PTO Director Kappos has two interesting recent posts on his blog:
- Reengineering the MPEP (Asking for suggestions on improving the MPEP and questioning whether it should be developed as a WIKI).
- Thanks Patent Team (Anecdotes from practitioners that patent examiners are doing a better job of suggesting amendments that lead to allowance).
it is the clear application of law to my clients’ benefits.
It is not to your client’s benefit if your client doesn’t get a patent, no matter how well you apply the law.
It appears that our definitions of professionalism are at odds.
Look, I don’t mind you stroking your ego and sending three treatises on patent law to the examiner, as long as you informed your client in advance how much it would cost, how long it would take, and how unlikely it was to succeed. After three of these in a row, surely you must suspect the examiner’s motivations run deeper than “ooh, I found a cool new point of law, let’s apply it!” You can keep calling him on legal technicalities, but he sees something fundamentally deficient in your claims, and he’s not going to let that go because you argue the law. You are no closer to advancing your client’s interests than you were three rejections ago.
The patent application in question underpins his entire business and is quite literally worth millions.
If it issues before it expires.
On the bright side, at least some people still manage to build a business around a single patent application. That’s good news for fatalist and the Inventors.
“Your goal is to get the best patent protection for your client, not to win at examination.”
Sure, in an ideal world you’d keep arguing till the examiner realized you were right all along, but in the real world sometimes the best patent you can get is the best patent you can get.”
It appears that our definitions of professionalism are at odds. You appear to give up too easily.
My “winning” is not the focus – it is the clear application of law to my clients’ benefits. You make yet another assumption that trade-offs are not contemplated in the real world – of course, they are. Discussing the legal merits of such trade-offs on what I affectionately call the Trainwreck can emphasize the “should be” more than the real world “actually is”.
However entertaining this joust is, you should be clear that my “winning” IS in the best interests of my client. The patent application in question underpins his entire business and is quite literally worth millions. Perhaps you missed it as I shared the tidbit long ago – patent law is not my first career – I do have intimate knowledge of business. I do understand “the real world”, just as I do understand when to make a stand on important legal points. Your snide comment about not advancing to allowance is as beneath you as it is incorrect.
Real world – ideal world and knowing the difference.
I simply refuse to make amendments to overcome poor examination – I hope that you are not advocating such.
Your goal is to get the best patent protection for your client, not to win at examination.
Sure, in an ideal world you’d keep arguing till the examiner realized you were right all along, but in the real world sometimes the best patent you can get is the best patent you can get.
There was a similar discussion in another thread, where it emerged that it is sometimes the right approach to settle litigation on a possibly-invalid patent. The same considerations apply. You have to leave your ideal world behind and deal with the business realities of your situation. The patent system is entirely optional, and you should only engage it if it benefits you to do so. Your client, I mean. Obviously it benefits you if you get to bill for three OA responses of legal argument that haven’t advanced the application to allowance.
Real world – not ideal world.
IANAE,
“You’ve had three tries to show the examiner that his interpretation of the case law is “completely off the wall”, and you haven’t succeeded?”
Please do not make such assumptions. The three (mis)uses of case law are distinct – that’s why the actions continue to be non-final. I overcome the errant use of case law but new grounds are offered, and new malapropisms replace the previous arguments.
As to amendments – don’t get me started on the trouble down the road even simple amendments can bring. Mind you, I don’t mind making amendments where proper or needed – I simply refuse to make amendments to overcome poor examination – I hope that you are not advocating such.
Real world – not ideal world.
No Office action should be sent out with plainly errant case law (we are talking completely off the wall holdings – three times in a row now).
You’ve had three tries to show the examiner that his interpretation of the case law is “completely off the wall”, and you haven’t succeeded?
Yeah, something’s definitely wrong there. Clearly the examiner and the attorney are equally stubborn, but it’s hard to tell from here which of you is actually right. Or whether the whole thing could have been avoided by a simple amendment three actions ago that would have resulted in a real world patent.
Our lines of thought have crossed.
I am not suggesting that Examiners make new law – I am saying that they attempt to do so. Such attempts should be reviewed to the same standard of care that attorneys are expected to maintain. No Office action should be sent out with plainly errant case law (we are talking completely off the wall holdings – three times in a row now). No one actually said that the Office SHOULD be setting precedents, but that is what is being attempted. (Does it really surprise you that the Office tries for illegal power grabs – especially after the continuation rules fiasco?) Why should I have to go make a case to some sort of judge when the Office decides to interpret case law in contorted manners?
This I believe is yet another real world by-product of the insane quasi-average widget production model system in place and the exasperation of examiners told to reject “just because it doesn’t fell like that application deserves a patent”.
Real world IANAE, not your ideal world.
NO – I should expect to have my application examined to how the law actually is – without going to Appeal.
No. Examiners should not be making new law or re-interpreting the law. They should be applying the law as it currently stands and as best understood.
I don’t want examiners making those razor-thin distinctions. They will never be equipped to handle that, and I don’t want them in charge of setting these precedents. Go make your case to some sort of judge.
One thing I’ve noticed is that “common sense” is really not that common and this applies to both examiners and attorneys/agents.
Yeah. I did say I was being idealistic there.
One improvement I’d like to see at least in the electronic version is to have the specific case being cited open up in a new window when the link is clicked. Right now, I have to hunt up the case from the citation. Doable, but not as convenient.
“Examiners need to use a little common sense to know the limits of their rejections.”
One thing I’ve noticed is that “common sense” is really not that common and this applies to both examiners and attorneys/agents.
“you should expect to have to appeal.”
NO – I should expect to have my application examined to how the law actually is – without going to Appeal.
I want to clarify “how little” is a little common sense? KSR little?
KSR is not a ridiculous case. It basically stands for the proposition that combining two related known things to accomplish the known purposes of those two known things is no big deal. I’ve seen rejections like that even before KSR, and they’re not always terribly far-fetched.
Shouldn’t the Office understand the Law they are supposed to be applying when examining the application?
Yes, the examiner should understand the law if he cites the law. Even so, an examiner should rarely have to cite the law, and when he does the MPEP should provide enough understanding for his limited purposes. If the MPEP is wrong, that’s not the examiner’s fault. If you want to rely on an arcane nuance or change the law, you should expect to have to appeal.
I maintain that examiners don’t need to know a whole lot of law most of the time, and their time would be better spent refining search methods and understanding their technical field well enough to understand newly-discovered references and know what is or is not sensible to combine.
I find it hard to believe that you’re seeing a whole lot of examiners cite caselaw that isn’t buried in form paragraphs.
IANAE,
Agreed in most part, but since this is the Trainwreck, I want to clarify “how little” is a little common sense? KSR little?
I also want to tie in a thought recently touched upon in another thread – the (mis)use of case law. As attorneys, we have an ethical obligation to understand and apply case law appropriately. The Office should be held to the same standard.
I don’t mind when examiners use case law in a rejection – but at least come close to what the actual holding is in the cited case. I am now facing a third in a series of non-final rejections where the examiner has “made up the Law” by citing a case incorrectly. Sure, I can answer – as IANAE points out – I have a vested interest, but should I have to? Shouldn’t the Office understand the Law they are supposed to be applying when examining the application?
In this regard, training to properly examine is much more than training to reject. Teaching one side of the coin simply does not teach where the edge of that coin-side is. If the examiner has no sense (common or otherwise) as to the edge of the coin, how can he apply “common sense”? In fact, even if an examiner IS hired with some modicum of “common sense”, the quasi-average widget production system is in place to stamp that out – I base this on numerous comments made by disgruntled examiners who voice their frustration with “the system”.
I have no doubt, that done correctly, examining is difficult work. Perhaps it is time that examiners obtain the equivalent of a JD in order to practice.
I believe that Crouton was trying to point out that a focus only on rejection (your position) is not the same as a focus on examination (Crouton’s position). I believe that Crouton’s position is that examination is not a one-sided coin wherein you get the whole coin by focusing only on one side.
I understand the distinction. However, I don’t think a focus on what is to be rejected is the same as a reject-reject-reject mentality.
Examiners need to use a little common sense to know the limits of their rejections. Whatever rationales are provided in the MPEP for rejecting claims, the examiner should satisfy himself that they actually apply to the case he’s currently examining before he issues the rejection.
Okay, now I’m being idealistic. Still, I don’t think any system can survive long without a healthy dose of common sense and pragmatism, and it’s high time patent prosecution got some of that. On both sides.
The MPEP is a big book. Really big. You’ve all seen it. Turning it into a law school textbook with multiple examples on both sides of every issue could easily double its size. That’s not what examiners need. They need the basic guidelines of what grounds for rejection exist, and what they mean. If they go a little too far, the applicant is well positioned to correct them. It’s the applicant’s application, after all. He has an interest in advancing it toward allowance.
The reject-reject-reject mentality does need to be addressed, where it exists, by properly incentivizing examiners and by subjecting both allowances and rejections to quality review. Also, both prosecutors and examiners need to stop seeing each other as the enemy. Examiners should know that it’s okay to allow claims when there really is an invention there and it’s properly claimed, and prosecutors need to be reasonable when their claims require amendment.
If the PTO can’t hire some examiners with a little common sense, no quantity of reference material will make up for that.
IANAE,
I believe that Crouton was trying to point out that a focus only on rejection (your position) is not the same as a focus on examination (Crouton’s position). I believe that Crouton’s position is that examination is not a one-sided coin wherein you get the whole coin by focusing only on one side.
The two are most definitely not the same – neither in theory nor practice.
You have retreated to your ideal world once again. Your focus would not alleviate type II errors, rather the focus on type I errors, vigorously approached – and single-mindedly presented – leads down the path to reject-reject-reject. We have seen this terrain before.
IANAE,
Examples that show when a rejection is improper are just as useful to an examiner as examples that show when a rejection is proper.
Making the whole thing a WIKI is not smart. Adding a section at the end where users could search and vote up good posts and remove bad posts (in their entirety to prevent vandalism) could be helpful, especially to new practicioners and examiners.
Even two sections would be good that you can toggle between one, both, or neither. The sections would be “what an examiner needs to know about this section” and “what a practicioner needs to know about this section”. The top pane would display the MPEP. The bottom left pane would display the examiner posts, and the bottom right pane would display the practicioner posts (highest ranked first, down ranked deleted).
No, it’s supposed to guide examiners in making proper rejections.
That’s what I said.
“It’s supposed to teach examiners what is not allowable”
No, it’s supposed to guide examiners in making proper rejections.
The cases cited in the MPEP are biased to favor the USPTO. In other words, the cases choses by the writers of the MPEP largely are ones where the court rules against the inventor applicant and rules in favor of the patent examiner.
What did you expect? It’s a manual of patent examining procedure, not a manual of patent prosecuting procedure. It’s supposed to teach examiners what is not allowable, so only the allowable stuff becomes patents.
If there’s a case out there that supports the inventor’s position, the inventor can point it out himself. It’s his job to prosecute his patent, notwithstanding the apparent helpfulness of examiners in that regard. Besides which, examiners tend not to be receptive to caselaw on either side of the issue. In my experience, the most persuasive arguments focus on distinguishing the art.
Lookout Guy–hear, hear!
Indeed, it’s hard to find any cases in favor of Applicant in the MPEP anymore. Older versions that had both types of cases were helpful in understanding the proper limits of rejection–something that had been lost as part of reject, reject, reject. Please, PTO, restore some balance and guidance to the MPEP.
An interesting invention:
link to physorg.com
Updating the MPEP wiki style would be a waste of time, as it would require enormous amounts of time filtering out fact from opinion and interpretation. See the bottom half of the wiki discussion page on the Quanta case for an example. The amount of time taken to police wiki contributions to the MPEP would be better spent actually writing/modifying the MPEP.
The cases cited in the MPEP are biased to favor the USPTO. In other words, the cases choses by the writers of the MPEP largely are ones where the court rules against the inventor applicant and rules in favor of the patent examiner. The cases where the inventor applicant wins have slowly been rooted out from the MPEP over time.
The MPEP should be revised to include more cases where the inventor applicant wins and less cases where the patent examiner wins.
A best approach would be a patent Wiki that serves as competition to the pricy “Chisum on Patents”.
Speaking as a patent searcher it would also be useful to use wikis for updating the patent classification schedule and to make corrections when patents are misclassified or need better classification.
someguy – we appreciate your efforts nonetheless. Even a head’s up about something in the spec that could be unique or an indication that nothing looks allowable can be helpful. We also appreciate your willingness to talk with us and explain your position. This can go a long way to wrapping up an application and avoiding an appeal.
Ha, yes, let’s make the MPEP a wiki. Then I can edit an entry just prior to sending out my office action. “IDS with more than 50 references will not be considered without sworn testimony from the applicant as to why each of them is relevant, along with an accredited urinalysis result that indicates that applicant has not been smoking crack. Please see MPEP xxx.05(f), which I just wrote.”
I should also add that miracles should not be expected if your client was too cheap to pay for a proper specification to be written. I know times are tough and clients are expecting more for less, but only so much can be done if presented with a spec that reads like it was written in less than half an hour by someone whose second language is English.
“…patent examiners are doing a better job of suggesting amendments that lead to allowance.”
Don’t get the idea that patent examiners are able to suggest amendments that leads to an allowance every single time though. I’ve dealt with some attorneys/agents who somehow got it in their heads that it was the examiners job to be able to not only somehow suggest amendments for every case to lead to an allowance, but to also write their claims for them. Can’t begin to express how annoying it is to deal with an attorney/agent with this attitude. My job is to do the best search I can based on the claims you present to me. If I run across anything that might be allowable subject matter either in the claim or in the spec during my search, I will let you know about it. I will not laboriously comb through your entire specification for something that *might* be allowable and take the time to write the claims for you.
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