Patent Backlog

Yesterday, I posted data about patent application pendency at the US Patent Office. The following comment came from an a longtime partner at a midsized IP botique in DC:

I suppose I’m something of a lone wolf in thinking that the backlog in applications we have now is not much worse (certainly not DRAMATICALLY) worse than the backlog we’ve had all along, or at least since I’ve been in patent law. Your chart shows that 50% of application were disposed of in about 3.5 years and about 90% in roughly 6 years. When I was an examiner, back in 1990 or thereabouts, there was a lot of verbiage given to getting average pendency to 3 years – so it must have been higher than that at the time. It would be interesting, I think, to see the same analysis done for application filed one and two decades earlier then those in these charts, plotting all the data normalized to the starting date. Maybe someone has done this in a meaningful way already; but, I haven’t seen it. If the curves are the curves are substantially the same, it would put the lie to oft heard cries about a burgeoning backlog that’s crushing competitiveness and the false impression given by quoting the raw number of applications now pending.


74 thoughts on “Patent Backlog

  1. “IF your position was the correct position, you would stand by it as it would be the professional thing to do.”

    Maybe they’re destroying the professionality of the position by requiring too many hoops. Let’s discuss the professionality of a position that is reviewed not only by the statutory body of governance (the board) but by an extra statutory quality assurance group as well as an extra statutory appeals conference specialist. Not all that professional IS IT?

    “All you have to defend is that you made the prima facia case, and no additional time and effort would be required as your defense would be the Office Action itself. ”

    Getting the fin conference scheduled requires no additional time? Providing the “specialist” with a baseline of knowledge which attorneys are supposed to have before they prosecute in my area requires no additional time? Having all my ducks in order (i.e. being “prepared”) so that I can deal with sua sponte arguments that the specialist raises requires no additional time? Accounting for the specialists sua sponte arguments by grabbing another piece of art and using that as a new primary requires no additional time?

    I’m sorry Noise, but you obviously don’t know wtf you’re talking about. I’ve done all of the above AND THEY REQUIRE ADDITIONAL TIME. I wouldn’t be pissed about them if they didn’t. Furthermore, I know you prosecute in some mickey mouse art like toilet paper roll holders, where the combinations and the concepts involved are all straight forward and can be explained to a kindergartener in 5 minutes, but some of us aren’t as lucky. Sorry, but that’s just the reality of it.

    Oh, and one thing that hasn’t happened to me yet, but happened to the girl I was chatting with the other day: Specialist says ok, maybe that rejection is valid, but it isn’t the best because you can find better art. Isn’t that bs? It’s going to take additional time, and in this case the specialist does know what he’s talking about, there probably was better art, but ALL THAT SHT TAKES MORE TIME and she didn’t want to deal with it. It would have been simpler for her to never even have gone to the appeals conference and simply reopened with newly found art. She therefore now has an aversion to going to the appeals conference which she will straight up admit to having.

    “If properly done, the Offense Action would survive scrutiny of any number of eyes because you would have done the job you are supposed to do.”

    No, for the umpteenth time, a mere prima facie case is a very dangerous thing to make. A rock solid case is what you’re talking about, is the only safe case to make, and that goes beyond a prima facie case. You have your terms mistaken. As always. Just because a rock solid case is ALSO a prima facie case doesn’t mean that a prima facie case is necessarily a rock solid case. In other words, cases like you like to see are a species which I like to call a rock solid case under the genus prima facie cases. You need to learn the difference because there is one.

    My attempt to distinguish the two is hardly in my own mind.

    Read this,

    link to en.wikipedia.org

    See if you more or less agree with it. Then, if you do, explain to me how that rises to the meaning of the words “rock solid” case. I’ll then show you a case that meets the former, but not the latter and explain to you how the chances of going to the board with such a case differ from a case that meets both.

    If you don’t agree with that article, simply go have your head checked and save me any further trouble.

    “and your Office Action simply doesn’t survive the prima facie level of scrutiny. ”

    I’ll never fin know whether or not some of my cases would because some specialists aren’t applying that standard. What I’m standing here telling you is simple. The prima facie level of scrutiny, evidenced by all these hundreds of cases of judicial decisions on the matter which I’ve read by now, is MUCH LOWER than the standard which needs to be met to get through some appeals specialists and go to the board.

    In other cases, they do apply this standard and my case sails right through.

    In any event, this higher standard creates pause for an examiner considering whether or not to bother with the appeals process or reopen and reject or allow.

    R U 2 UNDERSTAND NAO?

    No, I doubt you do, because you’re too simple minded and have your blinders on. “Well, if the examiner is right then it’s ez as pie to make his case hur hur hur”. I don’t know what planet on which you prosecute, or where you get such mistaken notions, but I do know how much time you’ve spent practicing the notions about which you’re preaching. 0 seconds, that’s how long.

    I’m not even going to get into this with you further. This is my last post on the issue, and I only posted on this issue because he was talking to that other guy above.

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  2. 6,

    By “Facts? Facts?”, did you mean “Facts. Smacts.”?

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  3. 6, that last paragraph is veering into Michael R. Thomas comment territory. (the world’s most insane inventor arguably)

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  4. 6,

    What is “…made a mockery” is the attitude of “it’s the path of least resistance man”.

    IF your position was the correct position, you would stand by it as it would be the professional thing to do. All you have to defend is that you made the prima facia case, and no additional time and effort would be required as your defense would be the Office Action itself. If properly done, the Offense Action would survive scrutiny of any number of eyes because you would have done the job you are supposed to do.

    IF your position is evidenced by the lack of logic and reason you display (with so much of your short-supply effort and time) here and at other blogs that you haven’t been banned from, then that path of least resistance is more likely easier because you are wrong, and your Office Action simply doesn’t survive the prima facie level of scrutiny. Your attempt to heighten the evaluation degree from prima facie to rock solid is only in your mind, as you confuse the “extra” work resulting from the review with work you should be doing in the first place.

    “Every additional pair of eyes added are dangerous to cases against claims which are merely an examiner’s errant and supposedly prima facie case.” – fixed

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  5. “The fact remains that your “explanations” do not account for the recent quadrupling of the ratio between the number of appeal briefs filed and the number that are sent to the BPAI as compared to the period from 1995 to 2001. ”

    As I believe I may have noted on here, and recently noted in discussing this matter of pre-appeals with a friend just this past mon. irl, I am very near to becoming one of the people that will avoid the appeals process by any means necessary. It is both a waste of my time to convince a third, and fourth pair of bought eyes of a rejection that is anything other than rock solid, and a waste of my effort. Both of those, especially the later, is in short supply.

    An exemption exists for sending up a Beauregard case, as well as other issues of person intellectual interest to myself. But a questionable 102/103? Or one where the issue arises from the materials science at play in the claim? You know what? I’m doing the app a favor by rejecting him. If he wants to throw my professional, well explained and well informed, opinion on the patent away (usually this issue rears its head in matters of inherent, or scientific principles behind something in the claim), and someone at my job is going to give me some sht about it, by all means, let’s just throw it out.

    It’s the path of least resistance man, if you can’t see that explaining a sizable portion of the numbers you find, you have issues more severe than subscribing to the conspiracy theories that might be conjured to otherwise explain the situation.

    The appeals process thus ensures that rejections which are merely a prima facie case, rather than a rock solid case, will rarely even go to the board. The law is thus made a mockery of by your “buy a second, and then buy a third pair of eyes” pre-appeals/appeal program.

    As a side issue, isn’t the pre-appeal process counter to governing statute, and should it not be hardily fought against by the very people utilizing it? You “appeal to the board” by filing a NOA, but then you never actually did appeal to the appointed members of the board.

    And yes, when I leave the pto, I’ll be happy to provide you with the case behind my anecdote, as well cases which show signs of having been delayed and delayed and delayed before a decision in a pre-appeal (extra-statutory buy an extra pair of eyes/more time until I can write an answer program).

    If you’d like more immediate information, get a few primary examiner contacts within the PTO, perhaps Eugene can be of assistance, and ask them about their own opinion of the procedural issues involved with an appeal. Nearly every primary I know has mentioned that they do not want to go through an appeal unless the rejection is impervious from all sides. That goes beyond a prima facie case standard and it isn’t a commentary on them not wanting to have to present their case to someone for fear of “humiliation” or anything so absurd as that.

    “Deal with the question at hand, directly. ”

    Pre-appeals add a whole 2nd layer of procedural nonsense to contend with, as well as an additional pair of eyes. Every additional pair of eyes added are dangerous to cases against claims which are merely a prima facie case.

    Examiners observe the above, which already cause a change, and thus a psychological change occurs in the mind of the informed examiner where the process is to be consciously avoided.

    The combination of the two account for a significant portion (I cannot say how large a portion) of the DRAMATIC CHANGE you observe. The other part likely results in large part from the numbers of newly minted examiners. Both events occurred around the same time if I recall.

    Wascally,

    Facts? Facts? I appeal to your own sense of the world around you. You can create bizarro conspiracy theories/quasi religious supernatural beliefs (its the reject reject reject mentality hur) if you and others like, or you can attribute the changes to being largely a result of commonplace bs that plagues our everyday lives and a human desire to avoid the same.

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  6. “Can you support your arguments with factual material?”

    He don’t know 6 vewy well, do he?

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  7. 6,
    I provided specific numbers and facts. Can you support your arguments with factual material?
    I read your caveats, anecdotes and explanation of side issues. The fact remains that your “explanations” do not account for the recent quadrupling of the ratio between the number of appeal briefs filed and the number that are sent to the BPAI as compared to the period from 1995 to 2001. Remember: the issue is NOT why only a fraction of appeals are sent to the BPAI – any explanation you provide must COMPARE the fraction in two different periods and explain why this fraction has CHANGED DRAMATICALLY. In your next response, please do not adopt a “lame examiner’s strategy for off-the-wall office actions.” Deal with the question at hand, directly. If you cannot, just pass and “allow”.

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  8. “Every appeal SENT to the BPAI is an appeal that is REACHING the BPAI. ”

    My appeal was sent. No judge ever looked at it.

    My appeal was thus sent to the BPAI and is an appeal that never reached the actual judges of the BPAI.

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  9. “Is it not “logical” to conclude that had all the examiner’s rejections in the case been “proper” in the judgment of the conferees, the case would have been allowed to move forward to the BPAI?”

    It is not logical to conclude that. There are many factors which can intervene in a case getting to an appeals conference, getting through an appeals conference, or getting an examiner’s answer written. The same is true about pre-appeals.

    1. Many cases are reopened before a conference is even held (i.e. pre-appeal is filed but no pre-appeal conference decision issues). I don’t think your numbers account for this. Many of these cases are reopened not because the rejection is deemed subpar, but rather because the examiner figures that it will take less time to handle the case in another fashion rather than go through the bother of a pre appeal or appeal process.

    In other words, having an appeal in a case isn’t always easily handled, procedurally, as well as substantively.

    Hel, even getting an appeal conference SCHEDULED can be a bother. Note that this is supposed to happen automatically, as if by magic from the examiner’s point of view. Many times it doesn’t.

    2. A rejection being prima facie case to one person doesn’t always make it one to another person. Especially when the other person is unfamiliar with everything related to the case. One conferee deciding the case doesn’t go forward doesn’t mean that a three judge panel wouldn’t find for the primary examiner. And trust me, if the conferee doesn’t like it, the rejection ain’t goin up (rare exceptions may apply).

    3. Repeat 1.

    4. I’m tired of listing things but there are other concerns as well. I’ve listed them all here for you to read before, and if you’re too blind to see them then that’s your problem.

    Even if 1 is the only thing not being taken into account by your numbers, it has a substantial impact on what your numbers would otherwise be.

    Note the examiner above was telling you also that your numbers are skewed because cases going up to the BPAI doesn’t = the cases coming back with a decision from the BPAI.

    For instance, I sent a case, it was returned because the applicant then filed an IDS 8 mo later. I will now be reopening the case to use the wonderful japanese art (for the ind. only) in addition to the currently utilized art. Strictly speaking though, shouldn’t I just be doing another of those “A new grounds of rejection” things where they still go directly to appeal or to them requesting reopening? I don’t know, but I don’t have forever to find out about all this bs procedural nonsense. I will reopen, and if he wants to appeal again he can.

    That case will count on your stat “going up to the board” but isn’t really a case that “was decided” by the board.

    His concern is then: Does my exemplary case count as one that went to the board, or does it count as one that was reopened?

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  10. The backlog is simply FUBARtacular.

    The USPTO keeps trying to get me to fill out and return some survey, but I can’t. It doesn’t allow me to score negative numbers.

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  11. Response to ‘An Examiner”. First, let me commend you for the specificity of your criticism, permitting a substantive response.

    You say: “Firstly, your graph shows (#Applications with appeal briefs + pre-appeal confs) against (#Applications reaching the BPAI) over time. I’m not really sure how either of which logically implies a) anything to do with final rejections, or b) that a supposed final rejections was improper. In other words, your title is slightly misleading as the data represents itself, and not illogical conclusions”.

    The whole purpose of presenting the analysis was to draw conclusions. You may disagree with my conclusions and you can offer a rebuttal explaining why my conclusions are “illogical”, but you have not done that. Merely stating that my conclusions are “illogical” is not a reasoned rebuttal. Appeals are filed after what effectively is a final rejection. Appeals are not filed after a FAOM. The appeal conferees decide not to forward the appeal to the BPAI, but instead to do something else (clearly, not in line with the examiner position). Is it not “logical” to conclude that had all the examiner’s rejections in the case been “proper” in the judgment of the conferees, the case would have been allowed to move forward to the BPAI?

    You say: “Also, you may want to include a (#applications with first FAOM sent out) over time, just to ensure the percentage of total examined applications being appealed isn’t the same, because, say the (#applications with first FAOM sent out) skyrocketed due to, oh I don’t know, the USPTO just hiring thousands of new examiners.”

    Here, you apparently misapprehend the significance of the comparison of the two curves in the figure and the fact that THE COMPARISON provides the information and proper normalization. The number of FAOMs, or even the number of applications from which these appeals arise, are irrelevant because the figure does not purport to speak to the increased APPEAL RATE (which can indeed be shown to have dramatically increased by using your suggested normalization). Rather, it compares the appeal brief filing rate (regardless of reasons for its increase) to the RESULTANT rate at which appeals are received by the BPAI. The conclusion I draw from the figure speaks only to the dramatic increase in the RATIO between the two curves in the last five years. In other words, look at the dramatic increase in the GAP between the two curves! [Why does this exchange feel so much like my exchanges with some examiners during my patents’ prosecution?]. Is it “illogical” to conclude that there has been a dramatic RELATIVE increase in Examiners’ “improper” rejections compared to, say, 1995-2001? If so, why would appeal conferences withhold a larger fraction of “proper” rejections from moving to the BPAI than they had in 1995-2001?

    You then say: “the statistic that you’re asserting represents (#applications sent to the BPAI), is subtitled (#applications REACHING the BPAI). These are two entirely different things. I’m not sure which is the correct stat, because I don’t have access to your sources, and the one you do link is the generic BPAI website. Here’s why these two stats are seriously misleading/different: (#applications sent to the BPAI) are those entering into the BPAI queue. (#applications REACHING the BPAI) are those extracted from the queue and handled by the BPAI. Because the BPAI has a huge pendency issue for their queue, the (#applications REACHING the BPAI) is much less than (#applications sent to the BPAI).”

    The answer is very simple. Your definition of REACHING the BPAI is counterfactual. Every appeal SENT to the BPAI is an appeal that is REACHING the BPAI. It might sit at the BPAI queue before it is taken up for adjudication, but that is irrelevant. The figure I show does not refer to the appeals that are DECIDED by the BPAI. Because of backlog and variable delays, it would have been “illogical” to consider the number of cases DECIDED during that year at the BPAI. Your confusion between the two is apparently due to an “illogical” conclusion that you may have drawn.

    Having said that, please do not read my conclusions about “improper rejections” as passing judgment on examiners’ responsibility for these trends. Although a small minority of examiners may have direct responsibility, I fault the counterproductive incentives set by the Office (Slide 17) and the growing mismatch between workload and examination resources (Slide 19) as the major cause for these problems. I have stated that I strongly believe that the Office must change its quota system, permit examiners to specialize in their field, provide more time for professional development and facilitate their attendance at industry conferences and trade shows. Inventors do it, and as their peers, so should those who are asked to examine their inventions. This requires Office leadership and crisp communication with Congress, boldly demanding more resources. Yes, I would accept higher user fees, if limited to this purpose and not diverted.

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  12. The pendency is longer. Even the wait for the first office action has gotten much longer. Whenever I use to explain the process to anyone, I used to say after filing you will not likely get a response for 8 months to a year. Then I changed it to a year. Now I say don’t expect anything for a minimum of a year and a half and warn that it can often be much longer. And I haven’t bothered changing that comment in a long time.
    In some art units, watch out. We have one application that has been pending for a couple years and when my secretary check they were still projecting that it would still be 18 months before an action. (Although that may help us consider the final implications of Bilski (if any), maybe file a CIP for this upublished application, and/or amend the claims).

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  13. Ron Katznelson:

    Your paper/presentation is flashy whargarbbl in quite a few aspects. You seem to be attempting to prove some preconceived conclusions. I’ll point out just one:

    Pg 15, titled “The growth of improper/premature final rejections also results in unprecedented growth in appeals”.

    Firstly, your graph shows (#Applications with appeal briefs + pre-appeal confs) against (#Applications reaching the BPAI) over time. I’m not really sure how either of which logically implies a) anything to do with final rejections, or b) that a supposed final rejections was improper. In other words, your title is slightly misleading as the data represents itself, and not illogical conclusions. Also, you may want to include a (#applications with first FAOM sent out) over time, just to ensure the percentage of total examined applications being appealed isn’t the same, because, say the (#applications with first FAOM sent out) skyrocketed due to, oh I don’t know, the USPTO just hiring thousands of new examiners.

    Secondly, the statistic that you’re asserting represents (#applications sent to the BPAI), is subtitled (#applications REACHING the BPAI). These are two entirely different things. I’m not sure which is the correct stat, because I don’t have access to your sources, and the one you do link is the generic BPAI website. Here’s why these two stats are seriously misleading/different: (#applications sent to the BPAI) are those entering into the BPAI queue. (#applications REACHING the BPAI) are those extracted from the queue and handled by the BPAI. Because the BPAI has a huge pendency issue for their queue, the (#applications REACHING the BPAI) is much less than (#applications sent to the BPAI).

    Just a couple thoughts you should consider when crafting the data to fit your conclusions.

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  14. to quote the Grinch: “oh the noise noise noise noise”

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  15. “FYI — attorneys want a proper examination. I have far too many applications to deal with to get emotionally invested in one application over the other. All I ask is that you do the job you were paid to do. I don’t shed any tears for an application that goes abandoned because of good art. However, I get pssd when an Examiner wastes my clients money by citing art that I, time and time again, overcome by argument alone.”

    Amen.

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  16. Nice one 6. First laugh of the day (but sorry, all the same, that you feel so grotesquely under-paid).

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  17. “All I ask is that you do the job you were paid to do.”

    You mean a half hour search and a few form paragraphs with one or two citations thrown in randomly for flavor?

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  18. “Even after examiners identified allowable subject matter and wrote allowable claims for them, attorney’s would still want to argue that they are entitled to broader claims, and would accuse the examiners of having a ‘reject, reject, reject’ mentality if they weren’t persuaded.”

    Some do, and some don’t. Obviously, you haven’t made any attempts to find that out.

    FYI — attorneys want a proper examination. I have far too many applications to deal with to get emotionally invested in one application over the other. All I ask is that you do the job you were paid to do. I don’t shed any tears for an application that goes abandoned because of good art. However, I get pssd when an Examiner wastes my clients money by citing art that I, time and time again, overcome by argument alone.

    Come up with a good rejection, and I’ll advise the client to abandon — leads to a quick disposal and reduced backlog.

    Come up with a proposal for allowable subject matter (often-times, no more than adding a couple words to a key limitation) — if the amendment meets the client’s needs, we’ll take the amendment, which leads to a quick disposal and reduced backlog.

    If you cannot find any good art, just allow the application. This really reduces the backlog.

    Come up with a rejection with stretched claim constructions and/or ignored limitations, and I’ll fight you over several years worth of actions. A client can easily read a reference and know when an Examiner is BS’ing – it happens all the time. When that happens, the client backs me up.

    In many instances, the proposed claim amendment does not regard a completely missing limitation. It is because Applicants and the Examiner are reading a particular claim limitation (or set of claim limitations) differently. The Examiner is reading it broadly and the Applicant is reading it narrowly. What happens is that the Applicant will argue “reference A does not teach X because reference A teaches YGH.” In this instance, the Examiner could say “I’m interpreting X as encompassing YGH, however, if X is amended to read Xy, this would overcome the prior art.” So simple, yet so rarely performed.

    Besides coming to common ground – leading to allowance of the application, another goal of examination is to narrow the issues prior to appeal. Suggestions like that presented above would accomplish just that. However, for reasons already hashed and rehashed on this board, there is little incentive for an Examiner to do such a thing besides it being the right thing to do.

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  19. Cripes. How to categorize that contribution from Harold Heavyhitter? I thought of “cutting” and “incisive” as well as “forthright”. But “trenchant” sounds nicest. Whatever way you cut it, it’s a darn sight more fun to read than the laboured stuff from certain other contributers I could mention.

    BTW, thanks JAOI for the Simpsons reference. But CrystalCity is also on to something, when he writes that Max “chooses” not to understand.

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  20. Attorneys love to throw up those MPEP quotes, all the while ignoring the parts they don’t like.

    “When… it is apparent from the claims and the applicant’s arguments that the claims are intended to be directed to such patentable subject matter”

    Hmmm, seems to be suggesting that the first step toward identifying allowable patentable subject matter is for the attorney to put the patentable subject matter in the claims. Then the examiner will search for the claimed subject matter so as to determine whether the subject matter is allowable.

    “If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed AND the record indicates that the applicant intends to claim such subject matter”

    Seems to be saying again that the attorney needs to identify the subject matter that they want to get a patent on. If the examiner has not searched for particular subject matter, the examiner cannot say whether the subject matter is likely patentable or not. The examiner doesn’t have enough time to examine the claimed subject matter, much less every possible claim limitation that the specification could support.

    Here’s what attorneys want:
    1. For examiners to allow all of their claims.
    2. For examiners to reject everyone else’s claims.
    3. For examiners to identify what’s allowable in their applications, and write their claims for them.
    4. To sit around collecting fat paychecks while complaining about examiners on blogs.

    Actually, that’s not totally accurate. Even after examiners identified allowable subject matter and wrote allowable claims for them, attorney’s would still want to argue that they are entitled to broader claims, and would accuse the examiners of having a “reject, reject, reject” mentality if they weren’t persuaded.

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  21. Mercy, I get in early today and what do I find? Someone trying to patent my NPL from 1999 in 2006. For shame. That guy was 7 years behind the times. You’d think he could be bothered to open a journal once in a blue moon considering he’s in one of the most advanced fields ON THE PLANET.

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  22. Interesting for me would be to know from whence comes the comment at 3.46pm, which I copy below:

    “MaxDrei I agree with you. If a patent attorney doesnt know how to write claims that are patentable over the prior art, then what is the point of having a patent attorney.

    The Examiner didnt meet with the inventors, the Examiner didnt draft the application, the Examiner didnt talk with corporate counsel about the desired scope of claim coverage. Yet the Examiner is supposed to provide a company with a claim that not only describes what the inventors had in mind, but also gives a company adequate claim coverage.

    Seriously, what do patent attorneys do besides gripe about Examiners?”

    Who wrote that note of agreement then, Noise? A second fool provocateur from outside the United States perhaps? Or somebody from inside the USA, writing good sense?

    And thank you Malcolm Mooney, ever ready with something pithy and apposite.

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  23. ” If an Examiner can use common sense to make a rejection under 103, an Examiner should be able identify a “good” amendment.”

    Like adding the phrase, “in an airplane” to the end of the claim?

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  24. Mark: “it’s not like they are competing for a limited resource where they need to divide up who gets what”

    Actually, it’s exactly like that.

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  25. “BTW: you should look up the definition of “D’oh” — the usage of which is made famous by one Homer Simpson.”

    Max chooses not to recognize our cultural references. As it is said, Technoviking does not dance to the music, the music dances to Technoviking. Of yes, the topic- pendency is secondary to getting a system in place that gives the PTO some more cover; opposition practice would help a lot. The current APJs are more than able to handle opposition practice, and it probably would be a lot more stimulating work than settling squabbles between applicants and examiners.

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  26. “I for one don’t want my employee re-writing Applicant’s claims, to give him a monopoly of even wider scope that his own well-paid patent attorney can think of.”
    BTW, another inane comment. The proposed amendment would likely narrow the scope of the claim.

    “Besides, what does a PTO Examiner know about claim drafting, and which of the infinity of possible claim amendments has most commercial value to Applicant?”
    It doesn’t take much more than a little common sense to identify an overly narrow limitation versus a limitation that still leaves a commercially viable claim. If an Examiner can use common sense to make a rejection under 103, an Examiner should be able identify a “good” amendment. Regardless, the Examiner shouldn’t really care about the commercial viability of the claim — it is the Examiner’s job to identify what is patentable (and what is not) and Applicant’s attorney’s job to determine if what the Examiner is willing to give sufficient to meet the goals of the applicant.

    “While the Examiner IS competent to raise objection, he is NOT competent to say what IS patentable”
    Yet another inane comment. What is patentable is defined as what is not unpatentable. See 102/103, if it isn’t unpatentable, it is patentable. Thus, if the Examiner is competent to say what is unpatentable, then the Examiner should easily be able to identify what is patentable.

    BTW: you should look up the definition of “D’oh” — the usage of which is made famous by one Homer Simpson.

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  27. “When an application discloses patentable subject matter and it is apparent from the claims and the applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and when possible should offer a definite suggestion for correction.”

    Similarly, MPEP 706(III) states:
    “If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.”

    A proper examination is where both parties (i.e., the examiner and the patent professional) bring different expertise to the table and both parties are directed to the same goal – correctly defining the line that demarcates applicant’s invention from the prior art. This goal, however, is not achieved when the Examiner plays a game of cat and mouse with applicant whereby the Examiner knows where the line can be drawn but does not express that opinion.

    Contrary to Max Drei’s (yet another) inane and illogically thought out comment, I would rather have the Examiner say “this is the line I’m willing to accept – if you want any more than this line, you are going to either have to provide some very convincing arguments or be prepared to go to the BPAI)” than have the Examiner “write another rejection and take a full measure of time to communicate to Applicant the legal justification for any rejection.” In the first instance, prosecution can be concluded (and the backlog reduced) far quicker than the second instance.

    The reason why many Examiner do not choose the former (although many do) is that because of the current environment at the USPTO, far more scrutiny is put on an Examiner when a claimed is allowed versus when the claim is rejected. It is easier to “reject, reject, reject” than get dinged by the second pair of eyes.

    Reply
  28. MaxDrei I agree with you. If a patent attorney doesnt know how to write claims that are patentable over the prior art, then what is the point of having a patent attorney.

    The Examiner didnt meet with the inventors, the Examiner didnt draft the application, the Examiner didnt talk with corporate counsel about the desired scope of claim coverage. Yet the Examiner is supposed to provide a company with a claim that not only describes what the inventors had in mind, but also gives a company adequate claim coverage.

    Seriously, what do patent attorneys do besides gripe about Examiners?

    Reply
  29. I find it entertaining when Malcolm complains about other people “whining.”

    Reply
  30. Noise, I don’t know what “D’OH” means, sorry.

    Not even SCOTUS says “This claim is valid”. Instead, it says “This claim is not proven to be invalid” Or do you disagree with that too?

    Readers, my thought about the backlog is that things get done more efficiently (and therefore quicker) if the doer takes the time to do the job properly, first time around. The “job” of course is the search and the FOAM.

    Reply
  31. MaxDrei,

    playing the fool again I see:

    “…he is NOT competent to say what IS patentable,…”

    D’OH

    “…thereby to drive down the backlog.”
    - since we know that driving down the backlog is a prime ingredient for quality examination
    /off sarcasm

    Reply
  32. I’m interested in this idea that the duties of the Examiner include “pointing out patentable material”. I thought the Examiner was employed by the Goverment (the public). I thought the justification for a patent system was to promote the progress by getting innovation published up front, enabling and early. The price to be paid for all that promotion of progress is that the party doing the revealing gets in return a time-limited monopoly. At least in Pharma, three cheers for a properly functioning patent system.

    Look, either it’s obvious from the Office Action what is the residual subject matter that’s patentable over the art, or it isn’t. If it’s obvious, even the prosecuting attorney can see it without further prompting from the PTO Examiner, no?

    As a member of the tax-paying public, however, I for one don’t want my employee re-writing Applicant’s claims, to give him a monopoly of even wider scope that his own well-paid patent attorney can think of. Instead, I require each of my employees to spend their precious time:

    1. writing another rejection and

    2. taking a full measure of time to communicate to Applicant the legal justification for any rejection;

    thereby to drive down the backlog.

    And anyway, there’s a more philosophical point here. While the Examiner IS competent to raise objection, he is NOT competent to say what IS patentable, if only because he lacks the exhausive knowledge of the state of the art that is enjoyed by the hypothetical PHOSITA.

    Besides, what does a PTO Examiner know about claim drafting, and which of the infinity of possible claim amendments has most commercial value to Applicant?

    Reply
  33. If claims do not comply with Section 112, then the examiner’s job is to issue 112 rejections.

    And the examiner’s job is not to milk cases for counts.

    Reply
  34. “…examiners will milk cases for counts.”

    so, pto, are you saying that THIS is the examiner’s job?

    I thought it was to examine an application to see if it passes the lawful requirements (and yes, that includes 112) in a compact prosecution – I would think that “compact” and “milking counts” would be mutually exclusive.

    Further, I’m sure that there is an MPEP section actually suggesting that you do offer help in pointing out patentable material within the application, and while I realize that this is mere guidance, I’m pretty sure that “reject-reject-reject” has not been codified into that same body of the MPEP.

    Reply
  35. curious, you then must enjoy writing frivolous rejections or seeing them. An examiners job is not to compose Applicant claims or constantly issue 112 rejections. Without some sense of negotiating authority, which only a handful of examiners have, examiners will milk cases for counts. Take a look at the MPEP, you may have heard of it, and note this discussion is regarding pendency.

    Reply
  36. “it is solely the responsibility of the applicant to reduce pendency by complying with formal application matters, and avoid 112 issues stemming from claims written so broadly or incoherently.”

    It is unfortunate that some of the examiners do not understand their jobs.

    Reply
  37. with increase in attrition, lack of good training programs, and an increase in complexity of the art, it is expected that an increase in pendency will ensue. Also it is solely the responsibility of the applicant to reduce pendency by complying with formal application matters, and avoid 112 issues stemming from claims written so broadly or incoherently. However, with current economic pressures, a decrease in application filing, and a freeze in hiring, you will more than likely see a drop in pendency as examiners and supervisors adopted compact prosecution policy to accelerate the case to a disposal or allowance.

    Reply
  38. When I was a patent examiner in the ’80s (I was a mere child!), there was a slogan “18 by ’83″! Which meant an average 18 month pendency. Then State Street and the biotech revoluion happened…

    Reply
  39. Herbert: “It seems to me that pendency is not a very good metric to use to judge backlog status. Time from filing to first action is the only metric that is totally dependent on the backlog.”

    You have a point, but only one of several. Importantly, key statutory pendency goals were set for the PTO by Congress but the PTO refuses to publish statistics related to these goals:

    35 U.S.C. § 154(b)(1)(A)(i) – First Office Action within 14 months
    35 U.S.C. § 154(b)(1)(B) – Patent grant within 3 years
    Patent term must be adjusted day-for-day of PTO delays beyond these goals (“PTA”).

    Thus, a composite numeric patent term adjustment for each granted patent tells the story on the face of every issued U.S. patent. The alarming trends of the statistical distribution of PTA are shown in my UC Davis Law School presentation at link to works.bepress.com (See Slide 9).

    Exercising no substantive oversight over PTO operations, Congress bears much of the responsibility for the backlog and delays by not appropriating sufficient funds for the PTO to acquire and retain examination resources over the years. However, PTO’s refusal to communicate and measure itself based on real operational parameters such as PTA and application rate vs. disposal rate did not particularly help Congress understand the gravity of the situation. It is evident that Congress still doesn’t get it.

    Reply
  40. Just when you thought comment quality could not be degraded any further, I present anagrams of PTO leaders past and present:
    1. Sand Judo
    2. Anteater Perm Girl
    3. Vodka Spa Dip
    4. Acidic Hog Loins
    5. Condo Did Stink
    6. Epic Frog Agony
    7. Jean Orgasm

    (hint: initials are JD, MP, DK, NG, TD, PF, JR respectively)

    Bonus: patent bloggers
    Rich Dunce Son
    Hearing A Groan
    A Dom Orgy

    Reply
  41. It seems to me that pendency is not a very good metric to use to judge backlog status. Time from filing to first action is the only metric that is totally dependent on the backlog.

    Reply
  42. Re the old “holy grail” [only regularly achieved in certain low-tech art units] of only 18 months total application pendancy to issuance: Remember that that was before we got 18 month publications of more than 90% of all U.S. applications, which only started on 11/29/2000. These application publications have partially cured some of the prior PTO problems caused by long and/or inconsistent length secret pendences of U.S. applications. In particular, frequently erroniously issuing later-filed applications because material [even interfering-claims] earlier-filed [prior art] applications had not yet issued. [That still can happen, but need not.]

    Reply
  43. My reaction is similar to the orignal poster: I am not offended by 3 year average pendency. That seems to have been the norm in my area for quite some time.

    As a former examiner in the early ’90′s in group 230 (Electrical arts), I recall the goal was to issue a first office action within some one to two year time frame (18 months?). 18 months was definitely not the average pendency in our group which was much larger than that (maybe just under 3 years???).

    I am wondering if the 18 month average pendency cited above (which is not in accordance with my memory) is a result of both the quick Examination in more established technologies (similar to today, there was difficult time attracting/retaining Examiners in certain technologies) as well as the relative volume of cases handled by these quick examining groups v. the volume of cases handled by the slow groups.

    Maybe someone with more time on their hands than me can further analyze average pendancy v. technology.

    Reply
  44. Mark,

    You may be interested to see a different opinion regarding “same mission” over at the “Just an Examiner” blog.

    Reply
  45. anagrams of “patent examiner”:

    An inexpert team
    An expert inmate
    A tax preeminent
    A permanent exit
    Extra inept, amen
    Mean anti-expert

    Reply
  46. “I figure that the isolated problems you note are to be expected of an organization of this size, and on the whole we’re not looking so bad”

    6, based on the current budget situation, now is not that best time to embrace a “good enough” attitude.

    Reply
  47. In Dennis’s earlier post, he makes the point “There are other contributors to the problem – such as applicants and examiners unwilling to reach a compromise…”

    I don’t think “compromise” is an appropriate mindset to bring to patent examination or prosecution. Both the patent bar and the examiner corps have the same mission – to get patents to issue with claims that meet the legal requirements of patentability.

    Yes, it is a dialectic proceeding, with both parties often viewing the same facts and reaching different conclusions, but it’s not like they are competing for a limited resource where they need to divide up who gets what.
    The goal should be to clarify whether or not a given claim is allowable under current laws and regulations, not “let’s make a deal”.

    Reply
  48. Even as of FY 2007, what official PTO statistics have been misleadingly calling all “new” application filings are in fact 19.6% RCE’s, 11% continuations and 4.8% divisionals, or a total of 35.4% NOT new applications [per a public report by recent PTO official Esther Kepplinger, who should know]. [This has been leading to countless erroneous commentaries about the extent of the increase in new application filings.]

    I understand that the PTO has also been counting as application “disposals” the filing of RCEs to keep them pending!

    [Which illustrates why independent statistical studies like Dennis is doing are essential for getting at the truth.]
    However, the above two are the only patent people I have ever heard expressing the view that the backlog of PTO unprocessed patent applications has not significantly increased, especially in important high tech areas, and not even counting the apparently deliberate [and desirable to many] delays of “business method” patent issuances.

    Reply
  49. “What about tools to develop software program development tools? ”

    I happened to think of that myself when I went and looked up the class. The subclasses are even more outrageous than the class itself.

    After USSC gets done with Bilski the subclass will need a header – If your application gets classified here you may as well abandon it.

    No I didn’t miss that RA, but I figure that the isolated problems you note are to be expected of an organization of this size, and on the whole we’re not looking so bad.

    Reply
  50. “Mark, I notice that there don’t seem to be too many areas that were getting avg fd’s of 02′ being sent out in 08′. That would be 6 yrs…”

    6K, did you miss Mr. Katznelson’s apples and oranges point?

    Reply
  51. “software program development tools ”

    LOL. What about tools to develop software program development tools? Even more essential!!!!

    I know, I know. Those tools are people. Or more accurately: those people are tools.

    Reply
  52. “Mark, I notice that there don’t seem to be too many areas that were getting avg fd’s of 02′ being sent out in 08′. That would be 6 yrs…”

    You are right. I wasn’t agreeing or disagreeing with the “seven years of backlog” number. I was just providing a link to data.

    Reply
  53. I know a gal in multiplexing, (she may have left the office by now tho, haven’t talked to her in a bit) and that sht is pretty complicated, AND there is a shortage of people who want to spend their day looking at it. For good reason. The new 9k bonus they were paying to get EE’s in here to look at that type of thing isn’t NEARLY enough to pay someone spending their day going through that boring sht. You could drop dead literally from just spending a few days looking at it.

    idk what the problem is in radiation imagery, but I expect it is more of the above.

    It is kind of to be expected. If you want people to look at stuff that might be lethal with prolonged exposure you have to pay them to do it.

    “software program development tools (Class 717) … have inventories around 70+ months to first action”

    Good thing too huh?

    And hey, do your math right, 70 mo is ~6 years. If we could get class 717 up to around 240 mo or so we’d be in biz :)

    “since it surprised me but temporary furloughs may be coming”

    I know, such bs. And I’ve heard they expect us to actually work during these unpaid times. LOL. We’ll see about that.

    Mark, I notice that there don’t seem to be too many areas that were getting avg fd’s of 02′ being sent out in 08′. That would be 6 yrs…

    Reply
  54. “What high tech art has a “deferral” due to the backlog being almost 7 years?”

    Filing dates for US patents getting their first office action now. link to bit.ly

    Broken down by tech center.

    Data was last updated September 08 although it is repeated every week in the OG.

    Reply
  55. … and the new EAST apparently can’t group any foreign with U.S., so

    flip, flip, flip…

    Reply
  56. For example, radiation imagery, multiplexing, and software program development tools (Class 717) all have inventories around 70+ months to first action. The chart below is from a Doll presentation in 2006. The numbers for Class 717 I recently pulled off of PAIR. I don’t expect the inventories to go down now (since it surprised me but temporary furloughs may be coming).

    link to nipra.org

    [I think what the new EAST does is let you sort by application number. That's not going to pull most families together, especially the hairy ones....]

    Reply
  57. btw RA, fyi, we just got our new East and from what I understand, it either automatically groups up the families of patents, or you can set it to. And you can do all kinds of cool stuff. Not that I probably will do any of that cool stuff very soon.

    Reply
  58. “But right now in the U.S., the high-tech deferral due to the backlog is almost 7 years as well. The backlog is currently hurting American businesses (and their ability to be competitive in an international market) much more than it is hurting attorneys or the PTO.”

    What high tech art has a “deferral” due to the backlog being almost 7 years? Please provide more than one answer.

    Reply
  59. “But right now in the U.S., the high-tech deferral due to the backlog is almost 7 years as well. The backlog is currently hurting American businesses (and their ability to be competitive in an international market) much more than it is hurting attorneys or the PTO.”

    What high tech art has a “deferral” due to the backlog being almost 7 years? Please provide more than one answer.

    Reply
  60. Whining by a certain segment of the patent bar….kinda like someone that posts the same tired criticisms here, at least 10 times a day, every day…LOL

    Reply
  61. Ron Katznelson: “If you show these two distributions together, the shift to the right in the recent distribution would paint the real story. It will also show that the increase in average pendency of issued patents over the last 2.5 years far exceeds the pendency increase reported by the PTO. ”

    Of course, the “average” pendency increase says nothing about what I or the “longtime partner” above are experiencing. As we know, pendency is not the only thing that, on average, is “increasing” at the PTO. Application filing has increased (far more rapidly than the increase in pendency), which means that the filing of garbage is increasing and where do you suppose most of that garbage is coming from?

    It’s the same story with the appeal rate: too many crap applications, too many crap patents, the PTO stops issuing crap, well, geez, what do you know, the appeal rate goes up and pendency goes up.

    Get rid of abstract business methods and software patent garbage and watch the pendency rate and appeal rates plunge.

    Reply
  62. “Likewise, I’m not seeing it either. The whining is coming primarily from a certain segment of the patent bar that is feeling abused because it is no longer getting the rubber stamps that it grew to rely on.”

    Obviously Malcolm doesn’t work for cutting-edge industry where businesses are having to make product launch decisions by divining their competitors pending applications and what claims their competitors might get, since the high-tech backlog is now (often) greater than the product development cycle.

    Japan is a good example. Deferred examination was introduced with a seven year deferral. Businesses complained that that introduced too much uncertainty in their product development cycles; they wanted to be certain that a patent would not issue sooner. So the deferral period was reduced to three years.

    link to fukamipat.gr.jp

    Perhaps Malcolm will assert the Japanese businesses were whining. But right now in the U.S., the high-tech deferral due to the backlog is almost 7 years as well. The backlog is currently hurting American businesses (and their ability to be competitive in an international market) much more than it is hurting attorneys or the PTO.

    (The backlog in low-tech is not bad at all, but low-tech won’t keep America competitive.)

    Reply
  63. “to dispel Malcolm Mooney’s assertions about “whining”, ”

    MM merely stated a fact. No matter how you swing it there is whining going on. And you don’t hear as much whining from certain areas as much as you do from others.

    Reply
  64. Ron,

    I would daresay that Malcolm’s posts fall under the “gratuitous” category.

    Thank you for your tireless afforts to add substance to the discussions on these boards.

    Reply
  65. A bit of a news flash for folks: The House and Senate have both passed H.R.3114, which allows the Patents business unit at the USPTO to borrow from the Trademarks unit through 30 June 2010. The money borrowed must be repaid to the Treasury by the end of FY’14. A patent fee surcharge may be established no later than the end of FY’11 to cover the cost of repayment.

    Reply
  66. Perhaps breaking out the pendency of applications by different disciplines (mech, chem, elec,..) or by TC would help explain why some people are see more of a difference than others. In the late 80s there was a big push by the PTO for “18 by 87″ (18 months pendency by the year 1987) which didn’t happen so the slogan became “18 by 89″. They said they made it but they was some massaging going on.

    Reply
  67. Dennis:
    The “longtime partner at a midsized IP boutique in DC” commenting above is not only wrong by two years as pointed above, but also by comparing apples to oranges. Your “Percent Application Still Pending” distribution cannot provide the average pendency of granted patents. It can only provide a poor LOWER BOUND for average pendency because the contribution to the average by the pending applications is unknown and is GROWING each day they do not issue. Therefore, despite its “predictive” nature, your chart is a rather charitable characterization of the growing problems at the PTO.

    Using actual facts for comparing apples to apples to dispel Malcolm Mooney’s assertions about “whining”, it would be useful to look at actual pendency of all patents granted this month, as you have done for patents granted in January-February 2007 at
    link to patentlyo.com .
    If you show these two distributions together, the shift to the right in the recent distribution would paint the real story. It will also show that the increase in average pendency of issued patents over the last 2.5 years far exceeds the pendency increase reported by the PTO. This is because the PTO’s average includes non-grant disposals and because the PTO is pushing to accelerate such disposals (- when have you last seen an “after final” action?), in part, to manipulate downwards the reported pendency.

    Reply
  68. “I suppose I’m something of a lone wolf in thinking that the backlog in applications we have now is not much worse (certainly not DRAMATICALLY) worse than the backlog we’ve had all along, or at least since I’ve been in patent law.”

    Likewise, I’m not seeing it either. The whining is coming primarily from a certain segment of the patent bar that is feeling abused because it is no longer getting the rubber stamps that it grew to rely on. Boo hoo hoo hoo.

    Reply
  69. Does the chart include the priority date for File Wrapper Continuations? Current RCE’s are based on the original filing date. If not, the chart is way off.

    Reply
  70. I agree, real anonymous.

    As far as my practice and those of my friends and colleagues go, pendency time has probably doubled in the past 20 years.

    Reply
  71. “When I was an examiner, back in 1990 or thereabouts, there was a lot of verbiage given to getting average pendency to 3 years – so it must have been higher than that at the time.”

    In 1990 or thereabouts the average pendency was 18.9 months, not somewhere over 36 months:

    link to ipwatchdog.com
    link to ipwatchdog.com

    In a similar vein, those were the days when substance was giver more importance than “verbiage.”

    Reply

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