Patent Quality Symposium Report – USPTO Patent Quality Initiative Moving Forward

Guest Post by Professors Colleen Chien, Santa Clara University Law School and Arti Rai, Duke Law School

On Wednesday, April 27, 2016, the USPTO hosted a day-long conference around the one-year anniversary of its Enhanced Patent Quality Initiative. We were among the over 1,800 virtual attendees (in addition to over 400 participants at USPTO headquarters and in the satellite offices) and provide this brief summary of some of the highlights. A recording of the day is available here, and information on the launch of the Office’s Stakeholder Training on Examination Practice and Procedure (STEPP) program is here. The USPTO’s current request for comments on patent quality metrics, including the Master Review Form (MRF), is due May 24. Santa Clara Law research assistant Angela Habbibi is pulling together a summary of the USPTO’s request for comments on quality case studies here, and the hardworking students of the Berkeley Technology Law Journal have done the same, with respect to comments submitted to the USPTO from last year, here, and comments submitted to the Journal here.

USPTO Director Michelle Lee and Deputy Commissioner for Patent Quality Valencia Martin-Wallace opened the day by highlighting four inter-related components: 1) the clarity of the record pilot; 2) new quality metrics, as embodied in a new Master Review Form; 3) using post-grant outcomes to improve patent examination; and 4) improved prior art search, so as to accomplish “compact prosecution.”  Subsequent speakers discussed each of these components in detail, generally with a focus on one or more of the following themes – clarity, consistency, accountability, and collaboration.

Clarity of Record Pilot

Robin Evans, Director of TC 2800, focused on the clarity of the record pilot, which started in March and will run for 6 months. The pilot includes approximately 130 randomly selected examiner participants, (all GS 11-15 with at least years of 2 years of experience) and 45 SPEs.  The USPTO anticipates processing about 2000 applications through the pilot.

Examiners in the pilot will focus on enhancing documentation of claim interpretation (including functional/112(f) language), giving more precise reasons for allowance, doing pre-search interviews at the request of the examiner, and giving more detailed interview summaries.  Examiners are also supposed to document the amount of time they spend improving clarity. Examination conducted in the pilot will be compared with that conducted by a control group composed of similar examiners.

Master Review Form, Consistency, and Data Collection and Analysis

According to Director Lee and Brian Hanlon, the Director of the Office of Patent Legal Administration, the pilot’s emphasis on record clarity is also embodied in the new 25-page Master Review Form for quality, which places equal weight on clarity and correctness.  As Marty Rater, Chief Statistician of the Office of Patent Quality Assurance explained in the afternoon, the MRF is the Office’s response to a general perception that the quality composite that the Office has long relied upon needed to be replaced.  While not all 25-pages would be used for any one application, having a single uniform form will enable previously siloed reviews, carried on (for example) at the TC, OPQA, and other levels, to draw from a common core of data and improve consistency across the agency. Stakeholders in the afternoon session provided feedback on how the MRF could be made clearer and shorter, so as to facilitate consistent reviews.

A look at the 135 quality case study topics submitted for consideration to the USPTO in response to a recent request highlights that consistency in the application of Sections 101, 103, and 112 is perhaps the greatest concern. Consistency has ramifications for compact prosecution and continuation practice as well. If an applicant is confident that her applications are consistently subjected to high-quality examination, she may find it easier to appeal or abandon on the basis of a final rejection, rather than continuing the case in hopes of a different outcome from a different examiner on the same patent application.

In line with the case study suggestions, the USPTO aims to address concerns about particular types of examiner rejections and consistency across technology groups within the patent corps. To that end, it will be conducting studies on the use of section 101 and 112(f) by examiners; on the correctness and clarity of motivation statements in obviousness rejections based on combining references; and enforcement of written description requirements in continuation applications.

The release by the Patent Office of large amounts of data in accordance with the Obama Administration’s decision to treat government data as a national asset of the American people has led to the burgeoning of patent data companies and innovation, with at least 135 companies relying on patent data, according to a count by one of us. But a question regarding data analysis by external sources prompted Valencia Martin-Wallace to note that these external sources produced results that didn’t always match the USPTO’s own analyses.  Deputy Director Russ Slifer elaborated on this theme by noting that the USPTO wanted to be part of the community dialogue on data analysis and had recently put out a large amount of publicly available, freely analyzable data at https://developer.uspto.gov.

Use of Post-Grant Outcomes

Jack Harvey, the Acting Assistant Deputy Commissioner for Patent Operations, discussed several objectives with respect to a just-initiated pilot, expected to last 3-4 months, that will use of post-grant outcomes to enhance quality.  First, in cases where patents petitioned before the PTAB have related applications pending, the examiner on the related applications will receive the petition. Second, and more broadly, data collected from post-grant proceedings will be used to improve examiner search strategy, both at the level of the individual examiner and also across the corps. It’s our understanding that such “feedback loops” have also been a feature of EPO practice: in which nullity proceedings involve the original patent examining team that granted the patent, which can then learn from the post-grant proceedings.

Improved Search and Training

According to Maria Holtmann, Director of International Programs, the goal of improved search will also be pursued through a pilot, to be begun later this year, that will “jumpstart” search by providing automated pre-examination search results.  Ongoing pilots are currently providing examiners with JPO and KIPO search reports prior to the first office action.  And the Global Dossier now provides examiners and the public with “one-stop access” to dossiers of all related applications in the IP5.

We were happy to hear that access to comprehensive prior art sources – including non-patent sources – earlier in the examination process is seen as a major patent quality lever. Work by one of us suggests that European Patent Office search reports cite non-patent literature sources more than USPTO examiners rely upon on them in their own examination, but a number of existing and future initiatives could close this gap. As Donald Hajec, Assistant Deputy Commissioner for Patent Operations, described, the USPTO  is promoting greater awareness of non-patent technical sources, through the STIC, crowdsourcing of NPL, and technical training by outside scientists through the PETTP program, for example. And in line with numerous commentators who have emphasized the importance of Section 112 in policing quality, Hajec stressed the extensive training examiners, particularly those in electrical/mechanical and computer/software art units, have received on Section 112(a) (written description and enablement), 112(b) definiteness, and 112(f).

Collaboration

During the last set of panels, moderated by Deputy Director Russ Slifer, participants from companies and law firms acknowledged the responsibility for patent quality that stakeholders share with the USPTO. The participants on the panel provided their sense of 1) what initiatives of the USPTO initiatives are working for stakeholders and what needs improvement, 2)  the wide variability in the business uses of patents based on company size and industry, and 3) what stakeholders could do, on their own or in conjunction with Examiners, to improve the quality of submitted applications and patent prosecution.

In particular, props were given to Track One, which Bill Bunker of Knobbe commented that certain clients (not small entities) use exclusively, with a much more efficient outcome. He also described the First Action Interview Program as a good early opportunity to achieve a meeting of the minds. Other panelists applauded the USPTO for focusing on patent quality, a topic that they thought had significant economic consequences and was imperative to the functioning and perception of the patent system. However, Laura Sheridan of Google observed that the voluntary nature of certain initiatives like the glossary pilot program limited their impact, and that mandatory enforcement would likely be more effective at raising quality uniformly across applications.

An interesting question is whether or not all patents “need” to be of the highest quality, given the diverse business uses of patents by different types of companies and industries. SAS files patents primarily for defensive reasons, commented Tim Wilson, and needs to have reliable patents for negotiations. In contrast, according to Bill Nydegger of Workman Nydeggerr commented, startups are often just trying to validate their technology and get an issued patent, rather than thinking about it being tested in court or negotiations. Biopharma patents often prove their value in the last five years of a patent’s life, with written description and utility requirements providing the most important filters, Kevin Noonan of MBHB commented.

For both the USPTO and prosecutors, the challenge of increasing quality in the face of flat budgets and price pressure is quite real, although perhaps less of an issue in the biopharma sector. In that vein, several ways to do more with less were discussed. In response to a question from Deputy Director Slifer, panelists discussed how they could continue to ensure that patent prosecutors were actually pursuing a strategy that serves the business use – whether that be to cover one’s own product or that of a competitor. Although getting an issued patent is often the goal of the prosecutor, if its scope is diminished to such a degree that it doesn’t make business sense, cutting off prosecution earlier may be the right approach. In addition, greater collaboration between examiners and applicants earlier in the process could streamline the process. Examiners would probably appreciate applicant summaries of the subject matter. Though applicants are loath to put material into the record, examiners could perhaps get a demonstration of the technology before examination and search began, enabling a substantive discussion of the prior art early in the process.

One question that deserves more attention, in our opinion, is whether the USPTO could provide “model applications” or patents to facilitate  public understanding of what a “quality” application looks like from the standpoint of the USPTO. Shared responsibility comes from shared understanding. The newly devised STEPP program, to educate law-firm and in-house practitioners on how Patent Examiners review applications, starting in July, as well as the Symposium overall, are important steps in achieving shared understanding, and we join the patent community in applauding USPTO efforts.

To further these efforts, our institutions, Santa Clara and Duke Law Schools, will be hosting two conferences on USPTO initiatives and other levers for improving patent quality later this year.  The conferences will be held in Santa Clara and also in the DC area and will focus on empirical evaluation of patent quality levers.  We will provide more information on these forthcoming conferences shortly.

206 thoughts on “Patent Quality Symposium Report – USPTO Patent Quality Initiative Moving Forward

  1. 15

    “An interesting question is whether or not all patents “need” to be of the highest quality, given the diverse business uses of patents by different types of companies and industries.”

    Of course they don’t.

    “In contrast, according to Bill Nydegger of Workman Nydeggerr commented, startups are often just trying to validate their technology and get an issued patent, rather than thinking about it being tested in court or negotiations. ”

    And often they don’t even much care about the scope they get either. Of course, the office only finds out about this “late” in the procedure. If they simply tell us up front “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims” then a large number of cases could be resolved right at first action no problem and cut down on waste. But usually we end up sending that action, and maybe another action before anyone bothers to tell us that, then they’re at final, still want a patent, and have to file an RCE.

    1. 15.1

      I’m assuming that you are examiner based on your post. The RCE should be viewed favorably by examiners and the Office, right? I mean, you’ve already performed the majority of searching and reading of the claims. With the RCE, the Office collects fees for much less work by its staff, right right?

      1. 15.1.1

        Iit,

        You must be new – 6 is a venerable patent examiner that has been on these boards for like forever.

        The “RCE viewed favorably” has – of course – its own dubious history. The direct answer to your question is yes – a nice juicy count for far less work. And that count used to be even juicier, which led to something called the RCE Gravytrain, in which applicants were pushed to RCE at every turn (under the “you get what you measure” human condition). Kappos came in, rearranged the deck chairs a bit, devalued the RCE and placed more emphasis on a first examination within the law-required time frame. RCEs (as I currently understand them) are still placed WAY back in the queue, and will likely be “tomorrow’s” h0rr0r story of delay. But “don’t worry,” since asking for an RCE stops the Patent Term Adjustment mechanism, those p00r applications lost in that RCE purgatory will not gain any additional enforcement time when (if) they are ever released.

      2. 15.1.2

        “The RCE should be viewed favorably by examiners and the Office, right?”

        That depends on whether or not you are “management” that is trying to cut down on RCEs. And whether or not you’re an individual examiner gaming the count system or not.

    2. 15.2

      ” If they simply tell us up front “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims” then a large number of cases could be resolved right at first action no problem and cut down on waste. But usually we end up sending that action, and maybe another action before anyone bothers to tell us that, then they’re at final, still want a patent, and have to file an RCE.””

      6, If this is true, then I would suggest you treat all applications as including the request: “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims”.

      An Office Action with a clear identification of subject matter that the Examiner finds allowable from the outset is very much appreciated and can have a bearing on the response….

      1. 15.2.1

        “6, If this is true, then I would suggest you treat all applications as including the request: “try to find me some patentable subject matter in here that you’ll allow rather than spending a day or two trying to “build a case” against my claims”.”

        Wish I could Les, and I do try to do that if I’m well supported by competent management. But if the management is not wholly on board with that flavor of compact prosecution (because they’re either not competent enough, don’t have the balls enough, or just don’t feel like it administratively) then it leads to a gigantic amount of waste and low production.

        And, there are communication inefficiencies with many applicants that are rather large. Especially foreign ones. This also causes all that time to largely go to waste from my short term perspective while all that work (on avg lets say an hour or a few hours) just gets turned into a little blurb at the end telling them what to do to put the case into condition for allowance, which they might not even want to do. Waste which then can be turned into long term permanent waste if a newly published reference then blows up that suggestion at time of amendment because we didn’t act to allow the case before that newly published reference published, note that newly pubbed references being found prior to issuance is a good thing anyway.

        There’s also obviously the issue where the applicant simply doesn’t want to make such an amendment thus turning all those efforts into waste (because again, there was no check box for them to tick that they just wanted me to find them some allowable subject matter).

        But, that being said, if the case isn’t a case that already has a lot of allowable subject matter indicated in parents then I try to do that when I can, especially if something more or less jumps out at me.

        In the current system, I judge it to be unsustainable to do it for every case while trying to get counts for promos or keeping up with your work as a primary. I tried for awhile.

        “An Office Action with a clear identification of subject matter that the Examiner finds allowable from the outset is very much appreciated and can have a bearing on the response….”

        Obviously. But that “can” is covering up a large possibility that the time it takes to do that “can” turn into waste. Even when the offered subject matter is supremely generous, tailored closely to what the applicant is already trying to get. And, I should note, my art is likely one of the more easier ones to do this procedure in, though I might be wrong about that.

  2. 14

    “Examiners would probably appreciate applicant summaries of the subject matter.”

    Yes, no kidding, I can “sum up”, in plain english to one of ordinary skill a 30 page specification about a single invention in about one sentence the vast majority of the time. Yet, the “summary of the invention” practically never bothers to do such a thing, though the abstracts sometimes give a general impression. “The law” could do a lot to improve the ability to discuss in general language prior to formal claim language issuance.

    1. 14.1

      I can “sum up”, in plain english to one of ordinary skill a 30 page specification about a single invention in about one sentence the vast majority of the time

      No you can’t.

      1. 14.1.1

        He thinks he can.

        At least now he is reading that stuff, as opposed to jumping on Google and doing his “k1ller” five minute claim key word search.

        ;-)

      2. 14.1.2

        Sure I can, people in my art do it routinely. Practically every NPL paper that exists in my art does it just fine in the title to their paper. At most it generally takes them a couple sentences in their abstract to have let everyone know most of what they’re going to talk about. And then their experimental section in their paper is about one long paragraph or two long and gives just as much detail as many multiple page long specs often do.

          1. 14.1.2.1.1

            It would suffice for WD for the whole of the invention when taken in conjunction with the drawings. Whatever other “legallollities” are being imposed are straight waste.

            1. 14.1.2.1.1.1

              Whatever other “legallollities” are being imposed are straight waste.

              Except that straight waste is part and parcel of protecting legal rights (and there is such legal vehicle for doing thusly with your example at 14.1.2.

        1. 14.1.2.2

          Yeah, 6, you are starting to scare me. We’ve all drank the Kool-aid, the real question is which one.

    2. 14.2

      You do realize that the state of patent drafting for which you are complaining about is directly because of the judicial muckery that creates patent profanity, right?

    3. 14.3

      The reason Summaries are not helpful is because Courts have made them so. When Summaries were in plane language, they were of necessity, narrower than the claims, e.g., a mouse trap with a spring and a thwappy thing instead of : a small animal inconveniencer comprising a resilient member operatively coupled to a detainment mechanism, the Courts tended to limit the scope of the claims to what ever example was provided in the summary….Sooooo applicants now just past claim 1 into the summary section…you win. Pick up the marbles…..

      1. 14.3.1

        I already know how the courts allegedly caused the problem Les. What we need is a solution to the problem that can be enforced. To right the wrong. Frankly I think the PTO could do it themselves as practically speaking at the office stage it is a procedural issue. I don’t know if I have the energy to solve this issue for the patent system though, I feel like someone else should step up to the plate for a change.

        Maybe just make it if you don’t put a plain language description in your patent it goes down the tubes period. Justified at least on the grounds that it would solve the issue of us having piles and piles of “technical disclosure” that too often amount to little more than lawyerese in this day and age, barely useful to anyone. That’d probably bring them back just fine.

        1. 14.3.1.1

          Technically speaking all government documents are supposed to be in “plain language” anyway.

          link to plainlanguage.gov

          Can just make sure that gets enforced in all patents and bam, we’re good to go. Maybe make the office clarify it for the applicant in their publication.

          Technically speaking it looks like it already should apply to patents.

          link to gpo.gov

          We need Arti to look into the details from admin lawl.

          Maybe if someone facing a vaguely worded (clearly not plain language) patent were to file suit against the office for issuing the publication in the first place that would be very interesting.

          1. 14.3.1.1.1

            Actually Les I just noticed, there can be no judicial review of whether the agencies comply with this law. Lame.

            (a) Judicial Review.–There shall be no judicial review of
            compliance or noncompliance with any provision of this Act.

            [[Page 124 STAT. 2863]]

            (b) Enforceability.–No provision of this Act shall be construed to
            create any right or benefit, substantive or procedural, enforceable by any administrative or judicial action.

  3. 13

    The discussion of patents as “defensive” tools or for “validating” business goals is nonsense. Patents are purely offensive tools. Also, of nonsense, is the idea that examiners and applicants will “collaborate”. Collaborating with an examiner is akin to “cooperating” with the cops in a 70’s TV show. There is zero value in doing so since all statements will be used to the detriment of the speaker. Examiners should focus primarily on what they do best – searching for prior art and mapping that prior art to the claims.

  4. 12

    “anon” The input to the system cannot be controlled by the executive branch.

    Sure it can. As willfully ign0rant (or just plain ign0rant) as the patent maximalists are, even they can figure out when a particular grifting strategy has run its course. When a big enough pile of tanked patents in a particular area builds up with close to zero survivors snaking through the system, even the habitual offenders stop bothering.

    And everyone benefits when that happens. That’s why it’s important to keep the CAFC’s and the PTO’s feet to the fire. They are prone to blink and/or return to their junk-applicant coddling ways if they aren’t being monitored.

    And they’re going to be watched closely all the time now, right along with you and your junk patent-l0ving cohorts, “anon.” Get used to it.

    There is more to come after all! A lot more. And you’re not going to like it. Rich spoiled babies never like their haircuts, do they?

    1. 12.1

      be watched closely all the time now, right along with you and your junk patent-l0ving cohorts, “anon.” Get used to it.

      That’s more than just a little bit creepy.

      1. 12.1.1

        That’s more than just a little bit creepy.

        There’s lots of creepy behavior to be observed, that’s for sure. It’s not quite as stomach-turning as keeping up with the activities of gun fondlers and their super serious attorneys but it definitely has its moments.

        1. 12.1.1.1

          You do know that it is you that is being creepy, right?

          Not sure where the “gun-fondlers” comes in, though….

          (and your rather bland “so series” reference is just A WHOLE nother case of Malcolm being Malcolm)….

          1. 12.1.1.1.1

            Not sure where the “gun-fondlers” comes in

            It comes in where the similarity of the rhetoric in defense of the indefensible becomes impossible to ign0re.

            You know what I’m talking about, “anon”, because you’re a quintessential case, as is your bff NWPA, as are the multitude of drive-by s0ckpuppets who show up here. The paranoia, the mewling about academics (and everyone else who’s “unqualified” or can be somehow linked to “socialism”), the Constitution-clutching, all that stuff.

            1. 12.1.1.1.1.1

              Sound merely more of that “lump them all together” thing you got going on – all those “enemies” of your precious rye fields….

              (the obligatory AccuseOthers meme runs with your very own version of paranoia – watch out for those G-g-g-grifters, as you do your own “clutching” – and far more of it than anyone)

              1. 12.1.1.1.1.1.1

                paranoia – watch out for those G-g-g-grifters

                I’m pretty sure that the existence of bloated opportunists skimming the patent system to satisfy their boundless greed at the expense of both the system’s credibility and at the expense of the public is a genuine problem and something to be mindful of at all times. It’s kinda hard to dispute that in 2016 but knock yourself out. Congress and the Supreme Court and the “executive branch” of the moment aren’t debating that anymore.

                Compare to: Communists hiding in ivory towers coming for everybody’s personal property, starting with their patents. And paid for by Google. Now that’s a “problem” that you can only read about in the comments section of blogs. Thanks to you and your buddies.

                1. LOL – are you once again trying to say that the patent system is not under attack by the philosophically labelled Left and Right….?

                  Attempting to diminish Google’s interaction with the government is pretty darn funny too. Why would you do that in the face of incontrovertible evidence (the type of thing you usually scream for)…? (hint: it is NOT just in the comments section of blogs -where, by the by, YOU seem to have a quite comfort zone for – but hey, go ahead and accuse others of something that you do…)

                  So….. your “Compare to” is (no surprise) a complete wash-out.

                  Thanks to you and your buddies.” – again with the “group them all together” meme…. (and Scooby is going to be mad that you got the phrase wrong. The catch phrase used by every single villain is: And I would have gotten away with it too, if it weren’t for you meddling kids.

                  Or is Scooby not allowed near your fields of rye?

                2. MM, your perception of the “bloated” and “boundless greed” is quite telling as to your actual experience with the patent system. You’re sounding again like a concerned citizen that has read an article or two on patents and has an opinion about to share. What I do know is that there are individual inventors and small businesses in the real world that are entirely perplexed by 101 jurisprudence and are directly harmed by the non-standards that are presently being applied. This non-standard is evidence by the fact that you haven’t been able to respond to my many direct questions on whether a particular claim is or is not subject matter eligible. Certainly I could apply your 101 logic to any claim to disqualify that claim from eligibility, including some of the most important inventions in history. These people and small businesses are not billionaires or millionaires or perhaps even thousandaires. Often, in my direct experience, these are people that have a potentially new solution to an existing problem and want to build a business around that solution. Myself included.

                3. Haven’t you been paying attention Iit..?

                  Abstract iDan punked Malcolm on Malcolm’s identity, and shoved Malcolm’s nose into his own pile of CR@P ad hominem.

                  Oh wait, for some unknown reason, Abstract iDan’s lesson to Malcolm was censored and deleted.

                  Oh well, the (so serious) take away was that Malcolm HAS A PHD, and Malcolm IS AN ATTORNEY, and Malcolm TEACHES ATTORNEYS (what exactly, remains unclear as Malcolm did not go into details).

                  But hey, since you want to make money from patents, you fall into the category of G-g-grifters. I bet that you would want to be able to enforce your patent in a court of law too. For shame.

                  (can you see the sarcasm sign I am holding up?)

                4. to satisfy their boundless greed at the expense of both the system’s credibility and at the expense of the public

                  LOL – again with the class w@rfare meme on a subject that Malcolm wants to prevent patents to – and that very subject being the MOST accessible to the non-wealthy, the most easily accessible form of innovation today….

                  Why do you want to go and declare per se unpatentable and block the less wealthy from being able to patent their inventions? That’s a dichotomy that you have never been able to “explain.” Maybe you feel that inventions are only “really worthy” for those ultra expensive things that are a “but for” thing….?

                5. Anon – I don’t follow MM’s identity that closely, but from your post MM is a law professor in some form? There’s nothing inherently wrong that profession. Send me a link?

                6. I do not know – nor do I care – what Malcolm’s identity is.

                  He is known for his actions here (a Forrest Gump quote is appropriate – but would not make it past the filter) and those actions stretch back a full ten years and reek of the exact same gamemanship and chicanery that you see today.

                  The exact same.

    2. 12.2

      And if you want to try to even remotely return to the actual discussion here, your “Sure it can. kneejerk reply to my “cannot be controlled by the executive branch.” is false.

      That would be a substantive matter of law type change – something the executive agency lacks the authority for. See Tafas.

      (ohhh, that’s right, weren’t you cheering on the Office in the Tafas case….?)

      1. 12.2.1

        That would be a substantive matter of law type change

        That would depend on what change we’re talking about. Applying the existing law vigorously instead of begging “stakeholders” to provide reasons that the law shouldn’t be applied wouldn’t require any Congressional action.

        But you knew that already.

        Nearly all PTO error is in the applicant’s favor. This has been true since pretty much forever. Pretending otherwise is some weak sauce but, hey, when you ain’t got nothin’, just bash away.

        1. 12.2.1.1

          Try to stay focused and NOT move the goalposts – the immediate point was you having the executive branch agency changing substantive law by stopping filers of things that hurt your feelings.

          Not sure where your bold text comes from here…. nor why you want to play the AccuseOthers game yet again with your weak sauce comment, but hey, that’s just Malcolm being Malcolm.

          1. 12.2.1.1.1

            the immediate point was you having the executive branch agency changing substantive law

            Nice try, “anon.” What happened is that you made a broad sweeping statement (“the input to the system cannot be controlled by the executive branch”) and I pointed out that the statement was plainly false.

            Anything else or are you going to dig a deeper hole for yourself?

            1. 12.2.1.1.1.1

              There is no try – there is only do.

              My “sweeping statement” has to be taken in the context of this discussion. You do know that, right? In that context, CLEARLY, the statement is NOT plainly false.

              Nice to see you go down your short script and get to the “dig a deeper hole” meme – while it is STILL you that holds the shovel.

        2. 12.2.1.2

          MM – “Nearly all PTO error is in the applicant’s favor”. You couldn’t be more wrong on this topic. Subject matter eligibility and 103 (post KSR) virtually always tends to err on the side of opposing the applicant, running up costs, and delaying allowance. It’s simply too easy for examiners these days to apply 101 or 103.

        3. 12.2.1.3

          “Nearly all PTO error is in the applicant’s favor.”

          I don’t know if I can agree with that. I see quite a bit of pto error not in applicant’s favor. I might would agree to “Nearly all PTO error, that ever affects anyone all that much, is in the applicant’s favor.”

          1. 12.2.1.3.1

            that ever affects anyone all that much

            So nice of you to forget about the inventor in your thinking there 6.

            1. 12.2.1.3.1.1

              Anon I don’t want to make light of the inventor’s plight in getting bad rejections etc. but the simple fact is a million dollar suit affects people, especially the individual person/corp, much more than a $1-2k (plus whatever they pay the lawyer) response does, or even an appeal fee. Especially if that person isn’t an id iot.

              And of course that is setting aside business issues, which can be large on either side, I’m just talking about strictly the law/administration side.

              1. 12.2.1.3.1.1.1

                I think the opposite of your last paragraph – the law/admin side (aside from the business $$) are especially pernicious to the types of errors that go vastly uncatalogued by the Office.

                Do you remember the Reject-Reject-Reject era…?

  5. 11

    “If an applicant is confident that her applications are consistently subjected to high-quality examination, she may find it easier to appeal or abandon on the basis of a final rejection, rather than continuing the case in hopes of a different outcome from a different examiner on the same patent application.”

    Why would she think she would get a different examiner by filing an RCE or continuation? Moreover, why would the authors or the PTO think she would get a different Examiner?

    1. 11.1

      Good catch!

      Maybe some practitioners RCE until their examiner retires? I bet it feels like that sometimes.

    2. 11.2

      Les,

      Since the canard of “wearing down an examiner” has been so thoroughly thrashed, perhaps this is some sort of attempt at creating new “villainy” on the part of those G-g-g-grifting inventors….

    3. 11.3

      Why would she think she would get a different examiner by filing an RCE or continuation?

      Because it happens sometimes.

      This has been another edition of “Were the patent maximalists born yesterday or do they just assume everyone else is as ign0rant as they are?”

      1. 11.3.1

        Do you have any evidence that getting a new examiner on RCE is any more frequent than getting a new examiner on Final/2nd-NonFinal?

        1. 11.3.1.1

          Do you have any evidence that getting a new examiner on RCE is any more frequent than getting a new examiner on Final/2nd-NonFinal?

          It’s just common sense. The more time goes by, the more likely it is that some change will occur.

          Kinda strange to have to explain that but there you are.

      2. 11.3.2

        It happens sometimes” is a FAR cry from the innuendo that the tactic is purposefully chosen to game the system and obtain a “more friendly” examiner.

        You are doing that AccuseOthersOfThatWhichMalcolmDoes thing again with your insult of “as ignorant as they are”

        Great “ecosystem” Prof. – Yay Decade of Decadence.

        1. 11.3.2.1

          “anon” “It happens sometimes” is a FAR cry from the innuendo that the tactic is purposefully chosen to game the system and obtain a “more friendly” examiner.

          LOL Seriously?

          “It happens sometimes” is an incontestable fact. It’s also incontestable that the fact is exploited by applicants.

          Maybe you’ve never prosecuted appliations before. That would explain a lot.

          1. 11.3.2.1.1

            You quite miss the point.

            Again.

            The random and rare occurrence just does not make the item into something “exploitable.”

            1. 11.3.2.1.1.1

              And I will guarantee you that I do not prosecute applications like you if you think this tactic being discussed is an “exploitable” tactic.

            2. 11.3.2.1.1.2

              The random and rare occurrence just does not make the item into something “exploitable.”

              Really? You’re doubling down?

              Wow.

              1. 11.3.2.1.1.2.1

                There is no “doubling down.”

                Again – try to understand the first post here – it’s even written in those short declarative sentences that you are always on about.

                1. try to understand the first post here

                  Don’t try to change the subject, “anon.”

                  You really want to stand by your comment? This one: The random and rare occurrence just does not make the item into something “exploitable.”

                  Last chance to walk it back. Pretty sure it’ll come back to bite you but, hey, your choice.

                2. Don’t try to change the subject, “anon.”

                  LOL – I am the one referring you back to the subject at hand and you want to accuse me of changing the subject….

                  My comment on the random and rare occurrence just does not make the item into something “exploitable” stand perfectly well – no need to walk back anything.

          1. 11.3.3.1.1

            6,

            I have had MORE new examiners in the normal course of prosecution of a single application (no Cons) than I have EVER obtained in Con cases.

            By a long shot!

            The idea that someone is purposefully scheming to “get a better examiner” is simply ludicrous.

            Consider the source of the comment that suggests that applicants are so devious.

    4. 11.4

      “Why would she think she would get a different examiner by filing an RCE or continuation? ”

      She might think that the new examiner would be a man, as opposed to the female examiner she previously had that statistically are worse to their female inventors than the male patriarchs are.

      “Moreover, why would the authors or the PTO think she would get a different Examiner?”

      It happens randomly sometimes. You never know if you will or not.

      1. 11.4.1

        Its rare enough that no one is filing RCEs or Continuations in the hopes of getting a new Examiner. If you think another pair of eye is going to help, you file a pre-appeal brief request for review and/or and appeal brief.

  6. 10

    Improving patent quality from it’s current state is fairly straightforward and requires zero cost increase or training (as also noted by Anon below)

    – Focus on 102/103 rejections (well settled law) based on prior art that is identified through general web searches (e.g., Google.com), including products/services, academic papers, and online discussions. In my view, prior art cited by Examiners should be heavily represented in rejections, in contrast to the current state of virtually all rejections being patent literature with NPL being cited only where provided by the Applicant or third-parties.

    Additionally, the Office should focus on the inventor/applicant’s own activity in creating prior art by issuing interrogatories – something that the Examiner’s already have the right to do under the current law/rules.

    1. 10.1

      “NPL” prior art cited by Examiners should be heavily represented in rejections…

        1. 10.1.1.1

          Didn’t the Office run into copyright troubles with that “downloadable” thingie…?

          1. 10.1.1.1.1

            anon, but the NPL’s are manually copiable. They are public records if cited by the PTO.

            1. 10.1.1.1.1.1

              Thanks Ned – that whole “you can have a manual copy” thing was a unresolved part of that snafu. I was the one that pointed out that double standard, by the way!

              The mere “fact” that the item is referenced by title in a public record and whether such a reference of what the Government may have looked at in its patent examination and whether that is enough to place the entire document itself into the public record remains unresolved as well – the mention of the item may be a public record, but the substance, still under copyright control, is NOT openly in the public, is it? That would wreck the business model of MOST scientific publications – something I am not sure would get by the Fair Use determinations (or it might – but that battle has not yet been fought).

              1. 10.1.1.1.1.1.1

                Well, anon, I am sure the PTO can watermark the downloadable NPL so they can neither be copied electronically or photographically. Then restrict the people who download to people who have private PAIR, and who electronic sign an affidavit that swears they their download is necessary as part of their representation of their clients, etc.

                Such would go a long way towards fair use.

                1. You mention controls on the digital version (and I suspect some type of changed controls on the manual copy), and do hint that “Such would go a long way towards fair use,” but the bottom line is that the case has not been adjudicated, and maybe the Office does not want that “mess.”

                  Wasn’t the case issue that even the law firm had to pay in order to have a proper copy….?

                  I do not recall if that case settled, or is still stewing….

                2. They ended up dropping the case when the gov came in with their fair use argument iirc. And I think the law firms that were already paying for one copy figured they would continue to do so. Remember, the case was about them making more copies than the one they usually bought.

                  Bottom line was it just went back to the status quo.

                  And yes, you can get a copy of any NPL ref indexed by the PTO np from the PTO.

                3. I recall it slightly differently 6 – they dropped the government as a party (which I recall commenting that such was a mistake) – they did not drop the case.

                  There may have been a settlement after that, or not, but the matter dropped from the headlines, and I have not bothered to follow up with it (since the government angle was one of the more interesting ones to me).

                4. “There may have been a settlement after that, or not, but the matter dropped from the headlines”

                  It was a small “headline” because the case was done.

                5. Don’t think so – lot’s of “done” cases generate huge headlines.

                  You have a link to any such small headline?

                6. …and to clarify, last that I had heard the case itself was not dropped, only the named party of the government was dropped.

                  The case continued after the government was dropped as a named party.

                7. No I don’t have a link on hand because it was so small it was buried among a hundred other “bites and bytes” or whatever, but I made a comment on the thread iirc noting that I was sad that those dastardly lawlyer pirates would get away with their pirating!

            2. 10.1.1.1.1.2

              The copyright issue is a distraction. The point is that rejections don’t presently include NPL that is discovered by the Examiners. That doesn’t make sense.

              1. 10.1.1.1.1.2.1

                A distraction…?

                Perhaps here – but nonetheless, the side issue – and Ned’s wanting it to be downloadable – are certainly very real legal issues.

                There is a sizable industry out there whose business model (bring out the Oh Noes G-g-grifters claxon) depends on the non-sharing to the public pure information.

              2. 10.1.1.1.1.2.2

                A. we use NPL plenty in my art. and B. NPL is difficult to use for many examiners.

  7. 9

    In contrast, according to Bill Nydegger of Workman Nydeggerr commented, startups are often just trying to validate their technology and get an issued patent rather than thinking about it being tested in court or negotiations.

    Translation: startups are often just gaming the patent sytem.

    The junk needs to be expunged. Nobody should be listening to these people. They are transparently self-interested b0ttom-feeders and they could care less about anything or anyone else except grabbing as much cash as possible, as quickly as possible.

    Do “anon” and his cohorts really care about Examiners “applying the law”? Does anyone actually believe that? If so, I’ve got a bridge to sell you. Thousands of them, in fact.

    1. 9.1

      MM – I agree with you on many of the transparency issues that you have raised – such as a more complete record (including phone conversations), and greater emphasis on common sense search results (NPL). Maybe consider putting down the “junk” language for just one post?

    2. 9.2

      They are transparently self-interested b0ttom-feeders and they could care less about anything or anyone else except grabbing as much cash as possible, as quickly as possible.

      So true of Google and its minions.

      1. 9.2.1

        So true of Google and its minions.

        Yes, Google files reams and reams of incredible junk. So does Facebook. So does Apple.

        But they aren’t the only ones. Not by a long shot.

        When you stumble across a commenter obsessed with Google, you can pretty much rest assured that you’re dealing with a sycophant crawling up from the Big Q’s muckpit.

          1. 9.2.1.1.1

            Your very odd 0bsess10n

            Not an obsession at all.

            The Big Q is a shill for patent maximalism. He always has been. People like you are indoctrinated there, your views are relentlessly reinforced, and you are provided with information whose sole purpose would appear to be to facilitate tr0lling of your “enemies” (i.e., the “Big Corp” who “never inn0vate”).

            Reminding people of this fact occasionally is hardly an “obsession.” If you want to know what “obsession” is, maybe try to recall your brilliant strategy for squelching discussion here (and elsewhere) of the facts and issues in Prometheus v. Mayo. Remember that? Dozens of s0ckpuppets spewing insults every day, for months on end?

            I do. And I’ll never let anyone forget that either.

            But you’re a real serious person, “anon”! Super important. We all have to pay attention to you or … the Amish! Or something like that. LOL

            1. 9.2.1.1.1.1

              You keep on saying “no obsession” – even as you keep on obsessing.

              So you flail about and (shockers) reach a litltle lower on that stale script and come out again you with your “sockpuppet” mantra – how is your battle of transparency with Dr. Noonan coming along?

              And then there is that A WHOLE nother “yay decade of decadence” with the mindless “so serious CR@P….

              1. 9.2.1.1.1.1.1

                how is your battle of transparency with Dr. Noonan coming along

                Noonan is transparently a shill for puffing up the patent bubble on behalf of his clients. That’s why he’s aligned himself with the lowest form of applicants in the history of any patent system on earth.

                I’d say he’s losing that battle badly.

                What’s odd is that you seem inclined to swallow Kevin’s strange argument about my anonymity having anything to do at all with his lack of objectivity and self-interest (his stomach-chruning “I win either way!” arguments notwithstanding). Oh wait — that’s not odd at all: you’re a total hypocrite and that’s been evident since pretty much forever.

                Maybe you should jump on the “MM is paid for by Google” bandwagon. That’s always good for a laugh, “anon”.

                1. that you seem inclined to swallow Kevin’s strange argument about my anonymity

                  LOL – you again missed the point, but your admission of it being YOUR anonymity is at least NOT the dodge that you usually attempt.

                  The point is that you WHINED like no tomorrow about sockpuppets, declared that you hadn’t used them for years, and as it turns out, YOU are the one that uses them the most over the last four years.

                  Maybe you want to accuse me of being a hypocrite at this point (to – you know – be consistent in your tactics)….

                  What a Fn Chump.

                2. you WHINED like no tomorrow about sockpuppets

                  Ah, the old false equivalence rises up again.

                  There’s a rather ginormous difference between using a pseudonym to minimize pointless ps ych 0tic blogtr0ll spittle, on one hand, and using dozens of pseudyonyms in a single thread to derail all discussion and to foment the impression of a like-minded army of k00k00bananas patent worshippers.

                  But go ahead and pretend otherwise! After all, you were totally right about “claim dissection” in the 101 context. LOLOLOLOLOL

                3. There is NO false equivalence here Malcolm – you are BUSTED in a L I E and shown to be a hypocrite.

                  You used DOZENS of sockpuppets at PatentDocs to do the very thing you incessantly whined about here. That very same “likemindedness” that had your Malcolmy fingerprints on your b@nal pet theory.

                  And again with your AccuseOthers meme – as you yourself try to “pretend otherwise”….

                  Way too funny – and no wonder why you usually try so hard to stick to your limited script.

    3. 9.4

      “Translation: startups are often just gaming the patent sytem.”

      Come on brosef, wanting a gubmit officiiaaal seal of approval on your product isn’t “gaming”.

  8. 8

    How can the PTO claim to promote patent quality when the primary (and only relevant) metric used to measure examiners is production? Furthermore, how can the PTO promote quality when only allowed applications are reviewed for quality? Examiners quickly learn that the easiest way to do the job is reject everything(as quickly as possible, regardless of the actual merits of the claims or the state of the art .

    I also scoff at Director Lee’s supposed efforts for improving patent “quality.” Under her leadership, this term has come to mean getting rid of bad patents. As seen in the very high percentages of patents invalidated in IPRs and patent applications denied in appeals, there is obvious pressure from the top levels to reduce the number of issued patents. I would not mind if the Board wrote opinions that applied correct law and thoughtfully considered the prior art to create a correct record, but the opinions I have received recently are terrible and do neither. To paraphrase several different 10-20 line decisions I have recently received affirming rejections: total technical deference is being given to Examiners (without addressing the art or claims at issue, in any way), and therefore, the pending rejections must be affirmed. So what remedies do Applicants have if Examiners make technical errors or, worst, are simply lazy and do not want to consider the actual claimed subject matter.

    1. 8.1

      Excellent point Jojo – as one eminent prior Office leader stated: “Quality does not equal Reject.”

      You get what you measure….

    2. 8.2

      >>How can the PTO claim to promote patent quality when the primary (and only relevant) metric used to measure examiners is production?

      Do you realize that a third of the dog-and-pony “quality” show is about implementing better metrics? Not exactly a fair criticism.

    3. 8.3

      “Applicants have if Examiners make technical errors or, worst, are simply lazy and do not want to consider the actual claimed subject matter.”

      You can explain in plain easy to understand english this “technical error”, or, better yet, lead them by the hand to have them discover the “technical error” on their own. And you can get the spe to get them to not be too lazy.

      1. 8.3.1

        Sometimes it seems that “plain English” is exactly what he examiner cannot understand….

        As in, English is not their first (or apparently second) language.

    1. 7.1

      At the end of the day, there is one and only one “quality” metric:

      Has the examiner applied the law in examining the application.

      That
      Is
      It.

      All else is gaming the system and often a gossamer cover for injecting philosophical musings (should that be in the patent system? How broadly should the scope be?)

      The input to the system cannot be controlled by the executive branch. Thus, the Office should NOT focus on what it does not control, and should focus on what it can control.

      That is NOT to say that initial filters cannot be applied to quickly weed out applications that prima facie cannot meet legal requirements.**

      The emphasis FOR the Office should be on what IT can control within its four walls.

      This “shared” mantra is simply politically correct Orwellian CR@P.

      **the existence of pro se filers cannot – and should not – be dissuaded. That being said, there IS an avenue that the Office could take with registered filers: publish a “grading” system for written applications and office action responses; with a “true writer” requirement (many boutique ‘mills’ employ “ghost writer” named partners as the registered filer).

      Of course, any such system must be bi-lateral and the KNOWN problem that there is more than just a little “luck of the draw” of being assigned to one art unit versus another has an unrealistic impact on possible inputs to the practitioner metrics.

      1. 7.1.1

        Applying the law is by no means the sole or even major problem. If that were true PTAB appeal reversals would be easy. The small amount of available prior art search time is a far more important problem as conclusively demonstrated by thousands of reexaminations and IPRs citing far better patent and publication prior art that was missed in the application examination.
        Other quality issues with some examiners include improper restrictions, “cut and paste” copies of first action rejections in second action rejections [ignoring claim amendments and arguments], etc., etc.

        1. 7.1.1.1

          PM Applying the law is by no means the sole or even major problem.

          Of course isn’t not. And “anon” doesn’t really care about that anyway.

          Beating up on the PTO and the courts and whoever might adversely affect their precious rights is all “anon” and his cohorts care about. Only after you appreciate that does all the contradictory and hypocritical bal0ney coming out of their mouths begin to make sense.

          1. 7.1.1.1.1

            and hypocritical bal0ney

            Says the Queen of this board’s hypocrites…

            Malcolm’s number one blight rhetoric of AccuseOthersOfThatWhichMalcolmDoes.

            Again.

        2. 7.1.1.2

          Paul – you are wrong.
          Period.

          You mistake “time” but that is merely an item to the true (single) quality metric. And just the same, each item in your last paragraph is merely a reflection of a part of my item. Yes, getting each section of law right is important, and yes, time is important – but as I have explicated previously, time is entirely up to the Office and is distinctly NOT MY CONCERN. Applicants do NOT pay for “x” hours – they pay for a full, complete, and accurate examination. It is the Office internally that sets the time. The Office at any time – and without coming and asking for applicant’s permission, CHANGE the time buckets it gives to its own internal members.

          You also mistake that this is somehow “easy,” which is NOT what I stated.

          Clearly, if this quality was easy, we would not even be entertaining the subject here.

          1. 7.1.1.2.1

            hey pay for a full, complete, and accurate examination.

            And then they appeal! appeal! appeal! when their junk gets tanked in five seconds because it’s so ridiculously awful.

            But it’s all about “the law”. Sure it is!

            LOLOLOLOLOLOLOLOL

            1. 7.1.1.2.1.1

              Applying the law – much like actual quality – does not equal the blind Reject.

              Then again, that’s just Malcolm being Malcolm.

              “Go figure Folks.”

              1. 7.1.1.2.1.1.1

                Applying the law – much like actual quality – does not equal the blind Reject.

                But “Appeal! Appeal! Appeal!” is like, totally, awesome.

                LOL

                Keep the laughs coming, “anon.” We all know you are super serious about “patent quality”. Sure you are! That’s why your always amazed by the junk the PTO grants. LOL

            2. 7.1.1.2.1.2

              (And the “Appeal-Appeal-Appeal” mantra is not mine – you are doing that “lump them all together” thing again…)

              1. 7.1.1.2.1.2.1

                the “Appeal-Appeal-Appeal” mantra is not mine

                Golly, I wonder how anyone could possibly have been confused about that.

                LOLOLOLOLOLOLOL

                1. No one should – since I corrected you the last time you employed the same gambit.

                  But hey, Malcolm is “special” and he gets to continuously CR@P wherever he wants to on this forum.

                  Yay Decade of Decadence !

                  (perceptions, perceptions, perceptions…)

        3. 7.1.1.3

          “by thousands of reexaminations and IPRs citing far better patent and publication prior art that was missed in the application examination.”

          Mere thousands? Out of several hundred thousand apps a year? I can agree that it is a large issue, but I don’t think it is the biggest issue necessarily.

          1. 7.1.1.3.1

            Since Paul has admitted that he has let his registration number lapse, and only “serves” on the litigation side, his myopia is ate least recognizable.

            After all, the percentage of claims that actually see a (Oh Noes) lawsuit is far less than 1/2 of 1 percent.

            The veritable microbe on the tail of the flea on the tail of the dog wagging the dog.

          2. 7.1.1.3.2

            6, the fact that the total number of reexaminations and IPRs is substantially less than the total number of issued patents is, of course, due to their normally only being used on litigated patents, which justifies a more costly prior art search. But it is a far more than large enough sample for statistical validity to demonstrate how much better prior art was missed in the average application examination [for which the PTO only charges a few hundred dollars].

            1. 7.1.1.3.2.1

              But it is a far more than large enough sample for statistical validity

              You want to walk through that less than 1/2 % as a large enough sample size calculation there Paul…?

              1. 7.1.1.3.2.1.1

                If you were asking a serious question about statistics rather than misusing this blog as a hostility outlet you could easily find on Google automatic calculators for minimum sample sizes, which in the this case obtained a sample size of only about 377 for 90% accuracy for one million patents.

                1. Instead of the snarky “hostility” angle (oh, your p00r p00r feelings), maybe you could have just supplied the link to the Google automatice calculator for minimum sample size, then provided the calculations that you used (I do wonder what your universe size is: surely there is more than a million possible patent claims for which a lawsuit could be brought…..)

            2. 7.1.1.3.2.2

              “But it is a far more than large enough sample for statistical validity to demonstrate how much better prior art was missed in the average application examination [for which the PTO only charges a few hundred dollars].”

              No kidding? But who cares it is good enough for the system to get by? There’s this new thing called money and resources (including examiner resources). If you want to spend more across the board of either, you gotta justify its effect on the overall outcome, not just the per-patent outcome.

              And as to your sample size tete a tete with anon I think you might be mistaken.

      2. 7.1.2

        Show me an examiner that understands and applies the law in examining an application. Now show me a second examiner that applies the law the same as the first. I will show you a unicorn.

        1. 7.1.2.2

          I can show you quite a few examiners who are more or less of one mind in applying the law, near exactly, if not exactly, the same.

          1. 7.1.2.2.1

            BOTH aim and consistency, 6.

            Lemming approaches might be able to gather the consistency part, but their aim is off.

            1. 7.1.2.2.1.1

              Meh, their aim is pretty good bro. Sure, there are some issues around the edges that routinely pop up in various AUs and various spes haven’t yet been made to toe the line on, but on the whole their aim is pretty decent.

                1. I’ve not been here long. Do you guys actually post application numbers and mail dates of erroneous OAs, or do you just bluster endlessly?

                2. “bluster”*** – the post an actual number gambit is equivalent to the “out yourself” gambit (I notice that you do not use your full identity…).

                  Thanks but no thanks.

                  ***in quotes, as merely using your word without accepting the apparent intended meaning

                3. You are being perfectly wrong Alex.

                  Anonymity does not mean “nothing.”

                  You really don’t get this stuff, do you?

                4. >>LOL – not having proof does NOT mean that there is nothing.

                  Never said there was nothing.

                  Just that “from what is seen on these boards…” amounts to nothing.

                5. You added the words “from what is seen on these boards…” amounts to“.

                  That is perfectly clear.

                6. Still nothing.

                  I understand your desire to maintain anonymity.

                  It’s not my problem if that means you can’t provide proof.

                7. LOL – not having proof does NOT mean that there is nothing.

                  If you want to “play that game,” your very own assertion is nothing because you have offered no proof.

      3. 7.1.3

        “At the end of the day, there is one and only one “quality” metric:

        Has the examiner applied the law in examining the application.”

        While its tempting to more or less agree with you anon there are a few other things that examiners really need to have done to have done a quality job. A fairly complete search, checking for information disclosed, checking for formalities etc. etc.

        1. 7.1.3.1

          the search aspect is a part of meeting the law, as is the checking for information disclosed.

          As to formalities, well, the word itself brings along with it its connotation, eh?

  9. 6

    Here is a way to improve patent quality: Opinion. Require everyone who handles the application professionally (inventor, attorney, examiner, assignee, judge, etc.) to give an opinion on the 4 basics. Is it new, useful, non-obvious, and well-written)? The opinion is a ranking, 1 to 10.

    1. 6.1

      ?

      How is the solicitation of scaled opinion related to quality?

      Without more, this is not helpful at all.

      1. 6.1.1

        Thanks. To me there are two quality problems – bum inventions, and bum processors.

        Bum inventions: If you handle a lot of patents, eventually it seems like someone is holding his nose and handing you a stinker. Those stinkers waste your time and clog up the whole system. If everyone who touched an invention had to say what they really thought of it those time-wasting stinkers would get flushed earlier in the chain. (Or at least come to you with a little warning.)

        Bum processors: Let’s face it, some people who handle patents don’t seem to be very good at telling the good ones from the bad ones. A system that extracted opinions would eventually get enough data to see the handler’s abilities. Like Mendel counting his peas, we would eventually be able to say that so-and-so thinks every invention is obvious or new when in fact most of those calls were wrong. Or you could get a good debate going if you knew who thinks this one is super well-written and who thinks it is a bowl of mud.

        1. 6.1.1.1

          Those stinkers waste your time and clog up the whole system.

          Sorry – but that Koolaid has been debunked. The stinkers are the EASY things to get rid of and there is no such “clog up the whole system” because the stinkers have paid for their share of the system. Your “have to say” STILL does is not connected with any type of “flush” system.

          Your second paragraph has a bit more cogency to it, and sounds a lot like my post at 7.1.

  10. 5

    Idea:

    Since we require reference numbers to relate specification to drawings, we need the equivalent to relate means plus function to corresponding structure.

    1. 5.1

      At least in the software arts, that won’t help at all. No one files intentional MPF claims anymore.

      1. 5.1.1

        Alex, we know people try to avoid MPF like a plague. But the Federal Circuit has ruled that any claim element that is functionally expressed without sufficient structure is MPF, and that applies equally as well to method claims.

        I would say that if a claim says “processor configured to,” that there is a good chance that the courts might construe such under 112(f).

        As Les says below, I personally believe that software steps in an apparatus claims really are software steps and not claims to apparatus. Thus they do not and should not fall under 112(f). The Federal Circuit does not see it that way yet.

        1. 5.1.1.1

          I would say that if a claim says “processor configured to,” that there is a good chance that the courts might construe such under 112(f).

          Why do you not think a processor is not sufficient structure?

          As to what you “see” as far as “steps,” as I have (repeatedly) corrected you: the execution of software is not software.

          Why do you continue the dishonest treatment?

    2. 5.2

      Why are you baffled by what the structure is? In all the cases you are worried about the structure is a microprocessor or other computational element and memory storing instructions. Do you think there is anyone of ordinary skill in the art that doesn’t know that, whether it is explicitly stated in a patent application or not? Why do you want to clutter up applications with silly boiler plate?

        1. 5.2.1.1

          When Ned says “structure” he means hardware. He accepts that the method is disclosed. He does not accept that a flow chart provides the required “structure.”

    3. 5.3

      Anybody who enforces/defends against patents with functional claim elements knows the problem. The very first thing everybody wants to know is what is the corresponding structure. Generally, this devolves into major disputes, the patentee trying to include less, the infringer more. The infringer is trying to include some structural detail he or she does not have.

      I predicted all this long ago when I head up the AIPLA Patent Law committee — at time when the Federal Circuit was clamping done on MPF. There is a good reason why MPF claims are not used, and this is it.

      We can, I think, somewhat end these battle by making it clear exactly what the corresponding structure is and is not during examination. That way, no one will have any (substantial) ambiguity about what the claim covers. This leads to easier enforcement for the patent owner, trust me on this.

      1. 5.3.1

        “Trust me” says the guy who does not treat software and business methods with any sense of inte11ectual honesty….

        No thanks.

  11. 4

    Splitting off pharma has been the dream of the anti-patent movement for 10 years. Remember when MM denied this and then he posted a video of the anti-software patent movement where the woman in charge explicitly said that?

    Lee is unqualified to be the Director. She has no experience prosecuting patents and should resign in shame.

    I will say it again—and if Lee had any experience she would know it—the number one way to improve quality is what? Improved search. Everyone that knows anything about prosecution knows this. I could easily increase the quality of patents about 10 fold if I were director. It would be very easy.

    1. 4.1

      NW, the unicorn of “automated pre-examination searches” is not a real solution. We on the outside have been testing these systems for 20 years and none work well. At best, they provide references of general background relevance. An automated search can NEVER fully understand the nuances of claims and how one set of filed for claims is potentially allowable over a body of prior art. Heck, humans with 20+ years of experience have trouble doing this, so I have no idea why folks think a computer programmed by non-patent people will do a better job.

      There are people inside the USPTO pushing to improve searching. Unfortunately, they are in the minority and all changes are potentially threats to other folks at the Office. Also, the internal databases are completely inadequate to keep up with the volume of useful data being generated around the world. Until the examiners start demanding improvements to their internal databases, nothing will change. The CIO’s office is completely deaf to outside influences and works only to meet internal demands, but you cannot ask for that which you know nothing about.

      I’m as American as the next person, but we could learn reams from the EPO and their examiners (regarding both databases and search methodology). I just with we’d be willing to do so.

      1. 4.1.1

        PS DIP: I never said anything about automating searching. There are many other ways to improve searching. For example, outside firms with TSM where they are paid to find TSMs. For IPRs (which are really just big OAs), if a claim is invalidated using art the PTO didn’t cite, then the patentee gets compensated. Etc. Lots of ways to improve search. Number one, though, is give more money for it.

        I agree the EPO does a better job–much better.

        1. 4.1.1.1

          Automated pre-examination searches is the only thing the USPTO has put forth as a way to improve the search process. It’s as if they are listening to the sales teams for these tools rather than actual end users… Unfortunately, many attorneys are asking for this too in their submissions to the USPTO because they see the sexy presentations and few have any real experience in this realm. (Makes me miss the good ol’ days when first year associates all paid their dues by flipping paper in Crystal City.)

          1. 4.1.1.1.1

            PS DIP–automated search is not the answer. The reality is that the old fashioned way of having examiners know their art unit is the only quality way to get the job done.

            I will say this–that the notion that great searches can’t be done is ridiculous. I have inventors that do searches for me and find the best art that is often the best art that the examiners use in the rejections. Anyway, I could say a lot more on these topics—BUT–big picture Lee is a joke and has no understanding of prosecution and there is little hope that she will do anything but focus on burning the patent system down. Thanks Obama.

            1. 4.1.1.1.1.1

              the notion that great searches can’t be done is ridiculous

              Oddly, this reminds me of the “maturation” of 6 as far as “search” prowess goes.

              Back a few years, every other day had a comment from 6 that he could “easily” tank almost any claim with a five minute Google search.

              That has disappeared (along with his “I only have to do a claim key word search”).

              The “sniff a claim” approach has diminished (but clearly is not gone).

      2. 4.1.2

        Automated Pre-Search is indeed a joke. It can only reflect badly on the PTO’s leadership that they keep talking about (and spending money on) it.

      3. 4.1.3

        >>Until the examiners start demanding improvements to their internal databases, nothing will change.

        I’m genuinely curious what you think could be improved about the EAST/WEST databases.

        1. 4.1.3.1

          Alex – These are things every quality patent database in the world has:

          1) Add F/B citations for PG-Pubs into the internal system. Don’t send examiners to look at the CCD.
          2) Add F/B citations for non-US art. Citations from the EPO and JPO are much higher quality because of their lower volume and higher focus. (No 1.56.)
          3) Add multiple color highlighting. One synonym set can be green and a second set in red.
          4) Visually show where the highlighting is without a need for scrolling.
          5) In document highlighting for patents. Make it easy to identify what Col. / line to reference.
          6) Multiple image display option. Let examiners see the front page, four images at a time, twelve, whatever. Doubly useful for design examiners with the new “multiple embodiment” filings.
          7) Hate saying this in public, but how about more than the full text of one country. The first publication for many sophisticated filers is a PCT / WO. On EAST/WEST, you can’t find/search these.
          8) Up to date Japanese art. The JPO file has not been updated since 2013. Very embarrassing.
          9) Up to date EPO art. The EPO file has not been updated since 2010. Derwent and FPRS are not substitutes since both have massive issues.
          10) Fix the FPRS databases. It’s great that we did a bulk upload of 50 million documents, but not great that 80% of them are empty records.
          11) Give us the more than just Derwent for the Asian art. We only have a single grainy image for all the Korean art? All that LG and Samsung prior art is tough to find based on a single grainy image.
          12) Machine translations – We all hate these, but they need to be available as needed in our system. With an on/off switch.
          13) OCR data – We let Google host our data for years. In exchange, they were supposed to let us have the cleaned OCR data for pre-1976 US art. That’s over 2 million patents which are still important and need to be searched for things like alloys and other techs.

          There are others, those are the ones off the top of my head. :)

          1. 4.1.3.1.1

            Is it against the rules for you to use Google/patents? ‘Cause it would address at least a few of your issues.

            1. 4.1.3.1.1.1

              Les – All of these are features other systems have. Industry standard elements missing from the multi-million dollar tool examiners are supposed to use as their primary search engine.

              Re: Google Patents – This system is awesome for a 5-15 minute “get in, get out” search. But without 1) addressable search histories, 2) better data updating, and 3) repeatability of search queries you cannot use it for more than those 5-15 minutes.

    2. 4.2

      The simplest way to improve search quality is simple: use Google.com. When was the last time you saw a rejection based on general web search results, including products/services in the marketplace, online discussions, or academic papers? Examiner-discovered Non-Patent Literature would be the best way to improve search results.

      1. 4.2.2

        Many examiners use Google for subsets of the search. It’s a rather art specific technique.

        No, the simplest way to improve search quality is to provide more time. But that would cost more, can’t have that.

        1. 4.2.2.1

          But that would cost more, can’t have that.

          That’s a YOU internal problem. Take note of the actual deal between the Office and the applicant, please.

          1. 4.2.2.1.1

            Do you deny that Applicants as a whole have significant influence over the office’s fee structure?

            1. 4.2.2.1.1.1

              As a whole….?

              No – there is no such organization as “applicant’s as a whole” that influence the Office fee structure – especially as pertains to this discussion.

              1. 4.2.2.1.1.1.1

                Where did you invent the “organization” requirement from?

                Does the set of applicants influence the Office fee structure?

                Yes or No?

                1. The “organization” was not a requirement, but rather a natural condition for any type of “set” (your word) in order to refer to that “set’s” collective action.

                  You don’t want this to be about collective action? That makes the answer even more a resounding NO.

                  You want to make this to be about collective action? Then the original answer of NO still applies.

                  Take your pick.

                2. Anyone with an ounce of honesty would admit that applicants influence the fee structure of the office.

                3. I answered your question.

                  Directly.

                  I know that you do not like the answer, but to attempt to impugn the answer is not very forthcoming.

                  Are there OTHER forces and attempts to influence the Office?

                  Sure – but that is a different question and NOT related to the topic of our conversation.

                  Anyone with an ounce of honesty would not try to conflate the two.

  12. 3

    Some of this is nothing more than tired canards being recycled under a fresh lambskin:

    For both the USPTO and prosecutors, the challenge of increasing quality in the face of flat budgets and price pressure is quite real, although perhaps less of an issue in the biopharma sector.

    Divide and conquer – treat pharma “special” and they won’t object to other measures (that should be objected to).

    In that vein, several ways to do more with less were discussed. In response to a question from Deputy Director Slifer, panelists discussed how they could continue to ensure that patent prosecutors were actually pursuing a strategy that serves the business use – whether that be to cover one’s own product or that of a competitor. Although getting an issued patent is often the goal of the prosecutor, if its scope is diminished to such a degree that it doesn’t make business sense, cutting off prosecution earlier may be the right approach.

    Translation: “We only want to give out picture claims, and if you don’t like that, you should go away.”

    In addition, greater collaboration between examiners and applicants earlier in the process could streamline the process. Examiners would probably appreciate applicant summaries of the subject matter. Though applicants are loath to put material into the record, examiners could perhaps get a demonstration of the technology before examination and search began, enabling a substantive discussion of the prior art early in the process.

    A double hit of
    – applicants need to do the job of the examiner (and make it less likely for themselves to be granted a patent), and
    – an attempt to diminish constructive reduction to practice (a Big Corp, “already have money” ploy).

    This overlooks the plain fact that an application as filed must be sufficient.

    If it is NOT sufficient, the proper – and existing – recourse is a rejection on those grounds.

    Examiners already have everything they need to “enabling a substantive discussion of the prior art early in the process.” Pretending otherwise is just a sly way to change the Quid Pro Quo and demand more from the applicant.

    1. 3.1

      I was disappointed that you weren’t on the panel… raging about how none of this is your concern.

      1. 3.1.1

        “none of this” is a far too broad overstatement.

        Maybe you want to pay better attention to what I actually say. Feel free to make an on-point comment.

    2. 3.2

      I completely reject any proposal to treat certain technology groups different than others.

      1. 3.2.2

        iit I completely reject any proposal to treat certain technology groups different than others.

        LOL – sure you do!

        News flash: “certain technology groups” have been treated differently for years without a peep from the folks who puff themselves up now and proclaim that they “completely reject” such behavior.

        Put plainly, “certain technology groups” have been treated as if they were grown-up adults doing actual work, as opposed to scrivening baby gamblers who need to be endlessly coddled because otherwise they’ll never be able to reach the lever on the slot machine.

        What you and really “completely reject” is requiring the lowest forms of “innovators” to grow up, do some actual work, and live with claims that reasonably reflect the actual work that was done — you know, kind of how “certain technology groups” have been treated for many years now.

        We know that you and your buddies “completely reject” that because every attempt by the courts or Congress to force you to grow up is vehemently rejected. “It’s unconstitutional! Totally unfair!”

        The reality is that the PTO and the CAFC have dumped — and are continuing to dump, although with somewhat less zeal — a catastrophic mess into the system. That only furthers the absurd sense of entitlement and “this is the way it always was” men tality that keeps you from growing up.

        The t0xic junk needs to be expunged. If it can’t be expunged “Constitutionally” in an efficient manner, then the existing system itself is just as unconstitutional. To hear some of the arguments being made, you’d think that if an i n sane PTO director or a computer error granted a million junk patents tomorrow, we’d need a million Federal trials to “Constitutionally” get rid of them all.

        1. 3.2.2.1

          Way too much WAH and Ends justify any means there Malcolm.

          But you already knew that before you ranted, eh pumpkin?

          (and nice try at deception with trying to muddle proper differences between the arts and improper differences between the arts – your “WAH” has to do with PHOSITA for which the ITA part stands for “In The Art.”

          Just in case, you know, you might need to know that for a legal discussion some day.

        2. 3.2.2.2

          If it can’t be expunged “Constitutionally” in an efficient manner, then the existing system itself is just as unconstitutional

          Because Malcolm says so….?

          I do hope that you do not teach that to attorneys…

        3. 3.2.2.3

          “news flash” AND “toxic junk” – MM, you’ve really outdone yourself this time.

  13. 2

    Is it not more than a bit in-congruent to proclaim:

    The release by the Patent Office of large amounts of data in accordance with the Obama Administration’s decision to treat government data as a national asset of the American people

    while

    the Office maintains SAWS-like programs, and refuses to identify its own shadow workings (including closed door meetings with selective “users”), and

    the Obama Administration sets the dubious record of being the least open administration in modern history?

    Did the authors even bat an eye when they penned their praise?

    1. 2.1

      >>the Office maintains SAWS-like programs

      Conspiracy theorist.

      Do you also believe that the BPAI was behind 9/11?

      1. 2.1.1

        No such “conspiracy theorist” here – review what they themselves said in their original “defense” and subsequent pulling of SAWS.

        A lot quick – and mindless – accusation says far more about you than you might realize, friend.

        1. 2.1.1.1

          >>review what they themselves said in their original “defense” and subsequent pulling of SAWS.

          Straight from Alex Jone’s playbook!

          Are you referring to:

          >>The Sensitive Application Warning System (SAWS) program is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued by the Agency.

          …?

          I don’t see anything that indicates “saws-like” programs.

          1. 2.1.1.1.1

            First, I have no idea who “Alex Jone” or what his playbook is.

            Second, your lack of ability to understand the phrase “one of many” only indicates your lack of awareness of the context of that statement, and that context is “off-the-books, not disclosed or recorded programs and actions” that is in direct contradiction to the rule of 37 CFR 1.2.

            Or maybe you did not see anything incongruent with the SAWS program itself….?

            1. 2.1.1.1.1.1

              You’re inferring a context that doesn’t exist.

              You really are acting like a 9/11 Conspiracy Nut. The government has secret programs… but they’ll admit to their ongoing operation. What sort of whack job would believe that?

              The USPTO’s admission to SAWS was nothing but an admission to SAWS. If it was an admission to something else, they wouldn’t have admitted it!

              1. 2.1.1.1.1.1.1

                You’re inferring a context that doesn’t exist.

                Denying a context does not make it go away.

                Of course, discussing SAWS brings about a specific context – as it must.

                Your repeating a “conspiracy” accusation while you insist on ignoring plain facts does not make your position stronger.

                Quite the opposite.

                they wouldn’t have admitted it!

                It’s called an Oops. That’s what makes it so delicious. But go ahead and clench tight your eyes and maybe, just maybe SAWS did not happen either.

                1. Not true, Alex.

                  At all.

                  You continue to clench tight your eyes and refuse to see the (self) evident context.

                  Maybe you want to deny that SAWS itself ever really took place…

                2. Those quick to denigrate with a label (while keeping their eyes clenched), remind me of this:

                  link to s-media-cache-ak0.pinimg.com

                  (…and not to confuse or overwhelm you, but the label “Tr011” has a similar origin – leastwise in the patent sense – what is your explanation for why the Executive Office has taken more than a year to answer Ron Katznelson’s clarification request – and not a single academic is up in arms about the dallying?)

                3. There is no difference between the “self evident” context that you’ve conjured around the SAWS memo, and the “self evident” context that indicates the US Government was behind the 9/11 attacks.

                4. Except for the fact that there is a difference.

                  SAWS really did happen. The discussion WAS in that context.

                  You tend to either forget that, or wish to minimize that (without even bothering to give a reason why you would diminish that).

                  All you are doing here is throwing around a label. Nothing more. Check out the Urban Dictionary for a few of the top meanings – and see yourself.

                5. SAWS Happened -> Context -> SAWS-like programs continue.

                  9/11 Happened -> Context -> US Government was behind 9/11.

                6. Remember folks.

                  “one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued” can only refer to other SAWS-like programs because of context! The PTO doesn’t have any other quality programs! Context makes it so!

                7. Wow, you are thick.

                  SAWS was an OFF THE BOOKS shadow program.

                  THAT was what happened.

                  THAT is the context.

                8. >>SAWS was an OFF THE BOOKS shadow program.

                  >>THAT was what happened.

                  >>THAT is the context.

                  And so the office has no other internal quality programs. None. So anything else must be SAWS-like!

                  And the US Government was behind 9/11, because the US Government has done bad things in the past.

                  Face it. There is no evidence advancing your point.

                9. The more you try to stretch your “point,” the less credible you sound.

                  Now you want “evidence” of context….?

                  The context is plain on its face.

                  Have you checked out the leading definitions in the urban dictionary yet? Maybe you can have them add your picture….

  14. 1

    “documentation of claim interpretation (including functional/112(f) language)” should issue with the first OA not the second as I have been experiencing.

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