Today, I got another restriction requirement in a US National Stage application. We entered the national stage under 371, and the Examiner applied the correct Unity of Invention rules and everything.
So why am I pissed off?
Because all the claims of this application HAD ALREADY BEEN SEARCHED IN THE INTERNATIONAL STAGE. The only amendments I made upon entry in the USPTO were to remove multiple dependency. Otherwise, the claims of the US application are identical to those of the PCT.
The application has, effectively, ALREADY BEEN EXAMINED. Why is this Examiner creating more work for himself? It MAKES NO SENSE. He's costing my client money that they shouldn't have to spend. He's dragging out the prosecution process. FOR NO REASON.
Sure, maybe he gets the case off his desk quickly by issuing a restriction. Except NOT, because he had to go through the work to draft the restriction requirement (and election of species - did I mention that there's an election of species requirement)? It would have been faster just to pump out an action on the merits based on the IPER. He's got the art. He's got the form paragraphs. A reasonably bright fifth-grader could write that office action.
Who asked for this? Who thought this was a good idea? It's not like Examiners are sitting around with nothing to do. Last I checked, it still takes more than the target 14 months for the USPTO to pick up a case.
I checked the MPEP, and do you know what it tells Examiners to do in this situation, in US national stage applications where no unity of invention objection has been raised in the international phase?
NOTHING.
It doesn't say that the U.S. Examiner may substitute her judgment for that of the international examiner. It doesn't say that she shouldn't. It doesn't provide ANY GUIDANCE AT ALL about how to deal with what, in my experience, is VERY common situation.
Yeah, it generates fees, by forcing applicants to file multiple applications. But no, that's circular, because the extra fees go to pay examiners to examine all of those extra applications. If they didn't have so many extra applications to examine, they WOULDN'T NEED ALL THE EXTRA FEES.
ugh.
Is it time to start drinking yet?
The U.S. Trade Representative just released a report listing countries that have shaky IP regimes. The list includes, among others:
Argentina
Chile
Venezuela
Bolivia
Brazil
Colombia
Ecuador
Peru
Let's compare that to a map of South America:
Wow.
Maybe more interesting, under the circumstances: the South American countries that didn't make the list:
Guayana
Suriname
French Guiana
Paraguay
Uruguay.
Would not have predicted that. Anyone making a lot of patent filings in French Guiana?
BTW, also on the list of problem countries for IP:
Canada.
Go figure.
The Federal Circuit in Nichia v. Everlight has just (arguably) made it even harder to obtain a permanent injunction in a patent case.
What is the patent right again? Oh yeah - this:-
"It is no longer debatable what the patent right is. As I just explained, the Supreme Court told the country in 1852 in Bloomer v. McQuewan that it consists altogether
in the right to exclude others – and that is all it is. It is not an
ambiguous “exclusive right”; it is a simple right to exclude others.
Period."
An Interview with Judge Giles S. Rich, 9 FED. CIR. B.J. 75 (1999). (Hat tip to Prof. Crouch)
Only somebody who was high would write this this way:
35 USC 102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.
--For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application --
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
Wow.
OK, let's unpack this a little bit.
This section says a patent or application is prior art (1) if paragraph (2) does not apply, when X; or (2) when Y. That's just crazy. You have to get all the way to then end of section (d)(2) to figure out if (d)(1) applies. There's no need to structure it this way: They could just as easily say A patent or application is prior art (1) when Y; or (2) if Y does not apply, when X. Although it's remotely possible that the people who were drafting this were equipped with computers without a backspace or delete key, I think it's much more likely that they were high. They started writing, and the words poured forth. I'm guessing it was meth - hypergraphia is a known side-effect of excessive consumption of uppers.
They could have said it this way:
For purposes of this statute, the effective filing date of a patent or application is the earliest of (1) the actual filing date of the patent or application; or (2) the earliest filing date of a prior application to which the patent or application is entitled to claim priority.
We cut out the listing of the sections under which you can claim priority, which is exhaustive and so is unnecessary. We also cut out the reference to an "application that describes the subject matter," which is subsumed within the concept of entitlement to claim priority, and so is likewise superfluous.
Meet Hope Shimabuku, USPTO Reg. No. 57,072, your new Director of the Dallas office of the USPTO. Ms. Shimabuku is a mechanical engineer who comes the USPTO from Xerox; her prior employment includes stints at RIM, Dell, and P&G, and had a couple of law firm gigs. She's a graduate of UT (Austin) and SMU law school (don't mess with Texas). Details at Dallas News.
Interesting choice to pick somebody from outside the USPTO with clear regional ties.
"Copyright Law Was Not Created To Protect People From Fatwas." Link here.
Interesting and cogent primer on the DMCA.
Link here.
Issues:
- statistics are based on increased suits by "Non-Practicing Entities" without distinguishing between the different flavors (like, for example, universities as opposed to "patent monetization entities").
- increased suits are noted, without any analysis of where this is coming from. Maybe increased economic activity leads to more infringement, which provokes more suits? No way to tell from these data.
- And anyway, why are patent suits inherently evil? What are patentholders supposed to do, ask nicely? I mean, of course they are, but when the infringer tells them to pound sand, what then?
Should probably have added quotes, like this:
The "Patent Troll" "Problem" is Getting "Worse."
