Today's Date: July 23, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

Todd Dickinson Interview Part 2: Patent Reform is Not Dead


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
Blog | Twitter | Facebook | LinkedIn
Posted: September 12, 2010 @ 5:16 pm
Tell A Friend!


Todd Dickinson, AIPLA Executive Director, 8/19/10

In this second installment of my interview with current AIPLA Executive Director and former USPTO Director, Q. Todd Dickinson, we start out discussing pendency at the Patent Office.  Dickinson tells me about the incentives he used to keep patent examiners as they matured into the level of experience where they are ready to really roll up their sleeves and become the work-horses the Office needs.  We talk about the AIPLA position on the proposed Three Track Proposal now pending at the USPTO.  We then moved into a very interesting discussion of patent reform, and a bombshell is dropped, at least in my opinion.  I was surprised to hear Dickinson say that he does not think patent reform is dead for THIS legislative cycle.  He says: “The clock’s running and, the plays have to be run a little faster,” but that he “can see a path forward once the Congress returns.”  He goes on to point out that the American Inventors Protection Act was attached to an appropriations bill.  Looking at what Congress has on its plate upon returning it looks like there are a lot of appropriations bills.  Curious indeed!

In any event, my entire discussion with Dickinson was fascinating, but this portion should be required reading for those in the patent industry.  For part 1 of my interview see: Exclusive Interview: Former USPTO Director Todd Dickinson.

— START PART 2 —

QUINN: Yes, I would agree with that. And I want to get into that sort of stuff. But I have one more chart for you to look at. This is actually a question that I have been dying to ask you for some time now. And anybody who knows me that I talk to knows that I’ve wanted to ask you this question for a while. And what we’re looking at right now is a pendency chart, the average pendency chart. [ see below] And this is something I put together on an Excel spreadsheet just using the available data. And I can’t help but notice that the time that you’re in the office, in the director’s chair, and then it also appears as the time that Nick Godici was the acting, right?

DICKINSON: Yes.

QUINN: Is the only time on this chart that shows a leveling off and then decline of average pendency. And the chart goes from ’89 all the way up to 2008.

DICKINSON: Yes. I wish you’d gone back a little further because Gerry Mossinghoff was the last one before us to do it to.

QUINN: Oh, right, no, no. I know, and I started there specifically because –

DICKINSON: Yes, no, I understand.

QUINN: They got down to the 18 months, and then it just –

DICKINSON: The simple answer, candidly, is hard work; understanding what needed to be done. We did a number of things at that time. For example, we got most of the examiners an out of cycle pay raise to try to stop attrition. Attrition was running at 14% because of the dot-com boom. We got it down to about 4% and we had a big hiring program of for three years proceeding that we had a hiring program of 1,000 examiners a year. So it’s often said you can’t buy your way or hire your way out of the problem. But you can move forward an awful lot with a strategic application of resources. And so that’s a key factor there. I think, candidly, I think Nick and I both understood the examiner psyche and we worked well with the unions. And there was a sense that we were all pulling in the same direction. And so I think that had an impact in terms of people feeling good about their work and good about getting it out the door. I think we made pendency reduction a priority and communicated that.

QUINN: Now, I didn’t know about the incentive that you mentioned to try and retain folks. Because a lot of the people that I’ve talked to noticed that it’s difficult to really dig into this backlog if you’re just hiring and hiring and hiring. And then when people get to the point where they’re experienced enough to be on their own and really contribute to the brining down of the backlog they leave.

DICKINSON: Right. Oh, we did a number of other things, too. For example, and I’m very proud of this, I reinstated the law school tuition reimbursement program so people could stay in the Office and go to law school at night. And as you point out, once you get into a certain time, for a certain time, usually four, five, six years, then they tend to be longer term employees. Particularly if they see that you’re offering a career enhancement. In fact, you could literally enter the Office as a high school graduate, back then. We would pay for college and law school while you were working, absolutely.

QUINN: Now, I think the law school reimbursement has gone away.

DICKINSON: Has it gone away again? It’s a shame because it comes in, it goes out. It often gets cut in the budget, and it’s a shame because people are in the middle of their night school process, it’s like a four year process. Some of them have to drop out, which is terrible.

QUINN: And has the Office done away with the four year wave in, too? Where if you’ve been in an examiner for four years, then you can wave in.

DICKINSON: I don’t know if it’s done away with. It was there when I was there, yes, you don’t have to take the patent office bar exam.

QUINN: Yes, ‘cause I recently talked to — well, recently, not, it should be within the last year recent talked to an examiner who didn’t know anything about that, which made me wonder whether that had been done away with as well.

DICKINSON: I don’t know, that’s a good question. I mean, that’s something else we did at the time, one of the other things I’m also very proud of is that I finalized the planning for the move to the new offices. And so I think any time you have the excitement of moving into a brand new space, I think you have people who are saying, well, I’m going hang around and see how that turns out, too.

QUINN: Well, let me ask you this. And I know this is gonna be fanciful. But let’s say funds weren’t an issue for the Patent Office.

DICKINSON: That is fanciful.

QUINN: Yes, We can talk about that in a moment. What would be the things that you would suggest could be done in order to continue to hold onto those folks that the office needs to hold onto most?

DICKINSON: Wow. My good friend former acting Under Secretary Nick Godici sometimes disagree on this particular issue but I think examiners need more time. So I’d use some of the resources to give them more time to do the job. As many people point out, technology has become more complex, certainly the requirements for the file itself and the need to keep a much more complete record. Whether that’s court demand or whether that’s driven by the office, has gone up very significantly. And that takes more time to keep that file in that kind of order. So I think giving examiners more time is important. The key piece that I think is high on Director Kappos’ agenda is reform of the IT systems there. It’s been a long time goal which has proceeded in fits and starts. In fact, I would wonder if the user community now does not have more sophisticated systems than the Office has, which I think is different than in the past. And so the office really needs to play catch up there. And there are significant productivity gains I think as well as quality gains that could be achieved with reform of the IT systems.

QUINN: And you think that that sort of drags down the examiner core and maybe demoralizes them a little bit?

DICKINSON: Well, that’s part of it. But I think it makes them less productive than they could be. And they’re less able to get the art that they need. One thing we talk a lot about, for example, is having an opportunity where an application is filed in the major offices of the world, having some mechanism by which the examiners can communicate. Whether it’s cloud computing or whether it’s the dashboard Dave talks about, the common citation documents we talk about at sort of a basic level. The opportunity to avoid redundancies. The opportunity to have examiners collectively review these I think is extraordinary. But it requires the systems to be in place.

QUINN: Well, that gets us into some other area I wanted to talk about.

DICKINSON: Plus hiring and pay, by the way. Hiring and pay I think as I mentioned.

QUINN: All right. About what Kappos is doing now and about the three track proposals and so forth. And when you bring up the cooperation with other offices, that would seem to be, and I know you were there in presented at the three track public hearing?

DICKINSON: Right.

QUINN: I don’t know whether it was actually considered a hearing. It was a meeting or –

DICKINSON: Round table.

QUINN: — round table what it actually was.

DICKINSON: Lot of round tables.

QUINN: I don’t to get anybody in trouble calling it an official hearing because I don’t know that that was exactly true.But one of the things that most people seem to have the problems with was with respect to track three where the Patent Office was gonna basically stall or wait or hold up until another action somewhere else had gotten the first office action — the first filing in another office. What is your thought on that? I can understand why you would want to do that, and I also understand why everybody’s upset about it.

DICKINSON: Let me say first off that it just happens to be this week that we are finalizing our written comments for three-track, our board is. And so they’re not completely finalized yet so what I’m saying is pretty much the AIPLA position. But it’s not completely locked down. AIPLA major concern is something that goes by the acronym, SHARE, by which a foreign applicant’s application will be held in the United States until there’s a first office action which is then supplied to the U.S. office with a response. This is probably the most criticized piece of the three-track. Now, it’s sort of ancillary to three-track. Three-track doesn’t require it, really. But it’s being included within the proposal. First of all, foreign applicants, particularly Japanese applicants, I’ve never seen them so riled up. Japanese are usually very deferential to our system, they don’t want to make a lot of waves, they don’t lobby, certainly but they are hot under the collar. I believe it’s, for the record, the Commissioner of the Japanese patent office has actually weighed in on that issue and set a critique to Director Kappos, which seems to me very significant. There are several worries, but one is that there will be retaliation. A second is that we have in our profession here in the United States a lot of our attorneys, a lot of our members do work for foreign companies. And they don’t like their clients being potentially discriminated against either. So that’s a key issue. A third, I think, we’ve been promised kind of a comparison chart. It’s been said that this is just what the EPO does, and just what the JPO does, therefore it should be okay because that makes it more towards harmonization. It seems counter harmonious to me a little bit at the moment, but if that’s true, then we might revisit the question a little bit. What I haven’t seen yet is that comparison chart, so I don’t know whether it’s actually true or not. Still waiting on it.

QUINN: Okay. Do you expect that you’ll get that before it goes final?

DICKINSON: Before it’s final, that’s a good question. I’m not sure exactly the finalized timing yet. I hope so. While on three-track itself, we are generally supportive. And that’s a shift because we traditionally would oppose the deferred examination of the third track. And if a couple questions get answered in a certain way we could be supportive.

QUINN: And what’s the difference and why is AIPLA maybe softening on what most would call deferred examination?

DICKINSON: Because the Office has said they will come forward with evidence that it will help with the backlog. It’s been analogized by Director Kappos to PCT, which is something that our members are very familiar with and so they say, oh, okay, it’s sort of like PCT and it’s not really deferred, though it is and it isn’t. We’re still talking with the Office about things such as, in PCT, you get a search. Will I get a search on track-three? Office seems open to that discussion. Can third parties request, through some vehicle, that the case move into the examination queue because the uncertainty of what the final result will be may weigh on them commercially? I think the Office is open to that. Will there be publication? They’ve already said there will be full 18 month publication of all third track and first track applications. So that takes away some of the uncertainty, too. Deferred examination, the usual problem is it’s uncertain. Particularly when it’s not being published you don’t know what’s out there. You make a research investment or even a manufacturing investment and then lo-and-behold some patent pops up later. The way to ameliorate that are some of these things I just mentioned.

QUINN: What do you think about, or how would you respond to the people who would say that maybe part of the backlog problem is the fact that we decided to start publishing our applications? And the thought process goes like this. Is it that if we weren’t publishing applications and there was this enormous backlog, then you would have ever big tech company and most large companies at Congress’s door pounding, knocking, demanding that you do something because you can’t have these things staying hidden for five, six, in some cases in the tech sector eight or ten years.

DICKINSON: No.

QUINN: It would just be a Lemelson issue.

DICKINSON: Well, and the reason we moved to publications is because of that.

QUINN: Here’s the argument, the argument, the public gets the benefit and the applicant gets the burden if the delays are allowed to exaggerate.

DICKINSON: I would hope that we will through other means get the office the resources it needs so we get down under 18 months and publication or not publication ceases to be a particular big issue.

QUINN: Do you really think we can get to under 18?

DICKINSON: We have been in the past. Can we get that back again? I think it’s a long term question. The number one issue for us classically is ending the occasional tendency towards making some of the funds that are paid in unavailable. We usually call it diversion, but the appropriation folks hate that word so we try to avoid it.

QUINN: What word do they like?

DICKINSON: They don’t — I would recommend you to go and talk to them. Now it is a bit of a looking glass situation.

QUINN: [laughing] Okay, I won’t put you in that position. You know how I characterize it –

DICKINSON: So if the resources were there I think that it could get to that point. Is it 18 months? Secretary Locke has set David a goal of 10 months to First Office Action, which is extraordinary.

QUINN: Yes. A lot would have to go right.

DICKINSON: It would. It’s a long term issue.

QUINN: Here is another thought, and I know that we’re cascading at the moment here, but I’ve always through that inequitable conduct is an enormous issue. And I don’t know how you can divorce speeding up prosecution from a discussion of inequitable conduct reform. Because it seems one of the things that during the claims and continuation debacle, that people were really, really worried about is you’re forcing so much more work on us. You’re forcing us if we want to have a patent in any kind of meaningful time frame or with a certain number of claims, we’re gonna have to give you the rope to hang ourselves with.

DICKINSON: Right.

QUINN: So how can you force the patent bar to cooperate more and still have inequitable conduct the way it current is, because it seems to me the best way perhaps to speed things up would be to demand more cooperation. But how can you do that with inequitable conduct?

DICKINSON: Well, let me talk more broadly. First of all, let me talk to that specific issue. We could not agree with you more. The AIPLA has been urging reform of equitable conduct for years. We’ve participated in round tables going back, five, six, seven years at the Office, where that was the goal. We didn’t feel the Office understood as at the time, but that was the goal was to say, look, we would work much more closely with you. We would get much better allowances at a faster rate if we had a working relationship with the Office, but inequitable conduct gets in the way. And particularly as another factor that’s happened in this period of time [NOTE: pointing to the decline period on the allowance chart above], too, is that the CAFC has found inequitable conduct in many, many more circumstances; I think, many people would say may be of questionable finding. And so now you’re seeing the CAFC taking another look, a comprehensive look at that through Therasense, and you had Congress and Senator Hatch in particular, for whom this is a big issue, taking a look at it as well. So maybe we’ll get inequitable conduct reform that would lead to a number of positives in terms of quality, in terms of pendency.

QUINN: In talking about Senator Hatch. You’re an inside the beltway kind of guy, I think.

DICKINSON: [laughing] I’ve come to be one.

QUINN: I mean, you’re an observer.

DICKINSON: We’re only a mile inside here, so don’t –

QUINN: Well, right. And did it surprise you at all that during one of the last Judiciary Committee hearings that Senator Hatch made that very passionate speech and got up and walked out over the inequitable conduct issue?

DICKINSON: I’ve been to a lot of hearings, and I’ve talked to people who have much more experience than I. And that was high drama and extraordinary that that occurred. I think partially what you had was the fact that the patent reform bill is a work in progress. And that it’s not always pretty, these days in particular, as to how legislation gets made. I think what probably happened was that there were a number of deals that needed to be cut, a number of compromises that had to be made, and that Chairman Leahy in particular wanted to take them in deliberate fashion. And he’d accepted the damages compromise and I think he was still then wanting to work on getting his head around a compromise in inequitable conduct, even though he and Senator Hatch had talked about it at the press conference. So that’s the kind of thing that then gets worked on. Senator Hatch went away and worked on it and they’ve now got something called supplemental examination, which is largely the product of Senator Hatch’s thinking, and it addresses to some degree, no small degree its beliefs, its hopes that inequitable conduct kind of issues. So you combine that and the fact that the courts are now doing a lot of the reform themselves, we’ll see how Therasense comes out, for example.

QUINN: It seemed to me, though, just watching because I’ve never seen anything like that where at a hearing, no less, where a Senator would say [paraphrasing], “we had an agreement, I’ve never had a Senator in all my years to go back on an agreement where there’s been a compromise reached.” To me that seemed to be the day that patent reform died.

DICKINSON: Oh.

QUINN: Is that an over statement?

DICKINSON: I don’t think patent reform is dead by any means.

QUINN: For this legislative cycle?

DICKINSON: We’re running out of time a little bit. The clock’s running and, the plays have to be run a little faster.

QUINN: All right, I gotta ask. Is this wishful thinking or do you really think that patent reform may not be dead this year?

DICKINSON: Sitting here today I think I can see a path forward once the Congress returns. And that’s partially because I know certain aspects of what’s going on behind the scenes, and I know also that my own experience, when I was Commissioner how we passed the American Inventors Protection Act, which was attached to the DC appropriations bill. What it basically says though is, if it’s gonna move, the train can move pretty quickly. And I think Senator Leahy, Chairman Leahy really would like to get this done. I think for him it’s a legacy issue. He’s proud of what he’s done. And the administration supports him.

QUINN: Yeah. But does the House? I mean, because that seems to be where patent reform has gone to die lately. What’s your sense of that?

DICKINSON: Well, don’t forget that in the last Congress the House passed a version. Now, the support for it was very different than this, for this particular bill. But they passed it out. And they said to the Senate this time, we did the heavy lifting last time, we would like you to go first. And that’s basically what the Senate’s done. Now, the House leadership has come back to them and said we’re not gonna rubber stamp what you’re doing, we like the direction it’s heading, but we’re going to want a few things before we move forward. And I would hope that they’re in active discussion around what those things are. Because I think patent reform is very much needed. I don’t see the compromise necessarily changing as a function of the Congress changing. There was a belief that this bill would be a lot different with a Democratic president and a Democratic congress, and it is, but maybe not in the way that those people that wanted it to be. So now the thought is, well, maybe if more Republicans get elected it will be more to our liking. I think the compromise is done. If anything’s going to happen, this is basically it.

QUINN: Yeah. And I personally think it’s misguided to think that patent reform is a Republican versus Democratic issue.

DICKINSON: Absolutely.

QUINN: It’s a geography issue, it seems to me.

DICKINSON: It’s a technology issue, it’s whose business model.

QUINN: Who’s in your district kind of issue.

DICKINSON: Yes. I think for many members, that’s the one reason why the House is a little trickier. Because again, take Senator Feinstein from California, the biggest example. And Senator Boxer. But Senator Feinstein’s worked on it in the Committee. She has every single interested represented in her state. Biotech all the way on one end. Qualcomm and the Innovation Alliance. All the heavy Silicon Valley companies at the other. The University of California a major player, and a lot of independent inventors. She is in the exquisite position of having to satisfy all those folks and strike the right compromise, which she’s very good at, has done a nice job at working towards compromise. But you get to a particular district within California, say Representative Zoe Lofgren in Northern California where one particular technology is heavily represented. And that, as you suggest, may influence that member significantly.

QUINN: Okay, well, that was a very interesting discussion. One that I didn’t necessarily thought we were gonna have, but very fun.

— END PART 2 —

Part 3 — Todd Dickinson Interview Part 3: Fee Diversion, Kappos, 3 Track. In Part 3 we discuss how fee diversion presents a huge problem to the system, how Director Kappos is doing and whether there should be any concern for him burning-out and the AIPLA position on the Three Track initiative.

- - - - - - - - - -

For information on this and related topics please see these archives:

Tags: , , , , , , , , , , ,
Posted in: Gene Quinn, Interviews & Conversations, IP News, IPWatchdog.com Articles, Patents

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

38 comments
Leave a comment »

  1. Dickinson has almost given me new hope for patent reform. Also, though one might think that it might be difficult to pass a patent reform bill during an election year, actually the opposite could prove true. As you observe in this interview, patent reform is pretty much a bipartisan issue, and likely individuals on both sides of the political aisle would love to take credit for passing reform legislation. It would be foolish for congressional candidates to let this opportunity slide.
    http://www.aminn.org/webcast-aipr-patent-reform-presentation-us-patent-and-trademark-office

  2. Gene,
    One of the worst problems of patent reform is that the legislation, according to the version published last Spring, completely guts the one year grace period.
    I know that you were instrumental in ‘getting the word out’ about this issue.
    Has there been any progress in re-writing the legislation to include first-to-file in a Canadian style that still preserves the one year grace period?

  3. That is too bad. Dickinson is a very bright man, but the main justification he provides for patent reform is harmonization with other countries. see http://hallingblog.com/2010/06/25/q-todd-dickenson-patent-reform/. Harmonization is a very bad reason for doing anything. In the 1990’s we were the economic and technological leader of the world. A decade of harmonization with the rest of the world has turned us into an economic and technological basket case – for more information see my book, The Decline and Fall of the American Entrepreneur. What we need is real patent reform that will help the economy and help start-ups and independent inventors. 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 & End Fee Diversion: Congress should repay the over $1B it stole from inventors with interest. It should also end fee diversion, which if Congress was subject to Sarbane Oxley would land them in jail.

    4) Regional Offices for PTO: This would ensure steady funding of the PTO, increase examiner retention, and ensure that the PTO is not so Washington biased.

    5) Repeal eBay: This decision is a 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. This is not an issue of equity, it is an issue of enforcing the right associated with a patent.

    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) Patent Reciprocity: If you drive your car across the border into Canada you do not lose title to your car. If you take your manuscript across the border into Canada you do not lose the copyright to your manuscript. But, if you take your invention across the border into Canada, you lose your patent protection and anyone can steal the invention – not the physical embodiment, but the underlying invention.

    Patent reciprocity would automatically provide patent rights in a foreign country when you obtained a patent in the US and vice versa. This idea was first proposed by the US in the mid 1800s according to B. Zorina Kahn’s book “The Democratization of Invention: Patents and Copyrights in American Economic Development, 1790-1920“. Unfortunately, the idea died and since then patent rights have been part of the convoluted process of trade negotiations.

    Patent reciprocity would significantly increase the value of patents and increase the value of research and development. As a result, it would spur investment in innovation. It would also increase the valuation of technology start-up companies in all countries that participated. Finally, tt would also increase per capita income.

  4. anonymousAgent-

    I believe the answer is yes. I don’t have the details, but I have heard that is in the works, which is why some think now that patent reform could really pass. It still needs to find a procedural vehicle to get floor time to get passed, but it sounds like a real 1 year grace period has been or is in the process of being negotiated.

    -Gene

  5. Dale B:

    Just these three alone would make a Huge difference for independents like myself;

    “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 & End Fee Diversion: Congress should repay the over $1B it stole from inventors with interest. It should also end fee diversion, which if Congress was subject to Sarbane Oxley would land them in jail.” (DBH)

    The other issue that mention that is CRITICAL is not allowing a FTF system to happen, as the vast majority of folks including patent attorney and agents don’t seem to understand that a Canadian style grace period is a virtual hoax as to it’s efficacy. It will be effectively worthless, because it depends upon the honesty of folks all over the world, including their patent counsel, who have every reason to put their clients’ interests first, which they are pledged to make their primary objective. What sane inventor would allow the publication of their patent APPLICATION probably about 2 or 3 years before a patent is even granted here in the US, allowing the rest of the world to copy it with impunity, and maybe even make the invention obsolete 2 years before it has even been granted?

    When the USPTO can issue patents in LESS than 18 months, they will not have broken their word to keep confidential the inventions submitted to them, but until then, 18-month publication is a total rip-off of the trust that American inventors were assured of in the US Constitution. If Congress wants to *harmonize* with the rest of the world, they need to go back and amend the Constitution in my opinion, and good luck getting re-elected after that one!! Add to that that Senator Leahy thinks his attempted crippling of the US patent system is “his legacy”, and the whole patent reform agenda is immediately called into question, as Senator Leahy is from the *IBM State of Vermont*

    Thanks Dale,

    Stan E. Delo
    Port Townsend, WA
    stand@olypen.com

  6. Harmonization is a very bad reason for doing anything.

    Patent reciprocity would automatically provide patent rights in a foreign country when you obtained a patent in the US and vice versa.

    Imagine my surprise to find those two statements in the same post.

    Dale, you’re missing some pretty fundamental principles of patent law.

    1) Repeal Publication: This would restore the social contract

    The social contract doesn’t depend on the order of performance by the parties. If you go to a fancy restaurant, you eat before you pay. If you go to a fast-food restaurant, you pay before you eat. In both cases, you have a perfectly good contract between the parties, and in both cases one party trusts the other to perform its part of the bargain at a later time.

    Once your patent application is published, you are still entitled to whatever patent you can get from it. If you don’t want a patent commensurate with the invention you disclosed, or if it turns out you disclosed no invention at all, you are free to abandon the application just as you are free to abandon any other property. Besides which, non-publication is still available upon request for any applicant whose application isn’t already getting published at 18 months in another country.

    If your problem is the delay, your solution should be reducing the delay. I’m all for quicker examination, and I’m all for hiring more examiners on a bigger budget and letting them work in whatever part of the country they happen to live in – as long as they’re adequately trained by someone experienced.

    2) Repeal KSR: A subject standard of patentability just increases costs and uncertainty associated with the patent process.

    Every case is different. Every invention is different. The most we can reasonably say about obviousness is that a person skilled in the art (once you establish what he knew at the time) would have had enough information to arrive at the claimed invention. There is inherently some measure of uncertainty because inventions are by their nature unforeseen, but the “person skilled in the art” standard actually is an objective test. It’s as objective as the reasonable person standard. It’s based on the hypothetical actions of a fictional person whose knowledge and motivations are carefully circumscribed by law.

    5) Repeal eBay: This decision is a 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. This is not an issue of equity, it is an issue of enforcing the right associated with a patent.

    This isn’t even a patent issue, it’s a basic remedies issue. First year of law school. Your right is not your remedy. The violation of your right (someone else doing what you have the right to exclude) establishes your right to remedies generally, and then you only get a particular remedy if you can show damages commensurate with that remedy. Just because you win in court, that doesn’t mean you get carte blanche to name your remedy.

    Injunctions are granted in accordance with the principles of equity, whether under 35 USC or at “common law”. You only ever get an injunction in equity if you can show irreparable harm, and you simply don’t usually have irreparable harm (or any harm at all) if the infringement didn’t cost you any sales. At common law, if you can show no damages at all you get no remedy at all – no money and no injunction. At least in 35 USC you get a reasonable royalty in cases where you have suffered no damages. That in itself is generous.

    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”?

    That’s not what “conservation of energy” means. Not even close.

    And no, not every invention is a combination of known elements. How many times do you get claims allowed because one of your elements is not taught anywhere in the prior art?

    7) Patent Reciprocity: If you drive your car across the border into Canada you do not lose title to your car. If you take your manuscript across the border into Canada you do not lose the copyright to your manuscript. But, if you take your invention across the border into Canada, you lose your patent protection and anyone can steal the invention – not the physical embodiment, but the underlying invention.

    You can’t enforce your US copyright in Canada. You happen to also get a Canadian copyright whenever you author a work in the US, but that’s just a coincidence. If your authorship is post-Mickey, your Canadian copyright will eventually expire but your US copyright will not. Be careful crossing the border after that happens…

    Also, you don’t lose title to your US patent when you enter Canada. It’s still just as valid as it ever was, namely only in the US. Nothing wrong with that. Canada grants patents too, you know. They may not look as pretty as the US ones, but all you have to do is ask and they’ll give you one.

    Also, if you don’t have a Canadian patent those filthy Canadians can “steal” your invention whether or not you cross the border. And by “steal” I don’t actually mean “steal”, because it’s not stealing to use an idea that is in the public domain because the inventor disclosed it to the public without filing a Canadian patent application.

  7. Inane,

    You clearly are ignoring or do not understand the facts of publication. A quid pro quo requires both sides to perform. With publication the government society gets it side of the bargain even if the inventor receives nothing. This is not how contracts work. In a real contract if I do not like how the negotiations are going I can decide not to enter into the contract. In the case of patents this means keep my idea secret.

    Ebay is a patent issue. The right of a patent is to exclude – perhaps you do not understand patent law. If I win a patent lawsuit I should be able to enforce my right to exclude. The Supreme Court who do not understand patents are the ones who are confused. This is not the same as asking for an injunction in a standard contract or tort case. There is no right to exclude in those cases. The injunction in a patent case is not a equitable remedy it is an enforcement of the patent right.

    Your copyright analysis is bogging down in details. I get a copyright for just putting down a work in tangible form. This is true around the world. The details of the Mickey Mouse extension are not the general rule. Copyrights were national around the world during Mark Twain’s time and this lead publisher to mainly publish the works of foreign authors. Twain argued this point and showed that it lead to an under publication (investment) in US authors.

    Stealing is a moral concept, not just a legal concept. If I take your car away from you and there is no law against that (Somalia) it is still stealing. Note that having the government steal for you, is also stealing and immoral.

  8. A quid pro quo requires both sides to perform.

    And perform they do. Just not at the same time, but that’s never defeated a contract before unless it was an express term of that particular contract.

    Ebay is a patent issue.

    No, eBay would have been decided the exact same way if any other right had been at stake.

    You prove your right and the violation of your right, you prove your damages, you ask for money and an injunction. The court says “no injunction, because your damages (insofar as they even exist) are not irreparable”. Simple as can be.

    Once you get to the remedies stage, it doesn’t matter what your right was. All that matters is making you whole for your damages, and on top of that granting any statutory remedies that may apply. Except that the statutory injunction isn’t any broader or more available than the injunction at common law, so that doesn’t help the patentee any.

    This is not the same as asking for an injunction in a standard contract or tort case. There is no right to exclude in those cases.

    Of course there’s a right to exclude in tort cases. That’s precisely what you’re suing for. Someone has done something that you have a right to insist that they not do. Nobody may punch you without your consent. Someone punches you, you sue in tort. You ask for your medical bills, your lost income at work, and an injunction.

    Stealing is a moral concept, not just a legal concept.

    I won’t debate that point with you today, but there’s no moral element to taking something once the owner abandons it in public view. This isn’t the moral equivalent of taking something from someone who is trying to possess it despite a lack of enforcement procedures. Even as a moral concept, stealing requires that the thing be taken from someone who is trying to keep it.

  9. Inane,

    USPTO does not perform – not all published applications are granted patent rights. That is clear non-performance.

    Ebay: you do not understand the rights of a patent – it a right to exclude period. This is not the same as medical bills where you have a right to be paid. This is the same as trespass case. And the Ebay decision applied to trespass would say as long as the person living in your house is willing to pay a reasonable rent you cannot remove them. This is complete non-sense.

  10. USPTO does not perform – not all published applications are granted patent rights.

    Some of them were never entitled to patent rights in the first place, because it turns out they don’t disclose a patentable invention. Maybe the disclosure was inadequate or the invention is anticipated. Others are prosecuted in a way that forecloses the grant of a patent, for example by filing a new set of claims that runs afoul of a constructive election. That’s a clear non-performance by the applicant, who has failed to give to the public a patentable invention.

    Others are entitled to a patent, but the applicant has decided that for whatever reason the patent is not broad enough for his purposes. Maybe the examiner turned up some art that the patentee didn’t know about because he didn’t bother to do a search. Or perhaps the patentee has decided it’s no longer worth his money to pursue the application. Maybe he’s not using the technology anymore. That’s an abandonment by the applicant of his right to a patent, and he can’t really blame the PTO for that. Had he filed a claim sufficiently narrow to avoid the prior art (a necessary condition for all patents), the PTO would have been happy to give him the patent to which his disclosure entitles him.

    And what if the applicant simply can’t afford to pay the issue fee? Should that fee be waived because the mere publication of his spec “entitles” him to a patent in exchange?

  11. Ebay: you do not understand the rights of a patent – it a right to exclude period. This is not the same as medical bills where you have a right to be paid.

    Ah, good. You’re starting to see the difference. The right to exclude is a right. Medical bills are proof of damages resulting from your right to exclude people from hitting you with things.

    This is the same as trespass case. And the Ebay decision applied to trespass would say as long as the person living in your house is willing to pay a reasonable rent you cannot remove them. This is complete non-sense.

    Yes, that would be complete nonsense. That’s why it would never happen. Firstly, if someone is living in your house without your permission it’s pretty easy to show irreparable harm. You are deprived of the use of that space by the other person’s occupation. You are deprived of such unquantifiable things as your privacy and sense of security in your own home, and the only way to fix that is by injunction. This is relatively straightforward in most cases of trespass to land or chattel. And in cases of trespass to land an injunction is pretty much automatic because the common law has a special place in its heart for realty.

    In a nutshell, the big difference between trespass to land and patent infringement is that patent infringement doesn’t affect the patentee at all – unless he can show that he made less profit from his patent as a result. Which all but requires him to practice his invention in some way.

  12. Which means their application should not have been published – they got nothing for disclosure. Can you understand simple English?????

  13. It is not about irreparable harm – its about enforcing the right you are given under the law. If I win a lawsuit, I have a right to enforce my rights – the right to exclude. It is not about selecting from a range of remedies. The law is a farce if it does not enforce the rights given to the patent holder under the law.

  14. It is not about irreparable harm – its about enforcing the right you are given under the law.

    Enforcing the right is about two things – the right and the remedy. Unless the remedy is required by the statute, it is determined by the harm that results from infringement of the right. That’s the reason you don’t get an injunction when money will make you whole, and it’s also the reason you don’t get a billion dollars when a thousand will make you whole.

    If I win a lawsuit, I have a right to enforce my rights – the right to exclude. It is not about selecting from a range of remedies.

    Check your statute again. There are, in fact, a range of available remedies. Injunctions are available according to the principles of equity, which means irreparable harm. If it takes zero dollars and zero injunctions to make you whole, you should send Congress a fruit basket for even giving you an evidence-free reasonable royalty.

  15. Yes there are many remedies. But if I cannot enforce my right, the right to exclude, then the law is a farce.

    You are wrong about trespass. What if someone plants corn on a part of land your are not using – you are not harmed. There is no difference between real property and intellectual property. If someone is using your intellectual property there is harm.

  16. But if I cannot enforce my right, the right to exclude, then the law is a farce.

    You absolutely can enforce your right. You can sue any infringer and win, whether or not you practice your invention. What’s more, you can take your pick of any statutory remedy that is required to make you whole for the callous and heartless infringement of your precious right that you didn’t even bother to use.

    What if someone plants corn on a part of land your are not using – you are not harmed.

    Of course you are harmed. You might have been saving that land for something, and now you can’t use it for that, or it will cost you money to clear away that corn. See, you have a positive right to make use of your land, and anybody else’s use of your land interferes with your positive right to use it the way you like.

    Patents are different. You don’t have a positive right to practice your invention, and if somebody else practices your invention it’s difficult to even show such an abstract level of harm. No matter what the infringer does, he’s not even conceptually interfering with your theoretical ability to do anything at all. An infringer costs you absolutely nothing, concrete or abstract, unless he’s competing with your own product that embodies the claimed invention.

    Besides, land is different because land has always been different. If you don’t like it, blame the common law. I didn’t make that rule.

  17. No, I am not doing anything with my land. I don’t even visit it. You added assumptions to fit you conclusions. They are exactly the same situation.

    I have positive right to exclude you from using my patent. You want the courts to not enforce that right. It is that simple. Not enforcing my rights is a violation of my rights.

  18. No, I am not doing anything with my land. I don’t even visit it.

    That’s fine. You don’t need to do anything with your land. Your right to do something with your land includes the right to do nothing with your land. Someone else’s occupation of your land interferes with your ability to decide how to use your land. Because you have a positive right to use your land. The negative right to exclude others from your land is merely one aspect of your positive right to use your land as you please.

    I have positive right to exclude you from using my patent.

    I am positive you don’t know what words mean. A right to exclude is a negative right. A patent gives you exactly no positive right to do anything. All it does is allow you to sue when other people do things.

    Not enforcing my rights is a violation of my rights.

    No, it’s really not. The violation of your rights is a violation of your rights, and you are compensated for it by way of a laundry list of statutory remedies. Just prove your damages, and we’ll make you whole. Scout’s honor.

    You’re still missing the central point, which is that if the infringement causes you no discernable harm you don’t deserve any compensation at all from the infringer. And conversely, if you really do need an injunction, you will easily get it even post-eBay.

  19. “making you whole”

    IANAE. Seriously think about those three little words.

    Now softly, with your eyes closed,
    add the phrases “injunction” and “exclude”

    “making you whole”

    “exclude”

    “injunction”

    “making you whole”

    “injunction:

    “exclude”

    Are you starting to get the picture?

  20. Inane,

    Your wrong on the logic and you are wrong on the economics:

    Logic: It is inane to suggest that you have a right (the right to exclude) that when someone violates it, and you prove this in a court of law, that the remedy does not include enforcing that right (excluding the infringer from infringing). This makes Obama’s comments about the Bill of Rights being negative rights, sound almost reasonable.

    Economics: People do not obtain patents just to have something to hang on their wall. They expect to obtain an economic return by licensing or selling the patent rights or producing something encompassed by the patent. When someone violates their patent they are hurt economically. The infringement makes it harder to license or sell the patent rights to the invention. If they want to manufacture/sell the invention it makes it more difficult to obtain funding. Just providing the owner with a reasonable royalty does not compensate them if they want to exclude the infringer. This is exactly the same situation as allowing someone stay on your land if they pay you reasonable rent. It’s a court system that has deciding what the owner wants instead of enforcing the law. This is typical social engineering instead of enforcing the law.

  21. Logic: It is inane to suggest that you have a right (the right to exclude) that when someone violates it, and you prove this in a court of law, that the remedy does not include enforcing that right (excluding the infringer from infringing).

    It’s not inane, it’s basic first-year common law stuff.

    Suppose you have a contract. A right to require performance of an obligation by the other party. And suppose the other party does not perform, in violation of your right. You sue. You win. You clearly have a right. Do you get that right enforced? No. The court will almost never grant you an injunction in contract matters even though your right is spelled out in the contract and clearly infringed. You’ll usually get money, and even then only if money helps to make you whole. You know who gives injunctions for breach of contract? The French.

    Same goes for patent infringement. Just because you have a right to require the other guy to act in a certain way, that doesn’t mean his failure to do so is punishable by injunction.

    Economics: People do not obtain patents just to have something to hang on their wall. They expect to obtain an economic return by licensing or selling the patent rights or producing something encompassed by the patent. When someone violates their patent they are hurt economically.

    Oh, they’re hurt economically? They’re licensing or producing a product? Great. Those people can still get injunctions all day. eBay has done nothing to harm them.

    eBay only affects people who are not making, using, selling, or licensing the invention. They are not hurt economically, so even the reasonable royalty provided by statute is more than they deserve.

    Just providing the owner with a reasonable royalty does not compensate them if they want to exclude the infringer.

    It compensates them for the entire loss suffered by the violation of their right, and then some. Whether it makes the patentee happy is completely beside the point. I’m sure if you gave him a million dollars he’d be even happier, but that doesn’t entitle him to a million dollars in damages. It doesn’t matter what he wants. All that matters is what he can prove he is entitled to, to make him whole for the damage he has suffered.

  22. Inane,

    You are inane – you are enforcing a property right not a contract.

    Ebay clearly has stolen their property.

    Ultimately you do not understand that patents are property rights. It is the court’s job to enforce those rights, not substitute its judgment for the property owners.

  23. Hi Dale,

    Methinks Inane doth protest too much. He or she is either a practitioner that specializes in software/freeware development, so might could use some fresh clients, or is a retired examiner who doesn’t desire to let us know who he or she actually is. Thanks for standing up to this type of anonymous drive-by *legal advice*. I think I might recognize the style, which is usually hard for the author to realize they are revealing.

    Best regards,
    Stan~

  24. You are inane – you are enforcing a property right not a contract.

    A patent has the attributes of property. That means you can own a patent, sell a patent, and so forth. The right to exclude others from the claimed invention and the resulting action for infringement are not property. They are a (statutory) cause of action like any other, and probably most analogous to a very technical and fact-specific sort of tort.

    Unless someone takes your actual patent, they have not taken your property. They haven’t even damaged it, really. All they’ve done is performed an action with their own property that you have a statutory right to sue them for. That’s why you sue in patent infringement only, and no action lies in any of the torts that you’d expect would apply to taking or using someone else’s property.

  25. “,I>Unless someone takes your actual patent, they have not taken your property. They haven’t even damaged it, really.”

    You started out strong by actually (finally) admitting a nexus between patents and property – something you have refused to do in the past. Your phrase above reminds me of my questions to you concerning my New York and Aspen properties. How are those answers coming?

  26. something you have refused to do in the past.

    [citation needed]

  27. Inane,

    Do you actually read what you write??

    If someone steals my car I may still have the title to my car. That does not mean they have not stolen my car. You can steal someone’s invention without taking their patent away. The patent is title to the invention. So you are wrong, someone can steal my property (invention) without having take my title (patent).

  28. If someone steals my car I may still have the title to my car. That does not mean they have not stolen my car.

    Right. But if someone builds a machine that infringes your patent, you don’t have title to that machine. You have title to your patent, and nobody has taken your patent.

    You can “steal” someone’s invention without taking their patent away, obviously. But what you’ve “stolen” is their invention, not their patent. It’s only the patent that has attributes of property, and the patentee clearly still owns the patent.

    Now, if you somehow got a fraudulent assignment to yourself registered at the PTO, I can see a case for theft or conversion or whatever. But that’s not what infringement is.

  29. Inane,

    You do not understand property rights, you do not understand the concept of title versus the physical embodiment. If you went to law school you should sue to get your money back. If you did not go to law school, you need to educate yourself on the law.

    Your state “you don’t have title to that machine” – no I have title to the invention and you have just violated my title to the invention. If you own a book you have title to the physical copy but not to the copyright. If you own land you may not have title to the mineral rights. Rights can be divided multiple ways. They are not an all or nothing proposition. Your simple minded approach to property rights is not based in reality.

  30. no I have title to the invention and you have just violated my title to the invention.

    I don’t think you’re in any position to opine on who understands property rights.

    You don’t own an invention. You own a patent. The patent is what has attributes of property, remember?

    Sure, the patent happens to contain a list of things you can sue for, but even if somebody does those things they have not affected your title to the patent in any way. You still own the patent, you can still sell the patent, you can still sue the infringer and any other infringers for any acts of infringement, you can still prosecute the re-exam. Those are the attributes of patent ownership. Those are what make patents have the attributes of property. None of those are diminished in any way by infringement, because infringement is not an ownership issue.

  31. Protecting inventors from Infringement is the purpose of a patent you are a complete idiot.

  32. Protecting inventors from Infringement is the purpose of a patent

    Of course it is. That’s why patentees win at trial when they prove infringement.

    What does that have to do with anything?

  33. As I explained before owning title is irrelevant if your rights are not upheld. Owning title to a car that has been stolen from you is stealing even if you have title to the company.

    Inane – your wrong on the law, you do not understand the difference between title and the object, you do not understand economics, you impervious to logic and reason – thanks for proving that you have lived up to your pen name.

  34. Owning title to a car that has been stolen from you is stealing even if you have title to the company.

    Well, yes. If you have title to a patent and the patent is somehow taken from you, that’s stealing.

    If you own a car and someone kicks in the headlights or slashes the tires, that’s not stealing. Actionable because you own the car, yes. Stealing, no. Compensation? Whatever damages you can prove, and nothing more. Not even a “don’t do it again” injunction.

    you do not understand economics,

    I’m the one making the economic arguments here. If the patentee suffers a loss, the patentee gets compensated. If the patentee makes no economic use of his patent and suffers no economic loss from the infringement, there is no economic question to consider. You’re the one saying to ignore the economic situation (and the legal one) because the injunction “best approximates the patentee’s right”.

  35. Yes but if they steal the stereo from the car or the tires – it is still stealing.

    If I write a check on your checking account, it is still stealing if I only take part of the total and even if you still retain title to the checking account.

    The examples are numerous if you use a little logic.

  36. The examples are numerous if you use a little logic.

    And none of them are analogous if you use a little logic.

    Taking the stereo from someone else’s car and taking money from someone else’s checking account are all examples of appropriating something that someone else owns, even if he owns it as a part of something else that he owns.

    A patentee does not own “practicing the invention”. He doesn’t even have the right to do that himself, because “practicing the invention” is not part of the patent. He only has title to the patent itself, which is nothing more than a right to sue people. The only way you could actually steal part of that patent would be if you licensed or sued one of his infringers, and even that would require some shenanigans with recording assignments at the PTO.

  37. If you knew anything about property law you would not be so one dimensional in your analysis. I own my house, but I may not own the mineral rights. I own my book and your coping it without my permission is stealing even if you never take any of my books from my physical possession.

  38. Dale,

    You have been sucked into IANAE’s word warp game. I’m sorry – it happens to the best of us.

    Just keep in mind that with anything you say to him, he has to twist and bend in order to fit through his filter. What actually makes it into his mind has little resemblance to what most of us with a genuine understanding of the patent world understand you to say. He clearly has cemented some facets of law in his mind, but lacks any type of critical understanding. His filter chops off the understanding and he has become well practiced at the critical.