PTO Announces Proposed Rules for Supplemental Examination

By Jason Rantanen

Yesterday, the United States Patent and Trademark Office announced the proposed rules for supplemental examinations and proposed revisions to ex parte reexamination fees.  These proposals detail the supplemental examination process, including the information that requesters must submit, as well as the substantial fees that will be associated with post-grant review in the future.  The PTO will accept comments on the proposed rules until March 26, 2012. 

The relevant Federal Register section is here: /media/docs/2012/01/77fr3666.pdf.

Major points include:

  • The request must be filed by the patent owner.  Only the patent owner will be permitted to participate in the supplemental examination or any reexamination ordered as a result. (§ 1.601)
  • Each supplemental examination request may identify up to ten items of information to be considered, reconsidered, or corrected.  Multiple supplemental examination requests may be filed at one time. (§ 1.605)
  • The cost for filing a supplemental examination request is steep: $5,180 for the initial request plus $16,120 for the ex parte re-examination fee. (§ 1.20(k))  Both must be paid at the time of initial request, and the $16,120 will be refunded if no re-examination is ordered in the supplemental examination certificate.  (§ 1.26(c))  In addition, there are substantial fees associated with documents over 20 pages, as well as with petitions filed in connection with the proceeding. 
  • The supplemental examination request must include ((§ 1.610(b)):
    1. a cover sheet;
    2. an identification of the patent for which supplemental examination is requested;
    3. a list of each item of information and its publication date, if applicable;
    4. a list identifying any other prior or concurrent post patent Office proceedings involving the patent to be examined;
    5. an identification of each aspect of the patent to be examined;
    6. an identification of each issue raised by each item of information;
    7. a separate, detailed explanation for each identified issue;
    8. an explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified informaiton;
    9. a copy of each item of information; and
    10.  summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length.

The full requirement for item 8 is:

(8) A separate, detailed explanation for each identified issue, discussing how each item of information is relevant to each aspect of the patent identified for examination, and how each item of information raises each issue identified for examination, including:

(i) Where an identified issue involves the application of 35 U.S.C. 101 (other than double patenting) or 35 U.S.C. 112, an explanation discussing the support in the specification for each limitation of each claim identified for examination with respect to this issue; and

(ii) Where an identified issue involves the application of 35 U.S.C. 102, 35 U.S.C. 103, or double patenting, an explanation of how each limitation of each claim identified for examination with respect to this issue is met, or is not met, by each item of information. The detailed explanation may also include an explanation of how the claims distinguish over the items of information.

(Proposed § 1.610(b)(8)).  Note that if the PTO concludes that an examination request is not in compliance with the content requirements, it will not be entitled to the original filing date.  Rather, the filing date will be the date the corrected request is received.  (§ 1.610(d),(e))  This appears to mean that the PTO's three-month deadline for issuing a supplemental examination certificate will not begin until the corrected request is received and the safe-harbor provisions of 35 U.S.C. 257 may not be triggered even if a request is filed should the PTO conclude that requirement 8, for example, is not met.

The proposed cost to file an ex parte reexamination will increase from the current $2,520 to $17,750.    Given both this increase and the substantial cost to file a supplemental examination request, I'm skeptical of the PTO's prediction that it will receive about 800 ex parte examination requests and 1,430 supplemental examination requests annually.  The latter number, especially, seems to be based on some highly dubious assumptions.

 

144 thoughts on “PTO Announces Proposed Rules for Supplemental Examination

  1. Seek first, then, to understand why the position is fallacious instead of wanting to build something atop a fallacious premise.

    Advice that is good for Malcolm as well.

    If he were brave enough to follow it.

  2. Well Malcolm, we both agree that the claim are unpatentable.  If I were defending against such claims, I would allege they were invalid under both 101 and 103. 

  3. I think Malcolm position is that

    No, stop making things up.

    Malcolm has never had any such indication on his new thought. Malcolm’s example was always simply [old step] + [new thought]. THAT”S IT. Stop trying to read more into it. There is nothing more there.

  4. Nobody could have predicted that sockie would try to change the subject.

    What are you talking about?

  5. Ned: Leo, Mr. Sockie is attacking MM’s analysis under 101, I think. There concepts of old and new should have no place; and, for that reason primarily, MM’s 101 argument should fail.

    The Feds in Prometheus held the claims passed 101 because the (old) steps passed the MOT. Now, even MM would agree that if the old steps were not old but instead were new, the claims should pass 101. But this admission indicates that there is something wrong with the statutory basis for Malcolm’s argument.

    On the contrary, Ned. The “admission” merely recognizes the well-established and non-controversial case law that the mere recitation in a claim of some ineligible subject matter does not render the claim ineligible or unpatentable per se.

    The “statutory basis” for my argument rests on the equally non-controversial proposition that our patent system does not permit one to “own”, by virtue of a patent claim, abstractions such as “new thoughts” and “new facts.” It is indisputable that claims in the form [oldstep]+[newthought] turn practitioners of the old step who learn about the “new thought” into literal infringers when all they are doing is practicing the prior art and thinking something new. From the viewpoint of those practitioners, such claims are effectively claims to the “new thought” itself. That is a 101 problem, not a 102 or 103 problem.

    Please recognize: this problem does not exist or arise in the situation where the non-mental step in a [transforming step]+[thought] claim is new and non-obvious. In that situation, it doesn’t matter if the recited mental step is old or new and only a mxrxn would even bother reciting the mental step in the claim.

    The analysis MM proposes is valid under 102, not not clearly so under 101: at least the way the law stands today.

    I would argue the opposite. The law under 102 and 103 is less clear about the novelty and/or non-obvious of claims reciting novel, non-obvious mental steps. That is why Prometheus’ claims were allowed in the first place, in spite of the government’s insistence during oral arguments that such claims would never pass muster under 102 and/or 103. Of course, the policy reasons which justify ignoring mental steps during the 102/103 analysis are exactly the same as the policy reasons for finding claims in the form [oldstep]+[newthought] ineligible under 101. In part, that is why it does not matter which statute is used to tank the claims.

  6. “Disembodied idea.” This is the postion of the US government in Prometheus. A mental step tagged on at the end of a process, as its last step, is not actually a step in the process at all.

  7. I’ve never heard of anyone eating a boiled egg every day.

    Nobody could have predicted that sockie would try to change the subject.

  8. Myopia, I think Malcolm position is that the new thought actually has no interaction with the old steps. The new thought is simply something thought about in reaction to the information produced by the old process. It is the information content from the old process that is new.

  9. Myopia, I will agree that eating a boiled egg every day is the link from what is old to what is potentially new. Assuming that it was new, the claim would be valid, IMHO as the information content, that eating a boiled egg would reduce heart disease by 99 percent, would just be explanatory information.

    In contrast, if the prior art disclosed that some people ate boiled eggs every day, but for a different purpose? What then?

    Tough case.

  10. An oversight on my part: is the eating a boiled egg every day old? Are you sure? I’ve never heard of anyone eating a boiled egg every day. Most people have a varied diet and eating a boiled egg every day does not sound like it is old in the art.

  11. Just a bad example that doesn’t work (the “new thought” has no interaction with the old steps).

    The Shilling’s words still apply: “Giving one example of a case that fails means nothing. Giving one hundred examples of cases that fail mean nothing.

  12. Myopia, try this example:

    I discover eating a boiled egg every day reduces heart disease by 99%. I claim:

    1. A process, comprising:

    every day

    placing an egg in boiling water; and

    removing the egg after three minutes;

    eating the boiled egg,

    wherein eating a boiled egg every day will reduce heart disease by 99%.

    Then I sue doctors who recommend eating boiled eggs every day for inducing infringement.

    Notice the only steps actually required to be performed are old. The information that eating a boiled egg every day reduces heart disease is new.

    I punt the ball to you for your analysis. Is there anything at all wrong with the claim?

  13. Leo, Mr. Sockie is attacking MM’s analysis under 101, I think. There concepts of old and new should have no place; and, for that reason primarily, MM’s 101 argument should fail.

    The Feds in Prometheus held the claims passed 101 because the (old) steps passed the MOT. Now, even MM would agree that if the old steps were not old but instead were new, the claims should pass 101. But this admission indicates that there is something wrong with the statutory basis for Malcolm’s argument. The analysis MM proposes is valid under 102, not not clearly so under 101: at least the way the law stands today.

    Malcolm has not budged from his position for some time. However, if you look at the “Stern” brief filed in Prometheus, you will see that Richard Stern actually agrees with Malcolm. If you want a fuller explanation of the legal basis for Malcolm’s position, read the “Stern” brief.

  14. We have a claim construction doctrine that involves “essential elements” and the mental step would likely be construed as non-essential because it is a disembodied idea, which would mean it would essentially be ignored.

    We just had our version of the Amazon One-click patent case decided by the Federal Court of Appeal (which was not the clearest decision) so some of this stuff is still unsettled.

  15. Thank you kindly Shilling. I was wondering if you would chime in here. You said what I thought anon would say. That is helpful and I’ll now return to the silent readership.

    And anon, I understand why you think MM’s version of the question is fallacious, I don’t understand why you wouldn’t answer the fact scenario presented, as Shilling has done.

  16. Wherein shillywilly steps up to the plate and answers the question.

    Here’s the question:

    Under current law (whatever you imagine it to be), can I obtain a valid enforceable method patent merely by adding a single step of thinking a useful, novel, non-obvious thought to a previous step that is in the prior art and therefore otherwise unpatentable?

    Here’s shillywilly’s answer:

    Yes …the claim as a whole may have the old step interacting with that new thought to yield a patent-inducing invention … [e]ven if that new thought is merely tacked on the end of the claim .

    Let’s ignore for a moment shillywilly’s strange lingo regarding a “patent-inducing invention”. Let’s assume that shillywilly was actually answering the question that was asked and not some imaginary question about “patent-inducing inventions,” whatever those may be.

    How exactly does a prior step “interact” with a subsequent thought? Is it a physical interaction? If it’s not a physical interaction, what kind of interaction is it?

    there are plenty of examples of where tacking on a thought would not yield a patent-inducing interaction

    Try to stay on topic, shilly. We’re not talking about any prior steps and any thoughts. We’re talking about an old, transforming step and a subsequent useful, novel, non-obvious thought. Are there “plenty of examples” of such claims that would not yield what you refer to as a “patent-inducing interaction”? If so, please provide one such example. Then we can all begin to learn exactly what you are talking about.

  17. An example?

    I like The Shilling’s note above: “Giving one example of a case that fails means nothing. Giving one hundred examples of cases that fail mean nothing.

  18. The sound, one does not reach 103 if there is nothing new under 102.  With 102, Prometheus-type processes fail because all the process steps are old and the only thing new is the particular information, which is not a process step.
     
    That the information is useful is not denied.  But its use has to be claimed in its own process.
     

     

  19. In 102, one does search for what is new.

    Yes, but that is only half the way there. Claims even in 102 and 103 still must be treated as a whole. The simple fact that synergistic effects can arise from the combination of elements dictates that a strict element by element review is not enough. A starting point, sure, but just as sure not enough.

  20. And look above, MM still does not answer, claims he does not have to answer, then in a mocking tone, offers to answer after he gets an answer to his fallacious question.

    And MM will still not answer even with the answer given because he does not care about any answer that gets in the way of his agenda to reinvigorate claim dissection and any other device that may end the dreaded and evil scourge of software-related patents.

    T O O L

  21. Q: “an explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified informaiton

    A: The item is potentially relevant as it is in the same or similar art field and/or deals with a possible aspect of problem resolution.

    NOTE: this universal answer can be applied to any item on an IDS without incurring additional risk or taking on the Office’s attempt to share the examiner’s workload with the applicant.

  22. That would be a yes; a possibility, not automatic of course, but a definite possibility due to the fact that the claim as a whole may have the old step interacting with that new thought to yield a patent-inducing invention in a manner supported by the existing case law on mental steps. Even if that new thought is merely tacked on the end of the claim (position may not be determinative of the possible patent-inducing interaction).

    Of course, there are plenty of examples of where tacking on a thought would not yield a patent-inducing interaction, just as there are plenty of cases where tacking on a separate old step would also not yield a patent-inducing interaction. Giving one example of a case that fails means nothing. Giving one hundred examples of cases that fail mean nothing.

    The whole “but it’s a thought” premise is faulty. Not only is it a strawman, meant to misguide and distort the insertion of Malcolm’s favorite past time of dissecting claims (which he nakedly states as not good law in violation of what the Supreme Court actually says), but it’s a flaming strawman meant to blind you with a burst of fire and then billow smoke so you cannot see Malcolm moving the goalposts.

    It is much better to douse the flame, clear the smoke and brush the straw remnants away and deal with any claim with mental steps according to established doctrine for doing so. There is ZERO need to pursue Malcolm’s quest. ZERO.

    Now ask me if that will stop Malcolm from running. Now ask me if that will stop Malcolm from posting his inanity with an undeserved smugness.

  23. Dear Canadian, I commend to you the argument going on in Europe, between England and the EPO, about claims of the form MM is urging on us here. The EPO consistently refuses them under Europe’s 103 whereas England consistently eliminates them under Europe’s 101.

    Both approaches have merit. Both work. Claim writers know how they stand, in both jurisdictions. There is no contradiction between the outcome in one jurisdiction, and that in the other.

    The argument in these threads is so heated because some contributers want to see the claims dismissed as not eligible while others expect to see them refused as unpatentable. The choice is not a simple one, as we see from the ever more entrenched opposed positions of mainland Europe and the offshore Britsh Islands.

    I’m curious how long it will take SCOTUS/CAFC to work out a consistent approach towards the revocation of these manifestly ineligible and unpatentable claims. As we see here, a lot of people have an interest in the result.

    How is it done in Canada?

  24. but anon’s net contribution is worse than worthless

    For someone who has chosen the moniker “Inviting Body Punches,” you sure do whine a lot when someone punches you in the body.

    Maybe you should change your name? How about Inviting Ridicule? Nah, you would whine about that too. How about It’s My Ball And I’m Going Home? That has a nice ring to it.

  25. This is exactly what Malcolm has been saying.

    No. It is not. It is not even close to what Malcolm has been saying.

    Malcolm has never tied his “new thought” to any type of discovery of a new (inherent) property. Malcolm’s “new thought” has never been tied to the “old step.”

    You are completely making things up now.

  26. Pulling, just re-reading my post, I should clarify that the discovery of a new property of an old process or composition or article or the like does not entitle one to re-patent the old process, composition or article.

    This is exactly what Malcolm has been saying. The new property is the only thing new claimed in the Prometheus claims; and everything else is old. This effectively makes the practice the prior art an infringement.

    The law permits a new property of something old to be claimed as part of a new process. But the new process steps must be in response to or a use of the new property.

  27. I think Malcolm’s point is this:

    The discovery of a new property of something old is not patentable as a process or as an article, etc.

    ?????

    Nothing Malcolm has ever said leads to that conclusion.

  28. A Canadian, I think Malcolm’s point is this:

    The discovery of a new property of something old is not patentable as a process or as an article, etc.

    The real question, raised by the US brief in Prometheus, is whether the issue should be decided under Section 101 or under Section 102?

    In Prometheus, the final mental “step” actually is not a step at all. It is an appreciation of some inherent property of the prior process steps. The US brief made this point clearly: that thinking about something, but actually doing nothing in response to the thought, is not a process step.

  29. IBP,

    Your personal feelings again cloud your judgment.

    I see that you are still sore from your previous (unneccesary) heavy lifting and you still resent my controlling a discussion.

    My word of advice to you: Get over it.

    As to A Canadian’s comment, it was that I was generally extremely helpful – the opposite of your view.

    I do understand that you really just want to express your views without challenge, comment, or alternate views. Your thin skin, I am sure, is lovely, but just not appropriate for this field.

    And note, I am not advocating a Malcolm-caustic style of reply (which, by the way, is funny that you never seem to mind that type of negative, deleterious and injurious posts – which far, far, FAR exceeds anyone else’s posts in those adjectives – even 6 – why is that?) Tell. Do. Please.

  30. A Canadian,

    I appreciate your attempt at civility; however, your demand that I limit my answer to “yes, no or depends” and not reiterate my answer of “claim dissection is not allowed” quite misses the point that, well, claim dissection is not allowed (please tell me you do understand that).

    If further, you do not understand the “fallacious question” comment, then perhaps Malcolm should provide more of his legal justification, as his mere declaration that “my example is different” fails. Any answer I provide without the necessary context will only be further “not understood.” I do not see that adding more to what you do not understand would be helpful to you. Seek first, then, to understand why the position is fallacious instead of wanting to build something atop a fallacious premise.

    So let’s put the questions to Malcolm (again) and hope he replies (for the first time): How do you differentiate your position from the existing case law on mental steps? – and “it’s different” does not suffice.

    And thanks to That’s Mr. Sockie to you – what instrument do you play? Perhaps you have a few friends that can join us…

  31. Canadian–

    Count me out of your “the rest of us”.

    Not only is anon not “generally extremely helpful in these discussions”, but anon’s net contribution is worse than worthless–it is in my opinion negative, deleterious, and injurious.

    It is a waste of time reading, and especially replying to, anon’s posts, which is why I have stopped doing so.

    That you feel otherwise tells me more about you than about anon.

  32. Can we reformulate this a bit. Instead of the [old steps] + [new thought] which as I understand it, you find objectionable because the [old steps] may, in itself constitute a patentable combination.

    Let us say, take the method of a claim of a granted patent. Now add a useful, non-obvious mental step to that claim to create a new claim. To attempt to define the question further: the only prior art that exists is the granted patent.

    Is it possible that such a claim is patentable?

    Merely restating “claim dissection is not allowed” is insufficient. All that is being done is describing a claim having some features and one piece of prior art. I am not giving you a specific example because I’m not bright enough to come up with one, but I think you can understand the hypothetical.

    As far as I can tell, the possible answers here are yes, no or it depends. If the answer is “it depends” then what does it depend on?

    A side-note because it has been bugging me, the fact that no “actual case where anyone has actually been sued for this so-called impermissible [old step] + [new thought]” exist is not relevant. Cases that have not been dealt with do not exist before they exist, then they do. Also, since no cases exist, this means that there are no cases answering the question in a way you think MM would not like.

    Generally, you are extremely helpful in these discussions anon; please help Leopold and I out. I would just like to know what you think, not read another repeat of the “fallacious question” response, which I don’t understand. If there are cases that say that mental steps can be included regardless of the patentability of the rest of the claim, then does that not mean you should just answer: yes, adding a mental step as described above could, in some circumstances, lead to a patentable claim?

    I get you are frustrated with dealing with MM all the time, just answer this one for the rest of us.

  33. Joining Radar at the music-fest: Anon and the Sockies.

    Rock On!

    you do have Richard Stern on you side of this argument, and that says a lot

    - a lot, but mostly: “You are wrong”

  34. Malcolm, I just scanned a few comments in this thread. It appears that anon and the sockies might be right that dissection is not allowed in 101, but you are right nevertheless because the way you phrase the issues (old + new) sounds in 102, not 101.

    In 102, one does search for what is new.

    However, you do have Richard Stern on you side of this argument, and that says a lot.

  35. I thought the answer was pretty clear: “Asked and answered – it’s a fallacious question.

    No thinking even required.

    No track shoes even required. Unless you want to chase after MM, that is.

    Now, if MM wants to establish a proper baseline for the question, one not mired in his dissection methodology, and taking into account both the “apparent [non]false absolutism” of the point that he assumes (and that which he needs to prove), and the abundant case law on inclusion of mental steps (which does speak to the issue, no matter how much MM merely claims otherwise), then we could look at who is wearing track shoes.

    Ask yourself Leopold, why has MM not addressed the case law on the subject? why does he continuously claim (without showing why) that somehow his example is different?

    This is not a new question. It came up the first time MM used his trite example. If you had been following, you would see who ran first and who is running after whom.

    And look above, MM still does not answer, claims he does not have to answer, then in a mocking tone, offers to answer after he gets an answer to his fallacious question.

    He’s got it all backwards. He needs to establish the non-fallaciousness of his question first. It is he that is trying to change established law, thus it is he that needs to overcome law already in place. His onus, no one elses.

    And I expect AI to chime in with another question that MM has never answered – giving an example of an actual case where anyone has actually been sued for this so-called impermissible [old step] + [new thought] that is so evil and so treacherous.

  36. So is that a yes or no?

    I thought the question was pretty clear: “Can I obtain a valid enforceable method patent merely by adding a single step of thinking a useful, novel, non-obvious thought to a previous step that is in the prior art and therefore otherwise unpatentable?”

    Malcolm is not even asking whether you will always obtain a valid claim by doing this, only whether it is possible.

    And all this time I’ve been led to believe that Malcolm was the one with track shoes.

  37. Showcasing my best seventh grade linguistic talents, MM is indeed being fallacious.

    To wit: a two step method each step of which, by itself (read that as dissecting the claim), is old in the art.

    And yet, this may very well be a fully patentable, patent eligible, and enforceable invention. No thinking even required; only doing what already has been done in the art, but in a claim as a whole.

    MM attempts once again his strawman arguments by distilling an example down to two steps, but still dissecting those two steps to reach his point.

    Sorry Charlie, you cannot do that, not even in a two step method claim. That’s the law.

  38. But first please answer the question I asked you, sockie. You know the one I’m talking about

    Asked and answered – it’s a fallacious question.

  39. All you do is claim “b-b-b-ut I’m talking about something different”

    You are attempting to dissect and avoid the case law that is on target here (because you don’t like what that case law leads to).

    You did not have an answer then.
    You do not have an answer now.

  40. sockie: First the rule, then the application.

    How does one arrive at “rules” on your planet, sockie? That’s a rhetorical question. The key point (again) is that your apparent absolutism (“parsing the elements … is not allowed”) is now proven false. A serious, “civil” person would admit that they were mistaken and attempt, in a reasonable manner, to “pick up the pieces”. The record now shows that you are not such a person (the record also shows that such people do exist — shall I identify them). I predict the remainder of this discussion will involve you digging yourself a deeper hole.

    What was the issue presented in those cases?

    I’m very sorry, sockie, but I’m not going to summarize the issues presented and answered in every non-overturned Federal Circuit and Supreme Court case. None of them directly address the question I’ve raised. If you believe that I am mistaken about that fact, just show me the case and identify the relevant passages that are directly on point. Thanks.

    For the record (and for the first time) differentiate just why your “very limited and clearly defined” attempt at dissection passes snuff

    I’ve addressed this confusion of yours dozens of times already, including at least once in this thread. First, there is no absolute prohibition on “dissection” of claims, as evidenced by the well-known and uncontroversial line of cases referred to in my 9:32 pm comment. Second, the cases which are most often raised by confused and/or willfully ignorant people address a different issue, i.e., whether the mere presence in a claim of a limitation that, by itself, represents ineligible subject matter is sufficient to render the entire claim ineligible per se (the answer is no). Third, the most recent Federal Circuit and Supreme Court cases concerning ineligible subject matter each acknowledge that the mere presence in a claim of a step that can be characterized as “transformative” is not sufficient to confer per se eligibility to the claim.

    But most importantly, sockie, I’m not engaging in “dissection.” I’m just asking you a clear straightforward question about a particular class of claims. And you’re refusing to answer it based on false premises. Unlike you, I’m not just saying that your premises are false and running away. I’m telling you why your premises are false. Who is engaging in the more civil discussion, sockie?

    explain why the jurisprudence on inclusion of mental step should be different for your “very limited and clearly defined” attempt

    There you go again, sockie. You’re clear as mud. Which “jurisprudence on inclusion of mental step” are you talking about? None of the cases address the issue I’m asking about. There are, however, some very well-known and uncontroversial Supreme Court and Federal Circuit cases which provide clear guideliness about how and why such claims should be analyzed by the USPTO and by the courts. We can discuss them at length, if you wish.

    But first please answer the question I asked you, sockie. You know the one I’m talking about.

  41. the issue I’m raising was not presented in those cases… that addresses my question squarely

    O really? What was the issue presented in those cases? Why did you “run away” when this question was first presented to you? You claim it is different, but you do not show why, nor do you show you understand why claims are alloable with mental steps – you need to grasp that lesson first before you can have a “grown-up” discussion.

    You did not have an answer then.
    You do not have an answer now.

    All you do is claim “b-b-b-ut I’m talking about something different

    Rubbish.

    You are attempting to dissect and avoid the case law that is on target here (because you don’t like what that case law leads to).

    For the record (and for the first time) differentiate just why your “very limited and clearly defined” attempt at dissection passes snuff, and then for the record (and the first time) explain why the jurisprudence on inclusion of mental step should be different for your “very limited and clearly defined” attempt.

    If you had provided such answers – when first asked – you would not have had to have gone on repeating your flawed position. You chose to run then. Most likely, you will chose again not to answer.

  42. YOu are not capable of having “grown-up” discussion. There is a compelte lack of evidence even hinting at such.

    As to the “admitting some inconvenient facts,” there you go again (with a Ronald Reagan tilt of the head), projecting your own inadequacies…

  43. You have your logic backwards.

    First the rule, then the application. Not your flawed hypo that leads to a rule you desire.

    You have assumed that which you need to prove to prove your point.

    Try again.

  44. parsing the elements … is not allowed

    Claim 1: [old object]+[instructions for using the old object in a useful, non-obvious manner, written on a piece of paper and packaged with the old object].

    Such claims are not patentable. Your apparent absolutism, i.e., “parsing the elements … is not allowed”, is therefore false. So you’ll oblige us all by not bringing it up again, of course, unless you provide a clearly articulated and compelling argument explaining why adding a step of “thinking a new thought” to an otherwise unpatentable claim should be treated differently from adding a piece of paper with instructions on it to an otherwise unpatentable claim. Should you attempt to articulate this argument, please do not ignore that both “thoughts” and “instructions” are ineligible subject matter.

  45. sockie: You cannot “evade” that which is without substance.

    Agreed. See my 8:34 pm comment, sockie. Just answer the question and you and I can begin to have a grown-up discussion about an important question of patent law that is highly relevant and interesting to most honest people who have given it a few moments thought, and highly troubling to a few others who worry about the consequences of admitting some inconvenient facts.

  46. sockie Malcolm’s question in itself is a false question – his whole [old step] + [new thought] depends on claim treatment of parsing the elements – this is not allowed.

    It’s not a “false question”, sockie. I’m not making any false assumptions.

    Here’s the question again:

    Under current law (whatever you imagine it to be), can I obtain a valid enforceable method patent merely by adding a single step of thinking a useful, novel, non-obvious thought to a previous step that is in the prior art and therefore otherwise unpatentable?

    Go ahead and answer, sockie. And yes I will expect you to explain your answer so you might as well preemptively articulate that explanation as clearly as you possibly can.

    numerous court cases allowing mental steps – without regard as to whether or not the other steps in a claim were “otherwise unpatentable.”

    Perhaps that’s because the issue I’m raising was not presented in those cases, sockie. If you are aware of a case directly on point that addresses my question squarely, I’d love to read the specific, relevant passages. Please share! And for the record (and the hundredth time): I’ve never said that any claim which recites a mental step is per se unpatentable, per se ineligible for patenting, or per se unenforceable. I’m talking about a very limited and clearly defined type of claim. I think I’ve described that type of claim in words that are very easy to understand but in the event you are still confused about what the type of claim referred to in my question, let me know and I will try to spell it out for you in even simpler terms.

  47. Also, it shouldbe noted that a question – directly related to Malcolm’s question was put to him – which he never answered – and that was in direct relation to numerous court cases allowing mental steps – without regard as to whether or notthe other steps in a claim were “otherwise unpatentable.”

    You cannot “evade” that which is without substance.

    Please save your disappointment for an instance that it is actually needed.

  48. Leo – no evasion – just recognizing that Malcolm’s question in itself is a false question – his whole [old step] + [new thought] depends on claim treatment of parsing the elements – this is not allowed.

  49. Evade questions much? I thought Malcolm was the one that doesn’t provide any answers. You disappoint me, anon.

  50. Malcolm is jealous of Dr. Katznelson

    LOL.

    answer some straight forward questions

    Under current law (whatever you imagine it to be), can I obtain a valid enforceable method patent merely by adding a single step of thinking a useful, novel, non-obvious thought to a previous step that is in the prior art and therefore otherwise unpatentable?

  51. Another worthless comment.

    Clearly, Malcolm is jealous of Dr. Katznelson, who has taken the time to become involved with actual substantive efforts to change the system with actual substantive facts.

    Malcolm would rather sit on his perch and type on his computer keypad his vague and insubstantial diatribes against what he perceives to be the greatest injustices in the world (because that’s what he believes). But ask him to put together a cogent legal argument, or – heaven forbid – to answer some straight forward questions – and he disappears in a lather of scathing attack, obfuscation, accusing others of what he does, accusing all of being “sockies,” (and still not porviding answers) or merely runs away (either with his banal “*click*” or simple disappearance from the thread at hand.

    None the less, blocking MM is probably not worth the effort. His ricidulousness can serve as a foil for making actual substantive points, and the fact that he does “run away” can serve as indications of when a valid point (counter to what his imaginary idealized world would hold) have been made.

    It is better to “make lemonaide” from the lemons Malcolm provides than to simply make a sour puss and choke on the seeds.

  52. as a member of the public

    That’s where the discrimination should be, Not at the Federal review and grant level.

  53. So that pharmaceutical apps, for instance, are examined better than, say, window-treatment apps?

    You know, as a member of the public I certainly hope so.

  54. Agreed.

    We ought to require Kappos or whoever is writing these rules to sit in on a claim construction hearing, perferrably involving something he actually wrote. He will quickly find that his most innocent statement was being taken widely out of context, resulting in all sorts of potential estoppels.

    We need to be able to simply cite a reference that might raise an issue, and perhaps attach to it other material that may make it relevant, such as non confidential statements by third parties as to the relevance of the information.

    But, as it is, the extent of discussion required by the patent owner in the proposed rules is beyond reasonable; and, if it becomes part of the rule, may make it all but impossible to use the new examination procedure.

  55. In all honesty, I have never received a valid 102b on any app I have prosecuted.

    You make a good point, though–however, it is Friday afternoon and I’ve already mentally checked out.

  56. Let’s do a little math – take the less then 2% active patents that end up in court multiply by the average court costs and subtract the whole examination budget (year over year)…

    How big of hole do you think that would put you into?

  57. “Don’t be surprised when the PTO comes out next year and says “You know, IBP, you were right, and we were wrong–it actually costs us $17,750 to do the initial exam.”, and then increase filing and maintenance fees accordingly.”

    I lulzed.

    “I have NEVER seen one that I would consider to be worth that much; nor have I seen an ex-parte reexam that I would consider to be worth that much, but everything is contextual.”

    Every valid 102b ever issued is worth quite a bit since, for instance, if we had registration and then just had people going to court to sort things out it’d cost a whole lot to go through that rigamarole.

  58. Well maybe with all that Government RED TAPE and all it may have been real hard do they sold it and it’s not a part of the non profit Company?

  59. Dr. Katznelson, Dr. Belzer, and I have reminded the PTO of its obligations, repeatedly.

    Katznelson is pretty easy to ignore and probably it’s better for everybody involved to continue to do so.

  60. I can write up why it’s going to cost me 50k to write an application.

    But at the end of the day, we both know I’m charging 10…. because it can be done for that.

    Same rules apply here.

  61. Well, I would say that I’d find out exactly how low that hurdle is for you, but I know I’ll never file one of these requests.

  62. I can get worldwide litigation searches done competently for 40k.

    This is supplemental exam, not a search.

    Have you charged someone 20k for reading a brief?
    Me either.

    Why don’t you try first?

  63. Can someone remind me again: what awesomeness necessarily results“…

    …a lighter wallet?

  64. I’m sorry, AAA, I’m not seeing it.

    Those pages simply re-iterate that the $17,750 fee accurately reflects the cost of the process or service:

    “The proposed rules to adjust the fee for filing a request for ex parte reexamination, and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings, only adjust or establish certain fees (as discussed previously) to more accurately reflect the cost of the process or service.”

    Can you quote some of where it appears in the FR?

  65. Dennis –

    Though I have not read the documents, your observation of “dubious assumptions” troubles me.

    The PTO bound itself to observe requirements under the Information Quality Act, which bars agencies from acting based on “dubious assumptions,” but instead requires them to rely on objective data, and transparent analysis:

    link to uspto.gov

    Dr. Katznelson, Dr. Belzer, and I have reminded the PTO of its obligations, repeatedly. The PTO has breached its obligations, repeatedly.

    The full rationale for the fee level is in an annex document, at link to regulations.gov

    Hopefully this document explains all the assumptions, and supports them with objective data and/or transparent reasoning that meets the PTO’s legal obligations.

    While I have not looked at either the Federal Register notice or the cost workup rationale document, Dennis’ questioning of “dubious assumptions” suggests that the PTO is still run by senior career staff with the same dubious attitude toward procedural law as we saw in 2005-08.

  66. BJA–

    I saw it too, and it is definitely no merely formal requirement–it is a substantive representation to the PTO.

  67. “In general, you get what you pay for.”

    Maybe in a situation remotely resembling a free market, but certainly not at a government agency.

  68. AAA–

    I did read the FR notice, it refers one to uspto.gov

    I couldn’t find anything on uspto.gov, so I put in a call to the Office of Planning and Budget, which of course nobody answered.

    I left a message with David Wiley, which hasn’t yet been returned.

    Why don’t YOU try not assuming that every poster here is a lazy doofus?

  69. Supplemental examination, though, is going to be heavily used by patents that are to be litigated

    According to your “reasoning”, the USPTO is probably undercharging by $50-$100K.

    Can someone remind me again: what awesomeness necessarily results when a patent survives supplemental exam at the USPTO?

  70. From the Federal Reigster, the PTO “is setting these fees pursuant to its authority under 35 U.S.C. 41(d)(2) in this rulemaking, which provides that fees for all processing, services, or materials relating to patents not specified in 35 U.S.C. 41 are to be set at amounts to recover the estimated average cost to the Office of such processing, services, or materials. See 35 U.S.C. 41(d)(2).”

    Also, “The Office’s analysis of the estimated fiscal year 2013 costs for supplemental examination, ex parte reexamination, and petitions filed in ex parte and inter partes reexamination
    proceedings is available via the Office’s Internet Web site (http://www.uspto.gov).”

    I haven’t gone to find this rationalization yet, but the PTO’s likely position will be that it has been substantially under-charging for re-exam in the past: “The [Office's] analysis of the Office’s ex parte and inter partes reexamination costs also
    revealed that the Office’s current ex parte and inter partes reexamination fees are not set at amounts that recover the Office’s costs for these processes or services.”

    Presumably, the maintenance fee payments subsidize only initial examinations.

    I agree with the turgid poster above that this is all about Obama’s efforts to make good on his purchase of union votes.

    Again, the figure itself means nothing–the important question is the value that re-exam, or any action by the PTO, represents. This applies equally to the re-exam fee, as well as the $4,320 fee for a refused request for ex parte reexam, and all other such fees.

    I see nothing in the Register or from the PTO that indicates that anything will be done any differently once these new fees are in force.

    If 6 is correct that the initial exam costs them $4,500, how can an ex-parte reexam cost them $17,750, if the qualities of those two examinations are even reasonably similar?

    Don’t be surprised when the PTO comes out next year and says “You know, IBP, you were right, and we were wrong–it actually costs us $17,750 to do the initial exam.”, and then increase filing and maintenance fees accordingly.

    Are the initial exam and search, as they are currently undertaken, worth $4.5k? That is a tough question to answer; in some cases yes, in some no.

    Are they worth $17.75k? I have NEVER seen one that I would consider to be worth that much; nor have I seen an ex-parte reexam that I would consider to be worth that much, but everything is contextual.

    Probably the most efficient examination is that of a picture claim that receives allowance on first OA, or after some formal objection to the drawings or formatting. They don’t waste the applicant’s time for something that is likely patentable, but ultimately very narrow.

  71. I think this conversation is being driven way too much by prosecutors who, I guess, aren’t able to charge their clients very much.

    Supplemental examination, though, is going to be heavily used by patents that are to be litigated. The cost of litigation for a party can easily be from $1 million to $10 million if not much more. $17K, $20K, or whatever is not that expensive–especially considering that a lot of the attorneys working on these will be charging $500 /hour and some up to $700 maybe.

    While you prosecutors may spend less than $5K on a prior art search and opinion, us litigators can spend hundreds of thousands on that (i.e., in the proper case where the plaintiff is claiming damages in the hundreds of millions of dollars if not billions). I’ve been on cases where attorneys (and not search firms) do nothing but search for prior art for weeks and months 5 to 8 hours a day.

    If your clients are small and not litigating their patents, well you probably don’t want to use the supplemental examination. But for many clients out there, money is not a consideration when they are about to sue someone for millions in damages.

  72. So now are you saying that a normal patent is not good enough and that you need a Gold-plated patent to achieve what a normal patent should achieve?

  73. Why would they close my Case. Don’t they investigate my Complaint? I told them what he did. I sent copies of the emails and the Checks. Weren’t they supposed to find out if he took it? Weren’t they supposed to ask him why He was not with the law firm anymore?

  74. 6′s stock performance reflecting his grasp of reality here will explain why he lives under that bridge along side of the highway in DC

  75. Please excuse, in house, if this is naive, but in these days of ever more esoteric and inaccessible subject matter claimed, and of not always succeeding with a bid for injunctive relief, might the underlying idea be that, if your employer wants injunctive relief from a US District Court, it can raise its chances by approaching the court waving a current USPTO all-embracing Certificate of Validity pinned to the very claim that it is asserting? There is an old maxim: pay peanuts get monkeys. In general, you get what you pay for. Does cheap perfume give as much clout as high-priced stuff? The judge has to like the smell of your case, no?

  76. “BTW, has the PTO presented any rational analysis supporting this price?”

    Why don’t you try reading the Fr notice?

  77. Not really, it isn’t that hard to know if there is litigation going on and the reexam on your desk could impact it. Or at least it doesn’t seem to be because the examiners in that position tell me they know sometimes.

  78. bad–

    I know. That is why I said “IF this represents a “real examination”, and left search out of it.

    Given the range $20-$50k, $17.75k for a “real examination” only still seems like a good deal.

    Of course, in the scenario under discussion, added to that would be the cost of the original examination and any appeals, etc.–but given the range of $20-$50k, IIRC, the $17.75k could still be considered reasonable.

    IF.

    BTW, has the PTO presented any rational analysis supporting this price?

  79. we can sure as f tell

    If you could so tell, then you are in the wrong business and need to move to Wall Street.

    Anyone making such a blanket statement clearly has no clue as to what they are talking about.

  80. Does this $17k “good deal” also fold in all future maintenance fee payments?

    If not, then your “good deal” is decidedly not.

  81. It’s just a formal requirement. Just copy the abstract of the reference without alteration for your characterization.

    Cheap, passes the hurdle, and creates virtually no record. That’s my initial thought on it anyway.

  82. This 20k is REEXAM!!! Not SEARCH and exam.

    The point was people would pay for better searching. Here, we’re talking about just highway robbery; paying 20k to someone to READ your brief.

  83. This sounds a lot the old Accelerated Examination Support Document that nobody wants to file.

    It does sound a lot like that. But the old-school Accelerated Exam fee was less than half this $17+k fee, as I reall.

  84. Speaking of which … anyone know the status of the remanded case? I’m sure Judge Alsup is so excited about the chance to listen to hear those wonderful stories again.

  85. The costs concern me far less than the requirements for “an explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified informaiton.” This sounds a lot the old Accelerated Examination Support Document that nobody wants to file. Supplemental Examination was billed as a way to remedy potential Inequitable Conduct problems. Instead, what I see is a process that requires lots of additional (and therefore risky) characterizations of the prior art to be placed into the record. I’d be inclined to save my arguments for why an uncited but questionionable reference is non-material or cumulative for litigation (in the unlikely event an Inequitable Conduct challenge survives a summary judgment challenge under Therasense) rather than trying to use this process (and be saddled with the “broadest reasonable interpretation” used by the USPTO. Kappos blew it on this one.

  86. “So 6, are you saying that the PTO discriminates among applicants based upon the PTO’s assessment of the “worth” of the examination to the applicant?”

    Discriminates? No, but we can sure as f tell if there is several million dollars riding on our sig in some cases. I’ve seen more than a few primaries that were well aware of that in their reexams. They brush it off of course but they’re aware.

    “So that pharmaceutical apps, for instance, are examined better than, say, window-treatment apps?”

    Well that probably happens anyway, just considering the time allotted for instance and the avg intelligence/education of the examiner. But I wouldn’t really call that discrimination.

  87. You know, I’m often asked to oppose a patent granted by the EPO. First, I’m told, we have to do lots of searches of the patent literature. Don’t get your hopes up too high, I counsel, and what usually happens? We do the searches but are disappointed when we find nothing better than what the EPO had found already.

    It costs (of course) nowhere near USD 17k for a search report out of the EPO.

    But to get a good one, you have (of course) to tee up to the searcher a decent set of claims, backed up with a decent description of what technical effects are delivered by the combination of technical features of the claim (probably at the outset a lowly dependent claim) that will end up being the one asserted.

    So, here’s how to save yourself USD17k. File at the EPO, but with a decent set of dependent claims, and a decent supporting description that is couched at the same level of generality as that of the claim you might want, downstream, to assert.

  88. Along this same line of thought, I asked on Patently-O some time ago, how much applicants would be willing to pay for a real examination and real search by the PTO.

    I forget exactly how I framed it, but IIRC figures ranged from $20k to $50k.

    If, IF this represents a “real examination” by the PTO, then $17k seems like a good deal.

    IF.

    There is no reason that I can see to suspect that it will be real, however.

  89. So 6, are you saying that the PTO discriminates among applicants based upon the PTO’s assessment of the “worth” of the examination to the applicant?

    So that pharmaceutical apps, for instance, are examined better than, say, window-treatment apps?

  90. Yes, it is boring that your chirps add nothing of interest to the thread.

    That’s why I need to spice things up, to compensate for your blandness.

    Cherrio.

  91. Yes, let’s. But it takes two (the ‘s in let’s) to do that. I said my bit. Now it’s your turn (to say something about the Office, rather than me). You know, it’s very flattering that my contributions always draw a response, but it’s boring when your chirps add noting of interest to the thread.

  92. Just a thought, but is the 17+k a declaration, intended to concentrate the minds of Applicants for US patents into “getting it right first time” ie to put forward to the PTO only such claims as need no re-exam. You know, folks who seriously want the patent to issue with claims to assert that are so strong that their validity cannot seriously be brought into question under a C+C standard. Thus, the PTO is using as the tool, for cleaning up the Augean stables, its corps of registered prosecution attorneys.

    Any Applicants out there of that way of thinking can sit back and laugh.

    Is it possible though for such folks to exist. Perhaps the PTO is labouring under a giant misapprehension.

  93. Must be for new pencil sharpeners for the Detroit facility. If examiners can’t sharpen their pencils, amended claims are going to have to be just as long in September as they were last October.

  94. We’re looking at one where our opinion makes (VERY potentially) millions of dollars worth of difference and our opinion may very well be based on more than the avg amount of references or searching.

    LOL. Everybody knows what it’s based on, 6. It’s based on paying the USPTO $17,000 bucks.

  95. “http://www.techdirt.com/articles/20120126/12313917555/polish-politicians-don-guy-fawkesanonymous-masks-to-protest-acta-signing.shtml”

    The internets are up in ur polish parliaments?

  96. I’m not sure where you got the idea that it appears to cost much much less for the USPTO to examine a brand new application in vacuum wihtout any assistance from teh applicant versus examining an old previously examined case where the applicant presents all relevant information to the examiner on a silver fxxxing platter.

    Where, specifically did you get such an idea or where does it “appear” that way.

    To be clear, the avg cost was 4.5k per application across the whole corps to examine initially. But now you’re asking the PTO to look over what we can rightfully assume will be some of the closest cases out of all of them. Thus, we’re not looking at an avg case anymore. We’re looking at one where our opinion makes (VERY potentially) millions of dollars worth of difference and our opinion may very well be based on more than the avg amount of references or searching.

    Plus, and just as an aside, who wants every schmuck sending their patent in for a re-do all the time? We already have a backlog. Jack dat cost.

  97. If I spent 5k on a search and opinion, the client would demand a refund.

    You need better clients. Obviously, it depends on the scope of the search and the issues that the client wants addressed and often the client is not entirely sure what all the issues are until some preliminary analysis of the search results has been performed.

    That said, I think everyone would agree that “spending 20k on an opinion where the client provides the references, facts, analysis, and the opinion” is more than a bit much.

  98. If I spent 5k on a search and opinion, the client would demand a refund.

    I can’t imagine spending 20k on an opinion where the client provides the references, facts, analysis, and opinion.

  99. If it costs you 20k to read my brief, then I demand that they fire you TODAY!

    If I spent 20k preparing a brief, I’d be fired.

    If I spent 20k reading a brief, I’d be sued.

    You are incompetent and have no business at the PTO.

  100. … so folks want to whack themselves in the head and knock their own feet from under themselves because … why?

    Er, um … what’s wrong with using a con instead?

  101. My guess is: The original accumulative application fees have factored in the accumulative maintenance fees.

    So, (suppl. exam. fee – original application fee) ~= expected maintenance fees.

    Or, re-arranging: suppl. exam fee ~= (original application fee + expected maintenance fees).

    Or, by substitution or inference: [(aggregated suppl. exam fees + aggregated original application fees + aggregated expected maintenance fees)/total applications + total suppl exams] * 10 ~= Kappos’ bonus.

    Not individually calculated, of course, but on average.

  102. Although the public entity registrar would probably charge $17,750 for a mere registration, it would presumably take less time…

    …although THAT could be fixed, too.

  103. What’s the matter you guys? Don’t like paying the dolla dolla bills that your examinations really cost?

    What’s a wee bit odd, 6, is that it appears to cost much, much less for the USPTO to examine a brand new application in vacuum without any assistance from the applicant versus examining an old, previously examined case where the applicant presents all relevant information to the examiner on a silver fxxxing platter.

  104. Ah, the public sector rears its ugly head.

    Hey union hack, we don’t want to pay what they COST, we want to pay what they are WORTH.

  105. What’s the matter you guys? Don’t like paying the dolla dolla bills that your examinations really cost?

    You should take this time to utter a prayer to the patentees that came before you subsidizing your examinations with their maintenance fees.

  106. I wonder if the cost will be recalibrated from year to year (and induce a death spiral).

    If, as is most likely, the Office is overestimating the number of people expected to use this and if (wildly assuming, the price is driven by some rational basis of cost allocation per the expected users), then, when the actual users are far below the expected value, the reconfigured costs will be even higher, perhaps double, perhaps triple.

  107. What we need to do is eliminate ex parte reexamination. The PO does not need it given supplemental reexamination. The accused infringer can and should use only inter partes.

    Currently, as observed by the ABA IP section, the loser of an inter partes reexamination could still file an anonymous request for an ex parte reexamination seeming in violation of the estoppel provisions of the act. Something has to be done. So, why not just elminate ex parte?

  108. If these procedures are as litigation-driven as they appear to be, nobody’s even going to notice the fee increase.

  109. What do you mean they won’t be flooded with thousands of requests?

    I can’t WAIT for fork over my 20k.

    WOW. Where did reality go?

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