Tuesday, February 13, 2007

Adam Jaffe to testify before Congress on patent reform

A reader emailed that Professor Jaffe will testify on patent reform on 15 Feb. 07:

Witnesses include: Adam Jaffe, Mark Myers, Suzanne Michel, and Dan Ravicher

Thursday 02/15/2007 - 2:00 PM
2141 Rayburn House Office Building
Subcommittee on Courts, the Internet, and Intellectual Property
Oversight Hearing on: American Innovation at Risk: “The Case for Patent Reform.”

There is an article posted on IPFrontline, entitled Is the Jaffe/Lerner Analysis of Patent Law Correct?, and other relevant posts.


In the realm of something that likely will NOT be mentioned by Professor Jaffe et al. on 15 Feb. is a discussion of patent grant rates that appears in a thread on Patently-O [http://www.patentlyo.com/patent/2007/02/uspto_allowance.html#comments ]. Some text includes:

from a patent prosecutor: The alarming decline [in patent allowances] is in the ability of Examiners to find that something is allowable whether or not it actually is in the eyes of the law. It is no secret that Examiners are placed under very difficult pressure to make sure that an application they allow will not be questioned by Quality Assurance, as this could negatively impact their bonus and review. Second and third pairs of eyes tend to find that a claim "seems a bit broad to me" even though the second and third pairs of eyes are not aware of any prior art in particular. While the PTO clamps down to make sure that issued applications are truly allowable, apparently nobody is minding the store with regard to the quality of the PTO's other product: Office Actions.

Combining the fact of no quality review of office actions with high turnover and difficult production requirements, actually getting a patent application allowed is now more of a game of endurance then a question of actual novelty or prosecution skill.

from an examiner: Actually, we examiners are repeatedly told that an error is an error is an error. It is just as much an error to make or maintain a rejection when none is warranted as it is to allow something non-allowable. I know that to many practioners we seem to be the US Rejection and Trademark Office, but I and the people I work with really do see it as a balancing act. We want to allow claims that are in fact allowable, thereby properly granting inventors their patents, without taking anything more than that out of the public domain.

One commenter got into the issue that it is the claims, not the allowed applications per se, that is the true issue: I am familiar with the mischief (perpetrated on "society")of issued patents with a single over-broad claim tucked away somewhere in a long set of narrower claims. I am interested to see the USPTO definition of "quality not good enough" namely, in an allowed application even just one bad claim. I say "Well done the USPTO. Now all you have to do is reduce pendency, without loss of quality".

There is a discussion of APJ Timm: A quick google search on APJ Timm demonstrates that at least one appeal panel she was on understands complicated concepts such as "teaches away". I wish that the general populace in the Examiner Corps would learn that concept.

Here is a snippet from

"Indeed, as stressed by appellant, Nock teaches that the drawer frame is adjusted to *prevent* any lifting of the frame from the carrying plates such that the frame *cannot be lifted* ... Hence, we concur with appellant that Nock *teaches away*"


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