just_n_examiner ([info]just_n_examiner) wrote,
@ 2008-03-13 23:01:00
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Another Idiotic Patent Article
Yet another one of those articles detailing all that is wrong with the PTO has been published, courtesy of Forbes. Like a great many of its kin, it is basically a brief sound-bite of a story, long on fluff and short on substance and analysis, and of course, it cites the standard four or five tired examples of 'overly obvious' patents.

If someone was truly interested in discussing problems at the PTO, it would be nice if they would do a real story, confining the discussion to patents that actually have the potential to cause problems (anybody been sued for exercising their cat with a laser pointer lately?), and they also might happen to mention the fact that examiners cannot simply wave their hands, say that something is obvious, and be done with it. Anybody out there know where I might be able to get ahold of some prior art that teaches swinging sideways on a swing? No, me neither.

Instead, I keep seeing what amounts to a carbon copy of the same ~300-word article published in various forums again and again, about every 2 or 3 months.

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(Anonymous)
2008-03-14 07:06 am UTC (link)
Well said JPE. Personally, I should be interested in reaction from those US coroporations that apply to both the USPTO and the EPO. EPO Exrs DO just wave their hands and say something's obvious, yet one doesn't notice a chorus of complaint (especially from the US corporations who are active opposers at the EPO). Let's ask, for example, P&G and Kimberly-Clark. They routinely oppose each other's issuing EPO patents on paper hankerchieves. In EPO Hearings, therefore, you are as likely to find P&G arguing the position of Opponent as that of patent owner. Let's look at the "quality" of the P&G and KC patents on tissues that stream out of the EPO following such opposition, as well as the "quality" of the opposition decisions that revoke the opposed patent (there was one just the other day, finding a P&G patent insufficient). What have P&G and KC to say, about life at the EPO?

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(Anonymous)
2008-03-14 04:24 pm UTC (link)
I think what the article is trying to convey is that tougher standards will not solve the problem; however, better examination of the patent applications will. Lots of Patent Examiners just wave their hands and say the subject matter is obvious. This is especially true towards the end of each USPTO quarter, where the Patent Examiners need to meet their minimum requirements. I noticed that someone in one of the previous comments mentioned the website www.usptoexaminers.com, which allows patent practitioners to evaluate and comment on each individual Patent Examiner. Maybe this website will play a very small role in preventing at least the conscious Patent Examiners from just rejecting the patent applications by waving their hands and directing them to focus more on the quality of examination of the patent applications.

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(Anonymous)
2008-03-14 03:38 pm UTC (link)
Someone should teach patent examiners how to actually search for prior art:
http://waterfordschools.org/schools/gn/handbook_gn.htm
http://www.am.dodea.edu/NY_VA/quantico/russell/School/schoolinformation.htm

Both these references indicate that side to side swinging is well known as a problem in school playgrounds. It should be fairly easy to find similar references with good publication dates.

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(Anonymous)
2008-03-14 04:00 pm UTC (link)
"It should be fairly easy to find similar references with good publication dates."

Then why don't you?

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(Anonymous)
2008-03-14 04:26 pm UTC (link)
Probably because that is not his job, but it is a Patent Examiner’s job. Don’t the Patent Examiners take pride in their work? Are they just trying to push things through as fast as possible to meet their quarterly requirement?

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(Anonymous)
2008-03-14 05:30 pm UTC (link)
Nice cop out. But you're proving JPE's point. Who gives a rat's behind about methods for swinging on a swing? Is the issuance of that patent enough to conclude that "the patent system is broken" and "needs fixing"?

I'm sure there are some examiners that don't take pride in their work and are just trying to push things through as fast as possible to meet their quarterly requirement.

Of course, there are plenty of patent attorneys who don't take pride in their work and are just getting stuff off their desks as fast as possible, and then padding their time to meet their billable hour requirements. I've met quite a few in my career. Too many to think they're just a small minority in our profession.

So what do you expect the examiner to do? Scour the earth to find prior art to reject an application that, if it issues, will never be enforced against anybody? How much time do you want the examiner to spend on it? Should the examiner put your client's app on the back burner for a couple months while he searches for patents on swinging on a swing?

Again, if you have some prior art that has a good date to invalidate that patent, then by all means start typing up your request for reexam. If you don't, just shut up.

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(Anonymous)
2008-03-14 08:08 pm UTC (link)
"Again, if you have some prior art that has a good date to invalidate that patent, then by all means start typing up your request for reexam."

The sideways swinging patent (US 6368227 -- 90/006,289) was already invalidated in a director-ordered reexamination based on US patent prior art. The reexam prosecution history is on Public PAIR.

Of course, this reinforces JPE's point -- the PTO can already take care of silly patents.

There is an interesting backstory behind the swinging patent. The inventor was a 7-year old and had a dad for a patent attorney. The dad told his son that if he ever invented anything that he would help him patent it. I would bet the dad filed the application as a learning experience for the son and never intended for it to become Exhibit A for patent reform.

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"bad" (i.e., useless/nonsensical) patents not a new issue
(Anonymous)
2008-03-14 07:10 pm UTC (link)
What articles like this (and many of the critics also forget) is that bad/stupid and meaningless patents that have no effect on "real" industry are nothing new. They have been popping up for DECADES. Not only longer than I have been at the office, but longer than I have been alive!

Back in the mid-80's someone issued a system for keeping a disembodied head alive.

Back in the 60's, someone issued a "fur-lined keyhole" (I'll leave it to the imagination of the reader what it was really describing.

Back in the late 50's, someone issued a "sky hook" (i.e., anti-gravity device that "worked" by having a bunch of weighted gears spinning around to cancel gravity). Actually,there are a few of these.

So, like I said, the idea of these "bad" patents is nothing new and is not a real concern. There are a lot of bigger and more significant problems than what they love to cite.

LL

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Re: "bad" (i.e., useless/nonsensical) patents not a new issue
(Anonymous)
2008-03-14 08:12 pm UTC (link)
Patents such as one describing exercising a cat have no significance. The owner(s) of these kinds of patents are just wasting their money. The only way that the owner of the exercising a cat patent can enforce his patent is by suing the general public, who happen to be the customers. Suing your own customers is a very bad business practice. I suppose the owner of such a patent can sue the laser pointer making company under contributory infringement, but in reality the likelihood of the patent owner winning is slim. So if a patent examiner is unable to find the proper reference to reject a patent application that he or she believes is obvious, move on and allow the patent.
On another note, I have noticed that lately the patent examiners are using hindsight to reject patent applications. I think the Patent Office has been skipping the hindsight rule chapter in their training manual.

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Re: "bad" (i.e., useless/nonsensical) patents not a new issue
(Anonymous)
2008-03-14 08:35 pm UTC (link)
"On another note, I have noticed that lately the patent examiners are using hindsight to reject patent applications. I think the Patent Office has been skipping the hindsight rule chapter in their training manual."

You've noticed this "lately"? How long have you been in practice?

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Re: "bad" (i.e., useless/nonsensical) patents not a new issue
(Anonymous)
2008-03-17 01:19 am UTC (link)
"On another note, I have noticed that lately the patent examiners are using hindsight to reject patent applications. I think the Patent Office has been skipping the hindsight rule chapter in their training manual."

Well since examiners aren't required to present T.S.M. can't necessarily call it hindsight when:

A “combination of familiar elements according to known methods” that “does no more than yield predictable results,” or where such elements in combination do “ no more than they would in separate sequential operation.”


The invention “simply arranges old elements with each performing the same function as it had been known to perform, and yields no more than one would expect from such an arrangement.”


The invention involves “the mere application of a known technique to a piece of prior art ready for improvement” (the Supreme Court offered no elaboration to what it meant by “ready for improvement”).


Whether a particular combination was “obvious to try.”


A designer of ordinary skill “facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading” the prior art in the manner claimed.


The invention is suggested in view of “demands known to the design community or present in the market place.”


When a work is available in one field of endeavor, “design incentives and other market forces can prompt variations of it, either in the same field or in a different one.”


A “design need or market pressure to solve a problem” for which there are “ a finite number of identified predictable solutions,” may suggest to a person of ordinary skill “to pursue the known options within his or her technical grasp.”

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Re: "bad" (i.e., useless/nonsensical) patents not a new issue
(Anonymous)
2008-03-17 09:08 am UTC (link)
I feel your anger.
I feel your pain.

Let me suggest this.

Re-read KSR v. Teleflex from the point of view that many things in law are double edged swords. The ordinary artisan is no longer an automaton. Gee. What does that mean?

Perhaps KSR is limited to its unique set of facts taken in the time frame of that one
"modular" sensor invention. Perhaps the mere probability that something is "more likely" in a mechanical invention scenario to be obvious does not create a per se rule for everything and all times. KSR does warn about falling into the forbidden hindsight zone. It wasn't an all one way decision.

Perhaps the ordinary patent prosecutor can no longer afford to act as an automaton and has to get "creative"?

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Re: "bad" (i.e., useless/nonsensical) patents not a new issue
(Anonymous)
2008-03-19 01:30 pm UTC (link)
To remind everyone what our founding fathers and the constitution defined as invention, I went to www.usptoexaminers.com website and took a quote from their “About Us” first paragraph (see below). I believe, the Patent Examiners have lost the sight of what the founding fathers and the constitution defined as an invention. The courts simply try to apply the quote below to the present time. However, I feel like the Patent Examiners, just like when they are examining a patent application, are taking the courts' decisions out of context and without thinking about how the court came to its conclusion. Maybe that is because most Patent Examiners are not attorneys.

"The fact is that one new idea leads to another that to a third, and so on through a course of time until someone, with whom no one of these ideas was original, combines all together, and produces what is justly called a new invention." Thomas Jefferson, Director of the 1st U.S. Patent Board

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Re: "bad" (i.e., useless/nonsensical) patents not a new issue
(Anonymous)
2008-03-19 05:18 pm UTC (link)
When Jefferson wrote that, non-obviousness was not yet a requirement by law. Even by today's standards, few would dispute that such a thing is a "new" invention, it's that it's an obvious invention (if it is obvious) that precludes its patentability.

-MM

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Don't be surprised - This is Journalism Today
(Anonymous)
2008-03-15 05:50 pm UTC (link)
In fairness, I agree this is another "recycled" article. Journalism is dying among traditional publication. As a result you are just seeing surface skimmed articles with no depth or substance to which a glorified headline is attached. Journalism as a profession is moving the way of a used car salesman --- all fluff and no substance.

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Re: Don't be surprised - This is Journalism Today
(Anonymous)
2008-03-17 05:39 am UTC (link)
I read the article and skimmed through the patents discussed in the article. My issue with this author is that she misrepresents the _claimed_ invention. The sandwich patent isn't just some kid cutting off the crusts. It's a little more involved than that. Same for the swing patent. I don't mean to say that the claims may not indeed be invalid over some prior art or other. However, it is a little unfair the way she presents the patents.

If the author is going to discuss patents, she should take a minute and educate herself on them. A two second search on google would turn up Judge Rich's statement (if memory serves) that "the name of the game is the claims."

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(Anonymous)
2008-03-21 06:48 pm UTC (link)
Since there appears to be a lull in the action here I have a related question on the topic of "fluff" and "short on substance", that is: Design Patents. Can somebody out there in lawyer land explain to me how anybody makes money on design patents (other than the lawyers themselves). Are they just for defense? The design patents all look so simlar (for example cell phone designs)it seems to me that in order to get around one all that you would need to do is add a do-dad here or there. Why aren't these things just registered like copyrights?

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(Anonymous)
2008-03-22 12:37 am UTC (link)
Well I know a little bit about design patents from reading JPTOS... Essentially your question embodies the problem with design patents; that is, they're pretty much toothless. From what I've heard of the design AUs, getting a design patent is pretty much one step away from a simple registration. It's about the cushiest job an artist could ever hope for!

Generally the point of a design patent, and the only reason I can see to get one these days, is to protect a distinctive shape for your product or its packaging, such as the shape of a Listerine bottle. Now clearly Listerine doesn't have a design patent on its bottles, because virtually every generic shapes their bottles just like Listerine, but it would have been a good idea for them to have had one, because that distinctive bottle shape makes me immediately think "oh, this is Listerine." I believe there's also noise being made back and forth by auto manufacturers and aftermarket parts manufacturers over whether the auto manufacturers should be able to prevent, say, an aftermarket bumper for a Ford Taurus from looking like the standard factory bumper for a Ford Taurus. From what I've read, that particular battle will determine a lot of the value of design patents. I don't have any particular legislative or case law examples for any of these, though.

-MM

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Nike v Wal-Mart
[info]humbleagent
2008-03-23 11:26 pm UTC (link)
Nike apparently found value in one of its design patents when they sued Wal-Mart and won. http://www.ll.georgetown.edu/FEDERAL/judicial/fed/opinions/97opinions/97-1173.html

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Re: Nike v Wal-Mart
(Anonymous)
2008-03-24 01:32 pm UTC (link)
Do you know the outcome? It says it was remanded to determine whether or not Nike complied with the marking requirement. If they didn't comply they probably didn't win.

But this is a good example to discuss. Look at the all the cited prior art in that patent and after awhile it is all a blur because it is all so similar (at least to me). Why would someone copy Nike exactly? Why wouldn't they just add a nominal stripe or air hole or something. Wouldn't that be different enough?

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Re: Nike v Wal-Mart
(Anonymous)
2008-03-24 02:58 pm UTC (link)
"Why would someone copy Nike exactly? Why wouldn't they just add a nominal stripe or air hole or something. Wouldn't that be different enough?"

Most corporations get design patents to protect against cheap counterfeit imports and not as a weapon to use against viable competition (Nike being perhaps the only exception to this). If a Chinese factory makes an exact duplicate of my product, a design patent can be a useful tool to get imports of the duplicate blocked. A redesign isn't a viable option for a Chinese factory that may only be doing one or two runs of a counterfeit product.

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........
(Anonymous)
2008-08-18 02:06 am UTC (link)
Your blog is interesting!

Keep up the good work!

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