The death of the patent troll has given way to a new villain, the bad patent. And, surprising to no one, the anti-inventor lobby, made up of multinational Goliaths like Google, tell us that Congress, the Administration and the courts must urgently destroy bad patents.
Killing the fictitious patent troll has already strangled U.S. innovation in the cradle. All three branches of the government rapidly changed every aspect of the patent system to work against the small for the benefit of the large. Today, the PTAB has a kill rate of over 90%. Alice v. CLS Bank’s abstract idea is killing 67%. eBay v. MercExchange for all practical purposes allows invention thieves to keep what they’ve pillaged because there is no ability for innovators to get an injunction that would prevent ongoing theft. Damages are obliterated and are in freefall. Venue laws now create litigation chaos. Virtually every decision coming out of Washington for the last 12 years has harmed inventors and startups for the benefit of huge multinational infringers.
And business leaders, economists and academics actually wonder why the U.S. economy has struggled and start-up, which create 50% of new jobs, are moving overseas?
It is no secret that the legal system protecting inventors and their investors has collapsed. Last year, the US Chamber of Commerce ranked the US patent system number 10 in the world, tied with Hungary, a former puppet state of the Soviet Bloc. Good for Hungary! But something is terribly wrong when the U.S. is tied with Hungary.
Early stage funding is down 62%. The U.S. is at a 40 year low in startups. China strengthened their patent system while we continue a purge that has nearly destroyed the U.S. patent system. Europe and China are both on course to control complete swaths of technology critical to our national security and infrastructure.
But here we go again with a new villain, the bad patent. With smoke still rising from patent reform rubble, the Google lobby wants more. If we are going to pass laws based on an imaginary creature summarized in a catchy phrase, perhaps it is a good idea to define exactly what it means before making new law.
What the heck is a bad patent? That is a good question, and one that needs to be answered before Congress spends even a second considering what Google has repackaged and is peddling.
I think we should assume that since the patent system has proven to create a tangible positive economic effect, a bad patent must have a tangible negative economic effect of some sort in order to have any credibility. And that effect must outweigh the positive economic effect of the patent system before any further changes are made. This means that the effects of both must be quantified and actions taken must be the minimum necessary to correct any perceived problem.
So let us first define what a bad patent is. A quick search shows that bad patents are discussed in many articles, op-eds and academic papers. A small percentage use examples to shore up their own particular definition. Chief among these examples is U.S. Patent No. 5,443,036, Exercising a cat, issued in 1995. In a nut shell, the patent claims a method for inducing cats to exercise by getting them to chase the light beam of a laser pointer. I’ve done this with a cat and she loved it.
What is the net economic effect of this so-called bad patent? The patent was examined by the USPTO. Since the USPTO is funded by the fees it collects for examination, maintenance and the PTAB, it is not a burden on tax payers. The inventor of the Exercising a Cat patent paid examination fees to the USPTO. The first and second maintenance fees were also paid years after the patent issued. This is a net positive effect because the USPTO earned fees and taxpayers did not need to support the USPTO with taxes.
Another positive economic effect is that the invention is publicly disclosed so that others can improve it. The Exercising a Cat patent has many follow up patents from different inventors, including laser pointers specifically designed for this activity.
If a patent is a bad patent, there must be a negative economic effect. But what is the negative economic effect with respect to this cat exercising method?
You might think the’036 patent is stupid, but does it seem at all logical to use a cat exercising method as the basis for further modification of the U.S. patent system in the year 2018? Even assuming this patent should have issued, in what universe would it make sense to set patent policy for the 21st century based upon a cat exercising patent?
And therein lies the problem. Changes to the patent laws and rules apply equally to all patents, which is why suddenly critics of the patent system seem so excited to make fun of this cat exercising method. Point to something that looks silly, laugh it off, and then recommend reforms that further gut the patent system across the board. A clever strategy, and one that has unfortunately worked in the past.
Of course, pointing and laughing is not evidence. It is the type of juvenile behavior one would expect in Junior High. Yet, pointing, laughing and pretending that the laughter is evidence in and of itself is what passes for thoughtful consideration of the issues by those who mock inventors and seek to destroy the patent system.
Since a patent application is nothing but an application for an exclusive Right before it is issues, and the application process is a positive economic effect, the negative effect must be after it issues. Importantly, an issued patent is nothing until and unless it is defended in litigation so the negative effect must happen in litigation. Patent litigation is some of the most expensive litigation there is often costing millions of dollars on each side. Unless the inventor is independently wealthy, the odds of the inventor filing an infringement law suit is near zero without professional help from patent lawyers and investors.
Lawyers and investors risk potentially millions of dollars defending a patent. With that much money at risk, the potential damages must be high enough to justify a profitable return. In other words, the damages value of the suit must be significantly above the maximum amount of money put at risk.
Most professionals calculate a suitable return at a target multiple of the money put at risk. Multiples vary depending of the level of risk, how long it takes to get paid and other considerations. Patent infringement law suits are very high risk. You have to prove infringement and your patent cannot get invalidated or you lose everything put into the case. Then you have to get paid and that can take many years and many appeals. For the sake of example, lawyers and investors may require a multiple of 5X for patent litigation. So if one million dollars is put at risk, the potential damages paid to the lawyers and investors must be five million dollars.
Lawyers and investors receive only a portion of the damages. Often half or more of the awarded damages is paid to the inventor. Lawyers and investors get what remains. In the example, the five million dollars that pays back lawyers and investors comes from their portion of the damages, which means that the total damages need to be at least ten million dollars to be able to return the multiple.
Calculating damages is a complex field, but it places a dollar figure on the damage caused to the inventor by the infringement. If an infringing product is sold on the market, damages can be calculated based on the revenue associated with the infringing product. If there is no revenue, damages are often impossible to calculate.
Therefore, only those patents with significant markets where damages can be calculated are litigated. Lawyers and investors know that the risk of losing is very high and a loss is a total loss of all the money and time they put into the case, so they take only cases where there is a reasonable chance of winning.
Since nobody makes any money exercising a cat with a laser, it is nearly impossible to establish a damages model. Even if there were a way of calculating damages caused by pointing a laser to exercise a cat, it would not have a potential value of ten million dollars. This patent was never litigated even though it was widely infringed, thus there was no negative economic effect.
There is no such a thing as a bad patent without economic hard. The alleged bad patents that patent-haters point to simply do not get litigated. Thus there is no negative economic effect, which means they are not bad patents after all.
Like the myth of the patent troll, the myth of the bad patent exists only to protect huge monopolistic multinational corporations from the creative destruction of a small inventor with a big idea at the expense of our economy, our job creation engine and our national security.
Join the Discussion
36 comments so far.
Roger HeathFebruary 1, 2018 05:29 pm
Roger HeathFebruary 1, 2018 05:07 pm
Bill set (or codified) the precedent with “It depends on what the meaning of the word ‘is’ is”.
Quotes like this are the only ones I remember of him. But it has inspired a generation of speak-oil (as in snake-oil).
Joachim MartilloFebruary 1, 2018 06:31 am
Why would the PTAB do such a thing?
Many of us think it, but I have to say it. A lot of the APJs are fools or buffoons.
Yet there is a more sinister explanation. Some APJs are corrupt and involved in serious criminal violations of the STOCK Act or other statutes of the federal US legal code.
The SEC and the FBI should be groveling through USPTO records going back at least to 1994. (The corruption has been taking place for a long time.)
Because the SEC and the FBI are not doing their job with respect to USPTO corruption, concerned members of the public should be working for disbarment of offending APJs.
While stupidity per se is not usually grounds for disbarment, throughout the USA grounds for disbarment or for suspension usually include the following or similar:
(a) “For the commission of any act involving moral turpitude, dishonesty, or corruption, whether the same be committed in the course of his or her relations as an attorney or counselor at law, or otherwise, and whether the same constitute a felony or misdemeanor or not; and if the act constitute a felony or misdemeanor, conviction thereof in a criminal proceeding shall not be a condition precedent to disbarment or suspension from practice therefor” and
(b) “Gross incompetency in the practice of the profession.”
[I took the preceding from the Washington State Rules of Court.]
There is evidence of criminal document falsification in a PTAB final written decision. Because of the nature of PTAB panels, such criminal document falsification seem inherently to imply criminal conspiracy.
Asserting that an essential feature of the English language is inherently indefinite seems like gross incompetence to me, but I suspect something far more sinister.
If the PTAB can define an essential feature of the English language to be indefinite and if the examiner corps frequently uses (or is encouraged to use) the feature, a corrupt group within the USPTO has the perfect mechanism for a “bait-and-switch” con scam of the sort that has been perpetrated against Josh Malone and his corporation.
Joachim MartilloFebruary 1, 2018 06:24 am
Josh [email protected] 30, 2018 2:00 pm,
Linguistic chicanery constitutes the core of pettifogging or shyster-lawyering. In a Catholic or Jewish seminary context such chicanery is called quodlibet or ?????????? (pilpul).
I discuss the PTAB’s war on the English language to some extent in a comment on Patentlyo.
I may not be making myself clear. We have a problem in English. This problem does not exist in Latin, which would be a much better language for writing patent specifications if the vocabulary of Latin were upgraded to encompass modern mathematics, science, technology, and engineering.
Latin has a word for “filled” in the sense of “filled up,” “filled to the brim,” or “filled to bursting.” The word is impletus. There are in fact several other words. Latin is much more precise than English.
Latin has a word for “filled” in the sense of “filled” in “filled with $5 worth of gas” or in the sense of “filled” in “filled with space for milk.” The word is satiatus, which is cognate with English “sated” or “satiated” and whose meaning range is slightly different from the meaning ranges of the related English words. There are, in fact, several other words for this sense of “filled.” I must reiterate. Latin is much more precise than English.
In writing patent specifications we distinguish between the two meaning ranges of “filled” by adding a semantic attribute or semantic selector, which is “substantially.”
In other words, the PTAB is asserting that a feature of the English language is indefinite.
Joachim MartilloFebruary 1, 2018 06:21 am
AnonJanuary 31, 2018 08:11 pm
Joachim – cogent points, thank you.
Joachim MartilloJanuary 31, 2018 05:55 pm
I have to point out that from a macroeconomic POV an alleged bad patent has no effect on the economy however much a large slothful corporation that wants the freedom to infringe may whine about an alleged bad patent.
From a game-theoretic analysis of the capitalist economic system, enforcement of an alleged bad patent may do some good because such enforcement may help counteract capitalism’s inherently destabilizing tendency toward wealth concentration.
The patent system provides a gentle mechanism of generating an economic reset to counteract or to undo wealth concentration. It matters not that a patent might be bad.
In addition, a corporation forced to find a work-around to avoid infringing a “bad patent” may find a better and cheaper way to do whatever the claimed invention does. I have worked one corporation, whose business model was based on non-infringing reverse engineering of the sort that large slothful incumbent corporations have difficulty in doing.
In any case, pre-AIA patent law provided means to deal with patents that might have been invalid on various grounds.
Validity could always be challenged in district court in response to a complaint of infringement.
If the owner inventor realized that an issued patent was defective in some way, he could seek reissue.
If evidence of prior art became available that might vitiate claims under 102 or 103, it was possible to request reexamination.
Paul MorinvilleJanuary 31, 2018 05:10 pm
P @27. “But I don’t think it serves our mission to pretend that “bad patents” are a figment of Google’s imagination.”
The patent troll narrative should have been debunked as it passed through the gate. It is now and anyone making that argument on the Hill is viewed as a hack… a shill for Google. Debunking the bad patent myth must also be done as it is passing through the gate now to replace the mythical patent troll.
Deconstructing the mythical bad patent argument is necessary to focus a fix where it is needed. And you have made that point very well. The fix needs to be in examination.
Tesia ThomasJanuary 31, 2018 04:26 pm
P, but many inventors have IP that’s valid in the EU and not valid in the US.
PJanuary 31, 2018 03:37 pm
Examiners miss art all the time. I was an Examiner for 10 years, and the first several were spent learning where to find the best art. In the meantime, I was allowing ‘bad patents’ that I now believe should have been rejected. Even late in my career, there was still the possibility of a “cheapo goal”, to borrow some hockey terminology. And I dare say that I was one of the better examiners.
Having moved to prosecution, it has become apparent to me that the art found by examiners in the EU is, on average, far better than the art found by the USPTO.
…Which is a long of way of saying that there are a lot of patents out there that shouldn’t have been issued.
Like the authors, I am an “advocate for strong patent protection for inventors and startups”. But I don’t think it serves our mission to pretend that “bad patents” are a figment of Google’s imagination. I think it makes a lot more sense to advocate for high-quality examination, thereby eliminating bad patents and reducing the pressure on the courts and PTAB to make creative rulings.
Consider the patent applications at issue in Alice. In some parallel universe, the Examiner to which they were docketed rejected the claims on the basis that they were obvious in light of Emery (the textbook cited by J. Thomas in Alice v CLS, discussing the use of a “clearing-house” as an intermediary to reduce settlement risk). In this parallel universe, we end up with a patent of narrower scope or no patent at all. As a result, we have been spared a disastrous and completely unworkable 101 decision (glory hallelujah).
I have some ideas on how to improve examination quality. I have no idea if they could be implemented or would work if implemented, but I would like to see them discussed. I think the mission would be better served if the authors directed their considerable efforts in the same direction, rather than exhaust themselves railing against the rhetoric used by our opponents.
Paul MorinvilleJanuary 31, 2018 02:51 pm
Angry Dude @ 24. Perhaps my comment requires a bit more explanation. My point is that anyone involved in the patent system knows that it is a risky business. If you are investing and did not perform due diligence, you should lose your money. I do not feel sorry for you.
That is the same for companies that fail to do due diligence on what already exists and is patented BEFORE they put a product on the market. If they are nailed for infringement, I do not feel sorry for them. The patent was fully disclosed on the USPTO website so they could have easily checked it to find out first.
Playing fair means that patents are presumed valid and enforceable. this enables a startup to attract funding. It also means that there is a means to clear out weak patents in an Article III court that is well understood so everyone knows the rules ahead of making an investment. This includes inventors, those who would fund inventors and those who would infringe.
The use of the term sucker denotes an individual who does not take the time to figure out what they are doing. I have not sympathy for these people when harms befalls them for not doing what they should do. A fair system does not mean managing stupidity or laziness. You cannot pass laws to protect suckers.
staffJanuary 31, 2018 02:19 pm
angry dudeJanuary 31, 2018 12:14 pm
Paul [email protected]
“There is a sucker born every minute”
Suckers we all are… (inventors and small patent holders)
BUT it is the job of the federal government to force different economic entities to play fair
and not to abuse unsuspecting “suckers” beyond certain point
Otherwise we would not have stock market or any economy for that matter
Any patent duly granted by USPTO must have a presumption of validity
Tesia ThomasJanuary 31, 2018 11:58 am
“This is one of the biggest problems facing the patent system and one the USPTO continues to ignore. If 85% or more of patents are found defective upon review by the PTAB what does that mean about examiner quality? The USPTO year after year proclaims examiner quality is at 95% or higher. There is a serious disconnect between those two figures. ”
Ahh. Government doublethink.
Paul MorinvilleJanuary 31, 2018 11:54 am
Richard Roseen @12. You say “They may have impressed the investors who did not test with a validity search”.
There is a sucker born every minute. If an investor fails to test the likelihood that a valid patent will be invalidated, the investor deserves to lose the investment.
angry dudeJanuary 31, 2018 11:20 am
If I were a manufacturer of some product and received a cease-and-desist letter from patent holder’s attorney with patent priority date post-dating my product release date I would present all of this info to my patent attorney (with experience in that field) and ask him to write an opinion why patent is invalid or why my product does not infringe
And send this to patent holder’s attorney
I doubt that patent holder would decide to proceed with lawsuit at this point
Dollar figures for that ? I’d say 10k max
You can afford it I’m sure
But most small patent holders can’t afford a single 300K PTAB challenge from guys like you
BennyJanuary 31, 2018 10:31 am
translate “easy to argue and invalidate” into dollars and cents, then talk to me about negative economic impact.
American CowboyJanuary 31, 2018 10:06 am
The law says that a patent is presumed valid and that someone who wants to contest validity must prove invalidity using clear and convincing evidence.
Blithely throwing out the term “bad patent” spits on these doctrines.
BennyJanuary 31, 2018 09:58 am
Bemused, a patent isn’t invalid until it is invalidated.
Richard – you make no sense, A rejected patent applications is just as much prior art as is a granted patent. If investors are fooled by a patent which has no defense against invalidation procedures, that is not good economic sense.
Gene – not every examiner has their eye on the ball, and some of them have off days. I’ve noticed examiners who have in the past done thorough work let patents slip through with obvious defects. The problem I find with examination at the USPTO is lack of consistency.
angry dudeJanuary 31, 2018 09:52 am
You are talking one patent == one product correspondence which is easy to argue and invalidate based on lack of novelty
What PTAB does however is combine 5,6…10 arbitrary references to argue that patent might have been obvious… years after patent grant
And those judges are not even experts in respective field so have no clue whatsoever
Gene QuinnJanuary 31, 2018 09:45 am
Not to be too cheeky, but if patents where the examiner did a poor job defines ‘bad patents’ then there must not be very many.
This is one of the biggest problems facing the patent system and one the USPTO continues to ignore. If 85% or more of patents are found defective upon review by the PTAB what does that mean about examiner quality? The USPTO year after year proclaims examiner quality is at 95% or higher. There is a serious disconnect between those two figures. As I’ve said before, the PTAB is seeing those patents reach final decision where there is enough commercial relevance for the patent owner to fight a losing fight where the deck is stacked against them. If 85% or more of those vetted patents valuable enough to fight for are defective what must that mean about the ordinary, garden variety patent that never gets litigated, licensed or used to support investment?
The problem with the term ‘bad patents’ is like the problem with ‘patent trolls’. It is all in the eye of the beholder. With the USPTO voicing full throat support for the quality of examiners and the quality of the PTAB, and without any discussion as to what is or what is not a bad patent, the forces that want more patent reform will continue the push.
Night WriterJanuary 31, 2018 07:55 am
@12 Benny. True enough.
This could fairly easily be fixed by improving search and by doing a much better job assigning applications. These two things would fix 90 percent of the problems.
BemusedJanuary 31, 2018 07:46 am
Benny, the import of this article is that calling an invalid patent (what you’ve described) a “bad patent” is singularly unhelpful and can (and will) lead to harmful consequences to the entire patent system. Similar to how the infringer lobby used the term “patent troll” to tar and feather every patent holder (including, operating companies, research universities, inventor-owned patent licensing companies, etc).
There mechanisms in place to address invalid patents (e.g. motion for summary judgment, inter partes reexamination or review, ex parte reexamination) and tools to address the behavior of actors who attempt to assert obviously invalid patents (e.g. Rule 11, 285 motion for fees, courts’ inherent powers, etc).
Do these defensive mechanisms and tools cost a company accused of infringement money to utilize? Sure, they do but patent holders also have costs associated with protecting their patented innovations from infringers.
And keep in mind that once a patent has been invalidated its invalid forever and for everyone. But once a patent holder has defended the validity of their patent, they have to again spend significant monies to again and again and again defend against their patent in other forums against other invalidity challenges (see Exhibit #1: Josh Malone) and against other infringers.
BennyJanuary 31, 2018 05:33 am
A bad patent is a patent granted to an applicant who was not the first to publish the invention. I could prepare a catalog of these. In my particular field I have seen 3 patents granted which were filed after products with the identical granted technology were available to the public, and one granted patent which was identical to a research paper published 2 years prior to the application, and that’s just in the last few years. Yes, these patents do have negative economic impact on manufacturers, who will either have to invalidate the patents or pay a royalty/license. I can’t accept Paul’s assertion that bad patents don’t exist when I have concrete examples in front of me.
Richard RoseenJanuary 30, 2018 07:20 pm
I believe the article missed the other aspect of bad patents. Assumedly they are those which the examiner did a poor enough job that they are invalid on at least the missed prior art. But not all invalid patents go into litigation. Those patents accomplished several secondary goals. They may have impressed the investors who did not test with a validity search. Second the bad patents function as prior art in the patent database to provide more attention to the examiner. Third they provide the addition to the archive of technology library that patents provide for any future inventor or engineer or scientist.
Ron KatznelsonJanuary 30, 2018 06:54 pm
Another terminology for a “bad patent” favored by the efficient infringement lobby is the “overly-broad” patent of “dubious validity.” Ever since the FTC report of 2003 alleging that such patents introduced “uncertainty” that stifled innovation, this refrain has been a recurring fixture in the push for patent “reforms.” But evidence for that allegation was never provided. In fact, evidence to the contrary in the most notorious “bad patent” case – the Selden automobile patent – is readily available in our paper “The ‘Overly-Broad’ Selden Patent” available at http://papers.ssrn.com/abstract=2801309. We show that the industry, including Henry Ford, knew how to construe the claims narrowly and understood very well that they are not likely to be liable. The result was that robust development and investment in automobile technology was not retarded or suppressed. “Bad patents” are actually harmless patents.
Josh MaloneJanuary 30, 2018 02:00 pm
Ternary, this is a very important distinction you make. Telebrands stole my invention. Their emails show a photo of my product they purchased from my Kickstarter and painted blue as a prop for their TV commercial. But they convinced the PTAB it was covered by a “bad patent” because of the term “substantially filled”. They knew very well what the term meant and knew they were stealing my invention. Why does nit-picking the words of the patent qualify as an excuse for stealing the invention?
Most of the PTAB 103 decisions are the same. The PTAB destroys the meaning of the words in the patent so that they don’t cover the invention. But the petitioners products don’t use the prior art – they use the invention.
TernaryJanuary 30, 2018 01:17 pm
A bad patent v. a bad invention: A bad patent is a patent that cannot survive a post-issuance action, otherwise it is legally a good patent. A bad invention is …? Yeah, what is a bad invention actually in the context of the anti-patent crowd? A bad invention cannot be an invention that one would like to use. Because no one would be interested in such an invention. No matter if protected by a patent or not. The invention (and the patent) would just be ignored and would not be worth any trouble, as explained in the article.
So, a bad invention then is an invention that people would want to use but are prevented from using because of patent protection. But, you really cannot say that an invention is bad if you want to use it. Right? What to do? Eureka! You declare the patent that protects the valuable invention a bad patent.
So far, few in the anti-patent movement have argued that they would be pleased (or even that it is reasonable) to pay for use of an invention, if only it was covered by a good patent. The name of the game always has been to avoid payment for access to an invention protected by a patent. However, it seems that we now are in one of the worst spells of irrational anti-patent attitude.
American CowboyJanuary 30, 2018 12:23 pm
I’ll go a step further. If the patentee filed his application 366 days after offering it for sale, is he somehow morally culpable? I think not. I’d estimate that 98.8% of the public has never heard of the on-sale bar, so many inventors lose valuable rights simply out of ignorance of the Strict time bar (one that courts, when given the chance, seem to make stricter and stricter).
Is it really shameful that someone got a patent on invention that was obvious from a reference that nobody of ordinary skill in the art was familiar with? Here, I am alluding to examples like those obscure doctoral theses on microfilm from years ago that were long forgotten by their author and supervising professor. Or the use in some ancient rite in Borneo…. etc.
You get the drift.
Paul MorinvilleJanuary 30, 2018 12:16 pm
Ze’ev @2. Yes I hear that too. But are most settled below the radar? Or are most just ignored? Do some people send out illegitimate demand letters? Sure. A friend of mine received one just last week, (I hope to write something about this fake demand letter soon) But debt collection companies do the same thing. I personally received an illegitimate demand letter from a debt collection company. I looked at it, evaluated it, determined it was illegitimate, and then ignored it.
The US Fish and Wildlife Service sent an illegitimate demand letter to me years ago demanding that I fill in a ditch. I looked at it, evaluated it, found they did not have the legal authority to make the demand, and then I ignored it.
There is no way to quantify whether demand letters are legitimate or illegitimate nor is there a way to determine how many get paid and how many are ignored.
But there is a sucker born every minute, so it is safe to assume that those paid are either the legitimate demand letters or paid by a legitimate sucker.
It makes us all suckers to legislate to protect a few suckers who do not take the time to protect themselves.
Gene QuinnJanuary 30, 2018 12:14 pm
I tried to work in the line about a bad patent being one that someone is using to sue you, but it felt forced. Will come back to that though for sure. There is so much truth to that. And that everyone else’s patents are the bad patents.
Maybe starting with a definition:
“bad patent” – (1) A patent being asserted by another against you, whether it be via litigation or through a licensing program; (2) other people’s patents.
BemusedJanuary 30, 2018 10:56 am
Gene/Paul: Regretfully, I have to disagree with you. There really ARE “bad patents” out there. Many, many bad patents. Dozens and dozens (perhaps hundreds and hundreds or even !gasp! thousands) of them, actually.
After all, any patent an infringer gets sued on is a “bad patent” just like any patent holder asserting their patent is a “patent troll”.
George Orwell is laughing uproariously somewhere….
angry dudeJanuary 30, 2018 10:22 am
I say obviousness MUST be determined by the PTO right from the get-go, not years later by combining some bs references with keywords
Only novelty and enablement can be argued about when patent is challenged many years after issue
And to determine obviousness PTO must have a few, not just one, subject matter expert examiners reading and actually understanding patent description
In my past experiences examiners have trouble understanding high tech patent descriptions, possibly because of lack of education and (not PTO) industry experience, so do not properly determine obviousness when patent application is initially reviewed
If they did, more than half of patents issued to Google, MS, IBM etc etc would be declared obvious in initial examination and rejected
AnonJanuary 30, 2018 09:24 am
I would add a caveat to AAA JJ’s post to point out that it is not merely the amount of a plurality of references that make up an obviousness rejection that makes “every patent is a bad patent.”
If an invention is merely a collection of lots of prior art “pieces,” then such a collection of a multitude of equal number of prior art elements may very well make a proper 103 rejection.
What I find galling is the abject lack of appreciation for what each of a ultra-many conglomeration of references may teach unto itself.
There is an alarming lack of appreciation for exactly what is meant by “motivation to combine,” and there seems to be no workable traction in trying to teach examiners that “motivation to combine” requires more than the single “what’s better” from each individual reference.
One does not – and should not – have to rise to the level of explicit teaching away or a destruction of what one reference teaches with the (apparently mindless) cobbling of references just because a reference contains a keyword.
There is a true dearth of reasoning that the Court “suggested” take place in their KSR decision. An item’s “reason for advance” in and of itself provides NO motivation to combine with anything. Motivation to combine must reason why both items being combined would be sought to be combined. The reaction against TSM being found explicitly within references has overshot any bounds of reason on the other side.
Ze’evJanuary 30, 2018 09:23 am
I agree with the bottom line, and I also believe that the term “bad patent” is fictitious, created out of thin air to promote an agenda. However, I disagree with the assumption that the economic risk of some patents is relevant only to parties willing to risk multi-million $ in litigation. In some cases, party A may threathen to sue party B, without actually having to risk millions of $. Party B is scared and settles quick, paying a smaller sum of money even though it doesn’t believe it actually infringes on anything, maybe because party B doesn’t actually have millions of $ and cannot afford a full trial. Settlments are not reported so that’s a potential “below the radar” economic risk. Having said that, once again, I do believe that there is no “bad patent” per se, but the economic harm of some pre-litigation settlements should also be accounted for.
AAA JJJanuary 30, 2018 08:49 am
When you have a “trial board” of “judges” who have no qualms about combining three, four, five, etc. references to “prove” that a claim was obvious then every patent is a bad patent.