Gary Michelson’s Letter to Congress Supporting Patent Reform

By Gary K. Michelson
February 25, 2011

EDITORIAL NOTE: What follows is a letter to Congress from Gary K. Michelson, MD, published here with permission.

President and inventor, Abraham Lincoln

As Abraham Lincoln said “The Patent system added the fuel of interest to the fire of genius”.

Many inventions allow a worker to be more productive.  That is to provide more service or more product with no increase in the work performed.  For example in the era of the building of the great canals in America steam shovels appeared such that one man and such a machine (an invention) could displace 100 men with shovels.  Similarly a large room full of typists with typewriters were replaced by a single person with a word processor (an invention) who was then capable of turning out an unlimited supply of originals.

Now the paradox.  While it is clear from the preceding examples that a given worker’s productivity was increased it would also seem that many others should have become unemployed.  Yet our real world experience contradicts that expectation.  Not so long ago this country enjoyed what economists labeled as “full employment”.  That is there were more jobs available than there were skilled workers to fill them.

In his recent State of the Union Address the President had this part right.  New Innovations create the opportunity for high paying jobs and education fills them.

At the heart of all of this as noted by President Lincoln is the United States patent system.  Companies both large and small will not create these jobs nor invest their time, money, and resources into uncertainty.  Investment in these job creating new technologies requires that all parties are motivated to invest their own time and resources into developing them and that they will then be rewarded with the certainty that only a certificate of intellectual property rights (a patent) can convey.

The United States patent system with its origins in the constitution of the United States has now stood for more than two centuries as a guiding light to the rest of the world.  But, it is a rapidly changing world and the United States, without hyperbole, is in serious danger of being left behind.  Looking inward the damage to the United States economy including the failures to have job formation from a U.S.P.T.O. that has not been fully modernized to function at its best is incalculable.

And now for the good news.  No one has their hand out.  No one is asking Congress for money.  No one is asking to place one more burden on the American tax payer.

All that is required at this time is to give the U.S.P.T.O. fee setting authority, end diversion (since the U.S.P.T.O. is fee funded, diverting funds from the U.S.P.T.O. to the general ledger is quite literally a tax on innovation), and to modify the rules by which the U.S.P.T.O. operates to allow it to stand on an equal footing with the other economic powers of the world.

For example, first to invent versus first to file is the proverbial tempest in a teacup (smaller than a teapot).  All sound and fury signifying nothing.  The low cost and ease of filing a provisional patent application (a placeholder for the first to invent) should render any discussion of fairness moot.  I believe that first to file is both fair and beneficial to all inventors; and is an important change to correctly position the U.S.P.T.O. as the leader in what will become a worldwide patent system.

Though late in this letter, by way of introduction, my name is Gary Michelson.  I am a Board Certified Orthopedic Spinal Surgeon.  I have some 250 issued United States Patents and at last count over 950 issued or pending patent applications throughout the world.  Millions of Americans have benefited from my inventions which have included new procedures, implants, and surgical instruments that have made spinal surgery faster, safer, more effective and less expensive.  Many jobs were created in the manufacturing and sale of these inventions.  The productivity of those who benefited from these innovations was also improved.  In some instances people who were in wheelchairs collecting disability payment s were restored to a level of function where they were able to leave their wheelchairs behind and return to work.

Finally I am an independent inventor who has greatly benefited from the United States patent system.  I support the pending patent legislation before you and would urge you to do the same.

I am fully available to you or your staff to discuss any aspect of this matter.

The Author

Gary K. Michelson

Gary K. Michelson

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Discuss this

There are currently 23 Comments comments.

  1. David Boundy February 25, 2011 8:16 pm

    Dr. Michelson has allowed himself to be deceived by a name—like the silly press articles that look only at the title of a patent and don’t look at the claims, he comments on the title of the bill, not the content. To understand, you have to read the statutory language, not just read the section title.

    The “first to file” section of the bill does far more than just change the § 102(g) “tie breaker” rule between two near-simultaneous inventors (which, I agree, is a tempest in a teacup—signifying nothing, trivial benefit, trivial harm). That part is irrelevant.

    What matters, as Bryan Lord explains, is the effective repeal of the § 102(a) through § 102(f) grace period. Inventors lose the chance to think, to make good decisions, to test their inventions, to prepare good patent applications.

    There have been two studies with empirical data (and one of these papers references a third empirical study by Dr. Ron Katznelson). Both show that Dr. Michelson is wrong.

    The first is S.T. Lo and D. Sutthiphisal, Does it Matter Who Has the Right to Patent: First-to-Invent or First-to-File? Lessons from Canada, NBER Working Papers, No. W14926 (April 2009), at http://ssrn.com/abstract=1394833 This paper by two economists at McGill University (one of Canada’s two premier universities) studied the economic effects of Canada’s similar switch from first-to-invent to first-inventor-to-file in 1989. They obtained extensive economic and patent filing data to conclude as follows—

    *****

    VI. CONCLUSION
    A switch from a first-to-invent to a first-to-file patent regime may be imminent in the U.S. To understand how such a policy change may affect U.S. inventive activity, we examine a similar policy change that took place in Canada in 1989. We find that the adoption of the first-to-file rule did not induce additional R&D efforts made by Canadian inventors. Nor did such a policy change have any effects on Canada’s overall inventive output whether measured as patenting at home or abroad. …. However, the new patent regime seemed to have a small adverse effect on Canadian domestic-oriented industries. The policy shift also appeared unfavorable to independent inventors and small businesses, and it channeled inventive activity towards large corporations.

    The fact that Canada’s adoption of a first-to-file system had virtually no positive effect on its overall inventive activity but a negative impact on its domestic-oriented industries as well as independent inventors and small firms challenges the merits of the proposed 2007 U.S. Patent Reform Act. The U.S. relies even more heavily on its domestic markets than Canada. In addition, as independent inventors and small firms rarely have comparable resources to compete with large corporations in the race to the Patent Office, a switch to a first to file system contradicts the very essence of the longstanding U.S. patent laws: making patent protection equally accessible to anybody. More importantly, independent inventors and small firms have played an important role in the U.S. technological leadership since its independence. … It is therefore crucial to provide an unbiased legal environment for invention and innovation, which helps these independent inventors and small firms to prosper, and the first-to-invent rule apparently serves such a purpose better than its first-to-file counterpart.

    *****

    The second empirical study is one I co-authored, Boundy & Marquardt, Patent Reform’s Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators, Medical Innovation and Business Journal, vol. 2 no. 2 (Summer 2010), http://journals.lww.com/medinnovbusiness/Fulltext/2010/06010/Patent_Reform_s_Weakened_Grace_Period__Its_Effects.6.aspx . We obtained data from the Canadian IP Office and EPO, and found that the costs for small entities are likely to go up by about $1 billion per year. The PTO will be confronted with 50,000 to 100,000 more applications per year, less carefully written– an examination nightmare. We also reported Dr. Katznelson’s work based on empirical data from Europe, which shows much the same thing–far greater costs, far less efficiency.

    Dr. Michelson further confirms his lack of familiarity with the realities of the patent system when he speaks of the “low cost and ease of filing a provisional patent application” A provisional that’s worth anything costs essentially the same as a full non-provisional. The cost is attorney fees and inventor time. Anyone that only sees the small filing fees is not dealing with reality.

    That’s been the problem – the proponents have all kinds of airy thoughts that sound nice in an academic sort of way—but no empirical support. When you look at the data, though the lens of actual experience with the patent system, Patent Reform’s first-inventor-to-file is a destructive, ill-conceived idea.

  2. staff February 25, 2011 11:21 pm

    “a U.S.P.T.O. that has not been fully modernized to function at its best”

    The problem with the PTO from a prosecutor’s perspective is not so much a matter of modernization, but management. The present and previous management had no interest in the needs of small entities and were hostile to us. I gather Mr. Michelson has never, or at least recently, participated in patent prosecution. Had he, he would know better.

    “give the U.S.P.T.O. fee setting authority”

    As above, those of us intimately familiar with the present PTO management are distrustful. Based on rules set by PTO management in areas such as reexamination, we have experience first hand the abuses PTO management is capable of. Consider the rules the PTO proposed to enact just recently concerning matters such as limitations on continuations. An inventor was forced to sue the PTO to stop them. To give the PTO fee setting authority would be to put small entities squarely in PTO management’s sights. Their aim, many of us are convinced, is to shoot and sink us. We disagree strongly with Mr. Michelson.

    In fact, this bill will do nothing to help small entities. What it will do is help large corporations maintain their monopolies and kill their small entity and startup competitors (which is exactly what they intended it to do) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs.

    “Patent reform”

    Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America.

  3. Vic Kley February 26, 2011 12:07 am

    Dr. Michelson is a great example of a successful independent inventor and should be praised for his contributions and for the cures his skill as a surgeon have provided.

    Alas his great success and subsequent wealth have isolated him from the obstacles and problems start-ups and other independent inventors experience everyday. Problems that will truly be multiplied ten fold were “The Patent Reform and Inventor Repression Bill of 2011” become law in its present form.

    Inventors need certainty that no obstacles will stop them from obtaining a patent they can use to underpin the investor funded start-up the invention will promote.

    Inventors need to see their work take no more then 2 years to get through the patent process.

    Independent inventors, start-ups and university sponsored researches need to be free of maintenance fees until their inventions become licensed and valuable, while their costs should be 1/10th that of large and small companies. At the same time such inventors should not be penalized for having more then two or three patents but rewarded for every basic broad invention they create by recognition from the USPTO (awards and medals for inventors only) along with further fee reductions.

    It should be recognized that basic inventions do best at sprouting major new industries but frequently do little to reward the inventor. A good example I know all too well is the touch screen key component of the iPhone and iPad and most laptops. This invention, sadly has been in the public long before it became popular and profitable. Important perhaps even key to present day technology success in the phone and computer field – a basic invention whose inventors should be encouraged not depressed by the failure of their invention to financially benefit anyone other then Steve Jobs.

  4. staff February 26, 2011 9:55 am

    I note that it took MIchelson 16 years to prosecute one of his most recent patents and has had a number of patents issue over the last several months -good for him. However, few small entities are in a position to wait that long for their patents. I suppose having considerable cash reserves tend to make one more tolerant and forgiving. Then too, perhaps the PTO is more apt to issue patents to parties who have notoriety or are well funded or connected. Either way, Michelson is out of touch with present conditions for the vast majority of small entities.

  5. staff February 26, 2011 9:56 am

    “a U.S.P.T.O. that has not been fully modernized to function at its best”

    The problem with the PTO from a prosecutor’s perspective is not so much a matter of modernization, but management. The present and previous management had no interest in the needs of small entities and were hostile to us. I gather Mr. Michelson has never, or at least recently, participated in patent prosecution. Had he, he would know better.

    “give the U.S.P.T.O. fee setting authority”

    As above, those of us intimately familiar with the present PTO management are distrustful. Based on rules set by PTO management in areas such as reexamination, we have experience first hand the abuses PTO management is capable of. Consider the rules the PTO proposed to enact just recently concerning matters such as limitations on continuations. An inventor was forced to sue the PTO to stop them. To give the PTO fee setting authority would be to put small entities squarely in PTO management’s sights. Their aim, many of us are convinced, is to shoot and sink us. We disagree strongly with Mr. Michelson.

    In fact, this bill will do nothing to help small entities. What it will do is help large corporations maintain their monopolies and kill their small entity and startup competitors (which is exactly what they intended it to do) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs.

    “Patent reform”

    Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America.

  6. Vic Kley February 26, 2011 10:09 am

    It would be helpful if the moderator’s could explain why my comments are held back from the general public many hours while others are not? What gives here? As a great Intel manager has said many times “You can’t be too paranoid or too rich”.

    Dr. Michelson is a great example of a successful independent inventor and should be praised for his contributions and for the cures his skill as a surgeon have provided.

    Alas his great success and subsequent wealth have isolated him from the obstacles and problems start-ups and other independent inventors experience everyday. Problems that will truly be multiplied ten fold were “The Patent Reform and Inventor Repression Bill of 2011? become law in its present form.

    Inventors need certainty that no obstacles will stop them from obtaining a patent they can use to underpin the investor funded start-up the invention will promote.

    Inventors need to see their work take no more then 2 years to get through the patent process.

    Independent inventors, start-ups and university sponsored researches need to be free of maintenance fees until their inventions become licensed and valuable, while their costs should be 1/10th that of large and small companies. At the same time such inventors should not be penalized for having more then two or three patents but rewarded for every basic broad invention they create by recognition from the USPTO (awards and medals for inventors only) along with further fee reductions.

    It should be recognized that basic inventions do best at sprouting major new industries but frequently do little to reward the inventor. A good example I know all too well is the touch screen key component of the iPhone and iPad and most laptops. This invention, sadly has been in the public long before it became popular and profitable. Important perhaps even key to present day technology success in the phone and computer field – a basic invention whose inventors should be encouraged not depressed by the failure of their invention to financially benefit anyone other then Steve Jobs.

  7. Gene Quinn February 26, 2011 2:01 pm

    David-

    I know you disagree with Dr. Michelson, but saying that he lacks familiarity with the realities of the patent system is way over the top. If anyone is familiar with the patent system it is Dr. Michelson.

    Dr. Michelson is correct when he talks about the low cost associated with filing provisional patent applications. Those who don’t understand low cost and high quality provisional patent applications can be filed is fooling themselves. I have been over and over this many times with many people. What most businesses want is the ability to file a patent application without any cost and without spending any time, and I would like an HG Wells time machine. The reality is at some point if protecting your invention isn’t worth it to you then that is a decision made and a decision that has consequences needs to be lived with. You can file provisional patent applications that are high quality at low cost. Pretending that isn’t the case just perpetrates the myth. For example, take a look at:

    http://ipwatchdog.com/patent/invent-patent-system/

    Spending 30 to 60 minutes with this system and then maybe an hour or two of attorney time can produce an enormously detailed provisional patent application. If that time/cost ratio is too much then obviously the underlying innovation wasn’t worth very much to begin with.

    I think we would do better to focus on getting an end to fee diversion and fee setting authority for the USPTO. There seems to be complete agreement on that point across the board. I would like to see a real grace period, but there is not reason you cannot have a real grace period and have a first inventor to file system.

    -Gene

  8. Gene Quinn February 26, 2011 2:05 pm

    Vic-

    You ask: “It would be helpful if the moderator’s could explain why my comments are held back from the general public many hours while others are not? What gives here?”

    Anytime someone comments for the first time their comment is held in moderation until approved. After a comment is approved future comments go live automatically unless the spam system captures it. Bad language kicks a comment into moderation, and sometimes ordinary words do because the software uses a string search. The word “assess” incorporates a string that provokes need for moderation (see first 3 letters). More than 1 link provokes moderation, and there are a host of other comments that have the characteristics of spam that can provoke moderation.

    -Gene

  9. Gene Quinn February 26, 2011 2:09 pm

    Staff-

    You say: “those of us intimately familiar with the present PTO management are distrustful.”

    You might be distrustful, but I’m sure you know that what you say is completely incorrect. Those who REALLY know the PTO management are extremely trustful and know them to be doing an exemplary job. You mention the claims and continuations rules and either you do know or should know that leadership has changed since that time.

    As for your claim that the present administration is hostile to small entities, that is simply ridiculous. They have gone out of their way to create numerous opportunities to accelerate applications which benefit small entities. They adopted provisional rules that provide at least some assistance to independent inventors and small businesses.

    I’m happy to have you comment here, but remember to keep it real.

  10. Gene Quinn February 26, 2011 4:42 pm

    In the know-

    Your comment has been deleted and will not appear on IPWatchdog.com. You make accusations against Dr. Michelson without foundation and that are contradicted by known and litigated facts. This type of anonymous character assassination is not acceptable on IPWatchdog.com. Those familiar with IPWatchdog.com know latitude is given when individuals do not demand anonymity, but for those who cowardly cling to anonymity no such latitude is given.

    -Gene

  11. Stan E. Delo February 26, 2011 4:53 pm

    I keep finding myself wondering why a First to File system would be somehow better than a First to Invent system? First of all, the switch would eliminate *interference* proceedings and replace it with *derivation* proceedings in the event of a dispute. Interference disputes is a settled process here in the US, with much experience by the courts in dealing with it, where derivation decisions are a much different animal, and would be much more ambiguous in my opinion. In other words, whoever has the most money will win in most cases. The claims of the difficulties interferences represents is way overblown in my opinion, as the percent of cases that ever get to that point is vanishingly small, so where is the big problem with a FTI system? I don’t really see one at all myself with FTI.

    As to using provisionals to *replace* the one year grace period that will effectively be gone as Bryon Lord aptly points out in the other post today, perhaps my own experiences might serve to illustrate what I am trying to convey in my own case. Part of my premise here, comes from the point David makes about the expense of Provisional applications, which I believe to be very true, namely that a Thorough PAP will cost nearly as much as an adequate NPA, sans the claims of course, but even at that the inventor Needs to Know what the claims might be before they file the PAP if they expect to have Any chance if they ever have to go to court later on the NPA that the PAP will lead to eventually (hopefully).

    One spring, I had a few months where ideas just came out of seemingly nowhere in a specific field I was working on, and I was faced with having to decide which of the about 12 different ideas to pursue in earnest? I talked to the acknoweldged leading expert in the field here in the US after he had looked at them under an NDA, and he told me there was no good way to predict how they would behave in the real world, and that I would just have to try them with small physical models. With a FTF system I would have had to file at least 8 PAP’s to have any sense of security that I wouldn’t lose my US patent rights, which I most definitely could not afford to do. At the end of the day as it turned out, I hadn’t even found the right device yet, as another idea came along and made all my earlier efforts pale in comparison. With a FTF system I would have been forced to give up long before I had ever gotten to where I am now. I tend to agree with Bryan that turning to a FTF regime could very well be the death knell for independent inventors, and most likely the innovation that is happening at academic institutions as well. Just to Harmonize Down to the rest of the world?

    Stan~

  12. David Boundy February 26, 2011 6:17 pm

    Gene, I have no doubt that many inventions are susceptible to ta one hour provisional.

    The inventions I work on, and those of Dr. Michelson’s that I looked at, are not. A one hour provisional for most of Dr. Michelson’s inventions would have led to disaster.

    Different inventions and inventors need different options — there’s no one-size-fits all approach. Which is why I think this bill is such a disaster — it closes options, “there’s only one way, the no grace period way,” and that’s just not the case.

  13. Stan E. Delo February 26, 2011 7:37 pm

    I would like to urge all here to call their Senators in the next 2 days and make their views known to Both of their Senators. http://www.senate.gov/general/contact_information/senators_cfm.cfm I happen to think this is Way too important to get wrong, as it will probably take a decade at least to reverse things if they do something foolish just to say they “Got Patent Reform done” To be clear, there has been NO economic analysis done for the effects of this bill by either the GAO or other US governmental entities that I am aware of. Ron Katznelson did a very careful study of the possible effects, that David pointed out earlier, but nobody in the Senate seems to be too interested in listening to his carefully documented results or the independent inventor community. Hopefully the Congress of the United States of America will follow the principles represented by the medical Hippocratic Oath to “First do no harm.” If you are not sure of the issues, just request that your Senators put a hold on the bill, which will force a debate on the merits, instead of lobbyists just being able to *buy* the patent laws that they happen to like or desire.

    Stan~

  14. K M Binkowski February 27, 2011 2:35 am

    Dr. Michelson:
    With all my respect to you on your accomplishements of hundreds of patents and to your field of work… I still do NOT understand how you come up with an idea that harmonization down… with a “First To File” is better (heaving in mind that you as the professional, considered the published data on this subiect matter from Canada, Europa and from the former Chief Judge United States Court of Appeals for the Federal Circuit, who did his testimony before the House Judiciary CommSubcommittee on Intellectual Property) than our in US First To Invent Patent System??? I have to say as an patented inventor that I do NOT understand you! Especially that you personally did greatly benefit from our First To Invent system, which alows YOU to become quite RICH man this days… Isn’t it? So, looks like you are forcing all of this to switch backward and go on the Wrong-Way Street – the FTF one… I may understand that someone could make mistake as non-inventor, don’t known the field and its matter…, but NOT you Sir? I may understand that those big multinational-globalists corps/cartels (whatever we call them…) have an interest to corrupt our best in the World patents’ system and have pay some one to bark for them…, but you are rich man and don’t need the money… So, I’m realy clue-less wht is wrong with backward thinking of you? And on the end of it… Did you Sir red or give a touth to above explanations of those great inventors of our present time? Not even mention that fathers of our Constitution togather with inventors of the past time establish in the Constitution and separetly the IP and Patent Law of First To Invent system, which leads our nation, country and its economy to superiority in the World! Can I then Sir to ask you to STOP trying to brake it…? Please…, and to respect the others if you do not understand well some thing! I thank you for doing this Sir…
    K M Binkowski
    ds machine inventor

  15. Ron Katznelson February 27, 2011 4:08 am

    First-to-file is a red herring. I doubt that Dr. Michelson actually knows the implications of S. 23. Let’s keep it simple – limit the discussion to the loss of grace period due to the “public use” and “on sale” bar language of S.23. It provides in pertinent part as follows:

    “102 (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
    “(1) the claimed invention was patented, described in a printed publication, or in *public use*, *on sale*, or otherwise available to the public before the effective filing date of the claimed invention;”

    I’m not even going to get into the exceptions in subsection (b) because they are irrelevant here, as no disclosure is involved in mere public use or sale. A “disclosure” must enable those skilled in the art to practice the invention. Public use or sale is clearly not a “disclosure”.

    For these events, there is no grace period in S. 23. This provision will kill startups’ ability to launch their commercial existence. It upsets two centuries of expertise in founding, marketing, financing and building new technology companies. Often, it is impossible to file an application that describes a WORKABLE invention early before its public use or offer for sale. In many cases, the public-use is necessarily the very first event that tests and validates an inventive solution worth protecting in a patent application. In these cases, public-use is an integral part of the development process and the business practice that facilitated development. How many of Dr. Michelson’s inventions were tested and perfected in public use, in a hospital or treatment center, before he filed for an applications? How many of these inventions were used for a fee before the patent applications were filed? In these cases a patent would be barred under S. 23. But wait, not so in the rest of the world!

    It is not required to file an application before such events in other countries. The rest of the world does not bar a patent based on “public use” or “on sale” where no public disclosure of the invention is involved. But S. 23 does. Why do we want to impose here a constraint with which no one has any experience around the world? Do we even know what the consequences will be? Currently, we have incentives for invention in America because our “public use” or “on sale” bar is subject to the one-year grace. The rest of the world, in a perverse way, has an *indefinite* grace period for filing an application after such public use or sale events. Do we want patent protection of such innovative activities to exist only abroad but not in America? Who would want to innovate here anymore?

    I doubt that Dr. Michelson actually knows this outcome of S. 23. I doubt that he would support a bill that would prevent him from obtaining a patent in circumstances under which he received many of his patents. It appears that S.23’s proponents are similarly clueless on the matter.

  16. Gene Quinn February 27, 2011 9:32 am

    Ron-

    With all due respect, your analysis is flat wrong. You say: “I’m not even going to get into the exceptions in subsection (b) because they are irrelevant…” That is astonishing! You are disregarding a portion of the bill that DOES provide a grace period so you can make the erroneous claim that there is no grace period at all. And you use your obviously flawed and incorrect analysis to lead to the conclusion that Dr. Michelson doesn’t know what he is talking about? Remarkable.

    Now for the truth — the bill DOES have a grace period with respect to inventor activities. So the questions you raise about Dr. Michelson are wholly inapplicable. If he used the invention himself S. 23 would not prevent him from obtaining a patent.

    The trouble I have with those against S. 23 is the demagoguing. If you want to keep any credibility your analysis needs to be intellectually honest and not overstate your case.

    -Gene

  17. Anon February 27, 2011 10:38 am

    For a view of where Dr. Michelson has evolved (and where he has not, contrast the article here and the article and the 139 comments (mostly) about that article at:

    http://www.patentlyo.com/patent/2010/03/dr-michelson-supports-patent-reform.html

  18. Gene Quinn February 27, 2011 12:32 pm

    KM-

    Do you always assume that those who hold opposing views don’t understand? You basically come out and say that Dr. Michelson doesn’t understand the issues because he hasn’t read the bill and, therefore, he should keep his opinions to himself. I find that enormously condescending, not to mention wholly inaccurate.

    Are you familiar with the fact that we already have a de facto first to file system? Are you intimately familiar with the onerous evidentiary burdens placed on the second to file? Are you familiar with the fact that to prevail as the second to file the average attorneys fees are $600,000? Are you familiar with the fact that since October 1, 2004 there have been nearly 3 million patent applications filed and only 1 independent inventor has successfully demonstrated they were the first to invent and win the patent when they were the second to file?

    It seems likely that it is you that are unfamiliar with the fact. I know for fact that Dr. Michelson knows each of the things I recited above and considered them as he prepared his letter to Congress.

    -Gene

  19. Ron Katznelson February 27, 2011 2:35 pm

    Gene,
    I know that you care for inventors and their well-being, as you would not otherwise set up this top-ranking blog. Thank you. With all due respect, however, it appears that you too are reading the proposed statute in a way that misses a major problem in S. 23. I said: “I’m not even going to get into the exceptions in subsection (b) because they are irrelevant *here.*” You misquote me by dropping the word *here* – the specific cases that I am discussing. Gene, I did not say that S. 23 has no grace period at all. It does provide a limited (and very unclear) grace under situations where the *public* acts are also *disclosure* acts or where an inventor-originated *public disclosure* occurred. In my piece, I specifically made it clear that I limit the discussion *only* to cases involving the “public-use” and “on sale” bar. I made it clear that these acts per se do not constitute “disclosure” – acts that would trigger the exceptions of section (b). Now pay attention: the circumstances I discussed are those “public-use” and “on sale” events prior to, or during which *no one discloses* the invention. For *these* circumstances there is no grace period in S. 23 and inventors will forfeit their right to a patent if they put their invention in “public use” or “on sale” prior to filing an application. If you believe otherwise, please point to a specific exception in section (b) and explain how it would be triggered *under these circumstances* – not under some other circumstance. Merely proclaiming that S. 23 has some grace period provisions does not cut it.

    I also pointed out that in *these* same circumstances to which I limit my discussion, a patent would *not* be barred abroad. Even our foreign trading partners have recognized that under a first-to-file system, inventions *will* be offered for sale or put in public use without disclosure prior to filing an application, and their system provides grace for filing *after* such events as long as there was no prior public disclosure. Not so under S. 23! It would create a condition that does not exist under those foreign patent systems – to the detriment of those seeking patent protection in the U.S. It would create a tilted playing field, where inventors find that they are more likely to lose patent protection in the U.S. than elsewhere. Gene, I doubt that this is the outcome you prefer. Has your focus on the rare first-to-file/interference red herring distracted you from the real issue in this bill?

  20. Ron Katznelson February 27, 2011 4:57 pm

    Perhaps I should also mention a reason why reading S. 23 confuses many – it is its drafters’ choice of confusing titles. Whereas current 35 U.S.C. 102’s title is appropriately titled “CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT,” S. 23’s title for this section is “NOVELTY; PRIOR ART.”

    But do not let the title of proposed 102(a) confuse you (although it appears to have confused it’s drafters). It is not only about prior art. There are two distinct policy purposes intended and they must not be confused. The first has to do with prior art – “the claimed invention was patented, described in a printed publication” – designed to deny a patent for those who have not contributed *new* knowledge to the public. The second is intended to ensure that those who wish to convey *new* knowledge and enjoy the benefits of the patent bargain in exchange, do not unduly delay their part of the bargain – early disclosure of their invention and fixing the period of their exclusive rights. This is the purpose of the “public use” and “on sale” bars. These bars have nothing to do with prior art or prior teaching because the mere use, sale or private disclosure of inventions does not guarantee that the *knowledge* on which they are based will be conveyed to the *public.* The patent bargain is not between an inventor and a private party who may benefit from the invention. It is between the inventor and the *entire public*. Mere public use or on-sale events do not meet the inventor’s burden of disclosure under the patent bargain and therefore cannot per se trigger grace under proposed 102(b). If the drafters meant otherwise, they have a lot of ”splainin’ to do here.”

    In fact, the drafters have much to clarify here, as they specifically chose new undefined terminology that has no precedence in the prior statute. The current statute uses the term “known or used by others in this country” and had been given decades of rich case law of legal interpretation. S. 23 uses the terms “disclosure” and “otherwise available to the public” – new undefined terms that guarantee decades of legal uncertainty and confusion. For example, what kind of prior art that was NOT “patented,” NOT “described in a printed publication,” and NOT found in “public use,” and NOT “on sale”, would actually qualify as “otherwise available to the public”? If such art is found, what would constitute evidence for its existence?

    I am concerned that the change due to the new terms “disclosure” and “otherwise available to the public” might not be interpreted as mere drafting convenience. Rather, courts will be *required* to presume that in this statutory change, Congress “intends its amendment to have real and substantial effect.” Pierce County, Wash. v. Guillen, 537 U.S. 129, 145 (2003) (“We have said before that, when Congress acts to amend a statute, we presume it intends its amendment to have real and substantial effect”. … “That reading [as proposed by a party] gives the amendment no real and substantial effect and, accordingly, cannot be the proper understanding of the statute.”).

    We also have the new issue of dropping the term “in this country” from the acts that bar a patent. I’m all for properly introducing prior art published in other countries. However, introducing a bar based on purported “public use” or “on sale” events that occurred in foreign countries, where the rules of evidence are totally different from ours is a big concern. No one has actually analyzed S.23 from the perspective of the U.S. rules of evidence and how problematic enforcement of any of its provisions uniquely dealing with inventions would be with respect to discovery in other countries. Also note that in depositions conducted abroad for a case before a U.S. court, foreign witnesses can testify with absolute immunity from the pains and penalties of perjury. While it may appear attractive to cast a broad net of public use or on sale bar across the globe, these bars per se do not exist in other countries. Why should we accept them here?

  21. patent litigation February 28, 2011 4:22 pm

    Hear, hear. Ending fee diversion is essential to helping the U.S. economy and innovation regain their global footing and reputation for excellence. Fortunately, at least a few of our representatives in Congress appear to be waking up to this reality. If nothing else, perhaps this year’s legislative patent reform discussion will continue raising the level of awareness, which will eventually lead to action.
    http://www.generalpatent.com/media/videos/gpc-senior-vp-paul-lerner-interviewed-cnbc-asia

  22. Lawrence S. Cohen February 28, 2011 5:27 pm

    I hope this is not a redundant comment. I sent to both Senators Feinstein and Boxer the message below. As for the practical value of first to invent just ask how a reference can be avoided with the present law and how it will work under the proposed law; that gives a clear answer, I think. The commenters are correct in that Dr. Michelson is a special case and his own experience is not generally applicable to the rest of the inventor population. Also, his comment about filing provisionals seems to belie his own position; he is saying you do want to file early and you can, just file a provisional. Well in my view that is a very poor solution to the issues raised by first to file.
    Here is what I sent to the Senators:
    I am writing about the so-called patent reform bill.
    I have been a patent attorney for over 45 years and I have seen the patent system go through pendulum changes of pro and anti patent.
    First I want to strongly oppose the first to file change from first to invent. First to invent is the jewel in the crown of our patent system. It rewards the basic merit of the patent system, which is, simply, the date of invention should govern the right to a patent.
    I have heard of no argument for changing. Some have talked about “harmonization”. That is a red herring, there is no disharmony. Some have talked about the cost of interferences. But interference is an extremely rare proceeding.
    Overall there is no argument that can overbalance that easy to understand principle that the date of invention should be the date from which to measure the right to a patent.
    As you know the date of invention is how patentability is measured vs prior art that is cited against patentability; that is the main issue here. First to invent was written into the 1957 law as well as some amendments. That law has served to make our patent system the benchmark everywhere. Yes, other countries have made first to file their law. But since when do we follow; and especially do we give up the true merit of a system to follow countries who merely adopt an easy bureaucratic approach.
    Another objectionable feature is the proposed opposition procedure. It clearly tilts in favor of those who can afford to track issuing patents and attack anything they don’t like, which they can afford to do to deprive other parties of development of a patent position.. There is no defined level of interest to qualify for provoking an opposition. By way of example, the right to a Declaratory Judgment action in court requires a defined level of interest. The patent system has problems, but the proposed law is a tilt in favor of the powerful and rich over the more modestly situated inventors. We, your constituents have great suspicion of a bill named “reform”; we see it as a cynical disguise for tilting a balance law in favor of a special interest. I am afraid that is the case here.

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