Even after the Board of Patent Appeals and Interferences (BPAI) reverses an examiner’s rejection, the case is returned to the same examiner to ensure that the application is in condition for allowance. 37 CFR 41.54. At that point, the examiner is not allowed to make another search for prior art. However, the examiner may reopen prosecution and enter a new grounds for rejection “[i]f the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims.” MPEP §1214.04. According to the MPEP, reopening prosecution requires written approval of the Technology Center 
Director.
To get a sense of how this post-reversal process operates in practice, I looked at a set of 149 decisions from 2006 where the BPAI had reversed examiner rejections. In 80% of cases, the examiner accepted the BPAI decision and did not re-open prosecution. In these cases, a patent generally issued within nine-months of the BPAI decision (median of six months) unless the applicant caused some delay. A typical delay is seen in IBM’s Application No. 10/047,116. After winning an appeal on nonobviousness grounds and receiving a notice of allowance, IBM failed to pay the issue fee in a timely fashion. The patent finally issued after the PTO granted a petition to revive.
In the remaining 20% of the reversals, the PTO re-opened prosecution by offering new grounds for rejection. Occasionally the new grounds are suggested by the BPAI but more often they come from the examiner and fall under §101, §103, or §112. The current status of those re-opened cases from my 2006 sample can roughly be broken into thirds: a third of the cases were eventually patented despite the new rejection; a third of the cases are still pending; and a third of the cases were abandoned after the PTO continued to press its case. A handful of the pending cases are on their way to the BPAI for a second go-round.
Notes:
- One PTO insider takes issue with my statement that after being reversed “the examiner is not allowed to make another search for prior art.” The MPEP §1214.04 states that “[t]he examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.” According to the insider, that statement is not a prohibition on making a new search, but only a “discouragement.” In practice, new searches are conducted and, if new art is found the PTO will reopen prosecution.
Lowly, clearly you are atypical, but the typical US attorney is different from colleagues in the rest of the world, in my experience, when he wishes and instructs me to get “aggressive” with the Examiner, in respect of a claim that is futile. In Europe, trying to bamboozle an Examiner doesn’t do you any good. First, the Exr will spot it and the resultant file wrapper will hurt you. Second, even if Exr doesn’t rumble you, the Opponent, or petitioner for revocation, will, and post-issue, when your scope for amending out of the hole you have actively dug yourself into is much reduced. Whence come these self-destructive behavioural tendencies, if not from the distortions of the US domestic patent environment?
“Your question is rhetorical, right? I think we have already identified why. Most fundamentally, the environment at the EPO is not so overtly adversarial. It’s civil law, not common law. Representatives are patent attorneys, proud of their qualification, as opposed to attorneys-at-law, paid to fight. No court can tell the EPO it’s wrong. Myself, I have no idea how the USPTO can get to where the EPO is. Maybe other readers do.”
My question was rhetorical 😉 I would be very scared if the PTO had the power the EPO does and would NOT want the USPTO to work that way.
By the way, I don’t know why you think american patent attorneys are so different from european patent attorneys. I’m proud of my education, qualifications, and career. I prefer to work with the Examiner to identify the patentable subject matter in the application and have a set of claims directed thereto allowed, although I of course fight when I have to (which is most of the time at the USPTO).
“On another thread, there is a debate about the extent to which a PTO Exr should write claims for a pro se Applicant. Did your EPO Exr re-write your claim, or just nod towards technical features he/she saw in your app but not in the art?”
The examiner pointed out technical features he considers to be inventive over the prior art; he didn’t actually re-draft the claim.
….and it’s not so adversarial because Applicants at the EPO who knowingly over-reach simply set up their own post-issue funeral. So, in Europe, Applicant behaviour is self-policing.
Your question is rhetorical, right? I think we have already identified why. Most fundamentally, the environment at the EPO is not so overtly adversarial. It’s civil law, not common law. Representatives are patent attorneys, proud of their qualification, as opposed to attorneys-at-law, paid to fight. No court can tell the EPO it’s wrong. Myself, I have no idea how the USPTO can get to where the EPO is. Maybe other readers do.
On another thread, there is a debate about the extent to which a PTO Exr should write claims for a pro se Applicant. Did your EPO Exr re-write your claim, or just nod towards technical features he/she saw in your app but not in the art?
Max,
My love affair with the EPO continues. I have search report sitting on my desk right now. It contains a clarity objection together with a suggestion of how to over come it. It contains a rejection over prior art together with a suggestion of an amendment that would render the claim patentable over the prior art. (the examiner actually took the time to read the specification fully and identify the patentable subject matter). The art is good. The search report is well written.
Why in the world can’t the USPTO operate like this?
Oops. Sorry about the wrong attribution, Breadcrumbs. I see your point.
MaxDrei,
“Require that every Applicant be represented by an attorney at law, breadcrumbs?”
No – not my suggestion. That would be the suggestion of Bring it to the top! (aka 6/6k/6000). He of the history and grasshoppers and perpetually incorrect legal views.
Notwithstanding the last dig, I have not entertained the proposal of requiring all applicants to have professional representation. I can imagine that there would be some “due process” and “elitism” concerns with such a switch.
Require that every Applicant be represented by an attorney at law, breadcrumbs? Heaven forfend. That’s one reason for the outcry, that the US patent system is broken. In the rest of the world, Applicants are represented by a member of a real profession (patent attorney) that is (unlike lawyers) trained to exacting standards in the core skills of patent drafting, prosecution and litigation. The patent attorney profession has its own system of qualification by mega-tough examination that reflects the universal maxim of “quality” namely “fitness for purpose”. We examine those skills, to maintain those standards, because without them the integrity in our profession is at risk. In Europe, patent attorneys share with attorneys at law the right of audience in the courts, in patent cases. Since the EPO now covers 600 million Europeans, that right of audience is worth preserving. Finally, looking at the two contributions upthread, the two opposite sides of the same coin, could it be that a specialised patent attorney profession, of rank equal to the attorney at law profession, also helps the PTO to maintain high standards?
“Mike, I think you’re having the wrong argument, or at least those taking issue with your comments aren’t focusing on the real issues. The bottom line is that good, honest examiners have become frustrated with baseless, serial filings by patent attorneys that make facially invalid claims. This singular issue contributes mightily to the PTO’s backlog, and it taints the PTO at large. This is not to say there are no good PTO attorneys, nor do I mean to suggest there are no games-playing patent examiners. But, after two and one half years of being in the examination trenches on a daily basis, I can tell you that the general quality of filings has deteriorated markedly, to the point where moving cases through the PTO has become more about the googling and patience, rather than the actual merits.”
k?
6, I think you’re having the wrong argument, or at least those taking issue with your comments aren’t focusing on the real issues. The bottom line is that good, honest patent attorneys have become frustrated with baseless, serial rejections by patent examiners that make facially invalid rejections. This singular issue contributes mightily to the PTO’s backlog, and it taints the PTO at large. This is not to say there are no good PTO examiners, nor do I mean to suggest there are no games-playing patent attorneys. But, after ten years of being in the prep-and-proc trenches on a daily basis, I can tell you that the general quality of examination has deteriorated markedly, to the point where moving cases through the PTO has become more about the client’s checkbook and patience, rather than the actual merits.
“but there is not another ready option.”
I should add that yes there is another ready option to implement max’s suggestion. Require that all applicants be represented by counsel, or at least an agent. Seems a little much to me though, if they want to write a crppy app then they can reap crppy rewards.
Max waxing poetic early this morning I see.
“If you are an examiner, you should know what is expected of you a little more, and preach about how things should be a little less (or at least not be so wrong so much of the time).”
Go read your history, then get back to me with your take. Reflect a little also before you do. Hopefully you’ll have your eyes opened a bit to the what the government around you is today, and what the entire purpose of founding america was. Hopefully you won’t need to get back to me because you’ll be arguing the same side as I am. Go forth grasshopper.
Bread, yes, i grant you that it’s a tricky business, this “tempering” of my suggestions. I constantly see British influence at CAFC and SCOTUS level, and harbour ambitions to do my bit of influencing too, back from the cutting edge, at Patently-O level. So, I aim to be provocative, to provoke thought. I’m not as pessimistic as you. I think the courts of the USA are well capable of shifting, to adopt the best of what the UK has to offer (just as Europe has always borrowed extensively from American legal thinking). And, since the UK also has to operate within civil law mainland Europe, I like to imagine British jurisprudence making a major contribution to world-wide harmonisation of patent law, that is capitalist red, in tooth and claw, but also fair (as between inventors and competitors) and just too.
MaxDrei,
You seem to miss the point that “the taking” has already taken place. No one has said anything but to give the little guy his just due.
That being said, I recognize that the Office providing that help does seem a little like government over-reaching, but there is not another ready option. The supposed clarity of the Examiner (who knows the art field) seems preferable to that of an arbitray judge in construing a claim written by a pro se inventor. Please keep in mind that the different legal systems (Europe and US) cannot change overnight and try to temper your suggestions to those that might actually work in our legal system.
Bring it to the top!,
You my friend are in the wrong business. Once again, you seem to substitute your feelings for the law (based on your reading of history or whatever) for what the law proscribes (today, right now). If you are an examiner, you should know what is expected of you a little more, and preach about how things should be a little less (or at least not be so wrong so much of the time).
Bread, I thought it was Karl Marx who advocated taking from everybody according to their ability to pay, in order to give (education, health services) to everybody according to their need. Pro se Applicants are more needy than those represented by top law firms. The way I see it, socialist is when the PTO, on receipt of 50% fees gives more help to the pro se Applicant than to big corporate Applicant that pays the PTO twice as much. Our Patent Offices don’t go in for that sort of socialist thinking. I’m (still) surprised that yours does.
“The “taint” of government helping out someone still stems from the anti-patent “monopoly” burden that you are reading into the situation. You seem to indicate that patents are a necessary evil, that somehow are only begrudgingly given for the Quid Pro Quo – or perhaps I am guilty of reading too much into your argument.”
If you ever bother yourself to read the writtings on the dicussions that took place when the patent system was born then you’d hold this view as well. Matter of fact, if you don’t already hold this view you need to take some time to yourself to reflect on what you believe are your rights are here in America to pursue life, liberty and happiness. Perhaps you feel like it is a basic human right to be able to make objects to their heart’s desire? If you do, I agree with you. If you don’t, you’re out of your mind. The government has agreed to take away that basic right in order to foster the public good of advancing the useful arts if an enabling disclosure is submitted and the relevant portions properly claimed. It is the apps responsibility to execute the application, not the gov. I bet it wasn’t until the 60’s that the pto was officially supposed to help the small guy out, since the law wasn’t so convoluted as it has become. Though, they may have helped them out before that.
That said, I wish I had some small guys, simply suggest a claim. What, 99 out of 100 times they’d take it? Ez allow.
“but the court ruled that the only person who did not understand the invention and the claims was the Examiner”
Lol, and don’t forget the board. Chumps, they can’t even read claims, anticipation is anticipation. Rod /= pole. They just went easy on him because he’s a small guy trying his little heart out. If that sht came from IBM they’d laugh him right outside.
Well, Breadcrumbs, I fully agree with you that a patent system is a good thing, in that it secures publication of new technology 18 months after the filing date, in easily monitorable/searchable form. The issue of a 20 year monopoly right is the necessary quid pro quo, to secure the beneficial publication. Professional patent attorneys should get no unfair (DoI) help from the courts, to get them out of the deep hole of their own (incompetent drafting) making. Pro se should get no help either, from the PTO. Instead, judges (and Exrs) should construe claims according to the English Rule, namely: What was the Writer of the Claim Using the Language of the Claim to Mean (as seen through the eyes of a PHOSITA reading the claim in the context of the specification). Then everybody ends up being treated with fairness and justice.
MaxDrei,
It would be socialistic if the government took from the inventor that which was disclosed and could be recognized as patentable and did NOT help the inventor to what could rightfully be considered theirs. In this case of the MPEP that I cited, you have a public servant supposedly knowledgable in this aspect of the law merely helping provide an inventor (who supposedly lacks knowledge of the legal arena) with that which is rightfully theirs.
The “taint” of government helping out someone still stems from the anti-patent “monopoly” burden that you are reading into the situation. You seem to indicate that patents are a necessary evil, that somehow are only begrudgingly given for the Quid Pro Quo – or perhaps I am guilty of reading too much into your argument. I fully admit that I believe that patents are a good thing and that the government should Eagerly provide them to those so deserving.
Hi Breadcrumbs, thanks for the info. Not quite convinced by the Quid pro Quo argument though. Government taking upon itself the burden of pronouncing what monopoly Jim or Jane Inventor shall receive? All seems a bit “socialist” to me. I conclude that the cherished American dream that “The Little Guy Must Win Through” washes away any taint of socialism.
MaxDrei,
The US system is replete with directives to help the pro se inventor.
For example, MPEP 707.07(j):
“When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.”
So, evidently, the PTO is NOT supposed to be “neutral”, but is actually supposed to be helpful to the pro se inventor in obtaining a patent.
The philosophy of “the public being adversely affected” is a bit anti-patent as the trade-off is between disclosure and patent right. As the MPEP section above indicates, if patentable subject matter has been disclosed, the inventor has met her portion of the quid pro quo and the Examiner is obligated to be helpful and render a claim.
Mr Gur, you raise an interesting point: the degree of freedom that a PTO Exr has, to write claims for an Applicant. Let’s work backwards, from EPO disputed proceedings (opposition) where an Opponent seeks to convince an EPO tribunal that a claim is bad, and the patent owner that the claim is good. Often, a simple amendment of the claim in suit is enough to save the patent from revocation. But should the tribunal write that amendment? Now, back to the pre-issue prosecution, and a member of the public has written to the EPO to make the Exr aware of killer art. Again, is the Exr to craft the curative claim amendment? Lastly, Applicant tenders art found by the USPTO. Should the EPO Exr respond with asuggestion for a claim amendment? My point is: is not the PTO supposed to be neutral, as between Applicant, and the public adversely affected by the grant of a 20 year monopoly? Such neutrality does not sit easily with writing Applicant’s claims for him, or are you saying only in pro se cases?
Frustrated on January 1 and January 3
You seem to be frustrated because you don’t think Examiners should have to examine badly written claims and applications. I don’t agree with you.
The US allows pro se representation. You cannot expect an application or Office Action response written by a non-professional to meet the highest standards of clarity. Also, and unlike the EPO, claim drafting is not a prerequisite for receiving patent attorney or agent registration.
Maybe these both should be changed, but as an employee of the US government it is part of your job to examine badly written patent applications and to help the Applicant formulate clear claims defining the patented invention.
In this context we have the illuminated fishing rod application (in re Wheeler). Perhaps the claims and application were badly written, but the court ruled that the only person who did not understand the invention and the claims was the Examiner. That the search done was insufficient was proven by e6k who found numerous killer 102 art in a 10 second informal search.
You also write “Attorneys…would ask Examiners to tell them what is/are patentable in the spec”. This is perfectly legitimate. An Applicant knows what you are rejecting but not why you are rejecting. The Applicant is asking what you would issue to try to understand your rejection in order to expedite prosecution.
“examiners at the uspto are allotted ONE HOUR for a pct search.”
Not true.
Examiners get the same amount of time for a Chapter 1 PCT as a US App plus one hour to fill out the PCT paperwork — EXCEPT where the examiner has both the US App and corresponding PCT where the examiner gets 1/2 count for the PCT plus the paperwork hour.
In other words 1 count for a Ch. 1 PCT alone, 1-1/2 counts for a Ch. 1 PCT and corresponding US App. The reasoning is that at least the search and most of the reasoned statement is common to both.
For the Chapter 2, if it is demanded, the examiner gets one count plus one hour.
By one hour, I mean that one hour is subtracted from the examiner’s production hours for that biweek (one less hour of expected production).
It is very difficult to re-open after a remand. When you go to the board, the best art should be in the case. SPE’s don’t even like to ask the director to re-open. A new rejection shows incompetence for the office and the examiner. I have never heard of anyone re-opening in my TC in about 10 years of experience.
Also, there was some discussion about saving art in your back pocket. This is a very poor tactic. It is morally wrong and it is far better to put forth the best rejection. This can lead to an abandonment and also make the case far easier to examine. As an examiner, it makes it much easier to respond to amendments. If the best art is in the case, you don’t have to issue as many new rejections, just allow it, or copy and paste and respond to arguments. It makes the job much easier. I don’t know of anyone who uses this tactic, I only work with good examiners. If one of my examiners did this, I would refer the matter to the higher ups so they could be reprimanded.
step back “Carnac on what’s happened to the level of discourse at this blog site”
Thanks for your comment. The Patent Prospector called to let you know that your sandbox over there has been cleaned and is ready to be filled again with your reactionary poop.
Curious, you ask what EPO Examiners think of cases originating in the US. Well, EPO Examiners have no knowledge or experience of the common law legal world, so they find quite baffling the behaviour of US (and most English) patent attorneys. Vice versa, US and most English patent attorneys have had no exposure to the world’s default legal system (civil law, that of mainland Europe, China, Japan etc, as opposed to English common law) so find the behaviour of the civil law EPO quite ridiculous. Mutual incomprehension. Each thinks of the other: why do they think THAT’s important???? Consider, for example, the communication chain from an American Applicant for a patent from the EPO. If it chooses EPO counsel from Germany, if there is mutual incomprehension in the communication chain, then it’s between DE and US. But if Applicant chooses English counsel (common law background), then the mutual incomprehension(if there is any)will lie between GB and the EPO. Suggest you ask your questions of big pharma in house counsel, responsible for both the USA and the ROW. What do they report? But come to think of it, they’re probably not saying, at least in public, on a blog like this.
Carnac on what’s happened to the level of discourse at this blog site:
link to johnnycarson.com
Thanks JAOI(TM) — ha ha
maxdrei — what do EP examiners think about U.S. origin cases especially those where the US attorney is heavy handedly controlling prosecution? Are US attorneys too inflexible? too difficult to deal with?
referring to the article above: “n practice, new searches are conducted and, if new art is found the PTO will reopen prosecution.” My guess is that if this is good new art it should have be discovered during the examiner’s first or second search (unless there is some reason that it could not have been found) especially if it is better than the previous art the examiner was using to make his rejections. Applicants should not have to suffer through multiple office actions, the time, expense and delay of appealing the case, the reversal of the rejections, only for the examiner to produce better art (perhaps art that he was hiding in his back pockets in case of emergencies like this.)
“they don’t want to know about the patent publications of their competitors.” If that is true, shame on them, perhaps they do not have good or forceful patent counsel.
Tell me, those corporate clients who insist on designating the USPTO as ISA in their PCT applns, thereby avoiding an EPO search report, are they the same ones who want you to close one (Nelsonian) eye when you do the search for your US “clearance” opinion? Are they also the corporations who choose deliberately NOT to monitor the content of WO docs emerging 18 months after the priority date? What I am insinuating is that they don’t want to know about the patent publications of their competitors. Sometimes I think that the equitable tail is bigger than the body of law it hangs off of, and when it wags, the dog falls over.
I don’t understand why more companies accused of infringing “facially invalid” patents don’t take advantage of the reexamination process to have them invalidated, especially in this post Bilski and KSR era.
Lowly writes: “If I were appointed director of the USPTO, I would do every darn thing I could to get USPTO examiners the same search tools and the same training as EPO examiners. I would study the EPO and figure out why the examiner attitudes over there are so much better and figure out how to get USPTO examiners to feel the same way about their positions.”
You make some good points, Mr. Lowly.
JD “So if all of these patents are “facially invalid” and can be tanked in mere minutes, why do people want them?”
Well, ask yourself this, Darling: if I come to you without a patent and tell you to stop selling a competing product, how much does it cost you to respond? Now ask yourself the same question if I have a crap patent that literally reads on your product and I’ve taken a bunch of mo-rons to court already, each case ending in a settlement favorable to both sides.
The harder question for you to answer, I’m guessing, is why the latter scenario is not in anybody’s interest except for the patentee and his prosecutors. Not that you don’t *know* the answer, of course …
Examiners use bad reference(s) – got it
Examiners produce bad OA’s – got it
Examiners only care about counts and RCEs – got it
Attorneys/agents write bad claims – you got that?
Attorneys/agents don’t read the spec. – you got that?
Attorneys/agents amend claims with no support from the spec. – you got that?
Attorneys/agents would cancel all claims, add new claims, and say the reference(s) is/are no good – you got that?
Attorneys/agents are so disconnected with their clients that they would ask Examiners to tell them what is/are patentable in the spec. – you got that??
“just ask the EPO to do a search for you. Isn’t that what, de facto, everybody else in the world already does”
I don’t know anything about patent prosecution in the EU, but perhaps patent attorneys/agents here can kindly give patent attorneys/agents in the EU, not all, but some of your work and MONEY to prosecute some of your applications? Perhaps we would get better applications, right? What ya dink?
“Question: Take a claim that defines, with reasonable clarity, the inventor’s specific solution to a spelled-out-in-the-appln discrete technical problem. Does the USPTO search EVER find better art than the art brought to light by the EPO? What I’m suggesting to readers (and to the USPTO) is: scrap the search function. Instead, just ask the EPO to do a search for you. Isn’t that what, de facto, everybody else in the world already does?”
If only the EPO had the resources to do this 😉 If I were appointed director of the USPTO, I would do every darn thing I could to get USPTO examiners the same search tools and the same training as EPO examiners. I would study the EPO and figure out why the examiner attitudes over there are so much better and figure out how to get USPTO examiners to feel the same way about their positions.
btw, you’d be surprised. i have some large institutional clients who insist on designating the uspto as the searching authority for PCT applications (when they intend on pursuing protection in europe anyway). this practice boggles me. examiners at the uspto are allotted ONE HOUR for a pct search.
“And yes, I could do this all day. It’s that bad.”
That’s nice. But tell me, can you produce the evidence that would invalidate any of those patents?
Let me guess, you’re going to tell me you don’t have to. Because all of those patents will be tanked in 10 minutes in litigation. Right?
So if all of these patents are “facially invalid” and can be tanked in mere minutes, why do people want them? Why don’t people who are accused of infringing them simply hire you so that you can tell them, “Hey, don’t sweat it, it’s a facially invalid pile of doo doo, I’ll tank it in 10 minutes”?
Shouldn’t the use of re-exam be booming? Shouldn’t the PTO be issuing re-exam certificates cancelling all claims at an astonishing rate?
What’s the answer?
“Where you been, bro’?”
Malcolm, why do you behave so unprofessionally on this board?
Ha, ha, ha:
link to johnnycarson.com
Carnac “Bilski and KSR should cut down significantly on the number of problematic patents which issue in the future.”
But Carnac, we are told here day in and day out that those are the worst decisions in the history of patents. Where you been, bro’?
Here’s a claim filed by Google way back in the dark ages of June 2006:
34. A system comprising: means for receiving an input of one or more image search terms; means for searching a collection of keywords including keywords extracted from image text; means for retrieving an image associated with extracted image text corresponding to one or more of the image search terms; and means for presenting the image.
I’m not a software expert. But this is crap. You know it. I know it. Google knows it. Google’s attorneys know it.
Atypical? Nope. Very typical. Hilarious baloney in the description: “In one implementation, a store (e.g., a grocery store or hardware store) is indexed. Images of items within the store are captured, for example, using a small motorized vehicle or robot.” LOL!!!!! You can hear the prosecutor now, “But Examiner, our system uses a ROBOT!”
Nobody in 2006 could have predicted that motorized robots could be used to collect searchable images. Right.
And yes, I could do this all day. It’s that bad.
“And let’s not forget that the PTO sent out it’s top (mis)managers on a whirlwind tour in support of its claim examination and continuation rules, after receiving hundreds of comments pointing out the illegality of those rules, and heard from many practitioners and applicants. Did they listen? ”
Come on JD, you know the rules were specifically designed to get around and abuse the same type of holes in the law that you attorneys use regularly. The fact that a court of law would use the things that the rules are specifically drafted around to strike them down is just another indication that the courts have, in the past, been more propatent than proanalyzing the law. I’m hoping Chief J. Michael comes through for me. He did after all promise congress that if they keep their hands off of it he will take care of the issues. I don’t doubt that he could handle them. And the CAFC is off to a decent start with Bilski, though, remind me, wasn’t Michael dissenting? iirc he was dissenting that he would strike the patent down in a different way and would change the SS law considerably as well, in effect getting rid of biz methods/software. Then again, that decision is so long I can’t remember it all that well.
Gym time, I really have to go.
If the PTO needs to raise fees to provide improved service, then the fees should be raised.
(The fees should, however, not be raised to discourage patent filings and disclosures.)
Bilski and KSR should cut down significantly on the number of problematic patents which issue in the future.
“Maybe put a cap on foreign filings” and then foreign countries can put a cap on filings they receive from the U.S.?
“You are correct. But have they increased classification resources? Have they even returned them to pre-cut levels? I don’t think so. So even if they don’t have to take the blame for the cuts, they gotta take the blame for not restoring the resources. Either way, they’re just as complicit as their predecessors.”
Actually yes they did, or at least Mrs. Peterlin told me they did. They actually raised it.
Anyway, gtg, ttyl
And another to ponder:
6251017
1. A method for encouraging an individual to visit a designated Internet site prior to visiting one or more dirt-world stores, comprising the steps of:
a) obtaining a code from the individual at the designated Internet site, the code being printed on a supporting medium;
b) thereafter, receiving the supporting medium having the printed code from the individual at one of the dirt-world stores; and
c) providing a benefit to the individual if the received code matches the obtained code.
“Do you blame the long lines at the DMV because too many people want to obtain driver licences or want to renew their current licence?”
The “long lines” at the DMV are not analogous until they wrap 2x around the city and there is only one DMV for the whole country. At that point, yes, I would say that there is a definite problem that there are too many people wanting to obtain a drivers license so we should up the fee. We’re not your local come on down and get your everday needs agency PDS, you know this. If it were the case we’d have a local PTO for every little town. We exist as we do because there simply isn’t enough genuine innovation to warrant the allowance of greater demand on our services (by for example, lowering fees to 10$). The gov could fund the PTO entirely out of the general treasury you know, wouldn’t that promote disclosure better?
“(iii)”
Or (iv) when congress enacts AQS’s, and simultaneously creates a presumption of invalidity/burden to show validity. Following the exponential curve to its inevitable conclusion, the presumption of invalidity is the only way is it not? When the art relevant to any given topic is listed as being in the millions (or another VLN) what other choice do you have? The way I see it, and I think you will agree, the patent system as it exists today worked very well for when the arts were all very secretive and there was very little literature on any given subject. If an expert reviews that little bit of literature then it is reasonable to give a presumption of validity. If the art is humongous, and an expert looks at, meh, 5% of it, we’re getting into the realm of it being not quite as reasonable to grant a presumption of validity. What happens when the art grows again? The expert looks at .00000001% of the available literature.
Mark my words, the effects of exponential growth in publications is just now being felt in the patent system. It will get worse before I retire, just as it did during your career. It is inevitable.
“number of filings has just followed the growth of technology, which is exponential”
That’s the problem, coupled with that under the law, there is no patent protection available for much of the “growth of tech”. But applicants want it anyway.
“Instead of constraining applicants, corrective efforts should be focused on understanding why the USPTO cannot keep up.”
Be serious man. It is obviously the size of the problem. Why can’t the EPO keep up? Iirc they’re having a backlog just like us. Here’s an idea, let’s do 50k for nonnationals. They want to control a national interest (making a product) it seems reasonable to ask for a high fee. Why they’re even permitted to file in the first place is a little beyond me. Nonnationals can’t work in my country, and can’t go to school in my country without special permission, but hey, file a patent and you can dictate what I cannot make!
Maybe put a cap on foreign filings. Like Visa’s and green cards. Why has nobody done a paper on that idea? It is certainly decent.
“Considering that there hasn’t been a single patent discussed on this site in the past 2 years or so that Malcolm hasn’t considered to be facially invalid”
Darling, there are valid patents issued all the time, every week. Hundreds of them.
Obtaining one is not as easy as writing a claim and saying “Give me a patent.” But it needn’t be that much more difficult.
As you and I both know, most people aren’t interested in obtaining patents on the thing they invented. Most people are interested in obtaining patents that cover more than what they inveted because the worse thing ever would be to have a patent that just covered what you actually made. Why, someone could just “design around” your patent and compete with you!
So people get greedy. And there are attorneys who stroke their clients and convince them that they are entitled to the world and, if they just keep ponying up and appeal, appeal, APPEAL! then they can eventually get the patent on the method of automatically storing a computer file in an alphabetized folder when you triple-click on an action-responsive pixel associated with said file.
This crap needs to get stamped out of existence and I, along with many others, really don’t care how it happens. The PTO can drag its feet on examining that crap. The PTO can do crappy searches on these apps and then better ones later. Whatever. The bottom line is patents on such broad bogus crap have to stop issuing at a detectable rate, rather than at a rate where every week you can find a new one without even trying.
The position of some folks here seems to be that if the PTO would simply perform examinations more efficiently and consistently, that everything would be cool. That’s incorrect. There needs to be an increase in prejudice and suspicion directed at applications in certain technology areas because, historically, the PTO has taken a bizarrely generous view towards computer-implemented and/or software crap.
And then there’s the business method bullcrap:
United States Patent 6896521
1. A display for vending toilet training materials comprising: a supply of at least two different types of toilet training materials, each type of toilet training material associated with at least one of a plurality of toilet training steps; a display structure having at least two regions, each of the regions associated with one of the toilet training steps, the toilet training materials being housed within the region associated with the corresponding toilet training step; and insignia within each of the at least two regions identifying the corresponding toilet training step.
“But the facts are that in the last five years the USPTO has granted more patents than in any previous five year span in history.”
I would certainly hope so, Malcolm, given their increase in budget and the increase in the number of examiners.
“Lobby congress and stop preaching to the choir.”
Hopefully Obama will appoint competent PTO management so we do not need to lobby congress. Rather, PTO management will make these changes on its own.
“Do you blame the long lines at the DMV because too many people want to obtain driver licences or want to renew their current licence?”
In part, certainly. Then again, you probably believe that it’s your constitutional right to drive a car.
pds “As I’ve noted a couple times already within the last week or so …. the purpose of the patent office is to encourage disclosure. ”
False. It’s to encourage disclosure of patentable inventions.
“The number of filings is NOT the problem.”
I guess it depends on what you think the problem is. But the facts are that in the last five years the USPTO has granted more patents than in any previous five year span in history. And an astonishing number of the patents are crap, i.e., invalid, obvious garbage.
The number of filings is a symptom of the problem. People see all that garbage and then they hear about some garbage patent holder hiring an Aspen attorney to help him grab some cash from a deep-pocketed corporation. And round and round we go.
Given this indisputable reality, the motives of certain prosecutors who comment here endlessly on how the PTO is ripping them off and/or “denying their rights” are easily deduced. They believe they are entitled to a piece of the action. After all, ten years ago nobody really paid much attention. It was an open gold mine for “geniuses” like Lemelson to plunder. The idea of throwing cold water on the party just rankles these commenters, most of whom refuse to admit what everyone knows: the typical applicant for software and computer-implemented patent applications is a societal bottom feeder who hasn’t invented dick.
“number of filings has just followed the growth of technology, which is exponential”
That sounds nice. Too bad it’s self-serving gobbledygook which means nothing. Besides, there is nothing remotely “technical” about the crap patents that are flowing out of the most active areas, telecom and “information technology.” Or maybe you consider moving the chairs around on a ship’s deck to be “technical” as long as the final arrangement is “novel” or if you are wearing a pink wetsuit while you do the work.
“I know I know, that is a huge blunder which yes, I do certainly blame them for (although, iirc the slashing started before the people you consider (mis), Dudas et al.)”
You are correct. But have they increased classification resources? Have they even returned them to pre-cut levels? I don’t think so. So even if they don’t have to take the blame for the cuts, they gotta take the blame for not restoring the resources. Either way, they’re just as complicit as their predecessors.
“You keep complaining about this, but all the efiled amendments I get show up the day of.”
I keep fairly close tabs on my cases. And it takes weeks for responses to get docketed to teh examiner. There is simply no need to have responses filtered through the LIE’s (i.e. docket clerks) anymore, yet that is precisely what they are doing.
The PTO’s docketing practices are from the stone age. There is tremendous opportunity for pendency reduction if the PTO would just listen to those from the outside who can teach them Bibles of truth on docketing.
“How better to search than classification (besides me being mr. google?)?”
You know that. I know that. So how come PTO (mis)management doesn’t know that?
“Lobby congress and stop preaching to the choir.”
Are Mr. Dudas and Mr. Doll in the choir? Didn’t the PTO commission a study of the production system a while back? What was the result of that study?
LOL
“Personally I believe that the problem is probably that it is a small minority of attorneys who are vocal about the poor search etc.”
Not so. I have attened many meetings (IPO, AIPLA, BADC, etc.) where PTO (mis)managers do their little song and dance, and they receive comments at every meeting about problems at the PTO. And they nod their heads and say, “Hmm, that’s interesting. I’ve never heard that before. I’ll look into and get back to you.”
Disingenuous at best. Bald faced lies at worst. Take your pick.
And let’s not forget that the PTO sent out it’s top (mis)managers on a whirlwind tour in support of its claim examination and continuation rules, after receiving hundreds of comments pointing out the illegality of those rules, and heard from many practitioners and applicants. Did they listen?
This is worth a few minutes; it’s pretty funny, and sad but true, from Uncle Jay:
link to youtube.com
Malcolm, why don’t you do something like Uncle Jay?
Question: Take a claim that defines, with reasonable clarity, the inventor’s specific solution to a spelled-out-in-the-appln discrete technical problem. Does the USPTO search EVER find better art than the art brought to light by the EPO? What I’m suggesting to readers (and to the USPTO) is: scrap the search function. Instead, just ask the EPO to do a search for you. Isn’t that what, de facto, everybody else in the world already does?
” filings have blatantly already gone through the roof of late”
— number of filings has just followed the growth of technology, which is exponential
“After having said “yes” and “yes” to the above, how can you possibly say “no, the no. of filings is not the “problem” (i.e. the root cause of the backlog) when filings have blatantly already gone through the roof of late? Ridiculous good sir, ridiculous.”
Do you blame the long lines at the DMV because too many people want to obtain driver licences or want to renew their current licence?
Only companies that ignore their customers blame their customers for their own problems.
People used to say filings have gone “through the roof” 10 year ago. The simple facts are with (i) more people; (ii) greater awareness of the value of intellectual property; and (iii) the ever increasing growth in all-things technology, filinge will be going “through the roof” for now until we all retire or some world-wide catastrophic event. Personally, I would prefer that we all get to retire, so we should figure out how to deal with the new filings instead of discourage filings.
As I’ve noted a couple times already within the last week or so …. the purpose of the patent office is to encourage disclosure. Weeding out ideas based upon the cost to file is not “encouraging” disclosure. Instead of constraining applicants, corrective efforts should be focused on understanding why the USPTO cannot keep up.
“It was your beloved PTO (mis)management that decided to slash funding for classification. They thought spending hundreds of millions on a first generation EFS system that resulted in about all of 4 applications being electronically filed was a better use of the money. ”
I know I know, that is a huge blunder which yes, I do certainly blame them for (although, iirc the slashing started before the people you consider (mis), Dudas et al.)
“They can’t find anybody to program their system to automatically docket an amendment to the examiner the same day it’s filed by EFS? ”
You keep complaining about this, but all the efiled amendments I get show up the day of. Seriously, I have an interview, and it shows up in my rejected tab the next day, which is usually when they filed it. Problem is, I’m guessing, that the doc isn’t showing up on my amended tab, but just because your examiner isn’t being bothered to look for your app and address it then that is hardly mgmt’s fault.
“The differences between USPC and IPC alone cannot explain the disparity in the quality of searches either. ”
From my own, and a whole lot of exmrs around me’s exp, yes it can. It is amazing how you can spend infinite time looking through subs in our subs and then find ONE IPC sub that has only 3 patents in the whole sub and all relate directly to what you want. AMAZING. Classifying sht where it goes in a logical manner. Heck, I could just cite the subclass and save myself the time of the rejection the art in the subs has been so good in some cases. How better to search than classification (besides me being mr. google?)? It is the ultimate in comprehensive searching. But only if performed near flawlessly, from classification of the docs all the way to the search.
“And the “one time fits all” examiner production system is a huge problem. ”
Lobby congress and stop preaching to the choir. You guys are pretty rich, found a lobbying PAC or something. Personally I believe that the problem is probably that it is a small minority of attorneys who are vocal about the poor search etc. And they are dismissed as malcontents that any system this large always has.
“…’i.e. the root cause of the backlog”
1) Because I know how to do a root cause analysis (Here’s a hint – If the Office followed the LAW, including pertinent presidential orders, they would also find the root cause)
2) Because (thankfully) I have a better grasp of logic than Examiner 6000/6k/6/Bring it to the top!
3) Because filing is the front end of the quid pro quo – the benefit in a cost/benefit analysis is already obtained
4) because blaming the backlog on the damm customer is the easy out. Perhaps you’ll get lucky and we’ll Hundt the system and lay off the Examiners.
Or perhaps the answers are “yes” and “no”, if the Office was smart about it. The point being that instead of blaming the input, start spending the right capital (including brain power and channeling efforts away from power grabbing) into handling the increased input. Your logic is analagous to having a millionaire say “I have too much money, I better find a way to make less.”
“Filings in and of themselves are not the enemy.”
Oh really? What makes you say that? Let’s presume they lower the filing fee to 10$ for everyone. They then conduct a massive public education campaign to tell everyone that the PTO wants ideas! ONLY 10$ TO GET IT PROTECTED! Do you not believe that filings would go through the roof? Do you not believe the number of filings would then be a problem?
After having said “yes” and “yes” to the above, how can you possibly say “no, the no. of filings is not the “problem” (i.e. the root cause of the backlog) when filings have blatantly already gone through the roof of late? Ridiculous good sir, ridiculous.
6k,
It was your beloved PTO (mis)management that decided to slash funding for classification. They thought spending hundreds of millions on a first generation EFS system that resulted in about all of 4 applications being electronically filed was a better use of the money.
Once they realized that the first generation EFS system was a total loser, they went out and licensed the EPO’s system.
Now they have a pretty good EFS system. And they bog it down with 1970’s era docketing practices and clerical staffing. Utterly ridiculous. It still takes weeks for responses filed by EFS to be entered and placed on the examiners’ dockets for action. Because instead of shuffling paper documents around, they have clerks shuffling electronic documents around. They can’t find anybody to program their system to automatically docket an amendment to the examiner the same day it’s filed by EFS? They can’t get any one of the numerous commercial docketing software vendors to come in and tell them what types of docketing actions they provide for law firms and what they could do for the PTO? They can’t assembly a commission or panel of volunteers from the patent bar and large corporate filers to review their docketing procedures and suggest improvements? Of course that would require actually listening to their customers. Wouldn’t want to do that. Much easier to just blame them for all of their problems.
Which goes back to what I’ve been asking: Why doesn’t PTO (mis)management go to the EPO and ask for help? Surely they (the EPO) know something that PTO (mis)management does not. Like I said, PTO (mis)management has been told over and over and over and over and over for years that the EPO does a better search. And they’ve covered their ears, stomped their feet, and cried, “Nuh-uh!!!! We’re not listening!!!!” If they won’t listen to us, maybe they’ll listen to one of their fellow patent offices.
Fools.
The issue, though, is not simply fees. The PTO has enough fee revenue to run its operations. The issue is how they choose to spend that money. The current crop of (mis)managers has shown that they have no idea what is important and should be well funded. Their expenditures on clerical staffing, for example, could be drastically reduced if they automated most of those functions. Which they could easily do.
The differences between USPC and IPC alone cannot explain the disparity in the quality of searches either. There’s a serious training problem. And the “one time fits all” examiner production system is a huge problem. There’s no amount of classification resources/funding or training that will improve searching if examiners don’t read the application and attempt to search the claims on nothing more than key words.
The classification mess, the out-dated, morale-sapping production sytem, etc. are well known problems. PTO (mis)management has known about them for years. Their “customers” have told them so. Complained loudly about them. And PTO (mis)management has simply ignored the problems, the complaints, the suggestions for improving their clerical processes and training programs, and decided it’s easier to blame patent applicants and attorneys for the 1.2 million case backlog, write 129 page rule packages, spend time fighting sure-fire-loser court battles, and then issue a report declaring that they’ve achieved 100% of their goals, and have performed record breaking quantity at record breaking quality.
But hey, according to Malcolm, I don’t know anything about prosecution despite the fact that I was an examiner for 9+ years and have been a practitioner for 9+ years. Maybe he can tell you why the EPO does a better search. Then again, maybe he can’t because according to Malcolm the only problem at the USPTO is that they are issuing facially invalid patents. Considering that there hasn’t been a single patent discussed on this site in the past 2 years or so that Malcolm hasn’t considered to be facially invalid, he’ll probably tell you that the USPTO is doing a swell job of searching.
The number of filings is NOT the problem.
While I am a patent practitioner and not an examiner, from what I read on the Internets and what I hear from others including examiners, the PTO classification system is decades behind the times and this reduces the efficiency of examiners and the examination process.
(It is another example of how our country’s infrastructure is in need of repair and updating)
“…and it barely slows down filings”
Filings in and of themselves are not the enemy.
let’s try to eliminate this pernicious mindset!
If we do increase fees to 20k or so and it barely slows down filings then the first thing we should do is hire retiring examiners to do nothing but read through the art a few hours a day and classify sht where it actually goes. And also come up with a classification scheme that doesn’t confuse every other user thereof.
“Paul, can you elaborate a little? Why do you think the difference in fees contributes to the difference in search results?”
JD you know their classification is teh awsom compared to ours that was left without funding for many years. We need about 3x the number of subs we have, and we need everything broken down into them. Oh, and I should add, the sub’s names should fin make sense. You look at some of our subs names and they look like someone was writting greek. Look at the EU subs and they’re written in english for the most part.
I have a small stack of refs sitting beside me that I’ve found while looking at a case that is not the case that the ref is pertaining to. That’s right, a “random” looking through the art found better refs than a focused search. Y is that?
“A key reason that comparisons of EPO and U.S. prior art searches are unfair is the vastly higher fees for EPO applications, their prosecution, and their maintenance even while still pending.”
Paul, can you elaborate a little? Why do you think the difference in fees contributes to the difference in search results?
EPO protection is very expensive especially with a weak dollar.
Well Paul, over this side, and in ME/EE (as opposed to pharma) it always seems like the expensive jurisdiction is the USA. How many unnecessary EPO countries are you designating, how many unnecessary claims are you filing in the EPO, how many unnecessary pages are you translating into umpteen pointless European languages, and how many unnecessary attorney hours are you paying? Consider for example what Toyota Motor does. I beg to doubt your “vastly” designation. As to prosecution “delay” how often have you requested PACE, expedited handling? Most Applicants actually do not want early issue. Given that annuities are payable in every national Patent Office, but only after the EPO issues the patent, that compensation for infringement on the other hand runs from WO publication, and that issue cuts off your chance to sculpt the claims to an infringement, why is it, pray, that you actually want early EPO issue?
A key reason that comparisons of EPO and U.S. prior art searches are unfair is the vastly higher fees for EPO applications, their prosecution, and their maintenance even while still pending. Furthermore the total EPO time delay from filing date to national issuance is often even worse than that of the USPTO.
“On the contrary, pds, more than most commenters here, I am willing to discuss practices that only prosecutors would know about.”
MM — stop deluding yourself, the practices that you talk the most about (i.e., bowl movements and the results thereof) is something that everybody knows about.
Too bad Dennis cannot rig one of his polls to ask the following question from patent prosecutors.
Who has demonstrated more experience in patent prosecution:
(i) Malcolm Mooney
(ii) the lesser of David Boundy or John Darling
As long as Dennis could ensure that only patent prosecutors could answer, I’m am 95% sure of what the answer woud be — in a landslide.
If you are a patent prosecutor, which I highly doubt, you would be prosecuting biotech patents — which are unlike most other patents. Moreover, because biotech attorneys are rare, you’ve probably only trained with a handful (at best) biotech attorneys in your career. Anyway, being a biotech attorney typically means less training and a lower quality of training as well as dealing with technology and types of arguments that, in many instances, aren’t typically found in the mechanical/electrical arts.
I made these same comments about you a couple years ago, and nothing I’ve read so far from you has changed my mind. As far as I’m concerned, I’ve got 1 year assocites that could prepare better arguments than you when it comes to 90% of the office actions that the USPTO puts out simply because they know how to argue an electrical/mechanical application — you do not. It appears that they only advice you would give to a client is that they “should abandon this piece of doo-doo.”
MM — let’s be perfectly frank, you don’t show much “prosecution insight” when your response to every article that mentions a particular patent is that “this patent is obvious crap.” For all your “insight,” I could teach my 8-year old nephew, in about 5 minutes, to be a standin for you on this board if you ever want to take a vacation.
“It’s worthless, non-informative, self-serving drivel. We’ve been through this before.”
Malcolm, as has been noted on these boards, you are stale. Even the deja vu of your writing descriptions of your own postings are getting stale.
Mr Tazistan, I suspect that your EPO representative (ie prosecutor) let you down. I have to tell my US clients all the time, that claim wordings that are optimal for the USA are seldom optimal for the EPO, and vice versa. Means of evidence that you need for a common law jurisdiction are useless in a civil law environment, and vice versa. What US Applicants need for the EPO is somebody who can swim (and not drown) in both those legal oceans. Do you want to tell me the EPO app number and I’ll report back on this thread? Sorry, I’m unwilling to take the risk of revealing my real identity on this open thread. Maybe we can use Dennis as a shut-out link for private correspondence. Any other ideas?
Mr Boundy, stats exist, on the proportion of cases that go through the EPO appeal instance undisturbed, but they tell me only what I know already and I lack the time or the motivation to run around looking for them. Maybe somebody at the EPO can help you, if you ask them directly and nicely.
I agree with this too, David: ” the production count system and several other compensation incentive systems are almost designed to encourage the kinds of examination that lead to problems”
David Bounty says “the PTO wastes a large fraction of its time generating and defending indefensible rejections”
I agree
Just to clarify something –
The moral/competence lapse behind bad Office Actions is not the fault of individual examiners (with a handful of exceptions – one in 2183, one in 3696).
It’s the fault of PTO management –
– the production count system and several other compensation incentive systems are almost designed to encourage the kinds of examination that lead to problems – any competent manager would have fixed these a decade ago
– John Love and James Toupin are the two most staggeringly incompetent lawyers I have ever talked to (well, leaving aside a couple 1st-2nd-3rd years that washed out), have the most cavalier attitude toward investigating facts before acting, and have the least respect for the rule of law.
For example, why has the PTO not implemented the instructions from the President to all agencies? I have discussed this memo in conversation or writing with both of them. Why, Mr. Love and Mr. Toupin, has the PTO refused to implement the President’s instructions? Why did you state, in the August 21 2007 final rule notice, that you would *not* enforce PTO procedure relating to examination, when the President instructed that you must?
link to whitehouse.gov
PTO management, catch a clue – this memo is not only something you are legally obligated to implement, it is as close to a “magic bullet” as there is (along with deferred examination) to fix the PTO’s practical problems. What’s your problem with seeing that the laws are faithfully executed?
If the two legal policy heads for the PTO are as incompetent and divorced from factual reality as was on display at the Tafas oral argument, it’s no wonder that the PTO’s legal decision making is so error prone.
Malcolm does have a point – bad patents are being issued.
I’d like to suggest a major cause – the PTO wastes a large fraction of its time generating and defending indefensible rejections. If first examinations were solid, if the examiner consistently found and applied the best art, and wrote office actions that conveyed the examiner’s view on all required issues, applications that should be allowed would be allowed, applications that should be abandoned would be abandoned. Instead, because too many Actions communicate uncertainty and ambiguity instead of the examiner’s view (or perhaps communicate the examiner’s failure to have consisered an essential issue), several hundred thousand applications recycle for rework.
Consistent well-stated Office Actions are crucial to curing the PTO’s backlog –
– if the rejection has a solid basis, I amend, and we move on
– if the rejection has an error, I can diagnose it, explain it to the examiner, and we can move on
– if the art doesn’t meet the claims, then allow the application, instead of generating a baloney Action
– if all rejections are written out carefully, the way they’re supposed to be, and were, more often than not, before 2000 or so, then the examiner will have invested sufficient thought so that we don’t get Office Actions that omit consideration of dispositive claim language, map a single claim term to several different elements of the prior art, treat the claims as disembodied bits and pieces ignoring the interconnections, etc. that we get so often these days.
Instead, what happens all too often (since IFW in 2003-04 elimated the need for the examiner to type the claims – and therefore to think carefully about every word?) is a pattern where a solid majority (well over 2/3 in my practice) of first Actions are tragically incomplete. Once in a rare while, it turns out that the refernece really did meet the claims – but the Action was so poor that that wasn’t communicated. Far more often, the error is clear – but the examiner digs in his/her heels defending a crappy rejection, instead of moving on to either find good prior art, or allowing the application.
The worst art units? The ones where sloppy and incomplete Actions are the solid majority of all Actions? Where examiners and SPE’s refuse to follow “must” instructions in the MPEP, and make up new requirements out of thin air against applicants? In my experience, 3690 and one particular examiner in 2183.