Today's Date: September 18, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

PTO Announces Austerity Measures in Face of Financial Crisis


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
Blog | Twitter | Facebook | LinkedIn
Posted: April 22, 2011 @ 1:16 am
Tell A Friend!


Funding for Fiscal Year 2011 has been a thorny issue for quite a while now.  Congress did not pass a Fiscal Year 2011 budget in the Fall of 2010, as they are supposed to do.  It is widely believed Congress punted on this responsibility because of the 2010 elections and fear of the electoral response to budget negotiations in the election cycle.  That, however, lead to a series of Continuing Resolutions that funded the government on a limited basis. The last Continuing Resolution (or CR) ran out on April 8, 2011, with an 11th hour agreement, which was ultimately passed by Congress and signed into law by President Obama the following week.  When the dust had settled the United States Patent and Trademark Office did not fare well at all, with $100 million be diverted from the Patent Office.  That lead to the Office today announcing severe austerity measures because they don’t have the funds available to operate as a going concern.

Employees of the USPTO learned today about these unfortunate choices necessitated by Congress choosing to inadequately fund the Patent Office.

  1. All overtime is suspended until further notice.
  2. Hiring for new positions and backfills is frozen for rest of the year.
  3. Funding for employee training will be limited to only mandatory training for the rest of the year.
  4. The opening of the planned satellite office in Detroit is postponed indefinitely. Consideration of other satellite offices is also postponed indefinitely.
  5. Only limited funding will be available for mission-critical IT capital investments. No funds are available for the long needed IT update.
  6. The much anticipated and highly touted Track One expedited examination program will be postponed until further notice.
  7. All business unites will be required to reduce all non-compensation related expenses, including travel, conferences and contracts.
  8. Funding for contracting of Patent Cooperation Treaty (PCT) searches will be significantly reduced.

How the mighty have fallen.  Did you know that none other than Thomas Jefferson was the first patent examiner in the United States?  See Historic Press Releases.  Did you know that from 1841 to 1876 the Declaration of Independence was entrusted to the Patent Office and put on public display?  See Declaration of Independence A History.  Did you know that in 1865 President Abraham Lincoln’s second inaugural ball was held in the model room of the Patent Office?  See Inaugural Ball.  How is it possible that an Agency with such history is being underfunded?  It would be one thing if Congress were willfully ignoring the Patent Office, and frankly that would be better.  Congress is willfully taking money from the revenue generating Patent Office, which is nothing more than the imposition of a national innovation tax.

I am disgusted beyond words.  The United States Patent and Trademark Office is a user fee funded agency.  Not a single penny of taxpayer money goes to the USPTO!  To the contrary, since 1992 Congress has diverted approximately $1 billion of fees collected by the USPTO for purposes other than running the agency, which is why the Patent Office is an agency in decline. The diversion of these fees explains that fact that as of the end of March 2011 there are still over 708,000 patent applications that are awaiting first consideration by a patent examiner.  Rather than hiring and authorizing overtime for the most productive patent examiners the PTO has to throw up its hands and cease trying to make progress, treading water at best, but more likely drowning.  Pathetic!

March 2011 statistics demonstrate that the time to a First Office Action is on average 25.3 months, and when you factor in the filing of a Request for Continued Examination the average pendency of applications is 41.6 months.  What is an RCE?  It is what you file when you reach the end of an examination without having a patent capable of being issued.  If you don’t want to give up you pay a fee for additional consideration by the Patent Office.  I always tell my clients that they need to factor in the filing of one RCE.  This is because in the first review the patent examiner will touch the application 2 times, and it really takes about 3-4 touches from the examiner in order to negotiate allowable claims.  That means you need to file an RCE, and in cases that have an RCE filed the average pendency of an application is 63.3 months — that is over 5 years!

There is no great surprise why we are having a jobless recovery.  Innovation can lead us to greater job creation but most commercially relevant innovation stays stagnant on the shelfs of the Patent Office for an average of 5 years or more.  In many cases that is well past the useful life of the technology, making obtaining a patent largely an academic exercise.

Simply put, patents lead to investment, investment leads to job creation.  If we want job creation we simply cannot tolerate a Patent Office that has third-world IT systems and is so underfunded that it cannot actually do what it is supposed to do, which is examine patent applications and issue patents on deserving innovations.

- - - - - - - - - -

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

Tags: , , , , , , , , , , , ,
Posted in: Congress, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, US Economy, USPTO

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.

 

51 comments
Leave a comment »

  1. Just because the patent never issues, doesn’t mean the inventor won’t develop the technology. I imagine that “patent pending” is sufficient protection to bring the technology to market.

  2. Gene,

    I once suggested several years ago (probably around the time of the infernal claim-continuation rules) to the folks at AIPLA (of which I’ve been a member for about 30 years) that we should institute a moratorium on patent legislation so the USPTO could catch up and focus on the patent examination problems without the distraction of new procedures and new rules to worry about. I was told that suggestion was “politically” untenable. (I was also told by the AIPLA that my comment about the difficulty in verbally communicating with patent examiners for whom English is a second language would be viewed as “derogatory.”)

    With all the new procedure required by the oxymoronic America Invents Act, the USPTO would be strained dealing with these new procedures (especially the rulemaking required) if adequately funded. Now that our “friends” at Congress have effectively “defunded” the USPTO, the AIA represents yet another “unfunded” mandate from the “insane asylum for the helpless” (that’s what Mark Twain called Congress). There’s no way the USPTO can now implement effectively these new procedures effectively while being “defunded.” How I hate politics!

  3. I resonate with your anger and disgust. You raise a very good point in writing that innovation leads to job creation. So, for the government to be stifling innovation in a crippled economy is unthinkable! The question burning in my mind is what can we do about it? Write to our senators? Write to the patent office? What do you think about the Office raising their fees to cover the shortfall of revenue? I’m sure some companies would be willing to pay more. But what about the little guys? I don’t know…. Maybe have a sliding scale?

  4. Politicians.

    If talk is cheap, politician talk is the cheapest.

    Billions borrowed and thrown virtually every where for virtually everything, and they won’t let the Office keep the all the innovation money we’ve all paid in.

    They really just don’t get it.

  5. It is particularly aggravating when you consider that the USPTO has been engaged in the Ponzi-scheme sort of deficit spending as the social security system. The USPTO has been using new application filing fees to fund the examination of previously filed applications. The backlog of unexamined patent applications represents a huge, unfunded, accrued liability for the USPTO. To work down the backlog the USPTO must charge more for examination of new applications that the actual cost or there would be no way to fund the extra resources necessary to work down the backlog. But with congress siphoning off any “excess” the system is now structurally designed to maintain the backlog.

  6. Gene: Well said.

  7. Dan-

    Unfortunately you are incorrect. Today innovation that creates jobs is extremely expensive and that requires capital. You simply cannot get the millions of dollars you need without having issued patents.

    If you are talking about whether a single inventor can take a gadget to market without a patent that is another matter. Even then it isn’t easy and licensing extremely difficult without a patent. But that single inventor doing it themselves doesn’t create jobs. To create jobs with innovation you need a start-up business and at the beginning no businesses make money, which means relying on investors who just aren’t interested in technologies that aren’t already patented.

    You can search IPWatchdog for more on this topic. Hank Nothhaft has written a few articles here laying it out step by step, and I have written about the nuts and bolts of how patents are required to raise capital and create jobs.

    Via iPhone

    -Gene

  8. Right on, Gene.

    Re: “is nothing more than the imposition of a national innovation tax”

    Gene, that’s being too kind.

    It’s feasting on the very seeds that yield the future production.

    We need to plant the seeds … not consume them!

    And plant the seeds before they wither away.

  9. Maybe if we burned our bras in Dulaney Street, we’d get some media attention to this nasty mess.

  10. Gene,

    The one thing that should have been in “patent reform” (adequate funding for the USPTO) but isn’t. The austerity measures being taken by Kappos because Congress (as usual) neglects to allow the USPTO to keep what it has already taken in in user fees makes the America Invents Act a total sham.

    I can recall telling the AIPLA (I’ve been a member for around 30 years) several years ago (probably during the claim-continuation rules nightmare) that we need a “moratorium” on patent legislation to let the USPTO catch up and remedy the patent examination issues, especially the backlog situation. I was told that was “politically” untenable. I was also told that my comment about the difficulty in conversing with Examiners where English is their second language was considered “demeaning.” So much for trying to provide constructive criticism.

    The burden imposed by the oxymoronic America Invents Act in terms of new procedures (and additional rulemaking) would be daunting enough with an adequately funded USPTO. For Congress to once again effectively “defund” the USPTO of fees already received makes the America Invents Act irresponsible in the extreme. Yet another example of “unfunded” mandates from our “friends” in Congress.

  11. I can recall telling the AIPLA (I’ve been a member for around 30 years) several years ago (probably during the claim-continuation rules nightmare) that we need a “moratorium” on patent legislation to let the USPTO catch up and remedy the patent examination issues, especially the backlog situation. I was told that was “politically” untenable. I was also told that my comment about the difficulty in conversing with Examiners where English is their second language was considered “demeaning.” So much for trying to provide constructive criticism.

    The burden imposed by the oxymoronic America Invents Act in terms of new procedures (and additional rulemaking) would be daunting enough with an adequately funded USPTO. For Congress to once again effectively “defund” the USPTO of fees already received makes the America Invents Act irresponsible in the extreme. Yet another example of “unfunded” mandates from our “friends” in Congress.

  12. Their political strategy revealed:

    1) Allow the USPTO to continue withering away for years … so crisis builds.
    2) Stop any separate bills that would fix USPTO funding crisis.
    3) Force the funding fix into a bill loaded with special interest goodies.
    4) Enhance funding crisis as vote on legislative goodies approaches.

    Another example of: politicians destroying our country with their political games.

  13. Gene,

    What a mess. What is really needed for “patent law” reform is adequate funding for the USPTO. Guess what’s missing from the America Invents Act? As far as I’m concerned, the America Invents Act is a total sham.

    I can recall telling the AIPLA (I’ve been a member for around 30 years) several years ago (probably during the claim-continuation rules nightmare) that we need a “moratorium” on patent legislation to let the USPTO catch up and remedy the patent examination issues, especially the backlog situation. I was told that was “politically” untenable. I was also told that my comment about the difficulty in conversing with Examiners where English is their second language was considered “demeaning.” So much for trying to provide constructive criticism.

    The burden imposed by the oxymoronic America Invents Act in terms of new procedures (and additional rulemaking) would be daunting enough with an adequately funded USPTO. For Congress to once again effectively “defund” the USPTO of fees already received makes the America Invents Act irresponsible in the extreme. Yet another example of “unfunded” mandates from our “friends” in Congress.

  14. Gene

    What a travesty. The one item needed in the America Invents Act for real “patent reform” is adequate funding for the USPTO. Guess what isn’t in it? As far as I’m concerned, the America Invents Act is a complete sham.

    What we really need is a moratium on patent legislation. I can recall telling the AIPLA (I’ve been a member for around 30 years) several years ago (probably during the claim-continuation rules nightmare) that we need a moratorium on patent legislation to let the USPTO catch up and remedy the patent examination issues, especially the backlog situation. I was told that was “politically” untenable. So much for trying to provide constructive criticism.

    The burden imposed by the America Invents Act in terms of new procedures (and additional rulemaking) would be daunting enough with an adequately funded USPTO. For Congress to once again effectively “defund” the USPTO of fees already received makes the America Invents Act irresponsible in the extreme. Yet another example of “unfunded” mandates from our “friends” in Congress.

  15. How the mighty have fallen is right. Great take on it Gene.

  16. Gene, this is off-topic except that it matches so well with your graphic of the guy shaking his head inside his hands (apparently in disbelief)

    Given that, have you seen Judge Clevenger’s dissent today in the following CAFC case:
    http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1215.pdf
    (Creative v. Yahoo)?

    “Said” doesn’t mean “said” and “a” doesn’t mean “a”, what (the __)?

  17. “Said” doesn’t mean “said” and “a” doesn’t mean “a”, what (the __)?

    Step, Can you give me a pincite on that? Thanks.

    I must be a little slow today (as this is the second pincite I have requested).

  18. BD:
    no problem:

    CLEVENGER, Circuit Judge, dissenting-in-part.
    First, a few words about the claim in suit. Claim 45 is drawn to a computer program which contains logic con-figured to do things to an “end user communication mes-sage.” The “things” for which the logic is configured are: (a) receipt of “an” end user communication message from a first site; (b) insertion of a background reference to a stored advertisement in “said” end user communication message, with …

    Yahoo!’s argument is barred by our case law. We have made clear that the use of an indefinite article such as “a” or “an” carries the meaning of “one or more.” See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). The “one or more” construction is a bedrock rule of patent law, with very limited exceptions, none present in this case. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). We have also clarified that “[t]he subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning.” Id. Thus, the use of the term “said” does not require, or even imply, that each limitation must execute upon a single message when the claimed apparatus is used. Instead, “said end user communication message” merely references “one or more” end user communication messages. “Said” is an anaphoric phrase that merely refers back to the initial antecedent phrase. Baldwin Graphic, 512 F.3d at 1343 (“Because the initial phrase carries no definitive numeros-ity, the anaphoric phrases do not alter that meaning in the slightest.”). Yahoo!’s claim construction argument on the meaning of the term “said” fails under our precedent. Indeed, the district court carefully and precisely in-structed the jury as to what “an end user communication message” means in claim 45 under Baldwin Graphic: the second and third limitations can be performed on any set of data, not necessarily the set of data that is received in the first limitation.
    5 CREATIVE INTERNET v. YAHOO INC
    The majority wrongly accuses the district court of dereliction of duty for failing to instruct the jury that all three logical elements must operate on the same message. First, in the context of claim 45, Baldwin Graphic prohib-its such an instruction. And, indeed, the district court instructed the jury exactly to the contrary, namely that the claim does not require all three logical elements to operate on the same message. When the district court told the jury that “said end user communication message” merely refers back to “an end user communication mes-sage,” which means one or more end user communication messages, the jury and the parties knew that the three logical elements need not be performed on a single mes-sage.
    In addition to discounting Baldwin Graphic and erro-neously revising the district court’s claim construction, the majority fails to confront that claim 45 reads as an apparatus claim on its face. Instead, the majority repeat-edly treats the claim as a method claim with steps that must be performed for infringement.

  19. Step,

    Thanks.

    I have not fully analyzed the case, but on first blush I think you are over-reacting a bit.

    The “a” or “an” explanation is fairly basic law and I fail to see what issue you are making of it.

    I can see Judge Clevenger going off the rails a bit with the “said.” I agree with his statement of ““Said” is an anaphoric phrase that merely refers back to the initial antecedent phrase,” but this very reference back means the opposite of his “does not require, or even imply, that each limitation must execute upon a single message” as Clevenger would nullify the very reference established.

    These are just first impressions, mind you.

  20. I am over-reacting because a CAFC judge is insisting that “a” means “one or more”.
    If even a CAFC judge cannot understand that it is the word “comprising” that means “including at least this but could have more” and not the article “a”, then what chance does the world have of getting anything right in patent law?

    If we follow Judge Clevenger’s logic, the following claim would be open ended:

    1. A bicycle consisting of:
    “a” first wheel;
    “a” second wheel;
    “a” handle bar connected to said first wheel;
    etc.

    According to my reading of what Clevenger J. is saying (“We have made clear that the use of an indefinite article such as “a” or “an” carries the meaning of “one or more.”), the above hypothetical claim calls for: one or more first wheels, one or more second wheels, etc.

  21. Step,

    You are indeed over reacting, because Clevenger is correct. “A” does means “one or more”.

    You seriously are not debating this, are you?

    Please do not conflate with consisting/comprising. Of course in certain situations, other rules of claim construction may apply. This in no way detracts from the true statement that in law, “a” does means “one or more”.

  22. OK

    So when I come to your shop and ask what the price is of “a” cup of Kool Aid, the one price you quote is good for as many cups as I care to drink. Got it.

  23. OK

    Step, perhaps you would like “a” continuation. By law.

    May I suggest that you review the Taffas history.

    You might get a little warmer in your (global) views…

  24. As an inventor – and having limited knowledge of patent law – this pushes me away or out of relying on U.S. system to protect me. Risks of spending resources on a) getting patent protection, b) relying on it if/when I need it – seem to be getting larger. From what I’ve seen recently, Examiners 1st office action responses are so far away from what the invention is about that I worry that I’ll end up spending a couple responses + RCE or continuations just to get the Examiner to the point of understanding what the invention is really about and why it’s novel. Am I alone? …I don’t know. Now add this latest ‘austerity measures’ and I I fear the continued decay of the USPTO will result in the big companies even more easily find loopholes and avoid any protection I get.

    Should I diversify out of U.S. system? …but then I face anti-software patents even more. Are PCT any better?
    Or should I move more towards trade-secrets? …sure added hurdles – but I can fully control the software, and end up with more predictability than U.S. patent law

  25. Blind (in the land of the one-eyeds):

    Now I understand your rationale better.
    You believe we live on “a” planet.
    Therefore, after we finish overcooking this one of the “one or more”, we will simply move on to the next and then the next after that. Aha! (meaning= one or more ha ha’s counted up to the factorial thereof. ;-) )

  26. JB-

    I wouldn’t recommend you forgo US patent protection. If meaningfully broad claims can be obtained the protection obtained is definitely worthwhile.

    It is, however, unrealistic to believe that you will get a First Office Action allowance. You really need to be factoring in at least one RCE into your budget. Based on averages that also means you are looking on average at obtaining a patent in about 5 years. This is unacceptable and the PTO needs to do a better, quicker job. If only Congress would cooperate.

    -Gene

  27. Gene –

    Point taken – and I’ve already long ago filed and going through the prosecution (1st office action has recently happened).

    From my (limited) experience over 2 different applications, I have found that the 1st office action was very far off the mark from what the invention is about. From my viewpoint, it’s obvious that the Examiner either did not understand the material and/or did not spend much time looking at what my Claims were about. So our responses in both cases ended up more or less being holding the Examiner’s hand and showing why the prior art didn’t make sense (for example, in each prior art I found “teaches away from” examples). I know this area and before filing these I skimmed through 200+ pat apps and seriously studied about 30 of them (which in hindsight I didn’t have to learn all of those but I really didn’t know the system or all of the field).

    So because I feel the 1st office action response by USPTO was basically wasted (Examiners points were invalid) – I can already see that there is a quality problem. Given your posting about further cuts, I worry this will only make things worse.

  28. Step,

    I expect better of you.

    Yes, we live on “a” planet.

    However, there is a difference between “a” planet and “this” planet. There is one and only one “this” planet. So when you conflate the argument by stating “Therefore, after we finish overcooking this one“, you are falling to “a” very similar mistake wherein you conflated consisting/comprising.

    You are going to have to try harder my friend.

  29. JB-

    You say: “I have found that the 1st office action was very far off the mark from what the invention is about.”

    Absolutely correct, and this is a big reason why it is unrealistic to believe you can obtain a patent without an RCE, unless you are prepared to take very narrow claims and then circle back with a continuation for broader claims.

    It can help if you do an interview with the examiner prior to first office action that can really help. It brings the examiner up to speed.

    -Gene

  30. Gene,

    Not a universal tactic (I doubt that any tactic can be universal), but one that is worth considering as a possible patent strategy is to aim for very narrow claims in a lead application and supplement with a variety of breadth of claims in continuations.

    There are two benefits to this tactic – the first is obtaining a relatively quick and estoppel free patent. Very narrow claims are easier for an examiner to pass – especially with a well prepared interview. Any estoppel from a reiterative narrowing examination approach is avoided at the onset. Having a first patent also helps the business case, as the difference between “patent-pending” and “patented” can be appreciable on the financing front.

  31. It is a shame that the USPTO’s budget has been limited. Innovation is imperative for success in any company. Innovation leads to new assets, leading to new investors, resulting in job creation (obviously something that this country needs). Without sufficient funding the USPTO can’t be effective in helping companies capitalize on their most innovative ideas.

    David Kappos is continuously quoted saying that “we have to do more with less.” Clearly as of now there is no alternative option. Most companies are obviously being effected by this economic downturn. My company has just recently switched to a new software that helps manage our IP portfolio with a structure that enables continuous collaboration between our engineering teams. So far it has proved to be very beneficial through its collaboration process and continuous auditing system. It helps us do much more with less. The system is called VerifIP (www.verifip.com) Just trying to help others out, it has proved to be beneficial to us. I think its definitely worth a look.

  32. BD-

    I agree. I think that is the way to go, particularly in situations where a first patent is required ASAP. Unfortunately, ASAP can still lead to wait of 3 to 4 years even without filing an RCE.

    -Gene

  33. BD:

    For your reading and squealing pleasure:
    http://www.patenthawk.com/blog/2011/04/instant_squealing.html#more

  34. step,

    I stopped reading the patent hawk a long, long time ago. I see no reason to start back up.

  35. BD-:

    Sure sure. Keep your one blind eye closed to the truth.

    This one time the Hawk was writing about the same thing I was squealing about, namely, Clevenger J.’s strange dissertation regarding the meaning of “a” in a patent claim (in the Creative v. Yahoo case)

    I haven’t read the Hawk in a while and am surprised he turned commenting off.
    More than half the fun of “a” blog is in the commenting section thereof.

    If it wasn’t for us peanut gallery folk, why even Gene’s blog would get boring. ;-)

  36. Step,

    Ok, Force me to return to the patent hawk (one reason why I stopped was because he would blithely ignore comments calling out his own errors). He was “too good” for his own sake. If a blog moderator cannot stqand the heat of criticism, should I reallybe listening to him in the first place?

    Sure sure. Keep your one blind eye closed to the truth.

    Perchance you missed my comment above at 19: “I can see Judge Clevenger going off the rails a bit with the “said.” I agree with his statement of ““Said” is an anaphoric phrase that merely refers back to the initial antecedent phrase,” but this very reference back means the opposite of his “does not require, or even imply, that each limitation must execute upon a single message” as Clevenger would nullify the very reference established.

    Not sure how this establishes your (once again more cute than deserving based on substance) use of “one blind eye”. I seem to have nailed the critical portion of the discussion (and did not get wrapped up in the superfluous “an” discussion.

    I have warned you of adhering too closely to your moniker when your back is up to a cliff edge…

  37. Step, BD:

    “an end user communication message”

    Hate to say it, but in the context of network communications, to me this means one message. For one – if Creative meant multiple they should have said so.

  38. BD–

    I always try to keep the cliff’s edge in front of me

    (despite the spun and off balance cups of Kool Aid you toss my way) ;-)

    Have “a” nice day and keep “a”way from cliff edges.

  39. JB-

    “a message” implies one message to my way of thinking too.

    However, there are CAFC judges and One eyed-Dogma’s who see things otherwise.

  40. Unfortunately, due to budgetary pressures, it looks like the rumored Silicon Valley patent office (along with its imminent Detroit counterpart) will be delayed, along with other initiatives. What a shame.
    http://smallbusiness.aol.com/2010/05/10/how-to-file-a-patent/

  41. Step, BD:

    perhaps a naiive question – but the fact that Yahoo waited until CAFC to fight for “a message” being a single message is puzzling to me. Why wouldn’t they just play that card in an earlier battle? …seems a better argument than arguing either:
    1) “A computer program embodied on a computer-readable medium” is a method claim
    2) “end user communication message” be construed to mean “a written communication intended for an end user.”

    To me it seems like either Yahoo were clueless OR purposely waited (e.g. win the final battle to win the war). In other words, larger company drag out the legal costs to squash the little guy.

  42. JB:-

    No need to apologize.
    The law is a confusing and non-intuitive mistress.

    When we get up to the Court of *Appeals* for the Federal Circuit (CAFC) there are no new issues being brought up for the first time. Everything has been litigated below (in the lower, District Court proceedings) and Yahoo had indeed played this card in those lower proceedings. But the District Court judge went the other way.

    This was error in law (in claim construction) and the majority (2 out of 3 judges) at the CAFC so held. For some reason that I cannot understand (but Blind Dogma in his infinite one-eye blindness sees), Judge Clevenger wanted to rule that “a” (taken in per se form) means “one or more” and therefore “said message” did not necessarily mean “that” message. I’m still scratching my head as to what got into Clevenger’s head. Then again, he’s the judge, not me.

  43. Step,

    I deserve better from you.

    I have explained where Clevenger went off the rails – (hint, it was not in the leagl meaning of “a”) .

    Did not play so loosely with legal concepts when a novice is trying to understand.

    If you thought Gene was upset with Global Warming – wait until he sees you playing fast and loose with legal concepts. I enjoy our discussions too much to see you banned outright.

  44. Step:

    Given that much of it seemed to come down to claim construction of “a message” – if Creative had support in their patent document – could they still file a followup patent application (Continuation? CIP?) that had appropriate Claims that would protect them?

  45. JB:

    I don’t want to give out advice on the net –especially when I don’t know details of the case.

    In general, you have to have “co-pendency” of applications in the USA (see 35 USC 120) in order to file a continuation.

    Also, a broadening re-issue cannot be filed more than 2 years after the original issue date.

    From my limited understanding of the Creative v. Yahoo case, the issue was not one of the claims “protecting” Creative (or not) but rather that Yahoo said it did not infringe, it did not do what the claims required with regard to “the” message. Noninfringement does not mean invalidity.

  46. Gene,

    during the War of 1812, almost every U.S. Government building in D.C. was specifically targeted and burned by the British, including the old White House, Capitol, and the Library of Congress. One of the few government buildings the Brits intentionally passed over was the Patent Office. William Thorton, the 19th century equivalent of Director Kappos, was able to convince the British soldiers to spare the papers and models in the building.

    In the 19th century, the British burned down the U.S. government, but were wary of the pitfalls of stifling innovation in their former colonies! 200 years later, Congress is metaphorically watching the PTO burn down. How the mighty have fallen indeed!

    Also, I hope you have sent a signed copy of this to your elected representative.

    –Chris

  47. The Congress are coming!
    The Congress are coming!

    =Cry of the modern Paul Revere of IP rights.

  48. OT from the threaad comments – but on topic for the article: I have seen a letter discussing seemingly “abuses” of the reward system for examienrs and the curtailment of awards to not more than 1% of base (along with a two year salary freeze).

    In other words, even the most productive workers can expect at most a 1% over base pay.

    For a difficult job that has such a high drop out rate, how is the Office going to lure in new examiners with such austerity? As the Office failed miserably with its recent efforts to expand the corp(se), even with the non-austerity measures in place, has the Office now shot out both its own kneecaps?

  49. [...] million from the United States Patent and Trademark Office (see Patent reforms derailed), requiring severe austerity measures to be put into place in order for the Office to have any chance of making it through the remainder [...]

  50. [...] these two key “poison pills” together with the austerity measures adopted by the USPTO, necessitated by the Fiscal Year 2011 budget deal, and the Office informing patent examiners that [...]

  51. [...] opening of the USPTO satellite office planned for Detroit, Michigan was postponed when the USPTO announced severe austerity measures to keep the lights on and the agency functioning back in April of this year.  Current plans, which [...]