Kappos: Earn Accelerated Examination Rights by Abandoning Worthless Applications

One portion of my prior post on PTO Director Kappos' speech at the IPO annual meeting seems to have created some confusion. In particular, many questioned how Kappos planned to implement a system of "easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources."

Aligning with the Obama-Sunstein strategy of soft paternalism, Kappos does not suggest that the PTO should set any hard-line rules for determining value and worthlessness. Rather, Director Kappos is intent on introducing a system that provides applicants with an incentive of abandoning applications prior to the first office action by offering accelerated examination for a still pending application. The following is a quote from the printed version of the Kappos speech:

We are working on new programs to help cut pendency across the board, such as one that would allow an applicant to select an application to advance in the queue in exchange for each application they withdraw before substantive examination.

We hope this will benefit applicants who are abandoning applications without response to first office actions, while saving the office from unnecessarily examining applications that are no longer important to applicants.

I suspect that this approach will work to help applicants abandon their own applications that they see as worthless. Here, applications may be seen as worthless either because they cover worthless technology or because they are unlikely to be patentable. A potential problem with the program is that it creates the opportunity to file straw-man applications that are subsequently abandoned in order to accelerate examination. To avoid this, the rule should also allow applicants to simply pay the equivalent of the application fee in order to accelerate examination. The program would also be much more successful if it offered a refund of the search & examination fees when applicants abandon early.

It is unclear whether the right to an accelerated examination would be transferrable.

Perhaps the positive takeaway from this small part of Director Kappos' speech is that he is willing to explore wholly new approaches if they have some potential for improving the system.

Links:

98 thoughts on “Kappos: Earn Accelerated Examination Rights by Abandoning Worthless Applications

  1. “I represent some of the big guys with thousands of pending apps. There’s no way that they would spend the time and effort to identify worthless patent application to get moving on important applications. Their applications are primarily defensive, ”

    Geez. Heck, this is enough reason to change the law to eliminate almost all current patents. “Defensive patents” are a sign of a system gone bad.

  2. If mr kapos doesent want the agency involved in judging the viability of the patent good, fair,poor this would only be a recomondation of course then they could grant accelerated examination by the appearence on the market of the item in question proving someone considers the product valuable even if its not the inventor he can at least start his suit for patent theft. the other importaant thing is immediate examination revenues as a method of revenue for the office these examinations establish previous non existence of the patentable item previously by internet and worldwide patent database checks helping to establish first to invent status thereby eliminating fraudulant inventorship claims.

  3. R. Kyvett,

    You must be an examiner – one additional post bumps my percentage a full point – nice math.

    And you are at 100% under the current pseudonym.

    So what?

  4. Noise: “the intellectual affront of the posts by 6, MaxDrei and Malcolm Mooney (which dwarf the volume of my writings) prompts you to…
    …silence.”

    No, they don’t actually. Not at all. I respond to plenty of what those commenters write, sometimes in approval, sometimes with questions. I’m posting this under a pseudonym because I don’t want to become a target for your name-calling.

    By the way, you’re up to 96% now with that last comment.

  5. Once again, bureaucrats change the rules of the game without having any idea the problems their weak ideas cause. KISS. That his how freedom works. Not more complexity.

  6. Ah, R. Kyvett, you no doubt have astutely realized that my actions mirror my moniker.

    And while you are called to comment on my posts, the intellectual affront of the posts by 6, MaxDrei and Malcolm Mooney (which dwarf the volume of my writings) prompts you to…
    …silence. How odd.

    Are you an examiner per chance?

    Further, your call for a thesaurus is misplaced, as the use of the word “assail” is by no means overused in my writing. I’ll leave it to you to gather all my posts and see what minimal percentage “assails” occupies.

    Thank you for your comment.

  7. Noise: “Further, I assail 6 not for merely acknowledging the realities …”

    LOL. Flashback to August 29, 2009, 10:36 am when Noise was assailing MaxDrei: “You are reaching them, but the message you are leaving is not effective for the various reasons that I assail you with.”

    What is the deal with all the “assailing”? 95% of your comments are “assailing” 6, MaxDrei, or Malcolm Mooney. That’s not an exaggeration. Just go back and read what you’ve been writing for the past month or two. 6 makes a comment, then you’re like, “I assail thee!”

    Get a thesaurus, at least. Preferably one that wasn’t written in 1870.

  8. Now how about some good ideas offering to refund examination fees is good but not as good as not requiring them in the first place Just take the intellectual material and put it in storage for a filing fee. If it becomes economically viable then some one is bound to steal it then a suit can start immediatly after notification and trials start at a maximum of two years.And Pto can make money from money making patents by charging higher rates for yearly maintence fees based on the profitability totals of item sales.

  9. Obviously not a good plan accelerated examination is nessary to begin a lawsuit against infringers and patent thiefs This concept ties giving up good applications(To be stolen by other patent thieves)to pay for the right to sue on others.It is also lopsided in favor of wealthy big businesses. It presently takes 10 to 23 years to litagate these thefts in the courts

  10. Depends on what you mean by “complete examination.” At least as far as art as concerned, Examiners don’t make every possible rejection in the first office action, only the best rejection.

  11. I am not blaming the cashier for anything. You are the one that is saying “hey, you haven’t paid enough.” I have paid for what is on the menu and what is on the menu is — by law — a complete examination. I want what has been advertised at the price it has been advertised at.

    Yes – it sucks for you – does ring in my message. But you know what? It does. You are charged with following the law. There are no graduated levels of examination based on time or complexity. Sorry – but them’s the facts. It does suck for you. I feel your pain. But at the same time, I will not tolerate you passing your pain off to my clients with shoddy examination. I will fight that tooth and nail. And guess what – Lord Kappos recognizes that such so-called timed quality is NOT acceptable either. Neither is the quality by rejection path. It doubly sucks for you as these avenues, which have lead to the abysmal state of the Office, are being shut down. Status quo for the examiner to meet his counts is changing. Deal with it.

    My position is not ridiculous. Just because it sucks for you and just because I point out the ethical violation of ripping off my clients because of your dilemma does not make my position ridiculous. It only highlights the tough position you are in. It also points out why relations between the Office and the patent bar have become so strained, when you think it is OK to steal or claim credit for something you have not done.

    It is in regards to that tough position that you are in that I speak of POPA. They are the ones that are charged with protecting you and keeping you out of such tough positions. Evidently, they have failed. I never stated or implied that POPA IS the driving force – I stated that they SHOULD BE the driving force, if for nothing else, because they should be looking out for you and preventing the “it sucks for you” position that you are in.

    Your position (not necessarily your argument) is what is ridiculous. But not following what is the Law is not an acceptable answer. Not to the patent bar and clearly, it seems, not to Lord Kappos.

  12. “Yes, I do realize that forcing the issue in this manner makes the examiner push the issue.”

    But, clearly it doesn’t. The response to your attempt to force the issue through examiners is clearly a “not my fault, not my problem” or at best a “not my fault, sorry it sucks for you”.

    As 6 suggested earlier, the reason these supposed changes are coming is because management wants to save face w/ congress, not POPA. If you have an equally believable explanation that points towards POPA being the driving gears behind the mobility on this change, then by all means share it.

    Your position is still ridiculous. To go back to the big mac/filet mignon example, you’re blaming the cashier for charging you filet prices for a big mac, as though your ire will upset the cashier enough to make waves through the company until management recognizes they better change their ways.

  13. I am not demanding “free work”. I am demanding the level that the law requires. This is not mythical – this is the law.

    If you can’t do it – don’t claim credit for it. This IS a black and white ethical position.

    If no one can do it – then the situation will present itself to management and management will be forced to change. You are responsible for your actions. If you claim that you have examined something when you haven’t, who is the thief?

    Culpability by ripping of applicants is not an acceptable answer. “But I was forced to ripoff the applicant in order to keep my job” is not an acceptable answer.

    Yes, I do realize that forcing the issue in this manner makes the examiner push the issue. You do have a union. They are supposed to stick up for you. If you have an impossible bargain, don’t stick it to the applicant. This pass-the-buck syndrome is an immediate precursor to the record level of poor quality that assails the Office. Rather than dealing with it, the Office plays pass-the-buck and power grabs to change the rules so that they don’t have to do what is (very much admittedly) a difficult job. None-the-less, it is a job you are paid to do and no one is forcing you to take that job.

    Further, I assail 6 not for merely acknowledging the realities – but for avoiding recognition of what the law says and for building smoke screens to hide behind. His arrogant use of the shield of persistent ignorance is appalling and should sicken you as a professional examiner.

  14. “If you cannot do the quality level job you are required, and you take credit for a completed job (when it is in fact NOT truly completed) you are stealing.”

    It would appear that the only solution you will accept is that examiners in art units without enough time work voluntary over time until they reach the mythical level of quality you expect. How is demanding free work any more ethical than the theft you accuse the PTO of? These examiners didn’t set the time/count ratio, but they’re the ones you seem intent on holding responsible for the system in which they’re employed.

    Your position is ridiculous. Every time you attack 6 for merely acknowledging the realities of the job (i.e. production taking precedence over quality) as an admission of failure to comprehend the job, you make it all the more evident that you haven’t considered all the details of the situation.

  15. While you have my sympathy for the (w)hole one size fits all “time-allotted” factory line mis-management, the Law does not recognize or allow graduated levels of quality (there is no such thing as a gold-plated patent, at least not yet). Each application is due a proper examination. Talk to your union if you are not happy with the agreement they have struck.

    It is not my expectations alone you are failing – it is this country’s. If you cannot do the quality level job you are required, and you take credit for a completed job (when it is in fact NOT truly completed) you are stealing. You have “earned” a count to keep your job at the expense of the applicant that you ripped off. No amount of excuses changes this basic fact.

    Kappos has decreed – Quality does not equal reject-reject-reject. The fallback position of “but I don’t have time” is next. You will have to learn a new excuse.

    The pay aspect is a red herring – we didn’t barter for either a Big Mac or a filet mignon. As I mentioned, the Law has only one level on the menu. That’s what we ordered and that’s what we paid for. The patent bar didn’t set, nor has the power to set, menu prices.

  16. “How about you do the job you are paid to do?”

    I do. I give it the time I’m allotted, which is not enough to do the quality you expect. So if you want high quality examination, then how about you start paying for high quality examination? If you pay for a Big Mac, don’t expect filet mignon.

  17. “or quality expectations need to be reduced.”

    Is someone really seriously proposing that examiner quality be reduced?

    How about you do the job you are paid to do?

    Accepting low quality is NOT an option.

  18. 6, that witch analogy is pretty accurate. The floaters are “bad examiners” and must be fired for doing lousy work. The sinkers were “good examiners”, alas they were fired for lack of production.

    I also agree with DB that examiner pay does not need to be increased. Examiner pay is already competitive. However, the examiner workload needs to be reduced, ala more time needs to be given to properly examine each case. And to do that, either fees need to be increased, or quality expectations need to be reduced.

    If you’re currently going through two RCEs per case on average (cost: $760 + $810 + $810 = $2380), and now we want to get the case done in one round for compact prosecution (cost $760), then either the fees need to go up, or we need to accept that initial examination quality is going to be low. $760 represents less than 4 hours in average attorney cost. I would guess that it represents maybe 10-12 hours in average examiner cost.

  19. Why not just come out and say it don’t? There simply is no solution to what you “want” out of examiners. There probably aren’t people capable of performing what you “want” out of examiners available the whole world over, much less at the price you’d be willing to pay or that you’d be able to track down.

    My work quality is so far above that which you personally could achieve it is absurd for you to throw a stone anyway.

  20. “You may also want to remind them that they’ll need to be prepared to pay about twice what we make currently in order to attract these mythical beasts.”

    We in the patent bar don’t need any such mythical beasts. There are plenty of wannabe’s like you who are willing to churn out crapola work product for the pay the PTO is offering.

    You just keep on serving that drivel up and we’ll keep sending it back with instructions to try again.

    It’s not ideal, but there’s no evidence that higher pay will attract better applicants to the PTO. I mean, if they doubled 6′s salary he’d still be just as ignorant of the law as he is now. Why pay more for that?

  21. “You may also want to remind them that they’ll need to be prepared to pay about twice what we make currently in order to attract these mythical beasts.”

    We in the patent bar don’t need any such mythical beasts. There are plenty of wannabe’s like you who are willing to churn out crapola work product for the pay the PTO is offering.

    You just keep on serving that drivel up and we’ll keep sending it back with instructions to try again.

    It’s not ideal, but there’s no evidence that higher pay will attract better applicants to the PTO. I mean, if they doubled 6′s salary he’d still be just as ignorant of the law as he is now.

  22. “You may also want to remind them that they’ll need to be prepared to pay about twice what we make currently in order to attract these mythical beasts.”

    We in the patent bar don’t need any such mythical beasts. There are plenty of wannabe’s like you who are willing to churn out crapola work product for the pay the PTO is offering.

    You just keep on serving that drivel up and we’ll keep sending it back with instructions to try again.

    It’s not ideal, but there’s no evidence that higher pay will attract better applicants to the PTO. I mean, if they doubled 6′s salary he’d still be just as ignorant of the law as he is now.

  23. Oh and Newbie, you might like to go ahead and tell NAL and “the patent bar” to hire themselves some examiners fitting her description if that’s what they “need”.

    You may also want to remind them that they’ll need to be prepared to pay about twice what we make currently in order to attract these mythical beasts.

  24. “As far as the production quota’s, perhaps if you bothered to read (and comprehend) some of my posts on that subject, you would see that I am vehemently against the system as implemented. But then again, that little tidbit would ruin your little rant, now wouldn’t it?”

    “you would see that I am vehemently against the system as implemented.”

    So in other words, you agree with me and you argue with me for no reason what so ever?

    Sounds about right. And fits your disposition.

  25. 6,

    Your lawful witch test is crap, a red herring, a briar patch. It has nothing NOTHING to do with the aspect of Quality that is sorely lacking in the Office, and that your comment epitomizes. You are the poster boy of what is wrong with the Office. Even other examiners have posted on these boards what a disgrace you are.

    As far as the production quota’s, perhaps if you bothered to read (and comprehend) some of my posts on that subject, you would see that I am vehemently against the system as implemented. But then again, that little tidbit would ruin your little rant, now wouldn’t it?

    Newbie – please PLEASE do not drink the kool-aid that 6 offers. We in the patent bar need examiners with character, not characters who pretend to be examiners and who don’t know what their job is (and should be).

  26. NAL lord Kappos hasn’t implemented any changes to allow for his New Order just yet dear heart. When he does, then good Newbie here can go about his business.

    You know what’s funny? I bet that NAL sees no problem with the oldschool lawful witch test. You tie her hands and legs, and throw her in a lake from a boat. If she floats then she’s a witch and you burn her at the stake. If she drowns then she was a normal person.

    Either way, she dies. No problem with that is there NAL? As long as it is the lawl it’s A ok.

    Similarly, you take an examiner, and make him do a “quality” job (determined subjectively by NAL) and hold him to a stringent production quota. He gets fired because he either didn’t do a “quality” job, or didn’t do production.

    No problems there. Nah. It’s the lawl right?

    In any case, don’t let yourself get fired over you and NAL’s subjective opinion of quality Newbie. Unless you want to try to find another job in this economy.

  27. Worth repeating – with the emphasis that this is the dogma from the indoctrinated 6 and in NO WAY represents the New Order as recently laid down by Lord Kappos:

    “You need to do less quality and more production.”

    See the door, 6?

  28. “Vince wit ShamWow”

    OH SH T IT”S VINCE! I still watch that remix, imma go watch it again.

    ” (I believe the medical term is IATT – inflamed amended tab toxicity. #1 killer of n00bs at the PTO)”

    It’s true.

    “someguy ”

    I don’t think you get it. I’m saying we get a count for RCE (aka abandonment) in addition to FOAM and final count.

    Noobie, you’re not getting it fella. You need to do less quality and more production. Sorry if nobody was kind enough to tell you this to your face.

  29. MaxDrei:“Ned, have you read Aharonian this morning. His suggestion is that BigCorp loves backlog. Delay issue until the competitor enters the market, only then go to issue, and set about the competitors with tailored claims.

    So (law of unintended consequences) expect BigCorp to UP its claim count, as soon as a “shorties get examined quicker” regime is put in place.

    Or does Aharonian see it wrong (it wouldn’t be the first time).”

    I’m not familiar with Aharonian, however I think that he might be right about big companies liking the backlog. Backlogs delay prosecution expenses, which of course helps the company patent counsel to meet their budgets. You might be surprised to learn that looking good to upper management is more important to big-company patent counsel then obtaining the patent itself.

  30. Breadcrumbs wrote:”If one could get to a first action faster by limiting the number of claims, that would become the norm”

    Ned, are you aware of the Claims and Continuations rules?”

    Yes. And I know Kappos was opposed to the new rules.

    The one thing I supported in the proposed rules was a limitation on claims in a particular application. As we know the examiner’s already try to limit the number claims by their liberal use of restrictions. The problem with the Claims and Continuation rules was that the patent office was trying to limit the number claims, not only for one patent application, but for an invention by including not only the current application, but related applications and continuations in the limitations.

  31. This is interesting, but I don’t think it will gain much more traction than the peer review of filed patent applications program… how many companies are really going to spend a few thousand dollars on a patent, and then abandon so another can be reviewed a few months earlier? It will have more fraud than practical use.

  32. Noobie, come to the EPO. Very few noobies leave. Life’s too sweet. Attrition is not an issue over here.

    Mind you, you need pinpoint technical qualifications, and the three official languages in which the EPO does its work, English, French and German. The EPO finds it very hard to find adequate numbers of noobies, in some highly specific art units.

  33. “How is getting counts for finals any different from getting a count when applicant files an RCE? One is getting count for the work done right away and the other is just delaying the count for work done months ago.”

    It’s different because when you’re new, you have to spend about a year doing twice the work load that an established examiner has to do (i.e. the new guy gets all his counts from new cases and has to do all of the finals, 2nd non-finals, and advisories for free). By the time the disposals finally start to come in, the new guy has either quit or been fired. The PTO pretty much uses this period as a test to see how committed the examiner is to the job. The examiners who are willing to work 60-80 hours per week stay, and the rest quit or get canned. Really, this is short-sighted. If someone is a competent examiner, why would you want to run or scare him off?

    For a similar experience, consider changing your billing practices so that the client pays nothing until the application is allowed or abandoned.

    Hopefully, the rumored changes are legit, otherwise there will likely be a mass exodus at the PTO when and if the economy ever recovers.

  34. dunBsillie wrote:
    “The program would also be much more successful if it offered a refund of the search & examination fees when applicants abandon early.”

    I wonder if a firm would give applicant a refund if, at an early stage of prosecution, applicant decides to abandon. That would help, too :) As if attorneys don’t cost anything. Puh-lease!

    So let’s see. A suggestion that the Patent Office offer a refund before it does any substantive work is somehow akin to a suggestion that a law firm offer a refund after it has already written and filed the case?

    As you so convincingly put it: Puh-lease!

    Last time I checked, most law firms don’t charge for prosecution costs in advance, and if they do and prosecution does not happen, then they DO refund the remainder of the retainer.

    Glad I could straighten out that pretty significant difference for you.

  35. “That would have an enormous impact on the new examiner attrition problem. Without question the main reason people leave or are fired is because they’re struggling with production. The production nosedive usually kicks in when they’ve been at the PTO around 1 year and the amendments start coming in, and now they’ve got to get their counts from new cases, and also do the amendments for no counts. (I believe the medical term is IATT – inflamed amended tab toxicity. #1 killer of n00bs at the PTO)”

    YES!!! I’m a new examiner (just under a year) and I’m dying. People tell me it will get better, but I find it hard to believe. The amount of time given to examine cases properly is woefully inadequate (at least in my “art” — a term I use loosely, given the vast span of technology it encompasses).

    I’m 40 years old and don’t mind working hard, but I’m not willing to work 80 hours a week to make production. Hopefully, something will change or I won’t be staying. It’s a shame, too, because I actually like the job and care about what I’m doing.

  36. Ned, have you read Aharonian this morning. His suggestion is that BigCorp loves backlog. Delay issue until the competitor enters the market, only then go to issue, and set about the competitors with tailored claims.

    So (law of unintended consequences) expect BigCorp to UP its claim count, as soon as a “shorties get examined quicker” regime is put in place.

    Or does Aharonian see it wrong (it wouldn’t be the first time).

  37. “If one could get to a first action faster by limiting the number of claims, that would become the norm”

    Ned, are you aware of the Claims and Continuations rules?

  38. How is getting counts for finals any different from getting a count when applicant files an RCE? One is getting count for the work done right away and the other is just delaying the count for work done months ago.

  39. “The current “proposal” (aka nearly impossible to turn down offer) submitted to POPA is rumored to be adding 2 hours across the board to examining time and letting us get a count for finals.”

    That would have an enormous impact on the new examiner attrition problem. Without question the main reason people leave or are fired is because they’re struggling with production. The production nosedive usually kicks in when they’ve been at the PTO around 1 year and the amendments start coming in, and now they’ve got to get their counts from new cases, and also do the amendments for no counts. (I believe the medical term is IATT – inflamed amended tab toxicity. #1 killer of n00bs at the PTO)

    Anyway, I heard that they weren’t adding a count for finals, but rather redistributing half a count from the disposal to the final (still a step in the right direction).

  40. If the PTO had implemented a requirement to request exam with fee the way the Europeans do it, you would automatically get a way to abandon worthless applications filling up the system, but in the eagerness to increase fee income, they required paying the exam and search fees at the outset, with a promise to refund under certain circumstances later. If the PTO wants to get rid of worthless applications, the EPO’s system (the same used in Japan, Brazil and many other countries), is a well tested model, and would make filing fees more reasonable, since the search and exam fees would only be paid later under the European model.

    For that matter, the annuity system used almost universally, other than in the US, is another way to force applicants to have a “come to Jesus” moment each year, when they have to pay their annual tax to maintain pendency. Such a system is again well tested, used worldwide, and is easy to implement since CPA, CPI, etc. are all equipped to handle such payments. Again, this would, I hope be accompanied by a commensurate decrease in up front filing fees, since part of the fees would be used to maintain pendency.

    I very much respect Mr. Kappos and applaud him for his willingness to look creatively for new ideas. In this case, however, I think the well tested approaches outside our borders beg consideration, at the very least in the name of harmonization and spreading costs to those using the system.

    Today applicants that file and abandon, are subsidizing those who ultimately get granted applications. His proposal would seem to better reallocate that subsidy to its source.

    Great discussion Professor Crouch.

  41. “Some, perhaps. But as it is, all it will do is provide additional time to do a final. This would lead to better finals it seems to me.”

    In effect, if a filing fee buys 2 counts of time now, under the changes you noted it would in effect be buying 3. 50% more examination time for free. Maybe not all examiners would use this time optimally, but those that use the time well can certainly cut down on their average number of RCEs per case. I doubt it would make things any worse, even if it doesn’t get better.

  42. Kappos’ idea could be made much simpler: weight applications by the number of claims. If one could get to a first action faster by limiting the number of claims, that would become the norm thereby automatically reducing the amount of work per case of the examiners as a whole. This quickly would reduce the backlog.

  43. I’m not too sure about what you say curious. I don’t think counts for finals will encourage premature finals all that much. Some, perhaps. But as it is, all it will do is provide additional time to do a final. This would lead to better finals it seems to me.

  44. I tend to agree with you jguay, but, on the other hand you have to remember the other part to the rumor which I neglected to tell you.

    This part is nearly certainly 100% true.

    There is a another “commission” or group or whatever who are reviewing the count system independently of the Kappos/POPA group right now. They’re here because Congress instructed the PTO to make a study of the count system. And they’re either here or they’re coming soon.

    My guess is that this temporary fix in the form of 2hrs/final counts is an attempt to not look as bad as they will otherwise look in the eyes of congress when the independent group does their study.

    In other words, this isn’t a “free lunch” it is a “long overdue dinner” that the PTO put off giving for far too long and now doesn’t want their congressional overseers coming down hard on them for not having done a long time ago.

    Plus, the first rumor also strikes me as being very possible ivo the fact that Kappos has actual administrative experience before and should realize immediately when the job simply isn’t being alotted enough resources to be performed correctly.

    Never the less, you might be right about after finals or something of the sort.

  45. An extra count for finals will encourage the issuance of finals (instead of non-finals, Notices of Allowances, etc.) and the issuance of more finals will result in the filing of more RCE’s, especially given the large delay at the Board. Thus, reject-reject-reject will actually be encouraged.

    One step back, zero steps forward.

  46. 6, I’ll bet the count for the final come with “baggage” for you, like having to enter some after-final amendments. Expect a new advisory action form. As Ron Stern loved to say, “there is no such thing as a free lunch.”

  47. Trying to better guess where Dave Kappos may coming from on this, I recall that [unlike many other companies, which he may not fully appreciate?] IBM has a whole team of people devoted to constantly “weeding” their “big patent patch” for cost-savings.
    While I disagree that most companies would to spend the money to file a lot more worthless patent applications just to get “express bus tokens”, those above have a point as to the unfair advantage of those already having more narrow applications already pending to sacrifice.

  48. Straight up rumors from inside the P T Oooooooooo.

    The current “proposal” (aka nearly impossible to turn down offer) submitted to POPA is rumored to be adding 2 hours across the board to examining time and letting us get a count for finals.

    Now this is just a rumor mind you. And keep in mind that the rumor is also that POPA might unbelievably reject this proposal since some AU’s are really in desperate need of time (like diapers apparently needs like +10 hours), while others already have too much time (it is rumored that printers are this way).

    My response to this issue is: WHO CARES? WE GET A COUNT FOR FINALS!

    And by getting a count for finals I don’t mean that they’d increase the amount of counts needed per BD to 3. I mean just STRAIGHT UP COUNTS FOR FINALS WITHOUT CHANGING ANYTHING.

    You might can tell, I’m a little excited.

  49. Straight up rumors from inside the P T Oooooooooo.

    The current “proposal” (aka nearly impossible to turn down offer) submitted to POPA is rumored to be adding 2 hours across the board to examining time and letting us get a count for finals.

    Now this is just a rumor mind you. And keep in mind that the rumor is also that POPA might unbelievably reject this proposal since some AU’s are really in desperate need of time (like diapers apparently needs like +10 hours), while others already have too much time (it is rumored that printers are this way).

    My response to this issue is: WHO CARES? WE GET A COUNT FOR FINALS!

    And by getting a count for finals I don’t mean that they’d increase the amount of counts needed per BD to 3. I mean just STRAIGHT UP COUNTS FOR FINALS WITHOUT CHANGING ANYTHING.

    You might can tell, I’m a little excited.

  50. Examiner Number 9, by “gravy” I meant that the PTO does very little in exchange for those maintenance fees. They just process the payment. On the other hand, I realize that the maintenance fees are used to pay for examiner expenses (e.g., to help pay for examining costs not covered by filing and issue fees) and other PTO expenses.

  51. Curious said
    “And also try to figure out why the PTO is all of a sudden having financial problems. The maintenance fees are just gravy for the PTO and the last one in particular is horribly expensive”

    Unfortunately they are not gravy.
    link to uspto.gov
    v.s.
    link to uspto.gov

    (I am not saying that things can’t be run more effciently only that in the current state of things Maintenance and issuance fees subsidize a large percentage of base costs).

    I’ve always thought the first step that needs to be done is fix the filing/search fees to cover the cost of operations even if issue/maintenance fees drop.

  52. curious,

    I think Sam is referring to the difference between a right and a privilege. Some people would define a right as something that can’t be taken away (an inherent human right). Others, as somthing that can’t be taken away without a Constituional amendment (a Constitutional right).

    Based on what I learned in law school, I think most lawyers would say the Constitution grants Congress the power to grant authors and inventors a privilege to a patent that gives them a “right” to exclude. The Constituion does not require Congress to pass any statute granting the “right” to exclude embodied by the patent, and Congress can take away those “rights” whenever it wants, and refuse to grant anymore patents, without having to pass a Constitutional amendment. By some people’s definition, that makes it a privilege, not an “inherent right” or a “Constitutional right.”

    I know, it is definitional hair splitting, and that is all I am pointing out. You are talking about “statutory rights,” and I agree that there are such things, but I think that they are actually “privileges” by most people’s defintions.

  53. “If the PTO is going broke, raise the filing, issue and/or maintenance fees.”

    Word. Also get rid of the small/large entity distinction.

  54. If the PTO is going broke, raise the filing, issue and/or maintenance fees.

    (And also try to figure out why the PTO is all of a sudden having financial problems. The maintenance fees are just gravy for the PTO and the last one in particular is horribly expensive.)

  55. “Yeah, seriously. This proposal seems like a way for applicants to pay more to get preferential treatment.”

    Isn’t that the American way?

  56. Yeah, seriously. This proposal seems like a way for applicants to pay more to get preferential treatment. Like others who posted above, I immediately thought that applicants will file the application twice on the same day and then abandon one to get AE on the other. Big Corps who can afford to pay more for the special treatment would really benefit from this option.

  57. sam and 6- you are right, but it’s a personal rights vs. public benefit tradeoff: I give the public my idea, I get exclusive right to it for a term of years. And I can keep it secret- true enough. But the real issue is the trade-off. It needs to be balanced. And what I see is Kappos unbalancing it by these tactics. Which will not serve the public interest nor the individual inventor well, nor the PTO.

  58. Wonderful! I’ll file 4 restaurant menus and one application, abandon those menus and get accelerated exam? Great idea

  59. Sorry for the double post.

    Aaron: Ironically, the patent system itself is a gov. program making choices for you. And you <3 it. Does that make you a soft communism <3er?

    Now watch this post double post too. Idk why the site is updating so slow today.

  60. Aaron, you actually have it backwards. There is no “right” to having a patent, i.e. a monopoly. However, you do have the right to keep all your good ideas a secret. The patent system is simply a market manipulation to entice the dissemination of good ideas in exchange for a temporary monopoly. So you see, having a patent system is actually more government involvement in the market.

  61. “Whatever happened to “life, liberty and the pursuit of happiness?”

    Nothing is more hilarious than listening to anti-government teabaggers complaining that the Federal Government isn’t handing out enough patents.

  62. Sorry for the double post.

    Aaron: Ironically, the patent system itself is a gov. program making choices for you. And you <3 it. Does that make you a soft communism <3er?

  63. I think I may have a plan that more people will like better than they like Kappos’s plan.

    Keep in mind that the office is currently facing a projected shortfall next year of 200 million dollars.

    This means no OT for examiners. That means wasted examiner resources that could be utilized if they were funded.

    So, I propose the plan outlined below. Perhaps the plan should only be implemented for a short while during the budgetary shortfall.

    Have a program that examiners can sign up for to take on accelerated cases if they wish to, in addition to their normal caseload. In effect, allow them to sign up for applicant sponsored OT.

    At the same time start a program for applicants to sign up their cases for acceleration. The applicants can have a number of options on how to get their case accelerated.

  64. I think I may have a plan that more people will like better than they like Kappos’s plan.

    Keep in mind that the office is currently facing a projected shortfall next year of 200 million dollars.

    This means no OT for examiners. That means wasted examiner resources that could be utilized if they were funded.

    So, I propose the plan outlined below. Perhaps the plan should only be implemented for a short while during the budgetary shortfall.

    Have a program that examiners can sign up for to take on accelerated cases if they wish to, in addition to their normal caseload. In effect, allow them to sign up for OT.

    At the same time start a program for applicants to sign up their cases for acceleration. The applicants can have a number of options on how to get their case accelerated.

    1. Pay money (5000?). At least a certain minimum amount.

    2. Pay a lesser amount (1000?) to “petition” (doesn’t have to be to the director) to abandon a case that is currently near being placed on an examiner’s docket, or is already on an examiner’s docket, in exchange for allowing a different case to take it’s place in line. The abandoned case goes immediately to being published. And the “petition” to allow the switch will be reviewed by an examiner to make sure that the case going abandoned had potentially allowable and SUBJECTIVELY (to the examiner) worthwhile claimable subject matter. Applicant can, if they wish, pay a tiny fee to have a conference to discuss the possibility of making the switch with the examiner who will make the determination of whether or not they get the go ahead. The examiner is under no obligation to make the call either way, and any backtalk from applicants is disallowed unless the examiner feels like discussing the matter.

    OPTIONAL: All applicants who pick option 1 can additionally decide how much time they’d like to sponsor the examiner who ends up with the case to examine the application through the amount of the fee they’re going to pay. Certain minimum times apply, as well as maximums. And corresponding fees are attached.

    Some things to keep in mind before you go crazy with insults. The whole program is outside of the “normal examining” hours and only affects overtime. So, the normal que of apps stay mostly the same so hopefully there won’t be too much bitching from those people who don’t want to use the program. Option 2 comes with a safegaurd against strawmen in the form of a fee to consider the swap and in the form of the examiner who is reviewing the “petition” being under no obligation to allow the swap should he suspect a strawman.

    This is a little complicated, so you might want to read it twice before you post some stu pid criticism that doesn’t make any sense.

    Other than that, let me know if you like it. If I get enough people to say they like it I might have someone post it to the Director’s blog for his review, or take it to him myself at my next opportunity.

    TLDR: Let applicants fund overtime examination of the important apps if they want or let them buy an examiner’s opinion on if they can abandon a current app to have another app moved forward in line to the position of the current app.

  65. “you are right on: soft paternalism= gov’t making choices for us= soft communism.”

    You tell ‘em, Aaron. We’re much better off as it is, with Wal-Mart, McDonald’s, Fox News, and Wellpoint/UnitedHealth Group making choices for us.

    “If I remember right, one of the main justifications for the patent system is the right to the fruits of one’s labor, including one’s property in the form patents.”

    With all due respect, I don’t think you remember right.

  66. Sir Matters- you are right on: soft paternalism= gov’t making choices for us= soft communism. Whatever happened to “life, liberty and the pursuit of happiness?” If I remember right, one of the main justifications for the patent system is the right to the fruits of one’s labor, including one’s property in the form patents. THE BIGGER THE GOVERNMENT, THE SMALLER THE PERSON; or in this case, the bigger the government, the smaller the patent rights

  67. I represent some of the small entity filers. I don’t think many mind the backlog as long as it isn’t well over three years. They spent more money than they wanted to on the applications, and they’re not anxious to suddenly have to start paying to respond to inane rejections. Put “reasonable” and “in light of the specification” back into BRI and put an end to the arguments like a key is a collar stay.

    I’ve told clients for years that there is a bimodal distribution in the ranks of the examiners in the PTO where one lobe are those who allow basically anything and those that allow basically nothing, except under duress, and the lobes are not equally weighted. The first is maybe 10% of the whole. There’s a big dark empty space in between the lobes. I keep having to explain this to clients when they’re paying to argue against outrageous claim constructions while looking at issued patents with rediculous claim scopes. “Why did this get allowed and we’re arguing that?” Quality equals filling in that empty space from both sides. If you can’t do that, leave the backlog alone.

  68. “Soft paternalism?” Sounds like a kinder, gentler version of Joesph Stalin’s “hard paternalism.” If so, toss your MPEPs, CFRs, and the Code…

  69. Ugh. What a horrible idea. I hope Kappos was just having an off day.

    And “soft paternalism” is a horribly loaded term! What’s wrong with “providing incentives.”

  70. I represent some of the big guys with thousands of pending apps. There’s no way that they would spend the time and effort to identify worthless patent application to get moving on important applications. Their applications are primarily defensive, and they’re more than willing to let a published app sit out there in limbo. The fact of the matter is that they’re interested in total count of issued patents AND pending applications. They’re nearly equally as important because it takes a few years to see which ones will be important. I would actually say that most like the several year back log because it gives them that time to figure out the business value of the application by just waiting and seeing how the market shakes out.

    Cliff’s notes: The big filers won’t spend the time and effort to ID the apps to be sacrificed.

  71. I have just one issue with this whole proposal- it creates MORE rules= MORE bureaucracy= MORE money= MORE time= what was the point of the proposal in the first place? Wasn’t it to get rid of “worthless” patents and speed things up at the PTO? Maybe you’ll have less “worthless” patent filings (doubtful considering Kappos’s proposal), but more bureaucratic wasted time. And as we all know, time is money.

    The real fixes are not stop-gap measures that create more bureaucracy; rather, the PTO needs more resources. Plain and simple. Not easy to get, but it’s the plain fact. If Obama would have thrown some of that ~$700 billion stimulus the PTO’s way, we would have a REAL, lasting stimulus

  72. OK, I think I’ve got it straight.

    My client has three applications pending. He has paid my fees and the filing fees for all three. Now, I am supposed to go back to him and say, “Look, dude, throw away 2 of those applications that cost you $8000 and the PTO will promise to move the 3rd one up the queue.”

    And what do you think my client is going to say???

    The PTO’s promises to expedite are worthless. I got a case expedited by petition for a 90 yo client, and three years later we got a FOAM.

    Paid expediting of cases is a bad idea regardless what form the payment takes. It’s just another example of the rich get the meat and the poor get the bone.

  73. I expect applicants to game the system by filing two copies of an application and then cancelling one to boost the other.

    One way that might avoid this would be to create a way to allow a later filed application to take the place in line of an earlier filed application that the applicant is willing to abandon.

  74. Dennis’ link does not work due to the period at the end of the link string.

    When typing in a link, one must be careful to avoid normal punctuation rules.

  75. MES said:
    “An improvement to get around the “strawman application” problem would be to limit the program to a limited time, and to applications which are already filed and awaiting examination.”

    I’m skeptical of this proposal for reasons mentioned by Dennis, NAL, and others. As to your suggestion to make this a one-off program to avoid the skewed incentive to file a pile of junk to trade off for accelerated examination of your bona fide applications, I think you have to look at the politics involved. Your proposal sort of reminds me of the immigration amnesty issue, of all things. I remember when Reagan was President and there was a sweeping amnesty along with (supposedly) strong enforcement against businesses that hired illegals. What actually happened was amnesty, a resulting flood of chain immigration, but virtually no enforcement. Today we have new amnesty proposals. I think a similar outcome is likely here. As others have pointed out, some big players have a lot of expendable applications and the capacity to generate more in the future. They’ll exert pressure to make this a semi-permanent feature instead of a one-off.

  76. “There is no text in the “soft paternalism” wiki link.”

    Use the link in the See Also section of the Paternalism wiki article that JAOI linked to. I don’t know why Dennis’ link doesn’t work.

  77. This is a bad ides (see Rodrigo, above). Not fair.

    On the other hand, the other “cash-for-clunkers” idea of Obama’s guys was a good idea.

  78. An improvement to get around the “strawman application” problem would be to limit the program to a limited time, and to applications which are already filed and awaiting examination. This would still provide a mechanism for trimming down the notorious backlog, while avoiding gamesmanship such as filing token applications.

  79. OK, so this idea will allow those who file and then abandon a lot of “worthless” applications (and there are a few obvious suspects) to get preferential treatment with respect to those who perform proper prior art searches before filing in the first place, and thus only file reasonably solid applications. Never mind foreign applicants (in particular Europeans), who filed in the US only after receiving a reasonably positive search report for their priority applications.
    Is it just me, or does anybody else also recognise this idea as slightly self-serving?

  80. abandoning before publication? sounds like a step backwards.

    and “strawmen applications” came to my mind as I was reading your article, Dennis, before I got to your mention of it.

    so large companies who may actually have an application they want to abandon will jump ahead in the line before the small businesses who do not have applications they want to abandon?

  81. “The program would also be much more successful if it offered a refund of the search & examination fees when applicants abandon early.”

    I wonder if a firm would give applicant a refund if, at an early stage of prosecution, applicant decides to abandon. That would help, too :) As if attorneys don’t cost anything. Puh-lease!

  82. Mr. Crouch:
    What exactly is “the Obama-Sunstein strategy of soft paternalism”? Is that anything like the blog-writer strategy of soft condescension?

  83. Paul F. Morgan,

    The point is that this floater idea (without more) is not reasonable, nor will it work.

    Straight up, this will have the unintended (perhaps) consequence of increasing the incoming applications into the Office.

    Sure this will help with the Office’ cash flow, but Especially for those large entities having the “bean count” mng mentality. This is an open invitation to file a whole class of applications whose only purpose is to be sacrificed to gain Accelarated Examination Rights. That whole class will have a great average pendency figure.

    You will also have the overall “average” pendency statistic markedly improved, but obviously, this becomes a false measure of progress.

    The priority must be properly set – and it ain’t the “intolerable backlog” in the absence of examination quality.

  84. Perhaps Kappos is proposing a stop-gap measure to handle the current backlog and not a long-term policy change,

    For example, any Applicant who abandons two “worthless” applications will receive an accelerated examination.

    As such a measure is only applicable to heavy Applicants like Phillips, Microsoft and IBM, “worthless” probably means applications that describe technologies that won’t be integrated into products, obsolete or are too narrow to be useful.

  85. This is not going to have much effect on those large entities having management tha wants to maximise their “bean count” of issued patents to look more high-tech for PR and stock-enhancement values. Likewise, on many small inventors that also want a patent even if they can only get “picture claims.”
    But anything this reasonable to reduce the intolerable backlog is worth a try.

  86. I’m my own example – too fast to post.

    That last paragraph should read:

    Fast, good work is best, GOOD slow work is better than bad work. Fast bad work should not be a goal. Emphasizing the metric of pendency without making the examiners do a better job is the same as setting the goal as fast bad work.

  87. “post-traumatic embitterment syndrome” = indoctrination in the reject-reject-reject equals quality mantra.

    Jason Paul DeMont – dead on.

    Fast, good work is best, fast slow work is better than bad work. Fast bad work should not be a goal. Emphasizing the metric of pendency without making the examiners do a better job is the same as setting the goal as fast bad work.

  88. “Isn’t more published applications a good thing?”
    In principle, yes, but not if you are an examiner, or have examined and suffer from post-traumatic embitterment syndrome.

  89. The offer to exchange a “worthless” application for accelerated examination in a second application isn’t a good deal for an applicant. Accelerated examination is not the same thing as a reasonable and fair examination.

    All an accelerated examination will give us is a string of meritless rejections faster. What we need is a system in which valid applications are allowed.

    One reason that the patent office is clogged up is because examiners don’t allow valid cases.

  90. A fee based accelerated examination program would undercut the current AE system that requires the support document and limits prosecution options in exchange (i.e. limited claims, no appeals of dependent claims).

    Isn’t more published applications a good thing? Unless they swamp the storage system, at least they put easily searchable information in the hands of examiners.

  91. “The program would also be much more successful if it offered a refund of the search & examination fees when applicants abandon early.”

    I think the PTO should be wary of any such credit or refund program. You identified the problem with the credit program. A refund program could result in MORE application filings (more published apps, etc.), and their associated administrative costs. If you shrink the refund $ in order to curb incentives for filing “placeholder” apps eligible for refunds, then the applicants don’t care.

Comments are closed.