Dir. Kappos Brings in New Chief Judge: James D. Smith

The USPTO has announced a new Chief Administrative Patent Judge to lead the Board of Patent Appeals and Interferences (BPAI). James Donald Smith will be leaving his role as Chief IP Counsel for Baxter International to take on the difficult task of shoring up the important section of the Office. Smith is expected to begin serving as Chief Judge on May 8, 2011 and is replacing Michael Fleming who stepped down in 2010 and Jay Moore who has been the Acting Chief Judge for the past several months.

The BPAI is struggling with a caseload that has grown dramatically over the past several years and a backlog of over 20,000 pending appeals. In addition a large and growing number of hotly contested inter partes reexaminations are reaching the Board and creating a heavy workload. These proceedings increasingly involve high profile patents involved in parallel infringement litigation. In many cases, courts stay litigation pending outcome of the reexamination and are looking to the USPTO for accurate and timely conclusions. The Board’s profile and its workload would likely both increase under the patent reform measures now pending in Congress.

Mr. Smith has a long background in patent law. He is currently the Associate General and Chief Intellectual Property Counsel of Baxter International. He previously clerked for former Federal Circuit Chief Judge Paul Michel, served in private practice as a patent attorney at Arnold White & Durkee and Dewey Ballantine (now Dewey Le Boeuf). He also spent time at Nokia (Director of IP Licensing), Lexmark (Chief IP Counsel) and Emory University School of Law (Dean of Students and Professor).

Mr. Smith has been a registered patent attorney since 1988. He graduated from Duke University (J.D.) and the University of Maryland at College Park (B.S.E.E.).

The upper management of the USPTO is now solidly in the hands of patent law professionals with extensive experience in corporate patent law and management practice. This includes Director David Kappos (20+ years at IBM); Deputy Director Theresa Stanek Rea (25 years law firm practice); BPAI Chief Judge James D. Smith (20+ years in law firm and corporate practice); and Administrator for Policy and External Affairs Albert Tramposch (years in law firm practice followed by governmental work). Two exceptions to this “rule” are the Patent Commissioner Robert Stoll and Deputy Commissioner Peggy Focarino. Both Stoll and Focarino started their patent careers as examiners and have been at the USPTO collectively for more than 60 years. Although very much a “political” position, the role of Commissioner is most often filled by individuals who have dedicated the bulk of their careers to the USPTO.

USPTO Press Release

 

82 thoughts on “Dir. Kappos Brings in New Chief Judge: James D. Smith

  1. 82

    Thanks Passing. Good to know that, since 1966, Actions from the USPTO have exhibited steps 1 through 3. I’m encouraged.

  2. 81

    “I note though that you appear to be biching and moaning about limitation matching, which, as I understand it was implemented because people didn’t like getting an explanation.”
    My comments were not about “limitation matching.” That being said, I do not consider citing two paragraphs worth of text for 5 limitations to be limitation matching no more than I consider the phrase “he lives in Bethesda” to be giving directions to my friend’s house.” The gist of my comments were towards step 4.

    “The old limitation forby limitation approach is plainly outdated.”
    No, it still is the law (i.e., the prima facie case – see also 37 CFR 1.104(c)). However, certain tech centers (ahem … 3600) were given special dispensation to ignore the law by the prior regime.

    “And thus took the power to change any laws of substance. Only to have his successor give it back.”
    How many of Dudas’ rule packages get shot down? The continuation limitation package, the appeal package, the IDS package. What am I missing?

  3. 80

    “1978”
    Graham v. John Deere came out in 1966 (i.e., “steps 1 through 3”). So please explain to me how the PTO is copying from the EPO again?

  4. 79

    So if I write that the (shall we say) Boston Bluesocks were good yesterday, in that “they” scored a goal, would that be correct only if every single team member scored a goal?

  5. 78

    I think teh point O the question maxie want the actual year, but for you to look at that year and compare it to what Passing done already shared: the year O Graham v Deere (1966).

    Unless ya somehow got a hold of Ol Mikey’s time machine, there be no way for your comment of “I say again, that your steps 1 through 3 are cadged from the EPO. Do you still deny it?” to stand.

    Do you need some coffee?

  6. 77

    And thus took the power to change any laws of substance. Only to have his successor give it back.

    Lolz 6 – in case ya hadnt heard from Tafas, that power grab be ruled illegal. Case over. Let stare decisis rule.

    Lord Kappos only saw too well the writing on the wall and choose a dignified defeat rather than a global meltdown of all federal agency rulemaking.

  7. 76

    Right with you there Ned, on the concept of “evidence”. Means one thing in English (and US) law and something else to the Asians and mainland Europeans. But EPO-PSA will run under both those operating systems.

    You write: “Regarding the EPO-PSA, the end question is whether the solution was “unexpected.” Are you asking me, or telling me? If you are asking, the answer is: No, it isn’t.

  8. 74

    “Dudas, who ignored that the USPTO doesn’t have the power to change any laws of substance”

    And thus took the power to change any laws of substance. Only to have his successor give it back.

  9. 73

    “1) Recite, word-for-word, the claim language of claim 1. After each clause, cite to a few passages in the primary reference (Optional – only if you are feeling really generous, actually include an explanation as to why these passages teach the claim language against which the passages are being cited)
    2) Assert that primary reference does not teach “X, Y, and Z” limitations.
    3) Assert that the secondary reference(s) teach “X, Y, and Z” limitations. Again cite to a few passages in the secondary reference (Optional – include actual explanation)
    4) (a) Last paragraph – assert that it would have been obvious to modify primary reference by teachings of secondary reference to include “X, Y, and Z” limitations. (4)(b) Search secondary reference to a find an “objects of the invention” section. (4)(c) Select random “object of the invention”; (4)(c) in the last sentence of the last paragraph allege that the reason to combine would be for the purpose of achieving “object of the invention.””

    You could write a really good examiner training manual I think.

    I note though that you appear to be biching and moaning about limitation matching, which, as I understand it was implemented because people didn’t like getting an explanation. I agree, limitation matching is a bad way of doing things, and it would probably be better to get an explanation. Especially with the new fangled obviousness magic wand we can wave. The old limitation forby limitation approach is plainly outdated.

  10. 72

    “I think you copied steps 1-4 from an earlier contributer”
    No. I made those up on the spot, based upon seeing them hundreds of times.

    “I say again, that your steps 1 through 3 are cadged from the EPO. Do you still deny it?”
    When did the EPO-PSA test first come into being?

    “Step 4 is gobbledygook, I agree.”
    Hey … Max agrees with me on something, time to stop posting.

  11. 71

    MAX, I think that trying to subjectively determine what a POSITA would subjectively find obvious is hardly law. It amounts to the list of horribles I previously discussed: Gestalt, etc.

    One needs, truly needs, evidence, IMHO. We can then rebut the evidence by logic, counter evidence or other objective factors such as long felt need. What a POSITA would think is obvious is as far afield from evidence as one can get.

    The TSM relied on evidence from the prior art itself. That was the beauty of the test. It was objective and fair as a test could be.

    Regarding the EPO-PSA, the end question is whether the solution was “unexpected.” Does proof of this rely on evidence from the prior art, or is it one more subjective test?

  12. 70

    Maxie, Ya got two different ideas going on and ya probably not aware of it.

    Ill chalk it up to the Blimey factor.

    Your statement of “why the USPTO is under the thumb of SCOTUS when it comes to arguing obviousness in an Office Action” has to do with the Office choosing to disregard a direction as pronounced by teh Supremes in dealing with obviousness in an Office Action. They cant – they are bound by what the Supremes say.

    Your second statement of “what there is in the jurisprudence of the Supreme Court that is preventing the USPTO from following EPO-PSA methodology accurately” indicates that the Office can go beyond what the Supremes say (as long as they still follow what the Supremes say).

    Two very different ideas.

    And in answer to your second idea (not my answer, mind you), is what Passing is trying to tell you. The Office simply dont have the authority to make up substantive rules.

    We both know that you already know this – you’ve been around ta see the Tafas case play out. Or are ya playing the “share Meds” game with Ned and Sunshine again?

  13. 69

    ping, it is true, I do not understand what there is in the jurisprudence of the Supreme Court that is preventing the USPTO from following EPO-PSA methodology accurately (instead of (as now) mangling it into the worse than useless gobbledegook we see, already copied twice into this thread, as numbered step number 4. After all, the first three steps are in line with EPO-PSA and OK.

    How much constraint do you think “predictable” and “common sense” impose on lines of arguing obviousness at the USPTO?

  14. 68

    The collective “them” includes Passing, OK ping?

    Where, exactly, must I retract, please?

    The collective “them” also include me –

    There, exactly, must youretract, your welcome!

    PS – are your hands always so clammy?

  15. 67

    Maxi,

    Ya really dont understand why the USPTO is under the thumb of SCOTUS when it comes to arguing obviousness in an Office Action?

    Really?

    No, really?

  16. 66

    Thank you Ned. The EPC puts no constraint on the EPO. The EPO made up its EPO-PSA Approach. It serves as a first filter. The national Supreme Courts of the EPC Member States then do obviousness their individual way, without any of them being troubled by the initial PSA determination at the EPO. The EPO-PSA line of argument is consistent with and compatible with KSR. Why not? After all, it is consistent with Supreme Court reasoning in UK and Germany, two countries which expressly reject EPO-PSA as THE tool for a definitive finding what is obvious (Who does the EPO think it is, they mutter, telling us how to do obviousness).

    You don’t need a statutory fix. You don’t want a statutory fix. A statutory fix is a straitjacket or a synonym, useless at best, and probably with time becoming worse than useless.

    I agree you should re-install TSM, but EPO-style TSM ie PSA. And you should take secondary indicators into account, to displace a prima facie case of obviousness, just like the EPO does (even though at the EPO it seldom succeeds).

    EPO-TSM does not do away with the PHOSITA, no. What please is your “what” that you think is irrelevant?

  17. 65

    Max, I think the reason we cannot adopt the PSA is KSR. IIRC, that case held that the determination was not limited to the problem/solution (“avowed purpose”) identified in the patent. The Supremes rejected other “common sense” rules in favor of no rules other than common sense. Its reasoning was vague and illogical, leaving the lower courts to again try to bring order to randomness.

    “Gestalt.” “Seat of the pants.” “Ad Hoc.” “Trivial.”

    And, best of all,

    “We know it when we see it.”

    We need a statutory fix. Perhaps we should enact TSM, with the objective factors such as long felt need, etc., also listed ways to rebut a prima facie TSM case of obviousness.

    Question: doesn’t TSM effectively do away with “one of ordinary skill in the art?” That seems irrelevant.

  18. 64

    Oh, Passing, I should add two things:

    I think you copied steps 1-4 from an earlier contributer. But I see you accept them.

    Step 4 is gobbledygook, I agree.

  19. 63

    Thank you Passing. I will now paste your own words:

    “The reason why the BPAI is forced to go this cook-cutter route and employ their obviousness incantations is because of the cookie-cutter route employed by most Examiner when dealing with obviousness rejections. This is the simple formula:
    1) Recite, word-for-word, the claim language of claim 1. After each clause, cite to a few passages in the primary reference (Optional – only if you are feeling really generous, actually include an explanation as to why these passages teach the claim language against which the passages are being cited)
    2) Assert that primary reference does not teach “X, Y, and Z” limitations.
    3) Assert that the secondary reference(s) teach “X, Y, and Z” limitations. Again cite to a few passages in the secondary reference (Optional – include actual explanation)
    4) (a) Last paragraph – assert that it would have been obvious to modify primary reference by teachings of secondary reference to include “X, Y, and Z” limitations. (4)(b) Search secondary reference to a find an “objects of the invention” section. (4)(c) Select random “object of the invention”; (4)(c) in the last sentence of the last paragraph allege that the reason to combine would be for the purpose of achieving “object of the invention.”

    I’ve seen hundreds of Office Actions following this exact cookie-cutter formula. The problem is that the relied-upon “object of the invention” usually has no relationship to the proposed modification. So when this is argued at the BPAI, the BPAI has to discard the Examiner’s analysis and make their way to the black cauldron to do their obviousness incantations.

    Someone who was once a real attorney should understand the difference between a conclusion based upon factual evidence and a conclusory statement. However, I rarely find that the APJs at the BPAI appreciate this difference.”

    In them, I can’t find WHY the BPAI “is forced to” and “has to” set aside the USPTO analysis. I thought the BPAI was part of the USPTO. Is one part of the USPTO making work for another part to un-do? Is there not a banging together heads role here for a new Chief USPTO Administrative Judge?

    I say again, that your steps 1 through 3 are cadged from the EPO. Do you still deny it?

  20. 62

    “Why is it then, that the USPTO is already using the first three quarters of EPO-PSA argumentation in each Office Action.”

    Because they are part of the Graham findings of fact. Graham v. John Deere Co., 383 U.S. 1 (1966). Note from the data that this case is 45 years old!!!! Well before the time of EPO-PSA.

    Really, are you that daft? Scratch that, we already knew the answer a long time ago.

    “The new Chief BPAI Judge could speed the process, that’s all.” “What, exactly, is it please, that prevents the USPTO from doing this?”
    Perhaps your reading comprehension is a little off today, so let me put this is succinctly and as clearly as I possibly can: The USPTO has ZERO power to change either the substantive law or how that law is interpreted. The Chief BPAI judge can ONLY enforce the currently laws as they are currently interpreted – there is no leeway there.

    I understand that most of your legal(??)/trolling career has been under the reign of Dudas, who ignored that the USPTO doesn’t have the power to change any laws of substance. However, you should be cognizant that Dudas was unsuccessful in all of his power-grabbing endeavors.

  21. 61

    The collective “them” includes Passing, OK ping?

    Where, exactly, must I retract, please?

  22. 60

    As usual, a mere denial suffices, eh Glass? Why is it then, that the USPTO is already using the first three quarters of EPO-PSA argumentation in each Office Action. Why not the last quarter too? Just to get the obviousness argument up and running, Graham factors included. What, exactly, is it please, that prevents the USPTO from doing this?

  23. 59

    Feel free Maxi – as long as ya realize that you need to retract just as well.

    Duh.

  24. 58

    The USPTO is no more under the thumb of SCOTUS, when it comes to arguing obviousness in an Office Action, than the EPO is under the thumb of the House of Lords in London.

    W

    T

    F

    Completely wrong.

  25. 57

    Thanks Passing, but I still don’t see your point. Here in Europe, it is the Supreme Court of each EPC Member State that says what “obvious” is, in each Member State. Not one of them has any truck with EPO-PSA. For them, the EPO is just an Agency for examining apps and granting patents.

    The USPTO is no more under the thumb of SCOTUS, when it comes to arguing obviousness in an Office Action, than the EPO is under the thumb of the House of Lords in London. As far as I can see, the USPTO is already three parts of the way there, in its journey to adopt EPO-PSA. The new Chief BPAI Judge could speed the process, that’s all. That’s my point: the USPTO can use EPO-PSA argumentation to formulate its obviousness objections, without offending the provisions of the Statute or the strictures imposed on it by SCOTUS.

    Your go now.

  26. 56

    The Hawk eliminated that feature because he didn’t like to be criticized — plain and simple.

  27. 55

    “What are you waiting for USPTO Examiners? You have nothing to lose but your pendencies.”

    Maybe they can lose their jobs? Let me give you a primer on US government. Congress makes the laws, the judiciary interprets the laws, and the administrative branch enforces the laws. The USPTO is part of the Dept. of Commerce, which is a cabinet-level agency. Ergo, the USPTO is part of the administrative branch. FYI — that includes the BPAI, which could be considered a quasi-judicial body.

    Also, as we all know from Tafas v. Dudas, the USPTO has no substantive rule making authority.

    What does this mean one from across the sea? Let me tell you. It means that the USPTO follows the laws set forth by Congress and interpreted by the Courts and that’s it. They have ZERO power to change anything substantively. In case you are wondering, changing the standard for obviousness is definitely out of the USPTO’s hands. Additionally, it is likely out of the Court’s hands, since the standard for obviousness is based upon 35 USC 103. This means you are left with Congress, who have 999,999 better things to do than worry about the application of the EPO-PSA.

    FYI – just because something is simpler makes it easier. Case in point, I can have a formula whereby all applications with 20 or more claims are allowed and all applications with 19 or less claims are rejected. Extremely simple to apply. However, simplicity in application is a poor measure of a test for obviousness.

    It is reasonable that you need a hypothetical one skilled in the art to be able to hypothetically review all the art that is available at the time of the invention. However, assuming that one skilled in the art knows the objective technical problem to be solved is both unreasonable and contrary to 35 USC 103.

  28. 54

    So, readers, we see that ping casually writes that “no one” conceeded (sic) anything, and now feels obliged to retract that statement. Ought we to conclude that ping’s “Duh” is actually directed at himself?

  29. 53

    Maxi – I was more speaking about your inclusion of me in your comment abouts concession…

    Duh.

  30. 52

    Don’t know Pete. But I do wonder what might have happened if Odom had run his draft through an EPO-PSA filter before filing it at the Patent Office. After all, he already at that stage knew all the closest prior art, so was in the best position imaginable, persuasively to set out to readers the “objective technical problem” and his inventive technical feature combination that solved it.

  31. 51

    Readers other than ping: Passing wrote “The PSA approach may be easy to apply but…..” On first reading, that struck me as a concession. On reading it again, guess what, it still does, even though ping says not. Oh well, you decide.

  32. 50

    I wonder if the Hawk saw the writing on the wall awhile back and that was the reason he eliminated the comment feature on his blog.

  33. 49

    I’m glad to read from them the concession that EPO-PSA is “easy to apply”.

    Stop making things up outa whole cloth. No one has conceeded anything.

    And stop forgetting that patent law is universal. It aint.

    And lolz at Passing and giving you the opportunity – aint within our power.

  34. 48

    lolz at wtvlfdt,

    He be quick ta pass judgment, slow ta respond ta anything I ask for that requires substance.

    If the rock look good in comparision to you, ya probably dont want ta be putting down the rock…

    …just an observation

  35. 47

    So institute harsh penalties for reversal

    I done observe this a long time ago.

    It be called:

    A C C O U N T A B I L I T Y

  36. 46

    I have just read quickly through the Odom Decision, in which the CAFC says his toolbar concept was obvious because it was “insignificant” and “trivial” and “common sense”. I wonder whether the new Chief Judge at the BPAI can help the judges at the CAFC with a methodology for exploring the obviousness issue that is more intellectually rigorous. I have in mind (of course) that the PTO actually implements EPO-PSA (instead of merely walking through the three preliminary steps you now find in most every USPTO Action, and then funking the final EPO step (because they haven’t yet been trained how to do it).

    That would get rid of the backlog and hand the CAFC a methodology that it too could adopt in future cases, with a much greater degree of intellectual satisfaction (and much less resentment in the minds of those who are told that their cherished creation was……obvious).

    Don’t be afraid to immerse yourselves. Come on in, the water’s lovely.

    If you don’t agree, don’t just throw ignorant, gratuitous and patronising throwaway remarks at me. Rather, tell me (if you can) about real cases at the EPO where EPO-PSA failed.

  37. 45

    Now now, JD you know that isn’t true. The reason why is because they don’t have to read caselawl all the time. That’s really the only way to understand the nonsense that comes out of courts.

  38. 44

    I lulzed. You were even practicing the invention at the time of your depature to your pineapple under the sea weren’t you?

    Let me guess, you had to go to appeal didn’t you?

  39. 43

    I was hoping my appeal would be decided before I was tossed into the sea. It was a method for bankrupting a country in a short time interval.

  40. 42

    qualified and “worthy” are two different things JD. It is quite easy to be qualified to do that, as pingerofthedoodle illustrates so well for us.

  41. 41

    “There is somewhere on the order of a 99.99999999999% chance that he was personally involved in it.”

    Lulz. Ping’s not even qualified to cite check the sh!tty Fed. Cir. brief that got smacked down by J. Linn. Remember, he doesn’t even have a cursory command of prosecution practice. That’s why he views the Jung decision as the end of the world for incompetent practitioners such as himself.

  42. 40

    Oh pingerofthedoodle is well aware of the Jung decision. There is somewhere on the order of a 99.99999999999% chance that he was personally involved in it. Indeed, it is difficult to say how he was involved until one notices that one of the attorneys did not realize that their oral arguments were scheduled Eastern Standard Time rather than his own local time. Then you can say hi to pingerofthedoodle.

  43. 39

    Examiners can’t and don’t learn. The reason for that is simple: there are no consequences for their willful ignorance. Until there are consequences for sending sh!tty rejections up to the BPAI to decide, including consequences for SPE’s and QAS’s and TC Directors and the rest of the useless masses at the PTO, the backlog will continue to grow. So institute harsh penalties for reversal and issue Board decisions that clearly identify correct arguments by applicants, and the backlog will shrink.

  44. 38

    Having the APJ’s explain to the examiners why their rejections s#ck is a waste of time because the examiners don’t understand the law anyway

    You are playing to the old adage of not having enough time to drain the swamp in order to get rid of the alligtors because there are too many alligators.

    It is only a waste of time if examiners do not (or cannot) learn. FOr both of these conditions you would be correct, but the examiner would need to be replaced. The alternative is actually having examiners learn why – “just do it” fails.

  45. 37

    Anon, I agree with the next post by WHAT as well. But, what I meant is that the examiner understands the argument of the applicant, but does not agree with it. If the board says the applicant is right, without further explanation, the examiner will now have to agree that the applicant was correct.

    A problem may occur if the applicant advances TWO or more theories why the examiner should be reversed. If the Board does not agree with one of them, they need to say so even if they affirm.

  46. 36

    Ned, If they “got” it, then they would agree with it.

    Same as for the Board’s decision – You are attempting to make a distinction without a difference.

    Without an explanation, why would an examiner now agree with the rationale as provided by the applicant? “Just because” has never been a valuable tool to actually learn why your position is less valid than another’s. But “just because” is precisely the avenue being recommended.

  47. 35

    We’re talking about reducing the appeal backlog. Having the APJ’s explain to the examiners why their rejections s#ck is a waste of time because the examiners don’t understand the law anyway. What they need is to be told when applicants are correct, so that even if they don’t understand it, they can say, “Well, the last time an applicant made this argument,the Board said it was correct. I don’t understand why, I don’t really feel like making the effort to understand why, and I’ll never understand why, but according to Board the applicant is correct so instead of sending it up for a decision, I’ll do the correct thing and allow the application.”

    Having the Board write several pages that don’t address what the examiner actually argued and/or what the applicant actually argued is wasting time. Stop it. If the examiner’s decision is wrong for the reasons applicants argued, then just summarily reverse. And watch the backlog shrink.

  48. 33

    If they do not read pages that explain why the examiner might be worng, what make syou think they would read, much less understand the shortened version, which inessence tells them to go back and (re)read what appellants have already said?

    Insanity: doing the same thing and expecting different results. Examiners (theoretically) have read what applicants have written at least twice and do not “get it.” Directing the Board to run the short route will not change anything.

  49. 32

    I agree that the Board needs to greatly increase summary dispositions. Issuing a one page decision that states essentially, “We reverse for the reasons set forth by Appellant” would go a long way to getting the examining corps’ attention. The examiners simply don’t read the Board’s decisions because they are too long (or much longer than they need to be to reverse) and the examiners don’t understand them. If the examiners were told, succinctly, “Appellants arguments are correct and you should have allowed this case a long time ago rather than wasting time sending it up here” the examiners might actually learn something. They’re not learning anything with pages of decisions they don’t even bother to read.

  50. 31

    I’m indebted to Passing and ping for giving me the opportunity to come back. I’m glad to read from them the concession that EPO-PSA is “easy to apply”. What are you waiting for USPTO Examiners? You have nothing to lose but your pendencies.

    As I have said in earlier threads, an “objective” standard is needed, for assessing obviousness. Doing it subjectively, like the CAFC does, is no good for predictability, legal certainty, fairness or reducing pendency.

    Passing, when I read your “reality” lament, I think: here we go again, with “subjective”. The PHOSITA standard, BTW, is not a real person and nothing like a real person. So, “not real” is no reason to dismiss findings of obviousness in relation to the PHOSITA.

    When the leading patents judge in England, a vehement opponent of EPO-PSA, is unable to find any case at all that EPO-PSA decides wrongly, it is time to give EPO-PSA some recognition. As is now happening, gradually, inside the USPTO (I think you will find).

  51. 29

    “Do ya really think that Maxi will ever stop proslytizing?”

    No … that is what makes Max, Max. The great thing about Max’s posts is that once you’ve read about 3 or 4 of them, you never have to read his writings again because they say the same thing year, after year, after year, after year.

    You definitely have to give him a A+ for consistency and persistenc.

  52. 28

    The reason for the high number of appeals going to the BPAI is the substantial difference between what the USPTO thinks is a viable rejection and what Applicants (via their attorneys) thinks is a viable rejection.

    Nails it. Just like I done observe many many times.

  53. 26

    We’ve gone over it hundreds of times with you these last 4, 5, 6 years?? with you Max.

    Amen.

    But Passing, Maxi is just a shill for the drumbeat of making all< ?i> patent system the same, dontcha know? That such actually weakens the gold standard US patent is a benefit for sure (since such is a competitor to Maxi’s choice).

    Do ya really think that Maxi will ever stop proslytizing?

  54. 24

    “Shame it can’t be adopted also within the USPTO, for I don’t get many complaints from Applicants about the way it works”

    We’ve gone over it hundreds of times with you these last 4, 5, 6 years?? with you Max. The PSA is a “cookie-cutter” approach that doesn’t look a reality. It is a plug and chug approach that (improperly) assumes that the “objective technical problem” was known.

    The PSA approach may be easy to apply but I don’t think it reflects reality as to what one skilled in the art would consider to be obvious (or not).

    Although this phrase has been mostly ignored the past couple of years, 35 USC 103(a) states that “[p]atentability shall not be negatived by the manner in which the invention was made.” Therefore, if the problem solved by Applicant was otherwise unknown, and the solution to the problem would have been obvious (had the problem been known), then the invention should not be rejected under 35 USC 103.

  55. 22

    Hey, lets try this for civil and criminal matters because those courts too are faced with docket problems that cen be alleviated with $$$.

    1. For $20K your ____ appeal goes to the head of the line. (It works for patents.)

    2. For $100K your ____ gets you off scott free, to be directly to the court jurisdiction.

    3. Use the money to hire more court personal.

    Let’s just fully embrace the Sport O Kings methodology and be honest about things – Money talks, poverty sucks, the rich get richer…

  56. 21

    “Do you really believe there would be any drastic change in the overall affirmance/reversal rate?”

    Yes I do for the reasons outlined above. The affirmance rate would drop significantly, as the quality APJs would act more like a review board than a second examination board. Without the APJs spending lots of time trying to cure the deficiencies in the rejection, the APJs can be more productive, which will reduce backlog.

    With the quality APJs providing better guidance as to what rejections should be affirmed and what rejections don’t pass muster, the Examining Corp will realize that they need to do a better job before they send an appeal to the BPAI. This will reduce the number of appeals going to the BPAI, which will also reduce backlog.

    The reason for the high number of appeals going to the BPAI is the substantial difference between what the USPTO thinks is a viable rejection and what Applicants (via their attorneys) thinks is a viable rejection. The greater this difference, the greater the number of appeals. However, as this difference between the respective perceptions of two parties is reduced, the number of appeals will be reduced.

    We can debate why these differences have increased the last 3 years. However, from where I’m sitting (and even excluding KSR-related issues), the quality of examination has dropped significantly. No surprise considering the militant anti-patent policies of the last USPTO administration, in which only incorrect allowances were considered errors and subject to a second pair of eyes review while incorrect rejections were ignored. This anti-patent fervor infected both the BPAI and Examining Corp alike and has increased the “spread” between what Applicants think are a viable rejection and what the USPTO thinks is a viable rejection.

  57. 20

    This in reply to Passing Through. I should have liked to post my comment immediately below hers, but the software won’t allow it (Dennis?).

    Hundreds of Office Actions with this format, you say, Passing. Interesting, for almost every Office Action the EPO has issued for the last 20 years or so follows your steps 1 through 3. But the EPO does not take your Step 4. Instead, it follows its by now 30 year old PSA Approach to the analysis of obviousness. Shame it can’t be adopted also within the USPTO, for I don’t get many complaints from Applicants about the way it works.

  58. 19

    Replying to Ned and Alun, I have just read the Shahram decision in which the CAFC criticises the BPAI. I note that the Board turns for authority to the MPEP. That could never happen in judicial proceedings before the Board of Appeal at the EPO, for the Board is an independent instance that is ruled only by the provisions of the Convention.

    I must say, the Shahram Decision encourages me in my suspicion that the BPAI is administrative, not judicial. Ned, it is the possibility of appeal to a court that would satisfy the TRIPS requirement, I believe. In Europe, it is generally accepted that the TRIPS requirement for a judicial appeal instance is met by DG3 at the EPO. Alun, parties are routinely represented before DG3 by their patent attorney (as opposed to any attorney at law). If the defence of the issued patent or pending application should fail, the patent is lost, for up to 40 countries and 600 million citizens. High stakes indeed, and just one decision away from a mere Examiner’s decision to refuse. No instance at the EPO that corresponds to BPAI mezzanine.

  59. 18

    “Cookie-cutter practice of patent prosecution” — I think you mean “cookie-cutter practice of patent examining” which extends all the way up to the BPAI.

    KSR did not obviate the need to present an analysis. However, after the Examiner never mentions KSR during appeal, the 3 APJs stand around their black cauldron, invoke the magical phrases of “simple substitution,” “predictable results,” “KSR” and poof – out pops an affirmance. Completely lacking from the affirmance is the findings of facts as to what is the simple substitution or the predictable results or any of the other facts necessarily to establish a prima facie case of obviousness based upon the case law.

    The reason why the BPAI is forced to go this cook-cutter route and employ their obviousness incantations is because of the cookie-cutter route employed by most Examiner when dealing with obviousness rejections. This is the simple formula:
    1) Recite, word-for-word, the claim language of claim 1. After each clause, cite to a few passages in the primary reference (Optional – only if you are feeling really generous, actually include an explanation as to why these passages teach the claim language against which the passages are being cited)
    2) Assert that primary reference does not teach “X, Y, and Z” limitations.
    3) Assert that the secondary reference(s) teach “X, Y, and Z” limitations. Again cite to a few passages in the secondary reference (Optional – include actual explanation)
    4) (a) Last paragraph – assert that it would have been obvious to modify primary reference by teachings of secondary reference to include “X, Y, and Z” limitations. (4)(b) Search secondary reference to a find an “objects of the invention” section. (4)(c) Select random “object of the invention”; (4)(c) in the last sentence of the last paragraph allege that the reason to combine would be for the purpose of achieving “object of the invention.”

    I’ve seen hundreds of Office Actions following this exact cookie-cutter formula. The problem is that the relied-upon “object of the invention” usually has no relationship to the proposed modification. So when this is argued at the BPAI, the BPAI has to discard the Examiner’s analysis and make their way to the black cauldron to do their obviousness incantations.

    Someone who was once a real attorney should understand the difference between a conclusion based upon factual evidence and a conclusory statement. However, I rarely find that the APJs at the BPAI appreciate this difference.

  60. 17

    What exactly do you think would happen if, in a perfect world, all of these “private practice rejects” were fired and replaced with “quality” APJs as “passing through” has defined them?? Do you really believe there would be any drastic change in the overall affirmance/reversal rate?? That seems to be the underlying assumption.

  61. 16

    If they want to reduce the backlog at BPAI:

    1. For $20K your patent appeal goes to the head of the line. (It works for patents.)

    2. For $100K your patent application gets allowed as filed, to be divided evenly between the USPTO and the Examiner.

    3. Use the money to hire more BPAI ALJs.

  62. 15

    That some leap of imagination to jump to such perceptions which are completely ungrounded in the current discussion and in no way address any of the points made by Passing through.

    Passing through answered your questions with a high degree of specificity, so can you try to stay on topic with your response rather than come back with such outright baldardash?

  63. 14

    I think your real problem with the Board is not some systemic incompetence with these “private practice rejects,” but rather your dislike/unacceptance of KSR and how it’s changed the cookie-cutter practice of patent prosecution.

  64. 13

    An examiner with a law degree does not necessarily qualify as a quality APJ. However, most APJs are just former Examiners with no other relevant experience.

    I don’t mind an APJ having experience as an Examiner but I would prefer that the APJ also have experience as a real attorney. Examiners have never been required to write a legal memo, independently review case law, or fear for their job if their work isn’t perfect.

    This may only shock those working in Alexandria, but the federal government is not the place to learn a good work ethic.

    Anyway, I’m going off track. The problem with getting quality APJs is that those people with sufficient legal experience to act as the ‘final say’ at the USPTO can easily make 2x-3x more in private practice. This means that the USPTO is mostly left with private practice rejects or attorneys with no more relevant experience than your average second or third year attorney.

  65. 12

    Max, as a US patent agent I have consistently won appeals before the board, but cannot represent anyone before an outside court. Did you consider that in your reasoning?

  66. 11

    The phrase “Super-Examiner” in all its delicious irony keeps ringing in my head.

  67. 10

    Max, I don’t know whether the Board satisfies TRIPs, but it is necessary. It handles interferences and contested reexaminations like a court, and appeals from ex parte prosecution. The two used to be separate. Perhaps one solution would be to again separate them.

  68. 9

    Following ben ford here. TRIPS requires a judicial instance to be sitting atop any administrative decision-making within the Patent Office. At the EPO, it is beyond dispute, and clear, that the Boards of Appeal are independent, judicial, and not administrative. So, may I ask, how is it with the Board of Appeals at the USPTO? Is the Board just another administrative instance, is it a proper judicial one, or is it a half way house, neither one thing nor the other, a little bit of this with a little bit of that, an intermediate step, on the way to the 100% judicial CAFC?

    If it is so, that the Board is a superfluous intermediate level of case management, then why not, instead of beefing it up, simply abolish it, to leave only one administrative instance and, above it, just the one judicial instance below the Supreme Court. How many instances does it take, to get to a just outcome?

  69. 8

    The PTO’s appeal and reexam problem could easily be rectified -issue patents that are patentable and stop nonsensical rejections. In reexams the burden should be on the requestor to prove invalidity so that the PTO can act in more of a judicial capacity, not as prosecutor, judge, and jury as in the present system. It is totally senseless.

  70. 7

    “Increase the number of quality APJs (the “number” one is easy, the “quality” part is the hard one)”

    Care to be more specific?

  71. 6

    To improve the BPAI (and it’s backlog):

    1) Stop making excuses for the Examiner!!!! If the Examiner doesn’t establish a prima facie case, then reverse. There is a mechanism for the Examiner to reopen if the Examiner thinks he/she has a better rejection to be made. Too many “affirmances” are more like “well, the Examiner got kind of close, and I don’t think this invention is patentable, so I’m going to wave the magical ‘obviousness’ wand and all those pesky limitations are going to disappear to the land of ‘simple substitutions’ and ‘known function.'”
    2) Increase the number of quality APJs (the “number” one is easy, the “quality” part is the hard one).
    3) Increase the quality of initial examination — how do you do that? See the first point. If Examiners think the BPAI is going to hand hold them through every error, they’ll continue to produce gar-bage. Hold the Examiners to a higher standard at the BPAI and you’ll get less appeals as Examiners will take less cases to the BPAI.

    There are several factors that contributed to the massive increase in the BPAI’s backlog. One of those factors was the prior admin’s anti-patent philosophy which only considered a patent issued mistakenly as an error and not an application improperly rejected as an error. When there is no negative consequences for an Examiner taking a bad rejections to the BPAI, the backlog will continue to grow as good attorneys (and good clients) are not going to stand for this gar-bage.

  72. 5

    Riiiight, and the esteemed Mr. Smith – – being the immensely qualified “real” lawyer that he is – – should have this 20,000+ appeal backlog taken care of in no time at all, LOL . . . LOL . . . LOL

  73. 4

    One more recommendation there Ned-O-gram (call it 3sub1):

    Improve examination quality such that appeals aint necessary.

    I know, so obvious it h_its ya in the face.

  74. 3

    Now, we have to figure out how to reduce the backlog. Seems they have three choices:

    Greatly expand the board.

    Greatly increase summary dispositions.

    Reduce the need for appeals.

    Or any combination of the above.

    I would recommend emphasis on 3, with a sub emphasis on 1, and with a temporary need requiring 2.

    As for the long term solution, we need to stop issuing finals so prematurely. I have explained the problem and the solution in detail. If new searches are required to continue prosecution, applicants should pay for them just as we ask applicants to pay for new claims.

  75. 2

    Maybe it should read, “served in private practice as a patent attorney at Arnold White & Durkee (now Winston & Strawn)”?

  76. 1

    I think this is wonderful.

    The PTO should make it a regular habit to appoint outsiders to senior legal posts. Real lawyers who practice in the real world have to be precise and correct. They learn to be accountable for being careful and being right, becuase we get our butts slapped when we do something totally bogus. In contrast, lawyers who grow up like potted plants in a “sovereign immunity” hothouse get REALLY sloppy.

    Now Kappos needs to appoint real lawyers to head the Petitions Office and the Office of Patent Examination Policy.

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