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How to Protect Your Patent from Post Grant Proceedings


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: March 19, 2014 @ 7:28 am
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The American Invents Act (AIA) created three new ways to challenge the validity of claims in already issued patents. While the AIA was signed into law on September 16, 2011, the new post grant proceedings did not become effective until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review and covered business method review, which is a variety of post-grant review that is limited to business methods relating to the financial industry. Because post-grant review was specifically limited in applicability to patents that were examined under the new first to file law, only patents that have an effective filing date on or after March 16, 2013, are capable of being reviewed in a post-grant review proceeding. Therefore, so far the USPTO has only seen inter partes review and covered business method cases.

On August, 14, 2012, the United States Patent and Trademark Office promulgated final rules applicable to these new proceedings, and at that time the USPTO said that they anticipated  that 420 petitions for inter partes review would be filed in fiscal year 2013.  The USPTO also said they anticipated that in fiscal year 2014 there would be 450 petitions for inter partes review filed. See 77 FR 157 (August 14, 2012) 48713. The Patent Office severely under estimated the popularity of post grant proceedings, particularly inter partes review. Indeed, the PTAB is on pace to reach more than 1,100 administrative trials in FY 2014.

Inter partes review has been extraordinarily popular due to the fact that the rules are stacked in favor of the challenger. Indeed, recently Scott McKeown who is a partner at Oblon Spivak and co-chair of the Oblon post grant practice group wrote on his blog that the Patent Trial and Appeals Board (PTAB) “offers unprecedented speed with none of the patentee safeguards of the district court.” The biggest safeguard that a patentee enjoys at the district court is a presumption of validity. In other words, during a patent litigation in the district court the patent is presumed valid and will remain valid unless and until the challenger can demonstrate by clear and convincing evidence that the claim (or claims) are invalid. At the Patent Office, however, the patent does not enjoy any presumption of validity and the challenger need only meet a preponderance of the evidence standard, which is substantially less onerous than the clear and convincing standard in a patent litigation in the district court.

In addition to the rules being stacked in favor of the challenger, post grant proceedings have been popular because the Patent Office is granting petitions for such review in a high percentage of cases, and so far in the overwhelming number of cases the PTAB has found in favor of the challenger. Indeed, some 80% of claims challenged at the PTAB are instituted for trial, and upward of 85% of patent claims will be cancelled or amended before the PTAB. See The PTAB Roadblock to Patent Monetization. These statistics have lead Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit to describe the PTAB as “acting as death squads killing property rights.”

What this means for the patent owner is this: If a post grant proceeding challenge is filed against your patent you should anticipate that the petition will be granted, an administrative patent trial will ensure, and you are in serious jeopardy of losing the challenged claims.

By the time you are challenged in a post grant proceeding there may not be much you as a patent owner can do other than take the challenge serious and fight like you’ve never fought before. There are, however, strategies available to attempt to ward off post grant challenges for those who have not yet had a patent issue, or who still have the opportunity to file a reissue application to broaden patents obtained, or who still have one or more pending applications open at the Patent Office.

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Filing a post grant proceeding challenge is not inexpensive. This is not to say that filing such challenges is ordinarily cost prohibitive. When you compare the costs to fighting a patent in a patent litigation in the district court where even an average patent case can easily cost between $2 million to $3 million in attorneys fees to defend, the total cost of an ordinary post grant challenge is quite a bargain. Still, the filing fees for a petition alone are not irrelevant.

The petitioner in an inter partes petition must pay $23,000 for the right to challenge 20 or fewer patent claims. There is also an additional fee of $600 per claim in excess of 20 claims. The fees are even greater for covered business method petitions, where the initial filing fee is $30,000 for 20 or fewer claims challenged, with an additional fee of $800 for each additional claim challenged over 20. Add to this the fact that it will easily cost every penny of $300,000 start to finish for an inter partes review, and that some firms quote as high as $1,000,000 in fees start to finish, with a proper patent prosecution strategy you can make the post grant proceedings too expensive to pursue.

With this in mind, patent owners must modify their strategies during prosecution to make their patents and portfolios less susceptible to post grant challenges. This strategy must take into account the cost of filing a petition by a challenger. Patent owners must obtain enough claims and enough patents to make it extremely expensive for a challenger to go down the path toward an administrative patent trial where the deck is stacked against the patentee. This will require patent owners to obtain patent claims with numerous dependent claims that cover as many variations as possible, but also to ensure that the dependent claims build on one another little by little so as to create a claim set that refers back to as many previous claims as possible. Such a claim mosaic will raise the filing fee that must be paid to institute a post grant challenge.

The rub here is how does the USPTO determine how many claims are being challenged when challenged claims are dependent and refer back to one or more other claims. The USPTO explained: “for fee calculation purposes, each claim challenged will be counted as well as any claim from which a claim depends, unless the parent claim is also separately challenged.” 77 FR 157 (August 14, 2012) 48619. The USPTO went on to provide several examples:

Example 1: Claims 1–30 are challenged where each of claims 2–30 are dependent claims and depend only upon claim 1. There are 30 claims challenged for purposes of fee calculation.

Example 2: Claims 21–40 are challenged where each of claims 21–40 are dependent claims and depend only upon claim 1. As claims 21–40 depend from claim 1, claim 1 counts toward the total number of claims challenged. Thus, there are 21 claims challenged for fee calculation purposes.

Example 3: Claims 1, 11–20, and 31– 40 are challenged. Each of claims 1 and 31–40 are independent claims. Each of claims 11–20 are dependent claims and depend upon claim 9, which in turn depends upon claim 8, which in turn depends upon claim 1. As claims 11–20 depend upon parent claims 8 and 9, claims 8 and 9 would count as challenged claims towards the total number of claims challenged. As claim 1 is separately challenged, it would not count twice towards the total number of claims challenged. Thus, there are 23 claims challenged for fee calculation purposes.

Example 4: Claims 1, 11–20, and 31– 40 are challenged. Each of claims 1 and 31–40 are independent claims. Claim 11 depends upon claim 1 and claims 12– 20 depend upon claim 11. As each of the challenged claims is based on a separately challenged independent claim, there are 21 challenged claims.

In none of these cases is the filing fee going to be a real deterrent if the challenger has decided to pursue either inter partes review of covered business method review. Notice, however, that in each example the dependent claims challenged depended only on a single other patent claim. But what if you were to get a patent that had 50 claims and the most valuable claims were 41 through 50, each of which referred back to each of the first 40 claims in one way or another. That would mean that the filing fee for a single inter partes petition that would challenge claims 41-50 would cost $41,000. If there were 100 claims in the issued patent the filing fee would be $65,000.

Of course, due the page limitations what can and does happen is that the challenger would not file a single petition for inter partes review, but instead may file several simultaneous petitions to challenge the claims. In this scenario, if you have a large number of claims even if you do not strategically use dependent claims that incrementally build on each other you likely will force the challenger to need to file multiple inter partes petitions, which in and of itself raises the filing cost, as well as the cost of preparing and litigating. So if you have 60 claims and the challenger needs to challenge all 60 they may choose to file three separate petitions to lay out the case within the page limits, which would cost the challenger three separate filing fees, or $69,000.

But what if you don’t just have one patent with an above average number of claims, but what if you continually mine the disclosure to obtain hundreds of patent claims over a dozen or more patents? If the specification is written as an omnibus specification that is capable of fully supporting a real innovation there should easily be enough matter disclosed in the first filing to support hundreds, if not thousands of patent claims. Until now there has really been marginal benefit to seek protection on all of the various combinations that could be claimed because there are additional claim fees required in order to obtain those claims. Having said that, if you have a valuable patent property you absolutely must seek far more claims and far more patents than you ordinarily would in a world that didn’t have a PTAB killing patents.

Whether we like it or not there is a substantial backlash against innovators and at this moment in history patents are largely viewed as evil and unnecessary. In this climate it is necessary for innovators to strategically engage in patent prosecution to obtain more patents with more claims so that even the more favorable standard at the PTAB will not be enough to warrant challenging your patents in a post grant administrative trial at the USPTO. Of course, the other benefit of having so many patents and patent claims is that at some point even the PTAB should presumably be unable to in an intellectually honest way find that all of your claims are invalid.

At some point the PTAB will either need to find some claims valid or the entire mission of the USPTO will need to be reevaluated. If the PTAB is going to kill all claims in all commercially valuable patents what is the point? Until we get to that equilibrium, and perhaps until we get to a new Administration controlling federal government agencies and a more pro-innovation Congress, patent owners need to take matters into their own hands. That unfortunately will make obtaining a strong patent portfolio more expensive than a few years ago, but closing your eyes to existing reality and instead wishing for the past is not a winning strategy. If you are going to spend money to acquire commercially valuable patents you might as well spend enough so that the patents have the greatest chance of living through this patent-killing era.

If you need assistance please feel free to contact me.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Trial and Appeal Board, Patents, Post Grant Procedures, 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.

 

33 comments
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  1. Gene,
    You are still calling for getting more patents and more expensive patents in the face of coming apocalypse ?
    Funny you…
    I am not worried about those inter partes: I sued a relatively large company a few years ago and was faced with their usual hubries, stubborness and foolishness over settlement negotiations
    Decided to back off early to escape multi-year litigation and possible sanctions
    In the process I lost a few grand and they lost their biggest customer – 9 figure damage
    They didn’t even file DJ retaliatory suit against me…
    I still can refile my lawsuit any moment, or sue a dozen other silicon valley companies (but certainly would not do it in the current patent-hating environment)
    – and no inter partes coming for me…
    Keep writing

  2. Gene,
    Thanks for the article; very interesting suggestions.
    On a separate (but somewhat related) issue, are there any statistics available yet for supplemental examination/ ex parte reexamination following the AIA? Also, I have not been able to find any guidance in the MPEP or elsewhere about which version of 102 and 103 would apply if a supplemental examination is filed now–would it always be the ‘new,’ AIA versions, or would some patents get the ‘old’ pre-AIA versions applied (if they were filed and issued before the AIA effective dates)? Everything I’ve seen refers to 102 and 103 but not to sections (a) and (b) or (1) and (2), etc., and doesn’t mention this issue, so I can’t figure it out. Probably I’m missing something obvious, but I do like seeing these things in writing and don’t understand why something so important to the process would not be spelled out.

  3. I will just say that this post points out why people tend to have a bad view of patent attorneys.

    Rather than suggest that patent claims be tightened up, and become more specific and targeted, the suggestion is to instead game the system and make as many weak dependent claims as possible. As a non-lawyer looking in, it seems like it’s more important to game the system until the rules squeal in pain than to have good patents that are actually strong and stable. Whether that was the intent or not, that is the perception. This is why people who aren’t patent attorney’s are so behind patent reform. We look at a system where the very officers of the court are advocating gaming the system, rather than improving it.

  4. Allow me an honest question in face of the criticism of the PTAB – If the board finds genuine reason to invalidate a claim (due, probably, to the petitioner doing a far more serious job than the USPTO of discovering prior art), doesn’t this mean that the claim should never have been allowed in the first place? In other words, isn’t the PTAB merely overcoming the limitations of the USPTO ?

  5. Benny,

    The short answer is “no.”

    The long answer deals with the legal substantive issues of property rights and that Congress removed the mechanism that your question speaks to (over at Patently-O, a regular poster named Ned Heller).

    See http://patentlyo.com/patent/2013/04/patcon-3-plenary-session.html

    The long answer thus deals with duly granted (even if granted in error) property rights. There are takings and due process constitutional issues involved.

  6. Thanks for the link, Anon. I understand Ned Hellers’ point.
    But now you raise two further questions – first, would it make a difference if the claims were invalidated by EPR or IPR, and second, is this the preferred course of action to invalidate a competitors’ patent (assuming, of course, that I have found prior art proving that my competitors claim is not novel)?
    By “preferred course of action” I am referring to selecting the most professional and qualified authority to reach a decision.

  7. I should be interested in how others answer Benny’s question, especially Gene Quinn. Anon, with his references to “takings and “due process” is following his usual path, of telling us all that he alone understands why his answer is what it is: the reasoning is for him to know and the rest of us to find out.

    Meanwhile Benny, as far as I’m concerned, of course the answer is Yes. I imagine in every PTAB Decision to find invalid, the tenor would be (to use Benny’s words): “the claim should never have been allowed in the first place”.

    I further imagine that the writer of the PTAB would have no objection to including those words in the written decision. Why not?

  8. SadPanda-

    You say: “Rather than suggest that patent claims be tightened up, and become more specific and targeted, the suggestion is to instead game the system and make as many weak dependent claims as possible.”

    That is, of course, not true whatsoever.

    The trouble is that you are a non-lawyer and you think you understand the issues. What you say in that sentence above if not only wrong, but it is internally inconsistent. You see, if there are more dependent claims that are tied to other previous claims then by definition there will many more dependent claims with much more detail. That does, by definition, result in more dependent claims that are “tighented up” as you say. It also leads to patents with more narrow claims. That is what you get when you claim as many different combinations as possible. You see the more that goes into a claim the more narrow the claim and the more focused the scope of the claim.

    So if it makes you feel better to pretend that the suggestions in the article are merely gaming the system then please go right ahead and keep your head firmly planted in the sand. You and people like you are the problem! You don’t have a substantive clue about the topic but feel you are expert enough to criticize.

    So you and others who aren’t attorneys, who don’t know what they are talking about, are behind patent reform and pushing the destruction of the patent system out of complete and utter ignorance. If you succeed the economy will suffer greatly and innovation will move to a crawl rather than what we have experienced over the last 100 years. Be careful what you wish for, particularly when you don’t have any knowledge about the topic or consequences.

    -Gene

  9. MaxDrei,

    You seem intent on fighting demons not present. I provided a link to the concept I rested on, quite the opposite of your accusation. Nowhere is there any of this “he alone understands why his answer is what it is.”

    Your post is uncalled for and unappreciated.

    Grow up.

  10. Gene leaves out a few things:

    Furthermore, the old EPR standard – a substantial new question of patentability (“SNQP”) is still the standard to EPR. This was commented on as an essentially toothless standard. However, the threshold for PGR and IPR is that the challenger must show that it’s reasonably likely to find one claim invalid. So this raises the bar and serves a screening function – not just any old piece of prior art can serve to bring a patentee to the USPTO and force him to defend his patent.

    It’s true that in litigation, the a challenged claim can be invalidated by a clear and convincing evidence standard (~ 70%). However, where the standard for invalidating claims is lowered in the PGR, EPR and IPR proceedings, the proceedings give the patentee the option to amend their claims in light of the evidence being presented. For practical purposes, since a PGR proceeding can be on any grounds (including 101 and 112), a challenger has more options to attack. However, a patentee has the option in PGR to amend their claims for lack of enablement / written description, and can thus re-write their claims to more closely track the the invention as disclosed in the specification. This is a valuable tool for them to partially save, and not wholly lose, overly broad genus claims. I see the review opportunities as bringing the patents closer to their proper scope. There’s a chance to rein in broad claims, and ensuring that the claimed invention (1) is adequately supported by the disclosure and (2) is adequately distinguished by the prior art.

    The new proceedings use the best leverage as possible to root out bad patents – those who are directly affected by them. It’s an open secret by now that the time to examine a patent is insufficient (~20 hours?), and as a result, many “bad” patents are granted. The problem of bad patents is dealt with effectively ex post. These proceedings track closely with opposition proceedings in the EP patent office, thus bringing us more in-line with the rest of the world.

    With due respect Gene, I think your and Circuit Judge Radar’s premonitions are a bit exaggerated.

    Andrew

  11. Benny,

    To answer your questions, you would need real legal advice, as the specific details of any individual situation will dictate the best course of action. I do not expect that you would follow any answer I would give to you (nor would I want you to without my understanding of your situation). The fact of the matter is that multiple paths exist and any one path may in certain conditions be a better path to take.

    As to your comment regarding “preferred course of action” and ” most professional and qualified authority,” if I read into the question and presume that you are asking “What IS the single most professional and qualified authority?” the answer to that question appears to be in flux. Traditionally, the answer would have been the courts. Recent cases however indicate that the Article I courts within the federal agency known as the USPTO will make decisions not respecting the finality of Article III courts. This opens up a whole different can of worms with the immediate answer to your question being that there is NO “most professional and qualified authority.”

    This is – and should be – a distressing answer.

  12. “gaiming the system” ?:):):)

    On the contrary, the patent system games us, small holders of valid US patents, in a BIG way

    Right now it’s bordering fraud and extortion

  13. Andrew-

    Not sure I agree that I left anything out, also not sure what you mean that the substantial new question of patentability standard is “an essentially toothless standard.” Care to elaborate? Saying something nebulous like that doesn’t exactly forward the debate since it is unclear what you mean.

    Also, you miss a critical point, which seems to incorrectly lead you to an erroneous conclusion. You seem to be of the opinion that because patentees can amend claims that post grant challenges are not problematic and potentially dangerous for the challenger. That is, however, wrong.

    If a claim is amended then intervening rights attach, which is why it is property said that a challenger succeeds whenever a claim is changed. In other words, the challenger does not need to have all claims removed to succeed.

    -Gene

  14. Benny-

    It really doesn’t matter whether claims are removed from a patent or changed as a result of ex parte reexamination or inter partes review. The difference is about process and who decides. Reexaminations are decided by examiners in the Central Reexamination Unit. Post grant challenges are decided by the PTAB, which is made up of lawyers who are administrative law judges.

    In ex parte reexamination there is no ability for the requester to participate. Ex parte reexamination is quite effective. In only 22% of cases are all claims confirmed. In 66% of cases all claims are lost, and in the remaining 12% of cases claims are modified. Of course, a modification of claims is a victory for the challenger because of intervening rights. See page 2 at:

    http://www.uspto.gov/patents/stats/ex_parte_historical_stats_roll_up_EOY2013.pdf

    With IPR more challenger are comfortable because they get to engage in a mini-trial. It is really better to view it as a hearing, but there can be depositions and discovery, so it offers meaningful participation options. At the moment it looks like the success rate of post grant review challenges is higher than reexamination.

    The preferred course of action really depends on the circumstance. One nice thing about reexamination is that it can be requested anonymously. I suspect that if there is litigation on the horizon most would opt for post grant challenges, but before a spotlight is turned on a challenger reexamination could and should be at least considered.

    -Gene

  15. “but before a spotlight is turned on a challenger reexamination could and should be at least considered.”

    Correct, but there is one missing piece: PTO also needs to bite reexam request – it doesn’t do it by default, there needs to be some newly uncovered prior art of sufficient validity supporting the petition for reexam. Right ?

  16. Gene –

    Bringing forth a challenge by showing a “substantial new question of patentability” was an easy standard to meet – statistics indicated that in about 92% of the cases for both EPR and old-IPR, review was granted. (Source: http://www.uspto.gov/patents/stats/Reexamination_Information.jsp) The new rules, in effect, aim to make it harder for a challenger to get in the door. The “reasonable likelihood of invalidity standard” is admittedly tougher, but there aren’t any statistics – yet – to show how much.

    My point about amendments is this: review gives everyone – the patentee, the office, and alleged infringers – a more complete set of facts on which to base an opinion, and to tailor the scope of the claims. I would ask you this: if a claim is amended (narrowed), in the light of evidence, and under the jurisdiction of a competent patent judge, with recourse to the higher courts (CAFC and beyond) for review, where’s the beef? Is it in procedural abuses?

  17. Andrew,

    I think that you are laboring under an unproven assumption that the change in standard from “substantial new question of patentability” to “reasonable likelihood of invalidity” was any form of substantial tightening down of permitting a challenge to proceed.

    On what (other than rhetoric) do you base this on?

    This is a serious question. I have only seen lip service that this standard is much tougher. I have seen no sense of any actual support. One reason why I have paid some serious attention to this hand waiving (and know that all that is out there is mere lip service at this point) is in answer to your question of “where’s the beef?” The point in the process that is most problematic to me is when the Office in its role as an Article I court decides on its own – with no Article III review of this particular decision available (the decision to proceed) – that it will proceed and in so doing removes property rights from a duly granted patent holder. This feeds directly back into my post at 5 above. The decision by the Office is opaque to reason, is undocumented (except for the result), and is not reviewable. It is an uncontrolled star chamber process in an executive agency proceeding directly affecting a particular stick in the bundle of personal property rights.

  18. -Gene

    I posted what the perception was. You then proceeded to insult me over it. This is another reason why people who are not patent attorneys do not have any sympathy or want to understand. Getting up on a high horse and claiming you know better than anyone else does nothing to make your argument persuasive, it only makes you look strident and disconnected.

    Note that I am not saying your opinion is wrong or that all patents should be abolished or any of the other wild accusations you made against me. I am saying the way it is presented, and your insults, do nothing for your argument and actively undermine it. There are good patents, there are bad patents. The idea that patent attorneys are arguing that patents that are bad should not be challenged because it’s ‘not the way to do it’ rather than getting rid of the junk stuff so the good stuff can make the rightful owners money without their being relegated to the ranks of patent trolls is what I was pointing out is one of the main reasons why the public is against you.

    Rather than take that and think about it, you insult and tell me to stick my head in the sand. *shrug*

  19. Statistically speaking, the review grant rates under the new standard are less – about 82%, compared to the 92%. This still might be high, but it’s still a statistically significant drop.

    In terms of transparency, you can see a list of decisions on their web page. Decisions are directly appealable to the CAFC, or you could sue the USPTO in D.C. District Court – so there is Art. III review of the decision.

  20. Andrew,

    I discussed with particularity the points that I make here previously.

    Your statements at 19 misses what I am saying.

    Seeing a list of decisions does NOT show how those decisions came about, what drove the decision, and an explanation of how the decision was reached. Notice that a determination was made is clearly not the point that I am making.

    Decisions to proceed (as opposed to the results of the proceedings) are not appealable. Period. The review you speak of is not the review I speak of. The Article III review is not of the very point of my concern – the point of a taking from the bundle of personal property rights and placing the patent back into the Executive agency – being stripped of the legal presumption of validity and facing (among other things BRI). You jump right over the very point of my concern.

    Please read my posts again.

    As to the statistics, can you reveal your source?

  21. My source of statistics was your post from February 9: http://www.ipwatchdog.com/2014/02/09/inter-partes-review-overview-and-statistics/id=47894/

    You can read the results of PTAB decisions here: http://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp, where they give the decisions and the grounds for them.

    Where we disagree is in that I think that review of the decision on the merits by an Art. III judge, and not the decision the PTAB to proceed, is still in line with the norms review of other Art. I judges (e.g. Bankruptcy, Social Security.) Calling it a “property right” and a “taking” begs the question. Rights of enforcement are legal rights created by Congress, and it’s within Congress’s constitutional authority to delineate the scope of them. In that regard, they’re no different from other privately enforceable causes of action that they can make laws for, such as antitrust or environmental law. Do you have a source or any higher authority for this “taking” theory?

  22. Andrew.

    Are you familiar with the link I provided at post 5?

    Further, please do not refer to the review that does happen as encompassing what I am discussing. It does not. There is no “in line with” for the point I differentiate, and your repeating something else makes it seem like you want to cloud the issue.

    There is no “begging the question” and my calling it a property right and a taking is merely being accurate. Patent law clearly grants a bundle of sticks at the time of the patent grant. I need no “higher source of authority” for that bundle of sticks. And yes, there is a difference between “causes of action” and personal property per se. Further, you seem confused between Congress acting and the Executive Agency acting. You are aware of the difference, right? An executive agency simply does not have the power that Congress does, and even Congress, when involved in a taking does not have carte blanche power. What I have identified as an issue is an executive agency personnel – not Congress – stripping from a legally presumed valid patent some of the sticks of that patent’s property rights in that very first determination with that same determination cloaked in secrecy and strictly being not appealable to any (Article III) court. I fail to see how this sequence of events as I describe is in any way “begging the question.” Perhaps you can explain yourself with some grounding.

    Thanks.

  23. Now, I understand your concern. I just find that being able to appeal the ultimate determination of patentability on the merits (while not the choice to grant review) to Art. III judges gives adequate safeguards.

  24. Also, check your link at #5, because I don’t see any of this in there.

  25. Andrew,

    You may be correct in the long run, but my concern is not that long run (to paraphrase a joke, we are all dead in the long run anyway). My concern is the apparent disregard from those in the government towards the rights of my clients.

    There simply is a taking of some of the sticks of the property bundle by an executive agency and its Article I court mechanism that are (or can easily be) arbitrary, undocumented and not addressable in a proper (Article III) forum. The safe guards that you see and think ‘adequate’ are simply not the safeguards to a different problem. My apologies if I seem overly strident on making sure that the distinction is kept firmly in mind, but I see a very real legal problem with the current set-up. Very real sticks of personal property rights are left to the arbitrary whim of an unaccountable (and un-appealable) process.

    The link at post 5 leads to a discussion on the historical nature of the scire facies mechanism which no longer exists in patent law (and in essence is the equivalent mechanism – from a legislative standpoint – for what is being done in the executive branch). Ned Heller has also discussed in some detail the public/private right divide. Since I do not write books on blogs, and since there must be some level of knowledge assumed to be had by participants on a legal blog, I do not go into the nitty gritty detail. Of course, this is a far cry from MaxDrei’s out of nowhere attack.

  26. Correction:

    “are simply not the safeguards to a different problem”

    should read

    “are simply not the safeguards to the same problem”

  27. SadPanda-

    What I did was point out that you were wrong and what you said was internally inconsistent. You were the one who opened this up when you, who admittedly know knowing about the law, made a ridiculous comment that criticized my article as being an example of what is wrong with the system. Let’s not forget that you were the one that claimed it was a problem that I suggested gaming the system rather than having good, strong, valid patents. Of course, nothing could be further from the truth. The article says nothing of the kind, and my voluminous writings over and over again discuss the need for good, strong, valid, well written patents. So your lack of knowledge and careless regard for the truth lead you to criticize me. Then you have the audacity to get on your high horse? WOW!

    You say: “Getting up on a high horse and claiming you know better than anyone else does nothing to make your argument persuasive…”

    And therein lies the problem. You don’t know anything about patents or the law and you think someone who is an expert like myself should not claim superior knowledge. What an extraordinarily ignorant thing to say! You can call this an insult if that makes you feel better, but the truth is that what you have said is indeed ignorant. You might as well say: “just because you are an expert and I admit to knowing nothing about the law doesn’t mean that you have superior knowledge, after all even without any expertise my opinion, no matter how wrong, is equivalent.”

    Do you go to your doctor and make erroneous statements about health and medicine and then get upset when the doctor points out you are wrong? Of course you don’t, yet you have no problem believing that you know enough about patents and the law to criticize my article.

    Perhaps you should inform yourself about the law and about patents before you make erroneous assertions in a patent law forum.

    Finally, in the last line of your comment you misrepresent what I said, which I understand is hardly surprising. Still I did not tell you to stick your head in the sand. I said: “then please go right ahead and keep your head firmly planted in the sand.” You see, I don’t have to tell you to stick your head in the sand because it is already there. You know nothing about what you are commenting on yet you want an expert like me to seriously consider your erroneous, ridiculous comments. How self important.

    Like I said before, you and people like you are the problem. You haven’t a clue but that doesn’t stop you from having a misinformed opinion. Worse, with your misinformed opinion you publicly opine. When you don’t know what you are talking about you really should keep your mouth shut.

  28. I could share that concern to an extent – after all, if we we don’t do this for the clients, then who do we do it for?

    I would submit that the same law, through different provisions, both grants the presumption (§ 282) and provides for review mechanisms that don’t give the presumption (§ 316(e).) Congress giveth and Congress taketh away. Where you would argue that it’s a 5th Amendment taking, I would argue that the provisions just create an implied reservation of rights. In fact, any of the provisions that would result in the loss of the patent grant, such as inequitable conduct, etc., create a reservation of rights. One might argue that this implied reservation creates a cloud on title, so to speak, and that the combination of BRI and no presumption of validity creates a bigger cloud. However, this is an issue of practicality and business certainty, not an issue of taking.

    As far as the power that the executive branch, through the USPTO, has over the review process, I just don’t see any more room for abuse here than in the actual examination and grant.

  29. Interesting viewpoint Andrew.

    But as I initially mentioned, even Congress engaged in a taking does not have carte blanche power, and the problems I noted remain in that the very rubric of the decision taking sticks away is neither spelled out, documented, nor appealable.

    All of your other reservations have due process controls. This mechanism notably does not. Please tell me that you recognize a problem with taking (even legislative taking) and no due process control…

    And you quite miss the point in attempting to compare the executive agency action with a prior-grant action. That is precisely a problem (especially keeping in mind the legislative mechanism for action was removed, as noted). It is a non-argument to compare the two. I am saddened to a degree that you continue to not see this.

  30. It’s not a taking if the rights were never fully given. When we talk about the taking, we’re referring to the patentee’s loss of their presumption of validity, right? Again, I submit that statutory framework creates a reservation of rights – you can’t lose what you never fully had.

    I would also think that the non-reviewability of the Director’s decision would work in favor of the patentee, not the challenger. If the Director proceeds, the final decision on the merits is appealable directly to the CAFC or in district court. If the director decides not to proceed, the challenger’s only recourse is to sue for invalidity in district court, where the patentee has the presumption of validity.

  31. That’s just it, Andrew – the rights are fully given. Absent the point in question (the point of my concern), those rights remain fully vested in the patent holder. I do note that you want to change the view of the right, but you cannot. The right at grant is there. A mechanism for review does not change that right, as such a mechanism is merely (as you put it) an implied reservation of rights. The law is NOT actually written that way. Your view is interesting, but it is not the law.

    As to the non-reviewability, I will also disagree with you. The challenger has no actual sticks in the crosshairs. The patent holder does. Your ‘drawback’ is merely the status quo as written by Congress and is how the law is supposed to work.

    And please, what must be for the fourth time now, STOP trying to squeeze in the separate appeal on the merits point. We are expressly not talking about that point, and that point has nothing to do with my concern.

  32. At #5 above, anon provides a Link to Ned Heller’s discourse on the writ of scire facias.

    http://en.wikipedia.org/wiki/Scire_facias

    From then on, he witters on about “bundles of sticks”. Could it be that he is confusing “facias” with “Fasces”?

    http://en.wikipedia.org/wiki/Fasces

    Just wondering.

  33. MaxDrei,

    Do you have any property law training? You really should if you are in this field.