Well, I was assuming that all claims would be considered when the prior art was submitted, which would include any dependent claims. As you point out, similar considerations apply during Rexaminations, since only new questions of patentability over the prior art trigger a reexam.
The main consideration, here, is that, unlike a reexam, the proposed procedure (as understood from the sketchy articles) are more likely to include submisions from people not versed in things patent, who might not be sensitive to the implications raised.
No, it's done all the time; it's part of their job. Examiners determinine patentability of each claim against the prior art of record using, among others, 35 USC 103 as interpreted by relevant case law
they are not skilled in the art
This is true. They cannot establish prior art (well, thechnically, they could under some very rare instances; I'm not aware of even one occurance, however). It's the cited prior art that must not only show the invention, or relavant parts thereof, but also, practially, establish the level of ordinary skill in the art.
Now, 103 rejections usually involve citing two or more prior art references (generally if you copuld show the claimed invention existing in one reference it would be a case of anticipation under 35 USC 102), and the crux of the issue is establishing why this would be obvious to one of ordinary skill in the art.
In the "good old days" examiners were give a great deal of respect in their opinions that two or more references could be "combined" to establish a determination of obviousness. However, the patent bar has pounded and pounded on this over the years, and, they finally got to the Court of Appeals for the Federal Circuit (CAFC) to establish that the cited prior art has to explicitly establish a "motivation" that would lead one to "combine the teachings of two (or more) references together"
What this has meant, in practice, is that many reference sets that could be combined in the past to make a 103 rejection that was likely to be upheld, are no longer valid. This has the general effect to require a) longer searches to find not only the right bare description of some feature, but also a "teaching" of the significance of the feature. The examiner's "handwaving" is no longer legally accepted to support an obviousness rejection.
Given that the time alloted per application has not changed in over 30 years, and that all the effectiveness of new search technology developed in this time period has been erroded by all kinds of additional, non-productive crap that takes a toll from searching and considering the application, it is little wonder that more crap gets issued; examiners that fail to keep up their production are shown the door (much more than almost any other federal job)
Actually, the problem is that, in different fields of commerce there are different questions of investment into creating improvements in technology and, then, getting a return in the market before your competitors immeditely adapt your invention without having had to incur development costs. The problem is that it is impractical to factor this as some sort of concept such as variable patent terms for different technologies, so you end up with a "one size fits all" solution, which ends up being quite a compromise.
Of course the old presumption that software and business methods are not patentable kind of acted as a filter that achieved this goal ( with a term of zero). But, this is something not considered or was rejected by the CAFC in blindly extending patentability to anything under the sun.
No, trade secrets and patents take opposite approaches; trade secrets are, well, secret. Typically they apply to something not easy to reverse engineer (like a complex chemical formula, or critical processing steps). Patents, on the other hand, are published; after all "Patent" comes from the Latin, meaning open, and were used in the more formal form "Letters Patent", meaning "open letters".
Business processes were extended by the "anything under the sun is potentially patentable" Court of Customs and Patent Appeals and its successor, the Court of Appeals for the Federal Circuit. Convince the SCOTUS or Congress to change this.
Obviousness determinations could be aided by the same SCOTUS or Congress telling the CAFC to please stop putting such a high barrier on applying prior art to make the obviousness determination (e. g., relax the "suggestion" nonsense imposed by the CAFC)
Minor correction: Patents in the 1980's lasted for no more than 17 years from the date of issue. Currently Patents last no more than 20 years from the effective filing date.
IANAIPL, but there is a potential risk to someone submitting prior art under a program as sketched in the article. Assume open source developer submits a competant (i. e., having a good date) prior art which happens to describe work he has made bublic, and which has been used in some open source projects, and suggests it would be relevant to an invention claimed in a published patent application.
Now, the applicant can argue against applying the reference (presumably in an obviousness context), perhaps with some minor amendment. If the examiner agrees, and, especially, if the examiner notes, in a Reasons for Allowance, that the reference applies, the claim will issue. The result will be that anyone else trying to defend themselves in an infringement case will have a much tougher burden using the cited prior art, or anything similar, since the Office has explicitly considered the question; if the prior art had never been brought up during prosecution then the defendant would have a clean slate before the Judge to make a case.
We'll have to wait for the details to see what the implications for the proposed intervention will be.
Actually, this has been expressly held by the SCOTUS, in Gottschalk v. Benson, which reversed the Court of Customs and Patent Appeals (CCPA), the court that then took appeals from the Patent Office's Board of Appeals. The CCPA, and its current successor, the Court of Appeals for the Federal Circuit (CAFC) has been the driving force to extend the definition of patentable subject matter as far and wide as possible, so this reversal was like a "slap in the face" to them.
After a stumble or two they then reacted by reading Benson as narrowly as possible, partuclarly paying attention to the Benson holding which included the adjective "mathematical", and reversed a subsequent Board rejection affirmance for a program directed to, IIRC, natural language manipulation. The result has been, virtually, to permit anything, since all you have to do is point out some actual use beyond just abstract mathematics. The business method stuff, of course, is not specifically tied to software, so they easily could apply their philosophy in the State Street case and just extend it further.
If the SCOTUS can't be persuaded to correct this, then it will take Congress to fix this, and that's not, currently, very likely.
Yeah, Diamond might be cited as moving in the direction of the patentability of software, but really, IMHO, does not permit hold that software, per se, constitutes 101 subject matter. The overall method was a legitimate, traditional method (i. e., tire manufacturing). The software was in the timing of a process step (vulcanizing?) that had a direct effect on the physical properties of the manufactured item. The fact that this timing algorithm was the only "point of novelty" relative to the prior art is irrelevant. Your Wikipedia reference doesn't give all the details of what was claimed, but, IIRC, there were no claims solely directed to the algorithm; indeed the opinion, again, was that the claimed invention, as a whole, must be considered.
As for business methods, this was totally a construct of the CAFC under their "if it isn't explicitly prohibited, it's permissable" approach to patent law. And, as far as the Board is concerned, they have little weight, if any, outside the Office, at least beyond the standard "presumption of validity" of any issued patent. They are nothing but an adminstrative in house review body not held with the respect accorded them 50 years ago when they were Prsesidential appointees, not inhouse promoted bureaucrats.
...around the time SCOTUS opened the door for software and business method patents.
I think the real bomb blowing up the bullwark against software and business method patentability has, like the obviousness business I will comment on below, has been the CAFC, although I haven't closely followed the SCOTUS rulings since the 1980's. Remember, don't count denials of cert as implicit affirmances of the CAFC, since, historically, patent cases have not been a SCOTUS specialty.The SCOTUS made a firm stand with the Benson case back in the late 1960's and the CCPA and successor CAFC have been chipping away ever since, leading to the current situation.
They say the obviousness bar has been lowered. However, I truly believe it was only lowered once when the Court of Appeals for the Federal Circuit (CAFC), decided to require motivations for making combinations and throwing "the one of ordinary skill in the art" out the window.Some have said this was an overreaction to hindsight issues in obviousness rejections.
Bingo. This is the point I made a few weeks ago on/. As for the "hindsight" argument, this is (or maybe was, superceded, now, by the "motivation" argument) the standard boilerplate argument by the attorney to the examiner arguing against a 103 rejection (with or without amending the claims). Again, Graham Vs. Deere is the last clear SCOTUS opinion on obviousness, and the CAFC, as with software and business method patents, has been chipping away ever since with their entire, made up "interpretation" of Graham. Indeed, the creation of the CAFC and its jurisdiction over all patent appeals has created a significant legal monoculture (to use a favorite/. meme) in patent law, given how relatively infrequently the SCOTUS takes patent cases. Critics, at the time this court's creation was being debated, argued that this was not a good idea, and that patent law, as with most other areas of law handled by the Federal Judiciary, should remain the provance of the regular Circuit Courts of Appeal, and let the SCOTUS resolve conflicts. Uniformity in the law, is of source, a laudable goal, but having the possibility of several different formal legal analyses would better crystalize the issues, from which the SCOTUS could set forth a (hopefully) authoritative answer.
While they use the number of patent issuances going up, they seem to ignore the fact that patent filings have also sky-rocketed along with them. If the percentage of allowances per examinations are the same, then the stat is pretty irrelevant since the number would just be a case of more cases being viewed because of greater numbers of filings and more examiners examining cases.
Not neccessarily. While I can't cite any sources to support this (so, yeah, I'm pulling this out my ass) you have determine how much of the growth in filings is due to the natural expansion of technology (which, clearly, has exploded in many fields, even beyond pure software and business methods) and how much is due to the "previously barred" fields most relevantly software and business methods. And the allowance rates (after adjusting for the more liberal rules that have developed over the last 30 years that have lead to the filing of one or more continuing applications as a way to extend prosecution) have to measured against the increased difficulty in making 103 rejections; a good gedanken experiment would be to estimate what the filing amount and allowance rate would be under the legal regime of, say, 1970.
I would be willing to wager that obviousness rejections under 35 USC 103 are the most common form of rejection used by the USPTO. It is very rare that anyone files for a patent for a device that has been previously released and would be rejectable under 35 USC 102
Well, it has always been the case, under US patent law, that "A person shall be entitled to a patent, unless..." The initial burden of denying a patent is on the Office. What I was talking about was making a case based on evidence (the prior art cited by the examiner). This has to be, initially, of such character to present a "prima facie" case of obviousness. What I was getting at was that the burden on the part of the examiner has been increased by the US court decisions, quite independent from any WIPO activity. In fact, as far as I know, for example, under the PCT treaty the PTO basically uses the same standard when examining international applications during the internatinal phase as against the "inventive step" requirement.
...of the US patent system concerns the issue of obviousness, and is illustrated by the following quote from TFA:
And much of what the Patent Office sees as invention is merely science applied to a new field by equation or analogy. At AT&T, we took old microwave patents and filed identical claims on optical inventions, which are also radio waves, only 10,000 times smaller. We were able to do this even though it was obvious to anyone who ever picked up a physics textbook that once you have the ability to make things smaller, the physics just translates over.
When I started in the Patent Office (This is before it was renamed Patent and Trademark Office), it was common to use this kind of reasoning to make rejections, and you would be sustained if challenged, because this was the "accepted" view by the Board of Appeals and the Court of Customs and Patent Appeals, the judicial appellate court from the Board, at the time (since then merged into the extant Court of Appeals for the Federal Circuit, who follows the CCPA law). Examiners were accorded great respect in making obviousness judgements and in dicussing the prior art references.
But, about the same time, the patent bar started to become more aggressive in challenging these rejections, demanding that the cited prior art show, or, to use current terminology, "suggest" reasons why the cited prior art references "would" be combined. Say, hypothetically, the applicant claimed a light source, a mirror at 45 deg to deflect the beam 90 deg, a modulator modulating the deflected light beam, and a detector to, well, detect the deflected, modulated beam. Now consider some prior art: Firstly, a light source producing a beam going directly to a modulator, thence to a detector and, secondly, a reference showing a mocrowave source sending microwaves to a microwave reflector, followed by a microwave modulator, that then followed by a microwave detector. In the old days you could combine the two references in an obviousness rejection and, for the applicant to overcome the rejection (beyond adding significant limitations to the claim(s)) he would have to provide some convincing argument, perhaps supported by evidence supported by a "132" oath/affidavit, showing why such a derect analogy was incorrect. But this is no longer true; now the burden is on the examiner to provide prior art that specifically shows that optical and microwave elements can have similar designs. Of course, any such reference, if not exactly showing the source, reflector, modulator, detector combination would be attacked as not applicable to that combinatio; of course, if you had such a reference, you'd have an anticipating prior art and would make the stronger "102" rejection in the first place ("anticipation is the epitome of obviousness")
So, why the change? The answer is, basically, the CCPA and its successor, the CAFC. Attorneys kept appealing and winning reversals, and the Court opinions in those cases clearly kept raising the bar on making obviousness rejections. It's not something that, on the surface, is very stark, but it has greatly increased the burden to make each rejection. Now you might have to search twice (yeah, pulled out my butt but probably in the ballpark) as long, even with modern online search technology, to get the prior art needed to support the rejection. Furthermore, you might not find just the exact "teaching" reference to put you over. The result is claims, and applications, go to allowance that would have never made it under the environment that existed years ago. Couple this with extreme PHB management culture that has developed over the past 30+ years and you have the current mess. And, due to the explosion of filings in recent years, even though the examining corps has increased by a factor of 4 or 5 since around 1980 there is still a 3 year pendency in many arts, yet examiners have even less time, due to lots of tasks, many having no positive impact on examination, heaped on top of them, and the fact that the average time allotted to examine an applcation, has not changed since Commissioner C. Marshall Dann gave a whopping one additional hour per application back in the 1970s.
You're right; mea culpa. Establishing the identity of an inventor only rarely is an issue, such as a prior art publication less than one year prior to the filing date; if not published by the inventor could be used as 35 USC 102(a) prior art, but if the inventor, can't be used.
There's no such thing (at least yet) as a "provisional patent" in the US. As I stated the referenced document was a published application, now normally done 18 months after filing, as was common in the rest of world many years ago. You can file anything meeting the formal requirements and pay the filing fee; this gets no rights other than being lawfully able to assert "Patent Pending" but gives you no right to prevent others from making, using, or selling the invention.
Huh? Where did you get that figure? According to PTOs 2005 Annual Report there are (or were at the time it is was edited) 4,177 patent examiners. And a recent GAO report on the Office cited a figure of about 18 hours per application (the figure varies examiner to examiner due to different art complexity ratings and the examiner's grade and signatory authority; the examiners' union, POPA, estimates a range from about 11-22 hours per application).
Just to put things in perspective, during the Carter administration, which favored the anti-trust folks over the patent folks the examining corps had shrunk to about 800. I don't have what the number of applications that were filed in a year except that it was under 100,000. Today, it's over 400,000.
Yeah you have to smoke out all the related documents (parent applications, siblings, etc) Maybe they need XPATH?
Anyway what do you do if there are continuations-in-part in the lineage? You have to look at the parent documents anyway to see what subject matter will support the earlier date.
IIRC from the recent patent story you are a current examiner. The stuff you point out is fine as far as it goes and shows what attracts many job applicants. The retention problem, as I'm sure you are aware, is the symptom of a seriously dysfunctional work environment not conducive to producing professional work. The pressure for production and not getting zinged by dates (moving oldest new case, 2 month amended, response after final in 2 or was it 3 days?), plus all the Bandaid (TM) procedures (e. g., "second pair of eyes") the increasing amount of work to support a rejection (e. g. "motivation to combine") then the usual roll of the dice when it comes to dealing with your SPE is just not worth it for lots of folks, who bail out early. The Office wants its assembly line humming sending "widgets" out the door, puts ever increasing demands on the examiners but does not invest in more time to do the thorough job needed to avoid going into total irrelevance.
This won't be fixed by adding some phony bennies or even tweeking the award system (which is so production oriented, not quality);30+ years of this management culture will not be reversed overnight, even if a new Director were chosen with this goal in mind. And even that is not in the cards.
Wrong. It's supposed to work. 35 USC 101. The claimed invention must be new, useful, and unobvious. Useseful has been long and unambiguously interpreted by the courts to mean "it works."
The full text of patents has been available since about the early-mid 1970's when the office started using a digital typsetting contractor. The tapes from those times were preserved and were used to populate the first database. AFAIK, selected arts are being added.
Bzzzt, wrong answer! (At least for now). That storyline item was a published application, not a patent; it hadn't even received a first action. You can file anything; wait until there's some recognition of allowable subject matter before spouting off on that one.
Well, it costs the applicant's time and, if he has a practitioner, the practitioner's fees, but, unless the fee structure has changed in the last few years, there is no fee to respond to an office action. Of course most rejections set a three month period to respond, but can be extended to as much as six months total by paying time extension fees. This is quite common and does rake in a nice amount of revenue.
Since you were modded up to 5 by the time I got to this, let me respond how the patent system is supposed to address this issue:
103. Conditions for patentability; non-obvious subject matter Release date: 2005-10-11
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The application of this statutory requirement has been further enunciated by the courts, including some infrequent SCOTUS decisions, but most prominently, one level below the SCOTUS at the Court of Appeals for the Federal Circuit (CAFC). All prior art rejections must be based on evidence, mostly "prior art" as specified in various sections of 35 USC 102. If the claimed invention is not described in one prior art reference, section 102 cannot be used to reject the claim, so the next consideration is section 103. The various court decisions have set up criteria for being able combine more than one reference to support a rejection based on section 103. Over the years the court has required more explicit showing directly from the references, and less leeway for examiners to use "handwaving" and broad reasoning to "combine" references; this is known as the "suggestion" requirement.
This has had the effect, over the years, of making it more difficult to make section 103 rejections. When you combine this with the PTO management's relentless "production" at any cost mentality, and you see the result. And things ain't getting better any time soon, since the management response to the growing recognition of quality concerns has been to institute more review and other time wasting initiatives, and not investing in providing more time to develop the best prior art to support rejections. It's a typical PHB response; it's like being on a "death march" to bring in a software project unter time, under budget, and over quality, except this is a continuous death march.
Actually, you can get both counts from the get-go by allowing it on the first action:-). Wasn't the old slogan "102 or blue?".
Anyway, I don't know if things have changed recently, but it used to be, according to "compact prosecution", that the first action (if there were any rejectable claims) should be thorough, and that even possible disclosed but unclaimed matter that might be added to the claims by a responsive amendment should be made of record toward the view that any second rejection should be made final. Thus, if any claims in the first action are not amended, but are argued you either agree and allow (or indicate allowability over the art) or maintain the rejection so you can make the second action final.
Pretty good post; "If I had mod points I'd mod you up":)
Just a few comments on your response:
examiners are expected to review 87 patents a year, spending 19 hours each on them, on average. Other sources, including congressional testimony by the undersecretary of commerce on intellectual property and the head of POPA, the examiner's union, describe examiners having between 11 and 22 hours for each patent, depending on the complexity of the field (agricultural inventions vs. telecommunications, for example).
And don't forget that the "goal" (i. e, quota) increases with each promotion. The relative factors are GS5 = 0.60, GS7 = 0.70, GS9 = 0.80, GS11 = 0.90, GS12 = 1.00, GS13 = 1.15, GS13 + Partial Signatory Authority = 1.35, GS14 (Full Signatory Authority) = 1.45. There is great preassure to get examiners promoted to a) get more production out of them, and b) so the SPE (Supervisor) has less reviewing of work to do.
There are a ton of new examiners because...it has the highest firing rate in the federal government
If you don't come up to speed (formally, no less than 95% of your production goal), or have too many "late" responses to amendments and the like, you are shown the door before the probationary year is over. And after that, although it is harder to fire you, as soon as you dip below 95% (less than fully successfull) you get an oral warning. If you don't get back up you get a written warning. If you still don't cut it, out the door. Note that firings are almost always for production and timeliness reasons; it rare that anyone gets the boot for a quality reason.
In addition, turnover for examiners is usually 2 years - the patent office can't keep its examiners. Probably because it trains them so well that they can get better jobs outside the patent office
Well, the only thing you get any training for is to become a patent practitioner (patent agent or, with a law degree, patent attorney) Two years is probably not worth that much, but I might be wrong about that these days.
not to mention the horrible labor conditions at the office.
Totally correct. They pay and bennies ain't too bad, but keeping your sanity against the constant barrage of production, dates, and just general, often petty bullshit is just wearing. As usual, the "game players" manage to keep their heads above water and often go into management, thus reinforcing the culture, a kind of "negative" positive feedback.
On point 4, that sounds like total conjecture. Unlike what you describe, there's an incentive for examiners to approve patents, not reject them. Approved patents are added to the examiner's "count"; rejected patents aren't added to the count if they are challenged. This leads to examiners approving patents they aren't sure about. Don't believe me? check out the GAO report above.
Yep. Two "counts" per application a new count for the first action on the merits (Rejection or Allowance) the second when it's disposed (Abandonment, Allowance, or Appeal) Half the average of all New actions and all Disposals in a given time period gives the "balanced disposals" for that time period, from which production is measured.
on point 5, what you're talking about is challenging a rejection, in which case a second examiner reviews the patent.
Not sure what is being referenced here; The only review of a rejection (normally) comes after an applicant appeals; there is supposed to be an "appeal conference" where anther examiner is supposed to give a quick look to make sure the examiner is not being unreasonable in his position
On the other side of the coin, a recent procedure involves review before allowance of a "second pair of eyes" to act as a quick check of reasonableness. Of course, it's hard to come up to speed and give a thorough analysis by the "second pair of eyes", plus neither examiner gets even on millisecond of extra time to do this...doesn't sound like a very useful procedure to address the Office's quality problems.
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Well, I was assuming that all claims would be considered when the prior art was submitted, which would include any dependent claims. As you point out, similar considerations apply during Rexaminations, since only new questions of patentability over the prior art trigger a reexam.
The main consideration, here, is that, unlike a reexam, the proposed procedure (as understood from the sketchy articles) are more likely to include submisions from people not versed in things patent, who might not be sensitive to the implications raised.
Now, 103 rejections usually involve citing two or more prior art references (generally if you copuld show the claimed invention existing in one reference it would be a case of anticipation under 35 USC 102), and the crux of the issue is establishing why this would be obvious to one of ordinary skill in the art.
In the "good old days" examiners were give a great deal of respect in their opinions that two or more references could be "combined" to establish a determination of obviousness. However, the patent bar has pounded and pounded on this over the years, and, they finally got to the Court of Appeals for the Federal Circuit (CAFC) to establish that the cited prior art has to explicitly establish a "motivation" that would lead one to "combine the teachings of two (or more) references together"
What this has meant, in practice, is that many reference sets that could be combined in the past to make a 103 rejection that was likely to be upheld, are no longer valid. This has the general effect to require a) longer searches to find not only the right bare description of some feature, but also a "teaching" of the significance of the feature. The examiner's "handwaving" is no longer legally accepted to support an obviousness rejection.
Given that the time alloted per application has not changed in over 30 years, and that all the effectiveness of new search technology developed in this time period has been erroded by all kinds of additional, non-productive crap that takes a toll from searching and considering the application, it is little wonder that more crap gets issued; examiners that fail to keep up their production are shown the door (much more than almost any other federal job)
Actually, the problem is that, in different fields of commerce there are different questions of investment into creating improvements in technology and, then, getting a return in the market before your competitors immeditely adapt your invention without having had to incur development costs. The problem is that it is impractical to factor this as some sort of concept such as variable patent terms for different technologies, so you end up with a "one size fits all" solution, which ends up being quite a compromise.
Of course the old presumption that software and business methods are not patentable kind of acted as a filter that achieved this goal ( with a term of zero). But, this is something not considered or was rejected by the CAFC in blindly extending patentability to anything under the sun.
No, trade secrets and patents take opposite approaches; trade secrets are, well, secret. Typically they apply to something not easy to reverse engineer (like a complex chemical formula, or critical processing steps). Patents, on the other hand, are published; after all "Patent" comes from the Latin, meaning open, and were used in the more formal form "Letters Patent", meaning "open letters".
Business processes were extended by the "anything under the sun is potentially patentable" Court of Customs and Patent Appeals and its successor, the Court of Appeals for the Federal Circuit. Convince the SCOTUS or Congress to change this.
Obviousness determinations could be aided by the same SCOTUS or Congress telling the CAFC to please stop putting such a high barrier on applying prior art to make the obviousness determination (e. g., relax the "suggestion" nonsense imposed by the CAFC)
Minor correction: Patents in the 1980's lasted for no more than 17 years from the date of issue. Currently Patents last no more than 20 years from the effective filing date.
IANAIPL, but there is a potential risk to someone submitting prior art under a program as sketched in the article. Assume open source developer submits a competant (i. e., having a good date) prior art which happens to describe work he has made bublic, and which has been used in some open source projects, and suggests it would be relevant to an invention claimed in a published patent application.
Now, the applicant can argue against applying the reference (presumably in an obviousness context), perhaps with some minor amendment. If the examiner agrees, and, especially, if the examiner notes, in a Reasons for Allowance, that the reference applies, the claim will issue. The result will be that anyone else trying to defend themselves in an infringement case will have a much tougher burden using the cited prior art, or anything similar, since the Office has explicitly considered the question; if the prior art had never been brought up during prosecution then the defendant would have a clean slate before the Judge to make a case.
We'll have to wait for the details to see what the implications for the proposed intervention will be.
Actually, this has been expressly held by the SCOTUS, in Gottschalk v. Benson, which reversed the Court of Customs and Patent Appeals (CCPA), the court that then took appeals from the Patent Office's Board of Appeals. The CCPA, and its current successor, the Court of Appeals for the Federal Circuit (CAFC) has been the driving force to extend the definition of patentable subject matter as far and wide as possible, so this reversal was like a "slap in the face" to them.
After a stumble or two they then reacted by reading Benson as narrowly as possible, partuclarly paying attention to the Benson holding which included the adjective "mathematical", and reversed a subsequent Board rejection affirmance for a program directed to, IIRC, natural language manipulation. The result has been, virtually, to permit anything, since all you have to do is point out some actual use beyond just abstract mathematics. The business method stuff, of course, is not specifically tied to software, so they easily could apply their philosophy in the State Street case and just extend it further.
If the SCOTUS can't be persuaded to correct this, then it will take Congress to fix this, and that's not, currently, very likely.
Yeah, Diamond might be cited as moving in the direction of the patentability of software, but really, IMHO, does not permit hold that software, per se, constitutes 101 subject matter. The overall method was a legitimate, traditional method (i. e., tire manufacturing). The software was in the timing of a process step (vulcanizing?) that had a direct effect on the physical properties of the manufactured item. The fact that this timing algorithm was the only "point of novelty" relative to the prior art is irrelevant. Your Wikipedia reference doesn't give all the details of what was claimed, but, IIRC, there were no claims solely directed to the algorithm; indeed the opinion, again, was that the claimed invention, as a whole, must be considered.
As for business methods, this was totally a construct of the CAFC under their "if it isn't explicitly prohibited, it's permissable" approach to patent law. And, as far as the Board is concerned, they have little weight, if any, outside the Office, at least beyond the standard "presumption of validity" of any issued patent. They are nothing but an adminstrative in house review body not held with the respect accorded them 50 years ago when they were Prsesidential appointees, not inhouse promoted bureaucrats.
I think the real bomb blowing up the bullwark against software and business method patentability has, like the obviousness business I will comment on below, has been the CAFC, although I haven't closely followed the SCOTUS rulings since the 1980's. Remember, don't count denials of cert as implicit affirmances of the CAFC, since, historically, patent cases have not been a SCOTUS specialty.The SCOTUS made a firm stand with the Benson case back in the late 1960's and the CCPA and successor CAFC have been chipping away ever since, leading to the current situation.
Bingo. This is the point I made a few weeks ago on /. As for the "hindsight" argument, this is (or maybe was, superceded, now, by the "motivation" argument) the standard boilerplate argument by the attorney to the examiner arguing against a 103 rejection (with or without amending the claims). Again, Graham Vs. Deere is the last clear SCOTUS opinion on obviousness, and the CAFC, as with software and business method patents, has been chipping away ever since with their entire, made up "interpretation" of Graham. Indeed, the creation of the CAFC and its jurisdiction over all patent appeals has created a significant legal monoculture (to use a favorite /. meme) in patent law, given how relatively infrequently the SCOTUS takes patent cases. Critics, at the time this court's creation was being debated, argued that this was not a good idea, and that patent law, as with most other areas of law handled by the Federal Judiciary, should remain the provance of the regular Circuit Courts of Appeal, and let the SCOTUS resolve conflicts. Uniformity in the law, is of source, a laudable goal, but having the possibility of several different formal legal analyses would better crystalize the issues, from which the SCOTUS could set forth a (hopefully) authoritative answer.
Not neccessarily. While I can't cite any sources to support this (so, yeah, I'm pulling this out my ass) you have determine how much of the growth in filings is due to the natural expansion of technology (which, clearly, has exploded in many fields, even beyond pure software and business methods) and how much is due to the "previously barred" fields most relevantly software and business methods. And the allowance rates (after adjusting for the more liberal rules that have developed over the last 30 years that have lead to the filing of one or more continuing applications as a way to extend prosecution) have to measured against the increased difficulty in making 103 rejections; a good gedanken experiment would be to estimate what the filing amount and allowance rate would be under the legal regime of, say, 1970.
You are correct. I
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Well, it has always been the case, under US patent law, that "A person shall be entitled to a patent, unless..." The initial burden of denying a patent is on the Office. What I was talking about was making a case based on evidence (the prior art cited by the examiner). This has to be, initially, of such character to present a "prima facie" case of obviousness. What I was getting at was that the burden on the part of the examiner has been increased by the US court decisions, quite independent from any WIPO activity. In fact, as far as I know, for example, under the PCT treaty the PTO basically uses the same standard when examining international applications during the internatinal phase as against the "inventive step" requirement.
When I started in the Patent Office (This is before it was renamed Patent and Trademark Office), it was common to use this kind of reasoning to make rejections, and you would be sustained if challenged, because this was the "accepted" view by the Board of Appeals and the Court of Customs and Patent Appeals, the judicial appellate court from the Board, at the time (since then merged into the extant Court of Appeals for the Federal Circuit, who follows the CCPA law). Examiners were accorded great respect in making obviousness judgements and in dicussing the prior art references.
But, about the same time, the patent bar started to become more aggressive in challenging these rejections, demanding that the cited prior art show, or, to use current terminology, "suggest" reasons why the cited prior art references "would" be combined. Say, hypothetically, the applicant claimed a light source, a mirror at 45 deg to deflect the beam 90 deg, a modulator modulating the deflected light beam, and a detector to, well, detect the deflected, modulated beam. Now consider some prior art: Firstly, a light source producing a beam going directly to a modulator, thence to a detector and, secondly, a reference showing a mocrowave source sending microwaves to a microwave reflector, followed by a microwave modulator, that then followed by a microwave detector. In the old days you could combine the two references in an obviousness rejection and, for the applicant to overcome the rejection (beyond adding significant limitations to the claim(s)) he would have to provide some convincing argument, perhaps supported by evidence supported by a "132" oath/affidavit, showing why such a derect analogy was incorrect. But this is no longer true; now the burden is on the examiner to provide prior art that specifically shows that optical and microwave elements can have similar designs. Of course, any such reference, if not exactly showing the source, reflector, modulator, detector combination would be attacked as not applicable to that combinatio; of course, if you had such a reference, you'd have an anticipating prior art and would make the stronger "102" rejection in the first place ("anticipation is the epitome of obviousness")
So, why the change? The answer is, basically, the CCPA and its successor, the CAFC. Attorneys kept appealing and winning reversals, and the Court opinions in those cases clearly kept raising the bar on making obviousness rejections. It's not something that, on the surface, is very stark, but it has greatly increased the burden to make each rejection. Now you might have to search twice (yeah, pulled out my butt but probably in the ballpark) as long, even with modern online search technology, to get the prior art needed to support the rejection. Furthermore, you might not find just the exact "teaching" reference to put you over. The result is claims, and applications, go to allowance that would have never made it under the environment that existed years ago. Couple this with extreme PHB management culture that has developed over the past 30+ years and you have the current mess. And, due to the explosion of filings in recent years, even though the examining corps has increased by a factor of 4 or 5 since around 1980 there is still a 3 year pendency in many arts, yet examiners have even less time, due to lots of tasks, many having no positive impact on examination, heaped on top of them, and the fact that the average time allotted to examine an applcation, has not changed since Commissioner C. Marshall Dann gave a whopping one additional hour per application back in the 1970s.
You're right; mea culpa. Establishing the identity of an inventor only rarely is an issue, such as a prior art publication less than one year prior to the filing date; if not published by the inventor could be used as 35 USC 102(a) prior art, but if the inventor, can't be used.
There's no such thing (at least yet) as a "provisional patent" in the US. As I stated the referenced document was a published application, now normally done 18 months after filing, as was common in the rest of world many years ago. You can file anything meeting the formal requirements and pay the filing fee; this gets no rights other than being lawfully able to assert "Patent Pending" but gives you no right to prevent others from making, using, or selling the invention.
Huh? Where did you get that figure? According to PTOs 2005 Annual Report there are (or were at the time it is was edited) 4,177 patent examiners. And a recent GAO report on the Office cited a figure of about 18 hours per application (the figure varies examiner to examiner due to different art complexity ratings and the examiner's grade and signatory authority; the examiners' union, POPA, estimates a range from about 11-22 hours per application).
Just to put things in perspective, during the Carter administration, which favored the anti-trust folks over the patent folks the examining corps had shrunk to about 800. I don't have what the number of applications that were filed in a year except that it was under 100,000. Today, it's over 400,000.
Yeah you have to smoke out all the related documents (parent applications, siblings, etc) Maybe they need XPATH?
Anyway what do you do if there are continuations-in-part in the lineage? You have to look at the parent documents anyway to see what subject matter will support the earlier date.
IIRC from the recent patent story you are a current examiner. The stuff you point out is fine as far as it goes and shows what attracts many job applicants. The retention problem, as I'm sure you are aware, is the symptom of a seriously dysfunctional work environment not conducive to producing professional work. The pressure for production and not getting zinged by dates (moving oldest new case, 2 month amended, response after final in 2 or was it 3 days?), plus all the Bandaid (TM) procedures (e. g., "second pair of eyes") the increasing amount of work to support a rejection (e. g. "motivation to combine") then the usual roll of the dice when it comes to dealing with your SPE is just not worth it for lots of folks, who bail out early. The Office wants its assembly line humming sending "widgets" out the door, puts ever increasing demands on the examiners but does not invest in more time to do the thorough job needed to avoid going into total irrelevance.
This won't be fixed by adding some phony bennies or even tweeking the award system (which is so production oriented, not quality);30+ years of this management culture will not be reversed overnight, even if a new Director were chosen with this goal in mind. And even that is not in the cards.
Wrong. It's supposed to work. 35 USC 101. The claimed invention must be new, useful, and unobvious. Useseful has been long and unambiguously interpreted by the courts to mean "it works."
Not strictly true; try the advanced search page. The field code for inventor name is IN/. You can also set date ranges; check out the field code list.
The full text of patents has been available since about the early-mid 1970's when the office started using a digital typsetting contractor. The tapes from those times were preserved and were used to populate the first database. AFAIK, selected arts are being added.
Bzzzt, wrong answer! (At least for now). That storyline item was a published application, not a patent; it hadn't even received a first action. You can file anything; wait until there's some recognition of allowable subject matter before spouting off on that one.
Well, it costs the applicant's time and, if he has a practitioner, the practitioner's fees, but, unless the fee structure has changed in the last few years, there is no fee to respond to an office action. Of course most rejections set a three month period to respond, but can be extended to as much as six months total by paying time extension fees. This is quite common and does rake in a nice amount of revenue.
The application of this statutory requirement has been further enunciated by the courts, including some infrequent SCOTUS decisions, but most prominently, one level below the SCOTUS at the Court of Appeals for the Federal Circuit (CAFC). All prior art rejections must be based on evidence, mostly "prior art" as specified in various sections of 35 USC 102. If the claimed invention is not described in one prior art reference, section 102 cannot be used to reject the claim, so the next consideration is section 103. The various court decisions have set up criteria for being able combine more than one reference to support a rejection based on section 103. Over the years the court has required more explicit showing directly from the references, and less leeway for examiners to use "handwaving" and broad reasoning to "combine" references; this is known as the "suggestion" requirement.
This has had the effect, over the years, of making it more difficult to make section 103 rejections. When you combine this with the PTO management's relentless "production" at any cost mentality, and you see the result. And things ain't getting better any time soon, since the management response to the growing recognition of quality concerns has been to institute more review and other time wasting initiatives, and not investing in providing more time to develop the best prior art to support rejections. It's a typical PHB response; it's like being on a "death march" to bring in a software project unter time, under budget, and over quality, except this is a continuous death march.
Actually, you can get both counts from the get-go by allowing it on the first action :-). Wasn't the old slogan "102 or blue?".
Anyway, I don't know if things have changed recently, but it used to be, according to "compact prosecution", that the first action (if there were any rejectable claims) should be thorough, and that even possible disclosed but unclaimed matter that might be added to the claims by a responsive amendment should be made of record toward the view that any second rejection should be made final. Thus, if any claims in the first action are not amended, but are argued you either agree and allow (or indicate allowability over the art) or maintain the rejection so you can make the second action final.
Pretty good post; "If I had mod points I'd mod you up" :)
Just a few comments on your response:
examiners are expected to review 87 patents a year, spending 19 hours each on them, on average. Other sources, including congressional testimony by the undersecretary of commerce on intellectual property and the head of POPA, the examiner's union, describe examiners having between 11 and 22 hours for each patent, depending on the complexity of the field (agricultural inventions vs. telecommunications, for example).
And don't forget that the "goal" (i. e, quota) increases with each promotion. The relative factors are GS5 = 0.60, GS7 = 0.70, GS9 = 0.80, GS11 = 0.90, GS12 = 1.00, GS13 = 1.15, GS13 + Partial Signatory Authority = 1.35, GS14 (Full Signatory Authority) = 1.45. There is great preassure to get examiners promoted to a) get more production out of them, and b) so the SPE (Supervisor) has less reviewing of work to do.
There are a ton of new examiners because...it has the highest firing rate in the federal government
If you don't come up to speed (formally, no less than 95% of your production goal), or have too many "late" responses to amendments and the like, you are shown the door before the probationary year is over. And after that, although it is harder to fire you, as soon as you dip below 95% (less than fully successfull) you get an oral warning. If you don't get back up you get a written warning. If you still don't cut it, out the door. Note that firings are almost always for production and timeliness reasons; it rare that anyone gets the boot for a quality reason.
In addition, turnover for examiners is usually 2 years - the patent office can't keep its examiners. Probably because it trains them so well that they can get better jobs outside the patent office
Well, the only thing you get any training for is to become a patent practitioner (patent agent or, with a law degree, patent attorney) Two years is probably not worth that much, but I might be wrong about that these days.
not to mention the horrible labor conditions at the office.
Totally correct. They pay and bennies ain't too bad, but keeping your sanity against the constant barrage of production, dates, and just general, often petty bullshit is just wearing. As usual, the "game players" manage to keep their heads above water and often go into management, thus reinforcing the culture, a kind of "negative" positive feedback.
On point 4, that sounds like total conjecture. Unlike what you describe, there's an incentive for examiners to approve patents, not reject them. Approved patents are added to the examiner's "count"; rejected patents aren't added to the count if they are challenged. This leads to examiners approving patents they aren't sure about. Don't believe me? check out the GAO report above.
Yep. Two "counts" per application a new count for the first action on the merits (Rejection or Allowance) the second when it's disposed (Abandonment, Allowance, or Appeal) Half the average of all New actions and all Disposals in a given time period gives the "balanced disposals" for that time period, from which production is measured.
on point 5, what you're talking about is challenging a rejection, in which case a second examiner reviews the patent.
Not sure what is being referenced here; The only review of a rejection (normally) comes after an applicant appeals; there is supposed to be an "appeal conference" where anther examiner is supposed to give a quick look to make sure the examiner is not being unreasonable in his position
On the other side of the coin, a recent procedure involves review before allowance of a "second pair of eyes" to act as a quick check of reasonableness. Of course, it's hard to come up to speed and give a thorough analysis by the "second pair of eyes", plus neither examiner gets even on millisecond of extra time to do this...doesn't sound like a very useful procedure to address the Office's quality problems.