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May 21, 2008


The problem with Hal's suggestion is that it locks out smaller inventors who cannot pay large maintainance fees - this ensures that patents will remain the "sport of kings." This may allow BigPharm to come to a compromise with BigTech, but I am not sure that this supports "innovation."

I have many clients who file in the USPTO and not in the EPO because they cannot afford EPO maintaince fees (especially at $1.6 to the Euro). As someone "in the field" (in physics/electronics/medical devices/software), as someone who has drafted patent appliactions BOTH for CPF giants as well as small inventors/startups, I can say that the "true innovation" comes from the latter (they are often a pain to serve, but that's another discussion).

We tend to forget that SMALL BUSINESS is what drives the US economy - we do NOT want the entire US economy to become like Detroit's Big 3 (what's good for GM, ehr Microsoft, is good for America). We do NOT want a patent system that is only good for the "boys club" of the CPF giants and 10 pharma companies.

Also, Wintel/IBM will NEVER accept Hal's suggestion of high maintaince fees as a substitute for the "damages provision/license to steal", because they want to gut the value of patents that were already issued. They want the damages provision, because their goal is raw, cold power and NOT patent quality (and CERTAINLY not the 'streamlining' you read about in the press - Judge Michel has indicated that the 'damages provision' will make patent litigation MORE burdensome). CPF want to devalue patents PERIOD (or at least patents that are not back by billions of $$$). If their goal was the patent quality you read about in the press, they would do better searching for their own patents, and Greg Ahronian would not be able to invalidate one of their patents in 10 minutes.

As for delayed examination, my hunch is that Wintel/IBM would be AGAINST this proposal because it would allow poorly-funded innovative players to get their filing date without spending money up-front on prosecution - we wouldn't want that, now, would we ????

As for the "Continuation" proposal, what about cases where I have 40 claims pending, and the Examiner wants to allow 15 of the claims and is rejecting the other 25 claims (maybe even with a bad rejection). Why shouldn't I be able to take what the Examiner is offering, and then re-file a continuation with the 25 'argued' claims??

I have a better title for a book: "Patent Failure: How Academics, Journalists and BigCorp Put Innovators at Risk."

Hear, hear--Kevin, please consider writing the book suggested by anonymousAgent. Or, if any public policy students are paying attention, I think this would make a great thesis topic--even just the impact of the Lemley/Moore article on "bad patents" on the Rules debate and the viral citation phenomenon would be interesting.

Dear Anon:

I agree that Professor Wegner's proposals deserve serious discussion along the lines of the issues in your comment, particularly with regard to small startups. Anyone who remembers the history of the past 30 years will recognize that America's big players (US Steel, the Detroit auto firms, and a host of electronics firms) went into serious decline by the end of the 1970's. It was the high tech players (computers and biotech) that provided the innovation and reversed the trend in the 1980's of America being outcompeted. Bayh-Dole, the CAFC and a greater recognition of the power of patents contributed, and all promoted patent protection for startup companies. Many of the proposals for "solving" America's patent problems by emulating Europe ignore the historical differences in philosophies between our patent system and theirs, which would act to the detriment of small inventors in the US.

Thanks for the comment. We will be getting to some of these topics over the next several weeks.

One the one hand Professor Wegner wants the public to have an early idea of the scope of patent coverage which will issue by proposing limitations on the filing of continuations; On the other hand he wants to postpone the date on which the public knows the scope by proposing delayed examination. Seems to be a contradiction here or am I missing something, Kevin?

Dear Missing:

No, you are not missing anything. I suspect that the continuation proposal is as you surmise, a way to prevent "submarine" patenting. The delayed examination seems to ebe tied to the intervening rights idea (which could provide a large disincentive to delaying examination).

Thanks for the comment (more to come).

Thank you, Kevin. I am opposed to delayed examination. Delayed examination delays the issuance of Office Actions for many years and thereby prevents competitors from obtaining a good idea of the scope of patent protection which may or will issue for many years. The application is a ticking time bomb which may go off soon or never and with an unknown blast strength.

I'll be honest missing I would say you're right about delayed prosecution except that if it were only, 4 years perhaps then it should be fine. And as long as the application publishes then the public is on notice of what is in the patent. It can be up to the public to determine what they feel is going to get issued, and they could perhaps be allowed to "attach" prior art they would like to bring to the office's attention to assure themselves that the protection that would be validly issued would be of a certain scope. It's a win/win. 7 years is quite awhile, but still the same principle applies.

Also though, everyone needs to take issue with refunding 80% of fees. Why? Because that will simply prompt a flood of crp applications that never get examined and are just junking up the classification (which I presume they will still be classfied so they can publish) with pure sht. Now, if we were to get our classification system back up and running at full speed this might not be such a big problem, but until then it's a doosey.

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