The PTAB Roadblock to Patent Monetization

By Gene Quinn
February 7, 2014

The patent litigation landscape forever changed on September 16, 2012. On that date the Patent Trial & Appeal Board (PTAB) was born. The precursor to the PTAB was the Board of Patent Appeals and Interferences (BPAI), which would hear appeals from applicants who had their patent applications rejected and also conducted interference proceedings. With the signing of the America Invents Act (AIA) the PTAB was born and the jurisdiction of the appellate body within the United States Patent & Trademark Office (USPTO) was greatly expanded.

This Board, the adjudicative body of the USPTO, consists of technically and scientifically trained administrative patent judges (APJs). The PTAB was created, in part, to adjudicate the new patent challenge mechanisms of the America Invents Act, which include Post Grant Review (PGR), Inter Partes Review (IPR) and Covered Business Methods (CBM). Since 2012 roughly 1,000 challenges have been filed as petitions for either Inter Partes Review or the transitional Covered Business Method challenge proceeding. Post Grant Review is only available for patents that were granted as the result of first to file, which did not go into effect until March 16, 2013, so there will be some time before we see Post Grant Review given the tremendous backlog at the Patent Office.

By most accounts the interest in the new AIA post grant challenge proceedings is even more than anticipated. The growing popularity of the PTAB is grounded in the practical benefits offered to patent challengers. That is, not only is the PTAB faster and more cost effective than pursuing the same challenge in a federal district court, but it is far more likely to be successful given the lower burden of proof, lack of presumption of validity, broader claim construction, and the technical expertise of the specialized judges. Statistics indicate that 80% of claims challenged at the PTAB are instituted for trial. Further, if the outcome of inter partes reexamination is any gauge on the ultimate outcomes of IPR, CBM and PGR, upward of 85% of patent claims will be cancelled or amended before the PTAB. Given intervening rights even having a claim amended is a victory for the challenger.

The “new normal” created by the PTAB has drastically altered the patent assertion landscape. Simply stated, when a patent owner is notified that a patent they own is being brought into a post grant proceeding the statistics, if not the gravity of the threat, suggest that it must be taken seriously immediately and competent representation must be obtained quickly. The burdens are different at the PTAB than they would be in the Federal District Court. Specifically, the PTAB will employ the standard USPTO technique of giving patent claims their broadest reasonable interpretation, which will make it easier for a claim to be determined to overlap with the prior art. Furthermore, in litigation patent claims are presumed valid and the defendant must prove by clear and convincing evidence that a claim is invalid for one or more reasons.


General principles embodied in Federal Circuit precedent suggest just how powerful a tool these post grant proceedings could potentially become. For example, Federal Circuit precedent suggests that once a claim is found invalid by the USPTO the ruling of invalidity can trump a finding of validity in the courts if the infringement case is not completed. The implications of findings and rulings in contested proceedings on the parallel litigations are being explored as the first wave of IPR and CBM proceedings conclude at the PTAB.

Of course, as with so many things in life there is a good that comes with the bad.  Post grant proceedings do come with some substantial estoppel concerns, at least for the moment. The petitioner (or privy) in a post-grant review may not request or maintain a proceeding before the Patent Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during a post grant proceeding. Thus, there is something of a “speak now or forever hold your peace” aspect to post grant proceedings.

Those familiar with the current round of patent reform legislation will recall that this estoppel provision is in the Congressional crosshairs. If those pushing reform ultimately prevail the estoppel provision will apply only with respect to what was specifically raised. The fear among patent owners is that such a change would not only allow, but would practically invite serial post grant challenges. While many say the fear is absurd the reality is that many of the tech elite engage patent litigation as a war of attrition, so it is hardly a stretch to predict that the removal of the estoppel provisions insofar as prior art that could have been raised would invite serial challenges. If that happens post grant proceedings would become nearly completely one-sided in favor of the patent challenger at the expense of the patent owner.

On Wednesday, February 12, 2014, I will moderate a discussion of the PTAB and the various post grant proceedings ushered in by the AIA. The title of the discussion is PTAB Roadblock to Patent Monetization. Joining me will be leading PTAB specialists Scott A. McKeown (Oblong Spivak) and Robert Greene Sterne (Sterne Kessler). McKeown and Sterne together are handling more of the contested proceedings and the legacy reexaminations than probably any other pair of patent practitioners. They will share their comprehensive perspectives and practical insights concerning what is really going on at the PTAB. I will try and stay out of the way, keep the discussion moving along and perhaps add a bit of color to make the presentation a painless, perhaps even fun, credit of CLE.

Our presentation will be in dialogue format and will seeks to address the following topics and questions:

  • Getting the attention of the client and explaining what is at stake.
  • Reaction to PTAB and CAFC decisions and predictions about what the future holds.
  • Is it malpractice not to advise a client to pursue post-grant proceedings at the PTAB?
  • What is a trial at the PTAB like? Is this examination or something different?
  • How can a patentee best present the story of the invention?
  • How can a challenger best prove the state of the art and obviousness?
  • Creating a complete record at the PTAB and avoiding waiver.
  • The impact of parallel district court and ITC proceedings involving the same patent.
  • Possible new legislation expanding or changing the current contested proceeding framework?

If you are interested in attending this program, which is a webcast, you can register by CLICKING HERE.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 103 Comments comments.

  1. Anon February 7, 2014 9:32 am

    The removal of the estoppel provision is deadly.

    Last fall I heard (if I remember correctly) that the head judge of the PTAB was against removal. Perahps it is not too late to include him (or at least a statement from him) for your panel discussion.

  2. Gene Quinn February 7, 2014 4:54 pm


    I think the removal of estoppel would be a disaster. While we can argue about the merits of the idea substantively, if Congress removes estoppel then they better significantly increase the USPTO budget and hire many more PTAB judges. Without an estoppel provision I think it would be virtually malpractice to not bring an inter partes review when seriously challenged with a patent litigation.


  3. Paul Morinville February 7, 2014 5:53 pm

    In speaking with Alexandra Givens (Leahy’s Judicial Committee Lawyer) this week, she argues that a PGR is only available for the first 9 months after issuance, so it could not be used serially one after another. That may be true for one patent with no continuations, but most patent holders keep a continuation going so a new patent can be granted every year or so (subject to overcoming a double patenting rejection). I suppose if a patent were unable to be re-validated (imprecisely called invalidated) in a PGR, then the whole family would fall. It would be legal malpractice not to recommend PGR after PGR.

  4. Ron Katznelson February 7, 2014 8:51 pm

    Paul Morinville: I suppose if a patent were unable to be re-validated (imprecisely called invalidated) in a PGR, then the whole family would fall.

    Paul, while your general concern is valid, your specific point above is legally inaccurate: “the whole family” cannot simply “fall” on account of PGR proceeding results from one of its members because, by definition, the claims are distinct among members of the family. That said, there can be some coupling if common claim terms are construed in the same way across the family.

    A mitigating factor that might prove important in the future is that all PTAB decisions giving patent claims their Broadest Reasonable Interpretation (BRI) may well be overturned by the Federal Circuit as it reviews the PTO’s PGR rules for the first time and finds that the PTO exceeded its authority under the AIA by improperly interpreting the PGR statute as endorsing the BRI standard of claim construction. That such BRI interpretation is improper and should not be used in an adjudicatory proceeding which is not an examination is shown in our comments that we (IEEE-USA) filed with PTO on the PGR rules. The relevant section is on page 7 entitled “IPR and PGR trials are not examinations, and the claim construction rules should reflect that” at

    It is worth noting that during the AIPLA meeting in the spring of 2013, Chief Judge Rader opined in response to a question that he doubted that the PTO is correct in applying the BRI standard for PGR. If the PTO were correct, currently proposed patent legislation would not have had to include a “technical” clarification provision, specifically instructing the PTO to apply in PGR the Federal Courts’ claim construction rules and not PTO’s BRI.

  5. MaxDrei February 8, 2014 6:16 am

    A thought from Europe, where the presumption of validity on issue can be overturned by a preponderance of evidence, and where claims get construed the same way at the EPO and, later, in court.

    Filing an Opposition at the EPO has negative consequences if the opposition is less than 100% successful. it is the old “Whatever doesn’t kiii you makes you stronger” logic. The surviving claims enjoy a strengthened presumption of validity. They are indeed “stronger”. So, when my clients get opposed I tell them it could be the best thing that could have happened to them.

    So it is, that relatively few oppositions are filed.

    At the USPTO, however, it seems that the presumption of validity is already at issue as high as it can go. Besides, for the party putting validity in issue, this is the last chance to use BRI to attack the claim, right?

    If PGR Review is a tool clients need to think about, shall we gradually see more companies picking up and tracking through the USPTO the filings of their competitors? And is not this how the patent system is supposed to work, disseminating info and stimulating designs-around?

  6. Ron Katznelson February 8, 2014 7:06 am

    Max, do not confuse claim construction standards with the standard of proof for invalidating a patent. The presumption of validity at the USPTO is not “as high as it can go” – there is no presumption of validity at the USPTO and an examiner or the PTAB can find non-patentability by mere preponderance of the evidence.

  7. step back February 8, 2014 7:20 am

    The US Constitution empowers Congress only to “secure” exclusive rights for inventors, not to de-secure them.

    So when the US government grants rights of exclusivity (otherwise known as a patent) to an inventor and Congress de-secures the presumptions of validity that are included within the granted rights, there is a question as to the constitutionality of such de-securing procedures. Does Congress have the power to establish such procedures in the first place?

  8. Anon February 8, 2014 8:25 am


    When you say that the challenged claims emerge stronger with a “strengthened presumption of validity,” are you being literal? Does the legal presumption actually change?

    Or are you being figurative? Does the legal presumption appear stronger (but a preponderance standard remains)?

    Or perhaps a hybrid: the preponderance standard remains but the art used in a prior challenge has some type of estoppel effect?

    I ask because you often laud another aspect of the European system that has always struck me as having the opposite effect of what you purport: no stare decisis. Without such, I struggle to see how any estoppel effect or anything but a mere perception of strengthening a patent (without an actual change in evidentiary standard) takes place.

  9. Anon February 8, 2014 8:33 am

    step back,

    There is nothing stopping Congress from ‘de-securing.’ I believe the power comes from at least the commerce clause.

    That being said, this is not to say that the change in status preemptively engaged in by the State does not have legal impact. Note that I say that the process can be seen to be allowed. Just how that process is conducted is another matter.

    Once the patent had been granted, a property right has been created. To move that right to something less, something not enforceable, clearly constitutes a taking. At the very least, Due Process kicks in. In this regard, how the patent is treated in any post-grant adjudication – whether in the courts (that is Article III courts) or in the Office (and its Article I court) does have constitutional repercussions.

  10. MaxDrei February 8, 2014 9:11 am

    Fair question from anon, at # 8. In Europe how does the presumption of validity change, after an EPO Technical Board of Appeal dismisses an Opposition and upholds the patent?

    “Preponderance” is terminology used in English law countries. In civil law mainland Europe, the corresponding edge is usually called the “Balance of Probability”.

    That, as a measure, remains the same after EPO Opposition proceedings as before. However, once the EPO has seen off an Opposition, the next time validity is put in issue, somewhere else in EPC-land, it will likely take more evidence from the assailant to get himself over the watershed and beyond “the balance”.

    And if you cannot get further on than “the balance” of probability, you fail to knock out the patent.

    Add to that the notion that the EPO’s Enlarged Board of Appeal is the keeper of the keys, when it come to what does or does not invalidate under the EPC. Of course, no individual Technical Board of Appeal at the EPO speaks with that authority. Nevertheless, judges around EPC-land often (mistakenly) cite individual TBA Decisions as if they had the authority of the EBA.

    In Europe, there is less fear of being caught infringing because of the widespread conviction that if and when that happens, something will turn up, to spoil the validity of the asserted Claim. If the asserted claim has seen off determined Opposition action, it is not quite so easy for an attorney/Client huddle, under pressure to settle, to remain steadfast in that conviction.

  11. Anon February 8, 2014 10:49 am


    Would I be incorrect to restate your post as in fact the patent that survives one attack is not stronger (per se), but merely that the evidence that was unsuccessful in one attempt remains unsuccessful? That the evidence is still available – for example for a different party with stronger counsel, or in combination with other evidence?

    Also, I do not think that “more” evidence is as accurate as perhaps “different” evidence, as “more” carries a connotation of a higher standard that does not appear to be present.

    You also now add in the Enlarged Board of Appeal, which is something in the past has always seemed to me a backtracking from your position that there is no stare decisis in EPO-land. You either have stare decisis or you do not.

    I do not want to put words in your mouth as to any estoppel effects (you did not mention one way or the other), but it appears that the only ‘strengthening’ is a purely perceptual “the patent was challenged once.” You will indulge me that this is little actual comfort to those who have suffered through actual serial challenges (and there are several of this nature). The point in the thread here of the removal of estoppal effects would only increase the severity of this problem (and I speak of problem from a neutral patent holder position – not on the merits of any particular case and merely on the enablement of serial attacks).

  12. Gene Quinn February 8, 2014 11:01 am


    Interesting discussion. Here are my two cents…

    I don’t see any unconstitutionality here, at least given the way that takings law and the IP clause have always been interpreted. It seems that Congress has nearly plenary powers over patents and copyrights. I’m not even sure that the Constitution mandates that they exist. I think Congress has the power to grant the exclusive rights, but are not mandated to grant exclusive rights. I think it would be a most foolhardy pursuit to do away with such protections, but I think they could.

    If you compare patents and copyrights, which emanate from the same clause, there really is very little substantive comparison. With copyrights there is substantial fair use allowed, which has never been deemed an unconstitutional erosion of the rights granted. I see no reason why Congress couldn’t continue to chisel away at patent rights without violating the Constitution.

    Patents really are no longer a property right. We tolerate the extremely weak form of protection copyrights provide because they last forever, at least from the standpoint of any single individual, and it costs less than $50 to obtain a copyright if you do it on your own. There is no examination of copyrights and as long as you fill out the forms properly and you aren’t trying to get a copyright on an article of clothing or a blank form you will get the copyright.

    I don’t see how we can continue down this path with respect to patents. For something that is a true innovative breakthrough you are going to be in prosecution for 3 to 5 years at a minimum unless you accelerate. For many innovations the Art Unit you are assigned to will simply not issue a patent, or will only issue extremely narrow claims unless the Board orders otherwise. Case law is eroding patent term adjustment, RCEs can take 4 or 5 years to get to in some areas, and after you wait many many years, sometimes 8 to 10 years or longer, you wind up facing all kinds of challenges, which would only increase if the estoppel provision is removed.

    Congress needs to come to terms with the fact that patents are no longer property. That means the only way any of this makes sense, if they want to go down this path, is to move to a registration system closer to the copyright system. Patents could still require the same level of disclosure to ultimately be valid/enforceable, but the examiner ought to spend a few hours reviewing before a patent issues and then either deny (which should happen only rarely), issue or be forced to issue through passage of time (i.e., perhaps 12 months). Then before a patent claims can be enforced in Federal District Court perhaps the patent owner must go back to the Patent Office to seek a right to sue authorization, at which time an examination takes place within a 6 month timeframe.

    We simply cannot justify the property right protection system we have in place if patents are no longer a property right.

    I think this might make an interesting article. Thoughts?


  13. MaxDrei February 8, 2014 11:41 am

    Gene, if I understand you aright, you are musing on the merits of something like the ages-old German 10 year utility patent system. Such patents issue 3 to 4 months after the application is filed. Claims are construed exactly as are those of full-blown 20 year EPO patents. The rules on novelty, obviousness and enablement are also just the same (except that Germany provides a 6 month grace period).

    The difference is that these claims are not yet examined relative to the prior art. That happens when the 10 year patent is asserted (if the judge is unwilling to give injunctive relief, without reassurance on validity).

    The English patents judges are hot on the notion that business needs certainty. Owners of good claims are entitled to quick injunctive relief while the owners of bad claims should see them speedily revoked, if ever they have the temerity to assert them. Do I understand that you agree with them?

  14. MaxDrei February 8, 2014 11:43 am

    anon, I’m lost for words of reply to your # 11. Sorry.

  15. Anon February 8, 2014 1:12 pm

    Don’t be sorry MaxDrei, just let me know if you think I have accurately captured your response and what the situation is in the courts of EPO-land.


    I think that the patents are not property angle, while possible, would be to not only burn down the house to obtain a piece of toast, but to burn down the entire city block.

    There is more to the difference between patents and copyrights than just Fair Use and terms. The dichotomy stems from the very real difference between artistic creativity and utility. Utility is the driver for the shorter and stronger terms. You start going too far down a diluted path and removing the rewards and the actual utility will suffer. Those items already protect-able under Trade Secrets will see more emphasis. I just do not see a registration multi-tiered system as worthwhile. There is simply not enough assurance of protection for the required sharing of information – which will also drive the volume and content level of what is shared even lower (a virtual death spiral). Further, if you could obtain a 6-month examination as you foresee in the future, why not do that now? The plain truth is that you cannot do so with any sense of improved results of what you have now. In essence, it is just a pipedream, or more accurately, a mirage. I have a hard time seeing any German analogy at the scales of innovation involved, and without the existing alternative of full patent rights.

  16. Paul Morinville February 8, 2014 2:08 pm

    Ron, Thank you for that clarification.

  17. step back February 8, 2014 2:15 pm

    @Gene re #12,

    Your 2 cents seems to accept the idea that inventors are less than full citizens (3/5ths of one?)

    What ever happened to “quid quo pro”?

    The federal government makes an offer of a bargain to the inventor: disclose and we will give you exclusive rights for a limited time with a presumption of validity.

    Then the government renegs on its promise. No. We didn’t mean it when we said that you pay all those fees, fight the good fight, finally triumph over the patent examiner and then you get nadda because we can subject you to triple jeopardy, recall the whole thing and all without the full due process of law that other property owners get.

  18. Gene Quinn February 8, 2014 6:47 pm

    Step, Anon and Max…

    I personally believe patents should be a property right, but I’m observing that little by little over the last 7 to 8 years patents have increasingly lost the most important indicia of a property right, which is the right to exclude. Ever since eBay v. MercExchange we have had something that looks an awful lot like a compulsory licensing system. Victorious patent plaintiffs are worse off really. They had a right to exclude until they prevailed and upon prevailing and the patent remaining valid they lose the right to exclude. That was where it all started to unravel in my opinion.

    I personally would prefer that we go back to pre-eBay days, but I don’t see that happening anytime soon, if ever. But if the march continues toward stripping patents of any real teeth then something absolutely has to give elsewhere. As patents continue to get weaker and easier to successfully challenge it makes no sense to spend several tens of thousands of dollars to get a patent, wait 5+ years and then upon getting the patent be invited to post grant challenge after challenge. People are already openly discussing all of this driving innovation under ground to trade secrets. I think the final straw may be the removal of the estoppel provisions. If that happens everyone loses.

    Of course Congress can’t really look beyond the lobbyists paying to weaken the patent system. They have spend no time considering the ramifications of their actions. We are about to destroy the patent system that was the envy of the world, at least in terms of the innovation it incentivized (of course tied together with pro-business laws and judicial climate).

    I think I would be OK with the German system tweaked. Perhaps we have some kind of substantive review, but a quick look review intended to capture the most egregious, perhaps like a glow in the dark ceiling fan blade, which was unfortunately patented in Jan. 2014. See With things like that getting patented the Office has clearly lost its way. Quick look to weed out the absurd then issue. We could have dual paths with a real examination up front, or you could come back later prior to enforcement. The benefit would be to place resources where they matter. We all know that most patents won’t be licensed, litigated or used. It would raise quality certainly and it would lead to more invention disclosures (a good thing).

    I would also give the patentee the right to add claims when they go back without intervening rights. I’m fed up with innovators losing with every reform.


  19. step back February 8, 2014 9:34 pm


    I’m right there with you on the history of the dwindling “rights” of American inventors –except that it has been going on for far more than just 7 years.

    Remember when the quid quo pro bargain involved keeping the inventor’s disclosure an absolute secret and releasing it IF AND ONLY IF a 17 year long term of actual exclusivity was granted?

    One of the many bargaining chips we had back then (yes, I do go back quite a bit) was to argue to the PTO that the public would be deprived of this wonderful disclosure if a patent is not granted. Then again, there was no 2nd action automatic finality or having to pay for RCE after RCE. The examiners actually worked with you rather than against you to make the system roll out quality product.

    Now a days everything is turned topsy turvy.
    The government says, disclose first and then “trust us” to later deal fairly with you even though the cat is out of the bag. There is no rational underpinning to any of it. And yet it keeps rolling down hill ever faster, like a snowball gone into collapsing avalanche mode.

  20. MaxDrei February 9, 2014 4:02 am

    Gene how about the UK system up to 1978, tweaked? Back then, it was thought that clarity and novelty could be examined ex parte and fast, allowing rapid issue of Claims tested for egregious want of patentability.. Obviousness and enablement were thought then to be too complicated for ex parte examination to make any sense, so those issues should be set aside for testing in inter partes proceedings.

    Europe swept away that UK view, in 1973. But the USA could revive it, perhaps? But one problem remains for you though; the ceiling fan blade would of course still get through to issue.

    How about the pre-1978 UK “Opposition” idea. The PTO would revoke then, if the claim encompassed matter that was “clearly” obvious. At the court though, you only had to prove it was “obvious” (ie no requirement to reach the “clearly obvious” threshold).

    In Europe you can add claims will-nilly, without triggering “intervening rights” provisions. Mind you, if those claims add matter, they are invalid and, as you know, Europe is strict on added matter.

    Actually, it is just as strict on priority and novelty: it has the same test for all three (clearly and unambiguously derivable). That keeps things nice and simple.

  21. Benny February 9, 2014 5:50 am

    Step back,
    You say “The government says, disclose first and then “trust us” to later deal fairly with you even though the cat is out of the bag”

    Considering the fact that any serious manufacturer will also file for patent protection in the EU, it doesn’t make much of a difference. The application will be out there, in the public domain.

  22. Ron Katznelson February 9, 2014 7:26 am

    Benny: “ any serious manufacturer will also file for patent protection in the EU

    The innovation community is not made only of “serious manufacturers” – it also includes serious technologists and startup inventors. Not all U.S. patent applicants opt to file internationally and therefore they have a choice to make. About 15% of U.S. applicants elect non-publication under 35 USC 122(b). And they do so for a good reason. Foreign countries’ patent laws cater to incumbent large companies who are more likely to gain from destroying the basic patent bargain by mandating 18-months publication.

    Small startups and individual inventors tend to rely on secrecy and on their issued patents for survival as they are more likely to introduce disruptive technologies. In contrast, entrenched large market incumbents rely mostly on their market power rather than on their patents – they stand to gain disproportionate competitive advantages from early publication of disruptive inventions by others. It is the large industrial firms that pushed for mandatory 18-month publication rule in the late 60s and early 70s. Evidently, this rule is one of the major contributors to the low participation rate of small startups and individual inventors in foreign patent systems. For example, a 2005 study by the EPO shows that only 0.7%(!) of patents issued by the EPO are issued to individual or unincorporated inventors. This percentage is an order of magnitude smaller than that in the USPTO. Perilous deviations from the patent bargain have consequences.

  23. Anon February 9, 2014 9:31 am

    I agree with Step and Ron.

    The basis of the bargain has been tainted: Quid Pro Quo becomes an empty promise when the Quo is taken without regard.

    Now Benny has a logical point in that if the application is published in another country, the Quo is out there, so in a very limited sense, “it does not matter.” However, this is the kernel of truth in the great lie. Ron points out one scenario. There are other deleterious effects to be certain.

    Further, Benny’s point does not exist in a vacuum. One of the compromise factors in the US adopting the publication as default rules were the promises of action in a timely manner (with Patent Term Adjustments). Applicants were assured that they were to have had meaningful indicators prior to the publication period of the likelihood of obtaining patent protection, and the ability to prevent publication by choosing abandonment.

    The bargain was flawed, though. Why should the Office hurry? The Quo could be taken and the applicant had no power, but merely the hope of promise of some future adjustment at the end of the term. Certain art sectors (influential ones like Pharma jumped at end of term adjustment, as that is a cash-cow period in their business cycle. But most all other art fields the end years do not provide any meaningful additional value. Intervening rights were a window dressing – but would rely on effectively not making any changes during prosecution, and are largely a mirage. Take a look at the historical records. The long lines of patent queues only took off when publication took hold. The impetus to truly act quickly was removed with publication. Like many things, this was a double edged sword. One edge served to combat submarine patent practice (although tying term to file date may have been enough), but the other edge resulted in an unmotivated examining corp. Motivation, then was found in gaming the RCE system. It is human nature to perform to how you are measured, so this is not an indictment against the average examiner. But there can be no doubt that the count system coupled with the Quo obtained without any providing of Quid resulted in the gaming that became an epidemic.

    So regardless of any kernel of truth, the basis of the bargain has been (fatally?) compromised for a very long time now.

  24. Gene Quinn February 9, 2014 10:12 am


    I agree. I guess I forgot about the good old days where a secret was a secret unless a patent issues. That would be an important event in the dwindling of rights.

    Now that happened in 1999. What, if anything, can we point to that also was a dwindling of rights between 1999 and eBay?


  25. Gene Quinn February 9, 2014 10:21 am


    I have been opposed to an opposition because it seems just another way to harass and tie up patentees, which is what the many infringes who fight war of attritions already do. Having said that, I would be very open to having a discussion about an opposition along the lines of what we have in the Trademark Office. Oppose before the trademark issues means you have a lot of reasons to challenge. Miss that window and now you are in a cancellation proceeding, where there are less arguments that can be raised. After 5 years if the trademark owner files for incontestable status then virtually all opportunity to challenge the trademark is gone unless the trademark is generic or there was fraud on the USPTO in acquiring the trademark.

    So I would consider the merits of an opposition proceeding but then we would have to get rid of post-grant review, inter partes review, covered business method review and reexamination. Perhaps this could be accomplished by tweaking the third-party submission rules. Of course, the infringer lobby would never go for this. They would want an opposition and all the other collateral, serial challenges. I can’t say I blame them, at least if one is short-sighted. Of course, their patents will eventually be rendered useless against the Chinese when they flood the U.S. market, which will certainly happen once they gut the ITC, which is coming up on their legislative agenda.

    Truthfully I really don’t care about the ceiling fan blade. Patents like that have issued forever and the theory is that there is no harm because they are clearly invalid on their face. What I don’t like is the disparate treatment of applicants. Idiotic patents are granted and real innovations are buried under horrible misinterpretations of KSR and examiners who simply refuse to issue patents.

    Like all large organizations the majority of examiners are good, hard working and fair. The sad thing is that the management of the USPTO seems wholly unable to address the fringe, which means if applicants get stuck on the fringe they waste many years, perhaps a decade, and great expense to go all the way to appeal.


  26. Anon February 9, 2014 10:56 am

    Gene: America’s oxymoronic America’s Inventor’s Protection Act of 1999.

    You can draw the name parallel to the America Invents Act.

  27. MaxDrei February 9, 2014 11:55 am

    Ron K writes above:

    “Evidently, this rule is one of the major contributors to the low participation rate of small startups and individual inventors in foreign patent systems. For example, a 2005 study by the EPO shows that only 0.7%(!) of patents issued by the EPO are issued to individual or unincorporated inventors.”

    To which I would reply that “evidently” the English language causes heart disease (there is a strong correlation between heart disease and having English as your first language. Since the 19th century, Europe just isn’t as entrepreneurial and business-risk-orientated as the USA.

    Gene likes pre-issue Opposition. That was what the UK had under its 1949 Act. It was done away with in 1978. Why? Because it was too much in favour of Big Corp. Big Goliath used it routinely to delay indefinitely the day when little David could get to issue, and begin proceedings against that infringing Goliath. How do you get round that problem Gene?

  28. Anon February 9, 2014 12:59 pm


    I am sure that you will also recall the long standing (and persistent) drive to Harmonization.

    While not necessarily detrimental in and of itself, the drive was far too willing to sacrifice the aspects of the US system that made our system the Gold standard for fostering innovation.

  29. Anon February 9, 2014 1:35 pm

    An interesting read:

  30. Ron Katznelson February 9, 2014 5:21 pm

    Max: ”Since the 19th century, Europe just isn’t as entrepreneurial and business-risk-orientated as the USA.”

    I agree with your general statement about that long history, but the point I was making – the disparity between relative share in patent grants of individual inventors from the US and those from other countries – is a phenomenon which appears to have accelerated only after 1970, when most national patent offices transitioned to an 18-months mandatory publication. This I have shown graphically a few years ago in a comparison at Although this plot (using a log vertical scale) shows only patents issued in the US, it reflects the relative decline in individual foreign patentee grants as a fraction of all foreign patentee grants. Prior to the 1970s, the respective relative share of individual inventors from the U.S. and from foreign countries essentially tracked the same numerical trend. Thereafter, however, foreign individual inventors’ respective share declined substantially while the US trend remained above 20% for nearly 3 decades. To be sure, there are other factors at play beyond mandatory 18-months publication. However, these factors, as the mandatory publication rule, are all related to the gradual erosion of patent rights that disproportionately harm small businesses, startups and individual inventors. National patent systems are taken over by large corporations who transform them for their purposes – not for “promoting the progress of the useful arts.”

  31. Benny February 10, 2014 2:03 am

    Ron K,
    You are perfectly correct when you say that companies (like mine) stand to gain from early disclosure of competitors’ patents. But I don’t see this as all bad news. Large companies’ (read: employers) financial health is largely beneficial to the economy. Perhaps the lawmakers consider this, too.

  32. MaxDrei February 10, 2014 3:33 am

    Thanks Dr Ron for a thought-provoking post, at # 30. I agree that the US patent system prior to the AIA had a slew of features that helped inventors like Lemelson and Hyatt to grow strong enough to prevail.

    Patent attorneys in private practice, like the master of this blog, know how inventors (in any jurisdiction) dream of making it big and becoming filthy rich. However, only the pre-AIA USA did they have the advantage of: First to Invent system, grace period, submarine patents, and juries deciding whether the evidence (that the asserted claim might not be valid) needed to be “clear and convincing” before they were obliged to announce to the court that they have come to know, better than the all the experts at the PTO, that had duly-issued claims are not OK.

    No wonder the filing figures for private Inventors at the USPTO held up so well after 1970. I imagine that inventors like Lemelson and Hyatt knew exactly what they were doing. Whether the USA’s technological progress since 1970 is thanks to those gentlemen, I doubt. Me, I think fast A publication does it better. But Gene Quinn, what does he tell inventors dreaming of making lots of money? That they should have come to him earlier, before the AIA was enacted, when there was still a chance of being another Lemelson or Hyatt?

    In my case, I wanted A publication to attract Investors. Outside the USA, investors want to take charge within the Paris year, so they can re-draft and file internationally. The next best thing is to take over a PCT before the end of the international Phase, because the Investor has the funds to enter the national phase in more countries.

    I guess it all depends on your view, what patent system best promotes the national interest. Is it no longer the case then, that what is good for GM is good for the USA? Was it always the case, and is it still the case, that what is good for Mr Lemelson is what is good for the USA?

  33. Ron Katznelson February 10, 2014 3:50 am

    You apparently misapprehend the patent bargain. It is disclosure in exchange for exclusive right for a limited time. Any mandatory disclosure prior to the grant of the exclusive right (prior to the patent grant) violates this quid pro quo. It is also entirely possible that an application will ultimately never issue as a patent and the inventor would have dedicated his trade secret to the public without any compensation. So your logic that such dedication is beneficial to large companies and that “large companies’ financial health is largely beneficial to the economy” is tantamount to justifying the free transfer of inventors’ property rights to large companies because the public benefits from such transfer. Really?

    Whether overall social welfare is actually enhanced by such mandatory publication rules cannot be determined by looking only at the benefits to the recipients. The major loss of incentives for participation in such a patent system has far more negative consequences by retarding innovation. This is in part the reason that very few startups and individual inventors disclose or participate in the EPO patent system. That does have a bearing on the much larger number of disruptive and consequential innovations made in the US compared to those made in Europe.

  34. Benny February 10, 2014 4:24 am

    I don’t consider early disclosure tantamount to transferring inventors’ rights, as you suggested.. I said that perhaps the lawmakers justify it, by weighing gains against losses. Overall, I would think that there is more gain than loss, but someone pays the price (the applicant, of course). It is probably truer in some cases than others.
    In the past, our company has reviewed project designs on the basis of competitors’ disclosures. The cost to our company, if we had to withdraw a product from the market because of patent infringement, is considerable. (to put it mildly) Have the rules been changed because of lobbying, by corporations, against “submarine patents”? I don’t know.

  35. Ron Katznelson February 10, 2014 5:35 am

    Nobody suggests that the Notice Function of the patent system be abolished. You describe an important and valuable process that your company is following – review project designs on the basis of competitors’ disclosures. That important process should definitely take place as it is in keeping with the very purpose of the patent system. But it should take place on disclosures of issued patents. There is no justification for disclosing patent applications before patent grant – patents should simply be issued 18 months after filing.

    The Europeans adopted an 18-month mandatory publication in the 1960s as part of the adoption of the deferred examination system under which examination commences only upon applicant’s request. In this scenario where the applicant delays the issuance of a patent for years, publication at the time a patent would have issued if not deferred makes a lot of sense. The 18-month period was apparently set to approximate the examination timeline practices of the time. However, the crucial problem (and I maintain, a grave mistake) with this policy was that the 18-month mandatory publication rule was imposed on ALL applicants – not only on those who elected to defer examination. That is the major break from the quid pro quo and the European large firm stakeholders were able to prevail over a few who objected.

    As I have written before, and as Anon stated above, it is the prepublication policy that causes long pendencies. The pre-grant publication policy gives “the public” their part of the patent bargain upfront and unconditionally. In so doing, it is stripping-away any incentives for “the public” to timely deliver on its obligation under the bargain, which it would otherwise achieve by pushing for sufficient transient examination resources to maintain short pendency.

    It is not surprising that the most spectacular increases in patent pendency at national patent offices began creeping-in after these offices adopted pre-grant publication rules. For example, Canadian patent office average pendency following request for examination increased by about 2 years after its adoption of a pre-grant publication in 1989. We are also keenly aware of the unprecedented and comparable rise in PTO pendency after 2001, when 18-months publication started taking effect. Average PTO pendency for years did not exceed 24 months before 2001, but grew up to 35 months in 2010. The EPO started operating with the 18-months publication rule and I cannot remember when the EPO ever had pendencies of 18 months, except perhaps in its startup phase.

    The notion that running a patent office that delivers 18 month steady state pendency takes more examination resources than running one that operates at a steady state pendency of 35 months is a myth. The required resources are identical because once additional resources are applied only during a transient to catch up with the backlog, the resources required in steady state are identical and are merely a function of the application flow rate – not of the size of the queue.

    The best way to dramatically reduce pendencies in patent offices is to abolish the 18-month publication rules. That way, all meritorious applications will be published in 18 months as issued patents.

  36. Ron Katznelson February 10, 2014 5:41 am

    Now you are missing the big picture by resorting to mere folklore. It appears that you have a very distorted and prejudiced view of American inventors and startups. You bring up two extreme aberrations that have very little to do with what actually happens here in the innovation community. You ignore the fact that it is here in the US that Intel, Apple, Google, Qualocmm, and others have arisen based on initial startup inventions and patents that could not have emerged in Europe. They, and many like them, were not engaged in submarining.

    I also have this news for you: there is nothing wrong with “dreaming of making it big and becoming filthy rich.” It is the disdain of pursuing such prospects, as you apparently have, that makes other countries trail behind the U.S. innovative economy.

  37. step back February 10, 2014 6:16 am

    … there is nothing wrong with “dreaming of making it big and becoming filthy rich.”


    The patent system is in part like a big gambling casino.

    When the “someone hit it big” bell goes off, it drives more wanna-bees into the inventing business. That’s good for America.

    Conversely, if the word gets out that the system is rigged against solo and small inventor groups; if they become aware that the bell ring means only that you are going to be sucked into long and protracted defend-your-winnings procedures (post grant reviews) even after you thought you won; the players are going to stop listening to the call of the bell.

    The process is a slow and deadly return to a culture of trade secrets and non-inventing.
    Once America develops such a culture of not-invented-here (NIH) because of the why-bother sentiment, it is extremely hard to turn that train-wreck-a-happening around. The next Sputnik moment may be one that comes too late. It is only the ignorant and the arrogant who say, Gee if we made it to the moon, “we” can do anything. Who is “we”? Come forth and show yourself in deeds rather than in BS.

  38. Benny February 10, 2014 7:37 am

    Ron K,
    Thanks for the lucid explanation. One more point though – should rejected applications be published, in your opinion? I believe that such publications serve as a valuable resource when deciding whether to file a patent application, and serve to prevent many unneccessary filings.

  39. Anon February 10, 2014 7:51 am


    Do you realize that your question at 38 indicates that you have not yet realized what Quid Pro Quo means?

  40. Anon February 10, 2014 8:13 am


    Once again I find myself reading what you write and wondering why you write as you do.

    Clearly, your emphasis on Lemelson and Hyatt is meant to highlight a perceived negative view of the US patent system.

    But that emphasis is misplaced. You should know that the change in term calculations from issue to filing was enough to eliminate the negative that you implicitly use in an apparent attempt to slam US patent law.

    I have noticed that another of your pet peeves is the Clear and Convincing standard. But here your writing seemingly poking a jab at our jury system inadvertently reinforces the C&C standard. Your comment of “better than the all the experts at the PTO, that had duly-issued claims are not OK.” protests too much.

    Anyway, the clearest point that I can glean from your post at 32 is that you believe that progress is better promoted when publication is faster.

    There is indeed a kernel of truth to that belief. But publication alone is not what is the key. Publication concomitant with the right to exclude is the key. Publication without that right only leads to fast copying and fast copying is still mere copying and not progress.

    It appears that you too, do not quite grasp what Quid Pro Quo means.

  41. American Cowboy February 10, 2014 10:11 am

    Gene at 24 asks: ” What, if anything, can we point to that also was a dwindling of rights between 1999 and eBay?” Well, I have not taken the time to see which of these fell within that time frame, but every one of them diminish the patentee’s position and have come about since about 1999:

    1. Obviousness standard changed from the predictable TSM to “only-god-(aka Scotus)-knows-what-it-is”
    2. Patentees are much more likely to be DJ defendants after Medimmune, simply for asserting their rights.
    3. Specious theories of inventions violating 101 abound, since Scotus has caused so much confusion in that jurisprudence.

    There are probably more to mention, but I got to get some work done.

  42. MaxDrei February 10, 2014 11:47 am

    anon makes a good point, that the switch from 17 years from issue to 20 years from filing curbs the worst abuses of the patent system in the USA. Now where did that good idea come from?

    Dr Ron writes:
    “….the fact that it is here in the US that Intel, Apple, Google, Qualocmm, and others have arisen based on initial startup inventions and patents that could not have emerged in Europe.”

    which reminds us that the USA is indeed a very entrepreneurial jurisdiction. Where he and I differ is that he thinks these global titans are there because of the US patent system whereas I think they are there because of the entrepreneurial culture in the USA and despite the patent law of the USA.

    As to A publication, the right to exclude and the Quid pro Quo, there has recently been an interesting debate in Europe as to which Patent Office is right; the UK one, that will on request issue the patent as the first publication, or the EPO, which insists on testing patentability relative to all earlier filings, which necessarily requires the Office to delay grant until at least 18 months after filing, just to see first if somebody else filed on the same invention one day earlier. But both Patent Offices are after the same objective, namely, granting to inventors validity-tested exclusive rights, to allow them to get injunctive relief at the earliest possible date.

    Of course, if grant at the earliest possible date is what you want, all you have to ask for it. All but a very very few inventors choose not to though. They prefer to keep their A publications pending as long as possible, before going to issue. That way they can assess what is going on in the market, and tune their claims accordingly. If they see infringement, they act imediately and bring their claims, suitably tuned, through to issue with no further delay. I still do not see how they are not getting their full measure of Quid for their inputted Quo.

    eBay is another matter. In Europe injunctive relief remains a sine qua non of the patent system. One might ask why not also in the USA.

    I can see the point that ambush patents (the ones that are not published till they issue) encourage private inventors to invent, invest and file. The debate is whether that encouragement comes at too high a cost, by which I mean the cost of designing around only after my production line has been built and put in to production but then has to be shut down by an ambush patent action. Cheaper and more efficient is to do the design around before building the plant, upon assessing the A publication.

  43. American Cowboy February 10, 2014 12:00 pm

    Max suggests “Cheaper and more efficient is to do the design around before building the plant, upon assessing the A publication.”

    Cheaper yet is to talk to the patentee as grown-up to grown-up, and agree to pay royalties.

  44. Anon February 10, 2014 12:53 pm

    I suggest that the aim of “cheaper and more efficient” needs to be tempered with an understanding of Quid Pro Quo.

    “Cheaper and more efficient” in and of itself has no tie whatsoever with justice and the rule of law and the critical aspects of the Quid Pro Quo.

    It is simply the wrong focus to have (if pursued in a singular mantra). In fact, without more, it is exactly the focus that has permeated the dissolution in patent strength and is exactly the focus that the large multi-nationals would love to have as the singular focus.

    Fostering innovation is not so aligned with merely “cheaper and more efficient.”

  45. Anon February 10, 2014 4:57 pm


    I am having trouble understanding why you think “because of the entrepreneurial culture in the USA and despite the patent law of the USA

    Is there a patent law outside of the US that you feel is more rewarding to entrepreneurial culture? If so, what are the attributes that make it so?

  46. Anon February 10, 2014 5:08 pm

    Sorry MaxDrei, but another question

    You state “which necessarily requires the Office to delay grant until at least 18 months after filing, just to see first if somebody else filed on the same invention one day earlier

    Does not your Office have the ability to look at unpublished art? The USPTO does. The Office does not have to wait until 18 months to decide. Perhaps it is because in the US, we have guarantees of action that are due prior to that 18 month window. Or perhaps, you have assumed something to be a rule that is not a rule… Or perhaps, the details of the debate are more numerous than alluded to here…

    Your question concerning eBay is a good one. I wish that I had an answer for you there.

    Lastly, the term “ambush patent” is unnecessarily pejorative. I am aware that both jurisdictions guard against new matter and the treatment of the application as filed prevents any true “ambushing,” so kindly refrain from being artificially provocative.

  47. MaxDrei February 10, 2014 6:04 pm

    anon at #45 No patent jurisdiction is perfect. Each is therefore “better” than all the others in a different way. I think there are some aspects of the US legal environment that are less than perfect for entrepreneurs. I think the entrepreneurs of the innovative biotech community in Munich operate under a patent law that is just as helpful to them as the patent law of the USA is to biotech entrepreneurs in the USA. Under the EPC you file as soon as you have something “plausible”. Within about 21 months after you file, thanks to A publication at 18 months,you know all the prior art that could touch the validity of your claims. You can get solid opinions about validity and the scope of protection you are in line to be granted. You are in an unassailable position, to attract investment, cash in your patent assets, or negotiate lucrative licences. That European investors are timid is not the fault of the European patent system

  48. MaxDrei February 10, 2014 6:11 pm

    anon at # 46. I don’t understand how the USPTO is free to use unpublished USPTO filings against other USPTO filers. Do they not have to wait till those other USPTO filings are A published by the USPTO. And does that A publication not take place at least 18 months after their respective filing dates?

    My term “ambush patent” is shorthand for “patent that is published for the first time, on issue, several (or even many) years after the filing date”

    eBay. What is it that drives courts to decline to give patent owners injunctive relief? Something not quite right about the asserted patent? Most unfortunate, do you not think, that judges have such little belief in the patent system they adjudicate, that they get cold feet about granting injunctive relief for plain infringement of a Claim against which all validity attacks have failed. That’s no way to run a patent system, is it?

  49. American Cowboy February 10, 2014 6:16 pm

    Max, you say at 47 “Within about 21 months after you file, thanks to A publication at 18 months,you know all the prior art that could touch the validity of your claims. …. You are in an unassailable position, …”

    That may be true for patent prior art, but what about commercial uses, … disclosures at conferences, …people testing corset stays with their womenfolk? Isn’t the applicant still vulnerable to them?

  50. MaxDrei February 10, 2014 6:24 pm

    Cowboy, normally, prior art is effective as of the date it emerges. Patent prior art is unique in that it emerges for the first time 18 months after its effective date. So you know about conference posters and the like 18 months before you see the PTO A publications of other Inventors, that destroy your patentable novelty.

    Under the EPC, though, the only PTO A publications that emerge after your filing date that have a prior art effect are those in the same jurisdiction, and then only for novelty. Under the EPC, the only belated A publications that the EPO can cite against you are EPO filings, and only for novelty.

    By contrast, the AIA allows A’s of any jurisdiction and also for obviousness attacks. That; I think, is crazy.

  51. MaxDrei February 10, 2014 6:28 pm

    Cowboy, see the EPC definition of the prior art. It doesn’t include testing women’s underwear at home. The test is “made available to the public” and the standard is that it must be enabling, by a disclosure in which something within the claim is rendered “directly and unambiguously derivable” by a PHOSITA member of the public. The first time you have to make a novelty attack stick, under the EPC, you will see how hard it can be.

    Good for entrepreneurs, I would think.

  52. Anon February 10, 2014 8:09 pm

    MaxDrei, your posts have me thinking: I recognize that you think it crazy to allow the art to be used for anything but novelty, but why?

    Obviouness is a determination – a legal determination for a PHOSITA. The determination is not a factual determination for a real person. I am not sure how I can see the separation of use of the item from the US 102 to the US 103.

    Perhaps you can explain why a legal effect to a legal construct should be constrained by a real person notion such as the art item was not published, ruling out a 103 use, but at the same token, allowing a 102 use.

  53. MaxDrei February 11, 2014 3:00 am

    anon at # 52. I’m really pushed for time but the question is one asked by American patent attorneys, over and over, so I will tap out a few words.

    Obviousness is all you need to filter patentability relative to the prior art (everything the public already knows). Novelty seems superfluous.

    Except that, in a First to File jurisdiction, we need a means to sort out who was indeed first to file amongst rival filers who have all carefully and deliberately kept the public in the dark and their invention secret.

    You could give them all a patent, or you could allow all earlier filings to be used in obviousness attacks against any and all later filings.

    Europe does neither of those. It simply says that later filers shall be limited to what they have that is novel over the content of the earlier filings at the same Patent Office.

    In my experience, engineers and scientists grasp this EPC structure quickly, and see its fairness and logic. It is only US patent attorneys that have difficulty with it.

    i am told the authors of the AIA don’t like the EPC way because it allows too many different applicants to grab a share of the “Action”. Better that the First Filer (the winner) Takes All, they think. The American way, I suppose.

  54. Anon February 11, 2014 8:20 am


    I appreciate your input, but remain unsatisfied because my question was merely avoided.

    I want to delve a bit into your statement of “Obviousness is all you need to filter patentability relative to the prior art (everything the public already knows). Novelty seems superfluous.

    This misses the very real nuanced difference between the two items. But it is a miss that many people make. The world of prior art that is available for each legal rejection is slightly different. The world of prior art for 102 is all art. The world of prior art for 103 is art for the specific field (and any art as recently augmented by KSR to include that which would be geared to solving the problem that the invention addresses). Novelty is not in fact superfluous, and it is legal error to so suppose. It is also, not as you would have it, a device for merely sorting out along the lines of First to File. It may have an effect in that regards, but that is not its purpose per se.

    Thus, your comment of “need a means to sort out who was indeed first to file amongst rival filers who have all carefully and deliberately kept the public in the dark and their invention secret seems a bit off as well. Consider for example that Prior User Rights removes any sting from such a fact pattern. In fact, the supposed beauty of first to file was that the mere fact of the winner of the race to the office suffices to sort out that which you now attempt to use the legal mechanism of novelty for. A time stamp by itself would suffice. No, the legal mechanism of Novelty does more – it is a distinctive quality of merit, along with its similar – but still different – sister of obviousness. No doubt, the element of first is still critical. Necessary, but not sufficient.

    I struggle to make sense of your comment “You could give them all a patent, or you could allow all earlier filings to be used in obviousness attacks against any and all later filings..” Why would you be able to give all of them a patent? That sounds like you eliminated the requirements completely. The second half of the statement is the question I am asking at 52 – but your response does not answer that question. You merely say “could.” You leave unanswered “how could.”

    Further, it appears that your statement leaves an all or nothing taste – which seems to indicate the opposite of what you currently hold – that 102 makes sense but that 103 is “crazy.” – but you provide nothing as to the why Europe makes a split legal use (the legal why). Yes, we already know that Europe does make the split. But that was not a question. The question was how can Europe simply decide to make a legal split (and the seeming use of a physical real person access is not a viable answer given that both 102 and 103 are legal – not physical – mechanisms)?

    Again, you merely label this as “easy to see” and “fair and logical” without providing a basis – a legal basis why this is so. All you have done is say that Europe splits the two sisters and treats them legally different and claim the result of the action as beneficial without explaining the legal basis for the different treatments of similar legal conditions.

    My question to you remains unanswered.

  55. American Cowboy February 11, 2014 9:11 am

    Max, thanks for helping to clarify the EPO definition of prior art.

    American patent attorneys, why don’t we get the AIPLA to adopt that definition as part of the harmonization drive, like other parts they have pushed?

  56. MaxDrei February 11, 2014 9:19 am

    anon, we differ on whether I have addressed your question.

    Readers, back in 1973, Europe needed a new substantive law of patentability, to harmonise within Europe between the extremes of the existing patent laws of the UK and Germany. So it sat down with a plain white sheet of paper (and NOT the 1952 patent statute of the USA) and wrote itself one, one with an irreducible minimum of complexity and a maximum of fairness and balance as between the rights of Inventors and the rights of those threatened with patent infringement. Civil law Germany and the common law UK then tore up their existing patent laws and harmonised on the simple provisions on the white sheet, the European Patent Convention.

    anon you appear to me to be assuming that the patent law of the USA, the provisions of the 1952 patent statute, are the only understandable starting point, from which any country can begin the process of drafting for itself a patent law. You seem to think the substantive law of the 1952 statute is qualitatively at a deeper fundamental level than the pre-existing patent law of England or Germany, or the simple provisions of irreducible simplicity that Europe wrote in 1973 on its the blank white sheet of paper. You have no basis for that assumption.

    As I wrote higher up, the only people who have difficulty grasping the logic of the EPC are US patent attorneys.

  57. MaxDrei February 11, 2014 9:28 am

    Cowboy, I already suggested a possible answer to your question at # 55, that a “Winner Takes it All” philosophy suffuses America, through and through. To an American, unfamiliar with a First to File environment, it seems natural that the first filer, whether in China, Germany or the USA, is the Victor in the patent fight, to that Victor should go ALL the spoils, and, in particular, spoiling the patentability prospects of every other filer, even those just one day later.

    OK, it’s an attitude. Not for me to say whether it is one that the rest of the world should rush to adopt. Instead, you tell me, what is so wrong with “Winner Take All” that you want it struck out of the AIA. Perhaps that, by definition, what suits corporate America does not suit you and your Clients. Is that it?

  58. American Cowboy February 11, 2014 10:08 am

    Max, in response to your 57, I was mostly commenting on how EPO does not have a “testing in a corset” sweep to its definition of prior art. That kind of prior art and our abhorrence of an inventor profiting from his invention more than 365 days before filing, are sources of mischief here that don’t seem to bother the Europeans. In addition, by providing a second-filer the opportunity to patent features that his application discloses but that may be obvious from a slightly earlier filer’s disclosure, seems to be an understandable rough justice.

    I was not in favor of switching to ftf, but not because there is some cosmic justice that comes from awarding the patent to one who invents two days before another, and leaving the other in the cold. Frankly, in the big picture, both of them should be encouraged, and maybe the EPO system does that, much to Anon’s chagrin.

    No, my opposition to ftf was that it makes people file applications that are rushed, before the invention is fully developed and before the attorney can write and re-write the application as many times as it takes to be good. And, the attorney has to miss her kids soccer games and stay in the office crafting the application to file, because if she delays the filing by a day and the client loses, she becomes a malpractice defendant. I gather Europe avoids that mess, too, Max. Can you fill us in on how?

  59. Anon February 11, 2014 10:40 am

    Sorry MaxDrei – I may have time later to revisit, but for now, you ascribe assumptions that are simply not true.

    You have in fact not answered my questions. And now it appears that you seek to only muddy the water by bringing in larger and separate issues.

    I don’t have time for such game playing now.

    If you want to address the explicit issue of how you can split the legal sisters of 102 and 103 and treat them differently, I would be willing to listen.

  60. MaxDrei February 11, 2014 10:52 am

    AC, to be frivolous, Europe avoids the malpractice risk by having a culture in which it is harder to win a malpractice suit against a patent attorney.

    To be serious, FtF is a system that punishes premature filers unmercifully. Your early filing gets A published 18 months after filing, and off go the copyists. But when you try to stop them, you find out that your filing is not enabling, or it cClaims the wrong thing, or it fails to say what is decisive for defining what by then we know to be the real Invention.

    So any patent attorney worth his salt protects his client’s interests precisely by NOT filing prematurely, filing without delay but only when everything has been carefully thought through.

    Typically, patent attorneys want to file without delay because they want payment from the client. Of course, egregious delay in filing a case that has been “ready to file” for weeks, and which you have been authorised to file, is taking a serious risk. One day, in Europe, somebody is going to be successful in a malpractice suit against a patent attorney. Watch what they do then!

    It always made me smile, that attack from US attorneys that FtF Forces premature filings. I see it the other way around. FtI is the culprit, not FtF, that encourages ill-thought out, badly drafted, speculative and premature provisional filings because there is not the same downside to it that there is in Europe.

  61. MaxDrei February 11, 2014 11:21 am

    anon at # 59. What “legal sisters”? That incomprehensible notion is nothing more than a useless meaningless airy fairy abstract thought conjured up inside your head.

    I don’t have to engage with that, there is no need for me to engage with it there is no point in my engaging with it, no useful purpose is served by my engaging with it and I’m not going to engage with it.

  62. American Cowboy February 11, 2014 11:41 am

    Max, I don’t blame you for not getting engaged to the legal sisters. One of them may get jealous.

  63. Anon February 11, 2014 1:12 pm


    No need to be impolite. Such on top of not providing answers makes me feel as if you think you are posting on Patently-O.

  64. murf February 11, 2014 3:15 pm

    The Google’s and Apples have sowed the seeds of their own destruction to the infringing hoards from Asia.

    All the IP they own will be subjected to this and most of it nullified by the very law they lobbied so hard to get.

    It is just too bad the small inventor (the real innovator) is now a thing of the past.

  65. Gene Quinn February 11, 2014 6:15 pm

    Comment sent to me by Brad Pedersen, who Chairs the Patent Group at Patterson Thuente Pedersen, P.A. and is the current chair of the AIPLA Committee on inter partes proceedings. Posted with permission.


    One additional point which you might want to highlight regarding the roadblocks to patent owners that are created by these new review proceedings stems out of the new “patentee estoppel” rules under 37 CFR 42.73(d). Under this rule, patent owners are estopped from presenting or continuing the prosecution of any patentable indistinct claims from any claims that are rendered invalid in a final written decision of a review proceeding. This includes the presentation of those claims in either a reissue or a continuing application claiming priority to the same family.

    One of the big issues for patent owners is whether and how to potentially amend claims for any patents that are drawn into a review proceeding. Given the current harsh standards for permitting amendments as part of the review proceeding, some have suggested the use of reissue or continuing applications as the better vehicle to amend the scope of the patent claims. However, in light of the “patentee estoppel” rules under 37 CFR 42.73(d), these suggestions remain an unproven and uncertain approach.

  66. Ron Katznelson February 12, 2014 1:48 am

    Brad Pedersen is correct. We have raised this issue during rulemaking in the IEEE-USA comments I linked above at 4. I believe that even in the final rule, the PTO promulgated an estoppel beyond that authorized by statute. 37 CFR § 42.73(d)(3)(i) states (emphasis added):

    A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:
    (i) A claim that is not patentably distinct from a finally refused or canceled claim; or…

    By statute, 35 U.S.C. § 120, an applicant entitled to file a continuation application is entitled to all rights arising in that application. The PTO cannot by regulation attenuate this statutory right. If, for example, a claim is cancelled in PGR proceeding as lacking full § 112 support but is pursued in “any patent” such as a daughter CIP having additional support, this rule will deny the applicant an opportunity to obtain the canceled claim in an application that has full support for such claim.

    The PTO is likely to lose a legal challenge on this issue as it is in the BRI issue described above.

  67. Anon February 12, 2014 7:32 am

    MaxDrei, your posts at 61 and 56 contain five “I don’ts” and insults:

    1) “I don’t have to engage with that,” – Of course it is always true that you do not have to do anything. I was rather hoping that you would answer an obvious question that is generated by your bold labeling that indicates two very different treatments of two related legal concepts.

    2) “there is no need for me to engage with it” – This is quite false. The need is clear. You make a bold pronouncement and then refuse to explain why that pronouncement is true, merely waiving your conclusions of benefit without more.

    3) “there is no point in my engaging with it,” – Well if you believe this, then you believe that whatever you want to say is true merely because you say it is true and you have no desire to think otherwise. And if you refuse to think, well, that is your choice, but it does not remove the point that you are treating similar legal concepts in disparate manners, nor the need to explain why such treatment is justified or even reasonable.

    4) “no useful purpose is served by my engaging with it” – This is even worse than thinking there is no point. The purpose is to explicate a clear and rationale explanation for why you think law written so similarly, should be treated so disparately.

    5) “and I’m not going to engage with it” – This is your option, as noted in the response to the first “I don’t “ above. It is not a great option to take, given that your responses to the second through fourth “I don’ts” fall short.

    And the combination “”comprehensible notion is nothing more than a useless meaningless airy fairy abstract thought conjured up inside your head.” and “ differ on whether I have addressed your question

    I see why lower case anon treats you so harshly. My post does not say that you did not “address” my question – it says that you did not answer my question.

    You have not answered my question.

    Further, your “addressing” of my question was to provide, well, nothing of substance – as noted in your snide replies in the “I don’ts” of 2) through 4) above. Your rudeness in characterizing how I described in colloquial terms the legal relation between novelty and obviousness was simply uncalled for, and is simply inaccurate.

    If you want to post that your European system is grand, but do not want to – or as I am beginning to believe, cannot – answer a relatively simple question as to the disparate treatment of very similar legal concepts, then the readers will easily see through your brashness and your conclusory pronouncements.

    This blog centers around real discussions and the law; not insults and evasions of legal reasoning that typify Patently-O. I do understand that you really believe in the EPO way. That is fine. I am sure that the EPO way was created with the best intentions. But you serve poorly as an ambassador when you behave so rudely in the face of a simple question on why similar concepts at law are treated so differently. It would be far better to simply acknowledge that you do not know or understand why than to play the mocking game that only marks you as a knave.

    As it is, it is your decision not to engage and the way that you have “not engaged” provides clear answers, at least clear answers to your level of understanding. My questions on the law remain unanswered, but your addressing answers different questions on your ability to understand and explain what you hold so dear. As you indicated, you do not have to provide better answers. Upon reflection, you may choose to think differently, or you may not. I leave you with your “useless meaningless airy fairy abstract thought” non-answer. The floor is yours if you wish to do better.

  68. MaxDrei February 12, 2014 8:32 am

    I have reflected. I still do not understand your questions Anon. By the way, as to whether I am at any one time corresponding with “Anon” or “anon” rightly or wrongly I have the feeling that behind the two pseudonyms is the same single human being.

    To me you are still trying to have it that the provisions of 35 USC 102 and 103 and the attendant caselaw are somehow deeper or more fundamental than the provisions of Art 54 and 56 of the EPC and so, if it deviates from 102 or 103, the EPC has somehow to justify or account for itself at the court of 35 USC. Sorry, but that is bonkers.

    Can you still not see that it is so? As I keep on writing, everybody I know can grasp the fundamental logic of Art 54 and 56 of the EPC, except some US patent attorneys, I suspect because 102 and 103 is for them, holy writ and infinite wisdom. A different definition of the prior art (like that in the EPC) is “too difficult” for them; either beyond their capacity to imagine, or sacrilege even to suggest.

    So, I have nothing more I can add. The sooner this conversation finishes, the happier Gene Quinn and his readers will be, I daresay.

    Or else, Gene, you tell me please, what I am not getting, and what is bugging Anon/anon.

  69. Anon February 12, 2014 9:13 am

    I see why you are confused.

    You appear to think that I want to hold you accountable to US law. That somehow, this is a trick to show that US law is superior.

    That is just not the case. There is no such trick here. What I want is clear from my question. How do you explain the disparate treatment of two similar legal concepts?

    This has absolutely nothing at all to do with any sense of US law being held “higher” than EPO law. This has everythign to do with a simple explanation of your initial comment that the treatment of art in one legal concept is “crazy” when the treatment of art in a similar legal concept is plainly evident.

    As I point out – you wish to make the pronouncement, but cannot be bothered supporting that pronouncement with any sense of legal reasoning.

    You play the games that typify the dross on other blogs – pretending not to understand, misstating the discussion (addressing questions versus answering questions), bringing in larger issues and hand-waiving as “it must be so” merely because you have said so.

    Either answer the question, or not. But please, do not pretend to have knowledge you cannot substantiate. Do not pretend that the legal position is so crystal clear that you cannot be bothered explaining the legal reasoning. Do not pretend that the asking for the supporting legal reasoning is unclear. The question is as simple as it is direct. To pretend otherwise is insulting to me. To pretend otherwise is insulting to you.

    If you have nothing more to add, the legal reasoning will remain unanswered. Don’t pretend otherwise.

  70. MaxDrei February 12, 2014 10:04 am

    Here are my words from #53 above:

    “Obviousness is all you need to filter patentability relative to the prior art (everything the public already knows). Novelty seems superfluous.

    Except that, in a First to File jurisdiction, we need a means to sort out who was indeed first to file amongst rival filers who have all carefully and deliberately kept the public in the dark and their invention secret.”

    from which, Anon, anon, you will see (if you want to) that obviousness is to be tested relative to everything within the knowledge of that hypothetical member of the public, the PHOSITA. What the public does not yet know at the date of the claim under consideration is what rival filers have already deposited recently at the PTO under the understanding with the public, the PTO, the Government, the courts, indeed the certainty, that until the A publication the PTO is not going to release that content to any member of the public, not even the PHOSITA.

    That real life assessment of obviousness under the EPC is to be contrasted with US patent law, which includes the legal fiction that the content of the filings of rival filers was always available to the PHOSITA, to render inventions obvious, even before the date of the PTO A publication, and even though the PHOSITA had no means of acquiring that Content, until the PTO A publishes. The legal fiction is perpetuated under the AIA. Also above, I surmise why.

    I had thought all this to be evident, directly and unambiguously derivable by an ordinarily perspicaceous patent practitioner, upon a careful reading of # 53. I still think so, but I repeat it, for Anon/anon’s benefit. It explains why Art 54(3) of the First to File EPC includes not yet A-published earlier patent applications, after their A publication, in the prior art available for novelty attacks but not in the prior art collection available for obviousness attacks.

    Got it now?

  71. Anon February 12, 2014 11:20 am

    In other words, you are saying that EPO’s PHOSITA is not the same as the US PHOSITA. Is that a correct statement?

    But PHOSITA in EPO is still a legal fiction, correct? You again simply are not explaining the legal reasoning by merely saying “the real life assessment of obviousness” because that is still a legal assessment with a legal (albeit perhaps different) PHOSITA.

    Perhaps instead of insults and muddying comments, you would enlighten us by showing what you understand to be the differences in the EPO PHOSITA, or at least what the EPO PHOSITA stands for in its own right (so as not to make you think this is some type of comparative trick, which evidently upsets you greatly).

    For example, does the EPO PHOSITA know all published work prior to the date of filing? All published work in the art field? All published work related to the problem attempted to being solved? You do realize of course that no real person in any art field could possibly have this type of encyclopedic knowledge, do you not?

    And perhaps then we can get back to the point as to why you think it permissible (even self-evident) that the similar legal concepts of novelty and obviousness should treat prior art differently. That is, if you really do know why and not just what the perceived benefits are.

  72. MaxDrei February 12, 2014 12:11 pm

    People want objective assessment of the prior art, rather than subjective. That is why all jurisdictions have the notional skilled person, who is therefore, self-evidently, inevitably, not the same as any real individual human person.

    The PHOSITA in Europe knows everything that has already been “made available” to “the public” but has no capacity to invent. Europe explores novelty and obviousness relative to that PHOSITA.

    I have told you, from the outset, over and over, “why” the content of unpublished patent applications at the EPO are NOT available to the one who is putting together obviousness attacks under the EPC.

    And I have told you why (to stop double patenting) those unpublished filings (once they are A-published) are necessarily involved in the competition for patent rights, between rival filers who each have claims to subject matter that was not already obvious at the filing date of their respective claims and is therefore eminently patentable (but for the fact that some other fellow had already filed, at the same Patent Office, and on subject matter that overlaps).

    It can’t be that difficult to grasp the underlying logic, Anon/anon. Can it?

  73. MaxDrei February 12, 2014 12:13 pm

    GENE, why is this posting blocked, please?

    People want objective assessment of the prior art, rather than subjective. That is why all jurisdictions have the notional skilled person, who is therefore, self-evidently, inevitably, not the same as any real individual human person.

    The PHOSITA in Europe knows everything that has already been “made available” to “the public” but has no capacity to invent. Europe explores novelty and obviousness relative to that PHOSITA.

    I have told you “why” the content of unpublished patent applications at the EPO are NOT available to the one who is putting together obviousness attacks under the EPC.

    And I have told you why (to stop double patenting) those unpublished filings (once they are A-published) are necessarily involved in the competition for patent rights, between rival filers who each have claims to subject matter that was not already obvious at the filing date of their respective claims and is therefore eminently patentable (but for the fact that some other fellow had already filed, at the same Patent Office, and on subject matter that overlaps).

    It can’t be that difficult to grasp the underlying logic, Anon/anon. Can it?

  74. Gene Quinn February 12, 2014 12:59 pm


    Not sure why the comment got caught in the spam filter.


  75. MaxDrei February 12, 2014 1:56 pm

    Gene, thanks. After my first posting I read through my text to see what could have triggered the filter. I deleted an expression which I will now “repeat” as:

    “0v3r and 0v3r”

    and lo and behold, the second posting got through.

    if your filter is set to ultra-severe, to reject any posting that contains language as intemperate as “0v3r and 0v3r”, or worse, then I’m all in favour of it. I will just have to learn to curb my Patently-O ways, when posting to your blog.

  76. Anon February 12, 2014 2:16 pm


    Let me be more clear:

    The state of the art is a legal notion – not dependent on any real person.

    This legal notion is tied directly to both novelty and obviousness in a similar legal manner.

    Again – this is a legal and not a real person notion.

    The facet of double patenting between real people is simply not enough to justify a disparate treatment as you boldly suggest that any other treatment is ‘crazy.’

    In the exact same manner that you attempt to use a ‘real person’ construct with double patenting between ‘real people’ and neglect the legal aspect of state of the art for novelty (or the equivalent of 102), you neglect that legal construct for obviousness (or the equivalent of 103).

    You continue to mix apples and oranges with real people and legal fictions, and yet take umbrage when I point out what you are doing and your lack of adequately explaining why you are doing what you are doing.

    I have yet to see any type of legal reasoning from you. Of course, you do not have to ‘engage’ and provide any legal reasoning, but please don’t pretend that something is self-evident when that very something is challenged and shown to be lacking consistency.

  77. Anon February 12, 2014 2:22 pm

    In other words, you seem to want to be strict about not allowing exact double patenting, but you seem perfectly OK with allowing obviousness-type double patenting, because of your reading into the obviousness equation the sense of ‘real world person could not read the unpublished A publications.

    The problem you seem unable to recognize is that the legal barriers of novelty and obviousness work on the same legal notions.

    The difference between apples and oranges matters. The difference is not ‘crazy’ – the difference is based on legal – not real world person – notions.

  78. Gene Quinn February 12, 2014 2:28 pm


    The spam filter is quite sensitive. I didn’t realize it was that sensitive, but there are a number of things coded in that are intended to weed out the typical spam messages. We get thousands of spam messages every day.


  79. MaxDrei February 12, 2014 2:43 pm

    Anon/anon it is not a case of what I want. I’m simply trying to explain to you and other readers here what the 1973 European Patent Convention provisions are, on novelty and obviousness. As to your grasp of them, I’m encouraged that you are now alive to the distinction the EPC makes between exact double patenting (not allowed) and obviousness-type double patenting (allowed).

    You are right that I:

    “seem unable to recognize is that the legal barriers of novelty and obviousness work on the same legal notions”

    My problem is that I don’t understand where you get the authority to state:

    “the legal barriers of novelty and obviousness work on the same legal notions”.

    Cite me your authority in the sources of international law would you. Is it in the Paris Convention perhaps? Or in the PCT? Or in GATT-TRIPS? Is Europe not in accordance with the law on this point. Do tell. I’m curious.

  80. Anon February 12, 2014 3:15 pm

    I was always alive to the distinction MaxDrei.

    What remains unanswered is the legal rational why.

    To that end, your acknowledgement of not understanding that the legal barriers of novelty and obviousness work on the same legal notions is indeed a starting point for you.

    But it is a bit odd, given your post at 72 of “That is why all jurisdictions have the notional skilled person, who is therefore, self-evidently, inevitably, not the same as any real individual human person.” Perhaps if you share your cite of authority for this statement, you will find my cite of authority.

    You seem to still want apples and oranges thought of as the same.

  81. MaxDrei February 12, 2014 4:43 pm

    Oh, so once again you assert that I am concurring with you, Anon/anon? I see I have to reiterate that it is you not me, that asserts that:

    “…the legal barriers of novelty and obviousness work on the same legal notions…”

    I don’t understand where you get that idea from. I’m curious to know. You can’t or won’t tell me.

    Now to the notion of the skilled Person. All patent systems rely on the statutory notional “person skilled in the art”. But each jurisdiction relies on caselaw to define the attributes of that entity. The European caselaw, back to the year dot, has only ever been to the effect that the person lacks even a scintilla of inventive capacity.

    As I understand the KSR skilled person, however,his attributes include an ordinary amount of inventiveness (whatever that is). Do you concur?

    By heck, this conversation is tedious.

  82. Anon February 12, 2014 5:40 pm

    Read and follow my post at 80 MaxDrei.

  83. step back February 12, 2014 7:58 pm


    Anon/anon is wrong. Obviousness and anticipation are not one and the same thing.

    Anticipation can occur for example based on not-previously-known but inherent properties of a known material. If something is not known to skilled artisans, it cannot be obvious to them. And yet it can nonetheless be anticipated. 🙂

    A method of forming nanotubes comprising burning an organic substance (i.e. wood).

  84. MaxDrei February 13, 2014 3:06 am

    Interesting and good point Step. Thanks. My standpoint is that obviousness is enough, to settle patentability relative to the prior art, and that the concept of novelty is needed only to restrict multiple patenting in a First to File jurisdiction. You are saying (if I read you aright) that there are situations where obviousness is not enough to stop a re-patenting of the state of the art, that only a novelty hurdle is effective, to stop the grant of exclusive rights on old but recondite subject matter like “burning wood to form nanotubes”.

    IfI remember right, the patent litigation in England on the by now notorious Pfizer drug VxxGRx featured much debate whether some tree bark or other, that one tribe has chewed since ancient times, in order to ingest the “Spirit of the bark” was an anticipation of the Pfizer claim.

    If it was always obvious to the tribe’s Medicine Man that, to mitigate your problem, you need some “Spirit of the bark” then was it also “obvious” in a patent law sense, that you what you really needed was some of Pfizer’s product, with the self-same active ingredient?

  85. step back February 13, 2014 6:48 am

    Your comment #84 raises two additional points –neither of which is on topic with the current one about monetization and PTAB roadblocks

    1) “New” as to whom, the jungle tribe that chews bark or the Big Pharma community?
    2) What exactly is it that is new, the compound as found in bark or as “isolated”?

    Maybe this needs a new post under a heading such as “Obviousness versus Anticipation, Are they the same?”

  86. Anon February 13, 2014 7:08 am

    Sorry for the repeat – stuck in filter – please delete the copy:


    I am not saying “ Obviousness and anticipation are [] one and the same thing.

    I am saying that they are related. They are related by legal concepts. Think sisters, not clones.

    MaxDrei uses real-life persons as part of the disparate treatment ‘rationale.’ The concept of novelty is not only for real life double patenting. In fact you provide anticipation in your example at 83 and then MaxDrei follows with his post at 84 saying ‘good job’ but then also saying anticipation only for (real life) double patenting. But there was no first patenting in the inherency position, thus real life double patenting is clearly not enough of a reason for anticipation.

    MaxDrei, “recondite” is not the correct word, as the concept of inherency is not necessarily one of difficult, complex or abstruse.

  87. Anon February 13, 2014 7:31 am

    In fact Step Back, as I contemplate MaxDrei’s answer at 84, I note that he is attempting to use “obviousness” with your supplied inherency position.

    Shall I assume that this is being done on purpose? That the answer supplied by MaxDrei is attempting to say that inherency only applies in cases of obviousness and not, as you stated, for anticipation?

    We could go down that path.

    I would rather focus on my initial question. That question remains unanswered.

  88. MaxDrei February 13, 2014 7:52 am

    Anon/anon and I agree, that novelty and obviousness are not the same thing. Step, your suggested piece for debate might be rather a short one.

    As to the example of burning wood, it was always obvious to burn wood, wasn’t it?.

    In Europe, if the inevitable result of burning wood is to create nanotubes then the claim lacks novelty.

    Further, in Europe, if you get nanotubes only when certain wood-burning process conditions are met, and you don’t recite those conditions in the claim, your claim fails to meet the provisions of Art 84 (clarity) and 56 EPC (obviousness). Further, if you don’t spell out in the specification what those process conditions are, you go down under the insufficiency Provision of Art 83 EPC.

    But all this is for another thread, eh lads?

  89. Anon February 13, 2014 8:23 am

    My daughter was watching Forrest Gump last night, and MaxDrei’s continued non-answers reminds me of a paraphrase:

    Tedious is as tedious does.

    Bog down the thread with many a non-answer, leaving, once again, an explication of legal principles unanswered.

    Having to point out that a distinction exists between “addressing” and “answering” a question, having to point out repeatedly that the question remains unanswered is indeed tedious.

    I am convinced that such is the purpose of the non-answers given.

  90. MaxDrei February 13, 2014 11:28 am

    If I do not understand the question, I can nevertheless address it. I can’t answer it though.

    Suddenly, it crosses my mind, that Anon/anon might never have read the novelty (54) and obviousness (56) provisions of the EPC yet, and so does not yet realise that the EPC definition of the prior art for obviousness is different and more restricted than that for the assessment of novelty. Links below, to EPC 54 and 56.

    Is that the problem Anon/anon? You didn’t know that?

  91. MaxDrei February 13, 2014 11:29 am

    Comment 90 “awaiting moderation”. Why that then Gene?

  92. Gene Quinn February 13, 2014 11:35 am


    That comment didn’t go to spam, but rather awaited moderation because it had 2 links. That is happening more and more so after approving the comment I modified the filter so that comments with 2 links no longer need to await moderation. I did a quick scan of the spam comments folder and for the most part spam messages have 3 or more links per message, so that seems a more appropriate level to trigger moderation.


  93. MaxDrei February 13, 2014 11:48 am

    I thought it must be something like that. Thanks Gene. It amazes me how much work must go into running this blog so interactively and responsively. But I suppose it does have some compensations, from time to time.

  94. MaxDrei February 13, 2014 12:13 pm

    From # 52 above:

    “Perhaps you can explain why a legal effect to a legal construct should be constrained by a real person notion such as the art item was not published, ruling out a 103 use, but at the same token, allowing a 102 use.”

    Is that your unanswered question, Anon/anon?

    And does # 90 give you some sort of answer, at long last?

  95. Anon February 13, 2014 12:42 pm



    You have once again attempted to provide “as explanation” the mere fact that a difference in treatment exists. My post 80 answers your ‘new’ question.

    Tedium continues.

  96. step back February 13, 2014 2:15 pm

    (1) Max,
    Thanks for the links at #90 to the EPO laws re inventive step and novelty.
    I assume that, just as in the States, each word like “available” and “the art” is a loaded term with much in the way of case law behind it. 😉

    (2) Gene,
    Thanks for lifting moderation to defcon 2 😉 😉

    (3) Anon,
    Tedium is the name of the game when analyzing the claim (In re Hienker) 😉 😉 😉

  97. Anon February 13, 2014 4:49 pm

    Step Back,

    While your third point may (or may not have merit), tedium should not be the name of the game when discussing the legal rationales for why the law has been written as it has been written.

    That would be just ‘crazy.’

  98. step back February 13, 2014 5:03 pm


    And US Congress critters or European PMs?
    Them things don’t mix.
    Like oil and outgassed CH4.

    Lighten up and just drink some more Kool-Aid 🙂

  99. MaxDrei February 13, 2014 6:03 pm

    Step, I understand your question so can answer it.

    Under the EPC, the state of the art is everything made available to the public. Yes, the caselaw since 1978 does indeed provide insight into what “available” might mean and what “the public” might mean.

    Perhaps you can help me now. I don’t understand Anon/anon’s question:

    “….why a legal effect to a legal construct should be constrained by a real person notion such as the art item was not published, ruling out a 103 use, but at the same token, allowing a 102 use.”

    He can’t sleep till he gets an answer and I want to give him an answer. If only he could express himself intelligibly, I could then help him. You can express yourself intelligibly. You perhaps have an inkling what’s bothering him. What do you suppose he means?

  100. Anon February 13, 2014 6:22 pm


    How much simpler can I be than to ask you to explain why there is a difference – and pin that difference on legal, and not real person attributes – between what is used in Article 54 and what is not used in Article 56.

    Have a little bit of respect. Your “ If only he could express himself intelligibly, I could then help him.” is not appreciated in the least.

  101. Anon February 13, 2014 6:26 pm

    And notes, I am not asking you if there is a difference, or even what the difference is, and most assuredly, not what is the benefit of the difference.

    Further, per step back’s contribution of inherency, you cannot use double patenting as a legal reason.

    And of course, it is still within your right to simply proclaim that you do not have to answer. But please, lose the attitude. You have shown no right to display that level of crassness to me.

  102. MaxDrei February 13, 2014 6:47 pm

    So that is your question: WHY does the EPC define the prior art differently, for novelty and for obviousness.

    Answer: because the drafters of the European Patent Convention, the governments of the founding Member States, agreed that this should be their start from scratch patent law

    In answering, I am required to:

    “pin that difference on legal, and not real person attributes”.

    I was not there at the time. The drafters do not have to account to you or me for their drafting. I don’t know “why” they wrote it as they did. What’s the point in my hazarding a guess?. The EPC is what it is.

    Have a look at the Protocol on Art 69 EPC

    It requires balance between “fair” protection for Inventors and “reasonable” legal certainty for those facing the barrel of the patent gun. One could perhaps discern in Art 54 (novelty) and 56 (obviousness) further effort by the drafters,to strike such a balance.

    And with that, I’m struggling to add any more.

  103. Anon February 13, 2014 6:55 pm

    MaxDrei’s “What’s the point in my hazarding a guess?. The EPC is what it is.” sounds amazingly like Step Back’s “Rationale?… Them things don’t mix.

    Thank you MaxDrei for yet another non-answer.

    You provided absolutely nothing to the conversation, but only wasted everyone’s time in adding that nothing.