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« New Rules, New Threats: More on the Office of Enrollment and Discipline | Main | Draft Report on Senate Patent Reform Bill: Late Patent Filings »

January 14, 2008

Comments

I've not read the draft report, but here are my comments which only address those provisions which relate primarily to the patent examination process:

2. change the system to a "first-inventor-to-file" system. Not a big deal to me.

3. make it simpler for patent applicants to file and prosecute their applications. Sounds nice in theory, but how will this work out in practice? The existing examination process would be fine without such legislation if PTO management had done their job; that's the problem, so this provision may do nothing unless we have enlightened PTO management in the future.

5. create a relatively efficient and inexpensive administrative system for resolution of patent validity issues before the USPTO. This sounds like the post-grant opposition procedure. I would be OK (but not enthusiastically so) to have post-grant oppositions limited like in Europe (9 to 12 months after grant date only) which procedures that keep the cost of these within reasonable bounds; I'm completely against unlimited periods for post-grant oppositions as being not only excessive, but shifting the balance completely in favor of the opposer to run into the ground patentees, especially those who don't have the war chest to fight them off.

6. establish the Patent Trial and Appeal Board. Don't know what this means, or why this Board is necessary.

7. provide for eventual publication of all applications and enhance the utility of third parties' submissions of relevant information regarding filed applications. I've slightly against this provision (but not adamantly so). Letting someone have the option to retain what's described as a trade secret if no patent is granted and no foreign rights are sought is fine with me, but not a "deal breaker."

9. give the USPTO the ability to set its fees. I'm not in favor of this at all. Given the current PTO managements track record on rule making, I'm not in favor of anything that gives the PTO unfettered rule making, including fee setting.

11. authorize USPTO to require patent searches with explanations when a patent application is filed. I'm thoroughly opposed to this provision which is ill-advised and misguided. You might as well not have examination if the applicants have to do this, as it creates admissions that will undermine patent validity and claim scope and will create yet additional inequitable conduct obligations. I view this as a "deal breaker" and if it remains, I would rather there be no legislation at all.

12. codify and improve the doctrine of inequitable conduct. Would be an improvement over the current status of the inequitable conduct (IE) doctrine which even the Federal Circuit agrees is a "plague" but which they do little to remove it as a "plague". I would happy if IE were removed as a basis for invalidity/unenforceability of patents, but if IE is retained I would suggest the following: (1) make the "intent to deceive" standard much higher to either a deliberate intent to deceive or at least "reckless disregard" (not "gross negligence"); (2) make the "materiality" standard "but for"; and (3) if IE is alleged but isn't proven, have the party that alleges it pay the patentee their attorneys fees for defending against it (only fair since if IE is proven, the patentee may have to pay the other sides attorneys fees). Having provisions (1) through (3) would do much to decrease unsupported and frivolous IE allegations and especially make litigators and their clients think very carefully before making what is, in my view, a very serious charge that shouldn't be made without the facts to clearly support it.

13. give the Director of the USPTO discretion to accept late filings in certain instances. Sounds like a good idea, if within reasonable bounds.

15. end USPTO "fee diversion". Amen to this, it should have happened years ago and frankly fee diversion shouldn't have been done in the first place. Fee diversion is a principle reason why the PTO examination process is such a mess now by depriving the PTO of funds needed run the operation, and especially to provide qualified examiners with more competitive salaries, etc.


EG:

Thank you for your comments. We will be discussing a number of the other provisions of the Senate bill on the blog over the next few days.

Don

I wish they would get away from that "Micro-entity" (and income) language in new Section 123 - have the exception be for "small entities" if Congress is intent on turning over the search to the applicant. [But the micro-entity language is probably in there because MS and RIM et al. disdain and are afraid of the future small-entities that might attain "critical mass" in terms of innovation (and/or commercialization) to completely change a technology, while micro entities will by definition (5 people or less) likely *never* be able to reach critical mass for innovation and commercialization. Way to promote progress by burdening the small entities and start-ups from whom most industrial change comes! Oops, we just mean to protect MS and RIM, that's right.]

Better to do away with 123 entirely, because as it stands now, the patent-ignorant USPTO management would clearly want to use the applicant search to cut the Examiners' hours per BD, making the Examiners even less experts in the art (eventually, they'll just be highly-paid and glorified clerks in management's plan).

If we need a Section 123, the language protecting examination in the passed House version (which POPA lobbied for) should also be added: "Any search report required by the Director may not substitute in any way for a search by an examiner of the prior art during examination." Otherwise we'll be at a de facto registration system with none of the possible benefits thereof (and all of the expense of an examination system).

Don:

Glad to put my 2 cents in for what it's worth.

NIPRA: We're in "lock step" on why 123 is extremely bad and should be a "deal breaker" for this legislation.

EG:

Senator Leahy indicated in December that he would "seek and hear the views of any and all parties," so it's possible that some of the provisions discussed in the draft report will change before the bill goes to the Senate floor for a vote.

Don

Don,

I sure hope you're right. The currently passed House bill is absolutely awful, and the draft of saw earlier of the Senate bill is equally nauseating.

EG:

Maybe it's just me, but I think the House bill is far worse. For example, as I mentioned in yesterday's post, the House bill essentially approves of the PTO's efforts to pass the continuation and claims rules (unless anyone seriously thinks that Congress would have overturned the new rules within the bill's 60-day review period).

Don

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