Hindsight Bias

Peter Sleman

September 29, 2020, 06:15 AM 25

Informal Drawings is a comic-strip devoted to patent attorneys, examiners, and inventors. New comics are published weekly.

Prints and coffee mugs may be purchased at patentspace.net/informal-drawings.

Peter Sleman is a patent attorney and co-founding partner of Wei & Sleman LLP. His practice focuses on patent prosecution, opinions and due diligence spanning a variety of technologies ranging from mechanical [...see more]

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25 comments so far. Add my comment.

Anon
October 4, 2020 10:49 am
“As you say, there are on this blog many who are litigants in person”

NOT what I said.

Yet again, you reply with spin and avoid the point presented to you.

Your “wanting to reach the lay people” is exactly the problem with how you are posting, as it is those people that will be most confused by your inept use of legal terms. It is NOT how you attempt to spin that your “loose” language “strike[s] closeted, desk-bound patent law professional,” it is why ANY professional would be ‘struck’ by your inanity.

This being “OK with you,” is very much part of the problem. This should NOT be “OK with you,” if you had any sense of professional responsibility towards those very people that you profess to be attempting to reach.
MaxDrei
October 4, 2020 05:27 am
Thank you, anon. As you say, there are on this blog many who are litigants in person. It is much wider than merely hard-bitten specialist patent attorneys. It’s the lay people I want to reach. The consequence is that my phraseology can strike closeted, desk-bound patent law professionals as somewhat loose. But that’s OK with me.

Otherwise, I’m grateful that, with your observation that water is still wet, you corroborate my counsel to such readers.
Anon
October 3, 2020 02:30 pm
“The consequence is a prospect of success for those who know the art inside out and backwards before they file at the PTO that is very much better than the prospects for those who file without first developing a solid grasp of the prior art landscape.”

And water is still wet, and your noise about “BIAS” is still that: noise.

Here, your “complete freedom to amend during the drafting process” is yet more obfuscation and ‘far too loose’ use of legal terms that are just not proper.

There are plenty of pro say people around here MaxDrei – you do no one any favors with this type of miscommunication.
MaxDrei
October 3, 2020 12:35 pm
Anon the asymmetry I see is manifested in the necessity of a strict line on the admissibility of prosecution amendments. You know my position well enough: that the realities of a FItF statute will result in ever-increasing strictness in the WD requirement (the US counterpart to Art 123(2) EPC). FtF offers complete freedom to amend during the drafting process but allows very little freedom to amend, once the patent application has been filed. The consequence is a prospect of success for those who know the art inside out and backwards before they file at the PTO that is very much better than the prospects for those who file without first developing a solid grasp of the prior art landscape.
MaxDrei
October 3, 2020 12:22 pm
Nice one, Paul. Well spotted. Your proposal is indeed one approach. Me, I prefer to put my faith in the power of the popular patent law blogs, including this one, to nudge opinion within the interested circles. So I’m always very happy to see you hanging on in, and writing learned contributions. Keep up the good work.
Paul Cole
October 3, 2020 11:49 am
@ MaxDrei 9

“… there is nothing artificial about the notion of a parson of ordinary skill in the art.”

Let us pray for success in the applications we file at the USPTO.
Anon
October 3, 2020 11:12 am
Further, you mention digress – even as you yourself digress further into the weeds.

What is this “Perhaps this inherent asymmetry in any First to File patent statute is one thing that so upsets so many in these threads? that you spout on about? Who around here particularly is it that you think is “so upset?”

You are off the path, and fashioning strawmen that only fit your EPO Uber Alles mantras.
Anon
October 3, 2020 11:00 am
MaxDrei,

You are using a term of art – and its negative connotations – in a manner that is simply not fitting.

There is no such thing as ‘hindsight BIAS” – as that term legally means – in the process of an applicant writing their application (no matter how much prior art searching that they engage in).

You are speaking nonsense.
MaxDrei
October 3, 2020 05:39 am
In every country in the world except the USA the prior art available for obviousness attacks is no more than that which has already been made available to the public, before the patent application is filed. In these days of search engines, it is not unreasonable to suggest that the entirety of that prior art universe is searchable (with the invention then being defined with hindsight knowledge of the search results). To use your expression, it is not unreasonable to “tether” patentability to that reality. And with that tethering, there is nothing artificial about the notion of a parson of ordinary skill in the art.

But we digress. We are supposed to be talking about hindsight “bias”. The patent drafter certainly enjoys some degree of hindsight knowledge of the state of the art. It’s up to the client, how much it is willing to pay, to ease the drafter into the shoes of the person of ordinary skill in the art, biassed as to their assessment of what the invention is by their encyclopaedic hindsight knowledge of the state of the art. At least in patent drafting, what matters is not who you know but what you know. Inventors in house at the cutting edge corporations inevitably have a better grasp of the state of the art than any individual private inventor and in consequence their filings are more soundly-based. Perhaps this inherent asymmetry in any First to File patent statute is one thing that so upsets so many in these threads? I mean, in any First to File system, what you write in the patent application on its PTO priority-defining filing date is the only thing that counts.
Anon
October 2, 2020 06:54 pm
No MaxDrei – the CLIENT owns that – you offer a type of Pollyanna approach that certainly sounds good, but is also certainly NOT tethered to the real world in the sense that NO real person actually is or can approximate the Person Having Ordinary Skill In The Art, with anything close to “full hindsight knowledge of the most relevant state of the art before the end of the drafting process.”

And EVEN IF, one could, the comment about ‘use of white out’ is STILL meaningless in context here, because the ONLY thing of import is the final product that is actually the submitted application. THAT is what still is a mystery to your assertion and the relation to “Trouble.”
MaxDrei
October 2, 2020 01:37 pm
You want to know what I meant by “use of white-out” during patent drafting. I had in mind that drafting id, or should be, an iterative process. One sets out for the inventor what one thinks the invention is. Then, once that is settled, one does, or ought to do, a survey of the prior art, what has already been published, to stimulate the inventor into further precision of definition of what the invention is, relative to the state of the art.

That iterative process will invariably require copious use of the editing facilities of modern word-processing software. It is legitimate, expected, that Applicant enjoys (more or less) full hindsight knowledge of the most relevant state of the art before the end of the drafting process.

Of course, you can dispense with any searching. But then you own the consequences too.
Anon
October 1, 2020 02:06 pm
I am not certain that I understand the assertion of “Trouble is, under First to File, the claim (and supporting specification) is drafted with copious use of white-out.”

It matters not at all how drafting may or may not have been done, or any amount of “white out.” What matters is that there is a “No New Matter” rule (a rule that as has been touched upon previously, the US Sovereign very much has, and is not limited to a ipsis verbis – and sometimes mindlessly so – approach).
MaxDrei
October 1, 2020 05:54 am
That helps, David. Are you saying that the use of white-out in a cartoon such as the one here is analogous to the mischief of “hindsight bias” in the obviousness enquiry, that the USPTO should be forbidden the use of all forms of “white-out”?

Trouble is, under First to File, the claim (and supporting specification) is drafted with copious use of white-out. Validity of that claim is judged as of a date after the end of the period of careful drafting of the patent application so that the claim is patentable over the art. The drafter has perfect hindsight and is very definitely “biassed”.
David Stein
September 30, 2020 07:34 pm
I thought that the caption was deliberate – as in: when we started, we didn’t know where we would end up, and our initial estimate was wrong.

Strikethrough here acknowledges the error – i.e., does *not* use hindsight. Hindsight would have been using white-out to pretend that the initial guess was right all along.
MaxDrei
September 30, 2020 04:21 am
I need help, to laugh in the right place. I was assuming that the whole point of the cartoon riff on “hindsight bias” was the failure of foresight, the failure to foresee the need to leave space underneath the drawing for the word “bias”. But then I read Comment #1 and had my doubts.
Incidentally, I couldn’t join the demo against hindsight “bias” because I don’t really know what it means. What I’m very much against is the use of ex post facto analysis in the determination of patentability/invalidity. Hindsight, as such, is inevitable and pretending that it can be shut out is an illusion. We are stuck with it, whether we like it or not, and so must try to find an approach to the obviousness analysis that recognises that inevitability and manages it. Like, using a TSM approach, for example. That strikes me as a better approach than mere lip service, mere pious words, merely prohibiting “hindsight bias”.
Pro Say
September 29, 2020 02:47 pm
“Why; hindsight bias?! Who youz kiddin? We don’t see no hindsight bias!”

— CAFC
Paul Cole
September 29, 2020 11:18 am
Superb cartoon. Shame about the messed-up legend, but nobody is infallible.