Court Blocks PTO Rules on Eve of Effective Date; All Four Equitable Relief Factors Suggest Injunction

Tafas v. Dudas (E.D. Va. October 31, 2007)

After a two-year long notice, comment, and review process, the US Patent & Trademark Office (PTO) published a set of final rules in August 2007 to effectively limit the number of claims filed in each patent application and to limit the number of continuation applications stemming from an original patent application.  (Current rules allow unlimited claims and unlimited continuations).  Tafas, an individual inventor, immediately filed suit — asking the Virginia based Federal Court to block the rules. Later, Glaxo Smithkline (GSK) filed a preliminary injunction to stop the rules before their November 1, 2007 effective date. Other parties, including the AIPLA, Élan, Hexas, the Roskamp Institute,and Tikvah Therapeutics, IBM, SanDisk, & Senator Schumer, then filed briefs or declarations supporting preliminary relief.

In granting the requested preliminary injunction, the district court walked through the four relevant factors: (1) likelihood that the plaintiff will succeed on the merits of the case; (2) irreparable harm without an injunction; (3) a balance of hardships weighing in favor of an injunction; and (4) the public interest supporting an injunction.  Although the four factors are considered as a whole, the first to factors are clearly the most important and must always be proven.

Likelihood of Success: In its brief analysis of the issues, the court found a “genuine possibility” that the PTO will lose. In particular, the Court noted two particular GSK arguments as likely winners: (1) the facial illegality of limiting the number of continuation applications under 35 USC 120; and (2) problems created by the retroactive effect on settled rights. A third argument – vagueness of the ESD requirements – also has some value according to the Court.

Continuation Applications: 35 USC 120 can be read various ways, but the Court found that Federal Circuit law “suggests that a decision by the PTO to limit the number of continuing applications would run contrary to the mandate of Section 120.”  See Symbol. This conclusion is made easier because the PTO would deserve no rulemaking deference for any rules that extends into substantive grounds. GSK’s position on the illegality of claim limitations is not as strong because there is no statutory provision to the contrary. Thus, the court found that “neither party can claim a strong likelihood of success on this issue.”

Retroactive Effect: The doctrine of retroactive effect is interesting here. Unless expressly granted by Congress, an agency’s rulemaking cannot be retroactive. The court found vested rights in the ability to file continuations and claims under the old rules. Those rights vested at the time when the patentee chose to file for patent protection and give up trade secret protection.

While “an individual [that] discloses his trade secret to others who are under no obligation to protect the confidentiality of the information, or otherwise publicly discloses the secret,” loses that property right, Rucklehaus, 467 U.S. 1002, the Final Rules retroactively alter the bargain on which inventors like GSK rely in making their decision to surrender their rights. The Final Rules thus impair GSK’s right to this bargain.

ESD Requirements: The after publishing the final rules, the PTO published a series of clarification papers and guidelines for how to properly prepare an examination support document (ESD) under the new rules. The Court turned that guidance on its head — suggesting an admission of vagueness and noting that the additional guidance cannot be used to help vague rules overcome due process violations.

An alternative way to block the rules is to show that they are “arbitrary and capricious.” The Court found the PTO’s reasoning coherent enough to give the agency a pass.

Thus, the PTO’s rationale appears to be sufficient to satisfy arbitrary and capricious review, and the Court will find that GSK has not shown a real likelihood of success on this issue.

Irreparable Harm: The Court agreed that the “uncertainty” created by the new regulations was sufficient to cause irreparable harm because they would change investment and patent filing incentives. Without an injunction, GSK would be unable to recover from its lost protection if the rules are ultimately determined to be invalid.

Balance of Hardships: For the preliminary injunction, the balance of hardships weigh in GSK’s favor because GSK’s woes are instant once the new rules are effective. On the other hand, the PTO will simply experience a gradual continued increase in pendency.

Public Interest: The public interest is in a stable patent system. Thus, a preliminary injunction to preserve the status quo is appropriate.

Notes:

156 thoughts on “Court Blocks PTO Rules on Eve of Effective Date; All Four Equitable Relief Factors Suggest Injunction

  1. “agent007 wrote: “It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent.”

    This may be a pathological example, but if the parent fails to support its claims because of a failure to comply with the best mode requirement, then the claims of child CIP which simply has the best mode added to the detailed description and no other changes could be anticipated by the parent.

  2. Quick answer to “Don’t Beat”,a few posts above, who thinks the EPC has too much front loading of attorney time, at the drafting stage.

    Every culture has its checks and balances. Under the EPC you have to say up front what you think is your contribution to the technical field: in terms of technical features and technical effects. That doesn’t take so much time or pages. The only reason ROW writes hugely long apps is to get something effective in the world’s most powerful patent jurisdiction: USA. Change US law to that of ROW and apps would shrink to 40% of the size they are now. Then think on the way claims are interpreted here in Europe after issue: in terms of substantive “content”, ratherthan literal wording (inevitable in polyglot Europe) See Art 69 EPC and its Protocol which explains how to allocate a scope of protection somewhere between central and peripheral claiming. With courts in Europe going that way on claims, you don’t need enless tinkering with claim wording, over generations of continuations. And, hey, if you writing the app couldn’t think what you had invented, but only realise later, why should you have a monopoly for that insight, backdated to your original filing date? Somebody else might have, in the interim, exactly that insight and filed on it and, in First to File country, that interloper, not you, should indeed get the pot of gold on that insight. But, hey, it’s Saturday, and I’m not spending all day here.

  3. I take that last sentence back. The measurement system needs to be completely scrapped and rewritten from scratch after input from the patent bar and POPA. The only real considerations should be giving the applicants enough shots to make their case and giving examiners enough time to do the case properly. NOT how many cases the office disposed of this year. Retention needs to be addressed separately. Hiring outside consultants who specialize in business processes would probably be a good idea as long as the recommendations were taken seriously (they could go through 705 for business methods for ideas) and maybe take input from GAO, OPM, and OMB as they are watchdogs.

  4. You’re right about the classification system. Classification searches in my area are a complete waste of time. In my area it reflects the technology around 1990. We need at least 30 new subclasses for the new developments in my area. I guess the reclassification in my area will probably get subcontracted out–we sure don’t have time to do it ourselves. The allowance rates in my TC vary wildly. One workgroup, in a very different area than mine has 70-80% allowances. My area is 20-30%, but my workgroup is a very different type of technology than other workgroups in my same TC. I believe some of it is due to the natures of different science/engineering areas/industries. The 20-30% allowance rate in my area is probably 50-60% or even more if you track all of the applications from first action to FINAL disposal (allowance or abandonment, that is, not an RCE “disposal”). The allowance rate on the PALM 3205 appears to include express abandonments on filing on RCE (this is the only way the numbers make sense to me, someone correct me if I am wrong), which would seem to make the “measured” allowance rate lower than the “actual” rate. In my area there is so much prior art and the inventions tend to be so incremental that we really need to go back and forth most of the time to overcome all of the art and get the case allowed. If I see something clearly allowable, I will usually indicate it as allowable if I can convince a primary, which is most of the time. It is usually a significant step pertaining to what the independent claim is trying to do that is not suggested or obvious in light of the best references. Believe me, I don’t want unnecessary appeals. I have only had allowances and abandonments so far (so good). I have one appeal coming up (my first) which I will send to the board because I believe there is a developed issue between me and the applicant. If I had signatory authority and as much experience with the art as a primary, allowances would probably be much easier. I have seen primaries allow claims that I would be reluctant to allow, but then again, they know the art better than I do and I trust their judgment–they appear to be good primaries. There seems to be nothing but frustration on the part of practicioners and examiners. This is why Congress HAS to have hearings so all parties can be reasonably accomodated. The system as it stands now is preventing everybody from doing their jobs properly. Production/counts/workflow/promotions/awards needs to be completely re-engineered (Accenture?), but that is another thread.

  5. agent007 wrote: “It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent.”

    Obligatory caveat here: In some art areas, (which I don’t practice in) a single document can apparently anticipate a claim without providing enablement for that same claim. In such a situation, it would be possible for a parent to anticipate a claim in a child.

  6. JAOI – thanks for the compliment :)

    MaxDrei – there are a couple of things I really like about the EP system – the three examiner system I think would be a big plus, especially if the examiners specialize in a relatively narrow area, they are far more likely to have a pervasive enough “tribal knowledge” to recognize relevant prior art in a timely fashion. Good stuff.

    Where I think the EP falls flat on its face is essentially burdening the applicant with the obligation to shift substantially all attorney time for claim writing to the earliest part of the process. This is very inefficient on a present valuation basis and strongly tilts the effectiveness of the system toward the richer applicant – ie Big Business. In cases where there is truly only one invention described in the spec, this is fine, but a true “flash of genius” takes a lot more claims to fully capture and in fact often represents dozens of discrete claim groups to encapsulate. The superficial response to this is almost always something along the lines of “you should know what the invention is before you apply for the patent” which is superficially reasonable sounding until one recognizes that it calls for an inventor to not only be one of extraordinary techical skill in his field, but to also be at least ordinarily gifted in both a) patent law, and b) the prior art in his field – that combination is hugely onerous in the case of an inventor who truly advances an art (Tesla type work), as opposed to the results of mundane development of known principles (KSR v Teleflex type work).

    The flip side is that the EP prior art searches tend to be more robust than the US. Is this a matter of the examiners having more time, better resources, or something else? MaxDrei – I’m curious as to your thoughts on this one.

  7. A bit late considering the length of this blog, but CAPat (Nov 1 6:55PM) was angry with the Europeans’ tying the claims to the spec language.

    Indeed it is irritating (especially when prosecuting a client-written application) but there is a reason: public notice (see G1/93).

    If US claims were similarly limited to language in the spec you would actually solve, in one fell swoop, the problems caused by endless continuations, submarine patents and patent trolling.

  8. 1) if a continuation is filed of an application which goes abandoned, don’t give the Examiner a count for the abandonment (since obviously the applicant has not “abandoned” pursuing the invention), but he still gets a count for the next FAOM;

    2) if an RCE is filed, don’t give the Examiner a count for the RCE, but give him one count for the next action on the merits.

    To give the Examiner’s counts for actions that resolve nothing (abandonment/continuation, forcing a continued examination but not doing any continued examination) seems to just promote resolving nothing.

    This sounds pretty good, but would really only be effective if the counts were taken from the SPEs. Then there’d be action.

  9. In Tronzo v. Biomet, 156 F.3d 1154 (Fed. Cir. 1998), the patentee conceded intervening prior art and, on appeal, the sole issue was whether the parent provided priority. The parent was not the invalidating reference.

  10. “It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent.”

    Not so fast my fickle agent-007 friend.

    Read Tronzo v. Biomet (Fed. Cir. 19??). Same claim language in the CIP as in the parent and yet the parent did anticipate and render unpatentable the twin claim in the CIP child.

  11. “Is there really a per se exclusion of the parent of a CIP from prior art in US law, _because_ of the priority claim?”

    No, there is no such exclusion, and as you suggest In re Chu should be enough to convince anyone who still has doubts after reading the MPEP.

    As long as restrictions are allowed, a CIP is simply a prosecution convenience tool and accomplishes little that couldn’t be accomplished with some combination of a continuation and a separate new application. It simply provides an opportunity to argue support that the claims are supported in the parent in a close case.

  12. “As to your CIP comment, the issue is not only the priority date. It is the ability to present survivable claims in the first place. Indeed, as you point out, depending on the claims, the priority to which applicants may be entitled to for Section 112 support of their claims may be the CIP application date and not the parent priority date. However, because the US applicant properly claims priority to the parent application filing date, THAT parent application and disclosure cannot by itself be considered prior art against his subsequent CIP claims. Not so in the EPO. That was my point, which you apparently missed. In other words, please point to a similar feature under the EPC in which an applicant is INSULATED from his own disclosure being cited against his subsequent improvement application.”

    Is there really a per se exclusion of the parent of a CIP from prior art in US law, _because_ of the priority claim?

    It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent.

    However, it seems a bit less clear if it is a 103 issue. The Federal Circuit case In Re Chu seems to indicate that the effective dates of the reference and claims governs, as usual. A claim in the child that depends on the new matter in the child has the filing date of the child.

    Therefore, based on this effective date of the claim, the parent could be available as prior art (e.g., as a published application or issued patent) to support a 103 rejection of such claim.

  13. Well, to be fair, I can take some time on applications and still put food on the table (I’ve heard some arts get 10 hours or less per balanced disposal at GS-14 production … I just think, “uh, what?”). As a result, my view is likely to be somewhat rosier than theirs. Everyone does what they have to do; if I had to crank out two counts a day, I can’t guarantee I’d do things the same way.

    I suppose the effect of QR may differ by TC/unit. In our case it’s clear that 1) higher errors = more top-down management pressure = clamps on allowances, unhappy SPEs, all that jazz; and 2) QR rebuttal rate is low. Well, unless you consider 30% to be high. The caveat here is that I’m not privy to this information directly, since I’m not a SPE; it’s possible, I suppose, that I’ve been lied to. But for what it’s worth, the way people talk around here does not at all suggest that they consider QR to be a paper tiger.

  14. “I think my point stands that any problem with the system here is due mostly to how the incentives are set up.”

    What do you think of this:

    1) if a continuation is filed of an application which goes abandoned, don’t give the Examiner a count for the abandonment (since obviously the applicant has not “abandoned” pursuing the invention), but he still gets a count for the next FAOM;

    2) if an RCE is filed, don’t give the Examiner a count for the RCE, but give him one count for the next action on the merits.

    To give the Examiner’s counts for actions that resolve nothing (abandonment/continuation, forcing a continued examination but not doing any continued examination) seems to just promote resolving nothing.

    And to make up for the lost counts, maybe you could give Examiners 2 counts for:

    3) abandonments that don’t result in subsequent continuations;

    4) allowances that terminate a family or perhaps a family chain (i.e. no subsequent continuations).

    Granted 4) might be really dangerous… need to think about that one.

  15. “Claim 1 recites a method of manufacturing a device, comprising…

    Examiner sends out OA rejecting claim 1 on a reference disclosing Legos.

    Attorney says, “Touche, Examiner, I get your point. Let me amend claim 1 to recite a method of manufacturing a semiconductor device, comprising…”

    What does Examiner do? Applies a new reference, never of record before, states all of the arguments are moot in view of the new grounds, and sends FR “necessitated” by amendment.

    It’s garbage. And it happens all the time. All the time. And the examiners are rewarded for it. Rewarded for not obeying the rules. That’s the reason the PTO is in the crapper. Not applicants or their representatives.”

    Actually, this hypo can cut either way.

    If the spec is concise and to the point, then it makes sense to hold Examiners to a standard of examining claims and spec, and applying the closest art in the first action.

    However, if the spec is a rambling and unfocused encyclopedia that is at least 99% obfuscation of that which is already known, it is not reasonable to require an Examiner to “search the spec”. Unfortunately, such specs are common.

  16. They don’t deny the existence of OPQA. They deny that 1) many examiners live in fear of the QR boogey man (they do, they did before I worked there, while I worked there, and after I worked there) and 2) that the success rate in fighting QR is low. They all assure me that QR is really a paper tiger.

    I have expressed my concerns about the due process implications of OPQA and second eyes, as have others. They are the single greatest piece meal examination programs in history. And PTO (mis)management trumpets them as their greatest success stories.

    Still think the PTO’s problems are the result of applicants and practitioners?

  17. Jexa,

    Please be assured that we don’t want invalid patents issued as the result of Board decisions either. (I can hear Malcolm’s keyboard firing up in the background already.)

    We do our best to advise clients as to when an application is ripe for appeal. Unfortunately, the scenario I described above (i.e. examiners deliberately not citing the best art at their command at the outset in an effort to catch the RCE gravy train) is very common, and it makes giving advice very difficult.

    I see examiners on other sites posting this nonsense to the tune of, “Well obviously the applicant agrees that my rejection is reasonable, or else they would appeal.” Oy frickin’ vey. They are so completely misinformed and self delusional that they are beyond working with. I just write those ones off.

    You appear much more reasonable. Now all we need is more examiners like you.

    But you’ll probably get promoted to (mis)management at some point and we’ll have to start all over again.

    C’est la vie.

    JD

  18. Tim J (from UK),on Continuations etc.:
    Thank you for pointing out the new G1/06 European decision, which overturned what I have come to know as the cautionary rule. Since you are from the UK, you might comment on additional barriers in the EU, which I have not addressed. Such are the UK national barriers to effective continuations, requiring applicants to “make ready” their application after 4.5 years. Can one submit any new claims (division or otherwise) in the UK in an application that has been “made ready”?

    As to your CIP comment, the issue is not only the priority date. It is the ability to present survivable claims in the first place. Indeed, as you point out, depending on the claims, the priority to which applicants may be entitled to for Section 112 support of their claims may be the CIP application date and not the parent priority date. However, because the US applicant properly claims priority to the parent application filing date, THAT parent application and disclosure cannot by itself be considered prior art against his subsequent CIP claims. Not so in the EPO. That was my point, which you apparently missed. In other words, please point to a similar feature under the EPC in which an applicant is INSULATED from his own disclosure being cited against his subsequent improvement application.

    In this regard, by not extending such CIP priority protection to inventors, the EU patent system forecloses on further valuable disclosure opportunities in follow-up improvements that may be the most relevant and mature teachings that inventors can impart to the public. Instead, the EU system encourages inventors to keep such inventions and improvements as trade secrets because there is no patent bargain to be had. The US patent system takes the patent rights – public disclosure quid-pro-quo bargain seriously by actually implementing it throughout US patent law including through the CIP and Section 112 best-mode requirements. In contrast, the rest of the world (ROW) is apparently ignoring the latter two important components.

    When discussing the need in the USPTO for multiple claims as opposed to a single claim in the EPO, you attribute the differences to Section 112’s requirements under which US courts construe claims. You are correct in your observation, but that only makes my point. This is a result of the US claim support requirements through disclosure and enablement. These are taken more seriously in the US patent system than in the EU. Like I said, I am not sure the ROW really appreciates and fully *acts* on the patent bargain concept. The First-to-Invent, Continuations, CIP and claiming strategies in the US are a manifestation of the US system being more faithful to the patent bargain and not just to a coarse facsimile of it. This is why I shrug with disbelief every time I hear suggestions from our foreign friends that we should “Harmonize” our patent system with theirs. For them and their socio-economic system, their patent rules might be just right. For Americans, however, such foreign patent rules are a step in the wrong direction. It is like asking a rider on a 4×4 vehicle driving uphill to step down and ride on a donkey instead.

    Ron Katznelson

  19. “You should be aware that examiners who post on other sites swear that the scenario you describe is not true. Thank you for confirming that they are full of it.”

    I’m not sure what there is to deny – are they claiming there is no quality review?

    Well, one thing I didn’t mention is that the unit can fight review (e.g., argue why their reasons for charging the error are meritless), but from what I’ve heard the success rate is pretty low, and review gets the final word on whether they accept your argument or not.

  20. Holding examiners to an acceptable “actions per disposal” average would solve some of the problems with crappy work, but would not address the incremental search problem. For the latter, the MPEP should be revised to better articulate guidelines with regard to Rule 104.

  21. Well, in light of MPEP 1214.04, what I said about appeals above is partially incorrect. Regardless, that’s what happens here, not sure what to say. I also not sure how much that would help you guys in this situation though, given the second option I outline above – is that really any better?

  22. Well, I think at that point there are several issues. First of all, if you win, the examiner does more work for no credit (as I outlined a few posts ago), so it’s not in their best interest to pursue that avenue – the reason they do it is because they know they’ll get RCEs instead of appeals. Also, they can’t continue the appeal chain very long – if they make another crap NF and FR, and you appeal again, it goes back on their docket, again, all for no credit. That’s a lot of work they’re doing for nothing. Second, what might happen is that the examiner simply allows the case after they lose (since they can argue to review that, “hey look, I rejected and got reversed, what else do you want?”), in which case Applicant is left with … well, you know what. Might be the best outcome for Big Company X where quantity > quality, but probably isn’t healthy for Small Entity Y that needs a strong patent on crucial technology.

    So I guess, in the end, I just don’t know what you should do. Which, again, is why I don’t get to bill $500+/hr.

    However, I think my point stands that any problem with the system here is due mostly to how the incentives are set up.

  23. “If we get reversed, the SPE doesn’t permit us to just allow the case automatically – it is re-examined on the merits in light of the decision, so it’s more work for no credit if we lose.”

    This is also specifically forbidden by MPEP 1214.04. Make a copy of that section and staple it to your SPE’s forehead. Trust me, it will be an improvement.

    While what I described may not be the practice in your art unit (which I’m beginning to doubt in view of your SPE’s complete ignorance and/or disregard for the MPEP and rules), it is, unfortunately, the policy in the majority of units.

    “One disclaimer I forgot to make here is: if quality review puts another reference in front of me and says, “make this rejection”, both the applicant and I are screwed; not much I can do about it. I think you boys have had enough experience with that though.”

    You should be aware that examiners who post on other sites swear that the scenario you describe is not true. Thank you for confirming that they are full of it.

  24. jexa, I have a feeling you are from 2800. That group generally has a good culture. It seems like a different patent office to me.

    However, some other PTO groups are off the wall, all the time! I don’t want to name names at this point because I feel we all need to connect and have constructive discussion, exchange ideas etc. Just like the CPF believed the recent past was time to strike and throw everything including the kitchen sink into “reform,” it appears now is the best time to start this type of dialog – hopefully on an offical basis.

  25. Jexa, your last post crossed with mine. You have some valid points in that post. However, it isn’t just the cost of the appeal. If we appealed a cr*p rejection we might win, but the patent would essentially not have been examined, so it would not be much more than wallpaper!

  26. I had a long argument with Steve Marcus of the PTO about these issues on news://misc.int-property (that’s Usenet, but it would be archived on Google Groups). MPEP 904 tells the Examiner to search the spec as well as the claims. He argued that this only applies in special cases, but he was wrong! I’m not going through this argument again on here, so I’ll let you all argue about it!

  27. Re JD: well, that’s probably “milking the RCE gravy train” or whatever. I can see why it’s frustrating, and I’m not going to claim it doesn’t happen, but that’s not the practice in our art unit.

    We try to get abandonment or allowance as fast as possible – which requires that we use that good reference up-front. If we’re going to go final, we’re told to be sure it’s on grounds we would be willing to argue in front of the BPAI. If we get reversed, the SPE doesn’t permit us to just allow the case automatically – it is re-examined on the merits in light of the decision, so it’s more work for no credit if we lose.

    I’d also like to point out that the phenomenon you’re talking about results from: 1) ridiculous production requirements in some (most?) arts, such that the examiners need to play this game just to keep their jobs, and 2) applicant’s willingness to feed examiners RCEs (I suppose due to the expense of the appeal).

    One disclaimer I forgot to make here is: if quality review puts another reference in front of me and says, “make this rejection”, both the applicant and I are screwed; not much I can do about it. I think you boys have had enough experience with that though.

  28. Malcolm,

    If you’re going to (mis)quote me, at least do me the courtesy of doing it accurately.

    What I said was, “Stop concerning yourself with showing applicants how “broadly” you can interpret the claims with cutesy rejections…”

    Thanks,

    JD

    Love your posts BTW. I’m a fan.

    Jexa,

    Your points are noted. However, here’s what usually really happens:

    Claim 1 recites a method of manufacturing a device, comprising…

    Examiner sends out OA rejecting claim 1 on a reference disclosing Legos.

    Attorney says, “Touche, Examiner, I get your point. Let me amend claim 1 to recite a method of manufacturing a semiconductor device, comprising…”

    What does Examiner do? Applies a new reference, never of record before, states all of the arguments are moot in view of the new grounds, and sends FR “necessitated” by amendment.

    It’s garbage. And it happens all the time. All the time. And the examiners are rewarded for it. Rewarded for not obeying the rules. That’s the reason the PTO is in the crapper. Not applicants or their representatives.

    Thanks,

    JD

  29. Look, no one is holding anyone a perfection. Everyone makes mistakes, and time is certainly a factor. However, the mindset is most often “this is good enough, I’m done.” This predisposition is problematic. It results in too many unnecessary RCE’s and continuations.

  30. “no, no jexa. If you were so sure that the reference was the best, and in your mind believe your action is equivalent to a quayle, then you must have believe your search was comprehensive.”

    That’s exactly correct – and exactly what I said. On first action, if I’m doing a broad rejection, that’s the best art I could find. If you amend around it, unless the amendment itself raises other issues, it will probably be allowed. So yes, the search was comprehensive. I rarely re-search a case after non-final, unless the amendment includes a limitation I didn’t catch the first time. And excuse me, but I know what an update search is, thank you.

    There’s also the issue where your disclosed invention is to A, B, C, but you only claim A. I have two references: one for a broad reading of A+B, and one for a broad reading of A+C. For the purposes of the first rejection, the references are equally good – it’s only until you add either B or C that one reference becomes more relevant than the other.

  31. no, no jexa. If you were so sure that the reference was the best, and in your mind believe your action is equivalent to a quayle, then you must have believe your search was comprehensive.

    Unless, however, you are re-searching each time. This is not how you should be tackling a search. An update should only include newly published documents, or documents not otherwise availablbe to you.

  32. “You lost credibility again with this statement. If a claim is narrowed, and you apply a new document, obviously the new document is more relevant than the previously applied one. It is this mindset (rationalization) of the office that must be destroyed. CRUSHED! Read 104 again.”

    Ironically, that statement isn’t a new one – rather, it’s the one you quoted and replied “WORD!” to.

    Specifically, nowhere do I say I ever apply new art. If you read my prior post again my entire point was that if I issue a broad rejection, that’s the best art I could find, so if you can get around it I’ll probably allow it.

    That’s why Rule 104, and MPEP 706 agree with me. I’m allowed to do rejections based on broad readings if that’s the best art I could come up with. Nowhere does either the rule or the MPEP say I should just not make the rejection at all.

  33. The MPEP 706 was in response to JD, not bier.

    To bier: I’d say that once you don’t have any time left, whether it’s “okay” or not to do a half-assed job is out of your hands. Hobson’s Choice – do a bad job, or no job at all? Trust me, we’re not any happier about it than you guys, but that’s reality. Sorry.

    As for being stubborn on errors – without understanding the exact situation you’re talking about, I can’t really comment. It’s possible, for instance, that the examiner in those cases doesn’t actually see what they’re doing as an error. I don’t know any examiners that will stick to their guns when they’re clearly wrong, unless they’ve been backed into a corner in some way (e.g., they’d like to allow, but nobody will sign it).

    It doesn’t benefit examiners in any way to draw out prosecution when there’s an obvious way to fix it, and from a count perspective we’d much rather allow than anything else (provided we can), because we don’t have to wait 6 months for the abandonment count or risk having to write an Examiner’s Answer (which, as I’m sure you’ve heard, nobody likes to do).

    Think about it this way: on first action, I make an error. Applicant’s arguments point this out. I now have two main options: I can either stick with my first rejection and go final despite the error, or I can reconsider the case (which itself results in two outcomes: either allow, or second-action non-final). If I go final, I risk quality review finding the error and risk applicant appealing. On appeal, two more choices: go with the appeal and write an examiner’s answer, or I re-open prosecution. If I go with the appeal, I have to write the answer (which is already bad) and then get reversed, which puts the case back on my docket. I get a count for writing the answer, but that’s it, and now it’s back on my docket and I still have to do something about it – but can’t get any more counts for actions taken on that case. Re-opening prosecution at the appeal stage is the same thing – lots of non-final actions with no counts.

    So, in fact, the way to minimize work is to just reconsider the case when you’ve made an error. It leaves a bad taste in your mouth when it happens, and you probably have to do another non-final action for no counts, but it ends up being less work in the long run. Hopefully, if you didn’t make an error this time, the next action can be final/allowance and you never have to see the case again. So basically what I’m trying to say is, it’s not in the examiner’s interest to be stubborn ***unless they believe they’re right***.

    I suppose the whole RCE thing puts a different spin on the issue, but as I said, my art unit doesn’t play that game, so I don’t know. And really, if you’re feeding examiners RCEs when they mess up, who is really to blame here?

  34. MM, I understand your point, but if an examiner reads the claims and the specification, and does his/her search, **both** documents should have been discovered and brought forward.

    The “new” document need not be applied in the rejection, but cited as considered relevant.

    Examiners should not always research everytime an amendment is made. This is not what an “update” of a search is.

    I can see you probably never worked there, and do not understand what a search involves.

  35. “If a claim is narrowed, and you apply a new document, obviously the new document is more relevant than the previously applied one.”

    Huh? Only in hindsight, my friend. At best, prior to the narrowing of the claim, it’s equally relevant to the previously one. But a more narrowly drawn document is quite likely not to be as clearly written as a more broadly drawn document and may have other issues that the more broadly drawn reference does not have.

    The reason this comes up is that client’s are loathe to put a narrow allowable claim before the Examiner up front for fear that the Examiner will (very reasonably) split the baby and recognize that the broad claims are too broad but that narrow one — sure, it’s allowable.

    But the client doesn’t want that narrow claim. It’s not “valuable”. This in spite of the fact that the narrow claim is, 9 times out of 10, exactly what the client invented.

    See how it works? Client invents something not terribly valuable. Client goes to attorney and says: Get me a broad patent. In the old days, attorney would say: “No problem.”

    Now, as Robert Plant once said, there are two paths you can go by. One of those paths is sort of greasy and expensive.

  36. “Accordingly, my previous post states:
    “In other words, if I’m issuing a rejection of broad claims based an a very broad reading of those claims, it’s ***because I couldn’t find better art***.” (emphasis added)

    Nowhere does rule 104 preclude broad reading of the claims, and nowhere does rule 104 preclude rejections based on broad readings, provided that such rejections rely on the best art known.”

    You lost credibility again with this statement. If a claim is narrowed, and you apply a new document, obviously the new document is more relevant than the previously applied one. It is this mindset (rationalization) of the office that must be destroyed. CRUSHED! Read 104 again.

  37. I should also include that MPEP 706.02 includes:

    “Prior art rejections should ordinarily be confined
    strictly to the best available art. ***Exceptions may properly
    be made, for example, where:***
    (A) the propriety of a 35 U.S.C. 102 or 103 rejection
    ***depends on a particular interpretation of a claim;***
    (B) ***a claim is met only in terms by a reference
    which does not disclose the inventive concept
    involved***; or
    (C) the most pertinent reference seems likely to
    be antedated by a 37 CFR 1.131 affidavit or declaration.”
    (emphasis added)

  38. “Another thing you have to keep in mind is that the examiner is not necessarily doing something out of malice. For instance, some weeks I just don’t have the time (e.g., end of fiscal) to carefully and thoroughly consider every single minute detail, sometimes I just overlooked something (oops), etc. It would be nice if everyone could sit down all the time and talk things over so we all know where the other guy is coming from, but …”

    Aha! therein lies the rub, to coin a phrase. No, its not (necessarily) out of malice, in fact most times not. But when you don’t have the time to do a good job (is that really OK…to do a half-assed job?), then at least don’t stand on your first rejection, stomp your feet and say “arguments not persuasive”. Admit your mistakes or oversights and be productive, instead of counter-productive. How much would backlog go down if we didn’t have to continually explain the substance of the invention in our responses? After all, it IS in the spec…

  39. “That, “Your claims, purportedly for a semiconductor device, are so broad that they read on Legos” type OA you seem so fond of is specifically prohibited by Rule 104(c)(2), which you should familiarize yourself with. But those of us on the outside are well aware that too few at the PTO consider themselves actually bound by the Rules.”

    Incorrect. 37 CFR 1.104(c)(2) states:
    ***
    In rejecting claims for want of novelty or
    for obviousness, the examiner must cite the best references
    at his or her command. When a reference is
    complex or shows or describes inventions other than
    that claimed by the applicant, the particular part relied
    on must be designated as nearly as practicable. The
    pertinence of each reference, if not apparent, must be
    clearly explained and each rejected claim specified.
    ***

    Accordingly, my previous post states:
    “In other words, if I’m issuing a rejection of broad claims based an a very broad reading of those claims, it’s ***because I couldn’t find better art***.” (emphasis added)

    Nowhere does rule 104 preclude broad reading of the claims, and nowhere does rule 104 preclude rejections based on broad readings, provided that such rejections rely on the best art known.

    Nor do I suggest that rejections based on broad interpretations should be given without explanation. Rather, I stated:
    “it is in the examiner’s interest to reject as close to the ***disclosed invention*** as possible, because it gives less room for Applicant to argue, reduces/eliminates need for additional searching after amendment, etc. This is one of the main reasons why I read the spec. ***Office actions are also shorter, because you don’t have to do any explanation; rather, it’s just “ref A discloses X, Y, and Z (see col.#, lines #-#)”.***” (emphasis added)

    In other words, rejection closer to the disclosed invention is desirable to the examiner because explanations are unneeded – implying that explanations would be needed in rejections using broader interpretations.

    As such, the examination procedures I have described are not at all contrary to the MPEP but rather are exactly in accordance with its guidance.

  40. “Stop concerning yourself with showing applicants how “broadly” you can interpret the claims”

    Actually, Examiner, I would urge you to do the exact opposite. Thank you.

  41. Jexa,

    That, “Your claims, purportedly for a semiconductor device, are so broad that they read on Legos” type OA you seem so fond of is specifically prohibited by Rule 104(c)(2), which you should familiarize yourself with. But those of us on the outside are well aware that too few at the PTO consider themselves actually bound by the Rules.

    Stop concerning yourself with showing applicants how “broadly” you can interpret the claims with cutesy rejections and cite the best art at your command.

    See also MPEP 706.02.

    Thanks,

    JD

  42. “Definitions or no, sometimes (like in our cases, almost always) there is data included in the spec which we think supports our case. To have the Examiner ignore that until final or refiling is sometimes “detrimental”. :^/”

    I’m not really sure what kind of situation you are referring too; it’s probably art-specific? I examine electrical/semiconductor/circuit stuff, and it’s usually pretty straight-forward. I imagine the mechanical arts are even moreso, whereas the biotech/chemical arts are probably an endless quagmire of special cases.

    Another thing you have to keep in mind is that the examiner is not necessarily doing something out of malice. For instance, some weeks I just don’t have the time (e.g., end of fiscal) to carefully and thoroughly consider every single minute detail, sometimes I just overlooked something (oops), etc. It would be nice if everyone could sit down all the time and talk things over so we all know where the other guy is coming from, but …

    And, you’ll also have to excuse us examiners if we don’t exactly believe that all attorneys are the paragons of virtue you guys suggest. Most examiners have had the experience of trying to be nice and having their hand bitten off in return. We only have two hands, so there’s no way we’re going to risk that second one.

  43. “In other words, if I’m issuing a rejection of broad claims based an a very broad reading of those claims, it’s because I couldn’t find better art. In that sense, it’s almost an Ex Parte Quayle – all you really have to do is narrow the language of the claims slightly (in many cases, all it takes is a single word) – and you’ll likely get your Notice of Allowance on next action (provided, of course, that your change doesn’t in turn raise other issues).”

    As MM says, WORD!

  44. Definitions or no, sometimes (like in our cases, almost always) there is data included in the spec which we think supports our case. To have the Examiner ignore that until final or refiling is sometimes “detrimental”. :^/

  45. Well, as for the rejections themselves, I’ll say this – it is in the examiner’s interest to reject as close to the ***disclosed invention*** as possible, because it gives less room for Applicant to argue, reduces/eliminates need for additional searching after amendment, etc. This is one of the main reasons why I read the spec. Office actions are also shorter, because you don’t have to do any explanation; rather, it’s just “ref A discloses X, Y, and Z (see col.#, lines #-#)”.

    In other words, if I’m issuing a rejection of broad claims based an a very broad reading of those claims, it’s because I couldn’t find better art. In that sense, it’s almost an Ex Parte Quayle – all you really have to do is narrow the language of the claims slightly (in many cases, all it takes is a single word) – and you’ll likely get your Notice of Allowance on next action (provided, of course, that your change doesn’t in turn raise other issues).

    So, I don’t really need to issue two rejections – if I issue the broader one, it’s basically saying, “I couldn’t find your invention, but your claims are way too broad.”

    Yes, I’m aware of the DoE problem with amending the claims post-Festo. I don’t really know how to resolve that issue in situations like this (which is why I don’t get paid a lawyer’s salary), but I will say that arguments on the grounds of “you’re reading too broadly” are unlikely to be persuasive unless, for instance, the reading clearly lies outside the understanding of a PHOSITA or is clearly contrary to an explicit definition/exclusion in the spec. You are always welcome to appeal, I guess.

  46. MPEP 2111, “PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.” That “taking into account” thingy is not supposed to be optional.

    If you’re going to argue that X is inherently in the claim based on the written description, you may as well amend X into the claim because your argument is going to place X in the claim anyway. Why force everyone to read the file wrapper to figure out what your monopoly is?

  47. jexa, I believe most understand your point. I remember the example from PEIT of a claim to a picture frame reading on a toilet seat. Claims like that are what they are, but instead of **only** giving the “go to h__” rejection, also issue a rejection applying relevant art. Both rejections give the applicant notice on several levels how broadly the claim may be *reasonably* interpreted, and an amendment overcoming both will more efficiently advance things.

    That being said, examiners do make many silly interpretations. Even from the perspective of the PTO, the “plain meaning” of a term is one that one of ordinary skill in the field of the invention would give, not every possible definition of that term. Often, it involves considering the context in which it is used. This involves a reasonable approach and some experience on the examiner’s side.

  48. On the first point: “Taking account ***whatever enlightenment by way of definitions*** or otherwise that may be afforded by the written description contained in applicant’s specification” (emphasis added).

    On the second: I have stated above that the “ordinary” and “plain” meaning of the terms is in accordance with what would be understood by a PHOSITA.

    What I have stated above is not inconsistent with the MPEP. If your invention is directed to a semiconductor device, and you fail to actually claim a semiconductor device, nowhere does the MPEP explicitly require that examiners read a semiconductor device into your claims for you. Similarly, “in accordance” doesn’t mean, “in accordance, as stated in the specification”. Claims are read ***in light of*** of the specification, but the specifiction ***is not read into the claims***.

    There is a board case that is sometimes mentioned in training lectures, where the BPAI said that the claims were so broad they read on the piece of paper that the decision was printed on. I can’t right now recall what the subject matter of the application was, but it wasn’t a piece of paper.

    And I know you attorneys often like to claim that we don’t read the spec. Some/many examiners might not; I can’t speak for them. I read the spec, if for no other reason than that searching is easier, and I can preempt future amendments with art that reads on disclosed-but-not-yet-claimed features. Even reading the spec I interpret claims broadly. If you give me a term like “level” without explicitly defining it in the spec, that reads on any kind of level, physical, logical or otherwise. I gather from your spec what kind of “level” you probably mean, but if it’s not in the claims …

  49. “Therefore, aside from explicit definition of terms, the specifiction often has little bearing on an examiner’s interpretation of the claims.”

    MPEP 2111, “PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.” That “taking into account” thingy is not supposed to be optional.

    Or MPEP 2111.01 III, “The ordinary and customary meaning of a term may be evidenced by a variety of sources, including ‘the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.’” (discussing Phillips v. AWH Corp.)

    But I do agree with you in a way. It’s hard for the specification to have any bearing on the examiner’s interpretation of the claim if the examiner hasn’t read the specification. :-)

  50. I find that often, when an attorney starts to talk about what’s stated in the specification, they are forgetting that the specification is never read into the claims. Examination is not a validity/infringement proceeding, and the claims are not contrued in the same fashion. Whereas the courts generally construe the claims within the scope of the specification, the Office interprets the claims according to the plain meaning of the language as would be understood by a PHOSITA. Therefore, aside from explicit definition of terms, the specifiction often has little bearing on an examiner’s interpretation of the claims.

    For instance, if your specification is directed to a method for manufacturing a semiconductor device, but nothing in your claim language explicitly requires a semiconductor device, the claim will not be interpreted to require a semiconductor device (which is how you get semiconductor claims rejected as being unpatentable over legos). Something else I see a lot is “in accordance with”. Lacking further language in the claim elaborating on exactly what “in accordance” means, this term can mean pretty much anything. X is “in accordance” with Y if X is affected in any way by Y.

    The bottom line: if the language is broad, we interpret broad.

  51. I’m not sure what the issue over finals is. Final rejections where new grounds of rejection have been entered are proper where all new grounds are necessitated by Applicant’s amendment.

    If this were not so, prosecution on the merits would never close. Applicants could easily file an initial claim, then after each rejection file an additional claim that required additional art. Aside from prolonging prosecution, such a practice would crush the examining corps. As everyone should know by now, examiners get no credit whatsoever for any work done between first action and disposal.

    The current system punishes Applicant for not claiming everything up front. In theory, the examiner only considers an application on the merits twice – once at initial filing, and once following amendment (and potentially after-final amendments). Therefore, in order for claims to get full consideration, they must be filed up-front. Additional claims and limitations after non-final will draw (proper) final rejections if they are not immediately found to be allowable.

  52. “Applicants shouldn’t advance obviously losing arguments at non-final and then bemoan not being able to get their amendments in after a final rejection.”

    I find that more often than not, my “obviously losing arguments” made after the FAOM aren’t so obviously losing to me. Most often, they are made (without amendment) because the examiner hasn’t made the effort to read the specification and fully consider the limitations of the claims, or has improperly interpreted the prior art to mean something it doesn’t say. Inherency is a perfect example: just because you SAY it’s inherent, doesn’t mean that it is. We offer evidence that it isn’t inherent…and you ignore it “Applicants arguments deemed unpersuasive…”, without further comment. Thanx loads.

  53. SomeDude,

    Let me just say, “Oh no you didn’t.”

    You should really read my posts before mentioning me by name.

    I’ve made several suggestions for improving the prosecution process over at the PTO, e.g., calculating unique disposal times for each application (including factoring in the number of claims, which addresses your big complaint), using the millions of dollars (of applicants’ fees) spent on the “paperless” system they have to assign multiple examiners to the application (again, not “team examining,” but if the PTO determines there are 5 inventions in the app, assign 5 examiners to examine it, there’s no more paper file wrapper, every examiner who needs to have access to the file to examine the claims that are classified in his/her art has access, so why is the PTO still following this policy of “one case – one examiner”?).

    The fact is PTO (mis)management didn’t consider any of these things in an effort to reduce the backlog. They simply went off the rails.

    And I don’t have a sense of entitlement. I’m obligated to follow the law in order to keep my license to practice and maintain my livelihood. Examiners are not required to follow the law. And many of them don’t. And many of them know they’re not following the law, but don’t care, because following the law would get in the way of what they think their job is, i.e. to “get counts.” So is there a sense of frustration there for me? Yeah, you bet.

    If you find any lack of civility in my posts, as I’ve stated, like maybe a billion times, all of my responses to the PTO comply with Rule 3. Believe me, I’ve treated many of the RCE grubbers over there with far more civility than they deserve.

  54. “Asking around the office, people seemed unanimously worried/against the continuation rules (no more RCE gravy train), but all for the 5/25 rules (less examination pressure). My particular art unit didn’t really care either way, because our applications are generally between 15~35 claims with few con/RCEs already.”

    When I examined software stuff, applications routinely had between 15-35 claims, but normally there was a single inventive concept that had to be rejected over several claim forms (method, software product, client, server, apparatus claims etc.). Maybe some kind of representative claim system as originally proposed would have mostly worked, but under the new rules, it is the inability to split claims into separate, concurrently filed applications containing non distinct claims that really makes 5/25 a killer. The PTO rules actually encourage filing such applications in series.

  55. “Why don’t we skip the advisory action and RCE, and just get another action on the merits. That’s two or three filings we can avoid and speed up proseuction. We need more conversation/input from the examiners, and less administrative bs. That’s how you reduce the backlog, by moving cases along instead of dragging them out unnecessarily.”

    The problem is that a system that works this way fixes the examiner abuse you describe, but is in turn too easily abused by applicants and their representatives. Prosecution does need to be cut off prosecution at some point, and the spirit at least of the after final practice as described in the MPEP is pretty fair. In most cases where the applicant and the examiner are playing fair, the examiner wouldn’t (in keeping with the guidance in the PTO to issue finals after the issues are crystlized) issue a final with references that haven’t been seen before in response to the client amendment.

    Unfortunately, neither side routinely plays fair. Examiner’s should know upon receiving a fair amendment and easily anticipated amendment whether the amendment places the application in condition for allowance and shouldn’t check needs further consideration/search quite so often, particularly when the case is allowed after RCE. Applicants shouldn’t advance obviously losing arguments at non-final and then bemoan not being able to get their amendments in after a final rejection.

  56. To clear up a few things:
    - Non-finals are the only kinds of actions that are not reviewed and/or assessed for errors. Both allowances and finals can (and do) draw errors.
    - Jr. examiners do not have ‘negotiation authority’ in any meaningful sense. All they can do is talk to you and then try to convince whoever is signing their cases to see it their way.
    - Allowance rates vary greatly by technology center and art unit. Some art units push below 20 (I know of someone who claims to have not allowed any cases in 5 years), whereas others (e.g., mine) allow 60%+. Different managers have different ways of managing errors.
    - Office rejection pressure is cyclical. If examiners do poor jobs, errors rates increase, and word comes from above that Something Needs to Be Done (i.e., cut allowances). If examiners do good jobs, error rates stay low, and managers can cut their guys more slack.
    - Asking around the office, people seemed unanimously worried/against the continuation rules (no more RCE gravy train), but all for the 5/25 rules (less examination pressure). My particular art unit didn’t really care either way, because our applications are generally between 15~35 claims with few con/RCEs already.
    - It’s hard for examiners to view attorney complaints with any sympathy. You see lots of BS office actions, we see lots of BS applications. Throwing stones, glass houses, and all that. There are people on both sides just trying to do a good job regardless.

  57. “You are right on the money concerning interviews. I just conducted one by phone (since I am on the west coast) a couple of weeks ago. At the beginning he said he had negotiation authority. During the conversation, he acknowledged the point I was trying to make, and said he could see the merits of my position, but wanted to “run it past his primary”. He called back 5 min. later and told me his previous position stood.”

    I’ve experienced this sort of thing too. It’s maddening to go through all the motions, bring in an inventor from out of town, do the preparation, present your case to the examiner, have him or her nod their head “yes, yes” the whole time, then ignore your response posing the same arguments. It’s a good thing for them they can’t be held to the inequitable conduct standards. Talk about liars and obfuscators.

    And it seems that prosecution has become a moving target. We never seem to get to a final position suitable for appeal. If we pose arguments and data which makes the Examiner rethink the rejection, instead of allowing the case or refusing it on that issue, he changes the rejection. How can we avoid RCEs under these circumstances? The PTO isn’t playing fair anymore.

  58. Ron Katznelson:

    [quote] “(1) It ignores the EPO Unity of Invention requirement, which precludes claims of similar subject matter from being presented in another division under the same priority application. Thus, the purposes of many US continuations cannot be practically pursued.”

    The EPO unity of invention requirement acts only within a single application. There’s nothing to prevent you filing a divisonal for subject matter that’s not unified with the parent. That’s what divisionals are for.

    It’s true that one rogue Technical Board of Appeal did try to restrict multiple cascading divisionals, saying that the second and subsequent divisionals must all lie within the scope of the claims of the first divisional. But that wasn’t mainstream thinking in other Boards, and it has now been overruled by the Enlarged Board of Appeal (Decision G1/06).

    [quote] “(2) It ignores the fact that EPO rules permit only one independent claim per category. [...] In contrast, current USPTO rules do not (yet) limit the number of independent method claims or independent apparatus claims that may be filed in an application. The patent law in the U.S. recognizes that there may be several independent ways of claiming an invention.”

    True. However, often the reason for wanting to claim the invention several ways is because of the US requirement that claims recite structure, and because of the way that US courts construe claims.

    For example, US courts give a narrow construction to means-plus-function clauses, in light of section 112 6th para. So instead, US patents will often adopt a scattergun approach, with 3 or 4 independent claims which claim different ways of achieving the function. Hopefully one of them will stick when you get into court. That’s not so necessary in Europe: “means for detecting a signal” covers *all* means for detecting a signal. So you can often get the effect you want in a single, functionally-drafted independent claim. (Though not always, in which case you may need a divisional.)

    US applicants can get into difficulties when they just take a US application, which has multiple independent claims drafted for US practice, and just try to file it without amendment in Europe. Better to redraft the claims with European claim construction principles in mind. (The same is true in reverse: European applicants can hit problems in USA when they present claims drafted with European practice in mind.)

    [quote] “(3) There is no CIP concept under the EPC. Maybe MaxDrei can explain to us all how a patentee, who makes an improvement in his invention and wishes to disclose and patent it after his initial priority application, can do so at the EPO without having his prior application being considered as prior art against him. Often, the improvement may not be considered a sufficient “inventive step” over that which was disclosed in the original application. No such brutal application of one’s own disclosure is applied (yet) under US patent law.”

    Perhaps someone can clarify US law for me. My understanding would be that a claim for the improvement would only get the date of the CIP that disclosed it, not the date of the parent. Prior publication of the parent invention then counts as prior art against the improvement claims in the CIP, doesn’t it? Isn’t the position then broadly the same as in Europe?

    One thing that might save the CIP claims would be the US grace period, if the parent invention was published less than 12 months before the CIP filing date. But that would also apply if you filed a separate application for the improvement, rather than a CIP.

  59. Ha Ha — you know I thought about the Bronze Medal after I wrote that post, and I do remember it.

    You are right on the money concerning interviews. I just conducted one by phone (since I am on the west coast) a couple of weeks ago. At the beginning he said he had negotiation authority. During the conversation, he acknowledged the point I was trying to make, and said he could see the merits of my position, but wanted to “run it past his primary”. He called back 5 min. later and told me his previous position stood.

    I think I posted on this on one of these threads, maybe yesterday, but I did a little research on the application backlog. According to PTO statistics, on their site, the number of apps. were about 120,000 in 1986, and I recall that we had about 1200 examiners at that time (we ramped up from about 900 to about 1600 examiners while I was there, between 1982 and 1990), so maybe about 100 apps. per examiner. In 2006, there were about 415,000 apps, and according to the PTO brief in the GSK case, there are now about 5400 examiners. So about 75 apps per examiner.

    The problem seems to be the low allowance rate and inexperienced examiners (because of turnover), which is causing the reduced efficiency per examiner. Good management would go a long way to addressing these issues, and it wouldn’t seem that the examining corps would need to get that much bigger, except for the fact of the 700,000 application backlog.

  60. Ron Katznelson, you point out that the European patent system is full of stuff that disadvantages inventors. It’s also full of stuff that disadvantages the public. That’s the whole point. There has to be a BALANCE between these interests. Keep on with your negative views of the EPO, do, because my pleasure in explaining to US clients how to get the best out of it will then only increase, and their pleasure too, in getting more than they expected. But I’ll not do any of that on this blog because here I don’t do legal advice. You and JAOI are agreed that the best patent system in the world is in USA, with a balance more in favour of the inventor. That’s fine. You may well be right (even though the US courts at the moment seem to be intent, in the public interest, on pulling the balance away from the inventor). As you say, MaxDrei can’t prove that Europe has the cleaner balance. If the USA decides to carry on with its present system in perpetuity, that’s fine with me. Applicants can easily cope with a world of just two patent systems;that of the USA and that of the ROW.

    And JAOI, you warn readers to suspect everything MaxDrei contributes. Well said. Quite right. Be suspicious. Be yet more. You owe it to yourself to be deeply sceptical. Just be equally suspicious about what many other posters are writing. I’m not the only one round here with an agenda to pursue. But if we all take the trouble to think deeply, with an open mind, that way improvements emerge.

  61. CAPat, that medal is the only thing I “won” there except money. It is the only recognition they give examiners, and now it is handed out simply for producing big numbers. ha ha

    About negotiation, I agree completely with you. I used to enjoy going to the Office for them. However, I have found interviews becoming increasingly unproductive. It seems everyone has interview “negotiating authority” no matter how junior they are. As a result, no one will commit to any allowable subject matter. Sometimes they seem to indicate yes, but the next action makes the interview seem like a mirage.

    John G.

  62. Like johng, I too am an ex primary examiner, with 8 years of service in the PTO back in the ’80′s. I don’t think I won a bronze medal, since I don’t even remember what a bronze medal is or how you can win one. Oh well.

    20-30% allowance rate seems pitifully low. I remember our rate used to be about 65% (Group 340, now 3700, I believe), and it was one of the lower rates in the PTO. Someone posted earlier today that the PTO has become enamored with equating rejections with quality and allowances with error, and I think that is true. Quality Control doesn’t evaluate and return “bad rejections” to the examiner, only “bad allowances”. I read somewhere earlier this year that the overall PTO allowance rate is now down to about 50%, which is a record low. I’ve certainly noticed how much harder it is to get a notice of allowance in the past couple of years, and I don’t believe I have changed anything in my prosecution/claiming style or that my clients have gotten less inventive recently.

    I’m sure that this drive to avoid issuing patents is a large part of the problem resulting in the increasing backlog. As SomeDude indicates above, examiners are “spinning their wheels” re-examining old application multiple times, rather than examining new ones. Personally, I see much less effort on the part of examiners to try to negotiate with practitioners to agree to allowable subject matter. When I was in the office, I would go out of my way to allow certain dependent claims, to try to help the attorney see where I was drawing the line. If there were no pending allowable claims, but I saw allowable subject matter in the disclosure, I would find a way to suggest to the attorney that they incorporate it into one or more claims and I would allow those claims.

    SomeDude, I appreciate what you are saying, and understand your frustration, but given the balanced disposal count system you are under I wouldn’t stand for having to issue multiple non-final rejections for free without at least trying to engage the practitioner regarding your view as to what is allowable in the disclosure. Try it, you might be surprised how reasonable we can be. Most of us will certainly appreciate the effort, at any rate.

  63. Some Dude, I believe, I believe. I saw some of the dumbest things in my life while at the PTO.

    I posted many examples of improvements that would overcome the backlog problems, as well as promote real quality. These basically were the same things I discussed with Jon Dudas and Lois Boland a couple or so years ago.

    Dudas and Boland said they already were currently “discussing” one of my central proposals (although they never used it). Another one I stressed was a very strong classification system while criticizing the U.S. Department of Commerce Office of Inspector General report of September 2004, which basically stated technolocgical advances in searching resulting in you guys having too much time on your hands. The IG report was based on opinions made by people who never searched an applciation in their lives.

    The ideas I spout are not rocket science, and certainly not novel. They simply are practical approaches that isolate problems and provide conceptually simple solutions. I even had a new way to review performance that required little or no oversight. In short, it forced examiner accountability. As a bonus, I attached an automated “smart” examiner docketing system proposal I had put together.I did all this on my own time because I truly care about a good patent office, like most everyone else out here. Both you and I currently rely on the Office for our income.

    I walked the walk on this one.

    John G.

  64. johng,
    Part of what has made me rather reluctant to enter the legal profession is the lack of civility and sense of entitlement on the part of some, though not most of the posters on these blogs. I’ll probably find some other business if I ever leave the PTO. Sheesh! Guys like you and johndarling seem to have an all-speeds ahead, darn the torpedoes mentality. If something isn’t done about quality-attrition-backlog (all inseparable problems), the general patent situation will deteriorate to the point of being untenable, to the point that Congress will be absolutely forced to pass some legislation one way or the other. In my area people file with a mentality of ‘buy a million lottery tickets and you are bound to win something.” You wouldn’t believe the things I see.

  65. “We have a low allowance rate (20-30%), and a correspondingly low error rate on allowances. My area used to have a bad reputation for allowance errors, sometimes 5% or more per quarter, but that is in the past by several years. When our allowance rate went down, our error rate went down by a corresponding amount. I believe many of the borderline cases are not being allowed, and only the clearly allowable cases are. Second pair of eyes making examiners withdraw previously allowed claims is very seldom in my area recently. Our SPE is very pleased with our art unit. My experience doesn’t seem to reflect yours as far as nonfinals and second pair of eyes. We may be in differnt areas.”

    These comments made me so upset it is difficult to respond! Tell your SPE from me to stick his 20-30% allowance rate up his you know what! “Borderline!!!” Could you be any more subjective?

    You have obviously bought into the “no allowances = quality” BS! the current knuckleheads in charge are using to measure “quality.” This is BS BS BS!

    Yours truly,

    John G.

    Ex-primary examiner, bronze medal recipient

  66. Some Dude,

    I don’t buy your complaints. “Invention shifting???” Ever hear of election by original presentation???? You cannot change the invention in an RCE (unless the examiner permits it!). That is what continuations/divisionals are for.

    “Focused examination” Ha! I used to yearn for that as an examiner because it certainly would have made my job easier. Everyone in the world wishes for an easier time at work and good pay. This is not about you. Your job is to examine. Learn and use tools available to you and things will become more manageable. YOU will learn how YOU can “focus” the invention. I know these things because I worked there many years examining and never worried about anyone reviewing my work, and never, ever, examined more than 50 or so claims (although some applications had many more than 50).

    Try restricting the dependents if these are driving you crazy. Read the MPEP chapter 800. It seems they are not teaching you how to properly examine.

    You are the first examiner I’ve heard here praising these rules. Geezus, enough to write your representative! I’m cringing!

  67. Lets not get personal in criticizing MaxDrei. But criticism on the substance of his comments is definitely warranted. His comment on the superior value of the EU patent system with patentees’ ability to file unlimited divisions conveniently ignores very important facts. These go well beyond Kevin Noonan’s point on the extreme relative costs of obtaining and maintaining European patents (and to those who need a reference to an EPO study showing that the cost factor per claim is between 5 – 10 compared to US patents, I’ll be happy to supply it):

    (1) It ignores the EPO Unity of Invention requirement, which precludes claims of similar subject matter from being presented in another division under the same priority application. Thus, the purposes of many US continuations cannot be practically pursued.

    (2) It ignores the fact that EPO rules permit only one independent claim per category. See EPC Rule 29(2), (defining the principle of “one independent claim per category” with only a few admissible exceptions, in which an applicant bears the burden of convincingly demonstrating that any additional independent claims come under one of the exceptions given in the Rule). In contrast, current USPTO rules do not (yet) limit the number of independent method claims or independent apparatus claims that may be filed in an application. The patent law in the U.S. recognizes that there may be several independent ways of claiming an invention.

    (3) There is no CIP concept under the EPC. Maybe MaxDrei can explain to us all how a patentee, who makes an improvement in his invention and wishes to disclose and patent it after his initial priority application, can do so at the EPO without having his prior application being considered as prior art against him. Often, the improvement may not be considered a sufficient “inventive step” over that which was disclosed in the original application. No such brutal application of one’s own disclosure is applied (yet) under US patent law.

    The result is that claim portfolios for the same invention disclosures can differ widely within an international family of patent counterparts. In higher likelihood, U.S. patents contain claims that more closely match actual products and innovations in the market and are therefore more effective in protecting patent holders.

    The American patent system has evolved under a legal and economic system that affords protection of private property rights in an economic ‘experiment’ lasting more than two centuries. This ‘experiment’ has operated in unprecedented scale without major interruptions due to conflicts, wars or other instabilities, that might have interjected other transitory societal values such as group interests over individual interests. For the longest time, US patents protected the most number of intellectual property owners in the world. Other nations should learn from this experiment. The US patent system is the best in the world for protecting inventors (that is, if we don’t wreck it). No one, including MaxDrei, can prove otherwise.

    Ron Katznelson

  68. Curious,
    I help train new people in my area. I also get amendments from other examiners who are gone. Most of the finals I see are legitimate. Multiple nonfinals in a row are not common in my area. We have a low allowance rate (20-30%), and a correspondingly low error rate on allowances. My area used to have a bad reputation for allowance errors, sometimes 5% or more per quarter, but that is in the past by several years. When our allowance rate went down, our error rate went down by a corresponding amount. I believe many of the borderline cases are not being allowed, and only the clearly allowable cases are. Second pair of eyes making examiners withdraw previously allowed claims is very seldom in my area recently. Our SPE is very pleased with our art unit. My experience doesn’t seem to reflect yours as far as nonfinals and second pair of eyes. We may be in differnt areas.

  69. My thoughts:

    – as long as the applicant pays for the extra claims he is entitled to have them examined; there are many business, technical and legal reasons why many claims are filed in some cases

    – some applications will have very few claims and some will have a lot of claims; my guess is that it averages out for each examiner

    – you said that the best people seem to be those with experience before they come to the PTO; maybe more attention should be made to recruiting experienced people

    – I just received the sixth or seventh OA in one of my cases and no RCE/cont have been filed; the examiner in each OA keeps citing new art, which is very frustrating

    – In another case, I have reached agreement a number of times with the examiner (a primary) in telephone and personal interviews, only to have the oral or written allowances withdrawn, because the second pair of eyes disagreed with the examiner; and I can’t talk with the second pair of eyes, which is very frustrating

    Just some thoughts

  70. One of the big problems is that so many people in my area just use the PTO as a way point while waiting for graduate or law school admission. Also, many of them take government contracting jobs, so they may just be cooling their heels at the PTO waiting for a security clearance to come through. Many of them just don’t like the nature of the job. The best people seem to be those with experience before they come to the PTO. I think the PTO should be more selective, though that would narrow down the pool of applicants. Paying more money would help, but would only be a partial solution. What I really think we need is a limited number of claims for a focused examination. As many dependent claims as the applicant pays for could be rejoined on allowance of the the independent or representative claims and cleaned up for 101, 112, and informalities. Personally, I would be willing to give the applicants several RCEs and continuations for the purposes of narrowing down the claims and overcoming the art, and developing all the issues to allow the case or decide to maintain rejections for an appeal. Having 50 or 100 claims (unlimited) with unlimited RCEs, conts., and CIPs does nothing for a focused examination. The invention keeps shifting and the examiner keeps applying new prior art as long as any prior art can be used to reject the claims. Keeping the examination focused on a fixed number of claims until something is put in independent form not obvious in light of the prior art would go a long way to reduce attrition. At least, I would be surprised if it didn’t. Searching for more references and thinking of more 103 motivations in the case of dozens (say 40 or more) or even hundreds (happens regularly) of claims is just more work and doesn’t really advance prosecution or develop any issue. What the problem of attrition REALLY boils down to, as I see it, is that very tough production requirements that are measured in counts (instead of numbers of claims, which really determines the amount of work required) are coupled with the unbounded examination process that has unlimited numbers of claims and continuations or RCEs. unreasonable production + unbounded process = insane attrition. The rules package as I saw it was an attempt to address this, but the court does not appear to believe the PTO had sufficient rule-making authority. PTO management doesn’t want to change the production rating system because they don’t want to fight with POPA every step of the way. POPA is afraid of any changes because they are afraid examiners will get the short end of the stick. The patent bar doesn’t want any changes because the unlimited claims, continuations, etc. result in the maximum benefit for their clients (nothing necessarily wrong with that, they are just zealously advocating their clients’ interests within the law). It looks to me like a Mexican standoff. I really do think Congress needs to pass some legislation at this point. PTO management, POPA, the patent bar, AIPLA, etc. probably need to testify before Congress so everybody can put their heads together so something reasonable for all parties can be worked out.

  71. Dear Some Dude:

    Why is the turnover rate so high?

    If you were in charge, how would you reduce the turnover rate?

  72. I am going to write my Representative and Senators to get the rules passed into law. Something HAS to be done. In my art unit we have about 50 junior examiners and maybe five primaries. Most of the newbies are gone within two years. The office cannot hire its way out of the backlog–I don’t care what anyone says. Most of my counts come from RCEs. The applicants come in with ridiculously broad claims that are in no way allowable. We go back and forth for usually two or three, rarely four, RCEs, until the cases is abandoned or the claims are allowed. I did maybe ten to fifteen new cases all year FY 2007. RCEs are not always easy counts, especially if the claims have been substantially rewritten. I then have to search a whole new direction. If the system collapses, it won’t hurt me, because I am qualified to do many things and could get another job if I had to. I feel sorry for the inventors, though.

  73. I completely agree with Simple fix – “If it weren’t for GSK, I dare say we’d all be sunk today and that day may come just a little later. Why? Because GSK spent the MONEY to fight it hard and professionally. Most of us just sat around and whined about it.” Exactly right. The grumblings happened all over, but everyone seemed to roll over and accept what I view as a completely unnecessary expense of time, money and resoources, both on the attorney side and the PTO side. How many OAs will be generated due to incomplete or improper ESDs alone? In cases where the prior art for a particular patent is somewhat extensive (especially in the tech sector), I feel sick trying to fathom the time it would take to reference and cross-reference every piece of prior art related to every claim in a specification, point by point. The 22 hour completion time estimate in the footer of the new form sb/216 could well be a gross underestimation… Not to mention the affect it would have on small entities and universities… 22 hours times $300 an hour attorney fees = nearly $7000 in additional expenses, and is typically well beyond the capabilities of an individual inventor, or even a paralegal. Does a 2.7% decrease in backlog warrant this kind of change? Or will the decrease come from filings being sent elsewhere as ISA to be relied upon in the US? hmm.

  74. In response to Mark Pitchford’s comment (Nov 01, 2007 at 12:25 PM) — in particular, the “why” queries:

    “7. Get new first action with NEW 103, or ALLOWANCE. (why not just read it before the advisory and RCE and allow it then? saves 3 or more months and clears the docket/backlog)”

    and

    “Why don’t we skip the advisory action and RCE, and just get another action on the merits. That’s two or three filings we can avoid and speed up proseuction. We need more conversation/input from the examiners, and less administrative bs. That’s how you reduce the backlog, by moving cases along instead of dragging them out unnecessarily.”

    Here’s the sad but true answer:
    Examiners are NOT rated on reducing the backlog but their PRODUCTION — & with that RCE filing, they get another production unit count — plus, at worst, a relatively easy 1st action on the merits (yes, another count) or, at best, a 1st action allowance (even better, another 2 counts).

  75. Max,

    Malcolm at times is very funny, yes, and at times he is outspoken, yes, but he doesn’t makes me sick, and he even has some interesting intellectual things to say sometimes.

    I think you are an anti-American propagandist and anything you say, whether interesting or not, is suspect.

  76. Thanks JAOI for printing my contribution again in full. Why should I deny it? It’s fine with me. On this blog I don’t give any legal “advice”. Why is it “revealing” that I don’t post so much to European blogs. I already told you they aren’t much fun. There’s nobody there like Malcolm Mooney here, to make me laugh out loud. Why don’t you look, and see for yourself. You told us you have stuff pending at the EPO, so you’ve got an incentive to tune in.

  77. Dear CAPat,

    I agree with your most insightful comment. However, I prefer not to ignore the “pro or anti American” propaganda stuff.

    It doesn’t sit well with me for a foreign poster like Max to jest and have fun at our expense while advancing his anti-American agenda in oh so many subtle ways when we have so much serious business to tend to.

    Who does Max think we are to sit back and not comment when he says in a comment or two above:

    “No I don’t post to European patent blogs. None are as much fun for me as this one.” (verbatim)

  78. Lonemule, I didn’t think you were being sarcastic. I was asking you a serious question that I wish the USPTO managers would ponder for a moment before cutting off the “small guys” to please the corporate behemoths.

    If we cut off the small guys today, we’ll have no more new Googles and HPs to usher in our tomorrows. Wouldn’t that make for a boring America?

  79. “US US US US US US UK US US US US”

    And why is that, do you think, Lonemule? (Hint: it’s not just our patent system, but our patent system does reflect a unique aspect of our country…. So don’t be too quick to trash this valuable aspect of America, the land of opportunity, USPTO managers.)

  80. Max,

    Re: “No I don’t post to European patent blogs.”
    Surely, that is quite revealing, isn’t it?
    Have you been banned?

    Be that as it may, do you now deny?, that on this link,
    link to patentlyo.com
    you posted this comment, verbatim and complete (emphasis added)?:

    “MaxDrei again. JAOI(TM) has it that I have asserted in these pages that I am competent to advise on US patent law. Never have, in all my long years of practice. Hardly likely to start now, as I get older and more circumspect, and US law gets ever more complex. I admit it freely. I AM NOT COMPETENT TO ADVISE CLIENTS ON MATTERS OF US LAW, NEVER HAVE BEEN AND NEVER WILL BE.

    “As to my Paris Convention question, I live in hope of reading on these pages some persuasive explanation how to reconcile Boston Sci v Medtronic with the obligations which the USA accepted when it signed up to the Paris Convention, and the mutual undertakings to grant priority which it contains.

    “Posted by: MaxDrei | Aug 12, 2007 at 04:13 AM”

  81. Look, we don’t need to get either pro or anti American on here, that’s not the point. The point I WAS making earlier is that the U.S. patent system has developed over the years to benefit and promote the needs of American inventors, who historically have been an individualistic innovative, entrepreneurial lot. We need a system that allows easy access to small entities, at a reasonable cost, because most of our real innovation comes from small inventors, and the big boys later come in and adopt it. We want to ensure that they are not able to adopt it without paying for it.

    On the other hand, Europe and other countries tend to favor the big institutions and a more “group oriented” approach, and their patent systems definitely tend in that direction. To prosecute a European patent application is to lay out somewhere around $1,000 every year just to be there, for annuities, after you have already paid filing and examination fees which are substantially higher than in the U.S. for a small entity. You are also tied much more tightly to your specification language when amending claims, so the claiming process is not nearly so nimble, at least in my experience. I don’t want that system for the U.S. and I’m tired of the globalists insisting that everything Europe does is better than the way the U.S. does things. Let’s fix what’s wrong with our examination process, not blow it up.

  82. Man real, we have done well in our short history. That list seems to say US US US US US US uk US US US US

    USA USA USA

  83. Yes JAOI, actually I would like you please to post links to my exact words, right next to each of your mischaracterizations of them. No I don’t post to European patent blogs. None are as much fun for me as this one. And real anonymous, what has a list of the world’s greatest inventions, compiled in Chicago, got to do with your musings about a probable need for (I quote) a “registration system in the U.S. for the serious patentees”? A “registration system” as far as I know is a system in which patents issue without pre-issue on-the-merits examination. Thus, “registration only” means “registration without pre-issue examination on the merits”. So, come on, what is it that “you never implied” that I “indicated”?

  84. Max,

    Bizarre my foot. Would you like me to post links to your exact words? I thought I’d spare you that embarrassment this time. I believe readers are entitled to consider, or not, the motive behind your comments, if they so choose. After all, this is America.

    Do you do any posting in Europe? (if so please provide a link), or have you nothing to say over there?

  85. So now we have somebody advocating for the world’s leading patent jurisdiction 7 year deferred examn, and even a registration only system. You cannot be serious. ROW has been there already, and done that, long ago, but these days is rowing away from it, as fast as it can. And will those registration only monopolies have JAOI’s precious presumption of validity? Presumably not. JAOI, it’s my sincere belief that readers aren’t interested in your bizarre beliefs about my motives. They have more pressing things on their minds. Contribute something more relevant and interesting to readers, can’t you?

  86. “End the fee diversion process and put the 2 billion or more dollars taken from patent office revenues back into the system.”

    Simple fix, giving more money to the current USPTO is just like giving more money to the current Washington D.C. – it would just be wasted. (If you think otherwise, you have not familiarized yourself with the history of USPTO spending initiatives that led to nowhere.)

    MaxDrei, delayed examination modeled after the Japanese system would (in my mind) be just what the doctor ordered… (i.e. you have 7 years from your filing date to request examination, and if you don’t request it there’s no automatic examination). Perhaps 1/3 or 1/4 of applications would never have examination requested, and the “backlog” would accordingly be (effectively) reduced by that number each year.

    In the end, though, unless the USPTO can get its own house in order, we’ll probably need some sort of registration system in the U.S. for the serious patentees who want to bypass the USPTO delays and shenanigans and (for that benefit) are willing to do the examination work etc. themselves.

  87. 15yearveteran makes some valid points. I don’t buy that the new rules package are all just about the backlog. Note how the original rule proposal required divisionals to be filed in parallel. This would INCREASE the backlog immensely!! Obviously the drafters of the rules were addressing the notice doctrine. After all the comments rolled in explaining how the parallel divisionals would be mega-expensive and would increase the backlog, the USPTO must have realized that they couldn’t justify this provision in the final rules and relented and changed the rules to allow serial divisionals.

    Note how the only four law firms that submitted comments in favor of the rules had Intel as their client. BIGCORPS want to weaken our patent system at all costs to avoid getting sued by patent trolls. When the CAFC decided Festo, which was bad news to most of the patent world, the BIGCORPS (including Intel) filed amicus briefs with the Supreme Court in favor of doing away with the doctrine of equivalents. Now they favor cutting off continuations.

    I do believe Dudas was working for other interests by supporting these rules, while I think Doll did indeed think they would cure the backlog.

    In any case, it is nice to see that the people fought back an oppressive government action and won! I think the USPTO will now think twice about taking any over the top actions.

  88. Max:

    Did you need to be reminded of your level of competence?
    ON HIS COMPETENCE, MaxDrei posted this on: Aug. 12, 2007 at 04:13AM
    “…I admit it freely. I am not competent to advise clients on matters of US law, never have been and never will be.”

    In your other comments, you have advocated all of the following:
    (i) the demise of the independent inventor;
    (ii) sending independent inventors with limited means to prison (but not those more wealthy);
    (iii) fabricating evidence at trial in order to cheat an 82 year old lady with extensive 3rd degree burns out of her medical expenses.
    ——————-

    To whom it may concern:

    On top of various complaints about Max, I believe Max is intellectually corrupt. He figures devious ways to advance any argument that would:

    (i) Reducing the ability to enjoin an infringer of a valid patent;
    (ii) Increasing the number of ways to invalidate a patent;
    (iii) Limiting the damages award so that it pays an infringer to refuse to license;
    (iv) Limiting the scope of, and possible ways an inventor can patent his invention;
    (v) Vilifying self-employed American inventors; etc., etc..

    Far more often than not, I am constrained to strongly disagree with Max’s (most-often subtle and devious) anti-American agenda and anti-American patent system views. Max never tires of foisting his foreign propaganda on American blogs.

  89. Very dramatic, 15 year veteran. And here’s little old veteran but niaive me thinking that the fuss is all about something much much simpler, namely, 1)about a million unexamined apps, and 2)a million more set to arrive in the next two years, and 3) a feeling in the USPTO that the waters are rising above their heads and that 4) unless something is done the waters are just going to get higher and higher. Or do you think the number of new filings will somehow decline. Look how the Korean corporations rose up the ranks. You ain’t seen nothing yet. The Chinese are coming soon.

  90. October 31 will be the day that patent attorneys were put on notice that the anti-patent forces got organized, spent money and almost defeated them. Dudas didn’t come up with these rules in a vacuum. He figured out which way the winds were blowing in Washington and opened his sail.

    The winds in Washington are made of MONEY. Lots of it. Not votes, not letters, not amicus briefs. Microsoft and other companies are sick and tired of paying the patent trolls off, they are spending millions of dollars to fend them off and so they finally started throwing MONEY around in Washington to enact meaningful change because it would be cheaper than continuing to pay the trolls. Like a lot of these things, they got very greedy and went too far and they got tripped up on that THIS time, but they’ll be back.

    Next time, they’ll be back with a democratic congress who needs their MONEY, and lots of it. And is willing to listen to what they have to say. If we don’t get organized and have a message of our own, the MONEY is going to drown out any issues of fairness, helpfulness to small inventors, etc.

    My experience with patent attorneys is that we are a very independent crowd. We like this work because deep down, we’re loners. We like working long hours by ourselves. But that is exactly what the anti-patent group who are getting organized and are spending the MONEY realize is an easy crowd to fight. If it weren’t for GSK, I dare say we’d all be sunk today and that day may come just a little later. Why? Because GSK spent the MONEY to fight it hard and professionally. Most of us just sat around and whined about it.

    If someone tried to do something like this to the trial attorneys, a few phone calls would have been made and the rules would have been rescinded. That’s because they have a very effective lobby that understands that it’s MONEY in Washington that’s important.

    If we don’t wise up and put together a patent attorney’s lobbying group, I’m afraid we can kiss this profession good bye. And that’s going to take MONEY that patent law firms aren’t used to spending.

    Wake up, this was the first shot across the bow. Our enemies are organized and well funded and they are spreading that money around for the first time. They aren’t going to back down. They’ll use their MONEY to push section 120 off the books. And then they’ll be back. If we don’t do something to counter this force, we’ll be too late.

  91. End the fee diversion process and put the 2 billion or more dollars taken from patent office revenues back into the system. Go after the congressmen who took the money in the first place. Imagine how the system would be today if the funds were spent on office infrastructure.

  92. The past is not much of a guide to the future. Until quite recently the EPO was snowed under with PCT Ch II examn for Americans who wanted the EPO, not the USPTO, as their IPEA. Recently the EPO stopped all that nonsense, and switched to examining their own pending apps, not PCT’s for the USPTO. Now the EPO issues its EESR’s just a few months after filing. They are promptly read on epoline by USPTO Exrs drafting first OA’S. If you are going to quote statistics, then quote current ones. Properly helped, using PACE and the telephone, clients currently get through to EPO issue quite soon after A publication. Those that want it, that is. Most don’t because 1) they get protection against infringement from the A publication on 2) longer pendency means longer to track the market and claim accordingly and 3) all those translation costs at issue. BTW, Americans get more badly burned by translation costs than everyone else because of 1) the pages and pages and pages of boilerplate their apps routinely contain and 2) their prediliction for validating just about every 4 mill inhabitant (or even less) country in Europe, while more canny Applicants designate just DE, FR, GB (reasoning that, if those three are covered, there’s no room for the competitor to make so much out of the market in, say, Greece or Denmark to justify the translation costs in those countries). And, Hey, have any of you readers tried enforcing your European patent in some of those southern European countries you are paying for?

  93. Well, one possibility is that most of the examiners are either still celebrating or are hung over from too much celebrating last night – the result being a lost day of work for most. That might be the significant harm they were talking about.

  94. Malcolm:

    1. U.S. GDP is about 40% of world GDP, with 5% of the population. Certainly supports “engine of the world”. I don’t think there’s much doubt that the productivity of U.S. economy is due to U.S. entrepreneurship and inventiveness, and that the U.S. patent system historically has enabled this. I personally have prosecuted the patents for three different start-up medical device companies which developed products ultimately gobbled up by the big medical device companies. It was the patent portfolio which gave value to the start-ups, because the big companies couldn’t just knock-off the little guy’s products — they had to pay to acquire the technology.

    2. It’s important to be able to hit the market quickly with your first patent, and then follow up with continuations. In the EP, there is no way to issue a patent quickly, that I’ve experienced. Unfortunately, recently, that’s been true here as well, but even so the EP seems to be slower.

    3. I don’t even understand your last comment. How does an entrepreneur have the capital to develop product if he is spending it all on patent prosecution and annuity fees? That’s why big companies, and you, apparently, don’t mind high fees. High barriers to entry make things nice and cozy for the big guys already in the market. Economics 101.

  95. “Has anyone seen any proof of the allegedly significant harm to the USPTO’s system now that November 1st has arrived? (“The modifications are programmed to take effect on November 1 and cannot simply be ‘turned off’ or “undone’ if the USPTO is preliminarily enjoined from implementing the Final Rules.” Opposition Memo.)”

    Nope, examiner’s were supposed to see new links for the new rules flow charts today in our toolkits, but they are no where to be found.

  96. Has anyone seen any proof of the allegedly significant harm to the USPTO’s system now that November 1st has arrived? (“The modifications are programmed to take effect on November 1 and cannot simply be ‘turned off’ or “undone’ if the USPTO is preliminarily enjoined from implementing the Final Rules.” Opposition Memo.)

  97. All those concerned, patent practitioners and patent owners, should not only prepare and file your own Amici, but we need to stop the current PTO leadership from spending our money and wasting our and their time in Court. We need to instigate a letter writing campaign to our elected officials to let them know that these types of rules will negatively impact innovation, investment and American competitiveness. Also, we need to provide a strong no-confidence vote for the current PTO leadership. They have forgotten their position in representing inventors who have a right to a patent by statute as a part of the patent bargain for disclosure. Their attitude in pursing these extremely unpopular and severely harmful “procedural rules” (LOL) exemplifies their lack of understanding of the impact of their positions and the basics of the patent bargain in technology development. They can do little now to regain our confidence and respect. We need to do the extraordinary and be politically active in their removal so that we all can mover forward in finding workable solutions to the PTO’s internal procedural problems.

  98. “Our patent system has been the engine for an economy which is amazing and the envy of the world.”

    This is an unsupportably simplistic view of reality.

    “Anyone who prosecutes applications in the EP knows better. It is slow,”

    But we’ve been hearing over and over these past few days how continuations are important to give US applicants more time to decide what to claim. Seems contradictory …

    “inordinately expensive, and extremely prejudicial against entrepreneurial small inventors”

    But I thought we had an “amazing economy” that’s the “envy of the world”? Surely Americans can afford to pay more. Unless the economy is not really so amazing …

  99. George & ES

    The idea of cross-examinations in JPO and USPTO is being tested now, as I understand it, under the “Patent Prosecution Highway” concept. Seems like this has been very low-key.

    link to uspto.gov

    You have to provide translations of filings, all cited PA, and an explanation of how the claims correspond in the two cases.

    If this works, and we can append the EU, we’ll almost have a semi-binding international examination. One examination and you get the whole IP world! (We never file in Chad.)

  100. OK, I too am tired of hearing about how great the EP system is. Anyone who prosecutes applications in the EP knows better. It is slow, inordinately expensive, and extremely prejudicial against entrepreneurial small inventors because of its high cost. And I’m also sick of “patent harmonization” efforts which are always code for “the U.S. needs to get with the program and adopt world standards”. Other countries never move in our direction.
    Our patent system has been the engine for an economy which is amazing and the envy of the world. Because of its historic efficiency and relatively low cost it has been a boon for the small inventor/entrepreneur. This current backlog problem is of recent origin. As recently as 12 years ago the backlog was about 100,000 applications (well under one year of filings). When I was an examiner (1982-90), we had just over 1,000 examiners and examined approx. 150,000 applications per year. Now we have 5,477 examiners and can’t examine 415,000 applications per year. The question is, why did our “per examiner” productivity start dropping so precipitously, beginning in about 1996?
    Obviously, the solution is not to blow up a longstanding successful system, but to address the obviously disfunctional management of the Office. We need to look at unhinging the examining corp from the GS system so that pay can be competitive, and changing dramatically the production metrics. I agree with those who argue that a big mistake was made when re-classification was halted 10 or so years ago (in the belief that computer searching made the classification system obsolete). The prior art needs to be re-classified and updated to streamline examiner searching.
    I don’t have all of the solutions, but it’s pretty obvious where our efforts need to be directed.

  101. I’ve been wondering about Judge Cacheris’ conclusion that the PTO’s action was not “arbitrary and capricious” apparently because they introduced evidence that the rules would decrease the backlog (by 2.7%, or something?). What about the objections raised in the comments? What about the two GAO reports from 2005 and just recently, saying that the count/production system had contributed to the backlog, which the PTO has ignored or “recharacterized”? Maybe this is what deference means–that the agency can take any action it likes so long as some articulated objective is served. But that seems to make a mockery of reviewing agency action, and to turn review of “arbitrary and capricious” into “not contrary to statute.” Surely more is required than the PTO baldly asserting that they “considered” the comments on the rule but decided to ignore them and that that’s okay. Doesn’t an agency have any obligation to justify their actions in a way that ties back (even loosely) to independently verifiable facts, so that the non-arbitrariness and non-capriciousness of the actions is actually demonstrated? If not, the whole idea of “arbitrary and capricious” just disappears. I understand that an agency is entitled to some deference, but I don’t think that that should mean “it’s okay if you say so.” Hopefully GSK’s wonderful, brilliant attorneys can come up with some articulation better than this one for the SJ hearings–if the PTO does lose, I’d hate for them to take away from all of this that any rule is okay as long as it doesn’t directly contradict the statute. But maybe that’s where we’ll be going soon with the IDS and Markush rules. (shudder)

  102. I used to favor the idea of the PTO as a government corporation. But who would want Dukas & Co. to have as little oversight as the postal service?

  103. I recall hearing several times from PTO personnel that the backlog could not be fixed by simply hiring more examiners. That doesn’t make any sense to me, however, I never recall anyone ever arguing with them about it.

    Clearly, hiring a large number of examiners and getting them properly trained would be challenging, but it clearly would address the backlog, and rather quickly.

    Further, if there are 750,000 patent applications in the backlog awaiting examination, then isn’t there 750,000 X $1,000 of filing fees sitting in the PTO coffers? I know in the past the PTO worked on a fixed budget with excess $$ going into the general fund, but didn’t that change recently?

    Lastly, wasn’t there talk at one time about making the PTO a gov’t corporation that would allow the employees to be freed from the civil service pay scale? That would seem to help with retention and likely reduce other costs of red-tape compliance. What would be the advantages or disadvantages of doing this?

  104. One problem that seems to have driven the continuation limits is “submarine” activity. For post-1995 apps, a substantial solution was presented by making the term 20 years from filing (although there are plenty of industries where “submerging” for 10-15 years can still wreak havoc).

    Now that we’re 12 years out from this change, perhaps it is time to no longer grandfather in the pre-Nov 1995 apps, and instead impose a “one more continuation” rule against them under a theory of prosecution laches. At this point, this body of applications only seems to present problems leading to some of the more notorious issues that lobbying groups and the courts have been fighting over lately. Why let these apps keep going on? Why wait for the courts to impose prosecution laches on a case by case basis?

  105. The good news is that Judge Cacherin’s comprehensive, balanced, and well-thought out opinion likely made it very difficult for the PTO to argue he abused his discretion in granting the injunction, so I don’t expect an appeal of the PI order. I think it’s more likely the parties will move full speed ahead on summary judgment briefing. As some of the other posters have pointed out, the PI order is effectively a preview of the court’s analysis of the case on the merits, so it’s likely summary judgment will be granted to SKB/GSK. This, it appears the injunction will remain in force for a considerable time, while the appeal is pending at the Federal Circuit. Yay!

  106. “The continuations worried our chem/bio group, but the RCE’s worried ALL of us. I mean, how can you be said to have had a chance to respond to a rejection when the Examiner cites brand new references in a FINAL Office action? That’s the biggest problem with our system, and the backlog.”

    Word.

  107. Part of the problem with the proposed deference to JP and EU patents is that they often receive their first substantive examination in the US, rather than abroad. This means that the foreign offices generally receive the benefit of prior art searches by US examiners, and probably has a lot to do with the JPO and Canadian IPO successfully functioning with much smaller examiner corps. Now that electronic and computer-related apps are coming on to 5 years to first action, and JP no longer has a 7 year window to defer examination, there may be less of this in the future. Nevertheless, as far as “worksharing” of international apps goes, we’re not doing so well.

    Hal Wegner has tossed out the idea of changing the US examination system to defer US examination of foreign apps until they are examined by their domestic patent office (exceptions allowed for accelerated examination – for a substantial fee). This would eliminate the substantial burden of performing the initial prior art search for roughly 1/2 of apps, and would more fairly place the burdens associated with protecting inventive activities with their countries of origin.

  108. Amen Patent Leather. You’re obviously in the trenches with me.

    The continuations worried our chem/bio group, but the RCE’s worried ALL of us. I mean, how can you be said to have had a chance to respond to a rejection when the Examiner cites brand new references in a FINAL Office action? That’s the biggest problem with our system, and the backlog.

    Example:
    1. Get first action with 102 or 103.
    2. File amendment fixing issues and overcoming cited references.
    3. Get final rejection with NEW 102/103 rejection based on NEW references.
    4. File amendment overcoming references.
    5. Get advisory action saying “I didn’t read your amendment”
    6. File RCE
    7. Get new first action with NEW 103, or ALLOWANCE. (why not just read it before the advisory and RCE and allow it then? saves 3 or more months and clears the docket/backlog)

    Why don’t we skip the advisory action and RCE, and just get another action on the merits. That’s two or three filings we can avoid and speed up proseuction. We need more conversation/input from the examiners, and less administrative bs. That’s how you reduce the backlog, by moving cases along instead of dragging them out unnecessarily.

  109. Babel,
    Now that we are looking at ways to reduce PTO backlog, how about the US giving some kind of deference to Japanese and EU patents filed under Sect 119? It seems that about a third of the patents fit into that category. Why go through a full examination process in the US for a patent already examined/issued in Japan or the EU? It would seem that if the USPTO could move these apps quickly through the system that the entire backlog goes away…. but that would be way to reasonable for the USPTO to consider….

  110. “If the readers of this blog would kindly nominate me for Dudas’ position, I’ll see that this gets done.”

    I withdraw my candidacy and throw my support to BabelBoy’s camp. Deferred examination would certainly help!

  111. “Examiner retention? Bravo. But then you have to let those experienced Exrs exercise their experience and judgement. That’s MUCH easier in civil law continental Europe.”

    Ok, so a 20% across-the-board raise for USPTO examiners and a do-over for the US legal system.

    But how can we provide US examiners with cheap vacations on the Riviera when the USA doesn’t have a Mediterranean sea?

    What’s your point with this EU-rocks-USA-sucks stuff?

  112. The standard of review by the Federal Circuit would be “abuse of discretion” – NOT “de novo.” Now, it is true that for questions of law, the review would be de novo. “An abuse of discretion may be established by showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.” Novo Nordisk v. Genentech

  113. has anyone noticed that since Dennis starting working at Univ of Missouri, even their football team is doing better

  114. If/when this gets to the CAFC, how can Judge Moore possibly not recuse herself?

    Her law review article started all this anti-continuation propaganda.

  115. MaxDrei and Dennis

    Points well taken re: the EU system. My comment was not so much about what the EU system is, but about what the US system could be if we looked at some of the other approaches. Canada would have been a closer analogy to the 5-yr pause prior to examination idea. Or Korea. There are plenty of examples.

    It’s a good idea. It works for everybody. It’s easy to implement. The US is already 1/5 of the way there with the provisional application. Extend it to 5 yrs., publish at 18 months – walla’, problems fixed.

    If the readers of this blog would kindly nominate me for Dudas’ position, I’ll see that this gets done.

  116. “USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.”

    I guess this means I can expect more ridiculous office actions and rejections that rely on art having nothing to do with the claimed invention, more 112 (para 1 and 2) rejections completely out in left field, and more double patenting rejections on completely different inventions.

    Now that we have RCE’s back I don’t mind so much. Thanks, GSK and Dr. Tafas!

  117. Examiner retention? Bravo. But then you have to let those experienced Exrs exercise their experience and judgement. That’s MUCH easier in civil law continental Europe.

    Kevin Yes there are annuities to pay, but you can have as many different categories of claim in your one EPO app as you want. Example: Method steps X-ing, Y-ing and Z-ing is the SAME invention as Means for X-ing + means or Y-ing + means for Z-ing. The pharma boys have maybe 7 or 8 different independent claims in one EPO app. USA can take the EPO model and graft on a Small Entity rule if it wants. USA can forgo the accumulated annuities (but shouldn’t there be some disincentive for late claiming). What USA can’t do is to ditch its English law system in favour of the civil lw system ROW uses (no Binding Precedent). To my mind, you can blame the English law Binding Precedent system for much of the poor efficiency at the USPTO.

  118. “Aspiring to the European model may be appealing, but keep in mind that a divisional application applicant in Europe must pay all earlier-taxed annuities (which have already been paid in the parent case) and additional annuities going forward. * * * This calculus doesn’t take into account the extra fees for nationalizing each granted European divisional in the designated countries. Of course, since the EPO doesn’t recognize “small entities” this practice disproportionately harms individuals, universities and small businesses. So before we clamor for something like the European system, we should consider the downsides.”

    Given that the USPTO appears to not have the money to retain the competent examiners it needs while the EPO does appear to have the money it needs to retain competent examiners, it may be time to consider doing away with the small entity rate and require annuity fee payments along the lines of what is done in the EPO.

    If it takes X dollars of money to hire and retain enough competent examiners to do a quality examination in a reasonable time, then that money needs to be raised, even if it takes eliminating small entity fees, adding annuity fees for divisionals, or doing something else that is reasonable.

  119. Speaking of working out the details, why is it we never hear anything from the PTO’s advisory committee/board?

    Shouldn’t these people be brainstorming to create solutions to the PTO’s woes? Is a position on this board merely ceremonial?

  120. “Zeke, what’s your solution? Shoo the customers out? Surely not. Raise the price? Surely not. Hire more Examiners? Yet more Government employees? Wouldn’t JAOI(TM) and many others see that a dangerous shift towards “socialism”? In the EPO, each app gets examined by a panel of three Exrs, from three of the 32 member countries, in the interests of objectivity and consistency. No wonder the EPO has fewer “counts” per Exr. than the USPTO. But, at least the EPO has got back on top of its workload. Meanwhile, a million apps await examination in the USPTO, and the queue’s growing longer. What’s the answer Zeke?”

    Well, if I blindly follow your reasoning, the answer is obvious: the USPTO should emmulate the EPO.

    But I’m not an automaton and this isn’t some kind of Airbus vs. Boeing feud. The EPO and USPTO operate in very different environments.

    Examiner retention is the answer. This will involve more money. The USTPO has a product that is in high demand. Someone who gets paid for it can work out the details.

  121. I’ve got a practical question, and would like to hear any guesses about the answer. If the PTO ultimately prevails, will continuing applications filed between Nov. 1 and the new effective date of the rules use up the “one more” continuing application? As we all understand now, the surprise Aug. 20 deadline announced on Aug. 21 was an important element of the PTO’s strategy for reducing future continuing application.

  122. Aspiring to the European model may be appealing, but keep in mind that a divisional application applicant in Europe must pay all earlier-taxed annuities (which have already been paid in the parent case) and additional annuities going forward. So for a case where a divisional is filed 7 years after the International filing date (which in view of the relative timing of application and prosecution would put such a case on about equal footing as a typical continuation in the US), annuities for years 3, 4, 5, 6 and 7 would be due plus the annuity for year 8. So any propensity for filing excessive additional divisionals in Europe is counterbalanced by the cost (which is substantial). This calculus doesn’t take into account the extra fees for nationalizing each granted European divisional in the designated countries. Of course, since the EPO doesn’t recognize “small entities” this practice disproportionately harms individuals, universities and small businesses. So before we clamor for something like the European system, we should consider the downsides.

  123. “Your comprehensive coverage of this case is another fine example of the excellent work you do on the Patently-O blog. Thanks again.”

    Agreed a hundred times over – this is definitely the go-to place to learn about PTO and patent-related developments, not just from Dennis, but from the rest of you out there. Although the commentary sometimes deteriorates into silliness (or worse), for the most part I learn as much from the comments as I do from the main posts. My thanks to all of you -

  124. I notice that the USPTO home page says, “USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.”

    I wonder – long before October 31st USPTO procedures effectively put applications with more than 5/25 claims and no first action on the merits “on hold” pending the effective date of the new rules. Does this note mean that these applications will remain “on hold”, so that in order to get the applications examined we still need to comply with the (suspended) 5/25 rules? Or will the examination queues be opened up to all applications until the court has had a final say?

  125. This is not the time for complacency in that the PTO will push the cases to summary judgment sooner rather than later to try and get out from under Judge Cacheris (where there is no where to go but down) and up to the Federal Circuit — if nothing else to buy time while the PTO’s allies try to legislatively enact these rules in Congress. It will be interesting to see what happens over the next week or so.

  126. Your comprehensive coverage of this case is another fine example of the excellent work you do on the Patently-O blog. Thanks again.

  127. THANK YOU, THANK YOU, THANK YOU one and all for your time, efforts and willingness to put a stop to PTO management’s BS.

    Now if we can actually hold them accountable to gettting at the root of the perceived problems which fester in the form of a burgeoning backlog and mass exodus of newly hired examiners; we may be able to fully stablize this system.

    AGAIN THANK YOU!

    ~Signed John Q. Public, The Examining Corps, and the spirit of Thomas Jefferson

  128. Quick correction to BabelBoy. The EPC provides no deferred examination. The EPO publishes the A publication 18 months after the priority date, and the exam fee is due 6 months thereafter. Only a month or two extension available, for a 50% surcharge on the official fee. But you can file a divisional 10 years after the prio date if something is still pending at the EPO, and you can claim in it something disclosed (say) only in the drawings of the parent EPO app. See what Medinol is doing, for example, in the stent patent family it is asserting in Europe. They are on their fourth or fifth generation of divisional in the EPO.

    As JAOI writes, USA is a huge and rich country, so an issued US patent is a very valuable thing. With 32 countries and almost as many languages, Europe is inherently very inefficient. But the EPO isn’t and, with its good example to the politicians in Europe, sense will prevail more widely in Europe, in the long run.

  129. Zeke, what’s your solution? Shoo the customers out? Surely not. Raise the price? Surely not. Hire more Examiners? Yet more Government employees? Wouldn’t JAOI(TM) and many others see that a dangerous shift towards “socialism”? In the EPO, each app gets examined by a panel of three Exrs, from three of the 32 member countries, in the interests of objectivity and consistency. No wonder the EPO has fewer “counts” per Exr. than the USPTO. But, at least the EPO has got back on top of its workload. Meanwhile, a million apps await examination in the USPTO, and the queue’s growing longer. What’s the answer Zeke?

  130. MaxDrei is right about the EU system as a good model. The US system would work much better for both the inventors and the PTO if the system allowed one to simply file with no examination until the applicant demanded examination — within, say, 5 years of filing. Within those 5 years applicant can do about anything he wants, except add new matter — amend, divide, withdraw. Publication occurs at 18 months so the public has notice of what the subject matter is.

    In fact, my dream system would be one in which the initial filing has no claims at all. Claims are filed at the time examination is demanded. That’s the way to avoid needless iterations of tweak-amend-tweak-amend.

  131. Some past posting on Patently-O are so good they bear re-posting more than once as similar subject matter arises again and again. Here is an excellent, un-edited extremely judicious and well written comment, one of the best ever, posted on Jun 26, 2007 at 07:33 AM on this thread-link:
    link to patentlyo.com
    —————————-
    “Max has been getting chewed up a bit on this thread, but asking him to f@$$ off isn’t really very productive. The bottom line is that the majority of european law is based on a far more socialist leaning basis than we’ve adopted in the US – this isn’t necessarily wrong across the board, its merely different in the manner in which individual contribution to the common good is measured.

    “In the area of patent law, especially patent enforcement, Europe is damn near the least cost effective playground in the world with the exception of Japan. Aside from foodstuffs, can anyone name a european nation which consumes more product than the states of California & New Jersey? (no, germany doesn’t) Now compare the cost of prosecution, maintenance, and enforcement of IP for the percentage of CA/NJ against US National costs vs Germany taking into account the differences in enforceable claim scope.

    “The bottom line is Europe doesn’t enjoy the benefit of independent inventors contribution to innovation to the extent we do in the US because they don’t compensate for it. We do, because we compensate for it. Being an independent inventor is, financially, among the highest risk professions. In the absence of compensation to account for risk, it’s a non-starter.

    “Let’s face it, American culture embraces those who take risk and succeed in being correct despite the spewings of “experts”. European culture, broadly speaking, doesn’t.

    “Harmonization? F@$$ ‘em! Learn from the results of Max’s beliefs, and we’ll continue to outstrip Europe while they take their 7 weeks of vacation every year.

    “And if you are an inventor, for God’s sake, don’t retain Max.

    “Mark Nowotarski – the claims define the scope of what the pantentee excludes, the spec teaches that which society benefits from. Limiting an inventor’s ability to write claims does nothing but enable corporations to take advantage of the teachings that an inventor now can’t have the opportunity to claim. It’s bullsh@t. If a claim is supported by spec, and is truly useful and unanticipate by the prior effort of others, it should be subject to successful claim prosecution despite the whinings of industry which would much rather not pay a dime of royalties for stolen technology.”
    Posted by: Don’t Beat on Max | Jun 26, 2007 at 07:33 AM
    —————————-

    Wishing I had written the comment above, I remain
    JAOI

  132. No TJ, the PTO DID argue that submarine continuations harm the system. In fact, at one point, Ms. Wetzler said that the reason for the rules was to deliberately curb the abusive practice of continuations. Counsel for GSK responded to this by more or less thanking her for making the case for GSK. Part of the basis of his argument was that section 120 and more than 100 years of judicial history do not permit limits on continuation filings absent an express change in the statute from Congress. No change from Congress, no change in the number of continuations.
    The excitement abounds because of the minor victory in the first real battle against rules that are unlawful and run contrary to the patent law of this country. Additional happiness comes from the opinion by Judge Cacheris. The opinon is lengthly and well reasoned. The PTO obviously decided yesterday afternoon that there would be no last minute rush to the Federal Circuit. In my opinion, there is no basis on which to appeal the PI order. Judge Cacheris made sure of that in the opinion.
    The PTO put a notice on their website last night saying that they are holding as of the status quo of 10/31. If you are hoping for the PTO to make lemonade here, then you may be in for a long wait.
    The PTO’s early press release to the WSJ yesterday made it quite clear that they aren’t going to back down. Things will be status quo, probably for the rest of 2007. We should be watching the Senate patent reform bill, which might come up for a vote in December and we need to watch the hearing schedule in the GSK case in early 2008.

  133. If a product (e.g., continuations) is in high demand and you have trouble meeting said demand, what do you do?

    a) Shoo customers out of the store and close early each day

    b) Raise the price and hire more cashiers

    One day the PTO will solve the above problem.

  134. MaxDrei could also have added that the EPO is currently introducing a new European Patent Convention (EPC 2000) which was created at the highest level (a diplomatic conference to approve it before each country had to sign up to it) rather than by office practice changes. However, the new convention moved a lot of lot of issues from the Articles (to be changed by diplomatic conference) to the rules (can be changed without diplomatic conference).

    My sympthies with USPTO examiners though. Long term, it would ease their work even if the implementation is doubtful. Of course, applicants would eventually find ways around any new rule e.g. a lot of claims of the style “… wherein x is A or B or C or D” or “…the apparatus having at least one of the following features:”

  135. So what about actions taken in reasonable reliance on the rules being implemented that may now, if the rules don’t go into effect, turn out to somehow be prejudicial to one’s client–e.g., accepting a restriction requirement without traverse to keep the unelected subject matter as eligible for a “true” divisional application under the new rules, and thus losing a right to petition under the old rules? Will practitioners be liable for possible malpractice arising from such actions, or is taking the action in reasonable reliance on announced administrative rules that never go into effect an adequate defense?

  136. As to the penultimate comment above, from “Inventor”: Apply your fact matrix to Europe, and what do you get? Publication, early, but only 18 months after the first filing that you didn’t retract. Divisionals, in unlimited number, unlimited in time till the end of the patent term, and claiming anything you disclosed in your omnibus filing. Note “disclosed” not “claimed”. Good enough for you? Good enough for your investors? Good enough for the US Congress? The model is available, in Europe. Submarining abolished but late claiming available. The rest of the world is at that point already. What’s to stop USA joining up?

  137. Of course, TJ, but those procedural changes were initiated (or at least enabled)legislatively. That’s my point. We get into trouble when we identify a “societal harm”, and seek quick redress through judicial fiat or administrative rulemaking without due process and the protection of the system of checks and balances which our founders wisely installed with the Constitution. We just saw the mischief that occurs when rules are made without due consultation with the affected parties, didn’t we?

    So to get back to the point — the PTO has the right to change procedural rules, but not to identify and correct “societal harm” by making substantive rule changes and then mischaracterizing them as “procedural”. The argument you suggested that the PTO make would have gotten them thrown out of court even faster than they were.

  138. I am an independent inventor. I’ve been following the disposition of the rule changes partially out of self interested, but also notice that rarely if at all independent inventors are directly heard from. Before you chalk me up as an ignorant pro se nut job, I am also a registered patent agent and during the last tech market crashed hid out working for a law firm assisting in patent litigation and prosecution.

    If as TJ states the rule changes are meant to address “societal harm caused by submarine continuations” It is a broad stroke that has great collateral damage harming the independent inventor. As there are many reasons for filing continuations that while inside the patent system in a vacuum may not a poor decision, but to an inventor are driven by other forces.

    The following is a fictional fact pattern but based on actual decisions I’ve had to make. An invention is made and a patent is filed. Thirteen months later the market gets crowded and since as an inventor foreign filing is too expensive, a decision is made to avoid publication at this time the only recourse is to file a continuation and abandon the parent. (Continuation #1). After the first office action, the examiner allows narrow claims. For the purposes of fundraising getting the first patent is important, so our hypothetical inventor takes the claims and wants to pursue broader claims in a continuation (Continuation #2). Now our hypothetical inventor has exhausted all his continuation by right without pursuing any new claims. While some of these decisions may seem questionable or poor strategic decisions these are realities of small inventors.

    Despite the arguments proferred by the USPTO the rules have a retroactive effect. When hibernating a startup, my partner and I on advice of a patent attorney friend filed a large single omnibus patent specification. It was an economical way to preserve our rights knowing in the future we’d have to file continuations to perserve our rights. The last patent house consolidate bill had a detrimental effect in that the creation of the application size fee would make it more costly to pursue this continuation, but in the end it was a matter of money and not of lost rights. I admit we were aware of impending rule changes to the continuation practice, but always assumed there would be a small window before the rules were enacted to file all the continuations to capture the multiple inventions disclosed in the specification. Knowing of the impending new rules annoucements, I tried to conceive of ways to save the few thousand dollars required to file several continuations before the rules take effect. The new rules are announced and have the August 21st date in the patent rules, resulting in no recourse except to attempt to petition. However, I don’t think “My time machine was broken so I didn’t know I would have to file all my claims at my original filing” would be justification as to why I couldn’t file previously. That coupled with the 5/25 rule pretty much gives me now way to capture all inventions in that one specification, i.e. loss of rights.

    Sorry to be going on and on, but I’ve just been reading opinions of attorneys on various blogs for days awaiting the ruling on the injunction and just wanted to shed a fresh perspective of what the rules mean in the end to whom the rules truly impact… the inventor. We often get caught in the crossfire between big companies and patent trolls.

  139. This is my wish for us to use such practice will be necessary for protection of intelllectual property. I wish that PTO will have achance to amend their rules and do work precisely to solve the abnormaliies in this case: Comfort on difficult days, smiles when sadness intrudes, rainbows to follow the clouds,

  140. CAPat, we use procedural changes to currect societal harms all the time. Think mass torts are resulting in too much damages? Consolidate class actions in Federal court! Think regional circuits are anti-patent? Create the Federal Circuit!

  141. Dennis, put up a link to the Opinion. That’s the meat.

    I was wondering as I got into the 5th page of J. Cacheris’ rationale for allowing the Manbeck Declaration, “Why is he spending so much time on this issue?” When I got to page 20, I saw it: the judge wanted to be sure he was on solid ground in letting the declaration in because he wanted to use it to support his likelihood of success conclusions! Ha!

    In boxing they call that a “lead with the left, followed by a right hook.” In golf they call it “laying up followed by a chip-in.” In career management for PTO bureaucrats they call it “lights out, baby.”

  142. TJ, if the PTO had pursued your strategy the results would have been even more decisive for the plaintiffs. How can you argue the “societal harm caused by submarine continuations” and then claim you are engaging only in procedural rulemaking? The GATT legislation in 1999, changing patent terms to 20 years from filing was at least partly an effort to address the submarine patent issue. To the extent that this is still a problem it needs to be addressed by Congress again. This is the whole problem with our country today — we want to “fix” things quickly, so we ask a judge or agency to make a rule. We don’t want to do it the proper way, with all of the necessary and constitutional checks and balances, by going through the legislative process.
    Hopefully, after the PTO has had a chance to review the ruling and to realize how little chance it has to ever issue these rules, it will regroup and seek to work with the bar and with Congress to try to develop solutions legislatively, THE WAY THINGS ARE SUPPOSED TO BE DONE!

  143. Why the excitement? This case was always going to the Federal Circuit, and it just means the PTO will be the appellant instead of GSK — and the case will be going up a lot faster than before. As has been noted quite a few times already, the standard of review is de novo.

    In my view, the PTO pursued the wrong strategy in the district court, choosing to argue its own administrative convenience instead of focusing on the societal harm caused by submarine continuations. But that will be irrelevant at the Federal Circuit where the judges are all intimately familiar with the issues. How the votes will line up is hard to predict. All I can confidently say is Judge Newman and Judge Moore probably will not end up on the same side.

  144. I believe that the Notice Concerning the Defeat that the United States Patent and Trademark Office suffered does not provide adequate notice. The vitiation of the rules by Court order should be made clear in the heading. Moreover, the fact that it is in the second paragraph detracts from the importance of the notification. If there is anything that the management of the USPTO should garner from this debacle, it is to be clear and concise with the public concerning what is required of Applicants. Once again the USPTO has failed in that duty. The notice should be rectified. By the way, I STRONGLY suggest that you do this. This notice if evidence of the contempt that the USPTO holds for the courts opinion. It is bad enough that the USPTO was embarrassed today. If the Notice is not rectified, I do believe that the Court will, shall we say, rip you a good one early next year.

  145. Regarding Jill Browning’s comments elsewhere on PatentlyO.com:

    “Of course, the preliminary injunction is not a decision on the merits of the rules —it is only preliminary relief. A full decision will likely be delayed until at least early January.”

    The preliminary injunction IS a “decision on the merits of the rules,” as there is extensive case law that legal rulings made on a motion for preliminary injunction establish the “law of the case.” Further, even if this were not so, it is virtually inconceivable for any human being – and this would even include federal judges! – to so completely reverse a recent, prior decision as “wrong” without some intervening event, in this case, a significant change in the legal landscape, that would justify finding today’s decision incorrect or “overruled.”

    Law school and “legal lip service” about the “preliminary” nature of decisions rendered on prelimianry injunction motions as found in the case law to one side, today the District Court “decided the merits” of the judicial challenge to the PTO rules – and the PTO lost badly and the PTO knows it!

  146. As a practical matter, today’s District Court decision is a preview of the Court’s eventual decision on the up-coming summary judgment motions. It’s a “preliminary” injunction, that is “temporary” in name only.

    Since GlaxoSmithKline brought a pre-enforcement challenge to the PTO’s proposed Rule changes and was found to have demonstrated a likelihood of success on all legal issues (except, as I recall, RCEs, which was essentially a “draw” and which are not truly necessary, as long as continuation practice is unlimited), absent an intervening change in statutory law, which is highly unlikely, today’s decision establishes the “law of the case” and the District Court is extremely unlikely to reverse itself on the law when rendering a decision on the summary judgment motions to be filed in the coming month. To pretend otherwise is a legal fiction!

    When pre-enforcement/facial challenges are brought, which raise strictly questions of law, if the plaintiff proceeds with a motion that is nominally labelled one for “preliminary injunction,” the reality is that it is a motion for summary judgment. The entirety of the case on the merits has effectively been decided – don’t expect the District Court to rule in the PTO’s favor on any legal issue. With the PTO Rules having been enjoined, the PTO is unable to later argue differently (e.g., by pointing to how the Rules are being implemented) than it has already argued on GSK’s motion for preliminary injunction. The parties have extensively briefed all legal issues, leaving little new legal argument left to be presented to the District Court that would justify a different outcome.

    The PTO will lose on summary judgment in the District Court and, if it wants to lose again, it can proceed to the Federal Circuit, which would conduct a de novo review and reach the same legal conclusions. Logically, however, it makes little sense for the PTO not to file an interlocutory appeal to the Federal Circuit from the grant of GSK’s motion for preliminary injunction, since the PTO’s defense in the District Court of its ill-conceived Rule changes is O-V-E-R !!

  147. Much of the Judges argument hinges on the rules not being substantive, or under 120 – if these fail we are all in trouble.

    File Amici! Don’t trust – - -

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