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.

Reciprocity
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.

Publication
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.

 
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).

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?

-Gene

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

see…
http://www.patentlyo.com/patent/reexamination/

“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.

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.

-Gene

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.

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.

-Gene