If you are for real, you can send an initial email (WITHOUT any confidential or personal information) to my Slashdot name at yahoo dot com. I'll reply with my contact information.
I agree - that's why I have been an ACM member since I was a student and have given presentations for them. I've recently considered joining IEEE as well.
In my experience, the problem is with Examiners' lack of experience with the legalities of patent law as well as lack of adequate time to do the job for each patent. I always knew time was an issue but never realized how bad the problem was until I read a post by a former Examiner in this thread.
Examination guidelines are revised - the guide is freely available at the USPTO website and is called the MPEP - manual of Patent Examining Procedure. It is a VERY long book, but is in both PDF and HTML forms online.
Unacceptable is a very appropriate (and acceptable) word.
I do both - patent preparation and prosecution as well as litigation. Yes, people often specialize in one or the other. I enjoy both. I also counsel clients on where development efforts would be most advantageous and provide opinions re: patentability and noninfringement, among others.
Your choice of law school will be critical for some firms. The best advice is to get into the best law school you possibly can. I was fortunate enough to be admitted to a top 20 law school. Franklin Pierce, although not top 20, has a well-regarded IP program, especially in New England.
I have a BS in Management magna cum laude, a JD cum laude, and am completing my MS in Comp Sci.
Sorry this is brief but I have to turn my attn. elsewhere - I'll post a follow-up later.
It is an EXCELLENT career move. IP is one of the few growth areas in the law, and there are many aspects and sub-specialties. I have worked for some of the largest corporations in the world as well as some of the smallest and individuals. There are great ideas everywhere.
In this field I have more job security than even civil servants. I can essentially pick where I want to live and what I want to do. Going into IP, specifically patent law, was the best career move I have ever made. I am happy to share my experiences and tell you anything you want about LS, bar exams, etc.
BTW - the SYSTEM is not broken - fee diversion prevents it from operating properly. Systems have inputs and outputs. Lack of an essential input affects the output. It is like a jet plane being operated on gasohol - maybe it will do something, but it won't work the way it is intended.
The Patent Bar and top users of the USPTO have criticized and fought against the practice for years - and lost, unfortunately. The root cause of this problem is that it is impossible to get legislators to give up a source of revenue.
The triple damages are awarded against a willful infringer - someone who knows a valid patent exists and yet infringes anyway. The possibility of being liable for triple damages actually ENCOURAGES an accused infringer to do a RIGOROUS prior art search to invalidate the patent. However, that has nothing to do with the examination phase when the patent is in the USPTO. Triple damages can occur after the patent issues and after a trial.
My "argument" about anything under the sun... is not "bullshit." it is the law. Quote:
"The repetitive use of the expansive term "any" in 101 shows Congress's intent not to place any restrictions on the subject matter for which a patent may be obtained beyond those specifically recited in 101. Indeed, the Supreme Court has acknowledged that Congress intended 101 to extend to "anything under the sun that is made by man." Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980); see also Diamond v. Diehr, 450 U.S. 175, 182 (1981). Thus, it is improper to read limitations into 101 on the subject matter that may be patented where the legislative history indicates that Congress clearly did not intend such limitations. See Chakrabarty, 447 U.S. at 308 ("We have also cautioned that courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed.'" (citations omitted)).
In the interest of full disclosure, I am a patent attorney who primarily does software patents. Every patent attorney in the country knows this fact: Fee Diversion hampers the ability of the PTO to do its job properly.
The USPTO is a profit center for the government. Last December, the amount of that profit was set to DRAMATICALLY increase because of dramatic increases in user fees such as filing fees and examination fees, among others. Instead of letting the PTO keep that money to do its job, Congress "diverts" a large portion for other uses, including Homeland Security, among others.
Contrary to what the parent post said, namely, "Where anything under the sun is patentable, it puts an unbelievable amount of pressure on the patent office," anything under the sun is NOT patentable. Anything under the sun MADE BY MAN has the POTENTIAL to be patentable - so long as it meets the criteria of the Patent Act, namely, novelty, utility, and non-obviousness. Despite the seeming simplicity of these terms, there are very well-defined legal tests behind each one that must be applied properly. Each of those terms has thousands of pages of case law / judicial interpretation behind it.
The PTO's inability, caused by Congress, to keep adequate resources to properly do its job directly results in poorer quality examinations because the Examiners do not have the time, experience and training to rigorously apply the rules in every case. As a patent attorney, I have an ethical duty to provide valuable services to a patent applicant. My services are valuable if I can point out and properly describe my clients' inventions and the legal reasons why those inventions are entitled to patent protection. The way I do that is by keeping current in my technical field (Computer Science) and the law. However, I cannot know every piece of prior art out there. The best I can do is try to know as much as I can and write patent claims (the portion that defines the invention) that do not also describe prior art. Every patent applicant relies to a certain extent on the Examiner who receives their application to perform a good prior art search so that the Applicant can either point out how their invention is different from the prior art or can adjust the claims so that those claims no longer describe the prior art along with the invention. In fact, the Applicant is PAYING for that search.
A claim that describes an invention but also describes the prior art is invalid. I do my best to draft solid claims but the Examiner also has to do a solid search. Some people think that it is in the Applicant's best interest to have very broad claims so that people will have to litigate to prove the claims are invalid. I think that approach, if taken, is foolhardy because of potential legal liability on the part of the patent owner. It is also an abuse of the system. Abuses of the system can be minimized to a certain degree by having higher quality patent searches by well-trained Examiners. The best way to get that is to tell Congress to stop diverting fees.
You and John Paczkowski (Good Morning Silicon Valley - San Jose Mercury News) should get together. Great post. And yes, I am a Mac user - lost count of how many machines over the years.
For whatever reason, I like having a RISC chip. In keeping with the philosophy that there is elegance in simplicity and that software enginneering is all about managing complexity, I can't see why someone would choose a CISC chip over a RISC chip. I am not an architecture zealot, but fewer instructions means fewer opportunities for errors. I am all for minimizing opportunities for error.
That said, I am making do with my PowerBook and my 1.6 GHz single processor G5 and will be for a while to come. When the last of the G5s and PowerBooks with PowerPC chips roll off the line, I'll be replacing my current machines with the highest-end models with PPC chips. When I am ready to replace those, I'll consider whether Mac OS X is still the best choice for me.
I have been a Mac user since 1986 and have also used a number of *nix platforms, BeOS, NeXT/OpenStep and various other OSes whose names I do not recall. At each step of the way, when it was time to replace my personal hardware, I chose a Mac because it was the best option for me. I may yet choose Mac again after the processor switch. Then again, I may not. What I WILL choose is the machine/OS that:
is most stable;
is easiest for me to use/configure;
requires me to spend the least amount of money (and time) replacing peripherals and/or software; and, most importantly,
makes me most productive.
Simply put, I may be the sysadmin of my home network, but I don't want to spend a lot (over 5 min/day average) of time BEING the sysadmin, if you know what I mean.
My only quibble is purely semantic: There is no "open and obvious" standard in patent law - it is the non-obvious requirement. Under 35 USC 103, a patent cannot issue on an "obvious" invention. To create a prima facie case of obviousness (that is, to construct a valid argument that a claimed invention is obvious), an examiner (or litigant in an infrinegement suit) must show that all the elements of a claim of a patent are present in two or more prior art references. I have seen cases where up to 5 references have been used. If all the elements of the claim are present in a single prior art reference, the claim is said to be anticipated. Anticipation is the preceeding section of the Patent Act - 35 USC 102.
it seems that the first to file is specifically meant to avoid the type of scenario you listed.
it is so intended. The problem is that little inventors get squeezed out. Large corporations can devote greater resources to lawyers to draft applications more quickly and therefore "beat" a small inventor whose lawyer takes a few more weeks to finish an application.
Also, don't forget that if someone publishes first, even under first to file rules the publisher still has 1 year in the US to file the application. Publication will destroy patent rights abroad (in "absolute novelty" countries) but not in the US. As long as the publishing inventor files within a year, the publication will not be prior art against that inventor.
Glad you like the sig. Best of luck in law school and on the patent bar.
I have not studied this bill (yet). However, this legislation has been the subjecvt of a fair amount of discussion among members of the patent bar. Generally, bills of this nature do not replace the law as it exists as a whole but rather make certain specific changes. Therefore, the rest of the law of patentability (novelty, utility, non-obviousness) would remain as-is.
It still seems to me that in the situation you laid out, under current rules, if Smith posted an article or some sort of publication concerning the invention, that would be considered prior art.
That is correct. In that case, Smith could publish before Jones filed and have the article be initially considered as prior art. However, if Jones completed his invention before publication, he could show the PTO sufficient evidence to prove that he invented before publication and have the Smith publication removed as prior art because the publication was not prior to his invention. In that case, Smith and Jones would likely become involved in a process called "interference" at the PTO where each argues that he was first. BTW - it is an interference proceeding because when 2 patent applications claim the same thing, they are said to "interfere" with each other. Think of this as the Highlander Rule - "There can be only one." Only 1 party can have exclusive rights to an invention. I have not studied the bill in enough detail to know how this would change exactly.
And you couldn't get a patent on the idea because it has been in use in other countries and discussed in detail in the US for a long while now. 35 U.S.C. sec. 102(b).
Short answer: NO. What you described is derivation and is not permitted by the patent statute. First to file would mean the first true inventor to file. Under this system, if 2 inventors independently come up with the same thing, the one that gets his paperwork to the USPTO first gets the patent.
Currently, the system is: Inventor Smith invents X on May 1 and Inventor Jones on May 2. Jones files his application on May 31 and Smith files his on June 2. Who gets the patent? Smith, even though he was second to file because he was first to invent.
Under the first to file system, Jones gets the patent because he is first to file. In my experience, the "added costs" of proving first inventorship are not sufficient to justify this change. First to invent protects independent inventors more than first to file.
What you are missing is that the patent statute does not allow for this. What you described is called "derivation" - the applicant essentially got the invention from someone else. Once the open source code is public, it is prior art that would prevent a patent from issuing on any invention contained in the code.
However, I do agree that the first to file system is a bad idea. The rest of the world (that is, just about every other country) does not.
Slashdot Mirror
If you are for real, you can send an initial email (WITHOUT any confidential or personal information) to my Slashdot name at yahoo dot com. I'll reply with my contact information.
Yes - I took the patent bar and passed. I qualified under Option B once I had enough CS credits. Again, sorry but more later.
In my experience, the problem is with Examiners' lack of experience with the legalities of patent law as well as lack of adequate time to do the job for each patent. I always knew time was an issue but never realized how bad the problem was until I read a post by a former Examiner in this thread.
Examination guidelines are revised - the guide is freely available at the USPTO website and is called the MPEP - manual of Patent Examining Procedure. It is a VERY long book, but is in both PDF and HTML forms online.
Unacceptable is a very appropriate (and acceptable) word.
Your choice of law school will be critical for some firms. The best advice is to get into the best law school you possibly can. I was fortunate enough to be admitted to a top 20 law school. Franklin Pierce, although not top 20, has a well-regarded IP program, especially in New England.
I have a BS in Management magna cum laude, a JD cum laude, and am completing my MS in Comp Sci.
Sorry this is brief but I have to turn my attn. elsewhere - I'll post a follow-up later.
It is very disturbing to hear these kinds of stories. Thanks for the view from the inside.
In this field I have more job security than even civil servants. I can essentially pick where I want to live and what I want to do. Going into IP, specifically patent law, was the best career move I have ever made. I am happy to share my experiences and tell you anything you want about LS, bar exams, etc.
BTW - the SYSTEM is not broken - fee diversion prevents it from operating properly. Systems have inputs and outputs. Lack of an essential input affects the output. It is like a jet plane being operated on gasohol - maybe it will do something, but it won't work the way it is intended.
Best of luck in the future.
The Patent Bar and top users of the USPTO have criticized and fought against the practice for years - and lost, unfortunately. The root cause of this problem is that it is impossible to get legislators to give up a source of revenue.
My "argument" about anything under the sun ... is not "bullshit." it is the law. Quote:
"The repetitive use of the expansive term "any" in 101 shows Congress's intent not to place any restrictions on the subject matter for which a patent may be obtained beyond those specifically recited in 101. Indeed, the Supreme Court has acknowledged that Congress intended 101 to extend to "anything under the sun that is made by man." Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980); see also Diamond v. Diehr, 450 U.S. 175, 182 (1981). Thus, it is improper to read limitations into 101 on the subject matter that may be patented where the legislative history indicates that Congress clearly did not intend such limitations. See Chakrabarty, 447 U.S. at 308 ("We have also cautioned that courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed.'" (citations omitted)).
State Street Bank & Trust Co., v. Signature Financial Group, Inc.
Go back and re-read my post. At least 10 times. That is NOT what I said.
The USPTO is a profit center for the government. Last December, the amount of that profit was set to DRAMATICALLY increase because of dramatic increases in user fees such as filing fees and examination fees, among others. Instead of letting the PTO keep that money to do its job, Congress "diverts" a large portion for other uses, including Homeland Security, among others.
Contrary to what the parent post said, namely, "Where anything under the sun is patentable, it puts an unbelievable amount of pressure on the patent office," anything under the sun is NOT patentable. Anything under the sun MADE BY MAN has the POTENTIAL to be patentable - so long as it meets the criteria of the Patent Act, namely, novelty, utility, and non-obviousness. Despite the seeming simplicity of these terms, there are very well-defined legal tests behind each one that must be applied properly. Each of those terms has thousands of pages of case law / judicial interpretation behind it.
The PTO's inability, caused by Congress, to keep adequate resources to properly do its job directly results in poorer quality examinations because the Examiners do not have the time, experience and training to rigorously apply the rules in every case. As a patent attorney, I have an ethical duty to provide valuable services to a patent applicant. My services are valuable if I can point out and properly describe my clients' inventions and the legal reasons why those inventions are entitled to patent protection. The way I do that is by keeping current in my technical field (Computer Science) and the law. However, I cannot know every piece of prior art out there. The best I can do is try to know as much as I can and write patent claims (the portion that defines the invention) that do not also describe prior art. Every patent applicant relies to a certain extent on the Examiner who receives their application to perform a good prior art search so that the Applicant can either point out how their invention is different from the prior art or can adjust the claims so that those claims no longer describe the prior art along with the invention. In fact, the Applicant is PAYING for that search.
A claim that describes an invention but also describes the prior art is invalid. I do my best to draft solid claims but the Examiner also has to do a solid search. Some people think that it is in the Applicant's best interest to have very broad claims so that people will have to litigate to prove the claims are invalid. I think that approach, if taken, is foolhardy because of potential legal liability on the part of the patent owner. It is also an abuse of the system. Abuses of the system can be minimized to a certain degree by having higher quality patent searches by well-trained Examiners. The best way to get that is to tell Congress to stop diverting fees.
You and John Paczkowski (Good Morning Silicon Valley - San Jose Mercury News) should get together. Great post. And yes, I am a Mac user - lost count of how many machines over the years.
That said, I am making do with my PowerBook and my 1.6 GHz single processor G5 and will be for a while to come. When the last of the G5s and PowerBooks with PowerPC chips roll off the line, I'll be replacing my current machines with the highest-end models with PPC chips. When I am ready to replace those, I'll consider whether Mac OS X is still the best choice for me.
I have been a Mac user since 1986 and have also used a number of *nix platforms, BeOS, NeXT/OpenStep and various other OSes whose names I do not recall. At each step of the way, when it was time to replace my personal hardware, I chose a Mac because it was the best option for me. I may yet choose Mac again after the processor switch. Then again, I may not. What I WILL choose is the machine/OS that:
- is most stable;
- is easiest for me to use/configure;
- requires me to spend the least amount of money (and time) replacing peripherals and/or software; and, most importantly,
- makes me most productive.
Simply put, I may be the sysadmin of my home network, but I don't want to spend a lot (over 5 min/day average) of time BEING the sysadmin, if you know what I mean.Probably. And sadly. Very sadly.
I have not noticed any posts from Roland in a long while. It was nice while it lasted.
wserraNOSPAM @ gOOGLEmail dot com
Remove letters in CAPS
My only quibble is purely semantic: There is no "open and obvious" standard in patent law - it is the non-obvious requirement. Under 35 USC 103, a patent cannot issue on an "obvious" invention. To create a prima facie case of obviousness (that is, to construct a valid argument that a claimed invention is obvious), an examiner (or litigant in an infrinegement suit) must show that all the elements of a claim of a patent are present in two or more prior art references. I have seen cases where up to 5 references have been used. If all the elements of the claim are present in a single prior art reference, the claim is said to be anticipated. Anticipation is the preceeding section of the Patent Act - 35 USC 102.
it is so intended. The problem is that little inventors get squeezed out. Large corporations can devote greater resources to lawyers to draft applications more quickly and therefore "beat" a small inventor whose lawyer takes a few more weeks to finish an application.
Also, don't forget that if someone publishes first, even under first to file rules the publisher still has 1 year in the US to file the application. Publication will destroy patent rights abroad (in "absolute novelty" countries) but not in the US. As long as the publishing inventor files within a year, the publication will not be prior art against that inventor.
Glad you like the sig. Best of luck in law school and on the patent bar.
Not nearly as sad as mine. My wit was so dry it crumbled and blew away before it could be detected.
It still seems to me that in the situation you laid out, under current rules, if Smith posted an article or some sort of publication concerning the invention, that would be considered prior art.
That is correct. In that case, Smith could publish before Jones filed and have the article be initially considered as prior art. However, if Jones completed his invention before publication, he could show the PTO sufficient evidence to prove that he invented before publication and have the Smith publication removed as prior art because the publication was not prior to his invention. In that case, Smith and Jones would likely become involved in a process called "interference" at the PTO where each argues that he was first. BTW - it is an interference proceeding because when 2 patent applications claim the same thing, they are said to "interfere" with each other. Think of this as the Highlander Rule - "There can be only one." Only 1 party can have exclusive rights to an invention. I have not studied the bill in enough detail to know how this would change exactly.
That's not the way it would work. See the example I posted just above.
And you couldn't get a patent on the idea because it has been in use in other countries and discussed in detail in the US for a long while now. 35 U.S.C. sec. 102(b).
Currently, the system is: Inventor Smith invents X on May 1 and Inventor Jones on May 2. Jones files his application on May 31 and Smith files his on June 2. Who gets the patent? Smith, even though he was second to file because he was first to invent.
Under the first to file system, Jones gets the patent because he is first to file. In my experience, the "added costs" of proving first inventorship are not sufficient to justify this change. First to invent protects independent inventors more than first to file.
However, I do agree that the first to file system is a bad idea. The rest of the world (that is, just about every other country) does not.
When and where can I pre-order my Mr. Fusion energy system? And does it come with the DeLorean retro-fit kit?
Agreed. Although I predict that AAPL is negotiating for WiMax connectivity for the next-gen Airport (AirMax?).