The Government Accountability Office (GAO) has published two new reports on Patent Office Activities along with the results of a major survey of 2,600 patent examiners.
- Patent Office Should Define Quality, Reassess Incentives, and Improve Clarity (GAO-16-490)
- Patent Office Should Strengthen Search Capabilities and Better Monitor Examiners’ Work (GAO-16-479)
- Survey of U.S. Patent Examiners (GAO-16-478SP), an E-supplement to GAO-16-479 and GAO-16-490
Regarding patent quality, the GAO suggested that the USPTO’s standard of patent quality should focus solely on the basics: defining “a quality patent as one that would meet the statutory requirements for novelty and clarity, among others, and would be upheld if challenged in a lawsuit or other proceeding.” However, patent clarity must be an important element of that definition. The GAO writes:
GAO estimates that nearly 90 percent of examiners always or often encountered broadly worded patent applications, and nearly two-thirds of examiners said that this made it difficult to complete a thorough examination. Without making use of additional tools, such as a glossary of key terms, to improve the clarity of patent applications, USPTO is at risk of issuing patents that do not meet statutory requirements.
The reports were requested by Rep. Goodlatte in his role as chair of the House Judiciary Committee. I expect that Rep. Goodlatte will hold hearings with PTO representatives in the fall to focus on ways to move forward.
This will be right up NWPA’s ally. Apparently the news says that the DNC had files that makes it look like they were literally about to be selling appointments to federal commissions etc.
link to dailycaller.com
Is the fault “doing it” or “getting caught doing it”…?
Do you really think that the republicans do not have a similar mechanism?
You seem to have less concern for the letter of the law in this area than you do for discussions of obviousness.
Les,
Do not take my question as any indicator of my level of concern.
I have been rather outspoken that BOTH parties are nothing but “politicians” (in the worst connotations of that word).
The question here is geared to 6 (and the flip side of to whom 6 is gen erally opposed to on this political question) and the (odd) notion that “it is only the other side” that is dirty.
As to patent law – clearly – there is NOT the same type of “both-sides-are-bad” AND there is clarity to be obtained in understanding the law as it is (shadows and all 😉 )
Well anon Idk bro, as of now we only have evidence of the one side. The other side may do similar, or they may do it to a lesser extent, or nearly not at all. Republicans are well known for generally being more of a “good governance” type party. I’m not going to say they’re squeaky clean on this front, but they likely are less dirty imo.
The other side may do similar, or they may do it to a lesser extent, or nearly not at all.
It’s a total mystery!
LOLOLOLOLOLOLOLOLOLOL
6: Republicans are well known for generally being more of a “good governance” type party.
Also “family values”!
So, you know, you can totally trust them. Because “well known.”
And 6 says so.
Keep the laughs coming! This is going to be an awesome weekend.
MM, how times of changed. Once the main argument against Nelson Rockefeller being the Republican nominee was because he was divorced – that and that there was not more than a dimes with the difference between Rockefeller and any Democrat. (New York Republicans and all that.) Now the party nominates Trump, twice divorced and a notorious philanderer. So much for family values.
Actually I think the Republican bar against somebody being divorced being one of their nominees was removed when Reagan was there nominee and eventual president. Reagan himself was divorced and apparently had an affair with Nancy Reagan while he was still married.
Again times have changed.
Recall that Ted Cruz made a big deal about Trump’s New York values. What he obviously meant that the New Yorker’s have a different view on family values then most in the Bible Belt. Still they nominated Trump.
So what I would we to conclude?
Looking back, I think that Nelson Rockefeller would have been a great president. It is too bad that he was denied the Republican nomination because he was a divorcee.
Times have changed, they have always been changing, and they are going to continue to change.
I’m sure you saw in the news this week that back in 1995 Walmart pulled “Someday a woman will be President” off their shelves because — try to believe this — it went against “family values.” Those of us who were alive and politically aware 20 years ago will remember those days well. Fallwell, Bakker, Swaggart, Dobson, Robertson … Just a huge pack of mis0gnynist reality-denying hypocrites with micr0phones far out of proportion to the worthlessness of their b0gus message. Their train started to go off the tracks in the 80s. Good riddance.
30 years prior to that, of course, it was still normal and legal in many states — entire states — to discriminate against voters on the basis of race. And that’s still going on today. But for vigorous gerrymandering and transparent vote suppression by Republicans, the modern GOP would be in even worse shape than it is in 2016 (I know — hard to imagine).
MM, I recently saw the movie about Jessie Owens and the ’36 Olympics. I think it portrays accurately that the US was then as racist as NAZI Germany.
We have come a long way.
“try to believe this — it went against “family values.””
Sounds agin fam values.
“Just a huge pack of mis0gnynist reality-denying hypocrites”
They hate women sooooo much that they pamper their wives for their entire existence. Dagnab woman haters! Didn’t they know their wives and daughters would only be happy unmarried/divorced and slaving away for a corporation somewhere?
Wow – do you realize how chauvinistic you are coming across 6?
This is how you sound: Because women are naturally weaker and need to be protected from what us He-men folk have to suffer through, it is only right and just that us He-men folk make the decisions for the weak women. We cannot have our property subject to such mistreatment as the equal opportunity to be out in a corporation somewhere, or deciding that they have the power to get out of being married to us He-men folk. We need to protect them.
THAT is how you sound.
You may not mean that. You may not even be aware of that. But you rather prove Malcolm’s point with your response here.
“This is how you sound”
Yes, I know that’s “how it sounds” to a rta rded far left liberal mind. But more and more women are waking up to why that mindset and that twisting of my words to insert “need” and “weaker” is a load of horse sht and just the result of reverse “propaganda” (like you like to say). And likewise inserting the idea that mans need to decide for women. Nowhere did I say anything about that. Or inserting the idea that I’m against “equal opportunity”. Never said that either. “Equal opportunity” does not equal the current climate of trying to force/cajole/”encourage” women into the corporate rat-race so that liberals can attempt to get “equal outcomes” (which is the liberal’s true “goal”) to make themselves feel warm and fuzzy inside. Likewise, women themselves are choosing on their own more and more nowadays, with an advanced understanding of the consequences after being fairly informed, to not embrace the “liberal mindset”. Whoopsie though, now women of my generation are screwed, figuratively screwed by liberals/liberal mindset and literally too screwed in too many cases to get out of it and into what they now decide they want.
Let’s be clear anon, I benefit a lot from the liberal agenda. I get to happily bang young women currently suffering from it. Who suffers are men that can’t get those women, much less get them to marry before 30 so that they can responsibly start a family before the women is of “advanced maternal age” (medical term for when babies start having more birth defects around mother age 30+), the women themselves (less wealth/happiness etc. etc.), and society (underline society). Only on the tail end of who gets the sht end of the stick do I even start to appear. And yes, I still identify as a gay trans black jewish muslim agendered individual so you can’t say anything bad about me because I won 1st place in the oppression olympics last year.
“You may not mean that. You may not even be aware of that.”
No, I’m well aware of it as of a few years ago. And no, nobody that says that “secretly means” what you said. Though you are quite right that liberal brainwashing causes the issue of them not being able to comprehend plain English. It’s precisely that liberal mind-twisting of words done in minds brainwashed by liberals of yesteryear that is doing horrible damage to this country. Demonizing people (men and women) for just wanting to be left out of liberal social engineering and left to go about their business/create society.
“” to a rta rded far left liberal mind.”
By no means can I be considered such – and that is how you sounded to me.
“Nowhere did I say anything about that”
Wow – it’s worse than I thought: you are not even aware of why you sound like that.
“Who suffers are men that can’t get those women” – and the comment prior which I will not deign to repeat….
doubling down on the misogyny is not any way to change the perception you are creating, 6.
“ And yes, I still identify as a gay trans black jewish muslim agendered individual so you can’t say anything bad about me because I won 1st place in the oppression olympics last year.”
Great – but you have mistaken me for someon who buys into the whole “political correctness” thing.
I don’t.
But that is still not the same as what you are painting yourself as, as not buying into the whole “oppression” thing is just not the same as treating everyone on equal standing.
I would be one of those that rejects the liberal agenda and political correctness.
You do not stand where I stand though.
“By no means can I be considered such – and that is how you sounded to me.”
Anon we both know you’re from “liberal central” bro. You’ve been indoctrinated since birth or at least a young age. Just as we all have.
“Great – but you have mistaken me for someon who buys into the whole “political correctness” thing.”
After anon makes a whole post about his politically correct “interpretation” of how I “sounded” he purports to not “buy into” the whole politically correct thing.
Lulz.
“I would be one of those that rejects the liberal agenda and political correctness.”
Mhmm. I see, and that’s why your mind immediately concocts a PC “interpretation” of “how I sound”.
Bro, you’re at best “recovering” from PCness after having “rejected” it. At best. You have many miles yet to come to normalcy.
“But that is still not the same as what you are painting yourself as, as not buying into the whole “oppression” thing is just not the same as treating everyone on equal standing.”
Painting myself as? Lulz wut? I’m a homeless guy on the side of I95 as I’ve always said.
“Just as we all have”
O Rly…?
Even “homeless guy[s] on the side of I95” or “ gay trans black jewish muslim agendered individual[s]”…?
So how does this seemingly universal “indoctrinated since birth” conspiracy work?
And why is it that (despite your flimsy protests), I have in fact ALWAYS rejected political correctness, and have been consistent in that view on these boards?
Maybe you want to look at the archives for the Washington Redskins articles…
“After anon makes a whole post about his politically correct “interpretation” of how I “sounded” he purports to not “buy into” the whole politically correct thing. Lulz.”
and
“ Mhmm. I see, and that’s why your mind immediately concocts a PC “interpretation” of “how I sound”.”
Not sure why you are “lulzing.” One does not have to be politically correct to be able to independently think and see that you fit the caricature that the politically correct would use. You seem to want to do the Malcolm thing and paint anyone not agreeing with you as being in the opposite camp. Life is just not “polar” like that my friend. Critical evaluation does NOT mean that I belong or espouse the opposite side – and clearly, – so very clearly – I am NOT on the “PC correct side” nor on your side.
“Bro, you’re at best “recovering” from PCness after having “rejected” it. At best. You have many miles yet to come to normalcy.”
Now THAT deserves a “lulz.” You attempting to use “normalcy.”
Come on man, they’re as goody two shoes as they come for the most part. That’s precisely why you lurve the democrats, they’re so edgy and “cool” and “hip” and “full of lurve for mah fellow man, man”.
Stuck in filter and in pieces trying to get it out of the filter….
July 29, 2016 at 6:21 am
“Well anon Idk bro, as of now we only have evidence of the one side.”
And that’s exactly why I phrased the question as I did.
Do you really need evidence to convince yourself that both sides are not p0l1ticians…?
As if Republ1can administrations were always on the up and up…?
Even for you, that degree of P011y anna-ism is difficult to f@th0m.
(Filter apparently does not like “f@th0m”…)
Dennis, my reply to #35 just now has attracted the “awaiting moderation” flag. Being hopelessly naive, I cannot imagine why, so I’m at a loss what to amend, to get my posting through.
If you think it nevertheless OK to reveal to readers, I wonder, can you “moderate” it please?
Under public choice theory we have created a PTO structure that provides an incentive to reduce patent quality and increase the size of the agency. On the one hand, PTO folds to pressure from the inventor/start-up class to issue patents but on the other hand the PTO folds to pressure from the infringer class to invalid patents under the AIA. At both ends, the PTO can make claim to the need for more resources (agency growth and expansion) which of course is the natural position of an agency under public choice theory.
Thinking outside the box here but … imagine a structure to create incentives for efficiency and quality:
First, make PTO an independent agency – as recommended by the TAFT commission – to get the executive tampering (favor factory) out of the system.
Second, divide the rolls of investigator, advocate and judge:
Task examiners as the investigator for rejection –
Task inventors (and counsel) as advocate for allowance –
Task supers – as an intermediate QC on the briefings and advocate for examiner in producing the best work product. Teams within groups can work together to maximum effect for both quality and volume – teams can be objectively measured, scored and compensated.
Task three person APJ board – to accept or reject claims based on the application/claims/briefs from the two advocates one from the group and one from the inventor.
-Appeal under old 145 or 132? for De Novo district court of CAFC record only court. Due process satisfied.
Give an applicant three times at bat – and then finished. That’s all the process you get.
Repeal re-examination and IPR. Therefore, removing the incentive to issue poor quality patents and politically tamper. Satisfying 7th amendment, due process and separation of departments.
Incentives to lift “quality” higher?
Me, I would inject a bit more caveat emptor into pre-issue proceedings at the USPTO. You know, bring back on to the owner the consequences of pushing dodgy stuff through to issue. Let Applicant police itself. It’s the cheapest, most effective, way to restore civility.
Compare, in this respect, the USPTO and the EPO.
At the EPO, this principle reaches its apogee in the Art 123(2)/(3) EPC “fatal trap”. It goes like this.
In prosecution, you amend claim 1, narrowing it down to something patentable. You go through to issue, but:
Then somebody files opposition, under Art 123(2) EPC, contending that the amendment to claim 1 added matter. You find you cannot amend out of the problem, because Art 123(3) EPC forbids any amendment that widens the scope after issue. Result: patent stone dead. If that doesn’t penalise poor drafting and “aggressive” prosecution, I don’t know what would.
Just as official fee scales can manage Applicant behaviour (think claim numbers) so can measures like Art 123 EPC control Applicant behaviour.
Me, I think the biggest mischief F-ing up relations between the USPTO and the Applicant community is the “presumption of validity” which rewards Applicants in proportion to how “aggressive” they are, in pushing borderline stuff through to issue. BRI is the antidote but, as we all know, two wrongs don’t make a right. Instead, as under the EPC, give no deference after issue to the work of the PTO prior to issue. With that, the USPTO Examiner becomes your counsellor, no longer your adversary.
Your anti-presumption of validity stance is seriously one of your strangest 0bsess10ns.
The C+C presumption of validity is a feature of the patent law of the USA but nowhere else in the world. To that extent, it, not me, is “strange”.
Further, the USA-strength presumption of validity does have consequences for the USA.
I’m not fixated on it, but merely point out one of the consequences.
It is the sovereign decision of the USA whether to cling to it or do away with it and harmonise with the rest of the world. But any such decision does have consequences.
No, you ARE fixated on it and you attribute all sorts of parade of horribles to its existence, while fully neglecting the plain fact that it is a portion of the Strong patent right that has gone hand in hand with the US being the world’s premier location of innovation.
The negativity of your view coupled with the “that’s not done here with what I am familiar with” exhibit a rather extremely closed mind of yours.
Ah, the “Having English as one’s first language is what causes heart disease” riposte again, Dogberry. Very poor.
Another grade of F.
U really need to drop the poor logic while engaging in name-calling, MaxDrei.
There is no “English language” type of logic going on when it is clear that a strong patent is what promotes innovation.
Your bias against patents is quite clear.
There is no presumption of validity at the examination stage. There is however, a statutory right to a patent, if it meets all the standards. This comes from the structural framework of the Constitution.
No presumption? Not sure about that, Iwas. What else but a “presumption” is it, that what Applicant files is deemed to be worthy of a patent unless the PTO can come up with a reason to refrain from issuing a patent?
But that is not my point. As far as I know, every Patent Office in the world operates under that presumption.
No, what I mean is the unique USA approach, of setting up, after issue, an asymmetric presumption of validity. Every other jurisdiction weighs patent validity under the ordinary civil disputes “more likely than not” standard, symmetrical as between the parties to the dispute about validity.
Dogberry accuses me of being an anti. That’s not right. I spend much time working with clients with good patents of their own, that they want to enforce, but these clients are often frustrated by bad patents issued to their competitors, that deserve nothing more than a quick extinction. What I want is a patent system that swiftly enforces good patents, with injunctive relief, while just as swiftly terminating bad patents that are an impediment to the progress of the useful arts.
“Dogberry accused”
Another grade of F.
U really need to be able to recognize your own bias MaxDrei.
The sense of “anti” here is anti-strong patent.
Your trite reply about language and disease solidifies the fact that you are chasing one of your windmills.
Clearly, strength of patent is directly related to this US feature (else you would not be whining about it). No matter how much you kick dust, you want a weaker patent because of what you see as “abuse” in obtaining the stronger patent.
Your mindset is very much like “the operation is a success even though the patient expired”
You cloak this is the sheep’s skin of “well everyone wants quality patents, right?) when THAT is really a non-sequitur to the US strength of a granted patent.
This diverts attention from where it belongs: focusing on the examination in the FIRST instance and doing the job right the first time. You would weaken ALL patents just with a band-aid that does nothing to help correct the actual problem.
No thanks.
Your view is founded on a misapprehension: that ex parte examination of applications at the PTO can ever (regardless of expense) distinguish what is patentable from what is not. It can’t.
My view is built on the experience, since 1978, of about a thousand inter partes post-issue oppositions per year at the EPO.
Your opinion here is as incorrect as your lack of admitting your bias.
What are you on about with this “distinguish patentable from what is not”…?
Are you really saying that examination at the PTO is worthless? Like in totally worthless? Like in ‘we should just scrap examination and go to a registration system’ type of worthless?
You also seem to be forgetting your respect for sovereigns making their own choices (again).
If we removed the presumption after issue and we could repeal reexamination and IPR – we have a deal.
It’s a good thing that you are not negotiating for the “pro-patent” side, there Iwasthere.
You want to give away the strength of the presumption (a factor that wards off the Big Corp, Transnational serial Infringers*** and their goal of efficient infringement) for something that will likely fall anyway due to Constitutional concerns…?
No thanks.
***See Microsoft v. i4i
Well, you will still have presumption of administrative correctness. I wish I was as confident as you that SCOTUS follows the Constitution.
???
Do you read my posts concerning the Supreme Court and their judicial muckery…? their addiction to sticking their fingers into the wax nose of 101…? my chiding of Ned to not place the Supreme Court above the law with his elevation of that branch of the government above the Constitution and somehow (of course, improperly) above the separation of powers doctrine…?
Your reply concerning SCOTUS confidence seems as off as your now RE-asserting the presumption of administrative correctness (which, by the way, would become worth zero with your proposed “negotiations” with MaxDrei).
ps. You would be better off negotiating a deal of the presumption for the elimination of the examination system.
Since NO examination and registration only would place you in the same spot concerning the presumption, you could save the innovators several Billion (yes – that’s with a B) dollars by eliminating the Office and for probably less than a million simply have a “library” type service for registration.
Good post.
I especially appreciate the recognition that allowing “stakeholders” to lobby the PTO, where the stakeholders only incentive is to reduce costs and to expedite allowance, has to be stopped.
Ditto the infringer lobby whose only interest are in extremely high quality regardless of cost.
The purpose of the patent office is to assure that the patent application complies with the law. Specifications have to be adequate to support the claims, the claims have to be clear and particular, and they have to define over the prior art.
We all know that the patent office is not been doing a great job at any of these fundamental tasks. They need to not tweak, but to consider alternatives. I think we all can agree that the EPO does a good job in examination. Perhaps we ought to study and adopt their procedures, their rules, and adopt, as best as possible, their views on inventive step, because they cannot fundamentally be any different than our requirement for nonobviousness.
Ned, I give up. I just tried to post you something but it has been caught by the Awaiting Mod filter. No idea why.
iwasthere,
You started out interesting enough – the whole “public choice theory” angle and all, but then you fizzled – and fizzled badly (the first clue was the Ned-glomming-onto-you since you wanted to repeal re-examination and IPR).
Let me point out a few things for you.
There is no such thing as “PTO folds to pressure from the inventor/start-up class to issue patents.” I do not know what fantastical powers you think this “group” has, but whatever you are smoking, Just Say No.
You do know that there is a mindset in the Office to GET more points by saying “no,” right***? You do know about SAWS and other SAWS-like mechanisms to enforce a Just Say No, right?
Not sure how you think that this turns into a mechanism for “growing the Office” and I am sure that you are aware that the NET budget is zero, right?
Setting that aside for the moment, your “thinking outside the box” is anything BUT thinking outside the box.
What is there that is new or innovative (that is, that is not extremely “hand-waved”: like your “ teams can be objectively measured, scored and compensated“. That’s a pretty BIG Deus ex machina.
Also, where does the “give the applicant three times at bat” CRP come from? I mean, other than the failed escapade of Tafas that is….?
Then coming to the Ned-bait, you say that repealing re-exam and IPR removes the incentive to issue poor quality patents…..
You do realize that the exact opposite was the rationale for putting those devices into place, right?
***yes, the double play of Just Say No is on purpose. 😉
Anon, can we all agree that a quality specification, a good prior art search, and clear and particular claims, will lead to a patent that is easily enforced? There should be no question regarding support, validity or infringement.
So why is it that patents are issued in such great numbers with bad specifications that do not even tell you what the invention is, claims that cannot be parsed, and where enforcement is dicey at best because one never knows where claim construction is going to go in court?
Is this the problem of the patent office?
This is not a discussion of best practices Ned.
This is a discussion about what the Office can control – it’s own process. And that process should be robust enough to handle all types of input.
You have fallen for the “shiny” of “blame the applicant” when you should be focusing on the Office processes.
(Implicit – again – is somehow the notion of “forced” to issue; which you again seek to blame the applicant. Stop placing blame for the Office process of letting that type of stuff through on the applicants)
anon, the Office’s job is not to do the applicant’s job, but to simply see that the application complies with the law. But with poorly drafted applications, this is almost impossible. Somehow I think applicants expect the patent office to do their job for them by identifying and fixing every potential problem with an application. Of course the patent office will try to do that, but if the application itself does not describe the invention with any clarity, claims invention with abstractions that have no understandable meaning to one of ordinary skill in the art, and/or has no working examples or specific embodiments of how to actually build and use the invention, then the resulting patent is going to be almost unenforceable. Any litigation involving the patent is going to be enormously expensive just to figure out what is going on. Secondly, proving infringement is going to be hard. Trust me I have been the litigations with very poorly drafted applications and/or poorly prosecuted applications. They are nightmare to enforce.
Quality is not the job number one of the patent office. Is job number one of the applicant if he wants a valuable patent.
You have drunk the Kool-aid of the “shiny” – now with the inane notion that applicants expect the Office to rewrite the application, which has ZERO bearing with reality.
Quality – of what the Office does is ABSOLUTELY job number one.
Maybe Ned, you ought to read and see that THAT is precisely the issue (and NOT the “blame the applicant” game that you want to play).
Well, let’s assume (1) that the regulating agency is going to get captured by the regulated that has the most hard $$ involved (the serial infringers) and (2) the regulating agency by its nature seeks to expand both in head count and subject matter. As you know, I have strong views, that the Executive department should not have reexamination (unless requested by the patent owner) or IPR powers because this power only resides in the independent judicial department and the 7th Amendment.
So, if they Agency is going to be captured anyways, without IPR’s the only avenue for the serial infringer is to raise the bar on the front end – and issue fewer patents. I, therefore, moved the Board to the front end of the process – to afford due process to the applicant – to basically ‘sue out’ the patent right – and changed the roll of the examiner into investigator and the group to advocate for not allowing the patent to issue. In this structure, every patent is ‘sued out’ of PTO. The group can – drop the charges – and allow the patent – or the board can decide for the applicant and allow the patent – or the applicate can ‘sue out’ the patent after the Board.
Without question, there is an institutional problem with an Agency invalidating well over 50% of its own work product, when that work product is important enough to seek enforcement. See the post re: IPR stats.
What I find to be very interesting is the call to examine (ha!) the impact of Compact Prosecution on search quality.
There are pretty glaring problems with the practice just at first look. If a claim is rejected as being indefinite in scope how can the full scope of that claim be searched? If a claim is not supported by the original filing or is not statutory subject matter then what on earth is the point in doing a prior art search and rejection before that has been cleared up, as clearing those up often requires changing claim scope?
But beyond those sorts of issues I think there are also more subtle ways that it results in wasted time. It is often the case that a broad claim can be reasonably interpreted multiple ways: one interpretation might require a search right in line with an embodiment presented while the other would best be searched in a different section of the prior art. Where should the search be made? If the invention is intended to encompass both fields then searching both is proper, but if the second interpretation is just a case of the Examiner being unreasonably broad or Applicant using a word that had a meaning they didn’t consider during drafting then searching the second area is a massive waste of time that could have been better spent drilling down into the “actual” invention via more robust NPL or foreign patent searches.
Searching both leads to why examiners say broad claims are difficult to properly search and reject – completely searching a narrowly defined section of technology is relatively quick and choosing between two or three references that are close to the invention is normally just a matter of picking the one which best matches the dependent claims or best lays out the case for combination with a different reference. But searching a bunch of non overlapping fields takes a long time to even do poorly, and picking between ten completely different but still applicable references is nearly as impossible as it would be for the examiner to maintain production numbers if they were to issue a rejection using each of them.
If we were designing examination from scratch I would say there needs to be a sort of Markman stage right at the beginning where the Examiner goes down the claims limitation by limitation and states “this is what I’m interpreting this limitation as and why” or “this is indefinite because XYZ”. Then a chance for the Applicant to reply and either agree, point out where the examiner is being too broad or too narrow, or amend to get rid of an unintentional interpretation. Don’t move forward until all are in agreement and be sure to hold both the office and the applicant to the agreed upon interpretations. Then check for eligibility and support before finally moving to search and prior art. Even in applications where it doesn’t cut search time any at least then the application file has a nice clear listing of what the claims encompass.
And while I’m dreaming I would like a pony too.
Excellent post Derigib.
I would merely point out that breadth does not mean indefiniteness. So if a word is broad, and multiple meanings may fit, then all of those multiple meanings need to be searched.
Do NOT rip my client off based on the internal metric of you doing your job – “production numbers” at the expense of actual production is the wrong approach. This point has been emphasized several times in this thread. Any type of artificial (and thus arbitrary) limit based on some “same-widget” metric cannot supplant just what it takes to do a proper job of examining a particular application. This is the crux of the problem: the desire to put the horse before the cart and focus on “ease” of the job at the expense of actually doing the job.
That is why I suggested an initial review to gauge each application and provide a range of expected time to properly examine based on the application itself.
The examiner approaching claim construction like a Markman hearing is something that I too have suggested (that did not go over well with the examiners that comment here).
“would merely point out that breadth does not mean indefiniteness. So if a word is broad, and multiple meanings may fit, then all of those multiple meanings need to be searched.”
Of course and I hope my post didn’t indicate otherwise.
A per application determination of expected time sounds better than what is in place now but it would still be an arbitrary limit and I worry that it would open up a real can of worms. If one applicant gets 45 hours of examination for their filing fee but your client gets 4 for the same price, are they getting ripped off? Should examination instead be billed by the hour past a certain limit?
Of course the number of hours you get for the filings fee is already extremely variable depending on the (often wrong as noted by the GAO) initial classification of the application, so maybe it isn’t as bog a deal as I am making it out to be.
You raise a decent point, but I would hasten to add that the “time allotted” is STILL an internal metric and at the end of the day is NOT a “gee, I’ve reached my time limit so I guess I just stop now” type of thing.
The paid for item is NOT the time but the task.
Still.
The change is just a better way for the Office to measure its worker performance of the task – not to be confused with the task itself.
But your point about “gaming” would need to be accounted for in that the “management” (and distribution of assignments) would need to be separate from the function (and people) doing the grading and time-bucketing.
I think that the PCT search guidelines represent a very common-sense position
“Full Coverage Rule 33.3(b)
15.25 In principle, and insofar as possible and reasonable, the international search
should cover the entire subject matter to which the claims are directed or to which they might
reasonably be expected to be directed after they have been amended. For example, where
an international application relating to an electric circuit contains one or more claims only
directed to the function and manner of operation, and the description and drawings include
an example with a detailed non-trivial transistor circuit, the search must necessarily include
this circuit. Nevertheless, reasons of economy may make certain restrictions of the
international search necessary, for example, when there is a broad claim and many
examples and it is not possible to foresee which will be the subject of amended claims.
Speculative Claims
15.26 No special search effort need be made for searching unduly wide or speculative
claims, beyond the extent to which they are supported by the description. For example, if in
an international application relating to and describing in detail an automatic telephone
exchange, the claims are directed to an automatic communication switching center, the
international search should not be extended to automatic telegraph exchanges, data
switching centers, etc., merely because of the broad wording of the claim, except if it is
probable that such an extended search could produce a document on the basis of which a
reasonable objection as regards lack of novelty or inventive step could be established.
Likewise, if a claim is directed to a process for manufacturing an “impedance element” but
the description and drawings, relate only to the manufacture of a resistor element, and give
no indication as to how other types of impedance elements could be manufactured by the
process of the claimed invention, extension of the search to embrace, say, manufacture of
capacitors, would not normally be justified. However, if a meaningful search based on a
claim that is not supported by the description can be carried out without much increase in
effort, the search should be extended to cover the claimed subject matter that is not
supported by the description if the scope of the claim is not unduly wide.”
I have long been of the view that “broadest reasonable interpretation” often extends claim scope far beyond what is reasonably to be inferred from the actual language used, and is the result of a special mind-set within the USPTO. In accordance with the PCT Guidelines, more is to be gained by striving for and applying “correct interpretation”. In arriving at such interpretation, attention needs to be given to the specific description, and in accordance with PCT guidelines, the various disclosed embodiments.
Excellent comparative post Paul – with (of course) the caveat that our sovereign has in fact chosen differently.
As you have made clear, your citizenship prevents you from asking our sovereign to change the “rules of the game.”
Those rules ARE different.
To simply accept that THAT difference is somehow “bad” or “needs to be changed” however, is not proper – without more.
I would suggest that you contact your congressmen, but as noted, this is just not within your rights.
Short of that, and not merely presuming that what your sovereign has chosen is “better” or even “worse,” the system we have had here in the States (until somewhat recently) HAS been associated with the worlds BEST innovation results (I need not venture into any type of cause/correlation discussion).
Changing just to match “what others are doing” is at best unthinking, at medium unwise, and at worse a game of the TRANS-national seeking to “pull the ladder up behind them.”
No thanks
(btw, you make an excellent point by tieing in BRI)
Yes, non-U.S. PCT prior art searches are usually [not always] better than regular PTO prior art searches. They should be, since they cost a great deal more than most U.S. applicants are willing to pay the U.S. PTO for a prior art search, or, for even a modest private prior art search before filing that would lead to much better claims and specs. [Not even to mention the other foreign application fees.] You and anon are comparing the performance of a Cadillac to a Yugo without consideration of the cost differential.
Not so fast there Paul – I am NOT the one confusing sovereigns here.
I am not the one “comparing performance” in a seeming vacuum – I am the one pointing out that you DO have some very critical differences.
Derigib, Whatever the tweaks on the procedure, all are beginning to recognize that compact prosecution is inconsistent with quality prosecution unless one considers the RCE to be what it purports to be, continued prosecution — and a payment for an additional search.
If applicants do not want to get to an RCE, they need to conduct their own search and also file very clear and not overbroad claims to begin with.
“If we were designing examination from scratch I would say there needs to be a sort of Markman stage right at the beginning where the Examiner goes down the claims limitation by limitation and states ‘this is what I’m interpreting this limitation as and why’ or ‘this is indefinite because XYZ’. Then a chance for the Applicant to reply and either agree, point out where the examiner is being too broad or too narrow, or amend to get rid of an unintentional interpretation. Don’t move forward until all are in agreement and be sure to hold both the office and the applicant to the agreed upon interpretations. Then check for eligibility and support before finally moving to search and prior art. Even in applications where it doesn’t cut search time any at least then the application file has a nice clear listing of what the claims encompass.”
This is a good suggestion. The pre-first action interview program has some aspects of this, although the examiner does conduct a search before the interview.
The problem with the current system is that it gives examiners incentives to find a reference that “reads on” the broadest UNreasonable interpretation of the claim and send out the OA chiding the applicant along the lines of, “See how broad your claims are? Even this reads on them.” And then when applicants amend the examiner changes the reference and makes the action final. That’s not in line with the letter, or the spirit, of the rules or the MPEP. But it happens all the time.
I’m all for examiners putting their claim construction/interpretation on the record for applicant to review, discuss, and challenge. And I agree it should be done before any search is undertaken.
Get POPA and PTO management to work out a new PAP to implement such a system and you got a deal.
Put in the deal that the office has the authority to require claims to be put into formal language and then perhaps you have a deal. Otherwise you have a little less than half of people that like to draft claims in the hint hint nudge nudge “you know what I mean” kind of language that is informal to express what they are substantively trying to cover and those people have to be dealt with. Currently they get dealt with by “reading the claims broadly”, but a mere authority to require formal language be used would nip the problem in the bud immediately.
You cannot require a “formal language” type of requirment for things that are on the leading edge of innovation.
I certainly hope that I do not have to explain why – your idea is even worse than the one-widget-size-fits-all.
“You cannot require a “formal language” type of requirment for things that are on the leading edge of innovation.”
Sure I can. Indeed I already do, and its worked out just fine for everyone involved. The vast majority of folks don’t have any problem with it. Especially foreign filers who are the worst offenders in the first place. And I’ve never had anyone have a large problem with it.
It helps quite a bit with clarity of claim scope and according to yonder USSC one of the PTO’s roles is ensuring that.
At 34.1.1 you ask for the authority to do something that you then turn around and boast that you already are doing…?
Think about what that says for just a moment.
Yes but it isn’t a formal authority. How I wield powa in the office for the betterment of all is my own issue. Having it be made a formal power for the whole office is completely different. 1. It will put applicants (and moreso their attorneys) on notice that it will be done. 2. The agency then has explicit regulatory or statutory power and doesn’t have to rely on its own inherent powers being wielded by yonder minions on a case by case basis.
LOL – your “wielding powa… is my own issue” is different how exactly from my comment below at 34.4.1.2.1.1, cowboy?
Take a step back and think about it for awhile there, fella.
I honestly don’t know what you mean, or even contemplate, by “formal language.”
Here’s an idea (not mine originally, but a good one): the Office can, and should, get rid of the “single sentence” requirement for claims. It would lead to more narrative claiming, and would make claims more readable, and understandable to everybody, including examiners, judges, and yes, those of ordinary skill in the art.
What the system certainly doesn’t need is any more “format” and “magic word” requirements from the PTO.
“What the system certainly doesn’t need is any more “format” and “magic word” requirements from the PTO.”
Imma respectfully disagree on that one cowboy. Creating or abiding a wild wild west helps nobody in formal proceedings like patent lawl. Congress and the PTO having failed to clamp down in this area are what currently lead to probably half the rejections that the office sends out and especially the ones of those that applicants whine about.
“I honestly don’t know what you mean, or even contemplate, by “formal language.””
You would if you prosecuted before me a few times. Look, in at least some arts, mine included, there are different ways of saying the same thing which routinely pop up. The office routinely interprets some of these ways in broad fashion, and others of these ways in narrow fashion, it’s an informally established vocabulary/nomenclature developed over the years. I would hazard a guess that 1/4 to 1/2 of all amendments that take place in my art are nothing more than specifying that they mean x y z that they claimed in one of these alternate fashions at the outset.
“Congress and the PTO having failed to clamp down in this area“…
…but the Wild West of 6 doing his own thang is “perfectly fine”….
Uh hu.