Sensitivity to USPTO Fees

The graph below shows the average number of claims filed with each patent application. I used as my sample 400,000+ original published patent applications. “Original” means that these applications do not claim priority back to an earlier filing. The trend leading up to late 2004 was a very slight (but statistically significant) rise in the total number of claims being filed. Then, in late 2004, we see a sudden drop. Over a one-month time period, the average number of claims dropped from about twenty six claims per application to about twenty two claims per application.

The simple explanation for that change is that the Patent Office dramatically increased its prosecution fees. Instead of charging $18 for each additional claim (over 20), applicants who filed on or after December 8, 2004 were required to pay $50 per additional claim. At the same time, independent claim fees were also more than doubled from $86 per additional independent claim to $200. The PTO also began charging a hefty fee for patent applications that were exceedingly long. All these forces came together to give applicants a clear incentive to forgo potential claim scope in favor of reducing the up-front fees. Since January 2004, the number of claims has continued to fall slightly (but significantly).

This change is good. Applicants will tend to drop red-herring and worthless claims. That in-turn will hopefully lead to tighter prosecution times and more clarity of claim scope.

143 thoughts on “Sensitivity to USPTO Fees

  1. 143

    I thought EVERYONE pretty much agreed that EPO searches were universally superior, then I took a poll and found that it was pretty much unanimous, except for e6K. He was out on the sidewalk with a wild look in his eye, shouting at strangers about how atoms fall out of wires…

  2. 142

    Well 6k, your anecdotal evidence from your 1.5 years in your narrow niche is probably a little less probative than my 9+ years across a variety of technologies.

    BTW, an RCE and a request for reconsideration are different. You’ll learn that when (if?) you make it to GS-11.

  3. 141

    “Then you make a novelty objection and remind Applicant about Rule 137(3) EPC 2000.”

    We need rules like that. I bow to your system good sir. /bow

    Sometimes I toy with the idea of declining an RCE. “The examiner considered the request for reconsideration but declines to reconsider the application.”

  4. 140

    “The PTO should stop wasting time and user fees and just ask for help from people who can provide it.”

    I agree with that, frankly we should swipe their search tools and their classification imo. Still, your anectdotal evidence of their “much better” searches is just about the same as mine that it’s marginally better if at all. I have no shortage of cases where I’ll get an EPO report and I’ll go find better art. With a 10 second googling in some instances, no lie.

  5. 139

    6K, here’s a thought. Claim 1 is lamentably vague. In the EPO you should object under Art 84, that the claim isn’t “clear”. But, when you do that to an American attorney, things can get vitriolic, because he (invariably a he) doesn’t take kindly to aspersions being cast on his drafting skills, by somebody who is not an English native speaker. So, instead, you choose an equally absurd D1, and read features of the drawings of the app, number by number, onto the text of claim 1. Then you make a novelty objection and remind Applicant about Rule 137(3) EPC 2000 . That’s the one about one shot at amendment only, and after that you need my “consent” to get your amendment admitted. Usually works a treat. AND, the more absurd the cite, the better is the response.

  6. 138

    “Acting like EPO examiners have/find all the best art is ridiculous. If they’re citing better art it’s only from your point of view, seeing examiners here cite ridiculous art.”

    Actually, no. The patent bar and applicants have been telling the PTO for years that the search results from the EPO are far better than the search results from the USPTO and they’ve just covered their ears, stomped their feet, and refused to listen.

    The PTO did the same thing with the original EFS (electronic filing system). They made up some insanely complicated system that nobody wanted to use. I attended a demo of the system back in 2001 and basically every practitioner in the room told the person from the PTO, “We would never use that system.” They clung to it for a long time though. Finally, they just went out and licensed the EPO’s system. Should’ve done that in the first place.

    The PTO should stop wasting time and user fees and just ask for help from people who can provide it.

  7. 137

    Easy ride? No, nobody said it was. With the exception perhaps of me. I could think of harder jobs than this. Easily. Every now and again it’s challenging, mostly because I try to do a “good job” instead of a “job”. D1 is always D1 at the moment. EPO’s D1 is often far from the mark. FAR. You remember the case I was telling you about the other day where I missed the sub I should have been in? I used some art from the EPO to make the first rejection even though it didn’t look terribly like a good “D1” to me, but I had nothing better. The EPO examiner got all the claims with it and so did I. Then I had to go back and actually find a good D1 after finding out about the other sub come amendment time. Acting like EPO examiners have/find all the best art is ridiculous. If they’re citing better art it’s only from your point of view, seeing examiners here cite ridiculous art. Out of the not so few EPO search reports/actions I’ve perused there’s nothing remarkable about the relevance of their refs. I’ve seen outlandish rejections from them just the same as from the US. Saw one where, I swear to you, it didn’t appear that half of the limitations were even nearly/inherently/implicitly/madeupidly present much less explicitly shown.

    I should also note that after having discussed this on PO it turned out that the particular EPO reference discussed above was found to be D1 when there is literally a whole sub with plenty of refs in it just like in my class. There being one notable exception. In their classification they actually call the device it’s name whereas my classification calls it some ridiculous “gobbledygook”. Explain to me how they would miss the sub when it specifically defined as the device’s NAME?

    Also, I’m POed, someone spilled my yogurt in the kitchen and of course none of the places that supposedly stock it have any.

  8. 136

    6K, Eye, It does often happen, that Applicant doesn’t know about D1 till the EPO Exr finds it for him. Then Applicant is in a hole. Things go much better, at the EPO, when the subject matter claimed is presented, from the outset, within the context of the art that the inventor found most relevant. I believe that used to be the case, also, in the US jurisdiction. Things have got so distorted recently, however, that some US firms begin their PCT cases, at the top of Page 1 of the spec, with the brief description of the drawings. You readers know it ain’t right. But juries and District Court judges don’t. That’s why you do it, I suppose.

  9. 135

    If you’re stumbling e6K, then you’re not doing your job. If the EPO can find D1 (and D2, and D3 and D4…) why can’t the PTO?

    Because someone told guys like e6K that patent examining and patent law was some kind of easy ride. Its time for you to stop daydreaming about becoming a lawyer and get to work.

  10. 134

    Also, if the applicant would admit D1 in his background and admit it was D1 then we’d all be better off. But of course, there is no D1 until the examiner stumbles upon it in the millions of references out there amirite?

  11. 133

    “So, if the USA were to sign up, the EPO might have to open a branch in DC, with thousands of US Examiners, all examining under the law of the EPC.”

    Max, unfortunately U.S. examiners have been told, in no uncertain terms by PTO management, that they are not required to follow the law. Maybe some EP examiners would be interested in moving to the U.S. Housing prices are a bargain right now.

    If the U.S. examiners were actually capable of finding D1, I think our courts would do a better job of adjudicating patent disputes. I would welcome the prospect of our courts handling cases in which the closest prior art was actually in front of the examiner during prosecution.

  12. 132

    “Except that Examiners are real people, too, pds, including the lazy rubber-stampers who issue those software and computer-implemented inventions you love so much. Eventually they’ll learn how to do their job correctly. Then you’ll have to do the same.”

    When you become qualified as a patent attorney, come talk to me about my job. Until then, you are little more than the uninformed peanut gallery expressing your ignorance everyday.

    FYI … getting a computer-related patent is, on average, much harder than getting most any other type of patent (just one step below “business method” patents, which are the hardest to obtain). If you think examiners are “rubber stamping” software patents, then you are an absolute ignoramus.

    Also, unlike you, I actually try to understand the law, not mope all the time (like you) bemoaning how all these patents are being issued. All you can make is policy arguments based upon the fact that some partner (who specialized in software) kicked your bu tt some time ago and you are still harboring resentment over it.

    As for computer-related/software patents, I defend them because you attack them. Attack other types of patents, and I’ll be happy to defend those as well.

    Let me guess, you are the type that has his secretary print out all the posts, you dictate your response to these posts into a tape recorder, and then have your secretary type them out.

    I would welcome to the 21st century, but it looks like you are having trouble getting out of the 60s and 70s.

  13. 131

    Mr Darling, interesting thought, to let the EPO do the search. What’s interesting about the EPO is that it does not only search but also examination, for its 34 Member States, but has no competence for post-issue litigation, which continues to be the province of the national courts of the Member States. The Administrative Council of the EPO can invite further sovereign States to join up. New Members get to stuff the EPO with a number of Examiners in proportion to the amount of business their residents file at the EPO. So, if the USA were to sign up, the EPO might have to open a branch in DC, with thousands of US Examiners, all examining under the law of the EPC. But, if there were a dispute in the USA, after issue, it would be the US courts that would adjudicate it. How does that prospect grab you? I’m not joking. Or am I?

  14. 129

    “What about it? Obviousness has always been predicated on the legal fiction that one having ordinary skill in the art has all the relevant prior art before him or her. Giving REAL people greater access to information (e.g., the prior art) doesn’t change that.”

    Except that Examiners are real people, too, pds, including the lazy rubber-stampers who issue those software and computer-implemented inventions you love so much. Eventually they’ll learn how to do their job correctly. Then you’ll have to do the same.

  15. 128

    “Do you expect me to believe that your clients don’t come up with 100x the amount of innovations than they can actually afford to bring to you and patent?”

    Most people are content to merely smoke patent crack. Here we see what happens when you shoot right into the mainline.

    Sad.

  16. 127

    SmallPeeingGuy: “Obviousness is obviousness – so what. Like a certain poster who invented everything of significance, you think everything is obvious.”

    No. I think everything that is (1) enabled simply by describing it and (2) merely a virtual manisfestation of something that has existed for years in the real world is obvious. Unless you can show unexpected results.

    Which you can’t.

    So bite me.

  17. 126

    “The best fix for the USPTO in my opinion is to do nothing, wait for the EP examiner to identify D1, and then issue a FAOM, preferably relying on D1.”

    You’ve touched upon something that I’ve been thinking about for awhile. Specifically, what is the USPTO really trying to do with these rules. I imagine that they are not that ignorant so as to not foresee what will happen should something like ESD be put into place.

    For example, suppose there is a requirement that some type of “search” be performed. The interesting question, in that case, would be what qualifies as a “search?” Perhaps the USPTO promulgates a rule that states that any search performed by an entity, certified by the USPTO, as being capable of performing the search is acceptable, and the USPTO certifies that the EPO and JPO are those entities.

    In such a situation, applicants might be persuaded to file PCT, request the search be done in the JPO/EPO, and the USPTO accepts the search as being sufficient if the applicant proceeds in going national phase in the US.

    Another step would be to force the examiner, in the USPTO, to treat such a search as binding (i.e., no additional “full-scale” searches), which results in a requirement for more production from the examiners.

    This could be an “end around” to hiring more examiners by, in essense, having applicants pay other patent offices to perform the search.

    Just a few thoughts … and I’m sure there are other permutatons that could be put into play.

  18. 125

    “I look at it differently: lose out on some low-end innovations, in order to provide a more streamlined examination for the rest. It won’t solve the backlog alone (as I noted above), but it would help. And it would go a long way to deterring the useless patents that create PR nightmares for the patent bar and talking points for Dudas et al.”

    This is a point that I’ve addressed before but you’ve conveniently forgotten already. Let me refresh your recollection:
    “Your comments establish your ignorance as to how easy it is to value a patent application, [particularly] one that is in the drafting stage. Put [simply], it is EXTREMELY difficult to place a value on any patent application. Without knowing the scope of the claims that will eventually be obtained, where the market will be 5-10 years from now, what the competitors will do 5-10 years from now, or what subsequent technology may render obsolete your claimed invention, you are left with guessing.”

    With that in mind, you are advocating that the decision on whether to file (or not) should be based upon pure speculation as to the future worth of a patent. As I noted before, applicants do it today because they are forced to. However, this does not mean that they (or anybody else without prescience) are capable of doing a good job.

    Again, as I proposed to you before, if you think you can even reasonably guess which patents are going to be commercially viable/signficant/??? in the future. I’ll raise capital for a fund to invest in those patents.

  19. 124

    Max,

    The U.S. filing fee already includes a search fee as a component. So conceivably the PTO could conduct the search and forward the results prior to the payment of any additional fees.

    The problem, though, is this: U.S. examiners are no where near finding D1 in the first search. Some (many? most?) examiners are no where near finding D1 ever. Most of the time, applicants provide the U.S. examiner with D1 from the corresponding EPO case. And the U.S. examiner ignores it in favor of the silly art they found during their search.

    As EP examiners routinely (always?) find D1 the first time around, one shot at amendment after FAOM is fair. Under the U.S. examiners’ broadest unreasonable claim interpretation/most ridiculous reading of the prior art system, one shot is not fair.

    The best fix for the USPTO in my opinion is to do nothing, wait for the EP examiner to identify D1, and then issue a FAOM, preferably relying on D1.

    Given the differences between FTF and FTI, and between obviousness and inventive step, this won’t work in every case, but I think it’s preferable to the endless stream of silly office actions coming out of the USPTO.

  20. 123

    Mr Darling, a clarification please. You envisage a separate fee for requesting examination. Would that be a fee for the USPTO search activity as well, or do you envisage the EPO method: search fee on filing, then publication of the app and the search report, then (and only then) payment for the process that goes on during examination on the merits. The EPO is busting its guts to get Applicants to file a preliminary amendment not later than the exam fee. They’ve wanted that since 1978 but are getting more pushy now, about getting what they want. Rule 137(3)EPC 2000 gives Applicant just one shot at amendment, after the FOAM issues. What’s the best fix for the USPTO, in your opinion?

  21. 122

    SF,

    Agreed. I was at a Bar Association of DC meeting in late April/early May of 2006 (right around the time comments were due) and it was mentioned to Mr. Whealan that the rules might be challenged. He said the PTO considered that possibility, figured their chances were 50-50, and to go ahead and take our best shot.

    I’m not sure he was expecting anybody to take him up on his challenge. If he had, I don’t think he would have given the PTO a 50-50 chance.

    Considering how much time and money the PTO has wasted with these rules, I hope they are not ultimately rewarded by Congress. Until competent management is put in place at the PTO, Congress shouldn’t even entertain the notion of giving the PTO any additional authority.

    I agree with your proposal to have a fee to request examination. It works elsewhere. Why the PTO hasn’t proposed/asked for that is a mystery. But it does shed light on the incompetence of the current management. They ignored all of the comments they received and don’t appear at all interested in doing anything except punishing applicants.

    They’ve been told over and over that the examiner production system is a huge problem and contributes to the backlog and pendency problems. They know it’s true, but adamantly refuse to change it, or even acknowledge it is a problem.

    Nothing will be accomplished until the current management is swept away.

  22. 121

    “The only explanation I can think of for the PTO’s appeal is that their strategy all along was to get shot down in court, and then go to Congress…”

    They hoped they would win (they put their chances at about 50%), but they now need to exhaust their appeal to then get the leverage they need to go to Congress.

  23. 120

    The PTO does not have authority to set fees to discourage filing. They have authority to set fees to cover the cost of examination.

    “The ESD and IDS rules will drastically increase preparation costs, instead of filing fees in my proposal. So the real question is whether the USPTO will get Congress to give them the authority to demand the ESD-type analysis.”

    Well, they’re certainly not going to get that authority from the court. Proposed Rule 265 will be reviewed by the Fed. Cir. in the GSK case and I think it’s likely that the court will agree that the proposed rule is impermissibly vague. We’ll see.

    The only explanation I can think of for the PTO’s appeal is that their strategy all along was to get shot down in court, and then go to Congress and say, “We did the best we could, but we were blocked by the court, so now you have to give us the authority by statute if you want anything done about the backlog and pendency.”

    In effect, the PTO may be deliberately trying to lose the appeal. That would (partially) explain the silliness of their arguments.

    The fact that the proposed rules will have a minimal impact on the backlog and pendency is not considered to be a problem as the legal masterminds who wrote them will be long gone by the time that fact manifests itself.

  24. 119

    “Regardless, my position is that the goal of the patent office should be to maximize the encouragement of innovation. As for me, I see that the varying effects of your proposal do more to discourage innovation than encourage innovation. On that basis, I don’t support it.”

    That’s one way to look at it: maximize innovations by allowing patents to be as affordable as possible. I look at it differently: lose out on some low-end innovations, in order to provide a more streamlined examination for the rest. It won’t solve the backlog alone (as I noted above), but it would help. And it would go a long way to deterring the useless patents that create PR nightmares for the patent bar and talking points for Dudas et al.

    I’d be in favor for a similarly high “request for examination fee” with a low filing fee to allow applicants to test the waters, get funding, etc. while not bogging down examination resources.

    “Regardless, your proposal has about the same chance of being implemented as that of 6K’s proposal to change how the 2nd paragraph of 112 is interpreted.”

    You’re absolutely correct. But the USTPO proposals leverage the same principle: make it more expensive. The ESD and IDS rules will drastically increase preparation costs, instead of filing fees in my proposal. So the real question is whether the USPTO will get Congress to give them the authority to demand the ESD-type analysis.

  25. 118

    And look on the bright side pds, when we have the backlog under control, the gov can start paying off the 700 billion we’re about to lose, or the billions spent in Iraq by not letting the PTO keep all the fees! Hurray! The economy is saved! Iraq is conquered under our iron boot!

  26. 117

    My proposal to change how 112 is interpreted has the same chance of being adopted as higher fees to discourage “overfiling” of applications? I didn’t realize my chances were so high. Near 100% over the long haul?

    “After reading your comment twice, I believe you have made my point for me, as I found your comments to be very ambiguous.”

    Actually you’re just incompetent. What do you not understand about his comments? They are very simple. Let me break it down into attorney hand hold talk that I reserve for Finals. 1. Clients determine which ideas are commercially significant enough to be considered a “priority” and thus filing worthy. Do you expect me to believe that your clients don’t come up with 100x the amount of innovations than they can actually afford to bring to you and patent? 2. This determination of significance is different than the actual exploitation that goes on down the road, what the client thinks is important in 2005 might differ radically to what actually turns out to be important in 2008. Correct?

    In essence he says: the only thing that is of concern here is how the applicant feels at time of filing. It is better to make the applicant feel cautious about filing and wasting money on something that has, in their opinion, at time of filing, a very small chance (for instance .000001%) of being significant down the road.

    You argue: Oh, but if it turns out that the app wasn’t comm viable then that shouldn’t have an impact on if the app issues or not.

    Nobody said that it should. He said that how the applicant FEELS ABOUT THE APP AT THE TIME OF FILING should have an impact. Jes us, I don’t know how much clearer to make it for you.

    Let me try in other words, if the applicant doesn’t feel the $/(% chance the invention will be significant) ratio is in their favor then they will not file, just like in today’s system. The poster you are responding to feels like this ratio is not being used right now but is a useful tool in weeding out applications that serve nothing more than as a blockage to the system.

    If it weren’t for my Grandmother coming up with the idea of putting blue ink on the last parts of floss to tell you when you’re low, and my sister coming up with the disposable female urinal and both of them wanting to patent each idea then I might would agree with you that fees should be as low as possible. As is, they’re 50+ years too late and a 10 second googling told as much. I’m not too sure that applicants with similar ideas shouldn’t either a. think twice or b. fire up Mozilla. Since b is OUT OF THE QUESTION and the only way to accomplish a is to hit the pocketbook then the course of action seems clear.

  27. 116

    “Well pds, you make the cavalier remark …. beats me).”

    After reading your comment twice, I believe you have made my point for me, as I found your comments to be very ambiguous.

    You share the quality with 6K (but not MM, who is better at this) of being able to write a lot without saying much.

  28. 115

    “pds, since you don’t discuss what I write (e.g., commercial significance and the every client’s ability to determine whether its worth the risk for them to pay the fees/costs to file) and you discuss strawmen (e.g., commercial exploitation), your condescending remarks ring hollow.”

    Please … parse the difference between “commercial significance” and “commercial exploitation,” as I cannot find a difference that makes my comments not relevant.

    “Ramping up the costs merely makes them think twice about it, which is a good thing.”
    Why is it a good thing? Why are “commercially significant” patents more important than patents that are not commercial significant? In case you didn’t realize it, patents have a wide variety of commercial significance, some of which are difficult to quantify.

    You are right, however, is that clients do that all of the time. The current costs to prepare/file/prosecute a patent application is already beyond the means of many people/companies, which is why many people do not file a patent application.

    Regardless, my position is that the goal of the patent office should be to maximize the encouragement of innovation. As for me, I see that the varying effects of your proposal do more to discourage innovation than encourage innovation. On that basis, I don’t support it.

    If you cannot do better than “higher filing fees will reduce pendency,” then, IMHO, you are working with a weak argument.

    Regardless, your proposal has about the same chance of being implemented as that of 6K’s proposal to change how the 2nd paragraph of 112 is interpreted.

  29. 114

    Well pds, you make the cavalier remark that apps from multi-lingual Europe don’t fulfill the US “written description” requirement because they are “ambiguous”, but “quality” means “fitness for purpose” and all those European cases are probably quite fit for the purpose they were written, and probably do meet European enablement standards. The word”ambiguous” has a very clear and distinct meaning and a patent document is seldom truly “ambiguous”, even the one in Chef America. Mostly patents are just horribly unclear. A contributer above called Pen finds European women to be quite fit too (although what that has to do with the subject under discussion beats me).

  30. 113

    pds, “If you had any CLUE as to how inventions are commercially exploited and how long it can take to determine whether or not a patent is commercially viable, you would be embarrassed to write what you did.”

    pds, since you don’t discuss what I write (e.g., commercial significance and the every client’s ability to determine whether its worth the risk for them to pay the fees/costs to file) and you discuss strawmen (e.g., commercial exploitation), your condescending remarks ring hollow.

    Clients make filng decisions everyday about the commercial significance of an invention without knowing whether they’ll eventually commercially exploit it or whether it proves to be commercially viable. Ramping up the costs merely makes them think twice about it, which is a good thing.

  31. 112

    “Back at those conclusion (that Europe is great) without analysis gig again.”

    Have you seen their womenz? Why always analyzing pds? Just observe.

  32. 111

    Dear Mr. A.S.Eye,

    Re: “If the pendulum swings back the right direction and patents are given teeth again, you might see applicants spending more time to search because they would want to make sure that their patent was bulletproof and didn’t get invalidated after a lot of dollars were sunk into a costly infringement litigation.”

    Dead on; I couldn’t agree more…

  33. 110

    “I think those challenging the validity of US patents should worry away at the “written description” point, till it’s taken as seriously in the PTO and SCOTUS, as it is taken here in Europe.”

    Back at those conclusion (that Europe is great) without analysis gig again. Based upon what I’ve seen coming out of Europe, the written description requirement at the EPO isn’t take too serious given the ambiguous nature of the patents I’ve seen drafted by your fellow attorneys.

  34. 109

    “The point is that the vast majority of alleged inventions are not commercially exploited, ever, because nobody is interested in them.”

    I’ll partially agree with the first point, but not the second. Many inventions are not IMMEDIATELY commercially exploited because they are not ready to be exploited

    For example, take the history of the light bulb. See, e.g.,
    link to inventors.about.com
    link to ideafinder.com

    It took many decades from when the first light was produced from electricity to when Edison invented his light bulb. Moreover, to make the light bulb commercially viable, it took several other improvements by Edison (beyond his filament).

    The fact that an invention to a “base technology” may never be commercially viable in the lifetime of the patent shouldn’t prevent that patent from issuing. First off, without the initial disclosure, any follow up inventions to the initial disclosure may be delayed or may never occur.

    Moreover, where the invention does achieve commercial success, but by somebody else, and before the expiration of the original patent, the respective patent holders can engage in negotiations as to how to exploit those patents. In so doing, both parties can realize a benefit from their activities.

    Regardless, the goal of the US patent system shouldn’t be to just reduce the backlog in the USPTO, whereby those who have the ability to pay large filing fees have a longer time to exploit their patents. Instead, the goal of the US patent system should be to encourage innovation.

  35. 108

    “on the other hand, the extreme difficulty Applicants have, in finding any Background Art for inclusion in any new app, for setting the claimed subject matter in the context of relevant art.”

    To my recollection, I don’t think I, or anybody else, has stated that it is extremely difficult (or even just mildly difficult) to find prior art to discuss in the background of the invention.

    However, the sophisticated patent drafter (in the US) works in the context of the current law. First, there is no requirement that applicants discuss the prior art. The bargained-for quid pro quo is applicant’s disclosure of his/her invention for limited rights to that invention. Thus, applicant needs to describe their invention, not other people’s invention.

    Second, given the ever-looming possibility of being accused of inequitable conduct, characterizing the prior art can lead to invalidation of the patent. For example, even if you are only using the exact words from the prior art, one could be accused of not discussing a particularly relevant aspect of the prior art.

    Discussing the prior help may help, during prosecution, to better explain the differences between your claimed invention and the prior art. However, there is a risk involved with that discussion. Determining what to discuss (and what not to) involves a risk analysis.

  36. 107

    “And what about obviousness?”

    What about it? Obviousness has always been predicated on the legal fiction that one having ordinary skill in the art has all the relevant prior art before him or her.

    Giving REAL people greater access to information (e.g., the prior art) doesn’t change that.

  37. 106

    Thanks Eye. If you don’t mind, I’m not going to hold my breath till FTF comes in. I have a feeling my health will suffer. What I’m saying is what you have picked up, with your use of “should” and “statutory”. I think there is a statutory requirement for a written description of the invention on the filing date. I think that’s important for the health of the US patent system. I think the CAFC thinks it’s important (see the concurrent Judge Lourie) thread). I think Applicants and prosecuting patent attorneys, and those who litigate on behalf of patent owners, think it’s important to keep the “written description” requirement weak. I think those challenging the validity of US patents should worry away at the “written description” point, till it’s taken as seriously in the PTO and SCOTUS, as it is taken here in Europe. That would deliver a better balance between infringement and validity, which in turn would raise the chances for owners of not invalid claims to secure permanent injunctive relief from infringing acts.

  38. 105

    Max,

    Although your post was addressed to pds, with all due respect, what are you saying? Just because subject matter can be found quickly doesn’t mean that art related to an invention can always be found or should be found by the applicant. Its the PTO’s job to find art – let me repeat – its their JOB!

    There is no incentive for most applicants to hide anything – there is just not necessarily a huge incentive for applicants to conduct a big search. There is every incentive for applicants to attempt to get broad claims legitimately allowed and the PTO’s job is to make sure that the claims that get allowed meet the statutory tests. That’s about it.

    If the pendulum swings back the right direction and patents are given teeth again, you might see applicants spending more time to search because they would want to make sure that their patent was bulletproof and didn’t get invalidated after a lot of dollars were sunk into a costly infringement litigation.

    First to file? Please hold your breath along with zomg…

  39. 104

    Max,

    Although your post was addressed to pds, with all due respect, what are you saying? Just because subject matter can be found quickly doesn’t mean that art related to an invention can always be found or should be found by the applicant. Its the PTO’s job to find art – let me repeat – its their JOB!

    There is no incentive for most applicants to hide anything – there is just not necessarily a huge incentive for applicants to conduct a big search. There is every incentive for applicants to attempt to get broad claims legitimately allowed and the PTO’s job is to make sure that the claims that get allowed meet the statutory tests. That’s about it.

    If the pendulum swings back the right direction and patents are given teeth again, you might see applicants spending more time to search because they would want to make sure that their patent was bulletproof and didn’t get invalidated after a lot of dollars were sunk into a costly infringement litigation.

    First to file? Please hold your breath along with zomg…

  40. 103

    pds, a question: Do you see any contradiction between, on the one hand, your quoted “extreme ease at which students can access any information these days. There is little they cannot find in just a couple of minutes” and, on the other hand, the extreme difficulty Applicants have, in finding any Background Art for inclusion in any new app, for setting the claimed subject matter in the context of relevant art. Is it perhaps that the legal sanction for overlooking a piece of art is greater than the sanction for leaving out the prior art entirely? Is it a legal system that Promotes the Progress, and nurtures legal certainty, that gives an Applicant an incentive to 1) avoid setting the invention in the context of relevant prior art, and 2) avoid claiming the real invention, till after the FOAM. Will First to File make any difference?

  41. 102

    Its not rocket science Mooney. And failure to exploit patents has nothing to do with whether people are interested in them.

    Obviousness is obviousness – so what. Like a certain poster who invented everything of significance, you think everything is obvious. In his case we call it a mental health problem, in your case we call it arrogance, which some might say is also a mental health problem. Either way, you always seem to make your armchair sniff-o-riffic obviousness findings after the fact making you a classic hindsight reconstructionist – a slimy maggot of the worst kind. The MPEP warns us about the slimy hindsight reconstructionist and counsels us to crush him out at every turn.

    I say if people are willing to cough up the PTO fees, then they must think their innovations are at least interesting to the tune of a few hundred dollars. If the PTO really wants to limit the number and quality of applications they are getting then they can raise the PTO filing fees to, say, $20,000. But then of course you would hear a whole new brand of screaming from foreign applicants and disadvantaged businesspeople and individuals. We must also answer the question “why shouldn’t uncle joe be able to get a patent that he can hang on the wall for his improved, battery powered, left handed smoke shifter with the kung-fu grip – who are you to tell him he can’t?”

    If every invention was a slam dunk as you suggest it should be, there would be no need for venture capital because any barney with a fat piggy bank could bankroll a successful R&D effort, file only a commercially exploitable patent application and be off to the races.

    In any 100 patent applications, its not surprising that 10 or less are commercially exploitable at any given time. Commercial exploitation alone is not the point and exploitation decisions are not costless. Thus, a decision to exploit one patent may have included a decision NOT to exploit ten others that COULD HAVE BEEN exploited. The point is that if you are in the business of making complex articles of manufacture, it is wise to have a program of filing on your technology.

    Its a little like owning a firearm or gardening. You don’t own a firearm because you think it should be instantly exploitable (although, like a good patent, it should be readily deployable if and when needed) and you don’t plant a garden because you want sliced tomatoes with your sandwich.

    You own a firearm for that night that you hope never comes when you hear glass break and your alarm system goes off. You plant a garden for that afternoon in late August when you pluck a ripe warm beefsteak off the vine slice it up with a little salt and Hellman’s on top and off to heaven you go.

    You file an application for that day that comes ten years later when you are finally ready to release that amazing feature into your second generation product. You own the patent for the day that you hope never comes when some bozo like Mooney thinks that your years of hard work and development efforts and the resulting patent is “crap” and rips off your technology with a feeble attempt at making an inferior substitute thus threatening your profits and your brand.

  42. 101

    “If you had any CLUE as to how inventions are commercially exploited …”

    The point is that the vast majority of alleged inventions are not commercially exploited, ever, because nobody is interested in them.

  43. 100

    “IMHO, the greater access to information provides so many more opportunities for people to innovate than there was even 20 years ago. Stumbling blocks, which once take a trip to the library and hours of research can now be resolved in minutes. Dead end investigaion, which might have been repeated time and time again, can now be recognized and skipped.”

    And what about obviousness?

  44. 99

    “Excuse me, did you just say that the existence of the Internet is making people more innovative than they were prior to the Internet?”

    Interesting question … I had a conversation, over the weekend, with an administrator at a very highly regarded university and we were talking about characteristics of the current student body.

    One of the points we were discussing is that extreme ease at which students can acccess information these days. There is little they cannot find within just a couple of minutes and access to a search information.

    IMHO, the greater access to information provides so many more opportunities for people to innovate than there was even 20 years ago. Stumbling blocks, which once take a trip to the library and hours of research can now be resolved in minutes. Dead end investigaion, which might have been repeated time and time again, can now be recognized and skipped.

    The internet now allows that 99% perspiration number to be reduced because of the wide availability of information, which should increase the time available for inspiration.

    To me, this is plain as day.

  45. 98

    “Also, the point is to deter new filings to help the USPTO cut through the backlog by being able to examine on the inventions that are sufficiently commercially significant”

    Yes … we now add “commercially significant” to the holy trinity of hoops a patent application has to jump through: statutory subject matter, anticipation, and obviousness.

    If you had any CLUE as to how inventions are commercially exploited and how long it can take to determine whether or not a patent is commercially viable, you would be embarrassed to write what you did.

  46. 97

    “I usually feel like I’m dealing with someone who doesn’t give a crap and is just trying to get things done as quickly as possible so he can leave in time for happy hour.”

    There are people like this, but I rarely rush anything, if I’m not done then it just gets moved to the next day. The only rush time is end of the quarter. They want to force x done, then x will be done.

  47. 96

    “If searching is so quick and easy e6K, why do so many examiners complain that the count system is too demanding?”

    Why, I’m glad you asked! So, let’s say you have an application and you just busted claim one without breaking a sweat. Now, your “job” of “examining” the “application” is about 1/22 of the way done on avg. And then let’s say further that you just get done with all 22 avg claims then you get to decide, “do I really want to search this application, or do I just want to reject it?” At which point you realize, it’s time to move to the next application, but to DO THE JOB, you’d need longer. Now, if you prefer us to be the patent application rejection office, then you should lobby congress to change our name. Needless to say, some people will keep their bs claims to a minimum so that the examiner is free to concentrate on actually finding art that does more than meet the claim limitations. Some do not. Most layers who post here insist, INSIST!!!!! that there be more than a few claims. I cite the few cases that I’ve had that have 5 or less claims as prime examples. All are rejected on very relevant, nearly, if not entirely, spot on references, or were allowed with very close art cited.

    Factor in having a spec that reads like this: An embodiment of the present invention may include a part 1 and a part 2. Part 1 may also include a graded composition down until part 2 begins. Part 1 may also be integrally connected to part 2. Part 1 may also include a composition that has a spiral of chemical x winding up through it until a part 3 begins.

    And there are no drawings.

    Be honest, how much did you glean from spending 2 hours trying to puzzle out wtf they’re trying to say? WTF are the PARTS? Down on page 6 you’ll find out that they MAY be widgets. But nobody really knows. Reading this sht can take hours by itself. Especially if there is 40 pages or more.

  48. 95

    Liebling, how happy I am, to find an EPO Examiner following this thread. I don’t actually see anything in your contribution that contradicts my assessment, but I do concede immediately that things will deteriorate unless all concerned (management, EPO Staff Union) strive constantly to nurture what’s already been achieved, rather than allow internal strife to damage those achievements.

  49. 94

    Max,
    I protest, you can find me in the office much later than 16h30.
    Okay, you will have difficulties to find me there at 8h00 AM.

    More generally, I’ll try to comment on your niceties without blushing:
    – I am “motivated to do a quality job”, but I am not sure I am much in trend in the MBA managementt era of the EPO epitomized by our dear VP a.i. Ciaran McGinley. Even if the pendulum and the message are now swinging slightly back.

    – am I “given good tools to do that job”, maybe you mean the classification philosophy, and the peer developed add-in tools developed before the IT infrastructure muted to a outsourcing business. But we would be better served if the management would recognize that their job is to be leading edge software and database development managers DELIVERING ON TIME, not overcontrolling bean counters personalities loathing public service mentality (especially the public servant salary regulations for themselves).

    Did I receive high quality training and supervision? The first on the whole yes, but about the last I want to mention that my supervisor was promoted at the high of the “deliver, deliver, deliver” hype at the EPO, and it feels in its personal opinion about quantity and quality…

  50. 93

    EPO Examiners work in an environment where the science and technology is the core, and the necessary underlying law is still stripped down to those absolutely bare essentials that made it into the Convention, enacted in 1978. That’s what gives those technical expert EPO Examiners motivation. That’s the key difference, that makes Examiner management a rewarding job in the EPO, and so soul-destroying in the USPTO.

  51. 92

    SF,I venture to suggest that 6K’s “going clubbing” doesn’t explain why the EPO gets better results. You won’t find many EPO Exrs still in the office after about 16.30 hr any day. But they are motivated to do a quality job, and are given good tools to do that job, and (perhaps most important) receive high quality training and supervision. There is definitely an Esprit de Corps inside the EPO. Not bad for a 34 Member State organisation.

  52. 91

    If searching is so quick and easy e6K, why do so many examiners complain that the count system is too demanding?

  53. 90

    “So you ONLY did a class/subclass search and didn’t do any word searches?”

    I never said that.

    No google searches? I thought you can knock out most patents in under 2 minutes with a simple google search?”

    I can. New ones off the stack anyway, after an RCE or two it starts to get a bit harder to google bust the ind. Today I got back an amendment and addressed his extra elements (that got around my 102e) with a nice little 102b. What can I say? Word searching is a gamble and I get lucky :)

    “(e.g. a capacitor will almost always be called a capacitor)”

    You think that until the reference you need decided to leave it at “a bottom metal layer, an insulating layer, and a top metal layer” instead of spelling it out.

    “and I’m fairly certain an EPO examiner would not have missed a few thousand 102 references like you did.”

    Well to be fair I may have been being a bit dramatic. It just felt like there were so many refs, it was probably closer to 20 but still. Bottom line is I missed the sub, and that’s bad. I do however notice that the EPO classification has a sub designated specifically what I was looking for…

    Pro tips on search order: Search the inventor’s name first, this takes care of any freebies. Search the general concept of the ind in google second unless it is too abstract to be of any use. Then search the general type of device in google. Once you see if there is a quick primary then you just saved yourself the 30 minutes it usually takes to find the right sub, and instead only need to verify that it is the right sub. Then, search the sub. If no luck, hit the word search in some subs you think look good. If no luck, hit the word search in the class. Finally, if no 102b’s abound, google again with your new found understanding of the terms you need. Your second google will be 100x more on point than the first. You may then consult expresso etc. to catch any stragglers since you have the best available understanding of the terminology you’re likely to get in this search round.

    It’s not perfect, but it gets the job done nearly always with a fully rejected set of claims. If you’re feeling lucky you can do some databases, but usually google goes through them just as well as their search function does.

  54. 89

    “I know that the computer has sped up the innovative R&D process.”

    It’s sped up the process of document creation, that is for sure. And that would help to explain the relative ease in which excessively long patent applications are created and filed.

    And of course there’s do denying that the PTO’s stance with respect to the patenting of “computer-readable media” has contributed massively to the increase in filing.

    Since you seem deeply confused, perhaps you can educate yourself by looking at the following charts:

    link to uspto.gov
    link to uspto.gov

    Assuming your bizarre theory is true, i.e., that innovation is correlated with patent filing, you think the availability of computers is what accounts for the increase in **innovation** by human beings circa 1994? How does that work exactly?

    Oh wait: it works if you define innovation appropriate for patenting to be anything that wasn’t previously described before.

    I seem to remember, however, some other requirements for patentability. Are you sure that the PTO’s failure to enforce compliance with those other requirements rigorously was not a factor in the bubble?

  55. 88

    “I usually feel like I’m dealing with someone who doesn’t give a crap and is just trying to get things done as quickly as possible so he can leave in time for happy hour.”

    lol … I recall 6K talking about the need to “go clubbin'” in one of his posts

  56. 87

    Max,

    You’re stating why european patent law is great. I’m saying why can’t the USPTO search and examine like the EPO?

    There is another difference as well. In dealing with european examiners, I usually feel like I’m dealing with a professional who takes pride in his work. In dealing with uspto examiners, I usually feel like I’m dealing with someone who doesn’t give a crap and is just trying to get things done as quickly as possible so he can leave in time for happy hour.

    I don’t know how that could be fixed…

  57. 86

    The EPO is unique. It started from nothing in 1978. It has no court sitting on top of it, making its life impossible. It is unfair to expect any national Patent Office to get anywhere near the performance of the EPO. The original 9 EPO members are now up to 38 (if you include the Extension States). Its settled case law is now being adopted by sovereign States, in preference to their own 100 year old case law. It is big enough, and new enough, to have its own good search algorithm. Not just that. Have readers ever tried reading an EPO prosecution file, online at http://www.epoline.org. A nice feature is the opinion on patentability, that appears with the search report soon after filing. I commend it to you and to Examiners at the USPTO.

  58. 85

    Not to be down on the US patent system or anything, but what can the EPO learn from the USPTO? If I had to compare the efficiency of both agencies, it is no contest. EPO > USPTO.

    (note I am not saying european patent law is ‘superior’ to us patent law, i’m just comparing the two patent offices themselves).

  59. 84

    I know that the computer has sped up the innovative R&D process. My guess is that the research and communication abilities of the Internet has also sped them up.

  60. 83

    the USPTO probably has a lot to learn from the EPO as to examiner training and search tools. (And the EPO can probably learn some things from the USPTO)

  61. 82

    “Inventionlols are about as hard to reject as it is to find the proper classification and find a good primary ref. I was quite chagrined this past week when I brought a case up as possibly allowable with my SPE that read on the better part of a subclass of 3k patents, 102 style. Indeed it was part of a technology that is a bedrock of my field, though it is a more recent one than I have a lot of training in. And the subclass for some reason or other doesn’t have in its definition the blatant thing the whole class of devices is called. Ridiculous.”

    So you ONLY did a class/subclass search and didn’t do any word searches? No google searches? I thought you can knock out most patents in under 2 minutes with a simple google search?

    I know I’m no examiner, but when I perform a search, I usually start with word searches, depending upon the technological field. Word searches are great for fields where the words are standardized (e.g. a capacitor will almost always be called a capacitor). Subclass searches are nice for fields where the words are made up (ie. software, some mechanical devices, etc).

    With respect to searching, the USPTO should completely copy the EPO. Train its examiners to search how the EPO examiners search, use the same software the EPO examiners use. EPO searching is effective and I’m fairly certain an EPO examiner would not have missed a few thousand 102 references like you did.

  62. 81

    “The population of the US in 1910 was about 90K, it is now 300K.
    Currently, about 85% of Americans complete high school. In 1910 it was only about 20%, where women and minorities were exceptionally underrepresented.
    The Internet makes knowledge readily accessible for anyone.
    I would say that Americans are orders of magnitude more innovative than in 1910.”

    Excuse me, did you just say that the existence of the Internet is making people more innovative than they were prior to the Internet?

    I’m calling parody here.

  63. 78

    “If, as you think, that a simple search (without even knowing the claim language) would be sufficient to persuade an applicant not to file an application, then those applications that are now filed should be easily disposed of in an a single office action from the USPTO. ”

    I never said that you didn’t need to prepare a claim.

    Also, the point is to deter new filings to help the USPTO cut through the backlog by being able to examine on the inventions that are sufficiently commercially significant (as shown by the applicants’ willingness to pay a higher filing fee) without having to waste *any* counts. Of course, the USPTO still needs better management and more incentives for retention. The increased fees could help fund the incentives.

    “However, I HIGHLY DOUBT that the backlog is the result of those applications that are abandoned after the first office action.”

    The issue isn’t whether the ideas could be easily rejected. The point is to weed out commercially insignificant applications, whether the ideas are patentable or not, before we waste any counts.

    Currently, the commercial significance level indirectly set by the filing fees (combined with prosecution fees) is too low, motivating applicants to file shot-in-the-dark applications. With a search, the client can better make business decisions whether the costs of preparation and filing are worth it.

    You can talk all you want about the uncertainty in predicting the future value of patents, but clients make business decisions about filing every day. And if they don’t know whether their invention might be worth an extra $10K in filing fees, aren’t they in the wrong business?

    In the end, the USPTO will get Congress to give them the authority to ask for an ESD, which will cost at least $10-15K on average to have a US attorney to prepare (or review if prepared by an offshore service). When that happens, the “patent bubble” to which Mooney refers will burst.

  64. 77

    “I was quite chagrined this past week when I brought a case up as possibly allowable with my SPE that read on the better part of a subclass of 3k patents, 102 style.”

    Let’s see …. an examiner, a (should be) expert in the field of searching in his art, completely misses a boatload of 102 references.

    No disrespect to 6K, I applaud his honesty.

    However, this is an example as to why pre-searches searches aren’t the panacea for all things wrong at the patent office.

    We are dealing with imperfections in both the search tools and in the LANGUAGE itself. One word may have different meanings and two people can use different words/phrases to mean the same thing. Because of the inherent uncertainty associated with the language it becomes difficult to perform a search when you are using search terms that could differ from how the prior art described some portion of the invention.

    The BEST searchers don’t just write good search queries, the best searches KNOW the art they are searching. The problem with all the proposals for pre-searches is that outside of foreign patent offices, nobody is going to be able to perform a search that (should) have the level of detail that could be provided by a patent examiner.

    If a pre-search is providing an inferior search, why perform it when it is very costly, will reduce filings (not just of “bad” patents but of patents with merit), and will likely not provide the benefits being attributed to it?

  65. 76

    “http://www.patentdocs.net/patent_docs/2008/09/senator-kyls-pa.html”

    I told you guys to be careful about objecting to this past years patent act. Just wait till this IC stuff gets on the table. 10 mil made me lol. Frankly I would have expected that type of fine already though. I mean, you’re defrauding the public when you commit IC right?

  66. 75

    I still don’t understand how a government agency that is fully funded by the fees it collects can seek to make its customers go away. Either the fees pay for an examination, or they are insufficient. If they are insufficient, raise them until the PTO has enough money to hire the needed number of examiners.

    “inventionlols” as our buddy E6K calls them ought to be easy to reject.”

    I’ll tell you why lowly, it’s because $$$ alone doesn’t make new examiners. They have to be trained. And if you think the training is b ad now, just imagine what would happen if they tried training even more with less SPE’s/Primaries to get the job done.

    Inventionlols are about as hard to reject as it is to find the proper classification and find a good primary ref. I was quite chagrined this past week when I brought a case up as possibly allowable with my SPE that read on the better part of a subclass of 3k patents, 102 style. Indeed it was part of a technology that is a bedrock of my field, though it is a more recent one than I have a lot of training in. And the subclass for some reason or other doesn’t have in its definition the blatant thing the whole class of devices is called. Ridiculous.

    In any case, let me address the issue at hand. The avg claims went down according to D’s graph. And strangely enough, although I haven’t brought it up as much on here lately I noticed recently that it seemed to me that the cases I was working on involved what seemed to be a little less claims than what I was used to. Turns out, at least by my anecdote, D’s chart is likely right on. Still, while 22 down from 25 is a step in the right direction it still leaves much to be desired. Also I should note that my individual experience is probably also in large part due to my working on a lot of RCE cases that are already restricted instead of fresh ones that need restricting. That’s what I had chalked it up to until I saw this graph anyway.

    Also, D, ha te the new format. Classic PO plz.

    Finally, pds, is your answer to the backlog to simply found “Examinerville” and have it reach 15k pop over the next 5 years?

    “Also, patent examiners should be much more efficient that outside searchers because they are much more expert in their technologies and have better search tools.”

    LOLOLOLOLOLOL, have better tools? I wasn’t aware only examiners could access http://www.google.com . Oh, wait, maybe you were referring to EAST? WEST? What are you referring to? The only resource I have that they don’t (that I’m aware of) is having a good relationship with people that know the classification. And guess what? They can call the primaries for searches also.

  67. 74

    Great thread everyone. I see it a bit clearer now. Outside the USA, the writer of a patent application needs to have defined the invention BEFORE filing the app at the PTO. So pre-filing searches are also feasible. Uniquely in the USA, there is no requirement to define the invention before filing. So, no point in searching. Just spew out on to paper upwards of 50 pages about everything under the sun to be found in your “Best Mode”, add an absurdly broad main claim, toss into the PTO, then sit back and wait for the Exr to search. Only after all that does one start to define the invention. Courts, Legislators, WAKE UP. What sort of a crazy, skewed legally uncertain, investor-deterring system is that?

  68. 73

    SF, from your comments I would guess that you work with corporate clients who have internal development capacity and significant funds to develop products from ideas.
    Individuals and small companies have neither. They file priority documents very close to conception of the invention to stake their claim and to be able to discuss an invention with experts, sub-contractors and investors. The bottom line is that even 2 years is not enough time to find adequate funding for much of anything.

    Regarding your 11:54 posting, my experience is very different.
    In retrospect it is easy to say how bad a given invention is, but rarely does an Applicant know the commercial significance of an idea without a significant investment in R+D.

    As for clogging up the system. There are two types of unnecessary applications:
    not novel ones which can easily disposed of or insignificant ones which don’t bother anyone.

  69. 70

    Malcolm 3:34PM:
    The population of the US in 1910 was about 90K, it is now 300K.
    Currently, about 85% of Americans complete high school. In 1910 it was only about 20%, where women and minorities were exceptionally underrepresented.
    The Internet makes knowledge readily accessible for anyone.
    I would say that Americans are orders of magnitude more innovative than in 1910.

  70. 69

    “LOL … if your idea isn’t worth $50K, it doesn’t matter if you’re rich or poor. No rich man would waste the attorneys fees to collect the $50K. No poor man could find a contingency fee lawyer to take the case.

    As I noted above, file a provisional with a low filing fee, if you can’t raise venture capital to pay for a $50K utility filing fee, maybe your idea isn’t that great.”

    Ahhh …. ignorance is bliss. If only great ideas could be vetted after a single year (your provisional only gets you 12 months). Let me make a proposition to you … if you can reliably tell me which applications (18 months after filing, i.e., after being published) are going to be money makers and which ones are going to be failures, I’ll put together a bankroll for us to fund a portfolio that will make offers to buy out the good applications.

    If you’ve got the talent to consistently pick those winners, I wouldn’t even require you to put up a single dime into the investment pool.

    Picking winners, particularly early on, isn’t as easy as you think. If it was that easy, I would be seeing more patent attorneys take an interest in their client’s company …. client’s just LOVE!!! to pay you in shares of their own company.

    Personally, I don’t know of any patent attorney that has made any real money from engaging in such a practice. Personally, I would kick any partner, in the a__, for taking client stock over cash.

  71. 68

    “There you go again.”

    That may have worked against Carter, but I’m no Carter and you are no Ronald Reagan. Speaking of politics … Palin is a lot funnier after a couple of drinks.

  72. 67

    “No. You don’t get it. I’m not talking patent quality. I’m talking about deterring preparation (and filing) when clients see what’s already out there. You don’t need a USPTO-quality search to know whether you should file. I also didn’t say that you didn’t need claim language. I said you didn’t need to write a spec.”

    I would enjoy playing chess against you, you think maybe one move ahead. If, as you think, that a simple search (without even knowing the claim language) would be sufficient to persuade an applicant not to file an application, then those applications that are now filed should be easily disposed of in an a single office action from the USPTO. After the first office action, all of those “easily” disposed of applications should be abandoned. However, I HIGHLY DOUBT that the backlog is the result of those applications that are abandoned after the first office action.

    This is the flaw in all the arguments about the so-called “bad” patents. Bad patents are EASILY invalidated or EASILY rejected. The toughest applications to write claims for, prosecute, and examine are those at the very edge of patentability/unpatentability. THESE are the patent applications that take up the most time, yet these are the patent applications that aren’t going to be helped be pre-searches, because once the time and investment has been made, the application will be filed as long as their is a colorable chance of getting the patent application issued.

    What many forget is that the cost already spent isn’t just the cost of preparing the search or preparing the claims + preparing the search. Instead, the cost also includes what is spent developing/marketing the product embodying the invention.

    Many of us complain about the ivory tower academics whose ideas don’t even pass the sniff test for those of us who have to live with the reality, not the theory.

    The same also applies to the many examiners who have a tunnel-vision view of the issues. They see the issues from one point of view (i.e., how can we reduce the backlog) without thinking about how their solution affects the big picture.

  73. 66

    “You realize of course that, as an objective matter, the number of alleged “inventions” filed with the USPTO that turn out to be crap is at an all-time high. What’s that about, pds? Please explain.”

    Easy … the number of a__holes in this world is at an all-time high. The number of serial killers is probably at an all-time high as well.

    Hmmm … let me wonder why …. hmmmm … this one is really tough …. hmmmm …. oh yes, the population is at an all-time high, which means that the number of X (which is typically a percentage of population) is also at an all-time high.

    Let’s see, when we apply that logic to patent applications … hmmm …. let’s see …. hmmmm … what did we get? …. oh yes, when the number of patent applications is at an all-time high, the number of “crap” applications is also at an all-time high. Hmmmm … it shouldn’t take me to explain that, but then again, your talents for detecting obviousness appear to be focused on patents and not on common sense.

    We already know that you aren’t a patent attorney. Did you actually go to engineering school or get any type of math/science/statistics background?

    Keep tossing up them gopher balls MM.

  74. 65

    Socialist naysayers like Mooney think business itself is a lottery – they h8te seeing others actually making money. Heck, life is a lottery to begin with and there will always be bitter apples like Mooney in every barrel.

    [Maitre’d]
    “Bitter party of one your table is ready, Bitter party of one…”

    [Mooney to himself while fiddling with his Birkenstocks almost dropping his crack pipe]
    “Ooops that’s me, better go before some fat cat in a suit and shoes beats me out…”

  75. 64

    pds “Yet again, you don’t get it. The backlog is a reflection of … the desire to have patent protection in the US, as opposed to elsewhere”

    Oh, we get it, pds. We get it.

    “a lot of innovation in this country and abroad”

    There you go again. The circular argument, with your head in the sand.

    You realize of course that, as an objective matter, the number of alleged “inventions” filed with the USPTO that turn out to be crap is at an all-time high. What’s that about, pds? Please explain.

  76. 63

    PDS wrote

    “Regardless, the backlog, in itself, is unimportant. What IS important is that innovation be fostered. Reducing the backlog can attribute to foster innovation by giving inventors more patent term (and quicker). However, reducing backlog at the expense of reducing the number of filings (e.g., by substantially raising filings fees) is counterproductive to the OVERALL goal of the USPTO, which is to foster innovation.”

    Thank you – you have captured the larger, and what I would consider the more important, focus of innovation. More innovation neccessarily begets more patents and more work for the Examiners. Yes, more applications all things being equal, also mean more garbage.

    Thank you also SF. While I do not agree with your points, I appreciate your civility in defending those points.

    Malcom, I realize that you like to rile people up, especially those with equally ardent positions, but try to realize that your counters that merely attempt to degrade the opponent and contain only hand-waving at the opponent’s argument makes your effectiveness, well, rather impotent. The fact that you cannot see this is more disturbing than any quip or putdown that you throw on the message board. You might try backing up your points with substance rather than proclamations.

  77. 62

    Now Malcolm, I thought we agreed that you would get rid of that crack pipe. And stop playing on the Internet and bothering those busy patent attorneys, your buddies are ready for you in the play room at the checker board.

  78. 61

    (“Again, why should the patent system be in the business of protecting $10K ideas”

    Title 35 and 37 CFR)

    The Patent Office fees should be sufficient to pay for Patent Office operations. If they are not sufficient, raise them until they are.

  79. 60

    “You just don’t get it. Unless the searcher is working with the claim language being filed, they won’t get the type of search being performed at the USPTO.”

    No. You don’t get it. I’m not talking patent quality. I’m talking about deterring preparation (and filing) when clients see what’s already out there. You don’t need a USPTO-quality search to know whether you should file. I also didn’t say that you didn’t need claim language. I said you didn’t need to write a spec.

    “Put simple, it is EXTREMELY difficult to place a value on any patent application.”

    That’s funny because all of my clients have no trouble making business decisions based on filing and preparation costs.

    “As a “public policy matter” you’ll reduce patenting to the province of the rich?”

    LOL … if your idea isn’t worth $50K, it doesn’t matter if you’re rich or poor. No rich man would waste the attorneys fees to collect the $50K. No poor man could find a contingency fee lawyer to take the case.

    As I noted above, file a provisional with a low filing fee, if you can’t raise venture capital to pay for a $50K utility filing fee, maybe your idea isn’t that great.

  80. 59

    Question, wrote “Title 35 and 37 CFR”

    I take it that you don’t have a persuasive policy reason why we should keep (in Mooney’s words) “the Patent-as-Lottery-Ticket status quo” and thus opted to merely point out that 35 USC and 37 CFR governs the status quo.

  81. 58

    “There are plenty of people who can prepare search letters *before* preparing a specification. I’m sure you could do it, if you tried.”
    You just don’t get it. Unless the searcher is working with the claim language being filed, they won’t get the type of search being performed at the USPTO.

    “The issue is the backlog and motivating clients to make more informed choices that likely will result in fewer filings”
    Yet again, you don’t get it. The backlog is a reflection of (1) a lot of innovation in this country and abroad and the desire to have patent protection in the US, as opposed to elsewhere; (2) an underfunded, understaffed, and undertrained workforce at the USPTO; and (3) the prevalent attitude at the USPTO that patents are bad and all applications should be rejected. The issue with (2) and (3), which I see all the time, is that examiner’s take short cuts with their searches and/or over exaggerate the teachings of the prior they find. No competent patent attorney is going to fold when faced with bad art and/or bad analysis, so they fight. Each round of fighting means the examiner cannot pick up another application and that causes a substantial increase in the backlog. Put simply, the more work an examiner has to perform to obtain a final disposal (i.e., either an abandonment or an allowance), then the greater the backlog will be. Reduce the average number of actions to final disposal, and you’ll take a big chuck out of the backlog.

    Regardless, the backlog, in itself, is unimportant. What IS important is that innovation be fostered. Reducing the backlog can attribute to foster innovation by giving inventors more patent term (and quicker). However, reducing backlog at the expense of reducing the number of filings (e.g., by substantially raising filings fees) is counterproductive to the OVERALL goal of the USPTO, which is to foster innovation.

    “As a public policy matter, I’d gladly kiss off all innovations worth less than $50K to save the drain on the examination resources.”
    As a “public policy matter” you’ll reduce patenting to the province of the rich? Where did you learn to make public policy like that, from Mahmoud Ahmadinejad or Than Shwe?
    Your comments establish your ignorance as to how easy it is to value a patent application, particular one that is in the drafting stage. Put simple, it is EXTREMELY difficult to place a value on any patent application. Without knowing the scope of the claims that will eventually be obtained, where the market will be 5-10 years from now, what the competitors will do 5-10 years from now, or what subsequent technology may render obsolete your claimed invention, you are left with guessing. I’ve seen some patents, which, if I didn’t know better, would seem like most patents, which is that that rarely generate any revenue. However, these very innocuous looking patents have generated tens if not hundreds of millions of dollars for their owners. Also, I have no doubt that when these applications were filed, the inventor had no idea that these patents were going to be worth that much.

    The patent system may be criticized as a lottery. However, when dealing with imperfect information about the future, most investments are just a form of gambling. Unlike those like MM, who pout over somebody else getting a big break and making lots of money with just a little idea or a good guess on a stock, I’ll tip my hat to those that took a gamble on a long shot and won. Sure, I would like to be the one that wins the lottery, but I’m not going to cry over it and claim it isn’t fair when I’m not the one that wins.

  82. 57

    “That’s nice, but utterly irrelevant to the indisputable fact that garbage applications are filled with objectively unpatentable crap are filed every day.”

    You certainly have a way with changing the topic. I don’t think anybody disputes that “crap” applications are being filed. The issue being raised was whether or not raising fees to some large amount was going to drastically affect that number.

    I think everybody will also agree that any substantial increase in fees is going to reduce the absolute number of applications being filed. The question is whether or not a substantial increase in fees is going to disproportionately reduce the number of so-called crap applications.

    Such a simple concept which you seemed to have completely ignored. You are “pulling a Palin” — i.e., upon being asked to address an issue, goes into a long-winded non-answer or non-sequitur.

    “My poor credibility?”

    Really, you actully need to have credibility before it can be characterized as poor. What was that poster thinking?

  83. 56

    “Again, why should the patent system be in the business of protecting $10K ideas”

    Title 35 and 37 CFR

  84. 55

    Erez

    “Currently, a patent with more claims is more valuable than a patent with few claims.”

    That’s true in a world where the height of human intellect and analysis is the ability to do simple arithmetic and compare the totals. Is that the world we live in? If so, it might explain a few things.

    If a client asked me about the value of a patent portfolio, should I advise her, “Why are you asking me? Just count up the claims. If it seems like a lot of claims to you, then by all means: invest!!!”

    I know I can do better, and I know a lot of attorneys who can do better. Yet there seem to be quite a few commenters here who seem to prefer the Patent-as-Lottery-Ticket status quo. We need not spend much time wondering why that might be the case.

  85. 54

    “You think Americans are orders of magnitude more “innovative” now then they were in 1910?”

    I’m at least 135 times more innovative than my great-grandparents. But that’s just me. Michael R. Thomas, on the other hand, is precisely as innovative as his great-grandfather. Just ask him.

  86. 53

    “Erez would hold that Merit lies in more inventions allowed as patents as this would correlate to more business -> more payroll -> more taxes, etc … I know that I deal with start-ups who greatly depend on patents as funding magnets, so my inclination is to agree with Erez Gur.”

    Gee, it’s probably not a big surprise that a patent attorney deals with clients who file patents. But since you’re a lot less likely to deal with start-ups who do NOT “greatly depend on patents,” then is it not completely invalid to base any conclusions regarding the overall efficacy of the patent system on just your own personal experience?

  87. 52

    “SF — so the patent system is only for the medium and large companies?”

    Actually, the patent system is for medium and large ideas. The USPTO couldn’t possibly examine every new and non-obvious idea — otherwise, why not lower the filing fee to $10, as Mooney suggests, to make sure the small companies can file all they want? Raising the filing fees is a simple way to weed out the small ideas, regardless of whether they come from small, medium or large companies. Again, why should the patent system be in the business of protecting $10K ideas?

  88. 51

    The Patent Office should hire additional “examination resources” IMHO. Applicants’ fees pay for them.

  89. 49

    “It seems that you are exalting quantity control in the name of quality, for the pure sake of quantity. it begs the question of your premise that fewer filings are good.”

    No. I am “exalting” quantity control because helps with the backlog, which needs to be reduced. The need to reduce the backlog requires no quality-control justification.

    “aren’t we supposed to be invigorating innovation which is easily correlated with more filings?”

    If the competitive advantages of an “innovative” idea isn’t worth an extra $5K, $10K or $15K in filing fees, is the system *really* being deprived? As a public policy matter, I’d gladly kiss off all innovations worth less than $50K to save the drain on the examination resources. And the best way to weed out those inventions is to raise filing fees to that level and let the market decide.

  90. 48

    I think that the patent bubble has been slowly deflating the past year or so in view of KSR, the extended and expensive prosecution given the “reject” attitude of examiners and the second pair of eyes, and the slowing economy.

    (I do not have any numbers to back this up though)

  91. 47

    Again I’ll ask the question: during the period in which the average number of claims filed per application went down, did the rate of filing of *claims* per se at the PTO decrease?

    It’s a rhetorical question, frankly. Everybody knows the answer.

    Here’s another question: in how many ways does the patent bubble look like the housing bubble?

  92. 46

    “Increased filings also mean increased publication and disclosure of inventions and technologies.”

    So if we make filing an application $10, will that increase the publication and disclosure of “inventions and technologies”?

    It seems far more likely that lowering the filing fee would vastly increase the amount of worthless uninteresting unpatentable crap that the PTO regularly publishes. So now “the public” would have that much more worthless crap to wade through. That’s a benefit?

    Please, my Patent Peddling friends: if you’re going to shill for your self-interest, just admit that you’re doing it. It’s so transparent that you embarass yourself otherwise.

  93. 45

    “There is no need for the crack pipe comment – it only serves to reinforce your poor credibility and detracts from what you actually say.”

    LOL. My poor credibility? You’re the one arguing that “the law” trumps basic facts.

    “increased filings correlate to increased innovation”

    Keep smoking, brother. Keep smoking. Is that what Patent Jayzus said in the Patent Peddlers Bible? Because other than taking it on faith, I have no idea where you would come up with such nonsense. Increased filings correlate to increased filings. Period. You think Americans are orders of magnitude more “innovative” now then they were in 1910? Get real.

    “There is no realistic way to correlate increased innovation with declining application filings”

    Therefore the opposite must be true? You failed logic. You should try thinking before you post. After all, such elementary errors ‘only reinforce your poor credibility.’

  94. 44

    Increased filings also mean increased publication and disclosure of inventions and technologies. Published applications and patents are in a very public and easily searchable format. These public disclosures are a true benefit to society, especially in fields such as electro-mechanical where technologies are rarely published.

  95. 43

    Malcom,

    There is no need for the crack pipe comment – it only serves to reinforce your poor credibility and detracts from what you actually say.

    It seems that you are choosing to frame the issue as one of quality control in the face of simple volume of filings. In that frame, the law is simply not on your side. There is NOTHING that says only a certain level of filings are allowed (or even desired). Again, divorcing the argument away from quality per SF, the goal is to INCREASE filings, as increased filings correlate to increased innovation; and as such, the stance that sheer quantity is bad is impossible to defend. The goal is increased innovation. There is no realistic way to correlate increased innovation with declining application filings. If your issue is with quality examination, then ‘fix’ the examination process – don’t mess with the system by dissuading innovation.

  96. 42

    “Bad” applications should be weeded out with a first OA and good art.

    Also, patent examiners should be much more efficient that outside searchers because they are much more expert in their technologies and have better search tools.

  97. 41

    Here’s a question for Dennis: while the average number of claims per application went down in that time period, what happened to the absolute number of claims filed at the PTO over the same time period?

  98. 40

    “The stance that sheer quantity is bad seems impossible to defend ”

    Um, no. No it’s not. It’s easy to defend. You need to consider the fact that highly trained human beings are required to evaluate the filings and that there is considerable pressure on them to do this quickly.

    Anyone who has ever worked a day in their life knows that quality control becomes difficult when the volume of tasks is increased.

    But please go on smoking your patent crack pipe and ignoring the obvious facts.

  99. 39

    “Merit???? Based upon what factors? You obviously haven’t spent time with a lot of inventors, particulary solo inventors.”

    How much time have you spent with solo inventors, pds? I mean, in total hours, over say, the last year?

    “Nearly every solo inventor I’ve met thought that their invention was the greatest thing, since … well … sliced bread.”

    That’s nice, but utterly irrelevant to the indisputable fact that garbage applications are filled with objectively unpatentable crap are filed every day.

    Here’s a news flash for everyone: bragging about how much time you’ve spent prosecuting garbage for inventors does not mean (1) that you are a good lawyer or (2) that you have any clue about what you are talking about when the issue of reducing frivolous filings is raised. It just shows that you are a self-interested shill with reality-denying tendencies.

  100. 38

    SF,

    “Again, the issue isn’t quality of issued patents. The issue is the backlog and motivating clients to make more informed choices that likely will result in fewer filings.”

    I don’t see this as a valid reason to mess with the system. It seems that you are exalting quantity control in the name of quality, for the pure sake of quantity. it begs the question of your premise that fewer filings are good. Why on its face would fewer filings, divorced from any connection to ‘quality’, be a good thing – aren’t we supposed to be invigorating innovation which is easily correlated with more filings?

    There are indeed other mechanisms for weeding out ‘bad patents’. The stance that sheer quantity is bad seems impossible to defend and reinforces the stereotypes of “reject, reject, reject” and anti-patent bias.

  101. 37

    MVS:

    A searcher I trust charges about $700 for about 6 hours of searching a mechanical invention. Simple mechanical applications can be drafted from $6K to $12K, but some patent mills may charge less and some big firms may charge more. Obtaining the patent can likewise be from $6K to $12K, depending upon how stubborn the applicants and the examiners are. If filing fees matched the preparation costs, applicants without limitless budgets (that’s most applicants) would file fewer cases. If filing fees matched preparation and prosecution costs, they’d file even fewer cases.

  102. 36

    pds & others,

    You KNOW that arguing that raising fees a lot higher would push out individual inventors & small business is a red hearing. Right?

    After all, the far bigger cost to an applicant is NOT PTO fees but attorney fees. (I am NOT trying to get into an argument about what firms charge & if it is reasonable or not. So please don’t go there.) But even if the PTO cost of filing an application did go up to 5K (from maybe .5-1K), it would still dwarf the far higher attorney fees the applicant has to pay. I would think that THOSE costs would be more a deterrent that the smaller fee the office would charge to file.

    Out of curiosity, what are the average attorney fees for an applicant today. Ballpark figure.
    Back in the mid-80’s, on a field trip we were on, one firm told us that the average cost was about 20K to get a patent. I expect that it has gone up a lot since then.

    So, I really doubt that raising fees would have a big impact of filing. And just raising fees to try to limit filings is not a smart idea (to say the least). Better use of the money, as explained above, would be the only real reason that fees should be changed to any great degree. If we do not need the extra $$$ for regional offices, salary, retention, increasing hours to do a case, or other improvements, then there should be no need for a substantial increase.

    Lastly, what is the average cost to get a professional search performed? And about how many hours of search are you paying for. The average examiner gets about 9-10 hours for a count. SO maybe 6-7 hours to do a search for the case. Something to keep in mind if we don’t always find the “best” prior art. Adjusting the hours would go a long way to help improve the quality of searches. Not going to happen now; maybe a new administration??

    MVS

  103. 35

    “Once the time has already be spent drafting the application and claims, few applicants are going to be willing to see those attorney and search fees go down the drain without at least filing the application and see what happens at the USPTO.”

    There are plenty of people who can prepare search letters *before* preparing a specification. I’m sure you could do it, if you tried. The search would be sufficient to allow the client to better determine whether the cost of preparation and filing is worth it. Again, the issue isn’t quality of issued patents. The issue is the backlog and motivating clients to make more informed choices that likely will result in fewer filings.

  104. 33

    “Merit???? Based upon what factors? … You obviously haven’t spent time with a lot of inventors, particulary solo inventors. Nearly every solo inventor I’ve met thought that their invention was the greatest thing, since … well … sliced bread.”

    “the vast majority file applications to get a patent that has some $$$ value”

    The threshold cost for filing is so low that applicants can file on just about any idea, which clogs up the system. That’s good for the patent drafters, bad for the backlog. By ratcheting up utility filing costs, applicants will file fewer applications, presumably based on their own merit factors relating to commercial viability and competitive advantages.

    My point is not that there are “meritless or bad” issued patents, which is a red herring that you, not I, mentioned. I want to reduce the backlog by allowing applicants to weed out the weakest ideas based on whatever merit factors they choose. In the aggregate, applicants will still file where the commercial viability and competitive advantages of the invention are sufficient to justify the cost. To that extent, the patent system will still work just fine. I believe the filing fees are too low to provide any meaningful deterrant to shot-in-the-dark filings. (And without searches, shot-in-the-dark is an apt characterization.)]

  105. 32

    Max: I exclude “biotech” and chemical to a large degree from nationalistic search tendencies since this is art with international standards and language. This art can be searched using those standards rather than US, IPC, EPC, Derwent or whatever other classification system you’re into. (Gene #’s and chemical registration #’s; still doesn’t get around crafty claims, those take brute force to find and review.)

    SF: You hit the nail on the head with “Searches vary widely from search firm to search firm and, sometimes, from searcher to searcher within an individual firm. I recommend sending test cases to several firms and, once you find an individual searcher that you like for a particular technology, specifically request that searcher and use them as much as you can.”

    The message should be writ large: beware “black-box” search firms with a sales interface… instead, develop a personal relationship with your searcher. They’re more likely to bust their tail on your litigation cases and make you look like a superstar if they know who they’re working for. My friend and competition, Lyncoln above, will definitely agree with this!

    Those of you relying on an examiner search for important claim limiting guidance are not doing your clients a very good service. Examiners are poor searchers. Their job is to find art “good enough” for a quick 103 rejection. Just look at any of the million file wrappers available on PAIR to see their “logic”.

    (Don’t often get to read and post on search related topics here, always nice to see since it’s my bread and butter.)

  106. 31

    pds asserts that, the closer you can get your claim to the prior art, the more $$$ it’s worth. Interesting. No wonder the big corporate Applicants from Japan lay down a carpet of patent protection, with a claim directed to every little modification. No wonder the world is up in arms against “trivial” patents. Nice creative tension here, for the judges and Examiners to mediate. For what it’s worth, I agree that the system shouldn’t squeeze out inventors with limited funds, by raising fees for filing and a PTO search to onerous levels. How about separating the fee for the search from the one for examination on the merits. Once your poor Applicant has a PTO patentability search that can be relied upon, it can make an informed decision whether to press on to examination on the merits, with claims that ought to go through to issue, or just abandon the terminally weakened pending app. For what it’s worth, that’s the EPO theory.

  107. 30

    If the U.S. decides to significantly raise fees to “weed out meritless” applications, foreign countries will likely do the same.

    The object, again, is to increase examiner retention and to improve the search tools and the classification system.

  108. 29

    “I’m talking about filing fees, not claim fees. Ramp up the filing fees to deter thoughtless filing without performing a search. The sky wouldn’t fall if applicants were motivated to do prior art searches and then pick and choose which inventions had merit.”

    Merit???? Based upon what factors?

    You obviously haven’t spent time with a lot of inventors, particulary solo inventors. Nearly every solo inventor I’ve met thought that their invention was the greatest thing, since … well … sliced bread.

    The most likely thing that will happen from the raising of fees would be that the rich get to file patent applications whereas poor solo inventors and small companies scraping by will not.

    Also, by raising filing fees, you are more likely to discourage a search (which costs money). The people advocating pre-searches seem to forget that a search is only good as compared to the actual CLAIMED invention. If I do a pre-search now (i.e., before I write an application), I’ll give the searcher a list search terms and a field of art that I think might uncover the most relevant art. Then, based upon that information, the searcher will do the best they can. However, UNTIL the claims are ACTUALLY DRAFTED, I cannot perform the same type of search that would be performed by an examiner (or a competitor trying to invalidate the claims) who have both the specification and claims in hand when performing the search. Once the time has already be spent drafting the application and claims, few applicants are going to be willing to see those attorney and search fees go down the drain without at least filing the application and see what happens at the USPTO.

    Although some people file applications most to get an issued patent, the vast majority file applications to get a patent that has some $$$ value. In those instances, having a patent that gets as close as possible to the prior art tends to be more valuable. However, the flip side is that there is a greater risk of invalidation. However, as the saying goes, “no risk, no reward.”

    I highly doubt your proposed “let’s raise the filing fees by 5x” will disproportionately weed out the “meritless” applications over those with merit. It will certainly reduce the numbers of applications being filed, but really, that has been the current USPTO administration’s goal all along. As far as I’m concerned, talk about have “better patents issued” is merely a smokescreen for the simple fact that the USPTO has become anti-patent.

    The whole issue of “bad patents” is one big red herring. If a patent is truly bad, then it should be able to be easily invalidated given the current system. The fees for filing an ex-part reexamination request is about $2,500. That is a fairly inexpensive safety net to catch any possible bad patents.

  109. 28

    To further respond to your question Max,

    Examiners do get to search English language abstracts for JPO and EPO databases (usually the WO abstract). Plus we have some searching in the Derwent database and old IBM technical publications. We also have access to some internet archives of industry groups like IEEE, etc. some arts use those more than others and we use their search tools, not our search tools. Searching of foreign patent documents is fairly difficult in my opinion. I wish I had stronger tools for searching the Korean and Japanese databases because they have many related references to my particular area.

  110. 27

    “I know that I deal with start-ups who greatly depend on patents as funding magnets, so my inclination is to agree with Erez Gur.”

    Since provisional applications aren’t examined, you don’t have to ramp up those fees. The start-ups could then file provisionals and seek funding for a year based on those. If they can’t find it, the market has spoken on the merits of their inventions.

  111. 26

    “Which inventions had merit”

    This may be the crux between SF and Erez Gur. If I may paraphrase (and correct me if I’m wrong), Erez would hold that Merit lies in more inventions allowed as patents as this would correlate to more business -> more payroll -> more taxes, etc; SF proposes that Merit lies in more inventions that are truly ‘robust’, albeit less overall inventions. An unstated assumption may be that more patents truly equals more business. It does appear that SF’s goal of Merit is not the same goal of Merit that Erez is discussing.

    Dennis, it would be interesting to see a correlation between business start-ups and patent holdings to clarify this assumption. I know that I deal with start-ups who greatly depend on patents as funding magnets, so my inclination is to agree with Erez Gur.

  112. 25

    “What subject matter classification system would you use, for all these cost-effective and efficient pre-filing searches you have in mind?”

    There isn’t any simple answer. Searches vary widely from search firm to search firm and, sometimes, from searcher to searcher within an individual firm. I recommend sending test cases to several firms and, once you find an individual searcher that you like for a particular technology, specifically request that searcher and use them as much as you can.

  113. 24

    “The USPTO could use fees to discourage filing “many” claims (a la EPO) but why is this desirable?”

    I’m talking about filing fees, not claim fees. Ramp up the filing fees to deter thoughtless filing without performing a search. The sky wouldn’t fall if applicants were motivated to do prior art searches and then pick and choose which inventions had merit.

  114. 23

    Roger Karp and SF,

    The USPTO could use fees to discourage filing “many” claims (a la EPO) but why is this desirable?

    The only reason Applicants file “many” (whatever that means) claims is because the American legal system encourages and maybe even requires it. Currently, a patent with more claims is more valuable than a patent with few claims. This means that raising claims fee will only give poorer Applicants weaker patents than rich Applicants.

    If you believe the workload of “many” claims is too much for Examiners then you could limit the number of claims actually examined (e.g., 10) per search fee. Alternatively, as I have opined elsewhere, you could teach USPTO Examiners to search for the “nearest prior art” rather than some art that (arguably) fits in “the broadest interpretation of the claim language”.

    Please remember that making the patenting process more expensive harms, not helps, the economy: the United States gain from patents not by collecting fees, but rather by encouraging innovation which leads to the establishment of companies. Establishment of these companies reduces unemployment and increases tax revenues.

  115. 22

    I still don’t understand how a government agency that is fully funded by the fees it collects can seek to make its customers go away. Either the fees pay for an examination, or they are insufficient. If they are insufficient, raise them until the PTO has enough money to hire the needed number of examiners.

    “inventionlols” as our buddy E6K calls them ought to be easy to reject.

  116. 21

    Public searcher, thanks. Interesting that you hold out “biotech” as the one area where searches do include non-US. I had thought biotech to be one of those few areas where a purely US search would deliver results on which one could rely.

  117. 20

    SF: What subject matter classification system would you use, for all these cost-effective and efficient pre-filing searches you have in mind? The one EPO Examiners use? Or the one the USPTO Examiners use? Now me, for my US clients, I use the EPO one. I wonder which one the growing Indian patent search industry uses. How will they doing it soon, in China, to get “bang” for the bucks they will soon be spending at the USPTO.

  118. 19

    Max,

    I know the database salesfolks will give a different answer, but most US based searchers access only a limited % of the full WO database (particularly since we can only key word the abstracts). Also, most patentability and infringement searching in non-biotech art is extremely US oriented. You already know we’re US-centric here, this is just confirmation.

    PTO Examiners very rarely search outside the US. Makes for easy invalidity work…

  119. 18

    “I thought that the fees paid by the public are sufficient to run the PTO. The fees should not be set at a level so as to discourage patent application filings but at a level to pay for the operation of the PTO.”

    First, do you believe the PTO is running sufficiently? Second, the increased fees could be retained by the USPTO to increase examiner pay and reduce production requirements, and build satellite offices around the US. The “operation of the PTO” could be much better if the increased fees were used wisely and the PTO had better management.

    “This is one area where government is more efficient (or at least cheaper) than private industry.”

    The USPTO is cheaper, not more efficient. If $5000 isn’t enough, ramp up the fees until its much cheaper for applicants to search, rather than punt.

    “The issue of whether or not to search is not necessarily related to cost. It is more of a liability issue. Sophisticated applicants don’t want to be charged with knowledge of references that they may not have treated. Better to let the PTO tell you which references you are legally required to treat.”

    And my point was to ramp up the fees to the point that most applicants (even sophisticated clients) will, in order to make their budgets, perform searches in order to decide what applications should be prepared and filed and which applications won’t. Most clients have budgets and, with the right level of filing fees, they would perform some sort of pre-filing search. Such searches would discover prior art and deter filings, even if not rising to the level of a “real” and analysis.

  120. 17

    there is no link between claim fee and quality of application in any regard, including claim quality, clarity, etc. it is the cost of prosecution that has gone up far faster & yet no link between higher prosecution cost & allegedly poor claims is ever mentioned.

    why not focus on that? pre-1995 my docket was cost about 2500-4000 per application with average pendency of 9-15 months – perhaps not a large enough sample size but in the same period the cost for copyrights and trademark filings has not changed by much & yet should have some relevancy to the real issue … & IMHO it ain’t claim fees

    because the government is not private profit-seeking entity & should focus on clarity, transparency & equity – if the fees are enough to cover operations, that is the only relevant threshold. the PTO is already profitable which means it is inefficient as a government operation – e.g., still have too high a turnover for Examiners, still have lengthy pendency, that money should go to problems that are very well-known & no not more LIEs, who are an example of unnecessary costs, etc.

  121. 16

    “”The fees should not be set at a level so as to discourage patent application filings but at a level to pay for the operation of the PTO.”

    That sounds nice, but can you give a reason why this should be so? Why shouldn’t the government use fee levels to accomplish public policy (e.g., reducing the number of frivolous claims)?”

    In this regard, see generally Figueroa v. U.S. (05-5144, Fed. Cir. 2006) and particularly the Concurring Opinion by J. Newman. Quote J. Newman, “[P]eople will obtain a patent simply for the glory of hanging a beribboned document on the wall.”

  122. 15

    Holy cow, Batman, the demand curve for patent claims is downward sloping, just like with all normal goods!
    :-)

  123. 14

    Thanks Dennis. Another thread full of education. The folly of actually searching the art before writing the claims is flagged up. The concept is put forward, of writing one wide main claim that trails a sequence of dependent claims each of which is narrower but more inventive. But that isn’t a good idea, it seems, because it might reveal what the invention really is. Imaginative structuring of PTO fee scales can influence Applicant behaviour, it seems. No rocket science here, but interesting nevertheless. Incidentally, it seems that searches in the USA are relatively cheap. I wonder why. Maybe because there’s only one language and one number sequence. In Europe, with absolute novelty, we have always needed to search more than just EPO publications. Still, in future, maybe we will all need only to search WO. BTW, may I ask, does a patentability search in the USA already typically include WO?

  124. 12

    “…broad, vague claim does not explain the scope of the claimed invention”

    A claim is not required to explain itself. The scope of the claim, when read in light of the specification, should be understandable to one of skill in the art.

    There is nothing wrong with a broad claim – a broad claim is preferable if it can be attained.

  125. 11

    The issue of whether or not to search is not necessarily related to cost. It is more of a liability issue. Sophisticated applicants don’t want to be charged with knowledge of references that they may not have treated. Better to let the PTO tell you which references you are legally required to treat.

  126. 10

    Don’t conflate the fee issue with the search issue. Even if the app fee were $5000, plus $500 per extra claim, it would still cheaper to just file the claims based on your best guess (but a *sincere* best guess) of what is patentable, rather than getting a *real* search done and having an attorney do a *real* evaluation of the search report. This is one area where government is more efficient (or at least cheaper) than private industry.

  127. 9

    “For example, one broad, vague claim does not explain the scope of the claimed invention very well. On the other hand, one clear narrow independent claim followed by a number of dependent claims each explaining/clarifying a different element in the independent claim explains the scope better.”

    Those are my only choices? Why not one clear, broad claim? Or one clear, broad claim followed by a few dependents that add patentable distinctions over the prior art?

    I don’t buy for a second that higher claim fees are encouraging practitioners to submit claims that are less clear, or even “broader” claims. The goal is the same, regardless of how many claims you’re submitting – to get a range of claims that extend from “most likely to be infringed, but perhaps at some risk of being invalidated” all the way to “almostly certainly valid, but less likely to be infringed”. Given fewer claims to work with, I’m focusing the claims more carefully, not fuzzying up the claim language.

    Other thoughts?

  128. 8

    “The fees should not be set at a level so as to discourage patent application filings but at a level to pay for the operation of the PTO.”

    That sounds nice, but can you give a reason why this should be so? Why shouldn’t the government use fee levels to accomplish public policy (e.g., reducing the number of frivolous claims)?

  129. 7

    SF — I thought that the fees paid by the public are sufficient to run the PTO. The fees should not be set at a level so as to discourage patent application filings but at a level to pay for the operation of the PTO.

  130. 6

    For example, one broad, vague claim does not explain the scope of the claimed invention very well.

    On the other hand, one clear narrow independent claim followed by a number of dependent claims each explaining/clarifying a different element in the independent claim explains the scope better.

  131. 5

    Captain Obviousness wrote, “This is exactly why the USPTO should deal with their “too many low quality applications and too little time to examine them” problem by dramatically raising filing fees.”

    I agree.

    The filing fees are at bargain-basement levels when compared to the costs of thorough professional searches in the private sector. But, somehow, attorneys routinely express shock (and awe) that some examiners do such a poor quality job searching and examining.

    If the USPTO charged more, they could afford to pay the examiners to examine fewer cases, which would allow the examiners to spend more time per case and hopefully do a better job. This, in turn, would increase job satisfaction and retention.

    Also, charging more would deter thoughtless/automatic continuation filings and would encourage applicant searches before filing. After all, if you knew that filing fees were $5,000, you’d be willing to pay $1,000-$1,500 for a professional search.

  132. 4

    “With fewer claims, it is easier to understand the scope of the claimed invention.”

    That is not always the case, Dennis.

  133. 3

    TJ, Thanks for the comment — By “clarity of claim scope,” I mean overall clarity. With fewer claims, it is easier to understand the scope of the claimed invention.

    One potential result of higher initial fees may be that applicants are waiting to apply for some of the claims until a continuation. The fee changes at least roughly correlate to an increase in the number of continuation filings. That result, however is tenuous because of the large number of potential factors influencing the filing of continuations.

  134. 2

    This is exactly why the USPTO should deal with their “too many low quality applications and too little time to examine them” problem by dramatically raising filing fees. Fewer applications, especially garbage applications, and more money to hire Examiners and pay them better.

  135. 1

    Dennis,

    Agree that higher fees lead to applicants dropping their worthless claims, which might lead to shorter pendency. But why would it lead to more clarity in claim scope? If you had fewer claims to play with, wouldn’t you want to make the claims more vague, so that you can argue for a broad construction if an unanticipated competitor product comes along, but argue for a narrow construction if unexpected prior art comes along; all without having to pay extra fees for filing new claims?

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