Sunday, May 1, 2011

Greg Aharonian on a Serious Problem With the Proposed Patent Reform Act

For the umpteenth year in a row, Congress is considering a patent reform act.  The bill this year has made more progress than past bills, and might actually pass.  The current bill doesn't have many of the controversial provisions that killed previous draft bills.

However, the current bill does appear to have one serious problem:  it changes the current U.S. law giving inventors a one-year grace period to file a U.S. patent application.  Briefly, under current law, inventors have one year after a public disclosure or sale to file their application without the public event counting as prior art against the application.  There are lots of advantages to this system: among other things, it gives inventors, their investors, and their attorneys sufficient time to develop their inventions and make sure they are worth the expense of a patent.  Even people such as myself who favor limits on patent protection think the grace period is a good idea.  In other words, it doesn't need any "reform."

But as several people have pointed out, the bill does try to fix something that isn't broken.  One of them is Greg Aharonian, a commentator on IP law who also is a prior art searcher.  His web site is  Greg also publishes an email newsletter.  A recent email discusses problems with the proposed patent reform bill's changes to the grace period.  Greg has given me permission to publish his comments here -- they are worth reading.

[Post of Friday, April 29, 2011]
Good or bad, the U.S. grace period has had many important uses in the
history of entrepreneurs becoming successful.  So it is sad to see how
Congress is playing vague, semantic games with the grace period. Worse,
as many people are pointing out, with Hal Wegner and David Boundy
leading the way, is that one goal of patent reform is to TOTALLY destroy
all aspects of the U.S. grace period.  If this crap passes with the vital
support of the AIPLA, inventors will have to remain completely secret
until ALL of their patents are filed.  Which is impossible.  Which is
the goal.  Because under S.23, as supported by the House Judiciary
committee, pretty much any public disclosure kills your patent rights.

Which will ending up KILLING Americans!  How you ask, if you are still
reading this?  That's to come, but first some more hysterics:

S.23 must not be allowed to pass - because its grace period changes will
lead to the deaths of many Americans. S.23 doesn't want progress - it
wants death (you have to solve Medicare/Medicaid problems somehow). S.23
is a threat to U.S. national security, in that it will cause more deaths
than hundreds of planes hitting buildings.  If S.23 passes, part of the
PTO becomes a DEATH PANEL.

So how does S.23's grace period lead to the deaths of Americans (don't
think I can pull this argument off, do you?).

Under S.23, you CANNOT obtain a patent if you do the following:

    January:    you invent a brilliant new idea
    April:        you publish a paper on your brilliant new idea
    July:        you publicly use / sell a few items based on idea
    December:    Under S.32, YOU CAN'T FILE A PATENT APPLICATION

because your public use/sale acts as prior art.  You can publish, but
can't use/sell.  That's the clear result of the current grace language of
S.23.  It is Flook Puke logic (Flook Puke ruling that a novel algorithm
is prior art to itself), i.e., a novelly-sold product is prior art to
itself - let's call it Grace DisGrace, the sister of Flook Puke.  If you
are not aware of this aspect of S.23, read the damn bill (and even worse
provisions).  You cannot call yourself ethical, and accept this aspect
of S.23.

The House, in its infinite honesty and lack of corruption, realized this
is outrageous, and in an April 12 Manager's Amendment, improved (but did
not fix) the S.23 language, allowing the following process more compatible
with current U.S. law (note: the House Judiciary committee, after being
paid a lot of money by lobbyists, killed this partial fix):

    January:    you invent a brilliant new idea
    April:        you publish a paper on your brilliant new idea
    July:        you publicly use/sell a few items based on the idea
    December:    Under HR 1249, you can file a patent application

But this now-dead change improves NOTHING in a competitive inventive space.  Because even this now-dead House amendment, and much more worse so, S.23 and its Grace Disgrace language, says NOTHING about a competitor selling your product after you publish.  That sale then becomes novelty-destroying prior art, as follows:

    January - Noble scientists invent a cure for all cancers
    April  - At an important cancer meeting, they announce
          their results to the world
    July    - Generic drug companies start producing the drug
    December  - The scientists drink themselves to a stupor because
              they can't apply for a patent on their discovery.

So what do the scientists do to defeat the death-encouraging grace period
of S.23?  They do something THAT LEADS TO THE DEATHS OF AMERICANS:

    January - Noble scientists invent a cure for all cancers
    February - They file a quick provisional
    November - They file a patent application
    December - At an important cancer meeting, they announce
          their results to the world

In that one year of secrecy, because of the evilness of S.23, MILLIONS OF AMERICANS DIE FROM CANCER because, even under testing conditions, they can't take advantage of the drug for that one year.  Even worse, S.23 may lead to even more Americans being killed:

    January  - Noble scientists invent a cure for all cancers
    February - They file a quick provisional (or not)
    July    - They won't tell investers more than is in the
                      provisional, so the investors won't invest.
    December - At an important cancer meeting, they sit on their
                      secret and wait eighteen months (they are
                      filing PCT) until they approach investors.

How many tax-paying, patriotic, Americans are going to die of cancer in those eighteen months?  MILLIONS, BILLIONS. (What, there aren't over a billion Americans?  Facts - please don't bother me).

More seriously, if patent reform passes with any of this language, the
reality is that many patent applicants, big and small, are going to have
to perfect their invention COMPLETELY, and file a 100 PERCENT, TOTALLY PERFECT, TOTALLY ANTICIPATING THE NEXT 30 YEARS OF CASELAW, patent application, before going public.  Because the day you go public, you are pretty much screwed from that date forward in terms of any priority matters, and any improvements.

Why the latter comment?  Once your initial disclosure is out there, any
additions or corrections are pretty much unpatentable under KSR, since
given your initial breakthrough, in the eyes of ignorant, contemptous
caselaw, everything else is pretty much predictably-obvious.  See, the
Supreme Court was paid to write KSR the way it did, not for reasons of
clarifying "obviousness" (which KSR doesn't even do), but rather for
reasons of being part of a longer term strategy tied into patent reform.
The only logic in KSR was the valuation of the decision that was sold.

So if you have an invention, make sure you have at least $15,000 to spare
in your pocket before you go public, because that is what it is going to
cost to get a real good patent application prepared by a good patent
prosecutor, with a few thousand dollars needed for your lawyer to guess
how the CAFC is going to change the rules after you finally file.

Now, I know all of my overseas PATNEWS readers outside the United States
are saying "Grow up, stop crying like a baby, and use the patent system
like the rest of us do.", because the goal of S.23 is unilateral patent
harmonization.  After all, the large companies, who have active foreign
patent practices, have already learned to patent in regimes with no
grace period.  To them, S.23 just simplifies matters a bit.  And that is
why they are happy to see PTO Director Kappos talking outside the U.S.
about how one goal of U.S. patent reform is unilateral disarmament
(whoops, I mean harmonization - the words look so Chamberlinianly similar)
of America's horrible, childish, nasty patent system.

No surprise.  S.23 is the "Patent Harmonization to Help Large U.S.
Multinationals" bill, and nothing else.  And such a gold may be in the
best interests of the United States.  Or not.  But at least let us be
honest about this gold of reform.  S.23, and to much the same extent,
HR.1249 is meant to hurt small and independent inventors.  Again, that
gold might be in the best interests of the United States.  Screw the poor,
use their old people for kindling (which also cuts down on Medicaid), and
whack the heads of any poor person smart enough to invent something that
progresses the arts and sciences who has delusionaly fantasies about

      (I am not even drinking tequila while writing this crap.)

And then, assuming you survive the gauntlet and get a patent issued under
the new harmonized system, I and my searching colleagues are there to
crush it to death (at least 80% of the time).  And what we don't crush
outright, is ground to a pulp in post-grant review, and if not so ground,
then quintiplily (is that a word?) re-guessed into 101- and 103-oblivion
by feral judges, who don't understand incoherent patent caselaw, let alone
any science or engineering.

S.23's destruction of the grace period - is un-American.  If there were
any real communists left in the world, I would call it a Commie-plot.
It pisses on the Constitution, and then uses the Constitution to soak
up BP's TEPCO irradiated oil.  (Geesh, how does Glenn Beck make millions
with such nonsense - what am I not doing right?).  Anyone know if there
is a potter's field in Middlesex, Vermont?


Other comments about this problem are here, here and here.

1 comment:

  1. Interesting that, since the House version of the bill started circulating, the pending patent reform legislation has plummeted in popularity, so much so that it could now be doomed. Patent reform may indeed be a pipe dream, after all...which likely comes as a relief to some. I, too, support the grace period and think that patent reform legislation lacking this provision is inadequate.