Guest Post by Professors Colleen Chien, Santa Clara University Law School and Arti Rai, Duke Law School
On Wednesday, April 27, 2016, the USPTO hosted a day-long conference around the one-year anniversary of its Enhanced Patent Quality Initiative. We were among the over 1,800 virtual attendees (in addition to over 400 participants at USPTO headquarters and in the satellite offices) and provide this brief summary of some of the highlights. A recording of the day is available here, and information on the launch of the Office’s Stakeholder Training on Examination Practice and Procedure (STEPP) program is here. The USPTO’s current request for comments on patent quality metrics, including the Master Review Form (MRF), is due May 24. Santa Clara Law research assistant Angela Habbibi is pulling together a summary of the USPTO’s request for comments on quality case studies here, and the hardworking students of the Berkeley Technology Law Journal have done the same, with respect to comments submitted to the USPTO from last year, here, and comments submitted to the Journal here.
USPTO Director Michelle Lee and Deputy Commissioner for Patent Quality Valencia Martin-Wallace opened the day by highlighting four inter-related components: 1) the clarity of the record pilot; 2) new quality metrics, as embodied in a new Master Review Form; 3) using post-grant outcomes to improve patent examination; and 4) improved prior art search, so as to accomplish “compact prosecution.” Subsequent speakers discussed each of these components in detail, generally with a focus on one or more of the following themes – clarity, consistency, accountability, and collaboration.
Clarity of Record Pilot
Robin Evans, Director of TC 2800, focused on the clarity of the record pilot, which started in March and will run for 6 months. The pilot includes approximately 130 randomly selected examiner participants, (all GS 11-15 with at least years of 2 years of experience) and 45 SPEs. The USPTO anticipates processing about 2000 applications through the pilot.
Examiners in the pilot will focus on enhancing documentation of claim interpretation (including functional/112(f) language), giving more precise reasons for allowance, doing pre-search interviews at the request of the examiner, and giving more detailed interview summaries. Examiners are also supposed to document the amount of time they spend improving clarity. Examination conducted in the pilot will be compared with that conducted by a control group composed of similar examiners.
Master Review Form, Consistency, and Data Collection and Analysis
According to Director Lee and Brian Hanlon, the Director of the Office of Patent Legal Administration, the pilot’s emphasis on record clarity is also embodied in the new 25-page Master Review Form for quality, which places equal weight on clarity and correctness. As Marty Rater, Chief Statistician of the Office of Patent Quality Assurance explained in the afternoon, the MRF is the Office’s response to a general perception that the quality composite that the Office has long relied upon needed to be replaced. While not all 25-pages would be used for any one application, having a single uniform form will enable previously siloed reviews, carried on (for example) at the TC, OPQA, and other levels, to draw from a common core of data and improve consistency across the agency. Stakeholders in the afternoon session provided feedback on how the MRF could be made clearer and shorter, so as to facilitate consistent reviews.
A look at the 135 quality case study topics submitted for consideration to the USPTO in response to a recent request highlights that consistency in the application of Sections 101, 103, and 112 is perhaps the greatest concern. Consistency has ramifications for compact prosecution and continuation practice as well. If an applicant is confident that her applications are consistently subjected to high-quality examination, she may find it easier to appeal or abandon on the basis of a final rejection, rather than continuing the case in hopes of a different outcome from a different examiner on the same patent application.
In line with the case study suggestions, the USPTO aims to address concerns about particular types of examiner rejections and consistency across technology groups within the patent corps. To that end, it will be conducting studies on the use of section 101 and 112(f) by examiners; on the correctness and clarity of motivation statements in obviousness rejections based on combining references; and enforcement of written description requirements in continuation applications.
The release by the Patent Office of large amounts of data in accordance with the Obama Administration’s decision to treat government data as a national asset of the American people has led to the burgeoning of patent data companies and innovation, with at least 135 companies relying on patent data, according to a count by one of us. But a question regarding data analysis by external sources prompted Valencia Martin-Wallace to note that these external sources produced results that didn’t always match the USPTO’s own analyses. Deputy Director Russ Slifer elaborated on this theme by noting that the USPTO wanted to be part of the community dialogue on data analysis and had recently put out a large amount of publicly available, freely analyzable data at https://developer.uspto.gov.
Use of Post-Grant Outcomes
Jack Harvey, the Acting Assistant Deputy Commissioner for Patent Operations, discussed several objectives with respect to a just-initiated pilot, expected to last 3-4 months, that will use of post-grant outcomes to enhance quality. First, in cases where patents petitioned before the PTAB have related applications pending, the examiner on the related applications will receive the petition. Second, and more broadly, data collected from post-grant proceedings will be used to improve examiner search strategy, both at the level of the individual examiner and also across the corps. It’s our understanding that such “feedback loops” have also been a feature of EPO practice: in which nullity proceedings involve the original patent examining team that granted the patent, which can then learn from the post-grant proceedings.
Improved Search and Training
According to Maria Holtmann, Director of International Programs, the goal of improved search will also be pursued through a pilot, to be begun later this year, that will “jumpstart” search by providing automated pre-examination search results. Ongoing pilots are currently providing examiners with JPO and KIPO search reports prior to the first office action. And the Global Dossier now provides examiners and the public with “one-stop access” to dossiers of all related applications in the IP5.
We were happy to hear that access to comprehensive prior art sources – including non-patent sources – earlier in the examination process is seen as a major patent quality lever. Work by one of us suggests that European Patent Office search reports cite non-patent literature sources more than USPTO examiners rely upon on them in their own examination, but a number of existing and future initiatives could close this gap. As Donald Hajec, Assistant Deputy Commissioner for Patent Operations, described, the USPTO is promoting greater awareness of non-patent technical sources, through the STIC, crowdsourcing of NPL, and technical training by outside scientists through the PETTP program, for example. And in line with numerous commentators who have emphasized the importance of Section 112 in policing quality, Hajec stressed the extensive training examiners, particularly those in electrical/mechanical and computer/software art units, have received on Section 112(a) (written description and enablement), 112(b) definiteness, and 112(f).
Collaboration
During the last set of panels, moderated by Deputy Director Russ Slifer, participants from companies and law firms acknowledged the responsibility for patent quality that stakeholders share with the USPTO. The participants on the panel provided their sense of 1) what initiatives of the USPTO initiatives are working for stakeholders and what needs improvement, 2) the wide variability in the business uses of patents based on company size and industry, and 3) what stakeholders could do, on their own or in conjunction with Examiners, to improve the quality of submitted applications and patent prosecution.
In particular, props were given to Track One, which Bill Bunker of Knobbe commented that certain clients (not small entities) use exclusively, with a much more efficient outcome. He also described the First Action Interview Program as a good early opportunity to achieve a meeting of the minds. Other panelists applauded the USPTO for focusing on patent quality, a topic that they thought had significant economic consequences and was imperative to the functioning and perception of the patent system. However, Laura Sheridan of Google observed that the voluntary nature of certain initiatives like the glossary pilot program limited their impact, and that mandatory enforcement would likely be more effective at raising quality uniformly across applications.
An interesting question is whether or not all patents “need” to be of the highest quality, given the diverse business uses of patents by different types of companies and industries. SAS files patents primarily for defensive reasons, commented Tim Wilson, and needs to have reliable patents for negotiations. In contrast, according to Bill Nydegger of Workman Nydeggerr commented, startups are often just trying to validate their technology and get an issued patent, rather than thinking about it being tested in court or negotiations. Biopharma patents often prove their value in the last five years of a patent’s life, with written description and utility requirements providing the most important filters, Kevin Noonan of MBHB commented.
For both the USPTO and prosecutors, the challenge of increasing quality in the face of flat budgets and price pressure is quite real, although perhaps less of an issue in the biopharma sector. In that vein, several ways to do more with less were discussed. In response to a question from Deputy Director Slifer, panelists discussed how they could continue to ensure that patent prosecutors were actually pursuing a strategy that serves the business use – whether that be to cover one’s own product or that of a competitor. Although getting an issued patent is often the goal of the prosecutor, if its scope is diminished to such a degree that it doesn’t make business sense, cutting off prosecution earlier may be the right approach. In addition, greater collaboration between examiners and applicants earlier in the process could streamline the process. Examiners would probably appreciate applicant summaries of the subject matter. Though applicants are loath to put material into the record, examiners could perhaps get a demonstration of the technology before examination and search began, enabling a substantive discussion of the prior art early in the process.
One question that deserves more attention, in our opinion, is whether the USPTO could provide “model applications” or patents to facilitate public understanding of what a “quality” application looks like from the standpoint of the USPTO. Shared responsibility comes from shared understanding. The newly devised STEPP program, to educate law-firm and in-house practitioners on how Patent Examiners review applications, starting in July, as well as the Symposium overall, are important steps in achieving shared understanding, and we join the patent community in applauding USPTO efforts.
To further these efforts, our institutions, Santa Clara and Duke Law Schools, will be hosting two conferences on USPTO initiatives and other levers for improving patent quality later this year. The conferences will be held in Santa Clara and also in the DC area and will focus on empirical evaluation of patent quality levers. We will provide more information on these forthcoming conferences shortly.
“An interesting question is whether or not all patents “need” to be of the highest quality, given the diverse business uses of patents by different types of companies and industries.”
Of course they don’t.
“In contrast, according to Bill Nydegger of Workman Nydeggerr commented, startups are often just trying to validate their technology and get an issued patent, rather than thinking about it being tested in court or negotiations. ”
And often they don’t even much care about the scope they get either. Of course, the office only finds out about this “late” in the procedure. If they simply tell us up front “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims” then a large number of cases could be resolved right at first action no problem and cut down on waste. But usually we end up sending that action, and maybe another action before anyone bothers to tell us that, then they’re at final, still want a patent, and have to file an RCE.
I’m assuming that you are examiner based on your post. The RCE should be viewed favorably by examiners and the Office, right? I mean, you’ve already performed the majority of searching and reading of the claims. With the RCE, the Office collects fees for much less work by its staff, right right?
Iit,
You must be new – 6 is a venerable patent examiner that has been on these boards for like forever.
The “RCE viewed favorably” has – of course – its own dubious history. The direct answer to your question is yes – a nice juicy count for far less work. And that count used to be even juicier, which led to something called the RCE Gravytrain, in which applicants were pushed to RCE at every turn (under the “you get what you measure” human condition). Kappos came in, rearranged the deck chairs a bit, devalued the RCE and placed more emphasis on a first examination within the law-required time frame. RCEs (as I currently understand them) are still placed WAY back in the queue, and will likely be “tomorrow’s” h0rr0r story of delay. But “don’t worry,” since asking for an RCE stops the Patent Term Adjustment mechanism, those p00r applications lost in that RCE purgatory will not gain any additional enforcement time when (if) they are ever released.
“The RCE should be viewed favorably by examiners and the Office, right?”
That depends on whether or not you are “management” that is trying to cut down on RCEs. And whether or not you’re an individual examiner gaming the count system or not.
Examiners game the count system…?
Whaaaat?
😉
” If they simply tell us up front “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims” then a large number of cases could be resolved right at first action no problem and cut down on waste. But usually we end up sending that action, and maybe another action before anyone bothers to tell us that, then they’re at final, still want a patent, and have to file an RCE.””
6, If this is true, then I would suggest you treat all applications as including the request: “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims”.
An Office Action with a clear identification of subject matter that the Examiner finds allowable from the outset is very much appreciated and can have a bearing on the response….
“6, If this is true, then I would suggest you treat all applications as including the request: “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims”.”
Wish I could Les, and I do try to do that if I’m well supported by competent management. But if the management is not wholly on board with that flavor of compact prosecution (because they’re either not competent enough, don’t have the balls enough, or just don’t feel like it administratively) then it leads to a gigantic amount of waste and low production.
And, there are communication inefficiencies with many applicants that are rather large. Especially foreign ones. This also causes all that time to largely go to waste from my short term perspective while all that work (on avg lets say an hour or a few hours) just gets turned into a little blurb at the end telling them what to do to put the case into condition for allowance, which they might not even want to do. Waste which then can be turned into long term permanent waste if a newly published reference then blows up that suggestion at time of amendment because we didn’t act to allow the case before that newly published reference published, note that newly pubbed references being found prior to issuance is a good thing anyway.
There’s also obviously the issue where the applicant simply doesn’t want to make such an amendment thus turning all those efforts into waste (because again, there was no check box for them to tick that they just wanted me to find them some allowable subject matter).
But, that being said, if the case isn’t a case that already has a lot of allowable subject matter indicated in parents then I try to do that when I can, especially if something more or less jumps out at me.
In the current system, I judge it to be unsustainable to do it for every case while trying to get counts for promos or keeping up with your work as a primary. I tried for awhile.
“An Office Action with a clear identification of subject matter that the Examiner finds allowable from the outset is very much appreciated and can have a bearing on the response….”
Obviously. But that “can” is covering up a large possibility that the time it takes to do that “can” turn into waste. Even when the offered subject matter is supremely generous, tailored closely to what the applicant is already trying to get. And, I should note, my art is likely one of the more easier ones to do this procedure in, though I might be wrong about that.
“Examiners would probably appreciate applicant summaries of the subject matter.”
Yes, no kidding, I can “sum up”, in plain english to one of ordinary skill a 30 page specification about a single invention in about one sentence the vast majority of the time. Yet, the “summary of the invention” practically never bothers to do such a thing, though the abstracts sometimes give a general impression. “The law” could do a lot to improve the ability to discuss in general language prior to formal claim language issuance.
I can “sum up”, in plain english to one of ordinary skill a 30 page specification about a single invention in about one sentence the vast majority of the time
No you can’t.
He thinks he can.
At least now he is reading that stuff, as opposed to jumping on Google and doing his “k1ller” five minute claim key word search.
😉
Sure I can, people in my art do it routinely. Practically every NPL paper that exists in my art does it just fine in the title to their paper. At most it generally takes them a couple sentences in their abstract to have let everyone know most of what they’re going to talk about. And then their experimental section in their paper is about one long paragraph or two long and gives just as much detail as many multiple page long specs often do.
Too bad those are not meant to be legal documents, eh 6?
It would suffice for WD for the whole of the invention when taken in conjunction with the drawings. Whatever other “legallollities” are being imposed are straight waste.
“Whatever other “legallollities” are being imposed are straight waste.”
Except that straight waste is part and parcel of protecting legal rights (and there is such legal vehicle for doing thusly with your example at 14.1.2.
Yeah, 6, you are starting to scare me. We’ve all drank the Kool-aid, the real question is which one.
You do realize that the state of patent drafting for which you are complaining about is directly because of the judicial muckery that creates patent profanity, right?
The reason Summaries are not helpful is because Courts have made them so. When Summaries were in plane language, they were of necessity, narrower than the claims, e.g., a mouse trap with a spring and a thwappy thing instead of : a small animal inconveniencer comprising a resilient member operatively coupled to a detainment mechanism, the Courts tended to limit the scope of the claims to what ever example was provided in the summary….Sooooo applicants now just past claim 1 into the summary section…you win. Pick up the marbles…..
I already know how the courts allegedly caused the problem Les. What we need is a solution to the problem that can be enforced. To right the wrong. Frankly I think the PTO could do it themselves as practically speaking at the office stage it is a procedural issue. I don’t know if I have the energy to solve this issue for the patent system though, I feel like someone else should step up to the plate for a change.
Maybe just make it if you don’t put a plain language description in your patent it goes down the tubes period. Justified at least on the grounds that it would solve the issue of us having piles and piles of “technical disclosure” that too often amount to little more than lawyerese in this day and age, barely useful to anyone. That’d probably bring them back just fine.
Technically speaking all government documents are supposed to be in “plain language” anyway.
link to plainlanguage.gov
Can just make sure that gets enforced in all patents and bam, we’re good to go. Maybe make the office clarify it for the applicant in their publication.
Technically speaking it looks like it already should apply to patents.
link to gpo.gov
We need Arti to look into the details from admin lawl.
Maybe if someone facing a vaguely worded (clearly not plain language) patent were to file suit against the office for issuing the publication in the first place that would be very interesting.
Actually Les I just noticed, there can be no judicial review of whether the agencies comply with this law. Lame.
(a) Judicial Review.–There shall be no judicial review of
compliance or noncompliance with any provision of this Act.
[[Page 124 STAT. 2863]]
(b) Enforceability.–No provision of this Act shall be construed to
create any right or benefit, substantive or procedural, enforceable by any administrative or judicial action.
The discussion of patents as “defensive” tools or for “validating” business goals is nonsense. Patents are purely offensive tools. Also, of nonsense, is the idea that examiners and applicants will “collaborate”. Collaborating with an examiner is akin to “cooperating” with the cops in a 70’s TV show. There is zero value in doing so since all statements will be used to the detriment of the speaker. Examiners should focus primarily on what they do best – searching for prior art and mapping that prior art to the claims.
“anon” The input to the system cannot be controlled by the executive branch.
Sure it can. As willfully ign0rant (or just plain ign0rant) as the patent maximalists are, even they can figure out when a particular grifting strategy has run its course. When a big enough pile of tanked patents in a particular area builds up with close to zero survivors snaking through the system, even the habitual offenders stop bothering.
And everyone benefits when that happens. That’s why it’s important to keep the CAFC’s and the PTO’s feet to the fire. They are prone to blink and/or return to their junk-applicant coddling ways if they aren’t being monitored.
And they’re going to be watched closely all the time now, right along with you and your junk patent-l0ving cohorts, “anon.” Get used to it.
There is more to come after all! A lot more. And you’re not going to like it. Rich spoiled babies never like their haircuts, do they?
“be watched closely all the time now, right along with you and your junk patent-l0ving cohorts, “anon.” Get used to it.”
That’s more than just a little bit creepy.
That’s more than just a little bit creepy.
There’s lots of creepy behavior to be observed, that’s for sure. It’s not quite as stomach-turning as keeping up with the activities of gun fondlers and their super serious attorneys but it definitely has its moments.
You do know that it is you that is being creepy, right?
Not sure where the “gun-fondlers” comes in, though….
(and your rather bland “so series” reference is just A WHOLE nother case of Malcolm being Malcolm)….
Not sure where the “gun-fondlers” comes in
It comes in where the similarity of the rhetoric in defense of the indefensible becomes impossible to ign0re.
You know what I’m talking about, “anon”, because you’re a quintessential case, as is your bff NWPA, as are the multitude of drive-by s0ckpuppets who show up here. The paranoia, the mewling about academics (and everyone else who’s “unqualified” or can be somehow linked to “socialism”), the Constitution-clutching, all that stuff.
Sound merely more of that “lump them all together” thing you got going on – all those “enemies” of your precious rye fields….
(the obligatory AccuseOthers meme runs with your very own version of paranoia – watch out for those G-g-g-grifters, as you do your own “clutching” – and far more of it than anyone)
paranoia – watch out for those G-g-g-grifters
I’m pretty sure that the existence of bloated opportunists skimming the patent system to satisfy their boundless greed at the expense of both the system’s credibility and at the expense of the public is a genuine problem and something to be mindful of at all times. It’s kinda hard to dispute that in 2016 but knock yourself out. Congress and the Supreme Court and the “executive branch” of the moment aren’t debating that anymore.
Compare to: Communists hiding in ivory towers coming for everybody’s personal property, starting with their patents. And paid for by Google. Now that’s a “problem” that you can only read about in the comments section of blogs. Thanks to you and your buddies.
LOL – are you once again trying to say that the patent system is not under attack by the philosophically labelled Left and Right….?
Attempting to diminish Google’s interaction with the government is pretty darn funny too. Why would you do that in the face of incontrovertible evidence (the type of thing you usually scream for)…? (hint: it is NOT just in the comments section of blogs -where, by the by, YOU seem to have a quite comfort zone for – but hey, go ahead and accuse others of something that you do…)
So….. your “Compare to” is (no surprise) a complete wash-out.
“Thanks to you and your buddies.” – again with the “group them all together” meme…. (and Scooby is going to be mad that you got the phrase wrong. The catch phrase used by every single villain is: And I would have gotten away with it too, if it weren’t for you meddling kids.
Or is Scooby not allowed near your fields of rye?
MM, your perception of the “bloated” and “boundless greed” is quite telling as to your actual experience with the patent system. You’re sounding again like a concerned citizen that has read an article or two on patents and has an opinion about to share. What I do know is that there are individual inventors and small businesses in the real world that are entirely perplexed by 101 jurisprudence and are directly harmed by the non-standards that are presently being applied. This non-standard is evidence by the fact that you haven’t been able to respond to my many direct questions on whether a particular claim is or is not subject matter eligible. Certainly I could apply your 101 logic to any claim to disqualify that claim from eligibility, including some of the most important inventions in history. These people and small businesses are not billionaires or millionaires or perhaps even thousandaires. Often, in my direct experience, these are people that have a potentially new solution to an existing problem and want to build a business around that solution. Myself included.
Haven’t you been paying attention Iit..?
Abstract iDan punked Malcolm on Malcolm’s identity, and shoved Malcolm’s nose into his own pile of CR@P ad hominem.
Oh wait, for some unknown reason, Abstract iDan’s lesson to Malcolm was censored and deleted.
Oh well, the (so serious) take away was that Malcolm HAS A PHD, and Malcolm IS AN ATTORNEY, and Malcolm TEACHES ATTORNEYS (what exactly, remains unclear as Malcolm did not go into details).
But hey, since you want to make money from patents, you fall into the category of G-g-grifters. I bet that you would want to be able to enforce your patent in a court of law too. For shame.
(can you see the sarcasm sign I am holding up?)
“to satisfy their boundless greed at the expense of both the system’s credibility and at the expense of the public”
LOL – again with the class w@rfare meme on a subject that Malcolm wants to prevent patents to – and that very subject being the MOST accessible to the non-wealthy, the most easily accessible form of innovation today….
Why do you want to go and declare per se unpatentable and block the less wealthy from being able to patent their inventions? That’s a dichotomy that you have never been able to “explain.” Maybe you feel that inventions are only “really worthy” for those ultra expensive things that are a “but for” thing….?
Anon – I don’t follow MM’s identity that closely, but from your post MM is a law professor in some form? There’s nothing inherently wrong that profession. Send me a link?
I do not know – nor do I care – what Malcolm’s identity is.
He is known for his actions here (a Forrest Gump quote is appropriate – but would not make it past the filter) and those actions stretch back a full ten years and reek of the exact same gamemanship and chicanery that you see today.
The exact same.
And if you want to try to even remotely return to the actual discussion here, your “Sure it can. kneejerk reply to my “cannot be controlled by the executive branch.” is false.
That would be a substantive matter of law type change – something the executive agency lacks the authority for. See Tafas.
(ohhh, that’s right, weren’t you cheering on the Office in the Tafas case….?)
That would be a substantive matter of law type change
That would depend on what change we’re talking about. Applying the existing law vigorously instead of begging “stakeholders” to provide reasons that the law shouldn’t be applied wouldn’t require any Congressional action.
But you knew that already.
Nearly all PTO error is in the applicant’s favor. This has been true since pretty much forever. Pretending otherwise is some weak sauce but, hey, when you ain’t got nothin’, just bash away.
Try to stay focused and NOT move the goalposts – the immediate point was you having the executive branch agency changing substantive law by stopping filers of things that hurt your feelings.
Not sure where your bold text comes from here…. nor why you want to play the AccuseOthers game yet again with your weak sauce comment, but hey, that’s just Malcolm being Malcolm.
the immediate point was you having the executive branch agency changing substantive law
Nice try, “anon.” What happened is that you made a broad sweeping statement (“the input to the system cannot be controlled by the executive branch”) and I pointed out that the statement was plainly false.
Anything else or are you going to dig a deeper hole for yourself?
There is no try – there is only do.
My “sweeping statement” has to be taken in the context of this discussion. You do know that, right? In that context, CLEARLY, the statement is NOT plainly false.
Nice to see you go down your short script and get to the “dig a deeper hole” meme – while it is STILL you that holds the shovel.
MM – “Nearly all PTO error is in the applicant’s favor”. You couldn’t be more wrong on this topic. Subject matter eligibility and 103 (post KSR) virtually always tends to err on the side of opposing the applicant, running up costs, and delaying allowance. It’s simply too easy for examiners these days to apply 101 or 103.
Iit,
You will come to learn to take what Malcolm says and just apply the opposite.
“Nearly all PTO error is in the applicant’s favor.”
I don’t know if I can agree with that. I see quite a bit of pto error not in applicant’s favor. I might would agree to “Nearly all PTO error, that ever affects anyone all that much, is in the applicant’s favor.”
“that ever affects anyone all that much”
So nice of you to forget about the inventor in your thinking there 6.
Anon I don’t want to make light of the inventor’s plight in getting bad rejections etc. but the simple fact is a million dollar suit affects people, especially the individual person/corp, much more than a $1-2k (plus whatever they pay the lawyer) response does, or even an appeal fee. Especially if that person isn’t an id iot.
And of course that is setting aside business issues, which can be large on either side, I’m just talking about strictly the law/administration side.
I think the opposite of your last paragraph – the law/admin side (aside from the business $$) are especially pernicious to the types of errors that go vastly uncatalogued by the Office.
Do you remember the Reject-Reject-Reject era…?
“If an applicant is confident that her applications are consistently subjected to high-quality examination, she may find it easier to appeal or abandon on the basis of a final rejection, rather than continuing the case in hopes of a different outcome from a different examiner on the same patent application.”
Why would she think she would get a different examiner by filing an RCE or continuation? Moreover, why would the authors or the PTO think she would get a different Examiner?
Good catch!
Maybe some practitioners RCE until their examiner retires? I bet it feels like that sometimes.
Les,
Since the canard of “wearing down an examiner” has been so thoroughly thrashed, perhaps this is some sort of attempt at creating new “villainy” on the part of those G-g-g-grifting inventors….
Why would she think she would get a different examiner by filing an RCE or continuation?
Because it happens sometimes.
This has been another edition of “Were the patent maximalists born yesterday or do they just assume everyone else is as ign0rant as they are?”
Do you have any evidence that getting a new examiner on RCE is any more frequent than getting a new examiner on Final/2nd-NonFinal?
Do you have any evidence that getting a new examiner on RCE is any more frequent than getting a new examiner on Final/2nd-NonFinal?
It’s just common sense. The more time goes by, the more likely it is that some change will occur.
Kinda strange to have to explain that but there you are.
“It happens sometimes” is a FAR cry from the innuendo that the tactic is purposefully chosen to game the system and obtain a “more friendly” examiner.
You are doing that AccuseOthersOfThatWhichMalcolmDoes thing again with your insult of “as ignorant as they are”
Great “ecosystem” Prof. – Yay Decade of Decadence.
“anon” “It happens sometimes” is a FAR cry from the innuendo that the tactic is purposefully chosen to game the system and obtain a “more friendly” examiner.
LOL Seriously?
“It happens sometimes” is an incontestable fact. It’s also incontestable that the fact is exploited by applicants.
Maybe you’ve never prosecuted appliations before. That would explain a lot.
You quite miss the point.
Again.
The random and rare occurrence just does not make the item into something “exploitable.”
And I will guarantee you that I do not prosecute applications like you if you think this tactic being discussed is an “exploitable” tactic.
The random and rare occurrence just does not make the item into something “exploitable.”
Really? You’re doubling down?
Wow.
There is no “doubling down.”
Again – try to understand the first post here – it’s even written in those short declarative sentences that you are always on about.
try to understand the first post here
Don’t try to change the subject, “anon.”
You really want to stand by your comment? This one: The random and rare occurrence just does not make the item into something “exploitable.”
Last chance to walk it back. Pretty sure it’ll come back to bite you but, hey, your choice.
“Don’t try to change the subject, “anon.””
LOL – I am the one referring you back to the subject at hand and you want to accuse me of changing the subject….
My comment on the random and rare occurrence just does not make the item into something “exploitable” stand perfectly well – no need to walk back anything.
It has never happened to me.
You never got a new examiner for a CON?
6,
I have had MORE new examiners in the normal course of prosecution of a single application (no Cons) than I have EVER obtained in Con cases.
By a long shot!
The idea that someone is purposefully scheming to “get a better examiner” is simply ludicrous.
Consider the source of the comment that suggests that applicants are so devious.
It has never happened for an RCE. I rarely file continuations.
“Why would she think she would get a different examiner by filing an RCE or continuation? ”
She might think that the new examiner would be a man, as opposed to the female examiner she previously had that statistically are worse to their female inventors than the male patriarchs are.
“Moreover, why would the authors or the PTO think she would get a different Examiner?”
It happens randomly sometimes. You never know if you will or not.
Its rare enough that no one is filing RCEs or Continuations in the hopes of getting a new Examiner. If you think another pair of eye is going to help, you file a pre-appeal brief request for review and/or and appeal brief.
Improving patent quality from it’s current state is fairly straightforward and requires zero cost increase or training (as also noted by Anon below)
– Focus on 102/103 rejections (well settled law) based on prior art that is identified through general web searches (e.g., Google.com), including products/services, academic papers, and online discussions. In my view, prior art cited by Examiners should be heavily represented in rejections, in contrast to the current state of virtually all rejections being patent literature with NPL being cited only where provided by the Applicant or third-parties.
Additionally, the Office should focus on the inventor/applicant’s own activity in creating prior art by issuing interrogatories – something that the Examiner’s already have the right to do under the current law/rules.
“NPL” prior art cited by Examiners should be heavily represented in rejections…
And, if cited, it should be downloadable.