About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Inovia Releases Report on Global Patent Trends | Main | Additional Opportunities for Pre- and Post-grant Review, and Brand New Patent Trial and Appeal Board in S. 23 »

March 16, 2011


Pardon a dumb question, but how will introducing a new and complex procedure help the PTO's mission to reduce overall patent pendency?

This bill is an abomination.

If it takes the learned doctor over three thousand words to explain just one portion, there is no justification that plays to "simplify" or "reduce."

Congress - please start over.

Dear Patrick:

I think we need to remember the history of the bill over the past 6-7 years. The impetus for reforming patent law in the first place was the complaints by some (mostly the "hi tech" industry and their academic supporters) that U.S. patent quality was "bad" and that these "bad" patents were being used to harass companies like Cisco and Microsoft. (Remember that the IP Troll Tracker was a Cisco employee.)

Thus the two-pronged approach: make it harder to get/easier to challenge patents and reduce the amount of damages that would be available to successful patentees. The latter provisions are stripped from the current bill, primarily because the Federal Circuit has become less per se and more analytical regarding damages.

This leaves the "bad patents" argument, and these post-grant review provisions are intended to provide an avenue to address them. The potential for big companies to harass small companies with these petitions is evident, which is why the estoppel provisions needs to be strengthened to make sure challengers have sufficient skin in the game to minimize those opportunities for harassment.

You are correct, of course, that these provisions will not help address the backlog, but the answer to that criticism is that different PTO personnel will be handling both inter partes reexamination and post-grant review on the one hand and ex parte examination on the other - the new PTAB and the examining corps., respectively. So although appeals may slow down as the new procedures are adopted, there should be little effect on ex parte examination (or at least that is the thought). We'll see.

Thanks for the comment.

"new post-grant review proceeding"

Currently the PTO allows 95% of reexam requests. To add additional ways for large multinationals (make no mistake that's who wrote this provision) to contest issued patents of inventors and other small entities is an abuse of process. First, we have to fight the PTO to issue our patents, then we have to fight a never ending stream of administrative actions. It's more than abuse, it's a denial of due process. The PTO has become a rubber stamp for large infringers. They cannot be trusted.

Small entities have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet small entities create the lion's share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” Congress is rushing headlong into disaster. This bill will be a wholesale slaughter of US jobs.

“Patent reform”

Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America.

Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.

Kevin - apologies as I forgot to come back and look for a reply to my comment ...

"the answer to that criticism is that different PTO personnel will be handling both inter partes reexamination and post-grant review on the one hand and ex parte examination on the other"

True enough, but the PTO is not an organization of limited resources. Funding that gets devoted to personnel for new procedures is funding that cannot be spent on adding to the base examining corps.

I'm skeptical, but then, most people already know that ;)

I don't know whether it is possible to abolish software patent or not. The Supreme Court tried and was offset by a lower court. Then, the previous lower court was invalid, but software patents are not yet eliminated. The American judicial system is incredible.

The comments to this entry are closed.

April 2024

Sun Mon Tue Wed Thu Fri Sat
  1 2 3 4 5 6
7 8 9 10 11 12 13
14 15 16 17 18 19 20
21 22 23 24 25 26 27
28 29 30