In his most recent blog post, USPTO Director David Kappos addresses problems and potentials of the USPTO's SPE system. A SPE or Supervisory Patent Examiner serves as the direct manager and trainer for around 13-20 patent examiners. SPE's obviously play an important role in the examination process. Kappos writes:
Our first-line managers play a critical role in the achievement of USPTO goals. In fact, my management experience has taught me that first-line managers have *far* more impact on the employees they manage than anyone else in the enterprise – more ability to develop employee skills and careers, more ability to produce outcomes that are successful for both employee and the enterprise. Their day-to-day work as coaches, guides, trainers, and mentors for employees is essential to creating a supportive, effective workplace.
On Patently-O and elsewhere, patent examiners have discussed qualities of good SPEs and bad SPEs. Partially in consideration of those remarks, Director Kappos is focusing on revamping the performance review system for SPEs (AKA the performance appraisal plan or PAP). The idea is to focus SPE attention and energy in the right areas. The performance rating will be based on (1) a measure of the quality of examiner work (25%); (2) a measure of workflow productivity toward the goal of pendency reduction (25%); (3) a measure of how responsive the SPE is to Art Unit examiners as well as to inquiries from applicants (20%); (4) a measure of the SPEs service as a coach and mentor to Art Unit examiners (15%); and (5) a measure of leadership activities of the SPE (15%).
Comments on the new SPE PAP can be sent to spepapawardtaskforce@uspto.gov. (Can someone send me further details on the plan?)
Often we forget the little guy, the SMB, in our discussions of the comings and goings of the Internet marketing industry. Sure there are times like this when a report surfaces talking about their issues and concerns but, for the most part, we like to talk about big brands and how they do the Internet marketing thing well or not so well.
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Flux writes that the word in the USPTO, about how the EPO examines, is:
“they don’t permit a lot of the stuff that we do”
Spot on, I would say. My impression (and it’s not just mine) is that the USPTO permits a lot of “stuff” that, here, is a complete NoNo.
So, readers, how is it in any other Patent Offiuce of the world? like the EPO or more like the USPTO?
And will somebody now assert that it’s Flux and his pals permitting such a lot of “stuff” which is what makes the US patent system uniquely “strong”?
Max, I suspect that it’s not due to Euro attorneys thinking better or Euro law being better, but that it’s a consequence of practicing before a more restrictive and expensive office. I’m not an attorney, and I’ve never examined for the EPO, but from the way people on here describe it, it sounds like they don’t permit a lot of the stuff that we do. Also I gather that by the time the PCT hits national stage, the claims have been amended based on the art cited in the PCT search.
Regarding the multiple dependent claim from a multiple dependent claim, that does seem to happen a lot on PCT based cases.
AnotherJuniorExaminer,
The other bar.
“Also, passing the patent bar hardly makes you qualified to practice before the office.”
That’s for sure. It does mean you’re pretty good at calculating 3-month response deadlines.
@Noise above the law,
Every person that can sign off on a case has passed the patent bar (it’s called the proficiency exam). Also, passing the patent bar hardly makes you qualified to practice before the office. Being able to take a test that is designed solely to test your ability at taking tests and looking things up in the MPEP does not qualify you to write a reply to an office action, let alone to draft applications.
Thanks Hagbard. Now I know better.
Max – China, possibly also S Korea, don’t allow multiple-multiple deps.
Flux writes:
“claim sets that come from European PCTs seem to typically be much better planned and thought out. The independents are still often broad, but they have various dependents that flesh out the invention, usually to at least three depths of specificity for each aspect. It’s much more likely that allowable subject matter will be found somewhere in a claim set like that.”
which implies that patent attorneys in Europe plan better and think better. That can’t be right, can it? Could it be that European patent law is better, in that it provides the carrots and the sticks that stimulate the brains of patent attorneys to plan a structure, for each claims set they draft, that has the definition of the invention proceeding from core to kernel like the successive layers of an onion? (Mind you, most onions do have more than three concentric layers.)
Flux, tell me. How many European-originating claims sets break the PCT Rule that you can’t depend a multiple-dependent claim on a multiple-dependent? Do you know how many countries in the world have, nationally, that claim-drafting Rule? As far as I know, it’s a grand total of one. Does any reader know better?
23yearPTOemployee,
How about every Office work pass the Bar?
“flux capacitors” — great moniker
“But another approach seems to be always to draft so broad that one gathers in the FAOM the art against which to sculpt the widest possible allowable claim.”
I suppose that might work, but I think it depends on how broad the starter claims are. If the claims are very broad, you will likely get art that reads on the broad claims, but isn’t really that similar to the disclosed invention.
I will give you this, Max – claim sets that come from European PCTs seem to typically be much better planned and thought out. The independents are still often broad, but they have various dependents that flesh out the invention, usually to at least three depths of specificity for each aspect. It’s much more likely that allowable subject matter will be found somewhere in a claim set like that.
23yearPTOemployee — I suggest also that every examiner go through a claim drafting session.
Every SPE/QAS or Director has work their way up through the office beginning as a junior examiner, progressing to PSA and then FSA.
The new examiner is told that the job takes at least 4 years to learn and that learning is by doing. A junior examiner who thinks he knows better than the primary or SPE
needs to set forth his proposition as to why it is allowable. The first time I told a new examiner that an application was not allowable he said OK and turned to leave. I called him back and told him that yes men were useless to me and that it was his job to convince me that he was right and I was wrong. That is how the job is learned.
There is a production system because examiners are paid to do the best job possible in the time allotted. You want perfection, you want it yesterday and you want it on the cheep. And you think the Office is to blame?
A suggestion. Prior to admittance to the Patent Bar, every attorney/agent should be required to go through initial examiner training.
Maybe even do an application or two (for free or as a GS 7 which is almost for free) and help to get that backlog down.
I think some of you might even learn something.
“Since rights from allowed patents are vested from the filing date, it is incumbent on the Office rather than the applicant to provide compact prosecution.”
What?
“Applicants do pay for you to do your job (whether the policy of how that pay is divied up to promote filing, promote filing by small inventors, catch up on the back side with annuity fees, and the feds diverting the monies to other (pet) projects are completely other stories).”
Actually they’re not completely other stories, they are “the story”. It’s all part of the grand overall scheme of things. And of course, applicants themselves don’t come close to paying for their examination until years after issue. If they decide to keep the patent in force.
“Also, your intimation that a “fishing expedition” by applicants is somehow “wrong” is tainted.”
Actually it isn’t at all. 🙁 And no matter how many times you say that you’re never going to make it so. Just because my hurling insults at you is “permitted by law” doesn’t mean there is not something “wrong” with it. Although that might not be the best analogy because there certainly is nothing wrong with hurling insults at you 🙂
“I also do not see in my work your “always amend and never file responses that merely argue”.”
Perhaps I should look up your work and verify that I also don’t see that?
“In fact, my clients will choose to make amendments to obtain a patent quicker rather than play the RCE or lengthy Appeals game at times, contrasting the view of the post upthread.”
The clients of a lot of lawyers who I issued an action to lately simply opted to fire incompetent attorneys such as yourself and appoint a new firm. Of course, in many of their cases the damage is already done. Putting an intended use (unexpected result in the form of intended use as a matter of fact) right front and center in one of the recent cases of mine comes to mind. Absolutely hilarious. Probably ruined what could have been a decent case. I can’t get further into details, but I loled. And they got a new firm.
You know on that subject. I’ve been getting a little tooharsh in my finals. I should be a little nicer about pointing out glaring lack of knowledge o da lawl. It is da lawl after all, attorneys shouldn’t have to bother themselves with knowing it. Just sit down n write some bs amirite?
Alright alright I didn’t really mean to get em fired. I’m not that big of an arse. But seriously, they could send me something better than what they have been.
Noise makes the intriguing statement that:
“the better prosecution strategy is always to overcome first through argument only”
which ought to ensure that the independent claims as filed have some chance of allowance.
But another approach seems to be always to draft so broad that one gathers in the FAOM the art against which to sculpt the widest possible allowable claim.
Two opposing schools of thought?
Boss 12,
“I would bet that it’s not computer software” – You would lose the bet. I was not saying that you are wrong – I was saying that I do not see what you see. From this, we can safely say that you have not seen my work.
As to your idea of:
“There is no question that the above practices WOULD dramatically reduce prosecution time.
Applicants, you can either spend money on the “front end” by performing the above practices or you can spend money on the “back end” by paying your patent attorney to file the typical BS responses that lead to multiple RCEs.”
– well, that it what the ILLEGAL Continuation Rules pushed towards, wasn’t it? The major problem with this thesis, is that it shifts the burden of actual examination. There is no doubt that examination is difficult and can be time consuming. But examination is YOUR job.
Applicants do pay for you to do your job (whether the policy of how that pay is divied up to promote filing, promote filing by small inventors, catch up on the back side with annuity fees, and the feds diverting the monies to other (pet) projects are completely other stories).
As to the “multiple RCEs” line of thought, we have been through that on other threads as well. You never answered my points on the examiner-induced multiple RCE effect, and your continued ignorance of that reality rather gives away your pseudonym 6, er, um Boss12.
feed the backlog,
Please be more careful in your writing. As it is, the language chosen does not make legal sense. One cannot “add some new subject matter” from the spec to amended claims. Subject matter is the claims and the specification. That’s why you have to examine both 6, er, um, “feed the backlog”.
Also, your intimation that a “fishing expedition” by applicants is somehow “wrong” is tainted. Applicants are perfectly allowed to decribe their invention in as many ways as they desire (the Law allows UNLIMITED independent claims – MaxDrei, please show “feed the backlog” why), and applicants cannot predict what art an examiner will find or how an examiner will treat their claims. IT IS NOT A REQUIREMENT that the applicant search the prior art and write claims that distinguish from that prior art – see my comment above about whose job it is and who should be doing that job.
Perhaps you can expound on the possible interests in shortening prosecution? Since rights from allowed patents are vested from the filing date, it is incumbent on the Office rather than the applicant to provide compact prosecution. That’s the way the Law is and that’s why the government guarantees prosecution within certain timelines. Once again you seem eager to offload the government’s responsibility.
I also do not see in my work your “always amend and never file responses that merely argue”. With Festo and its progeny, the better prosecution strategy is always to overcome first through argument only and only when one cannot – either through the power of the material or through the stubbornness of the examiner – to make amendments. In fact, my clients will choose to make amendments to obtain a patent quicker rather than play the RCE or lengthy Appeals game at times, contrasting the view of the post upthread.
Applicants who file claim lawns are using the initial filing as a fishing expedition. After the first action, they ignore any claims that got a 102, and then roll up something that got a 103 and add some new subject matter from the spec to further define that aspect. These applicants have no interest in shortening prosecution. Their interest is in getting broad claims and reducing prosecution (attorney side) costs (they always amend, and never file responses that merely argue).
SPQR writes; ”Please note, I’m not complaining about overbroad claiming, just taking notice that it happens a lot, probably for the reason already mentioned up thread, that the applicant doesn’t really want to leave anything on the table.”
It also occurs because of the FedCir law narrowing the scope of protection especially under doctrine of equivalents.
Noise: “I have not seen the ‘lawning’ of claim trees as you describe; although I have seen fuller development of foresting (multiple trees – so that amendment-less claim families have a chance of emerging from the examination process).”
What art do you work in Noise? I would bet that it’s not computer software. There are no claim “trees” in my art. Instead, there’s ridiculously broad Claim 1 and dependent Claims 2-20, each depending from Claim 1.
That style of claim writing leads to painfully slow prosecution, multiple RCEs and contributes greatly to our backlog of patent applications and our increasing pendency rates.
“If applicants actually did a prior art search prior to writing their claims, there is no question that prosecution time could be reduced dramatically.”
In addition to doing the prior art search, Applicants must also: 1) FIND the BEST prior art; 2) STUDY the best prior art; 3) write limitations that DISTINGUISH the claimed invention from the best prior art into each independent claim; and 4) cite only the BEST prior art in an IDS (i.e., do NOT cite every Office Action from a related patent application, like Merchant & Gould in Minneapolis).
There is no question that the above practices WOULD dramatically reduce prosecution time.
Applicants, you can either spend money on the “front end” by performing the above practices or you can spend money on the “back end” by paying your patent attorney to file the typical BS responses that lead to multiple RCEs.
Hi FW, don’t let the thought go. You have the necessary passport, and one already of the 3 EPO languages. The EPO gives new recruits intensive language learning. After all, most of the newbies are coming from Member States that have none of English, French and German.
The EPO is currently advertising for new Examiners. Check out its web-site. Attrition figures at the EPO run at about 10% those of the USPTO. For the EPO, the USA is a mystery wrapped in an enigma (where did I get that from, I wonder) so I’m sure they would be delighted to learn from you.
Watch out though. The emphasis is on technical excellence. At the EPO, folks are much more interested in the science and engineering of the cases they handle than in the procedural law or the nuances of language (which often get pretty short shrift).
“DifferentExaminer”,
You say that “Junior examiners also quickly learn the OPQA’s “quality” requirements, aka the pencil test for allowances and at least one 101 or 112 in FOAMs.”
While junior examiners may “learn” this, it does mean what they learn is correct. At least for the TC I work with this is not correct, anyhow.
A lot of the 112’s, particularly 112, 1sts, that we see are at least badly written if not just completely wrong. The 112, 2nds, are often not much better. Too often examiner’s make 112, 2nds, when the question is not one of clarity of the claim but is one of breadth. Just because a claim is broad, even very broad, does not make it unclear or indefinite (assuming it has support to satisfy 112, 1). Much of the time the use of a lot of 112’s is a sign of bad examination not good, based on what we see.
I will agree that the 101 issue is out of hand, but that is not an OPQA issue but from higher up. Hopefully once the Supreme Court decides Bilski things will get clearer. I hope.
As for allowances, length has nothing to do with allowability. I have seen (and issued) 5-6 line claims & seen (& rejected) claims 2 pages long. It all depends on the content of the claim & the prior art.
And one thing too many people in & out of the office do not understand is that OPQA MUST propose a specific rejection, with art & citation, when an allowance is kicked back as a possible error in allowability. OPQA can NOT just kick it back and basically say “The claim is too broad.” (Now, the 2nd pair of eyes programs are a different story. Too often cases were just kicked back by the SPE without any suggestions what rejections should be made. It was a bad program.)
Now, if you are trying to say that a short or broad allowed claim might get a bit closer review than a specific & long claim, you are probably correct. If an OPQA reviewer sees a broad allowed claim, they can, and should, more closely review the prior art in the case & maybe do some searching of their own, to make sure the claim is allowable. Of course, the reviewer would still need to make a reasonable rejection & that can still be rebutted by the TC & examiner. And, you have to remember that OPQA reviewers are also on production & only get 3.5 hours to review & write up a case.
Some things to consider about what “everyone” knows.
Regardless of your “union” mix-up, MaxDrei, I’m still struck by the relevance of your comment. I don’t feel like the atmosphere at the PTO is professional or that there is an esprit-de-corps. Somedays, it feels more like I’m on a college campus during final exams and everyone is holed-up in their dorm room cramming for finals. Other days, I feel like I’m working on an assembly line, just cranking out cases without being expected to think, even discouraged from thinking because it takes too much time. I can go for days without talking to another human (at work, not at home thank goodnes). Our new Director is aggressively trying to change things, but I’m not sure how much he can change the atmosphere.
Your descriptions of the EPO make we wistful, although I realize it’s only one man’s view. I do hold dual-citizenship with an EU country, but alas, I can barely hold a basic conversation in French and German, let alone know how to say something like “quantum confinement”. Maybe it’s time to call the Goethe Institute and Alliance Francais and sign up for some classes…
Duh. Graphic illustration of differences of understanding that can so easily arise, in an open to all Blog. There was Noise, alluding to POPA, and there was me thinking he was referring to THE Union (as in “State of the U…. address). What a laugh. Good job there Superbrain, that you have nothing better to do on a Saturday, and so could put me straight so quickly.
She means “labor union” not “esprit de corps” you nitwit.
Noise, I don’t understand your “Union” remark. Are you saying there’s something wrong with your country, its people, or its governance?
I’m wondering whether ordinary voting Americans would be troubled by the emergence of an Esprit de Corps amongst USPTO Examiners. For I suspect that, if EPO Examiners perform better, it might be because there is indeed an Esprit de Corps in the EPO. Would I be right in thinking that, if ever an Esprit de Corps were to return to the USPTO, this would be seen by Americans outside the PTO as something to disapprove of, and worry about (Examiners “getting above themselves”), rather than something to be thankful for.
I’m struck by how many times on this blog PTO examiners are instructed simply to “Just get on and do your f-ing job”. Isn’t this what parents are always shouting at teachers. Is there any Esprit de Corps amongst teachers in public schools and, if so, can it be replicated at the USPTO, even though at the PTO it is professional and fully qualified adult attorneys, rather than uneducated children, that the in house professionals are having to deal with?
MaxDrei,
I am not loath to admit that I find the examiners in the EP very professional.
The USPTO examiners suffer from bad management and horrendous training. They also suffer from a Union that allows such crap to be perpetuated.
Sometimes on this blog one reads something quite shocking. Immediately above, for example, a PTO Examiner (ostensibly anyway) writes:
“As a different junior examiner I can assure you that while the rule is not written, it is drilled into you in the Academy that you can’t write a first action allowance.”
Well, I can assure readers that it doesn’t work like that at the EPO, where all Examiners are in a hurry to grant what they can, as soon as they can (despite getting two points for a refusal but only one for an allowance). You’ve all had a recent First Action Allowance from the EPO, I take it? If not, never fear, because they are getting more common.
Of course, the Implementing Regulations of the EPC are nicely tailored to encourage orderly claim drafting behaviour from Applicants and their patent attorneys, which in turn allows the Examiners to be reasonable. The British say “You scratch my back and I’ll scratch yours” but I prefer the German equivalent (just for a change, it’s shorter) “One hand washes the other”.
As a different junior examiner I can assure you that while the rule is not written, it is drilled into you in the Academy that you can’t write a first action allowance. To even indicate allowable subject matter takes so much work and the junior examiner soon realizes that a bogus 103 is better than trying to allow.
Junior examiners also quickly learn the OPQA’s “quality” requirements, aka the pencil test for allowances and at least one 101 or 112 in FOAMs.
*******I do not believe that there is a legal basis for compelling an SPE to consider the “worth” of a patent before or after they consider the merits of the claims.*******
You missed the point. The problem is that the second pair of eyes has been looking at all allowances to make sure no potential controversy will result from claims being allowed, as happened with the “one-click” patent. We don’t want to compel SPEs to consider the worth of the claim. We wish they would not consider it. Do you see the distinction?
broje: “It always struck me as rather unilluminating to to draft claims that way [as a claim lawn]”
I agree. There’s no real way for an examiner to figure out what the “important” parts of the invention are from a claim lawn. If we understand where we should focus our attention for finding allowable material, it helps us to suggest aspects of the invention that could be incorporated into the claim without wasting everyone’s time. With a claim lawn, we’d just be guessing, so nobody bothers.
“But it is also very hard to get some examiners to agree that it is not new matter, even when it cleary is not new matter.”
I do a little dance in the hallway anytime an attorney actually points out where in the spec there is support for an amendment.
broje TINLA IANYL — also, now a days you are likely to get a restriction/election requirement (and sometimes a supplemental requirement)
— and often the requirement is improper
Must be a slow day (or a long line at the Methadone clinic) Mooney just can’t stop posting…
********The claim sets have stopped narrowing through multiple levels of complexity. ******
I know what you mean. I used to work for a patent attorney who insisted I draft 100+ claims in each of his applications, with all of the dependent claims being directly dependent from the independent claims. He also taught patent law at the local university, so that practice may have been ingrained into lots of others. It always struck me as rather unilluminating to to draft claims that way, but he insisted that it was too hard to tell what the point of patentability was from an allowed claim that was multiple levels deep.
But what I’ll do is draft a tree that really homes in on some extremely narrow embodiments in the independent claims, see which dependents are allowed, and then figure out if there might be an amendment to the independent claims that should get over the prior art without being quite as narrow as the allowed claim or claims. If so, I place the allowed claims in independent form and amend the independent claims. That provides the opportunity to see if the broader position is allowable, while preserving the opportunity to take the allowed claims, but without having to file an RCE. It just makes sense to me to do it that way.
I tried other strategies early on under the direction of other attorneys I worked for, such as drafting a broad claim set and then a separate, independent picture claim on the narrowest position. But that did not seem to work as well. Usually, the picture claim would get a 103 over a combination of 5-7 different references that were used to reject the dependent claims of the broader set. So I don’t do picture claims anymore.
Some of the attorneys I worked for basically said that it’s like playing poker, and that you don’t want to tip your hand by showing the Examiner what you will settle for by claiming it in the original claim set. The basic expectation is that the Examiner will always reject every claim in the initial set, and then never back off any of those rejections, so you have to hide the good stuff in the spec and claim something else at the beginning.
More often that not, I do find I have to dig into the spec and find something that was not claimed and put it in the claims in order to get the case allowed. But it is also very hard to get some examiners to agree that it is not new matter, even when it cleary is not new matter. So it’s like a game of catch 22. I wind up trying to strike a balance with the claim tree that really gets at the invention, but then I plant all kinds of alternative language in the spec for how to express things in anticipation of amendments I might need to make later to get the case allowed, so I can find the exact language I need to use in the spec. It takes a lot of planning.
In both cases, the claim sets don’t provide a narrow enough embodiment for me to point to the line between allowable subject matter and not allowable subject matter.
Fair enough. And some here would probably demand that you look through the application itself and find “allowable” subject matter and point the applicant to that. Perhaps that’s feasible if it’s a five or six pager but if it’s a typical biotech app, well, that seems a bit much to ask. How much would an attorney charge a client for a reasoned analysis of what’s “allowable” in 100-200 page patent application? And that’s assuming that an answer can be provided without an additional search.
“it started so far away from the line of patentability that the claim tree ends before it gets close to allowable subject matter.”
Perhaps you’re unaware. That’s what she really means by “opening move”.
Oh, and I think you’re forgetting something. The cases where you can allow claims 1-6, and allow 7-10 as being dependent on claims 1-6 are ALWAYS allowed the fastest.
broje,
Your description of a “opening move” style of claim drafting is what I hope to happen when I am examining a case. The cases where I can reject claims 1-6, but object to claims 7-10 as being dependent on claims 1-6 are usually allowed/disposed of fastest.
Increasingly, the claim sets I see appear to be suffering from two problems:
1) The applicant appears to greatly underestimate the depth and breadth of the body of prior art. Even though the claim tree does narrow down, it started so far away from the line of patentability that the claim tree ends before it gets close to allowable subject matter.
2) The claim sets have stopped narrowing through multiple levels of complexity. Someone earlier called it a ‘claim lawn’ instead of a ‘claim tree’. I routinely get an independent claim with lots of dependent claims that are directly dependent from the independent. There is no second level of dependent claims. Because the independent claim is broadly written, once the independent claim is rejected the individual dependent claims don’t add enough limitation to avoid rejection. If the claim set had more than one level of dependent claims and provided narrower embodiments, it would do a better job of approaching allowable subject matter.
In both cases, the claim sets don’t provide a narrow enough embodiment for me to point to the line between allowable subject matter and not allowable subject matter. This style of broad and narrow claim drafting seems to greatly increase the length of prosecution.
“Can’t be a senator just yet :(”
I don’t see why not. Just have a birth announcement retroactively published in a Hawaii newspaper, generate yourself a “short-form” birth certificate, and you’re good to go. At least, I’ve heard that’s how it’s done…
“Why don’t you go work on that? And in the meantime, would you please be quiet and let the grownups talk?”
If there were some grown ups talking except for me then I would 🙁 Instead we have a bunch of runnin’ loose chillin’s.
But, I may very well work on that in my later years. Can’t be a senator just yet 🙁
In US only Apps, I too would often like to do what Malcolm suggests, and get narrow claims quickly allowed first with no Festo problems and then seek broader protection. But that’s not what clients want. And if the claims are going over seas, you have to deal with the problem that any subject mattter not initially claimed is frequently deemed dedicated to the public domain, and you can’t seek to recapture it.
So the standard strategy is to file broad claims and then, once you get amended claims allowed, go for the broader claims with no Festo problems in Continuation apps. And there is ceratinly room to argue that this strategy really is the most efficient way to get to the best result for the client.
“Seems to me if you have a product you are trying to protect, the best course is to draft a claim to protect it and deal with this “line of patentability” in subsequent applications.”
Well, yes. But are you suggesting that the only legitimate applications are those based on a specific product for which protection is desired, i.e., only for products that have actually been reduced to practice?
Egads,
Malcolm is espousing a claim strategy that I shared on these boards many months ago.
Was I wrong, or is Malcolm having one of his “even blind squirrels find nuts” days?
******There are these applications called “continuation applications.” Look it up.******
But, as I next noted, they want to see where the line of patentability is before they file one of those.
The “line of patentability”? Never heard of it. But your clients are happy to sacrifice equivalents right off the bat to determine where this line lies?
Seems to me if you have a product you are trying to protect, the best course is to draft a claim to protect it and deal with this “line of patentability” in subsequent applications. By doing so, you can protect your product and equivalents AND provide yourself with more information and time to devise prosecution strategies to protect those equivalents (and increase your chances of surviving summary judgment when the patent is asserted).
“Precisely why we should take away the statutory one garunteed amendment.”
Why don’t you go work on that? And in the meantime, would you please be quiet and let the grownups talk?
“That’s not to say I file claims that I don’t think are allowable.”
I think that is to say such a thing 🙁
“I know of a firm that got fired by their big client for getting first office action allowances.”
If other firms didn’t cater to their evil wishes then that firm wouldn’t have been fired. We can’t fix the legal profession one firm at a time. It has to be an all in deal. Like health insurance company reform.
“So, basically, I file claims that are aimed at forcing the Examiner to do a decent search, ”
Perhaps that why they decline to do one sometimes. Maybe you should change your strat and see how it works out.
“As a result, I’m not focused on drafting the perfect independent claim when I’m preparing the applicaiton. That first claim set is an opening move, and I’m not upset when the independent claim is rejected. What does upset me is when the Examiner ignores the dependent claims and does not do a good search.”
Precisely why we should take away the statutory one garunteed amendment.
“That’s no way to make progress towards arriving at the proper claims”
Neither is writing overbroad ind’s, or making mere “opening moves” 🙁
But of course you already know that. By your own admission you simply want to abuse the system for your own ends. You’ll see no tears shed for you outside your circle.
“you’re able to judge… one word”
Disclosed invention vs. claimed invention is a HUGE distinction.
In the context of the discussion, the OP’s intent is well understood. Of course the difference is so huge that no practitioner bothered to bring it up, but waited for a USPTO pro to do it 30 hours and some dozen comments later, before jumping onto the bandwagon.
“This is irritating and it’s also what the phone is for. Also, if the Examiner fails to Examine all the claims, you can file a request for a new Office Action to correct the error.”
Time = money; fees = examination; examiner like MM = no understanding of the business end of things.
I am ready to name some names. What is your email again? mm@uspto.gov??
broje What does upset me is when the Examiner ignores the dependent claims …
This is irritating and it’s also what the phone is for. Also, if the Examiner fails to Examine all the claims, you can file a request for a new Office Action to correct the error.
******There are these applications called “continuation applications.” Look it up.******
But, as I next noted, they want to see where the line of patentability is before they file one of those. Read the whole comment please before you spout off your next snide comment. KTB
If they do see a first Office action allowance of all the claims, it raises a red flag indicating that the attorney is drafting claims too narrowly, and giving up subject matter that they should have been able to capture.
There are these applications called “continuation applications.” Look it up.
******This is not to be unexpected, after all, it is simply difficult to write claims that do not have problems. Writing claims is an art, and writing good claims requires experience and skill, but some claims are written by newly minted patent attorneys without practical experience.******
It’s nice to hear from a PTO pro who recognizes that writing allowable claims is not easy. Certainly, glaring 112 issues can typically be avoided with accumulated experience. But, other than that, I would go further and say that whether a claim is good or not is simply a matter of opinion. And with ten years of claim drafting experience under my belt, and having written hundreds and prosecuted hundreds more patent applications, I’d have to say that going for that first Office action allowance is not a priority for me. That’s not to say I file claims that I don’t think are allowable. But I’d actually consider it a bad thing if all of the claims were allowed in the first Office action.
Let me explain. One reason I’d rather not see an allowance of all the claims in the first Office action is that experienced clients expect a first Office action rejection of at least some of the claims. If they do see a first Office action allowance of all the claims, it raises a red flag indicating that the attorney is drafting claims too narrowly, and giving up subject matter that they should have been able to capture. That brings the application under the client’s scrutiny with an unfavorable predisposition.
Also, without a rejection of some claims, there is no way to see where the line is between what was patentable and what was unpatenable, and inform the decision regarding whether to file Continuations seeking broader coverage. FYI, that’s the strategy that practically everyone wants to use. I know of a firm that got fired by their big client for getting first office action allowances.
So, basically, I file claims that are aimed at forcing the Examiner to do a decent search, at least, with an eye toward hopefully getting at least some of the dependent claims allowed in the first Office action. That would be the ideal result. To me, writing an allowable claim is a process that takes place over the course of months or years during prosecution, with feedback from the Examiner during the process. As a result, I’m not focused on drafting the perfect independent claim when I’m preparing the applicaiton. That first claim set is an opening move, and I’m not upset when the independent claim is rejected. What does upset me is when the Examiner ignores the dependent claims and does not do a good search. That’s no way to make progress towards arriving at the proper claims.
Its like using “comprised of” or saying that things “read on” claims, which they never do.
Tell it to the Federal Circuit judges, dipstick.
Disclosed invention vs. claimed invention is a HUGE distinction.
As recognized first in this thread by yours truly, Jan 05, 2010 at 12:29 AM. You’re welcome.
“you’re able to judge… one word”
Disclosed invention vs. claimed invention is a HUGE distinction. Its like using “comprised of” or saying that things “read on” claims, which they never do. Only claims can “read on” something.
I rather enjoyed SPQR’s post.
From the sound of it, he is rational and professional, and defintiely an upgrade from the usual vocal Office personnel posting here, like numbers and Jaime.
as to the one word – that resonated way back to my start in the field when an attorney training me stressed the same import.
SPQR: “As proof of the examiner’s level of inexperience note how his (no offense intended) complaint is worded, “Even if I were to receive an application tomorrow that disclosed an invention for curing HIV, my SPE would still require a first office rejection.” and realize that he said “a disclosed invention,” not a claimed invention.”
Sorry, I miss the pun, if there’s one. You’re able to judge one’s experience by the alleged misuse of one word!?
As a primary reviewing Jrs work, I often find it necessary to drill into them the necessity to try to identify patentable subject matter at an early stage and inform the applicant. This teaching does seem to be missing from the Academy, at least in the Jrs I have experience with.
Indeed, this teaching apprently fails to be practiced by many of the SPEs and primary examiners, at least in those I have interacted with.
I am enjoying this “eat your words” back and forth, so please keep it up. There is a certain amount of subjectivity that I would read into the comments and therefore let it go, but that’s just me.
Fake: Of course no one means that there are SPEs who have never allowed a single case ever.
You’re quite clearly wrong. See the 9:47 a.m. post wherein an anonmymous commenter makes the allegation but (as always) fails to provide the necessary information.
there are SPEs who will not allow anything until it’s amended to the point of utter worthlessness.
Again, a completely different (and meaningless) assertion than the one we’re talking about here. I do not believe that there is a legal basis for compelling an SPE to consider the “worth” of a patent before or after they consider the merits of the claims. Are you aware of one? If so, name it.
“There ARE SPEs out there like that.
Really? There are SPEs out there “who will not allow ANYTHING, no matter how patentable the claims are”?
Name one.”
I can name two. One of them in particular was the straw that broke the camel’s back that induced me to leave for the private sector. However, the problem is that I cannot do so without likely outing myself, which I am unwilling to do for obvious reasons.
I promise you these people do exist.
“Examiner for now” writes “As a relatively new examiner, I feel like there is an unwritten rule that everything must be rejected at least once. Even if I were to receive an application tomorrow that disclosed an invention for curing HIV, my SPE would still require a first office rejection.”
What is perceived as an unwritten rule is, instead, a natural consequence of the combination of new examiner inexperience and all too prevalent overbroad claiming. Please note, I’m not complaining about overbroad claiming, just taking notice that it happens a lot, probably for the reason already mentioned up thread, that the applicant doesn’t really want to leave anything on the table.
As proof of the examiner’s level of inexperience note how his (no offense intended) complaint is worded, “Even if I were to receive an application tomorrow that disclosed an invention for curing HIV, my SPE would still require a first office rejection.” and realize that he said “a disclosed invention,” not a claimed invention.
As a primary reviewing Jrs work, I often find it necessary to drill into them the necessity to try to identify patentable subject matter at an early stage and inform the applicant. This teaching does seem to be missing from the Academy, at least in the Jrs I have experience with.
But keep in mind that it takes a certain amount of time (at least a year in the art unit) for them to learn the art well-enough to begin to know what is and is not “new and un-obvious” in the prior art and why.
Unfortunately, they do not come out of the Academy prepared to do this job without a lot of additional training, and by that I mean reading a lot of applications and references to learn the art.
So, it is not reasonable to expect a Jr with less than 2-1/2 years of experience in our art to be knowledgeable enough to know what is and is not patentable subject matter.
Most applications in our art have at least some claims with serious 112/1 enablement, scope-of-enablement, and sometimes written description problems, as well as 112/2 problems.
This is not to be unexpected, after all, it is simply difficult to write claims that do not have problems. Writing claims is an art, and writing good claims requires experience and skill, but some claims are written by newly minted patent attorneys without practical experience.
Don’t be disingenuous Mooney. Of course no one means that there are SPEs who have never allowed a single case ever. But there are SPEs who will not allow anything until it’s amended to the point of utter worthlessness. I’m not going to name any names or specific art units (sorry, don’t want to identify myself), but here’s something I found rather enlightening. A while back for shts and giggles I searched for issued patents by some of the people who started around the same time as me. Most of us had issued in the neighborhood of 25-40 cases (over a time span of 2+ years) depending on the art unit. However, in one art unit, the average was one. Even you have to admit that at a minimum that raises a red flag.
It made me realize that maybe my SPE’s not so bad. And truth be told, she’s not. I actually like all of the SPEs in my art unit.
I’m still waiting for your email Mr. Moonie. Please send it to me and we can meet and discuss. After all, the baboons and orange monkeys like myself should work together for the sake of getting to the truth, the real truth!
baseless assertions
Name one.
“Some evidence is required to justify the assertion”
That has never stopped the baboon from making baseless assertions… but hey, he’s just a simple baboon. Right?
“Name one”
Um, No. How ’bout you just bite me.
Better yet, I’ll name one if you name yourself.
Didn’t think so…
Just so “Huh?” can begin to understand the issue, it’s not that anyone is denying that there are SPEs out there who are lazy or who could do a better job.
Such people exist in all areas of endeavor.
The claim that there are SPEs out there “who will not allow ANYTHING, no matter how patentable the claims are” is rather extraordinary, however. Some evidence is required to justify the assertion. In this case, the request for evidence actually falls short of what is required as the name of only one habitually law-defying SPE is being requested, whereas the claim is that there are a plurality of such SPEs.
“Many know [little] NOTHING about the art [or about] AND the law”
All fixed.
You’re welcome.
“Many examiners resent their bosses’ attitude. The day an examiner is selected as a SPE or a TQAS or QRs, the guy immediately thinks he knows everything (and the examiner nothing), that he is a cut above examiners, that he now has the license to be abrupt, curt and just plain high and mighty. Junior examiners are never patted on the back. Many work hard and put in long hours. To be encouraged and trained adequately goes a long way. I agree with some comments here that managers do not know how to behave like someone that an examiner can look to for support or help. SPEs rule by intimidation and are nay-sayers. Many know little about the art or about the law, so that when they are approached they put you on the defensive. In the eyes of many TQASs/QRs who should be excellent resources for help, nothing an examiner does is right. Morale and self-esteem therefore, can be low and many examiners re-think their plans to stay. The whole production system and time given should be re-vamped further. There is no time for a personal life. I hope Mr Kappos can change the culture of the agency by improving the SPE cadre. SPEs who are spending time socializing, just sitting in their offices, taking long lunch breaks and not helping examiners, ought to be sent back to examining instead of being retained at the same GS level, no matter what. They do not help morale. They should be impressed upon that they are promoted to the SPE position to help, support, train and serve the Agency and not to crack the whip and not because they are all-knowing in the examining function, either.”
Name one.
ROFLMAO
Many examiners resent their bosses’ attitude. The day an examiner is selected as a SPE or a TQAS or QRs, the guy immediately thinks he knows everything (and the examiner nothing), that he is a cut above examiners, that he now has the license to be abrupt, curt and just plain high and mighty. Junior examiners are never patted on the back. Many work hard and put in long hours. To be encouraged and trained adequately goes a long way. I agree with some comments here that managers do not know how to behave like someone that an examiner can look to for support or help. SPEs rule by intimidation and are nay-sayers. Many know little about the art or about the law, so that when they are approached they put you on the defensive. In the eyes of many TQASs/QRs who should be excellent resources for help, nothing an examiner does is right. Morale and self-esteem therefore, can be low and many examiners re-think their plans to stay. The whole production system and time given should be re-vamped further. There is no time for a personal life. I hope Mr Kappos can change the culture of the agency by improving the SPE cadre. SPEs who are spending time socializing, just sitting in their offices, taking long lunch breaks and not helping examiners, ought to be sent back to examining instead of being retained at the same GS level, no matter what. They do not help morale. They should be impressed upon that they are promoted to the SPE position to help, support, train and serve the Agency and not to crack the whip and not because they are all-knowing in the examining function, either.
There ARE SPEs out there like that.
Really? There are SPEs out there “who will not allow ANYTHING, no matter how patentable the claims are”?
Name one.
“Keeping It Real” ???
You gotta be kidding me Mooney, you baboon.
There ARE SPEs out there like that. However, it is not surprising that a simple baboon would not know that, much less have an appreciation for the nuances of patent law.
“Fine, there may always be prior art more relevant than what is known to the inventor, but that’s no excuse for not placing an invention in its proper context relative to what IS known.”
Clients order me to disclose everything the inventor knows in a IDS but to not discuss it in the background. It’s a terrible practice imo. But seeing that I enjoy having clients and earning a living, I listen to them.
Patent Teabagger #1: ANYONE that has friends at the PTO or has worked at the PTO knows that it is true that some supervisors will not allow new examiners to allow anything.
That wasn’t the issue Malcolm was discussing, was it? The original assertion was the existence of “SPE’s who will not allow ANYTHING, no matter how patentable the claims are.”
>>The most objective measure of obviousness is TSM,
Definitely. What 7 says is true. What Dr. Zaius says is always true. Baboons are almost always wrong. Numbers less than 7 are almost always wrong and usually verbose.
Obviousness is a tough beast to get your arms around. I think that at the end of day you need to have a different ways of looking at obviousness and then just try them on the subject matter. The subject matter of the patent application usually lends itself to at least one method of evaluating obviousness.
Problem solution is a good way to think about it, but it isn’t always the best.
7, I also represent corporate clients THAT big. with a 500 person company, they have a counsel and a main engineer who are aware of what’s going on in their field. With a 20k person company, they have an IP department and 500 main engineers, and it’s therefore impossible for any one person to really know the art in the field.
You either have to search or just file an application that gets after what the engineer thinks is the invention/improvement. Big corporations are all about penny wise and pound foolish, so they file apps without searching and pay for prosecution later.
Personally, I think TSM is probably fine for the purposes of PTO examination, but only if you do away with the “strong presumption” of validity over the art of record.
Leo, Zaius?
Where’s the punch line? “indicating allowable subject matter” is a great setup, but where’s the follow through?
“But of course I’m spoiled by the EPO Problem and Solution Approach to inventive step, which civilises the debate between Examiner and Attorney. Both sides know “the Rules of the Game”. My clients don’t have to contend with ridiculous obviousness objections coming out of the local PTO.”
Eh. PSA only gives the examiners a specific way to make ridiculous obviousness arguments. It takes a little more effort to come up with a bad rejection. But PSA in no way gets rid of ridiculous obviousness rejections.
The most objective measure of obviousness is TSM, whether you like it or not, as it relies on the words actually in the references. I understand that under strict TSM you end up with claims allowed that shouldn’t be… but it’s still the most objective measure of obviousness out there.
“The clients I am speaking of ARE big corporate clients who file hundreds (some thousands) of apps a year. They don’t want to spend the money on a search.”
Big corporate R&D doesn’t operate in a vacuum. Most of their patent applications relate to incremental developments and, as applicants/assignees, they surely know THAT background. A patent application that makes no effort at all to present the “present invention” in the technological context AS KNOWN to the applicant – to my mind – offends against the spirit if not the strict letter of the patent statute.
“… but there is no way they know the actual closest prior art.”
Fine, there may always be prior art more relevant than what is known to the inventor, but that’s no excuse for not placing an invention in its proper context relative to what IS known.
If it really is the case that big corporate patent applicants deliberately avoid having any awareness of the patent literature in their own field – for any or all of the reasons well known to readers of this blog – then it is a sad indictment of the patent system as it exists (in the USA at least).
From where I’m sitting, the US courts are at fault for playing hard-ball with patentees when it suits them, and applicants and their representatives are at fault for the manner in which they react to court reasoning. If the courts hold a patent not-infringed because they interpret the claims narrowly on the basis of something in the description about what the “invention” is or is not, the correct response is not to start playing hide the ball and banning the word “invention” from its own natural habitat, but to take more care in its use.
Big, thanks for that. First laugh of the day.
When something is repeated often enough, it is said, it stands more of a chance of being accepted as the truth. So, I’m grateful for your quoting and repeating my words. Seriously.