GSK vs. PTO notes

(Note: Looks like once a week postings may be my limit for now.)

In everything I have seen so far, here is the most important sentence:

"Many companies rely upon the stable, reliable protection afforded by the current patent system in determining whether it is cost-effective to abandon their trade secret protection by pursuing a patent." from the PI order, p37; link

This is it. This is what is being missed by most commentators I've seen. As a customer, there are only "must haves", "would likes", and "delighters" - this is the "must have."

It would be delightful to have our patents granted the day they were filed. It would be delightful if a special envoy of polyglots checked every library and every piece of art on earth for every application. I "would like" patents to be granted faster and examiners be able to search deeper and longer.

However, I would sacrifice both of those in a second for stability. Between courts reinterpreting scope and standards, and congress trying to address the needs of the inventive community, the PTO is the one pillar of consistency practitioners have come to necessarily rely on for determining, broadly, how to protect their clients and companies.

Over the last few months I have realized that I do not care what rules the USPTO issues. I care about the values behind the rules.

It seems the community has convinced the Office that faster and better has become more important than predictable. They have become must haves.

I absolutely disagree. They are very, very important, but not must haves.

As a practical matter, just as the PTO predicted, I do not know "how to proceed with patent prosecution and which rules will govern applications during the period of injunction." While the PTO rule-making created a lot of work and some uncertainty in bringing everything into compliance, GSK has now caused more uncertainty and more work (making decision trees and expected outcome/impact analysis for each case). Of course, if the end result of the case is greater predictability and stability - then I will soon forget the hours and frustration.

Three final notes coming out of all this;

1) People are paying attention to the PTO. They have shown the will to implement that which they believe to solve their loudest criticisms (pendency longer than some technologies relevancy and patents being invalidated), and are not backing down from executing on what they believe will work.

2) IT and Pharma are working together in the invention community. In related news cats are lying with dogs.

3) The answer to "How should the patent system improve?" clearly depends on who one asks. People who don't care about budgets say raise fees. People who don't understand that the search is the examination say outsource the search. There is a lot of complexity to answering this question and it is clear that the community is realizing just that.

Mythbusters and Numb3rs

A few quick notes from Friday:

OQO hq is located a few blocks from some great food in San Francisco's Mission district. Last Friday I ran across Grant, Tory, and Kari - the Mythbusters build team - at Jay's Cheesesteak on 21st St. It was remarkable how well they blended in the neighborhood (Kari's pink hair and all). When I noticed them leaving, I became a bit star/nerd struck and mainly thought to myself "Do. Not. Stare." feeling very much like I was seeing Steve Martin's nose for the first time in Roxanne. Hopefully that will wear off, and next time I'll smoothly pitch a Mythbusters patent special where we test actual published patent applications with 101 rejections for defying the known laws of physics (or rather "inconsistent with known scientific principles").

Also on Friday, an OQO Model 02 was shown three times in the first 10 minutes of Numb3rs.

Lastly, I still owe Gene Quinn of PLI a thoughtful response to his comment on my "PLI Gone Wild" post, but have not had the time to write the non-confidential aspects of what I am now implementing regarding the new rules. Hopefully this will all settle in a few weeks and I will have some time to write that note. In the meantime, if anything breaks this week, I will make best efforts to post whatever practical context I can.

Cheers.

USPTO Obviousness Guidelines in view of KSR

Again catching-up on important posts, here is a summary of the new, somewhat modified obviousness standard that was propagated due to KSR.

 

Combining prior art elements according to known methods to yield predictable results; Simple substitution of one known element for another to obtain predictable results; Use of a known technique to improve similar devices, methods or products in the same way; Applying a known technique to a known device, method or product ready for improvement to yield predictable results; "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art; and Some teaching, suggestion or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine the prior art reference teachings to arrive at the claimed invention.

Full post here...

Ten Questions with Fred Greguras

A bit late on this but a useful post for entrepreneurs from Fenwick and West: View article...

PLI gone wild

PLI is going a bit wild on it's blog today about cases being removed from examiners dockets for 5/25 compliance:

PLI - Patent Blog:"This is the height of arrogance, and luckily the height of stupidity, on the part of the Patent Office. One of the things that some have said will make it difficult for GlaxoSmithKline to prevail on the TRO & Preliminary Injunction level is because they will be hard pressed to show irreparable harm. This is irreparable harm, and it is evidenced by the Patent Office's own PAIR system!
...
[I]f an application was flagged and removed from the examiner docket for any length of time that has to by definition make it less likely that an office action would be mailed on or before November 1, 2007"

Unfortunately, that is not necessarily true. It does not "by definition make it less likely" to be examined if there was already zero chance of examination.

All the examiners know these rules are coming down the pike, and they all have discretion on which cases to examine. Even the ones that are actually the oldest on an examiners docket do not have to be examined first. They are supposed to be, but I know examiners who just crank through easy amendments for bi-weeks at a time without doing any new cases for months. The small work-flow hit doesn't impact their performance nearly as much as production, so they knock out amendments getting the counts they need.

Even if there are 1000 cases that were both the oldest on an examiners docket and had more than 25 claims, there is actually little reason to believe those 1000 examiners would not just wait it out until the new rules came into effect and resulted in them having to do less work. Surely there will have been a few that would have been examined and saved from the rules, but it is going to be extremely difficult to determine those cases.

As for GSK showing irreparable harm just because of this, I am definitely not as sure as PLI. As I previously had not taken into account examiner discretion, it may be my 1 in 600 estimation was actually high.