Tracking the Use of Continuations

Mark Lemley and Bhaven Sampat have released a new working paper that uses PAIR data to draw some conclusions about the current patent system:

Conclusion: The evidence illuminates the patent prosecution process as a continuing negotiation between examiner and applicant. That negotiation does not end with an initial or even a final rejection. Interviews and amendments after final play an extremely significant role in generating patents, and in limiting the scope of those claims as well. Nor is that the end of the process. Continuation applications are flourishing. They have broken into two roughly equal groups, with different uses. Many applicants are using RCEs to keep fighting for claims that the examiner wasn’t willing to give them. The second group is filing continuation applications rather than RCEs. They have opted for a slower process, either because they want delay so that they can modify their application to track developments in the marketplace or because they want multiple patents to build an effective fence around a single invention.

In the paper, the authors implicitly retreat from earlier work criticizing the patent examination process –suggesting that their results here “may be a hopeful sign for patent examination: even though the PTO ultimately grants patents on a large majority of the applications it receives, it may still be serving an important gatekeeper function by requiring applicants to narrow their claims. (This assumes that most of those amendments narrow the claims; that seems likely, but we cannot test it empirically).”

Read the paper on SSRN.

69 thoughts on “Tracking the Use of Continuations

  1. 69

    I will echo a poster above. What Prof. Lemley does is produce the only real hard quantified data concerning patent prosecution. That means that whenever Congress or the USPTO go to make changes in the patent laws, rules, or procedures, all anyone else can provide is anecdotal. He is the one Congress, etc. listen to because he is the only one with any real facts.

    I have argued before that the problem with some of his studies is that they are based on a misunderstanding of patent prosecution. So, for example, I have argued that in the past he didn’t consider that at least some RCEs were a result of examiners gaming the count system (e.g. I think most practitioners have had examiners tell us that they would allow that amendment after final that they had refused to enter if filed as an RCE).

    That said, I do appreciate his work. I found one of his recent articles, with Dan Burk, in the U. Penn Law Review (Vol. 157 No. 6, June 20009) titled “Fence Posts or Sign Posts? Rethinking Patent Claim Construction” especially thought provoking.

  2. 68

    We could have had a gas powered stone cart back in the Cave Man days if Mooney’s hot air was around then… not to mention all the noxious stuff coming out of the other end – actually its hard to tell which end the noxious smells are coming from.

  3. 67

    Of more value to clients is performance stats related to firms, notwithstanding any quality metric of those issued patents.

  4. 66

    … the only one other than the patentee, that is, assuming that the patentee actually wants a quick allowance.

  5. 65

    “No – even though the delay may affect the public, the delay is caused by the Office, and is not caused by the public.”

    That was part of my point, Noise – as far as I can tell the public is the only one harmed, as I’m not aware that these delays are actually being held against anyone at the Office. I think we’re on the same side here…

  6. 64

    6, you may be correct – I will have to check on the timing limits afterall (but before you get too happy 6, I did tell broje that I had not checked into it).

  7. 63

    “should hold the Office accountable for missing its own self-imposed time limits ”

    I thought they were congressionally imposed limits. At least the 4 mo response deadline is.

  8. 62

    BigGuy,

    No – even though the delay may affect the public, the delay is caused by the Office, and is not caused by the public.

    By “held against”, I mean hold accountable or blame for non-performance, that is, the public should hold the Office accountable for missing its own self-imposed time limits (and the reason why PTA is given in the first place).

  9. 59

    “…so sitting in the ‘special new’ docket may not see action, but the delay is at least at some point beign held against the Office.”

    Interesting point, Noise. But wouldn’t it be more accurate to say that the delay is being held against the public? Are there any actual consequences for anyone in the Office resulting from the routine 1000+ day PTAs?

  10. 57

    “Lemley should do a study on this”

    Just as soon as he puts down the Twinkies…

    As far as your other blather Malcolm LaMonkey (your new Delta House name, sorry “Flounder” was taken already by a notorious Twinkie eater) it was too long and convoluted to bother reading – plus it came from you, which made it even less worth reading.

    As for academics influencing legislation, maybe, but in the Notice and Comment period of most legislation, the patent bar (including corporate giants) is notorious for coming out en force against crappy “reform” proposals by NPTEs (non-practicing Twinkie eaters).

    Incidentally Mooney, you are the only sleazy troll around here.

  11. 56

    Noise we are at cross-purposes. My “Examiners” are doing the same job as driving test Examiners, checking fitness to practice. They don’t hand out patents but Certificates to Practice. You seem to be talking about examiners of patent applications. Or am I as usual just not getting it?

  12. 55

    broje,

    I saw a post commenting on one remaining difference, but have not verified it – the difference in the time the clock is running for patent term adjustment. For RCE’s, the post indicated that the clock starts up again at four months, so sitting in the “special new” docket may not see action, but the delay is at least at some point beign held against the Office.

  13. 54

    Doesn’t the recently announced change that RCEs will be treated as “special new” fundamentally change the the two paths to one path? Now RCEs will be at least as delayed as Continuations, won’t they? Choice has been eliminated.

  14. 53

    Max – this is not credible: “Satisfying the Examiners means getting for the imaginary client something close to 100% of the scope of protection that is theoretically achievable.”

    Satisfying examiners only gets a patent and in no meaningful way measures the achievement of attaining theoretically available scope protection – not in the US and not in any patent office.

  15. 52

    This is a way for academics to get two publications- one paper discusses the evil of a practice and then the next praises it.

  16. 51

    Sorry NAL, I don’t.

    Let’s think about the European Qualifying Examination, Paper A The Drafting Paper. Every candidate gets the same materials, from which they are required to craft an app.

    No two answers will be word for word the same (we hope!).

    Some will satisfy the Examiners, others will not. Satisfying the Examiners means getting for the imaginary client something close to 100% of the scope of protection that is theoretically achievable.

    Writing a plurality of independent claims gets no more protection and loses marks.

    A million miles away from the USA, I’m sure.

  17. 50

    “If different words are used to define the same substance, clarity is prejudiced”

    MaxDrei, we had begun discussion on this point on another thread, but I do not recall which thread or even if we had come to a conclusion in that discussion. I do remember asking you if there was only one way to explain something and you agreeing that there was not. I also remember reminding you that the differences (once again) in US and EP practices account for this particular distinction and that the distinciton was not a negative for strength of patents. Do you recall which thread our discussion was on?

  18. 49

    Curious, now you put your finger on it: the proliferation of independent claims, that is routine at the USPTO but not tenable at the EPO. Let’s think about that for a minute.

    An invention is defined in a claim. One app, one invention, right?

    An invention is defined as a combination of technical features. Different combination, different invention.

    If different words are used to define the same substance, clarity is prejudiced. If different words mean different things then, in claims, they define different inventions.

    If the inventive concept is XYZ, it can be expressed as the steps of X-ing, Y-ing and Z-ing or as means for X-ing, Y-ing and Z-ing. But WYZ is a different concept.

    Read the Protocol on the Interpretation of Article 69, EPC and wonder why, in Europe, one independent claim is enough.

    As to expense, guess what Europeans say about the cost of boilerplate and churning, in the USA. Guess what difference drafting quality makes to prosecution costs, here in Europe. Your salvation lies in your own hands. You can do something about drafting quality. We can’t do anything about the churning.

  19. 48

    EP applications are horribly expensive with their frequent annuities (before anything has been allowed), with the horrible expensive of filing divisional applications and the strict restrictions on the number of independent claims per case. (I don’t think that the examiners really ever examine the dependent claims.)

  20. 47

    Max asks Ned: “Are you suggesting that the EPO (which does just one search operation) lets unsearched matter through to issue?”

    Ned replies: “Now, if the European examiner does NOT conduct further searches after argument or amendment where new issues arise, I can only wonder why? I don’t get it. I would think it normal and should be required by practice if not by rule.”

    Then Visiting interjects: “Max, this kind of question seems a bit unfair. For one thing, Ned didn’t suggest anything like this. Further, the examination schemes employed at the EPO and the PTO are different enough that differences in examination results can easily explained without trashing either EPO or USPTO examiners or applicants.”

    Perhaps Visiting , who can “easily explain” the puzzle could address himself to Ned Heller, who for the time being just doesn’t “get” it.

    Clue #1: in the EPO, there has to be a written description of the claimed invention in the app as filed. If the invention is described, in the app as filed, well then it’s present and the Exr can search it, no?

    Clue #2: it all depends on what you mean by “adding subject matter” to a pending application.

    Clue #3: Throughout Europe, “patent attorney” is a profession in its own right, different from “attorney at law”. The profession has its own regulations and Institutes. To pass the examination to be a European Patent Attorney you have to satisfy the Examiners inter alia in your claim drafting skills. More than 70% of those who fail the qualifying exam, and re-sit, will fail again.

    Clue #4: throughout Europe, courts and Patent Offices proceed on the basis that professional competent drafting of patent applications is “a given”. High standards are expected. Apps drafted poorly are given short shrift and no special treatment.

    Clue #5: The Protocol on the Interpretation of Article 69, EPC.

  21. 45

    “A nucleic acid vector comprising a nucleic acid sequence encoding a recombinant protein and a nucleic acid sequence encoding a selectable marker.”

    2005? LOL. I wonder if anyone was filing claims to “a gas-powered horseless carriage with four wheels” in 1940?

  22. 44

    OK everyone, what is your opinion of the claim below?

    A nucleic acid vector comprising a nucleic acid sequence encoding a recombinant protein and a nucleic acid sequence encoding a selectable marker.

  23. 43

    Znutar — the “negotiation” will likely only begin once you have gone to the time, expense and delay of appealing the final rejections. This is unlike the pre-circa 2002 practice where you could efficiently work with the examiner to obtain mutually-agreeable allowable claims without an appeal.

  24. 42

    While the authors’ statement, “Many applicants are using RCEs to keep fighting for claims that the examiner wasn’t willing to give them.” can reasonably be accepted as correct given the ability to review the written records…

    …”either because they want delay so that they can modify their application to track developments in the marketplace or because they want multiple patents to build an effective fence around a single invention.” ; because such cannot be determined by reviewing the written records; cannot and should not be accepted as necessarily correct unless direct questioning of each application’s “decision maker/strategy decider” had been undertaken.

    Far too many unsupported conclusory statements out there as it is.

  25. 41

    MVS – I find your postings particularly credible and appreciate your perspective. I do not doubt in the least that 20-30% of responses fall between lacking and incompetent. I see them, too, when reviewing file histories. I don’t want to appear one sided that problems only exist in examiner conduct, but I tend to gripe out of my own personal experience in which I’m seemingly doing things right, successfully traversing the art rejections, and still not seeing allowed claims. And I wonder if it’s because I’m not upholding my end of the “negotiation” by offering claim amendments.

  26. 40

    “there are many responses we see that are somewhere between lacking & outright wrong and bordering on incompetent. I would guess at least 20-30% at least.”

    Lemley should study this phenomenon.

  27. 39

    “Znutar”,

    YOU may well add in some specific claims, but many do not. Check out a lot of the claims in the pubs from 2100, 2400 & 2600, for example.

    Yes, examiners ARE supposed to find the best art & use it or make it of record, as appropriate. You may not have seen it, but I have seen a lot of cases, my own & others, where dependents are indicated as allowable. It may depend upon the art unit or TC you prosecute in.

    And I agree that if the art used in the 1st action is overcome then the next action should be an allowance unless the examiner now achieves a different/better understanding of the claims & subject matter because of the applicant response. In those, hopefully rare, instances a new reference may be applicable.

    Of course, we often see instances where relevant prior art is cited/made of record, but not actually applied, & the applicant/attorney amends the claims with new limitations to read directly on the cited references. In that case, it appears that the attorney is the one not doing what they should be doing. Yes, you may have time & money constraints that limit what you can do & it may not cover reviewing non-applied art, but if you want us to do all we should be doing you all (all attorneys not just you specifically) should also be held to the same standard. And there are many responses we see that are somewhere between lacking & outright wrong and bordering on incompetent. I would guess at least 20-30% at least.

    MVS

  28. 38

    Hey, “old guy”, (attorneys, no need to read this – move along)

    You & I know that they SHOULD be actually claiming what the invention is. If we try to tell the attorney to actually claim the invention instead of broad claims that read on prior art that the average homeless person would know about they tend to get offended. We have to go in small steps. Getting them to include the invention in SOME claim is a start. :)

    MVS

  29. 37

    “Are you suggesting that the EPO (which does just one search operation) lets unsearched matter through to issue?”

    Max, this kind of question seems a bit unfair. For one thing, Ned didn’t suggest anything like this. Further, the examination schemes employed at the EPO and the PTO are different enough that differences in examination results can easily explained without trashing either EPO or USPTO examiners or applicants.

  30. 36

    MVS
    I couldn’t agree more but isn’t it laughable or perhaps just telling that your fine idea is to file claims with “just a few that actually recite the important details of the actual invention”. Hello McFly is anybody home?

  31. 35

    MVS – I do try to add more dependent claims where I see additional points of differentiation, but I can’t think of an instance where one was allowed. Regardless, the client filed claims, the Examiner performed a search using the broadest conceivable interpretations of the claim terms irrespective of the specification, served up the best rejection, and then had to admit that the references either didn’t teach all that they were held up as teaching, and/or the proposed combination was so rediculous that it couldn’t be sustained, even under today’s 103 jurisprudence. Why aren’t these cases being allowed? What is another search going to reveal? My experience is that further searches fare no better; I’m batting down those rejections, too. Overcoming the rejections used to be sufficient to gain allowance. If the first office action is successfully travsersed without claim amendment, then the notice of allowance should be automatic, unless the applicant requests a new search and pays another search fee. Successive non-finals waste everyone’s time.

  32. 34

    One way to avoid the new prior art rejections & resultant final when you add new limitations is by filing a few more detailed claims. Doesn’t need to be all of them, just a few that actually recite the important details of the actual invention. If the examiner doesn’t find these the 1st time around, you may have something you can add & make allowable. If they do, it can still help to expedite prosecution & avoid having to go through as many RCEs. Too bad so few attorneys actually include at least a few detailed claims that detail the specifics of the invention. It can help out everybody – examiner and applicant. Of course, quicker disposition can cost the attorney by not being able to change their fees for subsequent responses & RCEs, so….

    MVS

  33. 33

    Ned commented “If, on the contrary, one makes a good argument about the prior art or claim construction, the examiner will often conduct the second search and enter a non final instead, or allow the claims.”

    Or allow the claims. That’s so funny. I have 7 out of 9 cases in the last year where good argument overcame the first office action rejection, and in every case I had a new search and a new non-final that was no better than the first. The last case I had allowed went three non-finals before gaining allowance. I don’t understand the need for the endless rounds of new searches followed by equally strained rejections. If the initial search was propoer, and the intial rejection was the best, and those rejections were properly traversed, why must my clients go back through the process again? Extra serving of quality? Thanks, but you really didn’t need to.

  34. 32

    LeTroll: “Further, unlike pure sales, which is what I equate pure “negotiation” with, where the result, e.g. the sale, can be arrived at by any means necessary, the quest for allowability vis a vis the facts or the “truth” is supported by a legal record. That’s why used-car salesmen, MBAs and other non-technical types are not eligible to become patent attorneys.”

    Now that I’ve confirmed that this is not a joke, I’ll point out that, at the present time, there is no rational basis for excluding “used-car salesmen, MBAs and other non-technical types” from the ranks of “patent attorneys.” (by which we must assume LeTroll meant “patent prosecutors and/or agents”).

    Even were that not the case, LeTroll’s argument is simplistic to the point of absurdity. Applying for a marriage license or a loan creates a “legal record” and, as with patent prosecution, no “legal” degrees are required.

    More importantly, given that Diehrbots and Sunners alike maintain that one may patent a method of recommending a brand of snake oil or a method of selling a used car to someone who can’t afford it, the requirement of a “technical background” to prosecute before the USPTO is an anachronism, a quaint relic of a time before “filing patent applications” became its own business (does it have its own art unit yet?).

    The requirement for a technical background should be voided. It’s a discriminatory practice based on obsolete, historical facts that are no longer relevant to the contemporary USPTO which, evidently, is simply a government office where businesses go to register their business plans for investment monies.

  35. 31

    Paul:

    I also find it frustrating that patent academics with no patent prosecution experience have undue influence on patent legislation and PTO policies.

  36. 30

    Well, the original appealho, are you suggesting they actually do not conduct the additional searches we pay for when we file an RCE?

    Talk about “fraud on the patent office.”

    Actually, I don’t discount your views at all. What we need is a system where it doesn’t pay the examiner to game the system.

  37. 29

    This is for those commentators here who do not understand why it is important for leading patent academics to come to conclusions that “any actual practioner could have told them in 5 minutes” one of them put it:
    Those leading patent academics are in a position to influence patent legislation and PTO policies, especially with “study data” like this. The opinions of individual practioners, no matter how experienced, have no such influence even if publicly expressed. [Nor is there normally even much communication between patent academics and patent practitioners.]

  38. 28

    “I wish you luck with your malpractice claims that arise when you pursue your broad claims in a continuation.”

    please explain. taking what you can get and living to fight another day in a continuation is a standard strategy

  39. 27

    Ned, I disagree. It is in the US examiner’s interest to maximize the number of counts for each application. The way to maximize counts is through generation of RCE’s, divisionals and continuations. Most of the time (there are exceptions), the examiner could enter an amendment after final and allow a case, but a whole day of hooky is given up by doing so. The advisory box is their easy gravy train ticket to hooky.

  40. 26

    MaxDrei said: “The puzzle for me, Ned, is that you say that the USPTO needs to have two bites at the search cherry, in order to get a “quality” search report. Are you suggesting that the EPO (which does just one search operation) lets unsearched matter through to issue? If not, how is it, do you think, that the EPO only ever needs one go at the search operation?”

    LeMieux said something similar.

    Ideally, in a perfect world, only one search is required. But, American examiners consistently give final rejections on the basis that limitations added to the claims would require a new search. If, on the contrary, one makes a good argument about the prior art or claim construction, the examiner will often conduct the second search and enter a non final instead, or allow the claims. But having more than one search seems common in US prosecutions.

    Now, if the European examiner does NOT conduct further searches after argument or amendment where new issues arise, I can only wonder why? I don’t get it. I would think it normal and should be required by practice if not by rule.

  41. 25

    simple,

    the blip you speak of will be corrected shortly as Lord Kappos has decreed Quality does not equal reject reject reject, and eventhe minions such as Malcolm must comply.

  42. 24

    Regarding the statement: ‘even though the PTO ultimately grants patents on a large majority of the applications it receives,’ has the USPTO published an updated graph showing Allowance Rates over Time? The last one I saw had data through 3Q08 and it showed a drop from 70% to about 42%. Is it getting any better?

  43. 22

    “Isn’t that what continuations are for? It’s a perfectly reasonable strategy for prosecution: get your picture claims allowed covering your product (with maximum equivalents due to the lack of Festo issues), then file a con and pursue something broader, ideally using a completely different syntax in the claims to avoid generating estoppel that might impact the issued claims.”

    Mooney is trying to sound like he knows what he’s talking about, but we all already know he doesn’t.

    I wish you luck with your malpractice claims that arise when you pursue your broad claims in a continuation.

    Oh wait, I forgot that academics don’t prosecute for a living. They just pontificate about it.

  44. 21

    LeMieux,

    I think that I mayhave been assimilated. Malcolm at 12:10 PM actually agrees with my post at 11:24 AM.

    Maybe this was a rogue Malcolm, or some temporal-rift-alternate-universe Malcolm, or maybe even blind squirrels find nuts. There must be a reason for this. Egads, I might even have to rethink my position.

    /sarcasm off

  45. 19

    Lemley’s “conclusion” is the most banal analysis of contempo patent prosecution I’ve read in a long time. We need Perfessers to tell us this stuff?

    “They have opted for a slower process, either because they want delay so that they can modify their application to track developments in the marketplace or because they want multiple patents to build an effective fence around a single invention.”

    Same as it ever was. Filing a PCT is also an effective tool for delaying examination. *yawn*

    “even though the PTO ultimately grants patents on a large majority of the applications it receives, it may still be serving an important gatekeeper function by requiring applicants to narrow their claims”

    Can you get any more wishy-washy than this? Compared to Lemley, Charlie Brown is a titanium god.

  46. 18

    LeMieux: “Further, unlike pure sales, which is what I equate pure “negotiation” with, where the result, e.g. the sale, can be arrived at by any means necessary, the quest for allowability vis a vis the facts or the “truth” is supported by a legal record. That’s why used-car salesmen, MBAs and other non-technical types are not eligible to become patent attorneys.”

    This is a joke, right?

  47. 17

    LeMieux: “A first action allowance, at a minimum, means the Examiner did a crappy search, and, worse, means you probably left something significant on the table.”

    Isn’t that what continuations are for? It’s a perfectly reasonable strategy for prosecution: get your picture claims allowed covering your product (with maximum equivalents due to the lack of Festo issues), then file a con and pursue something broader, ideally using a completely different syntax in the claims to avoid generating estoppel that might impact the issued claims.

    Oh wait, I forgot: LeMieux doesn’t represent clients with products.

  48. 16

    Ned: “There seems to be an assumption among critics that patent attorneys will always want to obtain invalid patents for clients.”

    Nice strawman, Ned. Do you feel like a man after beating it?

  49. 15

    NAL, based on your post, I was inspired to treat Mr. Morgan’s post seriatim (which, for the record, I loathe. It reminds me of the ever tiresome “6,” who never met a wire that he didn’t see atoms falling out of)

    “It is a pleasure to see patent academics drawing more realistic conclusions about what goes on in patent application prosecution.”

    – as opposed to what? The problem is, these “realistic conclusions” are something that a prosecutor could have told you in less than 5 minutes while putting cream and sugar in his coffee.

    “I also think the above comment is astute that prosecution often requires an RCE because “the examiner conducts his search with an incomplete understanding of what the claim terms mean and the applicants draft their claims with an incomplete understanding of the prior art.” ”

    – Don’t kid yourself, its not that Examiners have a problem with understanding the terms, they are bound to “understand” the terms in terms of the specification. They cannot manufacture or apply a pre-existing understanding of a claim term that falls outside the broadest meaning consistent with the specification. As prosecution proceeds I would agree that with the help of the written record on top of the specification a more concise “understanding” of the claim terms develops, but it should not require an RCE to do except in the most exceptional circumstances.

    “As to the comment that “one would have thought that applicants want as meagre a file wrapper as possible”, yes, but that is not nearly as important now as it was a few years back when we had much stronger “doctrine of equivalents” and “file wrapper estoppel” case law.”

    Again, sophisticated applicants and practitioners are not afraid of a file wrapper. But applicants who don’t enforce patents individually, want a thin file wrapper to support their (erroneous) belief that thin prosecution reduces costs. A portfolio full of unenforceable patents is the ultimate waste of costs and resources.

  50. 14

    “even though the PTO ultimately grants patents on a large majority of the applications it receives, it may still be serving an important gatekeeper function by requiring applicants to narrow their claims”

    well DUH!!!

    Something Lemley et al may want to consider, is actually READING THE PATENT STATUTES!

    “35 USC 102 A patent SHALL issue unless”

    It is incredibly naive to think that some arbitrary percentage of patents shouldn’t issue just because “there can’t be THAT many good inventions out there…” or something along those lines.

    The fact is, under language of the patent statutes, ALL applications are susceptible of issuing.

    Lemley et al put forth these “conclusions” as if write as if they are revolutionary and as if actually contributing something to the knowledge base…

    My diagnosis – too many Twinkies

  51. 13

    Re the above comment about reducing prosecution “once there is a will on both sides to keep churning to a minimum”:
    Unfortunately, there is, and always has been, a serious disincentive for that. Too many of the [45%?] foreign-origin U.S. applicants, and many large U.S. companies, think that they are doing effective cost-control management by negotiating low application filing costs. Yet far less often do they do effective application prosecution cost control. This strongly incents law firms to recoup lost application billing hours in application prosecution. Cheaper initial applications also further increases prosecution because less time was available for better and more varied initially-filed claims. Not even good translations into proper English-languge terms of art in the subject art are provided in many cases.

  52. 12

    LeMieux,

    Taking comments by Mr. Morgan in mind, another advantage of starting “thin” and then building through continuation practice.

    There may be something still at the table – just don’t mistake the end of the first course for the end of the meal.

  53. 11

    The puzzle for me, Ned, is that you say that the USPTO needs to have two bites at the search cherry, in order to get a “quality” search report. Are you suggesting that the EPO (which does just one search operation) lets unsearched matter through to issue? If not, how is it, do you think, that the EPO only ever needs one go at the search operation?

    Maybe it’s an A publication thing. The logic of the EPC is that readers of the A publication get the search report as well, so they can form their own opinion what claims would meet the provisions of validity over Europe, and so make their investment decisions without needing to pay attention to the subsequent dialogue between Applicant and Examiner. That logic dictates a first class and comprehensive initial search and report.

    If the EPO Examiner is ill-informed or lazy, and lets through to issue a claim that the reader’s FTO had assessed as not valid, well then there’s always the possibility to help the EPO to a more correct view of validity, by filing an opposition.

  54. 10

    I don’t see the “surprising results” promised by the abstract. The only part of this paper that surprised me in the least is the claim that 13.46% of the new utility apps they looked at received a first action allowance. Is there an area of practice that is receiving these?

  55. 8

    Applicants who want a “clean file record” are generally corporations who will never assert the resulting patents, and therefore view a thick file record as a reflection of thick fees.

    Any applicant (and attorney) worth their salt, wants to overcome some art.

    A first action allowance, at a minimum, means the Examiner did a crappy search, and, worse, means you probably left something significant on the table.

  56. 7

    It is a pleasure to see patent academics drawing more realistic conclusions about what goes on in patent application prosecution.

    I also think the above comment is astute that prosecution often requires an RCE because “the examiner conducts his search with an incomplete understanding of what the claim terms mean and the applicants draft their claims with an incomplete understanding of the prior art.”
    As to the comment that “one would have thought that applicants want
    as meagre a file wrapper as possible”, yes, but that is not nearly as important now as it was a few years back when we had much stronger “doctrine of equivalents” and “file wrapper estoppel” case law.

  57. 6

    Prosecution as negotiation, sounds nice; and it is no great revelation to those who do it every day. But it should be noted that, unlike snake oil sales (which involves copious amounts of “negotiation”), patent prosecution is susceptible to some level of objective analysis, which should place it in a different realm.

    In other words, prosecution should not be looked at as a pure negotiation process, but more of a cooperative process of uncovering the facts regarding issues such as patentability. Further, unlike pure sales, which is what I equate pure “negotiation” with, where the result, e.g. the sale, can be arrived at by any means necessary, the quest for allowability vis a vis the facts or the “truth” is supported by a legal record.

    That’s why used-car salesmen, MBAs and other non-technical types are not eligible to become patent attorneys.

  58. 5

    MaxDrei, you overestimate the skill level of all involved.

    I think the problem arises because the examiner conducts his search with an incomplete understanding of what the claim terms mean and the applicants draft their claims with an incomplete understanding of the prior art. Often, it takes at least the first OA for the applicant to understand where the art somewhat is and where the examiner is misunderstanding the claims or the invention. If the art requires limitation, or the examiner needs some clarification be added to the claims, he often enters a “final” because the added limitation would require a new search. That search is what the RCE fee is for, in reality.

    I ideally there should only be one search, but realistically, there should be two. It would be nice if we could overcome a final rejection on the basis that a new search is required simply by paying for it, rather than filing an RCE that includes fees beyond a search fee.

  59. 4

    Another reason for opting for the slower process of continuations (and appeals) rather than RCEs: waiting for new USPTO administration that will not reject what the Applicant believes to be valid claims with whatthe Applicant believes is irrelevant art.

  60. 3

    Intuitively, one would have thought that applicants want:

    1. as meagre a file wrapper as possible, but

    2. sooner or later a decent set of claims going to issue,

    which suggests that, once there is a will on both sides to keep churning to a minimum and quality at a maximum:

    1. apps as filed are drafted so as to be amenable to a decent quality search

    2. Exrs are capable of doing a decent search (of the invention claimed first in the set of claims originally filed)

    3. 75% of claim sets filed in response to the search report can proceed to Allowance, but

    4. The remaining 25% are more problematic, with ping pong dialogue (or an interview) being needed, before Exr and atty reach closure.

    This isn’t rocket science. It’s reality, isn’t it?

  61. 2

    Gatekeeper this. Gatekeeper that. There seems to be an assumption among critics that patent attorneys will always want to obtain invalid patents for clients. Obviously they do not, but the process at arriving at just the right limitations to distinguish over the art is not easily accomplished within the confines of compact prosecution.

    Kappos is right to introduce preliminary interviews. Perhaps delaying the examination of RCE’s is also a good move, as it may force more negotiation after final. Regardless, the move is towards at least three and perhaps four or more interactions with the examiner to get the claims just right. Perhaps we should begin to make this whole process the subject of formal procedures.

  62. 1

    Too bad Kimberly Moore isn’t a co-author. It would be reassuring to know she’d backtracked from her (problematic) “continuations-are-a-plague” paper.

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