OMB approves proposed changes to continuation practice.

The ORIA has concluded its review of the PTO proposed rules with approval . . .finding them “consistent with change.”

Links:

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AGENCY: DOC-PTO RIN: 0651-AB93
TITLE: Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims
STAGE: Final Rule ECONOMICALLY SIGNIFICANT: No
RECEIVED DATE: 04/10/2007 LEGAL DEADLINE: None  
** COMPLETED: 07/09/2007 COMPLETED ACTION: Consistent with Change
AGENCY: DOC-PTO RIN: 0651-AB94
TITLE: Changes to Practice for the Examination of Claims in Patent Applications
STAGE: Final Rule ECONOMICALLY SIGNIFICANT: No
RECEIVED DATE: 04/10/2007 LEGAL DEADLINE: None  
** COMPLETED: 07/09/2007 COMPLETED ACTION: Consistent with Change

Notes: Thanks to Brad Pedersen for the tip.

67 thoughts on “OMB approves proposed changes to continuation practice.

  1. 67

    How can everyone act like they know for sure what will happen with the new rules when we have not seen them intheir final form? And, even if we have, at best, all we can do is guess what will happen since no one will know for sure for at least a few years.

    thanks,

    LL

  2. 66

    I agree with Gideon to the extent that it’s hard to imagine how lack of a search would make the application unduly narrow. A good search can, however, help one tailor the claims to be as broad as possible while reducing the risk of amending them later and thus losing equivalents. Of course, depending upon the art, a good search may not be practicable or equivalents may not be that valuable.

    Putting aside the CYA aspect, a prior art search can help applicants too. I have seen prior art searches *nail* the broad invention that the clients wanted to pursue. With the clarity that the search provided, the clients could decide whether the value of their narrower improvements justified the costs of prosecution. Moreover, this clarity saves prosecution costs of focusing too much effort on describing and claiming the broader concepts that aren’t patentable.

    That said, I agree with Gideon that prior art searches as a “means for covering at least one ass of an attorney” is not necessary.

  3. 65

    “I’m loving your response to the new rules. Don’t have the budget for a prior art search? What if you can explain to your client that without that $1500 search, your app will probably have to be unduly narrow?”

    Well, I disgree with the above quote.

    Searches are mostly worthless, but, to the extent they do anything, they make you narrow your claims. A prior art search would never make you broaden your claims.

    THe way it should work is that you present the broadest claims you can in view of the known PA.

    So the quote above makes no sense.

    Here’s the thing about searching that is mostly ignored by most CYA attornies in this business:

    If you have an invention, then you describe it as best you can, in a lot of detail, and then you use dependent claims to protect yourself against narrowing art.

    Really quite a simple concept.

  4. 62

    A friend of mine who is an SPE told me that one reason, amongst many, why PTO management proposed the rules was to change the culture in the examining corps of endlessly churning applications through RCE’s and continuations to generate more counts. They want to put the focus on moving new apps and reducing the backlog. PTO management has not been successful in changing the current production system, which they all know the examiners game the heck out of. I saw Mr. Doll speak at the AIPLA mid-winter conference in January at the Relations with the PTO committee meeting, and he acknowledged that many, if not most, of the examiners rely on RCE’s and continuations to make their production. PTO management’s current proposed solution is a flat goal system. It will fail also.

    The PTO’s attrition problems are not caused solely by the production requirements. Many of the newbie examiners are from the generation called “millennials” and they view every job as essentially temporary. PTO management has hired consultants to study this generation and advise them on ways to retain them beyond a couple years. It remains to be seen if they will be successful.

    The main reason, in my opinion, for the PTO’s retention problem is the message from PTO management that the examiner’s job is to “reject everything.” There are a couple of blogs by examiners, including one currently in the PTA, where you will frequently see posts by examiners that that is what they are told to do. (You’ve seen it posted on this site too.) Reject everything. No matter how ridiculous the rejection is, just put it on paper, have your SPE/primary sign off, and send it out. Of course, this is not the prevailing attitude in every TC or AU, but it is extremely pervasive. I would submit to you that very few people find job satisfaction if they are stuck in one of those TC’s or AU’s. That’s why they leave.

    As has been posted here, it appears the RCE gravy train is coming to a screeching halt. Are hundreds of examiners going to up and quit? I doubt it. I have tremendous respect for and faith in the examiners and I know they will find many new ways of gaming whatever new system is put in place. As will those of us on the outside. The more things change, the more they stay the same.

  5. 61

    John Darling,
    I do not know if this is the case or not – I am sure some Examiners can provide answers (I’m just a patent agent who never worked as an Examiner).

    What I DO know is if, mutatis mutandis, MY boss told me that I would have to work 30% harder or get less overtime bonus, I would quit my job (even if he was just taking away “easy” money from me that maybe I “didnt deserve in the first place”).

    Now I’m a pretty qualified guy who could get a job elsewhere – if I were not qualified, I probably would NOT quit my job if my boss told me to work 30% harder, and would feel lucky just to have a job.

    How about the Examiner corp? I bet there are a lot of qualified folks there who will not be amused by the CHANGE in policy (i.e. the “delta”) and could, very well, up and leave. Probably less employable folks will just have to “swallow” this effective pay-cut.

    Your post did NOT address this issue.

    I HOPE I am wrong – I also want the backlog to go down as it hurts my clients – I just am skeptical that these rules will “do the trick” as claimed.

    Has this issue EVEN BEEN STUDIED by the USPTO?? If yes, I’d be curious to see the data.

  6. 60

    Something seems fishy about this because there is no mention on the USPTO web page yet we know immediately about every presentation the Commissioner makes to garden clubs.

  7. 59

    Patent Attorney,

    I’m loving your response to the new rules. Don’t have the budget for a prior art search? What if you can explain to your client that without that $1500 search, your app will probably have to be unduly narrow?

  8. 58

    Anonymous Agent,

    As Mr. Dudas testified before Congress, 60+% of the examining corps is getting a bonus for doing 110+% production. The posts above are correct. The whine and cry from the examiners, and POPA, that they need to work massive voluntary OT “just to make production” is a lie, as evidenced by Mr. Dudas’s testimony and the cold hard numbers. Examiners and SPE’s are extorting RCE counts from applicants for paid OT and bonuses.

    Go back a few weeks and review the post from the examiner who posted how “ridiculously easy” it was for him, because of RCE’s, to make his goal, work paid OT and get a bonus. He/she claimed that he/she only needed to examine one new app a month. What would you suggest, a system where examiners only have to move one new app every two months? Every three months? Four?

  9. 57

    I think things are going to get even more contentious between examiners and those actually prosecuting the applications (i.e., agents and attorneys), because now agents and attorneys are going to have a real incentive to challenge the finality of every final rejection while at the same time examiners will be under much more pressure to make their counts. The remedy for an improper final rejection will be a petition, and I think these are already backlogged along with appeals. It seems like this will simply increase pendency, because the application will be “out of line” until the petition is decided. I can’t imagine that these rules are actually going to be good for anyone, and I can’t understand why the PTO administration is pushing them through regardless. It’s almost like they were looking for a fight and now have gotten themselves into a p***ing contest with everyone else and just have to win for the sake of it (cf. Nifong).

  10. 56

    If it gets to the point where every final has an appeal, and all the allowances are made by the Board, I’ll quit, because at that point examiners will be claim-rejectors instead of real examiners, but I don’t think things will get quite that bad.

  11. 55

    “Nobody has addressed the increased Examiner attrition that these rules will cause.”

    Good point. There won’t be the count-generating RCE gravy train. In addition, there won’t be the continuation gravy train, which also provides easy counts (e.g., first action double patenting rejection, followed by notice of allowance).

  12. 54

    Anon, the free ride has ended. Examiners have been extracting bonusus from continuation taxes years before RCE’s (CPA’s, FWC’s).

    They now cry they must work extra hard for their money. However, if they correctly carried out their job, they would realize there is no need for any RCEs to meet production while working a 40-45 hour work week.

    It is their union, POPA, babbling such nonsense. Get to work!

  13. 53

    JohnDarling,
    It seems that these rules will make it much harder for Examiners to make their quota of counts.
    Nobody has addressed the increased Examiner attrition that these rules will cause.
    I know I would quit MY job if my boss told me I have to work 30% more for no extra pay.
    As much as we practitioners (and especially our clients) hate the RCE tax, this tax is what makes it possible for Examiners to make their quota without MORE unpaid overtime.
    And the Examiners that quite will be replaced by even LESS experienced Examiners !!! So the rules could INCREASE the backlog as the newer Examiners won’t be able to process the applications.
    Why has nobody addressed this issue????

  14. 52

    Gideon,

    It’s two extra counts. The examiner is going to get one abandonment count when you file the RCE, and then as soon as the case appears on his/her amended docket, he/she is going to consider the “new issues” presented by your amendment (which will take all of about 10 seconds), determine that the amendment really, truly does place the application in condition for allowance, and send out a notice of allowance for which he/she will be rewarded with those two extra special counts. (An allowance on the first action after an RCE is the same as an allowance on a first action of a new application, the examiner gets two counts.)

    So, the examiner gets two extra counts for issuing an Advisory Action (or two) and filling out a notice of allowance. Not bad for a “day’s work” huh? Sure is a lot easier than reading an application, searching the prior art, and writing an Office Action.

    Keep in mind that SPE’s are just as complicit in this extortion scheme, probably even more so. It’s in their own self-interest to ensure that the examiners in their unit have as high a production as possible as their examiners’ production is a large portion of their SPE rating. So don’t look to the SPE to protect you from this extortion, they’re the ones driving it.

  15. 51

    Brian – good point on the EPO art. Very true that it can be tricky if you get a quick allowance in the U.S..

    As for the Examiner – FDGJ I think, who wrote :

    “In the example you described, it would require new search and consideration. The examiner would have to examine the new dependent claims for 112’s, 101, and any objections.”

    OK – Thanks for your comments – they are interesting to me, and I thank you for taking the time to write them.

    In my case, however, it was ridiculously simple . . .

    1. If the independent claim is free of art, BY DEFINITION, so too must be all the dependents I added – so no work required there.

    2. As for 112 issues – the claims I added were identical to claims that already existed and examined – I just copied them from rejected claims sets and changed the preamble.

    3. The art is simple stuff – there would be no enablement issues like there might be in a biotech app.

    4. I missed the “cue” from the Examiner when I called him after he rejected the amendmentment. When I asked him about an alternative amendment – not understanding what his “enablement” BS was about – he tells me “you’re out of time”. I note I’ve filed the NOA and indicate I’ll file another amendment.

    5. The kicker? The time it took him to write up the two AAs was longer than it would have taken to review the claims I added – ergo, he just wanted the extra count (or two?) from forcing me to file an RCE.

    Most importantly, like I said, I’ve done this 100s of times before and this is one of the few Examiners who has done this.

  16. 50

    None of these comments address a major reason for filing RCEs – new art that comes in from related applications. Timing with the EPO is often such that the results of the EPO search arrive right about the time you want to pay the issue fee for the US application. Then you have to file the RCE to get the PTO to consider the art the EPO found. Is the PTO going to deny us the ability to file RCEs for the PTO to consider new art?

  17. 49

    Why are you guys fixated on RCEs? Continuations in general have been growing exponentially even before the first RCEs were filed in 2000 and the cause for that is being ignored by you all who can’t see the forest from the trees. Yes, RCEs have been a large fraction of all continuations but since 1995, the general category of Rule-129/CPA/RCE has been a *fixed* (although large) fraction of all continuations, merely the proportional “overhead tax” of continuations. See these statistics in Appendix A of Ron Katznelson’s paper at link to whitehouse.gov ). So continuations before the “RCE tax” is growing exponentially. It is the “forest” phenomenon of the exponential growth of continuations in general that is being missed here. Going against this fundamental economic phenomenon is the problem with PTO’s new rules, not examiners’ inducements of the “RCE tax”.

  18. 47

    Refusing to enter an amendment after final rejection that clearly places the application in condition for allowance (e.g. an amendment that cancels all of the rejected and leaves only the allowed) is absolutely wrong and contrary to the rules. See Rule 116. See also MPEP 714.13 II. The time that applicant “waits” to file the amendment is irrelevant.

    An update search is exactly that – an update search. MPEP 904: The first search should be such that the examiner need not ordinarily make a second search of the prior art, unless necessitated by amendments to the claims by the applicant in the first reply, except to check to determine whether any reference which would appear to be substantially more pertinent than the prior art cited in the first Office action has become available subsequent to the initial prior art search. The first search should cover the invention as described and claimed, including the inventive concepts toward which the claims appear to be directed.

    ” Some might see this as having to do two seaches for one count.” – That’s a pretty lame attempt to excuse the outrageous behavior of the “RCE addicts” populating the examining corps.

  19. 46

    fdgj, an “updated” search should involve looking only at publications that issued since your last or original search. This should include looking at a considerably smaller number of documents, and take very little time compared with the original search. It should not involve searching the entire field again. That would mean you made a mistake, yes, but we try not to do that, right?

    Also, you do not have to perform a complete prior art search for dependent claims added after allowance of an independent claim. 112 and double patenting should be your only concern at that point, which should not take much time.

  20. 45

    “So fdgj, you’re telling us that if you send out a final rejection on July 1 rejecting claims 1-10 and allowing claims 11-20, and three months later on October 1 the applicant files an after final amendment doing nothing more than cancelling rejected claims 1-10, you’re going to refuse entry of the amendment on the basis that your “update search” constitutes a new issue?”

    No, I’ve never denied entry in such a situation. I was merely responding to Gideon’s example to explain why some examiners put up a fuss about entering such amendments after final–I never said it was right or wrong. If the situation occurs, try not to wait until months later to make the necessary amendments, just because one examiner will enter the amendment doesn’t mean that another will, so why take the chance? My point was not that it was new issue, but rather examiners are required to update the search anyway even for things that was indicated as allowable in a prior office action. Some might see this as having to do two seaches for one count.

  21. 44

    johng wrote, “Man, stop being such a bureaucrat. You know those things don’t amount to much. The count trifecta is dangling from the tree, and you can’t wait to taste it.”

    Amen. I once added some short, clearly-supported dependent claims after final. It would have taken 10-minutes to look at them. The examiner put up a stink, but when it was clear I wasn’t going to file an RCE, the examiner allowed the addition.

  22. 43

    Can someone please tell me where I can find the rules that have been approved. The links above don’t help. Also, when will the rules be in effect? Thank you.

  23. 42

    Do small companies matter? Not anymore and maybe they should not. We need to let the big companies control all agendas like in the 1890s and early 1900s. Big companies know what is best for all of us and they are our future. Only big companies should be allowed to filed for and assert patents, like the big technology companies are insisting on. If our OMBM says this will have minimum economic impact then we must believe them. Our government is almightly and can never be wrong. Our government consistently shows that they can never be wrong, especially over the last few years. As for examinations at the PTO, of course examiners will now more closely examine applications with their reduced backlogs and do their best to be fair on examination, including entry of all amendments that put cases on conditions for allowance. Do not be naive, this proposal is good for us all!

  24. 41

    So fdgj, you’re telling us that if you send out a final rejection on July 1 rejecting claims 1-10 and allowing claims 11-20, and three months later on October 1 the applicant files an after final amendment doing nothing more than cancelling rejected claims 1-10, you’re going to refuse entry of the amendment on the basis that your “update search” constitutes a new issue?

    You are a prime example of why the examining corps gets so little, if any, support and/or sympathy from the patent bar. And a prime example of why the new rules have no justification. RCE’s are the extortion that applicants pay to examiners. They are not applicants deliberately delaying prosecution. One silver lining to the new rules, I guess, is that applicants are now going to be a lot less willing to pay extortion.

    “For me, if I indicated something allowable my updated search to confirm allowance is probably as thorough as my first search because after the allowance, I can’t just go, oops I made a mistake, you can’t have the allowance even though I just sent one out.”

    You also need a serious refresher on Chapter 900 of the MPEP.

  25. 40

    Relax – continuations are like a big set of floaties for attorneys afraid of not getting the claims right. Shorten your applications and and file claims commensurate in scope with the disclosure. File additional applications if need be. Swim in the deep end.

  26. 39

    How retroactive are these rules? From what I understand, it applies to all applications that are currently pending that have not yet received a first office action. Does this mean that an application that I currently have on file, which is a continuation of an issued patent (which patent included an RCE) will have to have the continuation justified? This of course seems highly unfair.

  27. 38

    I wanted to comment on a few of the posts. First, Lazarus argued that this was better for the system as a whole since we will supposedly get better patents faster due to the effect this rule will have on the backlog. However, he then states that we shouldn’t be worried because only a small percentage of apps go to a second or more continuation. That is like saying “we need this rule because so many continuations have contributed to the backlog but don’t worry you won’t be affected because there are only a small percebtage of multiple continuations.” So what is it, tons or a small percentage? If it is a small percentage, how does it help the backlog?

    As to the discussion of small versus large companies, large companies often file many patent apps for defensive use or simply to increase their portfolio for investment purposes. However, small companies usually don’t have the budget for that and so they file patents just on their “bread and butter” products or inventions. In orger for them to survive and compete they need to protect those few key inventions as well as possible. This rule change will likely affect key patents much more than defensive or portfolio patents. That’s why it is potentially more problematic for small companies. We will just have to wait and see how this plays out before we all start running for another career, though. :)

  28. 37

    Relax – continuations are like a big set of floaties for attorneys afraid of not getting the claims right. Shorten your applications and and file claims commensurate in scope with the disclosure. File additional applications if need be. Swim in the deep end.

  29. 36

    “In the example you described, it would require new search and consideration. The examiner would have to examine the new dependent claims for 112’s, 101, and any objections. Further, those dependent claims you added are technically new claims.”

    Man, stop being such a bureaucrat. You know those things don’t amount to much. The count trifecta is dangling from the tree, and you can’t wait to taste it.

  30. 35

    “I cancel all claims after final other than those allowed – just 2 claims are allowed.

    I also add a set of dependents (maybe 8 claims), to each allowed claim.

    What does the examiner do?

    Refuses to allow the claims because the dependents “would require further search and examination.”

    Of course, I’ve done this 400 times in my career and only a few examiners are so slimey that they will hold up claims and force an RCE.”

    Gideon,

    In the example you described, it would require new search and consideration. The examiner would have to examine the new dependent claims for 112’s, 101, and any objections. Further, those dependent claims you added are technically new claims. Even though the independent claims may be allowable, we’re technically supposed to update and do a thorough search for the subject matter in the newly added claims anyway–doesn’t make much sense to me either, but that’s how it is.

    In addition, depending on how long ago the indication of allowability was to when you filed your response, examiners have to update their search no matter what. If you get an indication of allowability in the nonfinal and you don’t cancel all but the allowable until 3 months after final, examiners are supposed to update their search before sending out an allowance. Contrary to what most attorneys believe some examiners do update their search. For me, if I indicated something allowable my updated search to confirm allowance is probably as thorough as my first search because after the allowance, I can’t just go, oops I made a mistake, you can’t have the allowance even though I just sent one out.

  31. 34

    someone wrote:
    “The rules are hardly doomsday for prosecutors. If anything, the rules will increase business ”

    How true how true.

    This reminds me of a psych effect they found way back when.

    A company wanted to improve productivity, so they brought in psychologists and asked them to observe and make changes.

    They did so.

    After much observation, the pyschs suggested that the company turn up the lights where the workers worked. The company did. Productivity increased 10%.

    The company was very pleased.

    Then the psychs suggested that the company institute a new break period during the morning. Productivity increased 2%.

    The company was very pleased.

    Then, after several of these changes, all followed by increases in prodcutivity, one of the curious psychologists turned the ligts back down to see what would happen –

    Guess what?

    Productivity increased.

    The point was, the workers were responding to ANY change, not the specific change in question.

    Likewise, no matter what the rule change is at the PTO, I MAKE MORE MONEY. Make continuations easier to get – more money. Harder to get – more money.

    Why? Because any time you mess with the broken system, you just change the maze around, and I, reasonably, have to work more to get through the maze again.

    My clients will file more applications and they will file more appeals.

    End of story.

    Except this part . . .

    I’m glad, in a way, that RCE practice is going to be curtailed.

    I’d be happy if they killed the whole damn thing.

    That way, I wouldn’t get rejections from Examiners who are simply trying to pick up a quick count through an RCE.

    Example . . .

    I cancel all claims after final other than those allowed – just 2 claims are allowed.

    I also add a set of dependents (maybe 8 claims), to each allowed claim.

    What does the examiner do?

    Refuses to allow the claims because the dependents “would require further search and examination.”

    Of course, I’ve done this 400 times in my career and only a few examiners are so slimey that they will hold up claims and force an RCE.

    But how I’d love to appeal that case make the j-rk write a reply brief!

    But I guess every cloud has that Ag lining . . .

    When I file the RCE, as much as it’s wrong and I hate to, I MAKE MORE MONEY.

    CaChing.

  32. 33

    Steve C. wrote

    “Smaller companies typically can only afford a few key patent applications… [big snip] In contrast, many larger companies tend to take a quantity over quality approach to patent applications. For them it makes economic sense to fill many applications around each new invention”.

    This doesn’t make sense to me. Is there any data to support this assertion?

    Why is that a small company would be better off filing less patents per person/capital assets/employee/whatever, than a large company?

    Obviously a small company will file less patents than a big company in terms of absolute numbers, but that isn’t what the above comments are talking about (if it was, it would be meaningless in adition to trite). Steve C. is talking about the relative numbers filed, given the size of the company.

    Now, small company’s certainly have a greater variation in the number of filings filed per employee single person operations typical file zero patents, but a few file *hundreds*.

    What is it, if anything, that makes economic sense for such an operation to file less patents than a larger operation, per person?

    The hope that if you file enough crap, something will stick? But surely that applies to all applicants, not just the very large.

    Regards, Luke Ueda-Sarson

  33. 32

    I would like to respond to Lazerus L. who doesn’t understand what all the “doom and gloom” is about. Not all of us patent attorneys work for Microsoft, IBM or Merck. Most applications are filed by small businesses that would like to compete with these companies. For the small business, a decent patent portfolio is the only thing that, sometime, prevents larger competitors from taking their technology.

    Smaller companies typically can only afford a few key patent applications. So these applications tend to be written with the possibility that embodiments of the invention that do not currently seem important may be more important in the future. Also, a well written application will include a wide diversity of dependent claims. This is necessary because prior art (unknown to the application at the time of filing) could read on what was thought, at the time of filing, to be the best differentiators between the invention and the prior art. A diversity of meaningful dependent claims gives the applicant something to fall back on.

    In contrast, many larger companies tend to take a quantity over quality approach to patent applications. For them it makes economic sense to fill many applications around each new invention. These applications tend to be more focused, shorter, and some would say of lower quality. In fact, top quality is less important because of the number of applications they file.

    The new rules are, therefore, (big surprise) a boon to those who have the biggest sway in Washington. The new rules fit perfectly into their economic model at the expense of their smaller competitors. These smaller competitors are the backbone of innovation in our country.

    Don’t be fooled into thinking that the new rules will actually reduce the backlog at the patent office. An application filed today is just one application with the possibility that one or two continuations will be filed in the future. These continuations may never be filed if the original application covers what turns out to be the most important aspects of the invention. After these rules are in effect, I will be advising my clients to file as many parallel applications as possible. These extra applications will include claims that would never have been filed under today’s rules. In addition, today’s continuation practice allows applications to file claims with some degree of hindsight. This provides a set of claims better distinguished from the prior art and, thus, easier to examine.

    Ask Dennis Crouch about the correlation between the backlog in various art units and the number of continuations filed in each unit if you think that limiting continuation practice will reduce backlog.

    Don’t even get me started on having to file an appeal after every final office action…

  34. 31

    T-

    I agree with you-that there will be a petition fee. Which takes us back to the proposed rules of 2002-2003 (8K for your second continuation…). That was under Rogaine. The continuation practice been under attack since 2002. And the disregard for 35 USC 120 is a lot like Bush Admin’s refusal to follow FISA on wiretapping. Its all part of the same program if you ask me. And I used to be a Republican. I would be happy with $400 fee.

    Here is another prediction-in one year, we will all be spending half our time reviewing IDS and/or filing appeal briefs and/or stacking dependent claims and/or maxing out on our ten independents. What the USPTO did not factor is the CYA practice of attorneys. “What, one response to an Office Action? Well, I need to go to town on that Office Action response. I got my malpractice to think off” Everything will soon slow to a crawl. Then, in order to show that things are going well, the USPTO will start allowing everything en masse. Then there will be more backlash. Dudas will leave and go private to one of those firms in DC and dismantle portions of he rule. But that will be too late. They will enact patent reform to deal with all the bad patents. Sometimelater, dogs and cats live together and it all goes downhill

  35. 30

    Budge, you forgot the big fee filed along with the little piece of paper! It will be interesting to see what that amount the PTO arbitrarily sets for that “automatic” petition. PTO is no fool when it comes to collectn’ dough.

    My guess: RCE fee plus $400.00 “petition fee.”

  36. 29

    I really think at the end of the day, we are all going to have to submit a little piece of paper that says why a new continuation application filing merits an extra bite of the apple. Else they might as well dismantle the whole reissue process (unclaimed embodiments). I don’t think we get room on the RCE. Which is fine by me, once the backlog grows, the squeels will change. As for who it hurts, it does not hurt the solo inventor who files on his own. That guy files crap anyway (get an attorney). This is tort reform from the executive branch.

  37. 28

    Response to PDS.

    You are correct. The rules are in contravention of the statute. But it is worse than that. PTO’s management is not trying to solve a backlog problem but rather it is attempting to set policies in an economic area of innovation in which it has no expertise. PTO management thinks it knows it all. Evidently, the proposed rules are predicated on a premise held by the PTO that it should primarily be processing new applications and that continued examination of new or amended claims based on previous disclosures constitutes a crippling obstacle, a rework nuisance, an abuse by applicants and an aberration that should be severely curtailed. Yet, nowhere does the PTO offer a basis for the holding that continuations’ share must remain low. Where is it written in the PTO’s job description that it should only examine claims filed with new disclosures? PTO’s management simply has no clue as to the major reason that the share of continuation is rising.

    Economic analysis shows that a rising share of continuations is a fundamental economic phenomenon that has persisted for the last quarter of a century. It relates to the exponential growth of new product introductions and the shrinking product lifecycle – requiring more frequent claim amendments to protect products with diminishing lifetime. See the detailed study by Ron Katznelson at link to whitehouse.gov , which he attached to his letter to OMB at link to whitehouse.gov

  38. 27

    ” I explain to them that a patent application is like a house–the cost is based on square footage. If you take five 1,000 square foot inventions and put them into one 5,000 square foot application, it’s going to cost roughly the same.”

    Of course, every time I pick the thing up and have to page through 5 times as much material it’ll take five times as much time, regardless of the fact that 4 out of the 5 “inventions” are no longer of interest to the applicant. Then when we go international and have to translate the behemoth …

  39. 26

    /not having seen the rules, but assuming they are the same as the draft rules that were circulated/discussed here/

    Seems to me, the folks this will impact the most are the self filing inventors.. and solo inventors being robbed by invention development/marketing scams.

    Their poorly drafted apps will be out of options by the time they get to a real patent attorney – even if they still have any money left, nothing will be able to recover the patentability of their inventions.

  40. 25

    Well said, Opampman. Applicants will want the same patent scope and will adapt accordingly by filing more applications up front and by appealing. The only applicants that won’t follow this strategy are the small entities, because it’s too expensive.

  41. 24

    Sometimes clients ask me if they can combine several inventions into one big application to save money. I explain to them that a patent application is like a house–the cost is based on square footage. If you take five 1,000 square foot inventions and put them into one 5,000 square foot application, it’s going to cost roughly the same.

    It’s the same thing with the patent office. They expect to get rid of the backlog by reducing the number of pending applications. But it won’t work because applicants still want the same square footage. Reducing RCEs and continuations will only cause applicants to file more apps up front and appeal more cases. In the end, the PTO’s workload will be about the same.

  42. 23

    Stop bellyaching everyone! Geez you people make me sick. The rules are contrary to statute. Administrative regulations (i.e., rules) are subordinate to the statutes. Therefore, the rules will not stand. Ignore the rules, and argue the rights granted to you by Congress in the statute, and you shall prevail.

  43. 22

    RCE? What’s a RCE??

    My appeal to RCE ratio is at least 10:1 in the past 6 months. However, as if the backlog at the Board wasn’t bad now (its been getting steadily worse … a 50% increase in pending appeals over the last 7 reported months), it is going to get crazy busy shortly. It may be that pendency at the Board will rival that to pendency prior to first action.

    The good part (if my recollection serves me correctly) is that we get patent term extensions for the time waiting for the Board. Appeal your application a couple of times and your 20 year patent grant becomes 30 years … not a bad deal (OK … maybe I’m exagerating a bit).

    BTW: The board statistics can be found here:

    link to uspto.gov

  44. 21

    The thing that Examiners don’t seem to get is that the limits on continuations and number of claims are a huge nightmare for claim writers. Examiners look at claims years after the patent application was filed and armed with lots of hindsight and field expertise and access to all the prior art that allows them to easily and immediately see whether the claims were written too broadly. But people writing claims for patent applications have to start out with a broad position and don’t have the budget to search the prior art, and can’t even see the patent applications that were filed in the past year and a half. So it is a much harder, even impossible task, to get it right the first time or to even to get very close at all. And if the claims are too broad, Examiners tend to be lazy and just present some ridiculous combination of art that allows them to reject the claims but not is not really that close to what the invention is about. And then the applicant gets only one chance now to amend the claims and get another search? And only three months to figure out what to do? It’s ridiculous. It makes me sorry I ever entered this career.

  45. 20

    Most of you probably already recognize this, but for those who don’t, these rules are obviously the result of successful lobbying by large entities (Micron, Intel, Microsoft, etc. — the infringer’s lobby) seeking to weaken the patent laws for the little guy. PTO management is either too dumb to realize it or too corrupt to care. Don’t believe me? See what Microsoft’s former Chief Technical Officer has to say about the subject in a Wall Street Journal op-ed. link to intven.com

    If Dudas gets a cushy job at one of those companies, that will be difficult for me to stomach.

  46. 19

    Special interest, short-sightedness, and stupidity prevail over general interests. Is this still a democratic nation?

  47. 18

    As to Examiner’s question about multiple RCEs and why would I file them, that’s easy. With every amendment I make, I try to make the least restrictive amendment I can, thereby relinquishing the least amount of equivalents for my claim. And I keep doing it, consecutively narrowing the claim until the examiner and I reach some agreement on patentable subject matter. That usually takes a few go-arounds and in some cases, has taken a couple RCEs.

    Under the new rules, assuming they’re similar to the drafts, I’m forced to surrender a boatload of equivalents right off the bat in every reply–thereby weakening any issued patent because I’ve unnecessarily surrendered equivalents.

    I for one like appeals so I’m looking forward to filing and arguing more of them. I usually file RCEs to keep my relationships with the examiners good (so I don’t have to go over their heads when they make unsound rejections), but now I won’t have any choice but to take my case right over them. Should be fun.

  48. 17

    I am crying in my office right now…not only will the new rules make specifications and claims longer and possibly more filed applications, as several have stated above, but also this marks the end of RCEs for me, which means it will be very much more difficult to meet my required production.

  49. 16

    I think the rules, at least as published, are terribly short-sighted. But let’s see what actually emerged.

    I agree with Lazarus L, there will be impacts and changes. PTO management has set things up to get VERY confrontational. Unfortunately most of the hardships are going to fall hardest on examiners. Expect applicants to be much more demanding before allowing unwarranted final rejection to pass unchallenged. Applicants will no longer tolerate incomplete Office Actions, or Actions where the examiner is making up rules out of thin air, or is not following the MPEP to the letter. Expect to see much greater use of MPEP § 710.06, which was amended about eighteen months ago to read as follows:

    710.06 Situations When Reply Period Is Reset or Restarted

    Where … an Office action contains some other error that affects applicant’s ability to reply to the Office action and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant. If the error is brought to the attention of the Office within the period for reply set in the Office action but more than 1 month after the date of the Office action, the Office will set a new period for reply, if requested to do so by the applicant, to substantially equal the time remaining in the reply period. … The new period for reply must be at least 1 month and would run from the date the error is corrected. …

    Where for any reason it becomes necessary to remail any action (MPEP § 707.13), the action should be correspondingly redated, as it is the remailing date that establishes the beginning of the period for reply. …
    A supplementary action after a rejection explaining the references more explicitly or giving the reasons more fully, even though no further references are cited, establishes a new date from which the statutory period runs.

    If every Office Action counts against a limit, applicants will not allow examiners to run out the clock with shoddy work.

  50. 14

    Lazerus L. asks if the new rules are better for the patent system and the country as a whole.
    Nope.
    Filing fees are lower than paying counsel to draft a “patentability report” so expect filing of several “related” applications, each differing only by the claim set.
    It seems like a waste of time for the office to sort through and match all the applications together and argue with applicants about whether the claims are patentably distinct, or whether there was a “good and sufficient reason” to file separate applications. Good reason #1 is rule 0651-AB94.
    As far as pending applications goes, the volume of pages dedicated to specification will increase, the number of pending applications will increase, and prosecution time will increase due the sorting, matching and arguing over “good and sufficient reason” and whether claims are patentably distinct.

  51. 13

    I know that I am just an examiner, but I still don’t see why all the “doom and gloom” about the rules as we know them. Will it change how you have to practice? Yes. Is it benefitial to all applicant’s? No, particularly in bio areas (based on what I have read). Too much of the negatives presented about the rules in the responses I saw (when it was open to responses) were really about self-interest and not the system as a whole.

    But, stepping back, the I think that the question shouldn’t be “is it a good for me/my client”. The real question is “are the new rules better for the patent system & the country as a whole?” To this, I think the answer is “Yes”!

    Getting issued patents out to the public sooner will help to meet our constitutional mandates of furthering science. Limiting RCEs will help to do this. (Based on some surverys I saw about 18 months ago, the vast majority of cases (I think it was around 75-80%) do not go beyond a 1 RCE & only a very small percentage go past a 2nd RCE. I hope the survey is correct, but I don’t know for a fact it is). So, we are talking about a very small number of cases that will need a petition to go to a 2nd RCE (can any of you lawyers give us any numbers on the actual % of your cases that go past 1 RCE & go past 2 RCEs?? It would help to see your numbers). I said it before (remember, I am an examiner) & will again, why do you keep filing RCEs is you do not think that the rejection is valid? File a pre-appeal (or an appeal) & see if you get different results. I really do not know why every case doesn’t get one (once you get a final) if you think there is any defficieny in the Final rejection. Is it cost??

    As to limiting the number of independent claims to be examined, this should help quality (and maybe some in pendency). While an examiner may be able to quickly knock out dependent claims that are conventional (“meaningless waste of time” to us; useful to you in litigation/infringment) this still takes time to review, examine, search & write-up. Do you really care if that dependent claim that calls for “said communication protocal uses the ethernet standard” is examined? If we spend most/all of our time examining the independent claims, wouldn’t we all benefit? It may take a bit more time & effort to draft your claims well from the start of prosecution, but if you can get a better examination quicker, itn’t that worth it?

    While I think that these rules will have some unforseen impacts & changes, I think, in the long run we will all benefit.

    thanks,

    LL

  52. 11

    The Team is standing by, but we have reservations. This entire administration, all the way down to bottom-feeders like Dudas and Dudley, is corrupt.

  53. 10

    A response to An Examiner.
    How do you expect the PTO to engage in a statutory analysis of its authority when its sister agencies entrusted with upholding the law are encouraging the PTO to ignore the statute? The two law enforcement agencies that commented in the rulemaking proceeding provided ample support to PTO’s proposal and recklessly neglected to provide any theory as to PTO’s statutory authority to promulgate the rules. See FTC comments at
    link to uspto.gov

    and DOJ comments at

    link to uspto.gov

    I suspect the same law enforcement officials have misguided OMB as well.

  54. 9

    “So, that basically means that the rules HAVE been changed, we just don’t know how. ”

    Is this true? I thought there was a time period between when the final rules were published and when they became effective.

  55. 8

    WE NEED LOTS CON’S, CIP’S, AND RCE’S TO SURVIVE! WE HAVE OVER 100 EMPLOYEES – WHAT DO WE DO NOW????!!!!!!

    Appeal

  56. 7

    Do the new rules conflict with 35 USC 132, particularly 132(b) which appears to allow for continued examination *upon applicant’s request*?

    “(b) The Director shall prescribe regulations to provide for the continued
    examination of applications for patent at the request of the applicant. The Director may
    establish appropriate fees for such continued examination and shall provide a 50 percent
    reduction in such fees for small entities that qualify for reduced fees…”

    Aren’t the regulations supposed to be consistent with the statutes?

  57. 6

    “[Insert doomsday prediction for patent prosecutors]”

    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.

    (sarcasm /on) But, of course, all these increased fees won’t adversely affect small entities. (sarcasm /off)

  58. 5

    So far, we’re waiting to hear as well. Note that OMB concluded that the rules, as amended, were not “economically significant.” Perhaps they were modified to the point that they’re no longer offensive. We’ll see.

    “Small Entity” and others – could you please send me an email, DBoundy@Cantor.com

    We are exploring two avenues –

    (a) Congressional oversight. Several senators and congressmen have said “Get back to me when the executve branch is done. I understand the problem, and if it still exists at the end of executive branch review, let me know, and we’ll see.” So I need to hear from you to add weight to our request. The more districts/states we can show to be affected, the more offices we can approach.

    (b) Administrative Procedure Act judicial review. We got another reply to another FOIA request yesterday, July 9 (coincidence?) – which confirms that the PTO did absolutely NO analysis of any significant issue, and is still hiding documents. (There are several documents that we know to exist, which PTO is still hiding.) We expect that this will not go over well with a court.

  59. 4

    Come on, guys, it says right there that the changes won’t be economically significant or affect small entities. What’s the worry? ;)

  60. 3

    Oh dear God no….

    Our company literally would be dead without it’s IP – much of gotten through many CIP’s and RCE’s.

    What the flying f$#% do we do now.

    How do we include a showing as to why an amendment, argument, or evidence presented was not previously submitted without making statements against interest and likely providing a gaping hole in our protection? We can’t appeal everything to the board – it takes too long and our business decisions need to be made now.

    WE NEED LOTS CON’S, CIP’S, AND RCE’S TO SURVIVE! WE HAVE OVER 100 EMPLOYEES – WHAT DO WE DO NOW????!!!!!!

  61. 2

    As I posted in my comment on a post below, I found the following on the “OMB Watch” website:

    “All rules changed and then approved by OIRA are labeled “consistent with change.” A change for clarity, such as the insertion of a comma, is reported in the same manner as a change in substance that affects the very nature of the regulation. This label needs more specificity to distinguish the various types of changes OIRA makes.

    Under Executive Order 12866, issued by President Clinton and still observed by the Bush administration, agencies are to document changes made to their rules while under review at OIRA. Yet this documentation is inconsistent and frequently inadequate. In a 1998 report, the General Accounting Office found complete documentation of OIRA changes for only 26 percent of the 122 regulatory actions it reviewed, covering EPA, the Dept. of Transportation (DOT), Housing & Urban Development (HUD), and DOL.”

    So, that basically means that the rules HAVE been changed, we just don’t know how. Any ideas as to when we might actually see these final rules published?

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