PTO’s Strategic Plan

The PTO has released a draft “strategic plan” for the next five years. (2007–2012). I have not had a chance to review the draft yet except to note that the PTO continues to see human resources as its greatest challenge.  One interesting bit may foreshadow future changes:

An open question that the USPTO will address [is whether] there is some combination of examination processes and patent products that will better allow applicants to choose what determinations and results they need and what are the most efficient processes to pursue those results and at the same time provide a more efficient use of the examination resources of the USPTO by only providing the level of examination required by the applicant. 

Anyone in practice will agree that patents on biotech and pharmaceutical inventions are pursued in a much different fashion than are most mechanical or electrical type applications. An upcoming academic conference at Michigan will focus on this “diversity in innovation” and will focus on whether our current unified system should remain so. As with many of the trends in patent law today, Mark Lemley is out in front on this one as well.

Besides diversity across areas of technology, there is also a diversity amongst what patent owners want from the patent system.  A so-called “gold plated” system was proposed by Lemley, Doug Lichtman, and Bhaven Sampat earlier this year.

The PTO is asking for comments and will hold a public forum on September 26, 2006 at the Office.

Documents:

26 thoughts on “PTO’s Strategic Plan

  1. Tom – I think the in the situation you described, a first action (102) that does not meet the elements of the claims, followed by a second action (103) that does meet the elements and is made final would be an inappropriate final rejection by the office. I would insist that the examiner make the second action non-final. If they refused I would contact that examiner’s SPE or Director if the need should arise. It’s important to push examiners to make second action non-final rejections when their previous rejection was not founded. A second action non-final rejection is a lose lose situation for an examiner. They will quickly either learn to make better first action rejections or be unable to make their production requirements and no longer be an examiner. Good for the office and better for examination either way.

    Certainly the situation you described is a very poor understanding on the part of the examiner with regards to 112 6th paragraph. The office certainly should do a better job of explaining that section to the examiners, but I get the feeling that at least some in the office feel that it’s a section in flux and extensive training to examiners would not be the best use of resources. I could be wrong… just a feeling.

    As for the examiners being technically sufficient in their art, I think the office and the practitioners could both improve in this area. Perhaps this is just an unavoidable situation born of the fact that patent law by its nature is often pushing the envelope of technology and education. The patent office generally concentrates its resources training the legal aspect of the job instead of continued education in the technical aspects. In this regard the practitioners can often be their own best assistance. Several large clients have taken the time to introduce new technology to the examiners in various presentations. These can certainly be helpful to raise the overall understanding of examiners and the quality of the art cited in rejections. Of course better disclosures by the client would certainly enhance prosecution as well.

    Pds – I think my statements about the claiming of overly broad scope in emerging techs is often do to a lack of prior art in the area. An established prior art base not only helps examiners to examine, but also practitioners to clearly and concisely claim subject matter. I certainly agree with you that both parties benefit from claims consistent in scope with the invention.

    I don’t like the comparison with the driver’s license because of the situation with excluding the rights of others. It would be more akin to the DOT providing you a license that excluded others in the public from driving on a certain area of town or street without your permission. Obviously in that situation the DOT would have to be much more careful whom it gave IDs to. Again, this is not a registration system. Some of the work of the courts has been pushed back to the PTO to protect the public domain from overly broad patent rights. Also the statutes are broad and subject to interpretation. If the only obligation of the office were 112 issues I could see your point more clearly. However the office must determine issues of obviousness and claim scope. Without an adversarial system the office could either arbitrarily decide the scope of a claim with no PTO provided recourse to the inventor, or it could allow inventors to solely define the scope of their own claims. If you want to encourage balance, then you are going to need competing interest. I like this economic model solution. Give both parties some resource and allow them to bargain for the best possible outcome for themselves. But then perhaps I’ve just been reading too much Posner lately.

    I can understand the frustration when this system doesn’t appear to be working because of bad execution, but the problem in that situation is the execution and not the philosophy. In that case, we should try to address those problems to improve the system. With regards to the cited constitutional article, I think the other end of that argument is with the stated words Inventors and Discoveries. The office must establish that one is truly an inventor and discoverer of an invention before administering those rights.

    As for the culture at the office that allowances should not be granted on first action, I believe the offices current statistics are such that 30% of all allowances are on first action. This is an alarmingly high rate. Over half of the discovered errors in allowances are found in actions that were allowed on first action (this is both the finding of the office and that of independent reviewers). That would mean that a case is more than twice as likely to be an error if it was allowed on first action. I think much of this comes from the fact that as the system is currently administered, an allowance is not further reviewed by either party. Further, examiners are given strong production incentives to allow cases on first action, which opens the door to possible abuse by less scrupulous examiners. Whatever the reason, if the office can actually encourage examiners to cite the best possible art and attempt to make a rejection on first action to most cases, I think it would actually enhance the quality of patents allowed. Examiners would be forced to consider the case and it’s claims twice instead of once and the record would at least be clear to the courts what the examiner felt was the scope of the claims. Yes I realized that this could encourage bad rejections on first action, but I’m again less concerned with non-final bad rejections as I am with bad allowances. A bad first rejection also encourages the applicants to respond by clarifying their invention and how it is claimed. This can be very useful to the courts. At the point the examiner must do a second action he is still given a stronger incentive to allow the case based on production. Practitioner’s insistence on second action non-final rejections after a bad rejection actually enhances this incentive.

    Either way I’ve enjoyed reading all of the responses. In think all parties really want to improve the system, but at this time I do think we have the best system in the world (a situation sometimes forgotten). The last 3 years has been the first time that I can remember that the pool of examiners has actually increased by a greater rate than the filed applications. I think this is an encouraging first step and can ultimately fix many of the problems we’ve been discussing.

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  2. **Arts that are more undeveloped inherently lead to more errors and more poorly trained examiners. It also leads to a temptation to claim grossly overly broad claims by the applicant.**

    I think you overestimate the desire for an applicant to “claim grossly overly broad claims.” I have no doubt that overly broad claims have been claimed in the past, but this is more likely a result of the applicant/attorney not being aware of the best prior art, than the applicant/attorney wanting overly broad claims. The reason why an applicant/attorney does not want overly broad claims to be issued is that overly broad claims are easily invalidated. I would rather have a valid, yet narrower claim than a very broad claim that I knew could be easily invalidated.

    **I agree with this, however that encouragement must be tempered by a desire not to burden the economy with redundant or non-inventive patents.**
    No disagreement here. However, if the Patent Office improperly sets the bar too high with “bad rejections,” then these actions by the Patent Office frustrate the desire set forth in Article 1, Section 8 of the U.S. Constitution to “promote the Progress of Science and useful Arts.” As also stated, this promotion is done by “securing for limited Times to … Inventors the exclusive Right to their … Discoveries.”

    **Again, if examiners are not advocating the rights of the public domain, then no real party of interest is. No balance can be had if all parties are working to allow patents.**
    I again refer to my driver’s license analogy. The rights of the public is served when improperly trained and/or qualified drivers are prevented from obtaining a driver’s license. These protection of these rights, however, do not require an “adversarial process.” So long as the application (for either patent or driver’s license) meets the statutory requirements, then the application should be received favorably. The next time you go into the DMV to renew your driver’s license, do you want the person on the other side of the counter looking to find any excuse to prevent you from renewing your driver’s license?

    I see the “any excuse” from the Patent Office all the time. I referred to these earlier as “bad rejections.” I see these “bad rejections” as the Examiner’s attempt to prevent a patent from issuing because the culture at the Patent Office is that an allowance should never be granted in a first action. As I noted earlier, I don’t have a problem when a rejection is withdrawn after a single response, but I definitely take issue with these types of rejections when the are repeated in the face of well-reasoned and detailed arguments.

    Your comments on the MPEP and training are well taken. However, from my point of view, the examiner’s should understand a little something about case law, particularly when a lot of them cite case law. Since attorneys cite cases back to the examiners, it would be valuable to an examiner to understand why the case law is being cited (or even the concept of precedent and the interrelationship by law, rules, and case law).

    There is more to case law than the little snippets provided in the MPEP. Case law isn’t that difficult to understand. It just takes a little training (and experience). In law school, most law students begin to “get” case law by the end of their first year (if not, they usually don’t make it). If anything, all I would ask an examiner to do before they cite a particular case is to read that case. There is a lot of value for both attorneys and examiner alike to read the case law being cited.

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  3. Anon, you write a very persuasive argument as to why the PTO does a good job of examining. Unfortunately, it is not consistent with what I see as a practitioner. Maybe this is indicative of part of the problem – the PTO does not recognize where the problem lies.

    As I indicated in my previous post, I’ve been told by primary examiners that they have directives to examine in a manner inconsistent with the MPEP. I am sure the PTO does not feel that these are bad rejections.

    Regarding means plus function claims: I have had no problems with the examiners recognizing that 112 para 6 applies. But, I have been told by examiners that they only look for prior art having that function regardless of the structure performing that function. I always respond by pointing out the appropriate sections of the MPEP and then I identify where the specification discloses the structure corresponding to the function. Sometimes the examiners listen, but most times, the examiners maintain the rejection based solely on identity of function with no discussion of why the structure would be considered equivalent. When I appeal, I win before the appeal makes its way to the Board, but, again, not many of my clients have the deep pockets to file an appeal.

    ** As for the line “Ideally a first rejection would be relatively broad and each subsequent rejection would grow more narrow along with the scope of the claims”, although perhaps not as clear as it could be, I mean to say that the rejection broadly interprets the claims then reads on as much of the claimed subject matter as possible. **

    I get many anticipation rejections where the cited art does not contain all the claimed elements and/or all the claimed limitations. Without question, this is a bad rejection. In the second office action, I get an obviousness rejection (on claims that were not amended) because the examiner finally did what should have been done in the first office action. I consider the second rejection a bad rejection because it is typically a final rejection and the examiner did not find the best art the first go-around, which reduces my ability to respond. Sometimes the second rejection is a bad rejection on its own because the examiner did not make a prima facie case of obviousness as required by the MPEP or the examiner just makes a blanket statement that it is obvious without giving any reason.

    When I respond to a bad rejection, I always cite the MPEP. I learned long ago that citing case law is only useful when I want to build a case for filing an appeal. I don’t expect examiners to be conversant in the law, but I do expect them to follow the MPEP. I also wish they were sufficiently technically proficient that they could read and understand the art they cite.

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  4. Well I wasn’t expecting my comments to be taken lightly… But I will still take a shot at defending…

    First with regards to the stats I listed (8% bad rejections). As I stated before, the office randomly reviews both allowances and total case histories of pending applications. On the latter, the case is reviewed for both administrative issues and for the quality of the rejections based on the art that is cited (or not cited) and the clarity and accuracy of the rejection. Each group has a different error rate of course. The one number I’m away of is 8% for the largest of the patent groups. That group similarly has a 4% allowance error rate. These numbers are in line with the numbers published to the senate yearly and also the yearly goals of the office.

    To Elizabeth, I agree that the numbers are likely not random, however if the error rate is still a total of 8% then overlap of errors by one examiner tend to lead to an easier solution (that being indicative of a lower average error rate per examiner), training or firing the offending examiners. Also, examiners are still heavily encouraged to allow cases by the system of incentives that are currently in place. An appeal to an examiner now involves not only a lengthy reply to an appeal brief, but also a mandatory meeting with two senior examiners or supervisors in the art. All parties in the meeting must agree to pursue the appeal before the office will consent to allow the standing rejection. The office has made an effort to be more discriminating in the cases it pushes up to the board in more recent times. I don’t have the numbers in front of me, but last I heard at least the one group I am familiar with was splitting about 50/50 on decisions at the board, a very reasonable number.

    Of course some groups are not as good as others in the office. This has more to do with art and hiring than anything else. Arts that are more undeveloped inherently lead to more errors and more poorly trained examiners. It also leads to a temptation to claim grossly overly broad claims by the applicant. As the art becomes more developed the applicants will commit to a more standardized language and the examiners will cite better art with better rejections. I don’t know if I think that 80% is at all accurate, but then never ask one side of a party if they are the one doing the wrong or being wronged.

    As for the adversarial system, I was speaking in a hypothetical tone, but in reality this system already exist. Pds has said that the patent system exist to encourage inventors to disclose their inventions. I agree with this, however that encouragement must be tempered by a desire not to burden the economy with redundant or non-inventive patents. The office is in a tenuous position in that regard. I believe the rules and procedures the office (along with Congress and the SCOTUS) as a whole has provided allow for this balance to be maintained through the use of the adversarial system I described. Again, if examiners are not advocating the rights of the public domain, then no real party of interest is. No balance can be had if all parties are working to allow patents. Having said that, I don’t think examiners are opposed to allowances. An ideal situation for an examiner is to have an allowance on a worth invention with narrow and clearly defined claims. Practitioners would obviously like the claims to be more broad in scope. The adversarial relationship is between the scope of the claims, and not the allowance of a patent for the most part.

    With regards to Tom, I also think examiners should follow the MPEP in formulating their rejections. As pds also said before, examiners are not as trained in the law as lawyers are, however to be fair they generally are at least, if not more, trained than agents. Nor do I think that situation will ever change. Considering the fluid nature of case law and rather conflicting nature of various decisions, it’s likely best that examiners are not trained to interpret and cite case law. The office currently works by allowing a few well trained lawyers working for the public to consider and analyze all new case law relating to patent examining. Whatever changes to policy are considered relevant to the job are then passed down to examiners through the MPEP and training. This is ideal to provide a uniform interpretation of the law to the public in all proceedings. An excellent example would be Phillips compared to Texas Digital. The MPEP still reflects the practice as defined by Texas Digital, and as such cases are still examined relatively independent of the specification, relying instead on the plain meaning of the claims. At some point the office may decide to change this policy and confirm more to an understanding more consistent with Phillips. However, can you imagine the mayhem inherent upon examiners deciding independently what standard to follow based on their own interpretation of the CAFC? There would be no chance for consistent rulings from any one group or art. The luck of the draw would eventually define the scope of the claims allowed. Courts would then need to decide which standard the examiner personally considered when deciding why the case was allowed, and what limitations are inherent in the claim language. Examiners are not taught, on the whole, how to interpret case law for a reason. It’s better to broadly determine the intent of case law and then apply a set of general rules that examiners can follow consistent across the entire office. While this may sometimes lead to discrepancies between the rules and case law intent, the result is far superior to no universal standard at all. Of course practitioners are welcome, and often do, educate examiners are their occasional misuse of case law. Examiners have been known to occasionally inform practitioners of their mistakes as well.

    Finally with regards to office policy that differs from the MPEP, I know of only a very few instances where this is the case. You mentioned 112 6th, and this would be one of the instances. In arts where examiners do not often see 112 6th issues, it is not uncommon for the supervisor or primary to discourage examiners from assuming that a claim is written in 112 6th form unless explicitly told to do so by the applicant, or unless no other interpretation can be made. In many arts 112 6th paragraph claims can be significantly more narrow than the applicant intends. Often applicants will intend to claim structural elements along with some functional language, but will do so with some error. In those arts where this form is uncommon it quite possibly could be in error because of inexperience by the practitioner. In these cases in can certainly expedite prosecution to consider more broadly the possible scope of the claim and apply art accordingly. I have no doubt that you understand where and how 112 6th should be used, but this is more of an issue of protecting the rights of the inventor at the expense of slightly longer prosecution. It is not an office policy, so far as I’m aware, rather a suggestion by more experienced examiners.

    As for the line “Ideally a first rejection would be relatively broad and each subsequent rejection would grow more narrow along with the scope of the claims”, although perhaps not as clear as it could be, I mean to say that the rejection broadly interprets the claims then reads on as much of the claimed subject matter as possible. This then better informs the applicant which subject matter is anticipated and how to proceed further. The applicant then narrows his claims and the following rejection, if one is warranted, is narrower as well, covering only that scope (or part of the scope) that is still anticipated. I hope that makes more sense now.

    As for the idea of a judge deciding between examiners and practitioners, I would support such a system as well. However it is such a large expenditure over the current system that I doubt it would ever come to fruition. I don’t think that examiners fit the role of Judge currently. It can certainly seem that way, but both parties have shared control over the proceedings. Applicants are free to amend claims at will for instance. As both parties are tasked with both providing prima facie case and challenging the case of the other party, I think my analogy of a shared judgeship is at least somewhat reasonable. Surely it is weighted in the favor of the examiner, but ultimately the examiner is “buying” the invention from the inventor through exchange of rights. As such, that position is natural.

    My last comment that you refer too was a little confusing. I mean to say this… Inventors who spend more money on representation will get better representation before the office and likely greater scope of protection for their invention (assume ‘on average’ after every line). Likewise, poor representation can result in their rights not being granted at all in some situations. A more socialist view might be to take the issue of money out of the equation and give all inventors an equal chance at obtaining rights regardless of representation. This would be something more along the lines of a registration system instead of a rigorous review or adversarial system. Ultimately though, I don’t think that is a system we want to encourage. That is entirely a philosophical debate however, and quite possible could or should have been left off my earlier post.

    I have undoubtedly missed points that were raised above, and I apologize for that. Please feel free to raise them again and I will be certain to address them as best I can. Of course I am limited to my poor engineering background writing skills… so some degree of understand is required. ;-)

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  5. “If the office had a random degree of bad rejections (I understand it’s not really random, but lets assume for the moment) of say 10% (it actually runs about 8% according to most recent numbers I have seen). Then on average the chance of the inventor receiving two subsequent bad rejections is somewhere on the order of 1%.”

    Even if we were to grant your first statistic, the second only follows if the two actions are independent. In fact, they will almost always be made by the same examiner, and are likely to be highly correlated. In other words, once a bad rejection is made, the tendency is for the examiner to dig in and hold onto it for all it’s worth, forcing an appeal.

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  6. **If the office had a random degree of bad rejections (I understand it’s not really random, but lets assume for the moment) of say 10% (it actually runs about 8% according to most recent numbers I have seen).**

    I disagree with Anon’s statement of bad rejections numbering only 8%. To me, a bad rejection is one that is not supported by the references, the Rules, or the MPEP. By not supported by the references, I mean that the cited art either fails to identify all the claimed elements or, if it does, the art fails to identify the elements having all the limitations and/or the claimed relationship between the elements. I notice many bad rejections ignore one or more claim limitations. I do not consider a lack of showing motivation to combine as a bad rejection for obviousness.

    My experience is similar to that cited by pds. About 80% of the rejections I receive are bad rejections.

    I often ask the primary examiner during interviews why the MPEP was not followed in making the rejection. Many times I am told that there is a directive to examine that aspect in a manner different than stated in the MPEP. (Is there a patent attorney out there that has not received a rejection on a means-plus-function claim based on identify of function without consideration of the corresponding structure? A few weeks ago a primary told me that the rejection of the means claim was per a directive that differed from the MPEP guidelines, which are based on caselaw.) Bad rejections are not always because of a bad examiner. Oftentimes a bad rejection results from an examiner being directed to examine differently than as directed by the rules and MPEP.

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  7. **I believe that to take the best of the Free Market (or even the best of our court system) it is vital to establish an adversarial system in patent examining. Inventors should have a representative trying to maximize the rights of the inventor (trying to increase the scope of protection for his invention) while the public should have a representative (trying not to decrease the scope of their protection in the public domain).**

    I strongly disagree with this approach. As I’ve noted before, the purpose of the USPTO is to provide incentives for inventors to “invent, invest in, and disclose new technology worldwide.” This will not occur if the Examiner’s goal is to prevent a patent from issuing, which is adversarial to the patent attorney’s goal of obtaining a patent. This is what an adversarial system is all about: one side wins and the other side loses.

    Actually, I think you need to rethink what it would take to get an adversarial system at the patent office. As it stands now (the way obtaining a patent should happen), is that an applicant submits an application, and the examiner performs a quasi-judicial function by evaluating the application and determining whether or not the application has met all the requirements set forth to obtain a patent.

    Your approach would require two roles, one role as the advocate for the “public,” in opposition to the applicant, and an impartial judge/jury (i.e., the person charged with making the final decision). Otherwise, if the examiner acts as both the “prosecutor” and “judge,” odds are that the defendant (i.e., the inventor) will rarely win. Think about it for a second. If you were charged with a crime (that you didn’t commit) and went to court, would you feel comfortable if the roles of both prosecutor and judge were filled by the same person?

    You address this somewhat when you stated:
    **The system is unique in that no party is identified as a judge or jury at the lowest level, but thanks to the strict rules each follows, both essentially fill the role of judge in their responses.**
    Neither side (alone or combined) can (or should) be the judge. In an adversarial system, each side presents the evidence/makes arguments to a jury (or judge), and it is up to the jury (or judge) to decide on the merits. While the jury, if employed, is the ultimate decider, the judges role in either instances is to make sure that the rules are followed.

    You state “an appeals branch to overrule any decision,” but who makes that decision? Today, the examiner makes that decision.

    **Note that the Patent System as a whole is charged with allowing those exclusive rights only when warranted.**
    The DMV is charged with issuing to a person a permit/license, which allows the person the right to drive, provided that person has met certain statutory requirements. Should the DMV employ some “public advocate” that reviews the application and whose goal is to prevent a person from getting a driver’s license? (I can think of dozens more examples, but I’ll refrain from sharing them). The point is that obtaining a patent involves an application, not a litigation (i.e., an adversarial process), and it should not be an adversarial process.

    Why institute an adversarial proceeding for the hundreds of thousands of patents that get filed in the USPTO when the number of patents being litigated at any given time could easily be measured in the hundreds? If you want gridlock at the USPTO, just implement an adversarial system, and you’ll be able to measure time to first actions in decades, not months.

    **On the training issue, I think there is a conflict of interest for Patent Attorneys to train examiners.**
    What many (perhaps I should say most) examiners don’t appear to grasp is that besides understand the technology, examining patent applications is mostly about applying “the law.” Unless you’ve studied the law (or one of those rare individuals that is unbelievable intuitive about the law), odds are you don’t understand case law, how to interpret statutes, the difference between a holding and dicta, etc. I always analogize it to my engineering friends by asking them how many times they have heard a non-technical, yet very intelligent person say something about technology, science, engineering, etc. that he or she, the technical person, knows to be completely false or exaggerated. I then tell my technical friends that I hear the same type of comments being made about the law by very intelligent, yet non-legal people.

    Unfortunately, most examiners don’t understand the case law they cite in the office actions, because if they did, they wouldn’t cite one-tenth of the case law that they do. What I think would be valuable to examiners would be to have some in-depth discussion about the law, both the statutes and case law (not the little snippets found in the MPEP) by people who understand the law (i.e., patent attorneys). I see no conflicts of interest in that. Talking about the same is not the same as applying the law to a specific fact pattern (i.e., examining a patent application). Also, attorneys (hopefully) spent their years in law school perfecting (or at least improving) their writing to be both coherent and persuasive. One problem with examiners is that their writing mirrors the writing of the average engineer, which is terrible. Training on writing would be a tremendous help to examiners.

    ** Ideally a first rejection would be relatively broad and each subsequent rejection would grow more narrow along with the scope of the claims.**
    What does that mean??? I’ve read nothing in the MPEP or in the case law that discusses broad rejections versus narrow rejections. An application/claim either meets the requirements for patentability or it does not, and if not, the examiner is tasked with explaining why not. Are you talking about claim construction? If you are, that is another sore point of mine in that many examiner’s come up with the broadest construction for terms, yet fail to recognize that the claim construction should also required to be reasonable (in addition to taking into account factors that the examiners rarely think about, but have set forth in case law many times).

    **If the office had a random degree of bad rejections (I understand it’s not really random, but lets assume for the moment) of say 10% (it actually runs about 8% according to most recent numbers I have seen).**

    My unofficial numbers, for the group I’ve been recently working with (which is known for very inexperienced examiners), is probably running around 75-80% bad rejections on independent claims (and that range may be a little low).

    **Then on average the chance of the inventor receiving two subsequent bad rejections is somewhere on the order of 1%. That’s not an unreasonable number, and certainly something the appeals branch can handle.**
    What patent office did you say you were with, the EPO? JPO? I just did a quick check of my (very substantial) docket. I’ve appealed or looking to appeal approximately 1/3 of my pending applications (and that percentage goes way up for applications with greater than one action). Recently, that has been the only way to make any headway in prosecution.

    Regardless, if you really believe the numbers you quoted, then you and I are living in two different worlds, and we will probably not agree on what is necessary to fix the USPTO.

    **There will be bad attorneys and very good examiners that because of the adversarial system will result in patents that are not allowed that warranted an allowance.**
    Actually, now that I think of it, if an adversarial system was put in place at the USPTO with the examiners on one side, the patent practitioners on the other side, with a neutral judge to make the determination on patentability, I would be 100% in favor of that system.

    I do appreciate your substantial and well-written comments, however. Besides giving me lots to think about, they have confirmed to me what I have believed for awhile now, which is that the USPTO (and the culture that pervades the USPTO) is generally hostile to patents and inventors.

    BTW: I have no idea what you are talking about when you invoke “Free Market” or are referring to when you state “I am loathe to play socialist and remove the economics of industry out of this field.”

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  8. Well several points to address

    First, with regards to the client of Patent examiners, I want to distinguish examiners here from the office as a whole and certainly from the Patent System. At one time the office served a registration function. To these ends, the obligation was to correct administrative issues and provide the patent to the public. These patents were then validated (or not) in the courts. The problem, of course, was overloading the courts with frivolous patents, thus the adjustment to our current system. I believe that to take the best of the Free Market (or even the best of our court system) it is vital to establish an adversarial system in patent examining. Inventors should have a representative trying to maximize the rights of the inventor (trying to increase the scope of protection for his invention) while the public should have a representative (trying not to decrease the scope of their protection in the public domain). With equal footing and fair rules, a balance can be had and both parties obtain, or retain, the ideal scope of protection. To again mimic a judicial system, the representatives should work under a set of rules with some degree of checks to the power of each and an appeals branch to overrule any decision. I would think that Patent Attorneys and Examiners essentially fill the roles of each representative. The system is unique in that no party is identified as a judge or jury at the lowest level, but thanks to the strict rules each follows, both essentially fill the role of judge in their responses.

    I don’t want to confuse the issue by saying who pays the fees to the PTO. Inventors are paying fees to the public for the chance at obtaining exclusive time limited rights. That same public has charged examiners with representing their side of the transaction and acting in their best interest. Note that the Patent System as a whole is charged with allowing those exclusive rights only when warranted. A blank check on patents would equally serve to discourage invention in the long run. Thus I can’t agree that the duty of the office is to allow patents any more than it is to reject them. I would say the duty of the office is to allow good patents and limit the scope of those patents as much as is justified through the tools at their disposal (rejections).

    As for my saying that bad rejections are less destructive than bad allowances, I should clarify. As the office is structured, rejections do not generally close the prosecution on the case on the office’s side. Thus any rejection invites response by the applicant to review the rejection for errors and raise the issue with the office. However, a bad allowance has no such party reviewing the work. There is a built in check and balance for rejections that don’t exist for allowances. As for bad rejections leading to Appeals, that is why the Appeals branch exists, to correct the errors of prosecution. Certainly there is a greater expense to the inventor, and actually equally to the office, for bad rejections. However, I don’t think the best way to approach that issue is by erring on the side of allowance. It would be better to simply work to limit the number of bad rejections. Again because bad rejections still benefit from adversarial parties working for their correction while allowances do not.

    On the training issue, I think there is a conflict of interest for Patent Attorneys to train examiners. I understand there is a significant amount of inter breeding in those groups already, but that would seem to be an inappropriate access. I’m not sure there is any solution to training other than controlled growth. There is a limit to an office’s ability to hire and train. It would seem the office is at that limit.

    I do empathize with the concern regarding eliminating possible good patents. However, I think much of the responsibility of defending patents lies with the inventor and his representatives. I would not be opposed to the office providing a separate entity to assisting the public in that regard. But asking the examiners to fill both roles undermines the system.

    As for my definition of a bad rejection: I think a bad rejection is one that is completely unjustified by the statute, whether it is on a first action or 15th. Ideally a first rejection would be relatively broad and each subsequent rejection would grow more narrow along with the scope of the claims. If you want to consider it statistically… I would say that the office can certainly afford some degree of bad rejections. I believe on average the office rejects each case about one time, but lets assume 2 for the purposes of discussion. If the office had a random degree of bad rejections (I understand it’s not really random, but lets assume for the moment) of say 10% (it actually runs about 8% according to most recent numbers I have seen). Then on average the chance of the inventor receiving two subsequent bad rejections is somewhere on the order of 1%. That’s not an unreasonable number, and certainly something the appeals branch can handle. If the distribution is not random, then selective training and reductions would significantly reduce the number of bad rejections. Either way it’s a win. A similar number of bad allowances would lead to a 10% error rate of bad allowances. This would seem to be even more costly to the inventors (as cost increases at levels beyond the PTO).

    There will be bad attorneys and very good examiners that because of the adversarial system will result in patents that are not allowed that warranted an allowance. However this is still a pay to play system. Inventors need to hire quality practitioners. I am loathe to play socialist and remove the economics of industry out of this field.

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  9. I find the plan for an “alternative system” at odds with the legal theory of why we even have patents. The PTO is not just a device for the business community to obtain monopolies, as seems to be encompassed by the PTO’s vision of allowing certain inventions to “wait for proper funding”. While inventor’s are to be compensated, the goal is to encourage inventions and get them out to the public as fast as possible. Any two-teir system was inevitably put a delay in this system that would not serve the public, but only the monied interests.

    As for the vision of “more” examiners – while nice, I think we need to focus on the quality of the search and the examination. I have found a steady degradation of the quality of examination over the past two years.

    Most notably, I find fewer and fewer examiners relying upon or even referring to the the MPEP. The MPEP has done a decent job of outlining objective standards for allowance or rejection – it would be nice if the Examiner’s would remember to use it.

    Further, I find that some examiner’s are not “one of ordinary skill in the art” – indeed often lacking some remarkably basic fundamentals in the area of examination.

    Moving the PTO to Minneapolis or Kansas City or some other mid-cost, mid-benefit city is essential if we actually want to attract good examiners. The PTO’s salary structure certainly would not attract the top quartile of people in a field, especially if you have to live in NOVA. Do we really want underpaid (for their location) and therefore probably underqualified examiners determining the patent landscape?

    Finally, searching and examination are two extremely different arts. I have many friends who are professional searchers – that task is far harder than reading prior art and applying it. We need a separate and professional search organization.

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  10. The PTO Strategic Plan calls for opening PTO offices in other cities.

    My question is, will the PTO be able to move enough experienced examiners into these offices to train and supervise the flood of new examiners in these new locations? Remember, it takes about 5-6 years for an examiner to reach Primary Examiner status.

    We see the complaint today that the Primary Examiners can’t do all the training necessary. What will happen if each Primary is responsible for a stable of junior examiners?

    Second question. Will the new offices each examine the entire classification system, or will the various offices “specialize”? If they specialize, how do you choose what art goes where?

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  11. **pds’s arguments lacks definition of what a good rejection or prior art consists of.**
    In my mind, a good rejection and/or good art (you can have good art but a bad rejection) leads (if the patent practitioner is any good) to claims being amended or cancelled. Fighting a good rejection and/or good art is a waste of time as a patent attorney (unless your client is desperate for undeservedly broad claims — but I have yet to run into that situation). Amend the claims and move on.

    A bad rejection with bad art is one where the patent practitioner is able to overcome the rejection without amendment on argument alone. I also believe there are certain levels of “badness.” A rejection that takes only one response by applicant to have the rejection overcome is “barely bad.” I don’t have problems with those types of rejections because the examiner may have misinterpreted a portion of the reference and/or the claims, but once the error was pointed out, the examiner withdraws the rejection.

    Rejections that take multiple responses to overcome (most likely including an appeal) are “bad rejections.” I must admit, sometimes an examiner and an applicant have a genuine difference of opinion, and I don’t have a problem with that. However, from my experience, 90-95% of the rejections that I appeal are rejections that should have never been issued in the first place.

    Another definition of a bad rejection in my eyes (but not necessarily in the context of our broader discussion) is one that could NOT be presented to the BPAI at the initial presentation of the rejection. Most rejections that I appeal are deficient in one respect or another and the analysis is so paper thin that if you condensed most of the original analysis into a single paragraph, you probably couldn’t fill one page.

    Others clues for a bad rejection (or at least a sloppy rejection) is all the claims being rejected by a single reference (and the reference being applied isn’t that close) or obviousness rejections based upon a single reference.

    **I have always thought at least first action rejections are expected since it is result of our attempt to establish the broadest ground possible.**
    I’ve seen this done many times, and I accept it as a normal course of doing business. An examiner throws out the best piece of prior art, the applicant shoots the reference down (but now the examiner has at least something on paper that distinguishes the invention over the best art), and the application is allowed. These are not the types of rejections I have a problem with.

    **Personally, I think it’s difficult to distinguish “good” and “bad” patents.**
    I agree. However, as noted earlier by Anon, the goal of the USPTO should be to weed out as many bad patents as possible. The press has a field day with many so-called bad patents (e.g., exercising a cat with a laser, swinging side-to-side), but I don’t have a problem with these types of patents because they are frivolous, won’t get asserted, and should easily be invalidated if someone was properly motivated to do so.

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  12. pds’s arguments lacks definition of what a good rejection or prior art consists of. Some examples would be nice to lend credence to the argument. I have always thought at least first action rejections are expected since it is result of our attempt to establish the broadest ground possible.

    I like Anon’s point about the PTO being a filter of bad patents, but I am not that optimistic about the judges who have the counterweight responsibility in ensuring that “good” patents would still have a chance of being issued. Personally, I think it’s difficult to distinguish “good” and “bad” patents. We can’t even look at the economic impact because a successful patent may not necessarily be a valid patent, as the courts have told us.

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  13. Anon:

    You comments are very interesting. At the outset, however, I have to take issue with your comment that the main client of the examiner is “the IP public domain.” If any animosity exists between examiners and practitioners, much of it is likely based upon a confusion by the examining corps as to “who is the client.”

    The mission of the USPTO (and the examiners) is to ensure that the intellectual property system contributes to a strong global economy, encourages investment in innovation, and fosters entrepreneurial spirit. By issuance of patents, the USPTO encourages technological advancement by providing incentives to invent, invest in, and disclose new technology worldwide. Support for these statements can be found at link to uspto.gov and one of them is found in the mission statement of the USPTO.

    I don’t see how issuing bad rejections provides incentives for inventors to “invent, invest in, and disclose new technology worldwide.” In my opinion, I see bad rejections as an disincentive. Bad rejections requires applicants to file appeals, file RCEs, and/or go back and forth with the examiner many more times than is necessary. One of the things that really irks me is the apparent belief by many examiners that applicants are a bottomless pit of money that can endlessly afford to go back and forth with the USPTO, file RCEs, etc. For every dollar that is spent unnecessarily fighting bad rejections, a dollar is not available to draft a new application. Moreover, bad rejections discourage inventors from filing subsequent patent applications because the bad rejections evidences a “higher bar” for patentability than what actually exists. Also, some bad rejections are too expensive to overcome, and what was once a “bad rejection” now becomes an abandoned application that should have been allowed. All of these are disincentives.

    The purpose of the USPTO is to ensure that an applicant, after applying for a patent, has met the statutory requirements for obtaining the patent. However, from my experience, many examiners treat the patent applicant in an adversarial manner. I wish I could make an original attribution for the following quote, as it is one of my favorites. “The name on the building is the U.S. Patent Office, not the U.S. Rejection Office.” I get the feeling that many examiner think it is the later, not the former.

    Finally, I find it odd that your definition of the USPTO’s main client (i.e., the IP public domain) is a non-entity, whereas fees generated by patent applicants pay the salaries of all the employees at the USPTO. In almost any business that I know off, the person who funds your operation is typically considered the main client.

    Your comments on training are very well taken. An excellent training program is desperately needed by the patent office. You cannot ask poorly trained examiner to train other examiners. The end result is just more poorly trained examiners. Training is something business consultants always recommend that organizations should do more of, and it is the one thing that usually gets cut first when time is tight. One suggestion for improving training is to have patent practitioners in the DC area (there are lots of them) volunteer to give training on patent law and the MPEP. Without getting into the details, I can see benefits for both the USPTO and the patent practitioners involved.

    One solution to improving retention and recruiting, which was already mentioned, is to move portions of the USPTO to other cities. Washington DC is a very expensive city to live in.

    **Finally there is an economical concern. One has to remember that the Patent Office is not the ultimate judge in a patent’s validity. It’s probably best to view it as a filter of bad patents. Assuming it can filter out some 80% of the known issues before transferring the rest to the courts, it has achieved some very real value for the cost. This number can be increased to 90% or 99% etc… but as with all filters, the cost grows exponentially with each improvement towards perfection. At some point the cost becomes a barrier to small inventors.**

    I really like this point, and I want to tie it into the points I raised at the beginning of my post. The patent office can never provide air-tight, lock solid, foolproof (insert your favorite adjective) examination, because the patent office doesn’t have the time, motivation, or resources that someone in litigation has to examine a patent anew (i.e., come up with new prior art, etc.).

    There was a great article recently mentioned on ww.cnn.com ( link to cnn.com ) about how a particular patent, which was being asserted in a lawsuit, was being analyzed for validity on Wikipedia. I went to Wikipedia and checked out the site, and they did a very good job of finding prior art (I have no opinion whether or not the art is anticipatory). My best guess is that many people spent a lot of time trying to find prior art, and far more effort was spent doing this than could ever have be done by a patent examiner.

    Getting back to my first points, there is little need to protect the “the IP public domain” from bad patents (which as a percentage of total patents issued are probably issued at a very low rate) or patents that never get asserted (the vast majority of patents). Bad patents can be easily invalidated by people who are properly motivated to find prior art (as the above article makes clear).

    However, if the goal is just to filter out as much as the bad patent applications as possible, why filter out possible good patent applications by erring on the side of rejecting an application rather than allowing the application. Instead, the patent office should be making sure that all good patent applications get allowed (i.e., no bad rejections) and letting borderline patent applications issue because even if the borderline patent is asserted, chances are that the patent being asserted will receive a much more thorough look in litigation (or reexamination) than when the application was originally examined.

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  14. To Anon:
    The USPTO salaries are TERRIBLE for the DC area where the cost of living is extremely high.
    They are GREAT salaries in, say, Kansas City, Indianapolis, Rochester NY, Alabama, etc.
    You get the idea.
    Let the office hire examiners OUTSIDE of the DC area and see the number of qualified applicants skyrocket.
    No need to outsorce, no need to send work overseas, etc.
    A no-brainer.
    If the USPTO REALLY wanted to hire their way out of the pile of applications, they could.
    Moshe

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  15. First to clarify a portion of pds’ post. The office does review cases not only for Allowance errors but also for in process rejection errors. These latter numbers are generally maintained internally and do hold the same consequences for the examiner or office. Of course, making a faulty rejection might incur a longer pendency, but it does not generally harm the main client of the examiners (the IP public domain) which ultimately is more important to the function of the office.

    With regards to the often stated idea of giving more time to the examiner and hiring more examiners, this is a situation more easily retold than achieved. The office has already committed to hiring around 5k examiners in 5 years. This massive hiring actually forced a change in patent training. Previously examiners were trained by experienced examiners. However, with the sudden growth and poor examiner retention, you had some groups where one or two experienced examiners were responsible for training 5-10 new examiners each. That of course lowers the quality of training for each new examiner and ultimately drastically reduces the quality and worth of the patent system.

    The new training system is untested and certainly might not succeed, but it highlights the problem. If the office starts hiring more examiners, who is going to train them? Anyone that works in the office can attest that it typically takes 2 years for a new examiner to gain any level of real independence in their work. Even with the new training academy, trained graduates still require personal training with experienced examiners to become familiar with the art and claim interpretation. So the problem with growth limitations still exists. Further, new examiners produce at a rate of about half experienced examiners. So an experienced examiner training two new examiners is actually a short-term wash in productivity.

    The other issue of time to examine is directly related to pendency. There seems to be a belief inside the office that continued increase in pendency would serve to invalidate the value of the patent system. Assuming this is correct, then without first addressing the issues of streamlined examination or increased staff, the time cannot be increased.

    Also, where are the new examiners coming from? The office is already struggling to hire 1k a year, and at the same time it has seen the rate of retention of these new hires fall dramatically. Does anyone really think that the office can compete monetarily with outside pressures in this industry? Isn’t it a known problem that hiring above the threshold of the market just decreases the quality of the employees hired on the margin? Inundating the office with under qualified employees does nothing to reduce the problems it faces.

    Finally there is an economical concern. One has to remember that the Patent Office is not the ultimate judge in a patent’s validity. It’s probably best to view it as a filter of bad patents. Assuming it can filter out some 80% of the known issues before transferring the rest to the courts, it has achieved some very real value for the cost. This number can be increased to 90% or 99% etc… but as with all filters, the cost grows exponentially with each improvement towards perfection. At some point the cost becomes a barrier to small inventors.

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  16. Several of the above comments have indicated that examiners cannot spend enough time on any given application. Many here on the inside would agree. There is enormous pressure to move cases. Those familiar with the production system for examiners are aware of this pressure. The time-per-case requirements vary by technology but have not been updated since the mid 1970s, as we are frequently reminded. However, the body of prior art has expanded considerably since then. Furthermore several technologies (e.g. CPU chips, biotechnology, wireless telephony) might reasonably be considered to be more complex than they were 30 years ago and thus more time is needed for consideration of things like enablement and other 112 issues.

    The quality of an examination will depend to a certain extent on the time the examiner is permitted to spend on a case. I did not read the Strategic Plan in its entirety (again with the production pressures) but did not see any real consideration of increasing the time per application.

    Of course the tradeoff of more time per application would be a slowing of the pipeline (i.e. increased pendency).

    Practioners who are concerned about the cursory nature of examination may want to consider filing comments on the Strategic Plan to address these matters.

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  17. **Hopefully Jon Dudas and his corps of Examiners will prevent attorneys from destroying invention in America, the way they destroyed the medical profession.**
    Interesting comment. From where I sit, the biggest obstacle facing patent applicants from obtaining patent protection is a patent examining corps that are afraid to allow applications in the fear that they’ll be part of the numerator in the patent allowance error rate.

    My proposed fixes for the PTO would include: significantly increased hiring, better pay for examiners, more time for examiner’s to examine applications, and better training and supervision for examiners. Patent fees, which are currently being diverted from the PTO, should fund these initiatives.

    I see much of the PTO’s problems stemming from overworked examiner’s trying to examine patent applications with little time to do so properly and little supervision. The present count system encourages an examiner to do the least amount of work to get an office action out. However, poorly written office actions result in a clear issue not being developed between applicant and the examiner and increases the total number of office actions needed to need resolve the application one way or another.

    I recently spoke with a supervisory patent examiner who told me about a directive from the group director, which when implemented by an examiner, clearly violates the requirements of 37 C.F.R. § 1.104(c)(2). The stated rationale for this directive was that meeting these requirements reduced the efficiency of examiners and less office actions were being issued, on average. The problem with this rationale is that the clear communication of the rejection by the examiner to the applicant in almost all instances speeds up prosecution. As a result, I found this directive to be very short-sighted.

    Referring back to a point I alluded to earlier. The examiners are worried that an application will be kicked back because the application was improperly allowed (i.e., the patent allowance error rate). I am, however, not aware of any major initiative to evaluate whether or not an application has been improperly rejected. In my mind, an improper rejection that causes an application to become abandoned is worse than a failure to reject an application that becomes a patent, because the patent can be subsequently invalidated (even years down the road) but a patent application voluntarily abandoned (because of prior art) stays abandoned.

    As a result of this disparate treatment by the PTO of improper rejections vis-à-vis improper allowances, the examiner will always err on the side of rejecting an application rather than allowing the application. Thus, it takes longer for the application to get allowed (or abandoned). IMHO, if the “best” prior art was properly applied by the examiner in the first Office Action, most prosecution shouldn’t last more than two actions. Today, however, I don’t see issues resolving until after 4-5 actions or an appeal. Also, I’ve experienced countless numbers of times where the applied prior was overcome (and many times without amendment) only to see another rejection get issued.

    One of the proposals in the strategic plan was to encourage more personal interaction between the examiner and the applicant. I believe this would help matters.

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  18. It appears that the poster named “anti-pds” has something against patent practitioners. In an effort to not let this thread degrade into a “why patent attorneys are overpaid while making life hell for the average examiner” thread, let’s focus on the issues and not the hyperbole.

    **So you are saying that attorneys collect 5-10 times what the USPTO collects, merely filing a inventor’s application for them?**
    That is no great secret. Run-of-the-mill applications typically run 5-10K and more complicated patents (such as those in biotech) could be 25K and higher, and those numbers are just for preparation, not prosecution.

    As a simple economic matter, the going rate for patent attorneys is reflected by the fact that to become a patent attorney, one needs both a technical degree and a law degree (not a common combination). Moreover, one needs to pass the patent bar, which has a very low pass rate. As a result, the demand for qualified patent practitioners has always outstripped the supply, which increases the cost for obtaining a patent.

    **The USPTO can also offer revised and simplified filing requirements to help applicants prepare their aplications.**
    Pro-se applicants can file with the USPTO. However, I believe form paragraph 4.10 (found in MPEP § 401) reads “An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.” As such, even the PTO recognizes the need for having expert help.

    It is difficult to say beforehand (i.e., when the application is drafted), whether one particular invention could be worth $100K, $1M, $10M, $100M or not more than the piece of paper it is printed upon. For a person that thinks his or her invention may be worth something, looking for the low-cost alternative is usually not his or her primary concern.

    Simplified filing requirements may be possible, but it is still tough to get around the 1st and 2nd paragraphs of 35 U.S.C. § 112. Done sloppily, a very valuable invention will be narrowly described and narrowly claimed, and any subsequent attempts to broaden the scope of the invention will be thwarted by inadequate disclosure. In my mind, one of the most valuable services that can be provided by a patent attorney is to broaden the scope of what are typically very narrow disclosures.

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  19. “pds | Aug 28, 2006 at 04:40 PM” wrote:

    ” … for small entities, the total fee is still considerably less than the average attorney’s fees …[for] having the application prepared.”

    In my mind, once an inventor has spent a considerable amount having the application prepared … having the application searched and examined …is a small fraction (10%-20%??) of the preparation costs,

    …the cost for having the application searched/examined is relatively minor.

    As such, I’m not sure this proposal will put much of a dent into the PTO’s backlog.”

    ========Comment regarding the above quote===

    Thank you for ADMITTING that much of the problem today comes not from WITHIN the patent office — the so-called “broken patent office and system”, but literally from evryone except the actual inventor, OUTSIDE the patent office!

    So you are saying that attorneys collect 5-10 times what the USPTO collects, merely filing a inventor’s application for them?

    —-quote follows—-
    “a small fraction (10%-20%??) of the preparation costs”
    —-quote ends——

    If the option to not initiate examination were a reality, in this land of entreprenurial ambitions, I wouldn’t be shocked if the equivalent of “discount brokerages” were to spring up, to prepare filings at a discount for applicants.

    Applicants can also, YES, file on their own!

    The USPTO can also offer revised and simplified filing requirements to help applicants prepare their aplications.

    If the goal is to reduce the burden on Examiners, but to –sincerely– protect inventors and invention itself, many things can be implemented.

    On the other hand, if the goal is let attorneys take advantage of the system for their own profit, rather than either inventors or ultimately the nation, then hey yah, keep gaming away; the brotherhood of the bar hasn’t totally wrecked the patent system just yet. Hopefully Jon Dudas and his corps of Examiners will prevent attorneys from destroying invention in America, the way they destroyed the medical profession.

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  20. Comment from Europe. Mark Perdue is out of date about the separation of search and examination in the EPO. It used to do it, but not any more. Has he not yet seen one of the current “Extended Search Reports”? This is an examination report in all but name. Why does the EPO do it this way? Why, to improve efficiency. It is working. I am getting drowned in these new-style search reports.

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  21. I’m not sure what the eventual costs will break out with regard to just the cost for searching versus the cost for searching plus examination. Right now the search fee is higher than the examination fee. However, for small entities, the total fee is still considerably less than the average attorney’s fees the inventor has already put into the having the application prepared.

    In my mind, once an inventor has spent a considerable amount having the application prepared (and having the application searched and examined) is a small fraction (10%-20%??) of the preparation costs, I don’t foresee too many investors opting not to have the application examined. Once the inventor has invested as much time/money as is needed to have the application filed, the cost for having the application searched/examined is relatively minor.

    As such, I’m not sure this proposal will put much of a dent into the PTO’s backlog.

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  22. If implemented, I personally believe that Director Jon Dudas’ concept of a “Multiple Product” Patent System will be proven by history to have been a brilliant idea..

    The overarching objective HAS TO BE to protect invention, inventors, and the incentive to invent. This is after all the Constitution’s stated goal.

    A “Multiple Product” Patent System does not mean that some applicants will be getting “better patents” than others and hence “an unevenness” in the patent system. Just the opposite! It means that ALL applicants will be afforded equal protection under the law by the USPTO, and that the applicant can personally select the optimum pathway to receive that equal protection.

    Many small entity applicants file patent applications without actually needing to have their application examined “right now”. In fact, the sooner their application is examined, the sooner their expenses go up – which they may not even be ready for. Many small entity applicants file to have the “official record” record the fact that they were the first to invent. And once their application is on file they feel they can then proceed to “show it around” and attempt to commercialize it. So long as such applicants are assured that EVERYTHING taught in their application can be fairly examined at some point to see what merits a patent, and that their rights are protected in the event of future infringement, such applicants needs are satisfied. It isn’t mandatory for the examination to commence “right now” on such applicant’s applications. This is also why it is SO ESSENTIAL that Continuations and CIPs are not removed from the USPTO product offerings (because it is inherently unfair and undermines the Constitution’s efforts to achieve fairness and a motivation to invent). If an applicant has the option of filing but not requesting examination, then that applicant should also be assured that if someone is believed to be infringing at some future date, that they will be GUARANTEED the opportunity to have their application examined with an eye for whether their filing legitimately taught the infringers product. The system, if true to it’s Constitutional goal, must protect the original inventor and not merely whether that original inventor had the resources to “play the game effectively”, such as by filing thousands of claims exhaustively on an application, at the initial filing. Was the “invention” in the disclosure? Was it taught before others? Those are the important questions, not did you game the system effectively. When a small entity applicant is assured of these things, they do not necessarily have to request examination “right away” and thus the office work load will be reduced. And this has nothing to do with multiple standards of patent examination.

    I am convinced that hisory will show that Jon Dudas was the right man for the Directorship and that his proposal of a Multiple Product Patent system is the right one.

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  23. I disagree with the above comment. There is so much art I find in the course of examination (and thinking about the case) that it is impractical to separate search from examination. When we do get third-party searches (i.e. from an international search report in a national-stage entry) they generally aren’t worth the paper they are printed on. Most people consider them an adequate starting point for a search, rather than a final report. If art appears on the search report, it is worth looking at. However, failure to include something indicates to me the searcher missed it, not that the invention is free of the art.

    Bottom line: separating search and examination would result in a lot of patents whose validity would be instantly challenged. I don’t think that would be good for applicants/patentees, although it would be certain to generate a lot of litigation.

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  24. They should separate searching and examination a la the EPO.

    That presumably would improve the searching, and perhaps widen the search universe. And unburden the Examiners a bit.

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  25. I think the idea of departing from a unified system would be a great mistake that will create complexities and biases that will harm our patent system. First, departing from a uniform system starts the slippery slope to departing from uniform standards for patentability. The long-standing requirements of utility, novelty & nonobviousness work for all technologies. There shouldn’t be different standards for different technical areas. Next, Director Dudas’ idea that he has floated recently, and that is apparently referred to in this Strategic Plan, of different types of patents (ranging from a registration-type “marketing patent” to a gold-plated “this is a real invention” patent) should be acknowledged for being the product of some open-minded, out of the box thinking. However, to create a product line of patents ranging from low-quality to high-quality will be a dumbing down of our patent system that will at the same time make it much more complex. It is a bad idea that will make the patent system less accessible to all types of inventors, large and small, and, like the new 1-year-from-file-to-final-disposition program, it will invariably divert important PTO resources. To me, the concept of a uniform system includes the notion that the Patent System is accessible to all types of inventors. This proposal to create a spectrum of patents of varying quality is inconsistent with that idea.

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  26. I briefly looked at the “Strategic Plan” over the weekend, and noticed comments such as the following:

    “Pendency time will be reduced to xx months in 2008 and to XX months in 2012.
    Backlogs of unexamined cases will be reduced by XX percent a year.”

    XX months? and XX percent? The same comments were also found in the strategic plan linked to above, so I assume I was looking at the correct strategic plan.

    If this is the correct strategic plan, it appears to me that it is incomplete, as someone neglected to replace the “XX” with real numbers.

    Reply

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