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IPWatchdog.com was first launched in October of 1999, and since that time the site has been a trusted resource on intellectual property for over 3 million unique visitors who have come here for information and news. 

The IPWatchdog Blog primarily provides insight and analysis to keep industry professionals informed on recent cases and the latest news relating to patents, trademarks, copyrights, technology and innovation. We pride ourselves on the fact that we do not have a typical blog. Virtually all of our posts are really articles that discuss issues that matter to attorneys and other professionals intimately involved in the intellectual property world. When you are looking for more than just the facts and would like some analysis and opinion the IPWatchdog Blog is for you.

About Gene Quinn

Eugene R. Quinn, Jr. President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center Send me an e-mail

Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide

As of the end of Fiscal Year 2008 there are 1,208,076 patent applications still pending at the Patent Office, so it is no great mystery why it takes so long to get a patent examiner to respond in a substantive way to applications that are filed. The backlog continues to grow year after year after year, so there is really no reason to believe that things will change unless swift, strong and determined action is taken to implement rules and laws that are specifically aimed at solving the crisis facing the US patent system. Now is not the time for half-measures. If nothing is done soon the US patent system will slip into irrelevance because at some point it just doesn’t make sense to file a patent application on a technology with a limited life cycle when the Patent Office cannot recognize rights until after the life cycle has passed and the next generation of technologies is in use.

In an earlier post I suggested that patent examiners will examine patents based on the prior art that is submitted by the applicant. If no prior art is submitted by the applicant then the patent will be reviewed to make sure it meets the format and formalistic requirements, nothing more. If implemented that could significantly help get through the backlog, but I am not a fan of changing the rules in mid stream so there are at least 1.2 million applications that I would be reluctant to capture with such a new rule. Retroactivity is just offensive. Nevertheless, one thing that could significantly help right away would be if Congress would define what the duty of disclosure is that is owed by those substantively involved in the prosecution of a patent. Yes, the USPTO has Rule 56, which attempts to define the duty and obligation, but the United States Court of Appeals for the Federal Circuit does not feel that it is bound by the definition of the duty owed to the Patent Office, even though Rule 56 was set forth by the Patent Office. Apparently the judges on the Federal Circuit feel that they know better than the Patent Office. The trouble is this leads to patent attorneys being unwilling to say much of anything useful to an examiner for fear that what they say would open the door to a charge of inequitable conduct, which would render any patent and potentially any related patent unenforceable.

We in the patent bar and those who utilize the U.S. patent system are caught in the crosshairs between the Patent Office and the Federal Circuit. The Patent Office wants us to disclose only information that is material to examination, meaning that we disclose only those things that would make for a good rejection, which is what Rule 56 requires. The Federal Circuit, however, wants us to disclose everything that could possibly be used by an examiner to issue any rejection, good or bad. See e.g. Digital Control v. Charles Machine Works. Given that examiners weave together some rather illogical and almost impossible to believe rejections, particularly in a first office action, the patent bar is stuck disclosing mountains of information that is no doubt objectively not relevant or risk the Federal Circuit ruling that any patent obtained is unenforceable for inequitable conduct. Who among us has been willing to take that risk? No one will take that risk because it is ultimately the Federal Circuit who will speak last on the issue in the event a patent litigation is filed and inequitable conduct is alleged, as it ALWAYS is alleged by the defendant in a patent infringement litigation. Whether or not there are facts to support the allegation of inequitable conduct is of no consequence, it gets alleged every time and is the 800 pound gorilla sitting in the office of every patent attorney who drafts patent applications, prosecutes patent applications or litigates patents. Despite the fact that the Patent Office rule makes sense and the Federal Circuit rule is irrational, illogical and nonsensical, we follow the Federal Circuit view because they are the ones who will decide whether to make a patent we obtain for our clients worthless.

The trouble with allowing the Federal Circuit to drown out the Patent Office on the issue of what needs to be disclosed is that the Federal Circuit is mucking with the Patent Office docket. Would the Federal Circuit like it if the Patent Office issued rules that significantly affected the workflow and docket management of the Court? Of course not! So why then should the Federal Circuit make laws that do that same thing to the Patent Office? This is particularly ridiculous given that the patent system is on the brink of irrelevance and the Federal Circuit still says that those substantively involved in the prosecution of a patent application must disclose everything you know. This uses up client resources, it wastes Patent Office resources and it is the main contributing factor to the resistance most in the patent bar have with respect to many of the rules packages the Patent Office has tried to push through. Of course, the continuations package is an exception and that is just against the plain meaning of the Statute, but would you protest so much about the IDS rules or a sensible Examination Support Document if it meant that the patent process would work better, faster and you would not have to worry about inequitable conduct making the right you obtained worthless to the client? I think a lot of things would be different, and different in a positive way, if the Patent Office definition of the duty of candor were followed by the Federal Circuit.

So how do you get the Federal Circuit to follow the duty of candor rule announced in Rule 56? I am not foolish enough to think that persuasive arguments and the impending doom of the recession will matter at all. That is why Congress needs to step in immediately and codify Rule 56, or a variation of Rule 56 that would allow the patent bar and applicants to feel comfortable helping the Patent Office and patent examiners do their job while at the same time not running the unacceptable risk that inequitable conduct will be argued by every desparate defendant.

Hey… if there is inequitable conduct then the patent should be unenforceable. But the word “intent” needs to mean something in my opinion. The truth is that even the Judges on the Court recognize this has gotten out of hand. During the oral arguments in the USPTO appeal of the GSK and Tafas matter Attorney Toupin started quoting the Kingsdown case, which says that gross negligence cannot be construed as intent to deceive. Judge Rader asked Toupin if he had read any of the recent inequitable conduct cases of the Federal Circuit. Toupin said he had, but that since Kingsdown has not been overruled it must stand for something. If only that were the truth.

About the Author:

Gene Quinn is a patent attorney and the founder of IPWatchdog.com and is a member of the PLI Patent Bar Review faculty.

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]]> http://www.patentfools.com/2008/12/patent-reform-codify-pto-rule-56/feed/ http://www.patentfools.com/2008/11/tilting-at-windmills-patent-troll-style/ http://www.patentfools.com/2008/11/tilting-at-windmills-patent-troll-style/#comments Tue, 25 Nov 2008 00:21:08 +0000 Gene Quinn http://www.patentfools.com/?p=22 RPX Corporation is a new start-up company that is attempting to pull together resources to acquire patents in an ill-defined attempt to thwart patent trolls.  It seems that RPX wants to build a defensive portfolio of patents, but this is not calculated to prevent patent trolls from doing anything that could potentially be useful.  If you take a look at the RPX website you will see that as of today they have over 150 patents and more than 60 applications in their defensive portfolio and they have spent $40 million.  That does not seem like a worthwhile investment, particularly when a defensive patent portfolio is not going to be doing anything to stop patent trolls.  A defensive patent portfolio is only useful when one is being sued by a firm that is doing something that could potentially be infringing upon patents held by the accused infringer.  The accused infringer sues the patent owner and says while I might be infringing you, you are infringing me.  The trouble with patent trolls is that they do not do anything other than acquire patents and enforce them.  They are not engaging in any particular activities that could ever be considered to be infringing, so what good is a defensive patent portfolio?  Exactly no good at all!

More and more schemes that will be completely unsuccessful at dealing with the perceived problem of patent trolls are being hatched. In an article titled Reexamination Would Stop Patent Trolls, which I wrote on IPWatchdog.com the other day, I criticized the just announced plan of Article One Partners, who will pay individuals for prior art they come up with if they believe the prior art could be used to invalid patent claims. The trouble with what Article One Partners wants to do is that it has been tried before and failed. Offering a bounty for invalidating prior art seems like a great idea but it has never turned into the accumulation of prior art references that would be truly useful. This is no doubt due to the subjective nature of the promise to pay a bounty. If Article One Partners forms an opinion that patents are invalid, those submitting the prior art can earn up to U.S. $50,000, with $1,000,000 available to Article One Partners to pay for prior art that is submitted. But who wants to spend the kind of time doing the research necessary with nothing other than a nebulous promise with subjective criteria? That is why in the article I concluded that reexaminations are the way to go if companies are really interested in stopping patent trolls.

According to USPTO statistics, 9.2% of requests for ex parte reexamination result in all claims being canceled and 59% of the time certificates issue with at least some claims being changed. Even more dramatic, 74% of requests for inter partes reexamination result in all claims being canceled and 14% of the time certificates issue with at least some claims being changed.  The answer to dealing with patent trolls is to go after them with reexaminations, not to try and build a useless defensive patent portfolio.  At least Article One Partners is trying to address the problem by giving incentive to individuals to find prior art and disclose the prior art.  I just don’t think the way they are going about it is going to work, but they are following the right path.  If Article One Partners really wants to succeed rather than waiting for people to give them prior art they would identify some bad patents, or bad patent owners, and go straight after those patents by funding the research necessary to uncover the prior art that would sink them.

My opinion is that these companies that complain about patent trolls don’t really want them to go away. Patent trolls are extremely valuable to these big tech companies because they are an identifiable and unsympathetic villain. They can be paraded about as evil and help these large tech companies pursue legislative reforms that would cripple other industries but which would eliminate the patent troll problem. Of course, the goal is not to eliminate the patent troll problem, it is to make the patent system weaker, have fewer patents granted that cover less ground and make it all much more expensive. You see, the goal is to make it difficult if not impossible for small companies and start-ups to obtain patents, thereby ensuring the market dominance of the mega-tech companies. Brilliant really, and if it didn’t mean that pharma companies and companies that actually build real products would be devastated mega-tech would have already achieved their agenda.

Let me be perfectly clear. Patents will continue to be applied for to attempt to cover software. I foresee no fewer applications, but it is clear that each application will require far greater detail and much more attorney time. So the Bilski decision will do nothing for patent attorneys other than create more opportunity for revenue. Bilski will turn into something of a full employment act for patent attorneys and agents who work in this space. But just because the decision will be good for business, at least the patent attorney business, doesn’t mean that it is a good or wise decision. The decision was unnecessary and violates any norms of conservative judicial philosophy and instead supplants restraint for activism, which is unwise in my opinion. All the Bilski decision will do is make it more costly for entrepreneurs and small businesses to protect the assets they create, thereby helping those who have achieved market dominance to maintain that market dominance.

What is the harm in allowing software patents? Isn’t the problem that patent offices, particularly the United States Patent Office, are increasingly doing a poor job of finding relevant prior art and weeding out what is new and non-obvious from what is old and obvious? If prosecution were more meaningful, what is the harm in granting software patents? I see none because there is none. We should not tolerate intellectual dishonesty because it is expedient. The trouble is that patents are being granted on “inventions” that are not new or which are obvious. The problem is not that software presents an inherent evil.

As far as I am concerned saying that software is not patentable subject matter is akin to saying that a car battery is not patentable subject matter. No one could seriously argue that a new and non-obvious car battery would not be patentable subject matter. In fact, that is exactly what many researchers are trying to find right now, albeit not the same type of car battery that we are used to inserting under the hood. You see, the car itself is just a bunch of pieces of metal that sit there fastened together to create a tangible shell that has taken on an identifiable structure. The car has lots of potential, but without some kind of fuel it doesn’t even have potential energy. It merely has potential to move from place to place under appropriate conditions. Hardly something that is useful in any real world sense of the word.

Lets assume that our hypothetical car is loaded with fuel, wired up appropriately and we can even give it an XM radio receiver for good measure. None of that will do anything other than make the vehicle more expensive. There is still no potential or use for the vehicle. What transforms this otherwise magnificent machine (or Ford F150 as the case may be) into something special is the battery. It is the battery that allows the vehicle to start and to play the XM radio receiver, which is particularly important when you are trying to listen to Mik & Mike in the morning on ESPN Radio. So it is the battery that brings everything together.

Of course, there are other components of the car that are required to create the magic, so lets not get to far off with the illustration. But hopefully you can see where I am going with this. A computer is just a bunch of metal, plastic, wires and various other parts that has the potential to do something, but which never will do anything, without software to create the spark. The computer itself is merely a means to operate software, and this point really cannot be challenged in any serious, logical and honest way. Who wants a computer without software? Exactly no one! So why then does our patent system require us to act like it is the computer that is the revolutionary aspect? I just do not see the mileage in ignoring truth and living by some fiction that is thrust upon us.

Just like in the story-line of Independence Day, where the alien death ships slowly but surely positioned themselves over each major city, with the eventual outcome well understood, so too is Intellectual Ventures (I.V.) slowly positioning itself as the patent overlord over many major industry segments. Just like in the movie, the eventual outcome is well understood. To wit: Complete usurpation of the U.S. Patent system. The outcome is a ,gigantic tax/toll collector controlling the pulse of innovation in the U.S. or, like the move, extermination of innovation.

The 20,000 patents, and growing, in the I.V. portfolio have each withstood an average of but 14 hours of scrutiny by the U.S. Patent Office. That’s it; less than 2 business days of total review to issue a property right that, when amassed as I.V. has done, can inflict great pain ($ 1 Billion per) upon an entire industry. But here’s why the Emperor has no clothes: In any collection of patents, bar none, about 95% of the patents reflect the worth of their 14 hours of individual scrutiny. In addition, the Supreme Court, last year, re-wrote the standard of review (KSR V. TeleFlex). In short, these patents are not worth the paper they are printed on. But, owing to the excessive cost and uncertainty to have a second look at these patents either during the course of litigation, or through the Patent Office Reexamination procedures, most victims of this licensing extortion racket meekly pay-up. What Myhrvold has wrought is an obscene abuse of the patent system. It should be stopped, either by industry groups banding together to file reexaminations, or by Congress, or both.

The Patent system has 2 reasons to exist: incentive to disclose inventions; and, dissemination of those ideas. In short, great ideas are brought forward and rewarded, and those who follow can build upon them. So, which of these principles does Intellectual Ventures completely undermine? Both. What is the incentive to come forward with a great idea when your only buyer is Intellectual Ventures? What is the possibility of building on those ideas when you’ve got to pay the bill for the other 20,000 (19,500 of which are likely worthless.) patent properties at the same time? The answers: Zero and zero.

All of this matters because a patent represents encapsulated ambition. It can be of an individual or a company. But, in either case, it represents everything they have to offer the world expressed as an exclusive right. These efforts and resulting rights should not corralled and concentrated by a single entity for no purpose other than creating a tax on innovation. No one benefits, except the tax collector. In the I.V. overlord model: Is that tax re-invested like a University would do with their licensing income? Is that tax used to expand markets and create growth as it would for a practicing company? Does it go to an individual to incentivize further innovation? The answers: No. No. And, no.

Congress needs to act; fast. Any politician, including every candidate on every ballot in November, believes at least one edge the U.S. has over anyplace else, is our capacity to innovate. Couple of problems there: we’ve put a cork in the Patent Office (over 1 million patent applications are backed up awaiting review); endless and costly litigation procedures without finality (blame both the Court of Appeals for the Federal Circuit and the Supreme Court) kill any market advantage obtained through patenting; and, I.V. and other Trolls are vacuuming away investment into their collective war chests. Innovation is being actively mugged, and all we’re doing is talking, and talking, and talking, and talking. Kinda like what we’ve done with our financial system. The speed and depth of debate with respect to Patent Reform is laughable given the consequences. The debate is factional and shallow and useless. We must return to first principles.

It is well past time to act. The Patent Office needs to be the single arbiter of patent validity and claim meaning. Courts should determine damages and injunctions only. Before any patent is litigated or licensed, it must withstand scrutiny that relates to its worth. It is time to reinvigorate the Patent System. The future of innovation in the U.S. rides on the outcome of these efforts.

I know that over the last several years I have not been one to want to jump all up and down over the problems created by patent trolls, but I have to admit that things are not looking good for the patent industry these days thanks to the existence of patent trolls, and one particular super troll. What has transpired over the last few years is really quite sickening when you stop and think about it. The Patent Office has become so dysfunctional that getting an examiner to look at your application in a timely manner is impossible. The Supreme Court has made killed the doctrine of equivalents, made it extremely difficult to get a court to issue an order acknowledging that a patent is an exclusive right and has returned us to the days of “flash of creative genius” thanks to the KSR decision. The Congress has been able to accomplish absolutely nothing time after time because rather than take on meaningful reform special interest proposals are pushed that while favored by many are not favored by most. All the while a guy by the name of Nathan Myhrvold, a man with a Microsoft pedigree, has been amassing tens of thousands of patents. For crying out loud, what is going on!

The trials and tribulations of the US patent system have been fairly well documented, but as it gets harder and harder to obtain meaningful patent protection there are those out there who are buying up already issued patents and preparing to enforce them against those who are actually forwarding our economy. Up until now I have been criticized in many corners for taking the side of so-called patent trolls. Yes, these folks buy up patents and then seek to enforce the rights against others who are allegedly infringing. That is the nature of the right though; namely that the holder has the rights and can seek to stop infringement or collect payments for previous infringement, which is really the name of the patent troll game. What is the harm really? A troll here, a troll there and big companies going down. Up until now I have not been willing to advocate for the overthrow of patent trolls because I have always felt that by going after the person who is holding the right you are ignoring that there is someone who is infringing the right.

Things are different for me now though and I have a lot of reasons to point for my change in attitude. While I do think our economy is fundamentally strong, despite what certain politicians say, there is no doubt that our economy has experienced blow after blow for years now and if something is not done to stop the damage and reverse the trend we are going to be in a whole lot of trouble and likely not that far in the future. So for me it is time to stop worrying about whether there is an infringer and start worrying about what it is that the patent system is supposed to foster; namely innovation.

I hate the term patent troll because it has over time become synonymous with “non-practicing entity.” Not all non-practicing entities are bad though. For example, universities are non-practicing entities but the research they do if fundamentally important to our economy. The Bayh-Dole legislation is the most successful piece of legislation over the last 50+ years because it gives incentive to universities to protect their inventions and then license them to businesses, particularly small businesses, who in exchange pay the university, which funds additional research and development. So universities cannot be considered patent trolls, they are the image of what we want to foster. Universities to pure research for the sake of science and this is not something that would or could be done in a commercial setting, so whatever we do we need to realize that universities, federal laboratories and research and development companies are NOT patent trolls and should not be stopped.

What we need to focus on are those that are taking from the patent system without returning anything to the patent system. Rather than call these groups patent trolls, I would much rather call them what they really are — innovation vampires.  These innovation vampires grab hold of as many patents as they sink their teeth into a company and begin to suck the life right out by holding the company, and often times the entire industry, hostage.  No tax policy could ever do as much damage to an economy.  This massive redistribution of wealth without an iota of benefit to society must stop!  Having an enormous treasure chest that can fund litigation  ought not entitle you to reap the rewards carved out of the public domain to incentivise the creation of new technologies.  The shake down of companies that are actually engaged in doing something, like creating technology and employing hundreds of thousands, must come to an end.  And while we are working on figuring out the solution we all better keep our eye on the 8,000 pound gorilla located just outside of Seattle.

To give you a flavor, here is the general overview of how McCain and Obama would handle technology and innovation as president:

The overall orientation of John McCain’s innovation policy agenda is to focus on proposals for creating a favorable environment for private sector innovation through a clear and less burdensome tax code, limited government regulation, and a strong trade, immigration, and competitiveness agenda. McCain places more emphasis on spurring research and development (R&D) through the tax code than on spurring R&D through public expenditures. In other words, McCain’s policy seeks to foster an environment for private sector investment in R&D and innovation.

Barack Obama’s approach to technology and innovation policy engages the government as an active partner alongside industry in setting a national technology and innovation agenda. More than McCain, Obama would substantially increase government funding for science and technology R&D, including doubling the current level of federal R&D funding for basic research and targeting additional funding towards specific initiatives, such as $150B for clean energy programs and $50B for health information technology. Whereas a McCain Administration would seek to leverage existing federal agencies tasked with innovation activity, such as the Manufacturing Extension Program (MEP) within the Department of Commerce, and resist creating new bureaucracies, an Obama Administration would be more willing to reevaluate the current federal innovation infrastructure and reorganize it as necessary, such as through the creation of a new Advanced Manufacturing Fund.

McCain, believing that innovation is fueled primarily by risk capital, skilled workers, incentives for entrepreneurs, a light regulatory framework, and open access to markets, would place most emphasis for innovation on the marketplace, and be less focused than Obama on having government take a very active role in proactively establishing and aggressively funding a national innovation and R&D agenda. Obama’s policies recognize the private sector as the central source of economic growth and prosperity and appreciate the need to create a favorable regulatory, tax, and investment climate for it, but also affirm that government can play a proactive and constructive role in helping the private sector commercialize its innovations.

Fairly typical of what you would expect no doubt, as a Republican McCain favors creation of an environment in which industry can thrive, and as a Democrat Obama favors more government involvement in leading the charge to foster new technologies and innovation.  Aside from the Bay-Dole Act, which gave Universities the right to keep the patent rights for the inventions they create, I don’t think that the government ought to be to involved.  Funding is one thing, but more than that is not something I want to see personally.  Creating an environment for innovation and technology sounds good, but sorting out the candidates based on general statements about what they would do to spur technology and innovation is going to be somewhat difficult.  After all, you are not likely to hear one of the candidates say technology and innovation is good and the other say that it is bad.  Both seem to understand that it is something that will lead to a better America.

To the extent you are going to be a one-issue technology/innovation voter you are probably going to have to dig a little deeper, and it may well wind up being taxes that makes the decision for you.  Barack Obama and his campaign can continue to dump on McCain for saying that the economy is fundamentally strong, and explain that he is out of touch with Americans for saying such a thing.  So I guess that would have to mean that Obama thinks the economy is fundamentally not strong, or perhaps even weak.  I don’t see it that way personally, but lets assume the economy is not strong and perhaps even fundamentally weak.  How then is it possible that raising taxes on corporations is going to make an economy better off?

So as to not get to far afield let me return to the ITIF report.  Aside from from mentioning the big ticket tax policy items that the popular media had covered, the report points out that Obama supports making the current R&D tax credit permanent without expansion, but McCain would make the R&D tax credit permanent, and extend it beyond the current level by calculating a company’s R&D tax credit as an amount equal to 10 percent of the wages that the company spends on R&D in the United States.  So if you can get past the fact that a Republican just wants to cut taxes more you see that what McCain would do is not only make the R&D credit permanent but would also incentivise the additional hiring of high paid skilled workers, something that I think our economy could really use.

At the end of the day whether McCain or Obama would be better for innovation is debatable I suppose.  Now if I could only look into a crystal ball and see who President McCain or President Obama would appoint to be the next Director of the Patent Office… that would make things a whole lot clearer!

The new rules deal with, among other things, the unauthorized practice of law before the USPTO. Rule 11.5(b) will make it impossible for those who are not registered patent attorneys or agents to prepare “documents in contemplation of filing the documents with the Office…” The reason this will lead to the complete demise of invention submission is because of the way that invention submission companies and invention promoters operate. Specifically, the scam operators are not registered patent attorneys or agents, but sign inventors up as clients for patent and invention submission services. These scam operators collect information regarding the invention, typically draft a patent application and provide the draft to a sympathetic patent attorney or agent who then spends very little, if any, time reviewing the document. The document is then file under the name of the attorney allegedly representing the inventor. This attorney rarely, if ever, actually speaks with or communicates with the inventor, so all of the critical legal representation functions are conducted by the scam operator, not the registered attorney or agent.

Invention scams can typically be spotted by those familiar with how the scam operates. One tell-tale sign is the scam operator will claim they have the ability to assist the inventor by both promoting the invention and obtaining a patent on the invention. Reputable professionals rarely, if ever, offer both services. Both services are highly specialized and those who provide competent, reliable and quality services focus on one, not both.

Gene Quinn, a US patent attorney with White & Quinn, PC and the founder of the popular intellectual property site IPWatchdog.com, says: “The latest developments in the struggle to stop invention scams is something that is long overdue. The USPTO and the FTC have tried to some extent in the past to stop this fraud, but it has been largely ineffective because it has been done sporadically and never against the entire industry. Up until now the way government officials have sought to stop the inventor scams is by going after one or a few perpetrators at a time. There are hundreds, if not thousands, of scams operating at any one time though, and frequently when an individual is stopped under one business enterprise another enterprise is started under a different name so the individual operator is able to continue to perpetrate the scam moving forward.”

Quinn points out that “this is the first time that an all out assault has been waged against those who steal from inventors. I really do believe this is different than past attempts to solve this problem. “

John White, a US patent attorney also with the firm White & Quinn and a former USPTO official, said: “Essentially what the Patent Office is saying is that it is time for registered patent attorneys and agents to clean up the profession. Government has been unable to stop the invention submission crisis, and the problem has been allowed to fester due to the cooperation of unscrupulous attorneys and agents who cooperate with invention submission companies. Now the USPTO is putting the burden on attorneys and agents to report problems and saying that those patent attorneys and agents who facilitate invention submission scams are supporting the unauthorized practice of law and in violation of USPTO rules. What this means is that any patent attorney or agent who continues to work with invention submission companies under current practices will be subject to sanction, which is likely to be a minimum of a 6 month suspension, but more likely to be a suspension of 3 years or disbarment.”

For more information on these new rules please see:

PTO Kills Invention Submission Business

PTO Puts End to Invention Submission

About White & Quinn, PC

White & Quinn is a patent law firm specializing in patent application preparation and strategic consulting. We provide patent related consulting services to law firms, small businesses, corporations and universities. The founding members of the firm, John White and Gene Quinn, are patent attorneys and consultants who specialize in the development of effective, cost-efficient patent strategies for small businesses, corporations and universities. John and Gene have both taught patent law and patent drafting at the law school level, and they currently teach a Patent Bar Review course for those wishing to enter the profession. To date they have taught more than 40% of the practicing patent attorneys in the United States, a total of approximately 15,000 attorneys.

In an interesting article, Heise Online reports that SUEPO believes the supervisors of the EPO are not interested in high-quality legal protection of commercial rights that would actually strengthen European industry, science and innovation.  The staff of the EPO apparently does not trust upper level management and morale throughout the EPO is extremely low, and in the past has even protested to try and get more time for examiners to do their jobs.

The problems identified by SUEPO regarding the EPO sound eerily similar to problems that are plaguing the US Patent Office.  For example, the Government Accounting Office called out the US Patent Office in a report issued in September 2007, taking the PTO to task for their inability to retain examiners and unrealistic production goals.  Furthermore, morale at the USPTO is exceptionally low; so low that certain examining groups have simply decided to refuse to issue any patents any more.  And the qualifications of upper level USPTO management has been questioned because the political appointees running the Patent & Trademark Office have absolutely no experience in the patent industry and simply do not understand what is required to draft, file and prosecute a patent application.

The problems facing the patent systems of the world are staggering, and real political leadership is going to be necessary to solve this problem.  Of course, calling it a problem is really misleading.  The so-called problem is one of great success.  Because innovation is more and more becoming the driving force of the world economy patent offices around the globe are experiencing tremendous growth in the number of patent applications, and as innovation marches forward the technology represented in these applications is becoming more and more complex.  Unfortunately, rather than giving examiners time to really examine applications they are given arbitrary amounts of time per application.