Oh his blog, USPTO Director Dave Kappos has written an important defense of proposed USPTO fee increases and his rejection of the normal Washington DC approach of including improbable efficiency gains as major budget elements. I have excerpted a portion of the Kappos post that he titles “Increased Fees v. Operational Efficiencies”:< ?xml:namespace prefix ="" o />
[S]ome stakeholders have taken the view—to caricature it slightly—that the USPTO does not need to increase fees; it needs to get more efficient.
We could not agree more on the importance of improving efficiency at the USPTO. . . . But attempting to draw a corollary between fee-setting and speculation about the possible impact of potential future efficiency gains is difficult without the benefit of hindsight. As we have outlined in our fee proposal, our fees must be set in a manner that enables us to continue investing in reducing the backlog and improving all other areas of our agency. Our experience also reminds us that implementing improvements frequently causes short term disruptions, and likely won’t immediately translate into efficiencies. Anyone who runs a business will tell you that productivity investments often take years to pay off.
Moreover, my judgment as the steward of this agency is that I cannot proceed with a funding model that assumes further efficiency gains, especially if we have not yet achieved them. It places our agency at risk, and is just not right for our employees or for our stakeholders.
The responsible approach is to rely on our experience and current cost model, factoring in the efficiency gains we have achieved to date, but not speculating about possible future gains. This approach of using current costs as a basis for setting prices is the common practice among businesses, and follows the sound advice of the accounting, finance, and economics professions.
Then the question becomes the one asked in our fee proposal: does the U.S. innovation community want us to continue investing to quickly reduce the backlog and fully capture the promise of the AIA, or does it want us to back off a bit and accept a longer trajectory to reducing the backlog, and a higher level of risk relative to future funding downturns? The answer will ultimately have consequences for the kinds of efficiencies the agency is able to realize in the future, and what level of services the USPTO can deliver in years to come.
Read the full post here.
The composition of very good. Give me a lot of help, gave me a big inspiration! Hope to continue trying to write something better!
It happens all the time. If the first office action is bad, why would I amend?
Even if there is an amendment, the second office action can be and usually is bad. I’m not sure why you think that makes a difference.
That exact sequence has happened to me at least 8 times, in cases where no amendments were made. In the last 5 years I’ve filed about 30 appeal briefs. 3 have been docketed for the Board.
No I’m not. I’m assuming:
1)erroneous rejection
2)arguments rebutting, pointing our errors filed.
3)Final erroneous rejection ignoring rebuttal or paying it lipservice
4)Notice of appeal and Pre Appeal request for review pointing out errors filed with onerous fee
5)Decision reached: proceed to appeal
6)Appeal Brief filed with onerous fee
7)New office action filed.
That’s a lot of assumptions, including the assumption that no amdendments were made. How often does that happen?
“Depending upon the filing fee, that could generate millions of additional “patents,” ”
Yay! “innovation” flourishes!
Occupy an entrepeneural center. Maybe you’ll learn something about how economics and patents work in the real world.
“You are assuming that in most cases, the applicant or the applicant’s agent never asks for more than what he is entitled to in the claims. As practicing patent attorney, I can confirm that this belief is complete B.S.”
No I’m not. I’m assuming:
1)erroneous rejection
2)arguments rebutting, pointing our errors filed.
3)Final erroneous rejection ignoring rebuttal or paying it lipservice
4)Notice of appeal and Pre Appeal request for review pointing out errors filed with onerous fee
5)Decision reached: proceed to appeal
6)Appeal Brief filed with onerous fee
7)New office action filed.
Sometimes you get the new office action after the notice of appeal. In either case, the applicant is paying fees and for attorney time because the Office did a poor job twice.
“you would have every market participant pay for independent examination of every registered patent they found relevant?”
bja, just like one would do now; but without the multi-BILLION dollar innovation tax sucking from the innovation community that goes to a federal agency that no one is really happy with anyway.
As I said, sign me up for registration only.
Compare this to the Bankster givaway, only better.
Instead of coming out of ‘every market participant’s taxpaying dollar,’ you would have the inventors making better allocation decisions on the BILLIONS that now go to a federal agency that creates the stuff that gets litigated JUST AS IT DOES TODAY. Innovators keeping their own BILLIONS (hello, no hit to those same “market participant’s as taxpayers) an dputtin gthose BILLIONS to work devloping their innovaitons and (gasp) creating products and jobs.
This is a no-brainer value determination.
Asked and answered:
Is it?
Much harder to…
Everything else in your post is fluff.
“I think your are referring to a situation where they Examiners realize that the rejections they have presented will likely be reversed and on there own agree to reopen prosecution. So, they admit to issuing at least 2 bad rejections, thereby wasting time and forcing the applicant to spend time and money responding to the bad rejections.”
Not true: the Examiner in that case is only admitting to issuing one bad (or, rather, rebuttable) rejection. If the applicant amended the claims after the first rejection, which happens a lot, then the amendment acts as a ratification of the examiner’s good non-final rejection, thereby leading to a final rejection.
You are assuming that in most cases, the applicant or the applicant’s agent never asks for more than what he is entitled to in the claims. As practicing patent attorney, I can confirm that this belief is complete B.S.
“Les — you also make the big mistake in assuming that all appeals go to the BPAI. I think the number floating around is that 50-60% do not make it the BPAI (i.e., the Examiner pulls them back — either to come up with new rejections or to allow). That means that the ones cherry-picked by the USPTO to go to the BPAI get reversed anywhere between 50-60% of the time.
Combine those numbers and you see how Examiner does a very poor job.”
Your sample does not include the applications in which appeals are NOT filed after a final rejection. Your figure assumes that every final rejection is or should be appealed by the applicant. Perhaps you should run an analysis of all final rejections and compare it against the number of appeals that are filed. Perhaps then we’d have a better understanding of how good or bad the Examiners are.
In Europe, only what is inventive gets through to issue.
Well that’s it, then. I’m moving back to Europe.
Is it? Inventive is the antonym to “obvious”. Obvious (in this context) means lying in the road of technological progress. No patent roadblocks on ordinary routine progress please.
Dead easy to grasp the concept. Much harder to devise a consistent, predictable, objective and fair approach to the determination of obviousness. But with the switch from First to Invent to First to File, the chance is, for the very first time, there for the taking. That is because the specification is written on a date anterior to the date which is decisive for the obviousness determination, that is, the PTO filing date.
My favourite is the blue squash ball invention. Was it inventive to switch from a black rubber ball to a blue rubber ball, for playing that particular sport? Without a rigorous approach, like that used at the EPO, you can argue, completely inconclusively all day long till the cows come home.
When arguing whether a trademark is “descriptive” do you not need first to know the goods. When arguing whether black to blue is a non-obvious step, do you not need to know what difference it makes, to change from black to blue? Look in the specification, written prior to the obviousness test date, to find that out. Not rocket science. In fact, deadly simple, once you get the hang of it.
James –
Re:
“If the rejection is withdrawn, can that be equated to an RCE. In other words, what we have might not win at the board and thus lets try again.”
I think your are referring to a situation where they Examiners realize that the rejections they have presented will likely be reversed and on there own agree to reopen prosecution. So, they admit to issuing at least 2 bad rejections, thereby wasting time and forcing the applicant to spend time and money responding to the bad rejections.
Additionally, the applicant was forces to pay onerous appeal fees in order to get another office action that will likely be not much better than the first at least two.
The applicant should not have to pay for the appeal and notice of appeal in this case. Furthermore, attorney fees should be paid by the office for all the time spent replying to the first set of office action and the appeal briefs.
Thanks Just –
But I didn’t make that mistake, see:
“And that is of the rejections that make it to the board. It doesn’t count the 50 percent that are allowed or returned reopened prosecution after a Request for Pre- Appeal Review or that are allowed or reopened after the filing of the appeal brief.”
from my 3:11 PM post yesterday.
There is a lot more not to understand.
The USPTO indicate the cost of handling a renewal is $1 and they are looking to charge $7600 for it. I wish I could get away with that mark-up.
As for 35 USC 41(d)(2)this seems to require charging average costs for non-specified fees, whereas the proposed fees for post grant review discriminate according to the number of claims. This is like saying that the average cost of an air ticket is $X but instead of charging everyone $X for the ticket passengers will be charged according to their weight.
That might be fair, but it is a very strange application of the concept of “average”.
“the registering of patents will allow any crackpot to file”
You say that like it’s a bad thing.
Promote the progress has never been about only promoting advances.
Multiple roads, even those that are known to be less “advanced” have always been welcome in the US patent system.
Innovation simply is not linear. Promotion, and having those multiple paths allow fruitful combinations of those works you are seemingly being disdainful of.
Maybe you should be Just Thinking rather than Just Saying.
“what is inventive”
Easy to say – much harder to actually explain.
Just, you make some good points. But if people want to waste their money on publishing cr*p, where really is the harm to the public unless, like in the days of old, they are patent medicine hucksters. Only patents describing and claiming real inventions will ever stand up to examination, and only examination will and should allow the full gamut of remedies. Those wanting examination up front can ask for it. Others can wait. If the public truly is not harmed, where is the problem?
Until 1978 the UK Patent Office was required to examine novelty (and clarity) with full vigour but not to attempt to pass judgement on obviousness.
What got through to issue was clear and, on the face of it, novel. Obviousness was tested for the first time in inter partes proceedings, if ever the patent was litigated.
But mainland Europe didn’t like that idea. So the EPO had to invent a TSM model, its Problem and Solution Approach, to deal with obviousness prior to issue. This gets obviousness done and dusted in two shakes of a lamb’s tail. In Europe, only what is inventive gets through to issue.
And if there’s still a validity problem, post-issue opposition (inter partes but discovery-free) nearly always sorts it out, again at modest cost.
Patent Offices elswhere in the world look on, enviously.
Your level of analyis is pretty shallow.
First, what rights does a registered patent give anybody?
Second, why would anybody challenge it if there are little to no rights associated with it?
Third, any sophisticated party is going to get an examination anyway.
Fourth, the registering of patents will allow any crackpot to file on cr@p and have it be called a patent. Depending upon the filing fee, that could generate millions of additional “patents,” the value of which would confuse unsophisticated parties (i.e., most people).
That idea is one big loser.
Bad joke, not really. The courts could and should limit damages and injunctions until a patent was examined or notice of infringement given. I also think that equitable intervening rights (no injunctions) should be the norm for all acts and public investments made prior to examination or opposition.
The public would have no incentive to oppose a patent until they were given notice, just as now.
So instead of having the applicant pay for one examination, you would have every market participant pay for independent examination of every registered patent they found relevant? You’d have each patent being examined hundreds of times, and thousands of invalid patents. Talk about a barrier to entry.
While no doubt a boon to practicioners who would be feverishly filing invalid patents for the big players, the drag on innovation, the economy, individual inventors (and their now worthless patents), and startup capital would be staggering.
Some of you should consider thinking things through before advocating them.
Cherry picking by an agency that not too long ago called those making the decisions Super Examiners and who, to this day, call their immediate boss Mr. Kappos.
Make no mistake, the BPAI is not a neutral arbiter.
“and you’re doing it wrong”
Here’s the “right” way of doing it at Mar 08, 2012 at 09:41 AM
link to patentlyo.com
Les — you also make the big mistake in assuming that all appeals go to the BPAI. I think the number floating around is that 50-60% do not make it the BPAI (i.e., the Examiner pulls them back — either to come up with new rejections or to allow). That means that the ones cherry-picked by the USPTO to go to the BPAI get reversed anywhere between 50-60% of the time.
Combine those numbers and you see how Examiner does a very poor job.
I want in on this seminar as well.
IANAE could make millions … if he was’t a fraud.
“read the specification, conduct a prior art search and issue, if appropriate a clearance opinion based on the disclosed invention.”
Just like one would do now; but without the multi-BILLION dollar innovation tax sucking from the innovation community that goes to a federal agency that no one is really happy with anyway.
Sign me up for registration only.
fish, read the specification, conduct a prior art search and issue, if appropriate a clearance opinion based on the disclosed invention.
And so when a third party is doing a due diligence to determine whether he can make, use, sell or import a product, what does he do when he finds a few arguably relevant registered but not examined patents?
Let’s save everyone a lot of money by registering patents, and by requiring a very stiff fee, say $20k (and large fees for excess claims), for anyone who wants a substantive examination. For that $20k, the examination should not be arbitrarily limited by any particular number of actions on the merits. Prosecution should be closed only when the applicant is no longer being diligent or is no longer providing meaningful responses.
Registered patents can be challenged, if necessary, using inter partes review. As MaxDrei has often commented on European practice, that is where the patents are really tested for patentable subject matter.
LOL That is true. By the way, have you (or anyone else) seen the issue I raised below mentioned or discussed? Specifically, if the PTO was already supposed to set fees for things such as ex parte reexams to recover their average costs for that function, how come they just came out with their internal cost data which is way out of whack with current fees? For me, it really raises questions regarding their cost data. And, since they already had the stautory authority to set many fees to their average cost to the PTO, why now? Why were fees such as the $2,520 ex parte reexam fee set so far below the PTO’s actual average cost?
Sorry,
Like the chart reading, I have my names backwards.
James,
You should note to Les that the pure affirmed in total itself runs at or near 50% for the last seven years in a row. You cannot get to a 60-70% reversed when at least 50% is pure affirmed.
First RCE should be cheap with each successive one becoming more expensive
Les,
You should note to James that the pure reversed in total itself runs at or near 50% for the last seven years in a row. You cannot get to a 60-70% rejection when at least 50% is pure affirmed.
Express, implied, what’s the Dif?
It’s a What-Ev legal system.
You check the chart again. 15 years are shown. In 10 of those years over 50% were reversed or reversed in part.
I know what “in the aggregate means.” But there certainly is no “express direction in the AIA” to use fees to control practitioner behavior.
Section 10.
The key is to understand the clause “in the aggregate.”
You may also want to check the legislative record
“Yes I do, and you’re doing it wrong.”
The fact that you think you can make such a statement without facts says more than the statement itself.
You are a fraud.
Unfortunately, returning fees to successful applicants would provide and institutional incentive for the affirmation of rejections, independent of the justice of doing so.
Check the chart again, its 60-70% affirmed atleast in part. As for the good rejection, is that someone is doing the exact same thing as your client has in the specification, word for word. Otherwise, an amendment?RCE occurs.
If the rejection is withdrawn, can that be equated to an RCE. In other words, what we have might not win at the board and thus lets try again.
If you are getting different results than Rush and I (and every practitioner I know), please put on a seminar. I’d like to attend.
“If the Office makes a mistake on the first action, the second action is non-final. Read the boilerplate in your next final action.”
Maybe, if you get a good or honest examiner. That happens about 25 % of the time.
The rest of the time you get someone gaming the system that generates a set of pages that looks like an office action but is in fact almost randomly selected paragraph numbers pasted into ones claim language. And then does not even read any response after final.
“That assumes the last office action was defective. 60%-70% of rejections are affirmed at least in part by the Board. Maybe attorney work product should be free to your clients when you file an appeal, like the warranty on a toaster.”
Funny I read the chart Dennis Posted a few days ago just the other way around. 60 to 70 percent of rejections are reversed at least in part.
And that is of the rejections that make it to the board. It doesn’t count the 50 percent that are allowed or returned reopened prosecution after a Request for Pre- Appeal Review or that are allowed or reopened after the filing of the appeal brief.
“Most good rejections result in amendments/RCEs, not abandonments.”
If its a good rejection, there’s nothing to add by amendment. You are mistaken.
Do you actually practice? The supposed quality of examiner actions is fully met with the obstinancy of refusing to listen to reason.
Yes I do, and you’re doing it wrong.
Where does it say that? To my knowledge, all AIA says is that the Director can adjust fees and that he must disclose “the specific rationale
and purpose for the proposal, including the possible expectations or benefits resulting from the proposed change.” Am I missing something in the AIA?
“That’s what we get paid to do”
Do you actually practice? The supposed quality of examiner actions is fully met with the obstinancy of refusing to listen to reason.
Thankfully the RCE gravytrain was diminished (or do you think applicant’s representatives are responsible for that too?)
At least you have the Appeal track correct. But did you notice the building queue and higher prices awaiting that option? And the lack of accountability for the examiners (many many many) who bail on the process is a lost source of improvement. In fact, I just finished paying an issue fee for an allowance without any changes or further arguments in my appeal brief than what I had included in my Office Actions.
That is backwards. Prioritzed examination should be the default; allow Applicant’s the ability to pay extra to have their application examined later in time. After all, why not have Applicant’s pay for the benefit they are getting by having examination delayed?
I choose option B. Give use a standard long track and a pay for play short track.
Thanks for the option Kappos.
Pre-AIA, many of the PTO fees were supposed to be set based on the actual cost to the USPTO for that service/action. For example, per 35 USC 41(d)(2), the Director was supposed to set a fee for requesting an ex parte reexam to recover the extimated cost to the PTO of such service. Given that, I have a hard time understanding how the PTO can now claim that a reexam costs them $16,648–yet they are currently only charging a fee of $2,520 for a reexam request.
If the Office is made to admit that they made a mistake on teh first action,
That’s what we get paid to do, when the Office makes mistakes. If the examiner stands by a demonstrably bad rejection despite competent advocacy by the applicant, that’s what appeals are for. But again, that’s assuming we always do our job right.
“or attempt to control practitioner behavior”
This was an express direction in the AIA.
“If the Office makes a mistake on the first action, the second action is non-final. Read the boilerplate in your next final action.”
Abide by this if you figure that boilerplate is a good thing.
In reality, that first line should read If the Office is made to admit that they made a mistake on teh first action,
It is a small but not insignificant difference.
The system in many ways is designed under the assumption that the Office is perfect and mistakes are never made. Second action finality is justified by such an assumption.
Second action finality is justified by the assumption that the applicant is perfect and mistakes are never made.
If the Office makes a mistake on the first action, the second action is non-final. Read the boilerplate in your next final action.
He concentrates on adequate overall funding, and ignores the far more important issue of apportionment of the fee revenue. First, let’s remember that the PTO got a 15% bump in almost all fees in September. If they can justify more, great — increase the overall fee package to get to that necessary level. Second, the proposed huge increase in RCE fees are what have people angry, especially when we all know that in most cases RCE’s are necessary because of dilatory PTO examination practices.
The main issue is to price each service at reasonable levels, and not use the fee system to discipline applicants or attempt to control practitioner behavior.
Les: “Appeals should be free, like the warranty on a toaster.”
That assumes the last office action was defective. 60%-70% of rejections are affirmed at least in part by the Board. Maybe attorney work product should be free to your clients when you file an appeal, like the warranty on a toaster.
Les: “When examiners present good rejections, applications are abandoned.”
You don’t appear to be a very experienced. Most good rejections result in amendments/RCEs, not abandonments.
I agree to a point.
Successful appellants (and I include those where the rejections are withdrawn when the notice of appeal or the appeal brief is filed) should have their appeal fees refunded – it will provide an extra incentive for the PTO to exercise improved judgment on the cases that they allow to reach the Board. But it isn’t the case that applicants don’t appeal cases they don’t think they can win (>1:1 odds of success) – applicants can appeal even if the odds are only just non-zero, or to keep the case pending; and free appeals for all would turn the already bad Board backlog into a nightmare.
But appeal fees, even for losing appeals, need to be realistic – the PTO shouldn’t use them as a stick to prevent appeals in situations where the rejection is arguably incorrect even if ultimately upheld.
The system in many ways is designed under the assumption that the Office is perfect and mistakes are never made. Second action finality is justified by such an assumption. However, examiners are often inexperienced, ignorant and incompetent. Under those circumstances, the only chance for an applicant to get a fair hearing is to file an appeal. The fee proposals in regard to appeals are alarming. Moreover, the applicant that draws the incompetent set of examiners or examiners that are simply stubborn and that simply will not do any work for which they are not awarded a “point” (such as reading and considering a reply after final rejection) should not also suffer the injustice of an onerous appeal fee.
Appeals should be free, like the warranty on a toaster. If you get a bad toaster, you bring it back and get a new one for free. Likewise, the correction of a bad application prosecution should be free.
Let the drain on resources of free appeals be an incentive to PTO managers to improve prosecution quality and to think twice before making an action final. Applicants don’t appeal cases they don’t think they can win. Appeal brief preparation alone is too expensive for that. When examiners present good rejections, applications are abandoned.
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