Rethinking the USPTO Examiner Count System

The USPTO uses a count system as one way to measure patent examiner productivity. Examiners receive one count for sending out an initial office action and a second count when the case is “disposed.” As you might guess, a case is disposed of when it either issues as a patent or is abandoned by the applicant. However, many folks are surprised that the applicant’s filing of a request for continued examination (RCE) also counts as a disposal. As the chart shows below, this count incentive may well be driving a flood of RCE filings. The system also provides some incentive for aggressive restriction practice that forces the applicant to divide a single application into multiple applications. Notably, (1) the examiner does not receive any extra credit for examining a larger or more complex application and (2) the eventual divisional application is ordinarily routed to the original examiner who can do the search more quickly and still get the same counts.

One of the initial missions of new PTO director David Kappos is to rethink the count system and to figure out a way to ensure that examiners have “the time they need to do their job properly” and which also “incentivizes compact prosecution.” Giving a hint at the final solution, Director Kappos also suggests that the count system should encourage “the use of interviews.” The eight member task force includes four examiner union (POPA) representatives and four PTO managers – perhaps ensuring that the solution will not be a dramatic shift. [Quotes come from an internal PTO communication.]

Add your proposal below:

225 thoughts on “Rethinking the USPTO Examiner Count System

  1. “—applicant’s filing of an RCE should not count as a disposal.”
    ——————————

    The more I think about this, the more I like it. No count for an RCE…no additional count on the case until it’s allowed, appealed or abandoned.

    This would encourage the examiner to cooperate with the practioner in putting the claims into condition for allowance or appeal as soon as possible, and not gaming the system by unnecessarily forcing RCEs.

  2. Not to be too glib Max, but Patricia’s post does not add much at all to a working solution. One quick answer to the question of what incentive is there for an examiner to actually do the job they are supposed to do (and are paid to do) is something called professionalism.

    ——————-

    To be fair, PTO administration/management has seldom treated examiners as professionals. They’re treated like blue collar workers. Surely there are some who don’t act as professionals, but is this because they naturally have poor self image, or because the whole count system encourages abuse, and the management attitude toward them is self defeating?

  3. My last comment about the fees paid for large applications did not make it through the filter. Sorry, I am not going to type it over. I have too much work to do.

  4. Can’t join you, jquay, in debating the esoteric aspect of “restriction practice”. Outside my experience. Don’t understand it. All I know is that one can’t equate it with “non-unity” at the EPO.

    But your comment squares with the howls of complaint from prosecutors about Examiner “abuse” of the requirement for “restriction”.

  5. You may be right about bio, but I have an EE background and do practice in almost every other discipline. I also worked as an examiner for many years and know that system very well. I found that a **proper** restriction can be the examiner’s most powerful tool. Divide and conquer. Rejoin when fair!

  6. Not yet convinced jguay. In my firm I see EE, Chem, Bio and Mech cases. There are of course some jumbo mech cases and some slimline chem cases, but the average number of attorney hours consumed on a typical Mech case is way below what it takes on an average telecoms or bio case.

    Of course, the amount of churning, per app, is measurable, as you say. Where there’s a will, there’s a way. I think the Japanese corporations have been at it for donkeys’ years, assiduously comparing the performance of one firm of European patent attorneys with that of another.

  7. Max, professionalism can be measured to some extent by tracking the number of substantial actions per disposal. Large applications like you mentioned are rare overall, but can be dealt with in a logical fair manner. When I used to see “200″ claims, concluded there must be a restriction. Problem is, which is easily solved, the PTO bosses (SPEs!) do not allow more than one hour for a restriction. Furthermore, restriction practice is not understood by most examiners. All solvable problems!

  8. Three naive questions here, prompted by Ms Costanza. Given that some apps have 500 dense pages and 200 claims, while others have 10 pages and 20 claims on, say, a kitchen tool, must a high tech Examiner achieve the same number of disposal points per year as a kitchen tool Examiner, or is the benchmark number of points different, depending which Art Unit the Examiner is in? Apart from “professionalism” which I find a bit nebulous, is there any “harder” self-interest point that would motivate a PTO Examiner to do a thorough search and a well thought out first office action? And back to the Polk Wagner point (defer clarity as long as possible). It lies in the business interest of Applicant to obfuscate, from the get go. Is that compatible with the Costanzo self-interest in getting a perfectly focussed, bang on the button PTO search report?

  9. “It all seems so Patently O(bvious) now – MM is indeed an Examiner.”

    Exactly. Go back and read some of his posts. Every post in which he discusses examiner interviews he is critical of applicants and practitioners.

    Loved his post above. Filing a paper within one month of an improper final rejection is no big deal huh? Let’s have a show of hands from some real practitioners as to how many have had that strategy work out for them.

  10. “I envision a select group from each art or classification THAT KNOWS THE ART would be the ones performing the initial evaluation and setting the complexity – NOT some clueless bureaucrat.”

    Can we pick these experts up at walmart or do they have to be home grown?

    “Any claim that changes so much as to change the scope of complexity of the application as a whole by definition has added subject matter”

    LOL WUT? I know you’re an attorney who practices, stop talking out ur arse.

    Cases can come in with 180 page specs, and 2 claims. What’s the call? 15 hrs, or 50 hours? And, right in the middle of prosecution, the claims can be amended to have 2000 claims. What’s the call? 15 hrs, or 50 hrs? If 15 the first time, does it stay 15 for the next OA or RCE? The point is valid NAL. And if you want your suggestion to be taken srsly you’ll need to address it, not dismiss it as not even mattering. Otherwise your system is just as broken as the current one. More so in some cases.

  11. It all seems so Patently O(bvious) now – MM is indeed an Examiner. Explains why he has so much time to post on the board (good job, MM – you must really be doing a thorough search and preparing a thorough Office Action when you spend 7 hours a day posting on the board).

    To think some of the other posters may have taken advice from someone who has never prosecuted an application, never written an application, never amended a claim . . .

    Curious is also correct. Back until the mid-2000s, Examiners knew how to figure out what the invention was (not just what the claimed invention was). As a result, proposing something during an interview actually resulted in agreement that the amended claims would be allowable. Examiner 6 and MM can now only think “well, I only word searched the as-filed claim, so I can offer no opinion on anything during the interview.” Sad.

  12. —applicant’s filing of an RCE should not count as a disposal.

    — double the number of counts for first OA’s on the merits

    ———————-

    I like these suggestions. IMO, examiners are often abusing their discretion in failing to enter AF amendments, in quest of the Blue Light Special, i.e. disposal of the pending case and an easy first count in the RCE. Prosecution would be more compact if we could get at least some AF amendments entered and proceed to appeal at that point.

    The bigger problem is examiners stretching the meaning and legal effect of the prior art disclosure (at least in my practice). Misconstruing the meanings and teachings of the prior art in order to allegedly meet the claim limitations. Issuing “anticipation” rejections which are, at best, obviousness rejections. Failing to adequately respond to all traversals.

    These problems will be overcome only by having the supervisory examiner actually READ and UNDERSTAND the office actions they’re signing for junior examiners.

    There’s also a lot of petty crap going on. Today I picked up an OA in which the Examiner indicated he refused to consider a US reference, since the IDS had the assignee listed rather than the first named inventor. Proper? Perhaps. Ridiculous? Absolutely.

  13. Not to be too glib Max, but Patricia’s post does not add much at all to a working solution. One quick answer to the question of what incentive is there for an examiner to actually do the job they are supposed to do (and are paid to do) is something called professionalism.

    More to her point, effort IS paid for. Further, I know of no practicioner that encourages office actions NOT to be based on serious consideration, in fact, if Patricia and yourself pay attention, you will see that most practicioners’ biggest complaint is that office actions lack serious consideration. The issue under discussion is HOW to recognize that profesionalism. The current way (point system) clearly does not work here in the states.

  14. Curious,

    I find it interesting that your post at Sep 02, 6:26 PM simply suggests changing the count values. While very easy to implement, this is just as easy to abuse. I have seen way too many FOAM that do not even come close to recognizing what is in the application and believe that the FOAM was completed only by a key word search of terms plucked from the claims without any reading of the rest of the specification, completely ignoring the guidance at MPEP 704.01 Search,

    Very first sentence: “After reading the specification and claims, the examiner searches the prior art.” Yeah, examiners are actually supposed to read the specification, and although this sounds like a no-brainer, I have seen several posts on the blogs from examiners who claim that they simply cannot do that.

    You do seem to recognize the abuse of the system at the RCE level, but your suggestion only shifts that abuse and largely leaves the decrepit system in place. Of course, posters such as don’t bother, BRS and jguay are correct – the problem is a massive system wide failure. Tweaking counts simply won’t do.

    You also seem to take reservation with my starting suggestion at Sep 02, 3:07 PM. I think that you are not quite getting out of the current paradigm. Try re-reading my post without shoehorning it into your view of tweaking the system. I am calling for a radical overhaul. I will grant you that my stating point was not fully fleshed out. Thus, I would add that the initial review process would need to be staffed appropriately (and if the classification process step is f’ed up, then that step would need to be overhauled as well). I envision a select group from each art or classification THAT KNOWS THE ART would be the ones performing the initial evaluation and setting the complexity – NOT some clueless bureaucrat.

    As to your comment about claims changing – who cares? Any claim that changes so much as to change the scope of complexity of the application as a whole by definition has added subject matter. Perhaps you are viewing the complexity rating much like some examiners who only search on claim key terms without actually reading the entire application. In such case, you are merely repeating their mistake.

    Plurality mentioned that applications currently are somewhat rated by complexity based on art unit or classification. This lumped complexity is NOT what I suggested. I am talking about giving each and every application its own due process and not lumping applications into any mass generic (even generic at a classification level) complexity level. As hinted at by the Supremes, EACH application must be judged on the merits of its own accord.

  15. Why couldn’t somebody way upthread have written something as manifestly sane and sensible as that little comment from Ms Costanzo? Where’s the snag, posters?

  16. Effort should be paid for and extra effort should be rewarded. It is in a patent practitioners self-interest (and the Client’s) to encourage office actions based on serious consideration of the specification and related search results. Office Actions should be given the respect (in terms of time, effort, and compensation) that they deserve. What incentive is there for an Examiner to conduct a thorough search and draft a well-thought out Action if his or her work and time is not recognized?

  17. “In the rare instance when I’ve received an improper final, I’ve simply gotten on the phone and informed the Examiner of the error. The Examiner then tells me to file a paper noting the error and requesting withdrawal of finality. This should be done within one month of receipt of the OA. Not that big of a deal.”

    You’re not fooling anybody, Examiner Mooney

  18. “Back in the day (up till around 2000) telephone interviews were frequent, cooperative, and often productive”

    I agree, but maybe around 2004. In the past five years, in about a quarter of the interviews where I reached agreement that one or more claims with small amendments were allowable over the cited art, the examiner reneged on the agreement in the next action. From the early 1980′s until 2004 that never happened to me.

  19. “Crappy examinations encourage RCEs. For e.g., recently a U.S. Examiner sent me a Final and stated that there was new material (NOT: he just didn’t read my remarks where I mentioned exactly where the new little box in the Fig was mentioned in the original text), and that the claims had not been amended (the claims were completely overhauled).”

    In the rare instance when I’ve received an improper final, I’ve simply gotten on the phone and informed the Examiner of the error. The Examiner then tells me to file a paper noting the error and requesting withdrawal of finality. This should be done within one month of receipt of the OA. Not that big of a deal.

  20. Malcom: Crappy examinations encourage RCEs. For e.g., recently a U.S. Examiner sent me a Final and stated that there was new material (NOT: he just didn’t read my remarks where I mentioned exactly where the new little box in the Fig was mentioned in the original text), and that the claims had not been amended (the claims were completely overhauled). The jerk just didn’t bother, cause he figured he’d get away with it. In retrospect I wish I had appealed.

  21. 2 counts for a first OA and 1/2 count for an RCE would go a long way to fixing things. Very easy to implement.

    Kappos should try it for a couple of years.

  22. “Don’t bother may have a bit of a point, but only a narrow and probably extremely limited one.”

    LOL

    I’m pretty sure I hit the nail on the head.

    “Not all spe’s even go for those awards.”

    ROFLMAO

    And if you believe that, I have some prime beach front property in Nebraska I’d like to sell you.

    “I’m pretty sure mine isn’t getting it lol.”

    Gee, I wonder why.

    “And I know several others that DEFINITELY aren’t getting it.”

    And I know several, actually many, that are getting it and DEFINITELY should not be.

  23. Back in the day (up till around 2000) telephone interviews were frequent, cooperative, and often productive. Nowdays I find it harder to get an interview, there is often a language barrier that prevents real understanding, and even when you think you understand one another and have made progress in the case, the examiner often changes his mind and the next OA looks as if no interview had taken place. I don’t necessarily fault the individual examiner, but rather the hiring policies and the environment that he has to work in.

  24. One might also consider that if the application were properly drafted, the examiner (or, Joe Ordinary Artisan, for that matter) would understand the invention right off the bat. Or at least they’d be more likely to. Cryptic claims generally make for a low-quality examination.

  25. “Sometimes there really should be a second non-final action. Sometimes the Examiner doesn’t understand the invention or the prior art until the first office action response explains them to him. Then he can go find some art that is relevant and make good rejections.”

    I agree.

  26. “But we also believe in patent examination that follows the rules, i.e., what Title 37 of the CFR requires, not simply what an Examiner subjectively believes without following those rules.”

    “Wah wah wah, hold my hand please! Director Kappos make him hold my hand, you said he’d hold my hand!” In all srsness EG, I realize that this can get a little bad, but it isn’t something that should be causing you srs distress. Call the examiner and ask him to explain how the limitations fit. If he can’t, submit your reply. Takes like 15 minutes. I know it is tedious, but then again, responding to nonresponsive nonsense from attorneys is too. Such is our lot in life. Stop the qq or gain power and rule with an iron fist.

    Noise, everyone likes the whole complexity scheme to provide time. The issue is that it takes time (and expertise which is not a small issue) to properly assign such a thing. And this doesn’t even touch on the issues surrounding how to assign complexity scores. I’ve had 2 line claims be more complex than 2 page long claims and they took more time to examine too. A lot more. Under your system of rating however, it is very likely that the 2 page long claim would recieve a higher complexity mark, especially if judged by someone lacking expertise.

    I’m interested to hear what happens when the claims are amended such that they don’t even resemble the originally submitted claims.

    As to you nitwits who think that putting negative counts on anything would work out I have only one thing to say: Come join us in the real world. Making examiners quit their jobs is not the solution you mo rons. Je sus, how you can even suggest that nonsense is beyond me. I suppose that since you’re anon you feel like everything is fair game. If you suggested something like that irl people would just look away from you and pretend they didn’t know you while asking for the next suggestion. Just because you don’t like examiners reopening doesn’t mean that penalizing them for it will solve anything.

    What if we penalize attorneys for submitting an unpersuasive response? How about that? 3 or 4 every quarter and you’re disbarred. Counts taken away and you’re fired at the office, practically the same thing. Penalizing attorneys for sending in unpersuasive responses isn’t going to solve the problem of them sending in unpersuasive responses. In many instances because they aren’t bright enough to tell that their argument will be unpersuasive. In others their clients will demand they do it. The same goes for examiners. And the spe’s demand that examiners do it in some circumstances.

    I can’t believe I’m taking time to even address this “suggestion”. Giving it that name gives it too much credit. More like “thinly disguised qq”.

    Don’t bother may have a bit of a point, but only a narrow and probably extremely limited one. Not all spe’s even go for those awards. I’m pretty sure mine isn’t getting it lol. And I know several others that DEFINITELY aren’t getting it.

  27. don’t bother, your posting is excellent.

    ” … SPE’s want to achieve their “fair share” goal, which requires that each examiner in the AU do, on average, 110+% of their required production. So the SPE tells the junior examiner to “just make it final, maybe they’ll file an RCE” thinking that the applicant will file the RCE in the hopes of softening up the examiner, instead of filing an appeal, which is costly and time consuming. If the applicant appeals, i.e. calls the examiner’s bluff as somebody correctly noted above, the SPE tells the junior to “just re-open and send out something even worse. And no matter what the response, just make it final. Maybe they’ll file a second RCE.”

    The rules of the “game” need to be changed.

  28. TJ said
    “Sometimes there really should be a second non-final action.”

    Exactly. Why would you want to give an examiner more incentive not to find your arguments persuasive in a close case?

  29. I told you SPEs are the root of all that is evil at the PTO. These positions must be abolished and the GS-15 sent back to examining. Examiners are good people, they just have had such lousy leadership.

  30. “What we are talking about is when an OA is withdrawn after an Appeal or after a Pre-Appeal conference, i.e. someone over the Examiner’s pay grade has explained to them how their rejection is crap.”

    That should be explained long before an appeal, or even a pre-appeal. But it is not. The reason it is not is because SPE’s want to achieve their “fair share” goal, which requires that each examiner in the AU do, on average, 110+% of their required production. So the SPE tells the junior examiner to “just make it final, maybe they’ll file an RCE” thinking that the applicant will file the RCE in the hopes of softening up the examiner, instead of filing an appeal, which is costly and time consuming. If the applicant appeals, i.e. calls the examiner’s bluff as somebody correctly noted above, the SPE tells the junior to “just re-open and send out something even worse. And no matter what the response, just make it final. Maybe they’ll file a second RCE.”

    But examiners never force applicants to file RCE’s, amirite?

  31. “I am opposed to negative counts. If the examiner is supposed to do something he shouldn’t be discouraged from doing it by being awarded a negative count.”

    You won’t be discouraged from “doing it,” because it isn’t your decision. What we are talking about is when an OA is withdrawn after an Appeal or after a Pre-Appeal conference, i.e. someone over the Examiner’s pay grade has explained to them how their rejection is crap.

    The negative count system WILL discourage Examiner’s from standing behind crappy rejections.

  32. I applaud Mr. Kappos’ initiative. However, since examiners are still able to produce enough to earn production bonuses, the count system is not the sole fault. If this has a chance at working, the Union contract and bonus system needs to be reworked from the ground up.

  33. My ideas will work, and they reduce complexity as well (except for boosting classification). I am certain. No need to mess with counts, except for adding those delicious negative counts for reopening (those were not my idea).

  34. “Each application should have an initial assessment that details the level of complexity and assigns an expectation score independent of examiner.”

    Sounds like an entire new layer of bureaucracy and examiners spending time trying to get the assessment changed instead of spending time examining.

    And then what happens if the claims are amended during prosecution to significantly change the level of complexity?

  35. According to the examiner who posted above, they already have different quotas for different art units — obviously weighting the quota credit by complexity. A simple fix (and the simple fixes are usually preferred) would be to weight the credit (counts) by the number of claims in the disposition. This way, large cases would automatically be given more time and more credit.

  36. I’m not really sold on the compact prosecution idea. Sometimes there really should be a second non-final action. Sometimes the Examiner doesn’t understand the invention or the prior art until the first office action response explains them to him. Then he can go find some art that is relevant and make good rejections.

    Certainly Examiners ought to be given more credit for more complex cases. Number of claims would be a rough estimate of that.

  37. Noise: In some sense, the Office already judges applications based on their complexity. Different art units get different amounts of time to examine their cases, based on the complexity of their art. (It actually goes by classification, and in some art units where they examine more than one class, the number of hours per case can be different for each case based on where it’s classed.)

    However, the Office doesn’t spend the money to classify applications correctly so that the right art units always get them. Classification is done by an outside contractor; people who are not nearly as familiar with the art as the examiners get no more than a few minutes per app to decide where they go, and examiners are left to clean up the mess when they get it wrong. And actually transferring a case to the proper art unit is comparable to being on the receiving end of medieval dentistry.

    Number of claims, length of spec, and IDS references cited could be used as proxies for complexity, but they’re probably not as accurate. It would be nice if such factors were taken into consideration, though.

  38. “I’m talking about you and your corporate masters, you big crybaby. Grow up.”

    LOL

    You’re just swinging and missing.

    Seriously, Examiner Mooney, do you have any proposals for changing the examiner production system? How’s about a count for an interview? But only if you transcribe the whole thing.

  39. “I am opposed to negative counts. If the examiner is supposed to do something he shouldn’t be discouraged from doing it by being awarded a negative count.”

    The Examiner should be discouraged from going final on an inferior rejection. Reopening after an Appeal has been filed is a BIG waste of time for both parties and it is a waste of money for Applicants. These SHOULD be discouraged. Otherwise, the Examiner can reopen without impunity or negative consequence.

    If Applicants screw up and cannot get claims that are allowable within the first go around of prosecution, they have to pay up in terms of paying for an RCE.

    The whole goal is to encourage good actions and discourage bad actions.

  40. “I’m talking about you and your corporate masters, you big crybaby. Grow up.”

    Do you have anything relevant to say about the count system or you going to persist in your hourly mental mastur bations?

  41. ” It is particularly annoying when examiners nitpick my secondary arguments while ignoring my main points. So often in those cases, they later drop their rejections in response to an Appeal Brief and reject again with new art.”

    I agree, Nate.

  42. I am opposed to negative counts. If the examiner is supposed to do something he shouldn’t be discouraged from doing it by being awarded a negative count.

  43. Today’s Troll: “Are you talking about me, or yourself?”

    I’m talking about you and your corporate masters, you big crybaby. Grow up.

  44. There should absolutely be negative counts for reopening after Notice of Appeal. In this scenario, and Examiner has failed to do their job, often times they have refused to back down from their crappy job during a subsequent interview, and then the Applicant is forced to pay $540 dollars to get the crappy job withdrawn.

    As it stands, the PTO keeps the $540 even if the OA is withdrawn before it goes to the board, and the Examiner suffers no detriment besides having to issue an additional OA. This set-up clearly encourages the “call my bluff” tactic: an Examiner can take an unreasonable position and bet on the fact that Applicant does not want to spend the time (2 years on average) and the money appealing.

  45. A strategy based on interviews will likely fail.

    Coming from IBM, Kappos should know that many, if not most, large corporate entities which have commoditized their patent practices won’t pay for interviews. Not surprisingly, their attorneys won’t conduct them. I routinely tell examiners who call me to send an Office Action because the client won’t pay for an interview. This isn’t pro bono work.

    For the life of me, I don’t know why people think Kappos will be some sort of savior. He spent his entire career at IBM. His only perspective on patent law is: IF we throw 3000-5000 pieces of crap at the PTO every year we can get 1000-3000 patents to issue as a matter of statistics. Then we’ll use the issued patents to extort licensing revenue from tech companies which can’t afford to defend a lawsuit against IBM. This is a beautiful system if you’re IBM. Why would Kappos believe it needs to change?

    Further, it appears that the last patent that Kappos may have written (6,061,698) was filed in 1997 and issued in 2000. Kappos hasn’t practiced in front of the Patent Office in ten years. As far as PTO practice goes, he’s clueless, and his proposal to conduct more interviews demonstrates just how seriously clueless he is.

  46. I second Mr. Boundy’s comments. It is particularly annoying when examiners nitpick my secondary arguments while ignoring my main points. So often in those cases, they later drop their rejections in response to an Appeal Brief and reject again with new art.

  47. The SPEs at the PTO are a mixed batch. Some can introduce a voice of reason at an interview, or be sure that the junior examiner is following the rules and paying heed to all limitations. Others are pure obstruction; after careful negotiation between applicant and junior, the all-knowing SPE glances at the claims and red stamps “claims too short”.

    One thing I’d like to see change at the PTO — get rid of “specialists”. Petitions specialists, re-exam specialists, Rule 131 specialists, even “prior art” specialists (those who specialize in determining what is eligible art!). They add beuracratic friction because examiners are not skilled in some important issues. One last thing, love the idea of a negative count for re-opening prosecution after an appeal is filed.

  48. NAL, true quality is discouraged at the PTO. I was in a PAP review and my SPE told me to start cutting corners so I could increase my “productivity.” I was “producing” over 110%, consistently! I chose to do only 110% so that I could send more time per case than those doing a greater amount of production.

    I basically told my SPE to stuff it by quitting and taking two other primaries with me. I believe all of us received the Bronze Medal (don’t laugh) after leaving the PTO, so we at least were considered valuable to them.

    There is a cultural sickness over there. I discuss it with my PTO buddies but very very few of them really understand what’s what out here.

  49. Can’t speak for other art areas, but in software, part of the problem is a proliferation of electrical engineers drafting and prosecuting software applications. Hats off to those EEs who busted tail in undergrad, but they’re often in over their heads and don’t know the baseline current/past state of the art. Another problem is prosecutors writing impossibly vague and overbroad claims. Software claims need some concrete context to make any sense… too many apps written with noun/adjective that have no accepted meaning in the field.

  50. Yes but…….

    One would have thought it (based on experience everywhere else in the world) to be in the self-interest of an Applicant itself to scour the cited prior art documents, just to make sure that the claims don’t go to issue sitting ducks for shoo-in validity attacks after issue.

    But, silly me, I was forgetting the bat-suit, the Presumption of Validity, that protects issued claims against all comers. No wonder, EG, you shut your eyes to the prior art, as such, and address ONLY what the Exr recites in extenso, and NOTHING else. Me, I think a legal system that encourages blind eye behaviour, by Applicants and their representatives, is a silly system. Courts, WAKE UP. You can do something about it, to restore sanity.

  51. Beware the law of unintended consequences and unstated assumptions.

    Dennis begins this thread with the observation that the count system is used by the USPTO as one way to measure patent examiner productivity. Many pro’s, con’s and non-sequitors are posted to the thread and we have heard from examiners, practicioners, and even non-US system professionals.

    Director Kappos has put forth a call to rethink the count system. One assumption running through this thread is that “fault” must be placed, at least in part on applicants. However, implicit in the Kappos’ statements is the notion that EXAMINERS currently are NOT doing their jobs properly. Combine this with the recent statement that quality does NOT equal reject, reject, reject and one would hope that the examiner corp can read the not-so-subtle message. Looking at the actual question and its immediate premise should eliminate comments directed at applicants. Applicants simply should not be the focus when it comes to examiner productivity – at least, not the primary focus.

    Any system should be robust enough to deal with a variety of applicants, from the not-sophisticated pro-se, to the multi-national, ultra-sophisticated conglomerate-backed inventor. One assumption that should be stated is that the system will operate under the same philosophy for any art unit and any emerging discipline.

    What other assumptions are lurking?

    Rethinking systems is always a chance to examine base assumptions and guiding principles. Many of the posts have concerned themselves with allocations of points for various actions. Human nature, being what it is, will almost guarantee that any system of allocating points for steps along the way will only result in the weakest parts of the system being exploited. Currently, that appears to be the RCE step. Numerous posts concerning the RCE gravy train point out this system weakness. Many of the posts here by practicioners are quick to point out that other endemic problems in the office are indicators of the lack of quality examination. Ron Katznelson points out in exquisite detail the mushrooming Appeals track as a clear sign that examination quality is simply not there. Remember, Kappos’ call implicitly states that the examiners are failing at their job. This is a given and must be accepted as a premise before the system can be fixed, no matter how painful it may be to certain vocal posters. The patient must realize that he is sick before he will take the medicine.

    Regarding sub-process step optimization, completion, then appears to be a primary metric. But not completion in a vacuum, nor using a homogenized, mythical production unit.

    How then do you measure productivity? Begin by defining what productivity is. We can eliminate what productivity is not. Productivity is not reject, reject, reject. Productivity is not counts per bi-week (gasp! – being busy is not the same as being productive). As noted on the just_an_examiner blog, Good work at a fast pace is optimal, and good work at a slow pace is much, much better than bad work at a fast pace. “Counts” without reference to quality of counts are simply a ridiculous invitation to churning crap.

    Productivity has to do with achieving the desired end result efficiently.

    Productivity then must realize that at the start, not all applications are the same, and the office should stop treating them like they are. Each application should have an initial assessment that details the level of complexity and assigns an expectation score independent of examiner. Examiners, per their grade level (assuming that capability is truly tied to grade level), then can apply themselves against set expectations.

    Some may point out that such a system would be in danger of cherry-picking, but honestly, who can say that cherry picking doesn’t occur in the current method? At least with applications provided a complexity score, each examiner at the end of the review period can be explicitly scored. Sheer numbers alone would have less influence since completing X1 easy cases and Y2 hard cases will point out who is really applying themselves.

    In addition, by realizing that difficult cases necessarily take longer, examiners will no longer be forced to cheat the system in order to generate the correct “generic widget per period” number.

    A second concept concerns implementation. Perhaps rethinking a rush to set in place metrics might be tempered with a period to discover the actual capability of the system. Realizing the bias from my manufacturing background, it seems obvious to me that the quality expectation must be tempered with the actual quality capability. One does not expect the same level of quality output from two vastly different machines, yet as pointed out, quality metrics haven’t changed since the 70’s and the Office is a vastly different machine. Setting a productivity goal without recognizing the system capability seems like a certain call for disaster. Why not set a system and let it run for a year to see just what the Office is actually capable of before setting a production level goal thus not setting goals that cannot be achieved?

  52. “You guys love those passages huh? We have to spoon feed you every passage and every line so you can reply with ohhhh it’s not there? Really, aren’t you responsible for the prior art against you?”

    Examiners?

    The passage quoted above speaks volumnes about your misguided view (shared by some but not all Examiners I deal with) on how patent examination should work. First, even your MPEP makes clear that the burden is on the Examiner to prove anticipation under 35 USC 102 or obviousness under 35 USC 103. Dave and I also aren’t looking to be “spoon-fed” but to get “factual” justification for why the Examiner believes the reference is relevant to the claimed invention. That’s what 37 CFR 1.104(c)(2) requires Examiners to do, and is consistent with 35 USC 102 which saya “a patent shall be granted unless.” Also, the quoted passage above suggests that it’s the oblgation of the applicant to ferret out the “prior art” relevant to the claimed invention. The Federal Circuit has made clear that’s not true, only to cite “material information” which the applicant is aware of.

    If the Examiner factually (and correctly) points out where the reference shows a feature of the claimed invention, I won’t dispute that. But simply citing a long passage in the reference without telling the applicant what corresponds to what in that passage to the features of the claimed invention won’t cut it. Also telling the applicant that a feature is “well known in the art” without pointing to a reference that shows its well known doesn’t help either (if it’s so “well known” it shouldn’t be that hard to find a reference that shows it). In particular, it’s important to know what the reference says about that feature so you have the proper context for whether it’s appropriate to combine the references under 35 USC 103.

    Dave’s and my point is that rejections are supposed to based on factual support, not simply conjecture or opinion about what the references might or might not say. Believe me, Dave and I aren’t going to argue against a rejection if we don’t have the factual basis to legally support that argument. But we also believe in patent examination that follows the rules, i.e., what Title 37 of the CFR requires, not simply what an Examiner subjectively believes without following those rules.

  53. Say what, the majority of examiners used to produce over 110%. See Feb-Mar POPA newsletter. I had some other links (one was an IG report of 2004), but their URLs were very long and I believe caused the filter to reject my earlier post. If you have evidence to the contrary, please provide.

  54. Thanks Lurker. Factor in that American patent attorneys are attorneys at law first, and patent practitioners second. And they are English common law attorneys who imbibe with their mother’s milk the lawyer’s imperative, that what is not denied is admitted. So, they deny everything.

    When I saw the “disputable” comment, I thought (despairingly) just as you did. Reminded me of debate with my sibling when I was 6 years old. “Yes, you did. No, I didn’t. Yes you did. Didn’t. Did” …. ad infinitum. Is that childish, or what?

    To qualify as a patent attorney in the UK you have to pass exams which begin with a Headnote. This Headnote warns candidates that no marks are given for the answer. Marks can only accrue from competent reasoning. You, as an EPO Examiner would approve of that I’m sure.

  55. “The funny thing is that most of the attorneys I know are fairly thick-skinned adults who don’t need to engage in the name-calling and endless sockpuppetry that seem to be the sole means by which you communicate.”

    Are you talking about me, or yourself? I don’t recall calling Mr. Niro and/or the attorneys suing the former Patent Troll Tracker sleazebags. I seem to recall that it was you who did that.

    Sockpuppetry? And you’re real name is what, Malcolm Mooney?

    I guess you’re not an attorney as you’re not very thick skinned. In fact, you’re pretty thin skinned. You also engage in endless name calling.

    I knew you were an examiner. You just keep confirming it with every post.

  56. My apologies if one or more of the below ideas have been suggested before. (The above thread is quite long, and I confess to not having read all of the entries.)

    (A) Has any thought been given to the idea of allotting 1 count to each new reason provided for the rejection of (or objection to) each grouping of claims in an Office action?

    For example, in a first office action: + 1 count for rejection of a first grouping (in this example, including an independent claim) based on a first reason; and + 1 count for rejection of a second grouping (of dependent claims, in this example) based on another reason. In a second office action, for example, the Examiner might also go on to receive + 1 count for a subsequent rejection of said first grouping based on a second reason (e.g., a different combination of references).

    (B) Supplement (A), above, with an additionally allotted 1 count for each independent claim found to be allowable, and 1 count for each finding that a dependent claim (not stemming from any allowable independent claims) would be allowable if rewritten in independent form.

    For example, in a first office action: + 1 count for finding one of the independent claims to be allowable, and + 2 counts for finding that two different dependent claims (not stemming from any allowable independent claims) would be allowable if rewritten in independent form.

    Just thinking out loud over here, in the interests of contribution, community, collaboration and improvement.

    Disregard or tweak, if and as desired.

  57. To SNL nostalgia:

    I guess you will further participe to the thread, even if your pseudonym appears to be new…

    As an EPO examiner I can confirm this remark of Max: one refusal in hundred cases sounds like the average from my desk.
    The only exception are some colleagues I know who have to deals with business methods (it lets one wonders about the counsel they get, but some applicants keep trying here, apparently).

    Do not forget that the most hopeless cases are mostly abandoned before we get to write a refusal…

    To the unsatisfied EPO user with the summary ESR: I blame the count system and some accomplice director (our SPEs…) for not enforcing the quality. It happens here too.
    You will be the only one to know if it was because the claims were so broad, you got an exasperated reaction of the examiner. It happens too.

    And by the way: what al pook said. A superb illustration of it in this thread:
    “BTW, this is hardly an indisputable proposition.
    I dispute Ah Pook’s proposition.
    There, I just proved that it’s disputable.”

    Ladies and Gentleman, the future of our patent procedure.

  58. When I wrote how few of mine get refused at the EPO, it was to demonstrate that awarding 2 points for a refusal but only 1 for an allowance will not automatically have the dire consequences that some readers think it will have. Give the professional Examiners a bit of credit for doing their job honorably, and it will pay. What you give out in this life comes back at you, sooner or later.

    Another reason for mentioning it was to throw light on the barmy “continuing applications” shambles, unique to the US PTO.

    Boasting of my own success was not the aim. Other European practitioners get “better” stats than I do, perhaps because they work for Asian Applicants.

  59. “Heckey’s, how can you justify needing more time when most of the corps is performing well over 110%? Bonus time, for almost everyone, every year!”

    Most of the examining corps is not performing over 110%. Please point out where or what states that more than 50% of examiners are performing over 110%. It appears to me that you made it up to fit your scenario.

  60. Quotas? Maybe we should think about a “critical mass” or “discrete and insular minorities” to be examiners – this could truly save the system, look what is has already half-done for the presidency!

  61. “How many of my EPO cases get refused? Maybe one in a hundred. Certainly less than one in fifty. It’s a rare event.”

    hahahahahahahahahahahahahahahahahahahahahahahaha

    Not only is the EPO system an example of perfection for all to see, Max always drafts perfect claims.

    Perhaps we should rename Max as Tommy Flanagan

    yeahhh, that’s the ticket!

  62. Abolish all SPE positions too. With actions per disposal tracking, they would not be needed (as if they ever were ha ha).

    Primaries should equally share mentoring of juniors

  63. “4) Making sure that an examiner isn’t prevented from correcting a mistake when a mistake has been made so as to prevent bad claims from being issued.”

    This kind of “initiative” led to the second pair of eyes fiasco. A final rejection should be considered a serious thing, rather than the usual order of the day. Just like giving a 112 first rejection USED to be.

    If an examiner does his/her job correctly, there will be a statistical error rate that should be acceptable. A low actions per disposal average will rule whether the examiner’s work is acceptable, along with random review of 5% of allowances and action taking. It is simple! But, to make it work right there, but people can’t be lazy!

  64. Suzannah, I can see it would encourage Exrs to allow claims. But there’s no work involved, in allowing a claim, so why does it get points? Isn’t the real work in holding fast to objections, until the claims are fit to issue (with a Presumption of Validity). Isn’t that the real work that the employer, the taxpayer, expects of a conscientious Examiner? If so, why in your scheme does it get no points?

    In the EPO, it’s one point for an allowance and two for a refusal. That is a points system that is to some extent in synch with the reality of the workplace.

    How many of my EPO cases get refused? Maybe one in a hundred. Certainly less than one in fifty. It’s a rare event.

  65. “-1.0 for being reversed on Appeal (if rejections were poor quality)

    Otherwise, Examiners will push hard for everything (good and crap) to just go to the Board, which is already working at a scary pace.”

    Not a bad idea. But I think that you don’t give the Examiner the 1.5 count for the subsequent allowance would also work. However, if the Examiner does choose to reopen after Appeal, I think a -1.5 count is in order.

    “How about incrementing RCE fees each round of prosecution, or each time claims are amended? How about also imposing a fee each time new, non-restricted claims claim priority to a particular application? Obviously do not likewise increase counts/production as prosecution continues”
    Increasing RCE fees incrementally is not a bad idea. However, I still think there is a need to increase the fees for the 1st RCE. There needs to be an incentive for applicants to close prosecution early and pay for the additional examination time that needs to be built into the UPSTO budget.

    “No, it should be -10 counts for reopening after an appeal brief is filed (unless allowed)!”
    Too draconian. Examiner’s would never reopen. Everybody makes mistakes. If applicants make a mistake in claiming, they pay for it in extra fees to their attorney and extra fees if they are forced to file an RCE. Similarly, if the Examiner makes a mistake, they should also have to pay.

    However, since everybody makes mistakes, the cost of that mistake cannot be so great as to prevent that mistake from being subsequently corrected. There are multiple goals attempted to be accomplished:
    1) Exahaustive searching and examination prior to the first office action
    2) Quick resolution of prosecution
    3) Pain on whatever side that extends prosecution because of their own failure (either to find the best prior art or present the best claims upfront)
    4) Making sure that an examiner isn’t prevented from correcting a mistake when a mistake has been made so as to prevent bad claims from being issued.

  66. 2 counts for Notice of Allowance
    0 count for RCE if after interview
    1 count for interview if results in allowance

    Will encourage examiners to negotiate agreeable allowable claims.

  67. Instead of “Rethinking the USPTO Examiner Count System”

    How about “Rethinking the USPTO Examiner System”.

    Why stuggle to get the delay to FOAM to 10 months when we should be should be thinking about how to get it down to 10 minutes.

  68. Last one because I have work to do:

    “The kicker is that I would include negative counts
    -0.5 for any additional non-final office action that isn’t either a 1st OA or a OA after RCE
    -0.5 for reopening prosecution after Appeal on a non-final Office Action
    -1.0 for reopening prosecution after Appeal on a final Office Action”

    No, it should be -10 counts for reopening after an appeal brief is filed (unless allowed)!

    I would give the examiner an out and give them the option of paying the client’s bill for preparing the brief and paying the government fees.

  69. “I think that most people can agree that with regard to the count system, more claims should result in more time being allotted to an Examiner. Applicants pay for the extra claims, so they sho …”

    Try giving the examiners more time to properly restrict! This is the problem. Otherwise, i.e., if the large claim set is not restrictable, the examination is not a burden because the claims recite redundant information (for examination purposes).

    The extra claims fees should easily cover restrictions. But, the corp only provides an hour for restrictions (and sometimes the entire application must be reviewed for proper restriction).

    Nothing new here!

  70. Heckey’s: “Examiners want more time per case. No, it’s not just because we are a bunch of lazy bureaucrats, but because at least some of us care about doing a quality job and really want to search the art thoroughly so we can feel confident that something is novel and nonobvious and enabled and described when it issues … So how to both fix the count system to provide incentives for compact prosecution and work on the backlog?”

    Heckey’s, how can you justify needing more time when most of the corps is performing well over 110%? Bonus time, for almost everyone, every year!

    If you want more time, examiners must be honest and stand up to SPE manipulation. SPEs and their bosses are the problem, as well as the examining professionals who take their bull. Tell them to stuff it!

    More about “more time”: theoretically, if the classification system were kept current, there would be a balance or “correction” of less time needed per case along with the constant increase in number of potential references. But, the PTO abandoned classification long ago. Self inflicted!! Fix that too!!

    Keep the cont system, but everyone has to be honest for it to work

  71. ALSO, I AM TIRED OF THIS “EXAMINERS FORCE RCE’S” GARBAGE. IF YOU ARE PROPERLY UNDER FINAL REJECTION AND YOU FLOAT/SUBMIT/OR TALK NEW LANGUAGE YOU SHOULD FILE AN RCE. This is a joke. Examiner’s are expected to update their searches and look into any new limitations etc. Unless you have an allowable dependent claim and you incorporate it, then you have no gripe. I guess you think we should just spend time on the phone to come up with some language….search some more so you don’t have to file an RCE. If you have arguments about the final then raise them, otherwise shut up.

  72. Dave and EG,

    You guys love those passages huh? We have to spoon feed you every passage and every line so you can reply with ohhhh it’s not there? Really, aren’t you responsible for the prior art against you? Not just what the Examiner points out? Isn’t this ExParte like the good Director points out? Yeah, that 124 page reference I just used against you needs to have specific references so you can just try to pick it apart and act like you aren’t responsible for the ENTIRE reference.

  73. Here’s an explanation of the count system for anyone not familiar with it.

    Every round of examination is allotted two counts: a “new” count, and a “disposal” count. A request for RCE ends the current round, and begins the next round. An examiner gets a “new” count when he or she does a first non-final office action (per round) or a first-action allowance. An examiner gets a “disposal” count for an allowance, abandonment, examiner’s answer, an RCE request, and I think a couple of other relatively rare things. An examiner gets no counts for finals, 2nd or subsequent non-finals (per round), advisory actions, or other tasks (312s, misc. communications, etc.).

    If the sequence of the case is NF, FINAL, ADV, RCE, NF, FINAL, ALLOW, the examiner gets a “new” count for each of the two NFs, and gets a “disposal” for each of the RCE request and the allowance. The examiner gets no counts for any of the other actions. If the case sequence is NF, 2ND NF, FINAL, ADV, ALLOW, the examiner got counts for the first NF and the allowance. For a first action allowance, the examiner gets both a “new” and a “disposal” count, so the examiner gets 2 counts. This also holds true after RCE. That is, for the sequence NF, FINAL, RCE, ALLOW, the examiner got a new count for the NF, a disposal for the RCE, and both new and disposal counts for the allowance.

    Based on the art unit and the examiner’s GS level (GS-12 is the middle examining level; most examiners start at GS-7, GS-13 is partial signatory authority, GS-14 is a primary, and GS-15 is a SPE), each examiner has to do a certain number of counts each bi-week. The number of counts is based on the GS-12 expectancy, which is different for each art unit. If a GS-12 in a particular art unit is expected to complete a round of examination in 25 hours, then a GS-12 in that art unit is expected to turn in a count for every 12.5 hours that they work. Requirements for examiners at other grade levels are determined by multiplying that by particular factors (for example if a GS-12 has to do a count every 12.5 hours, then a GS-7 in that art unit has to do a count every approximately 18 hours).

    Clearly, a problem with the count system is the “one size fits all” nature of the counts. The examiner gets the same amount of time allotted for a first action, an allowance, an abandonment, and a request for RCE. These require very different amounts of work from the examiner, ranging from lots for a first action to precisely zero for a request for RCE. A final rejection can take almost as much time as the first action, yet the examiner gets nothing for it.

  74. If you’re going to do this:

    “The kicker is that I would include negative counts
    -0.5 for any additional non-final office action that isn’t either a 1st OA or a OA after RCE
    -0.5 for reopening prosecution after Appeal on a non-final Office Action
    -1.0 for reopening prosecution after Appeal on a final Office Action”

    then you’ve got to do this:

    -1.0 for being reversed on Appeal (if rejections were poor quality)

    Otherwise, Examiners will push hard for everything (good and crap) to just go to the Board, which is already working at a scary pace.

    “Also, I recommend that the fees for RCEs should be doubled”

    Yikes! Maybe if this is coupled with a serious increase in examination time and quality, you could pump up RCEs this high, but right now, one RCE per case is almost a given. Doubling that fee would kill a lot of small-mid guys.

    How about incrementing RCE fees each round of prosecution, or each time claims are amended? How about also imposing a fee each time new, non-restricted claims claim priority to a particular application? Obviously do not likewise increase counts/production as prosecution continues.

  75. I think that most people can agree that with regard to the count system, more claims should result in more time being allotted to an Examiner. Applicants pay for the extra claims, so they should be entitled to have the Examiner perform the extra work. Similarly, the Examiner’s are performing the extra work, so they should be getting credit for that work.

    Although I think credit should be given for an RCE, I think the most credit should be given for a first Office Action. This is how I would break it down:

    1st OA – 3 counts
    Allowance – 1.5 counts
    Abandonment – 1.5 counts
    Non-allowance disposal (e.g., RCE filed or Examiner’s Answer) – 1 count
    OA after RCE – 1 count

    The kicker is that I would include negative counts
    -0.5 for any additional non-final office action that isn’t either a 1st OA or a OA after RCE
    -0.5 for reopening prosecution after Appeal on a non-final Office Action
    -1.0 for reopening prosecution after Appeal on a final Office Action

    Also, I recommend that the fees for RCEs should be doubled – not enough to prohibit someone from using them if absolutely needed, but enough to give Applicants the incentive to close prosecution early. Additionally, it will provide extra revenue to the USPTO.

    The way these counts are broken down, the Examiner has the incentive (and allocated time) to do a very thorough search at the very beginning, to either provoke the Applicants to take whatever allowable claims are indicated or to abandon the application outright. This is the best outcome for all parties involved.

    However, if the Applicant does file an RCE, it means that they are presenting new issues to be considered by the Examiner, and the Examiner should be rewarded for searching these. However, the Examiner should have done most of the “examining” already. As such, the Examiner should not get as much credit as for the initial examination and 1st Office Action.

    The additional incentives for performing a solid search and examination at the very beginning are the negative counts. If an Examiner has to issue a second (or third, etc.) non-final Office Action, then the Examiner has not done their job properly. The minus 0.5 hurts a little, but it isn’t something that cannot be overcome by the Examiner. However, if the Examiner forces Applicants to Appeal (which is an expensive process) and then decides there is a need to reopen, then the Examiner should be docked more. When the Examiner makes the action “final,” it means that the Examiner should be absolutely sure about the rejection. If they are not sure, then they shouldn’t have made the last action final.

    I would even consider increasing the number of counts for a 1st OA to 4 counts. The greater the Examiner’s focus on the 1st OA, the quicker prosecution will proceed.

  76. I’d like to give the examiner’s perspective on this. Well, my perspective, that is. I’ll remain anonymous but will tell you that I’m a primary examiner in TC 1600, who works on biotech cases. That I am a primary means I have been at the office for at least 4 years, but I’ll leave it at that.

    The count system serves multiple purposes. In an ideal world (yes, I am well aware that this one is far from ideal), it would encourage compact prosecution, in that examiners do not receive any credit for 2nd actions which are non-final (or any subsequent actions). It also serves as a guide for the amount of work an examiner has to do. Each examiner is required, on a per fiscal-quarter basis, to produce a number of counts. The goal varies depending on technology. In theory, simpler technologies require less time to search and write up (fewer 112 issues, for example). Additionally, the goal depends on an examiner’s rank. GS-14 (primary examiners, with full signatory authority) are required to produce 35% more than a GS-12 (someone with a PhD who has been at the office a year, for example).

    As an examiner, the count system is useful to me because I am acutely aware of how much work I need to do in order to keep my job (several consecutive quarters of not meeting your goal can lead to firing) and how much more I need to push myself in order to receive a bonus. Furthermore, the count system does force us to work on new cases, albeit probably not as many as applicants would like. I can look at my amended docket (cases due in the next 2 months) and see how many first actions I have coming up, and how many are allowable (or might be close, i.e. if attorney is willing to take what I consider to be allowable subject matter as opposed to argue for broader scope) and look at my list of rejected cases and try to guess which cases will go abandoned. Knowing that, I know how many new cases I have to work on.

    One of the problems, as examiner see it, is that the system is relentless and does not forgive those cases which require a lot of extra work. When applicants submit an IDS that is 35 pages long (don’t laugh, it happens) and 100+ claims, we get no more time than we do for a relatively straightforward case. Sure, it should all average out in the end but there aren’t as many of the so-called “easy” cases as there should be, given the numbers of real bears we run across.

    Another problem, as many examiners see it, is that the number of hours we get to work on a case has not changed since the 1970s. Although there is a lot more art to search (say, 30-some years worth), and enablement/written description issues that are frequently a big deal now, as compared to many years ago, we get no more time. As a primary in the biotech area, I get about 10 hours per count. Each case has 2 counts in it (first action and disposal). That means to read your case, construe the claims, research the field if it is something new to me, consider the IDSs, search the claims, prepare the office action, read your amendments and arguments, prepare a response, and perhaps allow it or write an examiner’s answer, I have about 2.5 work days (in a lot of other technologies it is considerably less). In order to do a quality job I really have to move fast. If I go too fast, the quality suffers. I miss limitations in claims, or don’t respond thoroughly to an argument, etc. That means I have to do second non-final action, which means that some other case gets the short shrift.

    Examiners want more time per case. No, it’s not just because we are a bunch of lazy bureaucrats, but because at least some of us care about doing a quality job and really want to search the art thoroughly so we can feel confident that something is novel and nonobvious and enabled and described when it issues.

    Unfortunately, for the applicants, the flip side of more time per application is a bigger backlog. If I go from 20 hours per case to 25, that means fewer cases per year. The Office recognizes the backlog is a problem, and understandably is reluctant to give more time. But when we are rushed, we can’t do the thorough job that applicants deserve.

    So how to both fix the count system to provide incentives for compact prosecution and work on the backlog? I have no idea what will work. Billable hour model sounds good, except that it will mean you can throw compact prosecution out the window. There will be no incentive for bringing up all issues at the beginning. Maybe fewer counts for an RCE disposal (i.e. change it from 1 count for the abandonment that comes in with the RCE to 0.75), coupled with increased counts for the first action to compensate? Or weight the counts more heavily to the disposal — something like 0.75 counts for first action and 1.25 counts for disposal (allowance, abandonment, or Examiner’s Answer).

    Any other ideas? How should the count system be changed, given its multiple roles (indicator of examiner performance, and incentive for compact prosecution)?

    I’ll try to respond to any comments/questions, but really don’t have time to get into some kind of snarkfest or flame war.

    Hecky’s: It’s the Sauce!

  77. The present 112 and inequitable conduct doctrines give applicants tremendous leeway in playing hide the eight ball in prep and pros. It is rare a claim will be found “insolubly ambiguous”, which encourages applicants to write claims that push the envelope of ambiguity, which in turn makes compact prosecution ever the more difficult to attain. Same occurs during prosecution, but the Fed Cir.’s intent rqmt is so strict that shifty applicants will rarely be found to have deceived the PTO. Productivity can be improved only if the PTO demands more up-front (nonambiguous and candid) drafting and prosecuting. This of course will make it easier to locate and remove examiners that fail in compact prosecution. It’s a two-way street.

  78. Some folks have said that examiners shouldn’t receive disposal counts for RCE’s, and that examiners somehow force Applicants to file RCE’s. The disposal count is justified because it covers all the time the examiner has spent updating search and writing new rejections or responding to arguments after the first action, and considering after final arguments. Affidavits or amendments submitted after final are typically not entered because the examiner has already devoted all the time allotted to him or her for the case, and also because the examiner is given only 10 days including weekends to act on that after final case. There is no time or incentive to deal with after final amendments etc. that bring up any new issues at all.

  79. “That’s rich.”

    No, it’s good advice that you should take. And I’m not “whining” about your mysterious concern for your alleged peers and their remarkable supersensitivities. I’m just stating my opinion that your concern seems rather bogus and extremely overwrought. The funny thing is that most of the attorneys I know are fairly thick-skinned adults who don’t need to engage in the name-calling and endless sockpuppetry that seem to be the sole means by which you communicate.

    And then there’s you. Your endlessly recited position is that criticizing a patent, its prosecution history, a legal opinion, or anybody associated with the production of such a document is The Worst Thing Ever. Well, you’re wrong. So I’ll say it again: grow up.

  80. Ah Pook is right, but what follows? I propose that Congress ought to take a look at the work of the Federal Circuit over the years, and consider adding a few more courts to which appeals might be taken and thereby perhaps improve the quality of guidance offered to everyone below. Further down the food chain, stop awarding counts to examiners for RCEs, and disable the cut-and-paste function on the computers examiners use to write their office actions. Penalize examiners for bad final rejections no less than for improperly allowing cases.

  81. “Grow up, crybaby.”

    That’s rich. The clown who regularly trashes practitioners and judges, anonymously, but who whines like a little you know what about “personal attacks” is call somebody a crybaby.

  82. The problem is not the examining corps. They respond to numbers of claims and vagueness with restrictions to level the workload and with forced RCEs as claims are gradually clarified and new searches are required. The solution seems obvious: provide a limit on the number of claims and introduce a pre-search “claim construction” phase into prosecution where the examiner might state his understanding of the independent claims on the record before he conducts his search. If the examiner’s construction is too broad, the applicant could reply with his own construction that would be binding on him for the future and which the examiner would have to accept.

  83. Please don’t call me “dog”

    “Talk less,” that’s what I’ve been saying to you Mooney, er, Jules… As I have explained, I’m just trying to provide an alternative to Mooney’s pathetically negative and ill-informed drumbeat. A mirror if you will.

    And inflammatory posts like “this claim is crap” and other assorted snark regarding my (and many other serious individual’s) profession, is not my idea of being “on point.”

    So, to use a favorite Mooney snark, deal with it.

  84. One thing I can say for sure… all those people (or that person?) that constantly berate Blimpy are exponentially more annoying than Blimpy.

  85. I was taught that we all have our quirks, but Blimpy, dog, you take the cake. Allegations galore with no supporting facts. A case of identity crisis and a conspiracy theorist mentality both appear to contribute to your gratuitous annoying repetitive posts that occur all throughout the day. Occasionally I see a post of yours on topic, but only <5% of the time. I thought I read your epitaph anyway? Here it is again, “Blimpy, he became what he despised, RIP”. I suggest a new psuedonym and a fresh start. Talk less.

  86. new PTO director David Kappos will be very impressed with the helpful comments posted above

    Dennis, why don’t you just delete most of them

  87. “What could be more open than Mooney’s discussion of his love life?”

    His open discussion of the inclusion of lubricious objects and livestock into his love life.

  88. (Jules==Mooney)

    I just took a poll, and pretty much everyone thinks that Mooney, er, Jules, er, “BigGuy” is exponentially more annoying… even if he is a certain academic..

  89. Why don’t we delete all the comments here, except David Boundy’s a few others. Honestly, get a grip. This is the reason Director Kappos’ blog will never use anonymous comments if it ever goes public. Shame too, because anonymity in my opinion promotes more open discussion.

  90. One thing I can say for sure… all those people (or that person?) that constantly berate Mooney are exponentially more annoying than MM.

  91. One more thing, I’m taking your non-denial as indisputable and unassailable proof that you do work for the PTO.

    Go ahead and dispute the proposition, troll.

  92. “I don’t care.”

    Orly? Then why all this:

    “Actually, before that can be resolved, the proper question is: who are you? I mean, you are not ‘new’ here. You’re obviously a sockpuppet of one of the ‘regular’ lame sub-handful of commenters who do little except gripe about 6, myself and MaxDrei. Which one might you be? Typically one looks at the other recent comments for a clue. Oh, look, what a surprise!”

  93. “I don’t care. My point was that whether a statement is mine or yours is difficult to assess when you dream up a new sockpuppet every other day.”

    Your statements are easily determined as they appear above your name under the “Posted by:” section.

    Same with mine.

    “What makes you think that?”

    A lot of your posts make me think that. But the post where you described the “dynamic” that is present when firms that hire former high-level PTO personnel interview reexam cases truly convinced me. Either you work for one of those firms, which I don’t believe, or you work at the PTO, which I do believe.

    I must say Blimpy’s post is making me rethink my conclusion. You could be an academic. It would also explain a lot.

    Whatever you are, you’re not a practitioner.

    Others have speculated that you’re a paralegal, or a docket manager, or whatever.

    In the end, who really cares? To me you’re just some troll who doesn’t practice.

  94. I don’t think Mooney is an examiner, I think it’s much worse than that. I think he is an academic.

    I’m just sayin…

  95. “never get to use it in a sentence.”

    I’ll give it a try: Examiner “atoms fall out of wires” 6, because of your intellectual laxity, you are a m0r0n of gargantuan proportions.

    There, I did it.

  96. Today’s Troll: “Why do you care?”

    I don’t care. My point was that whether a statement is mine or yours is difficult to assess when you dream up a new sockpuppet every other day.

    “I know you’re just another PTO employee”

    What makes you think that?

  97. “who are you?”

    I could ask the same about you. But as I know you’re just another PTO employee spending his day here instead of working, I really don’t care.

    Why do you care?

  98. Today’s Troll: “Your words, not mine.”

    Actually, before that can be resolved, the proper question is: who are you? I mean, you are not “new” here. You’re obviously a sockpuppet of one of the “regular” lame sub-handful of commenters who do little except gripe about 6, myself and MaxDrei. Which one might you be? Typically one looks at the other recent comments for a clue. Oh, look, what a surprise!

  99. “We have been over this and over this. Thanks, but I’ll pass on the opportunity presented to be a broken record.

    Posted by: 6 | Sep 01, 2009 at 10:09 AM”

    If only, if only…

  100. “But it does kind of prove his proposition that the PTO is not CONSPIRING TO improperly reject applications that should be issued.”

    Your logic skills are as bad as Examiner Mooney’s.

  101. “”You can’t have compact, high quality examination unless you enforce the statutory provisions that are supposed to require a patent application to explain clearly what the invention is and why a patent is deserved, and to result in granted patents that allow third parties to have at least half a clue what they can and cannot do without the advice of an army of lawyers.”

    BTW, this is hardly an indisputable proposition.

    I dispute Ah Pook’s proposition.

    There, I just proved that it’s disputable.

  102. “They would have us believe that the PTO is conspiring to keep their valid patents from being issued, just to keep the percentages down.”

    Your words, not mine.

    I’m unassailable and indisputable.

    Anybody who disagrees is a troll.

  103. Today’s Troll: “Pointing to silly patents that issued, but should not have, does not prove your “proposition” that …”

    *click*

    Why do the trolls always sock so hard at basic reading comprehension? The indisputable proposition I was referring to was not mine, but rather Ah Pook’s. Here it is again for the benefit of the nursery schoolers in the peanut gallery:

    “You can’t have compact, high quality examination unless you enforce the statutory provisions that are supposed to require a patent application to explain clearly what the invention is and why a patent is deserved, and to result in granted patents that allow third parties to have at least half a clue what they can and cannot do without the advice of an army of lawyers.”

  104. “You receive a rejection and work with the inventor and prepare a three page remarks section with drawings and quotes from the references and from the application.

    And the examiner’s response is only “I find applicant’s arguments unpersuasive.”

    Frustrating”

    Somewhere there is a blog where denied applicants to their preferred colleges gather together to cry rivers of tears. It’s all so unfair!

  105. —applicant’s filing of an RCE should not count as a disposal.

    — double the number of counts for first OA’s on the merits

  106. You receive a rejection and work with the inventor and prepare a three page remarks section with drawings and quotes from the references and from the application.

    And the examiner’s response is only “I find applicant’s arguments unpersuasive.”

    Frustrating

  107. “I’m willing to meet with Mr. Kappos or anybody at the PTO …”

    Hey John, I did that with Dudassss(!) years ago and he threw all my great ideas in the garbage can. Don’t waste your time. I told him to his face that his second pair of eyes program was bad, for the many obvious reasons we scream about here.

    I will go back there if I could have a GS-15 “firing” job. That is, I fire people (mostly SPEs) 50% of the time, and I would examine the other 50%. I bet my 50% examining time would result in more advancement of prosecution than the majority the 130 percenters!

  108. Because of the unacceptably large backlog, appeals as a practical matter are often not available. Time to double the staff of the Bd of Appeals.

  109. “does not prove your “proposition” that the PTO is not improperly rejecting applications that should be issued. ”

    But it does kind of prove his proposition that the PTO is not CONSPIRING TO improperly reject applications that should be issued.

  110. “If you’re not willing to step up JD, you could at least stow the rhetoric. It’s only reasonable.”

    Why is that reasonable?

    Even if I wanted the job, which I don’t, there’s no way they’d give it to me. So you can stop your little campaign.

    I’m willing to meet with Mr. Kappos or anybody at the PTO to explain my ideas for improving things over there. I don’t need to apply for, and they don’t need to make me, the Deputy Commissioner position for them to benefit from the tremendous wisdom I offer.

    I will teach them bibles of truth. All they have to do is ask me.

  111. “Go ahead and dispute the proposition, troll.”

    I will, Examiner Mooney.

    Your attempts at logic are quite hilarious, although ultimately unavailing.

    Pointing to silly patents that issued, but should not have, does not prove your “proposition” that the PTO is not improperly rejecting applications that should be issued.

    Keep denying that there is a culture of “quality = reject, reject, reject” at the PTO. Mr. Kappos acknowledged that it does exist. And when he tells examiners like you to issue more patents, you’re just gonna have to obey his orders. Just like you obeyed Mr. Doll’s orders.

    I’m sure you’ll fall in line.

  112. Mr Fierstein, I don’t yet see why 112 has to change. It already requires an enabling disclosure and a written description on day one. If the courts were to find that addition of subject matter, after day one, invalidates any patent that issues with added matter in it, that would give drafters an over-riding imperative to draft with onion-skin levels of intermediate generalisation, already in the app as filed. That in turn would allow the PTO to do one search and no more thereafter, and to issue an exhaustive FAOM.

    Prof. Polk Wagner is right. It is the “deferral of clarity” philosophy which has messed up the system. But the courts can knock that business model on the head, any time they choose. They don’t have to feel so sorry for the poor drafter, doing an impossible job. Rather, they should feel sorry for the public, faced with impossible levels of legal uncertainty (MM’s rolling dice). Maybe Mr Kappos will soon explain to them where their duty lies.

  113. “My list *is* the law.”

    So the fact that one (of the many) issue coming from your side arises because a law was taken away somehow makes it better? It contributes to the problems bucko, whether it is the law or whether it isn’t. You merely picked and chose the contributions to the problem which suited your purpose.

    Go ahead. Start a list of things apps do that contribute, and explain to us why the law should be changed to address that part of the problem just as much as the current “lawls” should be better enforced (or whatever it is you propose to make examiners comply).

    Like I said, the people here are only interested in hearing about things that others are doing that contribute to the problems rather than what they themselves are doing.

    Even if you eliminated the PTO’s culpability in total then you’d still have your own culpability driving up the backlog and otherwise causing mischief.

    That’s the exact same point I raised above, if you don’t want to address the point I’m making then please, spare me a response.

    “donothingknownothinguselessdeadweightGS-15′s ”

    JD, what is your plan to deal with the scourge of donothingknownothinguselessdeadweighttosocietylawlyers? Should they be sent back to productive jobs as well?

    Lest everyone forget, JD here is in a position right at this very moment to take action on the very issue on which he is posting, but he isn’t up to the job.

    If you’re not willing to step up JD, you could at least stow the rhetoric. It’s only reasonable.

    “The laxity of the USPTO ”

    I love that word. And I’m glad I have one more person speaking up. I particularly liked part (a) which is of course what everything in the entire patent system boils down to. Claiming practice. The name of the game is, and always has been, in the claims. However, laxity on the part of both parties is also a major issue at hand. The PTO must rule with an iron fist instead of the bs pansy organisation it turned into, lest the children turn into spoiled brats as we see today. Then again, isn’t that pretty much a sign of our times? No more real punishment for children, and entitlement culture for everyone (probably as a result).

    “In my professional lifetime, patent practice seems to have disappeared down a rabbit hole into Wonderland, which as in the book is turning into a surreal nightmare. ”

    What I figured happened. In fact, you can trace its descent down through the ages through the various decisions of the courts.

  114. “However, be prepared for the Attack of the Whining Puppets for daring to assert such indisputable propositions.”

    MaxDrei declares his positions “unassailable” and Mooney declares his positions “indisputable.”

    It’s too bad Mooney is an examiner. If he was not, it would be a hoot to see him in court. “But, but, but, Your Honor, my proposition is indisputable!”

    LOL

  115. Ah Pook: “You can’t have compact, high quality examination unless you enforce the statutory provisions that are supposed to require a patent application to explain clearly what the invention is and why a patent is deserved, and to result in granted patents that allow third parties to have at least half a clue what they can and cannot do without the advice of an army of lawyers.”

    Absolutely correct, Ah Pook. However, be prepared for the Attack of the Whining Puppets for daring to assert such indisputable propositions. They would have us believe that the PTO is conspiring to keep their valid patents from being issued, just to keep the percentages down.

    Right. That’s why crap like this gets issued:

    link to 1201tuesday.com

  116. appealho “How useless an interview would be if it were recorded. I would file even more appeals than I do now!”

    Why?

  117. “every effort is made to avoid limiting whatever protection might be obtained and no effort is made to illuminate the relationship between the “invention” and the prior art.”

    Practitioners often don’t know the “prior art” until the USPTO tells them what it is. Perhaps this in-and-of-itself is a problem, but I don’t see it as purposeful obfuscation. Almost all applications I see drafted by most law firms make a very valid attempt to clearly describe examples of what the claims cover. If you want more than that, change 112. (Yes, it could be helpful to the patent system, if done correctly) Otherwise, I think there are other solutions through rebooting the USPTO production system to address the law as it stands and how patents are currently drafted.

  118. “You all have forgotten the most important aspect of all”

    I haven’t forgotten. I’ve been advocating sending all of the donothingknownothinguselessdeadweightGS-15′s back to examining for years now.

  119. You all have forgotten the most important aspect of all:

    Have all SPEs examine applications 100%. Abolish the SPE position immediately. Even TC Directors should be examining, say 25% of their time.

    Those that refuse, FIRE THEM!

  120. Amazing how fast progress can be initiated by finally appointing a qualified Director who actually knows what goes on in the PTO!

    As to counting a mere request for continued examination (RCE) of the same application as a “disposal”, that is not nearly as outrageous as the PTO falsely misrepresenting in their statistics to the public and to Congress that merely filing an RCE is both an “abandoned application” and a “new application.”
    On the other side of the coin, examiners are apparently being grossly under-compensated for properly examining [instead of avoiding examining for years] gross-total-pendency “submarine” applications allegedly based on chains of old-fashioned continuations, divisionals or even CIP’s, especially those containing large numbers of new claims.
    Also, there seems to be inadequate count credit to examine [rather than to avoid examining] important reissues and reexaminations that have been improperly, and highly publicly prejudicially, pending for years.

  121. I think the major reason for the severe backlog of patent applications has already been identified by Kappos – quality equals rejection. I have identified three other possible changes to decrease pendency times. (see link to hallingblog.com) One is adjusting the way examiners are evaluated that reduces the importance of the count system. Another is to establish satellite patent offices, where the cost of living is lower. The third is ensuring that quality reviews are balanced – it is a myth that the PTO has issued numerous poor quality patents see link to hallingblog.com.

  122. I’m going to be really frank about this, and I don’t expect to be popular.

    Examination at the USPTO is an almighty mess because

    a. Mainstream US patent drafting practice – driven in part by the profession’s sometimes bizarre interpretation of court judgements and the sometimes bizarre nature of such judgements – has become a Kafkaesque parody, in which every effort is made to avoid limiting whatever protection might be obtained and no effort is made to illuminate the relationship between the “invention” and the prior art. This makes compact, structured high quality examination impossible, even given a corps of experienced, competent examiners.

    AND

    b. The USPTO has completely failed, if it ever even tried, to reign in such egregious practices using the statutory weapons at their disposal. The laxity of the USPTO in this regard has been responsible at least in part for an avalanche of poorly drafted and/or “experimental” patent applications.

    This has spilled over into the rest of the world, and threatens to bring the EPO to its knees along with the USPTO.

    The EPO is responding with a campaign to “raise the bar” for patent allowance. They want to encourage fewer but higher quality patent applications.

    You can’t have compact, high quality examination unless you enforce the statutory provisions that are supposed to require a patent application to explain clearly what the invention is and why a patent is deserved, and to result in granted patents that allow third parties to have at least half a clue what they can and cannot do without the advice of an army of lawyers.

    It’s not good enough to present dozens of obscurely worded claims and demand that a patent be granted in respect of any which cannot be shown to be invalid on the basis of a few man-hours of work. Doesn’t work. Can’t ever work.

    You can’t blame lawyers for trying to serve their client’s best interests within the framework of the law as it is actually applied in practice. You can blame them for pursuing practices that can be shown ultimately to be contrary to the best interests of their clients, themselves and society at large.

    In my professional lifetime, patent practice seems to have disappeared down a rabbit hole into Wonderland, which as in the book is turning into a surreal nightmare.

    You can’t fix the count system without fixing everything else.

  123. Here’s a suggestion; make the PTO a registration based system – examination could be requested either by the applicant or a third-party. This would preserve examination and applicant resources for those applications which the applicant or third party deem worthy of immediate attention.

  124. I agree with Prosecutor. I find EPO examinations worse than US examinations, if that is possible. Whilst every system has its high points and low, the quality of EPO examinations really impresses me as being in the bottom of the bucket.

    I find the Canadian and Australian systems get to a fairer result quicker than others I have dealt with.

    I would like to see initial applications restricted to a limited number (say 5) independent claims — a first OA, narrowing amendments if necessary, and a “final” OA. Then a chance to add dependent claims to allowed independents, with the next OA restricted to non-prior art issues such as section 112 p. 2 and p. 6 issues. Applicant could then appeal any non-allowed independent and dependent claims.

    As to David Boundy’s observations, what I find most frustrating is the total lack of reasonable and cost-efficient ways of redressing examiners’ complete disregard for the rules. The petition mechanism is a joke, or worse, a black hole. OK, let’s just call it a black hole joke.

    PTO currently does QC on allowances and penalizes examiners who scrrew up too much. A bad idea only because it is restricted to allowances and thus promotes rejections. QC ought to be expanded to rejections, and the examiners who can’t follow the rules ought to be given the bums’ rush. (That’s the non-anatomical “bum.”)

  125. 6: The difference is really pretty clear and easy to grasp.

    Submitting a working model is *not* the law, and hasn’t been for 100 years.

    My list *is* the law. (That’s why I included the cites!)

    CD’s observation is spot on. In the 1990′s, Office Actions usually DID gave an element-by-element claim chart – not in two-column form, but with similar precision. I very seldom had any trouble discerning *precisely* what the examiner had in mind (and that form of office action forced the examiner to give complete thought to the claim language and to the reference – many fewer totally bogus actions). If I met the examiner’s issue square on, we moved forward. Today’s office actions are laundry lists of “hide and seek” citations to the references, often with no observable pertinence. Sometimes I see what the examiner meant. Sometimes I don’t succeed in reading the examiner’s mind, there’s a different issue that I didn’t see, and prosecution drags on.

    If my experience is representative, a huge bulk of the PTO’s backlog arises from imprecise Actions. Fix that, and a huge part of the total backlog and quality problems go away.

    And whattaya know – it’s the law.

  126. Yes, at times MM does sound very much like an examiner. How useless an interview would be if it were recorded. I would file even more appeals than I do now!

  127. “I highly doubt it. Examiners don’t force Applicants to file RCEs.”

    Spoken like the true examiner Mooney is.

    “I’m all for that as long as the Interviews are recorded in their entirety.”

    Especially those interviews with firms that hire former high-level PTO personnel to interview re-exams. According to Examiner Mooney, the dynamic during those interviews is interesting, to say the least.

  128. “many folks are surprised that the applicant’s filing of a request for continued examination (RCE) also counts as a disposal. As the chart shows below, this count incentive may well be driving a flood of RCE filings.”

    I highly doubt it. Examiners don’t force Applicants to file RCEs.

  129. “Director Kappos also suggests that the count system should encourage “the use of interviews.”

    I’m all for that as long as the Interviews are recorded in their entirety.

  130. “I’d like to see the USPTO charge applicants on a pay-as-you-go basis, such that lengthier / more complex apps also cost more.”

    This already exists. You are aware that extra page and extra claim fees are being paid, are you not?

    “I.e., the more time it takes to examiner your app, the more you pay.”

    This is what does not exist. Applicants have been paying extra claim fees for years on the PTO’s argument that “extra claims require extra examining resources.”

    The problem is: the PTO collected the extra claim fees and spent them on something other than “extra examining resources.” They never gave the examiners, or the applicants, what was paid for: more time for more claims.

    So where did all the money go?

  131. I would propose that Examiners include a claim chart that maps the limitations to the prior art when making a 102 or 103 rejection.

    Claim charts are a very useful format to convey this type of information. They are used frequently in courts and the ITC as well as in other PTO proceedings (accelerated exams, interferences, and inter partes reexams).

    Applicants and Examiners could then more easily identify which terms are at issue.

  132. “The eight member task force includes four examiner union (POPA) representatives and four PTO managers – perhaps ensuring that the solution will not be a dramatic shift.”

    I’m hoping this is just a first step. I’m hoping some outside consultants are, well, consulted and the whole system is scrapped and revamped.

    I’d particularly like to see time allotted to Examiners on a length / complexity basis (maybe even eliminate restriction requirements). Coupled with this, I’d like to see the USPTO charge applicants on a pay-as-you-go basis, such that lengthier / more complex apps also cost more. I.e., the more time it takes to examiner your app, the more you pay. Of course, there would need to be clever incentives to keep Examiners from driving up time on apps, so some production metric would need to remain.

    I also want to see Examiners face real penalties for bad rejections, re-opening after appeal briefs are filed, and losing on appeal (where the outcome is clear / rejection meritless). This isn’t to punish Examiners, I just don’t see how else to incentivize rejection quality.

  133. “Adherence to these rules (and the law) in Office Actions will bring order and compact prosecution.”

    Adherence to the requirement to submit a working model will also bring order and hyper compact (to the point of non-existance) prosecution.

    The list doesn’t end there. Non-responsive communications, i.e. ones spouting off about how a single reference lacks x or y when the rejection is under 103 and based on two references, etc. etc. Submission of claims to more than one invention even though 101 only allowes for people to obtain a patent therefor to a singular invention. And on and on and on. Let’s not even go there with rule 56 and the ability to RCE forever.

    Laxity, laxity, laxity, laxity, laxity, laxity. On both sides.

    “Conversely, failure to adhere to these rules (and the law) in Office Actions, as is too often the case now, creates chaos and the backlog. ”

    Conversely, failure to adhere to these rules in applications creates chaos and the backlog.

    By the by, you want compact prosecution? Submit a few narrow claims.

    And guess what? I could probably compactly prosecute

    link to google.com
    (random patent from the 1000000′s)
    My prosecution would be pretty fin compact.

    I’m signing out for the day, nobody wants to hear anything on this website that puts any blame anywhere but on the office. I’ve got some compact prosecuting to do so cya.

    Also, does anyone remember where the taskforce was supposed to comprise people from OUTSIDE THE OFFICE? Or is this a separate task force, additional to the one that was supposed to be nonbiased etc. etc.?

  134. Well thanks Prosecutor but I think you are referring to the pre-historical ESR/ISR system, rather than a new-style EESR. An Extended European Search Report has annexed to it an Opinion on Patentability, which is a FAOM in all but name.

    And the “quality” of the references? Did the USPTO do better? What I always say to Euro-6 is “You concentrate on finding the best art. Leave it to me to work out what are the best validity attacks and what claim strikes the best balance between scope and validity. I don’t need your musings on obviousness, just the best art, please”

    Your ISR that advises that D1-5 disclose all the elements of the claims. I guess you have factored into your assessment the “broadest reasonable interpretation” way of assessing elements in a claim. For example, a “covering means” is anything under the sun with any capacity to cover something. That’s pretty wide.

    Now, anybody with anything to say about an EPO EESR?

  135. “This format has evolved over the 30 years of existence of the EPO and is by now unassailable.”

    I just love it when Max announces that any aspect of the EPO, or Europe in general, is so perfect as to be unassailable. As if his mere proclamation makes it so.

    Hey, let me try it.

    The good ol’ U. S. of A is perfect. That’s unassailable.

    That felt good.

  136. “The eight member task force includes four examiner union (POPA) representatives and four PTO managers – perhaps ensuring that the solution will not be a dramatic shift.”

    I nominate this for understatement of the century.

  137. Max,

    I have noticed the quality of ESR’s and especially ISR’s from the EPO going waaay down. I received an ESR the other day listing 5 X references and merely containing a broad statement that “D1-D5 disclose all the elements of the claims.”

    Even all five references in combination didn’t disclose all of the claim elements. It was obvious the examiner put about 5 minutes worth of effort into this.

  138. “What David B. notes are the very areas where I find many Office Actions fall flat on their face.”

    Hmm, that’s funny, failing to submit a working model is the very area where many applicant’s applications fall flat on their face when such a requirement is implemented.

    Laxity, on either side, creates problems. Laxity, such a great word, but you never get to use it in a sentence. Kind of like Gargantuan.

  139. “David Boundy brings up a laundry list of small areas where he’s felt slighted.”

    6,

    What you say is absolute nonsense. What David B. notes are the very areas where I find many Office Actions fall flat on their face. Adherence to these rules (and the law) in Office Actions will bring order and compact prosecution. Conversely, failure to adhere to these rules (and the law) in Office Actions, as is too often the case now, creates chaos and the backlog. Or in the words of Admiinstrative Procedure Act creates decisions that are “arbitrary, an abuse of discretion, and not in accordance with law.” I need say no more.

  140. By now, a FAOM (EESR) out of the EPO follows a rigorously standard format. Dependent claims are dismissed in a few lines, and the applicable law is dealt with in bald references to the Article numbers of the EPC. BUT: the independent claim is recited in full, interspersed with reference numbers coming from the drawings of the best prior art “starting point” reference, which either destroys novelty or sets up the obviousness attack. There is plenty of reliance on Examiner assertion, of that the PHOSITA would think and do.

    Examiners at the EPO are also driven by disposal points (I guess the EPO got that idea from the USPTO). The system has been refined in recent years but seems to work pretty fine, thank you.

    This format has evolved over the 30 years of existence of the EPO and is by now unassailable. It results in FAOM’s issuing within a few months of the filing date.

    Attention, those of you who prosecute at the USPTO and also address EPO EESR docs. Does the EPO way have anything to offer the Task Force?

  141. David Boundy brings up a laundry list of small areas where he’s felt slighted.

    David, could you come up with us a list of things which ought to be more strictly enforced against applicants rather than in their favor? Would you sacrifice those to gain the ones you feel slighted over?

    Perhaps you’d enjoy going back to the days of submitting a working model?

    Face it, the lax system on applicant’s side is just as much at the root of the problems as the lax system on the examiner’s side.

    By the by, compact prosecution is a pipe dream buzz word, nothing more.

  142. It’s really crucial that any reform encourage compact prosecution by *examiners*, instead of the double standard that’s been applied for the last 6-8 years. The PTO has become really bald about enforcing only those requirements for compact prosecution that apply to applicants, but god help the applicant that calls an examiner or SPE and asks for compact prosecution at the examiner’s end!

    The single biggest thing that the PTO could do to reduce backlog is simply comply with the law. Breach of these procedural laws are the biggest contributors to backlog -

    - 37 C.F.R. § 1.104(c)(2), “designate portions relied on *as nearly as practicable*” not a laundry list of paragraphs

    - 37 C.F.R. § 1.104(c)(2), “clearly explain” pertinence any time the reference shows anything more than the claim and only the claim – don’t leave the applicant to read examiner’s mind (and, not coincidentally, force the examiner to think carefully about both the claim language and the reference)

    - 37 C.F.R. § 1.104(d)(2), to provide substantial evidence, instead of rely on examiner speculation

    - 5 U.S.C. § 555(e) and MPEP § 707.07(f), answer *all* material traversed, not just pick-and-choose

    - Honor the Federal Circuit’s definition of “new ground of rejection” – if an examiner shifts ground, fills in the gaps in a previous incomplete Office Action, relies on a new portion of a reference, etc. the Federal Circuit says that’s a “new ground,” and that should usually prevent final rejection

    - Use the form paragraphs. Examiners are permitted to improvise the law with almost complete non-accountability.

  143. “I think one of the Examiners can clarify that there are more ways via which an application can be deemed “disposed”.”

    Are you referring to an Examiner’s Answer to an Appeal Brief? That’s potentially one other way to get a disposal count.

  144. “As you might guess, a case is disposed of when it either issues as a patent or is abandoned by the applicant. However, many folks are surprised that the applicant’s filing of a request for continued examination (RCE) also counts as a disposal.”

    I thought that made it pretty clear.

  145. I think one of the Examiners can clarify that there are more ways via which an application can be deemed “disposed”.

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