The PTO’s New Prosecution Sanctions for Appeal Misconduct

PatentLawPic110By Allen Hoover

As posted November 8, 2007, the PTO has proposed to implement new rules for appeals. Among the new rules is proposed rule 41.46. This rule (repeated below) has largely escaped much public notice. Nonetheless, the rule is very problematic and your readers should be aware of it.

41.56 Sanctions.

(a) Imposition of sanctions. A sanction may be imposed against an appellant for misconduct, including:

(1) Failure to comply with an order entered in the appeal or an applicable rule.
(2) Advancing or maintaining a misleading or frivolous request for relief or argument.
(3) Engaging in dilatory tactics.

(b) Nature of sanction. Sanctions may include entry of:

(1) An order declining to enter a docketing notice.
(2) An order holding certain facts to have been established in the appeal.
(3) An order expunging a paper or precluding an appellant from filing a paper.
(4) An order precluding an appellant from presenting or contesting a particular issue.
(5) An order excluding evidence.
(6) An order requiring terminal disclaimer of patent term.
(7) An order holding an application on appeal to be abandoned or a reexamination proceeding terminated.
(8) An order dismissing an appeal.
(9) An order denying an oral hearing.
(10) An order terminating an oral hearing.

This proposed new rule has several problems, and should not be adopted.

First of all, the PTO already has ethical rules that govern all practitioners. These rules have been in place for a long time, generally track the rules of ethics that exist for attorneys, and are well understood.

It’s not clear whether new Rule 41.56 rule would create a category of misconduct that is not covered by the current ethical rules. In other words, might an attorney be found to have committed misconduct for activity that is appropriate and permissible under the ethical rules? If so, the PTO is defining a new sphere of activity — "ethical misconduct." If not, this rule is redundant to the existing ethical rules.

Second, it’s not clear what activities might constitute "misconduct." The PTO has not provided guidance for determining what might constitute misconduct. Even the two specific grounds stated in the rule — presenting a "frivolous" argument or engaging in "dilatory" tactics — are not at all clear. For instance, if the applicant uses the full period set by rule to file a brief, would that be "dilatory"?

Third, there is apparently no intent required before misconduct is found. If an applicant failed to comply with some formal requirement, such as omitting an appendix, that arguably could be misconduct under the rules.

Fourth, the standard for determining whether misconduct has occurred is not stated. The PTO’s comments state "Whether and which sanction, if any, should be imposed in any specific circumstance would be matters within the discretion of the Board." This standard is subjective and arbitrary. Rule 41.56 is a punitive rule. An attorney found to have committed misconduct might have to report that finding to the state bar authorities, and an applicant who commits misconduct faces several severe sanctions. More notice as to the standards for determining misconduct is needed.

Fifth, the rule is redundant. If an applicant makes an argument that is frivolous, the appeal will be rejected and the application will not be allowed. As to "dilatory tactics," most appeal deadlines are set by rule. Failure to meet these rules will result in dismissal of the appeal.

Sixth, it is questionable whether the Board has authority to issue the sanctions specified under rule (especially the requirement for a terminal disclaimer). It’s questionable whether the Board has authority to issue sanctions at all. At least for practitioners, that is the province of the Office of Enrollment and Discipline.

Seventh, there is evidently no process for appealing from a finding of misconduct.

Eighth, and most generally, this rule seems to be a solution needing a problem.

I hope that the PTO rethinks this rule and decides not to adopt it.

Mr. Hoover is an IP attorney at Banner & Witcoff in Chicago. He was named an Illionois “Super Laywer” by his peers in the state.

86 thoughts on “The PTO’s New Prosecution Sanctions for Appeal Misconduct

  1. Bruce Hayden was right on mark in saying that appeals were the only instrument an Applicant has against an Examiner’s mistakes.

    However, it seems that the USPTO problems arise from anti-patent management and the Examiners are victims no less than the Applicants are.

    If this impression is true, it is just a matter of time before the Appeal Board starts acting unprofessionally, even without the new “onerous” rules. Already I’ve seen unneeded non-compliance briefs (page 1200-17 (A) of MPEP) which seem designed just to reduce the incentive to appeal.

    It will really be scary if the Board starts rubber stamping silly / wrong Examiner rejections on top of adding unneeded formalities.

  2. This blog is great; it has me LOL ; Long Live MM; This Blog could not possibly live without him. Like Dennis I can post all day & nite because similiar to most 80 yr old practioners all these new rules and regulations gave me a nervous brakedown and sent me into early retirement. And I cant prepare a brief in just 10 hours.

  3. I agree with the posters above who noted that the procedural rules proposed (including those enjoined) are going a long way to eliminate substantive rights. Part of the problem though is that the USPTO has proposed the new rules in pieces, instead of all together.

    So, you have rules that would eliminate most continuations, regardless of merit. Fine, if you are in the right, then appeal. Whoops. The new appeal rules make appealing both expensive and problematic.

    Remember, appeals are essentially the relief valve for handling intransigent or incompetent examiners. I seem to be running into this more and more, at least in the art areas where I primarily work.

    The problem that I see with the part of the proposed rules cited above is that they open the system to more abuse by the USPTO that we are already seeing. Right now, I am seeing a lot of appeal briefs being kicked back for failure to comply with some formality (and, no, I didn’t write them, I just have to fix them). In the past, these briefs would have sailed through. Now they are rejected, but with a bit more work, I can get them accepted. But the proposed rules would seem to allow the USPTO to just flush the appeal when you have arguably not fully complied with their (new and onerous) formalities.

    I would be more hopeful if more of the appeal briefs that I have been seeing being rejected recently were not in the gray area. But I seem to be seeing more trivial rejections of appeal briefs, and that scares me when it comes to proposed rules, and in particular, in relationship to the “nuclear” sanctions cited above. I have little faith that they will be applied in a fair and legitimate way, and not to simply get the backlog down, regardless of merit.

  4. It will only be a matter of time before the courts strike down this latest attempt by the PTO to go beyond their legal authority and inflict draconian and senseless new rules on the American people that pay their salaries.

    I can’t count the number of times I’ve dealt with frivilous arguments made by examiners on appeal, only to have them struck down by the BPAI. Where are the rules that will relegate these examiners down to the mail room? Obviously, the PTO is only trying to make their job easier by discouraging appeals.

    It may take years, but eventually the PTO will be placed in court receivership if they keep engaging in such antics. If they are concerned about patent quality, why not use the existing Commissioner-initiated re-exam process to take another look at patents being asserted by so-called trolls? And why they are at it, take a look at IBM’s portfolio too, as they are the biggest troll out there! In fact, why not re-exam all patents that are asserted? If the PTO has been doing sloppy work for years turning out shoddy patents, then all are suspect.

  5. Dear Shame On You:

    While I agree with you that “posting vitriolic and baseless reactions” is bad, and that the ad hominem insults that some posters have engaged in were uncalled for, you must realize that you yourself are also engaging in mud-slinging. Just look at what you wrote:

    “Patent prosecutors and practitioners in front of the PTO have been engaging in what can, at best, be called gray ethics when it comes to prosecuting poor patents, making arguments and filings for the purpose of burying and confusing examiners and the BPAI, and just generally attempting to game the system by treating the PTO as an adversary in a non-adversarial context.”

    How does a prosecutor recognize a poor patent when he or she sees it?

    Why would any prosecutor make arguments or filings for any purpose other than to obtain a patent? This idea that the prosecutor wants to confuse or bury the examiner does not make sense.

    The last thing any prosecutor wants is for the examiner to think the prosecutor is an adversary.

    The Prosecutor wants to be a source of truth that the examiner can rely upon. The prosecutor wants the examiner to be able to rely upon the application (and all other filings by the Applicants), as a description of a novel and non-obvious technology.

  6. “Don’t get too excited MM – they executed Spartacus.”

    But not before he married Jean Simmons — ROWR!!!

  7. Ok, so nither Dennis C. nor MM (who, as known, seldom comments) are going to clarify that are not the same person?

    Then I must agree with Gideon, and assign MM’s comments to Dennis C.

  8. I think Shame On You is a PTO employee.
    ————————————–

    Among other things. John Doll, perhaps?

  9. I think it’s worth noting that Shame On You hasn’t seen fit to return and defend him/herself. Another feather-ruffler.

  10. “Was it because she fired me halfway through my clerkship? Or was it because she refused me a position in the first place?”

    My gosh, Malcolm, are you trying to give us more reasons to love and respect Judge Newman?

  11. Dear Malcolm,

    Please excuse my absence, but I’m been trying to deal with a system run amok.

    I don’t mind what you said, and I realize you are under pressure, but please remember to use the (TM), or am I mistaken about that? And my stage name is preferably case sensitive. Also, please feel free to use “JAOI(TM)” (also case sensitive).

  12. If MM is not DC, I’ll eat my Reg number.

    If you think about it, it’s obvious (even under KSR standards).

    1. It’s DC’s blog.
    2. DC never posts.
    3. MM is omnipresent here – his interest and contribution to the blog far outstrip any normal interest you would expect from an outside party.
    4. MM is very well versed in the law.
    5. MM posts at all hours and on all topics – no patent practitioner without a personal interest in the blog has that kind of pathology.
    6. It’s obvious that DC must post – who would have a blog and never post a comment – so the only real question is, who is DC’s alias?
    7. It’s the one who generates the more interesting legal issues, ruffling feathers and increasing traffic in the meantime.

    By the way – I’m not charging you chuckleheads for this crap, but I should. It’s this kind of insite – in combination with 3k appeal briefs – that keep the clients lined up under my shingle like underdeveloped adults at a Harry Potter book signing.
    \

    MM wrote: “My boilerplate about incorporating by reference is up to three paragraphs now. Bulletproof, baby. You can’t get that for 3 grand. [pops top on an ice cold Tecate]”

    Awesome!

    Maybe the best thing written on this Blog.

    Ok, and you called me out.

    I don’t work part time.

    But man, them 3k appeal briefs really add up quick, and by the assessment of 99.99% of humans on this planet I (and most other pat. attorneys) make a fortune.

    Have no fear – all the money I earn will be returned to the people, in spades. Robin of the Hood and all that.

    I know what all good prosecution attorneys know:

    You make your money on the paper pushing nonsense.

    IDS, Dec, reporting letters, attempting to get the Malaysian associate to get out of the hammock, put down the banana daiquiri, and answer the f—-ing fax . . . and so on. 0.25, 30 times a day, times 300 is a lot of clams, baby.

  13. you guys screw around online more than I do . . . I cant wait to leave the office and become a patent attorney!

  14. “thank you very much for making it easy for me to work part time and make a fortune.”

    You had me until the last word, Gideon.

    “Every blog needs its needler. MM is the needler on this site.”

    I thought CaveMan and Just An Ordinary Inventor were the needlers.

    “I’d love to see what kind of lawyerly overwrought garbage 10 large buys you nowadays”

    My boilerplate about incorporating by reference is up to three paragraphs now. Bulletproof, baby. You can’t get that for 3 grand.

    [pops top on an ice cold Tecate]

  15. “Show me some important software or business strategy that would never have been ‘invented’ but for a patent protecting the software itself or the business strategy itself.”

    This is why I’ve analogized debating with MM with mud wrestling with a pig. Although the pig enjoys a good romp in the mud, you are left covered in filth and asking yourself “why did I ever do that?”

    MM’s question could have just as easily been worded “[s]how me some important mechanical invention that would never have been ‘invented’ but for a patent protecting the mechanical device itself.” In its present form, the question cannot be answered, which is why MM asks it. His purpose was not to advance a serious discussion but to act as an agent provocateur.

    As for an explanation of his animosity towards Judge Newman … this is a simple one. Judge Newman is knowledgeable about patent law, and as far as I can tell, MM has little respect for anybody in patent law. As such, MM isn’t personally picking on Judge Newman, she just happens to be in MM’s field of fire.

    As for drinking Tecate from a can … perhaps that is the only thing you can get in San Diego (???).

    “The difference is that nobody has ever credibly argued why biotech methods and compositions shouldn’t be patentable under section 101 as written.” At least a computer program runs on a computer, which is a technological device created by man. On the contrary, most biotech compositions probably have existed in nature, at one time or another. Then again, this whole debate revolves around the exact definition of a “business method” or “software” or “biotech composition.” However, clearly setting forth the scope of the debate is something MM rarely engages in.

    ****

    As for Dennis being MM, I very much doubt it. I have e-mailed Dennis off-line and he is a very pleasant person to deal with. For him to be MM would require him to completely subjugate his ego when in his “Dennis character.” I cannot see how Dennis could pull it off.

  16. Thomas Jefferson, thanks for posting that link to Doll’s testimony. You gotta love this tidbit on page 98:

    “we were looking at doing claims, or continuations — The Notice of Proposed Rulemaking — for claims we were hoping to get a 5 percent efficiency gain out of that. We were hoping to reduce the total number of applications that was filed by 5 percent. That’s a huge number of applications. And if we could reduce it any at all, it helps us move on to those applications that were filed that really were important.”

    Ummmm… Mr. Doll… if a party is filing a continuation on an application, wouldn’t you presume the subject matter must be important??

  17. Commissioner Doll:

    “…You look at the recent Nobel Prize for medicine, where Dr. Fire had interference RNA: a phenomenal invention that was filed in tech center 1600. But then you look, and you look across at what we get. And I don’t have to look very far to find a bathroom reservation system — that I’m personally against, because that was based on how much you paid for your seat. But when I want to go, or I gotta go, because I paid $49 for my fare, I don’t want to stand in line.”

    Doll goes on to gripe about anti-matter patents.

    Search “anti-matter” in the title and you’ll find one. Bogus.

    Tom

  18. Every blog needs its needler.

    MM is the needler on this site.

    It’s not substantially different than what was done with Infirmation.com

    One or two people take on multiple screen names and create the buzz.

    And, while Dennis Crouch, as owner/operator of the blog, must always present a polished and professional demeanor, he is not limited at all with his MM character.

    So, to get the blog moving, he, as mild mannered DC, posts some new patent topic, and then, in comes MM to offend, chop down, insult, and otherwise fire up all the thread posters.

    MM is probably responsible for creating 20% or more of the traffic on this site.

    Of course it’s Dennis.

    Who else would have a motivation to be so abrasive.

    By the way,

    To all of you dip sh-ts who dared me to “post one of your $3,000 appeal briefs”, I say, to get things started, why don’t you post one of your $10,000 novelettes?

    I’d love to see what kind of lawyerly overwrought garbage 10 large buys you nowadays.

    Here’s the poop knuckle heads, and I couldn’t care less if you agree or don’t agree.

    If you’re a patent practitioner who works at a practice that has a billable hour requirement, then the odds are that I could do your job in 1/2 the time it takes you to do it.

    Why?

    Because you’re not getting paid to work fast.

    You are nice and settled, you’ve checked your AIPLA statistics to see what an appeal should cost, and your billing rate is likely more than you’re worth, even at your slow level of production.

    10k?

    If you’re billing at 300 an hour, that’s 33 hours.

    I’ll say it again – if you need 33 hours to write a BPAI brief for 20 or so claims that stand rejected over 3 art references in combination,

    then YOU SUCK, and thank you very much for making it easy for me to work part time and make a fortune.

  19. “http://www.uspto.gov/web/offices/com/advisory/acrobat/ppac_transcript_110906.pdf

    and start on page 95. Doll talks about personal bias in rejecting patent claims.

    Then on 97 he talks about silly applications when compared to real applications.

    The silly applications get a new type of patent “The Wall Hanger.”

    In the ’07 advisory meeting the “Wall Hanger” patent is mentioned.

    I can’t believe these people say this stuff with a court reporter getting it all down.

    Cpt. Nemo”

    Uhhh This is pretty damning stuff.

    Tom Jefferson

  20. “His proposed solution to “get rid of software and business strategy patents because — as patents — they are ALL crap” mirrors statements he has made in the past.”

    Show me some important software or business strategy that would never have been “invented” but for a patent protecting the software itself or the business strategy itself. Then you’ll have rebutted the position held myself (and many others) with regards to those patents.

    Note also that I’m on the regard bemoaning bad biotech patents as well. The difference is that nobody has ever credibly argued why biotech methods and compositions shouldn’t be patentable under section 101 as written.

  21. But pds, you haven’t explained my “animosity” towards Judge Newman yet! Was it because she fired me halfway through my clerkship? Or was it because she refused me a position in the first place?

    Tune in next time when pds explains why I only drink Tecate from a can.

  22. Lurker, no, Malcolm Mooney was the lead singer for the German krautrock band Can. According to Wikipedia, he left the band in 1970 after one album on the advice of his psychiatrist. Why he posts here, I haven’t figured out yet.

  23. thank you pds, I couldn’t have expressed it better. But you may be awarding too much credit.

    This person of whom you speak shows signs of having an inordinate amount of time on his hands (#1 poster? not sure I’d want that distinction) and therefore I sometimes think that he may unemployed or underemployed.

    But then, I’m just a simple cave man.

  24. Yes, early on when software and business method patent applications were first being filed many were issued which should not have been issued. But now with a large data base of prior art, examiners who are experienced in examining these arts, the “second pair of eyes,” the close attention the public is giving to these applications, the restrictions of KSR, etc, the issuance of “crap” software and business method patent is no more frequent than in other technologies.

  25. “This is the era that brought us many of our bigwig patent prosecution colleagues who dominate the partnership in contemporary law firms.”

    I’ve been waiting for a statement like this for awhile since it is one of the final pieces of the puzzle.

    I have long wondered why someone exhibits such a utter lack of respect for the profession, the practitioners of the profession, and the inventors (without whom we would not have the profession). Personally, I have no respect for someone who doesn’t respect the profession in which he practices or his own clients. I just cannot see how such a person could vigorously represent a client when such vigorous representation conflicts with that person’s core beliefs.

    I have long suspected that this person was in biotech. As I have noted in the past, biotech is such a different type of practice than all other types of practices. How inventions are “invented,” how applications are drafted, and how applications are prosecuted are very different in many instances. As such, I have long passed off this person’s misunderstanding of some basic aspects of patent prosecution as being based upon a lack of a common experience that most of the patent prosecutors on this board share.

    This person’s claim to have a PhD also fits in quite nicely. It is a common requirement of many big firms for a biotech attorneys to have a PhD. Also, the PhD explains, in part, the personality (e.g., an over exaggerated sense of self-worth).

    His proposed solution to “get rid of software and business strategy patents because — as patents — they are ALL crap” mirrors statements he has made in the past. However, based upon his past statements regarding these types of patents, as I have pointed out on this board a couple of times, he really has a very poor understanding as to these patents, which, given his experience with biotech, is not surprising.

    Back to the piece of the puzzle I was referring to, I have long wondered where his particular vitriol towards the profession, practitioners, inventors, and the software arts comes from. However, his statement regarding “bigwig patent prosecution colleagues who dominate the partnership” could not be clearer as to the genesis of this vitriol.

    After spending countless years to obtain his PhD and law degree, this person arrives on the scene during the 1990s, only to find that the partners/associates with the most amount of work (and thus power) are doing work on “crap” software patents. Thus, after spending all this time to obtain these impeccable credentials, this person finds himself doing biotech work, which as a whole, is typically much lower in volume than software work. After being stuck in this low-profile position, this person also sees associates (much younger and less credentialed than him because they didn’t get a PhD) make partner while he languished in anonymity.

    After such a beginning, it is no wonder how this board eventually became blessed with the #1 poster (by numbers of posts), the #1 irritant, and the person has the highest percentage of “snarkiness” and non-sequiturs with his respective posts. This person has a grudge, and the Patently-O website is where that grudge manifests itself.

    Granted, this post is also non-sequitur. However, when evaluating the opinions of others, I believe it is valuable to understand why people have certain opinions (i.e., their underlying biases). Anyway, I think that the puzzle is now sufficiently complete to see that the underlying rationale for much of what we read from him boils down to the simple human emotion of jealousy and his belief that the profession values his contribution (and art) less than certain professionals (and art) that he disdains as being less qualified than himself.

    Personally, I wish I never had to read another post of his (and I continue to wait for the day when I can put certain posters on ignore). There are some wonderful posters on this board that I absolutely enjoy reading, yet I rarely find that any of his posts share anything interesting or insightful (also, if I want black comedy, I’ll listen to George Carlin, who is much better at it).

    Unfortunately, when I read posts, the name is on the bottom, so I don’t have any fair warning. However, in many instances, I don’t even have to read the name at the bottom of his post to know that it was his post. I am sure many people who have spent any length of time on this board already have experienced the same.

    Regardless, although I fell off the wagon for this one post, I will continue to remain “MM free” with my posts and I suggest anyone who wants to have reasonable discussions that don’t devolve into a meaningless thread do the same.

    MM free

  26. WTF. If PTO examiners are found to advance or maintain a misleading or frivolous argument, shouldn’t the sanctions apply against the PTO?

  27. “I type around 100 words a minute and I am fluent in Word.”

    I’m certain that your photocopying skills are exemplary as well. Congratulations.

  28. “If you can’t write a Brief for 3 grand, then it’s your failing.”

    “If you need more than 12 hours to put together an appeal brief for a case . . . YOU SUCK.”

    I’d love to read one of your $3K appeal briefs.

  29. Malcolm Mooney (AKA Dennis) wrote:
    “3 grand for an appeal? LOL. . . .
    Yeah, these things must be really really important.”

    1. – 3 grand easy. In most cases, there are only one or two rejections remaining after the 1st Reply. Almost always, it’s a question of obviousness.

    So your options are – spend 10 grand writing a 14 page legal treatise on obviousness, or, spend 3 grand and write a concise appeal that properly frames the issue.

    Very simply, obviousness law can be summed up in 1 page. Cite the 2 big cases, and then cite the minor cases that are on point with your case.

    Lawyers, as a group, act in with a herd mentality. There is an underlying belief that you need to write 10 pages and cite 30 cases for each statute cited.

    I have always thought that such an approach was garbage. It’s the Law Review co-editor ninnies stroking each other.

    Everybody knows what the Obviousness law is – it’s “it’s obvious because it’s obvious.”

    If you need more than 12 hours to put together an appeal brief for a case on which you . . .

    drafted the case,
    filed the case,
    responded to one or two office actions,
    for which there are one to three claim sets,
    for which there are 5 or fewer art references.
    and for which there are only 102/103 rejections,

    then YOU SUCK.

    I expect that you are an old fuddy who chicken pecks out 25 words per minute and who spends 7 hours flipping through the Chism case cheat book looking for a clever quote.

    I have only a few Tools – Word and Lexis are the main ones.

    I type around 100 words a minute and I am fluent in Word.

    When I’m done with my first draft, it’s almost always 95% done.

    Why?

    Because I am familiar with the art and issues,
    because I get the format and spelling/grammar correct on the first go through,

    and

    because I don’t waste client $ clucking on and on about useless Fed Circuit cases that are tangentially related.

    It’s really really simple.

    The problem with most appellate practice before the USPTO is that the appellant doesn’t address the issue raised in a reasonable response.

    Instead, the appellant writes a horn book that shotguns every conceivable point in response.

    So snide-@ss Mooney, save your guffawing.

    If you can’t write a Brief for 3 grand, then it’s your failing.

  30. “Fewer patents alone has little correlation with patent quality.”

    Except I made it quite clear that I’m not talking about “fewer patents” in the absolute sense.

    Thanks for playing.

  31. Malcolm,

    Fewer patents alone has little correlation with patent quality. It depends on what criteria is used to reduce patent issuances. If it just raises the costs significantly and introduces arcane hoops to jump through, then you are probably eliminating patents from independent inventors and small companies, which does not necessarily mean reducing bad patents.

  32. Shame On You,

    If anything you asserted had any basis in reality, you would have a point. Care to supply any evidence of your position?

  33. “Part of that is because the late 90s brought us The Bubble where patents were issued like candy (72%??!!!! When patent filings were increasing explosively?!?!?!). This is the era that brought us many of our bigwig patent prosecution colleagues who dominate the partnership in contemporary law firms. These are people who achieved their success with such arguments as “C’mon, Examiner, just give us the darn patent! What’s the big deal? Don’t make us file an appeal. Give us a break!” and other strokes of legal genius.”

    Malcolm, that’s only half the story of the ’90s – the other half was the official memos that were circulating around the Office warning the Examiners against making “contentious rejections”, which had the Examiners crying out with the mantra, “Allow, allow, allow!” (P.S. that’s not a paraphrase!)

    And yes, there was a feeling fostered by the higher-ups in management at that time that, “The customer is always right!”

    Well, to every action there is an equal and opposite reaction I guess… but it doesn’t change the fact that USPTO (mis)management has been and continues to be the root cause of (dare I say “all”?) the patent system woes in the U.S.

  34. Michael,

    “Might you remember the days when if you had a question you needed to do no more than give Pat Federico a call and talk about it?”

    I do. I actually had the honor and privilege to talk with the late PJ at my dad’s firm (I’m a second generation patent attorney) and was still in college. I was working on a paper/independent study on Soviet patent law (now I’m really dating myself!) and PJ had some data on Soviet patent statistics that no one else had, and was kind enough to provide me for my paper.

    I also miss the collegiality we once had in the prep and pros business. What I like in this business is the challenge to learn new technology, write about it (in a patent application) and spar (aka negotiate) in a civil manner with the patent examiners over the proper scope of the claims in view of the art. Now, we seemed to be lost in “procedure and form.” For my taste, the whole thrust by the PTO in this examination process is going in the wrong direction, which is more complex procedure, and not enough focus on the merits.

    May be we can bring those days back. But it won’t happen with the current PTO hierarchy.

    Always good to hear from someone who remembers the “good ol’ days.”

  35. “Prosecution still caused differences of opinion, but never did I feel what now seems to be a pervasive “us against them” mentality.”

    Part of that is because the late 90s brought us The Bubble where patents were issued like candy (72%??!!!! When patent filings were increasing explosively?!?!?!). This is the era that brought us many of our bigwig patent prosecution colleagues who dominate the partnership in contemporary law firms. These are people who achieved their success with such arguments as “C’mon, Examiner, just give us the darn patent! What’s the big deal? Don’t make us file an appeal. Give us a break!” and other strokes of legal genius. Such people are still around and “mentoring” new associates who, sadly, are operating under a more sober reality and who, even more sadly, are told to bill several hundred more hours per year than was ever asked of their illustrious self-styled “leaders” …

  36. “However, I do not subscribe to the notion that the way to cure [all the crap patents that are issuing] is place ever increasing burdens on applicants in a prophylactic manner when much of the “problem” resides within the USPTO itself.”

    I agree with you (see my proposed solutions, above). But the manner in which the problem manifests itself can not and should not be downplayed by anyone interested in fixing the problem.

    Increasing burdens on applicants is perfectly acceptable long as those burdens are reasonable and articulated clearly. The PTO has failed miserably on that front, as we all know.

  37. Go here:

    link to uspto.gov

    and start on page 95. Doll talks about personal bias in rejecting patent claims.

    then on 97 he talks about silly applications when compared to real applications.

    The silly applications get a new type of patent “The Wall Hanger.”

    In the ’07 advisory meeting the “Wall Hanger” patent is mentioned.

    I can’t believe these people say this stuff with a court reported getting it all down.

    Cpt. Nemo

  38. It is also interesting to note, if the argument is that patents are being issued that don’t satisfy current patentability requirements, then the problem lies on the Examiner’s side. If the rules already exist, then why not just enforce them instead of making new ones to run the applicant’s around (as well as to provide more barriers to an expected increase in appeals after the new continuation rules were to go into effect).

  39. Not sure why the double post. Perhaps a site glitch unless it is set up to automatically repeat really important stuff…;)

  40. “As I’ve previously said, I’ve never seen in my 30+ years as a patent attorney the level of animosity I now see between the patent bar/applicants/examining corps and the PTO hierarchy. And this animosity is primarily due to the arrogance I’ve seen from the current PTO hierarchy that continues, like with this new proposed Rule package, to “rub salt in the wound”.”

    Might you remember the days when if you had a question you needed to do no more than give Pat Federico a call and talk about it? I do, and collegiality was the order of the day. Prosecution still caused differences of opinion, but never did I feel what now seems to be a pervasive “us against them” mentality.

  41. “As I’ve previously said, I’ve never seen in my 30+ years as a patent attorney the level of animosity I now see between the patent bar/applicants/examining corps and the PTO hierarchy. And this animosity is primarily due to the arrogance I’ve seen from the current PTO hierarchy that continues, like with this new proposed Rule package, to “rub salt in the wound”.”

    Might you remember the days when if you had a question you needed to do no more than give Pat Federico a call and talk about it? I do, and collegiality was the order of the day. Prosecution still caused differences of opinion, but never did I feel what now seems to be a pervasive “us against them” mentality.

  42. Dr. Mooney:

    “Hard to respond without specifics, Michael, but as for myself, I’ve got a Ph.D. in the so-called hard sciences and loads of patent experience. It is not terribly difficult to spot a crap patent when one sees it and, unlike many people who post here and/or opine elsewhere, I have no motivation to pretend that such patents don’t exist or to pretend that such patents are “few and far between.”"

    Clearly letters patent issue every day that do not meet the requirements of Title 35, whether under KSR or under the much maligned TSM approach. However, I do not subscribe to the notion that the way to cure this is place ever increasing burdens on applicants in a prophylactic manner when much of the “problem” resides within the USPTO itself. BTW, the “trivial” invention I refered to involved a way of selective coloring hot dogs and sausage. The meat processing industry responded in a very positive manner because it happened to be very useful throught the industry. Not exactly sexy like high-tech, but it solved a vexing problem nevertheless.

    “Here are the only two real solutions to the “problem” of crap patents: (1) get rid of software and business strategy patents because — as patents — they are ALL crap and (2) hire a lot more examiners and give them the time to do a decent job.”

    Re your #2, I would only add “technically proficient” before “examiner” (or some other phrase of similar import. Your #1 is a bit more problematic. The terms “software” and “business methods” are so generic I am given pause for concern that quite meritorious and useful work can be negatively impacted. It would certainly help to define what these terms actually mean, and to then engage in a serious effort to draw meaningful distinctions consistent with the purposes underlying Title 35. Generic terms trouble me, but then again so do generic claims that in essence appear to try and claim the Periodic Table.

    BTW, my doctorate, so to speak, is a JD. I do not, however, stand on formality as appears to be the case in Europe. Hence, I am perfectly fine to drop all reference to “Esquire” and simply go by the name “Squire Mike”.

  43. “Every practitioner and client with whom I have ever interacted only filed appeals when they were dead committed to the case and when they were willing to drop 3-10 grand on the appeal.”

    3 grand for an appeal? LOL.

    Oh but wait: some people still demand that attorneys prepare and file entire applications for 3 grand. That’s roughly 10 hours of attorney time.

    Yeah, these things must be really really important.

  44. Shame,

    Again, what I see here, like others such as Kevin Noonan and Michael Slonecker have correctly pointed out, is another effort by the PTO hierarchy to punish the “meritorious many” because of the “egregious few,” be they applicants or their representatives. This latest proposed “appeal misconduct” rule is also consistent with the PTO hierarchy strategy to overreach its rule making authority, to unnecessarily antagonize the patent bar/applicants, and to not listen to the very customers (i.e., the patent bar/applicants) that would rather negotiate a solution but who are now forced to defend themselves by legal action (via the GSK/Tafas suits) to prevent implementation of ill-advised, ill-considered, and manifestly improperly promulgated Rules beyond the authority of the PTO to promulgate. Witness the preliminary injunction granted by Judge Cacheris on not one but multiple grounds that GSK/Tafas were “likely to succeed on the merits.”

    In fact, these latest proposed Rules are consistent with the pattern of the PTO hierarchy to force on the patent bar/applicants a comprehensive rule package that is odious and burdensome, yet try to “disguise” this package as a separate sets of Rules because the PTO hierarchy realizes how this would be viewed by OMB (and others) if these Rules were considered as the whole that they are. In my opinion, any rules package promulgated by the current PTO heirarchy is inherently suspect because of the devious approach (it’s readily apparent whether the PTO hiearchy wants to admit to it or not) they’ve taken in the past on, for example, the Claim-Continuation Limitation, IDS, and appeal Rules. In short, the current PTO hierarchy has completely shot it’s credibility with the patent bar, applicants and even its own examining corps.

    As I’ve previously said, I’ve never seen in my 30+ years as a patent attorney the level of animosity I now see between the patent bar/applicants/examining corps and the PTO hierarchy. And this animosity is primarily due to the arrogance I’ve seen from the current PTO hierarchy that continues, like with this new proposed Rule package, to “rub salt in the wound”.

  45. ***What’s the basis for statements like “Patent prosecutors and practitioners in front of the PTO have been engaging in what can, at best, be called gray ethics when it comes to prosecuting poor patents, making arguments and filings for the purpose of burying and confusing examiners and the BPAI, and just generally attempting to game the system by treating the PTO as an adversary in a non-adversarial context.”***

    This a non-serious question, frankly. We’ve discussed the “basis” for such assertions ad nauseum, and very recently.

    How about the recently filed application we discussed with 1500 claims where one of the claims plainly reads on sonar?

    The days of the patent free-for-all are drawing to a close. Good riddance. Why whine about it?

  46. “It is important to keep in mind that not every invention deals with esoteric technology. Many are directed to the mundane. That alone is not, however, a criteria by which to pre-judge such inventions as “bad”. I submit that those who attempt to attach such labels at the outset, or even after an application for such an invention issues, are the ones who are in fact disserving the public interest.”

    Hard to respond without specifics, Michael, but as for myself, I’ve got a Ph.D. in the so-called hard sciences and loads of patent experience. It is not terribly difficult to spot a crap patent when one sees it and, unlike many people who post here and/or opine elsewhere, I have no motivation to pretend that such patents don’t exist or to pretend that such patents are “few and far between.”

    The fact that the PTO is issuing fewer patents (on a percentage basis) is great news FOR EVERYBODY WHO CARES ABOUT PATENT QUALITY. Any attempts to spin that result in another direction are misbegotten.

    “If I may be so bold as suggest that if there does exist a real problem that demands attention to rectify unintended consequences under current law, the solution lies in the tailoring of changes narrowly directed to solving the problem, and not a wholesale scrapping of the “system” in its entirety.”

    I agree with this, generally speaking. Here are the only two real solutions to the “problem” of crap patents: (1) get rid of software and business strategy patents because — as patents — they are ALL crap and (2) hire a lot more examiners and give them the time to do a decent job.

    Problem solved.

    If KSR hadn’t happened, I’d offer a third real solution but the Supremes took care of that for me.

  47. Like Mr. Noonan I post under my actual name since I am always prepared to stand behind my statements and defend them whenever necessary. What “Shame on you” has leveled against those who practice before the USPTO demands a reply.

    The Rules of Professional Responsibility governing representation of clients before the USPTO have been embodied in 37 CFR for a number of years. They are no more and no less than what is expected of any lawyer providing services to the public at large. One does have to ask what I believe to be a fair question. If rules governing professional conduct, modeled after ABA standards and reflective of the rules in all jurisdictions of which I am aware, are presently in place to define what is and what is not expected of practitioners, then just what is it that underlies the proposed implementation of yet another set of rules? The ABA standards have been vetted extensively over the years and their scope and meaning are relatively well understood. I am not at all sanguine that the promulgation of yet another set, largely duplicative and fraught will ill-chosen and ambiguous language, is an appropriate response by USPTO management. If there are perceived ethical lapses by certain members of the bar, then by all means proceedings under the current set of rules is entirely appropriate.

    I am also deeply troubled by an underlying assumption; namely that many members of our profession place financial self-interest above that of both clients and the public at large. On this point I take umbrage. While it is likely that a small portion of the bar might be susceptible to being viewed as such, perception and reality are rarely the case. A lawyer is tasked with vigorous representation of his/her clients within the bounds of law. To suggest that performing this most basic of responsibilities disserves the public good widely misses the mark. The public good has historically been viewed as most beneficially served by precisely such conduct on behalf of clients.

    What I do imply for the post is a basic distate of representation on behalf of clients who have invented what some would call a “bad” invention. However, in virtually every case where I see such an characterization being raised, it has been associated with extreme examples of what many members of the public and practitioners themselves view as inventions of a relatively trivial nature. However, just because an invention may be viewed as such, the inventor is no less deserving of representation before the USPTO than any other inventor who many would agree has come forth with a “good” invention. The last time I looked even what can be considered by many as “trivial” is entitled to all rights that may be garnered under Title 35. Many years ago my law partner was asked to prosecute an application for an invention that would undoubtedly be classified as “trivial” by many, and yet it turned out that is the specific industry to which the invention pertained it addressed a low cost and extremely simple solution to a vexing problem that had faced the industry. It is important to keep in mind that not every invention deals with esoteric technology. Many are directed to the mundane. That alone is not, however, a criteria by which to pre-judge such inventions as “bad”. I submit that those who attempt to attach such labels at the outset, or even after an application for such an invention issues, are the ones who are in fact disserving the public interest.

    My patience is wearing thin with those in academia, politics, certain members of the general public, and a seemingly small group within the legal profession, who continually spout the mantra that the “system is broken” and sorely in need of reform. Far from being broken, I see the system moving forward in largely the same manner as has been the case ever since the first Patent Act was enacted about 1792. It appears to have served our country well in a manner consistent with Article 1, Section 8, Clause 8.

    If I may be so bold as suggest that if there does exist a real problem that demands attention to rectify unintended consequences under current law, the solution lies in the tailoring of changes narrowly directed to solving the problem, and not a wholesale scrapping of the “system” in its entirety. To me that is akin to amputating an arm to treat a splinter lodged in one’s finger.

    I have the upmost faith in the integrity in the vast, vast majority of our colleagues that they consciously and faithfully attempt to do that which is expected of them under our laws. To suggest otherwise is an affront.

  48. Shame, speaking for myself, I don’t have a problem with an examiner who does a good job on the first OA and finds killer prior art, or makes a good argument for obviousness. I’m not interested in getting my clients more than they deserve, just what they deserve, and if they got scooped and didn’t know it before filing – tough for the client. But there are many examiners out there who a half-baked job, forcing us to use the other procedural tools available – continuations and, at some point, appeals – get the client what he deserves. As David Boundy has pointed out in his comments on the appeals rules, the various rule packages, taken together, are an attempt by the PTO to change applicants’ substantive rights, dressed up as procedural rules: no obligation by the examiner to do a good job, and, without continuations and with claim limits, and now with appeals rules that make it impossible to meaningfully appeal, no recourse for applicants who get screwed. I’m much more concerned about allowable claims not getting allowed than non-allowable claims getting allowed. The PTO’s view is just the opposite. With my approach, at worst you might have to pay some money to a patentee who shouldn’t have gotten a patent; with the PTO’s approach, you might never see some good technology get developed b/c the patent was never granted and the investment money never followed.

  49. Shame on you. Personal freedom also is bad for the economy. In fact, that is why the world economic forum does not adhere to any particular governmental form. The fact is Shame, our forefathers heard these arguments in the 18th Century and opted to rebel against a government which, in their minds, was ordained by God. In the 19th Century we were, once again, to war on the very economic issues you advance . . . slavery was more economically efficient than paying people yet we thought that personal freedom should trounce the economic rights of slave holders. Then again in the 20th Century Nazi Germany showed us how effecient an economy could be run if you simply take a segment of the population and deprive them of their personal property and after working them for all they are worth, letting them die.
    I submit to you Shame that personal freedoms must always be paramount to economic efficiency.
    You sing a song that we have been trying to silence for eons.

  50. “Patent prosecutors and practitioners in front of the PTO have been engaging in what can, at best, be called gray ethics when it comes to prosecuting poor patents, making arguments and filings for the purpose of burying and confusing examiners and the BPAI, and just generally attempting to game the system by treating the PTO as an adversary in a non-adversarial context.”

    Shame, the problem as I see it is that you are taking the misconduct of some attorneys, and applying it across the board to all patent attorneys. (“They’re all bad – wipe out the whole lot and start over.”) Whenever I read a new rule proposal, I approach it from the perspective, “They think all of us are wicked so any harsh treatment is justifiable in their eyes.”

    You know, you’re stereotyping to the nth degree. What if I stereotyped all examiners based on the bad ones (there are not a few), or all politicians (likewise)? How productive could that possibly be to fixing our current problems?

    I agree with you that the system is broken, but to fix a broken system you need to understand the root cause(s) of the problem(s), and this USPTO management has not been able to do (because it lacks the required knowledge of the system).

    Well, it can continue to stereotype and point to supposed villains and call itself a victim… rather than addressing the true problems. But in the end, that won’t help the country….

    P.S. You haven’t noticed that the USPTO doesn’t listen to or heed “positive criticism” as presented to it in the comments to the proposed rules? Why do you think that is – because the USPTO assumes it knows better than patent attorneys who are merely self-serving hucksters anyway? There you go again….

  51. Dear Shame,

    There’s nothing baseless about our complaints. The PTO is trying to gut our clients’ statutory rights through the rule making process, which leaves many of us abjectly horrified. Dudas is in charge of, and therefore responsible for, whoever is doing this. I personally said we should petition for his removal, and I stand by that (although it doesn’t look like happening).

    I also agree with those who say that Margaret Peterlin is unqualified and should not have been appointed, although I think this may be the first time I’ve said it.

    I don’t think those are merely ad hominem attacks. The recent rules packages attempt to exceed statutory authority, as has been cogently argued already by others here, and the statute also says that the political appointees must have relevant experience. I don’t think that being a congressional aide is relevant, along with most of the people here.

    I do treat the Examiners as adversaries most of the time. That doesn’t mean that I regard them as enemies. There’s a big difference between the two. I have some trouble believing that the process is non-adversarial, although it might be on a good day. Oddly enough, I don’t think that rolling over and playing dead is adequate representation.

  52. Dear Shame:

    Want to supply some facts to back up the allegations? What’s a “bad” patent? One with 1 questionable claim (which can be a matter of opinion)? Or one tieh no unquestionable claims? What’s the basis for statements like “Patent prosecutors and practitioners in front of the PTO have been engaging in what can, at best, be called gray ethics when it comes to prosecuting poor patents, making arguments and filings for the purpose of burying and confusing examiners and the BPAI, and just generally attempting to game the system by treating the PTO as an adversary in a non-adversarial context.” And if your answer is “Everybody knows,” that just won’t cut it – you made some pretty strong statements, can you provide any evidence to back them up?

    Just asking.

  53. Patent prosecutors and practitioners in front of the PTO have been engaging in what can, at best, be called gray ethics when it comes to prosecuting poor patents, making arguments and filings for the purpose of burying and confusing examiners and the BPAI, and just generally attempting to game the system by treating the PTO as an adversary in a non-adversarial context. The tightening of ethical rules in the BPAI, and in standard prosecution at some point, will go a long away toward curbing this borderline unethical behavior.

    And it’s amazing to me how the comments here reek of self-serving self-interest. More patents, particularly more bad patents, are not only a bad thing for our economy, but violative of our basic notions of the public good over personal self-interest. The equivocal economic evidence on patents, at least, should be familiar to anyone who knows a bit about innovation economics. Patent prosecutors seem to have chugged the Kool Aid on “patents are always good” without a shred of positive economic evidence, but with a great deal of personal self-interest.

    The PTO is attempting, in fits and starts, to fix what has become a broken system. Instead of positive criticism, this forum has been filled with negativity and insults towards individuals in an agency that are, in their own way, doing more to look out for the public good than any of the prosecutors who want to preserve an unwieldy, ill-functioning system that nets them exorbitant legal fees. And the way that certain individuals have been insulted in this forum with ad-hominem attacks (Arti Rai and Mark Lemley come to mind, not to mention Dudas and Doll) is abhorrent. When I read these comments, I’m sometimes ashamed to be a part of the same profession as some of the commenters.

    I sincerely hope that you all do some soul-searching and research on these issues before posting your vitriolic and baseless reactions – such conduct becomes our profession and would raise the level of discourse here immensely.

  54. “Advancing or maintaining a misleading or frivolous request for relief or argument.”

    Does this go likewise for Examiners?

  55. When this is combined with court deference for administrative agency factual findings, this looks like a killer.

  56. Here is the issue that the USPTO better start coming to grips with. If a rule destroys a statutory right . . . IT IS NOT PROCEDURAL. Therefore, ANY rule that detracts from a patent right is not procedural, e.g., filing of a terminal disclaimer. ANYONE who is sanctioned by the BPAI with a terminal disclaimer should consult with a civil rights attorney. Once a few of these people have been sanctioned under a section 1983 action they will understand the difference between a procedural rule (one that they have authority to promulgate)and a substantive rule (one which they don’t have authority to promulgate) It is sad, but I think that the stakes are sufficiently high that it will take nothing less than a finding of liability under Bivens actions brought pursuant to Section 1983 to get them to start operating in a Constitutionally approved manner.

  57. “Failure to comply … with an applicable rule.”

    TJ, I think you are well aware that the proposed sanctions can be triggered by conduct that falls well short of “disobeying orders, making frivolous arguments, and engaging in dialatory tactics.”

    I suppose one point of view might be that we should trust the PTO not to misapply the proposed rule 41.56, but given the content of the modified rules which requires appeal brief’s to include content that is prejudicial to the client’s interest and which has no basis in law other than the PTOs rules, it is difficult to believe that the PTO should be trusted in this way.

  58. One Strike and You’re Out:

    [The pitch brushes back the appellant]

    “Steerike One!”

    “But Sir, I didn’t swing!!”

    “What did you say? Are you trying to delay the termination of this proceeding and set forth another frivolous argument – that’s Steerike Two and Steerike Three!! Next!”

  59. Notice that none of these “sanctions” actually apply to the person prosecuting the application. They only apply to the application itself. In as much as this type of regulation exists in the court system as well, I don’t see how this is as bad as the rest of the rules package.

  60. Further to what Gideon said, the worst is that these rules seem to allow the USPTO to apply sanctions arbitrarily.
    The only choice would be the prohibitively expensive CAFC or civil suit.

    Since there is no personal consequence for anyone at the USPTO for losing in court, this is a great way to stop issuing patents.

    Maybe the solution is to eliminate the current examination process and have all patents “examined” by a jury.

  61. Ayyy.

    It just keeps getting more bizarre.

    Seriously, how much of a problem is there?

    Every practitioner and client with whom I have ever interacted only filed appeals when they were dead committed to the case and when they were willing to drop 3-10 grand on the appeal.

    Seriously, this has got to be some kind of Twilight Zone/Bizarro World joke.

    If there’s one place that applicants DON’T delay or frivolate, it’s on appeal.

    It’s all about keeping appeals low.

  62. I love 9 & 10: “(9) An order denying an oral hearing. (10) An order terminating an oral hearing.”

    So what #10 really means is that during an oral hearing, one of the ALJ’s can yell “Get the hell out of here!” and pack up. I guess this is how the USPTO planned on handling the anticipated flood of appeals had the new rules gone through.

  63. You know Appeals used to be the only fun part of this job.
    I really should look into that teaching job or file that ice cream franchise application.

    Really these rules are just putative measures to keep attorneys from filing appeals.
    The only dilatory tactics I have ever seen were committed by the PTO.

  64. And on the lack of requiring intent. Imagine the following lawyer-judge conversation: “Sure Your Honor, we flagrantly disobeyed your Order, made a bunch of frivolous arguments, and engaged in delay for no apparent reason — but you can’t prove that we *meant* to do all of that, so you can’t sanction us!”

    Courts sanction litigants for misconduct without proof of bad intent all of the time (see, e.g. Schreiber Foods v. Beatrice Cheese (Fed. Cir.)); lack of intent is at best a mitigating factor, not a get-out-of-jail-free card as patent prosecutors have enjoyed until now, and apparently believe they have a continued entitlement to.

  65. Good luck convincing a court that disobeying orders, making frivolous arguments, and engaging in dialatory tactics should not be sanctionable. Ever read FRCP 11 or FRAP 38? A court that holds the words “frivolous” or “dialatory” to be so ambiguous as to violate due process will severely impair its own sanctioning authority. In short, no way.

    As for the redundancy, there is a difference between a frivolous argument and a frivolous appeal. A meritorious appeal may have 1 meritorious argument and 20 frivolous ones. Applicants do not (or, at least, should not) have the unlimited right to clog the BPAI’s workload by making 20 frivolous arguments, even if they have 1 meritorious one.

  66. Hey USPTO and the APJ’s who drafted this proposed rule: please adopt it, so it can get knocked out by some real judges as yet another example of the PTO exceeding its authority. Demand a terminal disclaimer for “appeal misconduct”? I don’t see where the statute allows the PTO to demand that an applicant give up patent term b/c the applicant did something to piss off the people on the appeal board. But as real anonymous pointed out, we all know what this is really about: reducing the backlog by making it easy for examiners (including the increasingly prevalent incompetent ones) to make bogus rejections of applications, and de facto denying applicants the ability to either appeal or file continuations from those bogus rejections.

  67. Similar to the above, can anyone at the USPTO point to examples of dilatory tactics on appeal etc. Are there any really egregious cases that could not have been addressed by rules that are already in place?

  68. Note that this rule sanctions “appellant”, not “appellant’s representative”. As such, it appears to be consistent with the rest of the rules package in fixing the “problem” (i.e. appeals) by quashing.

  69. “Eighth, and most generally, this rule seems to be a solution needing a problem.”

    I’de be interested in hearing counterpoint from a current BPAI member and/or drafter of this rule. It does seem that these rules are being adopted to fix something, but I have seen no recognition or discussion of what that “something” is. The ALJ or drafter may have a better idea.

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