Making Examiner Interviews Transparent

Guest Post By Bernard Chao, Assistant Professor, Sturm College of Law University of Denver

Patent law seeks to provide the public with notice of a patentee’s property rights by requiring that a patent’s claims “distinctly point out what the inventor . . . regards as the invention.” 35 U.S.C. § 112 (b). However, both the Federal Trade Commission and the White House have noted that far too many patents contain claims that fail to provide adequate notice of what they cover. The Patent Office has recently adopted two initiatives to address these complaints. One program seeks to curb functional claims, a type of claim that is accused of often having uncertain boundaries. A second program encourages patent attorneys to include a glossary in their applications that will define the terms used in the claims. Help may also be coming from the Supreme Court which is reviewing § 112′s “insolubly ambiguous” standard in Nautilus v. Biosig. To varying degrees, these solutions all show some promise. But they are unlikely to solve the problem of unclear claims by themselves. More is needed. This post proposes another approach that should
help clarify claims.

The patent office should bring transparency to patent examiner interviews by recording them. Current patent office rules allow applicants to have face to face interviews with patent examiners. Although these rules also require that the examiner and the applicant summarize the substance of the interview, typically these summaries only identify the prior art discussed, parrot the claim language and provide the most skeletal description of the interview. This problem is well known. I recently attended a patent conference at Stanford Law School where two prominent professors separately complained about how opaque the interview process was. Indeed, patent prosecutors are clearly aware of the minimal record made after patent examiner interviews and view this as an advantage of the procedure.

But concealing the examiner/applicant dialog leads to unclear claims in two ways. First, claim interpretation is more uncertain. Courts rely on the prosecution history as one of the primary sources of evidence to interpret claims. Statements that distinguish an application’s claims from the prior art can play a key role in claim interpretation. By explaining how the prior art is different, such statements necessarily say what the claim does not cover. However, when these statements are made verbally during interviews, they do not appear in the prosecution history. Consequently, courts must interpret claims without the benefit of statements that should delineate the boundaries of the claim. Absent this evidence, claim interpretation will inevitably be less accurate and less predictable.

Second, the failure to know what was said during patent examiner interviews renders any doctrine of equivalents analysis less predictable. Under Festo v. Shoketsu,
535 U.S. 722 (2002), a narrowing amendment estops a patentee from asserting infringement under the doctrine of equivalents unless the patentee can establish that the amendment was made for one of three reasons. One of the reasons is that the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question. The examiner interview is the most likely place to discuss the reason for an amendment. Without a record of the interview, anyone is free to speculate about why an amendment might have been made. A good example of this phenomenon can be seen in a case I teach in my patent law class, Unique Concepts v. Brown, 939 F.2d 1558 (Fed. Cir 1991). In Unique Concepts, different Federal Circuit judges could not agree about the reason for amendment because “the record contain[ed] no indication of what transpired in the interview.” Making audio recordings of patent examiner interviews would prevent this kind of dispute and clarify what claims cover.

Some patent prosecutors may worry that recording patent examiner interviews will have a chilling effect on the interview process. Patent attorneys may be reluctant to have a frank discussion about what their claims cover. Alternatively, because interviews happen in real time, without time to reflect and choose words, attorneys might refrain from having interviews. All that may be true. But if a patent attorney is unwilling to make a statement on the record, why should the patent office allow the claims? The public is entitled to know why a claim should be allowed before the applicant receives the monopoly rights that come with an issued patent.

The idea of recording patent examiner interviews is hardly revolutionary. In an era, where people post their most trivial thoughts, pictures and videos on Twitter, Instagram and Facebook, it’s clearly time for the Patent Office to record some of patent law’s most important conversations, examiner interviews.

253 thoughts on “Making Examiner Interviews Transparent

  1. 37 CFR 1.2 Business to be transacted in writing.

    All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

    1. Very good! That’s one of the rules that will need to be tweaked when the recorded Interviews are put into the prosecution record. Thanks for highlighting that. Also note this:

      No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

      There won’t be any disagreement or doubt about the content of those Interviews when they are recorded. That’s the point.

        1. The point is that the current rules already govern.

          That’s a really thoughtful response to a proposal to change the current rules.

          Deep, deep stuff.

          1. It is deep stuff.

            Sort of like making sure that no untoward side effects may occur when far less intrusive techniques may be better applied.

            You really svck at this legal thinking stuff Malcolm.

  2. Kids, do you know why this will never happen? I guess not, since not a single one of you has mentioned it:

    The Examiner’s Union. Just try getting their buy-in to recording their members and making it part of the public record.

    That’s too funny. This must be one of the most naive proposals I’ve ever heard.

    1. The Examiner’s Union. Just try getting their buy-in to recording their members and making it part of the public record.

      Examiners are already required to summarize the Interviews so they don’t have any credible objection to this change. The fact is that Interviews long ago evolved into a farce, along with the Summaries. That’s particularly true where the Interviews are lengthy and complicated and impractical for an Examiner to summarize adequately.

      The current state of affairs, like much of our patent system, is just a giant joke, all for the benefit of the super-wealthy and the entitled grifting bottom-feeders who troll those wealthy entities, all at the public’s expense.

      More changes to come, folks. Don’t act surprised.

      1. Examiners are already required to summarize the Interviews so they don’t have any credible objection to this change.

        The point here is that the job is not being done well enough.

        Do the Fn job.

        (why the H would a lengthy and complicated interview be “impractical” to summarize? – there exists NO valid reason for this)

        The rest of the ad hominem can be suitably dismissed as typical Malcolm vapidness.

        1. Anon, here’s the thing with demanding, as a solution, that examiners simply do their effin job: that is an excellent expression of integrity with which I agree, but which I think is no more grounded in reality than me doing my effin job as a weekend hacker and making the cut for the U.S. Open. It is simply beyond my abilities.

          You are demanding that examiners do a job that, if properly and rigorously executed, is beyond the temporal, cognitive, and in many cases linguistic limitations under which these government employees operate. Your exhortations are commendable and idealistic – but not realistic.

          You can castigate this as surrender. I see it as admitting reality so that we might then move on to considering more feasible remedies.

          1. LOL

            I think that you are correct Tourbillion. I do not castigate – but given the other ‘solutions’ being offered, this one by far is the one that is most on point and is the one our fearless leaders in Washington should be focused on.

            Maybe we could get some academics to write about this…. ;-)

  3. If we allow off-the-record interviews with the patent applicant, shouldn’t we also allow off-the-record sessions with third parties who think the invention is unpatentable? Thoughts?

    1. I think that there is a clear attempt to make a distinction that changes your question.

      The thought is to make the interviews not off-the-record.

      There is a clear jump from the two parties interacting to what is in essence opening up the entire prosecution process to anybody that wants to be involved.

      1. There is a clear jump

        It’s called “argument by analogy.” I think Dennis is pointing out that the folks who so strongly resist this extremely modest proposal would go absolutely bonkers if ex parte challenges to patents were afforded the same black box treatment.

        It would be quite wonderful, wouldn’t it, if any third party could call an Examiner up, present some art and an argument that would tank the case, and then the Examiner just writes the applicant and says “Sorry, the claims are no longer allowed. I just received a phone call that changed everything. Don’t bother refiling and please don’t contact the Office again. Have a nice day.”

        We essentially have the opposite situation today. A very typical Interview summary simply states what statute was considered (almost always 103 in the computer-implemented context) and a form summation stating that the claims are non-obvious because the prior art doesn’t teach [insert claim here].

        It’s simply not sufficient. Given that the technology has existed for many years to simply record the Interviews, it’s time to move forward with that.

        Of course a certain segment of the patnet bar is going to complain. They complain about everything that might remotely affect their ability to obtain and enforce the broad patents they believe they are entitled to, regardless of how reasonable the proposal is.

        1. who so strongly resist this extremely modest proposal would go absolutely bonkers if ex parte challenges to patents were afforded the same black box treatment.

          I do not see that at all in what Prof. Crouch asks. Maybe you need to read what I have actually posted here – even if that is inconvenient for your little diatribes.

          1. Maybe you need to read what I have actually posted here

            LOL. Like this: Prof. Chao will not likely achieve what he thinks he would achieve by forcing a more gestapo regime

            Because the first thing that comes to a normal person’s mind when they hear about an effort to increase transparency in the patent system is the N@zi secret police.

            Keep the hits coming, “anon.” It’s easy to slip up, I suppose, when your psychotic garbage is so fondly embraced elsewhere on the Internets.

            1. Try reading all of what I wrote Malcolm

              Since when? 2005?

              Seriously: if people are often having difficulty understanding you, it’s probably not their fault. And if you find it that difficult to make your point coherently, perhaps just accept the fact that your point is incoherent and not worth making.

            2. On this thread – including the rather inconvenient notion for you that I do not find this recording to be all that big a deal – the gestapo effects has more to do with the fact (that you seem quite oblivious to – even though many other shave also noted this) that making the recordings of record will defeat the purpose of having them in the first place.

              But let’s also explore your rather perverse and over the top reaction to the complimentary notion of recording what can be aptly called start-chamber quality review meetings that are completely off the record.

            3. the gestapo effects has more to do with the fact … that making the recordings of record will defeat the purpose of having them in the first place.

              You said nothing about ‘gestapo effects’ (whatever in heck that’s supposed to mean).

              You compared the proposed recording of Examiner Interviews to the institution of a “gestapo regime.” Elsewhere you’ve compared the “second pair of eyes” quality review at the USPTO to “the Gestapo.”

              I do not find this recording to be all that big a deal

              Was the Gestapo also “not that big of a deal”?

              Maybe stop and think a bit before digging a deeper hole. Unless of course you believe that you can’t dig any deeper (not an unreasonable belief at this point).

            4. You’ve developed quite the ability to seem not able to understand that which you don’t want to understand.

              Try again – this time with a little intellectual honesty.

    2. 1) Interviews are not “off the record.”

      a) Applicant initiated interviews must be preceded by the submission of a proposed agenda. If one hopes that the examiner will be prepared to have a productive discussion, one must provide a fairly detailed agenda with argument summaries etc. Else the examiner wont be prepared to make a decision.

      b) Both the applicant and the Examiner have a duty to submit a summary of the interview for the record after the fact. That summary is expected to include:

      at least the following applicable items:

      (A) a brief description of the nature of any exhibit shown or any demonstration conducted;
      (B) identification of the claims discussed;
      (C) identification of specific prior art discussed;
      (D) identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the Interview Summary form completed by the examiner;
      (E) the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner;
      (F) a general indication of any other pertinent matters discussed;
      (G) if appropriate, the general results or outcome of the interview; and
      (H) ) in the case of an interview via electronic mail a paper copy of the contents exchanged over the internet MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary Form, PTOL-413, is entered.

      see, for example: MPEP: 713.04 Substance of Interview Must Be Made of Record

      So, if the “off the record interview” you propose is only that far off the record, I have no problem with it….as long as the third parties pay for the Examiner’s time, as the applicants have.

      1. That is but one fallacy that concerns any “argument by analogy” (see 28.1.1) that wrecks that view (see 28.1.1.2). Yet another wrecking ball is the fact that the public simply does not have the right to be involved in the examination process.

        Not one but two major relevant dissimilarities are (or should be) readily apparent.

  4. What a terrible idea! Bad idea. Recording interviews will mean the end of interviews. The possibility that every uttered word may become file wrapper estoppel is scary and utterly contrary to the purpose of the interview, which is to facilitate understanding and have a frank two-way dialogue between practitioner and examiner with the goal of advancing prosecution of the case. Otherwise, I may simply continue to file written amendments whose every word becomes immutable estoppel. Why do the same with interviews? The Prof. probably has never had a patent to prosecute or a client whose business depends on patent protection.

    1. The Prof. probably has never had a patent to prosecute or a client whose business depends on patent protection.

      I’ve been supporting this change for many years, having represented both patentees and defendants. One’s experience with patent prosecution per se has little do with how one views this proposal. Rather, it’s the extent to which one relies on chicanery and deception to obtain patents which would obviously color one’s view of the proposal. If you have nothing to hide, then you have no reason to object to recording the Interview which results in an Allowance.

      the purpose of the interview, which is to facilitate understanding and have a frank two-way dialogue between practitioner and examiner

      If it’s a “frank two way dialogue” then why in the world are you worried about estoppel? You’ll get the patent you deserve with the scope you deserve. And it’ll be far easier for everyone else in the country (remember them?) to understand what you obtained and why. The public interest in understanding the patent rights being granted is “paramount,” as everyone already knows and understands. And there is no doubt that statements made during Interviews can (and should) impact claim scope.

      Just record them and make them public. It’s long past time that this was done.

      1. If it’s a “frank two way dialogue” then why in the world are you worried about estoppel?
        Words put in an amendment are first considered, then perhaps considered again, then put down on paper, then reviewed (one or more times), and then sent to the Examiner.

        Words uttered to an examiner may be misspoken or incorrectly transcribed or based upon a mishearing of what the Examiner said — no one is going to want to conduct an interview under those conditions. If they want it in the written record, then I’ll do my business before the USPTO by the written record alone. By choice, it is my preferred practice. I see no benefit in potentially cutting my own throat (and/or that of my client’s) over some ill-chosen, spoken words.

        They can record interviews all they want — however, don’t expect me to be participating in them.

        it’ll be far easier for everyone else in the country (remember them?) to understand what you obtained and why
        Hardly — it just means that some litigator has another source from which to kick up dust and cloud the patent.

        there is no doubt that statements made during Interviews can (and should) impact claim scope
        Really? The claim language should stand on its own — which is why I don’t have a problem recommending to my clients to avoid applicant-initiated interviews.

        1. If they want it in the written record, then I’ll do my business before the USPTO by the written record alone. By choice, it is my preferred practice. I see no benefit in potentially cutting my own throat (and/or that of my client’s) over some ill-chosen, spoken words.

          Just for the record, people actually pay serious money for articulate attorneys who can get the job done, if possible, without “cutting the client’s throat.”

          That occasionally results in unfortunate moments like the first half of the oral arguments we discussed last week (where the patentee’s attorney was forced to pretend that the “device profiles” were something other than data). But that’s how the game is played. Even in public. At least when it’s played out in public we don’t have to pretend that some attorneys aren’t being a lot of money to make fools out of themselves.

          1. Just for the record, people actually pay serious money for articulate attorneys who can get the job done, if possible, without “cutting the client’s throat.”
            They are called first-chair litigators at big firms — and they make huge $$$$$$. Of course, there is no current need for patent prosecutors to watch every word they state, so I presume you weren’t talking about patent prosecutors.

            where the patentee’s attorney was forced to pretend that the “device profiles” were something other than data
            That wasn’t the fault of the attorney at the Federal Circuit — those claims were doomed by Warmerdam before they even issued. The person who doomed those claims was the one who asserted them.

            1. there is no current need for patent prosecutors to watch every word they state

              Is that what you tell the patent prosecutors you hire to prosecute your junk? Or is that what you tell your clients when you take their money to prosecute their junk?

              They are called first-chair litigators at big firms

              No, they’re called “competent attorneys.”

              That wasn’t the fault of the attorney at the Federal Circuit

              LOL. Did someone put a gun to his head and force him to make those arguments? Nope. He took the money and made the arguments.

              those claims were doomed by Warmerdam before they even issued

              Fascinating. Should the inventor or the prosecutor be disbarred or punished by the USPTO? Definitely some Rule 11 violations by the attorney, though, right, for wasting the court’s time with those “doomed” claims? The defendant will be getting their fees paid, right?

            2. Is that what you tell the patent prosecutors you hire to prosecute your junk? Or is that what you tell your clients when you take their money to prosecute their junk?
              Reading comprehension get you down again? I said “every word they state.” Prosecutors currently don’t have to watch any words they state. All business at the USPTO has to be done in writing.

              You are all geared up act the total a s s h o l e and you overlook this point — so MM-ish.

              Should the inventor or the prosecutor be disbarred or punished by the USPTO? Definitely some Rule 11 violations by the attorney, though, right, for wasting the court’s time with those “doomed” claims?
              Not good with the lawyering thing, are you? If the claims issued, they have a presumption of validity. Moreover, if you have a reasonable explanation as to why certain case law doesn’t apply to your claims, it isn’t Rule 11 worthy. There is a difference between taking a losing case to the Federal Circuit and taking on a frivolous case. From everything I have read from you, I assume you don’t know the difference.

        2. there is no doubt that statements made during Interviews can (and should) impact claim scope. Really?

          Really. It’s been that way for a long time. It’s not going to change, either.

          The claim language should stand on its own

          And it always does “stand”, if you ask the patentee who is asserting the claim. For whatever reason, the patentee very very rarely believes that its claims do not “stand on their own.”

          But when the applicant proposes a definition for a term with range of possible scope and which differs from the definition suggested by the Examiner, whose responsibility is it to make sure that the correct definition ends up expressly in the claim? Or is that not necessary for the claims to “stand on their own”?

          1. For whatever reason, the patentee very very rarely believes that its claims do not “stand on their own.”
            Oh please, arguments over what a term means occur anytime a legal document is questioned whether that legal document is a will, a sale’s contract, a non-compete agreement, a law, a patent, whatever …

            Its the JOB of the attorneys on both sides to take positions that are most advantageous to their clients. However, you seem shocked and aghast that this occurs — it says a lot about your makeup.

            1. However, you seem shocked and aghast that this occurs — it says a lot about your makeup.

              It says a lot about “your makeup” that you apparently wish to excuse the worst behavior by the worst attoneys on the basis that “arguments will always occur over terms.”

              That’s how we end up with legal teams like the ones that George W. Bush had, testifying that the President could order the crushing of a U.S. baby’s testicles if the child’s father had information about a terrorist plot. But hey: somebody had to make the argument, right? Freedum!

            2. The irony of Malcolm complaining about other attorney ethics when he believes that advocacy on a social media vehicle such as a blog does not need to be intellectually honest.

            3. It says a lot about “your makeup” that you apparently wish to excuse the worst behavior by the worst attoneys on the basis that “arguments will always occur over terms.”
              Cry me a river … let me see those tears flow.

              George W. Bush had, testifying that the President could order the crushing of a U.S. baby’s testicles if the child’s father had information about a terrorist plot
              Wow … did someone just erect a giant strawman? You are one-of-a-kind … we should all thank our makers for that.

  5. I think Professor Chao must have missed the part of Festo that indicates that any narrowing amendment is presumed to have been made for the purpose of patentability. The Unique Concepts court did not have Festo at their disposal. If I make a narrowing amendment as a result of an examiner interview and it is not for purposes of pateability, you’d better believe that I will assure that my reason is in the record!

    1. If I make a narrowing amendment as a result of an examiner interview and it is not for purposes of pateability, you’d better believe that I will assure that my reason is in the record!

      That’s nice.

      It doesn’t change the fact that the the Interview should be recorded so that everyone can see that the reason for the amendment tht you put “in the record” (for your own benefit) is identical to the reason that you provided in the Interview.

      It’s easy to record the Interviews and make them available to the public. So let’s do it. It’s long past time we did so for the benefit of the 99.99999% of people who aren’t playing the patent game but who are at the mercy of patent owners.

      1. 99.99999% of people who aren’t playing the patent game but who are at the mercy of patent owners

        LOL – what a bizarre way to look at innovation and invention.

        1. what a bizarre way to look at innovation and invention.

          Almost all of us invent and innovate stuff every day, mostly directed to our specific needs. It’s part of what makes us human.

          The patent system isn’t necessary to promote innovation and invention. It might help in certain circumstances. But in other circumstances it just ends up being a cesspool for lawyers and bottom-feeders to muck around in, at everyone else’s expense.

          If you can’t acknowledge this, you’re either an idi0t or a pathetic lying shill for your own self-interests. Go hump a “founder”, loser.

  6. Recording Examiner Interviews will turn them into basically a re-reading of the carefully-worded response. Prosecution will drag on as each side won’t know what the other is REALLY saying from the written record. Interviews are often a time for negotiation and exploration of ‘what if’s’. It would be like putting plea deal negotiations or settlement negotiations on the record and would have detrimental effect on case resolution.

    1. Interviews are often a time for negotiation and exploration of ‘what if’s’.

      The public has a right to know what’s taking place in these negotations because it’s the public whose rights are potentially (probably 30-50% of the time in certain art units, at least) being improperly removed from the public sphere as a result of these “negotiations.”

      It would be like putting plea deal negotiations or settlement negotiations on the record and would have detrimental effect on case resolution.

      The public (as represented by the USPTO) has zero interest in the issuance of junk patents to applicants., unless, perhaps, you think that patent examination is like a guy walking into a bar and trying to get laid (actually suggested in this thread) and we need to make applicants “feel good about themselves” until they finally manage to come up with something patent-worthy.

        1. the public’s rights being removed?

          that’s just plain silly.

          When Myriad was granted a junk patent that put people at risk of a lawsuit when they used old conventional techniques to isolate human DNA, the public’s rights were diminished.

          When Prometheus was granted a junk patent that put labs at risk of a lawsuit if they thought about an ineligible fact that Prometheus chose to disclose to the public, the public’s rights were diminished.

          There’s nothing “silly” about this. What’s “silly” is that anybody would even bother trying to dispute this. But we all know that nothing is beneath you, “Mr. Higher Ethical Standard.”

          1. What is silly is your abject h@tred of patents and how your despising them is saturates your being.

            You really need to get into a line of work in which you can believe in the work product you supposedly create.

            1. What is silly is your abject h@tred of patents

              I don’t h@te “patents”. I h@te junk patents. And I h@te the current state of our patent system, a system which has been fairly ruined by bottom-feeders and grifters like you who never saw a junk patent they couldn’t fluff and who react to every attempt to fix the patent system with nutjob screeching about “the Gestapo” and communists hiding under your bed.

              Get a fricking life already.

  7. As someone who has conducted hundreds of interviews with examiners, my initial thought upon reading this post was that this is a bad idea. I even typed up a rather lengthy response suggesting that even worse than the chilling effect on applicants might be the chilling effect on examiners, many of whom would be at risk of being exposed for having little to no understanding of a case.

    After thinking it through, however, I’ve decided that I am tentatively strangely in favor of this. The process is bad. Examination quality is bad. More transparency might help, even if it might have some unintended consequences.

    If nothing else, it will eliminate the ability for applicants to abuse the off-the-record nature of interviews.

    1. I’ve decided that I am tentatively strangely in favor of this. The process is bad. Examination quality is bad. More transparency might help, even if it might have some unintended consequences. If nothing else, it will eliminate the ability for applicants to abuse the off-the-record nature of interviews.

      Yep.

      Anyone who has ever reviewed a few prosecution histories knows that the Interviews are a black box. I’ve seen file histories where the applicant presented what appeared to be an elaborate road show, complete with a PowerPoint presentation and multiple “experts” present. The slides are in the file history but the comments made in real time about what those slides meant and their relevance: completely absent. It’s a bad joke, and it’s a bad joke on the public, at the public’s expense.

      The system is broken. Here’s a chance to do a little something to fix it. Pay attention to who objects the loudest.

      1. Pay attention to who objects the loudest.

        As well as those who misrepresent and then defend that misrepresentation as some such 1st Amendment ‘freedom’ to be duplicitous.

  8. I can understand the frustrations in conducting an interview with an examiner who does not speak English well. But in the ten plus years of prosecution, there was only one examiner with whom I had an issue because of her lack of English communication skills. Yes, there were many interviews where the examiner’s spoken English was not great, but I didn’t have a problem in understanding what the examiner was trying to say. Perhaps I was lucky or I am biased because English is not my first language.

    As a “1.5 generation” immigrant, I actually empathized with that particular hapless Examiner. In the U.S., there are many people who look down on those who don’t speak English fluently. Like the way the French look down on English speakers, I suppose. Seeing her difficulty in communicating in English (she is from SE Asia and I am not, so English and hand gestures were the only means of communication) I felt that perhaps she had gone through some difficult times with representatives who didn’t take to kindly that her English was bad. Although I’ve never seen representatives not be cordial with an examiner who can’t speak English, I would bet my money that there are some representatives who are not so nice or understanding. Even at the ivory tower, in academic conferences, you see this kind of condescending attitude every now and then toward presenters who don’t speak English well.

    I think that any dissatisfaction with the Examiner’s English skills should not be directed to the Examiner but to the PTO administration or even the SPE. It’s sort of like blaming the attorneys for the litigious nature of our society, when it’s the lawmakers who make the laws. I guess you could even go back to the general lack of interest in STEM education in the U.S. as the root cause.

    But I ramble and digress.

    As a practitioner, I’m not too excited about recording interviews. In an ideal world where Examiners speak perfect English, everything is transparent, everyone has air conditioning and Pizza Hut, I would be ok with recording. But not everyone is a fobbit. In practice, recorded interviews will be viewed as oral hearings at the PTO and thus require much more preparation for the representatives. The end result is that interviews will be much more expensive and you’ll see less interviews requested by the client. I would even postulate that this may not even help reduce the backlog of applications.

    Just my 2 cents’ worth.

    1. The “other arguments” are right up there in Prof. Chao’s original post:

      Some patent prosecutors may worry that recording patent examiner interviews will have a chilling effect on the interview process. Patent attorneys may be reluctant to have a frank discussion about what their claims cover. Alternatively, because interviews happen in real time, without time to reflect and choose words, attorneys might refrain from having interviews. All that may be true. But if a patent attorney is unwilling to make a statement on the record, why should the patent office allow the claims? The public is entitled to know why a claim should be allowed before the applicant receives the monopoly rights that come with an issued patent.

      The hysterical pitch of the protests of the patent teabaggers to the prospect of a bit more light shining on them not surprising, but it certainly is informative. After all, we’ve seen similar responses to proposals requiring patent owners to identify themselves.

      The well-heeled elites who are presently deeply invested in the patent system desperately want to keep certain aspects of their doings in the dark, even as they seek an entitlement from the government that will allow them to sue potentially thousands of people and ruin their lives.

      It’s fascinating. By itself, that aspect of patent teabagger culture is worth investigating in more detail.

      Reminds me: where are the March 2014 numbers on patent litigation cases? Certain blogs made a very big deal out of the “sharp drop” reported in January, then they tried desperately to spin the February numbers (which contradicted the earlier reporting) and then suddenly: silence. What’s going on?

        1. Basically, it is the same old same old.

          Look at pretty much any post by Malcolm, take out the AOOTWMD, the ad hominem and the other items off of his sorry trite limited script and you would basically wipe out Malcolm’s post.

          He is the ultimate empty wagon.

        2. basically you admit to spamming us

          LOL. Uh … no.

          As we all know, the patent teabaggers have many blogs solely devoted to spamming everyone with their patent fluffing propaganda. And when another blog (like this one) dares to criticize the system, you and your li’l buddies do whatever you can to “trainwreck” the comments with your self-serving drivel (e.g., “nobody will innovate anymore”, “you h@te patents”; “communists”; “ivory tower syndrome”; “ivy league taint”; blah blah blah).

          Get a life, dude. Far, far more patents have been granted in the last few years than in any previous years in history of civilization. And you still go ballistic when someone suggests that maybe things have gotten a tad out of control and we should take some steps to rein things in. You’re self-entitled and greedy. You’re pathetic. Can’t you just enjoy your echo chamber over at IP Watchdog and dozen other blogs with indistinguishable views? Is it somehow not enough for you?

            1. who has had more offensive posts removed – by far – than anyone else on this blog

              I don’t keep score, freak. Why would I bother?

              All I know is yout s0ci0pathology is well-documented. I’ve been documenting it for years. Among other things, you are a path0l0gical liar with a myriad of other related issues. And I’m not talking about your extreme views about the patent system and it’s critics — that’s a whole other ball of wax.

              But please go ahead and sue me for “slander” as you’ve threatened to recently. I’m 100% certain I’ve got all the evidence I need to defend myself. Cripes, you keep piling it on here every week. And last time I checked, um … you’re identity is anonymous. Should be a really fun case! Please make my day, nutcase.

            2. I don’t keep score, freak. Why would I bother?

              Um, maybe because you can learn a little about norms and what is not acceptable – outside of your own little mind, that is.

          1. I am more than sure that you Malcolm are the biggest trainwreck on this thread, and on any thread on a subject that does not meet your Red Queen/Humpty Dumpty views.

          2. And you still go ballistic when someone suggests that maybe things have gotten a tad out of control

            reduction for reduction’s sake is clear evidence that you simply do not understand the most basic of patent concepts of Quid Pro Quo.

            (and again, your obsession with IPWatchdog is more than just a little scary)

  9. Frequent_Runner: The interview is not a court hearing, it is more like a negotiation between parties in which various amendments are proposed.

    It’s a negotiation between a representative of the public (an Examiner) and (usually) the lawyer of a non-public entity about which public acts are going to be illegal (if the owner of those rights decides to enforce).

    It seems to me that the public interest in the details of such a negotiation are paramount, to say the least. And why require either party to “summarize” the negotiation when recording them is trivial? Why are we, as a society, bothering to promote progress in all this awesome computer technology if we can’t even use technology that is, at this point, quite old? Just record it.

    Golly, I wonder what some of the complainers are so afraid of? Let’s sample a typical response:

    I expect Prof. Chao to demand all examiner-spe discussions be tape recorded and made of record as well.

    Why in the world would anyone think that is remotely as important as the interview between the Examiner and the applicant? Nobody is asking for recordings of conversations between the attorney and client, or the attorney and CEO, or the CEO and the inventor, nor is anyone asking for transcriptions of conversations between the bottom-feeding patent troll attorney and his/her conscience. All that’s being asked is for transcriptions of the interviews at the point where the rubber meets the road.

    Remember, folks: the same people who really really really don’t want these negotiations to be recorded are invariably diehard fans of claiming new functions for old computers, simply because they dreamt up the function. And they want to be able to negotiate the rights to own these claims in private, whether over the phone or in person. And then they’ll try to make as many members of the public pay up as possible.

    As everyone knows, the typical Interview summary for many years in the so-called “computer implemented arts” is simply the Examiner stating that he/she is going to allow the claims because “the art didn’t teach” [insert text of claim here]. That’s it.

    There’s really no reason to be afraid of these recordings. If nothing else, closer public attention to the content of Interviews will surely have the effect of improving the quality of those Interviews. And isn’t that what the patent teabaggers are constantly telling us should be of the greatest concern, i.e., “patent quality”?

    1. Ooops — goofed on the formatting. Here ‘s the corrected version:

      Frequent_Runner: The interview is not a court hearing, it is more like a negotiation between parties in which various amendments are proposed.

      It’s a negotiation between a representative of the public (an Examiner) and (usually) the lawyer of a non-public entity about which public acts are going to be illegal (if the owner of those rights decides to enforce).

      It seems to me that the public interest in the details of such a negotiation are paramount, to say the least. And why require either party to “summarize” the negotiation when recording them is trivial? Why are we, as a society, bothering to promote progress in all this awesome computer technology if we can’t even use technology that is, at this point, quite old? Just record it.

      Golly, I wonder what some of the complainers are so afraid of? Let’s sample a typical response:

      I expect Prof. Chao to demand all examiner-spe discussions be tape recorded and made of record as well.

      Why in the world would anyone think that is remotely as important as the interview between the Examiner and the applicant? Nobody is asking for recordings of conversations between the attorney and client, or the attorney and CEO, or the CEO and the inventor, nor is anyone asking for transcriptions of conversations between the bottom-feeding patent troll attorney and his/her conscience. All that’s being asked is for transcriptions of the interviews at the point where the rubber meets the road.

      Remember, folks: the same people who really really really don’t want these negotiations to be recorded are invariably diehard fans of claiming new functions for old computers, simply because they dreamt up the function. And they want to be able to negotiate the rights to own these claims in private, whether over the phone or in person. And then they’ll try to make as many members of the public pay up as possible.

      As everyone knows, the typical Interview summary for many years in the so-called “computer implemented arts” is simply the Examiner stating that he/she is going to allow the claims because “the art didn’t teach” [insert text of claim here]. That’s it.

      There’s really no reason to be afraid of these recordings. If nothing else, closer public attention to the content of Interviews will surely have the effect of improving the quality of those Interviews. And isn’t that what the patent teabaggers are constantly telling us should be of the greatest concern, i.e., “patent quality”?

  10. I like the part where Prof. Chao admits that his idea sucks (“All that may be true”), but then he says we should do it anyways because people post trivial stuff on Facebook and Twitter. Nice.

    1. I like the part where Prof. Chao admits that his idea sucks (“All that may be true”),

      He’s not admitting that his proposal sucks. He’s admitting that some folks might not want to have Interviews if they are afraid that the Interview will end up blowing up in their face. But that’s hardly a reason not record Interviews. Those people who are afraid of Interviews are free to not engage in the Interviews. They are also free to not bother applying for patents in the first place if they feel that the only patent worth getting is one that is obtained following a poorly documented Interview.

      [shrugs]

      1. nothing like running with that wild imagination of yours Malcolm. Not sure how you got all the way to someone only wanting a patent if they can obtain one through a poorly documented interview, but your psychosis and anti-patent leanings seem to be in full form.

  11. To the point of clarifying the record for later claim construction, I think it would be very helpful if examiners were required, in the first office action, to write down their BRI, as well as articulate where in the reference they find the teaching they rely on. Way too often I get actions where I cannot fathom how the examiner finds the claim to read on what the reference shows. It is only once we have an interview that I learn what he thinks is the BRI.

    1. It is only once we have an interview that I learn what he thinks is the BRI.

      Yet another reason to record the Interview.

        1. You miss the point that a ready fix is available now that would even preclude the need for an interview.

          Let’s get rid of Interviews, then, if they aren’t needed.

          But if they are needed, they should be recorded, for the reasons given by Professor Chao, Professor Crouch, and many others over the years.

          The step of recording Interviews was first discussed at length here on this blog at least five years ago and probably closer to ten years ago. The situation has only gotten much, much worse than it was then.

          1. Prof Crouch has given reasons for recording interviews?

            I must have missed that. Please be a dear and kindly point out exactly where I can find Prof. Crouch advocating for the taping of interviews.

            1. Prof Crouch has given reasons for recording interviews?

              I recall that he seemed quite sympathetic to the obvious reasons once upon a time. That was several years ago, at least.

              Please be a dear and kindly point out exactly where I can find Prof. Crouch advocating for the taping of interviews.

              Here’s a better idea: just ask Dennis to confirm or deny his earlier opinion on the matter.

              It’s pretty funny that you would find such support surprising. Then again, the capacity for self-delusion is pretty much bottomless with you.

            2. I recall

              That’s nice – I asked for a little bit more than “I recall.”

              Second (polite) request: Please be a dear and kindly point out exactly where I can find Prof. Crouch advocating for the taping of interviews.

              The point about whether or not Prof. Crouch would agree now is not the point of the comment. Clearly, you made (another) assertion that seems you have pulled out of your arse.

              Kindly do better than “recall” and provide the link to this item that you ‘recall’ so that everyone can see the veracity of your claim.

              That is a much better idea.

            3. Kindly do better than “recall” and provide the link to this item that you ‘recall’ so that everyone can see the veracity of your claim.

              Kindly get a life you sad sick psycho.

            4. That “response” is (as is typical) not responsive Malcolm.

              Third (polite) request: Please be a dear and kindly point out exactly where I can find Prof. Crouch advocating for the taping of interviews.

            5. “Third (polite) request: Please be a dear and kindly point out exactly where I can find Prof. Crouch advocating for the taping of interviews.”

              Third attempt to control MM’s posting.

              Anon, you can try to hide behind “politely requesting” but when it is clear from the context that you’re doing anything but “politely requesting” and instead simply trying to make him do more than recall when he obviously doesn’t want to do that then your ultimate goal is quite clear. Control.

            6. 6,

              A polite request is not “controlling.” – you seem to be projecting your own “control” issues every time you open your eyes.

              You might want to mention that to your doctor.

            7. LOL – and yes it is clear that Malcolm would rather be able to pull any statement he wants right from his arse and then not be humiliated when he is busted doing so.

              Hmm, sort of like you getting busted when you claimed to have talked about a certain thing when you had not.

            8. Malcolm would rather be able to pull any statement he wants right from his arse

              Hey, freak: I’m not suggesting that Dennis compared to the PTO to the gestapo or something completely whacko like that.

              I’m saying that I recall Dennis speaking approvingly of efforts to increase the transparency of Interviews at the USPTO by recording them. If I’m wrong about that, I apologize to everybody in advance!

              But I don’t think I’m wrong about that. Go ahead and ask Dennis about the history of his expression of views on this topic, if it’s so important to you.

            9. Pretty sure that only happened in your warped s0ci0path mind, nutjob.

              LOL – so then you did mean that Prof. Crouch had in the past stated that interviews should be recorded.

              Fourth (polite) request: Please be a dear and kindly point out exactly where I can find Prof. Crouch advocating for the taping of interviews.

              The point about whether or not Prof. Crouch would agree now is not the point of the comment. Clearly, you made (another) assertion that seems you have pulled out of your arse.

              Kindly do better than “recall” and provide the link to this item that you ‘recall’ so that everyone can see the veracity of your claim.

              That is a much better idea.

    2. American, the BRI is implicit in the rejection. However, the interview will document the examiner’s construction and that is entirely useful, especially in reexaminations. Need to have it on the record.

      1. I agree that the examiner’s BRI should be on the record, so that is why my initial post said it should be part of the first office action.

        It would help speed up prosecution; if the applicant is told which of his claim terms mean something to the examiner that the applicant never considered (I bet every attorney here has had that happen before) then the decision to amend can be made earlier. Rather than arguing that the references don’t show an element and finding out much later that the examiner does not see the claim as really defining that element, the attorney can tweak the claim language to help the examiner see eye-to-eye with the attorney.

        Examiner gets a faster disposal. Applicant becomes a patentee sooner. What’s not to like?

        1. This needs to be done in every case for every one of the thousands of limitations (or just for the ones the examiner subjectively thinks applicant might have a secrit interpretation for) because it is so hard for the attorney to pick up a phone before he files his response in close cases where it appears claim construction chicanery is taking place.

          /facepalm.

          1. “the examiner subjectively thinks applicant might have a secrit interpretation for??”

            The applicant has provided an entire specification and drawings to support his or her claims.

            When the applicant gets a rejection that says this in its entirety: “Claims 1-20 are rejected as anticipated by the Smith patent,” then the examiner is the one with the secret interpretation.

            1. “The applicant has provided an entire specification and drawings to support his or her claims.”

              And usually provides ziltch as to how to construe x term that gets construed wayyyy different than the applicant meant it to be. What of it?

            2. 6 says: “And usually provides ziltch as to how to construe x term that gets construed wayyyy different than the applicant meant it to be. What of it?”

              That is my point, 6. the examiner construes a claim way differently than the applicant meant, but does not tell the applicant what that construction is, so the applicant and examiner waste time and money arguing past each other. If the examiner’s position were clearer, the applicant could amend, if needed, or more directly address where the applicant thinks he examiner’s construction error lies.

            3. “That is my point, 6. the examiner construes a claim way differently than the applicant meant, but does not tell the applicant what that construction is, so the applicant and examiner waste time and money arguing past each other.”

              Ok.

              “If the examiner’s position were clearer, or more directly address where the applicant thinks he examiner’s construction error lies.”

              Of course. Though the more I hear about examiners making claim construction “errors” in the event of the applicant having a supar secrit interpretation that they never made clear the less I give two fcks about these supposed “errors”. The office does the best they can with what is given them. If you’re clear, then you’ll probably have better results. If you’re not, and want to be all secrit, then you’ll have less good results. It’s that simple and frankly it shouldn’t be up to the office to have to guess about what the applicant means in his claim, which it so often is these days.

              The office having to pick up and do a whole other examination/action because SURPRISE the applicant meant something different than what the office read them as saying the first time around is possibly the single biggest horsesht thing going on in prosecution today. And that goes double when the applicant was particularly unclear.

              But it’s an institutional problem and it’s a huge one to fix up. First action interview pilot was a start, but it isn’t the only fix for that issue.

            4. “Translation: OK, but 6 is still going to blame the applicant.”

              Not at all anon. I blame the way the system is setup, specifically to allow this to happen. Applicants are just taking the path of least resistance within the rules governing them. The key then is to tighten up the rules, or laws governing their behavior or how the office is authorized to react to said behavior.

  12. The solution is super-easy: construe against the drafter. If you want to view this way, the patent claims are like contract terms limiting the public, and an infringer has breached the contract terms. However since the infringer didn’t have any input on the claims, the claims are construed against the patent owner: narrow on infringement (it’s strict liability after all), broad on invalidity, and ambiguity resolved against the patent owner.

    Apply the contract rules, we’d be a lot better off.

    1. The solution is super-easy: construe against the drafter.

      That only works if the construction by the examiner (which appears NOT to be explicitly on the record) is not only made on the record, but is a reasonable construction. Far far far too often this is simply not present in the examination process.

      Once again the pinnacle point simply comes down to this: the examiner needs to do their Fn job.

      1. That only works if the construction by the examiner (which appears NOT to be explicitly on the record) is not only made on the record, but is a reasonable construction.

        Applicants are free to demand that the construction relied on by the Examiner is put on the record, and also free to put the construction in the record and ask the Examiner to confirm and/or deny it.

        1. You miss the point that the Examiner should already be examining and should already be putting this on the record without waiting for an applicant to so request.

          /facepalm

          1. You miss the point that the world isn’t filled with perfect people.

            Applicants are often completely clueless as well, in addition to frequently being scummy grifters and bottom-feeders who will do/say anthing to get their patent granted.

            The bottom line remains: if you want more details on the record, then put those details in the application or in your Responses to the Office Action, or ask the Examiner to put them there, or ask the Examiner to confirm/deny the details.

            1. You miss the point that the world isn’t filled with perfect people.

              LOL – not at all – in fact, it is you making this mistake.

              Clearly.

              The bottom line remains – you have simply ignored what I have actually stated and blundered on in your oh-so-predictable ad hominem filled manner, without really saying anything of import.

              Congrats.

            2. Is that like everybody knows that when someone routinely mischaracterizes what others post and has affirmed their view that intellectual honesty is not required for blog posts, that such a person has zero credibility?

    2. And most definitely stay away from the notion of “efficient breach” in contract law analogies…

      Unless of course, “exclusive” is to be somehow construed to mean something other than “exclusive”…

  13. It is more than a bit ironic that the two biggest advocates on this thread wanting everything to be put on the record (and let’s make clear that I have no direct problem with such) are the same two biggest people who run away from intellectually honest discussions on these boards – clearly and objectively because to carry the conversations to their logical conclusions and put on the record those answers to the points I raise, will absolutely destroy their agendas.

    If you have the law, pound the law.
    If you have the facts, pound the facts.

    Having all of this on the record is something I would in fact welcome. I invite both Ned and Malcolm to put their money where their mouth is and to stop running away and put everything on the record – especially including those very inconvenient things (for their agenda) that would arise in any intellectually honest treatment of the points that I raise in our discussions.

    What are you two so very afraid of?

    1. anon, you can’t be serious that you have intellectually honest conversations when you refuse to answer simple questions put to you time and again? I’ve asked you to explain the facts in Alappat. I’ve asked you to explain the facts in Nazomi. I have done this for years with respect Alappat and have yet to have you answer the question are to explain what the facts are. Because only if one knows the facts can one know the holding. And since you are unwilling to discuss the facts, it tells me you are not willing to engage in an honest conversation, at least not intellectually honest conversation about these cases.

      1. I have presented you the black letter law meaning of holding from Black’s Law legal dictionary and showed you explicitly why my view of Alappat is correct.

        That you desire to jump into a brier rabbit “fact” discussion only shows that you are attempting to hide from the clear presentation of law that I have given.

        It is you that (continues) to profess some sort of inability to understand the Nazomie case. That is clearly a “you ” problem that you need to resolve.

        It is clear that you have no desire to resolve your own dilemma. It is also painfully clear that since the Nazomi case is a clear reflection of the Grand Hall experiment – one that simply wrecks your agenda, that you have an ulterior motive for not understanding the Nazomi case and putting on the record what that understanding – in law – must say.

        It is beyond clear that it is you that is playing the game of not being intellectually honest.

          1. Checking Malcolm’s comment for anything of substance and merit

            If you look carefully I’m responding to two comments of yours that are nothing more than personal insults of Ned and I based on your usual nutty insistence that the only discussion topics that matter are the topics that please you.

            Given that, it’s rather pathetic of you to look for much in the way of “substance”, don’t you think? Get over yourself and get some psychiatric help.

            Dennis, can you tell everyone: what is your attraction to this sad dipsh*t who regularly shames you but refuses to tell everyone why you should be ashamed?

        1. Anon, allow me to quote from Black’s Law Dictionary. Under DICTUM we find this:

          “The word is generally used as an abbreviated form of obiter dictum ,… An observation or remark made by a judge in pronouncing an opinion upon a cause concerning some rule, principle, or application of law or the solution of the question suggested by the case at bar, but not necessarily involved in the case or central to its determination…

          “Statements and comments in an opinion concerning some rule of law or legal proposition not necessarily involve nor essential to determination of the cause at in hand are obiter dicta, and lack the force of an adjudication.”

          Your repeated quoting to me of obiter dicta from Alappat as if it were the holding of the case will not change the fact that it is dicta regardless of how many times you remonstrate to the contrary that it is the holding of the case. Get it through your thick skull that the only way to determine whether something is necessary to the decision is to know the facts of the case. Your refusal to discuss the facts of Alappat is illustrative of the plain and simple truth that you are not discussing the holding of the case. You know you’re not, because otherwise you would simply comply with a such a simple request.

          Do you know if this makes you Mr. anon? You couldn’t go in the court and seriously argue that such dicta was the holding of a case without being sanctioned.

          1. Ned,

            It is not the source you cite from, it is how you use those source that I (continue) to take issue with.

            In the immediate example, you want to use Black’s Law Dictionary for the definition of dictum.

            Fine.

            The problem you have is that you are not applying that definition properly to the issue of law we are discussing in Alappat.

            For some (unknown ) reason, you seem unable to admit or comprehend that the government made a legal argument pertaining to the point that you want to label as dictum.

            For some (unknown) reason, you seem unable to admit or comprehend that had the government prevailed on that legal point, Alappat would have lost the case.

            Clearly an item that can turn the result of a case from a win to a loss is not one that can fall to the definition of dictum: “not necessarily involve nor essential to determination of the cause at in hand

            Clearly, the point at issue between us is a holding in the case for this very reason that the legal issue was very much essential to the outcome of the case.

            I find it amazing that you cannot see the fact that the issue was outcome determinative and thus simply cannot be labeled dictum.

      2. Regading Diehr, no point of novelty.

        The novelty alleged was the combination of theromcouples inside the mold with a computer that updated the time to open the mold from the measured temperatures.

        1. Regading Diehr, no point of novelty.

          I do not understand this statement.

          You clamor all the time for the ability to have a “Point of Novelty” – you do not get to “not have it” when it is decidedly inconvenient for you.

          And is is plainly evident exactly why it would be inconvenient for you in this Supreme Court case.

          Come Ned – why are you afraid to put this admission on the record?

          (btw, thermocouples inside the mold were old in the art)

    2. I invite both Ned and Malcolm to put their money where their mouth is and to stop running away and put everything on the record,

      Here we see the blogtroll comparing a negotiation between the government and a private citizen that will determine whether the citizen will be given the right to sue hundreds or thousands of people for potentiall millions of dollars to …. comments on a blog.

      These are your patent teabaggers, folks. They’re very greedy, self-entitled people. They will literally do and say anything to keep their party rolling.

      1. Comparing… comments on a blog

        LOL – that past comment of yours about comments on a blog not needing to be intellectually honest because this is not a court did not work out too well for you Malcolm.

        Going down that same path again will not yield a different result.

    3. You missed the point hat the first order of business Malcolm is you defending your accusation.

      Still waiting for you.

      1. the first order of business Malcolm is you defending your accusation.

        Does anybody know what Tr0llboy is talking about? I don’t think Tr0llb0y knows what he’s talking about. Exactly what does Tr0llb0y think he was “accused of” now?

        Tr0llb0y is just a coward. He regularly shames Dennis, but he won’t tell everyone why Dennis should feel ashamed. That’s something a crazy person would do. But watch Trollb0y pretend that it’s everybody else’s problem.

        1. Lovely AOOTWMD

          The Vinnie Barabarino “Huh, what?” is a deft touch considering that Prof. Crouch’s massive wipeout was geared to your rather slanderous “observation” that I had somehow called Prof. Crouch dishonest.

          My, wouldn’t it be a hoot for me to subpoena the records were I to bring a slander suit against you?

          1. I seem to recall

            Sure you do. And when you moved the spinning goalposts from “said” to “indicate,” you promptly ran away from the conversation.

            Go figure.

          2. when you moved the spinning goalposts from “said” to “indicate,”

            Oh lookie: Tr0llb0y thinks he’s making some dooper important point.

            Like I said, Tr0llb0y: you can ask Dennis directly about his views and whether they’ve evolved. I’m telling you that I remember him speaking in defense of the proposal upthread. That was years ago now.

            If Dennis wants to deny doing so, then let him deny it. It’s such an obvious proposal to begin with I don’t see why anyone would fear supporting it, unless perhaps they were afraid of alienating the patent bar.

            Then again you’re already regularly shaming Dennis for expressing himself in all kinds of posts so perhaps he’s not terribly concerned about what you think. By the way, exactly what content of his posts is Dennis supposed to feel “shame” over, anyway? You still haven’t explained your own comments. Rather cowardly of you, I must say. Would you rather talk about the Gestapo? LOL.

            1. LOL – some nice dissembling by Malcolm here, as he attempts to conflate two separate discussions on this thread because he was busted making an accusation that he cannot defend – his accusation that I called Prof. Crouch dishonest. He wants to kick up a dust cloud and pretend that this is something else.

              Then he wants to talk about the “shame’ comments when I have told him what he needs to do to get there. LOL – he calls me cowardly as he runs away from what he needs to do (lovely AOOTWMD).

              What a m0r0n.

        2. And you (again) spin and misrepresent our conversation, as I has openly stated that I would be more than willing to discuss any notion of yours on the “shame” angle, once you had either defended your accusation or withdrawn it.

          Put.
          The.
          Shovel.
          Down.

          1. you (again) spin and misrepresent our conversation

            There’s no “misrepresentation” of any “conversation”, Tr0llb0y. You had a meltdown is what happened. And you’re apparently still melting.

            I has openly stated that I would be more than willing to discuss any notion of yours on the “shame” angle, once you had either defended your accusation or withdrawn it.

            LOL. This is exactly how it always works with you when you are confronted with one of your own comments that you wish you had never made. Probably the tenth time we’ve all seen this game.

            Go ahead and sue me, you sad little twerp.

          2. you had a meltdown

            LOL – check yourself, Malcolm, it was you with the meltdown, as clearly the bulk of the wiped out conversation were your horrid rants.

          3. confronted with one of your own comments that you wish you had never made

            More misrepresentation.

            Clearly, I have stated that I am perfectly happy to discuss any ‘shame’ comments. You “conveniently” seem to not recognize this statement.

            Further, it’s a typical example of your own AOOTWMD, as the first order of business would be to focus on what you said. It’s an amazing amount of dust kicking that you are frantically engaged in, trying to shift that first order of business to me. But that dust-kicking fools no one.

            As to any “comments wish never made,” you have never provided even one such instance, while it is abundantly clear that your own volunteered admission as to knowing what is the controlling law when it comes to the exceptions to the judicial doctrine of printed matter is something that you would give anything not to have admitted.

  14. Patent Agent: The prior art reference does not disclose the network node storing its identification information as recited in claim 1.
    Examiner: Figure X shows the network of routers and switches, the corresponding paragraph shows the IEEE 802.11 network…
    PA: But there’s no disclosure of the IEEE 802.11 network node storing its identification information.
    E: The IEEE 802.11 network node receives messages addressed to it using IP address and MAC address …
    PA: You need to cite the exact page, section and line numbers in the IEEE 802.11 standards specification.

    Some Applicant’s representatives are simply clueless.

  15. Professor Chao must not have lived in the “real” patent prosecution world like a few of us have. Otherwise, he wouldn’t have said the malarkey he did. Also, it’s not the patent attorneys/agents who would be inhibited by Big Brother. The examiners wouldn’t like it much either.

    1. I’ve had conversations with professors who acquaintances at parties. It seems to be a badge of honor and an easy paper in a journal to find some way to put down the patent system and come up with your lame brained idea to fix it.

    2. Professor Chao must not have lived in the “real” patent prosecution world like a few of us have. Otherwise, he wouldn’t have said the malarkey he did.

      Classic patent teabaggery: “You disagree with me, therefore you must be ignorant.”

      Grow up, Eric.

      1. Ignorant or disingenuous, take your pick Malcolm. I have “grown up” but obviously you have not. And once more, what you think, believe, or say doesn’t mean squat to me or many others who post on this blog. Over and out.

  16. First of all this would kill any frank conversations that often occur and lead to resolution of the application. I, the examiner, wouldn’t be able to get an honest answer to the question of “do you understand the invention” or “how much experience do you have in this area” so that I can then explain the invention to the attorney and we can get somwhere. This happens all the time in my area and recording the interview would kill frank discussions like this.

    Forcing examiners to do a better job writing interview summaries, including their explanation of the invention if it was discussed is perfectly reasonable. However, audio recording everything in the conversation would limit the usefulness of the conversations and would likely result in few, if any, interviews.

    Secondly, the Office will NEVER agree to this. There are so many examiners that barely speak English that it would be a news story if these interviews were recorded and came to light.

    1. Thanks for your frank comments, TT. You just confirmed what I said in my comment about examiners not wanting this malarkey either.

      1. What are the chances that Malcolm will attempt to spin this as some nonsense about grifters and the like?

        LOL – oh wait, he already has.

        /facepalm

    2. There are so many examiners that barely speak English that it would be a news story if these interviews were recorded and came to light.

      Oh noes! News stories!

    3. this would kill any frank conversations that often occur and lead to resolution of the application.

      No, it wouldn’t.

      Again: try to realize that not all applicants are like you. Try really hard to understand that.

      audio recording everything in the conversation would limit the usefulness of the conversations

      No, it wouldn’t. The conversations would be more useful to everybody because everybody would know exactly what the conversations are about.

      It’s almost as if the patent teabaggers have never negotiated anything “on the record” before. Were they born yesterday?

  17. Did the professor ever actually practice patent law?

    If not, please tone down your post to “I am basically ignorant of all of patent law, but as an outsider and know-it-all, I have the following edicts ….. “

      1. I know, but I think the people that pontificate on this board should tell us why they have the right to pontificate. Being a professor doesn’t mean anything these days.

        Tell us that you aren’t taking Google’s money and are a clean. Tell us how many years of practice you have had to. How many examiner interviews have you conducted? The burden should be on the write to convince us that he isn’t a shill. And, that burden is getting larger and larger.

          1. No sweat on the typos – it’s a blog.

            As far as “why they have the right to pontificate” – that too is answered with: it’s a blog.

            Anyone and everyone has a right to pontificate on an open blog.

            That being said, this explicitly does not mean the same as saying that “WHATEVER” goes. Especially when it must be kept in mind that this blog is a form of advocacy using social media. (and to blunt 6′s “control fetish,” it is not my rules that govern attorney actions – yes even for advocacy actions on social media like blogs).

            I think that aim that you are going for however is that the pontificates should be intellectually honest. If you are (supposedly) an attorney, be aware of the ethical considerations of using this mode of social media and the ethical requirement to distinguish when you are advocating a change in law from those attempts to portray law as something that it is not. Ethical lapses in misrepresentations of law and fact – including critical omissions – should not be dressed up as “it’s an opinion” or “I have a First Amendment Right” when it is clear that the person spinning such g@rb@ge knows full well (or at least should know full well) how to behave ethically.

            And yes, the fact that Prof. Chao is a professor of patent law may in fact bring about a different ethical standard. I will also repeat my opinion that those who engage in both academia and in practice should be held to a higher ethical standard than a person who is active singularly in one or the other area.

            Let me recommend a serious of videos on the scotusblog site in which Professor Kerr talks about a number of interesting topics (see link to scotusblog.com ). This may be of possible interest as Professor Kerr has a technical background, some clerk experience on the Supreme Court and some blogging experience (Volokh).

            In particular, at session three, at the 16:00 minute mark or thereabouts, he discusses the intersection of being a legal academic and of being an active advocate.

            1. Yes, and let’s just consider Professor Lemley writing a journal article saying that software has no structure and not citing references that he knows about with the exact opposite view.

            2. Sure, Dennis can plaster us with whatever he wants on here, and we can take it or leave it. But, I think we have gone beyond a professor having any credibility above a person on the street.

              A professor is like a little business now trying to generate money for themselves.

            3. the fact that Prof. Chao is a professor of patent law may in fact bring about a different ethical standard. I will also repeat my opinion that those who engage in both academia and in practice should be held to a higher ethical standard than a person who is active singularly in one or the other area.

              Okay, let’s say you get your fantasy. It’s a “higher standard” for him.

              So what? Is Professor Chao unethical under your “higher standard”?

              Just spit it out, you pathetic clown.

            4. “just spit it out”

              Spit what out, Malcolm?

              Your belief about Professor Chao’s ethics under your proposed “higher standards”.

              Did you forget that you brought up this business of “higher ethical standards”? Did you have a point to make relevant to the topic we’re discussing or were you just spewing drivel to please your nutcase self?

            5. My bringing up the notion that there should be higher ethical standards for those engaging in both advocacy and academics is what it is.

              Such would apply to all people in that category.

              Why do you think that I have stated more than that?

      2. link to law.du.edu

        It appears that Prof. Chao was primarily a patent litigator. Cynically, of course he sees more record as a good thing, since that provides more ammunition for a litigator to (mis)construe at trial.

        Talking informally through misunderstandings/terminology in a not-necessarily-adversarial manner is one of the greatest benefits of an Examiner Interview. It isn’t a deposition; it’s getting on the same page, and then agreeing or agreeing-to-disagree. It is building a personal connection, sometimes explaining to the Examiner that the Client is driving an unreasonable claim, and working to find an acceptable middle ground.

        Putting Interviews on the record would chill attorneys from having any Interviews at all, for fear of malpractice allegations for inadvertent misstatements, or honest concessions, made during the Interview.

        1. SkyYwise: Putting Interviews on the record would chill attorneys from having any Interviews at all, for fear of malpractice allegations for inadvertent misstatements, or honest concessions, made during the Interview.

          This is undoubtedly true, especially if the client has given the attorney specific instructions on what to say or to not say, as the case may be, and he does not stick to the script. He may not have committed malpractice, but he certainly going to piss off the client

  18. Clearly not written by a prosecutor and especially not written by a patent litigator. Why are descriptions and claims written broadly? Because it is impossible to know what references the examiner will come up with. Many inventors do not know all the possible art applicable to their invention. So what is the incentive for anyone to write a narrow claim before the examiner has applied any art.

    The interview should be a session in which both the examiner and the attorney/applicant can freely discuss the invention and art. If everything is recorded, interviews will cease to be useful as both sides with now have to watch themselves for fear of some litigator 15 years from now twisting words that now have gained much different meanings that which was intended. Now we will have case law on how to interpret what was said in an interview. Take a look at congressional hearings, municipal hearings, etc. They are quite useless to get actual work done because no one can say what they want for fear of misunderstandings or someone else twisting meanings for their own purposes. The real work gets done outside of the public meetings.

    One way to get better patents is to make the file history non-public. This allows for a free discussion between examiner and applicant and provides the applicant an incentive to fully define the invention in the description and claims. The only thing they will be able to point to is the description – no cryptic comments in the file history. Claim construction can only use the four corners of the patent document and the other Phillips factors other than file history.

    By enabling more material to be used to construe claims (i.e., recorded interviews) will bring less certainty to the patent, not more. More material provides more fodder for litigators (on both sides of the matter) to argue.

  19. If you want a recording of a telephone interview between the Examiner and an Applicant you don’t even have to record it yourself. Just ask NSA for a copy of their recording.

    They probably also have the Patent Office bugged so they have recordings of all the secret meetings where they discuss how to screw applicants.

    (The reason NSA has the full support of Congress and the President is because they have read the Jed Garoover handbook and are blackmailing the politicians with the recordings they have of them.)

    1. Just ask NSA for a copy of their recording.

      LOL – on the money.

      Because data wants to be freeeeee! (now, let’s see why Lex Machina won’t share).

      1. Laugh. The great hypocrite Lemley. The commons for all, except ME. NOT MY STUFF!!!!!!!!!!!!!!!!! Lemley is without a doubt the most shameful human being in the patent world.

  20. Oh No: A good-looking guy with a lot going for him walks into a bar and gets rejected by the first girl he talks to, the second girl he talks to, the third girl he talks to. By the time he’s done, he has a very low self-opinion and doesn’t want to try anymore. This goes to one of the reasons why I don’t mind “crap” patents.

    Because an “innovator” trying to get a patent is like a guy trying to get laid. Who doesn’t want that guy to get laid? C’mon, people. We all want that guy to get laid. We all know he’s going to get laid eventually. So just get into bed with him already! After all: he’s “got a lot going for him.” How do we know that? Because this guy “Oh No” just told us so.

    Seriously, you really gotta love the patent teabaggers, folks, especially when the truth leaks out.

  21. Frequent_Runner: The interview is not a court hearing, it is more like a negotiation between parties in which various amendments are proposed.

    It’s a negotiation between a representative of the public (an Examiner) and (usually) the lawyer of a non-public entity about which public acts are going to be illegal (if the owner of those rights decides to enforce).

    It seems to me that the public interest in the details of such a negotiation are paramount, to say the least. And why require either party to “summarize” the negotiation when recording them is trivial? Why are we, as a society, bothering to promote progress in all this awesome computer technology if we can’t even use technology that is, at this point, quite old? Just record it.

    Golly, I wonder what some of the complainers are so afraid of? Let’s sample a typical response:

    I expect Prof. Chao to demand all examiner-spe discussions be tape recorded and made of record as well.

    Why in the world would anyone think that is remotely as important as the interview between the Examiner and the applicant? Nobody is asking for recordings of conversations between the attorney and client, or the attorney and CEO, or the CEO and the inventor, nor is anyone asking for transcriptions of conversations between the bottom-feeding patent troll attorney and his/her conscience. All that’s being asked is for transcriptions of the interviews at the point where the rubber meets the road.

    Remember, folks: the same people who really really really don’t want these negotiations to be recorded are invariably diehard fans of claiming new functions for old computers, simply because they dreamt up the function. And they want to be able to negotiate the rights to own these claims in private, whether over the phone or in person. And then they’ll try to make as many members of the public pay up as possible.

    As everyone knows, the typical Interview summary for many years in the so-called “computer implemented arts” is simply the Examiner stating that he/she is going to allow the claims because “the art didn’t teach” [insert text of claim here]. That’s it.

    There’s really no reason to be afraid of these recordings. If nothing else, closer public attention to the content of Interviews will surely have the effect of improving the quality of those Interviews. And isn’t that what the patent teabaggers are constantly telling us should be of the greatest concern, i.e., “patent quality”?

    1. about which public acts are going to be illegal

      BZZZZTTT – wrong. Try not to rely on your ASSumption that all patents are bad.

      Golly, I wonder what some of the complainers are so afraid of?

      LOL – see post 6.1. Try to understand what is actually being said, m’ok pumpkin? Your “really really really” mischaracterizing my point of view (again).

      Or do you think that such currently hidden discussions which hamper the flow of applications through the Office should remain hidden? Can you clarify this, instead of trying to present it in your usual FUD manner? You seem to want to make this suggestion somehow an opposing view to the taping of interviews when what it really is is a complimentary one. Why the dissembling from you on this point? What are you trying to hide?

      1. your ASSumption that all patents are bad.

        That’s not my assumption, Tr0llb0y.

        do you think that such currently hidden discussions which hamper the flow of applications through the Office should remain hidden

        Applicants have a right to know why their claims are being rejected. Last time I checked, those reasons are provided in Office Actions and if they aren’t provided to the applicant’s satisfaction, the applicant can appeal. If the reasons are defensible, the applicant will lose. If they aren’t defensible, the applicant will win.

        Obviously, if the applicant doesn’t care that the reasons given for the rejection were legally insufficient, the public isn’t going to give two hoots either.

        Absent a specific allegation about illegal activity, who cares about some conversation between two people at the USPTO about the best way to tank a junky patent? The reason will end up on the record and the applicant can appeal, or not.

        1. Last time I checked, those reasons are provided in Office Action

          It is not surprising (too much) that you seem completely unaware of the fact that there exists a sizable amount of “examination” that is completely off the record in the form of examiner-spe and examiner-”quality control” personnel that is not reflected in office actions.

          And yet, this perfectly complimentary aspect is somehow (continuously) spun by you as an example against the notion of recording interviews.

          You are either very ignorant, a blatant liar, or both.

  22. I’m ambivalent on the subject of interviews. I’ve never turned down an applicant requested interview, but I would say the vast majority of them are not helpful. Maybe a tenth of them provide any real insight or movement for me, and as for being helpful for the attorney – I view that as the office trying to make someone else’s job mine.

    It’s silly to say that a true accounting of the interview would have a chilling effect, because applicants rarely admit anything in interviews anyway. Nor does it make a lot of sense because neither the applicant nor the examiner has a picture perfect memory of the specification and the references, so if there is any movement it ends up being “well that’s something to think about.”

    I would be in favor of a true accounting of Examiner initiated interviews though. Rarely will you have more than one or two of those a case, and that’s a situation where the distinct reasons the Examiner is proposing changes should be put to record.

    1. I view that as the office trying to make someone else’s job mine.

      Not saying that Random Examiner in particular is guilty of this, but many examiners and the Office (and those leaning that way that post here) are very much keen on trying to shift the burden of examination. Taffas anyone?

      I do chuckle as this is part and parcel of the problem whose solution is “Just do the Fn job.”

    2. “Maybe a tenth of them provide any real insight or movement for me, and as for being helpful for the attorney – I view that as the office trying to make someone else’s job mine.”

      Ur doin it wrong.

      1. Ur doin it wrong

        Hmm, I wonder if 6′s response to a request for clarification of what “doing it wrong” meant and how should it be done right would be met with a comment like: “I wish, but as of right now I’ll just say that I should ponder this extremely complex subject a bit more before making concrete specific recommendations as to exactly the scope of that increased authority.

  23. Yeah I’ve already made this suggestion many times but frankly of late I see it as yet another half measure.

    If you want to solve the issue of claims not being able to be interpreted clearly then you have to solve the source of the problem: applicants drafting them. What we need is for the applicant’s to submit a statement of the substance they want to cover, and that could be accomplished via a proposed claim basically just like we do now. But then the office should have to clear up the scope of the thing with more authority than they are granted by prior art/making 112′s. Every time. And then the applicants can come back and make sure all the substance they wanted to claim is good to go.

    That’s how you solve the issue to the maximum amount possible. Everything else is a half measure designed to still be substantially a failure.

    1. the office should have to clear up the scope of the thing with more authority than they are granted by prior art/making 112′s. Every time. And then the applicants can come back and make sure all the substance they wanted to claim is good to go.

      Can you be more specific about the “more authority” suggestion?

      1. I wish, but as of right now I’ll just say that I should ponder this extremely complex subject a bit more before making concrete specific recommendations as to exactly the scope of that increased authority.

    2. 1) blame the applicant – typical 6 paper shuffling mode.

      OK, so if we look beyond that,…

      2) it appears that the answer is having the claims construed during examination.

      2a) This would eliminate BRI as a tool, which currently is intended to be used as the super set of any possible claim construction

      2b) I have already advocated that the claims be construed during examination. We have discussed this and we have noted that the Office itself is against this position.

    3. “But then the office should have to clear up the scope of the thing with more authority than they are granted by prior art/making 112′s.”

      Lulzapalooza.

      What “authority” do examiners need to make prior art and 112 rejections that they don’t currently have, oh silly examinertard?

      “What we need is for the applicant’s to submit a statement of the substance they want to cover, and that could be accomplished via a proposed claim basically just like we do now.”

      And the award for most ridiculous blog post of the century goes to….(drumroll)…6tard!!!!!!!!!!!!!!

        1. Ned,

          Thanks. But I hardly think 6tard is that well thought out. What 6tard wants is what most examiners want, and currently think they have, which is: the ability to use 112, 2nd to force applicants to particularly point out and distinctly claim what the examiner regards as the invention.

          Those of us who understand the law politely decline.

          1. “Thanks. But I hardly think 6tard is that well thought out.”

            I’ve thought it out previously for those that are regulars, but this topic is too far down my give a sht list to either fav what I said before or remember all the nuance. The fact is, we can leave the nuts and bolts of just how much authority for congress to bestow to expert lawl writers that staff congress. The bottom line is simply to have the office do a once over with a say so in clarifying the wording of the claim such that the substance of what claim is covering is clear before the office allows the claims. The applicant can then confirm that the wording is good to go, or else state how the substance is differing from what they want and then the two parties can work together to get the wording right for the substance and clarity. Of course it wouldn’t need to be done in all apps, many are drafted just fine from the get go.

            1. 6,

              I did not fave the conversation either, but I do remember it as it was one of the few points of agreement. The discussion was basically along the lines of the Office performing a Markman style action as part of the examination. If you recall though, I added at that time that such was expressly something that the Office refused to do.

              The problem with not doing it in all apps is that one cannot know a priori which apps will ‘need it’ done as that only becomes evident at some much later date.

            2. “If you recall though, I added at that time that such was expressly something that the Office refused to do.”

              Yeah I remember your suggestion, but iirc your suggestion is a little more formal than what I’m proposing or proposed in the past. I’d have it be more like a spot-on markman hearing for whatever small issues come up. I mean, unless the whole claim is just screwy. We don’t need to have a formal markman like hearing for every case that comes before us. Just the ones where the office identifies what it sees as an issue.

              And besides, under my proposal, let the PTO protest their own gaining new powers/responsibilities. This will hopefully be instruction from congress, not a mere rule change, so they’ll get the new powers and responsibility whether they want em or not.

              But hey, it’s just a suggestion. There’s a million things they could do, and as long as they’re focused on the root of the problem I don’t much care what they do.

              “The problem with not doing it in all apps is that one cannot know a priori which apps will ‘need it’ done as that only becomes evident at some much later date.”

              Mmmm, well I tell you what, how about we let the office focus on at least fixing the ones it can ID an impending problem with in the first place and then, if the problem isn’t nearly all the way fixed, then we move on to implementing it in every single case? How’s about that?

          2. “point out and distinctly claim what the examiner regards as the invention.”

            Nah man, not at all. All I want them to have the power to do is to force the applicants to make clear what they regard as the invention for other people other than themselves. In other words, force them to set forth what they regard the invention as being in terms that other people will understand as well as themselves. That’s the root of the problem. You have people claiming sht in terms that make sense to themselves, but not other people. Well, and some claim drafting chicanery from lawlyers, but let’s set that aside for a minute.

            1. You have people claiming sht in terms that make sense to themselves

              Clearly, applicants are allowed to be their own lexicographers. And equally clearly, this must be allowed since by its very nature, often innovation is a step into the unknown where terms are not available to exactly cover the new invention.

              The fear of the scriviner must be isolated and set aside. And more than just for a minute.

            2. “Clearly, applicants are allowed to be their own lexicographers. And equally clearly, this must be allowed since by its very nature, often innovation is a step into the unknown where terms are not available to exactly cover the new invention.”

              We can allow it at first draft, and let the office oversee putting what the applicant is saying into terms that all the rest of people can understand along with the applicant.

              Again, I would have the office take no issue with the actual substance applicant wishes to claim. I would have them ensure the form is such that the substance is readily understandable by other people besides the people writing the claim.

              And again, this wouldn’t need to be done in every single patent. Plenty are drafted just fine.

      1. “What “authority” do examiners need to make prior art and 112 rejections that they don’t currently have, oh silly examinertard?”

        Um I didn’t say they needed more authority to make prior art or 112 rejections beyond that they already have tard. Now your comment below makes more sense because you’re obviously tarding it up today and not understanding basic english.

        Try reading what I wrote. Laid out for a kindergartener such as yourself I said they needed authority to be able to force the applicant to claim whatever substance they want to claim in such words that are clear to other people. This has dick to do with 112 or 102/103.

        1. “Um I didn’t say they needed more authority to make prior art or 112 rejections beyond that they already have tard.”

          Here’s an exact quote from your previous post, examinertardface:

          “But then the office should have to clear up the scope of the thing with more authority than they are granted by prior art/making 112′s.”

          You svck at this worse than Examiner Mooney.

          1. “Here’s an exact quote”

            Yes. One that blatantly says that the office NEEDS MORE AUTHORITY to clean up the scope of the claims THAN THEY ALREADY HAVE via art rejections and 112′s. The quote is not an indication that they need more authority under 112 or art rejections re re. But let me be clear for your tardedness, since you blatantly have the same impediment anon has with understanding other people. This authority would have dick to do with the existing authority. It would be more authority distinct from the authority granted by art rejections and 112.

            1. I already asked you what “more authority” do examiners need that they don’t already have and your response was…?

              Right. Your response was nothing. Literally nothing. Because you don’t have a response. Because examiners don’t need any more authority than they already have, either under 112, 102 or 103 or any other section, or under any as yet determined new or amended section, and you can’t even concoct some lame reason or argument for why you need “more authority” or even what that “more authority” would be.

              Here’s an idea: why don’t you just examine the application under the existing law? Are you incapable of that? Aren’t you the guy who was telling us years ago how you routinely found knock out killer prior art with 5 second Google searches? What happened?

              But keep up the record breaking outstanding quality work you’re doing.

            2. Here’s an idea: why don’t you learn to write? If your OA’s are as horribly written as your blog posts, and I suspect they are, though I’m sure you’re gonna tell us all that you’re the Strunk & White master in your OA’s, I can only imagine the gibberish you’re churning out. The unfortunate applicants stuck with you have my sympathy.

            3. “I already asked you what “more authority” do examiners need that they don’t already have and your response was…?”

              Yeah, you asked a question that I answered already in the thread before you even asked the fing question re re. You pressing me on something I already answered is just retarded. But to repeat for the millionth time for your tard arse I’m not 100% sure what exactly that more authority should be. It’s a complicated question and I’ve discussed the situation at length before and come up with some solutions. Anon and others have proposed solutions as well. Some more extreme, some less extreme. The ones I’ve previously proposed are generally less extreme ones that requires minimum manpower iirc.

              I have no further time to waste on your dumass. If you like this subject so much then look up the old threads on the subject in google and check out all the awesome discussion we’ve had.

            4. “Aren’t you the guy who was telling us years ago how you routinely found knock out killer prior art with 5 second Google searches? What happened?”

              On that topic though btw, yeah I still do. I still get a chuckle when that happens. Even bigger chuckles when the art is more than 5 years old and was surely available online at time of filing.

              But, upon further reflection over the years, I simply have good searching skills. It isn’t something I’ve needed to keep bragging about forever and ever.

            5. ” But to repeat for the millionth time for your tard arse I’m not 100% sure what exactly that more authority should be.”

              Lulz. Let’s face it, you’re not even 0.00000000001% sure of what this pie in the sky “more authority” should be. You don’t have a clue.

              “It’s a complicated question…”

              Not really. 112, 2nd and 102 and 103 are more than enough “authority” to get applicants to present clear and unambiguous claims that are novel and non-obvious. The fact that you haven’t figured out how to do that after, what, 6+ years as an examiner, is not a reason for you to be give “more authority.” Why don’t you demonstrate to all of us that you’re capable of doing an adequate job with the authority you already have before asking for “more authority”?

              “… and I’ve discussed the situation at length before and come up with some solutions.”

              I must have missed those. They were obviously such great ideas that you even you can’t remember what they were.

              Lulz.

  24. This has been a long time coming. There’s absolutely no reason, technological or otherwise, not to record the Interviews except for the fact that all applicants know it’s the most secure place to play games and some applicants rely on those games a lot more than others.

    It’s those applicants who are going to howl the loudest.

    Cue up the howling.

  25. Kool-aid drunkenness was evident from the second sentence on.

    Other than that, it is hardly an issue to get worked up about. There will be a chilling effect. It seems acknowledged that there will be a chilling effect. The interview process will take a hit, any negotiation as to patents will be harder fought.

    I don’t have a problem with that. Prof. Chao will not likely achieve what he thinks he would achieve by forcing a more gestapo regime, but that only means the better alternatives for more clients will be taken with NO change in claims (Prof. Chao’s proffered excuse for even thinking about taking this step is a phantom). All in all, the Office loses out.

  26. One program seeks to curb functional claims, a type of claim that is accused of often having uncertain boundaries.
    No more uncertain boundaries than structural language. Breadth does not equal indefiniteness.

    Making audio recordings of patent examiner interviews would prevent this kind of dispute and clarify what claims cover
    They would make for great material at Comedy Central. Notwithstanding the barely intelligible Engrish, you’ll see the same conversation played out time and time again.
    PA: “Where is element X in the prior art?”
    Examiner: “What amendment you have I consider?”
    PA: “Where is element X?”
    Examiner: “Why you claims distinguishable?
    PA: “You say column 3, line 30 through column 11, line 2 teaches element X, I cannot find it.”
    Examiner: “It’s there.”
    PA: “OK, OK .. I give up, what claim amendment do you propose?
    Examiner: “If you amend to add A, B, C, D, E, F, G, H, you overcome prior art.”
    PA: “Will you then allow the application?
    Examiner: “I do another search first.”

    The public is entitled to know why a claim should be allowed before the applicant receives the monopoly rights that come with an issued patent.
    Because it wasn’t rejectable under 102/103 in the first place. BTW — monopoly rights? You’ve been teaching this subject for how long and you still call them monopoly rights?

    it’s clearly time for the Patent Office to record some of patent law’s most important conversations, examiner interviews
    I find most interviews useless — unless initiated by the Examiner. This is when they come to me, hat in hand, asking me to allow them to save face by taking some dependent claim after I took them to task in an appeal.

    1. In addition to my notes at 5, I fully expect Prof. Chao to start a drive to subpoena and release into the official records all of the clandestine secret quality reviews that go on in the office (that even applicants do not have access to.

      I expect Prof. Chao to demand all examiner-spe discussions be tape recorded and made of record as well.

      Any comments, Prof. Chao?

    2. Oh no, until you begin to distinguish between old and new elements, you will not really begin to address the problem of functional claiming.

      Screw. One knows its structure.

      Widget. One does not know.

      So I claim a widget and in the spec I say a widget is anything that cuts ice into blocks using a machine. Is there anything at all wrong with such a claim and such a disclosure? See, e.g., Wyeth v. Stone discussed in O’Reilly v. Morse.

      1. Screw. One knows its structure.

        Um, that sounds pretty Morse to me. Are you saying that there is no possible improvements that can be patented to a screw?

        1. anon: Are you saying that there is no possible improvements that can be patented to a screw?

          Irrelevant — any screw will do.

          And that is the point that functional claiming is quite proper for old and well known elements. “Screw,” “means for screwing” should be equivalent without some anal exam with the latter about the exact structure of a screw.

          If claim construction were done right, it would be done in context of the record where the new and the old were distinguished. The old elements would then be given a liberal construction, the new would require, hopefully, the novelty be put into the claim and not just appear in some corresponding structure.

          1. Irrelevant

            Absolutely not Ned.

            You continue to embrace that purposeful ignorance thing.

            I note (again) that you continue to run away from discussing things with me (such as, for example, what is the “Point of Novelty” in the Diehr case – this is an extremely easy question for you to answer, and yet, you refuse to answer the question).

            Your silence screams volumes.

            1. anon, all right, tell me, educate me, explain to me and every one here listening to this conversation just why it is important, or not important, to know all the details about a screw in a the specification when invention is not the screw but the use of a screw in a larger combination where the kind of screw is totally unimportant – just that it performs its function according to its well-known structure.

            2. (sigh)

              You are still missing the point.

              You want to have your cake and eat it too, and you refuse to recognize what the law is as pertains to claims containing functional descriptions.

              I explain these things to you in a myriad of examples, to which you never seem to want to respond. For example, I have explained to you that the language Congress chose in 112(f) is permissive and not mandatory. The fact that this is permissive means that “means plus” (or step plus) is NOT the only sanctioned manner of using functional language descriptions in claims.

              You continue to ignore this plain fact. You continue to purposefully live in your world, ignoring all such inconvenient facts (and inconvenient law).

              How is your personal understanding of the Nazomi case coming along?

            3. explain to me and every one here listening to this conversation just why it is important, or not important, to know all the details about a screw in a the specification when invention is not the screw but the use of a screw in a larger combination where the kind of screw is totally unimportant – just that it performs its function according to its well-known structure

              He can’t do that, Ned. He can insult you, though, and kick up lots of dust. So that’s what he’ll do instead.

              That’s what the attorney tried to do in that Digitech v. Electronics v. Imaging case we talked about last week. Of course, he tried that in court and he was immediately shut down by the judges who saw right through his b.s. and didn’t want their time wasted. In contrast, Dennis lets the nutcase roam free. Trollboy has a really hard time appreciating that difference.

    3. Oh no, your racism aside, I like how even your farsical PA ignores the only relevant question – “Examiner: “Why you claims distinguishable?”

      The interview process is not for the attorney’s benefit, it’s for the Examiner’s, which is why we’re free to turn them down if we wish. I’m sure regardless of what the Examiner says if you are willing to call up to ask the question you’re going to argue about it in writing. How about saying “This is what we think we’ve invented, does our language cover that adequately?”

      “‘The public is entitled to know why a claim should be allowed before the applicant receives the monopoly rights that come with an issued patent’.
      Because it wasn’t rejectable under 102/103 in the first place.”

      If you really believed that, I’m sure you’d want that in the record.

      “Breadth does not equal indefiniteness.”

      “But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions, or even all starch glues made with three parts of water and alkali, since starch glues may be made with three parts of water and alkali that do not have those properties…One attempting to use or avoid the use of Perkins’ discovery as so claimed and described functionally could do so only after elaborate experimentation…A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention.”

      I prefer to view it as more of a written description issue myself (as the specification will lack in 112, 1st for a functional breadth) but the court correctly points out that the claim to the genus is not what the application discusses: the species. Thus, in today’s parlance, the applicant is not “distinctly claiming what the inventor regards as his invention”. Regardless, he is correct to say they are “uncertain boundaries” because even if you found the scope definite, there’s uncertainty as to whether the disclosure fills the scope or not (i.e. his statement encompasses both 112 1st and 2nd).

      1. Random Examiner,

        The purposeful butchering of language should NOT be viewed as racism.

        At all.

        There was no inclination to make a racist comment when the plain fact of the matter is that there are very real language shortcomings in dealing with many examiners.

        Your attempt here to play the racist card is decidedly out of place.

      2. Oh no, your racism aside
        A little sensitive? Patent law is something where EVERY WORD in a claim should have meaning. If an Examiner has problems with the English language, then that is a serious problem.

        On occasion, I have had an examiner leave a message on my voicemail, and I’ll forward that to the client. We have a good laugh (and cry) trying to figure out what was said. I have had many interviews where it is nearly impossible to understand what was being said by the Examiner. Frankly, it is sad.

        which is why we’re free to turn them down if we wish
        Turn down one after a non-final and your SPE will have a talking to you after I explain how unhelpful you’ve been.

        How about saying “This is what we think we’ve invented, does our language cover that adequately?”
        How about explaining your rejection first — you know, the whole prima facie thing. You make your case first, then I respond.

        I’m sure you’d want that in the record.
        Again, let’s get back to your prima facie case. No prima facie case = no response from me.

          1. the more I have the impression that you are a disrespectful P R I % K.
            I have little respect for people who don’t do their jobs. I have little respect for Examiners who like to play games — exerting what power they have for the sake of exerting their power. I also have little respect for posters that get paid to have an opinion on this blog.

            1. LOL – besides being against the rules of the blog, such conditions also result in the run-away syndrome, as such people will naturally be adverse to carrying any conversation to a natural conclusion that runs counter to their agenda. Such people will not want to put things on the record.

              Funny the irony of that, given the topic of this thread.

            2. ” exerting what power they have for the sake of exerting their power”

              I have yet to meet any such examiner. And I know a lot of them. I do know many examiners that exert their power for the sake of going the fck home or getting a bonus/RCE though. Those are quite different motivations I’d say though.

    4. Oh No: BTW — monopoly rights? You’ve been teaching this subject for how long and you still call them monopoly rights?

      Can you explain to everyone exactly why you find the reference to “monopoly rights” in the patent context so objectionable? Here’s the definition of monopoly: “exclusive control of a commodity or service in a particular market, or a control that makes possible the manipulation of prices.”

      If you own the patent on methods of wirelessly communicating bank account information from one’s handheld computer to one’s laptop computer, it seems that you do “control that service”, at least from the perspective of the public who wants that service. So what exactly is the objection to the use of the term?

      Do you also recommend impeaching judges who use the term in the patent context? Eric Guttag, who occasionally authors posts for Gene Quinn’s IP Watchdog blog, thought that was a good idea and advocated for it in the comments here.

      1. Can you explain to everyone exactly why you find the reference to “monopoly rights” in the patent context so objectionable?

        Because a patent is a negative right and “monopoly rights come from positive rights of something in the market…?

        Maybe….?

        Better yet, why don’t you , oh master of English as a First Language give an answer on this distinction instead of (apparently) seeking to muddle things up here?

      2. Can you explain to everyone exactly why you find the reference to “monopoly rights” in the patent context so objectionable? Here’s the definition of monopoly: “exclusive control of a commodity or service in a particular market, or a control that makes possible the manipulation of prices.”
        You know why — stop playing your little games. The “monopoly” is not just some descriptive term — it has negative baggage associated with it. As such, when somebody misuses the term “monopoly,” while referring to patents, it is an attempt to have the negative connotation associated with “monopoly” also associated with patents.

        A patent is a negative right — not exclusive control.

        1. The “monopoly” is not just some descriptive term — it has negative baggage associated with it.

          That’s nice.

          Increasingly, the term “patent” has a lot of negative baggage associated with it, too, given the amount of junk flowing out of the USPTO, particularly in the so-called computer-implemented “arts”.

          What are you going to do about that? Come up with some new term and insist that nobody use the term “patent” anymore?

          1. Increasingly, the term “patent” has a lot of negative baggage associated with it, too
            To you and maybe a thousand internet whiners on Slashdot and Ars Technica.

            It must suck being you … like being a vegan in a meat-packing company. I bet your therapist earned enough from you to buy a nice boat.

            1. (sigh)

              I do try to be helpful and have suggested that Malcolm find employment in a field in which he can believe in the work product he supposedly produces, but for that helpful suggestion, all I get is ad hominem.

              Wait, ad hominem is all anyone that disagrees with Malcolm gets.

      3. You may want to brush up on your antitrust law to to obtain a better idea of what a monopoly is and then apply it to patent law. While from time to time a patent may issue with claims so broad that the patent holder can dominate a market as a monopolist, this is not the norm. Even though a patent provides exclusive control over a claimed product or method, very often a competitor will have a noninfringing product or method that will be viewed by consumers as a viable alternative, which prevents the patent holder from charging supracompetitive prices.

        Patents are more often useful for gaining and maintaining market share so that free riders don’t undercut their development of a quality product as viewed by consumers. However, as mentioned, this market share rarely rises to monopolist levels, and usually just reflects a higher quality product, which is reflected in higher demand.

        1. While from time to time a patent may issue with claims so broad that the patent holder can dominate a market as a monopolist, this is not the norm.

          It’s not “the norm” thanks to the often inadequate efforts of the PTO. But from the perspective of the patent holder, such patents are the ultimate in awesomeness. It’s what every patent applicant wants: a broad patent that allow the patentee to demand licenses from everyone in the market.

          I don’t see anything wrong with recognizing that fact and referring to the rights sought by patent applicants as “monopoly rights”. Maybe “potential monopoly rights” is more accurate. I doubt you’d like that expression either.

          In any event, I don’t think the term “monopoly” is being used in most instances to mean anything other than excusive control over the claimed invention. The term existed long before US antitrust laws to refer to just that. You knew that, right?

  27. The interview is not a court hearing, it is more like a negotiation between parties in which various amendments are proposed. For example, I may offer to amend the independent claim if I get an assurance of an allowance, but not if I am going to just get another OA. Likewise, sometimes the examiners say they will allow the case only if I agree to their amendment within a few days (usually near their deadline for counts). We could not make these types of contingent amendments on paper or have a frank discussion in a recorded session.

    Dozens of times an examiner has told me to put this words in here so that his supervisor will be happy. They are not going to tell me this stuff when everything is recorded.

    This would be almost like requiring all settlement negotiations between parties to be recorded and made part of a public record.

    Half the recording time will be full of discussions about the Redskins.

    1. Speaking (unofficially) from the other side of the table, I have to agree with you. I would be far more hesitant to say anything at all if the entire conversation is guaranteed to be on the record.

      That said, I get the feeling that attorneys would be even more uncomfortable with that prospect. Any set of proposed amendments always has some note about “for discussion only” at the top, and attorneys routinely try to pin me down to a vague and unhelpful synopsis of the interview in my summary.

      And *that* said, I can’t tell you how many times I’ve looked at the file wrapper for an issued patent and, after seeing that it was allowed immediately after an interview, been at a total loss for why it issued because of the lack of details in the examiner’s interview summary. Better interview summaries are definitely needed, and attorneys need to get used to the idea of having a little more detail on the record, but recording the interviews is not the way to accomplish this.

      1. Here’s the problem.

        Interviews are held when its clear that the Examiner doesn’t understand the claim language or the cited document. During the an unrecorded interview, one can help the examiner understand the claim by citing examples.

        If the interviews were recorded, the anti-patent wackos and infringers would scream and shout that the invention is limited to the examples mentioned during the interview. However, if the claim language is broader this is not the case and is not the reason the examples were mentioned.

        Anyway, while one can SAY there is some big mystery about what is said in the interview, little more is said than what has already been said in writing. Its just an efficient way to determine where there are misunderstandings.

        If an application is allowed immediately after an interview, without any further amendment, its clear that the Examiner agreed he/she misunderstood something that was previously said because the examiner is given only 2.5 days (i.e. 20 hours) to read and understand the application and claims, find, read and understand relevant documents and to prepare an Office Action.

        So, if you are at a loss to understand why an application was allowed after an interview, just read the arguments that were presented in writing and understand that after the interview, the examiner understood those arguments better than she had before the interview.

        On top of that, there are already procedures in place for the Examiners to indicate the Reasons for Allowance in a paper issued with the notice of allowance.

        1. First, some examiners don’t put in reasons for allowance (and the PTO actually has guidelines that discourage examiners from being too wordy in the RfA).

          Second, sometimes the arguments that are presented after first action are not the A-game arguments that get presented after-final when RCE fees are on the line (from my experience, most interview requests I get are after final).

          So what you end up with is an argument that is presented for the first time during the interview, is apparently convincing, and never makes it into the record because the examiner just allows it without making the applicant file anything to present the arguments in writing.

          I know that doesn’t happen in every case, but it happens in some cases, and because of that, you can never really be sure whether the arguments that resulted in allowability were ever presented earlier in the case.

          1. If some examiner’s don’t require new arguments to be placed in the record and if the same examiner’s do not include those convincing arguments in the record via The Examiner’s Interview Summary, that is not a reason to punish the whole class by requiring that all interviews be recorded.

            By the way, as I recall, there is a rule that indicates that if an interview leads to an allowance, there is no need to provide a summary in the record “because it lead to allowance.”

            That rule has always struck me as bizarre.

    2. Frequent, you do raise a good point about how binding the negotiation is.

      If the examiner commits to allowing the case if one does X, then that should be binding. Having it recorded would be one way to hold his feet to the fire if after doing what he wanted, he did not allow the claim.

      What needs to be of record, though, are arguments about prior art that result in an allowance.

      1. “If the examiner commits to allowing the case if one does X, then that should be binding. Having it recorded would be one way to hold his feet to the fire if after doing what he wanted, he did not allow the claim.”

        Most instances of that happening are simply where a junior agrees to withdraw x reference but the spe/primary aren’t on board.

  28. I have a feeling that Prof. Chao has not participated in many (any?) examiner interviews. I think he’d find them much less revealing than expected.

  29. Dennis, I somewhat agree in principle. I would limit the rule to applicant-initiated interviews, as the examiner interviews are typically for clearing up minor points that the examiner can explain to the extent he or she chooses.

    1. the examiner interviews are typically for clearing up minor points that the examiner can explain to the extent he or she chooses.

      Just record them.

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