PTO Asks for Comments on Improving Patent Quality

The PTO is on a mission to “improve the quality of the overall patent examination and prosecution process, to reduce patent application pendency, and to ensure that granted patents are valid and provide clear notice.”

To that end, the PTO recently released a Request for Comments (RFC) on Enhancement in the Quality of Patents. [PDF]. The RFC asks for public comment on ideas that the PTO can implement (without changes in the rules or laws or much increased expenditure) that improve patent quality and the quality of the examination process. Generally, the office is looking for practical suggestions of ways to obtain measurable quantites that are linked to meaningful outcomes.  The suggestions should all be directed toward the PTO’s goal of providing the strongest quality patent possible in the shortest time permits.

The RFC identifies seven categories of inquiry:

  1. How should the office measure quality of the examination process as well as quality of the final product (issued or abandoned patent)?
  2. What stages of the prosecution process should be most closely monitored for quality problems?
  3. Are there ways to reduce pendency while increasing quality? (How has the flux of continuations and RCE’s impacted quality and pendency?)
  4. What pilot prograrms are working: Peer-to-Patent; Pre-Appeal Brief Conference; First Action Interview; CLE for Practitioners? Ideas for pilots?
  5. How should customers be surveyed for their information regarding patent quality?
  6. Are there specific tools (software, processes, etc.) that the PTO should be using to increase quality?
  7. Incentives: Are there ways to provide incentives to both applicants and examiners to improve quality?

The RFC additionally identifies “areas of particular USPTO interest”

  1. Prior Art: How to identify the “best” prior art in ways that it can be used by an examiner.
  2. Higher Quality Patent Applications: Are there ways that the USPTO can help (or push) applicants to write better applications that do a better job of describing the invention and that include claims in the initial application that actually take the prior art into consideration?
  3. Comprehensive First Office Action: How can we measure whether examiners are doing a good job in their initial office actions? Are there better ways for examiners to communicate rejections?
  4. Interviews: How should interviews be used in a way that improves quality and pendency?

Please e-mail comments to patent_quality_comments@uspto.gov by February 8, 2010.

In the context of this inquiry, a “quality patent” has been defined as:

A patent: (a) For which the record is clear that the application has received a thorough and complete examination, addressing all issues on the record, all examination having been done in a manner lending confidence to the public and patent owner that the resulting patent is most likely valid; (b) for which the protection granted is of proper scope; and (c) which provides sufficiently clear notice to the public as to what is protected by the claims. The present quality improvement effort has, as one goal, reduction of overall application pendency and is thus also directed towards identifying quality issues that give rise to process inefficiencies. The term ‘‘quality patent’’ as used herein does not include the economic value of the resulting patent, which is a result of market conditions and not the patent process itself. Rather, providing the strongest quality patent possible in the shortest time permits making the best use of a patent, given any set of marketing conditions.

Read the full RFC here before you add your comments: PDF.

94 thoughts on “PTO Asks for Comments on Improving Patent Quality

  1. 94

    Вообще да, мне это напоминает ситуацию с выборами призидента Украины. Выборы прошли, а не факт, кто призедентом будет. Да, блин, демократия. Хех, простите за флуд небольшой, навеяло просто.

  2. 91

    “Speaking of nobody caring 6, what makes you think anyone reads your lengthy manifestos”

    I keep getting these annoying responses as if out of thin air. It seems that both my computer at home and at work has this habit.

  3. 89

    They’ve already been told numerous times what they have to do. It’s high time they got off their asses and started doing some of them.

  4. 88

    Thanks Curious but that wasn’t my point. I regret I didn’t make my point more clearly.

    My point is that the interlude gave US patent attorneys and USPTO examiners exposure to the way obviousness is handled at the EPO. That exposure prompted USPTO Exrs to put together new ways of arguing obviousness, thereby putting more obstacles in the way of claims that were embracing obvious subject matter.

    I should add that I regret it when Examiners who lack any real understanding of EPO-PSA make intellectually unsound TSM obviousness objections. EPO-PSA then stands condemned by critics, who themselves don’t understand EPO-PSA.

    I have opened the EPO-PSA subject on the Kappos blog, and I hope that interested readers will follow me over to that blog.

  5. 87

    “What effects did that interlude have, on quality at the USPTO?”

    None, really, in my experience. The protection you get in the US really is the same whether the application is based on a PCT application or not.

    Agree, fellow bloggers?

  6. 86

    In Europe, they do have a choice. While the EPO has enough to do, the national Patent Offices don’t, so they compete for the work.

    Their disadvantage is that they issue a national patent that is effective for one small country only. Still, for some small businesses based in a comparatively rich country like France, The Netherlands, Germany or UK, that’s still good enough.

    The thing about the EPO is that it’s so promiscuous. It will search, examine and grant a patent for anybody. By now it’s up to 40 countries and 600 million subscribers. The USA should try it sometime.

    But wait. It did already. Applicants from the USA used routinely to file PCT at the USPTO and choose the EPO as ISA and IPEA. What effects did that interlude have, on quality at the USPTO?

  7. 85

    “”Remove any examiner incentive to drag things out.”

    That’s funny. The same should be done for patent attorneys. Unless I am mistaken, patent law firms are “for-profit” buisnesses.”

    While inventors have their choice of patent practitioners, practitioners/inventors do not have their choice of Patent Offices!

  8. 83

    “Examiners, would an improved and updated classification system help?”

    In the computer software art, no.

  9. 81

    “Remove any examiner incentive to drag things out.”

    That’s funny. The same should be done for patent attorneys.

    Unless I am mistaken, patent law firms are “for-profit” buisnesses.

    Aren’t they???

  10. 80

    Look at every critical study of the PTO in the past – always a big factor is PTO management.

    And then there’s that weird advisory board.

  11. 79

    Any request for ways to improve patent quality that does not begin with the question: “How can PTO management improve the quality and/or accountability of its activities?” – any RFC so lacking is a complete waste of time. Look at every critical study of the PTO in the past – always a big factor is PTO management.

    But in answer to all of the PTO’s question in this phony survey, the answer is quite simply: “JUST READ ALL OF THE SUGGESTIONS MADE IN THE LAST TEN YEARS YOU HAVE REFUSED TO ACT UPON”. Some years ago there were massive studies of the PTO by the FTC, NAS and GAO – with tons of suggestions, few acted upon by PTO managements.

    So why not ask “Why do you think the PTO has been unable to act upon any/some/many of the valuable suggestions made in the past?”.

  12. 78

    So my initial question, which you identified as a good question, remains.

    As well it should. Mine also will remain. I’m genuinely curious about the answers to both questions.

  13. 76

    Mooney–

    A crappy agent/attorney can in fact result in a crappy patent, either through fraud that leads to an unenforceable patent, or lack of competence, that leads to an unnecessarily narrow patent.

    In the case of fraud, the sanctions are severe, and are pursued. Lack of competence is more difficult, but I don’t think that breadth of issued claims is the issue under discussion here.

    In any case, attorneys are subject to disciplinary proceedings through not only their local/state/federal/pto bar, they are also subject to civil claims made by their clients for malpractice, to dismissal from a firm if an employee, or to dismissal by a client at the level of a firm or a solo.

    That is why every practising attorney I know, including myself, would be considered paranoid by anybody else. It is also why we pay hefty premiums on our malpractice insurance.

    Examiners are not paranoid like us, they are not subject to the same sanctions as us, and they do not incur the costs of insurance as we do. Compared to us, they get a free ride.

    So my initial question, which you identified as a good question, remains.

  14. 75

    BJA,

    That’s a malcolmism, or in other words, an uninvited and typically baseless enjoinder against the profession that he professes to be a part of.

    Pay no heed – just another day at the Trainwreck.

  15. 74

    Oops, I read a MM post. I am now dumber.

    What effect does the number of agents sanctioned or disbarred have on the quality of Office action issued by Examiners?

  16. 73

    HOW MANY EXAMINERS HAVE BEEN DISMISSED FOR POOR PERFORMANCE OR INCOMPETENCE IN THE PAST 5 YEARS??

    An interesting question. Also interesting is the number of agents who have been sanctioned or disbarred over the past 5 years.

  17. 72

    IBP, you’re right, but subjective review by somewhat adverse parties should obviously be taken with a grain of salt. For example, it should be graphed over time, and only looked at in increments of 20 or so. Further, if the Examiner is being rated by just a handful of attorneys, then that rating should be discounted against the production of that Examiner. There’s a balance to be struck, but it would provide a useful metric for the PTO instead of quality = reject.

    Quality is ultimately quality of exam AND quality of allowed patents (which is highly dependent on the search abilities and technical and legal accumen of the Examiners).

    If you want to speed this deal up, then I’d also suggest that we do away with the requirement for full examination and go to an accelerated Exam. That is, allow the Examiner to dispense of the dependent claims and redundant claim elements in a cursory fashion for non-final rejections: “Reference A teaches claims 2-10, and reference B teaches the remaining elements of claims 11-15. Claims 16-20 are rejected similarly to claims 1-15.” Final rejections must be complete and present no new grounds of rejection. That “final but I’m citing new art in light of the claim amendments” stuff is BS.

  18. 71

    “This “rating examiners” idea seems pretty useful.”

    Yes indeed, maybe we could finally get rid of 6…

  19. 70

    This “rating examiners” idea seems pretty useful. Perhaps it should be combined with the pilot Ombudsman program.

    The practitioner can contact the Ombudsman, prove that they have dealt with the examiner (e.g. give a case #). Then the Ombudsman confirms whether the feedback appears legitimate. For various reasons, do not directly link the review to the case. Instead, and more importantly, for the purposes of improvement, link the review to the examiner, TC, etc.

    Quality of examination is both objective and subjective. This review idea is one of those things that would capture that all important subjective side of things.

    I think it’s a great idea.

  20. 69

    Look, you can have all the data you want–the question is, what do you do with it?

    Sure, improving existing examiners is fine in theory, and would actually work with some examiners in practice.

    But not all examiners. Ones who actually improve should be rewarded. Ones who do not should be fired.

    Those doing a good job don’t want the crappy ones around anyway, it just creates hassle for them, and they get all sorts of unwelcome lowest-common-denominator crap foisted upon them, that they consider a waste of time and not serving their needs or goals.

    HOW MANY EXAMINERS HAVE BEEN DISMISSED FOR POOR PERFORMANCE OR INCOMPETENCE IN THE PAST 5 YEARS??

  21. 68

    Old Guy–

    Both are equally important. In-process to make sure they got what was in the OA right, and allowances to make sure that the in-process OA’s were comprehensive and complete.

  22. 67

    BASIC PREMISE:

    NOTHING MATTERS IF YOU CANNOT GET RID OF CONSISTENTLY CRAPPY EXAMINERS.

    Bad Joke Ahead–

    You are not alone. I had the same idea of reviews by attorneys, and your suggestion to use them internally is a good one.

    Nowotarski–

    I disagree with the premise that to get good at drafting in a particular art, a practitioner needs to file lots of apps in that art. I have filed several apps in areas that were “new” to me, and they were good apps, some now issued patents. Of course, they took me forever, and I didn’t bill for coming up to speed in the relevant art–I basically took a bath on them. Also, the arts were not entirely new, but related to areas in which I was already working.

    But that is the fulfilment of my professional responsibility when I agreed to prepare and prosecute the apps in the first place.

    And from my experience doing opinion work, the corollary is also not necessarily true, that because a practitioner has filed many apps, they file good apps. Obviously.

    Good bundle:

    1) evaluations by practitioners, for internal use
    2) no new rejections in final OA’s
    3) ability to dismiss examiners for incompetence.

    NOTHING MATTERS (including 1 & 2 above) IF YOU CANNOT GET RID OF CONSISTENTLY CRAPPY EXAMINERS.

    The relationship between government and its employees and contractors needs to change–scrap the Kennedy-era public sector union rules. They are unsustainable as negotiated, and power a race to the bottom.

    Carrots aren’t enough, sticks are also needed. Since when hasn’t that been true? Those whose performance is unacceptable need to accept the lash.

  23. 62

    Fed Up, I see that you’re an examiner.

    No, I would not make the cumulative ratings public in my scheme. They would be confidential, like other employment information. Unlike your hyper offensive, overly aggresive usage, I can envision a system where such ratings could be used to determine what an Art Unit or TC should focus on in a monthly or quarterly CLE type class.

    I’m talking about improving the system, not dreaming up perverted ways to hurt individuals like you’re pouring over.

    I see why you’re in govn’t work though.

    With respect to your questions, I think you already know that the answer is, “It depends.” We have a phrase in practice called, “Throw the Examiner a bone.” This is what we do when the Examiner’s interpretation is clearly unreasonable, but we just humor them to move the case along. So, amending the claims is not necessarily indicative of a good action. Sometimes though, a new reference is good and we amend claims accordingly. That should be considered a good action.

  24. 61

    “Create more Group esprit d’ corps and have inter group competitions based on backlog reduction rate.

    This is going to improve patent quality?

    LOL”

    I wouldn’t expect an angry bitter cynical sniper
    (and by sniper I mean that in a troll sense) like you Mooney to understand anything about esprits d’ corps much less quality. You’ve been waaaay to busy serving yourself all of your miserable little life to have served your country in any manner (such as, g-d forbid, the military – as I and many in government have) and fail to realize that patent examination is still a public SERVICE profession.

    Now go back to your steam grate and stop spitting on the passers-by.

  25. 60

    Bad Joke Ahead
    Do you think letting practitioners rate the office action might be a little biased? Do you think letting examiner’s rate practitioners in the same manner would be fair? …rated on things like “Initial claims read on cited prior art”, “Arguments not in line with claim language”, “Cites pages of case law off point”. “Selectively argues prior art without acknowledging sections pointed out by the examiner”….

    Is a an office action that causes applicant to amend his claim a good office action? What if it missed a 112 rejection or made a bad 112 rejection but had a good art rejection? How does that get rated? Should ratings/grades of examiners an attorneys be made public?

  26. 59

    An invention characterized by the technical feature “No moving parts” deserves a facetious objection to it. Was the attorney who wrote it seriously expecting that formulation NOT to attract objection?

    When something is objectionable under several headings, an Exr should recite all of them. Here, I would rely more on 103 and 112 than on 102.

    Perhaps the Exr used 102 because that’s what EPO Exrs do, when faced with a claim written in the USA that is not allowable. When an EPO Examiner, using English as a foreign language, objects (under Ch II, PCT) to a claim written in the USA as being “unclear” the objection is not understood but it nevertheless prompts a torrent of abuse as a response. Better to write that the claim is so wide that it’s not clearly delimited from the art, and so lacks novelty.

    Did not the same thing happen here, with the “no moving parts” wonder invention?

    See, as a PTO Exr, sometimes you just can’t win, either way.

  27. 58

    Curious, I’m curious as to how you could ever confuse this country with being “Penny wise and pound foolish.” I get the pound foolish part, but I’ve never seen an example of this country cutting govn’t costs on ANYTHING.

  28. 57

    Fed up old guy, in my long and magically disappeared response, I addressed that one.

    Let practicioners rate the office actions on several grounds such as “understands technology”, “understands relevant laws and MPEP”, and “gets point across”. After a hundred or so evaluations, every examiner’s rating is going to look a bit different, and it would let art unit directors know what to focus on in any continuing education.

  29. 56

    “in a claim for something “with no moving parts” an examiner once said all matter has “moving parts” because electrons “jump” from one orbital to another.”

    Also, the device is constantly in motion due to the orbit of the earth around the sun.

  30. 55

    1. Stop relying so much on dictionaries for broadest reasonable interpretation. The linked article from NYT his Sunday explains why better than I could:

    link to nytimes.com

    2. Don’t be in love with metaphor. For instance, in a claim for something “with no moving parts” an examiner once said all matter has “moving parts” because electrons “jump” from one orbital to another.

    3. Stop mindless text searching. Don’t forget that Bell’s original telephone patent doesn’t even have the word “telephone” in it.

  31. 54

    6 writes: “”Examiners, would an improved and updated classification system help?” I didn’t realize that this was on the table. The way I understand it they’re already putting millions into doing just that, but they estimate the cost of making up for the “lost years” where none was done is some ungodly amount.”

    The failure to update and maintain the classification system is another example of where our country over the past decade or three has failed to maintain its infrastructure. “Penny wise and pound foolish”

  32. 53

    Have a course for all examiners on restriction/election and then test them to make sure they understand it.

  33. 52

    So far no one has addressed the very first question:
    “How should the office measure quality of the examination process as well as quality of the final product (issued or abandoned patent)?”.

    But first:
    Which is more important to measure: the allowance or the in-process office action? Since the world sees the final product (patent) it always seems to get the most attention, quality-wise, however it seems to me that it is the in process review of office actions which only the players (examiners and applicants) see and which are what attorneys complain about the most.
    What is a good quality office action?
    What is a bad quality office action?

  34. 51

    I’m in the academy now, and from my perspective, I feel like it’s been extremely helpful in terms of teaching me the core mechanics of the job.

    On the other hand, my trainers have been excellent, and I haven’t had trouble picking up and understanding the art. I can see how someone in a different art could benefit from a more immediate immersion in the TC.

    I don’t know that a pay increase would help much –with this economy, people like me are pretty happy having any kind of work. Just hire more of us, give us more time to do a quality job, and don’t make us fear for our jobs whenever we think we’ve found allowable stuff.

  35. 50

    There is absolutely no doubt that an updated classification system would help. Not just for searching, but for those occasions when an application shows up in your docket that was classified wrong or otherwise needs to be transferred because it’s not in your art. Trying to figure out what class the application belongs in so that you can transfer it can be a royal pain. Try searching the classification system for plasma display panels…they’re classified in “electric lamp and discharge devices having three electrodes”. Please.

  36. 49

    “Examiners, would an improved and updated classification system help?”

    I didn’t realize that this was on the table. The way I understand it they’re already putting millions into doing just that, but they estimate the cost of making up for the “lost years” where none was done is some ungodly amount.

    Searching european subclasses is so funny, you find the proper sub (which can be a bit of a pain due to the number of subs in a class), you look there, it has 3-15 patents and all of them are closely related to what you need. Go figure.

  37. 47

    “I recently saw an Office Action where 60+ claims were rejected with 5 lines of text!!”

    Depending on the claims that might not be unreasonable. I routinely get 10-15 with 5-10 lines of text. Change things like “a metal bicycle frame” in claim 1 to “an aluminum bicycle frame” which is recited in claim 5 in the statement of the rejection and you just knocked out a claim with no extra words. Nothing to see there.

    “How can every limitation in 60+ claims be rejected with 5 lines of text?”

    The dependent claims recite nothing but the equivalent of changing “metal” in the ind. to “aluminum”. Big whoop, happens all the time, if the ref shows it then you’re all good.

    My record is probably something like 20 claims in 10 lines of text.

    I have to admit, when you do it right you get a lot less arguing it seems when you simplify the rejection.

    In short:

    EPIC WIN!!!!!!!!!!

  38. 46

    I would do a bunch of things:
    1) Quadruple (or more) the basic filing fee. This will force companies to file smartly and will justify spending more per application. If a solo inventor is using a lawyer (and spending big bucks anyway, he can afford the extra fee). A pro-se inventor is probably just wasting the office’s time but in the spirit of a democratic administration, provide reduced fees for pro-se inventors.
    2) Use the new money to hire more examiners and pay them a lot more — no, I am not an examiner and never have been. More pay will hopefully prevent (at some level) examiners from leaving the USPTO and will entice better examiners to join.
    3) Give a compehensive test on English to the examiners, and get rid of examiners who don’t pass. This needs to be more than just passing the TOEFL test. Too many examiners can’t communicate in English.
    4) Provide a mechanism for attorneys to report lousy office actions to a review board that is not in the group of the examiner. This board needs to not just protect the examiners like so many supervisors do. I recently saw an Office Action where 60+ claims were rejected with 5 lines of text!! How can every limitation in 60+ claims be rejected with 5 lines of text? Punish the examiners who put out severly defective office actions.
    5) Give the Examiners more time to do their jobs. Give me a phone call and one good office action instead of two lousy OAs.

  39. 45

    I agree that the Patent Academy was a very bad idea. As a junior examiner, I really did not begin to understand my area’s art collection until I began conversing with people in my art unit. I quickly found out who the weirdos were (lots of them at the PTO) and those who were professionals (very few, but they are there). After that, things became more manageable and my learning curve improved immensely.

    The Academy was probably some idea of a useless do nothing manager, probably gone from the PTO by now, who justified his position with such useless and damaging ideas.

  40. 44

    Silly: 3. Spend more time examining independent claims, and review examiners’ work product early on. The team idea would inherently do some of this if the team members don’t act as mere rubber stamps.

    ————-

    This should be happening now, because a primary examiner (e.g., an SPE, GS-14 primary, GS-15 expert) must sign off on all junior work. This should be considered a team!

    Also, teams were piloted in the past, about 14 years ago. It devolved into a round robin of one person doing all the work, and the other two “signing off.” It was a joke.

  41. 43

    Silly: 2. Stop examining all dependent claims as a matter of course (I know it doesn’t happen in practice now, but I mean stop requiring even the formality). As a middle ground, perhaps allow applicants to designate a certain number of dependent claims to be examined, either with a cap (e.g. 10 claims) or by payment of an additional fee. This will free up time now spent on low-value tasks that could be better spent on doing a better job on what counts more–the independent claims.

    —————–

    Well then, the PTO should stop charging fees for all those claims. BECAUSE WE ALREADY PAY AN ADDITIONAL FEE FOR THOSE CLAIMS

  42. 42

    >>Junior examiner | Dec 18, 2009 at 08:32 PM
    1. Pay close attention to the references the applicants submit on the IDSs.
    2. Get a PLUS search on every case you do. Search the most relevant subclassses listed in the PLUS search. This is especially true if you have to search outside of your usual class on occasion, which you will.
    3. When you get a really relevant reference, search its subclasses. Forward- and back-cite it, and also search its inventors and assignee to see if they did similar things.
    These strategies helped me immensely when I was a a first-year examiner.

  43. 40

    I’m so glad to see all of the initiatives coming from Director Kappos. I just hope they’ll be implemented in time for me to keep my job. As a new-ish examiner, I think the way that examiners are evaluated is absolutely insane. I don’t care what anyone says — there is simply NOT enough time given to properly examine a case under the current production system. I’m embarrassed about some of the actions I’ve done, but every day is a race to get the counts in. It’s exhausting and de-humanizing.

    The Patent Academy was a nice idea and may still be a good idea for learning the statutes and other basics. It’s a terrible place to start doing cases. My instructor wasn’t knowledgeable in my art so I started doing cases knowing NOTHING about the art I was in (I did about 50 FAOMs while in the academy and the amendments are killing me now because some of them were so bad). They need to send new examiners to the art units before they start cases and have people (who are given an appropriate amount of time) train the junior examiners in how to search in their art, because it can be quite different for different arts. New examiners should also be trained in how to do class searches in their art. The academy really only focused on text searching.

    I could go on, but my eyes are tired of looking at a computer. Here’s hoping for improvement!

  44. 39

    I’d look at three ideas, inspired in part by the EPO:

    1. Move to 3-examiner examination teams. One examiner has responsibility for the work and for educating the others, but all team members have to understand the claims, prior art and rejections, and sign off on Office Actions. Basically one examiner reads the application closely and does the search, and then has one or more meetings with the team to explain/discuss the issues before an office action is sent out.

    2. Stop examining all dependent claims as a matter of course (I know it doesn’t happen in practice now, but I mean stop requiring even the formality). As a middle ground, perhaps allow applicants to designate a certain number of dependent claims to be examined, either with a cap (e.g. 10 claims) or by payment of an additional fee. This will free up time now spent on low-value tasks that could be better spent on doing a better job on what counts more–the independent claims.

    3. Spend more time examining independent claims, and review examiners’ work product early on. The team idea would inherently do some of this if the team members don’t act as mere rubber stamps.

  45. 38

    Oh, and I almost forgot. You could improve quality like 1000% by simply showing inspirational movies (300, gladiator, etc) 12/7 in the pantries so that anytime you go in, you’re right there soakin up some inspiration.

    I mean can you imagine walking in to put your little frozen lunch or leftovers in the microwave and you see this?!?!?!!?

    link to youtube.com

    Let’s be clear, you’re gonna be pumped. Our troops kill Iraqies to this. Quite proficiently from my understanding. There is no reason for us to believe that it would have any less of an effect on the everyday examiner. It has the net effect of increasing your focus.

  46. 36

    Big I’m going to capitalize the important word for you this time.

    “Big, I’m sure if it were practioners who were responsible for the ISSUANCE of patents then the office would gladly do just as you suggest. Until such a time however…”

    Notice how that word in bold has a meaning. You guys have the first say as to what the claims will be, but we have the final say. At least in so far as we have a say as to what they will not be. It is a dual operation with responsibility on both sides.

    “By the way, what’s the story with your buddy Hawk?”

    Idk, I assume he was eaten by a patent dragon named microsoft 🙁

    “Put some specicivity into the proposed modification. Maybe like a sentence or a sketch to answer questions like “include how?” and “include where?””

    Znutar, as soon as attorneys are required to do that then I support examiners doing it as well. Until then, I think we’re at a deadlock. Examiners want to lack specificity to build in breathing room in modifying the designations later to avoid doing another non-final so long as the references do work together in some fashion. The reverse is true for attorneys. Remove it from the one side and remove it from the other side and all is well.

    I think in my own practice what would be most helpful would be for the office to hold a required day long workshop for all registered attorneys/agents explaining to them how to write a persuasive response rather than just “a response”. You’ll see 3 paragraphs of caselaw that may or may not be anything important that the examiner is given 0 time to verify one way or another followed by a paragraph about how one reference (perhaps amongst many in a combination) simply mysteriously does not contain one element (or perhaps the whole claim is simply recited).

    W

    T

    F

    is that? Guys, seriously, just say what you wanna say. If you think an element is missing, then state the element, state where you think the gaping hole is in the reference, and then state that you’d appreciate the examiner pointing out with greater specificity what specifically is being taken to fulfill that limitation if you should so happen to be incorrect. If you see some things in the reference which you think perhaps are being used to meet the limitation but you don’t think it really meets the limitation then take some time to explain WHY. Then ask what the reasoning is behind thinking any different than how you are thinking. It’s called using what the other person thinks to persuade them rather than blurting out a big jumble of nonsense about how something is simply missing. Some of you already do this. Others of you do not.

    And if you’re feeling ballsy, and really want to have an impact on quality, which, if I were a big time patent attorney I certainly would be (at least during a non-recession) then I’d go ahead and put in the response that I’d be happy to file an RCE right then and there (on my own dime if need be, and on first action) if the examiner will be so kind as to point out how my response is completely off base and that the limitation was right in front of my nose the whole time. I’m pretty sure you can file those at any time right? Put your money where your mouth is, and offer the other side an incentive to do what you want them to.

    I mean sht, you can do this at the local coffee house to get the girl there who just doesn’t give a sht about her job to make you the best latte you ever had. W T F do you think is any different about the office?

    You might recognize this later way of doing business as the way many of the best attorneys do business at final except that they don’t actually tell the examiner that they’ll file the RCE, they just do without bi tching. There is no further AF arguing, if they were wrong, then they send in an RCE with their next argument. Now, that’s the only possible thing that they (who are on the top of their game compared to most of you) could possibly improve on. Is going ahead and doing it at first action, giving themselves a reason to be right. This is apparently since they have no real reason to be right currently since they can just file arguments all day long without many constraints (big budget). Although the recession may have changed things somewhat in this regard.

    You guys just saying “alright, that was my bad, go right ahead sir”.

    The above is just my personal suggestions on how the outside attorney or agent can personally make a contribution towards the quality of responses, actions, and patents going to issue at the office. And of course calling the other person and getting a feel for what they are thinking is helpful too. I know, I know, most of you reading this probably aren’t smart enough to be able to get inside another person’s head like that, but I’m just making suggestions here, OK? You could try, even if you su ck at it. Maybe one day, you’ll get better.

    And of course all this is just in my own personal practice because the vast majority of my OA’s are right on to begin with. For instance however, there are other examiners who have a lower rate of successful completion of an OA that is spot on. One of these examiners was just recently let go and I was somewhat sad because I had just been trying to help him (amongst some others) get a better handle on the job. Too little too late I suppose. Then again, he was just a probationary dude.

    In any event, in the case of the later kinds of examiners, there isn’t a whole lot that you can do. At least imo. They simply don’t get what is going on. It is a fundamental lack of understanding that is too embedded for any but the most determined individual reforms to have much of an effect upon. Not all people are cut out for this job.

    For all those that are left in the middle I don’t even think there’s much more to be done there, the improvements to their examining has to come from long term learning on the job under competent spes/primaries.

    The only other thing you can do is send folks to training sessions. As to the current training sessions though you see mostly people that go to these little training sessions come back having actually retained little from the training. (myself included quite often) Perhaps a fundamental change in the nature of the training sessions would help. That is, instead of simply lecturing for an hour to a disinterested crowd, make them work some problem cases during the training and have plenty of problem cases to test them on until they consistently get the correct answer. Perhaps do this in addition to the lecture.

    That’s just about all that you can do on the examiner side of things so far as I know. There’s a piddle here and a piddle there, but when we’re talking about large scale improvement in the performance of the examiners then that’s what you do.

    Now there are certainly other things that you can do, such as for the office to put into place incentives for communication between the examiner and the attorney to be enhanced. The hour for initiating an interview I felt was a long time coming, and I feel will go a long way towards garnering results. This category, and others warrant a paper’s worth of writing on each and many have been presented before. I don’t feel like typing them up.

  47. 35

    Analyze and grade examiner abilities using average actions-per-disposal. Continue reviewing allowances. Quality will rise as high as it can go.

  48. 34

    Two things that would help improve the prosecution flow:

    1. Allow deferred examination. This would allow applicants to decide which applications to accelerate in the examination process and which shouldn’t be accelerated and may not even be examined.

    2. Forbid making an Office Action Final where the Examiner makes a new rejection, especially based on newly applied/cited references. The statement we often see in Office Actions that what applicant’s did necessitated the new ground of rejection/references is simply “boilerplate” nonsense. By not allowing the Office Action to be made Final if there’s new ground of rejection/newly cited or applied references, you force the Examiner to assert all relevant art/rejections in the 1st Office Action, and not use the 2nd Office Action to simply add new rejections/references while essentially preventing the applicant from having a fair opportunity to respond. This would reduce the number of RCEs that are filed, would focus the prosecution sooner, and would also avoid premature appeals.

    That’s my top two.

  49. 33

    “Social media is a newly emerging art?”

    In 2003 there were 6 US patent applications published related to social networks. In 2009 there were 988 applications published. Graph here link to bit.ly

    “Business Methods a niche art?”

    About 1% of published applications are in class 705, computer implemented business methods.

  50. 32

    broje: If I take too long to write a post (more than a couple of minutes), it’ll eat my post. Obviously more likely with longer posts. I’m trying to get in the habit of a quick ctrl-A ctrl-C just before I hit post, so that if it does feed the forum monster, I can easily repost it.

  51. 31

    To people having their posts disappear, I have found that if I copy and paste much of anything into a post, there seems to be a filter that prevents the post from succeeding. I know some forums have a filter that prevents anything over a certain number of words being pasted in from posting becasue there is a certian number of words that exceeds “fair use.” Maybe there is such a filter on this site. So if you pasted all those questions in, and then wrote your answers, that post might be filtered out. But I don’t know for sure.

  52. 28

    BigGuy: “If you simply examine the patents, according to the rules, without obsessing over whether an embarassing toilet reservation system occasionally emerges, then all those other things will take care of themselves.”

    Well said.

  53. 27

    MN: But in some of the newly emerging arts (e.g. social media) or niche arts (e.g. business methods), no single client has a lot of cases.

    Social media is a newly emerging art? Business methods are a “niche” art?

    The issue here is not lack of Examiner “experience.” It’s lack of Examiner creativity and intelligence, combined with extremely bad judgment from PTO management, including these folks: link to patentlyo.com

  54. 26

    ? Everyone else is having posts deleted too?

    I posted an answer to each of those questions, and it just went pooooooof!

  55. 25

    Let practioners rate (1-10) an examiner after each OA on “knowledge of the rules”, “gets to the point”, and “clearly explains himself”. Use those ratings as part of the Examiner evaluation. That’ll tell you what to work on, and if someone is worth working on.

  56. 24

    Create more Group esprit d’ corps and have inter group competitions based on backlog reduction rate.

    This is going to improve patent quality?

    LOL.

  57. 23

    OT: What happened to Patent prospector AKA Patent Hawk?

    I heard the website was shut down because it infringed someone’s design patent.

  58. 22

    Re-institute Patent Academy to train Examiners on how to do their job.

    Focus on retention.

    Create a performance and merit based advancement system that focuses on practical knowledge in addition to production.

    Have requirements for periodic practical training for examiners to help them improve

    Improve the initial search and have a search result review process to validate references before an examiner begins writing up an action.

    De-emphasize individual production requirements for junior examiners (without eliminating performance metrics all together) and institute group production requirements and place more responsibility on SPE and Group Leaders.

    Create more Group esprit d’ corps and have inter group competitions based on backlog reduction rate.

    Eliminate the concept of Balanced Disposal and disincentive bogus final actions by changing examiners after an RCE so that the previous examiner does not get the count for the RCE.

    Lower the bar for establishing premature finality.

  59. 21

    I wonder if there is an inherent tradeoff between patent drafting “quality” and the necessary requirement of avoiding conflicts of interest.

    In order for a practitioner to get good at drafting applications in any given art, the practitioner needs to file a lot of cases in said art. But in some of the newly emerging arts (e.g. social media) or niche arts (e.g. business methods), no single client has a lot of cases. The practitioner would then need to serve a lot of clients to get a lot of cases, but this can’t happen due to potential conflicts between clients.

    Does anyone have any supporting or countervailing observations?

  60. 20

    Since my post was deleted for some reason, I’ll say it again,

    The Pre Appeal Conference Pilot is great.

    The Pre-First Action Interview is ill-conceived and improper (and has historically been prohibited).

    The Peer to Patent is redundant since mechanisms have existed for third parties to submit art.

  61. 19

    I think the biggest problem that still lies before us, besides the perceived need to hunt the white whale of “certainty,” is that USPTO personnel are construing claims in an unreasonably broad manner. A review of first office actions to ensure that the claim terms are not being given the broadest possible interpretation would go a long way to improving patent quality.

    ————————

    I agree. Poor first office actions cause considerable delay. You get a lousy first OA, make your rebuttal arguments, and then get ignored by the Examiner, who makes a bad rejection final. Then you’ve gotta RCE and speak with the supervisor just to get anywhere.

    Want to cut down on RCEs? Do the job right the first time.

    As an old boss used to say “We’ve never got time to do it right, but we’ve always got time to do it over”.

  62. 18

    plurality, I couldn’t agree more about the counts. What a great metaphor. A lot of this goes back to fee diversion. However, the people currently in power want more money/power at their whim, and clearly don’t care for private industry or property rights. Getting anything fixed at the PTO that takes any money doesn’t stand a chance for a good while now.

  63. 17

    TheTwoBobs: We already get errors for improper rejections just as we can for improper allowances. The issue was that more scrutiny was being given to allowances (mostly from 2nd Pair of Eyes, although many examiners believed that OPQA was pulling allowances at a higher rate than IPRs, which I’ve been told wasn’t true, or at the very least isn’t true now).

    The logic behind giving us additional credit for RCEs is to prevent the *attorneys* from dragging things out at the expense of examiners who are doing a good job. Otherwise, an applicant with money to blow could just stonewall us through a dozen actions until we gave in and improperly allowed the case.

    However, I do agree that the count system needs to be reworked from the ground up. The recent count system changes were a mere band-aid on a sucking chest wound.

  64. 16

    Get rid of the IDS requirement. What a waste of everyone’s time. If an applicant wants a reference considered by the examiner for the benefit that the reference can’t be used to spark re-examination, etc., then the applicant needs to explain how the claims are patentable over it.

    Put “reasonable” back into BRI.

    Allow cases where the examiner agrees that the arguments/amendments overcome the present rejections rather than running back to do yet another search for yet another round of poorly reasoned rejections.

    Make examiners explain what would be obvious to do or make. That extra process step from the secondary reference…where would you insert that in the method of FIG. 6 of the primary reference? Where in the circuit in FIG. 1 of the primary reference are you proposing to put the timing circuit you found in the secondary reference? Quit treating everything like they were compositions of matter where “including” the missing limitation is merely a matter of stirring the extra something into the pot. Put some specicivity into the proposed modification. Maybe like a sentence or a sketch to answer questions like “include how?” and “include where?”

  65. 15

    Mandate the provision of a “table of elements” providing the name of every enumerated feature in the drawings.

    Bifurcate the inbound patent stream into two groups at the applicant’s election: a first to be examined on a first-come, first-examined basis; and a second of applications to be set aside for a period of a year or two before being inserted into the examination stream. Incentivize applicants to abandon applications in the second stream.

    Inform the examiners that an improperly denied patent shall be as big a black mark on an examiner’s record as an improperly allowed one.

    Adjust the count system so that examiners get most of the count-value at the first OA and the remainder at issue or abandonment, with continuations and RCEs otherwise invisible. Remove any examiner incentive to drag things out.

    Demystify and rationalize the most important number in any examiner’s professional life: hours/disposal. This system needs to be reworked from the ground up, class-by-class, to take into account what doing a good job actually requires of an examiner in 2010. It’s crazy that the PTO does not revisit this number every few years, and getting things wrong here is a primary limitation on the quality of our patents.

  66. 12

    “Big, I’m sure if it were practioners who were responsible for the issuance of patents then the office would gladly do just as you suggest. Until such a time however…”

    With all due respect, I think your comments prove my point. The patent office is responsible for examining patents, determining which claims meet the requirements of the law, and allowing those claims. You’re not responsible for managing innovation, you’re not responsible for the ultimate business value or practicality of each invention, and you’re not responsible for picking winners and losers from among technology sectors and/or business models. Let Congress worry about the statutes, let the inventors worry about the innovation, and let the practitioners adjust the applications to meet the legal requirements. If you simply examine the patents, according to the rules, without obsessing over whether an embarassing toilet reservation system occasionally emerges, then all those other things will take care of themselves.

    By the way, what’s the story with your buddy Hawk?

  67. 11

    Office Actions ?

    Hm, Hm

    When I read some of those “office actions” I get an impression that an examiner responded to a different patent application …

    A lot of room for improvement, indeed…

  68. 10

    Ned, in order to implement a change like that, the courts would have to refrain from considering the numbers to be a limitation in the claim. I don’t see that happening – they’ve been going the other way for some time now.

  69. 9

    I think the lowest hanging fruit for improving patent quality is simply not examining each application that has been filed with the US Patent Office. Most patent applications are never commercialized, but are filed as options to possibly pursue in the future.

    Allow applicants to file an application without placing that application in the examination pipeline (e.g., “deferred examination”). After the filing and publication, either the applicant OR any anonymous third party, can pay a fee to pull that application into examination. After the fee is paid, the application proceeds as normal.

    I believe many applications would never enter the examination pipeline and thus reduce the PTO’s burden permitting the PTO to focus on commercially important patent applications. Allowing anyone to initiate an examination removes the possibility of an application pending for a period of time without an examination causing uncertainty.

    My other concern doesn’t relate to the PTO specifically, but will likely impact it. The uncertain law (or reduced standards) for DJ actions will likely greatly inhibit license transactions. We will see more patents assigned to NPEs as parties can no longer license themselves and more anti-patent rhetoric because of increased NPE activity. We need to focus on greatly decreasing the transaction costs and risks of licensing patents (a proper balancing of DJ law and willful infringement law to encourage parties to act reasonably). JMHO

    PS- Reposting since I think I posted on wrong blog. Sorry.

  70. 7

    “Are there ways that the USPTO can help (or push) applicants to write better applications … that include claims in the initial application that actually take the prior art into consideration?”

    There just isn’t a lot of motivation for practitioners here since examiners are evaluated in proportion to the number of cases they dispatch. I might consider writing narrower claims if I knew they were going to get serious consideration before an RCE.

  71. 6

    I hope the Office receives lots of responsive, constructive comments.
    It occurs to me, though, that the exercise has an incentives problem that we, as patent folk, ought to recognize:
    One who puts great effort into making sharp, helpful suggestions has to share the upside with one’s competitors (if they’re using the patent system too). Efforts like this tend to be undersupplied, absent some boost.
    Should the Office consider setting up a prize for patent quality improvement ideas? Perhaps the prize could be a wildcard extension on the patent of the recipient’s choice. (This prize would take a statute, I think.)
    Just a thought …

  72. 5

    “inventor’s idea ”

    Now now broje, you know we don’t patent ideas here.

    Big, I’m sure if it were practioners who were responsible for the issuance of patents then the office would gladly do just as you suggest. Until such a time however…

  73. 4

    “Higher Quality Applications: Are there ways that the USPTO can help (or push) applicants to write better applications that do a better job of describing the invention and that include claims in the initial application that actually take the prior art into consideration?”

    Clearly there is still a tendency to want to blame the practitioners for the Office’s problems. Certainly there are bad applications, and there are practitioners that are gaming the system, but if examination quality is improved, then either practitioners will adjust, or the “bad” applications will be killed off by the process. There are already mechanisms for dealing with poor written descriptions and claims that capture the prior art – rejections under 112, 102, and 103. The patent office should focus on examination quality, and let the practitioners worry about the ultimate “patent quality”, whatever that is.

  74. 3

    I think the biggest problem that still lies before us, besides the perceived need to hunt the white whale of “certainty,” is that USPTO personnel are construing claims in an unreasonably broad manner. A review of first office actions to ensure that the claim terms are not being given the broadest possible interpretation would go a long way to improving patent quality.

    In construing the term “patent quality,” I am viewing a quality patent as one that actually has significant value to the applicant upon issuance, in that the claims are directed to novel and non-obvious subject matter, without having been amended to the point that they provide no meaningful protection. Such a patent is not one that permits a competitor to implement the inventor’s idea in a way that is negligibly different without infringing the claims. If an applicant is forced to amend claims to the point that a competitor can steal their idea by implementing it in a way that is not in the prior art, then the applicant has been done a wrong.

  75. 1

    RCF… RFC … same thing.

    I think there are some good questions there. People can choose to answer only those for which they have opinions.

    My only concerns are that certain motivations remain hidden. For example, a practitioner having a budget and wanting to use it entirely might drive bad quality. Another example is the BPAI, what drives them to bad quality – lack of time?

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