3 ms·

I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough se

by pxmpxm 4y ago

I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough search are the people filing or defending themselves against the patent. And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. I would posit the better solution is curbing overly broad/abstract patent language that can be used to litigate anything and anywhere - and you can use patent trolls to do this work for you: Pretty much any NPE patent portfolio will work as a great benchmark for what not to allow, as they go out of their way to acquire poorly-examined patents with the exact characteristics i mentioned.

btrettel 4y ago
> I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough search are the people filing or defending themselves against the patent. And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. While I agree with you that multiple stakeholders are incentivized to do thorough searches, not everyone agrees on that, and those stakeholders rarely ever do thorough searches. People aren't Homo economicus. Applicants are required by law to provide prior art on an IDS form. Usually that prior art is close but not close enough. And almost no one submits third-party prior art. I've never once received a third-party prior art submission. And as I said, not everyone agrees that these folks are incentivized to do good searches. For example, many patent attorneys recommend against doing patent searches for various reasons. > I would posit the better solution is curbing overly broad/abstract patent language that can be used to litigate anything and anywhere I strongly agree that enablement requirements should be higher. My understanding is that would require a change in the law, which would make this much harder than increasing examination time. And don't think that enablement rejections will take a lot less time than prior art rejections for examiners. Attorneys love to argue that sort of stuff, so rejections which are basically arguments are often time consuming. A prior art rejection can leave a lot less wiggle room for attorneys. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
patentatt 4y ago
> And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. You'd think so, but standard operating procedure for most patent prosecution is to intentionally not perform a prior art search. If you do find something relevant, you have to disclose it in your IDS. So let's say you pop in a few search terms into google patents, and there's ten thousand hits. You know only a few are relevant, but you don't know which few. And if you don't submit the relevant reference that was on page 99 of those search results, your patent could be invalidated in litigation some day because it could be construed that you were hiding that reference from the examiner. So you might think that you should just submit all 10k references? Wrong again, it could look like you're trying to bury some super important reference in a sea of garbage. So by opening one browser tab and typing in a couple of search terms, you've essentially shot yourself in the foot one way or another, and any patent that ever is issued from your search will have a target on it's back forever. So, most patent attorneys will ask the client for relevant references to cite in the IDS and have a standard practice to not perform any prior art searching for prosecution purposes. Patent attorneys are a paranoid bunch.

by pxmpxm 4y ago

btrettel 4y ago

> I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough search are the people filing or defending themselves against the patent. And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. While I agree with you that multiple stakeholders are incentivized to do thorough searches, not everyone agrees on that, and those stakeholders rarely ever do thorough searches. People aren't Homo economicus. Applicants are required by law to provide prior art on an IDS form. Usually that prior art is close but not close enough. And almost no one submits third-party prior art. I've never once received a third-party prior art submission. And as I said, not everyone agrees that these folks are incentivized to do good searches. For example, many patent attorneys recommend against doing patent searches for various reasons. > I would posit the better solution is curbing overly broad/abstract patent language that can be used to litigate anything and anywhere I strongly agree that enablement requirements should be higher. My understanding is that would require a change in the law, which would make this much harder than increasing examination time. And don't think that enablement rejections will take a lot less time than prior art rejections for examiners. Attorneys love to argue that sort of stuff, so rejections which are basically arguments are often time consuming. A prior art rejection can leave a lot less wiggle room for attorneys. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)

patentatt 4y ago

> And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. You'd think so, but standard operating procedure for most patent prosecution is to intentionally not perform a prior art search. If you do find something relevant, you have to disclose it in your IDS. So let's say you pop in a few search terms into google patents, and there's ten thousand hits. You know only a few are relevant, but you don't know which few. And if you don't submit the relevant reference that was on page 99 of those search results, your patent could be invalidated in litigation some day because it could be construed that you were hiding that reference from the examiner. So you might think that you should just submit all 10k references? Wrong again, it could look like you're trying to bury some super important reference in a sea of garbage. So by opening one browser tab and typing in a couple of search terms, you've essentially shot yourself in the foot one way or another, and any patent that ever is issued from your search will have a target on it's back forever. So, most patent attorneys will ask the client for relevant references to cite in the IDS and have a standard practice to not perform any prior art searching for prosecution purposes. Patent attorneys are a paranoid bunch.