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« The Plot Thickens around H.R. 6621 -- Updated | Main | USPTO News Briefs »

December 20, 2012

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Lord, what fools these mortals be!

Apparently, inventors are like dawgs.

That is why they keep being "unleashed" by these deep thinking politicians.

Go Spot Go
Get invention
Get invention
You are unleashed
Now do yer' thing

It is stated: "The time for the fight for confidentiality has passed"

I would disagree. I back the sentiments of confidentiality and would decry the move to publication. The 18-month publication is in effect basically because the thought was that the information would have to have been published anyway in the corresponding foreign applications, so why not make it easy to access in the States?

I would begrudgingly allow for that logic. But only begrudgingly, as the next step on that slippery slope is evident in the write-up of this article: full, real time, unlimited access. In essence, what is really being said is "Too late! we are already sliding down the slope!"

This amounts to a breakdown of the classically understood Quid Pro Quo. A whole host of unintended consequences have followed.

With publication prior to grant, the government (and the public) have everything (and everything that will ever possibly come from) the application as filed. The extremely thin Quid provided is under attack from the get go (see current views of the 'evils' of DOE for example), and amendments to initial claims - something that should not be discouraged - are discouraged. Further, the Office has no reason to be in a hurry to examine that which is already taken as Quo. An important stick has been removed from the ability to create an impetus for the Office to examine expeditiously. The move to publish does in fact have a strong correlation to the increase in backlog (each component - unexamined, RCE and appeal queues), the previous trend to put NO into inNOvation, and a push to weaken patent rights under the hooded guise of globalism (which people should keep in mind naturally favors more the large and established titans of industry).

Was this legislation (or any recent legislation) passed with the mindset of ACTUALLY strengthening patents and their ability to radically change the business landscape for small innovative start-ups?

I am...

I have such a low opinion of Congress that I am somewhat impressed by the fact that even one Congressman knows about the Constitutional mandate to "promote the progress of science and the useful arts."

Yes, my opinion of all of them is that low.

Kevin,

Given that Congress passed the AIA (Abominable Inane Act) in the first place, it's no surpise that have no clue what's in H.R. 6621 or what it means. I also share WMw's view of Congress and would apply it to the current Obama administration as well.

Kevin,
I fully agree with your assessment of the total disconnect from reality that Rep. Smith exhibited in his statements on the AIA and Pre-GATT applicants. The whole matter of blaming “submariners” as the reason for Section 1(m) of the bill is a red herring. The USPTO is fully equipped with the legal tools to simply get rid of applications subject to delay through applicants’ dilatory gamesmanship [In re Bogese, 303 F.3d 1362, 1368-69 (Fed. Cir. 2002)]. Attempts to lift the secrecy status of any pending secret application is extremely troubling. In this instance, it indicates the real purpose of the bill’s sponsors – to fix blame and prejudice on applicants whose applications have been in USPTO purgatory for years. However, the serious implications of lifting secrecy are far reaching – well beyond the Pre-GATT applications.

It is for this reason that I take issue with your assertions that the “time for the fight for confidentiality has passed, and while it remains for the ‘pre-GATT’ cases (as well as any pre-AIPA cases that may exist), not only the application but the complete prosecution file history is public in real time, as the result of a decision by the Director when implementing the AIPA” and that “Rep. Rohrabacher is behind the times.”

Neither is a correct assertion. To this date (thanks to Rohrabacher’s insistence during the 1999 fight to protect applicants’ confidential information), design patents are not published before issue [35 U.S.C. § 122(b)(2)(A)(iv)], and most importantly, we can elect to keep our utility patent applications secret under § 122(b)(2)(B).

Based on latest available UPTO statistics, owners of about 15% of U.S.-originated applications (8% of all applications at USPTO) elect to prosecute their applications in secret under § 122(b)(2)(B). Rep. Rohrabacher is not behind the times – he is behind startups, small business and individual inventors who rely on secrecy in periods during which they can least afford publicity or lack the resources for accelerating their developments while fending off established market incumbents. Please do not dismiss the rights of inventors to maintain the fundamental patent bargain – disclosure in exchange for exclusive rights.

- Ron Katznelson

Hi Kevin-

Excellent analysis of what has and also might transpire. To quote Indiana Jones in the Raiders of the Lost Arc- "I'm starting to get a bad feeling about this." It seems to me as if the courts might be over-stepping their bounds a bit in this matter. But how can you fix the courts? You can change Senators or Representatives, but you can't really change the judges much at all.

Happy Holidays,
Stan~

Dear Ron:

I did not intend to disparage Rep. Rohrabacher's sentiments. But it is a fact that (using your statistics) 92% of all applications and 85% of all US-applicant applications are published, and that publication is the default. I am a firm believer in the quid pro quo - I just think that 14 years after passage of the AIPA the confidentiality horse has left the barn.

Thanks for the comment. Happy holidays.

Dr. Noonan,

Respectfully, you are mistaking taking the horse out of the barn (with intent) for a trot around the track with burning down the barn.

As both Ron and I indicate, the OPTION of proceeding in anonymity is very much alive and important. That only 15% use that option must be weighed against the types that do not - international filers who are likely to face publishing anyway and large multi-national filers who face the same constraint.

But as Ron indicates, neither of these two types represent a critical user of the patent system, and to simply pass on the non-publication route (perhaps based on your clientele) quite misses the point.

I GET that some play by international rules and I GET that some would like those international rules to apply here in the States. I GET that such would even the playing field for THOSE users of the patent system. But make no mistake, the essence of the Quid Pro Quo is violated with the forced publication, and to proceed down the slippery slope of instant publication (without recourse or alternative) is a HUGE mistake.

Some people still use that barn to protect their horses.

If a "big" company wants to "steal" an invention that is already disclosed in a patent application, how does keeping the name of the applicant or inventor secret make that more difficult?

The requirement for identification seems to me to be a simple one: patent applicants are making a request to the government to obtain potentially market-disrupting rights. Why shouldn't the public be presented with information about who is making these requests in as timely as manner as possible?

The hand-wringing over "theft" of inventions seems more likely a smoke-screen to distract observers who seek to take advantage of a strange quirk in the US patent system: the "secret" filing under 122(b)(2)(B). Does anyone doubt that the secrecy is used to disadvantage competitors at least as often it is used to "protect" applicants from the alleged "theft" of their inventions? It's interesting, too, that the most vocal proponents of "secrecy" are also the most reliable defenders of NPEs/aggregators, who are typically anything but "small."

Dear Fresh:

The question is whether the applicants have the right to depend on the government's bargain that existed when they applied for their patents, in return for (eventually) disclosing their inventions. We have gotten very used to the post-GATT and post-AIPA world but that isn't the regime under which these patent applications were filed. This is not a "quirk" - this was the law pre-GATT, and applicants should be (and are) protected from ex post facto changes in the law.

And it isn't just the name of the applicant or inventor that would be revealed; as originally proposed, the application would need to be allowed within one year of enactment or the application would have a term calculated as 20 years from the filing date (which would be effectively zero).

Finally, remember that the "quirk" comes with a significant disadvantage: no foreign filings and therefore no foreign rights. So "secrecy" to disadvantage competitors comes with a price.

Finally, disadvantaging competitors (for a limited time) is the point of the patent system. It makes sense that big companies would rather they be able to not be so "disadvantaged" but in most cases they can avoid it merely by taking a license. It is the arrogance that the "little guy" can be disadvantaged that needs the patent system to protect them, and it is that arrogance that makes so many patents available for aggregators to obtain - because the aggregators have the economic wherewithal to make the thieves pay. Not a bad outcome in my opinion.

Thanks for the comment.

"It makes sense that big companies would rather they be able to not be so "disadvantaged" but in most cases they can avoid it merely by taking a license."

How does "taking a license" to a previously secret patent claim that is issued out of the blow allow a company (of any size) who has been infringing (unknowingly) to "avoid" being "disadvantaged"?

"the aggregators have the economic wherewithal to make the thieves pay. Not a bad outcome in my opinion."

So a system in which a perfectly valid patent is worthless unless it's backed by millions of dollars and enforced by a shell corporation with an army of lawyers is "not a bad outcome"? Or is the system in which invalid patents are enforced by backing them with millions of dollars and a shell corporation with an army of lawyers "not a bad outcome"? I guess if you're a patent lawyer, it's a pretty great outcome. I'm not sure about the rest of the participants in our society. Maybe some of that "not a bad outcome" "trickles down" to them, huh?

"applicants should be ... protected from ex post facto changes in the law."

That's only true if the law was just in the first place.

Who owns these (roughly) 200 pre-GATT applications, by the way? And of those 200, am I to believe that the vast majority of delays are the result of USPTO malfeasance? That seems to be the implication. But where is the data/evidence for this?

Dear Fresh:

Second question first. If you read the thread and the posts, you would understand that applicants have virtually no means for unduly delaying prosecution of pre-GATT cases. This was intentional - the Office and Congress implemented the GATT treaty in such a way that these older cases would issue in due course and there would be few pre-GATT filings that were pending foe very long. Remember, once I need to file a divisional or continuation after June 7, 1995 my term is 20 years from my earliest priority date. Period.

So no matter who owns these applications, their pendency us due to perfectly legitimate (in most cases) delays in the system. Remember, until everyone got used to a 20-year term this was the norm. We are "shocked" at patents expiring more than 20 years after their filing dates because the 20 year term is what we have become accustomed to, not because there is anything particularly just or right in that term.

But there is no justification for imposing on applicants the consequences of systemic delays on patent prosecution. Don't mix up Lemelson prosecution laches with the pre-GATT cases - they are apples and oranges.

Dear Fresh:

First question: I think there are many injustices in the world. One of them is IP piracy and if we need the playing field to be leveled so that big companies take the license from small companies before these companies (or their patents) can be acquired by aggregators that is "not a bad outcome."

I confess that I am perplexed at why anyone would worry about what was fair to business behemoths. They can (and do) take care of themselves.

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