable instead of logic.
    3) Repay PTO: Congress should repay the over $1B it stole from inventors with interest.
    4) Regional Offices for PTO: This would ensure steady funding of the PTO and increase examiner retention
    5) Repeal eBay: This decision is logical absurdity. If a patent gives you the right to exclude, then if you win a patent infringement case you must be able to enforce your only right – the right to exclude
    6) Eliminate “Combination of Known Elements”: The fact that the Supreme Court does not understand that every invention in the history of the world is a combination of known elements is pinnacle of ignorance. Have they ever heard of “conservation of matter and energy”?
    7) Reciprocity: It is absurd that your patent can be invalidated by prior art anywhere in the world, but you only obtain patent protection in the country you filed in. A similar situation existed in copyrights in the 1800s. Mark Twain argued that this encourage US publisher to not publish books by American authors. Today, foreign copycats steal US technology rather than innovating. If you obtain a patent in the US you should obtain some protection in Canada and Europe and vice versa.

    Dale B. Halling, author of the book The Rise and Fall of the American Entrepreneur: How Little Known Laws and Regulations are Killing Innovation – for more information see http://hallingblog.com/my-forthcoming-book-1209/

  • [Avatar for Bill Ralston]
    Bill Ralston
    February 25, 2010 10:41 am

    The only true value of a provisional application is the reduced filing fee… which is peanuts compared to attorney time. The options to “save” money in a provisional because of reduced “formal” requirements are illusory. Failure to provide a full written description and enablement of the later filed utility claims will result in losing the benefit of the provisional filing date if the utility patent is litigated. The reason regular patent applications are so expensive is not because of the formal requirements of the USPTO, but because of the difficulty of crafting a strong patent. Consideration must be given to both known and potential prior art, claim scope, designing around, multiple embodiments, fall back positions, potential improvements, alternate uses, etc. Each of these aspects that is skipped to “save money” in the provisional application simple reduces the quality and value of the end product. But, if you are still a true believer in the value of an extended time period for a provisional patent such a mechanism is already available… simply pay the extra fee to file as a regular utility application and include a placeholder claim. Problem solved. File your “regular” application as a continuation in part of the first filing, and with the exception of losing some patent term you have achieved the same effect as if the first filing was a provisional. Of course, also keep in mind that the PCT and Paris Convention still only let you go back one year for priority, so even changing US law on provisionals won’t help with international filing.

  • [Avatar for Blind Dogma]
    Blind Dogma
    February 25, 2010 10:06 am

    Aside from the many other thorny issues in each of the points above, a further note on the provisional point stemming from the given reason for extending them:

    “…you will still not know for 6 months what the closed universe of prior art will be when the Patent Examiner starts reviewing your patent application. For that reason alone, provisional patent applications should remain pending for a minimum of 18 months.”
    – except, Gene, you will not know what this “closed universe of prior art” will be until the FAOM – which can be YEARS down the road – and in those cases where real examination is not commenced until an RCE/Appeal threat point instigates a first real serious examination – even more time.

    I am not certain that extending the provisional time to encompass the point you identify is a realistic option.

  • [Avatar for American Cowboy]
    American Cowboy
    February 25, 2010 09:55 am

    Gene, I am surprised that you want to make provisionals more prevalent in the patent world, which would be the result of the policy you espouse. Talk of provisionals almost invariably deludes the independent inventor into thinking he can protect himself on the cheap.

    For a provisional to be of any value at all, it must support the claims of the ultimately-issued non-provisional PATENT (not application) in the manner required by section 112. Guessing at what those claims may be when drafting the provisional patent application is often a fool’s errand, particularly if the inventor also wants to skimp on the search. If you don’t know what is going to be claimed, how do you know what to disclose? If you do know what is going to be claimed and make a commensurate disclosure, you are essentially preparing an application that can be a regular non-provisional filing.

    Provisionals were invented and put into the law to give US applicants an internal priority year, to put them on a par with foreign applicants using foreign priority. Commentators and abusers have morphed them into a poor man’s patent that is likely to have the effect of keeping the poor man poor.

  • [Avatar for David Boundy]
    David Boundy
    February 24, 2010 06:08 pm

    Take a look at U.S. Pat. No. 6,549,959 and tell me how you would have “protect[ed] [this] invention through a provisional patent application for a reasonable cost.”

  • [Avatar for David Boundy]
    David Boundy
    February 24, 2010 06:03 pm

    Your legal analysis is correct. Your business analysis is not shared by the business folks who have to keep a business out of bankruptcy.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 24, 2010 04:29 pm


    Your analysis of the consequences is, in my opinion, flat out wrong.

    You can keep talking about a grace period if you like, but the reality is those who rely on the grace period are being extremely reckless. You know as well as I do that an inventor cannot possibly know if others are engaging in activities that would render a patent impossible under 102(b). Acting like there is an absolute 12 month grace period is ridiculous. There is no absolute 12 months grace period under 102(b). An inventor must file within 12 months of an invention being offered for sale or used publicly, and third party activities unknown and unknowable to the inventor can and do frequently cause problems. In my own patent application where I was the inventor I relied on a 12 month grace period which entitled me to no patent whatsoever. My personal experience is not unique, it happens all the time.

    You are acting like there is no way to protect an invention through a provisional patent application for a reasonable cost. That is likewise misplaced and inaccurate.

    Those who choose to see S.515 as a road block will be blocked. Those that choose to see it as an opportunity will succeed and easily surpass those who view it as a roadblock.

    Finally, what is astonishing bad lawyering is not my CORRECT legal analysis, but running around crying that the sky is falling when it most clearly is not falling. Individuals and business are more than welcome to continue to make reckless, careless and bad business judgments if they want. I on the other hand will continue to provide good counsel to my clients and keep them from unknowingly harming themselves and pretending that 102(b) provides an absolute grace period.


  • [Avatar for David Boundy]
    David Boundy
    February 24, 2010 04:12 pm

    Read the bill, Gene. Your understanding of it isn’t accurate, let alone your analysis of the consequences.

    Your statement “what is left is a change to the current law where the first person to invent may obtain a patent even if they are the second to file” is simply not true. (Again, just to make clear to you what the dispute isn’t, I agree with you, that the 0.01% ain’t worth the candle, and not worth the prominence that either you or Kappos give it.)

    What does make a huge difference are the two categories where both of you only tenuously acknowledge the existence, and both refuse to acknowledge the costs:

    (a) the 3-10% where there is only one application (not two competing applications in the 0.01% class), and the prior art arises from a publication, use or offer for sale by a third party within the grace period year; and

    (b) the 25% or so of applications that are not filed at all today and that should not be filed because the invention is found to be worthless within the grace period year, and are not filed under current law, but that will be filed at great expense, under S.515.

    I am told that investors have already pulled funding from companies, and small businesses are already being strangled in the crib, because of the mere pendency of S.515. The market is already telling us this bill is bad for small businesses and startups. It’d be a really astonishing exhibit of bad lawyering for a mere attorney to force a business judgment over the business folks’.