Marketers see an economic downturn as a time to emerge with a new business paradigm. Better start working.
- Hearsay: A Patently-O reader paraphrased the PTO's James Toupin who spoke at a recent USC conference: "New patent filings are down 16% so far in 2009." Patents were previously thought to be rather inelastic to price. There is a confluence of issues: (1) downturn in the US economy reducing cash-on-hand and a strong dollar discouraging foreign investment; (2) Increased PTO bureaucracy making it more difficult to obtain a patent with a valuable scope; (3) increased in patentability standards making it more difficult to obtain patent protection; and (4) decreased potential returns in litigation.
- PTO Budget: The falling numbers has the PTO worried about its budget. I would say that the falling numbers are signs of much larger worries than just the PTO budget.
- PTO Cuts: PTO Director Doll was previously reported as saying that the PTO has stopped hiring.
- PTO Cuts: Now, the PTO has announced that all legal and technical studies programs have been suspended because of "budget constraints." One PTO reader noted that the Examiner's Union (POPA) knew about the cuts to this cherished development program for the past week, but remained silent.
- Superduperextraordinary: CCIA calls for further tightening the standard for patentability. (Via Greg Aharonian)
Hi,
Could I patent the way I cut a vinyl for a device?
Really useful stuff – I will be back as a regular reader.
To Noise above Law:
You state that the “original” claims are considered part of the Spec. I think your statement is in reference to my point regarding Rule 75(d)(1) and terms/phrases used in the claims.
The rule states that the terms/phrases used in the claims must find support or antecedent basis in the description so that the MEANING of the terms/phrases may ascertainable by reference to the description.
Thus, the fact that the “original” claims are part of the Spec does not, of itself, satisfy Rule 75(d)(1). A claim cannot itself describe the MEANING of its terms/phrases.
Rather, the description (i.e., Spec and Drawings) must detail the MEANING of the terms/phrases used in the claims.
More 6 garbage: “…along with the wearing down,”
Plus, if you are talking about claim language in originally filed claims, those (original) claims are considered part of the spec (…and a specification ending in claims…).
h2 – “the dirty little secret is that the US is running short on innovation” and that’s why we have the million application backlog – dirty little secret lol. Also from your logic (a lob to Malcolm), all those internet apps from ’96-2001 were really really inventive.
Regarding difficulty to obtain patents… the dirty little secret is that the US is running short on innovation. Rejections are easier to make. When I came to the PTO it was at the end of the dot-com era,and individuals, engineers and companies were finding new (not necessarily patentable ways) of using computers and the internet. That was ’96-2001. From 2001-present what was “new”? Certainly nothing on the scale of the internet. And this lack of next new thing is reflected in the claims.
Boss 12 = me 2 years ago? Did I travel through time and gain a doppleganger without my knowledge? He examines in software? Man, crazy times.
Let me set you straight boss, here’s the deal. The inventor doesn’t often know where written materials are that describe what is close to what he did because he has knowledge in the art, but doesn’t necessarily know where the materials are to show it all. Besides that, you are right that they often know what the prior art “building blocks” were, but they don’t want to disclose them in, lets say, the background, because you will simply 103 them because what they did was in fact obvious under 103. There are of course other cases where this isn’t true, and you’ll get a good background.
Understand this: Many applicants (especially corporate ones) don’t care if the patent is of the highest validity ever, it is going in a huge portfolio and will likely not amount to anything. Therefore, the whole “having the best prior art” in front of the examiner is irrelevant and merely serves to get the patent app rejected in totum.
As to why attorneys spout the garbage they do in the manner they do, it is because of the courts. Specifically, estoppel law etc. Also, sometimes they’re in a hurry just like you are sometimes. Sometimes they merely want to buy another 6 mo so they make a bs amendment and then come back to the case later after RCE. This kind of bs, along with the wearing down, was a big part of why the office made the new rules.
And I don’t think the guy was right about claims not needing antecedent basis in the spec, although I personally couldn’t care less if they have support somewhere in the originally filed application. I believe you’re only supposed to object to claims that don’t have support in the spec, so I don’t really do it, objections are up to us to decide whether or not to make. Waste your time with them if you like.
To The Mad Prosecutor:
I do not write “clearly deficient” 102 rejections. Rather, I take the time and make the effort to completely understand the “disclosed” invention and the “claimed” invention, I find the best prior art, and I use it to write the 102/103 rejections.
Yet, I still get the “weak” responses from the attorney/agent that I describe in my original post. Patent prosecution is a “two-way” street. If only one of us is attempting to prosecute the application efficiently, then efficient prosecution is impossible.
To Man in the Mirror:
I acknowledge your point about the law not requiring the author of a patent application to know the prior art. That’s why I advise the author to interview the inventor before writing the application — the inventor readily knows the best prior art.
37 CFR 1.75(d)(1) reads:
The claim or claims MUST conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims MUST find clear support or ANTECEDENT BASIS in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (emphasis added)
Question: How am I reading Rule 75(d)(1) incorrectly?
I’m disappointed (but not surprised) to hear that examiners do not find the best art and cite it in their rejections. The USPTO needs to work on improving that that aspect of examination.
Regarding your comment about the English-speaking ability of some 2100 examiners, I cannot deny that.
“b) If you are unfamiliar with either the invention itself or the condition of the prior art in the area of the invention, then you should NOT write the Spec or the claims. (You can’t claim the world and expect to get an efficient examination of your application. Instead, you should study the prior art before filing your application, determine the novel and unobvious features of your software, and write those novel and unobvious features into Claim 1.)”
Knowing the prior art isn’t a neccessity for drafting a good application and it isn’t required under the law. What you are asking for is called “examination” and is what patent examiners are paid to perform. Granted, you can write a tighter, more focused application, if you know the prior art, but that isn’t required. Those applicants that “claim the world” will usually pay for that mistake with the filig of a RCE.
BTW — you need to read 37 CFR 1.75(d)(1) again. There is no requirement that claims terms MUST find antecedent basis in the specificaion — common mistake by examiners.
“descriptions lacking details leave you nowhere to go when the examiner rejects your claims using the best prior art”
I could only dream to have an examiner cite the best prior art. A very large percentage of the applications I prosecute have been reopened based upon new art that was not necessitated by amendment.
BTW — you do make some valid points.
One last thing … don’t complain about english-language tranlations when a good many examiners in the 2100 group have difficulty writing English and speaking English.
>>Just because you want an exposition on the >>prior art and the claimed invention, when your >>102 rejection is clearly deficient, doesn’t >>mean you are entitled to it (nor that my >>client wants any potential estoppel resulting >>from it).
Or are willing to pay for it.
BigGuy: “Boss12, how do I get you to examine my cases?”
Easy. Cancel all claims except 1 independent, then call the examiner the Wednesday before count Monday and ask if the proposed amendment has been scanned in and when the examiner might have a chance to look at your case.
Oh, but you probably meant a thorough examination…
Also, Boss 12, I prosecute the same now as a decade ago. Yet, allowances require more prosecution now. So, there goes the red herring that “quality of applications/submissions/responses is decreasing.”
Sorry Boss12, but you lack of understanding comes from only seeing it from one side. If my claim 1 is amended to recite (or always recited) “comprising a laser beam to measure distance,” my response will probably say:
The present invention is directed to a system that uses a laser beam to measure distance. Reference 1 discloses using a ruler to measure distances. Column 12, lines 1-2. Therefore, reference 1 does not disclose using “a laser beam to measure distance,” as claimed in independent claim 1.
Just because you want an exposition on the prior art and the claimed invention, when your 102 rejection is clearly deficient, doesn’t mean you are entitled to it (nor that my client wants any potential estoppel resulting from it).
Boss12, how do I get you to examine my cases?
Mr. Crouch, I am a patent examiner in the computer software art. Based upon my personal knowledge gained through examining over 1000 applications and reading 1000s of claims and Specs, you have omitted at least two issues in the “confluence of issues” that contribute towards a decrease in patent application filings:
1) the poor quality of writing the content of the typical computer software patent application that is filed at USPTO; and
2) today’s prosecution methods practiced by attorneys/agents.
Concerning #1, here are my comments:
a) If you are a Japanese inventor who wants to file a patent application at the USPTO, then you MUST hire a translator whose first language is English in order to properly and effectively translate your Japanese patent application into English. (In my opinion, that’s a “no-brainer.” This also applies to American companies who hire foreigners, whose first language is not English, to write applications. It is very likely that anyone hiring such a person will have a slow and painful prosecution of the patent application.)
b) If you are unfamiliar with either the invention itself or the condition of the prior art in the area of the invention, then you should NOT write the Spec or the claims. (You can’t claim the world and expect to get an efficient examination of your application. Instead, you should study the prior art before filing your application, determine the novel and unobvious features of your software, and write those novel and unobvious features into Claim 1.)
c) If you want to immediately determine what the closest (i.e., best) prior art is, then simply ask the inventor. (An overwhelming majority of all computer software “inventions” are either: i) minor improvements of prior art software applications; or ii) a combination of well-known programming techniques. The inventor can quickly and easily tell you EXACTLY what is the best prior art. Then, in view of the best prior art, you should claim your invention in a novel and unobvious way. If you write Claim 1 using this method, I can assure you that the prosecution efficiency of your patent application will increase exponentially.)
d) As you write the Spec, remember 37 CFR 1.75(d)(1), which states that terms/phrases in the claims must find antecedent basis in the description so that the MEANING of the terms/phrases may be ASCERTAINABLE BY REFERENCE TO THE DESCRIPTION. (If you don’t provide the DETAILS of what you are claiming, then prosecution of your application will likely be slow and painful. Also, descriptions lacking details leave you nowhere to go when the examiner rejects your claims using the best prior art.)
Concerning #2, here are my comments:
a) Here’s the “boilerplate” response to a rejection that I see every day: “Reference X teaches [copy and paste the Abstract from the cited US Patent]. Conversely, the present invention [here, list a function performed by the invention]. Accordingly, Reference X fails to disclose or suggest [copy and paste Claim 1].” (This requires no original thought or consideration. I could train a monkey to do this. I can’t believe Microsoft, IBM, HP, Intel, Sun and Adobe pay for such “Mickey Mouse” garbage.)
b) If you amend Claim 1 only to “get around” the cited prior art and your amendment fails to significantly narrow the scope of Claim 1 (e.g., amending “markup language” to “HTML”), then it is very likely that Claim 1 will be continue to be rejected. (Claim 1 must be novel and obvious with respect to not only the prior art that’s directly in front of you but ALL prior art. You don’t believe me??? Read 35 USC 102 and 103.)
c) If you have written what you believe to be novel and unobvious features of your software into Claim 1 and your application is given a Final Rejection, then do NOT file an RCE. Instead, file an Appeal. If you are correct in your belief that Claim 1 is novel and unobvious, then you will win.
d) The validity of a patent that you receive is directly proportional to the time and effort that you exert in writing and prosecuting the application for that patent.
It is NOT my intention to “flame” attorneys/agents. Rather, I welcome any comments that help me to better understand the process from the attorney’s/agent’s perspective.
” What if the post office:
* Accepted your stamped mail, sat on it for years, and then blamed you for the delay for having mailed it in the first place?”
comparing the USPTO to the USPS is like comparing an apple to a 1983 dodge aries.
“Are you willing to discuss the claim like a sane human being?”
Well monkey-boy, you’ve been given a couple of opportunities to do so, but the best we’ve got from you is “it’s pure unadulterated crap” and “pile of garbage.” If you think that what you’ve written so far is “[discussing] the claim like a sane human being,” then you and I are working with a different definition of the word “sane.”
The fact that you foam at the mouth anytime the term software is included within the same sentence as patent is evidence that you’ve got a few screws loose and need to adjust your medication.
Malcolm wrote:
“Good! They brought it on themselves blah blah blah…”
What if the post office:
* Accepted your stamped mail, sat on it for years, and then blamed you for the delay for having mailed it in the first place?
* Loudly proclaimed, as its PRIMARY measure of quality, the percentage of letters that it refused to deliver (without a refund) that did not meet the USPS’s increasingly arbitrary standards?
* Relaxed its standards for allowable mail, permitting every mailman the arbitrary power to decide what mail he will deliver and what mail he won’t? (Of course, you won’t get a refund if the mailman doesn’t deliver it.)
* Limited the number of related letters that you could send about a particular topic?
* Lobbied heavily for a categorical exclusion of letters discussing topics that it deemed “unworthy” of the postal system?
* Decreed that every sender must pay a $118 “sender’s fee” – every year – so that the USPS can “maintain” its database of names and addresses?
– David Stein
“Never trust angry little bloggers who don’t respect knowledge and experience”
… which essentially cancels out 95+% of the internet.
“It seems like the puppet master is desperately trying to block comments from me…”
Looks like a couple slipped through. You are winning!!!
Mad … That doesn’t suprise me that you would take my comments about grandmas posting on the internet LITERALLY. While it is true that my grandmother has a page on the internet, I was using that that as an indication of the current state of information overload and accessibility, as compared to paper file searching. Those days are long gone. As DC says … “Marketers see an economic downturn as a time to emerge with a new business paradigm. Better start working.”
MM … I knew I had heard those riffs before.
I just checked Stanford IPLC. New patent litigation filings were down significantly during October through February as compared to the equivalent year-ago period. But this month (March) is back on pace to have roughly the same (or maybe a few more) new filings than March 2008.
Perhaps companies have finally stopped hording cash out of paralyzing fear and are opening their purse strings a little bit.
Never trust angry little bloggers who don’t respect knowledge and experience
It seems like the puppet master is desperately trying to block comments from me…
The poster formerly known as Just Sayin’
“Never trust a patent prosecutor over 60. Most of them are dinosaurs hung up on silly habits that passed under the bridge decades ago.”
and then
“wishing people ill…”
“misguided anger and arrogance…”
Yep that’s pretty much you Mooney.
Here’s one for you…
‘Flipping the Bird’ is Protected Speech
A Pittsburgh motorist was exercising his constitutional right of free speech when he gave the finger to a police officer and another driver during an argument over a parking space. U.S. District Judge David S. Cercone ruled this week that David Hackbart’s display of his middle finger was a non-verbal gesture protected by the First Amendment, according to a report in the Pittsburgh Tribune-Review.
link to legalblogwatch.typepad.com
“You call claim construction “reality-denying ignorance”? ”
Uh, no. Learn to read. I called your proposal to save that claim by claim construction an example of “reality-denying ignorance.” Are you willing to discuss the claim like a sane human being? If so, I’m ready. I doubt anyone will be assisting you in your effort to breathe life into the patent equivalent of an inflatable doll rescued from a San Quentin trash bin, but be my guest.
“(you can’t spell either)”
LOL. I’m so burned.
“I’ll bet you it doesn’t go en banc.”
Actually I don’t think it will either. But if it does, let’s go 5k$?
“Right. A “mandatory meeting” at the PTO. On a Friday.
LOL”
Na man I was for srs. And I was late to the meeting iirc lol. I will admit though that mandatory meetings on a fri are very rare. Meetings in general are rare in my AU.
Are you planning to go to the trial? Won’t it be in Richmond though? Seems a bit far to go just to see the rules get struck down for x y z other reasons. I might could go, there’s a chic I’ve been meaning to go down to visit in Richmond for awhile now and I could stay the night with her. Or the chic that had the new years party this past year. Man, she has such an awesome starter house and she makes like 30k less than me. It was a foreclosure as a matter of fact.
I really did want to go to that CAFC trial/argument though. I had court today and I always enjoy going, except for waiting in line to get in through the metal detector. They shouldn’t even have those buggers. They didn’t have them in 1850 and everyone got along just fine. I’ll bet court was a lot better when anyone in the room might be packin’. You know what’s so funny about court though? Everyone is so up tight, and I’m the guy sitting there all stretched out lounging about just chillin while everyone is so prim n proper while the judge goes through the motions of handing out bs fines for window tinting. I have to say though, the judge was going easy on everyone today. Did the standard rigamarole for the only DUI there though. Year in jail, suspended sentence, suspended license etc. I still don’t think you should get jail for a DUI unless you do actually do damage to something/someone. Huge fines maybe. Why have we morphed the laws into ridiculousness when they were pretty much just fine, traffic wise, in the 70’s?
I don’t think they’ll have many higher ups on the stand though. Maybe if I go they can get my testimony on the witness stand!
Can anyone here tell us wtf costs the court 65$ to process one ticket? How the he ll do they set those and who regulates those costs? In short, who is to btch at?
I had a baconator at lunch so Imma have to go to the gym, c you guys.
US Postal Service looking to shed 150,000 employees:
————–
As the number of unemployed people, foreclosures and store closings go up, the amount of advertising — a huge part of the postal business — goes down. The year with the highest volume was 2006, when the Postal Service handled 213 billion pieces of mail. That was down to 204 billion pieces last year, and 180 billion pieces are expected to be delivered this year, Donahoe said.
—————————
Good! They brought it on themselves blah blah blah it’s the mailman’s fault for not delivering my mail faster blah blah blah paid all that money in stamps blah blah blah package got lost once blah blah blah now everyone will see what happens when nobody knows what ladies underwear to buy blah blah blah …
“Seriously, you think “claim construction” is going to save that pile of garbage? Your comment embodies precisely the sort of reality-denying ignorance and bizarrely inflated expectations that led to the flooding of the PTO with “schemes for achieving fame and fortune by the Internet.” Get a life.”
You call claim construction “reality-denying ignorance”? Claim construction is one of the most important and often overlooked aspects of examining/prosecuting a patent application, and you completely dismiss it. No wonder you have the common sense of a monkey when it comes to patent prosecution and why your self-reported patent prosecution credentials are always being questioned.
We don’t need to see the “stuff” you’ve prosecuted. What you write is plenty of evidence that you wouldn’t know how to prosecute your way out of a paper bag. Too bad 6 doesn’t do biotech, he would wipe the floor with you.
Mad,
We are also forgetting that delivering counts is the only part of the production system. Amendments, After Finals, Examiners Answers, etc are all in the mix. So, while I might have to do 7-8 counts per bi-week, I also might have 5 amendments plus two advisories to get done. That makes on average of 13-14 office actions going out. There are only 10 business days in a two week cycle. You do the math and that’s at least two per day to get done. So, as I challenged before can you pick up a new case, read it, understand it, find the best art, cover all the undisclosed embodiments with your search, consider all IDS’s etc and type an office action in under 8 hours and also complete an amendment in the same day. Then do that time and time again without missing a day. I challenge thee… I don’t care what or who JD is, where I can say is that you get what you pay for.
“The trial should be fun to watch”
JohnD,
May be if we supplied popcorn and his favorite malt beverage, 6 might show up. And you’re right, the “trial should be fun to watch.” Especially if Cacheris delves into the unsavory aspects of how the PTO enacted these rules, as described in the Polestar Capital amicus brief.
RC Cola,
Your comment about JD saying most perfom at 110 might be right where he argues that most are performing at 110%. I think it a choice, either you do 110 or you get no bonus and will not get promoted. The system only shows hours claimed against the counts. One just needs to look in the parking lot at the end of the quarter and after hours to see it full. The system might only give a person x hours to get something done but they will do what they have to meet the production requirement. My argument is you get what you pay for and for the time given I think examiners do the best they can.
“By the way, who does “we” refer to in your comment? I’ve never seen a claim to a “product with instructions for use” that wasn’t a pointless piece of garbage. It was such claims that led me many years ago to discount just about every bit of “wisdom” that the senile old partners tried to pass down to the associates.”
MM,
You once again proved my point that you’re clueless. There are quite a few patents that used this format until the Federal Circuit, for reasons begging logic (and statutory support), precluded them in the Ngai decision. And the folks who wrote these claims weren’t “senile” and were in fact quite a bit more brilliant than you’ve ever shown.
“Never trust a patent prosecutor over 60. Most of them are dinosaurs hung up on silly habits that passed under the bridge decades ago.”
I’m not over 60 and definitely not a “dinosaur.” It’s characters like you with shallow logic who are doomed to extinction.
BTW, I’ve never heard of a “firing freeze” (you can’t spell either).
“My argument is Management did not and does not correctly charge to examine a case and does not hold your money in a fund to prosecute your case, and they should.”
Sounds like we need one of those lock-boxes Al Gore used to talk about. When are we going to learn to listen to Al?
Mad,
Like I said before, most trainers didn’t even know the material they presented at the academy. First action allowance training is in the box because it does not happen. While your trainer might have been good most were not and I learned on the job from judges, SPE’s and SPRE’s.
MM said: “Wow. No patentable subject matter in the entire set?”
No. But under Hatch/Waxman, you get a period of exclusivity after conducting clinical trials of 3 years, 7 for orphan drugs. With the extensive delays in examination and in prosecution, having to file appeals, etc., the client is thinking that for the relevant set of applications, they’re going to go with Hatch/Waxman.
Malcolm:
So, the PTO doesn’t choose what to teach to new Examiners, and how to teach Examiners, to achieve specific goals? Again, I think this is apparent to everyone else.
Besides, “Mad” as in Mad Prosecutor doesn’t mean angry. Why would I be angry?
“If this goes en banc”
I’ll bet you it doesn’t go en banc.
“How bout them rules?”
How bout them?
The trial should be fun to watch.
Maybe we can both attend the day that one of your beloved higher-ups is on the stand.
Of course, last time you told me you’d meet me at the courthouse, you didn’t show. Claimed you had some “mandatory meeting” to go to.
Right. A “mandatory meeting” at the PTO. On a Friday.
LOL
MadProsecutor “if I were you I would ask myself why they eliminated the program. It is because you are being manipulated”
I thought “Mad” meant “angry”.
Now I know better.
“What is bad is preventing something that should be allowed from issue.”
Examples?
Purely rhetorical question. We all know the answer.
Bringiton:
I have to ask – did you even know that the PTO held training on “first action allowances”? If you didn’t, if I were you I would ask myself why they eliminated the program. It is because you are being manipulated – the PTO wants to achieve a certain goal, and you are a pawn in that scheme. That should make you mad, and give you reason to think.
Hey look who it is! JD, ol buddy ol pal! How bout them rules?
HOW BOUT EM?
If this goes en banc will you bet me a couple thousand on the outcome? What with the econ downturn and all I need to suck some lawyer money blood!
bringiton, the system was never meant to be perfect. That is why there are remedies such as reissue, reexamination, and the courts. The PTO is but one part of the process. It could result in the process ending, but not always. It is not the end of the world if you make a mistake when allowing something.
What is bad is preventing something that should be allowed from issue.
Bringiton:
My supervisor (now retired) ran the training on “first issue allowances.” I am sure he forgot more in a year about patents and the PTO than you ever knew. Seems to me you must be saying he knew nothing – if he was an Examiner who knew as much as you, my SPE would have known a case can never be in condition for allowance without (numerous) Office Actions.
bringiton, JD would tell you, but I think he’s tired of repeating it. Asking for more time when most examiners are performing over 110% does not present a convincing case!
Mad, Stein,
Mad,
are you saying that if I cannot find a reasonable piece of art in eight hours that I should simply allow the case? This assumption is predicated on the notion that you distinctly claimed your invention under 1.171 without overly broad terms like “object on an interface or determing a function” etc and you have support for every feature of the claim in the specification, and the drawings are correct, no 101 issues and your invention is actually novel. Come’on Mad you must be a breed that I have never met because the applications never come through my docket that way. If they did I would allow every one.
Stein,
We have taken our cause to get more time to review and we get turned down each and every time. In 2007 the GAO openly told management we do not have enough time. These facts are known but still no changes.
“How about some claim construction for the terms at issue? Also, how about an identification, within the prior art, of these limitations?”
I can barely hear you. Can you speak up? Or perhaps pull your head from the sand/crack where you’ve buried it?
Seriously, you think “claim construction” is going to save that pile of garbage? Your comment embodies precisely the sort of reality-denying ignorance and bizarrely inflated expectations that led to the flooding of the PTO with “schemes for achieving fame and fortune by the Internet.” Get a life.
6, “The death of the loser? IS THIS TO THE DEATH? I want to be on bring it on’s side!
Hee hee, that’s the first time you made me laugh.
6, I truly don’t dislike you. I knew nothing about patents my fist year at the PTO – I can’t expect better of you. Fortunately, I learned from an SPE who did know and did care. Doesn’t seem like you have been as fortunate. But, you keep thinking of yourself as a genius who can learn in one year what those paid X times your salary can’t learn in decades. I’m sure you are right . . .
“The point to prove here is that I openly stake my reputation and experience…”
Your reputation?
In case you hadn’t noticed, you’re anonymous. You don’t have a reputation.
Feel free to post your name, and some serial numbers of applications you’re currently examining. I’m sure you’ll find there are plenty of folks who read and post on this site that are willing to grade your work.
“That claim was filed six months ago and took me five seconds to find. As you know, it’s pure unadulterated crap.”
Woohoo … you were able to use the search function on the USPTO website. Congratulations. My 5 year old niece is equally capable.
As for “pure unadulterated crap,” you have a penchant for delving into the sewer. Why is that? Anyway, care to provide an examination in a nutshell for us?
How about some claim construction for the terms at issue? Also, how about an identification, within the prior art, of these limitations?
Don’t worry … we don’t expect you to try. You wouldn’t know where to begin.
Mad Prosecutor “That’s an awful lot of supposition on your part. My clients are primarily mechanical.”
I apologize for mistaking your whining for that of a hack software prosecutor.
“It’s just a complete waste of resources and infuriates clients.”
From a different point of view your application simply did not appear to be entitled to a patent under the statute. Try having an application that appears so and watch as the allowances flow forth.
“After eight months of “training” (training is what you give a dog, by the way), the Examiners are going to tell us when claims are indefinite, missing “critical” features, educate us on the requirements for inherency for a hearsay source (the MPEP), etc. Again, I think others easily see how ridiculous this is.”
I’ll be honest with you, it is sad that you are educated on those requirements by Examiners straight from the academy. That says a lot about you though.
“What is sad about this is that there is a whole generation of new Examiners (e.g., 6) that think this is a perfectly acceptable practice.”
Well that would depend on how stretched the rejection is.
“I with Mad, and will stand on the sidelines to make sure it ends the way it should.”
The death of the loser? IS THIS TO THE DEATH? I want to be on bring it on’s side!
“They spent as they went, congress took funds and the PTO covered costs were they had it. So, yes you should be upset since your funds are long gone.”
Every once in a while on the news you’ll see some shots of teenage girls standing outside of a Jonas Brothers concert crying because the concert was oversold and they couldn’t get in.
Breaks my heart to see that stuff.
***sniffle***
So, readers, Malcolm (hopefully) learns a very important lesson on making assumptions. Maybe this will force his to rethink so of his other equally unfounded and invalid assumptions . . . But then, I suppose I hope for too much.
Malcolm:
That’s an awful lot of supposition on your part. My clients are primarily mechanical.
“If the Examiners are complaining they don’t have enough time to search, then the allowance rate should be artificially high – which, obviously, is not the case.”
BWAHAHAHAHAHAHAHAHAHHAAH!!!!!
Right. “Obviously.”
David, the PTO should be seized for mismanagement of those funds! No bailouts unless heads roll. This is unbelievable.
Mr Stein,
Its not your client’s fault, it is managements fault. I totally agree with you there. My argument is Management did not and does not correctly charge to examine a case and does not hold your money in a fund to prosecute your case, and they should. Yes, we know fee diversion ended but what about the application build up leading to that point. The office in O5′ was examining 03′ cases and already had several hundred thousand cases in backlog. The monies from fee diversion for more then a decade are to blame for a big portion of the problems today. The fees to examine cases were removed by congress, did they think there was an excess of funds? How could there be? There is no way that funds taken were in excess of funds needed to cover operations. Instead, filings increased every year for the last decade and the funds incoming increased which masked the deficit for examination from under charging because each year more filings provided funds to cover the expenses from the 3 years prior. My point is the PTO management uses a 2 year budget based on current filing fees and does not keep prior funds in the patent pool. Evidence is shown today, we have a 10% drop in current filings and the PTO cuts back on everything. If they were charging the correct amount at least the office would have enough to cover this years filings but they dont. Why would they need to if the pool of funds from previously filed cases exists? They would not need to cut staff or projects if they did have the funds but the fact is they dont. They spent as they went, congress took funds and the PTO covered costs were they had it. So, yes you should be upset since your funds are long gone.
David:
At the same time, all we ever asked for was a reasonable conclusion w/r/t patentability in the time allotted. An Examiner could be given 8 hours, or 10 hours, or twenty hours, or fifty hours. I don’t expect the 50 hour examination in 8 hours – I expect (as I am sure you do as well) the reasonable 8 hour examination. If the Examiners are complaining they don’t have enough time to search, then the allowance rate should be artificially high – which, obviously, is not the case.
“After eight months of “training” (training is what you give a dog, by the way), the Examiners are going to tell us when claims are indefinite, missing “critical” features, educate us on the requirements for inherency for a hearsay source (the MPEP), etc. Again, I think others easily see how ridiculous this is.”
You want to see ridiculous?
61. A computer implemented method for a website, the method comprising:obtaining data pertaining to content transmitted during a data transmission transaction;sending the data pertaining to the transmitted content to a copyright detection system;receiving, from the copyright detection system, information indicating that at least a portion of the transmitted content corresponds to at least a portion of one of a plurality of registered works, the information further specifying one or more business rules associated with the one of the plurality of registered works; andperforming one or more actions with respect to the transmitted content, the actions being defined by the business rules associated with the one of the plurality of registered works.
That claim was filed six months ago and took me five seconds to find. As you know, it’s pure unadulterated crap.
Now you and David Stein and your fellow wankers who simply refuse to acknowledge the big picture can reform your sad little circle. I have an endless supply of tissues for all of you and your miserable clients who contribute nothing but want the world.
bringiton wrote:
“Does 8 hours really sound like enough time to review thousands of pieces of art, pick two or three to cover all of the embodiments, and then write an office action? or to determine allowability?”
Of course that sounds insufficient. But we practitioners never advocated for productivity rules or metrics. In fact, I’d be happy to see examiners take more time on every case – even if the PTO had to raise fees to permit it. The end result would be higher-quality examination.
So take it up with PTO management. No, seriously, please do – we’ll back you.
===
“Congress takes any excess funds that are left in the patent pool.”
Fee diversion ended in ’05.
===
“The PTO spends every dollar they take in for processing applications filed three years ago.”
The PTO demanded money up front.
My client paid every penny.
The PTO then spent it on other projects and sat on my client’s application for three (or four, or five, or six…) years.
Today, you complain that the PTO doesn’t have enough money to examine my client’s application in a reasonable way.
Somehow that’s my client’s fault – is that your argument?
– David Stein
Cola, Mad,
To be clear, my challenge is this. A one on one, examiner vs attorney patent application review for art along with crafting an office action using EAST/WEST, OACS and the databases within the PTO, and do this in 8-10 hours or less. The applications put out by the examiner and attorney are to be graded on quality of work product, relevance of prior art and clarity of position along with proper action taken. The point to prove here is that I openly stake my reputation and experience against another to show that the work product would be on par with any ringer the public could provide. If by chance the attorney should clearly trounce my work then at the very least, I would have finally learned from a pro. I have yet to see such a pro after reviewing thousands of office actions. Therefore, the duel is open to all, who is up first?
1. The PTOs source of income is patent filings and prosecution.
2. The PTO has lead a five year war against “easy” inventions by limiting continuations to one, eliminating 103 motivation so that the applicant’s specification can serve as a road map to the obvious invention, and making second office action final as the norm.
3. “New patent filings are down 16% so far in 2009.”
4. The falling numbers has the PTO worried about its budget.
5. The PTO collectively says “D’oh!”
bringiton, I was the best examiner that ever examined at the PTO. I proved it day in and day out while I was there. And I NEVER compromised my professional ethics and gave in to my bosses (the last one being oliki the dickie) demands to “cut corners.” I know that place inside and out, and I know it when I hear a load of PTO b-s!
Malcolm, some may see things differently than you. As I said, it’s not that the Examiners know nothing (we are all ignorant about different things, at different times). It is that they wallow in and embrace their ignorance, and can’t even see how little they know.
You strike me as intelligent – if you started a new job as some sort of government regulator, and your first day on the job you went into a meeting with an attorney who worked in front of the agency for the last 20 years, I know you would try to learn from him. And if he told you something, you might actually see if he, with two decades of experience, knew what he was talking about, and maybe you were misguided. That’s not today’s PTO. After eight months of “training” (training is what you give a dog, by the way), the Examiners are going to tell us when claims are indefinite, missing “critical” features, educate us on the requirements for inherency for a hearsay source (the MPEP), etc. Again, I think others easily see how ridiculous this is.
Jules “Take Boston for example. I used to think they were just arrogant jerks, but now I see that they just have some pride about their part in the forming of this country.”
Forming the country? There are some decent riffs in ‘More Than a Feeling’ and ‘Long Time’ but I’m not even sure they were original.
“Junior with a year of experience at the PTO is going to tell people who have been doing this for one, two, three, or more decades what’s what??? It’s embarassing both that the Examiners don’t know what they are talking about, and also they are too foolish not to realize they don’t know what they are talking about.”
This is exactly the sort of pathetic misguided anger and arrogance I was referring to upthread. Why not just stick your head out the window and scream “GET OFF MY LAWN!!” The vibe is exactly the same.
Rc Cola,
My point is I challenge you, Mad or anyone else for that matter to prosecute from the offices position. Does 8 hours really sound like enough time to review thousands of pieces of art, pick two or three to cover all of the embodiments, and then write an office action? or to determine allowability? Give me a break, most cannot read through from cover to cover more then 10 applications in 8 hours, let alone write an office action, address 101, 112, etc. You get what you pay for pal! Just take the complexity of the art progression in Microprocessors from 1990 to today. The art and technology has progressed so much that I believe without adequate training on both sides it is hard to keep up with. Unless you are full time in reviewing changes one cannot possibly keep up with art. Examiner’s, attorneys and the like do not go back to school 10 years after they graduate and yet the technology has changed dramatically. Therefore, I challenge anyone to do it better, with the same tools, time and environment that we have. Yes, I am quite sure there are those examiners that cut corners, but there are attorneys that do the same. Yes, I am sure attorneys don’t disclose art when they should and examiners write finals when they shouldn’t. The system is what it is from years of fee diversions and poor management and the go-go days of filing thousands of overlapping inventions to carve out a single sliver of patentable material. We have one million back-logged applications to show for it. Patents have been monetized so much that the hours to write, search, determine, prosecute, etc a patent have been reduced to make a profit, which is where I think the heart of the problem lies. The office only takes in 25% of the cost to examine a patent and has not invested in examiners to make the process better. Congress takes any excess funds that are left in the patent pool. The average patent costs $4000 to prosecute by the office but the fees are substantially less and noone is making that point. Tell me who in their right mind comes up with a two year budget to prosecute patents that uses current filing fees as a basis. The PTO spends every dollar they take in for processing applications filed three years ago. Filings are down now, and therefore, we dont have the funds to cover prosection of current let alone old cases. But, that is congress and management, not the examiners. On the other side, the inventor pays 10-15k or a bulk rate to cover the legal expense, to which, is further scrutinized by partners to profit as much as possible on each case.I have spoken to countless attorneys who state they only have an hour or so to write a response to the examiner, Less than a week to write a patent, one day to do an appeal, Is that fair? In either case, the inventor loses because there are not enough fees to cover a proper review and the prosecution is limited by the partner to ensure a profit. If we remove the profit from the equation and provide an adequately funded infrastructure to review applications, filings would be down, quality would be up and all of this squabbling over prosecution would go away.
“Finding prior art is your job? Isn’t it? … That is what you get paid to do, right? Then do it.”
Yes sir, that is part of my job. I will get right on that. I will do so in a way that I don’t get pricked by every needle, or needled by every prlck. I’ll adjust accordingly when change demands it, and I’ll keep the btchin and moanin to a minimum. Klll them with kindness, that’s what they say. You, however, should probably focus on reading between the lines.
“History treats those that say “I was just following orders” very poorly.”
I’m not so sure. It does provide for ample discussion though. I tend to agree. The people that simply follow orders may never obtain freedom. America was founded on risin’ up and fightin’ the man. Take Boston for example. I used to think they were just arrogant jerks, but now I see that they just have some pride about their part in the forming of this country.
Bringiton:
I don’t know what your point is. Sure, some here have far more experience than I do, but I have more than a decade outside the PTO at this point in NOVA/DC law firms (AMLAW 100 firms in the past and currently). I was also an Examiner. The point being, I have enough experience to actually comment on the state of affairs, as opposed to Examiners whose entire IP “career” is a year or so at the PTO (not saying you do, just as a point of reference).
The nonsense propogated by Examiners in this thread is indicative of the nonsense at the PTO. Junior with a year of experience at the PTO is going to tell people who have been doing this for one, two, three, or more decades what’s what??? It’s embarassing both that the Examiners don’t know what they are talking about, and also they are too foolish not to realize they don’t know what they are talking about.
An Examiner above seems to indicate the reason the PTO went from the about 75%+ allowance rate from 1975 to 2005 to the current rate of 42% is because now all inventors describe their inventions on the internet???!!! Ridiculous. Virtually 100% of the (nonsense) prior art I see are Patents, Patent Publications, and Journal Articles.
I wrote plenty of Office Action during my time at Club Fed. You also can’t con us who have been there with your stories of how hard you work. We worked back there when you actually felt some duty to do a reasonable job and allow an application when it was reasonable to do so. No excuses that “the art is full,” or that “we’ve issued enough patents this year,” or that “it’s safer to my job performance not to allow anything.”
>>> “Moonpie taking the high road.”
Just isn’t credible is it? He probably just wants to get up there to throw a rock on our heads.
>>- consider whether the time has come for a new >>New (IP) Deal
>>- i.e., government-backed financing to help >>innovators and creative persons obtain >>protection on their IP (short term), and to >>stimulate the IP commons (longer term)
That is what the patent system coupled with loans and tax breaks for start-ups and tax breaks for research at corporations.
One of the most misunderstood advantages of the patent system is the disclosure. Patents often aren’t the best place to learn, but the fact that patents exist means that inventors will discuss their ideas with others. And everything that is disclosed becomes part of the commons in 20 years.
I like the idea of the prosecution duel. Maybe it could be an online competition open to more than 2 people with prizes.
bringiton, I was required to do it in 8 hours when I was there. What’s your point? I with Mad, and will stand on the sidelines to make sure it ends the way it should.
Mad/Prosecuter,
I think your response is of base.
“It was your poor examining/low allowance rate that led to lower filings, which led to reduced revenue, which led to the programs being cut. No law school for you! Now, let’s see how you deal with the increased pressure, perhaps wage cuts or freeze in promotions . . .”
I challenge you to a prosecution duel. I will even give you the benefit of the case being one of your applications. The challenge is to see who can find the best art via a search, write an office action and address and review all possible embodiments in the search and do it within the average time given to an examiner. Lets say, 10 hours! I will meet you anytime, anyplace, and my bet is that I find a 102 and write the rejection before you get done searching the class the case is assigned to. The issue you take with Examiners is not the examiners fault. My actions are often credited by attorneys as being quite good. In fact, I rarely get responses back that are not amended or abandoned. Low allowances are due to poor claims and poorly written specifications, period. The issues with the office are purely management borne. Examiners follow orders and some do it better then others. So, do we have a duel?
“We’ve got a pretty big client in Europe who is about to just abandon a large set of patent applications because of this crap.”
Wow. No patentable subject matter in the entire set?
“Moonpie taking the high road.”
Neither high nor low, my friend. Wishing people ill who have done absolutely nothing wrong to you or anyone else just seems pointless. Save your energy.
Putting this concept out there on an anonymous basis:
– consider whether the time has come for a new New (IP) Deal
– i.e., government-backed financing to help innovators and creative persons obtain protection on their IP (short term), and to stimulate the IP commons (longer term)
(c) Nobody, No Rights Reserved
“My favorite poster child of “illogic” from the Federal Circuit is the 2004 case of In re Ngai which ruled you could no longer patent what we used to call “products with instructions for use.”
LOL. What a terrible blow to innovation!
There is nothing “illogical” about that case whatsoever, nor is there any controversy about its holding.
By the way, who does “we” refer to in your comment? I’ve never seen a claim to a “product with instructions for use” that wasn’t a pointless piece of garbage. It was such claims that led me many years ago to discount just about every bit of “wisdom” that the senile old partners tried to pass down to the associates.
Never trust a patent prosecutor over 60. Most of them are dinosaurs hung up on silly habits that passed under the bridge decades ago.