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Good day and welcome to the Patently Strategic Podcast, where we discuss all
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things at the intersection of business, technology and patents. This podcast
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is a monthly discussion amongst experts in the field of patenting. It is
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for inventors, founders and IP professionals alike,
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established or aspiring. And in this month's episode, we depart from
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our normal format into a deep dive style investigative documentary into
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why these good folks gathered
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to demonstrate in front of regional USPTO offices all across the country
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on the ten year anniversary of the passage of the America invents act. The voices
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you heard are those of inventors who, unfortunately found themselves on the receiving
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end of the unintended consequences of the America invents act and its
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most unfortunate progeny, the PTAB or Patent Trial and Appeal
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Board. It's eerily fitting that we're covering this topic in our Halloween episode.
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The PTAB has another name among the inventor community and is far
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less affectionately referred to as is a patent death squad. The mere
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mention of it will send chills down the spines of most inventors.
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It should come accompanied by a compulsory maniacal laugh backed
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by an ominous thunderclap with
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an estimated patent and validation rate of 84%. This group
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delivers far more tricks than treats for unsuspecting inventors. You heard
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that right? No need to rewind. According to US inventor,
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84% of granted patents, patents that once went
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through a rigorous process of examination that come up for challenge
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in front of the PTAB are invalidated invalidated by
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the sibling division of the same patent office that previously issued the
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patent. The inventors and entrepreneurs at the rally we attended and countless
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others like them in cities all across the country, all from diverse backgrounds
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with different stories, all have one thing in common, and that is their shared
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belief that the AIA has crippled innovators and created a decade
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of stolen dreams, ruining the lives of countless inventors and shutting
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down numerous startups in favor of big tech and multinational corporations.
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Inventors are not only the real engine of our economy, but they are also the
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reason why we do what we do here at Aurora. This is a complex issue
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with high stakes involving the people who matter most to our business and what the
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world will look like for our kids. So we can't think of a better use
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of a podcast episode than to lend a voice and hopefully shine a
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light on the key issues and some potential solutions. We're going to break this
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down and look at it through a wide array of personal perspectives from inventors,
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patent practitioners, and even a former USPTO patent examiner.
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In researching this topic and talking with so many impacted individuals,
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it became clear that there's a very big picture missing from all of its coverage,
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and that picture only comes into focus when you bring these perspectives together.
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In addition to perspective, we first need some context before we
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dig more into the PTAB in these rallies, it's important to Zoom out, travel back
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in time to 2011. Take a moment to first understand broadly what
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the AIA introduced. Perhaps for better and for worse for
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that, I sat down with Ashley Sloat, President and director of patent strategy here at
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Aurora. So, Ashley, I know this could be a huge topic of its own,
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but could you, at a high level lightning around fashion, explain what the AIA is,
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what its goal was, and how it changed patent Law On September 16,
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2011, the Lahesmith America and Vents Act, also known
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as AA, or the Patent Reform Act of 2011,
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was signed into law with the stated goal of modernizing America's
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patent laws and harmonizing the US with the rest of the world. It's certainly one
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of the biggest changes to US patent law in the past half century.
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So the biggest change, probably, I guess, in the minds of many listeners,
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is that the AIA switched the US patent system from a first to
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invent system to a first inventor to file system, which largely
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aligns United States with the rest of the world. Under this new system,
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the date the patent application is filed with the patent office instead of
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the actual date of invention in your notebook determines who wins the race
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to patent the invention. This means that the practice of mailing your invention,
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which I know many of you did to yourself, so it has a postmark date
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to prove invention date. This practice no longer applies as
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a result of AIA becoming the law of the land. We heavily encourage vendors
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to file early, and often you can do a provisional patent application, which only
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pens for one year, and that application can then later be converted
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to a full US Patent Application or International Patent application.
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Another item that changed was Prior Art Types Forum, Public Uses,
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or Sales. The AIA also redefined the types of activities that may
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be used to reject a patent application. For example, under pre
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AIA law, a public user sale of a claimed invention prior
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to patent application filing was only considered problematic
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activity if it occurred in the United States, and then this activity could
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be used to reject your patent application. However, under the AIA,
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public use or sale anywhere in the world, not just the US could
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prevent later patenting. Another provision that changed with AIA was assignee
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filing. Under pre AIA, only inventors could apply
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for a patent under the AIA. An applicant,
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for example, a company as the owner or assignee of an invention may
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file a patent application on behalf of the inventors. During the
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patent application process, an inventor is still required to execute a declaration indicating
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that she indeed was an inventor, but this can be bypassed by
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the applicant in various situations. Furthermore, regional patent
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offices are now open as a result of AIA. These regional offices
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include places such as Dallas, Denver, Detroit, and San Jose.
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Prioritized examination was also made available as a result of AIA prioritized
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examination, also known as Track one, allows inventors
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to accelerate the examination of selected patent applications
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through payment of an extra fee to the Patent Office. Another change that
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was brought about by AIA was that the PTO is now
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in charge of its revenue, so the AIA gave
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the PTO the ability to set its own fees and create an operating reserve.
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We should all breathe a big sigh of relief since the USPTO is finally able
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to invest in much needed information technology upgrades, hire more
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examiners, and provide additional examiner training. And lastly,
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and of course, a significant subject of discussion for
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this podcast is that it also brought about the PTAB and
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IPRs, which enables granted patents to be challenged
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by members of the public. This gave birth to the Patent Trial and
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Appeal Board, or the P Tab, to oversee all postgrant proceedings,
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replacing its predecessor, the Board of Patent Appeals and Interferences.
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Okay, so definitely some positives and need to change them there.
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But PTAB there's that word again,
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the PTAB was created with the goals of providing a faster and less costly
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alternative to court based patent infringement suits, weeding out patents that shouldn't have
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been issued in the first place and reducing the amount of patent litigation brought on
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by patent troll syndrome. This was to be accomplished via an AIA introduced process
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called Inter Parties Review, or IPR, in which granted patents
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can be challenged by any member of the public, most likely coming from a patent
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owner's competitor or defensively by someone being sued for infringement. In theory,
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this all sounds constructive, but as they say, the difference between in practice
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and in theory is often far greater in practice than in theory.
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So why do inventor advocacy groups refer to the passage of the AIA is
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the worst event in history for American inventors? According to Josh
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Malone, policy director at US Inventor, the organ that sponsors these
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rallies, quote, the PTAB was sold to Congress as an easier,
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faster and fair alternative to litigation for patent disputes. However, what it
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became instead was a powerful tool that a large infringer could use to challenge
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the validity of any small inventor's patent in order to use the inventor's
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technology royaltyfree or to prevent the inventor's disruptive technology from
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competing in the marketplace. We spoke with Dan Brown about this at the rally in
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Detroit. Every space shuttle that's ever gone up his use of technology process he created.
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Dan is the owner of 40 utility patents, including the Bionic wrench,
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was elected to the National Academy of Inventors and is serving as the inventor rep
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on the Patent Public Advisory Council, working with the Patent Office,
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suffice it to say Dan has some skin in the game. I think fundamentally,
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the AIA had a number of things in there harmonizing the 20 years,
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there were a lot of things that the Patent Office put into place. But the
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biggest problem is the PTAB and the lack of due process. With the PTAB and
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the David Goliath situation, we have in this predatory infringement
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process where the PTAB was supposedly supposed to make it easier
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and less costly to litigate. For small inventors. It gave the
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infringers more arrows in their quiver to go after them. And so it's
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totally unintended consequences. And people recognize that now. So Congress
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has to stop this infringement business model.
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This is all happening with great lethal efficiency. According to
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US inventor. As of June 24 this year, the PTAB
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has invalidated 84% of the 3105 challenged
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patents that it has received. The PTAB has become a powerful anticompetitive
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tool for large companies. The same companies that is small,
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innovative startups use the patent system to change the world.
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Companies like Apple, Google and Microsoft topped the list of
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PTAB challengers. These companies have massive political
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clout, and whether intended or not, AIA is being wielded with the
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effect of a deeply a protectionist law. We spoke with Bob Schmidt about
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this. Bob is the cochair of the Small Business Technology Council.
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He's built five companies and has 40 patents to his name.
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This is very simple. These are the lessons that one learns in
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elementary school. The reason you build your clubhouse up
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in a tree is you can have the rope ladder that you can pull it
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up so the little kids and the girls can't come up. And that's
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what the America Invents Act is all about. It's big tech that went through this
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themselves protected themselves with the patent, but now
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they want to make sure nobody else comes along and boots them out.
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The net effect is a clear path to endorse piracy by
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using the patent office against inventors. We have this cannibalistic system that
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as soon as a competitive advantage arises from one of our designs,
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the pirate sweep in and steal
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your pattern and put you into a meat grinder that requires
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a tremendous amount of money because it's a David and Goliath battle, and it's
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just not fair at all. There's no justice in the justice system. So what
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about the stated legislative goal of weeding out bad patents that shouldn't have been
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issued in the first place? The reality is we have this concept of
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obviousness that kills patents. And I believe right
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now the obviousness at the patent office to get a patent,
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which is tough. It's not easy to get a patent. I've been going back and
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forth for years, and those examiners are tough that
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same process to get it once you get it is a different one that's
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being used when they take them away. Now, that doesn't make
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any sense to me. We have this hypocrisy or this schizophrenic
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organization that's giving patents and taking them away. Now the PTAB was created
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to get out away from patents that were bad patents. And I'll tell you,
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there are some bad patents out there. We would be foolish not to acknowledge it,
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but the system has been gained so that they're using
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that same system to take good caps away for
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me to get in the weeds on intellectual property. Grain factors
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are secondary considerations for obviousness you get a product in the
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market and it has success, I think, by definition, that was not
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obvious because it would have been in the marketplace before. But now
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at the PTAB, they're creating these obvious objections by
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going back and finding other art. And it's called hindsight reconstruction
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bias. Making these arguments that you should lose it, even though these products have
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gone in the market and competed and won makes no sense
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to me, and we need to reconcile it. We'll tackle the difficulty of getting
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a patent in just a bit, but it's worth underscoring that in practice,
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hurt thinning is not what's happening. Instead, IPRs in the PTAB
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are being used to invalidate some of the best US patents. The answer of why
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this is happening is simple economics. The cost to file and prosecute an
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IPR is averaging around a half million dollars. What company could possibly afford
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or justify that cost for anything but against a significant competitive
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threat. Data published on Professor Dennis Crouch's patent Leo shows
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that most patents tangled up in IPRs are also involved in litigation
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or licensing. Patents involved in litigation or licensing are considered top tier patents
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and make up only a very small percentage of granted patents back
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to our inventors. While in Detroit, we also learned that the power
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and leverage of the PTAB extends well beyond just the decisions of its
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judges more on them. In a bit, the mere threat of being IPRR and
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the crushing costs that come with it are enough to extinguish the licensing
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dreams and patent assertion rights of many inventors. Because,
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like Bob says, Why pay for it? You can just steal it. And so that's
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what they do when you attempt to stop a large Corporation from infringing your
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patent or attempt to license it to them. They often instead try to use the
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PTAP to invalidate the patent. We also had the pleasure of speaking with Kip.
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Izzoni Doyle at the Detroit rally. Kip is the inventor of the card shark wallet,
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skin and the author of the upcoming book Blood in the Water. America's Assault on
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Innovation. Listen in as Kip shares her chilling experience.
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So for me, I was on the sideline watching
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my own parade go by. All these infringers have been infringing blatantly
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or efficiently my patent. So every
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single time I find an infringer, I have to alert my team,
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and then we have to do a very delicate dance of cease
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and desist so that we don't get IPRED because the minute that happens,
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it's over. And so it's
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affected me terribly. I've left hundreds of thousands,
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if not millions, on the table because I've been told if you pursue
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me, if you pursue our company, we'll IPR you because we'll never spend the money
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on a license from you little inventor.
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We'll spend the money on the IPR so that you're out of the game.
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Do you have any direct experience with the PTAB, or has
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it been largely trying to avoid it? For me, it's been largely trying to avoid
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it. However, I've had every form of threat you can imagine.
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I was threatened with an IPR by a very powerful
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guy who was his wife owned the company.
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He is a big head of a studio out in La,
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and he just has all the money in the world. And he just said,
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oh, no. He came over and ripped my Pat and said, I will IPR
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you before I spend a day on.
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Let's talk for a second about the financial impact of being on the receiving end
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of an IPR. According to the American Institute of Patent Law Association,
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a patent defense at the PTAB will cost from 4000 $800,000.
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This is still less expensive than the district courtbased journey, but unfortunately,
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a single patent can have many IPR styled against it, each costing that
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amount. We mentioned Josh Malone earlier before helping to lead the charge at
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US inventor. He invented a bunch of balloons. His Kickstarter campaign
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went viral and made him a large target for infringement. Not long after becoming
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a summer toy hit, Josh found out his invention was being ripped off and sold
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by a serial infringer. After obtaining multiple injunctions against the infringer,
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the infringer changed course and decided to file an IPR against Josh. With the PTAB
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without due process, Josh's patents were revoked. His patent rights were
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invalidated at the hands of the company, stealing and profiting from his idea.
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Fortunately for Josh, he filed suit one, and his rights were restored.
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But along the way, he spent millions in legal fees having to raise
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and spend $75,000 every week hiring six different law
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firms, three different technical experts, and 29 different attorneys.
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In fully understanding the scope of the problem, it's important to take a closer look
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at the PTAB itself, much like we'll do with the examination process in a bit,
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we want to Peel the curtain back on the PTAB, discuss its composition and how
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it differs with traditional court base litigation. The PTAB tribunal
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consists of a panel of administrative petant judges or APJs.
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Once an IPR is granted, the judges are required to submit an opinion and validity
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within one year. This requirement aims to fulfill AIA's promise of an expedited
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alternative to the courts. Prior to AIA. Patent validity issues within the
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context of infringement, suits were settled exclusively by Article three federal courts.
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It's now possible to have disputes flow through either or both. That said,
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the PTAB is now seen as a more favorable venue to challenging patents for
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a handful of reasons. First, there's probability there's a widely held
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belief backed up by an everincreasing data set that PTAB judges are
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far more likely to invalidate patents than juries. Second, there's a significantly
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reduced burden of proof in district courts. Patents are assumed valid, and challengers
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must prove that each claim is Invalid using clear and convincing evidence.
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This requires the challenger to present the highest possible burden of proof in
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civil litigation. This presumption of validity does not exist in the
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PTAB, and challengers must only establish that it is more likely than not that
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the claims are unpatinable. Third, PTAB claim construction is
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broader. This allows PTAB cases to sweep in more prior art, leading to
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increased invalidation decisions based on obviousness. Fourth, standing is
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not required to file an IPR. In Article three district courts. A party must
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have sufficient standing to bring about a suit with the PTAB. Any member of
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the public may initiate an IPR, and then there are the judges themselves.
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For the most part, the APJs are attorneys with legal backgrounds, often lacking
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education and experience around the scientific and technical matters they're ruling
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on. According to US, inventor, 60% of APJs have zero
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technical experience, and 76% have less than three years
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of technical experience. Despite having tremendous power and authority. They are also
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far less experienced, on average, than their federal surrogate counterparts.
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Based on a study conducted by Jean Quinn of IP Watchdog,
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for example, the study found that many judges were appointed to the PTAB at
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a time when they were still associates or even junior associates,
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and that there were zero federal district court judges appointed with ten years
17:53.990 --> 17:57.460
or less experience, while 47% of PTAB judges were
17:57.590 --> 18:01.670
appointed with ten years experience or less. So there you have it. Inexperienced lawyers
18:02.030 --> 18:05.260
with little technical background or returning patents that may have gone through
18:05.450 --> 18:08.810
years of rigorous examination by individuals with relevant backgrounds.
18:09.050 --> 18:12.530
How could this possibly go wrong? The first step is always admitting
18:12.710 --> 18:16.120
you have a problem. That box has been firmly checked. But before we
18:16.190 --> 18:19.840
pivot into possible solutions, it's important to consider the cost of
18:19.970 --> 18:23.380
doing nothing for this. We return to some of our inventor friends in
18:23.450 --> 18:26.750
Detroit. Unfortunately, it's been a decade, and that's plenty
18:26.870 --> 18:30.280
of time to see measurable effect. What matters? Well,
18:30.590 --> 18:33.950
what matters is, since the American Events Act passed,
18:34.430 --> 18:37.900
we went from number one in innovation to number eleven in innovation in
18:38.030 --> 18:41.200
the world. So America is just plummeted and
18:41.450 --> 18:44.920
keeps falling. And this, of course, creates ripple effects throughout the entire
18:45.290 --> 18:48.350
economy. I do this because I believe inventors
18:48.590 --> 18:51.940
create jobs, and I believe the best social system is a good job.
18:52.910 --> 18:56.330
And from that perspective, that we don't have a patent
18:56.510 --> 19:00.050
system where people can count on the value of their patents and they can raise
19:00.290 --> 19:04.300
money, bring products to market. No one's going to bring products out to States because
19:04.550 --> 19:08.320
you end up just getting slain. And there's no
19:09.050 --> 19:13.010
government program that saves you after you've lost all the money you invested.
19:13.790 --> 19:17.500
And how about the impact on the value of patents? So I just
19:18.230 --> 19:22.010
came up with this idea, kept quiet and managed to get some patents
19:22.310 --> 19:25.610
around it. But I stepped into this world right when the AIA,
19:26.030 --> 19:28.480
the American Men's Act became a thing.
19:29.330 --> 19:32.500
And so it stripped the value of the
19:32.630 --> 19:35.800
patents. I had these patents, and I was all excited to go out. And first
19:35.930 --> 19:39.160
of all, spend every penny I had to get the patents thinking, okay,
19:39.350 --> 19:43.240
now I can either sell my portfolio. I had three, which is very
19:43.430 --> 19:46.660
small, but there were three patents in a specific space. So I
19:46.790 --> 19:49.610
thought, Well, I'm going to go sell it to a company that can really knock
19:49.850 --> 19:53.980
this out of the park. But unfortunately, it was at the time when these
19:54.230 --> 19:58.310
changes were occurring, so nobody was interested in buying patents.
19:58.970 --> 20:01.960
Nobody was interested in even licensing them,
20:02.870 --> 20:06.410
which, of course, has a measured effect of its own for the Chicago
20:06.530 --> 20:10.070
ones. Here how many of you have heard of Ocean Tomo? Anybody from Chicago?
20:10.850 --> 20:14.320
A couple of these. So these are the big
20:14.510 --> 20:18.040
name guys that do the reports on what patents are worth.
20:18.290 --> 20:22.190
And they've shown the American invent sac cut the value of a patent
20:22.370 --> 20:26.300
by two thirds. So ten
20:26.430 --> 20:29.780
years ago, a patent, typically the rule of thumb, stick up their thumb. It's worth
20:29.970 --> 20:33.560
a million Bucks. That could be off by an order of magnitude either way,
20:34.950 --> 20:38.960
but roughly a million Bucks. And so now it's a
20:39.030 --> 20:42.800
third of that. And in case you missed it, Louis Carbonate weighed in on
20:42.870 --> 20:46.410
this from a patent brokerage perspective. In last month's episode on Monetization.
20:47.430 --> 20:50.120
If you look back about 1012 years ago,
20:51.690 --> 20:55.170
you had a lot of demand for patents. It was considered
20:55.230 --> 20:58.940
to be the next kind of commercial weapon that was kind of the Golden Age
20:59.250 --> 21:03.150
or gold era of patent monetization. And unfortunately,
21:03.390 --> 21:06.920
that's when I started. So I missed the
21:07.110 --> 21:10.890
five years before. That had been great for anyone who was buying or selling patents.
21:11.610 --> 21:15.090
Then after 2012, it came to a screeching
21:15.330 --> 21:18.680
halt. Essentially, I think people realized that they
21:18.750 --> 21:22.160
were overpaying for assets that were sometimes not
21:22.410 --> 21:26.120
that clear in terms of what they meant or what
21:26.250 --> 21:29.780
the income passed. And then the case law
21:29.970 --> 21:33.090
changed. We had Bilski,
21:33.450 --> 21:36.800
and we had Alice. We're still living with the
21:36.930 --> 21:40.520
aftermath of Alice, and it's progeny we
21:40.650 --> 21:40.700
have,
21:45.510 --> 21:49.110
which really threw monkey Ranch
21:49.230 --> 21:52.830
and the gears because suddenly people discover
21:53.190 --> 21:57.390
that IPRs were the new way to invalidate
21:57.690 --> 22:00.500
patents, and it kind of took on the life of its own.
22:01.770 --> 22:05.120
So all these things contributed to a very
22:05.310 --> 22:08.960
different marketplace today than what we had 7810
22:09.150 --> 22:12.620
years ago. Analysis of patent transaction data shows
22:12.990 --> 22:16.410
that the combined effect of this devaluation comes at over a trillion
22:16.650 --> 22:20.000
dollar cost to the overall US economy. The ultimate cost,
22:20.250 --> 22:24.090
however, is far greater than purely financial. A country's greatest assets
22:24.330 --> 22:27.560
are its people and their ideas. When the accepted consensus is that you
22:27.630 --> 22:31.050
can no longer protect your ideas and investments from theft, then who's
22:31.170 --> 22:34.230
going to innovate the best you can hope for at this point is a copycat
22:34.410 --> 22:37.940
race to the bottom. This is a fundamental question about property rights, and as many
22:38.070 --> 22:41.420
inventors will tell you, those rights are among the oldest and most important.
22:42.090 --> 22:45.560
One of the things that we want to talk about is
22:45.750 --> 22:48.560
the Article One, section eight, clause eight,
22:49.830 --> 22:52.770
giving rights to authors and adventures.
22:53.550 --> 22:57.930
How many times is the word right used in the Constitution? Who knows there's
22:58.050 --> 23:01.530
an answer that's right once, and it's capitalized.
23:03.450 --> 23:07.280
And the only time the word right is used is with regard to
23:07.770 --> 23:11.610
inventors and authors predated
23:13.770 --> 23:17.480
guns, religion, freedom to assemble all of the
23:17.550 --> 23:20.900
other rights in the Bill of Rights by three years.
23:21.810 --> 23:26.070
So what exactly is Article One, section eight? The notion of intellectual property rights
23:26.190 --> 23:29.600
in America is as old as well America. Those rights are
23:29.670 --> 23:32.970
spelled out in Article One, section Eight, clause Eight, of the US Constitution,
23:33.510 --> 23:36.990
ratified on September 17, 1787. This clause
23:37.290 --> 23:40.640
grants Congress the power to promote the progress of science and
23:40.770 --> 23:44.490
useful arts by securing for a limited time to authors and inventors
23:44.910 --> 23:48.210
the exclusive right to their respective writings and discoveries.
23:48.630 --> 23:51.810
The Framers believed in the importance of protecting intellectual property rights.
23:52.110 --> 23:55.580
And for a couple hundred years the US has led the world an innovation in
23:55.710 --> 23:59.480
large part due to the protections provided to inventors and their investments through
23:59.610 --> 24:03.620
our patent system. The integrity of the system and the fulfillment of its promise are
24:03.690 --> 24:07.100
essential ingredients to the American dream. An IPR is basically a
24:07.170 --> 24:10.350
request for the Patent Office to admit they made a mistake in issuing a patent.
24:10.770 --> 24:13.890
A property right based on faith in the initial decision and perceived
24:14.070 --> 24:17.480
ownership of that property. The inventor since relied on that original decision to
24:17.550 --> 24:20.790
build a business, take investment, and initiate licensing discussions.
24:21.150 --> 24:24.750
The inventor paid for that property up front and continued to pay maintenance fees
24:24.930 --> 24:28.760
to retain ownership. And then the decision is reversed by the PTAB and the
24:28.950 --> 24:33.270
property right upon which everything else was built. Poof vanishes
24:33.570 --> 24:37.280
from underneath. The way we currently deal with intellectual property rights has become so
24:37.410 --> 24:40.830
far disconnected from how we think about other property rights. Louis Carbono
24:41.070 --> 24:43.700
really drove this point home in last month's episode as well.
24:44.610 --> 24:48.020
It's as basic as that is that try to
24:48.150 --> 24:51.980
buy some land. If you're not sure that you actually have the right to
24:52.170 --> 24:56.120
build something on it, and the city can tell
24:56.190 --> 24:59.420
you, they'll say, well, build something and we'll tell you if we can issue a
24:59.490 --> 25:03.380
permit, but you have to build first. That's a little bit the kind of
25:03.510 --> 25:08.000
irony we have with patents. You have to get them first pay.
25:08.850 --> 25:12.560
I don't know. The average, I think, is 50 $60,000, according to
25:12.690 --> 25:16.410
the latest surveys I've seen for a single patent overall,
25:16.650 --> 25:20.060
including maintenance fees and all this just to get
25:20.190 --> 25:23.370
a patent. And then you have to pay another quarter million dollars for the PTA
25:23.550 --> 25:26.900
to tell you whether it was crap from day one or it was
25:27.090 --> 25:30.740
actually valid, which if you think about it and
25:30.810 --> 25:34.100
you stop for a second. What industry could survive with a
25:34.170 --> 25:37.400
business model like this where you have to buy the thing and then you have
25:37.470 --> 25:41.360
to pay five times more than you paid for the first time, just to
25:41.490 --> 25:44.540
be told whether you can use it or not. Okay, so now what can we
25:44.670 --> 25:48.870
do about it? The default instinct around legislative problems tends to be more legislation.
25:49.230 --> 25:53.190
The stronger Patents Act seems to get dusted off every few years. US inventor
25:53.370 --> 25:56.850
helped introduce the Inventor Rights Act of 2019, and there's a new legislative
25:57.090 --> 26:01.170
proposal on US inventor. Right now. Senators Leahy and Cornyn recently introduced
26:01.410 --> 26:04.520
the Restoring the America Invents Act patently. Oh,
26:04.650 --> 26:08.490
describes as a quote, wish list for patent killers seeking to cancel
26:08.730 --> 26:11.960
patent rights via inter parties review. That's clearly not the answer.
26:12.330 --> 26:14.720
But what would meaningful reform truly look like?
26:15.750 --> 26:19.040
Sure. Throw out American Events Act. Throw out all of the cases from the
26:19.170 --> 26:22.820
Supreme Court and go back to where we were 20 years
26:23.010 --> 26:26.300
ago. That's what true meaningful reform would be.
26:26.370 --> 26:31.640
And that's what built America. We had all of these 226
26:31.890 --> 26:35.600
years or whatever it is now of
26:35.850 --> 26:39.740
using the Constitution and building
26:40.050 --> 26:43.820
on patents and creating innovation in America. And now
26:43.890 --> 26:47.850
all of a sudden we don't because we're just not protecting
26:47.970 --> 26:51.510
or helping inventors. Yeah. So just even repealing AIA
26:51.870 --> 26:55.400
would be a really good start. That would be a good start. But that's not
26:55.530 --> 26:58.580
going to happen. This is big tech, big money,
26:59.370 --> 27:02.900
and it's not going to happen. So it's got to be in tiny little
27:03.090 --> 27:06.860
bits of just a small step here
27:07.170 --> 27:10.170
a small step there over a decade.
27:11.550 --> 27:15.030
That's what we're going to see. What would be the one to three most meaningful
27:15.630 --> 27:19.770
steps. Well, I think Director Ianku did wonderful
27:20.070 --> 27:23.970
work at the patent office, and so the Biden
27:24.690 --> 27:27.020
choice of who's going to be the patent director is going to be huge.
27:28.050 --> 27:32.720
Is he going to get a Michelle Lee or Andre Ayanku to
27:32.790 --> 27:36.150
be the next leader? And Michelle
27:36.270 --> 27:40.290
did everything she could to make sure that little companies can't
27:40.530 --> 27:43.890
survive or don't survive, whereas was really helping
27:44.070 --> 27:48.080
us. And so be able to do
27:48.330 --> 27:52.400
that to be able to limit the scope of the PTAB of
27:52.890 --> 27:57.030
how do you make sure they don't initiate programs unless
27:57.270 --> 28:01.100
it's really needed, and then to make sure that
28:01.230 --> 28:04.520
it's validated with what they do to take away the
28:04.710 --> 28:08.600
bonuses for people and the incentives for PTAP judges to
28:08.730 --> 28:12.150
be able to throw all these cases out. I mean, that's just horrible.
28:13.710 --> 28:18.270
And I think we're mostly beyond what Michelle
28:18.390 --> 28:23.910
Lee was doing of stacking
28:24.030 --> 28:27.390
the court, if you will. First, there were three, and she didn't like the decision.
28:27.750 --> 28:31.400
So she added several others and then others and others until finally she got
28:31.530 --> 28:35.310
a decision she wanted, and that's
28:35.430 --> 28:38.600
not American. So we got to
28:38.730 --> 28:42.380
improve that. Now. One thing I hear
28:42.570 --> 28:45.980
floating around a lot. It doesn't seem like it's getting a lot of traction and
28:45.990 --> 28:50.000
it seems like there have been end versions of these things that kind
28:50.070 --> 28:53.610
of pop up and dive pop up and dive is the stronger pattern.
28:56.490 --> 29:00.740
What's the high level synopsis on that? Do we believe that's a good thing in
29:00.930 --> 29:04.820
whatever most recent flavor is? Well, it hasn't changed a
29:04.830 --> 29:08.960
lot for the last four years, and it's just for right
29:09.150 --> 29:13.040
now, it's nonexistent because there is no stronger Patents Act.
29:13.890 --> 29:17.420
We lost divers who took it up in the House a couple
29:17.550 --> 29:20.720
of years ago, and he decided to get out of the House and
29:20.850 --> 29:23.610
go run the Chamber of Commerce in Ohio.
29:25.110 --> 29:28.350
So there's nobody there that's picked it up in the House. And I think Koons
29:28.530 --> 29:32.250
has looked at this, and he's been our hero. Senator Coons
29:32.550 --> 29:35.790
and Senator Herrono have just been wonderful
29:36.930 --> 29:40.940
for us, but there just wasn't enough boats to
29:41.070 --> 29:44.550
be able to get it on. And now, with Darrellisa
29:44.670 --> 29:48.320
coming back in the House, that's not helping, because he
29:48.390 --> 29:52.410
was one of the major proponents of the American Events Act. So he's
29:52.590 --> 29:56.060
not been helpful until we can
29:56.190 --> 29:59.960
change those people's minds of the fact that this has been a
30:00.090 --> 30:04.280
disaster. And eventually big tech will understand that
30:04.470 --> 30:08.000
this is not in their best interest. It's in their short term interest
30:08.730 --> 30:12.080
for protecting their bonus for a number of years. But what
30:12.210 --> 30:16.040
happens when America can't compete anymore? And the
30:16.230 --> 30:20.240
Americans aren't using the Googles and the apples of
30:20.310 --> 30:25.340
the world? But we're going on and using the Chinese products instead because
30:26.190 --> 30:29.960
Americans don't have the money to do it now. We're still
30:30.630 --> 30:34.100
more than a decade, probably two decades or more away from
30:34.290 --> 30:37.640
that happening. But eventually it will happen. But the problem is,
30:38.250 --> 30:41.660
how do they turn it around at that point? Despite all the talk around
30:41.910 --> 30:45.210
legislative fixes for the AIA, there was one stat I just couldn't
30:45.450 --> 30:49.280
shake. Even district courts invalidate patents at a rate of about 40%
30:49.890 --> 30:53.850
that's not near the fatality rate dealt by the PTAB, but it's still a surprisingly
30:54.090 --> 30:57.330
large number. Put another way, when challenged at a district court,
30:57.690 --> 31:01.110
a little less than half of what comes out of the PTO is later reversed.
31:01.410 --> 31:05.130
Many of the proposed legislative solutions don't appear to hit the problem at its root,
31:05.430 --> 31:08.720
which is ultimately invalidation. Any reform related to
31:08.790 --> 31:12.380
postgrant proceedings is missing the bigger issue. Postgrant proceedings could
31:12.450 --> 31:16.230
be incredibly rare in a world where PTO examiner decisions were more binding
31:16.350 --> 31:20.000
than they presently are. In a more ideal world, it seems like we should
31:20.070 --> 31:23.180
get to a point where the determination made by the examiner was closer to something
31:23.490 --> 31:27.560
binding, with invalidations being an extreme exception versus 40% in
31:27.690 --> 31:32.130
district courts and 84% in the P tab. Any other system essentially leaves
31:32.190 --> 31:36.860
you with a patent pending indefinitely until expired or tested by courts at
31:37.050 --> 31:40.400
some level of scale. Are patents getting through the patent office? That shouldn't be?
31:40.710 --> 31:44.010
Or is there some other disconnect in the Schizophrenic system that is both granting
31:44.250 --> 31:48.210
and later taking away. One theory often stated is that examiners simply
31:48.330 --> 31:51.680
aren't granted enough time to adequately search prior art or understand the
31:51.750 --> 31:55.280
domain of the depth required to get an inside the PTO perspective on
31:55.350 --> 31:59.780
this theory. We sat down with former examiner and current practitioner Tariq Najilla during
31:59.970 --> 32:03.500
his ten years as a patent examiner at the USPTO. Tariq specialized in
32:03.690 --> 32:07.590
electrical engineering technologies, including telecommunications, digital communications,
32:08.130 --> 32:11.250
computer networking, cryptography and storage area networks.
32:12.390 --> 32:16.170
Okay, trick. So first question from the outside. The examination
32:16.410 --> 32:20.180
process feels like a bit of a black box. So at
32:20.250 --> 32:23.730
a very high level, could you walk me through the process of examination?
32:24.450 --> 32:27.870
Once an application leaves an inventor's hands and gets submitted to the PTO,
32:29.430 --> 32:32.010
if you're looking at 30,000 foot level patent examination,
32:33.450 --> 32:37.650
it follows the manual patent examining procedure
32:38.970 --> 32:42.030
100%. So application is submitted,
32:42.630 --> 32:46.100
it goes to the receiving office or to the application
32:46.590 --> 32:50.060
processing unit, where all the let's say the
32:50.190 --> 32:53.060
formalities of submissions are checked over.
32:53.670 --> 32:57.980
If you've ever gotten a notice of incomplete application
32:58.650 --> 33:01.770
or missing parts that's not done by an examiner
33:01.890 --> 33:05.250
that's done by the application receiving officer processing unit,
33:05.910 --> 33:09.030
they're going to check over the formalities. Once you meet the formalities, then it's docketed.
33:09.990 --> 33:13.050
It'll go to a master docket to be assigned,
33:13.410 --> 33:16.590
usually through some type of algorithm to a art unit
33:16.830 --> 33:19.230
or technology center, then an art unit,
33:20.670 --> 33:25.530
and then at some point in the future, if it's prioritized
33:25.710 --> 33:28.530
examination is almost instant, you get assigned an examiner.
33:29.250 --> 33:33.750
If it's not prioritized and you're looking at whenever
33:34.110 --> 33:36.870
it comes up from the time of its entry,
33:37.650 --> 33:41.070
you'll get a sign an examiner. Once you're signed an examiner,
33:41.970 --> 33:45.510
it goes in the examiner's docket examiner docket.
33:46.170 --> 33:48.620
And when it comes up for time,
33:49.650 --> 33:53.180
they will search the they'll read
33:53.310 --> 33:55.650
the disclosure again, as per the MPE,
33:56.550 --> 33:59.960
the manual pattern procedure, they will read the disclosure, read the
34:00.030 --> 34:04.100
claims, understand the invention. Once they have an understanding of the invention and
34:04.230 --> 34:07.460
they can kind of diagram the claims to understand how
34:07.530 --> 34:11.420
the claims relate to the invention, they will
34:12.210 --> 34:14.960
do a prior art search. If they need help with their search, they reach out
34:15.090 --> 34:17.420
to additional resources in the patent office to get help.
34:18.810 --> 34:22.590
Then once they have done an exhaustive
34:22.770 --> 34:26.670
search, they'll draft the office action.
34:29.070 --> 34:33.210
If they're a junior examiner, they'll submit their office action to be reviewed
34:33.390 --> 34:37.110
by their primary or supervisor patent examiner
34:41.070 --> 34:46.760
approved. If they're not a junior examiner, they just sign it and send
34:46.890 --> 34:51.090
it out to go on the mail. You receive an office action or allowance,
34:51.390 --> 34:54.090
whatever it's rendered.
34:54.570 --> 34:58.700
So the first thing is to do the prior search and then apply
34:58.890 --> 35:02.610
the statutes as well. While they're doing the reading of the claims and reading
35:02.790 --> 35:06.800
of the disclosure, they're applying the statutes at
35:06.990 --> 35:11.360
minimum, one on one, one, 1112, one on two, one on three at
35:11.490 --> 35:15.260
a minimum, but usually as many more statutes in that they have
35:15.330 --> 35:17.180
to apply. But they go through that entire process,
35:19.110 --> 35:22.820
examine the application and then render the office action. And that
35:23.010 --> 35:26.840
continues to process until the prosecution go back
35:26.910 --> 35:30.270
and forth to arrive at some kind of outcome. With this allowance,
35:30.570 --> 35:33.920
abandonment, appeal, whatever the outcome is,
35:34.170 --> 35:37.460
petition any type of outcome, that's what happens.
35:38.670 --> 35:42.020
So it can take two years or more to get a
35:42.450 --> 35:46.640
granted patent. But from the time that the patent application hits your
35:46.770 --> 35:50.780
desk as an examiner to the point of being issued or a
35:50.850 --> 35:53.850
final rejection, on average,
35:54.930 --> 35:58.520
how many hours is the application actually your focus
35:59.370 --> 36:02.840
just really want to try to give folks a sense of I hear a lot
36:02.970 --> 36:06.380
about, oh, they had my patent application for
36:06.870 --> 36:11.670
two years. Well, no, it's sad file
36:12.810 --> 36:16.340
like digital or otherwise for two years. But that's not how long it was
36:16.470 --> 36:20.070
actually looked at. There's queue time and there's actual examination
36:20.370 --> 36:23.660
time. What's the actual examination time?
36:24.450 --> 36:28.230
So there's queue time and that's waiting.
36:28.650 --> 36:31.770
The average queue time is 24 months, according to the Patent Office statistics,
36:32.790 --> 36:35.550
the average time for patent.
36:37.050 --> 36:40.530
Once you come up in the queue, it's usually about twelve to 18
36:40.770 --> 36:44.240
months. So once you actually start working on it now,
36:44.490 --> 36:47.900
most of that time, too, is back and forth. So when
36:48.030 --> 36:50.960
they pull you up, they examine it and give you the office action or get
36:51.030 --> 36:52.230
a restriction. Whatever you get in the beginning,
36:54.510 --> 36:58.105
let's say they're spending whatever allotted time is, say four to 20
36:58.115 --> 37:01.580
hours, something like that, depending on what type of art it is
37:02.070 --> 37:04.880
because they're experts and they see the same type of applications every day.
37:05.430 --> 37:08.960
They're just looking for the nuances. Is this novel or not? Is this
37:09.150 --> 37:13.220
obvious or not? Trustive examiner is looking at the same. They're looking at 100
37:13.410 --> 37:16.100
applications a year, and they're all in the same technology.
37:17.310 --> 37:19.700
They can look at your application and say, okay, let me read this. Okay.
37:19.830 --> 37:23.610
I got it. I've seen this before because I just did this last week yesterday,
37:24.210 --> 37:27.380
so they don't have to spend 40 hours on
37:27.390 --> 37:30.500
your application to understand it, because they're doing the same thing over and over again.
37:31.350 --> 37:34.590
So they are experts of the process and hopefully
37:34.890 --> 37:38.420
experts of your technology area in terms of what's patentable they
37:38.490 --> 37:41.670
may not be experts in the system expert as an inventor,
37:42.510 --> 37:44.490
but in terms of processing what's novel?
37:52.270 --> 37:55.630
Let's say between four and 30 hours on an office action.
37:55.990 --> 37:59.620
Right. That all
37:59.750 --> 38:03.160
section goes out. You have three months to respond. You can extend it up
38:03.230 --> 38:06.400
to three months. So that process, that waiting time can be
38:06.530 --> 38:10.120
three to six months. If you shorten that waiting time to
38:10.670 --> 38:14.740
one month, then we're at a different kind of you
38:14.870 --> 38:18.230
can compact the time. It's called compact prosecutions make no much faster.
38:19.250 --> 38:22.300
So that happens.
38:22.970 --> 38:26.380
Let's say two rounds. So they send the
38:26.510 --> 38:29.860
office. Actually, you have three to six months you
38:29.990 --> 38:33.700
send back to them. They have three to six months. Pretty much
38:34.610 --> 38:38.380
it goes round Robin back and forth until you get to either
38:39.410 --> 38:43.000
disposition or RC or whatever it is that you're looking for. So if
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we did compress out all
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the back and forth time and instead looked at just the amount of
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time you spent working on a particular invention,
38:55.710 --> 38:59.840
a particular application over the course of the time from hit
39:00.030 --> 39:03.320
your desk until final issues to rejection. And I know that's going to be
39:03.630 --> 39:07.460
highly situationally dependent, any broad sense of a range of
39:07.530 --> 39:10.290
the amount of time you might spend with any given invention.
39:12.850 --> 39:16.260
Also, that varies by examiner. Like in my art
39:16.390 --> 39:19.140
unit, I had 20 plus hours to work on an application.
39:20.050 --> 39:24.180
I spent 20 plus hours on every application every time. So if
39:24.370 --> 39:30.700
we did four rounds of prosecution, that's two
39:30.830 --> 39:34.780
office actions, RCE, another two
39:34.970 --> 39:38.810
office actions, interviews in between. There that's more time. So let's
39:38.870 --> 39:44.020
say it's 25. Maybe they filed after final on
39:44.150 --> 39:48.530
each one. And I call for an examiner's amendment that's
39:48.710 --> 39:51.700
easily 100 hours, plus that I spent on an application.
39:56.010 --> 39:59.120
That's me. I know other examiners that were very
39:59.310 --> 40:03.020
efficient and had different ways. They did things that they
40:03.270 --> 40:06.380
really spent that much time on the application. But it doesn't mean that they were
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spending. It was less quality. They could have been better than me. They could have
40:09.870 --> 40:13.170
been getting more allowances, and it could have been faster. So what I'm
40:13.290 --> 40:16.530
dealing with is you're dealing with aptitude.
40:16.710 --> 40:19.770
You're dealing with comprehension,
40:20.370 --> 40:24.930
speed of comprehensive, complex information processing,
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doing comparisons and analysis.
40:30.750 --> 40:33.680
There's no one metric that I could give that would say, this is how much
40:33.810 --> 40:36.740
time is given, even given that kind of metric is not fair.
40:37.890 --> 40:41.540
I would just say that know that you have had
40:43.050 --> 40:47.060
very focused, dedicated amounts of time given
40:47.310 --> 40:49.760
to your application at each and every stage of the process.
40:50.550 --> 40:53.900
That's all I could say. I couldn't say what the number is. I don't know.
40:54.270 --> 40:57.320
But, I mean, if you spend 100 hours total on one,
40:57.870 --> 41:01.460
nobody's breathing down your neck and saying, you got to move these along.
41:02.490 --> 41:06.090
No, it never happened. There was never hurry
41:06.330 --> 41:09.620
along just to get it done because
41:09.810 --> 41:14.360
it always comes back to you. You never escape. It like you
41:14.430 --> 41:18.260
can't do an application. Office action is trash, and it all comes back
41:18.390 --> 41:20.300
to you. It's going to come back to you in a write up. It's going
41:20.310 --> 41:23.430
to come back to you in extra trainings
41:23.550 --> 41:27.570
because you have errors, warnings for messing
41:27.750 --> 41:31.580
up. You're not applying statutes, they come back in complaints, then have
41:31.650 --> 41:34.110
the inventors or call the director.
41:35.010 --> 41:37.760
I understand that these are all things that examiners experience and happen.
41:41.050 --> 41:43.080
Just say, just go ahead and hurry up along. We just need to get these
41:43.330 --> 41:47.340
out. That's not part of it. No talking
41:47.530 --> 41:50.640
a little bit about prior art. What percentage of your time
41:50.770 --> 41:53.170
would you say was spent on prior art searches?
41:55.630 --> 41:59.880
Majority majority. Was there ever any
42:00.070 --> 42:03.240
pressure to spend less or more time on prior search.
42:05.410 --> 42:05.460
No,
42:09.050 --> 42:11.860
I think that's really what the job of the examiner is. Like. I said,
42:11.930 --> 42:15.880
we're preserving looking at the law to
42:16.010 --> 42:19.130
preserve useful arts.
42:19.430 --> 42:22.540
You do that by making sure that this is something that's novel and non obvious.
42:23.750 --> 42:27.050
That's the practical way. The statues. That's where the statues are applying.
42:27.530 --> 42:30.400
I mean, the formal statues of one on one. Let the course litigate that we
42:30.470 --> 42:34.010
don't really care. We follow the checklist. You say it's statutory.
42:34.190 --> 42:37.240
We say, okay, we follow the checklist if it says yes and yes,
42:37.790 --> 42:40.490
it says no, we say no. We put the boilerplate language in there. We don't
42:40.550 --> 42:43.480
really have any decision on that. We just apply what the law says.
42:44.210 --> 42:47.740
112 is a very specific. We apply those based on
42:48.410 --> 42:51.700
what the law says. Those are checklists and things we have to go through if
42:51.770 --> 42:55.720
we go through them and they result in a rejection. That's because this
42:55.910 --> 42:59.450
language is here. It says, taste this rejection. What we're
42:59.510 --> 43:03.160
really there to interpret what we really need to understand is understand
43:03.410 --> 43:06.640
the invention and apply one or two or one or
43:06.710 --> 43:10.120
three. That's really where the meat of it. Is that's what you care about?
43:11.990 --> 43:15.280
Are you infringing somebody or is somebody infringing you? That's what you
43:15.410 --> 43:19.310
want to know. That's what the search. That's why the primary job examination
43:19.550 --> 43:23.080
search. At least when
43:23.150 --> 43:25.120
I was there for the ten years I was there, that was a fundamental focus
43:25.310 --> 43:29.550
of what we did. I've heard claims
43:29.790 --> 43:33.080
that the search tools that are available within
43:33.270 --> 43:36.740
the PTO are heavily US specific and
43:36.930 --> 43:39.750
might not necessarily include access to academic journals.
43:41.070 --> 43:44.130
True, false urban Legends, false false urban Legends.
43:45.150 --> 43:48.750
Okay, there's multiple tools
43:49.470 --> 43:53.240
now, the tools that we use in Patent Office you can't use that
43:53.430 --> 43:56.660
is true. When I was at Patent Office,
43:56.970 --> 43:59.850
I can search unpublished patents.
44:00.810 --> 44:05.070
So I have access to unexamined
44:06.150 --> 44:09.020
things that are in the queue. But I can search them.
44:09.330 --> 44:12.740
They're part of my search. They're not part of your search because I
44:12.810 --> 44:15.330
can search provisions. You can't search provisions.
44:18.670 --> 44:22.080
So I have more swathes of data. And within
44:22.450 --> 44:24.310
there those databases include foreign patents.
44:26.710 --> 44:30.550
Plus, we have other software that focus specifically on foreign patents.
44:33.370 --> 44:37.930
There's patent search software. There's also academic
44:38.110 --> 44:40.140
search software with their patent office has its own.
44:42.250 --> 44:45.010
I was in computing, so we had AAA.
44:47.770 --> 44:51.120
I can't think of all of them right now. We have tons of databases of
44:51.310 --> 44:54.660
all the engineering and science journals, and we had to search all this stuff.
44:55.930 --> 44:58.680
You can't just search the patents. You have to search everything.
45:05.570 --> 45:08.860
You can have a bad examiner that they probably get fired. They don't search
45:09.470 --> 45:12.820
outside of patents, but, yeah,
45:16.430 --> 45:19.720
there's no real truth to that. All right. District courts are
45:19.970 --> 45:22.300
invalidating patents at about a rate of 40%.
45:23.210 --> 45:26.990
There's clearly some disconnect between issuance and ultimate
45:27.110 --> 45:31.250
validity. In the eyes of the court mentioned earlier
45:31.430 --> 45:34.910
that one theory around this was that examiners simply weren't granted
45:35.330 --> 45:38.560
enough time to adequately search prior art
45:39.170 --> 45:43.250
or fully get their heads wrapped around the domain. I'm not necessarily
45:43.550 --> 45:47.140
hearing that you think that's the case based on
45:47.870 --> 45:51.760
your experience. So if not, then why
45:52.970 --> 45:57.170
this big disconnect between Issuance and ultimate
45:57.650 --> 46:01.240
validity? What's driving that?
46:01.790 --> 46:05.920
Most judges have never been examiners. Most judges are
46:06.110 --> 46:09.220
not engineers. They're judges. They went to law school.
46:10.430 --> 46:14.270
They know how to deal with arguments. I think patent
46:14.450 --> 46:18.590
law is very unique in the sense that it's
46:18.890 --> 46:22.780
unlike criminal law or business law, where you
46:22.850 --> 46:25.850
can look at a lot of the case law because that's one thing. As examiners,
46:26.570 --> 46:30.460
we had to read case law all the time. As I
46:30.530 --> 46:33.710
got some more seniors and examiner, we were required.
46:33.950 --> 46:37.600
We were given hours of time to read case law, which let
46:37.670 --> 46:41.980
me read all these cases. And sometimes
46:42.890 --> 46:46.600
when I would read the case law, I would see over simplification of
46:47.090 --> 46:51.170
the technology. They're making associations
46:51.470 --> 46:54.590
that we're not allowed to make an example because of the statues.
46:56.630 --> 47:00.350
We can't make those associations, but they're making associations because they're not governed
47:00.410 --> 47:04.250
by the same standard. When they're doing these cases,
47:04.370 --> 47:08.140
they're not looking at one on 1121 or 3112.
47:08.750 --> 47:12.290
They are not governed by the manuals of Patent examining procedure. They're governed
47:12.410 --> 47:14.560
by federal law.
47:17.970 --> 47:23.220
Ptab is different. Ptab is within part
47:23.350 --> 47:27.610
of PTAB is within the manuals patent examination procedure, so it's following
47:27.970 --> 47:31.620
a certain standard. That's what makes PTAP so atrocious in terms of how it
47:32.530 --> 47:36.420
has been used. The legal system itself bears some responsibility in the
47:36.490 --> 47:39.840
arena of solutions as well. Listen in as Louis shares some insights on
47:40.030 --> 47:43.440
conflict of interest and honest conversations that should be happening between
47:43.750 --> 47:47.100
inventors and their practitioners. If the answer is,
47:48.370 --> 47:50.710
you don't have an invention, you're right. It already exists.
47:52.690 --> 47:56.040
That's the issue. This is not a good business model for you guys
47:56.290 --> 47:59.590
to tell the client this is crap. You don't need to file a petlman
47:59.770 --> 48:03.480
that already exists. So nobody wants to say that. But frankly, that would
48:03.550 --> 48:06.610
be the honest answer. In many cases, when you look at a part that don't
48:06.790 --> 48:10.980
spend your money on this, it already exists or it's so
48:11.710 --> 48:15.420
incremental that it's not worth it. And the day people do
48:15.670 --> 48:18.780
that, you're going to have a lot less patents that are invalidated because
48:20.050 --> 48:23.580
essentially, they weren't valid in the first place. I see
48:23.710 --> 48:27.300
a lot of those. I'm not joking. We see so much volume. I can tell
48:27.430 --> 48:31.570
you it's not just bad patent attorneys.
48:31.750 --> 48:35.350
It's just the business incentives are misaligned.
48:35.770 --> 48:39.360
And that's what's creating a lot of these patterns to be issued because
48:39.670 --> 48:42.840
your metric is not the same as the client, but the client doesn't know it.
48:43.930 --> 48:48.180
The client thinks that you have the same metric and the same goal. And you
48:48.310 --> 48:51.960
don't actually, because we will do some
48:52.150 --> 48:55.140
prior search and we'll find something and we'll tell the client, look,
48:55.270 --> 48:59.460
we can't take this on the brokerage because you didn't invent anything you
48:59.590 --> 49:02.340
should have done a prior search prior to filing, and you would have saved yourself,
49:03.130 --> 49:06.360
especially when there's portfolio with five to ten patents. You would have saved yourself
49:06.730 --> 49:10.560
half a million dollars, probably in cheese if you have
49:10.690 --> 49:14.350
only spent $2,000 in reach and search originally.
49:14.890 --> 49:18.640
So I'm part
49:18.770 --> 49:22.790
of the patent part, but I just don't like the fact that the business incentives
49:23.390 --> 49:26.920
are not properly aligned with what the client needs to get a
49:27.050 --> 49:30.880
meaningful pattern at the end, because it reflects in the marketplace today
49:31.550 --> 49:34.720
because we can see all the bad things
49:34.850 --> 49:38.200
we want to say about the PTAB about it being biased and all this.
49:38.390 --> 49:40.550
But the reality is, in a lot of cases,
49:42.050 --> 49:45.230
there was some relevant priority that made some of these patterns
49:45.410 --> 49:48.520
and valid the way they were drafted outside of the present state
49:49.130 --> 49:52.420
of all of this ever changing in a meaningful way. And we assume that the
49:52.490 --> 49:55.480
AIA and Pete have, as we know them today, remain the law of the land.
49:55.850 --> 49:59.620
In addition to having hard and honest conversations with practitioners, what can
49:59.750 --> 50:03.160
inventors do now to increase their odds of success? Should they end
50:03.290 --> 50:06.760
up facing an IPR some time down the road for an answer to this question,
50:07.010 --> 50:10.360
I once again sat down with Ashley, so I think the best way to future
50:10.670 --> 50:14.380
proof yourself is a few different things. One would be to make
50:14.450 --> 50:18.460
sure you're doing priorit searching don't rely on the patent office
50:18.710 --> 50:22.120
to do to find all the relevant are they do have limited time, and so
50:22.190 --> 50:25.780
I would definitely engage with a practice such as Aurora or
50:25.910 --> 50:29.630
another practice to do prior art searching before you file
50:29.690 --> 50:32.740
your pen application, or at least before you convert it to a full utility application.
50:33.710 --> 50:36.950
I would also ensure or try to ensure that your claims capture
50:37.250 --> 50:40.370
one infringer trying to avoid divided infringement,
50:40.550 --> 50:44.810
and your practitioner shouldn't know what this means, but from your practical
50:45.110 --> 50:48.940
viewpoint, making sure that one entity would be doing all
50:49.010 --> 50:52.300
the steps of your claim. So if you can possibly think that two entities would
50:52.430 --> 50:55.960
have to work together to do your claim to
50:56.090 --> 50:59.450
process or to make your device, then the claim should be rewarded
50:59.630 --> 51:03.580
to make it. So it's just one party. I would also recommend that you
51:03.890 --> 51:07.060
always file continuation pet applications. What this means in
51:07.250 --> 51:11.020
practice in the United States is that when you are about to get
51:11.090 --> 51:14.390
an issue patent or any time during your patent application pendancy,
51:14.990 --> 51:18.460
you can file additional claim sets that are based on
51:18.530 --> 51:21.590
the original patent application disclosure, the original specification.
51:22.190 --> 51:25.250
But these claim sets can pursue other types
51:25.370 --> 51:29.990
of inventions in your application. It can pursue broader or more narrow views
51:30.290 --> 51:33.820
of your invention, and by doing that, it allows you to always
51:34.070 --> 51:38.440
have a pending and open patent application family. So if
51:38.630 --> 51:42.460
one issued patent is challenged and your patent application is still pending, you can
51:42.590 --> 51:46.000
now still pursue additional claim sets that would hopefully avoid any prior art
51:46.250 --> 51:49.910
that was brought about in the IPR proceeding in the challenge proceeding.
51:50.330 --> 51:54.230
And so I think these three things are very critical. And then lastly,
51:54.890 --> 51:58.370
think about how potential competitors are going to overcome
51:58.670 --> 52:01.790
your claims. What are the design around? And not that this is going to prevent
52:02.510 --> 52:06.340
any kind of IPR challenge, but it could help with an infringement proceeding where
52:06.830 --> 52:10.070
somehow somebody avoids your claims by doing some minor modifications.
52:10.250 --> 52:13.550
And so prior art searching, ensuring the claims capture
52:13.790 --> 52:16.730
one infringer always have continuation applications pending,
52:17.270 --> 52:20.560
and then trying to think about how competitors may design around
52:20.690 --> 52:25.060
your claims. I think those are four critical areas to
52:25.190 --> 52:29.080
just consider as you're working with practitioners and making sure you really own
52:29.210 --> 52:33.170
those decisions in your patent portfolio strategy. Thank Ashley.
52:33.350 --> 52:36.410
That's a wrap. For now. We hope this has been one part illuminating
52:36.770 --> 52:39.650
and at least two parts motivational. As we said at the opening,
52:40.010 --> 52:43.310
this is a very complex, highstakes issue with many perspectives,
52:43.670 --> 52:46.420
and it's only with the benefit of a wide angle lens that we can hope
52:46.550 --> 52:50.570
to start chipping away at the problem with the most impactful solutions. And hopefully
52:50.810 --> 52:53.750
this motivates you to take some action. Call your congressional reps.
52:53.930 --> 52:57.100
Join an adventure advocacy group. Have the tough conversations with your
52:57.230 --> 53:01.000
practitioner. Draft more robust patents. Spend the time to search prior art,
53:01.310 --> 53:04.780
and most importantly, do what you can to lend a voice to the issues that
53:04.850 --> 53:08.090
will define the innovation landscape for the next generation of inventors.
53:08.750 --> 53:11.750
All right, thanks for listening. And remember to check us out at aurorapattens.
53:12.110 --> 53:16.250
Com for more great podcasts, blogs and videos covering all things patent strategy.
53:16.730 --> 53:18.940
And if you're an agent or attorney and would like to be part of the
53:19.070 --> 53:22.780
discussion or an inventor with a topic you'd like to hear discussed, email us at
53:22.970 --> 53:26.680
podcast at aurorapatins. Com. Do remember that this podcast does
53:26.750 --> 53:30.220
not constitute legal advice, and until next time, keep calm and patent on.
53:39.330 --> 53:42.740
So do you suppose you took the whole evil laugh and thunderclap thing a little
53:42.930 --> 53:45.560
too far? No, not at all.
53:46.110 --> 53:48.750
He's supposed to PTAB out loud. Is anything like Candyman?
53:49.410 --> 53:51.450
Or if you stay in the mirror five times you lose a patent.