Current status of the USPTO’s changes to continuation and claiming practice:
- Rules Approved: Two sets of final rules have been approved by the Bush administration (OMB).
- Preliminary Rules Softened?: The preliminary rules published by the PTO limited the number of continuations that could be filed based on any given invention (continuation limitations) and also limited the number of claims per application that would be examined (claim limitations). Unsourced leaks from within the PTO indicate that the final approved rules are somewhat softened from those originally released. The exact content of the final rules will not likely be available until the PTO publishes them in the Federal Register.
- Potential Rules: Hal Wegner and others have indicated that the new rules will potentially limit continuations for new applications to one RCE and two continuations. Further continuations would likely be available after showing cause. For applications already filed, the PTO may allow three continuations. Claim may be limited to twenty-five total claims, five of them independent.
- Timing: The PTO apparently has the green-light to move forward. The rules can become effective within 30–days of publication in the Federal Register. My expectation is that the publication will occur in the range of Aug-Oct and the effective date will be in the range of Sept-Nov.
- Currently Pending Applications: It is almost certain that currently pending applications will fall within the continuation rules. The currently pending applications will likely be allowed a third continuation. However, there are some indications (rumors) that recently filed applications (that have not yet received an office action) will be limited to two continuations. Any continuations filed after the rule change will fall within the claim-number limitations.
- What to do now?: Many companies have reportedly already filed continuation applications in the hope of avoiding some of rule-change sting. That approach appears prudent – especially for valuable cases where multiple continuations have already been filed. You may want to talk with David Boundy (DBoundy@Cantor.com) about fighting the rules and Kevin Noonan (noonan@mbhb.com) about how your company should handle the rule changes. It appears that neither the IPO or AIPLA are actively opposing the rule changes.
“Are any lawyers concerned about their livelihood?”
No – this will increase our work, and our worth.
Schunder wrote, “Dang! I can tell you lawyers are not phoney: none of you can give a straight answer to a straight question. Are any lawyers concerned about their livelihood?”
No. And there’s no elephant in the room either. In the other proposed-rules-related post, I explained how the proposed rules will actually increase business for lawyers:
“The rules are hardly doomsday for prosecutors. If anything, the rules will increase business because, instead of efficiently grouping interrelated inventions into one application, prosecutors will have to split out each invention into its own application to guarantee at least one initial application and at least one continuation for each invention. And, since applicants will not have the benefit of seeing the commercial success of each invention, they will be more likely to split out each invention to be sure to cover whichever invention becomes successful. This will increase the attorney’s fees of the prosecutors. Moreover, given the limit on continuations, there will be more appeals, which will further increase their attorney’s fees.”
Schunder: For my average client, the number of discrete applications per “invention” will increase as will the billable time per “invention” re prosecution. The number of inventions and clients is certainly not diminishing. Net effect is we are advising our clients to expect a 50% increase in IP prosecution budgeting. When the final rules publish, our best practices will shift accordingly, but, at the end of the day, the answer to your question will be “no”.
The only folks hurt by this immediately, that I can see, are my clients who have larger, multiple invention patent families – the new change will effectively force them to let their work go public domain.
Dang! I can tell you lawyers are not phoney: none of you can give a straight answer to a straight question.
Are any lawyers concerned about their livelihood?
I’d like people’s opinion about this – and this ONLY.
HINT – you cannot prove a negative. Thus you cannot honestly say “NO”. You can say “I don’t know of any” or “I am not”. You can also say something like – Yeah there is a guy down the hall.
Of course you can pontificate on anything else – but I much prefer you answer the question directly and honestly.
I remember saying during the Clinton years that Lehman was a hack who would ruin the PTO.
I also remember that when Bush was elected his transition team put up a web site for filling positions in the executive branch.
As a joke I applied for Commissioner of Ptents and Trademarks.
I don’t think I could have done a worse job than we are seeing now.
The poster immediately above finds the root of the crisis at the level of Commisioner. A poster a long way back cannot recognise any likelihood of a fall off in filing numbers. Mark Nowotarski cites a London colleague as welcoming the continuation rules for harmonisation reasons. I’m from Europe and can’t yet see any harmonisation issue. Typically a patent family on something I’m watching through the EPO has one or two divisionals in each non-US country, and 20 continuing applications in USA. Maybe that’s London’s harmonisation point. Of course the new Rules won’t do anything to reduce the burden on USPTO Exrs, as countless posters have pointed out already. There might be a problem at Commisioner level but I couldn’t comment. For me the insoluble problem is the needless adversarial relationship between Exr and Applicant. A poster above laments the new IDS Rules because they force him to read the prior art. You mean that Applicants and their attorneys don’t do that, just yet?? I should have thought the system will only improve when it gives Applicants and their attorneys a reason to “be careful what you ask for” and to take care to take to issue what will withstand validity attacks against a preponderance standard. Bring in a law that provides “One bad claim and you’re out” (until you cure the defect by amendment) and watch how quality improves then (and the atmosphere between Applicant and USPTO). Wishful thinking, however, till the judges that handle patent litigation can routinely assess validity.
“Is ‘Schunder’ a phoney?”
I think Schunder is perhaps just short-sighted. Maybe he’s just a young Examiner who sees and suffers from the internal mess at the USPTO and understands that it needs to be dealt with, but he doesn’t understand what its cause is or how it should be dealt with.
The mess at the USPTO needs to be dealt with in an urgent manner, but it cannot be dealt with effectively until the root cause of the disorder is understood and eliminated. And this root cause lies wholly at the top of the agency, where for the last 15 years the top spots have been made positions of inconsequence, used for political rewards by former President Clinton and President Bush.
A little history, for the younger ones, since we are so good at repeating it (and please feel free to correct me if you feel the need, Lazerus L.)
It was in the early 1990s, when Bill Clinton appointed Bruce Lehman as Patent Commissioner for non-patent reasons (to “thank” a special interest group in his constituency of which Lehman was a part) that the U.S. Patent System and process began falling apart.* Commissioner Lehman, as you may know, had no experience with patents, yet he had quite a vision for the Patent Office, and often boasted of his personal lifestyle, and how he was the first such appointee to have risen so high in government. Unfortunately for us, his heart was never in his work, or with the agency he led.
It was Lehman who marginalized the importance of prior art and the examiner’s search at the USPTO. In 1994 and early 1995, he curtailed and then discontinued the internal classification and the search of newly issued foreign prior art by U.S. Examiners. (He also curtailed and almost stopped reclassification projects for U.S. Patents.) What do you think that this did to the validity rate of U.S. patents issued from that time until the introduction of viable U.S. and foreign art searching in EAST almost a decade later, to have such a hole in the foreign art that was able to be searched by U.S. Examiners? (I’m not talking about fake “quality” reports from the USPTO, but the true validity of patents asserted in industry, but not necessarily litigated because of questionable validity.)
In was Lehman who pulled the plug on the Examiner’s UNIX-based computerized search system called “APS/CSIR” in 1999 and replaced it with a Windows-based search system called “WEST” that was orders of magnitude slower, unstable, and much less capable. The replacement system, which wasted hundreds of millions of dollars of public funds and remains virtually unused by Examiners to this day, was described on November 19, 1999 by the Washington Post as “the computer system from hell”. [Whereas, when APS was introduced to the corps in 1985 (and then upgraded to CSIR shortly thereafter), it was described to Examiners as the largest and most advanced information retrieval system in the world. And it was such, having been designed at the specification of people who understood patents and patent searching. To the contrary, the WEST contractors and SIRA folks hired by Lehman et al., when later confronted on the failings of the WEST system, admitted to having never studied or seen the APS system in operation.]
What do you think having a virtually unusable automated search system (WEST) did to the validity rate of U.S. Patents issued after the plug was pulled on APS/CSIR in 1999?
It was Lehman whose vision for a USPTO “campus” led to the reallocation of resources away from patent, patent quality, and patent support activities to “move” activities. The stated impetus for the move was to have the examining corps in a single unified and “planned” location, rather than spread over the dozen or so buildings they were occupying in Crystal City. Today, about five years after the initial move, the USPTO has already outgrown its “planned” location, and the USPTO is now even spread out in Crystal City and in Carlyle than it was initially!
Commissioner Lehman eventually resigned for “personal” reasons, and the patent community had a little respite from the whims of political appointees while Q. Todd Dickinson, a patent attorney, was Commissioner. He reinstituted some reclassification of U.S. Patents and was generally looking to truly foster patent quality.
However, the respite felt by patent community ended when George W. Bush was elected President and appointed James Rogan as the head of the Patent Office. As you know, Rogan had no patent experience but was very instrumental in the impeachment proceedings against President Clinton the year before, and he had lost his California Senate seat as fallout from those same proceedings. Perhaps his appointment by Bush was a loyal Republican “thank you” to one of their own whose political career had itself become a casualty of party loyalty. And Rogan told us that he was going to “blow up” the Patent Office and recreate it (NB: this was before 9/11). Consider for a moment: a man with no substantial patent experience thinking he could recreate a better Patent Office and all its intricacies.
And so Rogan, with no patent knowledge or experience, came up with his “Strategic Plan” to recreate the Patent Office. The plan was effectively a quasi-abdication by the agency of its constitutional role. It shifted the burden of the prior art search and the question of prior art relevancy away from the agency, it said, to allow the agency to concentrate on its “core” objectives, whatever they were! It would then have had the agency cease to maintain its automated search systems (because the prior art would have all been provided to examiners) and it would have replaced the U.S. Classification System with an International Classification System that both the EPO and JPO had already moved away from.
Meanwhile, the internal labor/management issues within the Patent Office were getting worse and worse by the year. Older examiners who understood the law and the legal process were left to struggle and flounder with improperly designed new automation tools that were frustrating even to the newer examiners. Many experienced examiners opted to leave the agency or retire, when they would have otherwise provided an invaluable resource to the agency in assisting the training of new examiner hires. And the attrition rate of new examiner hires began to skyrocket because of workplace conditions and the lack of training, and as a consequence the average experience level of patent examiners was dropping, even while new technologies were developing at an ever increasing (but wholly foreseeable) rate. In short, the expertise and professionalism that had developed within and had been the hallmark of the corps was disintegrating, and the personal one-on-one training within the corps that had been a mainstay of USPTO operations (from which this writer had benefited enormously) was becoming a thing of the past.
After being sued in his capacity as Director, Rogan eventually left the USPTO mid-term (perhaps the official reason given for his departure was to “write a book”), which left us with his Deputy Director, Jon Dudas, assuming the position of Director. Jon Dudas, like Rogan and Lehman had no professional background or experience in patent law (or trademark law, for that matter) before coming to the USPTO.
Now, backtracking a little in time for the moment, after the Lehman fiasco, Congress had realized that the United States Patent and Trademark Office was a too specialized and important agency to be helmed by mere political appointees, and 35 USC 3 was amended to clearly lay out the qualifications for the Director and the Deputy Director:
“The Director [and the Deputy Director] shall be a person who has a professional background *and* experience in patent or trademark law” (emphasis added).
Unfortunately, little did we know that the less than two years that John Dudas spent as Deputy Director under Rogan would qualify him (or so would be alleged before Congress) with the background and experience to serve as a Director of the United States Patent and Trademark Office. This was akin to (or perhaps it was worse than) making an Assistant Examiner the head of the agency! And we are now to be surprised when the agency is in disarray? It seems to me rather brash that we (or Congress or anyone else) could think that a man with less than two years “on the job training” in the field could possibly be the best and most qualified person (or even just plain qualified) for such an important job.
We in America are now facing a crisis in our patent system, and it will only get worse while the USPTO continues its operation as an effective headless organization. The crisis won’t be solved by rules made by partisan politicians who understand neither the patent system nor nor patent laws as instituted by Congress in 35 USC, and who aren’t best qualified (or even qualified) to chart the course of the Office.
[*It was the first time to my knowledge that a Commissioner was appointed who was not a Patent or Trademark professional. Can any of the more experienced readers verify this, beginning with Brenner, and then Gottschalk, Banner, Parker, Dann, Mossinghoff, Manbeck, Quigg, and Comer?]
“Back then, the relationship between upper management & the union (and examiners) was at a very low point. Everything was in contention & there was agreement on almost nothing.”
There were internal difficulties (and yes, there was contention and an adversarial relationship between the Union and management as there has always been since there has been a POPA), but the system worked in a way that it has never worked since (look at pendency and examiner retention, and patent quality if you can), and time compensation for learning the technology was given to Examiners who had to had to work in a field outside their normal one.
And there most certainly was a “soft landing” as planned by management, both in 1989 and in the year that followed that worked remarkably well. Perhaps you were not privy to this, but you almost certainly saw no lasting ill effects from the production push.
As for the “very short-sighted concept” of “”any examiner can work on any case”, the short sighted concept is still being used today, unfortunately.
One of my London colleagues had a surprising reaction the rule changes. He’s very enthusiastically in favor of them and naturally assumed I would be too. Apparently this is a big deal from a harmonization standpoint.
It was an interesting perspective that I hadn’t thought about before.
It doesn’t matter, however, if these are good rules or not. They are, in effect, new laws being written by a branch of our government that doesn’t have that authority. It’s not the USPTO’s job to make new laws, it’s Congress’s.
We also had no such thing as a soft landing in 1989. I know of a lot of examiners that had to work in different areas than their usual class. A few quick examples off the top of my head: 1) communications examiners working on speaker systems; 2) circuit breaker examiners working on computer cases (old class 364); 3) measuring & testing examiners working on imaging cases. The policy back then was “any examiner can work on any case. It doesn’t matter about the technology”. A very short-sighted concept. While I may not agree with all of their policies, at least the group of upper managers we have up there is better (in general), and better liked by the corps, than those 20 years ago.
BTW, these were all supposed to be posted together, but I kept getting an error about “comment spam”. Someone trying to tell me something?? 🙂
thanks,
LL
LL
As to the remarks above about 18 by ’87, I was there and remember that as well as 18 by 88 and 89. I don’t remember there being any management working with exminers or working for a soft landing or any of the rosy picture indicated, above. Back then, the relationship between upper management & the union (and examiners) was at a very low point. Everything was in contention & there was agreement on almost nothing.
thanks,
LL
As for the new rules and their effects, NO ONE KNOWS what effect they will have. We are all guessing, for now. We haven’t even seen the final version yet & people are acting like they know for sure what the effects will be 5-10 years from now. It is all guess work for now.
No matter what effect the rules do have, examiners are in no danger or running out of cases (in most areas, anyhow) any time in the newr future. In most of the electrical areas, we have a 3-4+ year backlog of cases and that amount of backlog is growing not shrinking over the last few years. Even with the increased hiring, those newbies put out very few cases (relatively) for the 1st year or 2. If no more cases were filed, we would still have work for a few years yet.
thanks,
LL
No, MM is not that negative, and he has keen sense of humor.
Maybe Mad Max?
Is Schunder just Malcolm Mooney?
I have the impression that the poster “Schunder,” who posted 3 comments above, is disingenuous, a bullcrap artist and a shill with someone’s hidden anti-patent agenda.
“Schunder” 1st comment above declares he is an Examiner:
“I think the new rules will have a very good effect on the patent system – and an even better effect on America. But only time will tell.
What do y’all think about job stability for Patent Lawyers – in the long run? AS AN EXAMINER, the lawyers I see are very stressed. Is it because of the rule changes?” (emphasis added).
Has anyone ever had an application examined by an Examiner named “Schunder”?
Is “Schunder” a phoney?
To those who think this will result in fewer patent filings:
1) Small inventors will always file as they get stars in their eyes and are clueless about the system anyway. No reduction there.
2) Medium size biz doesn’t file alot anyway, but those high areas will continue at a breakneck pace as they want and need exclusivity to get on the map.
3) Large corps will still file everything as their competitiors will continue to do so. The rules will result in more filings as folks will file smaller patents, but all ideas will still be filed to gain competitive advantage.
Where does this reduction come from? I sure don’t see it.
“Are any lawyers concerned about their livelihood?
Yes, there will (likely) be a period of confusion and controversy. This may very well be a boon for lawyers. But perhaps some lawyers think that this boon may end some day. What then? Anything? Any thoughts about what happens then? I’m sure there are at least a few lawyers whose concerns are not only directed to the patent system and applicants. Some patent lawyers have mouths to feed and bills to pay. Are they at all concerned about the possiblity of no job? I’m sure not all attorney are completely selfless.”
You are completely clueless about we do on a daily basis…completely.
Schunder – you are not an elephant but more of a mouse.
“I think the new rules will have a very good effect on the patent system – and an even better effect on America. But only time will tell.”
Why? I assume you have never had a job on the outside and never worked for a corporation or firm. We do understand the law better than Examiners – it is simple fact. We also appreciate the effects as we see them and have to counsel clients daily. The effect of fewer patents is less protection for innovation – and in the America I live in innovation is about all we have left that we lead in – we need to reward it, and these rules create the opposite effect – VERY BAD for America.
“What do y’all think about job stability for Patent Lawyers – in the long run? As an Examiner, the lawyers I see are very stressed. Is it because of the rule changes?”
If anything these rules make us more valuable to large corporations as they will now need to change strategy. Our jobs are extremely secure and in high demand. Stress, sure, but most extremely high paying jobs come with a bit of stress. It is a choice you make. Certainly you have selected the lowest stress, lowest paying route – the government job.
“It seems that management’s plan is to reduce the backlog (in cases and hiring) by making rules to significantly reduce the number of applications. A natural consequence would be a significant reduction in the amount of work for lawyers. Is no one concerned about this – or is it the 4000 lb elephant in the chatroom? ”
True, but you miss the point completely that this will not be the effect of the rules. To every change there will be a reaction and the rules do not contemplate any change in behavior by the bar. You and your bosses are sadly mistaken. Too bad reality didn’t set in before this – because it sure will now! This will result in more patents in the short and long term, more work for lwayers (these will be litigated for a decade or more), higher cost to clients.
Why in the world would an Examiner want fewer patents and less inovation? You represent the pathetic small minded gov employee who can’t see poast his own nose. Here’s hoping other in the Office have a big picture perspective.
Thanks to anonymous for posting the comment about NIPRA. I took a look at their website (www.nipra.org) and was interested to see a GAO report from 2005 about Examiner Retention, particularly the section beginning on page 38 entitled “Examiner’s Monetary Awards are Based on Outdated Assumptions about the Time it Takes to Process an Application” (consistent with the comments made by many on this site), other parts commenting on the hostility between the management and the examiners, and the conclusion about what the PTO should be doing about these issues. So what gives? Did the PTO just ignore this, or are they somehow pretending that they’re addressing these issues? Can the PTO just ignore the GAO? I thought the GAO reports had a lot of weight, but probably I just don’t understand how it’s supposed to work.
Not all technologies will be affected equally by the new rules. As someone who drafts applications primarily in the area of small molecules, I have a pretty good idea before I file (a) what the art looks like and (b) how my application is likely to be restricted. Usually I not only know where to expect obviousness rejections from but I’ve been able to forewarn the client what kind of evidence of non-obviousness they’ll need to overcome those rejections. So I’m not too concerned about the limitations on continuations – I expect that we’ll be ready for obviousness rejections, and thus, to the extent my clients will need continuations, we’ll be able to file them b/c they’ll really be divisionals resulting from restriction requirements.
I suspect that my colleagues working in IT might feel differently, since in that area continuations are used far more often and it’s often harder to identify the most relevant art (or what the examiner will consider to be the most relevant art). If I were working on IT applications, I might be concerned that my clients might decide to forego patent applications. Then again, maybe not: if someone can make money from something new, they’ll invent something new, and if they think that in some way shape or form getting a patent will net them more money than not getting a patent, they’ll go for it.
I’m personally more concerned about the new IDS rules. It’s not unusual for me to run across a relevant prior art doc that runs several hundred pages. Under the new rules, I’m going to have to make a statement about the parts of that doc that are relevant. I shudder at that thought, especially when I see decisions like lasts week’s Pharmastem decision, where some non-technically trained judges ignored the realities of scientific development and said that an invention that according to testimony wasn’t obvious to experts was nevertheless obvious to them. Some day those same judges are going to say that a statement I made characterizing one of those 300-page prior art documents and identifying the relevant portions therein was misleading and/or incomplete, and thus deceptive, and on that basis they’ll find my client’s claims invalid or unenforceable, when all I was trying to do was comply in good faith with the duty of disclosure under the new rules. The alternative is for me to say considerably more, at the risk of limiting the scope of my client’s claims. Catch-22.
I therefore expect that under the new rules I’ll have to spend lots more time worrying about IDS’s. I hate dealing with IDS’s – it’s just boring busywork that has little upside for my clients and will just cost them more money. I get paid just fine as it is and I like the work I do. I don’t need the PTO making additional work for me that I won’t enjoy doing.
The fact AIPLA was silent while the new rules were at the OMB may just be indicative of a split within that organization, but I’m not privy to its inner workings.
Schunder, asking the question of whether attorneys are concerned about their livelihood shows that you really do not understand what attorneys do.
The PTO is, believe it or not, a service agency for the public. Any politically-based rule changes will not stay in place long. One thing about the law, it is not static, and when driven by politics, it seems to change very frequently.
I serve my clients. They want to protect their innovations and IP. What the PTO does will not change what my clients want. Attorneys are not dependent upon the PTO and its actions for their livelihood (at least not a first-order dependency). Absent the PTO disappearing entirely or the PTO suddenly providing a service where attorneys are not required (as suggested by anonymous), I predict that attorneys’ livelihood will not be greatly impacted by any PTO rule change.
Thank you anonymous.
I just viewed the movie United Flight 93 and feel proud of the strength we as ordinary people show when faced with dangers posed by those abroad and domestic. The ignorance and stupidity of politicians running the PTO, and the forces of greed taking advantage of them, will not prevail over time. However, they should be remembered for what they did, and forever scorned until they leave this place.
The lawyers do not like it, but in the end, they look to their wallets and shut the **** up. For example, see how much effort the AIPLA spent preventing these rules. They know well the cash will continue to roll in, possibly even more, as a result of these rules.
The PTO’s end run will be dealt with by those better than Bush and his cronies, and hopefully better than us.
Are any lawyers concerned about their livelihood?
Yes, there will (likely) be a period of confusion and controversy. This may very well be a boon for lawyers. But perhaps some lawyers think that this boon may end some day. What then? Anything? Any thoughts about what happens then? I’m sure there are at least a few lawyers whose concerns are not only directed to the patent system and applicants. Some patent lawyers have mouths to feed and bills to pay. Are they at all concerned about the possiblity of no job? I’m sure not all attorney are completely selfless.
Schunder, I’m trying to point out that most of the people who think the rules are good are only looking as far as they can feel with their hands. Or they’re closing their eyes to the true nature of the problem facing the U.S. Patent System. (The last I checked, having an economy that generates a large number of patent applications is a good thing… try correlating the health of the Japanese economy over the last 30 years with the number of Japanese patent application filings… it’s a pretty easy thing to do, even if you’re not so good at math.)
But in answer to your original question, whenever there is confusion and controversy like these rules are bound to create, it is a *boon* for lawyers (that’s not too hard to understand, it it?), and whether the USPTO issues too many unwarranted patents or withholds too many warranted ones, it just gives us more to argue and do and (unfortunately for the general populus, I guess) bill.
The only way lawyers will see a decrease in work is if the USPTO starts to function in a way that eliminates the patent applicants’ need of us. If you say they can’t file continuations when the industry, market, or economics demands they do, then we will advise them how else they can proceed to protect their interests. And we will assist them in doing such. Please don’t think we won’t find ways to protect their interests just because politicians promulgate new rules… we’ll just change strategies.
It is only when the USPTO starts providing patent and trademark applicants with comprehensive justice without being compelled at the hands of attorneys that patent attorneys will see their workload decrease. But I haven’t heard the USPTO speak of the interests of their applicant’s in two decades, so I doubt that will be happening anytime soon.
It was good of you to ask questions (and I don’t know all the answers, but I do feel strongly about what has happened to the patent system in the last 20 years that could have been avoided).
Yo, anonymous.
Yeah – a depression would be great for the country? reductio ad absurdum.
I’m trying to 1) point out that there are some people/examiners who think (i.e. I have an opinion, but no proof) that the new rules are good. I understand that I am in the minority. 2) find out if attorneys are concerned about losing their livelyhood.
Do you have any thoughts about the consequences to attorneys? (i.e. not their clients, nor the public)
Thank you
Schunder, a Great Depression would probably also reduce application filing and consequently the backlog. Would that be good, from an Examiner’s perspective?
Your perspective is just what we’re seeing from the PTO management – everything is directed the ease and comfort of this organism called the USPTO which seems to have begun to exist primarily for itself rather than “for the people”. The USPTO view seems to be that the backlog is the irritant of the organization, so the people/companies filing the applications are the sources of the irritant that need to be dealt with. Get rid of the organization’s irritant, you say, in any way possible and the problem is solved to the grand pleasure of the PTO management/staff, and with a total disregard for the impact it has on the well-being and competiveness of the country.
Are you sure that a reduction in patent application filings would be good for the country? (Examiner’s answer: “Yes, of course, and Rogan was too since it reduces our backlog, and therefore would make the USPTO a kinder, gentler place to work, and increase our Examiner retention!!” But, pray tell, where are the studies? I haven’t seen any, nor have I seen any studies that say the continuation rule changes *will* result in less patent applications being filed.) On this point, I bet the Founding Fathers would disagree with you (Article I Section 8), and perhaps they would see the way the USPTO has been conducting itself as the country’s true irritant in this respect.
Here’s a thought for you to consider: what if this backlog is an irritant to the country that has been caused not by patent applicants and continuations, but by almost two decades of mismanagement at the USPTO? I was an examiner in the ’80s. Ever heard of 18 by ’87? Ask around if you haven’t. They reached an average pendency of 18.9 months by 1989 with a lot of hard work, and with real internal management that was working together with the examining corps, despite internal difficulties. And management even did it in a way that assured a “soft landing” for the corps (now that would be unheard of today). Some art units *almost* ran out of work, but everything functioned more or less as usual. But this was when the USPTO was actually being managed by patent professionals (not politicians), and was intent on being part of something that was bigger than itself, and looking to serve the country rather than to put a balm on its own discomfort.
Yes there is a problem at the USPTO that needs to be fixed (and yes there is probably even a problem with continuations that can be abused by a small minority of patent applicants), but perhaps the folks on the inside should stop blaming the folks on the outside for the internally created mess, and get their own house in order.
I think the new rules will have a very good effect on the patent system – and an even better effect on America. But only time will tell.
What do y’all think about job stability for Patent Lawyers – in the long run? As an Examiner, the lawyers I see are very stressed. Is it because of the rule changes?
It seems that management’s plan is to reduce the backlog (in cases and hiring) by making rules to significantly reduce the number of applications. A natural consequence would be a significant reduction in the amount of work for lawyers. Is no one concerned about this – or is it the 4000 lb elephant in the chatroom?
“Perhaps my understanding of the rulemaking process is flawed, but I simply can not put my finger on that portion of the APA that allows an agency to promulgate rules that have not been presented for public comment.”
I think the politicians who now head the USPTO better understand the inner working of the political process (and what they probably can get away with) than they do the inner workings of the patent system (and the ramifications of the rules they would promulgate). Perhaps that makes them more dangerous than Rogan et al.
NIPRA sued Rogan/USPTO twice (and had successful effect, though both suits were settled) and I believe their complaints relied, in part, on APA 5 USC 702 and 706. However, from talking to SPEs at the USPTO, management’s feeling is that the continuation rule changes have been presented for public comments as required, and that the public comments have been ignored as permitted. But perhaps that is the threshold question of what becomes arbitrary and capricious and an abuse of discretion, and not in observance of procedures required by law.
The NIPRA complaints (and one of the settlement stipulations) are still posted at http://www.nipra.org.
Perhaps my understanding of the rulemaking process is flawed, but I simply can not put my finger on that portion of the APA that allows an agency to promulgate rules that have not been presented for public comment. True, an original first set was published, but the same is hardly true of whatever it seems may soon emanate from the PTO after OMB/OIRA review (assuming, of course, that the proposed rules have somehow been changed).
Being the eternal optimist, even after many years of practice, I look forward to whatever may be implemented so that all practitioners before the PTO can finally see the backlog reduced to zero and, hence, the quality of examination correspondingly increased to near perfection.
I would be so pleasantly surprised if the AIPLA actually did anything that wasn’t self-serving. My guess is the rules will create a lot more confusion and controversy, which is good for lawyering but bad for innovation and Americans.
I’m still waiting to hear whether or not AIPLA plans to do anything more. Alan, that’s nice that AIPLA complained about the proposed rules, but has AIPLA given up at this point? And where was AIPLA when OMB was reviewing the new rules?
“It’s a shame how it tramples on the applicants’ ability to get the full scope of their inventions.”
I agree. I hope the final rules have some sort of compromise that permits the current unfettered continuation practice. I can adapt to one-RCE-and-appeal process and the 10-claim examination limit. But arbitrarily cutting off continuation practice will severely harm applicants.
Actually, the PTO should not be allowed to do anything illegal for any reason. I was discussing their motivation, not any legal justification.
I think these last two comments get to the nub of the issue at last. I can actually beleive that this is being done just to stop examiners from getting easy counts. It’s a shame how it tramples on the applicants’ ability to get the full scope of their inventions, but I don’t think the major bureaucrats in charge understand much of how the process really works in practice.
There are so many cases where the first office action doesn’t cite the best art, or even the 2nd, 3rd or 4th action! This is what’s driving RCEs, and everyone knows it unless their head is stuck in the sand. If we are forced to appeal earlier, we may get an allowance before the examiner has cited the best art that he could resonably find, and the result will be more invalid patents. Unfortunately, invalid patents are still part of ‘production’.
“All of these rules are geared towards making each examination requiring a lower, more uniform amount of effort. Whether they’ll have that effect remains to be seen.” –
Oh really? The PTO should not be allowed to deal with its internal workload management problems by issueing illegal regulations.
“Put up a set of rules that ‘looks like’ it addresses the backlog and backdoors the changes in examiner production it couldn’t get from negotiation.”
I am convinced that the production issue is driving these rules. By limiting claims to ten or fewer, they can demand more production. By having applicants prepare an analysis in applications with more than ten claims, they can still demand more production because the applicant will do all the work. Also, while limiting the RCE/Continuation practice will likely result in more applications being filed, those applications will be smaller and more-focused, which will be easier to review and examine — thus allowing the USPTO to demand more production. Finally, cutting off the RCE/Continuation gravy train will also the USPTO not to get short-changed by examiners getting two counts for a couple hours work. This will make each examination more uniform.
All of these rules are geared towards making each examination requiring a lower, more uniform amount of effort. Whether they’ll have that effect remains to be seen.
1. The PTO was taking it hard from Congress on the backlog and had already backed itself into the “we can’t hire ourself out” position.
2. The PTO has such a bad reputation for mismanagement that it knew it could never get approval for increasing salaries or scattered offices (remember, it just built the second largest set of government buildings in the US).
3. The PTO has wanted to change the examiner production system for years but couldn’t get anything past PAPA.
Result: Put up a set of rules that “looks like” it addresses the backlog and backdoors the changes in examiner production it couldn’t get from negotiation. The PTO didn’t care who it made angry in the process or what the real results will be, since the management team won’t be around much longer anyway.
I compare this whole thing to the death of basketball. As the rules of basketball changed from the 70’s on, i.e., when palming (unfair advantage), dunking (technical foul), traveling were eventually made legal, the energentic tricksters like Ernie D and Muggsy Bogues dissappeared and basketball became dominated only by big boring thugs.
I guess they were about as confident as they were when they invaded Iraq. I have full faith in these people. God bless John Doll, Susan Dudley, Jon Dudas, Kaz razimataz Kazenske and the United States of America!
So, based on this string – the bar thinks this is a bad package, the examining corps think this is a bad idea too. How did it get through?
Patent Girl,
Go check out the PTO’s “Strategic Plan 2007-2012” on their website, and look at slide 19 of 40 where the PTO states they need to ramp up the BPAI in anticipation of “continuation reform.” This has been in the works a long time and PTO officials were pretty confident that they were going to get this package through.
Anon Coward,
You are dead on with 2) and 3). Second pair of eyes is a joke and a travesty. For examiners and applicants.
Patent Girl,
Go check out the PTO’s “Strategic Plan 2007-2012” on their website, and look at slide 19 of 40 where the PTO states they need to ramp up the BPAI in anticipation of “continuation reform.” This has been in the works a long time and PTO officials were pretty confident that they were going to get this package through.
Anon Coward,
You are dead on with 2) and 3). Second pair of eyes is a joke and a travesty. For examiners and applicants.
What happens if you have a continuation from an abandoned application? does that count?
When it says, “that recently filed applications (that have not yet received an office action) will be limited to two continuations.” Does this mean that if application A is filed, then you can file only two separate children which are continuations of A? Or does it mean that you can only daisy chain two applications from the original parent? If the latter, then if you are under final rejection, instead of using your precious RCE, why not file multiple (how about 5?) children of the current application (but not daisy chained) just so you can have five tries with the examiner again.
examiner: The right people will not be found in Washington, D.C. The place is toxic, controlled by bureaucrats who only care about themselves and their cronies, the rest of the country be damned.
A branch office in Denver will do nothing, it is the same job with the same unrealistic, unreasonable production quotas. You will simply see 10 – 15% attrition in Denver. It seems that management is convinced that the system is sound and that all we really need are the right people. Many eastern european governments operated under the same mindset and we all know how that turned out.
L. Lazarus writes: “what can be done, realisticly, to improve pendency AND quality.”
Easy answers:
1) Open up branch PTO offices in cities such as Denver Colorado as previously proposed. Part of the problem with the PTO is its location in northern Virginia, which has become a very expensive place to live. Washington D.C. is not known as a mecca for technically-minded people (with the possible exception of the biotech industry, and it is hard to attract talanted people there because, lets face it, (and I am a native Washingtonian, born and raised) Washington D.C., although it has its charms, is not the greatest place in the world to live. It is hot and muggy in the summer, cold, wet, and icy in the winter, it is expensive, culturally bereft (outside of the city, where most people live). The PTO needs to open up branch offices in other parts of the country where there are talented technical people who speak fluent English and would LOVE a good paying career with the government.
2) Institute ACCOUNTABILITY at the MANAGEMENT LEVEL. Supervisors are rated primarily on the basis of the prodcutivity alone of their examiners. Many supervisors at the PTO are promoted from Examiners in different art units or different groups, and therefore do not have the expertise necessary to train their underlings. They don’t even have the expertise to determine if the primaries in their unit are doing their job properly. Lucky for them, THEY DON’T HAVE TO, because, as noted above, THEY ARE RATED — as a practical matter — ON PRODUCTIVITY TO THE EXCLUSION OF ALL ELSE. It is ostensibly the direct supervisor’s job to ensure that their underlings are doing their jobs properly. They cant review every application, but they are supposed to at least spot check, and give on the job training to those examiners that need it. This is obviously not happening.
3) ALLOW EXAMINERS TO ALLOW APPLICATIONS WITHOUT FEAR. Primary Examiners are scared to allow cases, and in many instances are prohibited from allowing cases that they deem to be allowable. Why? They could be demoted or denied a promotion if they have more than X number of errors in the course of a year. I have heard that 2 errors are sufficient to cause problems for examiners. An error is when someone in Quality Assurance disagrees with you. If your supervisor is not willing to go to bat for you in arguing the “error” then you have little chance of prevailing. Supervisors don’t generally want to involve themselves in this because, well, that would mean actually doing something and, as mentioned above, they are not accountable except on the basis of production, and this would eat the time that their examiner could be otherwise spending producing. In some groups, “third pair of eyes” procedures are in place that prevents an application from being allowed that the Primary in charge believes is allowable. For those that don’t know, the Primary is the one who is responsible for an application, and they used to be the ultimate authority in a particular arena, accountable only to the board of appeals. Well, the third pair of eyes procedures really works to reduce the number of bad applications being allowed, but a lot of babies are being thrown out with the bathwater, because unqualified individuals (individuals not as familiar with the art as the Primary) are overruling the Examiner.
I have some other ideas, but these are the first that came to mind…
The number of inequitable conduct landmines has increased! Expect insurance rate to skyrocket too. I wont forget you suckas!
I see that the PTO is advertising for Patent Attorneys to serve on the Board. A sign that they expect an increased workload once the rules come out? They’d better be prepared to hire a boatload.
Once again the same old tired management line that lowering producting increases backlog it is in fact opposite. Lowering production lowers pendency because attrition is drastically reduced. The new rules will be bad for all except management because management doesn’t have to examine or prosecute the cases. Expect attrition to sky rocket to around 30% in the coming years and expect the board backlog to increase 4-5 years to decide on a case.
“Hiring better people will probably not do it either, as it is often the best ones that leave after a few years of law school to work in a firm.”
The USPTO should realize that it must compete with the private sector to increase retention and improve examination quality — even if that means significantly ramping up the fees to accomodate higher pay, increased examination time, etc. The USPTO can’t hire its way out of the problem, but it can hire and retain its way out of most of the problem. (By the way, increased fees will deter additional filings, which will help the backlog and pendecy issues.)
While I have not seen the new rule package personally, I have recently talked with some people that are working on the various implementations of the rules. They wouldn’t give specifics, but the general picture they paint is not sounding pretty. The rule package is supposed to be somewhere around 600 pages! Also, it sounds like their implementation may make things worse for both examiners & applicants; particularly examiners. Whatever the final changes in the rules are, it sounds like it will be a major sea change for us as well as you. I heard one estimate that training for examiners on this package will take days. Maybe a week!
Reading the links that Dennis supplied in the earlier post (link to reginfo.gov), the one directed to claims sounds like it “may” now require a patentability report for every case where the applicant wants more than 10 claims examined. Anyone else get this interpretation out of it?? If this is it, it may mean that Mr. Doll got his wish with regard to having patentability reports for most-to-all cases.
A questions I have asked here & elsewhere, what can be done, realisticly, to improve pendency AND quality. Most people say/said increase examining time & retention improvement. The former will in all likelihood increase pendency (maybe a lot), while the latter sounds good but is harder to do. Increased salaries is difficult (OMB to get thru, at least). Lower production would help, but we then again increase pendency. Highering better people will probably not do it either, as it is often the best ones that leave after a few years of law school to work in a firm. Not only that, the job is not for everyone. Many NEED to work the VOT to get their production because an examiner is probably not a great fit to their abilities. For someone who really has the right mindset and skill set, it can be great. For others, it is a strain every day.
thanks,
LL
Mr. Boundy wrote, “[T]he PTO admits that it studied NOTHING except the paperwork burden (and that only in the fall of 2006, but not before January 2006). No study of economic effect on applicants, no study of budget or workload effect on the PTO.”
John Doll thinks the proposed rules will improve the USPTO’s situation. Why? Because the USPTO has not done such studies. If they had, they would conclude that the proposed rules (1) will *not* decrease pendency or the backlog and, if anything, increase both; (2) will substantially harm small entity applicants, who routinely use multi-invention specs and continuations to decrease and defer costs; and (3) increase examiner attrition rates (e.g., from increased difficultly to meet production).
drm,
Well, we use MPEP chapter 800 logic as the examiners do and throw it right back at them! “Distinct” is always good.
These PTO people make Mr T angry!!!
“HAS THE USPTO STUDIED ANY OF THIS ?????”
No. Nothing. If you look at our materials at
link to whitehouse.gov
you will see PTO’s reply to several FOIA requests, and comments by John Doll, in which the PTO admits that it studied NOTHING except the paperwork burden (and that only in the fall of 2006, but not before January 2006). No study of economic effect on applicants, no study of budget or workload effect on the PTO.
The PTO did rely on studies by others on a few tangentially-related issues, and did a little back-of-envelope guesswork, but studied NOTHING of any material relevance to the particular rules it proposed, and did absolutely no analysis of that huge database it has. The PTO admitted that the bar charts in the town hall slides have no basis in any document – totally made up out of thin air. PTO management is sitting on one of the best databases of its internal operations of any agency – but seems to be deliberate in their efforts to ignore that database.
PTO management appears to be trying to screw examiners and inventors, and put them in direct confrontation. Perhaps intentionally, perhaps by simply avoiding any planning (think Iraq). No contingency plans, no cost plans, no nothin’.
Unfortunately, the rules will require applicants to be much less tolerant of examiner screw-ups – things will get very confrontational very quickly – not because of applicants, not because of examiners, but because PTO management has taken away all the lubrication and slack-play that allows us to get to a result in a non-confrontational way. This sucks for everyone.
The IP associations sure have been deadly silent about the Blackberry ex parte communication issue. It is as if it never happened.
“HAS THE USPTO STUDIED ANY OF THIS ?????”
They pretty clearly think this will help, but since the drafters were never on the outside of the fence I think they have little appreciation of the ACTUAL effect.
The Examiner would have to establish some kind of prima facie case that the claimed subject matter is not distinct. This would appear to be an appealable matter because a DP rejection would lie within that jurisdiction. Otherwise, if they try to come up with some kind of “objection,” the Tech Groups would be flooded with petitions.
David,
The slides mention two VERY different concepts.
a) substantially overlapping disclosure (how the HELL is that defined???? Will there be case law for regulatory procedures?? Can there be ?? (I’m not an attorney)).
b) patentably distinct claims.
This is VERY different.
And what about ENFORCEMENT of this? (i.e. when the applicant asserts that two apps are indeed different).
Will this be an exchange between the “regular” Examiner and the Applicants??? Or will the USPTO need to set up ANOTHER GROUP of Examiners to deal just with this?
If this is the “regular” Examiner of the App, that means and Examiner may need to read multipel Apps just to Examiner one app properly – I’m sure they’ll be delighted.
Will they get a count for this extra work?? Or are they supposed to do this for free??
It appears that the resources the USPTO will need to enforce these rules could outweigh the resources saved by not having RCEs.
(I haven’t even mentioned the expected spike in appeals on every little thing)
HAS THE USPTO STUDIED ANY OF THIS ?????
“The examiner’s are not happy with this either. Examiner’s like to see RCE’s and CON’s.”
Yes, but where is POPA, the Examiner’s Union? In the past, they were resourceful enough to gather the likes of Henlen Benley, Dana Rohrbacher, Ross Perot, Steny Hoyer, Duncan Hunter etc. to positively influence radical proposed changes.
David, I looked at the slides and they do not imply we cannot file multiple applications, each of which would stand alone as its own family parent. Right?
The examiner’s are not happy with this either. Examiner’s like to see RCE’s and CON’s.
See slides 34-38 regarding the “consolidation” of related applications.
link to promotetheprogress.com
“My recollection is that under the proposed rules, the USPTO would ‘consolidate’ multiple applications in a way to limit the continuations ”
I pity the pinhead fools at the PTO if they attempt to limit innovation by way of this measure. I’m breaking my piggy bank now to see how much I can donate to the cause!
Anyone know what this means for divisionals? Are we allowed to file one RCE and two contiuations from each divisional? Did the rule that all divisionals must be filed during the pendancy of the original app make it through, ot not?
David Metzger wrote:
“My recollection is that under the proposed rules, the USPTO would ‘consolidate’ multiple applications in a way to limit the continuations ”
Even if it is trivial to determine that 2 apps have the same inventors and same filing date, they are not necessarily “overlapping.” What would be the criteria for determining if two applications are “overlapping” or not??
(has the USPTO even THOUGHT about this ????) It is not always black and white – you can write “similar specs” using different claim language and file one after another. Indeed, this seems like a reasonable strategy.
Does the USPTO have the resources to make this determination ?? (it seems like this could make the backlog worse – they would have to invest a LOT of resources if practitioners start filing “somewhat similar” specs). Do they have defined criteria that they could make available to the public ??
Would the UPSTO make the Appliacnt responsible for this determination ?? There is no “case law” – like I said, it is not always black and white.
Could they make this an Inequitable Conduct issue – i.e. by jepordizing the enforcability of the patent?
I am not an attorney – just a simple agent who would like some answers, if possible.
Blaise wrote:
“One option for attorneys looking to get around the proposed rules (besides filing multiple copies of each application) … .”
My recollection is that under the proposed rules, the USPTO would “consolidate” multiple applications in a way to limit the continuations and RCEs for the entire group to get around this type of strategy.
Also, it seems that the limitation of only 1 RCE is strange given that RCE’s do not create the same burden on the USPTO as continuations. We do not enjoy in the USPTO the multiple chances to amend claims that are available in, e.g., the EPO.
Good question Mr. T – both AIPLA and IPO claimed to oppose the new rules, as originally proposed by the PTO. Yet, to my knowledge, neither did anything at the OMB (my apologies if they did do something at the OMB).
Where the heck was the IPO and AIPLA during the OMB hearings?
Mark, you beat me to it – I was going to ask the same thing about AIPLA. I think that AIPLA’s participation in legal challenges to the new rules, as well as in Congress, could be significant. If AIPLA is truly against the new rules, then there is absolutely no reason for them not to take action to try and stop their implementation. Ironically, I just got something in the mail from AIPLA this morning asking me to rejoin. I will take it out of the trashcan if Alan can assure me that AIPLA is not giving up the fight on the new rules.
Alan,
Is the AIPLA prepared to do more than simply lobby the patent office? Are they going to help take it to the courts? Congress? public relations?
Anyone know what this means for divisionals?
I have to take exception to the comment that AIPLA is not actively opposing the rules. We are as angry as anyone about this.
I sit on the Relations with the Patent and Trademark Office – Patent committee of AIPLA. We are a good mix of outside counsel, inside counsel and academics. I can assure you that we have made our concerns with these rules known to the PTO officials both in written comments and in our regular meetings with them. I personally remember participating in the grilling given by our committee during a presentation of the proposal at the AIPLA annual meeting last October.
Like any other independent party, the PTO listens to our concerns, but if they are bound to do something we really can’t stop them.
I don’t always agree with AIPLA positions, especially some of the positions it takes in amicus briefs, but we are on your side on this one.
Blaise wrote, “One option for attorneys looking to get around the proposed rules (besides filing multiple copies of each application) may be to file a PCT (even if they do not plan to file internationally).”
That’s not a bad idea. And, if the art and the claims are tailored to EPO examination, you may want to designate the EPO to have a more timely ISR/IPER (someone suggested that the US is dragging its feet on those). And if fast issuance isn’t critical, you may want to just file the PCT and the nationalize back into the United States. I wonder if the proposed rules will treat the nationalization as a continuation or a first filed utility application under the rules.
IPO and AIPLA are not actively opposing the rules because IPO is strongly influenced by the big computer and software companies that started the “continuations are an abuse” myth and AIPLA is controlled by the law firms that are happy to file extra applications.
Blaise,
THis is a good idea in theory, but have you tried getting a timely PCT search report lately ???
Sometimes you get one and sometimes it takes F-O-R-E-V-E-R.
I am referring to the USPTO as the searching office – I personally have had no experience with PCT filings using the EPO as the searching office (Maybe you know (or others) know about this).
But the USPTO not providing PCT search reports on time is another SCANDAL that is not discussed on the blogs, as far as I know – I believe that Greg Aharonian has written about this issue). Maybe with the reduced backlog from the rules, the USPTO will be able to issue faster search reports 🙂
PCT may also be a good route for people who want to “park” their patent application until the expected legal challenges to these rules are heard and, hopefully, succeed in overturning these rules.
One option for attorneys looking to get around the proposed rules (besides filing multiple copies of each application) may be to file a PCT (even if they do not plan to file internationally). The chapter I written opinion then can be used to get the the first indication of close art which may be used to modify the claims before the US national stage Examiner gets a hold of it. This may then help avoid unnecessary RCEs and may even result in a few 1st action issues if the PCT examiner did a thorough search and the claims are appropriately amended to reflect the search.
Lister and Blaise,
You raise excellent questions, but since they involve legal opinions, you might want to pose them to a licensed patent agent or attorney.
You can find a list of agents & attorneys here: link to des.uspto.gov
Alternatively, you can call the “Inventors Assistance Center” at the USPTO. This is staffed by retired patent examiners who can answer proceedural questions about the rules, but cannot give legal advice. There is not direct number, however. You have to call the USPTO switchboard and asked to be connected. Dial 800 786 9199, then press 2, then press 4.
If you would like to read the draft rules, they are posted here: link to uspto.gov
You have to be careful, through, since we don’t know how they’ve been modified.
Nina,
The rules that were published for comment apply to all Applicants, including small entities.
To see how small entities feel about them you can review the published public comments at:
link to uspto.gov
Do these new rules apply to small entities?
I’m curious as to what this will do to restriction practice and how (or if) the rules will deal with divisionals differently than continuations. Also is there any chance that currently pending continuations will go abandoned (provided the rules are retroactive and more than 2 or 3 continuations have already been filed on a parent application that has not yet been acted on by an Examiner). If so who decides which of the continuations goes abandoned and which stay alive?