How the America Invents Act Harmed Inventors

By Paul Morinville
September 10, 2016

“The America Invents Act (AIA) was the single worst disaster in the 226 year history of the U.S. patent system. The AIA did very real damage – enough to put many inventors out of business and discourage many others.”

Start brick wallFor inventors, those who create most of America’s new jobs, the America Invents Act (AIA) was the single worst disaster in the 226 year history of the U.S. patent system. The AIA did very real damage – enough to put many inventors out of business and discourage many others. Of course, it was a great new law for the large multinational corporations who pumped hundreds of millions of dollars into Washington D.C. in the form of political contributions and funding for a massive public relations campaign centered on a patent troll villain. This fictional patent troll was based on a couple of bad actors. Indeed, the New York Attorney General investigated MPHJ, who was accused of being a bad actor. In that investigation, the NY AG conducted a nationwide search for nefarious demand letters that would lead them to more patent trolls. After several months of investigation, the NY AG found six examples of nefarious demand letters in a multi-month nationwide search. That’s right – six – only six. Yet the patent troll remained the narrative driving the passage of the AIA and is still the narrative of the infringer lobby in their effort to pass the Innovation Act. That is because it is really just a smokescreen, a red herring based on slivers of truth and dressed out with unsubstantiated false allegations that is intended to mystify the true nature of patent reform. This smokescreen provided cover for lawmakers to pass the AIA and effectively transfer the property rights of small inventors to the large multinational corporations led by Google, the same multinationals who paid for it in Washington.

During the run up to passage of the AIA, the infringer lobby pushed “first to file” to the front of the debate and made it appear as the main issue of contention among inventors. However, first to file was a false flag. It was pushed out to obfuscate the most damaging part of the AIA. The real damage was hidden in the AIA’s creation of the Patent Trial and Appeals Board (PTAB) and three new procedures to invalidate issued patents – Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method Review (CBM). Pushing first to file to the forefront of the debate effectively hid PTAB procedures from honest and open debate.

Indeed, first to file was an issue that could be understood by most inventors. Many rightfully objected that it would force patenting before the invention was fully baked thus increasing costs and risk of theft. That objection and others are proving to be true as illustrated in this article about the Young Inventor’s Showcase in Houston. However, litigation experience was required to understand the damage of the PTABs and since less than 2.3% of patents are ever litigated, only a very small subset of inventors have ever been forced by infringers to defend their patent rights. Of those, an even smaller subset knew about the provisions in the AIA, could project the damage those provisions would cause, and were bold enough to say something. Ron Katznelson comes to mind, but there were a handful of others. Inventors were just not organized nor were they educated educated, and those who were did not have the right Washington connections. Inventors who did stand up were sidelined and disparaged by the infringer lobby. Effectively, inventors were silenced by Congress, with independent inventors not even given a seat at the table or called as witnesses at any hearing.

From the perspective of some independent inventor working in their garage or basement to create their next consumer product, phone app, electronic device or something else, why should they keep up with Washington politics anyway? After all, we have a Constitution. In addition, black letter law and over 200 years of precedent had well established that an issued patent is a presumed valid private property right, which could only be invalidated in an Article III court. We all learned about patents in grade school. For the entire history of America, patents had enabled inventors to get a return on their hard work because a patent could be leveraged for investment to commercialize the invention or to license it so others could. Why would any lawmaker want to change that?

5th-anniversary-200But, if you do not pay attention to politics, it eventually pays attention to you. The AIA turned the patent system on its head, and today inventors can scarcely do anything with their patents. I’ve been to dozens of inventor clubs in the last six months talking about patent reform. Inventors are walking away from the patent system en mass, which is exactly what the large multinational corporations that supported the demise of the American patent system wanted. These independent inventors can’t license their inventions, which means they can’t fund their companies to continue to research, develop and commercialize their inventions. This was the goal of the large multinational corporations. Each and every one of them obtained substantial benefit from the patent system, which is how they rose to where they are today. Even Google, the most vociferous of the anti-patent corporations filed two patent applications on their search algorithm before they even acquired the URL Google.com.

If inventors can’t make money by inventing, they stop… and that is what is happening all across America. Some inventor support companies have laid off as much as 70% of their staff. The canary is not only unconscious, it is burning in flames threatening to ignite the entire coalmine. Congress and regulators must take note. The market has collapsed for inventors. This is a serious national issue that will negatively affect a generation of job growth. Unfortunately the results are slow burning and hidden, but the long-term damage will become clear nonetheless.

Entrepreneurial inventors and the start-ups that rely on the innovation generate most of America’s new jobs and the collapse of the patent system is a major reason why America’s real job market (as opposed to the fiction delivered monthly by the Department of Labor) is stagnant and our economy is not growing. Those familiar with the innovation crisis in America, which has been caused by a demise of the U.S. patent system, easily understand why GDP is growing at an abysmal 1% to 2%. Given the ingenuity found in America it is embarrassing that we suffer in this lackluster economy.

Prior to the AIA, a patent was a highly valuable asset capable of attracting capital to startup new technology companies. The deck was rearranged by the AIA to radically favor infringers to the point that today, a patent is a liability. Both inventors and investors now associate a patent with high cost and high risk of even higher cost. It provides no barrier to entry because since eBay v. MercExchange it is no longer an exclusive right. Instead the public good must be proven, an impossible task in most cases. A single patent can scarcely be defended at all because most contingency attorneys and investors have left the patent business. Most patents cannot be sold unless they are part of a large portfolio often measured in hundreds or thousands. Even those few patents that can still be sold or defended are worth pennies on the dollar.

The AIA is a certified disaster, and PTAB procedures are the core reason why.

TO BE CONTINUED… How the PTAB Has Harmed Inventors. 

The Author

Paul Morinville

Paul Morinville is Managing Director of US Inventor, Inc., which is an inventor organization working in Washington DC and around the US to advocate for strong patent protection for inventors and startups. Paul has been walking the halls of Congress knocking on doors and sitting down with hundreds of offices to explain the damage suffered by inventors due to patent reforms. Paul is an independent inventor with dozens of patents and pending patent applications in enterprise software. He is also CEO of OrgStructure, LLC, an early stage enterprise middleware provider in Northwest Indiana.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 37 Comments comments.

  1. Appearance of ... September 10, 2016 3:32 pm

    Although I am not thrilled with AIA, I think that most of the problem has been in the implementation. If PTAB actually allowed amended claims, and if there wasn’t all this silly (and mostly ultra vires) patent eligibility nonsense, the patent system would be in much better shape.

    Is the problem really the laws, or rather how they have been administered?

  2. angry dude September 10, 2016 4:01 pm

    US Patent system was already dead for independent inventors after Ebay

    PTAB or no PTAB – who cares if he’s buried in dirt or cremated? I don’t

    Amen brothers

  3. Paul Morinville September 10, 2016 9:01 pm

    Appearance of…, You ask: “Is the problem really the laws, or rather how they have been administered?”

    That question goes to the heart of what a patent system is and who it is intended to benefit. If it is intended for a patent to be solely an instrument of litigation, the administration of the current laws is the problem. However, if the patent system is intended to promote the progress, make new technologies available to the public, create jobs and advance our economy, the laws themselves are the problem and no amount of corrective action will help.

    While the most visible part of the patent system is litigation, litigation is the last stage of the patent system. The first stage is an inventor with a patented invention. Most inventors have only the patent to leverage to attract investment at the earliest stages of a startup. Pre-AIA and pre-eBay, a patent represented a presumed valid exclusive right. This did two things. First it gave early stage investors a degree of confidence that the invention would not be stolen thus reducing the risk that the technology will be infringed and therefore increasing the success rate of the startup. Second, if some huge company did steal it killing the startup, the investor could take control of the patent to return the investment. That would generally be done through litigation – the end phase of the patent system.

    It is the early stage of the patent system that matters. If this early stage is successful, the end stage, litigation, need not happen. PTAB’s have killed the early stage by substantially raising the cost and risk of litigating patents to the point that it is now a liability for the investor to take control of a patent if the startup fails. As a result, investors are staying away from high risk, early stage technology startups, the companies that provide most of our new technologies and new jobs. And rightfully so. PTAB’s make a patent a perpetual target for litigation and there is nothing a patent holder can do to avoid that risk. PTAB’s can be launched by anyone, even people not at all related to the technology and not a party to any litigation, at almost any time. The cost to the patent holder is hundreds of thousands of dollars (sometimes millions) and many years of the patent’s life. If you happen to be in the minuscule percentage of survivors, another PTAB can be filed again…. And again.

    I don’t think anyone who reads this blog wants litigation, but PTAB’s force litigation by killing the value of a patent asset as it relates to the earliest stages of starting up a company based on new patented technology. If you can’t startup a company, you are left to litigate the patent.

    PTAB’s must be eliminated if we are to have our job creation engine back. There is no other way. Massaging it does not change the underlying fundamental drivers of why PTAB’s kill startups.

  4. Benny September 11, 2016 5:25 am

    First-to-file…post grant review…isn’t that how the rest of the world worked before AIA?
    You haven’t got around to using the metric system like everyone else, either.

  5. Anon September 11, 2016 7:54 am

    In case you have not yet figured this out, Benny, our patent system was different than “the rest of the world” was aligned with the US having the number one innovation culture OF the world.

    Tell me who benefits most from this desire of yours to have a One World Order? (hint: it is the large international corporations, that is who). The ones who owe allegiance to NO one nation.

  6. Benny September 11, 2016 8:09 am

    Anon,
    There is life on the other side of the Atlantic. There are also commercial markets there, and not just for big corporations. Even the power supplies are dual use 115V/230V, it actually does make sense for manufacturers to have an aligned IP structure as well. Perhaps you could tell me who stands to lose from having a unified patent law method in US/EU/CN or wherever else ?

  7. Pro Se September 11, 2016 9:31 am

    Paul, great article. There’s another big issue that needs attention: I just got out of 3 IPRs filed against me (Independent Inventor aka the “little guy”) from a highly funded IPR assertion entity that represent major companies. I lost 9 months of viable enforcement time on my patents due to courts conditioned to “stay” litigation. These are 9 months of my rights just ripped from me with no compensation.

  8. Mark Syman September 11, 2016 11:33 am

    Benny – there is a lot less life on the east side of the Atlantic, which is why our company has found hiring engineers in Europe a lot easier than in the U.S. Who loses from “having a unified patent law method in US/EU/CN or wherever else ?” Well that depends on whose law are modified to conform with whose law. If the U.S. amends their law to conform to the weaker international rules, than the U.S. loses, especially U.S. investors and U.S. inventors. The U.S. has provided a legal and financial infrastructure that has supported small tech companies, but we are losing that, as shown by the fewer number of business formations in the U.S. America is starting to look more and more like Europe because our laws are starting to look more and more like Europe.

  9. Paul Morinville September 11, 2016 11:55 am

    Benny, Ah, yes, global “harmonization”, fiction created by the same folks who brought us the patent troll fiction. I have this simple question for you. If the rest of the world had such a great patent system, why did the vast majority of new inventions come from the U.S.? Since the U.S. has for centuries been the source of the vast majority of new inventions, would it not make more sense to “harmonize” the rest of the world to the U.S. patent system and not the other way around?

  10. Robert September 11, 2016 1:41 pm

    Paul,

    Frankly this article completely ignores prior art. The GAO recommended PTO study IPR’s to ascertain facts such as who is suing,who is losing etc. When the PTO gets around to doing the study they must include an analysis of the total search effort expended by both parties before the patent issued. I suspect that when the study is eventually done it will be found that little to none searching was done by either party.

    You are correct that the early stage is the mot important in the patent process but the first stage is not, I repeat not, an issued patent but ascertaining the novelty of the idea.

    The prior art regime in the US is broken. It is posited on a 200 year old business model where only the PTO is responsible for ascertaining the prior art. Patent searching is full time occupation so therefore examiners are only part time searchers. The PTO has no idea how long a “thorough” (GAO wording) search takes and continues to pretend that they do it correctly. The presumption of validity rests on a very weak pillar. IPR’s can only be brought for 102 or 103 reasons and therefore they are showing that the prior art regime is rip for reform.

    Question for pro se, did you do any searching to identify a body of art before filing?

  11. Benny September 11, 2016 2:25 pm

    Paul,
    I’m not sure that the US does have a majority count on innovaton. Simply counting patents isn’t a reliable indication, given the number of divisonals, continuations, foreign filers and frivolous patents. I may be biased, but perhaps it wouldn’t harm the good ol’ US of A to be a bit more like Europe. (excludng France, of course)
    What vast majority of new inventions do you refer to? The jet engine? Radio? Electronic Computer?

  12. Angry porcupine September 11, 2016 3:29 pm

    Benny,
    As a non-US Patent Attorney with 20 years of experience in patent prosecution ( US, EP, CN etc.) let me tell you something. During the last 20 years I have been whatching the initially great US patent system slowly being ripped apart and degraded to the point of decay by a bunch of vicious multinationals bribing legislators as well as by lemming-like US corporations suffering from creative impotence and ecessive bean-counting strategies. during those years, they succesfuly ripped apart the strategic value of CONs and CIPs as tools for helping individual cash limited inventors and startups, created the mythical troll bogus stories, and finally delivered the “coup de gras” to the faltering US patent system in the AIA which unconstituionally created a completely biased patent system which practically barrs enterpreneurs with little cash and bribing power from using a patent as the tool it was initially meant by congress to be – a system eqalizing the playing ground and carefully balancing the interests of small inventors and startups inventors with those of large corporations and big money.

    The US Patent system is in the slippery slope to a fast demise, decay and stagnation – and the US as a world economical power will follow suit ( admittedly, with a delay of several years).

    As for your arguments about the EP system, Europe is the sick old man of the world. The European Patent system is built on the shoulders of feudalism and servitude in stark contrast to the US constitution which put the rights of the individual to freedom and property at the forefront. The EU is breaking at the seems and the breaxit is just the first sign of things to come.
    The US patent system has reached a state ( bloated, slow, corrupted, unaffordable and unfair) in which the last resort of the small inventors may be the return to the “good old” trade secret method.

    I am very sorry to have witnessed the US system’s demise, I wish it would have been otherwise but unfortunately, unless grass-root movement pressure forces congress to interfere, I don’t see an easy way of avoiding the consequences for the US economy and US enterpreneurial culture.

  13. Mark Syman September 11, 2016 3:53 pm

    Benny – just look at the important features of things you buy, you will get your answer. I have been to Europe a lot, and notice the small houses, the U.S. technology that is ubiquitous across Europe and the complete lack of optimism amoung Europeans. No, we really don’t want America to become like Europe.

  14. Anon September 11, 2016 4:02 pm

    Thank you Mark.

    Benny is obviously oblivious to the American innovation experience, nor does his recognize the difference in “life” that such innovation has long heralded for the US perspective.

    He just cannot appreciate that which he just does not know.

  15. Pro Se September 11, 2016 4:37 pm

    @Robert – Yes, extensive.. over 200+ state of the art references and NPL.

  16. Paul Morinville September 11, 2016 4:39 pm

    Robert, I agree that the problem must be fixed in examination, not in litigation. I presume that is your position based on your comments.

    Given that presumption, what did the AIA do to correct anything in examination? I can think of nothing, so nothing is addressed.

    A bonus question just for fun, what does the Innovation Act do to correct problems in examination?

  17. Pro Se September 11, 2016 4:43 pm

    Note: from my experience with the PTAB, with my cases they recognized my spec as being detailed enough where they accepted all of my claim term constructions and none of the petitioner’s “makebelieve” construction under the BRI standard.. they even acknowledged in their denial that I acted as my own lexicographer.. which now is part of my file wrappers and sets in stone the constructions… I won’t have to play these construction games ever again.

  18. Benny September 11, 2016 10:14 pm

    Paul,
    You asked what the AIA did to correct anything in examination. Third party submissions.

  19. Reg September 12, 2016 3:43 am

    Not sure about the premise of this article. First, businesses large and small would disagree with the casual dismissal of the patent troll issue. The NY AG example to minimize the impact of patent trolls recalls the lesson ‘lack of evidence is not evidence of a lack.” (E.g., just b/c you don’t know if person A ate lunch today doesn’t mean they didn’t.) The example also conflates MPHJ w/ all patent trolls.

    IRT the claim that less than 2.3% of patents are litigated, while that may be true, it is also commonly claimed that only ~5% of patents are commercially relevant (a sobering statistic to most practitioners); and so 95% of patents are ultimately not worth much of anything, let alone the cost of litigation. For simplicity, if we assume that only commercially relevant patents get litigated, that would result in a staggering 46% litigation rate.

    While there needs to be away to cull poor quality patents w/o going through litigation, the challenge with the PTAB processes may relate more to loose criteria for 103-based invalidaiton.

  20. Anon September 12, 2016 6:05 am

    Benny,

    That is a post grant band-aid that is doing the harm.

    You really do not seem to understand the issues here in the US, with how our sovereign had structured the property right that goes hand in hand with OUR innovation culture.

    At all.

  21. Curious September 12, 2016 9:36 am

    You asked what the AIA did to correct anything in examination. Third party submissions.
    LOL — 5 year anniversary of AIA and I have yet to see even a single third party submission. Examination (which includes searching) needs to be done by examiners — not by crowd sourcing.

  22. EG September 12, 2016 11:06 am

    Hey Paul,

    Agree completely that the AIA (Abominable Inane Act) is a license for the multi-national Goliaths (e.g., Google) to steal innovation from the small Davids of innovation.

  23. Robert September 12, 2016 12:58 pm

    Paul,

    You read my comment correctly, the problem is at the examination level and nothing has happened on that front. What IPR’s are doing is illuminating the prior art deficiency in these cases. Prior art deficiency exist across the board but we only see proof of it now, and must reckoned with it, because of IPR’s. The prior art regime is crying for reform.

    Benny, 3rd party submissions are not a substitute for a focused prior art search.

    @ 21 Curious I hope you are not suggesting that crowd sourcing is equivalent to a focused search because they are not even in the same wheelhouse. As for crowd sourcing though, the PTO dropped that effort for legal reasons.

    Patent searching is a full time occupation. Professional patent searchers search all day every day. If the objective is a “thorough” search then you need a professional searcher to do the job. Examiners are part time searchers. The system operates under a 200 year old model that says the search job has to be appended to the examiner. Why? Because that’s the way it’s always been done! That is half the reason the situation today exists. (The other half falls onto the applicant who should be encouraged by PTO incentive to search but that’s another topic).

    Examiners have a different objective when doing a search than do professional searchers. Examiners look for art to apply to a claim. Professional searchers put together a body of art to support or help define the invention. The PTO can separate the functions and form a separate search group, or some kind of variation thereof. Professional searchers would then be doing the searching, producing better results on a consistent basis, and eventually IPR’s will wither away.

    To pro se I misunderstood your original post sorry. Congratulations on you win.

  24. Benny September 12, 2016 1:18 pm

    Curious,
    you haven’t seen third party submissions because you haven’t been looking. I’ve seen them. Obviously not filed by “crowd sourcing’ but by competitors, who spend the time and effort to do a far better job of searching than the examiner – after all, they have a financial incentive.

  25. Robert September 12, 2016 1:40 pm

    The PTO says 600,000 submissions spread across 1% of cases since 2012. The problem here as I understand it is that by submitting prior art before hand the competitor may actually help strengthen the patent. It seems to me this choice would be matter specific.

  26. Paul Morinville September 12, 2016 1:55 pm

    Reg, “First, businesses large and small would disagree with the casual dismissal of the patent troll issue.” I must correct this myth concocted by the Google lobby… large multinationals who do not like being sued for stealing private property from little guys would disagree – after all they created the myth in the first place. Small companies do not disagree. You may bring up that some phone ap companies complain about patent trolls and were allowed to testify in Congress, but if you research the companies complaining, they are largely reliant on Google or Apple for their existence as they sell through their respective ap stores – they complain in their place to keep their place.

    “The example also conflates MPHJ w/ all patent trolls.” Isn’t that exactly what the infringer lobby did with MPHJ? They were made the poster boy of the patent troll. Now you complain? The fact that the NY AG could only find six nefarious demand letters (MPHJ was not one of the six) should inform you to the massive public relations campaign faking a problem so that my rights and those of thousands of small inventors can be transferred to the extremely wealthy multinational corporations free of charge.

    “… the challenge with the PTAB processes may relate more to loose criteria for 103-based invalidaiton.” The challenge of the PTAB processes has nothing to do with 103 based invalidation. It has everything to do with administrative law judges (employees of the president with a career path driven by the president) invalidating property rights without due process. The failure of the Supreme Court to correct this is astonishing – property rights are property rights. The PTAB is now the wagging tail of a political dog – the president is can give and take property without the courts.

    We fought a revolution to eliminate this sort of problem, yet we allowed a president corrupted by Google and funded by multinationals, with no allegiance to any nation, to create it again.

    “if we assume that only commercially relevant patents get litigated, that would result in a staggering 46% litigation rate.” That is indeed a staggering rate of patent theft by multinational corporations. We must do something to stop this theft.

  27. Paul Morinville September 12, 2016 2:26 pm

    Robert, “What IPR’s are doing is illuminating the prior art deficiency in these cases.” Perhaps that is true in some limited number of cases. But that relies on the presumption that the PTAB (and the PTO in general) is not corrupted by other interests. My observation that the PTAB contorts the prior art with the directed purpose of finding the patent invalid.

  28. Robert September 12, 2016 3:05 pm

    Paul,

    That’s very cynical. I, on the other hand, think that deficient prior art will be found in everyone of them. As GAO suggested, IPR’s need to be studied and I add with an eye toward that question. I wish someone would pay me to evaluate all 750 or so cases to confirm or deny the hypothesis. To get to your position that prior art is contorted by the PTO, every single case therefore would need to be looked at to.

    Remember the PTO proposed mandatory searching which actually passed the house in ’07 but never got voted on by the Senate as it was still pending when Obama took office. IPR was introduced after mandatory searching failed. Had the bill with mandatory searching passed, there would be no IPR’s today.

  29. Paul Morinville September 12, 2016 3:27 pm

    Robert, Just look at the numbers. Patents that go into PTAB’s have already been examined by the PTO. They have had a prior art search. Arguments for and against the prior art have been made. Claims have been adjusted in light of the prior art. Then those that become commercially viable and stolen are defended by the patent owner in court. The patent thief challenges the patents (sometimes to the same prior art already looked at by the PTO) in a PTAB. The PTAB invalidates what is probably 90% of all patents that they look at giving the patent holder no chance to amend claims even though that is allowed by law. Then the PTO puts out bogus stats on invalidation rates by obfuscating the true effect of claim invalidation. They argue that they are not invalidating patents at a high rate because the claims they invalidate are only about 60% (I can’t remember the exact percentage). What they do not tell you is that these claims are selected by infringers and are certainly the key claims in the patent, thus invalidating the key claims castrates the patent and kills the infringement suit. The patent is technically still valid – the patent holder can just do nothing with it.

    The net effect of this PTO conduct is wiping out the investment value in ALL patents and crashing our nations innovation engine.

    Am I really cynical? Well, I am not living in Pollyanna. I think I am a realist.

  30. Robert September 12, 2016 4:45 pm

    Paul,

    The word cynical is only directed to the phrase “PTAB contorts the prior art with the directed purpose of finding the patent invalid” nothing else.

    As for searching, no I disagree and that is my point. The PTO does not typically do a quality search. They do something quick to find art to apply to a claim and stop. Cuozzo was searched by the examiner for 8 minutes that’s it. The art applied by the PTAB was submitted by the infringer after they, I guess, paid someone to look. Cuozzo was overturned by low hanging fruit.

    Another case I looked at the applicant submitted 1300 documents. Applicants should realize that an examiner is not going to devote precious time to looking at gargantuan IDS material and instead will do there own search. The two references applied by the PTAB were among the references submitted by the applicant. The examiner in this case searched for all of 29 minutes. The art was found only after someone actually looked at all 1300 documents and judged two of them pertinent.

    The PTO long ago lost the ability to perform quality searching and this needs to be fixed. The applicant as a role in this too I think but that is another subject.

  31. Anon September 12, 2016 5:47 pm

    Robert,

    You must be thinking of some other patent law than the US patent law.

    (I hope that THAT is in your “another subject”)

  32. Robert September 12, 2016 6:33 pm

    Actually regulations not the law. I think the Office should provide incentives to encourage applicants to search. Incentives to search does not equate to “searching in place of.” The patent office would still be required to conduct a search but there would be good, and maybe even the best, art in the file at the beginning of the process thereby indicating where the PTO should look.

    At the same time though the Duty to Disclose should be reworded to actually address inequitable conduct. Why would an applicant submit 1300 documents? I’m guessing to avoid an inequitable conduct accusation. How many of the 1300 were actually material to the invention. The IPR suggests at least two.

    In Cuozzo it appears that the applicants representative did a search only to sell an application writing service. With incentive on the table, the company that wrote the application, not a law firm, would have to actually conduct a quality search in order to qualify for the incentive.

    In the public sector searching is appended to the examiner. In the private sector it is appended to the lawyer or more accurately the person writing the application. Positive change is not going to happen unless searching is acknowledged as a separate function. Otherwise you continue with the status quo.

    That is the “another subject” in short.

  33. Anon September 12, 2016 8:08 pm

    Robert,

    Sorry, but your suggestion falters right from the start with “Incentives to search does not equate to “searching in place of.”

    Your suggestion simply loses the impact of where the proper focus needs to be right from the start. In fact I dare say that without more, your suggestion would only mean that the Office would simply become even more inept at THEIR job.

    As far as current submission practices – well, that is simply yet another court induced patent profanity offshoot that you see. Nothing more and nothing less.

    And no, unless you make it an actual legal requirement, the customer (who DOES have the present control and could simply ask the attorney – and pay for it – to do a world class search.

    That is just not the attorneys place to require of the applicant (outside of informed consent not to do a rigorous search – but such “best practices” simply are not at point here).

  34. Robert September 12, 2016 9:25 pm

    Anon,

    Please remember that the central idea I espoused is to separate the search task from the remainder of the examination process. I also said that quality searching can only be derived from people who do search work full time, not part time as is now the case. The PTO should have their own full time search cadre. That represents one policy change which is absolutely where the proper focus needs to be.

    Incentives is a second policy change. The problem when speaking of patent quality is that all patents are not the same. Assuming the 5% valuable number not all applications necessitate a high quality “thorough” search. Many applicants (and here large entities, small entities, and micro entities have different goals) know this and can decide whether or not to pursue the incentives. Research shows (I can’t cite it at the moment) that applicants know when they are patenting something valuable and expend resources thereby reflecting their internal value of the invention. Many large entities obtain patents for purposes other than licensing or enforcement which is where value lies. Basically, I’m suggesting that the applicant should have options in the search decision. That is not the case now. A legal requirement is search is dead on arrival.

    Thanks for the feedback.

  35. staff September 13, 2016 8:44 pm

    ‘For inventors, those who create most of America’s new jobs, the America Invents Act (AIA) was the single worst disaster in the 226 year history of the U.S. patent system. ‘

    We agree, it was disastrous for inventors and small entities.

    For our position and the changes we advocate (the rest of the truth) to truly reform the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com

  36. Curious September 15, 2016 5:27 pm

    Please remember that the central idea I espoused is to separate the search task from the remainder of the examination process.
    A fine approach if we only had to worry about 35 USC 102. However, 35 USC 103 changes how searches should be conducted. Once a good primary reference has been found, it really takes knowledge of the examination process (e.g., is it “analogous” prior art, is there a rational underpinning for the combination) to find the additional references.

  37. Robert September 15, 2016 7:06 pm

    Curious,

    You are absolutely correct. My question for you is why would expect a professional searcher to not practice this? It takes two years to train a full searcher and the cognizance you mention is part of the process . It is still just finding art; not applying the art in an office action where knowledge of the law is more important.