Continuation and Claim Limitation Rules Submitted for Final Review: Final Publication in Early July

Hal Wegner has done the legwork to evidence the rumors.  On April 10, 2007, the USPTO Submitted two sets of final rules to the Office of Management & Budget for regulatory review:

  • RIN: 0651-AB93: Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims
  • RIN: 0651-AB94: Changes to Practice for the Examination of Claims in Patent Applications

Summer Implementation Likely: According to self-reports, Bush OMB has maintained a fairly strict adherence to a 90-day time-limit for review. Thus, barring unusual circumstances, publication of the rules can be expected in early July. Implementation would require a 30-day window following publication.

Get Involved: The Review Office has a policy "to meet with any party interested in discussing issues, whether they are from State or local governments, small business or other business or industry interests, or from the environmental, health or safety communities." In addition, third parties may submit written comments on any rule under review. [VIA FAX at (202) 395-3047 or 202-395-5806 or (202) 395-6566]. 

Earlier this month, Susan Dudley was named the new director of the Office of Information and Regulatory Affairs (OIRA) through a recess appointment. Her office is quite powerful because it "will have an opportunity to change or block all regulations proposed by government agencies."

51 thoughts on “Continuation and Claim Limitation Rules Submitted for Final Review: Final Publication in Early July

  1. Just out of curiosity, is anyone expecting a huge rush of continuation/DIV/CIP filings either before the rules are finalized or in the 30 day period immediately following publiction of the final rules?

  2. “2) Why not appeal cases more often? Particualrly if you get bad rejections? Assuming that you beleive that the claims are allowable, appeal it. It may take a little longer than an RCE, . . . ”

    This of course assumes that that attorney, inventor etc. has provided the PTO with the best available prior art for the record. Having done so, why not appeal and prevail?

  3. If the continuation/claim limitation rules are restrictive, expect law suits within the first week of the publications

  4. LL said…”The questions I have are this:
    1) If you consistently get bad rejection/finals from a certain examiner (or art unit, etc.) wny not complain to the SPE. If nothing results, then call the TC director. And work your way up the chain.”
    Lazerus–thanks for your comments–it’s very interesting to hear what the ‘other side’ thinks about these issues. Unfortunately, although I have only contacted a SPE several times in my relatively short career, my experience has been that they either do nothing or back up the examiner without looking into the issue *at all* (as in, “Oh, they must have had a good reason for doing that. I’ll just run down the hall and confirm that with them.”) And there is a very real risk of making an examiner angry–quite dangerous, particularly if you tend to have a lot of cases assigned to only a few examiners.

  5. Would it make sense to eliminate RCE practice and allow an examiner to receive a count each time he/she applied new art necessitated by amendment because the applicant has amended to overcome the art and to not receive a count each time he/she applied new art not necessitated by amendment because the applicant was right and did not need to amend to overcome the art? This would go back and forth for as many actions as necessary, until a real issue existed between the applicant and the examiner. The examiner could then allow the case and receive a count when it is in form for allowance or receive a count when the applicant has not overcome the art of record and refuses to amend further and the case can legitimately be made final. At this point, the case would be in better form for appeal if the applicant so desired because all of the issues would supposedly have been brought up and resolved by this time, or the examiner and the applicant have agreed to disagree by this time, leaving it up to the Board to decide. It seems to me that the RCE system is creating nothing but problems for both the applicants and the examiners. The count system appears to be a third rail. Everything else has been talked about as a candidate for change but this.

  6. Lazerus, the old school approach you describe does not work to reduce the number of RCEs. Reading only the claims (i.e., and not the relevant parts of the specification) leads to the “I will teach this guy how broad his claims are” mentality where a first action is entirely wasted. I’m not saying you shouldn’t apply art that over broadly claims read on. Instead, also apply the art most relevant to the invention. After all, if the most relevant art can be applied after first action, why not apply it up front? This would require understanding the invention, which would require reading at least some of the specification. It would be the best way to quickly narrow the claims to the scope of protection deserved (maybe none).

    I know it is difficult to apply this approach correctly every time, but if only half the first actions contained the most relevant art, the backlog would shrink.

    Examiners’ cultivation of counts works against this approach, as well as anti-patent vibes I often get from junior examiners. It might be a good time to look into alternative counting schemes.

  7. A 2nd point, a lot of people here complain that they get bad rejections and bad finals & have to file multiple RCEs to ever get their cases issued. I do belive that does happen in a lot of instances. Also, I have seen where it is the applicant’s fault. Or it is the lawyers fault. (2 different issues). I have seen a lot of comments that if the rules go thru, a lot more appeals will be filed.
    The questions I have are this:
    1) If you consistently get bad rejection/finals from a certain examiner (or art unit, etc.) wny not complain to the SPE. If nothing results, then call the TC director. And work your way up the chain. Also, why not petition the rejections? If you do not get satisfaction, continue the petitions? These are the things that may help to change the culture in the bad areas of the office. Complaining to each other or on blogs won’t change a thing. If you have done this, I would like to know what results you have gotten. In my 20+ years, I recieved 1 complaint and he went right to his senator (I didn’t respond to a status request & sent out the action instead – stupid, but true). It quickly went down the command chain :) From what I have seen/heard, SPEs, etc. do not want complaints & will do what they can to stop the problems. ALso, enough legitimate comlpains can be held against the examiner in their ratings. If we don’t hear anything specific, it is human nature to assume that all is going OK.
    1a) FYI, It is also possible to petition to have an examiner removed from a given case if there is cause.
    2) Why not appeal cases more often? Particualrly if you get bad rejections? Assuming that you beleive that the claims are allowable, appeal it. It may take a little longer than an RCE, but if you win you get the term adjustment. Are the attorney fees to prepare and file an appeal brief that much greater than the cost to file and prosecute a few more actions in an RCE? For me, I never minded an appeal. Won some; lost some. But I normally did a final with the idea I shouldn’t make the final if I didn’t think I had a solid position and be willing to go appeal.

    thanks,

    LL

  8. In response to the preceding about not making a final if new prior art is applied, for one this used to be the practice back in the 70′s, I believe. However, as I have been told, back then the examiner also recieved a count for every action. So a 2nd, 3rd action non-final would still generate a count. From an examiner’s POV, I can go along with this if I get a count for applying new art. Or at least if the applicant amended the claims I get the count. Secondly, the MPEP is pretty clear that if the applicant substantively amends the claims new art can be applied & the action made final.
    As for the above proposals, if I make a proper 102(b) rejection on a really broad claim (for example) and the applicant comes in and greatly changes the claims and I need new art to reject the claim, can anyone explain to me WHY I would have to do free work because you did not claim your invention properly??? This is the flip side you need to consider. Yes, I know that not all rejections are proper (and not all cases are filed and prosecuted well by the app. rep, either) but it seems to me that many people here want to paint everyone with the same broad brush. Like most of you, I also hate seeing bad work (by either side). If you can explain to me why or how your proposals will not severly penalize good examiners, I can be convinced. Otherwise, no.

    thansk,

    LL

  9. I want to join the chorus of people here who would have no problem with limiting RCEs as long as the Examiner is not allowed to make an action final where they introduce new art. I have had responsible Examiners who have not done that (we instead ended on the 5th or 6th action.).

    Given either (1) an open-ended RCE process or (2) the inability of an Examiner to issue a Final rejection when citing new art, almost all my troubles disappear.

    Now if this legislation has the section about having to file all divisionals at once, I still have a problem. If I get claims allowed and I want those claims to issue, but at the same time keep arguing the remaining claims, then I should be able to.

  10. “Why limit claim scope to a particular structure?”

    Enablement. Just because you invent one solution does not mean you deserve a monopoly for all solutions.

    “I do apprecitate that examiners do not like broad functional language, but it’s not about you brother.”

    You’re reading too much into my remarks. I am not an examiner.

  11. The first OA is rarely on point.

    In one common scenario, we don’t amend because we want to explain why it is not valid, and then it is sustained anyway, so we have to file an RCE to get our first amendment in. Ultmately, the so-called non-adversarial system allows the Ex to sustain anything they feel like sustaining.

    In another common scenario, the refs in the first OA are not analogous art (and hence our clients would be unaware of them) but we amend because there is some strange and unforeseen way that the claims might read onto them (although not a ghost’s chance that practicing themm would ever infringe), and then, because we amended, the Ex is allowed to pull out the refs from the right art (the one the invention is actually in) and yet still make the second OA final, and to amend around the new, relevant, refs we must file an RCE.

    In either of these common scenarios the first RCE is used up too soon, increasing the likelihood of needing the second RCE that we will soon be denied (yes, it will be petitionable, but if that doesn’t stay prosecution it’s as good as a denial).

    To prevent burning through RCEs I would suggest two changes. Firstly, to permit one amendment as of right that if not made after the first OA could be made after the second. Secondly, to bar a second OA with new refs asserted from being made final, so as to force the Ex to bring out the closest art the first time around. This isn’t a game of poker, where we should be guessing what’s in their hand.

    Some of this isn’t novel, but as this isn’t a patent application I reserve the right to echo what others are saying.

    If examiners are against these suggestions, it is probably due to the effects on their count system, so change that too!

  12. We need RCE’s because amendments that successfully overcome rejections are often followed by final office actions that have new rejections based on newly discovered and better prior art.

    Alternative to RCE practice -> actions that rely on newly cited art cannot be final

    I’m personally okay with the restriction on CON practice. There is a real “whack-a-mole” problem with successfully avoiding the claims of one patent, only to have a CON of that patent emerge, avoiding the claims of that CON, only to have a CON of that CON emerge, etc. etc.

  13. “Yes, if I were an examiner, patentee, or John Q. Public, and if there were a structural way to claim the same thing.

    Highly functional claims are a result of laziness more often than not. Not that all functional language is bad, which is why I say highly.”

    Why limit claim scope to a particular structure? I may save that for a dependent claim or two. I do apprecitate that examiners do not like broad functional language, but it’s not about you brother.

  14. Promise them 72 virgins at retirement. By that time, they will be whacked out and not interested in those pleasures. High chance they will return the virgins, and the PTO can recycle them for the next sucker retiring.

  15. What a convincing and realistic comment from the “anonymus” examiner. As a patent atty I would definitely vote for quality over quantity, retention instead of churn.

  16. “Bad for whom? You?”

    Yes, if I were an examiner, patentee, or John Q. Public, and if there were a structural way to claim the same thing.

    Highly functional claims are a result of laziness more often than not. Not that all functional language is bad, which is why I say highly.

  17. I have read through all of these posts and the one thing that people are missing is ATTRITION. It is the reason why the backlog is long and why quality is bad. The office has been opperating at a suicidal 15% attrition rate for 30 years. How in the world does any large organization expect to clear a backlog and pump out quality work when you lose 15% of your workforce every year? The dirty little secret that no one in management will tell you is that everytime an examiner leaves the office the cases they worked on don’t just disappear. The cases, usually between 50-100 cases, are dispersed to the other exmainer’s in the art unit which means those examiner’s wont be working on new cases for a long time, it also means that quality goes down because your losing experienced examiners. The reason almost all examiner’s leave is because the production system is insanely high.

    These rules changes will create a flood of examiner’s leaving the office (say hello to 35% attrition rates). Ever since quality out of control, examiner’s can allow very little. Therefore, the only way to get counts is via first action, abandonments (RCE’s included and examiner’s answer. The rules changes will eliminate RCE’s and thus the only way examiner’s will get counts is via first actions, abandonments (a very long process) and examiner’s answers. An average primary examiner has to do 10 counts per biweek and there is no way to do 8-9 first actions (assuming 1 or 2 abandonments) in 100 hours per bi-week (assuming 20 hours voluntary overtime). Therefore people will get fed up or get fired. The people that are survivors will pump out first actions of very low quality.

    Appeal conferences are a joke. No SPE is ever going to tell you to allow a case. I have worked at the office for 10+ years and I have heard the phrase “you should allow this case” exactly 3 times. What generally happens is the SPE will let you send it up to the board if the case is perfect if not the SPE will tell you to re-open usually with no reference or no reason given and it is up to you to find a reference etc. Your chances for allowance at an appeal conference are low.

    One solution to this is to lower production across the board by 15%. This will allow attrition rates to fall from a suicidal 15% to a more reasonable 3-4%. Quality is also improved since there is more time per case to search. The office takes a short term hit but gains in the long run because you have more examiner’s turning in cases. The reason hiring surges haven’t worked in the past is because attrition is equal to or higher than hiring rates. There is no point to hiring all of these examiner’s when the office is a revolving door. Management will never do this however because they would have to admit that examiner’s need more time per case something they are loath to do. Sorry for the long rant but just some thoughts from an experienced examiner.

    The allegation that applicant’s would have to wait longer if management were to lower production by 15% is completely false and is frankly the same tired excuse we have heard from management over the last 20 years. Sure in the short term, and I mean 1-2 years here, everyone will take a hit. However, over the long term, 3+ years, as more and more examiner’s come in with only 3-4% leaving, the backlog shrinks because many more examiner’s are turning in cases. You already stated that losing 2-3 examiners has a large impact on the backlog, if the office were able to retain those examiners the backlog would shrink.

    I believe that most lawyers would much rather lower production thus increasing retention and quality while lowering the backlog rather than have these new rules shoved down everyone’s throats thus dramatically increasing attrition and the backlog, not to mention the serious burdens on applicants mentioned above.

  18. Just want to add my voice to the chorus of patent atty voices that object to the proposed truncation of RCE practice, believe it to be harmful to the patent system, and unlikely to produce much of a benefit to anyone. While there may be a small amount of gaming the system, there is undoubtedly a huge amount of bad examination going on. While I rarely file a second RCE myself–rather I usually go to appeal at that point–there could be important applications for which a second or third RCE would lead to a better outcome. Why take away that tool from patent attys? There needs to be more opportunity to address examiner recalcitrance, not less.

  19. “Besides, it’s all highly functional language, which is bad form, except where there is no other reasonable choice.”

    Bad for whom? You?

  20. Gee, maybe this is how its supposed to work. Claim 1 is the broadest claim, so broad that reasonable minds may disagree regarding its allowance. If the broadest claim is too narrow, then the attorney isn’t properly representing his client. But what about the dependent claims? Perchance they may have limitations that clearly distinguish the invention from the prior art?

    As happened here with Devoted Admirer, too often I see the examiner look at the broadest claim and stop, proclaiming the invention as being unpatentable.

  21. ‘I am assuming from your sarcasm that your believe this is a clear 102 reference to the claim that you reproduced. However, claim 1 recites “a plurality of sensors for detecting agents in an area with ***a probability of accuracy***” and “***with a greater probability than any individual sensor***.” I don’t know what the application intended by throwing these recitations regarding the probability of accuracy, but I’m guessing these are likely an important part of the novel aspect of the invention since these limitations are so narrow that anybody claiming a general network for detecting biological agents would otherwise not want to include these limitations.’

    Sensors inherently have probablilities of detecting things. Elementary statistics can show that a group of sensors inherently has a greater probability of detecting something than a single sensor. Two sensors at 50% are equivalent to one sensor st 75%, etc.

    Besides, it’s all highly functional language, which is bad form, except where there is no other reasonable choice.

    Perhaps one reason why attorneys get frustrated is that they write short claims with inherent and functional limitations, read what they want into the language, and then gasp in shock when someone else doesn’t read it the same way.

  22. Devoted Admirer:

    You provided a perfect example as to why patent attorneys are frustrated with examiners.

    Your randomly selected application claimed “[a] network for detecting biological agents.” You then reproduce an article (which pre-dated the application) describing a detection system to protect against chemical or biological threats. You then throw out the argument that “[m]aybe these Sandia folks don’t know how to use routers and computers to determine if the signal shows a threat or not.”

    I am assuming from your sarcasm that your believe this is a clear 102 reference to the claim that you reproduced. However, claim 1 recites “a plurality of sensors for detecting agents in an area with ***a probability of accuracy***” and “***with a greater probability than any individual sensor***.” I don’t know what the application intended by throwing these recitations regarding the probability of accuracy, but I’m guessing these are likely an important part of the novel aspect of the invention since these limitations are so narrow that anybody claiming a general network for detecting biological agents would otherwise not want to include these limitations.

    However, your reference is completely silent as to these particular limitations. This is a classic example of what I see all the time. An examiner finds a reference that is in the ballpark with regard to the general field of endeavor. However, some of the critical aspects of the claims are either glossed over, completely ignored, or read so broadly as to eviscerate any meaning from the critical claim terms.

    Most times I don’t even know how the examiner is interpreting the claim language or if the examiner even considered the claim language because the examiner’s statement of the rejection is nearly devoid of any analysis. For example, very recently I had a rejection in which the examiner rejected most of the claim language based upon lines 1-67 of columns 5-15. Like that really helped me understand how the examiner’s thought process in rejecting the claims.

    Personally, I would love to be able to share 10-20 of the last applications I prosecuted. However, even though almost all my applications are published and everything I have written is in the public domain, to do so would be professional suicide as my clients would likely fire me for doing so. I imagine most attorneys are in the same position.

    Anyway, I’ve mentioned the following on this board before, but in response to some of the prior comments about the consequences of the proposed rules, ever since I became aware of the proposed rules, I have nearly stopped filing RCEs. Instead, I appeal almost everything. I file 10-15 appeals for every RCE I file. It isn’t that the claims that I’m prosecuting (I actually have written few of the sets of claims) are particularly narrow (some of the claims are very broad), it is that examiners rarely come up with prior art that is even close. As such, I rarely have the need to amend the claims.

    What I do even less than filing RCEs is filing amendments after final. Unless I have a slam dunk allowance as a result of the amendment, I’ll either appeal or file the amendment with a RCE.

  23. Son, I believe we should go to a registration system. I’ve been pushing this idea for years. We beautiful attorneys and agents can hire you to do a wonderful search for our clients, and then we can compose claims around the art uncovered in your search.

    Excellent idea. No longer any need for pesky examiners.

    The benefits aren’t as good out here.

  24. I guess I just have to believe all the attorneys here, who claim to routinely file wonderful, allowable claims, which the inept, incompetent and ignorant examiners just reject without any basis whatsoever.

    I was surprised when I did a quick search of the USPTO website, for applications filed on the most recent day (4/26/07)and the word software. I randomly picked one (filed July 2005).

    Here is claim 1:

    A network for detecting biological agents, the network comprising: a plurality of sensors for detecting agents in an area with a probability of accuracy; a controller communicatively coupled to the sensors for receiving information from the sensors to determine whether such agents are a threat with a greater probability than any individual sensor.

    But look, a quick google search comes up with this press release from Sandia labs.

    FOR IMMEDIATE RELEASE
    April 2, 2003

    “PROACT” system helps mitigate chemical/biological threats

    Sandia researchers partner with SFO, others to develop facility-protection system

    LIVERMORE, Calif. — Building on the success of a program first employed at Washington, D.C.’s Metro subway system, researchers at the Department of Energy’s Sandia National Laboratories in California are working with San Francisco International Airport (SFO) to test operational capabilities and new detection systems that will protect against chemical or biological terrorist threats.

    Maybe these Sandia folks don’t know how to use routers and computers to determine if the signal shows a threat or not.

    I hope the dumb examiner doesn’t reject this claim. Let’s look at another application, maybe it is clearly allowable. Oh look, it is a DNA sequence claim,

    An isolated nucleic acid for repressing the expression of or inhibiting the repression of a target gene comprising a polynucleotide selected from the group consisting of SEQ ID NO:3 and a polynucleotide having at least 95% sequence identity to SEQ ID NO:3.

    A check in PAIR shows the case is on its third RCE due to a detailed enablement rejection. Must be another annoying examiner.

    Perhaps some of the brave attorneys will list their most recent 10-20 cases, so we can see their wonderful claims. I am sure that every broad claim will distinguish over easily found prior art.

    The wonderful job done by the attorneys is the reason we should just switch to a registration system, because we know that every attorney only files allowable claims. We know that any rejection written by an examiner is solely for the purpose of harassing the well meaning, brilliant (and probably handsome or beautiful, maybe both) attorney.

    When the registered claims go to litigation, the Federal Circuit will surely see the wisdom of the prosecuting attorney and permit the patentee to prevail over the wicked infringer.

  25. Lazerus L wrote “Taken AS A WHOLE, would the public and the inventors be better off with a more steamlined and quicker prosecution and quicker allowances of applications? Yes. The idea that the office should (as someone posted in an earlier deiscussion) allow many continuations “because it sometimes takes 3-4 continuations before the applicant knows what their invention is” (paraphrasing because I don’t have time to find the quote) is really ridiculous. The applicant may not know what parts of their invention will be profiatable, etc. until it has been on the market for a while, but that is their problem & should not be the PTOs problem (in my opinion).”

    For myself, most times 2 or more RCEs or Continuations are required becuase of iterative office actions. In many cases the first one I receive is a joke and easily dismissed, but the second or third is close enough, that I want to amend the claims, and then I have to file an RCE. This pattern seems to go on sometimes because the Examiner does not present the best art until later and because I am trying to minimally amend the claims to get around the currently cited art.

  26. Don’t be surprised if OMB gets done with their review of these rules quicker than the 90 day period that ends in early July. There is plenty of internal pressure to get these out in one way or another after they were held up due to the massive comments and an attempt to bring these out at the same time as the new IDS rules.

  27. I expect that Ms. Dudley will likely continue the long tradition of OMB and OIRA to serve as a watchdog over agency excesses, not only in terms “over regulating”, but also in terms of an agency’s faithful adherence to law.

    Though I may be wrong, I have not seen any regulations pass muster on the primary basis that the regulations will reduce agency workload at the expense of increasing the public’s worload.

    Many years ago I had the unfortunate task of taking on the DoD as is sought to expand by regulation a DoD policy known as “Recovery of Non-recurring Costs”, aks “Recoupment”. Without elaborating, that longstanding policy made an absolute mockery of the enabling statute contained in the Arms Export Control Act, as well as negating in its entirety important provisions of patent, trademark, and trade secret law. As an aside, it did not help the DoD cause that its policy was facially unconstitutional, at odds with federal statutes, and in direct contradiction to Presidential Executive Orders.

    Bottom line: The DoD adopted the rules anyway and presented them to OIRA for approval. OIRA refused to approve them and they withered on the vine. As an added bonus the then President rescinded a relevant executive order removing all doubt that the Dod’s wings had been clipped.

    Agency promulgation of rules is but a first step in the process. The fact the USPTO’s proposed rules have been submitted for approval now moves the stage for challenges to the OMB. I can only hope that industry groups and professional associations take note of this new stage and adjust their arguments accordingly to point out their substantial deficiencies in comporting with the executive order under which the OMB and OIRA operate.

    Regarding continuation practice, it has proceeded for decades, many decades, in accordance with the terms of Title 35. The PTO has long performed under those rules without the limitations it now seeks to impose. It will have one devil of a time convincing the OMB that a rule change sua sponte that is not in reaction with a change in Title 35 is not arbitrary and capricious, if only the private sector will step up to the plate and engage OMB.

    One last comment to those who seem to believe that many patent lawyers view Title 35 as the province of lawyers and not clients, there are many of us who actually believe that an important part of our role, one that operates independent of clients, is the need for orderly development of the law.

  28. me, Microsft already hired Edward “Kaz” Kazenske(former Deputy Commissioner, USPTO). Another “fool” making several times his PTO salary.

  29. Men, they may be long gone, but not soon forgotten. I don’t pity these fools. Pay-back comes in many forms. Murdock! Hannibal! Time to reunite and fill out some forms!

  30. hp wrote:

    Anybody want to bet what direction the spike appearing in the patent term adjustment statistics will be, three years or so after these rule changes?

    My answer:

    Three year time horizon -
    Does Dudas care? Does Doll care? By that time they’ll be out enjoying the ‘pay-back’ from the private sector interests that pushed these rules in the first place.
    They’ll be either lobbyists for the BSA or in charge of some BSA-funded institute. They’ll be LONG GONE and someone else, appointed by a different Administration, will be left to clean up the mess.

  31. The pto powers that be have really dropped the ball here – what will these rule changes actually do to pendency / examiner workload?

    Attorneys will appeal every single dumb examiner rejection / failure to follow the mpep minutiae, immediately.

    As long as you win each prior appeal, you don’t have to pay the appeal fees again in the same case (how long before they arbitrarily change that rule, also?). Appeal again and again until all the dumb rejections are disposed of.

    If it really is “bad attorneys” hiding the ball… rather than untrained overworked micromanaged examiners. All those appeals will be losers? right?

    Anybody want to bet what direction the spike appearing in the patent term adjustment statistics will be, three years or so after these rule changes?

  32. In its notice of proposed rulemaking in 2006 the PTO acknowledged that the proposed rules would have a significant impact under the Paperwork Reduction Act, one of the several rules that guide the OMB (via OIRA) under Executive Order 12866. OMB’s charge under the Executive Order is, of course, much broader.

    Read the proposed rules. Read OMB’s charter under the executive order. Read those portions of Title 35 and 37 CFR that are being impacted. Sharpen your pencils, and then complain like the dickens to OIRA. It possess the full power to refuse rules from entering into force upon a showing that the proposed rules run afoul of one or more of the provisions set forth in the Executive Order.

    Given the sheer length of the proposed rules, I cannot see how a challenge to their taking effect can be convincingly presented by a single or just a few individuals. Professional organizations representing many diverse interests are in this situation an absolute must.

  33. Mr. Betzer,

    Thank you for the information. OIRA does serve as a useful check on agency regulatory excesses. Persons who deal with regulatory issues (including those promulgated by the USPTO) would do well to read the Executive Order to see if OIRA’s assistance might be appropriate.

  34. I’m a former OIRA economist and thus very familiar with its review process, though not familiar with PTO issues. The office is, as described by some commenters, an internal government watchdog without an interest in any particular outcome.

    You can schedule a meeting with OIRA while the regulations are under review. Under the procedures established by Executive Order 12866 (1993), that meeting must be made with Administrator Dudley or her designee. Further, a representative of the PTO will be invited to attend. Understand that neither OIRA nor the PTO will share with you a copy of the draft final rule that is under review.

    At first blush that might seem to make it impossible for you to deliver a coherent message. After all, It seems to require you to speculate about what’s in the draft final rule. Indeed, many folks who meet with the Admninistrator make the mistake of trying to do this.

    A better approach is to prepare a short paper that is reswponsive to the regulatory stated in Executive Order 12866. Those criteria are the “marching orders” for OIRA.

    You can find a copy of Executive Order 12866 in the Library on my blog: http://neutralsource.org.

    Richard B Belzer PhD
    Managing Editor
    Neutral Source

  35. I know an Examiner in a 3600s art unit. She says, since the new year, her unit is under increasing pressure from SPEs on up to keep allowances well under 50%. Statements to the effect of “you aren’t pulling your weight” to Examiners over the 50% rate mark are common now.

    I ask her how she can possibly keep that rejection rate up, especially if she has the misfortune of getting a flurry of strong applications. She says the directive is to “be creative and don’t budge.”

    I suspect there is something sinister in this directive. I think the PTO is betting that KSR and these new continuation rules will sweep away many burdens of examination and backlog. For now they are biding their time with mindless rejections, multiple reopenings, and RCE after RCE. When the new RCE rules and KSR hit, all this RCE buildup will vanish in appeals.

    I strongly suggest you all take Dennis’s advice of letting your and your clients’ thoughts be known on this to authorities outside the PTO and patent bar.

  36. Lazerus L. at Apr 28, 2007 at 11:24 AM writes

    > Draft claims like the MPEP says – broadest that you think you are
    > entitled to down to the most detailed that you would accept. If
    > applicant’s did that, most cases would have allowable subject
    > matter on the 1st action. Most lawyers do not do this! This is
    > part of what causes the backlog & the need for continuations.

    And so how do you propose to square this advice with the proposed rules’ limit of examining only 10 claims?

    At every turn, the rule packages are at war with themselves and with the law. The only apparent reason that the PTO split the “Continuations” and “Examination of Claims” rule packages into two parts is so that the contradictions between them would be less blatant.

  37. It is clear that the people who created these rules have never practiced before the PTO. If they had, they would understand the absurdity of the rules. Continuation practice is necessary because the positions Examiners take in many Office Actions are unreasonable. They issue and maintain rejections that are clearly improper, they do not address claim features, and they do not consider valid arguments. The PTO implemented the pre-appeal conference to supposedly be an avenue where Applicants can get a fresh look at their applications. While it appeared to work for the first couple of months, it has since turned into a joke. Without continuations, Applicants will have to appeal early and often. It is clear to everyone (except the PTO), that the new rules will not reduce backlog–it will only shift it from the Examining corps to the Board of Appeals. I guess the PTO’s next move will be to somehow prevent Applicants from appealing–maybe by re-opening prosecution over and over and over again.

  38. LL: “Just like last time, I only here complaints and no reasonable and constructive alternatives to these rules. What suggestions do you all have that would reduce the backlog & help improve quality?”

    Follow the law, rules and procedure!

    LL: “While the rules as we know them are not perfect, they are an attempt to make the PTO better & more efficient.”

    The new rules are plainly stupid. Applicants, APJs and Examiners all will suffer the consequences. If you believe these rules will stem the backlog, you are mistaken. We will file two or three times as many applications as we do now, and appeal will become very frequent.

    What LL does not appear to understand is that attornys/agents would get paid pretty much the same, if not more(we may need to hire), with or without these goofy rules. We are pissed because the new rules are bad for our clients. We represent them. They are getting screwed.

    Poppy, the pissed off prosecutor

  39. As noted by several of the preceding posts, the vast majority of my RCEs are filed because of poor quality examination. I have Many recent examples of examiners completely ignoring clearly applicable Federal Circuit standards through first, second and final rejections. Some of the examiner’s will admit on the phone that they do not have a valid case, but are under pressure to reject the claims anyway; others seem to play the game because they know they can get credit for an RCE or two before we resort to the expense of an appeal.

    I have had several Pre-Appeal reviews that resulted in ‘withdrawal’ of rejections which were then just presented again in a new office action, rendering that process little more than an RCE without an opportunity to amend–so far I have not found it to be useful at all. Absurd rejections have been maintained and sent to appeal, others have been ‘withdrawn’ and then according to the examiner ‘maintained’ in the next office action. And the complexity and cost of the Appeal process makes it an extremely poor substitute for proper examination.

    The solution will require PTO leadership that factors the quality of rejections into its ‘quality’ standards, not just the quality of allowed patents. And leadership that seeks to make CORRECT decisions rather than boasting about fewer allowances as though that is evidence of ‘progress’.

  40. “Draft claims like the MPEP says – broadest that you think you are entitled to down to the most detailed that you would accept. If applicant’s did that, most cases would have allowable subject matter on the 1st action. Most lawyers do not do this! This is part of what causes the backlog & the need for continuations. ”

    I do. But I also think like lawyers who want to get the broadest possible claims. I am dealing with an Examiner right now (an old one, done this for years) who is insisting that my species within the broad genus he restricted me to is somehow outside the broad elected species HE WROTE! Amazing – RCE practice is required, charging more for it is fine, but until we have perfect Examiners and perfect practitioners it is required.

  41. “Why should the PTO cater to the patent bar? The bar is not the people that recieve patents (in general) and are not the office’s “customers” (never liked that word, but the office uses it & it is helpful here), really. The office’s customers are the inventors and the American public (as well as the world’s public in today’s ecomomy). The bar should have no say of their own other than what to put forward what their clients needs are. Too often, the bar is putting out what is best for the bar and not the public or inventors as a whole.”

    As a patent attorney, I represent very sophisticated entities that have in-house counsel. To state that I, or the bar in general, is doing what is good for us at the expense of our clients is insulting and ill-informed – and our clients would not stand for it.

    I would instead posit that the Office is doing what is good for the few folks who run the place at the expense of the bar, inventors and the American public.

    I also note that this will not be good for Examiners either. You will have more new cases to deal with, and more appeal briefs to write!

  42. As a member of the patent bar, I represent inventors and/or their companies. Before the PTO, I am their voice. So, yes, I am a customer (or at least the representative of the customer) of the PTO. I don’t like these rules because they are bad for my clients.

    Almost without exception, I file continuations and RCEs because the examiner is not following the MPEP and the first couple of Office Actions are not proper. For example, I just filed an RCE on a second continuation for one case. The examiner allowed the broad claims, but has silly rejections on the narrower claims. Want to get rid of the backlog? The have ALL examiners follow the MPEP and do their job.

    Want the claims presented from broadest to narrowest? Then have EVERY examiner perform a substantive review of every claim, including every element and limitation. I put a narrow claim up front because too many examiners search and review only the first claim. The applicant is paying fees based on the number of claims. Why can’t they all be reviewed?

    “would the public and the inventors be better off with a more steamlined and quicker prosecution and quicker allowances of applications? Yes.” One way to get there is to ensure that the laws and rules are followed by the PTO. Patent attorneys cannot predict how an examiner will respond because the laws, rules, and MPEP are largely ignored. So, we resort to tactics that preserve our client’s rights. Those tactics include filing continuations and RCEs until we get a valid, substantive review of the claims.

  43. Multiple continuation practice is vital to probably 33% of my clients. Whether or not it’s supposed to happen, new pieces of prior art and/or grounds of rejection are introduced in final rejections all the time. (And it’s been 10 months since I’ve gotten a 1.116 amendment entered. I wish Examiners got a half count or something for after final entries.)

    The PTO surely makes bank on RCE practice. Yes, it increaces backlog, but I’ll bet if the funds from continuations were applied solely to backlog reduction (e.g., more examiners), that would go a long way to reducing pendency. It’s a better plan than simply cutting off the practice.

    Lastly, what does the public lose from continuation practice? It doesn’t stop the lion’s share of applications from publishing, and it cuts into the patent term. I suspect that Lazerus’s “public detriment” comment actually stems from a perception of poor patent quality, but I don’t see how continuation practice does anything but help patent quality.

  44. Why should the PTO cater to the patent bar? The bar is not the people that recieve patents (in general) and are not the office’s “customers” (never liked that word, but the office uses it & it is helpful here), really. The office’s customers are the inventors and the American public (as well as the world’s public in today’s ecomomy). The bar should have no say of their own other than what to put forward what their clients needs are. Too often, the bar is putting out what is best for the bar and not the public or inventors as a whole.

    Taken AS A WHOLE, would the public and the inventors be better off with a more steamlined and quicker prosecution and quicker allowances of applications? Yes. The idea that the office should (as someone posted in an earlier deiscussion) allow many continuations “because it sometimes takes 3-4 continuations before the applicant knows what their invention is” (paraphrasing because I don’t have time to find the quote) is really ridiculous. The applicant may not know what parts of their invention will be profiatable, etc. until it has been on the market for a while, but that is their problem & should not be the PTOs problem (in my opinion).

    Draft claims like the MPEP says – broadest that you think you are entitled to down to the most detailed that you would accept. If applicant’s did that, most cases would have allowable subject matter on the 1st action. Most lawyers do not do this! This is part of what causes the backlog & the need for continuations.

    Just like last time, I only here complaints and no reasonable and constructive alternatives to these rules. What suggestions do you all have that would reduce the backlog & help improve quality? Addtional hiring? Where do we get the resources to train all teh people? The office is already stretched too thin there. More time/case? This will increase the backlog at the expense of better quality. Better retention? Sounds good, but how? One of the big reasons for leaving I see is going to law firms for a lot more money. While the rules as we know them are not perfect, they are an attempt to make the PTO better & more efficient.

    thanks,

    LL

  45. I smiled to note the mention of what is likely to most to be an unfamiliar group…OIRA. Having dealt in the past with a constant stream of regulations proposed by the DoD at a rate of about 10/hr of every day, it was always a comfort to known that OIRA could be used as an effective method by which to truncate proposed regulations under the Paperwork Reduction Act. Never underestimate the importance of “watchdogs” within government who are beholden to no specific agency and who are very effective at protecting their prerogatives from interlopers.

  46. The rules likely say pretty much what they originally said. If the PTO had added rules that were significantly different than those proposed, we would expect that they would have gone through a new notice & comment procedure.

  47. OK, I give up – how do we submit comments to OMB when no one has any idea what the proposed rules say??? Given the overwhelmingly negative reaction from the patent bar at all of the townhall meetings, surely these proposed rules are not anything like what was floated by the PTO previously. Right?

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