Patent Practitioner Ethics Update

In a recent presentation, PTO Discipline Director Harry Moatz repeated his statements regarding a practitioner’s duty to make reasonably inquiry prior to submitting any papers to the USPTO. “Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper.” The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). That section requires that submitted papers be submitted only for proper purposes and that any claims made be legally warranted. Section (b)(1) requires that all statement made be believed to be true and that no statement “covers up by any trick, scheme or device a material fact.” Section (b)(2) goes on to require that the person filing the paper actually make “an inquiry reasonable under the circumstances” to ensure that the paper is not being presented for any improper purpose and that the contentions are “warranted by existing law or by a nonfrivolous argument [to change] existing law.”

Mr. Moatz provides several examples that could be seen as failure to make a reasonable inquiry: (1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors. (2) Burying a reference material to patentability among a large number of cumulative references. (3) Filing an application with one or more claims unpatentable over a combination of prior art references cited by applicant in the specification.

37 CFR § 11.18 (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and

(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;

(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

In his presentation, Mr. Moatz listed the primary complaints that he receives against patent practitioners. They include:

  • Neglect.
  • Lack of candor (Either to client or the PTO).
  • Failure to make reasonably inquiry.
  • Failure or delay in filing application
  • Failure to respond to OA (even when client has not paid)
  • Misuse of the certificate of mailing
  • Insufficient funds
  • Failure to pay issue fee
  • Failure to revive
  • Failure to turn over files to new attorney
  • Failure to communicate with client

Additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment.  Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of “any” crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days.  The new rules also provide for “disability inactive status” when a practitioner is judged legally incompetent.

Notes:

155 thoughts on “Patent Practitioner Ethics Update

  1. 154

    I’ve commented on this before. I handled U.S. prosecution for about 6 years, and then European/international prosecution for 2 years, before returning back to U.S. prosecution for a couple of more years.

    When responding to PSA rejections, we would take our successful TSM arguments, and *occasionally* add a brief discussion of advantages/disadvantages. Allowances were received in equal numbers before the U.S. Patent Office and foreign patent offices. Thus, the conclusion is there is very little if any difference between the practical application of (and response to) TSM and PSA. I’d also reviewed enough foreign prepared responses to PSA rejections to realize it was something I would include in a TSM argument (again, sometimes with a brief description of advantages/disadvantages).

  2. 153

    “Mr Bloom … Want to tell me that you at least already know what I’m talking about?”

    Max, I’m rarely certain that I truly know what others are talking about. And I don’t think I said that there was “no difference” between TSM and PSA. (In fact, I wasn’t talking about TSM, but the more general obviousness inquiry.) But, to answer your question, no, I don’t know which constraints in PSA that you believe “burn out any hindsight taint to the PSA analysis.” That’s a very bold claim. Care to provide any hints?

  3. 152

    PTO Discipline Director Harry Moatz sounds like one of those senior citizen parking cops who have nothing better to do than to give citations. If the PTO wants to screw someone, at least they now have the “rules” to do so.

  4. 151

    Mr Bloom, I’m sorry you still see no difference between TSM’s “was it obvious” and EPO-PSA’s “objective technical problem”. To me, that reveals that you are not yet accustomed to the constraints on the formulation of the technical problem. It is those constraints that burn out any hindsight taint to the PSA analysis. For me, that’s the difference between PSA and TSM, which is that PSA is objective, and hindsight-free, while TSM is subjective, and driven by hindsight. For me, that’s of incalculatably vital importance, when it comes to fairness, impartiality and legal certainty. All the difference in the world, therefore. Want to tell me that you at least already know what I’m talking about?

  5. 150

    “And after review of rule 104, and with regard to prior art rejections, I don’t see where I’m required to do anything other than a) cite the references, b) point out where in the reference the corresponding limitation is taught with brief elaborations. And do that for every claim and limitation.”

    If you did that, I’d be thrilled.

  6. 148

    “The Deming Management Method,” by Mary Walton and W. Edwards Deming:
    14 Points
    1. Create constancy of purpose for improvement of product and service.
    2. Adopt the new philosophy.
    3. Cease dependence on mass production.
    4. End the practice of awarding business on price tag alone.
    5. Improve constantly and forever the system of production and service.
    6. Institute training.
    7. Institute leadership.
    8. Drive out fear.
    9. Break down barriers between staff areas.
    10. Eliminate slogans, exhortations, and targets for the workforce.
    11. Eliminate numerical quotas.
    12. Remove barriers to pride of workmanship.
    13. Institute a vigorous program of education and retraining.
    14. Take action to accomplish the transformation.
    5 Deadly Diseases
    1. Lack of constancy of purpose.
    2. Emphasis on short-term profits (or goals).
    3. Evaluation by performance, merit rating, or annual review of performance.
    4. Mobility of management.
    5. Running a company (agency, firm, or any other organization) on visible figures alone.
    Read it and understand it folks. ????? Profit!

  7. 147

    “Is that the right mindset?”

    Aiming for low fruit is not the mindset to have.

    Dismissing helpful suggestions as “should” language shows the mindset to be just a tad off.

    Do you really want to be commanded to be helpful?

  8. 146

    “No. You may want to review Rule 104.”

    And after review of rule 104, and with regard to prior art rejections, I don’t see where I’m required to do anything other than a) cite the references, b) point out where in the reference the corresponding limitation is taught with brief elaborations. And do that for every claim and limitation.

    “The MPEP encourages you to identify allowable subject matter. See, for example, MPEP 707.07(j)II, which states:…”

    All of which is “should” language. As you said yourself, it’s applicant’s job to claim what they regard as their invention.

    Low fruit, I know.

  9. 144

    “Back to the original topic, attorneys’ duty to read references. 1) Is there one and 2) is it malpractice if they don’t? And, as an examiner, 3) should I expect the attorneys to have read the references?”

    1) No. 2) Maybe. 3) Yes.

    “As an examiner, I am of the mindset that it is only my job to cite the art and present it to the applicant, and, if necessary, briefly elaborate on why it discloses applicant’s invention. From then on, I believe I should have no involvement.

    Is that the right mindset?”

    No.

    You may want to review Rule 104.

    “Do attorneys think it is the responsibility of the examiner to point out and explain every little thing about a reference?”

    With a little more particularity, see Rule 104(c)(2).

    There’s also case law that holds that applicant should not be left to guess at the examiner’s rejection. It should be clearly set forth. Let me know if you’d like a cite.

    “I’m curious as to what the applicants’ think their responsibility is.”

    Applicant’s duty is to file an application that describes how to make and use the invention, and to particularly point and and distinctly claim what they regard as their invention.

    If the examiner establishes a prima facie case of unpatentability against any claim, applicant’s duty is to amend accordingly. If the examiner does not establish a prima facie case of unpatentability, it is applicant’s duty to point out the errors in the examiner’s case.

    The MPEP encourages you to identify allowable subject matter. See, for example, MPEP 707.07(j)II, which states: “When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and, when possible, should offer a definite suggestion for correction. Further, an examiner’s suggestion of allowable subject matter may justify indicating the possible desirability of an interview to accelerate early agreement on allowable claims.”

    You should also review the Foreword to the MPEP. It’s short, but very instructive.

    Hope this helps.

  10. 143

    Back to the original topic, attorneys’ duty to read references. Is there one and is it malpractice if they don’t? And, as an examiner, should I expect the attorneys to have read the references?

    A significant portion of amendments I receive add claim language that is a) disclosed in a reference cited in a rejection, b) disclosed in a reference cited as pertinent prior art, c) disclosed in an IDS reference, or d) blatantly obvious/trivial in view of one of the above.

    When reviewing arguments it is fairly easy to identify which attorneys have actually read the art cited against them, and which have merely read the portions cited, and I personally enjoy toying with the latter.

    As an examiner, I am of the mindset that it is only my job to cite the art and present it to the applicant, and, if necessary, briefly elaborate on why it discloses applicant’s invention. From then on, I believe I should have no involvement. It is applicant’s job to read the cited art and determine what they think would make their claims patentable, and submit an amendment accordingly.

    Is that the right mindset? I’ve been criticized by other examiners (rarely, but it has happened) for not offering suggestions to applicants. I’m curious as to what the applicants’ think their responsibility is. Do attorneys think it is the responsibility of the examiner to point out and explain every little thing about a reference?

  11. 142

    “Thanks, 6.”

    np.

    Well let’s see pds, what do I like about 151? Except for the fact that there is little that I “like” about any of the patent laws since they are not nearly as stringent as I would personally have them to be, I like that this particular law sets forth in very generous terms (to me an examiner anyway) when I’m supposed to do something and puts no pressure on me what so ever. Imagine if 103 said:

    A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that it appears that the subject matter as a whole would have been obvious at the time the invention was made to the examiner/judge.

    How sweet would that be? Can you imagine how quickly innovation/disclosure/good claims would skyrocket if such legislation were to be passed? SWOOOOSH! Right up through the ceiling! And with 1/25 of the paperwork! Vastly fewer mickey mouse limitations, vastly fewer bad claims coming in at the outset, and only the good stuff is left! Awesome! We should lobby for this change immediately, if you like, you can donate to me directly via paypal :)

    Put simply: 151 is the kind of law an examiner can appreciate :)

    “BTW — what “basic things” have I forgotten so quickly?”

    The difference between an opinion and a legal determination? I don’t remember, read the post above. Anyway, that’s just the first, we can get into the other legion of them later. Or we can jump right in to 112 right now if you like :)

    What subject matter is to be claimed? NO PEEKING AT YOUR MPEP, it’s test time!

    a. the subject matter which the attorney regards as at least one recitation of inventive subject matter.
    b. the subject matter which the attorney tells the applicant to regard as his invention.
    c. the subject matter which the applicant regards as his invention.
    d. b and c.
    e. none of the above.

  12. 141

    6K — higher level analysis appears to elude you — put another way, you cannot see the forest for the trees.

    BTW — what “basic things” have I forgotten so quickly?

    That examiners like to make it up as they go along? No — haven’t forgotten that.
    That examiners conclude obviousness without the facts? No — haven’t forgotten that.

    BTW — what is with your fetish for 35 USC 151?

  13. 139

    I will cite “35 U.S.C. 151 Issue of patent.
    If it appears that applicant is entitled to a patent under the law, a written notice of
    allowance of the application shall be given or mailed to the applicant.”

    in the response I am working on. Thanks, 6. Most examiners are not aware of that section.

  14. 138

    I have constantly strived to attain the level that Moatz seeks. The problem is that I have been ridiculed for wanting to perform search and carefully draft claims that have a modicum of chance of getting allowed. I know of one attorney years ago at a prominent firm in Palo Alto laugh when I stated with pride how many patents I managed to get allowed. He said that he only counts how many patent applications get filed. The fact is there is too much attention paid to the bottom line and no one seems to care about defining an invention.

    I am at my wits end with this practice. I am very close to tossing in the certificate and telling them where it can be placed. Once enough of us leave there will be no one left to write patents . . . then again is that not the objective?

  15. 137

    “And the difference is????”

    The difference is one is a subjective opinion and one is a legal determination. Seriously, why do I have to lay this out for you like you’re just graduating first grade? And btw, what I just “proved” was that it doesn’t matter whether the examiner has a subjective opinion on whether or not the claim is obvious and then goes out to support that opinion, or if he randomly happens upon references which jump out and bite him in the as. The legal determination is not relevantly linked to either of these circumstances and is a wholly different beast which takes place after the references have been found.

    “There is no “appears to be entitled to being issued” standard.”

    You’re right, there is no such “standard” there’s an “appears to be entitled to being issued” statute. As you are already quite well aware.

    35 U.S.C. 151 Issue of patent.
    If it appears that applicant is entitled to a patent under the law, a written notice of
    allowance of the application shall be given or mailed to the applicant.

    If it doesn’t appear that you are entitled to a patent under the law, then you’re not getting a written notice of allowance. End of story. Appearances are everything bucko. You know this already. I feel like I’m having to repeat myself after you already grasped these things a long time ago, how you manage to forget basic things so quickly is beyond me. Maybe those attorney required refresher classes the office wants to implement will not a waste after all.

    Here’s a handy place to start when you prep for them:

    link to uspto.gov

    It comes complete with a copy of the patent laws!

  16. 136

    By “high school football jersey…” I assume you mean “cheerleading sweater”

    Not that there’s anything wrong with that…

    I suppose if the coach had put you in fourth quarter, you would’ve been state champions…

  17. 135

    “But you’re suggesting that we ONLY come to the conclusion that a claim is obvious and then find references to support it. Hardly. We come to the conclusion that a claim APPEARS to be obvious and then find references to support a conclusion of whether or not it is obvious or not.”

    And the difference is???? Thanks for proving to me, yet again, that your analysis is a$$-backwards.

    “Never forget pds, you can spin your wheels about a legal conclusion of obviousness, and how they are supposedly results oriented decisions (even though they’re not) all day, but at the end of the day, it is still whether or not the application appears to be entitled to being issued which determines if you get a notice of allowance or not.”

    Ahhh …. no.

    There is no “appears to be entitled to being issued” standard. We all know that you don’t follow the law … but are you really that ignorant as to what the law is?

  18. 134

    “there’s always a handful of posters who seem to derive their sense of self-importance by “policing” through incecent posts.”

    It’s not about that. Every year Dennis tallies up the totals and the whoever posts the most comments gets a free sweater vest. e6k is probably wearing his right now. Mine is framed and hangs next to my high school football jersey.

  19. 133

    Speaking of “typical kneejerk reactionary” responses, do you actually work for a living, Moony, or do you merely sit by the computer monitoring this blog every waking moment? Images of rats in BF Skinner devices comes to mind. It seems few posters are capable of making a comment without you responding. Free country; free speech; you have the right to express your opinions as often as you desire, I suppose. But it never ceases to amaze me that on every message board and blog that I’ve ever kept tabs on, there’s always a handful of posters who seem to derive their sense of self-importance by “policing” through incecent posts. It’s just like the guy on the stock market message board who gloats 28 times per day, every single day, “ha ha ha, down another 89 cents!”

    How sad. Have nice day.

  20. 132

    “I mean why waste everyone’s time with bogus rejections. ”

    For the examiner: OPQA. Also, time.

    For the applicant: invalidity when you enforce.

    “is MUCH harder to argue against than the bogus word-matching 102s that we see on a daily basis. ”

    Well I guess that’s why so many attorneys fail to do so when dealing with me. Keyword searching is a means to the end of finding relevant art, it does not dictate what relevant art is. If an examiner has made the mistake of believing the later, then so be it, argue it.

    “It’s not that hard, but it is apparently too much like work for generation Z, or whatever generation that Examiner 0.006 represents.”

    Me and mine do this every single day arsehole. WTF is your problem? Just because some examiners throw out ridiculous rejections that don’t come anywhere near what is required doesn’t mean that it’s a gen y problem. Word is some examiners were doing that mess long before we got here. Guess what? There are still bad examiners. Live with it or try to get them fired before they go off probation.

    “Only after you’ve concluded the claim is obvious do you engage in the process of trying to find the facts that fit your conclusion — classic result-based analysis.”

    No, we haven’t concluded the claim is obvious, we have concluded that the claim appears to be obvious. And we do not ONLY try to find the facts that fit our conclusion, we find all of the facts within our search strat. Some might support us, and often, as you and yours love to bring up, some are against our end conclusion that a claim is obvious.

    PDS, if I looked at two references, found element a in the first and then found element b in the second, I necessarily have to decide if it appears obvious to me to combine the two right then and there before I’ll even consider going through an analysis. If I don’t even suspect that the combination might be obvious then I would pass over the references like the 1000’s of others. Each and every determination of obviousness was born because someone, somewhere, determined that the combination was likely obvious before doing an analysis. If this was not so and it did not appear obvious to make the combination to the inquiring party, then they would never bother to through the whole analysis. Often times this decision of whether or not to conduct the entire obviousness analysis must be made before they stumble upon a motivation to combine, or before all secondary considerations have been brought up. But, none the less, we still have to come to a legal conclusion AFTER we have facts that suggest going one way or another.

    But you’re suggesting that we ONLY come to the conclusion that a claim is obvious and then find references to support it. Hardly. We come to the conclusion that a claim APPEARS to be obvious and then find references to support a conclusion of whether or not it is obvious or not. And you must note that we do not ONLY come to the conclusion that a claim appears obvious first, we still search the application and see if any obvious combinations jump out and bite us, which are the only ones you prefer ever having been found. Whether or not the rejection was born because the examiner suspecting the claim is obvious, or whether the rejection simply jumped out and bit us is irrelevant, because the legal conclusion must still be come to the exact same way in either scenario.

    In a sentence: Determining that a claim appears obvious is a result oriented analysis, but this is irrelevant because the determination of whether or not a claim is obvious is not, and the later is the determination which matters, and the former was what I was referring to in the post way above.

    Never forget pds, you can spin your wheels about a legal conclusion of obviousness, and how they are supposedly results oriented decisions (even though they’re not) all day, but at the end of the day, it is still whether or not the application appears to be entitled to being issued which determines if you get a notice of allowance or not.

  21. 131

    “Comparing one’s ability to secure a patent in the US to one’s fundamental rights as a citizen is just plain silly.”

    I’m going to have to agree with Malcolm on this point, David. It’s not quite time to renounce our citizenship and move to some tropical island.

    I also disagree with you regarding KSR – the CAFC was clearly wrong in insisting that TSM was the exclusive test, as it tacitly admitted by rapidly retreating between the granting of certiorari and the issuance of the KSR opinion. And I don’t believe that the Supreme Court said that a rejection could be supported exclusively by an assertion of “common sense.” Rather, they said that there is clearly something wrong with a rigid rule that excludes the application of common sense.

    There is no easy test for obviousness, and never will be. Yes, the PSA approach has advantages, but at the end, the question is still “would the teachings of the prior art prompt the skilled, faced with the technical problem, to adapt the prior art to yield the claimed invention?” Do you really think the answer to that question is more clear than “would the PHOSITA have found it obvious to combine the references to obtain the claimed invention?” I don’t.

  22. 130

    “Next up: search warrants – aren’t these “overly rigid?” The police are the good guys; why don’t we just allow them to use “common sense” in deciding who and what to search?”

    You’ve been drinking JAOI’s kool-aid, David. Comparing one’s ability to secure a patent in the US to one’s fundamental rights as a citizen is just plain silly.

    “as if any examiner is EVER going to take the extra effort to identify a “motivation to combine,” rather than just relying on “common sense.”

    Examiners identify such motivations routinely in the biotech art unit. Not a big deal. Then again, biotechnology is a relatively civilized art unit with a minimum number of trolls and hacks. There’s very reasonable explanation for that fact but some sensitive practitioners’ feelings are hurt whenever you point them out.

  23. 129

    MaxDrei wrote:

    “How gruesome it must be to operate in a 103 environment that lacks the EPO’s problem and solution approach, with its deemed ‘specific technical purpose’ that imposes on the dialogue between atty and Exr a framework within the argument must fit.”

    Preachin’ to the choir here, Max.

    For once, this problem was caused neither by the unreliable CAFC nor by the inexplicably hostile USPTO – but the Supreme Court, which once again decided to wade in with an opinion that both failed to understand the history of TSM, and yet failed to present anything further. KSR was even a worse opinion than Bilski: when the CAFC in Bilski ripped a gaping hole in the fabric of 101, at least it tried to patch it – but SCOTUS left behind a vacuum for someone else to fix.

    The amusing part of KSR was SCOTUS’s implicit approval of the TSM as a continuing valid test that might coexist along… umm… “common sense” and other unspecified tests. Riiiiight… as if any examiner is EVER going to take the extra effort to identify a “motivation to combine,” rather than just relying on “common sense.”

    Next up: search warrants – aren’t these “overly rigid?” The police are the good guys; why don’t we just allow them to use “common sense” in deciding who and what to search? Of course, police are invited to continue obtaining warrants when, uh, they feel like it – and certainly, they’ll continue to follow warrant procedures even if it’s not a requirement – right? No potential for abuse here…

    – David Stein

  24. 127

    “What is the best way to correct the descrepancy (ideally in the client’s favor)?”

    Seriously, do you think anybody HERE would give you “good” prosecution advice?

    If you want advice … change your moniker, act civil, and then ask your question. In such a situation, people will fall over themselves to give you advice.

    Until then, you reap what you sow.

  25. 126

    “because inventions are generally on the frontier, everyone really is their own lexicographer. It can take years for lingo in a subfield to become standardized. Today’s search terms weren’t necessarily used in the early publications”

    The problem posed by applicants using newly coined terms in their claims is easily solveable. The solution is that *all* Examiners have to actually use their brains (allegedly they are hired for their intelligence and expertise) to redraft the claims, at least for searching purposes, in order to perform the search.

    Many Examiners already do this and they explain their reasoning in the Office Actions. All of the competent ones do it. It’s a very basic skill.

    But what happens next? The pathetic prosecutor starts whining and crying that his genekdezoink is not a modified winch but a GENEKDEZOINK and nobody taught a GENEKDEZOINK in the prior art so it’s all hindsight blah blah blah.

    That’s why we got KSR but, trust me, many applicants and their attorneys are either too dense or to desperate to play by those rules.

    I notice that my query regarding how to address inconsistent examination was left in the dust. I wasn’t complaining about awful examination or ignoring the law. In the situations I’m contemplating, **both** the Examiners are arguably correct in their interpretation and application of the law. But their results are very different.

    What is the best way to correct the descrepancy (ideally in the client’s favor)?

    I know I’ve pointed to claims issued to other entities (non-clients) in the past to highlight the PTO’s inconsistencies to an Examiner. Sometimes that has worked. But in that case, I was in no danger of creating estoppel against my own client’s issued or allowed claims.

  26. 125

    Boy it’s comforting to read a thread like this, from a desk in Europe. Whatever issues one has with the EPO pale into insignificance when one reflects how gruesome it must be to operate in a 103 environment that lacks the EPO’s problem and solution approach, with its deemed “specific technical purpose” that imposes on the dialogue between atty and Exr a framework within the argument must fit. Readers, I invite you to go to the EPO website, navigate to “caselaw of the Boards of Appeal” and download Agrevo T_0939/92.

    Looking in from outside the USA, Mooney is right, over and over again. Maybe he is indeed an alien?

    Max, you had me until you said that MM is right over and over again…

    Keep it secret but several of us at my office wish that the US could just adopt the PSA from the EPO. Actually, we kind of wish we could clone the EPO and replace the USPTO with it…

    But you didn’t hear that from me…

    (I think a lot of US practitioners who deal with a lot of applications before the EPO will end up feeling this way).

  27. 124

    “I have yet to hear of any instance of an examiner being disciplined for making too many rejections.”

    And you won’t. In fact, they are rewarded for it.

  28. 123

    AB — nice comments.

    In certain instances, the novelty of a particular claim may rest on a single word. However, in my experience, most examiners do not think about every word in the claim — they try to get a general idea as to what is being claimed and then find art that is close. In the crowded arts, this isn’t hard to do. The problem lies in that when they finally get around to finding each limitation in the claim, they get stuck because of this “single word” or limitation. Either they construe any meaning out of this single word/limitaiton or they find a (typically bad) 103 reference to handle this single word/limitation.

    When I started practicing many moons ago, you would be able to point out this error … the examiner would say to herself … “ye ah, you got me” and then allow the application. These days, however, the examiner will just dig in her heels and try to get a cheap RCE out of going final.

    IMHO – There are too many examiners worried about whether they make production than whether or not he/she did a good examination. I don’t blame them — it is human nature to want to not get fired or to want to get a bonus — which brings us back to ethics, the alleged topic of this post.

    There are some people whose ethics will always be unquestioned. However, for many, “good” ethics will be a matter of can they afford it. Put another way — when times are tough (and/or the pressures are too high), ethics tend to slide.

    Ethics also comes down to consequences. For most private practice attorneys, who have the ability to fire clients, it is much easier to ignore the demand of a client to bury a reference because the negative consequences far outweigh the potential negative consequences. Good patent attorneys can always find new clients.

    It is harder when you are inhouse when the client is also your sole employer.

    The problem with examiners is that there are little consequences for stretching a bad reference and making an unwarranted rejection. I have yet to hear of any instance of an examiner being disciplined for making too many rejections. Granted, it may have happened, but I haven’t heard of it.

  29. 122

    “That might be what they say, but like most things people say they actually mean something slightly different. What they actually mean is: “the limitation is blatantly obvious and is obvious regardless of whether or not the reference discloses it, the CAFC’s rulings on obviousness be damed, but I will coddle you by finding you a reference so that nobody makes a big stink out of it”.”

    Thanks for confirming what I wrote above, the legal conclusion of obviousness is based upon factual inquiries (see Graham) — but you just admitted (actually you’ve admitted this all along) that the conclusion of obviousness comes first with you (and most of your comrades at the USPTO). Only after you’ve concluded the claim is obvious do you engage in the process of trying to find the facts that fit your conclusion — classic result-based analysis.

    “Is the part after “to” an intended use of the actual method performed? That is, the actual method is the turning of part b, so is the method merely being used to perform an intended function? Would the provisions in the law, or at least the MPEP, pertaining to intended use limitations apply here?”

    Methinks you don’t understand the difference between the claim to a device and a claim to a method. The concept of “intended use” applies to device claims — not method claims. A method is all about the “use.”

    Turning a screw is different from turning a steering wheel is different from turning a grinding wheel.

    The structure within the method claim limits the actual step being performed.

  30. 121

    “(1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors.”

    Isn’t this sort of begging the question? Prosecuting a patent application is, more often than not, an attempt to make a fairly narrow distinction between what at first glance may appear to be similar art, especially in a crowded field, and in a field to which applicant often has already contributed (or else the applicant wouldn’t be filing patent applications and authoring publications). That’s the whole dance — practitioner files a patent application, examiner rejects under 102 asserting the claims are anticipated, practitioner responds and says, “no, they’re not, and here’s why,” and at the end of the process we either reach a mutual agreement with the patent office as to patentable subject matter or we don’t. Even as to claims that ultimately are not allowed, reasonable minds can differ as to whether they were truly anticipated by the prior art. I can’t imagine a practitioner actually being sanctioned for attempting to assert patentable subject matter, especially when the practitioner was forthcoming by citing the publication in an IDS.

  31. 120

    ” You write ‘why would a PHOSITA modify..’ That’s exactly the area where EPO-PSA imposes a thought process that is governed by D1 and the content of the app as filed.”

    Agreed, and I think PSA is just fine. My point is simply that KSR gives examiners more flexibility than PSA, which is also OK, but it still requires a rational explanation (which should often look like a PSA). The rational explanation is the part that seems to throw some of the examiners that I deal with. And the fact that analysis is actually required appears to create the “gotta find a 102 reference” mentality that generates some really bizarre rejections. This is OK for me financially, but it’s not good for my clients, nor is it good for the US.

    I’ve mentioned before that the PTO has published Guidelines for applying obiousness rejections after KSR. The Guidelines are actually pretty good. If you get beyond the buzzword differences, they’re not terribly different than the PCT examination guidelines for inventive step. However, I don’t believe the examiners in the PTO have been properly trained to use these Guidelines. I’d love to hear some examiner thoughts (thoughts, e.000006k, not juvenile rantings) on these Guidelines.

  32. 119

    That’s a comfort Mr Bloom. Thanks. You write “why” would a PHOSITA modify..” That’s exactly the area where EPO-PSA imposes a thought process that is governed by D1 and the content of the app as filed. Exactly that, is what gives the punch, focus and (most important) exclusion of any subjective hindsight, which I don’t see anywhere except at the EPO.

  33. 118

    “Whatever issues one has with the EPO pale into insignificance when one reflects how gruesome it must be to operate in a 103 environment that lacks the EPO’s problem and solution approach, with its deemed “specific technical purpose” that imposes on the dialogue between atty and Exr a framework within the argument must fit.”

    Max, I’m glad you’re comfortable over there, but I don’t think you really understand the problem. Under KSR, the Supreme Court has given the PTO (and the courts) broad latitude to combine references. The Examiner doesn’t have to follow a process that is as formal as PSA, but must be able to articulate a reason, with a rational basis, for combining the references to obtain the claimed invention. Unfortunately, that requires actually understanding the invention and the references, as well as some thoughtful analysis. So instead we get 102 rejections based on a Google hit. 100% of the words in claim 1 are found somewhere in the reference, so it must be a 102, amirite?

    Done properly, a 103 analysis is not that different from your vaunted PSA test. What are the differences between the closest prior art and the invention? Why would a PHOSITA modify the prior art to get to the invention? Would that modification be obvious?

    It’s not that hard, but it is apparently too much like work for generation Z, or whatever generation that Examiner 0.006 represents.

  34. 117

    “The only thing that worries me is that 103 is really more of a stop gap for not finding the actual 102 irl. There is so much art out there that finding the 102 is impractical … The art needed is always around the next corner it seems.”

    And now I’m agreeing with 6! I h8te adding “Mickey Mouse” limitations to my claims — whenever I see a 103 rejection of this type, I too sense that there’s more damaging art out there that we can’t find. Because I’m in-house and I want GOOD patents, I usually take this as a signal to add the Mickey Mouse limitations (in case that’s all the art there is), AND some backup claims that are more limited and tailored to what we are actually practicing (in case that isn’t all the art there is).

    6’s observation is what MM didn’t understand in his response to my previous post — one’s ability to draft appropriately limited claims in view of the art is hampered by the sheer volume of art out there, combined with the problem of poor translation from other languages, and the fact that, because inventions are generally on the frontier, everyone really is their own lexicographer. It can take years for lingo in a subfield to become standardized. Today’s search terms weren’t necessarily used in the early publications. Makes it darned hard for a practitioner to search properly and draft proper claims.

  35. 116

    Don’t worry Breadcrumbs. We want validity judged objectively don’t we, for legal certainty? So the PHOSITA is an artificial construct, no? But if that notional entity has a sharply defined and consistent relationship with the prior art universe, then we know where we are, don’t we? Examiners and attorneys, inventors and judges, all on the same wavelength, without needing to take evidence from witnesses. Heaven.

  36. 115

    Boy it’s comforting to read a thread like this, from a desk in Europe. Whatever issues one has with the EPO pale into insignificance when one reflects how gruesome it must be to operate in a 103 environment that lacks the EPO’s problem and solution approach, with its deemed “specific technical purpose” that imposes on the dialogue between atty and Exr a framework within the argument must fit. Readers, I invite you to go to the EPO website, navigate to “caselaw of the Boards of Appeal” and download Agrevo T_0939/92.

    Looking in from outside the USA, Mooney is right, over and over again. Maybe he is indeed an alien?

  37. 114

    “The problem of course being the accessibility of the art.”

    Not to a PHOSITA, as all prior art is not only “found”, and accessibile, but fully read and known.

    Hmm, something about “ordinary” and this omnipotent ability just doesn’t seem to jibe. Does omnipotence fall somewhere between automaton and ordinary creativity?

  38. 113

    “The only thing that worries me is that 103 is really more of a stop gap for not finding the actual 102 irl. There is so much art out there that finding the 102 is impractical and should happen only rarely because of poor accessibility to relevant art if the claims are even halfway well written and are fairly specific in an app that has some small merit to it. So we have 103 to allow less good art that is readily available to make up the shortcomings of the availability of the “golden 102″ hidden just around the bend in your search strat.”

    That, in a nutshell, is the problem resulting from the PTO’s poor training (or lack of training). Examiners emphasize keyword searching, to find the perfect “102”, instead of trying to actually understand the invention and/or the references. A well-constructred 103, where the references are actually pertinent and where the Examiner actually has a rational basis to combine the references, is MUCH harder to argue against than the bogus word-matching 102s that we see on a daily basis.

  39. 112

    Sanctions against Mooney’s glib explanations about how everything works would be very helpful…

    Mooney has a pat explanation for everything. It a wonder the world survived for so many thousands of years without him.

  40. 111

    “…often the Examiner in his/her gut believes that a claim is not patentable but can’t find good art to reject it.”

    That’s not a bad starting point, but that “gut belief” should motivate a thorough, objective and carefully directed search and an accompanying solid theory and legal basis upon which to reject the claims. If such a search fails to turn up art that the examiner “just knows is out there,” then that “gut belief” should be easily and immediately transformed into either: further, more carefully directed search, or into a basis for allowance.

    I mean why waste everyone’s time with bogus rejections. It’s the PTO equivalent of the oft cited complaint against applicants, the dreaded so-called “overclaiming.”

  41. 110

    “I’ve made this point, years and years ago, after reviewing a bunch of cases from the Federal Circuit as to claim construction — simply put, there is enough contradictory and/or inconsistent case law that a judge can choose whatever law they want to reach the conclusion they want.”

    The law is Phillips and most of those “inconsistent” cases at the District Court level are the results of judges reading limitations into claims to “preserve their validity” or similar garbage. Why do judges do that? Because lawyers ask them to do it. Why do lawyers ask judges to do it? Because they know they can get away with it and it’s the only argument they have, i.e., pretend to be a mo-ron and not understand Phillips or anything else except that CCPA case from 1972 that has the favorable holding.

    Sanctions would help here, too.

  42. 109

    I find that often the Examiner in his/her gut believes that a claim is not patentable but can’t find good art to reject it. But instead of allowing it, he/she makes all sorts of bogus rejections hoping that the problem will go away (for example, by abandonment, the applicant severely narrowing the claim, a piece of relevant prior art magically being discovered months later).

    Very frustrating for the patent practitioner and the client.

  43. 108

    6–

    IMHO

    “turning part b with a wrench to tighten it to part a” sounds like a good method claim step to me.

    So is “tightening part b to part a”;

    And so is “tightening part b to part a by turning part b with a wrench”

  44. 107

    “”well, I need to search this again.””

    That might be what they say, but like most things people say they actually mean something slightly different. What they actually mean is: “the limitation is blatantly obvious and is obvious regardless of whether or not the reference discloses it, the CAFC’s rulings on obviousness be damed, but I will coddle you by finding you a reference so that nobody makes a big stink out of it”.

    Just like All says about examiners etc caving in, the same is true about applicants. The trick is the clear presentation of the facts, when that occurs they will usually cave.

  45. 106

    “When faced with bad references that fail to teach all of the limitations, the easiest way to get around it is to read (construe) the claim limitations so that the limitations are non-limiting — it see it happen nearly every single day.”

    You got it sister.

    I have a question though. When a claim says: A method comprising: forming part a, forming part b on part a, turning part b with a wrench to tighten it to part a.

    Is the part after “to” an intended use of the actual method performed? That is, the actual method is the turning of part b, so is the method merely being used to perform an intended function? Would the provisions in the law, or at least the MPEP, pertaining to intended use limitations apply here?

  46. 105

    Actually it’s about to be an allowance bonanza at the end of this quarter. I mean sure, it would probably be obvious to combine an extra ref for most of my rejections that have come back after RCE, but come on, I can give you guys a little break I suppose.

    The only thing that worries me is that 103 is really more of a stop gap for not finding the actual 102 irl. There is so much art out there that finding the 102 is impractical and should happen only rarely because of poor accessibility to relevant art if the claims are even halfway well written and are fairly specific in an app that has some small merit to it. So we have 103 to allow less good art that is readily available to make up the shortcomings of the availability of the “golden 102” hidden just around the bend in your search strat. So when that amendment comes in that has a mickey mouse limitation added to it I still feel wary of allowing the claim because I know, beyond any reasonable amount of doubt, that in most cases there is better art out there somewhere and that the claim should be easier to tackle with fewer 103 refs or has a blatant 102 out there. The problem of course being the accessibility of the art. The very worst thing about most allowances is that if I bother to take just one last look through somewhere I haven’t looked then 25% or more of the time I come up with a 102 on something that I was about to allow. One last google. One more subclass where it could possibly be found. The art needed is always around the next corner it seems.

  47. 104

    Yes, but pds, you’ve just demonstrated that “result oriented analysis,” something I h8te with a passion, is, and will always be, a cheap short cut for the lazy and/or the corrupt.

    When pressed with a clear presentation of the hard facts, an examiner or court will invariably cave. The key is a clear undeniable presentation of the facts. It also helps to create negative consequences for ignoring the facts, such as the threat of appeal or the like.

  48. 103

    I brought this point up with Mad Max awhile ago. The problem with law (not just patent law — any law) occurs when those that decide the law or make conclusions of law (e.g., judges and examiners) engage in result-oriented analysis.

    Instead of having their analysis inform their conclusion, they put the cart the horse before the cart and have their (intended) result inform their analysis.

    I’ve made this point, years and years ago, after reviewing a bunch of cases from the Federal Circuit as to claim construction — simply put, there is enough contradictory and/or inconsistent case law that a judge can choose whatever law they want to reach the conclusion they want.

    I see this all the time with examiners. With regard to 101 issues, I see claims that pass muster under 101 one day and have very similar claims get rejected under 101 the same day. The “memo” MM refers to actually only gets sent to some examiners, and most really don’t know if they have the most “up-to-date” memo or not. Really, it is a joke at the USPTO.

    Claim constructions at the USPTO are the worse(and most prolific) examples of “result-oriented” analysis — that is if you are lucky to get an explicit claim construction. My adage is “an examiner will construe a claim as broadly as possible so as to reject the claim based upon the reference the examiner has in hand.”

    To borrow JD’s mantra, with the “reject, reject, reject” culture at the USPTO, the result is already preordained — the only question is how the examiner reaches that result. When faced with bad references that fail to teach all of the limitations, the easiest way to get around it is to read (construe) the claim limitations so that the limitations are non-limiting — it see it happen nearly every single day.

    I even see the process when I do personal interview — we get to the point where the examiner finally understands why the reference doesn’t teach what the examiner thought it taught and the examiner goes “wait … what if I construe limitation ‘X’ to mean ‘Z’ and that means this ‘Z’ will disclose your limitation.” After looking at the claim, I almost invariably find a reason why “Z” cannot disclose “X,” and then I usually get to the point where the examiner says … “well, I need to search this again.”

  49. 102

    speaking of inconsistencies, Malcolm, look at the number of times the Federal Circuit disagrees with district court claim constructions.

  50. 100

    “improving consistency”

    hobgoblins, little minds,

    Mooney can’t deal with variations. The day every examiner issues the identical rejection will be the day humans are no longer necessary at the PTO or the patent bar for that matter.

    I would gladly replace Mooney with a machine. His posts are pretty predictable. Just randomly pick from the following list of words: crap, worthless, doo doo, satin panties, white wine, crack pipe, piece of paper, clearly, scribble, garbage, means plus fx, baloney, trivial, mundane.

    These words may unwittingly also describe his life.

  51. 99

    It’s the real me.

    Fixing the problem of inconsistency is not about poor Examiners necessarily, but about poor supervision of Examiners and art units. There is no technology that is moving so fast that the prevailing issues can’t be identified in advance and uniform requirements and guidelines instigated and applied (to be revised only when CAFC or Supreme Court decision dictates). And I’m not talking about providing one or two vague guidelines or ridiculous “Examples” to applicants and examiners. I’m talking about ten or twenty examples that cover the spectrum of possibilities along with indications as allowable or not.

    Just freaking do it, for cripesakes. It’s okay to be wrong. I expect the law to change and I expect the PTO to be imperfect. I can factor in what I believe are the most likely changes when I draft my specification and claims. And I can live with some Examiner inconsistency at the margins. But not vast philosophically inconsistent differences in what’s allowable given essentially the same support in the specification. I mean, really.

  52. 98

    Mooney didn’t get the memo…

    Bill Lumberg said he should move his stuff to the basement, Storage B, I believe it was.

    I guess he didn’t get the “you are a worthless pile of crap” memo either.

  53. 95

    I just marked this day on my calendar — I agree with Malcolm — on his “consistency” posting.

  54. 94

    “That’s not the real problem. The real problem is that individual Examiners in a given art group, even within the same subunit of an art group, treat identical claims VERY differently. It’s as if one of them received a “policy memo” from a superior and the other one didn’t, or failed to read it. It’s not a question of claim interpretation but simply a question of what is deemed allowable. And I’m talking vastly different takes, where a very narrow dependent claim is rejected by one Examiner while another examiner issues not only the narrow dependent claim but independent claims that are about as broad as an applicant could hope for. And yes it’s the same art that’s being cited in both instances.

    That is effed up. That is where the real work at the PTO needs to be done: improving consistency.”

    Did the aliens take MM and replace him with somebody having some good insight?

    I’ve got to stop posting today because I think I’m hallucinating.

    I’m afraid to read what 6K might write — like he actually allowed an application.

    Yikes!!!

  55. 93

    “You predicted that they would interpret/mangle the claim language in order to make an assertion of anticipation. If it can be done, it likely will be done. You know this. Start drafting with it in mind already.”

    Ye ah right … I’m to draft claims based how some examiner (for many of whom English is a second or third language) is going to mangle it.

    Sorry Charlie … these I’ll just take to the BPAI unless the examiner comes up with something really good (unlikely, but it does happen). I don’t let incompetence at the USPTO change my claim drafting strategy — I just work around it during prosecution.

    You’ve consistently exhibited this misplaced attitude consistently throughout your posts — so let me disabuse you of this attitude … the “universe” of patent law isn’t centered around the goings on in Alexandria. A patent’s time at the USPTO is just one (hopefully short) step in the entire process. As patent attorneys, we need to keep our eye on the big picture — and the big picture usually doesn’t include your claim construction failings.

    FYI — some of the easiest cases to prosecute (and take to the BPAI) are when an examiner blatently tries to stretch a claim interpretation. The harder ones are where the examiner uses a bad interpretation and never tells the applicant about the bad interpretation.

  56. 92

    “”real problem lies in the fact that no patent attorney can predict the convoluted ways an examiner will interpret/mangle the claim language in order to make an assertion of anticipation.”

    That’s not the real problem. The real problem is that individual Examiners in a given art group, even within the same subunit of an art group, treat identical claims VERY differently. It’s as if one of them received a “policy memo” from a superior and the other one didn’t, or failed to read it. It’s not a question of claim interpretation but simply a question of what is deemed allowable. And I’m talking vastly different takes, where a very narrow dependent claim is rejected by one Examiner while another examiner issues not only the narrow dependent claim but independent claims that are about as broad as an applicant could hope for. And yes it’s the same art that’s being cited in both instances.

    That is effed up. That is where the real work at the PTO needs to be done: improving consistency.

  57. 91

    Me and Noah are like this ||. I would never make him roll over in his grave. He does compliment me regularly on my astounding vocab and comprehension of how words are used though. :)

  58. 90

    “(The application was abandoned and the client, a small company, quickly went under, BTW)”

    Serves them right, if their only claim to fame and glory was reinventing 100 year old tech then the entire company may as well have never been formed.

    “less likely to have examiners these days who are intimately familiar with the art in their technology since they depend on keyword searching as opposed to “shoe” searching.”

    With every passing year I know more and more about the things seen in my art. Shoe searching or keyword searching, you still see a sht ton of art.

    “real problem lies in the fact that no patent attorney can predict the convoluted ways an examiner will interpret/mangle the claim language in order to make an assertion of anticipation.”

    You’re supposedly a practicioner, and you just did predict it. Indirectly that is. You predicted that they would interpret/mangle the claim language in order to make an assertion of anticipation. If it can be done, it likely will be done. You know this. Start drafting with it in mind already.

  59. 89

    “But for us grown-ups, the access to the prior art makes it easier, not harder, to draft non-anticipated claims.”

    Come on MM … most of us are convinced that the closest thing you’ve come to a registration number is when you got your booking number at the R. J. Donovan Correctional Facility.

    If you were ever in a position to write claims (and actually think about what you were doing), you wouldn’t be spouting the nonsense you do on a daily basis.

    Regardless, you will never be confused with anybody who has actually had to write claims for a living.

    BTW: The real problem drafting non-anticipated claims isn’t about having access to prior art, the real problem lies in the fact that no patent attorney can predict the convoluted ways an examiner will interpret/mangle the claim language in order to make an assertion of anticipation.

    I think every time an examiner issues an office action, Noah Webster spins in his grave.

  60. 88

    Do any state bars require submitting speeding tickets?

    What, exactly, is the relationship between speeding and the ability to practice patent law in an ethical manner?

  61. 87

    patent-medicine wrote: “All except this one senior examiner who knew EVERY SINGLE wheel patent ever issued, worldwide. I later read an article about him in the Washington Post. Amazing guy.”

    less likely to have examiners these days who are intimately familiar with the art in their technology since they depend on keyword searching as opposed to “shoe” searching.

  62. 86

    “as the volume of knowledge continues to explode. I suspect that it will eventually become impossible to draft claims that are 100% free of art.”

    This makes absolutely no sense. The more prior art that is readily available, the more difficult it will be to draft claims that don’t read on the prior art?

    I suppose that will be true in fields that are “used up” and obsolete, and it may be meaningful to practitioners whose expertise lies in drafting vaguely worded baloney claims intended to read on computer-implemented stuff that other people will actually make and sell (without reading the patent application).

    But for us grown-ups, the access to the prior art makes it easier, not harder, to draft non-anticipated claims.

  63. 85

    “Minds of an urban legend about an Examiner at the USPTO who’s claim to fame was that he rejected a claim over a bible verse about some device moses or isaac or solomon or david or some such used to flush out the pig sty.”

    Not an urban legend — I saw a case (I didn’t prosecute it through) in which the examiner cited to an article that referred to an old (couple hundred years??) periodic table. The Examiner cited the periodic table for the proposition that a particular element had some property. The problem (for the examiner) was that if you read the complete article, the article said … this periodic table was wrong about this particular property and instead of being X (like that stated in the old periodic table), the property is actually Y.

    If I recall correctly, it took a couple of responses before the examiner actually relented — put another way, the examiner maintained the rejection (and the Examiner’s position) despite the evidence to the contrary.

    The problem with keyword searching ….

  64. 84

    Plus, now he has the duty to read the ENTIRE bible, just to traverse rejectin over the one bible verse. Kill me now.

  65. 83

    Minds of an urban legend about an Examiner at the USPTO who’s claim to fame was that he rejected a claim over a bible verse about some device moses or isaac or solomon or david or some such used to flush out the pig sty. Under Moatz, I guess that practiner would be disbarred, in addition to going to hell.

  66. 82

    yes, sometimes applicants get stung by prior art patents (probably “paper” patents) which are 50 or more years old and which the inventor was not aware of (even though Dudas claims that inventors are “all knowing” as far as prior art goes)

  67. 81

    “I would also allow sanctions in instances where the claim reads on any device and method published in the art for more than 10 years prior to the filing of the application.”

    Actually, it’s EXTREMELY EASY to draft claims that are 100% anticipated by the prior art, even if one HAS done a search.

    I once inherited an application already under examination on a “new” (you can see where this is going), highly efficient bicycle wheel. The first action included a 102 rejection based on a 100-year-old patent on a car wheel. Basically, when automobiles were new, people tried out all kinds of different things, and then the industry settled on some standards, like wheel sizes, axle hubs, etc. All the other technology (and some really good ideas) fell by the wayside. All that stuff has now effectively become “unknown” to even experts in the field.

    All except this one senior examiner who knew EVERY SINGLE wheel patent ever issued, worldwide. I later read an article about him in the Washington Post. Amazing guy.

    Although that was a weird situation, this is going to become an ever-increasing problem as the volume of knowledge continues to explode. I suspect that it will eventually become impossible to draft claims that are 100% free of art. There will be too much stuff to search and review. And besides, your search is only as good as the database is indexed.

    By the way, who gets hit with IC in that bicycle case? Me? I was an associate who hadn’t even touched the case. The long-gone tech spec who actually wrote it? The partner, who had been told by the client that he wouldn’t be paid for a lot of partner review time?

    (The application was abandoned and the client, a small company, quickly went under, BTW)

  68. 80

    “Malcolm, can reexam cure a duty of candor problem in an issued patent?”

    I think it could go a long way towards covering up any *perceived* problem and encouraging a potential licensee to settle rather than attempt to tank the patent on inequitable conduct grounds in district court.

    Is that what you mean by “cure”? Because as far as I know, there is no “cure” for this disease which affects most, if not all, patent applicants in the United States.

  69. 78

    If my memory is correct, under the proposed continuation/claim rules you could not file an RCE to have additional art considered if you were over the continuation limit.

  70. 77

    Malcolm writes “includes not putting previously issued patents into re-exam to make sure that those office actions are cited.”

    Malcolm, can reexam cure a duty of candor problem in an issued patent?

  71. 76

    “JD you ready for the hearing? I still need to get some directions to the court, I suppose I’ll goggle them. Is there any good places to park around there that you know of?”

    Leave your car at home. McPherson Square stop is your best option.

  72. 75

    6, you should drop a note in your next Office Action stating that you appreciate the remarkable candor and sense of duty demonstrated by the Applicant.

    They’d appreciate that.

    And just to be clear: if I knew of a very “close” reference and OA cited in an application concerning technology “closely” related to an application I was prosecuting, then I’d cite it in an IDS. But that’s a far cry from instituting a system for identifying such references and OAs just because of what happened to that arrogant weiner in the McKesson case.

  73. 74

    “BOOGA BOOGA!!!!”

    Actually I just had an RCE filed to get me to consider a reference/OA from another case. It was a fairly close reference, but no cigar.

  74. 73

    “This interpretation had not occurred to me or the inventor and has enough merit that instead of fighting it I amend the claims. And now some of you want to punish me.”

    While I do have pity for you not being able to read and interpret claims and references, it has gotten to the point where you really need to learn to or gt fo the system, we have people waiting in line behind you. Lots of them. I mean come on, you’re supposedly a professional. Are you telling me that examiners best you at claim/reference construction/interpretation? No wonder firms want to hire us.

    JD you ready for the hearing? I still need to get some directions to the court, I suppose I’ll goggle them. Is there any good places to park around there that you know of?

    I’m going to bring my big finger hand with GO PTO! on it, maybe we can get the wave going!

  75. 72

    “Speaking of the duty of candor, anyone following the McKesson decision by cross-citing Office actions in related patent applications or in unrelated patent applications covering similar technology?”

    Of course, in every application on the docket. Every competent prosecutor is doing that. Anyone who doesn’t is playing with fire and risking malpractice, and that includes not putting previously issued patents into re-exam to make sure that those office actions are cited. BOOGA BOOGA!!!!

    /typical kneejerk reactionary prosecution attorney garbage off

  76. 71

    Every few years I get an OA where the examiner has given a new broad interpretation of a piece of prior art which I made of record and made a 102 rejection using it. This interpretation had not occurred to me or the inventor and has enough merit that instead of fighting it I amend the claims. And now some of you want to punish me.

  77. 70

    Speaking of the duty of candor, anyone following the McKesson decision by cross-citing Office actions in related patent applications or in unrelated patent applications covering similar technology? Did you read ALL of the Office action before citing it? Even the boilerplate about the art unit’s FAX number? Better know that FAX number – it will be on the quiz.

    Help us, Mr Richardson.

  78. 69

    “Come on people! How often have you received a lame or even good 102(b) rejection using submitted references which was just wrong”

    Well idk about that, but I just found a 102b the other day, so I do know that this sht happens. And it’s one of those that spells the claim out in no uncertain terms. That one happened to be in the case with 600 refs on the IDS. Maybe I should report him for burying the reference? Get a little aaaaa, sanctions?

  79. 68

    So now we get to argue with both the Examiners AND the OED about what is a legitimate 102(b) reference. I think that a practitioner has no business practicing if they are submitting claims they know to be anticipated. But how in the world will you ever know? Come on people! How often have you received a lame or even good 102(b) rejection using submitted references which was just wrong. Let’s not make practitioners even more afraid to practice honestly.

    This job is hands down the most enjoyable I have ever had. However, if the trends continue I may start looking for other lines of work.

  80. 66

    Pat, Great pseudonym, very creative.
    I should know, “cause I’m an inventor.

  81. 65

    “the PTO’s present Chief Counsel (who has never practiced patent law) (and reportedly comes from the patent-hostile FTC”

    Actually, Mr. Toupin came from the ITC, not the FTC . . .

  82. 64

    “I had heard that there was a requirement somewhere that all references cited (or at least the ones used in a rejection) had to be read through in their entirety before an attorney was to file a response. Is this not so?”

    Are you talking about a requirement for applicants and practitioners, or for examiners?

    I would be thrilled if the examiner actually read the entire reference they were applying. I get so much, “Claims 1-20 are anticipated by Smith. See abstract.” that it’s comical.

    To answer your question, no, it is not so.

    Don’t believe everything you hear. Especially when it’s the babbling of those who don’t know what they are talking about.

  83. 63

    Forcing the applicant to take over the examiner’s job seems a brilliant idea, i.e. ease the backlog of applications and then a house-sweeping work is done.

    Great, but not practical.

  84. 60

    MM Wrote: “My crap detector just exploded.”

    You know Dennis, I was just lamenting to my wife that everything you buy nowadays is made like crap and will break/fail soon after it’s too late to return it.

    I guess I shouldn’t be surprised by this news that crap detectors are, too, unreliable crap.

  85. 59

    “My crap detector just exploded”

    You probably pulled a Barney Fife and pointed it at yourself (again).

    Maybe you should be fined $1000 every time you post something annoying.

  86. 58

    “I would go further and include any publication submitted by the applicant in an IDS, regardless of authorship, and regardless of when the IDS is submitted relative to presentation of the claim. I would also allow sanctions in instances where the claim reads on any device and method published in the art for more than 10 years prior to the filing of the application.”

    Dennis, nice work. I’m sure that you got the desired BP increase out of every Patent Attorney who reads this blog – except me.

    ;)

  87. 57

    “In most cases, the line between patentable versus unpatentable claims is impossible to define with any precision.”

    My crap detector just exploded.

  88. 56

    To some extent, I agree with Mr. Moatz’ comment about filing an IDS with a large number of references. However, in terms of determining where the line is drawn between patentable and unpatentable subject matter, Mr. Moatz is clearly off base. As patent attorneys, we have a duty to our clients to pursue the broadest protection possible (i.e., “zealous representation of the client”.) In most cases, the line between patentable versus unpatentable claims is impossible to define with any precision. In short, this is another case of a non-patent attorney attempting to lay blame on the practitioner for diligently pursuing what is legally required of him or her under the ABA model rules and most state bar requirements.

  89. 54

    “I just had an attorney admit to me on the phone that she had not read the entire reference.”

    well, la dee frickin’ da!!

    like you couldn’t do the same for virtually every reference in every ids

    you and moatz both know that reading the entire reference is not necessary to know whether a reference is material or, more to the point, whether some over-agressive defendant will assert that it’s material in litigation

    rather than manufacturing some b.s. ethical obligation to read a reference, why not get congress to overrule the b.s. obligation to disclose so that applicants won’t cite everything under the sun?

  90. 53

    zebra wrote:

    “Who’s up for a friendly game of chicken with the OED? Here’s how the game starts:”

    Except the OED won’t read it. It will sanction the submitting attorney for unethical conduct in “burying” the reporting in a needlessly prolific submission.

    This is not a level playing field. The OED issues our licenses, charges us licensing fees, and disciplines us for unethical conduct – not the other way around.

    Here’s my legal advice for you today: When you’re riding a bicycle, don’t play chicken with a tank.

    – David Stein

  91. 52

    “Your bizarre misrepresentation of Moatz’s view is noted”

    I believe I’ve posted a fairly reaonsable interpretation of the junk I see on slides 41 and 50 of Moatz’s presentation.

  92. 51

    “So what’s the problem?”

    I had heard that there was a requirement somewhere that all references cited (or at least the ones used in a rejection) had to be read through in their entirety before an attorney was to file a response. Is this not so?

  93. 50

    Who’s up for a friendly game of chicken with the OED? Here’s how the game starts:
    1) Thousands of practitioners go out and commit a criminal offense (e.g., a speeding violation).
    2) Report the incident to the OED in GREAT DETAIL (e.g., 30 pages), BUT … take great care in crafting this report so that the nature of the offense remains obscure unless the entire report is read.
    3) Relish in your mind the image of someone else (say the poor OED slobs) having to read a reference in its entirety to determine whether or not a serious offense has been reported.

  94. 49

    “With regard to anticipation = misconduct, Moatz’s view that avoiding Festo is an unbreakable requirement is silly.”

    Your bizarre misrepresentation of Moatz’s view is noted.

  95. 47

    “I just had an attorney admit to me on the phone that she had not read the entire reference. The reference has 6000 claims and is over 300 pages long, but does that really matter?”

    No, it doesn’t matter. You’re not required to give that reference any more consideration than you would have if it had been one of the results of one of your famous 5 second Google searches.

    So what’s the problem?

  96. 46

    Isn’t this the exact same stuff Moatz told us months ago?

    With regard to anticipation = misconduct, Moatz’s view that avoiding Festo is an unbreakable requirement is silly. It’s the practitioners/clients judgment call whether taking a chance on DOE due to Festo is too high a price to pay when a) the DOE likely won’t be available for 1000 other reasons, b) there is an argument that the claims are arguably allowable over the reference, and c) the analysis in a close requires costs money. The PTO is simply not positioned to make the call that a cost/benefit analysis of the practitioner/client was improper. Are broad Festoed claims clearly better than narrow, non-estoppelled claims? Is the PTO also going to decide that my claims were too narrow?

    Further, if Japanese client believes Japanese reference X ought to be submitted, and the only thing I can read is the English abstract, then don’t I have to submit the thing because of the client’s Rule 56 duties? Wouldn’t reasonable inquiry allow me to rely on my client’s statements rather than reading the thing myself.

    This stuff doesn’t get less silly when repeated.

  97. 45

    David – civil enforcement actions are NOT just brought by “citizens” or other private parties. In fact, the majority of them are brought by federal, state and local governments. Examples would include things like actions for environmental infractions, FTC actions, etc. In most instances, “citizens” and other private parties don’t even have standing to bring a civil enforcement action on their own. Also, at both the state and federal levels, civil enforcement actions are often handled by the same folks who handle criminal matters (e.g., the DOJ, state AGs, etc.).

  98. 44

    Humorless Democrat wrote:

    “I’m going to suggest to dictionary publishers that they use Harry’s latest fulmination to illustrate the meaning of ‘pathetic’.”

    Harry’s schtick does have a bit of “ooga booga” quality to it. But I think he’s probably being pressured by two things:

    (1) Implicit – or maybe explicit – pressure by higher management to bully practitioners into the PTO’s agenda (as SF points out above), and

    (2) The constant need to demonstrate that his office has value – much like the TSA using its “terror alert” system to prove its own value. (Anyone notice that the TSA’s “threat level” for airports has been stuck on orange – the highest level below “an attack is actually occurring” – for several years?)

    As in many scenarios of government administration, the tail wags the dog here. If a regulatory office looks like it’s sitting around doing nothing, its budget is going to be cut in short order… but if looks like the world’s last line of defense against an army of evildoers (in this case, the members of the patent bar ;) ) then it’s probably going to receive even more resources.

    – David Stein

  99. 43

    “(2) Burying a reference material to patentability among a large number of cumulative references”

    In other words, don’t cross Harry Moatz without first combing the waters.

  100. 42

    “The polluter pays” is a good maxim. Everybody has a common interest in minimising pollution. Seems to me that poor quality examination pollutes the patent system. Seems to me that knowingly taking untenable claims to issue, with a view to asserting them, is polluting the system. Control mechanisms to minimise such pollution exist (in other countries), wherever there is consensus that such pollution has to be kept at bay. Self-interest ought to be enough and can be built into the system, if the will is there. Such controls don’t feature an Office of Harry Moatz. In any jurisdiction where the patent system offends the public nose, the public will sterilize it.

  101. 41

    “Their response was File an Accelerated Examination request and do exhaustive patent searches.”

    Same speech at the ABA IP Law Section Leadership Conference last year. I found it packed with anti-patent folks. I got in an argument with one law prof who asserted that electrical circuits aren’t patentable. Our organizations have been infiltrated by the enemy.

    Here is another concern. Am I gonna get disbarred if the Examiner very wrongly misinteprets the inventor’s previous work to reject some claims, but allows others, and the client forces me to take the allowed subject matter?

  102. 40

    I’m going to suggest to dictionary publishers that they use Harry’s latest fulmination to illustrate the meaning of “pathetic”.

  103. 39

    FAD – You need to read the final rules. The reporting requirement is for conviction of ANY crime – not just “serious” ones (37 CFR 11.25(a)). Once you report the conviction, the OED Director then determines whether or not the crime constitutes a “serious crime” warranting an interim suspension. As for the definition of a “serious crime”, that is defined in 37 CFR 11.1 (generally, a felony or any crime involving fraud, deceit, interference with justice, etc.). Moatz probably mentioned checking with state law as to whether or not something like a speeding ticket is considered a “crime” in a particularly state. Also, in the comments published with the final rule, the PTO said that they would not exclude minor offenses from the reporting requirement. Instead, the comments published with the final rules clearly state that any criminal conviction must be reported to OED, and 37 CFR 11.1 defines a “crime” as “any offense declared to be a felony or misdemeanor by Federal or State law in the jurisdiction where the act occurs.”

  104. 38

    Notice!, Notice!, Notice!:

    “Just an ordinary” is hereby and forever more Jaoi™’s (my owner’s) trademark.
    Is that fair?

    If you want to use “Just an ordinary”, please contact me or my boss via a comment on Patently-O.com – permission to use it may or mayn’t be freely given depending on something or other.

  105. 37

    One has to wonder if the moving force behind Harry Moatz threatening everyone with disciplinary actions for not reading and understanding hundreds of thousands of technnical words in all the references the CAFC forces everyone to put into every IDS is the PTO’s present Chief Counsel (who has never practiced patent law) (and reportedly comes from the patent-hostile FTC) who has pushed so many other unrealistic practitioner rule restrictions and punishments, Mr. Toupin?

  106. 36

    Just an ordinary criminal wrote:

    “A speeding ticket is definitely classified as a civil offense in some states. For example, in Florida the code clearly states that an ordinary speeding ticket is a ‘noncriminal traffic infraction.'”

    :shrug: OK, I’ll accept that it varies by jurisdiction. Traffic law isn’t my thing. ;) But unless it’s explicitly classified by state statute as a non-criminal offense, it’s probably criminal.

    However, I doubt that even in Florida, speeding tickets are treated as “non-criminal” offenses in every aspect. For example, the Florida BMV/DMV most likely tracks your speeding tickets and can suspend or revoke your license if you get too many in a short period. That’s not the case for truly non-criminal offenses, like parking tickets: you can rack up thousands without impacting your driving privileges (as long as you pay them all.)

    ===

    “something is not, ipso facto, a crime simply because it violates a statute, nor the fact that the state is (or is not) represented by a ‘prosecutor.'”

    Here’s law.com’s definition of the term “prosecutor”: “generic term for the government’s attorney in a criminal case.”

    Where a government is acting in a private capacity – e.g., in a contract dispute between a city and a construction company – it is represented by a plaintiff’s attorney. Lots of differences here – including ethical standards: the plaintiff attorney’s ethical standard is zealous prosecution of the state’s case, whereas a prosecutor’s ethical standard is to seek justice (or some such nonsense. ;) )

    ===

    “There are all sorts of civil enforcement actions brought due to a violation of federal, state or local laws.”

    But that’s the other side of the coin: some criminal offenses can be enforced by citizens. These statutes create a civil cause of action, whereunder any individual may sue a violator.

    – David Stein

  107. 35

    I think Dennis made an error, its not ANY crime that OED wants you to report, its any SERIOUS crime. Harry made a reference to look at your state law to determine what that is. And driving fast did not live up to that threshold inquiry.

    What concerns me more is the change of address stuff he mentioned. As far as I know, that material is not in the slides.

    David Stein says “let’s face it: the USPTO has declared war on the patent bar.”

    I concur. Yesterday, there was a question to some of the TC directors as to (1) what is “patent quality” and (2) if there is anything we can do to help, what is it? Their response was File an Accelerated Examination request and do exhaustive patent searches. They didn’t even bother answering what patent quality was. That being said, my interpretation is that patent quality is the extent to which you hold their hand while doing their job.

  108. 34

    In Maryland, traffic violations (including speeding in violation of Md. Code, section 21-801.1(a) of the Transportation Article) are generally misdemeanors, i.e, crimes. See Id. 27-101(a). (Obviously, vehicular manslaughter is an exception, because it is a felony. See section 2-209(d) of the Criminal Law Article. There are also a few regulatory-type violations that are civil.)

    I had to research this issue last winter (for reasons I have to refrain from disclosing), and very few states treat speeding tickets as civil violations. Maybe Wisconsin does IIRC, you’ll have to look it up. But in any event, only a small minority of states.

  109. 33

    “I just mailed the notice to OED about the speeding ticket I received a few weeks ago.”

    95 mph in a school zone.

  110. 31

    Also, David, something is not, ipso facto, a crime simply because it violates a statute, nor the fact that the state is (or is not) represented by a “prosecutor.” There are all sorts of civil enforcement actions brought due to a violation of federal, state or local laws.

  111. 30

    “Still — this is all just bluster until OED actually tries to discipline a practitioner because, e.g., the practioner didn’t read the ENTIRE Japanese reference cited by an examiner in a counterpart Japanese applicatio, which was subsequently submitted to the USPTO in an IDS.”

    I just had an attorney admit to me on the phone that she had not read the entire reference. The reference has 6000 claims and is over 300 pages long, but does that really matter?

  112. 29

    David – a speeding ticket is definitely classified as a civil offense in some states. For example, in Florida the code clearly states that an ordinary speeding ticket is a “noncriminal traffic infraction.”

  113. 28

    “That section requires that submitted papers be submitted only for proper purposes and that any *claims* made be legally warranted.”

    No it doesn’t, at least not any more, by a literal reading at least. Old 37 CFR 10.18 used to require EXACTLY THAT (“The *claims and* other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;”), but it was never applied or enforced. The express prohibition against unwarranted or frivolous “claims” has apparently been *deleted* from new 37 CFR 11.18 by the rulemakers at the PTO (“The *[deleted]* other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;”

    Of course, it is impossible for any applicant to know with certainty that “claims [are] legally warranted” in any final sense. Such would require proving a negative (“there is no prior art that could invalidate my claims”), which is impossible. What the PTO regulators should have said (and what could have been effectively enforced) is “The *claims and* other legal contentions therein are, after reasonable inquiry, believed to be warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;”

    But as it is, as with all current PTO regulatory changes, it’s one step forward, two steps back with the new 37 CFR 11.18.

  114. 27

    Jim Jones:

    I don’t know if an ordinary speeding ticket is merely a civil offense in a majority of states. However, in many states a speeding ticket is indeed a “criminal offense” and therefore reportable to OED. For example, I believe that speeding tickets are considered criminal offenses in Illinois and Ohio. And all I said in my original post is that criminal convictions must be reported.

  115. 26

    David Stein writes “The only aspect that surprises me is the relative lack of backlash by patentees and the patent bar.”

    Where is the AIPLA when we need it?

  116. 25

    curious wrote:

    “I would like to see a graph of the number of examiners with more than five years experience working at the Patent Office each year for the past twenty years. I would like to see a similar graph of the number of examiners who have left before spending five years, each year for the past twenty years.”

    Excellent points.

    One aspect of the patent examiner compensation package that I’ve NEVER understood: the USPTO encourages examiners to attend part-time law school – and pays tuition reimbursement. I know that’s a nice perk, and bully for the examiners… but isn’t the USPTO essentially paying for more experienced examiners to find better jobs? What kind of labor principle is at work here?

    ===

    “The reason is that the Patent Office has a horrible backlog due to mismanagement and/or poor management. And the best defense is a good offense.”

    That’s exactly how I see the situation, too.

    This reminds me of that debacle in Boston two years ago over Comedy Central’s surreptitious placement of some LED devices around town as an advertisement – remember that? When the Boston PD arrested the two employees on “terrorism” charges, the public sharply criticized and ridiculed the arrest as outrageous and the charge as bogus. The Boston PD responded by ramping up its rhetoric – practically characterizing the employees were Al Qaeda operatives! This was an obvious PR facade – trying to focus the blame on the employees – and any hint of “oops, maybe we screwed up” would have caused the dam holding back the public backlash to burst.

    The USPTO is using the same tactic. PTO management has completely failed to reduce the backlog, and it is afraid of pointed inquiries into its management failures by the GAO and Department of Commerce. So it is seeking to cast the blame on applicants and the patent bar… and also to address its failures by throttling the number of incoming applications.

    The only aspect that surprises me is the relative lack of backlash by patentees and the patent bar.

    – David Stein

  117. 24

    “US President-elect Barack Obama is expected to nominate New Mexico Gov. Bill Richardson to head the Commerce Department”

  118. 23

    It seems like our various ethical obligations are on a collision course with themselves . . .

  119. 22

    jim jones wrote:

    “Just an ordinary criminal, a speeding ticket is a civil offense in a majority of states.”

    No, it’s still a crime. It’s an action brought by a state or city for violating a statute. The attorney who represents the state is a prosecutor, not a plaintiff’s attorney.

    However, in many states (including Ohio, my home state), ordinary speeding tickets are “minor misdemeanors.”

    – David Stein

  120. 19

    “if there is a 102(b) in the IDS it should be made first action final. then applicants would read the references and not submit broad independent claims.”

    Another good solution.

    Re allegedly obvious inventions: nobody will ever be sanctioned for filing an obvious claim, ever, so no point in wasting time discussing it. Unless of course you just want to create a distraction or need an excuse to whine and complain about the PTO.

    But sanctions for filing a claim anticipated by the inventors own publications? Or an old, well-known publication (say, one that is cited more than a dozen times in the literature)?

    Hell yes.

  121. 18

    Ironically, I just mailed the notice to OED about the speeding ticket I received a few weeks ago. I wonder how many practitioners even realize that they now need to report any criminal conviction (even if for a minor traffic offense) to OED.

  122. 17

    Ironically, I just mailed the notice to OED about the speeding ticket I received a few weeks ago. I wonder how many practitioners even realize that they now need to report any criminal conviction (even if for a minor traffic offense) to OED.

  123. 16

    “If that happens, all I have to say to OED is ‘good luck with that … ‘”

    I think they are quite aware that their chance of successfully “proving” an “offense” that would merit “sanctions” are less than zero. My guess is that they are hoping the threat of having to defend oneself against a malicious investigation/prosecution will act as a deterrent. Of course, they are ignoring the practitioners’ obligation to follow the law and protect the clients’ interests. The realities of practice are not their concern.

    Some unfortunate practitioner will probably be made the test case. Let’s hope he/she fights back with the ferocity this type of thuggery deserves.

  124. 15

    David Stein says “Folks, let’s face it: the USPTO has declared war on the patent bar”

    I agree. And the reason is that the Patent Office has a horrible backlog due to mismanagement and/or poor management. And the best defense is a good offense.

    I would like to see a graph of the number of examiners with more than five years experience working at the Patent Office each year for the past twenty years. I would like to see a similar graph of the number of examiners who have left before spending five years, each year for the past twenty years.

  125. 14

    if there is a 102(b) in the IDS it should be made first action final. then applicants would read the references and not submit broad independent claims.

  126. 12

    “(3) Filing an application with one or more claims unpatentable over a combination of prior art references cited by applicant in the specification.”

    Riiiight. Because if an examiner can make some ridiculous leaps of logic to combine 47 different elements in 19 references to hold my claim obvious (and without showing any motivation to combine… thanks, CAFC!), not only should my client’s application be rejection, but I should be disciplined and maybe debarred.

    It’s true that Harry Moatz has warned the patent bar to take submissions seriously. But most of the examples he’s provided before (e.g., at AIPLA presentations) were clear violations of ordinary practice, like submitting 1,000 references in an IDS. This example threatens ordinary practitioners with sanctions for performing ordinary practice.

    Folks, let’s face it: the USPTO has declared war on the patent bar. Is it any coincidence that this warning closely follows the announcement of an annual “practitioner licensing fee” (starting at $118, but likely to ramp up) and swirling rumors of new USPTO CLE requirements?

    The USPTO has demanded for years that its client base submit fewer applications. It tried whittling down on continuations, but that effort failed. It has succeeded in throttling business method applications and cutting back on software applications. Now it’s getting personal… it is going to begin cutting back on the number of practitioners.

    I predict an upcoming decline in the USPTO bar exam pass rate, and/or newly increased requirements for sitting for the bar exam. Wait and see.

    – David Stein

  127. 11

    Is it really that difficult for practitioners to draft claims that aren’t anticipated by (1) the inventors own publications or (2) well-known inventions published more than 10 years ago?

    To me, it seems like the bare minimum that should be expected. The only reason I can imagine that people would get so upset about being sanctioned for their failure to clear this ankle-high hurdle is that they might actually have to think before filing a pile of worthless crap.

    I understand that this is more difficult in some fields than others.

  128. 10

    Still — this is all just bluster until OED actually tries to discipline a practitioner because, e.g., the practioner didn’t read the ENTIRE Japanese reference cited by an examiner in a counterpart Japanese applicatio, which was subsequently submitted to the USPTO in an IDS.

    If that happens, all I have to say to OED is “good luck with that … ”

  129. 9

    This is a backdoor attempt to force applicants to do the same analysis that they would have to do for the 5-25 Claim rules and for the over-20-references IDS rules.

    The USPTO is trying anything and everything to force applicants to do their homework, so to speak, before filing. This isn’t necessarily a bad thing (that applicants have some clue about patentability before filing). But the current law just isn’t tailored to forcing applicants to their homework.

    The USPTO should abandon their useless attempts to prove they have authority that everyone knows they don’t and, instead, lobby Congress for explicit authority.

  130. 8

    “Sanctions should be immediate and sufficient to put an end to the sloppiness, say, $1,000 fine per violation and a mandatory six month ‘cooldown’ period prior to any further Examination of the application.”

    Come on MM … we expect greater irrationality out of you than this. The fine should be $10,000 for every claim rejected based upon prior art cited by the examiner — immediately payable upon issuance of the office action containing the rejection.

    Moreover, an inventor forfeits one finger for each independent claim found finally rejected based upon prior art submitted by the inventor. Once an inventors is out of fingers, the inventor is legally prophibited from being an inventor and will be struck as a inventor from all current applications. However, if the (prohibited) inventor is a coinventor of a patent, that patent will be held invalid for not naming all of the inventors.

    The USPTO will televise the punishment (once a week) on pay-per-view. The proceeds will not go to funding more examiners — instead it will be used to fund the “Torquemada” branch of the USPTO — intended to ferret out practitioners and inventors who did not read all of the references. Tests will be given on each reference cited, and if the practitioner and/or inventor doesn’t pass, the reference will not be deemed not submitted, and the patent will be held invalid for failure of the practitioner and/or inventor to meet their duty of candor.

    Really, it isn’t hard to come up with these ideas — one just needs to get worked up in a lather over patents, inventors, and patent practioners, such as with Messieurs MM and Moatz, read a couple books on the punish practices in Stalin Russia as a primer and go from there.

    There are plenty of ways to muck up the patent system in the US — this is just one of many of them. Simple ….

  131. 7

    PDS, I agree with you. (For example, look at page 17 of the slip opinion in In Re DBC, No. 2008-1120, where the FedCir explained to the BPAI the error it made in claim interpretation.)

    “If only the USPTO applied the same standards (e.g., misrepresentation of material facts, lack of candor, neglect, “repeatedly making the same mistakes,” “wastes [client’s] resources,” “handling a legal matter without adequate preparation”) to themselves as they did their Examiners and the BPAI … they could cut payroll about at least 50%.”

  132. 6

    Ah …. hypocrisy is alive and well at the USPTO.

    Of course, none of this is new since much of what was stated in the presentation has already been stated before.

    If only the USPTO applied the same standards (e.g., misrepresentation of material facts, lack of candor, neglect, “repeatedly making the same mistakes,” “wastes [client’s] resources,” “handling a legal matter without adequate preparation”) to themselves as they did their Examiners and the BPAI … they could cut payroll about at least 50%.

  133. 4

    “Section (b)(1) requires that all statement made be believed to be true and that no statement “covers up by any trick, scheme or device a material fact.”

    Oops. They left out “willful ignorance.” That’s a big hole for most inventors to crawl through because “nobody knows what the claims really mean.”

  134. 3

    “Mr. Moatz provides several examples that could be seen as failure to make a reasonable inquiry: (1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors.”

    That seems very reasonable. I would go further and include any publication submitted by the applicant in an IDS, regardless of authorship, and regardless of when the IDS is submitted relative to presentation of the claim. I would also allow sanctions in instances where the claim reads on any device and method published in the art for more than 10 years prior to the filing of the application.

    Sanctions should be immediate and sufficient to put an end to the sloppiness, say, $1,000 fine per violation and a mandatory six month “cooldown” period prior to any further Examination of the application.

  135. 1

    “Burying a reference material to patentability among a large number of cumulative references.”

    There is a family of related applications filed in the U.S. and worldwide and litigation has just settled on one of them where additional prior art was brought to the patentee/applicant’s attention. There are about 100 pieces of prior art now. How do we cite them, fellow patent prosecutor bloggers?

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