Chamber of Commerce Calls for Internal Changes at the PTO

The US Chamber of Commerce has released a set of recommendations for President Elect Obama in dealing with the USPTO. Some highlights below:

  • Comparing the past twenty years:

     

Year

Budget (Mil)

Patent Examiners

New Apps

Total Backlog

Pendency (Months)

1988

$144

1,540

148,000

268,000

20

1998

$567

2590

240,000

481,000

24

2008

$1,915

5,960

463,700

750,600

32

    

  • The PTO should use “fee and order of examination incentives” to encourage applicants to provide higher quality applications and information disclosures. Thus, instead of making a hard cut-off for RCE filings, the PTO should consider charging an “increasing fee for successive continuations or RCE filings.”
  • The PTO should allow oversight and transparency in its quality review process.
  • The Second-Pair-of-Eyes Review program “seems to be breeding a negative attitude among examiners and many applicants. The concept of quality review is essential, but the focus needs to change so that poor, unjustified decisions are not made in the alleged interest of quality.”
  • The next PTO director should have experience in patent prosecution and litigation.
  • Deferred Examination: “If the PTO cannot reduce its backlog through other means and the number of patent filings continues to increase, consideration should be given to allowing patent applicants to defer examination of their applications for perhaps up to three years.”
  • Key contributors to the report include Dana Colarulli (Legislative lead for the IPO); Q Todd Dickinson (former PTO director); Nicholas Godici (former PTO commissioner of patents); Esther Kepplinger (former director of patent operations at the PTO); Mike Kirk (former deputy commissioner of patents); Stephen Kunin (former director of patent examination policy for the PTO); Gerald Mossinghoff (former PTO director); Charles Van Horn; and Herb Wamsley (IPO) .
  • Read the Report.

118 thoughts on “Chamber of Commerce Calls for Internal Changes at the PTO

  1. Bit late on this, but I just read the review.

    Separation of search and examination is a horrible ideal, as most have pointed out. There is no motivation for the searchers to do a good job. This is apparent because a fair chunk of ESDs, IDSs, and PCT reports are useless.

    Pre-first action interviews are generally a complete waste of time. The argument “but they save time if the first action is an allowance”, is pretty dumb considering that some insanely low percentage of FAOM are Quayle’s. So what happens with these is that 99% of the applications have prosecution extended because of the useless interview and 1% are accelerated, (because issuing a Quayle’s is so slow).

    To accelerate prosecution, I believe there should be a new, required section in our OAs. “General consideration and examiner proposed amendments”. Under this section the examiner can state that no amendment to the claims would make the claims allowable and believes that the case contains no allowable subject matter. Or the examiner can propose amendments to the claims that would make the case tentatively allowable.

    Motivation to get the examiner to add proposed amendments would be a new examiner rating metric (similar to counts) if the amendment is adopted by applicant and the case subsequently issues. Applicants can chose to adopt the amendment in full(2 points for the examiner), adopt in part(1 point), or not adopt at all. The case must immediately be submitted for issue (within x Time from applicant’s reply) in order for the examiner to get the points, thereby allowing haggle room if the applicant adopts in part, and the examiner is the one motivated to quickly respond. Direct correlation between # of points and monetary bonuses at end of quarter.

    Once submitted for issue the current (or even expanded) quality review system reviews the submitted-for-issue application. Points are docked for “issue errors” and the application is returned to the examiner. If there are no problems, then it issues and everyone is happy.

  2. “Since I can’t be stopped from overclaiming initially and since it is in my interests to do so, I will do so whether or not it contributes to a needless burden on the PTO. You have me to thank for the backlog.”

    Sorry 6K … 35 C.F.R. § 10.83 states that “[a] practitioner should represent a client zealously within the bounds of the law.” If I have reasonable belief that the claims I present are directed to patenable subject matter, then I’m OK.

    If, by chance, because I was not aware of a particular refernce or was unaware that an examiner would construe a particular manner in which I did not anticipate, then the claim is rejectable …. no big deal, I’ll just amend or cancel.

    6K — this is the way it has worked since before your daddy was a gleam in your grandfather’s eye. If you don’t like it — tough, because you are stuck with it.

    It is simply the practice of administrative law in this country.

  3. “Well then, it’s a good thing your opinion means nothing in light of the LAW.”

    Better hope my opinion doesn’t become shared by others any time soon because if it does then the “Law” will change shortly thereafter. Seriously though, claiming things that you yourself invalidate is basically a fraudulent activity. Frankly I’m surprised that more is not done in those situations. When the applicant themselves actually does know that a claim is invalid and they apply with it anyway… well, that just reeks of fraud. Just because the applicant might have grown to a ginormous size such that their right hand doesn’t know what their left hand is doing is but a minor detail and something they should deal with internally rather than foisting the responsibility on the gov, or defendants.

  4. “…but I sure do know that right before the rules were about to take effect…”

    let’s borrow some of 6’s LOL’s for that line and let it rest in peace.

    “IMO the rejection should not only be final, but any subsequent RCE’s, cons, etc. based on that app should be denied. Practically fraudulent activity should be well rewarded. Shut the whole app down for good. Maybe fine the applying firm, and the assignee.”

    Well then, it’s a good thing your opinion means nothing in light of the LAW.

  5. “The purpose of examination is not to get allowable claims the first time around – the purpose of examination is to get claims that accuratelt reflect the boundary line the separates applicant’s claimed invention from the known and/or obvious.”

    Translation:

    Since I can’t be stopped from overclaiming initially and since it is in my interests to do so, I will do so whether or not it contributes to a needless burden on the PTO. You have me to thank for the backlog.

    Love,
    pds

    “Do you really, in the absence of the information I described above (i.e., the best prior art and a knowledge of how the examiner is construing the language of the claims), that making an RCE prohibitively expensive will a significant difference in how applications are drafted? ”

    Well, idk about drafting, but I sure do know that right before the rules were about to take effect and people didn’t want to waste their RCE applicants were wanting to make deals more and more.

    “Any attorney that counsels that an invention is “not novel” and/or “not-obvious” without a specific reference (or public disclosure/first sale) in mind is BEGGING to be sued for malpractice”

    Should be the other way around. If an attorney does not counsel that an invention is likely anticipated/obvious when they have relevant skill in the art then they should be looking to be sued for malpractice. Your job should be honest counsel, not merely stating the blatantly apparent, i.e. pointing out what a reference says (anticipation) or what a combination of references might produce (obviousness).

    “I bet the companies who have hundreds, thousands, or even tens of thousands of issued patents and/or published applications would loooove that rule.”

    IMO the rejection should not only be final, but any subsequent RCE’s, cons, etc. based on that app should be denied. Practically fraudulent activity should be well rewarded. Shut the whole app down for good. Maybe fine the applying firm, and the assignee.

  6. “One must write a patent application that carves around the prior art.”

    For being an alleged patent attorney, you are sloppy with your language. The specification is written to disclose and enable the inventor’s invention regardless of the prior art. The claims are what are used to distinguish the “claimed invention” from the prior art. Although the terms are often-times used interchangeably there is a difference between “the invention,” “the claimed invention,” and the “patentable invention.” The invention is simply what applicant believes the invention to be regardless of whether or not the invention is anticipated and/or obvious in view of the prior art. The claimed invention is defined by the claims but is not necessarily commensurate with the invention. The patentable invention is what should be allowed.

    As I have opined time and time again, unless the attorney knows (i) all of the prior art and (ii) knows how the examiner will construe the language of the claims, it is no more than a shot in the dark for the attorney to have the originally claimed invention = the patentable invention. Most attorneys (rightfully) believe is that if your main independent claim is allowed in the first action, then it means you’ve probably claimed the invention too narrowly.

    The purpose of examination is not to get allowable claims the first time around – the purpose of examination is to get claims that accuratelt reflect the boundary line the separates applicant’s claimed invention from the known and/or obvious.

    “The filing of an RCE is a failure, except in certain circumstances. The RCE MUST be made prohibitively expensive. This is the sure way to ensure that the case is drafted properly the first time.”
    Do you really, in the absence of the information I described above (i.e., the best prior art and a knowledge of how the examiner is construing the language of the claims), that making an RCE prohibitively expensive will a significant difference in how applications are drafted? My biggest problem is that examiners construe language using the broadest UNREASONABLE standard. When that happens, you usually don’t realize it until after final (examiners rarely provide claim constructions in a first action), at which point you either have to take a potentially loser argument to the BPAI (the BPAI tends to bend over backward to agree with an examiner’s claim construction) or amend the claim.

    “and then the real world called.”
    I second that.

    “Curious when representing a client before the USPTO you are doing so only in so far as it advances the useful arts.”
    Really? Once the application has been filed and published, this constitutes the advancement to the useful arts. Anything after that has nothing to do with advancing the useful arts. Instead, subsequent prosecution is all about obtaining the client’s due in exchange for the already provided disclosure. So, are you saying that any prosecution after the filing of an application is beyond the proper scope of an attorney’s representation of the client?

    “Specifically here, you do not need actual knowledge of a specific anticipating reference, as patent attorneys love to insist. You merely need to know that the application is not novel and non-obvious.”
    Novelty and obviousness is defined in 35 USC 102, 103 as to both the types of references, the types of activities, the date of the references, etc. If I have no actual knowledge of the alleged “specific anticipation reference,” how can I counsel a patent that the invention is “not novel” and/or “not-obvious” as you suggest? Me, I like to work with substantial evidence, not gut feelings. Any attorney that counsels that an invention is “not novel” and/or “not-obvious” without a specific reference (or public disclosure/first sale) in mind is BEGGING to be sued for malpractice.

    “If a patent application is found to be anticipated in view of a piece of prior art that is owned by the assignee of the application under examination more than one year before date of the examination then a final office action should be allowed regardless of the point in the process of the prosecution.”
    I bet the companies who have hundreds, thousands, or even tens of thousands of issued patents and/or published applications would loooove that rule.

  7. Anon, you are dead right, that separating search and examination is madness. The EPO has spent much of the last 10 years pushing through its BEST project (“bringing examination and search together”). The result is the EESR, that jewel in the crown of EPO prosecution, a first class search report to which the first O/A is appended as an annex, just a few months after the app is filed. Oh, and a question for you: this “better or updated” subject matter classification system you say that the USPTO needs urgently: Does it by any chance already exist, anywhere on the ROW surface of Planet Earth, or will creating it be just one more of stalwart and long-suffering America’s national burdens this year?

  8. 1) In my experience, better search goes hand in hand with experience. 7+ years working in an art would make a fair searcher . The reason why PTO cant find good art is a combination of lack of time, experience, the outdated classification system, and the numbers of jumbo patents in the classification system .

    2) separating search and examination is a bad idea since searching are often based on reading of the claims . Conducting examination in isolation from the knowledge of the totality of the art would eventually leads to a redefinition of PHOSITA .

    3) What PTO needs now is a better or updated classification system.

  9. The biggest problem with patent quality is that most of the applicants cant invent anything marketable. This coupled with denying patents on marketable things due to a paticular machine requirements and business concept denials and food configurations and recipes and franchizes ect. retard the good inventions from creation by denying financial rewards. Establishing more paterntable classifications will promote economic stimulious.

  10. “Does anyone outside of the self-interested patent bar really think that an economy where business methods, software, and – oh heck – 90% of what currently is patented in the mechanical and electrical arts suddenly could not be, would be any less competitive in world markets? ”

    Kinda reminds me of that old chestnut: “Everything that’s going to be invented has been invented.”

  11. “The first part implied that the attorney needs to conduct a prior art search”

    That is your subjective opinion. My subjective opinion is that he referred to prior art that was known to you and the inventor and that you go too far in reading things into his statement.

    “By the way, 6, I know that you’re an examiner. Perhaps if you spent more time examining patent applications and less time reading this blog and arguing with attorneys about the law that you know nothing about, the quality of your Office Actions would improve.”

    Mah OA’s are just fine thx. My workflo on the other hand…

    ” client comes in and says he’s invented something useful that he has never seen before. I defer to his years of experience in the field”

    So he lies to you and you defer to him. What’s new? Same ol’ sob story I hear day in and day out.

    “The “…you know of” is a definite distinction which rules out the phantom OED obligation that an attorney must prove patentability of the application. Your strawman is smoking!”

    You created and then set fire to a strawman? What’s new? Attorneys do it all the time around here. FYI, again, the only person bringing up the alleged phantom OED obligation was originally, and is still, you.

    I just jumped in to save you from your own ridiculousness, but if you feel like you need to continue then carry on. Maybe Anon will be back to validate your subjective opinions and then you guys can really have it out.

    “Remember, the client is “entitled to a patent” (that’s from section 102, for all you examiners who have never read it) unless the Office can show otherwise. That makes the Office the gatekeeper, not the practitioner.”

    There is no law stating such ridiculousness that you assert. There is however a law stating that it is when an application appears to be entitled to a patent that it will be issued. There is no law enabling the pto to issue an application that has not yet appeared to be entitled to a patent. Entitlement under 151 must be different than entitlement under 102 or else no application with a 112 as the sole rejection would ever be stopped from issuing. You likely know this well, but thanks for trying to contort the facts. As to the gatekeeper part, you are still a de facto gatekeeper whether you like it or not. Like you just said, you will not file claims you know are not patentable. Don’t even try to tell me nobody in all your practice has ever brought you something you knew to be unpatentable and you had to turn them away. Unless you’re 4 mo on the job that is I suppose.

    As for the “law I know nothing about”, I wouldn’t say I know nothing about it, and your saying it is trite as well as rebutted by a great many postings on this very board. When it comes down to it, I may very well know a great deal less about it than someone who studied it for a few years and then practiced it for 30, but compared to the avg man I know a great deal.

    Ttyl, doing mah workflo.

  12. I know another manner in which to solve some of the prior art issues. If a patent application is found to be anticipated in view of a piece of prior art that is owned by the assignee of the application under examination more than one year before date of the examination then a final office action should be allowed regardless of the point in the process of the prosecution.

  13. Joh G. You are correct. However, when the inventor is in the ineventive entity of other patents and/or patent applications in related art he should be charged with the knowledge therein and held accoutable if the information recited in the other patents and/or patent applications are not brought to the attention of the USPTO.

    This was a situation I faced. I came into a law firm a large client bought a small portfolio. I was handed the cases one at a time by a partner, i.e., worked on one case one month another case a few months later and so on.

    It was in a coversationw with the inventor that he informed me of the totality of the patent applications pending. All were drafted and filed by a pre-eminent patent law firm. Not one IDS was filed in any of the cases and it was four years later.

    Suddenly I am having to comb through all of the office actions and applications . . . no secretarial assistance and with minimum time afforded because the new law firm didn’t want to charge the client too much . . . not good for business. It wasn’t a pre-eminent law firm.

    This is not the only time I have seen this. This is just crap. There ought to be a way for an associate to handle this situation without being screwed for their time.

    I know that others are facing this. There ought to be an ethical rule that says a partner shall not ding an associate for time fixing someone else’s mistake. It is just crap that this situation exists thousands of time over.

    If OED does not get into each and every patent practice and start controlling the internal operations to avoid these problems . . . the system will never work.

  14. I don’t like being called a liar. The fact that I, or the inventor(s) may have been ignorant with respect to existing prior art is not the same thing as willfully ignoring/hiding art. This is a typical, and wrong, examiner impression. I should know because I was one for many years.

  15. Good point DavidE; however, such is the nature of anonymous blogging with passionate people. While I agree that civility makes for a better intellectual exchange, this is not the profession (or place within the profession) for the thin-skinned. Please don’t let the seeming harshness prevent you from discussing your views.

  16. Pragmatic, I felt it was needed. The attorney does perform a gatekeeping function (whether anon is correct or not), and many of the earlier posts were suggesting a belief that there was none.

    Further, I have personally seen many applications which are clearly anticipated or obvious at the outset (the entire idea, not just the claims), and I give more credit than to believe the attorneys who file these applications are too dumb or ignorant to realize it. My conclusion? The attorneys who filed the applications violated their ethical obligations. So that’s another reason I felt compelled to write something.

    As my last post in this thread, I’ll end by pointing out that it is much more common to see the poor work from the other side than the poor work from one’s peers. We should all probably keep this in mind when we discuss problems with the patent system and realize that those posting here are the ones who want the system to improve. This stuff doesn’t need to get as personal as it always tends to.

  17. Thanks for the soap box DavidE.

    If I know that the application (and more to the point, the claims) is (are) not novel and non-obvious, I wouldn’t prosecute the thing. I do have pride in my work product. I do not serve my client to the best of my ability otherwise. My earnings potential actually increases because of my ethics. My ethical obligations are not so immense in how 123 outlines the (usual) situation above. In such a situation, anon is completely off-base in what the OED can or should do. The preaching (anon’s, 6k, yours) acts like a smokescreen as Noise indicates and those whose actual duty is being shirked hide in that smoke.

    None-the-less, the gatekeeping in question – proving patentability or making sure that all prior art is carved around so as to advance the art – is the duty the Office, not my ancillary and already documented and regulated requirements. Foisting the duty of the Office on me is why the recent rule changes failed so miserably. Yet, the bankrupt ideology persists as witness by anon and 6k postings. In order for the Office to do its job, the Office needs to recognize what its job is.

  18. ‘…you do not need actual knowledge of a specific anticipating reference’ “You merely need to know that the application is not novel and non-obvious.”

    sounds like a PTO rejection, one based on the examiner’s gut reaction but without references.

  19. In response to the attorneys posting here, please understand that the ethical obligations placed upon you are the most important things in your profession and they are more important in the real world than in the ivory tower of law school where you learned them (and many of you may have left them). Even though some attorneys blatantly ignore their ethical obligations and get away with it, you are not absolved of yours, regardless of how it affects your earning potential. The PTO is the ultimate gatekeeper of patentable subject matter, but you are gatekeepers as well.

    Specifically here, you do not need actual knowledge of a specific anticipating reference, as patent attorneys love to insist. You merely need to know that the application is not novel and non-obvious.

    Having worked in private practice before coming to the PTO, I am painfully aware that the majority of attorneys of all stripes do not appreciate the immensity of their ethical obligations. As I have learned, many patent attorneys are no different than the rest.

  20. By the way, 6, I know that you’re an examiner. Perhaps if you spent more time examining patent applications and less time reading this blog and arguing with attorneys about the law that you know nothing about, the quality of your Office Actions would improve.

  21. 6, here’s how it usually works: A client comes in and says he’s invented something useful that he has never seen before. I defer to his years of experience in the field, but still tell him that just because he’s never seen it before, doesn’t mean it hasn’t already been invented, and I can render a patentability opinion to give a better idea about patentability. I tell him that an opinion is almost never definitive because I can’t look at every patent ever issued or guess at how some screwball examiner is going to twist the prior art in order to make a rejection. After I tell him that the opinion will cost almost as much as drafting the application, and that the examiner is going to perform the same search and render his own screwball opinion in the form of an Office Action, the client says “no thanks, just draft and file the app”.

    Attorneys are the gatekeepers only in that they have a duty to inform the Office of any known prior art that impacts the patentability of the claimed invention. As I’ve said before, I don’t file claims that I know to be unpatentable, so I never know of any prior art that impacts patentability.

    Remember, the client is “entitled to a patent” (that’s from section 102, for all you examiners who have never read it) unless the Office can show otherwise. That makes the Office the gatekeeper, not the practitioner.

  22. 6,

    You continue to misconstrue. No surprise really.

    Let’s look at this in two parts.
    Part One
    ” One must write a patent application that carves around the prior art. Otherwise we have no right filing a patent application.”

    Part Two
    If you’re not doing this already, i.e. carving around all prior art you know of,..”

    The first part implied that the attorney needs to conduct a prior art search. In essence, the attorney is responsible for proving patentability. This is what anon was called out for.

    The second part is the smokescreen. The added words “…you know of” is key. With these added words, you invoke our responsibility to share what we are aware of and you add the strawman of drafting claims that do not directly read on the prior art. Anon was silent as to this already existing requirement and this requirment was NOT a part of what anon was called out for.

    The “…you know of” is a definite distinction which rules out the phantom OED obligation that an attorney must prove patentability of the application. Your strawman is smoking!

    Aside from the limited arena of drawing an interference, it is only good practice to draw claims distinct from the KNOWN prior art. This is a completely different argument than what anon posited (OED regulation = LAW that attorney is required to prove patentability by searching prior art and drafting claims that carve out in order to advance the art), with all due respect for your smokescreen strawman.

  23. “I know I have a duty to share that particular art and I use the appropriate vehicle (IDS).”

    I should add, your ethical duties seem to require more of you than submitting a 102 that you know of in an IDS. They require that you not submit the claim. You are acting fraudulently.

    “In the broadest sense, a fraud is a deception made for personal gain or to damage another individual. ”

    It seems to me you are executing a deception when you sign your name on an app concurring with the applicant that his claims are the subject matter which are his invention at the time filed when they aren’t even an invention, much less his, and you already know it.

    Lowly could probably tell you more about why you are obligated to not submit anticipated claims etc. I doubt it is solely because it is not in the clients best interest.

    Also, whether you like it or not, it seems you are a gatekeeper. You know that you may not make false statements in your replies for fear of IC. This should include submitting claims you know are anticipated etc.

  24. What anon said was this:

    “There was NO time alloted for reviewing the prior art. As a result, they laughed at Moatz’s requirement to review each piece of prior art before filing. I had to review it on my own time, without pay.”

    This says nothing about finding prior art. It does say that you should review the doc’s you are submitting in an IDS. He did not say that it was a statute. He said you should. He’s right. If you want to better serve your clients you’ll at least look at what they are wanting to submit before sending off your own cockamamy claims that were drafted with 0 knowledge of what came before. He’s also right that the PTO desires attorneys to do so.

    Maybe he said something about finding prior art previous to that quote?

    ” One must write a patent application that carves around the prior art. Otherwise we have no right filing a patent application.”

    If you’re not doing this already, i.e. carving around all prior art you know of, then you’re not serving your client, and you are acting unethically by failing to execute your duties as an attorney. You may also, as he has brought up, be violating 56. As the poor guy that 102e’d himself did. Luckily for him I found the reference without his help.

  25. “as cases would be resolved quickly if the USPTO actually did its job”

    lol lowly lowly lowly. Let me tell you about this application that has about 150 bro’s/sis’s in which I recently discovered a 102e filed by the same app/attorney, showing the exact same thing as claimed/drawn in the app. This was after 2x RCE’s. I believe I already had seen the 102e, but I had 102b’s flying everywhere until now, and the date was such that it was barely before the 100’s of bro’s/sis’s that were all filed together (or were all DIV’s etc of one parent filed). So, once they finally got around my 102b’s, I go back and look and find this 102e showing the exact invention. This 102e ref was not in an IDS. The problem was, there are literally 150+ sister apps that all have the same filing date. Are you saying that since I didn’t happen to notice a difference of 2 mo in the filing dates of 150+ apps until now that the fault is all mine when THE APPLICANT HIMSELF AND HIS ATTORNEY 102e’d himself WITHOUT PUTTING IT IN AN IDS? Further, are you stating that since I failed to list all the likely 50 pieces of prior art that read like a 102b on all the previous claims that I’m somehow “not doing my job”?

    I daresay that we do our jobs just fine thanks. We’re not perfect, but when you guys are 1000x as far from perfect as we are you can eat our a. Sound good to you?

    I will never forget the application that 102e’d himself.

  26. 6,

    Actually, anon IS saying that I have the responsibility of searching the prior art and not prosecuting applications for which I determine not to be advancing the arts. I am saying otherwise. This abdication of a gatekeeping task (which rightfully belongs to the examiner) is what is critically wrong with the office. The power-grabbing-change-the-rules mentality of the Office gets in the way of what they actually should be focusing on. Making such noise gets in the way of the office following the law.

    I am NOT saying that if I am aware of 102/103 art that I can ignore that art. I know I have a duty to share that particular art and I use the appropriate vehicle (IDS). I have never said that attorneys should violate LAW – this is a smokescreen and is only thrown in to obfuscate how off anon is with his belief in the OED regulating attorney behaviour.

    Your selective reading of the blog matches (in error) the selective understanding of an applicant’s attorney’s regulated behaviour that anon insists upon.

    C’mon anon, show me the LAW that supports your proposed regulation that applicant’s attorneys are to prove patentability.

  27. “You seem to miss my point. If my client thinks he is advancing the useful arts, I am there to help him. I am NOT there to review the prior art and make sure that an advance is actually happening. That’s the examiner’s job. I am not omnipotent and do not care to be. I practice the art of law and help people get what they want.”

    ^That is precisely the subjective view which I was thinking about while writing the above. I believe your opponent believes that the subjective view that the arts are being advanced by the app must be shared by yourself before you accept the application for you to not be unethically prosecuting the app. For instance if someone brings you the “the doorknob” per se as the “invention” then you must tell them that such a patent is not permitted on such an item since you personally already know it is not allowed under 102, and also that it does not advance the useful arts. And it would be unethical for you to submit such an application.

    None of your opponent anon, myself, or anyone else said you need to review prior art, or find prior art. What you do need to do is share the subjective opinion, if you do not, then you are unethically representing the application.

  28. ” the PTO is the gate-keeper, i.e., its mandate is to ensure that only inventions that advance the useful arts are patented.”

    WELL, if that’s the case, then 100% of my cases are rejected under whatever statute you’re citing as being the basis of your opinion. Care to share so that I can simply reject applications as not advancing the useful arts?

    ” We are working to advance the useful arts. In furtherance of that there must be accountability and certainty during prosecution. This whole situation about prosecuting patent applications for litigation is trite. We have one job only . . . advance the useful arts by preparing and prosecuting patent applications to provide the client with the broadest possible definition of the invention without being so broad as to render the claims invalid.”

    I suppose that you could be stating that since patents are only permissible constitutionally only if they advance the useful arts and since the attorney may have an ethical duty to only prosecute applications within the law, attorneys may not prosecute applications which do not advance the useful arts. Or, alternatively that since the attorney has that ethical obligation then it is their duty to not submit claims which they know are unlawful under 102 or 103 etc. Lawyers are after all officers of the court, even in an Ex Parte right? Good argument, but they do that all those things all the time. Good luck getting the CAFC/SC to actually stem the tide.

  29. Anon,

    You construe my comments too liberally (and I thought with your use of Latin, that you understood how to argue). I am simply advocating NOT what you are advocating. You are in error in assuming from my comment that I am against ALL regulations on attorney behaviour, just as you are in error in assuming that the applicant’s attorney has a duty to prove patentability (for the advancement of the art).

    I don’t have ANY problem with the OED’s current regulations on attorney practice. I NEVER said that I did have any issues with the OED applying proper regulations to attorney behaviour. I DID say that you are wrong in your mistaken belief about what an attorney is regulated to do (and you are STILL wrong). I did say that most (real) attorneys are not concerned with joining the OED in order to promulgate phantom regulations on other attorneys. We really just want to serve our clients the best we can. IF you were an attorney, you would recognize both the gross error in your logic and what I have actually said is true.

    I notice that you are trying to change what is being kept by the gatekeeper by pulling in Rule 1.56. This is not what you first proposed and what you are being held up for scorn with. Your phantom regulation is what is under discussion. Please point out where I can find this regulation under the LAW.

    A last bit of advice – stop digging. Please find another crusade that is worth your time and effort.

  30. You stated the following: Most attorneys do not want to join the USPTO to govern other attorney behaviour.

    You are advocating that attorney behaviour regulation is not wanted. That is absolutely incorrect. In fact from what I have viewed on this board I believe that it is good that the OED will become more active in regulating attorney behaviour.

    By the way obtaining a patent through the USPTO is an Ex Parte process. As a result, we ARE the gate keepers, because what the client says is to be taken as the gospel. As such, we are the ones charged with making sure that the USPTO is fully apprised of accurate facts. Patent practitioners are being slayed left and right by the courts using rule 1.56. You know, like the attorney who failed to include in the affidavit that the affiant worked for the assignee of the claimed invention.

  31. anon,

    What are you talking about? I am preaching that Law MUST be adhered to – by the appropriate people. Which non-regulation of conduct are you refering to? Your non-existent regulation that applicant’s attorneys have to prove patentability?

    From our friends at wikipedia.org: Q.E.D. is an abbreviation of the Latin phrase “quod erat demonstrandum” which means literally, “that which was to be demonstrated”. The phrase is written in its abbreviated form at the end of a mathematical proof or philosophical argument, to signify that the last statement deduced was the one to be demonstrated, so the proof is complete.

    What the h3ll has my statement have to do with Wall Street and the lack of control therein? If anything, I should Q.E.D. back at you in that when regulations (i.e. LAW) is not followed by those who have been charged to follow it (the Office and the BPAI), chaos is the result – the Madoff Ponzi scheme as case in point. You are trying to CREATE a regulation that is non-existant (Applicant’s attorney proving patentability) and say that because this never-was regulation is unenforced, the demonstrated downfall of wall street is complete proof of your view. Q.E.D.? You are N.U.T.S.

  32. Well Noise above the law your adherence to non-regulation of conduct might be tempered if you simply look upon the latest statement for your retirement accounts. That is the natural end of failing to regulate unbridled greed. Q.E.D.

  33. Lowly,

    Thank you for highlighting the critical need for patent reform.

    anon,

    I sympathize with your desire for perfection, but as others indicate, the attorney is not the gatekepper and serves the client. The gatekeeper is the Office and they have a perfectly functional set of tools (the Law) which to use. They need to execute the tools they have and need to stop trying to change the Law to fit their agenda.

    I infer from your repeated posts that you think somehow it is the attorney who is responsible for determining patentability, since something is patentable only if it advances the arts (I am paraphrasing your view). This is clearly erroneous and an abdication of the examiner’s duties and a capitulation to the critical problem created by the office and their neglect of their primary function.

    Your desire to join the OED and enforce your understanding of what an attorney should be doing is telling that you do not have a clue as to what the real critical problem is. Most attorneys do not want to join the USPTO to govern other attorney behaviour. That is a symptom of the illness that infects the Office and their power-grabbing ways.

  34. “No I do not work for the PTO. I am just tired of inheriting cases whereby the person who drafted it was so f-ing proud to bring the application in under budget and within the time constraints that the client desired without giving a rats a$$ about patentability. The filing of an RCE is a failure, except in certain circumstances. The RCE MUST be made prohibitively expensive. This is the sure way to ensure that the case is drafted properly the first time. What I have seen are cases so poorly drafted that the attorney keeps the RCE practice going to extend the occurrence of the ultimate final disposition of the application . . . abandonment. This delay is burdensome on the PTO, detrimental to the client and often times might result in the practitioner retiring before the harm done by the poorly drafted application is realized.”

    My firm has recently had a large batch of pending applications transferred from another firm to us to fix. The prior firm was clearly a budget cutter and did a crap job on these applications. It bugs me, but I kind of enjoy taking a piece of crap, fixing it up, and getting the case allowed. I get to feel like I saved the day.

    Anyway, I totally disagree with you on the RCE’s. Many times, the examiner doesn’t even do a real search until the 1st RCE. It doesn’t matter how well the case is drafted if the examiner doesn’t do his job properly until after the 1st RCE.

    If you want to ‘fix’ applications, fix examination. If we actually received a quality examination at the USPTO (like you do at the EPO), clients would notice attorneys burning through 5 RCE’s because that would be abnormal (as cases would be resolved quickly if the USPTO actually did its job). the clients would then realize the attorneys are doing crap work and fire them.

  35. Anon, you’re going to join the OED and “do a little educating”? There is no requirement anywhere that practitioners “advance the useful arts”. Practitioners aren’t required to search the prior art; the PTO is the gate-keeper, i.e., its mandate is to ensure that only inventions that advance the useful arts are patented. You are clearly an under-trained examiner who has no clue what he’s talking about.

  36. On December 26 at 6:29 PM, Nobody 123 suggests pinging to ascertain if an Applicant intends to continue with an application.

    I think this is an excellent idea. Ideally, the ping would be an invitation to file an IDS before the Examiner did any work.

    The Applicant would be relieved from preparing the IDS until it actually matters and would then file one unified IDS as an indication that he or she wants to continue with the application.

  37. Anon.

    Is there a section of Title 35 which requires that an invention “advance the useful arts” in order to be patentable?

  38. anon, if you know of any patent statutes or portion thereof which are unconstitutional (such as for not advancing the useful arts as you contend) please let us know which one or ones and provide your explanation.

  39. Curious when representing a client before the USPTO you are doing so only in so far as it advances the useful arts. Congress has not the authority to allow you to do anything else before the USPTO, because Congress can authorize the USPTO to undertake only those activities that advance the useful arts. Nothing else can the USPTO do for it would be ultra vires.

    This, I believe, is what Moatz is trying to get practitioners to understand. Perhaps the annual fee paid to the USPTO by practitioners and the training that will result can remove these errant ideologies from practitioners.

    If you happen to be an attorney then you can represent your client as permitted by the state in which you work.

  40. Curious when representing a client before the USPTO you are doing so only in so far as it advances the useful arts. Congress has not the authority to allow you to do anything else before the USPTO, because Congress can authorize the USPTO to undertake only those activities that advance the useful arts. Nothing else can the USPTO do for it would be ultra vires.

    This, I believe, is what Moatz is trying to get practitioners to understand. Perhaps the annual fee paid to the USPTO by practitioners and the training that will result can remove these errant ideologies from practitioners.

    If you happen to be an attorney then you can represent your client as permitted by the state in which you work.

  41. “…ensure that the individual who drafts the patent application also prosecutes the same or pays dearly for not prosecuting the same.”

    and then the real world called.

    “we are not simply representing an individual before the USPTO. We are working to advance the useful arts.”

    Pollyanna calling.

    “advance the useful arts by preparing and prosecuting patent applications to provide the client with the broadest possible definition of the invention without being so broad as to render the claims invalid.”

    Is that it, gosh so simple. Now I can save the world.

    anon, time to step off the soap box. Just because I do not agree with you and think your pie-in-the-sky-Noble-calling is not of the real world, doesn’t mean I’m wrong (and you are automatically right) or that I don’t advance my client’s best interests at all times – I do and I am handsomely rewarded for it. Anon, there are simply better things to crusade about then “advancing the arts” and “greed is bad”.

    Thank you for quoting what the Congress provides in Article 1, section 8, clause 8. I needed the reminder and see the light.

    No, that’s just a light.

    You seem to miss my point. If my client thinks he is advancing the useful arts, I am there to help him. I am NOT there to review the prior art and make sure that an advance is actually happening. That’s the examiner’s job. I am not omnipotent and do not care to be. I practice the art of law and help people get what they want.

    “What makes you think you can.” – I never said such a thing.

    “I would even go so far that were you to fail to get a patent allowed, in certain circumstances, the client could sue to get their fees returned.”

    ah yes, in the “in certain circumstances” mode. In certain circumstances, ANYONE can sue to get their fees returned, even your clients, miss goody too shoes!

  42. The solution is easy . . . ensure that the individual who drafts the patent application also prosecutes the same or pays dearly for not prosecuting the same. To that end only the individual who actually sat with the inventor and put words on the paper should be allowed to execute the formal documents for filing. Were the client want to discharge the attorney it should cost about $5,000.00 for the change in power of attorney, unless certain circumstances arise. In this manner neither clients nor law firms can game the system. There would also be accountability. What we must remember is that we are not simply representing an individual before the USPTO. We are working to advance the useful arts. In furtherance of that there must be accountability and certainty during prosecution. This whole situation about prosecuting patent applications for litigation is trite. We have one job only . . . advance the useful arts by preparing and prosecuting patent applications to provide the client with the broadest possible definition of the invention without being so broad as to render the claims invalid.

  43. “No I do not work for the PTO. I am just tired of inheriting cases whereby the person who drafted it was so f-ing proud to bring the application in under budget and within the time constraints that the client desired without giving a rats a$$ about patentability. The filing of an RCE is a failure, except in certain circumstances. The RCE MUST be made prohibitively expensive. This is the sure way to ensure that the case is drafted properly the first time. What I have seen are cases so poorly drafted that the attorney keeps the RCE practice going to extend the occurrence of the ultimate final disposition of the application . . . abandonment. This delay is burdensome on the PTO, detrimental to the client and often times might result in the practitioner retiring before the harm done by the poorly drafted application is realized.”

    I tend to agree with you.

    If examiners did their job correctly, they would search a single disclosed invention/species before the first action and indicate allowable subject matter, if any, according to the MPEP.

    Practitioners would clearly set forth the claim scope and point out the relevance of cited art.

    If everyone did their part, applications should be in condition for final disposition (appeal, allowance, or abandonment) within one round of prosecution.

    Sadly this is not the case. I have spoken to many examiners and practitioners alike who want to milk counts/billable hours.

    And thus we have what we have. There are many good examiners and practioners, but there are many bad ones as well. I have dealt with probably the entire spectrum of all types.

    What can we do?

  44. Dear Pragmatic:
    You appear to be cut from the same cloth as the management of the USPTO. Article 1, section 8, clause 8 the intellectual property clause allows the Congress to provide a monopoly for limited times in furtherance of the advancement of the useful arts. Granting a monopoly without advancing the useful arts is not allowed by the Constitution. In other words Congress cannot even grant that right. What makes you think you can. When you file a patent application is must be to advance the useful arts. If not, you have just wasted your time and, should your client be foolish enough to pay you, the client’s money. I would even go so far that were you to fail to get a patent allowed, in certain circumstances, the client could sue to get their fees returned.

  45. “there is no such thing in the patent statute as a “frivolous” application. If the application does not comply with 102, 103, 112, etc. it should be rejected. If the applicant can overcome the rejection it should be allowed. If the invention has no commercial merit, then the applicant has wasted his money in preparing and prosecuting his application. The public though does have the benefit of the disclosure in the published application and/or patent.”

    You are correct; however, these are the facts that I have seen.

    There are some applications filed that are clearly informal, i.e. long disclosure, idomatic English, 1000+ claims, 10000+ pages of disclosure, etc.

    An average examiner has about 15 hours to do an Office Action. That’s roughly 2 days. If he/she/it spent 5 seconds on each page of the disclosure alone, he/she/it would have ran out of time to do other stuff.

    The current statutes do not prevent applicants from flooding examiners with irrelevant information. The USPTO does not give examiners enough time to review applications. The public suffers.

    Remember that restriction/election is based on: a) plurality of inventions and/or species, and b) unburdensome search. Number of claims is not part of the equation.

    I propose that these applications should be tagged as “special” and processed some different kind of way as to not affect the normal applications that come through.

  46. Anon,

    “We exist to assist in the advancement of the useful arts.” and “One must write a patent application that carves around the prior art.”

    – Funny, I thought I was being paid by my client to submit an application for HIS invention. Reading into my duty the extended civic responsibility of advancing the arts sounds like someone foisting the examiner’s job on me. I have NO duty to research the prior art and write claims around such. Again, researching the prior art is the examiner’s job.

    Of course, I’m being argumentitive and understanding the state of the art is important to me in drafting solid claims, but there is a subtle and definite difference when it comes to that “noble” calling. My job is helping the client – end of story.

    “The system is a mess, because of the umbridled greed that has been systematically entrenched in it over the last ten years.”
    – this standard operating procedure has been around WAY more than ten years.

    “The filing of an RCE is a failure, except in certain circumstances. The RCE MUST be made prohibitively expensive.”
    That’s like saying if you can’t see, use my glasses – they work for me.”
    Careful anon, you are developing the same shortsightedness that you are complaigning about.

    “ensure that the case is drafted properly the first time.” – how about refusing to do a p1ss-poor job in the first place based on the ethical considerations alone – screw the money? Oops that’s right – the real world interferes. Hmm, how about you just say no the next time one of these awful retreads come your way? Stand up for what you believe in, lead the way.

    Of course there is always the possibility that the client may shoulder some of the blame by refusing to pay a premium and respectful price. I have no problem telling the client they get what they pay for. My work is worth every dollar I charge.

  47. No I do not work for the PTO. I am just tired of inheriting cases whereby the person who drafted it was so f-ing proud to bring the application in under budget and within the time constraints that the client desired without giving a rats a$$ about patentability. The filing of an RCE is a failure, except in certain circumstances. The RCE MUST be made prohibitively expensive. This is the sure way to ensure that the case is drafted properly the first time. What I have seen are cases so poorly drafted that the attorney keeps the RCE practice going to extend the occurrence of the ultimate final disposition of the application . . . abandonment. This delay is burdensome on the PTO, detrimental to the client and often times might result in the practitioner retiring before the harm done by the poorly drafted application is realized.

  48. Anon, your solution assumes that the need to file an RCE is always the attorney’s fault (and so I assume that you work for the PTO). Personally, I almost never file RCEs because I will have already made my best arguments and the Examiner has rejected them, so I appeal. But if the Examiner’s final rejections are bogus because he doesn’t understand the law or hasn’t taken the time to understand the invention, or if he raises new issues or grounds for rejection in his final Action, then filing an RCE is a legitimate alternative to appealing.

  49. Curious I disagree with you on penalizing examiners in the fashion you advance. The onus is on the applicant. The applicant should take care in drafting claims that are patentable in view of the cited prior art.

  50. I have a solution for RCE’s . . . an RCE filed by the attorney’s who originally filed the patent application should cost 2 to 3 thousand dollars. If the RCE is not filed by the attorney who filed the application then it could be ordinary cost. However, to file a change in the power of attorney so as to discharge the original attorney should cost around 5 thousand dollars, unless cause could be shown for the change in attorney.

  51. “I think GP was referring in his/her comment to the decline in allowance of broad “lottery winner” type claims that have driven much of the excess patent filing over the past several years. As we are told here endlessly by certain commenters, any claim whose scope is limited to a single product that is actually being marketed and sold is “worthless” because such a claim is easy to design around. So-called “inventors” aren’t interested in those claims, nor are they interested in filing RCEs. They want broad claims, and they want them quickly, and they are convinced that the only thing standing between their giant brains and their right to an awesome claim of profound scope are incompetent examiners.”

    With all due respect to Dennis’ (and Mooney’s – with no respect whatsoever) thesis on the topic the “lottery” view of patent filing (both the filer and the observer viewpoint) is a stilted and naive view of how only a limited number of pro se and similar type inventors view the system. It seems that such a view bespeaks a profound lack of experience in the real business of patent law and may characterize mostly only those who have recently joined the practice.

    There are many, many more sophisticated filers (applicants and their representatives) who understand well what to expect from and what can be obtained by scrupulous interaction with the patent system – and the consequences of unscrupulous interaction and naive expectations.

    I hope to write a law review article about it soon.

  52. It even gets better, one of the last law firms I worked for, which is getting sued for patent malpractice, barely provided the time to file prior art with the USPTO. There was NO time alloted for reviewing the prior art. As a result, they laughed at Moatz’s requirement to review each piece of prior art before filing. I had to review it on my own time, without pay. What we need is a system by which we can bring this miscreants to the attention of Moatz. Only then will we get some realy change in the system. As it stands now, even Moatz cannot be believed to really want what he says. I know of dozens of attorney who laugh at Moatz. It is really sad, because there are still some of us who believe that we should perform the functions that Moatz desires, however, we are no provided the opportunity to do this.

  53. Curious you are correct, but for the WRONG reason. I have seen dozens of applications that simply should not have been filed, because it is clear they do not advance the useful arts. It must be remembered that patent prosecutors have a role distinguishable from other attorneys. We exist to assist in the advancement of the useful arts. Too many times I hear the phrase that the client has a right to its day in court, when referring to filing a patent application. We are the gate keepers. Moatz is absolutely correct. One must write a patent application that carves around the prior art. Otherwise we have no right filing a patent application.

    What I often hear about clients not wanting pre-filing searches and not reviewing prior art before filing of patent applications in nothing more than the mantra of lazy practitioners, at best, and those gaming the system, at worse in order to save money for the client in the short term.

    It must be borne in mind that the in-house attorneys are also to blame for this mess. They want the inventors happy so they have been known to turn a blind eye and allow claims to be drafted that have no chance of being allowed. However, they don’t worry, because the USPTO will take 4 years to have the case examined and may of the practitioners will be retired before it is realized that the case was undeserving of being filed in the first place.

    Meanwhile everyone is happy: the inventor gets his filing bonus, the in-house counsel meets his quota, the outside cousnel gets big money for the application.

    Then, four years later, a prosecutor is handed a pile of prior art references, a poorly drafted patent application and 7 hours to fix what clearly took years to screw-up. If the case doesn’t get completed under budget or the doesn’t get allowed, then the prosecutor gets crap from everywhere.

    The system is a mess, because of the umbridled greed that has been systematically entrenched in it over the last ten years.

  54. I like the tone of the report, particularly the part about how the PTO is more interested in defending its decisions than addressing applicants’ and practitioners’ concerns about those decisions. The PTO’s entire rationale for its enjoined rule package limiting claims and RCEs is that the package is necessary because practitioners are abusing the system – the PTO accepts no responsibility for the undertrained examiners and poor examinations that make it necessary to file multiple RCEs.

  55. Nobody123 — there is no such thing in the patent statute as a “frivolous” application. If the application does not comply with 102, 103, 112, etc. it should be rejected. If the applicant can overcome the rejection it should be allowed. If the invention has no commercial merit, then the applicant has wasted his money in preparing and prosecuting his application. The public though does have the benefit of the disclosure in the published application and/or patent.

  56. “It is true, but they’re a lot more lenient with rejections than allowances.”

    In business method, the inprocess review targets final rejections and appeal briefs in the same manner as they target allowances.

    Based on my conversations with management and examiners, making an undeserved rejection and failing to make a rejection are both flagged as errors and are treated equally bad.

    Now the actual criteria used to determine the two types of errors are unknown to me. Perhaps if you have some concrete evidence for us to look at. I don’t have any.

    “Also, for you fools who think it takes an OA or two for actual issues to arise, then you need to start finding those issues faster.”

    I tend to agree; however, sometimes issues are not brought forth until the practitioner files an amendment and/or arguments.

    Nevertheless, the FAOM/FOAM should address all reasonable issues under 101, 102, 103, and 112.

    Still, I have spoke with examiners who use the first action as a ping to see if the application is still alive. These examiners give a suboptimal first action and wait for a response. Many go abandoned so there’s no point in doing a quality action on all cases.

    I am not sure how I feel about this practise; however, if the examiner does the right thing and give a second non-final action, that would be a step in the right direction.

    For example, a foreign application with 300 claims would take an examiner more than 1/2 BD’s worth of time to prepare the FAOM. Then the application goes abandoned.

    On one hand, I feel that all applications should be given the best action at all time during prosecution.

    On the other hand, these frivolous applications contribute to the backlog and prevent quality applications form deserving the appropriate attention.

    I would like to see pre-first action interviews to determine if the applicant would like to proceed with prosecution. Those who want to expressly abandon would be given a partial refund. I’m not sure how this would work but it’s just an idea.

    “That’s your part of the job to create issues, the gov. doesn’t care if you want issues to be raised or not.”

    I am not sure what you mean by this. To whom are you addressing your comments? Any particular person?

  57. “Thoughts?”

    It is true, but they’re a lot more lenient with rejections than allowances.

    Also, for you fools who think it takes an OA or two for actual issues to arise, then you need to start finding those issues faster. That’s your part of the job to create issues, the gov. doesn’t care if you want issues to be raised or not.

  58. “So there should be no quality controls over at the PTO? Wahoo. ”

    Quality control should come in the same form that it in reality usually does. The boss. That is, the directors look over the SPE’s, and the SPE’s look over the examiners.

    And it already does come from there in case you weren’t aware. It comes from there, and ALSO, OPQA. OPQA isn’t needed.

  59. “The PTO should allow oversight and transparency in its quality review process.”

    How about we simply scrap QA and use the resources to offer additional training?

  60. “I have been in this business for a very long time and I have seen a situation in the industry that is sure to create poor patents. In fact I just interviewed for a position at a law firm and it turns out that the law firm drafts all patents at the law firm. Most of the Office actions, however, are sent to 1099 attorneys that are not employees of the law firm.

    What was more suprising was that the law firm indicated that it was focused on protecting the client’s product and providing value to the client that was independent of the patentability of the claim invention. In short what I was being told was that patent applications were being drafted that the client would feel adequately protected the client’s product and without regard for whether a patent would ever issue. In fact office actions were of such low profit margin that the law firm did not have its employees work on the office actions.”

    That’s horrible. I draft applications with both an eye toward protecting the client’s products AND toward patentability. I always spend an hour or two searching after receiving a disclosure and have searched, found dead on 102 art, and bounced the disclosure back to the client recommending that we not move forward. Further, I prosecute all of the applications I draft with care … and they’re actually NOT that low of a profit margin if you know what you’re doing.

    I guess I’m crazy in that I actually take pride in what I do and have a sense of professionalism.

  61. One more comment. I don’t know how many of you know this, but the President and Congress give the USPTO a fixed production goal for each fiscal year.

    This production goal is independent of the number of examining hours. So pretty much Congress says they want to see 825,000 BDs and the USPTO has to do whatever it can to come up with this number, including hiring more examiners and squeezing out BDs from the existing examiners.

    The important note to take away from this is that the USPTO’s production is a flat goal, i.e. they are responsible for the BD goal regardless of how many examiners they employ and how much examining time each examiner performs.

    As you know, individual examiner’s production is calculated based on examining hours worked.

    Based on this arrangement, there will always be a struggle between management who want maximum BDs and the Corp who want minimum BDs vis-a-vis fewer examining hours.

  62. “no consequences for a bad rejection”

    According to OPQA: “Application is considered to be in error if examiner made an improper rejection”.

    Thoughts?

  63. I have been in this business for a very long time and I have seen a situation in the industry that is sure to create poor patents. In fact I just interviewed for a position at a law firm and it turns out that the law firm drafts all patents at the law firm. Most of the Office actions, however, are sent to 1099 attorneys that are not employees of the law firm.

    What was more suprising was that the law firm indicated that it was focused on protecting the client’s product and providing value to the client that was independent of the patentability of the claim invention. In short what I was being told was that patent applications were being drafted that the client would feel adequately protected the client’s product and without regard for whether a patent would ever issue. In fact office actions were of such low profit margin that the law firm did not have its employees work on the office actions.

    This is not the first law firm where this ideology is present. What the PTO must do to ensure that the practitioners responsible for drafting the patent application deal with any lack diligence during the drafting stage by forcing the same practitioner prosecute the applicaiton. There must be something that OED can do in this situation. Too many times and at too many law firms have I seen absolute crap alleged to be a patent application filed in the PTO. I have been left at the prosecution stage to identify the invention and draft claims that carve around the prior art and for a fraction of what the drafter of the patent application got paid for filing garbage. I mean maybe there can be a mechanism for one practitioner to raise the question in the USPTO as to whether the patent was drafted correctly in the first place.

  64. I have been in this business for a very long time and I have seen a situation in the industry that is sure to create poor patents. In fact I just interviewed for a position at a law firm and it turns out that the law firm drafts all patents at the law firm. Most of the Office actions, however, are sent to 1099 attorneys that are not employees of the law firm.

    What was more suprising was that the law firm indicated that it was focused on protecting the client’s product and providing value to the client that was independent of the patentability of the claim invention. In short what I was being told was that patent applications were being drafted that the client would feel adequately protected the client’s product and without regard for whether a patent would ever issue. In fact office actions were of such low profit margin that the law firm did not have its employees work on the office actions.

    This is not the first law firm where this ideology is present. What the PTO must do to ensure that the practitioners responsible for drafting the patent application deal with any lack diligence during the drafting stage by forcing the same practitioner prosecute the applicaiton. There must be something that OED can do in this situation. Too many times and at too many law firms have I seen absolute crap alleged to be a patent application filed in the PTO. I have been left at the prosecution stage to identify the invention and draft claims that carve around the prior art and for a fraction of what the drafter of the patent application got paid for filing garbage. I mean maybe there can be a mechanism for one practitioner to raise the question in the USPTO as to whether the patent was drafted correctly in the first place.

  65. I’m glad to see the “second set of eyes” is now getting its own second set of eyes. You gotta love the Doll & Dudas logic:

    1) institute a second set of eyes to penalize examiners and their art units when a wrongful allowance goes out, but no consequences for a bad rejection
    2) define “error rate” based on bad allowances but not considering bad rejections
    3) as the “error rate” inevitably goes down, pat yourself on the back and issue press releases on the USPTO site that the USPTO has the lowest error rate in history.

    If a separate oversight organization reviewed random office actions at the USPTO for bad allowances and bad rejections, there is no doubt that the real error rate has skyrocketed due to #1 above.

  66. I agree with T who writes:

    “RCEs already cost too much. RCEs are filed because Examiners issue final rejections too soon in the process.First Office Actions are issued based on ignorance. It takes an action or two for clear issues to be established between the applicant and Examiner. Nevertheless, Examiners take the first procedural opportunity to go final. Filing an RCE is the most expedient procedure available”

  67. if the obama administration wants to create jobs….

    hire more examiners, give them pay/management that keeps them around.. can’t hire enough examiner’s for cutting edge arts? then they are not offering enough money > charging enough for the application fees in those art units.

    folks get jobs/pendency goes down/innovation is encouraged. its not rocket science, folks.

    there is money lying in the street (the backlog of patent applications / potential maintenance fees to be collected) and the USPTO isn’t willing to pick it up?

    time for a new management team.

  68. “As US firms have shed their physical assets in years of outsourcing, the underlying intangible IP will be critical to protect. It’s all that is left. And US firms will realize that they will have to pay to protect it.”

    I tend to agree with you on this one. Our clients have not slowed down their filings. Rather, they have been asking their outside counsel to lower prices. If it means steady work in this economy, I will gladly cut $1,000 off the price of an application. If that means I have to write off some of my time, so be it.

    This chart shows the number of issued patents yearly over the history of the US: link to en.wikipedia.org

    If you look at it, it’s apparent that filings didn’t decrease all that much during the great depression. The severe downtown from 1940-1950 seems to be a result of WWII, as we were pulling out of the great depression by 1940.

    I think the patent boom is over, but I don’t think that prosecution business is going to pop like some other areas of law have. IP is important to a lot of companies.

    For example, we have a lot of mid-sized companies as clients who compete against much larger companies. Patent protection for their products is essential — if the big company can knock off their products with impunity, they are toast.

  69. Just because new applications have peaked, my business has not. Offense and Defense will both be very busy.

    I predict that that the Appeal sector will continue to grow and that the Reexam sector will Explode with the abundant new light on patentability that the CAFC has flooded the IP universe with.

    As US firms have shed their physical assets in years of outsourcing, the underlying intangible IP will be critical to protect. It’s all that is left. And US firms will realize that they will have to pay to protect it.

    The shield once provided by the assumed validity of patents will be tested. Many will discover that their paper shields will dissolve in the current business/legal typhoon. The threat of being destroyed will either spur new innovation (as is the American Way), or the American Way will truly disappear into a new United Socialism of America where ANY Intellectual Property (including copyright and trademark) will face a very uncertain future.

  70. GP opined, “IP is going to get slaughtered in the next year. Mark my words. … We’ve reached peak application filing. … we might be down 40% in 3 years.”

    I agree. Clients are already seeing the writing on the wall (It reads, “Under KSR …”) and the recession is helping them see it clearly.

  71. “The penalty for bad rejections should be the same as the penalty for bad allowances. ”

    I concur. It should be nothing for both :)

    Anyways, merry christmas to all you in PO land.

  72. The penalty for bad rejections should be the same as the penalty for bad allowances. Is it any surprise that, under the system that only dings examiners for bad allowances, examiners are reluctant to allow anything?

  73. RCEs already cost too much. RCEs are filed because Examiners issue final rejections too soon in the process.

    First Office Actions are issued based on ignorance. It takes an action or two for clear issues to be established between the applicant and Examiner. Nevertheless, Examiners take the first procedural opportunity to go final. Filing an RCE is the most expedient procedure available. If RCEs are perceived to be a problem, change the system so that the Examiners can’t go final until at least the third action.

    Alternatively, perform the quality review on the first office action. Early course corrections are far easier than late course corrections.

  74. Has anybody yet mentioned the 10 year old BEST programme the EPO has been engaged upon, to improve Quality. BEST stands for: Bringing Examination and Search Together. (It was a historical and political accident that they were ever separate in the EPO but at least that accident revealed a truth, which the EPO has now acted upon.) Behold the excellent results now coming through, in the new EESR’s. That means: Extended European Search Report, a report with a first office action appended to it. Now then, does Applicant still want to stump up the exam fee, it effectively asks. Much better quality, and much better timeliness, and better management of the pendency problem. When there’s a will, there’s a way. The USPTO has any amount of collegial advice flowing through the trilateral. Did the Chamber of Commerce see any value in first conferring with, say, the UK’s TMPDF (like the UK’s IPO)? Ir recently published its own critique – of the EPO. Anybody ever heard of benchmarking?

  75. Interesting thread. I too think that most of the suggestions are reasonable, although I do worry a little about whether they can really tame the QA monster. Unlike the people who wrote this report, I do believe it would be better to have no QA department whatsoever, if the only other option were the present one-sided version.

    I don’t think that the union is the problem with the PTO – I think it’s the management. I have no axe to grind on that point as I am a patent agent and have never worked for the PTO. If I felt the union were a problem I would say so.

    Searching is a major problem in the PTO. Frankly, other countries tend to find better art, and most of the bad rejections in the PTO are the follow up to a bad search.

    I can’t imagine them creating separate searchers. It has been tried in other patent offices and seems to make little difference anyway. If they did separate these functions it would be to contract the searches out, which they have already experimented with. There are very good and very bad search companies. Sadly, the quality of searching by examiners is poor, on average, but if you took the lowest bid I’m sure you could find someone worse, just by the nature of it.

  76. ……..of course, in the EPO, there is no court on top, telling the Office what the law is. EPO decisions on what the law is are final. This certainly imposes heavy responsibility on the Office, but the Office grows with the responsibility placed on it. Europe still can’t get its act together, mind you, on who shall have the burden of deciding whether to enjoin an infringer. Meanwhile, at least the EPO validity decisions are reasonable, being made by practitioners (rather than dilettantes). But that’s all unavailable, as a solution for the USA because that path isn’t open, to any national Patent Office, which inevitably has some supervisory national court sitting on its face. What do readers generally think about international solutions to the problems of the world, like climate change? AND, when will the USA ask to join the European Patent Organisation?

  77. Currently the examiners are faced with penalties for allowing claims which they should not. There should also be penalties for rejecting claims which should not be rejected.

  78. “curtail delaying tactics now available to applicants.” Often I have found that because of the long delays in getting the applications allowed that further developments have occurred, such as the applicant coming up with similar designs or competitors coming out with similar products. The applicant then files a continuation to try to cover those new products. If the application had been allowed and issued in a timely manner, years earlier this would not happen as often.

  79. “Reduce the credit for continuation applications, but adjust goals so more time is given for a first case to provide quality examination”

    This sounds like a good idea.

  80. The Report talks about pre-search and pre-first office action interviews. I think this is a bad idea. I want the examiner to give the application its broadest reading, not tainted by any interviews.

    But the applications and claims I draft are pretty straightforward and understandable. Maybe others are not.

  81. On the topic of searching, how about when examiners were searching paper files? Now they have US patents, foreign patents, and Dialog search templates for the business method group. Then on top of that they have everything else.

    The proverbial haystack just got a whole lot bigger.

    I know this is not an excuse, but the times, they do change.

  82. “As to PTO’s lowering allowance rate, my presentation shows that this notion is an illusion and that it is a result of distorted and damaging incentives at the PTO. Applications are allowed at roughly the same percentage but after more RCEs.”

    I think GP was referring in his/her comment to the decline in allowance of broad “lottery winner” type claims that have driven much of the excess patent filing over the past several years. As we are told here endlessly by certain commenters, any claim whose scope is limited to a single product that is actually being marketed and sold is “worthless” because such a claim is easy to design around. So-called “inventors” aren’t interested in those claims, nor are they interested in filing RCEs. They want broad claims, and they want them quickly, and they are convinced that the only thing standing between their giant brains and their right to an awesome claim of profound scope are incompetent examiners.

    Of course, the opposite is true: incompetent examiners are dreams come true for people who want broad claims are willing to pay to get them.

    In any event, regardless of the allowance rate, the prosecution party has already ended. Next year is when the deflated balloon starts making that familiar fart noise and people head to the bedroom to pick up their coats.

  83. “6k, you must be amazing with google, because i can find better art, much more quickly, utilizing the lexis-nexis total patent tool. ”

    It may very well be better. I haven’t started using it myself. Does it req a fee? I might try it out if I can find links etc. But it also leaves out NPL I would guess. I <3 NPL, esp for inds.

    “can you share with us your secrets to being able to find dead on 102 references with google in under 30 seconds every time? this sure would help me with claim drafting.”

    You’re right it would. I could literally save apps thousands in filing/attorney fees with 10 second searches. That is why they should hire me, and is probably why they pay Phawk 100’s of dollars an hour. I will admit though he is likely more robust than I am, I specialize mainly in finding things at least somewhat near my field. He has a lot of fields. In any case, that is also why it is my supposition that many (almost all?) apps intentionally file an invalid overclaim as the initial ind just to be able to branch deps off of the ind to explore them all. The people with few dep claims (regardless of the number of inds) often have a hugely complicated spec (same as people with 100 deps), yet amazingly their ind seems often to be an actual attempt to find some patentable subject matter on first go. It seems to me to be an indication that deps make it desirable to make a broad base claim for the tree to grow out of, regardless of the 99.999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999% or 100% chance of invalidity of the ind which the apps rep knows about beforehand. That of course is a bad incentive and that’s one of many reasons for congress to consider abolishing them. People might not be so incentivized to make broad overclaim recitations at all if they knew each claim stands on its own and they wouldn’t get a discount (via the dep compared to ind fees) on some claims just for making them branch off of an overbroad one.

    Anyway, the secret is to properly word what you are looking for in 3-4 (max 6-7) words. That’s really all it depends on. The art of googling is the art of properly stating what you’re looking for, and also to a large degree knowing what you’re looking for.

    If LN does it for you then to each his own. I was just making the point that searchers will often utilize very nice search tools (I see some EPO search reports) and will come up with a lot of references that are ridiculously off base, and then I go and google a 102b that they missed on the first try. It doesn’t always happen, but it does happen. The bottom line point is that searching is such that if you have no motivation to find good art then you’ll just search using your standard tools and find whatever looks relevant and put it down then go on with life. That’s why the searches are “poor quality”, there is no motivation to keep looking (even with simple googling) in order to find something that you know is blatantly obvious and you might risk getting the whole AU dinged for not finding.

  84. “Ron Katznelson ”

    Is on to the correct answer imo. Except in some arts. In some arts the allowance rate really has gone down, far down. AU’s near my own have eventual allowance rates of 80%+. There’s enough fall back positions to pretty much garuntee they can find something that the examiner simply misses in the search or is actually not in the prior art. Submitting literally thousands (or more) of potential “inventions” per application dictates there is something that a determined app can force into eventual allowance, or an appeal/reopen cycle at the worst in nearly every app.

  85. “I have noticed one wonderful difference with dealing with EP Examiners. By and large they feel that they are professionals and do not see themselves as pitted against you and need to fight at any and all costs to prevent you from obtaining a patent. The Espirit de Corps extends beyond their Corps and includes the applicants. I fear that in the US, this “culture” would need a top level wholesale change in order to be put in effect.”

    I agree with you 100%. I love dealing with the EPO in comparison to the USPTO. The Examiners are far more professional, far more knowledgeable, and do a better job. I find that I can resolve an application before the EPO in a far quicker time than before the USPTO because there is no bs involved. I’m even starting to like and appreciate their substantive patent law more than the US’s…. and I am *not* the only patent attorney in my firm to share this sentiment.

    I recently had an experience with the EPO that would just never happen with the USPTO. I had receive a summons to oral proceedings. In response, I submitted 3 alternative amendments (something you can’t even do at the USPTO). The examiner allowed the cased based upon the BROADEST amendment I had submitted, not the narrowest (which was fair. the broadest one was enough). If you could submit alternative amendments to the USTO, the examiner would choose the most narrow amendment every single time.

    “Translation:

    Googling the invention I found more/better art than the searchers with their fancy tools.”

    6k, you must be amazing with google, because i can find better art, much more quickly, utilizing the lexis-nexis total patent tool.

    can you share with us your secrets to being able to find dead on 102 references with google in under 30 seconds every time? this sure would help me with claim drafting.

  86. As to PTO’s lowering allowance rate, my presentation shows that this notion is an illusion and that it is a result of distorted and damaging incentives at the PTO. Applications are allowed at roughly the same percentage but after more RCEs.

    See Slides 10-17 at link to works.bepress.com

  87. “I’ve talked to several JPO examiners about their experience with separate search and examination and the ones I’ve talked to feel that 70% or more of the searches that are done by the contractors are of poor quality and they end up having to do an additional search on their own time. ”

    Translation:

    Googling the invention I found more/better art than the searchers with their fancy tools.

  88. “…Thus, the solution is to separate examination and searching. A separate searching branch would be more efficient and better (in terms of quality hits) than the examiners and would allow examiners to focus on conducting quality examinations.”

    This is a horrible idea. The EPO use to do this and they moved to combined search and examination for a reason. The JPO is using this for some of their applications–supposedly simple applications are chosen for separate search and examination. I’ve talked to several JPO examiners about their experience with separate search and examination and the ones I’ve talked to feel that 70% or more of the searches that are done by the contractors are of poor quality and they end up having to do an additional search on their own time.

  89. SF – thank you very much.

    I have been advising clients for at least the last year that the allowance rate has been plummeting, plan accordingly.

    Everybody should keep in mind that most corporate sausage making factories – i.e. IP management executives, are numbers-based people.

    The next 12 months are going to be corporate cost-cutting hell.

    To the question: “how about patents? What are our costs there?” an appropriate response will not be, “we’ve got a bunch in the hopper and we’re planning on putting a bunch more in the hopper.”

    The answer is going to involve a numbers analysis – cost per application, patent issuance per application, patent issuance per dollar.

    IP is going to get slaughtered in the next year. Mark my words. When it comes time to look for cheap and easy cuts, patent prosecution costs are going to be among the easiest targets to hit, and the people responsible for IP almost never are in charge of budgeting decisions.

    We’ve reached peak application filing.

    I figure in 2 years we’ll be down at least 20% on new filings, maybe more, based on the depression alone. Throw in case roadblocks (bilski, ksr), lower allowance rate, and any new rules implemented, and we might be down 40% in 3 years.

    Batten down the hatches boys and girls, it’s going to be a rough ride.

    And for you who are just taking the patent bar – you’re good and screwed unless you’re top 20% – sorry you missed the big party over the last decade.

  90. Curious:
    Slide 21 of John Doll’s October presentation, referenced in link to patentbaristas.com, reported “average years of service.” Across the Corps: FY08: 5.73 years. (Downward trend over last five years: FY07: 5.76; FY06: 6.02; FY05: 6.55; FY04: 7.18.)

  91. What I think might really benefit the economy is a “fully automated patent” that applicants could get on very early stage ideas with a total cost, including mechanical examination (akin to mechanical translations), around $500 – $1000.

    Patents would then make the transition to a mass produced / mass marketed “product” where millions of entrepreneurs, and not just a few hundred thousand, could start invention driven businesses.

    After all, look what happened to the economic impact of computers. and before them automobiles, when the unit cost finally dropped to the level where the average person could afford one.

  92. Humorless,

    That’s a wonderful concept and actually smacks of real world application. No chance that the Office will (currently) willingly accept that.

    MaxDrei,

    I have noticed one wonderful difference with dealing with EP Examiners. By and large they feel that they are professionals and do not see themselves as pitted against you and need to fight at any and all costs to prevent you from obtaining a patent. The Espirit de Corps extends beyond their Corps and includes the applicants. I fear that in the US, this “culture” would need a top level wholesale change in order to be put in effect.

  93. The proposed pay-more-for-more RCEs idea proceeds from the assumption that examiners always do a proper job of examination. That assumption is false, and thus the proposed change externalizes (for examiners) the costs of unwarranted rejections. The proposal, as it stands, doesn’t provide examiners with a disincentive to avoid doing a bad job, and places all the onus on the applicant.

    The examiners should be on the hook too – maybe the PTO should have to pay (equivalent to applicant’s lawyers’ fees?) for every rejection that is appealed and overturned, at least in part, by the BPAI or CAFC, and at least part of the PTO’s share should come in the form of pay docked from the examiner who goofed.

    If you make it a two-way street you may reduce both frivolous filings as well as frivolous rejections.

  94. I wish people would shut the heck up about the PTO charging higher fees. The fees are way too high already. Like the school system here in DC, they do not need more money, they need leadership and smarts!!!

    Happy holidays everyone,

    JohnG

  95. “…and then reopened prosecution for equally poor examination…”

    Personally, I’d be thrilled with equally poor examination after re-opening. What I invariably get is actually worse examination.

  96. GP astutely observed, “BUT, they have implemented a great system for lowering filings . . . They are lowering the allowance rate to 1/3 or less.”

    Yep. They want fewer filings. “Quality examination” is just their spin to justify their recent rule-making attempts to deter filings.

    If applicants know that they can expect an expensive series of RCEs, then an appeal, and then reopened prosecution for equally poor examination, they will eventually be deterred. Great point, GP.

  97. Do the recommendations include surveying what works in the EPO, and what doesn’t? Separating search and examination doesn’t. Deferred examination doesn’t.

    What works is:

    1. Top class search tools. Top class training. Top class quality control. Three member examining divisions. Esprit de Corps. Fair levels of compensation. A system not run by lawyers, and a simple Statute that makes sense.

  98. “Does anyone outside of the self-interested patent bar really think that an economy where business methods, software, and – oh heck – 90% of what currently is patented in the mechanical and electrical arts suddenly could not be, would be any less competitive in world markets?”

    Are you nuts? As pds said, the vast majority of applicants are not members of the patent bar and happily put their money behind the proposition that patents are valuable. Use your brain a bit or learn to be a subtle troll.

  99. I love the fact that all but one of the changes are conceptual changes.

    Look at the big picture guys – the PTO couldn’t get its rule changes to stifle filings – can’t even get its BPAI format changed to stifle appeals –

    BUT, they have implemented a great system for lowering filings . . .

    They are lowering the allowance rate to 1/3 or less.

    That, in a few years, should result in substantially fewer filings, no new rules required, just a, “psst – keep the allowance rate down, pass it on” in the corridors of the PTO.

  100. These suggestions are generally pretty good, especially that “[t]he PTO director should have experience in patent prosecution and litigation.”

    However, I do not believe that these suggestions will address the perceived problems, namely length of prosecution and “quality” of the examination (whatever that really is at a given moment).

    Fundamentally, the root cause of these perceived problems is not the quality of the written applications, the claim drafting, or the analysis of the examiner. All are generally ok. The problem is the searches. The examiners simply do not have time to do adequate searches or move off topic in cherry picking efforts.

    Thus, the solution is to separate examination and searching. A separate searching branch would be more efficient and better (in terms of quality hits) than the examiners and would allow examiners to focus on conducting quality examinations.

    That’s my 2 cents worth.

  101. “I like the idea of “increasing fee for successive continuations or RCE filings.” The hard RCE cutoff is a terrible idea.”

    While I like this idea, I worry that such legislation or rulemaking would sweep divisionals into this category. Doing so would be unfair to applicants whose applications are deemed to have more than one invention and require an election.

  102. “It is clear to me that companies with money will push through a patent application even though their claims are prior art.”

    Hahahahahahaha … companies with money and GOOD inventions (i.e., not anticipated and non-obvious) have trouble pushing through a patent application these days.

    Why do you think there is a backlog?

    Sophisticated attorneys and clients abandon bad applications. They are a waste of money. However, even average attorneys/clients can recognize a bad examination when the see it, so they continue to fight.

    If you want a good guage of the patent examination quality look at the statistics for the BPAI’s backlog. The number of cases being appealed have drastically increased.

  103. “Does anyone outside of the self-interested patent bar really think that an economy where business methods, software, and – oh heck – 90% of what currently is patented in the mechanical and electrical arts suddenly could not be, would be any less competitive in world markets?”

    Hmmmm …. let’s see …. this is a tough one.

    How about the (soon to be) half-a-million applicants on a yearly basis who believe that obtaining a patent is worthwhile enough to pay the fees of the “self-interested patent bar.”

    Although patent-hat-ers will disagree, from my experience, the vast majority of patent applicants actually practice their invention, so these aren’t trolls either looking for their “lottery ticket.”

    Only someone who hasn’t had a taste of the real world would write such a comment.

  104. I like the suggestions. But, what I want to see is greater penalties for fraudulent applications. It is clear to me that companies with money will push through a patent application even though their claims are prior art.

    Also, I would like to see significant penalties for the wrongful prosecution of patents. Today, large companies and corporations use their patents as swords to strike and harm a competitor. Some of these patents used in malicious prosecution were fraudulently obtained.

    Finally, I would like to see a law that does not allow a patent holder and plaintiff the right to dismiss an infringement suit at the eleventh hour as a means to remove subject matter jurisdiction from the courts; thereby denying the defendant counter claim due processes. For example: SGS Tool Company and Dauphin Precision v. Destiny Tool. United States Court of Appeals, Federal Circuit. – 57 F.3d 1054 Super Sack is simply bad law.

  105. careful Leopold,

    That line of reasoning may make people mistake you for an examiner (and yes, an examiner calling for an elimination of examiners is purposely oxymoronic).

  106. I like the idea of “increasing fee for successive continuations or RCE filings.” The hard RCE cutoff is a terrible idea.

  107. Hmmm… The chart indicates that budget, backlog, and pendency have all increased with the number of examiners. The obvious solution is to eliminate the examiners.

  108. Maybe the answer is that patents (outside of pharm) just are not that important to the workings of the real economy, and to let the patent system simply collapse to the point where real reform becomes possible. Does anyone outside of the self-interested patent bar really think that an economy where business methods, software, and – oh heck – 90% of what currently is patented in the mechanical and electrical arts suddenly could not be, would be any less competitive in world markets? There should be a way to let a messed up governmental entity like the PTO follow in GM’s footsteps into a kind of bankruptcy, where everything is put on the table for a swift sorting.

  109. What a shocker – the budget grows much faster than the number of examiners or the number of pending applications, even accounting for inflation.

    The U.S. federal government – a model of efficiency.

  110. Deferred examination “for perhaps up to three years” — this is what applicants already get.

    BTW — if the USPTO promulgates rules (or Congress passes a law) which create a requirement for an “enhanced IDS,” then I doubt any application will want to have examination deferred.

    Once an applicant has gone through the trouble and expense of preparing both the application and enhanced IDS, the cost of examination is just a small part. Once application is already in for $10K-$20K, they might as well go all in.

    I’m OK with the rest of the suggestions.

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