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:
- 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).
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.
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
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.
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.
“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.
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….
LOL – talk about lack of reading….
Try again to read what I actually wrote.
Let me know where exactly you think that I am in error.
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.
i.e. a third person private use is a public use
A random thought from the RandomGuy.
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?
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.
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).
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.
“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.
“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 🙂
The Jon Stewart line of comedic politicians has always been spectacular.
Thanks for the link. I laughed out loud.
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 ?
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.
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.
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.
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.
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?
And he’s humble too…
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.
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 😉
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.
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.
anon is a font of funny screennames….
What is the quality problem identified by the report? From the report:
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.
…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…)
Perhaps we should define functional to include any claim where scope exceeds enablement.
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.
Historically, most 112 problems were because the drafter used “the” before introduction of an element with “a.”
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.
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.
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
ALL claims “imply a function” of something.
That’s called “utility” and is required of claims.
“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.
sure it is bro
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.
In ALL ways wrong Ned.
You really do have to come to grips with what Congress did in 1952.
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.
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.
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.
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.
Reminiscent of the phrase “the only valid patent is the one that has not yet appeared before us”
Quacks like anti-patent propaganda…
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.
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.
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.
“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.
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.
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.
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.
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.
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.
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.
“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.
“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.
hitting a little close to home with your prosecution theory anon?
Me thinks you complain a little too much
“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.
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
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.
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.
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.
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.
“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.