"Bogus Patent Claim"

[teemacs]

I wouldn't hold my breath waiting for the US to change to a first-to-file system. Unlike most countries, which establish a patent and copyright system purely by legislation, the US system has it's basis in the Constitution, which allows for monopolies to be granted to "inventors". Not "people who file the forms first". To get rid of first-to-invent, you'd have to amend the Constitution, which I just don't see happening any time soon, for such a low-profile issue.

Any attempt to bring in first-to-file by means of law or regulation will almost certainly be imediately challenged on this basis by several inventors, or inventor associations.

It'll take a while, but it'll come, especially now that the American Bar Association is behind the adoption of first-to-file. The ABA was, for a long time, one of the staunchest defenders of first-to-invent, largely because so many lawyers made so much money out of "interference", the bizarre (and extremely costly) procedure of determining who has the right to which part of which invention in the case of overlapping subject-matter. And I think that more and more inventor associations are coming to see the inherent practical advantages of first-to-file.

The "inventor" problem is easily fixed by changing the definition of "inventor" in the patent legislation itself. The Constitution (which nowhere defines "inventor") need not be touched. The development of "first-to-invent" and all its attendant baggage arose in the context of the patent laws and the practice that developed with them. No more conception! No more reduction to practice!! No more due diligence!!! I can hardly wait...

P.S. To show you how imprecise the Constitution is on these matters; here's Article 8:


The Congress shall have Power To lay and collect Taxes, Duties, Imposts and Excises, to pay the Debts and provide for the common Defence and general Welfare of the United States; but all Duties, Imposts and Excises shall be uniform throughout the United States;
.... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

The funny thing is that you can't patent a "discovery", and you haven't ever been able to! A "discovery" is something like the photoelectric effect; you can't have a monopoly on what is in effect a law of the universe, but you can patent a practical embodiment, such as an automatic door-opener operated by breaking a light beam. With language that vague and open to interpretation, it's no sweat to redefine "inventor".

 

[Horatius]

here's Article 8:


The Congress shall have Power To lay and collect Taxes, Duties, Imposts and Excises, to pay the Debts and provide for the common Defence and general Welfare of the United States; but all Duties, Imposts and Excises shall be uniform throughout the United States;
.... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

The funny thing is that you can't patent a "discovery", and you haven't ever been able to! A "discovery" is something like the photoelectric effect; you can't have a monopoly on what is in effect a law of the universe, but you can patent a practical embodiment, such as an automatic door-opener operated by breaking a light beam. With language that vague and open to interpretation, it's no sweat to redefine "inventor".

I think you're assuming that changing the plain meaning of "inventor" will be easier than it is likely going to be. I consider it similar to the bit about "limited times", in relation to copyright.

There has been a lot more pressure to extend the duration of copyrights than there ever has been to change the definition of "inventor", and even in this case, they haven't attempted to do a legislative end-run around the plain meaning of "limited times". The strategy has been to simply extend the duration to a new, longer (but still "limited") period, just before the copyrighted works would fall into the public domain (The "Mickey Mouse" extensions). It gives them effectively unlimited copyright terms, without a clear violation of the limited times language.

I don't think you could develop a similar strategy for re-defining inventor, although I admit I may not be as cunning as the typical lawyer

 

[teemacs]

I think you're assuming that changing the plain meaning of "inventor" will be easier than it is likely going to be. I consider it similar to the bit about "limited times", in relation to copyright.

There has been a lot more pressure to extend the duration of copyrights than there ever has been to change the definition of "inventor", and even in this case, they haven't attempted to do a legislative end-run around the plain meaning of "limited times". The strategy has been to simply extend the duration to a new, longer (but still "limited") period, just before the copyrighted works would fall into the public domain (The "Mickey Mouse" extensions). It gives them effectively unlimited copyright terms, without a clear violation of the limited times language.

I don't think you could develop a similar strategy for re-defining inventor, although I admit I may not be as cunning as the typical lawyer

I don't think there's any problem at all, Horatius. You have to remember that even the concept of the "true and first inventor" under US law is a compex subject - it is not so "plain". It is NOT the person who first thought of it, it is the person who (a) first thought of it, (b) reduced it to practice (by, for example, making a working model or filing a patent application), and (c) exercising due diligence in bringing the invention to the public, to its benefit. Under these rules, a person who thought of it first can actually be barred from making and selling the invention.

All one has to do is to define the true and first inventor as the person who filed first and Bob's your uncle. And that can be done with a revised patent law, without affecting the Constitution at all. To enter the European patent system, the British changed the whole concept of their patent law in many ways. If you want to do it, it can be done.

I'm a patent attorney, not a lawyer, and not being up with US copyright provisions, I can't really comment on your copyright point. But of course nothing in the Constitution says how limited is "limited", so there's really no problem in extending that "limited" time. After all, this is what the US did when it adopted the 20-year patent term and the five-year extensions available for pharmaceuticals and some other things.

 

[Horatius]

Well, I guess we'll have to wait and see what happens. As I said, I'm not holding my breath waiting for it, but it doesn't really bother me one way or the other. I just think there are other more pressing issues with the US patent system that should be dealt with, before they get into this, and it seems a lot of people agree with that assesment.

Like the definition of "obvious". From what I've been seeing, they're getting to a point where it's almost impossible to make a case that an improvement is an obvious one, and the US applicants and agents keep pushing Canada to adopt similar practices. Quite annoying.

 

[teemacs]

Well, I guess we'll have to wait and see what happens. As I said, I'm not holding my breath waiting for it, but it doesn't really bother me one way or the other. I just think there are other more pressing issues with the US patent system that should be dealt with, before they get into this, and it seems a lot of people agree with that assesment.

Like the definition of "obvious". From what I've been seeing, they're getting to a point where it's almost impossible to make a case that an improvement is an obvious one, and the US applicants and agents keep pushing Canada to adopt similar practices. Quite annoying.

I'd go along with most of that. The US patent system is a catastrophe, with the most astounding rubbish getting through. I personally suspect that the overloaded USPTO is doing a Pedrick. (Arthur Pedrick, an ex-UK patent examiner, filed an amazing series of spoof patent applications. As he knew the ropes, Arthur could bamboozle the examiners. Finally, the UK Comptroller directed that all Pedrick's stuff should be passed immediately to grant)*.

So, if the USPTO lets rubbish through with just a cursory inspection, it achieves the following benefits; (a) it gets rid of another file, (b) it ensures that it gets the final fee (and with a bit of luck the relatively low first renewal fee at the four year mark) and (c) it usually** does no harm in that the stuff isn't worth the paper it's printed on and will be ignored by everyone.

I can't really relate to your point on obviousness. The USPTO seems to be throwing as many silly 103 (obviousness) objections at us as ever. Superheated, turnbocharged imaginations seem to be omnipresent in Alexandria VA.


* Arthur's masterpiece is GB 1,426,698, where he achieves the most astounding unity of invention in recorded history. The UK Office overlooked the fact that Arthur's cat is a co-inventor of the second idea.

** This backfired badly in the case of US 6,004,596, covering a crustless peanut butter and jelly (jam) sandwich. Not only did the owner, Smucker's Company, send out "cease and desist" letters, but it also took "infringers" to court and even appealed one verdict. The hearing before the Court of Appeals for the Federal Circuit was one of the shortest on record...

 

[teemacs]

P.S. Aha, now I see what you mean about obviousness, Horatius. I've just received a note about a pending Supreme Court case, KSR v.Teleflex, of which I hadn't been aware. This could change the nature of the whole obviousness argument. Of the current test, as set forth in the recent judgement in re Kahn, it is said:

Critics say the test places too high a burden on defendants and allows too many weak patents to be upheld. Supporters of the test argue that it addresses the problem that many inventions that combine prior art are obvious with hindsight.

Should be interesting. Perhaps the US is about to acquire a European-style "problem-solution" approach?

 

[Horatius]

* Arthur's masterpiece is GB 1,426,698, where he achieves the most astounding unity of invention in recorded history. The UK Office overlooked the fact that Arthur's cat is a co-inventor of the second idea.

Ah, yes, the PHOTON PUSH-PULL RADIATION DETECTOR FOR USE IN CHROMATICALLY SELECTIVE CAT FLAP CONTROL AND 1000 MEGATON EARTH-ORBITAL PEACE-KEEPING BOMB

There's a whole website out there devoted to this fellow. I wonder if Airbus was looking at his luxury ariliner concept recently.....

 

[Horatius]

P.S. Aha, now I see what you mean about obviousness, Horatius. I've just received a note about a pending Supreme Court case, KSR v.Teleflex, of which I hadn't been aware. This could change the nature of the whole obviousness argument. Of the current test, as set forth in the recent judgement in re Kahn, it is said:

Critics say the test places too high a burden on defendants and allows too many weak patents to be upheld. Supporters of the test argue that it addresses the problem that many inventions that combine prior art are obvious with hindsight.

Should be interesting. Perhaps the US is about to acquire a European-style "problem-solution" approach?

I've pretty much given up trying to figure out what the US will do. I just bet on "Whatever will make my job harder".

Part of the problem with obviousness is, it's supposed to be an "objective" test, but how can you come up with a universal test for such a thing, that doesn't rely, at least at some point, on the judgement of the person studying it? We in Canada have several "tests" that have been promoted by the Courts, but while they are very poetic, they're also pretty thin on guidelines of how to apply them in actual cases.

“The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.”

How exactly do you measure a "scintilla" of inventiveness?



An interesting discussion of the US situation is available here.

 

[teemacs]

Part of the problem with obviousness is, it's supposed to be an "objective" test, but how can you come up with a universal test for such a thing, that doesn't rely, at least at some point, on the judgement of the person studying it? We in Canada have several "tests" that have been promoted by the Courts, but while they are very poetic, they're also pretty thin on guidelines of how to apply them in actual cases.

The simple answer is, you can't. For a long time, the European Patent Office extolled the "problem-solution" approach as THE objective way to do it. It then came back to earth and acknowledged that, while it's a good guide, it is not infallible. No obviousness/inventive step guide ever can be. Ultimately, it is a judgement, which means exactly what it says, and hindsight is inevitably involved.

How exactly do you measure a "scintilla" of inventiveness?

I don't know, but for a long time something similar was established law in Australia! - "A scintilla of invention can save a patent" (McDonald v. The Commissioner of Patents).

An interesting discussion of the US situation is available here.

Many thanks for that, I 'll peruse it when I have a spare moment.

 

[Horatius]

The simple answer is, you can't. For a long time, the European Patent Office extolled the "problem-solution" approach as THE objective way to do it. It then came back to earth and acknowledged that, while it's a good guide, it is not infallible. No obviousness/inventive step guide ever can be. Ultimately, it is a judgement, which means exactly what it says, and hindsight is inevitably involved.

I agree, it's likely impossible to come up with a truly objective test. We'll just have to muddle along as best we can.

Of course, some people won't be happy with that. I recently had one agent assert that it wasn't the role of the examiner to make any determination of obviousness, that such a role was reserved soley to the Courts. I had to quote several portions of the Canadian Patent Act to show him the error of his ways. It's this sort of ridiculous assertions that cause so many headaches.

 

[Donn]

All very interesting. Sorry, I fell off the Internet for a while and could not get involved in the thread. You know how the 'net is made out of tubes? Well mine have holes in them

 

[Horatius]

For those of us interested in Patents, I just learned today that Google now has a site for searching US issued patents.

http://www.google.com/patents


Still just US patents, but the interface looks nicer than the USPTO site, if you're looking to link to a patent in an online discussion.

 

[teemacs]

Horatius, I would venture to say that, as the USPTO consistently issues the daftest, weirdest, most pointless and most highly entertaining patents on the face of the planet, perhaps US patents are all that is needed!

I found out about the site last week and promptly used it to find an old favourite, fondly remembered from an ancient copy of the Official Gazette - US 3,775,886. It even has the advantage of being highly seasonal.

 

[Donn]

'ts weird - in Firefox 1.5 on Linux that google patents search brings up a cool - totally blank gray box. So I get to zoom and pan around and see lots of gray pixels...

Perhaps that was what that patent US 3,775,886 was for?

Ah well, the life and times of an alt. O/S