- New Counts: The Patent Office Examiner Union (POPA) has voted to approve the PTO's proposed changes to the examiner count system. [POPA][Washington Post]
- Novo Nordisk v. Caraco: The Federal Circuit has temporarily stayed an Eastern District of Michigan court ordered injunction that would force the patentee to amend its Orange Book listing for its diabetes treatment drug Prandin. The court is now considering whether to leave the stay in place for the remainder of the appeal. [CAFC Order][FDA Law Blog]
- Baker Hughes v. Nalco: Nalco moved for a stay of a preliminary injunction pending appeal. Going even further, the Federal Circuit vacated the preliminary injunction. In its non-precedential order, the appellate court held that preliminary injunction could not be sustained because the lower court had failed to explain its irreparable harm finding. The improvement patent relates to a method for purifying crude oil. [CAFC Order]
- Tafas Steps Back: Following the PTO's withdrawal of its rule package, Tafas has filed a motion with the Federal Circuit to dismiss the pending appeal in Tafas v. Kappos but not vacate the District Court's injunction. It appears likely that Tafas will seek fees and costs as the prevailing plaintiff. Donald Zuhn at Patent Docs includes more details.
Hey,
Very useful piece of information indeed! Thanks for sharing and keep posting the good work.
A SWOT analysis
Hi,
Nice post!
Business Plan
maxdrei – if you do not behave yourself I will bite your neck and suck your blood till you behave
JAOI, Wikipedia reveals that is was some German aristocrat called Max who invented its title (unless it was Alexander the Great, and the unfortunate German was not the First to Invent). The Brit version (which I prefer) involves Donkeys rather than Lambs.
I promise I won’t watch the film, even one minute, OK?
Max,
You are forbidden from watching the movie referenced above.
You will be severely sanctioned if you watch that movie!,
and I ain’t kidding!
A movie must see for every American patriot:
link to en.wikipedia.org
Take notes; there will be an test Monday morning.
Beverly,
Extreme caution would be recommended in taking anything from this blog as a functional foundation in learning more about patent law – especially if you are new to the subject.
I stumbled here and am trying to learn more about patent law. This summary section lost me or was I looking in the wrong place. Thanks for the count explanations, that definitely helped.
the way I see this new count system, it’s a way for the office to try to get its examiners to work on new cases more often (because of higher counts, thus reducing the backlog that is a black-eye to the public)
however, because the RCE’s will go onto a “new” docket instead of the amended docket, the prosecution could hypothetically drag out even further
therefore, attorneys, you may see a first action sooner after initial filing, but you’re not really going to see much of a change in the overall length of prosecution because of the way the dockets will be handled
“If this really happens, it isn’t minor at all – that is what I and a lot of other patent attorneys have been wanting. Better search and analysis? Great!”
I don’t think you realize that I’m talking a minimal change here.
My real issue with writing is currently adding ‘s to applicant when it should just be s. Obviously it is just plural, but I guess I write applicant’s so often it sticks in my brain.
“6, it’s “nevertheless,” not “never the less.” It’s also “whatsoever,” not “what so ever.” Good luck with those essays.”
I’ve got 24 up. You only have 5 down.
link to urbandictionary.com
Add your vote today!
“Never the less applicant’s might see a bit of a better search performed, and maybe some analysis, up front.”
6, it’s “nevertheless,” not “never the less.” It’s also “whatsoever,” not “what so ever.” Good luck with those essays.
“Never the less applicant’s might see a bit of a better search performed, and maybe some analysis, up front.”
If this really happens, it isn’t minor at all – that is what I and a lot of other patent attorneys have been wanting. Better search and analysis? Great!
Here’s the deal — as to how the count system is changing.
1) New cases (includes Continuation and Divisional, but not RCE) still have two counts in them. The old system was that examiners got 1 count on first action and one on disposal (allow, examiner’s answer, abandonment, or RCE). The new system is that the examiner gets 1.25 counts for first action, 0.25 counts for Final rejection, and all remaining counts (0.75 if no final, and 0.5 if there was a final) on disposal. Thus an examiner who is short of counts for the pay period or for the quarter has an incentive to pick up a new case.
2) RCEs have fewer counts in them. First RCE has 1.75 counts, second and subsequent RCEs have 1.5 counts. While RCEs are usually easier (because some of the issues have been developed, search has been performed) than new cases, examiners now have a disintcentive to work on RCEs, as opposed to new cases.
3) RCEs get placed on continuing docket rather than amended docket. There is less pressure on the examiner to pick up an RCE under the new system as opposed to the old system. I think (trying to read management’s mind, never an easy thing to do) the idea is to provide dis-incentives to applicants/attorneys to file RCEs and instead move it to disposal more quickly.
4) Examiners get more time to work on cases. There’s a formula to determine time-per-case that depends on one’s technology and GS grade, but across the board everyone got 2 additional hours (or slightly more, details aren’t important for this discussion) per case. The idea being that more time per case will give examiners a chance to develop all the issues up front.
5) No this does not affect appeals at all. The backlog is huge, and growing. Speaking for myself only, it is frustrating for examiners in that we want to move the cases along too.
Since you asked, not many other cases, 6. One was allowed on first action and 13 months after filing. Two other cases I’ve received a first non-final action. Yet another case has been working through the appeal process, still waiting on the Examiner Reply. That case went through one RCE before I got my hands on it. The examiner in that case accepted all of my arguments except one, so she’s still clinging to one rejection based on what I contend is a really strained reasoning.
“However, IF you examine correctly and not just looking for the easy way out, then it should make a difference. ”
Do you mind being a little more specific rather than just mouthing off?
“With the extra time & the extra .25 for a 1st action, a GOOD examiner would spend the extra time to do a better search & rejection, if necessary, and get the case a lot closer to disposal a lot sooner. (Remember, in addition to the extra hour/count, the extra .25 count for a 1st action is effectively a 12.5% increase of time for a 1st action.) ”
According to you, a “GOOD” examiner, aka a mythical beast that probably never has existed, would have done that same job that he’ll now being doing within 1.25 counts within the 1 count previously given. Or else, by definition he was never a “GOOD” examiner to begin with. AMIRITE?
Never the less applicant’s might see a bit of a better search performed, and maybe some analysis, up front. However, they will not notice any change from GOOD examiners (like me) who already did a dam near perfect job on first action before the change anyway. It’s hard to improve dam near perfect.
“and IF the applicant & attorney do their job correctly”
Since that never happens does it really matter if the first part happens?
“You do this & the examiner does not need to spend that much time to do the amendments or RCEs.”
That still depends 100% on the applicant. The “good” applicant’s don’t have much of a problem under the current system.
“Maybe a quicker 1st action in the long run”
More like “the short run”. Once everything works out, pendency will remain pretty much the same.
In any event, I was referring to substantial changes that applicants will see. Obviously there are numerous theoretical hooblah changes that applicants “might” see, such as the ones put forth by MVS.
But keep on a dreamin’ MVS.
“My informal tally says 7 of 9 applications can’t get a decent search/rejection the first time around, and 3 of 9 can’t get a decent search/rejection the second time, either. ”
What happened to the other hundred+ cases that you worked on that year? Oh, you meant 7 out of 109+ applications and 3 of 109+ applications, my bad.
MVS – you said there’s no penalty for repeated non-finals. By that do you mean no docking of counts? I thought the lack of a count for a subsequent non-final was essentially a penalty.
I’ve had 9 applications receive a second action (or third) action in the past year. Of those, two were final, four were a second non-final, and three were a third non-final. One was allowed after an interview (made of record) after the third non-final. My informal tally says 7 of 9 applications can’t get a decent search/rejection the first time around, and 3 of 9 can’t get a decent search/rejection the second time, either. One of 9 went three rounds without a decent search/rejection and was finally allowed without amendment. I believe these statistics are actually skewed in the PTO’s favor because it assumes that the two instances where the second rejection was final were actually decent rejections to begin with, which I dispute. Both will be appealed. Anyone else seeing large numbers of 2nd non-finals?
6, YES, you missed things. Or you just don’t know how the job is supposed to be performed.
If someone examines like 6 says he does, then his characterization of the new system may be accurate.
However, IF you examine correctly and not just looking for the easy way out, then it should make a difference. Not enough, but some.
With the extra time & the extra .25 for a 1st action, a GOOD examiner would spend the extra time to do a better search & rejection, if necessary, and get the case a lot closer to disposal a lot sooner. (Remember, in addition to the extra hour/count, the extra .25 count for a 1st action is effectively a 12.5% increase of time for a 1st action.)
By doing a better search & rejection for the 1st action, and IF the applicant & attorney do their job correctly, then the next action should be a disposal or a relatively easy final. It still comes down to getting the best art in the case on the 1st action & explaining the examiner’s position & interpretation in the 1st action. You do this & the examiner does not need to spend that much time to do the amendments or RCEs.
Now, as to what benefits for the applicant? The only benefit is hopefully getting a better examination (unless you get 6 :). Maybe a quicker 1st action in the long run.
However, since there is no penalty for doing bad rejections or repeated non-finals, the quality improvement will be hit & miss. Also, there are no new incentives for the applicant to improve their work product (which is very erratic, at best). And, as pointed out above, since the RCEs will go on the examiner’s special new docket instead of the amended docket the examiner only needs to move the oldest one every other PP (once a month) and not within 2 months of filing. If they have a 5 RCEs, for example, it may take 5 months to get them out instead of 2 months.
MVS
Not so far as I know, except we might be getting a count for a pre-first action interview. And then there is also the extra hour we get for initiating an interview ourselves.
But that doesn’t really change things for applicants.
You could write a few pages on just explaining the new count system.
Taz – Your are right – no counts for interviews. The way that it works is that an examiner’s count quota is based (in part) on the number of examining hours. The new interview program makes it easier for an examiner to allocate time for interviews. When time is allocated to interviews, less time is allocated to examining and, consequently, the count quota is reduced.
6: don’t I recall something about counts for interviews?
“An article, Dennis, explaining the new count system and how it effects Applicants would be useful.”
That’ll be a short article.
“In the new system applicants will have the time spent on all “rejected” pending applications slashed, and they can expect a corresponding lack of concern for these cases. Additionally, more cases will probably be allowed on avg(although the budget probably did that more than anything). Finally, RCE’s will be handled, on avg, slower and with less regard to the substance thereof.”
Did I miss anything?
Cases are forwarded to examiners into New or Amended tabs of the docket.
Examiners have 4 biweeks (roughly 2 months) to respond to amendments in the Amended tab. For cases in the New tab, examiners have to issue a FAOM for at least the oldest case in the New tab every 2 biweeks, meaning, it’s possible they only need to work on 1 “new” case every month.
In the new count system, RCEs will be docketed into the New tab, so it’s likely response to RCEs will take longer.
Immediately examiners would try to get rid of the abandonments, each giving 1 full count now. (Some have the practice of saving abandonment counts for rainy days.)
An article, Dennis, explaining the new count system and how it effects Applicants would be useful.
What does it look like?
It’s a notice to people that RCE’s will go to the special new tab rather than the amended tab as they currently do.
e6k- what is this:
link to uspto.gov
?
Bwahaha
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