A Patent Legislative Agenda, What Congress Should Do in 2011

By Gene Quinn
January 16, 2011

The 111th Congress once again left patent reform efforts on the table without any resolution or even a vote. That might be just as well given that in the minds of most the patent reform efforts were not truly “reform,” but rather were merely changes that would not have made for a stronger Patent Office or otherwise addressed some of the pressing issues that require Congressional attention.

At some point during 2011, however, I suspect that Congress will become engaged and interested as innovators find themselves on the short end of the Supreme Court sick in the Microsoft v. i4i case. We all know that the Supreme Court only takes patent cases to overrule or at least modify the law of the Federal Circuit. That only makes sense since there is but one Circuit responsible for patent law, thus no splits among the Circuits to resolve. So in taking the Microsoft-i4i case that asks whether there should be as broad a presumption of validity as required under the well-established law of the Federal Circuit, it doesn’t take a rocket scientist to figure out that the presumption of validity will be eroded by the Supreme Court, perhaps in this term. That being the case, it is at least plausible that Congress could be persuaded to become involved, perhaps even undertaking sensible reforms that protect innovators.  Yes, I realize how naive that sounds, but please keep reading!

Not to be deterred by realities, I offer the following suggestions. Realistically, I understand full well that it is unlikely that Congress will bother themselves with reform efforts that are sensible, at least at the moment. It is also unlikely that innovators will be adequately represented in any reform efforts once they do arise. It seems that the power structure in Washington, D.C. believes that the term “innovator” and “big business” are synonymous, which surely they are not. It is also unlikely the Senate will move beyond the legislation Senator Leahy wants so badly but can’t seem to move.  Thus, if we really want sensible reform that actually raises up the Patent Office and guarantees the value of patents for innovators we need to be ever vigilant.

1. Permanent Injunctions

Permanent injunctions are those that are awarded after a patent owner has gone through an entire trial, all validity arguments and other defenses have failed, the claims have been adjudicated to not be invalid (awkward way to say it, but legally how it is said because claims start off presumed valid) and one or more claims have been infringed. In 2006 the United States Supreme Court decided that ordinary equity principles should apply and patent cases are not any different than any other case.  See  The Roberts Supreme Court: Pro-Business and Anti-Patent? Factually and legally this is an incorrect view by the Supreme Court.

A patent for an invention is the grant of a property right to the owner and issued by the United States Patent and Trademark Office. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” the invention into the U.S. In order to obtain a patent in the United States it is necessary to file a US patent application. Thus, it is not accurate to say, imply or pretend that patent cases are or should be lumped together with all other cases in terms of equity.

Even copyrights, which themselves offer exclusivity, are not nearly the right conferred by patents. Copyright exclusivity suffers from fair use and independent creation, which means that a copyright offers a very different level of exclusivity. Patents offer a near absolute exclusivity, at least once the patent claims are determined to be valid and the claims infringed. Thus, an injunction should ordinarily be issued as a matter of right. That is what is demanded by the grant itself, which promises exclusivity. Exactly what situation would there be a better argument for a permanent injunction when the full force of the United States federal government has conferred onto the owner “the right to exclude others”?

The operative statute in the patent world is 35 U.S.C. 283, which says:

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

Section 283 should be amended to read:

(a) Preliminary Injunctions. The several courts having jurisdiction of cases under this title may grant preliminary injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

(b) Permanent Injunctions.  Upon the finding that one or more patent claims are infringed and that no defenses to infringement are available to the infringer, the several courts having jurisdiction of cases under this title may shall grant a permanent injunctions in accordance with the principles of equity to the patent owner to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

There will be those who will undoubtedly protest vehemently, but in order for those protesting to be intellectually honest they must protest the very existence of a patent.  Issuing permanent injunctions to prevailing patent owners is nothing more than a federal district court reiterating what the United States Congress articulated as their desire.  Yes, Congress choose to make the patent right exclusive in nature and choose not to introduce fair use, so it is an absolute exclusiveness.  So why in the name of common sense shouldn’t an injunction from a district court issue as a matter of right to a victorious patent owner?  Does comity between co-equal branches of government mean nothing to the Supreme Court?

2. Quid Pro Quo – More Rights for Innovators

It is impossible not to notice that the Supreme Court is little by little eroding the value of a patent, and they are likely to do the nearly unthinkable when the issue a decision in Microsoft v. i4i, which is alter 30 years of well-established law and chip away at the presumption of validity for a patent.  That might be viewed by some as “pro business” but it is certainly anti-innovator.  The big businesses are crying that they cannot do business because they are getting sued left and right by patent owners.  What they fail to point out, however, is that they lose frequently.  Perhaps they should try and win a lawsuit here and there before they decry the litigation they face.

In any event, big business does not want independent inventors, small businesses or well funded start-ups to enjoy strong patent protection because that threatens their dominance.  It really is just that simple.  So they want patents to become weaker, and what better way than to chip away at the presumption of validity?

At some point in time Congress will need to step in and decide whether they really meant for patent to be considered a property right.  They have been a property right since the first Patent Act back in 1790, but they are losing some of the indicia of property.  At some point in time a property right needs to be settled, otherwise it isn’t a true ownership of property, but rather is more like a weak license or weak form of permission.  Essentially, if patents lose a strong presumption of validity and already don’t enjoy a right to an injunction, a patent then becomes akin to a property right in a communist regime — yours until we or someone else decides it is not yours.  What we know is that in this type of property right regime property value is not maximized, which would be tragic given that we all know that innovation leads to job creation.  Even our elected politicians know they have to have pro-innovation policies, although they don’t always seem to understand the rhetoric they speak.

What Congress needs to do is establish a procedure for quieting title to patents.  At some point in time a patent needs to be owned and not susceptible to challenge, at least if we want to maximize investment which will in turn maximize job creation.  Luckily there is already an analogous procedure at the United States Patent and Trademark Office on the Trademark side of the building.  If a trademark owner files for incontestable status between the 5th and 6th year of ownership a trademark becomes incontestable.  The name is a bit misleading.  The propriety of the trademark can still be challenged in court, but only for the most egregious wrongs.  Something similar should be adopted for patents.

It is time to realize that a patent that can be challenged for any reason, whenever it is convenient, is not in the best interest of innovators.  These innovators are job creators, we all know that to be true.  So at some point in time if a patent has not been challenged through Reexamination or in the federal courts, it needs to have its ownership and associated property rights settled.  Trademarks can last forever, patents last for at most 20 years from the date of filing, which typically creates a useful life of no more than 17 years, usually much less.  Thus, I would propose that if a patent hasn’t been challenged with 3 years after issuance it is eligible for incontestable status.  What that would mean is that the patent could no longer be challenged for obviousness.  It might mean other things, but at a minimum obviousness needs to be off the table.  That is the biggest fear for patent owners, particularly given that the Supreme Court has turned the meaning of obviousness into a moving target; a question of “common sense.”  Too bad they didn’t tell us what that means.

3. Reform of Obviousness

In 1952 the United States Congress set out to recodify the patent laws, and did so by codifying into law the cases they thought made sense and specifically adding language into the statute that excised the rulings of the courts that didn’t make sense.  No place was the excising of ridiculous rulings more pronounced than with respect to obviousness.

The law of the land had morphed into one where an invention had to exhibit some “flash of creative genius” in order to be entitled to a patent.  What that essentially meant was that advances were not patentable, only paradigm shifts were patentable.  Such a rule made little or nothing patentable, and actually thwarted the entire Constitutional foundation of the patent system.  The patent system is supposed to foster advancement.  When advancement is only rewarded for paradigm shifting inventions there is very little incentive to try and improve what already exists because if you do you wouldn’t be able to protect it and any monies you spend in R&D would be lost forever given that competitors could simply copy your invention right away, only they wouldn’t have to charge an R&D premium, so they could sell YOUR invention for less.

Unfortunately, the “common sense” test for obviousness announced by the Supreme Court in KSR v. Teleflex takes us essentially back to the “flash of creative genius” standard.  It is no stretch to observe that under a strict reading of the ruling in KSR an inventor who sets out to accomplish something is not entitled to a patent if he or she actually accomplishes the objective.  Thus, under a strict reading of KSR only an inventor who accidentally stumbles across something exhibits the requisite eureka moment sufficient to satisfy the Supreme Court.  So the KSR test is actually more restrictive than the “flash of creative genius” standard.  Luckily, the Patent Office and lower courts have worked with some success to ameliorate the ridiculous approach to obviousness.  But those 9 who believe they know everything about everything, particularly the nuances of patent law, lurk.

Congress should once and for all reassert its dominance here.  They specifically chose this language in 1952 to get away from “flash of creative genius”:

Patentability shall not be negatived by the manner in which the invention was made.

As you can see, the only wan the Supreme Court could have reached its decision in KSR was to ignore that sentence.  Had they read the statute they would have known the nebulous “common sense” test they announced, which focuses on the manner in which the invention is conceived and reduced to practice, violates the express terms of 35 U.S.C. 103 under any fair reading.

I have only half jokingly in the past explained that Congress should modify 103 and simply underline that sentence and then add into the Legislative History a statement that says that it was underlined to make clear that this is the law and to overrule KSR v. Teleflex.  Given the ayatollah like attitude of some on the Supreme Court that probably wouldn’t be enough.  Therefore, I suggest the following changes to 103.

35 U.S.C. 103(a) currently reads:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Section 103(a) should be amended to read as follows:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In determining whether the invention would be obvious to one having ordinary skill in the art, prior art references can only be combined if somewhere within the prior art there is a teaching, suggestion or motivation to combine. Patentability shall not be negatived by the manner in which the invention was made, and nothing shall be considered to be within the common sense of the inventor of one having ordinary skill in the art absent a teaching, suggestion or motivation within the prior art.

This would clearly and unambiguously overrule KSR and return to the decades of well established precedent embodying in the teaching, suggestion or motivation rulings of the United States Court of Appeals for the Federal Circuit.

4. Inequitable Conduct

Something needs to be done regarding inequitable conduct, and perhaps that something will be done when the Federal Circuit issues its en banc decision in Therasense v. Becton.  The Patent Office changed the rules associated with the duty of candor owed by those substantively involved in the prosecution of a patent application in 1992.  After panels of the Federal Circuit initially acquiesced to the change, other panels inexplicably claimed that it was still up to them to decide when inequitable conduct occurred at the Patent Office.

To review, inequitable conduct is also called “fraud on the Patent Office.”  The Patent Office under our system of government is allowed to promulgate their own rules and regulations.  As long as those rules and regulations are not arbitrary and capricious, and so long as they don’t contravene an Act of Congress, they are upheld and courts are required to provide deference, which means they must follow them.  For reasons that have never been fully articulated by some of the Judges of the Federal Circuit they have simply chosen to ignore 37 C.F.R. 1.56, which defines the duty of candor and, therefore, what is and is not inequitable conduct.

I have long suggested that Congress codify 37 C.F.R. 1.56, which would be a fine idea.  Perhaps it will be unnecessary after the en banc ruling in Therasense v. Becton, but as history shows us the Federal Circuit law associated with inequitable conduct drifts; it is in fact a moving target.  Thus, Congress should act.

The Patent Office is facing an enormous backlog of cases, and the reality is that anything a patent attorney says to an examiner can and will be used later to argue inequitable conduct, no matter how specious the argument.  So patent attorneys play a game of hide the ball because that is what is required by the Federal Circuit in order to remove as many possible inequitable conduct arguments as one can.  This leads to examination of applications taking longer than necessary.  With inequitable conduct reform the Patent Office could and should require more meaningful participation, or at least let those who want to meaningfully participate to move to the front of the line.  None of the sensible rules changes that can be envisions have any chance unless and until the law of inequitable conduct is settled.  The unfortunate reality is that without Congressional action it won’t be settled even by the en banc ruling in Therasense v. Becton because there will be many patent attorneys who rightly worry about the creeping nature of inequitable conduct rulings at the Federal Circuit.

5. Patent Office Funding

It is absurd that year after year the Patent and Trademark Office, which charges user fees for services and the issuance and maintenance of rights, is not allowed to keep all of the money it collects.  This has lead to a decaying Patent Office infrastructure at a time when we need the Patent Office to be issuing patents faster so as to spur investment and create jobs.  Thus, Congress needs to stop the ridiculous budget dance it does with the Patent Office and allow the Patent Office to set its own fees and to keep all of the money it collects.  Congress has the authority to review agency actions and disapprove, and we know that they have no ability to do much useful in the patent context.  That is why giving the Patent Office fee setting authority is critical, and so is letting them keep the funds they collect so they can reinvest in ongoing activities.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 74 Comments comments.

  1. msmumr January 16, 2011 6:28 pm


    Well said!!! Three cheers!!!
    Now for a dose of reality (which you clearly already grasp).

    Elections have consequences, and November 2010 is not likely to be repeated in the General Election in 2012. “The boomer” generation by sheer numbers will swing the next election farther left, toward guaranteed entitlements.The senior voting public knows next to nothing about the stealth de-funding of the USPTO by Congress, nor cares about patents, they probably see them as impediments to more entitlements, lifetime security of the basics so they can enjoy free time with their grandchildren. No politician will run on a stronger patent being issued to small innovators (most of whom are not “boomer”), unless it will satisfy this craving for security, luxury and leisure in their old age.

    So what’s the answer? Sorry! It’s a dialectic dilemma. All problems don’t have solutions.

    But remember Barry Goldwater, (R) Sen. from Arizona? That was the fork in the political road that caused the demise of the patent system. Will Sarah (Goldwater) Palin win the nomination of the Republican Party in 2012? If she forms a new party, can she win the election. Until you can ask yourself these questions, and confidently answer Yes to either, we’ll just have to wait for the answer from history.

    Thanks for your article.

  2. blue January 16, 2011 6:31 pm

    “and nothing shall be considered to be within the common sense of the inventor of one having ordinary skill in the art absent a teaching, suggestion or motivation within the prior art.”

    i agree with change of wording to something like the above. The US patent law currently supports not 1 but 2 methods of testing obviousness. The USPTO tells inventors that KSR is really just a part of TSM but thats not how KSR gets applied in lawsuits. The USPTO would use TSM to avoid direct conflict with applicants and to protect their main source of revenue while patent infringers would use KSR to discredit innovation and insights….

  3. Hugh January 17, 2011 10:30 am

    Good proposals. Also, amend 103(a) to specify that 102(e) art (secret prior art) may not be considered for obviousness analysis.

  4. Blind Dogma January 17, 2011 10:38 am

    My views do not align perfectly, but you have presented strong arguments here Gene (although you did forget to include in your amended 103 the words “And we really mean it“.

    I do not expect a high number of comments as it will be difficult for those with opposing views to say much of anything with substance. This of course means that those without substance and without understanding of the basics of patents may still feel the need to take an opposing view based on their principles and dogma.

  5. Stan E. Delo January 17, 2011 1:45 pm

    I think this is the only proposal for reform that I have ever seen that I could agree with. Numbers 2, 3 and 5 would make a huge positive difference especially for independents, which as Gene very aptly points out have gone virtually unheard and mostly ignored by Congress. It seems to me as if the KSR case and the impending Superior Court decision if they reverse the Fed circuit constitute a Federal taking of property rights, in this case being IP. Big business has the money, influence and motive to lobby for the reduction of patent rights, which reminds me of a small island I used to live on, where people fairly new to the island had a tendency to think there were already enough folks there, and more newcomers should be discouraged from moving onto *their* island.

    One early House reform proposal was even trying to allow the challenging of the validity of granted patents by anyone with an *economic interest* for life of the patent?!? For a small filing fee, they could have challenged pesky patents numerous times, and heaping huge burdens of extra work on the PTO. Hard to believe they were so clueless, and they had to drop that and several other things because of the huge outcry of protests. It’s also interesting to note that Senator Leahy represents Vermont, the IBM state.


  6. Mike January 17, 2011 3:27 pm


    Thanks for this article. We need a develop a more robust and detailed public record on patent reform. I disagree with your proposal to allow “quieting title” for patents. You analogize such a procedure to the availability of incontestable status for trademarks. But there is a big difference, among others, between trademarks and patents that is very relevant: trademarks must be “used in commerce,” whereas patents have no such requirement.

    By requiring trademarks to be associated with actual goods or services, we come very close to ensuring that anyone with a possible challenge to a mark — i.e., competitors — is on notice of your mark, the goods or services with which it is associated, and whether it is subject to certain vulnerabilities. A patent holder, in contrast, does not need to produce anything associated with his patent. That is, there is no requirement to “use it or lose it” in patent law, but there is in trademark law. Further, unlike trademarks, a patent holder is under no obligation to challenge potential infringers or risk losing the patent. Under trademark law, the trademark owner must vigorously defend his mark or risk it becoming indefensible. This further assures that competitors will be put on notice of marks.

    Because of these requirements, the reasoning goes, competitors have plenty of notice after five years of use that (1) a potentially infringing mark exists, and (2) they should challenge that mark in a reasonable time frame. We encourage challenges to marks as early as possible to try to make sure the loser isn’t left out in the cold. If someone has genuinely associated their mark with their product, and they lose their mark, then they’ve potentially lost all their goodwill associated with the now defunct mark. This reasoning is simply nonexistent in patent law. Competitors to a patentee (if there are any) have virtually no incentive to challenge the validity of a patent before it is asserted against them. If we disallow certain invalidity defenses by adopting an incontestability procedure analogous to trademark law, those defenses will probably have never been raised in the first place, regardless of how good they are. The patentee will simply sit on his rights until they obtain incontestable status and sue only afterward. And reexamination just doesn’t cut it here. The incentives to challenge trademarks are entirely different than the incentives to challenge patents in reexam.

    Additionally, I think you overstate the power of an incontestable mark. You say, “The propriety of the trademark can still be challenged in court, but only for the most egregious wrongs.” That’s an unfair statement of the law. Incontestability simply removes challenges to ownership, improper registration, or on grounds of descriptiveness. But “incontestable” marks are still vulnerable to defenses of abandonment, functionality, genericness, and fraud. There’s no good way that I see to directly analogize which challenges you’d remove from a patent suit, but obviousness seems to go quite a bit further than the regime under trademark law.

    It makes good sense to allow for incontestable trademarks. If a mark goes unchallenged for five years — a mark, mind you, that is almost surely known to competitors — then doubts as to its ownership and propriety of registration are well removed. And even if it was merely descriptive when it was first used, after five years, there is good reason to think that consumers now think about the goods or services associated with the mark when they think about the mark. Why subject a trademark owner to costly and time consuming surveys if someone hasn’t come forward after five years to challenge the mark?

    Finally, a competitor can easily challenge a mark in a declaratory judgment. That is far more powerful than a reexamination.

    I don’t think there’s anything inherently wrong with comparing trademark and patent laws, but the policy reasons and justifications for allowing trademark incontestability are virtually nonexistent for patents. If you’d like to remove obviousness challenges for patents, I think you’re going to need a find a far more sturdy rack to hang your hat on.


  7. Gene Quinn January 17, 2011 4:07 pm


    I think you are right when you say that the incentive to challenge trademarks is very different than the incentive to challenge patents. What I would like to see is that calculus changed in favor of a speak now or forever hold your peace challenge to patents. It seems unfair and unrealistic to expect patent owners to invest in rights that can be challenged when convenient. If it matters speak up, just like with trademarks. Trademark owners do that, so I don’t see any reason why those who care to challenge a patent should sit idly by and plead ignorance and then mount a million dollar campaign after great time and financial investment has been put into play.

    While I may have over simplified the incontestable status of a trademark, I think you do the say to an extent. Sure, you can always challenge the trademark has become generic, that it has become abandoned, etc. What you cannot do, however, is say that the trademark should not have been issued because it is too close to one that someone else has. So I do think that the challenges left open of a trademark, which do remove the greatest challenges that could face a trademark owner, are akin to removing substantive patentability challenges. Removing at least some big ticket substantive challenges to the trademark is exactly what incontestable status does. So I don’t think it is a stretch to say that it realistically plausible to require those who want to challenge a patent because it is too close based on weaving references together to speak within a time frame after issue or never to have those arguments considered. Property is property and ownership needs to be settled.

    I guess I just totally disagree with you when you say: “the policy reasons and justifications for allowing trademark incontestability are virtually nonexistent for patents.” I think they are virtually identical, so we will have to agree to disagree.


  8. Bobby January 17, 2011 5:27 pm

    The problem is that patents are supposed to be given to inventors. New evidence may crop up at any time that the one who claimed to be an inventor was not actually the inventor, or that the change to the existing prior art may have been a marginal change not warranting a patent. The recent Red Hat case with IP Innovation showed an invalid patent lasting a very long time before the truth came out. Had someone been aware and concerned about this patent, they probably could have challenged it earlier, but in practice, this doesn’t happen very often. The silver lining to your proposal is that it would make competitors get most patents reexamined several times in order to kill or at least weaken these bulletproof patents before they are bulletproof, but I’m not convinced that this is a productive use of anyone’s resources. Giving largely incontestable patents to those who didn’t invent means that they could potentially be used to keep the actual inventor from practicing their invention, which is perhaps the worst thing possible for the patent system to do.

  9. Stan E. Delo January 17, 2011 6:27 pm

    Hi Mike,

    While I agree that Trademarks and Patents are somewhat similar in the fact that they seem to confer exclusive rights, the bottom line economic costs for them happen to be very radically different. I can acquire a Federally registered Trademark that has been checked for being new and novel for a few dimes, and all I will have to do is use it in interstate commerce for a few or 3 years to be able claim it to be Mine if I remember it correctly, unless anyone can Prove that it isn’t new and novel in a convincing manner, and that it might be causing the objecting party some sort of economic harm or confusion with their prior *Trademark*

    On the other hand, I have spent nearly $20,000 on my invention and application out of pocket for time invested in My R&D efforts and practitioner and PTO fees. If the obviousness standard suddenly becomes radically reduced to a preponderance of the evidence, and if the patent is deemed to not be inherently valid because the validity of the patent or claims is not presumed to be true according to the examination done by the USPTO, what do I really have after all of this? Probably very little indeed.

    Also, what about the patent rights of the owners of millions of currently granted patents? Much of the value of their patents will nearly instantly go away if the validity of US patents is successfully challenged. If the value of patents is allowed to be decreased in this manner, probably 70% of independents will just keep their day jobs and never have any incentives to invent new things and simply give them away for just a very expensive song and dance. Last I heard, innovative Small businesses account for about 60% or more of the new jobs created here in the US.

    If I thought that somebody was going to be able to take my house away from me for next to nothing, why would I even consider buying it in the first place? The latter versions of the House or Senate bills backed off of the ability to challenge to 9 months for re-examination, and 3 years for challenging the validity of the patent from economically concerned parties if I recall it correctly, or they would have had to forever hold their peace. Settled rights, so to speak. Potential investors might perhaps take a somewhat dim view of an ostensibly existing patent that might be invalidated just because Bigcorp happened to take a shine to the invention, or it was interfering with their desired business model for some inscrutable reason.


  10. Gene Quinn January 17, 2011 7:32 pm


    With all due respect, I don’t know what you are talking about really. Inventors are routinely prevented from practicing their own inventions when they invent on behalf of their employers, for example. It seems you are arguing that corporations shouldn’t own patents and inventors should have all the rights. Why then would corporations hire inventors and pay them? They wouldn’t.

    Also, there is nothing in my proposal that would encourage or even allow serial challenges.


  11. Ron Hilton January 17, 2011 8:20 pm

    The mere passage of time seems an unduly blunt instrument for “settling” patent rights. A more thorough prior art search, either through further examination or litigation, would be a much better figure of merit. With that one important caveat, I would not be opposed to the remaining proposals, although they would do little to directly address the issues of quality, pendency, and patent misuse (e.g. “trolls”).

  12. Bobby January 17, 2011 8:29 pm

    Sorry for being a bit unclear. I mean that someone who invented something could be prevented from practicing their own invention, not because any utilization of it utilizes another patent held by another party, not because they voluntarily signed away the rights, but because someone is falsely claiming to be an inventor of something they did not invent. The patent I mentioned in the IP Innovation case (5072412) was invalidated by prior art by Commodore’s Amiga and the original assignee appears to be Xerox. For the sake of example, let’s say that your idea of incontestable patents was already implemented in the 80s and that Commodore was still a competitor in the home computer market. The patent was issued in 1991, so in 1994 it would be incontestable. If Xerox still held the patent, Xerox could prevent Commodore from using technology that Commodore had developed before Xerox solely through a false claim to the USPTO, and Commodore would apparently have no way out. This would effectively be punishing the innovator in this case, which is quite certainly not going to lead to greater advancement of the state of the art.

    “Also, there is nothing in my proposal that would encourage or even allow serial challenges. ”
    There’s a bit of an incentive to do so. Bulletproof patents would be a very serious threat to a company in the relevant field, so it may be in a company’s best interest to prevent competitors or holding companies from getting bulletproof patents. If a relevant patent is just going to sit there being unused, it’s probably not worth anyone’s time to challenge it, but if it’s something that would be far more likely to cost you millions, possibly billions of dollars down the road, trashing the patents of competitors could be a worthwhile investment.

  13. Stan E. Delo January 17, 2011 9:42 pm

    Hi Bobby,

    Sorry, but this sounds rather a lot like more double-speak that completely avoids the real issues. Why didn’t the infringing party do their due diligence by doing a proper patent search? Invent whatever you want, but don’t expect too much mercy when the prior art was readily available, and you just sorta *forgot* to go look it up? Can you spell inequitable conduct? In other words fraud by way of ommission of disclosure by a practitioner licensed to practice before the USPTO or yourself. If you are writing your own applications, it will be on you and you might get a fine, but a practitioner might get sanctioned or dis-barred if they knew about it and didn’t report it or at least refuse to do what you or others were suggesting. They might lose their whole career just because you seem to think behavior like this is OK. Meanwhile you will be free to write more here to try to help destroy patent rights, which I happen to dislike rather a lot. As I have mentioned before, probably not very good survival tactics in your situation, since the the open source thing is so crowded that you probably will not survive as an independent *programmer* for more than about a year or so. Please prove me wrong, by being way more brilliant than the other 100 guys right behind you! Meanwhile I will continue to invent new things in spite of your efforts. Nothing personal, but I think you are perhaps just misguided a bit by your Gods Bill Gates and Mr. Allen. They invented very cool things, and now they are trying to take away my patent rights with all the Billions of dollars that they have reaped thereby. Last I heard, Bill was worth more than 36 BILLION dollars, but he gave about half of it away as a humanitarian gesture to help others at Warren Buffet’s request/suggestion, which I happened to find to be be very refreshing. MickeySoft is currently being managed by Steve Balmer, who has been a pretty arrogant and ruthless sort of person, hence the current challenge to the validity of the value of US patents that MicroSoft has been involved in lately in the I4I case. Mickey and et al tried to *BUY* patent reform to devalue US patents for about $400,000,000 over the last 5 years or so, but they Failed to buy their way out of being intentional infringers, so now they are trying to just devalue ALL US patents with their i4i case, but I sincerely hope that they will fail once again. There is a movement afoot to not allow this case to come before the Supreme Court, but the chances are that the Supreme Court will overturn the Fed Circ decision and further weaken the value of US patents.

    Ciao bella,

  14. Bobby January 17, 2011 10:33 pm

    Your post isn’t entirely coherent, so my apology if I misinterpret what you say.

    In the scenario given, the ‘infringing party’ Commodore invented the invention or something close enough to invalidate the about 2 years before Xerox filed the application. Even the best patent search in the world wouldn’t have done any good, because the patent was not filed until the future. Xerox may have been actively excluding this prior art or they might have done a diligent search and just didn’t find the relevant art, but what matters is that someone else invented it before them in 1985, they filed a patent in 1987, received a patent in 1991, and the final invalidation of the patent didn’t occur until 2010, presumably because the patent did nothing until a 2007 lawsuit. This is why I have a problem with Gene’s proposal, especially with the given period before incontestable status being so short.

    The USPTO is operated by humans, which make mistakes and are not omniscient. When a patent is granted in error, it can be very harmful, which is why we have to have proper checks to hopefully correct these errors.

  15. Ron Hilton January 17, 2011 11:16 pm

    How about “title insurance” for patents? If your patent gets invalidated, you get reimbursed up to the amount of the policy.

  16. Stan E. Delo January 17, 2011 11:57 pm

    Classic doublespeak Bobby, (and I quote)

    Your post isn’t entirely coherent, so my apology if I misinterpret what you say.

    In the scenario given, the ‘infringing party’ Commodore invented the invention or something close enough to invalidate (the about 2 years before Xerox filed the application. Even the best patent search in the world wouldn’t have done any good, because the patent was not filed until the future.)”

    How in the world can you file a patent application in the *future*? It hasn’t been invented yet or is instantly history because it is or has been invented before. I try to write carefully, so if you can’t understand what I am saying, perhaps you might want to take it easy just a bit. Not my problem if you can’t grok what I am trying to say. I am trying to speak common American English.


  17. Bobby January 18, 2011 12:40 am


    Let me make the timeline clear. In reality, the following happened:
    1985 – Commodore has a working product on the market that utilized the invention that was later patented
    1987 – Xerox files a patent for the invention, either actually unaware or pretending to be oblivious to the prior art
    1991 – The USPTO issues the patent to Xerox
    ???? – at some point in time, the patent was acquired by IP Innovation, LLC
    2007 – the patent is used in a lawsuit against Red Hat
    2010 – The patent is invalidated by evidence of a restored Commodore Amiga presented in court

    The only things I’m changing from reality in the proposed situation is that Commodore stayed relevant, Xerox retained the patent*, and Gene’s proposal of incontestable status 3 years afters issuance was in place by at least the time the Xerox patent was filed. Under these circumstances, Xerox could have sued Commodore for something Commodore had invented, and if was 1994 or later, Commodore wouldn’t be able to do anything about it even though there is clear evidence that Commodore is the actual inventor.

    *this change is not really important, but it makes things a little simpler

  18. Blind Dogma January 18, 2011 8:04 am

    Interesting thought Ron.

    How would premiums be determined?


    Your ignorance still doesn’t stop you. “Even the best patent search in the world wouldn’t have done any good” – You are aware that it is not “patent search”, but rather “prior art search”, correct? You are also aware that “prior art” that is kept hidden does not count and does not count for a well-established policy reason, do you not? This is yet another aspect of the patent system that you consistently miss – the patent system drives advances out into the published world, into the public. If a search by those who are expert , whose job it is to find that art fails to find the art, then it is fair to say that the art is hidden and not made public. (And yes, I realize that the Office may not be as good as this as desired – but that is an operational defect – not a policy defect).

    And to head off your inaccurate argument about “wastefulness”, your Douglas-minded flash of genius type of comments, the Legislature made it very clear that that line of reasoning is flat out wrong. Breadth of ideas put at the public’s disposal is a clear desired result of the patent system. There simply is no such thing as “wasteful spending” in this regard. ALL spending is useful.

    If you had any actual experience with the inventive process, you would realize that creativity is sparked by breadth of knowledge, and not by the pin-point of the current leading edge.

  19. staff January 18, 2011 11:01 am

    “Permanent Injunctions”


    Prior to eBay v Mercexchange, small entities had a viable chance at commercializing. If the defendant was found guilty, an injunction was most always issued. Then the inventor small entity could enjoy the exclusive use of his invention in commercializing it. Unfortunately, injunctions are often no longer available to small entity inventors because of the Supreme Court decision so we have no fair chance to compete with much larger entities who are now free to use our inventions. Worse yet, inability to commercialize means those same small entities will not be hiring new employees to roll out their products and services. And now some of those same parties who helped kill injunctions for small entities and thus blocked their chance at commercializing now complain that small entity inventors are not commercializing. They created the problem and now they want to blame small entities for it. What dissembling! If you don’t like this state of affairs (your unemployment is running out), tell your Congress member. Then maybe we can get some sense back in the patent system with injunctions fully enforceable on all infringers by all inventors, large and small.

    Patent reform is a fraud on America.

  20. Bobby January 18, 2011 12:01 pm

    @Blind Dogma
    While part of the scenario I’ve spoken of is fictional for the sake of a worst case scenario, part of it is based on real events. I have a timeline of the actual events, but it got caught in the filter. The patent in question didn’t stand up in court against the prior art.

    “You are aware that it is not “patent search”, but rather “prior art search”, correct?”
    Actually, what Commodore would do is a patent search, but they invented the invention in question before the patent was filed, so it wouldn’t be helpful. Xerox is the one that would do a prior art search, but they didn’t catch the prior art of the Amiga.

    “If a search by those who are expert , whose job it is to find that art fails to find the art, then it is fair to say that the art is hidden and not made public. ”
    Apparently, the court disagreed. The Amiga was by no means hidden, and the prior art was apparently noticed quite quickly by some commenters on Groklaw when the lawsuit came up. The patent was given to someone who did not invent the invention, and was invalid. The USPTO makes mistakes, which is why we have a system in place to allow us to correct these mistakes.

  21. Blind Dogma January 18, 2011 12:36 pm

    Why would Commodore do a patent search rather than a prior art search?

    Yes we have systems in place to correct Patent Office errors – yet it does not stop those who decry that the system should be abolished. Fancy that.

  22. Bobby January 18, 2011 1:13 pm

    Because Commodore was putting a product on the market, not applying for a patent.

    Since my comment still hasn’t come through, here’s what happened. Commodore puts Amiga on market in 1985, and it has the invention (multiple virtual desktops). Two years later, Xerox files a patent application for multiple virtual desktops. Xerox gets the patent in ’91, a holding company buys it up at some point in time, Red Hat is sued by said company in 2007, and Red Hat comes out successful in 2010 because a restored Amiga is demonstrated as prior art.

    If Gene’s policy had been in place when the Xerox patent was filed, then Red Hat would have lost. My scenario was a hypothetical where this situation could have been even worse by virtue of Commodore being sued for infringing on a patent where they are the actual inventor of the patented invention.

    “Yes we have systems in place to correct Patent Office errors – yet it does not stop those who decry that the system should be abolished. Fancy that.”
    Just because there are checks to fix a certain kind of error in a system doesn’t mean that a system works. And of course, the checks may still have serious flaws.

  23. Gene Quinn January 18, 2011 1:41 pm


    You say relative to my incontestable status proposal: “Xerox could have sued Commodore for something Commodore had invented…”

    You don’t know that for fact, although you assert it as fact. What we do know for fact is that changes in the law require businesses to operate differently. If there was no requirement for companies to challenge trademark applications in either opposition or cancellation proceedings they almost certainly wouldn’t until it mattered. So they challenge because they have to or they have to live with the consequences. That is exactly the regime we have in the patent world today.

    Pretending that companies would operate exactly the same under a new set of laws or regulations is simply unjustified and rather ridiculous.


  24. EG January 18, 2011 1:43 pm

    Another item to put on the “wish list” is modifying the SCOTUS decision in MedImmune which makes DJ actions almost if the patentee even sneezes. Medimmune, by itself, has almost completely changed the dynamics of patent licenses, shifting the balance greatly in favor of the licensee and against the patentee. For example, if the patent licensee doesn’t like something in the existing license, there’s not significant legal barrier to them running to court to get a determination through DJ action. Even prospective patent licensing is affected by how easily the prospective licensee can run to court if the patentee doesn’t bend over backwards. to avoid any suggestion that the prospective licensee isn’t risking a patent infringement action. We should go back to the Federal Circuit standard for DJs prior to MedImmune.

  25. Bobby January 18, 2011 2:13 pm

    I did mention that businesses likely to challenge patents more often under your system and maybe Amiga would or someone else would have challenged that patent (although you said you didn’t think that it would cause serial challenges, leaving the status quo), but the point is if a faulty patent manages to get incontestable status, then it can be used against the actual inventor without them having any defense. It could also be used against parties who didn’t invent it, but that’s often not considered quite as bad.

  26. Ron Hilton January 18, 2011 3:01 pm

    The “premium” to be charged for “patent title insurance” would be market-driven, but that’s admittedly not a very helpful answer. Perhaps it would be somewhere in the same vicinity as the cost of a “freedom to operate” opinion.

  27. Blind Dogma January 18, 2011 3:44 pm


    That would be doubtful, as the insurance premium may require such an opinion as a starting point and then would tack on the desired profit margin in light of the risks identified (or imagined). And do not forget the evolution of law risk factor – times are a changing and twenty years plus (tack on a bit for PTA) is an awfully long time to look ahead.

  28. blue January 18, 2011 5:50 pm


    you speak nonsense.

  29. Stan E. Delo January 18, 2011 6:10 pm

    Blind Dogma writes in part:
    “And do not forget the evolution of law risk factor – times are a changing and twenty years plus (tack on a bit for PTA) is an awfully long time to look ahead”

    Very well said methinks, The *Patent Reform* efforts in the near past were making me nervous enough to seriously make me reconsider if I should even try to acquire a patent at all. As Staff mentioned earlier, the recent loss of the ability to get even a temporary injunction, let alone a permanent one seemed to paint a pretty bleak picture for me being able to try to stop others from usurping my patent rights. As we all know hopefully, the PTO has nothing to do with the enforcement of my IP rights, so the loss of the ability to get an injunction granted would seem to make my patents WAY less valuable. Sorta like they broke the law by infringing, but there is no way to stop them, so what good is a patent in that situation? Also as EG mentions, if I try to protest directly to the infringing party, they will just go get a DJ, which means that I will have to go back and prove the validity of my granted patent all over again in court, probably to the tune of hundreds of thousands of buckaleros. (Very large sigh…)


  30. blue January 18, 2011 6:44 pm


    KSR allows the USPTO & the courts to continue extracting money out of inventors & tax payers and to issue patents that are likely to be worthless because of KSR and Ebay.

    Is the law promoting some kind of SCAM which targets individual inventors and making them believe that the law offers protection when the law really offers little or no protection?

  31. Stan E. Delo January 18, 2011 7:40 pm

    Hi Blue,

    The courts don’t extract money, they just adjudicate disputes, and make decisions based upon their interpretation of the current laws and regulations in whichever venue. Infringing parties are responsible for trying to negate the worth of our patents, and thereby making it so difficult and expensive to be allowed to keep our patent rights that had already supposedly been granted to be valid by the USPTO There really isn’t any sort of scam in my opinion, outside of Bigcorp trying to strip the ball out of small enities’ hands to make sure they can’t score a touchdown in Bigcorp’s end zone.


  32. blue January 18, 2011 8:10 pm

    what if the USPTO and the court know and understand that KSR & Ebay allow them to enforce different standards within the same legal framework which would do more harm than good to inventors?

  33. Gene Quinn January 18, 2011 8:23 pm


    I think the USPTO knows that and struggles to do as good a job as they can. Sadly, I don’t think some courts know, or care.


  34. Stan E. Delo January 18, 2011 8:51 pm


    The Patent Office has nothing to do with it after they have hopefully granted a truly *new and novel* invention a patent. Thats their job, and nothing else beyond that except for ex or intres partes requests for re-examination. The way the deck seems to be stacked these days, smaller entities are being hobbled by larger entities, to ensure their continued domination of the avaible market. The really sad part of this is that Bigcorp seems to have forgotten where they came from, with just few Granted patents and on a wing and a prayer a very few years ago. I would guess that Congress might be able to understand that in the next few years, and create new law that might protect small businesses and the innovators that caused them to be. God help us all if past legislative proposals are re-introduced! They are all so badly flawed with MickeySoft and IBM demands that they would probably cause the demise of the independent inventor here in the US, and perhaps much of the rest of the free world. OK, so I am probably over stating the case, but I believe active invention would be a terrible thing to waste.


  35. inventor0875 January 19, 2011 12:46 pm

    Is it feasible to separate these out into two legislations?

    First, immediately fix the patent office funding … without waiting for agreement on any other issues.
    The patent office can immediately proceed with developing/training needed personnel, technology, processes and quality … that will probably take 3 to 5 years to reach full capability.

    Second … agreement/legislation other issues … as this has already been taking many, many years.

  36. Blind Dogma January 19, 2011 1:28 pm

    Sage advice inventor0875.

    Fund properly first. Make sure that in whatever changes that follow, the proper funding mechanisms are maintained.

  37. Stan E. Delo January 19, 2011 1:59 pm

    Inventor and Blind Dogma,

    A great suggestion indeed. There was a bill proposed in the House last year that dealt with the funding problem in part, but to my mind it had several problems with it. http://www.govtrack.us/congress/billtext.xpd?bill=h111-5322
    If a bill something like this were enacted first it might draw attention in the House at least to the plight of inventors, and force the House representatives to think about patents for a few minutes, and the Senate would probably sit up and take notice if it passed in the House. The amount Congress is scalping from the PTO is such a tiny fraction of the Federal budget, that folks opposing giving back the funding would be glaringly exposed for their extreme short sightedness.


  38. Premiere Woo January 20, 2011 8:30 am

    This post should be entered into the Congressional Record, except for the last paragraph. The nuts at the USPTO already think they are a private corporation. There is clearly an US versus THEM mentality at the USPTO with a lot of flack going to the “corporate” crowd. You see this in business all the time today. The rank and file hate the suits. Call them “corporate” like that’s a dirty thing.

    Well, if the Congress did let the USPTO keep their fees, and charge what they want, surely the USPTO would become “corporate” in the most offensive way of all – it would basically be an operating unit like any other business on a financial statement. There is one difference however. The USPTO would be a monopoly business.

    I have a better idea for Congress. Get rid of the patent bar. We don’t need certification of existing lawyers. That just perpetuates the current mess. We need to eliminate it and open it up to sensible competition. Right now the patent bar acts like a bunch of aunties sitting around their knitting circle. It’s pathetic and the room needs some air. Congress must open a few windows and let the stench get out of the room. Eliminate the patent bar. It serves no useful purpose. Patent litigators and judges prove every day that you don’t have to possess an engineering degree to get it right.

  39. Anon January 20, 2011 11:14 am

    Get rid of the patent bar. We don’t need certification of existing lawyers.

    Premiere, your comment sounds more like sour grapes than an actual constructive comment.

    Destroying the “sensible regulation” of allowing those with a demonstrated understanding of the system is no way to open that system up to “sensible” competition. It is a sure way to open the system to every nutcase idea and drown the efforts to improve in a wave of wishful thinking.

    Everyone is welcome to attempt to gain that status as those who have joined the bar have earned. Show that you have earned that level and welcome to the “sensible” competition. Let’s not lose sight of the fact that the technical side is merely “a” side – it is not everything.

    Exactly how would dismantling a minimum level of proficiency test help rather than hinder the situation? As can be seen by the comments on this blog,those with no understanding of the patent system make ridiculous suggestions unfounded in actual law. Your comment about judges proving every day lays in sharp contrast to the recent Congressional approval of improving judicial understanding of patents.

  40. Anon January 20, 2011 9:35 pm

    Patent litigators and judges prove every day that you don’t have to possess an engineering degree to get it right

    This is pretty darn funny when compared to a story over at the Patent Hawk’s:


    I would say I could understand the difficulty in the Arlington Industries case, given the highly technical nature of the patents in suit, but that just wouldn’t be truthful.

  41. Blind Dogma January 21, 2011 8:06 am

    It looks as if what Congress should do and what Congress will (attempt) to do are (yet again) two very different things.

    And once again, I feel torn for wishing that the status quo, as broken as it is, remains in place over the carnage awaiting the retread proposals that are being brought out.


  42. Stan E. Delo January 21, 2011 10:01 am

    Hi Blind Dogma,

    Just this morning I got a tip from Greg Aharonian about what the new bill might look like. I haven’t had a chance to read it yet, but I am reasonably certain that it will be pretty much the same as the failed 2010 S. 515 bill.

    I had heard that the bill was going to be about the same again this year, which is only marginally less destructive of patent rights than the bill proposed back in 2007, the S. 1145 bill. It was very interesting that the last bill, S. 515, expired largely because the large high-tech firms that had been lobbying for it so diligently withdrew their support of it when the Senate had to back away from the damages portion of the bill to have any hope of it’s passage or even getting it to the Senate floor for debate and a possible vote. Has anybody heard yet when the new bill might be brought out of the judiciary committee to the Senate? I think I need to quaff about 2 or 3 quick glasses of Kool-Aid this morning!


  43. TINLA IANYL January 21, 2011 2:12 pm

    Hi, Gene.

    I am curious about your proposal “that if a patent hasn’t been challenged with 3 years after issuance it is eligible for incontestable status. What that would mean is that the patent could no longer be challenged for obviousness.” This is the first time I have seen any kind of proposal like this, and I don’t know if you have been proposing it for awhile, so please forgive me if you have answered these questions many times before.

    It strikes me that there would be several consequences to such a change. For example, competitors would liekly start monitoring each others portfolios and filing reexam requests upon granting of their competitors patents, so that every paternt gets immediately challenged upon issuance (how is this better than having inter partes examination proceedings form the start?). It follows that the PTO would have to expand its reexam resources an order of magnitude or, quite likely, much more in order to handle all of the reexaminations. In fact, I think that it could easily double the size of the PTO, (presuming that every patent gets reexamineded at least once), or even more, (considering that multiple reaxam requests can be anonymously filed for the same patent on many different grounds by the same entity using different law firms). It also follows that companies will find themselves more aware of their competitor’s patents, leading to increased need for preparation of clearance and/or invalidity opinions in order to avoid the consequences of having that knowledge. As a result, the financial bar to small entities for marketplace entry wil rise so high as to be insurmountable.

    Do you have some insights into how you think the rule would impact competitor’s behavior, and do you think Congress is willing to expand the budget of the PTO to the degree necessary to increase the reexamination bandwidth to the required levels?

  44. Premiere Woo January 21, 2011 11:29 pm


    Everyone with a pulse knows that the patent system is broken. Are you actually saying that the peer group most intimately involved with the process should not be subject to scrutiny, question, or possibly dissolution? My sad friend, you need to open your eyes. The foxes may be guarding the henhouse.

  45. Premiere Woo January 21, 2011 11:40 pm


    “Your comment about judges proving every day lays in sharp contrast to the recent Congressional approval of improving judicial understanding of patents.”

    Whose understanding? The patent bar? You call that understanding? The same group that has perpetuated the current procedural barriers in conjunction with the USPTO. Look at the patent bar test. 50% of it has nothing to do with engineering and science. 50% of it is pure statutory and regulatory process bloat. And surely the patent bar loves that. Look at the job descriptions for a patent examiner. The are procedural gatekeepers, and that’s about it. The judges are inept because they couldn’t tell you if an electron is negative or positive. What do you expect from literature or political science majors.

    For a fact, competent inventors themselves can understand the non-procedural requirements of patenting. If it wasn’t for that convenient process bloat at the USPTO, smart and determined inventors might not need legal help whatsoever. So yes. I stick with the premise. The patent bar has become a hinderance to the patent process because their have a vested $$$ interest in making the process bewildering to non-specialists.

  46. Anon January 22, 2011 12:04 pm

    Premiere –

    My eyes are open, but my mind is not so open that my brain falls out.

    Replacing foxes with a larger, more vociferous, carnivore is not an answer that I would countenance.

    You mistake the fact that this “peer group” must pass a minimum standard test with the power that this “peer group” somehow controls or is the primary fault with the current system. You seem to indicate that since the system is broken, we must throw out the baby with the bathwater. Even though you seem to have softened your first comment by now indicating that it is a mere possibility of dissolution, your aim is plainly evident. You wish to open the system to those who show no understanding of that system in some misguided ideal that things will get better. How is this “opening ones eyes”?

    No, Premiere Woo, it is not I that needs to have eyes opened. I can clearly see your “agenda”.

  47. Gene Quinn January 22, 2011 1:10 pm


    I sense your frustration. I am not trying to stir things up, but it is simply incorrect and at least a little bit insulting to say (as you do) that the patent bar is conspiring with the USPTO to create procedural barrier that make it impossible for inventors to adequately represent themselves.

    First, you are correct when you imply that it is impossible for inventors to adequately represent themselves. The rules, law and procedure are simply too difficult. Inventors who represent themselves ALWAYS come out with less rights, frequently to the point where the entire exercise of obtaining rights was futile. That is not a problem created by the patent bar though, so lets keep the debate honest, shall we? The problem is the Courts and to a lesser extent Congress and the USPTO. The information needed to obtain a patent, the rules used to judge a patent application and the almost nonsensical Monday Morning Quarterbacking that goes on in some cases has raised the cost dramatically over the years. Like I tell inventors all the time, if you do not treat your invention as the million dollar invention by the time you realize it is the million dollar invention you will be unable to do anything about it because you will have compromised your rights. So applications explode in size and depth. The Courts place more examining burdens on the USPTO without regard to whether it makes sense in a holistic way or even whether what they announce can be accomplished.

    Your ire is understood, but try and direct it to where it belongs.


  48. Premiere Woo January 22, 2011 2:35 pm

    I see. It’s the fault of the courts. It the fault of the judges. It’s the fault of the litigators. It’s the fault of the corporations. It’s the fault of the inventors. It’s the fault of the USPTO. But nowhere is it the fault of the patent bar, the single most vested interest in the entire equation. So, hand’s off the patent bar. Hey. I understand how sensitive people might be who have invested their entire education in this package, but they better be willing to look themselves in the mirror and ask hard questions about the course they are on. Because if they let this trip continue, there won’t be enough lifeboats for the Titanic.

  49. Blind Dogma January 22, 2011 5:22 pm

    Thank you Premiere Woo for sampling my latest taste treat.

    I am looking for a more catchy name than “they must be guilty because they must pass a test to be admitted and thus they must have secret control of the Law and Rules“.

    Do you think “Insane Conjecture” might catch on? Or I can market the sports angle and feature some of the largest jumps in logic as made possible with this drink. Or perhaps I still have time to catch onto the ultra-sour craze and call the drink “Goofy Grape” ( I take it that you are mad that you failed that patent bar test. So sorry. Better luck next time).

    And by the way, I am pretty sure that you not find the bar blaming inventors (bad business move there). But thanks for providing straw(s) to go with the drinks.

  50. Premiere Woo January 22, 2011 6:29 pm

    @Blind Dogma

    Why is it that you and @anon infer that I must have been rejected from the patent bar? No such thing. I furthermore have no desire to help inventors or corporations with their patents.

    I criticize the medical profession. It doesn’t mean I want to be an MD. Get control of imaginations.

  51. Blind Dogma January 22, 2011 7:05 pm

    I furthermore have no desire to help inventors or corporations with their patents.

    Tell me something that I do not know.

  52. Stan E. Delo January 22, 2011 7:33 pm

    Blind Dogma,

    “Or perhaps I still have time to catch onto the ultra-sour craze and call the drink “Goofy Grape” ( I take it that you are mad that you failed that patent bar test. So sorry. Better luck next time).”

    I have been thinking of calling my *NEW* flavor “Looney Lime” , so I hope we won’t have any Trademark confusion issues between us! Maybe I better keep looking for a different Trademark name just in case you might object.


  53. Anon January 23, 2011 1:13 pm

    Premier Woo,

    You ask me to open my eyes, whilst you clamp yours shut.

    Your comment at 11:45 (number 45 above) was missed in the filter process when I submitted my comment at 12:04 (number 46 above).

    Your comment is replete with error and false innuendo.

    To my comment of “Your comment about judges proving every day lays in sharp contrast to the recent Congressional approval of improving judicial understanding of patents.

    You replied “Whose understanding? The patent bar? You call that understanding? The same group that has perpetuated the current procedural barriers in conjunction with the USPTO.

    You neglect to include from the very comment you quoted at 9:35 (number 40 above) the actual answer to your question of “whose understanding” – I clearly indicated that it was my understanding. You have also misconstrued just what the “understanding was geared to – the technical complexity of the particular patent in that decision that laid waste to your unsubstantiated claim that “Patent litigators and judges prove every day that you don’t have to possess an engineering degree to get it right” at 8:30 (number 38 above). Witnessing how your own arguments miss the point, is a clear indicator that opening up the process to someone so driven with an agenda and so careless in their presentation would be a grave mistake. Your subsequent comment about lack of caring for the recipients of patents at 6:29 (number 50 above) only proves beyond doubt that my eyes were indeed open.

    Furthermore, you make a clear error in supposing that it is the patent bar that “perpetuate[s] the current procedural barriers in conjunction with the USPTO“. The patent bar has no such control. If you had even the slightest knowledge of how the patent system actually works, you would not make such a reckless error. I am sorry that I missed this “tell.”

    By the way, I gave you the benefit of the doubt that you had taken the practicioners exam because you are discussing that exam and I did not think that you would be discussing something that you had no familiarity with. I see that that is an error on my part.

    Do you really think that reckless criticism, unfounded in knowledge or understanding, is really going to improve the system? That’s like saying that a better way to cross a busy highway is to don a blindfold and head straight across. It takes very little imagination to figure out what will happen.

  54. Premiere Woo January 23, 2011 3:18 pm


    You can blame me too, in addition to the stupid judges, juries, litigators, examiners, politicians, professors and everyone else at the receiving end of your pointed finger. Or you can recognize that the patent bar outnumbers those above by what, 10 to 1, 100 to 1, maybe 1000 to 1. Then ask yourself whether the patent bar, with all its cumulative power, is really doing it job of making the system better, or is it part of the problem. To me it looks like the patent bar is part of the problem. Who is writing the vast majority if the unenforceable patents? Of course, members of the patent bar, that’s who. What if medical doctors had a record of saving only 20 percent of the patients who come into their office. You wouldn’t see them around too long with that kind of track record. I don’t think the members of the patent bar are being sincere when they place the blame on everyone else but themselves. That is simply not rational. The members of the patent bar should quit complaining about the horse they are riding on. They should realize there is no such thing as a dumb horse, there are only dumb riders.

  55. Premiere Woo January 23, 2011 3:30 pm

    @ Blind Dogma and Stan. You mean that the best you can do is attack me personally with your colorful analogies, or try and parse my sentences like they were some kind of patent claim, or subject my broad observations to your narrow exceptions? I’m trying to make a point. You all are completely missing it. I guess you just don’t want to see the bigger picture here. Okay then. Continue to sit in the back seat and let other people control your destiny. Permission granted.

  56. Premiere Woo January 23, 2011 3:39 pm


    “I gave you the benefit of the doubt that you had taken the practicioners exam because you are discussing that exam and I did not think that you would be discussing something that you had no familiarity with.”

    I do have familiarity with they exams. You can read many of them online. It takes about 5 minutes to discover that 50% of the questions are about procedural matters. One doesn’t have to take the patent exam to know what’s on it. Duh.

  57. Premiere Woo January 23, 2011 4:07 pm

    @anon and Gene

    “Furthermore, you make a clear error in supposing that it is the patent bar that “perpetuate[s] the current procedural barriers in conjunction with the USPTO“. The patent bar has no such control.”

    I’m sticking with this point. You may disagree. I may be wrong but I don’t think so. The USPTO and the patent bar are too closely tied not to have a symbiotic relationship, including the way they dance together — I see it as
    the patent bar giving tacit approval for failure to object — and I ask myself why? Why is there not a greek chorus of objection to all this obfuscation. Of course there is a reason. Obfuscation helps build professional clout. The other part of the answer is: Don’t bite the hand that feeds you.

  58. Stan E. Delo January 23, 2011 4:16 pm


    I think your medical doctor analogy is a gross exaggeration, and errs in the wrong direction. I believe that patents are litigated at a rate of only about 2%, and the majority of those cases are settled out of court. I may have the numbers a bit wrong, but certainly not by much. Hardly a scathing criticism of Patent attorneys and agents and USPTO examiners, I tend to think, and is in fact a pretty good indicator that they are all mostly doing exemplary work. There will always be exceptions where attorneys are incompetent even though passed the bar exam, but they are very few and far between in my opinion.


  59. Premiere Woo January 23, 2011 6:11 pm

    Sorry if I offended anybody or everybody. It wasn’t my objective. My first post should have made that apparent.

  60. Anon January 23, 2011 9:22 pm

    Premiere Woo,

    A simple question – If you do not care to help, what exactly is it that you care to do?

  61. Blind Dogma January 23, 2011 11:11 pm


    Quite simple – Premiere Woo is anti-patent. It is almost an axiom that anti-patent folks will want any change that helps the patent system implode and one sure fire way of hastening such a demise would be to”open the system to those who show no understanding of that system in some misguided ideal that things will get better“.

    Those with no understanding already try to equate their position as being on even moral grounds. There is no shame in those with this agenda. None.

  62. Woo "Simply Incorrect" Not January 24, 2011 11:39 am

    “To the extent that an administrative agency interacts repeatedly with a particular constituency, especially a constituency with whom it shares a particular expertise, that constituency is likely to exercise undue influence on the agency’s rulemaking process. That is a special risk with patents.” Pg 106, “The Patent Crisis”, 2009, by Dan Burk and Mark Lemley.

  63. Blind Dogma January 24, 2011 2:03 pm

    Lemley” – that should be your first clue.

    Here’s a hint if you want to improve your credibility: Know the sources of your quotes and the reputations earned by those sources.

    Lemley is the premiere anti-patent academic out there.

    Take another big gulp, my friend.

  64. Stan E. Delo January 24, 2011 2:24 pm


    Exactly correct, and very well said! You beat me to the punch (again)~ Academic is the operative term here, as the vast majoriy of IP *academics* have never prosecuted a patent before.


  65. Premiere Woo January 24, 2011 3:34 pm

    Blind and Stan. You’re really kidding yourselves, and now my perspective of the patent bar has turned to pity.


    Mark Lemley (BA ’88) is the William H. Neukom Professor of Law at Stanford Law School, the Director of the Stanford Program in Law, Science and Technology, and the Director of Stanford’s LLM Program in Law, Science and Technology. He teaches intellectual property, computer and Internet law, patent law, and antitrust. He is the author of seven books (most in multiple editions) and 111 articles on these and related subjects, including the two-volume treatise IP and Antitrust. His works have been reprinted throughout the world, and translated into Chinese, Japanese, Korean, Spanish, and Italian. He has taught intellectual property law to federal and state judges at numerous Federal Judicial Center and ABA programs, has testified seven times before Congress and numerous times before the California legislature, the Federal Trade Commission and the Antitrust Modernization Commission on patent, trade secret, antitrust and constitutional law matters, and has filed numerous amicus briefs before the U.S. Supreme Court, the California Supreme Court, and the federal circuit courts of appeals. He has been named California Lawyer’s Attorney of the Year (2005), Best Lawyers’ San Francisco IP Lawyer of the Year (2010), and a Young Global Leader by the Davos World Economic Forum (2007). In 2009 he received the California State Bar’s inaugural IP Vanguard award.

    In 2002 he was chosen Boalt’s Young Alumnus of the Year. He has been recognized as one of the top 50 litigators in the country under 45 by the American Lawyer (2007), one of the 100 most influential lawyers in the nation by the National Law Journal (2006), one of the 10 most admired attorneys in IP, one of the top intellectual property lawyers in California (2003, 2007, 2009, 2010) and one of the 100 most influential lawyers in California (2004, 2005, 2006, and 2008) by the Daily Journal, among other honors.

    Mark is a founding partner of Durie Tangri LLP. He litigates and counsels clients in all areas of intellectual property, antitrust, and Internet law. He has argued six Federal appellate cases and numerous district court cases, and represented clients including Comcast, Genentech, Google, Grokster, Hummer Winblad, Impax, Intel, NetFlix, Palm, TiVo, and the University of Colorado Foundation in 75 cases in nearly two decades as as lawyer.

    After graduating from law school, Mark clerked for Judge Dorothy Nelson on the United States Court of Appeals for the Ninth Circuit, and has practiced law in Silicon Valley with Brown & Bain and with Fish & Richardson and in San Francisco with Keker & Van Nest. Until January 2000, he was the Marrs McLean Professor of Law at the University of Texas School of Law, and until June 2004 he was the Elizabeth Josslyn Boalt Professor of Law at the Boalt Hall School of Law, University of California at Berkeley.


  66. Gene Quinn January 24, 2011 3:52 pm


    Why is your perspective of the patent bar turned?

    I know Mark Lemley quite well, but the fact that he has a lot of experience and has managed to walk the fine line between academics and real practice doesn’t mean his positions are pro-patent. Yes, Mark represents big corporations, but most of those corporations would greatly prefer a weaker patent system. Notice he also represented Grokster, which was a file sharing website that ripped off copyrights. Lawyers take their clients as they come, and he has a lot of experience and a great client roster, but at least his latest positions are what I would characterize as anti-innovation, such as reducing the burden of proof to invalid a patent claim. That helps established companies that are patent litigation defendants but absolutely destroys those that are start-ups with new technologies and need strong patents to obtain investor funding.

    Stan also correctly pointed out that academics typically have never prosecuted a patent before, and he is 100% correct. Mark Lemely is not a patent attorney registered to practice before the USPTO, which means he cannot prosecute patent applications. That is not to say that he doesn’t know what happens, but the truth is that unless you deal with the Patent Office there is a great number of things you simply cannot appreciate. For example, patent examiners ignoring the law and doing whatever they want, which does happen from time to time.

    So you can feel pity if you like, that is up to you, but nothing Stan or BD said is incorrect, although I would tend to be kinder to Lemley than BD. Nevertheless, you do need to understand the biases you choose to quote. Lemley has a few. He is an academic and he also represents clients, so if you cite him it should be because what he says makes sense and not as authoritative in and of its own right. He is an advocate.


  67. Blind Dogma January 24, 2011 3:52 pm

    And now the pity is for you who judges a book by its cover (even a very illustrious cover) and neglects to actually read the book.

    Seriously, read his stuff. My point stands (no matter how fancy that cover is on the book). Well, OK, understand patent law first, then read his stuff.

    And bring plenty of cash, as that reading in particular will make you mighty thirsty for my tasty treats.

  68. Premiere Woo January 24, 2011 6:58 pm

    I did read Lemley’s book. He imparts nothing anti-patent whatsoever. I’ve heard him speak in person. He said nothing anti-patent. I’m sure he would greatly deny your “anti-patent” characterizations. You would too know that if you read his book.

  69. Blind Dogma January 24, 2011 10:03 pm

    Premiere Woo,

    I did note my statement with “understand patent law first, then read his stuff.”

    Quite frankly, given your statement at comment 50, why should I be inclined to think that you have the faintest understanding of patent law? You would not be able to tell what is anti-patent from what is not.

  70. Stan E. Delo January 25, 2011 2:10 am

    I can’t help but wonder if Mr. Lemley has given anyone permission to quote his book, and *publish* his credentials here. If I were in fact an attorney, I might perhaps take a bit of an exception to folks that are purporting to advance my agenda or views and are being so reckless. I most certainly would take great exception if they were copying my writings and posting them on the Internet without my permission.


  71. Stan E. Delo January 25, 2011 4:57 am

    Express Permission


  72. Blind Dogma January 25, 2011 8:03 am

    Then again Stan, one might consider that certain items that are public information just might elude the control of your express permission.

    Of course, one might also consider the nuanced difference between copying and plagiarism…

  73. Stan E. Delo January 25, 2011 9:05 pm

    Fair enough BD, but if I were the attorney in question, I might be tempted to call PW and ask him or her to cease and desist in yanking quotes from here or wherever to try to make their particular *precious* points, if there are any to be made at all. Since PW has been posting about 12 times per day, fhe whole agenda thing springs to mind for me. Since Himalayan Blackberries are so rampant here, I am thinking of a *NEW* flavor called Boistrous Berry or something similar. Logan berries with a solid Black berriy back, with an overt Gooseberry overtone. Tne Mandrake root ingredient is perhaps a bit dangerous if not taken as prescribed, but surely you have a good handle on that aspect of things. The main point is that the vandals seem to be confused and are puzzled, and no Actual Inventors are being harmed thereby. Confused and worried? Call 1-800-291-WAWA in that eventuality.

    BTW, I have a fairly near neighbor that calls himself Emperor Zane, replete with his edict of enactment of what he thinks is correct. He cuts a very stylish figure when he is riding down the road on his bicycle wearing his Gold plated helmut with the very large fluffy feather attached to it. He doesn’t seem to have the slightest clue about how deranged he is, which is sorta OK with me as long as he doesn’t hurt others.

    Whattaya think of the name Crazy Crancherry? Maybe a little too far over the top? Serve very cold with a Barbados Rum backup shot.


  74. Blind Dogma January 26, 2011 8:11 am

    Himalayan Blackberries, Logan berries, Gooseberry, Mandrake root, Barbados Rum…

    Stan, I may have a spot for you in the development lab…