Patent Reform: Changes to Continuation and Claiming Practice

As all patent prosecutors know, the PTO has proposed a set of rule changes that would limit the number of continuation applications that may be filed based on a given priority document. In addition, the proposed changes would also limit the number of claims to be examined in each application.

The final version of the proposed rules are not yet public, but are being reviewed by the Whitehouse before final implementation.

Three groups have now met with the OMB and complained about the rules [LINK].

  • Former PTO Director Bruce Lehman, now a lobbyist working for Akin Gump, joined forces with BIO to argue that the changes would create significant harm to small biotech companies. Materials Used: Chart Memo.
  • Derek Minihane (in-house at Intermolecular) and Jeffrey Birchak (in-house at Fallbrook Tech) presented on behalf of he innovation alliance — making the argument that “the proposed rules would impose hundreds of millions of dollars of additional costs on inventors and could destroy billions of dollars in property rights and business value.” Materials Used: Memo Presentation.
  • David Boundy (Cantor Fitz) and Mike Strickland (GlaxoSmithKline) also met with OMB officials to present the case against changes on behalf of a few dozen interested companies. Their documentation highlights what they see as illegal PTO actions leading-up to the new rules.  [LINK]

Within the Whitehouse Office of Management and Budget (OMB), the Office of Information and Regulatory Affairs (OIRA) reviews final regulatory changes before implemented. Susan Dudley, OIRA director is expected to release a decision within three weeks.

Notes

  • Stanford Professor Mark Lemley’s article regarding continuations (coauthored with Judge Moore) was used as a justification for the PTO’s rule changes. Interestingly, the objectors cite another Lemley article (coauthored with Allison, Moore, and Trunkey) for the proposition that patents based on continuations are generally more valuable. The second article, titled “Valuable Patents” makes its conclusion by combining the observation that patents based on continuations are litigated more often with the assumption that litigated patents are, on average, more valuable than those that are not litigated.
  • The Lemley/Moore article is not overly concerned with the administrative trouble created by continuations. It does, however, point to four major problems created by extensive continuation practice:

First, at a minimum, continuation practice introduces substantial delay and uncertainty into the lives of a patentee’s competitors, who can never know whether a patent application is pending. Second, the structure of the PTO suggests that continuations may well succeed in “wearing down” the examiner, so that the applicant obtains a broad patent not because he deserves one but because the examiner has neither incentive nor will to hold out any longer. Third, continuation practice can be – and has been – used strategically to gain advantages over competitors by waiting to see what product the competitor will make and then drafting patent claims specifically designed to cover that product. Finally, some patentees have used continuation practice to delay the issuance of their patent precisely in order to surprise a mature industry, a process known as “submarine patenting.”

83 thoughts on “Patent Reform: Changes to Continuation and Claiming Practice

  1. 83

    Um… Sorry if this question seems dense of me to ask,but does this mean the OMB has rejected the proposed rule changes on continuations????

    Please, please, please say yes

  2. 82

    After several false starts, OMB finally has our materials properly posted. The meeting summary is at

    link to whitehouse.gov
    Our materials are at (caution – 7MB)
    link to whitehouse.gov

    The bits that most reward a quick read are –

    Page C-4 (PDF page 10), footnote 24: Commissioner Doll admits that the PTO did no study to differentiate possible sources and causes of backlog

    Page D-2 (PDF page 13), footnote 31: In a 2000 paper, now-Deputy-Assistant-Commissioner John Love advised applicants that the most efficient application is the type of application that the PTO now wishes to curb by the Limits on Claims rule

    Cages D-3 to D-5 (PDF pages 14-16) – the applications targeted by the two Rules are precisely the applications that applicants signal to be most valuable

    Attachment J (PDF pages 65-67): one proposed counterbalance to harshness of the rules, Petitions re Premature Final Rejection, do not exist in actual practice, because of lack of careful and timely adjudication by the PTO, and stated refusal to consider or honor precedent

    Pages M-5 to M-6 (PDF pages 82-83): In its fall 2006 Paperwork Reduction Act submission, the PTO estimated that Examination Support Documents would impose a burden of zero, or possibly negative – after receiving comments in May to the contrary

    Page M-5 (PDF page 82): Solicitor John Whealan advises patent attorneys that “the good news” is that attorneys’ fees will go up.

    Page M-6 (PDF page 83): Solicitor Whealen stated at a public presentation that “nobody’s going to want to” use the ESD procedure, apparently acknowledging that it is a sham “poison pill” to hide the confiscatory effect of the Limits on Claims rule

    Pages C-3, C-4, L-1, L-2 (PDF pages 9-10, 72-73): The PTO payed “hide the peanut” with its data, models and assumptions. Compare the PTO’s conduct to a civil litigant that hides relevant documents during discovery and then selectively drips them out after close of discovery as it becomes advantageous to do so.

    Attn: Arti Rai, Mark Lemley, and other academics that think that the PTO should be subject to the same rights and obligations as other agencies under the administrative law: I agree with you. However, it sure seems that the PTO’s view is contrary: the law can screw off. If this is not the PTO’s view, they should explain in a well-developed Regulatory Impact Analysis.

  3. 81

    Don’t Beat on Max,

    My position, “the public is best served by knowing as quickly as possible what sort of patent coverage an applicant might get from their application” does not equal “Limiting an inventors ability to write claims” (your statement). For example, the goal could be advanced by increasing USPTO resources. The USPTO is insisting that they are doing everything they can. Perhaps so, but there is no reason why Congress couldn’t step in with more resources, particularly given the importance of this subject to the US economy.

  4. 80

    Apologies to “knowmenclature” and other readers whom I may have offended. I do not like to be off-putting to anyone (except those what may deserve it).
    But when one particular contributor insists on vilifying self-employed American inventors in every which way, I take umbrage. And, to salt the wounds and add further insult to injury, after refusing to give it up, that same contributor then writes:

    “To set the record straight, MaxDrei was advocating prison … contributor Small Inventor (and another contributor who goes under the pseudonym Just an Ordinary Inventor (TM)) choose to construe my “prison for contempt” suggestion as an attack on “Small Inventors”. THEY SHOULD THANK ME, not curse me.” (emphasis added)

    Well, I tend to over-react. As experienced patent attorneys know all too well, inventors often tend to be passionate, perhaps too passionate.

    And some inventors play with a full deck — including the jokers.

  5. 79

    Max has been getting chewed up a bit on this thread, but asking him to f@$$ off isn’t really very productive. The bottom line is that the majority of european law is based on a far more socialist leaning basis than we’ve adopted in the US – this isn’t necessarily wrong across the board, its merely different in the manner in which individual contribution to the common good is measured.

    In the area of patent law, especially patent enforcement, Europe is damn near the least cost effective playground in the world with the exception of Japan. Aside from foodstuffs, can anyone name a european nation which consumes more product than the states of California & New Jersey? (no, germany doesn’t) Now compare the cost of prosecution, maintenance, and enforcement of IP for the percentage of CA/NJ against US National costs vs Germany taking into account the differences in enforceable claim scope.

    The bottom line is Europe doesn’t enjoy the benefit of independent inventors contribution to innovation to the extent we do in the US because they don’t compensate for it. We do, because we compensate for it. Being an independent inventor is, financially, among the highest risk professions. In the absence of compensation to account for risk, it’s a non-starter.

    Let’s face it, American culture embraces those who take risk and succeed in being correct despite the spewings of “experts”. European culture, broadly speaking, doesn’t.

    Harmonization? F@$$ ’em! Learn from the results of Max’s beliefs, and we’ll continue to outstrip Europe while they take their 7 weeks of vacation every year.

    And if you are an inventor, for God’s sake, don’t retain Max.

    Mark Nowotarski – the claims define the scope of what the pantentee excludes, the spec teaches that which society benefits from. Limiting an inventor’s ability to write claims does nothing but enable corporations to take advantage of the teachings that an inventor now can’t have the opportunity to claim. It’s bullsh@t. If a claim is supported by spec, and is truly useful and unanticipate by the prior effort of others, it should be subject to successful claim prosecution despite the whinings of industry which would much rather not pay a dime of royalties for stolen technology.

  6. 78

    Wouldn’t we all, but lets face it — it is not the nature of the beast, the “sport of kings,” even under the best of circumstances, and of late the patent-goal posts have been moving to boot. One must deal with it:

    The Serenity Prayer
    God grant me the serenity to accept the things I cannot change,
    courage to change the things I can,
    and the wisdom to know the difference.

    No thing is really certain:
    According to Dr. Carl Pomerance, a contemporary world-renowned mathematician and computer scientist (“The Mathematical Intelligencer,” Volume 3, Number 3, Page 100):

    “It is only an illusion or wishful thinking that there is absolute certainty in mathematics. It is commonly accepted that the natural ‘laws’ in the other sciences are not immutable but subject to revision as scientist gain deeper understanding. … A simple result that has borne the test of time, such as the equation 2 + 2 = 4, should (only) be given a probability of truth that is extremely close to 1.”

  7. 77

    MaxDrei said, “can Mark Nowotarski expound a little on the rights that everybody else other than Applicant should enjoy”

    I’d be happy to. I completely agree with your position that the public is best served by knowing as quickly as possible what sort of patent coverage an applicant might get from their application.

  8. 76

    Mark Lemley said: “The continuation process allows examiner errors allowing bad claims to go unchallenged (unless and until litigation) — the patent just issues. By contrast, both good and bad rejections can get challenged, and go back into the wheel.”
    Two problems with this (apart from the ones David Boundy pointed out):
    (1) it’s not the continuation process that allows “bad claims” to get through, it’s the examination process per se, mistakes can be made even in a no-continuation system;
    (2) PTO Quality Review reviews allowed applications but not finally rejected ones – with the specific aim of minimizing the issuance of “bad claims”, but the review of “bad rejections” is either appeal (very expensive and long – though the reversal rate is pretty good from the applicant’s point of view) or continuation/RCE practice (faster , cheaper, and therefore usually the rational choice if there’s any maneuvering room).
    Like anon coward, and I think many others, I see the problem as a broken system (“compact persecution” – as Hal Wegner described it many years ago – compounded by perverse incentives to the examining corps and a management that ignores quality of examination in favor of numbers) – but we deal with it as we can, and if the PTO which broke the system in the first place attempts to break it further, we just do all we can to prevent that happening.

  9. 75

    The previous post, which begins “Wouldn’t limiting the number of RCE’s more quickly exhaust administrative remedies, and allow earlier filing in district court? That should argue for limiting the number of RCEs,” was posted by me, “knowmenclature.” I don’t know why my sig line didn’t make it into the post.

  10. 74

    Wouldn’t limiting the number of RCE’s more quickly exhaust administrative remedies, and allow earlier filing in district court? That should argue for limiting the number of RCEs.

    Incompetence doesn’t seem like something that can ever be fixed; it will always exist in any profession. I don’t want to argue about how common or rare incompetence is; I am sure that everyone should agree that it does exist at least occasionally, however frequently or infrequently. Applications filed by incompetent practitioners can be rejected, but rejection alone will not improve the quality of work that an incompetent practitioner who is honestly trying (but not succeeding) to do good work produces. No number of RCEs will ever really be enough for a truly incompetent practitioner to get it right. Limiting the number of RCEs an incompetent practitioner can file does no harm, if the application is incompetently drafted or presented, but can at least protect clients from the endless hourly billing that an incompetent practitioner can charge. (Of course, one can argue that even an incompetent practitioner may eventually stumble onto an allowable claim, like chimpanzees typing Hamlet, but let’s set that argument aside for a moment.) Similarly, for incompetent examiners, limiting the number of RCEs can do little harm, and may do some good. One could argue that if an examiner has inadequate technical competence to understand a well-written application as filed, for example, and needs a full week to understand it, giving the examiner 4-5 RCEs would be a good idea, since that may give the examiner enough time to read the application (one day each time an RCE is filed). I disagree, though. I suspect that it would be a good thing to limit the number of RCEs an incompetent examiner to one or two, with only a few hours (or, at most, a day) to review an application before firing out each office action, since doing so may expose the incompetence of a particular examiner more quickly through appeals and litigation.

    More insidious is the problem of intentional “gaming.” Examiners who accumulate counts by repeatedly rejecting allowable claims, and who save uncited but strong prior art for use in rejecting future RCEs, would have less incentive if there were only one or two RCEs allowable per application. Similarly, practitioners who submit only rejectable claims in the initial filing and who save allowable claims for later amendments, so that clients can be billed repeatedly for amending the application, would have less incentive to drag out the prosecution. This also seems to argue for limiting the number of RCEs.

    None of this, of course, related to “wearing down” anyone. I am not refering to competent, sincere practitioners and examiners who get “worn down” by endless process, since I don’t think there are many. I think that all, or nearly all, of the competent, sincere practitioners and examiners will stick to their guns throughout prosecution, regardless of the number of RCEs that may be filed.

    I am new to this blog, so if you disagree, please be polite and don’t flame. Thank you.

  11. 73

    MaxDrei,
    You are beyond Incredible! The 81 year old lady received her third-degree burns from uniquely scalding hot McDonald’s coffee in TEXAS! She requested McDonald’s pay her $800 for medical expenses. McDonald’s refused her request!, despite the fact that:

    “McDonald’s had received at least 700 reports of coffee burns ranging from mild to third degree, and had settled claims arising from scalding injuries for more than $500,000.”
    (Nobody knows how many untold thousands of McDonald’s customers through the years actually burned themselves and never said anything.)

    With all due respect, you come off as a heartless, sleazy foreign patent dunce. I have tried and tried again, to no avail, to edify you. Alas, you ‘ll never ever get it no matter how you try. Unfortunately, some people are just that way — a blight on humanity.
    Please accept this advice:
    1) Live, and let live, and don’t suggest anything to do regarding the American inventors’ patent system. We’ll tend to that ourselves; we don’t want your negative foreign bias.
    2) Read all pertinent material before you think about posting comments.
    3) And, please, please have someone sensible read your asinine comments before posting.

    Have a nice day (;-), and don’t let the sheisskopf complex get you down.

  12. 72

    ……..but JOI, in my experience, McDonalds coffee really is no hotter than anybody else’s, at least at JFK or Newark or La Guardia or Logan or the airport at DC. So, why didn’t McDonalds say so? I’m genuinely perplexed. On that other thread, why was that “sleazy” of me?

    And this thread is about continuation practice, and what you can claim. When Applicants file continuations, are they “gaming the system”? I’m only looking at what sort of games people play. What’s your game, on this thread?

  13. 71

    Max, you asked above, in plain English:
    “As a matter of public policy, how free should an Applicant be, X years after filing, to ambush the public with a claim for which there is no counterpart disclosure in the original filing? What was the name of that CAFC case? Leibel?”
    It is a naïve question asked by a patent dunce.
    The answer is and always has been, nothing can ever be claimed, at any time, without prerequisite disclosure. Leibel, referring to 35 U.S.C. 112, affirms these dicta.

    Just like you Max to try to disavow your inapt remarks.
    Your attempt to distract from your gaff and change the subject is transparent — your reference to “Art 123(2) EPC,” i.e., “Adding subject matter by deleting from claim” has no antecedent in this thread.

    Max, you also described a sleazy tactic above. Considering your professed interest in “public policy,” isn’t it hypocritical for you to then suggest how to:
    “… bury your stuff in the spec, and initially not claim it? A careless competitor might not notice it. You can claim it later.”

    Like in the McDonald’s thread, “Internet Radio: eBay v. MercExchange” your sleaziness came through loud and clear when you asked why McDonald’s didn’t fabricate evidence — you asked:
    “The interesting thing for me is whether it’s true that coffee at McDonalds really is served 20 degrees hotter than everywhere else. I know that’s what the evidence established, but why didn’t McDonalds come through with evidence establishing the contrary?”

  14. 70

    Thank you JOI. My proposition is that there is more than one way to accomplish the public policy objective, of killing a belatedly added claim that is directed to a feature combination not contemplated at the time of filing the parent application. These ways include: 1. The Leibel way 2. Art 123(2) EPC. 3. The Doctrine of Late Claiming.

  15. 69

    MaxDrei, with all due respect, underlying it all, you are incompetent as a patent practitioner.

    Being an inventor, I prefer to leave comments about CAFC Decisions and patent statutes to attorneys. But I’ll make a exception in regard to your comment above.

    MaxDrei wrote: “As a matter of public policy, how free should an Applicant be, X years after filing, to ambush the public with a claim for which there is no counterpart disclosure in the original filing? What was the name of that CAFC case? Leibel?”

    In Leibel, the CAFC wrote on page 12:
    “We have previously construed the claims … and the district court was correct that it was not enabled.”

    I suggest you read the material you comment on. In this case, it is painfully clear that you neither read Leibel nor 35 U.S.C. 112 regarding a patent Specification. 35 U.S.C 112, talking about claims, says:
    “… shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

    PS: You said what you meant about American inventors in previous comments in plain English — nothing is distorted. You ought to own up to your bias and be ashamed.

  16. 68

    Ah, Inventopreneur(TM), now I see your reply. My own business (which thank you I already do mind) is being a patent attorney for clients who are mainly of US nationality. So (by using this blog)I dig away at the interface between US and European patent law. Some people are kind enough to reply, from which I learn. That way, I get to serve my US clients better. So, shouting at me to clear off is not going to work. You might have more success getting rid of me if you could persuade all other readers to ignore me. If what I write hurts you so much, scroll over it.

    With your latest selective quote from my earlier post, I find I now have US nationality. Thanks for the lesson in how to distort what somebody writes, by picking out a short string of words and placing them between other strings of your own words.

  17. 67

    Thank you for that response, anonymous agent, and for confirming that in USA one can indeed datamine the app X years later. How big can X grow to be? Might that also depend on the financial resources your client is willing to commit to the project?

    But I wasn’t thinking of a claim “limitation”. I was thinking of a shift from the originally claimed invention ABC.D (and ABC.E, ABC.F, ABC.G etc if you are going to include your myriads of claims). I was thinking of belatedly claimed invention AB.DEFG, which catches the competitor even though none of your original claims do.

    Can one claim AB.DEFG after doing your datamine X years after filing, and benefit from the ABC.N filing date?

    BTW, why write and include all those hundreds of claims in your PCT? All you need, to comply with European ideas on what constitutes new matter, is disclosure. Why not bury your stuff in the spec, and initially not claim it? A careless competitor might not notice it. You can claim it later.

    The money thing is a red herring. As a matter of public policy, how free should an Applicant be, X years after filing, to ambush the public with a claim for which there is no counterpart disclosure in the original filing? What was the name of that CAFC case? Leibel? Liebel? That decision seems to borrow European thinking too. Is that the US way to fulfill the public policy objective, in USA?

  18. 66

    CONSIDER THE SOURCE — MaxDrei, in other Patently-O threads, wrote:
    “So, damages apportionment might lead to the demise of the ‘small independent non-manufacturing inventor working in high tech’? Is there any reason why anybody should be concerned about the loss of that particular species? Quite the opposite. If they were all to disappear, I can imagine it having an aggregate positive effect on the US economy. …”
    “…vexatious litigants (including those asserting claims found to be invalid) get to go to prison…”
    Yesterday, MaxDrei wrote:
    “To set the record straight, MaxDrei was advocating prison for those who are in contempt of court. I had thought that unremarkable, uncontroversial and unprovocative.” In a “Loser Pays” system (which I was advocating) … [Self-employed inventors] should thank me, not curse me.”

    Inventors, including myself, have been soundly lambasting Max for such anti-inventor remarks. Max is not playing with a full deck — he has become disconcerted and embittered against inventors. Max would now scrutinize every aspect of American patents with a stubborn mean-spirited eye toward weakening American patents and taking away advantages available to an inventor to license his patent, including, for example:
    < Reducing the ability to enjoin an infringer of a valid patent; < Increasing the number of ways to invalidate a patent; < Limiting the damages award so that it pays an infringer to refuse to license; < Limiting the possible ways an inventor can patent his invention; and, < Sending “vexatious litigants … asserting claims found to be invalid” to prison. Max wrote to an inventor in another thread: “I thought I had told you why inventors are not balanced. … I have to be careful suggesting on a US site how to improve US law. I am likely to get told to mind my own business.” In another thread, a “flower shop” owner (Gravis Mushnik) wrote to Max: “We don't give a rat's ass about your wonderful EPO system. It's not relevant to us blokes over here in the lower 13 (as in colonies). Shut up already, Max.” Max replied: “[W]ho's ‘we’ Gravis? You and who else, pray? Most of my work is for clients of US nationality, and judging by my bank balance they certainly do give a whole lot of rats' arses for advice about patent law outside of the homeland.” Above in this thread, Max writes: “… if the balance is indeed skewed …” Max, yes, indeed, you are right about one thing, you should MIND YOUR OWN BUSINESS. Enjoy your “US nationality … bank balance” and shut up already! Please keep your skewed, anti-American inventor agenda to yourself. We are fed up with your hypocritical foreign bias.

  19. 65

    MaxDrei,
    I am aware of the European “strict definition” of new matter – i.e. not everything in the spec can be claimed later – unlike the USPTO where you can basically data mine an application 5 years later.
    What do I do for my “moneyed clients”??
    When I write the original PCT and cares about Europe, if the client has $$$ to pay for my time, I draft A LOT of claims – hundreds of ’em – claiming every freakin’ possibility.
    Then when I go national phase, I cancel almost all of ’em.
    Later, if I need a limitation in prosecution – no problem – I re-instate the cancelled claim, and the European examiner cannot assert a new-matter rejection because the combination was originally claimed.
    Of course, only my moneyed-client can afford this extra service, becaues it takes extra time.
    Thus, your tighter definition of new matter can also be circumvented for those with $$$.

    Anonymous Agent

  20. 64

    Putting aside for a moment the “rights” of the Applicant, can Mark Nowotarski expound a little on the “rights” that everybody else other than Applicant should enjoy, namely, to be able to look at the A publication and form a view (with a reasonable degree of legal certainty) what Applicant might be able to “cover”, eventually, using continuations. For investment, early, in further innovation, to the benefit of USA society, he needs that legal certainty. Looking in from Europe, it looks like a moneyed Applicant at the USPTO will always “have something pending” at least till the competing product is launched. He will then continue prosecution, with his own new claims, nowhere to be seen in his continuation antecedent applications, to ambush that product. Is the current balance right, then, between “fair” protection for what was already invented by the PTO filing date, and “reasonable” legal certainty for all those readers of the A publication, who have a legitimate need to know what are the forbidden metes and bounds?

    Of course, the remedy (if the balance is indeed skewed) is not a clamp down on filing a continuation but, rather, a tighter definition of what constitutes addition of new subject matter. But, that’s out of the control of the USPTO, right?

  21. 63

    “To act as if that occurs on valid rejections (as your post does) is the kind of naive twisting of facts you are so good at, Malcolm.”

    Ah, not only do we get the ad hominems from a sock puppet named ‘me’, the poor creature appears to be making a counter-assertion to the effect that a new Examiner has never picked up an old case and allowed it without recognizing that certain issues raised by the old Examiner were never addressed by the Applicant!

    The sock puppet is not only projecting with respect to its obnoxiousness, it’s projecting with respect to its naivety. Rather pathetic. And once again the usual finger-waggers and schoolmarms are nowhere to be found to chastise little old ‘me’ for his time-wasting stupidity. Surprise, surprise …

  22. 62

    For me, the situation is very simple. As David Boundy points out, “the issue is the law”. And the law says that an inventor can file the continuations etc. necessary to get the patent protection they are entitled to so long as said inventor is legitimately advancing prosecution. As a practitioner zealously representing my clients’ interests, I’m not about to simply let the USPTO take those client rights away through arbitrary rule changes.

    That’s why I signed on to Boundy/Strickland letter to the OMB and why I will continue to enthusiastically support their efforts with my own.

  23. 61

    I have experienced the “new Examiner. new life” phenomena only where the original Examiner was clearly erroneous in their arguments. To act as if that occurs on valid rejections (as your post does) is the kind of naive twisting of facts you are so good at, Malcolm.

  24. 60

    MM Comments “Hmm. So nobody else here has witnessed the “new examiner, new life” phenomenon?”

    I haven’t. But, in the very few instances where the examiner has changed I have received the “new examiner, new rejection” treatment.

  25. 59

    “For example, my experience tells me that once Examiners put in the effort and make sound rejections, you will not be able to budge them (or their successors) from those rejections in subsequent iterations.”

    Hmm. So nobody else here has witnessed the “new examiner, new life” phenomenon?

    Interesting.

  26. 58

    “I don’t know how true this is after Liebel. Liebel’s spec supported everything in the claims, but did not support the infringer’s embodiment.”

    After Liebel, it is clear that a spec that includes each limitation in a claim does not necessarily enable the claim as a whole. Liebel’s spec *included* every limitation in the claim, but according to the Feds, didn’t *enable*, and thus didn’t support, the claim.

    But Liebel was only minimally related to drafting claims in new ways to cover competitors products not previously contemplated. Liebel was about an applicant that (1) disparged the prior art’s lack of supposedly important feature, (2) obtained claims that did not recite that feature and (3) admitted failed to create a version of the invention that lacked the feature. If those facts were not there, the applicant probably would have been okay.

  27. 57

    Mark Lemley wrote:
    “I’m also a practicing lawyer, and believe it or not, I do know something about the patent prosecution process.”

    A quick check of the USPTO practitioner database does not show a Mark Lemley as a registered patent attorney. I would submit that anything he knows about the patent prosecution process was not obtained first hand.

  28. 56

    David Boundy said:

    If the patentee can find some support in the original patent application for the current claims, however, she can obtain legal rights over ideas that (at least in that form) never occurred to her until she saw what others were already doing.

    Response:

    I don’t know how true this is after Liebel. Liebel’s spec supported everything in the claims, but did not support the infringer’s embodiment.

  29. 55

    Mark Lemley wrote “One of the reasons I have less problem with RCEs than with statutory continuations is that they occur more quickly, are more likely to go back to the same examiner, and that examiner is less likely to err in allowing a bad claim they have recently rejected.”

    If in the absence to count changes, they do not limit RCEs, then I am fine with a limitation on continuations.

  30. 54

    MM wrote “And of course you bill all this work done on your own initiative to the client, right? I can just see the invoice: “Review invention disclosure; perform focused search to alleviate suspicions in attorney’s mind about patentability; sort identified references by degree of materiality; forward to client for discussion.”

    I’m dubious.”

    If no application is filed, I bill the client nothing (or I should say billed, I am in-house). If an application was filed it rolled into the analyzing, generating, crafting, etc. on the time sheet. A couple hours up front on an application does not add a whole lot to the final bill and your clients like you better if you don’t waste their money.

  31. 53

    Mark Lemley wrote:

    I’m also a practicing lawyer, and believe it or not, I do know something about the patent prosecution process.

    … Once back in the system, we’ll see some errors again, perhaps in the patentee’s favor and perhaps against them.

    … Finally, can someone point me to the final rules at the OMB?

    Response:

    Hi Mark (assuming that you are really you).

    Are you actually a patent prosecutor? There are plenty of practicing attorneys that “know something about the prosecution process” that are not prosecutors.

    I would be surprised to hear that you were preparing, filing, and prosecution patents yourself. Personally, I have written and/or supervised the writing of literally thousands of patents. I believe that doing so gives insights into the prosecution process that is not obtainable in any other way.

    For example, my experience tells me that once Examiners put in the effort and make sound rejections, you will not be able to budge them (or their successors) from those rejections in subsequent iterations. It is very easy for them to cut and paste the good rejections from the prior OA, which is all they have to do if the rejections are sound. The “wearing out” only applies when Examiners have to keep trying to defend bad rejections.

    As pointed out by a prior poster… the final rules are still a big secret.

  32. 52

    Boundy

    “I have seen no evidence of “wearing down” in any written source, in the file histories I’ve read, or in any anecdotal stories, and I have seen no basis stated for the conjecture that such a phenomenon exists.”

    In all your years of research, have you ever come across the term, “flooding the stage”?

  33. 51

    Mr. Boundy,

    I had the distinct pleasure of talking with Mr. Strickland yesterday to express my appreciation for the work that the two of you did in presenting important issues to the OMB and OIRA.

    Thank you.

    Mike Slonecker

  34. 50

    Professor Lemley wrote, “Responses to the other problems with continuations … all seem to amount to “but we want to be able to do that.”

    No. It’s policy question of how we treat inventors and copyists. Many of us represent both plaintiffs (who may benefit from continuation practice) and defendants (who may be harmed by continuation practice). Wanting to be able to do something has little to do with it.

  35. 49

    The first fallacy in Prof. Lemley’s analysis is mathematical – it assumes that each trial is independent. Not so. If there is a statistical correlation, it is in the other direction: once an examiner has set forth an erroneous analysis to paper, heels dig in, and it is extremely difficult to budge the examiner off that error. When an examiner makes an error, the error is seldom if ever a “wearing down” off a correct position. I have seen no evidence of “wearing down” in any written source, in the file histories I’ve read, or in any anecdotal stories, and I have seen no basis stated for the conjecture that such a phenomenon exists.

    The second fallacy is micro-economic, relating to PTO’s internal incentives. As we point out in our Attachment F (which we are trying to get properly posted), examiners have every incentive to reject incorrectly, to run up counts. As far as we can tell – and we filed FOIA requests to give the PTO an opportunity to rebut our hypothesis, which they were unable to do – examiners only have incentives to err on the side of over-rejecting. As far as we can tell, there is no adverse effect on compensation, promotion, or award eligibility for over-rejecting, or any other counterbalancing motivation. The probabilities simply do not accumulate in the direction Prof. Lemley suggests.

    The third error is in the attribution of motivation, “but we want to be able to do that.” What we “want” is not the issue; the issue is the law. Mr. Strickland and I point out at pages D-9 to D-10 of our papers we agree with the observations that Prof. Lemley set out in his “Continuations” paper, that every potentially-abusive loophole has been closed by statute, the Lemelson and Bogese cases, the PTO’s image file wrappers, and the like.

    As far as we can tell, the remaining classes of continuations are either necessary to an efficient patent system and exist in some analog in every other major nation’s practice, or fall within the Federal Circuit’s determination of what is “fair” and “equitable” in return for disclosure. Prof. Lemley and Ms. Moore quoted the relevant statement of fairness in their “Continuations” paper:

    It should be made clear at the outset of the present discussion that there is nothing improper, illegal or inequitable in filing a patent application for the purpose of obtaining a right to exclude a known competitor’s product from the market; nor is it in any manner improper to amend or insert claims intended to cover a competitor’s product the applicant’s attorney has learned about during the prosecution of a patent application. Any such amendment or insertion must comply with all statutes and regulations, of course, but, if it does, its genesis in the marketplace is simply irrelevant and cannot of itself evidence deceitful intent.

    To be sure, applicants do not simply have carte blanche to rewrite their claims. The new claims must find adequate support in the original application. If not, the patent will be invalid for lack of enablement or written description, or alternatively, the new claims will be considered “new matter” invented only as of the date the claims were added. If the patentee can find some support in the original patent application for the current claims, however, she can obtain legal rights over ideas that (at least in that form) never occurred to her until she saw what others were already doing.

    Kingsdown Medical Consultants Ltd v. Hollister Inc., 863
    F.2d 867, 874, 9 USPQ2d 1384, 1390 (Fed. Cir. 1988).

    Prof. Lemley’s observation about the invisibility of the rules is consistent with our attempts to gain some insight into the process. The PTO has determined that it wishes to engage in a “submarine” proceeding, with no disclosure of its data, assumptions, models, or analysis, and no image rule making wrapper.

    -David Boundy

  36. 48

    Professor Lemley wrote, “Iterate this a few times, and the statistical effect is obvious — examiners are more likely to issue both good and bad claims.”

    So with each continuation, we get more bad claims. Can we assume that the later bad claims will be worse than the initial bad claims?

  37. 47

    Professor Lemley wrote, “One of the reasons I have less problem with RCEs than with statutory continuations is that they occur more quickly, are more likely to go back to the same examiner, and that examiner is less likely to err in allowing a bad claim they have recently rejected.”

    One issue is the USPTO’s failure to clearly articulate rejections and thus provide a clear record to foster consistent examination of subsequent continuations. That should be addressed by the USPTO’s quality control process, not by limiting continuation practice.

  38. 46

    I have been on both sides of the fence. What people who have only ever been an Examiner have in common with people who have only ever been an attorney, is the assumption that your colleagues are generally as diligent, intelligent, and ethical as they are. If you are an attorney, rest assured that as incompetent, unethical, or uncaring as a certain few Examiners can be, there are attorneys out there as equally incompetent, unethical, or uncaring. Vice versa for you Examiners. If you are posting to this blog, I suspect that you are not one of the dregs on either side of the fence, but actually care about the U.S. patent system, are interested in keeping abreast of current events, and in learning from each other so you can do your job better.

    Yes there are lawyers who, either on purpose or out of incompetence will submit a claim that is on its face unpatentable. Do these people believe that the claim should be rejected? Who knows? Likewise on the Examiner side, there are definitely Examiners that, in contravention of their duties, deliberately game the system or out of incompetence are unable to make a coherent rejection.

    My point here is that we should not be focusing on the worst cases and accusing each other of bad behavior across the board. The common enemy is the system in which we are forced to operate, and which has been corrupted by poor management and a succession of failures of addressing key concerns by Examiners as well as outside attorneys. These failures span decades, and in my judgment started in the 60s or 70s when the warcry of the PTO was “compact prosecution,” Examiners were placed on a strict quota system, wherein each application was given a single disposal regardless as to how much work went into its prosecution. The number of hours credited per application was assigned based on the classification in an arbitrary manner, which has not been adequately updated to reflect actual time requirements in the last 4+ decades.

    The purpose of this system was to prevent piecemeal prosecution and better customer service, but the result has been the opposite, with Examiners being encouraged draw out prosecution and generate an extensive continuation docket. (First FWCs, then CPAs, now RCEs.)

    Every new rule implemented by the PTO since then has only exasperated the situation, just as the proposed rules now being discussed would. The only way out of the situation is a return to customer service. Examiners should not be afraid to allow claims if they believe them to be allowable. They should be more afraid of making a rejection they KNOW could not be maintained on appeal, just like an attorney should be afraid to report back to the client that the application is fatally flawed for failure to provide an enabling disclosure.

    The current management apparently runs the PTO out of fear and intimidation, and proposes rules that only punishes applicants for attempting to protect their rights within the currently flawed system rather than work with them and/or correct flaws. A new regime is needed wherein success is not measured by a +1 in a spreadsheet column, but by the overall quality and timeliness of the examinations, the rejections being scrutinized for quality as well as allowances.

  39. 45

    Mr. Lemley,

    It is my understanding, after talking with those who met with OMB/OIRA, that the proposed final rules are known only to OMB/OIRA, the PTO, and other agencies having an interest in the matter (e.g., the SBA).

    Everyone else will just have to wait for their “grand unveiling”.

    As for being a member of “Academics Anonymous”, it is reassuring to know you are engaged in a cooperative program to break bad habits.

  40. 44

    “The theory of “wearing down” is focused not on individual examiners so much as the PTO as a whole.”

    I think the strategy is less one of “wearing down” than continually throwing stuff up against the wall until YES!!!! it finally sticks.

    It is a well-known and incontrovertible fact that Examiners (and their supervisors) retire, quit, die, or get fired. If one Examiner refuses to allow the claims, then the present rules allow many opportunities for well-heeled applicants to delay and try again until an Examiner comes along who is willing to grant the applicant’s wishes. On top of that, there always a possibility that changes in the law will increase the likelihood of patentability.

    The recent invention of peanut-shaped knee pads (an innovation that surely would not have come about were it not for the incentives provided by patent protection) is but one more tool for applicants to employ in their relentless and hope-filled quests for more patents.

  41. 43

    I feel a bit like I should be going to an Academics Anonymous meeting: “Hi, my name is Mark, and I am an academic . . . ” But of course, I’m also a practicing lawyer, and believe it or not, I do know something about the patent prosecution process.

    Let me say a bit about the “wearing down” argument that seems to have provoked the most ire. [Responses to the other problems with continuations — delay, claim change, secrecy — all seem to amount to “but we want to be able to do that.”]. The theory of “wearing down” is focused not on individual examiners so much as the PTO as a whole. Suppose that an examiner gets it right 60% of the time, wrongly allows bad claims 20% of the time, and wrongly rejects good claims 20% of the time. [No one knows what the actual numbers are, of course, but surely the idea that there are errors on both sides shouldn’t be controversial]. The continuation process allows examiner errors allowing bad claims to go unchallenged (unless and until litigation) — the patent just issues. By contrast, both good and bad rejections can get challenged, and go back into the wheel. Once back in the system, we’ll see some errors again, perhaps in the patentee’s favor and perhaps against them. Once again, the errors against the patentee can be challenged while the ones in the patentee’s favor can’t be. Iterate this a few times, and the statistical effect is obvious — examiners are more likely to issue both good and bad claims.

    One of the reasons I have less problem with RCEs than with statutory continuations is that they occur more quickly, are more likely to go back to the same examiner, and that examiner is less likely to err in allowing a bad claim they have recently rejected.

    And of course I agree that changing the count system is desirable and would deal with some (though not all) of the continuation problem. My impression from folks at the PTO is that union rules mean that it’s easier to change continuation rules than to change how examiners are evaluated and compensated.

    Finally, can someone point me to the final rules at the OMB? Everyone seems to be complaining about them, but I haven’t seen the text of what they are actually complaining about.

  42. 42

    Lionel writes:

    “Have I ever strongly believed that “C’mon, this has got to be out there somewhere!”? Yes. In those cases I figure out a few claims, and perform my own keyword search. If I do not find anything, I file. If I find something I send it to the client or sit down with the client and ask them to identify all the advantages and differences between his/her invention and the patent I found.”

    And of course you bill all this work done on your own initiative to the client, right? I can just see the invoice: “Review invention disclosure; perform focused search to alleviate suspicions in attorney’s mind about patentability; sort identified references by degree of materiality; forward to client for discussion.”

    I’m dubious.

  43. 41

    SF – you are right on.

    However, I do not fault Mark for the disconnect between what he writes and what practitioners experience. He is an academic, and as such he is expected to publish articles that other academics find intellectually stimulating. From that perspective, he is right on and very successful… perhaps the most successful professor of Intellectual Property of his generation.

    The problem I see is that there is currently no champion for the practitioners in the academic arena. Where are all the law review articles that rebut Mark’s perceived problems? Are we all so busy with our practice that nobody has time to write a rebuttal until threatened with rule changes that are based on faulty assumptions?

    On another topic… I cannot see how an examiner can get worn down by repeating a good rejection (which usually just involves a single copy-paste operation). They only get “worn down” when they have to revise their rejections/arguments/searches because their previous rejections/arguments/searches were either overcome by amendment, or were bogus in the first place.

  44. 40

    Luke wrote “Soory all them Malcolm-bashers out there, but Lionel Hutz’ statement that “No patent attorney files a case claiming material they believe will be rejected” deserves someone going “gotcha” on, and then repeating it several times over.

    People file crap claims all the time because it’s what the clients want. You DO serve your clinets, right? It might be some poor research head in a small department of some large corporation who has to file X number of claims a year to look “productive”, so he instructs his agent/attorney to file them no matter how inane they look. It might be some back-yard inventor who simply won’t take advice that they’re throwing good money away on stuff that is obviously, well, obvious. there are any number of reason why you might file a claim you think has no shot of making it. Such is the nature of the system, for better, or worse.”

    If you file claims you know are anticipated by the prior art then I believe you are behaving unethically. Have I ever strongly believed that “C’mon, this has got to be out there somewhere!”? Yes. In those cases I figure out a few claims, and perform my own keyword search. If I do not find anything, I file. If I find something I send it to the client or sit down with the client and ask them to identify all the advantages and differences between his/her invention and the patent I found. If the client cannot identify any differences, we don’t file. If they can, and those differences have any technical significance, I file.

  45. 39

    Examiner worte, “It seems to me that you’re leaving yourself open to this. I would suggest throwing in at least one *really* comprehensive claim that would force the examiner to find a reference that is basically the same as your disclosure. That way the examiner can’t ever go final without actually finding the invention in your spec, and you can amend the other claims as needed. Is there a reason applicants don’t do this more often?”

    I try to, but many times only in dependent claims. A lot of times the limitations in dependent claims get cursory inspection. In some cases, I have had claim sets allowed, but there is still a sizable difference between the allowed subject matter and the rejected subject matter and for the rejected subject matter I try to amend as minimally as possible to overcome each rejection.

  46. 38

    I have always been taught (and taught) to claim slightly broader than the art thought to be the best. That is simply good practice. If you write only a picture claim for every case then you really haven’t served your client, as even Malcolm Mooney could find a work around to your broadest claim.

    This does assume the attorney does at least a cursory search, but I have amazingly found some attorneys do no search and depend on the Office to find the art.

  47. 37

    Soory all them Malcolm-bashers out there, but Lionel Hutz’ statement that “No patent attorney files a case claiming material they believe will be rejected” deserves someone going “gotcha” on, and then repeating it several times over.

    People file crap claims all the time because it’s what the clients want. You DO serve your clinets, right? It might be some poor research head in a small department of some large corporation who has to file X number of claims a year to look “productive”, so he instructs his agent/attorney to file them no matter how inane they look. It might be some back-yard inventor who simply won’t take advice that they’re throwing good money away on stuff that is obviously, well, obvious. there are any number of reason why you might file a claim you think has no shot of making it. Such is the nature of the system, for better, or worse.

    Regards, Luke

  48. 36

    If the USPTO more aggressively followed 112 paragraph 1 (say similar to the EPO disclosure standard), would continuation applications have more difficulty and result in more of them being abandoned by their owners? Perhaps that would reduce backlogs.

  49. 35

    THE MAN, why don’t you write up your complaint and put the evidence together. I’ll publish it here on Patently-O for $180. At that point, case will at least be brought to the attention of Undersecretary Dudas and others.

  50. 34

    It’s what $180.00 to file in DC court. Get a form complaint (notice please under Rule 8 is pretty easy). Virtually no discovery, just take what is in the file. Use the inventor as the Expert. How expensive can that be 10 K tops. Christ two office action and an RCE and you are half way there. Now take some embarrassing Office actions, and man I have more than my fill, and the political ramifications from boat loads of embarrassing court cases. Don’t forget, that this costs the USPTO, as well. Perhaps once they start bleedin money defending these suits they will take a more active interests in see the rules followed. Remember that there are 100,000s of applicants and only 4 or 5 solicitors for the USPTO.

  51. 33

    The Man,

    You find the clients willing to bank roll of these USDC “patent prosecution litigations” you want to bring, and we’ll all be behind you 100%. :-)

    In all seriousness, you can’t sue the Director (currently Mr. Dudas) until you’ve exhausted your administrative remedies at the PTO. David Boundy tried that (valiantly I might add), but was unsucessful).

    Do I think patent applicants should have a remedy, for example in a USDC, outside the PTO? Of course. I personally experienced cases where it was abundantly clear that the examiner and the SPE and the TC Director were in cahoots to essentially keep the application in a never ending prosecution loop. Got a total reversal at the BPAI,and 6 months later got a new rejection. Even worse than the rejections we got reversed. Nothing could be done about it but go back to prosecution.

    TC Director’s are all bluster. Feel free to take on as many as you like.

    JD

  52. 32

    I EAT EXAMINER’S FOR LUNCH who attempt to get counts by RCEs. I have one case that is on its Fifth Final Office action and eight office action total. There has not been an RCE filed in the case yet. I have another case where it appears the technology director is attempting push his weight behind a foced RCE. Now I have never “taken on” a Director, but I doubt this will be difficult.

    What I really enjoy most about prosecution is the legal aspect of the same. I mean the mindset appears to be that just because an examiner thinks something is not patentable they can maintain that position despite volumes of case law and now evidentiary support for thier belief. As a result, I find myself constantly describing the concept of due process, notice, the Code, the rules and such to them. What I think we should really do is to make it where a practitioner can bring suit against the commissioner in any district court in the United States for a patent. I mean I have cases that are down-right embarrassing for the USPTO. I suspect if I could bring these matters into a public tribunal the Director would cave instantly.

    In short, we could fix all the problems of the USPTO is we could readily sue for a patent in any disctric court. Any comments on this?

  53. 31

    ojidsf, I greatly appreciate the candor and insight.

    I can honestly say that I have never asked an Examiner “to go through the specification and make suggestions on what they can bring in from the spec.” I have occasionally asked an Examiner who objected to the wording of a claim to provide me with an alternative that would satisfy the Examiner, rather than forcing me to guess. Or to tell me what is the minimum disclosure in the specification that would, in fact, suffice to enable the claims I was seeking. While those sorts of questions could fairly be described as “fishing,” I suppose, they could also fairly be described as simply trying to determine precisely what the Examiner is objecting to. Mileage varies.

  54. 30

    “Pour a couple shots of whiskey and start typing [belligerent comments on Patently-O].”

  55. 29

    “Any attorney ever work on a case they didn’t think was patentable but the partner at your firm wants you to try to get a patent for it anyway? What did you do?”

    Pour a couple shots of whiskey and start typing.

  56. 28

    “Please give those of us actually contributing to the dialog the benefit of the doubt.”

    How about we take a moment to read our comments for accuracy and clarity before hitting the “post” key? That way others won’t have to waste time trying to figure out what the commenter “meant to say” or waste time addressing comments that contain alleged gaffes, as Examiner did at 6:26 pm.

    “In this case, just assume Lionel meant, “No patent attorney files a case claiming material they believe *should* be rejected.”

    That’s also false. Or should I give you the “benefit of the doubt” and assume that you meant to write something else?

  57. 27

    Why don’t examiners point out what they think might be patentable?

    If you don’t have sig authority, considering the current environment at the PTO where many people are afraid to allow anything they didn’t personally search, indicating allowable subject matter could end up costing you valuable time. Consider this. You’re an assistant examiner. You’ve done a kick ass search and find some subject matter you think is allowable. One problem. The primary/SPE who signs off on your work thinks the claim is too broad and won’t let you allow it. What do you do? Any attorney ever work on a case they didn’t think was patentable but the partner at your firm wants you to try to get a patent for it anyway? What did you do? I just allowed something the other week where I did an extremely thorough search but the primary in my art unit wouldn’t let me allow it because even without searching, he thought it wasn’t allowable. As it turned out, the reason I wanted to allow was reasonable. The claims looked broad, but in talking to another primary who was more knowledgeable about the technology, the subject matter I had trouble finding didn’t come into regular use in the industry until about 4 years from my priority date. I know attorneys would rather junior examiners “stand up” for what’s right when primaries won’t let us allow for no other reason than “it’s too broad”, but the reality is that a junior examiner stands a better chance of surviving long enough to get their own stamp one day to allow these broad claims if they keep quiet and send out the shitty rejections. You want the allowance, you fight for it.

    Another reason many examiners don’t indicate allowable subject matter is that you run the risk of finding art in an updated search which would cause you to have to withdraw the indication of allowability. This means having to send out a second action nonfinal with no count. It’s safer to send out a so-so rejection for something that might be allowable and see if the attorney catches it. If the attorney does catch it and a subsequent search turns up nothing, then you can allow. If the attorney doesn’t catch it, then that’s just too bad. Yeah, yeah, examiners should do a thorough search the first time. Good idea but no matter how good of a search you do, you always run the risk that an updated search will turn up something especially if you get an idea for searching that didn’t occur to you the first time. Contrary to popular belief, subsequent searches are not always just reviewing what you’ve already searched and should take little time. For me at least most of my subsequent searches are almost as thorough as my first search.

    One thing I hate is when attorneys call up and ask if there’s anyway they can amend to get an allowance. One, I don’t have sig authority, so that’s not something I can negotiate. Getting a primary involved rarely helps because most don’t want to make a suggestion because they don’t know the case well enough and don’t have the time to review it since it’s not their case and they’re afraid of making the wrong suggestion. If there’s anything in the claims some primaries might be willing to suggest allowability if you move up limitations. But what if there’s nothing in the claims that’s allowable? I’ve had several attorneys who have asked me to go through the specification and make suggestions on what they can bring in from the spec. I’ve also had several who after I’ve wasted a day to a day and a half combing through the spec and getting approval from a primary to allow if they included a limitation from the spec refuse to do so. When they first talked to me they said they were willing to do anything for an allowance. Apparently “anything” doesn’t really mean “anything” since I just end up wasting my time. For those who are thinking that I’m making this up and no attorney would ever say such a thing, let me assure you that I’m not making this up and I’m not the only examiner who have run into this. Also, what should I do when I honestly believe that you have nothing in your application that’s allowable?

  58. 26

    As to examiners not applying the best prior art as early as possible, I know that some examiners do that, but it’s not always the case even if the newer reference came from the same class/subclass. Factors such as time and understanding of the invention can come into play, not to mention the examiner could think of another angle to search later on. A search during a biweek where the examiner only has two amendments due is going to be more comprehensive than one where he has 10 due. A later search after a response has come in may actually be more comprehensive and turn up better references since there’s more time then.

  59. 25

    MM wrote, “There is a perception, I think, that once an Examiner allows such a narrow ‘comprehensive claim’ that broader claims will subsequently be more difficult to obtain because the Examiner has already ‘delivered the goods,’ so to speak.”

    I agree. There’s definitely a perception that Examiners will be biased against subsequent attempts to seek broader claims. That’s why some practitioners have dependent claims that add very little so that, in the event of a rejection, the dependent claims might get allowed and thus give the applicant the broadest claims possible upfront.

  60. 24

    I know I am going to regret asking this, but Malcom, don’t you have anything better to do than play “gotcha!” with other commenters’ posts? Please give those of us actually contributing to the dialog the benefit of the doubt. In this case, just assume Lionel meant, “No patent attorney files a case claiming material they believe *should* be rejected.”

    You’re “gotcha!” attitude brings the whole tone of the discussion down to neanderthal-level, and makes this forum less inviting for those of us with something that is actually interesting to say. Therefore, please refrain from such comments in the future. We don’t share your sense of humor, and your comments are not appreciated.

  61. 23

    “That way the examiner can’t ever go final without actually finding the invention in your spec, and you can amend the other claims as needed. Is there a reason applicants don’t do this more often?”

    There is a perception, I think, that once an Examiner allows such a narrow “comprehensive claim” that broader claims will subsequently be more difficult to obtain because the Examiner has already “delivered the goods,” so to speak.

  62. 22

    Lionel wrote

    “No patent attorney files a case claiming material they believe will be rejected.”

    LOL. Meanwhile, back on earth …

  63. 21

    Messrs. Boundy and Strickland met with a lot more people than just Ms. Dudley. Also in attendance at the 06/15/07 meeting were:

    David Rostker OMB/OIRA
    Lisa Branch OMB/OIRA
    Rob Alderfer OMB
    Aaron Flynn OSTP
    Peter Robbins DOC/OGC
    Carrol Barnes SBA/Office of Advocacy
    David Boundy Cantor Fitzgerald
    John Love USPTO
    Jennifer McDowell USPTO
    Nikesh Jindal OMB
    Mike Strickland GlaxoSmith Kline

    Mr. Love, of course, is in charge of patent examining policy at the PTO. Ms. McDowell is on the PTO’s legal staff. I have a feeling the PTO representatives were likely not expecting such a meeting ever taking place.

    No matter how the proposed rules turn out, there is an important lesson to be learned here. Rulemaking is not the lone province of each federal agency. Their proposed rules are independently vetted, and the opportunity for presenting public comment is more extensive than just responding to an agency’s notice of proposed rulemaking that appears in the Federal Register.

  64. 20

    “Really? No patent attorney files a case claiming material they believe will be rejected. If the Examiner identifies what they believe to be allowable art, I would take it under serious consideration and advise the client to as well.”

    This is just false. I’ve seen entire sets of claims that literally required only a computer. Though I’m glad to hear that you’re not one of the culprits.

    “A lot of times I get bare bones rejections and if I cannot outright argue against the rejection I amend the claims as minimally as possible to overcome the rejection. Am I supposed to psychically predict what new reference you will throw at me in the final rejection?”

    It seems to me that you’re leaving yourself open to this. I would suggest throwing in at least one *really* comprehensive claim that would force the examiner to find a reference that is basically the same as your disclosure. That way the examiner can’t ever go final without actually finding the invention in your spec, and you can amend the other claims as needed. Is there a reason applicants don’t do this more often?

  65. 19

    Examiner,

    I appreciate your candor. I suspect you’re posting anonymously because you speak what the examaining corps, and POPA, regard as heresy – that it’s ridiculously easy to make production under the current examiner PAP. If your identity ever becomes known, run. Run fast. They will skin you alive if they catch you.

    Even if applicants actually put their cases in condition for allowance, or the Board affirms the rejections, isn’t it still much more work for you to read, search, examine, and write OA’s/Examiner’s Answers that will cause applicants to do what you want? I was an examiner, and let’s be honest, there are no counts easier than changing the date on your last OA, signing it and turning it in. That’s a heck of a lot easier than reading a new app, conducting a search and writing a new OA from scratch, no?

    I must respectfully disagree with you on the 4-5 RCE comments. The reason 4-5 RCE’s get filed is usually because the examiner is presenting a moving target. Make an amendment, get a new reference, even though the amendment may have been totally foreseeable and the reference is one that should have been found during the first search and applied during the first action. I read many comments by examiners about applicants “hiding the best prior art.” It’s a practice many of them are expert at themselves. Apply new reference (from same subclass(es) searched the first time around), ignore all arguments, make it final, issue Advisory and wait for the RCE counts. The current system encourages that behavior. Rewards it. To the extent that the rules are designed to put a stop to it, I would favor them. But I don’t think the rules will, and I don’t support them. There are other ways of reducing the backlog, but would require PTO management to make tough decisions, which they will not do. Much easier to blame the applicants and attorneys.

    I would also respectfully direct your attention to MPEP 707.07(d), which states: The examiner should, as part of the first Office Action on the merits, identify any claims which he or she judes, as presently recited, to be allowable and/or should suggest any way in which he or she considers that rejected claims may be amended to make them allowable.

    And yes, I’m aware of the remainder of that MPEP section. But, if the examiner considers some feature, either not claimed, or claimed in a certain manner that can be interpreted to read on the prior art, but amendable so as not to read on the prior art, to be allowable, the examiner should indicate such. And not wait for 4-5 RCE’s and a phone call to the SPE/Director to do it. That’s not doing our job. That’s doing your job.

    There’s a reason that 50% of cases that get appealed never make it to the Board and are re-opened. And it’s not because the attorney is not doing his/her job. It’s because the examiner isn’t doing his/hers.

    Again, I appreciate your honesty. If you need a safe house to hide out from the pitch fork and torch mob, let me know.

    JD

  66. 18

    Examiner wrote “I suspect Schunder is referring to when the SPE or Director directs the examiner to basically do the attorney’s job for him/her, thus getting the attorney off the SPE’s or Director’s back. This happened to me once.

    The SPE or Director could “order the examiner to find something allowable” at any time, or even in every application. The reason they wouldn’t is because this is pushing more work onto the examiner – work that should ideally be done by the attorney. That means less money for the office.”

    Really? No patent attorney files a case claiming material they believe will be rejected. If the Examiner identifies what they believe to be allowable art, I would take it under serious consideration and advise the client to as well.

    A lot of times I get bare bones rejections and if I cannot outright argue against the rejection I amend the claims as minimally as possible to overcome the rejection. Am I supposed to psychically predict what new reference you will throw at me in the final rejection?

  67. 17

    Those companies should quit whining. Just wait until the top notch engineers assign all future intellectual property rights to their families while still in college. Then all the employee agrees will be useless, because the engineers will have no intellectual property rights to assign to companies. Better yet, top notch engineers from schools should be treated like professional sports stars. The negotiation of the IP rights should be separate from the offer of employment. For instance a new employee would work for a wage, but the assignment of the employee’s IP rights should be the subject of professional negotiation between the employee’s attorneys and the company’s attorneys.

  68. 16

    Another examiner here (not Schunder), but I’m in a similar situation. That is, I haven’t examined a new case in over 18 months. I think John’s post deserves a reply…

    “If you’re getting 80-90% of your counts doing ‘rework’ (i.e. cases you’ve already read, searched and examined), how are you going to make your production when you have to get 100% of your counts examining new applications?”

    I can only speak for myself. But, I expect that applicants will actually put their cases in condition for allowance, or the board will abandon the cases for them. Either way, I just do what I do now and get disposal counts. With the huge number of RCEs that get filed it’s ridiculously easy to make production and bill huge amounts of overtime or get large bonuses. I suspect I will have to cut down on the overtime somewhat. I would welcome this if it would make the system more efficient.

    How does getting an extra 8-10 counts (from 4-5 RCE’s) for a case that you’ve already read, searched and examined “wear you down”? Why would you agree to allow something that you’ve determined is not allowable simply because applicant filed 4-5 RCE’s? If the SPE/TC Director can “order the examiner to find something allowable” after 4-5 RCE’s, why can’t he/she order you to do it in the first Office Action? Doesn’t the MPEP direct you to suggest what you may regard as allowable? Why does my client have to file 4-5 RCE’s to get what they should have gotten in the first place?

    I suspect Schunder is referring to when the SPE or Director directs the examiner to basically do the attorney’s job for him/her, thus getting the attorney off the SPE’s or Director’s back. This happened to me once.

    The SPE or Director could “order the examiner to find something allowable” at any time, or even in every application. The reason they wouldn’t is because this is pushing more work onto the examiner – work that should ideally be done by the attorney. That means less money for the office.

    “As to your concern over ‘worthless inventions,’ as all of us on this side understand, the ‘worth’ of any invention is determined by the applicant (aka our client). Not by us. And certainly not by you.”

    I can generally agree with you on this one.

  69. 15

    I agree with Michael L. Slonecker. I read the Boundy letter and part of the appendices and am very impressed. Congratulations to the authors and supporters of this letter on creating such a thorough and convincing review of the problems with the proposed rules. I had been discouraged to date as this process moved along, but am cheered by this effort and am hopeful that justice will prevail. Following all the “applicant bashing” the PTO has enjoyed during this process, I can once again lift my head and be proud to prosecute patents. Congratulations again, and thank you.

  70. 14

    I find it reassuring that those submitting comments to OIRA predicated their arguments along the lines of the important role OIRA performs in the rulemaking process, and especially including the referenced Executive Order.

    OIRA is not subject to the influence of the rulemaking agencies, and stoutly defends its role as an independent rulemaking “watchdog”.

    Since it seems apparent that the PTO is unwilling to modify the proposed rules to comport with significant issues brought to its attention during the public comment portion of the process, perhaps OIRA will lend more credence to the public comments that the PTO so blithely ignored.

  71. 13

    “Our team has already divided several applications into many more along sets of claims. We are worried examiners will not restrict in applications where restriction would normally be expected (although examiners often restrict when they should not). PTO restriction practice is too unpredictable and downright unexplainable in many case to do otherwise.”

    Facing fewer claims per application and a limited continuation practice, this is the logical approach for applicants. Look for the backlog to swell with these new rules.

  72. 12

    Our team has already divided several applications into many more along sets of claims. We are worried examiners will not restrict in applications where restriction would normally be expected (although examiners often restrict when they should not). PTO restriction practice is too unpredictable and downright unexplainable in many case to do otherwise.

  73. 11

    “My experience is that an attorney can get a patent by filing 4-5 RCE’s (even with a worthless invention), then call the TC director/SPE and complain about the examiner dragging their feet and wasting client’s time.”

    LOL. That’s reason number 14 why a legal degree is superfluous for patent prosecutors.

    I remember way back when I started out in this weird business sitting in a partner’s office listening to the partner “argue” with an Examiner about the allowability of a client’s claims. Here’s a summary of the partner’s argument: “BOO HOO HOO HOO HOO HOO HOO!!!!!!”

    Frankly, I felt ashamed. But I was idealistic and naive back then. ;)

  74. 10

    “Mark Perdue writes that a conclusion that continuations clog the PTO is factually unsupportable. I disagree. As an examiner, I start one new application every bi-week – this is factually supportable. The rest (80-90%) of my work is continutaions/RCE’s. It surely clogs applications in my class. If the continuations/RCE’s were limited, cases would flow much better.”

    If the continuations are limited, then people will file more new applications covering different claimsets. The number of new applications that you receive may be close to the number of new apps + continuations that you see now. If this assumption is correct, then the proposed rules will do next to nothing to reduce the backlog.

  75. 9

    Schunder,

    If you’re getting 80-90% of your counts doing “rework” (i.e. cases you’ve already read, searched and examined), how are you going to make your production when you have to get 100% of your counts examining new applications?

    How does getting an extra 8-10 counts (from 4-5 RCE’s) for a case that you’ve already read, searched and examined “wear you down”? Why would you agree to allow something that you’ve determined is not allowable simply because applicant filed 4-5 RCE’s? If the SPE/TC Director can “order the examiner to find something allowable” after 4-5 RCE’s, why can’t he/she order you to do it in the first Office Action? Doesn’t the MPEP direct you to suggest what you may regard as allowable? Why does my client have to file 4-5 RCE’s to get what they should have gotten in the first place?

    As to your concern over “worthless inventions,” as all of us on this side understand, the “worth” of any invention is determined by the applicant (aka our client). Not by us. And certainly not by you.

  76. 8

    “My experience is that an attorney can get a patent by filing 4-5 RCE’s (even with a worthless invention), then call the TC director/SPE and complain about the examiner dragging their feet and wasting client’s time.”

    So by limiting continuation practice, examiners won’t have to defend their actions to their superiors. Is this supposed to be an argument in favor of the new rules??

  77. 7

    I hat academic bashing and I think they often provide a valuable external POV.

    Having said that, Mark clearly did not speak with anybody actually involved with the prosecution of applications. As the first poster noted almost none of his identified problems are problems.

    Most importantly, Mark and Kim also failed to account for the way Examiners are rewarded for the current system. Specifically, as soon as an Examiner can make a rejection final, he does. They are not rewarded for rejections after the first. If I amend my claims at all, I am likely to receive a final rejection because the Examiner can finally reject if my amendment causes him to change his rejection.

    If the USPTO does limits continuations, they definitely need to prevent Examiners from issuing final rejections where they are not maintaining the same rejection(s) against all the claims. If this means rewarding the Examiner with a count for every rejection, good.

  78. 6

    Mark Perdue writes that a conclusion that continuations clog the PTO is factually unsupportable. I disagree. As an examiner, I start one new application every bi-week – this is factually supportable. The rest (80-90%) of my work is continutaions/RCE’s. It surely clogs applications in my class. If the continuations/RCE’s were limited, cases would flow much better.

    As “wear down” arguements – most of the time we do like RCE’s. But there are some times when we are worn down. ALso, even for cases where examiners are not worn down, it can create a huge barrier that (in a sense) wears down SPE’s and group Directors. My experience is that an attorney can get a patent by filing 4-5 RCE’s (even with a worthless invention), then call the TC director/SPE and complain about the examiner dragging their feet and wasting client’s time. Rather than pore over the huge record to see if the Examiner acted properly, it is easiest for them to order the examiner to find something allowable – or something else that will make the attorney quit calling.

  79. 5

    There is one small bit of truth to the “wearing down” of an examiner. If an examiner is asleep at the switch on the parent case presenting reasonable claims, the odds are pretty good that the applicant can slip more outrageous claims past the examiner in a continuation. However, the problem there is not continuation practice, but the examiner in the first place.

  80. 4

    Lemley and Moore can just go home now…they were(are) simply academics looking to publish and their ideas should have been vetted by real practioners before being picked up by the Office as some Godsend. Hopefully the OMB will kill these and we can start over from scratch – and do something meaningful and correct.

  81. 3

    Anybody who claims that applicants and attorneys are “wearing down” examiners with continuations has 1)never been an applicant or a prosecuting attorney and/or 2) an examiner. Examiners love continuations, divisionals and RCE’s. Who do you think is generating all of that “rework” at the PTO? Who is benefiting from all that “rework”? How else would 60+% of the examining corps be able to produce 110+% of their expected production? Why do examiners send out restriction requirements that require election between two embodiments? Are they preserving the integrity of the “one invention – one patent” ideal? If you believe that, I have some great ocean front property in Nebraska I’d like to sell you.

  82. 2

    As for the first major problem identified in the Lemley/Moore article, continuation practice may force competitors to wait the entire 20 year statutory term before being certain that they can freely copy inventions from a published patent application. This is the right result because it allows the public to get the full benefit of the patent’s disclosure after the patentee gets the full benefit of the 20 year term. Tired of waiting 20 years? Then invent it first!

    As for the second major problem identified in the Lemley/Moore article, this is pure speculation that one might expect from persons without substantial prosecution/examination experience. Examiners have no incentive to “wear down” because, by continuing to reject the claims, they can ride the RCE/Continuation easy-count-generating gravy train. Most examiners would kill for a continuation-stacked docket of cases.

    As for the third major problem identified in the Lemley/Moore article, this practice has been noted with approval by the Federal Circuit. If this is such a serious problem, Congress should tighten the rules of written description, e.g., like the EPO. (I don’t believe that it is such a serious problem.)

    As for the fourth major problem identified in the Lemley/Moore article, mandatory publishing would solve the problem.

    In sum, these “major” problems are either not problems at all or are best addressed by other means.

  83. 1

    Given Professor Lemley’s about-face in KSR, perhaps he should go on record regarding the ill-founded conclusions of the continuation paper.

    Any conclusion that continuations clog the PTO is factually unsupportable.

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