USPTOExaminers.com

According to the website, USPTO Examiners (www.usptoexaminers.com) “is a website designed for professionals to anonymously review, rank, and learn about a patent examiner or a trademark examining attorney who works at the United States Patent and Trademark Office (USPTO).” Law Firms are also reviewed.  The site’s motto is “We Examine the Examiners.”

The owners of the site are anonymous. In addition, the comments are anonymous, but pointed. As an example, the following comment was recently published about a particular examiner (named on the site):  

“The work I have reviewed from him plainly indicates his incompetence. I have had to appeal every case where he was the examiner. And I got him reversed at the Board every time. I think he falls into some kind of job protected category. That is the only reason I can think of why he has not been fired.”

You can also find positive comments about particular examiners, such as the following:

“I have called Primary Examiner Truong several times regarding my searches. Primary Examiner Truong is helpful and knowledgeable about the topic and the classification system. If you are trying to do a search, I recommend calling Primary Examiner Truong. If Primary Examiner Truong is not available I recommend calling Primary Examiner Mendoza in the same Group Art Unit.”

Although the owners of the site have not revealed their names, I sat down the other day and had a virtual conversation with UE.

Patently-O: I understand that you want to remain anonymous. However, can you give readers some clue as to who you are? [a patent attorney; group of attorneys; law students; patent examiners; PTO Director]

UE: I am an intellectual property practitioner. 

Patently-O: Why did you start the USPTO Examiners site and what is its purpose?

UE: I have always believed in providing high quality work to my clients without their incurrence of unnecessary costs.  When I first started practicing intellectual property law, in my personal opinion, patent examiners and the patent practitioners (e.g., patent attorneys and patent agents) were working towards accomplishing the goal of promoting technological advancement.  To that end, there was a mutual exchange of ideas in a collegial environment.

However, over the past few years, at least in my opinion, it appears as though some of the patent examiners are less interested in learning the patent rules, applying the patent rules appropriately when examining a patent application, and/or the consequence of their decision.  Moreover, some of the patent examiners have developed an “us (examiners) against them (patent practitioners) attitude.”

As a result of some of the patent examiners’ actions and mentality, the cost of prosecuting a patent application has increased.  One option to potentially prevent making costly arguments that fall on deaf ears would be to know what successful strategies other patent practitioners used when working with a particular patent examiner.  Another option would include increased training for examiners so that the patent practitioners do not spend their clients’ money teaching the patent examiners the law and the application of the law to the specific facts of a case.  As such, I created a vehicle in which patent and trademark practitioners can post information about their individual experiences, as well as their opinions (their concerns and their satisfaction) about patent examiners and trademark examining attorneys with whom they have worked.

I believe that the experiences and the opinions of patent and trademark practitioners can potentially serve four purposes.  First, if an individual who reads the information posted on my website is a patent or trademark practitioner, that individual may factor in the posted experiences and opinions of other patent and trademark practitioners when determining the competency and responsiveness of a particular patent examiner or trademark examining attorney to better serve their clients.  Second, if an individual who reads the information posted on my website is in charge of training patent examiners or trademark examining attorneys, that individual may decide that it is necessary to investigate whether an examiner or a trademark examining attorney needs additional training in particular areas.  Third, the positive comments will encourage and praise the competent patent examiners and trademark examining attorneys to continue doing the great job that they have been doing.  Finally, the non-positive comments will hopefully encourage the affected patent examiners and trademark examining attorneys to improve their work product or their mentality.

It is likely that some of the patent examiners in the same technology Group Art Unit and some of the trademark examining attorneys in the same Law Office discuss the strengths and weaknesses of a particular patent or trademark practitioner to better strategize their Office Action.  I am not doing anything different with this website.  I have simply created a forum that allows patent and trademark practitioners to anonymously discuss their opinions about a particular patent examiner or trademark examining attorney to better strategize their responses to Office Actions.  For example, one post mentioned that the patent practitioner had an appointment to meet with an examiner.  However, the examiner was not in his office at the designated time and even after arriving at his office a couple of hours later, he still ignored the patent practitioner who was waiting at the security desk.  When a patent practitioner reads a comment like the one above, he or she can better determine whether meeting this particular examiner for an interview would or would not be a good use of the clients’ money. 

It is important for everyone to realize that there is no way to check the accuracy of an anonymous posted comment.  Therefore, each posted comment should be taken for what it is, and the individuals who read the website should not base their entire strategy on a posted comment.

Patently-O: Do you expect that these reviews will improve the examination process?

UE: I believe that patent examiners and trademark examining attorneys have a difficult and stressful job.  I hope that my website will make a small contribution in improving the examination process by improving the work product and knowledge of the examiners as discussed above.  Furthermore, I hope the patent and trademark practitioners can use the information to save time and their clients’ money. 

Patently-O: Why are you remaining anonymous? Do you expect that you’ll be ‘outed’ at some point?

UE: As some of the comments made on some of the IP blogs indicate, this website appears to be somewhat controversial.  I have gone out of my way to program the website so that the identity of the individuals who post their opinions remain anonymous.  This is to ensure that those individuals may post their opinions without the fear of reprisal from a patent examiner or a trademark examining attorney.  For the same reason, I would like to remain anonymous.

With respect to being outed, it is likely that I will be outed at some point.  I hope that by that time, this website is well respected, is seen as a source for improving the patent process system, and is used as a factor to better strategize prosecuting a patent or trademark application. 

Patently-O: Users have already posed what appear to be defamatory comments on the site. Are you planning to monitor the site and take any action to stop such activity?

UE: I do not continuously monitor the messages.  However, I do review my e-mail at contact@usptoexaminers.com once a day.  As stated on the top portion of the message board, “USPTO Examiners’ message board is provided simply as an informational resource. Information is provided as is; no guarantees, warranties or representations are made as to its accuracy or completeness. The posted messages are simply opinions of the message drafters and do not represent opinions of USPTO Examiners, its affiliates, officers, directors, employees, consultants, contractors, and agents.

If you find an offensive, defamatory, or inappropriate message or comment, please report it to us at contact@usptoexaminers.com.”  Furthermore, the legal notice provides the terms and conditions for using the website.  Most of the users of this website are professionals who, I would hope, would use their common sense as to what is or what is not an appropriate comment. 

Patently-O: Any suggestion on folks I could talk with about the site who would go on record?

UE: Not at this time.

Patently-O: Gracias 

99 thoughts on “USPTOExaminers.com

  1. The method of calculating “allowance rate” by that site is pretty comical and wildly inaccurate.

  2. E6k: You apparently missed the point of my question.

    I agree with you that there are plenty of situations where a practitioner is faced with a RR between species that the _practitioner_ regards as obvious variants of each other.

    The practitioner can comply by electing one of the species, or can traverse by making the admission.

    My question is why the implication that it is somehow unethical or improper not to make this admission when faced with this fact pattern.

    Note that in this situation, the practitioner’s opinion regarding the species being obvious variants of each other could be incorrect. However, if an admission is made based on that incorrect opinion, that admission is carved in stone for all time, and no argument or evidence or anything can undo the error.

  3. I am also thankful for my examiners, who are generally willing to make the best and second best rejections at the same time in the first nonfinal office action. I have received a first nonfinal office action giving me five 102(b) rejections on five different references and five 103(a) rejections using various combinations of the references with other references. Based on the comments here, though, perhaps this is a good thing. If I’m overclaiming, at least I know it and the Examiner has proved it. No need to dicker around with multiple RCEs.

  4. “I’ve gotten restriction requirements recently on claims added later during prosecution, even though those claims fell within the scope of the generic claim (as previously discussed on another Patently-O thread)–haven’t you run into this?”

    I’ve seen it occasionally. That’s a good point. There’s a risk that, if you force them to do another non-final oa, they may just restrict out the new claims to minimize their work. So it’s important to make it as easy as possible for them with the second non-final. If there are some independent and/or dependent claims that recite point-of-novelty elements that are clearly ignored, I’ll keep those claims in unamended form. I often cancel the ones that are legitimately rejected and are wasting the examiner’s time, and then add a few other claims that share the point-of-novelty elements. I’ll also make arguments in support of the point-of-novelty elements — not just that elements are missing, but also that they aren’t obvious. The new claims typically use the same statutory class of subject matter that is recited in the kept claims (so they can’t, in good faith, try a method/apparatus restriction). Take a look at MPEP 706.07(a) about when a second action can be final.

  5. “So if you’re impressed with the work of an Examiner, take time to laud him/her for it!”

    Praise is nice, but we like money. If an examiner does a good job, call their supervisor and suggest they be given an on-the-spot award ($25-$75).

    “On-The-Spot awards may be granted by any level of supervision or management to recognize that accomplishment by a subordinate that represents steps toward achievement of organizational goals or projects. These awards may be granted for noteworthy contributions that have benefited the employee’s individual organization, the USPTO, the Department or the public. These awards do not preclude the employee from receiving other awards.”

  6. I do hope this site will not just be used to throw abuses (deserved or not) at Examiners. As a former Examiner, at times production requirements force Examiners to choose between quality work or earning that count your supervisor demands from you. So if you’re impressed with the work of an Examiner, take time to laud him/her for it!

  7. SF wrote: “I get the feeling that they expect the applicant to amend the claims so that they can go final. I try not to take the bait (that is, amend) and, instead, leave some claims unamended and point out where a claim element is missing, thus forcing the 2nd non-final. I’ll also add new claims that overcome the cited, but not relied upon art.”

    SF–does this work? I’ve gotten restriction requirements recently on claims added later during prosecution, even though those claims fell within the scope of the generic claim (as previously discussed on another Patently-O thread)–haven’t you run into this? Also, I didn’t realize that Exr’s aren’t supposed to do second action final if the claims aren’t amended–would this be petitionable? And is it in the MPEP? I would really like to try this approach if I could avoid the follow-on restriction requirement problem. From talking to outside counsel and seeing other posts, though, I don’t think I’m the only one getting these.

  8. Funny … 6K gets on JD’s case for alleged “ethical violations” when he opening advocates actions that violate 5 U.S.C. § 706(2).

    I don’t think I’ve advocated sht in this thread. Point out to me what I advocated here. I do suggest some things though. You see, as opposed to you and yours shady practices of claiming subject matter which the inventor doesn’t think is his invention etc etc and specifically saying that is how it should be done, I have not actually advocated doing anything. I’m certainly not saying an examiner should do anything except what the officially accepted standard thing to do is. I will say that there may be instances where an examiner might decide to do differently.

    “As you’ve acknowledged in your posts, you decide when to obey the law when you feel like it.”

    You mean, I decide what my interpretation of references and combinations thereof etc etc are, why, you’re absolutely correct! And in each instance I’m perfectly obeying the law. I think I asked you in a thread a long time ago:”what is the “best reference/rejection?”. You never got back to me that I’m aware of.

    “What you don’t know is that you THINK you’ve (after a couple office actions) finally gotten around (in the examiner’s answer) to pointing out all features being claimed in the invention.”

    Don’t go off the deep end with your implying what I personally do, I personally point out the claim nearly, if not completely verbatim in the vast majority of situations. Trust me, it takes awhile.

    “A good set of claims will include language that contains limitations that are easily overlooked unless you’ve carefully considered each word of the claims. When I get an examiner go from very ambiguous rejections to a more specific identification, within the applied prior art, of the claimed limitations, I almost always find that the examiner has failed to consider ALL of the claim limitations. All I need to do is show just one inconsistency between what is claimed and what is disclosed by the prior art, and I win against that reference.”

    That’s funny, the vast majority of the time what my applicants get is a final or a phone call asking “Are you telling me that you’re arguing x?” The answer is usually “yes” then I say “ok, so how do you account for z?” then they say “Well, how about if we amend it this way?” or “Oh, so you’re interpreting the claim broadly”. No sht sherlock, that’s what we do. To date I haven’t heard many attorneys say hmmm, well looks like I fcked up entirely, pardon. Anyway, then the attorney “loses” and pays half of my rent for me to look over a case already all but locked into an allowance or another rejection.

    I’m going to be very clear with you sorry bunch of out of context trolls. I do my job by the book, and it’s “accepted meaning” every time, to the best of my ability, and I make the best rejections up front, and to date have about 15%- of my cases or less that will not be seeing a valid final on the second action (that’s inclusive of all cases where applicant got an allowance on first or second action, or I had to write a 2nd action nonf), and finally, issue 95%+ of my restrictions on first action. I’m fairly sure that my prosecution is pretty dam compact, that my limitations are met, and finally that my restrictions go out as soon as I see the subject matter that warrants a restriction and if I didn’t make a restriction then I’m hardly about to start qqing about the restriction later.

    “5 U.S.C. § 706(2)”

    This is pds’s way of saying QQ without actually saying QQ. Especially since

    link to biotech.law.lsu.edu

    doesn’t even talk about what the agency is to do, but rather what a reviewing court is to do, presumptively if it has evidence that would lead it to a certain conclusion. Gl with getting evidence pds.

    Show me another law that I apparently think I’m above so I can lol at you more.

  9. “What exactly does “I win” mean?”

    That “affirm” versus “reversed” decision. Winning at the BPAI is nearly final … very few examiners will try to reopen once you’ve “won” at the board.

  10. PDS wrote: “A good set of claims will include language that contains limitations that are easily overlooked unless you’ve carefully considered each word of the claims. When I get an examiner go from very ambiguous rejections to a more specific identification, within the applied prior art, of the claimed limitations, I almost always find that the examiner has failed to consider ALL of the claim limitations.”

    I agree with all of the above. A sentence often contains several limitations, and an examiner may have only found some of the limitations.

    PDS wrote: “All I need to do is show just one inconsistency between what is claimed and what is disclosed by the prior art, and I win against that reference.”

    What exactly does “I win” mean?

    Where does winning come in? Is winning an allowance? Is winning yet another reference being applied against the claims? Is winning yet another office action with ‘applicant’s arguments are not persuasive?’ Who are you winning against, the examiner or the second pair of eyes?

  11. “JD here is prepared to say that he would win on appeal if I don’t show him every piece of the well known device his little improvement is based on.”

    So you’re adding to and changing the facts of Malcolm’s hypotheticals when he points out the blatantly false and contradictory nonsense that you routinely post, and now you’re drawing conclusions as to what I’m “prepared to say.”

    Unlike you, and the rest of PTO (mis)management, I’m required to obey the law. As you’ve acknowledged in your posts, you decide when to obey the law when you feel like it.

    Keep posting. Every one of your posts adds to the mountain of evidence against PTO (mis)management.

    2600, thanks for your honesty also. You somehow manage to understand and describe the realities of what PTO (mis)management has done to the examining corps in a way that 6k misses entirely.

  12. Funny … 6K gets on JD’s case for alleged “ethical violations” when he opening advocates actions that violate 5 U.S.C. § 706(2). It is amazing that he thinks he is above the law. Then again, with Dudas at the helm, who at the USPTO doesn’t think they are above the law?

    “So far as I can tell from the answers I’ve written so far, and the decisions I’ve read if you have everything there that the attorney is prepared to say isn’t there then you’re golden.”

    What you don’t know is that you THINK you’ve (after a couple office actions) finally gotten around (in the examiner’s answer) to pointing out all features being claimed in the invention. This is the point that a smart/clever patent attorney is waiting for. Most examiners I see looking at the claims, get a general sense for the claim limitations and then cite to sections in the reference that generally describe these claims limitations. Good enough for the examiner? Most definitely. Good enough for the SPE? Usually. Good enough for the patent practitioner who should be praticing contract law? Most of the time. Good enough for a good patent attorney? Absolutely not.

    A good set of claims will include language that contains limitations that are easily overlooked unless you’ve carefully considered each word of the claims. When I get an examiner go from very ambiguous rejections to a more specific identification, within the applied prior art, of the claimed limitations, I almost always find that the examiner has failed to consider ALL of the claim limitations. All I need to do is show just one inconsistency between what is claimed and what is disclosed by the prior art, and I win against that reference.

  13. “Guess who’s decision it is as to what rejection is the best and which is the least best? Guess who countermands that person? If you guessed:the examiner, and nobody, then you’re absolutely right!”

    e#6k may be terse about it, but he’s absolutely correct.

    It’s tough to require an examiner to do anything. In many ways we’re free to act capriciously.

  14. “I’ve noticed a few examiners who will prepare poor quality first office actions with meager obviousness analysis. But they’ll cite one or more related references that, if combined with the primary reference, could be used to make a much stronger rejection. (Of course, the stronger rejections would take more time.)

    I get the feeling that they expect the applicant to amend the claims so that they can go final. I try not to take the bait (that is, amend) and, instead, leave some claims unamended and point out where a claim element is missing, thus forcing the 2nd non-final. I’ll also add new claims that overcome the cited, but not relied upon art.”

    I don’t see what you mean by meager obviousness analysis. My obviousness analysis is always barebones:
    Reference A teaches everything but X. In an analogous art, Reference B teaches X (see fig. Y and paragraph 15). Thus it would have be obvious to one of ordinary skill in the art at the time of invention to combine Reference B with Reference A by doing _____. The motivation for the combination is ______.

    Are they not addressing every limitation (which would be more of a don’t teach every limitation issue)? Occasionally to save time I’ll stretch a reference when I could add another reference to come up with something more in line with the invention. Is that what you’re talking about? Bottom line is I’ll make the rejection that takes me the shortest time to write and gets you to amend the claims.

    I wasn’t lying earlier when I said I received a positive review on usptoexaminers.com so I don’t think I leave too many holes open. However if by some chance I did and you pulled that scheme I would probably find a way to keep arguing those claims and go final anyway if I found new art for the new claims.

  15. JD here is prepared to say that he would win on appeal if I don’t show him every piece of the well known device his little improvement is based on.

    It’s a good thing I don’t work with too many practicioners displaying JD’s level of disregard for ethical behavior. Please JD, tell me about all those appeals you sent up where the board said “Well the references show all the elements but the examiner didn’t point them out so we reverse”, especially if in the Answer you get all of them pointed out just fine. So far as I can tell from the answers I’ve written so far, and the decisions I’ve read if you have everything there that the attorney is prepared to say isn’t there then you’re golden. If however the attorney decides to state things that are blatantly false in the prosecution of applications then guess what that will earn the patent later on in its life? One guess JD. You’re a bright one, I know you know the answer. I wouldn’t be surprised if I got a non-compliant response letter back if you argued that the reference didn’t show something blatantly shown, that’s what should be done even if it isn’t typically. One without resetting the time period. It would take a mere: “The applicant has argued that the reference doesn’t show x, however it has failed to explain what the applicant deems y in the reference to be if not x and thus fails to convey why the applicant regards the office action to be in error”. You seem to be very cavalier in your reliance on the good will the office often extends you, but it takes merely a willingness to be an a-hole right back to you to overcome such shinanigans. I wonder how long it would take your case to get to the board when considered non-compliant? Perhaps you think the office of petitions will shine down their grace upon you? Maybe the SPE? Remember, it was probably the SPE that directed the examiner to make rejections like that, I personally know of one myself. Maybe the director would be shining down his grace? I don’t know, I’d say it would depend on the director as to how much they would appreciate their time being wasted by you.

    That said, I’m more of a verbatim claim matcher myself. I’ve tinkered with alternate ways of stating things just to speed things up a few times now though, waiting to see how they turn out. Frankly I’m more worried about not being able to sort through a complex rejection myself when the amend comes back then anyone else not understanding it.

    “compact prosecution requires the examiner to make his best rejections, not his second best rejections”

    Guess who’s decision it is as to what rejection is the best and which is the least best? Guess who countermands that person? If you guessed:the examiner, and nobody, then you’re absolutely right!

  16. “Guess what? It’s QA that likes to see item to item matching, the board doesn’t give a dam, if it’s all in the ref then it’s all there.”

    And you know this how? How many appeals have you sent to the Board?

    You are a riot.

    Keep ‘em coming.

  17. compact prosecution requires the examiner to make his best rejections, not his second best rejections

  18. “Why on earth is the question of whether or not to make admissions to traverse a species RR being viewed as an ethical issue? Is simple compliance being viewed as unethical?”

    Because sometimes practicioners (especially vets) know that there are two types of devices that are functioning off of the same principles and are obvious variations of the same principle, or “type of device”. And further, if you change one part that was perhaps made of nickel in the one embodiment, then one of ordinary skill knows that in the other embodiment the same change will have the same effects. They claims are obvious variants based on the knowledge of a skilled artisan, but not necessarily the record (yet anyway). Now, if there are two separate ind’s directed to each of the two types of embodiments in the claims then it’s “wrong” to make the restriction because the examiner knows that they’re obvious variants usually. Sometimes however the examiner might be new to that particular niche whereas the practicioner is not. In that case, the examiner makes the restriction, and the attorney just goes along with it instead of admitting straight up that those two types of embodiments are, for all intents and purposes of the skilled artisan, the same thing, and thus not having the claims restricted, but having them stand or fall together. So far I’ve never had anyone make such an admission though I’m quite sure some of these guys are old hands and know this obviousness to be the case.

    “What will be fun is when the Examiner goes final and asserts that my arguments aren’t persuasive … that is a quick ticket to my “no count” merry-go-round.”

    You know what’s funny pds? If we write an action like that which ignores half the claim (or at least you think it does) then we have time for 3-4 non-finals built into our standard production time. It’s writting good actions, and finding good art that takes time. He may eventually have to eat some time to write a good OA, but at least doing it that way he can get bonuses/make production on demand. And that’s assuming that you’re right that the limitations are ignored rather than just not spouted back to you. My favorite is when I (on rare occasions) have choosen not to parrot back the claim verbatim and get arguments to things as if I hadn’t addressed all limitations. Guess what? It’s QA that likes to see item to item matching, the board doesn’t give a dam, if it’s all in the ref then it’s all there.

    “But isn’t it the honest and right thing to do, in the best interest of the patent system, and in keeping with compact prosecution policy?”

    You have to remember what compact prosecution policy is. They want a compact prosecution of the case to disposal. Guess what happens when you file an RCE? A disposal. Making any case final that you can, at the earliest opportunity is in accordance with the compact prosecution philosophy. The office does not PRESUME that you want to amend your claims/file RCE. If anything we presume that if your case is properly rejected then it is properly rejected and done with unless you decide to come back with something else. It’s the attorneys making a mockery of the “back and forth” and turning it into a game to find the right sweet spot of subject matter where the rejection becomes too difficult to make in the time alloted.

    The production system. Prosecutor’s/applicant’s best friend since the 1970′s.

    “I get the feeling that they expect the applicant to amend the claims so that they can go final. I try not to take the bait (that is, amend) and, instead, leave some claims unamended and point out where a claim element is missing, thus forcing the 2nd non-final. I’ll also add new claims that overcome the cited, but not relied upon art.”

    And thus an examiner being lazy left the door open for an attorney to drag out prosecution, and he (pre)decided to do it. I’ve got to admit, I wouldn’t like to see laziness on the part of rejections being made, but then again I wouldn’t willfully be an ass about it either. Your decision to make, but don’t qq when it comes time for you to want the huge favor of your afterfinal being seriously considered and it’s not.

  19. 2600 wrote, “most of my finals are necessitated by amendment”

    I’ve noticed a few examiners who will prepare poor quality first office actions with meager obviousness analysis. But they’ll cite one or more related references that, if combined with the primary reference, could be used to make a much stronger rejection. (Of course, the stronger rejections would take more time.)

    I get the feeling that they expect the applicant to amend the claims so that they can go final. I try not to take the bait (that is, amend) and, instead, leave some claims unamended and point out where a claim element is missing, thus forcing the 2nd non-final. I’ll also add new claims that overcome the cited, but not relied upon art.

  20. From one who prosecutes at the EPO: thanks everybody contributing to this thread for helping me to a belated realisation what’s “broke” in the US patent system: the search tool at the USPTO. Cossetted as I am, by the excellence of the EPO tool, I never for a moment imagined the USPTO search tool was so weak. But when one starts from the “given” that the USPTO search is not going to expose the closest art, that’s where the troubles start.

    Now I see why American Applicants designate the EPO as ISA. Watch out Mrs Brimelow. Your backlog is going to get much worse, in the next few years.

  21. “One reason why I don’t care about getting the examiner upset and I appeal any weak, final rejections. If the Examiner has better art, I’ll see it after the Examiner reopens prosecution.”

    I haven’t had one appeal in my time so far. I’ve only ever reopened prosecution after final once. It was my third case and I made a terrible rejection (didn’t know it at the time), but the lawyer didn’t understand the priority date of my reference and just tried to overcome everything by arguing the date was bad. In the final I just pointed out the error. It took me a while to act on the AF and I got a call asking if I was going to issue an advisory soon as the time limit for filing an RCE without paying for an extension of time was in a few days. That’s when I learned practitioners give out RCEs like candy. I still reopened because I couldn’t have justified keeping the rejection in the advisory.

    “What will be fun is when the Examiner goes final and asserts that my arguments aren’t persuasive … that is a quick ticket to my “no count” merry-go-round.”

    Maybe my quality is good (I did get a positive review on usptoexaminers.com) because most of my finals are necessitated by amendment. That’s the best way since it takes time to respond to arguments.

  22. “But isn’t it the honest and right thing to do, in the best interest of the patent system, and in keeping with compact prosecution policy? The applicant might have to go through the time and expense of filing an appeal, only to have the rejection reversed or withdrawn and the new rejection which uses the better secondary reference issued. This contributes to the pendency time and the PTO backlog.”

    From my perspective the rejection was valid (and my stretching was supported by the reference). If I made a new non-final every time I found better art, I’d eventually be fired for low production. Citing the new art is my middle ground.

  23. “Is merely citing a new reference without pointing out in a sentence or two (maybe ten additional minutes of the Examiner’s time) specifically why he is citing it (that is, for its better secondary reference showing in FIG X, paragraph Y)the way Patent Office business should be conducted?”

    The Canadian Patent Office has been doing it that way for years.

  24. Mr. Long:

    IMHO the best way for the Patent Office to do business is for the Examiner to always make his best rejections and not his second best rejections, or make both of them in the alternative. Yes, the production system may need to be modified to accommodate this, but the world will not fall apart if it is modified.

    Thanks,
    JP

    P.S. Is merely citing a new reference without pointing out in a sentence or two (maybe ten additional minutes of the Examiner’s time) specifically why he is citing it (that is, for its better secondary reference showing in FIG X, paragraph Y)the way Patent Office business should be conducted? The system can actually be changed (but not the way Mr. Dudas wants it to be changed). Maybe the motto of the Patent Office should be “three decades of tradition unmarred by progress”?

  25. “Making a new ground of rejection would prevent me from making the action final. It’s not in my interest to make second/third/etc. non-final actions. I look out for myself above all other interests.”

    One reason why I don’t care about getting the examiner upset and I appeal any weak, final rejections. If the Examiner has better art, I’ll see it after the Examiner reopens prosecution. However, the Examiner won’t be getting any cheap counts off my client’s dime. Also, although the Examiner’s thinks he/she has better art, most time it isn’t, and I put them right back into appeal again. My appeal brief merry-go-round. The examiner needs to either find really good art or write an examiner’s answer to get off.

    BTW: I’ve been amazed on some of the new first actions I’ve been seeing recently. It seems that the examiner has done a keyword search with about four or five terms from claim 1, cited the passages where those terms are found and ignored the twenty-thirty or so other words in the claim.

    What will be fun is when the Examiner goes final and asserts that my arguments aren’t persuasive … that is a quick ticket to my “no count” merry-go-round.

  26. “Just an ordinary white rabbit(TM)”

    I’m a big fan of the Airplane, but an even bigger fan of The Great Society (when Gracie was singing).

  27. “just wondering” asked “But isn’t it the honest and right thing to do”? I assume that you are asking if the “honest and right thing to do” would be to add the new grounds of rejection and make a new non-final. If not, please let me know.
    Really, in view of the production system, what the examiner did in citing the other good, new prior art, while making the case final based on an apparently reasonable interpretation of the previously applied references is the “right” thing to do. The applicant is made aware of the new reference (and can make their decisions accordingly) and the examiner is not made to eat time from other cases just to “be a nice guy.” It may not be ideal for everyone, but that is the system the examiners (as well as you all) are stuck with & have been for 3 decades.

    Really, what many examiners do in this situation (and I think it is wrong when they do it) is make the case final & NOT cite the new reference. That way they blindside the applicant with the new art when they file an RCE. THAT, in my opinion, is not “honest or right”. Technically, it is not against the rules/law but it is clearly not the way to do business.

    So, I do somewhat agree with you, but we don’t live in an ideal world…

    thanks,

    LL

  28. “The applicant might have to go through the time and expense of filing an appeal, only to have the rejection reversed or withdrawn and the new rejection which uses the better secondary reference issued.”

    Classic. An applicant would spend the big bucks to file an appeal rather than read the pertinent reference cited by the Examiner.

    Applicant, empty your wallet and go sit in the back of the bus. Somebody with an actual invention is waiting to use the limited resources that your ego and stupidity are sucking up. Oh, and your attorney called. She wants to thank you for making her remodel possible.

  29. Thank you for your honesty, 2600 examiner, that it is not in your interest to make the new rejection. And if I were in your shoes I might (especially if my counts were low) be tempted to do the same thing. But isn’t it the honest and right thing to do, in the best interest of the patent system, and in keeping with compact prosecution policy? The applicant might have to go through the time and expense of filing an appeal, only to have the rejection reversed or withdrawn and the new rejection which uses the better secondary reference issued. This contributes to the pendency time and the PTO backlog.

  30. Making a new ground of rejection would prevent me from making the action final. It’s not in my interest to make second/third/etc. non-final actions. I look out for myself above all other interests.

    Besides, showing the new reference could quite possibly produce the same results with the added benefit of an RCE. Would a practitioner file an appeal (which I could still be affirmed on) with the knowledge that the other reference exists.

  31. If it was your best secondary reference shouldn’t you have made a new and/or alternative rejection using it, especially under the policy of “compact prosecution”?

    If not, why not?

  32. No new ground of rejection. I just put it on the 892 and then added the form paragraph “The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure” with a couple sentences explaining the relevancy.

  33. 2600examiner — if you found a bulletproof secondary reference and cited it, did you also make a rejection (even an alternative rejection) using it or did you just keep it in your back pocket for a later rejection if needed?

  34. “I call up the Examiner to find out why he dumped me into RCE-land, when my after-final was simply making the changes that he essentially asked me to make.

    The Examiner flat out admits to me that he didn’t even read my after-final before issuing his advisory(!!!!!!!).”

    I’ve been around barely more than one year, but that sounds like number 2 on my list of ploys to get an RCE. In a case like that though I wouldn’t say the claims would be allowable if you do ______, rather I’d say you can obviate the rejection by doing ________.

    1. Just go final (not too hard if the invention is overclaimed to start)
    - Practitioners don’t want to upset examiners
    - Appeals cost time and money
    2. Make a suggestion
    - If practitioners think you’re willing to work with them, they’ll file an RCE rather than appeal a weak rejection
    3. Go final and show a trump card
    I had a case arguing a secondary reference taught away from the primary reference (admittedly I had only zoned in on the portion of the secondary reference I needed). On the surface they had a valid point, but I found some language in the reference (objective evidence) that let me make a weak argument that their claims weren’t distinct enough to make the reference teach away. Meanwhile, I found a bulletproof secondary reference and cited it.

  35. Why on earth is the question of whether or not to make admissions to traverse a species RR being viewed as an ethical issue? Is simple compliance being viewed as unethical?

  36. “”I’d be interested in knowing the statistics regarding how frequently applicants admit that species are obvious variants of one another in order to traverse a restriction requirement.”

    Having done 50-80 req’s mine is 0%.

    Now, if prosecutors wanted to be ethical about it the numbers would probably be around 20%.”

    I agree.

  37. “My first thought after reading I Need a Name’s comment… …was that; where she to apply for a patent; Ms. Peterlin (and Mr. Dudas as well?) would need; and be able; to count on the help of one or more of their own employees (even a newly minted examiner) per #3 in order to prosecute her/his own apps.”

    Wow. Perhaps it would be better if you didn’t share those first thoughts. Does anybody know what this means?

  38. “I get a final rejection, with an indication of how I could amend my claims to add a limitation or two that the Examiner agreed was not in the prior art. (Thank you!).”

    Just because the examiner thinks it’s not shown in the art of record doesn’t mean that it necessarily isn’t in all art, all he’s doing is telling you how to get around the art of record.

    “However, I can’t say I like any rule where the applicant has to explain why an amendment “was not earlier presented” or “could not have been earlier presented.” (this means you, Continuation Rules Package). A narrower amendment can always have been presented earlier, but it doesn’t mean it had to be presented earlier.”

    The presumption is that if you knew that you believed some subject matter to be your invention then you should have put claims in at the first opportunity rather than gambling on something you didn’t necessarily believe to be your invention, but rather figured, “eh, well it might be my invention”.

    “Gee, LL. Being held up by you as a poster child for prosecutor incompetence in multiple comment threads after politely acknowledging your point is just special.

    But really, now, how is anyone to know what sections of MPEP 800 actually mean anything? The idea that restriction is not proper if claims so restricted are obvious variants of each other is all over MPEP 800, coupled with repeated reminders that DP rejections can’t be made between an app and its divisionals.”

    007 you’re grasping part of the problem with current restriction practice and also the problems leading to it being that way. The problem is that restrictions will be made between obvious alternatives, and the problem that leads to this is that apps are “allowed” to claim obvious alternatives in one application WITHOUT admitting that they are obvious alternatives. There are two things that compound the problems. First, that since there is little art of record at the beginning it is hard for the examiner to tell many times that the restriction being made is between obvious alternatives. Second, the applicant never wants to admit they are obvous alternatives because if one falls then both go down. On the flip side, if they really are obvious alternatives then if one is patentable then the other is as well so he would get both claims issued. Of course, the prospect of having them both fall because the examiner found one of them and them having admitted they were obvious variants does not strike the applicant (or more likely his rep) as being a good thing to do.

    You should be able to tell that the sections of 800 mean something.

    Either way LL was a bit harsh on you, there are many at the office that don’t understand either species or another aspect of restricting, and sometimes it’s hard to wield the knowledge even if you have it.

    Sometimes I think, well, these are obvious variants because I’ve seen these two types of devices and they always go hand in hand. Then, lo and behold I find a reference that only tells how to make the one in the manner claimed and DOES NOT TELL ABOUT THE OTHER. Now, to the person skilled in the art he knows how to switch the parts around and bam you get the other device, but it’s not in the ref so it’s a big ol’ pain. Around abouts of then I’m wishing: “I wish I restricted this and was done with it instead of having to craft a 103″.

    “I’d be interested in knowing the statistics regarding how frequently applicants admit that species are obvious variants of one another in order to traverse a restriction requirement.”

    Having done 50-80 req’s mine is 0%.

    Now, if prosecutors wanted to be ethical about it the numbers would probably be around 20%.

  39. Boy. My first thought after reading I Need a Name’s comment…

    “See MPEP 707.07(j). A quick summary:

    3. the examiner is expected to help “‘in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.’”

    …was that; where she to apply for a patent; Ms. Peterlin (and Mr. Dudas as well?) would need; and be able; to count on the help of one or more of their own employees (even a newly minted examiner) per #3 in order to prosecute her/his own apps.

    A sad picture indeed, no?

  40. Agent007: ‘Er. No. How about “This application contains claims directed to the following patentably distinct species: Various species as described in embodiments of figs. 5-16.” followed by uninformative form paragraphs and identification of some
    apparently generic claims.’

    My mistake. I’ve only seen figure based RRs from good examiners.

  41. “I’d be interested in knowing the statistics regarding how frequently applicants admit that species are obvious variants of one another in order to traverse a restriction requirement.”

    My guess, and hope, would be 0%.

  42. I’d be interested in knowing the statistics regarding how frequently applicants admit that species are obvious variants of one another in order to traverse a restriction requirement.

  43. A year or so ago I received a restriction/election requirement where the examiner insisted that the 30 pending claims in the application were each directed to a separate invention and so we needed to file 29 divisional applications to pursue all thirty claims. As proof he simply repeated each claim. A call to his supervisor got it straightened out and then we were down to two different inventions. (However it certainly would have been better practice if the 30-way requirement had not issued in the first place.)

  44. In my experience, many Examiner’s understand restriction between or among inventions much better than election between or among species. It seems that many Examiner’s don’t understand that mutual exclusivity is required for election of species.

  45. SF, it (Mad) means both.

    Of course after a final Office Action the Examiner can deny entry of an Amendment. The situation discussed above, on which I was commenting, appeared to be between final and non-final rejections, when the Examiner is obligated to again search and reconsider.

  46. Gee, LL. Being held up by you as a poster child for prosecutor incompetence in multiple comment threads after politely acknowledging your point is just special.

    But really, now, how is anyone to know what sections of MPEP 800 actually mean anything? The idea that restriction is not proper if claims so restricted are obvious variants of each other is all over MPEP 800, coupled with repeated reminders that DP rejections can’t be made between an app and its divisionals.

    Yet examiners routinely require restriction between claim sets and/or species that the _examiner_ regards as standing or falling together.

    Improper, but unprovable, so it happens all the time.

  47. Woodwork: while that case is ugly, it’s important to remember that a substantive amendment to the claims will require further search and consideration in nearly all cases (I say ‘nearly’ only because it might be possible; I’ve never come across the situation myself).

    What’s egregious there is the “no indication of further search being done” after RCE. I may indicate what I think are obvious ways to get around the currently cited art – but that doesn’t mean new art doesn’t come up in further searching. In some cases, a further search after RCE will turn up art that reads on the amended claims, in some cases not. But since I’m not given time for this further searching after final, and applicants are not entitled to amendments after final as a matter of right, a substantive amendment after final that would require this further search will not be entered even if the amendment was recommended by the examiner.

  48. Didn’t Greg Aharonian already identify the operator of this site as Marta Burgin, a former Armstrong Teasdale IP attorney?

  49. “but I was not aware that language in the MPEP supports making the RR in such useless and annoying ways.”

    It doesn’t. 806.04f+ states that the test is mutually exclusive characteristics. Often pointing at figures fails to statisfy the test unless it’s painfully obvious. The useless form paragraphs also state this.

    Mind you, examiners only get an hour to write restrictions. With lengthy applications (say with numerous species in multiple figures), no wonder examiners cut corners.

  50. I am glad that when my examiners make me elect a species for examination, that they are not as unhelpful as agent007′s apparently was.

    This should go on the list of bad practices too (the lack of further information as to how many species the Examiner saw, not the election requirement itself). Hopefully, the problem is usually cured by a telephone call to the examiner.

  51. teacup: “In this kind of restriction requirement, examiners do itemize the species and figures. How it’s stated above is shorthand.”

    Er. No. How about “This application contains claims directed to the following patentably distinct species: Various species as described in embodiments of figs. 5-16.” followed by uninformative form paragraphs and identification of some apparently generic claims.

    I was aware of the concept of election of species, but I was not aware that language in the MPEP supports making the RR in such useless and annoying ways.

  52. The Mad Prosecutor wrote, “Sure I can. It is part of the job, and it is what the rules, laws and procedures require. A failure to do so is disgraceful.”

    Wrong. If it’s after final and if the amendment would require a new search (here the claims were amended “extensively” and thus almost assuredly would require a new search), the rules do not require that the examiner do anything except notify the applicant that a new search is required. Does “Mad” mean angry or crazy?

  53. “Examiners at the USPTO virtually never make suggestions as to how claims could be amended to make some allowable. Is there a USPTO rule against being helpful?”

    See MPEP 707.07(j). A quick summary:
    1. if the inventor is pro se, then be helpful.
    2. If the inventor is represented, the examiner can be helpful if s/he wants to be.
    3. the examiner is expected to help “in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.”

    David J. French, I suspect you’re case 2. Since there’s no incentive to be helpful, the examiner just doesn’t help. At least, I hope case 3 doesn’t apply.

  54. “I have filed a Response after a final office action in which some of the claims were significantly amended to narrow them, and amendments were made to the disclosure to support those claims. The amendments needed to support the claims reflected structure present in the original drawings as filed.

    you can’t blame the examiner for passing on doing a bunch of work that they won’t get a count for.

    Sure I can. It is part of the job, and it is what the rules, laws and procedures require.”

    It looks like the Examiner did his part. 37 CFR 1.116(b)(3) seems to apply here.

    However, I can’t say I like any rule where the applicant has to explain why an amendment “was not earlier presented” or “could not have been earlier presented.” (this means you, Continuation Rules Package). A narrower amendment can always have been presented earlier, but it doesn’t mean it had to be presented earlier.

  55. My worst RCE story….

    I get a final rejection, with an indication of how I could amend my claims to add a limitation or two that the Examiner agreed was not in the prior art. (Thank you!).

    I file an after final, making only those amendments.

    I get an advisory stating that my amended claims would require further consideration/search(!!).

    I file my RCE, and shortly thereafter receive a notice of allowance (with no evidence of any further search being done).

    I call up the Examiner to find out why he dumped me into RCE-land, when my after-final was simply making the changes that he essentially asked me to make.

    The Examiner flat out admits to me that he didn’t even read my after-final before issuing his advisory(!!!!!!!).

  56. Teacup:

    Obviously, I was referring to a situation if, in fact, the Examiner did not characterize as you so-assume, but rather only made the broad and meaningless statement.

  57. “you can’t blame the examiner for passing on doing a bunch of work that they won’t get a count for.”

    Sure I can. It is part of the job, and it is what the rules, laws and procedures require. A failure to do so is disgraceful.

  58. Well, there is some evidence of moderation. The comments for “Ajith Jacob” have seemingly been wiped clean. Apparently, somebody posted an inappropriate/unprofessional comment; I wasn’t able to read it before it was deleted, but it was titled “professional yet sexy”. Two other posters responded, calling the behavior shameful, and these posts have been deleted as well.

    Frankly, a quick skim of the comments indicate that a large percentage of them are either facetious or overly generic; in neither case would a comment be helpful.

  59. “Hey, how about commenting on the potential patentability of the, revised and narrowed claims?”

    Hey … how about paying for a new search/examination (via an RCE) before asking the examiner to do that new search/examination? If you’re doing more than rewriting a dependent claim into an independent claim and, instead, you extensively amend the claim, you can’t blame the examiner for passing on doing a bunch of work that they won’t get a count for.

    Sure there are cases in which a minimal amendment shouldn’t require a new search and the examiner is just trying to milk an extra couple of counts via the RCE gravy train. But, if you “have filed a Response after a final office action in which some of the claims were significantly amended to narrow them,” you weren’t going to get an examination even if the amendments did not introduce new matter because they’ll still require a new search.

  60. “If I received an Office Action stating “election of one of the species of Figures 5-16 is required” I wouldn’t be happy at all (and I understand species requirements), since I wouldn’t know whether the Examiner thinks there are 10 different species, or whether Figures 5-15 are a first species, and Figure 16 is a second species, etc.”

    In this kind of restriction requirement, examiners do itemize the species and figures. How it’s stated above is shorthand.

    It is a perfectly valid requirement. It takes a while to understand why the examiner is doing it, but in the end it saves everyone a whole lot of time.

  61. David French writes:

    Having painfully received a second final office action on a difficult application, as I was driving in this morning I considered contacting Dennis and asking him to raise the topic of inappropriate examiner initiatives. Well, it has happened!

    I was sure that some of the claims presented would be held allowable. There are examiners who indicate that they would allow certain dependent claims if presented independently. But there are other examiners who adopt an all-or-nothing approach to rejections.

    They reject the independent claims with some careful analysis, and then cavalierly dismiss all of the subsequent dependent claims as mere engineering variants that any skillful worker would adopt.

    There has been much criticism made above against anonymous postings that slander, or is it libel, an examiner. An alternative is simply to post bad practices followed by examiners without naming them by name.

    Does the USPTO have a listing of such bad practices? Has it ever occurred to the management at the USPTO to investigate and identify bad practices, from an applicant’s point of view, amongst their staff?

    Examiners at the USPTO virtually never make suggestions as to how claims could be amended to make some allowable. They simply respond: “Not good enough”. Examiners in other jurisdictions, eg, the UK, are much more helpful. Is there a USPTO rule against being helpful?

    I have filed a Response after a final office action in which some of the claims were significantly amended to narrow them, and amendments were made to the disclosure to support those claims. The amendments needed to support the claims reflected structure present in the original drawings as filed. The examiner’s reaction: “New matter has been added.” Nothing more.

    Hey, how about commenting on the potential patentability of the, revised and narrowed claims?

    I have another case where, after a second final office action the inventor wanted to go down to Washington and have a personal interview with the Examiner. The examiner’s reaction: You’ve already had two telephone interviews. That’s enough! Now, I will not allow another interview.”

    Some of this behavior may be motivated by the Examiner’s objective of encouraging applicants to file a Continuation and thereby credit the Examiner with another “count”.

    In summary, I think it would be very helpful to have practitioners compile a list of bad practices by examiners. Just reading about such bad practices would be very educational for myself. Then I wouldn’t feel that I am in the wrong when confronted with such behavior.

    And maybe the management at the USPTO would learn something too!

  62. I agree with nplusone’s take on this. Unmoderated comments tend to quickly descend to a signal to noise ratio approaching zero. Beyond the biased entries referenced will be sheer nonsense, profanity, etc. Furtherermore, I doubt any criticized examiner will give a hoot about any complaints. If complaining to the SPE or Director doesn’t have any effect, why would a bad posting at this site be any better?

    Thumbs down.

  63. Mad prosecutor, you hit the nail on the head. I had one exactly like that.

    Species should be identified and then the claims of each species written in. This “Figures” shorthand is ridiculous, and I feel, improper. I mean, how do you respond to “Please elect a figure for prosecution.” Do you write a new claims set for each figure only to get 112 rejections? I find responding to improper office actions very time consuming and frustrating.

  64. Lazarus Long:

    One comment – is it possible that 007 concern is that the species are not even identified? If you read the statement carefully, it is not clear whether the Examiner is stating that each figure (which I doubt) shows a different species. If I received an Office Action stating “election of one of the species of Figures 5-16 is required” I wouldn’t be happy at all (and I understand species requirements), since I wouldn’t know whether the Examiner thinks there are 10 different species, or whether Figures 5-15 are a first species, and Figure 16 is a second species, etc.

    What do you think?

  65. Yet another example that you lawyers also have many that do not know the basics of prosecution. I just posted this in the thread about Dependent claims in response to a post by “agent 007″ that was posted @9:11 pm on 5/22. It is relevant here, also, as it shows that there are as many people out there that do not know the basics as there are in the office. Where is the training & oversight for these people?? We clearly need more feedback about all the bad lawyers & bad response than we do about the examiners if this (& my early example) are any indication.

    One of the things that we (examiners) always hear is how little examiners know about the law & that the lawyers really know what the laws are.

    Agent double-naught 7, above, is a very clear example that all you lawyers out there also have a lot of people that do not know the basics, never mind a lot of the more esoteric things.

    Election of species is something that is VERY basic & most of the PTA examiners (been here 2-3 months) that I have talked with already understand.

    Yet, double-naught 7 ranted (@9:11 pm 5/22):

    “I’ve been seeing incredibly annoying restriction requirements based on the figures rather than any analysis of the claims. E.g. “Election of one of the species of Figs. 5-16 is required” in an apparatus case.

    This kind of nonsense seems procedurally improper to me, but I’m not aware of a clean kill in the MPEP/rules/laws.

    Has anyone had success in traversing this kind of BS? Or is it just one of those things that examiners can get away with because nobody wants to spend years dorking around in the office of petitions.”

    This is the kinds of things that we examiners have to deal with from your side. Keep it in mind next time you complain about what an examiner is doing. We get garbage & incompetence from your side as well.

    thanks,

    LL

  66. One problem in recruiting and retaining qualified examiners continues to be that the USPTO, on the one hand REQUIRES that ALL examiners must live in the DC area where they cannot live well on the salaries paid to them in light of high housing costs, and on the other hand the USPTO allows them to routinely work at home and telecommute.

    So the typical competent examiner trainee gets trained, then moves on to a law firm, while the dregs remain in the USPTO.

    But no one at the “USPTO management” (an oxymoron) can see that this is a shortsighted attitude given that there are many qualified applicants that would rather live in other parts of the country where they could live well on the current salary and telecommute.

    Moreover, the USPTO can set up satellite offices nationwide with tele-presence conference rooms and the like for training and other needs that now are handled at the USPTO HQ only, but of course the folks in DC and Virginia would lose budget money and state tax revenues if their employees lived elsewhere, which I suspect is at least part of the reason.

    Bottom line, the current USPTO is nearly if not totally a non-functioning entity who’s only purpose if to shuffle paper and provide material for litigation.

  67. Dear Ronald J. Riley,

    On the May 16, 2008 thread titled, “Federal Circuit: State of the Court” I posted this comment which included a link that described why the Supreme Court eBay opinion is Constitutionally unlawful:

    ————————–
    Dear Mr. Dhuey et al.,
    Can you reconcile the Supreme Court “eBay” Opinion with the United States Constitution given the substance of this comment I posted a good while back?
    link to patentlyo.com
    Posted by: Just an ordinary inventor(TM) | May 18, 2008 at 09:36 PM
    ————————–

    After about 100 comments that followed my question from many serious posters, most seemed to finally agree that there was no solid rebuttal argument – my “eBay is unlawful” opinion, while tedious, held water. This link goes to the beginning of that lengthy eBay dialogue:
    link to patentlyo.com

    Article I, §8, The Patent Clause, which has never been amended, reads:
    “The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    Thus, Congress can tinker with the criteria for patentability, authorize different types of patents, terms of the patents, maintenance fees, etc. it cannot water down “the exclusive Right” of patentees to their inventions. Without securing “the exclusive Right” to every inventor’s Discovery, the Patent Clause would be tantamount to compulsory licensing for some patents and not others. A “compulsory licensing” interpretation of this nature (or any other) is Just not plausible.

    A patent without an injunction is like a revolver without bullets.

    If you are so inclined, I’d be very interested to hear your opinion.
    Thank you for all your comments and efforts on behalf of all inventors. I am an avid fan of yours.

  68. The fact that the site just started and is already primed for advertisers makes me wonder if the primary purpose of the site is to make money on the back of a controversial topic, rather than the stated altruistic purpose of improving examination.

    As far as I know, you can’t choose your examiner anyway, so the site ends up being just one big gripe session. Or is the hope that examiners will read it and change their ways.

  69. “Piracy Coalition (Coalition for Patent Fairness) members have used USPTO operational problems as a basis to make false claims that the patent system is flawed.”

    Ron, not sure I get your drift here. The statement is self-contradictory. Are you saying USPTO operational problems are not flaws of the system?

    As for the anonymity issue, surely no one reading or posting on this blog would believe that the examiners about whom one would want to comment are not as vindictive as they are incompetent. For the valiant and self-righteous among us, like Tom, by identifying yourself with any valid but biting criticism of an examiner you are insuring that your future clients will suffer the brunt of your criticisms. Remember, there was a reason the Lone Ranger wore the mask and Tonto took all the $hit.

    My larger concern is that Moatz will pull your license for the catch-all sin of unprofessional conduct once he finds out you have pi$$ed on his examiners. Yea, go ahead and sign it, Tonto. See who gets the last laugh.

    [Speaking of incompetent -- whoever is responsible for the filter settings on this site is getting pretty close. I was not able to post this comment until I converted "y-e-a-h" to "yea." Is there something objectionable about "y-e-a-h?" Posting here is beginning to feel like responding to an OA. Nonsense rejections.]

  70. “The last time I checked a majority were simply ad hominem type attacks.”
    “…it limits the ad hominem comments.”
    “…which in itself would be more useful than the biased ad hominem attacks.”

    Folks, the term “ad hominem” is used to refer to a particular type of fallacious argument. It does not generally apply to critical comments, abusive comments, or personal attacks.

    For a nice primer, see link to plover.net. The examples are particularly useful. I plan to adapt some of them for use in this forum.

  71. If being anonymous is the sign of cowardice, then the USPTO is the show palace of cowardice. In most cases (patent applications) you never know who you are negotiating with. The examiner who places his/her name on the last page of the action is often just a stooge for somebody else, for the unnamed person in control. At the USPTO you are often boxing with shadows.

    There are quite a number of newbies who read these comments, often in frustration because no one spells it out. Here’s the basic pecking order:

    1. Newbie examiner fresh out of the Academy (lowest of the low)
    2. Examiner in training with no signatory authority
    3. Examiner with signatory power.
    4. Primary examiner (someone who claims to be experienced & to have the trust of his SPE)
    5. Supervising Primary Examiner (a.k.a. SPE –the person who is supposed to be supervising all the examiners in the given Group Art Unit)
    6. Group Director –the person who is supposed to be supervising all the SPEs in his Technical Center Group

    If you run into a bad examiner, it will usually be the case that the SPE is also bad and the Group Director is incompetent. The stench of rotting fish runs straight to the top of the chain. Nonetheless, it may sometimes pay to telephone up the chain of command and complain. On rare occasions, justice is done. If you run into a good examiner (there are a few, a rare few) consider yourself extremely lucky and don’t forget to complement them on their good work.

  72. How much of what people view as bad conduct by examiners is really a result of pressures being applied by incompetent & corrupt hacks in USPTO management? Personally I think that most of the problems being blamed on examiners are the fault of USPTO management.

    From what I can tell examiners are responding to impossible work conditions and are as much victims as are patent applicants of USPTO management run amok.

    One of the most outrageous problems at the USPTO is that all patents are allocated only 20.5 hours of examination time regardless of the complexity of a patent application. Why is it that the USPTO collects fees based on complexity but refuses to allocate time for prosecution on the same basis?

    Piracy Coalition (Coalition for Patent Fairness) members have used USPTO operational problems as a basis to make false claims that the patent system is flawed. Upper USPTO management has been perfectly willing to collaborate with the Piracy Coalition to feather their own nests. The reasons seem to be classic, in that the agency is looking to increase its power while lowering its accountability and at least some of USPTO management seems to be managing with a eye towards post USPTO employment opportunities.

    One aspect of this problem is that Piracy Coalition members seem to have considerable influence over certain internal USPTO cases.

    I have clear memories of believing that no patent commissioner could be worse than Layman a decade ago. While at the time he was clearly the worst we had seen the Bush administration has managed to add people who are not only incompetent but also appear to be more than willing to carry water for disreputable transnational patent pirating interests in the hope that they might gain personal advantage at some point in the future.

    We desperately need to have a Congressional investigation into USPTO operations, followed by a management house cleaning, and perhaps prosecutions of those found to have misused their positions to undermine truth and justice at the USPTO.

    Ronald J. Riley,

    Speaking only on my own behalf.
    Affiliations:
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.patentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

  73. I’ve practiced on both sides of the fence and attorneys should bear in mind that as much as we see some amazingly bad stuff in our sampling of OAs, examiners see some amazingly bad stuff in their sampling of responses by attorneys.

    If you have problems with an exmr talk to their supervisor or the program director. This site seems a bit cowardly.

    Plus, though extremes in allowance rates may be interesting, allowance rates don’t really have much to do with examination quality.

  74. I’ve practiced on both sides of the fence and attorneys should bear in mind that as much as we see some amazingly bad stuff in our sampling of OAs, examiners see some amazingly bad stuff in their sampling of responses by attorneys.

    If you have problems with an exmr talk to their supervisor or the program director. This site seems a bit cowardly.

    Plus, though extremes in allowance rates may be interesting, allowance rates don’t really have much to do with examination quality.

  75. Speaking of bad behavior from attorneys, I recall a few years back there was a recording circulating on the Internet of an attorney that was screaming for like a minute or two into the Examiner’s voicemail. Does anyone else recall that and is it still around?

  76. The above comments are good. Examiners are not public figures per se, and therefore should not be opened to public humiliation. The rating system described by “kk” would help objectify, however, there is no way to verify that the person providing the rating actually ever was before the Examiner in question or had any actual knowledge of the quality of a firm’s work product.

    Sounds like a high chance for abuse without much of an upside. I predict this site will not last very long.

  77. I am against such sites as “USPTOExaminers.” It is one thing to rely upon anonymous freedom of speech when talking about a public figure, but the opportunity for abuse of private individuals far outweighs any possible benefit. A good example of the abuse that can result is the “JuicyCampus” website where anonymous posters are trashing fellow students.

    I learned a long time ago to take responsibility for what I do and say. If you don’t have the guts to say something directly to a person, then don’t say it behind their back, that is, anonymously.

  78. I have looked at the UE site and some of the comments posted about folks and do not find them particularly helpful for the sole reason of their anonymity. The last time I checked a majority were simply ad hominem type attacks.

    In my opinion, the site would be more helpful, and I would be more likely to contribute to it if the format were a little different. Rather than allow individuals to post whatever unstructured comments they want, perhaps a number of different areas could be identified ahead of time, and then contributors could be allowed to rank each area from 1-5 (representing stongly agree to strongly disagree, or very poor to very good) using radio buttons like in many other surveys.

    For the Examiner’s side, you could have areas such as responsiveness to interview requests, cogency of office actions, clarity of oral communications, returns calls, etc. For the practitioners side, you could have similar relevant areas and rankings. Then, perhaps provide a box for additional comment at the end. And, I think it would be possible to set it up so that a contributor must register and can only vote once to prohibit flaming against one person. The PLI site offers such controlled voting on occasion.

    In my opinion, this type of site format would be better because it limits the ad hominem comments to the extra comments section and gives less biased information across a number of different areas but still gives useful information about a number of different factors. Lastly, it would allow tallying percentages for each factor area, which in itself would be more useful than the biased ad hominem attacks.

  79. Personally, I think that the concept IS a good idea (& I DO work at the PTO).
    Actually, I suggested (either here or at JustAnExaminer’s site) many months ago, though most people responded that they thought it was a bad idea then.
    This can be used internally to help weed out the worst of the worst as well as target examiners that need better training. Or issues that need better training for the whole corps. And, since it is anecdotal, it is not something that can be used in a PAP rating, so there would be some protection for the examiner. While there will probably be a low S/N ratio, it can still be useful.

    Of course, we need more examiners to post about the bad things we receive from the lawyers, too. And we DOOO see some real bad stuff.

    I just reviewed a case where the lawyer’s responds to a final rejection were basically a rehash of his previous pre-final response. Problem was that the Final rejection used new grounds of rejection, so his remarks were totally worthless and meaningless. Easy advisory for the examiner. A big waste of the applicant’s money. Incompetence? Negligence? Malpractice? I won’t say that it was. I will leave that to the reader and whoever is in the position to make those decisions. Maybe I’ll post that one. I am sure the lawyer will like seeing his name (and firms) as one of the headers ;)
    It would have been nice if someone had reviewed this response rather than just rubber-stamping it & sending it out… (not that THAT would ever happen at a law firm).

    thanks,

    LL

  80. does anybody really need a website to clue them in to the fact that a particular examiner they are dealing with is an idi0t? can’t you figure that out after reading one office action?

  81. I’ll be curious to see how the PTO tries to shut it down.

    Somebody wrote:
    “For the comments to have any meaning, the posting would have to be non-anonymous. That is not going to happen. Thus, the site has no real use.”

    Hah! Sounds like an Examiner talking.

  82. The Internet is the new frontier. Like the Wild West, there are masked men riding around, some who mean good and some ill.

    As in the Wild West, we’re not going to see people settle down and start working together until the masks come off.

    There are important public benefits to anonymous speech. But it tends to be a trap for the individual who speaks anonymously out of fear of reprisal. Anonymous speech is better suited for Speaker’s Corner than it is for the wilderness, where credibility and the identification of incentive-caused biases are of the utmost importance in sorting through difficult issues.

  83. Dennis might have other comments in mind, but I’m curious – Can stating that someone is incompetent be defamatory? Isn’t that obviously an opinion?

  84. My opinion for what it is worth is that if you have positive or negative comments concerning a patent examiner contact the examiner and/or his/her boss and express them.

    (And from my previous postings you know that I am a patent attorney and not a patent examiner.)

  85. When I was searching for new apartments recently, I used the Internet to help me evaluate potential buildings to live in. What I quickly discovered (though it’s honestly not a stretch, considering that eBay has been dealing with this sort of thing for years) was that many, many reviews to these websites were posted by (a) landlords who wanted to improve their appearance to potential renters and (b) disgruntled former tenants who made unreasonable demands or who were evicted due to their own bad behavior. The signal to noise ratio was very low on these sites, in large part due to the anonymity provided to the contributors.

    I predict that the site mentioned here will suffer from the same problems. Unscrupulous examiners will anonymously post on their own and their friends’ behalf, and unscrupulous attorneys and inventors will go out of their way to smear examiners who wouldn’t accede to their demands.

    I’m hoping the sentence, “Fix this for us or we’ll give you a bad review,” is never uttered by a patent attorney. But if this site becomes popular, it will only be a matter of time.

  86. I thought about setting up such a site, as I am sure many others did, some time ago. We all have stories we could tell about Examiners. For the comments to have any meaning, the posting would have to be non-anonymous. That is not going to happen. Thus, the site has no real use.

    The truth is, we develop an understanding of and opinions on the Examiner’s with whom we deal on a daily basis, as a result of our own interactions and others in our firm or friends in other firms. I don’t think this site will result in anything useful.

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