Supervisory Patent Examiners: Rethinking their Role

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:pic-84.jpg

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?)

Read Kappos Comments

154 thoughts on “Supervisory Patent Examiners: Rethinking their Role

  1. 154

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  2. 153

    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”?

  3. 152

    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.

  4. 150

    “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.

  5. 149

    @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.

  6. 146

    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?

  7. 143

    “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.

  8. 141

    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.

  9. 140

    “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?

  10. 139

    “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.

  11. 138

    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?

  12. 137

    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.

  13. 136

    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).

  14. 135

    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.

  15. 134

    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.

  16. 133

    “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.

  17. 132

    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).

  18. 131

    “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.

  19. 130

    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…

  20. 129

    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.

  21. 127

    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?

  22. 126

    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.

  23. 125

    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”.

  24. 124

    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.

  25. 123

    *******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?

  26. 122

    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.

  27. 121

    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

  28. 120

    Must be a slow day (or a long line at the Methadone clinic) Mooney just can’t stop posting…

  29. 119

    ********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.

  30. 118

    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.

  31. 117

    “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.

  32. 116

    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.

  33. 115

    “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…

  34. 114

    “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 :(

  35. 113

    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.

  36. 112

    “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?

  37. 111

    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?

  38. 110

    ******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).

  39. 109

    “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?

  40. 108

    “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.

  41. 107

    “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.

  42. 106

    “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??

  43. 105

    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.

  44. 104

    ******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

  45. 103

    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.

  46. 102

    ******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.

  47. 101

    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.

  48. 100

    “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.

  49. 99

    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.

  50. 98

    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.

  51. 97

    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.

  52. 96

    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.

  53. 95

    “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.

  54. 94

    “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.

  55. 93

    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.

  56. 92

    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!

  57. 90

    “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?

  58. 89

    “Name one”

    Um, No. How ’bout you just bite me.

    Better yet, I’ll name one if you name yourself.

    Didn’t think so…

  59. 88

    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.

  60. 87

    “Many know [little] NOTHING about the art [or about] AND the law”

    All fixed.

    You’re welcome.

  61. 86

    “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

  62. 85

    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.

  63. 84

    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.

  64. 83

    “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.

  65. 82

    “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.

  66. 81

    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.”

  67. 80

    >>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.

  68. 79

    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.

  69. 78

    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.

  70. 77

    Leo, Zaius?

    Where’s the punch line? “indicating allowable subject matter” is a great setup, but where’s the follow through?

  71. 76

    “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.

  72. 75

    “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.

  73. 74

    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.

  74. 71

    For the most cases, even applicant’s claims need to be amended more than one time in response to the office action, why complaint about examiner’s first office action not being the allowance ? Although not a first office action allowance, record can show many of junior examiners’ actions already include early indication of allowable subject matter. This is a good job done by SPEs and Trainers.

    Applicants can file broad claims, but they need to know these broad claims can be given the broadest interpretation.

    SPEs and Trainers are the best and the most talented professionals. They are helping applicants get valid patents. ( ,therefore, for the good name of the applicants and attorneys…)

  75. 70

    “But of course I’m spoiled by the EPO Problem and Solution Approach to inventive step, which civilises the debate between Examiner and Attorney.”

    Gee, I didn’t see that coming.

  76. 69

    Thank you, Noise and 7, for telling it to me how it really is. My tongue is not in my cheek and I’m not thinking wishfully. I do indulge in a bit of hyperbole to flush out reactions. My experience is that the best way to dominate an Examiner (ie get moving towards acceptance of decent claims) is to write an app in which:

    1) the claimed subject matter is set in the context of the best art, and

    2) the independent claims are novel over that art and are seen to solve a technical problem relative to that art.

    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.

  77. 68

    Max,

    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.

    How can anybody but an examiner in a specific art unit know the closest prior art? Do you think inventors sit around reading patent publications from around the world? They know if they have seen something “like this” before, and can sometimes give me links to papers or patent applications, but there is no way they know the actual closest prior art.

    The PTO is often NOT in any reasonable. Depends on the art group. Some art groups are very reasonable, some are ridiculously unfair.

    With respect to very brief background sections, some clients demand this. I have more than one client who forbids prior art from being discussed in the background. When I am allowed to do things my way, I will of course discuss the closest prior art I know of.

    A lot of these bad practices stem from client demands and NOT lazy/bad practitioners.

  78. 67

    MaxDrei,

    I wonder how much of your post above is purely tongue-in-cheek and how much is purely wishful thinking.

    Unfortunately I do expect that you will be greatly disappointed in any regard.

    Let’s start with your understanding about clients. Generally speaking, I cannot make the distinction that you do between large and small clients and the knowledge of the closest art. Some of my very small clients are Kings of their domains and know the art and the other inventors in the field personally while some of my large clients obstinately refuse to gauge “the closest art” for fear of treble damages.

    I am afraid that there is NO movement towards “favourable FAOM”. The indoctrination of reject-reject-reject will take time to eradicate and other factors are still in play. Of course, my version of “favourable” is not a rubber stamp of accept-accept-accept, but rather, a true and merited examination. This involves hard work and I’m afraid that until the count system is truly overhauled, the “quick path” will be sought – human nature, being what it is.

    As to written specifications, ANY story-telling and closest art and problem solved will NOT be showing up anytime soon. While in the perfect world such sharing may be considered helpful, until KSR is banished such disclosure serves only one purpose and that purpose is purely detrimental to my clients. Any information above and beyond the actual invention (and that word itself won’t be found in the application) serves only as a beacon to the lazy examiner for findings of KSR-style obviousness.

    Chia, my dear pet,

    Your post is rife with assumptions, not all of which can be (or should be) so easily accepted. The broadness of initial claims is indeed a line that will always be pushed, and may be inherent to the system and beyond any attempt to correct. This is NOT due to applicants; but rather, this is due to the nature of humanity. As a general rule, everyone wants as much as they can get.

    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).

    Prior art searching prior to writing claims in my book is a sound practice. HOWEVER, even when in practice, prosecution time may NOT be reduced dramatically, or at all. On these boards one complaint that is heard repeatedly is the poor quality of examination. This poor quality of examination happens independent of ANY applicant behavior, and will not change until the Office actually decides to buckle down and do the hard work of examining, rather than playing loose with “facts” to highlight “near perfect quality” while the ship goes down.

  79. 66

    I don’t understand all this talk about clients who don’t know the art and won’t permit a search of it before drafting and filing. Is everybody else here working for garage inventors of kitchen tools (or business methods)? Is nobody here working for a corporate client that already knows the closest art?

    And anyway, I had gathered that even when one drafts on the back of total knowledge of the closest art, the USPTO still goes and issues a FAOM based on absurd combinations of irrelevant prior publications.

    Have we then moved on from all that doom and gloom, to a perception that if one drafts a claim of reasonable scope, set in the context of acknowledgements of the closest art, the PTO will also be reasonable, and issue a favourable FAOM.

    In that case, these US-written specifications I currently see in EPO national phase entry cases, where the Brief Description of the Drawings sub-title arrives half way down page 1, they are by now a thing of the past, right? Some story-telling to the Examiner, about the closest art and the problem solved by the claimed invention; that’s OK now, is it?

  80. 65

    I’ve had quite a few first action allowances of late. Why? They’re all for a client who actually lets me spend the money on a real search, by a professional searcher, before drafting the application. Other clients will only pay for me to search on my own for an hour or two.

    In the end, this client saves money because prosecution is dramatically shorter and ends up with more solid patents.

    I wish all clients were like this. ChiaPet Guevera, it’s not the attorney’s fault. Most clients just won’t pay for a search.

  81. 64

    The reason first action allowances are so rare is due to the behavior of applicants in my opinion. If the independents are allowed right off the bat, then they know they didn’t get the broadest claim they were entitled to. Therefore, the independents are always initially broader than they think they are reasonably entitled to. That coupled with the fact that junior examiners can’t really do an examiner’s amendment to roll up a dependent claim (easier to object to the dependent and let the applicant do it) means you never see any first action allowances until you become a primary.

    It shouldn’t be surprising that all of the dependents are being rejected either in most cases. Claim “trees” seem to be a thing of the past these days. At best, maybe you get a claim “hedge” but typically it’s a claim “lawn” (that is, one super broad independent, with 18 also very broad dependents, each dependent only from the independent).

    If applicants actually did a prior art search prior to writing their claims, there is no question that prosecution time could be reduced dramatically.

  82. 63

    NWPA,

    Jaime the Baboon cannot help himself. Let’s just call it the trainwreck effect. Similar to 6 being wrong, but posting anyway.

  83. 62

    MM: >>Weirdest comment ever.

    Baboon get real. 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. Stop with your baboon harassing of people that are merely relying first hand knowledge of their experiences.

  84. 61

    how about Mr Kappos let the examiners rates their SPE and he will know who are the good ones to keep ? Change the PAP but the bad SPEs still there would not change the attrition rate at PTO. The lost of 50 employee/month proved it.

  85. 60

    “If you have a suggestion for what a junior examiner should actually *do* in a situation where their SPE or primary refuses to sign an allowance and insists on a rejection, I’d love to hear it.”

    Don’t you have a Union that is supposed to protect its workers from such egregious management? Doesn’t the USPTO have an ombudsman? No one said doing the right thing was always going to be easy, plurality.

    to Examiner for now, please ignore Jaime’s comment. He is too ingrained in the reject-reject-reject mode to even see the plain simple truth of what you write. Further, it is when he doesn’t finds your comment “weird”, that you should be afraid.

    It’s good to see the number of examiners (other than the famoose 6) posting.

  86. 58

    Examiner for now wrote:
    “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.

    Long story short, this insane environment seems to focus undue stress on the lowest-level examiners — the people with the least experience.”

    I agree with this and feel your pain. I have seen many examiners coming up from the training academy who basically tell me, “I have to reject on first action no matter what.” Personally, I think this practice is abhorrent. That being said, only a very few applications in my area are worthy of a first action allowance. Most of what I see is the usual overly broad claiming, and it takes a while to settle on something allowable (if there is anything). So yes, SPEs and SPE trainers need to be more flexible with indicating allowability, but on the other hand I feel as if it is getting increasingly difficult to find something allowable in a case.

    Examiner for now, my advice to you would be to stick around and ride out the nonsense. When you get your sig authority life improves dramatically.

  87. 57

    “I think SPEs would feel more comfortably allowing more patents if they realized that two examiners have looked over the application.”

    Who gets rewarded the hard-ass examiner who allows nothing or the reasonable examiner who allows the objectively correct number of applications?

  88. 55

    Some one earlier wrote about “wearing down the examiner” — what does that mean — that you put your client through the delay and expense of multiple RCE’s?

  89. 54

    “Examiner for now” writes “I feel like there is an unwritten rule that everything must be rejected at least once.”

    That is the rule, at least for the past six years, and I have been in private practice nearly 30. The thinking is that that maybe the Applicant has lost interest or is running short on money and so there is a 20% or so chance they will abandon the application, which is the best of all worlds for the PTO — the applicant has donated his disclosure in his published application, paid fees and gets nothing in return.

    Or the Applicant will make unnecessary amendments to bogus rejections, making for narrower issued claims and have unnecessary prosecution history estoppel.

    Or maybe the examiner will even issue a bogus final rejection and play the RCE game for awhile. With a delay of 20 months from the filing of a Notice of Appeal until an Board decision, the Applicant may decide not to bother with an Appeal.

    Time to beef up the Board so Appeals are a serious option, Mr. Kappos.

    Time to quit playing the games.

  90. 53

    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.

    Weirdest comment ever.

  91. 52

    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.

    Long story short, this insane environment seems to focus undue stress on the lowest-level examiners — the people with the least experience.

    I think the PTO needs is some procedure that allows examiners to escalate unresolved cases up the org chart. Basically, if my SPE won’t let me allow the case and I cannot find the art after a thorough search, then my SPE should transfer the case to someone with more experience. And if the more experienced examiner cannot make a rejection, then that should convince the SPE to allow the case. Or, on the other hand, if the experienced examiner makes a rejection, then the inexperienced examiner can study the experienced examiner’s rejection and search strategy to see how to do the job better the next time.

    Sure, there are inefficiencies associated with having two examiners work on the same patent application. But it’s also inefficient to maintain a system that forces examiners to send out low-quality office actions just to get a case of their docket. Additionally, I think SPEs would feel more comfortably allowing more patents if they realized that two examiners have looked over the application.

  92. 51

    It is hard to believe, but I remember the days when the good for nothing SPEs used to sit near the timesheet when everyone had to be there at the same time in the morning. What a waste that was! A retaded more-on (with a Boston accent) could perform that duty!

  93. 50

    “Another idea is to create a completely different patent examiner position, i.e., a hybrid primary examiner/trainer that would be subject to a different performance plan. ”

    #9, that is the best idea, although the PTO should eliminate ALL the SPE positions. They would not be needed.

  94. 49

    They’re taking out production? Great; how about doing that to the examiners too, and returning the PTO to the same presumptions that went into making those production goals back in the ’70’s, i.e. same amount of prior art to look through via reclassification, same amount of work that has to be put into writing up Office actions by simplifying them back to the three copy carbon forms used back in that day? Otherwise you’re just dumping more work onto the examiner’s back and it should be no surprise at all that you’re overworking them, making them surly and anxious to leave? I always thought the purpose of the SPE should be to see that the procedures were done right, hence they should have to pass some kind of civil service exam in that area instead of merely being the lackey of somebody higher up who wants some people beholden to him for his own aspirations regarding promotion. And yes, making it mandatory that SPEs do certain things like promptly counting cases that have been done and turned in so they lave less leverage to mess with their examiners. Lead by example, not by threats and intimidation.

  95. 48

    Plurality writes:
    “A bad primary mentoring junior examiners can cause just as much damage as a bad SPE, except (1) they presumably don’t know any better because they haven’t had training in mentoring others, and (2) they are largely unsupervised in this role since the junior examiners who work under them are often afraid to complain to anyone who can do anything about the problem. Any revised performance review for SPEs should also take into account whether they are choosing good primaries for delegating mentoring duties and whether they are following up on their primaries to ensure that the junior examiners are getting proper training.”

    This is why, as I pointed out in another thread, mentoring and training duties for primaries must be added as an element in the Performance Appraisal Plan. I completely agree that primaries need to be held to account for the quality of training they provide. However, hypothetically, if a primary examiner is rated by the SPE as providing poor quality training, then that examiner will simply stop providing the training, increasing the training burden on the rest of us. That is why a fair system must compel primaries to mentor juniors when asked to do so but also rate the quality of the training. Another idea is to create a completely different patent examiner position, i.e., a hybrid primary examiner/trainer that would be subject to a different performance plan.

  96. 46

    To: perpetual examination machine.
    You stated: “SPEs absolutely have the power to make an examiner’s life pleasant or extremely miserable. Nothing is worse than getting stuck with the “everything is obvious” SPE.” Oh I can think of worse. For one thing examiner’s can and do make the average SPE’s life miserable. Examiner’s are only required to 95% of their goal while the average SPE is held accountable for at least 115% of the goal. Examiners have 2 months from the date an amendment is forwarded to them to move the case while the SPE is held to 4 months from the mailroom date. I could go on but the problem here is that Congress sets the office goals (and inadequate fees) while examiner’s have a contract that has not changed in over 30 years. The attention of anyone who reads this blog should focus on Congress and not the overworked examiner or their equally overworked supervisors.

  97. 45

    Dear Anon-
    Attorneys get a rep, good or bad, just like examiners. I’ve had good dealing with both good and bad attorneys and I can assure you that my list of those who are incompetent and rude differs from the next guys. If you’re right in your arguments and you refuse to go over the head of a contrary SPE or examiner then you are at fault. We teach each examiner to remember that no applicant should suffer because the attorney is less than kind. No examiner has the time to hold a grudge or go out of her way to make your life difficult. Think about it.

  98. 44

    So broje, did you start your own blog? I’m reading one right now that seems a lot like it is by you. And the author looks like a girl that would fit you to a T.

  99. 43

    “Troll: You are still playing to the morally bankrupt soldier line of “I was ordered to”.

    Because not allowing a patent is like a war crime.

    Just another of our patent teabagger regulars spouting off. If only they didn’t have that habit of shouting all the time, they’d almost be funny.”

    As if we didn’t already know you’re an examiner and not an attorney, this has sealed it.

  100. 42

    Plurality: If you have a suggestion for what a junior examiner should actually *do* in a situation where their SPE or primary refuses to sign an allowance and insists on a rejection, I’d love to hear it.

    Stage a protest with signs and bullhorns and burn a SPE in effigy.

    /patent teabagger off

  101. 41

    NAL:

    If you have a suggestion for what a junior examiner should actually *do* in a situation where their SPE or primary refuses to sign an allowance and insists on a rejection, I’d love to hear it.

    I don’t mean some hypothetical “it would be better if the Office worked this way”. I mean a suggestion that operates within the Office as it actually is, something that a junior examiner could actually do right now. Bonus points if it would actually result in the allowance of the case without the examiner burning bridges with their SPE/primary.

  102. 40

    The problem is there’s no clear right or wrong answer. Direction from the SPE may contradict that of another SPE, or an opinion of a primary. I’ve seen it all the time. As an examiner, you just have do what you’re told by whoever signing your case.

    – A previous SPE signed off on objecting to allow certain dependent claims, attorney cooperated by moving up an allowable claim. Reorg occurred, and the new SPE now disagrees. The examiner has to issue another office action, with no count.

    – A SPE says there’s no allowable subject matter in the claim. Informal advice from a primary says otherwise. If the examiner tries to discuss the limitation alledgedly not taught, the SPE would accuse examiner of being argumentative and not knowing how to take orders.

  103. 39

    the spam filter is going crazy today.

    BigGuy – your point is taken.

    Jaime, – its really creapy how you glom onto specific words with sexual conotations.

  104. 38

    I thought I was using the same fact pattern as noise :( It seems like I have a hard time following specifically where her fact patterns go.

    “and KNOWINGLY doing a WRONG job. ”

    The problem, as I just stated, is that no junior is ever to believe, or “KNOW” that the job they are doing is “WRONG” when the spe tells them what to do. They are to assume what they are doing is RIGHT. Thus, the later situation technically never arises.

    Perhaps this is where your “fact pattern” goes astray. The fact pattern “KNOWINGLY doing a WRONG job” never occurs, it cannot occur. It is a logical fallacy. The junior never knows that they’re doing a wrong job when the spe tells them that is the right job. Why? Because they are presumed to not know what the right job is. And also because all juniors presume from the get go that they do not know the correct course of action until instructed by their spe.

  105. 37

    NAL, respectfully, I think you’re confusing ethics and morals. They’re not quite the same thing. As I’ve noted before, it’s a complete waste of time discussing professional ethics with non-professionals – they don’t operate in a system of professional ethics. (As I’ve also noted before, that is not intended to be a value judgment – it’s just the way it is.) The ethical system applicable to junior examiners, as evidenced by the comments above, is less formal (although still quite real) and arguably less demanding than legal ethics. On the other hand, while I admire our system of legal ethics, I would never equate it with morality.

    As to the wisdom of discussing morality with anyone, especially anonymous adversaries – well, I can only wish you luck.

  106. 36

    Troll: You are still playing to the morally bankrupt soldier line of “I was ordered to”.

    Because not allowing a patent is like a war crime.

    Just another of our patent teabagger regulars spouting off. If only they didn’t have that habit of shouting all the time, they’d almost be funny.

  107. 35

    Given that I explicitly made an implicit assumption clear at 3:06 PM, – that is “There is an implicit assumption that the examiner (junior, senior or whatever) has rightfully done his job”, let me take the straw out of the strawman to account for the lack of signatory authority at the junior level.

    Since a junior level actually does not own the Office Action and is only providing work for the signatory authority, KNOWINGLY providing crap (e.g., known faulty rejections) is STILL an ethical violation and STILL is just as bad as stealing from the customer, the public and the United States. There is quite a difference in rightfully having done a job, NOT having done a complete job, and KNOWINGLY doing a WRONG job.

    Again, It is NEVER acceptable to do something that you KNOW is wrong.

    My directive is NOT against the raw newbie learning how to do a complete job – it is against those who have done their job but fail to stand up to the unreasonable SPE who does not allow. Bending of the fact pattern after discussion is a typical 6 trick, but plurality and Xenephon – shame – you have jumped at the 6-bait and taken your eye off of what I posted.

    Plurality – your ethics are still askew – by no means is this an attempt to “guilt” an examiner into allowing an app. Read what I have written: the app. is allowable and the examiner has done complete and good job. Your “only black paint” is a cop out and an abdication of your moral imperative which I refuse to buy into. You are still playing to the morally bankrupt soldier line of “I was ordered to”.

  108. 34

    23 year old pto guy: “And finally, if you have bad interactions with examiners or SPE’s and you fail to take it up to the Technology Center’s Director or beyond then you are a bad practitioner. Attorney/practitioner who are scared of the office should find another profession.”

    I’ve called them, and it works for that particular case, but boy do you get blackballed thereafter.

  109. 33

    NAL:

    You’re not going to guilt a junior examiner into allowing an app, if their SPE/primary won’t sign it. They can write the allowance and they can post it, but if the SPE/primary doesn’t agree, it’s just going to get kicked back, plain and simple. There’s nothing the junior examiner can do about that but write a rejection instead.

    It’s sort of a “you can have any color you like, as long as it’s black” thing. You can beg the paint guy on the assembly line to paint you a pink Model T, but it’s not going to happen, in part because the paint guy’s boss will only give him black paint.

  110. 32

    I was going to say the same thing. They would fire a junior in a heartbeat. They make it very easy to for the SPEs to manipulate the juniors. Like the roach motel, SPEs that check in never leave – even if you want them to!

  111. 30

    To be absolutely clear, a junior writing an action at the behest of their boss is not “wrong”, in any sense of the word no matter what the action says. The primary/spe is issuing the action, and if anything is wrong, it is his issuing the action, not the junior writing it for him.

    That’s simply how it is officially recognized Noise, whether you like it or not. Ask a director or two next time you’re chatting with them.

  112. 29

    “to make a known crap rejection IS a real choice of the examiner’s.”

    She’s right, you can get fired like the guy that just got fired in my unit. He fought to not make a few rejections, and do you see where it landed him? Not a big deal amirite? Sure, that was just a contributory factor no doubt, but contributory factors are best not to have present on your PAP.

    The real problem with you position Noise is that the new examiner is presumed, at the outset, to not know which decision is “right” or “wrong”. He gets no say if the person who is assumed to know which decision is right or wrong says otherwise. That’s just how it works. Like it or not Noise. Juniors get no say if the spe says otherwise. To be clear, juniors don’t even really issue actions at all. The signatory examiner issued the action, the assistant examiner just wrote it for him. This is why you appeal the action of the primary examiner, perhaps you’re familiar with that boilerplate language in your appeals?

    Take an issue or two like this to a director and you may as well be signing your own pink slip, especially if you’re still a “probationary employee”.

  113. 28

    The spam filter is working overtime today…

    plurality,

    Either the claim is allowable or it is not. My directive was to an allowable claim that is held hostage by the Office and the making of a KNOWN crap rejection. I am not surprised that you FAIL to see the moral quandary or ethical gravity of the situation. However, your failure does not dismiss the ethics – quite the contrary, your failure is systemic to the problem. Your advice or “options” are morally bankrupt.

    There is an implicit assumption that the examiner (junior, senior or whatever) has rightfully done his job (if you are like 6 and half-as_ your job to begin with, then that is a different situation).

    Grow some. If your work is good and you believe your work and you believe (as indicated) that the SPE is merely not allowing you to allow, the “forcing” to make a known crap rejection IS a real choice of the examiner’s. As someone from the Office (rightfully) admonishes practicioners to do – go above the head of the SPE if you have to. Such advice is not cabined to practicioners only.

    It is NEVER acceptable to do something that you KNOW is wrong. All of the I’m-a-good-soldier attitude does not change that. Your lack of ability to recognize this aspect of ethics screams so loudly that your words are drowned in utter banality.

  114. 26

    “Not as lame as you pretending that SPEs “who don’t allow anything” actually exist when, in fact, they don’t.”

    More evidence that Mooney is merely a baboon with no experience in patent law. Stop bother real patent attorneys baboon…

  115. 25

    NAL: “I wonder how ethics comes into play when an examiner allows himself to not only “make a rejection that you know is wrong”, but actually believes that such a moral choice is beyond the power of the examiner’s “but I’m only a soldier” position. The choice is real.”

    Here are the “options” of which you speak:

    1. Go along with what the SPE says, and make a crap rejection so you can get the case signed and get your count.

    2. Don’t go along with what the SPE says, note allowable subject matter in your action, post the action even though your SPE has said they won’t approve it, and then get the action kicked back to you. Then see option 1.

    So, no, there’s not a choice here. For a junior examiner, there are no “snap judgments” at your disposal that allow you to override your SPE, regardless of any supposed moral quandaries that might arise.

  116. 24

    They were valid. The prior art didn’t come close to disclosing two of the claim recitations,

    If you say so.

    and once the SPE finally actually read the claims and the art in preparation for our conference, he agreed with me.

    So what happened to all the SPEs who (according to you) “will not allow ANYTHING, no matter how patentable the claims are”? This SPE seems to be the opposite of what you were whining about upthread.

  117. 23

    MR/Ms 7.
    and by any chance did you call and talk to the SPE or failing that the director? I think we all know where the failure to prosecute can be found in this situation.

  118. 22

    “I bet your client loved those invalid claims.”

    They were valid. The prior art didn’t come close to disclosing two of the claim recitations, and once the SPE finally actually read the claims and the art in preparation for our conference, he agreed with me.

    Are you that removed from reality? I’ve had several examiners flat out tell me “my spe said the claims as is aren’t patentable, so i had to come up with something” when i called them to discuss deficient rejections.

  119. 21

    To nonymousless
    “… and yet the decision was made by Mr. Kappos, solely on the political needs of the moment, to not pay any SPE (good or bad)a single penny in bonus money for the work they performed in 2009.”

    Welcome to the real world! I’ve seen such drastic actions taken in the private industry, as a matter of survival. Clearly, with a $200M budget shortfall, Mr. Kappos’ decision is not entirely out of line and should be applauded. I would not be surprised if some types of examiners bonus are also affected in the course of responsible budget management.

    The SPEs’ behavior as echoed on this forum has been ongoing for years, not just because the bonus wasn’t handed out in October.

    First- the PTO is not the real world, is not a business,it is a government agency. Second, the PTO had a surplus of 118.7 million at the end of 2009. Paying maximum bonus to all managers would amount to a total of 6 million dollars. Manager were told at mid-year that bonus money was temporarily suspended because of a predicted shortfall and if the budget allowed they would be paid the bonus money that they earned. The PTO had a surplus no managers were paid the bonus money they had earned. Third, because the PTO did not spend the 118.7 million dollar surplus Congress took it. Examiner who earned a bonus received every penny of bonus money they were due because of contract obligations. And finally, if you have bad interactions with examiners or SPE’s and you fail to take it up to the Technology Center’s Director or beyond then you are a bad practitioner. Attorney/practitioner who are scared of the office should find another profession.

  120. 20

    >>Costco

    The PTO moved years ago. MM is now far from the Costco. You will want to meet him at Whole Foods.

  121. 19

    Come on and give me your email Mooney. We can have lunch together at Costco. I hear they have very good hot dogs.

  122. 18

    Mooney, no one is naming names here.

    Why not? If there is an SPE who is notorious for not allowing patentable claims, why not name that person? That person should be fired immediately.

    Why would you not name the person? If I knew of such a person, I would have no problem naming the person. It’s our government. Our PTO. If there is some nutball anti-patent crusader in the PTO, then let’s expose him/her. I have no idea why anyone would object to this unless … maybe you’re actually an Examiner??

    Your request is lame.

    Not as lame as you pretending that SPEs “who don’t allow anything” actually exist when, in fact, they don’t.

  123. 17

    You see only what is in your own art unit.

    I also see what comes out of art units like yours and I can assure you that the problem is not “SPEs who won’t allow anything.”

  124. 16

    Mooney, no one is naming names here. Your request is lame. If you wat, give me your email address and I will let you know a few bad ones.

    You see only what is in your own art unit. Practitioners see a wide spectrum of PTO personnel, and it is true that some SPEs discourage junior examiners allowing most cases (not all, of course).

  125. 15

    “… and yet the decision was made by Mr. Kappos, solely on the political needs of the moment, to not pay any SPE (good or bad)a single penny in bonus money for the work they performed in 2009.”

    Welcome to the real world! I’ve seen such drastic actions taken in the private industry, as a matter of survival. Clearly, with a $200M budget shortfall, Mr. Kappos’ decision is not entirely out of line and should be applauded. I would not be surprised if some types of examiners bonus are also affected in the course of responsible budget management.

    The SPEs’ behavior as echoed on this forum has been ongoing for years, not just because the bonus wasn’t handed out in October.

  126. 14

    7: In any event, it seems as though Kappos may crack down on some of the SPE’s who will not allow ANYTHING, no matter how patentable the claims are.

    Name one.

    I’ve done this before with success (i.e. resulted in the case being allowed).

    I bet your client loved those invalid claims.

  127. 13

    “The same foibles that afflict SPEs can be true of primaries as well, except primaries haven’t had any of the management training that SPEs have had.”

    Ha ha ha! That is a good one.

  128. 12

    “…You are going to make certain posters here believe that you are NOT Malcolm …”

    Careful, NAL. Some wingnut (I believe that’s one of Mooney’s favorite epithets) will accuse you of being me, or me of being you, or both of us of being Dennis… Oh, damm, my head starts to hurt every time I try to think like one of those conspiracy theorists. I wonder if it’s one of those rays from government satellites…

  129. 11

    … and yet the decision was made by Mr. Kappos, solely on the political needs of the moment, to not pay any SPE (good or bad)a single penny in bonus money for the work they performed in 2009. You want to point a finger at what is wrong with the system, point it at Congress. A Congress that consistently under-funds the PTO, a Congress that takes user fees from the Office to supplement the general fund and a Congress that sets management goals completely out of whack with those required by examiner contract. But I should not complain as we get the government we elect, and then deserve, don’t we.

  130. 10

    Bad Joke,

    If you find yourself in that position (examiner can’t find the proper art, admits the holdup is the SPE), call the SPE and ask for a conference with him and the examiner. I’ve done this before with success (i.e. resulted in the case being allowed).

  131. 9

    To: perpetual examination machine,

    First off, I commend your view of the watchdog function, in that you desire a no-rubber-stamp of wither reject-reject-reject OR accept-accept-accept. We are in agreement there.

    However, I do have an issue with the “that forces you to make a rejection that you know is wrong” mentality. Another thread here at the trainwreck is dealing with ethics for practicioners. I wonder how ethics comes into play when an examiner allows himself to not only “make a rejection that you know is wrong”, but actually believes that such a moral choice is beyond the power of the examiner’s “but I’m only a soldier” position. The choice is real. Such a choice is stealing time and money from the public, your customers and in the end, this country.

    BigGuy,

    You are going to make certain posters here believe that you are NOT Malcolm, or that you are decidedly a split personality of Malcolm’s with your post at 9:02 AM, in that “At least in the real world, where people recognize that reducing the quality of examination and spreading a mentality of reject=quality is not a rational response…”

    Such well reasoned thoughts can be dangerous ;-)

  132. 8

    there needs to be a “manager” quality factor for SPE hiring and review. It seems most SPE’s are examiners who have put in x number of years in the agency. This may make them expert examiners, but has nothing to do with making a good manager. I would be curious what type of leadership assessments the agency has in their SPE hiring/promotion scheme – such as past positions in a manager capacity, education (MBA), etc…

    I have corresponded with a couple of SPE’s and were midly shocked at the level of professionalism and people skills.

  133. 7

    perpetual examination machine,

    You’re right on target. It’s those same SPE’s that make life miserable for prosecution associates. The worst is when the junior tells you that he thinks it’s allowable, but the SPE won’t let him allow, and the client forbids appeals. I can assure you that responding to the same rejection over and over with different arguments is about as much fun for us as it is you guys. If SPE’s don’t know the law and how it should be applied, they should be fired immediately, or never made a SPE. There should be a test for SPE similar to the patent bar, but it should include rejection improper/proper and why.

  134. 6

    I agree completely with Perpetual Examination Machine.

    One additional note, though: since 20 examiners really is too many for one SPE to supervise, many SPEs delegate mentoring duties to primaries in the art unit. (Some SPEs also delegate these duties because they examined in a different art unit, so they don’t know the art in the art unit where they’re serving as SPE.)

    The same foibles that afflict SPEs can be true of primaries as well, except primaries haven’t had any of the management training that SPEs have had.

    A bad primary mentoring junior examiners can cause just as much damage as a bad SPE, except (1) they presumably don’t know any better because they haven’t had training in mentoring others, and (2) they are largely unsupervised in this role since the junior examiners who work under them are often afraid to complain to anyone who can do anything about the problem.

    Any revised performance review for SPEs should also take into account whether they are choosing good primaries for delegating mentoring duties and whether they are following up on their primaries to ensure that the junior examiners are getting proper training.

  135. 5

    Examiner TURNOVER should be a factor, ideally the major factor in SPE evaluation. If they lose a few people, it is a few problem people…but if they lose everybody it is a problem SPE. Also English language skills should also be an evaluation factor.

  136. 4

    “#1 and #2 seem at odds with each other, really.”

    Um, yes, a manager has to balance goals that are in tension with another. At least in the real world, where people recognize that reducing the quality of examination and spreading a mentality of reject=quality is not a rational response to negative media coverage of a bathroom reservation patent.

    Kappos’ response is what I hoped for when he was appointed. Leadership is as much about adjusting attitudes as anything.

  137. 3

    SPEs absolutely have the power to make an examiner’s life pleasant or extremely miserable. Nothing is worse than getting stuck with the “everything is obvious” SPE. You end up getting every allowable claim kicked back because “it just seems obvious to me” with either no art from the SPE or really lame art that forces you to make a rejection that you know is wrong. Close behind this in overall crapitude is the “every action must be exactly how I would have written it” SPE. Here, even though your underlying rejections may be just as sound, the SPE always makes you change to use the art with which he or she is familiar (usually really old stuff), and you end up rewriting every action three times, living at the PTO 24/7, and still not making your production numbers. At the same time, nothing is better than having a SPE that really knows the art, gives the examiner’s work a fair shake, and supplies good, relevant art whenever they do kick something back.

    Bad SPEs should be fairly easy to identify by their low (nearly non-existent) allowance rates and/or high (well ok, higher than the already normally high) attrition rates. Good SPEs should be rewarded with production based bonuses where the bonus takes into account more than just raw production (i.e. not just the RCE gravy train) but also reduced number of actions to ultimate disposal.

    SPEs should be focused on two things: 1) their watchdog function (i.e. BOTH not allowing claims that CLEARLY in view of the prior art should not be allowed, and not rejecting claims that CLEARLY in view of the cited prior art should not be rejected, emphasis on the words “both” and “clearly”); and 2) helping their examiners to examine better and faster (as in, “helping to” not just “expecting them to”).

    A problem is that 20 examiners is just too many examiners for one SPE to adequately supervise.

  138. 2

    #1 and #2 seem at odds with each other, really.

    In any event, it seems as though Kappos may crack down on some of the SPE’s who will not allow ANYTHING, no matter how patentable the claims are.

  139. 1

    “Knowledge conduit node” is a very important role SPEs play, particularly in business methods. If examiner A needs to know what a financial terms like “net present value” means, and examiner B has already worked in that area, it seems to me that it’s the SPE that would know that and be able to make the connection.

    The USPTO might do well to have a formal knowledge management “social networking map done” in some of the more critical art units to see how to improve the connections. This Fortune article gives some guidance link to bit.ly

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