By Dennis Crouch
Can you Step Up? Patent attorneys often remember Judge Rich and his important contribution to the development of U.S. patent law. One important element of Judge Rich’s legacy is that he was just one person acting on his own, but acting with vigor, persistence, and honor. Even in trillion dollar industries, it is still the passion of individuals who drive change. The White House is looking for some such individuals to join its Presidential Innovation Fellowship. The fellowship program is administered through the office of the U.S. Chief Technology Officer, Todd Park. It is Park’s office that is also leading the charge in patent reform initiatives.
Now in its third round, the program is now looking for an Innovation Fellow to work with “Crowdsourcing to Improve Government.” From the Patent side, one White House idea is “Using the Crowd to Improve Patent Quality.”
To help ensure that U.S. patents are of the highest quality, the U.S. Patent and Trademark Office is launching a new initiative focused on expanding ways for companies, experts, and the general public to help patent examiners, holders, and applicants find “prior art”—that is, the technical information patent examiners need to make a determination of whether an invention is truly novel or “patent-worthy.” This effort will focus on driving valuable contributions to the patent process and enhancing patent quality—strengthening a process that is vital to innovation and economic growth.
More Prior Art and More Accessible Prior Art: The general thrust of this project is to figure out how to ensure that the best prior art is truly available to patent examiners. The approach has several potential prongs. We are already familiar with the ongoing application-specific prior art submissions by third parties. Some work needs to be done on that program to continue to improve its effectiveness. In addition, the government is looking for new streams of prior art coming from industry leaders such as IBM, Microsoft, Cisco, and others that can go to examiners in a form that is easily searchable. Having quality prior art is obviously critical. However, in my mind, we still have a very long way to go in terms of helping examiners find the best prior art from the millions of potential references at their fingertips. One idea that I have is that each office action rejection that is issued by an examiner could be used to automatically annotate the associated prior art references in a way that facilitates future searches by other examiners. In turn, that result may also serve as a valuable mechanism for making use of the high level knowledge held by the 9,000 USPTO examiners.
Applications will be accepted through April 7, 2014, and can be found here: https://gsafas.secure.force.com/apply
The elephant in the room: other patent offices produce good prior art searches compared with the USPTO.
Dennis
Regarding :
“One idea that I have is that each office action rejection that is issued by an examiner could be used to automatically annotate the associated prior art references in a way that facilitates future searches by other examiners. In turn, that result may also serve as a valuable mechanism for making use of the high level knowledge held by the 9,000 USPTO examiners.”
That would be a good idea if examiners read the cited documents or made intelligent comments about them. While that might happen 15% of the time, most office actions appear to result from some sort of automatic word search for the nouns and verbs that are in the claims. Documents scoring highest according to some parameter are selected as the cited documents and paragraphs that have 2 or 3 words in common with half or a third of a claim element (a single step or component) are cited by paragraph number.
That is, claim language is pasted into an Office Action template and then every so often parentheses are inserted and a few paragraph numbers are typed in a la:
a gear (Ref 1 Fig. 3, 240) having thirty two teeth (Ref.2 Fig. 7, p 4 – 8), each tooth being diamond (Ref 3, Fig. 1) coated (Ref 4, p 17 – 42)
Where Ref 1 is a patent application for a watch, Ref 2 is a patent application for a dental implant, Ref. 3 is a De Beers advertisement from an issue of The New Yorker and Ref 4 is a patent application for a circuit board sealant.
If you can get examiners to annotate cited documents, please, please, please first get them to annotate there rejections with complete English sentences explaining why the cited portions are cited and why it would have been obvious to make the suggested combination.
oppps, : their rejections
Les, we need to be able to edit our comments, just like Dennis can edit his posts.
Ned –
You have identified something upon which we can agree.
LOL – and I agree with both of you !
Why don’t they also have the “crowd” examine the application (i.e. write the rejection)?
Cisco can bring back Rick Frenkel of Patent Troll Tracker fame.
DC: The general thrust of this project is to figure out how to ensure that the best prior art is truly available to patent examiners.
All find and dandy but I see no reason to limit the helping hand given to the Examiners to “the best art.”
The public should also be able to submit arguments that describe how that art should be applied, or that otherwise describe why the applicants claims must be narrowed before grant. There is no reason that Examiners should not be able to pick the “best arguments” from the public’s submissions. The Supreme Court certainly pays attention to its “friends” (aka “amici”) and there’s no reason the PTO shouldn’t be able to do the same to its “friends.”
What a tool – this plays right into the harassment of any small entity by those who would eviscerate the patent system and compete on size and market power alone.
How very Duell of you Malcolm.
I agree.
How very Duell
It’s going to be a rough year for you guys. I really think you need a vacation or a new shrink.
this plays right into the harassment of any small entity by those who would eviscerate the patent system
Exactly what do you mean by “this”? Allowing the public to present to the USPTO for its consideration not only prior art, but also explanations and arguments about patentability/eligibility based on that art and other facts?
In what manner could that possibly constitute “harassment”? Either the arguments are good, or they’re not.
Oh right, I forgot: you don’t like good arguments. You only like patents, and more of them, all the time.
The fact that they are likely not but will still pass through and take time and money to address seems to not occur to you, doesn’t it?
Not just a Tool Malcolm, you are a clueless Tool.
The fact that they are likely not
You have no evidence for this.
take time and money to address
Examination always takes time and money. The benefit here is that someone else will be spending the time to put together the references and arguments. All the Examiner needs to do then is review the references and arguments. If it passes muster, just copy and paste. Some corrections needed? Make ’em as necessary.
There is nothing unusual at all about this sort of operating procedure. It’s pretty much standard in every group where a leader is asking for input from his team members and vetting the responses. It’s more efficient for the leader than doing all the work himself. Or do you disagree?
Also true is that the USPTO will learn which submitters are more trustworthy than others, just as they have some sense already of certain applicants who reek of the bottom of the fishtank. Again, nothing unusual or controversial about this.
LOL – which team?
Gee, the fact that those already established in market power would have an untowards advantage never occurred to you, right?
What a putz.
those already established in market power would have an untowards advantage
There would be no more or less “untowards advantage” than exists now. All sides are perfectly capable of presenting the best arguments.
The point is to get those arguments in front of Examiners so they can identify and evaluate them, which is far easier than formulating those arguments from scratch.
We all know what your real problem is: you’re a grifting bottom-feeder and your meal ticket would be affected if it becomes harder for you to prey on people with money. Get a life, s0ci0path.
“There would be no more or less “untowards advantage” than exists now.”
Completely false – the more you jack up the costs the more you favor the established parties.
This is common sense Malcolm.
Wake up.
“You have no evidence for this.”
LOL – the man who refuses to answer even the most simple questions that go to the heart of the software and patent eligibility issue demands ‘evidence.’….
KA-BLOOEY goes another world of Irony factories…
the man who refuses to answer even the most simple questions that go to the heart of the software and patent eligibility issue
We already discussed your path0log0cial lying habits, Tr0llb0y. Get your meds adjusted.
Still waiting for answers Malcolm…
You almost seem to be arguing that you want the PTO to do a bad job so clients can get patents on inventions that are not novel and nonobvious.
If there’s invalidating prior art, you don’t want someone to be able to explain to the examiner why the patent shouldn’t grant. Am I missing something? You want invalid patents to grant? But at the same time, you want the patents to be presumed valid with a clear and convincing presumption.
Probably the applicants who are going to be harassed are competitors harassing each other.
Big A: You almost seem to be arguing that you want the PTO to do a bad job so clients can get patents on inventions that are not novel and nonobvious.
Of course that’s what he wants. Once you understand, it explains pretty much all the bizarre nonsense that flows out of anon’s mealy mouth.
“Of course that’s what he wants”
This is a direct 1ie Malcolm, as I have forever and a day asked for quality examination and I have always said that a rubber stamp of Accept Accept Accept is not acceptable.
Pay attention and stop dissembling.
“Oh right, I forgot: you don’t like good arguments.”
Nice strawman – I love good arguments.
Even as you are not likely to know what that means, judging from the schlock you post on the various websites.
And yes, more patents all the time is a VERY good thing. Such a use of the system benefits both sides of the Quid Pro Quo bargain.
You do know what the Quid Pro Quo bargain is, right?
The problem is that Examiner’s could be buried under a pile of thousands of submissions, most, if not all of them being immaterial rants, but nevertheless, each one having to be reviewed. I believe Examiner’s currently get about 20 hours to issue a first Office Action…. so…. you know…. do the math.
Examiner’s could be buried under a pile of thousands of submissions, most, if not all of them being immaterial rants
Project much?
Rich’s greatest contribution to the “law” is overruling precedent of long vintage. Such is not contribution to law.
Jefferson made contributions that have stood the test of time.
Story made many contributions, all of which are foundational.
Ditto Hand and to some extent, Chief Justice Taney.
But Rich? There is not a decision of his that did not cause tremendous chaos, backlashes or the like. Virtually everything he did was wrong and will have to be overturned eventually. I am trying to think of an exception.
Just take a look at the dissents, for example, in Tarczy-Hornock, or Musgrave, that speaks of Rich as a radical.
Served with honor? His legacy is of an jurist out of control — except by the Supreme Court.
Yet again, Ned you malign that which you do not understand.
It was not Rich as Judge Rich that you dislike nearly as much as it was Rich as law writer (before he became a judge) that you refuse to accept.
He was NOT out of control – and if he was the Justices would have eagerly said so. Quite the opposite – he was able to tell the Justices that they were out of control (and they still are) because Judge Rich knew the law as it was better than they.
You need to accept that your preferred common law judicial evolution tool was removed from the courts in the 1952 Act.
Once you accept that, then you will see that it is the Supreme Court that has acted in bad faith.
Your fealty to the Nine Kings is sadly misplaced in our Constitution driven patent law system.
“Your fealty to the Nine Kings is sadly misplaced in our Constitution driven patent law system.”
You do know that every lawlyer in this country is supposed to have “fealty” of a sort to the “nine kings” correct?
6,
No – the fealty is to the law. If a court, even the Court is not abiding the law, we have a duty o correct that court to the best of our ability.
Respect for the courts demands that we do so.
Clearly you do not understand this concept of respect.
No clearly you need to reread the rules of professional conduct for your state. Doing so sure has helped EG calm down his nonsense.
LOL – you, who could not even make it into law school, are going to argue about a state ethics rule? Which state? Which rule?
Or are you just making things up yet again?
Maybe the Preamble to the ABA? part [6]? maybe [12]?
How about Article 4 and the complete lack of some to abide by this (because as they say, this is a blog)? Or 8.3? 8.4?
Come 6, show that you are not full of it.
” Which state?”
Whichever state you’re in tar d.
How about the rest of the questions, 6?
“Or are you just making things up yet again?
Maybe the Preamble to the ABA? part [6]? maybe [12]?
How about Article 4 and the complete lack of some to abide by this (because as they say, this is a blog)? Or 8.3? 8.4?”
No, no, no, no, no, no.
What then, 6, are you specifically referring to in your post at 6.1.1?
Speak man – speak. Or let the lack of an honest and direct answer paint you as the f00l that you are.
“What then, 6, are you specifically referring to in your post at 6.1.1?”
The rules of professional conduct for your state. Try googling them, since you’re not a real lawlyer and don’t know sht about them.
LOL – Maybe you want to look up the word “specific” while you are playing on the internets…
Come 6, be specific – what is the rule – the specific rule that you are thinking of.
What? I cannot hear you? What?
A judge who is described as a radical by his own colleagues? A man who overturns numbers of prior CCPA decisions of ancient vintage based on his own say so? A man who refuses to follow and abide by Supreme Court cases he disagrees with, who open criticizes them and their reasoning. What kind of judge us this?
He undoubted thought highly of himself, a real patent god in his own mind. But he was not the kind of judge anyone should say, “Now there is the right kind of jurist.” Had the ABA been called on to rate Rich after decades of refusal to follow the Supreme Court and his predecessors on the CCPA, I would think he would not be give an qualified rating.
Judge Rich knew the law as it was better than they
The dude was not that smart and you don’t have to read much of his baloney to figure that out.
He did love fluffin’ patents, though. And that’s why he’s a hero to the patent teabaggers.
To again go over realities which so many people remain in denial of: the amount of prior art that needs searching doubles roughly every ten years, yet examiners have only a few hours per application [not per claim] for prior art searching and analysis if they are to meet their quotas. Most importantly, since only a very small % of patents will ever be asserted, and many are abandoned by non-payment of maintenance fees, there is no political will or fiscal justification for charging high fees for additional prior art searching by examiners in all of the some 350,000 new patent application per year. Likewise for third party “crowd-sourcing” for more than the very few patent applications that can be identified in advance [from a mere published application] as an actual problem for someone’s future products. Furthermore, we have the legal farce of presuming that examiners have had time to read the entire contents of lists of hundreds of lengthy patents and technical publications submitted by some applicants with no indication of claim element relevance to pick out and cite those actually relevant to the final claims.
Hence, we now increasingly have reexaminations and IPRs from the defendants of the small % of patents ever actually asserted. Not surprisingly they cite much better prior art (found after a much more expensive prior art search) more than half the time.
The PTO would more effectively spend its time and money addressing its excessive delays [in clear violation of their special dispatch requirements] of reexaminations and reissues, and making sure that IPRs meet their statutory deadlines.
Hello Paul,
I agree. Let market forces take care of invalidating prior art. Attorneys and in-house counsel should have a good idea what the art is and try to obtain patents that are at least enforceable and novel under 102.
Another issue that is just as important, and not really addrtessed by the patent bar, are paper patents, particularly in chemical/biotech practice. Many patents of commercial significance often claim more than they disclose – some are grossly non-enabled. The patent office has not applied section 112, first to chemical cases since the early 70’s.
Best regards,
Joe
Joe,
How do you feel about any pharma patents that clearly are not possessed at the time of filings given how many drugs fallout of the Government safety development check system?
Should all pharma patents first prove they meet efficacy standards prior to filing?
“if they are to meet their quotas”
You have identified one of the problems of poor examination.
“only a very small % of patents will ever be asserted”
Another problem identified (the answer to this problem is NOT to make any such assertions a matter of denigration).
A problem you have skipped over: the Office is required to perform an examination under the law. Yes it is a difficult task. But it is required.
Telling the government to do a better job, good luck with that one.
I hear you.
“To again go over realities which so many people remain in denial of”
Seriously. Why people have so much trouble with these things is beyond my comprehension.
That which is beyond your comprehension is legion. You demonstrate that numerous times. Daily.
+1 to the Google power.
Awww, feling inadequate today aaa?
Lovely AAOTWMD 6.
“Furthermore, we have the legal farce of presuming that examiners have had time to read the entire contents of lists of hundreds of lengthy patents and technical publications submitted by some applicants with no indication of claim element relevance to pick out and cite those actually relevant to the final claims.”
Meh, presuming refs in IDSes considered isn’t that big of a deal in most cases. Even though I’ve known many examiners who will straight up tell inside people they don’t consider the IDSes. Sure some people try to bury the relevant parts with huge disclosures but that’s rather rare of late. I actually haven’t seen that happen anymore since they were threatening the IDS rules. I’m sure it’ll rear it’s head again soon though.
LOL – sorry 6 but still wrong as to the ongoing need to err on the side of driving up dump trucks of references in the IDS submissions.
“I actually haven’t seen that happen anymore since they were threatening the IDS rules.”
What?
I haven’t seen it since then. How does that confuse you?
Who exactly are “they” and what did “they” do that constituted “threatening the IDS rules”?
One of my colleagues recently received an OA in which the examiner complained about the number of references and alleged that burying references could be grounds for inequitable conduct, and then cited some case that was so hilariously inapposite that we all had a good laugh. It looked like some form paragraph that the examiner had written up, or gotten from some other examinertard that had written it up.
Is that what you’re referring to?
/eyeroll
I swear to god AAA, I’m just not in the mood for your ta rdation today. If you don’t know who “they” are then you need to consider who even could threaten to make patent rules. Then maybe you can consult the archives for proposed rulemaking on IDS submissions.
That’s all I have to say about this non-topic that I couldn’t give two shts less about.
Better computer-generated translations of non-English documents.
Yes
And Examiners who aren’t written their rejections in a foreign language, and then submitting a computer-generated translation.
writing — ah, the irony.
“One idea that I have is that each office action rejection that is issued by an examiner could be used to automatically annotate the associated prior art references in a way that facilitates future searches by other examiners. In turn, that result may also serve as a valuable mechanism for making use of the high level knowledge held by the 9,000 USPTO examiners.”
We already have that. It’s called “the notice of references cited” and likewise doing a backwards citation search.
But besides the OA doing an annotation the office should be able to annotate the actual references in its collection. Especially be able to designate keywords for the references and attach them thereto.
Either way, I have an idea about how to get the crowd involved. Give people who submit art like $500 or $1000 dollars (maybe less, play it by ear as the program gets started up) for every reference they cite that the office ends up using in an OA. Once you put money behind the crowdsourcing people will start doing the hard work of citing references. Without that, it’ll never take off precisely because of a. the stu pid way the patent system is setup nowadays and b. it is hard work.
You still have the bottleneck of the examiner choosing to use any particular reference.
Here’s a different idea down that path: Do the Fn job right the first time through.
It is your job to examine. Do your job.
We’re hiring, if you think you can do better.
“if you think you can do better.”
He doesn’t, he’s just a retard.
So, to be clear, I can’t criticize Jay Cutler because I can’t do his job better than he can. Not surprising that such logic comes from an Examiner.
“So, to be clear, I can’t criticize Jay Cutler because I can’t do his job better than he can. Not surprising that such logic comes from an Examiner.”
I’m always surprised by attorney’s wanting “better examinations.” If you gave the Examiner the amount of time to review the case that was actually required to have a considered analysis, you’d have double the cost, triple the interviews and maybe a tenth of the allowances you have nowadays. Most allowances don’t happen because the subject matter is allowable, most allowances happen because the initial burden is on the Examiner and there is a production quota.
Random Examiner,
Why would you ever be surprised by an attorney wanting better examination (no quotes needed)?
I want valid patents for my clients.
Period.
Stop with the whining already. Do your Fn job.
“I want valid patents for my clients.”
You already get your “presumed valid” patents. So stop your btching.
Not to even mention that from your rantings on 101 you also appear to want many facially invalid though presumed valid patents for your clients as well.