Depressions, radicals, Wobblies, and patent reform
After quoting patent attorney John R. Harris: "If we're about to go into a recession and all of a sudden you kill innovation in the country, we might not have a recession. We might have a depression," Stephan Kinsella titled his piece: Another Reason to Reform Patent Law: Touch Off A Recession! and concluded Come to think of it, since recessions are a good thing--helping to restore the economy back to health after the distorting effects of boom-caused malinvestment--here's yet another reason to favor patent reform!
Although the word "radical" came up only in a quote only of Harris about the new rules on continuing applications ("The new rules are radical," which rules are currently enjoined by a district court), Kinsella extrapolated in noting: Naturally, the organized patent bar and intellectual property (IP) advocates have an interest in labeling recent developments "radical" so that any really radical proposals will be dismissed out of hand. In fact, the organized patent bar, in the form of the AIPLA and the IPO, are backing most of the "recent developments" in patent reform and are NOT labelling such things "radical."
One has difficulty communicating with Kinsella because he does not seem to understand the difference between invention and innovation. He wrote:
I am curious why you assert this. What is your reasoning? Jefferson, e.g., the first patent examiner (and always on the fence about whether patents were a good idea), wrote that "Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody."
Now I do not agree that this is a good idea, or that it actually does encourage (net) innovation; but this seems to clearly have been a motivation of our founders. Jefferson also wrote that the patent system had “given spring to invention beyond my conception.” I.e., encouraged or stimulated innovation--not merely encouraged disclosure of them.
IPBiz notes that throughout the history of the US patent system, the basic transaction has been DISCLOSURE of inventions which are novel and useful (and more recently nonobvious) in RETURN for a RIGHT TO EXCLUDE for a period of time. There has NEVER been an inquiry into whether the invention can be commercialized or will change the way people live (i.e., be an innovation). As to why Kinsella is dead wrong: res ipsa loquitor. Further, currently, only about 10% of issued patents are commercialized or generate license fees.
The interaction with Kinsella resembles previous communications with Mike at Techdirt. See for example:
http://ipbiz.blogspot.com/2006/05/do-patents-tend-to-harm-inventors-part_25.html
http://ipbiz.blogspot.com/2007/08/mike-at-techdirt-has-it-wrong-on-post.html
[UPDATE. The comment below: Mr. Ebert seems to think "innovation" is some subset of "invention", i.e. the type of inventions that are commercializable. This is all irrelevant detail. One goal of giving a monopoly to reward "invention" is to encourage invention, in the hopes that some of the inventions would be useful innovations. Ebert's obsession on subtle linguistic nuances borders on crankish. seems to suggest that the IPBiz remarks (above) indicate "innovation" is a SUBSET of "invention". The reader is invited to find evidence of such a suggestion. Innovation is not a subset of invention, as invention is defined by the USPTO. One can have "innovation" without having a patentable invention. Once one recognizes that, one can begins to understand some of the problems the IT people have. LBE has discussed the differences between "innovation" and "invention" in many places, including in "Patent Reform 2005: Can You Hear Me, Major Tom?",
Getting the Patent Reform Wars on Track, and 88 JPTOS 1068. Far from being in the realm of "subtle linguistic differences", the distinction between "invention" and "innovation" is critical to understanding issues in patent reform.]
***
Of the views of Harris, an article titled NEW USPTO RULES WILL SIGNIFICANTLY AFFECT PATENT STRATEGY states of the rules on continuing applications:
These rules, which go into effect November 1, 2007, represent a significant change to many current USPTO policies, and will drastically affect patent filing and prosecution strategies.
Harris does use the word "radical":
As stated previously, this will result in a need for better claim drafting and well-thought-out patent applications. This will also likely result in patent applicants being forced to give up on seeking patent protection for related embodiments by staying under the 5/25 limit, and practically prevented from seeking claims with varying scope and fall-back positions as a safety measure. This is a radical change in thinking about patent protection.
(...)
If the USPTO had quit here, that would have been enough to cause major changes in patent strategies. But the USPTO did not quit with these changes – there are still more radical and restrictive changes in “continuation” practice.
IPBiz notes this is not the stuff of Wobblies throwing bombs.
***
Separately, in terms of "how easy" it is to obtain U.S. patents, one notes a recent post at patenthawk:
From a Senior Partner at a Major Law Firm to his Colleagues:
Many of you have experienced rejected appeal briefs over the past year on the silly ground that you failed to attach a blank (non-existent) "Evidence Appendix" to the brief, or that there was not a separate heading for each independent claim in the summary section of the appeal brief. (Yes, the appeal rules do provide for an evidence appendix for "any evidence" but they don't say that you must attach a blank page if there is no evidence to submit.)
(...)
Respectfully, examiner's final rejection on the second action was improper, a violation of MPEP 706.07(a).
706.07(a) Final Rejection, When Proper on Second Action
Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
The §112 rejections were new, not necessitated by claim amendments nor prior art, and so, if they were to be brought, should have been presented in a non-final office action.
Further, the §112 rejections are unfounded. This is a continuation of a granted patent; evidence that another examiner thought very similar claims of merit, amply supported by the specification. Two granted patents, and an unknown number of applications, cite the parent as prior art. Certainly it is the substance of the disclosure that merits such citations. Examiner rejects all claims under §112 ¶ 1, but then only selectively cites dependent claims as failing. In other words, examiner did not even substantiate a reasonable basis for such sweeping rejection, particularly of the independent claims.
Comments on PatentHawk also included:
The business method art units (3620's) are simply the worst. They have no regard for the law whatsoever. As was noted on this site, and others, feel free to review 09/077,337 and 09/193,787. The PTO's handling of these cases, and others, is simply disgraceful.
There needs to be a house cleaning at the PTO.
AND
1. When an examiner tells you something like this, it is very important to ask who the examiner consulted with, and then to call that person for confirmation. In my experience, more than half the time, there was no "consultation." Of the remainder, usually the examiner has misstated the issue to the "conferee," so the answer you got does not apply to the question you asked - in many cases, where the supervisor did in fact opine, the scope of the advice to the examiner was much narrower than the ruling the examiner passes on to you.
Be very polite, but very firm - have the examiner agree that he/she wouldn't think it fair to have you present the examiner's case in a dispute, and you don't think it's workable to have the examiner present your case. You want to be sure that the correct question was asked. You want to be sure that you received the precise answer, and its basis, so that you can meet the requirements of the law precisely.
It's especially valuable to press these issues if you are a repeat player in an art unit. You'll only have to do it once or twice per examiner - either the examiner will become much more careful and analytically rigorous once you demonstrate a record of follow-up, or you will get a new examiner. Don't escalate close cases, only clear black-and-white ones, but do escalate the easy ones.
2. Use interview summaries to document anything out of line. Write up the conversation as close to verbatim as you can. File it, get it in the record. Then call the SPE. Don't be afraid to escalate to the T.C. Director if the SPE blows you off. If the T.C. Director won't take the law seriously, escalate to the Office of the Commissioner: the folks that get detailed there tend to be lawyers who have enough respect for the rule of law to take these kinds of issues seriously, if you have them documented in the record.
3. If the examiner was telling the truth, then senior officials of the PTO broke the law and are violating their oaths to "see that the laws are faithfully executed." Fifth Amendment due process forbids agencies from having unwritten, changeable-at-will rules. Lightfoot v. District of Columbia, 339 F.Supp.2d 78, 88 (D.D.C. 2004) sings a long hymn to agency due process and written, predictable principles. By telephone, be very polite, but very firm: make the examiner show you where it exists in writing, or demand that the examiner withdraw the requirement. Escalate by phone.
4. If the examiner was telling the truth, then senior officials of the PTO are disobeying the President. Executive Order 13,422 and its associated implementation bulletins from the White House forbid agencies from maintaining caches of "secret" rules. Documents promulgated without notice-and-comment are only binding on agency employees, and may not bind the public. 72 Fed. Reg. 3432 (Jan. 25, 2007, http://www.whitehouse.gov/omb/inforeg/eo12866/fr_notice_eo12866_012307.pdf); “Final Bulletin for Agency Good Guidance Practices” (OMB Memorandum M-07-07, January 18, 2007, http://www.whitehouse.gov/omb/memoranda/ fy2007/m07-07.pdf); and “Implementation of Executive Order 13422 (amending Executive Order 12866) and the OMB Bulletin on Good Guidance Practices” (OMB Memorandum M-07-13, April 25, 2007, http://www.whitehouse.gov/omb/memoranda/fy2007/m07-13.pdf).
In my experience, issues of unpredictable procedure and "the PTO does not even care what its own regulations say" are the overwhelming cause of the PTO's "rework" and "backlog." Too many PTO personnel do not understand the fundamental principle that the law is what is written down, it's not what I remember from training years ago, and it's not what my boss tells me. (In a conversation with John Doll about a year ago, he made clear is view of the principle: he stated that if I wanted him to follow the words of 37 C.F.R. instead of his personal impression of PTO policy, I'd have to "take it to a federal district court." His words.) Because there is no agreement on basic principles, final agreements are much more difficult than they should be.
Although the word "radical" came up only in a quote only of Harris about the new rules on continuing applications ("The new rules are radical," which rules are currently enjoined by a district court), Kinsella extrapolated in noting: Naturally, the organized patent bar and intellectual property (IP) advocates have an interest in labeling recent developments "radical" so that any really radical proposals will be dismissed out of hand. In fact, the organized patent bar, in the form of the AIPLA and the IPO, are backing most of the "recent developments" in patent reform and are NOT labelling such things "radical."
One has difficulty communicating with Kinsella because he does not seem to understand the difference between invention and innovation. He wrote:
I am curious why you assert this. What is your reasoning? Jefferson, e.g., the first patent examiner (and always on the fence about whether patents were a good idea), wrote that "Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody."
Now I do not agree that this is a good idea, or that it actually does encourage (net) innovation; but this seems to clearly have been a motivation of our founders. Jefferson also wrote that the patent system had “given spring to invention beyond my conception.” I.e., encouraged or stimulated innovation--not merely encouraged disclosure of them.
IPBiz notes that throughout the history of the US patent system, the basic transaction has been DISCLOSURE of inventions which are novel and useful (and more recently nonobvious) in RETURN for a RIGHT TO EXCLUDE for a period of time. There has NEVER been an inquiry into whether the invention can be commercialized or will change the way people live (i.e., be an innovation). As to why Kinsella is dead wrong: res ipsa loquitor. Further, currently, only about 10% of issued patents are commercialized or generate license fees.
The interaction with Kinsella resembles previous communications with Mike at Techdirt. See for example:
http://ipbiz.blogspot.com/2006/05/do-patents-tend-to-harm-inventors-part_25.html
http://ipbiz.blogspot.com/2007/08/mike-at-techdirt-has-it-wrong-on-post.html
[UPDATE. The comment below: Mr. Ebert seems to think "innovation" is some subset of "invention", i.e. the type of inventions that are commercializable. This is all irrelevant detail. One goal of giving a monopoly to reward "invention" is to encourage invention, in the hopes that some of the inventions would be useful innovations. Ebert's obsession on subtle linguistic nuances borders on crankish. seems to suggest that the IPBiz remarks (above) indicate "innovation" is a SUBSET of "invention". The reader is invited to find evidence of such a suggestion. Innovation is not a subset of invention, as invention is defined by the USPTO. One can have "innovation" without having a patentable invention. Once one recognizes that, one can begins to understand some of the problems the IT people have. LBE has discussed the differences between "innovation" and "invention" in many places, including in "Patent Reform 2005: Can You Hear Me, Major Tom?",
Getting the Patent Reform Wars on Track, and 88 JPTOS 1068. Far from being in the realm of "subtle linguistic differences", the distinction between "invention" and "innovation" is critical to understanding issues in patent reform.]
***
Of the views of Harris, an article titled NEW USPTO RULES WILL SIGNIFICANTLY AFFECT PATENT STRATEGY states of the rules on continuing applications:
These rules, which go into effect November 1, 2007, represent a significant change to many current USPTO policies, and will drastically affect patent filing and prosecution strategies.
Harris does use the word "radical":
As stated previously, this will result in a need for better claim drafting and well-thought-out patent applications. This will also likely result in patent applicants being forced to give up on seeking patent protection for related embodiments by staying under the 5/25 limit, and practically prevented from seeking claims with varying scope and fall-back positions as a safety measure. This is a radical change in thinking about patent protection.
(...)
If the USPTO had quit here, that would have been enough to cause major changes in patent strategies. But the USPTO did not quit with these changes – there are still more radical and restrictive changes in “continuation” practice.
IPBiz notes this is not the stuff of Wobblies throwing bombs.
***
Separately, in terms of "how easy" it is to obtain U.S. patents, one notes a recent post at patenthawk:
From a Senior Partner at a Major Law Firm to his Colleagues:
Many of you have experienced rejected appeal briefs over the past year on the silly ground that you failed to attach a blank (non-existent) "Evidence Appendix" to the brief, or that there was not a separate heading for each independent claim in the summary section of the appeal brief. (Yes, the appeal rules do provide for an evidence appendix for "any evidence" but they don't say that you must attach a blank page if there is no evidence to submit.)
(...)
Respectfully, examiner's final rejection on the second action was improper, a violation of MPEP 706.07(a).
706.07(a) Final Rejection, When Proper on Second Action
Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
The §112 rejections were new, not necessitated by claim amendments nor prior art, and so, if they were to be brought, should have been presented in a non-final office action.
Further, the §112 rejections are unfounded. This is a continuation of a granted patent; evidence that another examiner thought very similar claims of merit, amply supported by the specification. Two granted patents, and an unknown number of applications, cite the parent as prior art. Certainly it is the substance of the disclosure that merits such citations. Examiner rejects all claims under §112 ¶ 1, but then only selectively cites dependent claims as failing. In other words, examiner did not even substantiate a reasonable basis for such sweeping rejection, particularly of the independent claims.
Comments on PatentHawk also included:
The business method art units (3620's) are simply the worst. They have no regard for the law whatsoever. As was noted on this site, and others, feel free to review 09/077,337 and 09/193,787. The PTO's handling of these cases, and others, is simply disgraceful.
There needs to be a house cleaning at the PTO.
AND
1. When an examiner tells you something like this, it is very important to ask who the examiner consulted with, and then to call that person for confirmation. In my experience, more than half the time, there was no "consultation." Of the remainder, usually the examiner has misstated the issue to the "conferee," so the answer you got does not apply to the question you asked - in many cases, where the supervisor did in fact opine, the scope of the advice to the examiner was much narrower than the ruling the examiner passes on to you.
Be very polite, but very firm - have the examiner agree that he/she wouldn't think it fair to have you present the examiner's case in a dispute, and you don't think it's workable to have the examiner present your case. You want to be sure that the correct question was asked. You want to be sure that you received the precise answer, and its basis, so that you can meet the requirements of the law precisely.
It's especially valuable to press these issues if you are a repeat player in an art unit. You'll only have to do it once or twice per examiner - either the examiner will become much more careful and analytically rigorous once you demonstrate a record of follow-up, or you will get a new examiner. Don't escalate close cases, only clear black-and-white ones, but do escalate the easy ones.
2. Use interview summaries to document anything out of line. Write up the conversation as close to verbatim as you can. File it, get it in the record. Then call the SPE. Don't be afraid to escalate to the T.C. Director if the SPE blows you off. If the T.C. Director won't take the law seriously, escalate to the Office of the Commissioner: the folks that get detailed there tend to be lawyers who have enough respect for the rule of law to take these kinds of issues seriously, if you have them documented in the record.
3. If the examiner was telling the truth, then senior officials of the PTO broke the law and are violating their oaths to "see that the laws are faithfully executed." Fifth Amendment due process forbids agencies from having unwritten, changeable-at-will rules. Lightfoot v. District of Columbia, 339 F.Supp.2d 78, 88 (D.D.C. 2004) sings a long hymn to agency due process and written, predictable principles. By telephone, be very polite, but very firm: make the examiner show you where it exists in writing, or demand that the examiner withdraw the requirement. Escalate by phone.
4. If the examiner was telling the truth, then senior officials of the PTO are disobeying the President. Executive Order 13,422 and its associated implementation bulletins from the White House forbid agencies from maintaining caches of "secret" rules. Documents promulgated without notice-and-comment are only binding on agency employees, and may not bind the public. 72 Fed. Reg. 3432 (Jan. 25, 2007, http://www.whitehouse.gov/omb/inforeg/eo12866/fr_notice_eo12866_012307.pdf); “Final Bulletin for Agency Good Guidance Practices” (OMB Memorandum M-07-07, January 18, 2007, http://www.whitehouse.gov/omb/memoranda/ fy2007/m07-07.pdf); and “Implementation of Executive Order 13422 (amending Executive Order 12866) and the OMB Bulletin on Good Guidance Practices” (OMB Memorandum M-07-13, April 25, 2007, http://www.whitehouse.gov/omb/memoranda/fy2007/m07-13.pdf).
In my experience, issues of unpredictable procedure and "the PTO does not even care what its own regulations say" are the overwhelming cause of the PTO's "rework" and "backlog." Too many PTO personnel do not understand the fundamental principle that the law is what is written down, it's not what I remember from training years ago, and it's not what my boss tells me. (In a conversation with John Doll about a year ago, he made clear is view of the principle: he stated that if I wanted him to follow the words of 37 C.F.R. instead of his personal impression of PTO policy, I'd have to "take it to a federal district court." His words.) Because there is no agreement on basic principles, final agreements are much more difficult than they should be.
posted by Lawrence B. Ebert at 5:06 AM
1 Comments:
Mr. Ebert wrote:
"After quoting patent attorney John R. Harris: "If we're about to go into a recession and all of a sudden you kill innovation in the country, we might not have a recession. We might have a depression," Stephan Kinsella titled his piece: Another Reason to Reform Patent Law: Touch Off A Recession! and concluded Come to think of it, since recessions are a good thing--helping to restore the economy back to health after the distorting effects of boom-caused malinvestment--here's yet another reason to favor patent reform!
"Although the word "radical" came up only in a quote only of Harris about the new rules on continuing applications ("The new rules are radical," which rules are currently enjoined by a district court), Kinsella extrapolated in noting: Naturally, the organized patent bar and intellectual property (IP) advocates have an interest in labeling recent developments "radical" so that any really radical proposals will be dismissed out of hand. In fact, the organized patent bar, in the form of the AIPLA and the IPO, are backing most of the "recent developments" in patent reform and are NOT labelling such things "radical.""
***
Mr. Ebert: I was not "extrapolating" from Harris' comments. In fact, this was already my view. Harris's comments were simly an *illustration* of my contention.
Mr. Ebert writes:
"One has difficulty communicating with Kinsella because he does not seem to understand the difference between invention and innovation."
"He wrote:
"I am curious why you assert this. What is your reasoning? Jefferson, e.g., the first patent examiner (and always on the fence about whether patents were a good idea), wrote that "Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody."
Now I do not agree that this is a good idea, or that it actually does encourage (net) innovation; but this seems to clearly have been a motivation of our founders. Jefferson also wrote that the patent system had “given spring to invention beyond my conception.” I.e., encouraged or stimulated innovation--not merely encouraged disclosure of them."
"IPBiz notes that throughout the history of the US patent system, the basic transaction has been DISCLOSURE of inventions which are novel and useful (and more recently nonobvious) in RETURN for a RIGHT TO EXCLUDE for a period of time. There has NEVER been an inquiry into whether the invention can be commercialized or will change the way people live (i.e., be an innovation). As to why Kinsella is dead wrong: res ipsa loquitor. Further, currently, only about 10% of issued patents are commercialized or generate license fees."
Mr. Ebert seems to think "innovation" is some subset of "invention", i.e. the type of inventions that are commercializable. This is all irrelevant detail. One goal of giving a monopoly to reward "invention" is to encourage invention, in the hopes that some of the inventions would be useful innovations. Ebert's obsession on subtle linguistic nuances borders on crankish.
Ebert's comments here call to mind my comments in my post Engineer's Syndrome. When engineers try to dabble in policy, the results are often entertaining.
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