Monday, August 17, 2009

Gold-plating, again

To the 271 blog, concerning Revisiting the Presumption of Validity

Your link to the Lichtman/Lemley work takes one to an SSRN abstract. Note that this Lichtman/Lemley work appeared in the Stanford Law Review in 2007: Rethinking Patent Law's Presumption of Validity, 60 Stanford Law Review 45 (2007), right around the time then-candidate Obama started talking about gold-plated patents. Professor Lemley, with co-authors, had already proposed gold-plated patents two years earlier in “What to do about bad patents?” [28 Regulation 10 (December 22, 2005)]. As discussed in Special Feature: On Aspects of Barack Obama’s Technology Policy, published in Intellectual Property Today in November 2008, the plan is neither new nor particularly useful. A patent applicant is free to seek out and identify to the USPTO all relevant prior art, thereby making sure that the application is as strong as applicant can make it.

See also

If it were true that --How then can the validity of any patent claim be credibly settled by anything other than inter partes contested adversarial proceedings? --, then we are wasting our time with examination of patent applications, and Einstein was merely twiddling at the Swiss patent office. In reality, worrying about preponderance, etc. is applying analog thinking to what is mostly a digital world. As to "where" technology advances, is it the US, or the rest of the world? And, what did the Germans do with the invention of the Wright Brothers?

The text --where he expands on previous studies -- perhaps requires expansion. Footnote 16 of Devlin's text alludes to the 2007 SLR paper of Lichtman/Lemley (but not the 2005 paper) and highlights the distinction of his 2008 paper: . In particular, the author believes that a heightened presumption of validity would, in itself, be insufficient to spur optimal use of the "gold-plated" review process. This Article argues that those electing elevated review should also benefit from an immunity from obscure prior art never realistically within their purview. In addition, such inventors should be charged with conducting a full search of the prior art, absent a compelling excuse such as financial hardship. Of the former, with the internet there is increasingly little "obscure" prior art not within a scientist's purview [and how to define such; would the Indian Journal of Chemistry in "In re '639 Litigation" qualify?]. Of the latter, if the applicant has to pay for the USPTO's search, why is there not sufficient practical motivation simply to let applicants who want to fare well later to do a search and prepare a 1449 form? As an overall question, is there any evidence that the differences in legal presumption impact a significant fraction of litigation outcomes? (analog thinking of academic lawyers in a mostly digital litigation world). As a footnote to Devlin's concern about obscure references, contemplate the obscure (ie, nonexistent) 1947 NYT article relied upon in various law review articles. [see WHAT THE STORY OF THE INVENTION OF THE TRANSISTOR TEACHES US

****Note also MaxDrei posted a comment about the advanced state of technology of German cars. One wonders "where" and "by whom" most cars are going to be sold in the next ten years. In China by Chinese?

**August 20 at 10am

As to exports, Germany is slightly ahead of China. Are people buying all those Chinese products because they are innovative? An argument that export level implies "innovative" is problematic.

Going back to the theme of the initial post [Of all the proposed reforms in patent law, one of the most controversial reform measures involves the level of deference courts should give to PTO decisions ], I re-state my query: is there any evidence that a significant number of litigation outcomes hinge on "level of deference" to the USPTO?

As to Devlin's paper, Devlin distinguished himself from Lemley et al (whose proposals went back to 2005) on the business of obscure references. Is there any evidence that a significant number of prosecution outcomes hinge on the presence of an obscure reference?

The main sticking point on patent reform since 2005 has been about the way damages are calculated. The talk about "patent quality" was mainly a pretext, and the Quillen/Webster assertions about patent grant rate (eg, 97%) were based on both legal and numerical misunderstandings.


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