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NEWSFLASH: Feinstein First to File Amendment Dies in Senate

Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: Mar 3, 2011 @ 1:04 pm
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Beginning at about 12:30pm Eastern Time today the United States Senate closed debate on the amendment offered by Senator Diane Feinstein (D-CA) relating to the removal of first-to-file provisions from the patent reform bill S. 23.

The Senate Roll was called and a vote taken on whether to table the Feinstein Amendment.  The votes were 87 in favor and 13 against, thereby killing the Feinstein Amendment and keeping the first-to-file provisions within S. 23.

A Manager’s Amendment earlier in the week added provisions that would end fee diversion and allow the United States Patent and Trademark Office to keep the fees it collects.  This along with fee setting authority, already previously in Section 9 of S. 23, means that enactment of the Senate version of patent reform would be extremely beneficial to the Patent Office and allow processing of applications to become more efficient, thereby decreasing average pendency and decreasing the patent backlog.

The Manager’s Amendment also reportedly removed the controversial damage provisions, which would have made it easier to limit damages for the infringement of allegedly minor patents.  Such a provision would have made it easier for would-be infringers to make a business decision to infringe, and has been one of the most controversial provisions over the last 5+ years of debate on patent reform.

 

 

About the Author

Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
Zies, Widerman & Malek

B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center

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Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

64 comments
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  1. It appears to me (at least) that a certain elderly Senator from Vermont is “outdated” and not in “harmony” with the most competitive countries in the world.

    Maybe we should “reform” the “outdated” Vermont seat and replace it with a dictatorial government from some unnamed country in Asia whose name used to start with the pejorative phrase “Red …”. After all, that seems to be the way the competitive world out there is heading and we need to “HARMonize” ourselves with the way “they” do things so we can remain “competitive”. Besides, slave labor camps help reduce business “costs”.

    As another aside, it seems ironic that the Vermont Senator voted against the “Reform” of the “Reform” proposal offered by a California Senator. After all, don’t we want our patent laws to reflect the least “outdated” and most “modern” reform effort so we can stay competitive in the 21st Century?

    /sarcasm

  2. Step-

    Head is spinning. What???

    -Gene

  3. Gene,

    Did you read the Managers Amendment in its entirety? What do you think about the patents in the “financial services” arena and the extended “transitional program” which they can be subjected to (extended post-grant review)? This does not hardly seem fair, does it? i.e. all patents are not treated equal?

  4. It is NOT harmonized. There is no ‘for sale’ and ‘public use’ bar outside of the US. If the ‘for sale’ or ‘public use’ is enabling, then it is novelty killing. Otherwise, it isn’t .

    IF THEY WANT TO ‘HARMONIZE” WHY CAN’T THEY TAKE OUT ‘SALE’ AND ‘PUBLIC USE’????
    Why can’t they take out ‘inequitable conduct’ to ‘harmonize’

    I see that harmonization is VERY selective.

  5. Concerned Inventor-

    I have not, as yet, read through the Managers Amendment. I am trying to keep up with what is going on in the debate on the floor of the Senate, and at the same time get some other legal work done. I did hear there was something about financial services patents and tax patents, and I am looking for more information that. I also understand the damages provisions have been stripped from the bill, which was a big concern of independent inventors, pharma and biotech who typically rely on one, or a few, patents that all need to be valuable if infringed.

    I don’t know what I think exactly about your general proposition that all patents be equal. For a long time I have been a proponent of some different treatment based on patent term, with those requiring extreme investments getting longer terms. But I have in the past been a critic of giving more scrutiny to one class of innovation before a patent issues. Having said this, I am reminded by what Gary Michelson always says (paraphrasing) — no one wants an overbroad claim that is invalid, what you want is the broadest valid claim you can get. With these types of patents there is a lot of prior art out there and they are susceptible to challenge. So an argument could be made that great scrutiny, IF AND ONLY IF it can be reasonably streamlined, would likely be in the benefit of the patent owner. You don’t want challenges forever, but at some point a settling of rights must occur. So if a solid settling of rights can be achieved that could be quite beneficial. It might make such patents more enticing to investors and allow start-ups to get off the ground.

    Anyone have thoughts?

    -Gene

  6. This does not hardly seem fair, does it?

    Concerned Inventor, As I’ve indicated earlier, there may be a silver lining in this amendment since it only applies to business method claims that are not “technical inventions”. The way the USPTO is interpreting the Bilski decision, only claims drawn to technical inventions are getting allowed so this may be a non issue from a reexamination standpoint.

  7. It might make such patents more enticing to investors and allow start-ups to get off the ground.

    I concur. The better and more thorough the examination, the more valuable a patent is to investors and startups – provided it doesn’t drag out too long.

  8. I see your points, but the time period for post-grant for “financial services” patents is 4 years. So, if your argument is that this will help start-ups with initial capital in the financial services area, I am thinking “ok, but 4 years from now”. Why would you invest, if this could be an issue 4 years down the road? Just a thought. Merely, a thought. By the way, the House still has to consider Patent Reform before it goes into law, correct? Also, this will cover patents which are issued once the law goes into effect? Please do not tell me this is retro-active!

    Keep the comments coming! This is a very beneficial discussion to me. Thanks.

  9. Head is spinning. What???

    Gene,

    Maybe I had a tad too much Kool-Aid in my morning coffee.

    Or maybe it was listening to Leahy’s floor speech this AM that got my head spinning.

    He kept talking about the “outdated” Patent Laws of our country which are so desperately in need of “reform” and how this reform would unleash the innovative ingenuity of our country if only we “HARMonize” with the rest of the world because, as should be obvious, American inventors are “confused”. They can’t get their heads squared around the obsolete and “outdated” US patent laws versus the “modern” and more in harmony “international” laws of the rest of the world. If only we could de-confuse our spinning in the head USA inventors by “harmonizing” with the International community, then our Yankee ingenuity inventors would be de-stifled from their confusion over our out-of-harmony outdated laws and they would again unleash a cornucopia of job-creating inventions for the benefit of our nation. (Wow. So inspiring. I think I need to move to Vermont, the capital of our Yankee ingenuity nation.)

  10. Gene –spam filter ate my homework again ;-)

  11. Concerned Inventor-

    I don’t know how much of what is in this bill could be retroactive given it relates to priority dates for obtaining a patent. I can’t imagine those provisions be anything other than prospective. The post grant review provisions probably will apply to patent applications in process after a certain date.

    I’ll have to take a thorough look at the provisions you mention. 4 years seems quite long.

    I am working to get some folks who have been following each and every Amendment to prepare an article to update us all on the many twists, turns and content. So look for that in the coming days.

    The House does have to pass something on patent reform and if it isn’t exactly what the Senate passed (which is very unlikely) then it goes to Conference to work out the differences. So the House and Senate need to be close to realistically get a common piece of legislation passed and onto the President’s desk.

    -Gene

  12. Mark-

    You are usually all over the financial patent issues. Have you looked into that aspect of the Manager’s Amendment?

    -Gene

  13. anonymousAgent,

    EXCELLENT POINT

  14. Have you looked into that aspect of the Manager’s Amendment?

    Briefly. I’m more focused on the attempt to ban tax patents (section 14). This could have wide ranging consequences depending upon how literally the language is interpreted.

    Right now I have an email correspondence going on with my Senator’s CC on what exactly the language means. Supposedly clarifying statements will be put in the Congressional record so that, for example, patents on inventions with incidental tax benefits will not be put at risk.

    We will see.

  15. DB,

    If we truly want to “HARMonize” with the rest of the world, let’s just copy verbatim their IP laws.

    Do you have your copy of the Tijemen Square IP manual?

    Let’s just use that one.

    IIRC, it has a red cover and a portrait of the Party Chairman on it. ;-)

  16. p.s.

    I just had a Vermont Ingenuity moment.

    Why stop at copying just their IP laws so we can be in kumbaya “harmony”?

    Let’s replace our whole US Constitution with theirs.

    OMG. Why was I so stifled before that I couldn’t see it?

    It should have been “obvious” to any ordinary practitioner in the harmonization arts.

  17. Step back,

    Good point, but you forgot that we need obtain campaign donations, so we will have to string out the HARMonization.

  18. “allow processing of applications to become more efficient, thereby decreasing average pendency and decreasing the patent backlog.”

    Small entities have their doubts about that. Experience has taught us PTO management cannot be trusted. But then, all along small firms have scarcely had a voice in this bill. Congress has cherry picked parties to testify that tow the manager’s line. As they say, we have the best government money can buy.

  19. Here is a similar story

    The U.S. Senate voted overwhelmingly Thursday (March 3) to table an amendment proposed by Senator Diane Feinstein (D. Calif.) that would have largely defeated a major patent reform bill being debated in Congress.

    The Senate voted 87-13 to table Feinstein’s bill, which would have preserved the current “first-to-invent” system used by the U.S. Patent and Trademark Office. The current system awards patents to the first inventor to come up with an idea, even if that person was not the first to file a patent application.

  20. Feinstein nails the myth of first inventor to file:
    “Currently, you as a first inventor can prove that you were first by presenting evidence that is in your control–your own records contemporaneously documenting the development of your invention,” she continued. “But to prove that somebody else’s patent application came from you under the bill, was “derived” from you, you would have to submit documents showing this copying. Only if there was a direct relationship between the two parties will the first inventor have such documents.
    If there was only an indirect relationship, or an intermediary–for example, the first inventor described his invention at an angel investor presentation where he didn’t know the identities of many in attendance–the documents that would show “derivation”–copying–are not going to be in the first inventor’s possession; they would be in the second party’s possession. You would have to find out who they talked to, e-mailed with, et cetera to trace it back to your original disclosure. But the bill doesn’t provide for any discovery in these “derivation proceedings,” so the first inventor can’t prove their claim”
    Feinstein also dismissed the arguments for a change in the system, noting that there are only 50 proceedings a year at the United States Patent and Trademark Office that dispute who created a new invention first.
    That is a minuscule number considering that there are about 480,000 patent applications a year.

  21. Dale-
    I also thought she did an excellent job of debunking the myth of FTF, and even did the math for us that interferences only occur in 1/100th of ONE Percent of all issued patents. Hardly a substantive enough *problem* by any stretch of the imagination to warrant changing well settled patent law and create who knows What kind of havoc in the future. All Senators Kyl and Leahy could seem to come up with to refute her points is that interferences are very expensive and time consuming when they occur, and quoting posts by an attorney that happened to appear to support their position. Lots of pomp, without the circumstance or any details. If you want to see expensive and time consuming, just wait until we get to see some derivation proceedings in action! And probably at least ten times as many of them…. Hopefully the Republicans in the House will make an example of patent reform and refuse to cooperate with the Senate during the conference to arrive at a compromise bill. One can only hope and keep trying toward that end. I made a very important connection with my Senator for future efforts at Senate patent reform though. Where is BD when I need a large jug of Kool Aid? I think I need some Bitter Almond right about now. (Large sigh)

    Stan~

  22. Where is BD when I need a large jug of Kool Aid?

    That’s not a real qustion, is it Stan?

    I am way way too busy in Senate chambers (making a mint).

  23. BD-
    Not really, but my initial batch is taking longer than I expected, because the Arsenic and Old Lace takes a very long time to dissolve. Who needs patents anyways? You should be able to buy a nice place down in Bermuda by the time this is all over, where your money will be nice and safe

  24. Stan-

    I feel your frustration, and we do not agree on FTF. Having said that, I do find it interesting that both sides are largely in agreement on the facts of FTF. Folks like you point to the fact that it doesn’t come up often, and folks like me also point to the same exact thing. You say why change if it hardly matters, I say why waste the resources and why not redirect if it doesn’t matter.

    Something of a breakthrough really. It is refreshing (if you ask me) to have a debate of substance on differing points of view rather than on the funny facts that both sides in DC typically base their arguments on.

    -Gene

  25. Gene-
    In case you didn’t happen to catch it, the Senator from Washington made a very good case for independents like myself, in vocal support of the Feinstein-Risch amendment, at hour 2:09 of this video record of the proceedings. http://www.c-spanvideo.org/program/SenateSession4685

    Like yourself, I think it is Very healthy to have debates like this, so that all sides can be considered, and hopefully the *right* thing will be done at the end of the legislative day. Of course the term *right* will need to be defined in some way, like the *disclosure* term included in the FTF proposal. I imagine they are going to go back and try to “fix” the FTF language later, after they pass the S. 23 bill? If they can’t get the language right out of the box, why would I expect them to change it later? The courts will be confused because they haven’t defined what they mean by disclosure. The really sad part is that the Coburn amendment to end fee diversion will be lost unless this legislation passes, but you have to weigh the consequences as far as I am concerned. Personally I would like to see a stand-alone bill to end fee diversion, and let David Kappos get along with the excellent job he has been doing with team Kappos to try to fix what is broken at the USPTO.

    Stan~

  26. Stan-

    I hear you. To my surprise, however, it seems that S. 23 is getting better. All (or at least some) of the damages provisions have been removed (need to further research), but that should mean there will not be minimizing of damages in the case of infringement, which is a huge issue for pharma, biotech and for independent inventors and start-ups who rely on one, or a few, patents only.

    I did hear Senator Murray. I disagree. I am 110% convinced that first to file is going to be a great thing for independent inventors. No more misconceptions about what first to invent mean, incentive to file earlier, etc. I plan on writing an article soon again explaining why FTF will benefit independent inventors and how they can take advantage of it in a way that corporations never will.

    -Gene

  27. Gene,

    Are you in favor of “harmonizing” our constitution with that of Red China (where harmonizing means we crawl on hands and knees to copy their system rather than the other way around of course)?

    Heck. If there is such urgency to “harmonize” our patent laws to match theirs, then surely we need to consider harmonizing all our laws to match theirs. It’s all for the same reason. Americans get “confused” you see. It’s a global economy, a global world order and we need to get with the program across all realms of our legal system so that Americans can have one system is good for all places way of dealing with the global economy. Otherwise they get “confused” and that “stifles” innovation. (Senator Leahy’s conclusion, not mine.)

  28. Gene-
    Actually you heard my junior Senator Maria Cantwell. Patty Murray hasn’t taken a stand so far, but I hope Maria can convince Patty to reject the whole bill some time next week. Last I heard, the gavel will go down at 2 PM Eastern when the Senate reconvenes, and I would suppose that the rabid proponents will be all over it at that time. Time and knowledge is Not their friend, so they will try to stuff it through the process as quickly as they possibly can, unless I am missing something here.

    Please prove me wrong.

    Stan~

  29. step-

    Take a deep breath!

    Once finished taking a deep breath please point to where I have said we should harmonize our patent laws? What you will find is me saying that we should harmonize what makes sense and keep doing things the way we do it where we do it better. I have not argued FTF based on harmonization, so I really have no idea what you might be referring to.

    As far as harmonizing our constitution with the “Red China,” you know the rules. Keep it real. No hysteria or demagoguing’ allowed.

    -Gene

  30. No hysteria or demagoguing’ allowed.

    Well, that will put a damper on Kool Aid sales…

  31. BD-
    No worries mate, as patent reform will be coming up in the House of Representatives fairly soon, unless I miss my guess, which seems to have about 256 possible customers these days. Whole different market though, which might need a sorta different look. If they were kept close to the check-out counter though, it might be possible to sell a few here and there.

  32. Keep it real. No hysteria or demagoguery’ allowed.

    Gene,

    If we are going to truly keep it real, let’s start talking about how real inventing happens instead of drinking another round of Kool Aid in celebration of the flash of genius Eureka moment that some ivory tower professor dreamed up or cheering the instant of “crystallization” of concept microsecond that some panel of black robed legal scholars imaginated for themselves.

    Real inventing is hard hard and slow sweat and tears work.

    There is no DIY kit with a set of blueprints inside the box and a guarantee of success boldly printed on the outside (where the usual legal disclaimers are of course provided in finer print).

    The true inventor never knows for sure when he and his team are “done” and now is the moment to rush to the Patent Office to file because the bird is finally cooked to perfection.

    That is the beauty of the grace period afforded under the First-to-Invent and Perfect system that we have had for 200+ years.

    Thomas Edison didn’t have to rush to the Patent Office with his first filament that didn’t burn up in less than 3 minutes. No. He had the luxury of testing another formulation and then another and another.

    He knew that even if he had tested yesterday what was going to turn out to be the best that he was ever going to find over the upcoming 6-9 months (but he doesn’t know that now because he has not yet tested other options for the upcoming 6-9 months) that he could still reach back within the diligent period of perfecting and testing and pull out the best of the results that he has had over the past say year or two because that is part of what the First-to-Invent and Perfect Protection system is all about. It encourages the inventor to keep trying to perfect, to outdo even himself one step better before jogging over to the Patent Office (or more realistically to his patent attorney’s office).

    In the real world, there are few things that can be kept true secrets. (Yeah we all know about NDAs). But if you’re going to have a machine shop build you a prototype and you’re going to show that prototype around to potential investors or even talk about it in front of the VCs, it sure is a comfort to know that you have one year of grace time in the USA to keep perfecting and improving as well as the First-to-Invent and Perfect Protection system covering your back.

    The end result is that it is the public who benefits.
    The inventor was not rushed into prematurely racing to the steps of the Patent Office and Rocky Balboa-ing his way to the top just ahead of some imagined other racer. He (or she) had a soft cushion of extra time to work with and to keep trying to diligently perfect the invention even more because he/she knew the witnessed inventor’s lab book and the First-to-Invent and Perfect system (which has worked for us for the last 200+ years) was there to protect his/her rights.

    Strip away the First-to-Invent and Perfect Protection system and you strip away one of the last pieces of defense that the inventor has in this uncertain world.

    That’s just plain wrong.
    It’s indefensible.
    It is the very demagoguery that you decry.

    But hey, why should we let “reality” interfere with our Kool-Aid assisted vision of that far far better, first to file system that some anti-inventor folk so cherish?

  33. It is a bit shocking how I am in agreement with Step (yet again).

    I will highlight one additional item that the good Senator from Vermont seems to not recognize: We are having record number of application filings in the USPTO. Let’s think about that for a second. Let’s think about the fact that from the applicant’s side, we have record input, record number of applications in the system. The classic “I Love Lucy” episode featuring the conveyor belt is aptly remembered – the Office is stuffing these applications into any available space – initail and secondary (or more) response backlog, RCE backlog, Appeal backlog, record numbers of both allowances and rejections. And somehow the problem is because the current system confuses the applicant?

    Really?

    From the standpoint of “promoting,” this record amount of input is exactly what the Office should want – not only is not broken, As Senator Feinstein remarks, it is working. I am very suspicious of any reform effort that indicates a target on the applicant.

    Yes, I do realize that this is rather a “no duh” type of item, but the nuance here to be appreciated is that the focus should not be on the applicants. Somehow, this fix is supposed to help applicants because they “get “confused” and that “stifles” innovation“. The focus should be on the examination process itself. “Reform” for the sake of itself simply is bad lawmaking. “Reform” that announces a target off-kilter is downright dangerous. The rationale for just how this reform is supposed to aid the applicant and make the applicant less confused is disingenuous given just how confusing this package is.

    There is a very real (yes, even after the defeat in Tafas) mindset that the solution to the overabundance of filing should be to stem the flow of that filing. This is exactly the subtle mindset that must be pushed into the light and resoundingly defeated. As far as the good Senator from Vermont indicates a problem with the applicants, his eye is off the mark, and his proposals suspect.

    I urge the Senators that read this forum (and we know they, or at least their staffers do) to take a Step Back (again quite shocking how apt even the moniker is) and think about the actual implications of the changes – as a total group – will affect the targeted goals, and how lacking the proposals are for actually addressing those areas that most need addressing.

  34. BD and Step-

    Truly astonishing that three of us actually agree on something like this, which perhaps suggests that we might be getting close to the heart of the matter, instead of just nit-picking around the edges to create gotcha moments, for instance. One thing that really rang true for me in Senator Cantwell’s speech on the floor, went something like this: “All the small inventor has is their intellectual property and a fair day in court.” Almost by definition we don’t have any money to counter external challenges to the validity of our patents, so we need to get them right the first time, which requires a LOT of perspiration and sacrifice, as in a Very expensive hobby until we might be able to profit some day in the future. In my case I would have had to file about 6 or 8 PPA’s to no avail, since a later concept blew them all into the weeds, which later concept I would never have gotten to with a FTF system. Talk about being confused, for Senator Leahy to suggest that I can just spend only $110 on Provisional applications is amazingly clueless, and incredibly ill-informed. The specification in a PPA needs to be nearly the same as a formal application, or it will be pretty much useless if ever needed to establish a priority date for the *invention*, which requires the services of a skilled patent attorney or agent. For all but the simplest *Pet Rock* inventions, this will easily cost at Least $3K to have anything of value, so I would have conceivably spent more than $20,000 to discover that they were all impractical in comparison to my latest version. Sort of a moot point though, because I couldn’t afford to do that at the time, so I would never have gotten to where I am now.

    Edison is a good example, because he tried literally hundreds of materials before he discovered that Tungsten would work, but he was lucky because inventing WAS his day job, and he had lots of assistants to help him and a budget to cover IP expenses. Interestingly enough, I saw a show on PBS many years ago that showed an original Edison light bulb that used charred bamboo (carbon) filaments arranged in four leaf clover fashion that still worked over a 100 years later, in an old mansion down in Atlanta, GA, if memory serves. Maybe he chose wrong in the invention lottery of decisions? The way the pending legislation seems to be written, it sounds like I won’t be able to test any further where the public can see protos, because even if I hide the mechanism, it will seem to be considered *disclosure* here in the US, but not in the rest of the World?! The grace period portion of S. 23 seems to be a little inscrutable so far, according to a very well informed attorney that I know that said that the language of the bill was “Incredibly Opaque” Presumably they are going to try to *fix* the language so that is at least comprehensible and maybe even legal before they try Jam it through for a vote, probably on Monday morning, unless I miss my guess.

    Cheers,
    Stan~

  35. Correction-

    The Senate is scheduled to re-convene at 2 PM Eastern, if I recall it correctly.

    Stan~

  36. Stan & BD,

    The following link is an ironic one

    I was trying to find out who is urging Leahy to keep putting out all this disingenuous material.
    So far no luck. We can only guess at which coalitions for fairness are pulling Leahy’s puppet strings.

    One would have to assume that there are certain foreign interests who would love to kill Ameriica’s 200+ year old patent system and who know we have the best government money can buy.

    So the following speech by Leahy has to be the height of irony (and hypocrisy):
    http://leahy.senate.gov/press/press_releases/release/?id=6637ffa4-f2ee-45ae-9da6-8e57393e8809

  37. Stan,

    I’m going to tell you a little secret.

    A couple of years ago I decided to see for myself what it is like to be a solo inventor.

    For years I had been talking to all sorts of inventors (including solo ones) from my lawyer’s side of the table and often I would hear how hard it is for the solos to fund not only the patent prosecution costs but all the other costs of invention development: prototyping, marketing, etc.

    I didn’t understand because it was all a very distant vicarious experience. I thought it was mostly crocodile tears being used to try to get me to cut my bills.

    As far as I could see, inventors who worked for wealthy corporations never complained.

    But then again, the latter never had a clue as to what a patent application costs to prepare and prosecute (especially if done around the world). They had no worries about financing all parts of invention development and marketing the idea and scaling to mass production. They had giant professional departments at their backs to handle all that “trivial” stuff while they focused on the pure “inventing” part.

    Well, when I finally got into the game myself I was in for a rude awakening.

    You wonder if Senator Leahy and his ilk are clueless about the solo inventing business.
    Of course they are.
    It’s all just pretty talk for them.
    They can blissfully throw out that “innovation” word to the left and right. They can talk about “Yankee Ingenuity” and “American Exceptionalism” and how “we” are going to out-compete the rest of the world and have flying George Jetson cars whizzing around by tomorrow morning because “we” are the greatest thing to grace the planet since sliced bread.

    They also have all those pretty boy ideas about “free markets” and the entrepreneurial spirit and all that other jazz.

    Not only do they not have a clue about what the solo inventor’s world is like; they do not want to ever have a clue. That is why they never let any solo’s testify in front of the Congressional “fact finding” hearings. There are some facts that might inconveniently get in the way of their ideologies and the ideologies of them that brung ‘em to the party.

    Cheers.

  38. I don’t know if any of you IPwatchDoggers out there saw a copy of an old old letter (Nov. 2009) from Leahy to the NY Times (hat tip to Patent Docs of 2009):

    http://www.nytimes.com/2009/11/28/opinion/l28patent.html?_r=3&ref=todayspaper

    Read some of the comments from readers.
    Yeah, “now more than ever”.

  39. Stan,

    Double hat tip to you for putting up the good fight over at Pat Doc’s:

    http://www.patentdocs.org/2011/03/senator-feinstein-opposes-the-first-to-file-provisions-of-s-23.html?cid=6a00d83451ca1469e20147e2ffddb4970b#comment-6a00d83451ca1469e20147e2ffddb4970b

  40. To all,
    I’ve gotten a little further in my search for them that back S.23 and how much they have contributed to the politicians. Don’t know how legit this web site is:

    http://maplight.org/us-congress/bill/112-s-23/888797/total-contributions

  41. Step writes in small part:

    “I’m going to tell you a little secret.

    A couple of years ago I decided to see for myself what it is like to be a solo inventor.

    For years I had been talking to all sorts of inventors (including solo ones) from my lawyer’s side of the table and often I would hear how hard it is for the solos to fund not only the patent prosecution costs but all the other costs of invention development: prototyping, marketing, etc.

    I didn’t understand because it was all a very distant vicarious experience. I thought it was mostly crocodile tears being used to try to get me to cut my bills.”

    Step-

    Sorta looks a bit different from the other side of the desk, doesn’t it? I have had a few practitioners tell me that publication at 18 months would be a Good thing, but it didn’t convince me from My side of the desk, when I happened to know that it will probably take about 3 years to Maybe acquire a patent. About 6 months ago, I was trying to do a patent search, but apparently the PTO search function was maxed out, and it turns out that they were allowing bulk downloads of patents and publications that the poor IT system just couldn’t handle. A very experienced patent agent friend of mine figured that there were hundreds of folks overseas downloading large blocks of information for *research* purposes I would suppose.

    The solution is really pretty simple really, as in Not allowing Congress to steal all of our filing and maintenance fees, so that the patent office is able to do their job properly. Personally I would really like to see Congress also Give Back the $800 million that they have *borrowed* from the PTO in the last 8 years or so. Including interest. Not sure exactly why they seem to be so interested in lowering the value of US patents, but I have a few ideas in that regard. Surely You could use a brand new house down in the Caribbean somewhere?

    Stan~

  42. Step-
    Thanks for the maplight link, which looks like it might be real. Why would anyone want to make stuff like this up? Apparently Maria was offered over a million, but she just walked away from it. I will have to continue to work on my senior Senator Murray, but she happens to be very busy right about now. Probably hopeless at this late date, but perhaps Maria will have a chance to talk to her before the Senate votes on the S. 23 bill.

    Cheers,
    Stan~

  43. Sorta looks a bit different from the other side of the desk, doesn’t it?

    Until one has personally been there, it simply doesn’t register.

    However, with that said, patent attorneys and agents have to make a living also. We don’t produce a mass reproducible product. It’s a one-of-a-kind custom thing. And when our 8 hours of the day are spent, they are gone forever. So we sort of have to bill every nickel and dime of the day because that’s all there is. It never comes back for a re-do.

    The one huge advantage I had when trying to roll an invention of my own is that I didn’t have to pay some super-expensive patent lawyer for the application. There was no way I could have have afforded that out of my own pocket. Honestly, I don’t know how some solo inventors manage to do even that, let alone performing all other tasks that get done by large teams at big companies: marketing, fund raising, prototyping, etc.

  44. I have noticed that the caliber of input is impacted by the presence of “real world” experience.

    There are a variety of shades of ivory in the “Ivory Tower” syndrome: political as well as academic. The blindness caused by trying to apply a singular lens view of dogma is mighty thirsty work in all these shades.

  45. Has anyone re-looked at the Manager’s amendment and the bankers? Reminds me of Sen. Sessions amendment the other year. Thanks.

  46. Gene –

    Sorry, you’ve got your facts wrong again. The damages provision that was in the Senate bill was the “gatekeeper” compromise. By removing that “gatekeeper” language, the Manager’s Amendment opens up the possibility that the House will put the objectionable damages language back in.

    It’s really crucial to look at the data and statutory language, not shoot from the hip. Like damages, grace period, …

    David

  47. David-

    You say: “opens up the possibility that the House will…”

    Doesn’t that by necessary implication also mean that the House might not? I’m not sure why you say I am shooting from the hip based on the possibility (in your own words) that the House will do something. What seems far more likely to me is that the Manager’s Amendment was intended to create something more appealing to the House. Time will tell, but if anyone is shooting from the hip it seems you are by presuming you know what the House possibly will do.

    As for the grace period, everything I have written is accurate on the grace period. The next thing I will write on the topic is to observe that the swearing back with 131 affidavits is really of no consequence because it happens so rarely and even when it does happen the examiner has the ability to find better, older prior art, which is frequently what happens. On top of that, you still need the same evidence to ethically file a 131 affidavit that you would need to prevail in an interferences.

    -Gene

  48. You shot from the hip by mischaracterizing the damages provision of the Manager’s Amendment.

    The topic you describe on grace period is, as you note, essentially irrelevant. The big effect of the grace period is on pre-filing behavior and costs.

  49. Feinstein herself expected her amendment to fail. Considering how few inventors would likely appreciably benefit from retention of first-to-invent, it seems to be a reasonable enough compromise. Especially persuasive is the manager’s amendment provision ending fee diversion. If this passes, the USPTO will have little excuse for not getting itself back on track.
    http://www.aminn.org/patent-reform-act-2011-s23

  50. They just concluded a cloture vote to end debate on S. 23 and it passed handily by a vote of 87-3. I hate to say it, but it looks like it might pass. Most likely in the next day or two according to my Senator Cantwell’s IP staffer. To David and Gene’s remarks about what might happen in the House, I think it will be very difficult to say what might happen there. I watched them pass the 2007 H.R. 1908 bill, in like about 40 minutes, where they jammed in 5 amendments at the last minute, wouldn’t allow any real debate, and then voted and passed it. Fortunately the S. 1145 bill of that year died in the Senate, as it was much more draconian than this bill, so I was really upset that the House could pull a fast one like that and get away with it when they thought nobody was looking I suppose. I hope the partisanship issues between the House and Senate will cause a log jam, so to speak, so that they have to start over again next year. I am still not convinced this is anywhere near a good bill.

    Stan~

  51. BTW-
    Senator Reid mentioned the 145 and a152 amendments that he had added, that sounded like they were about eliminating or reducing patent application fees for academic institutions.

    Stan~

  52. Stan,

    My hopes are same as yours, namely that the Republican majority in the House will see S.23 as a Democrat spawned demon and kill it just based on general principles of bipartisan bickering.

    But then again, with its membership of almost 500 faceless congress critters, the House can just as easily sweep this bill into being at half a second before midnight without giving it second thought or reasoning because it is so easy to hide from blame and shame when you are just one of a crowd of 500 shrouded figures.

    It can go either way.

    It will now be up to Phylis Schafly and her right wing anti-HARMonizers to stop this new world order bill from making it through into law.

    Politics oft makes strange bed fellows.

  53. Step-

    What really makes me nervous about the House especially is that inventors only get one possible vote out of 500, instead of 2 chances out a hundred like in the Senate. Also I think I heard Senator Reid say that text would be finalized in about 30 hours. http://thomas.loc.gov/cgi-bin/bdquery/z?d112:s.00023: This version is dated March 3rd. There should be lots of pomp and circumstance in the House in the next little bit, so maybe we can stall for time! Time and knowledge is not their friend.

    Stan~

  54. Oops! sorry the LOC link to the bill didn’t work for some reason.

  55. Hey guys, have you seen froggy the talking optimist yet?

    http://techdailydose.nationaljournal.com/2011/03/white-house-leahy-push-for-pat.php

    Turns out that “we” (the USA) have a secret resource.
    That’s right, “we” have the “greatest” inventors in the whole universe. And if we just de-stifle them by hitting them up with some post-grant review costs and additional costs fer actually getting their applications examined (a.k.a. “fast track” for them that gots the gue$$ what) then my goodness there will be a flood of new inventions and a cornucopia of new jobs unleashed.

    So boys and girls, just call up your congress critter and tell ‘em they gots to support the brand new and all improved patent deform (whoops, cough, cougn, I meant “reform”) act of 2011 ’cause its gots electrolytes in it. And never mind the small print in the bill. My mamma always used to say never sweat the small stuff.

    She also said stupid is as stupid does.

  56. The below link is a letter sent by an inventor to Senator Feinstein urging her to oppose S.23.

    The important part though is the image (slide) at the bottom of the letter (open the link)

    It shows how real world inventing happens as opposed Doc Brown hitting his head on the bathroom sink in Back to the Future and having a flashing vision of the flux capacitor:

    http://www.rearden.com/public/110301-Steve_Perlman_S.23_Letter_to_Senator_Feinstein.pdf

    The author basically argues one of the ideas I’ve been trying to push here, namely that F2F will mean that many low budget inventors will not be able to afford to participate in the inventing game anymore because they will no longer have the safety net of F2I-(and diligently reduce to practice).

    In Pearlman’s case his slide shows that it took him 5 years of R&D with many a dead end to finally perfect a visual effect now used in the movie industry. It’s an eye opening read.

  57. It’s an eye opening read.

    Not to those who refuse to open their eyes.

  58. Step-
    They also bring up a point in their letter that I came to during the 2007 reform efforts. If they pass a FTF protocal, it will directly conflict with the language used in the Consitution, so that in order to make FTF *legal*, they will have to try to pass a constitutional amendent. Good luck with that one! But I suppose they just think that it is just a pesky detail, but they leave themselves open to possibly numerous legal challenges. You would think that our *law-makers* would make sure what they are trying to do is actually legal.

    Stan~

  59. Patent reform is happening at 2:15 ET I think they just said, after they get done with their *party luches*. I guess they decided not to wait until they had released the language of the bill. Glad I happened to check, cause I would really like to see how they handle this one.

    Stan~

  60. It seems like today, March 8, 2011 will be a day that lives in Senate infamy.

    I was just watching the tired, old and outdated Senator Leahy submitting his demon baby for final vote by that august legislative body. He directly pointed to froggy’s talking points (see link above) as the prop for updating the tired, old and outdated patent laws of our nation, you know, the ones that have never ever been amended since way back in 1952.

    Our patent laws are dead. Long live the new king. Same as the old king. Secrecy and nondisclosure.

  61. I just went and looked up Leahy’s remarks that I had just missed by a few minutes. Somewhat ironic that he was mentioning the Constitutional mandate at almost exactly the same time that I was writing my #58 comment.

  62. Watching the Senate for a few hours brings a whole new meaning to the term “An act of Congress” Maybe they are stalling for time or something?

  63. After today, I think I will just go buy myself a bright red Stratocaster and become a wildly successful musician, instead of a very poor *inventor*. Some of the better jazz musicians earn upwards of 20K per year! Just think- YOU might be the first one to file! God help us all if they get this through the House and they actually agree on something like what the Senate is proposing. Lots of extra billable hours I suppose, which doesn’t seem especially fun from my side of the desk. One attorney I consulted for free wanted $380 per hour, or a very reasonable flat fee for an application. Only $5K for a search and the application, and filing fees and prosecution actions later.

    Stan~

  64. [...] Senator Dianne Feinstein had proposed an amendment to protect inventors’ rights of first use, but the Senate voted it down 87-13. [...]