Patently-O Bits and Bytes No. 312

  • Bruce Pokras recently made available his "Family-izer 2.4.1" web version. The free web-based software uses the EPO's INPADOC patent family database to group a list of patents into "families." This becomes quite helpful when looking at a portfolio of patents. Although the program runs on a web-browser, you will still need to download a small program to make it work. It took me about 3 minutes to get going.
  • The USPTO FY2009 Annual Report provides the following numbers as of September 30, 2009:
    • Total Number of Pending Non-Provisional Utility Patent Applications: 1,139,344.
    • Percent that have Not Received a First Action from an Examiner: 53.4%

GRAPH UPDATED

PatentLawPic873

22 thoughts on “Patently-O Bits and Bytes No. 312

  1. 21

    (Spam filter got me, sorry if this shows as a double post).

    Any RCE filed after 11/15 (or whenever the cut-off date for new RCE management was) are actually being treated in the docketing system as status 30 (New case, docketed to examiner) versus 70 (Response received, awaiting forward) or 71 (Response forwaded to Examiner). Accordingly, this may be skewing your numbers slightly depending upon RCEs filed/awaiting action.

  2. 20

    Question asked: Where do RCE’s fit in here?

    Crouch Answers: That is a good question. Sometimes the PTO properly treats an RCE as simply part of prosecution. Other times the PTO treats the RCE as a new filing. Here, I believe that the RCE is not considered a new filing. Thus, a patent where an RCE has been recently filed would fall in the category of “amended, awaiting action by examiner.”

  3. 19

    AnotherJuniorExaminer says: ” Practitioners should be held to a higher standard of drafting skills. You’re the one that is suppose to be drafting a document that is akin to land deed. I expect your work product to be devoid of errors.”

    Wonder if the same analogy can be made for attorneys and judges?

  4. 16

    It looks like Obama and his diabolical big government schemes are kaput — hip hip whoorah!

  5. 15

    As to the remarks about the final-appeal-reopening process (which I agree is bad for all & needs to stop), it seems to me that this was not the case until relatively recently.

    From what I have seen & remember, this process seems to have had a dramatic increase since the institution of appeal conferences. Before then, it was pretty much in the examiner’s hands (if a primary; the SPE’s hands if they signed the final) about going to appeal and when they made a final they were usually willing to go to appeal.

    Now, the examiner has to get 2 SPE’s (or, worse in some TCs, a SPE & an “appeal specialist”) to agree to go to appeal. All too often these conferees either do not know the art (particularly with the “specialists”) or are worried about their art units reversal rate from the board (which the SPE’s rating is partly based).

    I think we would be a lot better going back & getting rid of conferences & putting the decision back in the hands of the people that actually did the actions & know the issues & art. We may get more appeals actually going to the board, as well as reversals, but it would definitely decrease the amount of final-appeal-reopening that we see.

    Opinions??

    MVS

  6. 14

    My point was, examiners aren’t really drafting anything substantially original at all. In addition to what you indicate above, they copy claim language verbatim and then type in a column and line number of a reference, for example. Sure there is a little bit of original writing in some cases, but not much and not often.

    As for calling out errors – heck, I’ve had examiners reject claims which weren’t even pending in the case I was working on.

    Yes, I am sure there are poor drafters out there, but you have an important role in issuing letters patent too (and the public record which accompanies it), remember?

  7. 13

    @Anonymous – the USPTO has a macro built into Word that has buttons for quickly adding the statutory language and all the form paragraphs you see in the MPEP. The rest of the rejection, like the mapping of the art onto the claims, is done by the examiner.

    You can also add your own form paragraph language that you commonly use. Some common examples: one for a Bilski 101 method rejection, one for a signal medium rejection, etc.

    P.S. Practitioners should be held to a higher standard of drafting skills. You’re the one that is suppose to be drafting a document that is akin to land deed. I expect your work product to be devoid of errors.

  8. 12

    Thanks US practitioner, for acquainting me with the deficiencies of the EPO tool. Don’t know whether anybody else found my tone “hostile”. If so, I regret that. Still, I wanted to provoke feedback, and I got it, so I’m happy. Thanks again.

  9. 11

    I think it’s amusing – examiners on here complaining about attorney drafting skills – when examiners mostly cut and paste (and sometimes not so well at that).

    I wouldn’t be surprised if most of the language used in Office Actions is generated via “hot keys” (for example, where pressing F1 generates stock Sec. 103 language and so on).

  10. 10

    There is nothing inherently wrong with broad claim language. If it is truly “crappy” and “overbroad” it should be really easy to write a slam-dunk rejection as opposed to a crap rejection of the kind I’m referring to.

  11. 9

    The crap-first-action in response to broad and poorly written claim language, crap-final-rejection in response to broad and poorly written claim language-RCE in response to attorney needs help on how to claim and count attorney’s fee and that you should write about.

  12. 8

    Are we here “re-inventing the wheel”? Do you know EPO “Register Plus” and the menu item “Patent Family”? I use it all the time. Free, instant, all-inclusive, no need to install anything, download anything, register or input any password. Available to everybody, willy-nilly. Do you know it?

    1. This strikes me as having an unnecessarily hostile tone.

    2. I know it. I know that you can’t use a US grant or pub number as an entry point into the search. I don’t know whether app and pub numbers besides EP and WO numbers can be searched. I know that I prefer esp@cenet because of this issue.

    3. If you try the program, you’ll note that you can search multiple grant or pub numbers and it’ll spit out all of the INPADOC family members, grouped by the searched number, in a very compact report. It’s a different UI to the same data. Sometimes it will be useful, and sometimes it will not.

  13. 7

    “Examiners appear to work three times faster than applicants.”

    Note that responses will not be filed in a significant portion of the 29% of cases awaiting response. I.e., the 29% includes cases awaiting abandonment, not just cases where Applicants will eventually respond.

    Also – Based on DC’s comment, it looks like the only cases included in the “awaiting appeal” slice are those in which briefing is complete and appeal number assigned? Thus, the 29% could also include many applications after the Notice of Appeal is filed but no appeal number yet assigned (I think?).

  14. 6

    “Crouch Replies: Of cases where an appeal brief or suggestion for a pre-appeal-brief-conference is filed, only about 20% actually reach the BPAI. ”

    Dennis: welcome to the appeal-reopen-appeal-reopen-appeal-reopen treadmill that is second in audacity only to the crap-first-action, crap-final-rejection-RCE count gravy train and that you should write about.

  15. 4

    Dennis, two thoughts immediately occur:

    1. Is a corresponding pie chart of pendency at the EPO something which somebody could make for us

    2. Are we here “re-inventing the wheel”? Do you know EPO “Register Plus” and the menu item “Patent Family”? I use it all the time. Free, instant, all-inclusive, no need to install anything, download anything, register or input any password. Available to everybody, willy-nilly. Do you know it?

  16. 3

    6 says: 3 whole percent awaiting appeal. Hmm, yes, appeals sure are a big issue!

    Crouch Replies: Of cases where an appeal brief or suggestion for a pre-appeal-brief-conference is filed, only about 20% actually reach the BPAI.

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