USPTO Director Kappos Discusses USPTO 2010

Director David Kappos today offered his first public speech directly to the intellectual property law community since taking office as Director. The 600+ patent attorneys in attendance at the Intellectual Property Owners Association (IPO) appeared cautiously hopeful.

Some highlights:

  1. Kappos intends to focus on process-focused reform in an attempt to drop pendency and increase examination effectiveness. In particular, Kappos suggested a reengineering of the USPTO examiner count system to better encourage compact prosecution; pre-first-office-action interviews as a mechanism to quickly focus on the important issues; easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources. While waiting for broad reforms to take effect, Kappos also suggests mechanisms for shortening pendency for focused sectors of technology. As part of this, Kappos also suggested that plans at creating a “nationwide workforce” of patent examiners.
  2. Legislative patent reform is one of the “highest priorities” of both the USPTO and the Commerce Department. (Kappos did not develop the particular areas of reform).
  3. In the Q&A session, Kappos was asked about Tafas v. Dudas and its potential resolution. He joked that it might aptly be renamed Kappos v. Kappos based upon his history of opposing the rules package and his new role as PTO director. Despite his predilection against those particular reforms, Kappos may not have power to extricate the Government from its position.
  4. In the background, is the “big overhanging problem . . . funding.” Kappos reported an expected $200 million shortfall for FY2010. Leaving little money to make improvements or to even keep-up the “extremely fragile” information technology system.

105 thoughts on “USPTO Director Kappos Discusses USPTO 2010

  1. Nerode, nice to read you. I can imagine you have issues with the TBA approach to Art 52 EPC but would you like to tell us why you think that the TBA reliance on Art 56 EPC is ineffective to enforce the statutory Art 52 bar “as it was intended”?

  2. Nathanael,

    Which economic studies are you referring to?

    You might check out the thread (it’s an older one) at Patent Docs that explores the veracity of many of the studies proposing what you cite and their serious shortcomings.

    Your examples may be included – but they may not be!

  3. MaxDeri wrote regarding business method patents: “The jury is still out, on the question whether they are doing the US economy good or harm.”

    Nope. There’ve been economic studies already; they’re harming the economy. Next question?

  4. MaxDrei wrote: “More recently, the free software movement has been kicking up a fuss, picked up by the European Parliament, to ban from patentability all computer-implemented inventions.”

    This is simply inaccurate.

    Abusive actors in patent offices, the patent bar, and various corporations have been trying to do an end-run around the prohibition of patents on computer software, by claiming unpatentable mental/mathematical processes “plus a generic computer” as if they were patentable.

    The Free Software movement and the European Parliament as well as anyone with half a brain have been fighting to enforce the requirement that there be either a specific, non-generic computer, or something additional and outside the generic computer, and that the novelty must lie at least partly in these areas. In other words, it *can’t be just a computer program*.

    Unfortunately, there is continuous effort to distort the law in order to try to claim that spreadsheets, word processors, databases, computational programs, and so forth are “computer-implemented inventions”, despite the fact that they are computer programs as such. Europarl and the Free Software movement have been fighting to keep the law enforced as it was intended.

  5. 6,

    Is this dance your warm up to your running?

    Your offer was not reasonable for the reasons listed at that thread. You asked me to do your job in exchange for explaining how the Law affects a basic tenant OF your job (which you should KNOW).

    Here, I specifically referenced the Kappos’ IPO comments, which outline the specific steps I was referring to. The Kappos notes HAVE the specifics.

    I recognize that reading comprehension is not one of your bread-and-butter skills, but to say I decline when I answered borders on the delusional. Move over “New Here”, 6 is descending.

    Are you really that daft?

  6. “What are these steps you refer to? Be specific.”

    As usual, 6, you are a joke, alluding to a lack of reading comprehension on my part, while you exhibit no skill in the area.

    What do you think “see the full IPO comments” means?

    Shall we make this yet another challenge that you refuse to answer? (answering “np” to my refusal to allow you change the challenge is NOT a valid substantive answer).

    fasten that skirt of yours and lace up those shoes 6.

  7. Mr. Kley if you have any troubles what so ever you can contact me any time and I’ll see what I can do to help.

    You must also remember Mr. Kley that your art is far from being simple, and you must be reasonable in your expectations for anyone working on your cases to know what is going on. Especially in a short time period allotted. The people working in your art probably handle a very wide variety of equipment and do not necessarily have a background in your specific area.

    You must also remember that due to the nature of your art you may very likely run into problems that are on the very borders of patent law today. And if anyone is “making up” special rules or arguments against claims then they may very well be legitimate issues.

  8. Noise, your reading comprehension is low as usual.

    And no, you don’t have to answer me when you obviously have no comprehension of the issue being discussed.

    “but the right steps are being taken”

    What are these steps you refer to? Be specific.

  9. Indoctrination Alert:
    “Personally I’m worried about preserving the useful part of the patent system, the unquestionably statutory and unquestionably non-obvious subject matter of old”

    6, here’s a clue – the useful part of the patent system is NOT the subject matter of the old. That is only a tool against which the new is to be screened against to verify that it is indeed new. The useful part of the patent system IS the new. A useful part is encouraging (not discouraging) more of the new to be voluntarily offered for public consumption. This is a basic of the patent system and something you are quite evidently clueless about. My admonitions of DO YOUR JOB must be preceded (for the likes of you) by KNOW YOUR JOB. Please note, I know that many examiners do NOT fall into this classification, so to those my comments are not meant to offend, but the vocal minority must be answered.

    Sorry Vic, the indoctrination alert above means that your point, specifically:
    “the abominable change in examiner actions that has driven our time to issue to 3 and 4 years or more, forced us for the first time in a 44 year history of patent filing to do an appeal with more likely. mostly because of examiner malfeasance in order to meet quota.”
    will not be understood by the likes of examiners posting here (6, MM).

    Your many fine points are like singing to the choir for those that understand why Quality is important. For those that merely want to get “a count”, quality means nothing.

    The good news is that Lord Kappos has publicly repudiated the reject-reject-reject = quality underpinning of the indoctrination and has called for examiners to actually do their job in a true quality manner. And yes, he has a team to define what this means to replace the old mantra (see the full IPO comments).

    It may still be awhile, but the right steps are being taken. For the likes of 6, those steps would be out the door.

  10. There is a drop in patent applications and people like me are rerluctant to file in the USPTO because of the uncertainty of law change and the abominable change in examiner actions that has driven our time to issue to 3 and 4 years or more, forced us for the first time in a 44 year history of patent filing to do an appeal with more likely. mostly because of examiner malfeasance in order to meet quota.

    Our costs have gone up nearly three times! We have to go for repeated rounds to overcome inane Office Actions with no substance created by Googled Obviousness (obviousness created by simple word search among patents to find words that can be linked to sound like the invention with no real in depth look at the substance).

    We have one examiner who has demonstrated personal bias because our invention was in the area he spent most of his adult life and he is jealous that any mere mortal could invent in that area so he makes up new rules just for us.

    Now we are looking at using the provisional system to get approval for publication and then filing foreign where we can get a fair shake at a reasonable price, have coverage and PCT file back to the USA buying years on market with issued patents for the US examiners to argue their way around.

    If the above gets popular then the USPTO income will shrink to nothing at all which right now is what they are worth.

    We need better treatment for the Individual Inventor, the backbone of American innovation.

  11. -American Cowboy,

    I was not contributing, and I don’t believe that my english is the problem. The problem as I see it, it’s just me ?. Believe what you want, it doesn’t matter to me, change is on its way. The change will be for one simple reason, the US patent system is not in total control in the world. Like it or not the world will want more valued IP then just a hand full of papers, photo copied and rubber stamped, because I can’t see their trust in US/US-style patents to see it anyother way. I have to say something about “you are an infringer and need to stop”, I know what you mean, but makes my point about the “photo copied and rubber stamped”, when talking about US patents; as if anyone could be thought of as an infringer without knowing something first.

    “Pay”, does not mean an “infringer”, how far did you jump to get that one ?. Seems little people are not important, and we, will have to beg our way making sure not to step on US patent landmines. Well that is good, I thank you for this insight into the thinking of the US patent system. You are wrong about other patent systems, as I have pointed out, the EU voted down “US style patents”; so I will ask you why if they are the same as US ?. Look, I will say I made a mistake comming here, I have no business here, my comments would be better off as votes with those people in Gov with change in mind, that change is made as the result. You see, it doesn’t matter if your vote is understood or not.

  12. “American patents hold a near and dear place in [some applicant's] dream, and it ain’t gonna change”

    Perhaps, perhaps not.

    Personally I’m worried about preserving the useful part of the patent system, the unquestionably statutory and unquestionably non-obvious subject matter of old, in the face of progressive agendas which will be the product of my generation and those that come after it.

  13. New Here, again thanks for contributing. I gather English is not your first language, but now I see a point you are trying to make; that others who innovate get ensnared in patent litigation because of already-granted US patents. Well, my friend, sorry about that, but if there was already a US patent when you started, you are an infringer and need to stop. That is fundamental to any patent system– not just ours. It has been that way since 1790 in this country and has led to the incredible changees that have taken place in our way of life since 1790. American patents hold a near and dear place in the American dream, and it ain’t gonna change.

    Why are most pharmaceutical inventions made in the US? Because the rest of the world gives watered-down patent rights and allows compulsory licensing of pharma patents; there is no incentive to innovate where that is the result.

  14. -Noise,

    “please leave the boards”
    yes, I will take you up on that soon:

    Someone having less knowledge of the patent system has little to do with the larger problem. The US patent system has and continues to bring questions about the patents it grants, these questions are comming from all over the world not just the US, or from those with knowledge of the US patent system. The US patent system, that others in the world will gain a larger say on, because they in my opinion see as a threat, not a place that innovation is created. This is not just my view, reading I see it is the view – opinion of many and a problem many will soon want to address to protect their own innovation from. I hope this change happens and happens soon, I would like to return to being able to create without fear or litigation hanging over my head because I don’t spend the money to having every thought/idea patent researched first. Please, look up what the rest of the world is saying and build a view of those like me that pay for what is wrong with the US patent system today.

    Thanks.

  15. “Ha ha ha, you are something else, you go on so…”

    New Here,

    please leave the boards if you refuse to make sense and laugh at those who try to help you.

    Also, it might help if you had a clue as to what you want to throw your stream of conscience crap at.

    I didn’t think it was possible for anyone to have less knowledge of the patent system and of the English language than 6, but “New Here”, you make 6 look like an intellectual giant, and that is no small endeavor.

  16. “”plans at creating a “nationwide workforce” of patent examiners.”

    In the PTO’s 2007-2012 Strategic Plan, the PTO listed “● Expand telework and explore establishing regional USPTO offices”. In my past follow ups to the PTO on this, it appears that regional offices were tabled in view of the favored telework. For a “nationwide workforce”, I would surmise some “brick and mortar” scenario since applicants can personally interview examiners, unless applicants would be going to examiner’s homes – doubtful.

    link to uspto.gov

  17. “to argue with the clueless seems something that should be well under you as you seem to think it is.”

    Not gonna argue with you on that one. Thanks for trying to contribute to the discussion.

  18. American Cowboy,

    Ha ha ha, you are something else, you go on so about the process as if that clears up anything other then being based upon what you think you see or don’t, in my reply to you. Iam not an applicant, so my idea of what innovation is, is not a matter to solve here with you.

    “New Here seems to be in favor of “innovation,” which he distinguishes from the work product of the Patent Office. I would be interested in his views on how “innovation” differs from a new and useful machine, process, article of manufacture, process or improvement on one of these of a nature such that it was not obvious to a person in its field at the time the inventor came up with it.”

    Above, is the question I gave the reply being the problem with the ideas of innovation and not what innovation is, in my opinion. As you outlined above,

    “innovation” differs from a new and useful machine, process, article of manufacture, process or improvement on one of these of a nature such that it was not obvious to a person in its field at the time the inventor came up with it.”

    so, I gave,

    “Innovation” is in the eyes of every inventor, and quality is always the claim of every invention.”

    Above is not complete to you ?, it was never to be, I have no idea what you would want to make it complete. My opinion though, about what innovation is not ?, is that the PTO and its process is running on the inventors, the exams having nothing more then a choice to make based on so many other inventors,to distinguish them to complete the choice of “innovation” and quality. Again, what terms are these inventor’s ideas put into they share with the exams; it is imporant, as how do I understand you, if you were to talk only in some special language that I don’t have your understanding of. If I don’t have this understanding, how do I go about it to distinguish it from the language of others without some common base ?.

    Being a member of the general population being clueless as Iam and stated so up front, I can’t see how you could gain anything asking me such a question in the first place and I will say be wise and place your questions with care, to argue with the clueless seems something that should be well under you as you seem to think it is.

  19. Well, we heard from New Here, and I am still as in the dark about what he/she/it thinks innovation is. I would still like to hear about that, rather than vaque references to quality.

    The statement “Innovation” is in the eyes of every inventor” seems to me to indicate that the inventor gets to say for himself if he gets a patent (assuming New Here means that innovation is all it takes to get a patent). That is not how it works.

    New Here, you raise some questions about what goes on in the Patent Office, and indeed, most folks in the general population are clueless about what goes into examining a patent, so you are not alone.

    To put it into a nutshell, the applicant submits an application that has things called claims that define what he thinks is his invention. The examiner looks at those claims, plus additional explanatory material that insiders call the specification, and then looks at earlier patents and printed publications to see if he claimed invention is new and non-obvious. The examiner and applicant often engage in a dialog via paper sorting these issues out, including possible amendments of the claims.

    Also, part of the examination process, the examiner rules on whether the right type of subject matter is being claimed, since abstract ideas and natural phenomena do not qualify for patents.

    Further, applicants have a duty to bring to the examiner’s attention any adverse information they know of, including prior technology that may indicate the invention is not new or would have been obvious.

    Now, what is your objection to this process?

  20. For good or bad, I am not intentionally pulling your leg. I am just trying to think what a top manager would do when confronted with difficult starting parameters: no money, no staff, too much work, losing customers.

    I don’t think my scenario will bring be much more work for EPO practitioners. I think the only people who will take advantage of this route will be people who in any case filed with the EPO.

    As for costs, EPO prosecution may be expensive, but for Applicants riding the “RCE gravy train” is ultimately more expensive and more frustrating.

  21. Erez, that’s fascinating. I read your:

    “automatic USPTO allowance of EPO granted claims”

    and think:

    Whatever is the world coming to.

    You’re pulling our legs, I still think.

    But, we shall see.

    If what you visualise comes to pass, will there be fresh supplies of lucrative work for experienced EPO practitioners? Rumour has it that their services are already exorbitantly costly.

  22. Max:

    No, I don’t think training in US practice is necessary. Non-US offices usually find killer 102 art and give strong hints as to what amendments will render the claims patentable.

    I would not be surprised, for example, if Kappos will allow Applicants to waive USPTO examination in exchange for automatic USPTO allowance of EPO granted claims, a sort of super-PPH.

    My take on Kappos comes from my understanding that he has been in the business a long time (prior to the 2003 change in the USPTO) and has formidable experience in international prosecution. He can easily compare the true costs of the different offices.

  23. Mr Gur, do you see any necessity to train these Examiners in “non-US patent offices” in how to allow US patent applications? Will it be somehow easier for USPTO management to train non-US patent office people than to train newby USPTO Examiners in DC? Is that because these non-US Examiners will already have been trained in their home country? If so, will they have any difficulties in adjusting from their domestic law to US patent law?

    Your take on Kappos caught me by surprise. I still can’t imagine your vision actually succeeding.

  24. dunBsillie,

    I was referring to reports that Kappos mentioned “global worksharing”.

    Due to Kappos’ international experience and the fact that he was a manager of a competitive business, I assume this means that he will outsource examination (up to and including allowance) to non-US patent offices.

    The advantage for the USPTO (as a business with a $200e6 shortfall), is to get more work done without having to hire and train more staff, and that such work can be funded on an ad hoc basis.

    My belief is that the non-US examiners will turn out to be cheaper per application (not necessarily cheaper per hour).

    I do hope I am wrong, because I share your concern that after the backlog is overcome, the USPTO might still prefer outsourcing examination. My sincere hope is that the US Examiners will learn from their foreign colleagues and this won’t happen.

  25. If we think of cars or cameras, they are infinitely more complex, these days, than the crude boxes they once were. Yet, curiously, they never break down. They are a shining example of the design skills of creative human beings.

    I don’t want to go back to crude boxes. I like operating my brilliant car and my brilliant camera. Being old now, I’m constantly amazed how much I’ve got, for how little money.

    Making things “simpler” isn’t the answer, is it folks? I actually want sophisticated solutions to the complex problem of processing patent applications quickly, so that it’s also fair. Dave, I think you need not only beautifully written and powerful search and office administration IT, but also a statutory and judicial roadmap that leaves nobody in any doubt as to the Rules of Play.

    The thing is, I don’t see how you can get what you need.

    Sillie, you only have to look at an issued US patent, and see the first five to ten pages of small print, consisting of an almost endless list of prior publications, to see that something is unnecessarily clogging the US system. Where else in the world does one see flyers carrying so much useless excess baggage? How much are you all paying, for this ridiculous excess baggage?

  26. Erez Gur wrote:

    “Apparently, examination by non-American patent offices (e.g., UKIPO, Russia, Korea) is cheaper and more efficient than by the USPTO.”

    What’s the point of this? you do want protection for your IP from the US government, right? if you’re IBM or Microsoft, you do want to be competitive in the US market, right?

    also, people in those countries who hold position similar to yours are probably cheaper. Now, do you realize where this is going?

  27. You guys are too much. The post says “easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources. While waiting for broad reforms to take effect, Kappos also suggests mechanisms for shortening pendency for focused sectors of technology.”

    Firstly, they’re apparently Dennis’ words, not Kappos’. And secondly, they don’t suggest anything about what is meant by ‘mechanisms for the worthless cases to be more quickly abandoned’. Based on one sentence, you’ve already conjured up patent death panels. Let me guess, you guys were all hanging out in front of the Capitol this past Saturday weren’t you?

  28. American Cowboy,? -sorry if double post-
    I guess I have too many points, so read and take it that way !.
    But, in “plain english” just for you, the US patent system as it is,it has become a tool to obtain monopolies on information and ideas, not innovation. “Innovation” is in the eyes of every inventor, and quality is always the claim of every invention. So talking on claims, can you point out for me where within PTO exams what the terms are the inventor’s view of innovation is understood ?, as well the process by which PTO exams distinguish claims of inventors to arrive at quality before a grant ?. So if you want answers from me what my views are on the questions you gave, I will need to understand more about this process within the PTO. At this point I can’t see a clear picture to offer what I believe should be accepted as innovation much less quality.

  29. Streamlining the examination process is the key to reducing the backlog.

    Currently, far too much of an examiner’s time is dedicated to non-core-examining tasks: from hunting down LIEs who misplace or are otherwise unable to timely process documents to rewriting and correcting applicants messily submitted amendments to reviewing hundreds of irrelevant IDS documents to avoiding attorneys’ gamesmanship to attempting to cut through the red tape that is undocumented office policy to continuously contacting supervisors and transfer specialists who have no incentive to do their job properly to working with dysfunctional tools.

  30. Another one telling me what “Americans” think. Broje:

    “Max,

    The only thing Americans want from Europe are wine, perfume, and spaghetti”

    I’m sceptical. I suspect Americans “want” not even their wine, perfume and spaghetti to come from Europe. They want it to have the cachet of a European-sounding trademark, but would rather it came “from” somewhere like (wine) California, or (perfume) the East Coast south of NYC.

    But what do I know. Broje will correct me.

    And anyway, which of these three was even invented in Europe? Perhaps spaghetti. The rest I suspect not.

  31. If I go to the effort to write up a patent application and spend the money for a filing fee, I must have some hope that my invention is not worthless. Since I paid the fee, am I not entitled to even an examination and FAOM?

    And, if it is so obviously worthless, it should not take luminaries like 6 more than 10-15 minutes to do the job.

  32. To mitigate the gnashing of teeth over this whole “worthless patent” thing, my take on it is that a patent (or an app therefor) has “worth” as intrinsic quality. The hope is that, through good work by both the examiner and the attorney, the applicant will get a good idea what the intrinsic worth of the app is, so they can make a better-informed decision whether to abandon a case or not.

    In other words, the PTO isn’t going to start judging the worth of your inventions, not even for the schadenfreude.

    Of course, I’m not sure how this is supposed to tie in to pre-FAOM interviews. Maybe someone else has an idea on that one.

  33. “The Director can offer a refund of the search fee or more to encourage companies to abandon worthless patent application.”

    Unfortunately, the cash cow of Congress has gone dry. cite: hank williams, sr., “EVERYTHING’S Okay”.

  34. I just don’t like the PTO determining what is worthless and what is not. That’s not the job of the PTO- no language in 35 USC. Furthermore, there are already mechanisms that are highly controversial- e.g. over subject-matter, for instance. Why inject more controversy (and more litigation) into the PTO? Focus on procedural mechanisms to speed things up (if possible), otherwise, work on Congress to get more funding. Don’t diminish a Constitutional right to a patent as a means to a “worthy” end. That’s the tyranny of good intentions

  35. The Director can offer a refund of the search fee or more to encourage companies to abandon worthless patent application.

  36. “My clients have reduced filings drastically and are dropping cases like crazy” Mine too. I think that the main reason is the Great Recession though.

  37. >> I asked awhile back if you guys would be pissed if Kappos told you the same thing Dudas did. It looks to me like he is starting to, he’s just sugar coating it. Making it more swallowable for you guys until his master doomsday plan comes out.

    I think 6 is correct in this assessment. Kappos is window dressing. He will be left to spin furiously on issues of process to mollify the patent community. Meanwhile substantive policy will be decided by appointees like Arti Rai, which is to say patent “experts” with no substantial patent experience and an anti-patent bias.

    On the upside, it is likely that the backlog will erode as the natural result of reductions in filing and abandonments. My clients have reduced filings drastically and are dropping cases like crazy. In two or three years the discussion topic on these boards will be the much diminished PTO. My be is that layoffs start in 2010 and continue for several years.

  38. Hagbard, my eyebrows went up too. But I thought it not my place to reply to Curious. Thanks for your valuable contribution.

  39. anonymous,

    Would it be fair to say that such a system we are discussing would be ironicly making a “compact prosecution” by adding a prosecution step?

  40. “”There is enough experience of patenting of pure business methods now, in the USA, to understand why the founding fathers of the EPC opted to exclude them from patentability.”

    One of the disadvantages was the lack of a body of prior art and experienced examiners. That is no longer a problem in the U.S.”

    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    no, wait
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    phew…
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    choke, splutter – thud!

  41. Good post Cowboy. Yes, do respond New. But, when you do, remember that the patent application will be invalid unless it contains a written description that enables the reader to realise the invention claimed, throughout the ambit of the claim.

    And a rider: Is your “so-called innovation” narrower than current patentability criteria in the USA? Do you think that “innovation”, to be protected by utility patents, should be confined to specific solutions to real and objective problems which are “technical” solutions (ie not pure business methods)?

  42. New Here seems to be in favor of “innovation,” which he distinguishes from the work product of the Patent Office. I would be interested in his views on how “innovation” differs from a new and useful machine, process, article of manufacture, process or improvement on one of these of a nature such that it was not obvious to a person in its field at the time the inventor came up with it.

    And New Here, please don’t just type a stream of consciousness post, but rather type what you think, and then go back and look at it to be sure that it says what you think before hitting the “post’ button.

  43. “”plans at creating a “nationwide workforce” of patent examiners.”

    which means that (1) newbie examiners will not get one-on-one mentoring and (2) it will be next to impossible for Applicants to get personal interviews with examiners”

    Why number 2? It would seem likely that Examiners would be assigned cases based at least in part upon where they are located.

  44. How would any evaluation of patentable worth be done without some dedicated resource?

    I doubt it could. But there’s still a significant time difference between indicating lack of patentability, and doing a full FAOM, at least in cases that (appear to)lack patentable subject matter. A quick analysis could could either lead to a quick abandonment or a more focused examination:

    App A is directed to invention B, disclosing supposedly novel features C and D. References E and F teach these features respectively.

    Either it’s correct, and the case should be abandoned, or it’s incorrect, and arguments/preliminary amendments are made to focus on novel features, and the full FAOM gets written. Either way, overall examination time is probably getting reduced, improving pendency.

    I don’t think there’s anything inherently wrong with Kappos’ concept, but naturally it all depends on implementation.

  45. anonymous,

    Do you think this portends a two step examination process, with the first step an overall evalutation to thresh out the really ugly applications that appear completely unpatentable?

    How would any evaluation of patentable worth be done without some dedicated resource?

  46. “”What is “worthless” and what is “valuable?”

    If an “Actual Inventor” offers a patent for licensing and no one takes it, the patent is worthless.”

    If the comment actually had anything to do with issued patents, maybe this would be relevant. The comment at the root of this discussion though is:

    “easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources”

    Once an app goes to patent, acceleration and abandonment are not particularly relevant terms. This isn’t a free market issue, its an examiner market issue. Should significant examiner time be wasted on cases that nearly everyone involved knows are going to go abandoned eventually because there’s no allowable subject matter? If so, why?

  47. “On a totally unrelated note, does anyone see the similarities between “easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources” and what Dudas said the entire time he was here. The same things that got all you attorney pissed?”

    What Dudas did was institute the “reject, reject, reject” mentality. Kappos has already shown he will not do that.

    I am all for rejecting claims that should be rejected. I am NOT for rejecting claims that should be allowed, just because “rejection = quality.”

  48. Good morning Appealho, Yes I agree, I must really try to lighten up, when somebody coldly insinuates that Europeans are malevolent apes. I must also try in future to avoid loaded words like “founding fathers”. I see now that this was unnecessarily provocative (although at the time I thought it unremarkable, inoffensive and apt).

    Malcolm, thanks for the advice to “get out”. Anon, I laughed at your observation on “staying in”.

    6: thanks for your comment too. We both await a result, in Bilski.

    And New Here, I’m glad you found my observations helpful.

  49. You’re jumping to the conclusion that the PTO will evaluate apps as to their value by evaluating their subject matter. More likely the PTO would provide ways for applicants to indicate their relative value, e.g. deferred request for examination (would prevent FAOM being performed on cases that are already given up on), pay a fee to have your case made “special”, pay an even larger fee to not have your case examined by 6, etc.

  50. “What is “worthless” and what is “valuable?” In a free market system there is only one who is eligible to answer this question. The consumer. Neither the PTO, or Examiners, have any business whatsoever answering this question”

    I agree, Actual Inventor. (Or it also could be the Applicant himself.)

  51. hmm, so we’ve learned that:
    Kappos wants more (faster) patents,
    Kappos thinks that at least some applications are garbage which waste USPTO resources,
    there needs to be legislative change to patent law, and
    the USPTO will have a MASSIVE shortfall (apparently even after the budget cuts already in place at the USPTO (e.g., no overtime, no hiring, etc.)).

    It’s almost like listening to the fresh college graduate and his plans to change the world, before the real world teaches him that his future is already determined.

  52. “What is “worthless” and what is “valuable?”

    In a free market system there is only one who is eligible to answer this question. The consumer.

    Neither the PTO, or Examiners, have any business whatsoever answering this question

    If an “Actual Inventor” offers a patent for licensing and no one takes it, the patent is worthless.

    If said inventor goes it alone and take the invention to the marketplace and no one buys it, the invention has no value.

    And while the likes of blog characters like MM, and 6, can spew their customary litany of swear words, insults, and racial epithets all they want, it’s the consumer that has the final judgement call.

  53. Kappos is keeping this appeal to get an en banc opinion as to the USPTO’s rulemaking authority. He’ll ditch the rules, but will use the opinion to craft other rules (like the IDS rules that have been in limbo forever).

  54. ” asked awhile back if you guys would be pissed if Kappos told you the same thing Dudas did”

    The principle is fine, but the implementation details do matter. If the implementation involves not letting applicants file applications with priority claims under 35 USC 120, there will be more squawking.

  55. “You need to get out more, MD.”

    Actually, to know a subreference to Planet of the Apes, wouldn’t you need to get out less and opt watch television in your mom’s basement?

  56. “What is “worthless” and what is “valuable?”

    A disclosure of a business method I would have to say probably fits in the former.

    On a totally unrelated note, does anyone see the similarities between “easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources” and what Dudas said the entire time he was here. The same things that got all you attorney pissed?

    I asked awhile back if you guys would be pissed if Kappos told you the same thing Dudas did. It looks to me like he is starting to, he’s just sugar coating it. Making it more swallowable for you guys until his master doomsday plan comes out.

    Personally I can’t wait to see you guys assault one of your own because he’s telling you news you don’t like to hear.

  57. RE:#1- “easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources”

    AND

    “mechanisms for shortening pendency for focused sectors of technology”

    By whose standard(s)?? What is “worthless” and what is “valuable?” Which “focused sectors of technology” get shortened pendency and why?

    This definitely should require an act of Congress in my mind. Otherwise, allowing the PTO to make rules regarding these issues would give the PTO way too broad authority over very subjective issues. Thus, these issues are prone to arbitrary rules, with tenuous bases. Let Congress deliberate on these matters (rather, MAKE CONGRESS DELIBERATE- if that’s possible)

  58. “That is no longer a problem in the U.S.”

    You sure about that?

    To my knowledge and understanding this breed of applications is one of the major issues resulting in the creation and maintainance of the current levels of backlog.

    Was that not what D’s stats showed not more than a year ago?

  59. “I hadn’t heard of “Dr Zaius” ‘

    MaxDrei,

    I doubt that the authoritarian governments of Eastern Europe would allow you to watch the “Planet of the Apes” movie. You might get too many independent thoughts, like asking why the software-as-such doll nonetheless squeals even though the doll is supposed to be mere abstraction? Time to come out of the cave and smell the sea breeze pounding on the fallen Statue of Liberty. ;-)

  60. “There is enough experience of patenting of pure business methods now, in the USA, to understand why the founding fathers of the EPC opted to exclude them from patentability.”

    One of the disadvantages was the lack of a body of prior art and experienced examiners. That is no longer a problem in the U.S.

  61. Appealho, I hadn’t heard of “Dr Zaius” so I looked him up on Google. Very reassuring, in that it reduced your comment to complete vapidity.

    And there was me, thinking there might have been something of value in your contribution. More fool me.

  62. RE: “I don’t even know what an ‘inefficient use of Examiner’s time’ means. Does it mean that the subject matter claimed and examined is ‘silly’?”

    “Silly” would be the antithesis of the original referenced comment – an off-point judgmental term in the same bin with “worthless.” The original comment suggested “worthless” and “valuable” are not helpful terms as to the issue addressed in the summary by Prof. Crouch, and suggested that perhaps the issue might be more accurately addressed with terms such as “inefficient” in the procedural sense – not producing the intended result and/or wasteful of time and resources, e.g., an outdated (perhaps counterproductive) prosecution process.

  63. Yes, Dr. Zaius and the other founding fathers would have nothing to say, see or hear about “programs for computers” and “methods of doing business.” Very wise indeed.

  64. New Here, the European Patent Convention, written in 1973, bars from patentability (amongst other things) “programs for computers” and “methods of doing business”. An inter-governmental conference in 2000, convened to update the EPC, decided to leave these prohibitions in place. More recently, the free software movement has been kicking up a fuss, picked up by the European Parliament, to ban from patentability all computer-implemented inventions.

    There is enough experience of patenting of pure business methods now, in the USA, to understand why the founding fathers of the EPC opted to exclude them from patentability. The jury is still out, on the question whether they are doing the US economy good or harm.

    Does that add anything useful for you?

  65. “Does the article mention what has happened to the total number of patents in the past two decades?”

    Well, the total number of patents issuing each year for the past ten years has remained relatively constant

  66. I wish Kappos would forget about pendency for a while and concentrate on examination quality. I and my clients would rather have it right than quickly.

  67. “As a percentage of total patents? LOL. Does the article mention what has happened to the total number of patents in the past two decades?”

    fair enough, here’s the stat. About 2x for utility patents.
    link to uspto.gov

    Only 93 trial patent cases/year probably explains the litigator beauty contests.

  68. “Does the article mention what has happened to the total number of patents in the past two decades?”

    number of patents has probably been increasing at same rate as has been for the past fifty years

    number of patents has probably been increasing at the same rate as the number of scientific articles published

  69. MaxDrei, I will start by remebering that software patents were rejected by a 648-14 vote by the EU in 2005,
    having found this information after researching it before I got back with you. Its as I remember the rejection was based on “US-style patents”. What the mutual reason for being against US-style patents by
    each of the 648 I can’t say for sure, but on a personal thought I guess the reason to be the US-style patents would have US corps/companies with “power” within the EU, that the EU would have given them had the Law passed. This “power” it brings it’s own challanges as we have in the US when claims are the issue, the US corps/companies vs EU corps/companies I guess is something they wished to avoid. The US patent system has something to offer as you have said and I agree, what is lacking in that offer though in my opinion is enough respect from US corps/companies for the EU in this case, those US corps/companies having US -&- US-style patents world wide, some I guess just don’t see the offer from the US patent system as being what their innovation should be up against. Its my guess on this, seems to be too much control given to US corps/companies, by those that would pass Law to provide it. The EU has many points of view across it and it seems in 2005 that most of them agreed, that has the differences still with us.

    I hope my points are understood,I get carried away writing sometimes.

    This is only one source I used here:
    http-knowledgeproblem.com/2005/07/06/eu_rejects_usst/

  70. “The Federal Judicial Statistics document that the number of U.S. patent lawsuits as a percentage of total patents have not changed significantly”

    As a percentage of total patents? LOL. Does the article mention what has happened to the total number of patents in the past two decades?

  71. I don’t even know what an “inefficient use of Examiner’s time” means. Does it mean that the subject matter claimed and examined is “silly”?

  72. Amplifying both “Anon Y. Mous” and “anonymous” above:

    I cringed when I read the use of “worthless” and “valuable” as they appeared to be used as judgmental terms in Prof. Crouch’s synopsis of Director Kappos’s remarks to the IPO. If the terms were meant (by Crouch or Kappos) to describe prospective patentability, then perhaps there could have been a better word choice. If the terms were meant to describe an inefficient use of Examiners’ time, and/or a mismatched fee schedule for services provided, and/or the application of counterproductive prosecution metrics, then again there could have been a better word choice.

  73. Even if Tafas goes the distance and the PTO gets the authority to implement the rules, it doesn’t mean that they have to. Kappos can pull them even if the PTO wins.

    So lololol to the goatse crew (6, Mooney et al.).

  74. I think Paul F. Morgan is correct. This power struggle has become bigger than the Office.

    Chevron Deference, may I introduce you to Tafas Deference.

    The fight will go the distance.

    fisher ames,

    Nice post – this is also reflected in the conversations with Chief Circuit Judge Michel that have been on this and other patent blogs in the past. The kool-aid of litigation is brought to you by the powers that want strong patents (or any patents) dismantled.

  75. New Here, I’m curious. You seem to have a reasonable view of where the problems lie, in the US system. So, do you have any views on the patent system as it works in Europe? The issues are very different.

    I’m always thinking that Europe can learn from America, and vice versa, to take the best and discard the worst features of the respective (very different) systems.

    And I think this because that’s what happened when the European Patent Office was founded. The worst features of all the national systems of filing and prosecution in various “leading” European countries got all washed away.

  76. “How can a government agency possibly even begin to determine which cases are “worthless cases”? Only the market can accurately determine the value of a patent.”

    Worthless in terms of examination time. You don’t have to be an examiner, attorney, or even PHOSITA to pick up a spec and be able to truthfully say “I’ve seen absolutely everything in this application before.” There are plenty of applications that have nothing allowable in them, and they contribute to the backlog. Spending an amount of time on an application that is clearly non-novel is time that is not spent on those that may possibly contain novel features.

  77. “In the Q&A session, Kappos was asked about Tafas v. Dudas and its potential resolution. He joked that it might aptly be renamed Kappos v. Kappos based upon his history of opposing the rules package and his new role as PTO director. Despite his predilection against those particular reforms, Kappos may not have power to extricate the Government from its position.”

    lolololol

  78. “$200 million shortfall for FY2010.” Who could have predicted that? Well, Mongo could.

    1. PTO income come from patent apps and patents
    2. PTO slam hard patent apps
    3. Businesses stop pursuing their slammed-hard apps
    4. Money stop flowing into PTO from ended prosecutions and unrealized maintenance fees
    5. $200 million shortfall for FY2010

    Love, Mongo

  79. fisher ames,
    the information you provide Iam in no position to say one way or the other about, but I will say from a personal feeling, its become a dice roll and hope the day never comes when I get the cat eyes.
    Thanks.

  80. MaxDrei, I respect your take on my post and my bad being pessimistic, but I was not talking about all patents or all litigation being wrong with the US patent system. Patent quality is in question, a real problem in fact and Iam not being pessimistic when I say examination is at the heart of that problem that it seems Kappos wants to address. Its my view too many want their patents granted on their claim it’s innovation, I take this view from the news on “bad” patents that are challlenged after they have been granted, and the litigation that follows these patents that are not in check. I don’t claim to know the ins & outs of the Law on patents, my position is Iam a small player in world and have my life and future to think about in terms of opportunity being around without the need for patents, so, I do say things without remembering those that have a larger picture of the Law on this matter.
    Thanks.

  81. ” …while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources.” Does this quotation concern anyone else? How can a government agency possibly even begin to determine which cases are “worthless cases”? Only the market can accurately determine the value of a patent. The PTO should stick with applying 101, 102, 103 and 112 to the applications. Nothing more; nothing less.

  82. New Here, poets and beekeepers, please note the following:

    “The Federal Judicial Statistics document that the number of U.S. patent lawsuits as a percentage of total patents have not changed significantly over the passed two decades and remain at approximately 1.5 percent of all patents issued with 93 trial patent cases annually in a system with 1.8 million active patents.” link to en.wikipedia.org

    Now, the mix of plaintiffs may have changed though, and that’s the rub. fisher out.

  83. “Why? Seems to me this means that, for some people, this may mean traveling less for an interview.”

    Exactly. One need not look at too many other agencies to see that field offices are hardly novel! JMHO

  84. Max: except for maybe PPH, I haven’t seen USPTO using other examination corps.

    “Can’t wait to see..”: Apparently, examination by non-American patent offices (e.g., UKIPO, Russia, Korea) is cheaper and more efficient than by the USPTO. Coupled with some motivation for companies to withdraw non-essential patent applications (e.g., accelerated examination of other applications) you may start working your way through the backlog which will generate revenue.

  85. Presumably the reason Kappos apparently cannot just kill all or part of the PTO rule package in litigation to end that litigation {and also maybe why the CAFC took it en banc} is that various other Federal agencies with more clout feel that holding any Federal rules even partially illegal [the current status after the CAFC panel decision} will encourage more litigation against their own rulemaking.

  86. Re #3, why wouldn’t Kappos be able to get the rules litigation dropped? Why on earth would it continue if the PTO director were against it?

  87. Sounds a little like nobamas ideas on health care – we’ll get more of it, we’ll get it faster, and we’ll get if for less money. It’s that easy. Gee, hard to believe we didn’t come up with this idea sooner. If we did, the USPTO would be in such good shape.

  88. Erez, it’s happening already, isn’t it? (Still, I don’t mind if Mr Kappos encourages it, and claims the credit for what has already started). Examiners picking up a file in another Patent Office are borrowing the search results and objection methodology from the EESR on the sister file, downloadable http://www.epoline.org from the EPO file. In my technical field (not EE and not bio), the EPO issues its EESR just a few months after the filing of the app at the EPO, ie earlier than the moment when other PTO’s get going.

    What do you say, 6?

  89. Other reports have noted that Kappos mentioned “global worksharing”, apparently asking help of other patent offices.

    In my opinion, this will be the single most important change that will solve the examination-quality problems and reduce pendency, especially in light of the USPTO’s $200e6 shortfall.

  90. New Here, I regret that you have such a jaundiced view of the patent system. I think you are wrong to see patent litigation as a sign of a system in distress. The only reason anybody spends money filing a patent application is to get a piece of paper whose only value is that it can be taken to court and enforced by order of a judge. A sign of a bad patent system would be that there is no patent litigation. Look around the world.

    Litigation ought to be a last resort, that will deliver speedy and fair justice, if all else fails. In other words, it should provide a powerful incentive for the combatants to settle quickly, and short of trial, with both nevertheless having the feeling that they have come out of the dispute with a “fair” result. Uncertainty as to the outcome delays and deters investment in business and new jobs.

    Does all that happen in practice? If not, why not? Where does the blame lie? That’s a hard question, but able minds are struggling with it and you can expect improvement, relative to the situation we have today. Don’t be so pessimistic.

  91. New Here,

    Different blog, same crap.

    You are still posting gibberish:

    “A change for quality starts with you must get the view of innovation out of the hands of applicants !, having examination independent, not examination just serving those seeking patents on their own terms and claims.”

    What are you trying to say?

    Are you saying that the hands of applicants in viewing innovation is the reason for poor quality of examination?

    What is independent examination? Is it different thatn what we have now? How? How do you have examination not serve those seeking patents? What do you mean by those seeking patents on their own terms and claims? Whose terms and claims should those seeking patents use?

    C’mon man – THINK before you post.

  92. curios wrote,

    “which means that (1) newbie examiners will not get one-on-one mentoring and (2) it will be next to impossible for Applicants to get personal interviews with examiners”

    Why? Seems to me this means that, for some people, this may mean traveling less for an interview.

  93. Whatever is done its imperative the quality of patents change, because as it is now so called innovation contributes only to advance litigation that kills the growth of innovation outside the PTO. The PTO has nothing to do with innovation as is, and a claim it does is a joke. A change for quality starts with you must get the view of innovation out of the hands of applicants !, having examination independent, not examination just serving those seeking patents on their own terms and claims. Today too much so called innovation makes it’s way to a desk for litigation and nothing more; not at work in the real world as is sometimes claimed.

  94. I thought that, about 5 years ago, the PTO was running such a large surplus that Congress was moving hundreds of millions per year from the PTO into the general fund. Are filing and maintenance fees down that much since then or did all the money go to Government Motors?

  95. “plans at creating a “nationwide workforce” of patent examiners.”

    which means that (1) newbie examiners will not get one-on-one mentoring and (2) it will be next to impossible for Applicants to get personal interviews with examiners

  96. “Despite his predilection against those particular reforms, Kappos may not have power to extricate the Government from its position.”

    I thought that the Justice Department would make that decision.

  97. “[K]appos also suggested that plans at creating a ‘nationwide workforce’ of patent examiners.”

    I can’t wait to hear how this is going to work.

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