Totally off topic, but I learned this morning that growth in IP value was the largest single driver of this last year’s record GDP growth. I hope that we all feel a certain warm satisfaction in knowing that we did our part for the economic recovery this year.
“The increase in nonresidential fixed investment reflected increases in equipment (led by information processing equipment) and in intellectual property products (led by software as well as research and development)…”
12.1.1.1
Yeah I can believe it. What with zoom and everyone needing support machines therefor etc. and everyone trying to shift to working from home.
12.1.1.1.1
Criminy, the filters are STILL active…
Your comment is awaiting moderation.
January 28, 2022 at 8:49 am
But 6, anything “working from home” would need be software related, and thus (according to the usual suspects) NOT be patent eligible.
Does this mean that the large underpinning to this (so-called) GDP growth is but a mirage?
11
So there appears to be a point of inflection around 2012/2013, where the rate of increase of wiki prior art rejections has slowed down after that point as compared to before that point. Not sure what that is telling us about what the PTO examiners are instructed to use as cited prior art in office actions.
To my mind, the politically smart play would be for Pres. Biden to put VP Harris in the open SCOTUS slot, to free up the VP slot for a more electorally promising political heir.
9.1.1
I could think of no WORSE position to award a prominent life time role as Supreme Court Justice than Kamala Harris.
That this idea even sees the light of being printed is a travesty of the unthinking and seriously ideology-impaired Liberal Left vacuity.
9.1.1.1
…should read: no worse person…
9.1.1.1.1
Yes.
Do you get paid for corrections too?
You haven’t said how much.
Yet.
9.1.1.1.1.1
Thank$ for your choice of posting a fallacy (hint: “too” is false).
9.1.1.1.2
Personally, we don’t think you should get paid for corrections.
Is there a union?
9.1.1.1.2.1
Thank$ for posting YOUR inanity of attempting to take my meme out of context.
9.1.1.1.2.1.1
So you DO get paid even for “corrections.”
Finally admitted, Snowflake.
…
Double coin for the double false projections.
SWEET !
9.1.1.2
I agree anon. Harris would be the ultimate legislator.
9.1.1.3
“the unthinking and seriously ideology-impaired Liberal Left vacuity”? Could you be any more ob nox ious?
9.1.1.3.1
Meh – don’t shoot the messenger.
9.1.1.3.1.1
I agree, Snowflake. You were paid how much for that?
Be specific.
9.1.1.3.1.1.1
Why are you insisting on asking a question (fallaciously) that not only have I set you straight on, but have reminded you that the answer (to the non-fallacious question) has already been given to you?
Well, we both know the answer to that question, eh?
Hint: you are 0bsessed with me.
…
Focus, Snowflake. It was a simple question.
…
Simple question – and as mentioned – the simple and direct answer as already been given (I do not gat paid for MY posts, but rather, I have enterprised off of your 0bsess10n with me)
Focus indeed.
…
You do not get paid for your posts [lol] after all the admissions.
Name 1 person who believes that, Snowflake. You do not count.
…
You are quite welcome for contributing to my enterprising – as only you can do.
Be that as it may, …
My pal Shifty, it matters not at all – and certainly not coming from you, what “anyone else believes.”
Further – you continue to attempt to misuse the word “admissions.”
Are you running out of tells?
9.1.1.4
Conspiracy theory: The executive branch is still in competition with the judicial branch, and such an appointment would go a long way to kill SCOTUS’s legitimacy (i.e., source of power).
9.1.1.4.1
um, ok I guess – but that thought has nothing at all to do with my view.
9.1.1.5
How would that work? Would Biden them get to pick anyone as his VP, or is it a Conga line where Pelosi (third in line to be president) becomes VP?
9.1.1.5.1
An open VP slot is just like any other opening in the executive branch: the president appoints with the advice and consent of the senate (see, e.g., Gerald Ford’s appointment by Pres. Nixon).
9.1.1.5.1.1
Thanks Greg – Ford is an excellent example, as it came out only later how the Political Party dynamics were in play to put Ford into a position to ascend (unelected) into presidency when he could not even corral even backing to be his party’s representative, but wielded enough power behind the scenes.
So who in the “D” party would be an analogue?
9.1.1.5.1.1.1
6,
Your thoughts here…?
…
I can’t follow what you guys are talking about, looks like near gibberish to me.
9.1.2
“To my mind, the politically smart play would be for Pres. Biden to put VP Harris in the open SCOTUS slot, to free up the VP slot for a more electorally promising political heir.”
I think that if one is willing to state that they’re solely optimizing for goal of the Democratic party winning the presidency in 2024, that the move you describe is close to objectively the best possible move.
9.1.2.1
Right. I am not saying that Harris to SCOTUS is the best move in all possible sense of “best.” My only point in 9.1 is that Harris to SCOTUS, followed by X to VP, it is the best way to achieve victory for the democratic presidential candidate in 2024. Right now my choice for X would Buttigieg, but I could easily be persuaded that there is a better choice (e.g., John Fetterman of PA).
9.1.2.1.1
What (serious question) has Buttigieg ever accomplished?
Blind (truly Lemming-like) following of the Liberal Left scripts really damages the shattered remains of Greg “I Use My Real Name” DeLassus’ credibility.
9.1.2.1.2
Filter again….
Your comment is awaiting moderation.
January 28, 2022 at 8:54 am
What (serious question) has Buttigieg ever accomplished?
Blind (truly Lemming-like) following of the Liberal Left scripts really damages the shattered remains of Greg “I Use My Real Name” DeLassus’ credibility.
9.1.3
Greg, Biden will be too old to run. You can see his advancing cognitive decline almost on a monthly basis.
Harris will just be pushed aside and there will be a new D candidate.
9.1.3.1
“Harris will just be pushed aside and there will be a new D candidate.”
I hope you’re right, but I apparently have less faith in the collective judgement of the Democratic party than you do.
9.1.4
“the politically smart play would be for Pres. Biden to put VP Harris in the open SCOTUS slot”
Not even sure if you’re joking or not right now.
9.1.4.1
Totally serious. I agree with NW that Biden should not run again (in a better world, he would not have run in 2020), which means that 2024 should be an open primary race. Biden cannot hand the nomination to his chosen successor, but he can give any such person a leg up by putting him/her in the spotlight. VP Harris’ turn in the spotlight has not shown her to good electoral effect, so the wise move is to get her out, and put in someone who can make better use of that spotlight.
How to get her out without it becoming an insult to her (an insult that she does not deserve, and which might alienate voters who like her)? By making her the historic first African-American woman on the SCOTUS, he honors her (not insults), while simultaneously clearing the way for a better 2024 candidate. It would be a deft political move. I am not saying that I expect such a move, but I would welcome it.
9.1.4.1.1
The Power position of a life-time role on the nation’s highest court…
… as a way of not insulting one of the most insulting VP’s of all time…?
Talk about
F
A
I
L
I
N
G
upward in glorious style…
9.1.4.1.2
“How to get her out without it becoming an insult to her (an insult that she does not deserve, and which might alienate voters who like her)?”
From what I hear she can’t even run her own office without being basically a workplace bully. So, I mean, maybe she does “deserve” it? I don’t mean to be mean to her but she’s havin’ like real troubles I hear.
In any event, all this is supposedly being done to “not insult” a lady that couldn’t get 1% of the vote in primary times by giving her extraordinary power for life in a position for which she’s probably not even half qualified for (0 judicial experience?). Ridiculous bro.
9.1.4.1.2.1
[S]he’s probably not even half qualified…
Whatever. I am not suggesting that Biden appoint someone obviously unqualified, like myself or Ivanka Trump. I am talking about the former attorney general of California. Whether there is someone out there who is “more qualified” than she is I cannot say. She would be fine.
“If we get behind this awful candidate that a fraction of our voters adore, we’ll win congress and be able to advance our goals!”
“I understand your logic. But the position of President is not a bargaining chip.”
-Likely conversation between Republicans from 2016
9.2
Actually, now that we are into quotas in our society, the next Scotus should be a Hispanic man.
9.2.1
… Asian Non-binary.
9.2.2
I disagree with both of you, they need to be a BLACK transbian at rock bottom bare minimum. Hopefully jewish religion to keep jewish representation on the court super high, and hopefully of hispanic lineage and with at least one muslim recent ancestor and at least 1/4 native american.
It’s the ONLY WAY bruhs!
Though I think personally the judge that stepped down should have waited until the next admin in a couple years :).
9.2.2.1
The rest of your intersectionalities I can countenance, but black just won’t cut it as you already have Thomas, and there are no Asians represented.
9.2.2.1.1
Yes but BLM was going on and all anon, gotta throw his base a lil somethin.
9.2.2.1.1.1
LOL – 6, do YOU really want to get into a “I’m the most victim” contest?
That’s not how intersectionality works, now is it?
BLM already has a rep – no rep for Asian.
End of story.
8
OT: breaking news is that Breyer has retired.
8.1
and should read: has announced his retirement.
My understanding is that he retires at the END of the current Supreme Court term (“By law, the U.S. Supreme Court’s term begins on the first Monday in October and goes through the Sunday before the first Monday in October of the following year. The Court is, typically, in recess from late June/early July until the first Monday in October.”
I fully support Biden being able to make his selection, and ALSO fully support the Senate (at its timing after any such selection and after Biden actually retires) to engage in ANY of its historical tactics.
Further, the fact that the talent pool for this extremely critical position was DE FACTO limited by ISMs and will not consider the full pool of possible candidates on the merits will — no doubt — be WRONGFULLY celebrated as some type of ‘good thing.’
Any rational person should v0m1t at such ‘reasoning.’
7
While, as others have noted, it’s a good place for subject research and identifying trustworthy, non-modifiable sources and citations, relying on the modifiable Wikipedia as prior art — or for that matter the also modifiable Wayback Machine . . . would be no different than relying on content-modifiable patents, patent applications, or non-patent literature.
6
Wikipedia per se as prior art — not so good. Although it is timestamped, those timestamps aren’t readily apparent and could be subject to manipulation.
However, Wikipedia almost always cites to secondary sources. These secondary sources are better sources of prior art.
For my money, Wikipedia’s best use is in describing what a general concept means — i.e., this is what XYZ means to those skilled in the art. Technical jargon is rarely found in a dictionary. However, I can almost always find an entry in Wikipedia that speaks to it.
6.1
WT, that to me makes much sense, but prompts a question.
At the USPTO, can it ever happen that an Examiner will put together a prima facie obviousness (or even novelty) attack using a citation to Wikipedia, one that is penetrating enough to shift the burden over to Applicant, to rebut the prima facie case?
Or is this notion of “shifting the burden” simply not available to the Examiner, not a feature of everyday ex Parte prosecution at the USPTO?
I have in mind that, at the USPTO, there is no burden on an Applicant to show that the claim and the prior art are separated by an inventive step whereas there is under the EPC and furthermore the statutory task of the Examiner at the EPO is to refuse patent applications that don’t meet the conditions of patentability.
6.1.1
After all these years of your posting on US patent law blogs, and you are not aware of how burden shifting works in US prosecution?
And you wonder why I call you a shill for the EP Uber Alles?
6.1.1.1
As I do no prosecution at the USPTO, anon, I’m not ashamed to admit that I do not understand “how burden shifting works” at the USPTO.
Let’s clarify what we mean by “burden shifting”. In every Patent Office in the world, the Office starts with the burden and issues an examination report whereupon Applicant has the burden of replying to it. Is that the shift you have in mind?
6.1.1.1.1
That is definitely how burden shifting works in the U.S., Max. As Wt notes, however, the bar that the examiner has to clear to shift the burden to the applicant is extremely low.
6.1.1.1.1.1
OK, Greg. But that sort of “burden” is a trivial one. How about the following hypo for a more serious burden.
Suppose we have litigation over a pharma claim and the petitioner for revocation files experimental prima facie evidence pointing to invalidity. As patent owner, you can reply with argument that the evidence has no weight. But could it be that the evidence is so good that it is effective to “shift the burden” obliging patent owner to file in reply more persuasive experimental evidence or see the claim go down?
6.1.2
At the USPTO, can it ever happen that an Examiner will put together a prima facie obviousness (or even novelty) attack using a citation to Wikipedia, one that is penetrating enough to shift the burden over to Applicant, to rebut the prima facie case?
Anything can happen. I’ve seen an examiner cite art that had a publication date after our priority date.
Or is this notion of “shifting the burden” simply not available to the Examiner, not a feature of everyday ex Parte prosecution at the USPTO?
At the USPTO — a rejection of “This claim is invalid — yo mamma — see Wikipedia” would probably be good enough for most examiners to believe that the burden has been shifted. In practice, what is necessary for “shifting the burden” is extremely minimal at the USPTO.
there is no burden on an Applicant to show that the claim and the prior art are separated by an inventive step
That’s because “an inventive step” is not part of US law. But then again, you already knew that.
6.1.2.1
Well yes, WT, of course I knew that. But nevertheless. The EPC defines “inventive” as “not obvious”. Within the EPC, “inventive” is the antonym of “obvious”, no more no less.
So, even at the EPO, in reality an Examiner argues that the subject matter is “obvious” and Applicant replies with evidence, argument and claim amendments, that the claimed subject matter is………not obvious.
So, given what you say, that an Examiner at the USPTO has “minimal” difficulty to dump on Applicant the burden of proving patentability, where’s the difference in practice, between the two Patent Offices, in everyday prosecution?
As to your point about a citation having a date of publication later than the effective filing date (EFD) of the claim, does it not depend on what the reference is being cited for? If for example it is for what was common general knowledge (cgk) at the EFD why shouldn’t a trext book published a week later than the EFD be powerful evidence of what was the cgk one week earlier?
6.1.2.1.1
Are you imputing that cgk is a US legal construct, or are you doing that EP Uber Alles thing again?
6.1.2.1.1.1
Neither, anon. I’m just curious. When a court in England looks at a patent claim, the core preparatory task it gives itself is to “don the mantle” of, and stand in the shoes of, the notional “person skilled in the art”. In order to do that, it needs to know the cgk in the art. If there is a dispute between the adversarial parties about what is the cgk, then it is resolved by cross-examining the opposed technical experts, in open court, before the eyes and ears of the judge.
I don’t see how any court can construe a claim or decide on its validity, without having educated itself as to the cgk. If you can see that, tell me how it’s done, please.
Totally off topic, but I learned this morning that growth in IP value was the largest single driver of this last year’s record GDP growth. I hope that we all feel a certain warm satisfaction in knowing that we did our part for the economic recovery this year.
link to bea.gov
From pharma and related?
“The increase in nonresidential fixed investment reflected increases in equipment (led by information processing equipment) and in intellectual property products (led by software as well as research and development)…”
Yeah I can believe it. What with zoom and everyone needing support machines therefor etc. and everyone trying to shift to working from home.
Criminy, the filters are STILL active…
Your comment is awaiting moderation.
January 28, 2022 at 8:49 am
But 6, anything “working from home” would need be software related, and thus (according to the usual suspects) NOT be patent eligible.
Does this mean that the large underpinning to this (so-called) GDP growth is but a mirage?
So there appears to be a point of inflection around 2012/2013, where the rate of increase of wiki prior art rejections has slowed down after that point as compared to before that point. Not sure what that is telling us about what the PTO examiners are instructed to use as cited prior art in office actions.
Looks like it might be good.
link to ipwatchdog.com
Off topic, but I see that CAFC Judge Tiffany Cunningham’s name is in the short list of replacement candidates for retiring Justice Breyer.
link to jabberwocking.com
To my mind, the politically smart play would be for Pres. Biden to put VP Harris in the open SCOTUS slot, to free up the VP slot for a more electorally promising political heir.
I could think of no WORSE position to award a prominent life time role as Supreme Court Justice than Kamala Harris.
That this idea even sees the light of being printed is a travesty of the unthinking and seriously ideology-impaired Liberal Left vacuity.
…should read: no worse person…
Yes.
Do you get paid for corrections too?
You haven’t said how much.
Yet.
Thank$ for your choice of posting a fallacy (hint: “too” is false).
Personally, we don’t think you should get paid for corrections.
Is there a union?
Thank$ for posting YOUR inanity of attempting to take my meme out of context.
So you DO get paid even for “corrections.”
Finally admitted, Snowflake.
Double coin for the double false projections.
SWEET !
I agree anon. Harris would be the ultimate legislator.
“the unthinking and seriously ideology-impaired Liberal Left vacuity”? Could you be any more ob nox ious?
Meh – don’t shoot the messenger.
I agree, Snowflake. You were paid how much for that?
Be specific.
Why are you insisting on asking a question (fallaciously) that not only have I set you straight on, but have reminded you that the answer (to the non-fallacious question) has already been given to you?
Well, we both know the answer to that question, eh?
Hint: you are 0bsessed with me.
Focus, Snowflake. It was a simple question.
Simple question – and as mentioned – the simple and direct answer as already been given (I do not gat paid for MY posts, but rather, I have enterprised off of your 0bsess10n with me)
Focus indeed.
You do not get paid for your posts [lol] after all the admissions.
Name 1 person who believes that, Snowflake. You do not count.
You are quite welcome for contributing to my enterprising – as only you can do.
Be that as it may, …
My pal Shifty, it matters not at all – and certainly not coming from you, what “anyone else believes.”
Further – you continue to attempt to misuse the word “admissions.”
Are you running out of tells?
Conspiracy theory: The executive branch is still in competition with the judicial branch, and such an appointment would go a long way to kill SCOTUS’s legitimacy (i.e., source of power).
um, ok I guess – but that thought has nothing at all to do with my view.
How would that work? Would Biden them get to pick anyone as his VP, or is it a Conga line where Pelosi (third in line to be president) becomes VP?
An open VP slot is just like any other opening in the executive branch: the president appoints with the advice and consent of the senate (see, e.g., Gerald Ford’s appointment by Pres. Nixon).
Thanks Greg – Ford is an excellent example, as it came out only later how the Political Party dynamics were in play to put Ford into a position to ascend (unelected) into presidency when he could not even corral even backing to be his party’s representative, but wielded enough power behind the scenes.
So who in the “D” party would be an analogue?
6,
Your thoughts here…?
I can’t follow what you guys are talking about, looks like near gibberish to me.
“To my mind, the politically smart play would be for Pres. Biden to put VP Harris in the open SCOTUS slot, to free up the VP slot for a more electorally promising political heir.”
I think that if one is willing to state that they’re solely optimizing for goal of the Democratic party winning the presidency in 2024, that the move you describe is close to objectively the best possible move.
Right. I am not saying that Harris to SCOTUS is the best move in all possible sense of “best.” My only point in 9.1 is that Harris to SCOTUS, followed by X to VP, it is the best way to achieve victory for the democratic presidential candidate in 2024. Right now my choice for X would Buttigieg, but I could easily be persuaded that there is a better choice (e.g., John Fetterman of PA).
What (serious question) has Buttigieg ever accomplished?
Blind (truly Lemming-like) following of the Liberal Left scripts really damages the shattered remains of Greg “I Use My Real Name” DeLassus’ credibility.
Filter again….
Your comment is awaiting moderation.
January 28, 2022 at 8:54 am
What (serious question) has Buttigieg ever accomplished?
Blind (truly Lemming-like) following of the Liberal Left scripts really damages the shattered remains of Greg “I Use My Real Name” DeLassus’ credibility.
Greg, Biden will be too old to run. You can see his advancing cognitive decline almost on a monthly basis.
Harris will just be pushed aside and there will be a new D candidate.
“Harris will just be pushed aside and there will be a new D candidate.”
I hope you’re right, but I apparently have less faith in the collective judgement of the Democratic party than you do.
“the politically smart play would be for Pres. Biden to put VP Harris in the open SCOTUS slot”
Not even sure if you’re joking or not right now.
Totally serious. I agree with NW that Biden should not run again (in a better world, he would not have run in 2020), which means that 2024 should be an open primary race. Biden cannot hand the nomination to his chosen successor, but he can give any such person a leg up by putting him/her in the spotlight. VP Harris’ turn in the spotlight has not shown her to good electoral effect, so the wise move is to get her out, and put in someone who can make better use of that spotlight.
How to get her out without it becoming an insult to her (an insult that she does not deserve, and which might alienate voters who like her)? By making her the historic first African-American woman on the SCOTUS, he honors her (not insults), while simultaneously clearing the way for a better 2024 candidate. It would be a deft political move. I am not saying that I expect such a move, but I would welcome it.
The Power position of a life-time role on the nation’s highest court…
… as a way of not insulting one of the most insulting VP’s of all time…?
Talk about
F
A
I
L
I
N
G
upward in glorious style…
“How to get her out without it becoming an insult to her (an insult that she does not deserve, and which might alienate voters who like her)?”
From what I hear she can’t even run her own office without being basically a workplace bully. So, I mean, maybe she does “deserve” it? I don’t mean to be mean to her but she’s havin’ like real troubles I hear.
In any event, all this is supposedly being done to “not insult” a lady that couldn’t get 1% of the vote in primary times by giving her extraordinary power for life in a position for which she’s probably not even half qualified for (0 judicial experience?). Ridiculous bro.
[S]he’s probably not even half qualified…
Whatever. I am not suggesting that Biden appoint someone obviously unqualified, like myself or Ivanka Trump. I am talking about the former attorney general of California. Whether there is someone out there who is “more qualified” than she is I cannot say. She would be fine.
“Whatever”
She would be fine.”
Because “Greg said so.”
See: link to patentlyo.com
Greg, I understand your logic.
But the position of Supreme Court Justice is not a bargaining chip.
[T]he position of Supreme Court Justice is not a bargaining chip.
Since when?
“If we get behind this awful candidate that a fraction of our voters adore, we’ll win congress and be able to advance our goals!”
“I understand your logic. But the position of President is not a bargaining chip.”
-Likely conversation between Republicans from 2016
Actually, now that we are into quotas in our society, the next Scotus should be a Hispanic man.
… Asian Non-binary.
I disagree with both of you, they need to be a BLACK transbian at rock bottom bare minimum. Hopefully jewish religion to keep jewish representation on the court super high, and hopefully of hispanic lineage and with at least one muslim recent ancestor and at least 1/4 native american.
It’s the ONLY WAY bruhs!
Though I think personally the judge that stepped down should have waited until the next admin in a couple years :).
The rest of your intersectionalities I can countenance, but black just won’t cut it as you already have Thomas, and there are no Asians represented.
Yes but BLM was going on and all anon, gotta throw his base a lil somethin.
LOL – 6, do YOU really want to get into a “I’m the most victim” contest?
That’s not how intersectionality works, now is it?
BLM already has a rep – no rep for Asian.
End of story.
OT: breaking news is that Breyer has retired.
and should read: has announced his retirement.
My understanding is that he retires at the END of the current Supreme Court term (“By law, the U.S. Supreme Court’s term begins on the first Monday in October and goes through the Sunday before the first Monday in October of the following year. The Court is, typically, in recess from late June/early July until the first Monday in October.”
See link to uscourts.gov
I fully support Biden being able to make his selection, and ALSO fully support the Senate (at its timing after any such selection and after Biden actually retires) to engage in ANY of its historical tactics.
Further, the fact that the talent pool for this extremely critical position was DE FACTO limited by ISMs and will not consider the full pool of possible candidates on the merits will — no doubt — be WRONGFULLY celebrated as some type of ‘good thing.’
Any rational person should v0m1t at such ‘reasoning.’
While, as others have noted, it’s a good place for subject research and identifying trustworthy, non-modifiable sources and citations, relying on the modifiable Wikipedia as prior art — or for that matter the also modifiable Wayback Machine . . . would be no different than relying on content-modifiable patents, patent applications, or non-patent literature.
Wikipedia per se as prior art — not so good. Although it is timestamped, those timestamps aren’t readily apparent and could be subject to manipulation.
However, Wikipedia almost always cites to secondary sources. These secondary sources are better sources of prior art.
For my money, Wikipedia’s best use is in describing what a general concept means — i.e., this is what XYZ means to those skilled in the art. Technical jargon is rarely found in a dictionary. However, I can almost always find an entry in Wikipedia that speaks to it.
WT, that to me makes much sense, but prompts a question.
At the USPTO, can it ever happen that an Examiner will put together a prima facie obviousness (or even novelty) attack using a citation to Wikipedia, one that is penetrating enough to shift the burden over to Applicant, to rebut the prima facie case?
Or is this notion of “shifting the burden” simply not available to the Examiner, not a feature of everyday ex Parte prosecution at the USPTO?
I have in mind that, at the USPTO, there is no burden on an Applicant to show that the claim and the prior art are separated by an inventive step whereas there is under the EPC and furthermore the statutory task of the Examiner at the EPO is to refuse patent applications that don’t meet the conditions of patentability.
After all these years of your posting on US patent law blogs, and you are not aware of how burden shifting works in US prosecution?
And you wonder why I call you a shill for the EP Uber Alles?
As I do no prosecution at the USPTO, anon, I’m not ashamed to admit that I do not understand “how burden shifting works” at the USPTO.
Let’s clarify what we mean by “burden shifting”. In every Patent Office in the world, the Office starts with the burden and issues an examination report whereupon Applicant has the burden of replying to it. Is that the shift you have in mind?
That is definitely how burden shifting works in the U.S., Max. As Wt notes, however, the bar that the examiner has to clear to shift the burden to the applicant is extremely low.
OK, Greg. But that sort of “burden” is a trivial one. How about the following hypo for a more serious burden.
Suppose we have litigation over a pharma claim and the petitioner for revocation files experimental prima facie evidence pointing to invalidity. As patent owner, you can reply with argument that the evidence has no weight. But could it be that the evidence is so good that it is effective to “shift the burden” obliging patent owner to file in reply more persuasive experimental evidence or see the claim go down?
At the USPTO, can it ever happen that an Examiner will put together a prima facie obviousness (or even novelty) attack using a citation to Wikipedia, one that is penetrating enough to shift the burden over to Applicant, to rebut the prima facie case?
Anything can happen. I’ve seen an examiner cite art that had a publication date after our priority date.
Or is this notion of “shifting the burden” simply not available to the Examiner, not a feature of everyday ex Parte prosecution at the USPTO?
At the USPTO — a rejection of “This claim is invalid — yo mamma — see Wikipedia” would probably be good enough for most examiners to believe that the burden has been shifted. In practice, what is necessary for “shifting the burden” is extremely minimal at the USPTO.
there is no burden on an Applicant to show that the claim and the prior art are separated by an inventive step
That’s because “an inventive step” is not part of US law. But then again, you already knew that.
Well yes, WT, of course I knew that. But nevertheless. The EPC defines “inventive” as “not obvious”. Within the EPC, “inventive” is the antonym of “obvious”, no more no less.
So, even at the EPO, in reality an Examiner argues that the subject matter is “obvious” and Applicant replies with evidence, argument and claim amendments, that the claimed subject matter is………not obvious.
So, given what you say, that an Examiner at the USPTO has “minimal” difficulty to dump on Applicant the burden of proving patentability, where’s the difference in practice, between the two Patent Offices, in everyday prosecution?
As to your point about a citation having a date of publication later than the effective filing date (EFD) of the claim, does it not depend on what the reference is being cited for? If for example it is for what was common general knowledge (cgk) at the EFD why shouldn’t a trext book published a week later than the EFD be powerful evidence of what was the cgk one week earlier?
Are you imputing that cgk is a US legal construct, or are you doing that EP Uber Alles thing again?
Neither, anon. I’m just curious. When a court in England looks at a patent claim, the core preparatory task it gives itself is to “don the mantle” of, and stand in the shoes of, the notional “person skilled in the art”. In order to do that, it needs to know the cgk in the art. If there is a dispute between the adversarial parties about what is the cgk, then it is resolved by cross-examining the opposed technical experts, in open court, before the eyes and ears of the judge.
I don’t see how any court can construe a claim or decide on its validity, without having educated itself as to the cgk. If you can see that, tell me how it’s done, please.