Saturday, January 05, 2008

Yongshun Cheng blasts proposed reforms to US patent law

PatentHawk has text on patent reform from former Chinese Senior Judge Yongshun Cheng which includes:

Post-grant review -

If there is no presumption of validity in the post-grant review procedure, the patentee will need to prove the validity of the patent, which will increase the burden of proof for the patentee...Because the burden of proof of the petitioner is less than that in courts, this provision is very easy to be utilized by the competitors, which will surely increase the time and cost for the patentees greatly if they have to raise litigation after this procedure as well as increase the uncertainty, and delay the exploitation of the patent.

IPBiz has discussed problems with post-grant review, including within the following posts:

Mike at TechDirt has it wrong on post-grant opposition

A challenge to Mark Chandler, general counsel of Cisco Systems

Mr. Chandler, unlike Mike, did not respond to my comments on his piece, or to those of anyone else for that matter. Mark Chandler can't defend his position.

Of Mike's comments:

"the review mechanism is the same for the first and second window of post-grant review" [<--IPBiz Mike-->]

You leave out the fact that the second window of review is only going to come up when there's a controversy over the patent -- meaning a much higher likelihood of folks being present who can present prior art or evidence of obviousness. That doesn't happen during the first round.

The reason for having that second round is simply because it later becomes clear that someone is abusing a questionable patent -- and it should be reasonable to then present evidence that the patent should never had been granted. It's unlikely that anyone will present that evidence when no one knows about the patent or how it will be used.

IPBiz notes on 5 Jan 08:

#1. Mike did NOT deny that the review mechanism is the same for the first and second window.
#2. "Controversy over the patent" is not the standard that is currently within S.1145 and which previously was in H.R. 1908.
#3. Mike omitted the fact that one "can present prior art" DURING patent prosecution under Rule 99. Most patent applications are PUBLISHED BEFORE THEY ISSUE, so that knowing about the patent (application) is easy enough for people with the ability to read. The whole point to the patent system is that people are SUPPOSED TO READ patents, so people don't waste time re-inventing the wheel. If there is a patent wherein the patentee "re-invented the wheel," then one can use Rule 99. Mike's world is the brutish world of Hobbes, or, as they say at the Harvard Business Review: Plagiarize with Pride!

Mike also wrote:

"In fact, re-examinations are rather easy to request." [<--IPBiz Mike-->]

Nice spin, but I'm afraid you're wrong again. "Request" and actually go through are two totally different things. I didn't say that the arcane nature was in requesting, but the full process of review.

IPBiz notes: The ability of PubPat to initiate re-exams, including those on the Thomson / WARF patents, is proof that re-exams are easy to request. Further, in an ex parte re-exam, after the USPTO has granted the request, there is basically no further action required by the requestor. There is nothing "arcane" about the full process of the review, and nothing for the requestor to worry about.

IPBiz also notes that Mike at Techdirt never denies that the opposition procedure is not a quality approach to the problem. When one talks on and on about patent quality, this is rather an ironic position for Mike to take:

To return to the point I initially made on August 29, if bad examination of patent applications is the problem, the remedy is to fix the examination. Adding an inspection step (eg, post-grant opposition) is NOT a quality approach, as Deming would tell you if he were still alive. [<--IPBiz. Mike-->]

Again, I have no problem with improving the process on the first go-round as it would solve a lot of the problems if it were done right.

But in lieu of that, a post-grant review process clearly makes sense. Just look at how many bad patent lawsuit situations could have been cleared up much faster at less expense to both taxpayers and the overall economy.


Blogger Cleanville Tziabatz said...

Respectful disagree re Deming on several gnds:

1. It seems kind of insulting that you directly analogize a putative inventor's patent application to a standardized, interchangeable car part. I much doubt that Deming himself would have thought his methods directly applicable to "inspection" of patent applications.

2. Deming did not generally favor 100% inspection and preferred more limited methods of statistical inspection. Because of this, I doubt that Deming would have like ex partes exam, even if patent applications could be analogized to car parts.

3. Deming really hated numerial quotas. Like those used to manage examiners who do ex parte examinations at the Patent Office.

9:53 AM  

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