Professors Brief Capitol Hill Staffers on Proposal to Weed Out ‘Bad Patents’

By Steve Brachmann
October 17, 2019

“While the professors’ conclusions regarding increasing time spent by examiners on patent applications are seemingly innocuous, the entire paper is infected with the ‘bad patents’ premise that has proven to be incredibly detrimental to the U.S. patent system in recent years.”

https://depositphotos.com/6198782/stock-photo-time-money-business-concept.htmlOn Thursday, October 17, a Capitol Hill staff briefing will take place at 3:30 PM in 226 Dirksen Senate Office Building on a proposal to increase the amount of time that patent examiners at the U.S. Patent and Trademark Office have to examine patent applications. At the briefing, Professors Michael Frakes of the Duke University School of Law and Melissa Wasserman of the University of Texas at Austin School of Law will present findings from their paper, Irrational Ignorance at the Patent Office, recently published by Vanderbilt Law Review.

While the professors’ conclusions regarding increasing time spent by examiners on patent applications are seemingly innocuous, the entire paper is infected with the “bad patent” premise that has proven to be incredibly detrimental to the U.S. patent system in recent years. Branded as a work that updates prior research on patent quality produced by law professor Mark Lemley, the Frakes and Wassserman paper concludes that the costs of increasing USPTO resources for weeding out “bad patents” during the patent prosecution process are far outweighed by the costs borne by society in waiting for the courts to invalidate those patents during litigation.

“It gets tiring hearing about bad patents all the time,” said Gene Quinn, patent attorney and founder of IPWatchdog, Inc. “The truth of the matter is it is irrational to expect only perfection from the patent office when they grant patents. Upwards of 90% of patents are never litigated, commercialized or licensed, and tens of thousands of dollars are spent to prepare and prosecute those applications. When they are challenged, upwards of $1 million—sometimes far in excess of $1 million—is spent to invalidate claims. Only an irrational person would believe it possible to achieve perfection for $10,000 to $20,000, given the nature of how patent challenges are rigged to ignore the presumption of validity.”

[[Advertisement]]

Authors’ “Hope”: More Examination Time Means Fewer Bad Patents

The main thrust of the Frakes and Wasserman paper is that patent allowances increase as the time to examine a patent application decreases. Pulling from data on 1.4 million patent applications and examiner roster information issued by the USPTO under Freedom of Information Act (FOIA) requests, the authors found that patent examiners that are higher in the general schedule (GS) pay scale, who are given fewer hours to examine patent applications, have a higher allowance rate than examiners at lower GS pay scales. The authors present data showing that patent examiners at GS-level 14 had a 29% higher grant rate than examiners at GS-level 7.

If patent examination times were doubled, however, the authors argue that the USPTO’s overall grant rate would drop by 19 percentage points, resulting in 80,000 fewer patent grants each year. “[W]e would hope that the affected patents would indeed be invalid patents,” the authors wrote. Preventing the issue of invalid patents would prevent societal harms that the authors admittedly can’t quantify, including supracompetitive pricing, stunting follow-on innovation, reducing competition, inhibiting startup access to venture capital and “opportunistically extract[ing] licensing fees from innovators.”

“What is missing from the analysis is any rational explanation as to how or why a patent drafted and prosecuted for two times the present cost—say $20,000 to $40,000—would fare any better in the face of a $1 million challenge,” Quinn explained. “These professors assume at the time of examination the best prior art can and will be found, which is simply erroneous.”

What the authors do end up quantifying is the amount of money saved by reducing litigation through reductions to patent grants. The authors theorize that reducing the number of patents issued by the USPTO would reduce litigation driven by challenges to patent validity, including declaratory judgment actions seeking a district court’s declaration that a patent is invalid. Reduced litigation also includes lawsuits from non-practicing entities (NPEs) “that have acquired a pool of low-quality patents and that seek nuisance settlements.” Analyzing patent lawsuit data from Lex Machina, examiner data from the USPTO’s Patent Application Information Retrieval (PAIR) database and data on filings at the Patent Trial and Appeal Board (PTAB), the authors determine that doubling patent examination times at the USPTO would lead to a 44 percent reduction in patent grants that are eventually asserted in litigation.

Reducing Patents Saves Hundreds of Millions in Litigation Costs

There seems to be little doubt that such a reduction in patents asserted in litigation would necessarily lead to major savings in U.S. litigation costs. Assuming that a 44% reduction would lead to 2,436 fewer patent-lawsuit pairs each year, a patent-lawsuit pair costing an average of $234,761 when dividing the total litigation cost of an average patent lawsuit ($539,949) by the average number of patents included in a patent lawsuit. Frakes and Wasserman posit that doubling examination time would lead to litigation savings of nearly $572 million each year.

“What about foreign patent litigation?” Quinn asks. “Frakes and Waserman seem to believe patent litigation is a zero-sum game, and by further destruction of the U.S. patent system, companies will save money. That ignores what is actually happening in the marketplace. As the United States becomes an increasingly less favorable jurisdiction, patenting activities and litigation are moving to Europe—Germany in particular—and to China. So, too is investment in industries critical for the future, such as artificial intelligence.”

Reducing the number of asserted patents would also lead to obvious savings in PTAB litigation, Frakes and Wasserman claim. The professors state that, of the 430,056 utility patent applications completed each year by USPTO examiners, 378 of those patent applications will be the subject of an instituted PTAB petition. The authors conclude that doubling patent examination times would reduce the number of patent applications that eventually result in an instituted PTAB trial by 272 which, when multiplied by the average litigation cost of PTAB proceedings, leads to another $123 million in reduced litigation cost. Frakes and Wasserman acknowledge that there could be a concern that the effects of the PTAB, which didn’t exist during the first decade of the 2001-17 study period, could cause the data to overstate the degree of litigation savings. However, the authors found that removing data after 2012, the year in which the PTAB was established, didn’t change their analysis and that, “[i]n fact, the introduction of PTAB only reinforces this Article’s conclusion that the savings from increased examination time justify the costs” as reductions in issuances of invalid patents would lead to fewer PTAB proceedings.

“The problem with the professors’ conclusion is it ignores the human element at the PTAB,” Quinn said. “We know that the PTAB does not have enough work for all the adminstrative patent judges that have been hired, which leads to a higher percentage of institutions than should occur. This is only compounded by the fact that the people deciding to institute will also be those deciding the merits of the case. They create work for themselves. Why will that change with fewer patents?”

Overall, Frakes and Wasserman conclude that doubling patent examination times would result in annual savings of $602 million to the patent system. This figure also takes into account a reduction in 0.56 rounds of review per patent application, which the authors found would result from increased patent examination time. The data seems to suggest that examiners at higher GS pay scales, who have less time to examine patent applications, issue more office actions, thus leading to the conclusion that more examination time would reduce the number of office actions. A few pages after stating that increased patent examination times would save $602 million per year, the authors then “heavily discount” that figure based on methodological concerns in arriving at the determination that doubling examination time results in 0.56 fewer rounds of office review.

Benefits of Increased Patent Examination Time Outweigh the Cost

To determine the USPTO’s cost for doubling patent examination times, Frakes and Wasserman analyzed the average number of hours allotted to examiners at each level of the GS pay scale and concluded that it would cost $660 million to achieve that increase in examination time. Because the USPTO doesn’t have the resources necessary to increase patent examination times and achieve the associated societal benefit, Frakes and Wasserman end up finding that, unlike Lemley’s charge that the USPTO was “rationally ignorant” in issuing patent grants that are later invalidated, the agency is instead “irrationally ignorant” because the $660 million cost of doubling patent examination times is far outweighed by the estimated $904 million that would be saved in reduced federal litigation ($491 million in savings), reduced PTAB litigation ($112 million) and reduced patent prosecution costs ($301 million).

The authors propose that patent examiner times should be expanded in a way that reconsiders the manner in which time allotments vary over a given examiner’s career rather than doubling times across the board. How is the agency supposed to cover the costs of increased patent examination times? Frakes and Wasserman suggest that additional personnel expenses could be covered through general tax revenue, but they don’t rule out increasing user fees for patent applicants as an option.

Getting Rid of Patents: A Swiftian Modest Proposal

Any notion that the patent system serves to benefit society seems to be limited to the paper’s footnotes. One such note on page 53 (page 1027 of the Vanderbilt Law Review issue) acknowledges that “the patent system’s primary goal is to promote innovation, and society, not just the patent applicant, benefits from the fruits of such innovation. Without a mechanism such as the patent system to recoup their research and development expenses, innovators may choose not to innovate at all, which would be unquestionably bad for society.” The fact that this basic, fundamental aspect of the impact of patent rights has been relegated to a footnote while fears about supracompetitive pricing and preventing follow-on innovation are used to frame the thesis speaks volumes about this particular study.

There are plenty of concerns that could be unpacked regarding the Frakes and Wasserman paper but perhaps the most basic is, what is a bad patent? An invalid one would be the obvious answer. But invalid by whose standard at which time? Are bad patents the ones that are invalidated under Section 101 after the Supreme Court decisions in Alice and Mayo, which has provided an entirely unworkable legal test as is evidenced by the Federal Circuit’s schism this summer in Athena Diagnostics? Are patents that were invalidated at the PTAB under a different claim construction standard than the district courts’ Phillips standard the bad patents? Are patents simply bad because they result in litigation expenses against supposed infringers, as Frakes and Wasserman’s cost-benefit analysis seems to suggest? Why not just get rid of patents entirely? Isn’t that the Swiftian modest proposal that exists at the end of the “bad patent” narrative once patents have been stripped of any meaningful rights in the never-ending quest for higher patent quality?

In short, patent owners should be very concerned that Hill staffers will be briefed on a paper that furthers a narrative which misrepresents the effects of the patent system. While increasing patent examination times may not seem like a controversial suggestion on its face, it represents another cut in the death by a thousand cuts currently being suffered by the U.S. patent system.

“I have no problem giving patent examiners more time, but I do have a problem allowing policy to be made based on a paper that quite frankly ignores basic, fundamental realities of patent practice and the workings of the USPTO,” Quinn said. “The patent office already has difficulty hiring and retaining enough quality people as it is, so while these professors can believe there is a magic wand that can be waved, no such Harry Potter type powers exist. These recommendations, although perhaps well intended, will only play into the bad patent mythology and unfortunately ignore the economic consequences of further driving innovators out of the U.S. patent system to Europe and China.”

Image Source: Deposit Photos
Image ID: 6198782
Copyright: galdzer 

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

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 47 Comments comments. Join the discussion.

  1. Pro Say October 17, 2019 1:02 pm

    “Irrational Ignorance at the Patent Office”

    Choose from these 3:

    1. Flim Flam

    2. Junk Science

    3. Voodoo

    “The authors present data showing that patent examiners at GS-level 14 had a 29% higher grant rate than examiners at GS-level 7.”

    Of course GS-14s have a higher grant rate than GS-7s.

    Because they are more knowledgeable and experienced, they’re better able to work with patent law firms and applicants to identify patentable subject matter.

    Duh.

  2. Benny October 17, 2019 1:46 pm

    There is plenty of room for improvement at the USPTO. Pulling up one of this week’s patents at random, US10443259, it appears that the examiner concluded that prior to the second decade of the 21st century, a spring loaded handle was an entirely unknown concept. (Note the preamble of the claim, before the spring, have been common features of these gimmicks for decades). This is the sort of bad patent that does more overall harm than good (except to litigation attorneys).

  3. Pros Monkey October 17, 2019 2:19 pm

    Disclosure: I haven’t read the paper.

    Did the paper make a correlation between either (1) issued patents or bad patents and (2) GS level of the examiner at the time of issuance?

    Did the paper acknowledge the well known dirty secret that junior examiners are taught how to reject claims instead of examine claims?

    Did the paper consider how the count system influences allowances and how increased time allowed for examination may not actually result in increased examination time?

  4. Josh Malone October 17, 2019 2:35 pm

    How much would it cost to get a real patent with the right to exclude all others that cannot be taken away by the USPTO? Inventors are ready to get back to work.

  5. Someone October 17, 2019 2:47 pm

    “patent examiners that are higher in the general schedule (GS) pay scale, who are given fewer hours to examine patent applications, have a higher allowance rate than examiners at lower GS pay scales. The authors present data showing that patent examiners at GS-level 14 had a 29% higher grant rate than examiners at GS-level 7.”

    In my experience, senior examiners are more efficient. They communicate better, they know their art better, and the cut to the chase quicker. Also, the don’t need another examiner to approve their allowance. The quoted conclusion could be a classic case of confusing correlation with causation. The professors’ analysis offers no proof that allowance rate is predictive of quality. The only real way to measure quality is to measure quality. No one does it when evaluating the patent system because its expensive. The professors should familiarize themselves with rigors of the scientific method.

  6. Gene Quinn October 17, 2019 3:22 pm

    Comment re: Benny @2—

    It is precisely this type of uninformed, and frankly ignorant, commentary that leaves those who understand the patent system to wonder.

    Just to be clear to those who won’t take the time to look up the patent, the word “spring” does not appear in the claims, and neither does the word “handle”. So Benny can think this patent relates to a spring loaded handle is truly a mystery.

    Claim 1 to the patent you cite — United States Patent 10,443,259 — reads:

    “A pool cleaner comprising: a turbine assembly including a turbine wheel; a turbine shaft configured to engage the turbine wheel to rotate with the turbine wheel; a timer assembly configured to rotate the turbine wheel in a first direction and a second direction; a drive wheel assembly; a scrubber assembly configured to rotate in a forward direction when the turbine wheel rotates in the first direction, via engagement between the drive wheel assembly and the turbine shaft, and the scrubber assembly configured to rotate in a rearward direction when the turbine wheel rotates in the second direction, via engagement between the drive wheel assembly and the turbine shaft.”

    While we can debate this patent claim, Benny’s characterization of the patent is egregiously wrong. So erroneous is his characterization, I really have to believe he is intentionally attempting to mislead us here.

  7. Benny October 17, 2019 3:23 pm

    Josh (4),
    The cost is a patent system with no mechanism to correct it’s own mistakes.

  8. Gene Quinn October 17, 2019 3:25 pm

    Josh @4—

    You ask: “How much would it cost to get a real patent with the right to exclude all others that cannot be taken away by the USPTO?”

    Unfortunately, the answer is that there is no amount of money one can pay under the current rules for a guarantee. If there is enough money at stake infringers will spend whatever it takes. When an infringer chooses such a scorched earth path instead of taking a license, or simply innovating around, even the best, most well written patents will fail. And if they don’t fail because of a challenge they will fail because the challengers keep fighting a war of attrition that patent owners can’t afford to win.

  9. Gene Quinn October 17, 2019 3:27 pm

    Benny @7—

    Thankfully, since the early 1980s the U.S. has had a patent system that has offered the possibility to correct mistakes through reexamination.

    I don’t know what game you are playing, or why, but you are misrepresenting the U.S. patent system.

  10. Benny October 17, 2019 4:01 pm

    Gene, my mistake, that should have been US10443258. I mis-typed the last digit. Sorry.
    I know the USPTO can correct it’s mistakes, thats why it can revoke patents, and that is what Josh wishes it would never do.

  11. Jam October 17, 2019 4:53 pm

    Reduced litigation costs because when you throw the baby out with the bathwater, you’ll never have any more dirty bathwater.

    What about rampant infringement, lost recoveries by inventors who cannot afford to pay for their rights, and a reduction of small inventors?

  12. Jianqing Wu October 17, 2019 7:28 pm

    I have long ago written a long analysis about their prior work on examination issues. Here are what I can recall now.

    (1) One patent=another patent and one invention=another invention.
    (2) Everything can be compared (they do not care about Comparative Basis).
    (3) Examination quality can be rated like weighing chemical reagents.
    (4) Examination time can be compared and evaluated like dollars.
    (5) Examiner’s grades can be evaluated in an accurate way.
    (6) They do serious statistical analysis to turn the work into something like science.

    I have not finished my book analyzing their materials in one section. Virtually many well known statistical flaws can be found in their prior work. Most of the flaws are well known in statistical books and medical articles. My focus is now on cancer research, so I cannot finish this book soon. I hope someone will bring my point to the staff.

    The biggest problem is that they think that they can week out bad patents WITHOUT ANY COSTS. They think that a perfect patent system that grants 100% good patents but grant 0% bad patents can exist. In reality, sometimes, a good or bad patent may be decided 20 years later, and the worst, even nine justices may argue among themselves about patent validity.

    If the patent grant error is reduced to 5% or less, such a patent system is absolutely dead!

  13. B October 17, 2019 8:37 pm

    I’ve talked dozens of people out of filing for a patent. Maybe a hundred. “No, you cannot likely patent 5 minute abs.”

    What I hate most is a loser at the USPTO. I spend 3x-5x the average response time trying to find an answer for a bad application when there isn’t likely one. For example, I spent three days on a single response last week on a fixed fee only to tell the client some bad news. How many patent attorneys have done this? Likely almost all.

    Also, give me a week or two and experience shows me that there’s a 75%-90% chance I can invalidate a patent presented to a client by a prospective plaintiff. by “invalidate” I mean that I can put together an argument and evidence that I’d to an ex parte or inter partes re-exam with a high level of confidence of winning. Once I presented a cross-plaintiff with evidence that his company didn’t invent the idea behind his own patent portfolio, but stole it from a competitor located 10 miles up the road. Fraud upon the USPTO anyone?

    I’m at the front of the line against bad patents, but then again they do keep me busy.

  14. Jonathan Burdick October 17, 2019 8:55 pm

    Thanks Steve. Very well written.

  15. Curious October 17, 2019 11:34 pm

    As I’m scanning through this article, I am amazed (actually, I’m not but should be) as to how ignorant the authors are. We’ve got Michael D. Frakes, a professor of Law and Economics, who got his BS in Economics and does not appear to have ever practiced patent law. Next, we have Melissa Wassermann, who at least has an engineering degree. However, despite having a USPTO reg number, does not appear to have practiced before the USPTO aside from possibly during a couple stints as a summer associate. As such, the two authors are relying upon second hand knowledge as to what goes on at the USPTO.

    The article mentions Lemley 81 different times. For those that are familiar with Lemley, he is another non-technical attorney who cannot practice before the USPTO and is a well-known tool of the software oligopolies.

    The one comment that exemplifies their gross ignorance is the following:
    “In summary, our results from our prior research suggest that examiners are facing binding time constraints and that these time constraints are inducing examiners to grant invalid patents.” This is type of BS written by two ignorant professors who have spent little time in the trenches.

    After prosecuting thousands of patent applications (that is a plurality of thousands), I can say with far more certainty than these yahoos what happens at the USPTO. First, the article fails to recognize that the examination culture of the USPTO has been to: reject, reject, reject … and if in doubt, reject. It has been this way for a very long time. The percentage of first action allowances I get are minuscule compared to the number of non-amended claims that eventually get allowed. This means that the vast, vast majority of non-amended allowable claims were initially (and improperly) subject to rejections. Moreover, it doesn’t take prosecuting thousands of patent applications to gain that insight. All it takes is a couple of years (which gets several rounds of prosecution for a particular application) of experience — something neither of these authors appears to have.

    I’ll be the first to say that examiners produce lousy rejections all of the time. Like any large organization in which it is difficult to fire employees, you have good examiners and bad ones. The bad ones do a keyword search, find what they consider to be the best prior art, and then employ “broadest (un)reasonable claim construction” to fill in the gaps. Would doubling examination time solve any of that? Doubtful. These examiners can already produce an office action in X amount of time. If given 2X the amount of time to do the same, they’ll still spend X and then have another X left over to relax. There is no mechanism to enforce the examiner to use all of the allotted time. They’ll get the same productivity credit no matter how much time is used.

    The authors write “increasing the time allocations of patent examiners is likely to result in a more rigorous examination in which better, more comprehensive rejections are made.” However, this ignores human nature. Why spend double the work to get the same amount of credit? Instead, spend the same amount of work and use the rest for leisure. This is rational behavior when their are no negative consequences for doing so.

    I have never seen time constraints force an examiner to allow an application. They get a count for a first action. Even if you present arguments that would bring the greatest attorneys to tears, you can have an examiner go final (spend 30 minutes copying and pasting from the first action while putting together a couple of paragraphs saying ‘applicants arguments have been considered but not deemed persuasive.’) They know in the vast amount of situations, the applicants response to this will be to file a RCE, which is productivity credit for the examiner. Examining an old application is much easier than examining a new application, so continually rejecting an application allows an examiner to get an easier production credit. This point cannot be overstated and is a point that these authors have no clue about, but is readily apparent to any experienced practitioner. It is far easier for an examiner to reject than it is for an examiner to allow. There are negative consequences for allowing claims that one of the quality specialists subsequently flags. There are no negative consequences for rejecting an application.

    When the underlying basis for their article is flat out wrong, it calls into question all the other unfounded assumptions that they have made. I could spend days shredding this article to pieces, but I’ve spent far more time on this already.

    However, let’s get some things straight. I know of no patent attorney that wants to have invalid patent claims issued. Patent claims (subsequently invalidated) leads to unhappy clients, and unhappy clients are not what we want to see. Personally, I want to see better examination with better prior art identified earlier. However, that requires more than just giving examiners more time to examine. It requires a culture change at the USPTO in which there are negative consequences for bad examination.

    One problem with doubling examination time is that it will necessarily require greater costs from applicants. These fee increases are nothing for software oligopolies. Rather, the disproportionate effect will be that increased filing fees will substantially reduce the number of filings made by solo inventors and by small companies. Patents have long been considered the “sport of kings” whereby big companies have huge advantages over small companies in both patent acquisition and patent enforcement. The AIA (“America Infringes Act”) allows any number of serial IPRs against a patent. Not a problem for the big guys, but owning a patent of valuable technology is an invitation to be bankrupted with legal fees for a smaller company trying to defend their assets.

    The patent system was designed to be accessible to everybody. However, today, solo inventors and small companies have the odds incredibly stacked against them. This proposal, which guarantees higher costs for an uncertain improvement in patent “quality,” will be disproportionately hurt the people who need patents the most, which are the little guys.

    In footnote 156, the authors dismiss this by stating “studies to date have suggested that small increases to patent examination fees have a negligible effect on the volume of patent filings.” However, doubling examination time is would entail far more than a “small increase[].”

    As I’m scrolling through this piece of garbage, I’ve come across the statement that “By doubling examination time, we predict that this number will fall by 72%, or by 272 instituted PTAB challenges.” This statement is additional evidence of gross ignorance of the authors. The authors appear to believe that bad patents are challenged. This would be a terrible assumption on their parts. Rather, it is valuable patents that get challenged. The PTAB is not known as the ‘patent killing fields’ for no reason. If you want a patent killed, that is the place the go because the culture of the USPTO is to reject, reject, reject (or in the case of the Board, invalidate, invalidate, invalidate). Doubling examination time will hardly put a dent into the number of PTAB challenges.

    The patent system (which includes both the USPTO and the courts) recognizes that obtaining perfection (at the examination phase) is unworkable. Even if examination times were double or even tripled, they still pale in comparison to the amount of time a well-motivated defendant can pay a search firm to use to find prior art, and 90% of good examination is finding the best prior art.

    The USPTO needs to focus on improving their ability to find the best prior art by: (1) training examiners to use the tools they already have; (2) require examiners to use the tools they have; (3) provide examiner with better search tools. This does not require the doubling of examination time.

    While there may be useful nuggets from this article, it is difficult to read the article when faced with ignorance in page after page.

  16. Ternary October 17, 2019 11:39 pm

    “There are plenty of concerns that could be unpacked regarding the Frakes and Wasserman paper but perhaps the most basic is, what is a bad patent?” Absolutely, Steve!! Like the term “abstract” used in Court, the authors carefully avoid defining what a “bad patent” is.

    A bad patent, in my opinion, is a patent issued on a bad or undeserving invention. Overall, I see very few “undeserving” inventions that are patented. Quite a few times I come across patent applications (cited in my own cases) that were rejected and consequently abandoned and never patented. I often read up in PAIR what the rejections were and more often than not the rejections were unreasonable 103s, in my opinion.

    There is a huge, huge cost to society for failing to give inventors a well deserved patent. This has stagnated techno-economic growth for the last decade and has benefited efficient infringers and established companies.

    So, here is a possible test that could be useful to determine if a bad patent was issued. Forget about the 101, 112 and 103 rejections. Only consider the straightforward 102 (anticipation) rejections. If and when you can find a reference that has prior art that describes undeniably an invention as claimed, then you have a bad patent. I bet that you will find very few “bad patents” under that criterion. Right now the patent system is so screwed up that there is no predictability whatsoever if a 101, 112 or 103 invalidation is correct or merely an arbitrary brain-fart of a non-technical judge who is predisposed to denying patent validity.

    Frakes and Wasserman are merely jumping the bandwagon of the Lemley/anti-patent crowd, based on the ideological and unproven assumption that the USA is flooded with bad patents, without telling us what bad patents are. Saying that bad patents are those that are invalidated in court is like a tautology. The system is set up to reject and invalidate patents. That is why infringers go to Court. Because there is an excellent chance to get patents that are asserted to be invalidated.

    As Steve noted, no basis is provided by Frakes and Wasserman to rationally and objectively check if a patent is “bad.” With that the whole article fails on methodological grounds to rise above an ideological opinion. As I have said before: “the meaning of a sentence is its method of verification.” No objective verification is available in the article to determine if a patent is objectively “bad.” With that the article becomes meaningless.

    My own suggestion would be that Examiners get more time to assist inventors to get strong patents. That will strengthen the patent system, because the issued patents will (hopefully) be better to withstand invalidation attacks. Why does the academic community never make a proposal for research along those lines to strengthen the quality of patents? I know why. A proposal for such research/article would be very unpopular with certain groups and will not advance your scientific career.

  17. Benny October 18, 2019 4:29 am

    So B says (above) that he/she could invalidate 75% of the patents presented, while Ternary sees “very few” undeserving patents granted. The truth is probably somewhere jn between. In my field, roughly 5% of granted patents should not have been granted on the basis of lack of novelty – in a couple of frustrating instances, novelty destroying prior art was submitted in an IDS or third party submission, and ignored by the examiner. As mentioned above, examiners suffer no negative consequences for inflicting hundreds of thousands of dollars in unneccessary attorney fees on businesses because they don’t take their responsbilities seriously.

  18. Concerned October 18, 2019 9:11 am

    Curious @15:

    I have only one patent application and I can tell it is reject, reject, reject based on the manner of how it happens (i.e discard their own numerous official memos, reject hard evidence, dodge arguments, use case law that is irrelevant and not in my field, etc.)

    To these professors in this article that authored their one university study, I will see your one study and raise you one more with my two university studies from people who actually work in the trenches of my field (25 years by one author and 35 years by the other university author).

    My university studies were ignored by the USPTO to effect the “reject.” The examiner did not need more time, my application was dead on arrival.

  19. Old Examiner October 18, 2019 9:47 am

    I believe my comments from 10 years ago still hold true:

    https://www.ipwatchdog.com/2009/04/17/an-old-patent-examiner-explains-poor-patent-quality/id=2651/

  20. Curious October 18, 2019 10:03 am

    As mentioned above, examiners suffer no negative consequences for inflicting hundreds of thousands of dollars in unneccessary attorney fees on businesses because they don’t take their responsbilities seriously.
    Meh. Assuming, for sake of argument, that the granted patent should not have been granted on the basis of lack of novelty, you could probably get ex parte reexamination done for under $20K. Any company spending in the hundreds of thousands of dollars fighting a 102 reference has attorneys that are likely overcharging them.

    That being said, the USPTO should have a search system in place to find 102 references. Do whatever it takes to find the best prior art the quickest should be the goal of the USPTO. Considering how much prior art there is, this is more of a technical solution than a staffing issues (i.e., how much time gets spent on the examination).

    So B says (above) that he/she could invalidate 75% of the patents presented
    Therein lies the danger of hindsight reconstruction. I could cobble together 103 rejections on 95% of the patents I see. However, I’ll be using the insights gained from patents themselves in order to find the prior art and to come up with the rational underpinning for the combination.

  21. Curious October 18, 2019 10:12 am

    From Old Examiner’s comments:
    This causes examiners great trepidation when it comes to issuing a case fearing that Quality Review will bounce it, and they will be rated poorly. The SPEs also fret about QR since it will affect their rating as well. Therefore, examiners continually make new rejections, attorneys file RCEs rather than appeal, prolonging patent prosecution. Hence,the low allowance rate in the Office.

    That pretty consistent with what I wrote above:
    They know in the vast amount of situations, the applicants response to this will be to file a RCE, which is productivity credit for the examiner. Examining an old application is much easier than examining a new application, so continually rejecting an application allows an examiner to get an easier production credit. This point cannot be overstated and is a point that these authors have no clue about, but is readily apparent to any experienced practitioner. It is far easier for an examiner to reject than it is for an examiner to allow. There are negative consequences for allowing claims that one of the quality specialists subsequently flags. There are no negative consequences for rejecting an application.

    Better searching (not necessarily more searching), leads to better prior art (cited earlier), which leads to more confidence in either rejecting or allowing an application. My clients are very unlikely to abandon an application in the face of bad prior art. However, in the face of really good prior art, they will substantially narrow the claims or abandon. Fighting good prior art is a losing (and money-wasting) proposition.

    Finding the best prior art earlier = quicker/better examination = issued patents with appropriate claim scope = “good” patents

  22. Anon October 18, 2019 10:31 am

    Kudos to Curious – a brilliantly written post that reverberates along the lines of a philosophical battle against innovation protection even while wearing the sheep’s clothing of “better examination.”

    Lemley (and his acolytes) practice the art of the “great lie;” that is to say, coat a desired philosophy with enough “sugary truth” that the whole is swallowed without critical thinking.

    Apply critical thinking (as Ternary suggests) and the fallacies become exposed.

  23. John Paul Archuleta October 18, 2019 10:39 am

    Yes I believe that some of the examiners unqualified by 3 I’m looking to revive a valuable patent I was given bad info National patent attorney firm’s, cost me many years, I became very ill. Very unique case. Please check patent application 10/205,253.

  24. Night Writer October 18, 2019 12:36 pm

    @15 Curious

    Thanks for writing all that. I agree with you. (And I have a lot of experience before the PTO. Maybe I’ve written 500 patent applications.)

  25. Martin Nguyen October 18, 2019 12:40 pm

    I wonder if Congress would come up with something like an “IP Insurance” added to business insurance, and require businesses to have one. This I believe would somehow lessen the current situations AND any future litigations.

  26. BP October 18, 2019 1:17 pm

    As to Benny: US 10,443,258, each claim must be interpreted “as a whole”.

    US 10,443,258 is a continuation of US 9,809,989. Therefore, the references cited in the parent carry over to the continuation. Take a look at Fann US 5,941,586 as cited in the parent. Your attack on the Examiner is unfounded, which is not surprising given the average “layman” approach to patents. That is perhaps the issue you raise, i.e., your lack of understanding, which is similar to others not intimately involved.

    US 10,443,258 uses “means-plus-function”, where it may be that the Examiner and the Applicant understood that “means for urging the handle towards the second position” are “means being activated for example by a debris filter filling level sensor or by a battery level sensor in the case of a battery-powered cleaning robot”. In other words, “means for urging” is more than a spring (see Fann) and different than Sumonthee, which described a specialized handle that was extended during use to affect movement thereof in a pool.

    We can see, patents are under attack for various reasons. For those that lack or fail to understand patent law, prosecution, etc., please be careful – at risk of appearing grossly ignorant – and detracting from the true issues at hand.

    Please refrain from unwarranted attacks on Examiners, which, from “laymen”, is evidence of arrogance and ignorance.

    If your issue is that a claim should be clear on its face, without resort to 112(f) “means-plus-function” or prosecution history (including parent apps), then I’d say too bad. That’s too high of a bar given the complexities involved.

    You can see why “laymen” attack patents – because they have little understanding of patent law and don’t want to take the time to understand or consult an expert.

    As practitioners, we must help educate people like Benny, otherwise their uneducated/distorted positions grab hold. As practitioners, we must take some blame for not helping to educate the public.

    I say that with the exception of Gene, who tries very hard to educate the public. He has assembled a team of hardworking experts and he has helped me maintain my sanity as ignorance (fake news) has been spread by so-called “professors of law” (what a farce) and illegal monopolies that have private (undisclosed?) interests at hand.

    Thank you Gene and Benny too for telling his side of what “seems” wrong.

  27. Michael October 18, 2019 1:56 pm

    After reading this paper, the title should be “Irrational Ignorance of Academics”. This is established in first 2 lines, which state: “The principle task of the USPTO is to determine whether an invention merits a reward of a patent. There is growing consensus that the USPTO is failing at this task.” To support this growing consensus, footnote 2 cites 3 books, all written before 2009 (pre-Bilski) and none of which is on point. If this truly is a growing consensus, why can’t these academics cite support written in this decade?

    Based on Court holdings (KSR, Biliski, Mayo, Alice, etc), the USPTO has continued to fine tune the rules for what “merits an award of a patent”. The patent quality has increased. From the view of a practitioner, it is a lot harder to get patent now as compared to the pre-KSR years.

    The academics do not understand that the Supreme Court has significant influence on patent rules and procedure, which can have an ex post facto effect on issued patents. Many high quality patents issued a decade ago are now being invalidated using the Alice test, which has increased patent litigation. A decade ago, no one could have foreseen the bastardization of 101 and its inconsistent application by the courts.

    As pointed out by the earlier comments, along with the biased assumptions in the math used to prove their point, this paper does nothing to improve the patent system. The fact that Congress is listening to these academics is disturbing because it will point the lawmakers down the wrong path, which will slow the system down and increase costs for inventors. If Congress wants to improve patent quality, enact a consistent and fair 101 standard.

  28. Benny October 18, 2019 2:23 pm

    BP,
    Read the first claim of the patent again. A simple spring loaded handle would infringe it. I do not contest that other claims, or dependent claims, may disclose genuine innovation, but the first claim is the bat that the patent owner will swing at a competitor. A claim infringed is a claim infringed, regardless of previous parent applications or backstories in the specification. What else didn’t I understand ?

  29. BP October 18, 2019 4:15 pm

    @28 Benny, thanks for expressing your view.

    As to: “A claim infringed is a claim infringed, regardless of previous parent applications or backstories in the specification. What else didn’t I understand ?”

    In patent litigation, there is no such thing as “regardless of previous parent applications or backstories in the specification”. The prosecution history, including the parent app, will include “admissions against interest” and other intrinsic evidence that will be admissible. There may even be key evidence that has to be re-proven/re-established (e.g., expert declarations to overcome rejections – as the USPTO does not have authority to determine veracity).

    In litigation, there is a canon: claims will be interpreted to uphold their validity. That canon may be applied in a complex/complicated manner as the claims cannot be construed on their face due to invocation of 112(f), which requires an analysis of the specification.

    35 USC 112(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

    As to literal infringement of a “means-plus-function” claim:
    for a means-[or step]-plus-function limitation to read on an accused device, the accused device must employ means [or steps] identical to or the equivalent of the structures, material, or acts described in the patent specification. The accused device must also perform the identical function as specified in the claims.

    Though decades ago, I was involved in litigating claims with “means-plus-function” clauses. The cost of litigation was elevated due to invocation of 35 USC 112, 6th paragraph (now 112(f)). A 112(f) approach has pros/cons, but ultimately comes with increased uncertainty and increased cost to the patentee. Further, other provisions of 35 USC 112 still must be met. A specification may include various “structures” but if they are not sufficiently linked to the function and/or otherwise sufficiently described, the result may be that a single structure is all the patentee gets. As you can imagine, those other insufficiently linked/described structures can potentially narrow down what is “an equivalent”.

    Acromed v. Sofamor Danek: Despite the fact that the straight wire, wire hooks and suture ties can perform the recited function of connecting adjacent elements together, neither the specification nor the prosecution history of the ‘727 patent, either alone or in combination, provides a clear link or association with the recited function. Thus, we hold the only structure corresponding to the function of the means-plus-function limitation in issue the helical winding.

    As to what a sleazy attorney might do? That’s another question. But, fortunately, judges have an ability to sanction a party and that has happened.

    So, I believe we could do away with the canard of “bad” patents by heightening pleading standards and sanctioning plaintiff attorneys. Examiners get a bad rap, they’re mostly smart, hardworking people that have to put up with politics on a daily basis while maintaining objectivity.

    We’d resolve this “bad” patent dialog if “walk a mile in someone else’s shoes”. But that’s not what the illegal monopolies/efficient infringers want.

    They abhor strong governmental agencies and do their best to weaken them through “think tanks” the revolving door, etc.

    They have usurped this dialog to weaken the agency. They could care less about “bad” patents. I wish the good professors would see that or at least acknowledge that they are lobbyists fighting for illegal monopolies to weaken governmental agencies – while the institutions where they work are largely funded by the government.

    Why did Apple close the store at UNT? They get the students hooked on the iPad and then close the store because of ED TX. Apple cares little about students, they only want them to spend their student grant/loan $$ on Apple products. Apple and others drool over the demise of live, in-class teaching. They want a system with one or two teaching stars, that answer to Apple and deliver courses nationwide/worldwide on the Apple platform. It’s arbitrage at a cost to society and a profit to Apple.

  30. Night Writer October 18, 2019 4:46 pm

    You know, it is criminal (or at least unethical) that the authors do not make full disclosures regarding their sources of money. For all we know they are advocates for SV companies and are being paid to write this paper and advocate for weakening the patent system.

    Let’s remember that there was recently an article where it was disclosed that Google has been paying law professors as much as $80K to write papers to abstracts that Google in-house attorneys write.

  31. BP October 18, 2019 4:48 pm

    The self-laudatory nature of the writing is hard to ignore. Who really cares if something was “peer-reviewed” these days? I can tell you, peer-review is often less objective and of FAR LESSER QUALITY than what happens at the USPTO.

    The authors make examiners out to be cogs in a wheel. They dehumanize them and attribute characteristics of machines. The “holier than thou” arrogance permeates the work. What’s up Vandy Law School?

    The most glaring weakness pertains to 35 USC 101. The word “eligible” appears once. The USPTO has been mired in the 101 debacle for the past half-decade.

    Simple math: There’s only 24 hours in a day. If a new examiner is spending half of training time on 101, there’s less training on 102 and 103. That is called a deficit. That’s the reality at the USPTO.

    Given reality, the professors’ data are essential crap. They may as well start fresh as the “ground truth” has changed below their feet.

    Ugh, academics! Former law clerks! Let’s see real practitioners writing – but we’re generally too busy in the trenches and don’t have time to be entertained by the $$$ donors at fancy gatherings (R Street et al.).

    It was probably a tough choice for IPWD to write about this “scholarly” article – because it is lacking – and likely peer-reviewed in a manner of the blind-leading-the blind.

  32. ND October 18, 2019 7:52 pm

    Those companies who infected the patent law with patent eligibility virus and post grant proceedings bacteria, are now coming back again. We should stop them before causing more damages to our patent system.

  33. Benny October 19, 2019 2:47 am

    BP, read the spec.
    “torsion spring (not visible in the figures) is mounted between the cover 18 and the extraction handle 27 at the articulation points of the arms 26 of the extraction handle 27. This torsion spring is configured to urge the extraction handle towards its vertical position, whilst enabling a user of normal strength to push said extraction handle 27 easily towards its horizontal position.”
    A competitors pool cleaner with a spring loaded handle would litetally infringe, and the applicant’s IP head would tell her boss to declare patent war on them. That’s the real world. If you were their outside counsel I very much doubt your advice would be anything like your reply to my comment.

  34. BP October 19, 2019 11:02 am

    @34 Benny, that’s wonderful, you have pointed to the “extraction handle 27”, which is part of the filter basket 17. There is another handle “holding handle 15”, which is part of the body 11 (see both handles in Fig. 12). Per the file history as to Sumonthee: “handle 38 is part of the housing 28” and “filter 52 has no handle”. Thus, you have arrived at a reasonable interpretation that the handle claimed is the handle of the filter basket 17.

    So, now reassess your position. Maybe you meant: “A competitor’s pool cleaner with a spring loaded handle on a filter basket would literally infringe”? Does that really seem unreasonable? Further, there’s another “means-plus-function” clause in the claim: “means for moving the body within a swimming pool”. Things aren’t as simple as you think, which is why patent attorneys exist.

    Patents are complex. You could even resort to the FR priority or PCT application (in French) for further guidance (nice drawings in the FR doc). That’s the world patent attorneys operate within. Unfortunately, for the layperson, they are often confused – and mistrustful. That said, my impressions are mine, without any client interest at stake (i.e., unbiased). Others may arrive at different conclusions, as I may given more time and info. I know the USPTO generally does an OK job. Illegal monopolies have planted seeds of doubt, which have taken root in the weak minded (those that want to argue based on feelings).

    Benny – you have no reason to mistrust me. I am trying to help and explain.

  35. Benny October 19, 2019 11:41 am

    BP,
    You obviously have little knowledge of the device in question – you are perhaps not fortunaye enough to own one -but in this case the only feature in the claim not known from decades old prior art is that the handle may be urged into a second position, in other words, the handle is spring loaded. That’s all there is to claim one. It should have been rejected as obvious citing references from appliances with spring loaded handles, but in this case the examiner didn’t “generally get it right”. The claim probably wouldn’t survive post grant review of any kind, but that is not my point. My point is that failures of this kind are a burden on industry.

  36. Truth Seeker October 19, 2019 5:51 pm

    “Upwards of 90% of patents are never litigated, commercialized or licensed, and tens of thousands of dollars are spent to prepare and prosecute those applications.” – Steve Brachmann (et al.)

    Yeah – EXACTLY!!! And, that should be a HUGE concern for economists and ANY ‘true capitalist’, given the amount of money spent on ‘ideas’ that never amount to much if anything! That is an incredibly poor use of limited capital, isn’t it (given what else could be done with that money)? I mean are these patents ever going to become valuable works of art, or something? When an ‘amateur work of art’ could be more valuable than your ‘valuable patent’, then we have big problems in this country! Problems that the Chinese might avoid!

    There need to be incentives to make sure that patents are reserved for ‘valuable’ & ‘actually useful’ – working – inventions, not just pieces of paper. Originally the USPTO used to require working models of all inventions, or at least proof that they would work as claimed!! If that were still the practice,(with only 25K patents/yr being issued), then Elizabeth Holmes and ‘Theranos’ would never have gotten ANY patents (much less > 140 of them ‘rubber-stamped’ by the PTO) – since she had NOTHING that actually worked as claimed (and allowed).

    What good is a $20K (useless) document to anyone (but maybe lawyers)?! Better to just keep such ideas trade secrets, get automatic software copyrights (for free), or just publish innovative work & results in exchange for dated attribution & the financial rewards that could result from that as well.

    An invalid patent just makes you (or your organization) look stupid & greedy! Before filing for a patent MAKE SURE that it’s actually something pretty significant and desirable, if not better yet, BIG! 90% of those (anyway very narrow) patents that are now being issued just clog up the system. Imagine if just 25K (significant) patents were issued each year (on major new contributions to the sciences & the ‘useful arts’)?! Do know about you, but I’d love that (even if mine wasn’t one of them)! To ONLY THE BEST inventors go the awards (and ‘spoils’). What we have now is just an incredible mess & waste of billions of dollars & millions of hours of ‘unfruitful labor’ and little in the way of actual new ‘teachings’ (which are still greatly exceeded by academics anyway)! Clearly it’s NOT what the Founders intended, when they thought that ‘maybe’ there ‘eventually’ MIGHT be the need for 1000 patents/yr (if they could even imagine that).

  37. BP October 19, 2019 5:57 pm

    Thanks Benny, I could tell you more about what’s actually going on but I’ll save you and me time. I do understand your position quite well, I agree, a layman would look at that claim and would likely come to the same conclusion you do. And, post grant review of whatever kind may be problematic. You could have said that in your very first post – but that’s not what you said. You went off on the detriment of “bad” patents, without any solution.

    And, please, don’t say that I have little knowledge when you point to the filter basket handle – I did very well understand what you meant and was just trying to demonstrate that it’s not as simple as you may think (guess what: I took what you said “literally”).

    That’s two errors that you have made, one in the patent number and another in citing the incorrect handle. However, no big deal, I expect perfection from no one. However, the “bad” patent clan expects perfection from all but themselves. They beat up examiners, practitioners, the USPTO, the director, etc.

    The “bad” patent lobby has it easy because there will always be some “bad” patent – someone to beat up as being “imperfect”. The law of diminishing returns is in effect, $ to get 80% “not bad”, $$ to get 85% “not bad”, and $$$$ to get 90% “not bad”. That’s the game of the efficient infringers, pricing independent inventors out of patents while beating up the agency for not being “perfect”. Throw the 35 USC 101 debacle on top of that and you clearly see the game illegal monopolies play.

  38. Concerned October 20, 2019 8:53 am

    Truth Seeker:

    Who’s money is it anyway? It seems to me that I am the one as the inventor who is paying the fees to the USPTO.

    And what do you consider a “big” invention? Apparently “big” is not a consideration in the patent process, just reject, reject and reject. In addition, there have been plenty of inventions that I thought were stupid that have went on to major commercial success.

    What have you invented, may I ask? What have the authors of this paper invented? If the answer to both of the preceding questions is nothing, then invent something that everyone in your field has not been able to solve or achieve since inception of the situation in question, then give us your overview please!

  39. Concerned October 20, 2019 9:27 am

    Truth Seeker (part 2) and Benny:

    Our good friend Benny has reviewed my patent application and he says he would not issue the patent. I posed two questions to Benny in another article and I received no response. Interesting.

    Here is Benny’s second chance to answer, and Truth Seeker please feel free to answer also:

    Question #1: If the tracking of the parent of an adult (my inventive step) is so routine, so well understood and so conventional, please name at least one situation in commerce where parents of adults occurs? Any field of commerce to include a field of commerce outside my field.

    Question #2: The Examiner admits in writing on page #5 that the process solves a business problem. How can a process solve a business problem, beyond of reach of hundreds of thousands of working professionals and experts for decades as the official record has been documented, and not be a new and useful process (or have a practical application?) The examiner tried to answer the preceding question by simply stating it is abstract, which is insulting to most people’s intelligence. The 101 statute (silent), and SCOTUS in Benson and the USPTO Director state verbatim that a new and useful process can be abstract if it is new and useful process with a practical application.

    I await your responses. Please refrain from using an undefined “big” unless you mean millions and millions of working professionals and experts for centuries and centuries which would only make my point.

    Thank you.

  40. Benny October 20, 2019 11:15 am

    Concerned, I don’t always keep up with comments. Some of us have work to do, but I’ve got some time off now.
    I’m not saying that you haven’t found a unique method of solving a problem. I do agree with the examiner that your method may be abstract, in the sense that it is not a device or method of manipulating substance or machine. It is extraction and correlation of data, something that on a very basic level we do as a thought process, but requires a general purpose computer if the data set is large. Scale your idea down to a dataset of, say, 4 records, and you’ll see what I mean. That’s my opinion, it may not be in line with US patent law, but you have a weak case, and even with a patent you would be hard put to reap financial reward from it, if I were in your shoes I would not throw good money after bad.

  41. Concerned October 20, 2019 2:35 pm

    Benny:

    Thank you for your response!

    My patent application is hardly a weak case when the fact pattern is consistent with statute, case law and official memos.

    Perhaps I may never reap any financial gain if you are referring to efficient infringement.

    Several observations regarding the correlation of data and a small sample size.

    Your attention is invited back to the two university studies in the official record. Those studies both spoke to the problem of even solving the oversight issue on a single record. I hope I am not being penalized because my solution solves the individual case and also solves the massive oversights on a scaled basis using a computer. It is the inventive steps that solves the problem, not the computer. Computers have been out for decades and never solved this problem. For example, the Social Security Administration has been using computers for years, yet the problem remained.

    In addition, the solution must be cost efficient as a cap of $6, 000 is placed in effect by law for any fee. The costs of false outcomes over a 2-3 screening period (3 year period) can easily exceed the possible financial return of $6,000. The solution must screen a person regularly over a 40 year period, namely at least one screening a year ( minimum) to avoid a significant loss of revenue.

    May we give credit to working professionals and experts in my field? Do you really think my solution is an obvious compare “A” to “B” to “C”? After 63 years, one hundred thousand working professionals and experts could not have seen such an obvious “thought process” solution with or without a computer? One of the authors of the university studies is a member of your chosen profession with now 40 years of experience in my field. He is a disability attorney.

    The examiner, like you, is inserting his opinion. He dodges direct arguments which is telling to me.
    May we stick to the statute, case law and common sense? Rule of Law should win the day, not opinions.

  42. Anon October 20, 2019 2:54 pm

    BP @37:

    That’s the game of the efficient infringer

    No one seems to want to address that elephant in the room.

  43. Anon October 20, 2019 2:58 pm

    Benny,

    in the sense that it is not a device or method of manipulating substance or machine” and

    it may not be in line with US patent law

    You DO realize the problem in your statements, right?

  44. Ternary October 20, 2019 4:27 pm

    Benny@40. “Scale your idea down to a dataset of, say, 4 records, and you’ll see what I mean.” This reflects a misunderstanding of computers, even though you have claimed previously be have built computing circuits. Computers are not anthropomorphic similars of humans. This works two ways: firstly: computers can solve problems that are intractable to humans. Secondly, one can create machine problems that are intractable to be solved by humans. An example is the RSA encryption.

    The new Eligibility Guidance provides: A Claim With Limitation(s) That Cannot Practically Be Performed In The Human Mind Does Not Recite A Mental Process.

    So when you say: “… it may not be in line with US patent law, but you have a weak case” it is still unclear why it is a weak case in your opinion. On what basis do you believe the invention is “weak?”

    It may be that you find the invention ‘per se’ not convincingly ‘deserving.’ I have sometimes an opinion like that about an invention. When you look at the claims, you think ‘really?’ Like you, one reduces the problem to a simple one and then scales it up. But that is not a legal criterion for patent eligibility or validity. In fact, it is generally the brilliance of an inventor to reduce a problem to its simplest form and then scale it. 35 USC 103 provides “Patentability shall not be negatived by how the invention was made.”

    Perhaps it would have helped to say that solving the problem is for instance beyond being solvable by computers within polynomial time using brute force. But Concerned has said that many times, be it in different words.

  45. concerned October 20, 2019 4:41 pm

    The new USPTO.guidance of October 17, 2019 is also interesting.

    The new guidance says examiners are expected to follow the official PEG. Also says applicant can submit a declaration providing expert testimony in support of their improvement.

    As you well know, two university studies were submitted by me that were authored by experts with 25 years and 35 years of “in the trenches” experience. The examiner rejected both and discarded the official guidance of January 2019.

    First, the Director should not have to tell his examiners to be subordinate and follow his orders.

    Second, undisputed expert testimony that proves a problem was solved (conceded by the examiner) is acceptable. Sad the Director has to even mention the obvious.

    Moreover, the Berkheimer court had to remind everyone that facts mattered in a legal setting. And one judge accuses two other judges of bad conduct in American Axle, which said bad conduct was predicted by “B.” The preceding acts are signs of a lawless process.

    Frankly, I think this new October 2019 gets tossed by the examining core. The old guard will take the Director to task again. The water will continue to be carried on behalf of the efficient infringement society.

  46. **ducks** October 21, 2019 12:51 am

    Higher quality patents, eh?
    How about starting with the USPTO hiring only industry-experienced examiners, or perhaps only industry-experienced patent attorneys as examiners?
    Maybe stop licensing Patent Agents as well (especially based on USPTO “experience”)?

  47. Model 101 October 31, 2019 11:28 am

    @concerned

    “Moreover, the Berkheimer court had to remind everyone that facts mattered in a legal setting. And one judge accuses two other judges of bad conduct in American Axle, which said bad conduct was predicted by “B.” The preceding acts are signs of a lawless process.

    Frankly, I think this new October 2019 gets tossed by the examining core. The old guard will take the Director to task again. The water will continue to be carried on behalf of the efficient infringement society.”

    Yep! The Director had nothing but praise for the USPTO.

    Concerned… you should have said the water was, and will continue to be, … dirty.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website