As far as the 102/103 merits, I don’t have any opinion.
But as far as Patent Office procedures, they are inexcusable (though not uncommon).
— An OA once a year — inexcusable.
— Losing (or rather contending that they lost) your responses three times — inexcusable.
— Bogus OA’s — inexcusable.
All of these are excuses and delays, hoping that you will go away, hoping that the law will change, hoping that some knock-out piece of prior art will mystically appear, and/or hoping that the application will be assigned to a new examiner. All of these are because they can’t make a good 102/103 rejection but don’t want to allow the application.
My thoughts and prayers are with you and your patient client.
46
Statistics show that there have been more patent application appeals, see link to ipspotlight.com. There could be many reasons. I can provide a case which shows that incompetence and low work ethic of an examiner and USPTO offices could be among the reasons.
My application numbered 09682315 was filed in 2001 and processed for 6 years and rejected. It was about a software development system. If you know a little bit about software development then you will laugh at the rejection reasons.
The application has a claim of “software development without a compiler”. The examiner got a Java tutorial book (JAVA Database Programming with JDBC 2nd Edition, Pratik Patel & Karl Moss), hastily went through several pages (pages 265 – 268) to search for the word “compile” and not found one. Thus the examiner got his conclusion that this tutorial author had made a software development system which did not involve “compiling” and thus my system was not new and hence not patentable (office action page 4: “Patel makes no reference to compiling”; office action page 5: “again that no reference is made to compiling”). I said the examiner “hastily went through several pages” because if we went through these same pages a little more carefully, we could find the word “compiling”. The author Patel actually did say “compile Java code”: “The BeanBox will generate and compile an adapter class – code that will be executed when the actionPerformed event occurs.”. The examiner should have searched the text more carefully in his reference material. But a more sad fact was his using of word-matching to examine a software patent application. Even if the word “compile” could not be found in the whole book, anyone knowing a little bit about Java knows that Java code must be compiled for it to run.
The examiner uses the word-matching technique quite extensively in various ways. For example, on page 5 of his office action, he picked the following words out of my claim context “the input devices controllable by a user to create visual representations on the display screen,” and said that other people already used input device and already provided visual representation. It is as if saying “ already exists” when denying a claim of “a car with 4 wheels that runs on road and flies in the sky”. If you find such out-of-context rejection amusing then unfortunately such rejections formed 80% of all rejections reasons.
There is also much room for the examiner to improve his work ethic. My application was touched basically once a year by the examiner to issue an office action for a few issues and then another year for some other unrelated issues, and so on. One office action was about drawings not meeting the USPTO requirements. I sent the same drawings again and told him that those drawings were the same and were made by a professional drawing company, and the company guaranteed 100% USPTO compliance. I told the examiner that if he insisted the drawings were not acceptable then I’ll sue the drawing company. Guess what? The examiner accepted the drawings.
USPTO offices were also quite sloppy. Out of my 4 office action responses, 3 of them were discarded for no reasons. I called after long time inactivity and the examiner told me that I had passed the response deadline because they did not receive my response. I told him that I had post office receipt to prove that USPTO received my mail. The examiner said that it was not his fault and asked me to send it again. It did not happen just once, and not twice, but 3 times. I sent a letter to USPTO complaining it. I got a response from some higher officer telling me that this was normal due to the large number of correspondences USPTO had to process every day. 75% of my office responses were discarded and it was normal by USPTO standard!
45
Mr.Grouch -yes, the USPTO keeps internal records of OPQA errors under 2nd pair of eyes review program.
This program is a very abusive program – because it is administered in an arbitrary fashion. There was a list of examiners wherein USPTO officials referred to these exxaminers as “Bad people”. Some patent applications reviewed under the program have been languishing for 2 to 3 years, because of this 2nd pair of eyes program -this program has actually increased the patent backlog and decreased allowance rates – the increase in quality is dubious since, this 2nd pair of eyes review program has been administered based on “gut feelings” of managers rather and has been used in a punitive fashion against certain examiners irrespective of actual merit and quality of work.
I’ve emailed you information about this 2nd pair of eyes review program. The Patent Office is lying to you when they give you a “no records determination”. There are thousands of pages of responses with which they could have given you in answer to your FOIA request.
Jonathan Cantu (at jonathanc@whistleblower.org), the Staff Attorney at the Government Accountability Project was able to secure a huge FOIA response from the USPTO about this 2nd pair of eyes program. You and others should contact him or Attorney Karen Gray (KarenG@whistleblower.org) for your copy of this FOIA response from the USPTO.
44
Frequently, an examiner’s comment “doesn’t recite enough structure to distinguish over the prior art” means “my boss told me the claim was too broad to allow but I don’t have any decent prior art to reject it over or any legitimate 112 rejections to make” — so why don’t you just narrow the claim by adding additional structure. My boss may then think that it is narrow enough to allow, and also compliment me on how I forced you to narrow the claim.
43
Frequently, an examiner’s comment “doesn’t recite enough structure to distinguish over the prior art” means “my boss told me the claim was too broad to allow but I don’t have any decent prior art to reject it over or any legitimate 112 rejections to make” — so why don’t you just narrow the claim by adding additional structure. My boss may then think that it is narrow enough to allow, and also compliment me on how I forced you to narrow the claim.
42
e6k:
Priority date before PGpubs in general existed. For example, you’re searching based on a 1999 date, where the only hits you’ll get are issued patents. So there’s far less prior art to pick and choose from.
41
e#6k – I fear you are making sense on your Feb 17 post. I’m once again in the awkward position of agreeing with you on something. 🙂
40
I’m afraid you’re not making sense Just an. If the guys have a priority date before the pgpub that would be a ref then that’s fine, why does it mean there won’t be any good art in our databases?
The part about the bigger art is no doubt true though.
39
It’s because of pre-grant publications. The amount of prior art available now, that is readily accessible for us to use, is gargantuan. The curve of the graph fits the exact time when PGPubs started getting published.
It’s fairly common (though getting rarer) to talk to another examiner and hear them moan about having a priority date before PGPubs. And now there won’t be any good prior art in our databases and they’ll have to search NPLs.
38
Off with his boss’s head! 🙂
37
Purdue- First, I’m the type of examiner who is thinking what that examiner is saying. Although if it comes to a discussion I’ll never be saying that, and I’ll be pulling out the art. The practices of the attorneys that I deal with are thus not dissolving into the same thing yours is.
Second, I have two cases so far that I have made a suggestion as to what path would distinguish over the prior art of record , and that which I reasonably felt I could dredge up and make an extension to an existing, or a new 103. In both allowances the suggestions I made where clear features of the disclosures, and were clearly not present in the claims. Both features if I recall were points of contention between me and the applicant about what the art portrayed, and in both instances I was clearly in the right. One time apparently they didn’t read the whole 50 page ref (or do a word search for the relevant portions) and one time they had completely misconstrued my rejection so that it pointed to different Figures than the ones I specifically cited for different features of the claims (I’m not even sure what possessed them to do this other than it would have been a more simple construction of what the prior art structurally had in entirety).
Finally, from your excerpt it seems blatant to me that the examiner was rejecting you under 112 (perhaps he was too green to understand this or clearly convey this to you) for not reciting enough structure to enable the practice of your invention including the functional relationships in the structure that make it possible, and instead picking and choosing structural components you were comfortable limiting your claims to and that you felt were the heart and soul of the inventive concept (which they likely were, but your embodiments required other structural characteristics you didn’t claim in order to accomplish your concept). In that case, prior art showing the required structural limitations is irrelevant, there is no discussion of art required at all. I’m going to be putting a case out like this today that should have been a first action allow but instead they wanted to omit 2 key structural features that enabled them to say one of their limitations terms and instead wanted to leave it ambiguous and claim the genus of the species they are part of. I would bet 1000$ that if what you said above is true then that is what happened, too bad you weren’t experienced enough to see it for what it was.
He clearly says “Well, they don’t recite enough structure” not “Well, they don’t recite enough structure to distinguish from the prior art” so fing ask him what critical structure he believes is omitted and why it would need to be inserted as a limitation instead of asking him about the references of record, they’re irrelevant. Sometimes I wonder what planet you attorney’s live on because it’s obviously not the same one I do where the examiners you’re dealing with are not masters of the law they’re applying, but are instead trying to wield a two handed sword (the MPEP and patent laws) like a scalpel (112, the word “enable”) and there will be mistakes made in such an application. Your objective should be (if you want a quick and painless allow) to overcome whatever it is that is blocking your application and it doesn’t take a genius to tell that it might have been poorly related to you by the 1-2 yr. examiner. Some attorney’s I see account for this in their replies, some don’t, guess which ones have more success with their claim (slightly amended) and which ones file a continuation?
I guess this is why many firms like their attorney’s to have office exp., they have an increased chance to know that the examiner used something wrong but will recognize the problem that the examiner is trying to highlight with whatever he put down. Note that this is not to excuse that examiner from doing a bad job, which was likely the case (it is his job to clearly tell you the problem) but it is to inform you of what action will most benefit you in such situations.
36
Yes we can. Let’s do it.
35
This bureaucratic reaction by the PTO is an embarassment and a disgrace to the US. We have been complaining about lax IP protection in other countries, and the PTO’s lame-brained initiatives to drive up costs and make it harder for applicants to get patents are being commented on by the learned scholars in those countries as a sign of either US hypocrisy or idiocy. We should go to a straight publication system, and let special patent courts decide whether the claims of a patent are valid and infringed. Fire the whole lot of these cowardly bureaucrats, and outsource their jobs to India. Let them try their hand at something they are better suited to, like flipping burgers or mowing lawns, they obvioulsy have no idea how to examine patents.
34
I think the Patent Training Academy (an 8 month training program for new examiners) has something to do with the decreasing allowance rate. Perhaps it is possible to compile the allowance rate of examiners in the academy and those outside the academy. I am very sure you will find the academy allowance rate is impacting the overall allowance rate.
33
I think the Patent Training Academy (an 8 month training program for new examiners) has something to do with the decreasing allowance rate. Perhaps it is possible to compile the allowance rate of examiners in the academy and those outside the academy. I am very sure you will find the academy allowance rate is impacting the overall allowance rate.
32
I was at a session at AIPLA where this graph was presented by the Commissioner. There was no mention of cause and effect with the downward trend in allowance rate. I questioned whether the emphasis on “errors in allowance” as the measure of quality might be causing the downward trend in allowance rate. As it turns out, the abandonment part of the denominator includes RCE’s. Apparently, it is my understanding that the rate of RCE’s has increased as the allowance rate has decreased. RCE’s may improve patent quality, providing the Examiner a second chance to search the prior art to locate better references and providing the Applicant a chance to amend the claims after a final rejection or enter evidence of non-obviousness. Otherwise, this graph has little to do with either quality of patents issued or a reduction in overly broad claims being issued by the USPTO. However, I believe that it is being presented to corporate executives and policy makers to imply that the USPTO has done something to “fix the problem” of too many bad patents being issued. To the extent that the “problem” is really one of a perception by “influencers” of a flood of bad patents being issued without adequate review, perhaps the graph does fix the problem?
31
hello, i am an indian patent examnier ,and from the little understanding of U.S patent office and the U.S patent law i submit these views.
obviousness requirement is only “ordinary
skill”(phosita) unlike europe.
From popa website i understand the trmendous pressure by pto management on U.S examiners ,with only one single goal of clearing pendency.
While reading USpto/ EPO examiner’s objections using pubpair /epo plus related to same application,i used to feel “the examination” of epo examiner’s,resulting in much less broader claims and unambigous claim wording ,in epo as compared to us.
Even the intl search reports of pct applications issued by uspto didnot used to bring all relevant prior art,which would be brought out subsequently in epo’s IPER.
i feel the allowance rate or its variations represent only half the picture.as long as the U.S believes in its “own patentabilty criterion”, the calls for U.S patent system reform will continue and many blackberr episodes we will see!
30
Interesting how many people are attempting to attribute this to poor examiners. There are a myriad of other factors at play, and it could just as easily be on the other side of the table.
As a former examiner, I recall that under the review process and other quality measures, it is more reasonable to at least address a reference and have it on the record, rather than have a supervisor or QA find it and suspect the examiner of neglecting it. Assuming the law will never be dead-on accurate, it is best to err on the side of caution (a difficult balancing act in itself) as once an allowance is issued, it is very difficult to go back. Not that I would intentionally cite “bad references” or “bad combinations,” but things that should be brought to attention. If they were argued away, I like to think that I was reasonable in dropping them. Unfortunately the produciton system sometimes encourages examiners to retain a questionable reference rather than spend who-knows-how-long trying to find another.
Often times it would come down to a specific term or limitation that was nebulously defined in the specification, causing the examiner to be a bit apprehensive of the prior art. Often times I felt that I had novel ideas that were maybe a little too far reaching. Communication of these ideas can diffuclt at times, with communication via office action. But that’s just one guy’s experience….take it or leave it.
29
stepback,
before you promote APJ *** to sainthood, I would like her to explain why her wisdom is not imparted to the rest of the examining corp? I wonder why the PTO does not setup a system that would penalize these examiners who get their appeals reversed. As I understand it, examiners who have appeals reversed can just allow the cases without any errors attributed. This after inventors/companies having to spend huge sums of money on such ridiculous errors as you’ve found!
I am a fair guy, so I won’t lay all of this on the examiners. It is my experience that the APJs are not much better. I have had several appeal decisions – both affirmed and revered — where it was apparent that the APJ did not even understand the technology!
I would be really interested in seeing the work of APJ *** when she was an examiner and judge what kind of quality actions she produced. If it’s just as bad as the current examining corp, then we know there is something wrong with the system — e.g., training or production requirement.
28
No you may not see the claim, and it would be meaningless without the 5 or 6 references the Examiner applied. I should add that this was after two RCE’s with me naively assuming that the Examiner was applying the law of Sections 102 and 103. Silly me. The allowed narrower claims had limitations introduced by the Examiner that formed no basis for patentability, just made the claim longer to satisfy her aversion to claims that were subjectively too broad.
27
In terms of finding a metric for quality, I think there is only one that gets right to the point: “Number of patents found valid in litigation divided by number of patents litigated”.
The USPTO puts roughly $5,000 worth of effort into claim scrutiny. In litigation, close to 1,000 times more effort is put forth into scrutiny. I can’t think of a more effective metric. The problem is you are then measuring the effectiveness of policy/procedure as much as 10-15 years after the fact.
One of the toughest challenge facing the USPTO is that examiners have absolutely no way of knowing what “one of ordinary skill in the art would have found to be obvious, in the absence of hindsight, at the time of priority”. For instance, I’ve seen dozens of patents issue for the simple reason that the examiner did not understand interchangeable or analogous clinical terminology – there is no way to search it in a database, you’ve got to grow up in “the industry” to understand it, you have to BE one of ordinary skill IN THE ART before you can have a basis for judgement as to what is unanticipated.
I think the only effective short term way to improve this is to put more ‘bite’ into the obligation of the applicant as to ‘duty of candor’. Presuming the applicant is one of at least ordinary skill, he/she should have a duty to disclose not just the prior art patent or NPL document, but specifically what in that art is relevant to the claim being pursued and why. If willful failure in this ‘new’ duty of candor occurred, the price should be more akin to criminal fraud in addition to invalidating the patent. At the end of the day, an insincere “inventor” combined with a poorly supported examiner will result in garbage patents. If an inventor knows that he will personally pay a price if he signs his name to garbage claims, you would see less “garbage in, garbage out”. As it stands, most inventors named on patents are contractually obliged to sign off on continuation or divisional applications that they are aware are garbage – placing the obligation squarely on the inventor’s shoulders to say “No”, would likely go a long way in the short term without bogging down the USPTO backlog.
Wow, I really rambled. Sorry! 🙂
26
“And, of course, my filing of a continuation to get claim 1.”
May we see the claim?
25
I have to add an example of an interview I recently had with a junior examiner recently granted signatory authority. The thing that provoked the interview was the fact that a GOOD reference was cited and distinguished and every subsequent rejection deteriorated in quality in terms of the references applied and their application.
EXAMINER: Your claims are just too broad.
ME: Ok, in light of which references?
EXAMINER: Well, they just don’t recite enough structure.
ME: Ok, let me briefly run through the references of record . . .
EXAMINER: Well, ok, but they’re just too broad.
ME: Well, too broad is not the law. I really don’t want to have to appeal this. If you don’t like claim 1, take a look at the other independent claims, they recite quite a bit of structure, but, again, even claim 1 distinguishes the art of record.
Result, allowance of the two “narrower” independent claims. And, of course, my filing of a continuation to get claim 1.
I’m afraid this is what my practice is devolving into, not a candid discussion of the “combinability” of obviousness references, whether under TSM or some other test.
24
Yes, I cut my teeth in the 1990s. Like most new to the profession, whether Examiners or attorneys/agents, I mistakenly believed that the relationship between the PTO and Applicants was purely adversarial. They say NO, and I say YES until someone gives.
A Primary Examiner once explained that he viewed his job as GRANTING patents, not rejecting them, the proviso being patents that distinguished the prior art of record. This was revelational to me.
My current perception, particularly among young examiners without signatory authority, is that they are not being restrained from their “newbie” attitude of NO NO NO, thus turning the USPTO into the USPTRO: The United States Patent and Trademark Rejection Office.
Yes I have seen “bad patents.” I have been a party to the grant of relatively few of them. Post-grant, the “bad patents” usually resulted from one of two things, both likely related: a lazy examiner doing a poor search or review of the references of record and an applicant citing an overwhelming amount of prior art.
I am just not convinced that there is any past systemic problem at the USPTO that is measured by “allowance rate,” although there may be one brewing. Further, if it is deemed that the United States needs a tougher standard of patentability as a matter of policy, that policy and standard should be promulgated through Congress, not the courts.
23
Regarding junior examiners.
Let’s remember that the first thing an examiner is taught by a training primary is how to reject an application. “Go find some references and we’ll come up with a rejection.” Only after the junior examiner shows proficiency at rejections will the primary consider a suggestion by the junior that something is allowable.
Get an application before a 1-2 year examiner and your chance for allowance without a big battle goes way down.
22
“We want to allow claims that are in fact allowable, thereby properly granting inventors their patents, without taking anything more than that out of the public domain.”
This may sound nice and dandy, but can you explain how different examiners in the same art unit can produce different rejections that have apparent different threshold of allowability? We’re not even talking about different TCs! One known secret is that getting a primary examiner is preferable to a junior examiner because primary examiners are under tougher production requirement, making them more amenable to allowing cases. This is not consistency, which should be a parameter of quality!
Perhaps to really address the issue of quality, the PTO should start examining its production system and question whether it currently puts too much incentive on allowances.
21
Sorry folk.
I think I found a new hero at the BoPAI. Now how do I “game” the system so that **** ends up on my appeal panels?
“The Examiner provides no evidence that one of ordinary skill in the art would not read the specification in accordance with commonly understood English grammar. Note that claims as well must be so read. See In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir.1983) (“A claim must be read in accordance with the precepts of English grammar.”).”
What’s that? English grammar? Tears are welling up in my eyes.
And then get this folk: a strange concept known as “proper notice” (now I’m bawling like a baby):
“We also find the reference to “new matter” in the context of the rejection for lack of enablement confusing. The Examiner fails to explain how this discussion of “new matter” applies to the rejection for lack of enablement. Nor, since the reference to “new matter” is contained in the enablement rejection, has the Examiner provided the Appellants with *proper notice* that a rejection on the basis of new matter is being maintained. We, therefore, will not address this issue.”
My heavens. One can find “quality” at the USPTO if only one is so unusually lucky as to land at the proper cashier’s window.
20
“Jude…. Puhhhhlease!”
Anon, you’re excused to make a more sensible reply.
Are you saying the PTO didn’t have QA in prior years to question examiner’s allowance? What was the QA doing in all those previous years? [note: rhetorical questions in case you didn’t know]
How does the second and third pair of eyes consider something to be “broad”? Can the PTO divulge this secret so we can avoid drafting such claims? More importantly, are you implying that if the second and third pair of eyes deem something to be broad, then the examiner has to come up with some crappy rejection in order to avoid an error? That is “in the eyes of the law”? Which school did you go to, if any?
Your only valid point concerns the quality of office actions — in terms of questionable rejections based on ridiculous combinations and logic in the attempt to lower the allowance rate. I believe this issue will be addressed in the house judicary committee tomorrow. My take on this is that to improve quality, you have to: first, define what constitutes a quality office action; second, make sure the examiners have adequate time to produce the quality office action. As you said, it is no secret that examiners are under strenuous production requirement. While these quality initiatives have been added through these years, I don’t believe examiner’s examining time per case has been increased at all.
19
p.s. A quick google search on APJ *** demonstrates that at least one appeal panel she was on understands complicated concepts such as “teaches away”. I wish that the general populace in the Examiner Corps would learn that concept.
“Indeed, as stressed by appellant, Nock teaches that the drawer frame is adjusted to *prevent* any lifting of the frame from the carrying plates such that the frame *cannot be lifted* … Hence, we concur with appellant that Nock *teaches away*”
“… the examiner’s rationale amounts to nothing more than what *could be* accomplished by one of ordinary skill in the art if so inclined with the proper motivation. However, what *could have been* done by one of ordinary skill in the art is not the proper test for obviousness under § 103. … we agree with appellant that the examiner’s rejection is based upon impermissible hindsight”
Now if only such basic understanding about the difference between “could” and “should” could permeate itself all the way up to the US Supreme Court. “Could” it happen? Will it happen? From what I understand, ours is a country where “gobbledygook” happens. So regretably I don’t have expectations for improvement in “quality”.
(Query: Why would a case like the one above even go up on appeal? Why couldn’t an SPE or a Director intervene if the “teaches away” aspect was so clear cut? Isn’t this a huge waste of resources, for the PTO and for Applicants? Also, what are people’s experiences out there with Pre-Appeal Conferences? Let’s all step back and have a civil discourse.)
18
I thank APJ **** for joining the discussion regarding “quality”.
(And I thank Dennis for giving me back my commenting wings –probationary?)
I’d be interested to learn how the BoPAI views “quality” in terms of Applicant Appeal Briefs and Examiner Answers.
Is there any change in quality over the years?
Are Applicants getting any better at understanding what an “administrative record” is and what the difference is between “evidence” and “attorney argument”?
Are Examiners getting any better at understanding what the basics are for presenting a prima facie case of obviousness?
Finally, speaking of “evidence”, how many people here have gone to the dictionary to look up the possible definitions for the word “quality” before launching into debate over the undefined term? What exactly do we mean by “patent quality”? What atttributes are we (other than the USPTO QAS squads) measuring prior to giving a quality grade to US or European (or other?) patents in general?
We see, from these excellent comments from inside the USPTO, how hard it is for parents (society, represented by the Examiners) to impose discipline on children (patent attorneys writing crap)who have hitherto been indulged. What thanks you get for your efforts: verbal abuse, from every quarter. As the last contributer explained, the USPTO is intent on balancing the legitimate expectations of Applicant with those of society. But that’s still not good enough for some people. Mrs Thatcher, for example, famously announced “There is no such thing as society, only individuals and families”
I am familiar with the mischief (perpetrated on “society”)of issued patents with a single over-broad claim tucked away somewhere in a long set of narrower claims. I am interested to see the USPTO definition of “quality not good enough” namely, in an allowed application even just one bad claim. I say “Well done the USPTO. Now all you have to do is reduce pendency, without loss of quality”.
16
Actually, we examiners are repeatedly told that an error is an error is an error. It is just as much an error to make or maintain a rejection when none is warranted as it is to allow something non-allowable. I know that to many practioners we seem to be the US Rejection and Trademark Office, but I and the people I work with really do see it as a balancing act. We want to allow claims that are in fact allowable, thereby properly granting inventors their patents, without taking anything more than that out of the public domain.
15
Jude…. Puhhhhlease! The alarming decline is in the ability of Examiners to find that something is allowable whether or not it actually is in the eyes of the law. It is no secret that Examiners are placed under very difficult pressure to make sure that an application they allow will not be questioned by Quality Assurance, as this could negatively impact their bonus and review. Second and third pairs of eyes tend to find that a claim “seems a bit broad to me” even though the second and third pairs of eyes are not aware of any prior art in particular. While the PTO clamps down to make sure that issued applications are truly allowable, apparently nobody is minding the store with regard to the quality of the PTO’s other product: Office Actions.
Combining the fact of no quality review of office actions with high turnover and difficult production requirements, actually getting a patent application allowed is now more of a game of endurance then a question of actual novelty or prosecution skill.
14
“The Office does not report allowance rates as a measure of quality.”
The point of this discussion is that the allowance rate of patents has become suspiciously-dramatically “improved” since the public outcry against questionable patents. With statutes remaining the same and no major court opinions a la KSR, how do you explain the precipitous drop in allowance rate?
If you are asserting that there is no correlation between PTO’s quality metrics and the allowance rate, then are we seeing an alarming decline in american innovation?
13
“My point was that the PTO mindset is that lowering allowance rates shows improved quality in and of itself.”
Actually, the Office measures quality based on what they call “action taking errors” found by quality reviewers (Office of Patent Quality Assurance). They measure compliance and error rates. Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution). The patent allowance error rate is the percent of allowed applications reviewed having at least one claim which is considered unpatentable on a basis for which a court would hold a patent invalid. The latest figures can be found at link to uspto.gov
The Office does not report allowance rates as a measure of quality.
12
Of the text –I also believe that a better measure would be the number of cases that eventually get an allowance (all versions of a given case including continuations, CIP’s, RCE’s, but NOT divisionals, are 1 case) divided by the total cases is the true measure of allowance rate. I’ve heard numbers as high as 90% in the past on this basis.– the adjustment made by Quillen and Webster in (apps allowed)/(apps allowed + apps abandoned) was to subtract off ALL continuing applications in the denominator, which obviously permitted a grant rate in excess of 100% and led in fact to a report of a bound for grant rate GREATER THAN 90%. The third paper by Quillen and Webster broke down the approach to subtract, from the denominator, different kinds of continuing applications. One should note that in multi-patent families, subtracting the continuing application from the denominator still creates a problem, because the rate can be in excess of 100%.
Certain aspects of the “bad patent” issue, including that of the patent grant rate matter, are discussed at link to ipfrontline.com, in the article: Is the Jaffe/Lerner Analysis of Patent Law Correct?
11
I’m a big bad corporate patent attorney, but I’ve got to believe that there are inventors who run out of money and can’t respond to/appeal bad rejections, so there are some worthy applications that go abandoned.
Please understand, I’m on the side that believes the PTO grants too many patents, but even I can see some good applications never make it.
My point was that the PTO mindset is that lowering allowance rates shows improved quality in and of itself.
I also believe that a better measure would be the number of cases that eventually get an allowance (all versions of a given case including continuations, CIP’s, RCE’s, but NOT divisionals, are 1 case) divided by the total cases is the true measure of allowance rate. I’ve heard numbers as high as 90% in the past on this basis.
10
This data may not be a good indicator of the success rate of patent applicants in obtaining patents, because many applicants file multiple applications in pursuit of a patent. It would be interesting to see the numbers adjusted to take into account continuations, CIP’s, and RCE’s, which have become a larger portion of total applications during the time period covered by the graph.
9
“Remember, “quality” to the PTO means ONLY bad allowances, they do not measure bad abandonments that should have been allowed.”
I’d like to see an example of such an application. Are you aware of one?
8
re: Sean
No, it’s a 25 percentage POINT drop off, and it’s well outside of the 25-year trend that mainly stayed in the mid 60s. I don’t think you always need to show 0-100 to prevent a percentage scale from being “misleading.”
7
The graph is a little misleading b/c of the Y-scale. In actuality, the rate dropped from a high of 72% to the current 54%, which is (only) a 25% falloff over the course of several years. The scaling makes it look a whole lot worse than that.
6
I believe the allowance percentage is the number of allowances in the year divided by the sum of allowances + abandonments. It really doesn’t have anything to do with the number of pending cases or unexamined applications.
In my opinion, it was the shortage of examiners in the late 90’s and early 2000’s that led to the sharp increase of allowance rate. In the drive to keep the applications moving, more cases got allowed as examiners could not spend the time to keep arguing with attorneys. When the PTO changed its philosophy to not really caring about the backlog, but was embarrased about many of the patents being allowed, the word got out to the examiners to get tough.
Other things also happened. The flood of business method applications that the PTO didn’t want to allow. Also, the “second pair of eyes” in many examining groups kept examiners from many allowances.
Remember, “quality” to the PTO means ONLY bad allowances, they do not measure bad abandonments that should have been allowed.
Does the graph show a percentage of all applications pending at some point during the year? All applications on which an OA issued (restriction/election, rejection, allowance, etc.), exclusive of those which were not examined? Also, what are the statistics for absolute number of patent applications allowed each year over the same period?
3
With the increase in patent applications growing every year and the lack of patent examiners at the PTO, doesn’t it only make sense that the allowance rate would decrease
2
I’m assuming the Y-axis scale is percentage of apps allowed? Its not totally clear from the graph…
1
Wheeeeeeeee!!!!!!!!!
Now we know why patent prosecutors who came of age in the mid to late 90s have such warped ideas about what is patentable.
As far as the 102/103 merits, I don’t have any opinion.
But as far as Patent Office procedures, they are inexcusable (though not uncommon).
— An OA once a year — inexcusable.
— Losing (or rather contending that they lost) your responses three times — inexcusable.
— Bogus OA’s — inexcusable.
All of these are excuses and delays, hoping that you will go away, hoping that the law will change, hoping that some knock-out piece of prior art will mystically appear, and/or hoping that the application will be assigned to a new examiner. All of these are because they can’t make a good 102/103 rejection but don’t want to allow the application.
My thoughts and prayers are with you and your patient client.
Statistics show that there have been more patent application appeals, see link to ipspotlight.com. There could be many reasons. I can provide a case which shows that incompetence and low work ethic of an examiner and USPTO offices could be among the reasons.
My application numbered 09682315 was filed in 2001 and processed for 6 years and rejected. It was about a software development system. If you know a little bit about software development then you will laugh at the rejection reasons.
The application has a claim of “software development without a compiler”. The examiner got a Java tutorial book (JAVA Database Programming with JDBC 2nd Edition, Pratik Patel & Karl Moss), hastily went through several pages (pages 265 – 268) to search for the word “compile” and not found one. Thus the examiner got his conclusion that this tutorial author had made a software development system which did not involve “compiling” and thus my system was not new and hence not patentable (office action page 4: “Patel makes no reference to compiling”; office action page 5: “again that no reference is made to compiling”). I said the examiner “hastily went through several pages” because if we went through these same pages a little more carefully, we could find the word “compiling”. The author Patel actually did say “compile Java code”: “The BeanBox will generate and compile an adapter class – code that will be executed when the actionPerformed event occurs.”. The examiner should have searched the text more carefully in his reference material. But a more sad fact was his using of word-matching to examine a software patent application. Even if the word “compile” could not be found in the whole book, anyone knowing a little bit about Java knows that Java code must be compiled for it to run.
The examiner uses the word-matching technique quite extensively in various ways. For example, on page 5 of his office action, he picked the following words out of my claim context “the input devices controllable by a user to create visual representations on the display screen,” and said that other people already used input device and already provided visual representation. It is as if saying “ already exists” when denying a claim of “a car with 4 wheels that runs on road and flies in the sky”. If you find such out-of-context rejection amusing then unfortunately such rejections formed 80% of all rejections reasons.
There is also much room for the examiner to improve his work ethic. My application was touched basically once a year by the examiner to issue an office action for a few issues and then another year for some other unrelated issues, and so on. One office action was about drawings not meeting the USPTO requirements. I sent the same drawings again and told him that those drawings were the same and were made by a professional drawing company, and the company guaranteed 100% USPTO compliance. I told the examiner that if he insisted the drawings were not acceptable then I’ll sue the drawing company. Guess what? The examiner accepted the drawings.
USPTO offices were also quite sloppy. Out of my 4 office action responses, 3 of them were discarded for no reasons. I called after long time inactivity and the examiner told me that I had passed the response deadline because they did not receive my response. I told him that I had post office receipt to prove that USPTO received my mail. The examiner said that it was not his fault and asked me to send it again. It did not happen just once, and not twice, but 3 times. I sent a letter to USPTO complaining it. I got a response from some higher officer telling me that this was normal due to the large number of correspondences USPTO had to process every day. 75% of my office responses were discarded and it was normal by USPTO standard!
Mr.Grouch -yes, the USPTO keeps internal records of OPQA errors under 2nd pair of eyes review program.
This program is a very abusive program – because it is administered in an arbitrary fashion. There was a list of examiners wherein USPTO officials referred to these exxaminers as “Bad people”. Some patent applications reviewed under the program have been languishing for 2 to 3 years, because of this 2nd pair of eyes program -this program has actually increased the patent backlog and decreased allowance rates – the increase in quality is dubious since, this 2nd pair of eyes review program has been administered based on “gut feelings” of managers rather and has been used in a punitive fashion against certain examiners irrespective of actual merit and quality of work.
I’ve emailed you information about this 2nd pair of eyes review program. The Patent Office is lying to you when they give you a “no records determination”. There are thousands of pages of responses with which they could have given you in answer to your FOIA request.
Jonathan Cantu (at jonathanc@whistleblower.org), the Staff Attorney at the Government Accountability Project was able to secure a huge FOIA response from the USPTO about this 2nd pair of eyes program. You and others should contact him or Attorney Karen Gray (KarenG@whistleblower.org) for your copy of this FOIA response from the USPTO.
Frequently, an examiner’s comment “doesn’t recite enough structure to distinguish over the prior art” means “my boss told me the claim was too broad to allow but I don’t have any decent prior art to reject it over or any legitimate 112 rejections to make” — so why don’t you just narrow the claim by adding additional structure. My boss may then think that it is narrow enough to allow, and also compliment me on how I forced you to narrow the claim.
Frequently, an examiner’s comment “doesn’t recite enough structure to distinguish over the prior art” means “my boss told me the claim was too broad to allow but I don’t have any decent prior art to reject it over or any legitimate 112 rejections to make” — so why don’t you just narrow the claim by adding additional structure. My boss may then think that it is narrow enough to allow, and also compliment me on how I forced you to narrow the claim.
e6k:
Priority date before PGpubs in general existed. For example, you’re searching based on a 1999 date, where the only hits you’ll get are issued patents. So there’s far less prior art to pick and choose from.
e#6k – I fear you are making sense on your Feb 17 post. I’m once again in the awkward position of agreeing with you on something. 🙂
I’m afraid you’re not making sense Just an. If the guys have a priority date before the pgpub that would be a ref then that’s fine, why does it mean there won’t be any good art in our databases?
The part about the bigger art is no doubt true though.
It’s because of pre-grant publications. The amount of prior art available now, that is readily accessible for us to use, is gargantuan. The curve of the graph fits the exact time when PGPubs started getting published.
It’s fairly common (though getting rarer) to talk to another examiner and hear them moan about having a priority date before PGPubs. And now there won’t be any good prior art in our databases and they’ll have to search NPLs.
Off with his boss’s head! 🙂
Purdue- First, I’m the type of examiner who is thinking what that examiner is saying. Although if it comes to a discussion I’ll never be saying that, and I’ll be pulling out the art. The practices of the attorneys that I deal with are thus not dissolving into the same thing yours is.
Second, I have two cases so far that I have made a suggestion as to what path would distinguish over the prior art of record , and that which I reasonably felt I could dredge up and make an extension to an existing, or a new 103. In both allowances the suggestions I made where clear features of the disclosures, and were clearly not present in the claims. Both features if I recall were points of contention between me and the applicant about what the art portrayed, and in both instances I was clearly in the right. One time apparently they didn’t read the whole 50 page ref (or do a word search for the relevant portions) and one time they had completely misconstrued my rejection so that it pointed to different Figures than the ones I specifically cited for different features of the claims (I’m not even sure what possessed them to do this other than it would have been a more simple construction of what the prior art structurally had in entirety).
Finally, from your excerpt it seems blatant to me that the examiner was rejecting you under 112 (perhaps he was too green to understand this or clearly convey this to you) for not reciting enough structure to enable the practice of your invention including the functional relationships in the structure that make it possible, and instead picking and choosing structural components you were comfortable limiting your claims to and that you felt were the heart and soul of the inventive concept (which they likely were, but your embodiments required other structural characteristics you didn’t claim in order to accomplish your concept). In that case, prior art showing the required structural limitations is irrelevant, there is no discussion of art required at all. I’m going to be putting a case out like this today that should have been a first action allow but instead they wanted to omit 2 key structural features that enabled them to say one of their limitations terms and instead wanted to leave it ambiguous and claim the genus of the species they are part of. I would bet 1000$ that if what you said above is true then that is what happened, too bad you weren’t experienced enough to see it for what it was.
He clearly says “Well, they don’t recite enough structure” not “Well, they don’t recite enough structure to distinguish from the prior art” so fing ask him what critical structure he believes is omitted and why it would need to be inserted as a limitation instead of asking him about the references of record, they’re irrelevant. Sometimes I wonder what planet you attorney’s live on because it’s obviously not the same one I do where the examiners you’re dealing with are not masters of the law they’re applying, but are instead trying to wield a two handed sword (the MPEP and patent laws) like a scalpel (112, the word “enable”) and there will be mistakes made in such an application. Your objective should be (if you want a quick and painless allow) to overcome whatever it is that is blocking your application and it doesn’t take a genius to tell that it might have been poorly related to you by the 1-2 yr. examiner. Some attorney’s I see account for this in their replies, some don’t, guess which ones have more success with their claim (slightly amended) and which ones file a continuation?
I guess this is why many firms like their attorney’s to have office exp., they have an increased chance to know that the examiner used something wrong but will recognize the problem that the examiner is trying to highlight with whatever he put down. Note that this is not to excuse that examiner from doing a bad job, which was likely the case (it is his job to clearly tell you the problem) but it is to inform you of what action will most benefit you in such situations.
Yes we can. Let’s do it.
This bureaucratic reaction by the PTO is an embarassment and a disgrace to the US. We have been complaining about lax IP protection in other countries, and the PTO’s lame-brained initiatives to drive up costs and make it harder for applicants to get patents are being commented on by the learned scholars in those countries as a sign of either US hypocrisy or idiocy. We should go to a straight publication system, and let special patent courts decide whether the claims of a patent are valid and infringed. Fire the whole lot of these cowardly bureaucrats, and outsource their jobs to India. Let them try their hand at something they are better suited to, like flipping burgers or mowing lawns, they obvioulsy have no idea how to examine patents.
I think the Patent Training Academy (an 8 month training program for new examiners) has something to do with the decreasing allowance rate. Perhaps it is possible to compile the allowance rate of examiners in the academy and those outside the academy. I am very sure you will find the academy allowance rate is impacting the overall allowance rate.
I think the Patent Training Academy (an 8 month training program for new examiners) has something to do with the decreasing allowance rate. Perhaps it is possible to compile the allowance rate of examiners in the academy and those outside the academy. I am very sure you will find the academy allowance rate is impacting the overall allowance rate.
I was at a session at AIPLA where this graph was presented by the Commissioner. There was no mention of cause and effect with the downward trend in allowance rate. I questioned whether the emphasis on “errors in allowance” as the measure of quality might be causing the downward trend in allowance rate. As it turns out, the abandonment part of the denominator includes RCE’s. Apparently, it is my understanding that the rate of RCE’s has increased as the allowance rate has decreased. RCE’s may improve patent quality, providing the Examiner a second chance to search the prior art to locate better references and providing the Applicant a chance to amend the claims after a final rejection or enter evidence of non-obviousness. Otherwise, this graph has little to do with either quality of patents issued or a reduction in overly broad claims being issued by the USPTO. However, I believe that it is being presented to corporate executives and policy makers to imply that the USPTO has done something to “fix the problem” of too many bad patents being issued. To the extent that the “problem” is really one of a perception by “influencers” of a flood of bad patents being issued without adequate review, perhaps the graph does fix the problem?
hello, i am an indian patent examnier ,and from the little understanding of U.S patent office and the U.S patent law i submit these views.
obviousness requirement is only “ordinary
skill”(phosita) unlike europe.
From popa website i understand the trmendous pressure by pto management on U.S examiners ,with only one single goal of clearing pendency.
While reading USpto/ EPO examiner’s objections using pubpair /epo plus related to same application,i used to feel “the examination” of epo examiner’s,resulting in much less broader claims and unambigous claim wording ,in epo as compared to us.
Even the intl search reports of pct applications issued by uspto didnot used to bring all relevant prior art,which would be brought out subsequently in epo’s IPER.
i feel the allowance rate or its variations represent only half the picture.as long as the U.S believes in its “own patentabilty criterion”, the calls for U.S patent system reform will continue and many blackberr episodes we will see!
Interesting how many people are attempting to attribute this to poor examiners. There are a myriad of other factors at play, and it could just as easily be on the other side of the table.
As a former examiner, I recall that under the review process and other quality measures, it is more reasonable to at least address a reference and have it on the record, rather than have a supervisor or QA find it and suspect the examiner of neglecting it. Assuming the law will never be dead-on accurate, it is best to err on the side of caution (a difficult balancing act in itself) as once an allowance is issued, it is very difficult to go back. Not that I would intentionally cite “bad references” or “bad combinations,” but things that should be brought to attention. If they were argued away, I like to think that I was reasonable in dropping them. Unfortunately the produciton system sometimes encourages examiners to retain a questionable reference rather than spend who-knows-how-long trying to find another.
Often times it would come down to a specific term or limitation that was nebulously defined in the specification, causing the examiner to be a bit apprehensive of the prior art. Often times I felt that I had novel ideas that were maybe a little too far reaching. Communication of these ideas can diffuclt at times, with communication via office action. But that’s just one guy’s experience….take it or leave it.
stepback,
before you promote APJ *** to sainthood, I would like her to explain why her wisdom is not imparted to the rest of the examining corp? I wonder why the PTO does not setup a system that would penalize these examiners who get their appeals reversed. As I understand it, examiners who have appeals reversed can just allow the cases without any errors attributed. This after inventors/companies having to spend huge sums of money on such ridiculous errors as you’ve found!
I am a fair guy, so I won’t lay all of this on the examiners. It is my experience that the APJs are not much better. I have had several appeal decisions – both affirmed and revered — where it was apparent that the APJ did not even understand the technology!
I would be really interested in seeing the work of APJ *** when she was an examiner and judge what kind of quality actions she produced. If it’s just as bad as the current examining corp, then we know there is something wrong with the system — e.g., training or production requirement.
No you may not see the claim, and it would be meaningless without the 5 or 6 references the Examiner applied. I should add that this was after two RCE’s with me naively assuming that the Examiner was applying the law of Sections 102 and 103. Silly me. The allowed narrower claims had limitations introduced by the Examiner that formed no basis for patentability, just made the claim longer to satisfy her aversion to claims that were subjectively too broad.
In terms of finding a metric for quality, I think there is only one that gets right to the point: “Number of patents found valid in litigation divided by number of patents litigated”.
The USPTO puts roughly $5,000 worth of effort into claim scrutiny. In litigation, close to 1,000 times more effort is put forth into scrutiny. I can’t think of a more effective metric. The problem is you are then measuring the effectiveness of policy/procedure as much as 10-15 years after the fact.
One of the toughest challenge facing the USPTO is that examiners have absolutely no way of knowing what “one of ordinary skill in the art would have found to be obvious, in the absence of hindsight, at the time of priority”. For instance, I’ve seen dozens of patents issue for the simple reason that the examiner did not understand interchangeable or analogous clinical terminology – there is no way to search it in a database, you’ve got to grow up in “the industry” to understand it, you have to BE one of ordinary skill IN THE ART before you can have a basis for judgement as to what is unanticipated.
I think the only effective short term way to improve this is to put more ‘bite’ into the obligation of the applicant as to ‘duty of candor’. Presuming the applicant is one of at least ordinary skill, he/she should have a duty to disclose not just the prior art patent or NPL document, but specifically what in that art is relevant to the claim being pursued and why. If willful failure in this ‘new’ duty of candor occurred, the price should be more akin to criminal fraud in addition to invalidating the patent. At the end of the day, an insincere “inventor” combined with a poorly supported examiner will result in garbage patents. If an inventor knows that he will personally pay a price if he signs his name to garbage claims, you would see less “garbage in, garbage out”. As it stands, most inventors named on patents are contractually obliged to sign off on continuation or divisional applications that they are aware are garbage – placing the obligation squarely on the inventor’s shoulders to say “No”, would likely go a long way in the short term without bogging down the USPTO backlog.
Wow, I really rambled. Sorry! 🙂
“And, of course, my filing of a continuation to get claim 1.”
May we see the claim?
I have to add an example of an interview I recently had with a junior examiner recently granted signatory authority. The thing that provoked the interview was the fact that a GOOD reference was cited and distinguished and every subsequent rejection deteriorated in quality in terms of the references applied and their application.
EXAMINER: Your claims are just too broad.
ME: Ok, in light of which references?
EXAMINER: Well, they just don’t recite enough structure.
ME: Ok, let me briefly run through the references of record . . .
EXAMINER: Well, ok, but they’re just too broad.
ME: Well, too broad is not the law. I really don’t want to have to appeal this. If you don’t like claim 1, take a look at the other independent claims, they recite quite a bit of structure, but, again, even claim 1 distinguishes the art of record.
Result, allowance of the two “narrower” independent claims. And, of course, my filing of a continuation to get claim 1.
I’m afraid this is what my practice is devolving into, not a candid discussion of the “combinability” of obviousness references, whether under TSM or some other test.
Yes, I cut my teeth in the 1990s. Like most new to the profession, whether Examiners or attorneys/agents, I mistakenly believed that the relationship between the PTO and Applicants was purely adversarial. They say NO, and I say YES until someone gives.
A Primary Examiner once explained that he viewed his job as GRANTING patents, not rejecting them, the proviso being patents that distinguished the prior art of record. This was revelational to me.
My current perception, particularly among young examiners without signatory authority, is that they are not being restrained from their “newbie” attitude of NO NO NO, thus turning the USPTO into the USPTRO: The United States Patent and Trademark Rejection Office.
Yes I have seen “bad patents.” I have been a party to the grant of relatively few of them. Post-grant, the “bad patents” usually resulted from one of two things, both likely related: a lazy examiner doing a poor search or review of the references of record and an applicant citing an overwhelming amount of prior art.
I am just not convinced that there is any past systemic problem at the USPTO that is measured by “allowance rate,” although there may be one brewing. Further, if it is deemed that the United States needs a tougher standard of patentability as a matter of policy, that policy and standard should be promulgated through Congress, not the courts.
Regarding junior examiners.
Let’s remember that the first thing an examiner is taught by a training primary is how to reject an application. “Go find some references and we’ll come up with a rejection.” Only after the junior examiner shows proficiency at rejections will the primary consider a suggestion by the junior that something is allowable.
Get an application before a 1-2 year examiner and your chance for allowance without a big battle goes way down.
“We want to allow claims that are in fact allowable, thereby properly granting inventors their patents, without taking anything more than that out of the public domain.”
This may sound nice and dandy, but can you explain how different examiners in the same art unit can produce different rejections that have apparent different threshold of allowability? We’re not even talking about different TCs! One known secret is that getting a primary examiner is preferable to a junior examiner because primary examiners are under tougher production requirement, making them more amenable to allowing cases. This is not consistency, which should be a parameter of quality!
Perhaps to really address the issue of quality, the PTO should start examining its production system and question whether it currently puts too much incentive on allowances.
Sorry folk.
I think I found a new hero at the BoPAI. Now how do I “game” the system so that **** ends up on my appeal panels?
From link to ftp.uspto.gov :
“The Examiner provides no evidence that one of ordinary skill in the art would not read the specification in accordance with commonly understood English grammar. Note that claims as well must be so read. See In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir.1983) (“A claim must be read in accordance with the precepts of English grammar.”).”
What’s that? English grammar? Tears are welling up in my eyes.
And then get this folk: a strange concept known as “proper notice” (now I’m bawling like a baby):
“We also find the reference to “new matter” in the context of the rejection for lack of enablement confusing. The Examiner fails to explain how this discussion of “new matter” applies to the rejection for lack of enablement. Nor, since the reference to “new matter” is contained in the enablement rejection, has the Examiner provided the Appellants with *proper notice* that a rejection on the basis of new matter is being maintained. We, therefore, will not address this issue.”
My heavens. One can find “quality” at the USPTO if only one is so unusually lucky as to land at the proper cashier’s window.
“Jude…. Puhhhhlease!”
Anon, you’re excused to make a more sensible reply.
Are you saying the PTO didn’t have QA in prior years to question examiner’s allowance? What was the QA doing in all those previous years? [note: rhetorical questions in case you didn’t know]
How does the second and third pair of eyes consider something to be “broad”? Can the PTO divulge this secret so we can avoid drafting such claims? More importantly, are you implying that if the second and third pair of eyes deem something to be broad, then the examiner has to come up with some crappy rejection in order to avoid an error? That is “in the eyes of the law”? Which school did you go to, if any?
Your only valid point concerns the quality of office actions — in terms of questionable rejections based on ridiculous combinations and logic in the attempt to lower the allowance rate. I believe this issue will be addressed in the house judicary committee tomorrow. My take on this is that to improve quality, you have to: first, define what constitutes a quality office action; second, make sure the examiners have adequate time to produce the quality office action. As you said, it is no secret that examiners are under strenuous production requirement. While these quality initiatives have been added through these years, I don’t believe examiner’s examining time per case has been increased at all.
p.s. A quick google search on APJ *** demonstrates that at least one appeal panel she was on understands complicated concepts such as “teaches away”. I wish that the general populace in the Examiner Corps would learn that concept.
Here is a snippet from
link to uspto.gov
“Indeed, as stressed by appellant, Nock teaches that the drawer frame is adjusted to *prevent* any lifting of the frame from the carrying plates such that the frame *cannot be lifted* … Hence, we concur with appellant that Nock *teaches away*”
“… the examiner’s rationale amounts to nothing more than what *could be* accomplished by one of ordinary skill in the art if so inclined with the proper motivation. However, what *could have been* done by one of ordinary skill in the art is not the proper test for obviousness under § 103. … we agree with appellant that the examiner’s rejection is based upon impermissible hindsight”
Now if only such basic understanding about the difference between “could” and “should” could permeate itself all the way up to the US Supreme Court. “Could” it happen? Will it happen? From what I understand, ours is a country where “gobbledygook” happens. So regretably I don’t have expectations for improvement in “quality”.
(Query: Why would a case like the one above even go up on appeal? Why couldn’t an SPE or a Director intervene if the “teaches away” aspect was so clear cut? Isn’t this a huge waste of resources, for the PTO and for Applicants? Also, what are people’s experiences out there with Pre-Appeal Conferences? Let’s all step back and have a civil discourse.)
I thank APJ **** for joining the discussion regarding “quality”.
(And I thank Dennis for giving me back my commenting wings –probationary?)
I’d be interested to learn how the BoPAI views “quality” in terms of Applicant Appeal Briefs and Examiner Answers.
Is there any change in quality over the years?
Are Applicants getting any better at understanding what an “administrative record” is and what the difference is between “evidence” and “attorney argument”?
Are Examiners getting any better at understanding what the basics are for presenting a prima facie case of obviousness?
Finally, speaking of “evidence”, how many people here have gone to the dictionary to look up the possible definitions for the word “quality” before launching into debate over the undefined term? What exactly do we mean by “patent quality”? What atttributes are we (other than the USPTO QAS squads) measuring prior to giving a quality grade to US or European (or other?) patents in general?
These links will make your job easier in looking up “quality” (Ours is after all, a spoon-fed world):
link to onelook.com
link to en.wiktionary.org
We see, from these excellent comments from inside the USPTO, how hard it is for parents (society, represented by the Examiners) to impose discipline on children (patent attorneys writing crap)who have hitherto been indulged. What thanks you get for your efforts: verbal abuse, from every quarter. As the last contributer explained, the USPTO is intent on balancing the legitimate expectations of Applicant with those of society. But that’s still not good enough for some people. Mrs Thatcher, for example, famously announced “There is no such thing as society, only individuals and families”
I am familiar with the mischief (perpetrated on “society”)of issued patents with a single over-broad claim tucked away somewhere in a long set of narrower claims. I am interested to see the USPTO definition of “quality not good enough” namely, in an allowed application even just one bad claim. I say “Well done the USPTO. Now all you have to do is reduce pendency, without loss of quality”.
Actually, we examiners are repeatedly told that an error is an error is an error. It is just as much an error to make or maintain a rejection when none is warranted as it is to allow something non-allowable. I know that to many practioners we seem to be the US Rejection and Trademark Office, but I and the people I work with really do see it as a balancing act. We want to allow claims that are in fact allowable, thereby properly granting inventors their patents, without taking anything more than that out of the public domain.
Jude…. Puhhhhlease! The alarming decline is in the ability of Examiners to find that something is allowable whether or not it actually is in the eyes of the law. It is no secret that Examiners are placed under very difficult pressure to make sure that an application they allow will not be questioned by Quality Assurance, as this could negatively impact their bonus and review. Second and third pairs of eyes tend to find that a claim “seems a bit broad to me” even though the second and third pairs of eyes are not aware of any prior art in particular. While the PTO clamps down to make sure that issued applications are truly allowable, apparently nobody is minding the store with regard to the quality of the PTO’s other product: Office Actions.
Combining the fact of no quality review of office actions with high turnover and difficult production requirements, actually getting a patent application allowed is now more of a game of endurance then a question of actual novelty or prosecution skill.
“The Office does not report allowance rates as a measure of quality.”
The point of this discussion is that the allowance rate of patents has become suspiciously-dramatically “improved” since the public outcry against questionable patents. With statutes remaining the same and no major court opinions a la KSR, how do you explain the precipitous drop in allowance rate?
If you are asserting that there is no correlation between PTO’s quality metrics and the allowance rate, then are we seeing an alarming decline in american innovation?
“My point was that the PTO mindset is that lowering allowance rates shows improved quality in and of itself.”
Actually, the Office measures quality based on what they call “action taking errors” found by quality reviewers (Office of Patent Quality Assurance). They measure compliance and error rates. Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution). The patent allowance error rate is the percent of allowed applications reviewed having at least one claim which is considered unpatentable on a basis for which a court would hold a patent invalid. The latest figures can be found at link to uspto.gov
The Office does not report allowance rates as a measure of quality.
Of the text –I also believe that a better measure would be the number of cases that eventually get an allowance (all versions of a given case including continuations, CIP’s, RCE’s, but NOT divisionals, are 1 case) divided by the total cases is the true measure of allowance rate. I’ve heard numbers as high as 90% in the past on this basis.– the adjustment made by Quillen and Webster in (apps allowed)/(apps allowed + apps abandoned) was to subtract off ALL continuing applications in the denominator, which obviously permitted a grant rate in excess of 100% and led in fact to a report of a bound for grant rate GREATER THAN 90%. The third paper by Quillen and Webster broke down the approach to subtract, from the denominator, different kinds of continuing applications. One should note that in multi-patent families, subtracting the continuing application from the denominator still creates a problem, because the rate can be in excess of 100%.
Certain aspects of the “bad patent” issue, including that of the patent grant rate matter, are discussed at
link to ipfrontline.com, in the article: Is the Jaffe/Lerner Analysis of Patent Law Correct?
I’m a big bad corporate patent attorney, but I’ve got to believe that there are inventors who run out of money and can’t respond to/appeal bad rejections, so there are some worthy applications that go abandoned.
Please understand, I’m on the side that believes the PTO grants too many patents, but even I can see some good applications never make it.
My point was that the PTO mindset is that lowering allowance rates shows improved quality in and of itself.
I also believe that a better measure would be the number of cases that eventually get an allowance (all versions of a given case including continuations, CIP’s, RCE’s, but NOT divisionals, are 1 case) divided by the total cases is the true measure of allowance rate. I’ve heard numbers as high as 90% in the past on this basis.
This data may not be a good indicator of the success rate of patent applicants in obtaining patents, because many applicants file multiple applications in pursuit of a patent. It would be interesting to see the numbers adjusted to take into account continuations, CIP’s, and RCE’s, which have become a larger portion of total applications during the time period covered by the graph.
“Remember, “quality” to the PTO means ONLY bad allowances, they do not measure bad abandonments that should have been allowed.”
I’d like to see an example of such an application. Are you aware of one?
re: Sean
No, it’s a 25 percentage POINT drop off, and it’s well outside of the 25-year trend that mainly stayed in the mid 60s. I don’t think you always need to show 0-100 to prevent a percentage scale from being “misleading.”
The graph is a little misleading b/c of the Y-scale. In actuality, the rate dropped from a high of 72% to the current 54%, which is (only) a 25% falloff over the course of several years. The scaling makes it look a whole lot worse than that.
I believe the allowance percentage is the number of allowances in the year divided by the sum of allowances + abandonments. It really doesn’t have anything to do with the number of pending cases or unexamined applications.
In my opinion, it was the shortage of examiners in the late 90’s and early 2000’s that led to the sharp increase of allowance rate. In the drive to keep the applications moving, more cases got allowed as examiners could not spend the time to keep arguing with attorneys. When the PTO changed its philosophy to not really caring about the backlog, but was embarrased about many of the patents being allowed, the word got out to the examiners to get tough.
Other things also happened. The flood of business method applications that the PTO didn’t want to allow. Also, the “second pair of eyes” in many examining groups kept examiners from many allowances.
Remember, “quality” to the PTO means ONLY bad allowances, they do not measure bad abandonments that should have been allowed.
Other Links:
link to ipfrontline.com (By Hal Wegner).
link to okpatents.com
link to rethinkip.com
Does the graph show a percentage of all applications pending at some point during the year? All applications on which an OA issued (restriction/election, rejection, allowance, etc.), exclusive of those which were not examined? Also, what are the statistics for absolute number of patent applications allowed each year over the same period?
With the increase in patent applications growing every year and the lack of patent examiners at the PTO, doesn’t it only make sense that the allowance rate would decrease
I’m assuming the Y-axis scale is percentage of apps allowed? Its not totally clear from the graph…
Wheeeeeeeee!!!!!!!!!
Now we know why patent prosecutors who came of age in the mid to late 90s have such warped ideas about what is patentable.
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