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
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.
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.
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…
(starting at “This is an honest to goodness…” – the comments are mine – don’t want to put words in my pal Hal’s mouth)
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.
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?
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.
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?”
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.
Talk about non-sequitur rants….
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.
LOL – careful there Oh no – too much reason will make Malcolm go into an apoplectic rant of rage.
Oops. Too late.
Sometimes abc product has changed my life for the better.
/face palm
“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)
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.
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.
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?
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.
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.
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.
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.
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?
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.
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.
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.
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.
Billy: If I could report Malcolm, I would.
And then what, Billy?
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.
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?
“t. Because that exact mindset is what is causing the problem to begin with.”
How so, 6?
“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.
LOL – 6 just wants to soapbox (gee I’m shocked).
NWPA, on the lighter side of harsh: see Aug 3 panel at link to news.yahoo.com
“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.
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.
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.
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.
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.
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.
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?
“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?
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”?
I am suggesting exactly what I stated – the English too difficult for you?
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.
my posts are STRICTLY my personal views only.
No kidding, Billy.
LOL – another Malcolm self-FAIL moment (and one he is no doubt oblivious to)
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.
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.
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.
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.
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.
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.
I know right?
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.”
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.”
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.
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.
Oh no – thanks for pointing out the Tr011’s nonsense.
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?
LOL – because patents “sh1t” on the public, the “commune” as it were….
Malcolm, may I once again implore you to get into a field in which you can believe in the work product you produce?
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.
If it “costs” you the same amount of time to examine an RCE as it does a FAOM, then you are doing something drastically wrong.
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.
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.
Thanks again to you for starting the “consideration” in the first place.
Were you even aware of what you were doing?
“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”.
You miss the point of the comment 6 – do you understand the point of the comment? Do you care?
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.
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.
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?
Pretty sure the percentage depends very heavily on the claims that are being presented to the PTO.
That was an overall percentage.
That was an overall percentage
Nice try.