Humorless disclaimer: Nothing on this blog is meant to constitute legal advice. This blog doesn’t create an attorney-client relationship. This blog is not soliciting business. The accuracy of statements made in this blog is not guaranteed. The views expressed herein are those of the authors only.
The CAFC's web site has a new look, and in
that department it's definitely an improvement over the old CAFC site - the new look is much classier. It also appears to me that it provides more
information than the old site, though I haven't accessed an archived version to
compare. I'm not yet sold on the new format
for displaying decisions, but I may yet come around to it. You used to be able to pull a list with 6
months' or a year's worth of decisions at a time, based on the year the
decision was given, as well search by party name or case number. You can still search by name or case number,
but you can't search by year – you can go back a day, a week, a month, three
months, six months, a year, or list every decision since October 2004. But you can't list, say, only decisions from
the first half of 2005. Moreover, with
the new format, there are at most 50 decisions per page – that's 122 pages (and
counting) to possibly sift through. On
the other hand, the new search engine doesn't need to be told to look for
partial words – when I plugged in "Fuji" in the hopes of finding a
series of cases involving Fujifilm and reconstructed cameras, all the decisions
I was looking for (since 2004) came up.So
maybe the new format will prove easier to use than the old one.
Some readers may
recall last summer's CAFC decision in Taylor v USPTO. That was the case where Mr. Taylor, acting on
advice given by the USPTO over the phone, paid a maintenance fee for his US 5,1787,701 with
a check that was $10 short of the requisite amount. The USPTO cashed the check, never informed Mr.
Taylor about the shortfall, then deemed the patent to have lapsed for failure
to pay the maintenance fee.
Mr. Taylor only discovered
this several years later, when he went to pay the next maintenance fee. His efforts to have the patent reinstated were
rebuffed, as were his efforts to get his money back, in part on the grounds
that he didn't pay the $200 petition fee, a fee he said he couldn't pay because
he was indigent.So he sued the USPTO pro se, asserting it had
misappropriated the $1030 had paid and seeking $1,000,000,000 in damages for
the patent he no longer had.
The district court
dismissed the case for failure to state a claim upon which relief could be
granted. On appeal, the CAFC politely told
the USPTO to quit being a bunch of anally retentive weenies, and remanded the
case to the district court with instructions to "enter judgment in
accordance with this opinion", including ordering reinstatement of the
patent upon payment of all outstanding maintenance fees.
But there's more to
the story. In December 2009, on remand, per
the CAFC's instructions, the District Court ordered the USPTO to refund the
$1030 and to reinstate the patent upon payment of all outstanding maintenance
fees. That didn't satisfy Mr. Taylor,
who wanted the billion dollars he'd asked for.So he again appealed to the CAFC, asking it to reopen the proceedings
regarding his claim for $1B in monetary relief.
But whereas in the
previous round, the CAFC had been indulgent toward the indigent Mr. Taylor, this
time it unsurprisingly showed no such leniency. In a decision issued
last week, the CAFC ruled that since Taylor
had failed to raise the damages claim in his appeal of the original District
Court decision, he had forfeited that claim.
Interestingly, Mr.
Taylor apparently still hasn't paid the maintenance fees, and the USPTO still
hasn't refunded his $1030. PAIR lists
the patent as still being involved in court proceedings, and the maintenance
fee page lists the patent as having lapsed in 2001. Do you think the USPTO will refund the money
with interest? Or credit the interest
toward whatever Taylor
still needs to pay?
II
The Israel PTO
imposes a fee for making changes in the Patents Register. This includes not only changes in the identity
of the applicant/patentee, but also changes in the address of the applicant or
the attorney. Seems a little ridiculous
to make an applicant pay for changing counsel.It takes the ILPTO secretary a few minutes at most to record the change.
The requirement seems especially silly
when one realizes that until the patent is granted, it's not in the Register.
Be that as it may, a
colleague reported to me that he took over representation of an application and
paid the requisite 227 shekel fee online on June 16. (Current exchange rate is about 3.88
shekels/dollar.)But unlike in the
USPTO's online filing and payment system, such payments aren't recorded at the
ILPTO until the receipt is actually mailed by the applicant or attorney to the
ILPTO. In this case, the inventor only
signed the power of attorney on June 30. By the time the POA and payment receipt had arrived
at the ILPTO in July, the fee had gone up.
By a shekel.
That's an increase of less than 25 cents in people money.
So the ILPTO mailed
a letter to my colleague, telling him that his payment was a shekel short.
The stamp alone cost
1.7 shekels.I don’t know what the
secretary's time and envelope cost. I do
know that my colleague's time to pay the outstanding shekel and send the
receipt to the ILPTO will be worth somewhat more than a shekel.
III
I guess it's
comforting, in a perverse way, to know that patent offices on both sides of the
Atlantic can be pedantic. It's confirmation that when they send an
unnecessary OA because they're being overly formalistic, they're not picking on
me or my client. That's just the way
they are.
The denouement of
the Taylor case
also shows that just because the USPTO is wrong doesn't necessarily mean that a
solo inventor is right.Sort of the
patent world corollary to "Just because you're paranoid doesn't mean
they're not out to get you."
In the previous
post on this blog, I discussed the Commissioner’s proposal to increase the
burden on patent applicants, by requiring them to provide not only copies of
prior art cited during the examination of corresponding cases elsewhere, but
also copies of the foreign office actions citing that art and the applicants’
responses to those OAs.I noted that
there is no legal basis under which the Commissioner can impose such a
requirement.
This
post ignores the lack of legal basis for the Commissioner’s proposed
requirement, and deals with some of the policy deficiencies of the
Commissioner’s proposal.
Ostensibly,
the proposed requirement will make substantive examination more efficient.That, at least, is the reason proffered by
the Commissioner for imposing the requirement.But it’s not clear to me how that’s so, for several reasons.
First,
as it is, the law currently imposes a duty of candor on applicants.Israel examiners are capable of reading
prior art publications for themselves and drawing their own conclusions.Moreover, all EPO prosecution files and most
US prosecution files are currently viewable online.Thus Examiners can access corresponding search reports and OAs if
they so choose.
Second,
the law varies across jurisdictions.Non-obviousness in the USA, while generally paralleling the EPO’s
inventive step requirement, is not exactly the same.There are situations in which publications that can be cited
against both novelty and non-obviousness in the USA may only be cited against
novelty in Europe, and aren’t citable at all in Israel.
To give
an example, suppose X files a U.S. provisional application on January 1, 2001,
disclosing and claiming ABC, and files a PCT claiming priority from the
provisional on January 1, 2002.X’s PCT
publishes on July 1, 2002, and eventually he files national phase applications
in the USA and Europe, but not in Israel.Meanwhile, on July 1, 2001, Y files a PCT application also disclosing
and claiming ABC, but without a priority claim.Y eventually files national phase applications in Israel, the USA
and Europe.
In the
USA, X’s PCT may be cited as prior art in assessing both the novelty and
non-obviousness of Y’s application.The
fact that X’s PCT was published after Y’s filing date doesn’t matter– see 35
U.S.C. §102(e) and last week’s CAFC decision in In re Giacomini.But in Europe, the fact that Y’s filing date
precedes the publication of X’s PCT means that X’s PCT can be cited only
against the novelty of Y’s application, and not inventive step.In Israel, X’s PCT is not citable at all
against Y’s application: since X’s PCT published after Y’s filing date, X’s PCT
doesn’t count as prior art under Israel law; and since X didn’t file a national
phase application in Israel, there’s no basis to say that X has a prior right
under Section 9 of the Israel statute (which basically says “first-come,
first-served” with regard to rights in claimed inventions).
In such
circumstances, how could it possibly make Israel prosecution more efficient to
IL examiners with copies of OAs from the USA and Europe?
Third,
by creating an additional reporting requirement, the Commissioner would also be
creating more opportunities for applicants to make innocent mistakes, and for
adverse parties – which as often as not in Israel are free-loaders looking to
capitalize on Israel’s liberal pre-grant opposition regime – to jump on those
mistakes and assert bad faith prosecution and the like.Given the ILPTO’s propensity for occasionally
falling for such arguments, that doesn’t bode well for applicants.
Moreover,
the increased possibility of making a mistake engendered by the proposed
reporting requirement is likely to lead to applicants deciding to err on the
side of caution in what they report.Think of the McKesson
decision in the USA, which has led to the absurd situation of applicants
providing the USPTO with copies of OAs issued by the USPTO in other related
cases – even when it’s the same examiner examining both cases!That doesn’t add to prosecution efficiency,
it bogs it down, for both applicants and examiners.Just because the US has gotten this wrong doesn’t mean Israel has
to follow the USA’s lead.
Finally,
not only is the proposed reporting requirement unnecessary and detrimental for
the reasons explained above, but it is likely to also impose enough of a burden
on applicants that some will rethink filing in Israel.The new reporting requirement will require
more paralegal and attorney time on their end, as well as the costs imposed by
local patent practitioners.Suppose a
large company presently files 50 patent applications in Israel annually.That’s a significant amount of additional
cost to impose on such a company.But
contrary to what some locals seem to think, the patent budgets of large foreign
corporations, to say nothing of smaller companies, are not elastic and
infinite.Israel is generally not
important enough to them that they are willing to spend whatever it takes to
get a patent in Israel.So if the cost
of patenting in Israel is raised sufficiently high, those applicants will
simply reduce their number of Israel filings, or stop filing here
altogether.
In
sum, aside from the ultra vires nature of the proposed reporting
requirement, even if the Commissioner was empowered to impose such a
requirement, he would be ill-advised to do so.It’s unnecessary and instead of leading to prosecution efficiency will
lead to inefficiency or even a reduction in patent filings in Israel.
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