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First-to-File Guidelines: Did Congress Mean What they Said?


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: February 26, 2013 @ 5:17 pm
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Almost two weeks ago the United States Patent and Trademark Office issued two Federal Register Notices in anticipation of the U.S. converting from first-to-invent to a first-to-file regime. The first were the Changes to Implement First to File and the second was First to File Examination Guidelines. Both are important. The new regulations that make up 37 CFR are found in the former, but much of the meat and potatoes are found in the later. The Guidelines, which the USPTO says they are not obligated to follow, is where the Office spends most of the time comparing and contrasting old pre-AIA 102 with AIA 102. The Guidelines is also where the USPTO explains which cases they believe have been overruled (i.e., Hilmer and Metallizing Engineering) and which cases continue to have relevance. They also selectively cherry pick portions of the legislative history to back up their interpretations.

Frankly, we know that when the Supreme Court ultimately gets involved interpreting the AIA, which is a virtual certainty, the legislative history will play absolutely no role in interpreting the statute. This Supreme Court holds legislative history in near contempt. It is hard to argue with them on that point knowing how easy it is for something to be included into the legislative history. More interesting, however, will be whether the Federal Circuit will consider legislative history, or at least to what extent. But, as for now, the Patent Office is deferring to legislative history with respect to a number of items. On first glance nothing caught me as out of place particularly, and the Office has to rely on something given that Congress re-wrote the law and used different terminology for things that have had long-standing, well-known meanings.

Therefore, the question really has to be this: Did Congress mean what they said? Of course, that has multiple components: (1) Did Congress mean what they said in the actual text of the bill, which leaves a great many things open to interpretation; and (2) Did Congress mean what they said in the legislative history, which at times is some of the most clear writing you will ever read. The trouble, of course, is that they voted on the text, not the legislative history. Moreover, in one particular instance (relating to Metallizing Engineering) the USPTO relied on comments from Senator Leahy that only occurred after the Senate acted, which hardly seems reasonable to do give that the comment was after the fact and the exact type of remark that Justice Scalia and others seem to detest. How do we know that anyone other than one Senator believed that?  How do we even know that was what that Senator believed when he voted? What a mess!

In justifying reliance on Senator Leahy’s comments from after the Senate acted on the America Invents Act the USPTO explained: “The Office’s role, however, is not to determine whether Congress could have enacted a statute that is clearer and more forceful, but rather it is to determine the most likely meaning of the statute that Congress actually did enact.” Of all the things said in the Guidelines that is probably the statement I have most trouble swallowing. The role is to interpret the statute as written.

It is black letter law — law that is universally followed by even the Supreme Court — that you only go to the legislative history where there is ambiguity in the statute. If the language used is clear and has meaning then you never get to the legislative history. Sadly, the legislative history is extraordinarily clear. We know what Congress seemed to want to do time and time again. Unfortunately, the text is likewise clear and in places in direct contradiction with what is in the legislative history. I feel confident in predicting the Supreme Court won’t look to the legislative history at all, and I suspect the Federal Circuit won’t either. If what the Federal Circuit has done with respect to pre-KSR law is any guidance they are going to look to the first level principles and find that many, if not all, are applicable to AIA 102 except for those that are directly and unequivocally overruled, such as Hilmer.

This stuff is dense and different and on so many issues there is at least a significant minority view.  The best way to get prepare seems to be to read, listen and talk things through. Now form the “shameless commerce division,” I’ve been involved with the planning of 1 hour PLI Telephone Briefing on March 7, 2013, where John White will moderate a discussion between Steve Kunin (Oblon) and former Federal Circuit Chief Judge Paul Michel. The title of the PLI Briefing is: USPTO First-to-File Implementation Guidelines: What They Say and What They Mean. This is one that I am looking forward to attending myself. Steve will provide the detailed analysis of the new rules and Guidelines, Chief Judge Michel will react with what we can expect from the CAFC. I am anxious to hear what Judge Michel has to say about the USPTO relying so heavily on legislative history. For example, I am particularly interested in hearing what Chief Judge Michel suspects the CAFC approach will be to interpreting first-to-file. Should practitioners moving up through the PTAB to the CAFC or in litigation in the district courts be positioning themselves to make textual arguments primarily, or should they also be looking to the legislative history? I don’t know what Chief Judge Michel will say, but I do know the topic of legislative history and what to make of it is in the queue for discussion.

Of particular interest to me is also how the USPTO punted and did not take a position one way or another on whether there continues to be a public use exemption, saying:

Neither the AIA nor its legislative history expressly addresses whether the experimental use exception applies to a public use under AIA 35 U.S.C. 102(a)(1), or to a use that makes the invention available to the public under the residual clause of AIA 35 U.S.C. 102(a)(1). Because this doctrine arises infrequently before the Office, and is case-specific when it does arise, the Office will approach this issue when it arises on the facts presented.

Essentially, the USPTO seems to want to wait until the Federal Circuit decides the issue. But what does that mean for dealing with applications where a public use exception (if it remains) would defeat the prior art rejection? Will experimental public use remove a reference from a rejection? It would seem that if there is experimental public use then the invention would not be ready for patenting, but that comes from the Supreme Court’s interpretation of pre-AIA 102(b). Does that still have relevance? By not picking a lane with respect to the continued viability of the public use exception the USPTO has really muddied the waters.

Of course, the USPTO muddied the waters with respect to secret sales or secret use activity by picking a lane. The issue is whether Metallizing Engineering was overruled. On this particular issue the Office looked primarily to the legislative history and explained:

The starting point for construction of a statute is the language of the statute itself. A patent is precluded under AIA 35 U.S.C. 102(a)(1) if ‘‘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.’’ AIA 35 U.S.C. 102(a)(1) contains the additional residual clause ‘‘or otherwise available to the public.’’ Residual clauses such as ‘‘or otherwise’’ or ‘‘or other’’ are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the ‘‘or otherwise available to the public’’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.

The Office’s interpretation of AIA 35 U.S.C. 102(a)(1) also ensures that the AIA grace period can extend to all of the documents and activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat patentability. In addition, this interpretation avoids the very odd potential result that the applicant who had made his invention accessible to the public for up to a year before filing an application could still obtain a patent, but the inventor who merely used his invention in secret one day before he filed an application could not obtain a patent. Finally, the Office’s interpretation is consistent with the interpretation that was clearly expressed by the bicameral sponsors of the AIA during the congressional deliberations on the measure.

With respect to suggestions concerning what information concerning patentability must be disclosed to the Office (secret commercial sale or use), 37 CFR 1.56 provides that applicants have a duty to disclose all information known to be material to patentability as defined in 37 CFR 1.56, and there is no reason to treat public or non-public commercial sale or use or activity differently from other information.

With respect to comments that Metallizing Engineering and other forfeiture doctrines should be preserved because they serve important public policies, the Office notes that the choice of which public policies to pursue through the definition of prior art is made by Congress, not by the Office. Also, some of the purposes ascribed to these doctrines in case law appear to be ill-suited to or inconsistent with the AIA. The problem of delayed filing of applications is unique to pre-AIA 35 U.S.C. 102, under which an applicant can rely on a secret invention date in order to establish a priority date.

Time and time again the Guidelines respond to comments from stakeholders who criticized one approach or interpretation. Time and time again the Guidelines point out that it was Congress who did this. Most pointedly the USPTO explained this to those who said we ought not switch to first-to-file. I feel the USPTO pain, at least to some extent. The USPTO did advocate for the switch, so they are not blameless, but that ship has sailed and the USPTO has no choice in the matter.  The law is the law regardless of how ill-conceived it is as a total package.

With respect to the legislative history associated with Metallizing Engineering, the USPTO quoted a variety of places in the legislative history where it does seem quite clear that at least those doing the writing/speaking thought Metallizing Engineering was being overruled. See footnote 8 of the First to File Guidelines. But resting this on a residual clause? Sure, at least some in the House and some in the Senate believe that “or otherwise available to the public” overrules Metallizing Engineering, but one has to get to the legislative history first.

And here I am at the end of the article and I’ve largely only discussed whether reliance on legislative history is misplaced, whether Metallizing Engineering is actually overruled and my discontent with the fact that the USPTO punted on the public use exception. There are more questions than answers it seems, and what that suggests to me is that patent attorneys and patent agents had better give conservative advice to clients. Since the statute is not explicit on overruling Metallizing Engineering how can you tell clients you are 100% sure it has been overruled? Can you suggest that there is still a public use exception with the USPTO punt on the issue, even though it would seem to make sense given the Supreme Court “ready for patenting” requirement? I think the best advice is simply this — assume the law is “no patent for you” unless you file first!

There is much more to write, so stay tuned. In the meantime, I will be present at the PLI First-to-File Briefing, and I’ll also be presenting at the PLI Patent Law Institute in San Francisco on March 18-19. My guess is that the buzz will all be first-to-file.

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Posted in: America Invents Act, Congress, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, 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.

 

 


36 comments
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  1. Someone pointed out a very simple and very direct indicator that Metallizing Engineering has in fact been overruled:

    Title of 35 US 102 pre-AIA:
    Conditions for patentability; novelty and loss of right to patent

    Title of 35 US 102 post-AIA:
    Sec. 102. Conditions for patentability; novelty

    “The loss of right to patent” has been removed literally.

  2. I would also be amiss if I did not point out that the “offending” section of the Leahy congressional record was actually in place prior to the votes in the House and the final vote in the Senate.

    While it was not there for the first Senate vote is a fact, it turns into a meaningless fact when the full record is considered.

    I would also be amiss if I did not point out that the respected retired Chief Judge Michel is serving on a similar panel to the one mentioned by Gene a few days earlier at the Sughrue Symposium in Akron, Ohio.

  3. I do not understand the PTO logic that Metallizing Engineering and its adoption by the Fed. Cir. was overruled? First, the Metallizing Engineering doctrine is not a statutory bar, it is merely a purely personal and equitable “forfeture,” against getting a belated patent in addition to a long period of trade secrecy protection that is applicable only to the entity that has been commercially using a secret process for more than the statutory time period to make and sell products which do not contain or disclose the invention. It has never been an actual bar or prior art to anyone else.
    It is simply not necessary for the PTO to to say that this doctrine is overuled in order to to hold that AIA 102 has eliminated secret “on-sale” or “use” activities as a bar or prior art. In particular, I do not understand the PTO argument that: “this interpretation avoids the very odd potential result that the applicant who had made his invention accessible to the public for up to a year before filing an application could still obtain a patent, but the inventor who merely used his invention in secret one day before he filed an application could not obtain a patent.” ?? Even under the exisitng 102, just as the AIA 102 a “use” expressly has to be a “public use” to be a bar or prior art.

  4. P.S. The AIA removal of the [words “and loss of right to patent” from the TITLE of AIA 102 may well have simply been another example of AIA removal of words considered mere surplusage by the drafters, as occured in some other provisions. Alternatively, this removal seems far more logically due to the AIA removal from 102 of 102(g), which is the basis for interfernces by which one can have a “loss of right to patent.” by the PTO in interence litigation, which is not a “condition of patentability” in the quite same sense as the other listed provisons of 102.

  5. Paul,

    I find your response both under and over-inclusive, you are straining too hard to attempt to shoehorn something that is a “want to be maintained in law” in what was directly, repeatedly and forcibly stated to be an overhaul of 102.

    I find none of your logic compelling.

    Sorry.

  6. I agree with Paul Morgan’s statement above. One can pick and choose arbitrarily the meaning of new text or omitted text in the statute. For example, the PTO does so in the Guidelines:

    ”Residual clauses such as ‘‘or otherwise’’ or ‘‘or other’’ are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the ‘‘or otherwise available to the public’’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.” (My emphasis).

    Here, the PTO repeats the same error as the legislation’s sponsors in their Senate colloquy – using the false notion of “prior-art” for the existing abandonment/forfeiture bars of “public use” and “on sale.” In so doing, the PTO ignores the fact that there are four elements in Section 102(a)(1) and arbitrarily decides to interpret the residual clause as modifying only the last two elements – “public use” and “on sale.” However, it could be similarly interpreted as modifying only one of these two elements, or rather the other preceding elements such as “patented” or “described in a printed publication.” Construction based on arbitrary choices for modifiers are seldom persuasive. The fact that there is settled law as to the precise meaning of “patented” or “described in a printed publication” is unavailing because there is also settled law for the precise meaning of the terms “public use” and “on sale.” PTO’s pure textual analysis simply fails because it cannot single out any particular term as subject to the “modifier.”

    The PTO’s interpretation also ignores the fact that if Congress meant to repeal the current abandonment and forfeiture law (and yes, Paul Morgan is absolutely correct – these have nothing to do with prior art), it could have done so by simply omitting the terms “public use” and “on sale” altogether and writing Section 102(a)(1) as follows: “the claimed invention was patented, described in a printed publication, or otherwise disclosed to the public before the effective filing date of the claimed invention.” That is the precise construction the PTO now gives Section 102(a)(1), and the very text that appeared in the Managers’ Amendment to HR 1249 offered in the House Judiciary Committee on April 12, 2011. But this clarifying amendment was later rejected with no explanation. Clearly, the bill’s proponents knew that this clarity would foreclose on multiple interpretations preferred by various stakeholders and may reduce the likelihood of passage, perhaps due to fundamental disclosure policies or Constitutional questions discussed below. As I said before, Section 102 ambiguities in the AIA are not “bugs” – they are “features.”

    Finally, the PTO also appears to ignore another important statutory construction canon: if a certain desired construction appears unconstitutional, the Supreme Court has explained that “every reasonable construction must be resorted to, in order to save a statute from unconstitutionality.” Hooper v. California, 155 U. S. 648, 657 (1895). Interpreting the terms “public use” and “on sale” in the AIA differently than their plain-text meaning but as repealing current abandonment and forfeiture law, may present a Constitutional infirmity problem for that interpretation. This is because repealing Pennock, Kendall , and Metallizing Engineering may violate the “progress” and/or the “limited time” clause of the Constitution.

    Note that the Constitutional term “securing for limited times to … inventors” is not confined to a particular instrument (such as a patent) for “securing” an exclusivity period. Congress can “secure” the exclusive period by several means and effects. The issue would therefore turn on the question of what the Constitution means by Congress’ power to “secure”. Consider the following question under PTO’s interpretation: did not Congress “secure” and protect an exclusive right for “unlimited times” to inventors by sanctioning in Section 102 of the AIA the type of secret exclusive commercial exploitation of inventions that inventors may engage indefinitely, while further being “secured” with the opportunity to continue the exclusive use in public under patent protection for another 20 years? The “exclusive” period should not be read as merely the patent term, and as such it is not “limited.” This issue and the violation of the “progress” element are explained in my Engage article at http://bitly.com/Absolute-Novelty.

  7. I believe my views are better based on Occam’s razor – but I am willing to investigate Ron’s article.

    At the same time, one premise that I would ask of him is to read the Golan v Holder case – it is clear that what Ron consider’s “unconstitutional” will be badly shaken by the logic used by the Justices in that case (keeping in miind that the “copyright clause” is the exact same clause as the “patent clause.”

  8. I would also add that I belive that many incredibly intelligent people have made a fundamental claw in calculating the term of protection by conflating two very different areas of law (trade secret and patents). It is a huge legal error to simply assume – as most do – that the protections are either (or all of the reasons) based in the same legal concepts or based on the same ares of constitutional law, and can be readily mixed and matched without care.

    The major problem (and one that should be self evident) is that trade secret can (theoretically) last forever, and such simply does not compute in the constitutional nature of limited times that the patent arena engenders.

    Also, one should realize that the paten bargain is still achieved even when secret (and long held items) are finally brought into the patent sphere. Quite literally, “new to you” is still new in the patent sense. Quid pro quo is in essence NO DIFFERENT for the it’s new to you cases.

  9. Very eloquently said Ron. It will take me a few days to really absorb what you have written. I would submit though, that the whole First Inventor To File move is in fact not supported by the US Constitution. It is very unlikely that it will be arrested in that accord though, as you of all folks will most likely appreciate.

    The US Constitution speaks about Inventors, and NOT about the First Inventors to File. The whole concept of FITF is therefore not legal here in the US. It violates the Constitution in several different manners.

    Be that as it may, it will be the law until it gets reasonably moderated, in spite of the desires of a very few Senators and Representatives. The good part is that our founders had the wisdom to prevent this sort of fiasco, by allowing the judicial system to be able to over-rule Congress in some senses.

  10. I have the utmost respect for Ron Katznelson as a supporter and advocate of the patent community, and his article is indeed written eloquently.

    However eloquent though, there are fundamental flaws throughout the foundation of his arguments that doom his position. Both of the pillars of “exclusive rights” and “limited times” suffer from fallacies, that although repeated by some great men, are still no less fallacies.

    The true meaning of Pennock – as magnified in Golan – is that it is up to Congress to set the rules of the game. Quite simply, it is an improper overreading to say the Constitution itself mandates a forfeiture rule when you conflate two very different spheres of activity (prior to joining the patent game is quite simply separate from and cannot be conflated with the patent game).

    One thing made abundantly clear in the AIA (based on the entire rationale for including the vast expansion of Prior User Rights is that the either/or of the trade secret world and the patent world was an arbitrary – and now legally changed – distinction.

    I had attempted to engage Ron in a discussion on the constitutionality of Prior User Rights previously (in relation to the business method related – and now expanded – initial legislation. That discussion was not enjoined. But the principles still apply. The points I made in that discussion still apply.

    Prior User Rights are inextricably woven into the removal of the pesonal bars that our Congress has passed. I will repeat that the questioning of the properness of the soliloquy is a red herring. While that soliloquy was indeed after the iniital Senate vote, it was of record prior to both the House and confirming Senate votes.

    I look forward to Ron’s eloquent views on Golan and how such latitude given there casts a very different light on Pennock. That is, if he so chooses.

  11. Stan,

    The US Constitution speaks about Inventors, and NOT about the First Inventors to File. The whole concept of FITF is therefore not legal here in the US. It violates the Constitution in several different manners.

    Actually the Constitution doesn’t define ‘Inventor’ at all.

    To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

    It also doesn’t define ‘invention’ anywhere. I imagine that the aim was to leave that up to the legislative branch.

    Wayne

  12. Although complaining that any new law you don’t like is “un-Constitutional” is always popular with some poeple, the Supreme Court has a long conservative tradition of rarely agreeing with that. I am not aware of any Supreme Court decision ever holding any part of any patent law unconstitutional? Consider how unlikely that is when the only thing in the Constitution about patents is that they are to: “Promote the Progress of … the Useful Arts” with an “exclusive Right” “for limited times.” [Leaving all the details about how to do that and what those words mean up to Congress and the courts.] Furthermore, the idea that someone who was the first to invent always got the patent claims over someone who was first to file, no matter how long the first to invent delayed filing a patent application, is a giant myth, with 35 USC 102(g) and numerous judical decisions to the contrary. That myth includes a widespread missunderstanding of what it takes to successfully prove that one was “first to invent” i.e., what “first to invent” really means legally, not what lay people think it means.
    Thus, attacks on PTO interpretations of AIA provisions based on ambiguity and public policy or or even Congressional arguments intent have vastly better odds than any Constitutional challenge..

  13. Fair enough Paul-

    To touch on Wayne’s point just a bit, the Constitution didn’t define what an inventor or an invention actually amounts to, but there are dictionaries that define the terms very clearly in a historical sense. The term “First Inventor to File” seems to be a contradiction in terms, since an inventor by definition would seem to be the first to conceive of any particular invention. From the Merriam Webster dictionary circa 1976:

    Invent: vb 1) To think up. 2) To create or produce for the first time. (My emphasis)

    Of course Congress can change the law of the land, but in this case they would seem to need to change the Constitution with an amendment in order to change the definition of who is to be considered the real inventor in a legal sense in my opinion. I have *invented* several things that have already been done before independently, so ipso facto in the traditional sense I would not actually be considered to be an inventor in those cases. Otherwise the courts will have to decide that, over perhaps several years, and meanwhile innovative folks will not have any clear definition of what it really means to be an inventor, or what an invention actually amounts to.

    I sincerely wanted to be a patent attorney, but I was unable to afford the schooling that was required when I was just starting out. That doesn’t mean that I haven’t watched every episode of Perry Mason, Attorney at Law though! Sorry, but I just couldn’t resist.

    The new law will probably mean lots of extra work for practitioners, in order for them to prevent their clients from getting snared somewhere along their way. Patent law has always appealed to me, because it is a positive profession, as opposed to ambulance chasers.

    Stan~

  14. Stan,

    Invent: vb 1) To think up. 2) To create or produce for the first time. (My emphasis)

    The point is that Congress wouldn’t be changing the definition, only how the patent would be granted. Proof that the invention was used in trade, or had been written about in literature prior to the issuance of the patent would still invalidate the patent.

    The real issue that this legislation does not address is the inability of the Patent Office to do prior art searches, and its technological incapability to determine what is obvious.

    Wayne

  15. First, to put everything in perspective, I would like to agree with Paul Morgan that Constitutional arguments are far less likely to succeed than APA challenges to PTO’s interpretations, and even the latter are rather infrequent. Anon, I also appreciate and respect your thoughtful comments, as I did all your contributions in previous threads. I acknowledge that your interpretations are reasonable but I do advance what I believe to be a fair argument based on another reasonable interpretation that takes issue with your somewhat narrow view regarding what Golan or, for that matter, Eldred say on the “limited time” and what the “exclusive period” is.

    Although, as you say, it is up to Congress to set the rules of the game, neither Golan nor Eldred give Congress an open check for legislating an indefinite exclusive period. Congress may indeed, extend, repeal, resurrect or otherwise change the exclusive period, but in each such legislative action the exclusive term must be limited, i.e. “confine[d] within certain bounds,” “restrain[ed],” or “circumscribed.”

    It does not follow from the fact that exclusive rights may be secured to inventors under separate circumstances and legal regimes that an analysis of the “exclusive” period must conform to a straw-man that you call “two very different spheres of activity.” This distinction is as arbitrary as your assertion that I conflate the two. I view the totality of Congress’ action and its composite legal effect. Under the AIA, Congress expanded Prior User Rights (PUR), incentivizing inventors to opt out of the patent system that “promotes the progress”; protected inventors who do not disclose their inventions; sanctioned in Section 102 the type of secret exclusive commercial exploitation of inventions that inventors may engage indefinitely, while further being “secured” with the opportunity to continue the exclusive period under patent protection for another 20 years. The totality of the legal effect is that Congress effectively “secured” a robust composite continuous exclusive period which is not “confine[d] within certain bounds,” “restrain[ed],” or “circumscribed.” It is precisely because Congress interwove trade secret policies with patent matters such as PUR and Section 102(a)(1)’s safe-harbor for indefinite delay in patenting that the composite legislative effects within the “two very different spheres of activity” must be analyzed in their totality. And that is my fair argument, on which we can agree to disagree.

    That said, I do acknowledge that my argument is not unassailable and that if it ever came to the Supreme Court, the Court would be more likely than not to accord substantial deference to Congress on this matter, finding ways to sustain the statue. Sadly, that would be another major blow to the American patent system that served our nation so well.

  16. Sadly, that would be another major blow to the American patent system that served our nation so well.

    How? To my admittedly jaundiced view the patent system has damaged your nation badly.

    Wayne

  17. Wayne writes in part:

    “To my admittedly jaundiced view the patent system has damaged your nation badly.”

    So why is that any of your business whatsoever? It is pretty obviously not Your nation, or you wouldn’t have written it like you did. The American patent system has produced the most innovative society in the history of the world by far, so I tend to be a bit skeptical when others from abroad try to tell “US” what we should do. It is OUR patent law and not yours. You personally of course are entitled to “use” the US patent system to your personal advantage, like everyone else in the world, but you are not able to cast a vote here in the United States unless or until you decide to become a citizen of the US.

    Your use of the term “queue” twice in one message would seem to indicate that you are British, Canadian, Australian, or a citizen from New Zealand or Scotland. All of that is fine with me, as the topics here tend to be somewhat international, but taking cheap shots at my friend Ron K from abroad are Not OK. I tried very hard to prevent earlier attempts at *patent reform*, which Ron very diligently helped me with very significantly, due to his expertise in the history of US patent law.

    I sometimes comment on Mark Summerfield’s excellent blog from down under in Australia, but I at least try to make it clear that I am a Yankee, and just give an American perspective on what is in fact “Their” business, and not mine.
    http://blog.patentology.com.au/2013/02/patents-invention-employment-and-slavery.html?utm_source=20130218&utm_medium=email&utm_campaign=patentology

  18. Stan,

    Simple. You are our largest trading partner, and when you injure yourself, we have to prop you up.

    The American patent system has produced the most innovative society in the history of the world by far,

    Really? I suppose you have the comparative numbers that prove this? I’m willing to bet that you don’t. I’m also willing to bet that any numbers you do find cannot be directly attributed to the patent system. To the best of my knowledge no proper peer reviewed studies of the benefits of the U. S. Patent System have been carried out.

    My own very basic number crunching has convinced me that it has however become a significant cost of doing business. As a Libertarian, I also regard it as an unwarranted intrusion on Government into the private sphere.

    As to your assertion that the Patent System has made the United States the most innovative country ever (and I suspect that you don’t have a peer reviewed study to back this up either), if it has, that would be laudable. If it hasn’t, why have it? Remember, the only reason the Patent System exists is because it is supposed to provide a benefit to the country. If it does not provide a benefit, it is un-constitutional.

    Now I’m going to pick on a couple of companies. Let’s take Apple for example. Every single product they’ve ever introduced going back to the original Apple I, was an imitation of some earlier product. Microsoft is the same. Oh, both added features, and filed off the serial numbers, but there wasn’t any innovation going on, just imitation.

    What about John Deere? A lot of what JD does now is based on modifying automotive technologies for non-road. Caterpillar is much the same. Ford steals ideas from Japan, as does GM. So does Xerox.

    Which isn’t to say that innovation doesn’t happen in the USA, it does, but the stories of it are vastly overblown, just like the pioneer stories you hear, where one family cleared 10,000 acres in a year.

    And no, you can’t count total patents issued as innovation. I’ve read a lot of these patents, and the they are garbage. Consider CLS v. Alice, where the same basic functionality could be performed with pencil and paper. To quote reporting on the hearing:

    Judge Kimberly A. Moore. “How can this not be patentable? Look at these long elaborate flow charts! Look at this list of hardware specifications: controllers, a Unix Sparc Station, data storage, connectors …!” She was whole-hog into the patentability of the technology. It is too vast and complex not to be.

    The equivalent would be applying for a patent using a jet airliner to transport apple from coast to coast instead of carrying the same number of apples in a horse drawn wagon, with elaborate charts showing arrival times, departure times, estimated wind speeds over the expected route, fuel consumption, pilot fatigue, etc.

    It would look fancy, be faster, a lot more expensive, but it would in the end do the same thing, get apples from point A to point B. Virtually all of the patents I’ve read are like that, a simple combination of two existing concepts that would be obvious to anyone skilled in the art, and usually was so obvious that it was in use before the patent epwas applied for.

    I have solid reasons for being a skeptical old bastard. I saw the belly of the beast from the inside when someone with a newly minted patent tried to shake us (and eveyone else in the industry) up for a process we’d all been using for over 15 years. Should mention this happened multiple times, and a couple of the patents were suspiciously similar, other than the names.

    Wayne

  19. Hi Wayne-

    I really don’t need to convince you of the innovative nature of North American citizens, including Canadians. Like Australians they came to a new land and had to innovate their way out of difficult or pesky situations, before things became more civilized, so to speak.

    If you dare to, it is your responsibility to demonstrate why a strong system of patent law is Not effective, instead of my having to prove that it IS or was very effective in a historical sense. I have never heard of a really convincing argument about why patent rights per se are inherently a bad idea.

    One estimate that I heard of about 20 years ago seemed to be suggesting that the citizens of the United States of America were about 8 times as likely to invent new and useful things on a per capita basis, in comparison to the aggregate average of the rest of the world. I don’t need to prove that it is true, because it either Is or it Isn’t true. All manner of conjecture won’t change the facts, even if you don’t care for what you are hearing.

    To re-iterate, you need to convincingly prove me to be wrong, instead of me having to prove that I am correct. I am a bit too busy creating new things to find the time to look it up for you. I just invented a new process for creating composite parts last week, that worked out even better than I had hoped, for about 1/4 of the normal costs. Probably not patentable, but why should I care about that? I am off to sand out the mold surface today while the sun is shining and it is finally starting to warm up here a bit.

    Cheerio,
    Stan~

  20. Wayne,

    Let me know if a fully written reply would be worth your while. I ask because I know that I have attempted dialogue with you in the past and we just might end up agreeing to disagree, but I am compelled to comment that your post highlights a list of irrational and subjective views that are the bane of reasoned patent law discussion.

    A short list:
    - The idea that Canada “props up” the US economy is ludicrous – especially as concerns innovation.
    - You admit to a bad experience with someone trying to enforce what you considered to be a bad patent (hint: ALL patents are “bad” when someone tries to enforce them against you.
    - Your further admission of LIbertarianism does not provide confidence that you are taking an objective viewpoint
    - You fall to the common anti-patent rhetoric of “cause and correlation” and “why don’t you have peer reviewed articles and positive proof” on a point that is basically common (sense) knowledge.
    - You appear to want to single out individual patents (if those individual patents do not provide a national benefit) as unconsitutional. This view is warped on several dimensions, and could take an entire post in itself to explicate.
    - Your choice of example companies – ESPECIALLY Xerox are problematic for your position (I invite you to research the great US patent giveaway foisted by an anti-patent US government agency which enabled the birth of the Asian photocopy market.
    - You provide your own “number-crunching and conjecture” to down play the great Americna Innovation “myth,” yet I am sure that you have no such “proper” NON-peer reviewed articles to back that up. I put the comment this way in part to indicate that you have a false reliance on “peer-review” as some harbinger of “truth,” when more in fact, the term “peer review” – especially in patent articles, not only has no such correlation, but evidence exists of a negative correlation. In other words, the “peer-review” world itself does not align with reality when it comes to patents.
    - Your disparagement of CLS Bank is premature.
    - your example of a jetliner is crabbed, and quite frankly, wrong. Speed IS an attribute that engenders patent eligibility.

    It is one thing to be skeptical.. It is quite another to throw out the baby with the bathwater and go unwashed – as you have done.

  21. Anon-

    All I can usefully say is Wow! I hope I will never have to meet you in a Court of Law! Six ways from Sunday and all like that…. Pure fiction will never survive close examination, but the real truth very probably will.

    Best regards,
    Stan~

  22. Anon,

    - The idea that Canada “props up” the US economy is ludicrous – especially as concerns innovation.

    Please read what I said. The word ‘innovation’ was no where included in that sentence.

    - You admit to a bad experience with someone trying to enforce what you considered to be a bad patent (hint: ALL patents are “bad” when someone tries to enforce them against you.

    No, I admit to multiple occasions where I was approached by people who had recently issued patents for processes/products that we had been using/producing for ten to fifteen years prior to the patent issuance date. I also read patent applications for fun sometimes. Yes, I’m strange. What do you do with this:

    http://patimg2.uspto.gov/.piw?Docid=02886976&homeurl=http%3A%2F%2Fpatft1.uspto.gov%2Fnetacgi%2Fnph-Parser%3FSect1%3DPTO2%2526Sect2%3DHITOFF%2526u%3D%25252Fnetahtml%25252FPTO%25252Fsearch-adv.htm%2526r%3D4%2526p%3D1%2526f%3DG%2526l%3D50%2526d%3DPALL%2526S1%3DDean-Norman-L%2526OS%3DDean-Norman-L%2526RS%3DDean-Norman-L&PageNum=&Rtype=&SectionNum=&idkey=NONE&Input=View+first+page

    Or this:

    http://www.google.com/patents/US20080291851

    Neither of which is a physical possibility. Since the Patent Office is enjoined by law from issuing patents for things that are impossible, obviously it’s made a few mistakes. Since the patent office is also enjoined by law from issuing patents for items already in use in commerce, obviously it’s made a few mistakes.

    No, make that more than a few. It’s made a hell of a lot of mistakes. I could go on, but this answer would end up taking 100K plus words.

    - Your further admission of LIbertarianism does not provide confidence that you are taking an objective viewpoint

    Agreed. You’ll have to take my assurance on that.

    - You fall to the common anti-patent rhetoric of “cause and correlation” and “why don’t you have peer reviewed articles and positive proof” on a point that is basically common (sense) knowledge.

    I’ve found that ‘common sense’ is wrong 8 out of 10 times. That’s my experience at least. So I prefer scientifically tested reports. Are you scared that you won’t like the results of a scientifically tested report?

    Seriously. Either you are right, I am right, or we are both partially right. We both want what is best. So why shouldn’t we use a proven methodology to determine what is the best answer?

    - You appear to want to single out individual patents (if those individual patents do not provide a national benefit) as unconsitutional. This view is warped on several dimensions, and could take an entire post in itself to explicate.

    Those patents were picked as examples, since they were ones that I knew about. I suspect that a proper scientific study would pick up on more problems. Whether or not the problems are as widespread as I suspect, neither of us know, because no study has been done.

    - Your choice of example companies – ESPECIALLY Xerox are problematic for your position (I invite you to research the great US patent giveaway foisted by an anti-patent US government agency which enabled the birth of the Asian photocopy market.

    Curious. Back when Savon et al first appeared on the market, I was told that the Xerox patents had expired. Do you have documentation on this ‘Great Patent Giveaway’ you are talking about?

    - You provide your own “number-crunching and conjecture” to down play the great Americna Innovation “myth,” yet I am sure that you have no such “proper” NON-peer reviewed articles to back that up. I put the comment this way in part to indicate that you have a false reliance on “peer-review” as some harbinger of “truth,” when more in fact, the term “peer review” – especially in patent articles, not only has no such correlation, but evidence exists of a negative correlation. In other words, the “peer-review” world itself does not align with reality when it comes to patents.

    You are 100% correct. But neither do you. That’s the real problem. We are sitting here arguing a point that neither of us can prove. I am willing to admit this. Are you?

    As to the ‘peer review’ world aligning itself with patents, science aligns itself with truth, which is far more important in my opinion. What if a peer review was carried out, and it suggested changes, which would help inventors by reducing overload at the USPTO (don’t as me how, I just tossed this out as a concept). Wouldn’t that be worth considering?

    - Your disparagement of CLS Bank is premature.

    But it was accurate based on the judge’s comments.

    - your example of a jetliner is crabbed, and quite frankly, wrong. Speed IS an attribute that engenders patent eligibility.

    Not necessarily. If I can transport apples on way, changing the transport method does not make that method patentable. Remember the word ‘obvious’?

    It is one thing to be skeptical.. It is quite another to throw out the baby with the bathwater and go unwashed – as you have done.

    Again, you totally misrepresent what I said. I want an independent peer-reviewed study to determine the best course of action. I think that legislation should have solid scientific backing. If it doesn’t, it shouldn’t be legislated.

    The best government is the least government, and the least government is no government at all.

    Unfortunately this is the real world. That sort of thing tends towards anarchy. So I push to take power out of the hands of the lobbyists, by requiring the government to prove the need for legislation. The Congressional Budget Office was a step in the right direction, if feeble.

    Wayne

  23. Anon,

    Comment had a couple of links, is caught in moderation. Hope Gene notices.

    Wayne

  24. Back again Wayne, whether you happen to like it or not.

    This just came in from down under in Australia, where it is probably quite late in the evening. Mark is quite careful about what he writes, which seems to indicate a fair amount of intelligence.
    http://blog.patentology.com.au/?utm_source=20130304&utm_medium=email&utm_campaign=patentology

    They have a somewhat different situation there, but it seems to be modeled after a US patent system type of model, loosely based upon an earlier sort of British model.

    The British patent model actually originated in Venice, Italy, a very long time ago, as in hundreds of years ago.

    It seems to have survived very well over about 400 years, so I am frankly somewhat puzzled about why you are not able to grasp the real premise. Maybe greed or laziness? I can’t know that for sure unless you talk about it a little further.

    Stan~

  25. Stan,

    I always like hearing from you. I may not agree with you, but I like hearing from you. That’s some interesting background on patents that I wasn’t aware of. Loved the ‘olde tyme’ language:

    Provided alsoe That any Declaracion before mencioned shall not extend to any tres Patents and Graunt of Privilege for the tearme of fowerteene yeares or under, hereafter to be made of the sole working or makinge of any manner of new Manufactures within this Realme, to the true and first Inventor and Inventors of such Manufactures, which others at the tyme of makinge such tres Patents and Graunts shall not use, soe as alsoe they be not contrary to the Lawe nor mischievous to the State, by raisinge prices of Commodities at home, or hurt of Trade, or generallie inconvenient; the said fourteene yeares to be accomplished from the date of the first tres Patents or Grant of such priviledge hereafter to be made, but that the same shall be of such force as they should be if this Act had never byn made, and of none other.

    Of course I like Shakespeare too.

    So Obviousness is a new idea. I can see why it was added, but I can also see the issues with determining what obvious actually means. I tend to take a broad view myself. If the invention is just the combination of two existing devices (which is all it is, most of the time) I would consider it to fail the obviousness test.

    Take streaming video. Every time someone comes up with a new compression routine, they want to patent streaming video again. The problem is that compression has been used with streaming video since before the internet came into widespread use. Changing to a more efficient compression routine is an obvious move, as was changing the delivery mechanism.

    That’s what makes me a patent skeptic.

    Wayne

  26. Wayne,

    Not to be too crude, but your statement of “) I would consider it to fail the obviousness test.”

    Does not in fact make you a patent skeptic. It makes you patent ignorant.

    If you choose to remain so, well, that’s fooly [sic] up to you. But this blog may not be the place for you, as appreciation of what is actual law is prized just as much as purposeful misapplication of law is shunned. Of course, you are welcome to your opinion, but I would ask that you ground your opinion in more than anti-patent rhetoric.

  27. Anon-

    With every due respect, an agnostic or the act of being one would seem to be a more appropriate description.

    Agnostic: Adj. : of or relating to the belief that the existence of any ultimate reality (as God) is unknown and prob. unknowable.

    Agnostic: noun

    Merriam Webster Dictionary circa 1976 (C)

    Perhaps too fine of a point in this case, but perhaps you might be able catch my drift. Then again there is the Edge, where everything is in question. It is a Vimeo video which seems to load pretty slowly, but be patient and I bet you will like it.
    http://vimeo.com/57094153

    Stan~

  28. Anon,

    Not to be too crude, but your statement of “) I would consider it to fail the obviousness test.”

    Does not in fact make you a patent skeptic. It makes you patent ignorant.

    I designed a wide range of emission control systems for non-road vehicles. I’m classified as an expert, and have given testimony to both the U.S. Environmental Protection Agency, and to the California Air Resources Board. My name still shows up on the CARB website:

    http://www.arb.ca.gov/msprog/offroad/orspark/verdev/nett052506.pdf

    I’m also a software engineer, who has designed a variety of systems, from the ground up.

    So yes, I do know ‘obvious’ when I see it. As the man who spent a good part of ten years evaluating patents that people wanted us to license, I did not approve a single patent, and we didn’t spend a single day in court. That’s solid evidence that I do know how to read and evaluate patents.

    That’s also solid evidence for why I’m a skeptic.

    Wayne

  29. Wayne writes in part:
    “Provided alsoe That any Declaracion before mencioned shall not extend to any tres Patents and Graunt of Privilege for the tearme of fowerteene yeares or under, hereafter to be made of the sole working or makinge of any manner of new Manufactures within this Realme, to the true and first Inventor and Inventors of such Manufactures, which others at the tyme of makinge such tres Patents and Graunts shall not use, soe as alsoe they be not contrary to the Lawe nor mischievous to the State, by raisinge prices of Commodities at home, or hurt of Trade, or generallie inconvenient; the said fourteene yeares to be accomplished from the date of the first tres Patents or Grant of such priviledge hereafter to be made, but that the same shall be of such force as they should be if this Act had never byn made, and of none other.”

    Where in the world did you find this whatever you want to call it? In self defense I would like to make it very clear that Wayne found this somewhere and included it in a reply to me.

    Stan~

  30. So which trading partner country are you from? I am just guessing Canada, since you seem to write like an American, If you happened to be British, you might tend to write a bit more like Paul Cole, who always very graciously *translates* his messages into a more Yankee friendly format.

    I once considered becoming a detective, but it didn’t seem to be a very lucrative profession last time I checked. I think writing very good science fiction would be much more profitable.

    Lost Mass

  31. Stan,

    It found it at the link Anon provided, which lead to an Australian review on what had been happening to their patent law. It gave historical background, and the ‘Olde English’ was part of that background.

    Yes, Canada, in what we call the Far North. There are more snowmobiles than people in the town where I live. More guns too, damned near everybody hunts. We live on the edge. This place is beautiful has hell, but it’ll kill you if you stop paying attention for a second. Walk in the bush, and maybe you find an unmarked mine shaft. Then there’s bears. They come into town sometimes. Snow. Ice. More snow. My backyard fences are a meter high, and a dachshund could walk over them in a lot of places without breaking a sweat.

    Assuming the Dachshund could reach them, the poor thing would have to swim. Through snow.

    Wayne

  32. Wayne,

    With all due respect to your emission control achievements and software writing, some of the smartest technical people are also some of the most ignorant patent people.

    With lines like “I do know “obvious” when I see it,” and with the litany of points I made earlier (of which all still stand), your views on the law do not accord with what the law actually is.

    Clearly, you would hold a tighter reign on “obvious.” And perhaps more than a fair number of patents are passed that should not, but there remains a gulf between your stated views and what the law really is.

    I welcome your opinions, but treat them as opinions of the lowest order when you decide to back them up with your subjective views and anti-patent rhetoric.

    I implore you to think about why your views simply do not resonate (and no, it is not merely because they are anti-patent – it is because you merely repeat the mantra without more). If you really wnat to change the system, the way you post is not going to cut it.

  33. Hi Wayne-

    Glad I guessed right, as I have always enjoyed meeting folks from the Great White North. They tend to have a very pragmatic and Can Do kind of attitude, which is somewhat similar to the type of attitude that many US citizens tend to have.

    Down here we had to fight England to a standstill to win our freedom, but our ancestors pulled it off against the most well equipped and organized army in the world despite very long odds. Not sure exactly why, and when the Constitution was drafted and ratified, the second Amendment was a very important feature of it, as well as our first to invent system of patent law. Like the motto of the great state of New Hampshire to “Live Free or Die” which was interestingly first adopted in 1945.

    Like the second amendment, our patent laws have caused some problems lately, but I will have to stand pat with Anon in suggesting that the baby shouldn’t be tossed out with the bathwater, just so that someone won’t have to get their hands dirty in the process. Things in life get messy once in a while, and need to be cleaned up without throwing them away altogether. Canada is interesting in that it seems to be combination of a Democracy and a Monarchy, with the provinces having quite a bit of latitude in their chosen laws, much like the States down here. Therefore your libertarian views might be somewhat skewed by your own form of government, which is quite a bit different than what US citizens are faced with.

    Having said that, the mystery still remains about why Americans have been so creative in the past, where other countries have not been nearly as inventive. Perhaps more available free time, since we don’t have to spend so much our lives trying to prevent ourselves from starving or freezing to death. Part of my family came from Trondheim, Norway, where they literally spent 3/4′s of their time doing just that.

    I would consider myself to be remiss in my duties if I didn’t protest the devaluation of US patent rights, and not just for myself. After 236 years Congress has decided to take away a significant portion of our patent rights, in the name of harmonization and streamlining our patent system. That is simply wrong, and Senator Patrick Leahy knew that very clearly when he finally managed to get the AIA passed. You could just see it in his eyes, that he knew that he was doing the wrong thing for hire by lobbyists with more money than sense. GREED, pure and simple.

    I simply cannot and will not agree to that, because I consider it to be tantamount to an insidious form of treason. They have effectively stolen billions of US dollars in lost profits, just so that they might be able to get re-elected thereby. I consider myself to be mostly a liberal at heart, but allowing something like the AIA to be enacted is going Way too far away from the best interests of US inventors. Think what you like, but that is really neither here or there in Canada.

    We can agree to having differences in the matter, and still remain friends, but don’t expect me to like your views in the matter very much. I live at the entrance to the Puget Sound, close by lovely Port Townsend, WA.

  34. Stan,

    Traveling at present. Be back Wednesday, proper answer then.

    Wayne

  35. Implore all you like Anon, but it probably won’t prevent the immanent crash. They will either discover where the Edge is, or they will not succeed in that endeavor. Not my job to suggest where their particular Edge might be, which is a somewhat personal sort of thing.

    Either they get it or they very well might become a casualty on the big highway of life. To each their own, which is a conscious decision that they have to make on their own. I have been very close to the Edge myself a few times, but I elected to ease up a bit and Not lose my Norton 750 Commando or my life to the high side at a very high rate of speed.

    A guy can only do so much in that regard though, which probably will be nearly impossible for either of us to teach others about. I bet my dad was thinking similar thoughts when I found a Morris Mini Cooper and actually managed to rebuild both the *new*1275cc motor and transmission for it that worked just fine, thank you very much, when I was about 18 years old.

    Modern Mini’s are very sedate in comparison, but they have more raw power. If you ever get a chance, try wringing out a mid 1960′s Lotus Elan some time, and it will remind you that God still exists up there somewhere. And where did Emma Peel go to when I wasn’t looking? (Diana Rigg)
    http://theavengers.tv/forever/bio-rigg.htm

  36. Stan,

    As you can guess, things got, well, complicated. Been travelling twice more, and my inbox overflowed. Augean Stables on steroids.

    I’m not sure that Americans are so “inventive” per se. I think that instead you’ve been fed a message that you are, and believe it. I’ve done a bit of travelling, and I know people from a wide range of countries (we seem to attract everyone to Canada). The point is that inventiveness seems to be affected by several factors (this is from my observations).

    1) Education
    2) Natural Resources
    3) Social Limitations
    4) Cost of doing Business
    5) Human Resources
    6) Available Money

    Now if I was to rate the United States on a scale of 1 to 5 on those items, the current scores I’d give are:

    1 – 2
    2 – 2
    3 – 3
    4 – 2
    5 – 2
    6 – 1

    Canada I’d rate

    1 – 4
    2 – 3
    3 – 3
    4 – 3
    5 – 3
    6 – 2

    So I’d expect to see a higher rate of inventiveness here, and in fact I do see a lot of it here, some of which once established moves to the United States to take advantage of the larger (about 10 times) market. Most Canadian writers for example sell into the United States. It’s a numbers game, larger market, larger sales, and since the language is mostly the same (I do have to provide glossaries sometimes, but hey, that’s life).

    Of course it is easier to invent things in Canada, because you aren’t going to get your ass sued off. Ask Research in Motion, or Blackberry as they are known today.

    Wayne

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