Upcoming Symposium and The Role of Patent Applicant Incentives in Patent Office (PTO) Reform

On February 26, 2010 (Friday), I will be speaking as part of the Stanford Technology Law Review annual Symposium. This year's focus is USPTO Reform.

Topics include:     

  • Quality and Pendency: Drilling Down to Backlog, Deferred Examination, Patent Worksharing and Other Integers to Achieve Primary Goals led by Hal Wegner
  • The Role of Applicant Incentives in Patent Office Reform led by Dennis Crouch
  • Patent Examination Policy and the Social Costs of Examiner Allowance and Rejection Errors led by Ron Katznelson
  • Examiner Characteristics and the Patent Grant Rate led by Mark Lemley & Bhaven Sampat

Other participants include Professors Colleen Chien (SCU), John Duffy (GWU), Jeff Lefstin (Hastings), Roberta Morris (Stanford), Arti Rai (Duke & USPTO), and Brenda Simon (Stanford) as well as Jon Dudas (Foley & Lardner), Leonard Heyman (VMWare), Ed Reines (Weil Gotschal), Robert Sachs (Fenwick & West), Lee Van Pelt (Van Pelt), Janet Xiao (Morrison Foerster), and Mallun Yen (Cisco).

* * * * *

Introduction to My Talk

Applicant Incentives: Although I have been dilatory in providing my materials for the talk (sorry!), my general themes focus on the role of patent applicant and patentee incentives in patent office reform. The incentives conversation is comfortable for intellectual property scholars and practitioners alike. The explicit Constitutional justification for patent and copyright regimes is that an offer of exclusive rights provides an incentive to "promote the progress" in the respective fields. This big-picture incentive award has already been created by the drafters of the Constitution and detailed by Congress and the Courts. Here, l take a narrow approach and consider how applicant incentives should be utilized to achieve the goals of PTO reform. Specific questions include:

  1. To what extent should PTO reforms focus on modifying patent applicant behavior?
  2. Should reforms focused on applicant-behavior lean on rules and requirements or rather employ a softer incentive approach? These "softer incentives" could be in the form of Sunsteinian Nudges or more onerous or strongly beneficial incentives.
  3. Fees: To what extent are patent applicants sensitive to PTO fees? To what extent can (or should) the PTO use its fee structure to modify applicant behavior?

A Dynamic Feedback System: My mental starting point for the topic is Newton's third law of motion: For every action there is an equal and opposite reaction. In the simple case of billiard balls colliding on a table, those reactions are (relatively) easy to predict. In the complex patent system reactions to reforms are less predictable – especially for any particular case. It is also important to recognize that the system is dynamic. Changes in PTO operations lead to changes in patent applicant behavior. These PTO changes may take the form of rules, fees, appeal processes, personnel availability, training, etc.

Provisional patent applications have become increasingly popular since their introduction in 1995. Offering the right to file a provisional application was the first arguably most important step in shifting applicant behavior. However, the low fee, lack of formality, and ease of process in claiming priority all contribute to popularity of the form. While the government has no direct control over applicant behavior, the popularity of provisional applications was likely ensured by these positive incentives. There are many examples of applicant behavior altered by PTO practices. Increasing application fees decreases application filings; offering "free" claims increases claim filings; longer applicant deadlines result in longer waits for applicant responses; etc.

There are two observations that I want to highlight from this discussion thus far – both of which were likely already obvious to most patent folks. (1) The patent office rules & procedures impact patent applicant behavior and therefore have the potential for serving as policy levers. (2) The exerted policy lever need not create a hard-rule to be effective. Rather, non-rights-based policy choices involving fees, procedures, and default rules can also effectively shift applicant behavior. The hard-rule / soft-rule distinction is not always clear. In some situations strong incentives can have the same coercive impact as an absolute rule. (The PTO's recent attempt to limit claim and continuation filings has been described as such.)

Cause of the Problems?: It is typically difficult to pin-down the root cause of problems in dynamic system with multiple independent actors. Take the current PTO backlog problem as an example. One popular explanation accuses the PTO of being too slow and issuing unnecessary rejections. On the flip-side, applicants can be blamed for filing so many applications that are difficult to examine. Both accusations have merit, but neither tells the whole story. (There was no backlog until the first application was filed…) Even while sidestepping the blame-game, this discussion leads to two additional observations. (3) Applicant behavior impacts PTO problems — thus creating the possibility that (4) shifting applicant behavior can help to resolve those problems. In other words, many goals of PTO reform could potentially be met by pushing on applicant incentives.

USPTO Fee Structure: The USPTO has always charged some fee-for-service as a way to avoid directly spending taxpayer monies on the examination and issuance of patents. In 1871, the application fee was $15. By 1952, the fee had doubled to $30 with a surcharge of $1 per additional claim over 20. By 1982, the fees had been raised by a factor of ten to $300 for filing and $10 for excess claims. Today, the filing fee (including the required search and examination fee) is $1090 and additional claims cost $52. Since 1952, the increase averages to a not-too-unreasonable annual rate of 6.4%.

Throughout this time, the USPTO has also charged an issue fee that has been roughly equivalent to the filing fee, although the current issue fee is $1510. This historic distribution is not intuitive. The filing and issue fees must all be paid before any patent rights can be asserted, and the actual PTO budget is overwhelmingly directed toward examination costs (primarily examiner salaries). Only a small part of the budget is spent on the ministerial process of issuing the patent. The filing fee / issue fee distribution is a policy lever. A relatively low filing fee encourages applicants to "take a chance" on patenting inventions that are only marginally likely to be financially successful. The prosecution delay prior to payment of the issue fee gives applicant the opportunity to first determine whether a patent is worthwhile. On the other side of the argument, a relatively high filing fee could limit the absolute number of patent applications filed and also operate to encourage patent applicants to file "higher quality" applications. The PTO also charges maintenance fees (previous known as renewal fees). Perhaps more than any other fees, the maintenance fees are "pure profit" because the PTO does not work for that income.

The analysis of fees leads to the following observation: (5) Wittingly or not, the setting of USPTO fees involves policy choices that shift applicant incentives. Still, the agency (with the help of Congress) could attempt to design its fees in a way that most directly cover costs. However, that approach would waste the potential opportunity to use fees to improve the system inputs. At this point it would be a ridiculous approach, but it would not be inconceivable for the PTO to shift its fees for individual applications according to input quality measures with designated "high quality" applications paying a lower fee.

Additional Issues To be Discussed:

  • USPTO Deadlines, Late Fees, and Deferring Examination
  • USPTO Authority: To what extent should the PTO be given authority to use fees and other mechanismsto intentionally shift applicant behavior.

206 thoughts on “Upcoming Symposium and The Role of Patent Applicant Incentives in Patent Office (PTO) Reform

  1. 206

    Interesting topic. The USPTO’s fee schedule unquestionably impacts the patent law system in numerous ways. This is an interesting take on the intersection of IP and economics. Unfortunately, I couldn’t attend the event. I hope, however, that you will post related materials at a later date.

  2. 205

    “If the reading comprehension level is at all engaged, I may never have to type WAKE UP again”

    This sentence reminds me of applications that are translated from Japanese.

    “Anyone reading this document and then desiring to give the Office more power is clearly out of their minds”

    … with joy!

    I can’t wait to read this conspiracy theory nonsense you’re going to post.

  3. 204

    The Student.

    You say I can’t remember, yet this thread – like most threads, are multi-subject.

    Oh, the transparency of it all…

  4. 203

    Noise, you’ve obfuscated so much that you can’t even remember what this discussion is even about. Leave this one to the big dogs of Academia: Crouch, Wegner, Katznelson, Lemley (the pros).

  5. 202

    Much as those who would misdirect and obfuscate with the desire to NOT answer questions put forth, there are a few questions/topics from *earlier this week* that may still warrant some discussion by those seriously interested in our nations patent system:
    (updated)

    Let’s start with WHY should the Office be concerned with attempting to change applicant behavior, when there own house is in such disarray?

    A sub topic to this question would naturally impinge on executive order 12866:

    Hal Wegner puts out an email style of communication and it contains a MANIFESTO of Office corruption by Richard Belzer. This 49 page, single spaced indictment should be mandatory reading. Those here at the blog who dreamily dispense with actual questions in an “examiner-perfect” never-never land may realize just how pernicious the Office can be.

    If the reading comprehension level is at all engaged, I may never have to type WAKE UP again.

    The February 25, 2010 Regulatory Checkbook letter to David Kappos clearly and thoroughly details the complete disdain for the Rule of Law that this administrative body has perpetrated over the last several years.

    Anyone reading this document and then desiring to give the Office more power is clearly out of their minds.

    I don’t have the link now, but will post it when I can.

  6. 200

    Sarcasm to you, inanity to the rest of the world.
    Malcolm sockpuppet 3,456,234,887.

    Such class – not really unexpected.

    Just answer the questions, INANE. glib non-answers lead only to your foolishness.

  7. 198

    “The point 6 is that we submit the application and abid by our duty of disclosure and you are supposed to do the rest. ”

    I don’t recall seeing any of that nonsense in the law. I believe that these are your personal views to which you have become accustomed. Furthemore, you forget that it is the office who determines what “the rest” is.

    Perhaps once we’re out of the econ recession and we get another director with some balls we’ll get the chance to see about this little issue of ours. Until then, all of you guys can enjoy pis sing into the wind.

  8. 197

    My writing is clear – INANE has to work at screwing up my questions – that’s what happens when you don’t have answers.

    Your writing is excellent, I just can’t get past this reject, reject, reject mentality I have for some reason.

    It’s always someone else’s fault.

  9. 196

    Malcolm,

    My writing is clear – INANE has to work at screwing up my questions – that’s what happens when you don’t have answers.

    Why don’t you just learn some new rare/usual/other sockpuppets?

  10. 195

    NAL you redirect my actual questions, warping and twisting them to be extreme (for example

    Why don’t you just learn how to write clearly, NAL?

  11. 194

    Apology accepted – even as offered in its imperfect form.

    Once again I have to correct you – it is not that your view is extremist (again, this is not what I said), it is that you redirect my actual questions, warping and twisting them to be extreme (for example – the NPE and only wanting to exclude “defendant” versus exclude “everyone”.

    You make a game out of not answering actual questions. Fun for you, no doubt. But as I have “assailed” MaxDrei in the past, the damage to your credibility mars anything useful you may want to say.

    Glib non-answers make you a joke. Your choice and your (R/r)ight. Have at it.

  12. 193

    I have ALREADY corrected your extremist redirect from “getting a patent” back to “examination”.

    I’m sorry I ever implied there was a connection between PTO examination and getting patents. Thank you for correcting my extremist view on that point.

  13. 192

    IANAE – are you taking strawman lessens from Malcolm?

    I have ALREADY corrected your extremist redirect from “getting a patent” back to “examination”.

    For someone who doesn’t like broken records, why do you keep breaking them?

  14. 191

    we submit the application […] and you are supposed to do the rest.

    Let’s review. It’s our job to prepare and submit the application. It’s the PTO’s job to do “the rest”.

    Supposing the application is not entitled to a patent. What do you think “the rest” is going to look like? Personally, I think it’s the PTO’s job to not give you a patent in that situation.

    I challenge you, NAL, or anyone else here to draft a patent application that has an invalid claim 1 and yet merits a notice of allowance. In other words, create a situation however contrived in which an examiner has to read any farther than the invalid claim 1 to determine whether the application is patentable.

  15. 190

    The point 6 is that we submit the application and abid by our duty of disclosure and you are supposed to do the rest.

    The Dudas tactics are an attempt to circumvent the law and hamstring the grant of patents. Get off that road and start doing your job.

  16. 189

    “Examination CANNOT stop at claim 1, because the application is not examined for patentability.”

    Looks to me like it was, and at that point in time it was not patentable… do you think otherwise? Perhaps you believe that an NOA should have been sent right then? Hmmm, no I don’t believe you think otherwise, you just like to argue that something which you are accustomed to because it is a rule is supposedly in the law itself.

  17. 188

    NAL: >>but the Office needs to get down to the real >>business at hand

    I agree. If the PTO just moved to say Richmond and focused on the fundamentals, all the problems would be lessened and manageable. Dudas’s attempt to hamstring the applicant are a testament to the dirty tricks and amoral behavior of Bush administration.

  18. 187

    Much as those who would misdirect and obfuscate with the desire to NOT answer questions put forth, there are a few questions/topics from Wednesday that may still warrant some discussion by those seriously interested in our nations patent system:

    Updated – see post at | Feb 25, 2010 at 09:42 AM
    for discussion items.

    Those who merely wish to twist and falsely accuse – please feel free to abstain until actual questions are answered, or content of merit can be provided.

  19. 186

    Jimmy D: “You must be an examiner.”

    Wrong. You know what they say about assumptions, John…

  20. 185

    INANE – you decry lawyers, yet persist in pedantic sideshows, avoiding what is asked of you.

    “other than a determination of allowability or not.”

    Except for the fact that you STILL have not provided your dazzling plain language rendition of “examine” which indicates a partial or arbitrarily selective examination. You disagree with me, but offer nothing more.

    Also except for the fact that 132 does NOT indicate that once you find a single example of non-patentability, you stop the examination. Note the reference to multiple claims – there would be no such reference under your proposed plain language reading.

    “I just disagree with you that “complete” and “entire” (neither of which appears in 132) means more than “enough to be absolutely sure of what your final decision will be”.

    More misdirection and misstatement of my position. I have never said that “complete” and “entire” means MORE THAN “enough to be absolutely sure of what your final decision will be”. I take note (once again) of your tactic of trying to make my argument to be extreme – stop dodging.

    You must really love to argue with me, as it appears from your fine parsing here that you actually do agree that examination means at least “enough to be… sure of what your FINAL decision will be”. (emphasis added) – How do you get to FINAL, without examining everything? You cannot, as by sheer plain meaning, if you do not examine something, that something may be patentable – but you just don’t know yet. In your scenario, all applications can be arbitrarily examined by title and rejected for obviousness because the title is obvious. Reduction ad absurdum.

    To develop the dependent claim scenario a bit more, let’s take a hypothetical case wherein independent claim 1 may not be patentable over prior art, but dependent claim 2 is. Examination CANNOT stop at claim 1, because the application is not examined for patentability.

    Further, you purposely conflate “get a patent” with examine for patentability. In the immediate hypo, the examination result, properly done, will be a rejection of claim 1 and an OBJECTION of claim 2 – note that claim 2 MUST still be examined – it is NO favor of the Office to do so – it is mandated.

    “Ever see a notice of allowance with…” – more misdirection. Ever see an examination (hold up as final and complete) that states we looked at your first claim and stopped there (or we looked at the title of your application and stopped there)? In order to support your position, you would need that.

    Not going to happen as a matter of law (it MAY happen as a matter of fact if the applicant does not challenge an errant Office Action – but, oh wait, in your world there are no such things as errant Office Actions – WAKE UP).

  21. 184

    if IANAE were correct, section 132 would not be written as it is. It would be written as but finding a single item not patentable – game over.

    It is written that way, you’re just refusing to read it that way.

    Section 132 clearly says that the PTO has to examine the application and grant a patent if the application is so entitled. It doesn’t say anything else about what the examination should entail, other than a determination of allowability or not.

    How many invalid claims does the PTO usually have to find before it knows you are not so entitled? In my experience, just one. Ever see a notice of allowance with “claims allowed: 2-78, claims rejected: 1”?

    If I (because we all know I’m an examiner) look at an application and see that claim 2 depends from claim 2, I already know I’m not giving that guy his patent. My examination is done. Complete. My final determination as to its allowability is indisputably correct. No matter what else there is in the entire application, this guy is not entitled to his patent. Sure, I could do him a favor and search the rest of the claims, but he still won’t get his patent before he fixes claim 2.

    I completely agree with you that an examination has to be much more thorough before a case is allowed, because you have to check the entire spec and all the claims for formal defects, and you have to search long enough to know that you won’t find prior art. I just disagree with you that “complete” and “entire” (neither of which appears in 132) means more than “enough to be absolutely sure of what your final decision will be”.

  22. 183

    Much as those who would misdirect and obfuscate with the desire to NOT answer questions put forth, there are a few questions/topics from yesterday that may still warrant some discussion by those seriously interested in our nations patent system:

    Let’s start with WHY should the Office be concerned with attempting to change applicant behavior, when there own house is in such disarray?

    A sub topic to this question would naturally impinge on executive order 12866:
    CAN the Office attempt to pursue such a path legally?

    Here, it is almost a pre-conceived notion that the Office even has a right to try to alter applicant behavior, and that the lessons of the ill-begotten claims and continuation rules fiasco are being ignored by actually proposing to give the Office authority to do what it could not legally do. This of course begs another sub question – why does it appear that certain segments are eager to increase the power of an agency that has legal difficulties using the power it currently has?

    Another topic here is the definition of quality. The Office has already (as can be shown with historical fact) butchered the defining of “quality” in the name of its power grabbing agenda (sorry IANAE – it is time to once again wake up from the ideal examiner world and face reality). As I set the baseline yesterday, the Office should focus on the quality that it rightly CAN control – that of examination quality. To echo NWPA, examiners should have a grounding in law, since they are judging patentability by legal standards. Perhaps a team approach to examination would work better, that team comprising a technical expert and a legal expert.

    Another intertwined topic here would be the acceptance of the actual mission of the Office in regards to promotion, with the realization that promotion by definition indicates that “more and more” is desired (the Office should plan to accommodate growth in filings and such growth in filings should be looked upon, not in derision of more work to do, but rather, that the Office is succeeding in its goal). It is time to eliminate the Duellist philosophy.

    For the Office to focus on application quality is but (yet another) attempt to offload its admittedly difficult task of examination. It really is no head scratcher to see that the Office NEEDS to open wide the front gates as part of its mission to promote. The Office should realize that a certain lack of application quality will ALWAYS be present and simply adjust its capabilities to handle the natural incoming stream, rather than fight that stream. We have seen from yesterday’s discussion that internal workings should be the focus – items exist within the immediate Office’s internal workings that cause fear amongst the Office’s own workers to do the right thing. It is no accident that exactly such is the mandate from executive orders that have been routinely ignored – BEFORE new laws are to be promulgated, the inner workings should be examined. Disrespect for the Law is so rampant, that I find it downright audacious to consider adding to the Office power.

    Sure, such a focus from an operational viewpoint is far less sexy than the academic and paternalistic viewpoints of changing the Law, but the Office needs to get down to the real business at hand, rather than pursuing glitzy ways to off load its responsibilities at the same time it power grabs. Anything less than putting the focus squarely where it needs to be runs the very real risk of not only ignoring the problem, but provides too much of a chance for those who wish to evade the difficult work to deflect that work. This is easily evidenced by the quick deflection of the topic on these boards – and that’s from people who don’t even work at the office ;-p – just think of those that do, those entrenched with anti-patent, anti-work mindsets.

  23. 182

    I will echo that it wasn’t me – and add my apology as I did challenge Malcolm to come up with new slimy tricks and suspect that this is his answer.

  24. 181

    “What ‘nonsense’ would that be, NAL(JD)? You mean nonsense like my opinion about a case or policy matter? Or ‘nonsense’ about how you and NAL and NWPA and AI are all the same person because you all sort of agree about some stuff?”

    Both.

    “So the only question is: which do you prefer, NAL? A ton of sockpuppets in your JD/NAL/NWPA/AI face all every day, even when you’re not posting comments, accusing you of being someone’s sockpuppet? Or some other way?

    It’s really up to you, JD(NAL). How do you want to play?”

    LOL.

    Is it really up to me, Malcolm? Is there really any answer I could give you that’s going to influence your behavior? I doubt it.

    BTW, I agree 1,000,000% with NAL’s 9:27 PM post!

    BWWWAAAAAHHHHHHAAAAAAHHHHHAAAAAAAHHHHHHAAAAAAAAA

  25. 178

    That’s right, oook oook. Now, will applicants who have been ripped off for many years receive refunds? Let’s top the talk of increasing fees and turn to refunds!

  26. 177

    Baboon.
    Baboon?
    Baaaaaaabbbbbbooooooonnnnnnnn.
    Ba-ba-boon.
    Baboon!
    Baboon.
    Baboons?
    Baboon.

  27. 175

    MM face it. You are a beaten baboon. NAL has worn you down and shamed you in front of the community. You once invisioned yourself as a silver back, but now you are nothing but a broken down prostrate old baboon. Change your ways.

    6: I worry about your mental stability. And, you paranoid statements. Also, you have lost as well as MM. NAL has humiliated you. Now you turn to trying to trying to attack us personally rather than our arguments as presented here on the this board. Sad really.

    The two prostrate beaten baboons.

  28. 171

    Leave it to 6 to try to use the examining term of Broadest Reasonable Intepretation in an analysis of Law. Quick 6 – tell me why this fails the “Logic Game”.

    6, your recitation of section 132 is so like you: rope. This time you bring it for IANAE, as if IANAE were correct, section 132 would not be written as it is. It would be written as but finding a single item not patentable – game over.

    IANAE, after you get around to the dazzling plain language rendition of how examine means partially or arbitrarily selectively examine (like that’ll ever happen), let’s see you give a plain language rendition of section 132.

  29. 169

    Malcolm,

    I am not JD. He may like to yank your chain by suggesting that there is but one of us that recognize the crap you post under rare/usual/whatever pseudonyms, but you can “ask Dennis” if you want to, we are not the same person. (ask Dennis – ah, that was one of your less stale attempts).

    More to the point, and as bluntly as I may, any taste or playing with you is repulsive. Put simply, the boards would be better off without your lame, stale tricks. For a fool provecatuer, you have lost the provecatuer part a long, long time ago.

    You want to play? I cannot stop you. Your choice. Does it matter how foolish you look? Evidently not.

    Give it a go as you will undoubtedly do anyway.

  30. 168

    JD(NAL) Are you really posting the nonsense you post here in the hopes of persuading anybody to come around to your way of “thinking”?

    What “nonsense” would that be, NAL(JD)? You mean nonsense like my opinion about a case or policy matter? Or “nonsense” about how you and NAL and NWPA and AI are all the same person because you all sort of agree about some stuff?

    Because I generally don’t post the latter “nonsense” (today was a trial to give you a little taste).

    As for people “coming around” to my opinion on various topics, I’m not terribly concerned about that. The Federal Circuit and the Supremes will continue to “come around” on their own, given time. The contraction of patent rights at this point in time is only natural.

    So the only question is: which do you prefer, NAL? A ton of sockpuppets in your JD/NAL/NWPA/AI face all every day, even when you’re not posting comments, accusing you of being someone’s sockpuppet? Or some other way?

    It’s really up to you, JD(NAL). How do you want to play?

  31. 167

    “But I can turn it up, of course, maybe five times the volume and under three or four different pseudonyms, in addition to random attacks on all three of you.”

    If you could actually do that, I’d be impressed.

    “Right now I’m just accusing you and/or NAL and/or NWPA and/or AI of being the same person because you sort of agree with each other about some stuff. You know, the same type of crxp that gets tossed around all the time by … you and NAL and NWPA and AI etc.”

    So four different people agree that you’re ridiculous, or one person using four different screen names thinks you’re ridiculous. So what?

    Does it matter? Are you really posting the nonsense you post here in the hopes of persuading anybody to come around to your way of “thinking”? If you are, you’re even more ridiculous than the four, or one, of us think(s) you are.

  32. 166

    “I must have missed that, 6. Show me again. Otherwise, I’ll just assume it’s JD. Ooops, I mean, NAL.”

    Here, for the second time, is NWPA:

    link to en.sap.info

    The thread where he all but outted himself:

    link to patentlyo.com

    He wrote that lame article for D to post after I told him D would post any gar bage. That of course was after he compained about D posting an article by a different guest poster tra shing software patents.

    NWPA, like I told you before, you should take some pride in who you are. You’ve been sca mming people for DECADES and doing it successfully. Heck, you were sca mming people since BEFORE I WAS BORN and you’re still probably getting away with it.

    I have to admit though, I don’t like to look at the article because I don’t like think of myself as making fun of an old dude just because he’s done some bad things in his day. It’s like making fun of my grandfather for his being confused on something that was beyond his firm understanding and that he took a notion to before I was born. It just isn’t fair. It isn’t fair to his world-view. If he accepts what I say, then he would feel horrible, and he doesn’t really have long to make up for what he’s done. There is, therefor, no real opportunity for him to truly consider what I say. For him, what I say must be untrue else nearly his whole life was lived in err. Thus to make fun of him is no more than ridiculing him for not accepting his whole life was pretty much a lie. That’s kind of mean.

    “Perhaps you could help INANE with the dazzling plain language rendition of how examine means partially or arbitrarily selectively examine – as opposed to examine (in entirity). ”

    BRI NAL, BRIlol. That’s a subject you’re intimately acquainted with aren’t you?

    The fact of the matter is that the Director gets to direct the examination. Not you, not the courts, not me, nobody but him. Just him. The examination doesn’t have to be anything in particular, it doesn’t have to be “in entirety”, it doesn’t have to be arbitrary, or even selective. It just has to be an examination as caused by the director.

    Furthermore, even if you were right about that interpretation (which you aren’t) you’d still have to contend with the “notice of rejection” 132 section.

    link to uspto.gov

    Notice that 132 doesn’t require notices of rejection to include rejections for every claim. It says “whenever, on examination, any claim for a patent is rejected…”. If any of your claims fail, you get notified. There is no requirement that all those rejections be made at any given time. Prosecution for 50 claims could take an avg of 25 years if the director should so decide that should be the procedure.

    Frankly, I’m rather suprised myself that the office didn’t do something about this back right before they implemented a “production system”.

  33. 165

    JD(NAL) Seems to me you’re already doing it anyway. So why ask our opinion?

    What is it you think I’m “already doing”, JD?

    Right now I’m just accusing you and/or NAL and/or NWPA and/or AI of being the same person because you sort of agree with each other about some stuff. You know, the same type of crxp that gets tossed around all the time by … you and NAL and NWPA and AI etc.

    But I can turn it up, of course, maybe five times the volume and under three or four different pseudonyms, in addition to random attacks on all three of you.

    Would that be preferred? I mean, you never seem to complain it about, you silly baboon. It’s part of the trainwreck, right?

    Or I can simply just be my usual sardonic self. What do you prefer?

  34. 164

    “Wasn’t me who wrote this. But it would be easy enough for me to do so under a similar name and multiply the volume and frequency by five fold. Is that what JD(NAL) would prefer? Happy to go there if it’s what NAL/NWPA thinks is the right way to behave, which appears to be the case.”

    I don’t know about NAL or NWPA, but I don’t care. Seems to me you’re already doing it anyway. So why ask our opinion?

    “Yeah, I can’t imagine why anyone would associate that kind of grade-school namecalling with John Darling.”

    I’m a little disappointed you didn’t credit me with at least junior high school name calling.

    You must be an examiner.

    LOL

  35. 163

    Restriction is, by definition, NOT substantive examination on the merits. Everyone knows that.

  36. 162

    “I think the baboon comments have cut deep into MM. He is very sensitive. He hurts.”

    You guys are getting to my little baboon… Ooook ooook… can’t you just see him self destructing?

  37. 161

    6: Anyone care to hear something interesting about NAL’s background that will add flavor and context to her hatred o the USPTO and her belief that most examiners are the horrible?

    [Raises hand]

    NWPA is not NAL btw mooney.

    B-b-but why hasn’t NWPA come out and denied it then?!?!?!?

    I can’t imagine why anyone would associate that kind of grade-school namecalling with John Darling.

    Wasn’t me who wrote this. But it would be easy enough for me to do so under a similar name and multiply the volume and frequency by five fold. Is that what JD(NAL) would prefer? Let me know. Happy to go there if it’s what NAL/NWPA thinks is the right way to behave, which appears to be the case.

  38. 160

    6,

    Perhaps you could help INANE with the dazzling plain language rendition of how examine means partially or arbitrarily selectively examine – as opposed to examine (in entirity). IANAE seems to have lost his way (must have been the partial or arbitrarily selective directions on how to apply “plain language” that he learned at his partially or arbitrarily selective law school.

    ENTIRE is inherent since you are only done examining when you have examined the ENTIRE application. Didn’t your SPE tell you this last time you challenged me about what portion of an application you had to examine (hint: you said you only had to examine the claims, and, once again, you were proven wrong).

    Malcolm – sorry to disappoint you.

  39. 159

    “once again, IANAE, you fail to actually read my post – the Office must examine the ENTIRE application – not merely stopping at the first hint of non-patentability (oh, and 6 – this is not discretion – this is “35 USC, shall” law). ”

    Except for the fact that you inserted “ENTIRE” where the word doesn’t exist irl :( Nice try NAL, but no cigar.

  40. 158

    “6: what are you talking about? You claim to id’ed me and have a link with a picture of me?”

    Yeah after you wrote that article for D to post, I posted a link to an article about you that had your pic up. I said something like: “everyone say hello to NWPA: link”

    NWPA is not NAL btw mooney. Two different, yet equally almost equally disgraceful, individuals.

    I have not revealed NAL’s supar secrat identity quite yet. Anyone care to hear something interesting about NAL’s background that will add flavor and context to her hatred o the USPTO and her belief that most examiners are the horrible?

  41. 157

    Johnny D: “I’m a little disappointed you would think that somebody who resorts to “…and your momma” would be me.”

    Yeah, I can’t imagine why anyone would associate that kind of grade-school namecalling with John Darling.

  42. 156

    NWPA (NAL) 6: what are you talking about? You claim to id’ed me and have a link with a picture of me?

    I think everyone already knows who are, NAL.

    Enjoying this, by the way? If you like, I can post under different names, double the volume, and start cheerleading my own comments and attacking you under different names.

    Let me know if you would prefer that.

  43. 154

    6: what are you talking about? You claim to id’ed me and have a link with a picture of me?

  44. 153

    IANAE: “This is as basic as logic gets.”

    Logic? My god, the man’s talking about logic. We’re talking about universal armageddon!

  45. 152

    We try to keep the invention to one application. We write claims of differing scope to cover all patentable aspect. Usually, but not always, these can reasonably searched in one class. The pto insists on restricting the case, regardless that all claims have been paid for, thus causing one or more divisionals to be filed. The pto then complains about too many applications.

  46. 151

    Unless you really do have a dazzling plain language rendition that somehow captures a partial and/or arbitrary slection of examination as ‘examination”.

    How about this: you don’t need to eat the entire turd to know it’s not a crab cake.

    On the question of “does it appear that the applicant is entitled to a patent under the law?” – the stated criterion of 35 USC 131 – a “yes” requires thorough and extensive examination. A “no” requires a single counterexample. This is as basic as logic gets.

  47. 150

    Then don’t.

    Unless you really do have a dazzling plain language rendition that somehow captures a partial and/or arbitrary slection of examination as ‘examination”.

    I can wait for it…

    “Oops – NAL said it – I am COMPELLED to argue it” – INANE

  48. 148

    “You don’t.”

    Was that your dazzling plain language rendition?

    INANE – I will take that as your acquiesence.

    ‘Nuf said – examination means complete examination.

  49. 147

    But, IANAE, issuing a restriction and withdrawing claims is not a determination of whether those claims are patentable.

    No, but it is a determination of whether the application is entitled to a patent.

    how do you not know that the very last claim is determined to be entitled to be a patent or not?

    You don’t. How does the patentability of claim 56 affect whether the application is entitled to issue as a patent when claim 1 is anticipated?

  50. 146

    One hot thread – filter is having trouble keeping up.

    NWPA – he doesn’t hurt enough – he keeps coming back with the same OLD inanities.

  51. 144

    NAL(JD) C’mon man, I know you can dig deeper for more slime..

    C’mon, JD(NAL). There’s nothing “slimy” about pointing out that everyone who agrees with you is obviously one of your sockpuppets. It’s just part of “the trainwreck”, as you always say. So don’t be a baboon! Do you really have a law degree by the way? You sure don’t act like it.

  52. 143

    “It’s neither incomplete nor arbitrary.”
    “Once they determine it’s not,…
    “When the PTO examines your claim 2 (even pursuant to 37 CFR 1.104), it’s doing you a favor.”

    Except, INANE, the examination for the stated purpose is not complete, until it is complete (yes, I know that is a stunning statement – but you are denying it).

    That means every line of the application – every part of the specification and every claim must be examined – unless you do so, how do you not know that the very last claim is determined to be entitled to be a patent or not?

    That better not be your dazzling “plain language” rendition (pursuant to anything you want to provide).

  53. 142

    a patentability determination involves application of 101, 112, 102, and/or 103. all appealable.

  54. 141

    NAL said about MM: >>C’mon man, I know you can dig deeper for more slime.

    I think the baboon comments have cut deep into MM. He is very sensitive. He hurts.

  55. 140

    But, IANAE, issuing a restriction and withdrawing claims is not a determination of whether those claims are patentable.

  56. 139

    Somehow, law school didn’t teach obfuscation and parsing of “examination” into somehow an incomplete and arbitrary PARTIAL examination.

    It’s neither incomplete nor arbitrary. The law requires the PTO to examine the application for the purpose of determining whether that application is entitled to a patent. Once they determine it’s not, their examination is complete. No matter how much more they examine it, it will continue to not be entitled to a patent.

    When the PTO examines your claim 2 (even pursuant to 37 CFR 1.104), it’s doing you a favor.

  57. 138

    Instead of taking the high road like I do (lol), the pinhead pto monkeys instead bring the level of discussion into the sewer of arbitrary action is okay if no one says I can’t!

  58. 137

    “Your almost as bad as NAL now.”

    Malcolm, I said NEW tricks – accusing others for what you do is an OLD trick.

    C’mon man, I know you can dig deeper for more slime.

  59. 136

    fish bones,

    on what rational basis could such an assumption be made?

    INANE

    “…good reason for relying on a part of the law that clearly doesn’t support your point.”

    clearly? – still waiting for the dazzling plain language.

    Somehow, law school didn’t teach obfuscation and parsing of “examination” into somehow an incomplete and arbitrary PARTIAL examination.

    Might explain your law degree if such partial examination was the norm.

  60. 135

    “I mean the authority above 37 CFR 1.104”

    Ding ding ding! But it’s just a rule. That can be changed by the office in the course of such a policy change, without appearing to conflict with the law. Enough of this discussion, Noise, I find your approach rude and disrespectful.

  61. 132

    I would assume that over time the number of “challenging” applications (extra long applications, numerous claims and/or hundreds of references) evens out among examiners.

    NAL would like a word with you.

  62. 131

    “And if they do accept the cash for an application including many claims, the examiner is not credited with more time to examine these extra paid for claims. Scam!”

    I would assume that over time the number of “challenging” applications (extra long applications, numerous claims and/or hundreds of references) evens out among examiners.

  63. 128

    I mean the authority above 37 CFR 1.104

    First time you’ve mentioned it.

    I suppose you had a good reason for relying on a part of the law that clearly doesn’t support your point. My law school never gave credit for that sort of thing.

  64. 126

    Nice IANAE, you pay respect to David Boundy, and then flount the very concept that he states as a Key problem.

    flount?

  65. 125

    “To be clear, I am all for complete examination of the application, compact prosecution, well-reasoned rejections, and all that. It’s just not at all founded in 35 USC 131.”

    Rabbit or duck I don’t care – just provide justification for your statement.

  66. 123

    And while you are at, supply the proper justification that an examination means a full examination.

    “And while you’re at it, prove my point for me!”

    Nice try, but I know the rabbit season duck season trick.

  67. 122

    “contrary to their plain language”

    Dazzle me with your plain language rendition.

    And while you are at, supply the proper justification that an examination means a full examination.

  68. 121

    IANAE, your bias is painfully obvious.

    Even more so when my “true thoughts” slip out for the first time in your paraphrasing of my posts.

  69. 120

    “reasonably spends per count, that’s already a big improvement. Isn’t it?”

    No. In essence you have described the count system as it is. Obviuously, you do not understnad either David Boundy or myself.

  70. 119

    The filter is on fire.

    “The examiner can still spend more time on that application and less time on another to compensate. As long as he’s given enough time to do all his work, it shouldn’t be a problem.”

    Nice IANAE, you pay respect to David Boundy, and then flount the very concept that he states as a Key problem. WAKE UP from your “ideal examiner” world.

    When comments are coming so fast – true thoughts can slip out. IANAE, your bias is painfully obvious.

  71. 118

    Nice IANAE – you pay respect to David Boundy, then flount the very concept he states is a key problem.

    I agree with him (and you) that it’s a problem. I disagree with you both that the only solution is to have some kind of floating time allotment that is determined case-by-case for every application.

    If each examiner is given an amount of time per count that roughly corresponds to the average amount of time he (not the PTO as a whole) reasonably spends per count, that’s already a big improvement. Isn’t it?

  72. 117

    “The examiner can still spend more time on that application and less time on another to compensate. As long as he’s given enough time to do all his work, it shouldn’t be a problem.”

    Nice IANAE, you pay respect to David Boundy, and then flount the very concept that he states as a Key problem. WAKE UP from your “ideal examiner” world.

    fast and furious these comments are – much they disclose, they do.

  73. 116

    CLEARLY WRONG

    Wow. You really are AI. You both love citing statutes until someone points out that your position is contrary to their plain language. I might question your law license, if I were so petty.

    Is your memory going IANAE, or do you just naturally have to fight everything I say?

    Probably both. They’re the only logical explanations for why anyone would disagree with you ever. Well, that and I’m a patent examiner. Feel free to mix and match.

    An examination means a complete examination for the purposes of a patent.

    Once you know for sure that the application is not entitled to issue as a patent, how much more complete can your examination possibly get? For the purposes of a patent, the application is defective. Period.

    To be clear, I am all for complete examination of the application, compact prosecution, well-reasoned rejections, and all that. It’s just not at all founded in 35 USC 131.

  74. 115

    “The examiner can still spend more time on that application and less time on another to compensate. As long as he’s given enough time to do all his work, it shouldn’t be a problem.”

    Nice IANAE – you pay respect to David Boundy, then flount the very concept he states is a key problem.

    fast and furious these comments be – disclosing much they are.

  75. 114

    From 01:40 PM: “To follow the letter of the law, the PTO only really needs to examine until it finds one bad claim or other fatal defect.”

    CLEARLY WRONG – once again, IANAE, you fail to actually read my post – the Office must examine the ENTIRE application – not merely stopping at the first hint of non-patentability (oh, and 6 – this is not discretion – this is “35 USC, shall” law). Really IANAE, do you feel the need to incite 6? Really?

    From 01:42 PM: “No, he’s right. It was completely appropriate for him to raise the issue in this context, and it’s definitely a part of the solution. When have you ever known me to defend the count system?”

    How about when I rightly invoked the EXACT same argument for the same causal connection and you throw a conniption? Is your memory going IANAE, or do you just naturally have to fight everything I say?

    From 01:51 – “an examination limited to…” Jules, that is a pedantic and worthless point you try to squeeze in. An examination means a complete examination for the purposes of a patent. THERE IS NO PROVISION FOR LIMITED EXAMINATION. Not only do dependent claims fall into the application, but as claims they set the metes and bounds of the invention – C’mon, man – this is basics – your ridiculous parsing of the law is simply unfounded. Controlling PTO behavior in such a manner is a sham and artifice. Seriously now, would you advance such arguments if your law license hung in the balance (do you have a law license – and you wonder why I think that you are an examiner…)?

  76. 112

    AI(NAL) check out 102 and 103 too. ooook ooook lancelot link!

    Posted by: an rc cola and a moonpie

    AI/NAL, this is one of your older sockpuppets. Maybe time to retire it?

  77. 111

    6: And mooney, I told you guys who NWPA was, I cited an article that even showed a picture of him. He isn’t JD.

    I must have missed that, 6. Show me again. Otherwise, I’ll just assume it’s JD. Ooops, I mean, NAL.

  78. 110

    Moonie’sMom I completely agree that Malcolm is a baboon.

    Another sockpuppet! NAL, are you that desperate?

  79. 109

    NWPA(NAL)Sorry, MM, I only post on here as NWPA. You can ask Dennis.

    Nice try, NAL, you silly baboon!

  80. 108

    JD(NAL) Assume away. Just remember what the stooges say about that.

    What does NAL say about that, NWPA?

  81. 107

    “I am an ignorant pig that is trying to make money off of this problem and I am ashamed of myself.”

    We know you are NWPA :( And mooney, I told you guys who NWPA was, I cited an article that even showed a picture of him. He isn’t JD.

  82. 106

    What are you talking about mooney.

    JD, you really have to stop with the sockpuppetry. Your almost as bad as NAL now.

  83. 105

    The wheels are a’ spinnin’. Time to get back to work. I’m curious what your response will be Noise, but don’t feel obliged to respond. With Kappos at the helm, such rules are unlikely to be advanced anyway.

  84. 103

    “Examination is the search.”

    Examination is determining whether the applicant is entitled to a patent. 35 USC 131, quoted above.

  85. 101

    “And if they do accept the cash for an application including many claims, the examiner is not credited with more time to examine these extra paid for claims.”

    The examiner can still spend more time on that application and less time on another to compensate. As long as he’s given enough time to do all his work, it shouldn’t be a problem.

    Now, if this poor examiner has lots of applications that take more time than average, because he’s in one of those art units or something, then the system starts to break down.

    There’s nothing wrong with flat rate billing in principle (fees or counts), as long as you get the averages right. Heck, even some firms do it for some clients, and they bla bla private bla free market bla bla.

  86. 98

    And if they do accept the cash for an application including many claims, the examiner is not credited with more time to examine these extra paid for claims. Scam!

  87. 97

    “They never examined the unelected claims!”

    Sure they did. That’s how they knew you had to pick one set or the other.

    Unless of course you got one of those “species A is Figure 2, species B is Figure 3” restrictions.

    Oook.

  88. 96

    There are many here throwing around fee increases when currently the pto accepts cash for claims and refuses to examine them! Stop it with the fee increases!

  89. 94

    “Why does the pto keep fees for claims restricted out”

    Once the claims are presented, they have to be examined. You can’t recoup the time by un-examining those claims if they’re later canceled or withdrawn.

    You should be thrilled they don’t charge twice when you cancel extra claims and add completely different extra claims that require a completely fresh examination.

  90. 93

    Why does the pto keep fees for claims restricted out and then filed in a divisional application (with possibly more fees!)? Scam!

  91. 92

    Noise if you read those sections carefully you’ll notice that the director is under no obligation to examine all claims, or, in fact, any claims. There is nowhere (at least in your cited sections) stating that the examination shall entail looking over all claims and ensuring they comply with 101 etc. Maybe there is somewhere else, but I don’t recall seeing it. It is likely the Director’s sole discretion.

  92. 91

    Noise if you read those sections carefully you’ll notice that the director is under no obligation to examine all claims, or, in fact, any claims. There is nowhere (at least in your cited sections) stating that the examination shall entail looking over all claims and ensuring they comply with 101 etc. Maybe there is somewhere else, but I don’t recall seeing it. It is likely the Director’s sole discretion.

  93. 90

    If the PTO does not substantially examine claims (beyond the one hour for a “restriction”), then the PTO should not charge for examination of those claims! Dammit

  94. 89

    “I’m going to simply assume as much from now on”

    Assume away. Just remember what the stooges say about that.

  95. 88

    Noise, the issue of limiting the number of filed claims conflicting with the language of 112 was directly from the court’s decision. However, if the applicant “concludes with one or more claims,” but the Director causes “an examination” limited to the independent claims, it does not appear to conflict with 112 (at least not as directly).

    You’re right, the law doesn’t say anything about the number of claims to be examined or of what type. 35 USC 131 only says “an examination … of the application and the alleged new invention”. Do the independent claims not satisfy “the alleged new invention”? They do cover all the dependent claims with their breadth. I can understand if the dependent claims fall into the category of “the application” but the law doesn’t say anything about “an examination” not being limited to an inspection under 101/112 not 102/103, or does it?

    You ask where I’m attempting to go. I’m going in the direction of the PTO cleaning its side of the street while not conrolling applicant behavior. As far as I can tell, such policy falls into the category of controlling PTO behavior and not applicant behavior.

  96. 87

    “Only stooges resort to attacks on other’s families.”

    What about attacks on dead presidents?

    Anyway, whoever it was is not a stooge – I completely agree that Malcolm is a baboon.

  97. 86

    >>You’re such a silly baboon, NWPA(JD).

    Sorry, MM, I only post on here as NWPA. You can ask Dennis. You on the other hand admit to using other names.

  98. 85

    Dennis, you may want to check out a fairly recent paper by Jonathan Masur. I forget the name, but the thesis is that the high cost of acquiring a patent (including both PTO and legal fees) serves to filter out less worthy inventions; the applicants who will be deterred by the roughly $20k price tag are those whose inventions have an expected value of less than $20k. This line of reasoning could be applied specifically to issue and maintenance fees in particular because the applicant has a better idea of the value of the invention near the end of examination or after than early in examination.

  99. 84

    NAL: ” Careful, Mr. Boundy, IANAE might assail you for dragging this pet into the picture.”

    No, he’s right. It was completely appropriate for him to raise the issue in this context, and it’s definitely a part of the solution.

    When have you ever known me to defend the count system?

  100. 83

    >>Figure out a way to increase the retention >>rate of the good examiners

    Move the PTO.

  101. 82

    NAL: “35 U.S.C. 131 Examination of application.
    The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
    Note that these do NOT say “an examination of SOME of the claims”, or “an examination of ONLY the independent claims”, or any other such nonsense – the COMPLETE application including ALL of the claims AND the specification are to be examined.”

    It doesn’t say “some of the claims”, but it also doesn’t say “all of the claims”. It says an examination is to be made “of the application”.

    To follow the letter of the law, the PTO only really needs to examine until it finds one bad claim or other fatal defect. You know, the way it examines appeal briefs. It can then be satisfied that the applicant is not entitled to a patent, and its duty under 35 USC 131 is complete.

    The only reason to ever examine claim 2 once claim 1 is found wanting is for compact prosecution. A noble goal to be sure, but one not required by 35 USC 131.

    I await your reply about my idealism and how I always jump to the defense of the PTO.

  102. 80

    Review the work of the examiners with the highest allowance rates in each group and also those with the lowest allowance rates.

  103. 79

    “The big breakdown in the system is the examination count system, that gives examiners a flat rate of counts for all applications, simple or complex.”

    AMEN.

    See – I told you that certain individuals have an immediate cache. Careful, Mr. Boundy, IANAE might assail you for dragging this pet into the picture.

  104. 78

    Jules,

    Your “Such policy wouldn’t conflict with 112 because applicants are not being forced to
    limit the number of claims” is simply gratuitous nonsense.

    for starters, lets try:

    35 U.S.C. 2 (a)(1) …shall be responsible for the granting and issuing of patents…

    35 U.S.C. 112 Specification.
    …The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

    and

    35 U.S.C. 131 Examination of application.
    The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

    Note that these do NOT say “an examination of SOME of the claims”, or “an examination of ONLY the independent claims”, or any other such nonsense – the COMPLETE application including ALL of the claims AND the specification are to be examined.

    I fail to see the point that you are trying to make with this line of thought. This is pretty basic stuff. Where are you attempting to go?

  105. 76

    Argument–

    Remember the Callaway decision?

    I don’t see how the PTO could justify wasting resources on 102/103 dependent examination.

  106. 74

    I hear only 10% of people actual are inventors.

    Posted by: Night Writer Patent Attorney

    You’re such a silly baboon, NWPA(JD).

  107. 73

    The solution is truly simple. The PTO should be a neutral broker that charges its brokerage transaction costs (like Cantor Fitzgerald), no more, no less. The PTO should push the fees through to examiners in the form of examining time, so examiners get a fair shake for examining complex applications.

    Then basic economics pushes everything to exactly where it belongs.

    The basic law of economics that the PTO just refuses to accept: If fees are set at cost recovery and calibrated to the characteristics that create PTO costs for examination (as opposed to the PTO’s internal costs for correcting examination error), applicants do what is efficient, no more no less. If the fees are right, then applicants compensate the Office exactly enough, the Office hires the right number of people, etc. Almost all applicants (at least all the ones I know) are acutely rational economic actors: they don’t do anything that isn’t economically efficient (at least not in large enough numbers to matter).

    The big breakdown in the system is the examination count system, that gives examiners a flat rate of counts for all applications, simple or complex. The only reason that the PTO thinks that applicants do stuff that seems inefficient for the PTO is because the PTO’s internal accounting metrics are goofed up. If complex applications generate the same number of internal accounting “points” as simple ones, then the PTO thinks that they’re inefficient or burdensome — but that’s an artifact of a goofed up internal performance metric, not anything applicants are doing.

  108. 72

    As Malcolm is the ultimate authority on sockpuppets and l.i.e.s., well… you all know.

    JD, you really need to stop this. It’s getting boring.

  109. 71

    JD Try again, Malcolm. It was probably your old nemesis CaveMan.

    I think it was you. In fact, I’m going to simply assume as much from now on, you know, just as NAL/NWPA do all the time.

    Let me know if you have a problem with that.

  110. 70

    Question to examiners:

    Does the PTO REALLY “examine” dependent claims for 102 and 103?

  111. 69

    “New sockpuppet, reciting the same l.i.e.s.”

    As Malcolm is the ultimate authority on sockpuppets and l.i.e.s., well… you all know.

  112. 68

    “Jules – evades the mandates of patent law.”

    Which mandate? Such policy wouldn’t conflict with 112 because applicants are not being forced to limit the number of claims (note: do not ask applicant to specify which claims to examine). What if all independent claims are examined – but only a limited number of dependent claims, regardless of how many claims are filed?

  113. 67

    “You really need to grow up, JD.”

    Try again, Malcolm. It was probably your old nemesis CaveMan.

    I’m a little disappointed you would think that somebody who resorts to “…and your momma” would be me. Only stooges resort to attacks on other’s families. The stooges are well known on this site.

    BTW, this whole topic is silly.

  114. 66

    LMAO. A symposium on patent reform with Lemley and Dudas? LOLOLOLOLOLOLOLOLOLOLOL.

    What a complete and utter joke.

  115. 65

    “Don’t get sucked into IANAE’s “The problem is NEVER with the office” mentality. It’s not healthy.”

    Fixed your statement for you.

  116. 64

    Even your “Chem Bio” friends agree that you are a baboon – and, regretfully, your mom too.

    NudgeThis | Feb 24, 2010 at 10:47 AM

    New sockpuppet, reciting the same l.i.e.s.

    You really need to grow up, JD.

  117. 63

    IANAE,

    Why the misdirection? relative ease or difficulty of PTA determination? You stated that the Office can handle more than one thing – internal improvements and making rules affecting the behavior of applicants. Let’s see the Office actually able to handle the one thing that they are supposed to do – m’K?

    Why does it rankle you that much when the Office is proven wrong? You jump to the defense, even when the act is proven wrong.

    Or maybe you do not agree that the Office was wrong in the PTA case? Your ardency for “protecting the Office” NO MATTER WHAT is beyond the pale. Your “ideal examiner” trust factor is unfathomable. Do you really think the Office controlling applicant behavior to their whims is a good idea? Really?

  118. 61

    Jules – evades the mandates of patent law.

    What’s the point of limited examination? Applicants have the right to as many claims as they want (avoiding Prolix. of course). What right does the government have to set such an arbitrary limit, when Law has already spoken on the subject?

    Just another example of the disrespect the Office has for Law.

  119. 60

    “Let them. I hear over 90% of people who use the system don’t want patents anyway.”

    Nice try Mooney, the other 90% don’t care if they get a patent “tomorrow” and may actually prefer to wait a few years before examination begins. But an “oook, oook” baboon like yourself wouldn’t appreciate that nuance. Even your “Chem Bio” friends agree that you are a baboon – and, regretfully, your mom too.

    I say regretfully, because she is actually a fine lady (ask anyone). Its hard to imagine how she gave birth to an unholy baboon like you.

  120. 59

    They cannot even get PTA right, and you want to give them more power?

    Do you think calculating PTA is easier or harder than examining applications? Because we let them do that too. Maybe we shouldn’t.

  121. 58

    There was a very simple policy that was proposed before the rules package got out of hand. That was that the Office would examine 10 claims on the merits of 102/103 and all other statutes, while the remaining claims would only be examined for compliance with 101/112, etc, but not with respect to art. What did you think about that policy Noise?

  122. 57

    “USPTO Authority: To what extent should the PTO be given authority to use fees and other mechanisms to intentionally shift applicant behavior.”

    An answer given above to a different question also applies here: “How about Zero. Get your own house in order before you try to fix applicants.”

    The USPTO was defeated in their illegal power grab – do we REALLY want to turn around now and hand them power? Their disdain for following the rules is evident in their manipulation of facts and evasion of presidential directives (Executive Order 12866 anyone? – OMB shutdown of Appeal rules anyone? – maybe IANAE slept through those events). They have proven that they should not be trusted (sorry IANAE – it’s not just some silly slight I am reacting to – just the actuality of real life – you still need to wake up from your “ideal examiner” slumber). They cannot even get PTA right, and you want to give them more power?

    Sheer insanity.

  123. 56

    “It was a misguided and heavy-handed way to try to get people to only file one application (or a few) per invention. If you really had different inventions with the same spec, you could still get an unlimited number of divisionals.”

    Not completley true. The rules only allowed suggesting a restriction requirement and there was no such thing as a voluntary divsional.

  124. 55

    The difficulty here is that the Courts are punishing applicants for “doing it right,” and the PTO cannot do anything that can sufficiently adjust for the Judicially created counter incentives that are the collective source of the problems.

  125. 54

    I echo all of the comments relating to examination quality!

    The USPTO fees should all be FEES-FOR-SERVICE, and what exactly constitutes “service” should exclude demonstrably unlawful and facially incorrect actions by the PTO.

    A “good” patent should be loosely defined as one that, if re-examined at a later date using only the art available at the time of initial examination, would emerge from re-exam in a form identical to its form after initial exam.

    Prior art discovered after initial exam and issuance should be the only thing that affects the scope and validity of the patent.

    IC should not result in un-enforceability. If the conduct affected the scope or validity by some sort of intentional or negligent misrepresentation relating to prior art, any such effect would be reflected in a diminution of scope or validity during a re-exam that included the said prior art. The penalty for a finding of IC should take some form other than unenforceability–for instance, a fine or future sanctions on an applicant, or a fine, suspension from practice, disbarment, reprimand, etc. on a practitioner.

    The only way this is achievable is if initial examination quality is first-rate.

    Why an essentially flat fee structure for examination? Why not have applicants pay for the actual examination costs? Examination time relating to OA’s that were demonstrably unlawful or facially incorrect would not be included, and any such OA would not count as a real OA.

    This may account for increased examination costs incurred by “poor quality” applications.

    And by the way, if the app is so poor, why not immediately issue a 112 rejection? The only really “poor quality” apps are those where scope and meaning of claim terms and limitations are difficult to determine. After that initial step, the rest should be easy and menu-driven. And if the meaning of terms and limitations are difficult to determine, that will be reflected in actual examination costs.

    If they turn out to be intractable, then just issue a 112.

    Finally, any issue fee should be limited to what is required to recover actual costs of formatting, printing, etc.. It should NOT be used in an attempt to affect applicant behavior.

    Not all claims pending issuance can effectively have a value assigned to them at that time. Some, yes–but not all. And even for those that can, that value can change over the life of the patent–the easiest example of this is an NPE.

    Not judging NPE’s here, asking the applicant to make an economic decision at this point could very well prove to be economically inefficient. Yes, if the applicant chooses to not pay the issue fee, the disclosure becomes public domain–but, the whole point of putting property into private hands is that, economically speaking, that is the best place for it. Why? Because it maximizes the value of that property, and thereby maximizes resulting wealth generation.

    Economically speaking, the US Gov’t, as a matter of public policy, should be doing all they can to ensure that allowable claims are issued to the applicant/assignee.

    For similar reasons, so-called “maintenance fees” should be similarly limited, and likely abolished.

    The USPTO fees should all be FEES-FOR-SERVICE, and what exactly constitutes “service” should exclude demonstrably unlawful and facially incorrect actions by the PTO.

  126. 52

    >>I hear over 90% of people who use the system >>don’t want patents anyway.

    I hear only 10% of people actual are inventors.

  127. 51

    can’t wait to talk about how to destroy a system

    Let them. I hear over 90% of people who use the system don’t want patents anyway.

  128. 50

    The speaker list, with the exception of Wegner and Duffy, resembles a “who’s who” of people, mostly academics, who apparently can’t wait to talk about how to destroy a system that they know very little about from any perspective. And one who may know something about the system and almost did destroy it.

  129. 49

    INANE (Mooney)

    It’s tough to spot subtle nuances sometimes.

    Like all that stuff I said about pro se inventors. I’m glad you caught that. I don’t know what I was thinking.

    Oook.

  130. 48

    “People who want patents.”

    INANE (Mooney) your profound ignorance is showing yet again. Generally speaking “people” aren’t the ones paying for the filing of patents.

    I’m guessing something less than 10 percent of the applications are from pro se inventors that “want a patent” tomorrow.

    Most applications are paid for by corporations who have much more sophisticated filing practices and agendas.

    But I’m sure that is much too much of a subtle nuance for you to grab.

  131. 47

    Who ever really confirmed that a backlog is a problem.

    People who want patents. But they’re probably not a big part of the PTO’s target demographic.

  132. 46

    Even a married couple that both are examiners can barely make ends meet in Alexandria. Move to Richmond (for example) and the examiners would be able to afford nice houses and a good middle class life and would want to make a career out of the PTO.

    Goodness. This is but one example of how the PTO has gotten something terribly wrong. The only simple example is give examiners more time when they first get an application.

  133. 45

    Who ever really confirmed that a backlog is a problem. If anything it provides additional time for the dust to settle on a newly filed application to allow more clarity on whether the application is legitimate. If the application becomes abandoned, presto, the PTO has collected an application fee and the work stops. Even if a search and a first action has issued, the applicant may consider that a victory in the sense that addition resources will not be directed to what they perceive may be an unfruitful area.

    “Should reforms focused on applicant-behavior lean on rules and requirements or rather employ a softer incentive approach? These “softer incentives” could be in the form of Sunsteinian Nudges or more onerous or strongly beneficial incentives.

    If reform is about a bunch of government people who think they are “elite” and know better than anyone else (which flies in the face of the spirit of American inventive genius) and who think that their job is to “nudge” people in a particular direction (that primarily benefits them and their cronies)…

    then how about no reform at all.

  134. 44

    Looking outside the Office only creates a distraction from what the Office should be focusing on.

    You think it’s a distraction to focus on the source of their entire workload?

    All the PTO ever does is interact with applicants and do background prep work for interacting with applicants. To ignore the PTO’s relationship with applicants is to miss the entire point.

    Nobody is saying the PTO has to decide between managing its clients and managing its internal processes. Even within the narrow topic of Dennis’ talk, there’s room for both. I think you’re once again latching onto a statement that vaguely implies the profession has done something wrong, and vigorously defending yourself against an imagined slight.

    Don’t get sucked into NWPA’s “The problem is with the office” mentality. It’s not healthy.

  135. 43

    >>yet we both end up at where the control needs >>to be placed in within the Office.

    I definately agree with this. The office has everything they need to do their job.

    The problem is with the office. The PTO needs to just get the basics right. For example, I’ve said it before, but seriously, the PTO needs to move. An engineering company that set up shop right in the middle of one of the most expensive areas in the world and then pays their employees engineering wages would fail. And the PTO has failed to be able to retain employees. Could it be that the problem is as simple as you are located in the wrong place? Sheesh!!!!!!!!!!

  136. 42

    See, I just can’t tell when I cease comparing and contrasting (good), and begin to do what you call conflating (bad). Would you care to elucidate, because I already looked up conflate in the dictionary and it hasn’t helped.

    And all this time I thought “conflating” was just a eupemism for “copulation.” Now I’m really confused.

  137. 41

    “I am not saying to control applicants, but to train the examiners.”

    And I am agreeing that that is where the Office needs to focus – on the examiner and on what they can control. Dennis’es pont, on the other hand, is geared to controlling applicant behavior. Dennis’es pursuit is simply in the wrong direction. You start out by seemingly agreeing with Dennis and that there is some fear that must be controlled by controlling applicants – yet we both end up at where the control needs to be placed in within the Office.

    Looking outside the Office only creates a distraction from what the Office should be focusing on.

  138. 40

    What I am sure of is that people that Lemley and Dudas will only HURT the process of change. Neither one of them should have any voice, but to say I am an ignorant pig that is trying to make money off of this problem and I am ashamed of myself.

  139. 39

    All rejections, while most may use prior art, are grounded in law. Once again, your thought process reveals the true driver of the Office’s misery and where they need to spend their attention – examination quality.

    If examiner’s do not understand law enough to deal with a lawyer’s response, the problem is clearly not in the applicant’s backyard and the Office should not be spending time, money and effort trying to control applicants.

    There’s some truth in that. Still, the PTO deals with a bizarre and otherworldly way of understanding claim terms, and lawyers deal with a bizarre and otherworldly set of legal rules. The communications problems go both ways.

    Even when I have a complex factual or legal argument to make, I try to explain it to the examiner like he’s twelve. I don’t skip steps in the reasoning as lawyers (especially those with technical backgrounds) often do. I keep my arguments as short and to the point as possible. I cite directly to relevant parts of the claim and prior art. I avoid citing caselaw at all costs. I have been known to literally draw the examiner a picture.

    I don’t do it out of condescension or disdain, but out of respect for the constraints the PTO imposes on the examiner. Examiners aren’t given the time to read between the lines or parse twelve-page arguments, and they certainly don’t have the patience to glean the argument you meant to present but didn’t quite write down. They’d rather find what you actually wrote non-persuasive. Basically, if you approach the process in the mindset of a lawyer, you’re starting at a disadvantage.

    If examiners drafted office actions like the applicant was twelve, we’d have better communication all around, and less back-and-forth before allowance.

  140. 38

    >>the Office should not be spending time, money >>and effort trying to control applicants.

    I am not saying to control applicants, but to train the examiners. Simple. Concrete example: make a database of the ridiculous sound bites attorneys include in office actions and provide a simple explanation to the examiners of what they mean and the relevance to the outstanding rejection. 90% would be when you see “yada yada yady” ignore it.

  141. 37

    In most cases, no matter what procedures you followed, you simply were not going to be given additional RCEs or continuations.

    It was a misguided and heavy-handed way to try to get people to only file one application (or a few) per invention. If you really had different inventions with the same spec, you could still get an unlimited number of divisionals.

    The real problem is that it’s common practice to use RCEs and continuations as prosecution tools, to drag out the prosecution of a single application, and not to file two more actually different applications (e.g. because you want one set of claims to issue already). The final action/RCE practice is a completely defective attempt at a “one amendment only ” rule – it lets you buy more amendments. Examiners are quick to make final rejections, applicants (and their agents, who don’t bear the cost) don’t feel bad filing RCEs, and nobody is in the European mindset that the application/rejection has to be right the first time around.

    Yes, the continuation/RCE limits were coercive, but I’ll wager the real panic among agents was “but I need that many just to get a single set of claims to allowance!”

    I wonder if increasing the fee for second and subsequent RCEs would have any effect. Probably not, since the agents still wouldn’t pay it.

  142. 35

    NWPA,

    “The examiners are fearful of their SPEs, petitions, and appeals. What I see is examiners not knowing how to react to legal arguments.”

    There is a HUGE difference between being fearful of SPE’s and the internal workings of the USPTO (POPA absence noted for dealing with this fear anyone?), and the inability to deal with legal arguments. Legal arguments are what we do. We deal with the law on a daily basis. All rejections, while most may use prior art, are grounded in law. Once again, your thought process reveals the true driver of the Office’s misery and where they need to spend their attention – examination quality.

    If examiner’s do not understand law enough to deal with a lawyer’s response, the problem is clearly not in the applicant’s backyard and the Office should not be spending time, money and effort trying to control applicants. Anyone figure out how much the claims and continuations fiasco cost us yet?

  143. 34

    The hard-rule / soft-rule distinction is not always clear. In some situations strong incentives can have the same coercive impact as an absolute rule. (The PTO’s recent attempt to limit claim and continuation filings has been described as such.)”

    Described as such by whom? The claims portion could be described as “strong incentives” perhaps, but I don’t see how the continuations/RCE portions could fairly be described as anything other than coercive. In most cases, no matter what procedures you followed, you simply were not going to be given additional RCEs or continuations.

  144. 33

    Or the examiners don’t know how to react to aggressive lawyers. They need training and help.

    So do the examiners.

  145. 32

    Hobbes, I agree that there is no great interest on this blog in EPO issues. But there’s a deal more than I can find on any other blog. This one’s more fun, and more educational.

    As others have pointed out, nobody is forced to read what I post, much less to reply to it. But it’s nice when they do. Thank you.

    Noise, it’s just that you have a finer feel than I do, of when I cross the border into the naughty area, of conflation. See, I just can’t tell when I cease comparing and contrasting (good), and begin to do what you call conflating (bad). Would you care to elucidate, because I already looked up conflate in the dictionary and it hasn’t helped.

  146. 31

    >> I just don’t see it.

    I see it all the time. The examiners are fearful of their SPEs, petitions, and appeals. What I see is examiners not knowing how to react to legal arguments. Or the examiners don’t know how to react to aggressive lawyers. They need training and help.

  147. 30

    NWPA,

    Really? You think examiners are confused and scared about lawyers? I will have to take your word that this happens in your world – I just don’t see it.

  148. 29

    And MaxDrei,

    Further to the EPO, I have on numerous times lauded the professionalism of the examiners there. You really shouldn’t have such a thin skin.

    Having a thin skin AND constantly conflating US and EP patent discussions makes for lots of “assailing”. You have the power to lessen this, if you heed the lessons.

  149. 28

    >>Crap applications simply are easier to kill

    This is one reason the examiners need help. The lawyers are tricky and can make life hard for examiners. The PTO needs to help the examiners more to overcome the lawyer nonsense factor that scares and confuses the examiners.

  150. 27

    Jules,

    You yourself have worked it out, but do not see it.

    Take your own hint – quality has little to do with the amount of money spent on the application. This dissassociation between quality and money is simply not the only dissacociation possible. And while what you say may be true, what I say also may be true, even though you flatly deny it.

    You say “not true” – I say possibly true as to quality and examination time. I think neither will be a black and white, all or nothing, in all cases. However – just because a low quality application may be backed by big bucks and continue to pursue examination, does not by any stretch make it a difficult examination.

    Crap applications simply are easier to kill. That’s why they are crap. The Office has all the tools it needs in the Law to do its job – it just must execute.

    If an applicant pursues a crap application but does not overcome the examiner’s initial position, follow on examination time is minimal.

    If the examiner’s initial position is crap – then we have a different story, now don’t we?

    You see, it comes down to quality of examination as the true driver – NOT quality of application.

    As was posted above, the Office needs to tend to its own issues before atempting to change the applicants. A wide open gate – which is desired (unless you are a Duellist) – necessarily means that a certain number of applications will be low quality. It is better that the Office focus on its capabilities than wasting time and energy trying to change the applicants – how much money, time and energy went to the ILLEGAL power grab claims and continuations rules fiasco?

  151. 26

    That’s right Jules. Having grown up and lived my entire life in DC, having seen millions and millions of dollars thrown at the school system, at the poor etc. over the last 40 years, I know without a doubt that solutions to the underlying problems usually involve motivating people beyond dollars and cents. And my solutions listed above would undoubtedly fix the PTO!

  152. 25

    … are you saying absolutely that nobody has ever complained on this blog that the cost of acquiring a portfolio of issued patents in Europe is more than it ought to be?

    I would be hard pressed to prove such an assertion, so no, I’m not saying anything like that. Frankly, I don’t think that there’s a tremendous amount of interest in the EPO system at this site. My clients use the EPO extensively; I collaborate with some fine (as far as I can tell) European counsel to obtain European patent protection for matters that originated as US applications or PCT applications. But I’m simply not qualified to criticize the EPC or the EPO’s practices. So I don’t. But you shouldn’t take personally my lack of enthusiasm for all things EPO.

  153. 23

    Noise: “It is often the poor quality patent applications that are easiest to kill (low examination effort), and conversely, the “high quality” applications with intricate inventions and lots of cited art that take much [longer]”

    This is not true. Low quality applications backed with sufficient funding can be kept alive, thereby forcing the examiner to spend more and more time on the application. High quality applications allow the examiner to see clearly the evolution of the art and the advances that the applications bring, which makes it easier to examine. Of course it all depends on your definition of quality – maybe you want to work that out?

  154. 22

    NWPA and RC,

    I echo your comments. With both Lemley and Dudas at this seminar, we go from the sublime to the ridiculous.

  155. 21

    MaxDrei,

    I believe that you are over-reaching with your “Commentators on this blog are fond of asserting that making any filing at the EPO, for any invention, is a waste of money.”

    I know that I for one have never said, nor alluded to this.

    You also over-reach with “If the EPO Rules are a crime, who’s the victim?” No one said the EPO Rules are a crime. EPO Rules are great for the EPO. Wonderful even ol chap.

    Perhaps you are (once again) getting caught up in conflation between the EP and the US. I thought that we had an agreement that I would not point this out if you did not do the conflation. Above I was strictly talking about the US system, yet you want to conflate my comments with the EP system. My advise: Leave it alone and stop trying to push your eyeglass prescription onto everyone that needs corrective lenses. In essence, above you announce the difference (which I lauded), yet you kept going in your habit of conflation. Announcing the difference is not enough. You need to stop conflating.

  156. 20

    Hobbes, three things:

    1. I indulge in a spot of hyperbole, from time to time. It’s a weakness of mine.

    2. Could it be that I’m a bit more sensitive than you, whenever any criticism of the EPO is uttered, with the consequence that such criticism is likely to persist longer in my memory than in yours?

    3. there’s a phenomenon, not unknown to legal types, which goes by the name of “selective memory”

    which might illuminate our difference of view. Is it just a matter of degree, or are you saying absolutely that nobody has ever complained on this blog that the cost of acquiring a portfolio of issued patents in Europe is more than it ought to be?

  157. 19

    Commentators on this blog are fond of asserting that making any filing at the EPO, for any invention, is a waste of money.

    I’ve been reading the comments for a long time, and I don’t recall ever seeing such an assertion.

  158. 16

    All this complicated stuff, when the only things needed are:

    1) strict tracking of #actions/disposal
    2) classification – classification -classification
    3) make special GS-25 slots for the best, hardest working examiners to review a subset of allowances.

    PTO fixed!

  159. 15

    Noise, you wrote:

    “It even appears that perhaps “mastering the docket” is coming at a certain price for the population of applicants and the promotion of the arts – While not having such austere restrictions does bloat the docket a bit with MORE filings, let’s not lose sight of the fact that more filings is a good thing. We WANT people to use the patent system – the whole point of promote is increased sharing that comes with increased use.”

    I think I understand what you mean by “price” but what I don’t understand is where it “appears”. Commentators on this blog are fond of asserting that making any filing at the EPO, for any invention, is a waste of money. Yet there is no shortage of work at the EPO and no EPO Applicant is complaining about being cheated or short changed. Or do you know better, on that? Mostly, they whinge about it taking a long time, or the translation costs at grant being too high. it is not within the power of the EPO to make European countries accept the enforceability in their jurisdiction of patents that issue in an alien language. But it is possible for the EPO to go faster, and that’s what it’s doing, helped by its imaginative rule structure. If the EPO Rules are a crime, who’s the victim?

    So, may I ask: what is the price, and where does it appear?

  160. 14

    “The hard-rule / soft-rule distinction is not always clear. In some situations strong incentives can have the same coercive impact as an absolute rule. (The PTO’s recent attempt to limit claim and continuation filings has been described as such.)”

    Nice understatement – I like the prevailing legal view better – the claim and continuation rules were an illegal power grab.

  161. 13

    “not be inconceivable for the PTO to shift its fees for individual applications according to input quality measures with designated “high quality” applications paying a lower fee.”

    Be careful of what you wish for – the law of unintended consequences could smack you upside the head with such a set-up.

    Imagine for a moment the system works – lot’s of “high-quality” patents coming in at a low rate and not many “low quality” patents coming in at the high rate. The problem you may find is that examination effort may not correlate with your “quality” parameters. It is often the poor quality patent applications that are easiest to kill (low examination effort), and conversely, the “high quality” applications with intricate inventions and lots of cited art that take much larger than the quasi-average widget production allotment (yes IANAE – I’m dragging this in because of the causal relationship). In this scenario, we would be then scratching our heads wondering how we got into such a predicament.

  162. 12

    “This big-picture incentive award has already been created by the drafters of the Constitution …”

    AI, it appears that you can add Dennis to the list of believers.

  163. 11

    Yes MaxDrei, you would.

    BTW – very nice separation of legal doctrines.

    It even appears that perhaps “mastering the docket” is coming at a certain price for the population of applicants and the promotion of the arts – While not having such austere restrictions does bloat the docket a bit with MORE filings, let’s not lose sight of the fact that more filings is a good thing. We WANT people to use the patent system – the whole point of promote is increased sharing that comes with increased use.

  164. 9

    I wonder, is EPO carrot and stick management of Applicant behaviour compatible with English common law “due process”?

    For example, the EPC has no provision for filing anything in the nature of a continuing or continuation application. Further, Rule 137(3) allows only one shot at amendment. Any further rounds of amendment are admissible only if you can get the “consent” of the Examining Division.

    Divisionals are available, but are increasingly expensive because, on filing, you have to pay annual maintenance fees, accumulated from the filing date of the parent.

    The presence of even just one bad claim (invariably claim 1) is enough for a rejection of the entire set of claims (hence the institution of the “auxiliary request”).

    All of these items concentrate wonderfully the mind of Applicant and her long-suffering prosecution attorney. I believe that the EPO is, broadly, the master of its prosecution workload. But then I would, wouldn’t I?

  165. 8

    There are more important reason for NOT having high filing or publication fees [versus issuance and maintenance fees].
    It encourages increased public dissemination of details of technological improvements, which otherwise often do not become readily publicly available.
    It can also provide partial pre-launch defensive protection for new products against patent applications of others with 18 months of private new product development grace before publication.
    [Japan has successfully employed low filing fees as a national policy for years.]

  166. 7

    Investigating carrots versus sticks approaches to PTO improvements is certainly a good idea. Especially after the disasterous Dudas-era draconian sticks-rules attempts.
    By far the most valuable, important, and least expensive carrots would be to reward those examiners and APJ’s who can and will actually comply with the statutory requirement of “special dispath” for reexaminations.

    But carrots alone won’t work for a very small percentage of well-heeled systems abusers, such as the “submarine applications admirals,” who can take advantage of serious PTO valid docketing and examiner supervision deficiencies, and failures to use prosecution laches or any other controls, to keep on filing hundreds of new claims for 10 or more years of actual pendancy.

  167. 6

    All good observations, Dennis. I particularly like the point that both the PTO and applicants deserve some part of the responsibility for the backlog.

    But the problem is not completely symmetrical. Whereas the PTO can act unilaterally, the problem applicants are only a subset of all applicants. Charging different fees for different applications is one way to sort these groups. But it doesn’t strike me as the most equitable.

    Better would be for the PTO to identify whether there are any measurable characteristics of applications that take longer to Examine, and then make clear rules that require correction of those deficiencies. Maybe the penalty should be for applications that fail to comply with such rules go to the end of the line — delaying their issuance. This might have the same effect on incentives as charging fees for violations, but wouldn’t hurt the startups or independent inventors as hard.

  168. 5

    To what extent should PTO reforms focus on modifying patent applicant behavior?

    How about Zero. Get your own house in order before you try to fix applicants.

  169. 4

    Sorry, but a symposium with Lemley is probably not worth going to. let’s see someone with no experience is certainly someone I want to lead the charge to change.

  170. 2

    Personally, I think the PTO should jack the filing fees up to cover about 80% of examination costs. Sounds like Kappos wants to go in the other direction:
    link to uspto.gov

    What I would like to see is a system where the applicant pays a low filing fee to establish a filing date and pay for publication, and then later requests and pays for examination (the EPO is like that isn’t it?) I.e., up to a certain time period, the applicant requests examination, and at that point they go into the examination queue which is based upon oldest filing dates get examined first.

  171. 1

    “On the flip-side, applicants can be blamed for filing so many applications that are difficult to examine.”

    Maybe applicants can be blamed for filing defective applications or for poorly prosecuting them, but they can’t be blamed for filing too many applications.

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