Compact Patents

BulkPats

The chart above shows the percentage of U.S. patents that list more than thirty patent claims.  As you can see, the numbers have fallen for the past decade of patent issuances.  (Each dot represents patents issued within a single week.) Patents have become more compact and standardized — perhaps easier to manage both for the patentees and potential infringers.  In an upcoming post, I’ll look at one complicating factor — larger patent families.

109 thoughts on “Compact Patents

  1. 7

    The contributer called “cat” put me on the the Dunning-Kruger Effect.

    Many many thanks. When I found the relevant Wikipedia page I didn’t know whether to laugh or cry, because what Dunning and Kruger pointed out is so relevant to blog threads.

    And, as is often the case, William Shakespeare got there first:

    link to en.wikipedia.org

    1. 7.1

      Yet here, Laertes? Aboard, aboard, for shame!
      The wind sits in the shoulder of your sail,
      And you are stay’d for. There- my blessing with thee!
      And these few precepts in thy memory
      Look thou character. Give thy thoughts no tongue,
      Nor any unproportion’d thought his act.
      Be thou familiar, but by no means vulgar:
      Those friends thou hast, and their adoption tried,
      Grapple them unto thy soul with hoops of steel;
      But do not dull thy palm with entertainment
      Of each new-hatch’d, unfledg’d comrade. Beware
      Of entrance to a quarrel; but being in,
      Bear’t that th’ opposed may beware of thee.
      Give every man thine ear, but few thy voice;
      Take each man’s censure, but reserve thy judgment.
      Costly thy habit as thy purse can buy,
      But not express’d in fancy; rich, not gaudy;
      For the apparel oft proclaims the man,
      And they in France of the best rank and station
      Are most select and generous, chief in that.
      Neither a borrower nor a lender be;
      For loan oft loses both itself and friend,
      And borrowing dulls the edge of husbandry.
      This above all- to thine own self be true,
      And it must follow, as the night the day,
      Thou canst not then be false to any man.
      Farewell. My blessing season this in thee!

    2. 7.2

      often the case, William Shakespeare got there first:

      My dear 12%er, you are only off by about 2000 years to Confucius and Socrates.

      1. 7.2.1

        Touche. Excellent point. See Wikipedia. Those two insight-rich gents got there indeed a lot earlier than Willy Wobbledagger. Which one of your two was “first” though. Any idea on that? Do you suppose there was some derivation going on or was it a case of independent conception?

        But never mind. How important is it anyway, which of them was “first”?

            1. 7.2.1.1.1.1

              MaxDrie,

              Are you saying that you bring up the Bard at 7. and posted without having a point to make?

              Would not be the first time you posted without a point, and surely will not be the last.

  2. 6

    maybe a higher percentage of foreign origin cases which in my experience have fewer claims?

    1. 6.1

      Good thought. A lot in it, I fancy.

      I want to pull a few threads together. In the June 9th Bits and Bytes thread that cites the Lemley Paper on Timing your PTO Filing under the AIA, I take issue with him (at 3.1 in the thread). I argue that, in any FtF regime, you shoot yourself in the foot if you file too early. That 3.1 item continued with a discussion of disclosure requirements to be met in a FtF application and ended with anon at 3.1.1.3 writing:

      “The last time you tried your “paint bake” example you whimpered away with your head between your legs. Why on earth do you think this time would be any different?”

      However, here in this thread, at 4.1.4.2.1.2.1 anon ends it with:

      “Does not the strict “no new matter” counteract the “fear” of Divs, MaxDrei? After all, you do have the sum total universe of “invention” (claimed or orherwise) extant on the day of filing…”

      I’m arguing that when the US Courts get to grips with disputes between rival AIA filers ie the AIA equivalent of interferences, it will provide a rich seam of guidance, how to draft successfully in a FtF Regime. It will reveal to those who study the evolving jurisprudence that anon’s “sum total” on “the day of filing” matters far more than it ever did before, under FtI. Especially in the field of undisclosed intermediate generalisations, the bane in the like of every American at the EPO.

      Till then, Lemley is free to exercise his imagination, as in his Paper. But it might serve his public better, if he were to study what actually happens in the FtF world.

      1. 6.1.1

        I am reminded of the adage that even a broken clock is right twice a day.

        MaxDrei invokes my posts (but does not address the critical substance of any of the discussion points I put on the table), and then loosely throws in a disagreement with Lemley’s writings.

        There is plenty to disagree with Lemley’s writings, as even his non-FtF world views are severely warped and are more a work of evidence of his own philosophical peddling than any objective view of the law.

        One does have to wonder what “his audience” actually is.

  3. 5

    One of my friends just had a case where Claim 1 was almost two pages long, with 13 limitations, followed by an “OR” with another dozen limitations spanning another page.

    They rejected the thing prior to the OR and in response Applicant simply cancelled the first half of the claim. This is why you can’t have nice things.

      1. 5.1.1

        I claim

        1. Apparatus comprising;

        a widget (old); and

        either

        an old gadget; or

        a new gadget.

        Can’t you guys require a Markush group of alternatives be claimed in a proper form?

        1. 5.1.1.1

          Is that not proper enough form? What mine said was iirc:

          a device comprising:

          a
          b (wherein b comprises half a page of stuff) OR (wherein b comprises half a page of stuff)
          c

          1. 5.1.1.1.1

            Well, 6, if you reject A + B or B’ + C over A + B + C, and the applicant amends to limit the combination to A + B’ + C, you have established the unpatentablity of the combination A + generic B + C.

            1. 5.1.1.1.1.1

              True but a+generic b+c is never even claimed. Unless you mean the OR is “generic”. Yes, you’re right about that if that is what you mean. And that’s what I did. I don’t remember if he’s amended or not yet.

            2. 5.1.1.1.1.2

              If your “generic B” is the same as “B,” congrats Ned, you just presented a tautology.

              Further given that B’ is successful in the argument, your “generic B” must be different than that “B’ “, eh?

                1. Thanks “cat” – why don’t you do the one thing that you were ever good at and find a funny gif

        1. 5.2.1.1

          You should make a list of your bad copypasta, along with form paragraph numbers, and then just insert the form paragraph numbers.

          1. 5.2.1.1.1

            Copypasta…?

            Once again, you are off. If those opposing me had any sense of inte11ectual honesty – and integrated the counterpoints presented, then I would not have to keep on remind of them of the law and of the pertinent facts.

            1. 5.2.1.1.1.1

              If those opposing me had any sense of inte11ectual honesty – and integrated the

              *click*

              Yawn.

    1. 5.3

      Whining about a mere two page claim, when if Malcolm had his silly way with “objective physical structure,” software claims would be claimed in their equivalent form taking literally hundreds of pages.

      Way too funny.

      1. 5.3.1

        if Malcolm had his silly way with “objective physical structure,” software claims would be claimed in their equivalent form taking literally hundreds of pages.

        The claims themselves wouldn’t be long because they would refer to the ID numbers of formatted digital files associated with the application and deposited in the PTO’s handy searchable database. This is similar to the decades-old practice in the grown-up arts.

        Once those files are in the PTO’s handy searchable database, it will be much easier to compare structures in the art — both old and improved — for novelty and non-infringement.

        How many such applications to you predict will be filed, “anon”, when these structural descriptions are required for patenting “new” logic-processing machines? Five hundred thousand/year? Or maybe a tad less?

        Let everybody know.

          1. 5.3.1.1.1

            (but hey, at least you remembered my suggestion of a repository – wait, you really going to try to claim my idea…? LOL – time for you to check the archives (it’s in there!)

    2. 5.4

      In this situation, it might be worth first doing a restriction based on election of species. That way, if they strike the part of the claim directed to the elected invention, the claim then becomes directed solely to the nonelected invention, and you can send them a noncompliant amendment notice.

  4. 4

    Of course the reason for the lower number of claims is the greater fee that that PTO imposed. Clients went from 80 claims are fine to keep it to 20/3 after the new fees–what was that about three years ago?

    1. 4.1

      Successive changes in the EPO “claims fees” environment reveal that:

      1. Applicants do react rationally, tailoring their claim sets to the fees environment, but

      2. The process of adapting, enough to shift the statistics, takes an awful long time.

      I have questions about restriction requirements.

      Do Examiners raise them because it saves them work and improves their numbers? Do Applicants acquiesce because it improves their numbers too, in that what they want most is a bigger pile of patents than their competitors possess? If so, complaining about the rise of the restriction requirement is not going to be enough to dampen it, is it?

      1. 4.1.1

        >>Do Examiners raise them because it saves them work and improves their numbers?

        Yes that is why they do it, although there are some fair restrictions issued.

        >Do Applicants acquiesce because it improves their numbers too, in >that what they want most is a bigger pile of patents than their >competitors possess?

        We often agree because it is too much work to fight. I fight them sometimes and win sometimes. Often–believe it or not–examiners try to be fair and a good argument will often persuade them. I have run across a few examiners that I would classify as gaming the system and that don’t care if it is fair or not only if they can get away with it.

        But, big picture, hard to fight with petitions, SPEs, etc., and the clients usually would rather you focus on the main claims and don’t want to pay for fighting restrictions. But, it is very client dependent. I had one client that wanted us to fight every restriction but with a modest budget. But, I have noticed that restrictions over the last few years are picking up speed as a way to pick up more points.

        1. 4.1.1.1

          To me, Restrictions are a way to force the applicant to focus. If you have two or three related embodiments, that’s fine, examining won’t be too much more than a single embodiment. But when you have a seemingly random selection of combinations of features and embodiments spanning several loosely related claim sets, I’m unable to focus my search towards anything in particular, and will require Restriction to a single invention or inventive concept. I’ve only withdrawn one Restriction, and that was when the Applicant tweaked the second claim set to be directed towards a similar inventive feature as the first claim set.

      2. 4.1.2

        Re your last paragraph’s 3 questions: yes, yes and yes.
        And you forgot another motive.

      3. 4.1.3

        Sometimes if the spec has a lot of meat I restrict products and processes, because in the past people put in the most generic method claims and then flood me with an entirely new case if I find the product.

        1. 4.1.3.1

          Agreed. A good Restriction is more forward looking. It’s not so much as scoring extra “points,” but avoiding working for free.

      4. 4.1.4

        Max,

        Restriction practice in the U.S. is less than satisfactory because Examiners go too far overboard; our unity of invention is very narrow. Since each claim stands on its own, one would normally like to avoid divisionals with duplicate issuance and maintenance fees. But it is hard to argue with an Examiner who claims that the burden of searching more claims is too great since they have to do the work. One can argue that the restricted claim sets are obvious variations of each other, but this may not be a good idea. Since it is usually a lost cause, the tendency is to let it go.

        I understand there have been some rules changes for divisionals in the EPO. How is that going?

        1. 4.1.4.1

          The “burden” of searching more than one sliver of one art field should have been put out to pasture when KSR came out.

          1. 4.1.4.1.1

            100% true in species…..not always true in related, but very relevant…..many practitioners and examiners don’t fully appreciate restriction practice.

            1. 4.1.4.1.1.1

              100% true Period.

              If a single claim can be put together like a jigsaw from wildly disparate art fields, then there is ZERO logically consistent rationale for any application being “too much a burden.” The Justices all but mandated the necessity by super-empowering PHOSITA, who face no such burden.

              1. 4.1.4.1.1.1.1

                While I very seldom agree with you (wholeheartedly or half-heartedly), I agree that in my art fields the argument of examination “burden” as an excuse for restriction is just whole-cloth lie. It was usually a laughable stretch pre-KSR. After KSR, it’s nothing but laughable in almost all instances.

        2. 4.1.4.2

          Divs at the EPO? Rule changes? Well, Troubled, they brought in a Rule (perhaps 6 or 7 years ago, I forget) that capped of at 24 months the period available for filing divs. The idea was to stop Applicants filing a never-ending succession of divs throughout the 20 year term. But the outcry was so great that they scrapped that Rule (about 4 years ago, I think). So we are back now to Square 1.

          Is that what you had in mind?

          1. 4.1.4.2.1

            Max,

            Thanks. As an aside, my information is that the amendment to EPO Rule 36 did not come into force until 1 April 2014. In any case, the PTO “encourages” divisionals and the EPO discourages them. Since there are additional fees, why the later? Also, since there was a hue and cry about the 24 month time limit, there must be some advantages to an EPO divisional. For those of us who do little in Europe, what are they?

            1. 4.1.4.2.1.1

              Troubled: there must be some advantages to an EPO divisional.

              They are no “continuation” applications in the EP and claims cost a lot of money. The EP rule forced applicants to make final choices about all the subject matter in an application that they might ever wish to claim before applicants were ready to make those decisions. In addition, the rule meant that expenses for all those additional claims would need to be paid all at once (at the deadline, should there be many claims to pursue) rather than spread out over time.

            2. 4.1.4.2.1.2

              News to me, Troubled, that the EPO discourages the filing of divisionals. They bring in loads of money and are comparatively easy to search and examine. Can you expand on what you mean by “discourage”?

              One advantage of an EPO divisional is that you can file it long after the filing date it enjoys, with claims you just wrote, to surprise your competitor, after seeing what you ought to have claimed in the first place.

              And thanks for putting me straight on the dates. Amazing how time flies.

              Of course, you are up against the EPO’s notoriously strict “new matter” jurisprudence. But hey, it has to be strict doesn’t it?

              1. 4.1.4.2.1.2.1

                Max,

                Sorry for my slow response on EPO discouraging divisionals; tempus fugit. Above, you said the EPO limited them to 24 months from the parent filing date and only changed in response to complaints. One can conclude they at least earlier tried to discourage divisionals. Also there is an escalating surcharge (albeit not prohibitive) for divisionals after the first. And, the filing fee must be paid within one month to avoid abandonment. Since, as you say, a divisional requires less work, one might expect more time and a discount (lots of luck of course).

                I don’t have US statistics, but I guess half of US patents are continuations of some sort. Is the EPO divisional the same as a US continuation which includes divisionals due to lack of our unity of invention and continuations with refined claims covering the same invention (No CIPs need apply). Do you know how common divisionals are in the EPO?

                1. Thanks T for the interesting questions. I also am pressed for time but here are some thoughts.

                  A never-ending succession of divs is seen as an abuse. If you can’t prohibit well then tax it. Why an abuse? Because the FTO opinion can never be completed and this uncertainty is seen as a handicap to investment and the promotion of progress. The EPC is supposed to strike a balance between”fair” scope of protection for inventors and “reasonable” legal certainty for the public. The 24 month cap came to be seen as not fair enough to inventors.

                  The proportion of divs at the EPO is smaller. One reason is the cost of divs at the EPO. Another reason is that they are available only for subject matter different from that of the parent(s).

                  When an invention is important, one sees much div filing at the EPO. But if you look at the patent family you will likely see ten times as many filings at the USPTO. One factor might be that US patents are seen as more of a business necessity. Another might be that big families are seen as normal in the USPTO but in Europe as an expensive aberration.

                  If you expect your about-to-issue European patent to be opposed, it is a good idea to file an EPO divisional. It will make the other side think twice about opposing, for if he does, you can get him with your reinforcements, your pending divisional, which if necessary can serve as the start of a succession of divisionals.

                2. Does not the strict “no new matter” counteract the “fear” of Divs, MaxDrei? After all, you do have the sum total universe of “invention” (claimed or orherwise) extant on the day of filing…

    2. 4.2

      Night, I had it as a hard and fast rule that 20/3 was what we would file, and that it required a personal sign-off by me before we would deviate. This was back in the ’90s. There is nothing new here, except the fees for extra claims has gone way up.

      The problem has always been, in my view is that law firms like to add claims for no really good reason just to jack up their attorney fees for drafting and prosecuting them. A lot of their dependent claims add conventional elements and really do not add anything inventive.

      Now, if an application discloses a number of independent and distinct inventions, a large number of claims might be justified. But think about this: these claims will result in both a restriction requirement and excess claims fees. Therefore, initially filing the claims to the independent inventions in separate applications saves both time and money.

      1. 4.2.1

        You don’t really believe the following, do you? “The problem has always been, in my view is that law firms like to add claims for no really good reason just to jack up their attorney fees for drafting and prosecuting them. A lot of their dependent claims add conventional elements and really do not add anything inventive.” For one, many of us are on fixed fee patents, so adding claims actually costs us more but not the client. More claims mean more prosecution time, and again we’re on fixed fees for prosecution

        Maybe there are law firms like what you’re problem states, but I’ve never worked for one of them.

        1. 4.2.1.1

          PatentBob, why yes, I believe it.

          Regarding fixed fees, this is the whole build the pile philosophy. The guys who do this (I mean, inside patent counsel) are looking out for number 1 and are trying to brown-nose their own bosses, “See how many patents I got for X dollars?”

          While I question whether these inside patent counsel know what they are doing, the mere fact that they are placing you on a fixed fees speak s volumes, does it not? They really could not care whether you claim the invention properly to the smallest detail, do they? All they want is the patent. Given them what they pay for. A compact number of defensible claims, but don’t spend too much time mining the application for all its gold. That effort will not be appreciated.

          Ned

      2. 4.2.2

        Hard and fast rules that have no tie to the actual invention to be claimed are the epitome of little mind hobgoblins.

        The answer to the question of how many claims is ideal is: as many as it takes.

        Moving away from that ideal for any reasons (including the reasons of avoiding excess claim fees) must be recognized for what it is: moving away from the ideal.

        1. 4.2.2.1

          I have found that a good 10 page spec and about 5-8 claims is sufficient to describe and claim most electrical inventions. The other 10-50 pages and claims that most Applicants add are only describing background and the addition of conventional features, and/or mumbling on and confounding what the actual invention is because there isn’t one so they are trying to obfuscate that fact.

          (for example, there’s no need to explain to me what an AC power signal looks like, how it’s generated, different shapes and frequencies and variations you can have with the signals, etc., if it is irrelevant to the invention, as the invention simply runs on AC power, and doesn’t care what the signal looks like or how it’s generated because the power simply acts as power to the device, full stop.)

          1. 4.2.2.1.1

            anony, agreed. Most electrical cases don’t need large specs and 300 claims. Just describe what is new, and claim it.

          2. 4.2.2.1.2

            Thanks for the examiner perspective anony.

            I am sure that you are aware that the examiner is not the sole audience for which an application is written
            (what you “deign” as or merely obfuscation may in fact NOT be for obfuscation at all). Other audiences that may be targeted can include investor types, competitors, judges, and lay jurors, among others. While there is no doubt that at least some consideration of the reader as the examiner does come into play, that consideration is not usually the prime driver.

            1. 4.2.2.1.2.1

              I know that the patent is written for many audiences.

              However, most audiences have relatively short attention spans, and prefer to understand what is written and what is important quickly. I believe that incorporation by reference of good background or teaching references would be the better route, leaving the actual patent document to focus on the real invention, though I am well aware that my opinion matters little.

              1. 4.2.2.1.2.1.1

                It hours be noted that on a concurrent thread the notion of “thinness” that follows yours (and Ned’s) suggestions here open the patent to the very type of “attack” on what may or may not be known by PHOSITA.

                One only has to recall the UNreasonable twists to the word “laminate” to see that some robustness against infringer’s gamesmanship must be taken into account.

                (Of course, if the layers of one’s eye is laminated (v) shut, one can “claim” that they just cannot “see this.”

  5. 3

    Dennis – I’ve been getting incredibly goofy “restriction” requirements; the Examiners look at the figures, not the claims, and tell me “pick one of the embodiments.” When you try to tell them the two or 3 generic broad claims cover all 3 or 4 figures, they argue with you and threaten to have the case go abandoned. So right now I have a bunch of cases where I’m being told, you must “restrict” your case to a particular “figure,” not a particular “invention.” It will cost me too much time and $$ to petition my way out of it, so WTF.

    1. 3.1

      You could cancel all your claims and present a new single omnibus independent claim and chain all your dependents. Have them drawn to each of the features of the various embodiments. Unless your embodiments are clearly different inventions this should be no problem. Make your election but state in the response that you believe the restriction is bogus and the single claim covers all the embodiments.

      If you haven’t yet, involve the SPE or speak with the ombudsman program. They have helped me positively resolve at least three issues in cases where examiners were pushing bogus issues.

      1. 3.1.1

        That is, make your election if you choose not to cancel your claims and start over.

    2. 3.2

      the Examiners look at the figures, not the claims

      Tha’ts probably because your claims are functional junk and the “figures” are flow-charts describing obvious varations of an ineligible logical process.

      1. 3.2.1

        Nice try. I routinely receive these restrictions for purely mechanical inventions. But way to go!

        1. 3.2.1.1

          It just doesn’t matter to Malcolm – that short script C R P is a conditioned response and posted in an unthinking and thoughtless manner (the in re Orthokinetics case that I have supplemented my discussion with is ALSO a non-112(f) use of terms sounding in function mechanical claim).

          Nine years and running.

          Rah rah rah.

          1. 3.2.1.1.1

            And that’s just this blog. Back in the 90’s, IIRC, MM was haunting some of the alt.patent sites.

        2. 3.2.1.2

          We’ve received some of these too, for mechanical/electrical inventions (eg, resonators/filters). The Examiners have been pointing to the figures and restricting the figures (essentially). If you never drafted the case, it can take a while to determine how the figures map to the claims. Plus, in some of these restriction requirements, the Examiner carves it up so finely that one idea covers three or four figures, but the Examiner has each of these figures in different groups.

          The really crazy thing in our case was that the independent claim covered all of the restricted groups; so once the independent claim is allowed, all the claims are allowed. It makes no sense and wastes time and increases costs.

    3. 3.3

      These are called species retirements and are used with mutually exclusive embodiments that are non-obvious variants, and are most often used when the generic claim is very broad, and as such the dependent claims to each of the species, if allowed, would each require an independent claim.

      Read the mpep 808.01.

      1. 3.3.1

        That is the general definition. Hardly ever do I see “pick a figure” species election demand that has any merit past making examination easier on the examiner. The differences are usually superficial but good luck arguing that with the examiner.

        By the way, the mpep requires, prior to issuing the first office action, not only a thorough search and examination of all claims presented but anything that the examiner should reasonably expect to be included as an amendment by the applicant. How often does this occur?

        1. 3.3.1.1

          Well, I’d love to do that, but reality gets in the way. Get me another 5-10 hours per case, and I’ll go that extra mile. It’s not my fault Congress/PTO hasn’t sufficiently funded/staffed the PTO to do its job.

          And before you say “it’s your job, just do it,” let me remind you that if you think the current crop of Examiners aren’t that great, who do you think would replace them? There’s a limited supply of English speaking, technically competent, and legally knowledgable people in the world, and the PTO can’t even find enough of them to fill its current ranks.

          1. 3.3.1.1.1

            I’m merely stating what the MPEP requires. It’s up to you as the examiner to choose to follow the MPEP or not. It may be an unreasonable burden, but it’s the standard.

            I don’t disagree with you on the aspect of needing more English speaking examiners. I simply don’t understand how someone who isn’t proficient in a language could ever hope to successfully perform in a job that is entirely dependent upon linguistic construction using grammar, syntax, and so forth.

            1. 3.3.1.1.1.1

              The MPEP has myriad requirements for both examiners and applicants, and it’s entirely possible to go down the list of things required in the MPEP that each side misses, but it’s really not productive.

              Common requirements not met by applicants include: deficient IDSs (although good luck with that one), poorly written claims, specification, etc. Basically everything laid out in section 600.

              1. 3.3.1.1.1.1.1

                It should surprise no one that “cat” is using the meme of “Accuse Others Of That Which Malcolm Does” – to wit, the Google seq change results for “Dunning-Kruger” reveals his own logical fallacies, an most immediately at 3.3.1.1.1.1 he is wronger than wrong.

                The “faults” he may ascribe to applicants being the sphere, correctable perhaps by the very examination process, whereas the faults of the examiner (flat earth) being much more difficult to fix. That was kind of the point, my morphic-named friend.

                (btw, the better choice, if one be made, for your attempted denigration would have been “Curse of Knowledge”)

    4. 3.4

      This is a correct way of doing a certain kind of restriction, called an election of species. You disclose several species, i.e., ways of doing something that are patentably distinct from each other. You are then required to pick one of those species, because searching for multiple species is determined to carry a serious search burden. The species that you elect corresponds to some subset of claims in the application, so by electing a species you essentially elect certain claims – but you are, in fact, electing based on the specification rather than the claims.

      Usually, a good approach when you have ge neric claims in your application and you’re being required to elect a single species is to remind the examiner that if a claim is still ge neric when it becomes allowable, all of the claims drawn to species that are ge neric from that claim should be rejoined. When the case is allowed, the examiner is supposed to resolve this by him or herself to determine what to do with the withdrawn claims, but make sure they handle it correctly.

      Also, don’t cancel withdrawn claims unless you really have to for some reason.

      1. 3.4.1

        Sorry, I messed that up – if a claim is still generic when it becomes allowable, all of the species claims dependent upon that generic claim should be rejoined. That’s why you don’t want to cancel withdrawn claims.

    5. 3.5

      Just select one of the figures, argue that it’s not much of a burden to search for the other figures. Then note that the ind claims cover all the embodiments, so when the ind claims become patentable, all the claims become patentable.

      The detriment is that your amendments have to cover whatever figure you’ve selected. If you ever amend the ind claims so they don’t cover this figure, you’d be in trouble.

    6. 3.7

      the Examiners look at the figures, not the claims, and tell me “pick one of the embodiments.” When you try to tell them the two or 3 generic broad claims cover all 3 or 4 figures, they argue with you and threaten to have the case go abandoned.

      That’s proper restricting, except for the “threatening.” Of course, not electing will result in abandonment though. If you have three distinct ways of doing something, you have three inventions.

      1. 3.7.1

        “except for the threatening. . .”

        Bruther. I had the exact same situation where the examiner told me I was going to request the restriction she demanded or the case would go abandoned. When I told her I would have to talk it over with her SPE and wanted her in on the conversation, she said if I talked to her SPE she would see to it that I never got another allowance from her group, which was an implicit confirmation of rumors of internal blacklists.

        I, of course, went quietly ballistic at the threat and was shocked to find that unlike errant prosecutors, there is no system for filing a disciplinary complaint against examiners. Egregious problems like mine are handled in a sort of informal, ill-defined manner. Sort of like the FISA court, I guess. Good ole’ POPA. If you wanna’ make a complaint against a patent atty or agent, everybody knows you call Harry. If you wanna’ make a complaint against an examiner, where do you start? OED doesn’t handle it.

        I was going through the steps to exhaust my administrative remedies anticipating a writ of mandamus when I got a call from a senior examiner in a completely different group who, apparently, handled examiner misconduct charges as an avocation or something. Not long after that the case was transferred to a new examiner who w/drew the restriction requirement.

        I couldn’t find the problem examiner on the employee phone list after that. Maybe she got married and changed her name. Pity her husband, spouse, whatever.

        1. 3.7.1.1

          Babel, personally, I look at restrictions as benefits since I can file a divisional application on the restricted claims and they will have the benefit of 121. This prevents double-patenting rejections, and that reliably permits royalties on each patent if they are both involved in the same lawsuit.

          1. 3.7.1.1.1

            Apparently, even Dennis (once) did not know the answer to this question. See, link to patentlyo.com

            Also, see, e.g., Carlson Marketing Group, Inc. v. Royal Indem. Co., 517 F. Supp. 2d 1089, 1108 (D. Minn. 2007)

            “A terminal disclaimer is a concession by the patentee that two patents that resulted from the same application should be treated as a single patent, effective for a single patent term. Put differently, the claims of the continuation patent are treated as if they appeared in the first patent.

            If the continuation claims had appeared in the first patent, no one could dispute that all of the claims in’ that one patent would have represented a single ‘intellectual right’ …. Because a terminal disclaimer constructively consolidates two patents, the result should be no different where a patentee files, or is prepared to file, a terminal disclaimer as to a continuation patent. Accordingly, the claims of the ‘100 patent and the claims of the ‘695 patent together constitute a single ‘intellectual right’ ….”

          2. 3.7.1.1.2

            Ned, I do see your point. And I think having the subject matter split into 2 patents acts as an insurance policy. If the patents can be separately enforced, only one need be put at risk of invalidation in litigation. Not always, but sometimes.

            But you are working with a different class of inventor than most of my small guys. It’s all a lot of them can do to pay prosecution, issue, maintenance fees on one patent. It can be difficult to explain to them why they are being double-charged, particularly when I don’t really understand myself in a lot of instances.

            In this case I just turned the clock off and I was willing to invest whatever time was required to sort it out b/c what the examiner did and her attitude were so outrageous.

        2. 3.7.1.2

          “…she said if I talked to her SPE she would see to it that I never got another allowance from her group…”

          “If you wanna’ make a complaint against an examiner, where do you start? OED doesn’t handle it.”

          This is why it’s so maddening when “scholars” refer to the fictitious notion of applicants “wearing down” examiners – like applicants have any power whatsoever in that dynamic! There is no such thing as being “worn down” for them, since they keep getting counts no matter how many continuations/RCEs it takes (albeit with some diminishing returns on the latter now). There simply do not seem to be any reliable consequences for examiner misconduct, and the risk of calling an SPE or ombudsman is prohibitive for many applicants.

          1. 3.7.1.2.1

            You might note Ken, that rather unsurprisingly, there is a rather repetitious contingent of like-minded (and I use that term as loosely as possible) posters on these boards that “buy in” to that same notion that “examiners can be worn down.”

            Want to guess who those posters might be?

          2. 3.7.1.2.2

            “like applicants have any power whatsoever in that dynamic!”

            They do if they have infinite money or just keep blabbering so much that the other person, as a real life person, gets tired of hearing about it.

            “There simply do not seem to be any reliable consequences for examiner misconduct, and the risk of calling an SPE or ombudsman is prohibitive for many applicants.”

            Of course, we have significant protections like any agent of the state. Although I wouldn’t say that calling the SPE is all that “risky”. Especially if you conference in the examiner and be very reasonable throughout.

            1. 3.7.1.2.2.1

              If you have done your job right 6, then neither infinite money nor just keep blabbering is meaningful to ANY degree.

              Your rather weak “gets tired” bit is every bit the fallacy to be extinguished. There is ZERO reason for any examiner to “get tired” and not do the job that they are paid to do, no matter how much money or blabbering the other side does.

              1. 3.7.1.2.2.1.1

                “If you have done your job right 6, then neither infinite money nor just keep blabbering is meaningful to ANY degree.”

                Yes it is brosef. You have no idea how long it can take to schedule meetings, have meetings, teach ignorant people, in a given case inside a bureaucracy.

                ” and not do the job that they are paid to do,”

                Technically I already did the job I was paid to do in such circumstances. I put them on notice, sent them an action, they sent back a reply, I put them on notice, and explained things, sent an action, maybe had an interview or two, and then I have to go and tell still other people about what is happening in the case (for no credit on that last bit), teach them (no credit), discuss discuss discuss topics above some people’s heads etc etc. After while the law is the last thing I care about there, I’d much rather be free to go to the pool etc. It doesn’t happen that much to me of late but it does happen.

        3. 3.7.1.3

          >>>When I told her I would have to talk it over with her SPE and wanted her in on the conversation, she said if I talked to her SPE she would see to it that I never got another allowance from her group, which was an implicit confirmation of rumors of internal blacklists.<<<

          I had the equivalent situation recently. Examiner called me, quite PO'd that I called the SPE on the examiner's day off, after the examiner had twice refused to enter amendments and consider arguments which addressed unreasonable restriction requirement issues. SPE agreed with my position, so examiner said OK, given the discussion with he SPE, claims will be entered. Shortly thereafter, massive Final Rejection issued. All based on clearly erroneous 102 position, no way compliant with applicable law. Just to make it frightfully expensive for the applicant, I think.

          – Yea, patent quality. Lots of BS.
          How about some PATENT EXAMINING QUALITY ????

        4. 3.7.1.4

          which was an implicit confirmation of rumors of internal blacklists.

          I SAWS what you did there…

          ;-)

    7. 3.8

      ” the Examiners look at the figures, not the claims, and tell me “pick one of the embodiments.””

      Yeah they’re doing a “species not yet claimed” restriction. The office has apparently started that back up moreso. The reason as far as I’m aware is that this is because they want to cut WAAAAY back on restrictions happening after non-f. So, instead of issuing the species restriction once you bother to put the species specifics in the claims in an amendment we instead are to pre-restrict. It’s sorta goofy since a lot of the time applicants will just pick one species (embodiment), and their claims are all generic, then the case eventually gets allowed with all generic claims, so there was no point to the restriction and it affected nothing. This is, I’m pretty sure, why such restrictions were frowned upon back in the day. But, like I said, they want to cut back artificially on the restrictions done after non-f.

    8. 3.9

      The best thing to do is:
      (1) make an election of a figure/figures, so it doesn’t get abandoned.
      (2) say that all your claims currently read on those elected figures.
      (3) explain why they read on the elected figures.
      (4) wait for a response, then challenge their response if it is as ridiculous as you make it sound. The Restriction may look okay on its face to a SPE or other reviewer, but if their response to your arguments is just wrong, you have a better chance of success.

  6. 2

    Most requests for division are not contested (no matter how spurious the request); combine with a “sensitivity” to client cost factors on claim fees and this trend has a “well no duh” factor.

    1. 2.1

      Add IN-sensitivity to the multiplied client costs for all the divisional applications filing, issuance and maintenance fees.

      P.S. The PTO has a clever way to handle Petitions for improper restrictions – don’t decide them until the application will go into statutory abandonment unless and until the improper restriction has to be made.

      1. 2.1.1

        Not sure just to whom you want to impute that “insensitivity” Paul – I was not implying that the applicant’s representative was insensitive to anything of the sort, and your further comment adds nicely to the reality of the situation.

      2. 2.1.2

        And the PTO has been handling responses to restrictions in that manner for decades. That’s why it’s nearly impossible to actually fight a restriction. What I would do would be to elect but traverse the requirement. Sometimes the examiner would realize his/her error.

        1. 2.1.2.1

          Two magic words that should be in every response to restriction:

          “With traverse.”

          Can anyone provide a cogent reason why these two words would ever be omitted?

          1. 2.1.2.1.1

            “with traverse” must be followed with an actual traverse, including at least basic arguments why the restriction was improper. Without the arguments, the simple words “with traverse” are treated as “without traverse.”

            But I agree, almost every firm I’ve seen has about a page of copy/past fluff about the impropriety of the restriction, which I guess is at least a basic traverse, even if no specific facts of the pending case are included.

            1. 2.1.2.1.1.1

              Because, anon, restrictions are good for an applicant. The non elected claims can result in patents that are immune from double patenting defenses, and will result in a separate royalty if both it and the parent are in the same case.

              1. 2.1.2.1.1.1.1

                Oh, don’t get me wrong Ned, those errant division requests may have an upside, but that don’t eliminate the “wrongness” of the action in and of itself (you know, it goes with that maxim I so often try to impress upon you: the ends do not justify the means)

            2. 2.1.2.1.1.2

              “But I agree, almost every firm I’ve seen has about a page of copy/past fluff about the impropriety of the restriction, which I guess is at least a basic traverse, even if no specific facts of the pending case are included.”

              Funny. Let me rephrase, if you please:

              But I agree, almost every examiner I’ve seen has about a page of copy/past fluff about the propriety of the restriction, which I guess is at least a basic restriction, even if no specific facts of the pending case are included.

  7. 1

    Not surprising for most fields of art – but I’m interested in tends in the fields of chemistry and biotech. Those are the patents that have routinely included dozens or hundreds of claims to different species or subgenii.

    1. 1.1

      David, do you know whether the patent owners ever enforce these claims to species or subgenii, and by that I mean sue on them to the exclusion of the genus claims?

      1. 1.1.1

        There was a case like that on these boards awhile back Ned – out of Canada if memory serves me right…

        Quintillion would be a small number to that case. Not bad for one of the “grown up” arts…

        (and don’t get me started about actually possessing utility at the time the application is filed when so many of these “paper invention//study plans” FAIL when actually put to the FDA tests – “grown up arts” indeed)

    2. 1.3

      It looks like a steady downward trend that might just reflect the rapid rise in junky simple business method patents driving down the percentage of chemical (and bio) patents that make up the majority of patents with long lists of claims.

      1. 1.3.1

        Its so nice of you to live in your own fantasy world and use the label of “junky” in such a manner.

        Please feel free to join Malcolm and 6 and not use those things that you would deny protection to.

    3. 1.4

      David, it would be interesting to see the data that made the chart, with a column for art field so that various filters could be applied and a greater appreciation of the data garnered.

      Sort of what I did simply with the independent inventor data which when plotted as two normalized lines really shows how the AIA has exploded the non-independent counts.

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