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« Court Report | Main | Top Stories of 2012: #12 to #15 »

December 30, 2012


Consulting with the PTO about the cause of the delays in the examination of pre-GATT applications is similar to asking the fox to guard the henhouse, since it's probably the PTO that's responsible for the delay in most cases. A better approach is to adopt suggestion of Hal Wegner and others to facilitate publication of those applications, with an option for applicants to redact before publication. With the file wrappers open, we'll all be able to see just who is at fault for the delays.

If this is a "fault-finding" expedition, Congress can simply request access to the information, determine who is at fault and make any necessary moves - there is absolutely no reason for the PUBLIC to be involved in the abrogation of the bargain of Quid Pro Quo then in force (at application file date) under the law.

What is the rush to publication REALLY about then?

Dear Skeptical:

The push to publish stems from the disclosure = innovation paradigm, and with the misconception that there is something wrong with ex parte, confidential patent prosecution. The trend has been for everything to occur in public, and that has become the status quo. The "old" way of doing things seems wrong to some; the funny thing is that most of the disclosure in these pre-GATT cases was made public when counterpart foreign applications were filed. What some people think the public (read, "competitors") are entitled to is the file wrapper, not to identify who's to blame but to get info to be used for designing around.

Thanks for the comment, and Happy New Year.

Skeptical writes in part:
"What is the rush to publication REALLY about then?"

I have been puzzling over that for several years myself. 18-month publication is the default procedure now of course, unless non-publication is requested at the time of filing the application. For more than 200 years, the default procedure was to keep the applications confidential until they issue, so if a patent was not allowed, the inventor could try again without having lost anything to public disclosure.

There are obviously situations where early publication is desirable, like the publish or perish idea that is often used in academic situations, but that is much different than seeking patent rights in most cases. Near as I can figure, it is for the benefit of larger corporations, and to attempt to appease others in the world that have had mandatory publication in place for many years. If I don't plan to file abroad, why would I decide to let my application be published probably about 18 months before I can expect to get a valid patent issued here in the US?

It makes no sense to me at all, so I happen to think Congress got things pretty seriously wrong, for whatever reasons. Interestingly enough, when they publish your application, you are actually required to pay a fee for the *honor* of letting the rest of the world know what you are up to.

Thanks to both you and Donald Z for all of your diligent efforts Kevin-
Happy New Year!

Dear Stan:

My take on this is that in ROW patenting was disfavored, as a way for big companies (capital) to monopolize innovation for their own ends. This was the case (primarily in Europe, especially Germany, and then copied in Japan and elsewhere) because there was a relatively low level of "start-up" type of activity compared to the US. Thus, "popular " governments acted to reduce or at least limit this monopolization by creating ways for inventions to fall into the public domain. Don't think just about publication - think about it in the context of absolute novelty - once published, any failure in the priority chain would serve to render an invention unpatentable. This bias can also be discerned in the requirement that annuities in increasingly higher amounts be paid during pendency and after grant - any unwillingness to pay translates into the invention being dedicated to the public.

This was not the American paradigm, which was more akin to using patents to produce individual success and societal progress. Whitney, Morse, Edison, Farnsworth - all men associated with progress as well as the opportunity for success inherent in protecting innovation through patenting. Even those cheesy late-night commercials touting "I could have had a patent!" Illustrate the generally "pro-patent" sentiment.

So what happened? The patent system became a victim of its own success, and academics, big companies and their lobbyists launched a campaign to limit patenting on the late 1990's. Patent publication was part of that, promoted in the guise of "harmonization." The level of understanding of the patent system by Congress the being no better than it us now, publication became part of the patent system under the AIPA. And Q. Todd Dickenson's decision to create public PAIR (which was not mandated by the AIPA) created the system we have now.

Thanks for the comment, for reading and the kind words. All put best for a Happy New Year!

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