By Jason Rantanen
Both practitioners and academics constantly debate the extent to which factors other than the "true" patentability of an invention affect the patent office's decision to grant or deny an applicant a patent. A recent empirical study by professors Michael Frakes of Cornell and Melissa Wasserman of Illinois explores one such potential externality: the influence of the PTO's budgetary structure on the decision whether or not to grant a patent.
In Does Agency Funding Affect Decisionmaking?: An Empirical Assessment of the PTOs' Granting Patterns (available here), Frakes & Wasserman theorize that elements of the PTO's fee schedule that are collected only in the event that patents issue create incentives for the PTO to grant additional patents, and that these incentives have their greatest effect in times of agency underfunding. If this hypothesis is correct, the current funding structure of the PTO may bias it in unintended directions, such as towards granting patents associated with large enterprises rather than individuals and small entities.
The authors then empirically test their predictions using a natural experiment approach revolving around the Omnibus Reconciliation Act of 1990, an Act that both greatly increased the fees assessed by the PTO and left the PTO essentially fully funded by user fees. After applying sophisticated statistical techniques to address a variety of complications flowing from the nature of the problem examined, they present results suggesting that the PTO's fee structure induces the agency to grant at an incrementally higher rate to high renewal rate technologies and to applicants with large entity status, and that these effects are consistent with a PTO that seeks to maximize its funds during times in which it is in greater need of funds as opposed to a PTO that acts in all instances as a self-interested budget maximizing entity.
A copy of the article can be downloaded here.
Your impression, like most of your post, would be off.
First, any such planned retribution falls outside of self-defence by definition.
Second, I made no mention of, nor indicated any legality of a US action aimed, as you errantly posted, at a non-US basis. Quite in fact, I pointed out that Reg Capture was saying the opposite (which you now apparently agree with). In other words, the only person you are arguing with is yourself (hence the choice of moniker).
Lastly, OK, I get you don’t like the Office shenanigans. Welcome to the crowd. Glad to see some comprehension dawning for you on the Have-Have Not war.
What am I on about? I’m on about a patent system that is functional, by which I mean a PTO that examines an application for patent-eligible, patentable matter, in a reasonable time frame, and then, at reasonable proportionate cost to the inventor, in a reasoned rational and fair decision, either grants a patent or refuses the application.
It is my recent experience that this is not so, at the USPTO. I’m asking myself why. But now I have read Gorenstein on the Watchdog I have a better idea why, and it’s nothing to do with going slow with aliens. Rather, it’s all about disposal points. So Lord Kappos can change it, if he wants. I’m pleased about that, and pleased that there is no substance in my “go slow with aliens” suggestion.
Interesting though that you would characterize as “illegal retribution” any “eye for an eye” behaviour by Asian Patent Offices, were it to occur. Proportionate self-defence is “illegal” in your country, is it? How many eyes do you have? My impression is that you have only one.
“I suspect that there will be adverse consequences for US Applicants in Asian Patent Offices, when Asian Applicants can make progress at Patent Offices all over the world but just not at the USPTO.”
Sounds like illegal retribution.
Plus your own admissions seem to make the point of Regulatory Capture.
Just what are you on about?
Ipso facto you would seem to be Steven Wren. Sorry to tip your hand, and all like that, but at least I might know from whence I happen to be seeing lances coming from. Not a problem with the patented G. Crow Infrared Guided Laser Cannon though! Just a single touch of the button, and all of those road-raged generation X types of punks will be History! Invented right here in Washington state!
Why would I be *hoodwinked* by using the micro-entity option? In fact, an erstwhile friend of mine *invented* the whole concept. By the time I get past 4 granted patents I won’t need the micro advantae any more anyways. It will then have become truly a Sport of Kings for me, so who cares?
Well Reg I looked at your link but don’t get your point yet. In these columns I am obliged to read much self-delusional stuff about how Europe serves Big Daniel and only the USA nurtures Little David. Yet when it comes to the USPTO, it seems to be Daniel Big Corp rather than Little Man David, who gets all the service. My client David was faced with a ton of prior art but got through to issue in Europe and China with modest prosecution cost. Prosecution at the USPTO, however, was an insult to the Applicant. David couldn’t afford it, and dropped out.
I suspect that there will be adverse consequences for US Applicants in Asian Patent Offices, when Asian Applicants can make progress at Patent Offices all over the world but just not at the USPTO.
Stan,
It’s a mirage. 6 has been studying the pounding that the rest of the empty wagon crowd have been receiving of late and has simply drafted his post in attempt to work around the erudite critics.
It has not worked.
Do you recall what knee-jerk reactions entail? Generally a Physician uses a very small hammer with a medium grey trianguler head to tap just at the right point on your knee to invoke a reaction. No response and you might have a dead Astronaut some day in the future. No test at all, and who knows? Probably nobody at all.
Stan,
Do you merit the micro-entity status (having less than four applicaitons in total, for your entire life’s work)?
Do not fall for the micro-entity hoodwinking.
MaxDrei,
Your thoughts seem well intentioned, but are misplaced.
It is not an “alien” v US battle.
It is a “have” v “have not” battle.
See: link to ipwatchdog.com for some additional insight.
You are assuming that the only possible mechanism for the bias that the authors think they might have detected is conscious examiner bias.
You are studying two completely different subjects and observing a side-effect that you think (but have no evidence to establish) is correlated loosely to the thing you are actually studying.
Well, not quite. The evidence is the results from the statistical analysis, which suggest (yes, that’s not the same as proving) that something is going on to cause a systematic bias. Respectfully, I don’t think you appreciate even the objectives of the study that was done, much less the techniques.
Very well said Paul- I resemble your posit, wherein I have a few inventions that seem to have merit, but nearly no financing to get them to market. In a sort of Catch-22 sort of situation, I am not able to monetize my invention until I have an obstensibly valid patent granted, which looks like it might take 3 years to get to if everything goes well. I am really tempted to pull the Track 1 trigger though, and see what happens thereby. The new fees will have the Small Entities at $2000, or if the new Micro entity thing passes, I might be able to make my application *special* for only an extra thousand bucks! Not bad, nicht whar?
I am somewhat stunned at hearing your apparently well reasoned logic in the matter! Could it possibly be true that the legendary 6 actually cares about stuff like this? I think I will start working on a new Strange Strawberry flavor in the next few weeks or so.
Two thoughts Paul:
1. If aliens are deterred fro filing at the USPTO and, when they do, encounter Dickensian obfuscation, that it all in the national US interest, isn’t it? Aliens are already up to 50%. No higher please, some people are saying.
2. But if that is too cynical, how about this thought. At the EPO, every case is handled by a team of 3 Examiners. For one of them to say to the other two “I’m still not sure” is embarrassing. So none of them says that, and thus it is (to save embarrassment) that the EPO grants or refuses, maintains the patent or revokes it, there and then. Do USPTO appeal panels obfuscate? Or do they decide?
Is anybody embarrassed by the way the USPTO is working these days. Somebody should be. My experience with clients applying to the USPTO is the same as yours Paul.
It is all great fun until you have to explain the behavior to small clients in start-ups with good inventions and not much money who are at the end of the feeding chain.
Hey Paul, got something you wanted to get off your chest?
Why grant the patent when you can issue a final rejection, refuse to enter the resulting amendment, force a RCE and keep playing that game for years? Everyone benefits except the client at the end of the feeding chain.
In the EPO if you have a hearing before the examining division, the case has been studied beforehand in the utmost detail and you get a decision for grant or refusal on the day. The EPO may be slow, but its jurisprudence is understandable, its examiners are diligent and well-trained and its approach is businesslike.
In the USPTO you can schedule an interview after final with the examiner and his/her supervisor. You and your US colleague may have accumulated 5000 air miles to attend the interview. However, as like as not the examiner will not show up and you will not even get an apology. Who cares? You may persuade the supervisor that the arguments that you have submitted three times in minute detail crafted to be understandable to a semi-literate person are in fact correct. But will the case have been properly studied so that everything can be resolved at the interview? That is not the way things are done in the US, so I was warned, and indeed that is not my experience. The Supervisor will say that even though all outstanding objections have been overcome, more thought is necessary. The case will go to another examiner for another round of spurious objections which inexplicably had not been thought of earlier. When a response has been filed the case can be left on a shelf somewhere until everyone has forgotten all about it and we can start again.
In a case I was involved in some years ago, one of the trial lawyers said, in aside comment: “It’s make your mind up time, Judge.” Not something US examiners really like doing, I submit.
And how about the examiner who when a claim was amended to include the subject matter of a dependent claim objected that this raised new issues requiring a further search? Even when a US national phase search had followed an International search. He/she had not been thinking hard about the subject matter in the dependent claim.
Instances like this do not altogether enhance the reputation of the USPTO amongst European practitioners. Or have I simply encountered a bad patch?
“so too do the rates of allowance.”
Hurricane Dudas bent that rate of allowance beyond any mere wind.
There is no statistical rationale that can explain that drop to the 40% allowance range.
We reap that whirlwind still today in the form of the various backlogs.
“Or are you suggesting that the fee changes affected the ability of large entities to provide persuasive arguments relative to small entities?”
I’m suggesting that just as the leaves and branches of trees bend and blow in different directions as the wind changes as a function of time so too do the rates of allowance. You cannot determine by studying which way they blow at certain times whether or not a tree branch trimmer man did in fact intentionally trim some branches and not others to make the branches tend to blow in one direction. In the same manner you cannot tell from looking at allowance rates at different times whether or not patent trimmer men were in fact intentionally trimming or not in order to have the allowance rates, and thus fees collected, shift in a direction. To make a loose analogy anyway.
You are studying two completely different subjects and observing a side-effect that you think (but have no evidence to establish) is correlated loosely to the thing you are actually studying. And, at the same time, you’re neglecting to do the easy study that would be required to establish what your paper is setting out to do. Just go stand in front of the PTO buildings, offer examiners free lunch to fill out a survey and bam, your research is finished in a much better fashion. I guess the authors are simply too poor to afford such a gargantuan study that would cost perhaps 30-40k.
What is most funny however is that if you did do the survey then you’d probably find pretty clearly that some examiners probably do this, and others do not. I state this because I have heard from various primaries that they actually do care about allowances/fees and I’ve heard from my spe some limited talk about fees. On the other hand, most juniors I know don’t even look at the company or person that filed other than to do an inventor search and sometimes to look up something about a 103c exclusion or something of that nature. Anecdotal evidence, but still.
…there are a variety of factors that would make the PTO issue to larger entities even if the examiner had no clue that it was a larger entity that filed. Things such as quality of the application drafting, correct and persuasive arguments being made etc. etc. influence heavily which applications are allowed and the big boys generally tend to do better at those things.
Right, which is why the authors’ compared Office behavior before and after the fee changes. Or are you suggesting that the fee changes affected the ability of large entities to provide persuasive arguments relative to small entities?
But don’t mind me, please carry on with your insightful criticisms.
Okay, I’ll admit, 6, you make some good points.
Meh, you can run studies all day on everything except whether or not examiners in charge of allowing actually check large entity status or what company filed the app and come to whatever conclusion you’d like to make up. Until you study precisely whether examiners in charge of allowing look who filed the app and their large entity status or not then your study isn’t showing anything.
This is especially so because there are a variety of factors that would make the PTO issue to larger entities even if the examiner had no clue that it was a larger entity that filed. Things such as quality of the application drafting, correct and persuasive arguments being made etc. etc. influence heavily which applications are allowed and the big boys generally tend to do better at those things. And that is not to even mention things like being able to correctly put down your address so as to recieve office communications which a surprising number of applicants find very difficult to do.
Comments are closed.