Patently-O Bits and Bytes No. 311

PatentlyO033Quoted: President Obama to the Forum on Moderninzing Government:

“Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years.”

The Milwaukee Journal Sentinal asks “is it time to privatize the Patent Office?”  If not the whole PTO, the editorial asks why not “privatize most of the Patent Office functions?”

GWU’s IP Speaker Series Continues at 12:00 Noon this Spring:

  • January 20, Laura Heymann of William & Mary (Naming, Identity, and Trademark Law)
  • February 3, Michael Ryan of GWU, (Patent Incentives in Brazil)
  • February 10, Abraham Drassinower of Toronto Law (What’s Wrong with Copying)
  • February 24, Jonathan Zittrain of Harvard Law (Minds for Sale)
  • March 24, Mark Janis of Indiana Law (Daniel Webster’s Patent Cases)

Writing Competition: Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition.  $4,000 cash will be given to a current US Law Student (including December 2009 graduates) who either attends school in Virginia or is a resident of Virginia. The prize will be awarded to author of the best IP focused law-review-style article. [Link]


50 thoughts on “Patently-O Bits and Bytes No. 311

  1. 50

    I am all for private enterprise. However, there are some things that should never be privatized. If the failure of a business is such that it can place the country in jeopardy it isn’t too big to fail: IT IS TOO BIG FOR PRIVATE BUSINESS. A great example of this can be seen in the myriad of African nations in which people are starving. In several of those nations the farmers are denied access to water, because the water supplies have been privatized and the companies can make more money shipping the water elsewhere rather that preventing famine. This is clear a case in which privatization is improper. The USPTO is also a critical component of United Staters power. Many of the inventions that are important to national security are first identified by the USPTO. Remember when private industry and government merge you have fascism. Benito Mussolini.

  2. 49

    truly dumb, that’s just it. He’s not on the right track. You have to realize the root of the problem before you can *fix* anything. And he hasn’t done that. Instead, he’s identified an ancillary issue as the root cause and said we should throw money at it to fix the problem. That never works, especially when you’re addressing the wrong problem.

  3. 48

    Ron, I wasn’t disagreeing with you but with the knee-jerk criticism of the President. The President, speaking to the Forum on Modernizing Government, suggests that the PTO, of all agencies, should use the best available technologies. I think you and I would agree that he is on the right track, even if his command of the details is a little off.

  4. 46

    Not that patent examining is an inherently governmental function or anything, seeing as it’s mentioned in the Constitution . . .

  5. 45

    ‘truly dumb’,
    You are missing the point. (See my Essay linked above). His statement “This is one of the reasons why the average processing time for a patent is roughly three years” is need of correction – not the scanning issues.

  6. 44


    hahah. That’s the first thing I do too; download all of the pdf’s and OCR them. What a waste.

  7. 43

    Interesting, Ron. So it appears that the President should have said:

    “Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, but then converts them into a less useful format before entering them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years.”

    It doesn’t appear that correcting his supposed “dumb” error changes the thrust of his remarks very much. Seems to me that his suggestion that an office charged with promoting innovation should lead the way in the effective use of technology is right on point.

  8. 42

    Paul Cole,
    Although the USPTO no longer scans paper print copies of EFS filings, the Office does essentially the SAME thing electronically with identical results, while missing the major purpose of electronic storage and retrieval. In its infinite wisdom, the Office converts native electronic PDF files that we submit via EFS to bit map IMAGES. Your embedded text in the PDF is gone. The Office’s system does the same thing for every Office Action and BPAI decision that it originally produces as electronic text file. Have you ever tried to perform a text search on a PDF file stored in PAIR? It cannot be done. While it is true that some patent practitioners (particularly those using support staff with low computer proficiencies) print and scan their submissions, most produce the PDF directly from their native text file.

    A native text PDF document having a size of 200kB is often converted by the Office into a bit-map PDF file that takes close to 5MB of memory. We were told that the PAIR system’s performance slowing necessitated banning automated search tools by the public because the PAIR server was overloaded. How much of that overload is due to retrieval and transfer bandwidths of 5MB items that should take only 200kB?

    What document retrieval system designer would specify and design such a system in the 21st Century? Were there no hybrid solutions for storing images and electronic text when the requirements for the system were specified? What costs do we all incur now by having to OCR these documents and store them on our servers for our use?

    The greatest losses inflicted by the inabilities to search text on this ridiculous system are (i) examiner and practitioner inefficiencies in crafting Office Actions and responses thereto, and (ii) lost treasure trove of prior art, which examiners could have used had the native electronic data been preserved. By their very interpretive nature, Office Actions, responses thereto and terms used therein provide a unique source of pointers to prior art with a built-in thesaurus for relevant terms that often do not exist in the text of the original reference document. Organizing text-searchable File Wrappers into a large database can be a great tool. Imagine how powerful a term search on all Office Actions and responses thereto could be!

    Unfortunately, it may take years for someone at the USPTO to do anything about this system. Until then, original text encoding of millions of documents will continue to be lost.

  9. 41

    Paul, yes, to a point. That is what happens, and it takes about 2 weeks for an electronically filed document to get to the Examiner. But the slow PTO really has nothing to do with that (although it obviously doesn’t help matters).

    We can also get around it by sending proposals to examiners directly by email and later filing something along the lines of the proposal.

  10. 40

    So that we can judge President Obama’s remarks, could someone explain what actually happens within the USPTO when an electronically filed application is received?

    It may be common knowledge in the US, but at least here in Europe we are unaware of what happens and, now that the point has been raised, very interested. In particular, is what the president said an accurate statement of what happens?

  11. 39

    Ron, I think Kappos is actually trying. I say, give him some time (and the proper resources).

    This Congress and President don’t care about the PTO’s problems because they don’t essentially believe in the free markets, private property rights, or individual and institutional automony, and it’s as simple as that.

  12. 38

    While the US Patent Office (USPTO) needs an IT overhaul, as others have commented here, I am much more disturbed by learning that the President of the United States (P.O.T.U.S., – an incorrect way to put in order U.S.P.T.O.) believes it to be the cause of the Office’s problems and thinks the USPTO’s problems are merely “embarrassing”.

    It means that no one in the chain of command explained the real causes to the President. It probably means that few in the chain of command, if any, actually know themselves the causes and scope of USPTO problems. They are not alone. More importantly, Congress seems to know very little about the cause and scope of USPTO’s problems as evidenced by the US Senate latest vote to leave the USPTO underfunded for 2010. What is missing is not patent fee-setting authority for the USPTO Director (Congress will still divert away from the Office whatever higher fees are collected), but rather Congress’ basic understanding of the important functions the USPTO fulfils, how it operates, and its impact on the economy.

    The previous USPTO management repeatedly failed in conveying the gravity of the required resources because it failed to understand and project its own needs. I explain this in my Essay entitled “My 2010 Wishes for the US Patent Examiner” at link to Given Congress’ recent vote to cap USPTO’s budget and divert user fees, nearly one year after this administration took over, it does not appear that the current administration has focused sufficiently on educating Congress on USPTO’s needs, priorities and their weight compared to other national priorities. We all need to help in that task.

    While the President’s comment on USPTO’s IT problems are technically correct, they are actually counterproductive because they trivialize the profound deficiencies at the USPTO and may convey the false sense that all that needs fixing are the Office’s IT problems.

  13. 37


    i have no idea what you said. however, as others have said, i suggest that you move to north korea, china, cuba, or another communist state, as you clearly do not support freedom of speech.

    the fact that an obama supporter babbles incoherently amuses me greatly…

  14. 36

    Actually there was some very serious discussion about making the pto an independent agency at the turn of the century to help reduce the application backlog, improve quality and provide stable funding. Guess things never change.

  15. 34

    Sarah, you win. Your indecipherable musings leave me with absolutely no idea what you are proposing or how it would save money (other than just paying Examiners less which means more turnover and higher training waste).

    But really, questioning where someone was born is racist? I suppose I’m sexist because I question your incomprehensible proposal? Well, slap away with the labels, I couldn’t care less.

  16. 33

    Go away you bore me.
    Yes I respect my President. You must be a Rushie. Oh and by the way, the President and or Congress don’t need to use my idea in a military sense. As long as it made sense. The money that would be saved is unending. Then they could take care of their wounded the way they should. And still push the PTO into the 21st Century where they should be….What is it GS 12 paygrade now as a start? Correct me if I am wrong maybe it’s even higher.
    I am an American that respects My President no matter who he is. I as of just recently was a Republican for a LONG time… But after a while I had just about enough. And I changed my Party. But I didn’t blog my feelings that can never be taken back. Good luck with that.

  17. 32

    Sarah, are you “Obama Girl” by any chance? Your blinding love affair with a man you’ve never met is impeding your ability to form a coherent sentence.

    And fortunately, we live in the United States of America under the Constitution of the United States of America. Our Creator endowed us with the unalienable right to free speech. If that offends you, perhaps you should look for a political system that more closely aligns with your beliefs like Venezuala or North Korea.

  18. 31

    About 235 years ago the Framers NEVER IN MILLION YEARS would have let…supposedly smart people allow another Lawyer to blog and then to print it… who thinks his statement about his very own President NO MATTER WHO HE IS… was a smart thing to say.
    The “good thing” is if the FBI can catch a Pediophile on line, they can find out who that Racist Lawyer was that left that message at 12:15. I think whoever said something about smart, maybe needs to redefine smart as definition #2 in the dictionary I have here.. to be such a source of a pain as a wound.. yahhh that must be what you meant.

  19. 30

    I like Max’s ideas.

    Another wrinkle: Everyone who handles an invention has to rate it. So the applicant, attorney, examiner, SPE, judge, jury, infringer, et al, each need to give their opinion on newness, usefulness, obviousness, and how well the invention is described. Relative to similar inventions, like the ones listed on the IDS. Just a simple plus or minus, or a 1 to 10 scale.

    And as “the wash” gets deeper, the details can come in, like individual features or combinations can be worked on in later stages once people start giving a hoot about an invention.

    And changes as suggested. Since in a registration system we would lose much of the give-and-take that helps give focus and definition to the description and claims, we would have to add that in to the later stages.

    If at the end of all the changes the inventor is still trying to claim too much, and everyone’s opinions are saying so, then the suggested lose-it-all is a fine incentive to be reasonable.

  20. 29

    For a bunch of supposedly smart people, there are some SERIOUS misunderstandings about where rights come from, who ensures those rights, what the delegated powers of the federal government are, and other basic issues with the Constitution of the United States of America here.

    Except for the really whacky stuff (like putting the PTO in the military), this stuff was thoroughly discussd and decided almost 235 years ago. It’s pretty interesting to read about should you ever choose to.

  21. 27

    What “facts” did Obama get wrong? I’m not disputing it because I don’t know how EFS is dealt with internally, but the chorus of conclusory statements about factual inaccuracy is not nearly as helpful to uninformed readers as it would be for even ONE commenter to actually point out the specific factual inaccuracy and back it up with a source.

  22. 26

    7: good point. I don’t know how judges in your country decide whether to grant interlocutory injunctive relief but I should have thought that, regardless of jurisdiction, they have to decide it without knowing for sure whether the asserted claim is valid or infringed.

    Infringement and validity all comes out in the wash, afterwards.

    In the wash, patent owner can use claim amendments to maneuvre towards a “valid and infringed” final outcome.

    That’s how it works in England anyway.

    I don’t think anybody in England is advocating scrapping the patent system. The general consensus (amongst both patent owners and accused infringers, innovative pharma and the generics companies) is that the balance is right, as it is. Interlocutory injunctions included.

  23. 25

    I tell you what needs to be done. If the economy is tied to Patents. And the peace is tied to the Military. And Congress gives them all they need to keep the peace… THEN make another section of (lets say the Military of Commerce.) The MOC The Military hires smart honest engineers everyday. And they also have the people to do rest of neccessary work. Keeping the Patent Lawyers job still intact. To hell with bidding on contracts for the Job. And tell Congress to treat this group the MOC with the same respect as the peacekeepers. And give them the tools to do the job. Why should that be difficult. Look at all the people that will be put to work in this country also. Why would anybody send this Work out of the country. Or even worse pay bidders that don’t even have enough sense to hire what is needed. They are only worried about getting the Contract for umpteump years. Then like Conan Leno debacle your stuck.

  24. 24

    “4. The presence of even just one bad claim is enough to block the enjoining of the infringer, there being a discretion in equity to decline the patent owner’s petition to amend to excise the bad claim.”

    Lulz. Let me get this straight. I’m supposed to be able to draft claims that define over every piece of prior art, and every combination of prior art that even a creative (read: unfair) examiner might dream up, out there… and if even ONE of my claims is anticipated or obvious, my client has no chance of a preliminary injunction?

    Might as well just scrap the patent system.

  25. 23

    Let me put an English gloss on that. How about:

    1. Issue without examination on the merits, BUT

    2. Litigation a last resort (loser pays)

    3. PTO opinions on validity available to anybody, on payment of a fee.

    4. The presence of even just one bad claim is enough to block the enjoining of the infringer, there being a discretion in equity to decline the patent owner’s petition to amend to excise the bad claim.

    Won’t that encourage responsible behaviour from all those with a stake in the system, while at the same time relieving work pressure within the PTO and the courts, as everybody busily polices themselves, in their own self-interest?

  26. 21

    Patents just are not that important to the economy (or at least that part of the economy that does not make its living by selling patents). Let us shift to a registration system, with meaningful (and very swift) examination offered only once litigation has commenced. Since very few patents are ever litigated, this would enable us to focus our patent resources onto that tiny subset of patent rights that the private sector thinks are worth fighting over.

  27. 20

    Perhaps: the function of depriving a person of his liberty (because they are adjudged to be dangerous to society, criminal or insane)? Where’s the boundary between a lawful arrest, a disappearance, and a kidnap?

    If you are going to privatise the right to hand out exclusive rights, should you not also privatise the enforcement limb of the patent system? What would be the punishment, when one is found to be in contempt of a privatised court?

    Would a privatised court (or Patent Office) be tempted to favour, amongst its customers, the one who pays it the most money?

  28. 19

    “why not “privatize most of the Patent Office functions”

    After our quarter-century love affair with the virtues of unfettered capitalism, the urge to privatize has become almost a reflex, if a public agency doesn’t work, just privatize it. Are there any public functions left that should not be privatized?

  29. 18

    Obama makes a decent point. I’ve had examiners tell me it’s sometimes more than two weeks after I electronically file an amendment before it shows up in their docket. For that reason, when we’ve reached an agreement on an amendment to place the case in a condition for allowance, they’ll often have me send them a claim set via e-mail and they’ll enter it as an examiner’s amendment.

  30. 17

    Federally Circuitous, thank you for posting the link to the article by John Duffy and Michael Abramowicz.

  31. 16

    It’s just a play for…. you guessed it, more money.

    If they’d stop stealing money from the PTO, they could have all the new Star Trek systems (and document hanlding systems like we all already have) that they could want.

  32. 14

    Whether true or not, I believe that this message is nothing but a clear indication to the USPTO administrator that something must change in their practices and effectiveness. And what’s wrong with that ? Nothing in my view. Only a better organization can come out of it.

  33. 12

    The best part is how the author uses the example of privatized prisons and military as examples of free-market success. Prisoner abuse is 30% higher in private prisons, and the GAO did a study showing there was no benefit to the taxpayer. And Blackwater did such a bang-up job that they had to “re-brand” and change their name after their fiascoes.

  34. 11

    “What would a private organization do that the USPTO couldn’t do”

    Rubber stamp everything. The easiest way for a contractor to increase their profit is to put the least amount of work into the project, and as a contractor you know that by the time the sh** hits the fan you probably won’t have the contract anymore anyway.

    I used to work in a different industry as a contractor, and let me tell you – IT SUCKED. It was an industry that had historically been pretty unionized, but of course to cut costs no one was hiring permanent employees anymore instead going with all contracting firms. The remaining permanent employees were overpaid, and some of them were lazy, but at least you got some kind of quality standard from their work. With contractors, it was a race to the bottom quality wise. Even if you were a contractor that did quality work, you rapidly found yourself with no work because someone underbid you. You might think that the companies doling out the contracts would insist on a certain quality level, but no. They would go with the lowest bidder, complain about the terrible job they did, and then next time go with the lowest bidder again, as if the result would somehow be different that time.

    Anyway, I can’t see any other realistic outcome to privatizing the PTO other than ending up with an allowance machine. Which, if that’s what you want, then you might as well just go with a patent registration system and thereby eliminate the need for both examiners and attorneys.

  35. 10

    The author covered step 2…

    I am sure clever people can sort through the details to make this a great system.

  36. 9

    The MJS’s solution smacks of an Underpants Gnome-esque resolution to the backlog:

    1. Privatize the patent office
    2. ???
    3. Profit!

    Exactly how is privatization of the USPTO supposed to eliminate the backlog? What would a private organization do that the USPTO couldn’t do, if Congress would simply give the agency the ability to set fees and budget its revenues back to the agency? And if it’s this hard to convince Congress to stop dipping into the USPTO till and let the USPTO set its own fees, what chance is there of actually convincing Congress to privatize the agency?

    I don’t get why the MJS, of all the newspapers out there, goes out of its way to trash the Office so much, but the least they could do is understand and address the root causes of the problems instead of trumpeting ill-conceived ideas for which the implications are unclear even (and, apparently, especially) to them.

  37. 8

    why not “privatize most of the Patent Office functions?

    then we won’t have to give the PTO employees any retirement or health benefits?

  38. 7

    For cryin’ out loud, EFS is one of the best parts of the USPTO. We can all name lots of things wrong with the USPTO (6 comes to mind), and Obama picks on EFS?!

  39. 6

    Are you sure Obama isn’t describing the *Israel* PTO? Last month I wrote about a similar problem in Israel (link to – the ILPTO insists on getting a paper copy of the application so they can scan it to pdf format, instead of just letting us submit the pdf copy straightaway.

    Oh wait, the ILTPO *doesn’t have* electronic filing of patent applications. So I guess it’s just POTUS getting his facts wrong about the USPTO.

  40. 5

    Although I don’t have all the facts in front of me, I think we can all agree that the President acted *stupidly* in making such comments.

  41. 4

    Printing out electronically filed applications and other material before rescanning has lead to some problems in my practice. Believe it or not, some patent drawings filed in cases I have been prosecuting have become so distorted in the progress that I get drawing objections. I have also had prior art submitted electronically not considered by the Examiner because the test became illegible during the whole print and scan process.

  42. 2

    “our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system.”

    The current USPTO does have some “embarassing problems,” including the examination backlog, Office Actions that make no sense, and the difficulty (until recently) in following the law (i.e., the dropped claim/continuation limmitation rules). But as pointed out on a different patent blog, the Obama admiinstration doesn’t even have its facts straight on how EFS currently works. That’s doesn’t bode well for getting “helpful” advice from the Obama administration to this Forum on how to solve the “real problems” of the USPTO, including preventing Congress (again) from “stealing” money from user fees that should be going to support the operations of the USPTO.

  43. 1

    yeah, Gene Quinn also covered this on his blog. It’s embarrassing that Obama would say something so dumb.

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