USPTO Continuation Practice Rules

The following synopsis comes from noted patent attorney Charles Van Horn:

USPTO Commissioner for Patents John Doll announced today at a DC Bar meeting that the final rules on continuation and designated claims practices are at OMB (Office of Management and Budget) for approval.  The final rules were logged in on April 10 and OMB is expected to complete its review in 90 days, but frequently grants itself an extension of time.  The final IDS rules were said to be on the desk of Director Dudas for approval, and will follow the other two packages to OMB in due course.  So at this point in time, July-August would be an approximation for publication of the final rules, with 30 days (based on previous PTO statements) to implementation.  No details of the final rules were disclosed.

Context: The PTO has proposed dramatically limiting the number of allowed continuation applications (including continuations, continuations-in-part, and requests for continued examination) and the number of claims pursued in each patent.  These proposals have drawn ire from the patent bar.

164 thoughts on “USPTO Continuation Practice Rules

  1. 164

    So, what can we do as practitioners? From the number and scope of the comments, it seems as if people are really concerned about the effect of these proposed rules on their practices, and they are willing to speak out about it. So, how about it Dennis? We are a captive audience. How can these voices get heard where it matters? What can we DO?

  2. 163

    Alun Palmer – to wander completely off topic, be careful, keep in mind that there are lots of things that are relevant to rebut obviousness but totally irrelevant to anticipation –

    “non analogous art” In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1432 (Fed. Cir. 1998) (“whether a reference is analogous art is irrelevant to whether that reference anticipates.”)

    “Teaching away” Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326, 75 USPQ2d 1297, 1302 (Fed. Cir. 2005) (“a reference is no less anticipatory if, after disclosing the invention, the reference then disparages it.”)

    “Motivation to combine” is irrelevant to 2-reference anticipation (where a second reference is used to explain a first) In re Donohue, 766 F.2d 531, 534, 226 USPQ 619, 621-22 (Fed. Cir. 1985)

    “Recognition” of the principle of the invention is often relevant to obviousness, but seldom to anticipation. In re Wynkoop, 390 F.2d 766, 769, 156 USPQ 458, 460 (CCPA 1968); Toro Co. v. Deere & Co., 355 F.3d 1313, 1320-21, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004)

    Inherency (if it can be shown) is always effective in an anticipation context. It is not always relevant in an obviousness context. In re Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966) (“The inherency of an advantage and its obviousness are entirely different questions. That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”)

  3. 162

    Hands down, keeping examiners on the job long term is the key to better examination. It will also reduce pendancy as well. Trust me, the production of primary examiners FAR exceeds what the newbies in the 8mo training are doing. It would not be a such a stretch to say that a primary may do more work in one month than one of those guys will do in their entire first year. (Especially with 8mo training in place)

    With respect to the exit interview.. I think that production may actually be a #2. Whether the examiners even realized it at the time or not, the actual issue is the relationship between the SPE and the examiner.

    There is such a thing as production with a “easy” SPE and there is production for a “hard” SPE. You may want to relate easy vs. hard to how good of a search/legal job the SPE is doing. But, the easy vs. hard I am talking about is the how the pair actually WORKS together – do they see eye to eye?? If they don’t; you can bet every penny that the examiner considers their production to be very, very high.

  4. 161

    My impression, based on the Actions I receive and simple Economics 101 reasoning, is that reducing production quotas by 15% is one of the best steps the Office could take to REDUCE the backlog. The current count/production system is the heart of the PTO’s problem, because it incentivizes waste and rework.

    Most of the Actions I received are “wine sold before its time.” If examiners had a little time to think first, search second, write thoroughly third –

    (a) for applications that should be rejected – the examiner would have time to find better art. That would save a lot of effort! It’s damn hard to write an invalidity opinion letter with lousy prior art, and easy with good prior art. I assume it’s the same at the PTO – a little more time to search would be good for everybody.

    (b) for applications that should be allowed – a little more time spent thinking would allow the examiner to see all the claim limitations, including those that distinguish the art (instead of ignoring them, as I see in over half of Actions today), to think about the lack of expectation of success, etc. The backlog would disappear because the bogus rejections would be out of the pipeline.

    The current production system is backwards. It motivates flail and thrash examination – get something in the out box, with no regard for quality (either of rejections or allowances). If the production system were retailored to give credit for quality dispositions instead of intermediate papers to which quality is irrelevant, the number of low-quality intermediate papers would dry up immediately.

    Anything the PTO can do to increase retention (of examiners who have opportunities outside the Office, instead of preferentially retaining those who don’t!) would also help a lot.

  5. 160

    I think one of the problems is that when we are drafting the broadest possible claims allowable over the art we know of, that art doesn’t include non-analogous art that the claims might read on. It wouldn’t be material under rule 56, so it isn’t likely to be in our possession. So then an examiner may type in a few keywords and cite some patents from an unrelated art (which before keyword searching he may never have seen), and if we have the temerity to point out that the refs meet the legal standard for being non-analogous, the rejection is sustained anyway. End of round one!

  6. 159


    I believe you wrong, and that most attorneys do not file or attempt to file claims they know to be anticipated by the prior art. In my limited experience, I have known none that have. For myself, I try to file at least some claims that are as broad as broad as possible that do not encompass the prior art.

    Have I ever reviewed an invention disclosure where I said to myself “That has to be known?” Yes. However, unless I have a 102 reference that actually discloses the invention, I proceed to file. That’s not to say I won’t spend a half-hour to an hour doing an online search before drafting the claims and description, but unless I find that 102 art, I will file the applications with broadest claims I believe might be allowable.

  7. 158

    Lazerus, I must respectfully disagree. The allegation that applicant’s would have to wait 15% longer if management were to lower production by 15% is completely false and is frankly the same tired excuse we have heard from management over the last 20 years. Sure in the short term, and I mean 1-2 years here, everyone will take a hit. However, over the long term, 3+ years, as more and more examiner’s come in with only 3-4% leaving, the backlog shrinks because many more examiner’s are turning in cases. You already stated that losing 2-3 examiners has a large impact on the backlog, if the office were able to retain those examiners the backlog would shrink.

    I believe that most lawyers would much rather lower production thus increasing retention and quality while lowering the backlog rather than have these new rules shoved down everyone’s throats thus dramatically increasing attrition and the backlog, not to mention the serious burdens on applicants mentioned above.

    Examiners who are leaving are not going to tell their direct supervisors “I’m leaving because production is too high” rather they are going to tell them “I’m leaving for other oppertunities” or “I’m leaving for personal or family reasons”. This is perfectly understandable and I would probably say the same thing. The evidence is in the exit interviews wherein 70% of the departing examiners cite production demands as the reason, or a reason, why they are leaving. Many have been asking management to release the exit interview data but management has consistantly refused – I wonder why.

    Most supervisors are for the new rules changes because they have taken the short term view that the new rules will force overly taxed examiners to work on new cases which in turn means that supervisors will make their date goals. Supervisors get bonuses for making said date goals. However, management has not calculated nor addressed the impact that the new rules changes will have on increasing attrition.

    Large attrition = Large backlog.

  8. 157

    anonymous – Thanks for the reply. 7 attrits for me is more like less than 1/3 of an art unit, but that’s just semantics. Every examiner I have has taken some cases from my attrits. My art is such that people don’t make their living on continuations. While our backlog is climbing, it is not so much because we are picking up new cases from attrits. It is because we have an enormous amount of filings. Sure, the attrits add to their workloads, but it has not been as bad as all that. Of course, this is again antecdotal evidence only, and not meant to show facts or trends on the whole. Again, I have only over the course of my career known a handful of examiners who left the PTO because of the workload, and most of them were “requested” to leave, if you catch my drift.

    I am not aware of the attrit stats from the PTA, but that sounds pretty high. All my guys and gals are still here, and I have heard of, again, only a few that have left because they felt it wasn’t for them. That could be productionbased, I don’t know. Perhaps the stats are tilted due to the early classes which were royally screwed up in the way they were administererd. I don’t know. I would hope they are trying to stay ahead of the curve and make things easier on the new hires. 50% sounds pretty bad and, if this is the case, some rethinking should be done by upper management in how we train new exmainers. I have heard stories of stupid trainers explaining that production doesn’t matter in the first year, only to have the exmainers find out from their real SPE that, well, yes it does. Seems a problem of communication and a divergence of goals.

    I have nothing against increased expectancies for the examiners. If it’ll help, let’s do it. But then, the argument becomes will it lead to more work being put out at the same level of quality, or will the quality improve while the produciton numbers remain the same? While they both may improve workflow and reduce backlog, I would venture that the former would work more towards that end than the latter.

    As to appeal conferences, there is no way the conferees, at least the “gatekeeper” ones, should be expected to know the state of the art and what is or is not allowable with respect to each individual application. That is the examiner’s job. The conferences are not about allowability. Again, much like the board, they check the merits of the rejection in light of the appellant’s arguments, taking into consideration the cited art and the legal doctrines. Using these tools, the decision is made. Allowability is left to the experts in the art. This is similar to how the board works. Are you confusing patentability conferences, which some TC’s have, with appeal conferences?

  9. 156

    I agree with most of what DS said (4/17 @ 2:38 am). HOwever, I do strongly disagree with his assertion that losing 7 examiners can be picked up “with barely a ripple”. Unless these are very junior (1st year) with few outstanding rejections, it will have an impact. In our AU we will be losing 3 very good mid-grade examiners over the next month or 2 (none for production reasons; leaving for other opertunities or family location reasons). Firsly, their amendments need to be absorbed by other examiners (probably a total of 120-150 outstanding rejections) which will impact how many new cases these examiners will be doing over teh next 6-12 months. Also, losing 3 examiners means that we will be losing maybe 150 counts over the next 6 months. THese 2 items will have a big, and compounded, impact on reducing the backlog. Losing even an average examiner who has been in the office any substantial length of time has a big imapct. Losing them in clumps has a VERY big impact.

    As to jphudy’s post (4/17 @ 1:23 pm) spending money to give examiners more time (and maybe help retain a few; probably wouldn’t have imapcted those I mentioned above) may well help some in retention and quality. However, it will, in all likelyhood, have a serious negative imapact on the backlog. I doubt any of our lawyer friends here would be willing to give up 15% more time/case at the expense of having to wait 15% (or more longer). I may be wrong about their feelings, but will assume I am not until I hear otherwise.

    If lawyers & applicants are willing to wait even longer to give more time to eaminers to help quality & retention PLEASE LET THE PEOPLE IN CHARGE AT THE PTO KNOW (sorry for the caps, but wanted to make sure this part was not missed). That is the only way things will change in regards to time/case.


  10. 155


    I was framing the virtues of an examiner’s search from a theoretical viewpoint. You are right, most examiners hired over the last ten years do not perform “manual-type” class/subclass searches. It can easily be done using the new East/West system by electronically requesting the “shoes” of each subclass being searched.

    Unfortunately, a deemphasis of classification has been going on for about a decade or more and has negatively impacted the effectiveness of these types of searches. Also, most newer guys believe text searching provides a shortcut to finding the art. Sometimes they are right, but many times the best art is not uncovered utilizing only text searching methods.

    There appears to be a fundamental disconnect in the PTO with how important specialization is to efficiency. Examiner expertise in a limited area and correct classification are the foundations of efficiency, but it appears the Office has the misguided belief that electronic searching tools make an even playing field for everyone.

  11. 154

    A few points about searches.

    Some of the examiners here have said that prosecution would flow more easily if the applicant had a search done. I agree with that 100%, but the problem is most of our client’s don’t see it that way and never have searches done even if we suggest it. The reasons vary between the false economy of saving the search fee to the pervavsive notion that they know all the art already. They don’t, they only know what their competitors are doing, but it’s hard to convince them, and most of us don’t even bother to try after a while.

    As for the idea that examiners do better searches than outside searchers, I think that’s generally not the case. In fact, IME, search firms generally find more relevant art than the examiner, when the applicant has the good sense to use them. One reason could be that they usually do their searches before the claims are written, usually based on the disclosure that the inventors gave to the law firm.

    OTOH, experienced examiners can often produce good art without doing a search, plucked from a desk drawer where they keep patents that they cite frequently and/or think they will need again, thus giving the impression that they did a better search than they did. They did do that more thorough search at least once of course, perhaps many years before. This is yet another reason why examiner attrition is such a problem.

    The examiner frequently tends to search the broadest possible interpretation of the claims, ignoring what the invention is really about, and then write an OA that results in narrowing the claims to avoid things that never entered the heads of the attorney or agent that wrote the claims, because they were so remote from the invention. We could argue that the art is wildly irrelevant, thus estopping our clients from suing anyone who makes such an item, but we know that such an argument will fall on deaf ears.

    This unfortunate approach is facilitated by the use of keyword searching, which makes it so easy to find art that uses the right words to mean the wrong thing. Of course, the ones most likely to rely entirely on this approach are new hires with no drawer of ‘useful’ patents to fall back on, and production killed off most manual searching in the PTO some time ago, so that new hires balk even at the idea of a manual search, whereas it’s still common outside of the PTO, even though the patents have to be ‘flipped’ on a computer instead of in a ‘shoe’. Of course, that’s my view from outside the PTO, but can anyone really say I’m wrong?

    At this point some of the examiners here will likely repeat the mantra that we write our claims too broadly, and that we should submit narrower initial claims. If it hasn’t happened between 1956 and now, don’t hold your breath, because it ain’t likely. We have a duty to claim as broadly as possible to protect our clients’ interests. Others, who strangely enough also turn out to be examiners, have pointed out that a search focussed more on the invention than on the claims is more likely to advance prosecution, and they are right. The chance of the eventual patent being asserted against non-analogous art (much less succeeding) are slim to none, and yet the first round of prosecution is often wasted avoiding unrelated art.

  12. 153

    Being an examiner, I agree as well. Things here are totally out of control. Now, they have instituted an 8 month training program that does nothing but put a wedge between a new examiner and their future workgroup and SPE.

    They offer a $10k bonus to new hires over what is already a $65k starting salary & a promotion in 6 mos!! FOR WHAT?? They hire them and then have them sit in 8 mos of training while they produce nearly 0 product!! Some new hires come out of 8 months of training having only opened (in many instances) 4 cases or less!! Then, they spend a few months with their actual art group – only to quit. Result; $75k down the drain for about 6-10 first actions and 0 disposals!! It’s unreal!

    FWIW, they should spend that $$ on giving seasoned examiners more time, or .. well, I could think of a million better ways to spend a buck.

  13. 152

    I’ve worked in other industries with high attrition and a high backlog (deferred maintenance on heavy equipment), and I can tell you that if you have high attrition, you will not work off a backlog of work, I don’t care what industry it is. I can also tell you that in my art area the backlog is only getting worse, no matter how many we hire. At the patent office, it feels like deja vu. Anonymous is right. I don’t agree with DS’ position at all.

  14. 151

    DS while I respect your oppinion I must disagree. The main reason people leave office wide is because of high production demands which is evidenced in the exit interviews wherein 70% leave due to production, don’t believe it, than have the office release all exit interview data (good luck with that one). You admit to having 7 attrits in 2 years that is almost half an art unit. There is simply no way to redistribute 350 cases (assuming an average of 50 cases per examiner) to the remaining examiners without a ripple. While they may not drop everything to work on the 350 cases, they will not be doing new cases for a long time which is why the backlog is what it is. No organization can sustain a 15% attrition rate over 30 years and expect to make a dent in a huge backlog. When the new rules go in to effect attrition will rise as working on new cases takes many more hours to complete than continuations and of course the office will not supply even one second more time to do the new cases. Part of the calculation of the production quota, which was done in the 70’s when office actions were 1 page max, took into account abandonments and continuations. Now examiners will be expected do many more hours of work when they already work voluntary overtime to make production under the current system. Has management calculated what a 35% attrition rate will do to the backlog? – I doubt it. Until management seriously addresses attrition the backlog will increase and quality will decline.

    As for appeal conferences, of course it is the job of the conferees along with the examiner to determine whether the case should be allowed if the rejections are to be withdrawn. The conferees should know what is allowable in the art as well as the examiner. If the conferees don’t know what is allowable, they shouldn’t be conferees.

    We have had hiring surges off and on for the last 20 years. None have worked because the attrition rate is as high or higher than the hiring rate. The current surge will fail for the same reasons as past hiring surges. In fact, the current attrition rate for new examiners coming out of the accademy is 50%, that’s right 50%.

  15. 150

    Well, it seems inevitably, this thread has taken a turn down antecdotal evidence alley. That’s ok, I guess, as long as we understand that our small piece of the world, no matter how bug we think it is, does not encompass the whole view.

    Take, for instance, anonymous from a few comments above. He works at the PTO, and is an expeirenced examiner, by his own admission. I take him at his word. I also take him at his word when he explains why attrition occurs, what happens when there is an atttrit, how people get counts, where SPE’s come from and what happens at appeal conferences. I do this because I believe that, in his experience (limited not by time but by scope and PTO-world view), this is probably true. However, this is not a universal phenomenon.

    In my world view, attritions happen for a variety of reasons. I have had 7 attrits (6, plus one more coming this summer) in the last 2 years. Seems like alot, yes? Of them, 4 are for reasons of relocation caused by family priorities, not PTO workloads. 1 was a good old fashioned retirement, 1 was a non-retention due to inability to learn the job and 1 was because a guy was given the old bait and switch and put in a unit doing art he didn’t want to do and wasn’t told he was doing until he got here. So, out of the 7, only 1 could really be considered a consequence of PTO work loads, but only peripherally in that he was moved to accomodate a work load priority.

    People leave for a world of reasons, but I’m not sure work load is up near the top. At least not from my experience.

    Also in my world view, these attrits do cause me to allocate cases to other examiners. However, they do not drop everything and only work on these “new” cases. They get spread out and integrated with their own work. Done properly, barely a ripple is created and the only detriment to outflow of work is the loss of production from the gone examiner.

    Moving on, counts are counts. No one is telling someone not to allow an otherwise allowable claim, at least not in my little corner of heaven. If art is not to be found, and formal matters are not an issue, we slap on the “blue slip” and pass the case to issue. Again, your experience is not mine, not as an examiner and not as an SPE.

    Speaking of being a SPE, I kinda half agree with anonymous about who becomes a SPE. Money and finding something different to do are certainly considerations, although I know alot of SPE’s who took a pay cut to “move up”. Some do it to be in a position to help make things better. Personally, I think my decision was part of all of the above, plus a little bit of that part from the movie Serpico when Pacino talks about why he wanted to be a cop, and says that because they were the ones that knew what was going on when the crowds gathered. A SPE, at least at some base level, knows what’s going on a little more than an examiner does.

    To stay with this point a further moment, the best examiners may or may not become SPE’s. But, for the most part, they do come from the top echelon of the corps. They are not getting by the vetting process, much less passing an interview, if their record isn’t up to snuff. I know there are exceptions, but I believe it is a general truth. Still, a good examiner doesn’t always make a good SPE, so it is no guarantee. But it helps.

    A moment on appeal conferences. The conferees’ job is not to tell you to allow it or not. What is done is a decision is made as to whether it is felt the rejection will be upheld by the board. It doesn’t have to be perfect, it just, in our judgment (a term I love from my umpiring hobby), based on our knowledge of the law, the explanation of the facts, and our understanding of how the board decides things, has to have a better than average shot to win. If I tell someone no, I emphasize that I am not telling them it is allowable. In fact, they generally say that to me after I say no. They ask “So, I should allow it?”. My response is always “I didn’t say that. I said your rejection will not be affirmed so we aren’t taking it to the board.” The allowance decision still rests with the examiner.

    I generally do not agree with abdicating examiner responsibility to the board, but when the outcome is ambiguous, and the argument is persuasive, I don’t mind letting it go. It gives us a good idea where their mindset is for future cases of a similar nature. Not quite the same criteria as my old PEIT instructor, who used to take the 50-50 cases and decide them on whether or not they would kill any babies if he issued them :).

    Finally, I think hiring is an important fundamental in overcoming the backlog problems. It may not seem to be working now, but it is only a couple of years in to it. The earliest newbies are just starting to eat through cases, and it will take time before we see results.

    I know this is a long post, and it deals solely with the issues raised by an examiner who, quite rightly, has a view of things based on his point of reference in the corps. However, I think it shows that our outlook on things at the PTO and the patent world in general is shaped by what we see. I see problems in my area of control and I work to fix them. I can understand the problems others are seeing, but many of them I do not come across. For attorneys, keep calling and petitioning (oh, dirty little secret: directors don’t resolve 181 petitions, SPE’s and SPRE’s do. Directors sign them ;)). We want to know if something is wrong, or at least we may be able to explain things to you a little clearer, not being stuck in the forest behind all those trees. For examiners, keep plugging away, and never be afraid to explain yourselves in your actions. It’s the best way to get your point across. With everyone’s cards on the table, it’s easier to get to the finish line (jeez, that was a horribly mixed metaphor).

  16. 149

    I mentioned in an earlier post that the way the system works now really hasn’t changed in decades. Basically the applicant (lawyer) claims the world & the examiner tries to get them to narrow it down to something then can accept & allow. A while back I found the folowing passage. It makes interesting reading even today, and maybe a sad commentary as to how little things really have changed in the patent business over the years (on both sides).

    “I turned to the drawings, ignoring for the moment both descriptions and claims. Claims aren’t important anyway except in court; the basic notion in writing up claims on an application for patent is to claim the whole wide world in the broadest possible terms, then let the patent examiners chew you down – this is why patent attorneys are born. The descriptions, on the other hand, have to be factual”

    This quotation is from the book “The Door into Summer” written by Robert Heinlein with a copyright date of 1956! (page 183 of my old copy) It still applies today as to how the system works. While some technicalities may have changed and there may be some differences in quality (on both sides), we all are still doing what our predecessors were doing 50 years ago. Maybe we need to take this into account when we start talking about changes in the system. Are we really changing anything or just making (relatively) cosmetic changes to try to “shake things up a bit”? If nothing else, I think the quote gives us a little to think about 🙂


  17. 148

    Reviewing the earlier posts, I did miss one that mentioned a response to my question about recieving a “bad” allowance, but saw the other. GUess we are not all perfect, afterall 🙂

    However, probably since we are (in general) dealing with the better examiners and lawyers, the situation I was referenceing may not have come up with any of you. I was not thinking of situations where it was an honest mistake (e.g., late found reference, misidentification of claims, etc.). I was more thinking of filing and recieving allowance for claims that you “know” are not allowable. For example, the infamous “stick patent” kinds of claims. Things that hit the papers for bad allowances. My point was if these claims were felt to be so bad why would any ethical lawyer even file them in the 1st place? I honestly do not understand the obscenely broad claims we often recieve. Anyone reading them should know that there is no chance there is not prior art for them. Why file them in the 1st place. Those types are often the types that get examiners frustrated and start to not care as it seems thatthe applicants don’t care by filing such trash. Go thru some PG pubs, for example, and see really bad claim, and applications as a whole, filed by lawyers. Again, it is the extreme situations that wind up coloring everyones opinions on things.

    Bottom-line, I think that most (not all) examiners really do try to do a good job in the time alloted. And, if the lawyers & examiners work a bit together everyone benefits. For example, I know that whenever one of my examiners has an interview I always tell them that our goal is to try to make the other side understand our position, to better understand the applicant’s position and, last but not least, try to come up with something to move the prosecution forward and at least get around the art in front of us &, hopefully, closer to allowance. I think most (again, not all) examiners try to do this. Otehrwise it is a waste of time. But, to do this, we need the cooperation of the applicant/lawyer.


  18. 147

    This is a great thread!

    I just received a request from the PTO to take their Customer Panel Quality Survey. The survey is short, only ten questions (two of which are multipart). But, they did allow me to write in the qualities that distinguished the good examiners from the rest. The posts above helped me to zero in and hopefully provide some good feedback.

  19. 146

    Fascinating thread. I would like to add that best mode really only is a US requirement. The UK, for example and AFAIK, only requires ‘sufficiency’ as per Rex v Arkwright (c1769), i.e. the spec must be sufficient to practice the invention. (As noted in another thread, I am a Brit but only registered in the US.)

  20. 145

    The PTO should build a brig for these offending managers because firing is not enough punishment. They have ruined the PTO!

    I’ll bring a goat and some chickens to trade during my next interview. Maybe that will work.

  21. 143

    pds wrote: “You are dead on. Although this is anecdotal, I have an application with 5 office actions. In each office action, the examiner cited 5 different sets of rejections for the main claim. The main claim has only been amended once (after the 2nd OA and interview) to add two words to the claim. I am on my second appeal brief (after prosecution was reopened with another set of lousy rejections). I have lots more examples, but that example is fresh in my mind.”

    For what it’s worth, pds, I got a total capitulation once in this situation by writing a 1.181 petition asking for a “competent examination”. (In my case, I had had three interviews, each supervised by a different primary. Not one examiner of the four involved in these four interviews spoke English as a native language, and two of them were so unintelligible that the telephone interview was almost impossible to conduct. One of the supervisors wrote an interview summary that flat-out lied – he said that we had agreed to narrow the claims, when in fact, we had agreed that the claims as written were allowable over the art of record but the junior examiner was going to do a new search.)

    After petitioning, I got back a notice of allowance, written by a different examiner, which included a statement that all previous rejections had been thoroughly reviewed and were now withdrawn, and that the claimed invention was patentable over all the cited art.

  22. 142

    I have read through all of these posts and the one thing that people are missing is ATTRITION. It is the reason why the backlog is long and why quality is bad. The office has been opperating at a suicidal 15% attrition rate for 30 years. How in the world does any large organization expect to clear a backlog and pump out quality work when you lose 15% of your workforce every year? The dirty little secret that no one in management will tell you is that everytime an examiner leaves the office the cases they worked on don’t just disappear. The cases, usually between 50-100 cases, are dispersed to the other exmainer’s in the art unit which means those examiner’s wont be working on new cases for a long time, it also means that quality goes down because your losing experienced examiners. The reason almost all examiner’s leave is because the production system is insanely high.

    These rules changes will create a flood of examiner’s leaving the office (say hello to 35% attrition rates). Ever since quality out of control, examiner’s can allow very little. Therefore, the only way to get counts is via first action, abandonments (RCE’s included and examiner’s answer. The rules changes will eliminate RCE’s and thus the only way examiner’s will get counts is via first actions, abandonments (a very long process) and examiner’s answers. An average primary examiner has to do 10 counts per biweek and there is no way to do 8-9 first actions (assuming 1 or 2 abandonments) in 100 hours per bi-week (assuming 20 hours voluntary overtime). Therefore people will get fed up or get fired. The people that are survivors will pump out first actions of very low quality.

    SPE’s are not selected from the best examiner’s. The best examiner’s either leave or stick it out to retirement. SPE’s are selected from the best applicant’s of examiner’s who no longer want to examine or simply want a pay raise.

    Appeal conferences are a joke. No SPE is ever going to tell you to allow a case. I have worked at the office for 10+ years and I have heard the phrase “you should allow this case” exactly 3 times. What generally happens is the SPE will let you send it up to the board if the case is perfect if not the SPE will tell you to re-open usually with no reference or no reason given and it is up to you to find a reference etc. Your chances for allowance at an appeal conference are low.

    One solution to this is to lower production across the board by 15%. This will allow attrition rates to fall from a suicidal 15% to a more reasonable 3-4%. Quality is also improved since there is more time per case to search. The office takes a short term hit but gains in the long run because you have more examiner’s turning in cases. The reason hiring surges haven’t worked in the past is because attrition is equal to or higher than hiring rates. There is no point to hiring all of these examiner’s when the office is a revolving door. Management will never do this however because they would have to admit that examiner’s need more time per case something they are loath to do. Sorry for the long rant but just some thoughts from an experienced examiner.

  23. 141

    Lazarus L wrote “A quick question for all of you lawyers:

    If you get an allowance where you “know” the claims claims are not allowable do you ever complain to the office or file a response saying that the claims are too broad and should not have been allowed? (I know that you only recieve bad rejections and not bad allowances, 🙂 but just suppose). I would like serious responses as this is not a rhetorical question.”

    Actually, I had a case where some canceled claims were part of the allowance. I did inform the office about it and asked for the correct claims to be allowed and that delayed issuance for a number of months.

  24. 140

    Reply to AnonExaminer | Apr 16, 2007 at 12:22 AM

    First, it’s really important to focus exactly on the one issue before us, and not go off on tangents. Let’s not be like bad attorneys’ scatter-shot discussion about “the invention” that fails to address particular claim language.

    The issue we’re discussing is examination phase under 35 USC §§ 131 and 132, the effect of the proposed rules on the PTO’s efficiency on that task, and the PTO’s due process obligations during §§ 131/132 phase.

    Let’s not mix up examination and appeal. “Due process” obligations of regularity of proceedings extends throughout agency proceedings, not just to the last phase. “Our system is premised on the procedural fairness at each stage of [agency] proceedings. [A party before an agency] is entitled to a certain amount of due process rights at each stage and, when these rights are undermined, the [party] is entitled to relief regardless of the stage of the proceedings.” Stone v FDIC, 179 F.3d 1368 (Fed. Cir. 1999).

    The relevant issues to due process are “property” and “due process of law” –

    Slipshod examination that results in loss of patent term (e.g. a failure to fully and precisely examine that forces an application into RCE), is a deprivation of “property.” That loss of property has no remedy – the only way to keep it from arising is full examination during examination phase. The Board can’t remedy it.

    An agency failure to comply with its own written rules, at least those that are written with precise-enough wording to actually define a right, is a failure of “due process.” The examiner duties that are devoid of discretion are the ones stated in mandatory language in 37 CFR § 1.104 and MPEP Chapters 700 and 2100 –

    – Office Actions must be “complete”

    – Anticipation rejections must show every element in the reference, arranged as claimed

    – Assertions of inherency must be accomapnied by showings that the matter is “necessarily” in the reference

    – Obviousness rejections must make prima facie showings of motivation to modify/combine, reasonable expectation of success, and every element taught or suggested in the art

    – Etc.

    Under the *procedural* law, examiners have discretion to make showings that are wrong – “prima facie” doesn’t mean “right,” it just means “facially stated,” as opposed to silent. There’s no procedural guard against silly, just silent (and against breach of the the occasional “Thou shalt not” stated in the MPEP). Erroneous judgments, once set out on paper, are proper subject matter for appeal to the Board. But that’s not what we’re talking about here.

    Your discussion of appeals is relevant only to show its own flaws. First, the only issue we’re discussing here is examiner silence on essential prima facie legal elements or on claim limiations during §§ 131/132 phase, not the adequacy of a different phase of proceedings. Further, and more importantly, the kind of failure we *are* discussing is a failure that blocks access to the Board! The Board has held, time after time, that such rejections are not appealable, because the appeal is not “ripe” and impossible to adjudicate. Ex parte Daleiden, link to; Ex parte Rozzi, 63 USPQ2d 1196 (BPAI 2002) (Board will not act as tribunal of first instance); Ex parte Schricker, 56 USPQ2d 1723 (BPAI 2000) (when examiner leaves Board to “guess” at examiner’s position, Board will not decide the appeal); Ex parte Braeken, 54 USPQ2d 1110 (BPAI 1999) (appeal is not “ripe,” and Board declines to do examiner’s job). An examiner’s failure to set forth the required findings results in a *further* deprivation of due process because it denies access to the *very procedural protection* on which your argument rests, and results in further loss of patent term.

    Your argument seems to be that examiners can run absolutely roughshod, as long as the Board is there to clean up the mess? Is that an overstatement of your view? If not, what ARE the PTO’s duties during examination? What does the MPEP mean when it says an examiner “must” put such and such on paper in order to raise a rejection? What is the procedural consequence when an examiner does not put the required discussion on paper? (I’m not asking about “wrong,” I’m asking about “dead silent.”) And what is the PTO doing to stop the waste that occurs when examiners (esp. 3600) send out Action after Action that is dead silent on claim limitations and prima facie elements?

    Your point on “the PTO’s search on patentability” – can you clarify? Let me take a stab at it – I don’t think there’s likely to be a issue here relevant to what we’re discussing, because I can’t think of any requirement stated in mandatory-enough language to set an enforceable standard. Re-searches are an essential agency function, and I can’t think of procedural redress an applicant could seek, so long as any rejection based on the re-search makes a full prima facie showing of unpatentability. There’s a practical management question – if an examiner has to keep jumping around and has to do 3 or more searches (assuming an applicant isn’t amending the claims significantly) then we might ask whether this is the right examiner for this application. But that’s not a legal question.

    The 1/3 reversal rate is hardly dicta, it’s one of the factors in a multi-factor analysis in the court’s final decision. (Because patent law has so many bright line tests, patent folks generally aren’t comfortable with multi-factor tests – do you understand how they work? I can see why you’d confuse a “factor” with dicta if you don’t.) The same reasoning gets picked up by later Supreme Court cases, under the heading of “risk of erroneous determination.” I tried to be careful to make clear that 1/3 isn’t a per se test, it’s a component of the overall test, and I see I overstated on one occasion. So please reset that.

    The difference between “reversed” and “reopened” is crucial to the patent term protections of § 154(b).

  25. 139

    I should add that it is logical that examiners should be given more time for their searches. The modern search tools only go so far in increasing efficiency in some respects, and they inevitably produce a larger pool of candidates for review.

    However, try pleading that case to the people freaking out about the backlog. The response is deaf ears and official doublespeak.

  26. 138

    jp, an examiner is unique because no one else has that kind of expertise in a narrow field of prior art. The value in such a search is high. I believe this specialty could only exist within a government agency like the Patent Office. Public searchers cover a wider area and, understandably, cannot be as efficient as an examiner having years and years of experience in a narrowly defined class with a large collection of art.

  27. 137

    It’s interesting that an attny. can assert with a straight face that the type of search required for litigation of a patent goes far beyond what is performed during prosecution; but then complain when an examiner issues an additional action with new art.

    Tell me again, sir, how you figure that an allowance should occur within 2-3 office actions having considered all of the pertinent prior art?

    Why don’t you try this – next time your client gets sued and you want to invalidate a patent, spend 8-10 hours searching against it. Feel comfortable with that!!??

    Seriously, I just don’t feel bad applying a new primary reference in my second action if I happened to come across it in an updated search. It’s not like I had time to look at every one of the 7,000,000+++ references during the first 8 hours, anyway. Get real and don’t act so shocked.

  28. 136

    You also wrote “Now that it’s explained, I see Anon’s point. Like so many other legal terms of art, the terms “reversed” and “reopened” mean something different at the PTO than they mean anywhere else – “reversed” doesn’t mean “reversed,” and “reopened” doesn’t mean “reopened.” (That’s part of the reason we have trouble talking to each other – the PTO has its own idiosyncratic vocabulary, much like George Orwell’s “doublespeak,” with all the same motivations and consequences.)”

    I also wonder if those terms have any real meaning to the office at that point in prosecution? Do they impart any fees or legal requirements at that time? Is the term even reported on the record? While it might have some legal consequences to an applicant to have the point ‘reversed’ it appears to have no such consequence to the office. Perhaps the real reason that the term is preferred is to avoid a battle with the applicant on an issue that the office uniquely has no interest in? Certainly that is not of a huge help to the calculating of errors rates, but it certainly should be a consideration before publishing those calculations as authoritative.

  29. 135

    You wrote:
    “A 31% affirmance rate. Wow. Since the threshold for Constitutional due process is a reversal rate of 1/3, Mattern v Weinberger, 519 F.2d 150, 161 (3rd Cir 1970), you would justify a net reversal rate of 69% – how? Even on your cherry-pick-half-the-data proposal, you still have to concede a reversal rate of OVER 50% – which you would justify how?”

    Without continuing the debate on the figures, I am curious how you feel Mattern applies?

    As I understand the process, the concern is that “a hearing must be had before one is finally deprived of his property.” In the case at hand Social Security benefits were improperly given out and the recoupment procedure was found in error for not allowing for an oral hearing and having a high percentage of errors (among other things).

    But I fail to see the corollaries here. Applicants are allowed an oral hearing at the BPAI. All the steps mentioned in Mattern are available to applicants. Further, perhaps the better issue of error rate for the PTO would be the affirmance rate of the BPAI at the CAFC or SCOTUS, that being the first time the issue is outside of the hands of the PTO.

    Further “In order for mandamus to issue, a plaintiff must allege that an officer of the Government owes him a legal duty which is a specific, plain ministerial act “devoid of the exercise of judgment or discretion”.”

    I would be hard pressed to believe that the PTO’s search on patentability falls under that qualification? Even considering that it is a constitutional right and thus given greater latitude, I don’t see the PTO’s figures (especially those after BPAI review) being sufficiently out of line with other judicial agencies review of similar matter (district courts for instance).

    Finally, and most importantly, the 1/3rd rate you find in Mattern appears to be just dicta to the actual decision. It’s not at all clear if such a rate is required for the ruling and in fact the actual decision seems to ignore addressing the position of adequacy versus error rates. The final required procedures state nothing about error rates.

    I’m certainly open to correction if I’ve made an error in my analysis above, but if I am correct I hope you’ll stop quoting that case law as any kind of authority.

    I think what Mattern really suggest is that sufficient procedure must exist to give applicants a change to correct any problems involved in the taking of property. I certainly believe that PTO procedures provide that legal opportunity.

  30. 134

    Lazerus L –

    > 1) P2P, you seem to not remember (or not know) what the
    > examiner has to do to examine a case. Your suggestions
    > may work in an ideal world in some ivory tower, but not
    > in the real world.

    You missed the point. My proposal is direted to making examiners MORE efficient, so that they take LESS time per case. My proposal mirrors the lessons learned by Ford, GM, and Chrysler when they discovered that it took less time per car if they did the work carefully and right the first time, and allowed the intiial production workers to slow the line down to build in quality, instead of oushing all the rework to the “quality control” shop at the end of the production line. Slower is more efficient.

    At least in 2100 and 3600, the MAJORITY of Actions (at least the ones we get at my company – computer processor architecture, compilers, and business methods) should not have been written, and it’s a complete waste that they were. The only reason that the examiner spent 4-8 hours writing up an Action, instead of 15 minutes checking off a Notice of Allowance, is because the examiner was sloppy on the independent claims. If the examiner had given thought to every word of the independent claims, and had given thought to every prima facie element of whatever grounds of rejection were thought to apply, he/she would have realized that at least one limitation/element didn’t exist, and no rejection needs to be written.

    One oversight turns a quick allowance into a slow Office Action discussing irrelevancies. Instead, in the MAJORITY of Actions (at least the ones we get at my company), the examiner skips the one important thing and spends hours and hours writing up all the things that simply don’t matter.

    That’s a waste for everyone, especially for the examiner that did sloppy work the first time.

    The only way I know of to force anyone (student, practicing engineer, attorney, or examiner) to carefully go through every step of an analysis it to make them write it down, in step-by-step fashion. Do you know of any other way to ensure careful step-by-step thought, in a way that gets communicated to someone who needs to either respond to it or show the basis for disagreement?

    > 2) Like Anoneaminer says about the provided statistics
    > regarding appeals, the 20% is very misleading. …

    Now that it’s explained, I see Anon’s point. Like so many other legal terms of art, the terms “reversed” and “reopened” mean something different at the PTO than they mean anywhere else – “reversed” doesn’t mean “reversed,” and “reopened” doesn’t mean “reopened.” (That’s part of the reason we have trouble talking to each other – the PTO has its own idiosyncratic vocabulary, much like George Orwell’s “doublespeak,” with all the same motivations and consequences.)

    Leaving vocabulary aside, it’s indisputable that a large percentage of examiner positions do not survive Pre-Appeal and Appeal Conference (to give one data point, the examiner has caved on every single appeal or pre-appeal I’ve filed in the last 2 years – maybe 8 cases). My attempt to combine the multiple levels of reversal isn’t quite right, because ethe PTO misreported the underlying data. Fair enough. On the other hand, ignoring the other levels of reversal, and counting ONLY final decisons at the Board is, if anything, even more misleading, because that’s pure selective cherry-picking, introducing a one-sided bias, selectively disregarding a large chunk of examiner positions that are reversed.

    Whatever analysis you use, I don’t think there’s any way you can get below 60% of issues reversed. When a 1/3 reversal rate is the Consitutional threshold for adequate agency procedures, your attempt to argue about whether the reversal rate is “only” 50% instead of 80% is just moving deck chairs around on a sinking ship.

    The PTO’s problem is procedural. If the PTO enforced its procedures, always, no excuses, there wouldn’t be a backlog, and we wouldn’t be discussing an illegal rule proposal.

    > 3) Back to a P2P post, am I misttaken or do you feel that
    > all lawyers are great and all examiners do awful work and
    > should be gotten rid of?

    Nope, I said just the opposite, Apr 14, 2007 at 02:57 PM. My point is that the AGGREGATE problem is a percentage of examiners who do sloppy work and impose rework costs that bog the whole system down. My impression is that the “rework” problem is concentrated in a few examiners – maybe 10% across the Office, higher in a few T.C.’s. Fire them, and reinforce to the 90% that procedure and careful work matters, and I think the whole backlog issue goes away.

    The mechanical and electrical art units are generally not too bad. In 2100 there is a mix of good and bad. 3600 is another world: the percentage of examiners with even minimal respect for written PTO procedures or knowledge of business method subject matter is very very very small (Sample size is still too small for me to give a significant estimate).

    My experience parallel’s pds’ (immedaitely above) – the MPEP gives a lot of great advice. Most examiners in 3600 never read it, and when they do, they don’t believe it applies to them. When I block quote the relevant MPEP instruction, I often get back some excuse, made up on the spot, for why THIS EXAMINER is ABOVE all that MPEP stuff. Outright mutiny. THAT’s the issue that wastes so much of the PTO’s resources. I can read what an examiner is required to do, and I’m not going to allow an examiner to steal from my client when the MPEP tells him he’s not allowed to do what he’s doing.

    I think attorney recertification could be a good thing, but I question the PTO’s ability to design a test that tests the things that matter. You’d need an essay exam, which the PTO wouldn’t be willing to grade.

  31. 133


    Speaking of Nonstatutory Double Patenting obviousness-type rejections, I don’t think I have seen one proper NDPOT rejection in all my years of practicing. If you look at MPEP 804(II)(B)(1), it states that the factual inquiries for this type of rejection parallels the guidelines for a 35 USC 103 rejection, as set forth in Graham. I’ve never gotten anything even close to that in a NDPOT rejection.

    Typically, all I get is something like this, “claims 1-4 are rejected under claim 1 of U.S. Patent No. x,xxx,xxx, because claims 1-4 are obvious variants of claim 1 of U.S. Patent No. x,xxx,xxx.”

    Of course, I doubt many attorneys have actually looked at the MPEP sections regarding these requirements. Personally, every 6-12 months, I got back and read the MPEP (not the entire thing, but just certain sections at random). The wonderful thing about the MPEP is that if you look at it closely enough, it is easy to find an untold number of things that an examiner should do but didn’t do in making a rejection.

    For example, one of my favorites is rejections based upon the doctrine of inherency. I have yet to see a proper rejection based upon this doctrine because the requirements to establish inherency are very stiff, and I have not seen even one examiner come close to making the factual findings necessary to establish inherency.

    BTW: As noted by JDMJ, I did respond to your inquiry. As accurately summarized by JDMJ, allowing an invalid application to issue is wrong on several levels.

    As I noted before to anonexaminer, when an attorney screws up, and as a result of the screw up, the client either loses all patent rights or has patent rights narrower than what the client could have received, then BAD things can happen to the attorney. Facing a 1M+ malpractice suit (that is being very conservative, a clever malpractice lawyer will make the client’s invention out to be equivalent to the best thing since sliced bread during litigation with tens if not hundreds of millions of dollars in potential lost revenue) and the prospect of losing one’s license to practice law (for really egregious actions) is a very strong motivator.

  32. 132

    “5) Still waiting for ANY response to my request posted on 4/13 @ 9:42 pm.”

    I hope your reading skills are better when you examine than when you read this blog. P2P answered your question at Apr 14, 2007 at 12:32 AM. PDS also answered at Apr 14, 2007 at 10:26 PM.

    pds summed it up. Any lawyer that accepts invalid claims for his client knowing those claims to be invalid would be foolish.

  33. 131

    A few comments on the recent posts.

    1) P2P, you seem to not remember (or not know) what the examiner has to do to examine a case. Your suggestions may work in an ideal world in some ivory tower, but not in the real world. The hours/case were created back when we did short forms (i.e., the rejections were literlally just “A in view of B” with NO explanations or limitaiton matching). Examiners still need to produce under this standard when there are much higher expectations as to what an action needs to say and there are well over twice as many patents (plus the whole internet) to review. The idealized “solution” youpropose will not work under teh current time constrtaints. Are you willing to wait twice as long to get that perfect office action? That is what you would need to be doing to implement your suggestions.

    2) Like Anoneaminer says about the provided statistics regarding appeals, the 20% is very misleading. In addition to what he said, for pre-appeal requests, many TCs (mine included, unfortunately) are applying the rule way too much in favor of the applicant. We are being made to repoen if all of the rejections are not perfect for appeal. The rules state that an indication of going forward to appeal should be given if “at least one” grounds would be maintained on appeal. This is a big differeence and creates an artificial view of the pre-appeal decisions. Still, I think my TC had around 50% “procede to appeal” rate last FY. When you remember that these cases that get pre-appeals are often the ones with the shakiest rejections, that is not too bad (most applicants don’t appeal when they know they are clearly wrong).

    2a) Another thing to keep in mind, an affirmance rate of +/- 50% from the Board is probbaly a good thing for both sides. Too low & it indicates that the office is sending up a lot of junk to the Board. Too high & it indicates that we are only sending up the slam dunk affirmances. A +/- 50% affirmance rate means he cases sent to the board are those with a legitimate difference of opinion.

    3) Back to a P2P post, am I misttaken or do you feel that all lawyers are great and all examiners do awful work and should be gotten rid of? (very slight exageration on my part) Not trying to put words in your mouth, but that is the way it comes across. If it is true, I have to inform you that there are many incompetent and lazy lawyers just like there are some examiners. There are problems on BOTH sides & both sides need improvemnts to make the system better.

    4) A quick suggestion: how about having to make the lawyers be recertified/retested just like the examienrs need to do every few years? I still get a lot of meaningless or out-of-date arguments & responses. Like saying that there is no need to file a terminal disclaimer after a obv. DP rejection because they will expire at the same time. Clearly “forgetting” that the other part of a TD is that they have to be commonly owned for the term. Or, I recently had a lawyer argue that the obv DP was wrong since you can not rely upon a secondary reference to show obviousness. Things like this get real frustrating.

    5) Still waiting for ANY response to my request posted on 4/13 @ 9:42 pm. Didn’t expect any of the lawyers would have the courage to do so, but thought I would try. Says a lot about the system by the lack of responses.

    6) For those of you that think the way the system now operates is something that recently started in the last 5-10-15 years, you are wrong. Tomorrow, I will post a great quotation to show that the system hasn’t really changed in over 50 years. ’till then.


  34. 130

    Points to Ponder wrote, “You have to train your clients that enforceable patent rights cost money[.]”

    Amen. If a firm is charging $4K for a patent application, you have to wonder how much thought they’ll be able to put into that application as they race to finish it under those types of budgets.

  35. 129

    All depends what Tom really means, Tom. Perhaps he is just another one trying to provoke. My experience in Europe, filing at the EPO stuff written in USA, is that 80% of independent claims originally presented are indeed egregiously lacking in novelty BUT much more than 80% of those same applications contain useful patentable matter. The challenge for any Patent Office is to get efficiently from crap claim 1 of the A-published application to quality claim 1 of the issued B-patent. EPO Rule 86(3) helps. After the first O/A, Applicant gets as of right just ONE shot at amendment. Further rounds of amendment (no limit to how many) are admissible ONLY with the consent of the examining division. This Rule encourages both Exrs and attorneys to go for a quick finish, yet provides enough flexibility for them to reach closure without the need for any “continuation” application. Rule 86(4) is a big stick too. But these are civil law tools. I guess they won’t work in a common law jurisdiction.

  36. 128

    I can’t believe Foolery Tom puts out the statement to the effect..”everything of importance has been thought of and every item coming down the pike should be considered obvious”. The ramifications of a thought process like that is quite scary- even though this is a single art unit that Foolery works in. How’s a guy like Foolery even allowed to work at the PTO. Close-mindedness like that has no place in a position that determines decision making-sounds to me like some personel need an attitude adjustment.

  37. 127

    So can we agree now, after all that, that fiddling with the Rules will do nothing to solve the problems at the USPTO, and likely only make things worse? Darren Gardner states with authority that “Best Mode” is indispensible to any patent system, and therefore that it is found all over the world. Wrong, and wrong, Darren. Only in the USA. As long as another US speciality, the “Presumption of Validity”, remains, nothing the USPTO can do will relieve the pressure on Examiners. Darren, tell me, is that presumption also indispensible to any properly functioning patent system?

  38. 126

    Every way I look at these rules, the number of applications will increase, the number of appeals will increase, and frustration on both sides will increase.

    For example, since restriction practice is unpredictable, and the chance of a shotgun rejection of all claims to different aspects of the invention is assured with a choice of a representative claim for examination, would it become common practice to file multiple applications, one for each claim set, on the same day?

    I would like to think increasing the number of interviews would help, but I find with current post allowance review, examiners no longer have the confidence to agree that an amendment proposed by an applicant or suggested by the examiner would make the application allowable. The new rules would make it more difficult for the examiner because a written agreement that is withdrawn based on the review could be a basis to petition for another RCE, which would probably be considered a very bad thing for an examiner.

    Also, some of the trivial discretionary after final practices should be eliminated, such as not allowing for dependencies of dependent claims to be changed after rewriting an allowable dependent claim in independent form (or equivalently, considering the “new” combinations defined by dependent claims after a dependent claim is incorporated into an existing independent claim.) This too has been a reason to we file some RCEs, so the examiner receives his/her “trifecta” counts (one for the abandonment, two for the allowance after RCE).

    Finally, I should note an observation from some of the more crusty partners out here, who view this with a more cynical eye. They see it as eventually becoming PTO revenue generator. File a petition, file the $$$$ fee, and you get your RCE (at least a second one “automatically”).

  39. 125

    Fool Tom writes: “In my area, pretty much everything that can be done has been done or is obvious.” And in the same breathe he admits that year after year, 20-30% of all applications end up being found as deserving of patents by those in his area that are 101% sure “pretty much everything that can be done has been done or is obvious.”

    Sounds like sound logic to me.
    –signed, just another fool

  40. 124

    Tom F., Thanks for the thought provoking comment. You may be perfectly correct that only 20% of applications in your art unit are deserving of patent protection. However, your argument does not prove your point.

    The PTO’s error rate or “rate of errors on allowances” is a measure of Type-I error. In other words, it looks at the percentage of allowances that should not have been issued. To make your point, we would need to take a look at Type-II errors — the percentage of rejected applications that should have been allowed. To my knowledge, there has been no study of Type-II errors at the PTO beyond the clearly biased anecdotes of attorneys commenting here.

  41. 123

    Tom Foolery, it seems you may have inadvertently hit the hit the nail on the head – you don’t mention any measurement of erroneous rejection rate in your unit. If you build sampling bias into your sampling method, you’ll get bogus results…

    What’s the erroneous rejection rate, and how is it measured?

    Your numbers suggest you might be in 3600?

  42. 122

    AnonExaminer, would your mediated amendment scenario be recorded as a “reopen” or a “reverse?” By any legal definition of the terms “reverse” and “reopen” this seems to me to clearly be “reopen.” The examiner prevailed on the issues as they were pending before the amendment, and the issue was resolved by re-opening the opportunity for amendments.

    50% is still well above the Constitutionally-suspect floor of a 1/3 reversal rate.

  43. 121

    Where do you lawyers get off thinking that every application is allowable? In my art area, the allowance rate is very low, 20% to 30%. We also have an extremely low rate of errors on allowances, less than 4%. In my area, pretty much everything that can be done has been done or is obvious. The numbers tell me that our allowance rate SHOULD be low or else the examiners and SPEs would get in trouble for too many bad allowances. But people keep filing anyway, RCE after RCE…………

  44. 120

    Let’s see if I can keep this one shorter.

    First, I understand from a post above that I might have left the wrong impression. I don’t believe that examiners are doing better work than attorneys on average. I read about 25% as many examiner responses as attorney responses, for reasons I won’t get into here, but from that sampling I can honestly say that I think attorneys do a slightly better job. I don’t mean that in any particular area (tech or law) but more generally with regards to the effort one puts into the action and the overall mental competence of the writer. However this is not a huge margin.

    I tend to think this difference arises out of differences in pay and allotted time, but that is the economist in me showing through.

    Much of my complaint was under the belief that if we only fixed bad examiners that we wouldn’t have unnecessary delay. The delay comes from both parties.

    So after spending 30 minutes catching up I do have a couple of points…

    First, I really think there were some excellent points made. I agree that the penalties for bad examining and bad lawyering are significantly different. I don’t have the answer to this problem, but erring on the side of caution, I believe, has lead to some of the problems we have now.

    Second, I still don’t agree with the statistics cited regarding appeal decisions. All arts approach pre-appeal conferences differently, but in my experience this has often been a chance for SPEs to fully review a case and bring their own experiences to bear. Many appeals are the result of an impasse between the parties. Until appeal, there is no decent mediation for those issues. The conference is the first opportunity for independent review and mediation. What often comes from these is the belief that the best course of action is something neither the examiner nor the attorney are trying to pursue. Back to my example above for instance (the watch with a fourth hand for the phases of the moon) lets assume the disagreement is with the term ‘on’. The claim might read

    A watch including a first hand located on a watch face, a second hand…. And a fourth hand located on the third hand and identifying the phases of the moon by clockwise rotation about a center axis.

    Now let’s assume that the examiner thinks ‘on’ means above and supported by, but the attorney thinks it means in contact with. Neither party can agree and the case goes to appeal. (Obviously this is trivial, but stranger things happen). The examiner is using art where the moon phase hand is really three layers away from the 3rd hand. At the appeal conference the SPEs will approach the problem anew and will try to find a solution that does not lead the case to appeal. The office does not want cases to go to appeal. They will ask if the parties talked and if alternative language was disclosed. Was defining ‘on’ in the specification an option? Often they arrive at an idea missed by both applicant and examiner. They then ‘reverse’ the appeal and direct the examiner to run with the second idea. They might also say, we like some of your rejections, but don’t like others. We are going to ‘reverse’ this appeal so you can fix the bad rejections and keep the good ones. (This would be a split decision at the board).

    All of this should, I hope, highlight that no meaningful measurement of performance can be gathered from pre-appeal results.

    As for 50% being an indicator of bad performance, I entirely disagree. These are hard issues of interpretation. That both parties are having equal difficulty in coming to the right conclusion should be expected. It’s more telling that it’s actually closer to 33% for each party, meaning that both examiners and attorneys are wrong more than they are right.

    Someone else asked if examiners are graded on the quality of their rejections. The answer is yes, quality of work is the second highest grading portion of an examiner’s PAP (behind production). Both are ‘critical’ meaning failure in either is automatic failure in whole. Every manager (SPE) approaches this task differently. My experience is a random sampling of actions taken throughout the year and a critical review of those actions. Decisions from the quality review and personal experience over the time period might also be considered. As for the quality of the reviewer, SPEs are usually selected from the best of the examiners. My own experience has been quite positive, and I also know of several SPEs that currently have law degrees. Even those that don’t have an excellent knowledge of both art and law and at the very least have access to several attorneys on staff with vast knowledge in these areas.

    pds, you wrote “I stand by my statements that the PTO needs more examiners and the examiner need more time to examine. Will this be difficult to implement? Absolutely. However, this is a problem that isn’t going to get fixed by putting band-aids on the problem.”

    I agree that we need more examiners. We are hiring more examiners. But for the reasons I mentioned above, I think we are growing at the highest rate we can sustain (perhaps higher) and we aren’t getting ahead of the problem. I think that if we don’t do more, the problem will continue to get worse, and will cross a threshold where the economy will suffer.

    “Thanks for the insult. BTW, the phrase is “arm-chair quarterback.” I didn’t every say these solutions were easy or they were going to be solved overnight. However, it is perfectly clear that what the USPTO has been doing isn’t working.”

    I don’t think what “we” have been doing has been working. And I use that term to include both the office and the practitioners. Time will tell if the proposed rules change that.

    “Over my career , I have no doubt that I have received office actions from over 30 different art units. There is NO WAY POSSIBLE that I can have even a fair inkling as to what the prior art exists in all of those art units. As such, it is very difficult for the average attorney to know what the proper scope of the invention is beforehand.”

    This is of course a problem. But it is a problem that I think could be solved by cursory searches before prosecution. I might not have made this clear before hand, but I don’t think the search should be of the intensity or cost of a litigation search. Nor should it be as complete as an office search. It should be a short and concise search that establishes a baseline for an attorney writing an application in the field. Even an easy search should find 40 year old prior art and eliminate claims written so broadly as to be rejected by any patent selected at random from a certain subclass. Ideally this search would be contracted out. Contractors can afford to hire people that specialize in fields and have a much greater expertise than Attorneys. They will after all work for several firms and see a much greater volume of material. I believe Contractors are paid around $300 for a PCT search at this time. This is what the contractor is paid, I have no idea what the total cost for search is. Further, many of these contractors are searching only in about 5 Art units of material at any one time and are often former examiners in those fields. They are expected to do about 8 hours of searching for that $300. Something in this price range would be the equivalent of 1 or 2 hours of billable time for an attorney. Wouldn’t this be a worthwhile? The full report could be used to write the claims and then provided as an IDS. I can’t imagine that any real claims of inequitable conduct could flow from this process. Attorneys would still get a full and detailed search from the examiner during prosecution, but perhaps 1 or 2 useless action exchanges could be avoided.

    One other thing that I believe is worth noting. Every action between the first action on the merits and the filing of an RCE is done without a count for an examiner. If you receive 5 non-final actions and 2 appeals are reopened for further examination, the examiner did all of this work without getting a count. No examiner can keep this up. They simply cannot continue to write actions without counts and make production. They will be fired or forced to improve. When attorneys file RCEs instead of appealing or forcing prosecution reopened (by calling SPEs or petitioning to director) they actually enable these bad examiners to keep making bad actions. They give them free counts. Next time you are thinking of filing that RCE consider yourself a batter in the 7th inning facing a tiring pitcher. Each bad action he files is another pitch. If you keep fouling them off, he’s coming out of the game. (Perhaps I really need to stop reading Curt Schilling’s Blog)? None of this affects the backlog though. No counts mean that that same examiner is just doing voluntary (unpaid) overtime to make up the difference.

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    A modest proposal, that attacks the backlog problem exactly at its cause. I’m no expert, but it seems that the following proposal will cause the PTO’s backlog to disappear in a year – could someone with some inside knowledge comment?

    Part 1. Each section of the MPEP should have a checklist of mandatory showings that MUST be made in each and every Office Action –

    EVERY s 101 subject matter rejection MUST –

    1. MUST identify particular language in the claim thought to be “abstract” and show some analogy to the “purely mental” “or “original cause” subject matter discussed in the cases [several examples set out]

    2. MUST identify the best candidate language in the claim that might be a “practical application” and show –
    a. even this best language is “abstract,” not “useful, concrete and tangible” [set out several examples of “useful,concrete, tangible” so the examiner can analogize]
    b. no “useful, concrete and tangible result” in the specification
    c. claim preempts law of nature, natural phenomenon, or abstract idea

    EVERY s 103 obviousness rejection MUST show –

    1. MUST show that EVERY element is known in the art – absolutely every claim limiation, including interconnections, must be matched up to a reference, with both a “designation” of the most pertinent portion, and an “explanation,” typically the name of the corresponding element of the reference

    2. MUST show motivation to modify/combine, supported by substantial evidence

    3. MUST discuss “reasonable expectation of success”

    4. If the applicant argued Grahm v Diehr secondary factors, the Action MUST respond to those arguments

    Part 2. Every Office Action should come with a “60 day money back guarantee” – if an Action has a black-and-white failure to meet the mandatory checklist items, or has a goofy mistake like “functional language” or “motivation to combine based on same field of endeavor,” the applicant can send it back, and get it reissued in corrected form. The fee for requesting this is $200, refundable if the complaint is valid. The examiner gets no count for correcting a faulty Office Action. Becasue the faulty action is withdrawn as if it never existed, an applicant loses no patent term, and premature RCE is avoided.

    Part 3. Applicants can petition for review of the procedural aspects of rejections. The petition can only raise issues of mandatory requirements, no issues of examiner discretion or judgment. If the examienr acted outside the scope of the authority/discretion delegated by the PTO, then legally the Office Action is a “frolic,” not an authorized act on behalf of a principal by an agent, and neither the PTO nor the applicant should be bound by it. The fee for this petition is $1000 (same as appeal fee), refundable if granted. If granted, the examiner loses all counts for work that was not done.

    The PTO will not stop sending out garbage until the PTO gives examiners more incentive to read the MPEP and apply it than to send out garbage. Make it expensive for examiners to churn out bogus rejections, and the bogus rejections will stop. Every rejection will be well considered and clearly explained so that almost every applicant will respond to the examiner’s satisfaction. The total amount of written work generated by the PTO will drop by a third, because the 1/3 that is garbage will not survive the checklist and will not be written.

    Jon and John, There’s a solution to all your problems, and a chance to comply with the law, all in one package. Got the guts to put a solution where the problem is?

    Part 4. Stop having foxes guard the hen house. Petitions cannot be decided by T.C. Directors, any more than traffic tickets can be decided by judges who get a percentage of the fines collected. T.C. Directors are managers, not adjudicators, few have any legal training. They’re just the wrong people to be deciding petitions.

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    Points to ponder:

    “The reason the PTO does so much “rework” is because so much of its initial work is so incomplete. The solution to the PTO’s backlog and rework problem today is the same as the solution Ford, GM and Chrysler had to learn 20 years ago – if you do a lousy job the first time, it’s awfully expensive to fix it down the line. Your expenses arising from your defects are not your customers’ fault.”

    You are dead on. Although this is anecdotal, I have an application with 5 office actions. In each office action, the examiner cited 5 different sets of rejections for the main claim. The main claim has only been amended once (after the 2nd OA and interview) to add two words to the claim. I am on my second appeal brief (after prosecution was reopened with another set of lousy rejections). I have lots more examples, but that example is fresh in my mind.

    In my mind the three office actions after the third office action are a waste of the PTO’s time and a waste of my client’s money.

    An examiner who takes the time to read the application, try to understand both what the invention, as claimed, and as described in the specification (could be two different things) and come up with prior art that covers both inventions, produces the best examination. With a reasonable attorney (and client … sometimes the clients don’t take “no” for an answer), then one amendment (if necessary) should lead to an allowable application in most instances.

    The quickest examinations are when I get both the best prior art and good explanation as to how the examiner is interpreting my claim language. Even if I think my claim language, as is, is good enough, I will amend those terms, as necessary, to unambiguously overcome the prior art if I think the examiner won’t come back with some other art based upon my amendment.

    With a good examination and a reasonable attorney, there is no reason why most applications shouldn’t be allowed after 2-3 office actions.

    In another post you mentioned statistics with regard to Appeals. Some other thoughts to consider.

    Although not by me, there is a general reluctance by many attorneys to file appeals. I’ve heard comments such as “they are too expensive,” “it will delay prosecution,” “I don’t want to PO the examiner.” Also, although not stated, many attorneys are experienced with writing appeal briefs, and as such, are hesitant to prepare them. As a result, I think there are a lot more applications ripe for appeal that don’t get appealed.

    BTW: I also currently deal with the 2100 and 3600 art groups (after many, many years of practicing before other art groups, and my experience with these two art groups makes me reevaluate how good the other art groups were.

  47. 117

    DS –

    Sounds like we should all wish for more like you. By airing the issues, that’s what we’re hoping to achieve. It’d be better if all examienrs had the attitude and diligence you show here, but I’d settle for examiners do it well anyway because the PTO forces them to, or because they’re afraid of being embarrassed by what is said here.

    Can I follow up on something you said that I don’t understand?

    “Also, in terms of the board and reversals, I am not sure you can lump in appeal conference “reversals” with board reversals. In appeal conferences, we make the decision as to whether or not we feel that the examiner would be affirmed or not. It is not an exact science, but we tend to be pretty spot on (I have a 90% success rate with cases I let go so far). However, just because we say no, doesn’t necessarily mean the board would have agreed or not. It may be semantics, but I don’t think you can count our decisions as reversals for your stats.”

    DS | Apr 14, 2007 at 04:50 PM

    I understand why an “affirm” at appeal conference is different than an “affirm” by the Board – when appeal conference allows the appeal to proceed, it’s not a final disposition, it’s at most a statement that the issues are close enough that you don’t want to decide them, and you want to send them to the Board.

    But a “reversal” at Pre-Appeal Review or at appeal conference seems to be absolutely identical to a “reversal” at the Board. The appeal is done. The particular combination of references is dead. The examiner has no discretion to re-raise the same issues. In fact, a reversal at appeal conference seems to be “even more so” than a reversal by the Board – you wouldn’t reverse at appeal conference if there were any open question.

    Is that correct? If so, then my two-layer analysis is an accurate way to combine the two levels – it treats reversals at either level identically, and properly re-apportions “affirms” at appeal conference based on final dispostion at the Board.

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    “If you get an allowance where you “know” the claims claims are not allowable do you ever complain to the office or file a response saying that the claims are too broad and should not have been allowed?”

    The only way I could “know” the claims are not allowable is if I know of a 102 reference that is slam dunk. However, if I did know of such a reference, not only would I have an obligation to cite such a reference it would be malpractice to allow my client’s application to be allowed with that reference sitting out there. If I know of the 102 reference, the attorneys hired by whoever my client sues will also know of the reference. Invalidated patent = very unhappy client = potential malpractice suit. Not good business practice.

    As for 103 references, I will never be one having ordinary skill in the art at the time of the invention (unless the art we are talking about is patent prosecution). Although I have been an engineer, I wouldn’t consider myself a POSITA even in the art I used to be an engineer because I am no longer part of that art. Since the POSITA is a fictional, legal creation, I don’t try to judge whether an application is obvious or not. My job is to determine whether or not the examiner has met their burden to establish a prima facie case of obviousness and whether or not there are secondary considerations that need to be accounted for.

  49. 115


    “You attorneys are running a really big risk for your clients by threatening to appeal at the drop of a hat. Some, though I do not believe most, examiners will simply allow a case if they are overturned on appeal, rather than apply new art even if it reads on the claims. One time my SPE told me that a primary just allowed a case after being overturned–the SPE was not pleased that more consideration was given.”

    If you thought better art could have been applied to the claims, why wasn’t this art applied in the first place? Based upon stated USPTO practice, the BEST art is supposed to be applied against applicant’s invention. If I think the best art has been applied and I think I can overcome a rejection by appealing, then I will.

  50. 114


    Since you replied to my post with a VERY long post of your own, I will address some of your comments.

    I stand by my statements that the PTO needs more examiners and the examiner need more time to examine. Will this be difficult to implement? Absolutely. However, this is a problem that isn’t going to get fixed by putting band-aids on the problem.

    As for SPEs reviewing documents, an examiner making the same mistake (for example about some aspect of the law) for 10 office actions without correction now assumes that the mistake is, in fact, not a mistake but really, the law. I’ve seen office actions state the motivation to combine two references was “because these references are in the same field of endeavor.” These are the types of mistakes that, in the end, waste both attorney time and the examiner’s time. However, these types of mistakes could be easily corrected if the office actions were reviewed more carefully.

    “I realize this sounds like a rant, but I hate the couch quarterbacks who throw out these solutions as if the problem were simple and the office is simply too dumb to grasp your brilliance. The office is not dumb. It has investigated a number of solutions, not just for now, but for the foreseeable future. The drastic growth in the value of IP can only mean an increase in the filed applications.”
    Thanks for the insult. BTW, the phrase is “arm-chair quarterback.” I didn’t every say these solutions were easy or they were going to be solved overnight. However, it is perfectly clear that what the USPTO has been doing isn’t working.

    “If examiners can’t spend more time for examination, and more work is needed to meet a minimum bar of quality, then shift some of the burden of examination back to the private realm where resources far outstrip the office.”
    Actually, the better solution would be to have the private sector pay the government to perform this work because it would be far more costly to have the private sector perform the work.

    “this statistic just highlights the fact that attorneys are not either examining the art in any way prior to filing or have no desire to describe the actual invention unless forced to do so”
    I’m sure that there are some attorneys that focus on a particular art. However, most attorneys don’t practice in the art encompassed by a single art unit. Instead most practice in arts encompassed by 10, 20, 30, 40 different art units. Over my career , I have no doubt that I have received office actions from over 30 different art units. There is NO WAY POSSIBLE that I can have even a fair inkling as to what the prior art exists in all of those art units. As such, it is very difficult for the average attorney to know what the proper scope of the invention is beforehand.

    BTW: I think I may have written this once before (perhaps in the context of one of the KSR threads), but don’t confuse the way you search/examine an application with the way most examiners do the same. I could go 10 office actions and not read as much original text as I did in your single post.

    You wrote this in a subsequent post:

    “This runs counter to the belief that one should maximize scope at all cost, but this would be one of the sacrifices I mentioned above that must be made.”
    If you screw up badly once (i.e., allow a patent that should have easily been rejected), what are the consequences for you? A slap on the wrist? A note in your personal file? More frequent reviews?

    On the contrary, when an attorney really screws up badly (i.e., drafts claims that are narrowly focused and don’t cover the full scope of applicant’s invention), the consequences include claims of malpractice and depending upon the creativity of the malpractice attorney hired by the applicant, millions of dollars in damages. Who knows, if your bar thinks you acted with gross incompetence, you may even lose your license to practice. If you think attorneys will voluntarily stop trying to maximize the scope of the invention, then think again.

    “If my guess is right, and limited bites of the apple force applicants into writing more limited claims at the start, the process should require less actions.”
    Not going to happen … again, to write “more limited claims” you have to know what the prior art is. Knowing the prior art is not the expertise of either the inventors or the attorneys. That is the job of the examiners. Inventors solve problems. Attorneys draft applications based upon the examiner’s comments and know the law. It is the examiner’s job to know the prior art.

  51. 113

    As I noted above, I am convinced the rule changes as proposed in their original form constitute an attempt to administratively adopt practices that are in fact contrary to the spirit and the letter of the law. The elimination of continuation practice is especially harmful.

    Having said that, I’d like to take a look at the upside – circumstance praising the combined efforts of attorneys, examiners, and clients.

    As you can tell from my moniker, I am an inventor. Unlike most clients (if you are an attorney) or applicants (you examiners), I do this full time. I identify technical problems or opportunities in my field, figure out how they may be overcome or fulfilled, respectively, perform the necessary technical feasibility assessment when possible/necessary/desirable, write cohesive applications describing the concepts/principles of operation and the features of the first few generations of product based upon the concepts, and then hit my database and identify the closest prior art. I have a major advantage here in that I bit the bullet and downloaded EVERY domestic and foriegn application in my art a few years ago and then READ THEM IN DETAIL and cross referenced them – it took me 11 months of full time effort to review 8,900 patents including the German, French, Scandinavian, and Japanese art translations, but its finally paying off. (God bless and OCR software)

    Now when my attorney applies for a patent application, I’ve written the first draft of all the claim sets which he puts a “grammatical” polish on (I always screw up antecedant basis and he is very good at condensing several independents into one strong governing independent) and the first IDS that goes in holds only the 4-6 domestic and/or foriegn references that are truly the closest to the edges of the scope of our claims. A second IDS is sumbitted with perhaps 2 dozen references that teach the generic “state of the art” making it as clear as possible that prior to my work, the world was “zigging”, and my stuff teaches “zagging” (goofy analogy, sorry). At the first possible opportunity, my attorney gets the examiner on the phone, and takes him/her on a guided tour of the art, pointing out technical terms of the art and where they are analogous to more commonly used or “layman” verbage to provide solid ground from which the examiner may conduct the initial PTO search.

    This is a huge pile of upfront effort, but it yields a very smooth and effective prosecution process – and here is the kicker – which let’s the examiners get their heads in the game fast enough and deep enough that the resulting claims are significantly improved by the examiners effort. No kiddin’. In the last appl for which I recieved a notice of allowance, about a third of the independent claims might just possibly have failed to survive scrutiny (Markman Hearing) in their original form because of a simple oversight on our part. The examiner didn’t have to spend 12 hours to get her head in the game (the guided tour got her there in 1 1/2 hours), and she caught our oversight – the end result of this is a VERY strong patent, so strong that it will highly motivate third parties to enter into sincere dialogue to license, as opposed to the generic corporate BS discussions you find yourself in when you’ve got potential weaknesses more subject to the vagaries of litigation.

    Anyway, I just wanted to point out at least one instance where the collaboration of patent attorneys and examiners yeilded some kick ass results – that patent was prosecuted under a petition to make special on the basis of infringement, and it’s going to trial in a few months. Wish me luck.

    Now . . . a little bit of a rant . . .

    While this system works for me, I can tell everyone on this board flat out that you will not see this kind of system ever adapted by large corporations. My fully burdened cost for time invested pre-application averages around $40K plus $9K in attorney time for drafting and prosecution per application – the time alone would make a corporate bean counter scream bloody murder. The concept of having in-house creative talent actually learn the prior art – no way in hell (simply put, in-house litigation counsel from the old school still embraces the concept that plausible deniability of awareness of prior art is a good practice to avoid duty of candor issues for those not under attorney client privilege). The underlying reason why large corporation patent prosecution is “broken” is the simple fact regarding the manner of intended use of the patent – most, certainly not all, patents generated by the largest corporations I’ve worked for have been used for intimidation of smaller companies to suppress innovation. Drown ’em in legal costs and pick the bones clean later on is de rigeur (sorry, no spill chocker). The big companies are far more interested this objective than in enforceability of the patent that emerges from prosecution for the simple fact that the patent can be used in a highly profitable fashion (why spend an extra $175M a year on R&D when you can spend $7M in legal effort to the same effect?) regardless of the actual legality or ethics of the situation.

    Having said all that, not all large companies do this, but the few I know first hand overshadow the rest.

    “Trolls” – remember, guys, this term was coined by a big corporate spokesman who then left and formed a business based on that which he slandered. He was a very effective Spin Doctor, and defined himself as such by his actions. To reach back in time for another term that is not talked about much, remember the inventor of Morse Code coined (or is rather given credit for coining) the term “Patent Pirate” – meaning companies that steal technology in violation of patent rights.

    Which is higher on the moral ladder? Being a thief, or being someone who drags thieves before a judge? Are those of you who bemoan the role of so-called Trolls simultaneously extolling the virtues of thievery?

    I think too many people are “drinking the Cool-Aid” offered to them by companies, or more specifically their lobbyists, whose sole objective in popularizing the war cry of “Patent Troll” is to change procedures and law to effectively enable technology theft while mitigating the likelyhood of getting caught and held culpable.

    One of the previous posters on this board called for ‘penalties for patent trolls’ – first, define what a Troll truly is in your mind, and then tell me what is wrong with it, if you please.

    My thoughts on the UPTO back log issue:
    1 – adminstratively eradicating or mitigating the number of applications pending is illegal. Don’t do it, you’ll get sued, and I’ll help pay for it.
    2 – to improve prosecution quality, you’ve got to provide motivation for the examiners to do quality work, and both access to and a requirement to go through thorough training (you guys busting in your butts in the office, I don’t mean to be critical, but that reversal rate on appeal has got to improve and you have got to be given the time per claim allowing you to improve it. In my field, you’ve hit closer to an 800 Batting Average – MUCHO CUDOS! – so I can’t share the same complaint of others in other areas).
    3 – I pay per claim and per page of application. I want a proportionate effort brought to bear based on what I pay for. Is this unreasonable?
    4 – Approach prosecution as a collaborative process. Remember, I’m paying your bills and since I can’t afford to own garbage patents, I’m relying on your combined efforts to yield valid, enforceable patents, or to identify when I’ve reinvented the wheel by accident.

    The thought I’d like to leave yall with is that when attorneys and examiners butt heads, I LOSE. Yall get paid just fine while my R&D budget gets chewed to feed attorney time & USPTO fee based costs. That R&D effort (when I don’t screw up, which happens occassionally) yeilds work product which benefits society, sometimes just a little, sometimes a bunch.

    Wow, sorry for the rant. I don’t see any other inventors posting here and thought a different perspective might be fun to throw out there.

    Dennis – I just wanted to confirm that it is OK for me to post here. I don’t want to hijack a thread if my contribution is contrary to your wishes as our host.

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    points – I can only comment on the things that I know (that’s refreshing ;)). In terms of holding examiners accountable, that’s the SPE’s job. If they are not using the proper procedure for 103’s, or they are ignoring language which they should not, they should be held accountable. Personally, I do that in a number of ways. The easiest way is to kick the case back to the examiner to make them fix it before I will sign it. I keep records of these kick backs and use them at rating time to judge the examiners’ ability to take correction as well as their ability to maintain quality. Other ways are to review the actions of primaries and see what they did, and the attorney responses. Also, phone calls from you guys help me guage the quality of my examiners. I would prefer you deal with them dirrectly, but Iknow hte frustrations can mount and that’s when I get the calls. So, in summary, the examiners should be held accountable for their quality by their SPE.

    Also, in terms of the board and reversals, I am not sure you can lump in appeal conference “reversals” with board reversals. In appeal conferences, we make the decision as to whether or not we feel that the examiner would be affirmed or not. It is not an exact science, but we tend to be pretty spot on (I have a 90% success rate with cases I let go so far). However, just because we say no, doesn’t necessarily mean the board would have agreed or not. It may be semantics, but I don’t think you can count our decisions as reversals for your stats.

    I think I see, overall, that the problems may be more with the more complex technologies, seemingly the biotech, computer and business method stuff. Because of the unique nature of these areas, it is hard to try and get a consistent state of quality. I thank johng for pointing out that our area, the electrical group, tends to be more consistent in its actions. That’s not to say I don’t come home some nights and bitch and complain about examiner so and so who can’t seem to understand the basic consepts of examining practice, but, from what I gather, it’s not as bad as it could be.

  53. 110

    “Just Doing my Job,” you don’t have an email address under your signature. Can you please email me by clicking my signature to open an off-line communication. Thanks

    “AnonExaminer” comments “Points, as for the supposed low affirmance rate at the board, your numbers are entirely misleading. Cases that reach the board are generally split evenly between overruling and affirmance. … The 20% fiction might gather applause around the water cooler, but is a result of bad statistics and does not reflect well on any party espousing it as fact.”

    I made several requests for the WHOLE set of statistics under the Freedom of Information Act late last summer. The statistics set forth at page 3 of this document-

    link to

    are consistent with the statistics I obtained (Heritage Woods’ FOIA request and my FOIA requests were a few months apart so the actual numbers are a little different, but consistent with each other on a percentage basis). Indeed, the statistics at the Heritage Woods letter are somewhat conservative relative to the ones I obtained, because the Heritage Woods numbers don’t include reversals at Pre-Appeal Review phase OR Federal Circuit phase, which make the PTO look even worse.

    But, let’s adopt the reasonable parts of AnonExaminer’s alternative analysis, and see where they lead. First, we have to include reversals at Appeal Conference phase – they’re still reversals (a sugestion that we only count reversals at final Board phase, and disregard half of the data, is justifiable how?) Then, we’ll use your approach, which isn’t a bad one, of only counting full reversals and full affirmances, and just disregarding all other dispositions – a different way of calculating that’s also reasonably fair (as long as we recognize that the difference reflects a one-sided bias in favor of the examiner who gets a “do over” when he was required to be “complete” on the “best available” art in the first Action). What do we get?

    On average in the last few years, at Appeal conference, the examiner is affirmed about 50%, and outright reversed 30%. Of the 30% that mature into Examiners’ Answers and final Board decisions, AnonExaminer is correct, the split is about even, 38% reversed, 37% affirmed. Putting these two levels together, we get

    50/(50+30) x 37/(37+38) = 31% net affirmance rate.

    A 31% affirmance rate. Wow. Since the threshold for Constitutional due process is a reversal rate of 1/3, Mattern v Weinberger, 519 F.2d 150, 161 (3rd Cir 1970), you would justify a net reversal rate of 69% – how? Even on your cherry-pick-half-the-data proposal, you still have to concede a reversal rate of OVER 50% – which you would justify how?

    There are multiple fair ways to look at the numbers. They all lead to the same conclusion – the PTO’s examination procedures are Constitutionally infirm. Illegal. The wounds that the PTO complains about in the Rule proposals are self-inflicted.

    An more improtantly – whether you use an analysis that leads to a defect rate of 50%, 69% or 80% in PTO work product – is there really any difference between what these three numbers tell you?

    Solving the PTO’s problems requires that we all be brutally honest with ourselves. Hiding heads in sand and disregarding incovenient truths will just get in the way of identifying the real sources of the problems or meaningful solutions.

  54. 109

    Two observations, one to the examiners, one to the attorneys.

    I agree with the examiners, there are a number of dazzlingly incompetent attorneys. Being inside counsel supervising these clowns is as frustrating as being an examiner.

    However, the two situations are not at all symmetric. Incompetence isn’t illegal. The PTO’s institutionalized contempt for procedural law is illegal. Not just incompetent, stupid, immoral – ILLEGAL. Injunctions. Civil penalties. Attorney fees. Personal Bivens liability.

    My main gripe is with PTO non-management who affirmatively refuse to compel examiners to follow the PTO’s published rules. The PTO’s boilerplate decision to petitions directed to issues of non-examination and premature finality says, in effect, that examiners have freedom to do *anything,* or more particularly to do *nothing,* and the PTO will incentivize them with full counts, salary and promotion for doing so.

    (Question for examiners – does PAP measure the quality of rejections – e.g., would an examiner lose PAP points if an obvousness rejection omits any of the three prima facie elements, supported by substantial evidence? Would an examiner lose PAP points for disregarding “functional” or “descriptive matter” language? And, as Stalin noted, the most important thing is “who counts the votes” – Who grades the papers? Is it anyone who actually knows the rules that are supposed to be enforced, or is it simply a senior examiner who came up before there was a Chapter 2100 to set any meaningful procedural floor?)

    Here’s only once facet of the problem. About 5% of Board decisions come out “We can’t review this appeal because the examiner is silent. We remand with no decision. Your two year wait was wasted. We have no authority to supervise the examining corps – you’re back on your own, with the same nincompoop examiner whose inaction led you to appeal in the first place.” The PTO Petitions Office’s position, that PTO management has no responsibility to ensure Office Actions are procedurally complete (as opposed to correct on the mertis) because the Board will always fix it, is an out-and-out lie. It’s illegal. Management has jurisdiction and obligation to compel procedurally-complete examination that gives full notice of the examiner’s position. The reason the PTO is drowning in rework is because the management chain (at least in 2100, 3600 and the Petitions Office) affirmatively refuses to compel complete examination, and instead expressly tells examiners that they are incentivized to play “hide the peanut” games.

    (Management has no obligation to ensure “correct,” but they do have an obligation to ensure “complete” and consistent with anything stated as mandatory in the MPEP or 37 CFR. But because the PTO has so little expertise or respect for procedural law, this distinction drawn by at least 8 Supreme Court cases is one of those places where the PTO tells the Court to screw off.)

    In contrast, applicant/attorney incompetence already has pretty strong counter-incentives – loss of patent term extension, RCE fees, delayed issuance while competitors enter the market, and the accountability that comes when a client asks “Why don’t I have my patent yet? And, um, what does this mean where the examiner writes that your argument is irrelevant to the issues at hand?” While incompetence isn’t illegal, it is punished.

    The contrast between punishment for non-illegal conduct of attorneys and the PTO’s active incentivization of illegal conduct within the PTO is galling.

    So long as PTO policy is to refuse to accept any accountability for itself, and the PTO says that it has no responsibiities under the adminsitrative law, and PTO policy is to insulate all accountability for breaking the procedural law, the new rules are disingenuous at best, illegal in several respects, and will raise overall costs. The PTO will be unable to insulate itself from those raised costs – if the new rules raise costs for applicants by billions of dollars, you can be sure that applicants will find ways to force enough of those costs back onto the PTO that the net effect will be negative for the PTO as well.

    Now, attorneys, your turn.

    Several of you noted that you’ve done stupid things because “the client made me do it.” That’s ridiculous. Patent attorneys are business attorneys, who should be giving the same kind of proseective strategic cost/benefit advice as tax attorneys or corporate attorneys. It’s striking the degree to which patent attorneys so consistently abdicate their role as business attorneys.

    Your job is to be a counsellor and business advisor. You have to teach your clients. You have to explain to them why quality is better than quantity, why making unsound arguments will cost more than it buys. When a client asks you to do something stupid, you must remonstrate with your client. The ethics rules give you the power to choose tactics – when a client suggests something that you think is tactically dumb, don’t do it. Take accountability for the quality of your own work product – don’t foist the blame off on someone else.

    Are you guys charging an appropriate fee level? $4-7K was the going rate 15 years ago – why aren’t your prices keeping up with the 2.5-3X over that time for all other business legal services? You have to train your clients that enforceable patent rights cost money, and you have to help them make sound tradeoffs of quantity and quality. If you feel you’re under some constraint that forces you to deliver garbage (a proposition that your clients would find dubious), then remember that you’re a business lawyer – that is, a business problem solver – do something about it.

  55. 108

    M, I was going to respond regarding bad boy attorneys, but Just Doing My Job already addresses your concerns. Make it final. It would be a just disposal.

    And remember, I saw many attorney responses while at the PTO. Most were not as bad as you make them out to be, but I do realize, just as there are a boatload of examiner newbies, there are also many green pratitioners. That does not justify bad actions on either side. If it is good, make it final.

  56. 107

    Hi DS,

    With the exception of a few isolated cases, I find your (my old) group is more reasonable than any other that I frequently deal with at the PTO.

    I completely understand your comments regarding ineffective premature finality arguments. At the same time, I believe an examiner can comprehend the core inventive concept in a majority of applications he/she examines. There has always been the attitude at the Office that boneheaded attorneys initially write ridiculously broad claims. In hindsight, this may appear so because many applications are written from the point of view of a two to five page invention disclosure citing about five prior art documents, or a prior art search including about 10-15 documents. I believe no attorney or agent intentionally composes a claim that would read on that particular art in front of him. It may occasionally happen because of time constraints (e.g., when filing foreign-based applications examined under different standards elsewhere, which are received days before a statutory deadline), and ignorance of the particular technology, but I believe it is more rare than common.

    More comprehensive prior art searches by applicants would help reduce the burden on the examiner and compact prosecution. Such searches may become the standard after the effects of the new rules take hold. As pointed out above, the cost of searching some arts can meet or even exceed what it costs to prepare and file an application. In litigation, searching costs greatly (sometimes exponentially) exceed any standard patentability or PTO searching cost. However, searching has always been considered a fundamental part of an examiner’s job. Applicants rely upon this, with the belief that the PTO would perform searches in a reasonable efficient and competent manner within the time they have.

    I am glad you can see why that attorney’s point is somewhat valid. I know from my experience examining it is possible to organize a comprehensive search before first action and to apply the most relevant art in the first office action. Near the end of my career at the PTO, I rarely generated RCEs, had active after final periods, and allowed a majority of the applications. For example, given the 15 or 16 hours for disposal, I allotted about three quarters of that time to produce a first action. That would be about 11 to 12 hours searching and drawing up the first action. Follow-up searching was limited looking for documents published after my first search. What I found in almost all cases, the claims were defined around the applied relevant art.

    I felt good when an application was allowed, and I believe the client was pleased with the compact prosecution. It’s a philosophical approach that I believe is indicative of good examination. But, you cannot force someone to adopt a philosophy. Enforcement of rules and procedure can.

  57. 106

    This is a great discussion!

    To johng – I remember you back in old 2500, but and always wondered where you went. I think we spoke a couple of weeks ago about something, but that’s neither here nor there. It’s funny, but what you said about seeing garbage from other examiners upon leaving the office is the same thing I said upon becoming an SPE. I’d liket othink things are getting better, but I only have control over my little fiefdom. I do sit in on appeal cofnerences, and do see things getting better.

    I think the above shows that we all have a similar complaint. Each side has too many people who don’t take the time (or don’t have the inclination) to do the job right.

    Thge points the examiners are making I find to be very valid. Arguments from attorneys dealing with limitations not claimed are frequent. Long stretches of case law which add nothing other than bulk to the responses. We all have boiler plate language we use, and maybe that’s part of the problem. I see both sides relying on form paragraphs rather than logic and facts.

    One thing about claim construction. I have one attorney who is constantly complaining about premature finality, basing his argument on the grounds that the rules say a search should be doen with an eye towards the actual invention, and not just finding the art that reads on the claims. His point is somewhat valid, in that it is better for the examiners to find art closest to the invention as a whole in order to force an amendment to overcome the best art right away, for compact prosecution. However, as I always point out to him, he has a duty (or at least there is the suggestion)to claim from broad to narrow to define his invention. If the claims are too broad, my examiners, 9 times out of 10, are going to find the broad art. He narrows the claims, my examiners re-search, find the closer art, and go final. It’s a problem, especially in the limited RCE domain of the future.

    For following the future guidelines, it will be important for both sides to not only be able to work together (after all, we all want sttrong patents to be issued, right?), but to recognize that our best efforts need to come at the beginning.

  58. 105

    I’ve started to counsel my clients to file Petitions to the Director under 1.181 for those cases where the examiner is just not doing procedurally what he should be doing.

    I’ve got one case that is still the original filing, and the examiner just mailed the SIXTH Office Communication. So far, he has rejected claims previously allowed (there were no amendments – I’ve been cancelling the rejected claims to get a quick allowance), and sent me two Non-Responsive Reply actions because the examiner did not like my response to his OBJECTIONS (In an interview, the examiner admitted that the second objection, which was a two-liner, was really a rejection even though he wrote it up as an objection). Unfortunately, this client, like too may other clients, didn’t want to file a Petition because he “doesn’t want to piss off the examiner.”

  59. 104

    There are good examiners and bad examiners. There are good attorneys and bad attorneys. I think the good examiners and attorneys are more likely to be reading Patently-O than the bad ones, otherwise the bad ones would become good ones! Bad examiners and attorneys are those that do not apply the law and/or are not technically competent.

    AnonExaminer complains about the bad attorneys, but I get the feeling that he thinks all examiners are good examiners. Examiners are in a position of power. Not only are they prosecutor, they are also judge. They can be overturned on appeal, but at great expense. If that position of power is abused, as it is by the bad examiners, then the system bogs down because all any attorney can do is file more documents.

    If an attorney does not do a good job and does not follow the rules, etc., I do not see the burden by the examiner. If the examiner did a good job in the first office action, then a final rejection should be quick and supported by appeal. I know the rejections from bad examiners are done quickly (how long does it take to cut and past the words from the first office action and add the boilerplate that the attorney arguments were not pursuasive?). The MPEP addresses how an examiner is to respond to amendments and arguments. Just do what the MPEP says.

    I see the same things Points to Ponder sees. I file many continuations and RCEs because the examiner does not properly examine the application, either legally or technically. At least the backlog experienced from good attorneys would be reduced if the examiners followed and enforced the law and rules and applied sound technical reasoning.

    All I want is for my applications to be examined properly. If there is good art and reasons for the rejection, the case can be disposed of quickly and easily. When there is no good art cited and/or no valid reasons for the rejection, the case lingers on until someone breaks.

  60. 103

    If attorney responses to office actions are only billed at 6 hours, 8 at the most, then the attorney has less time to do the response than I have to do the office action (I am GS-11). This would explain the trend I have been seeing to simply add a minor change to the independent claims, without touching the dependent claims, followed by 2 to 4 pages of remarks. It appears the attorneys are under more time constraints than the examiners.

  61. 102

    Responding to DS with my own rant, I certainly acknowledge that we attorneys are part of the problem. In fact, I agree with most of the points that DS makes about attorneys (except our not having adequate technical knowledge — we simply do not have the luxury of always working in the same technical field). While some of the blame for the current situation must rest on the patent bar, in response to many of the observations made by DS, I have to say that our clients often force it to be that way.

    I have been doing primarily prosecution work (and supervising prosecution work) for about 15 years in a private law firm. The past five to seven years have really seen a change for the worse in many of my clients. Over the past few years, I have seen clients increasingly focus on the cost of prosecution. While I understand their concerns, it has had an effect on how we do our work and on the quality of the work. Of course, the bar is to blame for some of this — there has been a level of greed in the patent bar that has led clients to watch their bills more closely. However, many clients have taken the (IMO) misguided approach of filing lots of applications within their budgets, rather than fewer high quality applications, driving down the amount that they are willing to pay for each application. Similarly, they have driven down the amount that they will spend on each reply (even where this may cost more in the long term). Recent corporate focus on measurable results has been partly responsible for this — it is easier to measure the number of applications and replies filed than their quality. In-house attorneys are given bonuses based on these “measurable” results, giving them incentive to increase numbers of filings and decrease (short-term) costs.

    In a world where the salaries that must be paid to starting attorneys (and, to be fair, partner profits) keep increasing, and the amount that can be charged for prosecution work keeps decreasing, something has to give. Unfortunately, far too often, what gives is the quality of the prosecution work.

    Many clients now expect an application to be drafted in 20 hours or less (from first interview with the inventor, through at least one or two rounds of revisions, to filing — the time actually spent drafting needs to be no more than about 15 hours to meet this). A reply to an office action is typically billed at no more than 6 hours (8, if the company is generous). I am keenly aware that the associates who do the bulk of this work need to bill about 1900 hours per year, and there is a limit to my ability to cut their time. Making things even worse is the fact that many corporate clients are unwilling to pay for a rudimentary search, which means that the drafting is done without any real idea of the prior art (beyond what the inventor provides, and the personal knowledge of the associate doing the drafting).

    This is all worse when working with corporate clients who have hired some hack who spent his career doing licensing or litigation into their in-house “chief patent counsel” position (I haven’t decided which is worse — the licensing guys usually want to own the world, insisting on scores of unreasonably broad claims, while the litigation guys often insist on applications and replies that are so abstract as to be almost unreadable, due to their intense paranoia about ever being limited in any way by prosecution). More often than not, I find that these in-house folks are not interested in the advice of outside prosecution attorneys — they always know better. The only job of the outside attorneys is to produce applications according to corporate guidelines as quickly and cheaply as possible — prosecution is viewed as commodity work. In such an environment, it is not surprising that examiners who have been in the Office for many years might observe that the quality of the work produced by attorneys has been decreasing.

    Of course, some of the blame also falls on the Office. While I have certainly encountered some outstanding examiners, I have also received Office actions from examiners who clearly did not understand the technology or the law, and were unwilling or unable to spend the time to do a decent job. Overall, I have to say that the quality of the examinations that I have seen has been going down over the past several years.

    Now that I am done ranting, while I do not like the proposed changes, I understand where they are coming from and why they might be needed. I am worried about the rules making it more difficult to achieve the full scope of protection that is deserved, and believe that the new IDS rules put prosecutors into an impossible position unless there are changes in the law of inequitable conduct (of course, inequitable conduct is almost always raised in litigation anyway — so do the new rules really make much difference?). However, if the new rules provide examiners with the time to do a higher quality examination, then I am willing to live with the limitations and dangers that they impose. If they force my clients to change their patent strategy, to allow more time in drafting and replying to office actions, then they are probably beneficial. For example, while I would rather be allowed more than one RCE or continuation, if my clients understand that they will have limited opportunities to make their arguments, perhaps they will be willing to spend enough on initially making these arguments to allow us to spend the time to fully understand the cited art, and to draft a solid reply. Perhaps they will even be willing to spend the money to do an up-front search, so that they do not waste an office action pointing out that 40-year old art that anticipates the claims.

    Of course, if the new rules do not lead to increased quality in examination AND increased quality in drafting and prosecution, then they will end up doing more harm than good.

    With respect to the effect of the new rules on small inventors, I do not know. The rules may increase the costs of prosecution, but will they really put those costs outside of the reach of small inventors? In my experience, on a per-application basis, small inventors are usually MORE willing to spend an adequate amount on prosecution (of their one or two KEY applications) than are large companies that file hundreds or thousands of applications per year.

  62. 101

    I love the arrogance of these posts. Johng, while you might see a greater sampling of examiner actions, I can assure you I see a greater sampling of attorney actions. What I have seen is quite comparable to what you noticed; attorneys that don’t have a full understanding of the law or technology field.

    Common errors I run across:

    1. Attorneys that argue unexpected results in response to a 102 rejection

    2. Belief that foreign priority date should always be applied when a certified copy has been received (with no translation), and thus no translation or arguments about the standing rejection are given

    3. Boiler plate quotes of Graham v. Deere with no actual response to any of the particulars of the action (either because they forgot or because they didn’t realize one had to respond)

    4. Arguments that a different embodiment of the quoted art doesn’t teach the elements (keep in mind that I do pen cite and item match in figures)

    5. Amendments to overcome prior art that actually teach away from the claimed invention (mostly due to a complete lack of understanding of the invention)

    6. Very long detailed paragraphs on how the manufacturing process of the claimed device is different from the prior art, when none of said processes are claimed, and even if they were claimed would not be patentable limitations in a device claim

    7. Extensive responses detailing how the claimed device is used in a different manner than the claimed device, with no actual response to the rejection on the merits

    I could go on but I think I’ve made my point.

    As for the complaints about all those pointless 101 and 103 rejections applicants receive, I certainly complain about all the pointless intended use arguments I receive. Occasionally attorneys will admit that the argument has no legal basis, but the inventor wanted them to make it anyway and they caved. Applicants are complaining that examiner’s SPEs make them make dumb rejections while at the same time giving us dumb responses that their own inventors (or foreign council) made them make? This street goes both ways.

    The truth is that this is a difficult field. I would suggest that only a small fraction of the people working in this field is truly competent on all aspects. I think this board might attract a greater sampling of that subset. I haven’t seen any real evidence to suggest that one side has the advantage in idiocy, but my guess would be that higher salaries might have some effect on the IQ caste. Still the numbers don’t appear too skewed. I keep a box full of truly idiotic statements. Both of attorney responses (I don’t keep pro se responses because they simply don’t know better) and of bad patents that have gone through. Unfortunately I’ll probably never be free to share the contents of that drawer, but I do take out some of the better pages from time to time.

    I only say this because it was stated above that the cure to pendency is to eliminate bad office actions. I agree in part. I think we need to also eliminate bad attorney responses and poorly written claims. Why don’t you create an organization that will review every response that is sent into the office and remove all the bad responses? Then you can retrain the offending attorneys. At the same time I’ll eliminate all the bad office actions and retrain all the examiners. We’ll see which of us achieves that goal first. At the end of the day we’ll have absolutely fixed the problem. About how much time do you think it will take you to fix your side of the issue so I can pass that on to John Doll?

    Attorneys want the most relevant art in the first action… so do I… why don’t you make sure you put forth the most relevant claims in the first action and I can assure you that the most relevant art will follow. Want better rejections and adherence to the law, how about not just sending out trivial amendments when you see the bad rejections. Call the SPE, or the Director, or appeal the rejection to the board until the examiner is forced to do a proper action. Of course it’s more work for you, but you aren’t hourly employees. You are hired to do a job, so work until you finish the job correctly. Stop hiding behind the ‘costs to the client’ every time the issue of appeal comes up. Attorneys are just as much a part of this system as examiners are. They need to start bearing some of the cost of its repair.

    Points, as for the supposed low affirmance rate at the board, your numbers are entirely misleading. Cases that reach the board are generally split evenly between overruling and affirmance. As for what happens before that time, reopening prosecution absolutely does not mean that the examiner was wrong. What it means is that prosecution was reopened. In many of the cases I have witnessed, the case was reopened because the applicant agreed to drop whatever losing issue he had brought up and the examiner also agreed to compact the prosecution by moving forward with the case. This is especially true of allowances after Appeal filing. Many times after receiving a detailed response from examiners, the appeal will be withdrawn and important amendments will be agreed upon by both parties. This often manifests itself as an examiners amendment and allowance. How can this possible be treated as examiner error?

    The only thing that is clear from the record is on cases that are presented to the board. As I said before, these cases are nearly split down the middle. The 20% fiction might gather applause around the water cooler, but is a result of bad statistics and does not reflect well on any party espousing it as fact.

    I tried to explain above that the reason I see so many RCEs (more than any other examiner in my AU) is because of trivial and unrelated amendments. Lets say I get a claim on a watch. The invention is adding a fourth hand to the watch to tell the phase of the moon. I find a similar watch that has a hand for phases of the moon and I item match all elements of the claim. Applicant could amend the claim by adding limitations the moon phase mechanism, but instead I get amendments like the following… Where the watch band is made of rubber. Where the attachment latch of the watch includes a part composed of metal. Where the watch face has a quartz faceplate. These amendments might very well overcome my art, but they are completely cursory to the claimed invention and just force me to apply new art in a 103. I may go through 5 rounds of this before applicants finally run out of money or patience with the current attorney. I understand many examiners will tire of the case and simply allow the claim as amended. But then, as I mentioned above, I get more RCEs than anyone else in my AU. I still put the best art on the record in the first action.

  63. 100

    For God’s sake Schmuck! I’m not sure whether your comments are serious, or you are just pulling our legs, but you don’t have to be a lawyer to gain a basic understanding of the law that YOU apply every day. At least try reading MPEP Chapter 2143. It is, after all, YOUR manual.

  64. 99

    You attorneys are running a really big risk for your clients by threatening to appeal at the drop of a hat. Some, though I do not believe most, examiners will simply allow a case if they are overturned on appeal, rather than apply new art even if it reads on the claims. One time my SPE told me that a primary just allowed a case after being overturned–the SPE was not pleased that more consideration was given. I personally would rather reopen prosecution if the art was good enough, even if I had to “eat” the office action. If a case were allowed without overcoming ALL of the art, it would put them at risk. In my art area, most attorneys make ABSOLUTELY NO effort to distinguish their claims above the art when the claims are first written. You fellas might no patent law better than I do, but I have YEARS experience working with equipment in the real world and I know the art much better than most of you (except for maybe about 10% of you). The examiner might be doing you a favor by making that rejection. Don’t wait until after the first or second RCE to claim what the invention is really about, wasting your and my time, and your clients’ money.

  65. 97

    SPE DS and Examiner Lazarus, thank you for your input.

    I would like to point out that most “older” primary examiners I have dealt with give me a fair shake, and apply the most pertinent art up front. Experience goes a long way. It allows for meaningful amendments and quick disposals (i.e., less “whack a mole”). I also personally know a few SPEs who are dedicated and knowledgeable individuals, but from my experiences, SPEs seem to spend too much of their time in meetings unrelated to review of actions.

    Here is my view from the outside:

    I too was a primary examiner. I left seven years ago because I could no longer see myself making the PTO a lifelong career. While nothing new, I could no longer stomach seeing good work go unnoticed and knuckleheads get promoted over professionals. It beats a man down and drives some batty.

    At the PTO, examiners exist in their own micro-worlds. These mini-worlds shrink even smaller as they are promoted. I understand your defensiveness at some of these posts. It hurts a good performer hearing some of the things being said here. It reminds me of how I felt when Lehman said to the corps, “Get off your high horse!”

    However, prosecutors see a much larger sample of work than any one examiner. After leaving the PTO, I was shocked by actions sent my way. My first thought was, man, why was I was working so hard. After seven years, I can now confidently say that well over 50% of the actions I receive have legally deficient rejections. Also, most fail to adequately address arguments by cherry picking, ignoring or misunderstanding them.

    I’ve been advising colleagues and our clients to appeal soon and more often. I have come to realize appeal is less costly and time consuming than feeding junior examiners RCE counts they do not deserve (an entitlement juniors have come to expect). Nine times out of ten, prosecution is reopened, but examiners usually make a better effort in a next issued action, and supplemental appeal is straightforward.

    As far as solutions to these problems, I would like to see examiners trained by those running the new reexamination unit. I’ve seen very good work from those units. Maybe juniors can spend a week or two having their work reviewed by reexam examiners.

    I offer these general solutions:

    1) Strictly enforce a low actions per disposal average. No awards or bonuses if this is not achieved.

    2) More efforts to bring the most relevant art forward in the first action. In other words, enforce Rule 1.104(b). SPEs can enforce this by random reviews of RCE laden cases. Obviously, an old dead-on patent first cited in a fifth office action is a clue this examiner was deficient. Imagine the cost savings for applicants, and backlog reductions possible, if the most relevant art is cited in the first action!

    3) Hire about 1000 APJ’s to handle the onslaught of cases coming their way.

  66. 96

    Revision of one paragraph from above –

    1. Limitiations in the claims that are there in black and white from day 1 are simply ignored by the examiner. You can see the error on the face of the Office Action – the examiner moves through the claim and matches up the reference to this language, then this, then this … and then skips over a claim phrase. Dead silence. You can see the “click” on paper just like you can hear the “click” of a skip in an LP record. The omission is plain and unmistakeable on its face. This happens in well over a third of all Actions I receive, perhaps about half. It’s almost the rule rather than the exception. If examiners of my applications share your perception that originally-filed claims are overbroad, it’s consistently the examiner’s oversight, not mine.

  67. 95

    AnonExamienr and Lazaurs L – you may well be exceptions. All I can speak to is a statistical aggregate.

    In T.C.’s 3600 and 2100, examiners’ perceptions, if they track yours, are false. The reason examiners’ perceptions are false is because examiners don’t look closely at the facts or the law. At least in my applications, and the applications of the lawyers I supervise, the facts that establish patentability are there from day 1, but most examiners are too sloppy to notice them.

    The examiner’s perception that the claims do not is based on three repeated errors –

    1. Limitiations in the claims that are there in black and white from day 1 are simply ignored by the examiner. You can see the error on the face of the Office Action – the examiner moves through the claim and matches up the reference to this language, then this, then this … and then skips over a claim phrase. Dead silence. You can see the “click” on paper just like you can hear the “click” of a skip in an LP record. The omission is plain and unmistakeable on its face. A 5-second review by ANYONE would instantly reveal the omission.

    2. A failure to “designate portions relied on” and “clearly explain the pertinence” as required by 37 C.F.R. § 1.104(c)(2). Maybe 10% compliance by examiners. Ten years ago, most Actions did both. Now, 95% of Actions only “designate,” never “explain.” The consequence is erroneous examiner perception. If a claim recites an “x” three times with three different properties, often an Action will match up “x” to three different incompatible things in the reference. If Actions consistently followed both requirements of Rule 104, e.g., by giving the name of the corresponding thing from the reference, the examienr would have noticed the mismatch. Instead of pages and pages of bogus analysis, there’d be a very simple Notice of Allowance. Because so few examiners follow the procedural rules these days, hours and hours of examienr time are wasted on bogus Actions. The examiner thinks – erroneously – that the claim didn’t recite patentable subject matter. Wrong. It’s the examiner’s error of sloppy analysis, not the applicant’s.

    3. Refusal to follow the law – or rather, a misguided belief that thier memory of what they learned years ago is so infallible that they need not open that big heavy MPEP to confirm that their memory is right and still current. Here are the errors I get over and over again:

    a. In 30-50% of Actions from 3600, claim limitations are ignored for §§ 102/103 purposes because “descriptive matter.” There is no such law. “Printed matter” can be disregarded in some circumstances, as set forth in MPEP § 2106, but “descriptive matter” can never be disregarded for §§ 102/103 purposes. “Non-functional descriptive matter” is only a § 101 issue. The examiner’s perception that the claim doesn’t recite patentable subject matter is examiner error, not applicant drafting error.

    b. “Functional language.” The doctrine against “functional language” was removed by the 1952 Act. Why does this still show up in 5-10% of Office Actions? This is examiner error, not a failure of the applicant to claim patentable subject matter.

    c. No showing of “reasonable expectation of success” for obviousness. This is omitted from 98% of the § 103 discussions I get (I can remember seeing it only once in the 11 years it’s been required). Because the examiner never thought about “reasonable expectation of success,” the modification the examiner proposes is simply ridiculous. The procedural rule of MPEP § 2143.02 is there for a reason – to force an examiner to think about the way the thing really works, and to keep keep examiners from writing silly rejections. When an examiner doesn’t follow the procedure, the result is – silly – and the examiner’s error, not applicant’s.

    d. Perhaps 10% of § 103 “rejections” follow the following form: “No reference teaches claim limitation ‘x.’ However, it would have been obvious to create an ‘x’ out of thin air because …” There’s no such thing. Never. You have to show *every* element existed somewhere in the art, before you show “motivation to combine” that element. Examiners cannot create something from nothing. Ever.

    e. I haven’t gotten a single § 101 rejection in the last eighteen months that even pretends to follow the Interim Guidelines. Office Actions NEVER identify particular claim language thought to be “abstract,” even when the claim language tracks Lundgren or State Street almost word for word. 0% compliance rate. After making that error, 90% of § 101 Actions ignore claim language like “performed on a computer” or “computer programs stored on a tangible medium.”

    f. At least 30% of second-and-subsequent actions fail to “Answer All Material Traversed,” or fail to provide Rule 104(d)(2) affidavit or reference when “called for” by the applicant, or otherwise just ignore “inconvenient” arguments in applicants’ papers. This is examiner sloppiness and defiance of MPEP requirements, not applicant error. Just today I reviewed a paper prepared by our outside counsel in response to an Advisory Action, signed by an SPE in 3600, that states that he WILL NOT respond to the new arguments presented in our Rule 116 paper. That’s illegal. It makes an appeal very inefficient if we don’s know what the examiner’s position is on the issues. But if the Office insists on playing hide the ball until we appeal, well, we’ll appeal.

    I hear over and over from examiners in interviews “I’m a big picture guy. I don’t worry about details.” That’s horse manure. Claim limitations and MPEP-required analytical steps are not “details” that you can slide over. Overwhelmingly, at least in the applications I see in 2100 and 3600, examiner perceptions that almost no applications recite patentable subject matter reflect examiner sloppiness, not a failure of applications.

    The Supreme Court has often explained “Procedure is the means; full, equal and exact enforcement of substantive law is the end.” Examiners, SPE’s, T.C. Directors, and the Petitions Office disagree with the Supreme Court – they tell me over and over in interviews and formal decisions that “Oh, that’s just procedure. I don’t worry about that.” We all went to engineering school – how often could you get the right answer if you skipped over steps in the analysis? Same thing applies now. The MPEP sets out step-by-step rules. If you don’t do the thinking required by the procedural rules, then your perception of whether claims are patentable or not is almost certainly wrong.

    Procedural law is just as much “law” as any other. I’m continually shocked at the PTO’s uniform position, in informal telephone interviews and formal decisions on petition, that the MPEP, and the Supreme Court’s and Director’s own published procedural decisons can all go screw off.

    Again, AnonExamienr and Lazarus L, you may well be exceptions. I have no way to know. But overwhelmingly, the reason your peers are drowning in rework is because their first, and often second, third, fourth, fifth, and sixth, Actions were so procedurally sloppy. The 20% affirmance rate on appeal (when you combine Pre-Appeal, Appeal Conf, and final Board reversals) and examiners’, SPE’s, and Asst Comm’r for Patent Examination Policy’s own statements that they ignore “details” and “just procedure” give independent confirmation to my perceptions of where the fault lies, not yours.

    (I haven’t done any mailbox prosecution for foreign clients for years. Back when I did do this kind of work, I remember being singularly unimpressed with the instructions I received from my French and Japanese instructing counsel. This may well be the mirror image situation – since foreign instructing counsel isn’t actually writing the Reply, they may well be making the same error as the typical examiner, not thoroughly thinking through a position, because they are not writing their analysis down. But I haven’t done this kind of work since I was very junior – hard to know at years’ distance.)

    The solution to the PTO’s rework problems is already on the books: start to follow the existing procedural rules that require complete thought, set out on paper. Do that, and the backlog will disappear. If the examiner is right, it’s easy to see if it’s explained. A claim amendment happens. If the examienr is wrong, once the error is set to paper, it’s easy to diagnose the error, and file a corrective Affidavit or direct the examienr to the appropriate section of the MPEP.

    If the PTO adopts the proposed rules, and continues its practice of refusing to follow or enforce rules that put responsibilities on examiners, the backlog will get worse. When the examiner is silent in a first action, or fails to answer all material traversed in subsequent actions, or insists that his memory is more reliable than the MPEP on what the law is, nothing can make progress.

    P.S. Lazarus L, in the one case where I got an “allowance where I know the claims aren’t allowable” I withdrew the case from issue to address a reference that popped up at the last minute. Other than that, it hasn’t happened. Everyone I know of (and again, I don’t do foreign mailbox work, and I can’t speak for anyone other than the 20 or so attorneys I work with and supervise) values the vailidity of their patents enough to pay enough attention to their claims and references that this doesn’t happen.

  68. 94

    If anyone thinks there is no pendency problem related to RCEs, that is not the case. I have been at the office around two years. In the last six months (since the beginning of the fiscal year) most of my counts have come from a handful of allowances, a bunch of abandonments, a slew of PCTs (Ch. 1 & 2), and a slew of express abandonments on RCEs, and the same number of first actions on RCEs. During this time I was promoted (9 to 11) with higher production. In my art area, RCEs are pretty much automatic. 2nds or 3rds are pretty common. I have done maybe five or six “new” cases since the beginning of the fiscal year, and I am still well over 100% (slightly less than 110). Something HAS to be done about pendency. If the rules package is shot down by some applicant suing the office, I may call my congressman and ask for it to to be enacted into statute.
    Frustrated Examiner

  69. 93

    A quick question for all of you lawyers:

    If you get an allowance where you “know” the claims claims are not allowable do you ever complain to the office or file a response saying that the claims are too broad and should not have been allowed? (I know that you only recieve bad rejections and not bad allowances, 🙂 but just suppose). I would like serious responses as this is not a rhetorical question.


  70. 92

    As an intro, I’ve been at the PTO for over 20 years. I think I regualrly do a good job. Attorneys have told me this, my ratings back it up, I’ve never had a QR kickback or one of my cases go to re-exam because of litigation (not ecen aware of any that have been overturned in litigation) I’ll get to my comments below.

    Firstly, go back and read the post by AnonExaminer from Apr 13, 2007 at 02:36 AM. It very clearly lays out the issues the the PTO faces.

    Now, instead of the stuff you lawyers have been posting here, how about realizing that while the office has serious problems, YOU ALL are ALSO part of the problem. Too often, we see cases where (even after 3 years) no one has ever reviewed the claims on the applicant side to correct even simple things like bad translations or misspellings. And then there are the claims that read on prior art that is 30-40 years old (in the elcertical arts!). Don’t the rules/laws state the claims should begin with the “broadest that the applicant thinks that they are entitled to”? Do you really think that you are entitled to something that reads on art older than you are?

    A 2nd issue is the disappearance of rule 56. We often (usually?) see cases where the applicant has realted patents or articels that are only brought to the attention of the examiner after allwoance (if then). Applicant/lawyers do EVERYTHING that they can (ethical or not in my opinion) to hide their invention and what the relevant prior art is. Most do not seem really interested in getting a “valid” patent but are more interested in getting the broadest claims that they can get by the examiner. It has to be a TWO-WAY street. Try claiming something that is at least CLOSE to what your inventyion is.

    With that venting out of the way, I, and most of the people that I work with in my part of teh PTO really do try to do as good as we can in the very limited time & limited resources we have. Are we all perfect? No? Are any of you? No, but you all write like you are. It makes me, and many other good examiners, to want to say “F$%@ it”. If we are going to be continually told we are doing a bad job by people who really have totally different goals and resources (you lawyers), why should we try to do a good job? We get little help from lawyers in establishing a good file history and a valid patent. Mostly, amendments are are more cosmetic or just barely enough to overcome the applied rejection without looking at the other refereces I cite which show what you added.

    OK, maybe I wasn’t done venting 🙂 As to some of the issues raised in other posts:
    1) having examienrs in other parts of the county – Law offices still pay a lot more so 20-50K extra in DC or Omaha is still 20-50K extra. Moving places does not change that.

    2) Putting people with 15-20 years experience in the PTO in charge – John Doll & Peggy F. (as well as others) have come up through the ranks from examiners. We already have this. And, I think that they are trying to do the best possible with a toght situation.

    3) Give examiners more time for cases cases with more claims (or more time in general) – Tht would help some in quality. However, are you willing to wait even longer to get your application examined. More time/case means longer until the next case is reviewed.

    4) SPEs not reviewing cases properly – With an average SPE having maybe 8-12 newer examiners (at least in the electrical areas), each maybe doing 8-12+ cases each PP (2 weeks), if each case was only given ONE hour of careful review (checking the references, checking citations, checking each limitation of maybe 50-100 claims,each with 3-5-10+ limitaitons) we would already total OVER 80 for 2 weeks. Plus all of the other duties of the SPE, 1-on-1 training with the examiners, meetings, interview, etc. does not leave much time for sleep & food. Again, what sounds good in a vaccume is not always practical in real life.

    5) Only examining 10 claims & making more than 1 continuation more difficult is not fair to applicant (various reasons) – maybe a little, but not as bad as being made out here. Limiting the # of continuations will help to focus the claims & (hopefully) get to the real point of novelty being claimed sooner. Limiting the # of claims reviewed will help quality as fewer claims to examine means examiners can more carefully review those 10 claims & not really have to worry about the other 100 claims.

    6) Some examiners can not speak English well enough to have an interview – Firstly, this is biggoted & disrespectful. Do all examiners have English as their 1st language? No? Do all lawyers? No? It goes both ways. Please keep that in mind. ‘Nuff said on that.

    7) DOE issues – Yes this is a concern of yours (applicants/lawyers). Examiners do not care as it does not directly impact how we examiner claims. If you do not want to have to amend your claims because of DOE limitaiton fears, write your initial claims better. Too often, if looks like little thought has gone into some of the claims we see.

    8) Examiners don’t know the law – True, most examiners do not have law degrees. However, most lawyers do not understand the technology. I have, all too often, had interviews where the lawyer could not explain the invention or what claimed eleemtns correspond to what elements in the figures because they did not understand their own invention. If the lwayer does not understand the invention, how can they properly determine what should or should not be claimed? Maybe to prosecute before the PTO, agents/laywers should also have a degree in the art they are working to make them at least POSITA? 🙂 Maybe only another 4-12 years of schooling, depending on the art.

    9) MY SOLUTIONS? Just a few ideas, not complete:
    a) rule changes like proposed;
    b) applicant being required to cite their own related prior art;
    c) mandate preliminary amendments to “clean up” cases that have foreign priority;
    d) More cooperation from lawyers/applicants to make clear what their invention is and how it distinguishes from the prior art;
    e) help from the courts in punishing “patent trolls” and guidelines in what is sufficint to make rejections and other similar issues.

    Longer than I planned, but some things needed to be said. Bottom-line, it is a 2 way street & the lawyers (and applicants) are part of teh problem & need to help in the colutions. Thanks.


  71. 91

    Wow, interesting thread here. I’m one of those SPE’s noted above who apparently isn’t properly trained and/or is signing cases with my blindfold on, so maybe I have nos tanding here, but what the heck.

    As was mentioned before, and pretty much agreed to by most, hiring our way out of the backlog isn’t the perfect solution, if it is one. It may pay off down the road (5-10 years), but right now, it is just taxing us to the limit. I have 7 new examiners coming into my unit this year from the training academy. This puts a strain on my primaries to provide help in the art areas, and on me to provide proper training in everything else. Unbelievably, I still train my examiners in the poper way to do things.

    Personally, I am very customer oriented, and try and get my examiners to bend over backwards to help out whenever they can.

    When they announced the new rules package last year, I made it a point to let the examiners know that this will put a premium on finding the best art and doing the best job the first time (I know this sounds like a “duh” statement, but you all know the drill). I push my examiners to find the art closest to the actual invention rather than just covering the claims so that any amendments overcoming the rejection(s) would necessarily place the case into condition for allowance. This is the criteria for outstanding in their PAPs, and I hold them to it.

    Do we make mistakes? You bet. But to think that we jsut don’t give a damn and send out any old crap to get the counts is paiting with a mighty broad brush. I am proud of most of my examiners’ work, and the ones that don’t get the job done are held accountable.

    As to hiring and pay, you all do know that the examiners make a very nice entry salary, including subastantial bonuses for EE’s and Comp Eng’s? Sure, they may be able to make more in the private sector, but I think the increased workloads and hours they would have to work would make that pay increase seem awfully small. Plus, the outstanding flexibility of the work schedule, the chance to work from home (increasing amounts of examiners work from home every year) and the ability to earn bonuses and raises with regularity should be very enticing.

    Sorry for the incoherent rambling. Alot of posts above and my thoughts should have been more cohesive when responding. Will take notes next time. 🙂

  72. 90

    “Points” hits it pretty square on the head. The quality of of office actions I’ve seen over the last few years is, with a few exceptions, pretty dismal, and getting even more disturbing over the last six months or so. I don’t know if it’s fundamental breakdown in training or supervision (turnover?) or a blowback from some political agenda within the PTO. The latest kick seems to be automatic Section 101 rejections that are just pure nonsense. I also see churning successions of non-final actions. I’m beginning to refer to my docket as the “Quagmire” or “Iraq Docket.” You can get in, but I’ll be damned if you can get out.

    All that said, however, I really wonder if there is that much that can be done to improve PTO quality that will be cost effective. Sure, you could have experienced patent prosecutors examine each application, spend days conducting prior art searches and analyzing each claim meticulously, but would it be worth it for the run-of-the mill case? I think we may just be asking too much of what may be a model that has been rendered antiquated by the pace of technology and the volumes of applications. Generally, it’s going to take more than tweaks to the PTO, maybe structural changes to the patent system, stuff like presumption of validity. I shudder when I think that the fate of a multimillion dollar invention rests on an overworked, underesourced and undertrained examiner. I equally shudder when I think of the risks to a client arising from a patent allowed by the same examiner.

  73. 89

    AnonExaminer writes “You can’t hire more than 15% of your workforce per year,” …

    I agree there’s an upper bound, but 15% is too low. For example the most successful law firms in New York have new-hire rates of 20-25% per year.

    AnonExaminer writes “DOE [Doctrine of Equivalents] protects those same inventions when appropriately applied.”

    You’ve put your finger on one key issue. You’re absolutely correct, that examination/prosecution could be much simplified if the law didn’t require me to provide literal coverage of every atom of the invention, if I could rely on doctrine of equivalents.

    However, under current law, another principle is thought to be more important: competitors must have certainty, so that they know what they can do to design around a patent. From my practice representing defendants in litigation and representing those trying to avoid infringing, I have to agree with the latter view – in the early 1990’s, much more economic harm was being done by a broader, vaguer doctrine of equivalents, than is imposed in prosecution costs now. Current law is probably the better balance.

    Patent applications are getting more complicated for two reasons: (a) inventions are getting more complicated, and (b) the legal obligations of a patent are getting more complicated. These two facts create costs, but not fault. This is what the law is, and what the law should be. We all have to acknowledge this inconvenient truth and plan for it.


    Where I part company with PTO management is whether the PTO should adopt a solution that reduces *global* patent costs (my view), or whether it should adopt a solution that saves the PTO some money while raising business costs by 4X-10X as much, when the PTO has done nothing to analyze where its costs are coming from (I personally asked John Doll if any such analysis had been done, and he said “No.”). Last summer’s estimates by the PTO were for savings of about $150 million per year. The costs estimated in the Notices of Proposed Rulemaking are about $900 million per year (2.7 and 2.8 million hours each for each of the three proposals, at average rate of about $300/hour.) That’s just for the paperwork costs – the PTO didn’t even try to estimate the destruction of business value or additional litigation costs created by the rules.

  74. 88

    Open and frank discussion with the Examiner is almost always a positive event that quickly moves the prosecution forward.

    We always request a telephone conversation with the Examiner as standard practice.

    Unfortunately… it is the rare exception when the Examiner assigned to any of our applications is able to speak English well enough to engage in a meaningful conversation.

  75. 87

    jphudy you wrote:

    “Stick to the fact that there can’t be more examiners; then, give some of your own ideas to fix the backlog problem.”

    Here you go:
    1) Have the examiner call the applicant/attorney BEFORE the OA and find out what the invention is really about. (Reduces keyword pro forma rejections.)

    2) Send out email/smail notices to the “backlog” and ask for voluntary abandonment. Many of my .coms are dead and I know their applications are going dead and there is no need for an exam.

  76. 86

    Just to be clear, I never said I was leaving 10% of our inventions on the table for others.

    I was saying that we have a 90% chance of capturing our competition on a reasonable number of bulletproof claims.

  77. 85

    “Know the invention, know the most relevant art, don’t write claims so broad that they read on said art, and examination becomes a formality.”

    True in theory, false in practice. In over 30% of the Actions I get, the examiner is dead silent on at least one limitation of each independent claim. In at least 80% of all “rejections” I get, the examiner is dead silent on at least one legal element that the MPEP says “must” be considered, or the Action states a proposition of law that exists nowhere in any written document (except, often, a case or MPEP section that says expressly that the examiner’s proposition is NOT the law). I’m not counting the cases where the Action says something silly, or applies the law in a way I disagree with. I’m only counting Actions that are dead silent on a legal element or claim limitation that’s there in black and white, big as a barn, or engages in pure legal fictionalization.

    This week I responded to an Action in which the examiner gave the brush-off to 12 claims with ONE cite, to a 5 column chunk of a reference (no pin cite to anything). No element-by-element comparison to any individual limitation. No consideration whatsoever of the 11 dependent claims, just a pro forma statement that they were rejected. In a phone interview (I had given the examiner an express heads up to the issue I wanted to discuss), I asked “So what’s your view on these last 7 words of the claim?” Long silence in reply. He had simply ignored the claim words, both in the original Action, and in preparing the interview.

    The reason the PTO does so much “rework” is because so much of its initial work is so incomplete. The solution to the PTO’s backlog and rework problem today is the same as the solution Ford, GM and Chrysler had to learn 20 years ago – if you do a lousy job the first time, it’s awfully expensive to fix it down the line. Your expenses arising from your defects are not your customers’ fault.

    The current “compact prosecution” rules, at least examination of claims and continuations, are pretty close to right. The PTO’s problem arises largely from their refusal to follow or enforce their half of them. The PTO has an institutional policy of anarchy, where the agency heads state in formal papers that examiners have “freedom to independently decide” what rules they’ll follow, which they’ll ignore, and which they’ll make up, and reward them for breaking them.

  78. 84

    One could save himself or herself lots of time by just reading Points to Ponder’s comments. They’re really good.

    As for the suggestion of other posters that the USPTO cannot hire itself out of the backlog problem, that’s correct. But they can hire *and* retain themselves out of much of the problem.

    To do that, the USPTO would have to shift their paradigm from being a government agency to being a private entity that must compete with other private entities (that is, the law firms that would pay more money for agents than the patent office does for examiners). First, double or triple the filing, examination and/or search fees and allocate all that money to increased pay for the examiners. Second, create satellite offices in cities where this increased pay will create “golden handcuffs” that keeps examiners from leaving. As a side benefit, the double or triple fees will deter knee-jerk filing of initial applications and continuing applications.

    Other steps could be taken as well as part of a compromise. The USPTO could (1) require applicants to perform patentability searches; (2) require applicants to provide an analysis of the references after the first continuation; and (3) provide for deferred examination, with some sort of protection against prosecution laches, to allow applicants to have the benefit of keeping a continuation pending without burdening the office with repetitive claims.

  79. 83

    To everyone complaining about the quality of examination and under-trained or irrational examiners:

    Know the invention, know the most relevant art, don’t write claims so broad that they read on said art, and examination becomes a formality.

    After all, who is prosecuting the application, the examiner or the attorney?

  80. 82

    Just out of curiosity… If Joe Inventor really wants deferred examination, why do I always get at response to my 1st office action? Most FOAM’s don’t come until 3-4 years after filing. Yet, I’ve never seen one that was abandoned without at least responding to the 1st action. Do you really think that waiting another 1 or so will make the difference?

    I’m not against the idea – it actually sounds pretty good. But, will it really work?

  81. 81

    You are my hero Points to Ponder. I will gladly fight side-by-side with you in battle any day.

  82. 80

    (1) Does the alleged news of the proposed continuation rules being dropped off at the OMB for approval means their implementation is imminent?

    (2) Also, can someone please explain what is the procedure for implementing new rules at the USPTO under US law? (does it have to be passed by the US Congress?)What is the process for challenging the propsed continuation practice?

  83. 79

    Answers to MaxDrei (Apr 13, 2007 at 01:52 AM)

    1) How many words does it take, you to get across your inventive concept, to one in your peer group? Not 250 pages of text, I suppose.

    For this group of inventions, about 250 pages. I was a very experienced engineer in the field (I lectured on a related topic at M.I.T.), and this is what I thought it took to communicate the inventions to me. There is very little “fat” in my specifications. Take a look at 7,065,633. (Now that I’m in-house, I fire lawyers that give me 1 page of real disclosure and 15 pages of boilerplate.)

    2) Isn’t the intended reader of a US patent the PHOSITA?

    That’s the legal fiction. And if you believe the fiction, you’re deluding yourself, and not representing the client. The audience for a patent is a federal judge, who studied history or political science, not engineering. He has about 1/2 – 1 day assistance from the two sides’ experts – about the equivalent of a week of college studies.

    3)Aren’t the courts everywhere else in the world looking at a patent in suit with the knowledge of the PHOSITA?

    You are corect, that the person that makes the decison about the money is a court. A court with a history or political science degree. Very very few courts have the knowledge of the PHOSITA.

    4) How much bulk does that pointless little US speciality “Best Mode” add?

    In almost all cases, “best mode” requires only a few sentences. When you have related, intertwined inventions, then “best mode” simply means you have to keep the specifications together, not that you have to add anything.

    How much does “best mode” cut out of the costs of litigation? Much more, because if the spec fully discloses the invention, including best mode, there’s much less vagueness. Have you ever tried to litigate a patent that was originally written by a Japanese lawyer?

    5) How much of the claim bulk is irreducible minimum, and how much only because today’s US patent system is an arcane game, incomprehensible to the intelligent layman, played out as described by Charles Dickens in London 150 years ago.

    What does this quesiton even mean, when the premise is a counter-factual? Claims of U.S. patents are interpreted by U.S. courts under U.S. law as it is, not as Dickens might have wished it to be. My claims are an “irreducable minimum” to meet the economic goals of my clients under those requirements.

    6) How many claims are in your apps outside USA

    I file my PCT’s with about the same number of claims. The PCT rules provide that if I get them examined by the PCT, no national office can later divide.

    7) What evidence do you have, that the abbreviated foreign claims set is inadequate or ineffective?

    I am not licensed to opine under foreign law, and the question isn’t relevant to this thread. We’re discussing purely U.S. practice under U.S. law.

    8) Do you want the US patent system to be reformed?

    Can you elaborate the question?

    Of course I want the U.S. Patent Office to be reformed.

    I never want to hear again from an examiner, “I don’t have to read the MPEP. I’ve been here x years, no one has ever informed me of this point before, and I don’t have to do it now.” I hear that, almost word for word, in over 20% of my interviews.

    I don’t want another experience where a T.C. Director tells me on the phone and in writing that he makes up the rules as he goes, that he won’t read the Director’s published instructions to find out what his duties are, and “it cannot be seen” why the Federal Circuit’s decisions on procedural law have any bearing.

    Instead of enforcing the rules, the Patent Office affirmatively rewards examiners who short cut to disposal by simply ignoring the rules. T.C. Directors recognize that enforcing the rules would cut their production numbers and compensation – so they don’t.

    Reform the Office’s general disrespect for the rule of law, put incentives in place for examiners to follow the Office’s “compact prosecution” rules, and the Office’s backlog will disappear very quickly.

    If someone high up in the Office emails me, I’ll call you back to give you the names of examiners and the T.C. Director who need to be sent to “re-education camp,” and who are not there to help you carry out your oath to “see that the laws are faithfully exectued.”

  84. 78

    I wholeheartedly agree that deferred examination is the only way to truly put a dent in the backlog so that the other issues troubling the PTO can be brought to the forefront. I suspect that my primary clients (large multinational corps.) would leap at the chance to not trouble the office with examination of at least 20-30 percent of the applications that I file. Moreover, they would likely love to defer that decision for five years rather than three and the numbers would go up further. I has been estimated that something less than about 10 percent of patented inventions ever make money, so why on earth examine all of them! The rest of the world doesn’t!

    While I’m talking, I suggest that any inventors reading this whose attorney or agent says 10 claims is enough to protect any invention should be looking for another attorney or agent.

  85. 77

    How much bulk does that pointless little US speciality “Best Mode” add?

    “Best mode” is a fundamental requirement in nearly every patent system around the world. It is part of the trade off between the government and the inventor by which the government grants a monopoly to the inventor in return for the secrets to the invention. Without disclosing the Best Mode, the inventor is not keeping their side of the bargain.

  86. 76

    Yes, deferred examination would be a significant way to reduce the USPTO backlog. And it would save applicant’s money.

    In my experience, 20% of the international applications we file are abandoned prior to requesting substantive examination. The product changes or for some reason never goes to production.

    The extra 3 years between filing and the request for examination deadline provides lots of time for an invention’s potential to be more fully appreciated.

    Seems win-win. The application would be published, so competitors can see what might be on the horizon, no hidden “gotcha” downside.

    Why isn’t deferred examination being debated / proposed?

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    You are right; other countries also have deferred examination (if I am not mistaken, I believe Japan has deferred examination).

    The problem is that BSA executives would whine to the business press and would fund lobbyists (i.e. to lobby congress) and would fund law school professors (i.e. to lobby the court system).

    Their claim would be that by allowing deferred examination this increases the time period of uncertainty about what products of theirs infringe.

    On a personal note, many of my small inventor clients would LOVE deferred examination – they want to POSTPONE expenses – by postponing office actions, they are postponing the need to pay agent/attorney fees for OA responses, postponing the need for RCEs, postponing the need to pay for inevitable appeals, etc etc etc.

    Given the climate today and the ‘sky is falling’ constant drumbeat against patents (i.e. in the NYTimes, businessweek, etc etc), I find it hard to believe that any of the Bushies in the USPTO would prefer small inventors over BSA corporations and their ilk.

    Don’t look to congress for help either – Lamar Smith and Berman and Orren Hatch and the others are too eager to receive donations from BSA corporations to do anything to help small inventors.



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    Wow, the fact that this thread continued all thru the night may say something about the workload in our field!

    Anyway, if I remember correctly, the rule does not prevent more than 10 claims, it only prevents the examination of more than 10 claims. i.e., remaining claims are dependent and are allowable because one of their parent 10 claims are allowable. It’s somewhat rare to have greater than 10 indep. claims in a case, anyway. With as many dependent claims as you can pay for, I don’t think that clients must leave their inventions out on the table with no protection.

    The reduction in examination time here could be a great benefit. Can you imagine how long it takes to make a lock-tight prima facie case for 60-80, -100 dependent claims which are each arbitrary (in a novelty sense). I’ve got about 9 hours to do a 1st action and I have to find a dozen references just for silly (pardon me) dependent claims (i.e. wherein the oscillator is a crystal oscillator, wherein the oscillator is a voltage controlled oscillator, wherein the oscillator is contained in a phase locked loop, delay locked loop, … etc.) It’s not just a matter of finding the reference, either. I have to come up with some semblance of motivation to combine. IMO, give me a break!!

    Moshe does have a great point about hiring in a city that is not DC. As far as engineers go, DC already has a dried up labor force and most new hires need to be imported. But, DC is not the most inviting place to live. Many more positions would “stick” if they were outside DC.

    AnonExaminer is right on with respect to the fact that hiring soo many new examiners is just not feasible. I’ve been around for 4 years and, at this point, my SPE can barely breathe – there are so many new hires hounding him.

    Besides the fact that, this is just not the line of work that most engineers want to do. When I first took this job, one of the entrants in my group asked my SPE when we were going “down to the lab” to “check it out”. Needless to say, she’s gone now.

    Couple the distaste for the work with a high learning curve and , in some cases, supervisors that “force” their junior examiners to make 101 and 103 rejections which are completely contrary to the body of law just to “put it on the record”; and – examiners drop like flies. They barely have time to make proper rejections let alone legally erroneous ones. IMO, the halflife of new hires is 1 year.

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    The PTO now offers accelerated examination, why not a deferred examination option? I see many cases where the inventors/companies are in a hurry to get a filing date, but still don’t know what the product is or if there ever will be one. A lot of these cases are the ones that wind up in continued prosecution or as continuations (“sorry, we claimed the wrong thing because we didn’t know at the time that only one of the 25 embodiments would actually pan out”). It seems to me that such an option would at least make a dent in the backlog. In at least some cases, the deferral would wind up being an abandonment – but the PTO would have already collected their fees and the applicant would preserve their filing date for those inventions that they eventually want to go forward with. Applications that are really not ready for examination could be allowed to incubate while additional data or funds are accumulated. Plus, by the time an applicant chooses to go forward with the application, there may already have been some foreign prosecution, which would amount to de facto outsourcing. Seems to me this would be a win-win.

  90. 72

    Thank you for your comment.
    You wrote:
    “Also, while I think the upfront cost might be greater to inventors (it would for instance include the cost of a limited search and more time to draft claims) I believe the end result might be cheaper”

    As someone who has worked with many small clients, I tell you (in electronics/sw probably less so in mechanical) that upfront costs is the name of the game. Many times the commerical viability of the invention will only be known later (I assume that this is also true for pharma/biotech). Many times the inventor will need time to raise $$ and the upfront cost (i.e. before investment) are the ones that really hurt the most.

    With many inventors, the name of the game is:
    a) get a date without sacrificing claim scope;
    b) pushing back as many costs as possible.

    Thus, a situation where total costs are redced but upfront costs are increased (maybe substantially) wil be VERY BAD for most small inventors.


  91. 71

    Ok, last one for a while and I’ll stop hijacking this thread.

    AnonAgent, I was actually talking about Pro Se applicants when I said that. But also inventions on the margin. Further, the cost of examination is spread across the lifespan cost of a patent. We don’t really do any more work for those patent continuation fees. So the total cost is really substaintially greater. More like 4k for a 20 year patent small entity. Increasing that number 3 fold would start to make a serious dent.

    Also, while I think the upfront cost might be greater to inventors (it would for instance include the cost of a limited search and more time to draft claims) I believe the end result might be cheaper. If my guess is right, and limited bites of the apple force applicants into writing more limited claims at the start, the process should require less actions. A shift towards broader interpretating of DOE and less requirements on literal infringement would also streamline prosecution and perhaps lower applicant cost.

    The cost now, including multiple continuations and often multiple patents strung over several years to grab additional subject matter defensively is certainly a high one as well. And attorney fees are high in that instance as well.

    I don’t think it’s really possible to predict how it would all shake out. Too much depends on the courts, applicants, and the final form of the new rules. But I do have some faith in the market. Given the chance, it will adjust.

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    I think limiting the number of examination steps would absolutely force a change in application and claim presentation. Also, I think it’s more than pin citing. I think it’s claim writing and more precisely focusing examination earlier in the process. This runs counter to the belief that one should maximize scope at all cost, but this would be one of the sacrifices I mentioned above that must be made.

    Also, I don’t agree that the system can’t be changed. The USPTO is the 800-pound gorilla in the room. There is far too much money involved for the players to ignore any changes it makes. I think any substantial changes to the claims would propagate many levels, both to the US courts and beyond.


    I don’t have numbers for those across the pond, but as to your other points the main problem is that the competition is doing the same things. Firms are a little behind the PTO in work-at-home or flexible schedule, but not much. One party on the dark side recently tried to seduce me over with a promise of 50+% work-at-home and complete flexible schedule. Plus all the other extras, business casual, benefits, and several things the government can’t offer (substantial bonuses, lavish parties, potential equity offer, no commitment law school payment, ect…) The more people that come out of the office with this new lifestyle expectation, the more I expect those changes to propagate even further.

  93. 69

    You wrote:
    “We can also expect a 3-fold increase in fees. Do your clients want to spend 3 times as much? How about small inventors? Is this the end to small inventor?”

    “Raising the entry cost pushes out small inventors. The desire is not to have a perfect system, one simply doesn’t exist. ”

    First of all, as an agent who represents many small inventors, I am deeply touched by your empathy – it is nice to know that you are limiting my clients’ ability to get patent protection for their ‘own good.’

    More seriously, the extra burden imposed by the rules will require MORE attorney/agent time for more searches, more appeals, more ‘defensive driving’ when drafting the application, etc etc etc etc.

    Today it costs about $500(give or take – I didn’t look up the exact number) to file for a small entity plus 100 bucks an independent claim $25 a dependent claim. Drafting the application typically will cost (using round numbers) about, say $4,000 – 5,000.
    Thus, USPTO fees are a SMALL PERCENTAGE of the cost to small inventors. The REAL COST for small inventors is agent/attorney time.
    The new rules will cause the price of seeking patent protection to INCREASE – in many cases this will be the practitioner protecting himself/herself from possible malpractice situations related to the limited number of RCEs.

    It seems that your argument may only be relevant for the pro se applicant – the overwhelming majority of small inventors only stand to lose.

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    It’s not only an issue of not having anyone to hire, the issue is being unable to train more examiners and the vast diminishing capacity of the office to run while trying to train the new examiners.

    The office has long recruited outside of traditional age ranges. In my starting class of 14, 6 of the new examiners were at least 40 years of age. Of course, of those original 14 only 3 still work at the office, including none of those 6 older workers. Since I roomed with one of the older workers for a while I think I can uniquely state why success wasn’t more forthcoming. While he had a greater understanding of the art, he had absolutely no desire to train for 2 years and learn an entirely new field (law) at this point in his life. I imagine the same was also true of the other examiners. Partly due to the complexity of the field (the uniqueness of the law/tech duality) and party due to economic realities of a high demand field, the office has a tremendously high turnover rate in new examiners. Unfortunately this only amplifies the pendency problem with so much examining time is allocated from senior examiners to train these short-term employees.

    With regards to hiring outside of the area, this is certainly in the pipeline. The office initially considered satellite offices across the country, but with the advancing technology and ability to telework, those plans have probably been terminated. I imagine in the near future employees will be able to work wherever they have an Internet connection, including anywhere in the US (this is already being piloted by members of the BPAI). But the limitations on training will still exist. There is an ideal ratio of experienced to junior examiners that really can’t be overcome. Unless attrition is drastically reduced, it will be many years before a substantial gain in prosecution ability is really materialized. The office is already mandated by congress to hire 1000 examiners every year over a five-year period. This is already more examiners than can realistically be properly trained and integrated. I can’t really imagine more people being brought on at this time.

    Of course, it would be easier to train people for more narrow tasks (just search for instance) and this was an idea that was floated to help hire more people… but it was a non-starter for quality reasons.

    So to sum up… several things prevent the office from hiring enough examiners to solve the problem.

    I should point out one thing… it’s absolutely possible that at some point the office could catch up and any changes that have taken place in the meantime could be rolled back. But that remains to be seen.

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    If you can’t pay examiners what they might be able to get outside, aren’t there other ways in which they can be rewarded that would make up for this? Make the office a more congenial place to be, make home working easy for those that want to, allow flexibility in schedules/location, part-time working, offer creches, ease up on targets (possible if there are more people to do the work) to allow time to do a proper job and increase job satisfaction, etc. Perhaps these types of things are already provided, but there are many people who are willing to trade a few $$$ for a better work-life balance and a fun workplace.

    How do EPO retention rates compare to the USPTO, and -if they are better – what do they do differently?

  96. 66


    I can not believe that you cannot hire enough Examiners with US tech workers having their jobs outsorced to China/India and age discrimination hurting those over 40 – the gov’t hacks are too lazy to ‘think outside of the box.’

    Thus, I propose the following:

    In terms of $$$ for hiring new examiners, I know it’s been mentioned before (and is almost cliched) but:
    In Kansas City or Mobile, AL or Memphis, TN, etc etc the Examiner’s salary goes a long way (even after adjusting down – the COL adjustments tend to be smaller than the REAL COL differences) – then you can attract better (and more) people.

    Also, make an effort to RECRUIT OLDER ENGINEERS – it is not a secret that age discrimnation is an issue today ESPECIALLY IN SOFTWARE/COMPUTERS where over 40 is considered (erroneously) ‘over the hill.’

    a) these are the fields PRECISELY where there is the greatest shortage;
    b) older engineers are PRECISELY the type of people who have the years of experience with prior art (as opposed to newbies out of school) that is necessary in the software arts where greater knowledge of non-patent prior art is more important.

    Of course this will not happen because government hacks using the USPTO as a stepping stone for someting else want to be in DC where ‘the action is’ – thus, they put their own career ambitions over the public good. Being in Mobile , AL or Kansas City will put them ‘on the periphery’ of jockeying for goodies.

  97. 65

    A thought-provoking post, AnonExaminer.

    Examining time per application won’t be getting any better in the future it seems, thus you poist:


    If examiners can’t spend more time for examination, and more work is needed to meet a minimum bar of quality, then shift some of the burden of examination back to the private realm where resources far outstrip the office.
    Force inventors to more clearly articulate their inventions and direct their claims towards a scope more consistent with those inventions.
    Change the way the system currently proceeds with patent suits.”

    Option 3 won’t be happening – patents are part of the global economy, and indeed, the oldest multinational treatied activity going.
    Option 1 is already happening, at least in some places – but this is just really reshuffling “reponsibility” around, rather than actually making nay substantial change.
    Thus we turn to option – which brings us to the pin-citing thread of a couple of days ago. IMO it makes a lot of sense – but it seems a lot of patent attorneys would rather put their hands into boiling oil than actually help the examination process along by tying themselves down with useful prior art citations. But that’s only logical if the system encourages them to do so. And let’s face it, examination systems (and in this day and age, even the US of A can’t continue to do things in splendid isolation) are de facto adversarial, even if they isn’t supposed to be. So… what should we be doing to further encourage people to do their own prior art searches, for example?

    Regards, Luke Ueda-Sarson

  98. 64

    From other threads my reputation as a long writer will probably proceed me… but if not, consider yourself warned.
    I realize this is mostly a thread for lawyers to rant, but in case anyone is actually taking any of this seriously, there are some points to consider.

    Solutions to problems often by their nature require compromise. At this point, under the current system, filed applications are growing at a rate that threatens to overwhelm the PTO. Pendency has increased to sometimes ridiculous levels where patents are allowed up to 10 years after filing. This does not serve to put the public on notice of what is and is not in the public domain. What is your real solution?

    From the suggestions posted above:
    1) Stop diverting funds from the PTO
    3) HIRE MORE EXAMINERS!!!!! If the PTO has to pay more to attract quality examiners, then I don’t have a problem with it.
    5) Give examiners REAL TRAINING.
    Fine, but the PTO has nothing more to spend the funds on at this point. They have money allocated to hire examiners but can’t find enough qualified people to hire. They are hiring 1000 new examiners every year. That’s over half of the workforce in 3-4 years. Do you know any corporation that has done this and maintained any semblance of quality? Any examples at all? If Ford went out and hired 50% of their workforce in a 3 year period with absolutely no previous experience, would their cars even run off the assembly line? They had to create a separate training facility to train all the new examiners outside of their specific field. This moves away from the more 1 on 1 training examiners have received in the past to a teacher classroom setting used now. They didn’t have a choice on this step, they simply don’t have enough examiners to train the new examiners. New examiners often require 2 full years of assistance to gain real autonomy. In growing areas of the art, junior examiners out number primaries 4-1 or more. How can the office hire more people? Isn’t it counter productive to quality to grow a workforce this fast? And how can the office spend more time on training? New examiners are already in the academy for 8 months before entering their actual art unit. How many other American companies can afford to hire college graduates and then send them to a training academy for their first year with the company? Further, after training new examiners they can then earn 20-30k more by working as agents. How can the office ever compete with that type of salary? Examiners already earn more than other government workers at the same grade level, but a 20-30k raise would be absolutely out of the question. It would never be a political reality. And even if it were, examiners are upward limited to 130k after a set number of years. New patent attorneys are earning 30k more with absolutely no examining experience or training.
    This has been said before, but never really understood by attorneys in the field, the office cannot hire itself out of the problem. The growth of applications has simply swamped the offices ability to examine those applications. This is not a problem of just RCEs, Divs, Conts, and CIPs. Those actions together account for no more than 30% of the total filed applications.

    2) Give examiners more credit for cases with more claims and/or in more difficult technologies
    4) Give examiners more time to examine/search applications
    With what? This time and credit has to come from somewhere. Should business methods now take 15 years or 20 years to receive a patent? The office is trying to decide ways to make examination more efficient not take more time. The time gap is never going to close. My prosecutions friends have 20 hours to write up an app and often 8 hours to work on responses. A standard prosecution might involve 40 hours of junior attorney work along with 2-3 hours of senior attorney work. If those attorneys also had to search we could assume another 10-15 hours for that activity. The examiner has 15 hours in total. And half of that time is spent searching. At what point do you think examiners can do a comparable job under the current system? Will you also give examiners 50 hours per action? That would increase the backload 300% and the office would have to hire 15k new examiners just to not fall further behind. We can also expect a 3-fold increase in fees. Do your clients want to spend 3 times as much? How about small inventors? Is this the end to small inventor?

    6) Teach supervisors how to teach …. I put a lot of the blame on SPEs that rubber stamp office actions without little to no substantive review. Another one of the problems is that I think many SPEs don’t have a sufficient grasp of the law to give proper guidance.
    My supervisor has 5 primary examiners and 20 junior examiners. Each week about 80 actions are turned in by those juniors. Of those, about 50 are ‘reviewed’ by the SPE. Now, how much time do you think should be allotted to this review? Keep in mind that SPEs must also review primaries work, review the remaining junior examiners work, keep sufficiently trained themselves, and actually do the day to day supervisory jobs of SPEs. In reality, only about half to a third of a SPE’s time can really be allocated to review. We could make more primaries SPEs, but do you have enough quality primaries? And SPEs don’t examine, so every primary you promote is another 100 apps a year that don’t get examined. Hiring more junior examiners just means that SPEs will have even less time to review the work. Keep in mind it takes 5 years for a new hire to work up to a primary, and generally another 5 years to become an ‘expert’ in the art. By the time they are an ‘expert’ they can make 50-70k more by leaving the office. Now, how much time would you like SPEs to spend learning the law? Should they review 20 less cases so that they can spend more time understanding the law? I can tell you now that they already spend probably 10 hours a week in that pursuit. Should they spend more? And even if they do, how much time should they spend then teaching this to the junior examiners?

    7) (Not applicable to art units, but addresses an issue that is personal to me) Stop teaching examiners outmoded law with regard to 101 rejections. 99.9% of the 101 rejections I see have ABSOLUTE NO BASIS in law. It just wastes both the examiner’s time and my time responding to these rejections. When forced to, I have appealed EVERY 101 rejection that I have received, and not one of these rejections has made it past the appeals conference.

    This is really AU specific. But the general point is important. The office teaches from the MPEP for a reason. It can’t put every examiner through law school. They simply can’t teach an examiner how to understand and properly read case law. I also doubt they want those examiners spending hours daily running through Westlaw or Sheperdizing those very same cases. It’s also a problem of consistency. Each examiner should examine under the same guidelines.

    I realize this sounds like a rant, but I hate the couch quarterbacks who throw out these solutions as if the problem were simple and the office is simply too dumb to grasp your brilliance. The office is not dumb. It has investigated a number of solutions, not just for now, but for the foreseeable future. The drastic growth in the value of IP can only mean an increase in the filed applications. The US is for the first time in its history an information economy. What worked in the past simply will never work again so long as that fact remains. The office knows it cannot grow as a solution to those problems. It also is trying to balance the desire for a quality exam with the entry cost for that exam. Raising the entry cost pushes out small inventors. The desire is not to have a perfect system, one simply doesn’t exist. Some inventions and technology fields will absolutely not benefit from a change, but does that mean a change shouldn’t be made? Other fields are currently suffering.

    So here it is…
    You need to examine about 30% more new applications per year.
    You can’t hire more than 15% of your workforce per year, and those new employees will only be able to work at half the production of your 10 year experienced workforce. Plus, you must dock that same experienced workforce 15% of their production for the first two years of each new employee’s career to train them.
    Each new employee will need to be able to eventually understand both a highly technical field, for which there is no sufficient undergraduate degree that prepares them, and a highly counter-intuitive legal concept, for which few people in with their background have an aptitude for.
    You can only pay those employees 30-70k less than they could make if they quit your job and worked in private business
    You can’t let the delay to first pick up an app extend much beyond its current status or risk being displaced from the economy.
    You have to do so under the rules passed down from SCOTUS on what types of things are patentable regardless if you agree or not.
    You must do all of this under a fixed budget.


    If examiners can’t spend more time for examination, and more work is needed to meet a minimum bar of quality, then shift some of the burden of examination back to the private realm where resources far outstrip the office.
    Force inventors to more clearly articulate their inventions and direct their claims towards a scope more consistent with those inventions.
    Change the way the system currently proceeds with patent suits.

    I think all three will eventually take place. Limiting the number of reviews by the office forces applicants to bring their patentable issues to the forefront earlier in examination. It might also require at least a cursory search of the prior art prior to filing. Applicants will be forced to fully consider the complete scope of all art on the record at each stage of prosecution or risk losing a precious action along the way.
    I’m a good examiner, my quality reviews play that point out, and I can tell you that in the last 100 apps I have searched, only about 10% included any patentable subject matter as originally filed. Only 2 apps have had all claims in a condition for allowance. This is a wasted action and a fishing expedition. In an art where 80% of all apps eventually lead to an allowance, this statistic just highlights the fact that attorneys are not either examining the art in any way prior to filing or have no desire to describe the actual invention unless forced to do so. Ideally the courts would punish these overly broad applications by overturning the entire patent (if allowed in that state) upon review, but until that day, examiners are essentially writing the claims for applicants. I don’t run to 4 or 5 RCEs because I enjoy them. My actions are never overturned and are rarely if ever challenged. Applicants just continually, and marginally, amend their claims not in a way that pertains to the disclosed invention, but in a periphery way that avoids the cited art. This just forces me to find additional art to escape the minor (and unrelated) change and then go final. I can assure you that this situation would never occur with limited chance to continue prosecution. As for increased BPAI review, I welcome that situation. I have never been overruled either in appeal conference or at the board. Pushing to the board earlier and more often would at least settle some genuine issues of fact or interpretation and clarify the record for third parties reviewing the patent at a later date. The office would also have a greater resource to identify examiners that routinely get overturned and need additional training or a change in profession. Further the shifting sands of RCEs and minor amendments do nothing to aid in the understanding of the claim interpretation. Limiting claims to be examined serves the same function. Properly written claims can easily encompass the full scope of the inventions in 10 claims. I absolutely understand the issues raised above about fully establishing the scope of an invention in all conceivable terms and steps. However this is not a problem of examination, rather one of interpretation. DOE protects those same inventions when appropriately applied. Rather than burden the 300,000 or so examinations wouldn’t it be more economical to alter the few hundred litigated cases and how those claims are interpreted? Why not change the courts and let the higher resource areas (inventors, firms, and judges) the task of fairly establishing the DOE and applying it to cases. An invention should not be written to claim all possible variations. It only clutters the record, confuses third parties, and burdens the high traffic part of the process. Claim the important parts of the invention, the best mode of operation, and any directly related and non-obvious variations. Examiners will do a better job of searching for the subject matter and the patent will have a greater probability of actually clearly identifying how the case is patentable over the prior art.
    I don’t agree with the IDS rules, so I won’t try to defend them here. However, it’s clear that this is also an attempt to burden shift. While I have heard numerous, and accurate, concerns about inequitable conduct, I think much of this would be solved by independent third party searches. There isn’t really a huge market for these types of cursory searches at this time, but I think such a search before each app could be done cheaply and aid in both claim construction and the examiner’s search. Because of the independence, it would unlikely raise the issues of inequitable conduct.

    Ultimately there are no easy answers, but the sky is falling hysteria surrounding the changes really is disingenuous too. The patent office decides how patents look in many ways. If they change this look, then the courts and public will absolutely adjust to accept these changes. There is simply too much money for such a change to not occur.

  99. 63

    Questions to “Points to Ponder”. 1) How many words does it take, you to get across your inventive concept, to one in your peer group? Not 250 pages of text, I suppose. 2) Isn’t the intended reader of a US patent the PHOSITA? 3)Aren’t the courts everywhere else in the world looking at a patent in suit with the knowledge of the PHOSITA? 4) How much bulk does that pointless little US speciality “Best Mode” add? 5) How much of the claim bulk is irreducible minimum, and how much only because today’s US patent system is an arcane game, incomprehensible to the intelligent layman, played out as described by Charles Dickens in London 150 years ago. 6) How many claims are in your apps outside USA 7) What evidence do you have, that the abbreviated foreign claims set is inadequate or ineffective? 8) Do you want the US patent system to be reformed?

  100. 62

    Points to Ponder – thank you for wrapping up my point and putting a bow on it. Very few examiners have the experience to appreciate the simple statement “any one invention was part of the best mode of 5 others, so they had to be disclosed together”, or that, hell yeah, I would be very irked if you if you were my attorney and left 10% of a $4B invention on the table for public use.

    JPHudy – a question for you. Why do you say the PTO will never hire more examiners? To my way of thinking, the demand clearly exists for the services and the PTO is one of the few federal services that is both consumer fee based and profitable. It seems to me the government should jump at the chance to staff up sufficiently to keep pace with demand. If you pay the examiners on the basis of the scope of their work (not meaningless metrics contrary to basic mission of the patent office).

    Innovation begets innovation geometrically. The US economy relies on intellectual property (more than 80% of the value of S&P 500 companies is based on IP) to remain competitive. The number of inventions and the number of patent applications will continue to rise. If the USPTO doesn’t staff up dramatically, and train and motivate is examiners properly, we will all get hurt badly.

  101. 61

    Steve –

    So you’re happy with 90% coverage? So let’s see, you’re willing to give up 10% of your invention to save what, maybe $1000? Do you tell your inventors that you value their inventions at about $10,000 each? I’d agree with you, that for a $10K invention, 60 claims would be absurd.

    But most of us have clients who would kill us if we told them we were leaving 10% of the invention on the table for competitors.

    My claims are as “finely tuned” as anyone’s, but they’re finely tuned at a patent that is so strong it won’t have to be litigated. “Peace through strength” – my patents are scary. When my patents do get litigated, it’s by Cravath Swaine & Moore, Kirkland & Ellis, Willkie Farr & Gallagher, Orrick Herrington, Finnegan Henderson, Fish & Richardson, and Heller Ehrman – the list of lawyers who’ve taken or prep’ed my deposition is pretty impressive. My patents cover all of the facets of the law and the market. My patents don’t just hang on a wall.

    For a patent to mean business, it has to have 5 or so independent claims for permutations of each invention (e.g., cases where only one of several computers is in the U.S. and the others are overseas, making sure I’ll have direct infringement by an undivided infringer without having to prove up intent for contributory or induced, method, apparatus, and to cover all the potential exhaustion, repair and replaceable part issues, and a means-plus-function to cover the direct copy), and I can usually pull 2 3 or 4 inventions out of the distinctions over the prior art.

    I had one large computer project that generated 80 or so distinct inventions. I filled about 350 independent claims on one 250-page specification (any one invention was part of the best mode of 5 others, so they had to be disclosed together), the claims split among about 25 applications. I have to agree with you, 60 independent claims would be absurd. I disagree with you that 60 independent claims is high.

    Any attorney that stops at 10 claims is taking a huge chance that no infringer is ever going to do a better prior art search than the examiner did, that no one will ever want to practice a part of the invention outside the U.S., that there is no repairable part, that there will never be an inducing or contributory infringer who didn’t know of the patent, that all infringement will be completed by one party, and that all equivalents were unforeseeable. In other words, a 10-claim patent is unlikely to capture any significant fraction of the value of the invention. Steve, if you think you can capture 90% of most inventions in 10 claims, you’re terribly naive. Start reading the Federal Circuit cases as they come out, and tell us what you think in a year.

    These rule proposals apparently start from a belief that inventors are the problem – they should stop being so damned inventive, and stop generating inventions that are worth protecting. I disagree.

    My clients are happy to pay the PTO its full costs to get their applications examined. It would be nice if the PTO had the integrity to do its statutory duty and examine them.

  102. 60

    At least PTO management is doing something. They are not making it impossible to have more than 10 claims, 25 IDS references, or one RCE or continuation, they are just making it hard. They do not appear to be overstepping their statutory authority as they are not imposing hard and fast limits. If something isn’t done, I believe pendency will get MUCH worse than it is now, forcing Congress to get involved.

  103. 59

    Good luck trying to lobby for your patent law changes… imo. The fact is that you attny’s don’t want to compromise. I understand that you want the best and most possible protection for your clients. What you really fail to realize is that there needs to be some MAJOR upheavals in the PTO to solve the backlog problem. Hiring more examiner’s is NOT an option or a solution. What is needed is a way for the same number of examiners to be able to accomplish more work.

    Stick to the fact that there can’t be more examiners; then, give some of your own ideas to fix the backlog problem.

  104. 58

    The bio field is going to die with some of these changes. Bio aps have page after page of references, etc. The practitioners I have talked to, have decided that trying to change the USPTO via the USPTO is not going to work. What will work is contacting your congressional reps and letting them know how you feel. Letters (smail) is considered much more potent than email (so print and smail the email you send). Here’s a link to find the appropriate people.
    link to

  105. 57

    “SF, what do you mean file the same claims in multiple applications. Ain’t that an ethical no-no.”

    I don’t think it is unethical if the claim terms are defined differently in the different specifications …

  106. 56

    “I guess it is easier just to through 60 indpendents at a dartboard”

    Hmm, this analogy sounds vaguely familiar …

  107. 55

    Steve wrote, “We can spend 2 weeks fine tuning one independent claim.”

    One of the benefits of working in house!

  108. 53

    SF, what do you mean file the same claims in multiple applications. Ain’t that an ethical no-no.

  109. 52


    I did read that post and its linked pages.

    First, I don’t say 10 claims as a limit. It is a guideline.

    As to “point to ponder”, I do not disagree that lots of considerations go into claim scope. We can spend 2 weeks fine tuning one independent claim. However, just because there are a lot of considerations does not mean there needs to be a lot of claims; there just needs to be well written and thought out claims. However, I guess it is easier just to through 60 indpendents at a dartboard to hope one covers the infringer instead of laboring over that perfect claim that captures 90% of your concerns.

    I think that unfortunately, the entire US legal system, including its patent system, has led us to an overkill mentality rather than a value mentality.

  110. 51

    pds wrote, “I think the law of unintended consequences is going to come down on the USPTO (and the examining corps) very hard.”

    Absolutely. For example, rather than filing the same specification with several different sets of claims, applicants will file the same sets of claims with rifle shot specifications. The USPTO doesn’t understand that applicants will adjust to ensure they maximize their intellectual property.

  111. 50

    Scott wrote, “As long as you have politicians and idiots running the PTO, you will get ideas tailored to their selfish goals. None of this will improve patent quality, it is about reducing a backlog so that these guys can look good and move up the ladder to their next gig.”

    Amen. That’s why the USPTO will never give examiners more time to examine cases with increased number of claims — doing so would increase pendency.

  112. 49

    Ivan Examinerovich and Steve think that 10 claims is sufficient. Please read “Points to Ponder” comments (specifically point 2) at Apr 12, 2007 at 11:16 AM above.

  113. 48

    “..the idea that any inventor off the street can come close to the definition of nonobviousness (which is primary to what is inventive) is almost laughable. We use the term in a legalistic way that is very different from general usage. If you use the general definition, almost nothing is patentable. The recent In Re Kahn decision does a great job describing the legal meaning.”

    If the above is true it demonstrates to me that there is something wrong with the legal definition of nonobviousness. If the legal definition of obviousness is not at least attempting to approximate what one of ordinary skill in a particular art would consider obviousness than what good is it?

  114. 47

    I am not sure what art you are talking about, but 60 independent claims is absurd, Just the cost of 60 independent claims is absurd.

    If your application truley contains “3-10” distinct inventions they should each be filed in their own application, even if they all have the same specification…after all, by telling us they are distinct you are admitting they can and should be restricted out. One invention per patent. Furthermore, if all are filed on the same day, potential prior art issues relative to each other can be eliminated and none needs to claim priority to the other, so the new rules may not come into play.

    I was a mechanical examiner and now work for a corporation. I too was trained under the rubric that if an attorney could not describe his invention in 10 claims, he did not know what his invention is. I agreed with it then and still. Certainly helps keep the examiner focused.

    Just some thoughts

  115. 46

    Being an Examiner, I see first hand what a huge amount of cases are CON and RCE cases. There are certain art groups at the PTO that work exclusively on CON and RCE cases to no end. That is, they begin a career at the PTO, open 40 or so cases, and ride the CON and RCE wave into eternity. Some of these examiners are good friends of mine.

    When I say that I’m starting “x” new cases a week, they look at me as if I’m nuts and say that I’m going to overload my pipeline. They actively avoid new cases even when there is a lull in amendments because they can’t handle any more than the 40-50 cases they already have open!! This is because their cases NEVER close!! It’s just another after another, after another RCE.

    If the PTO wants to open new cases in their field, they must hire new examiners.

    As far as making $$ goes, this is great for the PTO and the examiners. As far as the backlog and pendency, it’s terrible. It’s not a matter of hiring more examiners. The fact is that most engineers would rather put a pencil thru their eye than examine patent applications. Thus, they quit after a year (among other reasons).

    We may be looking at more appeals, but the fact is that cases will be DISPOSED – they will come to an end, and another RCE or CON is not going to clog up the pendancy of other apps.

  116. 45

    To Ivan Examinerovich – As an inventor, these rule changes do NOTHING but vastly increase my cost to obtain appropriate protection for my work. Your statement that “I haven’t seen a single case that couldn’t be summed up in ten claims” is one of the most absurd statements I’ve ever heard. When I apply for a patent, the patent generally includes disclosure of a basic concept and variations on the methods, apparatus, systems, kits, and tautology for several generations of products based upon the basic concept. 3-5 generations, 5 distinct claim sets per generation, and generally 3-10 individually distint and seperately patentable features or combination of performance critical features per generation that are unanticipated by prior effort in my field.

    10 Claims????? Try 60 independent claims at a minimum. And now you, as an examiner, are going to get them all thrown in your face right in the first application – You chose to drink the Cool Aid, baby, have fun with the consequences.

    A great point was made above very much in your favor, however. I strongly agree that examiners should be compensated based on the number of claims they have to review – hell, I pay for that service and all I get in return is poorly conceived restrictional requirements from a guy who, understandably, wants to dodge a pile of overtime he doesn’t get paid for and can in fact be penalized for spending.

    The bottom line – if Dudas is successful in driving the continuation rules through, he will have accomplished nothing but vastly increasing cost, decreasing legally viable opportunity for inventors, creating a huge backlog given the bolus of applications that’ll be submitted in response to the rule change, and increasing the time from conception to patent application by a solid 3 months due to having to write all the damn claim sets prior to submission of the first application. It also guts the interference process which is effectively the only way for an inventor to correct claims erroneously issued to a junior party due to insufficient prior art research by an examiner or junior party attorney.

    For professional inventors, THE PEOPLE THE PATENT SYSTEM WAS CONCIEVED OF TO SERVE, this blows chunks.

  117. 43

    Just to refure a couple more points:

    1) Too argue that the quality of the examination and the examination corps has nothing to do with the need for a generous RCE practice is just strange to me, of course they are tied.

    2) Any law student interested in patent law can get alot more than four hours of it – I took 11 of straight patent, 4 Trademark, and 3 Copyright.

  118. 42

    What if the PTO simply submitted the proposed new rules to the OMB, knowing that the OMB will reject them, simply to appease those that are pushing for these changes? They can then say sorry, but we tried – you need to take your proposals to Congress to have them implemented.

  119. 41


    Although I agree in principle, the idea that any inventor off the street can come close to the definition of nonobviousness (which is primary to what is inventive) is almost laughable. We use the term in a legalistic way that is very different from general usage. If you use the general definition, almost nothing is patentable. The recent In Re Kahn decision does a great job describing the legal meaning.

  120. 40

    Well, since I am a Ph.D., an inventor, practiced as an Agent, and now am an attorney, I have experienced the process at many levels. There are certainly extremely good agents out there, but on the whole they are less skilled that the lawyers I have worked with when it comes to how to handle examination. Just my experience. I also note I practice in the Trademark area (where only lawyers practice) – and although there are significant differences in examination, on the whole it feels more like European patent examination (i.e. well done and more competent than U.S. patent examination) and lawyers do have a much better ability to analyze legal arguments than any non-lawyer. I can’t tell you how much contract law, constitutional law, and all the rest help when you read 35 USC or 37 CFR. I DO approach them differently than I used to.

    Examiners strike me as folk who should be MORE knowledgeable than I am (as they acting in some ways to judge) but they seldom are. They often cannot even use the MPEP cites correctly. Today I had an Examiner argue that a modification from a primary hydrogen to a halogen was obvious (in a complex biotech context) – with no citation to art, thus they sometimes can’t even do the science.

    I post anonymously as well, it allows me to be honest (as long as I can trust Dennis to hide the address)!

  121. 39

    I suggest that BEFORE the first Office Action is sent that the examiner contact the attorney/applicant by phone and spend 5 minutes discussing what the invention is about. Hopefully this reduce the near universal pratice of pro forma keyword search art rejections.

  122. 38

    “I propose all examiners and people practicing before them have J.D.’s. If Examiners understood the law we would all be better off – and attorneys think differently than Examiners and Agents as law school teaches you how to think like a lawyer.”

    I would argue that it is the lack of understanding of the technology at issue rather than the law that causes the most problems during prosecution. The Examiners tend to misinterpret the patent application while the Agents/Attorneys write overly broad claims which those of ordinary skill in the art should have easily recognized as well known. It seems to me that a lot of the problem in the patent system is that too many lawyers and not enough inventors are involved in the process.

    While inventors may not understand the exact legal definitions of utility, novelty, obviousness, and enablement, they are certainly more qualified to understand what is inventive in their respective technologies than any Examiner, Agent, or Attorney could ever be. Hopefully with the Peer-to-Patent project and other initiatives inventors and technologists will become more involved.

  123. 37

    “I propose all examiners and people practicing before them have J.D.’s. If Examiners understood the law we would all be better off – and attorneys think differently than Examiners and Agents as law school teaches you how to think like a lawyer.”

    No wonder you use a pseudonym. Speaking as a US patent agent, that’s fighting talk! It’s also not remotely germane to the topic of this thread.

    Law school may indeed teach you how to think like a lawyer, but it rarely teaches you any patent law. The ABA curriculum is so crammed with other stuff that you might be able to fit in 4 credit hours of patent law if you are very lucky, in other words much less than a diligent patent agent (or attorney, for that matter) might pick up by independent study. What’s more, most of the world manages perfectly well with a patent profession made up of patent agents (although often known as patent attorneys to confuse Americans).

    In a sense you have a point though, because examiners rarely show any great knowledge of patent law, and often ignore entirely perfectly sound legal arguments. I would have hoped that they would hit the case books or the Internet to refute me when I cite a case, but the usual result is that they ignore that part of the response entirely. I find that particularly odd, as I know they receive classes in patent law as part of their training. Perhaps the explanation is that they are also indoctrinated to ignore any case law that isn’t in the MPEP, as somehow not approved by the management, or maybe it’s just that they face very little in the way of a downside by simply ignoring an argument instead of trying to rebut it.

  124. 36

    Points to ponder – excellent post. All of course management decisions – and well within the pto’s power to implement – and might have some positive short and long term results. I think, however, it serves the purpose of the current administration and pto management to keep the system as broken as possible.

    Did you know the pto has all hands meetings to discuss patents that are in the news and being enforced? The leader will then say – i’m not going to single out the examiner who issued this patent – but this is not the kind of work produce we should be generating. This is the type of peer pressure the current management is about in the daily browe beating the life out of the carreer corps. There is no sense of pride in having a patent issued and successfully enforced.

  125. 35

    As long as you have politicians and idiots running the PTO, you will get ideas tailored to their selfish goals. None of this will improve patent quality, it is about reducing a backlog so that these guys can look good and move up the ladder to their next gig.

    Doll said this morning that the PTO can handle 300K accelerated exam cases, meanwhile a few hundred have been filed and are already sitting in 5 month old piles at the PTO. The level of incompetence in these policy makers is staggering.

  126. 34

    A couple interesting points.

    (1) Charlie Van Horn’s description of the situation overlooks a key fact. *Substantial* “details of the final rules were disclosed.” If the proposal had been substantially modified, the PTO would have had to send the rules to another round of Notice and Comment, not OMB.

    (2) Ivan Examinerovich and MaxDrei. The reason U.S. applications have many claims is the very “claim centric” way we deal with claims. As MaxDrei points out, elsewhere courts apply a “substantial ‘content'” analysis. In the U.S., the analysis is exteremely formalistic, driven by the precise words of the claims. To protect an invention, a pante must have independent claims to handle all of the following kinds of issues-

    • various phases of the life cycle or operating cycle of the invention
    • territoriality issues and divided infringement issues such as imports, exports, international communications systems, temporary presence of vehicles, components supoplied by several vendors, etc. For example, in a communications system, it can be crucial to have separate claims directed to the sender, the receiver, and the switch that routes messages between them.
    • exhaustion, repair, replaceable or consumable parts
    • literal coverage of foreseeable equivalents – thereby simplifying complex “doctrine of equivalents” cases to clear literal infringement cases
    • claim construction rules for means-plus-function, product-by-process, functional apparatus, structural apparatus, method-of-making, and method-of-using claims
    • various limitations on damages
    • limitations, such as intent, on the doctrines of induced or contributory infringement

    That’s just the way the law is. Any attorney who does not present enough claims to cover all these facets is not doing the client a service.

    Everyone currently in the PTO is legally barred from having any practical experience with the economic and practical reality of patents post-issue. There are only about 3-5 people in the entire PTO who gained such experience before joining the PTO, and none of them are in policy-making roles, and have only limited ability to share their experience with those who do make policy or examine applications.

    These three rule proposals reflect nothing but the ignorance imposed by the PTO’s isolation from the real world of patents.

    Randall Svhila points out an obvious component of the correct solution: examiner compenstion and time budgets should be tied to filing fees. Applicants allocate their resources according to the importance of the appliation and invention, and filing fees are an awfully good proxy for that allocation. Why is the PTO so resistant to allocating its resources by importance, and giving value according to fee paid?

    (3) Retroactivity. The Supreme Court’s procedural law (about which the PTO doesn’t give a rat’s ass) is as follows:

    Retroactivity is not favored in the law. Thus, congressional enactments and administrative rules will not be construed to have retroactive effect unless their language requires this result. … By the same principle, a statutory grant of legislative rulemaking authority will not, as a general matter, be understood to encompass the power to promulgate retroactive rules unless that power is conveyed by Congress in express terms. … “The power to require readjustments for the past is drastic. It … ought not to be extended so as to permit unreasonably harsh action without very plain words”. Even where some substantial justification for retroactive rulemaking is presented, courts should be reluctant to find such authority absent an express statutory grant.

    A rule that has unreasonable secondary retroactivity — for example, altering future regulation in a manner that makes worthless substantial past investment incurred in reliance upon the prior rule — may for that reason be “arbitrary” or “capricious,” see 5 U.S.C. § 706, and thus invalid.

    Bowen v Georgetown University Hospital, 488 U.S. 204, 209, 220 (1988).

    Notice that “retroactivity” is defined by reference to the actions and reliance interest of the regulated party, not the actions of the agency. If the PTO attempts to apply the rules to applications already filed, they’ll have “no substantial justification” and will end up paying attorney fees under the Equal Access to Justice Act.

    (4) “responder.” “I have heard that…” The facts are easy to check – why rely on “heard?”

    link to

    The Board’s backlog is up 31% since the beginning of the fiscal year – FIVE MONTHS. At that rate, the Board’s backlog will essentially DOUBLE IN A YEAR, even without the new rules. Also, what basis do you have for your confidence in “the appeals statistics?” “Appeal statistics” on the multiple levels of review are combined at page 3 of this document-

    link to

    Examiners have not been unable to reach even a 0.200 batting average in any year for which statistics are available. An 80% failure rate is apparently the PTO’s definition of “unprecedented quality.”

    The reason that appeals have no threat to examiners is that the PTO has no system of accountabilty for bad rejections. Correcting that is another obvious component of a rational response to the PTO’s perceived propblems.

  127. 33

    Agreed AnonEPA, but the definition of continuation as implemented by the Office in the original rules did have sweeping effects on divisionals as well – which are avialable in the EP.

  128. 32

    CaveMan – I don’t see any calls to harmonize here. The assertion that outside the US, only a limited number of claims is examined is wrong, at least in as far as the UK and EPO are concerned, and I can’t think of other jurisdictions where this is the case. Nowhere else has continuations, so proposals to limit numbers of them also won’t bring about any harmonization.

  129. 31

    This will likely weaken patents, since a potential infringer may discover a “design around”/invalidity appraoch, while the patentee will not have the opportunity to draft new claims (no continuation available) to specifically address the infringement.

    Also, if there are only 10 claims, then large Markush groups in claims will likely be easier to invalidate. Perhaps many/most inventions can be claimed in 10 claims, but certainly not all inventions…

  130. 30

    If the USPTO is hell bent on affecting continuation practice, I think the best compromise approach would be to require a detailed analysis of the cited references and the claims for every continuation past the first continuation. (The USPTO proposed requiring this analysis for applications over ten designated claims.) While continuations routinely require little additional effort, this isn’t always the case when, for example, applicants pursue broader claim scope or different inventions. This compromise approach would ensure that the continuations would predictably take less effort, allowing for more efficient resource allocation at the USPTO.

    However, any rules that prevent the applicant from keeping a continuation pending, and thus preventing the applicant from fully leveraging the 20-year statutory term, short-changes the applicant in the quid pro quo of the patent system. If the public gets the full benefit of the patent’s disclosure, the applicant should get the full benefit of the 20-year term, which is best accomplished by keeping a continuation pending.

  131. 29

    I think we’re way past fixing the PTO. Can it be taken over by some receivership – like DC after many years under the leadership of Marion Barry? If not, can we send in the Marines? I’ll be in the first wave!

  132. 28

    That’s right let’s “harmonize” with the rest of the socialist world that fails to respect or protect property rights… Now THAT’S progress.

    God forbid we do things “differently” in the greatest bastion of capitalism the world has ever known…

  133. 27

    Doll and Dudas should be fired immediately and replaced with a couple of 15-20+ year experienced and respected PTO professionals of proven knowledge, character, and ability.

    One of them should be Greg Aharonian.

    The patent field/industry is too important to be left to polital appointee hacks–Republican or Democrat.

    Let the continuation lawsuits begin.

  134. 26

    In case anybody think I’ve been coming down too hard on examiners, I want to make it clear that I don’t blame the examining corp for the problems at the USPTO.

    I’ve written this before on this board, but I want to repeat it here.

    These are necessarily original ideas, but this is what I would suggest:

    1) Stop diverting funds from the PTO
    2) Give examiners more credit for cases with more claims and/or in more difficult technologies
    3) HIRE MORE EXAMINERS!!!!! If the PTO has to pay more to attract quality examiners, then I don’t have a problem with it.
    4) Give examiners more time to examine/search applications
    5) Give examiners REAL TRAINING.
    6) Teach supervisors how to teach …. I put a lot of the blame on SPEs that rubber stamp office actions without little to no substantive review. Another one of the problems is that I think many SPEs don’t have a sufficient grasp of the law to give proper guidance.
    7) (Not applicable to art units, but addresses an issue that is personal to me) Stop teaching examiners outmoded law with regard to 101 rejections. 99.9% of the 101 rejections I see have ABSOLUTE NO BASIS in law. It just wastes both the examiner’s time and my time responding to these rejections. When forced to, I have appealed EVERY 101 rejection that I have received, and not one of these rejections has made it past the appeals conference.

  135. 24

    “I have heard that the Board doesn’t have the kind of case load that it used to and they don’t really have enough to do now. I’m sure they’d welcome the work.”

    Au contraire my friend. I recommend that you take a look at the most recent reports:

    link to
    link to

    In October of FY 2006 (which I believe is October of CY 2005), the cases pending were 873.
    As of February of FY 2007, the cases pending before the board were 1739.

    For the last 12 months, it looks like that the Board, on average, is disposing of about 2/3 of the cases it receives on a monthly basis.

    For FY 2005, cases received were 2834, and cases disposed were 2937.
    For FY 2006, cases received were 3349, and cases disposed were 2874.
    For the first five months of FY 2007, cases received were 1324, and cases disposed were 942. (For comparison purposes, for the first five months of FY 2006, cases received were 1240, and cases disposed were 933).

    I wonder what will happen to those numbers if the use of RCE are sharply curtailed?

    My guess is that anybody who ever had the inclination to be an administrative judge with the BPAI should start checking the help wanted pages around August/September … it looks like the USPTO may be hiring shortly.

  136. 23

    “The great thing about when an examiner reopens prosecution is that I can immediately file an appeal again without paying the NOA fee or the appeal fee. Moreover, I already have a template for my appeal brief so it is easier to write.

    If the continuation/RCE rules are as onerous as people think they may be, I think the law of unintended consequences is going to come down on the USPTO (and the examining corps) very hard.”

    Thank you pds. You’ve given me reason to carry on. Yes, the examiners are in for a rude awakening. De facto RCE’s without counts. Hee hee hee.

  137. 22

    Will the PTO now move away from their idiotic restriction practice of restricting apparatus and method claims directed to the same subject matter? This is probably one of the reasons for the number of continuation applications.

  138. 21

    I realize that this is mostly an attorney-focused blog and therefore I gladly appreciate your criticism. However, please stop crying about arbitrary examiner responses when we could just as equally complain about crazy attorney arguments, worthless IDS references and large claim sets. Waa, Waa. We are all people and we all make mistakes. Not all examiners are bad and not all attorneys are out to screw their clients.

    I feel that these changes are not really in either side’s best interest. Closing prosecution early hurts the process of focusing claims. Isn’t helping the applicant why we are here or is it just a matter of winning?

  139. 20


    “What’s more, their industries are doing quite fine and even kicking our butts!”

    Although I don’t have exact statistics, isn’t it possible that “their” industries are doing quite fine because one of their biggest markets may in fact be US and not Japan? Patents are most important in the relatively big markets. So long as you get enough protection in US, potential drawbacks in other national patent systems are not very significant.

  140. 19


    Thanks for showing us why we have trouble with the office.

    I propose all examiners and people practicing before them have J.D.’s. If Examiners understood the law we would all be better off – and attorneys think differently than Examiners and Agents as law school teaches you how to think like a lawyer.

  141. 18

    “But then I read the JPO rejection and all it does is say what the references teach and that it would “be easy” to combine them. Wow, imagine the reduction in backlog if examiners can crank out rejections like that without this TSM.”

    Many examiners already pay lip service to TSM so this wouldn’t be much of a change. I’ve had examinations in which if you take out the canned language and eliminate the word-for-word recitations of the claims, the total “original analysis” constituted less than 20 words of text. I would wager that if you took out the canned language and eliminate the word-for-word recitation of the claims, that >50% (very concervative number) of the office actions I see contain less than 1 page of original analysis.

    “And I have not heard any quality perception problems with the Japanese Patent system. What’s more, their industries are doing quite fine and even kicking our butts!”

    The reputation of the Japanese Patent system is definitely something that gets talked about around the water cooler in my office a lot. That and the reputation of the EPO in examining application is something that my friends e-mail each other about all the time …. talk about shooting from the hip … must be an examiner … the classic assertion without any factual basis.

  142. 17

    “So now, instead of drafting continuations and RCEs (which are easy), we will be drafting appeal briefs (which are hard and expensive). Being overwhelmed with appeals, the examining corps will have no choice but to re-open examination after the applicant’s appeal brief (treating it like an RCE – this has already started).”

    Within the last year, I’ve had at least 8-12 applications reopened after appeal (I’ve also had at least one reopened twice). The problem for examiners, however, is that they get a count when they write an examiner’s answer or a first action, an RCE is filed or after an allowance/abandonment. As far as I know, reopening prosecution doesn’t generate a count.

    The great thing about when an examiner reopens prosecution is that I can immediately file an appeal again without paying the NOA fee or the appeal fee. Moreover, I already have a template for my appeal brief so it is easier to write.

    If the continuation/RCE rules are as onerous as people think they may be, I think the law of unintended consequences is going to come down on the USPTO (and the examining corps) very hard.

  143. 16

    Responder: The proposed rule changes would modify the Code of Federal Regulations (CFR). The ex post facto clauses have been generally limited to changes in criminal law as opposed to laws that are purely civil or regulatory in nature. The only real exception is when there is a (criminally) punative intent of a civil law. SMITH v. DOE, 538 U.S. 84 (2002).

  144. 15

    Feel free to appeal all you like Clifford. I have heard that the Board doesn’t have the kind of case load that it used to and they don’t really have enough to do now. I’m sure they’d welcome the work.
    From what I’ve heard, Appeals really aren’t threats to examiners. Take a look at the appeals statistics and you’ll understand why.

  145. 14

    RE: The_Cheshire_Cat
    The real question you should be asking is whether Ex Post Facto applies against regulations (CFR) or guidelines (MPEP) as opposed to laws (USC). If the rules changes are just to the MPEP then they are really just considered “guidelines” and interpretations of court cases and regulations, and are not per se regulations, as we think of them in CFR terms and they are not laws as we think of them in USC terms.

    In all of the meetings and presentations, the PTO officials kept saying that these rule changes would be applied retroactively to all pending cases that have not had a first action on the merits – which means all of the backlog.

    I’m just wondering whether their response bears any relation to the kind of law/regulation/guideline at issue.

  146. 13

    The EX POST FACTO clauses do not seem to provide much help since they are clearly directed at congressional action as opposed to agency action.

  147. 12

    I am reading this translated JPO rejection of five claims (in comparison to the US Application of 17 claims) that takes up less than a page. Maybe the Japanese language is very concise because my rejection took up 11 pages. But then I read the JPO rejection and all it does is say what the references teach and that it would “be easy” to combine them. Wow, imagine the reduction in backlog if examiners can crank out rejections like that without this TSM. Perhaps under the new KSR rulings, should we get that any day soon. And I have not heard any quality perception problems with the Japanese Patent system. What’s more, their industries are doing quite fine and even kicking our butts!

  148. 11

    Ivan Examinerovich–Isn’t it possible that the loss of many continuations and RCEs from your docket and the almost certain increase in the number of Examiner’s Answers you will be writing will actually require you to work more voluntary overtime than you do now? Also, I’ve never understood why the PTO requires applicants to pay excess claim fees. I suppose the rationale is that applications with lots of claims take more time to examine. However, as I understand it, examiners get the same amount of time to examine an application no matter how many claims it contains. So, what do the excess claim fees actually pay for? It seems to me the better solution would be to keep the current claim system but give the Examiners more time to examine applications with more claims.

  149. 10

    Dear brother Ivan, I think is is safe to say all are for streamlined and effective prosecution and constructive dialog with the examiner’s corps in US patent prosecution. Like hot apple pie on the fourth of July – who could be against it? That said, many feel that the new continuation rules address only half the issue – the real issue being – why are there so many in the first place? Arbitrary restriction requirements, refusal to allow claim amendments to focus the claims tight on the invention – again subject to arbitrary rejection – raises new issues objection – here’s your final and a refusal to enter the amendment – file your con and get off my docket, double patenting rejections (which should have been abolished with the change in patent term amendments – i.e., 20 yrs from filing date all patents are now essentially terminally disclaimed), etc etc. This of course doesn’t even begin to address what is now apparent to most practitioners – open hostility to the patent system by the current pto management and the Bush administration. For those with the temerity to actually enforce a US patent – just wait until the central reexamination unit gets a hold of you – it’s a star chamber. You are presumed invalid unless and until you can prove to the board (now stacked as well) and CAFC otherwise. So no Ivan everyone that files a con is not jobbing the system and every patent that is enforced is not a patent troll or otherwise. It is very disturbing the amount of time uspto management is reading the press and the paid off opinion choir of endowed professors, and media reporters “the sky is falling” – and has lost faith in US innovation and inventors.

  150. 9

    So now, instead of drafting continuations and RCEs (which are easy), we will be drafting appeal briefs (which are hard and expensive). Being overwhelmed with appeals, the examining corps will have no choice but to re-open examination after the applicant’s appeal brief (treating it like an RCE – this has already started). This will force the senior examiners to get involved in almost every case.

    There is no way most of us are going to use that one RCE or continuation (assuming that’s what comes down) without first trying an appeal.

  151. 8

    The goal of this rule change is to streamline prosecution and reduce the application backlog?

    Just wait until the number of applications going to appeal goes up by a factor of 10000.

    All those Examiner’s preparing countless formal Examiner’s responses to the Appeal Briefs will thank USPTO management.

    The end result on backlog/productivity/examiner turnover? … devastating.

  152. 7


    Doesn’t this provision in The Constitution, Article I, Section 9, Clause 3: “No Bill of Attainder or ex post facto Law shall be passed.” speak to that question? I don’t recall this Clause having been annulled.

    Thinking about retroactive and “the exclusive right” provision in The Constitution’s Patent Clause, can an infringer who was permanently enjoined prior to the topsy-turvy turn in the USSC’s eBay debacle now seek “un-injunction” relief?

    Thinking about the clear, unambiguous “exclusive right” provision in The Constitution, Article I, Section 8, Clause 8 (“the Patent Clause”), I know that provision has never been amended — how does the USSC’s eBay zinger wash with Article V which describes the only lawful process whereby the Constitution may be altered?

    Am I wrong to think that absolute authority comes from the Supremacy Clause, Article VI, Clause 2, and that anything and everything (such as 35 U.S.C. 283) in conflict with The Constitution or its Amendments is inferior?:

    Article VI, Clause 2, “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof … shall be the supreme Law of the Land” (emphasis on “made in Pursuance thereof”).

    Or is it too early in the morning to pose such questions? Here is one more early morning question: Was the eBay ruling made in Alice’s Wonderland?


  153. 6

    Ivan Examinervich – you are correct that prosecution is smoother elsewhere. However, I don’t think this is due to the number of claims or length of the specification. One thing I find particularly frustrating in the USPTO is the invariable finality of the second action, even though solid arguments and/or amendments have been presented in the response to the first action (and no – in reality, they mostly don’t raise “new issues”.) In other Patent Offices, in contrast, there would be constructive dialogue with the applicant at this point instead of slamming the door.

    If number of cliams is a problem, why not encourage multiple dependencies? It works perfectly well elsewhere.

  154. 5

    Dear Ivan Examiner, right you are, that prosecution before the USPTO is different from all the rest of the world, and all the rest of the world is pretty much the same all over. As you say, for most applications (except chemistry) ten claims does it all (but that only works when courts decide issues of infringement and validity in a common sense way, basing themselves on the substantial “content” of the claim in suit). Wrong you are that UK national patent office limits claim numbers, and has no equivalent to continuation practice. Patent law in Europe in fact offers Applicant more flexibility than the US Statute. Divisionals do what your continuations do. Attorneys the world over (they’re all the same) will do, before issue, whatever it takes to get a patent that will be effective and enforceable after issue. The unique fundamental in USA is its system of litigation, and it is that which drives attorney behaviour before the USPTO. Meanwhile, in common law England, patent litigation is very compact. Contingency fees and insurance companies give impecunious “ten claim David” every chance, even in our “loser pays” system, to get swiftly from his valid and infringed claim the full reward (including the right to exclude)that goes with it. The USPTO can fiddle with its Rules all it likes, but I doubt it will make much difference, as long as it’s still burning in the US courts.

  155. 4

    If the rules are retroactive (by which I mean that they in any way prejudice an applicant’s right to obtain a patent for subject matter disclosed in an application that was pending before the rules’ effective date), then I would expect an immediate challenge to those rules as sanctioning an unconstitutional violation of due process and also as having been promulgated without statutory authority.

  156. 2

    I think this is great. No I won’t have to work voluntary overtime just to keep up because you guys file a hundred claims. I haven’t seen a single case that couldn’t be summed up in ten claims. All of the office actions from foreign offices that I receive submitted as relevant prior art have two to four of the most relevant references at the most. The examiner looks at the references and the independent claims to see if there is any inventive step and the office action is never more than seven or eight pages long. I have seen actions from Japan, Korea, China, Taiwan, Russia, England–you name it. We are the only country in the world, as far as I know, where the applicants have unlimited claims, continuations, and RCEs. Hopefully this will clear up the pendency and result in solid, quick decisions.

  157. 1

    A double whammy. I’m beginning to hate this profession, mainly for the constantly changing rules of the game.

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