Inspector General: USPTO Needs to Strengthen Patent Quality Assurance Practices

by Dennis Crouch

In a report sharply critical of the US Patent Office, the Department of Commerce Inspector General’s Office has concluded that patent quality is not up-to-snuff.  Read the report titled “USPTO Needs to Strengthen Patent Quality Assurance Practices.”

The report makes four basic conclusions:

  1. USPTO policies are “ineffective” at measuring whether examiners are issuing high quality patents.
  2. USPTO “quality metrics” may underrepresent the examination error rate.
  3. USPTO is not collecting data that could improve patent quality.
  4. USPTO’s response to “patent mortgaging” is likely insufficient (here, patent mortgaging refers to examiners intentionally submitting low-quality work in order to meet a quota that is later re-worked).

The OIG has asked the USPTO to respond to the report within 60-days with an action plan responding to the criticisms and recommendations of the report.

Regarding quality, it is clear that the USPTO is good at measuring production and docket management, but the PTO tends to lack either the skill or will to ensure that each office action is of a high quality. Thus, for instance, from FY11-FY13, only seven examiners received warnings for low quality applications while 500 warnings were issued for production or docket management failures.  The concern is that we’re pushing examiners to keep-up rather than conduct the highest quality examination.

Although it was clearly written by outsiders who do not fully understand the system, the report does offer important insight that Director Lee should use when pushing toward higher quality patents.

476 thoughts on “Inspector General: USPTO Needs to Strengthen Patent Quality Assurance Practices

  1. You think patent problems are not on the public’s mind?

    You think it’s all just a misunderstanding?

    When John Oliver is drilling you into the ground for 15 minutes on Sunday night in front of millions of Americans, you may need wake yourself up.

    link to youtu.be

    1. One can tell that that piece was heavily influenced by the Googles.

      1) Trial attorneys are the ones that stopped its progress? What about all those scholars that signed a letter saying they didn’t think it was a good idea? You know the real scholars–not the Lemleys–but the ones that have been at it before it was fashionable and actually care about the law.

      Etc…The entire segment was terrible.

      But we know that you infringers want to keep pushing for the removal of the patent system so you can dig out more IBM innovations to incorporate into your software.

      1. ya in our case the IBM “innovation” is from a bankrupted crash & burn artist, down thru several other failures before IBM inherited the garbage. An innovation “invented” in our mom’s living room almost 20 years ago.

        Keep digging Night. They put segments like that on HBO because Americans are inveterate thieves, not because your beloved system is rotten to its rotten heart.

        1. An innovation “invented” in our mom’s living room almost 20 years ago.

          As already explained to both you and your brother (and which can – and should be – confirmed by your counsel), this “we did this in private so many years ago” is a meaningless point if you cannot show that this has achieved the legal status of prior art.

          The patent system was designed to be a stick to beat those such as yourself that invent and do not share.

          You need to recognize this fundamental aspect of law.

          1. as explained to you anon, countless times, the invention was sold and in use by the public well before the priority date of the patent. but I know you don’t read comments directed toward you anyway….

          2. As already explained to both you and your brother (and which can – and should be – confirmed by your counsel), this “we did this in private so many years ago” is a meaningless point if you cannot show that this has achieved the legal status of prior art.

            A public use is a use not subject to secrecy to the inventor or for experimentation. A single use by a single person can constitute a public use. Your definition of public is skewed.

            1. Random, while I agree with you on the law prior to the AIA, I am not so sure that post-AIA that the law is not changed. One of the cases the AIA intended to overrule was the Supreme Court case about the corset fastener where the Supreme Court announced the rule that even a non informing use was a public use if there was no requirement of confidentiality . Henceforth, I would think, the law will require more — that the public actually be informed in some fashion.

              What do you think?

              1. One of the cases the AIA intended to overrule was the Supreme Court case about the corset fastener where the Supreme Court announced the rule that even a non informing use was a public use if there was no requirement of confidentiality .

                There’s nothing in the new 102 that suggests it wouldn’t still apply to Egbert, what language did so? I don’t know how you get around the logic in that case that there are plenty of patentable things which by their nature cannot be seen (i.e. “informing” if thats what you mean) yet which the logic for their bar would still apply.

                Besides the question isn’t a question of non-informing, the question is what constitutes the “public” and it’s clear that public doesn’t mean open and notorious (i.e. the opposite of privacy). Public means anyone who doesn’t owe a duty to the inventor. Clearly the woman, even if she never wore the corset outside, constituted a member of the public and HER knowledge creates a 102a bar and her use creates a 102b bar, and both of those bars carry forward into the AIA even if the use was hidden from the general public.

                1. Let me say it like this Ned – WL Gore & Associates, Inc. v. Garlock, Inc., 721 F. 2d 1540 (third party trade secret is not public use) is wrongly decided because the question is not whether the general public learns of the trade secret, but because the trade secret was not a first party trade secret. The facts of that case are substantially similar to Electric Storage Battery Co. v. Shimadzu, 307 US 5 (third party use of machine in their mfg plant is public use).

              2. btw Ned, You need to look at 102(d)(2) under the AIA, which I didn’t even recall, w.r.t our other debate. Turns out it’s pretty clear you only have to be entitled to claim it.

                1. “entitled to claim”

                  Now, what does that mean, precisely? It is this kind of ambiguity that pervades the AIA that is going to cause endless problems. It could be that the drafter of the language didn’t understand what the issue was, or that he or she purposefully intended to create a mess.

                  A claim for priority is distinct from entitlement.

                  Thus “entitled to claim” mixes metaphors.

                  But focus just a bit more. What does 119, 120 or 365 actually say? These statutes cannot be ignored. One is entitled to he benefit only with respect to “inventions” and with respect to such inventions disclosed in the manner provided by 112(a).

                  Thus, unless the patent or application discloses at least one claimed invention supported in the parent in the manner provided by 112(a), there is no priority at all. Nothing.

                  I still do not buy the idea that any subject matter in a parent is prior art regardless that there is no entitlement to priority. The parent will only be treated in the manner of an originally filed application if the patent or application claiming the benefit of its filing date is in fact entitled to that filing date.

                2. “entitled to claim” Now, what does that mean, precisely?

                  It means that the documents share an inventor and co-pend such that one could have claimed priority for the subject matter by stating that they claim priority to the document.

                  What does 119, 120 or 365 actually say?

                  But the reference to these statutes in (d) is a reference to the fact that these documents are eligible subjects of the beneficiary action, it’s not incorporating them in their entirety.

                  In any case we’ve done this to death at this point. I suppose I can see your ambiguity, I just wouldn’t rely upon it to win you anything :)

  2. So ah anon, per previous discussion where you decry certain commenters attempting to dominate a discussion, you have made nearly 30% of the 443 comments (at the moment) on this thread. And yet I can discern no meaningful insight other than, of course, that everyone is wrong, and you are right…about something or other.

    Except for the one clear thought that you do manage to get across: that being anti-software patent indicates that one is anti-patent in general; which is an obvious and easily disproved strawman.

    If this thread reveals any actual consensus, it seems to be that 1) the office is hopelessly conflicted by its dependence on its customers for funding, 2) that it’s working as a quasi-registration system in the real world, and 3) that bifurcating examination into separate eligibility /sufficiency v. the prior art search would be a welcome change.

    All wrong, doubtless ?

    1. Not suprisingly, you very much get wrong what I was decrying, which is not volume per se, but volume which fails to acknowledge and integrate the counterpoints made.

      Further, given the well-established lack of your ability to understand the legal points under discussion, your “I can discern no meaningful insight” is itself meaningless.

      Celebrating like-“minded” meaninglessness is the epitome of a meaningless echo chamber and signifies nothing of merit.

      I (once again) implore you to obtain a minimal understanding of this area of law with your counsel (whom I can give my opinion of having performed underwhelmingly so far in informing you) so that you can rise above the bias that so colors your posts here and that you can reach some minimal understanding of the law.

    2. Meta, thanks for this post. Anon is a problem here, and has always been a problem because his posts are generally of the type you identified.

      He and Night both share the view that anyone who is anti-software patent is anti-patent system. At the same time, they will not truly listen to anything anyone else says that would even tend to limit software patents to otherwise eligible subject matter, a la Diehr and Alappat.

      But, anon is particularly abusive with all posters with whom he disagrees — and on any topic. Everyone notes this. Yet he is allowed to remain. One wonders why.

      1. Ned – you and the Malcolm Echoes deserve forceful repudiation from the fact alone that you actively engage in drive-by monologist that is the internet style shout downs.

        Regardless of ANY discussion, you blindly and willfully repeat mischaracterizarions to advocate your desire ends.

        Just think about it.

        I’m still waiting for your choice over on the Hricik side of the blog.

        1. Perhaps you are right anon that Malcolm and I should be singled out. But the problem is, anon, is that you do not single us out. You treat everyone you disagree with in the same abusive fashion.

          1. Rough? Yes
            Thorough? Yes
            Unassailable in facts and law? Yes

            Abusive? Not at all.

            Sure I use my fair share of ad hominem and have a devastatingly rapier wit, but no one has the command of law as do I, so it is quite evident that the prime complaint you have is that my views do not align with yours.

            After all, we have seen you call 6 an Einstein merely because he agreed with you, and you overlook the FAR worse and exceedingly empty posts by Malcolm because you two share a desired ends.

            How is your choice coming along over on the Hricik side?

  3. Removing comments noting the “one way street” editing only makes the perception of bias stronger.

    That pain that you think you feel is self-induced.

    1. I think this blog is moderated in very responsibly and fairly. anon is obnoxious indeed, but not hardly by standards prevailing elsewhere on the ‘tubes. In fact I appreciate his or her energy – it can be a stimulus to interesting conversations….carried on by others 😉

      1. Martin, then perhaps periodic suspension might be in order that he learn to be a little more respectful of others.

        I can hardly imagine him being successful for his clients if he treated examiners the same way he now treats us.

        1. Ned,

          I treat examiners extremely well in professional dealings with them.

          Then again, they act professional in dealings as well, and you NEVER see the kind of C R P that gets paraded out on these boards (as done so by my antagonists). Willful disregard for facts and law on such a drive-by monologue Internet style shout down does not happen.

          I correct the examiner.
          The examiner learns.
          Life moves on.

  4. What is the quality problem identified by the report? From the report:

    Ensuring the issuance of high-quality patents has been his USPTO strategic initiative for many years. High-quality patents are generally considered to be those whose claims clearly defined and provide clear notice of their boundaries, while low-quality patents are those that contain unclear property rights, overly broad claims, or both. Increasing concerns regarding abusive patent litigation and ambiguous patents heighten the need for USPTO to ensure adequate processes are in place to promote issuing high-quality patents.

    In reading the report, there is an assumption that the Office is actually examining to produce clear, non functional claims. If they are not, and I think they are not, then checking for errors by some review mechanism is entirely beside the point.

    For one, I am not sure the PTO is examining for functional claims at all. Second, I am pretty sure the office is not examining to determine whether claim terms are actually used in the specification. This is especially important if a claim term in question is used to distinguish the prior art.

    I have also argued to I am blue in the face that the compact prosecution paradigm is not designed properly because the claims have to be clarified before a meaningful search is conducted. This is more than just explaining to the examiner what the invention is. It actually means, to me, that the 112 problems are eliminated from the claims before a search is conducted. This is not simply an interview, but a first action on the merits directly primarily at 112 problems.

    1. …and once more onto the dissembling Merry Go Round of “functional”…

      Ned, you really need to learn how to see the rhetoric when it appears in government documents.

      Maybe after the Executive responds to Ron Katznelson’s petition…

      (or maybe we can borrow a line from your very own live case in response to the government brief – you seem o be able to see rhetoric at times – maybe this is just one of those “you must be genius when you agree with Ned Heller” things…)

        1. Perhaps not.

          Your mantra against “function” is one based on conflation rather than clarity Ned.

          You really do need to accept what Congress did in 1952.

    2. Historically, most 112 problems were because the drafter used “the” before introduction of an element with “a.”

      1. By the way, I think that here, this is one of the most important discussions to have about the performance of the USPTO. Maybe we need a masters program where patent prosecutors organize as a bar and provide two weeks in Washington tutoring young examiners on the Constitutional intent. Patent attorneys are different than intellectual property attorneys.

      2. Actually, the effort to draft overbroad, unclear claims by applicants has been with us since claims began. I can give you quotes from the 1800’s decrying the systematic effort.

        This is an age-old problem. The law requires clear claims. The Supreme Court requires it. But, until the report here by the Inspector General, no one has actually called the PTO to task.

        It is currently failing. The Federal Circuit, to the extent that it has fostered unclear claims by decisions like Donaldson, has to share the blame.

        Training will help. Quality control will help. But has the office done anything to identify functional claims or claims with indefinite terms and provide guidance?

        Just for example, what has it done about programmed computer or Beauregard claims?

        Does it even look to claims functional at the point of novelty — by suggesting even that one cannot distinguish a machine, manufacture or composition from the prior art by the way it operates, or by a property?

        I see no effort by the PTO at all along these lines.

        1. This is why whenever a claim implies anything that is a function of something, it gets disregarded. You say a screw for the purpose of joining 2x4s you can get a screw for the purpose of joining 5x1s. Applicants never seem to understand that it’s the base structure that matters, not their intended use.

          Claim the structure, put it in writing. That should always be the mantra

          1. Claim the structure, put it in writing. That should always be the mantra

            It is a great option – but it is ONLY and option. Per the direct words of Congress.

            Your “mantra” is more than just a little off.

    3. Want to make a good start?

      Director’s edict:

      1. Claims to programmed computers shall be rejected under 101/112(b). One cannot define a new machine in terms of what it does.

      2. Ditto, Beauregard claims.

      3. Any claim to a machine, manufacture or composition: claims cannot be distinguished from the prior art by a function or property. 112(b) in view of Nautilus.

      4. Generic terms must be enabled for their full scope, otherwise, they will be considered functional.

      5. All claim terms that serve to distinguish the invention from the prior art must be used in the specification to describe structure, materials or acts disclosed as provided by 112(a).

      6. 112(f), if the applicant relies on corresponding structure, have it incorporated into the claim — 112(b) in view of Nautilus.

  5. As a former examiner, this is completely unsurprising. The key here is that USPTO management has no direct incentive to strictly police office action quality, but they have strong incentives to burn through the backlog of applications as quickly as possible. Applicants can and often do keep applications alive indefinitely through repeated RCE’s. Under this regime, low quality office actions (particularly allowances) are an expeditious mechanism to keep application pendency low. Allowances also generate maintenance fees.

    The PTO’s incentives lie in quantity over quality, so management has designed examiner incentives to likewise emphasize quantity over quality. Since the implementation of the new count system in 2010, allowing has been a more efficient way to make production than rejecting. Meanwhile, the threat of quality assurance reviews all but vanished after the John Doll era. The PTO has designed examiner incentives to dispose of cases as quickly as possible with minimal regard for quality.

    We should bear in mind, however, that the PTO’s emphasis on quantity is not necessarily unreasonable. Less than 10 years ago, the PTO was nicknamed the “Rejection Office.” Implementing stricter quality controls, such as the examiner incentives in place under Doll, likely would reduce the allowance rate, increase pendency, and frustrate practitioners and applicants. At the very least, the PTO should make an effort to provide accurate measures of patent quality. The question of whether the public would benefit from closer scrutiny of patent applications is stickier.

    1. The Patent Office needs to review the “quality” of rejections as much as the “quality” of allowances.

      Under “Reject, Reject, Reject” they didn’t do that.

      As far as I can tell they still aren’t doing that.

      1. I have always stated (but so often over-looked by my detractors) that rubber stamping of either Accept-Accept-Accept or Reject-Reject-Reject is wrong.

        Both Type I and Type II errors are still errors.

      2. No one, quality of the process is a minor goal. The overall objective in validity.

        Reject, reject, reject appears on its face to be an effort to get the patent examining corps to stop issuing so many invalid patents.

        1. Reminiscent of the phrase “the only valid patent is the one that has not yet appeared before us

          Quacks like anti-patent propaganda…

    2. Eric, exactly.

      Cost, time, quality — choose two.

      Kappos chose to emphasize time. Quality, in terms of validity, had to suffer — and, so long as no one put in place any metrics that looked at validity rates, Kappos could pretend he was doing a great job while ultimately failing.

      Finally someone looked into the PTO and found out the truth. Was it Obama himself or Congress that called for a review. But unless the new Director takes validity rates seriously, she is going to become an embarrassment, which is not good in politics.

      But Kappos’s time in the chair is done. His reputation is, IMHO, not going to be a good one.

      1. Two points:

        (1) I would not say that Kappos failed. His administration implemented policies that reduced application backlog and pendency, and those benefits likely came at some cost to quality. Whether these policies were on balance positive is a matter of perspective.

        (2) The PTO’s metrics that purport to measure patent quality lack credibility. There is a reasonable debate to be had over the appropriate balance of emphasis on quantity versus quality, but the PTO should at least be transparent about the parameters. Publishing credible quality information is a necessary first step for informed public debate, and the PTO has not yet met this obligation.

      2. Your spin is egregious Ned, as clearly Kappos’ emphasis was NOT so strictly confined to time.

        If it where, then he would have accelerated the Reject-Reject-Reject mantra.

        Wake up son.

    3. “Allowances generate maintenance fees,” suggests that quality issuances are influenced by economic factors in the USPTO. I’m sure the budgetary analysis calculated maintenance fees for the life of every issued patent. In practice, with the ever increasing franchise fees, many patentees allow their patents to expire after the first or second maintenance fee.

      In practice, opting to allow your application to be published, is the biggest fraud by the USPTO. After publication, the Examiner sees no reason why the patent should issue since the exchange of a limited monopoly for public disclosure is moot since the government already has the disclosure in its pocket. I’d like to see statistics on whether this belief from personal experience has validity.

      1. Your paranoia aside, what happens when an unpublished application reads directly on another application and would have been published more than a year before, but for your new rules?

        How then would he examiner give a good prior art search when it’s not published? Would the “outside stakeholders” accept this when it’s not their patent at issue? Which is always what it is like: you all never complain about bad allowances when it’s YOUR case.

        1. Aside from your personal attack, the issue is a good one. At one time examiners would respond to a newly filed application in nine months, giving the applicant a good indication whether he should consider filing foreign applications.

          Not true today. Maybe publication three months after a first action on the merits would be appropriate.

          1. US Provisional–>PCT–>US National Stage.

            One gets a search months after filing, which can give one a good indication as to whether one should spend more money of proceeding.

            If we added deferred examination, one could wait 7 years before paying for examination. This, by itself, would eliminate from the backlog a host of marginal inventions.

            In order to reduce costs to applicants, we could and should give full faith and credit to the international search and proceed directly to examination on entry into the US national phase.

            And, if the claims are all deemed to involve inventive steps at the PCT stage, US examination should consist sole of addressing 101/112 problems, not novelty and invention.

  6. We should all be very wary of this report. Obama has been in bed with Google to try to cripple the US patent system. There are many acts that I could list of Obama’s that prove he is very hostile to patents. Obama likely directed that this report be written. This report may be so that Dir. Lee can really come down hard on patents and just start rejecting everything. We have to be aware that those that don’t want patents are smart this time around. Obama and his Google buddies know how to play public opinion and know how to manipulate the system in their favor (just look at the three Google Fed. Cir. judges or the Google director, or even the Google death squads at the PTO.)

    So, ask yourself, if this isn’t a political tool for Google Director Lee to burn down the system.

    1. A couple of more points:

      1) Go back to TSM. TSM could be outsourced. The examiners could package up what they are looking for and search companies could find it. This would be huge.

      2) GET that good patent attorneys and good companies want good quality patents. It does nothing but step up the demand to innovate. GET that we aren’t stup1d. We know that Google and Lee want to burn our system down so they can take whatever they want. And GET that we aren’t stup1d. We know that Lemley and his ilk are judicial activist bent on burning down the patent system.

      1. Not that the Republicans aren’t falling all over themselves to support the hatchet job going on at the patent office these days.
        As to RCE’s, they are a necessary response to the inadequate search on the first office action, a conciliatory amendment by the applicant getting around the art, and a final action with new art, allegedly caused by the applicant’s amendment. What’s fair about that? So, not only does the Office collect more fees, by policy edict, the new RCE is thrown to the bottom of the pile.

        1. “What’s fair about that?”

          Maybe, and I’m just spit-balling here, if a prior art search was actually done, by the applicant/attny. before being filed (and no, I’m not talking about checking to see if the EPO/JPO/KPO has submitted a search report) the applicant could actually anticipate the most direct art that’s going to be used and then file claims that don’t read on it.

          But that’s never going to happen because that’s not how the system functions anymore. The applicant files overly broad claims, and then simply amends around the art the examiner finds. They don’t start with an assumed allowable claim because that would allegedly “be too narrow”.

          You get the bed you make, and you all have made this one.

          1. “any more…”

            “just spitballing…”

            Maybe you want to understand what the H you are talking about instead of all this spitballing that you are so apt to do.

            Just a thought.

              1. hitting a little close to home…?

                Not at all. Maybe you want to read my comment again and see that it points out that all that you are doing is embarrassing yourself with how little you know of this legal topic.

                Please take the time to inform yourself instead of all this spitballing.

                1. Just cuz you make conclusory statements doesn’t make it true. But heck, if you want to pretend that you do a decent prior art search before filing a patent, go right ahead, whatever helps you sleep at night. Though your comments suggest the complete opposite

                2. Again you try to use terms that you just don’t understand…

                  Tell me then where this requirement to do a pre-filing search is codified…

                  My comments reflect the law – you would do well to recognize that.

  7. There is a paradigm shift at the patent office. The applicant/inventor is the enemy. The most puzzling response I received in a 37 CFR 1.116(e) request to enter a declaration for reconsideration and/or appeal was a typical cover sheet and then a form response with no boxes checked. Is that a legitimate response that sets the calendar ticking? Are we hiring children? Maybe we need an over 65 Club to supervise these errant bureaucrats that are mindless.

    1. The atmosphere has changed. I’ve been told more than once now that the company I represent files a lot of patent litigation so we aren’t going to get a patent. Pretty outrageous.

    2. Richard, undoubtedly the PTO should always be focused, in part, on quality prosecution, but the real problem identified by the Inspector General is that the PTO is not keeping the eye on the big picture – serving the public, and also of course, serving inventors, by issuing valid patents.

      Quality prosecution does not necessarily correlate with quality patents to the extent that the patents issue with significant 101 issues, 112(a) issues, unclear claims, and claims that read on the prior art because of poor searching for whatever reason.

      1. “serving the public, and also of course, serving inventors, by issuing valid patents.”

        You do not have a right to a patent, you have a right to apply for a patent.

        1. >You do not have a right to a patent, you have a right to apply for a patent.

          Why do you lot write this so often on this blog? Offensive.

        2. I believe the American inventor has more than the simple “right to apply for a patent.” The inventor has a right to due process during the examination proceedings to issue what the examiner and prosecutor honestly believe is a valid patent.

          Patent attorneys typically do not seek to issue patents that they know to be invalid. Maybe the morality has changed. Maybe patent mills, (often off-shore) don’t care.

          1. Due process?

            We know how the PTAB handles a new ground of rejection when there is an examiner. As a matter of adminstrative due process, there must be a remand so the applicant can respond with evidence and argument.

            But what if there is no examiner as is the case with IPRs?

            1. I think IPR’s can be brought under control by giving a patent the presumption of validity. Whether “clear and convincing” is the standard or something less, it sure should not be simply a “preponderance” of the evidence.

              Why spent over ten thousand dollars to get a patent when there are financially backed vultures ready to invalidate claims without suffering the accusation of infringement?

          2. “Maybe patent mills, (often off-shore) don’t care.”

            1) They don’t. That would be bad for business.

            2) There are plenty of “patent mills” domestically that don’t care either.

            Really, I’m not sure who cares. This blog is full of people complaining about alleged improper rejections. But the number who allege improper allowances in their cases? Not many.

            Now there are people who will talk about how improper allowances, in general, are a bad thing. But nobody posts to this board seeking advice on an improper allowance on their specific case, whereas the opposite is true with regard to rejections.

            Its just a game. Pull the lever, get a prize. Didn’t get a prize? Boo. Get a prize you shouldn’t have? yay!

            However, none of this is news.

            1. Let me go a step further…

              Has anyone here ever called a SPE or contacted a Director to complain that an Examiner has improperly mailed a notice of allowance on a case that should not have been allowed?

              I have NEVER heard of someone doing this. EVER. But I’m sure someone out there has to have done it. Maybe?

                1. “I’ve never called a spe, but I’ve had clients concerned enough to have me file additional dependent claims after allowance.”

                  True, that happens. But that isnt quite the same as lodging a complaint is it?

                  I suppose it is SOMETHING tho. Even though your client still walked away with (presumably/potentially?) invalid claims.

                  I’m really looking for someone who got a NOA and called the SPE/Director to point out that Ref. X clearly teaches/makes obvious, or that limitation Y is clearly indefinite and should not have been allowed. Someone who fought, even briefly, to not have an improperly allowed application issue.

                  I think I’m looking for a unicorn.

                2. If this is such a unicorn, its time everyone dropped the B$ of “[p]atent attorneys typically do not seek to issue patents that they know to be invalid[.]”

                  Clearly, if you are not willing to make an effort to halt the issuance of improperly allowed claims, you are not seeking valid claims but merely issued claims with validity being a preferred (but not necessary) outcome.

                  That is what is really going on.

                  Or maybe there is a herd of unicorns around here I haven’t seen yet.

              1. yea… how exactly are you going to explain to your client “The PTO allowed your patent, but they shouldn’t have, so I called the manager and they rejected it under the new information, isn’t that great?”

            2. Unfortunately, this wasn’t the ethics “back in the day.” No reputable patent attorney wants to see his patent invalidated. If nothing else, there is the liability issue. Does anyone remember the fraud squad at the PTO? Heck, you do the good deed of filing a reissue and cite art the inventor was sitting on and the attorney is the subject of the investigation. What saved patent attorneys was that the “kill the messenger” philosophy wound up with no one wanting to be the messenger.

              1. “Unfortunately, this wasn’t the ethics ‘back in the day.'”

                Agreed, even in my relatively short time there has been a noticeable shift in the perception of how ethics interplay with prosecution. Over a longer run of experience, I’m sure the deterioration would have been much more pronounced.

                There is no fraud squad any longer (as an example OED has almost completely abandoned enforcing rule 56). You even have some people on this board actively arguing that OED lacks the authority to police such matters.

                Beyond all this, margins continue to shrink on pros work. Maybe the competition is getting too stiff and money getting too tight for people to bother worrying about ethics any longer.

                None of this bodes well for the future. Eventually the public will turn its eyes to the bar and start assigning blame its way as well. Nobody should look forward to that day.

          3. “Is valid” is a higher standard of honest belief than issued and presumptively valid. How typical is seeking of patent’s issued that apply 112 (a) & (b) to that standard?

            (Dude, full-on stink eye on morality, heavy local vibe.)

            1. Local, as in American inventor vs. UN freedom to copy? And you apparently profess to represent “the People?”
              Remember, in the us, people are inventor applicants, not corporations. Corporations obtain patents by contract.

              1. No.Local as in get your tires slashed here for surfing in the murky waters of “used to be” ethos. At least ours were.

                We are person inventors, and we are professional users of the system. FTO is dependent on the quo, which adds to the “fuel of interest” for new invention. That is not a desire to copy, it is not disclaiming of property rights, and has nothing to do with specious David or Goliath stuff.

                The simple question was, does the seeking of honest actual validity extend to honestly seeking 112 a and b? Is it pro forma, is it on the PTO or is “the sad reality” a prophet?

                1. Well, having surfed the California coast, I grok. But, put together an honest application faced with the competition from Japan where best mode don’t count for doodilly squat, there results an invitation to cheat.

                2. It is far from an invitation to cheat to attempt to maximize patent coverage under the law (using the ladders of abstraction).

                  Far too many people commenting here lack this basic understanding and seek to employ the political rhetoric that “attorneys are grifters” and are ONLY out to “cheat,” thus impugning the entire patent system.

                  Look closely – all of the anti-software patent arguments are really just anti-patent arguments. Remove the rhetoric, remove the ad hominem, look at the substantive points (using that term very loosely), and it is plainly evident that the words of Congress are under attack by philosophies wanting a different set of laws than the ones put in place by Congress.

                3. Anon believes you need to play his chutes and ladders game of illogic by subscribing to his pet “ladders of abstraction” theory and his nonsense “sets” of printed matter theory while ignoring the “edicts” of the “royal nine” in order to have “basic understanding.”

                  What a sad joke.

                  Here is a better suggestion…

                  Ignore him.

            1. Anon2.0, what about revoking a patent? I would presume that, once issued, that the constitutional provisions regarding due process that apply to all property would also apply the patents.

              Would you not agree?

              1. Is all property treated equally Ned?

                Is property that is deemed to be treated under public concerns said to lack due process just because the public treatment is different than private treatment?

                Perhaps you might return to the Prof. Heicik side of the blog and continue the conversation, or have we (yet again) reached the point that the discussion includes inconvenient items for your “advocacy pursuits”…?

                1. well, anon, the US Supreme Court has ruled, numbers of times, that patents are constitutionally protected property — they cannot be taken without compensation, and that includes infringement (implied contract); and they cannot be revoked by other than a court.

                  Congress does not have the power to overrule the constitution, now do they?

                2. That’s a pretty dust cloud that you kicked up, but you haven’t actually answered my question, so let me ask again:

                  Is all property treated equally?

                  Look then at your own position about the public/private treatment within the affected world of contracts.

                  You cannot have it both ways.

                  Choose one – or the other.

              2. Yeah, I would, and that’s the problem. If the patent issued by the USPTO is tantamount to a “deed” for property then revoking it would be tantamount to, at least, a regulatory taking, if not eminent domain.

                But, as this might be the case, realistically, I’d temper that utopian view of patents with the experience of actually seeing how this operates.

                So the situation is actually more like a person tells the govt the land doesn’t have a superfund site on it. The govt believes the person and buys the land after giving their inspector 2 minutes to look over the site because any longer and other land sellers would complain.

                Then the govt discovers that the seller didn’t completely disclose the situation, and revokes the sale.

                Who then would argue that this is unacceptable for the govt to do? Sure, you could argue that the land inspector should have “caught” the superfund site within the 2 mins he had to examine then land; but that’s really a superficial issue isn’t it?

                The point here is that the system is 50/50. You can’t expect the patent office to pick up the slack for the outside stakeholders AND at the same time do a quality job on their side. It just doesn’t work.

                1. utopian view of patents

                  There you go again, using phrases that just don’t fit the legal discussion.

                  You remind me of the noob that needs to read (and understand) Sun Tzu – you want to wage a war on q terrain that you are absolutely clueless about.

            2. Oh be quiet.

              Your incoherent ramblings and snide comments do nothing to foster discussion.

              If you were such the legal genius you hold yourself out to be on here you
              1) wouldn’t be “anon” you’d actually have the integrity to disclose your name like Heller, Peterson, etc… have; and

              2) you’d actually be right and not accusing people of logical fallacies and then engaging in fallacy fallacy – an argument has no value because you’re a pedant – to “win” in your mind.

              Grow up.

              Oh, and I can’t believe you actually argued above that functional language should always be given patentable weight. Yeah, you really know what you’re talking about

              1. If you were such the legal genius…

                LOL – the failed gambit of “use your real name” – coming from someone who does not use their real name.

                Way too funny – and surely not in the way that you intended.

                But please, continue to show how “grown up” you are as you ever seek to copy the styles that you see while lacking a true understanding of the substantive points.

                You did a much better job when you limited your posts to funny gifs.

  8. Interesting discussion. I have only two observations:-

    i) The ABA JD syllabus long provided for only 4 semester hours of optional work, which is less than the recommended study time for the patent bar. I understand that this has changed, but obviously being an attorney is no guarantee of ANY knowledge of patent law. Of course, I am a patent agent, so I would say that! Having a reg. number doesn’t require a huge knowledge of the subject, but more than being an attorney, which is diddly squat. Hence, requiring examiners to be attorneys would have very little benefit. Making them pass the patent bar might achieve something (although POPA would never allow it); and

    ii) Max Drei’s comments on searches are spot on. There has never been much doubt in my mind that search quality is very low in the USPTO, whether that’s relative to the EPO or just generally. Maybe they really don’t have enough time to do good searches, but BRI enables applying the results of a vague keyword search to more-or-less unrelated subject matter. They seem to devote more effort to peculiar claim constructions of the wrong art than to actually looking for the right art. No doubt this can also be explained in terms of incentives, or lack of time? No doubt it can also be justified in terms of making us clarify the claims (often originally written by foreign associates with little command of English). No doubt either that citing the best art the first time would result in fewer office actions.

    Ah, well. Never mind.

    1. I think it is more important to require examiners to be good engineers (or chemists, biologists, etc.). Some how the patent system has lost its common sense. Being a lawyer will not help the general, front-line examiner. The prosecuting attorney, should recognize this limitation, and develop a report with the examiner to work toward the issuance of a good patent. Now it is chaos.

        1. It would help if examiners had law school educations, but it’s not necessary. They could be easily trained in evidence and administrative law and civil procedure without the need for them to get 80+ credits including classes in family law, trusts and estates, contracts, torts, criminal law, etc. They don’t need to waste their time on those subjects.

          The most important thing examiners need to be taught is objectivity (i.e. how to find relevant evidence, evaluate and weigh that evidence, determine facts from that evidence, and apply the law to those facts). It’s a skill that can, and should, be taught. But it can’t be taught by anybody in the PTO because as it’s clear to anybody who’s actually practicing in front of the PTO that all the examiners are taught is how to reject. Maybe have a rotation of newly hired APJ’s (who mostly have experience outside the PTO) teach the classes.

          The curriculum should include what every first year law student is required to go through: the moot court competition. Where the students have to brief, and orally argue, both sides of a case. That simple exercise would do more to improve examiner quality than all the currently useless training they are receiving.

          1. I agree. Legal training, necessary for a good examiner, is different from being a lawyer. The joke was that all the lawyers working for the USPTO are in the trademark office and all the engineers and scientists are in the patent office. There simply aren’t, or weren’t, a lot of science trained lawyers that didn’t opt for private practice or corporate representation. Follow the money.

    2. Alum, I see you do agree that if one is searching the claims and not the spec one has to clarify the claims first.

      This is why I like Random’s proposal to have a two-stage examination by two different examiners, the first fully dedicated to issues like 112 and written description, and the second to examining the clarified claims.

  9. If you want to make real improvements to PTO quality, it will take a complete reworking of the whole excamination system. I am talking everything from start to finish in the process, probably including some changes on the applicant side. I honestly do not think that anyone, in or out of the office, is willing to make the drastic types of changes that would be necessary. We all want better quality (or the vast majority, anyway), but I doubt those in charge at the PTO or the various outside groups (be it AIPLA or other psecial interest groups) would be willing to take those meassures.

    Just throwing some extreme thoughts out there, things could include:
    1. Have separate sets of SPEs (for lack of a better term). One set of management and one to just review and sign cases. These later SPEs would lawyers and would carefully review every case they sign. Errors in cases turned in for counting could be used in the PAP even though the error was not mailed out.
    2. Very few primaries (see 1, above). Only those that have demonstrated high quality for extended persionds of time & have had additional (& continuing) legal training.
    3. Have a larger OPQA that reviews a much larger % of cases each year (currently, for 1 TC, OPQA may review about 900 cases for 1000 examiners each FY for the “error rate”. While many other types of reviews are also done, these do not count towarsd the office error rate, but can be used in the PAP against the examiner.) Every examiner would get maybe 5-10 cases reviewed each FY in the new examining world.
    4. Require an interview prior to the 1st action in every case to ensure that the applicant and examiner are on the same page as to what the invention is directed to and to try to clear up possible 101 & 112, 2 issue before 1st action.
    5. Drastically increase the amount of time an examiner gets to work on a case (maybe double?). This would be needed in view of the higher degree of quality that is expected.
    6. Drastically change the PAP plan so that production has less of an impact & qulaity has a larger impact on the final rating. Also changes as to what qualifies as an error.
    7. Get rid of ODPs.
    8. Limit the applicant to a set number of claims to be examiner (like the proposed rules a few years ago). They can add as many dependents as they want beyond that number. This could help to focus examination to what the applicant believes they actually invented & not waste anyone’s time one clearly obvious dependent claims.
    9. Better training of examiners and reinforcement of that training by te SPE reviewing & signing the cases.
    10. Better search techniques taught & used by examiners to find the best prior art.
    11. Drastic changes to the count & production system.
    12. etc.

    Now, these are not individual proposals but an example of the lengths that we would have to go to really improve quality. So, no need to pick apart individual points :) If we are not willing to accept that drastic changes like these (all together) need to be made, then all we can do is nibble around the edges & maybe make a little improvement here & there but not a significant change to overall quality.

    1. Re this 4. Require an interview prior to the 1st action in every case to ensure that the applicant and examiner are on the same page as to what the invention is directed to and to try to clear up possible 101 & 112, 2 issue before 1st action.

      Note that in this very thread you can find allegedly seasoned applicants who are evidently still very confused about the basics of subject matter eligibility. Somehow they are still clinging to the mythology that comparing claims to the prior art when performing an eligibility analysis is unseemly. Presumably the PTO is not so confused, at least not across the board.

      Given the level of confusion about eligibility expressed by so many alleged prosecutors on this board, it’s not suprising that so many rejections appear “bad” to them.

      Understanding why the prior art is important in an eligibility analysis is easy. If you can’t grasp basic stuff like that, how in the world can you be expected to understand what obviousness and enablement mean?

      1. >that comparing claims to the prior art when performing an eligibility >analysis is unseemly.

        Not unseemly. Against the 1952 Patent Act that the SCOTUS is ignoring.

        1. How can you judge eligibility without comparing the claim to the prior art? I don’t even understand.

          The claim just includes “A method for..” so it is eligible because “method?”

          I don’t even begin to understand.

          1. I think any person that understand patent law knows that Alice is judicial activism and intended to give judges a free ride to invalidate any claim they don’t like.

            If as you say, you need to compare the claim with the prior art, then Alice then overrules Graham, or at the very least modifies Graham. Moreover, how is it that in Alice the judge just contemplates what they think might be in the prior art and generates nonsense whereas in Graham there is a real procedure to follow that includes facts.

            You see no scholar of patent law could say that Alice is not judicial activism and is not bad law.

          2. And, go, I realize that you are a ridiculous version of a poster that @pes the paid blogger, but ……

            The “judicial exceptions” are all separate categories. The claim can be analyzed for containing a judicial exception. The Alice fiction that you have to look at the prior art to know if a claim is abstract is total nonsense. ABSOLUTE NONSENSE.

            The ladders of abstraction let you know if a claim is abstract or not—that is all that is needed. Any engineer would know that.

              1. I’ll even help you out. Really, the following is all you need to know. From Mayo:

                “put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.”

                1. Go, we all know that the SCOTUS has added 102 and 103 to 101 despite the 1952 Patent Act. No kidding. They also added a flash of genius requirement that Congress got rid of.

                  The SCOTUS has not only acted outside their authority they have not reconciled Alice with Graham. Graham explains how a claim should be compared to the prior art and so should be incorporated into Alice or Alice overrules Graham.

                2. And, Go, GET that we know that the SCOTUS is on acid again. We know. The question at this point is how to mitigate Alice and get to the point where Congress is willing to act to clear up the mess that the SCOTUS created.

                  It is not a matter of whether Congress does it, just how long will it take. Do we have to destroy our innovation engine and fall back into a malaise before Congress acts? Maybe.

                3. mitigate…?

                  Hmm,

                  Maybe what we should do is the opposite – take that unlimited “Gist/Abstract” sword and hack at everything and make the Supremes come face to face with their own poor scrivining.

                4. Night,

                  No one but patent attorneys and a few of their clients want these cases overturner. So, i guess we’ll see how much clout these groups have when getting congress to act.

                5. That’s just it go – but watch what happens if we do NOT mitigate but instead wield that “Gist/Abstract” sword to the unlimited bounds that the Supreme Court gave.

                  I guarantee that more than “patent attorneys and a few of their clients will be making noises.

                6. Anon,

                  I see where you’re coming from, I just can’t really imagine a court buying an argument where you try to argue a new toaster oven or chemical compound is abstract.

                  Let’s say we’ve got a claim like:

                  A toaster as in the prior art, but it has a novel configuration of heating coils.

                  I’m curious to see the argument that this claim is abstract that an Article III judge will buy, in view of Mayo and Alice.

                7. With all due respect go, you don’t need (have?) any imagination as the case you yourself present (and tout 9-0) in Alice met the statutory category of 101 and was still deemed “Abstract” after the leading edge of the “Gist/Abstract” blade was used.

                  It may as well been every bit [pun intended] that toaster.

                  This is one reason why your posts mean so little – you tout law that you just don’t understand.

                8. Anon,

                  You still didn’t answer my question.

                  The claim in Alice failed because it tried to protect “shadow accounts,” an abstract idea. The claim I proposed protects a toaster with a novel heating coil. You claim that you can argue that the toaster is directed to an abstract idea.

                  Let’s see the argument! Keep in mind, this argument will be made to a federal judge.

                9. go,

                  I did not misunderstand your question – I pointed out that the premise of your question is false, given the very case you started with (Alice – which is NOT just about shadow accounts).

                  I don’t need to make an argument about toasters, because your premise remains in error.

                  You need to fix your error before I exert any effort to a toaster argument.

                10. Go, no one doubts that the SCOTUS is capable of making new laws.

                  And, Go, some of us believe that patents do promote innovation. And, that the great malaise of the 1970’s ended because of patents.

                  Pretty much everyone that understands the history of this and innovation knows this.

                11. “And, that the great malaise of the 1970’s ended because of patents.”

                  Ended because of patents?
                  Really?

                  How about the well known evolution of the Federal Reserve’s monetary policy during the 70s?

                  Do you really feel patents outweighed the FR’s impact?

                  I’m just not buying your thesis.

            1. Night, the great malaise of he ’70s can be laid directly at the feet of Jerry Ford and Jimmy Carter.

              At home, we had inflation and corresponding tax bracket creep that was killing the American dream. Ford gave us gardens. Carter blamed everyone else, including the American people.

              We had gas rationing and shortages galore caused by price controls — but the presidents kept blaming the oil companies or the Cartels.

              Across the globe, communism never look stronger. We had lost the Vietnam War in humiliation, and Ford stood bye and did nothing to help or ally in ’75. On top of that, we lost another ally, Iran. Add to that, we had the Iran Hostage Crisis that dragged on, and on.

              Patents were not part of the problem.

              When we begin to ask ourselves who was the very worst presidents in history, we have back to back candidates, Ford and Carter.

          3. And to finish my thought.

            Alice is offensively wrong. Something in patent law (or what used to be patent law and is now a SCOTUS acid trip) is abstract if you can’t walk down the ladders of abstraction. It is a 112 issue. Newman lays this out in the en banc Bilski dissent she wrote.

    2. I really, really do not like the idea of a pre-FAOM interview to clarify anything. The claims must be clear on their face. Allowing the applicant to clarify with a private chit-chat with the examiner is not sufficient.

      The examiner should take the claims, the drawings, and without reference to the spec, but based solely on the meaning of the terms to one of ordinary skill in the art, and state his or her understanding of what the various claim terms mean in light of the drawings. State it in writing. Then allow the applicant to amend to clarify, or show where in the spec a claim term is defined.

      After that, the examiner can begin to review the case for compliance with 101/102/103/112.

      1. More absolutely bizzaro stuff from Ned…

        The claims must be read in light of the specification. ANY suggestion by you to purposefully ignore the spec is asinine at best.

        1. That is an interference/infringement standard, NOT an examinations standard. The Examination standard is “consistent” with the spec.

          1. Davis,

            Let me make sure I understand that it is your position that examination does not require first reading and understanding the application (which is more than the claims and includes the specification)….

            Is that what you are saying?

            1. How else would you know what would be “consistent”.

              So are you advocating an incorrect standard for examination? Or are you just complaining that the Examiners aren’t forced to read in limitations from the specification?

              Be specific, you are, allegedly, a practitioner so that might be difficult

                1. My position is abundantly clear in that I cited the *correct* standard to use during examination.

                  Apparently your part is actually more difficult than you thought seeing that you didn’t get that. Well, you know what they say about people who don’t know anything – they think their experts because they don’t know how wrong they are.

                2. Your position is most definitely NOT clear because you introduced a strawman of reading into the claims and attributed that to me, where I never even remotely indicated that to be.

                  I merely wanted you to be more precise since it was your statement in error.

                  You apparently are in too much of a hurry to even realize where the errors are.

                  Step back. Take a deep breath. Think. Then respond.

          2. This is really interesting. Are you a patent examiner? Is it your understanding that during examination the claims do not have to be read in light of the specification? Are you basing this on your own reading of the MPEP and/or caselaw, or were you instructed to think this way?

          3. Davis, see the quote from In re Morris below. “In light of” and “consistent with” seem to be used equivalently by the court.

            Regardless, claim construction is an iterative process, with the examiner initially taking the broadest reasonable interpretation a term can have to one of ordinary skill, but not being bound to limit the scope by the spec except to the extent of definitions. The applicant then must come back, if he chooses, to show that the claim term at issue has a much more consistent usage in the specification such that a definition is all but implied.

            This is a process, an iterative process. But the examiner is not bound to the specification in any specific way unless a particular meaning is clear.

            In the end, the applicant may be forced to add limitations to distinguish the art. But the examiner should not narrow his construction unless the specification all but commands it.

            1. I do agree that the court’s use of them sometimes appears to be synonyms, but I’m not in fully agreement that they are interchangeable; specifically because the court refused to acquiesce to reading the claims “in light of”.

              Regardless, the problem is that people like anon always opt to use “in light of” as an attempt to confuse/bludgeon the PTO (specifically junior examiners) into impermissibly restricting the claim construction; and people like him are able to get away with it because “in light of” sounds more specific than “consistent”.

              But that seems to be the name of the game with attnys like anon. Don’t actually claim the invention, just make elastic limitations that can be anywhere at once.

                1. haha, please, you’re implicitly doing that with your constant yelling about how functional language should be considered.

                2. I am “implicitly” doing nothing of the sort and explicitly telling you that you should cease your strawman arguments and attempting to have me say something that I am not – not ever did – say.

                  Thanks.

              1. Ned,

                All of your posturing about “iterative process” neglects the very start of that process including the Director directing that examination of the application (note, “application” and not merely “claims”), STARTS with reading and understanding the specification.

                Your dust-kicking to somehow NOT follow this direct path simply does not square with reality – no matter how much dust you attempt to kick up.

        2. anon, where in In re Morris is the examiner obligated to give a claim term anything other that is broadest reasonable meaning to one of ordinary skill in the art?

          The way the claim construction becomes consistent with the specification is by the applicant pointing out the definition of the claimed terms or usage in the specification. It is a back-and-forth.

          Even though you seem to have read in Re Morris, you seem to have not read it.

          “[A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.…

          “The process of patent prosecution is an interactive one. Once the PTO has made an initial determination … the burden of production falls upon the applicant to establish entitlement to a patent.…

          “The appellants urge us to consult the specification and some of the cited prior art, including Brown, and interpret the disputed language more narrowly in view thereof. When read in light of this material, according to applicants, the “true” meaning of the phrase emerges. We decline to attempt to harmonize the applicants’ interpretation with the application and prior art. Such an approach puts the burden in the wrong place. It is the applicants’ burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 (“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.”). While it is true that the claims were not rejected on the ground of indefiniteness, this section puts the burden of precise claim drafting squarely on the applicant.

          The problem in this case is that the appellants failed to make their intended meaning explicitly clear. Even though the appellants implore us to interpret the claims in light of the specification, the specification fails to set forth the definition sought by the appellants. Nowhere in the technical description of the invention does the application use or define the phrase “integrally formed.” The phrase briefly appears in the “Summary of the Invention” and again in a description of the “advantages of the present invention.” In neither case is a drawing referenced or a precise definition given.”

            1. anon, butchered?

              On the merits, I still think we should have won. The construction given the claim term by the examiner was blatantly inconsistent with the specification. Nobody reading that spec. seeing that we said

              X is not Y,

              would have interpreted X to read on Y.

              1. As I said, Ned, you still have not learned your lesson and you -to this day – appear to be a pouting child.

                You need to learn how to get out of your own way.

                1. Anon, and what lesson have I not learned? Their are numbers of cases today that say if one disclaims certain subject matter either expressly or by implication in the text of the specification that the claims cannot be construed to cover that subject matter.

                  Do I understand you to say that this kind of construction by disclaimer is not part of broadest reasonable interpretation?

                  Our position all along in Morris was that anybody reading that patent specification could not conclude that the claim term in question could be construed to cover the prior art, Brown, we specifically identified and distinguished. In the end, the court generated a rule that we had actually to have a definition or use the term in the specification in connection with the drawings to the extent the narrower meaning unmistakable.

                  Here is the quote from Morris that tells that story:

                  “The appellants urge us to consult the specification and some of the cited prior art, including Brown, and interpret the disputed language more narrowly in view thereof. When read in light of this material, according to applicants, the “true” meaning of the phrase emerges. We decline to attempt to harmonize the applicants’ interpretation with the application and prior art. Such an approach puts the burden in the wrong place. It is the applicants’ burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 (“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.”). While it is true that the claims were not rejected on the ground of indefiniteness, this section puts the burden of precise claim drafting squarely on the applicant.

                  The problem in this case is that the appellants failed to make their intended meaning explicitly clear. Even though the appellants implore us to interpret the claims in light of the specification, the specification fails to set forth the definition sought by the appellants. Nowhere in the technical description of the invention does the application use or define the phrase “integrally formed.” The phrase briefly appears in the “Summary of the Invention” and again in a description of the “advantages of the present invention.” In neither case is a drawing referenced or a precise definition given.

                  The prosecution history is equally unhelpful in divining the interpretation sought by appellants. In all cases the appellants first describe their invention followed by a general description of the prior art reference. They then conclude with a conclusory statement such as “[I]t is clear that Applicants’ inventive concept, as recited in claim 1 (amended), is not anticipated by the prior art,” or, even more vaguely, “it is clear that the base plate and housing arrangement disclosed in Brown ‘888 is completely different in structure than the acoustic isolator apparatus recited in Applicants’ claims.” Never do the appellants particularly distinguish their claimed invention (as compared with their “inventive concept,” whatever that means) from the prior art. We interpret this as a veiled attempt to avoid the potential future effects of prosecution history estoppel. Such evasiveness we cannot condone, particularly when the public must rely on the written record to define the resulting property right.”

        3. Anon, every time we address this issue you seem to ignore, completely ignore, what I am saying. I refer to the initial construction of the claims given by the examiner, followed by an iterative process where the legal standard of course is “consistent with” or” in light of” the specification. Ultimately, the specification works its way into the construction. But this does not mean that the initial construction must be in reference to the specification. It is, rather, in reference to the meaning of the claim terms at issue to one of ordinary skill in the art. That is what the court in Morris said. The examiner is not required to do anything other than give the claim terms their ordinary meaning, or the definitions given them in the specification.

          There is nothing in Morris, nothing at all, that tells us that the examiner must read and somehow limit the claims in any way to the specification. I think you completely misunderstand Morris. I also think you purposefully ignore the arguments I present here. I don’t know why you do that except to be what you are.

          1. “Anon, every time we address this issue you seem to ignore, completely ignore, what I am saying”

            it’s funny that he does that, but then he gets a huge vein popping out of his forehead when he accuses others of doing the same thing. He’s typical. He’ll accuse everyone of using “straw men” (which is the worst fallacy as anything can be forced into that category), but then he’ll do the same thing.

            Terrible. No wonder he gets so frustrated at the patent system, being specific just isn’t his style

      2. > I really, really do not like the idea of a pre-FAOM interview to clarify anything. The claims must be clear on their face. Allowing the applicant to clarify with a private chit-chat with the examiner is not sufficient.

        Do you know how I spent 100% of these private chit-chats? Explaining to the examiner – nearly verbatim – the first five pages of the specification.

        Why is this helpful? Because examiners don’t ever read them.

        Aren’t they supposed to? Yes, but there’s no enforcement mechanism, so they rarely do.

        1. There is an enforcement mechanism.

          It’s called an on point response to the office action without amendment.

          Yes, it would be better if examiners did their job right the first time, but you see in the plethora of comments actually on point to the subject of this thread how truly foreign a concept it is to have the government accountable for doing the job it is paid to do.

          1. This sounds great in theory. However, what frequently happens is that you will then get a final back with the same rejections. Sure, you can appeal the bad rejections, but that takes even more client resources and up to a year or two to get resolved.

          2. > There is an enforcement mechanism.

            > It’s called an on point response to the office action without amendment.

            And I’m happy to exercise that option – when my client doesn’t mind having the application spend six months going through appeal briefs, and then 4+ years waiting for a PTAB opinion.

            Other considerations:

            1) If you’ve made the terrible mistake of filing an RCE, then that 5+ years is not recoverable through patent term adjustment – even if you win mightily on every single count.

            2) Even if you win, it’s not a guarantee of an allowance. The examiner may well just reopen prosecution and reject it with different art. Because, really, what are you going to do? File another notice of appeal and blow another 5+ years?

            There’s a cruel mechanism at work here: the terrible decisions of the Dudas years have clogged the appeal process to such an extent that it has expanded examiners’ discretionary authority, and, hence, self-perceived power to issue terrible decisions.

        2. David, helping explain the invention to the examiner of course will help obtain a better search, but it would not help in clarifying the claims.

          Did you happen to see Random’s proposal to actually have a formal two-stage prosecution, the first to deal with issues like 101, written description and 112, for the purpose of clarifying the claims prior to search, and then a second stage where different examiner who actually searches and examines the clarified claims? I think Random’s idea has a lot of merit.

          1. > David, helping explain the invention to the examiner of course will help obtain a better search, but it would not help in clarifying the claims.

            Depends on your approach to reading claims.

            If you read them like the law requires – i.e., in the context of the specification – then you will discover the part of the claims that presents novelty. Or, if you don’t see it, an interview with the applicant may highlight it, and that element can be the focus of prosecution going forward.

            But if you read them like *ahem* many people do – i.e., just glance at the claims in isolation, guess at what they “basically” mean, and oversimplify them to the point where they’re trite, meaningless, and not even related to the disclosed invention – then you’re right; a discussion of the specification will not be informative.

            We need to shift as many people as possible from the latter mindset to the former mindset – because, again, that’s what the law requires.

            > Did you see Random’s proposal?

            Yes, and it’s not good, for the following reason.

            There’s a principle in various fields of engineering (software, organizations, etc.) that goes like this: If you divide the manpower for a project into (n) teams, the resulting product will have (n) discrete components, each becoming hyper-specialized and exclusive for that task.

            If you create a group of examiners specialized about 101/112 issues, the result will be a vast increase in 101/112 rejections. If the group simply find that 101/112 are satisfied in most cases, the group will be disbanded, so it will inevitably ramp up 101/112 rejections. The rationale for their rejections – and the tests and requirements necessary to satisfy them – will become even more complex, arcane, and unpredictable than they are today.

            Will the result be better “quality?” Consider that the Court has been trying to increase patent “quality” since the 2010 Bilski v. Kappos decision, and has done so by vastly complicating 101 law… does anyone think that this has actually improved the quality of patents? Sure, a small segment of business-method-y patents are no longer enforceable, and that’s good – but in exchange, patent law has become vastly more complex for virtually all patents – leading to more complicated and expensive examination, and lower-quality disclosures.

            I don’t know how far down this path of overcomplexity we’re going to have to go before the deleterious consequences are fully appreciated. But… well, we’re certainly not at the end of the path today.

            1. David, agree 90%.

              I think that first interview should also clear up ambiguities in the claims. Thus, if you say the claim means X, and the examiner explains that to him it could include a lot more than X because the ordinary meaning is much broader, then one can focus on whether the narrower meaning is the only meaning one of ordinary skill can give the term after reading the specification.

              Thus ambiguities can be identified and addressed by clarifying amendments prior to a search. But the search should be a lot better.

              And, I now agree with you fully on adding new specialists just for 112.

              1. I completely agree with you, Ned.

                I’m a big fan of clarifying amendments where actual ambiguity exists – which legitimately happens on occasion. For example: “I know that your invention involves relational query partitioning – but if you read the claim literally, it’s not clear whether the *query* is being partitioned, or if the *data set* is being partitioned: it could be read either way, right? Can you clarify the claims to be more specific that the query is the thing being partitioned?”

                And invariably, my answer is: “Thank you for spotting that! Sure, I will be happy to amend the claims to affirmatively recite that the query is the thing being partitioned.”

                I don’t think that this changes the scope of the claims – other than excluding things that you didn’t intend to include in the first place!

            2. so it will inevitably ramp up 101/112 rejections.

              That is indeed the point.

              The rationale for their rejections – and the tests and requirements necessary to satisfy them – will become even more complex, arcane, and unpredictable than they are today.

              With respect to 112, I think the tests are pretty simple.

            3. Claims are not read in the “context” of the Spec and you know it. They are construed in a manner that is “consistent” with the spec.

              Big. Difference.

              If the info in the spec if so important, just put it in the claims. What is so hard about that?

              1. Davis, and one must keep in mind that the claim construction during ex parte prosecution is an iterative process where the initial construction given the claims by the examiner is dictated by what one of ordinary skill in the art would understand claim terms to mean – or to the extent that the specification contains definitions. This is where the applicant must come back, if he so chooses, and argue a more narrow definition. He must show, according to in re Morris, that the narrower definition is unmistakably made clear by the specification in the context of its consistent usage.

                Guys like anon have no fundamental understanding of the process of claim construction. They insist that as an initial matter that the examiner must give a narrow construction rather than a broad construction of the claims. This is not what the court had in mind when writing in re Morris.

              2. Absolutely wrong Davis.

                In context is exactly the right meaning.

                Clearly, you cannot know what art field you are in unless you know the context.

                Clearly, you cannot know if claims terms have been explicitly defined unless you read the context.

                Clearly, examination is of the application – the WHOLE application, and the directions to the examiners fully indicate that the specification is to be read and understood first.

                Clearly, the claims are comsidered part of (the ending part) of the specification.

                And clearly, seeing as Ned still has not learned the lesson of his debacle with In re Morris, you and he are doing this claim thing under some serious misunderstandings.

                1. Still wrong anon. You appear to be overthinking this. “Consistent” and “Context” begin meaning the same thing, but then “context” takes a far more specific turn. Reading the claims in context/consistent means basically getting in the same subject matter. Then consistent allows broad, reasonable interpretation. You’re arguing for “context” which means that if the context of the Spec is that if the applicant’s screws are only used when constructing a house, then the examiner, examining in the “context” of the spec, can only consider screw structure involved in constructing a house, while consistent simply requires a screw structure.

                  Stop forcing specificity and unreasonable broadness constraints on the PTO. It helps no one

                2. Except for the fact that I am not wrong at all, you almost have a point.

                  As it is, I am not wrong at all and you do not have a point.

                  As to “appearing to be overthinking” that would be you and your rather odd attempt to change the meaning of the word “context.”

                  I suggest that you stop trying so hard to overthink and add things beyond what people actually say and try instead to understand what is being said.

                  That, and think about just returning to your posting of funny gifs.

      3. Having read the Office of Audit and Evaluation report, I am disturbed by the findings. This is like one of those diploma mills that grants everyone A’s for performance with little regard to quality of academic achievement. Many patent attorneys shy away from business method patents, because they do not believe they are sustainable.

    3. 1) You’re kidding right? Another layer of bureaucratic posturing? No.
      2) Good, in theory, but when you have hundreds of junior examiners reporting to these Primaries, a) when do THEY get the work done, b) would you want to wait for that bottleneck?
      3) This would basically be double examination (read – another layer, and yet more time). Add that to the fact that the IG’s report couldn’t even define quality and you’d have arguing up and down the chain of command.
      4) No. And this is key, the only people who want this are Pro Se inventors who want to spend more time convincing the Examiner how awesome their idea is vs. actually getting a patent. The Corporate inventors/trolls/attnys don’t want this. The name of the game with them is submit and then amend around the office action. Clarification is the last thing they want.
      5) You could do that. Heck, the examiners have been asking for this for years. Protip – if you want an examiner examining quantum devices/plasmonics/complex database – multiplexing algorithms, and want him doing this in the same time he was given back in the 60s and 70s when all of this was unknown, fine, just don’t expect quality. This should be being pushed for now, outside of any type of discussions about quality (do you honestly think doubling the time would give an examiner enough time to examine what amounts to writing a dissertation? No), but, again, the big guys don’t want it and the little guys get hit. You think a corporation wants an examiner to have enough time to think about what he’s examining? I actually laughed out loud.
      6) Workable, depends how you define “quality” See above and IG report for that problem
      7) Why, so that applicants can submit obvious variations on their invention and extend the patent term? Give me a break – including this tells me you got hit with that and didn’t like it. Protip – invent a new thing.
      8) Again, this would increase the efficiency of the examination process and the big guys don’t want it. The small guys don’t want it either because they consider it infringing on their rights. If you really wanted to simplify things, just require examination on the independent claims and limit those.
      9-11) decent suggestions, implies that the examiners don’t know what is going on. Probably on point for some, off base on most of them.

      ————

      Everyone forgets one basic thing: Examiners aren’t alchemists, they can’t turn lead into gold. Quality begets quality. You submit this claim:

      1)An optoelectronic device that emits radiation within a predetermined wavelength range

      You should get Thomas Edison’s light bulb (and yes, that is an actual independent claim). When applicants do that, and then complain about quality, you just lose your argument right there.

      Change happens when people with money want it to. The USPTO isn’t the bad guy here, they have to abide by Congressional law…and who do you think funds the campaigns of Congressmen? The name of the game in the patent system here is obfuscation, but not by the examiners, by most of the players considered to be “outside stakeholders”.

      You want to guarantee quality patents you just have to do one thing: If the USPTO finds it, the applicant is fined 10,000$ per claim rejected. You’d get only things that were ACTUALLY in the spirit of the law “novel” and you’d make sure the applicants actually did a prior art search and didn’t waste the USPTO’s time (see 4 above)

        1. Sadly, most patent attorneys would agree with this. They seem to think that drafting unclear claims is their obligation.

          It is up to the patent office and at up to the courts to issue clear claims. The higher duty of the patent office is to the public. The only way to control the machinations of patent attorneys is to make sure that the law will invalidate their patent claims that are not clear.

          1. You are imbibing again at the “grifters” Malcolm cessp00l kool-aid station, Ned.

            The desire to maximize protection and appropriately use the ladders of abstraction is a fully legitimate service that we provide our clients and is one in full accord with the law and the purpose of the patent system.

          2. > Sadly, most patent attorneys would agree with this. They seem to think that drafting unclear claims is their obligation.

            When the patents that I prosecute issue with claims that look unclear, it’s for exactly one reason: the initial claims were clear, but I was forced to insert limitations to distinguish references that I shouldn’t have had to distinguish.

            A frequent complaint about the patent system is that claim language is abstruse – that inventors can’t even recognize their inventions in the allowed claim language. But the examiner’s “broadest reasonable interpretation” standard is a direct cause. The original claim may have provided:

            A golf club comprising: a shaft connected to a club head at a 40-degree angle.

            …but during prosecution, the examiner rejected the original claims by citing a fishing pole, an umbrella, a snow shovel, etc., and required the applicant to provide explicit claim limitations in order to exclude these unrelated implements from the “broadest reasonable interpretation” of the claim, until arriving at length upon the allowed claim:

            A golf club comprising: a substantially cylindrical shaft oriented along a shaft axis and having a hollow shaft thickness not exceeding approximately 0.5 millimeters and a terminating in a club head comprising a forward club head surface that is rigidly oriented at a 40-degree inclination angle with respect to the shaft axis.

            That’s the result of “quality examination,” etc.

            1. David, the example is funny. But golf club is only in the preamble. If the body of the claims reads on a shaft with a head at 40 degrees, whose to say that such is not a golf club?

              This is a good example of fresh eyes looking at something one writes. Everyone needs an editor.

      1. “You should get Thomas Edison’s light bulb (and yes, that is an actual independent claim). When applicants do that, and then complain about quality, you just lose your argument right there.”

        No, you should not. “optoelectronic” has a meaning and it does not embrace Edison’s light bulb.

        Furthermore, I would submit that Edision’s light bulb did not emit a predetermined wavelength range.

        You wanna cite an LED against the claim, go ahead. But throttle back the BRI a bit bro.

        1. 1) Optoelectronic is in the preamble.
          2) No, optoelectronic devices include electrical-to-optical or optical-to-electrical transducers; of which an incandescent light bulb is one example.

          You are doing a few things wrong here:

          1) Assuming the narrow definition of “optoelectronic” as applying ONLY to semiconductors. This is incorrect.
          2) Had the claim language stated “Electroluminescent” and not been in the preamble, then yes, you could have an argument there as THAT term specifically relates to the re-combination of holes and electrons to emit light. This is different from black body emission like incandescent bulbs. You’re probably confusing the two.

          Additionally, your statement:

          “Furthermore, I would submit that Edision’s light bulb did not emit a predetermined wavelength range.”

          Is simply incorrect because the key here is what, exactly is “predetermined”? Anything, without more, is “predetermined” merely by its simple existence. You’re confusing the applicant’s intent to emit a specific range with his claimed limitation; and arguing Edison’s intent as well but it doesn’t matter what wavelength Edison intended to emit.

          “You wanna cite an LED against the claim, go ahead. But throttle back the BRI a bit bro.”

          You know, I’d really like to, seriously, but since Patent Attnys FESTO-ed themselves into a position where they can’t simply say “you know what I mean” I see no reason why that claim language shouldn’t be read in a literal sense.

          You submit that claim you’re, in effect, wasting the PTO’s time, the applicant’s time, the Examiner’s time, and, quite frankly, reducing the time that other inventors (who claim their invention) get from the PTO as well. A claim like that simply says “I’m waiting for the office action so I can see what I have to amend around”. Why give them a strategic advantage unless they’re going to take the process seriously?

          (The last part about applicant’s claiming their invention was a joke btw. I’ve never seen that)

          1. “Predetermined”

            Even if you want to give that weight, it seems pretty 103 that you would “predetermine” a result before you design something, right?

            1. That’s basically the point. At some point, in a manufactured device, everything is predetermined. Even if I wasn’t ACTAULLY saying “I’m going to emit light at wavelength 570–590” but if I’m hitting a Cd:YAG phosphor with a blue LED it’s going to emit some light in the yellow spectrum. So, in that sense, it’s “predetermined” because of the manufacturing of the device.

              10 out of 10 times when an applicant says “predetermined” they mean a specific value but don’t want to claim it.

              To grant them a patent on “predetermined” makes the claim language elastic (as anything can be “predetermined”) instead of somewhat blurry (which is mostly ok. For example, an applicant shouldn’t have to claim “the solder bump is exactly equidistant from all sides”, they should be able to claim “approximately in the center” because the formed bones them out of decent coverage).

              At the end of the day it all comes down to one thing: you gotsta claim that structure. period.

              1. At the end of the day it all comes down to one thing: you gotsta claim that structure. period.

                Again you post in ignorance.

                Your statement would be great if that were in fact what the law said.

                That is not what the law says.

                Your statement is not great.

                You are aware that this is a forum for discussing legal matters, right? You seem stuck in some fantasy land where a single optional method of claim writing is being (incorrectly) assumed to be the ONLY form of claim writing.

                1. Oh for SHAME the PTO should require the applicant to claim the structure of their invention. I’m clutching my pearls right now in faux shock.

                  If it’s optional, then there is no reason the examiner can’t require it while examining an application as it being “optional” implies that the other methods of claim writing are also “optional”.

                  So which “optional” method of claim writing are you a proponent of just out of curiosity?

                2. It is abundantly clear that you really don’t know the law in this area.

                  I suggest that you look in the archives for Prof. Crouch’s use of the term: “vast middle ground.”

    4. Dependent claims…

      They exists historically to have a claim that is valid if a broader claim is invalid.

      But 100-200 of them?

      Methinks modern practice has more to do with milking the client that protecting the client.

      1. The modern patent application is a fudge. Fifty pages of specification and 100 claims is now the norm. And IDS’s that cite hundreds of “prior art” references to avoid a “withholding pertinent prior art” in a patent challenge occurred because of CAFC decisions that means plus function claims must include in the specification all known alternatives? This makes for messy specs and overly broad claims. Now, every element requires a recitation of every conceivable alternative, under a “may include” ambiguous postulate. Whatever happened to clear and concise?

  10. If just “bad allowances” are all that you are complainig about, be careful what you wish for. If you are not careful it could send us all back to the bad days of Doll/Duda & the reject everything mentatlity. No one wants that.

    The IG report seems to just discuss bad allowances. This is only half the issue. Based on too many of the comments here, it seems that many of you are looking at ways to improve allowance quality by punishiung the examiner for them, It is that mentailty that led to the “rejection office” a few years back. Some (many?) will then think “OK. If I get a hit for a bad allowance, I will just not allow anything but clear-cut allowance.” BAD idea.

    Bad allowances are just a part of the issue of quality. Bad rejections are a large part of it as well. Bad input also has a share of the blame, though I won’t go into that hornet’s nest :)

    1. Micki, we hear you.

      The ultimate goal is a valid patent.

      To the extent any patent attorney prosecuting a case forgets that goal, he does not serve his client.

      To the extent that the USPTO management has no metrics or way of determining whether they produce valid patents, they are necessarily failing the public.

      Cost. Time. Quality.

      Chose two.

      Any effort to improve performance in quality necessarily WILL impact time and/or cost.

      1. > Any effort to improve performance in quality necessarily WILL impact time and/or cost.

        Not necessarily true. Much can be done to optimize the examination process – reducing time spent on trivialities and irrelevancies, and therefore reallocating that time toward things that improve quality with no additional cost.

        1. David, true. But in ordinary circumstances, there is a trade-off between cost, time, and quality.

          It seemed when Kappos took over at the PTO, his primary emphasis was on “time,” by emphasizing compact prosecution. This necessarily had to impact quality – of the product from the point of view of validity.

          1. Ned,

            Your spin is a little off and is missing one extremely important lesson that Kappos had to come in and correct:

            Quality does not equal Reject

            Was there an emphasis on time? Most assuredly. Was there the implicit accusation of yours that quality had to be sacrificed to get that time? Not at all.

            Please stop the dishonest spin games.

              1. I really don’t understand how you manage to maintain your civility when “conversing” (ie being covered in spittle) with anon. He has been nothing but rude, childish, incompetent, and dishonest.

                His craven rantings sound more like that of a pro se inventor who is so obsessed with his now gadget he can’t accept that it wasn’t granted a patent on day one even though the claim was: “A device that makes a bike go faster”.

                You sir are to be commended for your patience and actual understanding of the law.

                1. Your “turn it around” gambit does not work for Malcolm and it certainly does not work for you.

                  May I suggest that you return to your funny gif meme?

              2. Ned,

                I understand full well the Project Managemet Triangle – as well as David’s nuanced comment that sometimes the question is not strictly geared to the triangle as well as what Kappos meant – and why he had to say what he said.

                No Ned, rather here is a case where the lack of understanding is with you.

                Or do you want to be more direct in refuting the statement that Quality does not equal Reject….?

                1. anon,

                  What do you mean by “quality?”

                  The reason I ask is that I think Kappos could care less about patent validity so long as he got the PTO internal process running smoothly, issuing patents with few defects, and reducing the backlog.

                  As to his predecessors, I think patent validity was his primary focus. Why else would he adopt the policies he did?

                2. IMHO Dudas was trying to make the Patent Office a farce to have it held up to reticule and thereby done away with.

    2. ” If you are not careful it could send us all back to the bad days of Doll/Duda & the reject everything mentatlity. No one wants that.”

      That was my concern too.

      (no bad patents will issue if no patents issue)

  11. Speaking as a prosecution attorney, I would love to see higher quality examination. If there is a good reference out there, my client is generally going to be much better served knowing about it during prosecution than finding out about it after spending lots of money in litigation.

    In my experience, one of the biggest issues is often that Examiners don’t have (enough time / enough technical background / enough mastery of legally precise writing) to understand what is being claimed. This often results in blatantly erroneous rejections.

    I get a lot of rejections which I do not understand, and which do not offer any real explanation as to the rationale underlying the rejection. The problem with this is I am left unsure as to whether the Examiner (i) doesn’t understand the claimed invention, (ii) doesn’t understand the reference or references he is citing, (iii) is making a logical jump somewhere that doesn’t make sense, and/or (iv) has made a valid rejection that I just don’t understand. Generally, the answer is some combination of all of these, but it is often impossible to sort out to what extent each is true without talking to the Examiner. Trying to sort this out in written correspondence can result in two or three rounds of examination with little to no progress. If a more detailed explanation of the reasoning underlying a rejection was offered in an Office Action, written correspondence might be more effective.

    As it is, I generally am a fan of trying to do an interview in any cases where I receive a rejection that does not appear on its face to be valid. (Random aside: the rise of telecommuting and introduction of USPTO satellite offices is making it harder and harder to conduct personal interviews.)

    With respect to Office Actions, I understand why many Examiners frequently do not try to include a detailed explanation of the rationale for their rejections. For one, it takes a long time, and they are pressured to meet production quotas. Additionally, clear and precise statements can be quickly recognized as erroneous in a way that vague citations and combinations cannot be. Thus, under the current system, there are a lot of factors incentivizing vague rejections.

    One thing that I do no think makes any sense is how much time and energy examiners are forced to spend addressing dependent claims. A patent examiner doesn’t just have to search 3 claims, he has to search 20 claims, each of which can have as many limitations as an applicant wants. Even if an applicant doesn’t think there is much novelty in a dependent claim, an examiner still has to spend his time and effort searching it and entering a rejection. I believe that if examiners only had to search independent claims, examination quality would increase a nontrivial amount.

    1. I get a lot of rejections which I do not understand, and which do not offer any real explanation as to the rationale underlying the rejection. The problem with this is I am left unsure as to whether the Examiner (i) doesn’t understand the claimed invention, (ii) doesn’t understand the reference or references he is citing, (iii) is making a logical jump somewhere that doesn’t make sense, and/or (iv) has made a valid rejection that I just don’t understand. Generally, the answer is some combination of all of these, but it is often impossible to sort out to what extent each is true without talking to the Examiner.

      Couldn’t agree more. I’ve made the same observations and reached the same conclusions:

      The Rejection Behind the Office Action

      1. “Chess, when played beyond a basic skill level, is not a game about pieces; it’s about reading your opponent.”

        “Over time, I have reached a similar realization about patent prosecution.”

        And the same is true about pros. Which is why I’m so good at getting people to agree to amendments.

      2. “On its face, an office action is just a simple mapping of claim elements to snippets of the references, glued together with boilerplate. I”

        This is why item to item matching is a losing game.

      3. “The examiner is inexperienced, and just doesn’t understand how patent examination works.
        The application may have been assigned to a junior patent examiner who simply doesn’t understand how patent examination works, and can’t perform an adequate examination or articulate a clear rationale for rejection. The primary or supervisor may have been unavailable, or not thorough in assisting the examiner or reviewing the office action. So it may simply not meet the legal standards of prosecution or the practitioner’s standards.”

        Yes, I am working on one of those right now. Very frustrating. And the client/inventor loses respect for our patent system.

      4. ” The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified”

        There’s the rub. Unless you’re willing to admit, on the record, that you can’t see the pertinence, anything you argue after that is irrelevant. Good luck doing that though, I’d hate to see your malpractice ins bill after you start doing that.

        If you claim a screw and the examiner cites element 1 which is a screw, do you really, honestly, think that he should sit there and ” state why the [they] reached that conclusion” that that is a screw? No, of course not.

            1. Not at all – you are attempting to use terms you clearly do not understand.

              Funny gifs – that was (apparently) the limits of your understanding…

    2. JCD, I agree on dependent claims.

      Regarding the examiner’s not understanding the claimed invention, well….

      Could it be that the claims are not clear?

      Just the other day I had the inventor in to discuss an application where the claims were drafted by others. She said she never looked at claims generally because she never could understand just what it was they were trying to claim.

      Now, think about that for a moment. The inventor herself not understanding what the claims were trying to claim! The inventor! A person of ordinary skill in the art. A person familiar with the spec. Not understanding!

      Now we ask examiner to understand the invention being claimed when one of ordinary skill in the art can’t figure it out. So, we blame the examiner. Nice.

      I think the terms in the claims must be used in the spec so that if an examiner is confused, he or she can search the spec, find the term, and see how it is used in connection with the drawings.

      But today, it seems, drafting indefinite claims is not something that is to be avoided, but rather is an art form that is to be cultivated.

    3. If there is a good reference out there, my client is generally going to be much better served knowing about it during prosecution than finding out about it after spending lots of money in litigation.

      Or you can save yourself some money, find the reference yourself, and draft reasonable claims that don’t capture the teaching of the reference.

      That’s the cheapest option by far.

      One thing that I do no think makes any sense is how much time and energy examiners are forced to spend addressing dependent claims…. Even if an applicant doesn’t think there is much novelty in a dependent claim, an examiner still has to spend his time and effort searching it and entering a rejection.

      That’s because any novelty overcomes the anticipation argument.

      But there’s a straightforward solution to this “problem”, too, that can save both you and your client time and money.

      1. Or you can save yourself some money, find the reference yourself, and draft reasonable claims that don’t capture the teaching of the reference.

        This is often a great strategy. In many cases, where the applicant wants to do a prior art search prior to filing, this is exactly what I do.

        There are a couple of issues with this, however.

        To begin, many applicants don’t want to expend additional resources on a prior art search. Is this short sighted? Sometimes. But sometimes it’s just a reality that an applicant doesn’t have enough resources to do everything that best practices would suggest.

        Additionally, now that we are in a first to file regime, applicants are well advised to get a patent application filed as quickly as possible. It is often not cost effective to have a patent attorney do the search, and many search firms will take around a week to get results back. Once an application is filed, many applicants will not want to expend extra resources to conduct a prior art search for an application that has already been filed and will be examined by the patent office in due course.

        That’s because any novelty overcomes the anticipation argument.

        But there’s a straightforward solution to this “problem”, too, that can save both you and your client time and money.

        I wasn’t questioning why this is legally necessary under the current framework, I was more noting that one of the reasons examination quality is so poor is because it isn’t realistic to expect an examiner to perfectly articulate 20 rejections in the time allotted for an office action. If an examiner knew he or she only had to articulate three rejections, the rejections might actually include reasoned discussion.

        1. To begin, many applicants don’t want to expend additional resources on a prior art search. Is this short sighted? Sometimes. But sometimes it’s just a reality that an applicant doesn’t have enough resources to do everything that best practices would suggest.

          In many cases the applicant is aware of prior art that is, if not the closest, then “close enough,” because it’s the applicant’s own art or the art that applicant is improving upon. Then the applicant must simply disclose the non-obvious variations that might rescue the claim should some even closer art show up.

          One of the major problems with allowing functional claiming of information processing logic is that efficient term searching using accepted language routinely used by all artisans within an art becomes impossible. Applicants are aware of this issue, of course, and in part it’s why they manage to convince themselves that it’s not their problem to search all the “synonyms” for, e.g., “episodic content.” The other major problem, of course, is the widespread misunderstanding by a certain class of applicans that the recitation of “new” kinds of information content flowing through a computer is an eligible innovation. It’s not.

          1. You’ve attempted this mistake before, Malcolm.

            At that time I reminded you of the factual study completed by Prof. Crouch showing how infrequent examiners care or use art provided by applicants.

            Clearly, there is limited value in trying to “guess” what the examiner is going to come up and write claims accordingly.

            That being said, I do distinguish your “opinion” from the best practices that I have suggested in the past of advising clients to have the best prior art search they can afford early in the process in order to help best write the application.

          2. I’m curious – in your opinion:

            (1) Are business methods ever patentable subject matter?
            (2) Are computer-implemented business methods ever patentable subject matter?
            (3) Is a new method of using a known device patentable if that device is a toaster?
            (4) Is a new method of using a known device patentable if that device is a computer?
            (5) Does it matter whether the new method is a method of buying shoes or a method of encrypting network communications?

            1. Well allow me:

              (1) Are business methods ever patentable subject matter?

              No, they are ideas without physical structure or transformation of matter.

              (2) Are computer-implemented business methods ever patentable subject matter?

              Yes, when they involve as the end result a new structure or a mechanical, nuclear, or chemical change to matter.

              (3) Is a new method of using a known device patentable if that device is a toaster?

              Yes, when they involve as the end result a new structure or a mechanical, nuclear, or chemical change to matter.

              (4) Is a new method of using a known device patentable if that device is a computer?

              Yes, when they involve as the end result a new structure or a mechanical, nuclear, or chemical change to matter.

              (5) Does it matter whether the new method is a method of buying shoes or a method of encrypting network communications?

              It matters not if the process does not involve as the end result a new structure or a mechanical, nuclear, or chemical change to matter.

              Is that current law? No, but it should be, because current law is a clusterf*^% of world-historic proportion. Patents are for things, Copyrights are for fixed expressions of specific ideas, and using patents to protect ideas is impractical, immoral, and disastrous for innovation and lower costs in the long-term.

              1. [blockquote]Yes, when they involve as the end result a new structure or a mechanical, nuclear, or chemical change to matter.[/blockquote]

                Doesn’t spinning a hard drive represent a mechanical change to matter? Wouldn’t any data read or write to or from a hard drive represent a mechanical change to matter?

                1. Certainly the structure of a hard drive and all its physical paraphernalia are eligible, but the ordering of information via magnetic array is a means of storage of information, and information is not eligible. Even with a result in matter, like the graphite residue on paper from a pencil mark, is not patent eligible as information, while a machine or process that produces the marks very well may be.

                2. You said computer implemented methods are patentable “when they involve as the end result … a mechanical … change to matter”.

                  If spinning a hard drive represents a “mechanical change to matter”, then it seems like anything which involves as an end result spinning a hard drive would be patent eligible. I’m not saying anything should or should not be patent eligible, I’m merely pointing out that your standard has issues because it can be reduced to absurdity by some examples. (With the hope that it makes someone realize that arbitrarily carving out certain subject matter as ineligible inevitably creates line drawing problems.)

    4. “One thing that I do no think makes any sense is how much time and energy examiners are forced to spend addressing dependent claims. A patent examiner doesn’t just have to search 3 claims, he has to search 20 claims, each of which can have as many limitations as an applicant wants. Even if an applicant doesn’t think there is much novelty in a dependent claim, an examiner still has to spend his time and effort searching it and entering a rejection. I believe that if examiners only had to search independent claims, examination quality would increase a nontrivial amount.”

      So, curious then where this leads. If deps are not to be examined, why then not file the app with only independent claims?

      1. “So, curious then where this leads. If deps are not to be examined, why then not file the app with only independent claims?”

        So that you can have deps when the inds are allowed (maybe on first action)?

    1. The list seems to be primarily focused on a certain tech. Tech, that is.

      Are there no billion dollar industry-launching patents in chemical, mechanical, medical, other arts?

    2. Invalid under Alice? My guess: Probably.

      Google’s patent:

      1. A computer implemented method of scoring a plurality of linked documents, comprising:
      obtaining a plurality of documents, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;
      assigning a score to each of the linked documents based on scores of the one or more linking documents and
      processing the linked documents according to their scores.

      SolarCity’s patent:

      1. . A method for financing renewable energy systems, comprising:
      displaying by a computing system, home loan options and lease options for a renewable energy system;
      receiving, by the computing system, a first selection of a home loan for a homeowner from the loan options;
      receiving, by the computing system, a second selection of a lease for the homeowner from the lease options:
      arranging the home loan for a homeowner in which the interest payable by the homeowners is at least partly tax deductable;
      offering the lease to the homeowner for the renewable energy system;
      increasing the profits of selling said renewable energy system by obtaining more favorable lease terms and decisions from a lessor with particular internal rates of return (IRR) decision criteria as a result of defeasing the lease debt;
      determining, by the computing system, a deposit of cash proceeds from said home loan into a trust held by an escrow agent for the single purpose of paying lease payments for said lease as each payment becomes due;
      receiving a plurality of lease payments for said lease when each payment becomes due thereby seasoning said home loan such that the risk of any holder-in-due course reduced thereby;
      selling said home loan to said holder-in-due-course;
      selling any renewable energy credits (REC’s) that obtain from installing or operating said renewable energy system; and
      increasing business operating profits with any tax incentives that obtain from installing or operating said renewable energy system;
      wherein, the proceeds from said home loan are effectively used to defease the debt represented by said lease.

      1. 1. A computer implemented method of scoring a plurality of linked documents, comprising:
        obtaining a plurality of documents, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;
        assigning a score to each of the linked documents based on scores of the one or more linking documents and
        processing the linked documents according to their scores.

        Pretty sure I infringe this pile of junk all the time.

        Come get me, Google. Please make my day.

      2. 1. . A method for financing renewable energy systems, comprising:
        displaying by a computing system, home loan options and lease options for a renewable energy system;
        receiving, by the computing system, a first selection of a home loan for a homeowner from the loan options;
        receiving, by the computing system, a second selection of a lease for the homeowner from the lease options:
        arranging the home loan for a homeowner in which the interest payable by the homeowners is at least partly tax deductable;
        offering the lease to the homeowner for the renewable energy system;
        increasing the profits of selling said renewable energy system by obtaining more favorable lease terms and decisions from a lessor with particular internal rates of return (IRR) decision criteria as a result of defeasing the lease debt;
        determining, by the computing system, a deposit of cash proceeds from said home loan into a trust held by an escrow agent for the single purpose of paying lease payments for said lease as each payment becomes due;
        receiving a plurality of lease payments for said lease when each payment becomes due thereby seasoning said home loan such that the risk of any holder-in-due course reduced thereby;
        selling said home loan to said holder-in-due-course;
        selling any renewable energy credits (REC’s) that obtain from installing or operating said renewable energy system; and
        increasing business operating profits with any tax incentives that obtain from installing or operating said renewable energy system;
        wherein, the proceeds from said home loan are effectively used to defease the debt represented by said lease.

        This is the kind of worthless horse-hockey that gets drafted when a company starts failing and loses focus. Somebody at SolarCity has a friend who is a patent attorney and both their backs are squeaky clean from all that mutual scrubbin’.

  12. I could solve the quality problem at little to no cost, but Applicants wouldn’t like what to do –

    All claims are reviewed by someone for 101, 112a, 112b. They issue rejections until they are satisfied. Only then do the claims pass to another examiner for prior art rejections. You force an applicant to prove their scope is proper before subjecting it to prior art and you’ll get a lot of admissions about what the art already knows. You create a record that makes it clear why a claim issues and what the advancement is, you limit the claim to the thing actually invented, and you go from there.

    One might think that putting 2 examiners on every case might require more manpower. Perhaps, but you would save a lot of people because once someone whose only job was to do 112s on an application started doing software and applying the actual law, you’d have a lot more applications dropped.

    1. Somewhat analogous to engineering courses where the final unit ops lab reports got the snot pounded out of them first by an EngComp prof. and second by the engineering prof.

      As for your proposal, have you taken a survey of patents granting across many AUs to see if this would be helpful/necessary for some more than others, and others not so much at all?

      1. As for your proposal, have you taken a survey of patents granting across many AUs to see if this would be helpful/necessary for some more than others, and others not so much at all?

        That poll would only be useful if someone in an art unit knew how to properly apply 112, 1st, right?

    2. This is a really interesting and practical idea, RG. I think it makes a lot of sense.

      Two points:

      (1) I’d add that all amendments made in response to the searching/analysis/rejection performed by the prior art Examiner should be reviewed by the 101/112 Examiner for compliance.

      (2) In order for this (or any other approach) to have any chance at succeeding, the PTO needs to actually understand subject matter eligibility and have a coherent, consistent and (above all) fully fanged scheme for identifying claims that run afoul of 101.

      1. Considering that no one understands what claims run afoul of 101, this isn’t going to go anywhere. For instance, I was looking at a claim that described performing modifications to improve distortion characteristics of the amplification of an amplifier. This is very useful, as the data transmitted by the modified system including the amplifier has less distortion. It is patentable under Alice? I have no freaking clue. I won’t know until it’s litigated.

        1. To be more clear, one could characterize this as performing solely manipulation of data, as the data going into the amplifier is manipulated prior to amplification such that, after amplification, the amplified data has less distortion. This seems to run afoul of Alice, since it’s “just” data manipulation.

          On the other hand, one could characterize this as improving the functioning of the system, as the actual amplification result is improved. This seems to be OK under Alice.

          Which one would or should prevail? I have no idea.

        2. I was looking at a claim that described performing modifications to improve distortion characteristics of the amplification of an amplifier. This is very useful, as the data transmitted by the modified system including the amplifier has less distortion. It is patentable under Alice? I have no freaking clue.

          I’d be happy to help you but you have to share the claim with us. Otherwise it’s equally probable that the answer is clear as a bell but that you are totally clueless.

          Presumably the claim doesn’t recite as the solution to amplifier distoration the step of “performing modifications”. That would be just as inane as “automating” the improvement by using a microcontroller and a “look up file”.

            1. If algorithms are ineligible subject matter for protection by a patent — something that appears to be beyond reasonable dispute as far as I can tell — then a claim that is identical to the prior art except for an algorithm that claim is going to have to be ineligible in every case, as far as I can tell. Otherwise there is a major contradiction. That’s because the prior art in such a situation was invariably developed to carry out algorithmic functions.

              If claims to [oldart]+[new algorithm] are granted, they are effectively claims to the algorithm for people in possession of the prior art. It’s no different than granting patents on methods of calculating using a “new algorithm” and an old ballpoint pen and old paper. Sure, computers are faster. But they are also really, really old. Just like ball point pens and paper.

              This is straightforward stuff. You can disagree with the premise that “algorithms are not eligible and shouldn’t be” but if you accept that premise then this is where you end up, logically.

              1. MM, of course, the algorithm is claimed as one update to one circuit of an amplifier of a hearing aid. The overall amplifier has inputs and and outputs, inputs that convert sound into digital signals and outputs that convert digital signals into sound. People who use the patented hearing aid report remarkable improvement in their ability to hear.

                I think the claim has no problems under 101 according to either Diehr or to the actual holding of Alappat (as opposed to Rich’s dicta about programmed computers). The overall apparatus transforms sound (air carrying sound waves) into an improved state. Passes the MOT, and for that reason, passes Diehr.

                This is quite a bit different if we tried to claim the math in the abstract, i.e., not in context of an actually useful machine that is improved.

              2. 1. A hearing aid comprising:
                (a) input transducer means for converting input acoustic signals into electrical input signals;
                (b) signal processor means operable:
                (i) to divide said electrical input signals into a plurality of frequency bands signals;
                (ii) to perform an intermodulation distortion generation operation on each of said frequency band signals, said intermodulation distortion generation operation comprising
                1. providing an all pass filter means for generating two signals from each frequency band signal, a first all pass signal h1(t) and a second all pass signal h2(t), the second all pass signal having a phase offset of 90 degrees from the first all pass signal;
                2. forming an instantaneous amplitude A(t) from said first all pass signal h1(t) and a second all pass signal h2(t), wherein A(t) comprises the absolute value of h1(t) and h2(t); and
                3. modulating either said each frequency band signal or the first all pass signal h1(t) according to said instantaneous amplitude signal A(t) to produce a modulated band signal for each of said frequency band signals; and
                (c) output transducer means operable to produce an output acoustic signal corresponding to a combination of said modulated band signals.

        3. This is very useful, as the data transmitted by the modified system including the amplifier has less distortion. It is patentable under Alice? I have no freaking clue. I won’t know until it’s litigated.

          Right on. This is one of the (many) serious problems with Alice: an invention that is clearly technical and has indisputable utility may or may not be patent-eligible – depending on the type of claim language, the statutory class, and the manner in which the specification describes it.

          And this is richly ironic, because this whole mess of uncertainty started with Bilski v. Kappos – in which the Court warned against interpretations of 101 “in ways that make patent eligibility depend simply on the draftsman’s art.” As we have seen, the changes to 101 wrought by the Courts’ decisions have made patent eligibility more dependent on drafting style than ever before.

          1. Right on. This is one of the (many) serious problems with Alice: an invention that is clearly technical and has indisputable utility may or may not be patent-eligible – depending on the type of claim language, the statutory class, and the manner in which the specification describes it.

            You can’t pass judgment without a claim. The fact that something useful is done and it’s done by a machine is irrelevant, because the question is whether you’re claiming your machine or your field. Morse had a machine that was useful and he was given a patent on his telegraph. But Morse, on the same disclosure, also tried to claim the broad functional field, to which he wasn’t entitled.

            If the only thing this guy did was find out a property about sound and had a machine carry out the relationship, yeah that’s not patentable.

            the Court warned against interpretations of 101 “in ways that make patent eligibility depend simply on the draftsman’s art.” As we have seen, the changes to 101 wrought by the Courts’ decisions have made patent eligibility more dependent on drafting style than ever before.

            All the court was saying is that scopes are either eligible or not. They said it doesn’t matter if you arrive at 3 by calling it 1+2 or by calling it 1+1+4-3. They did not say that 3 equals 2.

      2. Throw in restriction practice as well as the mentioned 112 and 101 and I can get behind this.

        It would be nice if Examiners were only tasked with examining a single invention on first impression.

    3. How do you deal with the fact that 101 analysis now sometimes purportedly requires consideration of the prior art?

      1. How do you deal with the fact that 101 analysis now sometimes purportedly requires consideration of the prior art?

        Purportedly?

        Eligibility almost always requires consideration of prior knowledge and comparison of the claimed “innovation” to that prior knowledge, just as every other patent statute does.

        In any event, you “deal with it” by doing a “first pass” where the 101 Examiner is (1) familiar with the art and (2) capable of reading the specifiation where, in most instances, the contribution of the inventor with respect to the prior art will be plain as paint. Then, after the prior art analysis is performed, you revisit the 101 before grant to make sure the claims are kosher.

        Alternatively, the prior art search could be performed and given to the 101 Examiner who focuses on the kind of innovation over the art that is being protected. That’s what 101 is for. Subsequently, the 102/103 Examiner can focus on the quality/degree of the innovation over the art (that’s what 103 is for).

        1. Adding; one reason to have a focused subject matter eligibility once-over at the beginning is to give the searcher information about where to look for art. That can save time and money.

          For instance, there is no need to search for art that teaches some specific kind of ‘information content” recited in a claim. If that “content” is all that is new in the claim, then the claim is ineligible. Examiner’s should be focusing on the technical aspects of the claim and how those aspects relate to the prior art, not on the abstract “content” that might flow through the technology. In a sane patent system, the aforementioned technical aspects would invariably be objective physical structures or physically transformative events.

      2. How do you deal with the fact that 101 analysis now sometimes purportedly requires consideration of the prior art?

        You have the 101 examiner search it to the extent necessary, I’d lean toward not telling the 103 examiner about it, but I could go either way. It doesn’t hurt to have two people researching an application.

    4. Having separate review for 101 and 112 issues would potentially make sense if that separate legal review was carried out by patent attorneys, but makes no sense if you are proposing a system where the threshold inquiry for patentability at the patent office involves the consideration of legal issues by non-lawyers.

      1. Sorry to reply to my own comment, but I wanted to elaborate that this has always been the biggest issue with application of 101 and 112 at the patent office. Examiners aren’t attorneys. In my experience, many of them have an “understanding” of 101 and 112 that is not at all connected to the legal reality.

        1. That’s ok JCD, “lawyers” here like Ned and Malcolm also show that same “understanding” of 101 and 112 that is not at all connected to the legal reality.

        2. JCD In my experience, many of them have an “understanding” of 101 and 112 that is not at all connected to the legal reality.

          LOL. Is that the “legal reality” where the relationship of a claim to the prior art is only “purportedly” necessary for spotting the eligibility issues raised by the typical ineligible claim?

          Give us a break, please. You are the problem.

        3. Sorry to reply to my own comment, but I wanted to elaborate that this has always been the biggest issue with application of 101 and 112 at the patent office. Examiners aren’t attorneys. In my experience, many of them have an “understanding” of 101 and 112 that is not at all connected to the legal reality.

          True, and ideally you would have attorneys, or at least attorneys as SPEs. But even without it it would be useful, because you could split training that normally goes out to everyone into 101/112 particular training for those Examiners and 103 training for others. The office is not a fan of using time to train the entire corp when it doesn’t have to. If you want an example – the only reason I know about Nautillus is because of this site. The office has no policy and has given no training on the issue, despite it possibly being determinative of many scopes.

          I made a Nautilus rejection just yesterday. I don’t even know if I’m technically allowed to. It’s a difficult position to know whether you apply the law or apply the MPEP when it’s clear the MPEP is meant to track the law. I figure put it on the record and if they want to tell me I’m going against office policy then they can deal with the fallout if a court has the same problem I do.

          1. “…it’s clear the MPEP is meant to track the law. ”

            No it’s not. It’s chock full of nonsensical interpretations of case law that are designed to allow examiners to reject claims without having to actually make any effort in doing so.

          2. Random, I agree with AAA JJ. The MPEP has an extraordinary amount of nonsense. There really is no substitute for reading the cases.

            I would say an examiner can reject based on controlling authority. The applicant can take it to the Board who can agree or disagree.

            On the contrary, a examiner should no allow a case in violation of PTO policy. Force the issue up to the Board.

            This way, legal issues get forced up and resolved either by the Board or by the Federal Circuit — or the Supreme Court if really necessary.

            1. No OA’s relying on case law for a rejection should even be sent out unless there is an analysis of the facts of the precedent and an explanation/argument as to why those facts are sufficiently similar to the case under examination to permit the examiner to rely on the court’s rationale. MPEP sectoni 2144whatever it is. Primaries that send out rejections without such an analysis/explanation/argument have their signatory authority taken away, SPE’s that sign rejections lacking the required analysis/explanation/argument get demoted back to examining, and SPE’s/QAS’s/otheruselessknownothingdonothingGS-15’s that send cases to the Board without the analysis/explanation/argument get fired. Immediately.

              Huge problem solved.

              1. No OA’s relying on case law for a rejection should even be sent out unless there is an analysis of the facts of the precedent

                Huge problem solved.

                Hahha, yes, employing 10k patent lawyers at way below market value would indeed solve the problem.

                1. If the examiner can’t provide evidence of a reason to modify/combine the prior art without resorting to precedent, the rejection is already on shaky ground. The least, the very least, the examiner can do is at least make an attempt to establish that similar facts are at issue.

                  You don’t need “patent lawyers” to do that. In fact, it’s to the examiners’ benefit that they are not lawyers, as it allows them currently, without any ethical implications, to cite cases that they haven’t read, and will never read, for propositions that they are clearly inapposite to. A little effort on their part though wouldn’t hurt. And would go a long way to improving “quality” (whatever that is).

                2. Ethics…?

                  What is that?

                  Don’t you know that any** mischaracyerization is “fair game” in this “ecosystem”…? So why not as well in the Office?

                  **as long as the “ends” are the “approved” ends, that is.

            2. I would say an examiner can reject based on controlling authority. The applicant can take it to the Board who can agree or disagree.

              Failure to follow your own procedure is itself a grounds for appeal though.

  13. To be eminently fair, Paul Cole seems to have the best intentions.

    However

    Even the best intentions pave the road to….

    So let’s reset the stage for a discussion on that which the Office CAN control, realize that which the Office CANNOT control, remove the Pollyanna wishfulness that needs to be removed, recognize the reality of patent profanity (yes, children, we are in the real world), and place blame squarely where it needs to be placed in order for those who should be taking responsibility for that blame to DO SOMETHING. Coddling and the overweening sense of “don’t blame the Office” is simply NOT helpful.

    So as impassioned as Mr. Cole may be, and as on point as to possible best practices as he may be, he is simply off point and unhelpful in the point of this post and in the RIGHTFUL focus on what is critical from an agency point of view. Sorry Mr. Cole, but your myopia hurts the effort rather than helps the effort here. You cannot treat the wound by ignoring it. You cannot pretend your band-aid will suffice when you do not recognize the severity of the wound and you do not realize that a tourniquet is needed instead.

    However to my own however…

    Given that Mr. Cole appears to be without guile in his attempt, albeit misguided, let me offer some corrections that our dear friend needs to take to heart (in reverse order):
    First and foremost, realize that “best practices” and “legally required” are two very different things and that while much of what you said cannot be faulted from a “best practices” viewpoint, you err significantly by attempting to paint these best practices as actual legal requirements.

    It just is not so.

    As to “the blame game” – FULL STOP. Anything LESS than an objective view (where the blame does fit – place it and deal with it) is simply disingenuous. Just because you don’t want to dive into the trenches and directly face those things THAT NEED TO BE CHANGED won’t make them go away. FAR FAR FAR too many people are only too willing to NOT take a serious look where that serious look is so desperately needed.

    IS this to say that other parties are blameless? Most definitely not. But please do not offer such a pandering escape path to those who have shown every willingness NOT to accept responsibility for a work product for which the Office does, can and SHOULD control.

    Such simply is just NOT helpful.

    Second, your “best practices” often take a Pollyanna turn and ignore legal reality, such as the FACT that patent profanity exists and that attempts in litigation DEMAND “the document rain” that you would simply seek to not engage in. It is beyond asinine to expect “better behavior” up front than which is necessary given the lack of reciprocal “better behavior” down the road.

    Further regarding “document rain” you appear to lose track (please review the Tafas case again) just whose responsibility it is for actually evaluating documents (e.g. aka examination). You seem only TOO eager to not recognize that “time” is NO EXCUSE for a rambling and largely irrelevant office action – NO MATTER how many documents the examiner has to go through. The world of prior art EXISTS regardless of what the applicant provides or does not provide, and it is a logical FALLACY to think that examination that is required against THE WHOLE of ALL prior art is or should be impacted by the sliver – no matter how large – provided by the applicant.

    Marginality – or not – IS NOT incumbent or decisive as to such a characterization made by the applicant.

    It just is not so.

    As to “our profession” – FULL STOP. Yes, we can and should do better in many case. THIS IS NOT A DISCUSSION OF THOSE CASES. The mechanisms IN PLACE to catch such poor quality are already there and NO ONE is really arguing about PROPER rejections. For you to here place such emphasis merely aids and abets those trying to move the goalposts and obscure the very point of this thread: What the OFFICE can do for its OWN actions that IT CONTROLS. You are not helping that discussion and to the degree that you are not helping – you are hurting and obfuscating what does need to be focused on.

    That being said, your comment distinguishing defendable scope from maximum scope is a baseline of my own view. And yet, if you were to pay attention to the comments here – Malcolm, Ned, MaxDrei, 6, and NEARLY EVERY anti-patent poster refused to recognize the actual position that I take and others like me have taken. All you do then is feed the foolishness of those unwilling to engage in an intellectually honest manner – all you are doing is help obfuscate what those others are only too willing to denigrate the profession ad infinitum and ad nauseum.

    As to the guidelines, yes they can be considered cumbersome and likely can use a proper drafting. But those guidelines apply to BOTH sides of the process, and your only-too-eager-to-compare-to-another-sovereign is NOT helpful, given that rules for another sovereign just are not the rules in play here. So some credit to you on this point, but with a definite caveat.

    That being said, your own notion as to “failure of refereeing” AGAIN exhibits a failure of its own and one that I have chastised you before in the past. THESE ARE NOT ENGINEERING DOCUMENTS. You suffer a debilitating flaw in not recognizing the relation of what these documents are, what is legally necessary to be included in these documents in light of the meaning of PHOSITA and what – legally and from a business perspective should be left out – both for time and competitive factors. Yes, you want to include enough to be robust, to enable, and to satisfy the various audiences that these LEGAL documents will come before – but for the love of reality, STOP pretending that the legal requirement is something that it just is not. You do NO ONE any favors because you are ADDING to the conflation and purposeful obfuscation anti-patent people use to fan the flames of nonsense. You are ALSO not letting the judiciary ACCEPT the full ramifications of their own meddling. For example, if the Court in KSR is going to super-empower PHOSITA, it is FAR better to embrace that sword for BOTH its leading AND trailing edges and realize that what is LEGALLY REQUIRED to be present in an application is diminished when the power of PHOSTIA is enlarged. Anything less has the DIRECT impact of ONLY making patents worth less and thus, the patent system less beneficial to society. YOU ARE NOT HELPING.

    As to the courts – you AGAIN make the mistake of mixing sovereigns. FULL STOP. Also as per above, ANY attempt to ameliorate the actual consequence of Court rulings as the direct negative effect of prompting even MORE anti-patent rulings. Do NOT attempt to shield the court from the ramifications of its decisions. Spare the rod – spoil the child, and our Royal None need NO more spoiling. In fact – what they truly need IS the rod.

    1. Yeah, the ratio of spittle to phonemes in this post is extreme.

      Me thinks you’ve got an overinflated sense of your own importance. Pro Se I take it?

      “You suffer a debilitating flaw in not recognizing the relation of what these documents are, what is legally necessary to be included in these documents in light of the meaning of PHOSITA and what – legally and from a business perspective should be left out – both for time and competitive factors”

      This is actually quite hilarious – suggesting that you don’t have to include best mode or enough info for PHOSITA to practice the art? Yeah, I’m pretty sure that got litigated and your view was on the losing side. What, did you go to Thomas Cooley law school or something?

      1. I love the irony here that my critics cannot get past the surface and the form and simply refuse to address the substance.

        Throw is the usual bland as hominem, and empty retorts that still don’t address the substantive points and drive by monologue (yet again).

        uggesting that you don’t have to include best mode or enou…

        Not at all. Did you even read what I have written about giving full credit to what the Court has done by empowering PHOSITA?

        Here’s a hint: spend less time trying to emulate the poor tactics of Malcolm and more time on the actual law (your pro se and Cooley law jokes miss by a mile and appear to apply to you more than to me – so very Malcolm like).

        Failing that, maybe you can go back to posting funny gifs – that at least you did well 😉

  14. What if I don’t want higher quality, or think higher quality will come at too high a cost?

    What is I know that we could making roads that are 100% safe, but it’s not worth paying $50,000 minimum, and being restricted to traveling at speeds less than 15 mph? What if I’m happy with “safe enough”?

    Similarly, what if I’m happy with high enough chance the patent is valid for the price being paid? What if incremental increases in validity come at too high a cost? What if, overall, those costs are net detrimental to the patent system, to innovation, etc.?

    What concerns we isn’t just that people aren’t asking these questions, it’s that no one even apparently knows these are questions that could be asked.

    1. Actually, these have been asked (and comments to the same effect made – by me in particular, and as I have noted, by others such as Lemley)

    2. The anti-patent judicial activist will use anything to try and destroy the patent system. Patent quality is just another arrow in the quiver.

      1. The anti-patent judicial activist will use anything to try and destroy the patent system.

        Including “raping” and “killing”, right?

        Patent quality is just another arrow in the quiver.

        Right. Nobody should discuss the fact that the PTO has been issuing more junky patents for decades now than ever before in the history of the patent system.

        Be quiet, people! Some entitled rich people are trying to “innovate” their way to a multimillion dollar patent licensing scam. If we interfere with them, we’ll all be just like Amish! They told us so, so it must be true. They’re very serious people, after all.

  15. Max has some good points below. Improving search would be a great start to improving quality. I’d point out again that probably the best measure right now of quality is the survival rate of the claims from CBMs and IPRs.

    My guess is that just adjusting the system a bit could vastly improve patent quality. But, let’s help the examiners. Get them better search tools or outside searches. Give the examiner more time. Route applications better so that examiners can focus on narrow areas of patentability. And build into the system some type of competition such as the one suggested below by Max.

    One study that might be interesting going to Max’s point is the following: find patents that have undergone IPRs or CBMs and have had search reports from the EPO. Look at whether or not the petitioner used the art cited in the EPO search report.

    And as to the registration comments. In some aspects we already have a registration system now. IPRs effectively mean that the initial examination has very little meaning.

    1. Seems like you might be advocating for a triage system, in which SPEs would allocate applications to examiners according to what issues the SPEs thought might be present in each case.

      The big challenge for examination quality as I see it from my side is the “patent mortgaging” aspect, though I’d call it “prospecting” as in using a cr*ppy office action to “stake a claim” to a count. Then the examiner semi-“corrects” the half-*ssed deficient grounds for rejection of the first oa, and takes a count for a final.

      1. >like you might be advocating for a triage system, in which SPEs would >allocate applications to examiners according to what issues the SPEs >thought might be present in each case.

        I am advocating for better assignment of applications according to the subject of the patent. This would enable examiners to deal with narrow subject matter and become experts in a narrower field.

        1. I am advocating for better assignment of applications according to the subject of the patent.

          How’s the bingo art unit doing these days?

          1. You see Dennis the paid blogger known as MM runs around and harasses people. His intent is to disrupt intelligent discourse that does not agree with its employer’s goals.

    2. Night Writer – that “registration” system is a multi-BILLION dollar entirely-applicant-funded WASTE if we are getting the quality indicated and need the post grant efforts to obtain what should be obtained in the first instance.

      BILLIONS of applicant dollars supporting the likes of 6 and Random and earning the perpetual whines of Malcolm and the Echoes.

      If the runaway propaganda machine is going to wreck the value (and presumption) of validity, why the H do we have examination at all?

      No more band-aids.

      Do it right the first time or do not do it at all.

      1. need the post grant efforts to obtain what should be obtained in the first instance.

        Learn to understand your own art field, learn to write claims that don’t capture the art, and learn to write claims that fairly represent your “innovation” and not the hard work that someone else is going to have to do to make your functionally claimed junk work.

        Your problems are mostly solved right there. It’s what the grown up arts have been doing for a long time.

        1. Learn to understand your own art field,

          Says the guy who shows NO understanding of the software art field…

          Way too funny.

          (Not in a good way for you Malcolm)

    3. “Improving search would be a great start to improving quality.”

      I agree. Identifying and properly applying the best prior art is the key.

      Better searching data bases and tools are needed for the examiners, as well as training in the use of them.

      1. Identifying and properly applying the best prior art is the key.

        Maybe learn how to do it yourself like all the grown ups have done years. You can save a lot of time and money that way.

  16. Most of the fees from the PTO are issue fees. And theres where your conflict of interest is regarding quality. Only solution is to abolish the patent process and go to a registration system. Let the few patents worth money with issues of first to invent fight it out in court. Which some of them do anyway.

    1. ty –

      I agree that a registration system is the way to go. It is completely unrealistic to believe that a high-quality examination can be done in a few hours.

      1. Where is this artificial and pervasive thought coming from that examination must be limited to only a few hours?

        Applicants do NOT pay by the hour – nor for “hours.”

        They pay for a completed job to the requirements of the law.

        Everything else here is obfuscation and noise – not signal.

            1. Anon, I agree with you on most things, but you seem to be crazy! We make cars as safe as it makes sense to. We could eliminate all motor vehicle deaths by making cars move so slowly, and limit the number of cars on the road, and make them so expensive they can withstand any accident, etc. But we don’t – we make a judgement as to how reasonably we should balance these factors to make cars safe enough.

              Patent examination should be quality enough – reasonably balancing costs to applicants with the job. In my opinion, and many others (but apparently not you and some others), we are getting a quality enough job. No, they are not all 100% valid, but valid enough. What applicants are paying and the chances they are getting that the patent is valid – it’s good enough.

              I don’t want to pay 50,000 for my car, and be limited to driving under 10 mph, to make sure that no one will ever get into a life threating accident. The cost to make sure that the car is 100% safe isn’t worth it. Similarly, the costs that it would take to make sure my patent is 100% valid, it’s not worth it to me. But I’ll take valid enough for the price being charged now.

              1. The point is not whether I would agree with you – and certainly not that I am “crazy,” but look around you and see that NO ONE appears to come to the same Value/Quality trade-off that you are willing to accept.

                As I have posted previously – I do NOT want a registration system. My point instead is that if we ARE going to take a serious look at the current system, and continue to denigrate examined patents as worthless, then we MUST take a look at just how many BILLIONS of dollars support the current level – at the direct expense of applicants.

                1. if we ARE going to … continue to denigrate examined patents as worthless

                  As long as the patents are protecting information and information processing logic using functional language, many of your favorite patents are worthless and easily tankable by folks who know what they are doing.

                  This isn’t just the PTO’s fault, “anon.”

                  It’s the CAFC’s fault and it’s the fault of you and your cohorts.

                  For years now, you and your buddies have been fighting against the best and quickest solution to the worst problems faced by the PTO. And we all know why.

    2. Want higher quality?

      1) Break up examination: 112/101/restriction -> search -> examiner.

      2) Create the tools necessary to effectively enforce disclosure rules.

      3) Rework IDS rules to force applicants to make meaningful statements of pertinence of references (corresponding lines/paragraphs to limitations).

      4) Stop soft channel influence on the pto conducted by certain members of the patent bar. take a look at the “lunches” and “phone calls” and resulting “non-rule” rules that get passed by word of mouth to examiners via their supervisors (“we arent supposed to be doing 112s as often now, people are complaining” <— i wish i was kidding about this one having been passed around, its funny how you never find out who these "people" are). end the management rotating door with firms.

      5) Force applicants to show support for newly added limitations in the specification. This is a no-brainer.

      6) And yes, eliminate issue fees. what an awful idea. applicants pay the whole cost of examination up front, not some fraction with the other fraction being picked up at allowance.

      Unless you do these things, it will never ever get better. The pto will witch hunt some primaries and fire some juniors to show its doing something, wait for IG to preoccupy itself with something else, and then revert back to awful.

      But I know that these things wont happen. There are too many vested interests in keeping things the way they are because it is very profitable for certain interests to have a broken patent office.

      Ugh. So glad I'm out.

  17. I should be interested in reactions to my numbered comments below, made as provocative as possible.

    1. “Quality” is manifested, first and foremost, in the relevance to ultimate patentability of the references invoked in the initial PTO search report. Everything else depends on that. By “ultimate” I mean the patentable claim, that will go to issue.

    2. Consistently, the EPO search report nails, at the outset, what will turn out to be not only the closest art but also the best supporting references.

    3. Consistently, the USPTO does not. This failure is a manifestation of poor “Quality”.

    4. To measure “Quality” each Patent Office should use the other as a Benchmark.

    1. One of your better posts MaxDrei, although it still suffers from your usual odd perspective and “EP uber alles” limitations.

      Your point 3 in particular is apt, but you again stumble with your point 4 and the mere assumption that one sovereign’s examination efforts should suffice for any other sovereign’s without recognizing that there is in fact NO one world order when it comes to patent law.

    2. My experience is similar to MaxDrei’s: The EPO examiners seem to do a better job quicker than the US examiners. I believe part of this is due to the differences in the way applications are handled. In the US, prosecution is very centered on the claims and what they say and not on the real invention. By contrast, in the EPO, the invention appears more important (often to the point where the Examiners seem to be reading the invention into the claims). So, the EPO examiners tend to search for the “invention”, whereas the US examiners search for the claims.

      On the other hand, I have seen where US examiners get the best art. Typically, my experience is the opposite, though: EPO examiners can get great art and often it’s much better than what the US examiners get.

      1. Your problem PatentBob is in not realizing what the claims are and thinking that “the real invention” is something else.

        Your mindset leads directly to the FALSE acceptance of “Gisting.”

        Why it may be perfectly true that an application may have multiple inventions, the “true” invention is – and only is – the claimed invention.

        Another troubling and annoying aspect here is that people seem to forget that during the examination phase, what the claimed invention IS is meant to be fluid. And while fluid, it is ultimately both fixed and finite by the fact that the “world” of that fluid and fixed invention is bounded by the entirety of the application on the date of filing.

      2. My experience has been that in the last five years, the U.S. gets much better prior art in the electrical arts than the EPO. The EPO was the gold standard when they had dedicated search examiners but is no longer the case and it shows in the lack of quality searches I see from them.

    3. I do feel that the EPO and JPO generally find better references than the USPTO, but there have still been plenty of times where the EPO or JPO indicated allowability, and I easily found a very good 102/X reference that they somehow missed.

      Which is why I think that the best thing the various patent offices have done lately is improve their data, classification, and search sharing, in hopes that all together they can improve quality.

      1. anony, in another of your postings you declare yoursef to be a USPTO Examiner.

        So you use one search base while the EPO uses another, right?

        I think it would be strange indeed, if the USPTO classification system can never find a better reference than the EPO search base.

        I have a question though. When you write that the EPO has “indicated allowability”, what EPO doc are you reading, and why are you reading it?

        1. If I find EPO search to be helpful, then I see how the claims were amended over there, make sure I’m looking at the same claim set, etc. They have file wrappers just like US does. I think its called an intent to grant, or something like that.

    4. Max, I agree that the European patent office does a better job of searching. That is why, if my client can afford it, I like to file PCT, have a European search, and enter the national stage in the United States rather than a file a U. S. application directly.

    5. Max, just from reading the posts of many of the U. S. practitioners here one can see that most of them do not want a high-quality examination. They simply want the patent, and will themselves game the system as best they can to get the patent out the door and move on to the next application.

      Thus most of these practitioners would not be in favor of a high-quality search simply to ease their own job.

      1. Ned, I have always asserted that prosecutors and their clients are rational thinkers. Given the Rules of the Game in the USA, of course they want poor quality PTO search and languid examination :

        “…want the patent, and will themselves game the system as best they can to get the patent out the door and move on to the next application.”

        What other behaviour is rational.

        Not so in Europe, where a lack of care during prosecution delivers issued patents that are dead on arrival and not possible to resuscitate.

        To improve quality, use the self-interest of Applicants, to police their own “Quality”.

      2. just from reading the posts of many of the U. S. practitioners here one can see that most of them do not want a high-quality examination.

        Unmitigated and complete B$ Ned.

      3. Max, just from reading the posts of many of the U. S. practitioners here one can see that most of them do not want a high-quality examination. They simply want the patent, and will themselves game the system as best they can to get the patent out the door and move on to the next application.

        I’m thrilled to see an examiner do a good job – including:

        * Finding references that squarely apply to the claims;

        * Identifying specific and relevant passages, and summarizing them in a technically correct way;

        * Responding to my arguments by finding other references that are right on-point, and speak directly to the point of novelty that I raised; and

        * Identifying legitimate ambiguity problems that I didn’t see.

        These office actions make me happy. Even though I need to limit the claims a lot, or recommend abandonment – I feel like my client has gotten a fair shake, and the process worked as intended.

        And this occurs in about 20% of applications that I file.

        1. David,

          As you can see, not one (anti-patent) person is willing to give you credit for this statement.

          It is simply an inconvenient fact that does not fit into the anti-patent script.

          Everything else that you have to say becomes meaningless because this important point is so desired to be ignored – the entire anti-patent premise rests on the fallacy of “they must be grifters.”

  18. There has been much interesting discussion, but my earlier question about refereeing remains unanswered. How did the patent in State Street ever get to the Federal Circuit when the deficiencies under 35 USC 112(6), are so blindingly apparent? How was the patent in Funk Brothers granted when the experimental work leading to the identification of the non-interfering strains had not been properly disclosed, and the strains had not been identified? How did Myriad/University of Utah get a patent covering isolated genomic BRCA1 when they had not reported its isolation as a full length molecule?

    When I entered the profession in the UK in 1968, the UK Patent Office did not examine for inventive step save in opposition proceedings, but examination paid obsessive attention to the wording of the specification. In the US there is searching novelty/inventive step examination but little real attention to the wording of the written description and the extent to which the claims are supported by it. In the EPO, non-enablement is the most powerful ground of opposition: obviousness may have the consequence of claim narrowing but insufficiency usually invalidates the patent in its entirety. There must be a median position where both receive adequate attention.

    And we should not forget that there is a disparity in resources at the application stage and post-grant. In application, resources of US $50,000 are generous. Post-grant review might cost $500,000 i.e. 10 times as much, and an infringement trial could cost $5,000,000 i.e. 100 times as much. It is not surprising if objections did not surface post-grant which were not apparent at the application stage – with so greatly increased resources it would be surprising if this did not happen.

    1. Examiners as a rule do have to read through the spec to ensure that the spec complies with mpep rules. However, specs are nothing more than rewording of the claims. Courts have lowered the threshold of enablement requirement conflating WD requirements with enablement. So as long as spec recites reworded claims one would not fail the enablement requirements. That’s a big reason for poorer quality of patents. No self respecting engineer or scientist would look at the specs of US patents and consider it fulfilling the requirement of “make” as the law requires.
      Attorneys and Cts are to blame for this dilution of 112 requirement.

      1. Examiner, I don’t know how an examiner can realistically examine for enablement. What the examiner can do is examine for written description.

        We had a discussion recently about claim terms that are not used in the specification. It is the duty of the office to make sure that the claims are really certain to one of ordinary skill in the art. Thus, if a claim term is not actually used the specification, just how the claims can be reasonably certain is not always that “clear.”

        I assume, but I do not know, that the examiner can search the specification with the terms found in the claims to identify whether or not they are actually used. This should be SOP, IMHO. In cases where the meaning of the claim term is not instantly apparent in view of the specification, I think the examiner can and should enter a 112 rejection.

        But this leaves the problem of conducting a search when the meaning of the claim itself cannot be determined because the claim terms are not used in the specification. I know that we have compact prosecution, but is it not a waste of time to actually conduct such search until the claim scope is clarified?

        1. “I know that we have compact prosecution, but is it not a waste of time to actually conduct such search until the claim scope is clarified?”

          Of course it is.

          However, the pto will never willingly change its current paradigm. Too many law firms, with too much influence at the pto, have too much invested in the “file cr@p foreign originated app, completely amend all claims and force a new search and examination when the examiner has the least amount of time to do so” strategy. If you were to police 112 at the onset, this strategy fails.

          No way management is going to bite the hand that provides the lucrative pto/law firm rotating door.

          No f’n way.

          1. the sad reality, you hit the nail on the head that the PTO is far too subservient to its “constituents.”

            The practice you mentioned that law firms like to amend the claims after a first, largely irrelevant search, in order to force a new search and an RCE, and of course to extend prosecution for their private benefit and at the expense of their clients, appears to be a racket.

            The PTO needs to clean up its act. They have to stop listening to law firms. They need also to have a much more formal relationship with the likes of the AIPLA who are basically a lobbying arm for the patent bar and for big business, not for the public.

            1. IG needs to start shining the light in the right places and actually scatter some c0ckr0aches.

              The problems with quality start with the PTO’s corruption by its “shareholders.”

              They should be asking SPEs (not Directors or other SES) about any “off the record” examination guidance they are being given via word of mouth to disperse to their examiners and start working that up the chain until you figure out who the string pullers are.

              From whom do these apparently actionable complaints come from and why are they handled in seemingly unofficial ways?

              I’m certain most wont say a thing out of fear for their jobs, but there are enough SPEs that someone will crack and spill some beans.

  19. Within the current system, which motivates Examiners who are rational actors to perform 110% production with the quality level they can generate in the hours alloted, there are still several ways quality can be improved.

    1. Create a standard format for 102 and 103 rejections in which each limitation is specifically identified, line by line and word by word, if necessary. The limitation should be linked to a specific prior art citation. The best way would be with hyperlinks with comments explaining the hyperlinks, but the below is the level of detail that should be required (but often is absent).

    A method for producing a widget comprising (see Smith, col. 3, line 22 who teaches “producing a widget”)
    stamping a metal sheet with a stamper (see Smith, col. 4, l. 33, for “pressing” which is an equivalent of “stamping”, a copper sheet, a species of metal, using a “press” which is a type of stamper).

    This level of detail would allow ready review of the action by both the applicant and by any reviewer including a SPE.

    2. Because most errors are not really clear, create an internal discussion board where Examiners can post questions about language, claim interpretation, caselaw, etc., for their internal colleagues to discuss. Encourage discussion by allowing an hour or two a week to be written off as “other” time and perhaps even giving some “internal customer” service credit for upvoted posts. Let there be a little groupthink, which will have the added advantage of pushing the group into more of a consensus on an issue which will yield more consistency. That consensus may be “wrong” sometimes in the eyes of the PTAB or CAFC, but there is more likely to be an appeal with general applicability in that case.

    3. Create a very small quality bonus when an Examiner is affirmed by the PTAB, perhaps on the order of $50 and an attaboy, and maybe a little more like $100 when affirmed by the CAFC (which is rarer since so few cases are appealed that far).

    1. “Create a standard format for 102 and 103 rejections in which each limitation is specifically identified, line by line and word by word, if necessary. The limitation should be linked to a specific prior art citation. The best way would be with hyperlinks with comments explaining the hyperlinks, but the below is the level of detail that should be required (but often is absent).”

      Item to item matching is what got us into this mess. Find facts = everyone wins. Match limitations = people bs all the time.

      “3. Create a very small quality bonus when an Examiner is affirmed by the PTAB, perhaps on the order of $50 and an attaboy, and maybe a little more like $100 when affirmed by the CAFC (which is rarer since so few cases are appealed that far).”

      Might be worth it if the PTAB got the right answer most of the time. If you’re fixing the examiner corps quality you may as well fix the board’s while you’re at it.

      1. > Item to item matching is what got us into this mess. Find facts = everyone wins. Match limitations = people bs all the time.

        So instead, we’ve gone to the entire opposite end of the spectrum. I regularly encounter examiners who play these games:

        “Claim 1 is rejected because the portion reading: is taught by Reference X (see paragraphs 4-8, 14-26, 40-63, and 100-128).”

        or:

        “Claim 1 is rejected because the portion reading: is taught by the combination of References A, B, C, D, E, and F.”

        In these cases, I can’t even guess at which specific teachings of the references the examiner believes to cover the claims. All I can argue is that I reviewed the cited portions (and the remainder) of the references but didn’t find anything resembling the claims in there, and ask the examiner to be more specific. The examiner insists that he or she isn’t obligated to be any more specific, and issues a final office action. So we’re off to the pre-appeal track, so that either the SPE or the PTAB can tell the examiner to do the job they’re supposed to be doing.

        There needs to be some balance here. But these types of low-quality examination games are played all the time – and the USPTO doesn’t even recognize it as a problem.

        1. “Claim 1 is rejected because the portion reading: is taught by Reference X (see paragraphs 4-8, 14-26, 40-63, and 100-128).”

          They may need to find some more specific facts than that bro. I didn’t say entirely fail to put them on notice.

          1. Where you trip 6 is in not realizing that what you want to avoid cannot be avoided if you are going to address what the applicant has actually claimed.

            You simply can’t avoid the hard work that you seem to want to avoid.

            1. “what you want to avoid ”

              It isn’t what I want to avoid that concerns me, it’s what needs to be done that concerns me. If they want to play pattycake on top of that then fine. For me, it rarely needs to be done, and I could just find facts and just explain what’s going where.

          2. But at least citing the relevant paragraphs is a great leap forward than simply citing the reference as a whole. Having prosecuted hundreds and hundreds and hundreds of applications, I can assure you that simply citing the reference is the norm, so citing the paragraphs is really nice. Of course, providing even more detail makes it (the OA) really thrilling, but fewer than 10% of the OA’s do so.

          3. > They may need to find some more specific facts than that bro. I didn’t say entirely fail to put them on notice.

            I’m glad that you agree, 6.

            My point is that the USPTO is doing nothing to deter this practice. I have encountered enough examiners who issue these types of rejections that it’s clearly tolerated.

            This is but one example of a broader cultural problem that I intend to highlight.

            1. With all due respect Mr. Stein, no one is willing to listen to you.

              One only has to look at this very thread.
              At this point, 145 comments, and the overwhelmingly vast majority of them are REFUSING to even consider that the problem to be addressed is on the examiners’ side.

              Lots of different flavors of the ever-present deny-what-the-real-problem-is-and-blame-the-applicants that has been going on FOREVER and a day.

              So even if you are most eloquent and most convincing, you do not have the most important ingredient: an audience willing to listen, to understand, and to take appropriate action.

              Your pearls, good sir, have some other place to be than in the mud of the swine here.

            2. “My point is that the USPTO is doing nothing to deter this practice”

              Well idk what to tell you brosef, they did in my old AU, my new AU is a crpshoot at best.

        2. David,
          I agree that citations like that are pretty much worthless. But, the problem is, according to the PAP, if somewhere in that cited mess actually is disclosed the claimed limitation it CANNOT be held as a clear error (only “clarity” & clarity errors are allowed at a much higher rate). Until that changes (and it needs to be) a very bad rejection like that will still count as a “quality action”) THAT is where the problem exists.

        3. That’s why you’re paid the big bucks. If you can’t ferret out what the Examiner means than perhaps your managing partner should take a closer look at you

          1. > If you can’t ferret out what the Examiner means…

            That is completely the wrong approach, and a terrible way to practice.

            Let’s say I disclose Invention X. The examiner rejects it in view of pages 1 through 15 of Reference Y. Now, which parts of Reference Y does the examiner mean?

            Is it Example #1 from Ref. Y, Fig. 1, which isn’t relevant for reasons (ABC)?

            Is it Example #2 from Ref. Y, Fig. 2, which isn’t relevant for reasons (DEF)?

            Is it Example #3 from Ref. Y, Fig. 3, which isn’t relevant for reasons (GHI)?…

            I shouldn’t have to guess. Worse, I shouldn’t guess – because if I guess wrongly – if I think the examiner meant Example #3 – the examiner can come back and say, no, I meant Example #2. Therefore, your argument (about GHI) is entirely moot, and here’s your final rejection.

            So I’ve burned an office action reply without advancing prosecution, and subjected the application to prosecution history estoppel for elements (GHI) without any advantage.

            Moreover: there’s this thing called the “burden of proof.” If the examiner clearly hasn’t made an adequate prima facie case, then I shouldn’t be traversing it (and creating prosecution history estoppel): I should simply be noting the failure of the prima facie case.

            Of course, that’s not a blanket rule. Even if the examiner hasn’t cited a reference in sufficient detail, I still review the whole reference, and if I feel that the entire reference renders the claims non-novel or obvious, I present claim amendments. But if the reference is just bad, I don’t even traverse it: I argue that the examiner has failed to make a prima facie case.

            1. Item to Item matching isn’t required (I agree with you though, that it is tantamount to good prosecution).

              My rude statement was directed more at people who don’t have a well thought-out point like you. People who would be like “oh, examiner cited element 2 when it’s element 3. New Non-Final please”.

              Having said that, 90% of the claims initially examined really don’t need item to item matching as a simple reference to prior art would show even a n00b how it reads on the claims. As the claims develop (ie. amend around the prior art, NOT claim their invention) more item to item matching is needed to give you (attnys) a better picture.

    2. As an examiner, I have no problem with “element matching,” which is where each element in the claim is supposed to be matched to a corresponding element or description in the cited reference. It makes for easier rejections. What is usually missing from a good “element matching” rejection is the motivation/rationale, because Examiners are focused on element matching.

      On the other side, some examiners do a great job with the motivation/rationale, but their rejections are shorter and just cite large portions of the references.

      What I can’t stand is 1d10t attorneys who focus to much on wording. If your claim says “a widget emitting a wavelength between 500 and 550nm,” and I cite a green widget, don’t come back and argue that my reference doesn’t teach the cited wavelength range. Take one second, look in wikipedia, and realize that “green” is generally accepted to fall in that wavelength range.

      1. If you have taken the time to understand that 500 to 550 nm is green, then why not take a few seconds to also type a parenthetical or something similar to indicate that the wavelength cited is green?

          1. Also works with claim terms like “connecting portion.” If that’s how you want to claim it, I’ll find anything inbetween that somehow connects the two, and call it a “connecting portion,” unless your spec says otherwise, which they never do. If you want the “connecting portion” to be an “H-shaped strut brace” or whatever, then describe and claim it that way. I’ve been on interviews where inventors were shocked that what they thought was their invention isn’t even described in the specification because the attorney went so broad/vague.

          2. If the goal is a quality patent, then there should be quality examination. In my mind, quality examination requires a clear record. I believe that the amount of time it takes to type “(which is the wavelength corresponding to green)” is well spent to make the record clear. And it should head off any frivolous arguments regarding green.

            If an examiner doesn’t have the time to make the extra 48 keystrokes I suggested, there seem to be bigger issues.

              1. Where did I suggest that it is too hard for an attorney to be qualified? Where did I suggest that an attorney shouldn’t double checking the technical accuracy? What I suggested is that it is quite easy for an examiner to make the record clear instead of leaving out some information in the examiner’s reasoning. Perhaps you think it better to make a vague rejection to cause prosecution to drag on? Does that provide some personal benefit?

                Also, your comments suggest that you are an examiner and not an attorney. Most attorneys I work with prosecute a much wider array of technology than examiners examine. Requiring an attorney to be an expert in all fields their clients prosecute seems unrealistic. In my mind applicants hire attorneys for their legal skills first and their technical expertise, if it exists, second.

                As for ethics, the ethical rule (according to the USPTO) that seems the most relevant (actual state ethical rules may differ) is included below. The points you raised don’t seem to be required per se.

                You still haven’t explained why the extra 48 keystrokes are not worthwhile.

                CLIENT-PRACTITIONER RELATIONSHIP
                § 11.101 Competence.
                A practitioner shall provide competent representation to a client. Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

            1. You miss the point. His point wasn’t that that specific statement couldn’t have been typed. His point was to the more general concept that unless the prior art specifically uses the exact phrases that the attny is looking for, then the attny pretends that it’s not there. His connecting portion is a classic example.

              But I’ll do him one better: “electrically connected”. Show me two electrical components in an electrical device that aren’t electrically connected at some point.

              1. I did not miss the point. I believe you, fred and anony have missed my point, which is that the particular point raised by anony can be avoided by a very simple explanation. In other words, make the record clear. Leaving our part of the reasoning makes the record unclear.

                As for the points about connecting portions and electrically connected, I don’t disagree at all. In fact, I doubt I would argue those types of limitations are not disclosed in the prior art because of their breadth.

      2. “As an examiner, I have no problem with “element matching,” ”

        Of course you don’t, because you’ve been trained to do so. And it isn’t a matter of me “wanting” to not element match, or having a problem with it. The problem is with what it allows people to do. They just bs match elements and get actions out because it’s too tough for most spes to review. If you make them actually find facts then a. they’re going to have to apply better art and b. less bs actions go out.

      3. “It makes for easier rejections.”

        Precisely. It makes for easier rejections because you’re bsing so easily. And so is just about everyone else, so don’t feel bad.

    3. Within the current system, which motivates Examiners who are rational actors to perform 110% production with the quality level they can generate in the hours alloted, there are still several ways quality can be improved.

      No rational actor would do 110% production unless they are going for a promotion. This statement is backwards.

  20. No where in the report does it say anything of substance. You can’t quantify and measure “quality” when it is based on a subjective standard of obviousness couched as being an objective standard of a PHOSITA. The only things the report actually discusses is the “mortgage” issue which has largely been resolved.

    Furthermore, anyone with even a little familiarity with the patent office should be able to pick out at least one glaring factual error per page in the document. It was clearly written by people that didn’t have the slightest clue about patents or how the office operates. The only thing I found interesting was the high percentage of primary examiners. I would have never guessed it was that high (roughly half of all examiners are primaries).

  21. Quality patents result from quality patent applications. Applicants ought to invest in applications that are do not fail basic requirements of 112, 101, and 102/103.

    Is that so hard to understand? Or at least hire attorneys that are not alcoholics and stuck in bottom rung of a big law firm churning out applications like used toilet paper.

      1. “That the way the patent office promotes people may be partly responsible for a tendency to grant patents too easily.”

        Lol. That “tendency” comes from 35 U.S.C 102.

        But overall a decent article.

      2. When I was there, the “examiner’s taxi” (aka the ambulance) would swing by two to three times a week to pick up examiners who had collapsed in the concourse.

        I guess examination must attract people who have problems keeping their balance and getting back on their feet immediately after a fall. LOL.

        You guys should have seen the place at 1am back then. You would have thought it a dormitory with the number of people working and sleeping at their desks.

        So glad I’m out.

  22. Hypothetically — purely hypothetically! — what would happen if, as a direct result of higher quality examination, the rate at which applications were rejected suddenly spiked up substantially?

    How would the “innovation community” and/or their online mouthpieces (to the extent there is any meaningful difference between the two) react?

    Again, this is purely hypothetical. As everyone knows, it’s totally unpossible to determine whether “poor quality examination” tends, ultimately, to favor patent applicants who always seems to be trying to obtaining the broadest claim scope possible. Moreover, it would irresponsible to speculate, especially now when the number of annual patent grants continues to soar.

  23. Whenever this issue comes up, it’s useful to pause a moment and consider what the PTO would be looking at right now had Prometheus won at the Supreme Court and you could prevent people from thinking about a “new” correlation by reciting the correlation and tossing in some old data-acquisition step.

    Of course, the PTO still hasn’t come to terms with the easily recognized fact that the fundamental logic in Prometheus v. Mayo extends waaaaaaaaay beyond “correlations” (or “natural laws”). Everyone could save a lot of time and the quality of patents would instantly rise substantially if the PTO started rejecting the junk that it now attempts to “handle” in the manner desired by those obsessed with protecting the lowest form of “innovation.”

    Anyway, back to the regularly scheduled program wherein wealthy, entitled, anti-government, faux-libertarian types demand that government workers do a better job of responding to the reams of arcana shoveled at them at unprecedented ever-expanding rates by some of the world’s highest paid attorneys.

    1. MM, the Federal Circuit, and the PTO it seems, have a difficult time accepting a Supreme Court overrule. They always try to limit the overrule to just the case that was overruled. Think Benson. The CCPA refused to accept its reasoning beyond method claims even though it was abundantly clear that a computer programmed with a BCD->binary algorithm could not be eligible simply because a machine was recited. That elevated form over substance. But one sees the CCPA and the Federal Circuit pushing that concept through and including State Street Bank. Alice finally overruled the concept – 45+ years after Benson.

      It is this intransigence that is a major cause of the Federal Circuit’s and the PTO failures.

      The court now seems willing to listen to the argument that its cases have been implicitly overruled, taking the case of Jazz Products and Mallinckrodt en banc.

      But it seems the PTO is still issuing a very large number of patents that seem very questionable under Alice or Mayo.

      And, functional claiming still is in vogue.

      Then we have the whole issue of claiming subject matter using terms not even used in the specification. Recall that recent debate here.

      1. Like this Ned?

        It involves looking out the window of an airplane. Behold the innovation!

        No. 8,965,812

        Evaluating commodity conditions using aerial image data

        Assignee: Archer Daniels Midland Co.

        Issued: February 24, 2015

        1. A method for evaluating the condition of an agricultural commodity and forecasting the production thereof in a geographical region of interest, the method comprising:

        identifying one or more geographical regions of interest, wherein the geographical region of interest comprises a plurality of different locations that historically have been sites for production of the agricultural commodity;
        obtaining an aircraft equipped with an image data acquisition system capable of collecting data;

        tasking an aircraft to fly along a travel route that is developed so that the aircraft travels across the regions of interest wherein the travel route is based on the consideration of historical data regarding production of a specified crop in one or more of the regions of interest;

        tasking the aircraft to fly along the travel route over the plurality of different locations and having the aircraft collect a plurality of sequential image data over the plurality of different locations crossed over by the travel route;

        using an image processing device to analyze the collected image data to determine at least one of a type and a condition of one or more commodities in the geographical region of interest; and

        forecasting the production of the agricultural commodity in the geographical region of interest based on the determined type and condition.

        1. obtaining an aircraft

          The use of a mobile device to reserve or schedule a plane for use in this method would represent a huge improvement.

          Even better: when you reserve or schedule a plane for use in this method, an electronic confirmation could be sent! And the confirmation could include a link to a website and an advertisement. So much innovation! So little time.

          forecasting the production of the agricultural commodity in the geographical region of interest based on the determined type and condition

          I just walked over a patch of my previously undescribed lawn and based on my overhead view of the type and condition of the grass I predict it’s going to be dry in a few months. Can I haz patent now?

          Our patent system is a joke.

          So much innovation. So little time.

          1. 8,965,812 is precisely what congress intended in 1952; any suggestion otherwise belies a complete lack of understanding of patent law, the Constitution, and the American way.

            If you don’t belieb me, you know who to ask.

        2. Feb. 24, 2015! Anyone know examiner George Chen? Michele just called and wants a meeting.

          Napoleon used manned balloons to observe enemy formations. I assume the examiner cited this well known prior art.

          Ditto the US civil war.

          WWI.

          WWII.

          Satellites — taking pictures and making predictions.

          What’s new?

          1. more completely, where is a new and useful process, machine, manufacture, or composition of matter?

            seems to me the entire problem is in the vernacular use of “process” to define any sequence of events that has any utility , which may as well be the ideal “anything under the sun” patent maximalists espouse.

            Congress or the Supreme Court needs to define a “process” as resulting in a chemical, mechanical, or nuclear change in state for patent purposes.

            That small clarification alone would likely solve the USPTO’s major quality problems and have a net positive effect on innovation in the real economy.

            1. Absolutely right, Martin.

              But then we have Bilski, a case that seem to endorse the concept that any serious of steps, regardless of whether those steps are themselves eligible, defines a patentable process.

              All I can say to that is that there was something wrong with the Bilski majority’s thinking. Those five justices upturned 150 years of precedent to the contrary.

                1. Criminy – the software is not permitting the posting of the actual link.

                  Just google 35 USC 100 and pick the Cornell Law website hit.

                2. Without delving (further) into the psychopathology of a person who must be “right” even when there is explicitly no proposition to falsify, how do you take a suggestion for new statutory language and determine that it’s “wrong”?

                  And to do so by posting a current statutory tautology ?

                  “The term “process” means process”

                  (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

                3. Mr. Snyder,

                  You have shown yourself incapable of understanding law.

                  I suggest that you ask your attorney to explain 35 USC 100(b) and why your view here is simply wrong. You attorney really should be concerned with having your informed consent, and showing here that you are NOT informed bodes poorly.

  24. The most basic issue with quality at the PTO is the examiner’s PAP plan. The IG report under estimated error rate that would still allow an above average rating (it is 2 or 3 times the number or errors stated). The PTO leadership is unwilling to change the examiner’s PAP plan. This can be seen the the PTO’s response to the IG (comment 1). The PTO response is simply more training for SPEs. More training will not fix a broken tool.

    1. “The PTO leadership is unwilling to change the examiner’s PAP plan.”

      Because POPA will fight to its dying breath any attempt to change the PAP plan. Because POPA knows that all that is required for examiners to be rated commendable or outstanding for quality is for them to be rated outstanding for quantity.

      Like I said, everybody knows the score: if the examiner does 110+% production, the examiner’s quality will be rated sufficiently high to ensure that the examiner gets a bonus. POPA is never ever going to agree to anything that changes that scheme.

      1. “Because POPA will fight to its dying breath any attempt to change the PAP plan.”

        They changed it like three years ago brosef. Substantially. Practically only the clear error portion didn’t get touched much. And for good reason. You’ll have too many spe’s running around wasting people’s time with “clear errors” all over the place when in fact it’s just a reasonable difference of opinion at base.

        “Like I said, everybody knows the score: if the examiner does 110+% production, the examiner’s quality will be rated sufficiently high to ensure that the examiner gets a bonus.”

        That’s starting to change in some areas, it really is. Starting to. It might revert back at any time.

        “POPA is never ever going to agree to anything that changes that scheme.”

        Sure they will. Popa is more in mgmt’s pocket than you seem willing to admit or have knowledge of. They work with mgmt on just about all of their concerns. And I don’t see that as inapprops.

        For instance, mgmt could change the clear error portion of the pap a bit, and popa would allow it if mgmt provides for more training instead of just more firings. The main focus of Popa in these situations basically seems to be to just ensure examiner’s employment. They don’t much care how mgmt wants to go on quality.

        1. “That’s starting to change in some areas, it really is. Starting to.”

          What areas are those?

          “It might revert back at any time.”

          It will revert back, if it even is starting to change, in some areas, if/when examiners get the sense that doing 110+% is not a guarantee of a bonus.

          “Sure they will.”

          No they won’t. There’s no way that POPA would agree to anything that jeopardizes the de facto rating of at least commendable in quality that comes along with the outstanding rating in quantity (i.e. doing 110+%). POPA will never agree to anything that makes it less likely that doing 110+% will result in a bonus. Never.

          “For instance, mgmt could change the clear error portion of the pap a bit, and popa would allow it if mgmt provides for more training instead of just more firings.”

          The “clear error” standard is a joke. It allows POPA to argue that every possible error that is identified is “just a difference of opinion.” And POPA is going to argue that in every examiner’s defense in every instance regardless of how much word smithing is done to the PAP. So sure, maybe POPA would agree to changes in “the clear error portion of the pap a bit” but that’s only because they don’t care. What they care about is this: making sure that as many examiners as possible who do 110+% get a bonus. Their goal is that every single examiner that does 110+% gets a bonus, no matter how terrible the quality of the examiner’s work. And they are never going to agree to anything that significantly impacts that scheme.

          In all seriousness, what do you think is the percentage of examiners who do 110+% who get at least a commendable rating on quality? 90%? 95% Higher? Lower?

          And what do you think is the actual percentage of examiners doing 110+% that are doing at least commendable quality work?

          1. “What areas are those?”

            Certain AU’s.

            “No they won’t. There’s no way that POPA would agree to anything that jeopardizes the de facto rating of at least commendable in quality that comes along with the outstanding rating in quantity (i.e. doing 110+%). POPA will never agree to anything that makes it less likely that doing 110+% will result in a bonus. Never.”

            You might be right, but idk bro. POPA seems pretty willing to help mgmt out on just about everything they desire.

            “The “clear error” standard is a joke.”

            I agree, but I think that it needs to remain so. I’m sorry, but clear errors and errors need to be completely different things if you’re going to base employment on them. Maybe for run of the mill errors have a large training requirement and make people show improvement in run of the mill errors or else eventually be charged with a clear error.

            “What they care about is this: making sure that as many examiners as possible who do 110+% get a bonus. Their goal is that every single examiner that does 110+% gets a bonus, no matter how terrible the quality of the examiner’s work. And they are never going to agree to anything that significantly impacts that scheme.”

            You seem certain, so I’ll take you at your word. But there’s no need to take away the production bonus just because the quality was bad. Force the given examiner to work out his quality problems and he’ll not be getting that bonus for long (because his work will take longer).

            “In all seriousness, what do you think is the percentage of examiners who do 110+% who get at least a commendable rating on quality? 90%? 95% Higher? Lower?”

            Nowadays it should be just about everyone since the new quality guidelines practically required clear errors to be charged in order to lower it from commendable. Buuuuuut, that was specifically negotiated with mgmt in exchange for other concessions.

            “And what do you think is the actual percentage of examiners doing 110+% that are doing at least commendable quality work?”

            Very low. I’d go one further and say the proportion of examiners truly doing “fully successful” levels of quality is very low, IF run of the mill errors were considered. If we only consider clear errors then I’d say it’s pretty high. But, that’s just how that ball bounces. Policing and training examiners to not make run of the mill errors is unadministrable at the current time, by a HUGE long shot.

            1. “Policing and training examiners to not make run of the mill errors is unadministrable at the current time, by a HUGE long shot.”

              Why, 6? Please explain.

              Thanks

              1. Because

                a. the supervisors themselves make said errors as a matter of standard operating procedure, because that’s how the learned to prosecute and they’re the “front line reviewers”,

                b. “too many applications” would issue based on “one tiny limitation” or a claim construction truly ivo the spec, (note also that without the current bs rejections issuing the “true” error rate on allowances would likely also be astoundingly high)

                c. the administration as a whole, middle managers on up, are incapable of handling the sheer volume of such errors and the fallout therefrom if we put significant fallout as a consequence

                d. the production system would go directly in the garbage, and that’s the glue holding this whole house of cards up,

                e. people would be so nervous about making a run of the mill error they’d never get any work done

                f. people would continue to make run of the mill errors because they’ve not been trained anywhere near well enough to not make them routinely, and the office lacks the training capacity to so train them as the training reqs would likely be that you’d basically have to turn everyone into attorneys/agents at bare minimum. And that’s even if you got everyone magically to not want to make run of the mill errors, GL!

                g. congress would flip the f out when b above happened.

                h. the PTO was never set up to account for those things so trying to implement it now is like trying to change all the deck plates on the titanic as it goes down. Even mentioning the project sounds preposterous. Not to mention the likely cost.

                i. popa

                j. working conditions

                k. the laws in place against unfair working conditions in the federal gov. that would end up blatantly violated if we attempted this on a wide scale.

                l. this is the gov, run of the mill errors come standard

                m. so many other reasons I can barely even begin to think of them all.

                1. Wow, is that for real? There’s actually a pretense that every single action is scrutinized for 3 categories of errors during a rating period? Is a “rating period” an occasional interval, and, if so, how often do they occur?

                2. “Wow, is that for real? There’s actually a pretense that every single action is scrutinized for 3 categories of errors during a rating period? Is a “rating period” an occasional interval, and, if so, how often do they occur?”

                  Yep. But technically the “three categories” are just everything we do here broken down into categories. That has little to do with whether an error is a clear error or not, at least at the upper levels of GS level. More to the point is the definition of a clear error and all the things that are built into the pap guidelines (which you can also google).

                  Rating periods are just like every quarter or half-year iirc. Certainly we do year end reviews and mid-years.

                3. Yeah, I read the PAP guidelines. They’re pretty obviously designed to make it really burdensome, if not d@mn near impossible, to give an examiner anything lower than “commendable.”

                  I know a couple of primaries that are doing particularly abysmal work, and I’ll bet they’re knocking out that 110% “productivity” in considerably less than 40 hours a week – perhaps I should start sending their SPEs a list of their “clear errors”?

                4. Appendix B in the OIG report (p31) paints a rather different picture of at least 4 total actions per year.

                  It’s a little unclear if that is met by “unofficially” sampling until one that passes is found per quarter or not…

                5. “They’re pretty obviously designed to make it really burdensome, if not d@mn near impossible, to give an examiner anything lower than “commendable.””

                  Yep that’s the new version, popa got those written that way in exchange for substantial other concessions on our part.

                6. “perhaps I should start sending their SPEs a list of their “clear errors”?”

                  You can try, but you might want to read up on what a clear error is first. As you noticed in the guidelines, it’s dam near impossible to give someone a “clear error” for anything other than something that is clear as mo fin day a CLEAR CLEAR CLEAR error. And frankly I think that’s probably how it should be.

                7. Out of 8000 examiner only 7 have been given warnings because of poor quality. What does it take to get fired for quality and has it ever happened? I doubt it!

      2. You are correct the “POPA is never ever going to agree to anything that changes the scheme”. However, there is a process for making changes to the PAP without union agreement. While difficult and risky it can be done. It is a long process. The current PTO leadership does not have the courage to try. That is the problem.

        1. I don’t think it’s lack of courage. I think it’s just practical thinking. PTO management knows that examiners who do 110+% expect, as a matter of right, a bonus, and that’s what keeps them doing 110+%. As the PTO only cares about things they can actually measure, e.g. pendency, backlog, BD’s, etc., it’s entirely reasonable for them to leave the system in place as is. What does PTO management have to gain by going through a “difficult and risky” and “long process” to change the PAP when all it would do is result in a possible drop in production? The lifers just want to claim they improved, e.g. pendency, backlog, etc., get their silver medals, and ride off into the sunset.

          And if anybody who actually cares about quality and knows what it actually is says anything contrary to the lifer management line, just do what Dudas and Doll did: issue a report claiming the PTO is doing record breaking outstanding quality work at record breaking quantity levels.

          1. “it’s entirely reasonable for them to leave the system in place as is.”

            Bingo.

            ” just do what Dudas and Doll did: issue a report claiming the PTO is doing record breaking outstanding quality work at record breaking quantity levels.”

            I like this plan. And I liked that report. Both for the lulz.

  25. As an alien (UK based) I have much sympathy for Michelle Lee and her colleagues in their difficult task of examining the host of applications that come before them. Some of the problem areas (not all of their making) are set out below:

    THE COURTS

    The Examiners can only apply the law as it is set out in statute and interpreted by the courts. In Europe, problem/solution analysis for inventive step is well-settled and in the main easy to apply. Examiners and attorneys are playing the same game using the same playing field and the same rulebook. I challenge anyone to explain Section 103 in less than 300 pages of learned treatise, with the added complication that the ground rules are apt to sudden and arbitrary change. For Section 101 the situation is even more difficult. It is wrong to stigmatise examiners for failing to meet legal standards when decades or centuries of case law have failed to provide straightforward and workable rules. As a European it sticks in my throat that new function or result is regarded as a SECONDARY INDICATION, and that perhaps helps to show how confused and unrealistic the guidance given by the courts currently is.

    FAILURE IN REFEREEING

    It should not be lost sight of that one of the important functions of an examiner is to act as a technical referee, considering the correctness and completeness of the disclosure presented. The Examiner should read the specification in the first instance through the eyes of a person trained in science or engineering, and apply the same standards of accuracy as he or she had learned in university. At the same time, universities have an obligation to train scientists and engineers in what those standards are. The famous commencement address by Richard Feynman entitled “cargo-cult science” should be read by everyone at the start of their professional careers, and ideally at least once per year thereafter as a reminder of what is needed.

    How could a patent whose claims cover genomic BRCA1 have got through the USPTO when the specification neither contains a detailed description of the isolation of genomic BRCA1 nor contains information enabling a skilled reader to isolate that molecule? How could the Bond patent in issue in Funk Brothers have issued without any detailed report of the experiments that led to finding the non-inhibitory strains, and disclosure of those strains and deposition in a culture collection (such collections were open at the time when the invention was made)? How could the patent in State Street have been issued given the self-evident issues under 35 USC 112(6) as it them was? How could the Alice patent have issued over such a flimsy and non-technical disclosure, especially where the corresponding European patents were (rightly in my view) rejected? Before we are clever lawyers we should be good scientists, looking at the work that we report with the same eyes as a university examiner considering a PhD thesis. Failure of examiners to use their basic scientific training to evaluate the quality of the disclosures presented to them does not help.

    FAILURE OF GUIDELINES

    The USPTO’s MPEP is a scholarly and encyclopaedic publication, the work of generations. But it is over-long and impenetrable. It is not something that enables new examiners to digest easily and that tells them under 35 USC 101, 102, 103 and 112 what they should be looking for. The recent Section 101 Guidance is a marvel of completeness but wholly lacks focus and intelligibility to new examiners.

    Patents in Europe are arguably just as important as those in the US. But the EPO Examination Guidelines are a fraction of the length of MPEP. Providing a companion summary of the same length as the EPO Guidelines could be a step forward. It is arguable that lengthy guidance is being written because senior professionals have neither the insight nor the time to write brief guidance.

    OUR PROFESSION

    We cannot forget that the primary responsibility for patent quality rests on us as professionals. The USPTO and other patent offices only act as a back-up to our efforts, and if the disclosures we submit are deficient under section 112 or fail to pass section 103, we have only ourselves to blame. The famous joke about the Viagra patent was: “Will it stand up in court?”, and that is a consideration we should all have in mind, not just whether we can fool an Examiner on a Friday afternoon that the unreasonably broad and imprecise claim we are putting forward is after all grantable. It is difficult for us to assume the roles both of objective referees concerned with quality and as hired hands drafting specifications for cash, but good professional work requires reconciliation of these roles. I recall a discussion with a distinguished professional colleague. “What we are selling is scope”, he said. “No”, I replied, “what we should be selling is defendable scope.”

    Our work is incredibly front-loaded, and if we get things wrong at the drafting stage, it can be impossible to put right later. Cost pressure, especially from industry, and commoditisation of the work of patent drafting suits bean counters but is indescribably short-sighted if what is sought to be patented is of any real technical significance.

    THE DOCUMENT RAIN

    At a conference in Columbia I said to Dave Kappos: “We pretend that these citations are relevant and the Examiner pretends to read them.” (derived from an older joke told in the USSR under communism: “We pretend to work and they pretend to pay us”)

    How an examiner can study and criticise a disclosure from a technical standpoint, conduct a prior art search, study the multitude of documents incoming through the document rain and draft the sort of rambling and largely irrelevant office action now insisted on, and do it all within a few hours of professional time is difficult to understand. The philosopher Archilochus is quoted by Stephen Pressfield in his book entitled Gates of Fire: “The fox has many tricks: the hedgehog has one good one”. What an examiner needs is one or two pertinent citations, not a host of marginal ones. It is owed to the examiners to change the rules so that an attorney need only cite a few references he or she considers especially pertinent, and will not be pilloried with hindsight during litigation if he or she makes a misjudgement.

    THE BLAME GAME

    As in most things, there is plenty of blame to go around. Pillorying the USPTO and its examining staff is not the best way forward: constructive and detailed reform may help.

    1. I largely agree with your overall point, but disagree with your analysis that 101 and 103 are ‘difficult.’ Instead, I’d submit that these laws are very straight forward but that, too often, attorneys (as they are apt to do), dissemble and argue to (of course) obtain obvious and ineligible claims for their clients.

      1. Or not – and the obvious is in fact in play, that the patents desired to be obtained are in full accord with the law as duly written by Congress.

    2. The rain of references is a problem.

      The solution is mainly under control of the Director — she has to propose rule changes that limits one’s right to file references. Otherwise the flood will continue as we prosecuting attorneys really have no choice.

      1. “The solution is mainly under control of the Director — she has to propose rule changes that limits one’s right to file references. ‘

        And then ron katznelson will bring suit agin the gubmint for violating upon the paperwork reduction act or something of that sort.

        1. 6, a little off topic, but I am reading book now that is talking about a dark age that occurs about 1000 years from now — a general collapse — something like the Walking Dead but without the zombies, just no government and roaming gangs looking for resources. But this actually happened before — at the collapse of the Roman Empire. We have Gregory of Tours telling us of life in Gaul after the German takeover. Civilization all but ceased to exist. I am moved every time I think of what happened then.

          The Europa game occurs at the dawn of modern civilization. I would like to play a game sometime when the collapse is occurring to see if things can be rescued, ala King Arthur, who is reputed to be a Roman General.

          1. “The Europa game occurs at the dawn of modern civilization. I would like to play a game sometime when the collapse is occurring to see if things can be rescued, ala King Arthur, who is reputed to be a Roman General.”

            Play the EU Rome game, it kinda ends right around the time you’re talking about but it might go a bit beyond I can’t remember. Just make sure your roman empire doesn’t fracture and crumble.

            It’s an older game tho, so be forewarned. It might crash a bit more, and be a little less polished.

            link to en.wikipedia.org

            My rome is always pimped out in that game. Once you know the game mechanics behind the “republic” government form tho it isn’t too hard to keep your country together. One game I used the save/load trick to conquer almost the whole map with just a tiny one province country in ireland to start with lol. One of my finest play throughs actually. I also try to colonize the whole of the uncolonized places if I can.

            Always remember in that game, if you want to save the republic (and it has grown to a mighty empire down to egypt etc.) then you HAVE to get rid of popular generals, because they will eventually revolt and make a civil war to break up your country. Especially if you leave them with a 20 stack of loyal pimped out units. There are many ways to get rid of them even if the game doesn’t want to let you. Also, go on and get rid of the barbarians up north in that game, just keep them down.

  26. Since the Patent Office is doing such a poor job examining patents and issuing so many low quality patents, the courts should stop giving the Patent Office substantial deference.

    Or any deference.

    1. I will go you one better:

      Stop spending Billions (yes – BILLIONS) on the innovation tax that floats the poor examining jobs and go to a pure registration system.

      What do you think about that, NOiP?

      1. the innovation tax

        Truly funny stuff. I innovate all the time. Pretty much every day. Never been taxed on it. Oh wait — you want to be able to sue other people and because you have to pay for that right, it’s a “tax”. Got it. Sure, that makes sense.

        go to a pure registration system.

        Never going to happen. And we all know why. If there was ever any doubt about that, we need only look at the behavior of you and your cohorts over the last twenty years when the CAFC and the PTO lowered the requirements for obtaining a patent to the very bottom rung. Somehow that still wasn’t good enough for you.

        It really is surreal watching people complain about “poor quality rejections” at the same time the PTO is granting more patents than ever before in the history of any patent system on earth.

        We all feel your pain, “anon.” It must be soooo frustrating.

  27. USPTO policies are “ineffective” at measuring whether examiners are issuing high quality patents.

    In large part, that’s because the PTO’s official policy is to (1) treat claims that protect information and logic as if they are eligible for patenting when, in fact, they’re not; (2) treat new articles and compositions as if they are methods; and (3) pretend that the functional description of information processing logic has physical structure.

    Those policies blew a massive hole into the patent system and created a tidal wave of grifters, bottom-feeders and speculators who saw an opportunity to make a lot of money off the instantly crippled system. For starters, the PTO was utterly incapable of examining the infinite variations of wacky non-technical and abstract subject matter that predictably showed up on its doorstep. That failure predictably continues to this day, years after the Supreme Court attempted to give the PTO some cover to do the right thing.

  28. I used to work at the US patent office and still shocked at what I saw while there. To be clear, many work hard and do a decent job, but the truth is it’s not a requirement. Not a requirement at all. At one extreme, some reject every patent application with sloppy unsupportable rejections (including ignoring clear MPEP guidelines). At the other extreme, some allow everything without much examination.

    Here’s a suggestion: See how many examiners allow application the last biweek of the quarter (or even better of the year). If you see a spike, dig deeper.

    Also, allow primary signature status to be removed if too many errors.

    In my opinion, allowing telecommuting reduces important mentoring. Creating multiple patent offices wasn’t a good idea. Creates redundancies and reduces efficiencies.

    1. “Here’s a suggestion: See how many examiners allow application the last biweek of the quarter (or even better of the year). If you see a spike, dig deeper.

      Also, allow primary signature status to be removed if too many errors.”

      They already do those things bro.

      And word on the street is that there are several primaries having to redo the program because of precisely this.

      1. I’m not sure what street 6 is living on, but I know of no way in which a primary’s signatory authority can be revoked once it is granted (i.e. you cannot be forced to redo the program once you have passed).

        1. “AnotherExaminer”, in this, 6 is correct.

          I personally know of one examiner that had his full sig removed. And there are others that have had to redo the program under threat of having their stamp taken back.

          It all depends on the SPE going thru the work of doumenting sufficient errors over a long enough time to establish that the quality is bad enough. Unfortunately, all too many spes won’t do that. But some do. Eventually.

    2. “In my opinion, allowing telecommuting reduces important mentoring. Creating multiple patent offices wasn’t a good idea. Creates redundancies and reduces efficiencies.”

      I agree.

    3. I disagree to a point. You may just back load a lot of the submissions. I do that a lot in private practice. I tend to file a LOT when I close out a month.

  29. ” but the PTO tends to lack either the skill or will to ensure that each office action is of a high quality.”

    Or resources. It looks like what you’re reporting on here is behind the recent spat of “clear error” allegations going around, the vast majority of which that I’ve seen so far as complete jokes.

    1. And I should note for anon that the “resources” don’t just mean hours per application.

      It means the entire setup of the whole organization and the policies in place. Spes need training and time to review (which many currently do not appear to have). The clear error guidelines would have to be much stricter (which they should not be imo simply to ensure that the corps has a due amount of capability to judge situations within reason, as is written in now). And magically spes would need to be able to find clear errors much better AND simultaneously not frivolously make accusations wasting huge amounts of everyone’s time (and thus delaying more examining). It just isn’t administrable at the current time. The changes to both policy and especially on the ground that would be required are too vast and complex for me to barely begin suggesting what would have to change. And that’s because the system grew into being nothing more than, like AAA said below: “do 110% and you have great qualitylol!”

      1. “And that’s because the system grew into being nothing more than, like AAA said below: “do 110% and you have great qualitylol!””

        ^and I should note that as a result of that having happened we now appear to have quite a folks in management who would be tasked with charging clear errors that only got their quality assessments being so amazing due to their production. Which is an outright disaster for administrability of an overall quality assurance program.

        1. Spot on observation. The SPE, QAS, SPRE, subject matter expert (LOL), and TC Director ranks are swollen with folks who did 110+% production, but don’t know their elbow from their arsehole when it comes to the law. But they know how to play the game to get production. And that’s all they know. And will ever know.

          1. I don’t know if I agree with you on the “will ever know”. None of them are unteachable. In fact, from what I see, quite a few of them are quite teachable and learn astoundingly well, they only need someone that they respect to do the teaching.

              1. “And who, pray tell, is that?”

                I’m not going to pretend that such a hypothetical creature exists for everyone in mgmt, but often they seem to pay attention to qas’s directly charged with x mini-area.

                1. I’m trying to think of anybody at the PTO who knows less about any area of the law than the current crop of QAS’s and I’m drawing a blank.

                  QAS’s got their jobs the same way SPE’s got their jobs: by doing 110+%. Or by being a SPE first and failing at that job.

                2. I’m not going to disagree with you on that, but there are several qas’s (especially the ones nobody seems to talk to much and stay low key) that do know their specialty areas.

                3. “…but there are several qas’s (especially the ones nobody seems to talk to much and stay low key) that do know their specialty areas.”

                  No there aren’t.

          2. don’t know their elbow from their arsehole when it comes to the law.

            Remember, folks: this is the guy who advocated impeaching judges who used the term “monopoly” in their patent decisions.

            He’s really, really, really concerned about “the law.” Sure he is.

  30. “USPTO policies are “ineffective” at measuring whether examiners are issuing high quality patents.
    USPTO “quality metrics” may underrepresent the examination error rate.
    USPTO is not collecting data that could improve patent quality.
    USPTO’s response to “patent mortgaging” is likely insufficient (here, patent mortgaging refers to examiners intentionally submitting low-quality work in order to meet a quota that is later re-worked).”

    1. Obviously, but that isn’t the point of the internal measurements. If you want “high quality” patents ONLY then you need to rework dem statutes.

    2. Obviously it does, the vast majority of errors made are not clear errors to begin with, and the reviewers/spes are practically incapable of catching most of the clear errors anyway due to time, training etc.

    3. There is plenty of data that could be gathered that would help improve patent quality. Again, obviously.

    4. I don’t know how prevalent that is, so I cannot say. But then, as I’m learning now, in your everyday average art unit that isn’t focused on moving cases but is rather more concerned with BSing applicants all they can get away with, this appears to be what management would consider a feature, not a bug. As soon as they stop considering bsing applicants a feature, then maybe this problem will resolve itself to a large extent.

  31. The concern is that we’re pushing examiners to keep-up rather than conduct the highest quality examination.

    hahaha QFT. I don’t know what they expect to happen though. The only way you could have true quality would be to implement a system that is 1) adversarial and 2) non-compact. They have no intention of changing either of those things.

    1. I should point out I don’t think we have a quality problem. I think the quality of work done is appropriate for the resources given – it’s probably right where it should be.

      Whether more resources should be given is a different question.

      1. appropriate for the resources

        That’s just a soundbyte for “don’t blame me.”

        May I remind you yet again that applicants do not pay for “x” amount of examination time and “that’s it.” Applicants pay for a finished product regardless of your internal metrics and “time.”

        If it takes you more than Widget time, then in order for you to give what was paid for, you need to give more than Widget time. Any “I don’t have the resources” B$ is exactly that: B$.

        Stop trying to shovel off your responsibility onto my clients.

        1. I don’t really care whether you blame us or not. We certainly are blameworthy sometimes. The fact is you’ll never have the kind of quality a court case brings when you don’t devote court-case level resources to it. I don’t think every application should get that level of scrutiny, so it’s appropriate to ask for less resources. People can disagree about how much examination is the correct amount.

          May I remind you yet again that applicants do not pay for “x” amount of examination time and “that’s it.” Applicants pay for a finished product regardless of your internal metrics and “time.”

          This is something you can direct to my superiors. I’m sure they’re just as concerned about Applicants other than anon’s as they are about anon’s Applicants though, so this one-tailed logic won’t fly. Regardless of how much time we spend on a case, every hour we spend on that one delays others, and those people want a timely examination too.

      2. To me, part of the problem stems from the fact that the PTO cannot, practically, get rid of a persistent applicant. There are unlimited (well, for 20-ish years) opportunities to file RCEs and continuations. An examiner that rejects a patent application can get worn down by persistent filings by a determined applicant. There is just no way to finally reject an application if the applicant doesn’t want it rejected.

        This is problematic. It increases workloads and directs resources away from examining new applications.

        I haven’t fully thought through how to fix this (I do think there can be legitimate reasons for needing a continuation application, but I think they are limited). Perhaps if you’ve gotten x number of rejections, you either appeal or you abandon. No more continuations until that has been resolved.

        1. I call BULL on that Jane.

          It matters NOT AT ALL how many times an applicant pays and comes back.

          In fact, the opposite is true.

          In more than one way.

          First, the job – if done right the first time does not have to be perpetually redone because the sum ENTIRE work of the applicant is there on Day 1 (you know, the no new matter rule).

          Second, it is more likely not less that a high quality examination AIDS the applicant’s representative in helping the applicant NOT be persistent. It is the low quality examination that breeds persistence, because in our discussions with clients, C R P (of an examination) will not dissuade the applicant from stopping on their view that they still deserve a patent.

          This whole “wear down the examiner” is st@le B$ that has no place in an intellectually honest assessment of the situation.

          Repeated continuations – without more – are EASILY dealt with with same results of a high quality first examination.

          1. It matters NOT AT ALL how many times an applicant pays and comes back.

            Tell it to your cohorts, “anon”, whose strategic advice to patent applicants was repeated here ad nauseum for years: “APPEAL, APPEAL, APPEAL”.

            It is the low quality examination that breeds persistence

            It’s ignorance, willful ignorance, and greed that breeds persistence.

            Most people who use the patent system understand patent law and the purpose of the laws. There is, however, a substantial entitled class of applicants who believe (or habitually pretend to believe) that they are entitled to a patent on anything they can describe using words that haven’t been strung together. How do we know that? Because those people are all over the Internets making arses out of themselves on a regular basis.

            For instance, do you remember the character who used hundreds of sockpuppets for years trying to disrupt any conversation here about subject matter eligibility? Or the guy whose blog spent half the time telling people that “big companies don’t innovate” and the other half of the time describing all the awesome patents being filed by those companies?

            I do.

            1. Brush aside your dissembling and your ad hominem and there is no point in your post.

              Try again. This time with reason and with those short declarative sentences you are always on about. Leave out the ad hominem.

            2. “There is, however, a substantial entitled class of applicants who believe (or habitually pretend to believe) that they are entitled to a patent on anything they can describe using words that haven’t been strung together.”

              ^that is the fundamental problem with the statute 35 U.S.C 102.

          2. “This whole “wear down the examiner” is st@le B$ that has no place in an intellectually honest assessment of the situation.”

            Nah bro, it’s happened to me. I only have so much time to bs around with people internally or externally over a matter, or write OAs etc.

          3. First, the job – if done right the first time does not have to be perpetually redone because the sum ENTIRE work of the applicant is there on Day 1 (you know, the no new matter rule).

            If there’s one thing you’ve proven anon, it’s that just because your opponent is certainly wrong doesn’t mean they won’t constantly argue or shift about in their incorrectness :)

          4. “First, the job – if done right the first time does not have to be perpetually redone because the sum ENTIRE work of the applicant is there on Day 1 (you know, the no new matter rule).”

            That presumes that they receive quality work to begin with. The lens of introspection is difficult to turn on oneself. Perhaps you’re railing against the office because you fear what you’ll find if you look too closely at yourself

  32. The high volume of applications is clearly impacting quality. I expect most people practicing in the mid 90s and earlier recall a higher quality of examination.

    1. Volume of applications is a non sequitur.

      Applications are examined one application at a time. If there are internal machinations afoot that are conflating the examination EACH application deserves, then that too is an internal problem.

      1. For one, more applications translated to a need for more examiners. The available pool lacked the needed number of qualified individuals so standards were lowered to obtain the needed number.

        1. Dinerstein,

          You offer a logical fallacy in that you want me to accept a second egregious error by the Office as a reason for accepting a first logical error.

          No thank you.

          I DON’T CARE that there might be a shortage of examiners – NOT MY PROBLEM, since the Office asking of payment for the end result has NO connection with any such internal issues.

          If indeed this were “serious” enough of a problem, the Office could seek non-applicant impacting other manners of redress like actually competing for the necessary talent on the open market.

          I have already made it clear that the internal “timing” mechanism has NO proper effect on the deal offered by the Office. Why in the world would you think more of that same fallacy would suffice?

  33. When was the last time the IG inspected the USPTO or issued a report?

    At whose direction does the IG operate? From whom does it receive suggestions/direction regarding its focus?

  34. Interesting article but hardly surprising. The next time ANY government agency is efficient, well supervised, and accountable for its work product, please let me know. The USPTO is a bloated and becoming irrelevant. The examiners most likely most emulate other “tenured” employees. Grossly inefficient and careless. What a joke.

  35. “Although it was clearly written by outsiders who do not fully understand the system…”

    They understand it a lot better than you think they do. They certainly understand it a lot better than the hordes of law school professors writing silly articles.

    1. Some of the earlier material coming from the OIG clearly involved talking about things they didn’t sufficiently research ahead of time. The issues that Dennis quoted here, on the other hand, actually seem to be pretty reasonable, and seem to indicate that the IG has gotten down off his high horse and taken at least a little bit of time to understand how the job is actually done.

      That said, I think the OIG was straining to find some way to besmirch the virtue of the PTO, since they went in guns blazing and ended up not really finding the scandal they were initially touting. For example, they mention something about the lack of quality evaluation resulting in 99% of examiners being eligible for an average bonus of $6000 on the basis of quality. But they only mention in a footnote that there is no quality-based award at all. The truth is that we have production-based and docket management-based awards, and we can become ineligible for those awards if we are rated marginal or unsuccessful on our performance appraisal (which includes a critical quality element).

      Overall, though, the one person probably most disappointed with this report is Lisa Rein, the Washington Post reporter whose reputation has been pinned on the OIG digging up a huge scandal. That’s not quite what ended up happening. Sorry to disappoint her, and would she please kindly get off our back.

      1. “The truth is that we have production-based and docket management-based awards, and we can become ineligible for those awards if we are rated marginal or unsuccessful on our performance appraisal (which includes a critical quality element).”

        True. But what percentage of examiners that do 110+% production get less than commendable in the quality element of their PAP? My guess is it’s less than 10%. Probably less than 5%. Actually, I would be shocked if it was as high as 5%.

        Everybody knows the score over there: do 110+% (i.e. “outstanding” production) and somehow you will magically be found to be doing “record breaking outstanding quality” work.

        Let’s not kid ourselves.

      2. For example, they mention something about the lack of quality evaluation resulting in 99% of examiners being eligible for an average bonus of $6000 on the basis of quality. But they only mention in a footnote that there is no quality-based award at all. The truth is that we have production-based and docket management-based awards, and we can become ineligible for those awards if we are rated marginal or unsuccessful on our performance appraisal (which includes a critical quality element).

        That IS the scandal: the fact that the USPTO does not take examination quality seriously. Quality is regarded as so unimportant to the USPTO’s work product that:

        (1) In contrast with timeliness and numeric output (which are measured with high precision and critically tied to performance), the USPTO’s efforts to measure examination quality are feeble.

        (2) SPEs are required to perform only an extremely superficial review of their examiners’ work product quality, are not even monitored to ensure that they meet these minimal requirements.

        (3) Even where Supervisors and OPQA personnel identify quality issues, they are encouraged to gloss over them and sweep them under the rug (“Needs Attention” rather than an error; giving examiners a lengthy “grace period” to acclimate), and corrective processes impose onerous requirements on all involved.

        (4) Even quality errors that are identified do not significantly affect examiners’ status and bonuses.

        (5) The USPTO has manipulated statistics about examination quality to reduce the appearance of problems. As a result, the USPTO Dashboard reflects quality-related “compliance rates” of 97% – notwithstanding the fact that Patent Trial and Appeal Board metrics indicate that 44% of appeals result in the reversal of at least one basis of rejection.

        Here’s how I see it: The Dudas agenda of “reject everything” created miserable employee morale, which reduced productivity and expanded the backlog. The policies that have been enacted since then, under various regimes, just give examiners free reign to do whatever they want – so long as they do it fast and at high volume, in order to boost employee morale reducing the appearance of a backlog and pendency.

        Of course, that policy creates more quality problems, but they’re only visible down the pipeline – which is why the PTAB is now swamped and running a four-year appeal backlog, but that seems to be an acceptable solution.

        1. What it really comes down to is that production and workflow are easy to measure, while quality is difficult to measure. Production and workflow metrics are fully computer automated, while to ensure quality in an action, the action must be reviewed by another human. The only way to do that, of course, is to increase the number of reviewers, probably both by hiring more RQASes and by decreasing the examiner-to-SPE ratio. Both groups are the highest paid GS workers in the agency, so doing this bears considerable expense.

          1. Send all the QAS’s, RQAS’s, TQAS’s, and whatever other letter QAS’s they have back to examining. They are beyond useless. They are not assuring the quality of anything except the existence of their perfect know-nothing-do-nothing GS-15 jobs. If they want to earn GS-15 money, let them do GS-15 production. Same with all the other non-examining, useless, known-nothing-do-nothing GS-15’s over there with the silly job titles.

          2. > What it really comes down to is that production and workflow are easy to measure, while quality is difficult to measure. Production and workflow metrics are fully computer automated, while to ensure quality in an action, the action must be reviewed by another human.

            Funny you should mention that. My next post for USPTO Talk is about specific patterns in office actions that indicate poor-quality examination, and are detectable through standard data-mining techniques.

            Some examiners play games with examination. The old “triple play” is one example: a final rejection of claims, coupled with an offer to allow them immediately if the applicant files an RCE (because the examiner racks up additional production hours with no extra work). That racket seems to have been quashed, but there are plenty of others that examiners utilize to game the system.

            Stay tuned for a write-up of my ideas.

            > The only way to do that, of course, is to increase the number of reviewers, probably both by hiring more RQASes and by decreasing the examiner-to-SPE ratio. Both groups are the highest paid GS workers in the agency, so doing this bears considerable expense.

            1) It doesn’t necessarily take more SPE hours to enforce higher standards. This is mainly a cultural issue: the USPTO has simply spread the message, internally, that quality is not important. If USPTO administration would only make a concerted effort to prioritize, demand, and enforce higher quality standards, it might be achievable without actually requiring SPEs to spend more time in review.

            2) Sure, the costs of having to hire more SPEs are tangible and measurable. The costs of poor-quality examination are less so: examiners burn more hours (and soak up USPTO production counts) by churning out poor-quality examination that could, and should, be handled in fewer office actions. The latter costs are pervasive, and may well overwhelm the costs of more effective use of SPEs.

  36. “More low quality rejections will improve patent quality.”

    Great. Another Google schill in government toeing the line.

  37. Well it seems as if a patent is invalidated in court or an IPR, it might tend to indicate low quality?

    The problem of misaligned interests is common in all economic activity. Until the office has to cough up fees/revenue for invalidated patents, it has no reason whatsoever to work on quality, and every reason to work on quantity.

    Essentially all of the costs of low patent quality are externalized from the government’s perspective- after all, plaintiff’s patent attorneys pay large tax bills; the economic losses of needless patent litigation are not borne by the treasury or the USPTO.

    That needs to change. The issuers of junk paper need some skin in the game. Is that controversial?

    1. And what’s your proposal for ensuring the Office allows applications when they deny what should have been an issued, valid patent?

    2. Martin, I have previously suggested that PTO examiner bonuses be tied directly to “validity” rates more than making a quota. Thus the money available for bonuses would rise or fall depending on validity rates.

      Also, compensation for management should heavily depend on validity rates.

      1. One (very) big problem for you Ned: time lag.

        Another (very) big problem for you Ned: feedback rate. Note that far less than 2% of work product the metric you wish to use, and then that is years down the road.

        How do you propose to overcome these rather severe constraints?

        1. Good point Anon, I don’t really think that would work.

          What do you think about: (i) Examiners should be attorneys and (ii) Examiners should speak English fluently.

          1. (i) likely helpful, but for perhaps a different reason – pride of work product and a willingness to take responsibility for that work product (as we’ll as the obvious of knowing the actual law, but this obvious statement clearly needs a caveat as several posters here – known and supposed attorneys (like Ned and Malcolm) -clearly struggle with the actual law).

            (ii) perhaps helpful, but again along the same line of thought above, fluency won’t help those who won’t help themselves get out of the way of their own philosophical curse-ades.

          2. YES, this. Fluent in written and spoken English seems like such a basic requirement. But it isn’t. Far too many times I’ve seen interviews conducted where the examiner couldn’t understand the attorney, and the other way, and so no progress is made.

            And if your SPE doesn’t speak fluently, good luck getting trained or useful feedback.

          3. (i) A larger and larger percentage of examiners are in fact attorneys. (ii) I completely agree, it really is shocking how many examiners are not fluent in English but are hired anyway because they were able to pass the TOEFL. The bar for English proficiency should be set much much higher than the TOEFL for patent examiners. However, you’d get a lot of push back and claims of discrimination based on ethnicity.

              1. Dinerstein: “one examining group in the PTO that conducts all internal discussions in Chinese.”

                Must be the reason the quality of searches in electronics is on the rise.

      2. Ned –

        Your proposal seems to assume that courts correctly determine validity.

        Clearly, this is a rather bold assumption.

        As the recent news clearly indicates, courts can’t even correctly determine if someone is guilty of murder or not.

        I don’t think its fair to hold an examiner responsible for not knowing a court is going to legislate from the bench and create an exception and declare an allowable claim to fall under that exception.

        Do you?

        1. After State Street Bank, one would have thought that business method patents were valid. A key problem is that the courts produce inconsistent holdings. This is a much larger problem than the PTO “quality”.

      3. In my experience in business, tying incentives to particular events or metrics rarely works long-term, but rather creates gaming and distortion around what often are arbitrary targets. What does seem to work well is random rewards based on gestalt; when things are going well overall, people get different kinds of rewards with few visible triggers. When things are not going well, baselines are maintained, and when things are REALLY not going well, everyone takes a fair bite of the Sh*% sandwich at the same time.

        If everyone at the USPTO knew then when a patent fell, the organization took a hit, it would change thinking for the better. It’s a million small choices that will improve quality. The hit does not have to occur to the responsible examiner to give a good effect; indeed the rewards don’t either.

        Socialism? In a way, sure it is. Sometimes team thinking really works. Ask Bill Belichick.

        1. You think Bill Belichick runs on a socialistic platform?

          You are so deep into the weeds that I doubt anyone can retrieve you and set you back on the path.

          1. Yea, I think Belechick is not concerned with individual performances relative to total team performance vis a vis almost every other coach. Socialism.

            1. With all due respect, your ignorance is staggering.

              Having a team does NOT equal socialism.

              Please stop using words you clearly do not understand.

        2. Well, Martin, everyone in business has an interest in keeping the company profitable, but that is not sufficient to motivate everyone although it does motivate managers whose bonuses are tied to profits.

          Perhaps the folks at MIT could provide a reliable system to tie bonuses to patent validity in a reliable manner so that examiners and managers both would have strong incentives to assure that the patents that issue are valid.

          Just for example, on a monthly basis, a random number generator could select 10 different patents that just issued. These could be given to 10 randomly selected law firms for an opinion on validity of the broadest claim. This would tend to avoid gaming the system and may provide a somewhat reliable metric that could be used.

          1. Criminy Ned, even the “folks at MIT” won’t help you with the two points I just gave to you.

            It’s hilarious that you have a current open case in which standing is part of your position and you are now trying to bootstrap another post-grant non-standing driven exercise.

            Perhaps instead of winging it like this, the simpler path would be to just do the F n job right the first time.

            1. anon,

              1) timing: the review could be done within one month of a patent issuing. Course the whole process would have to be completely private and anonymous so that the patent office would not be commenting on issued patents outside of an official procedure.

              2) Picking the size of the sample that would provide a meaningful statistic is the job for MIT.

        3. “If everyone at the USPTO knew then when a patent fell, the organization took a hit, it would change thinking for the better”

          The only problem with that is that then the office would revert back to a reject everything mentality.

          There are no easy solutions…this is espc true if you’re only looking at 50% of the equation like anon is

  38. “USPTO is not collecting data that could improve patent quality.”

    Did the report indicate what data that might be?

    Did the report indicate the units of measure of patent quality? Quatloos perhaps?

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