The PTO has been quietly expanding its patent quality review program using both pre and post-allowance approaches. The general perception is that the quality review is both over-inclusive and under-inclusive. It must certainly be true that the review is catching some patents. However, the following quote — reportedly from a Patent Examiner — suggests that the review program — at least the top-secret post-allowance review — may be somewhat misdirected in its approach.
“[I]f your claims are long and all the t’s and i’s are crossed and dotted, those cases will get a pass. If the claims are short and the subject matter is easily comprehensible, they will get reviewed. (A note to attorney out there — make those claims long, heh). Short claims will get many rejections no matter how novel or unobvious they are. They will make the applicant to put anything in for an allowance. First action allowance will get pulled (at least in my group).” (via G. Ahronian)
Many patent attorneys draft their initial claim in short-abstract form. I have heard of the two finger approach for the first claim which requires the text of claim one to fit under your index and middle fingers. My approach has long been to provide an initial claim that is long and detailed so that the examiner can understand the invention in concrete form. With later independent claims, I begin to draw-out the scope to cover a larger ranger of enabled scope. I wonder how this approach fares under the new quality review process. Of course, this approach must be used within the applicable rules — notably 37 CFR 1.75(g), which requires that the “least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.”
Notes:
- Secrets at the PTO: The PTO has been stingy and secretive with all information regarding its Office of Patent Quality Assurance (OPQA). What we do know is that OPQA rejections (or their underlying reasoning) are not provided to patent applicants or placed into any publicly available record. Any further information regarding operation of the OPQA would be appreciated (either via email or comment). dcrouch@gmail.com.
- Litigation Notes: Anyone litigating a recently issued patent may want to submit a FOIA request to the PTO to obtain OPQA information regarding the patent in question. A routing sheet may be available. Examiners — Is an internal record maintained regarding OPQA rejections?
Mr. Grouch? LOL.
Mr.Grouch -yes, the USPTO keeps internal records of OPQA errors under 2nd pair of eyes review program.
This program is a very abusive program – because it is administered in an arbitrary fashion. There was a list of examiners wherein USPTO officials referred to these exxaminers as “Bad people”. Some patent applications reviewed under the program have been languishing for 2 to 3 years, because of this 2nd pair of eyes program -this program has actually increased the patent backlog and decreased allowance rates – the increase in quality is dubious since, this 2nd pair of eyes review program has been administered based on “gut feelings” of managers rather and has been used in a punitive fashion against certain examiners irrespective of actual merit and quality of work.
I’ve emailed you information about this 2nd pair of eyes review program. The Patent Office is lying to you when they give you a “no records determination”. There are thousands of pages of responses with which they could have given you in answer to your FOIA request.
Jonathan Cantu (at jonathanc@whistleblower.org), the Staff Attorney at the Government Accountability Project was able to secure a huge FOIA response from the USPTO about this 2nd pair of eyes program. You and others should contact him or Attorney Karen Gray (KarenG@whistleblower.org) for your copy of this FOIA response from the USPTO.
In regards to the challenges for the small inventor; I am one of those small, potential inventors & I follow as many postings in Patantly O as much as possible.
It certainly appears to be a near impossible attempt to go forward with the patent process after seening all the mounting cost that can & may occur in the process.
I am trying to do as much of the research myself as possible.
It also seems very difficult in determiming what to quantinfy in the various stages of a patent to aviod or limit claim rejections.
How can a patent attorney give a reasonable estimate of cost to an inventor for the completion of an invention claim, based upon the requirements & unforseen challenges to complete a patent ?
It seems obvious that the overall complexity of the the patent claim would have a major influence on the outcome.
Thanks, Joe
I can’t believe the “quality review” process at the PTO to be anything but a disaster. In the past month I have had (1) an examiner flatly mis-state patent law, which misstatement formed the basis of a rejection; (2) an examiner tell me that, if I made specific amendments, the claims would be allowable, then reject the so-amended claims; and (3) an examiner quote a post-filing reference, which suggested a standard to be used going forward, as establishing a hard-and-fast rule in the relevant art as of my filing date.
Honestly, with this kind of thing getting through the quality control process, I can’t imagine anyone arguing with a straight face that the patenting system has been improved. I’m going to have to counsel my clients going forward that they can expect little from the USPTO aside from frustration and a voracious appetite for fees.
step back, an election requirement is a restriction of sorts. There are differences (e.g. no requirement of the examiner to show burden), but the end result is restriction.
The problem is that the chapter 800 of the MPEP was revised in August ’05, and a new type of restriction between “related species” was created. The best argument in the past was mutual exclusivity, or a disclosure of embodiments in which different features can be, but not necessarily, used together. This is now hopelessly blurred in favor of the examiner. Almost any argument can now be viewed as an admission that the different species are obvious variants of one another.
I don’t believe that an election of “species” is the same as a restriction of “claims”.
These are two different animals. It seems that examiners and practitioners confuse them all too often.
Anon Examiner,
johng wrote
“What we are seeing is examiners issuing species restrictions between laughable groups. I’ve seen examiners pare the examined claim set down to 1 or 2 claims from 10 easily searchable claims.”
This one of my hugest pet peeves. The species rejections I receive are almost uniformly awful. Any difference between Figure A and Figure B can be used to generate a restriction. In many cases, I can apply 75% or more of the claims apply to each of several “species” as defined by the Examiner, so I am not sure how much workload they believe they are reducing.
JohnG – Thanks!!! I’ll try it. And I won’t pass the secret along!
Steve – Great tip. You’re right – the transmittal letter is rather obsolete. Good point.
I guess I use it as a check to make sure all of the components of a filing are there.
Anybody file a Reply to an office action via EFS yet?
M –
Thank you for sharing both insight and sincerity. I am certainly in the minority. However, I am in the minority most majorly screwed by the proposed changes. I am the guy who rejects the demand of large companies that effort be driven in a direction dictated by marketing folk more interested in their next bonus than their contribution to mankind. I believe Life, and therefore time spent, means more than Q4’s bonus. After a few drinks, I can honestly say that I fear I’ll follow in the footsteps of Tesla though I can’t claim his genius. Wish, me luck, I’m pretty sure I’m correct and I’m pretty sure I’m screwed due to being correct more than a decade before “my peers”.
Sincerely,
Your Client, Potential Client, or Potential Customer
M –
Thank you for sharing both insight and sincerity. I am certainly in the minority. However, I am in the minority most majorly screwed by the proposed changes. I am the guy who rejects the demand of large companies that effort be driven in a direction dictated by marketing folk more interested in their next bonus than their contribution to mankind. I believe Life, and therefore time spent, means more than Q4’s bonus. After a few drinks, I can honestly say that I fear I’ll follow in the footsteps of Tesla though I can’t claim his genius. Wish, me luck, I’m pretty sure I’m correct and I’m pretty sure I’m screwed due to being correct more than a decade before “my peers”.
Sincerely,
Your Client, Potential Client, or Potential Customer
Gideon: do not use a transmittal letter with EFS. You stopped using post cards. You stopped using a certificate of express mail. It’s time to give up another unnecessary practice.
anoninventor,
Well I can’t really even pretend to give you any advice on that issue. Nor do I pretend to know the eventual result of the proposed rule changes. I have talked with many of the parties involved in creating those rules, and my general feelings are that they were almostly entirely proposed for reasons of pendency. I know more sinister theories abound, but I don’t find them as compelling.
As for the small business problem you mentioned… I can certainly forsee a market solution, but I’d rather not go into that here. Other friends have mentioned getting involved in that field and I wouldn’t want to our their plans prematurely. Still, if the rules are set, the market will adjust to maximize profits. It just takes time.
-M
M,
My experiences with the examiners I’ve met in face to face interviews have been great and I agree with your thought that the examiner corps is doing the best it can give the time and resources available to it. I really wish there was a legal way for me to contact individual examiners and point out the prior art they should be focusing on – I’ve been so buried in the art for so long I can quite literally cite the most relevant art after a 10 minute read on a given claim, mostly 102, once in a while a 103, some of it with my own patents as prior art and some based on the work of others as far back as the 60’s & 70’s in the US, GB and German art.
The part that truly makes my teeth itch is that all of the companies, most of the inventors and in-house patent counsel know me and my work, but the external counsel prosecuting the applications appear to be intentionally kept in the dark (this is a guess, not certain knowledge). This may not technically be a willful failure in duty of candor, but it certainly reeks of it. Watching the CEO’s of the companies make statements regarding the value and robustness of “their” IP at investors conferences like Merril Lynch, Piper-Jaffrey, etc makes me want to scream when the claims are subject to interference, and examiners will do damn near anything to prevent an interference based application from making it to the board of appeals. That is not a rip on the examiners – interference is a huge pile of work that is not incentivized by USPTO quality metrics and by definition is going to make another examiner look bad for not having rejected claims during prosection of the junior case. What a mess…
As far as the “value” of garbage patents, the large corporations in my industry use them primarily for one purpose – to squash innovative product offered by small companies and then force them to hand it over at pennies on the dollar. Simply put, the threat of having to spend $2.5M to $3.5M to defend yourself against a garbage patent (even one you are 99% sure to get nixed in summary judgement for less than $150K in fees)is more than sufficient to scare away investors, employees, and customers when you are trying to development truly innovative technology on a shoe string budget. I’ve had it done to my company when I was too young and clueless to recognize it for what it was, and I’ve seen it done to other smaller companies 2 times in the last 6 years when I’ve had sufficient experience (read cynicism) to recognize it. The lobby pushing for patent reforms including the elimination of continuations is nothing more than the large companies paying lobbyists to legalize theft, and if the continuation rules go into effect in the next few months it will literally increase my cost, on a present valuation basis, to obtain valid claims by 2 orders of magnitude. If I fail to obtain those claims and invalidate the garbage patents held by the large companies, I will not be able to release product based on my own inventions because of the threat of suit. A catch 22 with very sharp teeth.
Sorry if my tone is harsh – I’m feeling more than a bit bitter and burned-out today.
Gideon, I hate to give away my secrets :), but you should contact the “HSLIE” of the group to which your application has been assigned. Go to the employee locator at the PTO site, on the bottom “organization” box, put in a general group number, like “2600.” Look for names with HSLIE attached to them. They are generally very helpful people, my favorites at the PTO, and will often fix the problem while you are on the phone with them.
This is rich.
Here’s how I spent some client money today, all thanks to the zombies at the PTO.
1. Case that was file 5 months ago is no longer in private PAIR. It was in PAIR for the first month of its life. I have called about this before. Got the “check back later.”
2. So today . . . Call PTO. Get Zombie Man voice mail.
3. Get general number. Ask for EBC help desk number. Says she’ll transfer me.
4. Transferred to non-EBC. Get EBC # from her, and get transferred to EBC.
5. EBC guy picks up in short order.
6. Tell him my issue.
7. Tells me, it’s not in PAIR because “there is no Customer # associated with it.”
8. I say, yes yes, that much I figured. BUT, given that I filed it through EFS as a registered filer with the same customer number, and given that the receipt you sent me has my customer number on it, and given that it was IN private pair for a month before it was removed, and given that my customer number is on the declaration, then it MUST be clear that you’ve screwed up, right?
9. No sir.
10. What do you mean No?
11. Well sir, you gave an address on your transmittal letter, so they are going to enter that into the system rather than your customer number.
12. OK, well, can you simply associate the case with my number?
13. No sir, you’re going to need to file an SB(go___yourself).
14. Are you serious?
15. Yes sir.
16. Well OK I will. How can I prevent this from happening again?
17. Well, you’ll need to remove the address from your transmittal letter.
18. OK. So your advice to me on this matter is that the only way to prevent this from happening again is for me to remove the ONLY address in the entire 60 page filing packet, which happens to be the ADDRESS IN MY LETTERHEAD?
19. Yes sir.
Seriously. Does that not say it all?
Thanks again for your response examiner M.
I never said there was anything wrong with the concept of restriction. The PTO does not follow the guidlines in their own manual! To avoid admissions, I argue proceedure has not been followed and that a case has not been properly made for restriction. I know very well a proper restriction when I see it. I did many proper ones in my years there for the very same reasons you mentioned above.
What we are seeing is examiners issuing species restrictions between laughable groups. I’ve seen examiners pare the examined claim set down to 1 or 2 claims from 10 easily searchable claims.
The current rampant restriction practice runs counter to whether the shield against double patenting should be provided by way of restriction, where the examiner is to consider whether double patenting should come into play if both patents are issued.
Additionally, one must worry about the examiner’s characterizations in restrictions. It very likely these characterizations are somewhat ridiculous and your claim may be amended during prosecution so that it falls outside the original reestriction groupings. This claim, if allowed, may be subject to invalidation for double patneting (no longer any shield).
From what you mentioned about classification, it seems that it is a budget issue more than anything else. I remember being there when the classification section was gutted under Lehman and/or Q. Todd. Text searching is nothing new. The old APS system was pretty good for its time. I even tasted East/West and other things before I left. What I found was I used a different searching strategy for almost every applicatin. I still used class/subclass for most, but augmented it with text searching where effective. You are right, text is best for chemical related cases, but not necessarily so for others.
I also have the luxury of being married to a madame librarian who works at a large university. She is at the forefront of information retrieval theories and systems. She is a classifier of sorts and rolls her eyes at this mess the PTO created.
“Non-standard language would increase your chance of both getting a patent and the patent being more likely to be overturned by the courts.”
Indeed. The use of non-standard language (or “made-up terms” as we call them in the field) is an excellent way to make the identification of prior art more difficult for a busy person.
And it’s so refreshing to hear someone at this blog acknowledge the Prime Paradox: patents obtained using “clever” methods are useful for some purposes (getting a cheap license, luring investors, etc.) but woe unto the doofus who believes that in 2007 that the “presumption of validity” means that a patent so obtained will stand up in court or will frighten an educated competitor who can afford to hire a skilled attorney.
“Every traverse I have received, save one, in the last year has been directed to burden. I can assure you that telling an examiner what is hard or easy to accomplish under their constraints is rarely a winning argument.”
You don’t have to tell me! Attorneys have simliar constraints and, frankly, the burden argument is the easiest (i.e., cheapest) argument to float.
For reasons that we are free to contemplate, MPEP Chapter 800 may be the most poorly drafted chapter in the history of literature. There is more truth and wisdom in the weakest William Burroughs cut-ups.
anoninventor,
I can certainly understand the frustration. I guess all I can offer is this one observation (this is my own observation and certainly not the public view of the PTO). The patent office is not the arbiter of quality patents. We are just the rough sieve. Considering the (relatively) low cost applicants pay for search and examination, we are doing a pretty good job when we can weed out 80% of the bad applications. People that attempt to game the system to get a patent always seems to have more resources at their disposal than examiners do, and often times will win.
I guess the question is what have they won. I can’t comment on your situations, but generally bad patents are hard to enforce. In well established fields, firms will do due diligence on patents that probably exceeds the level of care the office itself takes in allowing the patents in the first place.
In terms of preventing… Many examiners read the full text of any application that is under 20 pages long. Yes, we should read all of the text regardless… but again… limited time to perform the full scope of examination. If you include in that applications some helpful history and explanation, you are doing a good job of informing the examiner at that time. If you include related words, driver and rider along with a description… and even better a statement that yours is both, then that makes the examiner that much more likely to use your art and reject second comers down the road. Whatever helps examiners understand the full scope of your invention helps you down the road.
Good luck in your current case,
-M
Anon Examiner,
Thanks for the insight. One of the problems I have personally seen is examiners who are not sufficiently “into” a given field to understand that fields specialized vocabulary. Over the last 5 years, third parties have applied for just short of 1,000 claims in just short of 50 applications for which complete support exists in patents I applied for in 1994 & 1995. So far, only a handful have made it through prosecution to issuance, but the IFWs on the others show a pile that appear likely to issue in the next 6 months or so.
The vast majority of the applications that are slipping by the examiners are doing so becuase the examiners do not appear to understand the terms of the art. By way of analogy, the following is my best shot at making the nature of the error clear:
In america, we commonly think of “driving” a car, while the comparable act with a motorcycle is described as “riding”. By way of analogy, I often described what my inventions did as “driving a motorcycle” and the examiners have allowed claims in third party applications, with priority dates 6 to 11 years later than mine, describing “riding a motorcycle”, and in one case, the examiner literally choose to say that my spec did not teach “riding a motorcycle” in a third parties file wrapper when my specs specifically described “driving”. In three of the patents actually issued to third parties, the number of pages of prior art references including my own patents exceeded 4,000 pages of material in what seems likely to have been a ploy to overwhelm the examiner with irrelavent material to effectively hide the relevant prior art.
My attorney’s best estimate for cost to capture these claims by way of interference exceeds $6M (yep, I’ve got 4 continuations pending).
I would so love to do a 4 hour long powerpoint presentation at the USPTO with the examiners in my art groups essentially saying “Look…DRIVING and RIDING mean the same f@$*ing thing in this field!”.
Sorry for the rant. I feel better now 🙂
Hopefully this is a shorter post!
Regarding Johng’s second question…
“Second, are you sure that restrictions are being reviewed by Office personnel that understand the guidelines of MPEP Chapter 800? My impression is the Office condones a completely arbitrary approach to restriction. Please explain this one too.”
Restrictions are part of the body of the application that is reviewed. I have limited experience with what actual errors are pushed back, but I can say that in that limited time I’ve never heard of a restriction being marked as an error (again this is a small sample size).
Having said that, restrictions are a difficult thing to mark as an error. There is a huge amount of personal preference built into the decision to restrict or not.
When I was in training we were generally huddled into two camps, Double Patentting and Restrictions. You were encouraged to follow one path or the other. I chose restrictions, as did many examiners, because it provides less work for the examiner and more legal coverage for the applicant.
I also firmly believe that the office should work to get the best people for each art examining their relevant art. While applicants often think no burden exist for separating methods of manufacturing a device with the device itself, the examiners often entirely disagree. In my particular unit, the methods are examined by a completely different art unit of a completely different tech center. Further, when the claims aren’t separable, the methods are generally complete copies of the device claim with no additional distinctions. In these instances, perhaps the best tact would be to request joinder at the end of prosecution even if the original restriction is improper. (I have only had one request for joinder in the last 5 years) Then, the examiner doesn’t have to repeat the same rejection for every claim and the process can more easily identify the relevant issues. The same is true in reverse.
What I find frustrating is the complete lack of quality traverses. Every traverse I have received, save one, in the last year has been directed to burden. I can assure you that telling an examiner what is hard or easy to accomplish under their constraints is rarely a winning argument. I understand the legal implications of arguing other options, but in those instances the battle is with the Courts/MPEP writers and not with the examiners. Really the biggest problem with restrictions I believe is the conflict of interest. The only party that seems to really want restriction reform is the applicant, and they are always in seemingly the least informed and least powerful position. Some scrupulous attorneys and examiners will certainly disagree, but the evidence seems to indicate these are in the minority.
I think common sense is the best guidance. Examiners are using restrictions and species to make their workload manageable and do a better job at examining. If a case is filed with 100 claims, that examiner is going to try to find a way to break it up. A case of 10 claims is much less likely to be divided. Of course this is arbitrary, but the office doesn’t give examiners more time to examine cases of 100+ claims regardless of the additional fees they charge. I understand there was some talk of forcing examiners to examine all claims with an additional fee proposed as part of the rule changes… but to the best of my knowledge this didn’t get off the ground with attorneys either.
-M
I had a feeling that searching comment was going to raise some eyebrows, especially from those that spent some time in the office before heading out to the dark side. I first want to point out that I’m not opposed to classification search, and I doubt the office is going to state what I said as an official policy anytime soon, but I think my impressions are correct.
First a quick primer for those confused… Searching is primarily done through one of two methods.
The first is to search in the classification indexes to find out where similar art (art that is of generally the same form or function) is classified and search all of the patents in that subclass. Until patents were scanned and the text was retrieved, this was the only method to search for applications.
The second method revolves around the newer tools now provided to search all the text of the patent database. Here examiners are taught to use search words to identify relevant art.
The good and the bad:
Classification searching is great in well ordered art. For instance in wristwatch batteries, there might be a small area of the art that is most relevant and easily discoverable through examining the other similar art. This particular area might not be heavily influenced by similar art from other areas and as such a search can be limited by the class of the device. One would normally search the particular most relevant subclass along with any other subclasses that might lead to an obvious type modification. Also, because of the specific nature of the art, the subclasses should be relatively small and contained. One might expect no more than 200-400 references per subclass. One can then search 4-6 subclasses in a reasonable period of time.
However… to make sure that other people searching for similar art also find this reference in the future, you need to list it in other subclasses where the specification provides some worth of detail. (Battery connectors, watch seals, battery composition…) In an era of exponential application growth, the size of these subclasses grows even faster. To keep up, examiners are tasked with subdividing these subclasses into more specific subclasses. However with inventions getting more and more integrated and subclasses getting more specific, subclass searching tends to miss some excellent art. To keep examiners searching all of the relevant art on a subject some subclasses are left to grow without subdivision. Subdivision also takes an extraordinary amount of time and production value of the involved examiners. Time spent not handling other cases and reducing pendency. So now we have subclasses that span 4000-5000 references. I can’t speak for all arts and examiners, but generally speaking in my art, a primary examiner can spend time looking at around 500-1000 references. A junior examiner might be able to look at up to 2000. Any more and the quality of that look is lessened or the examiner can’t make his production requirement. So examining a subclass of 4000 references isn’t feasible, certainly not 4-6 subclasses of that size.
Which brings us the second type of search. Text searching allows examiners to pull from the entire bank of references and then using specially selected terms try and identify relevant art. This is probably much more difficult than one imagines. Examiners must anticipate all the terms that any relevant application might use. Even still some apps are especially difficult to search in this manner. While before, a bad examiner could still be expected to look through the 400 patents in a subclass where a case was classified; a bad text searcher will miss scores of relevant references.
Most experienced examiners still use a combination of both techniques; often text searching from inside a certain class. However, less and less emphasis has been placed in the classification of applications. As such, they are often out of place. So relying on them has become more and more dangerous. This is especially true with Pubs. Pubs are classified before the specification is ever read (the spec won’t be read for another year or two at least). They are notoriously poorly classified. The office has even started to use a computer text-searching machine to do initial classification of new cases. This certainly helps the backload (giving examiners more time to examine) but it also adds to the classification problem.
Newer examiners are taught to rely less and less on the old system because of these trending problems.
It’s really a problem of scale. Now that there are so many more references to consider (both US and foreign) but the same amount of time to search them, the search itself must become more efficient.
By the way, in some arts (chemical compositions for instance) text searching is an amazing tool. Someone searching for a particular phosphor used in alarm clocks can simultaneously search all phosphor subclasses, all alarm clocks, all TVs, lights, et al.
The advent of text searching does raise an interesting point. Should it change the way applications and claims are written? If you want the case to find the best art and be found in searches of other cases, then the use of standard language would enhance that possibility. Non-standard language would increase your chance of both getting a patent and the patent being more likely to be overturned by the courts.
I’d love to see classification remain a useful tool in examination, but so long as applications keep being filed covering an incredible broad spectrum of information and the volume of information increases so quickly, I can’t see it maintaining any usefulness.
Anon Examiner,
I agree with johng. Text searching is a great supplement to classification searching, but is not and should not be considered to be a replacement for it. Text searching’s primary limitation is that three different applications may use three different terms to refer to the same limitation and trying to capture every combination of search terms can be extremely difficult. I believe performing both text and class searches greatly increases one’s chances of finding the closest art.
I also thank the anon examiner for taking the time to respond with such detail, but two things you mentioned bother me.
First, this comment: “(For the person above who complained about mandatory searches… it is worth noting that the office is generally trying to move towards text searching and not classified searching. There are many good reasons for this which I’d be happy to explain if requested)”
Text searching is great, but I will never undestand why the office insists on the fundamenally misguided notion that classification is an old timey way to search. To the contrary, classification is one of several basic ingredients of the searching cocktail. Ask any librarian. It will play a major part of a comprehensive search in many areas of technology, and a more minor one in others. Sometmes text and classification searching can be combined very effectively. Please explain further.
Second, are you sure that restrictions are being reviewed by Office personel that understand the guidlines of MPEP Chapter 800? My impression is the Office condones a completely arbitrary approach to restriction. Please explain this one too.
Thank you Mr. “M” for the above post. Its great to hear from the Examing Corps. here.
Just a quick clarificaiton of my point above about “experts.” I don’t dispute that in the PTO there are subject matter “experts,” e.g. Examiners who are extremely well versed in the state-of-the-art for a particular technology. However, what this means to me is that they know of, for example, key references in that art that can be applied. The type of “expert” that I don’t sanction is the bloviating type who simply asserts that “I’ve seen that before therefore its not allowable” type of “expert.”
I guess I’m not really that worried though, the PTO can try all the hand waving they want with regard to experts, wikis or the like, but I doubt the requirement to cite valid prior art to make a p.f. 102 or 103 rejection will even go away no matter how many members of the hand-holding community chime in.
This is going to be a long post… but hopefully will be useful.
I want to expand on “An Examiner’s” post with some additional information. I understand this process is clouded in secrecy so hopefully our post together will help explain the situation more clearly. First I’ll expand on OPQR reviews and second on Second pair of eyes reviews which are often completely separate.
First…
From my experience, OPQR reviewers are selected from experienced examiners that have done quality work in the past but might not have the temperament or desire to follow the promotion tree to SPE. Again, from my experience these are generally very good examiners. Because a limited number of reviewers cover a greater number of Art Units, the reviewers are expected to analyze art outside of their earlier practice area. It should be noted that most SPEs also will work and review junior examiners from a different art area than they themselves worked. It is the belief of the office that all parties benefit from moving people into different areas to expand the knowledge of both themselves and the people around them. I can’t fault the policy, and I certainly witnessed it extensively in private business before my time at the office.
There is some initial aversion to the idea of non-experts examining work in the field for errors, but one must also understand the degree of review involved. The office will not overturn judgments by the examiner on issues that don’t have a clear error. Reviewers are looking for obvious errors (102 or easily combined 103). These errors are the kinds that are easily accessible to even non-experts in the field. This is also why there is a desire for longer claims. The idea being that without expertise in the field, reviewers would not know which of the boilerplate claim limitations are novel and which are standard to all components in the field. Short claims allow reviewers to focus directly on the novel subject matter and address the issue.
These reviews impart equal importance to any errors in the prosecution history. That includes 101, 112, 102, and 103 errors (among others of form and function). The reviewer works down a checklist of possible locations for errors (was a restriction made, and was it proper?) along with areas the office is looking for some consistency (were the reasons for allowance required? Were they clear and concise?) Finally they review the search history of the case checking first for obvious faults (were some electronic databases not searched?) and then decide if some additional search should be used. The degree of additional search they do at that time is often dependant upon how extensive the original search was and how effective the search techniques appear to be from the search record. It is worth noting here that the record includes a very detailed report on what and how the art was searched (including exact search terms, subclasses, and hits for each search). A limited number of text searches that only turn up a total of 20 hits would certainly attract the attention of a reviewer and encourage a more detailed search on his part. They fill out the answers to each of the questions from the form and forward the results. (For the person above who complained about mandatory searches… it is worth noting that the office is generally trying to move towards text searching and not classified searching. There are many good reasons for this which I’d be happy to explain if requested)
This is only an initial report of error, not a final decision! That is very important to note. The error sheets are passed down the ladder to the SPE who then must decide if the marked errors seem fair or are inaccurate. The latter case is certainly possible considering the difficulties of searching outside of one’s art. If the SPE feels the error is unwarranted he can challenge the error through an internal process. Eventually a decision is reached (it can be moved up the chain several notches in rare cases) and the error is either cited against the art unit and examiner or is reversed.
Errors are serious to examiners. An error increases the frequency of random searches on your cases and multiple errors can lead to dismissal from the office. Examiners are trying to stay under 5% allowed errors and 10% errors on all non-allowance cases (these numbers are estimates and dependent on the art). I can assure you they take errors very personal and strive to ensure that they do not get them in the future.
There is a ton of criticism against any kind of quality review. However, the office is also reviewed by outside sources. Those outside sources compare the office quality to the quality of allowances in other offices throughout the world. In light of this the office has determined to do a better job of reviewing actions and increasing consistency throughout the office. Those people that complained about inconsistent examiners should note that this is the best tool for the office to know what areas need further training and which examiners are really not effective. The worst of examiners are fired while the errors as a whole are used in feedback loop training the following year.
Now with regards to second pair of eyes review: This is a policy that is different in each technology center. First let me define SPOE. Second pair of eyes reviews are not random selections for the most part. They are a brief review on all allowances or high-risk allowance types by someone in the same art unit (and therefor very familiar with the art). In some centers no second review is done, others do reviews of all allowances, and some only target high risk allowances. High risk would refer to allowance types that have been tagged for the most errors in the past. In the past, first action allowances have accounted for more than half of the total errors randomly found by the office. In that same period they accounted for only 1/3rd or less of the total allowances. In some areas they were 4 times more likely to contain an error than a case not allowed on first action. The different approaches are flexible and often are implemented depending on the degree of difficulty a center is having at that time with its quality. There is a huge pendency cost to second pair of eye review (since examiners much be given time to review their peer’s work) so centers only use this tool when they feel it is warranted. I can say from experience that it can be very valuable but is also a very difficult tool to wield. I’m sure attorneys can relate to the problems that could be created by law firm partners having to have all arguments reviewed by another partner before sending it out the door. Still… nothing but increased quality can come from more attention and thoughtfulness given to a case before it is out of the reach of the office. No one benefits from cases being allowed that shouldn’t be allowed.
-M
Couple the fact that your SPE “has seen this before” with …
(1) the fact that you’re fresh out of undergrad and don’t know a lick about how these complex inventions or prior art works..
(2) the fact that your vision of what you would be working on after school is radically different than sitting in a room by yourself looking at patents for 10 hours a day…
(3) the fact that the office is always squeezing you to hurry up…
(4) and the fact that your SPE cares more about not getting an OPQA error than if you really can accomplish a new action every 10 hours..
and, you’ve got the beginning of a real mess!
I’d like to see some attnys make solid prima facie cases for each of 50 claims in a case in under 10 hours. Start with the 7 million US patents, and then branch out from there. Don’t forget about the fact that your SPE expects everything to be rejected because “they’ve seen this before…”
I made a post in another thread that too many people inside and outside the office regard examining as a stepping-stone job. KM’s last post backs up my point.
Mr. Frustrated
As to whether these OPQR reviewers have additional legal or examination training. The answer is no. These people were my colleagues in my previous life as a patent examiner. They generally are primary examiner’s tired of the grind of the patent corp that apply for the position as OPQR reviewer because (1) as I said they are tired of examining and (2) the position is a GS-15 position. Not to say that some of these reviewers are not skilled examiners, but some are no hot lick either. Also, keep in mind that an OPQR reviewer that was a chemical examiner would review biotech cases, so Doll’s comment that each are experts in the technology is not necessarily the case.
If we in the profession of patent law were smart, we would, individually and in our respective IP groups, begin to bombard our representatives and senators with letters promoting the idea that poorly-executed (or functionally nonexistent) examination rules effectively act as a tax on innovation (in increased application and prosecution fees, and in lost opportunity costs for inventions not pursued because they could not be adequately protected with one or more patents). This is particularly true in industries (e.g., biotechnology) where much of the innovation occurs in smaller, less well-funded companies.
I understand (at least in some respects) the pressures examiners are under from supervisors, and the pressures the PTO is under from various industry groups. But perhaps it is time to legilatively change the philosophy of the PTO to a more patent-friendly administration.
(I understand many of you will have opposing viewpoints; I’d be interested in hearing them so I can understand the situation better. Thanks in advance.)
Gideon is my new hero…
The old “pencil test” – nothing new, but, like racial profiling, not something anyone would admit to. Also, like racial profiling, subject to scrutiny as an abuse of discretion.
To actually give credence to such an arbitrary and capricous test is ridiculous. While it may be true that terse claims are more likely to be rejectable, the art of claim drafting is in the economy of terms. Thus, a short claim better have some narrowly recited terms to gain allowance. It doesn’t matter how long or short the claim is. The terms either read on the prior art or don’t.
That’s why objective tests like TSM should rule the day not off-the-cuff determinations of obviousness, expert “opinions” or wikis… Once the patent office adopts an attitude of being “experts” then they are open to actions against the Comissioner in the proper venues for a multitude of infractions of well established prinicpals of Adminstrative Law.
I would love to see a case where the OPQA has told the examiner to drop a rejection that has been maintained. I have an examiner relying on a case that was overturned on appeal and he won’t let the rejection go. On the other hand I recently had an examiner say include dependent claim X in claim Y and it will be allowable only for the next office action to issue reciting 5 new objections. Where is the consistency…
I completely agree with the point by Jerry that the bureaucratic incentives and disincentives should be balanced between allowance and rejection. While there should be oversight to prevent bad allowances, there also should be oversight to prevent bad rejections, of which there are so many. It is becoming very common in my practice to appeal, and to have the case reopened, with only marginally better art, in response to my appeal brief. I’m sure many meritorious cases are biting the dust under the present regime.
I had a recent sustained rejection based on a reference showing only one of eight claimed elements. Apparently everything else was obvious, according to the examiner. An appeal is as inevitable as night follows day. Seems like just the sort of thing that a quality review ought to pick up.
The PTO should incorporate that three-eyed toad into their official logo.
I’m glad to hear that not just allowed applications are now being quality reviewed. But, I believe that if such a program is going to be used, abandoned applications should also be in the mix. I have had several experiences with clients that I believe had patentable inventions, but were unwilling or unable to spend the money to appeal. How did the quality review process help them? – not at all.
I have been told point blank by examiners that before they can recommend allowance, the application has to be “really good” (Can’t find that in 35 USC or the case law). This has resulted in a culture of fear to allow, but there is no counterbalance producing a fear to reject. If we are going to do a quality review, let’s review both sides of quality, rejection and allowance.
At the AIPLA midwinter meetings, Mr. Doll assured all of the attendees of the relations with the PTO committee that all of the examiners in OPQA are “experts” in the arts they review. That doesn’t even pass the straight face test. But he did say it with a straight face. But he’s really good. He even denied knowledge of the mythical “pencil test” for allowability. Like I said, he’s good.
The problem with OPQA is the secrecy. There is no way of knowing if the examiners in OPQA have any technical and/or legal training beyond those of the examiners in the corps. If they don’t, then the whole QR process amounts to nothing more than second guessing. Second guessing is not quality review.
As for QR examiners finding art missed by the examiner, as the PTO no longer teaches examiners how to search, searching is nothing more than a crapshoot any way.
I remember traversing a restriction requirement on the tried and true “no burden” grounds. I told the examiner, “Group II as identified in the restriction requirement is classified in the mandatory search for Group I, so there’s no burden to search the entire application.” Examiner responds, “Mandatory search? What’s that?” Guess he’d never read the class definitions in his entire career. A friend of mine, who’s about to become the director of one of the TC’s tells me, “We don’t consider missing the mandatory search to be an error anymore on the program.” Great.
Agree with the post about primary examiners. If they don’t have the authority to allow an application, what’s the point? Why is the PTO bothering to “certify” and “re-certify” examiners who have no authority to allow anything?
Dennis,
Could you provide a concrete example of writing an initial claim
in short-abstract form?
You’re going to find such a wide range of doing business @ the PTO. Some Primary Examiners are always careful and some just don’t care. In the entire scheme of things, OPQA finding an error amounts to a slap on the wrist of a Primary Examiner.
Then, you have a boatload of Jr. Examiners that are each under a different Supervisory Patent Examiner. Realistically, a Jr. Examiner’s SPE makes or breaks the job for him. Some are reasonable and will permit unobvious patents to issue within reason. Others insist that Jr. Examiners persist in obvious type rejections “just to put it on the record”. These Examiners must make rejection after rejection basically “out of their own pocket” of time even when it is contrary to the legal requirements.
It’s no wonder that the halflife of a new PTO Examiner is about 1 year.
On the other hand, you’ve got SPEs that have Jr. Examiners telling them that they can’t find an everyday receiver in the prior art.
Gideon — well said x 2.
Apart from that hideous cloud of anonymity, and excluding the silly 101 rejections that pop up from time to time, QR is performing well if it uncovers art the examiner missed, and the art can be used reasonably to reject the claims. On the other hand, who is grading the performance of these nameless QR people?
I would like to see some QR applied to benefit the applicants, such as providing more comprehensive searches with a first action. This would reduce instances when an examiner applies “new” art in a second or later action, and the scope of the claims remain unchanged.
A minor correction, for a claim to be allowable, it must pass the 2 hand rule, not the 2 finger rule.
The union isn’t screaming because the USPTO decertified it a while back.
I too have had the experience of some examiner’s requiring “non-naturally occurring” and others demanding it be taken out. The key is to remember which examiner wants which language.
By the way, that mutant toad photo — while awesome –is photoshopped. I’ve been unable to locate a photo online but a few years ago a guy in the UK found a mutant toad in his garden. Apparently “doing well,” the creature could not see without parting its lips both of its eyes hung upside down from the roof of its mouth.
[EDITED] [Thank you Examiner], and say I agree with Gideon.
Which Examiner and how an Examiner’s day is going seems to make a big difference in the allowance of a claim. We’ve had some Examiners require the term “non-naturally occurring variant protein” as a claim limitation, while other Examiners require that we do not use “non-naturally occurring”….
“Best invention in 10 years at the company deemed obvious over unrelated art that fails to mention most of the claim limitations.”
Can we see the claims and the art?
Gideon — well said.
Applicant amends to a composition comprising NaCl and water. Examiner drops rejection b/c Sigma catalog sells dry NaCl, not aqueous solution. This is a very clear case of an exmr. failing to use his/her brain the least little bit.
IMPERMISSIBLE HINDSIGHT!!! IMPERMISSIBLE HINDSIGHT!!!
/snark off
A few comments:
When errors are called, examiners are made aware of them. Exmrs will get the specific case serial number and an identification of the error that was called (you missed a drop-dead 102, etc.). If a case is reviewed and no error is found, exmrs. are only made aware of this fact. No serial number is provided. We get what we call “atta boy” letters — which basically says that a case of yours was recently reviewed and found to meet OPQA standards. The stated purpose of this failure to identify cases which were found to be error-free is to avoid the appearance of some patents being ‘super-patents’ i.e. free of any errors after multiple reviews.
Cases, both allowances and in-process (which can be any sort of office action: first action, restriction, final rejection, second action-non-final) are reviewed on a RANDOM basis. There is some sort of computer algorithm as to which cases get pulled — X number of allowances and Y number of in-process per exmr. per year. I am not aware of the specific formula. But the point is that it’s not JUST allowances that get reviewed.
Contrary to some peoples’ assertions on this blog, OPQA does not just look for failure-to-reject errors. OPQA also looks for errors where rejections are maintained that should have been dropped. However, in both cases (failure to maintain or make rejection AND failure to drop rejection) they are looking for drop-dead errors. By this, I mean the following sort of things:
1) Claim is drawn to a composition comprising sodium chloride. Examiner makes rejection over Sigma catalog, which sells sodium chloride. Applicant amends to a composition comprising NaCl and water. Examiner drops rejection b/c Sigma catalog sells dry NaCl, not aqueous solution. This is a very clear case of an exmr. failing to use his/her brain the least little bit. A new search should have been made to find all limitations.
2) Examiner makes rejection of claim comprising elements A, B, and C. Applies prior art which has A, B and C. Applicant amends claim to further require inclusion of D (which is truly novel and non-obvious). Examiner maintains rejection. This is a clear case of maintaining a rejection improperly.
But if the case doesn’t get pulled (and whether it does or not is random and fairly infrequent, < 10 times per exmr. per year), OPQA wouldn't see the error. First action allowances are, i believe, always flagged for review by OPQA. We have been told to assume they will be reviewed closely and to write a strong reasons for allowance. If an exmr makes a lot of errors (which are caught by OPQA) he/she can be put on a list to have more actions and allowances pulled. The union is, i believe, not happy with some of the OPQA/2nd pair of eyes reviews. But I am not really in-the-loop with respect to the union stuff so I could be wrong. Hope you all find this helpful. Am posting anonymously for fairly obvious reasons -- don't know if this stuff should be going out or not. Don't shoot the messenger if you don't like the policies I've written about.
I think it’s incorrect to suggest that there is some overarching, detailed approach for Examiners.
To me, it’s all about who you get and the day they’re having.
It’s tough to explain that to clients, but that’s been my experience.
Borderline stuff deemed allowable in 1st oa.
Best invention in 10 years at the company deemed obvious over unrelated art that fails to mention most of the claim limitations.
It’s a crap shoot, and that’s never going to change.
What I have not figured out is why the union has not started screaming.
I understand the formal quality review process where every examiner, primary or assistant, gets some cases looked at (note – only allowances, never abandoned cases to see if the examiner should have allowed) and the results are used as part of the annual review.
But the “second pair of eyes” goes against everyting that “Primary Examiner” status means. The attorney is supposed to be able to negotiate with and get a commitment from the PTO through a primary. If a primary says s/he can’t get a case past the supervisor, I’m stunned that the union has not stepped in. What is a Primary Examiner if not the final examining corp word on patentability?
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