Over the past 33 years, the sheer number of prior art citations have steadily risen. In the mid 1970’s less than one percent of issued patents cited more than twenty prior art references. Today, more than thirty percent of recently issued patents reach that benchmark. Although the examiner is considering more prior art, the average amount of time an examiner spends reviewing an application is about the same as it was back then.
Deal, That is why a search is revised over and over and over while it is being conducted. My large “pile of refs” is what it looks like at the end. A summation of several strategies that add up to several thousand references that encompasses 98% of the good patent art. And that’s for patentability work! If it’s a validity, the % better approach the asymptote a little closer. Regarding primaries: many of them are successful because they’ve learned to game the system (get 120% with minimal effort). Some are not. Find the one’s that are not and let them be your mentors. Just look at the issued claims to find them (if it smells bad, trust your nose).
Eye, Correct… A human still needs to physically review the art in the big pile and it’ll never be 100%. With a pile of relevant art, we can text search it for specific features with proper context. Much easier to have motivation to combine if your references are all germane to the subject matter rather than random references with no common thread.
Public searching has one great motivator that Examiner searching does not: if we miss a reference, we can lose a client. And if it’s a really bad screw-up, our reputation is hurt. Since our biz is primarily word of mouth, that is the stake to the heart.
You’re welcome MVS. Always a pleasure to listen to someone who really “gets it.”
With regard to searching, the problem is, that generating a big pile of references means that the job is only half done and the closest art has not been found. Its not just about randomly picking a couple from the stack, its about finding the right ones and it takes time and effort. Computer searches can make the job easier, but it still takes a human to sort through the preliminary results and weigh the references to come up with the top ones. Its a question of pride and professionalism. And of course, skill.
Does anyone remember what the word skill means?
I should add, the reason I say exp examiners don’t get that is because of what I see going on. You’ll see a big hullabaloo of a search at the beginning that just gets “updated” throughout. What you will not find is a googling of the subject matter they amend into the claims. Based strictly upon my own success rate of finding such subject matter (including newly found 102b’s after amend) this is rather important and hardly ever done in the cases I see done by primaries etc. Or at least they’re not putting it down on the search report.
The joke of a classification system we have in place right now may be a good portion of the good search if you’re an expert with it, but it’s by no means the meat and potatoes it once was.
“Experienced searchers create a “large pile of refs” that should have all the good art in them.”
You never, ever, have “all the good art”. Ever. There may have been .000001% of cases throughout the history of the office that did. Maybe. And that’s a big maybe. Experienced examiners just don’t get that.
Even assuming you have “most of the good art that can be reasonably obtained by the office” it makes little difference, you’re still going to have to make a rejection of the overclaims to get down to what the applicant is willing to accept. Then you have to fight or give them some meh arguments. At least this is what we have to do at present.
I’m pretty sure the deal I propose would go over swimmingly with the office. Stop with the overclaiming into the ridiculous realm and you’ll get your more tight 103 on first action. Or, your allowance. At least include one claim that’s the narrowest you’ll accept. How hard is it to include one claim that is the narrowest thing you’ll accept? Seriously. It’s not that hard. Just roll all deps up if you’re too dumb to do anything else.
MVS:
Ditto everything you’re saying! This is especially evident in the rejections we receive in the Accelerated Examination Program. Experienced searchers create a “large pile of refs” that should have all the good art in them. We don’t keep whittling it down for one good ref. The newer examiners just don’t get that.
eye,
Thanks for the good words. I have done a lot of training before. Actually I like doing it a much of the time. Unfortunately, no matter how many times you tell someone the right way to do it a lot of them will try to find the “easy” way (even if it is harder in the long run). A lot like raising a kid. Most of them will only learn the hard way by making their own mistakes. If they do ever learn.
Personally, what I wanted to do it make the newest examiners do just class/subclass searches for at least the 1st 6 months and only do text searches if they get explicit approval AFTER having done the proper class/subclass searches. Wasn’t allowed to do it.
I really believe that text searching, & the emphasis thereon, has made the examination process much worse. We would have been better off putting the money into better classification and rely upon text searching as a supplement to class/sub searching rather than a replacement of it.
MVS
Yes, just as I thought, a one man mission to clean up the patent office from all the trivial patents.
Nurse, this man is drenched in frisson laden sweat, apparently over overly broad “garbage” computer related invention claims.
Nurse, 100ccs of Thorazine, STAT.
Now Malcom, try to relax.
Dear AllSeeingEye,
I’m sorry your claim to a peanut butter cup comprising a chocolate coated joojoobee was rejected. Please don’t take it so personally.
Sincerely,
Malcolm Mooney
P.S. Don’t forget you can still file a continuation.
All, all of our lives are trivial.
link to hk.youtube.com
Warning, this video may contain single frames of something spliced into it.
To me, pomp ous asswholes who condescendingly use the term “trivial,” or even “trivial gar bage,” or “crap,” or “doodoo,” or “white wine” or “crack pipe” way more often than most would think imaginable, have always seemed to me to be projecting a deep sense of inadequacy and a sweaty frisson regarding the triviality of their own lives.
Mooney you are clearly one of those not only “who never learned” but “who never learns.”
And by “rest of the world” you mean the other patients on your ward.
Bite me.
“the practice Mr. Smith refers to has done is create a situation where opinions like KSR have to come out because Examiners have forgotten, or never learned”
Meanwhile, the rest of the world understands that KSR had to come out to take care of the reams of trivial garbage that was filed (and issued) over the past ten years.
But thanks for sharing.
Mr. MVS makes an excellent point.
“Most newer examiners don’t search subs anymore & think that they can just throw in terms into east & get their refs. They never learn the art so never know what is out there & what isn’t or what is or is not obvious to do. Or what is allowable or not.”
Putting claim terms into EAST is “virtual,” but nonetheless baldfaced, hindsight reconstruction. Don’t get me wrong, I’m all for technology.
But what the practice Mr. Smith refers to has done is create a situation where opinions like KSR have to come out because Examiners have forgotten, or never learned, what their job really is and how their job was done before them.
The combinations that result from today’s practice are much more haphazard and difficult to support because often times the Examiners don’t even read the references until after final. Its only then that they realize that their combination doesn’t make any sense whatsoever and was the result of a search term anomaly.
Mr. Smith, you should consider offering your services to the PTO to conduct Examiner training.
RE: “TLDR: This ‘Although the examiner is considering more prior art, the average amount of time an examiner spends reviewing an application is about the same as it was back then.’
Becomes:
‘Although the examiner is considering more cited prior art, the average amount of time an examiner spends reviewing an application is about the same as it was back then.'”
Both 6k AND Dennis do NOT have it right.
Surprised?
The real truth is:
1) The amount cited on the patents has risen (see the charts).
2) The amount of references that NEED to be considered by the examiner has risen just as fast, or faster. (Back in the 70’s we were around 3.5 million patent # range. We are now well into the mid 7,000,000s. A doubling of the total # of patents. Plus pgpubs & more access to NPL.)
3) The amount of time an examiner has to review all of this has remained the SAME for the last 3 decades.
4) Most examiners (unfortunately) cite very little art that they are not supplying (anecdotal; based on all the cases I see). They SHOULD be citing other relevant prior art, but most don’t. So they waste everyone’s time.
5) Many of the search tools (particularly text searching like EAST) makes examiners, ultimately, LESS efficient at their job than they were decades ago. Most newer examiners don’t search subs anymore & think that they can just throw in terms into east & get their refs. They never learn the art so never know what is out there & what isn’t or what is or is not obvious to do. Or what is allowable or not.
What is missing from DC’s charts is WHO is citing the art. Applicant or examiner? And what kinds of art are being cited? And how much does it vary from elect to mech to bio? But that takes a lot more work.
So, again, we are left with superficial stats that are out of context and, therefore, have no real meaning.
MVS
D you simply must get your terms straightened out. Just because 40 references are cited doesn’t mean that more art was considered than in a case (from back in the 80’s or today) where 2 references are cited. I could cite 30 references on the majority of my cases, and do so with 40 clicks of a button (as compared to writting them all down one by one in 1980), but that doesn’t mean that I looked at more art for those cases as opposed to the ones that I could only cite 2 references. In fact, I daresay that the cases that I COULD only cite 2 or so ref’s require more art looked at, because if I only have 2 pieces of art I will think to myself “There has got to be more out there” and keep looking longer.
TLDR: This “Although the examiner is considering more prior art, the average amount of time an examiner spends reviewing an application is about the same as it was back then.”
Becomes:
“Although the examiner is considering more cited prior art, the average amount of time an examiner spends reviewing an application is about the same as it was back then.”
And that sentence isn’t particularly jarring. Until you get into the number of cases that have 100+ ref’s cited, and how that number is apparently also on the rise.
“It would be interesting to see how well this data correlates to how easy it is to search for prior art. ”
Or make a decent photocopy quickly.
It would be interesting to see how well this data correlates to how easy it is to search for prior art. I’m not sure what would be an objective measurement of easiness of data collection…perhaps something along the lines of the inverse of the number of people employed to calculate the GDP of the USA.
Does this observation suggest that the number of inventors working in the many fields of art has increased dramatically over the past 33 years?
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