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Lawsuit Challenging Qualifications of Deputy Patent & Trademark Office Director:

The complaint is here; it alleges that Deputy PTO Director Margaret Peterlin lacks the statutorily required "professional background and experience in patent or trademark law."

I can't speak to whether the deputy director in fact lacks such background and experience. Her biography doesn't stress much of it, though it points to quite substantial general legal credentials; but according to the Washington Post, patent office spokeswoman Brigid Quinn reported that "Peterlin has 'had direct involvement in oversight of the USPTO and every piece of patent, trademark and copyright-related legislation considered on the House floor over the past five years.'"

I'm more interested in the institutional question here: What should courts do with vague criteria such as "shall ... [have] a professional background and experience in patent or trademark law," criteria that give no instructions about the level of background and experience required? I'm not an administrative law expert, but I'm inclined to say that this is the sort of judgment that is left to the Director (and, indirectly, to the Secretary of Commerce and the President, who can decide to remove the Deputy Director), not to courts. But I'd love to hear what administrative law experts have to say about this, and about other procedural questions that this lawsuit raises.

Thanks to Michael Hall for the pointer.

Related Posts (on one page):

  1. Lawsuit Challenging Qualifications of Deputy Patent & Trademark Office Director Rejected:
  2. More troublemaking Volokhs:
  3. Lawsuit Challenging Qualifications of Deputy Patent & Trademark Office Director:
M. Lederman (mail):
OK -- be honest. Did Hanah solicit this lawsuit?

;-)
7.26.2007 2:07pm
Hanah Volokh (mail) (www):
I just have a knack for picking boring, obscure paper topics right before they become interesting and newsworthy!
7.26.2007 2:19pm
George Lyon (mail):
Let's start with the fact that plaintiffs have not shown standing, i.e., a concrete harm caused by her appointment that would be remedied by the relief requested. The allegations of harm -- mostly delay and incompetence in processing -- are either speculative or predate her recent appointment. Furthermore delay in processing paperwork is more the norm than the exception in the federal government. E.g., the Passport Office.

Second, the plaintiffs attempt to assert jurisdiction under the APA for a personnel action. I'm not aware of any case supporting such jurisdiction. If the courts were to exercise jurisdiction over this type of action, then certainly could be a floodgate opened for actions challenging the job qualifications of innumerable federal employees who are alleged considered to be incompetent under the regulations governing their appointments. Not that such a event would not bring joy to a lot of hearts.

Third, this would appear to be a matter entrusted to agency discretion and thus not subject to review under the APA.
7.26.2007 2:24pm
GMS (mail):
This puts me in mind of state constitutions that say vague, aspirational things like, "The State shall provide adequate public schools," which courts seize upon to order the legislature to increase taxes because school x has a teacher-pupil ratio that the court thinks is too low.
7.26.2007 3:39pm
dc user (mail):
I can't see this case going anywhere, given the standing and agency discretion issues.

On the other hand, this is another example of Bush administration cronyism. Why on earth would you think that a bunch of years of being Hastert's staffer was the best background for this job? I thought that Republicans saw the virtues of the private sector. Why not get people with actual experience in private sector technology, or with experience practicing patent law.

Another case of politics trumping any conceivable notion of qualifications. Heck of a job, Bushie!
7.26.2007 3:39pm
Wahoowa:
Right. Because cronyism is entirely limited to the Bush administration and no other PTO director in history has gotten their job because of who they know or who they've worked for.

I agree that competence should be paramount, but the problem is not limited to Bush.
7.26.2007 3:48pm
Bruce Hayden (mail) (www):
I would think that the specific requirements specified in the statute would trump agency discretion. The statute requires that:
The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
Ms. Peterlin has apparently never been licensed to practice patent law before the USPTO, nor is there any indication that she has ever practiced either patent or trademark law professionally. In short, she has no "professional background and experience". Rather, she has general legal experience and legislative experience.

I would suggest that the purpose of those provisions in the law are to protect against exactly what is happening here - people who seem to be totally unfamiliar with the realities of the patent and trademark systems AS THEY ACTUALLY WORK, as opposed to some high level theoretical understanding.

I should add that part of what is behind this is that the USPTO top management seems almost clueless about the reality of the patent system. In particular, they have proposed a number of changes to patent prosecution, including eliminating most patent continuations. The response by the patent community has been overwhelmingly, if not deafingly, negative. Yet they proceed.

Why are the proposed rules bad? Just looking at the limitations on continuations - partly because many of the continuations being filed right now are a direct result of patent examiners ignoring MPEP guidelines as to when they can issue final rejections. There are plenty of other very legitimate reasons that patent practitioners file continuations, continuations in part, RCEs, and even divisionals. Yet, under proposed regulations, these would be severly limited. Oh, and one of their other great ideas is that if you submit substantially the same disclosure at about the same time, they are going to assume double patenting WITHOUT LOOKING AT THE CLAIMS.

What is blazingly obvious when you look through their material about the proposed USPTO patent prosecution changes is that those making the proposals have never filed and prosecuted patent applications. And part of this naivity is that forclosing filing continuations, esp. when the continuations, etc. are a direct result of examiners ignoring regulations (as they often do), is that the number of appeals is going to skyrocket. In the past, if an examiner incorrectly marked an office action as final, it was often cheaper for the client to just file an RCE. Ditto if he wasn't budging in the face of not having the prior art on his side. Now, you will petition to remove the final rejection, and then you will appeal. Automatically. The appeals process is already bogged down. Just wait until most final rejections end up on appeal.

I could go on, but most of those here are unlikely to be interested in my rants.
7.26.2007 4:01pm
Bruce Hayden (mail) (www):
I think that the answer to the agency discretion argument is that this is a gross abuse of that discretion. Professional experience was not meant to include working on IP legislation. It is a very specialized part of the law, and the legislative intent was, almost assuredly, to make sure that those in charge were well versed in it by virtue of actually having worked in the area.

And what is fairly obvious to many of those practicing in that area, is that USPTO top management does not understand how the pieces fit together, which they likely would, if they had actually had the requisite professional experience.
7.26.2007 4:10pm
Bruce Hayden (mail) (www):
On the other hand, this is another example of Bush administration cronyism. Why on earth would you think that a bunch of years of being Hastert's staffer was the best background for this job? I thought that Republicans saw the virtues of the private sector. Why not get people with actual experience in private sector technology, or with experience practicing patent law.
Realistically, this is no different from Clinton appointing a gay copyright attorney to run the agency because he was gay. About all that could be said was that copyright is considered part of IP. But copyright law practice is far different from patent and trademark practice. I am not sure which is worse, the cronyism here, or the filling cabinet posts by the constituancy as was done by Clinton. This post went to a woman, this one to a Black, this one to a Hispanic, and this one at the USPTO to a gay man, all based first on their membership in some Democratic power group. Neither approach is going to get the best and brightest running the government.
7.26.2007 4:18pm
anonymous one (mail):
Wahoowa said: "I agree that competence should be paramount, but the problem is not limited to Bush."

You're right, before Bush it was Clinton who in 1993 appointed Bruce Lehman as Commissioner. Lehman had no expertise in patent law (though he had quite a vision for the Patent Office, unrelated to patents however), and it was under his leadership that the patent system started its downward spiral. Rogan and Dudas have been unable to see and address the relevant issues (due to their complete lack of patent experience), and by their actions and inaction have actually compounded matters to steepen the downward trend.

Before Clinton, I am completely unaware of a single Commissioner appointment who did not have a professional background and experience in patent law (beginning with Brenner, and then Gottschalk, Banner, Parker, Dann, Mossinghoff, Manbeck, Quigg, and Comer?

And so, for the last 15 years (and maybe for the first time in history) the USPTO has been a headless organization, and are we surprised at the result?
7.26.2007 4:30pm
BandarBush (mail):
Putting aside her individual qualifications, I am sick of the PTO's guild tactics. I don't see why both a "tehcnical degree" and special test are required to practice before the PTO. Especially if we aren't going to require a technical degree to enforce the patent once it exists. Why shouldn't either the degree or passing the Patent Bar alone suffice. Its simple guild exclusionary politics and exactly the type of thing anti-trust laws should prevent. I personally don't see any reason for either qualification but certainly can't support a system that insists on both a tehcnical degree and passing another unnecessary test (I have faith in a free market, even when it comes to IP attorneys).

I also don't care for the lexicon that has developed around patent lawyers, how they refer to IP lawyers without technical backgrounds as "soft" IP attorneys. It has an unwarranted pejorative connotation. As though patent law was the one true path to IP enlightenment. Give me a break.
7.26.2007 4:41pm
Adam B. (www):
What other government positions have such requirements? I know that solicitors general must be "learned in the law," but who else?
7.26.2007 4:59pm
David M. Nieporent (www):
The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
Isn't this a rather silly requirement anyway? If experience in patent and trademark law is necessary to successfully run the office, then why would Congress pass a law requiring one to have experience in patent or trademark law? It's unlikely that experience in one of the two fields would provide useful experience for the other. So it's essentially a requirement that the person sort of be qualified.
7.26.2007 5:12pm
theobromophile (www):

I don't see why both a "tehcnical degree" and special test are required to practice before the PTO. Especially if we aren't going to require a technical degree to enforce the patent once it exists.

You don't need to have as deep a technical understanding to litigate a patent case as you do to actually write the thing.

Second, the MPEP isn't on any other bar exam. If you don't like the idea of a separate test, would you be okay with the idea of integrating the Patent Bar into the multi-state?

Third, I'm all for the current system because it undermines the lawyer's guild. One does not need to even set foot in a law school to take the Patent Bar - one only needs the requisite technical degree.

The Patent Bar system makes a lot more sense than the current system, whereby a person takes the bar exam which covers a dozen different legal fields, at least 11 of which he will not need to know professionally.

Finally, you mis-characterise the requirements for sitting for the patent bar. A technical degree is a surefire way of meeting the qualification, but anyone who can demonstrate adequate technical understanding (Part C) or cousework (Part B) can sit for it.
7.26.2007 5:21pm
anonVCfan:
EV wrote: "I'd love to hear what administrative law experts have to say about this, and about other procedural questions that this lawsuit raises."

If anyone has a clue about the legal issues involved, they should feel free to step forward.

Failing that, a response to Adam B.'s question would probably be a useful start.
7.26.2007 5:33pm
GregC (mail):
The District Court for the Western District of Washington ruled a few years back that Brian Mannix, a Bush Administration appointee to an Office of the U.S. Trade Representative advisory committee, was not an "environmental representative" within the meaning of a prior settlement agreement requiring USTR to appoint a "properly qualified environmental representative." (Washington Toxics Coalition v. Office of the U.S. Trade Representative, WL 23742560, 2003).

"Plaintiffs, for their part, [did] not challenge Mannix's qualifications to serve on ISAC-3 but question only whether his experience and background make him an appropriate representative of the environmental community." Id. at 2. At the time, Mannix was employed by the Mercatus Center at George Mason University, and he had previously been employed by the Environmental Protection Agency and had served as Virginia's Deputy Secretary of Natural Resources. But Mannix is a free-market environmentalist and did not have the support of the organized environmental movement. The court held essentially that, because the intent of the settlement agreement was to ensure that the views of the organized environmental movement were represented, Mannix did not fit the bill.

Although there are relevant differences between that case and the present one, it's likely that the court will look to the intent of the qualifications language in 35 U.S.C. 3(b)(1) and find that it limits the Secretary's discretion. My guess, is that the court will side with the plaintiffs.
7.26.2007 6:12pm
M. Lederman (mail):
OK, in partial answer to Adam's question: Throughout our history there have been countless qualifications imposed by statute on appointed U.S. officers. (And by "countless" I mean it would waste a lot of someone's summer to try to count them all. As in, How Many Holes Does It Take to Fill the Albert Hall?) Hanah might have a more complete or recent list. But for the time being, it wouldn't hurt to start by looking at Justice Brandeis's list of ten pages (and 20+ footnotes) of such qualifications between the founding and 1926, in Myers v. U.S., 272 U.S. at 265-275.
7.26.2007 6:13pm
Mike S.:
Why is an attorney drafting patents more "professional" than a Congressional staffer writing patent law?
7.26.2007 6:22pm
anonVCfan:
Thanks, Prof. Lederman. The snark wasn't directed at the first 2 comments.
7.26.2007 7:01pm
Antares79:
I agree that Aharonian faces an uphill battle with this suit, but I think that this is more than a frivalous lawsuit by a irrational litigant. Rather, I think it represents palpable and growing frustration among practitioners and academics alike toward the USPTO's approach to operations, whether it be procedural or substantive. See, e.g., http://www.patentlyo.com/patent/2007/07/are-administrat.html
7.26.2007 7:27pm
PersonFromPorlock:
If I may speak as a rather grumpy 'garage inventor': the whole patent thing is a schmooze among well-capitalized industries, patent attorneys and government bureaucrats. As far as Americans of ordinary means are concerned, patents are priced completely out of reach. So maybe somebody who isn't experienced in the current system isn't such a bad thing.
7.26.2007 7:34pm
Antares79:
"So maybe somebody who isn't experienced in the current system isn't such a bad thing."

Of course, one lacking experience in the current system wouldn't necessarily know how to change the current system to help "garage inventors," while one experienced in the current system might. For instance, the new continuation rules (which, I admit, probably aren't Peterlin's doing, but reflect the zeitgeist of the USPTO, whose leadership were never practitioners) hurt independent inventors most of all. Independent inventors are usually the ones who need the most bites at the apple to amend their claims to something allowable. The new rules limit the inventor's opportunities to do so. Whereas BigPatCorp needs only one chance to amend to go from ridiculously broad to only laughably broad and get allowed.
7.26.2007 8:02pm
genob:
Just a personal note on the ridiculous nature of the "guild". While aeronautical and mechanical engineering degrees qualify under Category A to let you sit for the Patent Bar exam, I was told a number of years ago that my "aerospace" engineering degree would not qualify under that section...Simply beacuse the name did not match exactly (same classes as a "mechanical" degree, and same electives for what was called "aeronautical" at some other schools.) Rather comical, but was a pain to have to go dig up old transcripts and course descriptions to prove I met the hours requirement.
7.26.2007 8:12pm
MLS (mail):
Clearly the plaintiffs lawyer is a true believer in the importance of paper qualifications. Check out his website.
http://swift.law.pro
7.26.2007 9:51pm
ReaderY:
Separation of powers.

Appointments are for the political branches. I you don't like the administration's actions, vote for a new administration.
7.26.2007 9:58pm
neurodoc:
There are some federal agencies in which the professional staff take pride in working there (the National Institutes of Health; State; in the past DOJ). The USPTO ain't one of them, though, and things have only become worse there since '01, with very bad labor/management relations. Patent examiners with PhDs in their technical fields, educational credentials most of their supervisors don't have, are told not to note them on their business cards or nameplates, and they may soon be ordered not to include "PhD" in their signature lines.
7.27.2007 2:17am
Roger Schlafly (www):
Why is an attorney drafting patents more "professional" than a Congressional staffer writing patent law?
Because a patent attorney or agent has actual experience with how the patent office works; the staffer just has experience talking to lobbyists about how their clients want the office to work.
7.27.2007 5:23am
PersonFromPorlock:

Of course, one lacking experience in the current system wouldn't necessarily know how to change the current system to help "garage inventors," while one experienced in the current system might.

A hoary argument, and not just about the USPTO; we hear it a lot about politicians, too. Somehow, though, all those 'experienced' folks always end up acting just like their predecessors.
7.27.2007 8:03am
Ronald D. Coleman (mail) (www):
Nieporent is right. Notwithstanding BandarBush's offense, as a "soft IP" attorney, I endorse the distinction. The only connection between patents and trademarks from a practical lawyering perspective is there's a government ministry called the "Patent and Trademark Office." They're otherwise irrelevant to each other in almost every sense besides both being included in the broad rubric of intellectual property. Given the irrationality of the requirement, appoointing a very talented generalist who has some exposure to the legal issues via extensive legislative work is not really unreasonable.

What would be reasonable is admitting the distinction and, no, not turning the PTO into two bureaucracies, but at least splitting this job into one for patents -- to be headed by a PTO-admitted practitioner -- and one for trademarks.
7.27.2007 11:30am
Ronald D. Coleman (mail) (www):
BTW, if it's not clear, I can't imagine anyone who has not practiced before the PTO as a patent lawyer taking on the responsibility of reforming it. You can still be a maverick without being an ignoramus.
7.27.2007 11:37am
Bruce Hayden (mail) (www):
Someone above suggested that expertise in patent work and in trademark work were likely very different and wouldn't translate.

While that is theoretically plausible, it does not work out in the real world. Many, if not most, patent attorneys do some trademark work. Indeed, it was quite a shock to me when I first went into corporate practice to find that I wasn't supposed to even think about trademark questions, as we had trademark counsel who had that responsibility.

The guys who trained me in patent law loved having trademark work. It did a great job at leveling off their practices. These two types of IP law operate at a different tempo. Trademark work is more consistent, but comes in much smaller chunks. More like much of the transactional work done by many attorneys.

Nevertheless, probably because much of trademark work is done by patent attorneys, there are distinct similarities between patent and trademark prosecution that you don't find in copyright work. I had to work last winter with a copyright examiner, and it is like dealing with someone from another planet, compared to patent and trademark examiners, etc.

The similarities between patent and trademark prosecution could be because you often have the same attorneys prosecuting both, or it could be because the examiners work at the same agency, or it could be because the commissioners before Clinton's pick at director (i.e. Lehman) were patent attorneys. Regardless of cause, they are much more similar to each other than they are to copyright prosecution.

But, yes, I think that most patent practitioners would hope to have someone at that level in the agency to have worked as a patent attorney, preferably also having done some trademark work.
7.27.2007 11:48am
Bruce Hayden (mail) (www):
Some above have hit on an interesting fact. In order to sit for the patent bar, you need technical or scientific background and training. But apparently, to be the operational head of the agency, you don't even need to be able to distinguish between a patent and a trademark, nor need you need to understand the first thing about what it means to prosecute a patent. There are 50,000+ licensed practitioners out there who likely have more first hand experience in the area than does Deputy PTO Director Margaret Peterlin.

Becoming licensed to practice before the USPTO (for patent work) has always seemed to me to be somewhat arbitrary. The horror stories abound. My next brother reminded me yesterday that he had a master's degree in mechanical engineering, but since it wasn't a bachelor's degree, he was a Class B applicant (which means that you have to prove the scientific or technical rigor of your classes, one by one - and no, Al Gore's two science courses at Harvard likely would not have counted). Both of us also had the problem of having mathematics degrees. Mathematics courses or degrees don't count - unless you can convince the USPTO that they weren't really math courses (I was able to convince them that three of them were actually CS courses). But a physics degree does count, and you can sit for the bar with fewer physics classes than any other discipline. I should also note that I first learned calculus in physics, not math. There is a lot of crossover. Nevertheless, I hit the crossover between when CS courses were not accepted but work experience was, to the opposite, where CS was accepted, but not work experience. As a result, I had to go back after law school and get a couple more classes to get over the hump to sit for the patent bar.

At least if she had passed the patent bar, we would have some confidence that Ms. Peterlin understood the MPEP, which are the operational rules that rule patent practice. She is effectively in charge of them, but there is little evidence that she understands them.
7.27.2007 12:09pm
Stevethepatentguy (mail) (www):
I'm a patent lawyer who started my career at the Patent Office and has seen its ups and downs over the last ~20 years. I am totally nonplussed at the idea of a non-career patent or trademark lawyer leading the office. In fact, I think what the Office needs is someone with experience on the Hill. One of the biggest problems with the PTO is that it is used as a revenue generator for the rest of the federal government. Give me someone with experience with Hastert and Armey over someone with experience drafting patent applications or running a patent or trademark firm anytime.

There is also a chance that this suit is a rear-guard action against the Patent Reform Act of 2007. There is a shocking antipathy towards "first to file", "inter partes reexamination" and damage calculations (i.e. "patent's specific contribution over the prior art.").

I typically agree with Bruce Hayden on IP matters in this forum, but not here. The proposed prosecution changes he notes are not proposed by someone "almost clueless about the reality of the patent system" but by someone looking to shift the burden from the Office to the Applicant.
7.27.2007 12:15pm
anonVCfan:
Since no one seems to know or care about the legal questions in this case, I suppose I'll dive into the muck.

There is a mentality I perceive among patent lawyers that patent law and PTO administration is about nothing more than science. If I have a Ph.D. in biology, I know more than you and how dare you tell me anything.

Science is only part of the picture, however, and at the top levels of the agency, it's probably more useful to have generic management skills, legal knowledge, and some sort of macro-level policy experience. Stephen Hawking is brilliant, but I don't think anyone could plausibly argue that he's the best-suited person in the entire country to run NASA. The head of the PTO shouldn't necessarily be the best patent prosecutor in the country any more than the GM of the Redskins should be the best football player in the country.
7.27.2007 12:43pm
anonVCfan:
(started writing my post before seeing Stevethepatentguy's post---I'm not talking about him)
7.27.2007 12:58pm
Bruce Hayden (mail) (www):
Why is an attorney drafting patents more "professional" than a Congressional staffer writing patent law?
Hey, then appoint a physician or a dentist.
"So maybe somebody who isn't experienced in the current system isn't such a bad thing."
The problem is that the agency is in crisis. The backlog in patents awaiting examination in many fast growing art areas is growing far faster than the agency can staff (of course, it doesn't help when Congress diverts fees to the general fund). Officially, they are supposed to provide a first office action w/o, I believe, a year and a half. But some art areas are running five years, and there are rumors that in some small areas, the queue is growing twice as fast as the agency can process the applications.

Moral seems to have gotten progressively worse at least since Lehman was put in charge 14 years ago. The work rules seem to be getting worse and worse. If not for that, the pay would probably be ok, if they weren't located in northern VA. So, now you have a bunch of bureaucrats trying to game the system. Far too many are immigrants with weak technical skills and even weaker grasp of the English language (most of us can recount horror stories where the examiners' inability to understand basic spoken, and worse, written, English was the reason behind some rejections).

Add to all that, that patent practice is getting more and more specialized. Biotech and pharma are far different than even chemical, and all those are different than mechanical, which is different from software. The types of problems you face, the types of claims you write, etc., are all very different these days. I am at the point where I will do software, business methods, and some electronics, esp if computer related. No mechanical anymore, and never chemical, etc.

If the upper management at the agency is not panicking, they should be. Yet, they continue to propose rules that look good on paper, but will just make matters worse in reality. Potentially, a lot worse. What I see is management that does not understand patent prosecution from the prosecutors' side. And, as a result, they don't seem to understand how the pieces fit together. And, as a result of not understanding how the pieces fit together, their "reforms" just seem to make things worse, for them and for us.
7.27.2007 1:01pm
neurodoc:
Stevethepatentguy:
I am totally nonplussed at the idea of a non-career patent or trademark lawyer leading the office. In fact, I think what the Office needs is someone with experience on the Hill.

Only you know your own reaction to "the idea of a non-career patent or trademark lawyer leading the office." By your own statement, hthough, we can see that you are not "nonplussed" by the idea.
7.27.2007 1:28pm
Bruce Hayden (mail) (www):
I typically agree with Bruce Hayden on IP matters in this forum, but not here. The proposed prosecution changes he notes are not proposed by someone "almost clueless about the reality of the patent system" but by someone looking to shift the burden from the Office to the Applicant.
That may be the goal, and if so, I don't begrudge the USPTO for that. The problem I see is that much of what they are trying to fix is a result of their own work rules. I don't file RCEs and other continuations because I like to, or I want to gouge a client. I mostly do so because the examiner has cited new art on a final rejection or is being unreasonably recalcitrant (though that more likely results in an appeal). And he has likely done so so that he can get extra counts against his production quota. Yet, the USPTO solution is to eliminate most continuations.

It is nice to posit a world where one time through is sufficient. But that ignores the reality of examiners gaming the system and examiner incompetence. Not all, or maybe even most of the examiners, but enough to cause the problem in the first place.

A lot of the other proposed changes are almost as bad for me and my clients as the limit on continuations. We don't file shared mega applications with different claim sets because we like to, but rather because the systems are large and the parts are interrelated. And, indeed, the alternative is going to be that instead of filing multiple copies of one application each with their own claims, we will file them all in one application, and let the examiners sort out the inventions. And yes, that will be more work for the USPTO and us, and cost a lot more in fees (and, yes, I have gone over $10k in initial filing fees).

I think that part of the problem is trying to come up with a one size fits all solution. My brother working primarily in the mechanical areas has never filed a single application that turns into a dozen or two patents. In software, I have done it on numerous occasions. I am working on one now.

Some of the proposals have some merit. I can see the rational behind designating the most important 10 claims. Most examiners seem to only look at the independent claims anyway, and so this isn't going to be a hardship - though at some point they should have to examine the rest of them. But the better solution of too many claims would probably be to just charge more for them, in possibly an escalating fashion. But that would work against having to file a lot of claim sets in a single application, when the agency is going to presume double patenting when filed separately with the shared specification. And paying this is esp. aggravating since most of the extra claims are going to be restricted out anyway, and you have to pay for them again in the divisionals. (But, as I note below, money isn't the major objection, rather patent protection is).

I don't really mind doing some searching and making that available to the examiners. My worry is about estoppal, etc. What happens when I miss something? Will that invalidate the patent? The reality is that in my art areas, even with the publication of applications at (usually) 18 months, it is inevitable that a lot of prior art is going to be missed.

So, I don't mind moving more of the burden to the applicant and his patent practitioners. Rather, my worry is about actually losing the ability to get a patent on an invention or, after getting one, having it invalidated, for stuff that is, in the final analysis, primarily the fault of the USPTO. Throwing in that we can petition for relief doesn't really help, since petitions are arguably more discretionary than the appointment of Deputy PTO Director Margaret Peterlin was.
7.27.2007 1:49pm
PersonFromPorlock:
Incidentally, everyone here does realize patents are essentially useless, right? Since all a patent does is give you the right to sue someone for infringement, and since you already have the right to sue anybody for anything, all of the expense and time involved in patenting something could be avoided just by publishing the details of the 'something' on a dedicated website and treating that disclosure as the patent.

Allowing blog-style comments concerning the disclosure to be posted by anyone would serve very well in place of an examination of the claims or a search for prior art, give the patent holder a good idea if he could prevail in court and tell a potential buyer or licensee of the patent if it was worth pursuing.

Sure, there'd be lots of worthless patents. So what? They'd invoke neither cost nor effort.
7.27.2007 2:53pm
Stevethepatentguy (mail) (www):
Bruce:

I understand your concern. It is up to us, as patent attorneys, to make sure that our clients know what they are getting into when they file the application. It seems like more and more of my practice is in doing cost benefit analyses for my clients and talking them out of filings or into limited number of filings.

Costs and the burden on the applicant have been increasing since I started; I just don't see how the background of the Deputy Director is that big an issue.

Neurodoc:

You're right, I totally plussed!! Although I must admit I don't know what you are talking about.
7.27.2007 3:56pm
Tony Tutins (mail):
Because agency directors are usually picked for political reasons, their deputies, at least, should understand what's going on inside the agency so they can explain it to their displaced congressman boss. If you also pick the deputy for purely political reasons, you just push your substantive knowledge advisor further down the org chart. The learning curve is such that by the time someone has acquired usable knowledge, s/he's going to be turned out of office.
7.27.2007 4:53pm
David M. Nieporent (www):
Someone above suggested that expertise in patent work and in trademark work were likely very different and wouldn't translate.

While that is theoretically plausible, it does not work out in the real world. Many, if not most, patent attorneys do some trademark work.
Perhaps, though the reverse certainly isn't the case. But that misses the point of my comment. People who have experience in both have experience in both. But the statute doesn't require that; it requires experience in one or the other.

A patent attorney who wouldn't know a trademark from an aardvark is completely qualified under the rule; a trademark attorney who thinks patent refers to leather shoes is also completely statutorily qualified.

Why? If experience with patent practice is essential for doing the job, then the latter person is unqualified; if experience with trademarks is essential for doing the job, then the former is. Either both sets of experience ought to be required, or the job ought to be split in half.
7.27.2007 5:29pm
neurodoc:
Neurodoc: You're right, I totally plussed!! Although I must admit I don't know what you are talking about.

To be "nonplussed" is to be at a loss as to what to say, think, or do. Because you were not at a loss as to what to say about "the idea of a non-career patent or trademark lawyer leading the office," you appeared to be anything but "nonplussed" by it. I don't think it follows logically that someone who is not "nonplussed" must be "plussed," but if you say that describes your state of mind on this, then far be it from me to dispute you. Enjoy your "plussedness."

(BTW, I am told that the USPTO may be coming out with a new rule that will shake up a lot of people, though whether into "nonplussedness" or "plussedness" only time will tell.)

Stevethepatentguy, back when you were employed by the USPTO, was it a pleasant or unpleasant place to work? As an alumnus and now a practitioner, are you aware of any buzz about the USPTO as a place to work these days? I am told it is a most unpleasant place for professionals, with labor-management relations decidedly hostile there. Also, I am told that while Clinton's director of the USPTO (Q. Todd whatever) may have been appointed as a political favor to a certain Democratic constituency, he did a very good job, and that his Bush-appointed successor, the defeated congressman who had been part of the impeachment team (Rogan?), was totally unqualified and a disaster in the job. I have no first-hand knowledge of these matters and am just passing along what I have heard.
7.27.2007 5:42pm
Adam B. (www):
Prof Lederman: Thanks.
7.27.2007 7:13pm
Bruce Hayden (mail) (www):
One of the plaintiffs in the lawsuit, Greg Aharonian, runs his Patent News Service, which involves sending out email to his list of subscribers ever day or two with patent news. Over the years, much of it has been griping by both patent practitioners and by examiners. Also, he has a lot of gossip (yes, in the patent field). And, he runs a patent searching service aimed at busting software patents based on prior art that is in mostly ACM and IEEE publications, but not the USPTO database.

In any case, his latest news/gossip is that those new rules that I was railing against are expected to be published in August to become effective two months later in October.
I suspect that at least a few groups are planning to immediately file lawsuits in August to block the proposed changes under the APA, one suit from the big guys and/or one suit from the little guys. But if not, I and a few others plan to do so. PTO management's contempt for patent applicants, the imperial way they forced these changes with no basis in management or economics, cannot be allowed to go forward.

Now, the joint letter coordinated by David Boundy and sent to the OMB (www.bustpatents.com/DBattach.pdf) amply documents multiple administrative abuses and capricious falsehoods on which the rules changes are based. And discovery during a lawsuit should find even more - enough to justify a trial, if not win the trial.

So the question comes down to that of standing - are there patent applicants who have standing to file such a lawsuit? What follows is a rough draft of a standing argument I plan to use, and I welcome others to make use of these arguments for their lawsuits. Any comments and additional supportive caselaw - please send to me.
I frankly don't know about or really have an opinion on the "multiple administrative abuses and capricious falsehoods on which the rules changes are based".

He then goes on and discusses standing for a lawsuit to block the implementation of the new rules. I found it an interesting coincidence, given this thread. Listed are six limitations on standing:
1) Injury - must have suffered or imminently will suffer injury, a hurt that is concrete and particularized, not abstract.

2) Causation - there must be a connection between the injury, and the injuring factor and injuring parties.

3) Redressability - the court should be able to do something specific that heals the injury.

4) Prohibition of Third Party Standing - the plaintiffs have to be suing in their behalf, the injury has to be their's.

5) Prohibition of Generalized Grievances - a plaintiff cannot sue if the injury is widely shared in an undifferentiated way with many people.

6) Zone of Interest test - the plaintiff injury has to fall within the realm of appropriate statutes.
He thinks that
Four of these tests (2, 3, 4 and 6) are easily satisfied by any patent applicant who wishes to challenge the proposed rules - there is a direct connection between the new rules and PTO management that is implementing the new rules (#2), the court can heal the injury by ordering the PTO to abandon the new rules (#3), the patent applicant is suing in his behalf (#4) and all of this falls under the APA and 35 USC and Article I (#6).
Of the other two (1 and 5), I think that proof of actual injury is likely to be the hardest to show. The basic problem here is that the real harm that the proposed rules are likely to cause will be down the road, may even 5-10 years from now. For example, the new searching requirements seem to require that the applicant guess at the class and subclass of the invention. But he is likely to be second guessed by the USPTO, at multiple times during prosecution, and even after allowance. Then, the patent is litigated, and part of the defense is improper searching due to using the wrong class/subclass. By the time that a patent is invalidated for this reason, it is likely to be 10 or so years from the time the applicant filed is original search report (based on average prosecution times and average maturation before litigation).

Similarly, the major danger I see from the continuation limitations is in losing the right to a patent because the USPTO forced an applicant to continue based on examination irregularities.

So, the basic standing problem there is that while it is probably fairly likely that some applicants will be seriously harmed by the changes, it is likely impossible right now to pick which applicants will be so harmed, and any such harm will be at some unknown time in the future.

Getting back to Eugene's original post, I would think that in light of this, the case against the USPTO for the appointment of Deputy PTO Director Margaret Peterlin for her lack of statutory qualifications would be even more suspect on standing grounds.
7.28.2007 11:21am
Marc J. Randazza (mail) (www):
A commenter made a point that the Deputy Director could have experience in either patent or trademark law. Another commenter said that he wasn't advocating dividing the USPTO. But, perhaps that is precisely what the doctor ordered.

Lumping the two together is just plain illogical. (See here).

With respect to Peterlin's qualifications: My research suggests that she is bright. Brilliant even. But someone unqualified to file a trademark application (or a patent application) is certainly not someone who should be deputy director of the USPTO. She's more qualified to be on the Supreme Court than at least one of the justices, so there is a place for her in the administration. This just isn't that place. (my post on the issue here).
7.28.2007 11:30am
Bruce Hayden (mail) (www):
I understand your concern. It is up to us, as patent attorneys, to make sure that our clients know what they are getting into when they file the application. It seems like more and more of my practice is in doing cost benefit analyses for my clients and talking them out of filings or into limited number of filings.
I don't disagree with this at all. But that doesn't mean that I can't or shouldn't take an advocacy position in forums such as this. Indeed, I might suggest that advocating for example against the upcoming rule changes might make me better able to advise clients about the problems we need to steer around.

Let me add though that my position here seems to be a minority view among at least patent attorneys. I have on occasion gotten in trouble for playing devil's advocate, and been accused of not being a team player, of being a nay sayer, etc. But in the end, I think that my questioning has most often had positive results.

So, I am already advising bigger clients to start anticipating some of the possible negative effects of the rule changes - without the heated rhetoric you see here, because there my role is adviser and not advocate.
7.28.2007 11:36am
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7.31.2007 10:09am