Pendency from Filing to First Action

One common complaint of the U.S. patent system is delay. Most patents take over three years to issue. Adding in priority claims moves-out the average timeline (original priority filing date to issuance) to over five years. [Link]. One way that the PTO is addressing that concern is to focus on reducing the backlog of unexamined applications – those that have been filed but that have not yet received a first action on the merits (FAOM). Under Director David Kappos, the goal was to reduce the FAOM timeline to < 10 months – that goal appeared quite amazing at the time, but is now somewhat into focus.

In its Official Gazette, the USPTO occasionally reports average filing-date for recently issued FAOMs. I used those reports to create the above chart considers the timeline for receiving first-actions across the various technology centers within the USPTO. Two salient points appear from the chart. First, the average pendency of unexamined applications has dropped significantly since 2011 and all technology centers are under two-years pendency. Second, the variance between the technology centers has been significantly reduced. This second result has come about based upon efforts at the PTO to move examining resources to areas that are suffering the most from the backlog. Although still the shortest pendency, design patents (TC2900) have come roughly in-line with the rest of the technology areas.

As an interim marker, the time-to-first-action is fairly meaningless. However, the PTO hopes that its reduction will result in an overall reduction in pendency. Time will tell whether that hope is realized. For patentees, the timing can be eliminated by requesting accelerated examination ($4,000 fee).

As suggested by the above discussion, the USPTO patent examination corps is divided into a number of technology centers, and each technology center is sub-divided into one or more art units. The technology focus of each tech center is listed below.

  • 1600 – Biotechnology and Organic Chemistry
  • 1700 – Chemical and Materials Engineering
  • 2100 – Computer Architecture, Software, and Information Security
  • 2400 – Computer Networks, Multiplex communication, Video Distribution, and Security
  • 2600 – Communications
  • 2800 – Semiconductors, Electrical and Optical Systems and Components
  • 2900 – Designs
  • 3600 – Transportation, Construction, Electronic Commerce, Agriculture, National Security and License & Review
  • 3700 – Mechanical Engineering, Manufacturing, Products

166 thoughts on “Pendency from Filing to First Action

  1. Repeated for your viewing pleasure (and as a segue to yet another d@mming report of the Office follies….

    Interesting, as Malcolm and the Examiners do their usual bit of dust-kicking, a point of conversation based purely on the [FAOM] data presented gathers moss…

    Any thoughts (by anyone) on the apparent across-the-board-but-led-by-the-chem-arts- UPTICK in prosecution times?

    What happened about 9/13 that has caused all trend lines to inch back upward?

    ;-)

    (led by the chem arts…)

    Here’s a little hint: the OIG provided an initial report on RCE malfeasance

    But why oh why did the Chem art group have the fastest degradation of FAOM response time….? I wonder if this correlates to fastest improvement in RCE time, as the attention from one deck moved to another deck…

    Discuss.

    (and obtw, here are the report highlights:

    We identified four areas of concern:

    1. Structural and examiner-specific issues have increased the number of RCEs that USPTO needs to act upon.

    2. The inclusion of new information from examiners is an ongoing concern for applicants.

    3. USPTO was slow to act on rapid RCE growth and will face challenges making future adjustments.

    4. Some USPTO initiatives that could reduce RCEs have low participation rates and a negligible effect on the RCE backlog.

    1. Alas, this topic appears to be one that will not be discussed any time soon.

      To bookmark then, and recall once more when the whiny examiners failing to do their jobs comes up again.

  2. An interesting update from Hal Wegner (well from the Office, but Hal’s comments:

    59 Months Net Pendency in 2009;
    62 Months Today

    despite Several Thousand Additional Examiners:

    When the then-new Administration began its push in 2009 to increase the size of the examining corps by several thousand new examiners the average net pendency of a patent application from priority date to grant was 59.2 months; today, despite the addition of several thousand examiners the average net pendency is 62.2 months

    This is an honest to goodness “hands-on” measure. On average, each handled application is needing three additional months of time.

    Three additional months per handled application.

    Draw your own conclusions…

    1. (starting at “This is an honest to goodness…” – the comments are mine – don’t want to put words in my pal Hal’s mouth)

    2. Placing here more for compactness (since I know that examiners won’t want to touch this discussion), my pal Hal has added an additional insight to the mounting inefficiency of examiners doing their job:

      An astute observer has noted that for the relevant period “[t]he number of Examiners increased by 30%. The number of new applications increased by 19%”

      Query: What were the actual numbers for new, first U.S. filings – i.e., excluding refiles and particularly RCE’s? In other words, has there been a 19% spike in new filings or only an exaggerated spike by counting, e.g., RCE’s as new applications?

      Given that an RCE only occurs in those situations where (supposedly) the examiner has already examined the entire application (as is their duty), and given – for argument’s sake that RCE’s account for roughly half of Office-counted “new” filings, we have the staggering inefficiency metric of MORE examiners resulting in LESS work getting done:

      Increase examiners by 30%
      Increase real applications by 10%
      Each hands-on application processing increases on average by three months to a total of OVER five years processing.

      Maybe they are emulating the paralegals of the PTAB….

      Or maybe (hint hint) adding more examiners to a broken system only means that you will have more problems.

      There is a reason why systems are re-engineered when they do not work instead of merely doing more of the same that does not work in the first place.

      WAKE UP PEOPLE.

  3. All is not as rosy as the graph would suggest. See the more recent posts on the inspector general’s report on RCE backlogs and on the PTAB appeal backlogs. Given that applicants for patent won’t simply go away as long as they believe they are entitled to a patent under the law, if the PTO shortens the backlog in one place it will tend to increase elsewhere in the prosecution flow.

    The real statistic of interest is the total time from first filing to patent grant. Is it increasing, decreasing or staying the same?

  4. Personally, I think that 1-1.5 years of delay is perfect when you have the option for accelerated examination. That gives applicants time to try and gather up money (by making and selling the invention) for the “reject reject reject” portion of the process.

    If the delay were actually less than a year, then accelerated examination would be pointless, and it would be harder financially for startups and individual inventors.

  5. On point, Hal Wegner this morning posts:

    The PTO “Dashboard” invites the public to ask for statistics that would be helpful. Today, I sent a “Dear Dashboard” email asking:

    “What is the average pendency of an application that matures into a finally granted patent dated from the priority date under any or all of sections 119 and 120?”

  6. Slo Mo: You do realize that under the ABA’s model rules of professional conduct that an attorney is to zealously advocate for the client?

    Ah yes, the old “zealous advocate” excuse for pretending that you were born yesterday. Pretty stale stuff but I’m sure it makes you feel really good. Pat yourself on the back, you zealous advocate you!

    Note that I wasn’t referring here simply to attorneys who pound the table like a five year old when the the Examiner is denying them the claim scope they were hoping for. I’m referring to broader attempts to kneecap any effort by the PTO to improve examination and diminish the amount of j nk that flows out of it (which should help to diminish the amount of j nk that flows in once applicants realize there’s no point in wasting everyone’s time).

    For instance, where do you stand on a tax to ge nerate a substantial sum of money to greatly improve the PTO’s databases and computer-systems, as well as increased hiring, improved training and greater retention of personnel?

    To borrow your own analogy, Slo Mo, imagine a “driver’s license bar” where driver’s attorneys do everything in their power to make it as difficult as possible for the DMV to function. Every driver taking a test has his/her attorney there to challenge the test, the conditions for taking the test, the grading of the test, etc. Would that make the roads safer for everybody? Or would it make life sweeter primarily for these “driver’s license attorneys”? What do you think?

    The typical reaction of patent t–b-ggers like you to this thread is very revealing. Dennis cites some data which most rational people would understand represents a positive development. But the immediate response of the t–b-ggers is to go on the attack. That’s because the t–b-ggers can never be satisfied as long as the PTO isn’t going up in flames with the President declaring, “Now at least our great innovators will get their patents without these government meddlers standing in their way!” Truly, you guys are a joke, albeit a boring, predictable one.

    1. For instance, where do you stand on a tax to ge nerate a substantial sum of money to greatly improve the PTO’s databases and computer-systems, as well as increased hiring, improved training and greater retention of personnel?
      I’ve always been for greater examiner training, more examiners, more time for examiners to perform examination, and more resources for examiners. I’ve commented as such many times over the years on this blog. My clients’ prosecution costs would be diminished by having the best rejections made and the best prior art cited early in the process. My clients would have greater certainty of the value of their portfolio if they knew that their patents received the very best examination that the USPTO could provide based upon all the prior art that was available. I’m sure you don’t know this, but the value of assets are discounted based upon risk — higher risk = high discount.

      Unfortunately, Congress seems addicted to USPTO fee receipts and cannot keep their hands off of them. Otherwise, they wouldn’t need your “tax.”

      So much for your assertion of “fact” that “Billy and his cohorts will do everything they can to make “your Fn job” as difficult as possible, at every turn.” Regardless, I see you don’t let the truth get in the way of a good rant.

      Dennis cites some data which most rational people would understand represents a positive development. But the immediate response of the t–b-ggers is to go on the attack.
      We aren’t as easily bamboozled as you and “most rational people.” The whole advertising industry is based upon making people believe things that aren’t true (i.e., you need XYZ product, or ABC product will change your life for the better). Decreased pendency of FAOM is based upon a change of priorities at the USPTO — not the USPTO getting better. I worry about the latter much more than the former.

      1. LOL – careful there Oh no – too much reason will make Malcolm go into an apoplectic rant of rage.

        Oops. Too late.

    2. some data which most rational people would understand represents a positive development.

      LOL – Malcolm, he so funny.

      (com’on man – look at the entire picture)

  7. All of the time yardsticks are bad, but I guess filing time to FOAM is the best one. When a new case becomes the first on the Examiner’s new docket, they have a month to file the FOAM. Cases are placed on the docket in a semi-random manner that eventually evens things out, and you can get a valid picture. Maybe time to final or time to disposal where you subtract out the delay due to applicants would be best.

    Once you move past that into RCE territory, the numbers become all skewed, because the timer that runs on an RCE is based upon how many RCEs you have, and which is the oldest RCE on your docket at the start of the biweek. At this point its no longer valid in running pendancy numbers unless you’re going to make the qualitative declaration that a RCE’d case has more examination value than a new case. You certainly can’t come to that conclusion and I would see a ton of reasons why the opposite true. There are means which prevent an Examiner from hoarding RCEs and doing only new cases (at some point credit for new cases disappears). Though they are hardly necessary since there’s a built-in incentive in doing the RCEs.

    I suppose time to appeals matters, but that’s largely a factor of how stubborn the applicants are. Time to issue, which others say is the only thing that matters, is actually the opposite, because it suggests there was no fighting over any issue of substance at all. You could definitely cut time by making it a registration system, but if you’re going to have examination, and consequently argument, and the length of that argument is in the Applicant’s purview, there’s no reason to use that as a quality control mechanic on the office itself.

    That being said, certainly one of the worst things about the office is there are (a few) production and (many) quality control mechanics to make sure cases are being finally disposed (abandons, appeals and issuances) when the means by which disposal occurs is entirely out of the Examiner’s hands, as that only encourages Applicants “waiting it out.” The office has no standing rules to force an Applicant into final disposal (as opposed to just disposal), and has only taken action in the most egregious of cases. At some point you have to tell an Applicant to put his best foot forward and either go to appeals on a rejection or let it abandon.

    I have cases that I have been examining for three years (on top of the time it took to get to me). There is no mechanism by which I can drop them. Not that I would be particularly inclined to, since they’re adding only the most mundane, easily searchable things by this point, but you’d think the office would have a mechanism by which I could do so if they were worried about pendancy. The end result is we all have a merry little go-round where the Applicant continues to be able to represent that his patent is pending (which in truth is a misrepresentation in kind), in exchange for paying his attorney, who pays the office, who pays me to essentially not examine (in the sense of what I’m doing is not useful examining to the public, as everyone in the case knows nothing is going to issue). Everybody wins but the people relying upon the applicant’s “pending” statement and the people whose inventions would be examined by me but for me having the option to meet my production by doing the RCE. This viewpoint is not one most Examiner’s would hold, as gen erally Examiner’s love RCEs. Indeed even I do in most situations.

    This issue would be helped with better 101 and 112 training, since 103 rejections are the slowest possible method to arrive at the correct scope and often miss the mark entirely, at least in some TCs.

    I suppose the other way to do this would be to strictly control the Examiner’s docket such that they received no credit for new cases until their amended and RCE cases were completely cleared out, but while it would help pendancy it would lead to worse Examination overall after it went through the ringers a few times.

    1. Brosef the office is not in control all that much on the whole “prosecution merrygo round ” aspect. Sure they can fight it if they want (and did for a time. But then people push back until we get a.wuss as a director and he stops fighting. Plus the neverending prosecution is arguably a fundamental part of the patents as an entitlement program that we have today. Arguably, if you started cutting off prosecution you’d also have to change the word entitled in 102.

      1. Plus the neverending prosecution is arguably a fundamental part of the patents as an entitlement program that we have today. Arguably, if you started cutting off prosecution you’d also have to change the word entitled in 102.

        That statement is belied by the fact that a) the office does cut off prosecution in certain cases, which suggests we know we have the power and b) there are plenty of entitlements one has that are exhaustible.

        To analogize it to a court case – Either a case will be filed and run up the appeal chain or the statute of limitations will run (not to mention repeated dismissals may result in a latches defense), but both of those times end. A judge has the power to move his docket, and that gen erally is not in conflict with the right to seek redress in the courts. There’s nothing wrong with the Office saying “Hey you get three go-arounds on RCEs, and if you’re rejected a sixth time you can either appeal that rejection or any of the previous ones, or you can abandon, but that’s it.” People are owed due process, not absolute process, as one person’s absolute process inherently infringes on someone else’s due process.

        Lets put it like this: Sometimes I can read a specification, the whole specification, and know there’s nothing allowable in the entire thing. Would it help pendancy, the applicant and the public if there was a means by which I could put that information to use? Yep. Is there such a means? Nope. You don’t see a problem with that?

        1. Hilarious as our usual examiner contingent whine and kvetch.

          Is there such a means? Nope.

          B$

          Do your Fn job and stop whining – the nonsense above about “wait it out” sounds like the nonsense about “wear them down.”

          The way the system is set up is that the first action on the merits should be the toughest step for the examiner.

          Should be.

          But the system is easily gamed and a focus merely on FAOM easily circumvents the difficult true total examination that is required as part of the examiner’s (yes, admittedly sometimes difficult) job.

          A comment made by RandomExaminer on the boycotted thread is worth noting here: he mirrored 6’s view that the specification need not be read. That is simply wrong and may be one of the real reasons why the examiners want to moan.

          Read the application – the entire application, and EXAMINE the entire application, including the initial claim set keeping in mind – as you are directed to do – possible claim amendments. Will there be some applicants that simply refuse to give up? Sure. But so what? If you do your Fn job – that first examination on the merits will cover nearly ALL possible replies – and any future need on your time for examination will be minimal. Applicants cannot add new matter – you have everything there that could ever possibly be there.

          “wait it out”….?

          Please stop the nonsense.

          1. Billy Do your Fn job and stop whining

            And never mind the fact that Billy and his cohorts will do everything they can to make “your Fn job” as difficult as possible, at every turn.

            1. And never mind the fact that Billy and his cohorts will do everything they can to make “your Fn job” as difficult as possible, at every turn.
              You do realize that under the ABA’s model rules of professional conduct that an attorney is to zealously advocate for the client? This doesn’t excuse dilatory tactics or allow an attorney to make representations before a court/agency — but any attorney should know this. However, it appears you need to be reminded from time to time.

              1. Malcolm’s view of ethical responsibilities – as has been duly noted – falls tremendously below what any reasonable view of ethical responsibility would be.

                As I have fully stated: If I could report Malcolm, I would.

                In a heartbeat.

                He really does symbolize the worst of the worst – not for his viewpoint, but how he goes about advocating that viewpoint. His methods are shameful and without reason, no matter how much one might align with the viewpoint he holds.

              2. You do realize that under the ABA’s model rules of professional conduct that an attorney is to zealously advocate for the client?

                Ah yes, the old “zealous advocate” excuse for pretending that you were born yesterday. Got it, Slo Mo.

                Note that I wasn’t referring here simply to attorneys who pound the table like a five year old when the the Examiner is denying them the claim scope they were hoping for. I’m referring to broader attempts to kneecap any effort by the PTO improve examination and diminish the amount of j nk that flows out of it (which should help to diminish the amount of j nk that flows in).

                For instance, where do you stand on a tax to generate a substantial sum of money to greatly improve the PTO’s databases and computer-systems, as well as increased hiring, improved training and greater retention of personnel?

                To borrow your own analogy, imagine a “driver’s license bar” where driver’s attorneys do everything in their power to make it as difficult as possible for the DMV to function. Every driver taking a test has an attorney there to challenge the test, the conditions for taking the test, the grading of the test, etc. Would that make the DMV better for everybody? Or would it make it better for “DMV attorneys”? What do you think?

              3. Seems a bit harsh anon. This is only a blog after all. MM is completely out there, but I think we all know that it is a blog and he is going wild. Our expectations are that this is the wild west and no one is to take anything too seriously.

              4. From a professional stand point I have no problem with MM. I know he is a shill and going wild. I think Dennis should muzzle him, but report him? No way. This place is a giant mud slinging pit and everyone knows it.

              5. I have been personally asked how to make this blog better – how to have actual conversations.

                When a professed lawyer does not live up to their ethical duties and purposefully buries conversations in mountains of CRP, then my view is neither harsh – nor under the ethical rules as written, untowards. Just look at the thread that I have boycotted and your own battle there with Malcolm – that thread is currently at over 400 posts, and nearly all of it is dross from a certain poster – and your own replies to that poster.

                NWPA, we are a community that ascribes to self-policing. I do not believe that “because this is just a blog” removes that aspect of self-policing when it is clear that the forum serves an advocacy role. And it should be known that this forum seeks out such an advocacy role.

                This very much aligns with your own posted views on holding academics accountable. My views are in truth not harsh at all. All that I am asking is that methods of advocacy hew to respected norms that we as advocates have sworn to.

              6. Billy: methods of advocacy hew to respected norms that we as advocates have sworn to.

                Remember, folks: Billy is the path 0 l0gical l i e r who spent years here posting under dozens of different pseudonyms a day pretending to “do battle” with a “vocal minority” who disagreed with him about the eligibility of Prometheus’ claims.

                So much for those ‘respected norms’.

                Nice try, Billy. Maybe you can tell everyone about your “respected” and “ethical” plan to use mailroom staff to screen registered letters sent to attorneys so the attorney could be shielded from discovering prior art. That was a good one. Remember that, Billy?

                I do.

                Or how about this little exchange between you and your buddy NWPA?:

                NWPA
                June 24, 2014 at 9:11 am

                This group is little better than the fundamentalist that are raping and killing in Iraq.

                17.2.1.1
                anon
                June 24, 2014 at 9:33 am

                They [attackers of the patent system] want their ends, no matter what the means.

                “Respected norms”. LOL. What an incredible hypocritical t 0 0 l.

              7. zealously advocating has dck squat to do with making the job harder. And it’s sad to see you even bring that up in that context. Because that exact mindset is what is causing the problem to begin with.

              8. You repeat misrepresentations as your “defense?”

                LOL – the self-FAIL in this one is immense.

                As to “what then“? I don’t know. Maybe conversations without such excessive spin and mistreatment of material facts and actual law might break out.

                Wouldn’t it be nice to see if that happened rather than the typical maelstrom CRPfest of CRP-ignore valid counterpoints raised-run away and CRP again?

              9. “How so, 6?”

                Sorry anon, I’m not going down the ol OCPDer rabbit hole with you today. If someone else is interested I may discuss it with them.

                Besides I think you an I may have discussed this already.

              10. “Billy and his cohorts will do everything they can to make “your Fn job” as difficult as possible”…You do realize that under the ABA’s model rules of professional conduct that an attorney is to zealously advocate for the client?

                True, but it is worth mentioning that an attorney is also charged with the knowledge of his client. When a criminal client admits his guilt to his counsel, the attorney can’t argue that his client is innocent (as that is an objectively determinable fraud on the court), he can only argue that the state has not met its burden. But the burden in a criminal case is undefined by the law – as what constitutes a reasonable doubt is left to the jury, while the burden in a rejection is based on an objectively determinable standard (based on a PHOSITA), just like the “innocent” designation.

                If counsel knows that element X exists, they really have no business arguing against element X. I think, in fact, counsel does know that X exists (as I’m sure it comes up during the drafting stage, counsel needs to know what to describe with particularity), so I suspect attorneys who argue against known elements are flat out misrepresenting to the office. If they didn’t know, they’re still charged with the knowledge of their client, and they can’t sign and submit an argument their client would know to be baseless. Further, if counsel doesn’t know if his client knows if X exists and doesn’t find out, he’s not unlike the criminal attorney who tells his client “I don’t want to know if you did it, since that will tie my hands.” The fact that they “can” do these things (in terms of ‘they won’t get punished’) doesn’t mean they are ethical.

                I’m not suggesting you have to, but everything would go much quicker if the attorney simply said “here’s how the machine was, here’s the change/improvement we’re making, decide whether it’s obvious or not” since it would cut out 90% of the Examiner’s work and get right to the real issue. It would definitely clear out the backlog, which is the point of this post. It’s not done because, especially when it comes to information processing, that would immediately render almost every claim obvious, and attorneys are more interested in getting a patent for their clients than protecting the public, and I’m not sure that’s an ethical stance either. An attorney has a dual role.

                I can certainly understand one not wanting to admit it, because the client would like to get the patent by any means, use it to frighten people, and then argue that there is another reason it is valid once it is fought, after the presumption attaches. That’s the rule and it doesn’t impact me so that’s fine. Just don’t pretend that just because the rules allow one to act in that manner means that manner of activity is ethical. Laws/rules are a minimum standard, and compliance with a rule is insufficient to show ethical behavior.

              11. I suspect attorneys who argue against known elements are flat out misrepresenting to the office.
                Let me remind you of this quote: “virtually all [inventions] are combinations of old elements.” In re Rouffet, 149 F.3d 1350, 47 USPQ2d 1453 (Fed. Cir. 1998). Those attorneys are likely not arguing against known elements — they are arguing you haven’t shown that those elements exist in the applied prior art.

                everything would go much quicker if the attorney simply said “here’s how the machine was, here’s the change/improvement we’re making, decide whether it’s obvious or not”
                Yeah … but a lot of inventions don’t happen that way. Sometimes the new is much, much different than the old.

                attorneys are more interested in getting a patent for their clients than protecting the public, and I’m not sure that’s an ethical stance either. An attorney has a dual role.
                ??? So long as I follow the laws and I get a patent for my client, then I’m good. Congress has already made the determination that in those circumstances the public good is served.

                BTW — zealous representation of my clients is part of an attorney’s code of ethics. I don’t get to serve two masters with competing interests — that is unethical.

              12. Hey, Oh No, in representing the client, it seems that our duty is to get a valid patent without any unnecessary limitations.

                Attorneys who simply want to get a patent can get a picture claim. But his client is not well served.

                Equally bad, in my view, is getting a patent that is invalid. That kind of patent only gets the client into a lot of trouble.

              13. Let me remind you of this quote: “virtually all [inventions] are combinations of old elements.” In re Rouffet, 149 F.3d 1350, 47 USPQ2d 1453 (Fed. Cir. 1998). Those attorneys are likely not arguing against known elements — they are arguing you haven’t shown that those elements exist in the applied prior art.

                They know they exist in the applied prior art too. Are you trying to suggest that it’s ethical that an attorney for AT&T argues that I haven’t shown Wi-fi exists in the prior art in an application filed today?

                ??? So long as I follow the laws and I get a patent for my client, then I’m good. Congress has already made the determination that in those circumstances the public good is served.

                Retake your ethics courses. Compliance with the law is insufficient to determine someone is acting ethically. That’s why we have ethical rules. If the rule was just “don’t be found guilty of a crime” we wouldn’t have state bars, since whether someone was found guilty of a crime is an easy thing to determine.

                BTW — zealous representation of my clients is part of an attorney’s code of ethics. I don’t get to serve two masters with competing interests — that is unethical.

                Your zealous representation is a lower duty than adherence to ethical standards, which includes the court or in this case, the office. Tell you what, lie to the office and argue you’re allowed to because you’re zealously representing your client, and we’ll see how long you keep your license. Your duties to your client come second my friend.

              14. Do you know what the ethical rules are Random Examiner?

                Do you know where you can find them?

                If so, please have a chat with your pal Malcolm, as he seems unable to understand them.

              15. Are you trying to suggest that it’s ethical that an attorney for AT&T argues that I haven’t shown Wi-fi exists in the prior art in an application filed today.
                I said applied prior art — i.e., the art you are applying — not any prior art. Poor reading comprehension — must be an examiner.

                Your zealous representation is a lower duty than adherence to ethical standards, which includes the court or in this case, the office. Tell you what, lie to the office and argue you’re allowed to because you’re zealously representing your client, and we’ll see how long you keep your license. Your duties to your client come second my friend.
                Did I say anything about lying to the office? Of course not … however, I see your straw man needed that baseless allegation. First, I suggest you read the attorney rules regarding ethics — they are easily found. Moreover, I suggest you read what is (and what isn’t) permissible under the requirement to provide zealous representation. Upon doing so (which I have no expectation that you will actually do so), you will realize how silly the facts underlying your straw man are.

                Talking law with a non-lawyer is like talking physics, in English, to someone who has a weak grasp of English. Sure, you might be able to understand some of what I’m saying, but you really don’t understand what all the words means. You think you do, but you don’t.

          2. Read the application – the entire application, and EXAMINE the entire application, including the initial claim set keeping in mind – as you are directed to do – possible claim amendments.

            This is exactly the attitude I was talking about.

            Of course SloMo understands that many patent applications are among the worst written legal documents on the face of the earth, with applicants often doing their best to “hide the ball” amidst endless piles of jargon made-up on the spot. Nevertheless, SloMo insists that his nominal fee covers the costs of a skilled artisan reading the entire application, examining the claims under the constantly changing law, writing up a rejection that squares perfectly with that law and, in addition, includes an analysis suggesting “possible amendments” (with support in the specification) that would overcome any rejections that were made and will be made. And of course SloMo — because he’s such an awesomely “zealous advocate” for this “client’s interests” — also supports making it impossible for this job to be done with the rigor that a fair market price (such as that paid to a patent attorney asked to perform a similar analysis) might yield.

            The fact is that SloMo is advocating for his client right now, right here. He’s not speaking as an advocate for anything resembling justice or fairness ge nerally. He’s just telling us all what his client demands, because SloMo is his client’s mouthpiece. Isn’t that right, SloMo?

            1. Nevertheless, SloMo insists that his nominal fee covers the costs of a skilled artisan reading the entire application, examining the claims under the constantly changing law, writing up a rejection that squares perfectly with that law and, in addition, includes an analysis suggesting “possible amendments” (with support in the specification) that would overcome any rejections that were made and will be made.

              LOL – you seem to be trying to make the singular point that the cost of examination is not high enough.

              Funny, but your rant obscures this point and secondly ignores the fact that the Office already has the authority to set the examination fee as it would like to – of course, limited by the requirement (under law) that the fee settings align in the aggregate.

              But you just cannot find the gumption to say this directly, can you?

              1. the Office already has the authority to set the examination fee as it would like to – of course, limited by the requirement (under law) that the fee settings align in the aggregate.

                Are you trying to suggest, Billy, that the Office can set whatever goals it wishes for itself (number of offices, number of employees, size and speed of computer databases, etc) and then charge whatever fees are necessary to achieve those goals as long as those fees “align in the aggregate”?

            2. I have (in fact, I think that I am still the only regular poster to have done so) averred that my posts are STRICTLY my personal views only.

              You seem to want to ignore that material fact.

              Shockers.

          3. Do your Fn job and stop whining

            I simply suggested that if the office was intent on lowering pendancy they should include a mechanism by which the office could dump pointless applications in light of the fact we have such a backlog. I’m not suggesting dumping all applications, or lowering the standard of examination, I’m simply suggesting the put a cap on the amount of times the Applicant can go around. At some point the Applicant should be forced to decide whether they have something or whether they think the Examiner is wrong (and appeal).

            The way the system is set up is that the first action on the merits should be the toughest step…But the system is easily gamed

            I can’t imagine how you think this. Do some Examiners sometimes do a poor job rarely on a particular FOAM to make their production? Sure. But its exceedingly rare, because everyone knows they will have to do a second non-final when it comes back. Which means in the future you’re doing more work for no credit, and taking quality hits for it too, and those Examiners simply don’t last. Of course it happens, but it doesn’t happen on a common basis.

            Even if you ignored those requirements in their job (maybe they have a sympathetic SPE you might argue) the only way this could be “gamed” on a long term basis is if you think that Examiner is more interested in the Office’s stats than the particular work they have to do, which I assure you is nobody. There is not a single person working at the PTO that will routinely take second non-finals to, as you put it, play a shell game on the public, because they receive no benefit and additional work.

            A comment made by RandomExaminer on the boycotted thread is worth noting here: he mirrored 6′s view that the specification need not be read.

            I do indeed read the specification personally, but I don’t (nor do most people in the office) believe that specification reading for any reason other than seeking out particular meanings of terms or spec objections is necessary. Not reading the specification allows the Examiner to enter the claims (which is what matters) without the preconceptions of the spec and allows them to see overbroad terms for what they are. Spec reading is considered a personal choice and there is, in terms of our jobs, nothing wrong with it.

            If you do your Fn job – that first examination on the merits will cover nearly ALL possible replies – and any future need on your time for examination will be minimal.

            My job is to examine claims in front of me, not restrictable claims, not claims in a parent or child that share the spec, but the claims in front of me, and direct them toward a scope I believe is allowable. The scope of the search you pay for is based upon the claims, not the spec. You pay extra for more claims. Your spec may contain multiple inventions, most of which are not of my concern. I do not reject a spec, I reject claims. It’s that simple. If you submit overbroad claims, you’re going to get art that is not related to your spec, but that’s because your claims aren’t related to your spec, which is the point we’re trying to make with our examination. That is a symptom of you trying to overclaim, not of the Examiner doing a poor job.

            When applicants complain they aren’t getting the art they want they can appeal or they can narrow their claims, those are their options. You can’t write your claims with one scope but then demand examination of another scope, because that’s not the benefit you’ll be receiving.

    2. I’m no fan of attorneys who keep cases pending for the heck of it (i.e. just to keep the cash flowing), but you and 6 make me even sicker than some of the attorneys you complain about. You don’t give s–t about examining, just about getting your count, and you wish you could knock things out under 101 so you don’t have to do the real work of making a 103 determination. I’ve got clients (yes, that’s plural, i.e. more than one) with real inventions who are stuck the “merry-go-round” because of examiners who read at about a sixth-grade level, when they even bother to read.

    3. All of the time yardsticks are bad, but I guess filing time to FOAM is the best one.
      No … because it is easily gamed and not reflective of the only measure that really matters (to inventors, i.e., your clients) — time to issue.

      I suppose time to appeals matters, but that’s largely a factor of how stubborn the applicants are.
      LOL — why is it that more than 50% of appeals never make it to the PTAB? Is it because applicants are stubborn or that the rejections were bad in the first place?

      you’d think the office would have a mechanism by which I could do so if they were worried about pendancy.
      While pendency is important — don’t let the tail wag the dog. In this case the ‘dog’ is that patents get issued on deserving applications and denied on underserving applications.

      The end result is we all have a merry little go-round where the Applicant continues to be able to represent that his patent is pending (which in truth is a misrepresentation in kind).
      So cynical. Perhaps there is something that is patentable yet you, the attorney, and the client haven’t discovered it yet. BTW — until the patent application is abandoned, it is still pending — no misrepresentation.

      in the sense of what I’m doing is not useful examining
      Perhaps you are doing more of that than you think? Examining isn’t just about rejecting applications — it is about finding the correct line between what is patentable and what is not. If you see the line (but the inventor/attorney does not), then you should be proactive in suggesting that line.

      Everybody wins but the people relying upon the applicant’s “pending” statement and the people whose inventions would be examined by me but for me having the option to meet my production by doing the RCE.
      I’m guessing that there isn’t many relying upon the “patent pending” statement. As for your other point, you do realize that the applicant PAYS for an examination. Take away all the money that these applicants pay and there would be less examiners.

      This issue would be helped with better 101 and 112 training, since 103 rejections are the slowest possible method to arrive at the correct scope and often miss the mark entirely, at least in some TCs.
      101 and 112 are technical issues that shouldn’t prevent 99.9% of patents from issuing. As such, YOU should be focusing most of your time on 102/103.

      gen erally Examiner’s love RCEs. Indeed even I do in most situations.
      Of course, you’ve already (hopefully) read the application and done the search. As such, your count/work ratio after an RCE is much higher than a FAOM.

      The office has no standing rules to force an Applicant into final disposal
      Welcome to the real world. While most people pass get their driver’s license after the first attempt, for some, it may take many times before they get it right. What is important is that when they get it right, the government/agency gives them the license. There is no good policy reason, which overrides the policy reasons underlying the patent system, for denying people a second or third or fourth or nth chance at getting a patent when they are paying for the examination. The purpose of your job is not to reduce pendency but to correctly administer the patent laws.

      1. Perhaps there is something that is patentable yet … the attorney, and the client haven’t discovered it yet.

        LOLOLOLOL.

        Love it when the truth leaks out.

        1. Love it when the truth leaks out.
          Yeah … you got to love those pharma/chem specifications — they describe 1,000 species in the specification — only to narrow it down, 5-10 year later, to a handful once the viable candidates have been identified.

          I see the pot has yet to have that conversation with the kettle.

          1. you got to love those pharma/chem specifications — they describe 1,000 species in the specification — only to narrow it down, 5-10 year later

            And now it’s time for Slo Mo to sit and spin.

            Sorry, Slo Mo, but I don’t “have to love” any “pharma/chem specifications.” In fact, I’m happy to point out j nky pharma/chem claims whenever I see them. And I regularly do, as everyone knows. It just happens that the j nky computer-implemented claims are at the forefront of the j nkiest j nk that’s floating out there right now (and that’s been the case for a long time).

            Any other non-sequiturs you want to toss out here? Go right ahead.

            1. And now it’s time for Slo Mo to sit and spin.

              Any other non-sequiturs you want to toss out here?

              Lovely AOOTWMDs.

              How Fn pathet1c.

      2. There is no good policy reason … for denying people a second or third or fourth or nth chance at getting a patent when they are paying for the examination.

        Sure there is: a policy which forces attorneys and their clients to get their sh t together in a timely manner and stop wasting limited PTO resources with their incompetence.

        the policy reasons underlying the patent system

        Whatever you’re referring to, the “underlying policy of the patent system” is surely not “discovering every patentable invention lurking in reams of j nk shoved at the PTO, at all costs and regardless of how long it takes.”

        1. Sure there is: a policy which forces attorneys and their clients to get their sh t together in a timely manner and stop wasting limited PTO resources with their incompetence.
          I see you didn’t catch that part where applicants PAY for the examination. Don’t worry, you have never been confused with somebody with great reading comprehension — it is just one of your charms.

          Whatever you’re referring to, the “underlying policy of the patent system” is surely not “discovering every patentable invention lurking in reams of j nk shoved at the PTO, at all costs and regardless of how long it takes.”
          Don’t know the underlying policy of the patent system? Don’t worry, from your past comments, we already knew that so don’t feel bad about making that admission — again, one of your charms.

          Another one of your charms is your obsession with this made up word, “j nk.”

          1. applicants PAY for the examination

            Yes they do. And if they are small or micro they get a substantial discount. But those payments aren’t necessarily going to work as a stick to force the applicant to get down to business if the value of the pending application is perceived by the applicant to be greater than the cost of parking it at the PTO.

            1. parking it at the PTO
              To the extent that “parking it at the PTO” exists, it is a very small cost to the USPTO. You cannot “park” unless you file an RCE or appeal. As I already mentioned once in this thread already, the incremental cost of performing an action after a RCE is much less than that after a new application. However, the applicant is paying a comparable amount to the USPTO to do either. Thus, the USPTO realizes more $ per work expended after a RCE than after a new application.

              1. To the extent that “parking it at the PTO” exists, it is a very small cost to the USPTO.

                The USPTO isn’t the only one who cares about pending applications, however. There’s this other group of constituents called “the public” which you regularly take a sh t on. Remember them?

              2. As I already mentioned once in this thread already, the incremental cost of performing an action after a RCE is much less than that after a new application.

                The “incremental cost” of performing an action, in terms of time, is the same regardless of whether it is a FOAM or a RCE as far as pendancy is concerned.

              3. The “incremental cost” of performing an action, in terms of time, is the same regardless of whether it is a FOAM or a RCE as far as pendancy is concerned.
                Pendency is not cost.

            2. It’s always good for a laugh when the patent bulls equate consideration of the public interest in the patent system with “communism”.

              Run with that one, guys. It’s a real winner.

          2. “I see you didn’t catch that part where applicants PAY for the examination.”

            See? They pay for examination! That means they have no need to have their sht together! That’s what makes it “all better”! The paying part.

            “Don’t know the underlying policy of the patent system?”

            Oh yes, please do regal us with your version of the “underlying policy of the patent system”.

              1. You miss the point of the comment 6

                Just tell everyone “the point of the comment”, Billy. And please share with us all your version of the “underlying policy of the patent system.” Does it include “discovering every patentable invention lurking in reams of j nk shoved at the PTO, at all costs and regardless of how long it takes”?

                Let everyone know.

              2. LOL – “just tell everyone

                The ball was put back into your court Malcolm, and of course you want the attention elsewhere.

                Happens quite a bit that you want others to pipe up and give answers when you are asked for them.

                Anything off of your short script and it is instant panic from you.

                Amusing.

                Sad, but amusing nonetheless.

      3. 101 and 112 are technical issues that shouldn’t prevent 99.9% of patents from issuing.

        Pretty sure the percentage depends very heavily on the claims that are being presented to the PTO.

        Did you say you were a patent agent?

        1. Pretty sure the percentage depends very heavily on the claims that are being presented to the PTO.
          That was an overall percentage.

      4. “What is important is that when they get it right, the government/agency gives them the license.”

        See? It’s the entitlement aspect come directly to life.

        1. See? It’s the entitlement aspect come directly to life.

          Let me refer you to 35 USC 102: “A person shall be entitled to a patent unless …” (emphasis added). If you have a problem with that, take it up with Congress.

          While not reproduced here, the portions of 35 USC 102 after “unless” does not include “the applicant does not provide a perfect application within [x] years or [y] attempts.” The “unless” is based upon prior art.

        2. 6’s use of “entitlement” clearly also is an attempt at disparagement along the lines that completely ignores a fundamental aspect: Quid Pro Quo.

          That’s one of his “charms.”

      5. Examining isn’t just about rejecting applications — it is about finding the correct line between what is patentable and what is not. If you see the line (but the inventor/attorney does not), then you should be proactive in suggesting that line.

        That assumes there is something patent-worthy there — a huge assumption once the floodgates were opened to applicants filing “do it on a computer” ga rbage.

        There are zero reasons to expect every or even most applications to contain a patent-worthy invention in the present day of computer-implemented horse cr xp. Requiring Examiners to scour an application to identify a patentable invention for you is just another game that you play to waste limited resources that could be spent examining and granting patents to applicants who aren’t bottom-feeding hacks trying to make a billion dollars “off the Internets.”

        1. a huge assumption once the floodgates were opened to applicants filing “do it on a computer” ga rbage.
          Couldn’t resist another attempt at a thread hijacking? Again — yet another one of your charms. How about you stay on topic for once?

          There are zero reasons to expect every or even most applications to contain a patent-worthy invention in the present day of computer-implemented horse cr xp.
          LOL — because you say so? Because it makes you sad you aren’t making money hand over fist like all the other patent attorneys out there? You bet on the wrong horse in biotech and you’ve been miserable and prone to lash out ever since. Yeah, we get it (for years now) — another one of your charms.

          Requiring Examiners to scour an application to identify a patentable invention for you is just another game that you play to waste limited resources that could be spent examining and granting patents to applicants who aren’t bottom-feeding hacks trying to make a billion dollars “off the Internets
          Yet another logic-fail from Malcolm Mooney. Those examiners qualified to examine patents ‘off the Internets’ are very likely unqualified to examiner the really important stuff (i.e., that biotech stuff you do). As such, these “limited resources” (which are getting paid) are not being wasted.

          1. Thanks again Oh no.

            Each of your points have been made before with Malcolm.

            He will (of course) continue to ignore and continue to soapbox and continue to advocate while omitting material facts and misrepresenting material aspects of law.

            That’s his “game.” The fact that this game violates a lawyer’s ethical duty (hint, 6 – the “control” factor is one that Malcolm, as a self-professed attorney had voluntarily placed on himself) simply is not important because “this is merely a blog.” Or at least, that is what Malcolm is holding onto.

          2. Those examiners qualified to examine patents ‘off the Internets’ are very likely unqualified to examiner the really important stuff (i.e., that biotech stuff you do). As such, these “limited resources” (which are getting paid) are not being wasted.

            These unqualified Examiners who are examining applications completely devoid of technological improvements are using space, time, money and resources that could be used by more qualified people so those qualified people could do a better job.

            There are zero reasons to expect every or even most applications to contain a patent-worthy invention in the present day of computer-implemented horse cr xp.
            LOL — because you say so?

            Uh, no. Because there’s a lot of really st00pit attorneys out there and even st00piter clients who couldn’t identify an invalid claim if their life depended on it. And a lot of them comment here for some bizarre reason.

            it makes you sad you aren’t making money hand over fist like all the other patent attorneys out there? You bet on the wrong horse in biotech

            LOLOLOLOLOLOL! This gets funnier every time you bring it up, Slo Mo. It also reveals so much about your own bitterness. Betting on the wrong horse? LOLOLOLOLOLOL.

          3. Slo MoThose examiners qualified to examine patents ‘off the Internets’ are very likely unqualified to examiner the really important stuff (i.e., that biotech stuff you do). As such, these “limited resources” (which are getting paid) are not being wasted.

            These unqualified Examiners who are examining applications completely devoid of technological improvements are using space, money and resources that could be used by more qualified people to examine applications filed by more qualified innovators (as opposed to the innundators whose level of skill approximates that of a typical fifteen year old Facebook user).

            There are zero reasons to expect every or even most applications to contain a patent-worthy invention in the present day of computer-implemented horse cr xp.
            LOL — because you say so?

            Uh, no. Because there’s a lot of really st0 0pit attorneys out there and even st0 0piter clients who couldn’t identify an invalid claim if their life depended on it. And a lot of them comment here for some bizarre reason.

            it makes you sad you aren’t making money hand over fist like all the other patent attorneys out there? You bet on the wrong horse in biotech

            LOL. This “jealousy” schtick gets funnier every time you bring it up, Slo Mo. It also reveals so much about your own thin, reactionary skin. I “bet on the wrong horse”? LOL. Too funny.

            1. These unqualified Examiners who are examining applications completely devoid of technological improvements are using space, money and resources that could be used by more qualified people to examine applications filed by more qualified innovators
              Oh wait … that “space, money and resources” were provided by those people with alleged “applications completely devoid of technological improvements.” Get rid of those applications, and you also get rid of the “space, money and resources.” Another Malcolm Mooney logic fail ….

              This “jealousy” schtick gets funnier every time you bring it up
              I just remember the time when you were whining about that big-shot partner in your firm who was practicing in the “j nk” patent space. Your jealousy of his success was a clear as day. You thought you were better than him but despised his success. I still chuckle when I think of it.

              couldn’t identify an invalid claim if their life depended on it.
              Most of us need to see prior art before declaring a claim to be invalid — I must admit, your skill at invalidating (almost all) claims without prior art is … well … uh …. interesting.

          4. “Those examiners qualified to examine patents ‘off the Internets’ are very likely unqualified to examiner the really important stuff (i.e., that biotech stuff you do).”

            All examiners are presumed qualified to examine any patent. But besides that, all examiners are req’d to be qualified to examine at least something in the actual useful arts. The PTO does not hire a mess of ta rds that are unqualified to examine just to do the interb ut apps.

            1. at least something in the actual useful arts

              LOL – the “actual useful arts” canard smokescreen is being attempted to be kicked up – because, the Amish invitation was not exciting enough for 6….

            2. The PTO does not hire a mess of ta rds that are unqualified to examine just to do the interb ut apps.

              Your post misses the point stressed by your fellow lemming mouthpiece Malcolm.

              And misses badly.

          5. Examining isn’t just about rejecting applications — it is about finding the correct line between what is patentable and what is not. If you see the line (but the inventor/attorney does not), then you should be proactive in suggesting that line.

            In fairness, this is an argument that I don’t think holds up in real life. In just the past week I’ve suggested 4 allowable scopes to applicants, and they don’t want to take it because it’s “too narrow.” It’s kind of silly not to listen, since I am both judge and prosecutor. You don’t actually want me to be proactive, you want me to come in and rescue you with a pity scope when you’re out of ideas. And that’s fine. I do it a lot in fact. But call it what it is.

            Beyond that, it’s not even an aim of the patent system for me to post-hoc build out of the boxes you give me. That’s something that came in with Kappos and is, frankly, wrong. The applicant posits an invention and submits it. If I, years after his filing and after a search, can “invent” using his boxes a) he’s not the inventor and b) I’m almost certainly using true hindsight. 112 has a subjective requirement, and for me to come in with hindsight bias and tell the inventor what beats a 103 clearly shouldn’t pass 112 muster.

            If that were the rule I don’t know why you just don’t submit a giant spec listing all the known features of everything and tell me to pick and choose whatever I think makes a non-obvious combination?

            1. In just the past week I’ve suggested 4 allowable scopes to applicants, and they don’t want to take it because it’s “too narrow.”
              Dude — you really don’t understand what is going on, do you? Behind the scenes the attorney is suggesting to the client (or vice versa) that perhaps broader claims can be obtained. There are questions being asked about whether to take the allowable claims and file a continuation to go after the broader claims. There are monetary and timing issues to consider. The fact they declined your initial offer doesn’t mean that they won’t end up taking those claims.

              That’s something that came in with Kappos and is, frankly, wrong
              No … that is something that existed for a very long time and was (apparently) discouraged by Dudas. Let me refer you to MPEP 706(II):
              When an application discloses patentable subject matter and it is apparent from the claims and the applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and when possible should offer a definite suggestion for correction.
              This paragraph (almost unchanged) has been in the MPEP since at least 1961 so please don’t tell me that this is something that came in with Kappos and is “frankly wrong.”

              for me to come in with hindsight bias and tell the inventor what beats a 103 clearly shouldn’t pass 112 muster
              You really don’t understand your job or the law, do you? The applicant invented what is in the specification. The question at hand is drawing the line between what is patentable and what isn’t. You aren’t “inventing” if you happen to help draw that line just like I’m not inventing when I craft the claims — not even close.

              If that were the rule I don’t know why you just don’t submit a giant spec listing all the known features of everything and tell me to pick and choose whatever I think makes a non-obvious combination?
              You guys must have a lot of time on your hands to come up with these silly examples.

              Since you appear to be confused, let me give you an example. You read the specification (I know, a real drag, but try anyway) and you get a feel for what the applicants think is the invention. I do it all the time, and it usually doesn’t take me more than 10 minutes to get a pretty good idea. You then look at the claims and perform your search based upon the BRI. Based upon the BRI, you find really good 102 art. However, this 102 art really isn’t in the field of the invention and is directed to something totally different. At that point, you could issue your rejection.

              A better examination, however, would entail thinking about what limitations an applicant could throw in that would overcome your rejection. You then perform a search based upon those hypothetical limitations. If you find good art, then you should cite that. If you don’t find art that reads on those hypothetical limitations, you can issue your rejection (with the initial art you found) and include a comment that the addition of ABC hypothetical limitations would overcome the rejection. If you are confident of allowing the case if those limitations were added, then you can make that point as well. Regardless, this type of examination reduces pendency and reduces the total amount of work that you perform.

              1. “The applicant invented what is in the specification.”

                Very interesting assertion. You should bounce that one off Billy and his cohort of “the invention r the claim!” Not to mention all the attorneys etc currently mired in the cult of the claim (as being considered the invention).

                It is no wonder that RandomGuy doesn’t understand that his picking and choosing wouldn’t be just himself inventing from random stuff the applicant submitted. It’s a symptom of the cult of the claim.

              2. “You guys must have a lot of time on your hands to come up with these silly examples.”

                Actually not all that silly what so ever. I’ve had a couple chemical cases jam packed with little species of chemicals and them just either wanting me to tell them which species are good, or else they’ll just make a claim for each species in deps and make me go down the list rejecting or not. If I’ve had a few then they must be pretty common.

                “You then perform a search based upon those hypothetical limitations.”

                Wasted time according to the current search trainers. Wasted time.

                Imo you should just do one search directed to both the BRI and the more narrow stuff set out in the spec n do the best you can with the time given. Not do 2x searches.

              3. “If you don’t find art that reads on those hypothetical limitations, you can issue your rejection (with the initial art you found) and include a comment that the addition of ABC hypothetical limitations would overcome the rejection. If you are confident of allowing the case if those limitations were added, then you can make that point as well. Regardless, this type of examination reduces pendency and reduces the total amount of work that you perform.”

                That is all good advice there tho.

              4. Behind the scenes the attorney is…

                I’m aware. That’s a small part of what you’re paid for. From my point of view: When you suggest I do extra work, and me doing extra work results not in my work ending, but in someone else making even more work for me (because now you want a broader scope, I have to search the new scope, as well as argue why you need the more limited scope), it teaches me not to do that extra work, doesn’t it?

                Let me refer you to MPEP 706(II):

                Exactly, let me quote your reference: and it is apparent from the claims and the applicant’s arguments that the claims are intended to be directed to such patentable subject matter . I have no problem with pointing out you’re arguing unclaimed features, in fact we have a form paragraph for it. When I use that paragraph, I follow MPEP 706 and suggest what language would capture the feature he has expressed he is seeking to capture. That’s not what Kappos, or you, are asking here though. You’re not seeking me to help you be a good scrivener, and help you properly express the idea you have. What you’re asking for is for me to come up with the idea.

                You really don’t understand your job or the law, do you? The applicant invented what is in the specification.

                I understand the law better than most, apparently. Let’s use the correct terminology here: What the applicant does is describe elements, and how elements are put together in an enabling fashion to form a structure that he hopes I will deem an invention. When he submits that application he has posited a structure, by his spec and claims, and I pass judgment upon that structure. I do.

                Once that fails, and Kappos suggests I “seek out allowable subject matter” or, my personal favorite, when an attorney asks me “Do you see anything that can move us to patentability?” What you’re really saying is “Here, here are some well-described blocks. My applicant apparently assembled these blocks into an obvious shape. Could you please, post-filing, after two years have passed and you’ve done a search, reassemble these blocks into a shape that would have been non-obvious at the time of filing?” There’s three problems with that 1) at that point I am the one doing the inventing, not your client, 2) The invention is occurring two years after the filing date, 3) it almost certainly is using hindsight bias.

                You yourself just (correctly) said in another post that many inventions occur using only well-known things but assembling them in a particular manner. But you’re asking me to choose the features and do the assembling, often by picking words out of the spec which there’s no evidence were ever posited as being used together, when all your “inventor” did was describe things that were well-known (which literally any m*ron can do, as even you’re doing the writing for him) and now you leave the inventing up to me? Add me to the ADS, then we’ll talk.

                Anyone can drive construction materials up to a vacant lot and tell someone else to build something. 112, 1st requires that your guy be the guy who designs the non-obvious house, and that he prove that he designed it at the time of filing.

                You guys must have a lot of time on your hands to come up with these silly examples.

                The example is not as silly as you think, clearly you lack the…creativity of some of your colleagues. When you submit a document describing a handful of features and ask me to find something nonobvious, it’s no different than submitting an encyclopedia and telling me to invent, you’ve just given me fewer “known” blocks to play with. Such a mean thing to do to your inventor. People who are more creative than you have tried to take that game and go pro with it. And yes, creative is the nice word for it.

                Regardless, this type of examination reduces pendency and reduces the total amount of work that you perform.

                You’re half right. Guess which half. Let me tell you what I hear from that: “I am given a set number of claims before I have to pay extra. I am the master of my claiming, and while I could claim structures with particularity (kinda a requirement, btw) I choose to claim functionally and broadly in the hopes that my functional language can sneak around any prior art you have. Once I’ve run out of claims, and without paying for more, I would like you to do my job of claim creation and spot me some free claims by searching the particular structures and unclaimed features in my spec. Don’t let the fact that the spec contains no suggestion of combining Feature A and Feature B into AB; search A, B and AB, and inform me of it, so that my client and I can have a discussion about possibly claiming scope ABprime to see if we can get him a larger scope. Definitely definitely create completely different invention C if the words are in there. Ignore that all of that flies in the face of 112, 1st, which is something you’re supposed to uphold. Ignore the fact that while you are doing all this thinking and searching that I will merely take under advisement, you still have a production and docket management clock that won’t stop because you have an unfiled-yet-fileable case you’re holding on to so you can go on this sojourn. And if you do get to a scope I’m willing to accept, be happy that in exchange for searching all those other spec things that didn’t end up in the final claim (and which I may never have submitted as work for you to do) you will receive less overall credit. But hey, it helps the office’s pendancy and makes my job easier.”

                Consider, instead, my point of view: The attorney is being paid, better than an Examiner, to search applicant’s spec and present claims. The attorney has access to his client, and therefore enjoys the systemic benefit of knowing beforehand what scopes would be acceptable or not. The attorney either wrote or is at least charged with constructive knowledge of the entire document. If the attorney never submits a feature in the claims, I never have to search it. If it takes him two RCEs to get to the same properly allowable scope, I will receive three times the production credit than if I took it upon myself to find that scope before the first action, it will be less overall searching (as you can’t have more searching than “the entire document”) and it will not negatively impact my docket management (as I’ve broken the work into multiple chunks rather than tearing the whole thing off at once, which is more amenable to my score). Add to this that if I do search the spec and send him some scopes, he often does not take it, and chooses to submit other scopes. Add to this that if I tell him in an interview that I will find something, he submits it anyway because his client wants to see it.

                Now, in light of the strong motivation the above paragraph provides, the extremely minor negative (I may have to respond to some arguments on other scopes along the way, trivial compared to the search requirement), and in light of the fact that you haven’t pointed to where in the MPEP it says I must do your job for you, and further in view of the fact that nobody can realistically determine if I was doing that function even if it was my job, and that the means by which I am evaluated are only negatively impacted by doing what you say, what is the motivation for me to follow your suggestion? The office’s pendancy numbers? An examiner will care about them when the office creates a benefit for lowering them, but I don’t see that forthcoming.

                I’ll meet you half way: You create a system whereby me getting an allowance early on gives me a credit-to-work ratio comparable with the credit-to-work I would have gotten if I just let you stumble around, and I will consider doing your job for you and let you keep both your salary and your unused RCE fees as a bonus. How you’re going to approximate that, I have no clue. How you’re going to motivate the office to turn down free money when you just got through increasing the credit they give their employees (and thus their pay) with no corresponding increase in fees (still the same initial filing fee) – also a mystery. Until then, I will do the job I was hired for, ignore the career advice from people who are not in my position and don’t understand what my job requests of me and how I am evaluated, and choose to not shoot myself in the foot.

              5. Very interesting assertion. You should bounce that one off Billy and his cohort of “the invention r the claim!”
                There is a difference between the disclosed invention(s) and the claimed invention — not necessarily one and the same — although the claimed invention has to be a subset of the disclosed invention(s).

                Wasted time according to the current search trainers. Wasted time.
                Keep doing what you are doing, and you’ll keep getting what you are getting. Perhaps the current search trainers are not part of the solution but part of the problem regarding pendency?

              6. directed to such patentable subject matter
                Remember, the patentable subject matter is the claimed invention, as a whole — not just certain “elements.” As I said, you first need to get an idea as to what the applicant thinks he invented, look at the claims, and then look at the prior art you can apply against the claims. After doing that, if you think that the prior art doesn’t teach the patentable subject matter but for omission of certain elements, then you should consider that when doing your search and/or making your rejection.

                What you’re asking for is for me to come up with the idea.
                Hardly … the idea is already in the specification. We cannot reach outside the specification. What I’m asking that if claims don’t properly draw the line between the “idea” (or however you want to put it) and the prior art, then help out if you can. This is called being proactive — and it WILL help pendency.

                at that point I am the one doing the inventing, not your client
                You really have no clue, do you? I suggest you read some case law as to what it means to be an inventor. There is a quite bit out there. After doing your homework (and with your tail tucked in between your leg), then you can explain to us all how silly your comment is.

                my personal favorite, when an attorney asks me “Do you see anything that can move us to patentability?”
                Although I rarely do it — as I can almost always find something in the specification that is patentable over the applied prior art — that question does elicit some positive responses. What you don’t get is that if I take the same specification to 100 different examiners I may not get 100 different lines of what is and isn’t patentable, but I’ll likely get a double digit number of lines. I don’t work with just 1 examiner — I work with hundreds — as I’m sure many other patent attorneys do as well. Frankly, I don’t know where you will draw the line. If I (or another attorney) is asking you that question, it is because we don’t know and we are asking you to collaborate. Your expressed (dismissive) response to that question is why we have a strong distaste for the USPTO and their unprofessional attitude. This is not supposed to be an adversarial process.

                I understand the law better than most, apparently.
                A low bar at the USPTO.

                further in view of the fact that nobody can realistically determine if I was doing that function even if it was my job
                A true professional [/eye roll]

                I will do the job I was hired for
                Weren’t we talking about ethics at some point? There is a difference between doing the job you were hired for and doing a good job. A professional does a good job … a worker bee does the job they were hired to do.

              7. You really have no clue, do you? I suggest you read some case law as to what it means to be an inventor. There is a quite bit out there. After doing your homework (and with your tail tucked in between your leg), then you can explain to us all how silly your comment is.

                You should do the same, I’ll give you a clue you’ve apparently missed: 103 is not the only standard that governs an allowable claim, and asking me to dream up a structure – even if it’s within the four corners of a submitted document and which beats the cited prior art – that your client did not posit at the time of filing is a death knell to the claim. Written Description is not a matter of matching words in a claim with words in a spec.

                Remember, the patentable subject matter is the claimed invention, as a whole — not just certain “elements.”

                Hey, you’ve figured out step one, you might want to extrapolate what that truth means for non-103 rejections.

                This is called being proactive — and it WILL help pendency.

                Can’t help but notice you said not a lick about the MPEP citation or the practical effects of your suggestion on my job. Good for you on that.

                Your expressed (dismissive) response to that question is why we have a strong distaste for the USPTO and their unprofessional attitude. This is not supposed to be an adversarial process.

                Let’s be clear here, since I don’t want to be painted with the wrong brush. The office could, if it so chose, dedicate a portion of its examining corp to essentially be patent public defenders – people who would help inventors prepare an application and spar with the other members of this office over whether the claims are allowable. The office has not chosen to do so. If the office DID choose to do so, I would bet there would be no greater roadblock than your bar, as nothing would be a greater threat to your fees than giving someone a cheap or free public option to speak for their patenting rights the same way we give a public option to speak for their liberty. Instead, when an applicant calls up the office seeking support, the sole act taken by the office is to direct them to a roster of skilled private experts who are trained to assist them and who are well compensated for doing so.

                That sole office being dedicated to you, when you step before the office and attempt to remove something from the public domain, I stand as the sole voice of the public, who makes sure that only once applicant has passed the requirements of the statutes does he receive his patent. My duty is to pass judgment on the claims before me and make all rejections I believe are reasonable to make. But someone, and you know who it is, has put it into your head that I should forsake my job of protector of the public and double up on the representation of the client. I have, as shown in 706 and elsewhere, a duty to try and give effect to the arguments you raise on the claims you submit, and to fairly assist you in the steps you wish to take in the prosecution before this office, because I serve the public and your client is a member of the public. But it is not my job to write the claims, raise the argument or direct the prosecution of the application for the same reason I can’t even talk to your client – Your duty is simply not my duty, and there is (despite what Kappos says) a pretty clear dividing line that I can’t cross over. I am exactly like any other prosecutor making an argument – I make sure you get due process and I don’t act unjustly toward your inventor. But that duty simply does not extend to me doing it FOR you in the same way that a states attorney does not begin making the defense’s case just because the defense begins to flounder.

                So long as you don’t ask me to do things outside of my job (which should be easy to figure out, as they’re things you’re being paid for) I have no problem with you no matter what else you do. I’ve complained about people filing many RCEs on what I consider a dead case on this thread, but while I think the rule should change I don’t begrudge the attorney for taking advantage of the (lack of) rule. Submit 10 IDSes, file a 50pg amendment and I’ll be annoyed, but I’ll admit you can do it. Tell me that your client wants a patent to issue and to find out what claim would get there, or ask me to search something you can’t bother to pay what I’m sure amounts to a pittance to claim – now we’ve got an issue, as that’s an attempt to foist off some of your duty onto me. When that happens, I’m going to push back, and I believe I’m right to.

                This is not supposed to be an adversarial process.

                In an ideal world, sure. But there are obviously going to be scopes too narrow for your client to accept and scopes too broad for my boss to accept. It’s not personal, but don’t pretend it’s not adversarial. You want to remove something from the public field. We either don’t, or don’t want it to be that much.

                I understand the law better than most, apparently.
                A low bar at the USPTO.

                And on this blog as well.

                A true professional

                Certainly as a lawyer you know that when there is no criteria for evaluation, that is evidence its simply not part of the person’s duties. I just put a finer point on it – don’t expect someone to do something that does hurt the things they’re evaluated on to achieve something they aren’t evaluated on.

                Weren’t we talking about ethics at some point? There is a difference between doing the job you were hired for and doing a good job. A professional does a good job … a worker bee does the job they were hired to do.

                Doing the job you were hired for well is doing a good job. The only reason you’re arguing differently is because you want me to do something for you. If we were to turn it around, and I were to throw the databases at you and tell you to personally (you, not your assistant, not anyone else) pre-search and submit well-reading art when you submitted claims to me because that would reduce both the wait and the total RCE cost, and is the difference between doing the job you’re hired for and doing “a good job” for your client, I hardly think you would do anything but scoff at the notion that is the dividing line for your professionalism. I know if an attorney called me up and said he wanted an in-person interview solely so he could search his case for an hour, I’d let him have it. For all I know they have our databases in the resource room, free to all members of the public. Go on, give it a shot! Be professional, not a worker bee.

              8. Random Examiner,

                You have some points in there, but they are largely drowned out by your whining.

                You also ignore the valid counterpoints that Oh no has presented to you – You would do well to at least acknowledge and integrate those points into your understanding of what is your job (and what was your job prior to Kappos, as you seem to think that he changed something that he did not in fact change).

            2. “If that were the rule I don’t know why you just don’t submit a giant spec listing all the known features of everything and tell me to pick and choose whatever I think makes a non-obvious combination?”

              That’s what folks like anon already belieb that the current system is all about! Cus ‘Merica!

      6. No … because it is easily gamed

        By who? The people who would benefit from the gaming (the directors and senior management) lack the ability to game it, and the people who have the ability (the examiners) lack the motivation, because it results in second non-finals, which is unpaid work. I suppose if you got the two to collude, and got thousands of college-educated people to act against their interests, sure it could be done.

        I have no doubt it occurs, but rarely, and only at particular times of the year, but not generally, and certainly not routinely by enough people to constitute a difference.

        LOL — why is it that more than 50% of appeals never make it to the PTAB? Is it because applicants are stubborn or that the rejections were bad in the first place?

        Someone (perhaps you?) made a similar statement about this before. So I went and looked up our statistics for my TC. The statistics I found were appeal briefs filed (by examiner), allowances after an appeal was filed, and reopenings after final.

        Even if you assumed 1) every reopening after final as being a reopening after an appeal filed (which ignores a reopening from an after final, almost certainly the majority cause) and 2) all of those reopenings are because the art was defective (the conference concluded it was a bad rejection rather than not being the strongest rejection, or not being a difference worth sending to the board; this I have no way to measure), it would still be over 50% that go to PTAB. If you ignored reopenings that led to a second non-final rejection (i.e. if you measure appeals that go to the board versus appeal conferences that result in an allowance, which is probably the best indicator of it being an allowance-decisive rejection), then 75% of those go to the board.

        While pendency is important — don’t let the tail wag the dog. In this case the ‘dog’ is that patents get issued on deserving applications and denied on underserving applications.

        At some point the time for argument is over though – if you haven’t put forth an argument you feel good enough to take to appeals within 6 tries you’re either not going to get one or you’re not trying. Surely the only time you can’t say that an application is “undeserving” is when the applicant thinks so, right?

        BTW — until the patent application is abandoned, it is still pending — no misrepresentation.

        Technically not, which is the point isn’t it? Applicant wants to secure more funding, or scare competitors, which he won’t get if his application goes abandoned, so he keeps alive a braindead app to avoid committing fraud. But make no mistake, he’s skirting fraud. He’s paying a yearly tax to quasi enjoy benefits that he’s not entitled to. The fact that the office puts itself in the position of abetting it is a problem, don’t you think?

        As for your other point, you do realize that the applicant PAYS for an examination.

        Of course, and that’s why the office allows it go on. We’ll happily take anyone’s money. The fact that it’s profitable for us (and thus reflects positively on us) is a great reason for a private company to do something, but not so much a public charge, especially when there are other, possibly deserving allowances out there.

        101 and 112 are technical issues that shouldn’t prevent 99.9% of patents from issuing. As such, YOU should be focusing most of your time on 102/103.

        Simply factually incorrect man. 112, 1st is designed to be the means by which overbroad scopes are policed. The fact that the office only polices, and has allowed the public to miscomprehend, 103 as a scope boundary is the biggest failure of the office. I can’t even imagine how one could argue 101 is a mere technical issue in light of the constant barrage of supreme court opinion saying otherwise and the collective freakout of attorneys that the sky is falling whenever the court speaks.

        I’ll go so far as to say this: I am certain a double digit percentage of issued, independent claims in the computer software field have a 101 or 112 problem. I would not be surprised if it was a majority.

        Of course, you’ve already (hopefully) read the application and done the search. As such, your count/work ratio after an RCE is much higher than a FAOM.

        Exactly, which is why it really shouldn’t hurt to put in a rule that would allow me to dispose of zombie applications, as the natural motivation is against it’s use, right?

        There is no good policy reason, which overrides the policy reasons underlying the patent system, for denying people a second or third or fourth or nth chance at getting a patent when they are paying for the examination. The purpose of your job is not to reduce pendency but to correctly administer the patent laws.

        The situation is closer to availing yourself of the courts, and while everyone has a right to the courts that right is not unlimited. Time (statute of limitations) and procedure (appeals running out) will eventually bar an issue from further litigation. That’s the “real world” of dispute resolution – at some point you have to put forward your best argument and it either stands or falls, because courts aren’t there just for fun, they’re there to do the job of dispute resolution. There would be no point to courts without stare decisis. I don’t think RCEs should be eliminated, but what I am saying is when we’re on the fourth RCE and the case has been examined without appeals for three years, it’s probably time to put it to bed. Give them another amendment to put the claims however they want, let them bring up any argument they want, but then it either gets abandoned or goes up the appeal chain.

        Also where’s the counter-considerations in your balancing there? What about the right of the actual inventor who loses time and money waiting for his patent to be examined because some other guy is on his “third or fouth or nth” go around? Does the office and the public not owe him something too? When you fail your driver’s license you don’t get to hop right back to the front and go again – you have to sit through the line again. Yet office procedures would allow that bad driver to constantly jump to the front in between tests, holding up the line for actual, decent drivers. It’s neither efficient, nor particularly fair. How about this, after your third RCE, you can keep filing, but rather than going straight to the continuing new docket, your case won’t be docketed to the Examiner until they’ve finished their current new docket (15ish non-FOAMed cases)?

        I feel like I’m suggesting solutions with a small scope and with a lot of positives here, and I’m not understanding the blowback. Of course, I guess I should consider my audience as well, as you guys have no incentive to agree with me.

        1. The people who would benefit from the gaming (the directors and senior management) lack the ability to game it
          ?? They set the priorities. Who changes how counts are doled out? Who changed the way RCEs are handled?

          So I went and looked up our statistics for my TC.
          The USPTO published those statistics in a Federal Register notice (or two). The numbers varied from year to year but the average was around 50%. Also, anything that doesn’t go to the Board is a bad rejection regardless of whether or not the claim was allowed immediately after appeal.

          The situation is closer to availing yourself of the courts, and while everyone has a right to the courts that right is not unlimited.
          No. Wrong. You cannot change the facts once you go to court. However, you can change the scope of your claims, which is Applicants’ right. They are not the same.

          what I am saying is when we’re on the fourth RCE and the case has been examined without appeals for three years, it’s probably time to put it to bed.
          Ah yes … the let’s outlast the applicant strategy. Very prevalent in the 3600 group. I’ve taken over cases that had double digits OAs (with many RCEs), broadened the claim language, appealed, and then got my allowance. Why? Because I wouldn’t acquiesce to a bad rejection. I’ve investigated some particularly bad examiners and found at least two (my search was not large by any stretch) that basically won’t allow an application unless they are reversed at the board.

          I feel like I’m suggesting solutions with a small scope and with a lot of positives here, and I’m not understanding the blowback.
          You don’t see the USPTO cr p that we see every day. Perhaps your AU is run fairly and efficiently. However, that is not the experience of those of us that deal why many different AUs across different tech centers.

          Also, you still don’t get that Applicants have a statutory entitlement to a patent if they are deserving of one. Applicants have already disclosed their invention and paid for an examination — their part of the quid pro quo. We just want the agency to do the task appointed to it.

          1. “Also, you still don’t get that Applicants have a statutory entitlement to a patent if they are deserving of one.”

            Actually there is no provision about them needing to be “deserving” of one. If we had such a provision there would be much less angst involved in the patent system imo.

            Though I’m all about spreading the word of the patent system being an entitlement system. So few people understand this, or understand it explicitly. And yet it explains so much of why there are so many differences of opinion between folks.

            “We just want the agency to do the task appointed to it.”

            Precisely. But the people at the agency want to see justice done. And those ends are at odds.

            1. Actually there is no provision about them needing to be “deserving” of one. If we had such a provision there would be much less angst involved in the patent system imo.

              /face palm

          2. ?? They set the priorities. Who changes how counts are doled out? Who changed the way RCEs are handled?

            A strong argument if it had a factual basis underpinning it. If the “shell game” as you put it is to hide the long pendancy by shifting first actions to RCEs, you would expect very high credit for a first action (good carrot) and very low credit for an RCE (hard stick) – that is factually not the case. Further, the RCE has the built-in advantage that you’ve already searched the major facets of the invention (less searching) and the only thing left to add are particular things (higher odds of allowance). The system as currently comprised rewards examiners who do RCEs, not examiners who do new cases and let RCEs pile up. The decrease in the pendancy chart above shows a real gain by the office, not due to any particularly good leadership or examiner corp action, might I add, but by simple brute force of throwing more examiners at the problem.

            Also, anything that doesn’t go to the Board is a bad rejection regardless of whether or not the claim was allowed immediately after appeal.

            I agree with you inasmuch as there’s justification for not sifting out the second non-finals, which is why I gave you both numbers – to be fair. I disagree with you that the only reason rejections don’t go to the board is because they are defective. A claim goes to the board based upon a ratio of risk versus strength of the rejection. If the rejection is weak, but it’s to a scope close to what we might allow anyway, that claim may go to the board (counted as a brief) or go to allowance (allowance after final) based largely upon the SPE (or if he trusts the junior – whether the junior wants to fill out brief or allowance paperwork). There’s no hard rule there and it’s SPE-dependent, a confounding variable. If a rejection is pretty good, but it’s to a super broad claim we can’t risk allowing, that claim will go back for a second non-final. That’s not a statement that the rejection was defective, that’s a statement that the conference is not willing to settle for that risk:reward ratio when a better one is out there (an unfortunate position for the member that actually has to do that second non-final, might I add).

            Contrast that with the other part of post-final 2nd NFs: a NF that follows the sole examiner’s determination from an after final that his rejection is defective – those always mean there’s a defective rejection, and they are a confounding variable. That’s why the three numbers (second nf after final, allowance after final, brief) are insufficient to tell the whole story.

            No. Wrong. You cannot change the facts once you go to court. However, you can change the scope of your claims, which is Applicants’ right. They are not the same.

            One can add any number of theories of liability to a case, and can take any number of dismissals one wants, and refile (so long as you’re within the statute of limitations) using the same theory or a different theory of liability, changing which facts constitute a win. You can’t change the “facts” (the spec as filed) either, but you can change your theory of liabilty (claims), to see what constitutes a win.

            Why are you making this argument when you know that the next level of appeal beyond the board is to step into the actual court system? How can you possibly argue it’s not like a court when the very outcome of the process resolves in you ending up in court? Just like you need not wait until appeals for the defendant to say “hey this filing here is frivolous”, the examiner should be given a mechanism by which to challenge whether what is being put before him hasn’t been rendered frivolous by the preceding examination.

            Ah yes … the let’s outlast the applicant strategy.

            Examiners lack the ability to execute this strategy, as we can’t control whether you want to seek a RCE and you’re always capable of appealing. You control the means of continuing the game and the key to summarily ending it. And to what end? By not giving an allowance what does the Examiner earn? We don’t get a medal when we “outlast” you and you abandon, they just reach into a stack which is, for practical purposes, infinitely large and hand us another case. No means, no motivation.

            If by outlast you mean “File rejection after rejection, each of which is sufficiently good that the applicant hasn’t ever appealed”, that sounds less like an “outlast” strategy and more like doing my job. I suppose you’re not going to give me that sometimes, just maybe sometimes it’s the applicant doing the reverse – keeping a braindead case alive for reasons that have nothing to do with the prosecution itself? Maybe we ought to shut those down?

            You don’t see the USPTO cr p that we see every day. Perhaps your AU is run fairly and efficiently. However, that is not the experience of those of us

            You want an examination, you get an examination. You don’t like the examination, we give you a means of appeal. If you don’t take that, I really don’t know what to say. There is zero incentive or motivation, zero, for an examiner not giving an allowance to a scope he thinks is allowable. An allowance is ALWAYS the best credit-to-work ratio for an examiner. It’s less paperwork and it’s a lot easier to simply say yes than explain why 30-50 elements are each a no. Moreover, if the scope is truly allowable, that rejection is, by definition, the hardest rejection to uphold, requiring the most work to defend at a time when the delta between credit for giving in versus loss for being stubborn is at its maximum. If you’re getting rejected, it’s because we take our job of protecting the public from an improper encroachment seriously, and we think the submitted claims are rejectable.

            Are we legit wrong sometimes? Sure, of course. We’re people operating, by definition, at the edge of a technical field, many of us with scant legal teaching, forced to routinely prove cases against defendants who both control the crime scene and get to write the elements of the crime, and sometimes we get things wrong. If that’s what constitutes cr*p for you…we’re sorry? If by cr*p you mean we’re intentionally operating “unfairly” and trying to screw with you – highly unlikely. If you had option A and option B, and A was clearly better for you personally in every circumstance, you’d have to really hate someone to go for B, don’t you think? We, like attorneys, handle upwards of 50 cases at once – one particular applicant likely isn’t even on our radar, let alone despised enough that we’d rather make life harder for us just to make life harder for you.

            1. A strong argument if it had a factual basis underpinning it.
              I asked the questions of “They set the priorities. Who changes how counts are doled out? Who changed the way RCEs are handled?.” They are not arguments, they are questions. So, I’ll ask again, who makes those decisions?

              If a rejection is pretty good, but it’s to a super broad claim we can’t risk allowing, that claim will go back for a second non-final. That’s not a statement that the rejection was defective, that’s a statement that the conference is not willing to settle for that risk:reward ratio when a better one is out there (an unfortunate position for the member that actually has to do that second non-final, might I add).
              A rejection is supposed to be made with the references at his or her command? Are you saying that the USPTO regularly doesn’t do this? They hold their best references in reserve, for example, to extract a couple RCE payments? Sounds like a good way to decrease pendency there.

              Examiners lack the ability to execute this strategy, as we can’t control whether you want to seek a RCE and you’re always capable of appealing.
              Huh? The Board doesn’t allow applications — only the examiner does. If the examiner (particularly a primary) doesn’t want to allow the application, they don’t have to. Hence, Examiner do have the ability to execute this strategy.

              No means, no motivation.
              LOL. Go to the 3600 group and try to start issuing NOAs on deserving patents. You’ll change your tune quickly. It is plain as day that management (at the top of the USPTO) dictates ease of allowances.

              keeping a braindead case alive for reasons that have nothing to do with the prosecution itself? Maybe we ought to shut those down?
              First, it costs the applicant money to do so — something an examiner never has to worry about. Second, I (and most attorneys I know) will counsel a client not to continue prosecution if we think it is impossible (or nearly so) to obtain a patent. However, when the client is paying for an examination that is their right to do so. Third, those cases are few and far between.

              one particular applicant likely isn’t even on our radar, let alone despised enough that we’d rather make life harder for us just to make life harder for you
              Except it is easier when all applicants are deemed evil so you don’t have to single one out — you just treat them all badly. The number of independent claims that I have had allowed (with no amendments) that were initially rejected easily numbers in the several hundreds. You guys get things wrong — a LOT.

              1. So, I’ll ask again, who makes those decisions?

                The directors of course. But the question was asked in the larger context of gaming the system, so when you say the system is gamed, and I tell you the system is set up to do the opposite of what would be gaming, what is the point you’re trying to make? That the executive level makes decisions which control the motivation of the examining corp and thus it theoretically could be gamed? Okay, I’m sure it could. But given it’s not gaming with respect to what we’re talking about, what does that have to do with pendancy of tea in china?

                Are you saying that the USPTO regularly doesn’t do this? They hold their best references in reserve, for example, to extract a couple RCE payments?

                You’re relatively new here, but I’ve spoken on this before: Because the office fails to teach 112 correctly, the sole means to the average examiner of policing an overbroad scope is via 103. When you only use 103 to move toward an allowable scope (which is in 90% of cases) you have to submit an art package that necessarily explains how the overbroad limitation is overbroad, as this will force them to change it.

                Because few examiners (or many attorneys even) understand 101/112, the “best art” that reads upon the final/allowable claim is not the “best art” for moving toward that final claim.

                If your spec discusses using an orange but your claim has a limitation of “fruit” your bad examiner is going to search for, find, and cite the word “fruit.” If the examiner discusses the case with his SPE and the SPE wants “orange” in the claim, this examiner basically has to hope that this limitation is the one limitation out of all of them you choose to narrow.

                Your average examiner is going to cite a pear and state that a pear is also a fruit, because that’s what forces you to move off the overbroad fruit language. You know you can’t attack the “pear is a fruit” logic, and your client knows his invention uses an orange, so he looks at the reference and says “this is nothing like my invention!” and the claim gets changed.

                Your better examiner will cite an orange, state that an orange is a fruit and then make an enablement rejection and demand you show him where in your spec you discuss pears being a substitute.

                Huh? The Board doesn’t allow applications — only the examiner does.

                The standard for a conference is “Are were comfortable with allowing if we are reversed?” i.e. While the rules don’t require us to immediately allow following a reversal, that is the de facto standard for getting to the board in the first place.

                Go to the 3600 group and try to start issuing NOAs on deserving patents.

                I’m not in 3600 and its not my place to speak for them, but it wouldn’t surprise me if every applicant there is a modified Ariad, as it’s simply too commercially lucrative. Here’s my perspective: If the attorneys who routinely post on this board (and I don’t know to count you amongst them yet) are indicative of the general notion of “deserving” within the legal community (i.e. they are guided by poorly decided CAFC cases rather than historical Supreme Court cases), the calibration of the word “deserving” is highly suspect. The CAFC is simply not very good at its job, and even if you didn’t hold that opinion (which I could certainly understand) you’d have to admit that Supreme Court comes in 9-0 against them a lot, which seems to lead to a lot of freak out on this board. That being said, I’m not making the connection on how “management dictating ease of allowances” affects whether an examiner can “stall” or not. It doesn’t affect means, and if you pull an examiner with a difficult SPE he’s not motivated by “stalling”, he legit has a higher standard. That may be fine or wrong, but that’s not a stalling motivation, right?

                First, it costs the applicant money to do so — something an examiner never has to worry about. Second, I (and most attorneys I know) will counsel a client not to continue prosecution if we think it is impossible (or nearly so) to obtain a patent. However, when the client is paying for an examination that is their right to do so. Third, those cases are few and far between.

                1- Sure, but it must be worth it for them, or they’d stop.
                2- Right.
                3- Without taking issue with your assumption, that sounds like all the more reason we could make such a rule.

                Except it is easier when all applicants are deemed evil so you don’t have to single one out — you just treat them all badly.

                The same logic holds and doubly so – I don’t know even a substantial portion of the office, so I could buy that there are people who find everyone “evil”, if it weren’t for the fact that intentionally choosing to withhold an allowable scope makes one’s life harder. You would have to be so interested in making, now not just one, but everyone’s life harder that you’re willing to make your own harder to do it.

                See I can buy that a particular person doesn’t like you, or your applicant, or your firm because you did some acute thing and set him off. So I can buy an improper rejection happening once. I can’t buy him waging a sustained war-like scenario against you, because that’s a systemic pain in his butt to keep doing it. If you say “well maybe he hates everyone” I can buy that, but now you’re waging the same war multiple times over on a constant basis. The person would literally have to be insane.

                The number of independent claims that I have had allowed (with no amendments) that were initially rejected easily numbers in the several hundreds.

                I don’t know if you practice solely in 3600, but in my experience outside of it virtually every independent claim is overbroad because every attorney seems to be trained by the same books which are simply wrong. I have had people explain to me on this board what they do when the client comes in, how they think about things and how they write claims off that, and I know for a fact that results in improper scopes and even entirely invalid specs, which is consistent with what I see. The fact that my coworkers fail to catch it, or to effectively pin you once they do, is neither here nor there. If you want a brighter/better examining corp you’re either going to have to achieve better internal teaching or spend more money or time, but that doesn’t go to the question of whether we’re “out to get” someone.

    4. Some ideas on improving examination:

      1. Build in a 2nd search to initial examination, the current lack of which forces RCEs.
      2. Take up RCEs immediately, but make RCEs increasingly expensive. The RCE can be viewed as a continuation, but with an additional fee to take the case out of order.
      3. Prohibit RCEs after the issue fee has been paid.
      4. Encourage restrictions to keep the number of claims examined small.
      5. Repeal Rule 56 and prohibit the filing of IDSs. Prior Art can be discussed in the (background section of the) patent.

      Give examiner’s credit for the work they actually do, not for dispositions.

      As for bonuses, I would add an a bonus tied to performance: If the examiner is sustained on a final appeal, or if the patent is litigated (including IPRs) and not held invalid in whole or in part, the examiner should receive a very substantial bonus regardless of whether he or she is still with the PTO. On the flip side, if the examiner is reversed or if the patent is held invalid, then this should prevent any bonus from being allowed for “wins” in that fiscal year.

      1. “2. Take up RCEs immediately, but make RCEs increasingly expensive. The RCE can be viewed as a continuation, but with an additional fee to take the case out of order.”

        Eh, just the ones people want to pay extra for.

        I don’t really see the point in 3. We use that for legit purposes currently. I don’t see how banzoring it would help things.

        5 is just … lol?

        1. 6, the ROW does quite well without a rule 56 or IDSs. You want to know why?

          Just think.

          The whole IDS system has become a joke. Moreover, Rule 56 is ultra vires.

          1. yeah I mean that’s fine to me re rces. I don’t really much care, I don’t have a huge backlog of rce’s.

            If it were me trying to “clean them out” as a director I’d simply train the examiners and ensure the case is disposed of, finally in like nearly all cases. I would utilize aggressive use of interviews and star fruits along with a handful of other stuff. Let’s be honest, like 70-90% of RCE’s are at least in part premised on some claim construction issue having to have been worked out during the pros or completely nullified via huge amendment, and all that can be done over the phone, usually without a huge amendment. Another like 30% are premised at least in part on the office not understanding technical fact x that the applicant often already knows, and remains oddly mum about, and which is relevant to understanding the invention if not the claims. And at least 50% (and probably more) could have been resolved before the RCE happened by the examiner treating the applicant like a pro se and suggesting an amendment. Oh and mandating against the whole “you can’t allow anything/any first action” that apparently still does exist in some corners of the office I’ve heard of late (beyond maybe newbies, though maybe for newbies as well). Also while reminding all examiners that we’re simply administering a government entitlement program (<that last bit in and of itself would probably cut the RCE backlog in half while perhaps also driving congress so insane they'd get off their duff).

            So if I were for srs about the RCE backlog then I'd go down those routes. If I wasn't so for srs then I'd just stay the good ol' course. Note ol David K was making some progress on some of these fronts before he just up and left.

            1. 6, I personally think the first action should construe the claims as written — as would be understood by one of ordinary skill without reading the spec. That is why the first action should be conducted without regard to the spec., just the claims.

              The applicant then responds with clarifications.

              That is when we must have the second search — based on the clarified claims.

              If we do not do it this way, the claims themselves can and many times will be ambiguous.

              1. “The applicant then responds with clarifications.

                That is when we must have the second search — based on the clarified claims.”

                Seems like a waste of a round to me. Star Fruits the whole thing away prior to first action imo.

                “If we do not do it this way, the claims themselves can and many times will be ambiguous.”

                We’ve got new and improved 112, ambiguity shouldn’t be so much of an issue any longer once the corps gets on board.

              2. Actually, 6, it depends on the width of the bell curve. Obviously, the director should figure out how to make this as narrow as possible so that the six sigma mark could be as close to 100 as possible.

              3. Ned,

                AOOTWMD does not work for Malcolm – why do you think it would work for you?

                You actually advocated an examiner waste everyone’s time by not reading the specification. What type of special bozo does not even know that claims are to be read as by a person having ordinary skill in the art to which the invention pertains, having been informed by the specification?

                Tell me, please – you know this, right?

            2. I think the director’s job number 1 is to examine patents so that they are valid.

              Assume that 100 represents a patent that claims 100% of its valid scope. If one aims for this target, 50% of all patents will be valid, the other 50% will be invalid.

              So this cannot be the right approach.

              Assume that 60 is a number where the patents that issue are valid to 6-sigma — the best estimate of true quality.

              Where should the director set his sights: 100 or 60?

              And, this discussion does suggest that the director’s performance should be judged by a different metric that any currently used by the PTO.

              1. “If one aims for this target, 50% of all patents will be valid, the other 50% will be invalid.”

                lol wut? If I’m doing it I see no reason why 90+% shouldn’t be “valid”.

              2. “Assume that 60 is a number where the patents that issue are valid to 6-sigma — the best estimate of true quality.

                Where should the director set his sights: 100 or 60?”

                I think you’re bad at stat bro.

            3. “I would utilize aggressive use of interviews and star fruits along with a handful of other stuff.”

              Lulz

              What color is the sky in your world?

            4. Anon, I assume you are familiar with In re Morris. When I advocate here is pretty much the procedure as specified in that case. The examiner examines the claims the way they are written giving the claim terms their meaning as would one of ordinary skill in the art. It is up to the applicant to bring the examiner’s attention to usage of the claim term in the specification that is a variance from what one of ordinary skill in the art would understand the claim term to mean.

              The more you speak here, anon, the more you display your profound ignorance of the law and of conventional patent prosecution.

              1. Richard H. Stern, Ablondi, Foster, Sobin & Davidow, Washington, DC, for appellants. Of counsel are Bill D. McCarthy, Randall K. McCarthy, Phillip L. Free, Jr., McCarthy & Associates, Inc., Oklahoma City, OK, and Edward P. Heller, III, Seagate Technology, Inc., Scotts Valley, CA

                LOL – no thank you.

              2. What a charlie foxtrot of a case…

                That you attempt to use that case as your “reasoning” to not bother AT ALL with reading the specification prior to a first examination on the merits is absolutely abysmal.

              3. anon, you will note the case remains controlling law and is often cited by the PTO.

                You site the attorneys from the losing side who insisted that the PTO read the specification and confine its claim construction accordingly.

                Well, those attorneys lost. But, as you can see from this thread, the position they argued is your current position.

              4. You are doing that over-reading thing again, Ned (with your own case even!)

                and confine its claim construction accordingly

                I think you missed something here. No one said “confine.” However, there is a VERY real difference between not confine and not read.

                Criminy – I have to hold your hand through your own cases now.

    5. “At some point you have to tell an Applicant to put his best foot forward and either go to appeals on a rejection or let it abandon.”

      I for one would welcome an EPO style “summons to oral proceedings” being adopted by the USPTO.

      Examiners should be careful what they wish for though. If you had the ability to force applicants to appeal, or abandon, when they appeal you better understand the game is up. When the applicant appeals, you gotta answer. Not pull the old, “Oh, you’re appealing? Gee, you must be serious. Let me re-open and try to prevent this case from going to the Board and getting reversed.” shenanigans so many examiners love. Don’t forget, all of us practitioners that won’t hesitate to appeal know, for a fact, that in 75% of the cases in which a pre-appeal request and/or an appeal brief are filed, the examiner re-opens prosecution. (See Ron Katznelson’s work on this topic.) See 12/031,407 for example. (Not my case, BTW.)

      I have a case pending now in which I have filed two appeal briefs. The examiner has re-opened in response to both. (You can run, but you can’t hide Examiner Dehne.) So please stop with the “examiners need the power to force applicants to appeal or abandon” argument. From your posts you seem too intelligent and thoughtful to be making such an utterly ridiculous argument.

      1. From your posts you seem too intelligent and thoughtful to be making such an utterly ridiculous argument.

        I realize that you may have been being polite, but this is Random Examiner you are replying to.

  8. Time from filing to FOAM can be important for applicants who, for whatever reason, need “official” word about the potential patentability of their claims before making a decision to continue or pull the plug.

    Thanks for this chart, Dennis.

    1. MM, on “official word,” there is the PCT.

      One thing we could do is adopt the PCT approach and have a search conducted and published with the published application within 18 months of priority.

  9. What happened about 9/13 that has caused all trend lines to inch back upward?

    ;-)

    (led by the chem arts…)

    1. Interesting, as Malcolm and the Examiners do their usual bit of dust-kicking, a point of conversation based purely on the data presented gathers moss…

      Any thoughts (by anyone) on the apparent across-the-board-but-led-by-the-chem-arts- UPTICK in prosecution times?

  10. This is a bit of a shell game – fold into the picture the rest of the deck chairs on the other levels of the Titanic:

    Overall pendency including wait time after first response, RCE wait time, and Appeal wait time.

    1. I am skeptical too. There are just too many ways to fudge the numbers and my faith in the gen erators of the numbers is not stellar.

    2. That was my impression. Looks like they might be shifting some work to 2800 as well since the graph shows it going up.

    3. Still tho NWPA and anon, even if they are fudging the numbers, shell gaming etc. maybe the time to first action is actually an important thing to bring down.

      Though one thing we should bear in mind is that they stopped hiring so many examiners because they felt like things were getting under control.

      1. maybe the time to first action is actually an important thing to bring down
        It would be if they weren’t gaming the system elsewhere. Ultimately, time from filing to issuance is the only real number that counts.

        However, the time from a notice of appeal and to decision on appeal is revealing (as to the appeal backlog) because you cannot game that number.

        Getting a FOAM 2 weeks after filing doesn’t matter if the second action doesn’t come for 2 years after you file your response.

          1. That is a bingo in the sense that probably the only stats that matter are ones that take into account the entire life of the patent applications as any one measure can be fudged by hurting other measures.

        1. It does is you did an excellent job at time of filing and your invention sails right on through because it was clearly patentable (and you did good on formalities).

          1. Oh wait, what about that piece of 102 prior art that has a filing date 1 month earlier? You cannot cite it until it is published, which is 18 months from filing.

            For that reason alone, I suspect that the USPTO won’t drive down the FOAM number too much.

            It does is you did an excellent job at time of filing and your invention sails right on through because it was clearly patentable (and you did good on formalities).
            The only “excellent job” we can do is correctly guess at the claim scope. However, since we cannot know all the possible prior art at the time of filing (see my discussion immediately above), my excellent job is more based upon good luck in guessing than skill.

            However, even if I did correctly guess on claim scope, that rarely gets me a first action allowance. I’ve probably had at least over a hundred (if not two or three hundred) applications in which I had unamended independent claims allowed that were initially rejected (the number of dependent claims is much higher). It wasn’t like this 15 years ago, but today, examiners appear to be afraid of issuing first action allowances.

            1. “Oh wait, what about that piece of 102 prior art that has a filing date 1 month earlier? You cannot cite it until it is published, which is 18 months from filing.”

              I didn’t say that the world cannot throw a wrench in your works. It is entirely possible. Or you could have missed a 102b that the examiner finds. Neither of those or any other issues the world might throw at you lessens that this might be the most or one of the most important stats for various reasons.

              “For that reason alone, I suspect that the USPTO won’t drive down the FOAM number too much.”

              I see a 102e with a FD of one month prior like max twice a year.

              “The only “excellent job” we can do is correctly guess at the claim scope.”

              Technically you can include a broad variety of scopes and put a little note that says for us to call you if we find something allowable and allow it. At least in my art, it is not “that” hard to get a first action allowance if you really really want it.

              “I’ve probably had at least over a hundred (if not two or three hundred) applications in which I had unamended independent claims allowed that were initially rejected (the number of dependent claims is much higher).”

              Well I can’t speak to your softiewaftie claims.

              1. “I’ve practiced in the coatings technology field as well. They aren’t significantly better.”

                Interesting. Though I cannot particularly comment on the “coatings” field either though. Though I can say that the common factor here is not each individual examiner, it is you.

              2. Though I cannot particularly comment on the “coatings” field either though.
                Don’t be coy 6. You were much more forthcoming about your practice area in your early days. Some of us have long memories.

              3. “Don’t be coy 6. You were much more forthcoming about your practice area in your early days. Some of us have long memories.”

                The darling john?!?!?! Lol, I didn’t recognize you without your constant (mis)management.

                Surely I’ve done some apps involving “coating”, as in coating various specific things, bicycle parts etc. but I thought you meant like “coating coating” as in the “general” art of coating (we have one). I have done scarce few there.

              4. ““Don’t be coy 6. You were much more forthcoming about your practice area in your early days. Some of us have long memories.”

                The darling john?!?!?! Lol, I didn’t recognize you without your constant (mis)management.

                Surely I’ve done some apps involving “coating”, as in coating various specific things, bicycle parts etc. but I thought you meant like “coating coating” as in the “ge n eral” art of coating (we have one). I have done scarce few there.

                In any event, if you want to talk about the apps I’ve done that involved coating sure thing. There will undoubtably be many “unamendment inds and deps” that will eventually be allowed. That doesn’t really speak to the ease of getting it allowed the first time if you’d have had your sht together to begin with.

                “oh but but but if its an unamended claim then I was good from the get go” nah bro, you obviously were not. And there are several attorneys out there that have the ability of making their claims precisely to what they want them to be, in language specific enough to cover only that which they want to cover, and which examiners can understand the first time around and will not be able to “stretch” the art to fit.

                That said, if your “coating” art is one of these few remaining where nobody can allow on first action or whatever then I feel bad for you. I’m not yet a/the director. You’ll have to get me nominated before I can do anything for ya.

            2. B-b-b-but first action allowances are possible – for worthless overly detailed picture claims.

              The funny thing is, one option I discuss with clients is the approach of grabbing a quick first allowance with such a claim and continuing prosecution with more extensive protection on a continuation basis.

              (but fans of history should revisit the Tafas case and see that the mantra being espoused here is nothing new – just a divide and conquer, because surely, the ability to prosecute under continuations practice would be next on the hit list)

              WAKE UP PEOPLE.

              History repeats.

            3. The only “excellent job” we can do is correctly guess at the claim scope.

              When the Supreme Court keeps saying that patentability doesn’t depend on the draftsman’s skill, what do you think that means? This is textbook “only 103 matters” thinking. You’re going to get a lot of your claims invalidated.

  11. Is there any data that shows whether there is a correlation between pendency and during filing of extension fees vs. those that reply during the SSP? Obviously appeals to the PTAB take forever and those cases have much longer pendency, but can you prosecute an application diligently and shave off 6-12 months. My experience says, “kinda”, particularly by responding quickly to restrictions, but anecdotes are hard to trust.

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