BPAI's Backlog
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Currently the BPAI receives about 1,200 new cases every month, but only decides around 600 cases per month. As shown in the graph below the BPAI's backlog has been increasing exponentially since 2005. In 2005, the BPAI had a backlog of only 882 cases; however, currently the backlog is well over 20,000 cases. The average time for a case to work its way through the system is over 30 months. There are many reasons that can be contributed to the BPAI's backlog, but the 3 most important reasons are:
- The increase in the amount of cases filed per month. In 2005, the BPAI only received about 220 new cases per month; however, in 2011, this number was well over 1,000.
- The increase in the amount of patent applications filed per year. In 2005, the PTO received 390,000 new utility patent applications; however in 2010 the PTO received 490,000 new applications. Numbers for 2011 are not available, but it can be presumed to be about 500,000 new applications.
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The amount of money the PTO has to hire new judges. A BPAI judge salary is over $150,000 per year, and to effectively handle the caseload the BPAI would need to more than double the amount of judges that they currently have. To hire about 90 more judges, it would cost the PTO over 13.5 million dollars.
Schmirler v. Kappos: This case seems to raise some interesting issues about joint inventors (liability and rights) and patent fees.
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In Schmirler, full issue fee was paid by one of three inventors on his AMEX card. Power of attorney (POA) was transferred by all three inventors to a law firm to wrap up prosecution and POA by its terms was to cease when attorney received issued patent. There is some evidence that, after the POA was transferred, one of the inventors requested a refund from AMEX, not the USPTO. About 2 weeks after the patent issued, AMEX executed a chargeback to take the issue fee back from the PTO. The PTO did not discover the fee discrepancy until 3 years later, and when they did discover it they sent out a letter regarding the fee discrepancy. The PTO did not receive any response, so in January 2005 the patent was vacated. The case focuses on essentially one question; should Schmirler be allowed to proceed on his own to protect his patent rights that were vacated by the PTO? Complaint Schmirler-MSJ-Memo PTO-MSJ-Memo Schmirler-Response PTO-Response
The Smithsonian and USPTO collaborate on an exhibition
- The exhibition The Great American Hall of Wonders examines the nineteenth-century American belief that the people of the United States shared a special genius for innovation. It explores this belief through works of art, mechanical inventions, and scientific discoveries, and captures the excitement of citizens who defined their nation as a "Great Experiment" sustained by the inventive energies of Americans in every walk of life. The exhibition opened on July 15, 2011 and will close on January 8, 2012. [Link]
Patent Jobs:
- Snyder, Clark, Lesch & Chung is seeking a patent attorney with at least 2 years of experience to work in their Herndon, Virginia office. [Link]
- BASF is seeking an IP Counsel to work at their Florham Park, New Jersey location. [Link]
- Klarquist Sparkman is searching for patent associates or patent agents to work in their Portland office. [Link]
- Ambature is seeking patent attorneys/patent agents. [Link]
Upcoming Events:
- World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
- The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
- American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
- IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.
They say timing is everything. And in my Case it truly was. I visit the FLA BAR on June 10, 1997. I show Him a credit slip dated July 8th,1997. He tells me it is everyone else’s fault and scoots me out the door. 28 days. That would have been a world of difference.
Then again on July 12, 1999 He pulls it again. And that is after I am still trying to get what was really first allowed in 1997 finalized. And PUFF even after I fax to prove I paid the 100.00, it stays there for a mere moment. Then 6 months later another with the same Registration number? Now how in Gods name is that possible? It isn’t.
“Your statement merely reflects the greater input factor and says nothing about why that input is growing”
And here I thought he mentioned “lack of merit” now, I suppose you could call this “incompetence” but meh, whatev. You being incompetent yourself kind of blinds you to that being a reason I suppose.
Now, as to why incompetence levels are rising, well, f idk, maybe because of that lack of budget you were quoting me.
“You have zero basis for implying that meritless appeals have a disproportionate”
Why would it need to be disproportionate for the point to be made? If the reason applicant’s are turning to the board more is because they’re fed up with examiner’s being wrong, then we should see their percentage of wins shoot through the roof.
“more applicants are filing more meritorious appeals at a greater rate than ever before in the history of the USPTO.”
What makes you say that?
“Ask yourself “why” applicants are turning to the appeal process in greater and greater numbers. Ask yourself “why” applicants are fed up with what examiners are churning out. ”
Considering what an appeal is, the applicant believing the PTO is wrong substantively and going to appeal, wouldn’t we expect the applicants to be winning much much more, such that their percent wins went way up, if the cause of their turning to the appeal process is examiner incompetence, i.e. being wrong on the appealed issue?
Sure, I admit there are some side issues that might make the numbers of appeals go up a bit. But I will personally maintain that it is changes in the law that are chiefly to blame, as well as attorney incompetence and misunderstanding of the former. Examination did not all of a sudden get that much worse. By all accounts it sucked even way back in the day.
If it were any different then we’d see hardly nothing but a big ol’ tacked on chunk of wins for applicants. We don’t see that.
“Do not throw the smokescreen of “meritlessness” out there – do not throw the cannard of “blame the applicant” out there.”
I disagree with not doing this, I thought it was kind of funny.
“Impressing you is not on my agenda – sorry.”
I know, your day goes something like this:
7:00 – wake up, be a tard
8:00 – be a tard
9:00 – be a tard
10:00 – be a tard
…
9:00 – be a tard
10:00 – be a tard, go to sleep
Impressing you is not on my agenda – sorry.
Pointing out that your reply to my post is meaningless, while belaboring the obvious, was done in the hope that you would recognize the drivel that you posted, and that you would want to reduce that type of drivel.
Am I hoping for too much? Probably, but I thought I would give you the chance anyway.
However I would take the post above back had I have noticed your immediately preceding post.
Your conflation of “clueless” with “doesn’t give a sht about you or your “issues”” doesn’t impress me.
Actually I take that back. I remember the curve. It was the curve of the time to the first first action, i.e. picking up a new case. Or the avg time to do that, or some such. Remember his goal was to get the avg time down to like 10 mo. That was his goal a year ago anyway. As is he’ll probably shift it 2 mo. down from whatever it was (18? idk) after all his tricks are played and then it will continue to rise from there.
By his thinking if examiners aren’t doing RCE’s as much then they’ll be picking up new cases. Which is true… to a point. Specifically until the point when RCE’s are taking years to get done. In other words, it’s a trick.
And you can thank his budget being undercut for that. It was an honest effort, but if you can’t sustain OT then you’re not going to make a lot of meaningful progress.
6,
Your response is puzzling.
Basically, your are saying 1) 6 is clueless, 2) 6 is clueless and 3) 6 is clueless.
Maybe if you actually remember the point of the curve (whatever it is) and actually share with us readers something that makes sense, the perception that you are clueless can be updated.
As it is, your reply to my post is meaningless and cannot develop or advance the issue here.
“1) what is this shifting curve you speak of?”
Man I don’t remember which one it was. He was talking about it during some interview I heard years ago.
“2) what is this supposed tie in to COPA?”
There is no “tie in” with COPA, it is a distinct attempt to shift some curve, separate from COPA. COPA is just an example of his doing this in a separate area.
“3) if I am correct about the boondoogle and Kappos is saying the same thing, this is an “identity” situation, not a “doubling” situation. In other words, I am simply correct in my assessment.”
Nah, you’re saying its a boondoogle to have people filing more/less RCE’s. I’m saying it’s a boondoogle for him to be shifting a curve. Those are two distinct things my dear tard.
“Why are you having such difficulty with this? Why won’t you be reasonable?”
+1
“Consider the following fact: more applicants are filing more meritless appeals at a greater rate than ever before in the history of the USPTO.”
More shallow and meritless observations here.
Your statement merely reflects the greater input factor and says nothing about why that input is growing. You have zero basis for implying that meritless appeals have a disproportionate level of the growing appeal backlog or even of the growing rate of appeals.
Get back to the actual issue. Ask yourself “why” applicants are turning to the appeal process in greater and greater numbers. Ask yourself “why” applicants are fed up with what examiners are churning out. And consider the following fact that goe swith yoru fact: more applicants are filing more meritorious appeals at a greater rate than ever before in the history of the USPTO.
Do not throw the smokescreen of “meritlessness” out there – do not throw the cannard of “blame the applicant” out there. Do not be so shallow.
Tag breaking early in the morning – Waitress, can I have a refill?
“and he was trying to shift some st upid fkin curve like he is with COPA. Just another boondoogle as you put it. So, if what you say is true, and what he says is true,”
6, three things:
1) what is this shifting curve you speak of?
2) what is this supposed tie in to COPA?
3) if I am correct about the boondoogle and Kappos is saying the same thing, this is an “identity” situation, not a “doubling” situation. In other words, I am simply correct in my assessment.
“How is the claim amended? It’s amended, first, to recite a property that seems like it would be inherent but of course the Office has no way to test that (clever!) and, second, to recite a limitation describing how a part of the claimed composition was made (in other words, turning the claim into a mixed method and composition claim — oops!).”
Holy sht, that sounds like it is one of my applications lulz. That’s what they try to do on my watch lol.
“oops”
LOL I know right? LOLOLOLOLOLOL!
“Deep 6’d effect”
Holy sht! I have my own effect named after me! Awesome!
“Even Kappos recognized the boondoggle ineffectiveness of RCE’s and fought to lessen their appeal to the horses standing thirsty at the water trough.”
Oh is that what happened? Here I was following along with what he actually said on the matter and he was trying to shift some st upid fkin curve like he is with COPA. Just another boondoogle as you put it. So, if what you say is true, and what he says is true, now we have boondoogles on top of boondoogles!
I second 6’s observations. In addition, Black Hole ignores the critical element in his earlier allegation:
I cannot tell you how many times I’ve seen prosecution histories where there has been 8-10 office actions, 3-4 RCEs despite the Examiner’s original rejection being cr@p.
Let’s look at the third case cited. The first Office Action is a good one, not a cr@ppy one. The composition claims originally presented were too broad. In the first Response, the Applicant amends the independent claim. How is the claim amended? It’s amended, first, to recite a property that seems like it would be inherent but of course the Office has no way to test that (clever!) and, second, to recite a limitation describing how a part of the claimed composition was made (in other words, turning the claim into a mixed method and composition claim — oops!). I stopped analyzing at that point.
So, this example is, at best, totally irrelevant to the point you were making and, at worst, contradicts your point and strengthens mine (i.e., it shows that applicant misunderstanding of patent law is responsible for much of the increase in the patent appeal backlog).
Consider the following fact: more applicants are filing more meritless appeals at a greater rate than ever before in the history of the USPTO.
I would love to add a poignant post, a critique or even a helpful hint, but there is just no “issue” on this thread that can be (or more to point, will be) advanced.
Anything interesting or fruitful has been lost to the Deep 6’d effect (although the economics of appealing may show some promise).
That said, BPAI Black Hole, those that recognize your advice as worthwhile are most likely already following it, and those that do not recognize it, will not. Even Kappos recognized the boondoggle ineffectiveness of RCE’s and fought to lessen their appeal to the horses standing thirsty at the water trough.
Idk where you get off thinking that I’m stating you should do my job lulz. I’m telling you how to do your job in a manner which does not display your incompetence to the entire world. But, if you like to do so, then please, by all means, do so, most people won’t notice it.
“They want to get their rejections out the door, and go home to their wife/husband/dog/cat.”
Yeah, kind of like attorneys.
“If you had any talent and ambition, you would have gotten your law degree and would be making 2x-3x what you are right now.”
Lulz, talent I have, ambition to become a patent attorney? Meh, why be an attorney when you could be their boss much easier?
To that end, in a round about fashion, I am forming my own startup. By week’s end I’ll be a job creator.
You see, unlike you and the rest of your incompetent ilk, while I have no desire to be a money grubbing ho churning out terrible work product for a little bit o money, I do have some balls.
“Hand holding isn’t that expensive.”
I know you pay for it, but I don’t go that route, and neither does my client.
You may want your hand held (are you a little insecure with the prior art?), but most examiners don’t care. They want to get their rejections out the door, and go home to their wife/husband/dog/cat.
“he admits he is practicing in an incompetent manner”
blah, blah, blah, blah, blah … sorry, I know you want somebody else to do your job, but it ain’t happening, no matter how much you btch.
6 — it is a shame that I don’t that coating stuff anymore. It would be fun to see if your bite equals your bark. Regardless, until you out yourself, all I’m getting is bark. Similarly, until Mooney or myself out ourselves, all you are getting is our bark.
Don’t fool yourself, you are, to me, as amusing as a 1st year assocaite that thinks they know everyting (but knows little). If you had any talent and ambition, you would have gotten your law degree and would be making 2x-3x what you are right now. However, for all your bark, you are still an examiner. Until you change that, even your bark (for as loud as it many seem to you) is little more than the “yip, yip, yip” of a chihuahua.
I don’t know why you’re accusing me so strongly, I can assure you that I’m a person doing a better job than your rushed bs or the avg examiner’s. Lulz, it is ludicrous that the people who admit to doing a shty job and then blame it on $ try to put down the people who are actually taking the time to do a good job.
Absolutely hilarious and I lol@u.
But just fyi, yes, that’s the third option. That’s how to practice sans incompetence.
“Lulz, he just worked you over.”
Oh please … that tactic must be in the shadow MPEP … you know the MPEP that the Examiners actually follow. Every Examiner does it so no big deal.
Also, as I said before, I stopped playing that game a long, long time ago.
“The point of the interview is to get him to give you everything and give him nothing while making it seem like you’re giving him everything and getting practically nothing.”
You are you accusing your fellow examiners of being maroons capable of falling for stuff like that??
“If you’re that in love with it, then why the btching?”
Actually, I’m not so much btching as trying to get more attorneys to do it. Right now, even a 3-4 year backlog doesn’t raise too many eyebrows outside of the patent community. Get that backlog to 7-8 years and somebody (e.g., Congress) will notice and stomp on the PTO. When that happens sht will flow downhill and it’ll be amusing to see you try to dig out from underneath it all.
“tell themselves that they like what they’re doing even while btching about the same.”
Been through rehab a couple times I see? I enjoy appealing because writing to the BPAI is much more enjoyable than writing to an examiner who likely has a poor understanding of the law and/or the English language. At least I have an expectation that the people I talk to understand concepts like burden of proof, prima facie case, weighing the evidence, etc.
“give it another try”
I don’t need to. I talk to Examiners all the time. The catch is that they call me … not the other way around. There is this magical moment that happens when the Examiner is preparing to go into their Appeal Brief Conference and they know their rejection is a piece of sh-it. At this magical moment, they are more afraid of looking like a maroon to their SPE and finally get the nerve up and give me call … asking me if I would agree to some Examiner’s Amendment (for them to save face) so as to put the application in condition for allowance. Ah …. a magical moment it is.
Examiner-initiated interviews are FAR MORE productive than Application-initiated interviews.
FYI — blood pressure is fine. This is fun — so much so that I would do some of it for free if I had to. Don’t need to because I get paid handsomely to do it.
“You didn’t read everything I wrote. I said your suggestions were reasonable — under certain circumstances.”
Yes, I just now read that other part. I noted above your traumatizing experience. I also loled @ it because it is such a newbie mistake. Your approach to making the deal, as it were, is all wrong. The art of the deal here is making them believe they are getting something, usually knowledge of the correct analysis and/or insight into the case which they previously did not have, as well as perhaps “permission” (not overt permission) to not do a whole new search, and not giving you anything because they themselves find the error and rescend the rejection. This of course happens under your supervision and you are never overt about what you are doing. And you’re nearly 100% likely to not be amending.
“However, I don’t have the time to hold your hand. The client doesn’t budget that. Not my call.”
Hand holding isn’t that expensive. Come on. If it is, you’re doing it wrong or are very poor at it. Which, coincidentally is what I’ve been saying since comment no. 1 on this subject. It does take time management skills though. If you’re doing it right it will save time and money.
So, In This Thread, we have an attorney who was initially btching because of the appeal backlog and the need to file appeals. He was called out by someone else alledging that he was incompetent. By the end of the thread we find that 1. he admits he is practicing in an incompetent manner (quickly preparing a bare bones non hand holding response that “adequately addresses [the] errors”) and 2. he thinks this isn’t incompetent because his replies “adequately address [the] errors” and 3. his excuse is lack of $. This practically mirrors the incompetent examiners who we find are 1. incompetent and will admit it if you ask the questions right and 2. also don’t think they’re incompetent because the definition of their job has been reduced down to simply rejecting the application (officially this is the office’s position to examiners if not to the outside world) if it looks rejectable and they believe they have “adequately addressed the claims” and 3. their excuse is lack of time.
Finally, I’m sure we’ll find that the attorney feels completely justified in practicing this way, just as the examiners he is btching about feel completely justified in examining their way while both sides are objectively sorely mistaken.
And just to be clear, I’ll be the one holding your hand through your shty hastily drafted response old man. Just like I just held your hand through how to have a good interview. I do it week in and week out. And I get very few appeals and write very few non-f’s while not pulling any (very few?) pimp slap moves without fair warning.
“It seems very reasonable”
It seems very reasonable for you give a little first, as you were asked first.
Here, let me refresh your memory from above in this thread:
“The Shilling Shall Continue said in reply to Dudas is a Scapegoat for Incompetent Hacks…
“I’ve gotten a lot of allowances after the first office action.”
Lulz – examples please
Reply Jul 20, 2011 at 01:09 PM”
You’ve got lots. You were even asked nicely.
Why are you having such difficulty with this? Why won’t you be reasonable?
“We are saying that there is a third option, one which is currently above your head, and it is one that involves little of either appealing or RCEing.”
Yeah … your third option … play nursemaid to an Examiner. Would it help if I wiped your azz after you go to the bathroom as well? Sorry, as I pointed out earlier, the client doesn’t pay me enough to do your job plus my job. You are going to have to find somebody else to do your job — mainly you!!
I think you meant: granted these are some sweet cherries I just picked.
But setting that aside, I should note that those prosecutions do not even attempt to touch the subject which is currently at issue in this thread. Nobody is arguing that you should simply file RCE’s forever. You are the one arguing that such is your only alternative to appealing. We are saying that there is a third option, one which is currently above your head, and it is one that involves little of either appealing or RCEing.
“What is this thing “claim construction” you speak of?”
I kno right? I’m issuing in a new era of peace and tranquility by simply noting that most people in prosecution both on the examiner and attorney side skip the first step in all claim analysis every single time. They also usually do not even bother to request the other side give them one.
Although, to be clear, I would consider the examiner writing down whatever explanation he does as a construction even if it isn’t a good one or well laid out. Perhaps he simply sees it as a straight forward ez construction. If you don’t think his rejection quite jives then you should begin by questioning his construction.
“Interviews = big waste of time. ”
Well, enjoy your bitching for eternity then. Because this is where you can make the most progress the easiest in the least about of time.
“I cannot tell you how many times I’ve interviewed an examiner where I have started out by asking “where is feature X in prior art B” and they immediately change the subject.”
SO THEN TRY SOMETHING ELSE MAYBE? THIS IS WHAT I”M TALKING ABOUT LEARN TO BE PERSUASIVE.
To what subject are they changing? A clarifying amendment? Oh, so perhaps claim construction is an issue? Maybe bring that up. Or perhaps he changed the subject to something else. Maybe steer the conversation back to what you want to talk about. Or, if you can tell he doesn’t want to talk about that atm, perhaps come about it from a different angle and start at the beginning but work through to that issue, stated in new words this time without being blatant about it. It literally doesn’t take that long to go through the whole analysis from claim construction beginning to legal conclusion end.
“that Examiner adds another reference (in a 103 rejection) to address the “clarifying amendment” and goes final.”
Lulz, he just worked you over. LULULULULULULULULULULULULULUZ @ U! Holy smack I almost fell out of my chair! That examiner just reared back, showed you his pimp hand IN SLOW MOTION SO YOU COULD SEE IT COMING A MILE AWAY, and then smacked the sht out of you and you just sat there with your jaw agape.
I forgot to mention something rather crucial about interviews, which I thought went without saying, you kind of have to know how to not get worked over. That is, when you see him rear back and raise his pimp hand, you need to ask him if he’s about to pimp slap you so that you’ll know to move, or you could simply move.
That is, in the instant case, you should have inquired about why the clarifying amendment would be necessary (unless you know already) and whether or not he had looked over any additional references on or off the record already or planned to simply do a whole new search if you should make such an amendment. In other words, inquire as to the possibility of him smacking you after you amended. If there is a possibility then try something else. Well, those are the basic bottom line things you should have done, there are plenty of more advanced procedures you could follow, but as the young student, I’ll leave you with those.
The point of the interview is to get him to give you everything and give him nothing while making it seem like you’re giving him everything and getting practically nothing. You kind of did that backwards lol. Also, yes I did borrow that from 300 “Give them nothing but take from them everything” but that is literally what you’re trying to do.
But in any case, I can see why you don’t like interviews after getting burned by that red hot iron.
“This is an assumption that I won’t make.”
It is a new game compared to that which you were playing 15 years ago, that is for sure. But it isn’t a game that cannot be played in a fashion better than that which you are describing.
“All you advice aside, I get wonderful results from appealing. ”
If you’re that in love with it, then why the btching? I think you’re just getting all rosy colored glasses on me because you’re starting to see the light. They say that medically speaking we all behave as addicts when people try to take our beliefs away. If there is one thing addicts certainly do is tell themselves that they like what they’re doing even while btching about the same.
I will leave you for the evening with a final thought. Overcome your fear of being pimp slapped by the examiner like you were back in the day, give it another try, and try it my way. This might involve your overcoming a bit of social anxiety even if you don’t realize it is such. If it works, drop me a couple hundred. If it does not, then consider additional training, but do not give up unless you enjoy high blood pressure.
“You implied I was in fantasy land. Specifically what do you find to be so fantastical about the land in which I inhabit?”
You didn’t read everything I wrote. I said your suggestions were reasonable — under certain circumstances.
However, I don’t have the time to hold your hand. The client doesn’t budget that. Not my call. If the client budgeted 5x per response than they do now, I would be able to. I’m going to hope (with little expectation) that you are going to do your job properly (without me holding your hand), and do what I can with the time allotted to me to prepare a written response that adequate addresses your errors.
I think I made this point way far above that neither practitioners nor examiners have enough time to do their job. That’s the way it is.
“First, yes I have, since I was 14 actually.”
Sorry, your 10 years at McDonalds doesn’t count — no matter if you became the assistant to the assistant manager.
“I lulzed.”
Good for you … the truth hurts, so I’m glad you found a mechanism to hide the pain.
“On the other hand, I wouldn’t be jumping to allow most of their work product either. Jez, so bad.”
Pull out some of your cases from 4 years ago — you’ll wince, and if I recall correctly, even back then you were thinking you were the next best thing Souter and Scalia.
“there is a rather large distinction to be made between presenting one’s own work here (on one hand) and alleging that the number of examples of USPTO incompetence in a first office action in a case which subsequently went through multiple RCEs is uncountably large.”
No. To identify either requires that the identifier out himself/herself.
That being said, I found some interesting applications that emphasize some of the points I have been making:
09/654,857 – filed 09/05/00 and issued 07/12/11. This application had: 4 amendments, 2 appeals, and 0 RCEs filed. Total PTA is 3592 days (nearly 10 years!!)
09/914,315 – filed 11/16/00 and issued 07/12/11. This application had: 15 amendments, 0 appeals, and 6 RCEs filed. Total PTA is 587 days
09/705,422 – filed 11/02/00 and issued 07/12/11. This application had: 13 amendments; 0 appeals, and 5 RCEs filed. Total PTA is 394 days
The first application used a strategy (let’s call it the “hard-line strategy”) similar to what I use. The second and third applications used a strategy that I call the “appeaser strategy.” All 3 applications took an ungodly amount of time to get allowed (over 10 years). However, not only did the client for the first application likely pay a whole lot less in both attorney and PTO fees, that client also has an application that will expire over 8 years after the other 2 applications have expired. Setting aside the individual issues associated with the examination/prosecution of each application and the relative values of the respective technologies, my guess is that the client of the first application is better off than the clients of the other two applications.
Granted, these are extreme cases. However, they illustrate the points I have been making as to the advantages of appealing over playing the RCE game.
“For the record, Black “Big Talker” Hole is unable to direct us to a single example of this uncountable number of cases.”
For the record, neither is Dudas is a Scapegoat for Incompetent Hacks, even though he was asked first
I didn’t allege seeing an uncountable number of prosecution histories exhibiting a particular fact pattern. You did, Black Hole.
And now you can’t provide a single example.
Nice try at the false equivalency, though. Maybe take a break for a day or two and try again. I’m starting to see why you end up appealing so many cases.
“I made it up. I’m amused to hear there is some truth to it.”
Not really, I made up the other one, but it does adequately describe the attitude in the academy. On the other hand, I wouldn’t be jumping to allow most of their work product either. Jez, so bad.
“You haven’t worked in the real world, have you? Everybody is on a budget. For that reason, why don’t have time to play games with Examiner … holding their hands every step of the way.”
First, yes I have, since I was 14 actually.
But, that pretty much settles it then. The complexity of the patent system is what you’re currently btching about. You simply don’t have the time/money to hold the examiner’s hands through the complexities when that is currently what is required to have a smooth sailing prosecution.
That hardly comes as a surprise, but, on the other hand, I do find it quite telling that you get on here and hoop and holler about all the symptoms of this disease (examiners “not doing their jobs right” when really they don’t even hardly know how, the appeal backlog which is nothing more than a result of judicial cases and perhaps some examiner/attorney incompetence thrown in for spice etc etc) rather than getting to the disease itself.
In any event, try my way when you have the money/time, and do let me know how it works out sometime. Some attorneys budget so that they have enough time to do it right. And if it does work out, do drop me a couple hundred.
“nothing like my own experiences prosecuting applications‘
Which “experience prosecuting applications” is zero – you are fooling no one Malcolm.
And how do you explain your bitterness?
CLASS 12
Who’d have ever thought
A Post it would be,
The end for him,
the beginning for me.
So today is the day 20 and it’s of July,
A year I do have, oh me oh my.
It’s not just the Trademark,It’s not now I see
It also included my CIP
“For the record, Black “Big Talker” Hole is unable to direct us to a single example of this uncountable number of cases.”
For the record, neither is Dudas is a Scapegoat for Incompetent Hacks, even though he was asked first and even though Black “Big Talker” Hole said that Dudas is a Scapegoat for Incompetent Hacks must go first.
For the record, that’s called d_uplicity. But that’s obvious, isn’t it – just as obvious as who Dudas is a Scapegoat for Incompetent Hacks actually is.
So how about it, big poster, you willing to hold yourself to the standard you hold others?
“For the record, Black “Big Talker” Hole is unable to direct us to a single example of this uncountable number of cases.”
For the record, neither is Dudas is a Scapegoat for Incompetent Hacks, even though he was asked first and even though Black “Big Talker” Hole said that Dudas is a Scapegoat for Incompetent Hacks must go first.
For the record, that’s called duplicity. But that’s obvious, isn’t it – just as obvious as who Dudas is a Scapegoat for Incompetent Hacks actually is.
So how about it, big poster, you willing to hold yourself to the standard you hold others?
“You’ve never met in-house counsel, have you? The average in-house counsel is brighter and more sophisticated than at least 95 out of 100 examiners at the USPTO – and that includes you.”
I lulzed.
“Did I say that? Try not to import statements to me that exist in your mind only.”
You implied I was in fantasy land. Specifically what do you find to be so fantastical about the land in which I inhabit?
“Well that’s moreso the moto of the academy, and it goes, reject them all and we’ll sort em out later. I have not heard of this let the federal circuit sort them out motto.”
I made it up. I’m amused to hear there is some truth to it.
“So then, back in the old days your job was ezier”
No … back in the day, more examiners actually did their job.
“And back in the day the avg number of claims wasn’t such that examiners spent an additional couple of hours tracking down inane deps”
Well boo hoo. You are getting paid for this, aren’t you?
“You may not have noticed, but today there are several million additional references that can be cited as opposed to back in the day.”
No … almost all of those references are non-analogous prior art or nowhere close to being 102 art. Plus, all you do is a keyword search anyway so what does it matter? Not being able to find good art is no excuse to slap together a lousy rejection with no claim constructions and little to no actual analysis.
“Or could it be that they filed so many briefs at the urging of the 8 out of 10 incompetent attorneys?”
You’ve never met in-house counsel, have you? The average in-house counsel is brighter and more sophisticated than at least 95 out of 100 examiners at the USPTO – and that includes you.
“I just also realize that the most sophisticated clients in the world are still not patent attorneys.”
Sophisticated clients have patent attorneys as in-house counsel – sorry to burst your bubble. 🙁
“who in those companies doesn’t like to spend.”
You haven’t worked in the real world, have you? Everybody is on a budget. For that reason, why don’t have time to play games with Examiner … holding their hands every step of the way.
“there are documented cases where they go to negotiations, determine no infringement went on, and then shook the defending company down anyway”
OK, care to name a few instances? This wouldn’t out you, so I’m not playing Mooney’s game.
“you’ll still be btching about this and that years from now”
I’m btching about it for my client’s sake and because it offends me. If the Examiners did their job properly, my workload would drop 50%.
“Surely you’re not suggesting that what I would do is all that fantastical. You must think that it simply wouldn’t work”
Did I say that? Try not to import statements to me that exist in your mind only.
Obvious, trivial and frivolous each have separate meanings.
Two of the three are more laden with subjective value style meanings.
Such have no place in our discussion of orderly law.
The injection of such terms can only serve to obfuscate. The law uses the term obvious. I embrace that term and reject the term trivial. I also reject the term frivolous. If you want to talk about the law, use the correct terms. If you want to talk about subjective wants outside of the law, go somewhere else.
Patents that are issued that are obvious are mistakes that should not have been issued in the first place. Patents that are issued that are frivolous – but pass the law, including the test of non-obviousness are fully and rightfully patents no matter who subjectively feels that they are frivolous or trivial.
I do not care what lines you draw inthe sand as long as you operatr within the law – and that law does not concern itself with the subjective trivial or frivolous.
All else is shilling.
As noted above, there is a rather large distinction to be made between presenting one’s own work here (on one hand) and alleging that the number of examples of USPTO incompetence in a first office action in a case which subsequently went through multiple RCEs is uncountably large.
It seems very reasonable to request a single example of the latter.
It also seem reasonable to assume that when a request for a single example of the latter is greeted with derision and refusal that the allegations regarding the latter were greatly exaggerated (or simply fabricated).
“For the record, Black ‘Big Talker’ Hole is unable to direct us to a single example of this uncountable number of cases.”
For the record, Mooney’s sock-puppet is unable to direct us to his many allowances after a first office action or describe his strategy in getting them. Dude, your shtick is really old. How many times have you asked somebody to out themself by asking for some application number? Dozens and Dozens? I’m not sure who you are trying to impress by pointing out that I don’t feel like outing myself? If you had the ba-lls to use your own name on this blog, then you would have some credibility. However, since you are using a sock-puppet, nobody cares that I decline to identify application numbers.
I stopped playing that game a long time ago.
And now you play a new game. Congratulations.
As evidenced from the numbers in the above blog, many practitioners have also seen the light.
Except about the half the time the “light” is the light from an oncoming train, and most of the rest of the time there was no point in entering the tunnel in the first place.
“You weren’t at the USPTO when they were marginally reasonable”
Well I’m here now and I’m reasonable. And so is nearly everyone else I talk to if I speak properly.
“reject them all and let the Federal Circuit sort them out.””
Well that’s moreso the moto of the academy, and it goes, reject them all and we’ll sort em out later. I have not heard of this let the federal circuit sort them out motto. A great many examiners don’t even know about the fed circ. Literally, they don’t even know it exists. Surprising? Nah, not really.
“What you have been brought up to think is reasonable is not, historically, reasonable.”
I think you would not hold that opinion if you were discussing a case with me now.
“Back in the day, maybe 1 in 4 first office actions would have indications of allowable subject matter. ”
So then, back in the old days your job was ezier, like the examiner’s was in many respects? Well boo hoo.
And back in the day the avg number of claims wasn’t such that examiners spent an additional couple of hours tracking down inane deps. You’d be surprised how much more suggesting you can do if you’re not wasting hours looking for deps.
“Today, if I amend a claim based upon an interview, the vast majority of the time, the Examiner just cites a new reference.”
You may not have noticed, but today there are several million additional references that can be cited as opposed to back in the day. And the whole best art thing is half canard and half tied to the other thing I mentioned, inquiring about whether he did a full search or just a quick search and rejected the app. If he will straight up tell you, which many probably will (because doing a quick search is not against policy regardless of what some tards would have you think), then you know what you’re up against and can act accordingly.
“Applicants would not have filed so many briefs if they didn’t think it was useful.”
Orly? You sure? Or could it be that they filed so many briefs at the urging of the 8 out of 10 incompetent attorneys? Because I still think it could be despite your assurances.
“You may not realize it, but sophisticated clients don’t like spending any more money on prosecution than is warranted.”
No, I realize it. I just also realize that the most sophisticated clients in the world are still not patent attorneys for the most part and only patent attorneys, the creme de la creme to be specific, understand how and why they shouldn’t be paying those additional expenses.
“However, the big appealers (I think somebody once said HP and IBM) do have very sophisticated in-house attorneys managing outside counsel.”
Of course they do, but then again, who in those companies doesn’t like to spend? The in house attorneys controlling the outside attorneys or the people who manage the in house attorneys? If you said the people managing the in-house attorneys I think you’re right.
Plus, the really “big appealers” could hardly give a crp when their patents issue. They’re practically pharma in that respect. They have a porfolio so big that there are documented cases where they go to negotiations, determine no infringement went on, and then shook the defending company down anyway.
Bottom line, do whatev you want, I set forth the path, you may follow or you may not follow. Either way I’ll still probably lol@u and you’ll still be btching about this and that years from now.
Btw though, I would like to know what was all that fantastical about what I put down. I stated what I would do, and very few things regarding what the examiner would do. It isn’t all that fantastical to tell you specifically what I’d do. It is, after all, specifically what I would do.
Surely you’re not suggesting that what I would do is all that fantastical. You must think that it simply wouldn’t work. That may be true, and it may not. But we won’t know until you try it. When it magically does work, do come on back and say thanks. Also, if you don’t mind, drop me a few hundred as a consultant. Only if it is successful though ok?
Back in the day, maybe 1 in 4 first office actions would have indications of allowable subject matter. Today, that number is maybe 1 in 20. Today, if I amend a claim based upon an interview, the vast majority of the time, the Examiner just cites a new reference. Today, I have ZERO confidence the Examiner is applying the best prior art.
Wow, that sounds awful and absolutely nothing like my own experiences prosecuting applications. You must just be some prosecutor who was sued for malpractice and can longer make a living. No wonder you’re so bitter.
“the claim construction/partial claim construction”
What is this thing “claim construction” you speak of? I’ve seen probably a thousand first office actions, and my guess I’ve seen explicit claim constructions (partial or full) maybe a handful of times.
“Otherwise I would ask what I could do to assist in determining what the proper search needs to be in order for a comprehensive search be completed and the case allowed to issue.”
More examination handholding? Should I ask to write the next office action as well?
“do your interview after nonfinal”
Interviews = big waste of time. I cannot tell you how many times I’ve interviewed an examiner where I have started out by asking “where is feature X in prior art B” and they immediately change the subject. They next step is that they ask for a “clarifying amendment.” After filing said “clarifying amendment,” that Examiner adds another reference (in a 103 rejection) to address the “clarifying amendment” and goes final. Woohoo – I’m back to arguing what I would have argued in the first place, which is prior art B doesn’t teach feature X. I stopped playing that game a long time ago.
Your advice is reasonable … if you assume that the Examiner you are dealing with is reasonable and competent. This is an assumption that I won’t make.
All you advice aside, I get wonderful results from appealing. As evidenced from the numbers in the above blog, many practitioners have also seen the light. Unless you HAVE to get an allowance today, then I would appeal. In fact, even if you did HAVE to have that allowance, I would still recommend appealing. If the Examiner doesn’t cave after the appeal (and they usually do), you still file your RCE.
I cannot tell you how many times I’ve seen prosecution histories where there has been 8-10 office actions, 3-4 RCEs despite the Examiner’s original rejection being cr@p.
For the record, Black “Big Talker” Hole is unable to direct us to a single example of this uncountable number of cases. Nobody’s asking for an example of Black Hole’s own work. Reluctance to provide such examples is understandable.
But there is no readily understandable reason for Black Hole’s refusal here, except for the obvious one that doesn’t need mentioning and rhymes with the word “fire.”
“That should be your first option, especially for a valuable patent.”
Interesting. You are assuming (and it is a big assumption) that the Examiner (i) speaks good enough English to understand all that (ii) the client has an unlimited budget for the attorney to hand hold the examiner through the process (FYI — they don’t) and (iii) you know what patents/technology are going to be valuable 5-10 years down the road (if you do, I’ll let you pick my stocks).
“I personally would ask whether or not he thought he’d need to search anymore or if a pretty comprehensive search has already been done.”
Why would you do that when the MPEP requires that the Examiner cite the best references? Are you assuming that the Examiner didn’t do his/her job properly?
There are a lot of things that can be done with an unlimited budget. However, most clients don’t have that, so the hand holding you suggested isn’t going to work in most instances.
“Otherwise you should be able to solve the issue without an appeal.”
When you step out of fantasy land, come talk to us again. You weren’t at the USPTO when they were marginally reasonable. Instead, you came in at a time when motto was akin to “reject them all and let the Federal Circuit sort them out.”
What you have been brought up to think is reasonable is not, historically, reasonable.
We didn’t have to appeal as much 10 years ago because it wasn’t necessary. Examiners actually indicated allowable subject matter – even in the first office action. Also, when you made an agreement via an interview, they actually allowed the application after your amendment. Back in the day, maybe 1 in 4 first office actions would have indications of allowable subject matter. Today, that number is maybe 1 in 20. Today, if I amend a claim based upon an interview, the vast majority of the time, the Examiner just cites a new reference. Today, I have ZERO confidence the Examiner is applying the best prior art.
FYI — Applicants would not have filed so many briefs if they didn’t think it was useful. You may not realize it, but sophisticated clients don’t like spending any more money on prosecution than is warranted. However, the big appealers (I think somebody once said HP and IBM) do have very sophisticated in-house attorneys managing outside counsel. If they didn’t think the strategy was successful, they wouldn’t do it.
Well, you’re still a failure if you hit 10. But that failure might be mitigated if you got 2.5 years because they just never picked up the case for a foam.
I dun see it. Perhaps you could quote it.
But if you’re too lazy to dial a phone, which I presume you are since you neglected the option I just set forth, you could always argue, amend or simply respond on the written record.
Personally I would probably simply respond in the vast majority of my replies. My response would include what I understood as being the grounds of the rejection, the claim construction/partial claim construction (note this part is optional! It definitely should not be used all the time), how the proper analysis would be performed based upon the grounds presented, and how it appears to be different than what was set forth in the OA. Obviously the conclusion of the analysis should pop out on its own. Then I would request that the examiner explain if the grounds are different than I presented, if the claim construction was different, or the analysis was different. Finally I’d note that if the examiner was in agreement with all of the above then the proper conclusion should have been reached and ask how it could be anything different.
In other words, you have them reverse themselves.
Then I would note that since my claims are unamended I presume a comprehensive search has been completed and hope that an updated search will be performed and the case allowed to issue. Otherwise I would ask what I could do to assist in determining what the proper search needs to be in order for a comprehensive search be completed and the case allowed to issue. Specifically I would note that if anything was confusing then I was available to clarify it.
But that’s just me, and if that application was important. But you guys can continue doing whatev you want. And of course for relatively unimportant cases I’d just do whatev.
“which means kiss goodbye any Type B patent term adjustment you are accruing.”
Onoes? Lulz.
“You can interview, but it is up to the Examiner’s discretion after final.”
Funny you note the interview first after a final action has been received. You have that ar se backwards, do your interview after nonfinal.
“So, final amendment and you still disagree with the rejection. ”
Well if I’m here first I reach in my desk, make my fingers into a big ol’ L and hold it to my forhead. But hopefully I’m not here. This is like when, at the office, an examiner is considering a 2nd nonfinal. I know, I know, this happens several times a week in your office, alas and forsooth!
But, after I recover from the psychological shock of being a loser (this could take upwards of a day) I read the response and determine w tf the issue is. If I still “disagree” then I try an interview and attempt to persuade on the specific issues which I now understand better. If I can’t persuade on those issues then I would reach back in my drawer for the L. I would apply it again, and wait for the effects to wear off. After that I would decide if the case was important enough for an appeal and then make a decision on appeal/RCE.
“You’ve got this stuff mastered, tell us your secret.”
There is no secrit.
“How, pray tell, do you do that? Please enlighten us with your grand knowledge of patent prosecution.”
Well, at the risk of putting words into his mouth, I believe he already told you a lot of his “grand knowledge”.
You must preemptively anticipate common errors examiners are prone to making (claim construction etc) and draft accordingly. You must preemptively anticipate a 103 after you just overcame a 102 when there is a ton of art on the record showing the feature you added to overcome the 102 that just so happens to not be in the old 102. You must leverage interviews on occasion. Productively leverage them, not simply have one and discuss some bs where nothing gets decided.
Essentially, you write and speak for your audience at the office as well as the audience at the courts.
And above all, at least in my opinion, you must be persuasive. This is a rather large subject and I’m sure either myself, the other poster, or a grand ol’ attorney can help you out. Some of us might charge a reasonable fee of course.
But beyond what he already told you, let’s look at your hypo.
“Let’s assume that you’ve gotten a rejection you don’t agree with. You can either amend/argue or just argue.”
Or you can call the examiner, explain how and why you would decide the issue differently, starting from the claim construction and working your way all the way through the decision step by step, as opposed to arguing against the rejection, and ask/determine where specifically in the line of reasoning his opinion differs from your own. Perhaps he will see the issue in a new light and withdraw the rejection himself once you have laid forth the correct line of reasoning. If he does decide to, ask if he’ll be willing to consider that issue finished and put such on the record, especially for a 112 etc. Further, I personally would ask whether or not he thought he’d need to search anymore or if a pretty comprehensive search has already been done (aka if he thought the search was already pretty much done) and if he’d just need to update the search he performed previously. If the former then I might inquire as to why a more comprehensive search had not been performed or why he felt additional searching on top of that would be required and what, if anything you could do to lessen his need to search some specific thing. If the later then I would note such in my reply just to remind them when they get the response.
But that’s just one specific example. Hypothetically speaking.
That should be your first option, especially for a valuable patent.
“you’re a fin failure no matter what.”
cf
“You are right, there are some mitigating circumstances that could be present.”
W
T
F
There is no enlightenment to be had – the starting set of any such claims obtained by Malcolm is zero, since Malcolm does not represent any applicants.
He works for the Office.
“It’ll be very easy, then, for you to provide one example of such a prosecution.”
You have been asked for an example first – see the post at 1:09 PM
“You didn’t note any in the initial post though”
Actually, he did.
Hence the comment about your lack of PTA understanding.
“Don’t be so harsh on the USPTO. ”
Lulz, I’m being harsh on you. I might be harsh on the PTO in the next post, but for now we’ll focus on the tard that took 10 years to get the app through the office. That’s you and the other attorney in our dicussion. 5 years, sure, that could happen, 7 maybe. 10 years? Ridiculous. Not to even get into what happens when you end up not getting that PTA and end up with like no term adjustment? Everyone just says “lulz” and moves on? Lulz.
“If, for example, 2.5 of those 7.5 years were because the USPTO didn’t pick up the application until 4.5 years after filing, I’m a little unclear as to how that was either the attorney’s or applicant’s fault.”
You are right, there are some mitigating circumstances that could be present. You didn’t note any in the initial post though so I didn’t presume any. I was presuming from your tone that it was a full 7.5 PTA from the previous attorney’s incompetent prosecution that you stepped in to correct. I thought that was why you were raising the example in the first place.
“If, for example, 4 of those 7.5 years were because the BPAI cannot get a handle on its backlog, was that the attorneys fault?”
In all cases except the most egregious stonewalling by the PTO. Otherwise you should be able to solve the issue without an appeal. Try, and I’m just saying try sometime, having the examiner talk himself out of the rejection. Lead him from first principles through the decision making process. At least that way even if you fail you can tell if there is simply some fundamental principle he simply isn’t aware of or if he’s simply weighing evidence or something of that sort against you.
The whole point here in this conversation is that you should not have to go to appeal all that often if you have, as my esteemed colleague notes, the ability to persuade. Likewise your prosecution should not take that long, at least from first action. And furthermore, you should be exerting this ability even more on cases that are valuable.
Of course, if you do not possess this ability then forget it until you manage to acquire this ability.
If you require my tutelage in the matter then you know where I’m available and my rates.
“Lulz, but how many patents are valuable at that point? What percent? Like, 4 on the high end?”
4 percent yield of patents being “valuable” yields a tremendous payback.
For example, for the 15,920 other patents currently at zero pv (from the above comparison), a 4 percent yield would be about 637 valuable patents. Now if each of these 637 valuable patents had the same pv as the initial valuable patent, it is a no-brainer to appeal every application. Even at 1/2% yield, you would still have 80 valuable patents.
“I doubt if the PV is much above 100$ after you average out all the costs of having filed appeals in other cases which this person advocates.”
“Averaging” out the $1.6MM pv over the appeal fee cost of $500 results in paying appeal fees for 3,200 applications.
As far as I know, no one knows what a fully loaded “average appeal cost” is.
By the way, in order to reach the “average” pv of 100$, at the 10% discount rate, you would need to have 15,920 other patents at 0$ present value.
This last fact is probably more pertinent for comparison purposes.
Dudas is a Scapegoat for Incompetent Hacks has written:
“It’ll be very easy, then, for you to provide one example of such a prosecution.”
and
“I’ve gotten a lot of allowances after the first office action.”
When you show me yours, I’ll show you mine.
“I’m talking about obtaining claims of reasonable scope in a reasonable time without filing an appeal.”
How, pray tell, do you do that? Please enlighten us with your grand knowledge of patent prosecution.
Let’s assume that you’ve gotten a rejection you don’t agree with. You can either amend/argue or just argue. If you amend, you are getting a final rejection next time around. If you argue (unsuccessfully) you are also getting a final rejection next time around. At that point, I don’t know too many examiners’ that enter after-final amendments, so if you want to amend again (or first the first time), you’ve got to file an RCE – which means kiss goodbye any Type B patent term adjustment you are accruing.
What are you going to do when it is a final rejection and you still disagree with the rejection? You can interview, but it is up to the Examiner’s discretion after final. Also, I can guarantee that any such interview will likely end with the recommendation that you file X amendment with an RCE. Again, kiss goodbye any Type B patent term adjustment you are accruing.
So, final amendment and you still disagree with the rejection. Are you going to appeal or are you going to file some meaningless amendment with an RCE, which loses you both patent term adjustment and doctrine of equivalence.
You’ve got this stuff mastered, tell us your secret. PROVE to us that you know what you are doing. Let us be awed and inspired by your novel strategy.
I’ve described my strategy and why I do it, explain yours …
But more importantly he’s talking about the rare “valuable patent” and factoring in uncertainty, which everyone swears exists, about whether or not the invention ends up being used and licensed without being invalidated later I doubt if the PV is much above 100$ after you average out all the costs of having filed appeals in other cases which this person advocates.
Interesting. Contrast that with what straightforward economics tells us, i.e., that the PV of the average application is more than $10K. Otherwise, rational people wouldn’t be investing at least that much to file an application in the first place. I suppose it’s possible that you’re right and the rest of the world is wrong.
“If it takes you 10 years you’re a fin failure no matter what. Unless you’re pharma and were trying to wait 10 years.”
Don’t be so harsh on the USPTO. If the USPTO wasn’t full of incompetents, prosecution could be concluded in 2 months.
If, for example, 2.5 of those 7.5 years were because the USPTO didn’t pick up the application until 4.5 years after filing, I’m a little unclear as to how that was either the attorney’s or applicant’s fault.
If, for example, 4 of those 7.5 years were because the BPAI cannot get a handle on its backlog, was that the attorneys fault? When the appeal was filed, the backlog was probably about a year or two.
“This is your idea of competent patent prosecution? 10+ years from filing to issuance?”
Hello??? Do you know the first thing about patent term adjustment? Do you know why the client got 7.5 years of PTA? If you did, you wouldn’t make such a comment.
“So then the RCE train is just fine for the 90% of patents that don’t matter? Lulz. I think you pretty much just ended the conversation. If you want to focus on the valuable ones, or the ones you think will surely be valuable, then sure, you gotta file an appeal. Obviously. Even the other guy isn’t going to argue that.”
No, the RCE train is not good for the 90% of the other patents for a couple of reasons:
1) Filing an RCE when it isn’t needed, merely rewards bad behavior. I don’t play that game.
2) I don’t have a crystal ball, and technology takes time to mature. What looks like the hottest thing today, could be superseded in 5 years whereas the nice little idea that wasn’t going anywhere could be incorporated into a standard used by a $10B/year industry 10 years from now. You have to treat all your applications well because, with few exceptions, you cannot know which ones are going to be the losers and which ones are going to be the winners.
That should read a fly of mass of 1kg. not mass of 9.81kg.
“Lulz, but how many patents are valuable at that point? What percent? Like, 4 on the high end?”
Move up a post.
$4.5B for 6000 patents. Got to be some valuable ones in there someplace.
Since I don’t have a fully-operational crystal ball, if I am going to do my job properly, I am going to treat every patent as if it is a valuable patent.
One patent worth $10M is going to pay for the prosecution of 249 other patents worth nothing and that still leaves about $5M left over. FYI … that is only 0.4% success rate, which is 10x worse than your proposed 4%. Get your success rate to just 10% and you are rolling in the dough.
Although you wallow in patents all the time, you really haven’t grasped the value of the property you are dealing with every day.
Shilling, I agree that the PTO has to operate within the law, but it has a right to draw lines in the sand and have the legal strength of its position tested in court.
If the PTO denies a patent to anyone on the basis that it is trivial, that clearly would be non statutory. But if they do so on the basis that such advances are obvious, or do not have “utility,” then such a position is statutory, but such decisions can be appealed.
Just observing the discussions about the PTO for years, I think there is a genuine concern that the PTO is issuing patents that are either obvious, or frivolous.
It has been a long struggle in the US to properly define a clear rule or rules to implement what Thomas Jefferson said so long ago, that patents were never intended for subject matter that was either obvious or frivolous.
“I’ve gotten a lot of allowances after the first office action.”
Any maroon can take dependent claims indicated as being allowable and incorporate them into claim 1. If you are getting a high percentage of allowances on unamended claims after your very first response, you are not dealing with the same art units I’m dealing with.
That depends on what you mean by free fall. Do you mean the engines failed and they started falling? Or do you mean true free fall where we put them in outer space with no significant g forces on them? The later of these options is essentially equivalent to the plane making a zero g parabola.
Under the former you have the official weight as still ~9.81 N for a fly with a mass of 9.81kg. Under the later situation obviously you have 0 g so the weight is 0.
The unofficial method of weighing things produces results similar to those I talked about in the previous post. Technically the fly is flying so officially under the unofficial method he is not at rest and cannot have his weight taken.
6, yeah. I remember Jimmy Stewart puzzling about the weight of the fly in the Spirit of St. Louis. I don’t recall if he ever answered the question though.
But the answer seems obvious once one considers that the fly has to work to fight the force of gravity even while flying about inside the plane.
Now, if the plane were in free fall, however, how much would the fly weigh?
But you do understand the fly thing right?
Riiiiight. I’ll just let you sit and think about this for awhile Ned. In the mean time, see if you can sign up for some physics classes.
6, I think the bottom line is this:
If one is at rest, or moving inertially, one does not experience acceleration. If one experiences acceleration, one is being accelerated.
So when the apple falls, it is now moving inertially. In contrast, we here standing on earth feel force. It is we who are being accelerated.
I cannot tell you how many times I’ve seen prosecution histories where there has been 8-10 office actions, 3-4 RCEs despite the Examiner’s original rejection being cr@p.
It’ll be very easy, then, for you to provide one example of such a prosecution.
Not that such an example is particularly relevant to the discussion. The issue I raised was not “RCE versus appeal.” That’s a strawman raised by another commenter. I’m talking about obtaining claims of reasonable scope in a reasonable time without filing an appeal. I understand that for some prosecutors filing an appeal seems to be an ordinary part of prosecution now. I would argue that it’s a bad habit, a sign of laziness and an inability to anticipate and preclude common Examiner actions (even if those actions may be characterized as “mistakes”).
“The part about “sophisticated” immeditately in front of the statement you plucked out to comment upon makes your comment worthless.”
So them being “sophisticated” enough to know a bad rejection means they’ve had a good lawltard? No lawtard, it doesn’t.
“FYI – I talk about valuable patents because what happens during prosecution doesn’t really matter with patents that aren’t valuable.”
So then the RCE train is just fine for the 90% of patents that don’t matter? Lulz. I think you pretty much just ended the conversation. If you want to focus on the valuable ones, or the ones you think will surely be valuable, then sure, you gotta file an appeal. Obviously. Even the other guy isn’t going to argue that.
Probably a bit high, but then, my years might be off as well I just threw out the 12 years number.
But more importantly he’s talking about the rare “valuable patent” and factoring in uncertainty, which everyone swears exists, about whether or not the invention ends up being used and licensed without being invalidated later I doubt if the PV is much above 100$ after you average out all the costs of having filed appeals in other cases which this person advocates.
But, that’s just something funny imo, it isn’t like I don’t think he should be able to persue his “dreams”.
Fact is, a patent in the hand is worth a whole lot in the bush.
Clearly the point of who deserves credit for the incompetency of 10+ years of prosecution from filing to issuance is answered by the stated (and copied by you) nearly 7.5 years of patent term adjustment.
You really seem to enjoy scapegoating others for your failures. If an application takes 10+ years to issue, that is primarily the fault of one person: the prosecutor who sat by and let it happen.
Learn how to write persuasively, use the telephone, etc. That’s what lawyers do. If you’re an agent, maybe take some persuasive writing classes or engage the help of a more experienced person.
If you’re an applicant/inventor and you’re wondering why prosecution is taking so long, consider getting a second opinion, especially if your attorney/agent is one of those perpetually angry types who constantly blames “PTO incompetence” for the inability to obtain granted claims. You might be surprised at what you discover.
“Lulz, a facially false statement.”
PTA understanding is clearly absent as well.
6:
A million times: you must read in c o n t e x t.
The part about “sophisticated” immeditately in front of the statement you plucked out to comment upon makes your comment worthless.
you beat me to it!