Wednesday, July 23, 2014

Federico's Commentary - Follow-up

In 2009 I wrote that the USPTO should post Federico's Commentary on line. I woke up this morning, July 23, 2014, to find this comment by Anonymous:
I know this blog post is from a while ago, but this appears to be an online copy of Federico's commentary:
July 22, 2014 at 10:55 PM
I responded with thanks and confirmed for myself that Federico's Commentary is still not available on

As I noted in the original post, the Commentary was re-published in the Journal of the Patent and Trademark Office Society (JPTOS, a USPTO publication), 75 JPTOS 161 (1993). Later JPTOS printed a special issue containing only Federico's Commentary and a speech by Judge Giles Rich, long viewed as the best "We were there" resources on the language of the 1952 Patent Act. (I guess you would call them "legislative STAFF history" rather than "legislative history"?) Surely the Patent Office has an archive, electronic or not, of all the issues of JPTOS? And there must be at least one employee not yet retired who has a paper copy of 75 JPTOS in nis office? Is there so little need -- by Patent Office employees or others -- to understanding the 1952 Act's original language? It still lingers though buried under the tax-code-like verbosity of the last many years of amendments and there are still questions, or Anonymous would not have found nis way to my blog...

Anyway: here is what I found today when I searched for "federico." The search box says "Powered by Bing" by the way but I don't blame the absence of the Commentary on Microsoft. Of the first 20 hits, all but 3 relate to other people named Federico, mostly inventors. Two of the three hits for the Federico of interest (PJ Federico, a Patent Office Examiner-in-Chief) are citations and rather recent ones at that: a 2010 BPAI decision, Cal Tech v. Enzo, Interference No. 105,496, and the Government's brief to the Supreme Court in Bilski v. Kappos (08-964), filed in September 2009. The third occurrence of the right Federico is in the remarks by Todd Dickinson in his memorial tribute to Judge Rich, which I had mentioned in my original post. If there had been a thirty years ago, all 20 of the top 20 hits would have been to Federico's Commentary, would they not? Losing our history because of the internet is a problem, solvable but not yet solved.

In today's search I also noticed the absence of occurrences of federico's -- federico apostrophe s -- in the search results. That is a difference between powered by Bing and powered by Google. (I searched all of Google for federico and did, ultimately, confirm that federico's would be found: Hit number 47 was for federico's pizza.) With federico apostrophe s in the search box, Bing found exactly one (1) occurrence: the 2007 OG Notice on the final rules for continuation applications, also mentioned in the original post.

One last search, this time on Google and for federico's commentary. The first two hits are to The third is to heinonline. And the fourth, amazingly, is to my 2009 post. Which by the way has a grand total of 1320 hits in its entire life. A sad commentary (npi) in several respects, eh?

But the silver lining was the fifth hit. It was, a twenty-year-old post by Robert M. Storwick of a patchwork quilt "based on the 26th order, 500-unit compound perfect square discovered by Pasquale J. Federico, mathematician and a long-time [PTO] employee." Storwick gives math journal citations, too. Way cool.

Thank you, ipmall, for posting Federico's Commentary, and thanks also to ipmall's sponsor, the University of New Hampshire School of Law, and last but not least to Anonymous, for sending me on this delightful chase.
Alas, one more search, this time for Storwick, may have been one too many. He was disbarred by his home state in 2007. Maybe he had some major mishap because he did not respond to the state bar at all and the latest financial transactions mentioned in their decision were from 2006. But in 2013 somebody updated the registration and paid for it through 2018, even though the homepage says it was last updated in 1995. A mystery.
Links fixed and minor rev 7/27/14 rjm

Thursday, June 12, 2014

Braintree Labs and "A" - the indefinite article excludes the singular?

Most of what I know about the Federal Circuit's recent Braintree Labs v. Novel Labs decision is what I read in Greg Aharonian's newsletter commenting on Hal Wegner's post. According to Aharonian and Wegner, the Federal Circuit in Braintree ruled that the word "a" (yes, the indefinite article) "excludes the singular" when used in a patent claim.
Note that when I write "a patent claim" I use "a" in the singular sense, in particular referring to the one claim I know about. There may in fact be more than one claim in this patent that uses the word "a" in the very phrase before the court. But there is no principle of patent law that would require the inventor to write more than one claim. Therefore, as a matter of law, the phrase "a patent claim" cannot exclude "one patent claim."
The patent claim recites:
    A composition for inducing purgation
    of the colon of a patient ..."

At the risk of breaking a* cardinal rule of law, writing, and common sense, I would like to add the following idea to the discussion of this case, even though I have done no more than skim the decision for the word "colon."

A* principle of claim interpretation - or statutory interpretation or any other kind of "construction" in the legal sense - is to look at the words surrounding the disputed language. Context may provide meaning that removes ambiguity. Here, I notice that "a patient" is the object of the preposition "of" which in turn is preceded by the words "THE COLON."

"THE COLON OF" can only belong to one patient at a* time. It certainly belongs to a SINGLE patient. That it could belong to a* group of patients (that is, a number of patients that exceeds "the singular") is -- absent some pretty spectacular surgery -- unlikely.

I will now read more fully to see whether the words "the colon of" gave a* moment's pause to any of the judges or lawyers arguing for this singular (in the figurative sense) meaning for the word "a," or whether the dissenting judge or lawyers on the other side thought at all about colons in the anatomical, not the grammatical, sense, and the 1:1 correspondence between (colon) singular and patient (singular).

Generations, nay centuries, of patent lawyers have understood and used the indefinite article to mean AT LEAST ONE or, in an even more common formulation, ONE OR MORE. As has been taught for years, including both TO me and BY me, an* inventor could claim a* "chair having a leg ..." and the claim would read on a chair with one, two, three, four, or any number of legs. Beyond question, it would read on a* chair with a SINGLE leg.
* I intend here to give the words "a" and "an" their ordinary meaning, and the meaning that was generally accepted among patent lawyers until Braintree. That meaning is "one" or, to be polysyllabic and grammatical about it, "the singular."

Wednesday, April 2, 2014

Three (3) Ways the patent system promotes progress. Not 1. Not 2.

The patent system promotes progress in three ways.  At least three.  But certainly not one. And not two. They are: the carrot, the stick, and the "it's not all about you" factor: enriching the public domain.

Let me count the ways.

The first way patents promote progress is the one that comes to mind from the phrase "incentivizing the innovators" (see [n1] below).  The carrot of possible patent protection motivates people to come up with ideas, sometimes all on their own, sometimes because their knowledge and training convinces people with money to hire them to come up with ideas.  Then people (the same or different) spend some money on developing, commercializing, and marketing those ideas.  Obtaining a patent lets the people who own the patent exclude competition, albeit for a relatively short time (see [n2] below).  Those people may make more money and then they may decide to spend it on additional research and development.  Innovation happens.  Society benefits.

But that is not the end of the story about how the patent system promotes progress. We have to count past one to two and three.

Numbers two and three on the list of benefits are less obvious.  They also tend to be ignored by journalists, academics, judges, justices, and others who do not know all that much about the patent system.  In fact, this post was prompted by a talk I heard last May about patents as incentives to innovation. The talk was half over before the speaker mentioned the third benefit and ne never mentioned the second at all.

The second way patents promote progress is with a stick.  Other people's patents can stop you from doing what you want because of the threat of suit, or the owner's refusal to license you at a rate you can afford, or your refusal to deal with the owner because it is a fierce competitor or, what gets too much attention these days, a troll. But the stick of patent protection is more in the nature of a prod. You are always at liberty to come up with a better idea: in patent lingo, to "design around" the patent.  Patents, during their limited life, don't bar everything in the field, they only bar what is claimed. Alas, in at least the years since the 1982 creation of the Federal Circuit (the appeals court for patent cases), the Supreme Court has never used the phrase design around to describe one of the ways that patents "promote Progress in Useful Arts," the justification for patents given in the Constitution (Art. I, sec. 8, cl. 8). Why not? Everyone says "saying it does not make it so" (attribution unknown) but this is a case where
NOT saying it does not make it NOT so.
"Designing around" may lead to another patent because of that carrot, and then there will be another stick (prod) as well as benefit number three.

The third way patents promote progress is that they enrich the public domain, the public store of knowledge about how to do things.  In order to obtain a patent, the inventor must describe the invention so that other people can (in patent lingo:  are enabled to) make and use it.  "Enablement" has long been referred to as the quid pro quo for the patent "monopoly."  Anyone can read a patent and learn from it. That was true even before the internet. That rich store of free, accessible and relatively easy-to-search information is a huge benefit that we, the people, receive because we have a patent system. Yet the term public domain has been used only rarely by the Supreme Court in the last forty years in decisions about patent law, and then only to focus is on how a wrongly issued (invalid, overly broad, etc.) patent steals from the public domain. The only exception to that anti-patent bias is found in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 US 141, 151 (1989). Bonito Boats addressed a challenge not to a patent but to a state statute against copying boat hulls, and the opinion contains several references to the theft view of patents before acknowledging that:
"[T]he ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure."

I think the patent system -- and the statutes, the case law, the proposals for reform -- would be improved if people understood that it has more progress-promoting capability than just offering the promise of a time-limited monopoly.

(n1)  Jim Alexander, a student in my IP Survey course in 2007, was the first person I heard use this phrase.  I believe it originated with Prof. Katherine E. White. See her 2006 law review article: Preserving the Patent Process to Incentivize Innovation in Global Economy, 2006 Syracuse Sci. & Tech. L. Rep. (2006).

(n2) It is true that patents give patent owners' some rights but there are limits.
           A.    A patent gives the owner the right to exclude but only for a limited time.  Patents have expiration dates.  Before the expiration date, the owner must pay maintenance fees.  Once the patent expires, or once the fee hasn't been paid, the patent owner has no right to exclude. The patent has risen into (see [n3] below) the public domain.
           B.  A patent is a right to exclude not a right to do. That's because there may exist a patent #1, which gives owner #1 a right to exclude what patent owner #2 does, even though owner #2 has a patent. During the time that patent #1 is in effect, owner #2 has no absolute right to practice nis own patent but ne can: (1) wait until patent #1 rises into the public domain; (2) design around patent #1 (and maybe obtain patent #3), or (3) hope that owner #1 won't do anything. If that hope is dashed, owner #2 can choose to (a) change its business; (b) fight; or (c) take a license. Depending on how much #1 and #2 hate each other (and how good patent #3, if there is one, is as an alternative), owner #1 and owner #2 may decide to cross-license or merge. More innovation may emerge from that transaction and often does.

(n3)  At a conference on digitization at the University of Michigan in 2006, President Mary Sue Coleman gave excellent opening remarks about copyright and education and libraries.  I felt obliged to comment, however, when she said something about works "falling into" the public domain.  I pointed out that we ought to say that they RISE into the public domain.  When a piece of intellectual property passes from private hands to the public domain, the change should be likened to going to Heaven, not the other place, or to standing up and being counted, not to collapsing and being buried.  (I was unable to attend the afternoon session at that conference, but I was told that some speakers had changed their slides where they mentioned the public domain, crossing out the word "falling" and putting in the word "rising.")  Yes.

Drafted, but not posted, in May of 2013.
Minor revisions and posting: April 2, 2014; rev 20140523