Well, if your hypothetical application claims "a device that tells time" then I, the patent examiner just cites, say, one of those old church clocks from the second previous millenium....bingo! 35 USC 102 rejection. If time is a new concept, but you haven't described it so that one of ordinary skill in this art, or any art which is deemed closest to it, could not make and or use it, then it is rejected under
35 USC 112, first paragraph (inadequate disclosure)
If there is no clear indication how to "make and use" the claimed invention then such claims are invalid as a matter of law, 35 USC 112, first paragraph.
The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980:
(1)
3 years and 6 months after grant, $830.
(2)
7 years and 6 months after grant, $1,900.
(3)
11 years and 6 months after grant, $2,910.
Unless payment of the applicable maintenance fee is received in the Patent and Trademark Office on or before the date the fee is due or within a grace period of 6 months thereafter, the patent will expire as of the end of such grace period. The Director may require the payment of a surcharge as a condition of accepting within such 6-month grace period the payment of an applicable maintenance fee. No fee may be established for maintaining a design or plant patent in force.
This, of course, is just a money based disincentive to keep an unworked patent in force and is only applied three times after the patent is issued, but it is easier and more definitive to just collect a fee than to go through the hassle of trying to determine if the patent is being worked, or that a bona fide effort was made to work it.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
The 4 categories and the "new and useful improvement" (which seems to cover most inventions). Overly broad means that the broad claims are not adequately described to support the breadth (35 USC 112 covers inadequate disclosure), . Of course, if it is too broad then it will not be patentable under 35 USC 102 or 103.
the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent
"known or used" means public use; If the knowledge and use are not public, or if the use is "secret" (e. g. "black box"), then this section does not apply.
Also consider section (g):
(g)
(1)
during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
(2)
before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other
This most applies in the case of an interference between two inventors (assuming both independently made the invention) Note, that, although the one or both might have kept the invention "secret" they must demonstrate an intention to patent it, otherswise it fails under the "abandon, supress or conceal" prohibition.
Section 102 applies, strictly, to novelty, i. e. literaly what is described, but the courts have allowed lots of individual pieces of evidence to be combined to establish obviousness under 35 USC 103
True there is no requirement to "work" a patent as is common elsewhere, but since the 1980s there is an economic incentive to discourage sitting on a non-productive patent: maintenance fees that must be paid 3 or 4 times during the life of a patent. Of course, if you have a lot of money this means little to keep it around, but it is a small step away from the old 17 years free tht way it was previously
The substantive requirements for a (valid) patent are that it be 1) new (35 USC 102), useful and fully disclosed (35 USC 101), and unobvious (35 USC 103).
If by "stupid" you mean simple, then this should be covered by 3); if you mean that it doesn't make sense in terms of being pratical, then it's ok; who would it impede if it is of little "practical" use; on the other hand if it simply won't work, then it violates 2) (e. g., perpetual motion stuff). Also if it is too vague and not described well enough then it also violates 2) (inadequate disclosure). A claim wich is not new nor unobvious, but which is too broad also violates 1) in the sense that the disclosure will support only a subset of what is in the overbroad claim. This, typically, can happen in chemical situations where it is difficult to predict if the described benefits, say, of a calss of compounds will generally be applicable to a more generic description that could cover lots of totally inoperative chemicals. This problem is relatively rare in traditional "mechanical" inventions.
In the PTO, one boss I had used to say, when questioned "who the hell would use this?" on something so contorted that it had no "practial application", but which did exactly what it was described to do, would reply "Put it on the market" The PTO is supposed to interpret "utility" just on techical grounds (will it function as described and has it adequately been descloded so that others can make it achieve the function) and not make financial or more common interpretations of being "useful"; adding this to the burdens of the already strained examination process would just result in a whole new class of arguments, most hypothetical and subjective, as to what is useful.
Well, leaving aside what the meaning of "make any money" really means (the PTO used to call the examining groups "cost centers" rather than the private industry term "profit centers") there are fees charged for just filing the application as well as for certain things that happen during prosecution (such as extensions of time to respond to various office actions).
That being said, issuing an applicatin does result in more fees not incurred if it is abandoned: issue fees, and then maintenance fees fees paid during the life of the patent to keep it in force.
Furthermore the big increase in fees that started back in the 1980's has lead to Congress grabbing some of the revenue collected by the PTO for other purposes in the Federal Budget rather than doing things like, oh, say, increasing the average time an examiner can spend on a case, or more training, etc. Same old gummint crapola.
IANAL but IWAPE (I was a Patent Examiner (Damn, there goes any credibility I might have had)) but I think most patent infringment/validity trials are (or, at least, were) held in front of a US District Court Judge without a jury who makes rulings on both law and facts. A trial before a jury, however, is an option available to the accused infringer (defendant).
Well, 30 minutes is a bit low...The average Hours per Balanced disposal (very roughly the average of the number of first actiosns in an application and the number of disposals (allowance, abandonment, or appeal) is on the order of 16-17 hours (or at least it was 12 years ago). this will vary according to the "art" assigned to the examiner and the examiner's grade and signatory authority. To get 100% in production for the examining hours given (80 hours per bi week minus a diminishing number of hours that can be "written off") This target must be hit. But, this time includes reading the application, searching the prior art, writing actions, responding to amendments, researching any legal issues, plus a lot of overhead activity that can't be written off.Like processing International applications for which some time, but no production credit is given (unless it enters the US national phase).
The US patent bar has fought published applications and opposition, but did concede a bit in permitting Reexamination put into law, but this is very limited in what can be contested.
Well, when I was a.... patent examiner (left in '91) Almost all incentives (Awards, Outstandings) were based on super "Process Numbers", like Production >= 110%, Almost no amended cases over two months, etc. Yes, there was a "Quality" element tht was needed for an outstanding rating, but the way this worked, You wouldn't even be considered for anything beyond fully successfull if your production wasn't >= 110%, And the plan was weighted so that you couldn't get outstanding overall if production wasn't outstanding, too.
The work environment has even become worse than when I was there, since the making of the case to reject claims has become more difficult do to a progression of CAFC (Court of Appeals for the Federal Circuit, where all contested patent cases, both from the Office, and from the Federal District Courts go, and basically makes all the patent law since the Supremes don't take many patent cases) decisions that force the examiner to justify rejection of every feature, no matter how trivial. This has just added the burden to get out an office action, but the time an examiner to look at a case has not been comensurately increased. This results in lots of applications just jammed with lots of stupid, trivial dependent claims that used to be brushed off with a very general statement, or, in years gone by, could be ignored by the examiner on the doctrine of "multiplicity"
Exacerbating the problem is that fact that they have problems recruiting people, even in this post dot com tech depression, since the pay is still relatively low (by industry standatds), The atmosphere is one of being a production mill rather than a real professional environment, and, well, it is "The Gummint" Still, compared to many other govt agencies you won't see lots of people just goldbricking around, becase of the constant pressure to get "numbers", which is reinforced with reports every bi-week (SPE (boss) to examiner "Why was your production only 85% last bi-week?)
As for the business of being a cash cow, this was done by Congress as part of the overall smoke and mirrors accounting, another instance of robbing Paul to pay Paul (or was that vice versa?). Not surprising coming from our political "leadership".
Well, as an ex-examiner I can say that, while GS-1224 salaries are not up "dot bomb" levels they are high by Federal standards (Working Primary Examiners are at the GS-14 level).
The claim on examiners "less than spectacular education and work histories", also, is not really true. You can find some dolts, to be sure, but many have reasonably decent credentials,/. flaming nontheless.
The big problem, here, is is keeping people; they have just cant get people. This is with an examining corps now about 3,500; during one period shortly after I started it was down to about 800. Yet, the number of applications has skyrocketed from about 100,000 annual filings to many times that (a friend I still keep in contact with says it's approaching a million). As I have often commented in the past PTO management is process oriented, not substance oriented. "get your production up; don't let amendments sit around; get that action out"; That drumbeat has been going on for for over 30 years, now. This environment has contributed to the large turnover rate, a fact managment refuses to acknowlege.
As for the Office policy vs Congress, don't forget the other branch of Federal Government: the courts. It was the Court of Customs and Patent Appeals, succeded by the Court of Appeals for the Federal Circuit that basically rammed software and business method patents on a reluctant PTO; that's how the appeals got there in the first place. Once An issure is decided by the court the only way to change it is by Act of Congress, which, as you point out, they have not been paid off......errrrrr......convinced to do. The PTO cannot arbitrarily decide what is patentable subject matter under 35 USC 101; if the court says programs and business methods are patentable, ya gotta examine them on the merits (I don't want to ignite the whole issue of obviousness here; that's been beaten to death here).
Damn, you beat me to this point because my dsl connection was down last night (thanks earthlink/genuity, you shitheels).
This sure does sound like a "Lemelson" situation...the long string of "continuations" is often the sign of an aggresive strategy in obtaining claims, but the real tip off are the "continuation-in-parts"; a Straight" continuation is an application that is filed before the abandonment of its "parent" application, and which contains a reference to the parent application; It must have no "new matter" added from the parent application. The legal consequence is that the "continuing" application is acorded the effect of the parent application's filing date, principally meaning a prior art reference that would be a "statutory bar" (35 USC 102(b)) against the child patent might no longer because the parent filing date goes behind the the reference (35 USC 102(e), or within a year of the reference (where the inventor can still potentially "swear behind" the reference (35 USC 102(a))
But, the disclosure of the invention must be the SAME as the parent application; if there is "new matter" in the child application, any claims wich have any reliance on the new matter only get the child application's filing date; a child application in this case is called a "continuation in part", or CIP. A CIP may have different claims that rely on different parts of the disclosure, and the prior at will, therefore, have separate "competance" (i. e., based on the date of the the referencee rather than the substance of its content)relative to each claim.
with the rat's nest of applications shown in the subjecct patents it is a fair guess that the applicant tried to assert all the claims were entitled to the earliest date and haggle the office; analyzing this just adds another complication to the whole stew.
I remember getting a CIP that was transferred to me from another examining group; I found better art and just stood my ground; for some reason, the applacant did not appeal, but just kept filing continuations; as soon as I was aware of a refiling, I quickly issued a "first action final rejection"; applicant refiled. This charade contined for about a half dozen continuations; the issue never changed and was never really argued; a clear abuse of the system, but there was (and I don;t think there is) any legal basis to prevent this kind of abuse.
No, we know who allowed the patent; that's right on the front page (follow the link).
What she was referring to was the Request for Reexamination. I forget when they are made public, but, as of about 12 years ago, they were open to the public until a decision to Reexamine the patent was granted. After that. there was would be no public participation in the proceedings.
The requester should be identified when the public notice is filed identified, but it looks like IBM mooted this pretty quickly, so, perhaps, it never got to that stage.
I replied to the parent more extensively, so I'll actually try some brevity here.
You are quite correct that examiners are not motivated by fees; most are cynical about the various fee plans; when multiple dependent claims were introduced most examiners groaned because they were worried that applicants would screw up the provisions, creating Byzentine heirarchies of claims, hard to understand, and also encouraging applicants adding scores of stupid, tedious ependtent claims, given them the opportunity to argue every damn permutation of features; the examiner risked being reversed on a lot of such dip-shit claims if the case went to appeal, meaning lots of tidme and effort to fend off crapola.
That leads to what the motivation really is: meeting the production goals, acting on amended cases withing two months, and all kinds of "process" metrics. There was a "quality" metric, but you basically got a pass on it as a default; Getting an oustanding rating or an unsatisfactory required lots of documentation by the supervisor, so that was rare; The process stuff was automatic and self documenting.
Finally, a patent thread that hasn't been beaten to death when I get to it!
Your idea for a "deposit" is interesting, but I think it is a bit too harsh. Like many other posters have mentioned it will just raise the risk to entities (companies and individuals). Often, applications get prosecuted past the final rejection where the applicant wants to persue it, and has to file a "continuing" application, complete with a new filing fee. Heaping on another deposit (the original having been forfeit by that application becoming abandoned) just multiplies the risk, unneccessarily IMHO.
More importantly, your comment about patents being allowed "grudgingly" is the way it used to be, say, over 30 years ago. The applicant had to work get some claims allowed. Also, it was existing law that business processes and, after the invention of programmable computers, programs were just not patentable subject matter. So, what changed?
Two main factors, driven by the Patent Bar (Thats the community of Patent Attorneys for those of you thinking free as in beer): 1) patent applications were taking lots and lots of time to prosecute. The response: "Compact Prosecution"; Only three months to respond to Office Actions rather than the Statutory six (Statue permitted period to be shortened to as little as 30 days); second action is made final (limited ability to respond/amend). Also, examiners were required to produce so many first actions and disposals (abandonments and allowances) against a quota. non-final second and subsequent non-allowances didn't count toward the goal. So, the incentive was to get out work as fast as possible, and a terrible incentive to just issue the application on the first action ("first action issue", two "counts") was really tempting, especially if you were behind and getting nagged by your supervisor for "low production" every two weeks. Whil the "old school" examiners took a very jaundiced eye toward such actions (they were trained NEVER to allow on the first action) a new generation, trained by the "new management" (what became our PHBs)it was not scandalous UNLESS it led to some embarassment. High production was a visible, and easy to validate metric; high quality was invisible, hard to measure, and, thus, paid lip service.
2) The expanding into business method and software patents was driven by the court system by patent applicants, not the PTO. The PTO rejected several cases over the years and, in brief, got shot down by the Court of Customs Appeals, it's sucessor, the Court of Appeals for the Federal Circuit, and, ultimately, the Supreme Court. This done, the matter has been settled, so the PTO must examine them on the limits; they have no authority to create rules to countermand that; when you appeal an issue and you lose, that's it, from a legal perspective; only action by Congress can change this (similarly to the "Disney Protection Act" for Copyrights). As to the question of, given the fact of business method and software patents being patentable subject areas (35 USC 101), that such applications are not having the proper application of Novelty (35 USC 102) or Non-obviousness (35 USC 103)is a whole other issue I won't discuss here.
So, in a nutshell, the one-two punch of a PHB production/process oriented management and a court system that has pretty much decided that "anything under the sun" is properly submittable in a patent application have lead us to where we are today.
Extending copyrights are unconstitutional because they fail to foster "science".
Art I, Section 8, US constitution has a parallel structure to associate "science and useful arts" with "authors and inventors" with "writings and discoveries"
And, yes, Congress is sure screwing with the meaning of "limited times"
Re:You folks don't no sh*t about patent law
on
MS Palladium Patent
·
· Score: 1
Note that the date of invention is generally not the same as the patent application filing date (or, effective filing date.
Basically, a reference having a date more than one year before the filing date are valid, even if the invention was "invented" prior to the reference publication date; The PTO presumes that the date of invention is the filing date; to establish an earlier date of invention (where the reference publication date is less than a year from the filing date) the applicant must file a affidavit or declaration with sufficient facts (including things like research notebooks and the like) to establish the the invention was made prior to the publication date of the reference).
I posted above on some of the internal reasons how productions incentives has degraded the ethic to do quality work in the PTO. The problem is one of a managment philosophy over the last 30+ years to worship the god of production over the virtue of quality. Even the most diligent examiner is faced with the problem of being diligent with the reality of not getting fired for low production, not turning around amended cases quickly enough, etc.
There really are lots of bright people in the PTO (as well as the ususal portion of duds) but they get eroded down to either always being on the edge of being fired (because their production is low) or they have to compromise their own standards to avoid this fate. Either way, they are miserable, and, if they have waited too long, they are trapped in an occupation that has limited applicability elsewhere (Patent Attorney/Agent/Searcher).
The result: lots of turnover from people who make the correct decision quickly (leave fast, stay long enough to get law degree then go on the outside, etc.) leaving the inept and otherwise unemployable, the competant but ground down by the institutional crappy environment, and the few who ae luck to be competant and in an art that enables them to do good work and satisfy the bean counters.
And the management wonders why turnover is so high.
The issue of quantity vs. quality has been a long standing issue in the PTO; it was a raging issue back when I joined in 1973. In the "olden days" (say up until the 1960's, according to the then lore) an examiner could make multiple rejections against an insistant applicant; the ethic was to reject claims. Also, the examiner's judgement was given high authority, and applicants had to make a good case to overturn adverse actions.
Well, the patent bar got pissed and started to get more aggressive about challenging examiners; after all, there was abuse of the system, and it is not much better to reject somtthing over clearly irrelevant prior art then to pass out a patent over a clearly anticipating reference. Also, applicants were concerned that applications were taking several years to get issued, making the whole process too expensive and time consuming.
As a result of these pressures a new bred of management was cultivated to counter this. One of the key provisions of this effort was the creation of the "Compact Prosecution" policy. This said that a typical contested application would receive a first action, then, on response by applicant, a second action, either allowance or a "final" rejection. If finally rejected, the applicant could appeal, but was not entitled to have any pre appeal submissions to be considered except under limited circumstances.
To "encourage" examiners to to follow compact prosecution the perfomance evaluation system for them was changed to significantly count an examiner's "production" by giving a credit for the first action and for the disposal of the application (generally abandonment or allowance).
An examiner still has discretion to make actions after the first non-final, but, clearly, the incentives go greatly against this.
From this beginning, management found an easy metric to rate examiners:very "objective" and requiring little "evaluation" of the quality of the work. Patent examining involved patent application "processing" Real quality only occured by hapenstance such as protest from the outside, but low production was the basis of a ticket out.
As far as the issue of software and business patents, look to the courts for that one; the Office, in true bureaucratic inertial fashion resisted those applications, but the patent bar won in the old Court of Customs and Patent Appeals and its post 1982 sucessor the Court of Appeals for the Federal Circuit. An express change in the Patent Law will be required to change this (or some kind of radical change in the legal thinking of the judges on the Court).
I havent read the RFC, and am not addressing the merits of this, but I was an examiner in the PTO starting in 1973. As indicated, software patent applications had been routinely rejected as not patentable subject matter under 35 USC 101 for years. One applicant, Benson, appealed the PTO's Board of Appeals Affirmance of the Examiner's rejection to the Court of Customs and Patent Appeals (who's jurisdiction was assumed by the then newly created Court of Appeals for the Federal Circuit around 1981). It was the CCPA, and successor CAFC that has been the driving force to change this position of the PTO, and they reversed the PTO's rejection. Now, the PTO convinced the Justice department to Appeal the CCPA reversal, a relatively rare occurance. The Supremes took the case, and reversed the CCPA, thus upholding the PTO's rejection.
The CCPA was not to be defeated; they looked at US vs. Benson as narrowly as possible, and , when several successive cases arose, they reversed the office almost every time this issue came up. There was no way that the PTO would be allowed to take every case up to the Supremes, and a much slimmer chance that the Supremes wanted to revisit Benson, so, case by case, Benson was whittled away. When the governing authority says you lose, you lose. So, the PTO just bent over and took it.
The only way to change this is by changing the law, i. e. Congress. Got cash? A lotta cash?
Of course, given that the current state of US patent law favors software patents as patentable subject matter the software still must comply with the anticipation issues under 35 USC 102 and obviousness under 35 USC 103, and my comment does not address this.
When I worked in the PTO, Lemmelson had quite a rep among lots of examiners..their eyes would roll; we had much the same opinion.
So, why didn't we prevent him for doing this? Well, absent prior art, or challenging on other grounds like lack of utility (35 USC 101) or insufficient disclosure (35 USC 112, first paragraph) there is not much to do. You don't have to actually build the invention to patent it, so it can all be a mental exercise. Remember, the law states "A Person shall be entitled to a patent unless..." with the "unless" being the specifics in the patent statutes, as interpreted by court decisions
Uhhhhh, minor nit...you are talking about obviousness (35 USC 103), not novelty (35 USC 102).
Also, if you would hve relied on your work, and that work had not been made "public", then that, alone,would not be effective to establish obviousness..you would need to show that the technique was generally known to those of "ordinary skill in the art at the time the invention (by the patent applicant) was made"
While IANAL reliance on testamony from engineers would be subject to attack interms remembering what was going on at a date likely many years in the past. Better to have real documents and then argue their applicability to the patent claim at issue.
Well, IANAL, either, but what apparently happened is the Plaintiffs moved to Have enforcement of the law enjoined, temporarily, until the trial was concluded (where it could be lifted, if the defendants won, or made permanent if the plaintiffs did). The trial judge, reading the material provided by both sides, did not make a final decision, but concluded tha the plaintiffs had a definite high probability of winning the case (allowing, of course, a differnt result if the evidence developed during the trial overcame this preliminary action).
The defendants appealed this specific action, arguing that the law should only be enjoined only after a full trial. The Appeals court simply looked a the Judge's resoning for this preliminary injunction (which, after all, is a possibly proper action, not some out of the blue, arbitrary action of a crazy judge) and found, on its surface, that the judge properly granted the injunction on the preliminary facts at hand. The appeals court is noat making an immutable judgement on the merits of the case; they just send it back to the trial court for the full trial. They could easily remove the injunction on an appeal after the final judgedment of the trial court, ruling that the trial judge (if he finds for the plaintiffs) incorrectly applied the law to the facts developed at trial.
The bottom line is that nothing about this action by the appeals court has any bearing on what they might decide on any final appeal that might be lodged after the trial is over. - Whew
Slashdot Mirror
Well, if your hypothetical application claims "a device that tells time" then I, the patent examiner just cites, say, one of those old church clocks from the second previous millenium....bingo! 35 USC 102 rejection. If time is a new concept, but you haven't described it so that one of ordinary skill in this art, or any art which is deemed closest to it, could not make and or use it, then it is rejected under
35 USC 112, first paragraph (inadequate disclosure)
If there is no clear indication how to "make and use" the claimed invention then such claims are invalid as a matter of law, 35 USC 112, first paragraph.
Well, there are maintenance fees:
35 USC 41 (b):
(b)
The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980:
(1)
3 years and 6 months after grant, $830.
(2)
7 years and 6 months after grant, $1,900.
(3)
11 years and 6 months after grant, $2,910.
Unless payment of the applicable maintenance fee is received in the Patent and Trademark Office on or before the date the fee is due or within a grace period of 6 months thereafter, the patent will expire as of the end of such grace period. The Director may require the payment of a surcharge as a condition of accepting within such 6-month grace period the payment of an applicable maintenance fee. No fee may be established for maintaining a design or plant patent in force.
This, of course, is just a money based disincentive to keep an unworked patent in force and is only applied three times after the patent is issued, but it is easier and more definitive to just collect a fee than to go through the hassle of trying to determine if the patent is being worked, or that a bona fide effort was made to work it.
Well, what is patentable subject matter?
Sec. 101. - Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
The 4 categories and the "new and useful improvement" (which seems to cover most inventions). Overly broad means that the broad claims are not adequately described to support the breadth (35 USC 112 covers inadequate disclosure), . Of course, if it is too broad then it will not be patentable under 35 USC 102 or 103.
This is pretty much covered by 35 USC 102:
A person shall be entitled to a patent unless -
(a)
the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent
"known or used" means public use; If the knowledge and use are not public, or if the use is "secret" (e. g. "black box"), then this section does not apply.
Also consider section (g):
(g)
(1)
during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
(2)
before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other
This most applies in the case of an interference between two inventors (assuming both independently made the invention) Note, that, although the one or both might have kept the invention "secret" they must demonstrate an intention to patent it, otherswise it fails under the "abandon, supress or conceal" prohibition.
Section 102 applies, strictly, to novelty, i. e. literaly what is described, but the courts have allowed lots of individual pieces of evidence to be combined to establish obviousness under 35 USC 103
True there is no requirement to "work" a patent as is common elsewhere, but since the 1980s there is an economic incentive to discourage sitting on a non-productive patent: maintenance fees that must be paid 3 or 4 times during the life of a patent. Of course, if you have a lot of money this means little to keep it around, but it is a small step away from the old 17 years free tht way it was previously
The substantive requirements for a (valid) patent are that it be 1) new (35 USC 102), useful and fully disclosed (35 USC 101), and unobvious (35 USC 103).
If by "stupid" you mean simple, then this should be covered by 3); if you mean that it doesn't make sense in terms of being pratical, then it's ok; who would it impede if it is of little "practical" use; on the other hand if it simply won't work, then it violates 2) (e. g., perpetual motion stuff). Also if it is too vague and not described well enough then it also violates 2) (inadequate disclosure). A claim wich is not new nor unobvious, but which is too broad also violates 1) in the sense that the disclosure will support only a subset of what is in the overbroad claim. This, typically, can happen in chemical situations where it is difficult to predict if the described benefits, say, of a calss of compounds will generally be applicable to a more generic description that could cover lots of totally inoperative chemicals. This problem is relatively rare in traditional "mechanical" inventions.
In the PTO, one boss I had used to say, when questioned "who the hell would use this?" on something so contorted that it had no "practial application", but which did exactly what it was described to do, would reply "Put it on the market" The PTO is supposed to interpret "utility" just on techical grounds (will it function as described and has it adequately been descloded so that others can make it achieve the function) and not make financial or more common interpretations of being "useful"; adding this to the burdens of the already strained examination process would just result in a whole new class of arguments, most hypothetical and subjective, as to what is useful.
Well, leaving aside what the meaning of "make any money" really means (the PTO used to call the examining groups "cost centers" rather than the private industry term "profit centers") there are fees charged for just filing the application as well as for certain things that happen during prosecution (such as extensions of time to respond to various office actions).
That being said, issuing an applicatin does result in more fees not incurred if it is abandoned: issue fees, and then maintenance fees fees paid during the life of the patent to keep it in force.
Furthermore the big increase in fees that started back in the 1980's has lead to Congress grabbing some of the revenue collected by the PTO for other purposes in the Federal Budget rather than doing things like, oh, say, increasing the average time an examiner can spend on a case, or more training, etc. Same old gummint crapola.
IANAL but IWAPE (I was a Patent Examiner (Damn, there goes any credibility I might have had)) but I think most patent infringment/validity trials are (or, at least, were) held in front of a US District Court Judge without a jury who makes rulings on both law and facts. A trial before a jury, however, is an option available to the accused infringer (defendant).
Well, 30 minutes is a bit low...The average Hours per Balanced disposal (very roughly the average of the number of first actiosns in an application and the number of disposals (allowance, abandonment, or appeal) is on the order of 16-17 hours (or at least it was 12 years ago). this will vary according to the "art" assigned to the examiner and the examiner's grade and signatory authority. To get 100% in production for the examining hours given (80 hours per bi week minus a diminishing number of hours that can be "written off") This target must be hit. But, this time includes reading the application, searching the prior art, writing actions, responding to amendments, researching any legal issues, plus a lot of overhead activity that can't be written off.Like processing International applications for which some time, but no production credit is given (unless it enters the US national phase).
The US patent bar has fought published applications and opposition, but did concede a bit in permitting Reexamination put into law, but this is very limited in what can be contested.
Well, when I was a.... patent examiner (left in '91) Almost all incentives (Awards, Outstandings) were based on super "Process Numbers", like Production >= 110%, Almost no amended cases over two months, etc. Yes, there was a "Quality" element tht was needed for an outstanding rating, but the way this worked, You wouldn't even be considered for anything beyond fully successfull if your production wasn't >= 110%, And the plan was weighted so that you couldn't get outstanding overall if production wasn't outstanding, too.
The work environment has even become worse than when I was there, since the making of the case to reject claims has become more difficult do to a progression of CAFC (Court of Appeals for the Federal Circuit, where all contested patent cases, both from the Office, and from the Federal District Courts go, and basically makes all the patent law since the Supremes don't take many patent cases) decisions that force the examiner to justify rejection of every feature, no matter how trivial. This has just added the burden to get out an office action, but the time an examiner to look at a case has not been comensurately increased. This results in lots of applications just jammed with lots of stupid, trivial dependent claims that used to be brushed off with a very general statement, or, in years gone by, could be ignored by the examiner on the doctrine of "multiplicity"
Exacerbating the problem is that fact that they have problems recruiting people, even in this post dot com tech depression, since the pay is still relatively low (by industry standatds), The atmosphere is one of being a production mill rather than a real professional environment, and, well, it is "The Gummint" Still, compared to many other govt agencies you won't see lots of people just goldbricking around, becase of the constant pressure to get "numbers", which is reinforced with reports every bi-week (SPE (boss) to examiner "Why was your production only 85% last bi-week?)
As for the business of being a cash cow, this was done by Congress as part of the overall smoke and mirrors accounting, another instance of robbing Paul to pay Paul (or was that vice versa?). Not surprising coming from our political "leadership".
Well, as an ex-examiner I can say that, while GS-1224 salaries are not up "dot bomb" levels they are high by Federal standards (Working Primary Examiners are at the GS-14 level).
/. flaming nontheless.
The claim on examiners "less than spectacular education and work histories", also, is not really true. You can find some dolts, to be sure, but many have reasonably decent credentials,
The big problem, here, is is keeping people; they have just cant get people. This is with an examining corps now about 3,500; during one period shortly after I started it was down to about 800. Yet, the number of applications has skyrocketed from about 100,000 annual filings to many times that (a friend I still keep in contact with says it's approaching a million). As I have often commented in the past PTO management is process oriented, not substance oriented. "get your production up; don't let amendments sit around; get that action out"; That drumbeat has been going on for for over 30 years, now. This environment has contributed to the large turnover rate, a fact managment refuses to acknowlege.
As for the Office policy vs Congress, don't forget the other branch of Federal Government: the courts. It was the Court of Customs and Patent Appeals, succeded by the Court of Appeals for the Federal Circuit that basically rammed software and business method patents on a reluctant PTO; that's how the appeals got there in the first place. Once An issure is decided by the court the only way to change it is by Act of Congress, which, as you point out, they have not been paid off......errrrrr......convinced to do. The PTO cannot arbitrarily decide what is patentable subject matter under 35 USC 101; if the court says programs and business methods are patentable, ya gotta examine them on the merits (I don't want to ignite the whole issue of obviousness here; that's been beaten to death here).
Damn, you beat me to this point because my dsl connection was down last night (thanks earthlink/genuity, you shitheels).
This sure does sound like a "Lemelson" situation...the long string of "continuations" is often the sign of an aggresive strategy in obtaining claims, but the real tip off are the "continuation-in-parts"; a Straight" continuation is an application that is filed before the abandonment of its "parent" application, and which contains a reference to the parent application; It must have no "new matter" added from the parent application. The legal consequence is that the "continuing" application is acorded the effect of the parent application's filing date, principally meaning a prior art reference that would be a "statutory bar" (35 USC 102(b)) against the child patent might no longer because the parent filing date goes behind the the reference (35 USC 102(e), or within a year of the reference (where the inventor can still potentially "swear behind" the reference (35 USC 102(a))
But, the disclosure of the invention must be the SAME as the parent application; if there is "new matter" in the child application, any claims wich have any reliance on the new matter only get the child application's filing date; a child application in this case is called a "continuation in part", or CIP. A CIP may have different claims that rely on different parts of the disclosure, and the prior at will, therefore, have separate "competance" (i. e., based on the date of the the referencee rather than the substance of its content)relative to each claim.
with the rat's nest of applications shown in the subjecct patents it is a fair guess that the applicant tried to assert all the claims were entitled to the earliest date and haggle the office; analyzing this just adds another complication to the whole stew.
I remember getting a CIP that was transferred to me from another examining group; I found better art and just stood my ground; for some reason, the applacant did not appeal, but just kept filing continuations; as soon as I was aware of a refiling, I quickly issued a "first action final rejection"; applicant refiled. This charade contined for about a half dozen continuations; the issue never changed and was never really argued; a clear abuse of the system, but there was (and I don;t think there is) any legal basis to prevent this kind of abuse.
No, we know who allowed the patent; that's right on the front page (follow the link).
What she was referring to was the Request for Reexamination. I forget when they are made public, but, as of about 12 years ago, they were open to the public until a decision to Reexamine the patent was granted. After that. there was would be no public participation in the proceedings.
The requester should be identified when the public notice is filed identified, but it looks like IBM mooted this pretty quickly, so, perhaps, it never got to that stage.
Novelty
Non-obvious subject matter
I replied to the parent more extensively, so I'll actually try some brevity here.
You are quite correct that examiners are not motivated by fees; most are cynical about the various fee plans; when multiple dependent claims were introduced most examiners groaned because they were worried that applicants would screw up the provisions, creating Byzentine heirarchies of claims, hard to understand, and also encouraging applicants adding scores of stupid, tedious ependtent claims, given them the opportunity to argue every damn permutation of features; the examiner risked being reversed on a lot of such dip-shit claims if the case went to appeal, meaning lots of tidme and effort to fend off crapola.
That leads to what the motivation really is: meeting the production goals, acting on amended cases withing two months, and all kinds of "process" metrics. There was a "quality" metric, but you basically got a pass on it as a default; Getting an oustanding rating or an unsatisfactory required lots of documentation by the supervisor, so that was rare; The process stuff was automatic and self documenting.
You guess where quality went.
Finally, a patent thread that hasn't been beaten to death when I get to it!
Your idea for a "deposit" is interesting, but I think it is a bit too harsh. Like many other posters have mentioned it will just raise the risk to entities (companies and individuals). Often, applications get prosecuted past the final rejection where the applicant wants to persue it, and has to file a "continuing" application, complete with a new filing fee. Heaping on another deposit (the original having been forfeit by that application becoming abandoned) just multiplies the risk, unneccessarily IMHO.
More importantly, your comment about patents being allowed "grudgingly" is the way it used to be, say, over 30 years ago. The applicant had to work get some claims allowed. Also, it was existing law that business processes and, after the invention of programmable computers, programs were just not patentable subject matter. So, what changed?
Two main factors, driven by the Patent Bar (Thats the community of Patent Attorneys for those of you thinking free as in beer):
1) patent applications were taking lots and lots of time to prosecute. The response: "Compact Prosecution"; Only three months to respond to Office Actions rather than the Statutory six (Statue permitted period to be shortened to as little as 30 days); second action is made final (limited ability to respond/amend). Also, examiners were required to produce so many first actions and disposals (abandonments and allowances) against a quota. non-final second and subsequent non-allowances didn't count toward the goal. So, the incentive was to get out work as fast as possible, and a terrible incentive to just issue the application on the first action ("first action issue", two "counts") was really tempting, especially if you were behind and getting nagged by your supervisor for "low production" every two weeks. Whil the "old school" examiners took a very jaundiced eye toward such actions (they were trained NEVER to allow on the first action) a new generation, trained by the "new management" (what became our PHBs)it was not scandalous UNLESS it led to some embarassment. High production was a visible, and easy to validate metric; high quality was invisible, hard to measure, and, thus, paid lip service.
2) The expanding into business method and software patents was driven by the court system by patent applicants, not the PTO. The PTO rejected several cases over the years and, in brief, got shot down by the Court of Customs Appeals, it's sucessor, the Court of Appeals for the Federal Circuit, and, ultimately, the Supreme Court. This done, the matter has been settled, so the PTO must examine them on the limits; they have no authority to create rules to countermand that; when you appeal an issue and you lose, that's it, from a legal perspective; only action by Congress can change this (similarly to the "Disney Protection Act" for Copyrights). As to the question of, given the fact of business method and software patents being patentable subject areas (35 USC 101), that such applications are not having the proper application of Novelty (35 USC 102) or Non-obviousness (35 USC 103)is a whole other issue I won't discuss here.
So, in a nutshell, the one-two punch of a PHB production/process oriented management and a court system that has pretty much decided that "anything under the sun" is properly submittable in a patent application have lead us to where we are today.
Nit picking correction:
Extending copyrights are unconstitutional because they fail to foster "science".
Art I, Section 8, US constitution has a parallel structure to associate "science and useful arts" with "authors and inventors" with "writings and discoveries"
And, yes, Congress is sure screwing with the meaning of "limited times"
Note that the date of invention is generally not the same as the patent application filing date (or, effective filing date.
Basically, a reference having a date more than one year before the filing date are valid, even if the invention was "invented" prior to the reference publication date; The PTO presumes that the date of invention is the filing date; to establish an earlier date of invention (where the reference publication date is less than a year from the filing date) the applicant must file a affidavit or declaration with sufficient facts (including things like research notebooks and the like) to establish the the invention was made prior to the publication date of the reference).
I posted above on some of the internal reasons how productions incentives has degraded the ethic to do quality work in the PTO. The problem is one of a managment philosophy over the last 30+ years to worship the god of production over the virtue of quality. Even the most diligent examiner is faced with the problem of being diligent with the reality of not getting fired for low production, not turning around amended cases quickly enough, etc.
There really are lots of bright people in the PTO (as well as the ususal portion of duds) but they get eroded down to either always being on the edge of being fired (because their production is low) or they have to compromise their own standards to avoid this fate. Either way, they are miserable, and, if they have waited too long, they are trapped in an occupation that has limited applicability elsewhere (Patent Attorney/Agent/Searcher).
The result: lots of turnover from people who make the correct decision quickly (leave fast, stay long enough to get law degree then go on the outside, etc.) leaving the inept and otherwise unemployable, the competant but ground down by the institutional crappy environment, and the few who ae luck to be competant and in an art that enables them to do good work and satisfy the bean counters.
And the management wonders why turnover is so high.
This is from an ex-GS-1224 (Patent Examiner)
The issue of quantity vs. quality has been a long standing issue in the PTO; it was a raging issue back when I joined in 1973. In the "olden days" (say up until the 1960's, according to the then lore) an examiner could make multiple rejections against an insistant applicant; the ethic was to reject claims. Also, the examiner's judgement was given high authority, and applicants had to make a good case to overturn adverse actions.
Well, the patent bar got pissed and started to get more aggressive about challenging examiners; after all, there was abuse of the system, and it is not much better to reject somtthing over clearly irrelevant prior art then to pass out a patent over a clearly anticipating reference. Also, applicants were concerned that applications were taking several years to get issued, making the whole process too expensive and time consuming.
As a result of these pressures a new bred of management was cultivated to counter this. One of the key provisions of this effort was the creation of the "Compact Prosecution" policy. This said that a typical contested application would receive a first action, then, on response by applicant, a second action, either allowance or a "final" rejection. If finally rejected, the applicant could appeal, but was not entitled to have any pre appeal submissions to be considered except under limited circumstances.
To "encourage" examiners to to follow compact prosecution the perfomance evaluation system for them was changed to significantly count an examiner's "production" by giving a credit for the first action and for the disposal of the application (generally abandonment or allowance).
An examiner still has discretion to make actions after the first non-final, but, clearly, the incentives go greatly against this.
From this beginning, management found an easy metric to rate examiners:very "objective" and requiring little "evaluation" of the quality of the work. Patent examining involved patent application "processing" Real quality only occured by hapenstance such as protest from the outside, but low production was the basis of a ticket out.
As far as the issue of software and business patents, look to the courts for that one; the Office, in true bureaucratic inertial fashion resisted those applications, but the patent bar won in the old Court of Customs and Patent Appeals and its post 1982 sucessor the Court of Appeals for the Federal Circuit. An express change in the Patent Law will be required to change this (or some kind of radical change in the legal thinking of the judges on the Court).
I havent read the RFC, and am not addressing the merits of this, but I was an examiner in the PTO starting in 1973. As indicated, software patent applications had been routinely rejected as not patentable subject matter under 35 USC 101 for years. One applicant, Benson, appealed the PTO's Board of Appeals Affirmance of the Examiner's rejection to the Court of Customs and Patent Appeals (who's jurisdiction was assumed by the then newly created Court of Appeals for the Federal Circuit around 1981). It was the CCPA, and successor CAFC that has been the driving force to change this position of the PTO, and they reversed the PTO's rejection. Now, the PTO convinced the Justice department to Appeal the CCPA reversal, a relatively rare occurance. The Supremes took the case, and reversed the CCPA, thus upholding the PTO's rejection.
The CCPA was not to be defeated; they looked at US vs. Benson as narrowly as possible, and , when several successive cases arose, they reversed the office almost every time this issue came up. There was no way that the PTO would be allowed to take every case up to the Supremes, and a much slimmer chance that the Supremes wanted to revisit Benson, so, case by case, Benson was whittled away. When the governing authority says you lose, you lose. So, the PTO just bent over and took it.
The only way to change this is by changing the law, i. e. Congress. Got cash? A lotta cash?
Of course, given that the current state of US patent law favors software patents as patentable subject matter the software still must comply with the anticipation issues under 35 USC 102 and obviousness under 35 USC 103, and my comment does not address this.
When I worked in the PTO, Lemmelson had quite a rep among lots of examiners..their eyes would roll; we had much the same opinion.
So, why didn't we prevent him for doing this? Well, absent prior art, or challenging on other grounds like lack of utility (35 USC 101) or insufficient disclosure (35 USC 112, first paragraph) there is not much to do. You don't have to actually build the invention to patent it, so it can all be a mental exercise. Remember, the law states "A Person shall be entitled to a patent unless..." with the "unless" being the specifics in the patent statutes, as interpreted by court decisions
Uhhhhh, minor nit...you are talking about obviousness (35 USC 103), not novelty (35 USC 102).
Also, if you would hve relied on your work, and that work had not been made "public", then that, alone,would not be effective to establish obviousness..you would need to show that the technique was generally known to those of "ordinary skill in the art at the time the invention (by the patent applicant) was made"
While IANAL reliance on testamony from engineers would be subject to attack interms remembering what was going on at a date likely many years in the past. Better to have real documents and then argue their applicability to the patent claim at issue.
Well, IANAL, either, but what apparently happened is the Plaintiffs moved to Have enforcement of the law enjoined, temporarily, until the trial was concluded (where it could be lifted, if the defendants won, or made permanent if the plaintiffs did). The trial judge, reading the material provided by both sides, did not make a final decision, but concluded tha the plaintiffs had a definite high probability of winning the case (allowing, of course, a differnt result if the evidence developed during the trial overcame this preliminary action).
The defendants appealed this specific action, arguing that the law should only be enjoined only after a full trial. The Appeals court simply looked a the Judge's resoning for this preliminary injunction (which, after all, is a possibly proper action, not some out of the blue, arbitrary action of a crazy judge) and found, on its surface, that the judge properly granted the injunction on the preliminary facts at hand. The appeals court is noat making an immutable judgement on the merits of the case; they just send it back to the trial court for the full trial. They could easily remove the injunction on an appeal after the final judgedment of the trial court, ruling that the trial judge (if he finds for the plaintiffs) incorrectly applied the law to the facts developed at trial.
The bottom line is that nothing about this action by the appeals court has any bearing on what they might decide on any final appeal that might be lodged after the trial is over. - Whew