Why Use Anonymous Searchers?

I was looking through a file history today and ran across the interesting note.

“This file is in disarray because a Public Searcher from the Law Firm of ***** LLP copied the file and did not put the paper back in order.”

42 thoughts on “Why Use Anonymous Searchers?

  1. And another thing, who would have the time to print out such a slip? Here’s my take.

    It seems likely that it was a rival Public Searcher who was tired of his competitor leaving files in a mess. He likely would have known where is rival was getting business. Pissed, he preprinted out a bunch of paper slips like the one above. Then, followed his rival Public Searcher around, he checked the file and put in a slip if the file was a mess. His hopes were that the next person reading the file, would contact the lawfirm, who then would stop using his rival. The date was correct. Note how it is missing the number for the day. Printing out a bunch of slips for the months is easier than printing them out for the day. Also, it makes it harder to know when the slip was put in the file and harder for the rival to figure out who did it. The C. Hill portion probably is false.

  2. Somebody probably dropped the file, and the note may not even be from a PTO employee, but maybe from someone who copied it and is complaining about someone who had it before them. This would explain why they said it was a person from a particular firm, whereas the PTO would know the person’s name who had it last, but not who they work for.

    Searchers seldom copy files, hardly any more often than patent agents or attorneys do. OTOH, with electronic file wrappers the number of people who copy files for a living must be dwindling. Big law firms often use the same people who they use to file papers by hand, some search firms have people on staff, and there are people who are self employed who copy files.

  3. “That’s a fascinating and sad story. Perhaps it is an exception that proves the rule (I await the weary lexicographer’s comments …). Any issuable pre-GATT submarine claim that is valid is likely to be uninteresting. And the interesting ones are likely to be invalid.”

    Not sure what this is supposed to mean, probably nothing. Just another attempt by Mooney to sound grandiose like the subway schizophrenic that lives in a box behind the vending machine and talks convincingly about his days as a medical doctor. If Mooney’s comments sound interesting they are probably moronic; if they sound moronic they are probably uninteresting.

  4. I’ve done exactly one file copy.

    Anarchy is what it was.

    I must have stood out like a sore thumb in my monkey suit.

    It’s a miracle that any of the paper files that get copied make it back in any decent condition.

  5. As a searcher who as spent some time in the File Information Unit (public access to prosecution files), I can attest to the professionalism of most of the people who work diligently to copy the files accurately. However, the place is not very organized, one person can check the file out but someone else ight be the one who copies it. It is hard to keep people accountable when a file not placed back in order – or worse when pages or whole section go missing.

    I do not see where the PTO has any incentive to place the file back in order. The PTO does not seem to place any priority on taking care of the public record – some of the files I have reviewed look like a pack of dogs had been chewing on them.

    Unless the firm name was used to check the file out (which I doubt since you need and actual user name), C. Hill could only research the name of the last person to sign out the file in the file information unit. As to why C. Hill choose to put a note in the file and then omit the firm name – no idea.

  6. Not a litigator,

    If you are interested in the defense of laches and have access to case law of the Federal Circuit, then check out lengthy opinion of A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2s 1020 (Fed. Cir. 1991) (en banc).

    From my cursory review, it is a factual inquiry, i.e., a 12(c) motion would not be much help to the alleged infringer trying to avoid the costs of litigation.

  7. Not a Litigator-

    You could assert laches if the pleadings admitted all elements of that defense. In that case it would be under 12(c), not 12(b)(6). But I don’t think this would be typical, based on how little is admitted in complaint and answers these days. So yes… you’re looking at 6 digits.

  8. “And this is the best-case scenario. There’s no guarantee the trial court will grant summary judgment.”

    Can you assert latches on the pleadings alone? Like 12(b)(6) style? That might be cheap.

  9. “anon–*did* C. Hill leave the file in disarray? That is implied, I guess, but not completely clear from the information provided. Maybe C. wrote the note after spending hours straightening it up (unlikely, but possible).”

    c.f.
    “this file IS in disarray”
    (the way you see it is the way I found it…)
    and
    “this file WAS in disarray”
    (until I fixed it…)

  10. “Perhaps it is an exception that proves the rule (I await the weary lexicographer’s comments …).”

    I’m good. I don’t do paradoxes.

  11. “Anyone who states emphatically that the total attorney+third-party fees springing from early litigation, discovery, briefing, and oral arguments come to only $50k either doesn’t do litigation or has gotten themselves the law firm deal of the century.”

    And this is the best-case scenario. There’s no guarantee the trial court will grant summary judgment.

  12. anon–*did* C. Hill leave the file in disarray? That is implied, I guess, but not completely clear from the information provided. Maybe C. wrote the note after spending hours straightening it up (unlikely, but possible).

  13. Mr. Morgan wrote: “several years of litigation, and several million dollars diverted …”

    To which Overblown replied: “Don’t be silly. Laches defense on summary judgement at trial court with minimal discovery. Less than half a year from complaint to dismissal and $50,000 in court and attorney fees. Patent is dead and cannot be reasserted against others.”

    And the truth lies somewhere in between. You won’t conduct discovery solely on the issue of laches — you undertake discovery on ALL of your known issues. Anyone who states emphatically that the total attorney+third-party fees springing from early litigation, discovery, briefing, and oral arguments come to only $50k either doesn’t do litigation or has gotten themselves the law firm deal of the century.

  14. So am I the only one disturbed that C. Hill found time to put the snippy post-it in the file but in a typical non-problem solving approach (ie, the PTO approach) left the file in disarray. He/she could have delegated the task to to the docketing staff (yes, they’re busy but we all get tasks in life we dislike…responding to crappy office actions comes to my mind).

  15. “This one will not issue because the purchaser chose not to pay the issue fee”

    That’s a fascinating and sad story. Perhaps it is an exception that proves the rule (I await the weary lexicographer’s comments …). Any issuable pre-GATT submarine claim that is valid is likely to be uninteresting. And the interesting ones are likely to be invalid.

  16. Definitely Fitzpatrick for the first word. I’ve analyzed the letter spacing and the letter trace at the bottom of each letter.

    Fitzpatrick, then space, then . . .

    still working.

  17. “There are no meaningful submarine applications pending which could not be easily taken down on IC, laches, or enablement grounds by a competent litigator.”

    Not necessarily true. I’m an in-house attorney. In 1989 another attorney who was here at the time filed an application. In 1993 it was under final rejection and he appealed. By sometime in 1994 it had a brief, examiner’s answer and reply brief. In 1995 I was substituted as attorney of record in an internal change of assignment. In 1996 we sold the business and this application, but, as it turns out, the purchaser did not cancel my power of attorney. In early 2007 I received a decision from the Board reversing the rejection and remanding the application. It apparently had been lost in the PTO all that time. In late 2007 I received a Notice of Allowance. This one will not issue because the purchaser chose not to pay the issue fee, but who knows how many more are floating around because of PTO error.

  18. We all love puzzles. The name starts with “F” or “P” or maybe “R”. Most likely “F”. It has a single “p” at about the 4th letter. Probably two names. No “g”, “j”, “q” or “y”. Ends in “h” or “n” or “m”.

    <<<

    Steve,

    Can I buy a vowel?

  19. “several years of litigation, and several million dollars diverted”

    Don’t be silly. Laches defense on summary judgement at trial court with minimal discovery. Less than half a year from complaint to dismissal and $50,000 in court and attorney fees. Patent is dead and cannot be reasserted against others.

  20. Re: “There are no meaningful submarine applications pending which could not be easily taken down on IC, laches, or enablement grounds by a competent litigator.”

    Possibly, typically after several years of litigation, and several million dollars diverted from stockholders to litigation firm profits, all for something the PTO could and should have easily prevented. I.e., only someone never paying for patent litigation and only profiting from it would call any of those an “easy” solution.

  21. Not familiar with the inner workings of the PTO — what is a public searcher? What’s the function? If you hire a public searcher, are you immune from treble damages that come from willful infringement?

  22. “Old patent applications which were not refiled as continuations after 6/8/95 will even still have patent terms running for 17 more years after they finally issue, and may never even have been published before.”

    There are no meaningful submarine applications pending which could not be easily taken down on IC, laches, or enablement grounds by a competent litigator.

  23. Note that the comment is dated June 2002 so this is something that happened six years ago. The law firm may not even exist any longer – or have a different name.

  24. Upon further reflection, I won’t use anonymous searchers in the future – I’ll use searchers who purport to be an adversary of the client. After the searcher destroys the file, I’ll point to the “official memo,” during litigation, to make the adversary look culpable.

  25. Is that note from the Patent Office. It must be – it makes sense. Why should the Patent Office actually reorder the papers, when you can take the time to prepare a memo complaining about the situation?

  26. Dear Jim H.,

    Thanks again for the most interesting and edifying Constitutional dialogue on the
    “Patent Reform 2008: (fixing constitutional errors)” thread.
    I will study Article III when my schedule permits.

    PS: It appears that you are a typophile. So am I.

  27. We all love puzzles. The name starts with “F” or “P” or maybe “R”. Most likely “F”. It has a single “p” at about the 4th letter. Probably two names. No “g”, “j”, “q” or “y”. Ends in “h” or “n” or “m”.

  28. Credit given where due:

    The PTO electronic filing/records has been fantastic.

    Much better than that which I had either hoped for or expected.

    Made my job a lot easier.

    Can’t remember the last time I filled out an Express Mail label.

  29. “However, unfortunately, PTO management has consistently failed…over the years”

    Truer words were never spoken.

  30. “try Faegre & Benson”

    Probably not.

    There’s no hook in the tail of the “g.” The type font appears to use hooks — look at the “y” in “disarray.”

  31. Such paper file history messes [or completely missing files] have been all to typical of widely-asserted patents such as Lemelson’s [the very patent files most needed by the public]. It was also not unusual to find old patent files buried somewhere in the offices of examiners supposed to be [but very often not] handling divisional or continuation applications of those patents in priority filing date order. Several years ago it was even reported that an entire PTO contractor-run remote file facility had such flimsy shelving that it all collapsed like dominoes into giant piles of files. Ordering copies of paper file histories from the PTO itself (to be hand-copied by low-paid contract employees) often took way to long.
    No doubt these were all factors in the PTO decision a few years ago to go to all electronic (rather than paper) file histories, hopefully with consistently better integrity and access. It was accomplished surprisingly rapidly, and hopefully the above will become ancient history once the period of enforceability of all older patents finally ends [up to 6 years after patent expiration for back damages for suits filed just before the patent expires - 35 USC 286 - absent a 287 non-marking defense].
    However, unfortunately, PTO management has consistently failed to provide over the years the docket control and examiner supervision needed to clean out its shameful backlog of gross-pendency “submarine” patent patent applications. The PTO has not even provided the public with current statistics on how many more such “submarine applications” are still pending to be sprung by surprise on U.S. companies, even though the PTO says it can generate true total pendency docket information. Old patent applications which were not refiled as continuations after 6/8/95 will even still have patent terms running for 17 more years after they finally issue, and may never even have been published before. I hope that someone will convince the PTO management to address this. They do not seem to adequately appreciate that even though such very old applications are only a small part of the total PTO backlog, they are a significant public danger.

  32. “Public Searchers are low in the pecking order, but even we have people lower than us…”

    You’re not unappreciated, though. I love my searcher and I wish more clients would let me have him run a search before drafting an application.

  33. Ha Ha.

    Public Searchers are low in the pecking order, but even we have people lower than us… the file wrapper folks. We sub that work out to them just as firms sub search work to us. Guess that one bit somebody two+ levels up in the rear.

  34. Is it appropriate for a librarian to place a note on the shelves saying “These shelves are empty because students from The University of Entropy took books off the shelf and left them on the table.”

    Or should the librarian put the books back on the shelf where they belong, in the order they belong?

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