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Archive for August, 2012

Flaw in Google Patents – Non-citations (& non-prior art) listed as “Citations”

17 Aug

What is Google Patents up to??
I found an interesting anomaly with Google Patents while working with 6,425,764 for a prior post . Google Patents lists (see http://goo.gl/Tjnbd) as “citations” on the patent “Overview”, 19 patent references, among them being two Hodges & Rothbaum patents that were cited under 35 USC 102e (effective as of their filing date to show invention prior to the applicant’s filing date which is presumed to be the date of invention unless shown to be earlier) and then removed following the applicant’s submission of a Rule 131 Affidavit proving the applicant’s date of invention was before those patents were filed . I know this from the file history. This is confirmed by looking at the front page of the patent itself (see http://goo.gl/TpQkH) only lists 5 patents as “cited references” That is, Google lists 14 non-citations as citations including two that were specifically held NOT to be prior art during prosecution of the patent – very wrong and misleading of Google Patents. Wonder why they do that!

 
 

Google Patents “Prior Art Finder” Is An Infringement Location Tool

16 Aug

New tool available from Google Patents that not only helps locate prior art but also helps locate infringements.

Google has added to each patent overview in Google Patents (see for example 6,425,764 at http://goo.gl/f31nh) , a blue button labeled “Prior Art Finder”, which appears to be a search tool that searches Google Scholar, Google Patents, Google Web, Google Books and Google People databases to try to find references that use the words of the patent claims in the patent. By default this gives the top 10 references from all those sources. Very cool, right? It arguably does for free in seconds what an invalidity searcher would charge thousands of dollars to do in a few weeks. The Geeks who have noticed it so far have touted it as a new way to fight patent trolls by cheaply locating patent killing prior art.  And, it will surely do that in some situations.  Patent defense attorneys will certainly welcome this new tool, as they and their engineers can pour over this stuff and quickly locate significant prior art to use in invalidity arguments and/or invalidity opinions. Even though I do more plaintiff work, I also welcome it as it allows me to play devil’s advocate and locate those things I might expect my opponent to assert in arguments for invalidity. I also welcome it on an objective level as being an objective “truth finder”.  This tool is arguably neutral as to whether what it finds in invalidating art, as it just apparently searches for things in a given time period that seem to be similar based on the words of the patent claims in question.

As a plaintiff’s attorney in infringement cases, I notice a neat and perhaps unintended capability of this “Prior Art Finder”. As the saying goes, “what infringes if later, anticipates if earlier”.  The Prior Art Finder has user adjustable search fields for the beginning and ending date of the search it makes. Again referring to 6,425,764 (Lamson VRIT patent) when we click on the Prior Art Finder button we get the following screen http://goo.gl/eO4fO in which you will see on the left the heading “Custom Date Range” which can be adjusted. For example with 6,425,764 I know the priority date is the provisional filing date of 06/09/1997 rather than the non-provisional date 12/12/1997 listed. Apparently the Google programmers realized this sort of situation and made the date range fully adjustable.  However, here’s the really neat twist for patent enforcers – if you make the starting date the issue date of the patent and leave the ending date blank or today, you get an infringement search since now the “Prior Art Finder” becomes a subsequent art finder.  So in my example, doing that produces http://goo.gl/rn4qt a list of possible infringements. Note it can also be customized by clicking on one of the boxes at the top of the page, say Patents, to just list patents or to Scholar to just list scholarly articles, etc.  As the attorney for 6,425,764, that is a great tool I will certainly use to advantage.

L2BL (lesson to be learned) What anticipates if earlier infringes if later.

 

Christal unclarity on patent law?

07 Aug

From our “Muddled Thinking?” Department comes this recent post on guest post on Patently-O, which we will repeat and then dissect with commentary.

Guest Post by Christal Sheppard: Solving a Knotty Problem: An Outrageous Call for Patent Reform Part Deux

Dr. Sheppard is an Assistant Professor of Law at the University of Nebraska Lincoln College of Law.  Prior to joining the University of Nebraska, Dr. Sheppard was Chief Counsel on Patents and Trademarks and Courts and Competition policy for the United States House of Representatives Commmittee on the Judiciary. – Jason

By A. Christal Sheppard

Just over a week ago, Dennis Crouch stated on Patently-O that “[i]t is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.”  The confusion on what is and what is not patentable is not a new debate but has come to a head in the last few years with the Supreme Court taking on certiorari multiple cases on the matter of patentable subject matter and the Court of Appeals for the Federal Circuit, arguably, disregarding Supreme Court precedent.

We all understand the problem[1], but what is the solution?  The question of what should be patentable is fundamentally a public policy decision.  This public policy decision is one that the framers of the Constitution contemplated and specifically tasked one specific entity with balancing the equities.  The Constitution states “The Congress shall have Power…[t]o 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.”  Congress not the Courts was tasked to determine what should be eligible for the “embarrassment of a patent.”  However, the Courts, led by the Court of Appeals for the Federal Circuit, not the Congress, have driven the expansion of Patentable Subject Matter to “anything under the sun made by man.”

Case law dictates that the intent of Congress was 1) that patentable subject matter is a requirement separate from that of the other requirements of the patent laws and 2) that Congress intended for anything under the sun made by man to be potentially patentable with the exception of laws of nature, natural phenomena and abstract ideas. Thus, the Courts have, by a stepwise expansion of patentable subject matter to software and business methods, created a situation whereby the high tech industry has been legally encouraged to tie itself into a Gordian knot.  A knot that, without overruling prior precedent, or creative interpretation of precedent, the Courts cannot resolve.

This blog post is to propose that the United States Congress immediately take an active role in the creation of the parameters for patentable subject matter.[2] Congress is the only entity that has the ability and the resources to resolve this conflict in a reasonable and responsible manner. It is also the entity charged by the Constitution with doing so.

I’m not unaware that using the terms “reasonable” and “responsible” in the same sentence with the United States Congress during an election year will globally elicit sound effects from chortles to foul language questioning my mental facilities.  However, below are a few points that are worth considering regarding who is best positioned to advance a solution to what most of the intellectual property community would consider a mess.

  1. The Constitution does not require patents to be granted and while our international agreements do require minimum patent rights, software and business methods are not among them.[3]  Currently we have a Court created expansion of the definition of what is eligible for patent.  Congress has yet to wade into this morass of what should be eligible for a patent except to provide for exceptions to the Court-created expansion. Congress has created exceptions in piecemeal “fixes”, specific individual carve-outs, instead of addressing the broader issue head-on.[4]
  2. History shows that Congress once before stepped in when the Supreme Court and the predecessor to the Court of Appeals for the Federal Circuit were in discordance.  In the 1940s, the country was then also wrestling to establish a standard of invention.  The Administration appointed a Commission and the patent bar was up in arms.  As a result, section 103 – nonobviousness – was added to the statute by Congress in 1952 to inject a stabilizing effect that the Courts and general practice had not been able to accomplish over decades.  What is needed in the current situation is stabilization.  Today, the Courts are destabilizing the law of patentable subject matter rather than stabilizing it.
  3. Businesses need certainty to operate and to plan effectively. Only Congress can be prospective in its resolution.  For instance, if Congress decides that software and business methods are not patentable subject matter ONLY the Congress can make this prospective to not conflict with settled expectations.  If the Supreme Court narrows patentable subject matter, or patentability more generally, trillions of dollars of company valuation evaporate from the balance sheets with one Supreme Court decision.[5]  However, Congress can decide that starting on a date certain in the future that all patents granted or applications filed before that date are under the “old” common law rules and all patents post-implementation are under the new law.  Congress can provide finality on this issue without gutting company value.[6]
  4. Only Congress can create an alternative method of protection, apart from patent, for items that they determine do not meet the test for “promoting the process of science.”  For example, concurrent with the delayed implementation of a narrower definition of patentable subject matter, Congress can provide sui generis protection for those fields they decide to carve-out.  Many such ideas have been proposed, such as shorter exclusivity duration and limited remedies.
  5. A Congress, unlike the Courts whose precedent binds future judges, cannot bind a future Congress.  Should the law of patentability need to expand for unknown advancements, Congress can do that in a way that is much less disingenuous than the Courts.   The framers of the Constitution contemplated this in their directive to Congress.  The language in the Constitutional defining  what should be eligible for the monopoly is malleable so that patent law can adjust as technology and the need for promotion for the advance of science changes over time.

There are a multitude of very good reasons why calling on Congress is not a perfect solution.  But with Myriad and the patentability of gene sequences and genetic testing on the horizon, does the intellectual property community want the Courts or Congress to decide this public policy issue?  Businesses need certainty and only Congress can now provide that stabilizing influence without destabilizing entire industries.  Whether Congress will or not, ought not prevent the assertion that they should.

Food for thought…


[1] The Supreme Court decisions have done nothing to clarify what is and what is not patentable.  At this juncture, not only is the Federal Circuit in rebellion against the Supreme Court; an influential judge from another circuit dismissed an entire high-tech case with prejudice and promptly penned an article entitled “Why There Are Too Many Patents in America”; the International Trade Commission is under siege from an explosion of technology cases and recently sought comment from the public as to whether certain patents should have limited remedies; the Administration (United States Patent and Trademark Office and the Department of Justice) have differing opinions regarding the patentability of genes and genetic tests; thermonuclear patent warfare between high tech companies is overloading our courts; market based solutions are spawning Fortune 500 companies as the new patent troll; and a patent valuation bubble reminiscent of the real estate market before the crash is driven ever forward as companies amass patents as a shield of paper armor not as an instrument of innovation.

[2] One thing is certain, there will not be unanimous agreement on what should be patentable subject matter; however, someone should decide and should decide now.  Moreover, that decision should not negatively affect those who have relied upon the law as the Court defined and expanded it over the last 40 years only to now sound the horns of retreat.

[3] I am not here advocating for any particular resolution, I am merely pointing out a fact.

[4] Prior user rights for business method patents in the 1999 American Inventors Protection Act; Human organisms, tax patents and creating a business method patent post-grant opposition procedure in the 2011 America Invents Act.  The Congress did not address the latter three as patentable subject matter issues, but in carving them out the Congress is showing that there are additional areas that they have determined should not be entitled to patents where the Courts have determined otherwise.

[5] Of course patents are subject to case-by-case challenges but the Supreme Court seems to be signaling that whole categories of patents, while still technically eligible, would not meet the Courts inventiveness test as a practical matter.

[6] Congress can also provide some finality on the issue of whether patentable subject matter is a separate requirement from 102, 103 and 112.

http://www.patentlyo.com/patent/2012/08/guest-post-by-christal-sheppard-solving-a-knotty-problem-an-outrageous-call-for-patent-reform-part-d.html

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COMMENTARY

“The confusion over what is patentable and what is not.” is an artificial confusion, created as a straw man by those seeking to alter 200 years of constitutional law by making “discoveries” mean not “discoveries” but “discoveries in areas other than those where rewarding inventors is inconvenient to the rich and powerful people paying lobbyists to confuse us into denying rewards to inventors.”

“We all understand the problem”? First she says “we do not have an answer” and then “we all understand”. Typical Washington doublespeak.
She is wrong to say that Congress, not the Courts, is tasked to interpret the Constitution and laws. For 200 years since Marbury v Madison, the Supreme Court has been the ultimate interpreter of what the Constitution and laws mean. Congress is the elected legislative body which passes laws based on public policy considerations, or more truthfully based on financial election campaign contribution considerations. The Courts are there to keep Government, including the best Congress money can buy, in check by preventing public policy (i.e. campaign contribution) considerations from over-riding the Constitution and enacting fat cat legislation. The Courts are there to try to protect the people from oppression by their Government.

“Case law dictates that the intent of Congress was” – now there is an interesting about face, “case law” means Court decision. First she says Congress decides then relies of Court decisions to try to make her point. There is indeed confusion there, and it is in her muddled logic. With changing positions so often, she must be a Romney supporter like Jenna Jameson.

“Currently we have a Court created expansion of the definition of what is eligible for patent.” BS, we have a Congressional and Court created contraction of what is eligible. The Constitution says patents may be awarded for, without any limitation whatsoever, “discoveries”, whereas the Court has contracted that to exclude abstract ideas, laws of nature, and natural phenomena, which are discovered as having been created by God not man. Some of the most important discoveries are law of nature such as the Theory of Relatively, or natural phenomena such as The Higgs Boson (“the God particle”)..

“section 103 – nonobviousness – was added to the statute by Congress in 1952 to inject a stabilizing effect that the Courts and general practice had not been able to accomplish over decades.” That’s an interesting lie. She rewrites history to her liking. Nonobviousness was definded by the Supreme Court in Graham v John Deere and Giles Rich wrote it into the 1952 Patent Act to merely adopt the Graham v. Deere standard. Congress did not stabilize the law by injecting the “non-obviousness” standard, the Supreme Court did. Credibility goes out the window when you are caught rewriting history to try to push your political agenda.

“Only Congress can be prospective in its resolution.” More altered universe. The Courts are routinely prospective in their holdings. The non-obviousness standard in Graham v Deere, which she just miscredited to Congress, is one example. The bright-line machine or transformation test (that the CAFC attempted to impose and the Supreme Court muddled up by instead using a vague and nebulous commercial viability standard) was clearly prospective in intent. The purpose of having CAFC jurisdiction over patent cases was to encourage this prospective unification of court decisions to lend certainty to patent law. It is Congress and the Supreme Court that are mucking it up with uncertainty, as we never know what monied lobbyists will get Congress to do next, and we never know for sure what the non-patent lawyers of the Supreme Court will do to muddle patent law.

“Should the law of patentability need to expand for unknown advancements, Congress can do that in a way that is much less disingenuous than the Courts. The framers of the Constitution contemplated this in their directive to Congress.” Wishful thinking does not substitute for fact. Since when did Congress become anything other than disingenuous? Congress’s 9% approval rating shows how Americans feel about that. The framers set the Courts, not Congress, as the final authority on the Constitution and all the wishful thinking of how it would be nice if Congress was less disingenuous than the Supreme Court does not change the fact that it is the best Congress money can buy and no amount of money seems to be able to buy a Supreme Court justice, as Justice Roberts recently showed in his Obamacare decision. Congress is not working to do anything that is less disingenuous than the Courts, and that is just the way it is and why we have the Courts and not Congress as the final authority on the Constitution. What a crock that “Congress is less disingenuous” statement is!

“does the intellectual property community want the Courts or Congress to decide this public policy issue?” That presupposes the conclusion that Congress should handle Constitutional patent law issues. Easy for me. I think it’s a matter of constitutional law, not public policy, and I choose the Courts. Look at the AIA if you think Congress is competent to reform patent law. Congress is competent to do what big campaign contributors tell it to do unless the public outrage gets so severe that big campaign contributors can’t overcome the outrage.

” I am not here advocating for any particular resolution, I am merely pointing out a fact.” LOL. Get out the water hose your pants are on fire.

 
 

SHIELD Act to “Protect against patent trolls” – Would it?

05 Aug

http://www.article-3.com/shield-against-patent-trolls-98209

An article recently published extolling the virtues of a proposed Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act. The Act seeks to protect high tech businesses against suits by patent enforcement companies (patent trolls or PECs) by adopting a one-sided “loser pays the costs of the winner, but only if loser is the patent owner” policy.  The author of the article says “As they stand today, our current patent laws do little-to-nothing to protect businesses from egregious lawsuits. A new bill proposed this week might actually make a dent in the saga of tech patent wars.”

So, the party asserting a patent would pay costs of the alleged infringer if the infringer proves the patent invalid, but the infringer does not pay costs of the patent owner if the invalidity defense is frivolous.

So, the proposal would make a patent infringement trial inherently unfair.  It needs an amendment to make it simply “loser pays”.

Bruce Burdick

The Burdick Law Firm, Alton, IL

 

Real Patent Reform

02 Aug

In several recent blogposts on his popular TechDirt blog http://www.techdirt.com/, Michael Masnick suggest that “real patent reform”, should begin with the following:

Independent invention defense. In his [ed. Judge Posner’s] article, he even mentions that copyright already (effectively) has this. Copyright infringement has to involve copying. Patent infringement does not. The fact that so many patent infringement cases involve independent invention is lost on most people who don’t understand the system. Adding an independent invention defense would fix a very, very large percentage of the problems with the patent system today.
Independent invention as evidence of obviousness. This is very similar to the idea above, but slightly more nuanced. Patents are only supposed to be given if something is both new and non-obvious to a person of ordinary skill in the art. For the most part, patent examinations focus much more on the “new” part, and not whether the idea is “non-obvious.” Some people think that if an idea is new then clearly it’s non-obvious, but that’s not the case. Often there are obvious ideas that don’t go anywhere because the technology/market/etc. just isn’t ready yet. But if a number of different people “of ordinary skill in the art” are all coming to the same solution at around the same time, that certainly suggestions the invention itself is an obvious next step, and all such patents should be declared invalid.
Actually asking those skilled in the art. Patent examiners are often very skilled and highly educated, but they’re working in the patent office, not out in the field innovating. It’s not as easy as many people think to really keep up on the state of the art if you’re not working on it. Just think how many ridiculous patents we see all the time. Many of those bad patents could have been prevented if a patent examiner just went to people in the field and asked them. I know that some people criticize this idea, because they claim that (1) everything looks obvious in hindsight and (2) this will just lead jealous others to insist something is obvious to deny a patent, and then copy the idea themselves. Neither of these are convincing. I’m not saying to just ask, and if someone says it’s obvious, the patent is dead. Rather, the patent examiner could ask a few people for an explanation of why it’s obvious, and then determine if the reasons are convincing. Already, inventors effectively have “advocates” who argue for them that a patent is valid, so why not create the same sort of thing on the other side — setting up a true adversarial process — by seeking out experts who can explain why something may be obvious.
Get patents going back to the different circuit appeals courts, rather than funneling them all through CAFC. Having a single “patent” appeals court was an experiment, and I think it’s clear that it’s failed. The court, constantly spending time with patent lawyers, but not with innovators, clearly has an expansionist view of patents, and multiple judges refuse to recognize that patents could have any downside. Spread the cases around a bit, and hopefully you get some more judges who get past the cover story and see the real problems.

See http://www.techdirt.com/articles/20120712/18322919680/judge-posner-mission-to-fix-patents-we-have-some-suggestions.shtml

I have a different view of what real patent reform would look like, but see wisdom in all but the last of the suggestions from Mr. Masnick.

1. Independent Inventor defense. To me this should be a partial defense only, one that prevents an injunction and perhaps is taken into account in mitigation of damages, but which should not be an absolute defense.  The patent system was set up by James Madison, and modified as a result of objections by Thomas Jefferson, as a reward and incentive to the “true and first inventor” to disclose his invention to the public, for the benefit of the public and to promote the progress of the useful arts and sciences, so that the invention would not die with the inventor in secrecy.  It was never envisioned to be a defense that one independently later reinvented that which the inventor had already disclosed to the public.  If one independently invented prior to the patentee, then there was a Section 5 of the original act that allowed the prior inventor to invalidate the patent based on proof of prior invention.  However, the point of an independent inventor defense is that the independent inventor has, by definition as “independent”,  not received any benefit from the disclosure and thus should not be restricted by or pay any reward to the patentee. However, that defeats the incentive to disclose purpose of the patent laws by eliminating the risk of non-disclosure.  A compromise is in order to resolve these competing interests. To me the most logical compromise is to allow the independent inventor to continue to practice the invention but require the payment to the inventor of a reasonable royalty, taking in mitigation the independence of the independent inventor while enhancing the royalty by the benefit of the disclosure of the invention to the public. Thus where the invention was an incredible breakthrough of immense value to the progress of the useful arts and sciences and the prove of independence marginal there might be no reduction in the reasonable royalty.  And, by contrast, where the invention was of limited value to such progress, and the proof of independence of the later invention clear and convincing, there might be little or no royalty due from the later (or earlier but non-disclosing) independent inventor to the patentee.

2. Independent invention as evidence of obviousness. This is already the law, so no change is needed. Independent invention by others is relevant and admissible as evidence tending to show the invention is obvious to those of ordinary skill in the art. The more independent inventors, particularly contemporaneous, the more likely the invention was obvious to a PHOSITRA (mythical “Person Having Ordinary Skill In The Relevant Art”). One independent invention would likely not meet the burden of proof as such proof would more likely be evidenced that an ESPIRT (pronounced “expert”  for Extraordinarily Skilled Person In Relevant Technology) had come up with the same invention rather than a PHOSITRA. In contrast, if 10 routine researchers had independently come up with the same solution, it should be help obvious to a PHOSITRA. So, while independent invention might not be “prior art” it should nevertheless be “relevant art” for purposes of showing obviousness, and it’s status as secret or public should not be determinative. I would submit that there should be some cut-off period, such as one year after publication of the invention, after which evidence of independent invention shall not be accepted. And, evidence that the disclosure by the patentee of the invention was readily accessible to the alleged independent inventor should defeat the claim of independence.

 

3. Actually asking those skilled in the art. This sounds good in principle, but is impractical unless that means a patent examiner, or it occurs AFTER issuance of the patent. Otherwise, the invention is revealed to industry with no corresponding benefit to the applicant for patent. What a perverse turn of events it would be if an inventor would have the
Government reveal the invention to competition prior to granting a patent on it. Competition would try to shoot it down and steal it. What a disincentive to disclosure that would be. That would impose a penalty not a reward for filing a patent application. Perhaps this would work if those asked were made to sign a secrecy and non-use agreement prior to receipt of the disclosure of the invention, as that might benefit both the inventor and the industry reviewer so asked. There would likely be a need for compensation to the reviewer if we are to get the best reviewers. However, I think we already have such a system and that is what examiners do, serve as that expert. What is needed perhaps is better industry training of examiners if industry is not satisfied examiners are up to snuff in a particular technical area such as software and communication technologies where the pace is so incredibly fast and the compensation so much higher in industry than in the PTO.

4. Get patents going back to the different circuit appeals courts, rather than funneling them all through CAFC. This was not “an experiment” but rather a permanent change made in recognition that patents are Federal law and require special expertise not common in most Judges. There is nothing in the law that labels the CAFC either temporary or an experiment. It is disingenuous to call it an “experiment” after this many years. We require patent attorneys to be specially licensed to prosecute patents so it is entirely fitting and proper that we should have patent judges who have a similar level of expertise in patent law. In fact, most patent attorneys would contend that the CAFC has been relatively contractionist and not expansionist on patent rights. The CAFC was established to give more uniformity to patent law which prior to that time was quite divergent among the various circuits and often based on misunderstandings of patent law or aversion to technology. Circuit judges previously tended to take the most expedient route to divesting their docket of patent cases, so nonsensical summary findings of obviousness (or by contrast, of infringement) were common. The CAFC was, and is, prone to realize that bright-line tests may not always produce the best result in an individual case but are of overall benefit to industry by lending certainty to the patent system for purposes of reliance by investors on presence or absence of patent protection. It is the Supreme Court which has intervened in patent cases to quite often confuse the issues and give uncertainty to the system. So, I would say that what is needed is for the Supreme Court to give much greater deference to the Fed Circuit in patent cases, particularly where the CAFC is making bright-line tests that have some rational basis in the law.

Some perhaps better reform proposals:

A. Switch to a patent registration system, more like trademark or copyright registration.  This would drastically reduce the examination burden that is backlogging the patent system, as minor inventions of limited commercial significance are taking an inordinate amount of examiner time and effort, so much that they are overwhelming the system. This would swiftly eliminate the backlog of unexamined patent applications currently standing at over 700,000 and growing, which is causing such uncertainty in the patent system. It is not unusual for a patent not to issuance until the technology has been adopted by an entire industry not aware that a patent application is pending or, if aware, not knowing whether it will issue or what it will cover .  A registration system would result in publication and issuance within days or weeks rather than years. With the switch to electronic filing and the use of high speed scanners with advanced technology, already in place at the USPTO, we certainly have the technology to publish in days of filing. An opposition period could allow challenge and examination of issued patents and, just as with trademark oppositions, would likely be used mostly on just those patents that have commercial value.  Following that, the patent should be open to a cancellation proceeding up to 5 years after issuance and incontestability obtained by Declaration of Use some 5 years after issuance to quiet title for subsequent investment certainty. That would give certainty to patents, give quick issuance, give a prompt reward to the vast majority of applicants who will never license their inventions, and focus the patent examiners’ attention on those patents of commercial value.

B. Have the Patent Examiners Write the Patent Claims, Not the Applicant.  This would have two great benefits. First the cost and complexity of a patent applications could be drastically reduced. The application would disclose his or her best mode and the various alternatives and the patent examiner would evaluate that disclosure against the prior art and determine what it is that is new and unobvious and write patent claims to cover that.  The inventor can normally disclose the best mode but can seldom write a decent patent claim. This proposal would avoid the problem for independent inventors as the patent examiner would take on that task, and would presumably do it with a fair and comprehensible set of just a few claims rather than the myriad gobbledygook claims that are currently the norm. The applicant should be free to suggest claims in the application so that corporate patent attorneys can aide the patent examiners in that way, but the Examiner would be free to totally restructure and rewrite the claims.  This would even the playing field between big and small entities. As most patent attorneys and patent examiners will likely acknowledge, it is usually much easier to write claims from scratch than to decipher and edit someone else’s claims.

C. Mandate PTO interpartes examination of infringement and invalidity issues in infringement litigation (if not Incontestable) The examiners can make these decisions, usually in minutes or hours, rather than months or years as is the case with non-technically trained USDC judges or worse, unsophisticated juries. There are close to 7000 patent experts at the Patent Office, each with expertise in a special technical area unmatched by any court anywhere, and these are called “patent examiners”. This PTO Examining Corps currently makes thousands of these determinations each and every day and have a huge MPEP with detailed guidance that they know intimately and follow on a daily basis.  They have an academy of their own to assure this. They make every effort to be consistent with each other in their determinations and they generally know their respective arts very, very well. Yet, they are often currently bogged down in minutia. The PTO Examining Corps is not elected and, due to their high level of expertise, is relatively immune to bogus arguments of counsel, which levels the playing field for big and small entities. In contrast, most patent litigators know quite well that outcome in patent litigation often depends primarily on the money available for legal fees and the skill of the advocate more than on the merits or demerits of the case. If you can afford the very best litigation team you are likely to win and if you can’t you aren’t (unless both sides have to go cheap, in which case we often get an unpredictable and freaky case result.) Only where both sides are well funded can we expect a fully competent airing of the issues. Having the PTO determine these issues will produce far more objective and consistent determinations and those decisions will be based on technically competent reviews of the relevant art. The current system, frankly, relies on determinations by technically incompetent people of complex technical and legal issues.  Taking this into the PTO could completely turn that around, producing much fairer and more consistent results since in almost every case these results will come from a patent examiner who is an expert in the particular technology and who is familiar with what is being patented and what is being filed and thus in perhaps the best position of anyone in the world to know what is and isn’t obvious to that mythical PHOSITRA. There would no longer be a need to educate the examiner in either the technology or the law in most cases. Indeed, the examiner would likely take offense at such attempted instruction. This would be especially important to independent inventors who simply cannot afford multi-million-dollar patent litigations to educate unskilled judges sufficiently to enforce their patents. A PTO examination of these issues should take less than $10,000 in most cases rather than millions of dollars as is typical in patent infringement lawsuits. A patent enforcement proceeding would thus become feasible for a small inventor where presently such an inventor is in no position to effectively enforce a patent. The mechanism for this is already largely in place, called “supplemental examination (ex parte re-exam)”, “inter partes re-examination”, “post-grant opposition” and the like. In fact, infringement and invalidity determinations are what examiners now do and are specially trained to do. When an examiner examines for prior art, the examiner is looking to find prior art that “anticipates” the claim. If such art were subsequent it would “infringe.” (Hence a saying familiar to nearly every patent attorney and patent examiner “What infringes if later, anticipates if earlier”)  You see, it’s the same determination, and as noted, they do these determinations, usually instinctively in seconds, hundreds or thousands of times every day. In fact, the average patent examiner has surely done this thousands of times more  than any US District Court judge and has done it on the very technological field in question. Frankly, the comparison is like night and day (judges and juries being “in the dark” and examiners “seeing the light”). The appellate process for this is also established with the BPAI (Board of Patent Appeals and Interferences). With the establishment of branch offices, the locations for these determinations should be more convenient, thus achieving further cost savings to participants.