PTO Director Needed – Swamp Resistance Desirable

By John White
December 27, 2016

Lamb in the mirrorThis election, like every election, includes the chorus chant: “drain the swamp”! You’d think that as often as it gets said – every election – it might eventually result in the swamp (i.e., Washington, D.C.) being somewhat less full than it was before. Not so. In fact, never so. Okay, then, why so? Well, here’s a sample story from the swamp.

I attended a lovely patent oriented gala in D.C. earlier this month. Good food, lovely atmosphere, engaging conversation, and numerous patent friends I’ve known a long, long time. During the event, many worthy inventors received recognition for pharma creations in the area of cancer treatments. None of the recipients, I will observe, talked about making money using patents, instead they all talked about raising money using patents and, then, helping patients. I couldn’t help but notice, however, that a past award winner, 1998, had had their patent invalidated by the Supreme Court in the recent Myriad decision. But, I digress.

I looked around the room at the members of what is the “patent swamp” circa 2016. This was an important event, so all the swamp creatures were there. All nice folks, all well intended, and all a part of the problem. Likely, including me, inasmuch as I, myself, used to ply the swamp waters for the PTO in the mid-80’s as a patent examiner and speechwriter for then head of the Office, Commissioner Quiqq.

You see, these creatures have inhabited the D.C. swamp for many years as Hill staffers, current and former PTO officials, Court Clerks, Association Officials, PTO Advisory board members, and lobbyists. And, they have done much: to wit: They were all here for AIPA, which made a total train wreck of 35 USC 102e in the process. They have been here throughout the absolute serial disaster that has become the norm in Supreme Court patent jurisprudence. End-to-end awful, from Festo forward to Alice, to the absolute gut punch denial of cert in Sequenom. They were all here, as well, playing their dutiful roles, when the PTO was sued in District Court to stop a Rules package for continuations. They were all present for the long gestation, passage, and then implementation of the AIA. Yup, that’s right, happy PTAB to you too buddy; one-and-all!

And yet, despite this record of unmatched destruction, these same swamp creatures are vying for notice from the Trump Transition team to “fix” the patent system. Lobbyists intent on further “reforming” the patent system for what their clients determine is the better (i.e., better for them) are already tickling the keys of their computers, and the bank accounts of their benefactors, to rush into the void left in the wake of this election. Emails and meetings and lunches and dinners abound. I can only say one thing – please stop!

What can we do, those of us in apparent patent flyover country, i.e., those of us not in D.C. or Northern California? Watch with dismay I expect. You see, you cannot rid yourself of the swamp creatures. Further, no single one of these swamp creatures is per se bad, each has good characteristics, but collectively, by any objective measure, the results are beyond debate. Awful. The swamp creatures represent associations and groupings of patent system stake holders. These would include Silicon Valley giants, Internet elite, retailers, patent owners, patent practitioners, licensing groups, universities, and even independent inventor groups. Doubtless, they all accomplish what they’ve told the clients they represent that they could accomplish. They have endless lives and persist administration to administration and Congress to Congress. They all “speak” for some interest. Alas, no one is left to speak for America. You know, the country whom the system is meant to benefit. Remember that country? Sometimes I find it increasingly difficult to remember America, or at least the America I grew up knowing.

If someone were there to speak for America that person would recognize the obvious. There is no historical evidence of any economy having a thriving innovation ecosystem without a solid, strong patent system. Similarly, one of the greatest threats faced by any business, particularly a start-up or small business, is the threat of frivolous litigation. But where is the honest broker to acknowledge truth? If there is one I don’t see it, and as one who has spent a career helping innovators of all stripes I find that rather odious.

Someone, somewhere (and not, please oh please, not an academic) needs to come forward and speak to what the system needs to accomplish for the benefit of the population beyond those in the swamp. The ultimate trick will be harnessing the swamp creatures, and their capacity to accomplish things, as a force for good.

The patent system is intended to instill motive in those with ideas and solutions, to then create and come forward with public disclosure. A patent is not a grant of right, you can certainly practice your invention (subject to the rights of others) without a patent, instead a patent is the public recognition of exclusive ownership for a limited period. This incentivized public disclosure creates buildings blocks upon which entire industries can be built.

The Wright brothers, on a micro budget, flew despite the repeated failings of the largest government (swamp) contract to date, to Langley, to accomplish the very same thing. You see, large entities like governments and corporations do not innovate very well, if at all; rather, people do. The patent system should be designed to sustain the people who innovate; and yet it has been systematically attacked by large entities, including this government, its lobbyists, and the Supreme Court. The system needs to be rebalanced with winners falling where they may, instead of the system being rigged this way and that at the behest of tides in the swamp.

I remember at the start of my patent career, with giddy naiveite, the judicial modesty from the Chakrabarty opinion. The Supreme Court (then, certainly not now) turned back a stack of doom filled amici against the patenting of life, with simple non-parsed phrasing that labeled the new life form “an article of manufacture”. End of decision; beginning of a new industry. Now, in contrast, the Supreme Court, flummoxed, remands for a definition of such terms! See Samsung v. Apple. If they were going to refuse to answer the single most relevant question presented in the case why take the case in the first place? This judicially activist Supreme Court conveniently reverts to an ultra conservative judicial philosophy of answering the least important question and leaving all others open when the issues get hard. Pathetic.

Can we realistically expect to drain the swamp? No, and certainly not any time soon. What the system needs at the PTO is someone who is, themselves, both “swamp resistant” and “swamp savvy”. Such a person needs to thrive in the swamp, work with the swamp creatures, and get things done. The swamp resistant Director also needs to be an able and credible advocate before Congress in turning back unhelpful elements of patent “reform”, with a veto if necessary. Manifestly, the ailing system needs a tweak here and there, not reform. As I have said, the tweak recipe is straightforward: The statute needs some new definitions for 35 USC 100 to overrule misguided Supreme Court decisions on patent eligibility (see Toxic Brew) and to overrule eBay. The post-grant procedures need fixing (see Curing the PTAB – 3 Fixes). Lastly, the PTO needs a Kappos style re-do as to attitude and operation (See Regime Change). If the swamp creatures will help, this can be done – and soon!

The Author

John White

John White is a Director at Soryn IP, a patent advisory and finance firm that, among a host of patent-centric offerings, assists parties in identifying and acquiring patent portfolios that satisfy strategic and business needs. Mr. White is also a US patent attorney and a principal lecturer/author of the PLI Patent Bar Review Course. Since John began teaching patent bar review courses in 1995, he has personally taught nearly 50% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in litigations and is regarded as a leading authority on patent practice and procedure. For more information please see his profile page.

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 30 Comments comments.

  1. Paul Morinville December 27, 2016 12:27 pm

    John, I absolutely love this article. However, just changing PTAB rules will never fix the PTAB. Rules will be adjusted by the next president depending on who is contributing to the politicians and the right party. It is the tail of a political dog that will wag back and forth so often that there will never be consistency. It is fundamentally the wrong approach to property rights. One office, the president, cannot both grant and invalidate the same property right. It is power akin to monarchs and dictators and the resulting property rights systems never work.

  2. EG December 27, 2016 1:40 pm

    Hey John,

    As Paul said, a great. Having grown up in the DC area, I knew (sadly) the “swamp” and the “creatures” that inhabited it.

    Only recently have they thoroughly “infested” the USPTO. The real demise didn’t start until eBay came out from the “creatures” that inhabit SCOTUS about a decade ago; it only got worse from there with Congress now pouring their “swamp” into the USPTO, so much so, it, and our patent system is now an “abyss.”

  3. Inventor Woes December 27, 2016 1:46 pm

    Wouldn’t a true draining of the swamp entail getting rid of the patent office altogether? Along with many other administrative agencies like the FDA?

  4. Inventor Woes December 27, 2016 1:47 pm

    What I mean to say is that we need to be specific and articulate reasons why certain areas of the government should be drained and not just use the “drain the swamp” motto for things we don’t like. There must be cogent arguments advanced.

  5. Tyler Durden December 27, 2016 4:54 pm

    Excellent article, John. A good discussion of both the underlying problems/origins and potential path(s) forward for improvement, while recognizing the unhelpfulness of the feel-good “drain the swamp” chant.

    I really hope the new administration, in selecting a new USPTO director, does look for an honest broker with Kappos-like effectiveness. (I worry we’ll get some financial sector crony who likes IPRs as short-selling tools.) I am also hopeful that CAFC nominations have USPTO registration numbers and aren’t ideologues. Only time will tell…

  6. Night Writer December 27, 2016 8:49 pm

    >>If someone were there to speak for America that person would recognize the obvious. There is no historical evidence of any economy having a thriving innovation ecosystem without a solid, strong patent system.

    Probably Rome never would have fallen if they had a patent system. They had all the ingredients there for an industrial revolution, but not incentive to innovate. Well, some –at about the level of Google.

  7. Inventor Woes December 27, 2016 10:34 pm

    “Probably Rome never would have fallen if they had a patent system. They had all the ingredients there for an industrial revolution, but not incentive to innovate. Well, some –at about the level of Google.”

    That seems like a baseless assertion. Rhetoric like that will only antagonize the anti-patent crowd for its sheer ridiculousness.

  8. JPM December 27, 2016 11:29 pm

    John,

    Great article, but the PTAB simply needs to be shutdown. It was setup to destroy patent rights, plain and simple. As an inventor who has litigated some patents during the past few years I can say from past experience that the PTAB is very unfair, and has absolutely decimated patent values. The statistics about the PTAB don’t lie, there is about an 80% chance that a patent will be killed during an IPR proceeding at the PTAB.

    Shut it down; It is a creature bought and paid for by the infringer lobby, it needs to go.

  9. Anon December 28, 2016 8:09 am

    A swamp is a vibrant ecosystem and the functionality of the watershed is extremely important.

    We need a better metaphor.

    😉

  10. Night Writer December 28, 2016 10:22 am

    @7 Inventor Woes “That seems like a baseless assertion. Rhetoric like that will only antagonize the anti-patent crowd for its sheer ridiculousness.”

    So, you made not one substantive comment. I see you are taking up the banner of the anti-patent judicial activists. Ridiculous? Seriously? You are a pretty ignorant person about Roman technology if you think that is ridiculous.

  11. Night Writer December 28, 2016 10:24 am

    @9: Anon: don’t be so PC. I think too that the swamp analogy is being used because DC was a swamp that was drained to form the city—and now–they are saying it has reverted to a swamp and not a functioning city of our government.

  12. Edward Heller December 28, 2016 10:45 am

    John, well I agree that Washington is too much controlled by the lobbyists, I do not fully support your view of what ails patent system. I think that business methods were never intended to be patented in the first place. I further think that patents on products of nature and laws of nature are not inventions. The Supreme Court is right on these issues.

    That said, the Supreme Court was gutless in Bilski when did not come out and actually say why the claims before it were unpatentable. They punted and gave us “abstract,” which clearly did not apply to the claims before in that case and have confused the law ever since.

    Personally, I know that I am way out of step with the average lobbyists in Washington and just about every issue. I was thoroughly against the AIA for every reason. I lead the fight against the PTAB and the IPRs in the courts.

    We need to break up the power that these Washington lobbyists have over Congress, over the PTO, and over the Federal Circuit. I would start by moving the Federal Circuit, at least the patent part of it, out of Washington to a place like Kansas City. The implications of that should be obvious. I would end the PTO advisory committee because it provides direct input of the lobbyists to PTO management. Regarding Congress – I think there is little that can be done. Money talks, and the big corporations will always have their play-for-pay Senators and Congressmen.

    Top priorities for the new administration should be the list of changes that I posted in response to Gene Quinn’s request for recommendations a couple weeks ago. Principally this recognizes that the purpose of the American patent system is to promote invention in the United States and that the United States patent system should not provide a level playing field between U. S. inventions and inventions made outside United States. We should favor inventions made in the United States, and we should do that big time as much as we can. We should deny the effect of prior art outside United States entirely unless it is published in English. We should restore a grace period for prior invention in the United States.

    Further, we should end all post grant reexaminations or reviews. The patent owner has access to reissues if he wants to fix anything.

    The patent system needs to favor the small inventor, the startup, the University research, and those who rely on the patent system, like the pharmaceutical industry. Costs need to be reduced, both to obtain a patent, and to enforce a patent.

    Finally, injunctions should issue to favor and protect U. S. R&D and U. S. manufacturing. In other words, if the invention flowed from U. S. R&D, the injunction should be automatic. As well, if the product covered by the invention is made by the patent owner, the injunction should be automatic.

    Patent owners need to negotiate with potential licensees without threat of litigation. Thus, so long as the patent owner remains willing to negotiate, and is in fact negotiating in good faith, and accused infringers should not be able to bring suit.

    Above all, we need to put an end to efficient infringement. The cost of defiance must be met with severe penalties.

    Hopefully we can find somebody who dances to a different tune from the big lobbying groups in Washington. But that somebody should have a long record of opposition to the AIA, eBay, etc. I am not suggesting we need a patent attorney in the job is correct. Perhaps we need an economist.

  13. Paul Cole December 28, 2016 11:12 am

    As Abraham Lincoln wrote: “If any one … shall claim an exemption from the drudgery of the law, his case is a failure in advance.”

    Given the chaos that reigns in the US, especially with regard to Section 101, there is seen much reliance on the powers of speaking without sufficient recourse to the legal drudgery which is the only route by which success is even remotely foreseeable.

    Before describing Supreme Court jurisprudence as a serial disaster, we should undertake the drudgery of studying the decisions in question using the techniques of analysis that are taught in law school, and ascertain the binding rules of law that the court has laid down. For example, in a number of decisions subsequent to Myriad the Federal Circuit might be criticised as having made a series of student-level mistakes. For more details, readers are invited to study the amicus briefs filed by CIPA and by the EPI in Ariosa. A method of cooking an omelette begins with eggs, ends with egg products but cannot fairly be described as “directed to” eggs. Those who undertake the study will find that the rules laid down by the Supreme Court are narrower and more sensible than widely believed. And since the courts and the Federal Circuit have judges inexperienced in patent law guided by attorneys who are supposed to be expert in patent law, it is up to those attorneys to use that expertise to best advantage and write briefs that guide the judges away from such mistakes.

    And on claim scope, undue breadth and wooliness are to be avoided. Does your claim language pass the Viagra test (if litigated it will stand up in court)? If the breadth of language is such that compliance with that standard is in doubt, then something more modest should be looked for. The genius of Festo (which is one of my favourite decisions) is the adoption of a foreseeability standard. We should not be congratulating ourselves for getting a broad and woolly claim past a busy examiner on a Friday afternoon if it is foreseeable that the claim will run into problems in due diligence or in litigation. And the judges do not like invalid patents, so that there is an “avalanche” effect consequent on a finding that claim 1 is invalid, as has been noted by other commentators.

    The moral is that we should do all we can by careful drafting and skilled advocacy to avoid falling foul of Section 101 or Section 103. It is only if our best efforts fail in truly meritorious cases that we have the right to criticise the courts.

  14. Edward Heller December 28, 2016 11:44 am

    Paul Cole, sage advice throughout.

    Might I add the following observations about patentable subject matter:

    1) Patents are for inventions and inventions must be something newly created by man.

    2) And eligible invention is one directed to a new or improved machine, manufacture or composition or process of making or using one of these to produce a new physical result.

    These general principles that guide one well when considering what should be eligible. To the extent that the Federal Circuit and Supreme Court goes astray, they are not recognizing inventions that should be patentable. I particularly like to point out the Versata decision which was directed to software that significantly improved the time to calculate price. The Federal Circuit focused on the price aspect ignored the fact that the software was a significant improvement in the functioning of the computer system involved.

  15. Night Writer December 28, 2016 11:49 am

    @14: Edward::: 2) And eligible invention is one directed to a new or improved machine, manufacture or composition or process of making or using one of these to produce a new physical result.

    Processed information is a new physical result unless you are going back to your theory of processing occurring in the spirit world.

  16. Night Writer December 28, 2016 11:55 am

    @14: Edward: they go astray because the underlying scientific assumptions they are making are wrong. Information is not processed in the spirit world. Information processing requires space, time, and energy to process and represent.

    An element of a claim, e.g, Bilski, requires physical space to implement, and time to implement and energy.

    And, please, why don’t you just come right out and say you support a “technical” requirement that supposedly has worked so well in Europe. And, yet, reality—US ten times the software industry. Reality is that the US has been performing spectacularly with regard to software with a patent system. The experiment to see how it will function without a patent system is something we may find out under Trump or if the likes of Edward had his way (or he wants a technical requirement).

    By the way, oddly, Edward is a big supporter of Benson and yet the idea of processing something like price faster is anathema to Benson and there were academic papers (real ones not Lemley type) published at the time of Benson talking about making not eligibility but obviousness based on such things as whether the algorithm was an improvement in time or space usage over previous algorithms.

  17. Ron Hilton December 28, 2016 1:02 pm

    Trump has done a pretty good job so far of standing up to big corporations and financial institutions. I think we may be pleasantly surprised by whomever he appoints. If his other appointments are any guide, he will meet with and talk to everyone from all sides, and then make his own decision.

  18. Inventor Woes December 28, 2016 1:32 pm

    Night Writer @10

    Rome fell because of many other reasons, not because they lacked a strong patent system. Did the dinosaurs go extinct because they didn’t have a strong patent system? That’s just as ridiculous as your assertion. Modern patent rights didn’t come into being until much later in history.

  19. Night Writer December 28, 2016 1:39 pm

    @17 Let’s hope so. @18 Inventor Woes: Really ridiculous comments coming from you. So, you think if Rome had transitioned to an innovation engine with an industrial revolution that it would still have fallen for those “other reasons”? Like not being able to fight against wave after wave of invading armies? Or do you just type whatever pops in your head at the moment.

  20. Anon December 28, 2016 5:55 pm

    Mr. Heller, you are aware – or should be aware – that your post above is not how the law is in regards to either business method patents or the statutory category of process – as changed by the Act of 1952, right?

    I know that you have been apprised of your error in this regard, so please be ethically responsible and post what you would rather be the law as your own desired end state and not (misleadingly) as the state of current law.

  21. Anon December 28, 2016 6:01 pm

    In case you have missed the last ten thousand reminders, Mr. Heller, process is defined in 35 USC 100(b), which encompasses more than your “historical notion” of process as merely pertaining to one of the other hard-goods categories.

    It is a statutory category on par with the other categories – not a hand mainden (sub) category as you would like it to be.

  22. JPM December 28, 2016 6:55 pm

    Ron Hilton, I agree. I believe we will be pleasantly surprised with Trump’s pick. Donald Trump Jr has first hand experience of being involved with a company (MacroSolve) that enforced its patents a few years ago and understands that the environment is not friendly to innovative startups and inventors.

    Let’s hope Jr. will bring to Donald Sr’s attention how unfair the environment is to inventors.

    http://dailycaller.com/2012/05/01/defending-innovation-in-america/

  23. Paul Cole December 29, 2016 6:44 am

    Notwithstanding the “spoils system”, Michelle Lee seems a pleasant and competent lady. So why not leave her in place?

  24. Night Writer December 29, 2016 11:38 am

    @23: Paul Cole

    So, Mrs. Lincoln other than that, how was the play?

  25. Paul Cole December 29, 2016 6:09 pm

    @ Night Writer, 24

    There is nothing remotely funny about the events of 14 April 1865, and even to joke about those terrible events is in the worst possible taste. We should remember Abraham Lincoln as perhaps one of the wisest and cleverest men who ever lived, and his wife Mary Todd Lincoln with understanding and sympathy which she was at times denied in her later life.

  26. Inventor Woes December 29, 2016 10:15 pm

    @19 Night Writer

    I wrote that comment precisely because it mirrors what you said regarding the Roman Empire. I took your argument ad absurdum. While you are likely correct in stating that had the Roman Empire industrialized it might have repelled invaders, you provided no support for why they would not have done so absent a strong patent system. That’s what’s ridiculous about your assertion. Perhaps Rome could have industrialized without a strong patent system. It’s almost like you believe something like the Manhattan project wouldn’t have happened without a strong patent system. Newsflash: the Manhattan project happened with absolutely no patents. It’s not me that just writes things that pop into my head, rather it’s YOU who does so.

  27. angry dude December 29, 2016 11:16 pm

    For Christ sake, can you find at least one sufficiently educated person in some official position in Wash DC who can say loudly that “software = hardware” and therefore there should not be any distinction patentability-wise, as long as novelty and unobviousness criteria are met ?

    Algorithms must be 100% patentable whether they are implemented as software code for computers to execute or hardwired in silicon chips

    It would also help if some Wash DC creatures could comprehend the simple truth that “Laws of Nature” are not like copies of the Holy Bible they pretend to read at Sunday services, before engaging in other not so moral activities…

    But my hopes are not high

  28. Night Writer January 6, 2017 2:30 pm

    @26 Inventor Woes: I took it as obvious that had Roman technology advanced that they would have continued to have an advantage over the “barbarians” that were invading them. Basically, they were fighting the same way for hundreds of years. Couldn’t image that anyone would not see this. Moreover, a rudimentary understanding of Roman technology would lead anyone to conclude that there were fundamental problems with its advancement that a patent system addresses. (Roman tech is a very interesting subject in regards to patents for many reasons including lost arts because they were kept secret, and technologies being advance only for the very rich and not being shared.)

    So, rather than being this strange subject you seem to think it is, it is actually a fascinating study in innovation.

    Moreover, the Manhattan project was not in a vacuum. It was capstone to using technology that had been promoted with patents. So, again, we see this static argument mistake. And, the technology that won the war was not the bomb.

  29. You Know Who I Am January 6, 2017 3:56 pm

    @28

    – the bomb most surely “won” the Pacific war in far better form than it would have been “won” by other means, which it would have been eventually.

    – The Manhattan Project directly generated literally thousands of patent applications

    – Rome’s collapse was a result of a complex of factors, many of which would have stunted a proto-industrial revolution no matter how wonderful the incentives to innovate may have been

    – The AIA was an answer to the wrong question. We hardly needed a shadow court system operating on different rules by different people. We needed proper construction of inventions prior to application of the statues.

    – Information inventions present special problems because they may implicate other Constitutional rights, and their incorporeal nature allow for myriad variations and relationships to different arts and endeavors.

    – One can’t evaluate PHOSITA until the art / endeavor where the invention is most centrally located can be reasonably identified. You can’t apply 102/103/112 without a construed invention. Computers model things in the world, so the boundaries between the computing and those things in the world can be very slippery. Sometimes it simply must be a judgement call as to where an invention is located.

    – Bilski established that MoT is not a requirement and nothing in the patent laws suggests that physicality is a requirement in processes

    – Virtually all of the mischief involves process patents

    – You can’t have a process without an intended result. Without a goal, there is no process. That result must be construed before 102/103/112 can be applied

    – It’s disgusting when pro-patent people ignore the real pain of the real litigation abuse that has occurred, and continues to occur due to patents that never should have issued.

    – It’s disgusting when anti-patent people ignore the damage to innovation and investment that occurs when the ground rules are always changing and every assertion is a crapshoot.

    Trump remains (mostly) a tabula rosa until he starts his work. I have a feeling he is going to be disruptive and anger many Democrats, and many Republicans in pursuit of the judgment of history as a fine President- e.g. “DJT, The Ratings Machine”. I don’t expect he personally will care much one way or the other about the finer points of patent policy, but he will care about the public perception of patent policy, and right now, it ain’t too great.

  30. Edward Heller January 7, 2017 3:42 pm

    You know: – Bilski established that MoT is not a requirement and nothing in the patent laws suggests that physicality is a requirement in processes

    Except that our patent system is founded on the English system that awarded patents for manufactures. At the time of the first statutes, we included machines, compositions and Arts that had been recognized in England as manufactures or ways of making things.

    So there is support for the idea that the patent statutes, at least, require a manufacture, and that Arts/Processes relate to ways of making/operating things to produce new physical results.

    Whether the founders could have granted patents on things like new math principles, laws of nature or natural products and the like is an interesting question. These are all useful, very much so in many cases.

    It would be interesting if Congress expressly allowed patents on business methods. I wonder what the Supremes would do?