- A new Intellectual Property Symposium is coming up in April 15–16 in San Jose with EETimes as the main sponsor. Speakers include Jon Dudas, Peter Detkin, Michael Meurer, David Pressman, Jim Malankowski, Steve Baik, and others. The price is a steep $1,795. Patently-O readers receive a $100 discount by following this link: https://www.cmpevents.com
/ESCip08/a.asp?option=B&SC =BPO1?cid=patentlyo. (Note: Conference organizers get top billing by offering a discount to Patently-O readers.). - Jay Wahlquist at Fogg & Powers has created a new free toolbar termed “The Patent Pal.”
- The IRS is holding a hearing on Feb 21 on its proposals for requiring reporting of any licensed use of tax strategy patents. Comments are due by January 31. File Attachment: IRS.Notice.pdf (103 KB); File Attachment: IRS.ProposedRules.pdf (33 KB).
- New Patent Jobs:
- Assistant/Associate Clinical Professor of Law – University of Connecticut
- Associate Attorney, Chemical Prosecution – Law Firm – Washington D.C.
- Patent Attorney – Law Firm – Beverly, Mass.
- Patent Agent/Attorney – Law Firm – Alexandria, Va.
- IP Associate – Law Firm – Chanhassen, Minn.
- Experienced Patent Attorney – Law Firm – Spokane, Wash.
- Director, Global Patent Counsel – Small Corporation – St. Louis, Mo.
E6k writes: “Greater- I’m not against agents, you must have mistaken me for someone else. Agents are fine with me, well, just as fine as atrnys anyway.”
How can you tell the difference, based merely on a filed patent application? Do you look them up on their firms’ websites?
A simple, yet drastic way to get the issue before the examiner right up front and make sure that there is no “hiding the invention”:
Answer: Do not allow the applicant to add or amend the claims (other than to cancel or rewrite in independent form). Even raise the # allowed with the basic filing to accommodate this to maybe 40(?) with 1 independent per statutory class that the applicant wants to (and supports) claim. That way, the everybody knows what needs to be searched and claimed. Even allow preliminary amendments prior to any 1st action (gives you guys time to “refine” your claims better). Still allow continuations, etc.
As an addendum, if you want to to change what is claimed, or add any new limitations, you would have to abandon the original case & file as a CIP (not continuation). Enforceability of the new claims is only as of the time they are filed, though the applicant would still be entitled to the effective filing date the new claims have support for with respect to prior art (Yes, these are changes to CIP which would have to be put in place).
Just a random idea on a Friday afternoon.
thanks,
LL
“JustanExExmr
You could add to your list “remove incentive to issue final rejection”.
As the system works now, there is no reasonable way to recover from a first Office Action when an Examiner misunderstands the claims and therefore does a wrong search and cites irrelevant art.
In response, the Applicant explains why the art is irrelevant.
The Examiner knows that a new search must be done as the claims haven’t really been examined, but the way the system is set-up, a new search can only be done on the Examiner’s free time and at the expense of bonuses. Thus, the Examiner has a personal interest in issuing a final rejection and the Applicant must file an RCE.
Estoppel is generated, the Applicant wastes money and time, the Examiners learns that the best way to advance without working hard is by not doing their job as it should be and the backlog increases.
My feeling is that Examiner#6 suggestion of giving more time to examine each application would solve this.
Posted by: Erez Gur | Jan 17, 2008 at 02:07 AM”
I would definitely add that to the list but purport that it would be a natural conclusion of getting rid of a production goal and bonus based examining system. You are absolutely right – the Examiner does have a personal interest in getting to final ASAP, and that’s the problem with the whole system.
To this EPO practitioner, that last assessment by Erez Gur has the ring of truth about it. Makes sense to me. Anybody there who would argue that it’s wrong?
I feel sorry for the Examiners. How are they supposed to do a meaningful search, when US patent attorneys deliberately remain silent about in their apps about what really matters. They give the Exr two things to search. It’s either a boundary fence around an open plain so wide that it includes all sorts of old stuff, or a pinpoint within that area corresponding to their illustrated embodiment. Where is the nicely graded set of dependent claims, with supporting description of ever better technical effects, as one marches forward, through successive castle walls, on the way to the treasure chamber containing the best mode. For as long as the system rewards those who leave out of their apps all the intermediate stuff, that in practice is going to be of crucial importance, the system will stay inefficient.
JustanExExmr
You could add to your list “remove incentive to issue final rejection”.
As the system works now, there is no reasonable way to recover from a first Office Action when an Examiner misunderstands the claims and therefore does a wrong search and cites irrelevant art.
In response, the Applicant explains why the art is irrelevant.
The Examiner knows that a new search must be done as the claims haven’t really been examined, but the way the system is set-up, a new search can only be done on the Examiner’s free time and at the expense of bonuses. Thus, the Examiner has a personal interest in issuing a final rejection and the Applicant must file an RCE.
Estoppel is generated, the Applicant wastes money and time, the Examiners learns that the best way to advance without working hard is by not doing their job as it should be and the backlog increases.
My feeling is that Examiner#6 suggestion of giving more time to examine each application would solve this.
Greater- I’m not against agents, you must have mistaken me for someone else. Agents are fine with me, well, just as fine as atrnys anyway.
6k: why are you against patent Agents? We all were patent Atty at one time until the ABA influenced “the mere patent agent” slam. Most likely all roads still lead to Roam; so perhaps its the money. As a former Examiner I have found the ave Pat agt to be superior to the ave atty so far as regards Practice before the USPTO . Being a Lawyer vs Pat Agt = $300/hour difference and thats that so far as regards getting a Pat App properly Filed & litigated thru the USPTO as Letters Pat.. Spending 27 months studying property law and bills & notes has little advantage over one who loves and respects the US Patent System and works hard at learning his profession and treating His Clients with respect. I am past 80 yr old and will always beleive that the US Patent Syatem (as it was in 1960 and before) was the one defining impetus that made the USA greater than any other country. NOT ANYMORE! I am so sick of the inapt whizz-kids involved in the mis-management of our Pat Sys I could pulk. As a WW2 Navy Vet I know and understand what its like to have a nutty captain at the helm. God Help Us. Bureaucracy Sucks Big Time but maybe we can manage to overcome- others fron another era have done so. Im not too sure about some of You who seem to have taken the wrong of two roads.
“6k-
You don’t have a regular job, and if you think you are simply a gov hack (and your Examiner buddies think the same) that would go a long way to explaining the problem.
I don’t care what you make, I simply want quality exam from experienced examiners. If increasing salaries won’t keep the exminers from leaving what will? Got any ideas?
Posted by: me | Jan 14, 2008 at 02:17 PM”
More money never hurts but that won’t solve the problem.
Here is what will (according to me, and I could be leaving some things out, or be wrong, it’s happened before!):
-get rid of production; reasoning: I worked at the USPTO for almost a decade, left, went into private searching without production goals and realize artificial limits on the quality of a search, even within very specific technologies, are what truly hurt the ultimate quality of a search. Sure, complex technologies will on the average take longer than more simple concepts, but it varies so much from application to application that these types of artificial limits can’t be placed with the expectation that anything other than gaming the system to get higher production results. No quality considerations there. That is what we have now.
-hire more experienced (Ph.D’s; researchers, etc.) technologists (and pay them more if you have to); reasoning: they will be able to take more shortcuts and know how to target relevant concepts quicker. Official Notice will be easier to take for them because they actually are one of ordinary (or greater) skill in the art. They also will be able to spot bogus “claimed” novelty. They will also be able to tell lower/middle/upper management where they can shove it, when something actually is allowable.
-get rid of all current managers that can’t demonstrate a baseline level of knowledge required for their job (SPEs must demonstrate very good management potential/human interaction skills and possibly having been on at least one date in their lives; Directors must demonstrate that they are answerable and 180 degree reviewable by their TCs; SPREs – current IP knowledge and ability to communicate and disseminate that knowledge in an accurate fashion); reasoning – in my nearly decade at the USPTO I could count on a single hand the number of “managers” who actually had the qualities that make a good manager (staying on top of their people; leading; teaching; mentoring; identifying strengths/weakenesses; ability to relate…ad nauseam); the upper management needs to pretty much just be swept clean – for at least as long as I’ve known about the USPTO they have had a 1 step forward, 3 steps back approach to changing things. Some of the SPEs can’t even speak or write very good English (how does that even happen at a U.S. federal agency???) A fair bit of the Directors are completely out of tune with what is going on in their T.C.s.
-all members of the BPAI must come from the Examining Corps and understand that technology
-all thoughts of Examiners are written in an Interview Summary and completely admissible throughtout the entire length of prosecution and litigation. SPEs have no authority to limit this language other than for violations of ethics (no hate language, cursing, etc.); reasoning – I can’t tell you how many times as a junior I was prohibited from writing down something in an Interview Summary to the effect of “I just don’t agree that these limitations are novel but I have no more time to examiner the case and am therefore am allowing the claims because I’ve only had the time to really search for the concepts of half of the 30 independent claims. As to the other 100 dependent claims, those weren’t evaluated at all, but I do feel that changing something from one side to the other, from front to back, the size of something and all of these concepts are fairly well known and accepted ordinary practices in the art.” That way, even though the case is allowed, you are giving future plaintiffs something to go on other than “Why on God’s green earth did the examiner just all of a sudden decide to allows this???”
-more involvement in helping the USPTO and the US patent system become a better place; reasoning – examiners are the worker bees of the US Patent system. There is a wealth of information and experience right there on how to make it better. Why are their voices not one of the larger factors in change? I can tell you after leaving the USPTO that I have been almost doubly as productive (and umpteen amounts happier) in my work life by being actively involved at my place of work, rather than just treated as a production churner.
-incentives to utilize the legal/technical experience and education of those they have paid to go to law school/masters/Phd; reasoning – it’s beyond explanation why the USPTO would pay ~100k for someone’s legal education or less (but still a good bit of money) for their technical education and then let them walk out the door a couple of years later? Why even pay for it if you aren’t receiving any benefit from it? These people could be turned into mini-SPREs within each art unit or technical specialists.
Come on guys, #6k is the Tokyo Rose of the PTO. As equally misinformative and hilarious. Just enjoy.
And #6k, as you’re a young, hip dude, feel free to google or wiki Tokyo Rose. And you have my permission to take Official Notice of her in future postings.
Publius writes “#6k: Get a different job, go to school full time, whatever – just get out. Anyone who hates their job and the people they serve as much as you profess has no business in the job.”
I agree, and you will be a happier person and enjoy life more.
#6k:
Get a different job, go to school full time, whatever – just get out. Anyone who hates their job and the people they serve as much as you profess has no business in the job.
6k-
In the end it seems the Examiners and the attorneys/agents who prosecute before you are generally on the same page. Good news, if we can nudge the PTO administration to reality.
“[I have] yet to go up against a patent plaintiff who I really believed even had plausible arguments that his patent was valid and infringed”
My Head In Your Sand,
You might want to think about your particular perspective as a litigator specializing in patent infringement defense who is still in the relatively early years of his or her practice.
Only about 1% of all patents are litigated. An important factor that a defendant considers in deciding whether to litigate or settle is the initial determination by senior counsel that strong arguments can be made that the asserted patent is either invalid or not infringed. It perhaps is not surprising then that the only cases you’ve been exposed to are ones where the defendants’ cases are strong.
“RA- Trying to out-young the young, now I’ve seen it all on here.”
X6K – actually I was just trying to figure out the young. It will be better with you if you develop a little more respect for your elders – you just might learn something (most of the people I know with “know it all” attitudes are young teens who thankfully wise up quickly).
P.S. I did Google it, knew the vulgarity that you meant – link to en.wikipedia.org – and decided to highlight its inanity instead. Heaven help us.
VA- That’s the worst thing about it, I did save my textbooks (every last technical one), but in todays world we use pdf notes by our professors, and they hand out mountains of them, and in some cases they just teach from them and don’t even hand them out the concept is soooo simple and they want to catch people that didn’t come to class right? I even have still a small mountain and have gone through some of it though the problem with this is, again, even if I do get it all together, and read it all till my eyes fall out and know where everything is, I’m still being called upon to find it in the alloted time, and looking through all and it not being there, that’ll look good on the search report “looked through my mountain of papers, wasn’t there”. Yes, it helps once you get good enough to do that stuff, but that’s why they pay the veteran folks here more money.
Besides that, even assuming that’s the thing to do, which it is, that still doesn’t address the problems of people submitting stuff they know (or have strong reason to believe at the least) is not what they actually invented. If it only took me 10 hrs instead of 20 hrs on a few bad apps, what difference does it make in the long run for the office? None, we’re still deluged with the bs. And what if, like many of my fellows they didn’t major in this? Is it now required that applicants to be examiners come with their own mountain of art? I’m pretty sure we’re supposed to have some of the best searching facilities available made available to us, and I can assure you that 7 random books given to me on my subject, EAST (complete with horrid classification), and google doesn’t come close to being sufficient in my art.
RA- Trying to out-young the young, now I’ve seen it all on here. For Shizzle My Nizzle, It’s the E6k Double-u Gizzle. tha shizzle = the shLt, google it old man, I would do it for you but I’m just taking a small break from googling someone some art they know exists (as evidenced by the “if this amendment, that my applicant made me make, does not place the application in condition for allowance plz call me. me love you long time xoxo, Lawyer”). Did I mention I 102b rejected him over his own NPL? I mean come on, seriously. One hour then I’m gonna have to call it quits for tonight. Parking is free in the decks if you leave after 11 you know 🙂
My head in your sand:
Up until the point I read your disclaimer I assumed you were in some fashion associated with academia. For a brief moment I even entertained the notion that you might be one specific person who shall remain unnamed. Based upon what your disclaimer states, I assume your experience in the field of intellectual property has primarily involved the field of litigation, and not at the front end where you first meet a client who has come to tell you about what he/she has developed (whether it be under patent, copyright, or any one of numerous other laws).
It is easy to fall prey to generalizations. It is also easy to fall prey to problems and solutions presented by others with only limited experience, if any, at the front end of the process. The antidote for each of these is to become immersed and informed in all aspects of the process. Perhaps then you will come to realize that much of what has been promoted as reform bears little relevance to real world scenarios faced by authors, inventors, businesses, etc.
“Here, I spend 1/2 my day looking at a boring computer screen searching (east, google) for art I already know exists from basic school and grad school classes (then I usually fail and spend the rest of the day doing this until I succeed, which I usually do).”
Shoulda saved your text books.
“Me and Real- I know guys, you guys think this job is tha shizzle”
“Shizzle is a rap slang word for “sure”, coined by E-40 and popularized by rap star Snoop Dogg. It has been adopted by several rappers and reggae deejays and is commonly used as: “fo’ shizzle” as in, “for sure”…”
“Izzle kizzle, fo’ schizzle
My nizzle, yo fizzle kizzy wizzy izzle what you sizzle?
Fo’ schizzle bizzle, ha ha yo shut yo lippyizzle”
Thanks, X6K… In yo spare time, keep up the good Zaminin, ya’ hear? (Good to know the government’s policy thinkers know rap!) jk
[I wonder if I can out-dumb the spam filter.]
“That most patent prosecutors want to get rid of Section 1.56 speaks volumes about where a lot of the blame for the current problems should sit.”
My head in your sand, do you know we’re the only country in the world to have a 1.56 type “duty to disclose”?*
Doesn’t that tell you anything, that the other countries’ patent systems are functioning better than ours without being availed of such a “benefit”? How is it that the European and Japanese Examiners can find prior art, while ours need to rely on applicant citations, or so it is alleged in litigation? (I am not saying we should eliminate Rule 56 necessarily since I see its “benefit, but we certainly can and probably should eliminate its “cost” and the way litigators use the rule….)
*NB: Japan has a “duty to disclose”, but is is completely different and has nothing to do with citing “prior art”.
Spamfilter says I’m done. Good to have the litigator here to say it eloquently how it is.
Me and Real- I know guys, you guys think this job is tha shizzle, and that somehow being an examiner is lauded by people in some manner, the only thing that changed from back in the day examining to today is we’re mindless zombies over half of our day looking at a screen and people woke up that there’s no reason to respect examiners who have no “authority” to enforce what they know to be prior art without having to pull it, and make a rock solid case, and I mean rock mo foin solid, not Prima F. solid, see further about the recent switcharoo on Off. notice. Nobody seems to understand that NOBODY (with few exceptions maybe) respects someone shat upon so much as the examiner corps has been in the last 30 years and then can’t even strike. If we could strike do you think there is a small chance in hell that it wouldn’t have happened yet? None, no chance in hell. And don’t think paying us more is going to magically fix the problem of retention. The GAO wasn’t lying when it said production is why people want to (and do) quit. Examination, done properly, is just simply not something that you can slap an avg time on. Sure you can, and you can make the examination fit that time, but then you took the “done properly” out of the statement. Problem with this is now though, the number of apps is going up so much we have to have some kind of production sys to force overworking/cornercutting/artfitting of/by the people we have just to keep the system’s head above water.
Not an ordinary job? NOT AN ORDINARY JOB? O rly? Let me see, at one company I worked for I sat and stared at a computer for half my day, then went and worked on the manufacturing floor around with experiments AND PEOPLE etc. My day lasted up to 10 hours rarely, and only 5 days a week. Here, I spend 1/2 my day looking at a boring computer screen searching (east, google) for art I already know exists from basic school and grad school classes (then I usually fail and spend the rest of the day doing this until I succeed, which I usually do), then spend the other 1/2 looking at a boring computer screen writing up the rejection etc. Then I look at the response pointing out every small detail that was not perfect with my rejection (real or imagined detail mind you) and then either do it over, or tell them why they’re wrong. My day lasts usually a minimum of 9 hours, many times 10 a day, and always 6 days at least a week. And for this, I get to live in DC (joy, lol) 10th? highest cost of living in the US. Why, you know what? By jove, YOU’RE RIGHT, my job is MORE THAN ORDINARY, because ordinary jobs have an ordinary level of suckiness, but mine has extraordinary levels of it. Why? Because in the beginning years of examining the production system works hard against you then slacks off, don’t ask for a detailed breakdown it’s long. The only thing anyone has to respect about my job is that 1. it can even be done and 2. it is done and 3. people do it. Why am I doing it? I won’t be for too much longer, hitting law school and going to be one of the newly minted attrny. that examiners have to deal with. Funny thing though, right as I get in the game, all the tables are set to be reversed by judicial decisions/reform.
Don’t think I don’t know what it’s like to prosecute an app, I have no doubt it’s one huge headache, that you make it into, to say the very least. Tell me how much I care? Not one whit, because there is nothing I can say or do to change how much of a headache you make it into. Fill out the necessary forms for initial app., claim narrow, get allow or get a decent rejection or a terrible rejection. If terrible, call the SPE then the director, have new OA sent. If decent rejection of your narrow claims, ABANDON. Come back later if you wanna go for a broad claim. Unfortunately, everyone feels entitled to the other way around and to “get something”. All I have to say is you’re choosing the hard way, qq. Need more instructions? Hire me as your personal representaloltive.
also, yeah “inextricably”, my bad
and yes MM etc. I know it’s case law fin with things and I’m reading a lot of it lately. And the huge problem with caselaw is it sometimes fits a particular situation, and sometimes that situation got by one way or another by the skin of it’s teeth and was based on all kinds of evidence etc. that there is none of in the case before me. Fine with me as long as In Re Aller can be used for all ranges (even though it really can’t and they’re free to point that out and put the range in the ind.).
Slonecker: What exactly is wrong with peer-to-patent? It’s an attempt to solve some of the issues with the PTO by leveraging peer production models and may result in higher quality examination. Does your objection have to do with the ex parte nature of the process? The fact that fewer patents will (probably) result? IMO it’s actually one of the few reform proposals that both “sides” should be able to agree on, assuming they want higher quality patent grants.
What amazes me about most of the comments here is that the patent bar refuses to internalize (1) the externalities generated by patent grants, i.e., that more patenting is not per se better for anyone (including the patentee) and (2) that many of the current problems with the patent system lie at their feet.
The PTO is failing to function properly as an agency – I think everyone agrees with that. But I see much of the problem coming from a patent bar that refuses to turn away clients with clearly invalid patent “ideas” and instead uses tricks and obfuscation to force these ideas through harried examiners and into a patent grant. For his lack of eloquence, I think this is the point that Examiner6k is trying to make. That most patent prosecutors want to get rid of Section 1.56 speaks volumes about where a lot of the blame for the current problems should sit.
But anyway, I think the best way to solve a lot of this mess is to end software and business method patents. There is mounting economic evidence that patents are a significant net negative in industries that show fast/cheap incremental and complementary innovation, exactly the characteristics of software (see, e.g., Maskin and Bessen’s work). If we were to end the uniquely American software patent experiment, many of the complaints on both sides would miraculously disappear.
*Disclaimer – I’m a patent litigator who, in five years of practice and involvement in at least a dozen cases, has yet to go up against a patent plaintiff who I really believed even had plausible arguments that his patent was valid and infringed…and yet my clients have spent millions of dollars defending these suits and crippling their products to kowtow to these leeches. The problem is significant and very real, sorry to say.
Malcolm,
As happens not infrequently, the meaning of your post escapes me. Certainly, if there had not been a decision since 1998 the case law up to 1998 still significantly informs the drafting practices of patent attorneys. Was it your point that no case since 1998 has affected the way practitioners draft claims?
Leopold-
Very true, dont think for a second that I wont appeal or call an SPE when required. It just happens less often if you can work together.
“I would recommend grandfathering all current practitioners, agents included. You will have increased value over time, and increased experience on average. We are minting new practitioners way too fast right now,a nd inexperienced folk are gumming up the works in prep, and pros.”
Why didn’t you say so me! Go Me! I’m all for pulling the ladder up behind me.
” KSR going to adversely affect the amount of incoming work (if so, just say it)?”
First, I do not think it will have any adveres effect on the amount of work. Second, I am in house now so it is irrelevant to me if it does.
With respect to being an effective patent attorney (or agent), I’m not sure that being loved by examiners is a conditio sine qua non. But then, I don’t have a Ph.D.
Pretty cool use of Latin, though, huh? I think I’ll try that in my next Office Action response.
“Me, come clean and tell us what really happened between you and that agent.”
I would recommend grandfathering all current practitioners, agents included. You will have increased value over time, and increased experience on average. We are minting new practitioners way too fast right now,a nd inexperienced folk are gumming up the works in prep, and pros.
What happened? Nothing. My best friend is an agent, a good one, and he happens to agree with me. We go hunting together, and he has yet to pull a Dick Cheney. 🙂
“I think you have an axe to grind against agents, because you have made the same suggestion before, and there is simply no correlation between this and the present discussion. Do agents write longer specs with more claims, so as to increase the backlog? I think not.”
We can all hope that more experienced drafters and more experienced examiners can do alot to decrease the backlog.
Me, come clean and tell us what really happened between you and that agent.
Also, how do you expect this to be carried out? Will all agents suddenly be disbarred? What about the “good or great” ones? They get tossed out too?
Attorneys were the ones who talked many of us into entering this profession. At that time, they said it was necessary to fill a need they had. What happened to that? KSR going to adversely affect the amount of incoming work (if so, just say it)?
Is there an increase in the number of agents being hauled up for inequitable conduct, malpractice etc.?
“That’s insane. Agents probably have a better time getting along with examiners”
The examiners in the art unit I work in most often love me. I am easy to work with, have reasons for why I do what I do, and am freely available. Plus I have a Ph.D. in the technology area.
I also bring the Examiners up to speed on why some of their requests (for decs for example) are bad practice and they should be avoided. But one example of how litigation modifies your prosecution – experiences that agents and Examiners almost never get.
“More generally, toughening educational standards will do nothing to make specs shorter and more readable. As a matter of fact, the more highly educated the preparer, the longer they are likely to be, as they may see more pitfalls in potential 112 issues.”
Please explain. This statement seems logically inconsistent to me.
“The Office needs to get rid of agents…”
That’s insane. Agents probably have a better time getting along with examiners, since both are technically minded. Many patent attorneys left technology far behind in favor of word-mincing and case law copy-pasteism.
The minds of agents and examiners have not yet been corrupted but the bizarre state of the case law, and therefore are sacred.
Mr. Palmer-
I practiced as an agent for years, have a Ph.D., and am now an attorney – so I know what I am talking about. The Office can say whatever they wish – I have met many good and great agents – the great agents are only as good as the average attorney as the patent is a legal document with legal effect. The agent exam does not require legal drafting AT ALL and thus agents are generally not particularly good drafters, and many have learned by the seat of their pants. Law school pedagogy is horrendous in general, but it does teach one to read a document and case in a different way (and the good schools teach legal drafting pretty well) – and to think that is irrelevant to patent drafting and prosecution is simply mind boggling.
As for relevance to this discussion? 6k reminds me of a lot of agents that think they know alot more than they do. Finally, this discussion is about quality and my post was on ways to increase quality. My thoughts on the topic will remain the same until you can show some actual reason to change them.
Have a great night.
“The PTO themselves are on record as saying that they can’t discern any difference between work product by patent agents and by patent attorneys.”
The PTO also can’t discern the difference between their heads and their tails.
“The PTO themselves are on record as saying that they can’t discern any difference between work product by patent agents and by patent attorneys.”
Interesting. In just about every first office action I’ve received in the past year, the PTO themselves (?) have gone on record as saying that they can’t discern any difference between my clients’ inventions and the prior art. They might have been right once, at least with respect to the cited art. So much for the PTO’s discernment…
“Examiner #6k I get the impression you are not that familiar with CAFC case law **CIRCA 1998**. It is the driving motivator of a lot of the specific behavior of patent prosecutors”
Fixed the typo.
‘The Office needs to get rid of agents, make the exam harder, and increase retention.’
Me – you can’t get away with casually throwing that in! What is it that could possibly make you think the problem is patent agents? The PTO themselves are on record as saying that they can’t discern any difference between work product by patent agents and by patent attorneys. I guarantee you that if the patent bar had been harder I could still have passed it without a law degree. We all know that the ABA sets most of the JD syllabus and requires zero patent law.
I think you have an axe to grind against agents, because you have made the same suggestion before, and there is simply no correlation between this and the present discussion. Do agents write longer specs with more claims, so as to increase the backlog? I think not.
In addition, if you think that too many attorneys pass the patent bar, this is already the only area of the law in which they have to pass a separate test.
More generally, toughening educational standards will do nothing to make specs shorter and more readable. As a matter of fact, the more highly educated the preparer, the longer they are likely to be, as they may see more pitfalls in potential 112 issues.
Examiner #6k
I get the impression you are not that familiar with CAFC case law. It is the driving motivator of a lot of the specific behavior of patent prosecutors
“The Office needs to get rid of agents, make the exam harder, and increase retention.”
As a patent lawyer, I respectfully disagree with getting rid of agents, would accept making the exam harder if there were also continuing proficiency exams to weed out the lesser qualified lawyers, and agree with increasing retention.
But if you don’t give increasing retention first priority (or at least set up an optional no-examination registration system to deal with the low retention), the system will continue to deteriorate, and your other changes will likely do more harm than good.
“There’s no reason being a patent Examiner should not be a good, rather than sometimes tolerable, profession.”
I honestly believe that too. It seems a cultural disconnect occurred more than a decade ago that has resulted in the attitudes we now see with increased frequently. This is fixable, but the people in charge must want to make it happen.
“For those of you still apopleptic over McKesson and other ineq. conduct cases, here is your antidote.”
Unfortunately, it’s not also an antidote to the “plague” of inequitable conduct allegations that still will be brought under McKesson. But it’s good to see a patentee vindicated every once in a while.
“inexplicably linked”
You meant inextricably linked, I assume.
“suggesting that I need to be paid like a corporate exec just to do an ordinary job is fairly indicative that something is horrendously wrong.”
No one is denying that something may be horrendously wrong at the USPTO and that extreme measures may be needed to rebuild the examining core expertise. I’m not sure, however, that increasing the pay without fixing the problems Examiners face is the solution (i.e. just so they grin and bear it for a longer duration). And I’m not sure those problems are more externally created than internally created as you seem to assume.
There’s no reason being a patent Examiner should not be a good, rather than sometimes tolerable, profession.
link to nipra.org
I get Pissed when I read these irrational comments by Examiners or others who seem to have no idea what prosecuting a patent is like. However, I do note that there a number of posts with gratuitous slams against the USPTO. That cannot help either. If someone posts something you disagree with can we all try to respond to the argument. If someone posts an personal or professional attack, I would still consider them fair game, but try not to start anything.
6k-
You don’t have a regular job, and if you think you are simply a gov hack (and your Examiner buddies think the same) that would go a long way to explaining the problem.
I don’t care what you make, I simply want quality exam from experienced examiners. If increasing salaries won’t keep the exminers from leaving what will? Got any ideas?
Exzaminer #6k wrote “Also, it’s not .01% of apps or whatever you said with something way out of line. If we count the ones with 20+ pages of spec and over 25 claims (for lawyer knows what reason, they’re just SOOOO longwinded that they can’t just say what the invention is like was done for the last 150 years) the percentage probably goes over 60% or more.”
You missed the point of the original poster. Equating your extreme example with an application that is 30 pages of spec and 35 claims is like equating PCP and pot. And no, you did not exactly equate them , but you are treating them as equivalent.
Some applications need to be longer than others to fully discuss all the alternative embodiments (and in the case of the chemical arts, examples). You want to disclose all the embodiments because you never what you may need to fall back on during prosecution. Also, you want to approach claiming from different angles to make sure that you have captured the scope of the invention.
The amount of pages necessary is going to vary from application to application. I would say the average length of my written descriptions is probably 10 – 12 pages. However, I have written longer applications either for enablement purposes (and I try to write my description so that a potential jury layman could understand it) or because there were multiple apparent alternative enbodiments and I wanted to make sure I covered them all for support of various claims. Further, I have had several applications where more than 25 claims was needed to fully capture the claim scope. There were repeated dependent claims among the independent, but they were not trivial and needed to be repeated for fallback positions.
Higher salaries would keep the quality experienced Examiners at the Office. The problem is two fold:
1) too many inexperienced agents and attorneys being minted by a patent bar exam that has been figured out by PLI, Kayton, etc.
2) too many inexperienced Examiners trying to deal with them.
The Office needs to get rid of agents, make the exam harder, and increase retention.
Examiner 6k and his ilk are present on both sides of the argument – the blame the Office – blame the attorney – crap needs to stop. Would an experienced patent attorney in Dudas or Pertlin’s shoes help? Yes – because they wouldn’t buy the crap being fed them by 6K and his “blame the attorneys” mentality currently present inside the Office.
Me- naw all I put forwards was just a small piece of information as to demonstrate why unlimited claims are in no way essential to the patent process, and some laughs to boot. Doubling the salary would be nice yes, but as it is right now I have a hard time making time for things you can’t really pay me to forgo, time with my new gf for instance. I suppose if you paid a bit more I could hire a maid and she could take care of the apt tho, that would be nice.
BTW, suggesting that I need to be paid like a corporate exec just to do an ordinary job is fairly indicative that something is horrendously wrong.
Who he chooses to represent him has nothing to do with my being biased against him. The two are not, as you surmise, inexplicably linked in any shape form or fashion. I’ll get over myself, or rather, over the real life implications and the actual spirit of the patent statute when you give me good cause to.
Also, Go Inventors! Rah Rah!
Examiner #6k:
Your admitted bias against lawyers is “anti-inventorish” because the lawyer that is the object of your bias is the inventor’s chosen representative.
Get over yourself and hope that someday you will be a tenth as smart and wise as you seem to think you are right now.
Did everybody see this?
link to patentdocs.net
For those of you still apopleptic over McKesson and other ineq. conduct cases, here is your antidote.
Enjoy.
Per examiner#6k:
“I don’t think you can find one thing I’ve said that’s anti-inventorish.”
Respectfully, I beg to differ.
“Double the salaries – problem solved.”
Gosh, double the salaries, put in good management whose only goal is to promote progress by fixing (not destroying for political gain) the system of exclusive rights authorized by the Consitution, and a lot of us ex-Examiners (who actually care about keeping America great for the next generation rather than the next two presidential terms) might go back.
Examiner 6k-
Thnaks for being part of the problem and not part of the solution. You take a clearly out of bounds application, wave it around and say the system is broken – when you know the ap is not represenative. Then your screaming gets Dudas (who is a know nothing on patents) to react and try to screw up the entire system. Examiners need to look at reality – most aps are well written, most patent attorneys are nice folks who work with you, and most of the claimed problem is complete BS that can be solved by increasing retention at the Office. Double the salaries – problem solved.
ME
JohnG,
BTW, I want you to understand I am not expressing any opinion about Mr. Obama and his candidacy for office. Mine is merely noting that the policy attributed to him was clearly not something he wrote himself. Based upon papers and comments published by other individuals, I believe I have a pretty darn good idea who authored the comments in his policy paper concerning the patent system.
JohnG:
You might want to take a look at:
link to jolt.law.harvard.edu
Then you might want to reconsider the policy statement appearing at:
/media/docs/2007/11/fact_sheet_innovation_and_technology_plan_final.pdf
My point is that some already have their claws in him, and they are in large measure those whose positions re the patent system reflect a lack of touch with reality. I rather doubt the “gold” standard mentioned in each is merely a coincidence.
Mr. Slonecker, you may be right (that statement posted here previously seemed like a canned response to me), but if he’s the one elected, we must deal with his people. Getting to know him now may possibly be a good thing, and doing nothing will not help at all.
We should be talking with the likely candidates from the Dem. and Rep. parties because this election seems like it may go either way.
“Barack is the man we need to talk to, and soon, before the others get their claws in him.”
Please correct me if I am wrong, but is he not the one under whose name a policy position was presented closely aligned with the views of many in academia having the mindset the system is broken and in need of major fixin’? In fact, there is a real possibility that the policy position was prepared by an academic whose “scholarship” has appeared several times on this site.
My, my, my. Where’s my walker!
Barack is the man we need to talk to, and soon, before the others get their claws in him.
Not soon enough, so true.
spamfilter says I can’t say much. real anon- send your idea to me and I’ll pass it up to where someone in charge reads it if it’s near decent. I’m out for now, gotta see the little lady.
JD, so good to see you over in these parts, I’ve read a few of your solutions, and they seem decent, but nothing on the scale which will be required to deal with the challenges that will continually getting worse while we’re already behind.
JohnDarling and Examiner6K, I wrote a personal letter to Jon Dudas after the new rules were announced begging him to change course and offering my assistance (as well as offering statistics related to the patent validity problem which I’m convinced no one in USPTO management understands, or at least admits, the extent of).
I got a thank you letter back from his assistant (written, so indicated, at Mr. Dudas’ request) encouraging me to “stay involved”… which I gladly obliged. 🙂
Writting another embodiment /= writing bs that on the second action you call the examiner and say “well I know that’s going to get 103’d next action” in relation to the claim you wrote.
As to why you’d add bull to your app right now there are a plethora of well discussed reasons from this very board.
In any case, I don’t need a guide to why you do the things you do, I really do not care one small whit about why you do the things you do, the motivation per se for lawyers actions. What I DO care about, is what impact that lawyers actions have on the patent system and my ability to deliver on ACTUAL honest to goodness requests for a monopoly over the american people.
Oh, and finally, I’m biased against lawyers, not inventors. And lawyers don’t make my job a possibility, the inventors do. I don’t think you can find one thing I’ve said that’s anti-inventorish. With the possible exception of me disliking a few problematic ones. I’d say my attitude problem, as you call it, stems from the manner of rediculousness that is in my particular art. Also, times have changed quite a bit old timer. And I mean that respectfully, because back in the day you guys did a great job looking through ref’s, knowing where art was in books etc. etc.
“because they’re the ones with the official responsibility to keep the backlog down and doing what you propose doesn’t really do that all that much”
JohnG’s proposals are certainly better than anything PTO (mis)management has proposed.
Let’s see, the backlog is 760,000+ and pendency is 32+ months on average.
They’re certainly doing a great job keeping the backlog down.
PTO (mis)management has ignored all of the proposals from patent owners/applicants and the patent bar. They received many, many comments that their proposed solution, the idi0tic continuation and claim examination rules, were beyond their authority and contrary to law. They ignored them.
Their attempt to blame the PTO’s problems on applicants and practitioners is not going to work.
They’ll be gone soon. Not soon enough. But soon.
Real anon, that is what my first SPE used to say about other SPEs he didn’t like, LOL. He was a good guy.
The 6000 claim application is obviously “one in a million.” I bitch when I have over 40 or so claims! PTO people like to use these extraordinary examples to back up their proposals.
“Where do you examine? Buttons and buckles?”
Johng, that’s *exactly* what I was thinking when I read his/her comment – though I thought “class 24”, not buttons and buckles… 🙁
“No. 1 that I see in today’s system is to make sure that support for them existed as originally filed…”
Examiner6K, you’re right in a limited sense (that the subject matter of the 6000 claims is originally supported and can be reintroduced back into that application…though you may have trouble if you wait to try to reintroduce it until a grand-child application filed when the parent was no longer pending). But that is probably not the reason someone would write 6000 claims only then to cancel them – certainly it’s not No. 1. Think money.
35 USC 154(d)(2)
MSV come on, you can tell that 112 has primary/spe written all over it no matter who typed it in and wrote initials under it. I know I wouldn’t get away with just a 112 on that much stuff without discussion and them making sure it was the perfect 112.
John G- seems great to everyone except those in mgt. because they’re the ones with the official responsibility to keep the backlog down and doing what you propose doesn’t really do that all that much (except raising the fees really high on extra claims, and I mean really high).
Also, even though it doesn’t help them, iirc when I was last talking to Ms. Peterlin she said that they would gladly take the route of upping filing fees and extra claim fees etc etc. at this late point in the backlog game but they can’t. Why can’t they? Because they don’t have fee setting authority, and the fee setting authority (I don’t remember who it is) under the current law bases the fees around some trivial bs and not the actual needs of the office or of the patent system to keep it’s submissions of high quality. The mgmt. are “lobbying” for USPTO getting fee setting authority right now btw. There is a rumor that this could single-handedly reform the patent system to an almost sufferable state in the year 2020 or so.
BTW, that case that examiner#6K cited. (S)he said “Alright, I’m just kidding, as it seems a vet examiner squelched this np.” In reality, a junior examiner did the case (1st action & allowance). 1st action was a lot of 103s with some 112, 2nds. Next action, after an amendment, was an allowance. However, the applicant did appear to file about a dozen and a half related cases on the same day as this and just picked different sets of claims to prosecute. If you wanted an example of some bad cases with lots of claims & taking a lot of office time, try some of the bulk filers.
As to reforms, of course, there are a lot of other reforms that are needed in addition to what I proposed earlier. Obviously, production is a big one. Some other off-hand ideas:
1) Litigation reform (no idea of details – out of my realm)
2) Make all (or at least most) of the examination record not admissible in litigation;
3) Redo the PAP for examiners so that there is more incentive to get it right the 1st time over production, and disincentive to make mistakes (penalties for reopenings & such). Add in some weight for actions/disposal – “Enlightened self-interest” is borrow a quote 😉
4) Modify rule 1.56 so that applicant is required to supply whatever art that they are aware of that may be relevant (NOT that they do a search, however). Part of this would be that what is/isn’t cited can not be grounds for invalidation in litigation except for more extreme cases (e.g., inventors own work not cited);
5) Mandatory interviews? – maybe. Some like them, some hate them. Me, I liked them because you could sit & talk the case over & get down to what the invention was and get something moving towards allowance. Tried to get my examiners to think the same way.
6) Get rid of business method applications.
7) …..
Lots of other things that need to be changed/improved. This is just the start of the list for the platform 🙂
(As to #5, I really think that, after a good search is done, if the examiner and applicant/attorney (assuming both know what they are doing) could get together and discuss the case and claims, they can work out a set of claims that would be allowable and acceptable to the applicant. Maybe that’s just the way I was taught & taught others, I don’t know, but it works if both sides are willing to be reasonable and work together.)
MVS
“I love it when I get an app from outside my area, it’s like a freebie because in other arts you get away from things where there’s a technical limitation inherent to the discussion messing you up, or you having to find one to mess them up because your closest art decided not to disclose what species within a well known and everyday used genus was just perfect for their invention and you have no motivation to 103 because the app chose to use the suckiest worse (or out of left field least discussed) choice possible.”
I can only imagine how unintelligible your OA’s must be.
And I have a pretty good imagination.
I said 20 pg. AND 25+ claims. The 20 pages is just a pet peeve, though is also related, because even if I try my best to skip all your bs about “in yet another embodiment… copy paste 1/2 page description+3 new words” and etc. in the spec it still takes time. People just aren’t bothering to get to the point in a timely manner. In some, they decide to go into so much background that you want to shoot yourself because you can’t tell where the “invention” begins.
I turned down working in printers to work in high tech instead :(. Plenty of 112 ammo here, but I love it when I get an app from outside my area, it’s like a freebie because in other arts you get away from things where there’s a technical limitation inherent to the discussion messing you up, or you having to find one to mess them up because your closest art decided not to disclose what species within a well known and everyday used genus was just perfect for their invention and you have no motivation to 103 because the app chose to use the suckiest worse (or out of left field least discussed) choice possible.
Oh, and FYI, 112 is the only thing that allows examiners to make claims into decent understandable limitations instead of hopelessly complex and needlessly long or entangling. Argue the bad ones, no skin off your back.
MVS, I believe almost everyone could live with that.
By the way, we already pay for “extra” claims and pages now. The problem is that the examiners are not compensated in any way. But, raising these fees and coupling them with compensation for the examiners is something that has been discussed at length, but ignored by the PTO.
While the idea of some sort of limit to applicants may be (and probably is) a good idea, setting a hard limit, particularly to specs, is not a good idea. A cap like the NBA is better than one like the NFL (for you sports fans). Maybe something like give 15 claims as coming with the filing fee. For all claims after the first 15, have the fee structure like: 1) equate 1 independent claim to 4 dependent claims; 2) charge something like $250 for the 1st set of additional claim(s); for each additional set, keep doubling the cost (i.e., 2nd set is $500; 3rd set is $1000; 4th set is $2000, etc.) and then total all of it up to get the final fee. The numbers are just a SWAG, but illustrate the idea. This would help to inhibit the # of claims filed, while not putting artificial limits (like the rule proposals they had shot down, at least temporarily). You could do a similar kind of thing with spec page #s if needed, though I would be inclined to either not do it or be much more liberal (like 100 pages to start and a much smaller, though increasing fee every 25 pages – you can also include sheets of drawings in these totals; maybe change the thresholds a bit if you do). Again, the idea is not to limit the applicant, but make them consider what is really necessary in a given case.
“Also, perhaps to show original intent”
Okay, I’ll bite. Please tell us what “original intent” is.
Wow, you’ve spoken to Ms. Peterlin?! A couple of times?! Did any of that patent law knowledge of hers rub off on you?
“Well too bad, give us a better alternative.”
I did. I spent much time on it. Met with Dudas and Boland. Complete waste of time.
Get me an audience with Obama. He’s the man we should be talking with now.
Hey, Malcolm, understanding the patent laws, can you figure out any reason why a patent applicant would be benefited by paying for 6000+ claims* ($133,456) to have them publish and then canceling them “without prejudice” in a preliminary amemdment? (I dealt with an applicant a few years ago who kept abandoning before first action and filing continuations with new claim sets… I just couldn’t figure out why at the time.)
Hmmm, maybe we could address the underlying legal reason (rather than the individual’s conduct) in reform….
I’ll take the question as more broadly than you presented it as only being to MM. There are plenty of reasons to file and then cancel them. No. 1 that I see in today’s system is to make sure that support for them existed as originally filed, since now the claims can be considered as “support” for subject matter. Then, no matter which set of claims you end up going for you don’t have any problems with supported subject matter that really isn’t well said in your disclosure because you’re an ass and despite using 300+ pages to describe your invention you still haven’t said anything inventive about it. That would help a lot of the apps that I have right now as a matter of fact. Also, perhaps to show original intent, and/or to have people see that pub and think “o no, they already claimed this”.
You’re right, addressing some of the legal reasons etc. are needed, no doubt about it (but will congress do it? hmm that’s the question), but it doesn’t justify bad applicant behavior. At all. Never will. They were the ones that decided to step over the line, and now everyone’s bitching because some “few” decided to step over the line and all apps are being “punished”. Well too bad, give us a better alternative.
Yes 6k, let’s give examiners more “reasons” to issue bogus 112, first written description rejections. Where do you examine? Buttons and buckles?
“If we count the ones with 20+ pages of spec”
Gosh, that’s scary. (I was an examiner and would never have thought to limit invention like that. I guess inventors are now here to serve government in this brave new world of ours. Certainly don’t want to teach how to make and use something complicated.)
Actually that comment above was actually made last night after MM’s but I didn’t do the word verification till now. In any case, yeah emo response and all, yeah I know, me n the leadership are sooo bad like that. I don’t know about whether or not you personally have some good suggestions towards actually fixing the problems around or not, but I do notice that nobody in power seems to have given them much meaningful consideration. Now, since I have personally talked to Ms. Peterlin on a number of occasions (as anyone can who isn’t being an ass) and since she is a reasonable person in terms of discussion, even ruling out her real or imagined lack of pl experience, I would say that she’s pretty open for good suggestions that speak for themselves as well as the motivations of the presenter. Also, since I or anyone else can also send Dudas, or one of the other Jon’s an email and they will read it, I have a hard time understanding why, if your plan is so great and sticks out as a surewin, you don’t simply write it down and push send. Do you not have their address? Are the names in the PTO addressing scheme that hard for you to figure out? firstname.lastname@pto.gov iirc, and not even dudas’s is personal assistanted. (disclaimer: don’t spam dudas with bs because I told you you could send him a meaningful mail) So far as I know, the current plans they have underway, and the reforms they are pushing in the house etc. are the ones they feel they can most realistically get done. I mean FFS people are screaming bloody murder because they can’t write more that 25 fin claims, and do continuations forever, look at japan, iirc it’s a one claim or no claim deal and they do just fine. File for a continuation there, they dare you, I’m pretty sure you have to run “the course of death” in under 30 minutes in order for them to even consider your petition. Get it right the first time (or second, or god forbid third, and one in a million on the fourth) already and stop wasting people’s time.
Also, it’s not .01% of apps or whatever you said with something way out of line. If we count the ones with 20+ pages of spec and over 25 claims (for lawyer knows what reason, they’re just SOOOO longwinded that they can’t just say what the invention is like was done for the last 150 years) the percentage probably goes over 60% or more. I know they do on my docket. Strangely enough, it’s like my primary told me, if they have a shorter spec and claims the more likely it is to be a difficult case (obvious right under your nose the whole time but nobody comes out and says it because it’s just that obvious).
dang typepad
It was like giving leonidas a full-auto 112 minigun and the greatest army of claims ever assembled.
“I am surprised, though, that the published application still included the unpaid-for claims.”
The USPTO makes you pay extra to have the publication application re-published with any preliminary amendments. Ironically, the rule was meant to reduce work, but probably required more work in this instance.