Changing the USPTO Count System: Incrementally

USPTO Director David Kappos has announced a set of proposed changes to the patent examiner count system. The proposed changes are not dramatic, but they may have some incremental benefit of reducing RCE churning (see below). The proposal also provides for an additional hour of examination time per case with the expectation that the added time will be used up-front in an interview or in preparing a quality first office action on the merits (FAOM).

The Count System: Under the current count system, examiners receive “counts” for various actions and must meet a certain quota every two-weeks. (The quota varies according to art unit and examiner grade.) Under the rules, one count is awarded when the examiner issues an initial office action rejection and a second count is awarded when the case is disposed-of. Because no counts are awarded for second or subsequent office action rejections, the current system is supposed to encourage examiners to quickly move a case to its conclusion.

RCE Churning: When an applicant files a request for continued examination (RCE), the examiner receives a count as a disposal. At that point, the current count system treats the application as new – thus the examiner can receive a second count for mailing another office action rejection and one more count for eventually allowing the application to issue as a patent. Thus, by “forcing” the RCE, the examiner receives four counts instead of only two. (Note – “Forcing” is in quotation marks because examiner’s do not actually applicants to file RCEs.) A similar practice takes place with restrictions where the examiner pushes an applicant to divide a single patent application into multiple applications. In that scenario, the examiner can at times earn multiple counts for reexamining what are essentially identical inventions.

The proposed package would make some modifications – focusing especially on RCE practice. Under the proposal, the first RCE would only be worth 1.75 total counts (rather than 2) and any subsequent RCE can only be worth 1.5 counts. Examination of the original application would still be worth the same 2 counts, but the distribution is slightly shifted. Under the proposal, the first office action on the merits (FAOM) would garner 1.25 counts; a final rejection earns 0.25 counts; and eventual disposal leads to 0.5 more counts. If no final rejection is issued, then the disposal would be worth 0.75 counts. Thus, examiners will still receive credit for examining RCE’s – just less credit than before. The proposal does not appear to address the restriction practice.

Encouraging substantive interviews: The proposal would also regularly grant one-hour of “non-examining time” for preparing for and conducting interviews. This would effectively reduce the examination quota of examiners who conduct interviews.

Examiner Mistakes: The PTO management appears to have come to an agreement with the examiner union POPA on these reforms, although the membership will still be asked for their approval. Interestingly, the documents distributed by the joint task force appears to show some changes on the review of examiners for mistakes in office actions. Notably, the proposal would not allow an examiner to be negatively treated “based upon a single clear error in Patentability Determination” even if the examiner has already received a warning for prior mistakes.

The proposal also includes a new “formal policy” of “working on the earliest filed applications on [an examiner’s] Regular New Case docket first.” This would block the game played by some examiners of cherry picking easier cases to examine earlier.   

Documents: briefing_for_corps_final_draft-093009.pdf

237 thoughts on “Changing the USPTO Count System: Incrementally

  1. 237

    Rule of Nine Proportionality “His proposal is a first step to reforming the count system, but if something is not done to INCREASE THE COUNTS proportional to the AMOUNT OF TIME it takes an Examiner to dispose of a case quality will suffer”.

    You have a very serious flaw in your recommendation. I love your idea, but examiners will work like snails if they know they will get counts proportional to the amount of time to dispose of an application.

  2. 236

    MM- Why do I wish that I could allow more? It would mean that I would see more novel/ non-obvious applications then the stuff that I normally see.

    I wonder how many attorneys would appreciate me increasing my allowance rate? Would these same attorneys scream or laugh at the bad applications that I allow because of that increase?

    Oh, but they say, my applications are different. The USPTO is large enough and the TCs are varied enough that their applications are probably different. I happen to work in a crowded art, you probably practice in an area that is not.

  3. 234

    “As a matter of equity, he should not raise RCE fees until he significantly reduces the BPAI backlog.”

    Applicants would have to come to the table with clean hands before they get a remedy in equity. Fat chance of that ever happening.

  4. 233

    Examanona: “I don’t believe that every application should receive a patent. I wish that they did. I wish that I could allow more.”

    Why?

  5. 232

    Your issue appears to be a matter of training. I wish that we had more training. Lucky for you and your peers, the PTO training budget has been cut.

    I believe that the current system and the future system are both fundamentally flawed. I agree with Noise above Law regarding that. The new system will prove true the idea of unexpected consequences.

  6. 231

    “Management already disclosed the more arduous task K is up to. He wants to raise your fees by about 4x. And even more for RCE’s”

    As a matter of equity, he should not raise RCE fees until he significantly reduces the BPAI backlog.

  7. 230

    “The fee increase are NOT the system reboot that I am talking about.”

    No, they’re not, they’re the system reboot that K is talking about.

    Try to stay up to speed K?

  8. 229

    Sorry 6, your ignorance is in the way again. The fee increase are NOT the system reboot that I am talking about.

    Try to stay up to speed m’K?

  9. 228

    “I am looking forward to the separate analysis by Lord Kappos on the larger overhaul of the system including quality metrics. The current reconfigure of the counts is nothing more than a band aid, a temporary “fix”, until the larger and more arduous task is addressed.”

    Management already disclosed the more arduous task K is up to. He wants to raise your fees by about 4x. And even more for RCE’s. Funny enough, that just happens to be the suggestion I made.

  10. 227

    Thanks curious, even through the rambling, I got a better picture of where you are coming from and can identify with your thoughts.

    Examanona does have a point. Unfortunately, it may not be the point he is trying to make. “blaming” is crucial if the area where the breakdown is to be found and fixed. This will not be an easy task, and the Office in the past preferred to try to change the law rather than face the task.

    Treating all applications like a generic average and treating examiners like cattle, herding them through examination of applications of the non-existent average count is the problem. It is a management philosophy problem. It is the structure of the game. “gaming” the system is inevitable as long as the system is managed like it is.

    On other threads I put forth a radical reworking of the system that had as its premise the treatment of an application on its merits. If you look at the jurisprudence of the anti-brightline rulings of the Supremes, you will see the origins of that premise.

    I am looking forward to the separate analysis by Lord Kappos on the larger overhaul of the system including quality metrics. The current reconfigure of the counts is nothing more than a band aid, a temporary “fix”, until the larger and more arduous task is addressed.

  11. 226

    Examanona: I am not angry, frustrated maybe, but not angry. I have been in private practice almost 30 years so your explanation to me of how the patent examination system works was really not needed. I also know when to recommend to a client that his invention is not patentable and his application should thus be abandoned. . Yes, I know that your job is tedious, demanding and challenging. I know that you do not have all of the search tools that you should have, and that you do not get the personal mentoring you should get, especially with so many experienced examiners now working from home and not from the office down the hall from yours. I have inherited cases prepared by others and thus have also had to handle poorly prepared applications.

    I have watched the examination process slowly break down the past six or so years. Ten or twenty years ago I would sit down with the examiner in his office or over the phone and be able to work out most issues. I always send in proposed amendments and/or arguments days before the interview. Most examiners are not as willing to work with attorneys now at interviews, or later change their mind on agreements reached.

    I filed two sister divisional applications nearly on the same day, and the same examiner examined the more difficult one almost two years after the easier one. (The PTO should have a procedure whereby the examiners cannot delay examining the more difficult cases.)

    Every pre-appeal conference I have had (usually after an RCE or two), the PTO has changed its mind, withdrawn the rejections and then issued new rejections over new art. My client asks why the PTO continued to issue defective rejections over and over despite our clear arguments before we filed our appeal, and also why the PTO did not find the new art in the first, second or third OA. Then in a couple of those cases, the client correctly questions how the new art is applicable. Believe it or not, but it pleases me (more than my client) when I see solid rejections because I know the examiner is doing his/her job. And when I see those rejections, I amend to overcome them (or when justified recommend that my client throw in the towel).

    I would appeal more poor final rejections but because the BPAI backlog is so horrendous my client will be without a patent for years. This can be fatal where the product has a short commercial life.

    Enough rambling, it is getting late. Thanks for listening.

  12. 225

    Oh curious, why are you so? Your attitude, seems to show anger.
    “why shouldn’t applications be given priority numbers by type and filing date and examiners be punished if they take them out of order?”

    If you punish people, they will avoid the punishment. Occasionally you get the results that you desire.

    I am very much trying to be open. I see lots of bad examiners and lots of bad attorneys. No need for me to pick one side as saying that it is worse. There are many on this thread that will do so for me.

    My problem with the RCE conversation as broje states is that there is an assumption of wrongdoing. Have you ever thought about going through the reasons why? I am not talking about blame, I am talking about discussions of process flow.

    For example, an application is presented with broad claims. The Examiner matches the claim breadth with broad art. The attorney amends around the presented art with narrower claims.

    Where is the problem here? The problem could either be with the attorney or the examiner. You pick.

    You could say that the broad art presented is garbage. Fine. But so were the claims.

    What happens next? Many attorneys repeat this process over and over. RCE land. Narrow a little more, reject a little more. (Before you yell at me, ask me what I do in this case.)

    Oh, yeah, I have read and heard all the arguments at this point also. I still feel that both sides are culpable here also.

    For example, I have tried in interviews to get the attorneys to discuss the invention and not the presented art. Many times attorneys will just focus upon what is presented even when I tell them that their suggested amendment is obvious.

    I also know of examiners that are poor at responding to interviews and don’t offer suggestions.

    I don’t believe that every application should receive a patent. I wish that they did. I wish that I could allow more. I am not being prevented by management but more by my own personal ethics.

    Do attorneys really want me to allow everything that passes over my desk? Should we as examiners tell attorneys to give up all hope?

    Please stop blaming. The system is broken and the new system will be worse. We are people that respond to rewards and punishments. The new system is all about the punishment with little reward.

  13. 223

    MM said, “And just for the record I’ll say it again: ANY system that rewards Examiners for allowing claims is a broken system. It’s like rewarding food inspectors based on the number of “approved” stamps they put on jars of baby food. Insane.”

    Would you also say that any system that rewards Exmianers for rejecting cases, or that punishes Examiners for allowing cases, is also a broken system?

    Would you agree that a system that let’s Examiners do less work for the same amount of credit if they reject a case rewards Examiners for rejecting cases?

    Would you agree that an Examiner who is already familiar with a case and has already searched the art for those claims or very similar claims has to do less work than they would for a new case with which they are unfamiliar?

  14. 222

    That don’t impress me much, Linda.

    The EPO (at least in medical device arts) gets its first Action out within 3 to 6 months of your filing at the end of the Paris year. The EPO EESR includes a world-class search report. You can be more or less certain that the EPO will not do any more searching at any later stage, on that application. Therefore, if you can overcome that art, you’re through to issue.

    Is that how it works also in Korea?

  15. 221

    I went to a class and attorneys there said that KIPO was producing first Action in under 9.8 mos. They named better technology, better supervision, better mentoring, outsourcing searching. I am not popular for passing this on.

  16. 220

    why shouldn’t applications be given priority numbers by type and filing date and examiners be punished if they take them out of order?

  17. 219

    To understand why the TCs have different RCE rates is also similar to why some TCs have higher first action allowance rates. The question itself implies that everything is equal. It is not.

    The new rules are designed to reduce RCEs by punishing work on them and encouraging work on new cases. In case you missed out, new cases include Divisionals, Continuations and Continuations in Part. If you file an RCE, the RCE is placed in the same queue as these other new case types.

    Why attorneys are not upset with this idea is odd. Do you understand that within a queue where the examiner has a choice to work A or B and A is worth more, the Examiner may just make the logical choice.

    Additionally, the new system cheapens allowances. We are now encouraged to allow-allow-allow. I guess if you are a prosecutor and not a litigator, then your success rate goes up. But what do you gain in the end?

  18. 218

    Malcolm — venture people are involved in very few applications. Most applications are by large/medium size corporations without venture people involved.

  19. 217

    “The overclaim rebuttal by 6 has been listend to and found not to be persuasive”

    I doubt you listened. In fact, 6’s “rebuttal” is entirely consistent with the way that many clients choose to pursue intellectual property. We’ve been over this before, a million times. Attorneys who deny the practice described by 6 are, quite simply, liars. As for why an attorney would spread such garbage anonymously, we can only guess. But we’ve known quite a few patent prosecutors in our time who lack a solid moral foundation (seems to go along with a lack of intelligence, go figure).

    As noted upthreaad, the operating procedure is that the client (i.e., the corporation) needs money. In order to get the money, they want an impressive set of claims because “that’s all the venture people are going to read anyway.” All we can do as attorneys is counsel the client contact (i.e, the “in-house attorney”) that the broad claims are unlikely to be granted and will lengthen the time and expense for prosecution and will ruin attempts to expand the claim scope via the doctrine of equivalents. Nine times out of ten the client contact acknowledges these facts but his/her hands are tied by — you guessed it — the CEO and the board and the other folks who are trying to raise money and just want a big pile of applications and impressive looking claims to wave in front of the faces of investors.

    Yes, it is depressing. Thankfully not every client operates like this but plenty do. Again, to deny is to lie.

    And just for the record I’ll say it again: ANY system that rewards Examiners for allowing claims is a broken system. It’s like rewarding food inspectors based on the number of “approved” stamps they put on jars of baby food. Insane.

  20. 215

    To: just passing through @ 11:23am

    Your question and observations were not really the point of my post, but I don’t want to make anything worse. So, I think I can help explain a few things.

    First, I have 17+ years at the Office and in all that time I have never known management to willfully lie about anything. About outright lying, I don’t think it’s in their power to do that, but I do think they can and do lie by omission. It’s pretty common, in fact, as a parent I admit to having done that too. And, I think they do that for the same reason I did, to try and make things better, not worse.

    In the excerpt above, the examiners they are referring-to are not all examiners, but only the examiners that they know by PALM are having too many RCEs, so the intention is to fix that by dealing with multiple, generational, RCEs by giving progressively fewer counts for the first and then the second RCE, and then all RCEs beyond the second are capped at the lower count reward value of second RCEs.

    The comment in the FAQ was not meant for, or directed to, all the other examiners outside this group.

    I guess the point is that, in order to understand the “why” of this proposal, you have to look at the plan like management does.

    I admit I don’t understand the why of this plan, a lot doesn’t make sense to me, but I think that is by design, after all, I only have a small portion of what can be known.

    Management has the most information, everyone else has a lot less.

    So, think about it, management had to have a plan that addresses multiple competing interests, and to try and do that in as fair a way as possible. That’s the crux, how to be fair. And, as an examiner, I know that “fair” is a subjective term. It really isn’t possible to be fair to everyone, since no one will, or can, agree on what is fair.

    The plan has to be perceived as, at least, an attempt at fairness, or else it doesn’t have a chance of being adopted.

    I think that in the beginning, management understood that for the plan to succeed everybody has to hurt a little so everybody can gain a little, and thereby, move the whole count system off dead center, to a place where, eventually, more change is possible.

    In this equation only management knows enough to make this fair, if fair is possible.

    Unfortunately, and probably inevitably, the position we the examiners are in is that we have to trust management in this. They are driving the bus, and we can apply the brakes. We probably make them more nervous than they make us. They need us to stay off the brake for this to succeed.

    As for myself, I only trust them to do what’s best for management, and additionally, I hope they’re doing what’s best for themselves in the long term. I think that’s the best shot we the examiners have, that management understands they will stand or fall on how the plan plays out over the long term.

    If the plan is adopted, and then if it eventually fails, i.e., lower productivity and more senior examiners leave early, (upper) management stands to lose the most, their jobs, because Congress can insist on that, that’s ultimately who management answers to. I’ll still have a job, if I want it under the new system. I get to choose to stay, management won’t get to choose.

    You didn’t ask for this explanation, but this is my interpretation for what it’s worth, and no, I don’t think there is anything rotten in this, just competing interests working themselves out.

    Thanks for the comment.

  21. 214

    Examanona said “Various TCs have different RCE distributions.” It would be interesting to know why this is. (Do you know, Mr. Kappos??? If not, why not?)

    There may be legitimate reasons for it or maybe the examiners in the TCs with poor (excessive) RCE numbers may be encouraged or at least not discouraged from exploiting the RCE system.

  22. 213

    SPQR 451 quoted the FAQ as saying “The RCE adjustment is not a rewarding of more time. It is an adjustment to mitigate the impact of the reduced RCE counts.”

    If true, this makes the increase in examination time seem like a complete sham. If the examiners really aren’t going to get more time to examine applications, why is the examiner’s union supporting the change?

    What is the agency really trying to do with RCEs? Something smells rotten.

  23. 212

    From the online document “Proposed Count System Package – FAQ’s”

    Question 16 is…

    “16) Why does the proposed count system reward more time to those with higher RCE percents than examiners who exercise compact prosecution (and thus have a lower percentage of RCEs)?

    (Management’s answer)
    There are multiple reasons why an RCE is filed, and many of these are solely due to applicant behavior. The RCE adjustment is not a rewarding of more time. It is an adjustment to mitigate the impact of the reduced RCE counts.”

    Finally, proof that PTO management believes “RCE Churning” isn’t all about victimizing the poor attorney.

  24. 211

    ” Or will that never happen with the current budget?”

    Actually congress is giving the money for that task force iirc from the directors. Someone asked about where the millions would be coming from.

    I could be wrong about that though, but either way, it still has to be done per mandate.

    “That’s all. It’s not non sequitur. ”

    He’s right, if you just stay with the old system calc no harm done. (well, very little harm, because you might have been attempting to gain mad FAOM counts under the new system, then fell short under the new system, but since you didn’t do enough RCE’s the low counts you get under the old system for FAOM’s might f you big time. Big time. That is, if you shoot for a lot of FAOMs you could f yourself. You really gotta pick a system and go with it) Until the next year when they put the new system into place permanently and don’t allow the option to have production calced under the old system.

    Kill it now in its infancy unless K man agrees to pay up for actions already done.

    I still can’t believe that POPA would sign off on this once it was brought to their attention. Apparently they’re just too dimwitted. Which is what I feared from the beginning.

    “Therefore, the public is not negatively impacted because the new system is not the only one in place. ”

    What happens if we approve the system, and an examiner is “left behind”, caught in the “safety net” at the end of next year and then keeps examining into year two where they no longer offer the safety net? Does the public lose out then?

    You don’t seem to understand that the safety net does nothing but “push back” the “harm” to the public until next year.

    But don’t worry Jules, I know, I know, it’s hard to understand. A little complicated.

  25. 210

    “retroactive reduction in hrs per BD”

    Yours is obviously the easier position to take, given that everyone wants the most for the public.

    My contention is not a guarantee that every examiner gets at least 1 net additional hour over their FY09 expectancy.

    My statement, regarding the safety net, is simply that the safety net ensures that there are no “lost hours” because the old system is virtually still in effect during the transition.

    Safety Net 9.B: “Where performance issues arise, including performance actions, promotions and WIGIs, production shall be calculated using both the old and new system. The best result for the employee will be used to determine the production goal achievement element in the PAP.”

    Therefore, the public is not negatively impacted because the new system is not the only one in place. Examiners, however, may be negatively impacted because it may be harder to get a bonus.

    Safety Net 9.D: “The safety net shall be available for performance actions, promotion eligibility, and WIGIs, but not for awards.”

    However, the difficulty in attaining a bonus would probably be good for the budget of the patent office anyway, given that they are looking for ways to save money.

    That’s all. It’s not non sequitur.
    It is certainly the harder position to take. Your argument is just a cut-and-paste from Tafas ;). How can you expect any change to the production system to be perfect? USPTO and POPA say there will be ongoing readjustment and reevaluation built into this change. However, if the first change never gets off the ground, will there ever be another shot at it? Is there not still an independent evalutation to be done without USPTO and POPA? Or will that never happen with the current budget?

  26. 209

    Jules, your non sequitur is duly noted.

    Did the PTO “task force” pay you for this propaganda?

    Please explain how your “safety net” panacea ensures that every utility and plant examiner receives at least 1 net additional hour over their FY09 expectancy?

    Please also explain how the new count system ensures that every utility and plant examiner receives at least 1 net additional hour over their FY09 expectancy in light of the retroactive reduction in hours per BD for “transition FAOMs”?

    Don’t worry, the PTO “task force” couldn’t answer these questions either.

  27. 207

    It is interesting that this entire discussion is based on applying old rules and old actions to new rules. Why do you feel that examiners will do the same work under the new rules as we did under the old rules?

    Gaming a system? Think incentives and penalties. We are paid hourly for piecemeal production. As the two metrics are still out of alignment, the overall result of this change will be negligible.

    Also. Various TCs have different RCE distributions. Your opinions of the RCE percentage may be correct and incorrect simultaneously.

    The new rules reward examiners that have high RCE percentages. I am not one of them.

  28. 206

    If the PTO classification system were updated, examiners might rely on it more for their searches instead of key word searches which often turn up nonanalogous art.

  29. 205

    6 said, “the problem is that US attorneys are often just as lazy as US examiners are alleged to be. There simply is no other explanation.”

    Granted, attorneys sometimes are under pressure to churn out responses in just a couple of hours. Generally though, I think attorneys have more time and are more than happy to use it up doing the best job possible in the allotted time.

    I think what sometimes seems like obstinance or laziness on the part of attorneys is that Examiners’ interpretations of claims and understanding of teachings of references and reasonings for obviousness are not as apparent as the Examiners think they are. I think a lot gets lost in translation, and those are the times when interviews seem to be most helpful. Just clarifying the rejections and getting on the same page can help immensely. I wish Examiners were rewarded for calling up Applicants to discuss the arguments and amendments and clarify them before search and exam. I think that would yield a vast improvement.

  30. 204

    “retroactive reduction in hrs per BD”

    I applaud your taking a stance for the public good. However, as I pointed out in another thread:

    The Safety Net keeps both old and new systems in place and the better one is used. Therefore, there is no loss in credit/time for “transition FOAMS” unless, possibly, the examiner is going for a bonus.

  31. 203

    The overclaim rebuttal by 6 has been listend to and found not to be persuasive. It has nothing to do with a crappy first action based only on keyword search and a crappy second action ignoring the applicant’s reasoned response as to why the first OA was nothing but crap. Honestly.

    put down the pipe 6.

  32. 202

    Tell me folks: what am I to make of the flippant remark, endlessly repeated by US patent attorneys of my acquaintance, that a FAOM without novelty objections is “proof” that the drafting attorney was guilty of a crime called “under-claiming”?

    I can’t understand the thinking behind such remarks. Deliberately to provoke novelty objections seems to me to be doing the client a dis-service. Rightly or wrongly, I see such deliberate provocation as a strong factor in:

    1. reducing the level of mutual respect, between attorneys and examiners

    2. causing a backlog and increasing pendency

    3. incentivising sloppy searching at the PTO

    4. drafting without first researching the state of the art.

    But I don’t forget either the pernicious effect of the incentive under English common law to turn a Nelsonian blind eye to the detailed content of the prior art.

  33. 201

    “I didn’t MAKE the applicant do an RCE (as if the alternative of abandoning to the crappy first and second OA’s are really an option.”

    Well to be honest he didn’t make the applicant over claim. That is an affliction that arises mainly due to counsel. Blame them.

  34. 200

    I would like to reiterate and expand on the previous comments addressing the fact that every original application for which an examiner only receives 1 count for first action and does not receive a disposal count before implementation of the new count system will only receive .75 counts for disposal.

    As noted elsewhere this incongruity results in inconsistent treatment of applications that affects both examiners and applicants. This occurs in part because only granting .75 counts for disposal of these “transition” cases results in a retroactive reduction in hours per BD for FAOMs completed in FY09 but not disposed of before implementation of the new count system.

    For example, if an examiner currently receives 15 hrs per count (30hrs/BD) and has the PTO average RCE mix, they will receive 16 hours per count under the new system. Therefore, for every “transition FAOM” on their docket they would have received 15 hours for the FAOM under the old system, but under the new system they will only receive 12 hours (.75 count x 16 hrs) for the disposal. This causes a retroactive reduction of 3 hrs in examining time for these original applications because the examiner only receives 27 hrs/BD for these “transition” cases as opposed to the 30 hrs/BD they were receiving under the old system.

    The reduction in time also negatively affects any applicants with “transition” applications because of the reduced time given to act on these cases. For example, since any FAOMs completed in Q1 of FY10 will only receive .75 disposal counts and reduced hours per BD as compared to both the new and old count system, examiners will have less time to act on these “transition” applications.

    To further illustrate this problem, if this examiner has 50 pending “transition FAOMs” on their docket when the count system changes they lose 150 total hours or 9.375 counts under the new system (3hrs x50 cases/16 hrs/count) because the pending cases only receive .75 counts for disposal.

    Furthermore, because “transition FAOMs” will only receive 1.75 total counts it appears that the slides prepared to explain the new count system make some incorrect assumptions. For example, slide 7 on the USPTO website seems to assume that ALL regular or original applications receive 2 total counts, when this is clearly not the case because pending “transition FAOMs” will only receive 1.75 total counts.

    Accordingly, in addition to the new count system negatively affecting hrs/BD by reducing RCE counts, it is also apparent that only giving .75 counts for disposal of these “transition FAOMs” negatively affects hrs/BD. However, while the reduction in hrs/BD caused by reducing RCE counts has been corrected for, the reduction in hrs/BD caused by reducing “transition FAOM” counts has not been corrected for because the correction formula incorrectly assumes that all original applications receive 2 total counts.

    From the USPTO presentation and from the comments of Director Kappos and others it appears that one objective of the new count system is to ensure that every utility and plant examiner receives at least 1 net additional hour over their FY09 expectancy. However, because the reduction in hrs/BD caused by reducing “transition FAOM” counts has not been corrected for, it appears that most examiners will not actually receive at least 1 net additional hour over their FY09 expectancy. Accordingly, to ensure this stated objective it appears that disposals for applications which have only received 1 count for an FAOM should receive 1 count for disposal under the new system or the reduction in hrs/BD caused by giving only .75 counts otherwise needs to be corrected for under the new system.

    Is the agency sincere in its commitment that every examiner will receive at least 1 net additional hour over their FY09 expectancy in FY10? Only time will tell, but I am assuming that this problem resulted from a mere oversight of the task force charged with tackling this immense issue in only 1 month. Therefore, I am hopeful that the USPTO under the leadership of Director Kappos will swiftly and fairly address this issue before implementing the new count system now that this issue has been raised.

  35. 199

    “To them RCEs are beyond their control.”

    This statement does not fall logically with everything else you said.

    If they have a better grasp, then they understand the typical path to RCE:

    quick and crappy first OA with art bearing only a keyword search relation to the application.

    quick and crappy second office action, finding nothing persuasive and going final.

    Finally after RCE, taking a real frist look.

    The first two steps are done quickly and remove the “newness” – leaving high percentage of RCE’s and the examiner jokingly saying, well, it’s beyond my control – I didn’t MAKE the applicant do an RCE (as if the alternative of abandoning to the crappy first and second OA’s are really an option.

    Put down the pipe xephay.

  36. 198

    The * examiners whom I know have a better grasp of the law and technology than the average examiner. They know where to find information in the MPEP. They more quickly understand the key concept of the invention, have better search techniques, and argue more pursuasively. They know when do another non-final, when to go final, when to consider first-action allowance, and when to seek approval for allowance. To them RCEs are beyond their control.

    And unlike me, most of them don’t spend time reading patent blogs. :)

    That’s how they game the system.

  37. 197

    xephay,

    Your story seems to corroborate the popular notion that examiners game the system with RCE’s.

    Is that your intent?

  38. 196

    “I have to chime in that the 50% RCE number isn’t out of the norm.”

    Seems to be the case in our AU. Based on further input from others in the same AU, my “ranking” is moving towards the bottom. About 70% of those surveyed have lower percentages (single digit, 30s, 40s) of regular (original/non-RCE) cases (i.e., higher RCEs).

    They are considered the “star” examiners, who are efficient and productive at churning out office actions. They have the lower number of regular cases (versus Corp. Avg of 73).

    The observation among us is that those with higher regular cases are newbies or are “struggling” with production.

  39. 195

    “The one improvement that didn’t make it in the package that I think should have been included is an increased count for allowance.”

    This is like paying a baby food inspector based on the number of bottles he marks “approved” every day.

  40. 194

    I can think of another explanation, 6. But nobody on this thread is going to tell it to an Examiner or an alien. I wonder, are you being sarcastic? I can’t tell.

  41. 193

    Max, the problem is that US attorneys are often just as lazy as US examiners are alleged to be. There simply is no other explanation.

  42. 192

    In my view, every applicant who wants what they should want wants some claims issued and more claims still on file. The actual amend/argue/appeal strategy is irrelevant. If its not an RCE, its going to be a Continuation. Either way, claims will be on file. The only impact of the changes to the count system is that Examiners who allow at least some claims at each stage, resulting in Continuations instead of RCEs, will be rewarded more greatly than those who do not.

    Thus, there is an incentive for Examiners to examine the dependent claims more attentively to try and find something allowable, instead of just focusing on the independent claims and rejecting the dependent claims out of hand if the independent claim does not pass muster. There is also an incentive for Examiners to look for some subject matter in the specification that, if claimed, would at least distinguish over the cited references, and suggest that the Applicant claim that subject matter. In my view, these are good things.

  43. 191

    I have a question. Why is it that US patent attorneys adopt a “Nelsonian” (telescope to the blind eye) posture when assessing the prior art?

    It is not uncommon in Europe to receive instructions from a US law firm, that the prior art reference “fails to disclose” some feature of the claim yet, when one looks at the reference, col 27, line 15 recites it, plain as day.

    Is the US attorney supposing that getting through to issue on that ill-founded assessment of patentability affords his client some sort of advantage? How weird.

    But seriously, isn’t this way of doing business at the heart of the problem of pendency, and strained relations between attorneys and USPTO Examiners?

  44. 190

    50% RCEs is not unusual. The flaw in the reasoning of those who think that it is is that not all applicants are interested in compact prosecution.

    One of the biggest applicants, I’m not sure of their exact rank but they’re definitely in top five, uses the strategy of come in with the broadest claims possible, then amend ad-infinitum until they get an allowance. They won’t argue unless your rejection is completely retarded and they never appeal. If you reject all of their dependents they will just add something new from the spec.

    Another one of the major applicants also comes in extremely broad and will not amend unless your art totally blows them out of the water with a perfect 102. They will amend to overcome 112s or objections and then appeal. After they lose at the board, they file an RCE, incrementally amend and repeat.

    These are huge applicants responsible for thousands of applications. Just because small inventors don’t have the money to prosecute forever doesn’t mean the big boys don’t. If you work in an art unit dominated by major manufacturers, you’re going to have more RCEs because whereas small entities usually read all of the cited art and amend substantively, large entities often don’t.

  45. 189

    My TC requires all actions to be turned in by 5pm on Thursday with all corrections turned in by 5pm Friday. Midnight Saturday is an improvement particularly since our bi-week ends at this time.

    I find that interviews help me to understand applicants invention through their eyes while also allowing them to see my point of view. I also try to grant all interview requests if possible. Often an interview that I did not initially see as necessary has resulted in moving the case closer to a resolution.

    I have had Attorneys refuse to amend or add additional claims to prevent allowance but for the most part I have dealt with excellent Attorneys whose goal was to bring their cases to allowance.

    I have been told to reduce the size of my actions and also to explain my rejections more thoroughly. I have been told to get actions out quicker but told not to change my search methods. How can I do one without the other?

    Our office has become concerned with quality but refuses to recognize that quality and production are conflicting goals.

    While this new count system may not be perfect at least it is a start in the right direction.

  46. 188

    Jimmy, I don’t know the first thing about mechanical cases so I won’t comment on them. As for cases with 15-page specs, I don’t get many of those. Of course I agree that simple cases are easier to handle, but few are simple.

    There are a few problems I encounter with finding the “best” art. One is that I often get claims drawn to a combination of two very broad classes of products, and there are many permutations contained within the combination. Most of the time these can be rendered obvious by many different combinations of references and for different reasons.

    Another problem is that I get a lot of claims which are drawn to products which are ill-defined structurally but the claims contain a lot of functional language. It is very difficult to apply the best prior art when it’s not clear what is being claimed.

    Compact prosecution and focusing the issues early must be a cooperative effort. If you receive an office action that’s crap, it doesn’t advance prosecution at all. Likewise, if the claims are ridiculously broad and vague and do not resemble the invention, the first round of prosecution is essentially wasted.

  47. 186

    newish3700examiner, don’t let the BSers B-S- you. I know well that some of the worst examiners have very high RCE rates.

    What I was taught when I was there is that you cannot survive without a lot of FWCs. It was all lies. Absolutely.

  48. 185

    Anon,

    I have to chime in that the 50% RCE number isn’t out of the norm. After speaking to several people in my art unit, what is consistently described as typical production on a mature docket, i.e. for an examiner that has been working here for somewhere between 2 and 3 years, is that they just work one new case every biweek, alternating biweeks between regular new and special new.

    The above posters are correct in saying that the average number of RCE FAOM’s is deflated by the large number of new hires. I, for example, have been examining cases for a little over a year, and i had 5% RCE’s in FY2009 (4 cases). If you consider that something like 1000-1500 examiners don’t have mature dockets yet (forgive this estimation), you can see that the RCE average becomes extremely deflated by new examiners. And don’t forget that when an examiner leaves, the rest of the art unit absorbs all of their amendments which causes increased RCE numbers for older examiners. In my short time here, I inherited 9 cases to my amendment docket, none of which have advanced to an RCE yet, but only one of which has become a disposal.

    This point will be more easily observed next year. I’m predicting a large increase in the average RCE FAOM percentage, due to the hiring freeze.

    As per my opinion on the rules package, yes I am a bit ticked off that we’re being screwed out of a quarter count for amendments awaiting disposal after the transition. That being said, I’m in favor of the package. I would have had 20-25% better production during the last year if these rules were in place. Even with the lost quarter count per case that i’ll be eating, I’m expecting that it will still be much easier to make production. At the very least, examiner attrition will be greatly improved, because it won’t be so demanding to build up a mature docket.

    And don’t forget about the safety net. If the new production system proves to be harmful, they are also calculating production from the old system in parallel, and they are letting us use the calculation from the old count system if things go south.

    The one improvement that didn’t make it in the package that I think should have been included is an increased count for allowance. There needs to be a shift that puts allowance on more equal footing with an RCE if the office really wants to see compact prosecution.

  49. 184

    The bottom line is that Examiners who indicate some kind of allowable subject matter (e.g.,in some dependent claims) are going to do better than those who do not do that. The Emaminers who identify some allowable subject matter will not get an RCE. They will get an allowed application and a continuation. Same amount of work. Better pay.

    And it won’t be that hard to do. All they will have to do is to stop contruing the claims in an overly broad fashion.

  50. 183

    Yeah the tranisition is really the nail in the coffin for that propsal. I don’t see how any examiner can vote for it in lieu of that fact.

    Additionally I’d like to know the rationale in granting 2 hours per BD across the board instead of some percentage. I was under impression that the more complex arts needed more time not vice versa.

    I’m curious to see if anyone think this reformed count system is going to pass ?

  51. 182

    Jimmy, I agree. I write a lot of applications, have worked at several firms over the years, and I find the vast majority of applications are under 20 pages, with most of those around 15 or so pages. I have never written more than 67 pages of detailed description, and that one was brutal for the budget given. That is why I can see an RCE rate of about 25% or lower somewhat acceptable, but an RCE in the stratosphere (like 50%!!!) not.

  52. 180

    Shaggy, I think we can all agree that in simple cases it is entirely possible to apply the most relevant art. This is especially true for most mechanical-type applications, and more especially true for any application with a spec under 15 pages.

  53. 179

    Yes, it seems that the office is planning to remove 0.25 counts from every transition case. I have 80+ of those cases. Completely unacceptable.

    I fail to see how the RCE rules will modify my behavior at all. I already cite what I feel is the most relevant art and address all dependent claims. Yet I do get a lot of RCE’s, which is frowned upon by many people here. Very few cases go to a second RCE.

    I used to try to guess what Applicant might claim next and provide art which might be relevant to that, but I’ve found it’s really not possible to guess which portion of the 300 page spec is going to be claimed later. Since I don’t have a crystal ball, I only apply art for claimed limitations.

  54. 178

    I agree that reforming the count system to yield diminishing returns removes, to some extent, the temptation for Examiners to merely read the claims, construe them as broadly as unreasonably possible, and slap down some irrelevent art that was quick and easy to find. I don’t think that necessarily happens in every art unit, but it seems to have been particularly prevalent in my past practice.

    That said, in general I am seeing a lot better art being used in rejections these days, especially in first Office actions. It is a striking improvement. However, the Office actions seem to be getting thinner.

    What I mean is that there is alot less pointing out by paragrpah or column and line number where each element is taught in the prior art. I’ll see 5 o 6 six claims dismissed with a single sentence that cites nothing except a reference by name. And where the Examiner does make the attempt to cite with particularity, I see many errors, including citing single line numbers instead of passages, with those citation being to sections of the references that are not at all related to the point at hand. Plus I see references being idenitified incorrectly, with the name or number or both incorrect.

    But, in general, it just seems like we are being left to read the Examiner’s mind and/or guess at how the Examiner is applying the references. Maybe it’s just my experience, but that is the trend that I am seeing. Better art being cited, but at the expense of less detailed rejections.

    A consistent problem is the inattention given to dependent claims. I’ve had Examiners tell me that if I want them to search that subject matter, I have to put it in the independent claims. That doesn’t happen all the time, but it’s obvious when it does happen. I appreciate that Examiners don’t have enough time to examine application properly, but I would really like it if Exmainers would make an effort to search for subject matter in dependent claims that seems particualrly important, or if the Applicant calls them up and asks them to search for that particular thing. This problem actually seems to be getting worse.

  55. 177

    6 clearly misunderstands the point of REFORMING the count system. The point is not to allow Examiners to get the same exact number of counts if they continue examining exactly as they did before. The point is to change the way Examiners handle their applications so that they try to actually move cases forward rather than benefit from drawing out prosecution and milking as many RCEs as posssible. The latter strategy not only costs Applicants thousands of extra dollars, it also contributes to the backlog.

  56. 176

    “Well guess what, we just had an interview training session where they said we should include any correspondence of an interview to be scanned into the file record.

    I just heard all you dopes cringe. That’s right, let’s see how fast you guys stop filing proposed claims for interview discussion. Instead just throwing out vauge claim language throughout the interview.”

    O wise Lurker, you are a little late in getting the news about the requirement. We got it weeks ago. It took us all of about 30 seconds to implement a general policy of no more written submissions for interviews.

  57. 173

    I infer from that rant that somebody has been neglecting to keep PTO infrastructure in good nick. But is it fair to blame PTO management? It was merely following what the economists prescribed, no?

    Compare the relative state of railway infrastructure, in England and Germany. It wasn’t always like it is today. Nobody’s suggesting scrapping the English railway system. It is indispensible, and by now it’s anyway far less dilapidated than when Mrs Thatcher left office.

    Remedial action is possible. Where there’s a will, there’s a way. My recommendation (it goes without saying) would be simply to adopt, wholesale, the EPO’s conscientiously maintained and diligently developed subject matter classification system. It is after all based on something called the “international” s-m classn system.

    England can continue to drive on the left while the rest of Europe drives on the right. But, in patent searching, the customers demand from Patent Offices more efficiency than that, don’t they?

  58. 172

    What needs to be done to improve the classification system? How about dividing huge classes that can’t be machine searched into much smaller ones that are manageable to hand search in the time allotted? If you can’t do a word or phrase search on some concept then computer searching is pretty effing worthless. I worked in the chemical arts and given the broad way chemical structures are drawn any number of actual compounds could meet them, just as any number of synonyms could be invented for the application under consideration since applicants can be their own lexicographers despite the perfectly good words already in the art. If you can’t do the search and examination in the time allotted then you’re blamed for it, not the system, regardless of how effed up the system is, how obsolete it’s become. It would also help if the TQASs training supervisory examiners were actually correct on the facts. I had one try to tell me something completely incorrect about what constituted a valid 102/103 inherency rejection; same one tried to tell me that if I had prior art that disclosed several Markush groups I should only make rejections over one or two of them, then save the rest of them for another Office action instead of do “compact prosecution” and make all valid rejections the first time. This appeared to be PTO management doctrine at the time. How’s that for examiners being screwed by PTO management? Doesn’t help the applicants either since they have to put up with that dung, but do they ever really get in the faces of the fools running that place? No, that would be rocking the boat. Some boats need to be sunk; this is one of them.

  59. 171

    You did not miss anything – EVERY case on an examiner’s amended docket will now only receive .75 counts for the disposal. the transition cost for some folks will negate any benefit for the next year. – and after that, do you trust that the more time part for new cases will continue?
    So a ‘yes’ vote may well mean a permanent decrease in time by allowing M to forevermore grant less counts for RCEs (over which exrs often have no control). If they really wanted to incentivize us, they would have granted more time or partial counts for the first case, and not taken counts away from the RCEs.

  60. 170

    SPQR: You may have undercounted. Everything on your Rejected tab (except restrictions) is in a status between FAOM and disposal, and will thus receive only 0.75 counts upon disposal, even though they only got 1 count for FAOM. Add in to that all the non-RCE amendments on your Regular Amended tab.

    For me, that’s somewhere in the 60s if my docket looks similar in January to how it does today, which means 15+ fewer counts over the rest of the FY or so.

    That actually seems so crushing and so farfetched that I have trouble believing it myself. Maybe there’s something about this that I missed – if so, I hope someone will correct me.

  61. 169

    MaxDrei,

    The USPTO does not have anything equivalent to the EPO’s Rule 137(4). Applicant can and often do bring in stuff that was not covered in the initial search. I’ve even had cases where they bring in limitations that were incorporated by reference from a related case, but was not directly written out in the specification of the application being examined.

  62. 168

    Update — from the Memorandum of Agreement:

    “Item 8.G. – Transition Issues

    Pending applications for which FAOM credit was received uner the previous count system will have 0.75 counts available, even if a final rejection has been issued under the previous count system.”

    This provision cheats me out of 4 counts for no good reason, I have 16 cases in this status at the present time.

    If the Office wanted to be fair about this, they could give me an extra 0.25 counts for every case in this status, and then I wouldn’t mind only getting 0.75 for the disposal. It’s a simple accounting procedure, PALM has all the data.

    It’s simply a “gift” of 0.25 counts to the Office for every case in this status from every examiner.

    This is unacceptable.

    I won’t be voting for the proposal for this reason alone.

  63. 167

    From slide 8, I see the following:
    ————-
    Examiner FY09 %
    Mix of Reg FAOMs –
    1st RCE FAOMs –
    2nd+ RCE FAOMs

    73 – 20.3 – 6.8
    (Approx. Corps Avg)
    ————–

    or about 27% FAOM counts from RCEs

  64. 165

    anon,

    Based on input from several other examiners in my AU, plus a couple in related EE/Computer AUs, this morning and last Friday, my numbers are pretty much “average”. Half of them have lower percentage of “regular” (non-RCE) cases (single digit and 30’s) and the other half is mostly in the 50s. All have numbers way below “Corps Avg” of 73 shown on the slides, by double-digit differences.

    Not speaking for others, I always try to do a thorough search and cite the best art available on the very first office action. (I’m known among those who know me as one of the few examiners who also cite multiple rejections with different prior art references.)

    Sorry to say, but your accusation is completely devoid of logic.

  65. 164

    Thanks former examiner.

    Oh how professional bureaucrats have such a hard time seeing the big picture. Tell me why this examiner (xephay) has about twice the average RCE rate. Why doesn’t everybody? This is a huge difference. 25% seems like a fair number of counts from RCE, but 50% seems ridiculous.

  66. 163

    former examiner, my idol’s point is fully understood. I admire his courage for asserting conclusively that the guy/gal’s able to obtain high number of RCEs because his/her initial search is minimal, or as you put it, not having cited relevant art up front (in the first office action). All practitioners should learn from this great reasoning skill.

  67. 162

    Reminds me of the EPO, where only one search is done, right at the front end of the process.

    But do the USPTO rules have a counterpart to Rule 137(4) in the EPO (which provides that amendments may not relate to unsearched subject matter)? But for this rule, Applicants cheat the guillotine by amending after the PTO search issues, to subject matter not adequately covered by the search activity thus far. Absent some mechanism like Rule 137(4), I imagine the possible consequences to include i) unsearched subject matter going through to issue and ii) Applicants putting all the blame for their lack of progress to issue on the bolshie behaviour of haplessUSPTO Examiners.

    All goes to show how hazardous it is, to cherry pick from another culture without at the same time adopting all the checks and balances of that other culture. Three cheers for globalization.

  68. 161

    anon is my idol, I believe anon’s point is to make it to disposal in an efficient way, whether that be an abandonment or allowance. An amendment made during the first or second RCE or a decision to abandon could have been made after first action if relevant art cited later is brought to the front of the process. This is precisely why more hours are being shifted from the RCEs to the FAOM part of the timeline.

  69. 160

    xephay, you still don’t get it. Again, take a look at the mirror (i.e., your statistics) and let’s talk. Why is your rate of RCEs nearly twice that of the average examiner? Could your initial search only be a “bare minimum” effort to address the claims? Seems like it to me. The office is trying to address this deficiency so that you perform your job in a more efficient manner. Cheers to them!

    ——–

    Anon’s absolutely right, xephay! Isn’t it obvious that all your office actions are just a piece of scrap, judging purely based on the number of RCEs you received?! You should have tried to conform to the Office’s average, or better yet, keep your RCE count low by quickly issuing Notices of Allowance. Don’t force us into filing RCEs, dude! (You’re a dude, right?) Or follow your fella examiner here, who has only 8% RCEs–isn’t he doin’ wonderfully: “I barely made 95% for this past quarter, and my fiscal year production is far below what is acceptable. My trainer and then my SPE have been stressing for me to improve my production numbers.”?

    link to just-n-examiner.livejournal.com

  70. 159

    xephay, you still don’t get it. Again, take a look at the mirror (i.e., your statistics) and let’s talk. Why is your rate of RCEs nearly twice that of the average examiner? Could your initial search only be a “bare minimum” effort to address the claims? Seems like it to me. The office is trying to address this deficiency so that you perform your job in a more efficient manner. Cheers to them!

    ——–

    just a thought to keep in mind – the “average” RCE/normal FAOM rate in the office is heavily skewed by the massive number of junior examiners hired in the last 2-3 years, and the relatively low number of senior/primary examiners – obviously all of the new examiners are going to have almost entirely regular FAOM’s and substantially fewer RCE FAOM’s – with the thousand or so examiners hired each year for the past 3 years, thats a bit hit to the “average”

  71. 158

    “Early in my examination career, I use to put in my office action a discussion of why certain art were cited, but not used. For example, reference x was cited because it shows y (y being something from the spec that I suspected was very likely to be claimed later). I stopped doing this because despite this discussion in my office action, the very next amendment I get would sometimes be the addition of element y into the independent claims. All I’d have to do then is do a 103 rejection with reference x as a secondary which shows y.”

    That sht right there is annoying isn’t it? You bust your arse doing a good job and the attorney just says to himself “o well that looks like a good amendment around the current art” and makes it and goes home. I even have attorney/agent friends who say to my face that’s what they’ll do (at least sometimes) when in a hurry. Especially for big clients that don’t care. And I have a lot of “big client” applications.

  72. 157

    back to the proposed new count system-
    the documents examiners need to review appear to now be posted on popa.org.
    looks complex -and inequitable at times, since two examiners in same docket can (likely will) have different amounts of examining time based on their previous RCE mix- those with the most RCEs get the most time in the new plan in order to assure they get the “1 hour” minimum more time, whereas those exrs with the least RCEs will get a lesser adjustment.
    But perhaps inequity in examining time within a docket is ok since everyone gets more time based on their own stats? certainly many would say that there is much inequity in the current system anyways. the examiner vote will be interesting

  73. 156

    If that is the case (paragraph 6 above), you’ve done your job well. You also appear close to the average. I’ve known people like xephay, so I know what’s likely what with his/her way of examining. I just wanted to call that examiner out since he/she was pontificating.

  74. 155

    anon,

    My RCE numbers for the last fiscal year are roughly 12% are first action RCEs and 25% are 2 or more RCEs. The 2+ RCE numbers are a little unreliable though since I’ve taken over cases from examiners who have left and cases from examiners who were doing such crappy jobs that my SPE wanted someone else to take over on the case–these cases typically have an RCE filed already. For cases that I prosecute from the very beginning, RCEs are roughly 25-30% of my first action counts.

    “why is the art not applied, but cited in an office action, not actually applied? ”

    It’s not applied because it wasn’t the best art for the set of limitations found in the claims being presented for examination at the time, but after amendments, becomes the better art to apply.

    For example, I turned in a case not too long ago where about 3/4 of the claims were amended (some limitations added, some removed). The art applied immediately before is no longer the best because of limitations added, but because of the limitations removed or because of the way the attorney reworded certain limitations, another art already of record became a 102b reference. For this case, I even called the attorney up to let him know of the situation and offered to go over how I would apply the art to reject the claims prior to sending out an office action and to discuss possible amendments which would place the case in condition for allowance by moving up one of his newly added claim limitations in a dependent claim. The attorney chose to get the office action rather than take my offer. Before anyone judge, keep in mind that he probably needed something in writing so he can go over it with the client–this is typically the explanation I get. I’ve even gotten this type of response despite them possibly having to file an RCE rather than work with me to find something that can be added via an examiner’s amendment. It’s especially a problem where the client is overseas.

    The thing that bothers me though, is that the situation I described should not have happened. The claims presented should at the very least overcome the art that was already cited though it wasn’t the best art prior to his previous claims. The art I used to reject the latest claims was actually used in a previous round of prosecution and though he subsequently amended around it being the best art, his later amendments brought it right back as the best art to use. I was not trying to bury anything.

    Early in my examination career, I use to put in my office action a discussion of why certain art were cited, but not used. For example, reference x was cited because it shows y (y being something from the spec that I suspected was very likely to be claimed later). I stopped doing this because despite this discussion in my office action, the very next amendment I get would sometimes be the addition of element y into the independent claims. All I’d have to do then is do a 103 rejection with reference x as a secondary which shows y.

    Again, why is the examiner expected to do a thorough search as soon as possible when many attorneys refuse to consider what is already on record when they submit the amendment? If I recall correctly, the MPEP requires that the attorney present claims they believe are allowable. Yes, the letter of the law is being met by not even doing the necessary analysis of the art already of record to determine whether something is allowable, but can anyone seriously believe that the spirit of the law is being followed by burying one’s head in the sand and just sending in random set of limitations to be examined? I understand that time is a constraint and that’s part of the reason this is happening, but not enough time is also why many examiners don’t do a thorough first search.

  75. 153

    By the way someguy, I advocated for mandatory SPE review in the past as a complete replacement of the SPE position. Believe it or not, many people out here want a well run PTO.

    One more question: why is the art not applied, but cited in an office action, not actually applied? I believe Rule 104 states that the examiner should apply the most relevant art? Correct me if I am wrong, but burying a better reference doesn’t help compact prosecution, and, in fact, seems funny-peculiar.

  76. 152

    someguy, can I ask what your RCE numbers are? My point was made with regard to someone having about twice the average RCE rate. That is a significant difference. Also, everyone realizes perfection or near perfection is not practically obtainable.

  77. 151

    “Could your initial search only be a “bare minimum” effort to address the claims? Seems like it to me. The office is trying to address this deficiency so that you perform your job in a more efficient manner.”

    I’ll say it again, as long as the office refuses to give an adequate amount of time to do that initial search thoroughly, it won’t get done on a consistent basis. Imagine that the office also required that examiners serve a five star meal at every in person interview, but at the same time don’t provide any funds to pay for these meals. What’s going to happen? Either the meals don’t get served or the examiner has to pay for it out of pocket. What do you think will happen the majority of time?

    The way attorneys practice also have to change. As long the majority of attorneys refuse to look at the art already of record when they submit amendments, it doesn’t matter how thorough a search gets done by the examiner the first time around. I’ve had plenty of cases that have gone through multiple amendments where all I do is use the art already of record to reject the newly amended claims. At the very least, attorneys should be familiar enough with their specification that they aren’t submitting stuff that aren’t supported or are not admitted prior art, but this too does not happen consistently. I sort of understand why it happens, but the way I see a lot of attorneys prosecute is like they bury their heads in the sand and randomly throw stuff at examiners to see what sticks. Why does anyone expect examiners to do a thorough search when the majority of times what is found isn’t thoroughly reviewed?

    Don’t take me wrong, I’m not just blaming management and attorneys, I know very well that there are plenty of examiners whose behavior needs to change. Even if they were given enough time, there are plenty of examiners who won’t do a thorough search, but is this a reason to punish those who do want to do a good job? The solution to this is that a more thorough review of office actions should be done before it goes out. Part of the problem of why it doesn’t happen now is that SPEs don’t have time to do this–too many junior examiners for every SPE. One way to solve this problem is to do as I suggested before and make reviewing office actions by primaries part of their PAP–right now its actually detrimental for primaries to take time away from their own cases to help junior examiners out or review cases. The primaries could review the actions and submit comments to the SPE who then provide further training to the junior examiners based on the comments. If the junior examiner keeps making the same mistakes over and over again, they should be fired. I’m tired of taking time away from my own cases and doing voluntary overtime to cover for examiners who should have been fired long ago.

  78. 150

    “Well guess what, we just had an interview training session where they said we should include any correspondence of an interview to be scanned into the file record.”

    I have always assumed that anything I supply the examiner in writing is part of the record. Some of them would staple my proposals to a copy of the interview summary form they kept. I had no idea they were throwing these away.

  79. 149

    xephay, you still don’t get it. Again, take a look at the mirror (i.e., your statistics) and let’s talk. Why is your rate of RCEs nearly twice that of the average examiner? Could your initial search only be a “bare minimum” effort to address the claims? Seems like it to me. The office is trying to address this deficiency so that you perform your job in a more efficient manner. Cheers to them!

    And remember now, not too long ago it was the PTO trying to create rules that would have limited the number of RCEs.

  80. 148

    @anon (12:32 PM) it takes two to tango. i examine within the required legal framework. the attorneys/agents have the option of further prosecuting by filing RCEs or arguing my final rejections and advisory notices.

    the Office is attempting to do its part to improve the system. how about you?

  81. 147

    Big Guy,

    “Howard Johnson is right. This seems to be particularly true for patents in the communications field in the late 90’s. “Discussed patentability of claims 1-12 in view of references A, B, and C” is pretty typical. Then a notice-of-allowance issues, with a “reason for allowance” like “references A, B, and C don’t disclose the features of claims 1-12″, in complete contradiction of 4 previous office actions.”

    You want to know why? It is because of your fellow attorney’s. That’s right, you got it. Think for a moment….why would an attorney prosecuting a case want me the examiner to characterize why I allowed something outside of the plain language of the claim? He wouldn’t and neither would you. This is the same reason interview summaries are so lame.

    Well guess what, we just had an interview training session where they said we should include any correspondence of an interview to be scanned into the file record.

    I just heard all you dopes cringe. That’s right, let’s see how fast you guys stop filing proposed claims for interview discussion. Instead just throwing out vauge claim language throughout the interview.

    You guys are all just “hide the ball” so just stop complaining. Ex parte, right? BS.

    Although, I can understand when you are looking at the file wrapper of defendants. LOL you guys are a trip.

  82. 146

    P.S. WELL DONE Someguy. The final/RCE issue is something I’ve been trying explain for months. How does an examiner force an RCE? Well the patent system doesn’t let you bring in extra stuff as a matter of “right” under final. Those are the rules. If you have a problem with an examiner’s final then argue it. If you are right you will get it withdrawn. That is your redress. So if you file an RCE that is your fault and nobody is forcing you to do anything.

  83. 145

    “50% non-RCEs ***and the rest RCEs (1st and 2nd+)***”

    xephay, you miss the point of the adjustments, which are supposed to foster a change in the examining behavior of people like yourself.

  84. 144

    more examples are provided on page 9 of the slides. how often will this adjustment to the BD hours be updated? guess i’d find out more details from the upcoming information sessions.

  85. 143

    yesterday management sent out the individual stats and the accompanying spreadsheet, which computes the “new hours adjustment” given the ratio of non-RCE vs. RCE cases the examiner worked on over the most of the past fiscal year.

    i played with some cells, and noticed that if you’d done 72% non-RCE cases, and the rest (28%) 1st RCEs, then your adjustment would be 2 (the proposed number of hours to be added for examining accross the board).

    my take of this is if you continue this pattern of examining, you’d come out even in the new system.

    my numbers are, however, not quite close to that of an average/typical examiner, apparently. i’d done 50% non-RCEs and the rest RCEs (1st and 2nd+), and the adjustment came out to be over 3 hours. i.e., i’d have to add 3 additional hours per case in order to maintain my current production using the new system.

    maybe it’s worth joining POPA to vote.

  86. 142

    “The bottom line is that both Examiner and Applicants are responsible for summarizing Interviews and neither are qualified or capable of doing the job properly.”

    I agree with the first part of this statement, but fail to see why you believe examiners and applicants are incapable of carrying out making a record of an interview. It seems to me there are checks already in place to make sure an adequate summary is provided.

    I’m not going to get into a pissing match with you about this. I asked you what your fixation was with respect to recording interviews. You responded by attacking my character, and then later explained your experiences with inadequate summaries discovered during review of files.

    It seems to me that you have little experience in dealing with real human beings, which are on both sides in this process and a major reason why interviews can be so helpful. Recording interviews would change an interview into something it was never intended to be, and would certainly increase the amount of pending appeals and churning.

  87. 141

    I don’t mind interviews per se, even when they are without any acknowledgement at all (like in Japan), so long as there is no deference given after issue to the work of the Examiner before issue. But, when there’s a written objection, then an interview, and nothing on the written record to reveal what was the breakthrough at interview, and then there’s a Presumption of Validity that can be overturned only with clear and convincing evidence, isn’t that a bit asymmetrical? For symmetry, shouldn’t the prosecutor be required to write into the file the reasoning underlying the waiving of the original written objection to patentability?

    I recall EPO practice. No case gets allowed till the Primary Examiner has the signatures of the two colleague Examiners in the “Examining Division” on the Notice of Allowance. To get those signatures, the primary writes a “Votum” explaining why the claim positively ought to be allowed, despite the art. Thus, EPO Examiners write a positive assessment of patentability, on every case they don’t refuse. I’m sure the habit delivers to their mindset a very powerful positive impulse.

    Pardon my ignorance, if this is what already happens, at the USPTO.

  88. 140

    “Nothing then would be binding, and the entire interview was a waste of time.”

    Something not being binding hardly makes it a waste of time. If an attorney reneges on a deal or whatever woe be unto him and his client if he’s before me. Who are you dealing with anyway? Adolescent girls?

  89. 139

    Malcolm –

    are you saying, in a very literal sense, that you’d like to see a word-for-word transcription of the entire interview (for both in-person and telephonic interviews)?

  90. 138

    hotelingexaminer: “Not all Examiners fill out interview summaries with “talked about the claims”. In fact, if I sit in on an interview, and an Examiner attempts to put that into a summary for me to approve, I’ll reject it”

    That’s awesome. I congratulate you. A few minor points: First, not everyone is like you. Second, there will never come a time when everyone is like you. Third, some people are vastly different from you in terms of their competency and ability to write an Interview summary that captures the substance of the arguments presented by the Applicant. Fourth, the pressure to remove those different people from the PTO is almost non-existent because the PTO’s customers prefer that the Interview system remains as opaque as possible. Fifth, such people arguably shouldn’t be removed because they were not hired to be transcribers of audio or audio-visual presentations in the first place. Sixth, the technology exists now to transcribe the Interviews. Seventh, it baffles that the same folks who drone on and on about information being the Greatest Thing Ever and its dissemination being the driving force for the 21st century economy wish that the public had less of it when Interviews with the PTO are concerned.

  91. 137

    The bottom line is that both Examiner and Applicants are responsible for summarizing Interviews and neither are qualified or capable of doing the job properly.
    ——

    Malcolm, I don’t know you, just have seen you ripped on plenty on here. However, I find this comment beyond absurd. Not all Examiners fill out interview summaries with “talked about the claims”. In fact, if I sit in on an interview, and an Examiner attempts to put that into a summary for me to approve, I’ll reject it, even if it’s a personal interview and I’m saying “I refuse to sign that” in front of the applicant/attorney. As an Examiner, it’s absurd for me, in my opinion, to not be able to put a concise summary on the record. If you don’t do that, what’s the point at all? Nothing then would be binding, and the entire interview was a waste of time. (Some may argue nothing in an interview is binding anyway)

  92. 136

    jguay: “I said interview summary forms.”

    Indeed you did, I stand corrected on that point, and I apologize. A real pity you didn’t point out the distinction earlier. Your exact comment was: “MM, go ____ one. I don’t work that way, and an examiner is the one who fills out the interview summary form.”

    Do you remember what you were atempting to respond to? I hadn’t said a thing about who fills out any interview summary “form” so only you can tell us for certain why you brought it up.

    The context of the discussion was the merits of a system in which Interviews with Examiners are promoted as a way to achieve early allowances, but the Interviews are not recorded. I pointed out how this allows for a certain degree of chicanery to take place off-the-record (as any litigator or sincere prosecutor will admit, since it’s basically a matter of common sense).

    You then indicated that recording Interviews would cause you to shun them (in spite of the fact that good communication skills are the minimal skill set of a half-decent attorney or professional patent agent. Where is the sense of pride, my friend? Being a skilled Interviewer on behalf of your clients is another way to distinguish yourself from your autistic co-worker down the hall).

    You then implied that the Interview Summary “form” filled out by a USPTO Examiner should preclude attempts by Applicants to achieve allowances “under the radar.” I find that suggestion ridiculous, and ironic in view of the subject of this thread (fixing the broken USPTO).

    The bottom line is that both Examiner and Applicants are responsible for summarizing Interviews and neither are qualified or capable of doing the job properly.

  93. 134

    broje: “The one month deadline only comes into play if: (b) the interview occurred after the Applicant filed the response. When does that ever happen?”

    It’s happened to me plenty of times. And guess what? Great way to avoid an appeal or an RCE.

    “Mal, you’re wrong.”

    Sorry, broje. This whole discussion was started by a commenter’s suggestion that only Examiners filed Interview Summaries. That’s incorrect and I pointed out that. What followed was some incredibly childish name-calling and goalpost moving about when, where and even how brief the Applicants summary may be.

    But if you can point to a statement of mine in this thread that is “wrong” I’m happy to apologize for the error. I’ve done it before, as you know. Not really a problem for me. And of course I don’t expect any apologies from the trolls.

  94. 133

    “or (b) the interview occurred after the Applicant filed the response. When does that ever happen?”

    That is what I meant by an interview happening when “the ball is in the PTO’s court.” It happens, and for a few good reasons that I don’t have time now to explain.

    ——

    agreed – it has happened to me a number of times for various reasons

  95. 132

    “or (b) the interview occurred after the Applicant filed the response. When does that ever happen?”

    That is what I meant by an interview happening when “the ball is in the PTO’s court.” It happens, and for a few good reasons that I don’t have time now to explain.

  96. 131

    Mal, you’re wrong. Admit it again.

    What LeMieux said was that the Applicant only has to supply the Statement of the Substance of the Interview in the next response. I think everyone understood that to mean the next response following the Interview occurring in the interim between an office action and a response. That complies with form 413’s requirement, “The formal written reply to the last office action must include the substance of the interview.” The one month deadline only comes into play if: (a) the Applicant filed the response without the statement; or (b) the interview occurred after the Applicant filed the response. When does that ever happen?

  97. 130

    “How is this a win for the applicant? You basically have ran the end-around that the Tafas litigation sought to stop – your method merely dumps the burden of examination on the applicant just as suredly as the Rules package meant to do.”

    Not really, you can always take your chances if you don’t feel like doing a search. Under the rules, you wouldn’t have that option (at least you wouldn’t if you wanted to file a whole lot of claims.

    Never the less I don’t really see how his plan helps the examiners…

  98. 129

    LeMieux: “While I applaud the spirit of the above, there is no such thing as a “due date” on applicant’s written statement, simply in the next response.”

    Not true.

    From PTOL-form 413 (Rev. 04-03) (an Interview Summary after Final sent with a Notice of Allowance):

    “If a reply to a last Office Action has already been filed, APPLICANT IS GIVEN A NON-EXTENDABLE PERIOD OF THE LONGER OF ONE MONTH OR THIRTY DAYS FROM THIS INTERVIEW DATE, OR THE MAILING DATE OF THIS INTERVIEW SUMMARY FORM, WHICHEVER IS LATER, TO FILE A STATEMENT OF THE SUBSTANCE OF THE INTERVIEW.” (emphasis in original)

    Let’s put it this way: if you docket this date and respond in a timely manner you are not a “m0ron” or an “axxwipe”. If you choose not to docket the date and there are other fishy/sloppy aspects to your prosecution, then you’ve just set the patent up to be unenforceable.

    All of this back-and-forth summarizing, of course, could be avoided by simply requiring that all Interviews be transcribed. Eventually, that will certainly become the norm. Why not now?

  99. 128

    “What this means is that one had better know what the art is and had better made sure that the claims are in condition for allowance or you will not be getting a patent.”

    How is this a win for the applicant? You basically have ran the end-around that the Tafas litigation sought to stop – your method merely dumps the burden of examination on the applicant just as suredly as the Rules package meant to do.

  100. 126

    “One more thing, I examined in the Office before computers were given to us, and it is admittedly true that we have had a significant productivity boost due to the introduction of computers for searching, reading, and writing cases.

    But, I also believe the resulting productivity boost does not come close to balancing the increased complexity of examination, because the Office has consistently increased the work burden for each office action over time.”

    I feel that. I hear about the “old days” before computers and think it sounds wonderful…all of things I had to search were there in a “shoe” (or two). The search was bounded. I’m sure I’m idealizing it, but I DO feel like it’s getting harder and harder to know what a “good” search is when we literally have the entire world to search via the web. The Koreans have done an amazing job with their patent office website (KIPO) and I thank them for that. But I also curse them, because now I feel as though I’m not doing a “good” search unless I search it in addition to my normal search (especially because I get so many applications from Korean companies).

    The applications are more complex, there’s more to search, the classification system is outdated, the count system is outdated…it doesn’t surprise me that there are complaints about what’s coming out of the PTO. I don’t want to whine, I want to fix it. Regardless of what Director Kappos does, at least he’s trying. Hopefully, we can keep the momentum going.

  101. 125

    Wait a cotton pickin minute. RCEs are the biggest problem today. If the PTO wants higher quality patent applications they should look to the bankruptcy procedure for guidance. On your first try you get an automatic stay. If your case is dismissed and you have to refile your automatic stay lasts only thirty days. If you case gets dismissed again, there is no automatic stay; rather, you have to prove that you are entitled to a stay.

    The patent procedure could be made analogous. Upon the initial filing, you are entitled to a presumption of patentability unless the examiner submits a prima facie case, which you attempt to rebut or overcome. Standard prosecution. You get one free amendment. If you file an RCE, your presumption of patentability is lost with respect to art already on record. If the art of record before the filing of the RCE is used to substantiate a rejection, the first office action after RCE may be made final. New art submitted with or after the RCE and you get another go round . . . an additional amendment if necessary. If you are required to file a second RCE there is no presumption of patentable subject matter. All office actions may be final after the second RCE. What this means is that one had better know what the art is and had better made sure that the claims are in condition for allowance or you will not be getting a patent.

    What this does is clears the USPTO’s docket and establishes clearly that which is going to be patented from that which will not. It will also bring to light in a more expeditious manner the cases written with care from those just thrown together.

    I think the foregoing is the best way to handle the entire system. If you think about it, it will cause applicants to be more careful about the prior art that they will file, based upon the consequences of filing a second RCE. This should result in applicants being provided with better patent applications upon initial filing, i.e., no more filing without a search.

    As a result, you are not required to search, as prosectuors desire. The prior art made of record would be better scrutinized, as Moatz’s desires. The onus of the examing corp is relieved, as they desire. It’s a win-win-win situation.

    Let me know what you think.

  102. 124

    I really appreciate the examiner contributions to this thread. Hope to see posts from more of you.

  103. 123

    Someguy, It all comes back to the search and the classification.

    For the EPO, the concept defined by technical features A+B+C+D is the SAME invention, both in the apparatus aspect, means for A-ing, means for B-ing etc and in the process aspect with the steps of A-ing. B-ing etc.

    But ABCE is a different invention.

    Hence there is room in an EPO case for several independent claims in one application and no need for division or restriction. You can have only one independent claim in each “category” but that’s enough, given how scope of protection is adjudicated rationally, in national courts, after issue, downstream.

    A second independent claim in the same category either defines a different invention, say ABCE, or the same invention ABCD, but using different words, which of course renders the whole document unclear and ambiguous.

    The USPTO can’t even begin to work towards this level of simplicity because of

    1) interference from the courts

    2) the database for searching

    3) the statutory provisions of 35 USC 112 “means + function”

    4) the impossibility under the existing rules of getting to closure in the first run through examination.

    It must be all very frustrating inside the USPTO, especially when you have a look how the EPO does it.

  104. 122

    MaxDrei,

    Oral Proceedings at the EPO is exactly what I was thinking of with my proposal of allowing examiners to send cases that were being strung along to the Board. When I first heard of it from an EPO examiner I couldn’t believe how good those guys had it.

    In fact, the EPO have several procedures that I’d like to see adopted at the USPTO, for example, limits the number of independent claims examined. Heck, I’d be happy just to get the same amount of time to examine a new application that the EPO gets. Granted it’s been a few years since I talked to anyone there, but the last time I compared production requirements with someone examining the same art as what I examine at the EPO, it turned out that the EPO gives more than twice the amount of time to do that initial examination than what the USPTO gives. They don’t have RCE’s at the EPO, so sort of it all balances out at the end, but with the amount of time the EPO gives their examiners it really is feasible to do a thorough search that first time around as compared to the USPTO. The USPTO wants that thorough search done at the onset, it’s in the MPEP, and with this new production system which gives less credit for RCE’s, it pushes that really hard, but unless examiners are given adequate time to do that initial examination, good luck getting that on a consistent basis.

  105. 121

    “Maybe this is one reason why RCE churning is happening, to whatever extent it is happening.”

    The pdf shows that 27% of cases go to RCE. Someone up thread suggested that those numbers are somewhat skewed because of a disproportionate number of new examiners, which I’m sure is true. Clearly the new system will be a boon to new examiners. The guy who hasn’t examined a new case in 2 years is an anomaly. Whatever art unit that is, they’ve got some serious problems.

    I’m ambivalent on this new scheme. The long term effects on an examiner, whether positive or negative, from implementing it are slight. I buy into the argument that the count system needs to be revamped. However, as others have pointed out, the crux of the problem is outdated hours/BD numbers that vary with technology and art unit. I have no doubt that if the PTO’s management thought that an honest re-evaluation of the expectancy numbers would work out in their favor, they would have made changes to them in the last 30 years. The fact that they haven’t, even in the face of the great leaps in technological advance of the last 30 years, suggests that they know the numbers are significantly low, much more so than the token 1-2 hours they now propose to add. Of course, to anyone presently examining, this isn’t news.

    The practical effects of low examining hours per BD are that 1) overall quality declines, and 2) examination gets done in piecemeal fashion over the course of multiple actions. Sure, we want to do an extremely thorough search before the first action and find the best art, but this is very time-consuming. If you’re running out of time, and you have art that isn’t great but will suffice, you make the rejections in view of what you have. Thus, a majority of the search happens before the first action, but a significant portion of the search gets pushed off until after the RCE.

    I have a hard time getting a grip on the facts and merits of a case prior to RCE unless the claims are fairly specific in scope. By the end of the first RCE round, I usually am familiar enough with the field of the invention to say with a reasonable certainty what is out there and what PHOSITA would or would not find obvious. That’s not because I want to milk an RCE out of anybody, it’s just a matter of the time I have invested in the case.

    When I ran my numbers, it worked out to a 1% production increase under the new system. However, getting a case examined entirely before RCE still represents getting the case examined in approximately half the time given to a case that goes to RCE. This system isn’t going to have much of an effect on the (real or imagined) “RCE gravy train”.

  106. 120

    About the classification system…

    I don’t know when the last time the subs I work were reclassified, but since they were there has been an explosion of filings and many subs are polluted with 2000+ refs in them, making a classification search practically useless. It would take a lot of money, but if they could do a re-class every couple years or so, it would speed up the search dramatically (when a re-class is done, you put no more than FIVE pieces of art in each sub.) Once the initial re-class was done, it would be a lot cheaper to maintain.

    “Why not a percent increase of time across the board rather than a set number of hours for everyone?”

    I have wondered that too. People in exercise machines will benefit disproportionately to those in AI, for example.

    About transfers…

    This is one thing that has not been addressed in the reform so far. All too often an examiner will get saddled with a case that they have no expertise in. Like a EE with a fluids case, or a Mech with a ChemE case. There is absolutely no way to get somebody more appropriately skilled to take it, and as a result everybody loses – both the examiner AND the applicant.

  107. 119

    Thanks hotel. Bet you wish you could handle such cases like an Examining Division does at the EPO. After the first junk response it issues a Summons to “Oral Proceedings”. As representative, you turn up, to be served with a Refusal Decision. You can take that on appeal but it avails you nothing, because there is no Court of Law standing over the EPO Boards of Appeal and reversing what they decide. Heaven, eh?

    Up to now, Applicants wanting to string prosecution out until the end of the 20 year patent term just keep on filing divisionals, generation after generation. But the EPO has just plugged that little loophole. The EPO (that is, the EPO’s Administrative Council on which sit the Commissioners of Patents from the 36 Member States) makes up its own Rules, you see.

    EPO Examiners have no idea at all, just how lucky they are.

  108. 118

    It all comes back to one thing: how to search and find the most relevant art. If an Exr lacks a tool to do that, he/she might as well go home. Or issue junk patents.

    —-

    Max, couldn’t agree more. Some Examiners I know would take issue with the “or issue junk patents” clause here, and they’d blame the attorneys for presenting junk claims (or spec/figs, etc.). However, my response is always “If the claims/spec is junk, why would you be allowing it anyway?”. Granted, sometimes an applicant/attorney absolutely believes they have a patentable invention, even though there’s no way it’ll happen, and these cases are some of the most notorious for dragging out over the course of years (I have a few of these myself, two related cases both on 4th RCE’s, but the cases are only 5 line independent claims on really generic structures).

    For cases like this, I’ve suggested directly to the attorney that they should appeal if they want this to go anywhere, because I will not allow because nothing in the spec or claims is allowable. Attorney’s response was “I agree with you, but the applicant doesn’t so I’m just doing what they want me to do.”

  109. 117

    “Classification needs to stop being contracted out and put back in the AUs. Contractors never seem to be able to construe claims and blindly put crap anywhere they please. ”

    classification, at least in my TC, is done entirely by Examiners and SPEs (usually the SPE delegates Examiners to do this work, I am one of those people) – It’s just another thing to deal with on top of production/workflow demands for those Examiners that do classify cases.

  110. 116

    MM and others: The change is granting time for EXAMINER-INITIATED interviews. In 12 years of examining, I have always been allowed to take an hour of other-time for any applicant-initiated interview, done in person or by telephone. The interview must have been “documented”, which is to say made of record by mailing the interview summary form. As with so many other things in the USPTO, this practice is not well documented and could differ among supervisors.

  111. 115

    It all comes back to one thing: how to search and find the most relevant art. If an Exr lacks a tool to do that, he/she might as well go home. Or issue junk patents.

    That’s why the EPO simply refuses to search those areas where the USPTO Examiners are struggling. It hasn’t got a tool for searching the subject matter (such as methods for doing business) barred from patentability by the European Patent Convention. Has the USPTO got such a tool? Somebody on this blog said about a week ago that it does. But I doubt it still.

  112. 114

    A First look,

    Page 4 of the proposal adds 2 hours of examining time equally across-the board to all utility examiner’s Hrs/BD (BD=Balanced Disposal, = 2, 1 for FAOM + 1 for Abandonment or Allowance) at their position factor (position factor = adjustment to Hrs/BD to account for experience level, e.g., GS-14 Primaries get less time for examination than GS-12 Examiners, this is the system and it is fair and appropriate).

    Analysis:

    The across-the-board feature of adding an equal 2 Hrs is unfair because it contradicts the founding premise of the present Hrs/BD and count system, because it gives proportionally more time to arts that are simpler to examine.

    For example,

    In a hypothetical relatively simpler Art Unit where the Hrs/BD = 12 for a GS-12 examiner, the extra 2 hours represents a 16.7% increase in examining time.

    In another, relatively more complex Art Unit where the Hrs/BD = 31.5 for a GS-12 examiner, the extra 2 hours represents only a 6.4% increase in examining time.

    The simpler art gets almost 3 times the extra time than a complex art !!!

    Does this seem backwards to you?

    The existing differences in Hrs/BD in the present system are based on the premise, and fact, that some arts are simpler to examine, and some are more complex.

    The present proposal ignores this basic difference.

    It is patently unfair (no pun intended) to reward examination of simple art at the expense of complex art, but this is how this feature of the proposal will be viewed by the patenting corps.

    So, as a Primary in a complex art I will not support this feature of the proposal.

    In fact, even if I were a Primary in a simple art I still wouldn’t support the proposal because it is inherently unfair, and would decrease morale instead of improving it.

    Here’s why I believe we need a re-examination of the production Hrs/BD across the corps for all art areas.

    Since the time software was re-appraised and then considered to be necessary or worthy of patent protection, this change threw a monkey-wrench into our workload (added complexity) in the following ways:
    The applicant is claiming software based strictly on the software’s functionality, e.g., a module for accomplishing x, where sometimes “x” is a simple function and sometimes “x” is a very complex function.

    In the hardware realm, apparatus that was capable of performing function “x” was made-up of standard components, e.g., flip-flops, registers, logic gates, etc., which were relatively easy to search for because these components had industry standard names and symbols so they could be located in a search in the text of a reference or found in the drawings of a reference.

    This is not true of a software module which has an arbitrary name in the specification and if it does appear in the drawings, it will appear simply as a labeled box.

    Now, applicant can call his software module anything he likes, there isn’t any industry standard for naming software modules, so that a detailed search based on the functional description likely won’t find the claimed module. The prior art patents don’t describe software modules very much at all, and one box pretty much looks like another.

    Oh, to be sure there are limited exceptions, for instance a device driver, but the applicant doesn’t have to call his new software module a device driver, he can call it by any name he likes.

    So, my question to you is, how do you search the prior art for a specific software module whose only defining characteristic is that it performs function “x”?

    The answer is that you can’t.

    Now, as an examiner, I do not object to examining software based patents. I will gladly examine whatever the Office says to examine.

    I’m simply saying that in my experience the tools we have do not permit us to effectively search the prior art for most of the software that’s being claimed, and even if we think we’ve found it, the mapping usually isn’t very good (not like with hardware) so it’s difficult to convince the attorney that we’ve found it.

    And, I believe this fact has contributed to the public perception that we are allowing bad patents.

    Additionally, I don’t have an answer to this basic problem, I wish I did.

    But, I don’t see in any of the patent blogs I regularly read any instance of this fundamental problem being mentioned.

    Back to the proposal, I think we need a re-appraisal of the amount of examining time each art area should have based on the actual complexity of art being filed and capability of tools to deal with that art.

    One more thing, I examined in the Office before computers were given to us, and it is admittedly true that we have had a significant productivity boost due to the introduction of computers for searching, reading, and writing cases.

    But, I also believe the resulting productivity boost does not come close to balancing the increased complexity of examination, because the Office has consistently increased the work burden for each office action over time.

    I’m not saying that’s a bad thing, I’m saying the examination burden has increased, and not by a little.

    Maybe this is one reason why RCE churning is happening, to whatever extent it is happening.

    That’s my sincere conviction, your mileage may vary.

  113. 113

    “Frustrated”, what percentage go to a second RCE?

    Also, when your friends leave, where do they go to work, out of curiosity?
    ===================================
    2nd RCE is less, i didnt count it, maybe 5-10%
    Some will be allowed/abandoned/appealed in 1st RCEs process line.

    Some goes to Law school/Engineer/Law firms/Engineering School/Med school….
    depends…

  114. 112

    “Frustrated”, what percentage go to a second RCE?

    Also, when your friends leave, where do they go to work, out of curiosity?

  115. 111

    LeMieux: “While I applaud the spirit of the above, there is no such thing as a “due date” on applicant’s written statement, simply in the next response.”

    Anyone care to disagree? Just so we can get everybody’s views “on the record” …

  116. 110

    The new count system just seems have a lot problems..

    At least Business Method and Database group will have a significant production drop unless they allow at first round but it seems very impractical.

    I hardly feeling that the new rule is trying to solve the backlog problem rather then just forcing examiners to allow.

    If the new rule/count system is applied, i would predict many groups will be in problem since the nature of some cases to be examined are abstract and hard to allow…

    Way more then 25% of my cases goes to RCE, possibly 40-50%, and my group is easy to allow cases, i would say….the new rules just seems taking too much advantage on examiners…

    if they say they wanted to improve examining quality, why would they cut hours?

    some of my RCEs are just totally entire new set of claims and i get less credit for it..

    If new rules applied, i can definitely imaging examiners leaving, i just do not want see my friends go again ( Not me though, i made 115% this year :) ) but i am still worried

    Problems are awaiting if new rules applied..
    Good luck..Examiners…

  117. 109

    I work in an area where 95% of applications are combinations of things that have already been done. Primaries in my area allow only 20% to 30% of cases. Most of the time, the claims as first presented in my class are so broad they are a joke and in no way are allowable. On the first action I have no way of indicating allowable subject matter. Real examination does not begin until after at least the first RCE and the applicants have amended around some of the closest art. The VAST majority (80% +) of counts in my class come from RCEs. I think everybody in my art unit will get fired with these new rules. :(

  118. 108

    “Why not a percent increase of time across the board rather than a set number of hours for everyone?”

    $$$

  119. 107

    Classification needs to stop being contracted out and put back in the AUs. Contractors never seem to be able to construe claims and blindly put crap anywhere they please.

    The new count systems is a blessing for new examiners who have no disposal counts for 1-1.5 yrs.

    As for improper restriction, that’s more about enforcing the rules that are currently in place rather than changing restriction practice. Also, practioners need to learn the lack of unity rules for 371; you don’t automatically get a right of product/method of making/method of use (those are old rulse). My personal opinion is that restriction helps in keeping prosecution neat until allowance issues, and then rejoinder can be considered.

  120. 106

    ” Prior to last month, I hadn’t done a regular FAOM in about 2 years.”

    Alright now that’s just fed up. You could do a new case just for shts and giggles if nothing else.

  121. 105

    “I didn’t see word one about increasing the number of hours/case”

    As a the first question a computer helpdesk person might ask “is it plugged in?” I similarly ask of you “were your eyes open?”

  122. 104

    I didn’t see word one about increasing the number of hours/case or finding better ways to make searching faster. Without doing either or preferably both of these things this is just shuffling the cards differently.

  123. 103

    “Also interesting is the chart (p. 8) that shows the average mix of FAOMs for the examining corps is 73% regular FAOMs, 20.3% 1st RCE FAOMs, and 6.8% 2nd or later RCE FAOMs. So as far as the RCE churning phenomenon, this suggests that 73% of cases don’t go to RCE, 27% of them do. That doesn’t really sound like the “RCE gravy train” is that widespread of a problem.”

    Typical case of the people-in-charge with no clue how to reason why stats are what they are(No offense, Kappos).

    If EXAMINER_TENURE lessthan 2yrs, then 100% of counts are from regular FAOM.
    If EXAMINER_TENURE greatethan 2yrs, then 0%-25% of counts are from regular FAOM.

    Because of the recent hiring binge, the new examiners are grossly misconstruing the % of regular FAOMs. Prior to last month, I hadn’t done a regular FAOM in about 2 years.

    I predict this system will shift examiner’s concentration to overall workflow and increase average pendency. Continual RCEs won’t be worth the examiner’s time, so they won’t even bother looking at them. SPEs will waive workflow points or just ignore it.

    What they should do is for every FY take every AUs gs12s and calculate averages across them. Then, for EACH AU, use those numbers to dynamically determine hrs/BD, what counts for what, etc, for the next FY. Or do the grouping of gs12s based on classes examined, for those with split dockets.

  124. 102

    -Regarding the classification system….

    As has been pointed out, some subclasses are far too general. Without being too specific, at least half of my art falls into about 8 subclasses, and the other half has about 70. Some things in the first half can be cross-listed in other subclasses, but most of the basics don’t even have their own subclass. The other problem I run into is redundant classes – for example there are at least 4 classes containing image scaling subclasses. This doesn’t even get into the problem of misclassified pgpubs, which not only makes class searching more difficult/ineffective, but also relates to why lots of applications to end up in the transfer circuit.

    Text searching is not some magic box that solves all the problems with classification.

  125. 101

    Dennis:

    You might want to post an article about the deficiencies of the PTO classification system and how it can be corrected.

  126. 100

    “6, that is so pathetic of the PTO to let subs grow that large. This is a huge problem that is the result of misguided individuals who think classification is old timey stuff compared to text searching. That is, you are dealing with the aftermath of simplistic thinking – that pure text searching is a total replacement for class/subclass searching. ”

    Keep in mind that some subs that I personally have noticed are growing at the rate of 200 references per half year.

    “Speaking for my art, the problem is that the devices are becoming more ‘interdisciplinary’, for lack of a better word. What was once a device based mostly on physics principles, now might also have a bunch of organic chemistry thrown in (e.g., a CRT vs. an OLED). It’s REALLY difficult to examine an application claiming methyl-ethyl-whatever when you’re an electrical engineering major and never had to learn what a polymer is. ”

    Amen to that brother, orgo is the sux. And you’ll have attorneys that many times don’t know any more about it than you do.

    And to be honest with you, we have enough chem e’s to make ourselves special AU’s to handle that kind of thing.

  127. 99

    Litigators get ready – – there’s about to be a ton of invalid sht flying out the doors of the PTO (that is, more than there is now).

  128. 98

    Regarding the classification system….

    Speaking for my art, the problem is that the devices are becoming more ‘interdisciplinary’, for lack of a better word. What was once a device based mostly on physics principles, now might also have a bunch of organic chemistry thrown in (e.g., a CRT vs. an OLED). It’s REALLY difficult to examine an application claiming methyl-ethyl-whatever when you’re an electrical engineering major and never had to learn what a polymer is. But if the most comprehensive claim is drawn to a device in your class, you can’t transfer it. The best you can do is ask for help from people who know such things, but of course, this takes extra time for all parties involved, which is not something readily available at the moment.

    I wish I knew how to improve it. Class searches have proven invaluable to me in many cases. I’ve been looking at the IPC system to see if it’s any better, but I’m not convinced.

  129. 97

    “It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, except where the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form (PTOL-413B) that the examiner will provide a written summary.”

  130. 96

    Mooney says … “it certainly is misleading (and incorrect) to state that “the Examiner is the one who fills out the Interview summary.” ”

    What a freakin’ m0r0n. The Examiner is generally the only one to do an Interview Summary.

    You really don’t know what you’re talking about do you…?

    Why are you even here?

  131. 95

    “If your goal is to keep potentially damaging arguments, admissions and other statements off the record, there is no better way to prosecute than to use the Interview process as often as possible.”

    Mooney, you don’t make sense. You’re such a freaking a$$-wipe. There is nothing that you can do that would be persuasive in an interview that you could “keep off the record.” Why? you might ask…

    For the very reasons you artlessly articulate below (for all the wrong reasons). E.g., that the applicant is required to include the reasons from the interview in the next response (and even if he wasn’t “required” to he would be a fool not to). Further, there is no rule regarding how brief such a written statement needs to be.

    “Don’t pay attention to the troll, folks. Better to acquaint yourself with 37 CFR 1.113(b): ” In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action **must be filed by the applicant**.”

    Typically those summaries are due within one month of the Interview.”

    While I applaud the spirit of the above, there is no such thing as a “due date” on applicant’s written statement, simply in the next response.

    Essentially, you have proven for me what I have told you all along, that there is nothing to worry about with regard to interviews. Anything meaningful that happens winds up in the written record anyway.

    Its like someone unscrewed your head, stuck you neck up your a$$ and screwed it back on backwards from the inside. Everything that comes from you is convoluted, twisted and just plain WRONG headed (and foul smelling to boot).

    Note to self: NEVER rely on a “legal opinion” generated by Mooney.

    I’m with “don’t bother;” and, for the record, with regard to Mooney, I won’t bother any further.

  132. 94

    I should have included “applicant initiated” before “interview takes place” in my last post.

  133. 93

    Anyone have any idea why they added 2 hours across the board for examining time? It seems like an arbitrary number and the benefit across tech centers are not well proportioned. To someone who gets 16hrs/disposal, 2 hours is more beneficial than someone who currently gets 30hrs/disposal.

    Why not a percent increase of time across the board rather than a set number of hours for everyone?

  134. 92

    If the ball is in the pto’s court, and an interview takes place, the applicant also must file a summary of the substance of the interview within 30 days. Otherwise, the applicant must address this in the next response, unless indicated otherwise.

  135. 91

    “I’m thinking that some Applicants (pharma) really do want to delay issue as long as possible. Making Rules that “work” for those who would string prosecution out interminably if they could, and work just as well for those impatient to see cases going to issue with despatch, strikes me as very difficult for the good Mr Kappos to engineer. In other words, what is a “stick” for one Applicant is a “carrot” for another.

    Does your proposal work, in that sense?”

    It would take an act of Congress to deprive applicant of their right to a patent, so I guess with my proposal, whether or not the delay would be a carrot or stick would have to be something that the SPE/Director would have to take into account when deciding whether to give the ok to send to the Board. Perhaps if the applicant lose, they also lose any patent term adjustment they might have earned for the current case. Patent terms are calculated from earliest effective filing date if I’m not mistaken, so if they delay long enough there could be more stick than carrot.

    By the way, correct me if I’m wrong, but doesn’t the EPO have something fairly similar in place to what I’m proposing already–the examiner being able to say, enough is enough I mean.

    “Lol wut? So I’m supposed to guess what unreasonable ways an examiner might tie together references now? And I get finaled if the examiner thought it was reasonable to tie together 4 references, including a reference directed to a dvd drive and a reference directed to an oven timer?”

    1. Some attorneys are able do so now with accelerated examination documents. Is your point that we shouldn’t require attorneys to submit claims that are at the very least allowable over the prior art already of record because it would be too hard for you? If the examiner’s combination is incorrect or unreasonable, then you should be able to successfully argue that and have the case reopened or appeal since it’s under final rejection.

    2. Plenty of attorneys and those in management at the PTO expect examiners to do a good enough search the first time now where they can predict every and all possible limitations that could be brought in from the spec by the attorney later on. Are you saying that you should be held to a lower standard than examiners?

  136. 90

    MPEP 713.04:

    Examiners must complete an Interview Summary form PTOL-413 for each interview where a matter of substance has been discussed during the interview by checking the appropriate boxes and filling in the blanks.

    ….

    EXAMINER TO CHECK FOR ACCURACY
    Applicant’s summary of what took place at the interview should be carefully checked to determine the accuracy of any argument or statement attributed to the examiner during the interview. If there is an inaccuracy and it bears directly on the question of patentability,
    it should be pointed out in the next Office letter. If the claims are allowable for other reasons of record, the examiner should send a letter setting forth his or her version of the statement attributed to him or her.

  137. 89

    Malcolm,

    This is from MPEP 713.04:

    It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview in each case unless the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form, PTOL-413B, that the examiner will provide a written summary. Where an interview initiated by the applicant results in the allowance of the application, the applicant is advised to file a written record of the substance of the interview as soon as possible to prevent any possible delays in the issuance of a patent. Where an examiner initiated interview directly results in the allowance of the application, the examiner may check the appropriate box on the “Examiner Initiated Interview Summary” form, PTOL-413B, to indicate that the examiner will provide a written record of the substance of the interview with the Notice of Allowability.

    In the old days, I would frequently ask the examiner to “check the box” that indicated that no summary of the interview was required.

    I think they’ve changed that PTOL-413B since then. I’m not sure. I don’t conduct many interviews anymore as they are a waste of time. The real decision makers from the PTO are never actually the interview, so why bother?

  138. 88

    “Then a notice-of-allowance issues, with a “reason for allowance” like “references A, B, and C don’t disclose the features of claims 1-12″, in complete contradiction of 4 previous office actions.”

    Shame on the examiner too.

  139. 87

    Thanks, db, my finger slipped when I typed the code number.

    As for the rest of your comment, it’s interesting but the rule is the rule and it certainly is misleading (and incorrect) to state that “the Examiner is the one who fills out the Interview summary.”

    Can you tell me where you found support for your statement that “the examiner may waive the requirement of Rule 133(b) if the agreement reached during the interview results in the application being in condition for allowance”? Is that just personal experience? I typically find that the circumstance you described is the case where the applicant’s Interview summary is demanded (in the form accompanying the Examiner’s own summary of the Interview).

  140. 86

    “”Discussed patentability of claims 1-12 in view of references A, B, and C” is pretty typical. Then a notice-of-allowance issues, with a “reason for allowance” like “references A, B, and C don’t disclose the features of claims 1-12″, in complete contradiction of 4 previous office actions.

    Posted by: BigGuy”

    That’s some good lawlyerin!

  141. 84

    “I can tell you that in my many years of practice reviewing files of patents in the context of litigation or for the purpose of drafting Opinion letters, I routinely see poorly summarized interviews (or worse, poorly summarized, lengthy in-person presentations).”

    Howard Johnson is right. This seems to be particularly true for patents in the communications field in the late 90’s. “Discussed patentability of claims 1-12 in view of references A, B, and C” is pretty typical. Then a notice-of-allowance issues, with a “reason for allowance” like “references A, B, and C don’t disclose the features of claims 1-12”, in complete contradiction of 4 previous office actions.

  142. 83

    “Better to acquaint yourself with 37 CFR 1.113(b)”

    I think you mean Rule 133, not Rule 113.

    The summary of the interview can be included in the response to the OA under Rule 111. There’s no requirement it be a separate filing. I’m also not sure there is a due date for filing such a summary. (There may be, but I don’t really feel like checking right now.)

    And the examiner may waive the requirement of Rule 133(b) if the agreement reached during the interview results in the application being in condition for allowance.

  143. 82

    Regarding recording interviews, I agree that no application should be allowed on the basis of arguments made orally but not entered into the written record. I do not believe, however, that this mandates every spoken word in an interview should be recorded for the estoppel effect. While the analogy isn’t perfect, I seem to recall from the evidence class I took all those years ago that admissions made in negotiating a settlement are inadmissable. So, at least there’s one example where at attorney can make admissions and not have it held against his/her client. OMG! The horror.

    But seriously, if implemented it’s no big deal. You have to be a moron to make admissions in an interview against your client’s interests. You can’t rely on an examiner not making a record just because it typically does not happen. It would be, however, another time-wasting pain in the ass driving up costs, but oh well, so is the third non-final office action in a row. Successive non-finals seem to be “in” these days. That’s got to hurt production, but it takes less time, I suppose, than wading through an appeal brief only to do so.

    Jules – nice post re:6.

  144. 80

    “In my many years of practice, I have not (knowingly at least) taken advantage of this “mischief.” Maybe I have not been fully representing my clients.”

    I will leave that for you to ponder. I can tell you that in my many years of practice reviewing files of patents in the context of litigation or for the purpose of drafting Opinion letters, I routinely see poorly summarized interviews (or worse, poorly summarized, lengthy in-person presentations). If your goal is to keep potentially damaging arguments, admissions and other statements off the record, there is no better way to prosecute than to use the Interview process as often as possible.

    Pretty basic stuff.

    “I suppose just about everything is “interesting” when you are a simple sleazebag who doesn’t know what he is talking about.”

    Don’t pay attention to the troll, folks. Better to acquaint yourself with 37 CFR 1.113(b): ” In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action **must be filed by the applicant**.”

    Typically those summaries are due within one month of the Interview.

  145. 79

    “The Applicant has the option of filing a Notice of Appeal and then filing an Appeal Brief. How is that not ‘forcing’ the PTO to take a bad rejection to the BPAI?”

    Are you serious? 37 CFR 41.39 says that the examiner MAY, within such time as may be directed by the Director, furnish a written answer to the appeal brief… The alternative is to re-open prosecution. As has been discussed many times here, this alternative is FREQUENTLY used. Furthermore, note that 37 CFR 41.43 says that if the applicant is foolish enough to file a reply brief after the examiner’s answer, then the examiner is again allowed to withdraw the final rejection and reopen prosecution! I’ve seen this happen as well.

    Bottom line – an applicant can’t force the PTO to take a bad rejection to the board.

  146. 78

    “The applicant can’t force the PTO to take a bad rejection to the board.”

    The Applicant has the option of filing a Notice of Appeal and then filing an Appeal Brief.

    How is that not “forcing” the PTO to take a bad rejection to the BPAI?

  147. 77

    “I don’t follow your logic. If the applicant doesn’t amend, but files an RCE, then go final on the first action after the RCE. What’s the problem?”

    You are correct. See MPEP 706.07(b). I write “First Action” Final Rejections after RCEs quite often, and I thoroughly enjoy it.

    If there are any examiners or SPEs reading this, then I want to encourage you to start using MPEP 706.07(b) to your full advantage by writing as many “First Action” Finals as possible (if appropriate, of course).

  148. 76

    maybe the number of counts issuing on the first OA on the merits in original applications should be increased slightly?

  149. 75

    “Oh, so you don’t submit your own interview summaries?

    That’s interesting.”

    I suppose just about everything is “interesting” when you are a simple sleazebag who doesn’t know what he is talking about.

  150. 74

    “What is this “mischief”? Please give examples.”

    Making an argument consistent with a narrow interpretation or one that would create estoppel (e.g., “widget 60 in the cited art is an element A, as recited in claim 1 because of this, this and this”), but somehow not making those clear disavowal statements in the interview summary.

    So if you’ve ever distinguished a prior art component from a claimed feature in an interview, you’ve painstakingly made that clear in an interview summary? Please.

  151. 73

    If the BPAI did not have such an inexecusably horrendous backlog, I would file more appeals and fewer RCE’s.

  152. 72

    I would appreciate if examiners would post comments on what needs to be done to improve the classification system and how examination would thereby be improved.

  153. 71

    “A lot of mischief can occur in interviews that are not adequately summarized.”

    What is this “mischief”? Please give examples.

    In my many years of practice, I have not (knowingly at least) taken advantage of this “mischief.” Maybe I have not been fully representing my clients.

  154. 70

    I really don’t have much sympathy for “AU’s who rely on RCE’s currently to meet production.”

  155. 69

    anon and MM, I personally insist that the reason an examiner allows a claim based on a discussion during an interview is summarized in the record. Usually, the argument I am making has already been presented in the record, but the examiner ignores or misunderstands it. Also, a summary of an agreed to issue is adequate – every word spoken in an explanation need not be entered. It would otherwise be unworkable, or, at best, awkward to record an interview as if at a deposition. I would probably never have one if this were the case.

    I agree that it should never seem like the amazing Kreskin performed some magic on the examiner. I know others feel differently about this, but the examiner can and should make sure the summary is adequate. It usually takes only one or two sentences (and not simply “discussed case”).

  156. 68

    6, that is so pathetic of the PTO to let subs grow that large. This is a huge problem that is the result of misguided individuals who think classification is old timey stuff compared to text searching. That is, you are dealing with the aftermath of simplistic thinking – that pure text searching is a total replacement for class/subclass searching.

  157. 67

    Mr. Mooney wrote, “In other words, you want to be able to present your particular views re, e.g., claim construction to the Examiner without any consequences whatsoever, unless those consequences are 100% favorable to you.”

    Every once in a while, I agree with Mooney. A lot of mischief can occur in interviews that are not adequately summarized. And what percentage of interviews are not adequately summarized? I’m guessing 99%. Any estoppel-inducing comments during the interview won’t be recorded because the examiner is too busy and the attorney isn’t going to put that stuff in the summary.

    Every other kind of lawyer can speak in open court and deal with the consequences, but for some reason, patent attorneys shudder at the thought that they might be held to something that came out of their mouths. God forbid!

    Some opponents would argue that recording interviews would deter interviews and increase pendency and backlog. Well, every other kind of lawyer has a court reporter, and they seem to do just fine. I think we’d be able to figure it out.

  158. 66

    Oh yes, 2800 brings up the concern I had forgotten last night.

    What about all the final cases that I did last year? Do I get a full count when it goes abandoned or do I get .5 counts? It’s going to take quite a bit of work to automate handling that mess and with our budget I didn’t think we had any money for that stuff.

  159. 65

    “Nowadays, I get a 102 rejection that is wrong. I counter, sometimes amending to clarify a point that I can see could lead to trouble down the road. In return, I receive a 103 final rejection. In order to advance prosecution, I am forced to file an RCE.”

    That is a direct result of a “policy” of presenting only the best rejections as subjectively determined by the examiner. If you’d rather have 6 rejections per ind per FOAM then get us the time to write them and we’ll do it. Supposedly that policy is to save you guys time writing responses as well.

    “By thorough I mean searching the relevant subclasses”

    What happens when “the relevant subclasses” contain about 50000+ patents? I’m talking about literally, not figuratively or to be bsing you. This is not a made up number. I can pull a case right now at random from a number of cases on my docket and show you one with the relevant subclasses containing this many refs.

    I’ll tell you what happens. We prioritize based on what you have specifically claimed. Sometimes this means word searching. There is simply no realistic way to take issue with this method. I’m sorry, there just isn’t. And this doesn’t “thoroughly” examine the spec. It examines what are in your current claims. Sorry, it’s the only available method of dealing with the volume of art sans looking through each and every one of the thousands of refs.

    Take for example this kind of claim a friend of mine is working on for instance. A hypothetical claim reads:

    This example removed due to a copyright claim by the owner.

    “Nothing can be perfect, given the amount of time, but your work should pass the laugh test (no-reopening after appeal).”

    These days my work always passes the laugh test. And reopenning after appeal would have no bearing on that. Reopening after appeal would simply be because I made the wrong rejection as the “best” rejection as subjectively determined by my spe and/or conference guy.

    “As time passes and classification matures and evolves, the search time should remain roughly the same. Increased specialization.”

    See that’s what happens in theory, but the classification is STUCK IN TIME at around 1995 or somewhere around there. And even if it wasn’t, you still have the issue of the overclaiming ind. with 5 dependents coming off of it each in their own sub of a thousand patents each BUT it’s all one “embodiment” so there is no species restriction.

  160. 64

    Yes I do. My point is that if the examiner feels there is an issue that needs to be presented, it can and should be presented in the form. Stop assuming everyone thinks like you, MM.

    I think MaxDrei summed this up nicely.

  161. 63

    “It appears, 2600, that you have had too many RCEs in the past. Better change that! LOLOL”

    The real explanation is that I was such a good examiner in FY2008 that I’ve been living off of disposals. Front loading the counts for brand new cases puts that type of production at a disadvantage.
    New FAOM: 26
    1st rce FAOM: 28
    2nd rce FAOM: 3
    Allowance: 25
    Pure abandonment: 19
    RCE abandonment: 30

    I don’t expect much to change. Counts after RCEs are like cake, whereas counts the first go-round are like broccoli. 1.75/1.5 counts aren’t going to make examiners hungry enough to forego that cake.

  162. 62

    jguay: “an examiner is the one who fills out the interview summary form.”

    Oh, so you don’t submit your own interview summaries?

    That’s interesting.

  163. 61

    jguay: “As time passes and classification matures and evolves”

    I’m pretty sure the opposite is happening.

    Classification doesn’t get updated frequently enough to account for new areas of art, and existing rapidly-growing subclasses don’t get sub-subclassed to reduce subclass size. All the while, more and more patents and publications are getting classed in these places (and many of the publications are misclassed, frequently in the wrong subclass but sometimes even in the wrong class altogether).

    When a class or subclass “matures”, it’s a sure sign that the relevant art is also mature (or even obsolete).

  164. 59

    I went through the trouble of calculating my production using the new system (a lot of work especially since I also have a split docket). My results are (with 1445 examining hours):
    New system: 110.45%
    Old system: 114.35%

  165. 58

    “In order to advance prosecution, I am forced to file an RCE. …
    Filing an RCE in a case is now the routine and not the exception.”

    This is like feeding the pigeons and wondering why they keep cr@pping on your shoes. File appeals!

  166. 57

    6, your job is not to search every patent. By thorough I mean searching the relevant subclasses, which is usually spelled out in the classification manual (but I’m not sure if this is still done). You also should use text searching in a meaningful way to eliminate references in very large subclasses (which in theory should not exist – another PTO problem). Nothing can be perfect, given the amount of time, but your work should pass the laugh test (no-reopening after appeal).

    It takes experience, sure, but inexperienced examiners are given more time per BD to account for some of this (bite the bullet on the rest like every working stiff).

    As time passes and classification matures and evolves, the search time should remain roughly the same. Increased specialization.

    MM, go ____ one. I don’t work that way, and an examiner is the one who fills out the interview summary form.

  167. 56

    Here’s what I consider to be the basis for the RCE problem. It used to be that I would get both 102 and 103 rejections for the same independent claims. That would allow me to understand the examiner’s reasoning, point out why the 102 rejection was wrong (90% of the time), and amend if necessary to overcome the 103 rejection. That’s a good start to prosecution.

    Nowadays, I get a 102 rejection that is wrong. I counter, sometimes amending to clarify a point that I can see could lead to trouble down the road. In return, I receive a 103 final rejection. In order to advance prosecution, I am forced to file an RCE.

    Filing an RCE in a case is now the routine and not the exception.

    So if any of Kappos’s changes improve the quality of first actions, I will applaud loudly.

  168. 55

    “– yeah, that’s a lot of work”

    Actually it can be a lot of work. Tracking down your specific little piece of art from NPL citation backwards searching takes time. Trust me. Yet it is a very effective way to get great results.

  169. 54

    “Of course, you have prioritized the mandated search, that’s understandable – but that mandated search is not just the claims as you want to hold. The rest is not “gravy”. It is the LAW.”

    Well fine then Noise you can fire my whole TC for not ever doing a “thorough” search as per your lawl. I don’t have a problem with that.

    Why don’t you just sit still and admit that you have no problem with my way of searching and that you just talk simply to argue with me. I assure you that were you to find yourself doing exactly as I just told you happens (quite frequently actually) then you yourself would be the one requesting that I search additional subs or go back through the hundred loosely related refs that I have saved for your app. And you’d request it as soon as I brought the issue to your attention. For all your nonsense I know how your kind behaves irl. That’s why you’ll never debate me irl.

    And Jules, so sorry about junking up your precious interwebz. Besides, these are really my interwebz so far as I can see and I can junk them up all I want to. In fact, I’m not completely convinced you even have any interwebz at all, from my point of view they’re all mine and they likely exist inside of this machine right beside me. It was late at night and I was rather excited to learn the news.

    “6, dude, the bi-week ends at midnight Saturday. ”

    Kappos gets to decide when it “ends”. Make it end at 5 on Fri. How hard is this? Jeus, you guys are like little children.

    In fact, just throw that change into the “proposal” and I’m sure the fat man will sign off on it no problem since he’s already in love with the nonsense currently in there.

  170. 53

    XMNR,

    thanks. You beat me to it with the response. Glad to see others that do not fall into 6’s warped ways of thinking & doing the job.

    MVS

  171. 52

    “Back to this again? C’mon 6, you want more LAW beating?”

    6 isn’t the only one who doesn’t do examinations that are as thorough as you would like, Noise. Those few examiners who don’t learn *not* to be that thorough usually quit before they get fired for not making production.

  172. 51

    “Just ne thing: I don;t see any discussion o fAttorneys who depend on RCEs for fees, and will not amend nomatter how many interviews the Examiners have to encourage this. How about this side of things?”

    Hmmm… I’m doing just fine with fees for responding to one action-after-reopening-of-prosecution after another. I really don’t need fees for filing RCEs, thank you.

    Besides, I don’t follow your logic. If the applicant doesn’t amend, but files an RCE, then go final on the first action after the RCE. What’s the problem?

    The PTO can force an applicant to take a bad case to the board. The applicant can’t force the PTO to take a bad rejection to the board.

    Is there something you’d like to add to “this side of things”?

  173. 50

    6 said: “So change it to fri at 5, not sat at 12. Why half as everything we do here?”

    First, MVS – thanks for setting 6 straight on reviewing cases.

    6, dude, the bi-week ends at midnight Saturday. You are allowed to work regular examining hours on Saturday. Therefore, the deadline is midnight Saturday. They couldn’t make it before that or POPA would (rightly) scream their heads off.

  174. 49

    XMNR,

    Nice job – I appreciate an examiner who can post and not come off like an “unhinged commenter” like 6 and Malcolm.

  175. 48

    Inspector: “Where was your outrage at the improper communications with a previous PTO Director by interested parties during an ongoing litigation and related re-exam?”

    Also improper and wrong, and you can find my previous expression of that sentiment in the archives.

    As for the “outrage” I’ll leave that to the unhinged commenters who blow a nut every time they get a rejection they don’t like. I try to keep an even keel.

  176. 47

    Some easy beat on 6 time:

    6, Your famoosity doesn’t seem to be helping you with your own kind:

    Jules: Have you ever heard the saying “Wise men talk because they have something to say; fools talk because they have to say something.” That’s a rhetorical question.

    MVS: “6, the idea of having to turn in a set amount every 3 days is somewhere between naive and utter stup1d1ty.”

    Perhaps the message from Lord Kappos is sinking in and your own kind are realizing what a cancer you are.

    More 6 nonsense:

    “And then there’s nothing anyone can do about it except go back to the old.”
    – Sorry 6, change is here – ain’t no goin’ back. Get used to it.

    “The truth of the matter is, like it or not, the application is simply never going to be “examined” “thoroughly”. The claims are examined “thoroughly”.
    – Back to this again? C’mon 6, you want more LAW beating?

    “So the bottom line is, there are other reasons beyond a simple “this wasn’t searched thoroughly” for the need to re-search the case. And these are not negligable.”
    – Not if you do the job up front that you are required to by LAW.

    “Now you’ll say “well 6 you were supposed to check all 12000+ patents the first time through”. That’s not how things work around here, sorry. We prioritize the mandated search based on where you draft the claims to. The rest of the search is gravy. And when search time runs out, the search is over unless I feel like going above and beyond on my time. “
    – Of course, you have prioritized the mandated search, that’s understandable – but that mandated search is not just the claims as you want to hold. The rest is not “gravy”. It is the LAW.

    “… try to goggle the new ind etc.”
    – yeah, that’s a lot of work

    MaxDrei,

    Notwithstanding your recent slippage into Malcolm worship, I am still reading your comments seriously. In that context, I am responding to your comment regarding Why not go the whole hog? …unrestricted unminuted interviews? What’s wrong with that?”:

    For starters, It’s against the US Rules. See 37 CFR § 1.2 Business to be transacted in writing.

    As to why this is important, see the thread at: link to patenthawk.com

  177. 46

    jguay: ” If I could not do it this way, I would not conduct interviews for fear that every peripheral thing I say in an explanation would be used against me.”

    In other words, you want to be able to present your particular views re, e.g., claim construction to the Examiner without any consequences whatsoever, unless those consequences are 100% favorable to you.

    Sure, that’s fair.

  178. 45

    “For any primary or SPE that came in on count Monday & found 10-15+ cases in their count box (even though they had emptied it on Friday or Sat), or had examiners coming in all Monday morning with “just one more case to get counted” would understand why the change to midnight Sat is needed. I used to often come in on Sunday & make sure everything was counted & would still have a bunch of cases on Monday morning to review. ”

    So change it to fri at 5, not sat at 12. Why half as everything we do here?

  179. 44

    Just ne thing: I don;t see any discussion o fAttorneys who depend on RCEs for fees, and will not amend nomatter how many interviews the Examiners have to encourage this. How about this side of things? And, Judge Michel noted it is 14 companies (including IBM of course) running patent policy. Check out this play: (THE IBM CENTER FOR TH EBUSINESS OF GOVERNMENT) link to businessofgovernment.org

  180. 43

    “Regular amended cases have a two-month deadline for examiner action (one-month for those of us trying for the pendency reduction bonus). Examiner’s must work their oldest “special new” case every other bi-week (each bi-week for the pendency reduction bonus). This plus the reduced count total for RCE cases will mean increased pendency for those applications.”

    That depends on the length of your current special new tab at any given point in time. But you’re right that it *could* cause pendency to increase for those cases.

    “I would imagine that more examiners will make second actions final improperly under the new scheme in order to get the fractional count.”

    Negligable I’d say. With the new found steady stream of counts from finals anyway it shouldn’t be a big deal. Especially not for .25 counts.

    “Andrew, I am not buying any whining about losing RCE counts. If an examiner does a thorough search of the invention at first action, the chances that an RCE will be necessary diminish greatly. ”

    I don’t know man. That just hasn’t been my experience. You can always do more searching, and you’ll always be getting better at searching. That is, if you’re any good at the job. Just like an attorney, someone who has been at it for 40 years usually knows how to argue a case better than a person right out of law school. They got better over time. RCE’s stretch out over the course of years, usually not months.

    Either way though, I don’t think that it matters. Examiners will simply adjust the amount of how much they care about the case. Kappos can give 2hrs for a case if he so desires. The quality of that particular action will reflect the time given. If he wants low quality RCE actions/allowances then so be it. And when OPQA comes a knockin’ the examiner says: You gave me 1.75 counts for a bd (7/8), you got 7/8 quality. And then there’s nothing anyone can do about it except go back to the old.

    The truth of the matter is, like it or not, the application is simply never going to be “examined” “thoroughly”. The claims are examined “thoroughly”. Some arts not withstanding and perhaps speaking mainly only to my art and arts like it. Reason being in large part that an applicant can file an application and have a disclosure so large that it overlaps a dozen subclasses all with thousands of patents in each. What you’ll get, if you’re lucky, is a subclass search on the subclass where the current claims are classified and then a word search through the dozen classes. That’s if you’re lucky and you get a top notch job done. Of course if you file and the case comes to me you’ll also have your first ind claim invalidated by a google search, that’s complimentary. Now, after this is done this applicant can then, at his leisure, cancel all claims and claim an invention classified in a different subclass, but where this is still the same embodiment in the app (thus restriction severly frowned upon even if a combo/subcombo will work). This can, and does happen all the time. The entire case is now reclassified simply by changing the claims, and this mandates that different subs be searched in their entirety.

    In addition to these “I just changed the “invention” so much that the classification is now completely different” amendments, you’ll see the amendments where you’ll still be searching in the same subclass, or in your cases that you flagged from the previous search, but that will still require substantial work to handle properly. These include inherency situations where you may need additional extrinsic evidence to convince yourself or put on the record, some recitation of a range of values, amongst others. Those kinds of searches, especially if the limitations are now in an ind (where using some caselaw about ranges is frowned upon) take substantial time to sift through, even if you already have a pool of refs to look through.

    So the bottom line is, there are other reasons beyond a simple “this wasn’t searched thoroughly” for the need to re-search the case. And these are not negligable.

    Now you’ll say “well 6 you were supposed to check all 12000+ patents the first time through”. That’s not how things work around here, sorry. We prioritize the mandated search based on where you draft the claims to. The rest of the search is gravy. And when search time runs out, the search is over unless I feel like going above and beyond on my time.

    Oh and XMNR, I can deny that RCE’s are way way way easier depending on the case. Sure, some are easier (usually these are the ones where substantial narrowing amendments are made) than others, but on the whole, I try to give them their money’s worth in reconsideration. Take a look at the classification, make sure I still agree with what was done previously, try to goggle the new ind etc.

    I won’t say that there are a whole lot of examiners that necessarily do this though. Never the less, you can do it.

    However, I have good news for everyone. I am about to extend my talents to solve the office’s problems.

    In fact, I came up with quite a plan just today. I’ll type it up later. In any event, the FY is over, and it is definitely almost time to go home and sleep. For awhile.

  181. 42

    “Let’s hope that these interviews are limited only to patentability issues (i.e., no time for calls dealing only in formalities)”

    jguay- Why be picky about only giving time for patentability issues? Are you saying formalities don’t take any time to fix? If that’s the case, why do so many of the cases I examine have ridiculous amounts of formality errors? How about we both give the applicant their money’s worth and you proofread the application before filing it, and I’ll spend the time I save (i.e. not checking if reference characters are mentioned in the spec) doing a more thorough examination. Sound like a deal?

  182. 41

    None, you are only hearing part of what I envision for the PTO. I’m not all doom and gloom, lol. There are other things that must be done for this to work realistically.

    And ask the people who knew me there. I had a good time while at the PTO!

  183. 39

    Nothing can go on in interviews that won’t eventually make it into the record. As I said before, next thing you know Mooney will want all cocktail party conversations recorded.

    Where was your outrage at the improper communications with a previous PTO Director by interested parties during an ongoing litigation and related re-exam?

    As I have always suspected, you’re simply a mildy bothersome sleazebag with more opinions (and monotonous expressions thereof) than brains.

  184. 38

    Oh, thanks MVS. Let’s hope that these interviews are limited only to patentability issues (i.e., no time for calls dealing only in formalities).

  185. 37

    jguay,

    A minor correction. Yes, examiners are given 1 hour for interviews, both in person as well on the phone. HOWEVER, they are ONLY for _applicant initiated_ interviews. If the examiner gives the applicant a call for an amendment, for example, no other time was supposed to be given. This allows the hour of other time to be given for _examiner initiated_ interviews in addition to applicant initiated ones.

    MVS

  186. 36

    6, the idea of having to turn in a set amount every 3 days is somewhere between naive and utter stup1d1ty.

    That’s why he suggested limiting the amount that could be turned in over that time period, rather than requiring a minimum amount. Big difference.

    As to the changes overall, I think they’re not likely to result in any significant improvement. The real problem, IMO, is that the hrs/BD/AU has not been reassessed in a long time. Changing the count system won’t fix this. It’s clearly just the easier solution.

  187. 35

    “Fix it”

    Fix yourself before you wreck yourself Mooney. Recording interviews is a silly idea borne from nervous hand-wringing paranoia, you know, the kind you are so fond of in your dark creepy world of trolls, and such.

  188. 34

    “the added time will be used up-front in an interview”

    As noted below, except for continuations, an interview before the first action is, and has always been, frowned upon.

    37 CFR 1.133 Interviews.
    (a)

    … (2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.

    I don’t understand why PatentlyO keeps promoting the (erroneous) notion of interviews before the first action. Heck, Mooney has already expressed his displeasure at interviews, why on earth would he want one before the first action – talk about a perfect opportunity to corrupt the objectivity of the examination process… sheesh.

  189. 33

    Malcolm writes:

    ….not work out well in the long-term if the interviews are not recorded.

    to which I reply that inadequately minuted interviews are OK just as long as no deference is given, post-issue, to the work of the Examiners, pre-issue. But the combination of inadequately minuted interviews plus deference (absent clear and convincing evidence, claim resists all assaults on its validity) is offensive to common sense.

    Why not go the whole hog? Switch to the Japanese way: unrestricted unminuted interviews? What’s wrong with that? Cases would go through to issue a whole lot faster. What third parties don’t know happened can’t bother them, can it?

  190. 32

    MM and DC, one hour of non-examining time has always been granted for personal interview; and a couple of years ago, I believe, one hour was given for telephonic interviews.

    What is with your fixation on recording interviews? While I believe interviews should be rare (the number of these also plummeted after I spent more time up front examining the invention), they are helpful to explain points of the law to the examiner in an informal way. I like that. If I could not do it this way, I would not conduct interviews for fear that every peripheral thing I say in an explanation would be used against me.

  191. 31

    For any primary or SPE that came in on count Monday & found 10-15+ cases in their count box (even though they had emptied it on Friday or Sat), or had examiners coming in all Monday morning with “just one more case to get counted” would understand why the change to midnight Sat is needed. I used to often come in on Sunday & make sure everything was counted & would still have a bunch of cases on Monday morning to review.

    Some SPEs tried to implement this in their AUs years ago but were forced to stop it because of POPA.

    Stopping cases from being turned in late gives the reviewer a chance (if they are willing to take it) to have enough time to review the cases more carefully.

    6, the idea of having to turn in a set amount every 3 days is somewhere between naive and utter stup1d1ty. Many newer examiner get more than 3 days to do a case. How would you figure leave & meetings & everything else that would royally scr3w things up in your microscopic count idea?? You would basically wind up having 3 day “pay periods” under your “idea”.

    MVS

  192. 30

    “If an examiner does a thorough search of the invention at first action, the chances that an RCE will be necessary diminish greatly.”

    Not only that, who can disagree (with a straight face) that RCEs are way, way, way easier to work than a new FAOM?

    I think the added time makes up for the diminished RCE count, although I may be in a low RCE art compared to some. I know that in my five years here, I have only one case that went to a third RCE and one that went to a fourth, and in that case the fourth was in order to get references from a foreign search considered of an already allowed case (in a other words a *very* easy two counts.

  193. 29

    “Encouraging substantive interviews: The proposal would also regularly grant one-hour of “non-examining time” for preparing for and conducting interviews. This would effectively reduce the examination quota of examiners who conduct interviews.”

    This will not work out well in the long-term if the interviews are not recorded. Fix it, Kappos.

  194. 28

    Andrew, I am not buying any whining about losing RCE counts. If an examiner does a thorough search of the invention at first action, the chances that an RCE will be necessary diminish greatly.

    I speak from experience, because when I was at the PTO I was taught the bad way by my “supervisors” and some lazy primaries, and I “counted” on a number of RCE (formerly FWCs) to make production. [I still find myself apologizing to people I meet out here for being such an arse years ago.] When I changed my ways about two years from becoming a primary, the amount of RCEs I received plummeted, but I was still able to make outstanding production and provide a quality search/examination.

    These initiatives are a nudge in the right direction, but more will be needed.

  195. 27

    Two potential problems for prosecutors:

    1. RCEs will be going on our “Special New” docket, rather than our “Regular Amended” docket.

    Regular amended cases have a two-month deadline for examiner action (one-month for those of us trying for the pendency reduction bonus). Examiner’s must work their oldest “special new” case every other bi-week (each bi-week for the pendency reduction bonus). This plus the reduced count total for RCE cases will mean increased pendency for those applications.

    2. Added incentive to go ‘Final’ will mean (more) improper final rejections.

    Currently there is incentive to go ‘final’ since it moves the case toward disposal and a count, but the gratification is delayed and the time spent on the instant action isn’t getting anything for the examiner.

    I would imagine that more examiners will make second actions final improperly under the new scheme in order to get the fractional count.

    I hope the PTO is prepping for more withdrawal of finality petitions.

  196. 26

    I have created a preliminary PDF to explain how this system is probably actually worse for examiners. I will post it shortly. But a brief key point of the PDF:

    Examiners will get 1.75counts/BD for a first RCE which increases the amount of work examiners must do to meet old production standards by 12.5% ([0.25/2]*100). By new production standards, it increases the amount of work the examiner must do by around 2.5-7.5% depending on the examiners respective BD.

    Examiners will get 1.5counts/BD for a second RCE which increases the amount of work examiners must do to meet old production standards by 25% ([0.5/2]*100). By new production standards, it increases the amount of work the examiner must do by around 15-20% depending on the examiners respective BD.

  197. 25

    Very nice start.

    I also think the Examiner should recieve a count or partial count for an after final advisory action. Examiners do not do these well, and increse prosecution time and cost by both not providing a quality response, or worse, not examining the after final response at all and stamping it with “new search required.”

  198. 24

    “Midnight Saturday is the end of the bi-week. They’re trying to diminish the biweekly end loading.”

    Then simply make it so that you can’t turn in but a set amount of your production every 3 days or whatever. It’s amazing how simple solutions pass people by and we get stuck with some “this won’t do what we want it to but hey we can do it just to be an arse” plan. Stopping end loading in its tracks isn’t exactly rocket science.

    “The examiners, on the other hand, benefit hugely from getting an extra two hours per case.”

    Any benefit to the examination time is a direct benefit to the applicant unless the applicant wants a shty patent. You’re getting more for your “money”.

    In any event it isn’t the worst thing in the world, and without popa going off about it then it’ll probably pass.

  199. 23

    Jules,

    Your absence has been noted – thanks for the note that 6’s absence would be noted, but for the stated reason.

    But you better be careful – Malcolm may now consider you to be a TROLL.

  200. 22

    “If after a number of rounds of RCE the attorney still can’t present a claim that’s allowable, the examiner should be able to send the case to the Board (with SPE or Director’s approval). If applicant lose at the Board, they either have to pursue the matter in court or go to the back of the queue by filing a continuation. If the examiner lose, the case automatically gets allowed without going back to the examiner unless the Board enters a new rejection necessitated by a new court decision.”

    I like this idea. I’m not sure of the fairness to Examiners in those rare situations where RCEs are continuously filed in a case with no patentable subject matter. If you’re reducing Examiner’s counts for each subsequent RCE, Examiner’s should be able to at some point put a stop to it by either sending it to the board or forcing a separate continuation. Maybe on the third RCE?

  201. 21

    Good lord man…

    6, you’ve done a great job littering up the board. Have you ever heard the saying “Wise men talk because they have something to say; fools talk because they have to say something.” That’s a rhetorical question.

  202. 20

    “I propose letting examiners go first action final after RCE if the amendments by applicant does not patentably distinguish over art already of record–not art used in the rejection last time, but any art cited by applicant or by the examiner on record already. If the claims initially presented for examination don’t patentably distinguish over art cited in applicant’s IDS or admitted prior art in the spec, then first action final should also be allowed. This should also encourage the examiner to do as thorough a search as possible as soon as possible.”

    Lol wut? So I’m supposed to guess what unreasonable ways an examiner might tie together references now? And I get finaled if the examiner thought it was reasonable to tie together 4 references, including a reference directed to a dvd drive and a reference directed to an oven timer?

  203. 19

    It’s impertinent of me to add to this thread because I don’t prosecute at the USPTO but, Somegiuy, my attention was taken by your…..

    they either have to pursue the matter in court or go to the back of the queue by filing a continuation

    I’m thinking that some Applicants (pharma) really do want to delay issue as long as possible. Making Rules that “work” for those who would string prosecution out interminably if they could, and work just as well for those impatient to see cases going to issue with despatch, strikes me as very difficult for the good Mr Kappos to engineer. In other words, what is a “stick” for one Applicant is a “carrot” for another.

    Does your proposal work, in that sense?

  204. 18

    How about we get some rule changes to go along with the new production system? This new system appears to really “encourage” examiners to allow something the first round. Many times that’s out of the examiner’s control either because they can’t get the ok from someone with sig authority or the attorney’s amendments barely overcome the portion of art used last time and may not even overcome art already cited but not used in rejecting the last claims.

    I propose letting examiners go first action final after RCE if the amendments by applicant does not patentably distinguish over art already of record–not art used in the rejection last time, but any art cited by applicant or by the examiner on record already. If the claims initially presented for examination don’t patentably distinguish over art cited in applicant’s IDS or admitted prior art in the spec, then first action final should also be allowed. This should also encourage the examiner to do as thorough a search as possible as soon as possible.

    If after a number of rounds of RCE the attorney still can’t present a claim that’s allowable, the examiner should be able to send the case to the Board (with SPE or Director’s approval). If applicant lose at the Board, they either have to pursue the matter in court or go to the back of the queue by filing a continuation. If the examiner lose, the case automatically gets allowed without going back to the examiner unless the Board enters a new rejection necessitated by a new court decision.

    Make reviewing junior examiner cases part of the primary examiner’s PAP. Too many primaries won’t give any junior examiner help partly because the amount of other time they’re allowed to claim doesn’t reflect the amount of work they have to do.

  205. 17

    “I hope I am wrong, but I don’t think he is negotiating with the Examiners about the counts. I think he is giving you one last chance to “get with the program”.”

    I think the negotiations are done. The committee was equal parts management and POPA officers, so my guess if the rank-and-file will take it as blessed by POPA and ratify.

    But what does happen if POPA membership fails to ratify?

    Also, any predictions on the increase in dues-paying membership (which makes one eligible to vote)?

  206. 16

    Dennis said Re: restriction practice: “In that scenario, the examiner can earn multiple counts for reexamining what are essentially identical inventions.”

    Restricting identical inventions is improper (I’m not saying is isn’t done, I’m just saying that nobody says it is correct). If there is a problem with improper restrictions, we don’t need new rules, we need enforcement of the current rules.

    My understanding is that part of QR’s mandate on in-process review is improper restrictions.

  207. 15

    6,

    I hope I am wrong, but I suspect you are missing something.

    Kappos did not need this job, he’s already proven that he is an excellent manager at IBM. That he accepted this job means he was promised that he would be allowed to succeed, which means reduce backlog and become profitable.

    Kappos has been around a long time so he remembers pre-2003 when the RCE gravy train did not exist and patents were granted.

    I hope I am wrong, but I don’t think he is negotiating with the Examiners about the counts. I think he is giving you one last chance to “get with the program”.

  208. 14

    “And why on earth he would move the cutoff to sat night I have no idea about.”

    Midnight Saturday is the end of the bi-week. They’re trying to diminish the biweekly end loading.

    “How can they predict which cases will get an RCE and which won’t? Or will it all be determined retroactively at the end of the quarter?”

    The presentation says the additional examining time (in order to ensure a net at least one hour per BD increase) will be determined by the examiner’s FY09 mix of actions.

  209. 13

    Has anyone looked at how many hours are required to examine applications filed with ESDs under the accelerated examination program? Do ESDs really reduce either the workload or probability of an RCE?

  210. 12

    Good start. Hopefully, the PTO also will monitor and enforce a low average of number of actions per disposal. Otherwise, I see only a minor “quality” benefit from this initiative for the applicants. The examiners, on the other hand, benefit hugely from getting an extra two hours per case.

  211. 11

    I just crunched the numbers a little bit, and for an expectancy of 23 hours/BD under the current system (25 for the new), an examiner currently gets 23 hours for each of the initial round of examination, 1st RCE round, and 2nd and subsequent RCE rounds. Under the new system, the examiner gets 25 hours for the initial round, 21.875 hours for the 1st RCE round, and 18.75 hours for the 2nd and subsequent rounds.

    So if a case is finished before it goes to RCE, the new system is a 2 hour gain for the examiner. If it’s disposed in the 1st RCE round, it’s a 0.875 hour gain over the current system. If it makes it to the 2nd RCE, it’s a 3.375 hour loss compared to the current system. If I’m figuring this right, this is a better deal for examiners doing cases that make it up to 1st RCE. It’s a bad deal if you have a lot of cases that go to 2nd RCE.

    The re-allotment of counts (within the context of each round of examination) giving more weight to first actions, less to disposals, and partial count for finals will be good for new examiners and I imagine will help substantially with the attrition problem. It won’t make much difference to older examiners, other than to make their production numbers more consistent.

    However, I’m not so sure about the decreasing counts with RCEs aspect though. It’s definitely dis-incentivizing RCEs, but I don’t think it’s incentivizing compact prosecution. If the newly de-sweetened RCE is still less bitter of a pill to swallow than doing a new case, then it’s not going to be a successful way to get examiners to prosecte more compactly. This would be a better plan if that first round was bumped up in counts, say to 2.5 instead of 2.

  212. 9

    “That doesn’t really sound like the “RCE gravy train” is that widespread of a problem.”

    Of course it isn’t. People just like to make it out to be, probably because they’re problem “customers”. And Kappos is responding to the perception. Of course, 25% or so could be brought down a good bit, and even 25% is like a hundred some thousand cases.

  213. 8

    The one last thing I would say about this plan is that it will be very interesting to know how they plan to ensure that we’d be getting an extra hour. How can they predict which cases will get an RCE and which won’t? Or will it all be determined retroactively at the end of the quarter? If so, wouldn’t that destroy the ability to predict what your actual production is going to be at the end of a quarter?

    I think it might.

    Also, one other thing, something rather major, but I don’t remember what it was because someone just came in my office and interupted me. I’m sure I’ll remember tomorrow. But, I’m done for the year (was waiting on an attorney to get permission for an examiner’s amendment then had mah class :( ) so I’m outta here.

    “6, 2 hours per BD is one hour per count.”

    Yeah I reread it and forgot to make sure to post about it, sorry, that was supposed to be at the top of my second post.

  214. 7

    6, 2 hours per BD is one hour per count.

    Also interesting is the chart (p. 8) that shows the average mix of FAOMs for the examining corps is 73% regular FAOMs, 20.3% 1st RCE FAOMs, and 6.8% 2nd or later RCE FAOMs. So as far as the RCE churning phenomenon, this suggests that 73% of cases don’t go to RCE, 27% of them do. That doesn’t really sound like the “RCE gravy train” is that widespread of a problem.

    Apparently 23 hours per BD (11.5 hours per count) is the corps average.

  215. 6

    And just for the record, with this plan the ind. commission coming shortly is still going to rip us a new arse hole when they get here.

  216. 5

    “– Add additional time, if necessary, to account for reduction in RCE counts so that
    every examiner gets at least 1 net additional hour over their FY09 expectancy
    (Hrs/BD at their position factor)”

    Alright it appears that the deal isn’t quite as sour as D makes it out to be. Perhaps this will pass the AU’s who rely on RCE’s currently to meet production (and all their friends who look out for them).

  217. 4

    D you could at least get the information right:

    “Start by adding 2 hours to each examiner’s FY09 Hrs/BD at their position factor”

    That reads 2 hours. Not 1 hour.

  218. 3

    “The proposed package would make some modifications – focusing especially on RCE practice. Under the proposal, the first RCE would only be worth 1.75 total counts (rather than 2) and any subsequent RCE can only be worth 1.5 counts. Examination of the original application would still be worth the same 2 counts, but the distribution is slightly shifted. Under the proposal, the first office action on the merits (FOAM) would garner 1.25 counts; a final rejection earns 0.25 counts; and eventual disposal leads to 0.5 more counts. If no final rejection is issued, then the disposal would be worth 0.75 counts. Thus, examiners will still receive credit for examining RCE’s – just less credit than before. The proposal does not appear to address the restriction practice.”

    Yeah POPA will eventually reject the package. Or their “membership” will.

    The thing that some people don’t seem to understand, either by ignorance, or by lack of comprehension, is that some AU’s depend nearly entirely on RCE’s to make production. Without them counting for the full credit they do, entire AU’s would almost instantly be way under production.

    Now, my AU isn’t exactly all that bad about that. But there are certainly other ones that are.

    Even so, I would vote against it. .25 at final and an hour isn’t enough to make up for the loses at RCE. It would be nothing more than a swindling deal. .5 at the least with 2 hours and that’s as low as I personally will be willing to go. AND HE’D STILL BE MAKING OUT LIKE A BANDIT! .5 is entirely too generous of me on my part.

    “The proposal also includes a new “formal policy” of “working on the earliest filed applications on [an examiner’s] Regular New Case docket first.” This would block the game played by some examiners of cherry picking easier cases to examine earlier.”

    Deal breaker in and of itself. The “cherry picking” is what allows the current production system to exist at all. You need the ability to slightly manipulate the order in which cases on your docket go. Having to take them in order will render some (few?) people get an unlucky streak in their case lengths horrible production.

    A good shot Kappos, and good that you’re at the bargaining table and got the fat man to sign off on it. That’s step 1. Step 2 is getting the corps to accept it. Step 3 is keeping (nearly?) all your employees at the job lest you find yourself in the unenviable position of having to hire and train new examiners with no money to do so.

    I’m confident that you’re smart enough to avoid a catastrophe on step 3. But I’m also confident that this measure will not pass the corps as a whole unless there are substantial provisions D isn’t telling us about and which I haven’t read about just yet. I’m going to go read it now.

  219. 2

    Everyone who reads this should be made aware that the phrase “”forcing” the RCE” is most often only used in the context of an after final amendment being denied entry because it would require further search and/or consideration.

    That is to say, there is no way to really “force” an RCE, there is only a way to prevent an after final amendment from being entered, and this method is considered 100% legitimate.

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