USPTO’s Six Proposals for Patent Quality

As part of its patent quality initiative, the USPTO has offered six proposals for comment and discussion. These will serve as focal-points for the March 25-26 Patent Quality Summit hosted at the USPTO’s Arlington HQ.  I will be participating in the Summit that looks to offer a highly-interactive experience where all attendees will have the opportunity to be heard.  Via its Federal Register notice, the USPTO is also seeking written comments on the proposals.

  • Proposal 1 – Requests for Quality Review: The USPTO proposes that applicants be permitted to request quality review by the OPQA (Office of Patent Quality Assurance) for particular applications.  Thus, an applicant who receives a very low quality office action would be able to seek review in this more informal manner without appeal or RCE.
  • Proposal 2 – Automated Pre-Examination Search: The USPTO is looking for new tools that would cheaply provide the examiner with a set of starting-points for the examination process. One idea is to automate a pre-examination search.  A better approach – in my view – is that the USPTO examiners should rely first on the submitted prior art references as guiding their search — those submitted references will be a better guide to the closest prior art than any automated search.  To accomplish this, the USPTO will need to develop IT tools that better allow for internal searching of these submitted documents (including non-patent prior art).
  • Proposal 3 – Clarity of Record: The USPTO is looking for input on ways to “enhance the clarity and completeness” of the prosecution record.  For me, there should be an increased amount of information from the prosecution record that is available in machine-readable form [i.e., xml].  In many ways, issued patents are still designed around the notion that they are paper documents that can be converted into a machine-readable-form. However, the reality is that patents today are born-digital and with several hundred thousand new patents issuing each year, these patents should be better designed and configured in a way to facilitate automated machine access (rather than PAIR image files). This includes very simple information such as patent expiry date; whether the patent is a post-AIA patent; the patent’s effective filing date and original priority document; reasons for allowance; and a summary of rejections made during prosecution. More detailed information would include the prosecution history documents created in machine-readable form.
  • Proposal 4 – Review of and Improvements to Quality Metrics: A major question is the meaning of a “quality patent” and then – how to measure that quality in order to judge both the system and USPTO examiner performance.
  • Proposal 5 – Review of Current Compact Prosecution Model and the Effect on Quality: The USPTO is considering the current “compact prosecution model” and is particularly concerned that so many cases result in either an RCE (Request for Continued Examination) or appeal to the PTAB (Patent Trial and Appeal Board).  Are the better mechanisms to more quickly and easily get to a resolution of a valid patent being issued or – if not – the application being abandoned.
  • Proposal 6: In-Person Interview Capability with All Examiners – The USPTO is considering expanding the locations for conducting in-person interviews – is this a good idea and how might it work?

305 thoughts on “USPTO’s Six Proposals for Patent Quality

  1. 35

    As is normally the case with problems in general, it is best to start at the beginning:

    Define patent “quality.”

    Without a logical, objective definition which at least the large majority of stakeholders are willing to agree on (100% agreement on the definition of any word — including this one — is impossible), nothing else matters.

    Nothing.

    1. 35.1

      Steve, there are two types of quality —

      1. prosecution, and
      2. ultimate validity.

      Doing 1 to perfection does not ineluctably lead to 2 if the Office is deciding on its own what the law is, rather than taking an issue to the courts. Think Myriad and DNA patents. Think business method and “computer implemented” patents.

      On the latter, the Office removed the business method rejection prior to State Street Bank.

      The Office obviously became the wh * re of their “constituents” on patentable subject matter. A major reform would to be to get lobbyists out of the patent office.

      1. 35.1.1

        Says the man who wh*res his own version of the law (anti-software and anti-business method) which has been repeatedly debunked.

        Ned here is throwing stones from his own glass tower (and not only missing, but providing the stones for other to lob back at him).

        1. 35.1.1.1

          anon, my position on business method patents is clear. They were non statutory, and had been considered such since at least 1908 and Hotel Security.

          Bilski did not categorically exclude them. But that was not really the question on the table, was it. The question on the table was whether a business method was a process within the meaning of 101.

          Ask the wrong question, get the wrong answer.

          Bilski remains, IMHO, one of worst cases in Supreme Court patent law history. 5-4, with Scalia dancing back and forth.

          1. 35.1.1.1.1

            Ned,

            You are simply wrong in SO many ways that I have in the past detailed out for you, from the fact that the holding in Bilski addressed “abstract” instead of “business methods,” to your repeated inability to square the direct words of Congress (recognizing business methods), to the fact that Prof. Crouch had a guest author showing that business methods had been granted throughout the entire history of the patent office, to your repeated non-grasping of the controlling law as to the exceptions to the judicial doctrine of printed matter – your inability an unwillingness to face my simple Set Theory explanation, to your continued disregard even of Prof. Crouch’s admonition of your improper authority “holding” of a regional court decision (which simply got the law wrong itself).

            Yes, your position is “clear” – clearly in error.

            3, the new 4, is still not 5.

  2. 34

    Really, if you wantto improve quality, the first thing that needs to be done (at least by the examiner – I won’t omment on things that applicant can do to help out) is:

    make sure that the best and most relevant prior art gets in the case at the earliest time, idealy the 1st action.

    If the best art is in the case at the start the rejections are easier to write & applicant can (hopefully) review the applied and cited prior art and amend the claims to overcome all of that art. Then the next action should be an allowance if there is anything allowable in the case.

    Of course that is the idea situation on both sides.

    How to get the best art? Simple.

    1) The examiner must learn the art (the heavy use of text searching has killed this skill).

    2) Understand the invention (NOT just the claim language) before starting the search.

    3) Learn how to search properly.

    3a) This means leanring what subclasses should be searched & what art can be found where.

    3b) Learn how to do a proper text search. Too many examiner think that they can do a google-like search & find the prior art. Problem is, google supplies the synonyms and proximity (to an extent) behind-the-scenes. You put in a bunch of words & it will combine them, use synonyms, sort by relevance, etc. Does all the work for you. EAST requires you to actually think before putting the words in if you want to get meaningful results.

    All too many examiners take words from the claims, plug them into EAST & take somethhing that has all the right words. And all too often the art is not the best and sometimes not even relevant.
    Of course, if they knew the art & understood the invention, that would be obvious to them.

    Fix those problems & the quality will be much better. If there is good art in the rejection, even if not well explained, the applicant can often understand the reasons for the rejection and get something accomplished (NOT ideal, but better than how it is now). If there is not good art in the rejection it doesn’t matter if it is explained well or not. It is still wrong.

      1. 34.3.1

        @STE,

        Micki’s proposal assumes perfect examiners that in turn assumes that humans are perfect.

        Since neither is true, her proposal is certainly to fail.

        Actual practice from time immemorial is a back and forth iterative process between the applicant and the examiner. That comports with reality. Any efforts to end this back and forth, to hamper it, to impeach it, are wrongheaded in the extreme.

        1. 34.3.1.1

          Ned, your view here (and lack of on-point responses elsewhere) are simply most odd.

          No one anywhere is claiming that the views being expressed require “perfection” of any kind.

          Please stop the insertion of this strawman.

          1. 34.3.1.1.1

            anon, the idea that any examiner can completely understand the invention, or even get close, before the first action and the first response is almost preposterous.

            This is why compact prosecution does not work in point of fact.

            1. 34.3.1.1.1.1

              Ned,

              I think that a subtle point is lost on you.

              While I agree that interaction can be valuable to the examiner’s understanding, the fact remains that EVERYTHING the examiner EVER needs must be present at filing – by law appears not to register with you.

              Further, whether or not compact prosecution is the “best” way can be – and should be – separated from the notion that an applicant has paid a fixed price for a GIVEN result of a properly (whatever internal-mechanism driven manner) examined application that at the end of the day results in a patent or not.

              You should realize too that “compact prosecution” does not – and never has – meant “prosecution complete in a single pass with NO interaction or feedback.”

              As with your imputed “requirement” of perfection, you appear to continue to inject strawmen into the discussion. As I asked previously, please stop this and point to actual things in my comments that you wish to take exception to.

              1. 34.3.1.1.1.1.1

                “SWhile I agree that interaction can be valuable to the examiner’s understanding, the fact remains that EVERYTHING the examiner EVER needs must be present at filing – by law appears not to register with you.”

                And while that means a lot to a person with OCPD it doesn’t mean quite as much to other people who live in the real world.

  3. 33

    Re posted at the top because FAR too many people are making the mistake of assuming that “time for the examiner” is anything but an internal contrivance:

    To the contrary Eoina, examination and prosecution has always been about the BEST job, and the “time allotted” aspect is an artificial one, created solely within the Office for Office managerial control.

    The issue is – and will always be – just how “best” is defined. It is well known that “best” will not – and cannot – be “perfect.” It is completely illusory to even entertain such a notion. Once it is understood that best won’t be perfect, figuring out what best should be can be less-emotionally discussed.

    Further, Applicants pay for a completed quality examination and really don’t care – nor should they have to – how the Office “divies up” time allotments. The Office is NOT run on a Billable Hour model, but rather is run on a flat rate model. It is entirely an Office decision to treat every application (internally, as externally there are things like extra claim fees) as a “same-size” widget. I would be perfectly happy with (and have proposed many times) a spectrum of assessment of an application based on such things as complexity or how crowded an art field is, to NOT have a “single widget size” mentality. But you cannot say things like “you get what you pay for” and tie that to time when THAT is simply NOT what was paid for.

    1. 33.1

      Anon, stop it.

      Any system for quality examination must deal with real people known as examiners. They are not perfect automatons. They are not slaves. They people.

      Incentives/disincentives to do or not do a particular task must be considered in designing a better system.

      1. 33.1.1

        “Any system for quality examination must deal with real people known as examiners. They are not perfect automatons. They are not slaves. They people.”

        You can try to tell him that all day long but he sees the PTO as a magical box (with functionalities lol). You can try to tell him he doesn’t have the slightest clue about that which he is speaking, not in the slightest, but he’ll just blather on and on.

      2. 33.1.2

        Not sure which point you want me to “stop,” Ned – do you think that I have misspoken? Please share which point of mine that you would like to discuss.

        Thanks.

    2. 33.2

      Re: “the mistake of assuming that “time for the examiner” is anything but an internal contrivance.”
      Incredible, since everyone knows patent examiners have significant time restraints for searches and office actions per application imposed by specific production quotas which control pay and promotions. [About as realistic as saying a law firm associate working on a now-typical capped-fee patent application has unlimited billing time to work on it.]
      Examiners also often have to make first action searches and actions on patent claims which are written ridiculously broadly [because of no pre-filing consideration of any prior art] and may not even contain claim limitations that would point out what might actually be novel features.

      1. 33.2.1

        Paul,

        Don’t be facile.

        Clearly my post does not seek to deny the existence of time constraints for examiners, and your post comment on “as realistic as” absolutely misses the point.

        Or better, it’s as if you think that a client has every right and even duty to be concerned with the inner workings of a law firm from which the client has contracted a capped-fee patent application.

        The client does not – and should not – be dragged into the inner workings of the firm.

        The very point that examiners are forced to work to a quota as an internal mechanism and that is ALLOWED to impact a “flat-fee” style end product paid for is what SHOULD alarm you.

        Further, your tone of “Examiners often have to” is very much part of the problem, sounding as it does in excusing poor performance that is simply NOT excusable – no matter what the input.

        What I find “incredible” is your penchant for taking anti-patent positions in te clothe of an advocate.

  4. 32

    Quality prosecution takes time. So let’s stop wasting it on “compact prosecution” that more or less guarantees that examiners waste theirs by trying to cover every possible issue when a few likely will be dispositive. For starters, limit examination to the independent claims. If agreement cannot be reached on these, why bother having the examiner spending time on the dependent claims? This one step would free up lots of examiner time to do a better job on the independent claims, and provide the applicant with a strong incentive to better focus what he is actually trying to claim in the independent claims.

    It would also be useful in some arts to require applicants to provide a listing of what every reference numeral in the figures refers to.

    1. 32.1

      Why bother spending time on the dependent claims?

      Because if dependent claims are found to be allowable that can make any disagreement on the independent claims moot. The applicant might amend the independent claims to include the dependent claim.

      1. 32.1.1

        Yes, but that still chews up time that might otherwise be better spent examining the independent claims. Maybe I’m right, or maybe the status quo is better. Let’s run have the PTO run experiment and find out. Pick some group, or subset of an art, and do it one way for one set of cases and the other way for a similar set of cases and see how things work out in practice
        .

        1. 32.1.1.1

          ALL claims have to be examine Egon – you are attempting to make a distinction that has no difference.

          1. 32.1.1.1.1

            anon, you are coming off as a mind-numbed robot chanting gospel, unable to perceive reality clearly, unwilling to listen or to change.

            Spengler has a great idea here to increase efficiency. I fully endorse it.

            1. 32.1.1.1.1.1

              Ned, not sure here either what is your issue.

              Are you saying that not all claims must be examined prior to grant?

        2. 32.1.1.2

          I can already tell you how things would work out in practice.

          And no, anon, all claims do not have to be “examined” aka have a rejection sent for them or be indicated as allowable. That’s just office policy. The PTO can stop sending rejections for depending claims that depend from a rejected base claim anytime they decide to. In fact, some primaries already do it and then they dredge up art if there is any if the applicant insists they may want those claims. And this used to be more kosher than it is today from what people say. There is nothing to stop the PTO from doing that and instead having the examiners concentrate on just “rejecting” the independent claims if they have to send an action, but focusing the actual search on “the invention” and trying to get the applicant to amend into something the office finds allowable. It may in fact prove to be much much better as a matter of procedure.

    2. 32.3

      “It would also be useful in some arts to require applicants to provide a listing of what every reference numeral in the figures refers to.”

      How would that improve “patent quality” or “examination quality” or whatever it is the PTO is looking to improve the quality of?

    3. 32.4

      “So let’s stop wasting it on “compact prosecution” that more or less guarantees that examiners waste theirs by trying to cover every possible issue when a few likely will be dispositive.”

      Compact prosecution already allows for that. In fact it is encouraged. Find those issues that are likely to be dispositive, get the appropriate amendment made, and it’s done.

      What you’re talking about is going on the wild goose chase for depending claims with little to no chance of being acceptable to the applicant and all the other nonsense that takes forever. It’s old people that insist on dealing with all that crp and then “sending an action”.

  5. 31

    I would like to see the USPTO find a way to enforce the interview summary requirements–both from the examiner and the applicant. No applicant should be permitted to submit an interview summary which simply states “the claims and the prior art were discussed.” Too burdensome? Fine. Then record all interviews and make the recording part of the file history.

    1. 31.1

      And lookey there; the PTO is thinking along similar lines. From their “brainstorming” ideas on improving the clarity of the record:
      “What are the advantages and disadvantages of making the substance of interviews more extensive on the record? For example, should applicant-examiner interviews be recorded and/or transcribed and, if so, how should the cost of recordation and/or transcription be recovered by the Office?”

      But I don’t think they necessarily need to expand the current rule to require a more extensive interview summary. Rather, they need to enforce the rule they currently have with respect to interview summaries. Also, would recording every interview really be all that expensive to implement?

      And while I don’t know what, if anything, the PTO might be thinking with respect to IDS’s, I hope and pray that they are not contemplating bringing back the old requirement of including relevancy statements for every reference submitted. The only people that helped were accused infringers looking for litigation fodder.

      1. 31.1.1

        The interviews are like pre litigation negotiations. They shouldn’t be recorded. It would make everyone too uptight.

        You are trying to tighten the wrong screw. The right screw is the allowance where if you want more, then the examiner should put the more in here.

        Tinkering ….

        1. 31.1.1.1

          interviews are like pre litigation negotiations.

          The entire application and examination process should be so viewed.

          Clients should be aware that enforcement should be contemplated from the very start.

          (and this is NOT a “bad thing”)

  6. 30

    How to raise Quality in a virtuous circle? ? By Applicant self-interest. How at the EPO? Paradoxically, by a bizarre historical accident, namely the separation of i) search and ii) examination on the merits. You see, because of this, searching happens just once in the lifetime of every EPO patent application, at the outset, (so it has to be good).

    The old criticisms of this system, that it is inefficient because the searcher and the examiner are different, has been eliminated by the EPO’s BEST/EESR process, in which a) the search report comes with an opinion on patentability attached to it, b) examination then takes place only after Applicant subsequently i) pays the exam fee and ii) presents claims calculated to overcome all the patentability issues raised in the EESR, and c) the substantive examiner is the search examiner .

    But perhaps the biggest driver of quality is Rule 137 EPC, under which the consent of the Examining Division is needed before any round of amendment subsequent to the first is admitted to the prosecution file and ii) amending to unsearched matter is not allowed. Consequences: i) your as filed dependent claims need to be good and ii) your amendment response to the EESR has to be good. Applicant self-interest drives Applicants towards getting their cases “right first time”.

    Of course, when these Rules are firmly enforced, Applicant must be permitted to file continuation (in the EPO “divisional”) applications. And why not? The more aplications the merrier, I say.

    None of this is transferrable to the USPTO, I suppose.

    1. 30.1

      While I am not opposed to secondary searches per se, the mindset of that first search good enough to be sufficient SHOULD be in play for the States as well. Perhaps for a different reason than the one advanced by MaxDrei, but here (too), the applicant is ALREADY constrained at the onset by the prohibition of entering new matter into the record. Everything that can EVER come from the applicant is already there on Day 1 for the examiner.

      1. 30.1.1

        So as an Examiner, I need to search the entire specification, rather than the claims, which the Applicant feels define the invention?

        Seems the problem there is the Applicant. If the Applicant wants to move the goal posts, then the Examiner should get a new search and appropriate time/credit for the additional work.

        Otherwise, Examiners would spend an inordinate amount of wasted time on those applications that are far too long and recite a mish-mash of apparently randomly combined elements, and don’t clearly say which Applicant believes is the invention.

        1. 30.1.1.1

          Anony, agreed.

          The way it works in practice is well known; and actually practice and the ideal of compact prosecution are substantially different.

          IMHO, the examiner should review the claims against the drawings to get a gist of what is being claimed, apply to the claim terms a rough construction that one of ordinary skill would apply to them, conduct a search and issue a FAOM.

          Next, the applicant would clarify/limit the claims as appropriate.

          If, in the opinion of the examiner, this clarification would require an additional search, he should do it, and issue a second non final.

          David Stein would extend this even further by allowing the applicant to buy additional searches and additional non finals. (I thought RCEs were supposed be exactly this. Something got lost along the line about the purposes of RCEs.)

          Obviously, at some point, the examiner should have the discretion to call a halt and issue a final.

          In all this, the examiner needs to be given some credit for each search/action on the merits.

          1. 30.1.1.1.1

            There is simply NO viable shortcut from what has to be done: read, understand, and examine the entire application.

            Period.

        2. 30.1.1.2

          A prior art search based on claim terms has disadvantages. Examiners who focus on searching claim terms run the risk to end up with poor search results, that they can only use to make a weak obviousness rejection showing little more than none of the claim element is novel in itself. Very often, the search results relied upon are so poor that the Examiners may need the rescue of an very broad reading of the claims that fits poorly with the description.
          The solution to the problem you are mentioning is a rejection under 112. Under the written description requirement, the inventor should demonstrate that she/he was in possession of the invention.
          I think a better enforcement of 101 utility requirement and 112(a) are key to patent quality. For example, I like the kind of abstract you see on Japanese patents, where the problem to be solved is spelled out. I also would like to see more objective statements about the efficacy of the invention (something like the invention can be used to achieve that level of performance). You see that in pharma and/or materials, but too little of it in the mechanical arts.

          1. 30.1.1.2.1

            Examiners may need the rescue of an very broad reading of the claims that fits poorly with the description.

            That’s not a rescue – that’s an abuse of process.

        3. 30.1.1.3

          “So as an Examiner, I need to search the entire specification, rather than the claims, which the Applicant feels define the invention?”

          Uh, yeah. See MPEP 904+.

          1. 30.1.1.3.1

            Thank you AAA JJ, I was beginning to think that no one here knew the first thing about examination.

            1. 30.1.1.3.1.1

              What can you expect from us B-teamers? If you treat us like we’re stpuid, what motivation do we have to exceed your expectations?

              1. 30.1.1.3.1.1.1

                Regardless of B-teamers or “stpuid,” I expect you to know and to do your job.

                Else wise I expect you to be f1red.

                That’s simple enough that you should be able to understand no matter what your condition is.

                1. “Else wise I expect you to be f1red.”

                  I think you mean “promoted”.

                  You seriously don’t understand that there is nobody policing all these things that you’re an al about. And there never will be without major changes that will take years.

              2. 30.1.1.3.1.1.2

                “What can you expect from us B-teamers? If you treat us like we’re stpuid, what motivation do we have to exceed your expectations?”

                See what goes on anon? This times 9000 people (literally) is what is plaguing change happening. There is no motivation for them to kill themselves for your benefit. That’s because, even in the best of times, under ideal circumstances, when the stars align and you are super skilled, compact prosecution barely makes the production numbers. Of course, sending sht out makes the production numbers, and makes for hugely better work/life and will likely get you a bonus or promotions.

                1. This isn’t exactly me “spilling beans”. I’ve been telling you this for dam near forever now.

    2. 30.2

      Historical accidents at times seem to cause a good outcome.

      The PTO would be wise to look to Europe for some guidance here.

      1. 30.2.1

        As I pointed out to MaxDrei, Day 1 has everything ever possible already there before the examiner.

  7. 29

    Is not the rate at which an examiner’s claim rejection are highly sustained or highly reversed by the Board a highly objective quality criteria which the PTO should be using? Is it?
    Also, is there any quality review of examiners who are statistically shown to always allow applications [or enter new grounds of rejection] after an appeal brief is filed, rather than filing an examiner’s answer?

    1. 29.1

      Actually, reverse/sustain rate at the board isn’t a good indicator for various reasons.

      Among them:
      1) Cases going to the board are cherry picked a few times over – by the applicant, examiner, spe, appeal conference members. Each with their own biases.
      Applicant’s (resumably) won’t appeal something that they think they are definately going to lose. So “good” or even close rejections (from the applicant POV) probably are not appealed very often.
      Many examiner’s don’t want to reopen, so are likely to want to go to the board (or allow) & get the count rather than doing a new action (with no count) if they think that they have a fair (or even small) chance at winning.
      Then again, there are other examiners that will only go to appeal if they think that they are 100% right. They would rather reopen (or allow) than maybe lose at the board.
      Some spes & appeal conf. people go into conferences with the mindset that the applicant is right without even looking at the merits. Probably because the spes get rated on the % of cases that are reveresed at the board. Better to reopen (or allow a less than rock-solid rejection) than get a reversal.

      2) The board is less then dependable to make the correct, or even consistent, decision. I have literally (and I use that term correctly) seen 2 cases with almost identical claims and the exact rejections (112/1, prior art & ODP) and identical responses by applicant and the exact same board panel get completely opposite decisions on the 112/1 & prior art rejections. Within a couple weeks of one another! The board “is like a box of chocolates”.

      3) And then there is the relatively small # of appeals any given examiner gets in a given FY as well as the multi-year delay in getting a decision so the results are not an indicator of current work but that of 2-3 years prior.

      So, no, appeal decisions is not a good indicator of quality.

      Now, if you want to use things like 2nd action non-final, reopenings after final or appeal, # of actions/disposal, that would be a different story. These are better indicators of the overall quality. And I know that there has been an emphasis on improving these metrics the last few years.

  8. 28

    I think that using the prior art submitted by the applicant as a guide to how and where the Examiner’s should search, is mostly a waste of time. When I was an examiner, the prior art that I saw submitted by the Applicants was typically so far removed from the claimed invention, they were rarely if ever useful for anything, and I am reasonably sure that my fellow examiners at the time felt the same (but of course I never did any statistical in depth study of the usefulness – to the Examiner – of prior art submitted by the Applicants).

    Much has changed since I was an examiner, but I would be interested as to what current examiners think of using prior art submitted by the applicant as a guide to their search.

    Note that the typical Examiner searches the same art or the same relatively few areas of art nearly every day. In contrast, the typical patent searcher, from outside of the US Patent and Trademark Office, searches a completely new or at least somewhat new technology nearly every search. As a consequence the Examiner is highly specialized in his/her art area(s), whereas the outside searcher is at best a generalist (whom may have little understanding of the technologies they search), which calls into question the extent to which the outside searcher’s search can be a meaningful guide to the Examiner in doing his/her search.

    I think that if Examiners were more willing to negotiate after a final rejection, without requiring filing an RCE, that could bring a lot of applications to issue faster. I know that much has been done to encourage Examiners to talk to applicants, but I think more can be done. Also, some examiner’s are willing to talk, but not truly negotiate and reconsider their positions as a result of an interview.

    1. 28.1

      “I think that if Examiners were more willing to negotiate after a final rejection, without requiring filing an RCE, that could bring a lot of applications to issue faster.”

      Certainly. But it’s all about incentives.

      Why would an examiner want to negotiate an allowance after-final without an RCE filing (presuming the claims are properly rejected on the merits)? What is the trade-off for those two lost counts?

    2. 28.2

      “Much has changed since I was an examiner, but I would be interested as to what current examiners think of using prior art submitted by the applicant as a guide to their search.”

      You are entirely correct. Though sometimes the art in the IDS is close to the claims, and narrowly drafted around (sometimes still in 103 range tho) it is rarely classified into the proper classification for the case. Though it does happen on occasion.

    3. 28.3

      You have to realize that there are two “types” of IDS’s. One is where the prior art is given to the patent attorney by the inventor, while the other consists of the results of a patentability search. I’ve had both sorts of clients, that is, there is the sort that wants a patentability search done before filing any application, and then there is the sort that never does a patentability search because they are one of the leaders in the applicable technology.

      And not all patentability searches are equal. I could do a decent search online, but when possible, I preferred to use a search firm that would speak to an examiner in the applicable art to make sure they were on the right track. And during all my years of experience, the examiner would invariably find some overlooked prior art upon which to base a rejection.

    4. 28.4

      “I think that if Examiners were more willing to negotiate after a final rejection, without requiring filing an RCE, that could bring a lot of applications to issue faster. ”

      I think that Examiner’s are usually over their head. After doing the work they’ve done to generate an Office Action, they are 70 percent sure that their position is correct. they understand about 70% of the application and about 62% of the cited documents and 54% of the claim language in front of them. Then they forget all they struggled to understand about the case and move on to the next dozen. Then they get a call asking for an interview.

      The little bit of time they get to prepare for the interview is not sufficient to allow them to be confident enough to agree to anything…and so, they don’t.

  9. 27

    Every time USPTO does a little rulemaking to improve the quality of data in its systems, the old school patent echo chamber of outside lobbists throw a fit.

    Attributable ownership updates every now and then – destroys their member’s competitive posture in the marketplace.

    Putting the contact information on the fact of the patent application – the members of the patent bar complain because they are getting “spammed” (welcome to the club boys.)

    Allow inventors, the people who probably understand what is novel and what is prior art, to read patents and run the risk that 10 years from now the patent owner will be accused of inequitable contact. With hundreds of thousands of pieces of NPL published every year, do you really think an inventor is capable of “hiding” a piece of prior art?

    If you want a fully digital patent prosecution pathway, let’s add some serious quality to patent data so the market for patented inventions becomes more transparent.

    1. 27.1

      Arleen,

      May I remind you that the Quid Pro Quo – and the “market” is the idea am patent itself and not the owner.

  10. 26

    Check thus high quality patent, another dozen + American companies sued on 3/10/15, spending lord only knows how much to fend it off, raising costs on all of us.

    US 7,356,606

    Behold the innovation. Really.

    Anyone who can’t call this out as simple racketeering is a deluded ideologue.

    1. 26.1

      ^^^ and today’s “culture” lesson of “whine about a random software patent unrelated to the actual post” courtesy of…

    2. 26.2

      Here’s claim 1

      1. A method of conducting commerce with a server over the Internet comprising:
      receiving a request for a web page from a consumer;
      transmitting the web page over the Internet from the server to the consumer;
      prompting for information from the consumer through the web page;
      assigning variables with variable names to the information;
      incorporating XML path information into the variable names;
      submitting the variables to the server;
      reading the information from the variables;
      placing the information in an XML type format based on the XML path information; and
      creating another web page for the consumer.

      That seems very specific to me and easily worked around. Perhaps I’m mistaken.

      I read your post as being sarcastic, so it seems you think it not an innovation worthy of protection.

      Yet you say there are a dozen companies willing to do battle in court over it rather than … i donno… NOT assign variables with variable names to the information or NOT incorporate XML path information.

      So, maybe it was innovative back in the spring of 2004 after all.

      1. 26.2.1

        Id likely be opposed to a patent on XML. But a patent on the most obvious, natural use- the very purpose- of XML?

        Yea Les, that’s real innovation alright. Lets check back in four years on this litigation, shall we? I think I know already what we will find.

        -tons of wasted money and a dead patent.

        1. 26.2.1.1

          While I am skeptical that incorporating XML path information into variable names as part of a method of conducting commerce was the very purpose of XML, I will accept that assertion for discussion purposes.

          I would also note that 97.43 percent of all inventions are made of components used for their very purpose.

          Each component in a telephone, for example, could be described as being used for its very purpose. Switches switch, relays relay, springs spring. Speakers speak, microphones mic…

            1. 26.2.1.1.1.2

              Transistors used in telephone – one patent
              Transistors used in electron microscope – one patent
              Transistors used in a radio – one patent
              Transistors used microprocessor – one patent

              Actually, since there are many different phones, microscopes, radios and microprocessors, I’m sure there are many more than one patent related to each of those…. but, you get my point…

              1. 26.2.1.1.1.2.1

                For example, here are claims 1 from three different transistor radio patents from the 50’s and 60’s:

                Am-fm all transistor radio receiver
                US 3201695 A

                1. In combination AM-FM radio receiving apparatus having an antenna, a tunable antenna circuit connectible thereto for AM signals, and an .FM-RF tuning means developing an intermediate frequency modulated signal alternately connectible to said antenna, a single electronic amplifying stage connected to both the FM-RF tuning means and to the tunable antenna circuit for the AM-RF signals to amplify either the FM-lF signals or the AM-RF signals, said electronic amplifying stage including a transistor having an input and an output circuit, said input circuit being connected to the FM-RF tuning means and to the tunable antenna circuit for the AM signals, capacitance feedback means connected between the input and output Circuits of the transistor to provide different functions for AM or FM modes of operation and additional amplifying means connected to the transistor output circuit.

                Transistor radio apparatus
                US 2892931 A

                1. For usein electronic, apparatus: two isolated signalhandling circuits respectively arrangedforhandling. sig- There:

                nals having dilferent frequency ranges, each of said circuits including a transistor having at least base, emitter and collector elements, said circuits having a reactive signal coupling therebetween; a voltage dividing resistance network connected between a source of supply voltage and ground, a point on said voltage dividing network being connected to the base: of-rone of said transistors for supplying. a base-biasing voltage thereto; and a circuit including a-resistor serially connected-with one of the. emitter and collector-elements ofsaid. one transiston. a point on said lastnamedicircuihbeing directly conductively connected. to the base element of the other transistor for supplying-a base-biasing’voltagethereto responsive to the voltageidrop’acrossat, least a part of said resistor.

                Transistor radio receivers
                US 3007046 A

                1. In a radio receiver the combination with a transistor intermediate frequency amplifier, of a second detector diode connected to provide an audio frequency signal in response to intermediate frequency signals, a transistor audio frequency amplifier, means including a volume control resistor direct-current conductively connecting said detector diode with said transistor audio frequency amplifier to provide a signal transfer path for audio frequency signals, means providing a fixed bias voltage for said transistor audio frequency amplifier, and means connecting said diode detector with said transistor intermediate frequency amplifier to control the gain thereof as a function of the amplitude of said intermediate frequency signal and to vary the direct bias voltage and gain thereof with variations in the volume control setting of said volume control resistor.

                So you see, it is perfectly normal to claim devices comprising known components being used for the very thing they were intended for, where the intended for use is broad or abstract, like … amplifying, switching, or computing and the claimed device does something more specific, like tuning radio signals or intermediate frequency mixing…or a spread sheet or word processing or converting spoken words to text.

                New Machine…

                1. If the transistors were the thing giving them non-obviousness,the latter 3 patents are all obvious.

            2. 26.2.1.1.1.3

              You (sadly) continue to NOT understand the lesson required of being functionally related and excluding the Non-Useful Arts.

              But, hey, broadcasting your lack of inte11ectual legal rigor seems to make you happy.

            3. 26.2.1.1.1.4

              The music is the input to the machine. It doesn’t change the functionality of the machine.

              Must we deal with this argument over and over. It is like dealing with black cats are unlucky. You just can’t ditch things like this because of the ignorance of people.

              1. 26.2.1.1.1.4.1

                It’s purposeful at that as the legal concept has been explained many times.

                Of course, when you have a “culture” of denigration and an avowed per se philosophical stance of anti software (of ANY kind) running amuck for nine years and running, what do you expect from the less sophisticated?

              2. 26.2.1.1.1.4.2

                To be fair, their positions is that software is also an input to the machine. They would argue that it doesn’t change the function of the machine either. The machine still fetches instructions from memory, then according to those instructions fetches data and processes the data according to the instruction.

                Look, “you’re going to find that many of the truths we cling to depend greatly on our own point of view. ”

                Are you looking at the screen or are you looking at the data bus.

                Anyway, “There is still good in” them.

                Though they seem “more machine now than man” and there minds seem “twisted and evil.”

                1. Les,

                  There is absolutely nothing fair about purposeful obfuscation of the law. Don’t move the goalposts.

                2. anon –

                  Neither is there anything fair about purposefully being obtuse about what their argument is.

                3. There is NO purposeful being obtuse when what they are arguing involved obfuscations of the law.

                  Pay attention to what I actually posted.

                4. Pay attention to what I posted.

                  It had nothing to do with any Law. It had to do with a point of view regarding the definition of “function of the machine”.

                  Moreover I was responding to Night Writer and not to anything you said.

                5. Les,

                  Put the shovel down. You are going to confuse yourself and the less fortunate with the use of the term “function of the machine” which is merely a b@st@rdized canard from the 1924 Ex Parte Creveling case and merely wishes to play on the false notion that “old box” inherently has all future improvements that come in the form of software “already in there.”

                  Here’s a clue: “old box” cannot “do” or “have” ANY of those improvements until “old box” is first changed and configured with the machine component and manufacture in its own right of software.

                  To think of software as the process and actions is a mistake. That’s confusing the execution of software with software.

                  (btw, the first three paragraphs of Creveling state:

                  Where the claims are for an alleged electrical process which is identical with the mode of operation of the electrical mechanism and the result of the use of the mechanism is nothing more than its expected function [singular], Held that the claims cover no more than the function of the machine and are not patentable.

                  Where the claims are drawn in the form of process claims, but are merely the results of the actions of various electrical devices, the results of which actions are well known and are just as inevitable as the actions of mechanical devices and their results, Held that the claims are for the function of the electrical mechanism and as such are not patentable.

                  Where the method claims cover merely the function of or result of the operation of the machine disclosed and claimed in the appellant’s prior patent, Held that to grant the present claims would result in the grant of a second patent for the SAME invention, which patent would be invalid.

                  You have to be able to keep your eye on the ball and recognize that the usual attempt to use the phrase “function of the machine” was merely to NOT give patents for specialized machines already made – NOT because of some generic machine could easily be changed into a specialized machine.

                  When Mr. Snyder wrongfully squawks “NEW MACHINE” he is b@stardizing this notion of “function of the machine,” because mere gen er al functions – alone – are NOT what the case was talking about.

                  This is very much analogous to my big box of electrons, protons, and neutrons. If you attempt to apply “functions of the machine” in the twisted sense being done here by those you want to be nice too, then the analogous logic of my big box eviscerates ALL machines, manufactures, and compositions of matter because the functions of electrons, protons, and neutrons – at that level – are the level of “functions of the machine” at the individual software step level, or even at the larger scale (get data), (process data), (give data) level, and does NOT give proper consideration to the manufacture as a whole of what that software is.

                6. You can hide from and ignore there point if you like. But that gets us nowhere.

                  The issue is where do you draw the boarder line of the machine.

                  You (and I) believe that the software is part of the machine.
                  From that point of view, a change in software changes the machine.

                  Those on the other side draw the boarder to exclude the software from the machine and consider the software to be an input or workpiece to or of the machine.

                  That’s the issue to0 be resolved. Parse incoherent and contradictory judicial pronouncements all you want, the issue is as stated above.

                  I hope that doesn’t confuse you, or anyone else.

                7. Les,

                  All that you are doing is inviting confusion.

                  Drawing lines does not work when a basic paradigm is knowingly violated when those lines are drawn (and often drawn for philosophical, rather than factual or legal reasons).

                  Point blank: software is equivalent to hardware and is equivalent to firmware.

                  Point blank: software is a machine component and a manufacture in itself.

                  The attempted line drawing of “input to” or “workpiece of” that clouds the basic facts simply are not proper lines in patent law.

                  As to “inputs,” you would not distinguish hardware “inputs” would you? Thus, you depend on a false distinction.

                  As to “workpiece of,” you do not distinguish those items of the type of Non-Useful Arts from Useful Arts, do you? No. Thus, you invite the fallacy of non-starters in a discussion of patent law.

                  It’s NOT that the issue is one of “running away” or “ig noring” line drawing. Not at all. Rather, it is an issue of knowingly not letting the discussion itself become confused with allowing improper line daring that invites obfuscation.

                  You focus on a distraction as “The” issue. Keep your eye on the ball.

                8. “Point blank: software is equivalent to hardware and is equivalent to firmware.

                  Point blank: software is a machine component and a manufacture in itself.”

                  Because you say so?

                  … It is a valid point of view. But so is the point of view that software is an input to a microprocessor.

                  Now. If one CLAIMS a machine that is a combination of hardware and software, then THAT defines the boundaries of the machine being CLAIMED and we win the argument.

                  But that does not alter the fact that it is valid to view software as an input to a microprocessor.

                  Also valid, by the way, is the point of view that changing the CD in a CD player changes the function of the machine. Before it was a Rolling Stones player, now its a Patsy Cline player. The electronic signals it now produces are different than the ones it was producing before.

                9. Because you say so?… valid point of view.

                  NO. Because what I say is a fact – not a “point of view.” It is a fact not because it is I that says it, I say it because it is a fact.

                  Again – your “is an input” is simply not helpful and opens yourself to obfuscation. You did not answer my question: is hardware “an input?” Also – you are now in the realm of confusing the execution of software with software. This is not a difference merely in “point of view” but in reality.

                  Also valid, by the way,

                  No.

                  Completely false. You have now confused yourself and need to recognize that you are speaking falsity.

                  Your “changing the function of the machine with a non-Useful Arts example is exactly the type of non-starter in patent law to be avoided. Type of music played is not functional as that term is to be understood in the patent law sense, even if different signals are produced. Those different signals (to use my simple and exquisite explanation) are analogous to Type B printed matter, wherein the software that we are talking about in regards to which the aspect for which protection is being sought, the utility aspect, is analogous to Type C printed matter.

                  Please give me your “car keys” – you are not fit to discuss this.

                10. Your useful arts reference is just another arbitrary demarcation.

                  How about this. How about I invent a signal generator.
                  In case you don’t know, a signal generator is a tool in an electronics lab or shop that generates, for example, sine waves, that can be injected into a point in a circuit so the function of the circuit can be tested using, for example an oscilloscope.

                  In the olden days, they looked like this:

                  link to newark.com|pcrid|57087234621|plid|&CMP=KNC-GPLA

                  To prove they are in the useful arts, here’s one of many patents to signal generators:

                  link to google.com

                  Lets say I invent one comprising a CD player and a CD with a plurality of tracks. Each of the tracks has a different frequency sine wave. One injects a signal into the test circuit using the audio output from the CD player and selects the frequency by changing tracks on the CD player. The volume control varies the amplitude.

                  There, are we in the useful arts now? Have I made a new machine by changing the CD?

                  Why yes, yes I have.

                11. Your useful arts reference is just another arbitrary demarcation.

                  You might want to check your version of the Constitution.

                  (btw, your CD example is not what you think it is because you are talking about things of functional relatedness and NOT things in the Non-Useful Arts)

                12. “It is not a fact. It is entirely a point of view.”

                  You can tell him that for years Les and he will literally never get it. You can show him evidence against his point of view and he will not get it. Remember, he has a legit mental condition that causes him to see everything in black/white and wrong/right. Anything grey just does not compute for such folks.

                13. A little food for thought:

                  link to opinionator.blogs.nytimes.com

                  6 is someone who is so lost in his belieb system, that he @ttacks anyone not of his own moral relativism, nor can he seemingly comprehend that there are – in fact [pun intended] – things of this world that ARE black and white.

              3. 26.2.1.1.1.4.3

                “CD example is not what you think it is because you are talking about things of functional relatedness and NOT things in the Non-Useful Arts)”

                I don’t understand this quote anon.

                What are you saying? That I didn’t invent a new kind of signal generator that falls squarely in the useful arts?

                Bull.

                For example, see claim 6 of Automated testing apparatus for electronic component
                US 5915029 A:

                1. An apparatus for testing a device that produces an audio signal, the apparatus comprising:
                test tone inducing means for causing the device to generate a test tone at a first frequency as the audio signal;
                end-of-test tone inducing means for causing the device to generate an end-of-test tone at a second frequency mixed with the test tone, the end-of-test tone being generated upon completing a test cycle;
                a test tone detector connected to the device for monitoring the audio signal to detect the test tone and for generating an error pulse if the test tone varies from the first frequency by a predetermined amount;
                a latch connected to the test tone detector for setting an interrupt in response to the error pulse;
                a controller connected to the latch for detecting the interrupt, for increasing an error count in response to the interrupt, and for resetting the latch; and
                an end-of-test tone detector connected to the device and to the latch for receiving the audio signal, for detecting the end-of-test tone at the second frequency as part of the audio signal, and for preventing the latch from generating the interrupt, whereby variations in the test tone following the end-of-test tone do not increase the error count.

                6. The apparatus according to claim 1 wherein the device is an optical disc player and wherein the test tone inducing means and the end-of-test tone inducing means are encoded tracks of an optical disc.

                link to google.com

                1. I don’t understand this quote anon.

                  Yes Les, it is readily apparent that you don’t understand the discussion points here and fail to grasp the fallacies advanced by the anti-software “line-drawing” when those drawing those lines wish to use non-Useful Arts arguements as their “point of view.”

                  What are you saying? That I didn’t invent a new kind of signal generator that falls squarely in the useful arts?

                  Quite the opposite. Your example is simply not one that aligns with the fallacy “point of view” of music or novels or other non-Useful Art items.

                  You appear to want to give an example that supports that anti-software “point of view,” but your examples are critically different than the fallacies they present for their “point of view,” an your support does not give the support that you apparently think exists for that opposing point of view specifically in regards to the fallacy of non-Useful Arts examples.

                  Your examples actually support my “viewpoint.”

                2. No I’m not. I’m responding to your silly assertions.

                  I said:”Also valid, by the way, is the point of view that changing the CD in a CD player changes the function of the machine. Before it was a Rolling Stones player, now its a Patsy Cline player. The electronic signals it now produces are different than the ones it was producing before.”

                  You said:
                  ““ Also valid, by the way,”

                  No.

                  Completely false. You have now confused yourself and need to recognize that you are speaking falsity.

                  Your “changing the function of the machine with a non-Useful Arts example is exactly the type of non-starter in patent law to be avoided. Type of music played is not functional as that term is to be understood in the patent law sense, even if different signals are produced. Those different signals (to use my simple and exquisite explanation) are analogous to Type B printed matter, wherein the software that we are talking about in regards to which the aspect for which protection is being sought, the utility aspect, is analogous to Type C printed matter.

                  Please give me your “car keys” – you are not fit to discuss this.”

                  So, I have given you an example where changing the CD changes the cd player (one useful art device) to a signal generator (another useful art device).

                  Capice?

                3. 6 – you don’t know the meaning of software.

                  At all.

                  Please come back after you gain at least some small baseline of understanding as evidenced by your realization that software is written for utilitarian purposes, and that patentable weight can indeed attach to such writing.

                  Thanks

                  Les,

                  You are the one professing confusion – not I. I don’t need a condescending “Capice” from you. You appear unable to grasp either my stated view and the reliance on functionality, or the anti-software view which obfuscates with examples of non-functionality in the patent sense by depending on non-Useful Arts (which your examples simply do not reach).

                  Further, my assertions are not silly – not by a long shot. Again – look at your own example and see how they FAIL to reflect the Rolling Stones to Patsy Cline motif, but rather actually focus on functional relatedness. If you pay attention to what I actually wrote, you would see that your characterization fo my view is simply off – my view is NOT that merely changing a CD cannot have a functional effect – and thus be patent worthy. That has NEVER been my position. You are NOT reflecting my actual position and you are ALSO NOT reflecting the position of those whom you want to paint “their viewpoint” as being reasonable. As I stated: your examples, prove my point. They don’t speak to the anti-software point – AT ALL.

                4. Condescension?

                  “how can you say to your brother, Brother, let me pull out the speck that is in your eye, when you yourself behold not the beam that is in your own eye?”

                  Here, maybe you can pry it out with my “car keys.”

                5. You pile error upon error.

                  The two situations are simply not comparable.

                  Your condenscension is laid out with error on your part, not understanding the positions all about you, yet seeking to criticize that which you don’t understand. My condenscension on your waywardness is fully justified.

                  Let’s make sure first that you recognize this.

                6. …and clearly you don’t got it, as you engage in the fallacy of mistaking the fact that I have stated something with the notion that because it is I that have stated it, it must be “opinion” or else wise not objectively a fact.

                  It’s simply not as you would attempt to portray it as a function of my thinking about it.

                7. “and that patentable weight can indeed attach to such writing.”

                  Ahhh, so now patentable weight “attaches” to writing now.

                8. Remember Lester, OCPD is a real thing. You would do well to look into it and how to address those with it.

                9. now“….?

                  Um no 6, the exceptions to the Judicial doctrine of printed matter is not a new thing.

                  And your retreat to the b@nal “Med” accusations is something that is NOT supposed to be allowed on the the “new” Patently-O.

                  Suffice to say, there really are things in this reality that are objective facts – there really are things that are black and white.

    3. 26.3

      Correct me if I’m wrong here, but you just cited a 7M series patent. That’s 2011 at the latest.

      What now moot fictional problem are you trying to point out?

  11. 25

    Is there any theoretical condition that would convince anyone that the patent system should be shutdown entirely? How about if a machine is capable of inventing patentable subject matter? If we replace the pto with said machine, we can do away with patents and all of you brilliant people might find something useful to do instead of bickering over something so nonsensical as how to “measure” patent “quality”.

    1. 25.1

      It depends. If you are trying to “convince” someone who is:

      a communist/socialist
      a proponent of theocracy/autocracy
      a dictator
      an anarchist

      or anyone else who does not respect reason, the constitution, and individual rights, you would be preaching to the choir, as patents are a means to protecting individual rights to property all of which are vehemently opposed in principle by these people.

      To the degree the rest of your post makes sense I will address it…

  12. 24

    I have a few very rough ideas that might improve prosecution:
    1. Require examiners to provide claims charts for rejections of all independent claims, in the particular form of a two-column table. The table would quote the claim elements in the left column, and, in the right column, ***quote*** the text (or copy the figures) from the cited art that allegedly correspond to each the claim elements. This would prevent many of the truly atrocious rejections.
    2. Provide the applicant with a search report, ***prepared by the examiner***, in the one-page form of a PCT search report (i.e., x’s and y’s), and allow voluntary amendments before issuance of the first action on the merits. If the art is close, applicants will want to amend to keep prosecution history to a minimum. This will focus examination and save the examiner a huge amount of time preparing lengthy rejections that often go unread.
    3. Give the applicant the option to elect to have only the (elected) independent claims examined in the first action on the merits. In exchange, if another rejection must be issued, it will be non-final.
    4. Assign a new examiner, and SPE if possible, upon the filing of an RCE.
    5. Provide a curved anonymous quality feedback mechanism. Upon issuance or abandonment of an application, the patent agent gets a code that allows him or her to rate the examiner on a 1 to 5 scale. Patent agents would have no incentive to grade dishonestly, because the feedback would be anonymous and would not be linked to any particular application, and would not be traceable to the patent agent. Examiners would be given quarterly average ratings. Patent agents would be encouraged to base their feedback on the quality of the rejections/allowances, including grading high for good rejections, and low for bad allowances.

    1. 24.1

      Wow. Each of those proposals — with the exception of #1 — would significantly lower the quality of examination.

      Here’s a modest proposal that would actually increase payment quality dramatically: after each communication by the agent/attorney, the examiner rates the agent/attorney on a five point scale, with total anonymity. At the end of each quarter, poorly reviewed agents are deregistered and poorly reviewed attorneys are disbarred.

      1. 24.1.1

        Your modest proposal has nothing to do with what the Office actually controls: examiner behavior.

        Let’s stay focused on that.

            1. 24.1.1.1.1.1

              What further details are required?

              The OED is tasked with regulating practitioners, both in terms of registration and in punishing bad behavior. If it cannot actually affect agents/attorneys — as you allege above — then the OED is ineffectual.

              1. 24.1.1.1.1.1.1

                Maybe an offense that the OED is chartered to contain…

                Being a poorly performing representative is not necessarily that level, n’cest-ce pa?

      2. 24.1.2

        If there is a reciprocal program for rating and removing examiner’s, I’m all for it.

        By the way, what’s the issue with payment quality?

        Also, what do you mean by “poorly reviewed”? Do you mean with even 1 poor review? Do you mean with a particular percentage of bad review? Do good reviews cancel out bad ones? Do you mean with a particular number of bad reviews? Do you mean some sort of average of reviews is on the wrong side of a threshold? What if the attorney only got one review in a particular quarter, would that be sufficient to disbar him if it were bad?

        1. 24.1.3.1

          They would certainly pave the way to easy first-action allowances — which may align with your personal goals — but a rubber-stamping agency is not in the public’s best interests.

          1. 24.1.3.1.1

            I for one think a rubber-stamping agency – in either rubber stamping Approve-Approve-Approve or Reject-Reject-Reject is neither in the public’s interest or in the applicant’s interest.

      3. 24.1.4

        “Here’s a modest proposal that would actually increase payment quality dramatically: after each communication by the agent/attorney, the examiner rates the agent/attorney on a five point scale, with total anonymity.”

        The examiner would have to be actually qualified to rate an attorney’s performance. And no I’m not talking about, “Well, they didn’t write a picture claim that my SPE would let me allow so therefore the attorney did a bad job.”

        1. 24.1.4.1

          As I mentioned per the idea of having any set of “rules,” the class “B” (with no intended snark) examiner simply won’t have a chance in a battle with the better trained, better paid, and more highly motivated applicant’s representative.

    2. 24.2

      These are great suggestions Mark. I can tell you are a real patent attorney. I really like the idea of the claim chart and the search report first.

      But, all of those suggestions are excellent.

  13. 23

    Firstly, the Examiners tend to do a poor search and then spend the rest of their time arguing that the garbage they found is relevant, aided by the nonsense that is In re Morris/BRI.

    Secondly, compact prosecution doesn’t work. It might work if the closest art were found on the first pass, but that almost never happens.

    Much of this would be solved by better searching, but a lousy search is so much quicker, and they are constrained for time, the poor souls. We do get what we pay for.

    Getting rid of BRI would require an act of Congress, and the number of people in Congress who actually understand this issue can be counted on the fingers of one hand. Let’s face it, there are so many other things that they consider more important, and probably rightly.

    1. 23.2

      “Secondly, compact prosecution doesn’t work. It might work if the closest art were found on the first pass, but that almost never happens.”

      It does if you’re amazing. But otherwise not. All you end up doing is spending wayyyyy too much time searching and analyzing the case, only to ultimately have your proposal shot down. That’s why you’ll hear higher up people (who are amazing examiners I assure you) spouting off about it and why nobody else does it (except for trying to make their OA’s “complete”). It’s a lack of skills.

      1. 23.2.1

        Why is there a lack of skills – skills that appear to be necessary to do the job in the first place?

        Should we focus on that before these changing “pillars?” Sort of like, get the basics down first?

        1. 23.2.1.1

          (Maybe those “quality metrics” are not “just fine” after all if this lack of basics is not being flagged by those metrics…)

          1. 23.2.1.1.1

            Problem is anon, what we’re casually discussing as a “basic skill” used to be known as “one of the most advanced skills an examiner can have”.

              1. 23.2.1.1.1.1.1

                I don’t think you’re using the word “metrics” correctly here. The metrics themselves are fine. It’s just that they changed a few years back and nobody has bothered to ensure compliance, and hasn’t supported compliance. Not everyone is going to be an amazing examiner simply because the people at the top declared that they be so. For that matter, all the people in the middle won’t necessarily properly judge the lower people on the newly changed metrics (instead of just doing the judging the same way they were doing it) unless something is done to ensure that they do.

                1. I”m using the word correctly.

                  The metrics CANNOT be fine if (and whatever label you want to us, call it “advanced skill” or “amazing” or “snaffleupalus”) a skill necessary to do the proper (and paid for) job is not being tracked, and if the lack of that thing is directly related to poor examination, then BY DEFINITION the metrics are deficient, and cannot be fine.

                  This odd new twist of lack of enforcement is certainly peculiar. Are you really saying that the Office has a tracked metric that show poor examination, but has simply chosen not to enforce it?

                  Really?

                2. And you really want to think that this should be my client’s problem? Because of “Congress” or something?

                  Astounding.

                3. “The metrics CANNOT be fine if”

                  Well then pull up the PAP and tell us just which metrics need to change. You can google it. First hit. examiner pap.

                  Stop your whining about how they aren’t good enough and give us real suggestions.

                  “is not being tracked”

                  But it supppppposedly IS being tracked. It’s just that nobody tracks it irl much.

                  “This odd new twist of lack of enforcement is certainly peculiar. Are you really saying that the Office has a tracked metric that show poor examination, but has simply chosen not to enforce it?”

                  Yes. Though it isn’t “the Office” (aka Michelle and her immediate inner circle) that did this, it is individuals. The reason is that they’re old dogs who won’t change without someone holding them to it. If nobody holds them to it then they have no reason to change.

                4. Stop your whining about how they aren’t good enough and give us real suggestions.

                  You are the one claiming that you know how to do this “super” “amazing” job – show what you are talking about.

                  nobody tracks it URL much

                  Whhaaaaat?

                  Old dogs? Nobody holds them?

                  Hello? What are you babbling about?

                5. “You are the one claiming that you know how to do this “super” “amazing” job – show what you are talking about.”

                  What I am talking about is getting people to compactly prosecute. You on the other hand are talking about metrics and then whining about some mysterious not specified metric not being sufficient.

                6. ““nobody tracks it URL much”

                  Whhaaaaat?

                  Old dogs? Nobody holds them?

                  Hello? What are you babbling about?”

                  Chr ist sa kes you’re inco mpetent. It is not “URL”. It is IRL. In real life.

                  Look, the metrics are just markings on a sheet of paper. The application of the metrics happens in real life. If the spe’s fu dge on judging people on the metrics (as they do constantly, and are especially doing now that the metrics were changed) then the metrics, as written, are never “enforced”.

                7. And yes, the spe’s and directors and that lot are old people. They don’t want to change. And they will not change unless michelle and her inner circle make them. They’re not making them.

        2. 23.2.1.2

          “Why is there a lack of skills – skills that appear to be necessary to do the job in the first place?”

          That’s a great question anon. If I had to guess, at base it is because they focus on teaching people how to reject applications because you have to be able to reject before you’re going to know how to allow. Thus relying fully on the “let the applicant flub his way to allowance” model of prosecution rather than the “make a reasonable line in the sand and tell applicant to step across” model. And because it is very very difficult to “teach” what usually simply comes with 3-5 years of experience in a 2 hr class. Things like “what is likely to be amended into the claims” or “subject matter that would likely be of interest to the applicant to have allowed and which can be determined to be allowable now” usually come with experience, though there may be a handful of people here qualified to teach it. I have never seen a class offered on those things, especially since they are art specific. I have considered starting my own class since several of the basic skills in those areas, at least in my art, can be taught and even having the basics will get you pretty far. But most of my “tricks” to accomplish compact prosecution in that manner are fairly art specific, though I could try to generalize them a bit.

          There are other reasons of course such as “doing the whole job” being suuuuuuuper hard in the time allotted, and you have a good chance of failing to get the proposed amendment to go through (either the signatory or the applicant) if you don’t know what you’re doing thus wasting huge amounts of time. And wasting all that time (probably hundreds of hours at the minimum) just to learn by failing is not something on most people’s radar. It’s even harder if your signatory doesn’t have the skills necessary to support this type of prosecution, and is an “old dog that can’t be taught new tricks”.

          Not to mention that there are still a culture and a lot of old wives tales that have people still believing that “building a record” and “getting something on the record” and all that is suuuuuper important.

          In short, there is a huge variety of reasons anon. Not the least of which appears to be a lack of will to implement, and enforce, change on the part of the senior leadership.

          “Should we focus on that before these changing “pillars?” Sort of like, get the basics down first?”

          I would say so. And it will take years in my estimation, realistically speaking.

          1. 23.2.1.2.1

            “If I had to guess, at base it is because they focus on teaching people how to reject applications because you have to be able to reject before you’re going to know how to allow.”

            This hits the nail on the head. The PTO teaches examiners how to reject. What they should be teaching the examiners is how to 1) search to find the most relevant art and 2) how to objectively evaluate evidence. Objectivity is a skill. It can be taught. It can be learned. It’s like the first year moot court competition you have to go through where in the first half you have to argue one side of the case, and then in the second half you have to argue the other side of the case. But they never teach examiners that. It’s all, “How can you reject the claim?” There’s never any teaching or training whatsoever on how to argue and evaluate the allowability of the claim.

            “Not to mention that there are still a culture and a lot of old wives tales that have people still believing that ‘building a record’ and ‘getting something on the record’ and all that is suuuuuper important.”

            Bingo. And well said. The PTO needs to identify the purveyors of this nonsense and hand them their walking papers. ASAFP.

            1. 23.2.1.2.1.1

              “1) search to find the most relevant art and 2) how to objectively evaluate evidence. Objectivity is a skill. It can be taught”

              I agree though I would add 3) how to find facts from that evidence <the most important part.

              "Bingo. And well said. The PTO needs to identify the purveyors of this nonsense and hand them their walking papers. ASAFP."

              I've IDed one (probably 2) and whew boy, they'll try to protect the people that get this sht started, or have perpetuated it. It was pretty funny when that happened recently. Though frankly I don't think they need to be fired. They need to simply be brought up to speed on what is in fact occurring in the world. Tell them that this is an entitlement program, and we are merely an administrative agency, same as the DMV etc. just here to administer that entitlement program and bingo all this sht resolves itself. Keep that sht a secret and people start thinking it's all about their subjective feelings about "allowability" etc. and they have no reason to think they should be doing the hard job instead of the much much easier job of sending a shty rejection.

    2. 23.3

      Alun,

      I usually look forward to reading your posts, but here you make a classical mistake as to what applicants pay for.

      I really don’t give a rip – and my clients should not have to be penalized by the Office decisions on their internal metrics – see my post below at 11.4.1. The examiner’s ability or lack thereof to perform quality work within a given time frame is not – not should it be – my client’s problem. The Office has decided on a flat fee schedule, and I have purchased the end result of that schedule, not some variable quality depending on some random examiner’s ability to be effective in an arbitrary time metric of that examiner.

      1. 23.3.1

        “The examiner’s ability or lack thereof to perform quality work within a given time frame is not – not should it be – my client’s problem. ”

        It’s everyone’s problem until you get your client, and other similarly situation clients en masse to swarm the congress and tell them to allow adequate time. Period. This is no mere “internal management” problem. It is a problem that flows directly out of the congress from their expectations for their entitlement program.

        1. 23.3.1.1

          Your metric and the executive agency choices for judging you are NOT anything that flows from Congress or anything that should affect my client.

          You really fail to grasp the simple facts here 6. My client’s do not pay for “effort” or a set amount of time – they pay for an examination to the law, an end product. How the Office sets up its internal workings and how it manages – or mismanages is quite apart from the deal with the customers.

          All this is, is you playing the “blame the applicants” game in a twisted version of “hey, this is your problem too.”

          It is not – and the problem is that you (the personal and the royal You) seem to think that it is “OK” that internal metrics are allowed to fester and affect my clients – be it the RCE gravy train, ridiculous non-reading-of-applications-and-key-word-searches, or the oops-he’s-serious-and-appealed-I-better-actually-start-examining C R P, all of which is “examination quality” and expressly NOT the attempted twist of “patent quality.”

          The best place to start is for the Office to stop playing games and do the Fn job.

          Thanks and have a nice day.

          1. 23.3.1.1.1

            “My client’s”

            You don’t have any “client’s”.

            “Your metric and the executive agency choices for judging you ”

            Those are not at issue, you just were talking about “The examiner’s ability or lack thereof to perform quality work within a given time frame is not – not should it be – my client’s problem”. That has dck squat to do with metrics.

            “How the Office sets up its internal workings and how it manages – or mismanages is quite apart from the deal with the customers.”

            Not if they continually “mismanage” for years and years and decades specifically to meet congress’s expectations of an “open door for all applicants” and all the rest of the things that congress wants. At some point congress itself has to take some responsibility for what it is asking from the agency if the public isn’t happy. The agency is currently meeting congress’s wishes and managing properly within those expectations. They will continue to do so. If you have different expectations from the congress (or if you want the management to change how things are fundamentally managed towards) then you need to go to congress because they ultimately set the tone.

            Look anon, there are a lot of interlocking pieces that determine how the internal management is done. It isn’t done on a whim. One of the biggies is what congress is asking from them. Congress wants avg pending time down, boom, we’re doing COPA. Congress wants x, boom we’re doing y. If congress wants what you want, then we’ll be doing what you want. Until then, you might as well forget it pal.

            ““hey, this is your problem too.””

            Lol it isn’t your problem “too”. It is solely “your problem” or it would be if you were an attorney or inventor submitting apps. It isn’t my problem at all.

            “It is not – and the problem is that you (the personal and the royal You) seem to think that it is “OK” that internal metrics are allowed to fester and affect my clients ”

            You keep pretending to know what the metrics are. Go read the pap and tell me what “metrics are being allowed to fester”.

            1. 23.3.1.1.1.1

              Now you are just deep in the weeds, attempting to kick up dust, and not even pretending to be trying to address the issues.

              Come back again when you want to actually discuss these things.

    3. 23.4

      Alun, It would be good to actually state clearly that the reason compact prosecution does not work (and the reason for so, so many RCEs because new issues are raised) is BRI.

      I can only hope the upcoming conference fully, fully explores this issue because those of us in the trenches know that the band aids that have been applied to try to get compact prosecution to work are only partially successful. It is also my understanding that we are working against human nature in trying to get a lot more work/time from an examiner with given him or her credit.

      This needs to stop, and rules must be changed.

      1. 23.4.1

        that we are working against human nature in trying to get a lot more work/time from an examiner with given him or her credit.

        Don’t willingly assume the responsibility of the internal Office management systems.

  14. 22

    I’m very intrigued about #1. The primary utility I see in this is for “mail it in” primaries. Right now we do a notice of appeal with pre-appeal brief conference request letter to get a second set of eyes on office actions that are cursory, and if #1 is cheaper than the notice of appeal fee, this will be a game changer.

    Now, if only we can get the SPEs who don’t believe in compact prosecution to get on board with AFCP2.0.

  15. 21

    Proposals 1 and 5 are the only ones with legs. CPM is the best change you could make. Remove the need for constant 103 rejections when 103 is not the issue and you fix a lot of problems. I can’t tell you how much quicker we’d get to a result if you got to deal with 112 1st issues before having to do a search.

  16. 20

    As usual, if you remove software per se from the patent system, the ‘quality’ issues would likely clear right up.

    By its nature per se software is virtually immune to “quality” examination for the same reasons it is immune to quality jurisprudence; the vast majority of software written in the world is obscure, unpatented, and undocumented. Even when available for examination, software has huge inherent variations in organization and syntax in expressing given ideas.

    Can anyone imagine a process where the entire world’s literature had to be examined before a copyright could be established? It’s would be a fool’s errand.

    It’s time we recognized that computers are merely artificial minds, and what goes on within a mind, and mere expressions of those ideas, cannot be patent eligible. Once that mind sets itself to making or doing something in the world? That’s the purpose of the patent system….

    1. 20.1

      “As usual, if you remove software per se from the patent system, the ‘quality’ issues would likely clear right up.”

      Nonsense.

      “By its nature per se software is virtually immune to ‘quality’ examination…”

      Nonsense.

      “…for the same reasons it is immune to quality jurisprudence…”

      Nonsense.

      “…the vast majority of software written in the world is obscure…”

      What does that mean?

      “…unpatented, and undocumented.”

      So what? Is every, just as an example, internal combustion engine patented and documented? If not, should we stop issuing patents on internal combustion engines?

      “Even when available for examination, software has huge inherent variations in organization and syntax in expressing given ideas.”

      So?

      “Can anyone imagine a process where the entire world’s literature had to be examined before a copyright could be established?”

      You’re comparing apples and oranges. Not very persuasive.

      “It’s time we recognized that computers are merely artificial minds, and what goes on within a mind, and mere expressions of those ideas, cannot be patent eligible.”

      The silliness of this speaks for itself.

      1. 20.1.1

        >“It’s time we recognized that computers are merely artificial minds, and what goes on within a mind, and mere expressions of those ideas, cannot be patent eligible.”

        >The silliness of this speaks for itself.

        I echo this sentiment. Not only is this silly, but this is how people like Gingburg and Stevens think. It goes to a level of medieval thought and witch burning. Any judge that holds this view should be removed.

        1. 20.1.1.1

          The echo of one of my favorite words rings clearly:

          Anthropomorphication

          Machines really do not think. The attempt to revive the Zombie arguments of the Mental Steps Doctrine and apply that doctrine outside the scope of the human mind should be forcefully rejected.

          Until we give programmable toasters “human rights,” let’s retain humanity’s place in our laws.

  17. 19

    In the current system, the Examiner is Prosecutor, Judge, Jury and Executioner.

    The only way to cure the system is to make it adversarial, with a neutral judge.

    Set it up so that Intel hires and pays the searcher for AMD applications, that Astrozenica hires and pays the searcher for Pfizer applications and so on. That is likely to turn up the best art.

    Then have a highly competent government paid examiner review the application, claims and cited documents and issue an action….

    1. 19.2

      Perhaps the following would be more practical and get a similar effect.

      Separate search from examination as in the EU.

      Pay searchers a base salary plus a bonus for each abandonment attributable to their search results.

      Pay Examiner’s a base salary, but deduct something for every reversal whether during Pre-Appeal Review or Appeal.

      Of course the time delay in the appeal process is problematic here….maybe someone can come up with something better….

      1. 19.2.1

        I think it best if this replaced the count system entirely. This way Examiner’s would likely devote enough time to get it right but would be motivated to not spend extra time by some additional reward for disposition number….

  18. 18

    Change the access of “clients” or “stakeholders” to the advisory committee or to policy makers to make sure nobody at that table is in the business of profiting from IP – read here, for example, IBM.

    ID industries/startups that vitally depend on patents for protecting new products/obtaining financing to back new products. Here I see

    1. Pharma
    2. Startup organizations of any type.
    3. Universities

    Also, limit the hiring of Directors to this constituency.

    1. 18.1

      First let’s address the bigger question – increasing quality may require increasing costs. Despite some people’s SUBJECTIVE belief that quality should be increased, is quality reasonable for the price we pay, and is the quality reasonable? Presumably countries that have inexpensive registration systems believe (or have data) indicating such a system is in their best interest.

      So, show me the studies proving that increasing costs to increase quality will provide a net (economic) gain. In other words, don’t cry “we need more quality”, actually PROVE and SHOW that we need more quality.

      1. 18.1.1

        I can tell you by experience we need more quality. For instance, I’m looking at a rejection now that’s so bad I can’t believe we’re having to respond to it. How bad is it? The claims say “A” and the Examiner points to a reference as disclosing A, where the reference discloses “not A” (that is, exactly the opposite of A).

        However, I cannot “prove” we need more quality.

        1. 18.1.1.1

          Proposal 1.

          WOW. Stakeholders are finally getting it. The pre-pre-appeal. It was talked about for years on both sides, a long term goal, but they finally managed to push it through.

          No applicant is going to use this for improper allowances (for obvious reasons that are denied often on this board). They will use it for rejections. It will be a nice stick to make sure that there are no “hang ups” on the PTO side from your client getting a patent on *whatever* (whether entitled or not).

          Expect the allowance rate to tick upwards a bit when this goes in. Good news right… lol.

          Absolute corruption by “stakeholders.” Probably unfixable at this point.

          This is why I left the PTO. As a wise man once said… Its better to be shoveling $h@t than being forced to eat the $h@t.

          1. 18.1.1.1.1

            I wonder how high the allowance rate will go, due to “stakeholder” influence, before the public starts to realize that patent examination at the USPTO has been corrupted into nothing more than a registration system.

            1. 18.1.1.1.1.1

              Since the ENTIRE multi-Billion Office system is paid for by these (illicit?) “stakeholders,” don’t you think they are doing it wrong if instead they could have an actual registration system for a very very small fraction of what they are paying?

              Sheer size alone speaks against your consp1racy theory.

              1. 18.1.1.1.1.1.1

                Unless, of course, the current corrupted system benefits those “stakeholders” more than a registration system would.

                Conspiracy theory? Ha.

                Use your head.

                1. Hey I’m trying to, believe me I want to be on your side on this – that multi-Billion dollar pricetag keeps getting in the way though. The numbers just don’t get you there.

        2. 18.1.1.2

          “For instance, I’m looking at a rejection now that’s so bad I can’t believe we’re having to respond to it.”

          I responded to a 102(b) rejection yesterday where the examiner took Official Notice that one of the claimed features was old and well known and concluded, that because the feature was old and well known, it would have been obvious to use it in the reference.

          OA by a junior. Signed by a SPE. How much do you want to bet that both of them got “outstanding quality” ratings and bonuses last year?

      2. 18.1.2

        eoIna,

        Do you have a link to these “registration systems work for us” information?

        Thanks.

    2. 18.2

      about 20 percent of the comments on this thread posted since my plea to provide some evidence that (although increased quality can always be paid for) we need more quality, and no one will address the question . . .

      hmmm . . .

      before we rush ahead (as we always do in Congress) and solve a non exitent problem, show me that there is indeed a problem, and increasing costs to increase quality will lead to a net gain…

      I suspect no one can, because no one has ever looked at the question. In which case, we’re potentially just guessing to solve a problem that just isn;’t there. And we know how well that approach has gone in the recent past . . .

      1. 18.2.2

        I have in the past floated the idea that the Billions of dollars supplied directly by innovators may be better spent elsewhere with a much different system.

  19. 17

    Examination, prosecution, was never about the BEST job – everyone knew (but seems to have forgotten) it’s the BEST job in the TIME allotted. If you want a better searched application, and better searched means spending twice as much time searching, guess what – it’ll cost 2X the price. This isn’t rocket science.

    If you want a super-duper-100%-litigation-proof patent, expect to pay a USPTO search fee equal to the 99% percentile fee an infringer pays an outside searcher to uncover prior art for litigation. Are you prepared to pay an $8k search fee, plus fees to cover the Examiner’s time to discuss all the relevant references (something searchers don’t even do on the outside because of discovery concerns).

    Are you willing to pay the USPTO $12k for the search and examination fee, per office action (when the OA is necessitated by claim amendments)? If not, you pretty much already have the amount of “Quality” you’ve paid for!

    This is the point no one is addressing – quality and price go hand in hand – whether your talking a bottle of wine or a PTO examination. Maybe this is all the quality you are going to get for this price point. And maybe this is sufficient for 90% of the applicants/patentees, and ever though prices COULD be raised and quality COULD be increased, that shouldn’t be done.

    1. 17.1

      You have a good point, but the real world tells us that without competition rarely do you end up with good solutions.

      We need to put some competition into the mix for the examiners. Don’t want to torture them, but let them know that they may be competing against someone else.

    2. 17.2

      To the contrary Eoina, examination and prosecution has always been about the BEST job, and the “time allotted” aspect is an artificial one, created solely within the Office for Office managerial control.

      The issue is – and will always be – just how “best” is defined. It is well known that “best” will not – and cannot – be “perfect.” It is completely illusory to even entertain such a notion. Once it is understood that best won’t be perfect, figuring out what best should be can be less-emotionally discussed.

      Further, Applicants pay for a completed quality examination and really don’t care – nor should they have to – how the Office “divies up” time allotments. The Office is NOT run on a Billable Hour model, but rather is run on a flat rate model. It is entirely an Office decision to treat every application (internally, as externally there are things like extra claim fees) as a “same-size” widget. I would be perfectly happy with (and have proposed many times) a spectrum of assessment of an application based on such things as complexity or how crowded an art field is, to NOT have a “single widget size” mentality. But you cannot say things like “you get what you pay for” and tie that to time when THAT is simply NOT what was paid for.

  20. 16

    Dennis, as we must all appreciate, the 1st action basically is a claim construction action where the examiner construes the claims broadly – as broadly as the claim language permits. The 1st response by the applicant is intended to clarify the claim construction one way or the other – either by argument (the reference does not teach feature X) or by claim amendment to clarify the claim language.

    But after clarification, it is entirely inappropriate for the examiner to then simply issue the case. Typically, the examiner will issue a final action stating that the reply raises new issues. This forces the appeal or the RCE.

    What we need is both procedural reform and legal reform to allow this process to have at least 2 actions and 2 searches before a final rejection. This has to be built into the system and the fees increased appropriately.

      1. 16.1.1

        The after final practice has grown robust, indeed.

        I simply say we need two searches — a first with BRI. The second with the claims as clarified.

        Regarding the first search, the examiner should search without having read the specification. See, e.g., In re Morris for the procedure.

        1. 16.1.1.1

          The standard operating procedure *is* for two searches — the first with the claims as originally filed (“BRI”) and the second with the claims as amended (“clarified”) by the applicant’s response after the first office action.

            1. 16.1.1.1.1.1

              37 CFR 1.112

              I keep thinking I must have misunderstood your comment/proposal in some way.

        2. 16.1.1.2

          Regarding the first search, the examiner should search without having read the specification.

          Since claims must be read and construed in light of the application, this has got to be the silliest suggestion by a patent attorney.

          And that’s saying a lot.

          1. 16.1.1.2.1

            Since claims must be read and construed in light of the application, this has got to be the silliest suggestion by a patent attorney.

            Post issuance.

            Post issuance BRI isn’t used either.

              1. 16.1.1.2.1.1.1

                Pre AND Post issuance.

                If you think otherwise, you’ve been doing it wrong.

                And the only reason it is pre is because the office has policy to, and the office could change the policy.

                1. Wow – “could change”….?

                  You are so badly wrong – you are charged with examining applications – by law – not charged with examining only claims.

                  This then – the rampant misunderstanding (and pride in so misunderstanding) of the role of the examiner – by examiners – is a root cause of why examination quality is so p1$$ p00r.

    1. 16.2

      I agree wholeheartedly with Ned’s conclusion.

      Though I disagree with the blanket assertion that a second action allowance is entirely inappropriate.

      I also think first action allowances can be entirely appropriate. If I invented cold fusion, I invented cold fusion and there is no cold fusion in the prior art. First Action allowance.

      If that’s appropriate, why would a second action allowance after I clear up some alleged ambiguity in the definition of cold be inappropriate?

      1. 16.2.1

        Les, in some cases, with well drafted claims and no dispute about the prior art, first action allowances are appropriate. What I am trying to say is that we should not simply receive a final after our first response. We should have the right to have a second search and a second action on the merits.

        1. 16.2.1.1

          Yeah, I got that Ned. That’s the part I agree with.

          Its the bit in the middle of your post that I take issue with.

      2. 16.2.2

        I also think first action allowances can be entirely appropriate. If I invented cold fusion, I invented cold fusion and there is no cold fusion in the prior art. First Action allowance.

        If you invented cold fusion and the claim issued on the first action that examiner should be fired.

                1. In my hypothetical, I did invent cold fusion. Credibility is not an issue. The Examiner is skilled in the art of particle physics and understands my application and all it discloses and it is clear to her that my claim to the invention is credible.

                2. ex,

                  As Les points out, the invention is real (credibility is met).

                  The shoot from the hip response of Random simply evinces a Just Say No type of mindset of someone mired in the pre-Kappos era.

                  “Reject is not the same as Quality.”

          1. 16.2.2.1.2

            Why is that exactly?

            Because the claims will be overbroad? You can’t invent cold fusion. You can invent a particular means of achieving cold fusion.

    2. 16.3

      > Dennis, as we must all appreciate, the 1st action basically is a claim construction action where the examiner construes the claims broadly – as broadly as the claim language permits. The 1st response by the applicant is intended to clarify the claim construction one way or the other – either by argument (the reference does not teach feature X) or by claim amendment to clarify the claim language.

      Well, here, we agree.

      I’ve come to look at patent examination as three stages:

      (1) Discussion of the point of novelty;

      (2) Discussion of how the claim language recites that point of novelty; and

      (3) Discussion of how the claimed point of novelty compares with the prior art.

      If the applicant wins on all three, the case is allowed. If the examiner wins on any of them, the applicant has to try again at that stage, or back up to an earlier stage.

      This is how it goes in every case. And it’s weird that the Non-Final / Final / Non-Final / Final sequence is so disconnected from that process. It’s like there are two entirely different administrative frameworks grafted onto the system and running concurrently: the practical one, and the formalistic one.

      > What we need is both procedural reform and legal reform to allow this process to have at least 2 actions and 2 searches before a final rejection. This has to be built into the system and the fees increased appropriately.

      Well, here’s an idea: How about doing away with “non-final” and “final” status altogether? The applicant just pays a fixed fee for every office action, and the applicant and examiner can work through the stages above until they reach a conclusion or an appealable impasse.

      1. 16.3.2

        David, your three stage analysis of patent examination is succinct and jives with my own experience. The most productive interviews also go through those very steps (with a particular focus on the second).

        As to the differentiation between non-final and final rejections, my understanding is that the mechanism is in place primarily to prevent examiners from profiting off of bad rejections; the examiner is forced to send out a new zero-credit action when a mistake is made (and pointed out by the applicant). The RCE system certainly has its own drawbacks, but it may be the lesser evil.

  21. 15

    Access to more prior art databases, better searching tools and improved searching instructions for examiners.

    1. 15.3

      Fish,

      We have that. It’s called the European Patent Office.

      They have superior patent search engines, integrate NPL searching into the process, and teach searching the proper way (narrow to broad rather than broad to narrow). We experts on the outside mimic the EPO system of searching.

      There are definitely individuals at the USPTO who are better than the average EPO searcher, but when considered as a whole, the folks on that side of the Atlantic perform better examiner based searches.

      Btw, with regard to #2 (automated searching), there is no magic system out there. The free market has been trying to create automated systems for twenty years and none of the systems provide more than a level of guidance that could be obtained by a simple “finding” query limited to title data.

      1. 15.3.1

        A little OT, but PS DIP, what are your thoughts about the current implosion and management fiasco going on over there?

        1. 15.3.1.1

          Wow, that is OT… Pretty crazy the fight they are having over volume of issued patents, money generated by the volume, and how to distribute the money. Very telling that the examiners rejected bonuses a couple of years ago based on this “extra money” since it would set poor precedent and create a very warped incentive system.

          1. 15.3.1.1.1

            I think their issues are far more extensive and relate to the overwhelming animosity between the rank and file examiners and those running the Office.

            I started my career in a rather difficult blue versus white collar situation, and have friends who are employment and labor attorneys, but the impending meltdown there at the EPO is more “impressive” than anything I or my friends have seen.

  22. 14

    I’ll say this again. Real world metric.

    Can someone find better art and/or apply the art better?

    That is all there is in one sentence.

    1. 14.1

      And again, the way to do this is outsource samples. Reward the best rejection or allowance.

      1. 14.1.1

        Or outsource a sample of allowance. The examiner gets docked if the outsourcer can find a good rejection.

        1. 14.1.1.1

          In which case, we return to “it’s safer to reject than allow”

    2. 14.2

      Can someone find better art and/or apply the art better?

      What do you do when the claims don’t match the spec, which is better?

      If the spec says bananna and the claim says fruit, the best art to cite, from a pre-allowance perspective, is an orange. I doubt you would agree with that, but that is true.

      1. 14.2.1

        Why is that true?

        Oh, let me guess, so that when the applicant amends the claim to recite a banana then you can cite a new reference, make the rejection final, and wait for your tickets on the RCE gravy train.

        1. 14.2.1.1

          If it’s a point of novelty to the inventor, a competent practitioner would put “banana” in a dependent claim when the application.

            1. 14.2.1.1.1.1

              True dat. Of course the reality is that examiners 1) don’t read the app, 2) search only the independent claims, 3) and stop searching once they find any reference close enough to be stretched beyond recognition to reject the independent claims, and 4) hand wave at the dependents. So when you roll up that dependent banana claim into the independent the examiner either 1) tries to pull a fast one and enter a new grounds and make it final and hope that he/she is not called on it and if called on it hope that the irreparably broken petitions process comes to their rescue and fails to consider the petition before the 6 months are up, and then collect tickets on the RCE gravy train or 2) sends a new non-final and starts the whole process over again.

              Take it from this competent practitioner, that scenario plays itself out a lot. A lot.

              1. 14.2.1.1.1.1.1

                ” the irreparably broken petitions process comes to their rescue and fails to consider the petition before the 6 months are up”

                You keep talking about this as if it is fact. I’ve only ever had like 3 petitions filed in my cases in almost 9 years or so. All 3 were decided with time (though not a huge amount of time) to spare.

                1. “You keep talking about this as if it is fact.”

                  It is a fact.

                  “I’ve only ever had like 3 petitions filed in my cases in almost 9 years or so.”

                  Lulz. Why do you think that is? Could it be because it takes too long to get one decided? Coupled with the fact, yes fact, that the SOP at the Office of Petitions is, much like the examining corps, to “build a record” (i.e. “Eh, just go ahead and deny the petition and see what they come back with”)?

                  “All 3 were decided with time (though not a huge amount of time) to spare.”

                  What were the petitions for? How much is “not a huge amount of time to spare”? If I get a final, and it’s improper, and I file a response asking the examiner to withdraw the finality (because Rule 181(c) requires me to request reconsideration of the finality before I can petition), and the examiner refuses (because the examiner’s hoping to board the RCE gravy train), and then I file my petition and it’s assigned to one of those “build a record” petitions examiners who denies my petition, how much “time to spare” in my 6 month statutory period is going to be left?

                  I have timely filed numerous petitions to change inventorship during prosecution and every one has been denied. You wanna guess why? Because none of them were decided in time before the case was allowed and so my petition to change the inventorship of the application is denied on the grounds that I need to file a petition to change inventorship of a patent. Even though my petition to change the inventorship of the application was timely filed during prosecution with plenty of “time to spare” to decide it before the notice of allowance was sent.

                  So yeah, the petitions process over there is irreparably broken and essentially useless. It’s a fact.

                2. “What were the petitions for? How much is “not a huge amount of time to spare”?”

                  Two were about restrictions and the other happened the other day, I don’t even remember about what, it was irrelevant more or less to my job. I “won” the two, and the third I think was granted but it wasn’t like I “lost” since it didn’t really affect much.

                  They had about 2 months or so left. And they filed at like month 2 usually. 2 month turn around for a petition isn’t thhhhhhaaaat bad.

                  ” If I get a final, and it’s improper, and I file a response asking the examiner to withdraw the finality (because Rule 181(c) requires me to request reconsideration of the finality before I can petition), and the examiner refuses (because the examiner’s hoping to board the RCE gravy train), and then I file my petition and it’s assigned to one of those “build a record” petitions examiners who denies my petition, how much “time to spare” in my 6 month statutory period is going to be left?”

                  I don’t know brosef, I’ve never had someone contest my finality on petition cause I’m a champ like that.

                  Can’t you just file your AF, requesting reconsideration along with the AF, and file the petition when the AF comes back?

                  “I have timely filed numerous petitions to change inventorship during prosecution and every one has been denied. You wanna guess why? Because none of them were decided in time before the case was allowed and so my petition to change the inventorship of the application is denied on the grounds that I need to file a petition to change inventorship of a patent. Even though my petition to change the inventorship of the application was timely filed during prosecution with plenty of “time to spare” to decide it before the notice of allowance was sent.”

                  You could bring that up with the guys in the office of petitions. It may be a systemic problem over there that could be fixed.

                  Iirc some petitions go to the office of petitions ya know. Others go to the “director” and his henchmen. The ones that go to the office of petitions might be worse off than the ones that go to the TC director’s office.

                3. I should add if the majority of your gripping is about the inventorship thing that doesn’t sound “irreparable”. And I think you might be doing it “wrong” when it comes to requesting withdrawal of finality.

          1. 14.2.1.1.2

            If it’s a point of novelty to the inventor, a competent practitioner would put “banana” in a dependent claim when the application.

            If it’s a point of novelty the bananna can’t be anywhere else but the independent. It’s people claiming fruit when they invented banannas that lead to most of the patent problems today.

        2. 14.2.1.2

          Oh, let me guess, so that when the applicant amends the claim to recite a banana then you can cite a new reference, make the rejection final, and wait for your tickets on the RCE gravy train.

          It has nothing to do with counts, it has to do with the fact that you need to get a bananna into the claim and if you cite a bananna that won’t get it in.

          1. 14.2.1.2.1

            I suppose I should be more clear than that – if the invention is in the fact that he invented bananas, he isn’t entitled to claim fruit, and you have to get fruit out of the claim and banana in. If the invention is elsewhere, the fact that you cited an orange when the spec said banana doesn’t matter.

          2. 14.2.1.2.2

            “It has nothing to do with counts, it has to do with the fact that you need to get a bananna into the claim and if you cite a bananna that won’t get it in.”

            What? If I disclose a banana and claim a fruit, you’re going to cite me prior art disclosing an orange when you have prior art that discloses a banana?

            You’re required to cite the best reference at your command. See Rule 104. Here’s a clue for you: the best reference at your command is the one that all by itself anticipates and/or renders obvious the largest number of the claims. Pretty simple.

            1. 14.2.1.2.2.1

              You’re required to cite the best reference at your command. See Rule 104. Here’s a clue for you: the best reference at your command is the one that all by itself anticipates and/or renders obvious the largest number of the claims. Pretty simple.

              The best reference is the one that leads to patentable subject matter, if any, the quickest. I can spend three rounds arguing about why the claim needs a banana followed by you appealing on that ground, or I can cite the orange and solve the issue in one round with no argument.

              1. 14.2.1.2.2.1.1

                If you’re disclosing a banana and claiming a fruit, the orange citation already reads upon the maximum number of claims, because you’re disclosing a banana but claiming a fruit.

                I think you’re misreading that rule with the one actually in play here – you don’t import limitations from the spec into the claims. You want me to reject the maximum amount of the specification that I can, which is simply not part of my job for at least the reason that specifications can contain multiple inventions and continuations, divisionals and restrictions exist – not everything in the spec is my business and only you know how you’re planning on proceeding within the office.

                Regardless, that rule is within the context that I also have to make the best argument. Even if you had a single claim including a banana, I could still cite the orange reference to every other claim if I subjectively thought it made a stronger case. That happens all the time – Examiners will pass up banana references that are 102(a)s for oranges that are 102(b)s, if for no other reason than they both fulfill the limitation and you can’t swear behind the orange reference.

  23. 13

    If patent applications are to be granted or refused according to the Law as defined by statute and interpreted by the Courts, what is the purpose and effect of the USPTO adopting a seperate “Patent quality” metric ?

    1. 13.1

      Quality control is both a science and an art. In a given week we have something like 10,000 rejections being mailed from the USPTO and 6,000 allowances. The question is what exactly should the USPTO be doing to ensure that those rejections and allowances are correct actions for each case without excessively raising costs.

      1. 13.1.1

        Dennis, you speak of “quality of examination” which is subtly different from what is being introduced/put forward by the USPTO which is an evaluation of “Patent Quality”. I do like your reference to “correct actions”, as it brings back fond memories of my “administrative law” courses.

        The USPTO has purposefully and repeatedly made reference, explicitly, to the concept “Patent Quality”. I am wondering, why create/refer to a separate standard or metric? and what could the USPTO mean when it claims it performs “evaluation of Patent Quality”? (see Proposal 4, under the “Concept” : Perception/Definition of Patent Quality)

        Can any standard, other than the Law as defined by statute and as interpreted by the courts, by which the USPTO is bound, have any influence on the granting or refusal of patent applications (if the USPTO is to restrict itself to legal activity)?

  24. 12

    In my mind, the quality metrics are likely the most important. Examiners have limited time and resources but will make efforts to ensure that they succeed with regard to measurable outcomes. I.e., once we start measuring some quality metric performance along that metric will very likely improve. The hope is that the measure will actually correlate with quality.

    1. 12.1

      How about a real quality metric like in the real world. Give some percentage of the patent applications to outside sources to examine and compare the results. If the outside sources found better rejections, then you have a low quality. The question is: can someone find a good rejection or better rejection that you didn’t?

      The quality that they need to search for is: did you find the best art and apply it correctly to the claims. That is it.

      Sorry if it offends, but the rest of this is just nonsense.

      1. 12.1.1

        “If the outside sources found better rejections ***IN THE SAME TIME PERIOD**** , then you have a low quality.”

        Prosecution is never the best rejection, the best examination, the best job – it’s the best IN THE REASONABLE TIME (AT REASONABLE COST) ALLOTTED. That’s why NO rational patentee EVER expects the Examiner to find in 6 hours, the same art an infringer will find, who is willing to spend $10,000 on a search.

        1. 12.1.1.1

          Or a defendant will spend hundreds of thousands or millions to find. Thank you for your common sense.

          For those saying that Examiners should be punished if they are wrong, how about attorneys are punished if their amendment doesn’t overcome the art? If they were in danger of losing their bar membership, they might think twice before just filing crap so they can bill the client.

    2. 12.2

      “In my mind, the quality metrics are likely the most important”

      I’m inclined to agree with you there, however the metrics appear to be just fine. Did you happen to look through the pap of late?

        1. 12.2.1.1

          I cannot speak for the reason for those numbers anon. It may be that 80% of that is new art put on the record by the person bringing the IPR. If so, yes, those are good numbers.

          And remember, IPR’s are generally only for the “important” and “contentious” cases, and those may well self select for susceptibility to review.

          1. 12.2.1.1.1

            6, agree that “important” patents are IPRed. But the 90% invalidity rate is not rationally explainable. The PTO cannot, repeat, cannot be doing that bad a job searching prior art.

            1. 12.2.1.1.1.1

              “The PTO cannot, repeat, cannot be doing that bad a job searching prior art.”

              Do you mean they physically cannot do that bad of a job, or do you mean they cannot justify doing that bad of a job?

              Because I will have to disagree with you on either. They certainly can do that bad of a job. In any given case the best searching nearly always takes place in the 15th hour of searching on my cases if I let the search drag on because by then I’m word searching like a fcking champ, using terms of art and all that, and have citation searched like a mo. However, the avg search time I’m permitted to utilize is around 8 hours. Or maybe 10 IF the signatory is capable of supporting compact prosecution.

              Likewise, that is totally justifiable. There are at least 10 thousand references that are generally at least tangentially related to any given app of mine on avg. Guess what? I usually only get through 3-5k. The art has exploded (that’s your “innovation boom” lol). It’s more than twice the size that it was when I got here, and all the “hot” subclasses are ginormous now. There just ain’t no two ways around that, and word searching doesn’t always pick up the pieces.

              1. 12.2.1.1.1.1.1

                6, I am thinking long and hard on this.

                I know there is some self selection going on with IPRs. Only asserted patents tend to be involved, and then, only asserted claims.

                But this suggests that 90-95% of those claims are invalid over art not considered by the examiner – assuming there is no anti-patent bias in the PTAB.

                When the Director turns to quality, the reason for these numbers should be discussed. If the problem is in searching in some manner, that needs to be fixed.

                (Just as an aside, I have seen BRI cause the examiner to search nonsense and totally avoid the invention as actually claimed. I have also seen the examiner issue these claims after an argument. As such, these claims have not been adequately searched by any examiner.)

                1. “But this suggests that 90-95% of those claims are invalid over art not considered by the examiner – assuming there is no anti-patent bias in the PTAB.”

                  Not necessarily. Though that may be the major cause. There may be a few instances where the examiner misinterpreted things. There may be some instances where the board is practically reversing the examiner even on his own determination of a 103 or whatever. There may be lots of other situations. Point is there are a lot of ways for a claim to die in the West.

                  Plus, are those numbers on a per-claim basis (as in all the claims in 95% of cases go down) or on a per patent (as in one claim in 95% of cases go down) basis?

                2. “Just as an aside, I have seen BRI cause the examiner to search nonsense and totally avoid the invention as actually claimed. ”

                  Of course, happens all the time. I just got out of a QEM meeting where a primary examiner suggested just this for a case. And, in a pinch when a signatory is demanding a rejection I’ll send someone somewhere to get some nonsense art that has nothing to do with the invention that none the less anticipates a broad claim or two.

                  “As such, these claims have not been adequately searched by any examiner.”

                  That’s debatable. Perhaps the examiner did in fact search the areas that are relevant but found nothing. Or perhaps he was not skilled enough to figure out that area. Both happen, and both are legit from the perspective of an agency just going about its business the best it can. We don’t do perfect work. Period.

  25. 11

    The elephant in the room, of course, is that the PTO has no coherent approach for conducting a meanginful examination of the ever-expanding and infinitely large set of claims that recite and/ protect “new” information or “new” information processing logic. That’s not the PTO’s fault alone but it is their fault for not even trying.

    Is there a database of mathematical relationships or flowcharts against which new mathematical relationships and flowcharts can be readily searched and compared? What species of “information” are unpredictable or unexpected? What species of information “process” in unpredictable or unexpected ways in view of the various genuses of information and logical processes that exist in the prior art?

    As long as the PTO continues to dance around these core issues (and others) the “quality” of the patents that it is granting is going to continue to scrape the bottom of the barrel and the farce will continue.

    1. 11.1

      >the ever-expanding and infinitely large set of claims that recite and/ protect “new” information or “new” information processing logic

      We to put a clamp on innovation. Those ever expanding innovations are just making darn difficult to keep up. I know, let’s pass more reform legislation.

    2. 11.2

      “…but it is their fault for not even trying.”

      Word.

      Of course, that’s the approach of the lifer management over there. Business as usual.

      Remember when they said they couldn’t hire their way out of the backlog? Did they even try? No, they didn’t. They didn’t even want to try. They just wanted to continue doing business as usual. They wanted to just say, “Well, we can’t hire our way out of the backlog” and expect everybody to just say, “Well, gee, they say they can’t hire their way out of the backlog, so I guess we should just leave them alone.”

      “As long as the PTO continues to dance around these core issues (and others)…”

      They’ve been dancing around these core issues for decades. And the consequences for the top PTO lifer management has been what? Promotions for all!!!!!!!!! YAAAAAAAYYYYYYYYYYYYY!!!!!!!!!!!!

    3. 11.4

      The elephant in the room is that people expect to feed an elephant for peanuts.

      Examination, prosecution, was never about the BEST job – everyone knew (but seems to have forgotten) it’s the BEST job in the TIME allotted. If you want a better searched application, and better searched means spending twice as much time searching, guess what – it’ll cost 2X the price. This isn’t rocket science.

      If you want a super-duper-litigation-100%-litigation-proof patent, expect to pay a USPTO search fee equal to the 99% percentile fee an infringer pays an outside searcher to uncover prior art for litigation. Are you prepared to pay an $8k search fee, plus fees to cover the Examiner’s time to discuss all the relevant references (something searchers don’t even do on the outside because of discovery concerns).

      Are you willing to pay the USPTO $12k for the search and examination fee, per office action (when the OA is necessitated by claim amendments)? If not, you pretty much already have the amount of “Quality” you’ve paid for!

      1. 11.4.1

        To the contrary Eoina, examination and prosecution has always been about the BEST job, and the “time allotted” aspect is an artificial one, created solely within the Office for Office managerial control.

        The issue is – and will always be – just how “best” is defined. It is well known that “best” will not – and cannot – be “perfect.” It is completely illusory to even entertain such a notion. Once it is understood that best won’t be perfect, figuring out what best should be can be less-emotionally discussed.

        Further, Applicants pay for a completed quality examination and really don’t care – nor should they have to – how the Office “divies up” time allotments. The Office is NOT run on a Billable Hour model, but rather is run on a flat rate model. It is entirely an Office decision to treat every application (internally, as externally there are things like extra claim fees) as a “same-size” widget. I would be perfectly happy with (and have proposed many times) a spectrum of assessment of an application based on such things as complexity or how crowded an art field is, to NOT have a “single widget size” mentality. But you cannot say things like “you get what you pay for” and tie that to time when THAT is simply NOT what was paid for.

        1. 11.4.1.1

          ” I would be perfectly happy with (and have proposed many times) a spectrum of assessment of an application based on such things as complexity or how crowded an art field is, to NOT have a ‘single widget size’ mentality.”

          This is the true elephant in the room. Every application should have its own hours/BD. The PTO has all the data it needs to figure it out. They don’t want to. Why? Ask them.

            1. 11.4.1.1.1.1

              Also because it would impact their justification for the fee schedule. And why would they want to actually provide “more examining resources for more pages and claims” when they’ve been charging, collecting, and spending those fees for decades without ever actually providing examiners and applicants what was paid for?

            2. 11.4.1.1.1.2

              BTW, I don’t think it would take much work. Initially there would have to be some assessments, estimates, and modelling done, but like I said, they have all the data. They know how many pages are in the cases, how many claims, how many references are submitted, how many prior art references are in the mandatory search, etc. They know all this already. The only thing left to do is have somebody write the algorithm to calculate the hours/BD.

              1. 11.4.1.1.1.2.1

                (I was trying to be “nice” with the bone of “it’s hard work” – you are absolutely correct)

  26. 10

    Long time, 1st time.
    A few thoughts.

    1) Good idea. Should be implemented much like replay challenges in sports. If applicant wins, they get a new action & according patent term extension at allowance & no fee for the review. If they lose, they pay fee &/or the time keeps running to respond with little to no adjustment for the extra review. Something like that.

    2) Probably of minimal use unless some new auto-search software is developed. PLUS is awful. Applicant IDS sometimes helps, but getting 50 or 100+ refs is useless. The old idea of applicant submitting the most relevant art they know of could help (or a prelim. search by applicant), but that ship has sailed. Not happening. So we are stuck where we are. Examiners need to learn the art better. More emphasis onthis & less on text searching would help.

    4) Something I know all too well about. What is considered to be an “error” by the PAP is far different from a “bad” action the applicant, or any normal person, would consider to be an “error”. E.g., if a 102 is made & the write-up is cr@p – no explanation, points to embodiments that don’t show the limitations, etc. – most of us would consider it to be an error. According to the PAP, it would only be an error IF a proper 102 rejection could not be made with the refernce. Doesn’t matter if the actual rejection was proper, just what COULD be. THAT needs to change.
    Further, OPQA sends back a lot of cases as “needs attention” (probably as many if not much more than the # of errors) that are not recorded as “errors” but are “bad” in one way or another. Maybe like the example, above. Maybe a badly explained 112 or 101. Things that are definately not correct and proper but do not raise to the PAP level of “error”. Unfortuantely, all too often these “needs attention” cases are never given to the examiner (maybe by the TC or maybe the SPE – varies) so they never even find out that they are doing things incorrectly. They can be used as a good traswining tool, but most examiners never see them.
    Now, I am not saying that all these things need to be errors. But they are things that need to be improved if real quality is to be improved & not just looking at the current error rates.

    1. 10.2

      Mikki, good comments on 2, the IDS.

      We need the Director very proactive in changing rule 1.56 so that no longer requires a “duty of disclosure,” and to actively limit the number of references one is entitled to disclose.

      When I 1st started, we normally submitted no more than 5 to 10 references that we obtained from professional searches, and supplemented that when we received new prior art from foreign applications. I would advocate exactly this as a limit.

      1. 10.2.1

        No freaking way – not with the risks involved with ANY new art (not of record) in any number of post grant proceedings.

        Ned – you are on a tear of absolutely anti-patent posts today.

    2. 10.3

      1) As with replay challenges in sports, there needs to be a significant risk to practitioners to prevent abuse: something along the lines of if the applicant loses a review, the applicant waives the right to enter further arguments/amendments after the current/next non-final rejection. Effectively, a upheld non-final would be automatically turned into a final and an upheld final would allow the examiner to go final with the first rejection after RCE/CIP/CON/DIV.

      1. 10.3.1

        Given that in 75% of the cases in which a pre-appeal request and/or an appeal brief is filed the examiner re-opens prosecution, I like the odds. So bring it on.

        Imagine what that percentage would be if applicant were allowed to actually participate in the pre-appeal and/or appeal conference.

        Be careful what you wish for.

      2. 10.3.2

        Replay in sports challenges does not involve the level of significant risk you speak of.

        You don’t forfeit the game by losing a challenge.

        ex – your lack of “balance” is undermining your ideas.

        1. 10.3.2.1

          A penalty of one “free” office action for being wrong is what an examiner faces with each word of every rejection, but it’s too heavy a cost for an applicant’s wholly and entirely incorrect request for review?

          1. 10.3.2.1.1

            “A penalty of one ‘free’ office action for being wrong is what an examiner faces with each word of every rejection…”

            Overly dramatic much? I’ve gotten plenty of those “free” OA’s. And my experience is that they’re worth just about as much as what I paid for them.

            Often times the examiner refuses to withdraw what they know is a bad rejection in the hopes that the 26,000+ ex parte appeal backlog and the useless petitions process will “persuade” the applicant to file an RCE. It’s only when the applicant calls shenanigans that the examiner issues that truly awesome “free” OA.

            As I noted above, in 75% of the cases in which a pre-appeal and/or appeal brief is filed the examiner re-opens. So applicants essentially pay $800 for some of those “free” OA’s. How about we make a deal? Every time I file a pre-appeal request and/or an appeal brief, and the examiner re-opens, the examiner personally refunds my $800. That way my new OA is truly “free.”

            Sound good?

  27. 9

    I think 6’s ID has been hacked. I agree with everything he has said in this thread. Someone keep an eye out for four guys on horse back and someone with a brass Vuvuzela.

  28. 8

    “Review of Current Compact Prosecution Model and the Effect on Quality: The USPTO is considering the current “compact prosecution model” and is particularly concerned that so many cases result in either an RCE (Request for Continued Examination) or appeal to the PTAB (Patent Trial and Appeal Board). Are the better mechanisms to more quickly and easily get to a resolution of a valid patent being issued or – if not – the application being abandoned.”

    I hate to break this to you, but while the higher ups are at some meeting with you guys discussing this, there are irl TC directors and spes on the ground are not gung ho about getting to abandonment/issue even after doing so was added to the compact prosecution guidelines and we’re supposedly obliged to do that to get “excellent” as our quality review. This reform was implemented 3 years back, yet on the ground hardly anything changed. The reason appears simple. Ignorance and lack of skill. Ignorance of this even being a large change and having been implemented. And lack of skills needed to do that sort of compact prosecution because it isn’t the traditional “just send n action” and nobody bothered to train people in how to ID allowable subject matter and end the case (that is difficult to teach I might add). Both ignorance and especially lack of skill take a loooong time to cure throughout the whole corps. They take even longer if the management isn’t even bothering with it.

    1. 8.2

      The SPE mentality of, “Oh, I see all the claims are rejected, where’s my pen I gotta sign this!!!!” coupled with the 26,000+ ex parte appeal backlog coupled with the irreparably broken and useless petition process coupled with a generous topping off from the RCE gravy boat are the problems over there. As long as the examiners, SPE’s, QAS’s, and all the other lifer GS-15 know-nothing-do-nothings are given unlimited opportunities to get it wrong, and be rewarded for getting it wrong, over and over and over and over, nothing’s going to change.

      Don’t get me wrong, I appreciate the lip service, but old habits die hard. And getting bonuses for doing “record breaking outstanding quality in record breaking outstanding quantity” is the oldest habit in the PTO.

      Why doesn’t the PTO tell us what percentage of the examining corps got outstanding quality ratings last year? And then explain how when all those examiners are being told they are doing “outstanding” quality work, they need all these “quality initiatives.”

      1. 8.2.1

        I agree with you that at the examiner level any genuine changes would not be accomplished simply by shifting rules but instead would require an effort to make a change in the culture.

        1. 8.2.1.1

          any genuine changes would not be accomplished simply by shifting rules but instead would require an effort to make a change in the culture.

          I am entirely sure that the irony was not intended, given the “culture” of the blog for nine years and running.

          Way way way too funny.

        2. 8.2.1.2

          Two CHANGES would inevitably make a significant difference:

          1. Change US Practice to REQUIRE a REQUEST FOR EXAM. Like most of the rest of the world…. Tell the PTO to do nothing but issue the Serial Number and accumulate formal documents – declaration, assignments, etc., unto a REQUEST FOR EXAM and the EXAM FEE is paid. The EXAM FEE can be increased a bit to pay for some intelligent NPL searching….. and for FOREIGN documents – many are EASY to find on at the EPO on espacenet.com. Overcome the language barrier, and cite appropriate art in languages other than English. It will inevitably surface in litigation !!!

          2. REQUIRE the Examiner to provide MINIMUM TIME for RESPONDING on any request for EXAMINER’s AMENDMENT or the like – especially for SUBSTANTIVE issues (not necessarily simple typos or antecedents…).

          I’ve recently had Examiners wake up from the dead and DEMAND ANSWERS or ACTION TODAY (no later than tomorrow at the opening bell in DC) – especially on some cases that appear to have been hatched out of SAWS purgatory…. Usually, I don’t have the applicant’s authority or instructions to act on substantive matters… ..and it creates a panic that interrupts clients, and half baked amendments if you let the Examiner railroad something through. I usually just have to say thanks, but no thanks.. It is really INSANE that Examiner’s can’t, or don’t control their work load properly to enable a reasonable RESPONSE TIME for such requests. A RULE needs to be incorporated into the CFRs to kill this TERRIBLE EXAMINATION practice….!!! It clearly results in poor quality issued patents, at times….

  29. 7

    “A major question is the meaning of a “quality patent” and then – how to measure that quality in order to judge both the system and USPTO examiner performance.”

    The quality metrics appear fine to me, but if you have any suggestions do tell. Check the pap and get back to us.

  30. 6

    “However, the reality is that patents today are born-digital and with several hundred thousand new patents issuing each year, these patents should be better designed and configured in a way to facilitate automated machine access (rather than PAIR image files)”

    I agree with that, but how many millions of dollars is that proposal going to cost?

    1. 6.1

      This is (as I understand it) a cost for improving the IT infrastructure so that the USPTO is capable of better handling born-ditigal documents. That is a necessary cost, which will hit the ledger sooner or later regardless of magnitude. Worrying about the cost to the exclusion of improving the USPTO functionality as a whole is a short-sighted concern.

      Personally, if the USPTO can find some way to not downgrade the quality and resolution of photographs submitted in Drawings, I’ll be happy with that alone.

      1. 6.1.1

        “Worrying about the cost to the exclusion of improving the USPTO functionality as a whole is a short-sighted concern.”

        Because money ain’t a thang dawg!

      2. 6.1.2

        skywise: That is a necessary cost, which will hit the ledger sooner or later regardless of magnitude.

        No doubt. At the very least the PTO should be deep in the phase of seriously planning for the upgrade.

  31. 5

    “is that the USPTO examiners should rely first on the submitted prior art references as guiding their search”

    That is a terrible idea in all but a handful of cases. The new CAT tool we have provides the best “guide” for the search as anything I’ve ever seen in my entire life. The people doing the initial classifying are doing an excellent job right now.

    1. 5.1

      Classification isn’t the problem; the quality of search results is. I can’t speak to CAT, but if the proposed automated pre-exam search provides anything like the Patent Linguistic Utility Service (PLUS) search results, I am against it. In the applications I’ve seen that use PLUS, the results are hot garbage precise-to-words but not accurate-in-context, and lead the Examiner far down the wrong path, forcing long arguments over less-than-relevant art.

      1. 5.1.2

        A topic I have not seen yet – but that Greg Aharonian has featured several times (including today) is the “quality” that can be expected with the Office switch in classification (and how abysmal the management of that process is).

        Thoughts….?

        1. 5.1.2.1

          “today) is the “quality” that can be expected with the Office switch in classification (and how abysmal the management of that process is).”

          It may sux for awhile, but if what they’re doing with CPC is any indication it will eventually get better, most likely better than it was. The CPC is still a bit raw with whole subclasses MIA (except the new references that we’ve dropped in there since Jan). But by and large its getting there. You’d think they’d have waited until they had the whole thing done to “launch” but nah, this is gov.

          1. 5.1.2.1.1

            but nah, this is gov.

            Um, the point here is to get away from the mindset of expected (and accepted) low quality “because this is the government” – you really gotta raise your expectations.

            1. 5.1.2.1.1.1

              “Um, the point here is to get away from the mindset of expected (and accepted) low quality “because this is the government” – you really gotta raise your expectations.”

              To whom shall I voice my indignation and demand the repeal of us using the CPC until it is ready? Should I go directly to Michelle, or just to whatever director she has in charge of CPC transitioning?

              What do you think my chances are by my lonesome? What if I rally my whole AU/TC and lead them to (in)glorious rebellion? Pretty high chances?

                1. Could, but last I checked POPA is on board with CPC and with “government work”. Plus, just an fyi, it’s way too late for anything to happen now. The change has been made, there’s way too much to “undo” to undo it now.

    2. 5.3

      That is a terrible idea in all but a handful of cases.

      This is true, but since you didn’t explain why, allow me: IDS-cited references (at least those filed along with the application) are already only germane in a very broad sense. If you allow attorneys to set the tone of the search by requiring examiners to rely heavily on the IDS, the quality of IDS-cited references will get even worse.

  32. 4

    “The USPTO proposes that applicants be permitted to request quality review by the OPQA (Office of Patent Quality Assurance) for particular applications. Thus, an applicant who receives a very low quality office action would be able to seek review in this more informal manner without appeal or RCE.”

    I’ll support it. Though in order to not turn QAS’s into applicant’s own government paid representatives who have their words backed by threats of errors they’ll have to remove the ability of the qas to bring an error at that stage of review.

    You cannot have it be qas’s plus applicants vs. examiner with the qas threatening errors and the applicant threatening appeal. Obviously popa wouldn’t have it, but besides that, the entire point of qas’s nowdays is to get people to be doing quality examinations, not to pop out like a gremlin to give people errors.

    Likewise, they may want to limit such requests to cases that the qas’s themselves likewise agree with the applicant that a horrendous job has been done, at least to see how the program works out for a bit, and to reduce the likelihood of horrendous backlash.

    Likewise I should also note that these are quite significant reforms being proposed at a time when we’ve already undergone quite a bit of reforms not a few years ago which have yet to filter down into the corps (or even much into management for that matter) which could, if actually implemented, take much need away from these measures. I can go into more detail later if anyone is interested.

    1. 4.1

      they’ll have to remove the ability of the qas to bring an error at that stage of review.

      Whaaaaat??

  33. 3

    The “problem” with any set of rules is that they set the parameters of “the game,” and it is simply not “fair” for a game to be played between crafty “scriviners” and the (without snark) “B” level examiners.

    Better paid, better qualified (in the art of scrivining), and more highly motivated will always disadvantage the “B” team.

    In part, this is one factor why I believe that the Court refuses to set bright line rules, and insist on keeping their finger in the 101 nose of wax.

  34. 2

    >>◾Proposal 2 – Automated Pre-Examination Search

    This is the type of proposal that smells of administrators that have no idea what they are talking about. Search is at the core of examination. The examiners need to be experts in their fields and understand the art out there. The PTO needs to develop domain expertise in all areas. There is no quick fix.

    I think that getting the examiners to be experts and then outsourcing TSM is the way to go. Examiners can package up 103 arguments and then outsource a hunt for a TSM.

    1. 2.2

      Uh the purpose of the PLUS search is as follows: the USPTO apparently considers applications with few reference citations to be of poor quality.

      PLUS searches solve that problem by automatically populating the references cited on the eventual patent publication.

  35. 1

    Proposal 1 has merit —maybe….

    But, does the Request for Quality review stop the clock with regard to the statutory period for reply? What are the requirements for the request?

    If it doesn’t stop the clock, then I have to prepare a response to the nonsense anyway…. so whats the point?

    If it does stop the clock, then bad actors might abuse it to get free extensions of time.

    Did I say free? Is there a fee for this quality review? If so, Now I have to play the role of applicant AND Examiner Supervisor AND have to pay for the privileged. If not… Kewl….but I still have to take time out of my day to play supervisor.

    How about this as an alternative: The Office REVIEWS ALL OFFICE ACTIONS FOR QUALITY BEFORE THEY ARE SIGNED AND MAILED.

      1. 1.1.1

        What about the reverse? Some type of way to acknowledge that an Office Action was well written for instance. Everything shouldn’t be negative.

        1. 1.1.1.1

          I do that during Examiner Interviews or in the text of the Amendment/Response on the few occasions when they are.

    1. 1.2

      “The Office REVIEWS ALL OFFICE ACTIONS FOR QUALITY BEFORE THEY ARE SIGNED AND MAILED.”

      I’m all about that. However I will note that in practice that can actually more of a disaster on the ground than you might think. I’ve recently had experience with id iots that don’t understand the quality guidelines, at all, “reviewing all OAs for quality”. It turns out well for nobody, not the reviewer, not the people trying to send OAs. If you don’t have an entire corps of well trained people (and they have to be well trained down to the man) to do the reviewing then the whole proposal is for naught.

    2. 1.3

      You guys all loved it when we had Second Pair of Eyes! Let’s bring it back!

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