Rai's wrong on reform
Artie Rai, who wrote a guest editorial on why the district court decision in Tafas was wrongly decided, is back on Patently-O with a guest editorial on why Barack Obama is good for the patent system.
Some comments:
For example, requiring disclosure of prior art by applicants (who presumably know a lot about their area of invention) might seem sensible. But the reasoning behind the policy is undermined if the Federal Circuit decides to invoke a highly aggressive doctrine of inequitable conduct. [IPBiz note: applicants ARE currently required to disclose prior art they know. Rai herself wrote in 95 Geo. L.J. 269: Although applicants have an obligation to disclose prior art of which they are aware, they have no duty to conduct a prior art search. . Interestingly, to support this legal requirement, Rai cited in a footnote only law review articles, including Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495, 1499-1500 (2001)]
For example, the Senator says that when "dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity." Thus he comes out in favor of a "second window" for post-grant administrative review of patent validity at the time the patent is asserted. [IPBiz note: the PTO can conduct Director-initiated re-exams, as happened in the Eolas case. What "low-cost, timely" proceedings have to do with the "second window" of post-grant opposition is not clear. Rai seems to have entered fantasy-land.
In 2003, Rai promoted the 95% grant rate figure of Quillen and Webster; footnote 5 of 103 Colum. L. Rev. 1035 includes: Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 3 (2001) (citing ninety-five percent ultimate approval rate for patent applications in U.S. PTO, if continuing applications are counted, as contrasted with sixty-eight and seventy-five percent allowance rates for European and Japanese Patent Offices respectively). Rai never corrected this mis-impression, although no reasonable person believes in the 95% number. One also recalls that Rai, in a law review article published in 2004 [19 Berkeley Tech. L.J. 907] asserted: For a number of reasons, examiners are unlikely to deny even questionable applications., with a footnote including: A partial list of recent publications pointing out the deficiencies of the examination process includes: Shubha Ghosh & Jay Kesan, What Do Patents Purchase: In Search of Optimal Ignorance in the Patent Office, 40 Hous. L. Rev. 1219 (2004); Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495 (2001); Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1 (2001); John R. Thomas, Collusion and Collective Action in the Patent System: A Proposal for Patent Bounties, 2001 U. Ill. L. Rev. 305. . The 2001 Quillen/Webster article has been pretty much demolished between 2004 and the time of Rai's op-ed, but Rai has been silent on the undermining of the assumptions she seems to entertain. Finally, in 2007, when even Mark Lemley had thrown in the towel on the 95% number of the 2001 Quillen/Webster paper, Rai was still at it in 95 Geo. L.J. 269: as numerous commentators have long observed, the ex parte proceedings upon which the PTO generally relies are unlikely to afford examiners the opportunity to deny even questionable patents. with footnote 38 including Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and the Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 13 (2002). Rai is a broken record who does not keep up with the patent literature. Rai is out-of-touch with the reality of patent grant rate numbers, and has been out of touch for over five years.]
Moreover, at least in the long term, the availability of this option might reduce the incentive to file dubious patent applications in the first instance (and hence might reduce the current backlog of over 700,000 patent applications). [IPBiz note: re-exams have been around for years. In fact, PubPat (Rai is on the Pubpat Board of Directors) filed three re-exams against the WARF stem cell patents, and was totally smoked. The prior art cited by PubPat was found not enabled, and the declarations conclusionary. What does Rai have to say about the dubious, non-enabled, and conclusionary re-examinations that PubPat filed?
Of Barack Obama, Rai wrote: Senator Obama's approach reflects a nuanced understanding of the concerns of the various stakeholders. It also reflects an ability to rise above narrow interest group politics and suggest creative solutions not contemplated by the interest groups most active in the latest round of the Congressional reform wars.
Rai contributed to Obama's campaign. [Cisco's Mallun Yen contributed to Hillary's.] What "creative solutions" Rai had in mind are not clear. "Gold plated" patents are a recycled Lemley-ism, and hardly creative. PubPat's amicus brief to the CAFC on Tafas was a batch of recycled Lemley-isms, mostly disproved now. Rather than a creative approach, Obama's approach to patent reform is law professor re-tread.
Some comments on Professor Rai from Patently-O:
I find Ms. Rai to be aggravating because she seems to make rather unfounded assumption that most people filing patents are doing it just for the entertainment value, and don't actually consider their patents to be worth anything. If you read Lemley's article (another career academic who's never been a patent prosecutor) you'll see exactly that. He assumes that inventors file patents just for kicks.
She's [Rai's] not a registered patent agent or attorney. Never worked in the private sector. Academic through-and-through. No wonder she's full of it.
See also-->
http://ipbiz.blogspot.com/2008/07/consumerwatchdog-and-pubpat-theyre-back.html
Also on Lemley-->
http://blogs.law.harvard.edu/palfrey/2008/07/12/entrepreneurship-the-patent-law-and-scale-of-firms/
Some comments:
For example, requiring disclosure of prior art by applicants (who presumably know a lot about their area of invention) might seem sensible. But the reasoning behind the policy is undermined if the Federal Circuit decides to invoke a highly aggressive doctrine of inequitable conduct. [IPBiz note: applicants ARE currently required to disclose prior art they know. Rai herself wrote in 95 Geo. L.J. 269: Although applicants have an obligation to disclose prior art of which they are aware, they have no duty to conduct a prior art search. . Interestingly, to support this legal requirement, Rai cited in a footnote only law review articles, including Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495, 1499-1500 (2001)]
For example, the Senator says that when "dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity." Thus he comes out in favor of a "second window" for post-grant administrative review of patent validity at the time the patent is asserted. [IPBiz note: the PTO can conduct Director-initiated re-exams, as happened in the Eolas case. What "low-cost, timely" proceedings have to do with the "second window" of post-grant opposition is not clear. Rai seems to have entered fantasy-land.
In 2003, Rai promoted the 95% grant rate figure of Quillen and Webster; footnote 5 of 103 Colum. L. Rev. 1035 includes: Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 3 (2001) (citing ninety-five percent ultimate approval rate for patent applications in U.S. PTO, if continuing applications are counted, as contrasted with sixty-eight and seventy-five percent allowance rates for European and Japanese Patent Offices respectively). Rai never corrected this mis-impression, although no reasonable person believes in the 95% number. One also recalls that Rai, in a law review article published in 2004 [19 Berkeley Tech. L.J. 907] asserted: For a number of reasons, examiners are unlikely to deny even questionable applications., with a footnote including: A partial list of recent publications pointing out the deficiencies of the examination process includes: Shubha Ghosh & Jay Kesan, What Do Patents Purchase: In Search of Optimal Ignorance in the Patent Office, 40 Hous. L. Rev. 1219 (2004); Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495 (2001); Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1 (2001); John R. Thomas, Collusion and Collective Action in the Patent System: A Proposal for Patent Bounties, 2001 U. Ill. L. Rev. 305. . The 2001 Quillen/Webster article has been pretty much demolished between 2004 and the time of Rai's op-ed, but Rai has been silent on the undermining of the assumptions she seems to entertain. Finally, in 2007, when even Mark Lemley had thrown in the towel on the 95% number of the 2001 Quillen/Webster paper, Rai was still at it in 95 Geo. L.J. 269: as numerous commentators have long observed, the ex parte proceedings upon which the PTO generally relies are unlikely to afford examiners the opportunity to deny even questionable patents. with footnote 38 including Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and the Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 13 (2002). Rai is a broken record who does not keep up with the patent literature. Rai is out-of-touch with the reality of patent grant rate numbers, and has been out of touch for over five years.]
Moreover, at least in the long term, the availability of this option might reduce the incentive to file dubious patent applications in the first instance (and hence might reduce the current backlog of over 700,000 patent applications). [IPBiz note: re-exams have been around for years. In fact, PubPat (Rai is on the Pubpat Board of Directors) filed three re-exams against the WARF stem cell patents, and was totally smoked. The prior art cited by PubPat was found not enabled, and the declarations conclusionary. What does Rai have to say about the dubious, non-enabled, and conclusionary re-examinations that PubPat filed?
Of Barack Obama, Rai wrote: Senator Obama's approach reflects a nuanced understanding of the concerns of the various stakeholders. It also reflects an ability to rise above narrow interest group politics and suggest creative solutions not contemplated by the interest groups most active in the latest round of the Congressional reform wars.
Rai contributed to Obama's campaign. [Cisco's Mallun Yen contributed to Hillary's.] What "creative solutions" Rai had in mind are not clear. "Gold plated" patents are a recycled Lemley-ism, and hardly creative. PubPat's amicus brief to the CAFC on Tafas was a batch of recycled Lemley-isms, mostly disproved now. Rather than a creative approach, Obama's approach to patent reform is law professor re-tread.
Some comments on Professor Rai from Patently-O:
I find Ms. Rai to be aggravating because she seems to make rather unfounded assumption that most people filing patents are doing it just for the entertainment value, and don't actually consider their patents to be worth anything. If you read Lemley's article (another career academic who's never been a patent prosecutor) you'll see exactly that. He assumes that inventors file patents just for kicks.
She's [Rai's] not a registered patent agent or attorney. Never worked in the private sector. Academic through-and-through. No wonder she's full of it.
See also-->
http://ipbiz.blogspot.com/2008/07/consumerwatchdog-and-pubpat-theyre-back.html
Also on Lemley-->
http://blogs.law.harvard.edu/palfrey/2008/07/12/entrepreneurship-the-patent-law-and-scale-of-firms/
posted by Lawrence B. Ebert at 3:16 PM
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