Patents, a system that works – On the record with Bruce Kisliuk

By Gene Quinn
December 13, 2015

Bruce Kisliuk

Bruce Kisliuk

Bruce Kisliuk is a former Deputy Commissioner for Patent Administration at the United States Patent and Trademark Office (USPTO). He retired from the USPTO at the end of July 2015 after a 30 year career and has joined the Wilson Sonsini Goodrich & Rosati as a senior patent counselor.

In his last role at the Patent Office, Kisliuk oversaw all aspects of the Patent Organization’s information technology management, and oversaw customer outreach activities, specifically targeting intellectual property education and support for independent inventors, universities, and small businesses. But like so many other senior level managers at the USPTO, Kisliuk rose through the ranks over the years, having originally started out as the newest patent examiner.

Through attending events at the USPTO and at various venues around town I’ve gotten to know Kisliuk a little over the last several years, and I always wanted to interview him.  The opportunity never presented itself while he was at the USPTO. Upon learning that he was leaving the Office I told him that I still wanted to interview him if he had interest. He expressed interested but asked for a little time to get settled in the private sector first, a very reasonable request. We eventually had a discussion on the record on November 24, 2015.

Without further ado, what follows is part 1 of my 3 part interview with Bruce Kisliuk.

[Varsity-2]

QUINN: Thank you very much for taking the time to chat with me.

KISLIUK: It’s my pleasure. I’m glad we could take time to talk.

QUINN: Absolutely. Now I don’t know how many people know what role you played at the Patent Office before you moved out into the private sector so maybe we should start there. What was the last position that you held at the Patent Office and what were your day-to-day responsibilities?

KISLIUK: The last position I had was as the Deputy Commissioner for Patent Administration and I was in that position for about three years. I started in that position in early 2012 and the scope of that position included responsibilities for the information technology aspects of the Patents Group. We worked with the CIO on those developments in order them understand the business requirements of the Patents Organization. Another aspect, it was a fairly large one, was the budgeting and financial aspects of the Patents Group. The PTO has an Agency CFO for finance just like they have a CIO for the IT, however, the Patent Organization is about 80% of the budget so there are much deeper layers of accounting and numbers on the Patent-side that have to be worked through. And the last formal responsibility was the Office of Innovation Development, which is one of the outreach organizations for independent and small inventors and under-resourced groups, and that was one that I didn’t much experience with before this position. The PTO actually has a pretty long history supporting independent inventors and the scope of that group had been broadening to help a lot of others as well.

QUINN: So now that you’re in the private sector how would you compare your government experience to private sector? Is it what you expected?

KISLIUK: I think I’m still too new to know exactly what the full role and scope is going to be. Because I was an executive at the PTO I am barred from doing representational activities before the PTO for a year. So until then I’m doing a hodgepodge of things. A little bit of troubleshooting related to understanding how best to use the programs at the PTO. And I’m also helping out by getting involved in some of the firm’s business processes, business practices, some of the things they do in terms of managing their dockets and managing information. So it’s similar to some of the administrative things I spent some of my career on at the PTO. Another nice aspect about this firm for me is they have a few other past PTO employees and so they value people with knowledge of the PTO and appreciate that there is an insider’s perspective to a federal agency, particularly one as big as the PTO. So I can help with some of those aspects and allow them to focus on the technology and the clients, so that’s been a good fit so far.

QUINN: Now, I think a lot of people probably have this idea that when you leave government service and then you go into the private sector that you will work harder because, after all, it’s just government service, you know, it’s a 9:00 to 5:00 job, maybe 40 hours a week on a busy week, right? But I don’t think that was the reality that you had at the Patent Office, was it?

KISLIUK: No, that’s a good observation. You know, you’re right, Gene, it really wasn’t. I came all the way up from being an Examiner, and I was there for 30 years, so over time you get increasingly larger responsibility and you get involved in an increasing number of projects and I just found over the years that, you know, maybe as an Examiner I worked a certain number of hours. When I became a supervisor, became an SPE, I had to work a little bit — a few more hours, you know, reviewing people’s work, hitting deadlines. As I went up I found myself working more hours, up until a limit, but yeah, I think there is a misconception that federal employees are not necessarily working as hard. I’ll say that what I see is there are people in law firms that work really hard on this side as well but I think people look at the federal sector and think that it is not necessarily as hard working. I would like to dispel that and say that myself, for one, I can vouch for many of the people, in fact, most of the people working there work long hours, They work on call as needed, particularly when you’re dealing with projects with the political appointees and you have things going on with the Department of Commerce or you have things going on with Congressional aspects or OMB, for example. We had phone calls on the weekends, doing things in the evenings, and it is a pretty fast — surprisingly fast — pace.

QUINN: Is private practice what you expected it would be?

KISLIUK: It’s hard to say at this point yet. I didn’t really have huge expectations when I left. I was lucky enough to have served a full federal career and be retirement eligible and I had a strong desire to get to know some of the other aspects of the IP system, knowing that it’s not all USPTO-centric. So, I was lucky enough to be able to retire from federal service and get an opportunity to see some other aspects of IP. When I first decided a couple of years ago this was something I would like to do I didn’t necessarily want to go to a law firm. It just fell out that way after going through the interviews and looking at opportunities; it turned out that I felt it was a pretty good fit. Right now I’ve only been here for about three months, so I can’t tell you I have a full sense of the scope and scale of the efforts. When you are in a billable hour system there are people working extremely hard. You have clients and that’s a big part of the business, meeting and exceeding their expectations. So, for me personally, I think I’m still in my ramp-up phase in terms of the value that I hope to bring to the firm, but I think the effort is going to be similar in my mind. I will work at the similar pace as I probably did because it’s just what I’m used to and hope that fits in well with the group.

QUINN: Now that you’re in the private sector, and I know you’ve only been here for three months so maybe you don’t have a lot of time yet to reflect on this, but have you had time to think about the rules and the things that you were working towards promulgating while you were on the inside and the impact that they have on the outside? And is it what you thought it would be?

KISLIUK: Oh, that’s a really good question.

QUINN: And the reason I ask that is because, you know, sometimes — and I say in kind of a cheeky way — when I disagree with an opinion from the Federal Circuit, for example I have at times written that I wish this judge had to live a day in the private sector to have to deal with that decision. You know? How do you advise clients with this decision in mind? So I wonder if you’ve had that kind of reflection yet?

KISLIUK: I think that’s a really good question. I haven’t experienced it yet from outside the PTO, but I do reflect on it because I think honestly we had pretty open discussions about it while I was in the PTO. I think that it’s a very challenging job and I’ll describe it in some terms people might not necessarily think about. I think the PTO work is extremely challenging, and I think the area you’re asking about is one of the bigger challenges the PTO faces. Particularly now, and I’m going to say some of the 101 uncertainty is probably a flashpoint, but the PTO is challenged to try to — I’m going to use the word “translate” some court decisions into meaningful guidance, right? And what they’re working with isn’t necessarily the most clear, and there is a deference to the courts. So, I think there is an expectation by some that the PTO can just write the rule or write the guidance and make it clear. If only it was that simple, but it isn’t. It really isn’t. So I think that’s one of the challenges they face and it’s one that I think is an evolving one, so they take a first-cut at the guidance because the case law evolves. So when the groundbreaking decisions come out you have to set a bar, you’ve got to draw a line somewhere.

QUINN: Yes.

KISLIUK: And so that guidance usually starts broad and, of course, people are looking for more, they’re looking for examples, and we go through — the PTO — I keep saying “we.” That’s a natural instinct for ex-PTOers. The PTO goes through that process of waiting for the next decision, trying to get technology specific examples and it’s two-fold, it’s both to train their examiners who have to make these decisions, hundreds, thousands of them a day, as well as give some guidance to the public. And one of the good things they’re doing — and one of the things I now use on the outside and take advantage of is those USPTO training materials. There was a time they didn’t post them. Nowadays they post the training materials and the guidance materials so it’s very clear to the public and the users the standards that the Examiners are being trained on and again, it gets back to clarity, right? Everyone’s not going to agree. That’s kind of obvious. You don’t have to read many blogs to know that. But I think it’s clear that letting people know how the PTO is interpreting it, it lets you analyze what to argue, what to file, what decisions to make. So I think clarity is an important aspect and I think since we can’t necessarily predict what the next court decision is going to be or they can’t necessarily perfectly translate every vague decision into a clear guidance, the best they can do is put some clarity around the guidance that is given and let people try to work with that and then iterate as they go because, again, it’s a moving target.

QUINN: Yes. I get it, although I may not like it. I do get it. But let me ask you, and you may not even be dealing with this yet because of the ban on being able to do certain work with the PTO on behalf of clients, but do you get the sense that there are some examiners that just aren’t following those training materials or guidelines are telling them to do? I ask because there seems to be a real sense of frustration in the industry and particularly right now with respect to patent eligibility, it just seems as if examiners in some areas are just saying everything is an abstract idea.

KISLIUK: No, I have not experienced that first hand from the outside yet. But I can say just from a basic management concept, you’ve got over 8,000 examiners, you’ve got guidance and training materials and concepts that have changed and morphed over time and you’re going to have some percent of people that get it right away and some people that don’t get it right away. So it doesn’t surprise me that is the experience. I understand it’s frustrating and in a perfect world people would be able to it pick up right away — here’s the line, here’s the standard, everyone apply it. I think that is one of the things that the PTO is striving to do. I think it’s good to push more towards at least putting positions on the record. I know — the situation you’re mostly talking about is when they clearly get it wrong or they’re way on the other side of the line. As an applicant you have an opportunity to challenge those positions and there are procedures for doing that. I think over time those things will get better but it wouldn’t surprise me that people are experiencing some examiners not following it to the letter because I just think the nature of 8,500 people that you’re not going to always get it all right.

QUINN: Yeah. It’s such a frustrating thing though, you know, because there’s so many examiners that issue patents and there seem to be a handful of examiners that just aren’t in the business of issuing patents and then you layer on all this post-grant review and, I mean, you can really see that it could take eight, ten, twelve years for certain types of innovations to result in a patent being issued and then you win the right to spend the rest of the time that you own the patent defending it from these challenges. And I wonder where we’re headed because sometimes I look at the system and I think to myself well, is it really possible that every patent that is commercially viable is invalid? And if it is then why do we have the system in the first place?

KISLIUK: Yeah, I don’t know. Those are — those are pretty far-stretching —

QUINN: Yeah, that’s a very broad question. I’m not sure I want to wade into that one but –Well, let me ask it this way, see if I can ask it in a way that maybe you could maybe put your foot in the water at least a little bit. Did you guys have these kinds of conversations on the inside and were you mindful of on the one hand where we have this big long cumbersome process to get the patents so we ought to be mindful of that process and we’re going through and creating additional rule-making and creating the post-granted processes?

KISLIUK: I’ll have to say I wasn’t involved close enough to the development of post-grant processes to weigh in on those discussions. I will say just from a general policy perspective there’s an awful lot of discussion around rule development. There’s an awful lot of time and attention paid during the rule-making process and consideration of public comments. Going back to some of the ways you said it, I’m not sure I’m willing to say it’s a broken system. It is a system that has pendulum swings, and right now when I look at the system one of the things that strikes me is some of the ‘anti-patent’ things that are going on — are they sustainable in the long term for the IP system? I would step back from that and look at the goal of the IP system. If you ask if the growth in technology and the economic impact is still a laudable goal, I don’t think anyone’s going to say no. If you just look at it historically I think many people recognize that the IP system plays a vital role — so are we throwing the whole IP system out, baby and the bathwater? I don’t think so. I don’t think people are going in that direction, but nowadays with some the short-term views, some of what I’m reading about regarding the lower patent valuation going on, my hope over time is the pendulum swings back and the value of the IP system comes back into where I think it more rightfully fits. That’s my hope.

QUINN: I certainly share that hope, but I wonder when it’s going happen. And sometimes I also wonder how could we have gotten this far out of phase? It seems like the very foundation of the system has been shaken.

KISLIUK: I have reflected a little bit on that, Gene, and actually I’m not sure — I certainly don’t have the answer but I have just a few thoughts and one is we’re in an era, some of it is driven by media access, you know, the instantaneousness of information is one of the aspects that drives some of it. If you think of the system — I’m not the only one to comment on this one, I have heard both Randy Rader and Dave Kappos say this; the system is really an investment, right? In the near term the public gives up a right in order to get the disclosure of the invention for the future. So it’s really an investment in the near-term for a gain in the long-term. We’re living in a fairly short-term world right now, so when you start throwing terms like “patent trolls” out there and, from just a general public perception, when people hear the words “right to exclude” they equate that to the term “monopoly”. I don’t think the general public necessarily has the type of appreciation of the IP system or is not IP-sophisticated enough to understand some of the subtleties. It takes a longer range view of the system to appreciate there is an investment that has to get made in a lot of these technologies and IP is a supporting policy behind that investment. It is true in the short-term there are some rights that are given. But a look at history will tell you that the American IP system, at least the strength of our technology development, is unchallengeable. So some of it is just the nature of the era we’re in. You know, so much is about “the now” — I think that weighs a bit on the type of issues we are facing. Hopefully we don’t get into changes of the law that don’t appreciate the longer-term view of what’s going on because I’m afraid those would be harmful to the protection of intellectual property rights.

QUINN: You know, and it’s funny that you say that it’s undeniable. There are people that deny it. There are people that think patents get in the way. There are people that think that parents should be virtually impossible to obtain and that patents harm innovation. They have no facts on their side whatsoever. All of the facts; 100% of the facts are on the pro-patent side. Yet they say these nonsensical things and then when you corner them and present the overwhelming evidence that backs up the statement that patents foster innovation they say “causation is not correlation,” which is as if to throw up their hands and say “I’m going to ignore all of your evidence and the fact that I have no evidence that backs me up is immaterial, I win.” It’s like this third grade argument with that little kid that you always wanted to grab by the collar.

KISLIUK: I’m kind of with you on that. I actually just read the Wright Brothers book by Dave McCullough — I was struck by what they invented and how they did it. In many ways its classic inventor story with an IP component. Their invention was in the late 1800s, early 1900s. The Wright Brothers were very protective of their technology when they were demonstrating it early in the development, the book talks about them shooing away photographers. There was a subsequent patent dispute or “patent war” over some of the technology between the Wright Brothers and Curtiss. According to the book there were multiple years of patent wars and the Wright Brothers mostly prevailed. So the hallmarks of the IP system were in place, and led to incredible growth of the airline industry. Looking at history, which had many famous patent wars — the sewing machine, barb wire, television — you can point to those as problems with system or as competition that helped drive the breakthroughs and that’s part of the system that allows the technology to go public and grow. So it just depends on, I guess, on which side of that fence you’re on.

QUINN: Yeah, I mean, I guess that is exactly right. It depends on which side of the fence that you’re on– Look, I don’t begrudge anybody lobbying for what they perceive to be in their own best interest. I think it’s pretty undeniable that those tech companies that are lobbying to weaken the patent system and the patent right itself are going regret that decision at some point in time, particularly once Chinese companies come marching over and none of their patents are worth anything and can’t be used to stop that. But if they want to destroy their own company then they should have the right to lobby for policies and rules that will ultimately lead to their own demise. I just wish that there were some independent thought being put into action, someone asking whether this is good for the system, whether it’s good for the country. And maybe for the first time it is now because it seems that patent reform is stalled and at least some in Congress are asking the right questions.

KISLIUK: I get that sense too.   I read the news — and I read your blog — it sounds like at least there are some balanced questions being asked where I’m not sure that balance was always in play before. I think there are good questions being asked right now and there is some caution to both do the right thing in patent reform, trying not to throw the baby out with the bath water and more of a discussion about the role of patent rights and I think that’s a good one.

QUINN: What do you think the outcome is going to be? I mean, if you were going to try and predict the future do you think that over the short term we’re still in for a bumpy ride? What do you think might happen over the longer term?

KISLIUK: I wouldn’t bet your money on my prediction, Gene. I’m a strong believer the patent system in the long term works. Even though it’s a little odd nowadays that, in some ways, the US has taken a couple of steps backwards compared to some other countries that followed our path in expanding eligible subject matter and looked at us as the model. It’s strange to see some of the policies where we’re actually not as progressive IP-wise as some of the countries that we led to get there. But I think over time that pendulum will swing back. I think the nature of the business is that it’s likely going to come by successive case law decisions, I think we’re going slowly see things come back. I think clarity on where the line is on eligibility will get firmer, and I think there will be a stronger appreciation of patent value. It might take some time, maybe by an example — and I hate to think this –because I don’t necessarily want something like this to happen, but government often reacts to disasters. They don’t necessarily see the subtleties. They wait until there’s a disaster and then they react to the disaster and I’d rather not see a true crisis, I’d rather see some course-correction.

QUINN: It’s funny you say that. I just heard that put to me in a different way at an event in DC last week. Somebody said that they’re not really sure that we’ve had that capitulation event, you know, where everybody realizes that oh my, this is a catastrophe. This is the bottom. And it takes that event, at least when you’re dealing with markets, and that’s the context that this came up in was the patent market and the value of patents, which are incredibly important to startup companies who are trying to get money from investors. But when you look at it in the market sense you really need to have that capitulation event that slaps people in the face. Maybe we haven’t had that yet in the way that it could happen because sure, those of us in the industry I think know that things are not good, that a whole lot less is patent eligible and that we are really running the risk of saying that software and biotech and medical diagnostics, which are critical areas of innovation and critical areas of economic development, are no longer available to be patented, but then the next step is well, what does that all mean? To get the attention of Congress you really you do have to have that catastrophe and it’s sad that it has to be that way.

KISLIUK: I want to say I certainly hope that isn’t the case but just from observation, I agree with you, I think those that are IP sophisticated understand much more about the inner workings and what a critical time we’re in right now. I’m not sure others do. And to me an economic example would be a strong one but I’m certainly not looking for a failure or a catastrophe, I’m just looking for something that shows people that it’s a system that needs to flourish and a system that needs clarity and it’s a system that works.

QUINN: Exactly. And like you I don’t get how people can’t really see that and they come up with all kinds of ways to explain themselves and justify themselves and information should be free and, innovation should be available to everybody and well, it is. It is free forever more once the patent expires, they just don’t see that, or better to say they just don’t choose to see that. They seem to want to live in this world, almost like a communist or socialist way of thinking, which is that we should all just be doing this for the public good, and that companies should, regardless of profit motive, spend billions of dollars to innovate to give us all the stuff that we really want and boy, that’s just la la land as far as the real world goes, you know?

KISLIUK: Yeah.

QUINN: And it’s frustrating to get that point across.

CLICK HERE to CONTINUE READING… In part two of the interview we pick up our conversation discussing when patent office employees start to really understand the critical role they are playing in the overall innovation economy. We also discuss the uncertainty in the law, and why Kisliuk is not a fan of opening up the statute to rewrite 101 to address narrowing patent eligibility.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com 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 IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. Edward Heller December 14, 2015 7:30 am

    “You know, and it’s funny that you say that it’s undeniable. There are people that deny it. There are people that think patents get in the way. There are people that think that parents [sic] should be virtually impossible to obtain and that patents harm innovation. They have no facts on their side whatsoever. All of the facts; 100% of the facts are on the pro-patent side. Yet they say these nonsensical things and then when you corner them and present the overwhelming evidence that backs up the statement that patents foster innovation they say “causation is not correlation,” which is as if to throw up their hands and say “I’m going to ignore all of your evidence and the fact that I have no evidence that backs me up is immaterial, I win.” It’s like this third grade argument with that little kid that you always wanted to grab by the collar.”

    Well, Gene, I think there is a problem with broad, indefinite claims. The Supreme Court has identified such claims as being a real problem to the progress in the useful arts because their pall, their apparent scope (not their scope after construction) causes others not to innovate if what they do is literally covered by the claim.

    So when some folks complain that patents harm innovation, they might be a bit off the mark. But a lot of these companies are victims of broad/indefinite claims.

    It is my understanding that Director Lee has made cleaning up the problem of indefiniteness and functionality in claims one of her top priorities. I think she is on the right track here.

    But there is also the problem that 112(f) expressly authorizes functional claims. One can provide narrowing constructions under 112(f) all day long and not solve the problem of apparent scope. That is why I personally want 112(f) repealed. I think the novel structure or process steps must appear in the claim and not be referenced by a result they achieve.

  2. Anon December 14, 2015 8:26 am

    Mr. Heller,

    You are one of those crying “foul” with no supporting data.

    One of your untenable positions has to do with 112(f) and what you are calling “functional claims.”

    Point blank, there is a difference between a claim TOTALLY functional and a claim that has functional terms (yes, even at your favorite “speaking point” of Point of Novelty): the Act of 1952 opened up such use, and the optional use of 112(f) is merely for those items that are purely functional.

    I have seen you engaged in conversations concerning Federico (up to a point – that point being Federico noting exactly this point and expressing his personal concern as to how wide Congress intended this action). But make no mistake – Congress very much intended and performed this action!

    You continue to mistakenly think that such non- complete use of functional terms is somehow either not allowed, or only allowed under 112(f). I have no idea why you continue to advocate in this manner (I see you as that third grader with his fingers in his ears, who won’t listen to anyone about the matter).

    Here (and elsewhere) you simply continue to ignore this basic element of patent law – every bit as much as the child referenced here that needs its collar grabbed.

  3. Ternary December 14, 2015 9:06 am

    “I think the novel structure or process steps must appear in the claim and not be referenced by a result they achieve.”

    Processors are structures. A binary XOR (exclusive or) function in a processor can be viewed as a result. The underlying structure can be a switching table stored in a memory, or a series of gates or anything else that executes the switching table. A device that performs the XOR function is a device characterized by its function. From that perspective, program instructions on a memory in combination with processor hardware, represent switching structures.

    Sticking to the XOR function, one may compare it to the term resistor or capacitance. A capacitance is in essence a functional entity, indicated by its property in Farad that is achieved by a physical structure. There are many different ways to realize the structural aspects of a capacitor. In the same way, one could realize in many different ways the XOR device. One may decompose it first into its constituting connectives (like NANDS) and then define the CMOS gates to realize the NAND, etc.

    In the above sense, computer instructions on a computer, even at a level of pseudo-code, are fundamentally structural descriptions as they describe and enable a switching machine that generates (useful) signals.

    That is how I look at it as an engineer and inventor.

  4. Gene Quinn December 14, 2015 1:46 pm

    Edward Heller-

    I’ve never said that broad and indefinite claims are a good thing.

    Personally, I think abolishing 112(f) is exactly the wrong solution. If you actually understand 112(f) it breathes all kinds of concrete and specific meaning into the claims, which directly and expressly contradicts what you wrote.

    Frankly, if we have a choice between doing away with one type of claiming it should be to do away with structural claiming and force all claiming to be 112(f), which is the way things used to be 50, 100 years ago. I claim what is disclosed. Everyone could read the disclosure and understand what the invention covered. Today you can’t read a patent and have any clue what the invention covers. That is the problem. The problem is the disclosure, not the claiming technique.

    Assuming we can weather the storm and get past the idiots on the Supreme Court who know nothing about patent law or technology, we should aspire to get to a point where the disclosure actually teaches the invention and ridiculous claiming techniques are not necessary to satisfy every ridiculous requirement the Federal Circuit creates in order to punish innovators.

  5. A Rational Person December 14, 2015 2:13 pm

    Gene,

    “Today you can’t read a patent and have any clue what the invention covers.”

    As discussed during the webinar you hosted, making your patent application difficult to read is actually one strategy for possibly avoiding a rejection under 35 USC 101 and 35 USC 103 rejection by making it harder for a court reading the patent to say the claimed invention claims only the application or a natural law, only claims conventional steps or is “obvious”.

    This of course illustrates your second point that the Supreme Court decisions and Federal Circuit decisions are effectively encouraging applicants to make their applications more complex and difficult to understand by a generalist.

    Edward Heller’s notion is also totally impractical in just about every technology from computers (do you have include every logic gate that could be part of your “processing means”?), to electrical (do you have to specify every possible resistor or combination of resisters, both in series and parallel and combinations thereof if you claim includes a resistor means?) to mechanical (do you have to claim nails, screw, glue, etc. for a “fastening means”?), to chemical (do you have to claim every suitable surfactant/emulsifier if you are using an “emulsifying means” because there could be hundreds of these or every specific “coloring means” because there could be thousands, if not tens of thousands of these), etc.

    I could go on for pages and pages as to why a clause such as 112(f) is both needed and important to keep.

  6. Gene Quinn December 14, 2015 3:33 pm

    A Rational Person-

    Just to clarify, what I’ve said and written should not be interpreted to mean that I think patent applications should be made intentionally difficult to understand. I think they should be impossible to understand by someone who doesn’t have technical training because the invention should be disclosed with tremendous technical detail. That is very different than saying that they application should hide the invention or make it difficult to read for the relevant person in the art, which is supposed to the be focus of the endeavor.

    -Gene

  7. A Rational Person December 14, 2015 4:16 pm

    Gene@6

    What you have written above is consistent with my own understanding of what you have said and written. What I was trying to indicate is that the reason disclosures have grown in size and detail and, as a result, have become difficult to read is that there is no incentive to from the court cases to try to describe the forest, i.e., the overall concept in simple terms, only to make sure you have every type of tree, i.e., every technical detail, described so you can keep adding trees to the claims until you can beat 35 USC 101 and 35 USC 103 and make sure you have enabled your claims under 35 USC 112, make sure that if the court decides to define another term as a “means” under 35 USC 112(f) that you have covered all of the alternatives, etc.

    Also, one subtext from the USPTO 101 guidelines appears to be that one way to overcome a 101 rejection is to throw more details into your claim.

    Sadly, this reminds me of the situation with the courts decisions relating to: background sections (since they can be held against the applicant’s claimed invention, your best strategy is to not include one, at least labeled as a background section or to say nothing of importance in the background section), having to file every reference of even marginal importance as part of an IDS (for fear of being accursed of hiding a reference), etc. Plus, the courts are always complaining about patent attorneys just being scriveners with respect to claim language and then turn around and make decisions that make careful writing of claims even more important.

    The courts seem totally oblivious to the logical responses by applicants to their decisions.

  8. Anon December 14, 2015 4:52 pm

    Gene,

    When your Nirvana is reached, then ;let me know.

    Until that day, I will continue to treat patent applications as LEGAL – and expressly not as TECHNICAL documents.

    Until that day, reality – and the pragmatism that must follow – dictates a different course.
    And please do not get me wrong – I am not saying to obfuscate or to not comply with teaching, but there is a vast world of difference between the legal requirement (no undue experimentation) and a technical document. It is just not in our client’s interest to give MORE Quo than what the bargain for Quid calls for.

    And do note, that the trend of that very same Quid Pro Quo has been going in the opposite direction of your Nirvana.

  9. Edward Heller December 14, 2015 5:27 pm

    @Rational, When you said, “Do you have to specify every possible resistor or combination of resisters, both in series and parallel and combinations thereof if you claim includes a resistor means?” You apparently missed that I limited my remarks to “novel” structure or process steps. These have to appear in the claim.

    One I think can claim old structure generically, and that includes functionally. When one claims “means for fastening” as an old element in the claim, one should get not only the specific means disclosed, but all known means for performing that function as equivalents without further ado. I think the law actually is this today because even with MPF, the scope of equivalents, when one is claiming known structure or steps includes known substitutes for the disclosed structure, etc.

    But when it comes to novel structure or process steps — that has to be in the claim, IMHO. However, 112(f) also one to claim novel structure functionally so the actual scope of the claim is a dramatic departure from the claims apparent scope. This is why such claims are wrong in principle. They are inherently indefinite.

  10. Edward Heller December 14, 2015 5:36 pm

    Gene, 112(f) operates to change the apparent scope of the claim only when the claim element is claiming novel structure or process step. When the claim is claiming known structure, the law give a very broad range of equivalents so that a functional/generic claim scope is actually its construed scope.

    If we were to repeal 112(f), functional language would continue to be construed to cover the corresponding structure, etc., per Westinghouse v. Boyden Power Brake. The repeal would change nothing there. But the claims still would have to satisfy 112(b). That means that the NOVEL structure or process steps would actually have to be set forth in the claim, leaving functional claiming to generically claiming known structure. That is why I support the repeal of 112(f).

  11. A Rational Person December 14, 2015 6:02 pm

    Edward@9

    “But when it comes to novel structure or process steps — that has to be in the claim, IMHO. However, 112(f) also one to claim novel structure functionally so the actual scope of the claim is a dramatic departure from the claims apparent scope. This is why such claims are wrong in principle. They are inherently indefinite.”

    What if part of what is novel claimed feature is the combination of functions? Also, in general, can you honestly state you trust the Supreme Court and Federal Circuit to treat a claim with the sophistication you propose?

    Given that the courts have effectively treated most hindsight combinations as proper since KSR, can you honestly say that the courts actually have the sophistication to not mess things up if you eliminate 112(f)?

    Based on recent evidence of how the courts have been handling claim interpretation, I would predict is that if you eliminate 112(f) you will see a string of cases where courts and PTAB decide the functional language for the “conventional elements” of the claim would be used as a weapon to show that whatever was covered by the claim was obvious using BRI and another series of cases holding the infringing product was not covered by the claims using a narrow interpretation functional language of the “conventional elements”.

  12. Night Writer December 15, 2015 9:53 am

    Edward Heller>>Gene, 112(f) operates to change the apparent scope of the claim only when the claim element is claiming novel structure or process step.

    This nonsense of attacking functional claiming is judicial activism to end patents. Read Lemley’s paper. It is shameful. Any real patent attorney (which Lemley is not one) understands that functional claiming is absolutely necessary to cover the solutions that are known and the ones that have been invented.

    Just shameful the nonsense that is pushed. I would also challenge the Lemley to put out a questionnaire to real patent attorneys. Put down the cites in his paper with a multiple choice question and see if anyone supports his assertions for what the cites support. They do not.

    Just a shameful state of affairs.

    And the way out is reality. You just go through a real invention and see what the claims cover. The Lemley could not and does not do that because he knows it exposes his fallacious arguments.