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« MPEG LA Announces Formation of Gene Patent Pool | Main | IP Business Congress »

April 22, 2010



David Boundy has already noted the "data deficiency" issue on a different blog and its violation of the Information Quality Act. I hope he elaborates on that view here.

Also, I share the patent bar's "wariness" in giving the PTO fee-setting authority. This isn't a reflection on the Kappos administration which has truly been a breath of fresh air, but because of too many "bad memories" from the Dudas regime. The cliche "absolute power corrupts absolutely" also applies to giving a governmental agency fee-setting authority. The Kappos administration is paying the price for the gross abuses of the prior regime.

To be fair, one should read the white paper to convince oneself as to its true value.

And, sorry I think the remark

"(The first author of the report, Arti Rai, is the Administrator of the PTO's Office of External Affairs and thus responsible for advocating for these proposals, but realistically she can only work with what her economists provide her.)"

is overly generous.

She was the same one that (if my memory is correct) was in favor of the now (thank goodness) defunct continuation rules package -- (CATEGORIZING LIMITING the number of claims to 5/25 else requiring an ESD (Exam. Supp. Doc.) and LIMITING continuing applications to 2 CONS and 1 RCE per application (unless Rest. Req. made -- then 2 CON and 1 RCE per DIV)) -- IN ANY WAY WOULD NOT have been MAKING SUBSTANTIVE LAW and NOT just implementing RULES (non-substantive law) SHOWS the lack of critical depth in whatever she does. Or at least is sure seems so.

If the white paper is worthless, why say it.

It just solidifies the impression of incompetence once again.

And, given the foregoing sort of missing the critical point history (calling something NOT substantive law when it clearly is just that), it is no surprise the white paper is pretty much useless.

It came from her office didn't it.

Blunt but true.

(Hat in hand) Dear Government, I have a way for you to raise taxes without appearing to be the bad guys. Just give me the power to set rates for what appears to be a good reason, without the power to actually ue the money raised from the increase in rates for the purpose stated for the increase. You get to keep whatever you want.

..that about capture it?

Anonymous--hear, hear. Plus, isn't it just silly (as well as intellectually dishonest) to ignore fee diversion because it might annoy Congress? I think the only way to fix the problems is to have an open and honest discussion based on real data--and this paper appears to be holding itself out as such, while the lead author publicly acknowledges that key points have been left out. I really hope the Obama administration figures out it can do better than this.

Dear Hey:

I think Dr. Rai's point was one of political reality - particularly when negotiating with Congress, sometimes you need to do it half a loaf at a time. That reality being recognized, it cannot be ignored that what is needed is the whole loaf - higher fees (perhaps) but only if those fees fund the Patent Office and not a highway project in Illinois (our home state). And I agree with Skeptical - patent office fees have been a voluntary tax for a generation. When raising taxes is the cardinal sin of government, then raising money without raising taxes becomes the highest virtue.

Beware the law of unintended consequences.

Thanks to you both for your comments.

Dear Anonymous:

I think Dr. Rai's biggest error (which probably came to her as a big surprise) was to assess the situation purely as a question of administrative law. Frankly, the Federal Circuit's decision substantially affirming the Office's position (and with a concurring opinion that laid out a roadmap for 'fixing" the only deficiencies the panel majority found in the proposed rules) seems to have vindicated her take on the rules package. That those of us in the patent bar recognized the change the rules would have visited on our clients is something that only a practitioner would recognize. While I think it is the responsibility of academics to at least truth-test their theories in the real world, I don't think in retrospect that Dr. Rai committed a mortal sin in providing the administrative law perspective (as much as it was resented/disagreed with/opposed).

And while you are correct that everyone should read the White Paper to draw their own conclusions, our post was intended to either whet our audience's appetites to do so, or conclude that it would be a waste of their time (depending on their prejudices and inclinations).

Thanks for the comment.

Dear EG:

I saw David's comment but I'm not sure it applies to publications that are informational - it seems like it might be counter-productive to require that type of disclosure for this type of Paper. But David knows much more about this than I do, so there may be nuances I am not appreciating.

Thanks for the comment.

"applies to publications that are informational"

Kevin, I hope that you are not insinuating that informational publications should be allowed to be misleading? Even horatory publications (of which publications themselves rightly fall under the Office's duties) need to be held to a proper standard. There is no place for bald assertions and maked twisting to arrive at a desired political and philosophical stand. Backing up what you say is especially important if you are the government entity responsible for laying down this country's IP policy goals.

The Office is only now beginning to recover from the taint of abusive management - allowing such directives as unfounded and purely dogma driven drivel to go unchallenged may encourage more attempts at lawmaking that were just defeated.

I applaud the scrutiny.

Regarding "Frankly, the Federal Circuit's decision substantially affirming the Office's position (and with a concurring opinion that laid out a roadmap for 'fixing" the only deficiencies the panel majority found in the proposed rules) seems to have vindicated her take on the rules package."

Is exactly the WRONG message to be taking home.

Let's not forget the true legal (and actual) result: The Office was wrong.

Arti Rai was wrong. Her take was NOT vindicated.

- "The other proposal for patent reform is post-grant review, needed according to the Paper to ensure only "high-quality" patents are granted (or at least maintained)."

Is this like trying to inspect quality in?

Rai also supported the prior rules changes which would have crippled the ability of small entities to benefit from the patent system. She is not a patent attorney nor does she have any relevant experience per her university bio.

Patent reform is a fraud on America. It is patently un-American.
Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.

Skeptical: no it isn't.

Just imagine for a minute how it works for an Applicant at the EPO, who knows that an opposition from a well-armed competitor, in the 9 month opposition period immediately following issue, is a very real and potent threat.

It works like this: a sophisticated Applicant self-polices its own "quality", taking care to go to EPO issue with a set of claims and a specification that is opposition-resistant. Is that "quality" or what?

Applicant does this self-policing because:

1. To win, an Opponent has only to get to a preponderance of evidence.

2. Getting a curative amendment admitted, post-issue, is no pic-nic.

3. Post-issue, nobody gives a shred of deference to the work of the EPO Examiners prior to issue.

So will you tell me, Skeptically, which patent, in its own jurisdiction, Europe or the USA, has the greater "quality" and presumption of validity. Then tell me what is the effect of a failed opposition on any presumption of validity. And then tell me whether you would advise your client to oppose. And then tell me how you would prosecute an application, at the EPO. What do you think now: is a well-functioning opposition process nothing more than inspecting quality in?

Dear Max:

A few points. First, don't assume the proposed post-grant review in the U.S. will be anything like an opposition before the EPO, just like examination in the USPTO is frequently very different from what happens in Europe.

Second, it makes good sense in Europe to have a unified procedure for "correcting" granted EP patents, for a number of reasons. It is better to have the procedure happen before the same Office that granted the patent in the first place, and before nationalization - you might as well "finally" determine the scope of the granted claims, if any, before incurring the expense of perfecting the patent in each country. Moreover, unlike in the U.S. failure to have such a procedure would require nullification in each European country; in the U.S. invalidity (if affirmed by the CAFC) is effective in every state.

Third, there is no unified European patent court like the CAFC, so it makes more sense for the EPO to determine the proper scope of claims in the first instance. While in theory the USPTO has that role, it has never had the "last word;" even before the CAFC, the CCPA reviewed any PTO decision where an applicant believed she had not received her due.

Finally, inserting "quality" into the US patent process has been the mantra of every prior reexamination scheme - ex parte in 1980, inter partes in 1999, and now the new PGR. We've heard this song before - there is little reason to think it will happen this time (even ignoring the law of unintended consequences).

So while we appreciate the European perspective, especially in these matters, there are several uniquely American realities that are likely to derail this and any other proposal. The answer, truly, is to get it right (or at least more right) the first time.

Thanks for the comment.


Well said - thank you.


The three prongs of your self-policing paradigm do not create a stable stool in the US.

1) The clear and convincing evidentiary standard is a benefit, not a weakness of the US system (I am aware of your debates at the Patently-O blog on this matter, and frankly, you are not winning those debates).

2) The US has post issue procedures for "curing". These are not meant to be difficult. Why would making "curing" difficult (for something that needs to be cured) be a benefit? I distinguish Kevin's correct drive of "get it right the first time" from this point.

3) The deference accorded to examiners and the examination process, while not absolute, is real and tied not only to the clear and convincing standard, but because we expect the government to actually do its job of examination. That is what they are paid to do.

From this vantage point, you do not have a (stool) leg to stand on.

3a) Perhaps you are aware of the now-receding-from-memory attempt here in the States to switch that burden to applicants? Part and parcel of the welcoming desire of the US patent system is that the patent game is expressly not limited to the "well-armed" and sophisticated applicant. Here in the States, we value and promote the little guy. You might add this to the list of reasons the US patent is the best in the world for your Patently-O debate.

Dear Noise:

I agree with the sentiments - the Office went through a very bad patch (of its own making) and we don't want to return.

But whether we like it or not, at least one CAFC panel substantially upheld the Office's authority to promulgate the rules package it did. All the court said they couldn't do is limit the number of continuations. Now I know that was a lot, but as I recall even without it applicants would have been severely disadvantaged by the rules - the only reason the continuation rules were in place, and retroactive, is that the backlog problem would have been exacerbated if they weren't - there would have been a huge bubble of continuations filed to fall within the old rules.

And the rub is that the court's decision hewed much more closely to Dr. Rai's interpretations of the Administrative Procedures Act than any of us would like. The Supreme Court has already stricken any illusions that the PTO is "special" with regard to the APA - Zurko v. Dickenson - and like it or not that is the way the Court is trending. To them, patent law isn't special, no matter how many idiosyncracies have developed over the years, and no matter how sensible they may be. It is ridiculous that the Court doesn't recognize that a patentee needs the threat of a permanent injunction to forestall infringers from taking a business risk that they will, at worst, have to pay a compulsory license if they lose at trial. But there we have it - the Court is more interested in spanking the CAFC and making all standards uniform than to understand patent law (their thinking in this regard remains strictly in the 19th Century).

Thanks for the comment.

"But whether we like it or not, at least one CAFC panel substantially upheld the Office's authority to promulgate the rules package it did. "


That is why the vacatur issue was so important. You need to recall that the panel decision you refer to has zero legal value.

Let me repeat that: That panel decision has ZERO legal value.

You do a grave misservice by alluding to it as having any value whatsoever.

As to the P-ssing match - I agree completely, and have commented so on a number of occasions. The disconnect literally ruins the entire Congressional intention of one judiciary body to govern patent law. If the Supremes want to step up to the plate and claim their (rightful) supreme place, they need to handle much much more cases than they currently do. The CAFC is so shell-shocked, that they are effectively neutered.

Dear Noise:

Sorry I have been unclear. You are correct that the vacated decision has no precedential value. But it is informative - the panel agreed with those like Dr. Rai who said the Office had the authority to promulgate 3 of the 4 rules in dispute. That was my only point. While it is possible that another panel or another rules package would come out differently, those (including me) who said Dr. Rai was wrong didn't come out on top before the panel.

And of course, if memory serves the District Court only ruled on one of several grounds supporting Dr. Tafas and GSK in their challenge. So the issue is certainly not decided.

Thanks for helping me clarify my point, and for the comment.

"didn't come out on top before the nonexistant panel."

Fixed it for you. The Panel decision was wiped out. It doesn't exist - even as an informative matter.

Dear Noise:

While the opinion is devoid of any legal significance by the vacatur, it doesn't cease to exist - the words don't magically disappear off the page. It will be cited in Lexis or Westlaw as "vacated on DATE" and have some indication in Shepard's that is doesn't represent "good law."

But it does tell us how these three judges thought about the question, which they may continue to think the next time they address the issue, and probably how they would have thought about the issue if the court had heard the case en banc.

Thanks for the conversation.

Well, I'm glad I have stimulated a civilised discussion. Some points:

Kevin, agreed that an opposition at the EPO is different from one at the USPTO because one at the EPO wipes out the patent in up to 41 sovereign States. Miss that window and you have to go after the patent separately in each one. But your concept of EPO opposition "before" anything happens is a bit off. The patent owner has a maximum of 3 months from issue to validate the patent in those 41 EPC countries (translation costs) but the Opponent need not file till 6 months after that. Nasty shock, when opponent has got a promising line of attack.

Skeptical: your point 3). Europe also expects Examiners to do their job and the EPO ones do it pretty well. But inter Partes is inherently different, and subjects claims to attacks which no PTO Examiner, however talented and diligent, can develop. Or are you going to equip the PTO with laboratory resources as comprehensive as those of the Opponent and a huge posse of individuals that can provide a PHOSITA in every art under the sun?

Surely we can all agree that validity/patentability is tested properly only in inter Partes disputed proceedings. The issue, as I hope everybody agrees, is to devise a fit-for-purpose system that "does" inter Partes validity judiciously, economically and with expedition. Or are you saying you have that already?


I'm pretty sure we are at or near the point of semantics.

It is a trusim that what was written expressed how the three judges thought about the question at the time. However, given that the losing party did not see the matter through, those very same judges can change their minds (in fact much more easily given that no stare decisis attaches). Any "what if" or "would have thought" in a projected en banc scenario is quite meaningless.

As far as "disappear" and "devoid of any legal significance" and "does not represent good law", to the extent that the opinion can be cited, it will be cited in the negative (it was after all, the loser). The power of vacatur explicitly seals the loss.

The credibility that you seem to wish to ascribe to it (and to Miss Rai) is baffling. You mentioned mere "resented/disagreed with/opposed", and while all of these are true, these words do not capture the better descriptors of "defeated/wrong/vacated/bad law".

"their thinking in this regard remains strictly in the 19th Century."

Never were truer words said about SCOTUS when it comes to patent law and patent practice. Unfortunately for us in the patent world, we're now in the 21st Century with biotech and computerized technologies, but burdened with a SCOTUS that reflects a "buggy whip" mind-set that is having an adverse impact on American innovation and American global competitiveness, especially for innovative small American businesses. SCOTUS needs a "reality check" and an update in their thinking, or they need to change this "intermeddling" attitude in an area of law they don't understand, and frankly are too arrogant to admit they don't understand.

At this point, I've got no confidence that SCOTUS can rule properly or effectively in the area of patent law, so I wish they would simply cease and desist taking so many patent cases from the Federal Circuit. SCOTUS is simply leaving chaos in its wake every time they rule in our area of the law.


I am even more Skeptical than normal on your authoritative comments concerning anything US related.

To wit: "subjects claims to attacks which no PTO Examiner, however talented and diligent, can develop" - implies some standard that is not available to the examiner in the initial examination. Pray tell what is this item? A patent is judged by law - that law is fully available to the examiner.

Your "provide a PHOSITA in every art" is unintelligible. Every art HAS a PHOSITA which is used in examination. Are you saying that there are arts without PHOSITA? Or are you saying that there is more than one PHOSITA per art?

Your "Surely we can all agree that validity/patentability is tested properly only in inter Partes disputed proceedings" assumes a false position. The converse should be held: We all should agree that calidity/patentability is tested properly prior to patent grant. The proper test, under law, is during examination. This runs to the crux of Kevin's point: Do it Right the First Time.

Skeptical, all I'm saying is that to every story (even on obviousness or enablement)there are two sides and that, pre-issue, a PTO examiner hears only one side of the story whereas, in inter Partes proceedings, the finder of fact for the first time gets to hear both sides of the argument.

Apart from that, I'm mystified by your attaching the description "authoritative" to my comments. Why do you do that?


Al I'm saying is that both sides are looked at prior to grant. Your dependence on a THIRD SIDE simply is misplaced. The "authoritative" comment stems from your "surely we can all agree" global-type assumptions.

It's not that I mind your comments per se, but you tend to comment on US law incorrectly.

"those very same judges can change their minds "

If they were rtards they might. Since those particular judges don't strike me as such I find a suggestion that this might happen implausible.

Noise's inability to think this part through/consider the ramifications thereof is what causes normal people lose her sight of her point when considering her line of reasoning.


Out of respect for Kevin, I will not engage you on this site, suffice to say, that your reading skills maintain their phenominal level. Did you even make it to "Any 'what if' or 'would have thought' in a projected en banc scenario is quite meaningless." ?

Dear Noise:

Thanks for respecting the tone we try to maintain on the site.

And you are right - we are at semantics, and I understand your point better now. Thanks for taking the time to walk through it.

Dear Max:

Thanks for clarifying the timing issues - but in any event it is cheaper to oppose than nullify.

I think the US experience with inter partes re-examination belies your prediction (which is logical and consistent with the European experience).

But it hasn't been the experience in the US, even when 1) the re-exam can take place at any time during the patent term and 2) the challenger is at least as motivated as anyone pursuing an opposition.

Despite pressure to get the bill to the Senate floor, it hasn't happened yet, and PTO officials acknowledge that if it doesn't get done in the next month or so it won't get done this session. Looks like there will be plenty of time to discuss this.

Thanks for the comment.

"If they were rtards"


Also out of respect for Kevin, please don't use this sort of offensive phrasing. You can be crtical of what judges say or write (I have in a number of instances) without using offensive ad hominems like the one you used.

Skep, I'm still not following you. If I understand it right, the mission of the USPTO is to grant patents, just like it is the job of the EPO to issue patents. Examiners are there to help Applicant to issue, just as soon as Applicant meets the statutory requirements.

How to meet those requirements? Well, file statements of fact, and supporting arguments.

In your country, is it ever the case that facts and arguments are open to question? Who does the questioning? An adverse party. I just don't see a PTO Examiner as an adverse party and I just don't see statements of fact as being safe to rely on till they have been tested in adversarial proceedings.

Which ex Parte progress to issue is most decidedly not (however much it might sometimes feel like that).


There are several fundamental differences at work here. I will point out one.

In regards to "How to meet those requirements? Well, file statements of fact, and supporting arguments.", it appears that you think it the job of the applicant to prove that he deserves a patent.

This is categorically wrong.

The applicant deserves a patent but for the examiner showing otherwise. If an examiner cannot show so, the patent should issue (the other technical issues of law such as 101 and 112 being met). Those other technical issues generally do not need "statements of fact" and "supporting arguments" to be met, so I feel comfortable making the assumption that such is not part of what you are considering requiring and applicant's facts/arguments.

Further, whether you see the PTO examiner as an adverse party or not is irrelevant. Your desire to inject a third party simpy is not a part of the US patent process.

You continue to misconstrue US patent law through your EP filter. I have seen enough of your posts at Patently-O to consider that this is not done by accident. Any of your "I'm not following you" is also suspected to be "not by accident".

Well Skep, with your statement...

"The applicant deserves a patent but for the examiner showing otherwise. If an examiner cannot show so, the patent should issue (the other technical issues of law such as 101 and 112 being met)."

...you make my case, that invalid claims are inevitably going to issue. Sorry to go on and on about it, but I think it self-evident, that there needs to be an effective (proportionate, cost-efficient and quick) mechanism to weed out issued claims that are troublesome, even vexatious, but invalid. I'm surprised that my uttering that thought is so inflammatory.

Appreciated. Many thanks.

"you make my case, that invalid claims are inevitably going to issue"

Sorry MaxDrei, you make my case: you do not understand US Patent Law. You overestimate the issue of invalid claims going to issue and ignore the fact that system are already in place. You buy into the hype, without understanding either the system being hyped or the system the changes are wanting to be plied into.

Further, it is not so much that "what you say" is inflammatory, it is that you persist in saying things without understanding our law. And it's the same topics over and over again. Such does not advance the discussion and rather muddies the water. As I said, I am more Skeptical than normal that such mistakes are anything but purposeful.

Please review again my comment above at 10:11 AM (yesterday) and my comment at 10:42 AM on the sister thread (today).

The law does not change pre-issue to post-issue, so your (once again assumed) post grant "magic" is superfluous to where the work needs to be done - during examination.

The long and the short of it is, getting it right the first time is what needs to be done. "Not" pushing for quality in this dimension is not only inappropriate, it distracts the focus on addressing the real problem.


I will post, with your help, what may be a compromise. Take the mechanism that you treasure and extract from it what makes it work so well. Now take that and let's see if we can work that into a model of the US system in which the new piece is done PRE-grant, rather than post grant.

What difficulties do you see with such a mutation?


I would further direct you to 37 CFR 1.99 Third-party submission in published application.

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