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Inactive patent lawyer here (these days my practice is in other areas). 1. This bill doesn't appear to address Alice/Mayo unpatentability under 35 USC § 101. h
by dctoedt 2y ago
Inactive patent lawyer here (these days my practice is in other areas).
1. This bill doesn't appear to address Alice/Mayo unpatentability under 35 USC § 101. https://www.congress.gov/bill/118th-congress/senate-bill/2220/text https://www.congress.gov/bill/118th-congress/senate-bill/222...
2. My concern is that this bill seems to inappropriately raise the evidentiary bar for a patent challenger to prove invalidity in an inter partes review in the USPTO:
- Existing law, at 35 USC § 316(e) says a challenger in an IPR must prove invalidity by a preponderance of the evidence. https://www.law.cornell.edu/uscode/text/35/316 https://www.law.cornell.edu/uscode/text/35/316
(In a court challenge to validity, the Supreme Court has ruled that invalidity must be proved by clear and convincing evidence, the highest standard in civil litigation, just short of beyond a reasonable doubt.)
- Section 4 of this amendment, when it comes to issued claims, would raise the IPR challenger's burden to clear and convincing evidence. For new claims, the challenger would still have the burden of proof, but by a preponderance.
Both standards are bad public policy, because in most cases a single, very-busy patent examiner is in effect making national industrial policy — and granting the patent applicant a nationwide monopoly on the claimed subject matter — all by his- or her lonesome after doing a prior-art search; the applicant must disclose material information known to him/her but is under no obligation to do a search. That's been the law for a long time.
It'd be as if a graduate school made a rule that a Ph.D. candidate must be issued the degree unless his (or her) dissertation committee does a literature search and shows that the candidate's research wasn't sufficiently novel. (As I understand it, every reputable Ph.D.-granting institution requires the candidate to do a literature search to demonstrate novelty.)
But of course it's worse than that, because — unlike a new patent holder — a newly-minted Ph.D. can't weaponize his- or her dissertation to try to "extract" royalties from other researchers.
- zonethundery 2y ago1- It's PERA that changes the alice/mayo test. PREVAIL is the old STRONGER Patents act that is introduced every Congress. 2- Yeah, the one 'reasonable' complaint of IPR critics is the different evidentiary bar for litigation vs IPR. IANAL but it's difficult to find a member of the patent bar outside of pharma/npe's that supports either bill.
- AlbertCory 2y ago> the patent bar outside of pharma/npe's that's it exactly. Pharma really should have its own patent regime, or at least, software & pharma should not have the same one.
- derf_ 2y ago> (As I understand it, every reputable Ph.D.-granting institution requires the candidate to do a literature search to demonstrate novelty.) It is also worse than that, because for most dissertations, your committee is generally going to be more widely-read than the candidate, and have discussed the topic with them for years. Although the candidate may have more specific knowledge by the time they are finished writing the dissertation, the committee is going to have much broader knowledge of the field in general, and is pretty likely to be aware of the relevant prior art anyway. A closer analogy would be saying the Ph.D candidate must be issued the degree unless a randomly chosen undergraduate can show the research wasn't sufficiently novel.
- dctoedt 2y ago> A closer analogy would be saying the Ph.D candidate must be issued the degree unless a randomly chosen undergraduate can show the research wasn't sufficiently novel. That's not correct: Patent examiners are hired for their technical background, they're put through a four-month academy that includes their technical areas, and they get regular refresher training in recent developments by attendance at industry conferences, etc. https://2017-2021.commerce.gov/americanworker/work-based-learning-world-class-patent-examiners.html https://2017-2021.commerce.gov/americanworker/work-based-lea...
- Dracophoenix 2y agoI don't mean to digress significantly from the topic at hand, but what impact did you witness after the US switched from a first-to-invent to first-to-file system?