[This post is an old-one, I’ve moved it to the front because Amazon now has the books in stock.]
Patent Ethics: Prosecution
by David Hricik & Mercedes Meyer
ISBN: 0195338359
$225 from Amazon
Professor David Hricik is the country’s leading expert on patent law ethics. Oxford University Press recently published his (and co-author Mercedes Meyer’s) volume on patent prosecution ethics. This is a book that includes specific guidance for both patent attorneys and patent agents. It should be within the reach of every patent prosecutor. Topics include: guidance on client engagement and dis-engagement; the duty of loyalty to the client (perhaps as opposed to the inventor); avoiding conflicts of interest; specific areas of competency in patent prosecution; avoiding pitfalls created by the duty of candor; and issues arising from attorneys who practice both prosecution with litigation. The book also includes two very helpful appendices. The first appendix is an annotated version of the PTO ethics rules where the authors discuss nuances of each rule. The second is a set of sample forms; checklists; and client-memos — a version of which should be used by every patent practitioner in handling client relations.
I suspect that this book will quickly become the leading authority on patent prosecution ethics. Although not at all foolproof, attorneys and agents who rely on the book for guidance will have some cover from charges of malpractice or inequitable conduct.
My only problem with the book is its price: $255! Once you add tax and shipping, the cost approaches $1 per page. Of course, that price would get you only about a 1/2 hour of Professor Hricik’s time. This book is the first volume in a two-part series. The second volume will be published in 2010 and will focus on patent litigation ethics.
“regular m0r0ns”
No one is better qualified to talk about regular m0r0ns than you Mooney…
“And, 6, you think that I have a responsibility to understand a reference beyond the examiner’s understanding. ”
Everyone has a responsibility to understand everything on the record to the best of their ability imo. In your case, your ability may be substantially lower than the examiner’s ability, so I wouldn’t necessarily agree with what you think I believe.
“Find the best art and make your arguments. It is not my client’s responsibility to read the art and figure it out for you.”
It’s funny how you jump from: “You have a responsibility to read the reference in total” to: “it isn’t my client’s responsibility to read the art and figure it out for you”
Nobody said anything about “figuring it out” for anyone.
However, the courts have a bit of an issue with people lying on the record. From this they can sometimes find “intent to deceive” iirc. Lying is making false statements on the record.
When your patent stands rejected under U.S.C 102 you would do well to remember that it is not rejected over some little portions of a reference. It is rejected over the whole reference. If the designations are off, then that is your problem if the designations become correct later on. And it is also your problem if you argue something wasn’t in the reference that blatantly was, but perhaps was not at a designated point.
103 is a different discussion, but much the same.
“My clients have paid for many hours of me explaining prior art to examiners.”
That’s part and parcel what comes with being an old hand in an art and understanding it much better than those younger than yourself likely do. It’s also what comes with having a reference delivered for you, rather than being the one that found the reference and did the original interpretation thereof. It is a lot frakin easier to point out other people’s mistakes than it is to do the analysis wholesale yourself.
“Focus on your jobs.”
Cry more.
Someguy, no apology needed, honestly. But I thank you nevertheless.
I often comment that communications between inventor and attorney are problematic at the best of times. When those communications are occurring over an international path, the dialogue becomes almost impossible. It is difficult enough in immediate and direct dialogue between an American and a European patent attorney, as we see in these threads.
I also happen to think (but then I would, wouldn’t I?) that dialogue between Examiner and Applicant should be between the Examiner and the professional representative of the Applicant. What do they say: The lawyer who represents himself has a fool for a client.
MaxDrei,
I apologize if my statments appeared to be a strawman attack on your position; it was not my intention. You implicitly asked what is meant by reading and I answered the question and perhaps the response was colored by my most recent request by an assistant examiner for help.
This person swears up and down she read the specification before asking for help, yet somehow failed to understand the most basic concepts in a simple 20 page spec or even the five sentence abstract. The way she interpreted the disclosed invention was so beyond anything reasonable I had a hard time believing that anyone with an IQ beyond 20 could have made such a mistake had they given any effort to understanding the invention. Imagine if you gave someone a document to read on how to build a fire by rubbing two sticks together and they tell you they don’t understand what it was talking about and it appears to be related to a method of child care–I’m having trouble finding a way to explain how absurd it was without giving away specifics.
Now, maybe she lied and when called out on it had trouble admitting she lied, but assuming she did go through the spec at all, it was to only engage in a pointless exercise of flip and stare to be able to say she “read” the spec. Unfortunately, this was not the first time I’ve had to deal such a situation with both examiners and attorneys. Fortunately, such situations are extremely rare. Presumably these people were at least reasonably intellegent, so either they did not try at all to understand what they were “reading”, thus doing nothing more than staring and flipping or they were disingenious to the extreme.
NWPA,
I understand the “unless” set forth by Congress, but it doesn’t address my point that sometimes one must consider the reference in its entirety to fully understand the position being set forth especially if you don’t have sufficient background knowledge of the technical concepts. I don’t think an examiner has fully done his/her job if he/she hasn’t read the spec and tried to understand the invention prior to searching. Likewise, I think it’s wrong for an attorney to say they’ve done proper service for their client by not fully considering a reference when necessary and hiding behind the excuse that the client refused to pay for the time necessary to do so. It’s similar to the examiner who refuse to fully consider an application and do a complete search and then hide behind the excuse that the Office does not give them enough time to do their job properly.
…and you might add how it ties into the loss of credibility by excessive strawman use that we were immediately discussing.
MaxDei,
You will have to explain your post of 7:30 AM.
It is unclear what you mean by both “reductio ad Absurdum” debating technique, as well as your stand on the legitimacy of whatever this technique is.
>>I find it somewhat hypocritical that many of >>these same attorneys then complain about >>examiners who don’t read the specification or >>only does keyword searches without taking time >>to fully understand what the invention is.
There is one word that was written by Congress that should make all of this make sense to you: “unless”.
It is your burden not the attorneys.
How about the “reductio ad Absurdum” debating technique, though Noise? That’s legit, no?
MaxDrei,
and here in the States, the meaning is not so generous, being much closer to your “Distort what the other says, into the shape you need, then burn it down?” Generally, it is a false and shallow argument that purports to outline your opponents position, but has fatal flaws which one then exploits.
The style backfires when it is used to such excess that one’s credibility is compromised (the prime example on these boards is Malcolm and his many pseudonyms).
It occurred to me to check out “Strawman” in Wikipedia. With some satisfaction, I found out that the original Strawman is a fellow who stands outside a courtroom with a straw protruding from his shoe to advertise that he is available for hire, to bear false witness. So, that’s alright then. Nothing to do with European patent attorneys.
From there, the term developed into the still current meaning: a front; a person who allows himself to be used by others.
Someguy, I argue that there’s a stepless continuum of levels at which one can review a document. You respond:
“Merely staring at a document and flipping page after page without trying to understand anything is not reading”
but I fail to see how that response brings to the discussion anything useful. Where in the world, other than in your imagination, is this process of:
“staring at a document and flipping page after page without trying to understand anything”
going on. Nobody but you has the time (or the inclination) to spend on such pointless activity, do they?
Readers, is the comment from Someguy an example of the process of “Erecting a Strawman”? Distort what the other says, into the shape you need, then burn it down? I ask because at the EPO a Strawman is a party to a dispute that is a proxy, a front for the real party of interest. The thought might amuse you, that the ranks of Strawmen of the EPO are predominantly European Patent Attorneys.
“It all depends what one means by “read”.”
Read means reviewing the reference and giving honest effort into understanding what it’s saying. Merely staring at a document and flipping page after page without trying to understand anything is not reading.
If anyone, examiner or attorney, is merely staring at pages without honestly trying to understand what they’re staring at, they should do everyone a favor and find another job.
It all depends what one means by “read”.
Following (!) this thread, anybody would think that “reading” a document is a binary operation. Either you have “read” the document, or you haven’t. But is that really the case?
Could it be that I’m not the only patent attorney that gives the text of a document a degree of attention that is somewhere on a continuum between “a quick glance” and “digested every word, carefully and thoughtfully”?
In fact, I’m hard put to think of any document I have “read” in the last month in a manner that is right at one end of that continuum, or the other. Every one, I think was somewhere between 5% and 100% “read”.
And it varies through the document. Some paragraphs I study carefully, while others receive much less attention.
If other readers are doing what I do, is there in truth anything much in the way of a disagreement between us?
We wouldn’t be arguing just for the sake of argument, would we?
“I don’t like it when examiners don’t take the time to read the specification and if necessary do additional research to understand the inventive concepts in an application and likewise, I’m having a hard time finding any sympathy for any attorney who don’t take the time to fully review the references cited.”
QUOTED FOR TRUTH
While I understand that time and cost constraints are reasons why attorneys don’t read beyond what is cited by an examiner, I find it somewhat hypocritical that many of these same attorneys then complain about examiners who don’t read the specification or only does keyword searches without taking time to fully understand what the invention is.
In some instances, especially if you don’t have sufficient background knowledge in the subject matter being prosecuted, reading the entire reference is the only way to fully appreciate the relevance of the reference. Plus, if you still have trouble understanding how the examiner is interpreting the reference, you always have the option of calling the examiner for clarification.
I don’t like it when examiners don’t take the time to read the specification and if necessary do additional research to understand the concepts in an application and likewise, I’m having a hard time finding any sympathy for any attorney who doesn’t take the time to fully review the references cited.
While I understand that time and cost constraints are reasons why attorneys don’t read beyond what is cited by an examiner, I find it somewhat hypocritical that many of these same attorneys then complain about examiners who don’t read the specification or only does keyword searches without taking time to fully understand what the invention is.
In some instances, especially if you don’t have sufficient background knowledge in the subject matter being prosecuted, reading the entire reference is the only way to fully appreciate the relevance of the reference. Plus, if you still have trouble understanding how the examiner is interpreting the reference, you always have the option of calling the examiner for clarification.
I don’t like it when examiners don’t take the time to read the specification and if necessary do additional research to understand the inventive concepts in an application and likewise, I’m having a hard time finding any sympathy for any attorney who don’t take the time to fully review the references cited.
>>I don’t really see how you can judge the >>examiner’s understanding of a reference >>without reading it yourself.
By reading what the examiner wrote and the part of the reference referred to by the examiner.
I am always honored when NAL comes to my aid. The baboons are thick on this board.
Deep South,
And presumbably you know how to read before criticizing whether someone takes the time to read.
D’oh!
Noise, NWPA is presumably a big boy and doesn’t need his mom answering for him.
Yes sir, that straw is genuine deep South straw.
Deep South,
Please make sure you actually READ what NWPA has written before flying off the handle (in response no doubt to his flying off the handle).
NWPA has never said that he does not read the reference at all. He said merely that he reads enough to figure out the examiner’s position. Granted, sometimes (and unfortunately many times) this is a very light reading.
Btw – are you related to 6? You two share a certain reading comprehension ability.
Unless you’re practicing clairvoyant law, I don’t really see how you can judge the examiner’s understanding of a reference without reading it yourself.
I “sumbit” that if you do not read a cited reference because you assume the examiner doesn’t know what he’s doing, merely argue in response, and the rejection is valid, then it is you who is the “lazy %$#&%$ that isn’t doing his job and ripping off [his] clients.” What exactly do your clients pay you the big bucks for NWPA, if not to even read the references cited against their claims? Don’t you think you have a professional obligation to craft the best response to each office action?
Anon56- if your original intent was to troll NWPA, you did a good job. You gave him the serious poopoopance.
And, of course, I use my judgment regarding how much of a reference to figure out in order to properly advise my client. Part of my judgment is understanding my client’s goals in prosecution.
Really ticks me off that anyone would dare to say that I have an ethical duty to understand a reference beyond the examiner’s understanding of the reference. Bums is what you are. Dudas bums. You are not judges. You are examiners. What angers me so much about this is that this attitude is absolutely opposite to what it should be, and strikes to the heart of what the problem with the PTO is.
MM you are a coward. You run anytime you are forced to face down an attorney who understands the law. Man (or woman) up to your cowardice and craven ways.
And, I will go further, to say that a examiner that rejects my claims who does not understand the reference they are using to reject my claims should be fired. Kicked out the door. They are abusing the public. They are in effect saying I am too lazy or dumb to figure this out, but it may have something to do with it, so I will put it down and make you pay to figure it out because my job is too hard.
Entitled to a patent unless….
Not prove to me your claims are novel and nonobvious over the prior art and you can have a patent.
What do you think you are being paid to do examiners?
Obviously, a sensitve issue.
And if you baboons respond to this try your best to stay on point. And, 6, you think that I have a responsibility to understand a reference beyond the examiner’s understanding. So, the examiner can do a keyword match and put a reference down based on my claims having a word or two that matches words used in a reference, and based on this slim relationship between my claim and the reference, my client is supposed to pay me to figure out the reference.
I don’t think so. That isn’ the way it should work and that isn’t the law.
I sumbit that you are a lazy %$#&%$ that isn’t doing his job and ripping off my clients.
A patent examiner named 6 wrote: >>All I have to say is that NWPA’s position >>explains perfectly why so many attorneys >>respond with nonsense. As much nonsense as >>allegedly comes from the Office.
A patent examiner named MM wrote:
>> don’t even want to know which of the regular >>morans here wrote that nonsense.
>>I think it’s about time that the Federal >>Circuit issues a juicy inequitable conduct >>opinion to remind the hacks here what the >>difference is between “duty” and “idiocy.”
You see what is so interesting about this point is that the USPTO is trying to get away from their job of finding the most relevant art. That is the core of examination and the USPTO’s and the examiner’s job. Not the applicants. The applicant has a duty to disclose what they know that may be relevant to patentability, but not to search the prior art, not to provide obvisouness explanations, etc.
This is at the core of the problem of the USPTO. Do your job USPTO and all the other problems will melt away.
The examiners on this board that were weened by Dudas seem to think that is the attorneys job–no it is not!!! That is your job and what my clients are paying you to do you lazy *&%$#*s.
Find the best art and make your arguments. It is not my client’s responsibility to read the art and figure it out for you. My clients have paid for many hours of me explaining prior art to examiners. Focus on your jobs.
And, baboon, your prayer for the federal circuit to come and back up your position will never happen unless the laws are changed. And if the Congress changes the law, then I will change my practice, because unlike you I am an ethical and moral person. Go read the laws, entitled to patent unless. It doesn’t say that the applicant is suppose to figure out what the best art is and submit it to the USPTO.
BigGuy,
“But, refusing to go beyond the letter of your obligations to the Office and beyond what your client is willing to pay for might sometimes be unethical, mightn’t it?”
Quite simply: No. At least not in the situation you present.
However, I will note that this intellectual exercise can be mooted by the way you approach your practice. I am not sure just how either you or NWPA structure your practices, so I cannot comment on the particular ethics involved. In my engagements, I am in control of my level of duty. It is my professional opinion that my clients pay for, and that opinion includes just how much of a cited reference to review as I see necessary.
To NWPA’s point, if in one’s professional opinion an entire reference is not required to be reviewed, there is absolutely NO ethical question involved. None. Of course, different people will have different professional views on what is required (I require thoroughness).
I do not think that you are tracking what NWPA is discussing in his rebuttal to Anon56. Clearly NWPA paints a picture of an unethical situation, in that the attorney in his hypothetical is padding his hours at the client’s expense. In this regards, NWPA is closer to the mark and you are farther from the mark – hence my comment.
In sum, as it were, my client doesn’t decide where I stop in reviewing cited art. I do. My client pays for my judgement.
“Surely you can imagine an unethical attorney reading every reference whether or not he/she felt it was relevant or not.”
Surely I can. Of course, reading those references is not unethical. Billing the client for that time might be, depending on the arrangement you have with your client.
NAL suggests that I’m a little “off”, and repeats that “examination by the applicant is NOT required.” My point is that while it is not required by the Office, it may well be required by my duty to my client. Professional ethics don’t end with meeting the minimal requirements of the Office and billing my client properly. I have an obligation to represent my client competently, and that might well require that I spend more time reading references than I like. It might also, horrors upon horrors, require that I do some of it for free, if my prior agreement with the client and my obligation to do a thorough job conflict.
In sum, reading more than is strictly necessary is never an ethical violation, so it’s definitely not “closer” to an ethical violation than the approach Anon56 attacks. Billing for a thorough review of references might be unethical, depending on the understanding you have with your client. But, refusing to go beyond the letter of your obligations to the Office and beyond what your client is willing to pay for might sometimes be unethical, mightn’t it?
“I would argue that reading references beyond what the examiner’s understanding of the reference is closer to an ethics vioation than my practice.”
I don’t even want to know which of the regular morans here wrote that nonsense.
I think it’s about time that the Federal Circuit issues a juicy inequitable conduct opinion to remind the hacks here what the difference is between “duty” and “idiocy.”
All I have to say is that NWPA’s position explains perfectly why so many attorneys respond with nonsense. As much nonsense as allegedly comes from the Office.
I also suspect that Anon56 is not an actual attorney, but someone from the PTO.
BigGuy and NAL: Good points.
My point BigGuy was that it is a balancing act how much time to spend on the references. Surely you can imagine an unethical attorney reading every reference whether or not he/she felt it was relevant or not. For example, let’s say an attorney read several pages of a reference and realized it was way off base. The client said, I’ll trust you to spend what it takes to get me a good patent. The attorney is light on billing for the week, so he/she decides to analyze the reference that is way off base, and then bills the client for the hours reading the way off base reference so as to make his/her hours for the week.
That is one extreme. The other would be not to even look at the reference and make statements about the reference.
And, BigGuy, my position isn’t silly, as I said closer to being and not that it was anywhere near being unethical. My point being that if I read the reference well enough to understand the examiner’s arguments, that no one could question the ethics of spending time performing that work, but that time that goes beyond understanding the examiner’s argument brings one out of the *absolutely* safe zone. This doesn’t mean that any of the work you or NAL mention above is anywhere near a questionable zone. Just that it is beyond the absolutely necessary zone.
Often I read the references and do exactly what you and NAL mentione above.
I agree with BigGuy (to a point). As to any type of ethics violation, BigGuy is off a tad, since examination by the applicant is NOT required (nice reference to the illegal power grab by Dudad NWPA), it is de facto not required to research the full extent of cited art (unless the full art is cited, in which case, see the note by breadcrumbs).
I do agree with BigGuy as to while reviewing the entire reference is not a requirement, good practice means being thorough. Besides, in not just a few cases, I have picked up from the cited reference sections of teaching away and/or destruction of the reference when trying to use as suggested by the examiner. Such when included in the record makes for stronger cases on Appeal.
“I would argue that reading references beyond what the examiner’s understanding of the reference is closer to an ethics vioation than my practice.”
What is your authority for stating that it is? What would a complaint against me look like? What rules/law and cases would be cited against me?
With all due respect, Night, your position is almost as silly as that of Anon56. Based on your previous comments, this surprises me, so I suspect that you got a little carried away in this instance. I agree that your duty of candor to the Office doesn’t require you to pore over a reference to figure out what the examiner might have said had he actually read the reference. But surely you have a professional obligation to advise your client reasonably thoroughly, don’t you? Doesn’t that require having a pretty good idea of whether future rejections on the same reference are likely to stick, notwithstanding the examiner’s inability or unwillingness to articulate a proper rejection, or whether the reference is likely to present problems if/when the patent is ultimately enforced?
Night Writer Patent Attorney and Anon56,
Isn’t there a reason why the Office has moved away from the one page form paragraph of “see general reference one in view of general reference two”?
I believe it has something to do with the Office following its own rules as to pointing out with enough particularity why a claim is rejected so as to provide the applicant a sound rationale to refute or amend (I believe there is an MPEP section that can be used in response to a “too-vague” rejection).
The fact that such generic Office actions are no longer promulgated should be an indication of their standing and historical usefulness (or lack thereof).
>>NWPA: Suppose the PTO went back to the 1 page >>rejections of Ref A in View B without >>explanation. Patent attorneys understood that >>simple sentence for almost 100 years. What >>would you do?
This is a good question. And, what I am forced to do is read the whole reference so that I can say the whole reference does not disclose or suggest. There are other ways around this, but to date the only action I’ve ever taken is to read the whole reference.
Anon 56: you have certainly conflated a lot of issues together and made a rather strong accusation.
1) It is not unethical not to completely read the references. What is your authority for stating that it is? What would a complaint against me look like? What rules/law and cases would be cited against me?
Typically, I see the examiner pulling out a few sentences based on a textual match of the claim and the prior art. I understand the reference well enough to understand the reference better than the examiner in that I have to understand why the rejection is not appropriate. I do not feel the need to understand a reference better than the examiner, and do not spend my client’s money reading a reference that the examiner hasn’t read merely because there was a textual match with a claim. I would argue that reading references beyond what the examiner’s understanding of the reference is closer to an ethics vioation than my practice. What right have you to spend your client’s money reading references that happen to have textual matches with the claims? Intellectal curiosity? And you want your client to pay for that? It may be that after reading a part of the reference I may think perhaps there are more parts to this reference that may be applicable to my claims, but then again I do not have an obligation to follow up on a hunch. I do not have a proactive duty to search for a way for my claims to be rejected. And many of my clients think it is the USPTO’s responsibility and not theirs. Think very hard about that last sentence. You will find statutes,rules, and cases that support that position. I know that Dudas wanted to try and flip that, but it wasn’t flipped.
2)What facts do you base your implied assertion that you get more allowances than me? Where did that come from? Where did a two line claim come from? Where did the presumption that your claims are better than mine come from?
Think before you write nonsense. Also, try to understand what our differences are. What are they? The difference between our practices is that many of my clients assume that it is the Office’s responsibility to grant a patent “unless” they can find references to reject the claims under 102 and 103. Gee, did that come from the law?
For the record, I also have clients that pay me to do prior art searches and to draft claims that I think may be allowable over the prior art before writing an application. These are wonderful clients to have. But,the search costs money and the process of figuring out the novel features over the prior art is more expensive.
Some clients also want me to read references and tell the examiner why they aren’t applicable and file IDSs and have patents with hundreds of referencs listed. Wonderful clients to have when you can find clients willing to pay for this work.
For my clients that don’t want to pay for a search, I draft claims that include what the inventor feels is the invention. I provide plenty of dependent claims that insure that we have many positions to fall back on. I think I am pretty good at squeezing out everything the inventor did in the claims.
Now, please be specific about your accusation that my practice is unethical. Try to support your accusation with the law and facts. And ask yourself what ethical violation you may be breaking? Also, try to keep in your head how two people’s judgment may differ and how that may affect their treatment of prior art.
Anon 56: I don’t like the sound of your
“rejections of Ref A in View B without explanation”
I advocate the EPO position, which is more like:
1) Write the text of the ind., interspersed with reference numerals from D1 (to show where in D1 each of the featues in the claim can be found). 2) Announce the feature “X” that gives novelty over D1.
3) Write the specific reason (Y) why PHOSITA would modify D1 by the inclusion in it of feature X (which, see D2, is also known in the same art, for the same reason Y.
4) Invite the attorney to reply.
Once you get used to the EPO-PSA approach, 6, you can rattle of one penetrating FAOM after another, in quick succession, and await tasty replies.
And if you can’t hack it, in a specific case, you should allow it.
NWPA I think the way you practice is unethical. You have to READ the reference. You said that “I don’t have time to go and figure out the entire teaching of the reference.” Then why not drop a few clients and spend the time to actually read the references. I actually READ the references, get allowances, and could use a few more clients.
“Other clients particularly corporate clients just want me to claim the invention and not worry about the prior art.”
So NWPA, you file a 2 line claim and then complains because you got a rejection? The reason I believe I get so many allowances is because I’ve actually READ the references and then draft claims outside of the references. Duh. Its not rocket science.
NWPA: Suppose the PTO went back to the 1 page rejections of Ref A in View B without explanation. Patent attorneys understood that simple sentence for almost 100 years. What would you do?
“Is not the standard “nothing in the deps” paragraph there, which reveals that the deps have indeed been closely scrutinised?”
Yeah I’m a bit confused why practice evolved the way it did here. It is stu pid beyond belief. And yes max the standard form paragraph is there.
Well, that is it for me for the long weekend. Have a good weekend! MLK was a great man!
6, you write:
“For some odd reasons the EPO decided to ignore all the deps.”
In my experience, they do look at the deps, to see if there is something there they can recognise as patentable. If they see it, they say it. They want their disposal point.
The absence from the FAOM of any analysis of the deps cannot be taken as evidence that the Exr has ignored them. Is not the standard “nothing in the deps” paragraph there, which reveals that the deps have indeed been closely scrutinised?
It’s the reasoning you’re not seeing, isn’t it. Well, to nod towards the “helping inventors” thread, if Applicant doesn’t announce, in the app as filed, technical effects delivered by the subject matter of a dep, over and beyond that of the ind, how can that dep be any more patentable than the ind? No Exr reasoning necessary. In Europe that is.
“The FAOM often consists merely of a first analysis by key word search of claim words. Even then, the second round gets you a new search on a badly interpreted reading (often using any prior art discussed as cobbled together 103’s). ”
Cry more and write better claims.
“Such a first reading from the US side is so infrequent as to be non-existent in the last several years.”
Only in some “arts” 🙁
“This includes FAOM’s on cases where I have submitted not only the art cited from the related EP application, but the International Search Report and Written Opinion itself.”
Yeah I’m doing one of those cases now. The EP rejection made of the exact same claims that I have in front of me is attrocious and ignores more than half the claim. I’m tempted to make the same 102 as the EPO did, just to see how much the applicant loves the EPO’s search and analysis. For some odd reasons the EPO decided to ignore all the deps. Maybe it was the whole restriction practice over there or something.
First MaxDrei,
I will give Kudos to the EP Examining Corp. Usually the first report is an admirable, professional job that exhibits the examiner’s knowledge of the field and a careful reading and understanding of the application.
Such a first reading from the US side is so infrequent as to be non-existent in the last several years. This includes FAOM’s on cases where I have submitted not only the art cited from the related EP application, but the International Search Report and Written Opinion itself.
NWPA speaks of a major difference between EP and US prosecution. As can be witnessed by certain famoose US examiners, there are those who do not think it is even required to READ the application. The FAOM often consists merely of a first analysis by key word search of claim words. Even then, the second round gets you a new search on a badly interpreted reading (often using any prior art discussed as cobbled together 103’s). We are not yet far enough removed from the RCE gravy train era that I can expect an examination on par with the much quicker response from the EP before a third action. Typically speaking, the first action from the EP is of such higher quality that my path forward is so clear that I have not witnessed NWPA’s dilemma, so I cannot comment on that.
But, you are right, the european attorneys have a different view of what the differences are. It is interesting speaking with them.
>>the EPO Exr must (I think) already at that >>stage have a good understanding of what the >>claim means.
Well, that is the big difference. And, if you can find a fault in their reasoning then you get a patent. In the US they usually don’t understand the invention at first and keep on searching and searching each time your client pays you to explain the invention to the examiner. After an interview and several office actions, the examiner finally understands and if they are a primary will give you a patent.
IF they have to go to a SPE, then oh boy, you can be in for another round or two.
Thanks Night. Fascinating. You write:
“once you get the examiner to understand the difference between your claims and the references”
you get a European patent. My experience is a little different. It is:
“once you can get your instructing US patent attorney to understand the difference between his claims and the references”
you can get for him a European patent.
In support of my position, I cite the uniform praise of the quality of the EPO search report. To do such a focussed search, the EPO Exr must (I think) already at that stage have a good understanding of what the claim means.
>>”the follow-up is much better in the US”. Can >>you say a bit more?.
I mean once you get the examiner to understand the difference between your claims and the references, you get a patent.
In the US, the examiner goes and does another search and likely as not comes up with another rejection with different art.
Generally speaking of course.
7. Don’t hold your breath. Pay the exam fee and all you will get is a two-liner from the EPO computer.
Unless you first address what’s in the “opinion” on patentability that is part of the EESR. If you do that, the EPO Exr will respond to that, in a tailored FAOM. It’s like the game of ping-pong. (Is that what you call table tennis in the USA?).
The EPO does 103 by toggling between technical features and technical effects. It is not as if any technical effect is enough to get you past the 103 hurdle. tell the Exr which feature is not in D1 and what effect it has. Then look forward to a useful FAOM.
Night, what do you mean by:
“the follow-up is much better in the US”. Can you say a bit more?.
Noise asks me:
“Why do you seem surprised”
I don’t know. I didn’t think I was expressing such surprise. Never mind. Not enough time to get things 100% clear. This blogging is addictive but it sure does cut into my concentration on real work.
“7: It’s this game of “After you, good Sir. No, no, really. After you Madam” that is so hard for adversarial Americans to play, in a civil law jurisdiction. Is there really nothing in common, between your claim (on its broadest reasonable interpretation) and the reservoir of disclosure content in D1? (I note you don’t dispute the “quality” of the search, as such). If so, just write and explain, and all will be well. At least he’s not going to start searching all over again.
As to “technical” that’s what your EPO counsel is there for, to help you understand”
I try not to conduct things in an adversarial manner with the USPTO. Being civil and polite with the examiner often gets you a lot farther.
D1 and my claim are directed to the same technical area and share some common features. But the distinguishing feature (what I would put after CIT if it were a two part claim) is absolutely positively not in D1.
I understand all too well what the EPO means when they say some features do not produce a technical effect, and do have a fairly decent understanding of how to prosecute before the EPO. But this case is silly. A physical configuration of an antenna doesn’t produce a technical effect? Is a different radiation pattern not a technical effect?
Once examination is actually under way, I expect to receive a better and more reasoned action.
>>At least he’s not going to start searching all >>over again.
That is the key to getting an EP patent. The examiner is usually so sure of their intial judgment of the application and their reasoning that you want to play into that and find some difference, and then they award the patent. In the US the examiner would then do another search and give you a 103.
I think the EPO gives in general a better first search report, but the follow-up is much better in the US.
Thanks MaxDrei reading your thoughts has helped me to think about this.
MaxDrei,
The game to play for Americans is that the Office actually examines and notes the differences. That is part of the job.
It is not so much a difficulty in playing the game as it is in understanding that the games are different.
You yourself exhibit the same difficulty in understanding (in looking at playing the US game). Why do you seem surprised that Americans find the EPO game difficult?
$225 is an absurd amout of money for a book on common sense. We could all buy one copy and photocopy it, so long as copyright ethics are not part of the book.
7: It’s this game of “After you, good Sir. No, no, really. After you Madam” that is so hard for adversarial Americans to play, in a civil law jurisdiction. Is there really nothing in common, between your claim (on its broadest reasonable interpretation) and the reservoir of disclosure content in D1? (I note you don’t dispute the “quality” of the search, as such). If so, just write and explain, and all will be well. At least he’s not going to start searching all over again.
As to “technical” that’s what your EPO counsel is there for, to help you understand.
[quote]7: EPO quality falling away? Thanks for the tip but, no, I don’t think so. I smell wishful thinking, or self-delusion. Are you saying the EPO opinion is too mild or too severe. Admittedly there are a great many newbies at the EPO these days, but the 3 member Examining Division institution is still in place and must be negotiated, before a case can get through to allowance.
Wait on, and see what claims you get through to issue[/quote]
Wishful thinking? Why would I want quality of examination at ANY patent office to go down? I have to say I find it a little humorous that you cannot fathom that, maybe, the EPO could issue anything but an ESR so perfect that god himself couldn’t do a better job.
I’m saying the opinion is trash. I just received one where the examiner simply said “D1 discloses…” then merely cut and pasted the wording of my first claim in there. No pinpoint citations, nothing. He then simply stated that any differences would be non technical anyway.
This was an application directed to an antenna array… UMMMM… non-technical my rump. Further, there were clear, non-trivial distinctions of my claim over the prior art.
That, good sir, is a trash opinion.
I’ve worked with Mercedes too. She is very smart and a good person.
If I had the money to spend on a book right now, I would buy this one because I worked with Mercedes and I know she is sharp and a very nice person too.
7: EPO quality falling away? Thanks for the tip but, no, I don’t think so. I smell wishful thinking, or self-delusion. Are you saying the EPO opinion is too mild or too severe. Admittedly there are a great many newbies at the EPO these days, but the 3 member Examining Division institution is still in place and must be negotiated, before a case can get through to allowance.
Wait on, and see what claims you get through to issue.
“thousands are reading…”
Repeat after me: DELUSIONS OF GRANDEUR
“top quality EPO search report and patentability opinion”
Max, those days are long gone. I have one institutional client who has been filing a lot of their cases in europe as well, and in about 3/4’s of those cases, the EPO search report has been lower quality than what the USPTO would produce.
Not the search itself, which is still good, but the analysis of the art found and the rejections made… Wow. Two years ago I found the EPO search reports to be top notch. Now, seems like Dudas is over at the EPO giving instruction.
Wait a minute. Isn’t that an unconscionable fee being charged for that book, i.e., isn’t the book’s price an ethical violation 😉 Just kidding.
“…I’ll refrain.”
and the crowds wept with joy.
$255?!?!? That is way too expensive. The partner that trained me many years would ask me this question – “How would you sleep the night before a deposition on what you are doing?” If you would sleep fine, then what you are doing is fine. If you would not sleep well, don’t do it.
The book is simply a tax on those that don’t have a moral rudder to guide them.
“I’ll refrain”
Silence is the best form of refrain. Especially from you, 6.
Your post is something like “I’m posting to tell you that I am not going to post…”
“Some of you probably think that all this is just idle chatter.”
Actually, no. We know it’s idle chatter.
“…I’ll refrain.”
Dear God, please please please let 6 keep his word.
“I r must follow the MPEP? LOL. Please, cite me some sections for my amusement.”
You might want to read the Foreword to the MPEP.
I’ll quote the relevant parts for you:
“It contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.”
and
“Examiners will be governed by the applicable statutes, rules, decisions, and orders and instructions issued by the Director of the USPTO and other officials authorized by the Director of the USPTO. Orders and Notices still in force which relate to the subject matter included in this Manual are incorporated in the text.”
You’re welcome.
Oh God..I guess this site is joining the big commercial corporate advertising machine…
Dennis, please don’t automatically flog Amazon unless necessary. The ease of citing Amazon in every book review and blog post (by everyone, not just you) is part of the threat to the survival of every worthy but smaller and less net-connected bookstore.
Noise as soon as you show a basic understanding of what is under discussion then I’ll respond further. Since you do nothing but miss the entire discussion I’ll refrain.
Ignoring certain Examiners inane contributions, I too have to say that I would buy the book if it were a lot cheaper. Here’s an idea, how about a (much cheaper) paperback edition after the hardback has sold for a while? If they can do it with John Grisham novels, why not books on ethics?
More to the point, long ago David Hricik told me he would be including a specific chapter on patent agents, and that he would let me preview it and critique it for him. Never saw it. It is of course entirely possible that no such chapter ever made it’s way into the book. There again, at that price it’s a little tricky to check on that.
If there is such a chapter and you forgot to show it to me, didn’t know how to contact me, etc., that’s OK too. I am curious about it, though.
Alun Palmer, Patent Agent
6,
“trolling” indicates a level of intelligence that you have yet to show. The “publicity for the issue” is like your famoosity – not a good thing for you.
That hole you are standing in keeps getting deeper and deeper.
I should go ahead and tell you guys something. A bit of a confession if you will. Some of you probably think that all this is just idle chatter. In fact what I am doing is creating publicity for the issue, hoping that some litigators will take note, find the issue in a case, and bring the issue to the fore. At which point I will be interested to hear what a judge has to say about it. I really could care less what you guys think about it, but keep responding, it’ll make the thread more interesting.
Remember, thousands of people are reading this blog. Hundreds at least must be reading the comments.
Now, some of you might call this a form of trolling. I beg to disagree. I do have an interest in the outcome of the issue at hand and that negates trolling.
“…the contents were so stunted and convoluted and devoid of reason”
lol – yes, more famoosity of 6 (that’s not a good thing 6).
“…you have a hard time swallowing the trap that you’ll probably fall into”
No, 6, I recognize your traps rather easily.
The problem you have is that you have no answer when I point out your trap and you must resort to incoherent babbling (only slightly different than your primary babbling). At least I haven’t seen your “now repeat back to me” nonsense in a while…
Just put down the shovel and stop digging.
“When you say “child’s play to find something about in a “textbook” on my shelf”, you show that you were simply TOO LAZY to do your job right the first time and actually supply a reference.”
As I explained, citing the references isn’t a pleasant undertaking what with all the scanning and perhaps copyright infringin’.
Even if what you say is true, what of it?
“Instead, you threw out an “official notice” which from the fact pattern given was actually correctly rebutted (the fact itself was NOT instantly and unquestionably valid – you had to supply a reference).”
Actually I never did supply a reference.
“Whether the fact itself is ultimately valid is a FAR CRY from instantly and unquestionably valid. ”
I’m not talking about the fact that was noticed. I’m talking about the factual statement which the attorney made. There is a difference. Whether or not the factual statement that the attorney made was true or not is at issue here.
“Thus, the statement on the record is not false”
Technically it was false. And even if I had cited (or “supply”) a reference (which I didn’t) then so long as I did so instantly and unquestionably then the statement the attorney placed on the record is still false. And had I have cited a reference then I promise it would have been instantly and unquestionably.
I know, I know, you have a hard time swallowing the trap that you’ll probably fall into sooner or later. Or perhaps you already have a few patents that are ripe for invalidation by a court here soon? Looking forward to the malpractice suit?
#1 rule of ethics for patent attorneys (or any attorneys for that matter):
Never sue your client for unpaid fees. They WILL file a countersuit for malpractice.
#1 rule of ethics for patent attorneys only:
NEVER miss a critical filing date.
That’s pretty much about it.
I was scrolling down the page and came upon a post (hereinafter “lengthy manifesto”) that was so long I couldn’t see the author’s name. Upon cursory review, the contents were so stunted and convoluted and devoid of reason, I instinctively shut them out of my consciousness fearing that they would lower my IQ significantly. I thought to myself “I bet this is 6” before I could see who the author was.
Sure enough it was 6.
Amen.
6,
Put the shovel down and stop digging.
You vanity belies your bravado. When you say “child’s play to find something about in a “textbook” on my shelf”, you show that you were simply TOO LAZY to do your job right the first time and actually supply a reference. Instead, you threw out an “official notice” which from the fact pattern given was actually correctly rebutted (the fact itself was NOT instantly and unquestionably valid – you had to supply a reference).
Whether the fact itself is ultimately valid is a FAR CRY from instantly and unquestionably valid.
Thus, the statement on the record is not false and your whole thread here is (once again) built on faulty logic. My what a lovely shield of persistent ignorance you have.
“Incidentally, you’re about two centuries out of date with regards to your apparent notion that “may” and “can” should not be used interchangeably. ”
My english teacher would have your head.
” In any event, I meant “can I conclude” in the sense of “is it possible to conclude”, which usage would likely be considered proper by your 5th-grade English teacher.”
It is possible for you to conclude whatever you wish. It is not possible for me to conclude what you suggest however.
“I don’t believe a court is likely to find an attorney argument to be IC when all of the relevant information/references are squarely in front of the examiner. If you are aware of a contrary case, I’d like to hear about it.”
Keep your eyes open, this practice of making such statements on the record just started not too long ago.